Opinion
Case No. 1:98-CV-857.
March 7, 2000.
ORDER
In accordance with the opinion entered this date,
IT IS HEREBY ORDERED that the Defendants' Motion for Summary Judgment (Docket #39) is GRANTED.
IT IS FURTHER ORDERED that JUDGMENT is entered in favor of the DEFENDANTS.
OPINION
The Plaintiff, Carol J. Waite, commenced this copyright infringement action pursuant to 17 U.S.C. § 501 against the Defendants, Patch Products, Inc., Big Fun A Go-Go, Inc., David Yearick, Timothy Walsh, Edward J. Muccini, Andrew J. Levison and Jim Ward. The suit alleges that the Defendants' game, Tribond, infringes the Plaintiff's registered copyright for her game, Common Ground. In addition to copyright infringement, the complaint alleges state law claims of unfair competition (Count II) and conversion (Count III). Before the Court is the Defendants' motion for summary judgment. For the reasons stated herein, the Court grants the motion.
Levison and Ward have been dismissed. See docket #8, 22.
The Court has both federal question and diversity jurisdiction.
I
The Plaintiff alleges that between December 1987 and the fall of 1989, she developed a word relationship game entitled Common Ground. On September 14, 1989, she obtained a copyright registration. The Plaintiff's word game presents a set of three words. Participants are required to form three sets of two word combinations and to identify a shared characteristic for each of the two word sets. For example, the Plaintiff's game contains the following three word set: duck, mouse and snake. According to the Plaintiff, the correct answers would be:
Compl. ¶ 11.
1. Micky Mouse and Donald Duck are famous cartoon characters, a snake is not.
2. A duck and a snake both lay eggs, a mouse does not.
3. A mouse and a snake both cannot fly, a duck can.
According to the instructions, the goal of the game is to be the first player to spell Common Ground by turning over one of twelve cards each time the player successfully names a shared characteristic for any of the two word sets.
In 1989, Waite contacted Levison, an attorney, with the intent that he show the game to Ward, an employee of a game manufacturing company. She alleges that she discussed marketing strategies for Common Ground with Levison. When Levison advised her that Ward was not interested in the game, they terminated their relationship. Although Waite requested her game back from Levison at that time, she did not receive it until a few months later.
Compl. ¶ 17.
Compl. ¶ 18.
Yearick, Walsh and Muccini assert that they created Tribond in 1989. The Defendants' game is a board game which uses word association concepts to challenge the participants. A Tribond player is given a series of three-word clue sets identified by category and must identify the shared characteristic or "bond" between all three words. For purposes of illustration, under the Arts category, a three word set is Walker, Whitney, and Guggenheim. The correct answer is "art museums." By correctly identifying the shared characteristic, the participant is allowed to move one of his game pieces along the game board. The object of the game is to bring three game pieces out of the center triangle, along their respective paths and back to the center triangle by correctly answering or bonding the Tribond clue sets.
Defs' Mtn for SJ at 4-5.
Yearick, Walsh and Muccini formed a company called Big Fun A Go-Go, Inc. ("Big Fun"). On April 23, 1990, Big Fun received a certificate of copyright registration for Tribond. They hired Patch Products to manufacture the first 2,500 Tribond games. From February 1990 to December 1992, Patch Products manufactured Tribond, Travel Tribond and Tribond for Kids. In 1992, Walsh contacted Patch Products and convinced them to join forces. Thereafter, Patch Products purchased the rights to Tribond from Big Fun. Walsh became the vice president of marketing for Patch Products and together they sold 12,500 games that year.
Compl. ¶ 24.
Compl. ¶ 25.
Compl. ¶ 26.
In December 1998, the Plaintiff commenced this action, asserting that Tribond is substantially similar to Common Ground. She asserts that the Defendants copied a large percentage of the words and word relationships in Common Ground and offers, as evidence, a report from a statistician that the commonality in words demonstrated a pattern of similarity.
Compl. ¶ 21.
Compl. 123. The Defendants have submitted their own expert report, challenging the methodology of the Plaintiff's statistical analysis.
II
The Defendants move for summary judgment on the grounds that: (1) the Plaintiff's copyright infringement claim fails as a matter of law because the subject matter is not protectible; (2) the Plaintiff has failed to establish access; (3) no issue of material fact exists as to whether the Defendants independently created Tribond; and (4) Tribond is not substantially similar to Common Ground. Although the Court finds the issue of substantial similarity dispositive, for purposes of completeness in the event of an appeal, the Court briefly addresses the Defendants' alternative grounds.Under Rule 56(c) of the Federal Rules of Civil Procedure, summary judgment is proper if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. In evaluating a motion for summary judgment the Court must look beyond the pleadings and assess the proof to determine whether there is a genuine need for trial. Matsushita Elec. Indus Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The Court views the evidence in the light most favorable to the opposing party and draws all justifiable inferences in his favor. Morales v. American Honda Motor Co. Inc., 71 F.3d 531, 535 (6th Cir. 1995). If Defendants carry their burden of showing there is an absence of evidence to support a claim then the Plaintiff must demonstrate by affidavits, depositions, answers to interrogatories, and admissions on file, that there is a genuine issue of material fact for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The mere existence of a scintilla of evidence in support of Plaintiff's position is not sufficient to create a genuine issue of material fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The proper inquiry is whether the evidence is such that a reasonable jury could return a verdict for Plaintiff. Id. See generally, Street v. J.C. Bradford Co., 886 F.2d 1472, 1476-80 (6th Cir. 1989). In this case, the Court is persuaded that no genuine issue as to any material fact exists and that the Defendants are entitled to judgment as a matter of law.
"To establish copyright infringement, a plaintiff must show: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999) (internal quotation marks omitted). Direct evidence of copying is rare, so frequently the plaintiff will attempt to establish an inference of copying by showing: (1) access to the allegedly-infringed work by the defendants and (2) a substantial similarity between the two works at issue. Robert R. Jones Associates. Inc. v. Nino Homes, 858 F.2d 274, 276-77 (6th Cir. 1988); Wickham v. Knoxville Int'l Energy Exposition, 739 F.2d 1094, 1097 (6th Cir. 1984); see 4 MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT, § 13.02[B] (revised 1998).
Circumstantial evidence is sufficient to establish access. All that is required is a reasonable possibility that the Defendants had an opportunity to see or hear the protected work. Robert R. Jones Associates. Inc., 858 F.2d at 277 ("access merely means an opportunity to view the protected work"). The evidence to support a finding of access, however, must extend beyond "mere speculation or conjecture." Ellis, 177 F.3d at 506.
As an initial matter, to prove unlawful copying, the Plaintiff must first establish the protected expression of the copyrighted work. A copyright only protects a particular expression of an idea and not the idea itself. Mazer v. Stein, 347 U.S. 201, 218, 74 S.Ct. 460, 471, 98 L.Ed. 630 (1954). Thus, ideas contained in a copyrighted work may be freely used so long as the copyrighted expression is not wholly appropriated. Allen v. Academic Games League of America, Inc., 89 F.3d 614, 618 (9th Cir. 1996). Therefore, to the extent that Waite's action alleges infringement of an idea or general concept for a word game based on identifying a shared characteristic, rather than the expression of the idea or general concept, there is no copyright protection for the premises or ideas underlying her game. See Mazer, 347 U.S. at 217; Mihalek Corp., 814 F.2d at 294.
Waite's complaint can also be understood as seeking protection of the words and word phrases contained in Common Ground. She proffers statistical evidence that a majority of the word relationships and words in Common Ground are also found in Tribond. Words and phrases, however, are not subject to protection under the Copyright Act. Sem-Torg, Inc. v. K Mart Corp., 936 F.2d 851, 854-55 (6th Cir. 1991); Homan v. Clinton, 187 F.3d 635 (table), No. 98-3844, 1999 WL 430446, at *2 (6th Cir. Jun. 14, 1999).
Compl. ¶ 122.
See Pl's Br. in Opp'n, Exh. 1, 2. Waite asserts that "292 out of 300 Tribond clue cards have Common Grounds' copyrighted words or word relationships on them." Exh. 27. She further asserts that 5 out of 9 of Common Ground's famous names appear in Tribond.
The Plaintiff fails to establish that the Defendants had access to Common Ground. See Wickham, 739 F.2d at 1097. According to Waite, Levison was the only person that had access. There is no evidence demonstrating any nexus between Levison and the Defendants from which the Court could surmise that they had access to Waite's game. Moreover, the Defendants proffered detailed and specific evidence of their independent creation of Tribond. "[A]n inference of copying is rebuttable by evidence of independent creation of the allegedly infringing work."Ellis, 177 F.3d at 507. According to their affidavits, they began work on Tribond in 1989 and had a prototype ready as of July 1989. The Plaintiff has failed to demonstrate the existence of a genuine issue of material fact regarding access. Celotex Corp., 477 U.S. at 324-25.
On February 7, 2000, Magistrate Judge Joseph G. Scoville granted the Plaintiff's motion requesting the Defendants' fingerprints. Docket # 53. The Plaintiff has not sought to oppose the Defendants' motion on the basis of fingerprint evidence. As will be shown, however, this evidence, should it exist, does not alter the outcome because of the Court's conclusion that substantial similarity between the two games is lacking. "No amount of proof of access will suffice to show copying if there are no similarities." Wickham, 739 F.2d at 1097.
Even if the Plaintiff could establish that the Defendants had access to her game, she can not meet her burden of proving substantial similarity between her work and the Defendants' game.See Mihalek, 814 F.2d at 294; Wickham, 739 F.2d at 1097. In analyzing whether the works were substantially similar, the Court applies the "ordinary observer" test, which is the traditional standard of copyright infringement. Ellis, 177 F.3d at 506. "The ordinary observer test requires the trier of fact to gauge the similarities of the two works solely on the basis of his `net impression' and without relying on expert analysis or dissection."Id. at 506 n. 2.
Having carefully examined the exhibits comparing the games, the Court concludes that, as a matter of law, an average reasonable layperson upon such examination could not find the requisite substantial similarity to establish copyright infringement. Tribond's use of the words and the context in which they are used are very different than in Common Ground. The linking concept is also different between the two games. In Tribond, the distinguishing feature is the common concept or link that the three clues share. In Common Ground, a player must make 3 two word sets and is only required to link two words.
While summary judgment should be granted sparingly in copyright infringement cases, "a court may compare the two works and render a judgment for the defendant on the ground that as a matter of law a trier of fact would not be permitted to find substantial similarity." Wickham, 739 F.2d at 1097. See also Mihalek Corp., 814 F.2d at 294 ("[a] finding of substantial differences between the copyrighted material and the alleged copy has been found to justify a judgment for the defendant in copyright infringement proceedings"). Accordingly, the Court grants the Defendants' motion as to Count I.
III
In her unfair competition claim, the Plaintiff asserts that the Defendants copied her game and the sales strategies she suggested. She further alleges that Defendants' alleged unauthorized appropriation deceives the purchasing public and results in deceptive advertising.
Compl. ¶¶ 38-41.
"Ordinarily, one simply cannot be found guilty of unfair competition when the facts indicate no competition." Murray Hill Publications Inc. v. ABC Communications, Inc., 67 F. Supp.2d 754, 763 (E.D.Mich. 1999) (internal quotation marks omitted). The Plaintiff is not in competition with the Defendants. Rather, she alleges that the Defendants improperly accrued economic benefits by copying her game. Regardless, the Plaintiff's unfair competition claim is preempted because it is equivalent to her copyright infringement claim. Id.; Meyer v. Giles, No. 4:92-CV-115, 1992 WL 489770, at *2-3 (W.D.Mich. Nov. 30, 1992).
The Plaintiff's final claim is one of conversion. Michigan law defines conversion "as `any distinct act of domain wrongfully exerted over another's personal property in denial of or inconsistent with the rights therein.'" Sarver v. Detroit Edison Co., 225 Mich. App. 580, 585, 571 N.W.2d 759, 761 (1997) (quotingForemost Ins. Co. v. Allstate Ins. Co., 439 Mich. 378, 391, 486 N.W.2d 600, 606 (1992)). "Courts have generally held that conversion claims based upon possession or use of rights protected by § 106 of the Copyright Act are preempted . . . unless the plaintiff alleges the extra element that the defendant unlawfully retained the physical object embodying plaintiff's work." Wrench LLC v. Taco Bell Corp., NO. 1:98-CV-45, 1998 WL 480871, at *7 (W.D.Mich. Jun. 18, 1998) (citing United States ex rel. Berge v. Board of Trustees of the University of Alabama, 104 F.3d 1453, 1463 (4th Cir. 1997) (citations and internal quotation marks omitted). Although Plaintiff alleges that the "Defendants took [her] property without permission," there is no evidence that they ever had access to Common Ground, much less possession of it. Therefore, her conversion claim is preempted.
Compl. ¶ 44.
IV
As a final matter, the Court considers the Defendants' request that the Court award them their costs and attorney fees. Section 505 of the Copyright Act provides that "the court in its discretion may . . . award a reasonable attorney's fee to the prevailing party." 17 U.S.C. § 505. The Supreme Court has identified "several nonexclusive factors that courts should consider in making awards of attorney's fees to any prevailing party," including "frivolousness, motivation, objective unreasonableness (both in fact and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence."Fogerty v. Fantasy, Inc., 510 U.S. 517, 535 n. 19, 114 S.Ct. 1023, 1033 n. 19, 127 L.Ed.2d 455 (1994).
In Feist Publications Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 349-50, 111 S.Ct. 1282, 1289, 113 L.Ed.2d 358 (1991), the Supreme Court stated that the primary objective of the Copyright Act
is not to reward the labor of authors but to promote the Progress of Science and useful Arts. . . . To this end, copyright assures authors the right to original expression, but encourages others to build freely upon the ideas and information conveyed by a work.
(citation and quotation marks omitted). "[C]opyright law ultimately serves the purpose of enriching the general public through access to creative works. . . ." Fogerty, 510 U.S. at 527.
Having considered the relevant factors in the context of the case presented, the Court declines to award costs and attorney fees. She commenced her complaint represented by counsel. The legal theories and claims were advocated by counsel. Although the Plaintiff's claims were meritless, the Court is not convinced that the claims were not, to the best of the Plaintiff's knowledge, warranted by existing law. In addition, the Court is unpersuaded that imposing attorney fees will further the interests of the Copyright Act.
An order and judgment consistent with this opinion will be entered.