Universal Furniture International, Inc. v. Collezione Europa USA, Inc. ( 2010 )

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
UNIVERSAL FURNITURE 
INTERNATIONAL, INCORPORATED,
Plaintiff-Appellee,
v.  No. 07-2180
COLLEZIONE EUROPA USA,
INCORPORATED,
Defendant-Appellant.

UNIVERSAL FURNITURE 
INTERNATIONAL, INCORPORATED,
Plaintiff-Appellee,
v.  No. 09-1437
COLLEZIONE EUROPAUSA,
INCORPORATED,
Defendant-Appellant.

Appeals from the United States District Court
for the Middle District of North Carolina, at Durham.
William L. Osteen, Jr., District Judge.
(1:04-cv-00977-WO-PTS)
Argued: December 2, 2009
Decided: August 20, 2010
Before MICHAEL, MOTZ, and KING, Circuit Judges.
2 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
Affirmed by published per curiam opinion.
COUNSEL
ARGUED: Nicholas Mesiti, HESLIN, ROTHENBERG,
FARLEY & MESITI, PC, Albany, New York, for Appellant.
William M. Bryner, KILPATRICK & STOCKTON, LLP,
Winston-Salem, North Carolina, for Appellee. ON BRIEF:
Brett M. Hutton, HESLIN, ROTHENBERG, FARLEY &
MESITI, PC, Albany, New York, for Appellant. George L.
Little, Jr., Laura C. Miller, KILPATRICK & STOCKTON,
LLP, Winston-Salem, North Carolina; W. Swain Wood,
WOOD JACKSON, PLLC, Raleigh, North Carolina, for
Appellee.
OPINION
PER CURIAM:
Appellant Collezione Europa USA, Incorporated
("Collezione"), and its adversary in this proceeding, appellee
Universal Furniture International, Incorporated ("Universal"),
are competing furniture companies. In 2004, Universal sued
Collezione in the Middle District of North Carolina, alleging
infringement under the Copyright Act with respect to two of
Universal’s furniture collections, as well as violations of the
Lanham Act and the North Carolina Unfair and Deceptive
Trade Practices Act (the "UDTPA"). In opposing the copy-
right claim, Collezione argued that the furniture at issue is not
copyrightable. The district court disagreed, however, conclud-
ing that Universal possessed valid copyrights in its furniture
designs and that Collezione had infringed those copyrights.
See Universal Furniture Int’l, Inc. v. Collezione Europa USA,
Inc., No. 1:04-cv-00977 (M.D.N.C. Sept. 14, 2007) (the "Lia-
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 3
bility Opinion").1 The court also concluded in its Liability
Opinion that Collezione had misrepresented Universal’s furni-
ture lines as its own, in contravention of both the Lanham Act
and the UDTPA. After conducting a thorough hearing on the
damages issues, the court awarded more than $11 million to
Universal. See Universal Furniture Int’l, Inc. v. Collezione
Europa USA, Inc., No. 1:04-cv-00977 (M.D.N.C. Feb. 12,
2009) (the "Damages Opinion").2
Collezione has appealed from the rulings made in the Lia-
bility Opinion, in favor of Universal, under the Copyright Act,
the Lanham Act, and the UDTPA. Furthermore, Collezione
contends that the court erred in the Damages Opinion in
excluding its proof of deductible expenses. As explained
below, we affirm.
I.
A.
Universal and Collezione have been embroiled in litigation
since 2004 over Collezione’s alleged copying of two of Uni-
versal’s furniture collections. Collezione has a reputation as
being a knock-off furniture company: that is, one that imitates
the designs of its competitors for a lower cost. Indeed, Collez-
ione’s president acknowledged that his company routinely
imitated other companies’ furniture designs.
Universal is a North Carolina-based business that designs,
imports, and distributes furniture that is manufactured outside
this country. In 1994, Universal’s predecessor, Universal Fur-
niture Industries, Incorporated ("UFI"), entered into a design-
service agreement with the Norman Hekler design firm (the
1
The Liability Opinion is found at J.A. 2765-804. (Citations herein to
"J.A. ___" refer to the contents of the Joint Appendix filed by the parties
in this appeal.)
2
The Damages Opinion is found at J.A. 3050-85.
4 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
"1994 service agreement"). Through a subsequent merger in
1998 (the "1998 merger"), UFI became Universal Furniture
Limited ("UFL"). In 2001, Universal entered into an asset-
purchase agreement with UFL (the "2001 asset agreement").
Among the assets purchased by Universal were all of UFL’s
intellectual property rights, including the 1994 service agree-
ment.
Steven Russell was the Hekler designer who created the
two Universal collections that are the subject of this dispute:
the Grand Inheritance Collection (the "GIC") and the English
Manor Collection (the "EMC"). Russell designed the GIC in
2001 and the EMC in 2002, and both collections were manu-
factured for Universal by a Chinese corporation called Lac-
quercraft. The GIC line became available to the public in
April 2001 and the EMC line became available in April 2003.
Russell began his design process for the GIC and EMC
lines by consulting public domain sources such as furniture
books and antiques magazines. Russell then did "conceptual
doodles" by hand until he came up with designs that were
pleasing to his eye. J.A. 651-52. Russell asserted that he did
not simply replicate research references in his designs. Rather,
he used the references as inspiration and combined elements
from the public domain to "create a different look than has
been seen before." Id. at 805. Russell’s objective was to blend
looks from historical periods (rather than reproduce a particu-
lar period) and to "bring something new to the party on an
historical theme." Id. at 673. Although he was influenced by
functional concerns in designing the furniture, Russell was
also motivated by aesthetic goals (such as making the furni-
ture attractive to consumers).
In May and November 2003, Universal filed registration
forms with the Copyright Office seeking copyright protection
for the GIC and EMC lines. A supplementary registration
form filed in July 2003 for the GIC line described the subject
of the registration as the "decorative sculptural designs on fur-
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 5
niture; adaptation of preexisting decorative designs; compila-
tion of decorative designs on suites of furniture." J.A. 1233.
Similarly, the EMC registration form noted that, although the
collection contained "public domain elemental designs," Uni-
versal sought copyright protection in the "[o]riginal decora-
tive designs appearing on suites of furniture including original
adaptations of public domain designs and original compila-
tions of decorative designs." Id. at 1234B. The Copyright
Office issued registrations to Universal for the GIC and EMC
lines on the same day it received the applications.
In 2004, Rhodes Furniture — a major purchaser of the
EMC and GIC lines — approached Collezione seeking a
cheaper alternative to Universal’s furniture. As a result, Col-
lezione agreed to design furniture that would mimic the EMC
and GIC lines. Collezione’s Chief Financial Officer Paul
Frankel admitted that Collezione intended to sell furniture
similar to the GIC and EMC lines. Unaware that Universal
had obtained its copyrights, Frankel nevertheless believed that
the GIC and EMC designs were not entitled to copyright pro-
tection and that Collezione had the right to mimic them.
In 2004, Collezione introduced one collection (the
"20000") to imitate the GIC line and another collection (the
"20200") to imitate the EMC line. Collezione displayed the
20200 collection at the High Point, North Carolina furniture
market in October 2004. Upon learning that Collezione was
displaying furniture that was nearly identical to the EMC line,
Universal’s Senior Vice President Stephen Giles visited the
High Point market. Giles was shocked by the similarity
between Collezione’s 20200 collection and the EMC line, and
also concluded that Collezione was displaying furniture actu-
ally manufactured by Universal. Indeed, Giles believed that
Collezione had simply removed Universal stickers from some
pieces. In some instances, he noticed stickers (which he had
designed) bearing the name of Universal’s manufacturer, Lac-
quercraft. Giles took photographs of what he observed and
6 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
provided the evidence to Universal’s Vice President Victor
Hsu.
Claiming a violation of its copyrights, Universal promptly
sent Collezione a cease and desist letter. Universal also filed
suit against Collezione in October 2004 in the Middle District
of North Carolina, alleging violations of the Copyright and
Lanham Acts as well as state law violations of the UDTPA.
Although Collezione believed that Universal’s GIC and EMC
lines were not entitled to copyright protection, it agreed to
redesign its 20000 and 20200 collections to distinguish them
from the GIC and EMC lines. Collezione also agreed to sub-
mit the redesigns to Universal before marketing them, but it
later displayed the redesigns at a San Francisco furniture mar-
ket and in the magazine Furniture Today without first submit-
ting them to Universal. When the redesigns were finally
submitted to Universal, they were still substantially similar to
the GIC and EMC designs.
B.
In May 2005, Universal sought a preliminary injunction in
the district court barring Collezione’s promotion and sale of
its 20000 and 20200 collections. The court denied the motion,
however, observing that the design compilations on Univer-
sal’s furniture likely were not conceptually separable from the
furniture’s utilitarian function, rendering them unprotectable.
We affirmed the district court’s ruling on the preliminary
injunction. See Universal Furniture Int’l, Inc. v. Collezione
Europa USA, Inc., 196 F. App’x 166 (4th Cir. 2006). In so
doing, however, we emphasized the sparse record and stated
that our intention was not to "categorically exclude Univer-
sal’s and other comparable design compilations from copy-
right protection." Id. at 171.
In May 2007, Universal’s lawsuit against Collezione pro-
ceeded to a five-day bench trial in Greensboro on the liability
issues. The district court thereafter ruled, in its Liability Opin-
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 7
ion, that Universal owned its copyrights and that the GIC and
EMC designs were copyrightable. More specifically, the court
found that the designs — but not the furniture itself — satis-
fied two elements necessary for copyright protection: origi-
nality and conceptual separability. Although the decorative
elements of Universal’s designs were derived mostly from the
public domain, the court concluded that the designer’s compi-
lation of the elements was sufficiently unique to meet the test
of originality. The court also found the decorative elements
conceptually separable from the furniture’s utilitarian func-
tion, because the designer’s functional considerations ended
after he had sketched the basic shapes of the pieces and
because the designer selectively placed elements on the furni-
ture to achieve a "new look." See Liability Opinion 16.
After comparing Collezione’s redesigned 20000 and 20200
collections to the GIC and EMC lines, the district court deter-
mined that nearly all of Collezione’s furniture in these collec-
tions infringed Universal’s copyrights because they were
substantially similar to the GIC and EMC designs on extrinsic
and intrinsic levels.3 The court also assessed the extrinsic sim-
ilarity by comparing the companies’ furniture collections as a
whole. It evaluated the issue of intrinsic similarity by making
individual comparisons among the relevant furniture pieces.
Finally, the court concluded that Collezione had violated the
Lanham Act and the UDTPA by "reverse passing off" Univer-
sal’s furniture as its own. See Liability Opinion 38. The court
reserved the issue of damages for later determination.
3
In particular, comparing the GIC line to Collezione’s 20000 collection,
the district court found infringement in the following items: Collezione’s
china cabinets, sideboards, headboards and footboards, dressers, chests of
drawers, nightstands, armoires, and mirrors. It did not find similarity
between the GIC line and the 20000 collection’s chairs and rectangular
tables. See Liability Opinion 22-28. The court found that Collezione’s
entire 20200 collection infringed Universal’s copyright in the EMC
designs. Id. at 28-29.
8 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
C.
In November 2007, the district court awarded Universal a
permanent injunction prohibiting Collezione from producing
or displaying derivative works of Universal’s GIC and EMC
lines. See Universal Furniture Int’l, Inc. v. Collezione Europa
USA, Inc., No. 1:04-cv-00977 (M.D.N.C. Nov. 30, 2007) (the
"Injunction").4 The Injunction also barred Collezione from
marketing or selling any furniture in its 20000 collection
(except for noninfringing chairs and rectangular tables) or its
20200 collection. On January 3, 2008, we denied Collezione’s
motion to stay the Injunction pending appeal.
After Collezione filed for bankruptcy in February 2008,
Universal requested relief from the automatic stay to allow
the district court to resolve the damages issues. The bank-
ruptcy court agreed and lifted the stay, and a damages hearing
was conducted in the district court in June 2008.
For Collezione’s violation of the Copyright Act, the court
awarded Universal more than $11 million, representing the
gross revenues that Collezione had garnered from selling the
infringing items. See Damages Opinion 29. Although copy-
right infringers are entitled to seek a reduction in damages by
proving deductible expenses and profits unrelated to the
infringement activities, the court rejected Collezione’s proof
in that regard. The court so ruled after giving Collezione
repeated opportunities to present an accurate picture of its
deductible expenses. The court declined, however, to award
damages to Universal on either the Lanham Act or UDTPA
claims, reasoning that any such damages would be duplicative
of those awarded under the Copyright Act.
Collezione has filed a timely notice of appeal, and we pos-
sess jurisdiction pursuant to 28 U.S.C. § 1291.
4
The Injunction is found at J.A. 2817-19.
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 9
II.
We review a judgment resulting from a bench trial "under
a mixed standard of review — factual findings may be
reversed only if clearly erroneous, while conclusions of law
. . . are examined de novo." Roanoke Cement Co., LLC v. Falk
Corp., 413 F.3d 431, 433 (4th Cir. 2005). A court’s calcula-
tion of damages "is a finding of fact and therefore is review-
able only for clear error, but to the extent those calculations
were influenced by legal error, review is de novo." United
States ex rel. Maddux Supply Co. v. St. Paul Fire & Marine
Ins. Co., 86 F.3d 332, 334 (4th Cir. 1996).
III.
In disposing of this appeal, we assess the issues in the same
order as did the district court. We begin by examining
whether Universal owned valid copyrights in the GIC and
EMC furniture designs and, if so, whether Collezione
infringed those copyrights. We then assess whether Collez-
ione contravened the Lanham Act and the UDTPA by dis-
playing Universal’s furniture as its own at the High Point
furniture market in 2004. Finally, we review Collezione’s
contention that the court erroneously excluded its evidence of
deductible expenses in making the damages award.
A.
Collezione first challenges the district court’s conclusion
that Universal possessed valid copyrights in the GIC and
EMC furniture designs and that Collezione infringed those
copyrights. In this regard, Collezione presents four appellate
contentions. First, Collezione maintains that the court erred in
ruling that Universal owned the copyrights. Second, Collez-
ione insists that Universal’s designs on the GIC and EMC
lines are not sufficiently original for copyright protection.
Third, Collezione contends that the GIC and EMC designs are
not conceptually separable from the furniture’s utilitarian
10 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
aspects, and thus not entitled to copyright protection. And
fourth, Collezione maintains that, even if the GIC and EMC
designs are copyrightable, it did nothing that infringed those
copyrights. We address these contentions in turn.
1.
We begin with the issue of whether Universal owned the
copyrights. The Copyright Act affords protection to "original
works of authorship fixed in any tangible medium of expres-
sion, now known or later developed, from which they can be
perceived, reproduced, or otherwise communicated." 17
U.S.C. 102(a). A plaintiff claiming copyright infringement
must establish "ownership of the copyright by the plaintiff
and copying by the defendant." Keeler Brass Co. v. Cont’l
Brass Co., 862 F.2d 1063, 1065 (4th Cir. 1988). A certificate
of registration issued by the Copyright Office is "prima facie
evidence of the validity of the copyright and of the facts
stated in the certificate," such as ownership. 17 U.S.C.
§ 410(c). When such a certificate exists, the burden shifts to
the defendant to prove that the claimed copyrights are invalid.
M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 434 (4th Cir.
1986). However, the Copyright Office’s practice of summa-
rily issuing registrations (perhaps even the day of filing the
application, as in this case) counsels against placing too much
weight on registrations as proof of a valid copyright. Univer-
sal Furniture, 196 Fed. Appx. at 170. Accordingly, a review-
ing court should assess other relevant indicia of ownership,
such as the parties’ intent and the terms of transfer agreements
and other documents establishing a chain of title. See, e.g.,
SCO Group, Inc. v. Novell, Inc., 578 F.3d 1201, 1209 (10th
Cir. 2009); Accusoft Corp. v. Palo, 237 F.3d 31, 58 (1st Cir.
2001).
Collezione maintains that Universal failed to establish a
chain of title linking Universal to the 1994 service agreement
between the Norman Hekler design firm and Universal’s pre-
decessor company, UFI. More specifically, Collezione con-
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 11
tends that Universal did not prove ownership of the
copyrights to the EMC and GIC designs that Steven Russell
of the Hekler firm designed after the 1994 service agreement
was made.
The registrations issued by the Copyright Office for the
GIC and EMC lines identify Universal as the claimant. These
registrations were presumptive proof of Universal’s owner-
ship of the asserted copyrights, and the other evidence also
suggests that result. The 2001 asset agreement between UFL
and Universal conveys "all right, title, and interest . . . to the
Intellectual Property including, but not limited to, the Intellec-
tual Property listed on Schedule 2.1(e)." J.A. 3098. Schedule
2.1(e), in turn, lists the 1994 service agreement between Hek-
ler and UFI. The 1994 service agreement is also specified as
among the "contracts" explicitly transferred to Universal. See
id. at 3098, 3155. Although Russell designed the EMC in
2002, after the 2001 asset agreement, such agreement clearly
transferred the intellectual property rights specified in the
1994 service agreement. The terms of the 1994 service agree-
ment are not time-limited, and the 2001 asset agreement could
therefore include future designs made by Hekler employees.
Indeed, the 1994 service agreement provides that Hekler
"shall apply its skill, knowledge, and expertise to the design
of each item of furniture as [UFI] may, from time to time,
request in writing." Id. at 1266.
In making its chain-of-title argument, Collezione misunder-
stands that it bears the burden of rebutting the presumption of
ownership established by the copyright registrations. M.
Kramer Mfg., 783 F.2d at 434. Universal’s documentation of
the 1998 merger and the 2001 asset agreement links Universal
to the Hekler contract and to Russell’s design of the GIC and
EMC under the 1994 service agreement. Collezione argues
that Universal failed to prove that the 1994 service agreement
was included in the 1998 merger between UFI and UFL. Nev-
ertheless, the 2001 asset agreement between UFL and Univer-
sal explicitly includes the 1994 service agreement with
12 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
Hekler, which indicates that UFI remained a party to the 1994
service agreement and thus had the right to transfer that agree-
ment to UFL in the 1998 merger. Although Universal did not
present evidence of the specific assets that UFL acquired in
the 1998 merger, this was not Universal’s burden. Finally,
although the Copyright Act generally requires a writing to
transfer copyright ownership, it makes exceptions for trans-
fers that occur "by operation of law." 17 U.S.C. § 204(a). And
certain of our sister circuits have ruled that mergers transfer
copyrights "by operation of law" and obviate the writing
requirement. See Taylor Corp. v. Four Seasons Greetings,
LLC, 403 F.3d 958, 963 (8th Cir. 2005); Lone Ranger Televi-
sion, Inc. v. Program Radio Corp., 740 F.2d 718, 721 (9th
Cir. 1984). As a result, the district court did not err in con-
cluding that Universal established its ownership of the
asserted copyrights.5
2.
Next, we assess whether Universal’s designs on the GIC
and EMC lines are sufficiently original for copyright protec-
tion. To claim a valid copyright, Universal was obliged to
show that the GIC and EMC designs are (1) original and (2)
conceptually separable from the utilitarian aspects of the fur-
niture. Superior Form Builders v. Dan Chase Taxidermy Sup-
ply Co., 74 F.3d 488, 492-93 (4th Cir. 1996). Each of these
elements requires fleshing out the term "designs" because the
"industrial design" of even "aesthetically pleasing" furniture
5
Collezione correctly points out, however, that the district court inaccu-
rately described the chain of title. The court mistakenly specified the year
of the 2001 asset agreement as 1997, not 2001. The court also mistakenly
believed that the 2001 asset agreement was between UFI and UFL rather
than between UFL and Universal. And, given that Steven Russell designed
the GIC in 2001 and the EMC in 2002, the court erred when it noted that
Universal contracted with Russell to design these collections in 2003. Not-
withstanding the court’s misdescriptions, Universal’s evidence sufficiently
establishes its ownership of the asserted copyrights in the GIC and EMC
designs.
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 13
is not entitled to copyright protection. Id. at 493. Recognizing
this distinction, the district court properly looked to the copy-
right registrations that Universal filed, which describe the
subjects of the sought-after protection as the "decorative
sculptural designs on furniture, the adaptation of preexisting
decorative designs, and the compilation of decorative designs
on suites of furniture." See Liability Opinion 3.
Establishing originality implicates only a light burden.
"Original, as the term is used in copyright, means only that
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." Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). "[T]he requi-
site level of creativity is extremely low; even a slight amount
will suffice. The vast majority of works make the grade quite
easily, as they possess some creative spark." Id.Even when the work at issue is a compilation of preexisting
design elements, the originality threshold remains low:
"Copyright protection may extend to such a compilation, even
if the material of which it is composed is not copyrightable
itself . . . ; it is sufficient if original skill and labor is expended
in creating the work." M. Kramer Mfg., 783 F.2d at 438(internal citations and quotation marks omitted). "The mere
fact that component parts of a collective work are neither
original to the plaintiff nor copyrightable by the plaintiff does
not preclude a determination that the combination of such
component parts as a separate entity is both original and copy-
rightable." Id. (internal citation and quotation marks omitted).
For compilations of preexisting elements, "the principal focus
should be on whether the selection, coordination, and arrange-
ment are sufficiently original to merit protection." Feist, 499
U.S. at 358.
The submission of a valid certificate of copyright registra-
tion creates a presumption of originality for five years from
the date of the registration. Swirsky v. Carey, 376 F.3d 841,
14 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
851 (9th Cir. 2004). However, as we have explained, this pre-
sumption is fairly easy to rebut because the Copyright Office
tends toward cursory issuance of registrations. Universal Fur-
niture Int’l, Inc. v. Collezione Europa USA, Inc., 196 Fed.
Appx. 166, 170 (4th Cir. 2006). "[T]he presumption of valid-
ity may be rebutted where other evidence in the record casts
doubt on the question," such as "evidence that the work had
been copied from the public domain or by evidence that the
work was a non-copyrightable utilitarian article." Fonar Corp.
v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (internal cita-
tion and quotation marks omitted).
The supporting evidence in this record demonstrates that
the GIC and EMC designs are original. Russell’s design pro-
cess satisfied the low burden for originality in that it demon-
strated "some creative spark" and did not involve wholesale
copying. Feist, 499 U.S. at 345. Under the evidence, Russell
expended "original skill and labor" in selecting and adapting
the decorative elements, and he created an original "separate
entity" by blending elements from different historical periods.
M. Kramer Mfg., 783 F.2d at 438. His consultation of public
domain sources does not render the EMC and GIC designs
non-original for copyright purposes. He did not set out to
create an "authentic period reproduction" in designing the
EMC and GIC furniture. J.A. 646. Although the ornamental
elements placed on the GIC and EMC furniture were culled
from a variety of public domain sources, Russell did more
than simply copy those sources. He consulted various refer-
ence books and magazines and then sketched until he arrived
at a design that he deemed to be aesthetically pleasing. Rus-
sell explained that he modified — rather than replicated —
these sources. His objective was to "bring something new to
the party on a historical theme." Id. at 673. He described his
skill as "offer[ing] modernized interpretations of historical
pieces of furniture," which he accomplished by blending ele-
ments to "create a different look than has been seen before."
Id. at 805. Universal’s expert witness, furniture designer
Thomas Moser, testified that "the act of collecting and sorting
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 15
through, synthesizing from other sizes, in some cases making
an artistic leap by joining two vastly different periods together
. . . requires a good deal of training and experience and art-
istry." Id. at 927. Although Moser agreed that the GIC and
EMC ornamental designs originated in the public domain, he
opined that the selection, coordination, and arrangement of
these elements reflected Russell’s creative judgment. Moser
explained that these elements are not simply compiled; they
"pass through . . . the filter of the creator," who "takes them
and adapts them to serve his purposes." Id. at 967.
In arguing against originality, Collezione relies on a single
Second Circuit decision involving a design process that is
readily distinguishable from Universal’s. In L. Batlin & Son,
Inc. v. Snyder, 536 F.2d 486, 488 (2d Cir. 1976), the appellant
took the famous metal Uncle Sam mechanical bank design
and recreated it in plastic. The court of appeals held that the
plastic recreation was not sufficiently original for copyright
purposes because it was a "mere copy" of the metal version,
and the "mere reproduction of a work of art in a different
medium should not constitute the required originality." Id. at
491 (quoting 1 M. Nimmer, The Law of Copyright, § 20.2, at
93 (1975)). The court, however, did not further address the
issue of originality in connection with compilations. In this
situation, Russell did more than simply take two-dimensional
decorative designs from the public domain and copy them
wholesale on three-dimensional furniture. He modified and
arranged the decorative elements in unique ways, which is
more than sufficient to satisfy the low threshold for original-
ity.
3.
We turn now to a more vexing question in this case:
whether Universal’s GIC and EMC designs are conceptually
separable from the utilitarian aspects of such furniture. We
must approach this inquiry mindful of the nebulous standard
with which the court was obliged to grapple. See Masquerade
16 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670 (3d
Cir. 1990) ("Courts have twisted themselves in knots trying to
create a test to effectively ascertain whether the artistic
aspects of a useful article can be identified separately from
and exist independently of the article’s utilitarian function.");
Bonazoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d 218, 224
(D.R.I. 2005) ("[T]he [conceptual separability] analysis often
sounds more like metaphysics than law . . . ."); 1-2 Nimmer
on Copyright, § 2.08 (describing conceptual separability as an
"ethereal realm"). When we affirmed the denial of the prelim-
inary injunction sought by Universal, we expressed concern
that finding the GIC and EMC designs copyrightable would
"potentially enlarge the law of copyright beyond its intended
borders by extending copyright protection to two entire furni-
ture collections based on their ‘ornate, opulent’ look alone."
Universal Furniture, 196 Fed. Appx. at 172. With the benefit
of a full record, however, we are confident that the district
court correctly applied the conceptual separability test and did
not expand the law to protect any useful article that might be
deemed "aesthetically pleasing." Superior Form, 74 F.3d at
493.
Copyright protection extends to three-dimensional "sculp-
tural works," including some useful articles. 17 U.S.C.
§ 102(a)(5).6 "[T]he design of a useful article . . . shall be con-
sidered . . . a sculptural work only if, and only to the extent
that, such design incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and are capa-
ble of existing independently of, the utilitarian aspects of the
article." Id. § 101. Under this conceptual separability test, use-
ful articles may qualify for copyright protection. Galiano v.
Harrah’s Operating Co., 416 F.3d 411, 417 (5th Cir. 2005).
6
A "useful article" is "an article having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey
information." 17 U.S.C. § 101. Universal’s furniture satisfies this defini-
tion. See Universal Furniture, 196 Fed. Appx. at 170.
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 17
Congress enacted the current phrasing of the conceptual
separability test in order to codify the Supreme Court’s hold-
ing in Mazer v. Stein, 347 U.S. 201 (1954). H.R. Rep. No. 94-
1476, at 55 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5667. In Mazer, the Court held that china statuettes of dancing
figures that appeared on the bases of table lamps merited
copyright protection. 347 U.S. at 214. Although the term
"conceptual separability" does not appear in the Mazer deci-
sion, the idea is embedded in the Court’s recognition that the
statuettes were the "original . . . tangible expression of [the
creator’s] ideas," even though they appeared on an otherwise
mundane utilitarian object. Id.In a decision rendered soon after the amended language
appeared in the 1976 Copyright Act, the Court of Appeals for
the District of Columbia explained the underlying policy con-
cern with which reviewing courts struggle: "If one manufac-
turer were given the copyright to the design of . . . [a useful]
article, it could completely prevent others from producing the
same article." Esquire, Inc. v. Ringer, 591 F.2d 796, 801 n.15
(D.C. Cir. 1978). Further, "consumer preference sometimes
demands uniformity of shape for certain utilitarian articles"
and thus "it would be unfair to grant a monopoly on the use
of any particular such shape, no matter how aesthetically well
it was integrated into a utilitarian article." Id. Professor Nim-
mer, however, posits that "it is not entirely clear that the result
is undesirable" because "[i]f copyright is to be accorded only
to the nonfunctional form of a work, this would not inhibit
competitors from making available to the public the utilitarian
essence of an industrial product." 1-2 Nimmer on Copyright
§ 2.08 (emphasis added).
Because the evolving iterations of the conceptual separabil-
ity test are cogently charted in several cases, we need not
retread the path here. See, e.g., Galiano, 416 F.3d at 417-19;
Pivot Point Int’l, Inc. v. Charlene Prods., 372 F.3d 913, 920-
30 (7th Cir. 2004). After an extensive analysis of the varying
approaches, the Seventh Circuit concluded that courts had
18 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
moved toward a "process-oriented" approach, distilling the
conceptual separability test as follows:
Conceptual separability exists . . . when the artistic
aspects of an article can be conceptualized as exist-
ing independently of their utilitarian function. This
independence is necessarily informed by whether the
design elements can be identified as reflecting the
designer’s artistic judgment exercised independently
of functional influences. If the elements do reflect
the independent, artistic judgment of the designer,
conceptual separability exists. Conversely, when the
design of a useful article is as much the result of util-
itarian pressures as aesthetic choices, the useful and
aesthetic elements are not conceptually separable.
Pivot Point, 372 F.3d at 931 (internal quotations and citations
omitted).
Our circuit has not elaborated extensively upon conceptual
separability. In Superior Form Builders, we considered
whether animal mannequins used to mount animal skins were
copyrightable. 74 F.3d at 491. We held that the mannequins
were not "useful articles" under the Copyright Act and there-
fore did not need to meet the test of conceptual separability.
Id. at 494. However, because we went on to address concep-
tual separability "[t]o the extent that an argument can be made
that the mannequins . . . perform a utilitarian function," the
decision provides some guidance here. Id. We observed, for
example, that "the industrial design of a unique, aesthetically
pleasing chair cannot be separated from the chair’s utilitarian
function, and therefore, is not subject to copyright protection."
Id. at 493 (emphasis added). The industrial design of a chair
is unlike the design of statuettes adorning lamp bases because
the objective of the chair’s design is to "create a utilitarian
object, albeit an aesthetically pleasing one," whereas "the
objective in creating a statue of a dancer is to express the idea
of a dancer." Id.UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 19
Superior Form’s example of the industrial design of a chair
fails to directly address the category of designs at issue here:
compilations of decorative elements adorning utilitarian furni-
ture. In other words, Universal does not seek copyright pro-
tection for the purely "industrial" designs of its furniture, and
the district court correctly recognized as much by explaining
that the "shape of the furniture cannot be the subject of a
copyright, no matter how aesthetically pleasing it may be,"
but the "decorative elements that are separable from the furni-
ture can be." Liability Opinion 17 (emphases added). Concep-
tual separability directs a reviewing court to answer whether
protection extends to the "nonfunctional form of a work." 1-2
Nimmer on Copyright § 2.08.
In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d
411, 414 (2d Cir. 1985), the Second Circuit held that life-
sized mannequins of human torsos used to display clothing
had no "artistic or aesthetic features" that were "physically or
conceptually separable from their utilitarian dimension." The
court thus rejected the designer’s argument that the manne-
quins were akin to sculptures and could serve a decorative
function apart from the utilitarian purpose of serving as a
vehicle for clothing and accessories. Id. at 418. That the man-
nequins may have been "aesthetically satisfying" was not
enough for copyright protection. Id. The Second Circuit dis-
tinguished that case from an earlier decision finding copyright
protection in "belt buckles bearing sculptured designs cast in
precious metals and principally used for decoration." Id. (cit-
ing Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d
989 (2d Cir. 1980)). The "highly ornamental" designs on the
belt buckles were totally unlike the bare model of a human
torso; the "unique artistic design" of the buckles "was wholly
unnecessary to performance of the utilitarian function" of the
belts. Id. at 419. In contrast, the sculpted anatomical elements
on the torso mannequins, while perhaps aesthetically pleasing,
were "inextricably intertwined with the utilitarian feature, the
display of clothes." Id.
20 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
Synthesizing these principles, we are compelled to reach
the same conclusion as the district court: the decorative ele-
ments on Universal’s GIC and EMC are conceptually separa-
ble from the furniture’s utilitarian aspects. The GIC and EMC
designs are highly ornate collections of furniture adorned with
three-dimensional shells, acanthus leaves, columns, finials,
rosettes, and other carvings. Steven Russell described the col-
lections as "an ornamentation explosion," and Universal’s
expert Thomas Moser similarly described the EMC and GIC
as "essentially vehicles for expressing ornament." J.A. 645,
926. These decorative compilations are not "industrial
designs" of furniture. They are not like a bare human torso
mannequin for which adornment is the very utilitarian pur-
pose of the object. Like statuettes on a lamp base, the GIC and
EMC design compilations are superfluous nonfunctional
adornments for which the shape of the furniture (which is not
copyrightable) serves as the vehicle. The designs can there-
fore be "identified separately from" the utilitarian aspects of
the furniture. 17 U.S.C. § 101. Indeed, the designs are
"wholly unnecessary" to the furniture’s utilitarian function.
Carol Barnhart, 773 F.2d at 419. A carved scroll of leaves on
a nightstand post, for example, does nothing to improve the
utilitarian aspect thereof.
As in Pivot Point, Mr. Russell’s process reflects an "artistic
judgment exercised independently of functional influences."
372 F.3d at 931. To be sure, Russell was influenced by func-
tion in designing these decorative elements. After all, he
explained, furniture "has got to function." J.A. 817. But his
objective in compiling these decorative elements onto the
basic shapes of the furniture was not to improve the furni-
ture’s utility but to "give [the pieces] a pretty face." Id. at 816.
He developed the shape of the furniture before turning to
ornamentation. For many of the decorative elements on the
furniture, such as carved shells and leaves, Russell’s purpose
was entirely aesthetic. Moser similarly testified to the "exu-
berant" ornamentation on the GIC and EMC furniture and
opined that "the ornamentation . . . has little or nothing to do
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 21
with the function of these lines." Id. at 853-54. In sum, Rus-
sell’s design and placement of these decorative elements was
not "as much the result of utilitarian pressures as aesthetic
choices." Pivot Point, 372 F.3d at 931. Aesthetic choices were
the dominant force at work in Russell’s design process.
However, the conceptual separability test is a conjunctive
one: the decorative elements adorning the GIC and EMC lines
must be capable of separate identification from the utilitarian
aspects of the furniture, and they must be capable of "existing
independently of, the utilitarian aspects of the [furniture.]" 17
U.S.C. § 101. This poses somewhat of a metaphysical quan-
dary for decorative elements on furniture. The elements serve
no purpose divorced from the furniture — they become
designs in space. But the test is conceptual separability, not
physical separability. 1-2 Nimmer on Copyright, § 2.08. The
House Committee that drafted the 1976 Copyright Act con-
templated that the conceptual separability test could be satis-
fied in this very context:
[O]nly elements . . . which can be identified sepa-
rately from the useful article as such are copyright-
able. And, even if the three-dimensional design
contains some such element (for example, a carving
on the back of a chair or a floral relief design on sil-
ver flatware), copyright protection would extend
only to that element, and would not cover the over-
all configuration of the utilitarian article as such.
H.R. Rep. No. 94-1476, at 55 (1976), reprinted in 1976
U.S.C.C.A.N. 5659, 5668 (emphasis added). Like sculpted
designs on belt buckles, the decorative elements adorning the
GIC and EMC lines are "conceptually separable sculptural
elements." Kieselstein-Cord, 632 F.2d at 993. Their form is
not "inextricably intertwined" with the function of furniture.
Carol Barnhart, 773 F.2d at 419. They are "artistic and aes-
thetic features" that can "be conceived of as having been
added to, or superimposed upon, an otherwise utilitarian arti-
22 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
cle," and they are therefore capable of existing independently
of the furniture. Id.Because the GIC and EMC designs are original and con-
ceptually separable from the utilitarian aspects of the furni-
ture, we agree with the district court that the compilation of
design elements on the EMC and GIC lines are entitled to
copyright protection.7
4.
We next assess whether Collezione infringed Universal’s
copyrights. Assuming that the district court correctly applied
the legal standard, its factual findings regarding the similarity
between Universal’s GIC and EMC lines and Collezione’s
20200 and 20000 collections are entitled to considerable def-
erence. Roanoke Cement, 413 F.3d at 433; see also Taylor
Corp., 403 F.3d at 965 (observing that most circuits apply a
clearly erroneous standard of review to factual finding of sub-
stantial similarity even though credibility is not implicated).
Collezione argues that the court incorrectly applied the legal
standard for copyright infringement by comparing Universal
and Collezione’s furniture as a whole, rather than comparing
the compilations of design elements.
A successful claim of copyright infringement requires the
plaintiff to prove that the "defendant copied the original ele-
ments of that copyright." Lyons P’ship v. Morris Costumes,
7
Collezione incorrectly asserts that the district court found Universal’s
"furniture, as a whole, to be copyrightable, rather than the compilations of
public domain designs on the furniture." Br. of Appellant 42. The court
was explicit that "[w]hile the shape of the furniture cannot be the subject
of a copyright, no matter how aesthetically pleasing it may be, the decora-
tive elements that are separable from the furniture can be." Liability Opin-
ion 17 (emphasis added). The court likewise concluded that Collezione
"violated the Copyright Act by producing pieces of furniture displaying
substantially similar types and arrangements of decorative elements as
used in [Universal’s] furniture." Id. at 39 (emphasis added).
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 23
Inc., 243 F.3d 789, 801 (4th Cir. 2001). "When the plaintiff
possesses no direct evidence that the defendant copied its pro-
tected work, it may create a presumption of copying by indi-
rect evidence establishing that the defendant had access to the
copyrighted work and that the defendant’s work is ‘substan-
tially similar’ to the protected material." Id. (internal citation
omitted). Substantial similarity is a two-pronged test. The
plaintiff must show that the two works are (1) "extrinsically
similar because they contain substantially similar ideas that
are subject to copyright protection" and (2) "intrinsically simi-
lar in the sense that they express those ideas in a substantially
similar manner from the perspective of the intended audience
of the work." Id. (internal citations and quotation marks omit-
ted).
The extrinsic inquiry is an objective one on which expert
testimony may be relevant. Dawson v. Hinshaw Music, Inc.,
905 F.2d 731, 733 (4th Cir. 1990). The extrinsic analysis
looks to "external criteria" of "substantial similarities in both
ideas and expression." Apple Computer Co. v. Microsoft
Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). The intrinsic
inquiry, in contrast, implicates the perspective of the object’s
intended observer. Dawson, 905 F.3d at 733. In assessing
intrinsic similarity, the factfinder looks to the "total concept
and feel of the works, but only as seen through the eyes of the
. . . intended audience of the plaintiff’s work." Lyons, 243
F.3d at 801. (internal citations and quotation marks omitted)
(emphasis in original). Judge Learned Hand phrased the
intrinsic test as whether "the ordinary observer, unless he set
out to detect the disparities, would be disposed to overlook
them, and regard their aesthetic appeal as the same." Peter
Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489
(2d Cir. 1960).
Collezione maintains that the district court incorrectly
applied the substantial similarity test by comparing the non-
copyrightable elements of the parties’ furniture collections.
On the extrinsic prong, Collezione argues that the court’s
24 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
comparison of the two furniture collections as a whole
improperly factored in noncopyrightable features such as the
furniture’s shape and color. On the intrinsic prong, Collezione
argues that the court’s comparison of individual pieces of fur-
niture within each collection also encompassed these non-
copyrightable features.
In the furniture context, the external criteria of similar ideas
and expressions will presumably be the collections’ historical
themes and ornamentation. Cf. Taylor, 403 F.3d at 966 (con-
cluding that district court correctly applied extrinsic test to
holiday greeting card designs by considering the cards’ "simi-
lar holiday themes, paper stock and printing techniques").
"Idea" and "expression" are broad concepts, and the district
court properly compared the ideas and expressions of Univer-
sal and Collezione’s collections by considering the furniture
as a whole.
Still, substantial similarity asks whether a defendant copied
the "original elements" of a copyright. Lyons, 243 F.3d at 801(emphasis added). The district court’s extrinsic analysis
briefly mentioned the furniture’s noncopyrightable features
such as similarity of shape and color. And the court would
have erred had it found similarity only in the collection’s non-
copyrightable features. See Herzog v. Castle Rock Entm’t, 193
F.3d 1241, 1257 (11th Cir. 1999) ("A court may grant sum-
mary judgment for defendant as a matter of law if the similar-
ity between the two works concerns only noncopyrightable
elements of the plaintiff’s work."). But the court’s extrinsic
analysis largely focused on the copyrightable aspects of Uni-
versal’s GIC and EMC: the ornamentation. The court deter-
mined that the collections shared a "highly decorative
appearance with a traditional feel" and "very ornamental
designs combined with basic styles that resemble furniture
pieces from England in the 18th or 19th centuries." Liability
Opinion 21-22. In so finding, the court relied on Universal’s
expert testimony, which is helpful to the extrinsic prong.
Dawson, 905 F.2d at 733. In Thomas Moser’s view, Univer-
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 25
sal’s and Collezione’s collections shared a "great collection of
ornamental detail, principally in the form of relief carvings"
and were "similar in terms of placement, selection, arrange-
ment, and most certainly execution." J.A. 860. Moser
explained that Universal’s GIC had a "consistency in the
application of the ornament, neither too much or too little,"
and that Collezione’s 20000 collection shared this aesthetic
"harmony." Id. at 893. He described the ornamentation on
these collections as taking up the same amount of space on
the furniture. In sum, the district court correctly applied the
extrinsic prong by considering whether the protected aspects
of Universal’s GIC and EMC lines were substantially similar
in idea and expression to Collezione’s 20000 and 20200 col-
lections. We thus find no clear error in the court’s determina-
tion of extrinsic similarity.
Collezione’s argument with respect to the intrinsic prong of
substantial similarity is also unavailing because, as other cir-
cuits have observed, "analytic dissection" of protected and
unprotected elements is inappropriate under the intrinsic
prong, given that the ordinary observer does not make this
distinction. Taylor, 403 F.3d at 966; Knitwaves, Inc. v. Lolly-
togs, Ltd., 71 F.3d 996, 1003 (2d Cir. 1995). Rather, the ordi-
nary observer encounters the furniture as one object.
The district court properly assessed whether the ordinary
observer of individual pieces of furniture within the disputed
collections would "see each piece the same, discounting any
trivial differences." Liability Opinion 22; see Taylor, 403 F.3d
at 966 ("[A] finding of substantial similarity is not precluded
where differences in detail do little to lessen a viewer’s over-
whelming impression that the defendant’s products are appro-
priations." (internal citation and quotation marks omitted)).
The court made detailed comparisons of the ornamental
designs on the individual pieces within the competing collec-
tions. Collezione resorts to selective references to the Liabil-
ity Opinion to suggest that the intrinsic similarity analysis
focused on noncopyrightable elements. Br. of Appellant 45.
26 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
Although the court again mentioned noncopyrightable fea-
tures such as the furniture’s shape and color, it appropriately
focused on whether the ordinary, reasonable observer would
find the furniture lines, as a whole, to be substantially similar.
Taylor, 403 F.3d at 966. Additionally, the court’s analysis
clearly concentrated on the compilation of designs on the fur-
niture. For example, it found that Collezione’s 20000 side-
boards were "nearly identical" to Universal’s GIC sideboards
because both had "decorative elements in the same places
with carvings such as the rosette atop the pilasters and mold-
ing around the top railings," as well as "matching inlays in the
side doors bordered by matching carved moldings." Liability
Opinion 24. The court made similar detailed comparisons of
the ornamentation on the other pieces in Collezione’s 20000
collection. Although the court’s comparison of Collezione’s
20200 collection to Universal’s EMC was less detailed, the
court did not clearly err by finding that the entire 20200 col-
lection was substantially similar to the EMC. The court deter-
mined that Collezione "undertook significantly less effort
with respect to redesigning the 20200 collection than it did
with its 20000 collection" and that Collezione essentially cop-
ied the EMC. Id. at 28-29. The photographs in evidence show
near exact similarity between these collections, as well as
between most of Universal’s GIC and Collezione’s 20000 col-
lections. Accordingly, the court did not err in determining that
most of Collezione’s 20000 redesigns infringed Universal’s
GIC copyright8 and that all of Collezione’s 20200 redesigns
infringed Universal’s EMC copyright.
B.
Collezione next challenges the district court’s determina-
tion that it violated the Lanham Act by marketing actual
8
We agree with the district court that Collezione’s 20000 chairs and rec-
tangular tables are not intrinsically similar to Universal’s GIC chairs and
rectangular tables. These pieces therefore do not infringe Universal’s
copyrights.
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 27
pieces from Universal’s EMC line as its own furniture at the
High Point furniture market in October 2004. The Lanham
Act prohibits a "false designation of origin" that is "likely to
cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association . . . or as to the origin"
of "goods, services, or commercial activities." 15 U.S.C.
§ 1125(a)(1)(A). The type of false designation of origin at
issue here is a "reverse passing off," which occurs when a
"producer misrepresents someone else’s goods or services as
his own." Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23, 28 n.1 (2003). A reverse passing off claim
requires the plaintiff to prove four elements: "(1) that the
work at issue originated with the plaintiff; (2) that origin of
the work was falsely designated by the defendant; (3) that the
false designation of origin was likely to cause consumer con-
fusion; and (4) that the plaintiff was harmed by the defen-
dant’s false designation of origin." Syngenta Seeds, Inc. v.
Delta Cotton Coop, Inc., 457 F.3d 1269, 1277 (Fed. Cir.
2006).
On the first element, Universal is the "origin" of the EMC
even though it does not manufacture the furniture. Although
"the most natural understanding of the ‘origin’ of ‘goods’ —
the source of wares — is the producer of the tangible prod-
uct," origin may also encompass "the trademark owner who
commissioned or assumed responsibility for (‘stood behind’)
production of the physical product." Dastar, 539 U.S. at 31-
32. Universal is the company that markets and "stands
behind" its furniture collections. Universal labels the furniture
with its name, distributes the furniture, and owns the copy-
rights in the designs.
With respect to the second element — that the origin of the
work was falsely designated — the district court found this
element satisfied by Collezione’s display of actual pieces
from Universal’s EMC line at the 2004 High Point furniture
market. The court’s credibility determinations and factual
findings in that respect are entitled to our deference, and we
28 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
are unable to identify clear error. The court examined and
assessed photographs of the showroom furniture and heard
testimony from Universal Vice-President Stephen Giles, who
took the photographs after learning that Collezione was sell-
ing furniture strikingly similar to the EMC line. Giles con-
firmed that Collezione’s display samples bore lot control
stickers that he had designed for Universal. The court com-
pared photographs of Universal’s EMC pieces to the photo-
graphs taken by Giles and concluded that Collezione was
marketing Universal’s furniture at the showroom. The photo-
graphs in evidence amply support the court’s finding. Com-
pare J.A. 2531, id. at 2539-40, and id. at 2497, with id. at
1272, id. at 1274, and id. at 1278. Because Collezione dis-
played actual pieces from Universal’s EMC line and marketed
them as belonging to its 20200 collection, Collezione falsely
designated the origin of such furniture.
The third element of the reverse passing off claim, con-
sumer confusion, requires a showing that a "substantial num-
ber . . . of consumers are likely to be misled." Scotts Co. v.
United Indus. Corp., 315 F.3d 264, 280 (4th Cir. 2002).
"While there is no bright line test to determine the existence
of a likelihood of consumer confusion, recovery under the
Lanham Act requires, at a minimum, that confusion, mistake,
or deception be likely, not merely possible." Custom Mfg. &
Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 651 (11th
Cir. 2007) (internal citation and quotation marks omitted). As
the Sixth Circuit has observed, when a "defendant has taken
the plaintiff’s product and has represented it to be his own
work," it is "difficult to imagine how a designation of origin
of a product could be more false, or could be more likely to
cause confusion or mistake as to the actual origin of the prod-
uct." Johnson v. Jones, 149 F.3d 494, 503 (6th Cir. 1998).
Collezione’s display of Universal’s furniture at a lower price
was likely to mislead a substantial number of consumers. As
the district court recognized, "[i]t would be difficult to fathom
a situation where a customer would not be confused by seeing
two different companies marketing the same furniture under
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 29
different names." Liability Opinion 37. Indeed, consumer
confusion is what prompted Giles to visit the showroom for
inspection; he learned of Collezione’s display from a con-
fused dealer.
Finally, turning to the fourth element, we must reject Col-
lezione’s contention that, because it did not actually sell the
EMC furniture and recalled its sales photos of the furniture,
Universal suffered no harm from the false designation. Even
if the EMC furniture never left the High Point showroom, the
district court properly found that Universal suffered harm
simply from the display of its furniture by Collezione. A sig-
nificant harm of reverse passing off is that the "originator of
the misidentified product is involuntarily deprived of the
advertising value of its name and of the goodwill that other-
wise would stem from public knowledge of the true source of
the satisfactory product." Smith v. Montoro, 648 F.2d 602,
607 (9th Cir. 1981). As the Supreme Court explained in
Dastar, the Lanham Act "assure[s] a producer that it (and not
an imitating competitor) will reap the financial, reputation-
related rewards associated with a desirable product." 539 U.S.
at 34 (internal citation and quotation marks omitted). We thus
agree with the district court that Collezione’s display of the
EMC furniture deprived Universal of "the opportunity to earn
sales and profits." Liability Opinion 37. By displaying Uni-
versal’s furniture as its own for a lower price, Collezione
appears to have retained customers that would have otherwise
purchased from Universal, even if it did not actually sell the
EMC pieces in question. Universal introduced evidence that
Collezione sold pieces in its 20200 collection to customers
who placed their orders during the period in which Collezione
displayed corresponding pieces of Universal’s EMC line. We
therefore affirm the court’s ruling that Collezione violated the
Lanham Act.
C.
Collezione also challenges the district court’s determination
that it violated North Carolina’s UDTPA by displaying Uni-
30 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
versal’s furniture during the 2004 High Point furniture mar-
ket. The UDTPA makes unlawful "unfair methods of
competition in or affecting commerce" and "unfair or decep-
tive acts or practices in or affecting commerce." N.C. Gen.
Stat. § 75-1.1. As used in the UDTPA, the words "unfair
methods of competition" encompass "any conduct that a court
of equity would consider unfair." Polo Fashions, Inc. v.
Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987). More specifi-
cally, a "practice is unfair if it is unethical or unscrupulous,
and it is deceptive if it has a tendency to deceive." Id.In these circumstances, we are unable to conclude that Col-
lezione’s conduct — displaying a rival company’s products as
though they were its own — was neither unfair nor deceptive.
The district court found that Collezione not only displayed
Universal’s EMC line as its own, but also actively attempted
to deceive potential customers by removing any indicia
(including certain stickers) that Universal had actually pro-
duced the furniture. Because such conduct is unethical and
has a strong tendency to deceive, we must affirm the court’s
conclusion that Collezione contravened the UDTPA. See Har-
rington Mfg. Co. v. Powell Mfg. Co., 248 S.E.2d 739, 746
(N.C. Ct. App. 1978) (concluding that UDTPA is violated
where defendant used plaintiff’s "actual product in demon-
strations to potential customers, [and] at the same time falsely
represent[ed] . . . that the product had been manufactured by"
the defendant).
D.
Finally, Collezione challenges the district court’s award of
damages, maintaining that the court erred when it rejected
proof of deductible expenses and instead awarded damages to
Universal in an amount equal to Collezione’s gross revenue
from sales of the 20000 and 20200 collections.
A "copyright owner is entitled to recover the actual dam-
ages suffered by him or her as a result of the infringement,
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 31
and any profits of the infringer that are attributable to the
infringement and are not taken into account in computing the
actual damages." 17 U.S.C. § 504(b). "In establishing the
infringer’s profits, the copyright owner is required to present
proof only of the infringer’s gross revenue, and the infringer
is required to prove his or her deductible expenses and the
elements of profit attributable to factors other than the copy-
righted work." Id. In other words, "[o]nce the copyright owner
has established the amount of the infringer’s gross revenues,
the burden shifts to the infringer to prove either that part or
all of those revenues are ‘deductible expenses’ (i.e., are not
profits), or that they are ‘attributable to factors other than the
copyrighted work.’" Bouchat v. Balt. Ravens Football Club,
Inc., 346 F.3d 514, 520 (4th Cir. 2003) (internal citation omit-
ted).
Following its three-day damages inquiry in June 2008, the
district court issued its Damages Opinion, determining that
Collezione received gross revenues of $4,633,621.26 from its
infringing 20200 collection and $6,695,155.92 from its
infringing 20000 collection. The court also found that Collez-
ione’s infringement was willful. During discovery, Collezione
was asked to produce a Rule 30(b)(6) deponent who could
testify to the company’s gross profits and deductible expenses
and to the methodology for calculating deductible expenses.
Collezione designated its chief financial officer, Paul Frankel,
who was unable to provide these calculations. Frankel
asserted that there were no documents in existence from
which gross profits on the 20000 or 20200 could be calcu-
lated. Further, he stated that no one in the company had calcu-
lated net profits on the collections as of that date. Shortly
before trial, Collezione managed to produce a summary of its
profit calculations, which Frankel characterized as
"[r]easonably accurate," though he was not "sure." J.A. 1139,
1155. After the damages inquiry, the court ordered Collezione
to submit revised calculations, which the court later found
noncompliant because the summary was unreliable and incon-
sistent with Frankel’s testimony. Importantly, the court found
32 UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA
that "Collezione’s submissions demonstrate its calculation of
total sales increased between summary judgment and trial, but
its net profit calculation inexplicably decreased." Damages
Opinion 19. The court thus concluded that Collezione had
failed to meet its burden of proving deductible expenses
because it "presented methods of calculating costs which are
confusing, unreliable, and internally inconsistent." Id. at 12.
Further, Collezione’s delay in producing the first summary
until shortly before trial hampered Universal’s ability to
investigate its accuracy.
The district court applied the correct legal standard when it
required Universal to establish Collezione’s gross profits from
the infringement and then shifted the burden to Collezione to
prove its deductible expenses. Moreover, we discern no clear
error in the court’s conclusion that Collezione failed to meet
this burden. The court’s comprehensive findings were based
on its extensive examination of the parties’ presentations and
on the credibility of witnesses, particularly the equivocal testi-
mony of Frankel. These factual findings are entitled to our
deference.
Nor did the district court abuse its discretion by rejecting
Collezione’s proffered calculations as unreliable. Collezione
was given several opportunities to offer reliable proof of
deductible expenses, yet repeatedly failed to do so. Its appel-
late contention that the "[d]istrict court, as the finder of fact
. . . should have reviewed the documents and calculated gross
and net profits for each of the infringing pieces of furniture,"
Br. of Appellant 65, demonstrates a gross misunderstanding
— it is the infringer’s burden to prove deductible expenses.
17 U.S.C. § 504(b). Finally, the court did not err by finding
that Collezione’s infringement was willful, particularly given
Collezione’s admission that it initially set out to imitate Uni-
versal’s GIC and EMC lines and its display of Universal’s
furniture at the October 2004 High Point market.
UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA 33
IV.
For these reasons, we affirm the district court’s judgment
on liability and damages.9
AFFIRMED
9
Collezione claims that the Injunction is overbroad because it applies to
furniture within the 20000 and 20200 collections that the district court did
not find to infringe Universal’s GIC and EMC copyrights. In particular,
Collezione maintains that it sells entertainment centers (other than the
infringing 20000 armoires) and desks within these collections, and that
Universal does not sell desks or entertainment centers as part of the EMC
or GIC. Br. of Appellant 70. Universal did not respond to this argument.
We assume that there can be no infringement of nonexistent pieces of Uni-
versal’s furniture. Consequently, we affirm the permanent injunction only
for the furniture within Collezione’s 20000 and 20200 lines that actually
infringes Universal’s copyrights.