Morgan Fabrics Corporation v. Acacia Design, Inc.
MEMORANDUM OPINION re 75 Order on Motion for Preliminary Injunction. Signed by District Judge Sharion Aycock on 10/9/2015. (geb)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF MISSISSIPPI
MORGAN FABRICS CORP.
CIVIL ACTION NO. 1:14-CV-234-SA-DAS
ACACIA DESIGN, INC.
Before the Court is Plaintiff Morgan Fabrics’ Motion for Preliminary Injunction , in
which it seeks to prevent Defendant Acacia Design, Inc. from selling fabric that allegedly
infringes on Plaintiff’s copyrighted fabric design. A hearing was held on September 9, 2015. After
considering the motion, responses,1 arguments, and pertinent authorities, the Court finds as
Facts and Procedural Background
Plaintiff, a corporation based in Los Angeles County, California, sells fabrics used in the
manufacture of home furnishings. Plaintiff introduced its bestselling CHAMPION fabric in 2010,
and registered the fabric design with the United States Copyright Office effective July 2, 2010.
According to Plaintiff’s CEO Michael Gittelson, at the “end of 2011,” Plaintiff decided to update
its CHAMPION fabric to create a more consistent product. In furtherance of this goal, Plaintiff
created a “new design” for which a separate copyright registration was filed, effective April 9,
2012. In order for the design to be consistently applied to its fabric materials, Plaintiff developed a
Defendant filed a Motion for Leave to File a Sur-rebuttal  in opposition to the preliminary injunction, attaching
the proposed sur-rebuttal thereto. The Motion for Leave  is GRANTED, and the Court has considered the surrebuttal where relevant.
laser-etched embossing roller that, when used, results in a reproducible fabric texture. The instant
suit alleges infringement of the 2012 CHAMPION design, not the 2010 CHAMPION design.2
Defendant, a corporation based in Tupelo, Mississippi, also sells fabrics to furniture
manufacturers. Defendant’s bestselling product, KNOCKOUT, is manufactured by its Chinese
supplier, using a similar embossing process to that used for Plaintiff’s 2012 CHAMPION and
likewise resulting in a textured design.
Plaintiff claims that Defendant’s KNOCKOUT is simply a “knock off” of the 2012
CHAMPION design, and that by selling KNOCKOUT, Defendant is infringing on Plaintiff’s
copyright. The alleged infringement, Plaintiff argues, has caused tangible negative consequences
to Plaintiff’s sales and intangible negative consequences to its goodwill, reputation, and existing
business relationships. Seeking to prevent this alleged harm, Plaintiff filed the pending motion for
preliminary injunction, requesting the Court to enjoin Defendant’s future sales of the
Preliminary Injunction Standard
A preliminary injunction is an extraordinary form of relief and requires the plaintiff to
carry an onerous burden. See Clark v. Prichard, 812 F.2d 991, 993 (5th Cir. 1987); Trinity USA
Operating, LLC, v. Barker, 844 F. Supp. 2d 781, 785 (S.D. Miss. 2011) (commenting that “the
enormity of the relief is difficult to overstate”). The ultimate function of employing such
injunctive relief is merely to preserve the status quo until the case can be heard on its merits.
Morgan v. Fletcher, 518 F.2d 236, 239 (5th Cir. 1975). In determining whether to preserve the
status quo through a preliminary injunction, the Court is afforded judicial discretion, subject to
When possible, the Court will refer to Plaintiff’s designs separately as 2010 CHAMPION and 2012 CHAMPION.
Where the design to which parties or witnesses refer is unclear from the record, the Court will simply use the term
four elements enumerated by the Fifth Circuit in Canal Authority of State of Florida v. Callaway,
489 F.2d 567, 572 (5th Cir. 1974).
To prevail on a motion for preliminary injunction under Canal Authority, a plaintiff must
carry its burden in demonstrating that (1) it is substantially likely to prevail on the merits, (2) there
is a substantial threat that it will suffer irreparable injury if the preliminary injunction is denied,
(3) the threatened injury if the injunction is denied outweighs any harm that will result if the
injunction is granted, and (4) granting the preliminary injunction will not disserve the public
interest. Speaks v. Kruse, 445 F.3d 396, 399-400 (5th Cir. 2006); Howell v. City of New Orleans,
844 F. Supp. 292, 293 (E.D. La. 1994); see also Ne. Fla. Chapter of the Assoc. of Gen.
Contractors of Am. v. City of Jacksonville, Fla., 896 F.2d 1283, 1285 (11th Cir. 1990)
(enunciating that movant “must clearly carry the burden of persuasion as to the four
prerequisites”). Moreover, even when a movant establishes each of the Canal Authority elements,
the decision of whether to grant or deny preliminary injunctive relief is left to the discretion of the
district court, and granting such relief remains the exception rather than the rule. Digital Gen. Inc.,
v. Boring, 869 F. Supp. 2d 761, 772 (N.D. Tex. 2012) (citing Miss. Power & Light Co. v. United
Gas Pipe Line, 760 F.2d 618, 621 (5th Cir. 1985)).
Discussion and Analysis
Because the first Canal Authority element, likelihood of success on the merits, is
dispositive of the present motion, it is the only element necessary for the Court to address at this
time. In order to succeed on the merits of a copyright infringement claim, Plaintiff must show “(1)
ownership of a valid copyright and (2) unauthorized copying.” Hunn v. Dan Wilson Homes, Inc.,
789 F.3d 573, 586 (5th Cir. 2015) (quoting Peel & Co v. Rug Mkt., 238 F.3d 391, 394 (5th Cir.
2001)). Ownership of a valid copyright requires, among other things, that the registered material
be an original work. Geoscan, Inc. of Tex. v. Geotrace Techs., Inc., 226 F.3d 387, 392 (5th Cir.
2000) (citing Lakedreams v. Taylor, 932 F.2d 1103, 1107 (5th Cir. 1991)). Unauthorized copying
exists if the Defendant factually copied the Plaintiff’s protected work, and the copying is legally
actionable. Peel, 238 F.3d at 394-95.
Ownership of Valid Copyright
Defendant disputes that Plaintiff owns a valid copyright, arguing that the 2012
CHAMPION is not original and positing that the design is comprised of nothing more than
“functional, and thus very common, squiggly snake-lines.” The Fifth Circuit and United States
Supreme Court have explained that a work is considered original, and will support a valid
copyright, so long as the work “was independently created by the author (as opposed to copied
from other works), and . . . it possesses at least some minimal degree of creativity.” Norma Ribbon
& Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995) (quoting Feist Publ’ns v. Rural
Telephone Serv. Co., Inc., 499 U.S. 340, 345, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991)). Though
the originality requirement “demands only a ‘creative spark, no matter how crude, humble or
obvious,’ the level of creativity must be more than ‘trivial.’” Nola Spice Designs, LLC v. Haydel
Enters., Inc., 783 F.3d 527, 552 (5th Cir. 2015) (citing Feist, 499 U.S. at 359, 111 S. Ct. 1282).
In arguing that no originality is present, Defendant first highlights the declaration of its
proposed expert Deborah Young, a professor of Textile Science at California State University.
Young declares that Plaintiff’s design is similar to many other fabrics, attached as exhibits to her
declaration, that are modeled after elephant skin and rhinoceros skin. Common ideas such as
animal skin belong to the public domain and are not capable of copyright protection. See id. at
551. Defense counsel also argued at the hearing on this motion that Plaintiff’s textured design
possesses no more originality than the texture appearing on a variety of different brands of paper
towels, and that one paper towel company would not have a viable copyright claim against another
company for selling a similar white, textured design.3
The Court finds Defendant’s arguments persuasive and notes that the originality required
to create a pattern of “squiggly” lines is different from expressions to which copyright protection
typically inheres, such as intricate floral patterns, Peel, 238 F.3d at 398, a musical composition,
see Armour v. Knowles, 512 F.3d 147, 152 (5th Cir. 2007), and paintings. One Treasure Ltd., Inc.
v. Richardson, 202 F. App’x 658, 661 (5th Cir. 2006). Therefore, whether Plaintiff has met the
low originality threshold is doubtful. See Nola Spice Designs, 783 F.3d at 552 (questioning
whether “using bead-shaped spheres for a bead dog’s collar is sufficiently original to merit
Assuming arguendo that Plaintiff’s fabric design can be viewed as an “original” and
copyrightable work, Plaintiff must additionally establish the existence of unauthorized copying.
When, as here, there is no direct evidence, Plaintiff must show factual copying with proof that (1)
Defendant had “access” to the copyrighted work before the infringing work was created and (2)
the two works are probatively similar. See Peel, 238 F.3d at 394; Corwin, 475 F.3d at 1253. Not
all copying, however, is unlawful. Id. at 398. For factual copying to be unauthorized and thus
legally actionable as “[t]o support a claim of copyright infringement, the copy must bear a
substantial similarity to the protected aspects of the original.” Id. Defendant does not deny that the
two fabrics, when viewed on the whole, share common characteristics such as color and feel for
purposes of probative similarity. But Defendant does contest the notions that it had access to
Plaintiff asserts that paper towels are functional items that would not qualify for copyright protection in any event,
different from its fabric design here. But while the paper towel itself may not qualify for copyright protection, an
elaborate design appearing on paper towels could easily qualify as non-functional, original expression, as the artistic
elements of the design would be separable from the utility of the paper towel. See Galiano v. Harrah’s Operating Co.,
416 F.3d 411, 419 (5th Cir. 2005). Thus, Defendant’s above paper towel analogy is well taken.
Plaintiff’s design and that the KNOCKOUT design bears a substantial similarity to the 2012
CHAMPION’s protected aspects, i.e., the fabric design.
To establish access under Fifth Circuit precedent, Plaintiff is required only to demonstrate
“a reasonable possibility of access” on the part of Defendant. Id. at 395 (citing Ferguson v. Nat’l
Broadcasting Co., 584 F.2d 111, 113 (5th Cir. 1978)). But neither a “bare possibility” of access,
nor mere “speculation or conjecture” will suffice. Armour, 512 F.3d at 152-53 (citation omitted).
Plaintiff first attempts to demonstrate access through the activities of a former employee of
Lane Furniture, Michael Herman. Herman acknowledges that while at Lane Furniture, he saw
“literally thousands of fabrics from dozens of manufacturers each year . . . .” And according to one
of Plaintiff’s sales representatives, Lane Furniture had been provided with samples of Plaintiff’s
CHAMPION fabric while Herman worked there. Hermann allegedly went to work for Defendant
in 2011 after his time at Lane Furniture.
To further demonstrate the requisite access, Plaintiff relies on its allegedly widespread
marketing activities. According to the declaration of Plaintiff’s CEO Michael Gittelson, Plaintiff
markets the 2012 CHAMPION design through its showroom in High Point, North Carolina, “the
industry ‘Showtime’ event,” and at finished fabrics conventions in Las Vegas and other locations.
Additionally, Gittelson states, Plaintiff and its sales representatives often provide product samples
to customers and prospective customers.
A flaw in both of Plaintiff’s arguments regarding access lies in the timeline of events
surrounding the creation of the 2012 CHAMPION and KNOCKOUT designs. According to
Gittleson, Plaintiff did not decide to create its new 2012 CHAMPION design until “the end of
2011.” Guoping Wang, the sales coordinator for Defendant’s Chinese supplier, avers that the
pattern copy used to generate the KNOCKOUT fabric was created at least several months earlier,
by January 5, 2011. Though Plaintiff takes issue with the veracity of Wang’s affidavit, no
evidence has been proffered to contradict it. In other words, the unrebutted evidence shows that
Defendant’s allegedly infringing design was under development before Plaintiff’s design came
into existence.4 Because Plaintiff is required to come forth with proof that Defendant had access to
its work “prior to creation of the infringing work[,]” the Court finds it unlikely that Plaintiff will
be able to succeed in demonstrating access. Peel & Co., Inc., 238 F.3d at 394.
Even if Plaintiff were able to demonstrate that Defendant had access to its design, it faces
another hurdle to establishing unauthorized copying, i.e., proving that the two works are
substantially similar.5 Peel, 238 F.3d at 398. Substantial similarity must exist with respect to the
“protected aspects of the original.” Id. The protected aspects to which copyright protection
extends consist only of “those components of a work that are original to the author.” Feist, 499
U.S. at 348, 111 S. Ct. 1282. In determining whether the allegedly infringing work bears a
substantial similarity to the protected aspects of the original, the Fifth Circuit applies the “ordinary
observer or audience test . . . .” Peel, 238 F.3d at 398. Under this test, two works are substantially
similar if a layman would detect piracy “without any aid or suggestion or critical analysis by
others. The reaction of the public to the matter should be spontaneous and immediate.” Id.
As appearing on the fabric, the 2012 CHAMPION design contains longer “squiggly” lines,
whereas the KNOCKOUT design contains more spherical bumps, similar to moguls on a ski
slope. Moreover, where an original work possesses a low degree of creativity, as is the case here,
When pressed on this issue at the hearing, Plaintiff’s counsel responded that the 2010 CHAMPION design was in
existence before January 2011. Of course, infringement of the 2010 CHAMPION design has not been alleged.
The Fifth Circuit has recognized an exception to the general framework for assessing copyright infringement where
the copyright owner is unable to demonstrate that the alleged infringer had access to the copyrighted design. In such
cases, the plaintiff may be excused from showing access by “demonstrating that his original work and the putative
infringing work are ‘strikingly similar[,]’” Corwin v. Walt Disney Co., 475 F.3d 1239, 1253 (5th Cir. 2007), such that
“copying is the only realistic basis for the similarities at hand[.]” Armour v. Knowles, 512 F.3d 147, 156 n.19 (5th Cir.
the work’s “minimal originality counsels against a finding of substantial similarity.” Nola Spice,
783 F.3d at 552.
Given the apparently minimal originality involved, the differences in the two designs at
issue, and the unrebutted evidence that Defendant’s design was created before Plaintiff’s 2012
design, the Court finds that Plaintiff has not shown a substantial likelihood of prevailing on its
infringement claim. Where no such showing has been made, “it is unnecessary to address the
remaining [Canal Authority] elements required for preliminary injunctive relief.” Voting for Am.,
Inc. v. Steen, 732 F.3d 382, 400 (5th Cir. 2013) (citing La Union Del Pueblo Entero v. Fed.
Emergency Mgmt. Agency, 608 F.3d 217, 225 (5th Cir. 2010)). Accordingly, the requested
preliminary injunction shall not issue.
For the above reasons, Plaintiff’s Motion for Preliminary Injunction  is DENIED.
Plaintiff has not demonstrated a substantial likelihood of prevailing on the merits of its copyright
infringement claim, and has thus failed to satisfy the standard for the issuance of a preliminary
injunction set forth in Canal Authority. A separate order to that effect shall issue today.
SO ORDERED, this 9th day of October, 2015.
/s/ Sharion Aycock
UNITED STATES DISTRICT JUDGE
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