Substantial Similarity

Tufenkian took two carpet designs from the public domain, “Battilossi” and “Blau,” selected and adapted elements from each of the designs, and registered the resulting carpet design, “Heriz”. According to the Second Circuit:

The field of the Battilossi rug is a dense, bilateral symmetrical design of stylized branching-vine, leaf and flower motifs. Tufenkian selected roughly the central third of the upper half of this Battilossi field. From this dense pattern, he culled out a number of motifs. He then stretched the field slightly in one direction and used the thus modified design as the entire field of the Heriz. In the process, Tufenkian created an asymmetrical pattern, for he used only an off-center portion of what had been a symmetrical design. From the Blau, he took the principal border, which, with modifications, became the major border of the Heriz. Finally, he added two minor borders of his own creation.

Bashian Brothers, Inc. hired a former employee of Tufenkian’s, Nichols-Marcy, as a contractor. Nichols-Marcy designed a highly similar carpet, Bromley, borrowing from the same two public domain works. The district court granted summary judgment for the defendants, holding that the designs were not substantially similar, because Nichols-Marcy’s copying was limited to unprotectable elements taken from the public domain works, and because the “total concept and feel” for each design was different.

The Second Circuit found that the district court had applied the “total concept and feel” test improperly. The summary judgment was vacated, and the case was remanded.

To properly apply the “total concept and feel” test, the court must first dissect the works, weed out unprotectable elements and ascertain the defendant’s literal copying of the plaintiff’s expressions. Then, the court must also consider the works in their entirety, comparing the similarities in the “numerous aesthetic decisions . . . in relation to one another.”

The district court properly ignored the similarities in the public domain elements when comparing the designs. Many of the choices the plaintiff made in his design were no more than “mechanical or conventional.” However, the choice of “eliminat[ing] numerous design motifs, [and thus] creating a more open, less busy aesthetic” was original to the plaintiff and copied by defendants. Although mechanical simplification of a public domain design does not necessarily grant new copyright protection to the simplified form, here, the plaintiff’s simplification was “selective and particularized.” The court concluded that the copying of the choices of deletion rendered the designs substantially similar. Defendants did add original expressions to their design which resulted in the district court finding its “total concept and feel” to be different from the plaintiff’s design. However, the court found these original expressions irrelevant in the substantial similarity analysis because the focus of the analysis is never the difference between the works.