Jetmax Limited v. Big Lots, Inc. et al.

Filing 63

OPINION & ORDER: For the aforementioned reasons, plaintiff's motion for summary judgment is DENIED and defendants' cross-motion for summary judgment is also DENIED. The Court will issue a separate order forthwith setting a near-in trial sc hedule for this action. The Clerk of Court is directed to terminate the motions at ECF Nos. 34, 42, and as further set forth in this order. Motions terminated: 34 MOTION for Summary Judgment of Willful Copyright Infringement, filed by Jetmax Limited. (Signed by Judge Katherine B. Forrest on 8/28/2017) (ap)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
JETMAX LIMITED,
:
:
Plaintiff,
:
:
-v:
:
BIG LOTS, INC., ADVANCE
:
INTERNATIONAL, INC. and HERBERT
:
FEINBERG,
:
:
Defendants.
:
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KATHERINE B. FORREST, District Judge:

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: _________________
DATE FILED:

15-cv-9597 (KBF)
OPINION & ORDER

This case centers around a copyright infringement dispute between plaintiff
Jetmax Limited (“Jetmax”) and defendants Big Lots, Inc. (“Big Lots”), Advance
International, Inc. (“Advance”), and Herbert Feinberg (“Feinberg”) regarding
Jetmax’s Metal Wire Wrapped Tear Drop Light Set (the “Tear Drop Light Set”), the
subject of U.S. Copyright Registration No. VAu 978-587 (the “‘587 Copyright
Registration”). The Tear Drop Light Set is an ornamental light set comprised of a
series of molded, decorative tear shaped covered lights with a wire frame over the
covers.
Now before the Court is plaintiff’s motion for summary judgment (ECF No.
34) and defendants’ cross-motion for summary judgment (ECF No. 42). Plaintiff
seeks a judgment that defendants have willfully infringed the ‘587 Copyright
Registration through their sale of a substantially similar light set. (See Plaintiff’s
Memorandum of Law in Support of Motion for Summary Judgment of Willful

Copyright Infringement (“Pl.’s Mem. in Supp.”), ECF No. 35, at 6.) In opposition,
and in furtherance of their cross-motion, defendants argue that plaintiff does not
own a valid certificate of copyright registration and that the Tear Drop Light Set is
not copyrightable. (Defendants Memorandum of Law in Opposition to Plaintiff’s
Motion for Summary Judgment and in Support of Defendants Cross-Motion for
Summary Judgment (“Dfs.’ Mem. in Supp.”), ECF No. 42, at 4-5.) Specifically,
defendants argue that the Tear Drop Light Set is not copyrightable because it is a
useful article and because it lacks originality. (Id.)
As discussed below, the Court determines that under the Supreme Court’s
recent decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002
(2017), the Tear Drop Light Set contains artistic elements that “can be identified
separately from, and are capable of existing independently of, the utilitarian
aspects of the article.” See 17 U.S.C. § 101. Accordingly, the Court rejects
defendants’ argument that the Tear Drop Light Set in its entirety it is not entitled
to copyright protection as a useful article. The Court also finds, however, that there
are genuine disputes of material fact concerning whether plaintiff owns a valid
certificate of copyright registration covering the Tear Drop Light Set and whether
the Tear Drop Light Set is sufficiently original to warrant copyright protection.
Accordingly, plaintiff’s motion for summary judgment is DENIED and defendants’
cross-motion for summary judgment is also DENIED.

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I.

BACKGROUND1
A.

Factual Background

Jetmax is a Hong Kong corporation that designs, manufactures, and sells a
variety of furniture, lighting, and home décor items. (Defendants Response to [sic]
Jetmax Limited’s Statement of Material Facts on Plaintiff’s Motion for Summary
Judgment (“Defs.’ 56.1 Resp.”) ¶¶ 1, 20, ECF No. 45.) At the heart of the instant
dispute is the Tear Drop Light Set, manufactured and offered for sale by Jetmax.
(Id. ¶ 32.) The Tear Drop Light set, as depicted below, is an ornamental light set
comprised of a series of molded, decorative tear shaped covers with a wire frame
over the covers.

Tear Drop Light Set

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The following facts are undisputed unless otherwise noted. See Fed. R. Civ. P. 56.

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(Declaration of Reena Jain in Support of Plaintiff’s Motion for Summary
Judgment of Willful Copyright Infringement (“Jain Decl.”) Ex. 1, ECF No. 36-1.)
The Tear Drop Light Set was designed in 2004 and has been on sale since
September 2005. (Defs.’ 56.1 Resp. ¶¶ 24, 32.) The set contains a string of lights
that are each surrounded by a plastic, tear drop shaped, iridescent cover. The
plastic covers each contain eight sets of double grooves. (Defs.’ 56.1 Resp. ¶ 67.)
Each cover is in turn surrounded by a wire frame comprised of eight pieces of wire
that rest between the double grooves. (Defs.’ 56.1 Resp. ¶ 67.) A plastic stone
hangs from the tip of each wire frame. (See Jain Decl. Ex 14 at 3.)
The Tear Drop Light Set, along with seven other light sets, is the subject of
the ‘587 Copyright Registration. (Plaintiff’s Responses to Defendants’ Statement of
Material Facts (“Pl.’s 56.1 Resp.”) ¶¶ 5-6, ECF No. 53; Defs.’ 56.1 Resp. ¶ 29; see
Affirmation of Harlan Lazarus in Opposition to the Plaintiff’s Motion for Summary
Judgment and in Support of Defendants Cross-Motion for Summary Judgment
(“Lazarus Aff.”) Ex. A, ECF No. 43-1.) Jetmax claims authorship of the ‘587
Copyright Registration, a fact that defendants dispute. (Defs.’ 56.1 Resp. ¶ 30.)
Defendant Advance, a New York corporation engaged in the wholesale
manufacturing industry, produced the allegedly infringing product (the “Advance
Light Set”), depicted below. The Advance Light Set has been sold at defendant Big
Lots’s stores since early 2015. (Defs.’ 56.1 Resp. ¶¶ 42-43; Pl.’s 56.1 Resp. ¶¶ 8-20.)
Similar to the Tear Drop Light Set, the Advance Light Set has a teardrop shaped
plastic cover with eight sets of double grooves, as well as a decorative wire frame
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containing eight pieces of wire and the come together in a question mark form.
(Defs.’ 56.1 Resp. ¶ 67.) The Advance Light Set does not contain an ornamental
dangly and the cover does not have an iridescent finish. (Pl.’s 56.1 Resp. ¶ 17.)

Advance Light Set

(Jain Decl. Ex. 2, ECF No. 36-2.)
B.

Procedural Background

Plaintiff commenced this action on December 8, 2015, alleging that
defendants knowingly and willfully infringed upon the ‘587 Copyright by producing
and selling the Advance Light Set. (See Complaint, ECF No. 1.) Following the close
of discovery, plaintiff moved for summary judgment on its sole claim of copyright
infringement. (ECF No. 34.) Defendants opposed the motion and filed a crossmotion for summary judgment. (ECF No. 42.) In opposition to plaintiff’s motion
and in furtherance of their cross-motion, defendants argue that plaintiff does not
own a valid certificate of copyright registration and that the Tear Drop Light Set is
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not copyrightable. (Dfs.’ Mem. in Supp. at 4-5.) Specifically, defendants argue that
the Tear Drop Light Set is not copyrightable because it is a useful article and
because it lacks originality. (Id.)
After the parties’ motions became fully briefed, the Supreme Court issued its
decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017),
which resolved widespread disagreement over the proper test for determining
whether the design of a useful article is entitled to copyright protection under
Section 101 of the Copyright Act, 17 U.S.C. § 101. Star Athletica, 137 S. Ct. at
1007. This Court requested supplemental briefing from the parties analyzing the
impact, if any, of Star Athletica on the pending cross-motions for summary
judgment. (ECF No. 60.) The Court received the parties’ responsive submissions on
August 16, 2017. (ECF Nos. 61, 62.)
II.

SUMMARY JUDGMENT STANDARD
Summary judgment may not be granted unless a movant shows, based on

admissible evidence in the record, “that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a). The moving party bears the initial burden of demonstrating “the
absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). When the moving party does not bear the ultimate burden on a
particular claim or issue, it need only make a showing that the non-moving party
lacks evidence from which a reasonable jury could find in the non-moving party's
favor at trial. Id. at 322-23.
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In making a determination on summary judgment, the court must “construe
all evidence in the light most favorable to the nonmoving party, drawing all
inferences and resolving all ambiguities in its favor.” Dickerson v. Napolitano, 604
F.3d 732, 740 (2d Cir. 2010) (citing LaSalle Bank Nat’l Ass’n v. Nomura Asset
Capital Corp., 424 F.3d 195, 205 (2d Cir. 2005)). Once the moving party has
discharged its burden, the opposing party must set out specific facts showing a
genuine issue of material fact for trial. Wright v. Goord, 554 F.3d 255, 266 (2d Cir.
2009). “A party may not rely on mere speculation or conjecture as to the true
nature of the facts to overcome a motion for summary judgment,” as “mere
conclusory allegations or denials cannot by themselves create a genuine issue of
material fact where none would otherwise exist.” Hicks v. Baines, 593 F.3d 159,
166 (2d Cir. 2010) (internal quotation marks, citations, and alterations omitted).
III.

DISCUSSION
Plaintiff Jetmax seeks a judgment that defendants have willfully infringed

the ‘587 Copyright Registration covering the Tear Drop Light Set through their sale
of the Advance Light Set. (See Pl.’s Mem. in Supp. at 6.) “To prove a claim of
copyright infringement, a plaintiff must show (1) ownership of a valid copyright and
(2) copying of constituent elements of the work that are original.” Urbont v. Sony
Music Entm’t, 831 F.3d 80, 88 (2d Cir. 2016) (citing Boisson v. Banian, Ltd., 273
F.3d 262, 267 (2d Cir. 2001)). In opposition to plaintiff’s motion and in support of
their cross-motion for summary judgment, defendants argue that Jetmax is not the
valid owner of the ‘587 Copyright Registration and that the Tear Drop Light Set is
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not copyrightable because it is a useful article and because it lacks originality.
(Dfs.’ Mem. in Supp. at 4-5.) As discussed below, the Court concludes that the Tear
Drop Light Set is potentially eligible for copyright protection because its decorative
covers “can be identified separately from, and are capable of existing independently
of, the utilitarian aspects of the article.” See 17 U.S.C. § 101. However, the Court
also finds that there are genuine disputes of material facts concerning whether
Jetmax is the valid owner of the ‘587 Copyright Registration and whether the Tear
Drop Light Set is sufficiently original. Accordingly, summary judgment on these
issues in inappropriate.
A.

Ownership

Jetmax claims that it is the owner of the ‘587 Copyright Registration because
it has produced the ‘587 Copyright Registration that lists Jetmax as the “author.”
(Pl.’s Mem. in Supp. at 9.) The Copyright Act provides that “[i]n any judicial
proceedings the certificate of a registration made before or within five years after
first publication of the work shall constitute prima facie evidence of the validity of
the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c).
“However, ‘a certificate of registration creates no irrebuttable presumption of
copyright validity,’ and ‘where other evidence in the record casts doubt on the
question, validity will not be assumed.’” Urbont, 831 F.3d at 89 (quoting Estate of
Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 166 (2d Cir. 2003)).
While Jetmax bears the burden of proving copyright ownership, defendants—as the

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party challenging the validity of the copyright registration—have the burden of
proving that the ‘587 Copyright Registration is invalid. Id.
In its complaint, Jetmax alleges that “[t]he Tear Drop Light Set was designed
in 2004 by an employee of Jetmax in the scope of their employment as work for
hire.” (Compl. ¶ 14; see also Declaration of Stephen Cheung in Support of Plaintiff’s
Motion for Summary Judgment of Willful Copyright Infringement (“Cheung Decl.”)
¶ 16, ECF No. 37.) Plaintiff acknowledges that the designer was paid by a company
called Winners Manufacturing. (See Defs.’ 56.1 Resp. ¶ 25.) In support of its
instant motion, Jetmax states that “[u]nder Chinese law, only Chinese entities are
allowed to have employees based in mainland-China” and therefore “Winners
Manufacturing (‘Winners’), a Chinese corporation . . . serves as an intermediary
employer for employees working for Jetmax in mainland-China.” (Cheung Decl.
¶¶ 6-7.)
Under the Copyright Act, “an ‘employer’ who hires another to create a
copyrightable work is the ‘author’ of the work for purposes of the statute, absent an
agreement to the contrary.” Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 554
(2d Cir. 1995); see Urbont, 831 F.3d at 89. “Because the statute does not define
‘employer’ or ‘author,’ courts apply what is known as the ‘instance and expense
test.’” Urbont, 831 F.3d at 89. “As a general rule, [a] work is made at the hiring
party’s ‘instance and expense’ when the employer induces the creation of the work
and has the right to direct and supervise the manner in which the work is carried
out.” Id. (citations and internal quotation marks omitted).
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Here, the Court concludes that there are genuine disputes of material facts
concerning whether the Tear Drop Light Set was made at Jetmax’s “instance and
expense.” For example, during the deposition of Jetmax’s owner and operator
Stephen Cheung, Cheung appeared to suggest that the design employees in
mainland China were paid and employed by Winners. (See Lazarus Aff. Ex. D, ECF
No. 43-6.) In addition, defendants argue with some force that plaintiff improperly
failed to disclose the existence of was Winners in its initial Rule 26 disclosures and
have failed to sufficiently produce responsive documents concerning Winners. (See
Dfs.’ Mem. in Supp. at 13-72.) In short, there are triable issues of fact and whether
plaintiff is the valid owner of the ‘587 Copyright Registration cannot be decided on
summary judgment.
B.

Separability

The Copyright Act provides protection for “pictorial, graphic, or sculptural
features” of the “design of a useful article” only if those features “can be identified
separately from, and are capable of existing independently of, the utilitarian
aspects of the article.” 17 U.S.C. §§ 101, 102(a). A useful article is defined as
“article having an intrinsic utilitarian function that is not merely to portray the
appearance of the article or to convey information.” Id. § 101. Here, the parties do
not dispute that the Tear Drop Light Set is a useful article insofar as it serves the
“intrinsic utilitarian function” or providing light to a room. Rather, the parties
strongly disagree regarding whether the Tear Drop Light Set contains artistic
elements that are sufficiently separable in order to merit copyright protection.
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Having carefully considered this question, the Court finds that the Tear Drop Light
Set does contain artistic elements—the decorative covers—that can be identified
separately from, and are capable of existing independently of, the utilitarian
aspects of the article.
After the parties’ cross-motions became fully briefed, the Supreme Court
issued its decision in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002
(2017), which resolved widespread disagreement over the proper test for
determining whether the design of a useful article is entitled to copyright
protection. As noted above, the Court requested and received supplemental briefing
from the parties analyzing the impact, if any, of Star Athletica on the pending
motions.
In Star Athletica, respondents Varsity Brands, Inc. and certain affiliates
(collectively “Varsity”)—companies that design and manufacture cheerleading
uniforms and other athletic apparel and accessories—sued petitioner Star Athletica,
LLC, a competitor, claiming in relevant part that Star Athletica infringed five of
Varsity’s copyrighted designs. See Star Athletica, 137 S. Ct. at 1007-08. The
designs, which appear on the surface of cheerleading uniforms and other garments,
were mostly arrangements and combinations of lines, colors, shapes, stripes, and
chevrons. See id. at 107. The United States District Court for the Western District
of Tennessee granted summary judgment to Star Athletica on Varsity’s copyright
infringement claim, holding that Varsity’s designs did not qualify as protectable
pictorial, graphic, or sculptural works because they served the useful, or
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“utilitarian,” function of identifying the garments as “cheerleading uniforms” and
therefore could not be “physically or conceptually” separated under Section 101 of
the Act “from the utilitarian function” of the uniform. See id. at 1007-08. The
Court of appeals for the Sixth Circuit reversed. See id. at 1008.
The Supreme Court “granted certiorari to resolve widespread disagreement
over the proper test for implementing § 101’s separate-identification and
independent-existence requirements.” Id. at 1007. The Supreme Court held “that a
feature incorporated into the design of a useful article is eligible for copyright
protection only if the feature (1) can be perceived as a two- or three-dimensional
work of art separate from the useful article and (2) would qualify as a protectable
pictorial, graphic, or sculptural work—either on its own or fixed in some other
tangible medium of expression—if it were imagined separately from the useful
article into which it is incorporated.” Id.
In establishing this new test, the Supreme Court rejected various forms of
previously applied separability analysis, including analysis initially relied on by the
parties on the instant motions. The Supreme Court clarified that it is no longer
important whether an artistic element was originally incorporated into a useful
article or created independently, id. at 1011, and that a useful article need not be
equally or similarly useful once the artistic element is removed, id. at 1013-14.
Similarly, a party need not show that the extracted element is solely artistic, that it
was designed free from considerations of utility, or that it would be marketable once
separated. Id. at 1013-15. Finally, the Supreme Court abandoned the physical12

conceptual separability distinction, stating that the statute’s separability analysis is
“a conceptual undertaking.” Id. at 1014.
Applying the test to the cheerleading uniforms at issue, the Court determined
that the two-dimensional design features were separable elements available for
copyright protection. Id. at 1012. Each prong of the Court’s test was met as (1) the
colors, stripes, and chevrons could be identified as “features having pictorial,
graphic, or sculptural qualities”; and (2) those elements, when imagined separately
and applied to another medium, would qualify as “two-dimensional . . . works of . . .
art.” Id. (quoting 17 U.S.C. § 101).
Applying the two-part test from Star Athletica here, the Court determines
that the decorative covers of the Tear Drop Light Set “can be identified separately
from, and are capable of existing independently of, the utilitarian aspects of the
[Tear Drop Light Set].” 17 U.S.C. § 101; Star Athletica, 137 S. Ct. at 1008. As the
Supreme Court explained, “[t]he first requirement—separate identification—is not
onerous. The decisionmaker need only be able to look at the useful article and spot
some two- or three-dimensional element that appears to have pictorial, graphic, or
sculptural qualities.” Star Athletica, 137 S. Ct. at 1010. The Tear Drop Light Set
undoubtedly has three-dimensional decorative covers that have sculptural qualities.
The second “independent-existence requirement is ordinarily more difficult to
satisfy. The decisionmaker must determine that the separately identified feature
has the capacity to exist apart from the utilitarian aspects of the article.” Id.
Again, this requirement is satisfied in this case. The decorative covers are
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sculptural works that are capable of existing apart from the utilitarian aspect of the
light set, i.e. the light bulbs and other components that cause the Tear Drop Light
Set to light a room.2 The primary purpose of the cover is artistic; once the covers
are removed, the remainder is a functioning but unadorned light string.

C.

Originality

As noted above, in order to prove a claim of copyright infringement, Jetmax
must also show that the constituent elements of the work at issue (the decorative
covers of the Tear Drop Light Set) are original. See Urbont, 831 F.3d at 88. To
prove that a work is original, “it must be independently created by the author and
possess ‘at least some minimal degree of creativity.’” Scholz Design, Inc. v. Sard
Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012) (quoting Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)). The Court notes that “the requisite
level of creativity is extremely low.” Feist, 499 U.S. at 345. While it appears to the

Even if the covers reduce glare and serve some utilitarian function, the Supreme Court explained
that the imagined remainder of the article “left behind” once the pictorial, graphical, or sculptural
element is removed need not “be a fully functioning useful article at all, much less an equally useful
one.” Star Athletica, 137 S. Ct. at 1014.
2

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Court that the Tear Drop Light set is likely original, the Court determines that
there are nevertheless genuine disputes of material fact exist on this issue and the
Court reserves its judgment on this issue for trial.
IV.

CONCLUSION
For the aforementioned reasons, plaintiff’s motion for summary judgment is

DENIED and defendants’ cross-motion for summary judgment is also DENIED.
The Court will issue a separate order forthwith setting a near-in trial schedule for
this action.
The Clerk of Court is directed to terminate the motions at ECF Nos. 34, 42.
SO ORDERED.
Dated:

New York, New York
August 28, 2017

______________________________________
KATHERINE B. FORREST
United States District Judge

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