throbber
Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW HAMPSHIRE
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`D’Pergo Custom Guitars, Inc.
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`v.
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`Sweetwater Sound, Inc.
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`Civil No. 17-cv-747-LM
`Opinion No. 2020 DNH 003
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`O R D E R
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`D’Pergo Custom Guitars, Inc. (“D’Pergo”) brings this suit
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`against Sweetwater Sound, Inc. (“Sweetwater”), alleging claims
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`of copyright and trademark infringement and violations of the
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`New Hampshire Consumer Protection Act (“CPA”). D’Pergo alleges
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`that Sweetwater used a copyrighted photograph of D’Pergo’s
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`trademarked custom guitar necks and headstock to promote and
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`sell Sweetwater products on Sweetwater’s website. Sweetwater
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`moves for summary judgment on all of D’Pergo’s claims. Doc. no.
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`111. D’Pergo moves for summary judgment on its copyright
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`infringement claim. Doc. no. 112. The opposing party objects
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`to each motion.
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`
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`STANDARD OF REVIEW
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`
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`A movant is entitled to summary judgment if it “shows that
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`there is no genuine dispute as to any material fact and [that
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`it] is entitled to judgment as a matter of law.” Fed. R. Civ.
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`

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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 2 of 20
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`P. 56(a). In reviewing the record, the court construes all
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`facts and reasonable inferences in the light most favorable to
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`the nonmovant. Kelley v. Corr. Med. Servs., Inc., 707 F.3d 108,
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`115 (1st Cir. 2013). “Where the parties file cross-motions for
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`summary judgment, [the court] employ[s] the same standard of
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`review, but view[s] each motion separately, drawing all
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`inferences in favor of the nonmoving party.” Fadili v. Deutsche
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`Bank Nat. Tr. Co., 772 F.3d 951, 953 (1st Cir. 2014).
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`
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`BACKGROUND1
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`
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`D’Pergo manufactures and sells custom guitars. In 2003,
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`D’Pergo’s owner, Stefan Dapergolas, created a photograph
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`showcasing a number of D’Pergo’s unique guitar necks and
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`headstock, which D’Pergo published to its website (the
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`“Photograph”). D’Pergo used the Photograph on its website from
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`2003 – 2006, after which it took down the Photograph and
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`replaced it with professional photography.
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`
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`Sweetwater is a retailer that sells musical instruments,
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`including guitars, through its website. In 2004, Sweetwater
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`copied the Photograph and published it on Sweetwater’s website.
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`More specifically, Sweetwater used the Photograph in its
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`1 The facts in this section are taken from Sweetwater’s
`statement of undisputed material facts, see doc. no. 111-1 at 2-
`8, and are not challenged by D’Pergo, see doc. no. 125 at 1.
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`2
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`

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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 3 of 20
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`“Electric Guitar Buying Guide” (the “Buying Guide”), in the
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`section titled “Guitar necks explained.”2 The end of the Buying
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`Guide features a number of guitars from various manufacturers
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`for purchase (not D’Pergo’s), as well as a hyperlink to “Shop
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`for Electric Guitars.”
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`
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`In January 2015, Dapergolas learned that Sweetwater was
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`using the Photograph in the Buying Guide. D’Pergo later applied
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`for and was granted a copyright registration for the Photograph
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`from the Copyright Office.
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`
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`In January 2016, D’Pergo contacted Sweetwater about the
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`Photograph and Sweetwater removed the Photograph from its
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`website. D’Pergo subsequently trademarked its headstock design
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`depicted in the Photograph.
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`
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`D’Pergo then brought this lawsuit in December 2017. It
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`asserts five claims: (1) copyright infringement in violation of
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`the Copyright Act (Count I); (2) unfair competition in violation
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`of the CPA (Count II); (3) deceptive business practices in
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`violation of the CPA (Count III); (4) false designation of
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`origin and unfair competition in violation of the Lanham Act
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`(Count IV); and (5) trademark infringement in violation of the
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`Lanham Act (Count V).
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`2 The exact circumstances under which Sweetwater copied and
`published the Photograph are unclear from the record.
`Sweetwater represents that it has been unable to determine who
`posted the Photograph in the Buying Guide in 2004.
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`3
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 4 of 20
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`DISCUSSION
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`
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`Sweetwater moves for summary judgment on all of D’Pergo’s
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`claims. D’Pergo moves for summary judgment on its copyright
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`infringement claim in Count I. The opposing party objects to
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`each motion.
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`I. Sweetwater’s Motion
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`
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`Sweetwater states in its motion for summary judgment that
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`it concedes it used the Photograph without permission in the
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`Buying Guide. It contends, however, that it is entitled to
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`summary judgment on D’Pergo’s claims for various reasons. The
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`court addresses each claim in turn.
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`A. Copyright Infringement (Count I)
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`“To establish copyright infringement under the Copyright
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`Act, ‘two elements must be proven: 1) ownership of a valid
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`copyright, and (2) copying of constituent elements of the work
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`that are original.’” Johnson v. Gordon, 409 F.3d 12, 17 (1st
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`Cir. 2005) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
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`499 U.S. 340, 361 (1991)). Once a plaintiff establishes both
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`elements, it may seek to recover statutory damages, actual
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`damages, and infringing profits under the Copyright Act. See 17
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`U.S.C. § 504.
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`4
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 5 of 20
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`
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`Sweetwater does not address the elements of a copyright
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`infringement claim in its motion. Instead, it argues that it is
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`entitled to summary judgment because D’Pergo cannot recover
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`damages for that claim.
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`
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`As Sweetwater notes, the court held in a previous order
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`that D’Pergo is not entitled to statutory damages because
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`D’Pergo did not register its copyright before Sweetwater’s
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`alleged infringement began. See doc. no. 43 at 8 (citing 17
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`U.S.C. § 412). Sweetwater contends that the record evidence
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`shows that D’Pergo cannot recover actual damages or infringing
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`profits. D’Pergo argues that there is a genuine issue of
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`material fact as to whether it can recover either category of
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`damages.
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`1.
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`Actual damages
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`In a copyright infringement case, actual damages “consist
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`of all income and profits lost as a consequence of the
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`infringement.” Bruce v. Weekly World News, Inc., 310 F.3d 25,
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`28 (1st Cir. 2002). In addition, in “some cases, a hypothetical
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`license fee is a permissible basis for determining a plaintiff's
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`‘actual damages’ arising from an infringement.”3 Real View, LLC.
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`3 Actual damages may also include injury to the market value
`of the copyrighted work. See World Wide Video, LLC v. Pagola,
`No. CV 08-10391-RWZ, 2009 WL 10693580, at *1 (D. Mass. Oct. 8,
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`5
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 6 of 20
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`v. 20-20 Techs., Inc., 811 F. Supp. 2d 553, 556 (D. Mass. 2011);
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`see also 4 Melville B. Nimmer & David Nimmer, Nimmer on
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`Copyright, §§ 14.02[A]-[B] (1999). A “reasonable licensing fee
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`is generally computed by determining the fair market value.
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`‘Fair market value’ is defined as the reasonable license fee on
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`which a willing buyer and a willing seller would have agreed for
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`the use taken by the infringer.” World Wide Video, 2009 WL
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`10693580, at *1 (internal citations and quotation marks
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`omitted).
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`
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`Sweetwater argues that there is no evidence in the record
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`that D’Pergo suffered actual damages. Specifically, Sweetwater
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`states that D’Pergo’s claim for actual damages is based on a
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`hypothetical license fee, but that it cannot recover such
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`damages because: (1) it cannot prove that anyone would have paid
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`for a license to use the Photograph; and (2) D’Pergo’s damages
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`expert, Jeffrey Sedlik, relies on improper calculations and
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`assumptions to establish a hypothetical license fee.
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`
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`As discussed in the court’s order denying Sweetwater’s
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`motion to exclude Sedlik, see doc. no. 138, D’Pergo may offer
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`Sedlik’s opinion at trial. Sweetwater is entitled to cross-
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`examine Sedlik about his opinion and methodology, and present
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`2009). D’Pergo does not claim to have suffered such damages
`here.
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`6
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 7 of 20
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`the opinion of its rebuttal expert, Ellen Boughn. Because
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`Sedlik’s opinion is not excluded, the court must take it into
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`account in ruling on Sweetwater’s motion. Viewing the evidence
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`in the light most favorable to D’Pergo, there is a genuine issue
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`of material fact as to whether D’Pergo suffered actual damages
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`from Sweetwater’s copyright infringement. Therefore, the court
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`denies Sweetwater’s motion for summary judgment as to D’Pergo’s
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`request for actual damages for its copyright infringement claim.
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`2.
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`Infringing Profits
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`A copyright owner is entitled to recover “any profits of
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`the infringer that are attributable to the infringement and are
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`not taken into account in computing the actual damages.” § 504.
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`“In establishing the infringer’s profits, the copyright owner is
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`required to present proof only of the infringer’s gross revenue,
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`and the infringer is required to prove his or her deductible
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`expenses and the elements of profit attributable to factors
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`other than the copyrighted work.” Id. at (b).
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`
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`The parties disagree as to the burden the Copyright Act
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`places on a plaintiff to prove infringing profits. Sweetwater
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`argues that the majority of courts have held that § 504(b)
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`should not be read literally and have required a plaintiff to
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`establish a “legally significant connection” between the
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`infringement and a defendant’s revenues before the burden shifts
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`7
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 8 of 20
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`to the defendant to show that its profits are attributable to
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`other factors. See doc. no. 111-1 at 9 (citing cases). It
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`contends that this principle is especially applicable in
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`“indirect profit” cases such as this, where the defendant is not
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`selling the product in the infringing photograph but instead
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`allegedly uses the photograph to increase the likelihood of the
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`sale of another product or service. Id. at 12-14 (citing
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`cases). Sweetwater further states that the First Circuit has
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`not enunciated an exact standard for connecting infringement to
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`profits, but it notes that the court in Jane Doe No. 1 v.
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`Backpage.com, LLC, required a plaintiff to “link the display of
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`a particular image to some discrete portion of the
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`publisher/infringer’s profits” in order to meet its burden under
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`§ 504(b). 817 F.3d at 28 (1st Cir. 2016), cert. denied, 137 S.
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`Ct. 622 (2017). Sweetwater contends that D’Pergo cannot show a
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`non-speculative connection between the Photograph and
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`Sweetwater’s profits and, therefore, it is not entitled to
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`infringing profits.
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`D’Pergo counters that Sweetwater overstates a plaintiff’s
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`burden under § 504(b). It notes that the First Circuit has
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`described a plaintiff’s burden under that section as “minimal”
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`and requires only that a plaintiff place a defendant’s gross
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`revenues into evidence. See, e.g., Data Gen. Corp. v. Grumman
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`Sys. Support Corp., 36 F.3d 1147, 1173 (1st Cir. 1994),
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`8
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 9 of 20
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`abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick,
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`559 U.S. 154 (2010); see also John G. Danielson, Inc. v.
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`Winchester-Conant Properties, Inc., 322 F.3d 26, 47 (1st Cir.
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`2003). D’Pergo also argues that even if § 504(b) imposes a
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`higher burden on a plaintiff, it has shown that Sweetwater’s
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`gross revenues are connected to the infringement.
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`Regardless of whether a plaintiff must meet an initial
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`burden to a show a “legally sufficient causal link” between the
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`infringement and a defendant’s gross revenues, viewing the
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`evidence in the light most favorable to D’Pergo, there is a
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`genuine issue of material fact as to whether D’Pergo can
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`establish such a nexus. D’Pergo does not merely point to
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`Sweetwater’s gross revenues and put the burden on Sweetwater to
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`prove that its profits are not attributable to the infringement.
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`Rather, through its expert, Dr. Michael Einhorn, D’Pergo offers
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`as evidence of Sweetwater’s gross revenues only the profits
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`Sweetwater purportedly derived from customers who purchased
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`electric guitars online after viewing the Buying Guide, which
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`contained the Photograph.4 See doc. no. 115-2 at 7-11.
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`
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`The record, viewed favorably to D’Pergo, contains disputes
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`of fact as to whether all profits Sweetwater derived from
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`4 As with Sedlik, the court has held that Einhorn’s opinion
`as to copyright infringement damages is not excluded. See doc.
`no. 138.
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`9
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 10 of 20
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`purchases through the Buying Guide were attributable to the
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`Photograph. Cf. Bouchat v. Baltimore Ravens Football Club,
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`Inc., 346 F.3d 514, 524 (4th Cir. 2003) (stating that the
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`defendants successfully carried their burden of demonstrating
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`the absence of a genuine issue of material fact as to the
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`existence of infringing profits when they proffered affidavits
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`showing that revenues were driven by factors unrelated to the
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`infringing logo design). Viewing the evidence in the light most
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`favorable to D’Pergo, its claim for infringing profits is
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`sufficiently supported to survive summary judgment. IvyMedia
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`Corp. v. ILIKEBUS, Inc., No. 15-11918-NMG, 2017 U.S. Dist. LEXIS
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`80547, at *2 (D. Mass. May 25, 2017) (allowing claim for
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`infringing profits to survive summary judgment even where
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`“evidence of damages and causation is tenuous at best”).
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`B. Lanham Act Claims (Counts IV and V)
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`Counts IV and V allege claims for violation of § 1125(a) of
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`the Lanham Act.5 That section provides, in relevant part:
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`(1) Any person who, on or in connection with any goods
`or services, or any container for goods, uses in
`commerce any word, term, name, symbol, or device, or
`any combination thereof, or any false designation of
`
`
`
`
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`5 Neither party addresses the difference between Count IV
`(“False Endorsement/False Association”) and Count V (“Trademark
`Infringement”) in its summary judgment briefing. Because the
`parties’ briefing focuses on a broad argument applicable to both
`claims, the court does not address the issue.
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`10
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 11 of 20
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`origin, false or misleading description of fact, or
`false or misleading representation of fact, which—
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`(A) is likely to cause confusion, or to cause mistake,
`or to deceive as to the affiliation, connection, or
`association of such person with another person, or as
`to the origin, sponsorship, or approval of his or her
`goods, services, or commercial activities by another
`person . . .
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`Shall be liable in a civil action by any person who
`believes that he or she is or is likely to be damaged
`by such act.
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`15 U.S.C. § 1125(a). “To succeed on a claim of trademark
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`infringement, a plaintiff must establish (1) that its mark is
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`entitled to trademark protection, and (2) that the allegedly
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`infringing use is likely to cause consumer confusion.” Bos.
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`Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st
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`Cir. 2008).
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`
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`The “Lanham Act extends protection not only to words and
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`symbols, but also to ‘trade dress,’ defined as the design and
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`appearance of a product together with the elements making up the
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`overall image that serves to identify the product presented to
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`the consumer.” Yankee Candle Co. v. Bridgewater Candle Co.,
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`LLC, 259 F.3d 25, 37–38 (1st Cir. 2001) (citing cases) (internal
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`quotation marks omitted). “The primary purpose of trade dress
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`protection is to protect that which identifies a product’s
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`source.” Id. at 38; see also I.P. Lund Trading ApS v. Kohler
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`Co., 163 F.3d 27, 35 (1st Cir. 1998).
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`11
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 12 of 20
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`
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`D’Pergo has consistently represented that it seeks to
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`recover from Sweetwater for infringement of its trademark, not
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`its trade dress. Based on these representations, Sweetwater
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`moves for summary judgment on Counts IV and V, contending that
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`the Headstock Design Trademark is not a “word, term, name,
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`symbol, or device, or any combination thereof” and, therefore,
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`is not entitled to trademark protection. The court agrees. And
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`because D’Pergo has waived a trade dress infringement claim in
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`this case, Counts IV and V must be dismissed.
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`
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`The Headstock Design Trademark’s registration states that
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`the “mark consists of a product configuration consisting of a
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`two dimensional guitar headstock.” Doc. no. 44-4 at 2. Thus,
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`as the registration shows and D’Pergo alleges in its amended
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`complaint, the Headstock Design Trademark protects D’Pergo’s
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`“distinctive design mark . . . for use with electric guitars.”
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`Doc. no. 45 at ¶ 21. D’Pergo alleges in the amended complaint
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`that “the Headstock Design Trademark has become exclusively
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`identified with” D’Pergo. Id. at ¶ 67.
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`
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`D’Pergo concedes that its Headstock Design Trademark, which
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`protects the “design” and “product configuration” of its guitar
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`headstock, can be classified as trade dress. See doc. no. 125
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`at 23 (stating that D’Pergo could have brought trade dress
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`infringement claims). D’Pergo argues, however, that even if the
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`12
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 13 of 20
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`Headstock Design Trademark could be entitled to protection as a
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`trade dress, it is also entitled to protection as a trademark.
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`
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`In support of its argument, D’Pergo cites the Supreme
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`Court’s decision in Qualitex Co. v. Jacobson Prod. Co., 514 U.S.
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`159 (1995). In Qualitex, the Supreme Court stated:
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`The language of the Lanham Act describes that universe
`in the broadest of terms. It says that trademarks
`“includ[e] any word, name, symbol, or device, or any
`combination thereof.” § 1127. Since human beings
`might use as a “symbol” or “device” almost anything at
`all that is capable of carrying meaning, this
`language, read literally, is not restrictive.
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`Id. at 162. D’Pergo notes that the United States Patent and
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`Trademark Office (“USPTO”) has authorized trademarks for the
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`designs of various shapes, including the Coca-Cola bottle
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`(Registration No. 696147), which shows that its headstock design
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`can be protected under trademark, rather than trade dress, law.
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`
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`The Supreme Court’s holding in Qualitex does not support
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`D’Pergo’s contention that it can proceed under a theory of
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`trademark, rather than trade dress, infringement. As Sweetwater
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`notes, the Lanham Act does not define trade dress. Rather, a
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`cause of action for trade dress infringement arose because
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`courts held that the Lanham Act “embrace[d] not just word marks,
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`such as ‘Nike,’ and symbol marks, such as Nike’s ‘swoosh’
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`symbol, but also ‘trade dress’—a category that . . .
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`encompass[es] the design of a product.” Wal-Mart Stores, Inc.
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`v. Samara Bros., 529 U.S. 205, 209 (2000). In other words,
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`13
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 14 of 20
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`trade dress became protectable under the Lanham Act because
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`courts assumed “that trade dress constitutes a ‘symbol’ or
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`‘device’ for purposes of the relevant sections.” Id. D’Pergo
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`offers no persuasive support for its theory that it can protect
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`its “product design” and “configuration”—categories that courts
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`have consistently held are protectable under the Lanham Act as
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`trade dress—under a theory of trademark infringement. Id.;
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`Tracey Tooker & TT Ltd., Inc. v. Whitworth, 212 F. Supp. 3d 429,
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`434 (S.D.N.Y. 2016) (noting that the Lanham Act “protects trade
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`dress, which includes ‘what is at issue in this case: the design
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`or configuration of the product itself.’” (quoting Yurman
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`Design, Inc. v. PAJ, Inc., 262 F.3d 101, 114 (2d Cir. 2001));
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`see also 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
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`Competition § 8:1 (5th ed. 2019) (stating that trade dress
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`encompasses “the shape and design of the product itself”).
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`
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`D’Pergo’s argument concerning the Coca-Cola bottle’s shape
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`does not support its theory. Although Coca-Cola registered its
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`bottle’s shape with the USPTO, several courts have noted that
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`the design of the Coca-Cola bottle is protected as a trade
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`dress.6 See Homeland Housewares, LLC v. Euro-Pro Operating LLC,
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`
`6 D’Pergo appears to suggest that registration with the
`USPTO is prima facie evidence that its Headstock Design
`Trademark is protectable as a trademark, rather than as trade
`dress. To the extent D’Pergo makes that argument, it is
`unavailing. Registration “on the principal register is ‘prima
`facie evidence of the validity of the registered mark’ which
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`14
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`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 15 of 20
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`No. CV 14-03954 DDP MANX, 2015 WL 476287, at *5 (C.D. Cal. Feb.
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`5, 2015) (describing the Coca-Cola bottle shape as trade dress);
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`Clearline Techs. Ltd. v. Cooper B-Line, Inc., No. CV H-11-1420,
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`2012 WL 12893491, at *8 (S.D. Tex. July 2, 2012) (noting that
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`the shape of a Coca-Cola bottle is protected as trade dress);
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`Rauch Indus., Inc. v. Radko, No. 3:07-CV-197-C, 2007 WL 3124647,
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`at *7 (W.D.N.C. Oct. 25, 2007) (same). And, although, as
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`D’Pergo notes, the USPTO has granted trademarks for shapes and
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`designs of guitars, those, too, are considered protectable as
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`trade dress. See, e.g., 1 McCarthy, supra, § 8:7 (listing
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`“[e]xamples of trade dress which have been held to be
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`registerable as trademarks or service marks” and including “the
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`shape of a guitar head” and “the shape of a guitar body” (citing
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`Yamaha International Corp. v. Hoshino Gakki Co., 231 U.S.P.Q.
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`926 (T.T.A.B. 1986), aff’d, 840 F.2d 1572, 6 U.S.P.Q. 2d 1001
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`(Fed. Cir. 1988) and Gibson Guitar Corp. v. Paul Reed Smith
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`
`
`
`
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`entitles the owner to a presumption that its mark is valid.”
`Hillside Plastics, Inc. v. Dominion & Grimm U.S.A., Inc., No.
`3:17-CV-30037-MGM, 2018 WL 4537205, at *7 (D. Mass. Aug. 6,
`2018) (quoting 15 U.S.C. § 1115(a) (further citations and
`quotation marks omitted)). Thus, registration of a trademark is
`relevant to the validity of the mark, not whether it is
`protected as a trademark or trade dress. See, e.g., BBK Tobacco
`& Foods, LLP v. Galaxy VI Corp., No. 17-CV-4079 (BCM), 2019 WL
`4747985, at *9 (S.D.N.Y. Sept. 30, 2019) (noting that
`registration on the principal register is prima facie evidence
`of the validity of both plaintiff’s trademarks and trade dress).
`
`15
`
`
`
`

`

`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 16 of 20
`
`Guitars, LP, 423 F.3d 539, 76 U.S.P.Q. 2d 1372, 2005 FED App.
`
`0387P (6th Cir. 2005), cert. denied, 126 S. Ct. 2355 (2006))).
`
`
`
`To be clear, there is no dispute that the Lanham Act
`
`protects trade dress, and that D’Pergo may have been able to
`
`recover under a theory of trade dress infringement. But, as the
`
`court has noted in prior orders and D’Pergo does not dispute,
`
`D’Pergo has waived any claim for trade dress infringement in
`
`this case. See, e.g., doc. no. 92 at 4-7. D’Pergo’s Headstock
`
`Design Trademark, which protects the “design” and “product
`
`configuration” of its guitar headstock, is protectable as trade
`
`dress, not a trademark. Therefore, Sweetwater is entitled to
`
`summary judgment on Counts IV and V.
`
`
`
`
`
`
`
`C. Consumer Protection Act Claims (Counts II and III)
`
`D’Pergo asserts two claims under the New Hampshire Consumer
`
`Protection Act, RSA § 358-A. The CPA provides, in relevant
`
`part:
`
`It shall be unlawful for any person to use any unfair
`method of competition or any unfair or deceptive act
`or practice in the conduct of any trade or commerce
`within this state. Such unfair method of competition
`or unfair or deceptive act or practice shall include,
`but is not limited to, the following:
`
` I. Passing off goods or services as those of
`another;
`
`
`
`
`
`16
`
`
`
`
`
`

`

`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 17 of 20
`
` II. Causing likelihood of confusion or of
`misunderstanding as to the source, sponsorship,
`approval, or certification of goods or services.
`
`RSA 358-A:2.
`
`
`
`D’Pergo alleges in Count II that Sweetwater’s use of the
`
`Photograph in the Buying Guide effectively passed off D’Pergo’s
`
`guitars as Sweetwater’s and caused a likelihood of confusion as
`
`to the source of its goods. Count III similarly alleges that
`
`Sweetwater’s use of the Photograph in its Buying Guide caused a
`
`likelihood of confusion as to the source of its guitars.7
`
`
`
`Sweetwater contends that D’Pergo’s CPA claims are identical
`
`to its Lanham Act claims. It argues that because it is entitled
`
`to summary judgment on D’Pergo’s Lanham Act claims, it is also
`
`entitled to judgment on the CPA claims.
`
`
`
`Sweetwater is mistaken. The CPA is “a comprehensive
`
`statute whose language indicates that it should be given broad
`
`sweep.” Ne. Lumber Mfrs. Assoc. v. N. States Pallet Co., 710 F.
`
`Supp. 2d 179, 188 (D.N.H. 2010). By “its plain language, the
`
`scope of unlawful activity covered by the CPA is broader than
`
`the trademark infringement claims governed by the Lanham Act.”
`
`Id. Thus, even when a defendant’s conduct may be insufficient
`
`to establish a claim under the Lanham Act, it may still violate
`
`the CPA. Id. (granting plaintiff’s motion for summary judgment
`
`
`7 As with its Lanham Act claims, the difference between
`D’Pergo’s CPA claims is unclear.
`
`17
`
`
`
`

`

`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 18 of 20
`
`on its CPA claim but denying plaintiff’s motion as to its Lanham
`
`Act claim because “[r]egardless of what the scope of
`
`[plaintiff’s] marks are,” defendant passed off his goods as
`
`having approval or certification that they did not have).
`
`
`
`For these reasons, Sweetwater is not entitled to summary
`
`judgment on D’Pergo’s CPA claims.
`
`
`
`
`
`
`
`D. Summary
`
`Sweetwater is entitled to summary judgment on D’Pergo’s
`
`claims for trademark infringement (Counts IV and V). It is not
`
`entitled to summary judgment as to D’Pergo’s claim for violation
`
`of the Copyright Act (Count I) or the CPA (Counts IV and V).
`
`
`
`II. D’Pergo’s Motion for Partial Summary Judgment
`
`
`
`D’Pergo moves for summary judgment on its claim for
`
`copyright infringement in Count I. As discussed supra, to
`
`prevail on a copyright infringement claim under the Copyright
`
`Act, a plaintiff must prove two elements: “1) ownership of a
`
`valid copyright, and (2) copying of constituent elements of the
`
`work that are original.” Johnson 409 F.3d at 17 (internal
`
`quotation marks and citation omitted).
`
`
`
`D’Pergo asserts that there is no genuine issue of material
`
`fact that it has established both elements of a copyright
`
`infringement claim. In response, Sweetwater does not dispute
`
`
`
`
`18
`
`

`

`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 19 of 20
`
`that assertion. Instead, it argues that D’Pergo is not entitled
`
`to summary judgment on Count I because there is a genuine issue
`
`of material fact as to whether D’Pergo is entitled to damages
`
`for that claim.
`
`
`
`Although, as discussed supra, the extent of D’Pergo’s
`
`damages as to Count I is an open question, that fact does not
`
`preclude the entry of summary judgment in favor of D’Pergo as to
`
`liability for purposes of that claim. To establish liability
`
`for copyright infringement, a plaintiff must prove two elements.
`
`Once a plaintiff establishes both elements, it may seek to
`
`recover damages under the Copyright Act. See § 504.
`
`
`
`Because the undisputed facts in the record show that
`
`Sweetwater infringed D’Pergo’s copyright, D’Pergo is entitled to
`
`summary judgment on Count I.8 Whether and to what extent D’Pergo
`
`is entitled to damages on that claim is a question that, for the
`
`reasons discussed supra, is best left to a jury.
`
`
`
`CONCLUSION
`
`
`
`For the foregoing reasons, Sweetwater’s motion for summary
`
`judgment (doc. no. 111) is granted as to Counts IV and V but is
`
`
`
`
`
`
`8 Sweetwater does not raise any affirmative defense to its
`infringement, such as fair use, which might otherwise preclude
`summary judgment in D’Pergo’s favor.
`
`19
`
`
`
`

`

`Case 1:17-cv-00747-LM Document 139 Filed 01/06/20 Page 20 of 20
`
`otherwise denied. D’Pergo’s motion for summary judgment as to
`
`Count I (doc. no. 112) is granted.
`
`SO ORDERED.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`January 6, 2020
`
`cc: Counsel of Record
`
`
`
`
`
`
`
`
`
`__________________________
`Landya McCafferty
`United States District Judge
`
`
`
`
`20
`
`

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