The opinion of the court was delivered by: Paul C. Huck United States District Judge
ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT
This matter is before the Court on the parties' cross-motions for summary judgment. Defendant/Counter-Plaintiff Washington Shoe Co. ("Washington Shoe") seeks summary judgment in its favor for (1) copyright infringement of three copyrights known as "Zebra Supreme" (Registration No. VAu001007893, VA 1-432-334), "Rose Zebra Supreme" (Registration No. VAu988-278)*fn1 and "Ditsy Dots" (Registration No. VAu756-950, VA 1-420-043); and (2) trade dress infringement for the unregistered trade dresses for Zebra Supreme and Ditsy Dots. D.E. #250. Plaintiff/Counter-Defendant Olem Shoe Corp. ("Olem Shoe") seeks summary judgment in its favor on the entirety of the claims and counterclaims at issue in this action including (1) non-infringement, inter alia, of the aforementioned copyrights Zebra Supreme, Rose Zebra Supreme and Ditsy Dots; and (2) non-infringement of the trade dresses for Zebra Supreme and Ditsy Dots. D.E. #254. Since the parties' cross-motions for summary judgment present significantly overlapping issues, the Court will analyze the motions in tandem and decide whether, as to each argument raised, either party is entitled to judgment as a matter of law. For the reasons discussed below, the Court takes the following actions herein:
(1) GRANTS summary judgment in favor of Washington Shoe and DENIES summary judgment with respect to Olem Shoe on the copyright infringement claims addressed herein, except with respect to the new invalidity issues asserted against the Rose Zebra Supreme copyright in Olem Shoe's affirmative defenses filed on November 11, 2011 [D.E. #385];
(2) DENIES summary judgment with respect to Washington Shoe and GRANTS summary judgment in favor of Olem Shoe on the trade dress infringement and false designation of origin claims addressed herein;
(3) DENIES summary judgment with respect to Washington Shoe and GRANTS summary judgment in favor of Olem Shoe on the "willful" copyright and trade dress infringement claims addressed herein; and
(4) DENIES summary judgment with respect to Washington Shoe and GRANTS summary judgment in favor of Olem Shoe on the unfair competition claims addressed herein.
Olem Shoe and Washington Shoe both sell women's boots. This case is about two of Washington Shoe's boots called "Ditsy Dots" and "Zebra Supreme"*fn3 and whether Olem Shoe is infringing upon the patterned designs on the face of such boots with its own boots. As the names suggest, Ditsy Dots boots are covered in a polka-dotted design and Zebra Supreme boots have a design resembling a zebra's black and white-striped skin. Below are illustrative and undisputed photographs of Washington Shoe's Ditsy Dots boots against Olem Shoe's Dots boots (D.E. #354, Exhs. 5 and 11) and Washington Shoe's Zebra Supreme boots against Olem Shoe's Zebra boots (D.E. #354, Exhs. 4 and 16):
On October 29, 2009, Washington Shoe's counsel sent Olem Shoe a cease and desist letter indicating that four Olem Shoe boot designs infringe upon Washington Shoe's copyrighted Ditsy Dots design and violate its trade dress rights. The letter includes small pictures of each of the allegedly infringing boots. It does not include any identifying information for Washington Shoe's Ditsy Dots copyright registration or a sample of the allegedly infringing work. D.E. #250-5, Exh. #9. After a response from Olem Shoe's counsel seeking more information, Washington Shoe's counsel sent a follow up letter on November 9, 2009 to Olem Shoe's counsel providing the Ditsy Dots copyright registration on Form VA. The form indicates that the "Ditsy Dots" copyright was registered to Washington Shoe under registration number VAu-756-950 with an effective date of August 9, 2007. The copyright was for "[a]rtwork designs applied to useful articles." Id. A copy of the work deposited with the United States Copyright Office was not provided. On November 16, 2009, Olem Shoe filed the instant action for a judgment declaring, among other things, that Washington Shoe's Ditsy Dots copyright is invalid, not infringed by Olem Shoe or not enforceable and that its trade dress rights are not enforceable or unprotectable. D.E. #1.
On January 7, 2010, Washington Shoe's counsel sent Olem Shoe a second cease and desist letter alleging that Olem Shoe was infringing the copyright and trade dress for another design: "ZEBRA SUPREME BOOTS." This letter includes one small picture of the allegedly infringing boot. It does not include any identifying information for Washington Shoe's Zebra Supreme copyright registration or a sample of the allegedly infringing work. D.E. #250-5, Exh. #9. One day later, on January 8, 2010, Washington Shoe filed an application to register a work entitled "Zebra Supreme -- Olem," and this matured into a Certificate of Registration effective January 8, 2010. On January 15, 2010, Washington Shoe counterclaimed in this matter for copyright and trade dress infringement regarding both the Ditsy Dots and Zebra Supreme designs as well as unfair competition with regard to both designs. D.E. #12. As an exhibit, Washington Shoe included a picture of the Zebra Supreme design and indicated that the copyright registration was pending in the copyright office. D.E. #13. In its amended counterclaim dated February 11, 2010, Washington Shoe included the copyright registration for "Zebra Supreme -- Olem" on Form VA. D.E. #18. The form indicates that "Zebra Supreme -- Olem" was registered to Washington Shoe under registration number VAu-1-007-893 with an effective date of January 8, 2010. The copyright was for "2d artwork." Id.
Thereafter, Olem Shoe filed a motion to dismiss Washington Shoe's counterclaims. Olem Shoe had asserted that Washington Shoe's copyrights protect only the two-dimensional drawings filed the copyright office, not the three-dimensional boots. The Court found on April 2, 2010 that while the utilitarian functions of Washington Shoe's boots are not protected, the designs on the face of the boots, to the extent they have aesthetic value, are eligible for copyright protection. The Court also found that Washington Shoe had failed to sufficiently allege secondary meaning, a necessary element of its trade dress infringement claims, and granted Washington Shoe leave to amend, which it took. D.E. #47 and #54.
On March 11, 2010, Washington Shoe filed an initial motion for summary judgment limited only to its copyright infringement claims. D.E. #29. In response to this motion, Olem Shoe disputed the validity of Washington Shoe's copyright registrations. D.E. #56. Olem Shoe alleged that Washington Shoe submitted inaccurate information on these registrations thereby barring Washington Shoe's claim for copyright infringement. See 17 U.S.C. § 411(a) & (b)(1) (indicating that registration is a pre-requisite for a claim for copyright infringement). On May 1, 2010, Olem Shoe requested leave of this Court to submit questions to the Register of Copyrights (the "Register") for its advisory opinion regarding Washington Shoe's alleged misrepresentations pursuant to the statutory mechanism set forth in 17 U.S.C. § 411(b)(2). The Court agreed to submit questions to the Register on September 3, 2010. D.E. #167 and #168.*fn4 The allegedly inaccurate information that the Court found to be the proper subject of a request to the Register concerned the registrations' characterization of the Ditsy Dots and Zebra Supreme designs as unpublished and its characterization of the Zebra Supreme design as non-derivative.
On October 14, 2010, the Court received the Register's advisory opinion with respect to its questions. D.E. #209. The Register indicated that if it had known of the allegedly inaccurate information on the Ditsy Dots' application, it would have nonetheless registered this work. With regard to the Zebra Supreme design, the Register stated that had it confirmed the alleged pre-registration retail sales of Zebra Supreme boots, it would have refused registration of that work as "unpublished" because retail sales generally constitute publication. However, pursuant to its general practices, the Register indicated that it would have corresponded with Washington Shoe and that "[c]orrection of such inaccurate information would then allow for registration of the work as a published work." The Register also stated that had it known that Zebra Supreme was created by altering a previously-registered Washington Shoe work called Rose Zebra Supreme (Registration number VAu 988-278), as alleged, it would have refused registration of that work as "non-derivative." While the Register indicated that Washington Shoe would have a similar opportunity for amendment on this issue, it indicated that if the amendment included only certain evidence, it would have nonetheless refused registration of a "derivative" Zebra Supreme work.
After receiving the Register's advisory opinion, the parties agreed to confer and seek the Register's further advice and the Court stayed the case. D.E. #214. On November 10, 2010, Washington Shoe proceeded to file corrective supplementary copyright registrations for both the Ditsy Dots and Zebra Supreme designs.*fn5 D.E. #218. The Register subsequently granted the supplementary registrations for both designs. D.E. #224. The supplementary registration for Ditsy Dots on Form CA indicates that the "Ditsy Dots" copyright was registered to Washington Shoe under registration number VAu-756-950 in 2007. The supplementary registration number is VA 1-420-043 with an effective date of supplementary registration of November 22, 2010. A note indicates that due to online sales in 2006, the status of Ditsy Dots' registration is changed to "published." D.E. #224-1. The supplementary registration for Zebra Supreme-Olem on Form CA indicates that the "Zebra Supreme-Olem" copyright was registered with Washington Shoe under registration number VAu 1-007-893 in 2010. The supplementary registration number is VA 1-423-334 with an effective date of supplementary registration of November 16, 2010. Rose Zebra Supreme was explicitly excluded from Zebra Supreme's supplementary registration. Id. After the filing of cross-motions for summary judgment that are the subject of this order, the Register re-opened the registration for Rose Zebra Supreme, added a publication date, and reregistered it as a published design with registration number VA 1-792-044 with an effective date of August 9, 2007. See D.E. #381 and #390.
In light of these supplementary registrations, Washington Shoe moved for and was granted leave to amend its counterclaims. D.E. #233. Pursuant to a Court order and in light of the amended pleadings, the parties filed the cross-motions for summary judgment at issue herein.*fn6 Responses and replies to these motions for summary judgment have been filed and the motions are ripe for adjudication.
Summary judgment is proper only where the moving party "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The purpose of summary judgment is "to pierce the pleadings and assess the proof in order to see whether there is a genuine need for trial." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587(1986) (quoting Fed. R. Civ. P. 56 advisory committee's note). In Celotex Corp. v. Catrett, the Court held that summary judgment should be entered only against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. In such a situation, there can be 'no genuine issue as to any material fact,' since a complete failure of proof concerning an essential element of the non-moving party's case necessarily renders all other facts immaterial. The moving party is 'entitled to judgment as a matter of law' because the non-moving party has failed to make a sufficient showing on an essential element of the case with respect to which she has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23(1986).
To prevail, the moving party must do one of two things: (1) show that the non-moving party has no evidence to support its case, or (2) present "affirmative evidence demonstrating that the non-moving party will be unable to prove its case at trial." United States v. Four Parcels of Real Property, 941 F.2d 1428, 1437-38 (11th Cir. 1991) (en banc); Young v. City of Augusta. Ga., 59 F.3d 1160, 1170 (11th Cir. 1995). In making this determination, the court must view the evidence and all reasonable inferences therefrom in the light most favorable to the non-moving party. Witter v. Delta Air Lines, Inc., 138 F.3d 1366, 1369 (11th Cir.1998) (citations and quotations omitted).
If the moving party successfully discharges this initial burden, the burden shifts to the non-moving party to establish, by going beyond the pleadings, that there is a genuine dispute*fn7 as to facts material to the non-moving party's case. Young, 59 F.3d at 1170. The non-moving party must do more than rely solely on its pleadings, and simply show that there is some metaphysical doubt as to the material facts. Matsushita, 475 U.S. at 586-87. A genuine dispute of material fact does not exist unless there is sufficient evidence favoring the non-moving party for a reasonable jury to return a verdict in its favor. Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 249 (1986); Ritch v. Robinson-Humphrey Co., 142 F.3d 1391, 1393 (11th Cir. 1998); EEOC v. Amego, 110 F.3d 135, 143(1st Cir. 1997); Thornton v. E.I. Du Pont De Nemours and Co., Inc., 22 F.3d 284, 288 (11th Cir. 1994). A dispute is "genuine" if the record taken as a whole could lead a rational trier of fact to find for the non-moving party. Allen v. Tyson Foods, 121 F.3d 642, 646 (11th Cir. 1997). A dispute is "material" if it is a legal element of the claim under applicable substantive law which might affect the outcome of the case. Anderson, 477 U.S. at 248; Allen, 121 F.3d at 646.
A mere "scintilla" of evidence in favor of the non-moving party, or evidence that is merely colorable or not significantly probative is not enough to meet this burden. Anderson, 477 U.S. at 252. See also Mayfield v. Patterson Pump Co., 101 F.3d 1371, 1376 (11th Cir. 1996) (conclusory allegations and conjecture cannot be the basis for denying summary judgment). Where a reasonable fact finder may "draw more than one inference from the facts, and that inference creates a general issue of material fact, then the court should refuse to grant summary judgment." Barfield v. Brierton, 883 F.2d 923, 933-34 (11th Cir. 1989).
Under these standards, courts have "regularly granted summary judgment in copyright cases where it is clear that the plaintiff cannot make out the elements of the claim" of copyright infringement. Siskind v. Newton-John, 1987 U.S. Dist. LEXIS 4084, 1987 WL 11701 at *4 (S.D.N.Y. May 22, 1987). The Eleventh Circuit has "recognized that 'non-infringement may be determined as a matter of law on a motion for summary judgment, either because the similarity between two works concerns only non-copyrightable elements of the plaintiff's work, or because no reasonable jury, properly instructed, could find that the two works are substantially similar.'" (internal citations omitted). Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218 (11th Cir. 2008). Other courts have also specifically approved the use of summary judgment to find infringement as a matter of law. See e.g., Knickerbocker Toy Co., Inc. v. Genie Toys Inc., 491 F.Supp. 526, 528, 211 U.S.P.Q. 461 (D.C. Mo. 1980), citing Ferguson v. National Broadcasting Co., 584 F.2d 111 (5th Cir. 1978); Rogers v. Koons, 960 F.2d 301, 22 U.S.P.Q.2d 1492 (2nd Cir. 1992); Silver Ring Splint Co. v. Digisplint, Inc., 543 F. Supp.2d 509 (W.D. Va. 2008); Express, LLC v. Fetish Group, Inc., 424 F. Supp.2d 1211 (C.D. Cal. 2006).
B.Registration as a Precondition for an Infringement Action Before reaching the substantive question of whether Washington Shoe has established copyright infringement as a matter of law, it must first be established that Washington Shoe has registered its copyright in accordance with the Copyright Act as a precondition to this infringement action. See 17 U.S.C. § 411(a) ("[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title."). It is undisputed that the Register recently granted supplementary registrations for both of the previously registered Ditsy Dots and Zebra Supreme designs in the aftermath of challenges from Olem Shoe that Olem Shoe claimed would cause the Register to refuse or cancel registration. It is also undisputed that, after the filing of cross-motions for summary judgment that are the subject of this order, the Register re-opened the registration for Rose Zebra Supreme, added a publication date, and re-registered it as a published design with registration number VA 1-792-044 with an effective date of August 9, 2007. See D.E. #381 #390. Such registrations create a presumption that the copyrights are valid. 17 U.S.C. 410(c) ("In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate"); Montgomery v. Noga, 168 F.3d 1282, 1289 (11th Cir. 1999). Such presumption thereby shifts the burden to Olem Shoe to provide invalidity. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 683 F.2d 821 (11th Cir. 1982) (production of certificate of copyright registration shifts the burden of proof to defendant to prove invalidity). In its motion for summary judgment and in its response to Washington Shoe's motion for summary judgment, Olem Shoe challenges all three of Washington Shoe's copyright registrations at issue in this case. Thereby, Olem Shoe disputes Washington Shoe's ability to proceed on its infringement counterclaims for failure to register its copyright claim in accordance with the applicable requirements of the Copyright Act.*fn8 As discussed above, Olem Shoe previously made similar challenges prior to the supplementary registrations which resulted in the Court seeking an advisory opinion from the Register.*fn9 This resulted in Washington Shoe submitting supplementary registrations to cure the defects found in its original registrations.
To assess whether Washington Shoe properly registered its copyrights, one must look to Section 411(b) which qualifies Section 411(a):
(1) A certificate of registration satisfies the requirements of this section and section 412 regardless of whether the certificate contains any inaccurate information, unless-
(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and
(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.
(2) In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.17 U.S.C. § 411(b).
To the extent Olem Shoe alleges that Washington Shoe included inaccurate information in its supplementary registrations that it knew was inaccurate, this Court is obligated to request that the Register advise it as to whether the inaccurate information, if known, would have caused the Register to refuse registration.*fn10 The Register, however, has advised the Court that where the Court "concludes that the bare allegations are unsupported by any facts, the [C]court would be free to refrain from issuing requests to the Register." D.E. #209. To the extent the Register has already offered clear guidance on how it would handle a matter in issue, the Court similarly believes it may refrain from re-issuing duplicative or self-evident questions.
First, with respect to the Zebra Supreme supplementary registration (Va 1-432-334, effective November 16, 2010), Olem Shoe argues that Washington Shoe failed to disclose information that would have caused the Register to cancel the Zebra Supreme registration. In submitting the supplementary registration, Olem Shoe asserts that Washington Shoe did not inform the Copyright Office that Zebra Supreme's pre-existing work, Rose Zebra Supreme was itself a derivative work, derived from another Washington Shoe design. As evidence, Olem Shoe cites the testimony of Roel Salonga, Washington Shoe Art Director, who claimed to have designed Zebra Supreme by modifying his own prior version of such designs. Based on this evidence, Olem Shoe claims that Washington Shoe was obligated to disclose Salonga's earlier versions as a pre-existing work for Zebra Supreme to the Register. By only disclosing the final version of the Rose Zebra Supreme design as a pre-existing work, Olem Shoe claims that Washington Shoe included inaccurate information in its application. Olem Shoe, however, provided no evidence that the first prior version was in the public domain or was registered or sold. A rule requiring copyright applicants to disclose all drafts or unfinished versions of their design or product would be unreasonable and unnecessary to accomplish the goals of the Copyright Act. Indeed, the Copyright Compendium II at § 626.01(a) indicates that a statement of a pre-existing material for a derivative work is not required "unless a substantial amount of the material incorporated in the derivative work is in the public domain or has been registered or published previously." The cases cited by Olem Shoe for the proposition that Washington Shoe was required to disclose prior drafts of the Zebra Supreme design are all distinguishable as they involve previously registered or published pre-existing works or works in the public domain. See Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F. Supp. 980, 988 (S.D.N.Y. 1980) (public domain); Vogue Ring Creations v. Hardman, 410 F. Supp. 609, 615 (D.R.I.) (published work); GB Marketing USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 774-75 (W.D.N.Y. 1991) (published work); Garner v. Sawgrass Mills Limited Partnership, 1994 WL 829978, at *8 (D. Minn. Dec. 22, 1994). Therefore, the Court finds that Washington Shoe's statement that Rose Zebra Supreme was the only pre-existing work for Zebra Supreme was not inaccurate as no evidence provided by Olem Shoe sufficiently supports this allegation. As a result, it would not warrant a request to the Register or otherwise disturb Washington Shoe's ability to proceed in this action.
Second, Olem Shoe alleges misrepresentations on the Rose Zebra Supreme registration (VAu 988-278, effective May 21, 2009). Olem Shoe argues that Washington Shoe was required to disclose Salonga's prior draft of this design as a pre-existing work. For the reasons discussed above, Salonga's draft design is not a pre-existing work that Washington Shoe was required to disclose and thus not disclosing such work did not cause an inaccuracy that would warrant a request to the Register or otherwise disturb Washington Shoe's ability to proceed in this action.
Third, Olem Shoe alleges that Washington Shoe misrepresented the Rose Zebra Supreme work as "unpublished" on the registration even though it had been sold, and therefore was "published," prior to the date of registration. While the Rose Zebra Supreme certificate of registration filed in this action does not state that the work is unpublished, the pre-fix "VAu" signifies an unpublished work which implies that the application failed to disclose that the work was previously published. The certificate of registration attached to Washington Shoe's counterclaim clearly indicates an effective date of May 21, 2009 and has such a pre-fix. Interestingly, the copy of the application for registration that Washington Shoe claims to have used to apply for registration clearly states that Rose Zebra Supreme had been published as of April 20, 2007. Olem Shoe characterizes this copy as a "sleight of hand" saying that "[t]here is no evidence that this application was ever submitted or what deposit was submitted with it." It conjectures that the Register did not use such application as the basis for registration since such application would have led the Register to register a published, rather than an unpublished, work.
However, it has not offered any evidence to support its conjecture. Nonetheless, if Olem Shoe is correct factually, its argument here regarding an inaccuracy in publication status is nearly identical to one of its previous arguments for which this Court sought the advice of the Register. Under the earlier argument, that was with respect to Zebra Supreme, this Court "inquired whether the Register would have refused registration for Zebra Supreme-Olem if she had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe . . . sold the Zebra-Supreme Olem boots in retail stores before submitting the application for registration." D.E. #209. In response, the Register stated "the Office would follow its established practice and correspond with the applicant regarding such information." Id. While the "Office would have refused to register a claim to copyright in Zebra-Supreme-Olem as unpublished, in the course of corresponding with the applicant the Office could annotate or amend the application to indicate the work had indeed been published on the date of the first retail sales (internal citation omitted)." Id. "Correction of such inaccurate information would then allow for registration of the work as a published work." Id. This is precisely what occurred with the Zebra Supreme registration. While the Register already provided this guidance in the Zebra Supreme context, which would suggest a similar outcome in the Rose Zebra Supreme context, the Court felt it would nonetheless be prudent to ask the parties whether they thought it would be necessary for Washington Shoe to correct this registration in order for this action to proceed. D.E. #367. At a hearing on October 21, 2011, Olem Shoe's counsel argued that, in spite of this precedent, the Register might refuse registration entirely based on the inaccuracy in publication status and that it would be necessary for Washington Shoe to correct it. D.E. #387. He stated, "I agree with the Court that they could go back to the copyright office and try to correct that, and if they correct it within time, then fine." Id. Washington Shoe thereby took the necessary steps to notify the Register of the inaccuracy and seek to have it corrected. As a result, the registration for Rose Zebra Supreme was re-opened, a publication date was added, and the design re-registered as a published design with registration number VA 1-792-044 with an effective date of August ...