United States District Court, D. Maryland, Southern Division
MEMORANDUM OPINION AND ORDER
W. Grimm United States District Judge
Castello 1935 Inc. (“Castello”) and Richard
William Campbell (“Campbell”) entered into a
contract to manufacture napkins and tablecloths for a
Maryland hotel. Plaintiff Garnier-Theibaut, Inc.
(“GT”) alleges those napkins and tablecloths
embodied direct copies of GT's copyrighted design.
Accordingly, GT filed this litigation on December 7, 2017.
Compl., ECF No. 1. It brings four counts against Castello and
Campbell: Copyright Infringement (Count I), Impoundment and
Destruction (Count II), Trade Dress Infringement (Count III),
and Interference with Business Expectancy (Count IV). Am.
Compl., ECF No. 16. Defendants have filed a motion to dismiss
all of plaintiff's claims. Defs.' Mot., ECF No. 17.
Because GT adequately pleads all of its claims,
defendants' motion will be denied. Defense counsel Eric
Menhart's motion to withdraw his appearance will be
granted. Defendant Castello must retain counsel as this case
proceeds. McGowan v. Cross, 991 F.2d 790 (Table),
1993 WL 125416, at *1 n.1 (4th Cir. 1993)
(“Corporations and partnerships, as artificial
entities, may not appear pro se but must instead appear
through counsel.”). Defendants will answer the Amended
Complaint by June 7, 2018 and I will then hold a Federal Rule
of Civil Procedure 16 telephone conference.
GT, a New York corporation, and defendant Castello, a
Virginia business entity, are both engaged in manufacturing
and distributing linens for use in the hospitality
industry.Am. Compl. ¶¶ 4-5. In 2017,
Castello, through defendant Campbell, an officer of Castello,
entered into an agreement with The Hotel at UMCP ABC, LLC
(the “Hotel”) to manufacture and sell napkins and
tablecloths to the Hotel. Am. Compl. ¶¶ 5-6, 15.
The Hotel initially planned to award this contract to GT, but
awarded it instead to defendants because defendants agreed to
directly copy the designs of GT's linens, which are
protected by copyright, for a less expensive price.
Id. ¶¶ 6, 15. The focus of this litigation
is defendants' copying of GT's copyrighted design.
Id. ¶ 15.
a federal copyright in a visual work (“Organic”)
that is used in the weaving of textiles, including dinner
napkins and tablecloths sold to businesses within the
hospitality industry. Id. ¶¶ 2, 4. The
copyright registration on “Organic” (No. VA
2-072-446) became effective on October 24, 2017. Id.
at Ex. A. “Organic” was created and first
published by GT in 2007 for use in its high-end linen
collection and is described as “a bold pattern of
unique irregularly sized rectangular fields enclosing fitted,
curved elements evocative of tribal or aboriginal
works.” Id. ¶¶ 7-8.
“Organic” can be reproduced in any color or any
material and can be used as a single piece or in multiple
copies of the weave. Id. ¶ 8. GT uses Jaquard
weaving to manufacture linens bearing the
“Organic” visual work. Id. ¶ 9.
These linens containing the “Organic” design are
referred to as the “Organic Products.”
offered its Organic Products to the Hotel for sale, a
contract worth approximately $134, 669.85. Id.
¶ 15. Castello, however, received the contract instead
by directly copying GT's Organic Products and selling
them to the Hotel, through Campbell, at a lower price than
the price quoted by GT. Id. ¶¶ 15-17.
Campbell, on behalf of Castello, first met with the Hotel in
2017. Id. The Hotel provided Campbell with one of
GT's original products bearing the “Organic”
design, and Campbell advised the Hotel that Castello could
copy the design and offer the linens at a lower price than
GT. Id. Defendants were aware at the time they
agreed to copy the design that it was protected by copyright.
Id. ¶ 6. In fact, Castello's agreement with
the Hotel contains a provision shifting the liability for
copyright infringement to the Hotel. Id. Castello
continues to use the copied design to advertise items for
sale to others. Id. ¶ 15.
filed its initial complaint on December 7, 2017. Compl., ECF
No. 1. Consistent with the order that I issued at the start
of this case governing the filing of motions, ECF No. 6, a
pre-motion status conference was held on January 16, 2018,
resulting in an Order permitting GT to file an amended
complaint and permitting defendants to file a motion to
dismiss. ECF No. 14, 15. GT filed its amended complaint on
January 26, 2018. Am. Compl., ECF No. 16. Defendants have
moved to dismiss. Defs.' Mot., ECF No. 17.
Rule of Civil Procedure 12(b)(6) provides for “the
dismissal of a complaint if it fails to state a claim upon
which relief can be granted.” Velencia v.
Drezhlo, No. RDB-12-237, 2012 WL 6562764, at *4 (D. Md.
Dec. 13, 2012). This rule's purpose “is to test the
sufficiency of a complaint and not to resolve contests
surrounding the facts, the merits of a claim, or the
applicability of defenses.” Id. (quoting
Presley v. City of Charlottesville, 464 F.3d 480,
483 (4th Cir. 2006)). To that end, the Court bears in mind
the requirements of Fed.R.Civ.P. 8, Bell Atlantic Corp.
v. Twombly, 550 U.S. 544 (2007), and Ashcroft v.
Iqbal, 556 U.S. 662 (2009), when considering a motion to
dismiss pursuant to Rule 12(b)(6). Specifically, a complaint
must contain “a short and plain statement of the claim
showing that the pleader is entitled to relief, ”
Fed.R.Civ.P. 8(a)(2), and must state “a plausible claim
for relief, ” as “[t]hreadbare recitals of the
elements of a cause of action, supported by mere conclusory
statements, do not suffice, ” Iqbal, 556 U.S.
at 678-79. See Velencia, 2012 WL 6562764, at *4
(discussing standard from Iqbal and
Twombly). “A claim has facial plausibility
when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.” Iqbal, 556
U.S. at 678.
at this stage of the proceedings, I accept the well pleaded
facts alleged in GT's Complaint as true, see Aziz v.
Alcolac, 658 F.3d 388, 390 (4th Cir. 2011), when
reviewing a motion to dismiss, I “may consider
documents attached to the complaint, ” such as the
copyright registration, “as well as documents attached
to the motion to dismiss, if they are integral to the
complaint and their authenticity is not disputed.”
Sposato v. First Mariner Bank, No. CCB-12-1569, 2013
WL 1308582, at *2 (D. Md. Mar. 28, 2013); see CACI
Int'l v. St. Paul Fire & Marine Ins. Co., 566
F.3d 150, 154 (4th Cir. 2009); see also Fed. R. Civ.
P. 10(c) (“A copy of a written instrument that is an
exhibit to a pleading is a part of the pleading for all
I: Copyright Infringement
Copyright Act confers on the copyright holder
“‘exclusive' rights to use and to authorize
the use of his work.” CoStar Grp., Inc. v. LoopNet,
Inc., 373 F.3d 544, 549 (4th Cir. 2004) (quoting
Sony Corp. v. Universal City Studios, Inc., 464 U.S
417, 432-33 (1984)). The holder's rights include
distribution and performance or display of the original,
reproduction of the original, and production of derivative
works. 17 U.S.C. § 106; id.; Avtec Sys.,
Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994).
Additionally, the Copyright Act provides that “anyone
who violates any of the exclusive rights of the copyright
owner…is an infringer of the copyright.” 17
U.S.C. § 501(a). To establish a claim for copyright
infringement under the Copyright Act, a plaintiff must show
two things: (1) it owned a valid copyright, and (2) the
defendant(s) encroached upon the rights conferred by
copyright ownership. 17 U.S.C. § 501(a);
Peiffer, 21 F.3d at 571.
issue in this case is the validity of GT's
copyright. Defendants contend GT does not have a
valid copyright on the “Organic” design because
the design is embodied on “useful articles” which
are not protected under copyright law, the design is
unoriginal, and GT has not established ownership of the
copyright. To claim a valid copyright, GT must show the
design is both (1) original and (2), in the case of a useful
article, physically or conceptually separable from the
utilitarian aspects of the item. Universal Furniture
Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d
417, 429 (4th Cir. 2010). Additionally, GT must show
ownership of the copyright. Id. at 428. A plaintiff
can rely on the certificate of copyright registration as
prima facie evidence of validity, provided the registration
was made before or within five years after the first
publication of the work. 17 U.S.C. § 410(c). GT,
however, cannot rely on its certificate of registration
because the first publication of “Organic” was in
2007 while its registration was not issued until 2017. Am.
Compl. at Ex. A.
GT must show the design is original, which “implicates
only a light burden” satisfied by showing “the
work was independently created by the author (as opposed to
copied from other works), and that it possesses at least some
minimal degree of creativity.” Collezione Europa
USA, Inc., 618 F.3d at 430 (citations and internal
quotation marks omitted). A “slight amount” of
creativity is sufficient to establish originality;
“[t]he vast majority of works make the grade quite
easily, as they possess some creative spark.”
Amended Complaint sufficiently alleges the
“Organic” design is original. GT claims it
created the design independently, either on its own or
through work for hire. Am. Compl. ¶ 20. Additionally,
GT's description of the design as a “bold pattern
of unique irregularly sized rectangular fields enclosing
fitted, curved elements evocative of tribal or aboriginal
works” makes it plausible that “Organic”
possesses “at least some minimal degree of creativity.
Id. ¶ 8; see Collezione Europa USA,
Inc., 618 F.3d at 430.
because a useful article is at issue, GT must show the useful
article is eligible for protection under copyright law as a
pictorial, graphic, or sculptural work by showing the item
“incorporates pictorial, graphic, or sculptural
features that can be identified separately from and are
capable of existing independently of, the utilitarian aspects
of the article.” 17 U.S.C. § 101.
known as the “conceptual separability test.” In
analyzing conceptual separability, the Fourth Circuit has
cited favorably to this ...