Citations
- 528 F. Supp. 2d 1106
Full opinion text
ORDER
THOMAS S. ZILLY, District Judge.
This matter comes before the Court on the deferred portions of Plaintiffs Combined Motion for Partial Summary Judgment on Issues of: (1) Originality; (2) Damages; and (3) Standing and Affirmative Defenses, docket no. 84, and Defendants’ Motion for Summary Judgment, docket no. 87. After hearing oral argument on October 26, 2007, the Court GRANTED IN PART, DENIED IN PART, and DEFERRED IN PART Plaintiffs Motion for Partial Summary Judgment, docket no. 84. Minutes, docket no. 135. The Court GRANTED Plaintiffs summary judgment motion on the issues of standing and fraud, DENIED on the issue of damages, and DEFERRED on the issue of originality. The Court also DENIED IN PART and DEFERRED IN PART Defendants’ Motion for Summary Judgment, docket no. 87. The Court DENIED Defendants’ summary judgment motion on the issue of standing and DEFERRED on the issues of originality and copying and on the issue of whether Defendant Young and Rubicam, Inc. should be dismissed.
The Court now enters the following Order on the deferred portions of the cross-motions for summary judgment regarding Lucky Break Wishbone Corporation’s (“Lucky Break”) copyright infringement claim based on the Lucky Break Wishbone, as alleged against Defendants Sears, Roebuk and Co. (“Sears”) and Young & Rubicam (“Y & R”). See Am. Compl., docket no. 31, ¶¶ 27-28. For the reasons outlined below, the Court holds the Lucky Break Wishbone was independently created by Mr. Hillesland and contains the minimal degree of creativity required to demonstrate originality. The design of the Lucky Break Wishbone incorporates sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. Accordingly, the Court GRANTS Plaintiffs motion, and DENIES Defendants’ motion, on the issues of originality and utility, and holds that Lucky Break owns a valid copyright in the Lucky Break Wishbone.
On the issue of access, the Court GRANTS IN PART and DENIES IN PART Defendants’ summary judgment motion. The Court GRANTS IN PART Defendants’ motion on the issue of access and DISMISSES IN PART Lucky Break’s copyright infringement claim — to the extent Lucky Break alleges that Defendants had access to the production wishbone. The Court DENIES IN PART Defendants’ motion and holds that Lucky Break’s copyright infringement claim survives summary judgment — to the extent Lucky Break alleges that Defendants had access to the prototype wishbone.
On the issue of whether the Sears Wishbone and the wishbone image in the Sears Circular are virtually identical to the Lucky Break Wishbone, the Court STRIKES IN PART and DENIES IN PART Defendants’ motion. The Court STRIKES IN PART the motion as it relates to the Lucky Break production wishbone. The Court DENIES IN PART the motion as it relates to the Lucky Break prototype wishbone because of genuine issues of material fact.
On the issue of Y & R’s infringement, the Court GRANTS Defendants’ summary judgment motion and DISMISSES Lucky Break’s copyright infringement claim as alleged against Y & R in the Second Amended Complaint, ¶¶ 29-30.
Background
The Natural Wishbone Model for the Lucky Break Wishbone Sculpture
Lucky Break’s founder, Ken Ahroni, conceived of a mass-produced plastic breakable turkey wishbone during Thanksgiving in November 1999, and he kept the wishbone from his Thanksgiving turkey (the “natural wishbone”) to use as a model. Walters Deck, docket no. 86, Ex. H (Ahro-ni Dep.) at 10:22-24, 12:8-11, 13:10-18; Rachman Resp. Deck, docket no. 101, Ex. 16 (Interrog.No.4) at 11-12. In December 2003, Mr. Ahroni took the natural wishbone to Cimtech, Inc. (“Cimtech”), which, in turn, used 3-D design and manufacturing software to collect basic structure data of the natural wishbone for use in manufacturing. Walters Deck, Ex. H (Ahroni Dep.) at 23:9-11 and Ahroni Dep. Ex. D-l; id., Ex. F (Kidd Dep.) at 8:3-9:18, 11:3-5, 13:1-9, 31:2-8. Cimtech did not make any decisions of how the plastic wishbone would be molded. Id., Ex. F (Kidd Dep.) at 13:4-5.
Lucky Break’s Prototype Wishbone
In December 2003 and January 2004, Dale E. Hillesland of Paraflex, Inc. (“Para-flex”) used Cimtech’s data to design and create a “prototype” plastic wishbone for Lucky Break. Walters Deck, Ex. H (Ah-roni Dep.) at 23:11-18; Rachman Deck, docket no. 92, Ex. 4 (Hillesland Dep.) at 23:4-15, 25:10-20, 26:13-16, 51:19-22; Hillesland Deck, docket no. 108, ¶ 12. Mr. Hillesland spent approximately 65 hours making the prototype mold which was used to make the Lucky Break prototype wishbone. Rachman Deck, Ex. 4 (Hilles-land Dep.) at 25:21-25. The prototype mold was completed by January 27, 2004. Id., Ex. 4 (Hillesland Dep.) at 26:4-16.
Mr. Hillesland created the prototype wishbone according to the following process. First, Mr. Hillesland used the Cim-tech data to make a computer model of the wishbone. Hillesland Deck ¶ 4. Because Cimtech provided data for only half of the wishbone, Mr. Hillesland used a software program to create a mirror-image of the other half of the wishbone in the model. Id.; Rachman Deck, Ex. 4 (Hillesland Dep.) at 23:4-9, 29:18-30:6. Second, Mr. Hillesland used the software to select a suitable parting line, which is “the area within a mold block perimeter where the two halves of the mold will separate.” Hillesland Deck ¶ 5. Mr. Hillesland made two alterations to hide the parting line, changes which were made “solely for aesthetic or artistic reasons.” Id. Third, Mr. Hillesland used the software to cut electrodes out of graphite. Id. ¶ 6; Rach-man Deck, Ex. 4 (Hillesland Dep.) at 32:17-21, 37:14-18. Mr. Hillesland had to choose paths and angles for cutting out the electrodes. Hillesland Deck ¶ 6. “Electrodes are three dimensional shapes that are cut from graphite using a computer-aided cutting system; they were the first crude likenesses of the wishbone sculpture.” Id. Each of the two graphite electrodes represents one half of a wishbone. Rachman Deck, Ex. 4 (Hillesland Dep.) at 33:24-34:4. Fourth, after the electrodes were cut, Mr. Hillesland made many alterations to them manually. Hillesland Deck ¶ 7; Rachman Deck, Ex. 4 (Hillesland Dep.) at 37:19-21 (referring to “hand-finishing” of the electrodes). Fifth, the graphite electrodes were “used as conductors of electricity to burn the mold shapes into metal blocks so the injection molds [could] be created.” Hillesland Decl. ¶ 6.
Lucky Break’s Production Wishbone
“Once Lucky Break signed off on the look of the prototype wishbone design, [Mr. Hillesland’s] intent was to deliver the same look in the Lucky Break Wishbones that came out of the final production molds.” Hillesland Deck ¶ 12. Mr. Hilles-land started working on the final production mold in June 2005, and completed work on it by the end of September 2005. Rachman Deck, Ex. 4 (Hillesland Dep.) at 51:23-52:19. In making the production mold, Mr. Hillesland used the same data set and “the same cutter paths for the electrodes” as he used for the prototype mold. Id., Ex. 4 (Hillesland Dep.) at 41:24-42:4; Hillesland Deck ¶ 12. He created two new graphite electrodes for the production mold, separate from the graphite electrodes for the prototype mold. Rachman Deck, Ex. 4 (Hillesland Dep.) at 35:1-10, 37:3-7. The graphite electrodes for the production mold have been submitted into the record on summary judgment. Id., Ex. 4 (Hillesland Dep.) at 32:17-21, 33:24-34:4 (describing D-42 and D-43 Exhibits to the Hillesland Dep.).
Mr. Hillesland’s Hand-Finishing of the Graphite Electrodes
As noted above, Mr. Hillesland “hand-finished” the graphite electrodes to make the molds for the wishbones, and he used the same data set and the same cutter paths to make graphite electrodes for the production mold as for the prototype mold. Specifically, Mr. Hillesland testified with respect to the hand-finishing on the prototype graphite electrodes:
Q: Do you remember what you did?
A: Basically the same things as I did on the other one [i.e., the production graphite electrodes]. I round out the end a little bit. I reduce some of this area in the center of the electrode, and on the two tips out there, I, on one side of it, I did some sanding to reduce the shape on that where it was kind of bulging out a little bit. I went in and gave it a little file with some sandpaper. Any real sharp edges on there, I don’t remember how many I did at the time, but I go in and I knock down the little things ...
Rachman Deck, Ex. 4 (Hillesland Dep.) at 37:22-38:7. With respect to the hand-finishing on the production graphite electrodes, Mr. Hillesland testified that he made “five to six” changes from the natural wishbone, including rounding out the head, reducing some area in the center to knock down a high spot, smoothing the outside edges, sanding the ends of the arms, thinning the arm, and breaking the edge. Id., Ex. 4 (Hillesland Dep.) at 43:3-48:7.
After describing the five to six changes he made to the production graphite electrodes, he testified that he did the same hand-finishing on the prototype graphite electrodes, but he also admitted there could be some variations in what he did:
Q: Do you think you did the same things to the prototype?
A: Yes.
Q: But there could be variations between the—
Right.
Let me finish the question. There could be variations to the extent of what you did on the prototype versus what you did on the production mold?