IP Law Daily, COPYRIGHT—W.D.N.C.: Stationery design based on arrangement of common elements merits only the thinnest of protection, (Nov 17, 2023)

By Matthew Hersh, J.D.

The owner of the works failed to show the “supersubstantial” similarity necessary to make her case.

A collection of stationery designs consisting of stripes, polka dots, and flowers was entitled to only the thinnest of copyright protection and was not infringed by designs that used the same basic motifs in different expressive ways, the federal court for Charlotte, North Carolina, has held. The court, in granting summary judgment against the copyright holder based solely on its review of the competing designs, emphasized that “polka dots, stripes and flowers are used commonly as designs on products of nearly every kind” (McFee v. Carolina Pad, LLC, November 16, 2023, Mullen, G.).

The lawsuit arises out of a long-running business divorce. Jacqueline McFee was a part-owner and lead designer for CPP International, LLC, a wholesale distributor of stationery and office supplies. After the company ceased operations in 2015, the designer and the company wrangled for many years over who owned the intellectual property rights in the designs and work product she had created during her tenure. A North Carolina court eventually found in the designer’s favor in 2020 and assigned to her all of the intellectual property at issue.

But that was not the end of the matter. Not long before the state court ruling, some of the company’s assets were sold to the operator of Carolina Pad, a different stationery vendor. The designer then came to believe that the new stationery company was selling products that made unlawful use of six of her designs in its product line. In November 2022, the designer filed a lawsuit alleging copyright infringement. The stationery company moved for summary judgment, leading to this decision.

Substantial similarity. The court easily granted summary judgment in favor of the stationery company. The designs at issue in this case consisted of stripes, polka dots, and flowers. But these motifs are commonly used in the art world, the court noted, “and there are only so many variations of these designs.” Thus, the court observed, any copyright protection the designer might claim in the design was decidedly “scant, or thin.” To put it another way, the court noted, if substantial similarity is the normal measure required to demonstrate infringement, then “’supersubstantial’ similarity must pertain when dealing with ‘thin’ works” such as the patterns at issue here.

None of the allegedly infringing works came close to meeting this threshold, the court found. For example, the designer alleged that the stationery company borrowed her two-tone floral pattern for its so-called “Hip Chick” collection. But the original depicted white flowers floating and rotating on a black background, the court noted, while the stationery company’s version contained navy flowers on a white background, depicted different types of flowers and branches, had different spacing, and—unlike the original—depicted the flowers, leaves, and branches in an overlapping pattern. Another allegedly infringing design, a so-called “In the Navy” stripe pattern, also was dissimilar to the designer’s version. The original design consisted of horizontal stripes in navy, pink, red, orange, and white, of varying thicknesses and arrangements—while the stationery company’s design contained various shades of blue stripes, along with white and purple stripes, in different thicknesses and different patterns than those in the original. Similar differences were easily spotted in the other four patterns as well, the court found.

Copyright registration. Even if the claim had not failed for lack of substantial similarity, the court found, it might well have failed for another reason—the designer’s failure to register her designs before beginning the lawsuit. Here, the designer’s application for registration was made prior to the filing of the lawsuit but was accepted only after the filing of the lawsuit. Can a copyright litigant save her claim even of the application matures into a registration during the pendency of the litigation? Courts in many jurisdictions have said no, the court found, but the Fourth Circuit “has yet to weigh in on this particular issue.” In any event, given that the claims failed for lack of substantial similarity, it would not be necessary to address this argument.

The case is No. 3:21CV633-GCM.

Attorneys: Albert P. Allan (Allan Law Firm, PLLC) for Jacqueline S. McFee. Daniel E. Rhynhart (Blank Rome LLP) for Carolina Pad, LLC.

Companies: Carolina Pad, LLC

Cases: Copyright NorthCarolinaNews