Case: 1:05-cv-00581-SJD Doc #: 14 Filed: 02/09/07 Page: 1 of 24 PAGEID #: 460
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
`WESTERN DIVISION
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`Case No. 1:05CV581
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`District Judge Susan J. Dlott
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`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANT’S
`MOTION FOR SUMMARY
`JUDGMENT
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`MICHAEL E. FAESSLER,
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`Plaintiff,
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`v.
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`THE UNITED STATES PLAYING CARD
` CO.,
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`Defendant.
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`This matter is before the Court on Defendant’s Amended Motion to Dismiss or for
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`Summary Judgment and supporting memorandum (doc. 11),1 Plaintiff’s response in opposition
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`(doc. 12), and Defendant’s reply (doc. 13). For the reasons that follow, the Court treats
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`Defendant’s motion as one for summary judgment and GRANTS IN PART and DENIES IN
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`PART Defendant’s motion.
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`I.
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`BACKGROUND
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`Plaintiff Michael Faessler filed this action against Defendant United States Playing Card
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`Company (“USPC”) alleging copyright infringement and tortious interference with contract.
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`USPC moved to dismiss Faessler’s claims pursuant to Fed. R. Civ. P. 12(b)(6) or, in the
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`alternative, for summary judgment on the claims pursuant to Fed. R. Civ. P. 56.
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`Faessler’s claims arise out of his belief that USPC is producing playing cards that
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`infringe upon Faessler’s registered copyright for military insignia playing cards. Faessler claims
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`1 Defendant’s original motion to dismiss or for summary judgment was filed as Docket
`8, and Defendant’s memorandum in support and exhibits thereto as Docket 9. Due to an
`electronic filing error, Defendant amended and refiled its motion as Docket 11.
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`1
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`Case: 1:05-cv-00581-SJD Doc #: 14 Filed: 02/09/07 Page: 2 of 24 PAGEID #: 461
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`that in 1980, while he was studying as a cadet in the U.S. Miliary Academy, he began designing
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`a unique deck of playing cards modeled after the Military ranking system. Faessler claims that
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`he introduced this idea to USPC in 1987 but declined the company’s offer to publish his cards, as
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`the price quote was not economically viable. Faessler found a different company to manufacture
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`the cards (hereafter referred to as “Military Playing Cards”) and began commercial sales of the
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`cards in 1988.
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`In 1992, Faessler left active duty in order to pursue the opportunity to sell his Military
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`Playing Cards to the Army and Air Force Exchange Services (“AAFES”), a distributor he was
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`unable to solicit while he was on active duty because of the potential conflict of interest. In
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`1994, Faessler filed for and received four registered copyrights for his Miliary Playing Cards,
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`with styles for the Air Force, Navy, Army, and Marines, listing himself as the author and
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`copyright claimant. Each of the cards included a single rank insignia and an indication of the
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`corresponding rank designation for each of the military branches beginning with the lowest rank
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`on the “2” cards and proceeding up the ranks to the “Ace” cards. (Doc. 9 exs. D (Air Force), E
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`(Navy), F (Army), and G (Marines)). In 1995, Faessler sold his Military Playing Cards to
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`approximately 200 AAFES outlets. The following year, the AAFES entered into a contract with
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`Faessler to distribute all four styles of the Military Playing Cards. Faessler also sold his Military
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`Playing Cards at other retail outlets including Navy Exchange, Ship Stores Afloat, Marine Corps
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`Exchange, and Veterans Canteen Services.
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` In 1998, one of Faessler’s sales representatives informed him that USPC representatives
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`were removing Faessler’s Military Playing Cards from their designated shelf space at AAFES
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`outlets and replacing them with USPC’s own brand of playing cards. USPC’s Patriotic Playing
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`2
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`Cards use the same rank insignias and theme as Faessler’s cards (lowest rank corresponds to
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`lowest card and highest rank corresponds to highest card) but arrange the insignias differently
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`and use a different cover and different Joker card artwork. (Doc. 9 e’s. H (Air Force), I (Navy), J
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`(Army), and K (Marines)). USPC’s Patriotic Playing Card line also includes a deck representing
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`the Coast Guard. Faessler claims that in 1999 he sent USPC a “cease and desist letter”
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`concerning the Patriotic Playing Cards but that USPC did not respond.
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`Faessler continued to sell his playing cards until 2001, when he was placed back on
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`active duty. In 2005, he attempted to re-enter the playing card market but realized that USPC
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`was selling its Patriotic Playing Card line at military exchanges. Faessler filed this suit for
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`copyright infringement and tortious interference with his contract with AAFES on September 6,
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`2005.
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`II.
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`SUMMARY JUDGMENT STANDARD
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`USPC captioned its motion as a motion to dismiss or for summary judgment. Because
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`both parties have presented matters outside the pleadings, the Court will treat the motion as
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`arising under Fed. R. Civ. P. 56. See Fed. R. Civ. P. 12(b); Granger v. Marek, 583 F.2d 781, 785
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`(6th Cir. 1978).2
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`2 Pursuant to Fed. R. Civ. P. 12(b), “[i]f, on a motion asserting the defense numbered (6)
`to dismiss for failure of the pleading to state a claim upon which relief can be granted, matters
`outside the pleading are presented to and not excluded by the court, the motion shall be treated as
`one for summary judgment and disposed of as provided in Rule 56, and all parties shall be given
`reasonable opportunity to present all material made pertinent to such a motion by Rule 56.”
`Plaintiff in this case had reasonable opportunity to present material pertinent to USPC’s motion
`and, in fact, did so when he attached to his responsive memorandum numerous exhibits and the
`supporting affidavit of Michael E. Faessler. (Doc. 12 ex. 1-12.) As such, the Court is required
`to proceed under Rule 56. See, e.g., Dayco Corp. v. Goodyear Tire & Rubber Co., 523 F.2d 389,
`392-93 (6th Cir. 1975) (finding that if affidavits are filed with the district court, the court must
`proceed under Rule 56 unless the court decides to exclude the affidavits).
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`3
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`Summary judgment is appropriate if no genuine issue of material fact exists and the
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`moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). On a motion for
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`summary judgment, the movant has the burden of showing that no genuine issues of material fact
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`are in dispute, and the evidence, together with all inferences that can permissibly be drawn
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`therefrom, must be read in the light most favorable to the party opposing the motion. Matsushita
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`Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-87 (1986). The moving party
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`may support the motion for summary judgment with affidavits or other proof or by exposing the
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`lack of evidence on an issue for which the nonmoving party will bear the burden of proof at trial.
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`Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986).
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`In responding to a summary judgment motion, the nonmoving party may not rest upon
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`the pleadings but must go beyond the pleadings and “present affirmative evidence in order to
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`defeat a properly supported motion for summary judgment.” Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 257 (1986). The nonmoving party “must set forth specific facts showing there is a
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`genuine issue for trial.” Fed. R. Civ. P. 56(e). The task of the Court is not “to weigh the
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`evidence and determine the truth of the matter but to determine whether there is a genuine issue
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`for trial.” Liberty Lobby, 477 U.S. at 249. A genuine issue for trial exists when the evidence is
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`not “so one-sided that one party must prevail as a matter of law.” Id. at 252.
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`Where the moving party bears the burden of proof on an issue, he must show more than
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`the lack of a genuine issue for trial. Rather, “where the moving party has the burden–the
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`plaintiff on a claim for relief or the defendant on an affirmative defense–his showing must be
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`sufficient for the court to hold that no reasonable trier of fact could find other than for the
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`moving party.” Calderone v. U.S., 799 F.2d 254, 258-59 (6th Cir. 1986).
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`4
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`Although summary judgment is permissible in copyright infringement actions, the Sixth
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`Circuit has found that a jury’s determination of whether two works are substantially similar has
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`“special significance”:
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`A jury deciding the issue of substantial similarity not only makes
`findings of historical fact, but usually also serves as a proxy for the
`works’ intended audience. In this role as proxy, jurors decide not
`only what happened, but also can be properly influenced by
`whether their exposure to the alleged infringing work would
`diminish their appetite for the copyrighted work. See Kohus, 328
`F.3d at 856-57. As the diminished market for copyrighted work is
`the harm that the copyright law seeks to avoid, this issue is crucial
`and contains an element of subjectivity not found in most other
`jury determinations. Therefore, courts have recognized that
`“granting summary judgment, particularly in favor of a
`defendant, is a practice to be used sparingly in copyright
`infringement cases.”
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`Murray Hill Publ’ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 321 (6th Cir.
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`2004) (quoting Wickam v. Knoxville Int’l Energy Exposition, 739 F.2d 1094, 1097 (6th Cir.
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`1984)) (emphasis added).
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`III.
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`ANALYSIS
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`USPC sets forth several arguments in support of its motion. First, USPC argues that
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`Faessler’s copyright infringement and tortious interference with contract claims are barred in
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`whole or in part by statutes of limitation. In a somewhat related argument, USPC contends that
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`Faessler’s copyright infringement claims are barred by the equitable doctrine of laches because
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`Faessler delayed filing this action over seven years and USPC has suffered substantial prejudice.
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`Next, addressing the merits of Faessler’s copyright infringement claims, USPC argues that: (1)
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`Faessler’s cards failed to include the requisite copyright notice and thus entered the public
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`domain; and (2) there is no infringement because USPC’s cards are not substantially similar to
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`5
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`Faessler’s cards. Finally, USPC argues that Faessler’s tortious interference with contract claim
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`fails because Faessler cannot prove that USPC intentionally procured the breach of his contract.
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`The Court will address each of these contentions in turn.
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`A.
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`Statute of Limitations
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`1.
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`Copyright Infringement
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`A plaintiff must bring a civil copyright infringement claim within three years after the
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`claim accrues. 17 U.S.C. § 507(b). “A cause of action for copyright infringement accrues when
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`one has knowledge of a violation or is chargeable with such knowledge.” Roley v. New World
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`Pictures, Ltd., 19 F.3d 479, 481 (9th Cir. 1994). Because each act of infringement is a distinct
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`harm, the statute of limitations bars infringement claims that accrued more than three years
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`before suit was filed but does not preclude infringement claims that accrued within the statutory
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`period. Bridgeport Music, Inc. v. Diamond Time, Ltd., 371 F.3d 883, 889 (6th Cir. 2004); see
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`also Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 202 (4th Cir. 1997).
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`The copyright holder’s recovery in such cases is limited to acts of infringement that accrued
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`within the limitations period. Roley, 19 F.3d at 481.
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`Based on the three-year limitations period, USPC argues that to the extent Faessler
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`prevails on his copyright infringement claims, he can only recover damages for sales of USPC
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`decks after September 6, 2002, which is three years prior to the date he filed his Complaint.
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`Faessler responds that the Court has the discretion to equitably toll the statute of limitations and
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`that summary judgment on the issue is improper as the record is insufficiently developed on “the
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`numerous issues which may affect [Faessler’s] right to calculate damages across time.” (Doc. 12
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`at 15.)
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`6
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`“Because the statute of limitations is an affirmative defense, the burden is on the
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`defendant to show that the statute of limitations has run. If the defendant meets this requirement
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`then the burden shifts to the plaintiff to establish an exception to the statute of limitations.”
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`Campbell v. Grand Trunk Western R. Co., 238 F.3d 772, 775 (6th Cir. 2001). USPC has
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`demonstrated by pointing to Faessler’s Complaint that Faessler knew of USPC’s allegedly
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`infringing playing cards in 1998. (Doc. 1 ¶¶ 18-19.) Faessler alleges that he sent USPC a cease
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`and desist letter the following June. (Id. at ¶ 21.) Nonetheless, Faessler did not file his
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`Complaint until September 6, 2005. Thus, USPC has meet its burden of showing that the statute
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`of limitations bars Faessler from recovering damages for sales of USPC’s playing cards after
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`September 6, 2002. The burden thus shifts to Faessler to show that he is entitled to an exception
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`to the statute.
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`The Sixth Circuit Court of Appeals has identified five factors to consider when
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`determining the appropriateness of equitably tolling a statute of limitations: (1) the petitioner’s
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`lack of notice of the filing requirement; (2) the petitioner’s lack of constructive knowledge of the
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`filing requirement; (3) diligence in pursuing one’s rights; (4) absence of prejudice to the
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`respondent; and (5) the petitioner’s reasonableness in remaining ignorant of the legal
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`requirement for filing his claim. Andrews v. Orr, 851 F.2d 146 (6th Cir. 1988). Absent
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`congressional authority to the contrary, equitable tolling shall only be appropriate after a court
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`has properly considered and balanced these factors. Dunlap v. U.S., 250 F.3d 1001, 1008 (6th
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`Cir. 2001). Federal courts typically extend equitable relief only sparingly. Griffin v. Rogers,
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`7
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`399 F.3d 626, 635 (6th Cir. 2005) (quoting Irwin v. Dep’t of Veterans Affairs, 498 U.S. 89, 96
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`(1990)).
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`In responding to USPC’s motion, Faessler provided the Court with very little support to
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`his claim of entitlement to an equitable tolling of the statute of limitations. The fourteen-
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`paragraph affidavit he filed in support of his opposing memorandum dedicated but one paragraph
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`to elucidating his asserted grounds for tolling the statute: “My delay in bringing this action was
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`caused in part by my overseas military service and severe business difficulties.” (Doc. 12 ex. 11
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`¶ 11.) The overseas military service apparently consisted of active duty with service in the U.S.
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`Embassy at Guatemala, where Faessler served from early 2001 to September 2002. (Doc. 1 ¶
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`23.) From the Complaint, it appears that Faessler’s severe business difficulties were at least in
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`part “due to the shrinking margins from the unfair competition by Defendant.” (Id. at ¶ 22.)
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`Faessler provides the Court with no evidence that he lacked notice or constructive
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`knowledge of the requirement of filing his lawsuit within the mandatory limitations period. He
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`does not explain why he was not diligent in filing his lawsuit between 1998 when he first learned
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`of the allegedly infringing work and 2001 when he was called back to active duty or why he did
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`not file his lawsuit when he returned to the United States in 2002. While the Court accepts that
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`Faessler’s delay was, in part, caused by his overseas service and business difficulties, this bare
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`assertion, without more, is insufficient to satisfy Faessler’s burden of establishing that he is
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`entitled to an equitable tolling of the statute of limitations. Accordingly, the Court holds that
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`Faessler’s recoverable damages for his copyright infringement claim are limited to those that
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`occurred within three years of his commencement of this action.
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`2.
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`Tortious Interference with Contract
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`8
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`Faessler’s state-law claim of tortious interference with contract is controlled by a four-
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`year statute of limitations. Ohio Rev. Code § 2305.09(D). Ohio law dictates that the limitations
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`period begins to run when the events giving rise to the claim occurred. Koury v. City of Canton,
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`No. 1:04-CV-02248, 2005 WL 2649883, *14 (N.D. Ohio Oct. 17, 2005) (citing Kabealo v.
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`Huntington Nat. Bank, No. 94APE09-1387, 1995 WL 141064, at *3 (Ohio Ct. App. 1995)).
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`USPC argues that any action it took that could be perceived as interfering with Faessler’s
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`contract with AAFES occurred five or six years ago, thus Faessler’s state law claim is barred.
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`Faessler responds that “there are serious issues, such as equitable considerations, on which
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`almost no record has yet been adduced” and that it would therefore be premature for the Court to
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`grant USPC’s motion on statute of limitations grounds. (Doc. 12 at 19.)
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`The relevant time line is established by Faessler’s Complaint. In 1998, Faessler learned
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`that his salespeople and USPC’s representatives “were in a subtle battle over shelf space in the
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`AAFES outlets.” (Doc. 1 ¶ 18.) Faessler sent USPC a cease and desist letter in June 1999. (Id.
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`¶ 21.) He did not file his Complaint until September 2005.
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`Once again, the Court notes that USPC has presented facts that demonstrate that the
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`relevant statute bars the claim, and it is Faessler’s burden to establish his entitlement to an
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`exception to the statute. Faessler has failed to meet this burden, having presented no evidence in
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`support of his position other than his sworn statement that business difficulties and overseas
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`service delayed his filing of the action. Faessler cannot point to an undeveloped record as a basis
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`for denying USPC’s motion. USPC filed its motion as a motion to dismiss or, alternatively, for
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`summary judgment. (Doc. 11.) Faessler responded to USPC’s motion with various matters
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`outside the pleadings, including his own affidavit. (Doc. 12 ex. 1-12.) As such, the Court was
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`9
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`required to treat the motion as one for summary judgment. Faessler had the opportunity to
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`present additional facts supporting his alleged entitlement to an equitable tolling of the statute,
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`and he did not. Accordingly, USPC’s argument that Faessler’s tortious interference with
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`contract claim is time barred is well taken.
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`B.
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`Laches
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`USPC seeks to invoke the affirmative defense of laches to limit Faessler’s potential
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`damages to those incurred after the filing of the action. “Laches occurs when the plaintiff has
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`delayed enforcing his rights for an unreasonable length of time and the defendant has been
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`materially prejudiced by the delay.” High Tymes Prods., Inc. v. PRN Prods., Inc., No. 1:93-CV-
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`298, 1994 WL 16460309 at * 2 (S.D. Ohio Nov. 18, 1994) (citing Watkins v. Northwestern Ohio
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`Tractor Pullers Assoc., Inc., 630 F.2d 1155, 1159 (6th Cir. 1980)). Laches must be determined
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`on a case-by-case basis. Id. (citing Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co.,
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`147 F.2d 407 (6th Cir. 1945)). A successful defense of laches in this case would require that
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`there be no material issues of fact as to whether Faessler’s delay in bringing suit was
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`unreasonable and whether USPC was prejudiced by the delay. See Hoste v. Radio Corp. of
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`America, 654 F.2d 11, 11 (6th Cir. 1981).
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`USPC attempts to place the burden on Faessler to demonstrate why laches should not bar
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`the copyright claim. (Doc. 13 at 12.) However, as laches is an affirmative defense, the burden is
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`USPC’s, not Faessler’s. And USPC has not met its burden. While it presents the Court with the
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`affidavit of USPC’s Associate General Counsel which states that USPC would suffer prejudice if
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`the claim was to proceed (doc. 9 ex. Q), that alone is insufficient to convince the Court that
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`USPC is entitled to summary judgment on the issue. For example, to assert the equitable defense
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`10
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`of laches, a defendant must have clean hands; a defendant who engages in deliberate, calculated
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`plagiarism or who acts in open and known hostility to a plaintiff’s rights may not assert laches.
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`High Tymes Prods., Inc., 1994 WL 16460309 at *3. USPC has failed to adduce any evidence to
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`affirmatively demonstrate its clean hands, an important fact issue particularly because Faessler
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`alleges that he presented his prototype military playing cards to USPC in 1987 to solicit price
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`quotes. Simply put, there remain too many issues of material fact for the Court to find that
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`USPC is entitled to a laches defense.
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`C.
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`Copyright Infringement
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`1.
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`Requisite Notice
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`Turning now to the merits of Faessler’s claim, USPC argues that Faessler has no
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`copyright infringement claim because his military playing cards failed to display copyright
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`notice and thus entered the public domain. Under the Copyright Act of 1976, copyright notice
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`on a work was a prerequisite to copyright protection. 17 U.S.C. §401 (1976 version). However,
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`Congress amended the Copyright Act in 1988 in accordance with the Berne Convention. Under
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`the Revised Act, effective March 1, 1989, copyright notice is no longer a prerequisite to
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`protection. 17 U.S.C. § 401.
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`To analyze USPC’s argument, the Court must first determine the significance of the fact
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`that Faessler first published and began selling a prototype of his Military Playing Cards between
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`1986 and 1988 (hereafter the “1986 Cards”). USPC argues that the 1986 Cards did not contain
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`copyright notice and therefore entered the public domain pursuant to the Copyright Act of 1976.
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`Faessler has a two-pronged response. First, he says that his claim against USPC is based on its
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`alleged infringement of the copyright he holds on his Army, Navy, Air Force, and Marines
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`11
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`Case: 1:05-cv-00581-SJD Doc #: 14 Filed: 02/09/07 Page: 12 of 24 PAGEID #: 471
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`playing cards which did not exist until 1994 (hereafter the “Subject Works”), thus the 1976
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`version of the Copyright Act does not apply to the action. The 1986 Cards, which only have an
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`Army theme, are “markedly different” from the Subject Works, according to Faessler.3 Second,
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`Faessler asserts that even if the 1976 Copyright Act applied, the 1986 Cards contained
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`appropriate copyright notice and were protected, thus they did not enter the public domain.
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`The issue of whether the 1986 Cards are in the public domain is an important first step to
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`the resolution of this case, even assuming that the 1994 Subject Works are the basis of Faessler’s
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`infringement claim. When viewing allegedly infringing work, a court must ignore unprotectible
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`or public domain portions of the plaintiff’s work. See, e.g., Knitwaves, Inc. v. Lollytogs Ltd., 71
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`F.3d 996, 1002 (2d Cir. 1995) (“[W]here we compare products that contain both protectible and
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`unprotectible elements, our inspection must be ‘more discerning’; we must attempt to extract the
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`unprotectible elements from our consideration and ask whether the protectible elements, standing
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`alone, are substantially similar.”) Thus, if the 1986 Cards are in the public domain and
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`unprotectible, the Court would have to extract all common elements from any comparison
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`between Faessler’s 1994 Subject Works and USPC’s cards.
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`The Copyright Act of 1976 applies to the 1986 Cards as they were published prior to the
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`effective date of the Berne Convention. The 1976 Act required that notice of copyright be
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`placed on publicly distributed copies of the work. The notice was to consist of three elements:
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`“(1) the symbol © . . . or the word ‘Copyright’, or the abbreviation ‘Copr.’; and (2) the year of
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`the first publication of the work . . .; and (3) the name of the owner of the copyright in the work. .
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`3 USPC disputes that the 1986 Cards are markedly different from the Subject Works.
`See comparison of the 1986 Cards, the Subject Works, and USPC’s cards attached as Ex. 1 to
`doc. 13.
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`12
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`Case: 1:05-cv-00581-SJD Doc #: 14 Filed: 02/09/07 Page: 13 of 24 PAGEID #: 472
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`. .” 17 U.S.C. § 401(b) (1976 Act). The Act required that the notice be affixed to the copies “in
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`such manner and location as to give reasonable notice of the claim of copyright.” Id. § 401(c).
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`The 1986 Cards include notice consisting of the language “The Military Playing Card
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`Co., © 1986, Ft. Myers, FL” near the bottom of each illustration on the Jokers and on the
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`illustration of the Jokers on the card boxes. (Doc. 12 Ex. 2). The flap of the box bears the
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`language, “We claim exclusive rights to all face designs, joker, back designs, case design, and
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`other distinguishing characteristics of our brand of cards.” (Doc. 12 Ex. 1.) USPC does not
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`dispute that the form of the copyright notice complies with the statute’s requirements. Rather, it
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`contends that the placement of the notice on the Jokers alone did not reasonably notify the
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`viewer of a claim in copyright over the entire compilation of playing cards. (Doc. 13 at 13.)4
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`“The purpose of a copyright notice is to prevent innocent persons who are unaware of the
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`existence of the copyright from incurring the penalties of infringers by making use of the
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`copyrighted work.” Monogram Models, Inc. v. Industro Motive Corp., 492 F.2d 1281, 1284-85
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`(6th Cir. 1974). The question, then, is whether the copyright notice included on the 1986 Cards’
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`4 USPC also argues that under 17 U.S.C. § 403, Faessler’s failure to include on his 1986
`Cards a statement about the government’s ownership of the rank and insignia places the work in
`the public domain. (Doc. 13 at 12-13.) This is an overstatement. The 1973 Act provided that
`“[w]henever a work is published in copies or phonorecords consisting preponderantly of one or
`more works of the United States Government, the notice of copyright provided by sections 401
`or 402 shall also include a statement identifying, either affirmatively or negatively, those
`portions of the copies or phonorecords embodying any work or works protected under this title.”
`17 U.S.C. § 403 (1976 Act).
`Courts interpreting § 403 as revised by the 1988 amendments have held that the sole
`consequence of failing to provide sufficient copyright notice on government work is that an
`alleged infringer may mitigate his actual or statutory damages by asserting the innocent
`infringement defense. See, e.g., Matthew Bender & Co., Inc. v. West Pub. Co., 240 F.3d 116 (2d
`Cir. 2001). Thus, there is insufficient precedent for the Court to conclude that Faessler’s
`omission of a statement of governmental ownership over certain elements used in his playing
`cards casts the entire work into the public domain.
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`Case: 1:05-cv-00581-SJD Doc #: 14 Filed: 02/09/07 Page: 14 of 24 PAGEID #: 473
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`Joker illustration, which also was included on the box cover, gave reasonable notice of Faessler’s
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`claim of copyright over all the cards in the deck. The Court finds that it did.
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`The Sixth Circuit has held that when a “work” protected by copyright consists of
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`component parts, it is not necessary to place the notice on each component part. Monogram
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`Models, Inc., 492 F.2d at 1285 (holding that copyright notices on model airplane boxes and
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`instruction sheets gave adequate copyright notice to anyone who reasonably used the kits and
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`that it was not necessary to place a notice on each of the plastic airplane parts themselves). The
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`Fourth Circuit Court of Appeals, interpreting Monogram Models and similar cases, has referred
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`to this concept as the “unit publication doctrine” and held that the doctrine applies to protect all
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`elements of a publication when those elements form a single commercial unit. Koontz v.
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`Jaffarian, 787 F.2d 906, 909 (4th Cir. 1986). “Courts adhering to the unit publication doctrine
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`hold that copyright notice affixed ‘to one element of a publication containing various elements
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`gives copyright protection to all elements of the publication.’” Id. (quoting Koontz v. Jaffarian,
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`617 F. Supp. 1108, 1112 (E.D. Va. 1985)).
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`In this case, Faessler placed copyright notice on the Jokers contained within the deck of
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`cards, and the same Joker illustration with copyright notice was on the card box. A box of cards
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`is a single commercial unit; one would not, and could not, purchase the Joker alone.
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`Furthermore, the flap of the box containing the 1986 Cards unequivocally stated a claim of
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`exclusive rights to all face designs, joker, back designs, case design. The application of the unit
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`publication doctrine to the 1986 Cards is fair under the circumstances, and the Court concludes
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`that the copyright notice displayed on the Joker and on the card box was sufficient to provide
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`Case: 1:05-cv-00581-SJD Doc #: 14 Filed: 02/09/07 Page: 15 of 24 PAGEID #: 474
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`copyright protection to the entire compilation of 1986 Cards. Therefore, the Court cannot grant
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`summary judgment to USPC on the basis that Faessler’s work entered the public domain.
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`
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`2.
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`Substantial Similarity
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`In order to establish a claim of copyright infringement, a plaintiff must show that he or
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`she owns a copyrighted work and that the defendant copied it. See Kohus v. Mariol, 328 F.3d
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`848, 853 (6th Cir. 2003). However, in most cases, there is no objective evidence of copying, so
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`courts “are forced to rely on the inferences which may be drawn from two basic facts: access and
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`similarity.” Murray Hill Publ’ns, Inc., 361 F.3d at 316 (quoting Glanzman v. King, 8
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`U.S.P.Q.2d 1594, 1595 (E.D. Mich. 1988)). In other words, “copying is an essential element of
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`infringement and substantial similarity between the plaintiff’s and defendants’ work is an
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`essential element of copying.” Id. (quoting Wickam, 739 F.2d at 1097).
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`The Sixth Circuit has adopted a two-step approach for substantial similarity. Kohus, 328
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`F.3d 848. The first step is to “filter out the unoriginal, unprotectible elements–elements that
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`were not independently created by the inventor, and that possess no minimal degree of
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`creativity.” Id. at 855. Once the unprotectible elements have been filtered out, the second step is
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`to determine whether the allegedly infringing work is substantially similar to the protectible
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`elements of the original. Id. This requires the trier of fact to determine substantial similarity
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`from the perspective of the work’s target audience. Id. at 857. USPC makes numerous
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`arguments designed to undercut Faessler’s claim that USPC’s Patriotic Playing Cards are
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`substantially similar to his Military Playing Cards.
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`a. Idea Versus Expression and the Merger Doctrine
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`Two of USPC’s arguments against Faessler are closely related, and the Court will
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`consider them simultaneously. First, USPC argues that the “idea” of making playing cards
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`containing rank insignia for different branches of the military is not protectible. Second, USPC
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`argues that there is essentially only one way of assigning insignia to playing cards, and because
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`the idea and the expression of the idea “merge,” Faessler’s expression of the idea is not
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`protectible. Faessler, in response, asserts that he is not seeking protection of the “idea” of using
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`military insignia as a card design but rather his particular “expression” of military-theme playing
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`cards. He further asserts that there is no merger of idea and expression in the Subject Works
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`because there are many military themes and, even assuming a military insignia theme, there are a
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`number of possible arrangements of insignia to correspond to a card’s value.
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`USPC is correct that Faessler’s idea of making playing cards that use military rank
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`insignia is not protectible. “Ideas ...as distinguished from the particular manner in which they
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`are expressed or described in a writing,” are not subject to copyright protection. 37 C.F.R. §
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`202.1(b). Furthermore, when an idea and its expression are inseparable, “copying the
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`‘expression’ will not be barred, since protecting the ‘expression’ in such circumstances would
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`confer a monopoly of the ‘idea’ upon the copyright owner.” Herbert Rosenthal Jewelry Corp. v.
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`Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (holding that the defendant was not barred from
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`copying the expression of plaintiff’s copyrighted bee pin when the idea of the bee and its
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`expression were indistinguishable). In cases that involve functional rather than creative objects,
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`a court must eliminate those elements dictated by efficiency. Kohus, 328 F.3d at 856. “To this
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`end, the merger doc