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United States Court of Appeals,
Fifth Circuit.
No. 94-60389.
NORMA RIBBON & TRIMMING, INC., Plaintiff-Counter Defendant-
Appellee,
v.
John D. LITTLE, et al., Defendants,
John D. Little and Lorianne Little, Defendants-Counter
Plaintiffs-Appellants.
April 27, 1995.
Appeal from the United States District Court for the Southern
District of Texas.
Before VAN GRAAFEILAND,* JOLLY and WIENER, Circuit Judges.
VAN GRAAFEILAND, Circuit Judge:
This is an appeal from a summary judgment in a copyright
infringement action. The United States District Court for the
Southern District of Texas (Vela, J.), concluding that
counter-plaintiffs John D. Little and Lorianne Little could not
establish ownership of valid copyrights, dismissed their
infringement action against counter-defendant Norma Ribbon &
Trimming, Inc. ("Norma Ribbon"). For the reasons that follow, we
affirm.
At issue herein are asserted copyrights on ribbon flowers,
artificial flowers made of twisted ribbon that may be attached as
decoration to clothing and accessories. According to the
uncontradicted testimony of the Littles' expert witness, ribbon
*Circuit Judge, the Second Circuit, sitting by designation.
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flowers have been in existence for many years, possibly as early as
the 18th century. Norma Ribbon has made and marketed them since
the late 1940s. The Littles began manufacturing ribbon flowers in
1983.
Prior to 1984, ribbon flowers were manufactured by hand, by
twisting a piece of ribbon into a floral design and sewing it
together. In 1984, the spouse of an employee of the Littles
developed a machine and a heat-seal process that reduced
substantially the time required to produce each flower. This
invention also permitted greater consistency in the manufacturing
process. Flowers made using this invention were of consistently
high quality, whereas flowers made by hand often were irregular and
less attractive.
In April of 1985, the Littles entered into an agreement to
produce ribbon flowers for Norma Ribbon. Meanwhile, the Littles
applied for federal copyright registration and, effective May 1,
1986, were issued certificates of registration for the twelve
designs which are the subject of this litigation. The Littles
advised Norma Ribbon that these flowers were copyrighted and Norma
Ribbon acknowledged in writing the copyrights' existence. For
several years, Norma Ribbon provided the Littles with raw materials
for the flowers, and the Littles produced the ribbon flowers under
the agreement. However, in late 1987, Norma Ribbon rescinded the
agreement without notice and began to import identical ribbon
flowers from suppliers in Mexico. Norma Ribbon later established
its own manufacturing facility in Mexico.
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Early in 1988, John Little wrote to Norma Ribbon advising the
company that it could no longer import or distribute the ribbon
flowers on which the Littles held copyrights. Nevertheless, Norma
Ribbon continued to do so. Therefore, in 1989, the Littles
prompted customs agents to seize a shipment of the flowers as they
crossed the border from Mexico into the United States by claiming
that Norma Ribbon was importing the flowers in violation of the
Littles' copyrights.
On October 23, 1989, Norma Ribbon brought suit against the
Littles, alleging copyright invalidity and requesting injunctive
relief against further seizures and the bringing of a copyright
infringement action. The Littles counter-claimed for copyright
infringement. On January 25, 1990, the district court found that
the copyrights were invalid because the ribbon flowers lacked
originality and issued a preliminary injunction in favor of Norma
Ribbon. The injunction prohibited the Littles from taking any
action to cause the Customs Service to seize future shipments of
the flowers and also from instituting any infringement action
against Norma Ribbon. In an unpublished decision, this Court
upheld the district court's preliminary injunction against seizures
of shipments, but remanded the case for trial on the merits of the
copyright infringement claim. Norma Ribbon & Trimming, Inc. v.
Little, 935 F.2d 1291 (5th Cir.1991) (table). On April 25, 1994,
the district court granted summary judgment in favor of Norma
Ribbon, holding as a matter of law that the ribbon flowers lacked
the requisite originality for copyright protection. The Littles
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now appeal.
We review the district court's grant of summary judgment de
novo. Makedwde Pub. Co. v. Johnson, 37 F.3d 180, 181 (5th
Cir.1994). Summary judgment is appropriate if "there is no genuine
issue as to any material fact and ... the moving party is entitled
to a judgment as a matter of law." Fed.R.Civ.P. 56(c). A
copyright infringement action requires the plaintiff to prove
ownership of a valid copyright and copying by the defendant.
Lakedreams v. Taylor, 932 F.2d 1103, 1107 (5th Cir.1991); Allied
Mktg. Group, Inc. v. CDL Mktg., Inc., 878 F.2d 806, 810 (5th
Cir.1989); Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 387
(5th Cir.1984). Ownership of a valid copyright is established by
proving the originality and copyrightability of the material and
compliance with the statutory formalities. Allied Mktg., 878 F.2d
at 810-11; Apple Barrel, 730 F.2d at 387. Copying generally is
established by proving that the defendant had access to the
copyrighted material and that there is a substantial similarity
between the two works. Allied Mktg., 878 F.2d at 810-11; Apple
Barrel, 730 F.2d at 387 n. 3.
The Littles obtained copyright certificates of registration,
which "constitute prima facie evidence of the validity of the
copyright[s]." 17 U.S.C. � 410(c). However, certificates create
only a rebuttable presumption that the copyrights are valid. See
Lakedreams, 932 F.2d at 1108 n. 10 (citing Durham Indus., Inc. v.
Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980)). Here, Norma Ribbon
has rebutted that presumption.
4

In the first place, the ribbon flowers which are the subject
of this action are not original. "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
Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111
S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991) (citing 1 M. Nimmer & D.
Nimmer, Copyright � 2.01[A], [B] (1990)). Although it is
undisputed that ribbon flowers were in existence long before the
Littles entered the ribbon flower business, "a work may be
protected by copyright even though it is based on ... something
already in the public domain if the author, through his skill and
effort, has contributed a distinguishable variation from the older
works." Donald v. Zack Meyer's T.V. Sales & Serv., 426 F.2d 1027,
1029 (5th Cir.1970), cert. denied, 400 U.S. 992, 91 S.Ct. 459, 27
L.Ed.2d 441 (1971). However, a "distinguishable variation" must be
substantial and not merely trivial. Id. at 1030 (citing Chamberlin
v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir.1945)). In the
present case, there was no such variation in the ribbon flowers
that the Littles sought to copyright.
The Littles claim that their flowers are distinguishable from
preexisting ones because they are of a higher quality, have greater
symmetry and uniformity, and have different height and petal shape.
The proof is, however, these same flowers already existed in the
public domain. The Littles duplicated Norma Ribbon's flowers
exactly, using their employee's process. Although prior to the new
5

process it may have been difficult to manufacture ribbon flowers of
consistently high quality, there was nothing new in the design of
the flowers themselves. The only thing original in the Littles'
flowers was the manufacturing process, which is not copyrightable.1
17 U.S.C. � 102(b); Feist, 499 U.S. at 356, 111 S.Ct. at 1293.
The district court correctly held that the Littles' copyrights in
the ribbon flowers were invalid.
Moreover, by failing to adhere to the statutory
formalities--i.e., the copyright notice requirement--the Littles
forfeited whatever copyrights they claim to have had in the ribbon
flowers. Although since the Berne Convention Implementation Act of
1988, Pub.L. No. 100-568, 102 Stat. 2853, 2857 notice is no longer
a prerequisite to copyright protection, see 17 U.S.C. � 401(a), the
notice requirement remains in effect for works that predated that
Act, see 17 U.S.C. � 405(a). The ribbon flowers in this case were
distributed publicly before that Act and thus are subject to the
notice requirement.
Norma Ribbon claims that the Littles did not meet this
requirement. We agree. Two of the Littles' own experts testified
that they never saw any copyright notice, and a third testified
that she had seen it only on some of the packages in which the
ribbon flowers were shipped in bulk. Norma contends this was
inadequate because notice must be affixed to each copy--i.e., to
each individual flower. See Charles Garnier, Paris v. Andin Int'l,
1Although a process may be patentable, the instant process
never was patented.
6

Inc., 36 F.3d 1214, 1227 (1st Cir.1994); see also 37 C.F.R. �
201.20(i)(3) (permitting tag attached to each copy if size makes
affixation of notice "extremely impracticable"). The Littles
disagree, but cite no contrary authority.
The Littles argue that the notice requirements should not be
applied because of Norma Ribbon's actual knowledge of their
copyright claims. However, innocence vel non is not a crucial
issue when a copyright has become invalid because of inadequate
notice. See Canfield v. Ponchatoula Times, 759 F.2d 493, 498-99
(5th Cir.1985). Once "a work has passed into the public domain as
a result of failure to provide notice of copyright, it may freely
be copied." Allied Mktg., 878 F.2d at 811. Therefore, even if it
be assumed that the ribbon flowers were copyrightable, the Littles
through inadequate notice have made them part of the public domain,
and Norma Ribbon was free to copy them.
Because the Littles did not establish ownership of valid
copyrights, they cannot prevail in their copyright infringement
action.
AFFIRMED.

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