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In a dispute involving dueling designs, a Southern District of New York judge has found that a wallpaper manufacturer infringed on a competitor’s pattern. The plaintiffs, The Design Tex Group and Patty Madden, the creator of the original wallpaper design at issue, alleged that U.S. Vinyl Manufacturing infringed their Luxor Diamond design with a pattern that was nearly identical, even in color. In addition to wallpaper, New York-based Design Tex manufactures carpeting and interior fabrics for shades and wall panels mostly for commercial use. Patty Madden, a wallpaper designer who has worked with many manufacturers, created the Luxor Diamond pattern in 1997. One year later, she finalized a copyright registration for it. Design Tex was the exclusive license holder for the Luxor Diamond, with sales exceeding $400,000 since 1999. U.S. Vinyl, based in Georgia, manufactures wallpapers and other interior surfaces, such as shower curtains for hotels and similar industrial users. Design Tex and U.S. Vinyl competed for a bid offered by the Marriott hotel chain for a new location in Phoenix. Marriott ultimately selected U.S. Vinyl for the job and instructed the company to begin developing a pattern based on three base designs the hotel chain allegedly sent to the defendant. Within three weeks, U.S. Vinyl produced the design in question, named Painted Desert. Plaintiffs sued alleging the Painted Desert pattern violated the Luxor Diamond copyright. In Design Tex Group v. United States Vinyl Manufacturing, 04 Civ. 5002, Judge Jed Rakoff granted the plaintiffs’ motion for summary judgment, finding that the two wallpaper patterns are “strikingly similar.” To prove copyright infringement, “[p]laintiffs are not required to submit direct evidence of actual copying, which is rarely available,” he held. “Where the two works are so ‘strikingly similar’ as to preclude any possibility that the second work was independently created, no more evidence is necessary.” He continued, “Alternatively, where the similarities are ‘probative’ of copying but not conclusive, plaintiffs may complete their case by also submitting evidence that defendants had access to the copyrighted pattern.” The judge did not enter the second stage of the analysis, finding after a close examination “that any reasonable juror would find them ‘strikingly similar.’” Elongated diamonds alternating in light and dark shades of brown make up the Luxor Diamond wallpaper. Each diamond is textured with what its creator calls a “crackle” background. U.S. Vinyl’s Painted Desert also has elongated diamonds which alternate between light and dark shades of brown. Even the diamonds’ angles, are identical. The only difference Judge Rakoff found was in their color: Painted Desert is a bit darker and its texture is slightly different than Luxor’s. “The fact that some minor details have been modified is immaterial,” he held. SUBJECTIVE ANALYSIS Michael Carlinsky of Quinn Emanuel Urquhart Oliver & Hedges, who is not involved in the case, said that the process of comparing two items is subjective. He recently represented a defendant in a similar case involving rug designs in which the court found no infringement. Despite the subjectivity, a judge or jury can look for specific things to guide the decision, Carlinsky said. Such factors include the size, color, arrangement and placement of elements of the design. A judge also will look at the “overall look and feel” of the two designs, he added. A few other factors helped persuade the court. Samples of Luxor Diamond were widely disseminated in the industry, making it likely U.S. Vinyl had access to its design, the court ruled. Judge Rakoff also found U.S. Vinyl’s explanation of the creation of its Painted Desert wallpaper “highly suspicious.” “If you have independent creation, that’s your get-out-of-jail-free card,” Carlinsky said. It is an affirmative defense in the copyright setting. The defendant, Rakoff held, could not produce any direct evidence of an independent creation. The U.S. Vinyl employee who created Painted Desert had left the company in 2002 and was unavailable for deposition. Marc Lieberstein of Pitney Hardin represented the plaintiffs. Arthur Peslak of Mandel & Peslak in Freehold, N.J., represented the defendants.

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