Opinion
File No. 1.00-CV-371
December 12, 2001
ORDER
In accordance with the opinion entered this date.
IT IS HEREBY ORDERED that Plaintiff's motion for summary judgment on Defendant's affirmative defenses (Docket #46) is GRANTED as to Defendant's defense of an implied license and DENIED as to all other defenses.
IT IS FURTHER ORDERED that Defendant's motion for summary judgment (Docket #47) is GRANTED on Plaintiff's trade dress claim and DENIED on Plaintiff's copyright claims.
OPINION
Before this Court are Plaintiff's motion for summary judgment on Defendant's affirmative defenses and Defendant's motion for summary judgment on Plaintiff's claims for trade dress and copyright infringement. The Court previously dismissed Plaintiff's state law claims. As explained, Plaintiff's motion is GRANTED in part and DENIED in part, and Defendant's motion is GRANTED in part and DENIED in part.
I.
The parties are designers and manufacturers of gazebos and other outdoor structures. Their catalogs show numerous pictures of their products and describe options for creating unique and individualized structures. [Def.'s Br. Supp. Exs. C, D). Plaintiff contends that a number of these options including decorative trim, ornamentation, rail designs, rectangles, and ratios of roof pitches on multi-roofed structures constitutes Plaintiff's trade dress and that with respect to eleven specific structures, Defendant has violated the Lanham Act by incorporating Plaintiff's trade dress in Defendant's structures. Plaintiff also claims to own a number of copyrights for the eleven structures. Depending on the structure, Defendant has either copyrighted the architectural drawings or the architectural structure or both. (Pl.'s Compl. Exs.) Moreover, Plaintiff alleges that Defendant has unlawfully copied these copyrighted works.
Defendant disputes these claims. For the trade dress claim, Defendant contends that Plaintiff's trade dress does not have secondary meaning and is merely functional. Addressing the copyright claims, Defendant claims that Plaintiff does not have valid copyrights, that Plaintiff has not established unlawful copying, and that Defendant has an implied license to use the copyrights. While Defendant's arguments concerning the validity of the copyrights and the unlawful copying are primarily legal, the implied license argument is based primarily on the conduct and customer base of this industry. The industry primarily serves local governmental entities which require that suppliers engage in competitive bidding. In the course of this process, a salesman for one company will approach an entity and help them prepare a request for proposal. Because the salesman wants his company to sell the structure, the proposal will include a number of design elements and specifications unique to his company's structures. Other companies wanting to bid on the project will have to provide a structure with the some design elements and specifications as the company that originally approached the customer. On this basis, Defendant claims that Plaintiff has provided Defendant with an implied license to copy the design elements and specifications described in any given request for proposal.
II.
Summary judgment is appropriate where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." FED.R.CIV.P. 56(c). An issue concerning a material fact is genuine if the record as a whole could lead a reasonable trier of fact to find for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Under Rule 56, the court must view the evidence in a light most favorable to the nonmoving party. Adickes v. S.H. Kress Co., 398 U.S. 144, 158-59 (1970). Summary judgment is not proper if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 248. Summary judgment is proper if the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to the party's case for which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
III.
A. Trade Dress Claim
To establish a claim of trade dress infringement, Plaintiff must show that Plaintiff's trade dress has secondary meaning, that as a result of the secondary meaning, Defendant's use of Plaintiff's trade dress causes confusion with Plaintiff's products, and that Plaintiff's trade dress is not functional. 15 U.S.C. § 1125(a)(1), (a)(3) (2001). Trade dress has secondary meaning when "`in the minds of the public, the primary significance of [the trade dress] is to identify the source of the product rather than the product itself.'" Wal-Mart Stores. Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000) (quoting Inwood Labs., v. Ives Labs., Inc., 456 U.S. 844, 851 n. 11 (1982)). The Supreme Court further noted that generally, there is no "consumer predisposition to equate the feature [or product design] with the source." Id. at 213. In other words, Plaintiff has a significant burden to demonstrate secondary meaning in its trade dress.
Plaintiff primarily relies on the presumption of secondary meaning applicable for registering trademarks. To receive this presumption, Plaintiff must offer "proof of substantially exclusive and continuous use thereof as a [trade dress] by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made." 15 U.S.C. § 1052(f) (2001). See also Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 255 (5th Cir. 1997) (applying this presumption to a trade dress infringement case). Defendant disputes exclusive use, and Plaintiff has not presented evidence of exclusive use. On this issue, Plaintiff cites to the affidavit of its president William H. Porter. The paragraph cited states merely that "Porter [(the corporation)] has sold more than several hundred of the aforementioned building structures which have incorporated its trade dress over the past ten (10) years. These sales have been made to hundreds of customers." (Pl.'s Br. Opp'n at 8, Pl.'s Br. Opp'n Ex. A ¶ 5). Nothing in this statement indicates or suggests that Plaintiff has used its trade dress exclusively.
Plaintiff also argues that its trade dress has secondary meaning based on indirect evidence. This indirect evidence includes prior sales, Plaintiff's catalogs, advertisements in trade publications, participation in trade shows, and other marketing and advertising activities. (Pl.'s Resp. Br. Opp'n at 8-9). After reciting this list of indirect evidence, Plaintiff states in conclusory language that "[t]here is no question that W.H. Porter, Inc. is universally recognized as an industry leader in the design, manufacture and building of shelters and gazebos." (Pl.'s Resp. Br. Opp'n at 9). At oral argument, the only evidence Plaintiff presented supporting its recognition as an industry leader was the frequent specification of Porter structures in requests for proposal. Plaintiff's argument was that because customers frequently specified Plaintiff, a fact finder could infer secondary meaning. Aside from counsel's claims at oral argument, Plaintiff did not provide any requests for proposals designating a Porter structure. Moreover, the extensive record in this case includes only three apparent requests for proposals that specify Plaintiff's products. (Def.'s Br. Supp. Exs. I (96th Street Project, Tulsa, Oklahoma), J (96th Street Project, Tulsa, Oklahoma), K (Seabee Park, Port Hueneme, California), P (Comstock Shelter Bid)). Alone these three bid specifications are insufficient for a reasonable trier of fact to infer that Plaintiff in the minds of customers is an industry leader.
Plaintiff may have more evidence supporting secondary meaning as the record includes numerous depositions and affidavits. In fact, although this Court "is not required to speculate on which portion of the record the nonmoving party relies, nor is it obligated to wade through and search the entire record for some specific facts that might support the nonmoving party's claim," InterRoyal Corp. v. Sponseller, 889 F.2d 108, 111 (6th Cir. 1989), the Court has reviewed the factual support for Plaintiff's copyright claims. Specifically, Plaintiff cited the depositions of its designer Richard Lubbers and its president William H. Porter. (Pl.'s Reply Br. Supp. at 4-6). The portions of the depositions cited do not indicate anything about customers' perceptions of Plaintiff's products, and customers' perceptions are the key to secondary meaning. Because Plaintiff's assertions of secondary meaning are without factual support, a reasonable trier of fact could not find secondary meaning in Plaintiff's trade dress as required by FED.R.CIV. P. 56(c). Consequently, Plaintiff has not demonstrated secondary meaning in its trade dress, and Defendant is entitled to summary judgment on Plaintiff's claim of trade dress infringement.
B. Copyright Clams
In addition to its trade dress infringement claim, Plaintiff also alleges that Defendant has violated Plaintiff's copyrights. "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) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv, Co., 499 U.S. 340, 361 (1991)). Defendant disputes that Plaintiff owns valid copyrights and that Defendant has engaged in unlawful copying.
Plaintiff claims that it has eleven valid copyrights in architectural works and five valid copyrights in architectural drawings. These copyrights are allegedly valid because they are registered. Under 17 U.S.C. § 410(c),
At oral argument and in a brief, Plaintiff conceded that it did not have valid architectural works copyrights to the GOX-16 Oxford Gazebo and the HEX-36 Building Shelter. (Pl.'s Br. Reply Supp. at 4 n. 4). These architectural works copyrights are not valid according to Plaintiff because the structures were constructed before December 1, 1990. (Pl.'s First Am. Compl. Ex. F (GOX-16 Oxford Gazebo), Ex. R (HEX-36 Building Shelter)). Additionally, the file copy of the First Amended Complaint does not contain a registration for the alleged copyrighted drawings of the GIW-16 Ironwood Gazebo. As Defendant did not raise this issue, the Court will presume for the moment that the missing copyright registration is merely an oversight and that Plaintiff will provide the registration before trial.
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. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.17 U.S.C. § 410(c) (2001). To determine whether Plaintiff is entitled to this presumption of validity, each copyright registration must be examined to determine whether it was made within five years of the first publication. Defendant claims that Plaintiff is not entitled to the presumption of validity for a number of copyrights because they were created more than five years before the registration. Creation and publication have specific and technical meanings in copyright law. 17 U.S.C. § 101 (2001). Defendant's argument is based on the date that the works were created and not published. (Def.'s Br. Opp'n at 4-5, 10). After reviewing the registrations, the Court finds that only the architectural drawings copyright for the HEX-36 Building Shelter falls outside of this presumption. Plaintiff acknowledges that for copyrights not entitled to a presumption of validity, it must prove originality. (Pl.'s Br. Reply Supp. at 2).
The Court notes that Plaintiff itself appears to confuse the distinction between creation and publication (Pl.'s Br. Reply Supp. at 2). Because both the parties appear to rely on the dates listed on the copyright registrations, the Court also relies on the dates listed on the copyright registrations. (Pl.'s First Am. Compl. Exs. B-S)
Defendant also argues that a number of the architectural works copyrights are not valid because the architectural works were created before December 1, 1990. Pursuant to the Architectural Works Copyright Protection Act of 1990 ("AWCPA") §§ 701-706, Pub.L. No. 101-650, 104 Stat. 5089, 5133-34 (1990):
The amendments made by this title apply to — (1) any architectural work created on or after the date of the enactment of this Act; and (2) any architectural work that, on the date of the enactment of this Act, is constructed and embodied in unpublished plans or drawings, except that protection for such architectural work under title 17, United States Code, by virtue of the amendments made by this title, shall terminate on December 31, 2002, unless the work is constructed by that date.
AWCPA § 706, Pub.L. No. 101-650, 104 Stat. 5089, 5134 (1990). AWCPA was enacted on December 1, 1990. As Plaintiff does not dispute the creation dates on the copyright registrations and a couple of these dates are before December 1, 1990, (Pl.'s First Am. Compl. Exs. H (GOX-28 Gazebo), K (GIW-16 Ironwood Gazebo)), for these structures, Plaintiff must assert that its architectural works copyrights are valid under part 2 of this provision. (Pl.'s Br. Reply Supp. at 3). Because Defendant has not demonstrated that any of the structures were constructed or available in published plans or drawings before December 1, 1990, Defendant's argument fails. See also Richard J. Zitz, Inc. v. Dos Santos Pereira, 232 F.3d 290, 292 (2d Cir. 2000) (defining constructed).
Defendant's final argument concerning the validity of Plaintiff's copyrights is that a number of the copyrighted architectural works and architectural drawings 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 Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 3r0, 345, (1991). To demonstrate originality, Plaintiff relies on the deposition of its designer Richard Lubbers and the affidavit of its president William H. Porter. (Pl.'s Br. Reply Supp. at 4-6). This evidence is sufficient to raise a genuine issue of material fact as to whether Plaintiff's copyrights are original and hence valid.
As Defendant has not shown that all of Plaintiff's copyrights are invalid, the next step is to determine whether Defendant has made "`copy[ies] of constituent elements of the work that are original.'" Ellis, 177 F.3d at 506 (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Unlawful copying may be proved either directly or indirectly, and Plaintiff only claims that it has indirect evidence of copying. "[T]o prove copying indirectly, the copyright holder need not necessarily prove access on the part of the alleged infringer, so long as there is proof that the person who composed the allegedly-infringing work had access to the copyrighted material." Robert R. Jones Assocs., Inc. v. Nino Homes, 858 F.2d 274, 277 (6th Cir. 1988). Plaintiff's allegations are that Defendant had access through the bid process and Plaintiff's publicly available information and that the structures are substantially similar. Defendant contends that this access is insufficient for unlawful copying and that the structures are not substantially similar.
"Access merely means an opportunity to view the protected material." Robert R. Jones Associates, Inc., 858 F.2d at 277 (citing 3 MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT § 13.02[A] (1988)). "Access may not be inferred through mere speculation or conjecture." 4 MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT § 13.02[A], at 13-18 (2001) quoted in Ellis. 177 F.3d at 506. To find access, Plaintiff does not have to show that Defendant had "access to the technical working drawings, which are the documents described in the copyright registration." Donald Frederick Evans and Associates, Inc. v. Continental Homes, Inc., 785 F.2d 897, 904 (11th Cir. 1986) (citing Imperial Homes Corp. v. Lamont, 458 F.2d 895, 899 (5th Cir. 1972)). Plaintiff alleges that original elements of its architectural drawings copyrights were available through the bid process and other public information, and Defendant acknowledges that it bid on projects where Plaintiff was specified as the preferred provider. Plaintiff has presented enough evidence to go to the jury on the issue of access. The Court notes that at trial, Plaintiff must show that the materials Defendant had access to contained more than mere "ideas and concepts" but also "protected expression." Attia v. Society of New York Hosp., 201 F.3d 50, 57 (2d Cir. 1999).
Because Plaintiff has presented sufficient evidence of access to go to the jury, the issue of substantial similarity must be addressed. Substantial similarity is determined using the ordinary observer test. Ellis, 177 F.3d at 506. To apply the ordinary observer test, the trier of fact "gauge[s] 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. Plaintiff supports its contention that the structures are substantially similar by presenting the expert testimony of Robert Lubbers and of William Porter, Plaintiff's founder, (Pl.'s Br. Reply at 6), and pictures of its structures and of Defendants allegedly infringing structures. (Pl.'s Br. Supp Exs. 1 to 11). Because expert testimony may not be considered to determining substantial similarity, id. at 506 n. 2, only the pictures were considered. After reviewing the pictures, the Court is unable to say as a matter of law that no reasonable trier of fact could find either that the structures are or are not substantially similar. At trial, the parties should be aware that Defendant "`may legitimately avoid infringement by intentionally making sufficient changes or a work which would otherwise be regarded as substantially similar to the [P]laintiff's.'" Dahlen v. Mich. Licensed Beverage Ass'n, 132 F. Supp.2d 574, 583 (E.D.Mich. 2001) (quoting Eden Toy, Inc. v. Marshall Field Co., 675 F.2d 498, 501 (2d Cir. 1982)).
Finally, Defendant claims that even if Plaintiff has established copyright infringement, Defendant has an implied license to use the copyright. "[E]xistence of an implied license to use the copyright for a particular purpose precludes a finding of infringement." Johnson v. Jones, 149 F.3d 494, 500 (6th Cir. 1998). To demonstrate an implied license to use the copyrighted material, Defendant must show that Plaintiff intended Defendant to have a license to use the copyrighted material. Id. at 502 ("Without intent, there can be no implied license."). As evidence of Plaintiff's intent to grant it an implied license, Defendant cites an alleged admission by one of Plaintiff's employees that the bidding process creates an implied license. The alleged admission is that "Q. Doesn't the providing of this bid give the competitors a license to try to compete face-to-face with Porter? A. Compete, yes. You have an opportunity to present your product of your design that will work for the client." (Dep. VanDyke, Def.'s Br. Supp. Ex. F at 92). This statement is not sufficient to bind Plaintiff as an admission. While the employee is Plaintiff's vice president of sales, Defendant has not presented any evidence that the determination of whether the bidding process creates an implied license is within the scope or this employee's responsibilities or that this employee was authorized to make this admission. The Federal Rules of Evidence specifically note that "[t]he contents of the statement are not alone sufficient to establish the declarant's authority under subdivision (C), the agency or employment relationship and scope thereof under subdivision (D)." FRE 801(d)(2).
Defendant's only other evidence of an implied license is the nature of the public bidding process and Plaintiff's participation in this process. This evidence does not demonstrate Plaintiff's intent to grant Defendant an implied license. Plaintiff's only actions in this process are persuading customers to specify its products, providing customers with specifications concerning its products, and permitting customers to use these specification in bid requests. None of these actions indicates that Plaintiff intends for Defendant or other competitors to use its copyrighted material. Moreover, as Plaintiff points out, distribution for purposes of bidding is not publication of copyrighted material. Nucor Corp. v. Tennessee Forging Steel Serv., Inc., 476 F.2d 386, 390 (8th Cir. 1973) ("First, a distribution of plans to potential contractors and subcontractors for bidding purposes does not constitute general publication."); Kunycia v. Melville Realty Co., Inc., 755 F. Supp. 566, 574 (S.D.N.Y. 1990) ("Distribution of plaintiff's architectural drawings to contractors, landlords and building authorities does not constitute a publication requiring copyright notice."); Intown Enters., Inc. v. Barnes, 721 F. Supp. 1263, 1266 (N.D.Ga. 1989) ("The weight of authority holds that neither the filing of architectural plans with permitting authorities nor distributing such plans to subcontractors for bidding purposes constitutes publication under the Copyright Act."). Consequently, because Defendant has not presented any evidence from which a trier of fact could find that Plaintiff intended to grant Defendant an implied license, Plaintiff is entitled to summary judgment on this defense.
IV.
In summary, although Plaintiff claims to the contrary, Plaintiff has not demonstrated secondary meaning in its trade dress. A lack of secondary meaning is fatal to Plaintiff's claim for trade dress infringement, and consequently, Defendant's motion for summary judgment on Plaintiff's trade dress claim is GRANTED. As for Plaintiff's copyright claims, Plaintiff is entitled to a presumption of validity for a number of its copyrights, and Plaintiff has presented evidence that its other copyrights are valid. Additionally, there is sufficient evidence on the issues of access and substantial similarity to go to trial. Finally, Defendant has not shown that there is a genuine issue of material fact as to whether Plaintiff intended to grant Defendant an implied license to use Plaintiff's copyrighted material. Hence, Plaintiff's motion for summary judgment on Defendant's defense of implied license is GRANTED.