Case 1:12-cv-00820-KG-KK Document 26 Filed 10/31/13 Page 1 of 31
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`UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF NEW MEXICO
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`CHARLES HARNER,
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`Plaintiff,
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`v.
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`Case No. 1:12-cv-00820-KG-ACT
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`WONG CORPORATION, d/b/a PC MAGIC PRO,
`a/k/a PC MAGIC,
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`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`On July 27, 2013, Plaintiff Charles Harner filed a Complaint for Infringement of
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`Copyright (Doc. 1) (Complaint). Defendant Wong Corporation, d/b/a PC Magic Pro, a/k/a PC
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`Magic (Wong) now moves for summary judgment on all of Harner’s claims in his Complaint.
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`See Wong Corporation’s Motion for Summary Judgment (Doc. 17), and Memorandum of Law in
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`Support of Wong Corporation’s Motion for Summary Judgment (Doc. 18) (Motion for Summary
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`Judgment), filed Nov. 28, 2012. Harner opposes the Motion for Summary Judgment. See
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`Response to Motion for Summary Judgment (Doc. 20) (Response), filed Dec. 12, 2012. Wong
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`filed a reply brief on January 2, 2013. See Wong Corporation’s Reply Memorandum in Further
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`Support of Its Motion for Summary Judgment (Doc. 21) (Reply). On February 1, 2013, Wong
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`filed a Notice of Supplemental Authority (Doc. 23). Harner responded to the Notice of
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`Supplemental Authority on February 8, 2013. See Response to Notice of Supplemental Authority
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`(Doc. 24). For the following reasons, the Motion for Summary Judgment is granted in part and
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`denied in part.
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`I. Background
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`A. The Complaint
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`This is a copyright infringement case that arises from two sets of advertisements. Wong
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`hired Harner to create advertisements for Wong’s computer repair business. Subsequently, Wong
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`created its own advertisements for its business. Harner is now suing his former employer, Wong,
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`for copyright infringement. In the Complaint, Harner asserts that Wong violated the Copyright
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`Act of 1976, as amended, 28 U.S.C.A. §§ 1331 and 1338 (Copyright Act), when Wong willfully
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`infringed on Harner’s copyrighted materials in five publications: (1) Yellowbook 2008/2009 on
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`pages 256, 261, 264, and 267 (2008/2009 Yellowbook Ads) (Count I)1; (2) “Use through January
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`2010” DEX Official Directory on page 347 (2010 DEX Ad) (Count II)2; (3) “Use through
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`January 2011” DEX Official Directory on pages 276 and 280 (2011 DEX Ads) (Count III)3;
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`Yellowbook 2010/2011 on page 238 (2010/2011 Yellowbook Ad) (Count IV)4; and (5) online at
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`KRQE.com (KRQE.com Ad) (Count V)5. Harner requests actual damages and lost profits,
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`statutory damages, and attorney’s fees pursuant to the Copyright Act.
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`B. The Motion for Summary Judgment
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`Wong moves for summary judgment on all Counts in the Complaint. Wong argues that:
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`(1) Harner does not own a valid copyright in the advertisements he created for Wong because
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`Harner's advertisements are not copyrightable; or, alternatively, (2) only the selection and
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`1 See Def.’s Ex. 2 (Doc. 18-2) for photocopies of the 2008/2009 Yellowbook Ads.
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` See Def.’s Ex. 3 (Doc. 18-3) for a photocopy of the 2010 DEX Ad.
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` See Def.’s Ex. 4 (Doc. 18-4) for photocopies of the 2011 DEX Ads.
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` See Def.’s Ex. 5 (Doc. 18-5) for a photocopy of the 2010/2011 Yellowbook Ad.
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` See Def.’s Ex. 6 (Doc. 18-6) for a printout of KRQE.com Ad.
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`Case 1:12-cv-00820-KG-KK Document 26 Filed 10/31/13 Page 3 of 31
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`arrangement of the elements in Harner’s advertisements qualify for "thin" copyright protection,
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`and Harner cannot prove the required supersubstantial similarity required in a “thin” copyright
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`infringement case; and (3) Harner does not have a claim for statutory damages or attorney’s fees
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`under the Copyright Act because Harner registered the advertisements he created for Wong with
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`the United States Copyright Office after the alleged infringement began.
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`C. Summary of the Material Facts6
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`Between 2000 and 2007, Harner was in the business of creating yellow pages7
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`advertisements. Pl.’s Ex. 2 at ¶ 1 (Doc. 20-3). During that time, Wong operated a computer repair
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`business and employed Sheue Y. Cheng as director of operations. Def.’s Ex. 7 at ¶ 1 (Doc. 18-7).
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`Wong hired Harner to prepare yellow pages advertisements for Wong’s business. Complaint at ¶
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`5. Harner created at least four yellow pages advertisements for Wong.8 Harner gave Wong
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`permission to publish the advertisements in the yellow pages. Pl.’s Ex. 2 at ¶ 7 (Doc. 20-3).
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`Each of the advertisements contained the following copyright notice: ©2002-2007 Charles
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`Harner H.I.T.S., C.K.S. Id. Harner asserts that he revoked Wong’s permission to use his
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`advertisements in 2007. Complaint ¶ 1. Harner claims that in December 2007, March 2008, and
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`May 2008 he warned Cheng that Wong would be infringing on his copyright if Wong used the
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`advertisements any time after their publication in the “Use through January 2008” DEX Official
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`6 In a motion for summary judgment, the Court must view the facts in the light most favorable to
`the non-moving party, in this case Harner. See Applied Genetics Intl, Inc. v. First Affiliated Sec.,
`Inc., 912 F.2d 1238, 1241 (10th Cir. 1990). This summary of the material facts reflects the facts
`Harner presented in his favor.
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` 7
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` Yellow pages refer to a telephone directory of businesses, not to be confused with Yellowbook,
`which is a telephone directory publisher.
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` It is unclear from the pleadings the exact number of advertisements that Harner created for
`Wong or in which yellow pages they were published. However, Wong attached photocopies of
`four different advertisements created by Harner for Wong’s use. See Def.’s Exhibit 1(Doc. 18-1).
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`Directory. Id. After the warnings, Wong created its own advertisements for its computer repair
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`business and printed the advertisements in Yellowbooks, in DEX Official Directories, and online
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`at KRQE.com.
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`Harner registered the advertisements that he created for Wong with the United States
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`Copyright Office under the title "Charles Harner's collection of yp ads" (herein known
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`collectively as the "Registered Works" or each advertisement individually as a "Registered
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`Work").9 See Pl.’s Ex. 2 at ¶ 7 (Doc. 1-2). The registration became effective on June 7, 2010. Id.
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`The Copyright Office Certificate of Registration (Certificate of Registration) states that Harner
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`created "text, photograph(s), 2-D artwork" completed in 2007 and first published on December
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`15, 2007. Id. The Certificate of Registration lists the material excluded from the claim as "[s]ome
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`photos and artwork" and the new material included in the claim as "[s]ome new photos and
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`artwork, and new text." Id.
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`Neither the Complaint nor the Certificate of Registration lists the advertisements that
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`Harner created for Wong or where the advertisements were printed. Attached to Wong's Motion
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`for Summary Judgment are four photocopied images of advertisements that Wong labels as the
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`advertisements that Harner created for Wong. See Def.’s Ex. 1 (Doc. 18-1). In Harner's
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`Response, he does not dispute that the attached advertisements are the works that he created for
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`Wong, and he does not describe any other advertisements as works that he created for Wong.
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`Therefore, these four advertisements are considered all of the advertisements that Harner created
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`for Wong and are collectively referred to as the Registered Works.
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`The four advertisements in the Registered Works have numerous similarities. First, each
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`advertisement has the phrase “COMPUTER PROBLEMS?” printed in large text at the top of the
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`9 See Def.’s Ex. 1 (Doc. 18-1) for photocopies of the Registered Works.
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`advertisement. See Def.’s Ex. 1 (Doc. 18-1). To the right of that phrase, each advertisement has a
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`circle with “$25” printed inside of it. Id. All of the advertisements contain the phrase, “WE
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`KNOW HOW COMPUTERS WORK!" near the top of the advertisements. Id. The advertisements
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`all display the telephone number, address, website, and hours of Wong's business. Id. Finally,
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`each advertisement has a picture of Cheng printed in either the lower right or left corner. Id.
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`Although each advertisement contains numerous similarities, each has unique elements and a
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`unique arrangement of these elements. Below is a brief description of the major elements of each
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`advertisement.
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`1. Registered Work #110
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`The first advertisement contained in the Registered Works (Registered Work #1) features
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`a half-page advertisement printed in a DEX Directory on page 352. The advertisement contains
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`the following four lines of large text at the top of the page, each on its own line: "COMPUTER
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`PROBLEMS?"; "WE KNOW HOW COMPUTERS WORK!"; "Have our PRO-Techs Help
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`PROTECT your computer!!!"; and "The Original Complete Computer Store! [sic] of New
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`Mexico!" Below these phrases are seventeen pictures of computer components. Eleven of the
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`pictures are grouped together in the middle left portion of the advertisement in a clustered
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`arrangement. The other six pictures are organized in two stacked horizontal boxes to the right of
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`the other eleven pictures. In the lower box are two arrows pointing to the computer components.
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`Finally, a photo of Cheng facing slightly to the left is printed in the lower right corner of the
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`advertisement with the phrase “Call Us Today!”, the store’s telephone number, and the store’s
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`hours printed on the lower part of her photograph.
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`10 Nowhere in the pleadings are the individual advertisements in the Registered Works labeled.
`Therefore, the Court has labeled each numerically by reference to the advertisement’s placement
`within the Registered Works. Registered Work #1 is photocopied on page 1 of Def.’s Ex. 1 (Doc.
`18-1).
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`2. Registered Work #211
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`Registered Work #2 is the largest of the advertisements, covering roughly two-thirds of
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`the page. On the top of the advertisement in large print is the phrase "COMPUTER
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`PROBLEMS?" Below that phrase, in smaller print, is the phrase "Repair/UPGRADE or get a
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`NEW COMPUTER From us!" and below that phrase, the advertisement states "We Know How
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`Computers Work!" The middle section of the advertisement consists of seven boxes in two rows.
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`The upper row has four boxes side-by-side, each containing pictures of computer components.
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`Three of those four boxes also contain arrows pointing to the pictures of computer components.
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`The remaining three boxes make up the bottom row with the outside boxes containing text and
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`the middle box containing a picture of Wong's employees with the phrase "PRO TEAM" printed
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`on the photo. Finally, a large picture of Cheng is printed in the bottom right corner of the
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`advertisement.
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`3. Registered Work #312
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`Registered Work #3 is a half-page advertisement. It has five lines of short phrases and
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`slogans at the top half of the advertisement. The top phrase, “COMPUTER PROBLEMS?”, is
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`printed in considerably larger text than the other phrases. Below the text, in the lower right
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`quarter of the advertisement are five circles arranged horizontally with pictures of computer
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`components printed within the circles. Registered Work #3 is different from the other
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`advertisements in the Registered Works in two significant ways. First, the picture of Cheng is
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`located in the lower left corner of the advertisement. Second, to the right of Cheng’s picture is a
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`11 Registered Work #2 is photocopied on page 2 of Def.’s Ex. 1 (Doc. 18-1).
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`12 Registered Work #3 is photocopied on the top half of page 3 of Def.’s Ex. 1 (Doc. 18-1).
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`rectangular box with the heading “WARNING” and a triangle with an exclamation mark inside.
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`Inside the box is the following statement:
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`A recent poll suggested that 8 out of 10 contractors don’t know what they are
`doing!
`Imagine someone dropping by to repair your computer and they didn’t have the
`parts, or worse, taking so long to repair it.
`How about finding out later that they are no longer in business. Ask your friends
`who they would recommend or Better [sic] yet, drop by and see why our clients
`always come back to us!
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`4. Registered Work #4
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`Registered Work # 4 is identical to Registered Work #1 except that the picture of Cheng
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`is slightly more zoomed in and facing slightly to the right.
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`II. Standard of Review
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`Summary judgment is appropriate if there is no genuine dispute as to a material fact and
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`the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a).13 When
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`applying this standard, the Court examines the factual record and reasonable inferences
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`therefrom in the light most favorable to the party opposing summary judgment. Applied Genetics
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`Intl, Inc. 912 F.2d at 1241. The moving party bears the initial burden of showing the absence of a
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`genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). Only then
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`does the burden shift to the non-movant to come forward with evidence showing that there is a
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`genuine issue of material fact. Bacchus Indus., Inc. v. Arvin Indus., Inc., 939 F.2d 887, 891 (10th
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`Cir. 1991). An issue of material fact is genuine if a reasonable jury could return a verdict for the
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`non-movant. Kaul v. Stephan, 83 F.3d 1208, 1212 (10th Cir.1996) (citation omitted). The non-
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`moving party may not avoid summary judgment by resting upon the mere allegations or denials
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`of his or her pleadings. Bacchus Indus., Inc., 939 F.2d at 891.
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`13 Rule 56 was amended effective December 1, 2010, but the standard for granting summary
`judgment remains unchanged.
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`III. Discussion: Copyright Infringement
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`To prevail on a claim of copyright infringement, the plaintiff must establish: (1)
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`ownership of a valid copyright, and (2) unlawful copying of elements of the work that are
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`original. TransWestern Publ’g Co., v. Multimedia Mktg. Assocs., 133 F.3d 773, 775 (10th Cir.
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`1998) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991)). For
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`the second element, the plaintiff may prove unlawful copying by establishing that (1) the
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`defendant “had access to the copyrighted work” and (2) “there are probative similarities between
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`the copyrighted material and the allegedly copied material.” Country Kids ‘N City Slicks, Inc. v.
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`Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996) (citation omitted).
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`A. Ownership of a Valid Copyright: Original Works of Authorship
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`Harner asserts that he owns a valid copyright in the Registered Works because he
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`registered the advertisements with the United States Copyright Office. Complaint at ¶ 6. Wong
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`argues that the Registered Works are not entitled to copyright protection. Motion for Summary
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`Judgment at 5-11. A Certificate of Registration obtained within five years of first publication
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`constitutes “prima facie evidence of the validity of the copyright and of the facts stated in the
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`certificate.” 17 U.S.C. § 410(c). Harner’s Certificate of Registration states that the
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`advertisements first were published in 2007, which is within five years of Harner obtaining the
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`2010 Certificate of Registration. The Certificate of Registration, therefore, is prima facie
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`evidence that the copyright is valid. However, Wong may overcome that prima facie evidence of
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`validity “by presenting evidence and legal argument sufficient to establish that the works in
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`question [are] not entitled to copyright protection.” Meshwerks, Inc. v. Toyota Motor Sales
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`U.S.A., Inc., 528 F.3d 1258, 1262 (10th Cir. 2008).
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`Wong argues that the Registered Works are not copyrightable because the advertisements
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`are not original. Copyright protection extends only to “original works of authorship.” 17 U.S.C.
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`§ 102(a). In order to be “original,” the work must (1) be “independently created by the author (as
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`opposed to copied from other works),” and (2) possess “at least some minimal degree of
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`creativity.” Feist, 499 U.S. at 345. The required level of creativity is “extremely low; even a
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`slight amount will suffice.” Id. The “vast majority of works” will meet the requisite creativity,
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`“no matter how crude, humble or obvious” the work might be. Id.
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`In its Motion for Summary Judgment, Wong employs a divide and conquer approach,
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`taking each of the following elements of the Registered Works and arguing that the elements do
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`not possess a minimal degree of creativity: (1) the phrases and slogans, (2) the photographs of
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`computer components, and (3) the selection and arrangement of the elements found in the
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`advertisements.
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`(a) The Phrases and Slogans
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`The Registered Works include numerous short phrases and slogans. The shortest phrases
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`and slogans consist of one or two words, including "Buy," "PRO TEAM," and "WE REPAIR."
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`The two longest phrases and slogans are, "Thank you for making us the best computer store in
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`New Mexico" and "Have our PRO-techs Help PROTECT your computer!!!"14
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`First, it is unclear whether Harner created the short phrases and slogans independently.
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`Harner claims that he was the first person in Albuquerque to use certain phrases in computer
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`repair advertisements: “Computer Problems?”, “Want A New Computer?”, and “We Know How
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`14 The Court notes that Registered Work #3 contains text within a “WARNING” box that is
`rather lengthy. Harner, however, does not argue that this text was independently created or that it
`possesses a minimal degree of creativity and that it, therefore, is an original work of authorship
`entitled to copyright protection. The Court construes this lack of argument to mean that Harner
`concedes that this warning text is not copyrightable.
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`Case 1:12-cv-00820-KG-KK Document 26 Filed 10/31/13 Page 10 of 31
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`Computers Work!” Pl.’s Ex. 2 at ¶ 6 (Doc. 20-3). However, he does not discuss whether he
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`created these particular phrases and the other phrases and slogans in the advertisements or
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`whether Wong or another source created them.
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`Furthermore, “[c]opyright protection does not extend to fragmentary words or short
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`phrases that lack the minimal level of creativity necessary to warrant copyright protection.”
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`Health Grades, Inc. v. Robert Wood Johnson Univ. Hosp., Inc., 634 F. Supp. 2d 1226, 1237 (D.
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`Colo. 2009) (citing CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504, 1519-
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`20 (1st Cir. 1996)). See also Magic Mktg. v. Mailing Servs. of Pittsburgh, Inc., 634 F.Supp. 769,
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`771 (noting that even “colorful descriptions, such as advertising slogans, are not accorded
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`copyright protection”); Feist, 499 U.S. at 344 (“facts are not copyrightable”); Shaw v. Lindheim,
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`919 F.2d 1353, 1362 (9th Cir. 1990) (“titles, in and of themselves, cannot claim statutory
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`copyright.”). Indeed, regulations published by the United States Copyright Office provide that
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`“[w]ords and short phrases such as names, titles, and slogans” are not subject to copyright. 37
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`C.F.R. § 202.1(a).
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`Courts have denied copyright protection to phrases and slogans with varying degrees of
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`complexity. In Magic Mktg. 634 F.Supp. at 772, envelopes describing their contents with phrases
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`such as “TELEGRAM,” “GIFT CHECK,” “PRIORITY MESSAGE”, and “CONTENTS
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`REQUIRE IMMEDIATE ATTENTION” did not possess a sufficient degree of creativity to be
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`copyrightable. As well, the Seventh Circuit Court of Appeals did not accord copyright protection
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`to an advertising slogan that contained the colorful description of a hygiene product as the “most
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`personal sort of deodorant.” Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 711 (7th
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`Cir. 1972). Finally, copyright protection was denied to longer phrases, such as “if you're still ‘on
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`the clock’ at quitting time” and “clock in and make $50 an hour,” because the phrases contained
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`“clichéd language” typical of phrases that convey the idea of employment. CMM Cable Rep.,
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`Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504, 1520 (1st Cir. 1996). Harner, however, cites to
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`Health Grades, Inc., 634 F. Supp. 2d at 1238, in which the court, in dicta, stated that “it does not
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`make sense to state categorically that no combination of numbers or words short enough to be
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`deemed a ‘phrase’ can possess ‘at least some minimal degree of creativity.’” Harner cites to no
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`substantive authority which provides examples of phrases receiving copyright protection, nor
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`does Harner argue that any specific phrase in the Registered Works actually contains a minimal
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`degree of creativity to qualify for copyright protection.
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`The longer phrases contain a similar degree of creativity to the phrases in Alberto-Culver
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`Co. and CMM Cable Rep. The phrases in these cases, including this one, are used to relay
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`information about the business and products offered by the business. The phrase "Thank you for
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`making us the best computer store in New Mexico" is a standard phrase that contains clichéd
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`language for thanking customers for their business. The phrase "Have our PRO-techs Help
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`PROTECT your computer!!!" is a slogan that describes the services offered by Wong. The
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`slogan is similar to the slogans that were uncopyrightable in Alberto-Culver Co. and CMM Cable
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`Rep. Therefore, even assuming that Harner independently created the short phrases and slogans
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`in the Registered Works, a reasonable jury could not find that they are sufficiently creative to
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`receive copyright protection.
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`(b) The Photographs
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`The Registered Works also contain numerous photographs of computers and computer
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`components. Most of the pictures are straight-on or slightly-angled individual photographs of
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`computer components, including monitors, keyboards, internet modems, and internet routers.
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`The most complex photograph is of a laptop computer taken from an angle from which one can
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`see the CD drive open and holding a CD. Additionally, the Registered Works include
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`photographs of Cheng facing forward with her hair down and smiling. Wong argues that the
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`individual images of the computers and computer components are not creative enough to receive
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`copyrightable protection.
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`As with the short phrases and slogans, it is unclear from the pleadings whether Harner
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`independently created the photographs in the Registered Works. Harner states that he "created
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`the digital images by using multiple computer programs" that included photographs he took,
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`although he does not state which images he photographed. Pl.’s Ex. 2 at ¶¶ 2-3 (Doc. 20-3).
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`Wong states that Harner used pre-existing photographs of computer components.
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`Purely descriptive photographs are not sufficiently original to be protected by copyright
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`law. See Custom Dynamics, LLC v. Radiantz LED Lighting, Inc., 535 F. Supp. 2d 542, 549
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`(E.D.N.C.2008) (“[T]here is no ‘creative spark’ involved in a purely descriptive picture of a
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`product.”). For example, in Oriental Art Printing, Inc. v. Goldstar Printing Corp., 175 F. Supp.
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`2d 542, 546 (S.D.N.Y. 2001), photographs of common Chinese food dishes “as they appear on
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`the plates served to customers at restaurants” lacked the requisite “creative spark” to be protected
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`under the Copyright Act. Rather than being original works with the requisite minimal level of
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`creativity, the photographs were only meant to "serve a purely utilitarian purpose: to identify [the
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`food items for sale]." The court also noted that finding the photographs to be copyrightable
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`“would secure plaintiffs the exclusive right of use in such photographs, which effectively would
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`permit them to monopolize the market for printing menus that depict certain commonly served
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`Chinese dishes.” Id. at 548.
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`The photographs in this case are similar to the photographs of Chinese dishes in Oriental
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`Art Printing, Inc. In both cases, the photographs at issue were meant to serve the utilitarian
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`purpose of presenting the various types of products and services that the businesses offer. For
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`example, the purpose of the photograph of the laptop with the CD drive open is to show potential
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`viewers that Wong’s computer business repairs and sells laptop computers; likewise, in Oriental
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`Art Printing, Inc., the purpose of the photograph of a Chinese food dish in a menu was to display
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`the different food choices to diners. Additionally, just as the plaintiffs in Oriental Art Printing,
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`Inc., could not monopolize the market on Chinese food menus by copyrighting purely descriptive
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`photographs of Chinese food, Harner may not corner the market on advertising computer repair
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`businesses by copyrighting purely descriptive pictures of computer components. In both cases
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`the photographs do not merit copyright protection because the photographs lack the requisite
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`creativity. See also Stokes Seeds Ltd. v. Geo. W. Park Seed Co., Inc., 783 F.Supp. 104, 107
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`(W.D.N.Y. 1991) (individual photographs of emerging seedlings of plants in which “care was
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`taken in the selection of photographic angles and the levels of light” not copyrightable because
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`photographs lacked “artistic merit”). Even assuming that Harner independently created the
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`photographs featured in the Registered Works, a reasonable jury could not find that the
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`photographs possess the requisite creativity to be copyrightable.
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`(c) The Selection and Arrangement of the Elements
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`The Court must first determine the nature of Harner’s work under the Copyright Act in
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`order to decide if the selection and arrangement of the elements is copyrightable. Wong contends
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`that the Registered Works constitute compilations. Harner, in contrast, asserts that the Registered
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`Works are pictorial and graphic works. A “compilation” is “a work formed by the collection and
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`assembling of preexisting materials or of data that are selected, coordinated, or arranged in such
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`a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. §
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`101. In comparison, “[p]ictorial, graphic, and sculptural works” include “two-dimensional and
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`Case 1:12-cv-00820-KG-KK Document 26 Filed 10/31/13 Page 14 of 31
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`three-dimensional works of fine, graphic, and applied art, photographs, prints and art
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`reproductions, maps, globes, charts, diagrams, models, and technical drawings.” Id. The
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`Registered Works are properly classified as compilations. Harner selected preexisting phrases,
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`slogans, and photographs, arranging the elements in each advertisement in ways that he felt best
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`attracted readers to the advertisements. The advertisements in the Registered Works do not
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`qualify for any of the listed categories under pictorial, graphic and sculptural works. Therefore,
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`as a matter of law, Harner’s design of the advertisements constitutes an original work of
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`authorship as a compilation. See Express Lien Inc. v. National Ass'n of Credit Mgmt. Inc., 2013
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`WL 4517944 *3 (E.D. La.) (slip op.) (holding that decision of whether copyrighted work is
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`compilation is matter of law).
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`With respect to the selection and arrangement of the individual elements as a compilation
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`of those elements, Wong asserts that the Registered Works lack the minimum degree of
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`creativity to qualify for copyright protection. Wong additionally argues that the scènes à faire
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`doctrine precludes the selection and arrangement of the elements in each advertisement from
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`being protected under the Copyright Act. Although short phrases and generic images by
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`themselves are not copyrightable, compilations of such items may be protected because they
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`“may possess the requisite originality.” Feist, at 344-348; see 17 U.S.C. § 103 (identifying
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`compilations as work that may be copyrighted). A compilation is original and hence
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`copyrightable if the author has independently and with at least a minimal degree of creativity
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`made decisions as to “which facts to include, in what order to place them, and how to arrange the
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`collected data so that they may be used effectively by readers.” Feist, 499 U.S. at 348, 357-58.
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`However, copyright protection extends “only [to] the elements that owe their origin to the
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`Case 1:12-cv-00820-KG-KK Document 26 Filed 10/31/13 Page 15 of 31
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`compiler - the selection, coordination, and arrangement -” and not to the individual elements
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`underlying the author's compilation, which remain unprotected. Id. at 359.
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`Harner has presented evidence stating that he independently selected and arranged the
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`elements without assistance. See Def.’s Ex 2 at ¶ 5 (Doc. 20-3). Moreover, this case is similar to
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`Dahlen v. Mich. Licensed Beverage Ass’n, 132 F. Supp. 2d 574, 581-82 (E.D. Mich. 2001) in
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`which the court granted copyright protection to the arrangement of a poster containing
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`information about drinking and driving. Although the individual elements contained in the poster
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`were non-copyrightable “brute facts and public domain materials,” the court granted copyright
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`protection to the compilation of the facts and pre-existing materials. Id. The court noted that the
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`Plaintiff’s arrangement of the poster included
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`a boldface and enlarged block of text at the top of the poster to catch the reader's
`attention and convey the central message of safety, the use of bold or capitalized
`letters throughout the poster to emphasize certain words and phrases, bullet points
`highlighting various facts relating to drinking and driving, a box of text in the
`middle of the poster surrounded by two columns of additional text, and a border
`around the outer edges of the poster.
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`Id. at 582. The court held that these arrangement choices did not conform to an “age-old
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`practice,” nor were they “so commonplace that it has come to be expected as a matter of course.”
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`Id. Rather, the poster’s arrangement possessed the requisite “minimal level of creativity” to
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`receive copyright protection. Id.
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`Recently, the Tenth Circuit Court of Appeals gave the following examples of selection
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`and arrangements of elements that are entitled to copyright protection:
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`[A] sweater designer can have copyright protection over an original way of using
`squirrels as a design element in conjunction with fall colors, stripes, and panels,
`even though those elements individually constitute ideas in the public domain. A
`plaintiff's "selective and particularized" alterations of a public-domain carpet
`pattern also can constitute protectable expression.
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`Blehm v. Jacobs, 702 F.3d 1193, 1202 (10th Cir. 2012) (citations omitted); see also Oriental Art
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`Printing, 175 F. Supp. 2d at 548 (holding that compilation of uncopyrightable pictures of
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`Chinese food dishes in menu, arranged in various patterns on white background, including
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`“arranged in full circles, semi-circles, and open circles, ovals, zigzags, and parallel rows, among
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`other patterns” and including “certain geometric artwork, such as floating hearts, stars, or
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`diamonds” was copyrightable because overall design contained requisite originality); Stokes
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`Seeds Ltd. 783 F.Supp. at 105-06 (a portfolio of photographs of the emerging plant seedlings was
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`copyrightable as a compilation even though the individual pictures of the seedlings were not
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`copyrightable).
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`The selection and arrangement of the text in the Registered Works is similar to the
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`selection and arrangement of the text in Dahlen. As in Dahlen, Harner selected and arranged
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`uncopyrightable text, and made decisions regarding the font, size, and ca