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In a decision filled with language about the concept and feel of design elements, a Southern District of New York magistrate judge found a rug maker had not infringed on a competitor’s designs. The plaintiff, David Nicholls alleged that Tufenkian Import/Export Ventures Inc., led by James Tufenkian, infringed his Prado design with two Eclipse rugs designed by Tufenkian. The two businessmen have gone head to head before. Tufenkian at one point manufactured carpets for Nicholls but that business arrangement went awry. Their disagreement led to a lawsuit that ended in a settlement. The matter before Magistrate Judge James C. Francis IV, Nicholls v. Tufenkian Import/Export Ventures, Inc., 04 Civ. 2110, involving copyright dispute, is unrelated to the parties’ prior litigation. The first round of the current case ended in a mistrial before a jury, after which the parties consented to continue before Francis. Nicholls, whose store is based in Scottsdale, Ariz., is a designer from Bellshill, Scotland. He finished his studies in Milan. Tufenkian, a lawyer of Armenian heritage, based many of his company’s designs on traditional Armenian patterns from the Caucasus region. To win the infringement claim, Nicholls had the burden of proving the defendant participated in unauthorized copying. Proof of actual copying is not necessary to fulfill this element, the judge said. And the court did not find any such evidence here. “If there is sufficient proof that the defendants had access to the plaintiff’s work and that their respective designs are similar, it may be inferred that the defendants engaged in copying,” Francis wrote. To support a finding of copying, a court must find evidence of access by Tufenkian to Nicholls’ Prado design, the judge held. PUBLIC DISPLAYS Nicholls had displayed the Prado rug at a show in the Jacob Javits Center and advertised it in various trade publications. The court found that Tufenkian had not come across the Prado design, however. Several displays of Nicholls’ rugs also took place after Tufenkian had already created his Eclipse pattern, Francis found, making an investigation as to whether Tufenkian actually saw the Prado moot in most instances. The court also analyzed “probative similarity,” the second element of illegal copying. This standard does not require duplicate copying. “Probative similarity,” said the judge, requires “only that there are similarities between the two works that would not be expected to arise if the works had been independently created.” The Prado design by Nicholls included five horizontal rows of circles. Most of the circles are divided into two colors, like the sun on the horizon as it rises and sets. The Eclipse design, created by Tufenkian, also employs horizontal rows of circles but they are larger in size and use different colors. The use of circular patterns in the rugs’ creations, Francis held, “are not so novel that coincidence could reasonably be ruled out.” Francis analyzed the two elements, access and probative similarity, together. “There is an inverse relationship between access and probative similarity such that the stronger the proof of similarity, the less the proof of access is required.” The judge, however, found probative similarity “weak at best,” and with little evidence of Tufenkian having access to the Prado design, the court concluded that there was no inference of copying. The last stage of the court’s analysis involved a side-by-side comparison of the rugs. Looking at the number and size of the circles in each, Francis found that there was no “substantial similarity.” Moving beyond what he called a “dissection” of the two works, he also looked at the “total concept and feel” of the designs to determine whether Tufenkian “co-opted” Nicholls’ creation. Again, Francis found no such co-option, describing the Prado design as cool and highly structured while seeing Tufenkian’s rugs as warmer and casual. The court concluded that there had been no copyright infringement. Jonathan Moskin of White & Case represented Nicholls. Michael Carlinsky and Margret Caruso of Quinn, Emanuel, Urquhart, Oliver & Hedges represented Tufenkian.

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