What Happened?
In Precious Moments, Inc. v. La Infantil, Inc., Precious Moments, Inc. (“PMI”) licensed its artwork to manufacturers which created fabric that was then sold wholesale and retail. La Infantil, a retail store that sold baby products, lawfully acquired the licensed PMI fabric and used it to create items like bedding, clothing, diaper bags, headboard covers, diaper holders, fitted sheets, comforters and bumper pads. In 1997, Precious Moments filed suit against La Infantil alleging that it violated their copyright by using the licensed fabric to make items it then sold.
What Did the Court Decide?
Initially, PMI attempted to get a preliminary injunction to prevent La Infantil from selling its products. [1] A preliminary injunction is an order from a court, issued before a trial, which would force a party to do or stop doing something. In this case, PMI attempted to force La Infantil to stop selling products using their fabrics. To get a preliminary injunction, PMI had to demonstrate that they were likely to win their claims claims once the case was actually litigated.
The judge that decided that motion denied the injunction as to the copyright claims. The judge explained that the central issue was whether the items made with the licensed fabric constituted derivative works. Continuing, the judge concluded that for a work to be a derivative, “it must contain creativity and originality that would make it independently copyrightable.” Otherwise, the “most trivial of modifications” would result in an infringing derivative work. Because there was nothing creative or original done to the fabric (cutting and sewing clearly did not suffice), no derivative work was created. As such, Precious Moments’ copyright claim failed and no injunction was issued.
However, this doesn’t mean that the copyright claim was definitely defeated, it just means that there was not enough evidence at that early juncture to issue a preliminary injunction. So, the case continued and was litigated for five more years. After everyone gathered all their evidence, the parties filed cross motions for summary judgment. Summary judgment is a type of motion that allows a judge to dispose of a case (declare a winner and loser) prior to trial. Summary judgment is appropriate when, after considering all the undisputed evidence, and applying the law to that evidence, it is clear that one side should win and there is no need to have a trial. In this case, there were cross-motions for summary judgment, which means that both sides claimed they should be declared the winner based on the evidence.
A different judge decided the summary judgment motions. However, the key issue was ultimately the same: whether the items made from the licensed fabric constituted derivative works. PMI claimed that the fabric was cut into patterns, other fabrics were selected and coordinated with their fabric, trim, lace and ruffles were added and, in some cases, the fabric was quilted. PMI argued that all of these actions demonstrated enough originality that the result was an infringing derivative work. [2]
Unfortunately for PMI, the judge did not agree. During the motion process the judge was provided with several product samples and inspected them carefully. After that inspection the judge was convinced that the La Infantil products lacked originality and could not be considered derivative works. The judge reasoned that, first, there was no originality in the sizes of the cut fabric or the shapes into which it was cut; those were dictated by a client’s measurements or the dimensions of the pattern being used. Next, the selection of coordinating solid-colored fabrics used to compliment the PMI fabrics demonstrated no originality as there is “nothing original in the use of pink, blue, light green or yellow in baby products.” Such colors are “the norm.” Adding lace or ruffles similarly lacked originality. Finally, the judge emphasized that the sewn products “made no changes to the art design on the fabric.” Nothing about PMI’s copyrighted work was changed in any fashion. Based on these facts, the judge ruled in favor of the defense. In other words, the core of PMI’s case was summarily rejected.
Because the summary judgment did not dispose of all of the claims or parties, a portion of the case remained active. The parties agreed to settle the rest of the case which involved PMI paying La Infantil. You read that right. Instead of receiving damages for its claims, PMI ended up paying the other side; a pretty resounding defeat for PMI.
The Takeaway for Crafters
It appears clear from Precious Moments that if you make mundane, non-creative alterations to a copyrighted work, there is no infringing derivative created and the first sale doctrine would permit the sale of the item. But, like everything else in copyright, this is not an absolute concept and exceptions abound.
[1] Precious Moments, Inc. v. La Infantil, Inc., 971 F. Supp. 66, 67-68 (D.P.R. 1997).
[2] Precious Moments, Inc. v. La Infantil, Inc., No. 97-CV-1635(JAG) (D.P.R. June 3, 2002) (This portion of the case was not published but is attached below).
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