Substantial Similarity

Judi Boisson and her company sued Vijay Rao and his company, Banian, Ltd., over three quilt designs. The quilt designs in question consisted of the alphabet and some simple icons, rendered in color and arranged in a five block by six block grid. The district court decided that three elements of plaintiffs’ quilts were in the public domain and thus not protectable: “(1) the alphabet, (2) formation of the alphabet using six rows of five blocks across and four icons in the last row, and (3) color.” The district court denied plaintiffs’ claim after a bench trial. The district court only found similarity in unprotectable elements and ruled that there was no substantial similarity between plaintiffs’ designs and defendants’ designs when comparing the protectable elements.

The Second Circuit reversed and remanded the case in part, because there were more protectable elements in plaintiffs’ designs than the district court allowed for.

The Second Circuit found that, although the alphabet itself and the mere use of color were not protectable, Boisson’s selection and arrangement of these unoriginal elements did merit protection. The court stated that even though alphabet quilts have existed for over a century, the defendants failed to present as evidence any quilts in the public domain that shared these quilts’ particular arrangements of artistic elements.

In order to determine if the quilts in question were substantially similar, the court applied the “more discerning” ordinary observer test, where the court considered the works’ “total concept and feel.” The court differed from the district court in considering “the arrangement of the whole” when comparing the works. The court compared “the arrangement and shapes of the letters, the colors chosen to represent the letters and other parts of the quilts, the quilting patterns, the particular icons chosen and their placement.”

The court concluded that defendants’ “ABC Green Version I” and “ABC Green Version II” were substantially similar to plaintiffs’ “School Days I” quilt. All three quilts had

six horizontal rows, each row containing five blocks . . . . The groupings of blocks in each row [were] as follows: A-E; F-J; K-O; P-T; U-Y; and Z with four icons following in the last row. . . . All three quilts use[d] a combination of contrasting solid color fabrics or a combination of solid and polka-dotted fabrics to represent the blocks and letters.

More specifically, the colors associated with each letter were similar in the three quilts. For example, “‘A’ is dark blue on a light blue background; ‘B’ is red on a white background; ‘D’ is made of polka-dot fabric on a light blue background.” The unique shapes of the letters "J," "M," "N," "P," "R" and "W" were similar. Additionally, the quilts were similar in their “diamond-shaped quilting within the blocks and a ‘wavy’ pattern in the plain white border that surrounds the blocks. The quilts [were] also edged with a 3/8" green binding.” The court found that the minor dissimilarities of the quilts did not alter their similar “total concept and feel.”

The court also concluded that defendants’ other quilt, “ABC Navy,” did not infringe "School Days I" because the borders, colors, placement of letters and icons were sufficiently different. The court noted:

While both quilts utilize an arrangement of six horizontal rows of five blocks each, "ABC Navy" does not have its four icons in the last row. Rather, the teddy bear with the flag vest is placed after the "A" in the first row, the cow jumping over the moon is placed after the "L" in the third row, the star is placed after the "S" in the fifth row, and the sailboat is placed after the "Z" in the last row. Further, the colors chosen to represent the letters and the blocks in "ABC Navy" are, for the most part, entirely different from "School Days I." Defendants dropped the use of polka-dot fabric, and plaintiffs did not even offer a color comparison in their proposed findings of fact to the district court, as they had with each of the "ABC Green" versions. The quilting pattern in the plain white border is changed to a "zig-zag" in "ABC Navy," as opposed to plaintiffs' "wavy" design. Finally, although defendants use a binding around the edge of their quilt, in this instance it is blue instead of green.

Similarly, “ABC Navy,” did not infringe "School Days II," because "School Days II" and "School Days I" had “the same color combinations in [their] display of letters and blocks.”