`
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`IVYMEDIA CORPORATION,
`
` Plaintiff,
`
` v.
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`ILIKEBUS, INC., ALAN ZOU, TONG
`WEI AND JOHN DOE,
`
` Defendants.
`
`
`United States District Court
`District of Massachusetts
`
`
`)
`)
`)
`) Civil Action No.
`) 15-11918-NMG
`)
`)
`)
`)
`)
`
`MEMORANDUM & ORDER
`
`
`))
`
`GORTON, J.
`
`This case involves a copyright infringement dispute between
`two competing businesses that provide online ticketing and
`reservation services for bus companies. Plaintiff IvyMedia
`Corporation (“IvyMedia” or “plaintiff”) alleges that defendants
`iLIKEBUS, Inc. (“iLIKEBUS”), Tong Wei and Alan Zou
`(collectively, “defendants”) unlawfully copied its website’s
`characteristics. Defendants’ motion for summary judgment is
`pending before the Court. For the reasons that follow, that
`motion will be allowed, in part, and denied, in part.
`I.
`Background:
`A. The Parties and Their Websites
`IvyMedia, a Massachusetts corporation, offers a web-based
`platform for customers to make reservations and purchase bus
`tickets. Its original website, www.IvyMedia.com, has been
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`operating since March, 2002. It also owns and operates the
`website www.GotoBus.com which was launched in 2006. IvyMedia
`acts as an independent contractor for bus companies and receives
`a commission based on each ticket sale made through its website.
`Defendant iLIKEBUS is a Delaware corporation with its
`principal place of business in Virginia. Wei, the Chief
`Executive Officer of iLIKEBUS, resides in Virginia. Zou is an
`information technology consultant at iLIKEBUS and resides in
`Maryland. Collectively, defendants operate the website
`www.iLIKEBUS.com which was launched in March, 2015 and
`redesigned in June, 2015.
`B. Plaintiff’s Copyrights
`IvyMedia holds two copyrights that protect its websites.
`Its first copyright (“the 2005 copyright”), Registration Number
`TX 6-211-055, became effective on December 13, 2005. The 2005
`copyright states that the title of the work is “IvyMedia
`Website” and that the nature of the authorship is a
`Portion of the text; revision of pre-existing text;
`selection, coordination and arrangement of text, graphic
`art [and] photograph[s.]
`
`Attached to the copyright registration are 70 pages reproduced
`from IvyMedia’s website in 2005.
`IvyMedia’s second copyright (“the 2015 copyright”),
`Registration Number TXu 1-954-672, became effective on July 24,
`2015. That copyright is titled “GotoBus.com” and protects the
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`“text and original artwork” on the GotoBus website. Although
`IvyMedia asserts that the copyright extends to GotoBus webpages
`that were submitted along with the application for copyright
`registration, it did not submit those specific pages as an
`exhibit. Therefore, the Court has referred to the pages of the
`GotoBus website that were submitted along with the original
`complaint to evaluate the purported copyright infringement.
`C. Procedural Background
`After iLIKEBUS launched its website in March, 2015 IvyMedia
`filed suit against defendants in May, 2015 claiming, inter alia,
`infringement of its 2005 copyright under 17 U.S.C. § 501,
`unfair competition in violation of the Lanham Act, 15 U.S.C. §
`1125(a), and unjust enrichment. Defendants moved to dismiss
`IvyMedia’s claims in June, 2015 and plaintiff opposed that
`motion. This Court dismissed plaintiff’s claims, with the
`exception of the copyright infringement claim, in July, 2015.
`That same month, defendants filed an answer addressing the
`remaining claim. The Court held a scheduling conference in
`September, 2015 and issued a scheduling order. In January,
`2016, IvyMedia filed a motion to amend the complaint which the
`Court denied. In April, 2016, the parties filed a joint motion
`to extend the discovery deadlines which the Court allowed.
`In September, 2016, the parties attempted to arbitrate
`their dispute. After arbitration failed, plaintiff moved to
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`amend its complaint to add a claim that defendants infringed its
`2015 copyright. Later that same month, defendants filed a
`motion for summary judgment. In January, 2017, this Court
`allowed the motion to amend the complaint to add allegations
`concerning the 2015 copyright. Plaintiff’s amended complaint
`alleges that defendants have infringed both the 2005 and the
`2015 copyrights under the federal Copyright Act, 17 U.S.C. §
`501, and seeks a permanent injunction, actual monetary damages
`and attorneys’ fees and any other relief that this Court deems
`fit.
`Both parties submitted supplemental briefing with respect
`to defendants’ motion for summary judgment to reflect the
`amended complaint. This memorandum and order addresses the
`motion for summary judgment.
`II. Motion for Summary Judgment
`A. Legal Standard
`The role of summary judgment is “to pierce the pleadings
`and to assess the proof in order to see whether there is a
`genuine need for trial.” Mesnick v. Gen. Elec. Co., 950 F.2d
`816, 822 (1st Cir. 1991). The burden is on the moving party to
`show, through the pleadings, discovery and affidavits, “that
`there is no genuine dispute as to any material fact and that the
`movant is entitled to judgment as a matter of law.” Fed. R. Civ.
`P. 56(a). A fact is material if it “might affect the outcome of
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`the suit under the governing law.” Anderson v. Liberty Lobby,
`Inc., 477 U.S. 242, 248 (1986). A genuine issue of material
`fact exists where the evidence with respect to the material fact
`in dispute “is such that a reasonable jury could return a
`verdict for the nonmoving party.” Id.
`If the moving party has satisfied its burden, the burden
`shifts to the non-moving party to set forth specific facts
`showing that there is a genuine, triable issue. Celotex Corp. v.
`Catrett, 477 U.S. 317, 324 (1986). The Court must view the
`entire record in the light most favorable to the non-moving
`party and indulge all reasonable inferences in that party’s
`favor. O’Connor v. Steeves, 994 F.2d 905, 907 (1st Cir. 1993).
`Summary judgment is appropriate if, after viewing the record in
`the non-moving party’s favor, the Court determines that no
`genuine issue of material fact exists and that the moving party
`is entitled to judgment as a matter of law.
`B. Analysis
`Defendants move for summary judgment on the grounds that
`1) the GotoBus website is not protectable as a derivative work
`of the 2005 copyright, 2) a lack of substantial similarity
`between the 2015 copyright and the iLIKEBUS website precludes a
`finding of copyright infringement based upon that copyright,
`3) plaintiff is not entitled to damages or injunctive relief and
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`4) defendants Wei and Zou cannot be individually liable because
`they redesigned the original iLIKEBUS website.
`In support of their motion for summary judgment, defendants
`submitted a statement of undisputed facts. While plaintiff
`asserted that there were many remaining factual disputes in its
`memoranda opposing summary judgment, it did not submit a
`response to defendants’ statement of undisputed facts.
`Therefore, the Court will consider those facts undisputed.
`1. Legal Standard for Copyright Infringement
`“[R]egistration is not a condition of copyright protection”
`but it is required before a plaintiff files a claim alleging
`copyright infringement under the federal Copyright Act. Airframe
`Sys., Inc. v. L-3 Commc'ns Corp., 658 F.3d 100, 105 (1st Cir.
`2011) (quoting 17 U.S.C. § 408(a)). To succeed on a copyright
`infringement claim a plaintiff must demonstrate “(1) ownership
`of a valid copyright, and (2) copying of constituent elements of
`the work that are original.” Situation Mgmt. Sys., Inc. v. ASP.
`Consulting LLC, 560 F.3d 53, 58 (1st Cir. 2009) (quoting Feist
`Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361
`(1991)).
`With respect to the first requirement, a certificate of
`copyright registration carries with it a presumption of validity
`that must be rebutted by a defendant. Lotus Dev. Corp. v.
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`Borland Int'l, Inc., 49 F.3d 807, 813 (1st Cir. 1995), aff'd,
`516 U.S. 233 (1996).
`The second requirement has two subparts. “First, the
`plaintiff must show that copying actually occurred.” Johnson v.
`Gordon, 409 F.3d 12, 18 (1st Cir. 2005). Second, he must
`demonstrate
`that the copying of the copyrighted material was so
`extensive that it rendered the infringing and copyrighted
`works substantially similar.
`
`Id. (internal quotation marks omitted). Substantial similarity
`is measured with an “ordinary observer test” which examines
`whether an ordinary person would find “that the defendant
`unlawfully appropriated the plaintiff’s protectable expression.”
`Id.
`The federal Copyright Act also protects derivative works
`
`which are “based upon one or more preexisting works” that have
`been “recast, transformed, or adapted.” 17 U.S.C. §§ 101,
`106(2). Derivative works include “editorial revisions,
`annotations, elaborations, or other modifications . . . .” 17
`U.S.C. § 101. A copyright holder may
`bring a suit for unauthorized distribution of an
`unregistered derivative work as long as the suit is based
`on elements “borrowed” from a registered underlying work
`and not on elements original to the derivative work.
`
`Gordon, 409 F.3d at 20. In other words, elements that only
`appear in an unregistered derivative work are not protected by
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`the underlying copyright. Id.; see also Greene v. Ablon, 794
`F.3d 133, 152 (1st Cir. 2015).
`2. Plaintiff’s Claim that the iLIKEBUS Website
`Infringes the 2005 Copyright
`Defendants contend that summary judgment is warranted with
`respect to plaintiff’s claim that they infringed the 2005
`copyright, which protects the IvyMedia website, because the
`dissimilarity between the IvyMedia and iLIKEBUS websites is
`readily apparent. Plaintiff responds that its GotoBus website
`is a derivative work that is protected by the 2005 copyright and
`defendants have infringed that website.
`Plaintiff’s contention that the GotoBus website is a
`derivative work that is protected by the 2005 IvyMedia copyright
`is unavailing. There is no genuine dispute of material fact
`concerning the content of the GotoBus and IvyMedia websites and
`the differences between them significantly outnumber the few
`similarities. The most notable difference is that the websites
`advertise and sell different products. The IvyMedia website
`“offers bus tours . . . to [various] popular travel
`destinations” ranging from the Boston Freedom Trail to a tour of
`Los Angeles that includes stops at movie stars’ homes. In
`contrast, the GotoBus website advertises and sells bus tickets
`that allow passengers to travel to and from different cities.
`Accordingly, the GotoBus website is a separate work that
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`addresses a separate topic, not a “recast, transformed, or
`adapted” version of the IvyMedia website. 17 U.S.C. § 101.
`Moreover, the differences between the websites extend
`beyond the product that each sells. Almost every aspect of the
`two websites differs: the name and logo, the order and specific
`words used in the navigation menus, the format, the text and the
`available search options are all distinct.
`To the extent that there are similar elements between the
`IvyMedia and GotoBus websites, they are not entitled to
`copyright protection. Both websites allow users to “sign-in” or
`“login” and have a shopping cart icon. Both websites also have
`navigation menus that contain links used to operate the website
`and search functions that enable users to find tickets. As
`defendants point out, however, such common elements of websites
`are precluded from copyright protection as 1) methods of
`operation and 2) under the doctrine of scènes à faire.
`Section 102 of the Copyright Act excludes any “method of
`operation” from copyright protection. 17 U.S.C. § 102(b).
`Therefore, while original expression in a website is protected,
`the underlying methods used to operate it are not. Lotus, 49
`F.3d at 815. For instance, the First Circuit Court of Appeals
`has determined that the menu command hierarchy of a computer
`program, which included commands such as “print”, “save” and
`“quit”, involves methods of operations and cannot be protected
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`by a copyright. Id. Because the option to login to a website,
`the use of a shopping cart, the use of links to navigate a
`website and a search function on a website all involve methods
`of operation, they cannot be protected by copyright. See id.
`The doctrine of scènes à faire also precludes the elements
`that appear in both the IvyMedia and the iLIKEBUS website from
`copyright protection. That doctrine
`denies copyright protection to elements of a work that are
`for all practical purposes indispensable, or at least
`customary, in the treatment of a given subject matter.
`Coquico, Inc. v. Rodriguez-Miranda, 562 F.3d 62, 68 (1st Cir.
`2009). In a computer program context, the scènes à faire
`doctrine renders “design standards, target industry practices,
`and computer industry programming practices” unprotectable. Real
`View, LLC v. 20-20 Techs., Inc., 683 F. Supp. 2d 147, 152 (D.
`Mass. 2010). The elements that appear on both the IvyMedia and
`GotoBus websites, such as the shopping cart and links to operate
`the website, are standard programming and thus precluded from
`copyright protection under the scènes à faire doctrine.
`Because a derivative work is only protectable to the extent
`it includes protectable elements from the copyrighted work, and
`the GotoBus website does not contain copyrightable elements from
`the IvyMedia website, the GotoBus website is not protected by
`the 2005 copyright. Gordon, 409 F.3d at 20. Accordingly,
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`defendants are entitled to judgment as a matter of law on
`plaintiff’s claim that they infringed the 2005 copyright.
`3. Plaintiff’s Claim that the iLIKEBUS Website
`Infringes the 2015 Copyright
`Defendants assert that they are entitled to summary
`judgment with respect to plaintiff’s claim that the iLIKEBUS
`website infringes upon the 2015 copyright on grounds that there
`is no substantial similarity between the protectable elements of
`the copyrighted work, the GotoBus website, and their iLIKEBUS
`website. Plaintiff responds that its copyright registration
`protects the text, original artwork and the webpages as a whole
`and that the substantial similarity requirement is met.
`
`The only remaining claim in this case is that defendants
`infringed plaintiff’s copyright in violation of the federal
`Copyright Act. Because registration is a prerequisite for a
`copyright infringement claim pursuant to that statute, and
`plaintiff did not register its copyright until after the first
`iLIKEBUS website had been taken down, the Court will consider
`only the second version of the iLIKEBUS website in determining
`whether infringement of the 2015 copyright occurred. Airframe
`Sys., Inc., 658 F.3d at 105.
`Comparing plaintiff’s GotoBus website and the second
`version of the iLIKEBUS website, sufficient similarities between
`protectable elements exist to create a genuine dispute of
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`material fact as to whether copyright infringement has occurred.
`For instance, on the left side of GotoBus’s website, there is a
`box entitled “Schedule Features” that contains the following
`headings: “Roundtrip Discount”, “Buy N Get 1 Free”, “Wireless
`Internet”, “Wireless Internet with Power Plug”, “Power Plug
`Available” and “Dynamic Price”. Four of those six headings
`appear in a box entitled “Bus Features” on the left side of
`iLIKEBUS’s website. The placement of the box on the website and
`the apparent verbatim copying of the headings suffices to
`preserve a genuine issue of material fact as to whether the
`websites are substantially similar. See Gordon, 409 F.3d at 18.
`
`Furthermore, defendants’ contention that there is no
`copyright infringement because the similar elements, in any,
`involve methods of operation or scènes à faire is unavailing
`with respect to the 2015 copyright. None of the headings in the
`box is a link or provides a means to operate the website and all
`of the concepts behind the headings can be expressed in a
`variety of ways that do not include verbatim copying.
`Therefore, defendants are not entitled to summary judgment on
`the grounds that there is no substantial similarity between the
`iLIKEBUS and GotoBus websites.
`4. Remedies
`Defendants contend that summary judgment should be granted
`because 1) there is no evidence of actual damage, 2) plaintiff
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`is not entitled to statutory damages or attorneys’ fees and
`3) there is no evidence that would support permanently enjoining
`defendants. Plaintiff responds that it is either entitled to
`actual or statutory damages and that the ongoing harm caused by
`the purportedly infringing website warrants injunctive relief.
`First, the only evidence that supports actual damages
`appears to be plaintiff’s speculative assertion that the alleged
`infringement caused the difference between their projected and
`actual sales in 2015. As defendants point out, and plaintiff
`does not dispute, plaintiff has
`produced no financial reports, statements, records, or
`. . . documents that would support its damages claims.
`
`Moreover, this Court recently allowed defendants’ motion to
`compel plaintiff to produce the information underlying its
`damages calculation. Because the motion to compel was recently
`allowed and discovery concerning actual damages is ongoing, the
`Court will not allow summary judgment in defendants’ favor on
`actual damages. If plaintiff refuses to comply with the motion
`to compel, however, defendants will be entitled to summary
`judgment on plaintiff’s claim for actual damages because there
`is thus far a dearth of evidence in support of such a claim.
`Second, defendants correctly contend that statutory damages
`and attorneys’ fees are precluded under 17 U.S.C. § 412 because
`the supposedly infringing activity began before the 2015
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`copyright was registered. The original iLIKEBUS website went
`live on March 19, 2015 and the revised version on June 7, 2015.
`The registration of the copyright to protect the GotoBus website
`became effective on July 24, 2015.
`The Copyright Act does not permit statutory damages or
`attorneys’ fees if the allegedly infringing activity begins
`before the copyright was registered. See Gordon, 409 F.3d at 20
`(“[Registration] is also a condition precedent for obtaining
`certain remedies, such as statutory damages and attorneys'
`fees.”); Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696,
`701, n.4 (9th Cir. 2008) (collecting cases). Accordingly,
`because the undisputed facts show that the 2015 copyright was
`registered after the alleged infringement began, defendants are
`entitled to summary judgment on plaintiff’s claim for statutory
`damages and attorneys’ fees as a matter of law.
`Third, because there is a genuine issue of material fact
`with respect to whether defendants’ website infringes the 2015
`copyright, there remains such an issue with respect to whether
`permanent injunctive relief is warranted. Thus, summary
`judgment denying injunctive relief is unwarranted.
`Therefore, as to defendants’ contention that plaintiff is
`not entitled to statutory damages and attorneys’ fees, their
`motion for summary judgment will be allowed but, as to
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`defendants’ contention that summary judgment is warranted on
`actual damages and injunctive relief, the motion will be denied.
`5. Individual Liability of Zou and Wei
`Defendants submit that summary judgment of dismissal of the
`claims against the individual defendants should be allowed
`because Wei and Zou attempted to stop the supposed infringement
`by ordering the website to be redesigned. Defendants’ argument
`that Wei and Zou cannot be liable is unpersuasive given this
`Court’s conclusion that genuine issues of material fact persist
`with respect to whether the redesigned website infringes the
`2015 copyright. See Metro-Goldwyn-Mayer Studios Inc. v.
`Grokster, Ltd., 545 U.S. 913, 930 (2005). Thus, the Court will
`deny defendants’ motion for summary judgment on the claims
`against Wei and Zou.
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`ORDER
`In accordance with the foregoing, defendants’ motion for
`summary judgment is, with respect to 1) the claim that
`defendants’ infringed the 2005 copyright and 2) plaintiff’s
`request for statutory damages and attorneys’ fees, ALLOWED but
`is otherwise DENIED.
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`So ordered.
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`Dated May 15, 2017
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`/s/ Nathaniel M. Gorton
` Nathaniel M. Gorton
` United States District Judge
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