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WHO
OWNS THE PUBLIC DOMAIN?
By
Lawrence D. Mandel
The
concept of public domain is something that most people can
easily comprehend. If a work of art is in the public domain,
it belongs to the public and one person cannot monopolize
its use. It is free for the taking. Everyone seems to understand
that one cannot copyright for oneself a work that belongs
to the public. If that is true, why is there so much controversy
over its use? The answer is that it is not always so easy
to know where to draw the line where public domain ends
and new and original creativity begins. Take, for example,
Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy,
Inc., 338 F.3d 127 (2d Cir. 2003). This was a case concerning
centuries old oriental carpet patterns that appeared in
the carpets of two modern day carpet importers, the plaintiff,
Tufenkian Import/Export Ventures, Inc. ("Tufenkian") and
the principal defendant, Bashian Bros. Inc.
 The
story begins in the far off mountains of Nepal where the
Tibetan style rugs of today are being manufactured for export
to the United States and elsewhere. There, carpet makers
with designers on staff take orders and instructions from
companies for new offerings to be placed in the catalogues
of the importers. The design process for creating entries
into such a catalogue for oriental rug designs follows a
somewhat standard procedure in most cases. This process
generally begins with a determined perusal through trade
magazines such as Sotheby's, Christie's, and Hali, the International
Magazine of Antiques, Carpets and Textiles. These magazines
contain photographs of public domain carpets available from
collectors and are used as source material for today's carpet
companies. In addition, there are reference books and libraries
full of examples of all types of public domain materials.
In this
case, James Tufenkian followed this process and found a
rug to his liking from the Battilossi collection in an issue
of Hali Magazine. He scanned this page into his computer
and used a portion of it as the basis for the center field
of a carpet he called the Floral Heriz.
Tufenkian
removed some of the elements to open the space and elongated
the design to fill the space he had designated for the central
field. For the main border, Tufenkian used another public
domain source, this one from the Doris Leslie Blau collection
(the "Blau"). The Blau was scanned into Tufenkian's computer
and became the border for the Floral Heriz after eliminating
some of the smaller elements, thus emphasizing the larger
ones. Finally, Tufenkian inserted a thin, minor border between
the Battilossi section and the Blau major border, which
featured primitive animal stick figures inspired by "Gebbah"
Persian carpets. The Nepalese carpet maker used by Tufenkian
wove the design and Tufenkian began importing it as the
Floral Heriz sometime in 1994.
 In
1995, Bashian retained the services of Michael Nichols-Marcy,
an independent contractor, to oversee the design of a new
addition to its Tibetan carpet line, the Bromley 514. Nichols-Marcy
conceived the idea for the design of the Bromley 514 while
the actual details of the carpet were created in Nepal by
a carpet maker known as Nepal Carpet Enterprises in 1996.
Nichols-Marcy used the same page from the Hali Magazine
containing the Battilossi as the inspiration for the field
of the Bromley 514. When the Nepalese carpet maker came
back to Nichols-Marcy with a first draft, Nichols-Marcy
became aware of an advertisement in Nepal Carpet's shop
of the Tufenkian Floral Heriz. Nichols-Marcy instructed
Nepal Carpet's designers to make changes to the border which
he felt was similar to Tufenkian's copy of the Blau to differentiate
it and also to improve its aesthetic appeal.
In the
summer of 1999, a Tufenkian employee saw a Bromley 514 on
display at an Einstein Moomjy retail store in New Jersey
and believing it was a copy of Tufenkian's Floral Heriz,
purchased one to bring back to Tufenkian's headquarters
in New York. In the fall, another Tufenkian employee noticed
an Einstein Moomjy newspaper advertisement which included
a representation of the Bromley 514. A suit for copyright
infringement was commenced in the United States District
Court for the Southern District of New York.
From
the outset, the parties could not agree on the legal standard
to apply when comparing the two works for substantial similarity.
To the defendants, it was clear that legal precedent required
the use of the "more discerning observer test" because the
Floral Heriz contained unprotectible public domain elements
even if there were sufficient protectible elements to sustain
copyright protection. Tufenkian disagreed and argued that
the Floral Heriz was not a derivative work but, rather,
was a wholly original work entitled to complete protection
based on Tufenkian's selection and ordering of elements
into a new and different design.
On dualing
motions for summary judgment, the District Court set the
record straight on the issue of derivative works.
Here,
it is undisputed that Tufenkian took two public domain
works, the Battilossi Persian rug and the Indian Agra
Blau rug, and adapted them. Significantly, however,
the public domain works remain in the predominant figure
of the Floral Heriz. The fact that plaintiff added inner
and outer minor borders to its adaptation of the Battilossi
and Blau rugs does not make the Floral Heriz an original
work. Instead, these additional elements and the adaptations
go into the mix of determining whether, as a whole,
plaintiff's contributions satisfy the general standard
of originality for a derivative work copyright. A reasonable
jury could only find that the Floral Heriz is based
predominantly on the public domain Battilossi and Blau
rugs. Thus, the Floral Heriz is a derivative work.
 Tufenkian
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 237
F. Supp. 2d 376, 383-384 (S.D.N.Y. 2002). The Court went
on to explain that the Floral Heriz contained sufficient
originality to support copyright protection, although it
was entitled to a narrow scope of protection due to the
very substantial incorporation of public domain elements.
The plaintiff's originality was found to be in adapting
elements from the Battilossi and Blau, including eliminating
some elements, compressing portions and elongating the design.
Tufenkian's creation of new minor borders and the placement,
ordering and combination of the new design were also found
to warrant protection.
For
purposes of their summary judgment motion, the defendants
conceded copying, but maintained that even if there had
been copying, there was no copying of protectible expression.
The Court accepted the defendants' concession and, in fact,
found that the defendants had to have copied from the Floral
Heriz in creating the Bromley 514. It remained, therefore,
to determine if a material amount of protectible expression
was copied by the defendants from the plaintiff's design.
The
test for determining whether a material amount of protectible
expression has been copied is whether the two works are
substantially similar. "Where no public domain elements
are involved, substantial similarity is determined from
the perspective of the ordinary observer, but where a plaintiff's
work incorporates elements from the public domain, the perspective
of a more discerning observer is used." Id. at 386.
The
District Court thus compared the total concept and feel
of the two works at issue, using the more discerning test
which requires that the unprotectible elements be excluded
from consideration. After "factoring out" the prominent
public domain elements incorporated in the Floral Heriz,
and considering the significant changes that the defendants
made, adding their own creative judgment, the District Court
found that there could be no infringement as a matter of
law.
The
following differences lead ineluctably to the conclusion
that the Bromley 514 is not substantially similar to
the Floral Heriz: (1) Defendants' design is symmetrical,
while plaintiff's is asymmetrical, a difference which
creates substantial changes in the total concept and
feel of the two works, given that both are substantial
copies of the public domain Battilossi; (2) defendants
incorporated flower elements in the center field not
found in plaintiff's design; (3) plaintiff's center
field design contains more lines than defendants'; (4)
the anchor "beetle" shapes, leaf and sun patterns in
the parties' respective primary borders are markedly
different; and (5) plaintiff's primary border includes
more colors and more elements giving it a more complex
overall feel than defendants' work.
Id.
at 388. Both works were found to be adaptations from the
public domain and, though the defendants were found to have
copied from the plaintiff, the works were found to be substantially
similar only with respect to the common public domain sources.
The
plaintiff appealed, complaining that the District Court
had misstated the law with respect to the test for substantial
similarity and had created its own new test for copyright
infringement for works in which the public domain predominates.
The Second Circuit did not agree with Tufenkian that the
District Court had done something other than follow the
established method of comparing the total look and feel
of the two works. The Appellate Court surveyed the history
of the total concept and feel standard and found that "the
court was surely correct to factor [the public domain] elements
out from consideration." 338 F.3d at 135. However, the Second
Circuit then completely disregarded total concept and feel,
holding that was only one method for determining substantial
similarity. Rather than compare the works as a whole, the
Second Circuit Court of Appeals decided that the District
Court should have left total concept and feel out of its
deliberations entirely and should have relied only on whether
"material portions of the Bromley infringed corresponding
parts of the Heriz." Id.
Ultimately,
it was the fact that the Bromley 514 center field portion
of the carpet design contained many of the same deletions
from the Battilossi design as the center field portion of
the Floral Heriz that doomed the Bromley to a determination
of infringement. It did not matter that the respective designs
that remained in the fields of both works were different
interpretations of the same public domain design, nor did
it matter that the Bromley contained original expression
of the defendants. Assuming that the elimination of those
elements involved many different creative judgments by Tufenkian,
the Second Circuit rested its finding of substantial similarity
as a matter of law on the similarity of what was missing
and the amount of open spaces where public domain elements
had once been.
The
Second Circuit's decision mentions the fact that "mere simplification
of an ornate public domain carpet…may not be protectible."
Id. at 136. However, for all practical purposes, if you
are thinking of ideas for a new carpet design and you happen
to see someone else's attempt at simplification of a public
domain design, it may then be too late for you to make your
own simplified version of that same public domain design,
because, chances are, your attempt will be found to be similar
to the previous one. If you end up with too many of the
same deletions, your design may be found to infringe the
copyright granted to an earlier simplified version consisting
of empty spaces created in a public domain work.
LAWRENCE
D. MANDEL Mr. Mandel is a member of Mandel & Peslak, LLC
in Freehold, New Jersey and Of Counsel to Klauber & Jackson
in Hackensack, New Jersey, concentrates his practice in
intellectual property litigation, trademark and copyright
prosecution, franchises and franchising, entertainment law,
intellectual property licensing, and related matters.
Mr.
Mandel is admitted to practice in New York, New Jersey and
Pennsylvania courts, and before the U.S. District Courts
for the Southern and Eastern Districts of New York and the
Eastern District of Pennsylvania and the U.S. Court of Appeals
for the Federal and Second Circuits. He is a member of the
Patent, Trademark and Copyright Law Section and the Forum
on Entertainment and Sports Industries of the American Bar
Association and the Federal Circuit Bar Association.
He
received his B.S. from the University of Connecticut, Professional
Diploma in Film Scoring from Berklee College of Music, and
J.D. from Rutgers Law School-Newark. |
