Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 1 of 22
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`OLDCASTE PRECAST, INC.,
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`CASE NO. C10-322 MJP
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`v.
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`Plaintiff,
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`GRANITE PRECASTING &
`CONCRETE, INC.,
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`Defendant.
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`ORDER ON PLAINTIFF’S AND
`DEFENDANT’S MOTIONS FOR
`SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR
`LEAVE TO AMEND
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`This matter comes before the Court on three motions: (1) Defendant’s motion for
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`summary judgment on Plaintiff’s claims (Dkt. No. 42.); (2) Plaintiff’s motion for leave to amend
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`(Dkt. No. 47); and (3) Plaintiff’s motion for summary judgment on Defendant’s counterclaim
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`(Dkt. No. 49.) Having reviewed the motions, the responses (Dkt. Nos. 52, 54, 62), the replies
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`(Dkt. Nos. 63, 65, 67), Plaintiff’s surreply (Dkt. No.70), and all related papers the Court: (1)
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`DENIES in part and GRANTS in part Defendant’s motion; (2) GRANTS Plaintiff’s motion to
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`amend; and (3) GRANTS Plaintiff’s motion for summary judgment.
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 1
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 2 of 22
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`A.
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`Facts Relevant to Summary Judgment Motions
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`Background
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`Plaintiff and Defendant manufacture concrete precast vaults and other concrete offerings.
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`Plaintiff began its operations in the 1960s and has “established itself as a leader in the market for
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`precast concrete vaults.” (Venn Decl. ¶ 8; Schack Decl. ¶¶ 5, 11.) Defendant is a competitor
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`with Plaintiff, and it designs and manufactures precast products in Bellingham, Washington.
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`(Salisbury Decl. ¶¶ 3, 4-5.) Plaintiff filed suit against Defendant, alleging that Defendant has
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`copied and used various technical drawings Plaintiff created of its precast offerings. Plaintiff
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`originally pursued a Copyright Act claim, a Lanham Act claim, a breach of implied convenant
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`claim, and several other state law claims. The Court dismissed all of the state law claims except
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`the breach of implied covenant claim. (Dkt. No. 23.)
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`In 2006, Plaintiff became aware that Defendant was using drawings that were similar to
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`certain technical drawings Plaintiff had created. (Venn Dep. at 50, 55-56.) Plaintiff notified
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`Defendant of the purported copying, and after the two parties met Defendant agreed to change 12
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`sets of its drawings. (Venn Dep. Exs. 4, 5; Salisbury Decl. at 5; Salisbury Dep. Exs. 4, 5.) The
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`parties exchanged letters and a proposed settlement agreement. (Id.) Defendant never signed the
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`agreement, and Plaintiff did not pursue the matter. (Am. Compl. ¶ 16; Venn Dep. at 88.)
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`Plaintiff’s president, Gary Venn, monitored Defendant’s website throughout 2007-2009, and
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`noted the continued use of only one product he believed to be infringing. (Venn. Dep. at 86-88,
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`156.) Except as to one drawing, Venn believed Defendant had complied with the parties’
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`unsigned agreement. However, at “sometime during the spring or summer of 2007,” Venn
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`claims that he learned that Defendant failed to change all of its drawings and product numbers.
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`(Venn Decl. ¶ 11.)
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 2
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 3 of 22
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`Nearly two years later, in 2009, Plaintiff learned that Defendant submitted a bid for a
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`project for Seattle City Light in Shoreline in which Defendant used drawings to that Plaintiff
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`believed infringed on its copyright. (Venn Decl. ¶ 11.) Plaintiff filed suit on February 24, 2010.
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`Defendant now moves for summary judgment as to Plaintiff’s claims on the basis of the statute
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`of limitations, the statute of frauds, and on the merits of the Copyright and Lanham Act claims.
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`(Dkt. No. 42.) After Defendant filed its motion for summary judgment, Plaintiff also filed a
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`motion for summary judgment, seeking dismissal of Defendant’s counterclaim of copyright
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`misuse. (Dkt. No. 49.) Plaintiff argues that the counterclaim is only an affirmative defense, not
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`a counterclaim.
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`B.
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`Facts Relevant to the Motion to Amend
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`Six days after Defendant filed its motion for summary judgment, Plaintiff filed a motion
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`to amend its complaint. (Dkt. No. 47.) Plaintiff alleges that it found new evidence during
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`discovery necessitating certain limited amendments.
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`When Plaintiff filed its first amended complaint on April 22, 2010, it alleged that
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`Defendant downloaded drawings Plaintiff created in electronic format (either PDF or AutoCAD),
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`and used them to create its infringing drawings. (Am. Compl. ¶ 18.) Plaintiff’s drawings are
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`subject of a registered copyright, TX-4-684-742. During a deposition of Defendant’s witnesses
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`in the week of September 13, 2010, Plaintiff claims it learned for the first time that Defendant
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`copied different drawings not downloaded from the website. Instead, Plaintiff believes
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`Defendant copied much older vault drawings that Seattle City Light gave to Defendant that were
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`originally produced and published by Plaintiff’s predecessor, Concrete Conduit Company
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`(“CCC”). (Dkt. No. 47 at 3-4.)
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 3
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 4 of 22
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`According to Plaintiffs, the copyright registrations for the drawings from CCC were
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`registered in 1970 under the Copyright Act of 1909, not the Copyright Act of 1976 (under which
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`the TX-4-684-742 registration was made). Venn alleges that it took him four weeks of
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`inspecting his company’s records to find the earliest publication of the drawings Seattle City
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`Light gave to Defendant. (Venn Decl. ¶ 3 (Dkt. No. 48).) It appears that in early October,
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`Plaintiff spent 3 weeks preparing the renewal registration and supplementing the registration of
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`copyright TX-4-684-742. (Id. ¶ 4.) Plaintiff made its submission to the U.S. Copyright Office
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`on November 22, 2010. (Id.) The Office granted the renewal and supplemental registrations on
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`December 9, 2010. (Id. ¶ 5.) Plaintiff filed for leave to amend on December 22, 2010, six days
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`after Defendant moved for summary judgment on all of Plaintiff’s claims. (Dkt. Nos. 42, 47.)
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`Of note, discovery ended on November 26, 2010, the dispositive motion deadline was December
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`27, 2010, and trial is currently set for April 25, 2010. (Dkt. No. 18.)
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`Plaintiff’s proposed second amended complaint changes the allegations as to how
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`Defendant obtained Plaintiff’s drawings. (Dkt. No. 47-1 at ¶ 18.) It also changes the allegations
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`as to which U.S. Copyright registrations are at issue. (Id. ¶ 9.) The other allegations appear to
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`be unchanged.
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`Analysis
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`The Court addresses the pending motions in the following order: (1) Defendant’s motion
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`for summary judgment; (2) Plaintiff’s motion for summary judgment; and (3) Plaintiff’s motion
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`for leave to amend.
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`A.
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`Defendant’s Motion for Summary Judgment
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`Summary judgment is proper when the moving party has shown an entitlement to
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`judgment as a matter of law and there is an absence of genuine issues of material fact. Fed. R.
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 4
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 5 of 22
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`Civ. P. 56(c)(2). The underlying facts are viewed in the light most favorable to the party
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`opposing the motion. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
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`(1986). “Summary judgment will not lie if . . . the evidence is such that a reasonable jury could
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`return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
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`(1986). The party moving for summary judgment has the burden to show initially the absence of
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`a genuine issue concerning any material fact. Adickes v. S.H. Kress & Co., 398 U.S. 144, 159
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`(1970). However, once the moving party has met its initial burden, the burden shifts to the
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`nonmoving party to establish the existence of an issue of fact regarding an element essential to
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`that party’s case, and on which that party will bear the burden of proof at trial. Celotex Corp. v.
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`Catrett, 477 U.S. 317, 323-24 (1986). To discharge this burden, the nonmoving party cannot rely
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`on its pleadings, but instead must have evidence showing that there is a genuine issue for trial.
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`Id. at 324.
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`1.
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`Statute of Limitations as to Copyright Claim
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`As to only one drawing has Defendant successfully demonstrated that Plaintiff’s
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`Copyright claim is time-barred.
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`“A cause of action for copyright infringement accrues when one has knowledge of a
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`violation or is chargeable with such knowledge.” Roley v. New World Pictures, Ltd., 19 F.3d
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`479, 481 (9th Cir. 1994). “In copyright litigation, the statute of limitations issue that often arises
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`is that the plaintiff filed its copyright claim more than three years after it discovered or should
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`have discovered infringement.” Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 705-06
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`(9th Cir. 2004); 17 U.S.C. § 507(b). The Copyright Act “does not provide for a waiver of
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`infringing acts within the limitation period if earlier infringements were discovered and not sued
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`upon, nor does it provide for any reach back if an act of infringement occurs within the statutory
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 5
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 6 of 22
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`period.” Roley, 19 F.3d at 481 (quotation omitted). However, “[i]n a case of continuing
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`copyright infringements, an action may be brought for all acts that accrued within the three years
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`preceding the filing of the suit.” Id.
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`There is a dispute of fact as to whether the majority of Plaintiff’s Copyright claims are
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`barred by the statute of limitations. Plaintiff learned in 2006 that Defendant had infringed on at
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`least 12 sets of drawings, but did not file suit. (Radcliffe Decl. at 14-15.) Instead, Plaintiff
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`obtained an oral promise from Defendant not to use the drawings any more, and assumed
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`Defendant ceased its conduct. (Venn Dep. at 86-87.) Plaintiff’s president, Gary Venn, claims he
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`monitored Granite’s website from 2007 through 2009 and saw only one drawing that failed to
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`change. (Venn Dep. at 85, 88-89.) This supports Plaintiff’s contention that it could not have
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`found out about the infringing conduct through diligent research three years prior to filing of the
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`complaint, given that it appeared to have performed such research. This is somewhat
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`confounded by Venn’s testimony that he knew Defendant never changed the infringing drawing
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`of a three-sided bridge, but did not follow up on getting any agreement signed. (Id. 87-88.) Yet
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`Venn maintains that at some time during the spring or summer of 2007 (likely within the statute
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`of limitations), he discovered that Defendant had not changed its other drawings. (Venn Decl. ¶
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`11 (Dkt. No. 56 at 3).) Whether Plaintiff should have known earlier is an issue for the jury.
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`Given the record presented, the Court DENIES Defendant’s motion on this issue.
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`However, the undisputed facts do show that Plaintiff is barred from pursuing any copyright claim
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`as to its three-sided bridge drawing. It knew of the purported infringement of this drawing in
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`2006 through 2007 and failed to file suit in a timely manner. (Venn Dep. at 85, 88-89.)
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`Defendant’s motion on this issue is GRANTED and the Copyright claim related thereto is
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`DISMISSED.
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 6
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 7 of 22
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`2.
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`Statute of Limitations as to the Lanham Act Claim
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`Plaintiff moves for dismissal of Plaintiff’s Lanham Act claim on the theory it is time-
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`barred. The claim is untimely only as to the three-sided bridge drawing.
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`The Lanham Act has no express statute of limitations. The Court therefore looks to the
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`limitations of the closest analogous limitation from statue law. The closest analogous cause of
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`action in state law is Washington’s common law tort of trade name infringement. See Jonathan
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`Neil & Assocs., Inc. v. JNA Seattle, Inc., No. C06-1455JLR, 2007 WL 788354, at *6 (W.D.
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`Wash. Mar. 14, 2007). Such claims have a three year statute of limitations. RCW 4.16.080(2).
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`To the extent that Plaintiff knew of the lack of change to the three-sided bridge drawing
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`on Granite’s website, its Lanham Act claim is time-barred. Plaintiff knew in 2006 that the
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`drawing did not change, yet it took no action until 2010. Plaintiff’s Lanham Act claim related to
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`this drawing is time-barred. The Court GRANTS Defendant’s motion on this claim and
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`DISMISSES the claim. As to the other drawings, the Court DENIES the motion. As explained
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`above, a genuine issue of material fact precludes summary judgment.
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`The record remains unclear as to whether the Lanham Act claim based on Defendant’s
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`use of similar product numbers is time-barred. Plaintiff alleges Defendant caused confusion in
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`the market in violation of 15 U.S.C. § 1117 by parroting its product numbering system. Venn
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`was aware that as of December 22, 2006, Defendant had not changed at least part of its
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`numbering system. (Salisbury Dep. Ex. 6.) However, it is unclear from the record whether
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`Defendant changed the system for some period of time on its website that Venn monitored or
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`whether Plaintiff should have known that the numbering remained the same. The questions
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`posed to and answered by Venn at his deposition are insufficiently clear a basis on which the
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`Court might grant summary judgment. The Court DENIES the motion on this issue.
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 7
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 8 of 22
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`3.
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`Statute of Frauds
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`Defendant argues that Plaintiff’s breach of implied covenant is barred by the statute of
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`frauds. The Court agrees.
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`Washington law requires that any contract that “by its terms is not to be performed in one
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`year from the making thereof” must be in writing. RCW 19.36.010. “The general rule is that a
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`verbal agreement to put in writing a contract which will require more than a year to be performed
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`is within the statute of frauds and thus unenforceable.” Klinke v. Famous Recipe Fried Chicken,
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`Inc., 24 Wn. App. 202, 205 (1979), aff’d, 94 Wn.2d 255 (1980). However, “[a] contract
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`requiring continuing performance fails to specify the intended duration is terminable at will and
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`is therefore outside of the statute of frauds.” Duncan v. Alaska USA Fed. Credit Union, Inc.,
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`148 Wn. App. 52, 73 (2008).
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`The oral agreement between Defendant and Plaintiff in 2006 required Defendant to
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`change its drawings and to agree to “forever cease and desist from any actions or omissions that
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`infringe, violate or misappropriate” Plaintiff’s intellectual property. (Dep. Ex. 5.) The
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`agreement thus required performance of the contract, i.e., forebearance, in perpetuity. While
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`initial conformity with the agreement could have commenced in 2006, the agreement required
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`continuing performance well beyond one year. See Klinke, 24 Wn. App. at 205. Because the
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`agreement specified that it was to endure “forever,” it is not an at-will agreement that is outside
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`the statute of frauds. See Duncan, 148 Wn. App. at 73. Having not been reduced to a signed,
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`written document, the agreement violated the statute of frauds. Plaintiff’s breach of implied
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`covenant claim arising out of the contract is thus barred. The Court notes that Plaintiff made no
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`response to Defendant’s argument on this issue, perhaps an admission it has merit. The Court
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 8
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 9 of 22
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`DISMISSES Plaintiff’s claim for breach of implied covenant and GRANTS Defendant’s motion
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`on this claim.
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`4.
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`Copyright Claim
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`Defendant presents several attacks to whether the works in question are copyrightable.
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`None of the attacks has merit.
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`a.
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`Scope of Protection
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`The Court must first determine “the scope of copyright protection before works are
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`considered as a whole.” Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir.
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`1994) (quotation omitted). Plaintiff bears the burden to identify the source of the alleged
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`similarities. Id. “Copyright law only protects expression of ideas, not the ideas themselves.”
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`Cavalier v. Random House, Inc., 297 F.3d 815, 823 (9th Cir. 2002). “The copyright is limited to
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`those aspects of the work-termed ‘expression’-that display the stamp of the author's originality.”
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`Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547 (1985). “[S]imilarities
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`derived from the use of common ideas cannot be protected; otherwise, the first to come up with
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`an idea will corner the market.” Apple, 35 F.3d at 1443. For example, in Apple, the Ninth
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`Circuit held that Apple could not copyright a graphical user interface (i.e., the desktop) because
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`it was merely an idea, not an expression of the idea.
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`Plaintiff has properly identified the source of the similarities in the drawings as being
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`based on the expression of an idea, not the idea itself. Plaintiff claims that Defendant has copied
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`its drawings of certain utility vaults from its catalog. The drawings are technical drawings of
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`specific objects Plaintiff manufactures, and technical drawings are expressly included as works
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`covered by the Act. 17 U.S.C. §§ 101, 102(a)(5). They are expressions of an idea: a utility
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`vault, for example. Plaintiff is not claiming that it has a copyright for all precast utility vaults, as
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 9
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 10 of 22
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`Apple did with regard to the concept of a computer desktop metaphor. The claim is made only
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`as to technical drawings, which are particular expressions of various ideas of precast items.
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`Defendant confuses the works Plaintiff claims are copyrighted in order to attack the
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`application of the Copyright Act. Defendant argues that Plaintiff’s technical drawings cannot be
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`copyrighted because they all relate to “unprotectable similarities in ideas, not in expression.”
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`(Dkt. No. 42 at 13 (emphasis in original).) Unlike the plaintiff in Apple, Plaintiff here is not
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`seeking copyright protection for a concept, such as a concrete vault or a desktop metaphor.
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`Rather, Plaintiff seeks protection of a specific drawing that contains details about size, placement
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`and location of various features of the vault it may later create. Defendant has not shown that
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`Plaintiff is seeking protection that is improper under the Act.
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`Defendant also argues that Plaintiff’s drawings are not copyrightable because they have
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`an intrinsic utilitarian function and are therefore unprotectable “useful articles.” This is
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`incorrect. The Copyright Act defines a “useful article” as “an article having an intrinsic
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`utilitarian function that is not merely to portray the appearance of the article or to convey
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`information.” A technical drawing, however, is created precisely to “convey information,” hence
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`it is not a useful article. Indeed, § 101 of the Act defines technical drawings as being a
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`“pictorial, graphic, and sculptural work,” which are expressly protected by the Act in § 102. In
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`making its erroneous point, Defendant relies on two inapposite cases. First, Defendant cites Ets-
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`Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000), for the proposition that a work that is
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`purely utilitarian and function is not copyrightable. Yet the court there considered a vodka bottle
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`itself, not a technical drawing of a bottle. Second, Defendant cites Fabrica Inc. v. El Dorado
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`Corp., 697 F.2d 890 (9th Cir. 1983), for the proposition that utilitarian objections cannot be
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`copyrighted. As was the case in Ets-Hokin, the court in Fabrica was faced with a dispute over an
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 10
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 11 of 22
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`actual object, not a drawing of one. Defendant’s argument is a red herring, and the Court
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`declines to follow it.
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`b.
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`Substantial Similarity
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`To determine whether a work has been impermissibly copied, Plaintiff must show both
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`access to the copyrighted material and substantial similarity between the copyrighted work and
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`the alleged infringing work. Entm’t Research Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d
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`1211, 1217 (9th Cir. 1997). Where a high degree of access is shown, the Ninth Circuit employs
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`the “inverse ratio rule” and “require[s] a lower standard of proof of substantial similarity.” Rice
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`v. Fox Broadcasting, Inc., 330 F.3d 1170, 1178 (9th Cir. 2003). Given Defendant’s admission
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`that Plaintiff’s works are widely known and accessible on the internet, access is very high. Thus
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`Plaintiff’s burden is somewhat lessened.
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`To determine whether two works are “substantially similar,” the Court applies a two-part
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`analysis-an extrinsic test and an intrinsic test. Funky Films, Inc. v. Time Warner Entm’t Co.,
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`462 F.3d 1072, 1077 (9th Cir. 2006). “At summary judgment, courts only apply the extrinsic test;
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`the intrinsic test, which examines an ordinary person’s subjective impressions of the similarities
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`between two works, is exclusively the province of the jury.” Id. “The extrinsic test is an
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`objective measure of the articulable similarities between the expressive elements of the works.”
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`Bach, 473 F. Supp. 2d at 1138. The Court examines “the similarities between the copyrighted
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`and challenged works and then determine[s] whether similar elements are protectable or
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`unprotectable.” Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913 (9th Cir. 2010). Thus, if
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`the Court finds Plaintiff to have satisfied the extrinsic test, it must submit the matter to a jury to
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`decide the intrinsic test.
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 11
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 12 of 22
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`The main dispute between the parties is over the similarities in the vaults depicted in
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`Plaintiff’s drawings and Defendant’s drawings. As an example, Plaintiff compares its drawing
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`of a vault called “814-LA” to Defendant’s drawing of its vault, called the “8x14 Seattle
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`Electrical Vault.” Plaintiff’s expert states that there are 45 similarities in the size, scale, and
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`dimensions of the vaults depicted, with 22 features being identical. (Gallup Decl. ¶¶ 4-5.) The
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`features of the vaults depicted show a great deal of similarity in the two objects. This is true of
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`Plaintiff’s 777-LA vault and Defendant’s 8x14 Seattle Electrical Vault. (Dkt. No. 54 at 16.)
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`Venn himself has noted 11 similarities in the size, location, and style of the features of these
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`vaults. (Dkt. No. 42 at 12.) Based on the information presented, the Court finds Plaintiff to have
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`shown adequate articulable similarities between the expressive elements of the drawings to
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`satisfy the extrinsic test.
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`Defendant argues incorrectly that “[t]he eleven categories of similarities alleged by
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`Oldcastle are all unprotectable similarities in ideas, not in expression.” (Dkt. No. 42 at 13
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`(emphasis in original).) These similarities all relate to the drawing’s expression of a particular
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`version of a precast utility vault. Plaintiff is not claiming protection for abstract ideas related to a
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`vault. Instead, Plaintiff is claiming that its drawing of particular vaults and Defendant’s
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`drawings of similar vaults, share certain similarities in expression of utility vaults. This satisfies
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`the extrinsic similarity test.
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`The Court therefore DENIES summary judgment. It is for the fact finder to apply the
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`intrinsic test to determine whether there is substantial similarity in violation of the Copyright
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`Act.
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`c.
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`Thin Coverage Argument
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 12
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 13 of 22
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`Defendant also argues that Plaintiff’s copyright protections, if any, are “thin” and that
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`they can only apply whether there is a “virtual identity” between Plaintiff’s and Defendant’s
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`drawings. (Dkt. No. 67 at 5.) The Court disagrees.
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`The Ninth Circuit has stated that where “there’s only a narrow range of expression (for
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`example), there are only so many ways to paint a red bouncy ball on blank canvas), the copyright
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`protection is ‘thin’ and a work must be ‘virtually identical to infringe.” Mattell, 616 F.3d at 914.
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`The court has also found thin protection for a glass-in-glass jellyfish sculpture, due to the narrow
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`range of expression. Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003).
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`Defendant presents only limited evidence that there is only a limited range of ways to
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`express the idea of a precast concrete vault. The crux of the argument relies on the conclusion
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`that Plaintiff’s drawings are the industry standard and that both Plaintiff’s and Defendant’s
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`customers base their request for specific vaults on Plaintiff’s drawings. Yet, Defendant’s own
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`briefing only shows that consumers of the vaults use Plaintiff’s drawings as a starting point (Dkt.
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`No. 42 at 4), not that they seek only vaults that are identical to the ones Plaintiff creates from its
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`drawings. Plaintiff has also shown that many of its competitors make drawings of vaults of
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`similar size and dimension to Plaintiff’s that possess sufficient visual differences to avoid any
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`infringement. (Dkt. No. 54 at 18-20.) More importantly, there is nothing inherent in the notion
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`of precast concrete vaults that limits their range of expression. They are not akin to a glass-in-
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`glass jellyfish sculpture, which has a limited range of expression. See Satava, 323 F.3d at 812.
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`The Court will not apply a narrowed copyright protection.
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`d.
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`Merger Doctrine
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 13
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 14 of 22
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`Defendant invokes the theory of merger to argue that Plaintiff’s drawings of the vaults is
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`inextricable tethered to the idea of the vault, such that Copyright protection cannot extend to the
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`drawings. Defendant is incorrect.
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`“When an idea and its expression are indistinguishable, or ‘merged,’ the expression will
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`only be protected against nearly identical copying.” Apple, 35 F.3d at 1444. The Ninth Circuit
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`found merger applicable to an icon shaped like a piece of paper where “the idea of an icon in a
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`desktop metaphor representing a document stored in a computer program can only be expressed
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`in so many ways.” Id. Put another way, “merger means there is practically only one way to
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`express an idea.” Apple Computer, Inc. v. Microsoft Corp., 799 F. Supp. 1006, 1021 (N.D. Cal.
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`1992).
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`Defendant argues that there is only one way to express the idea of a concrete vault
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`because customers who seek precast concrete vaults use Plaintiff’s drawings as the industry
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`standard. This does not satisfy the merger doctrine. Defendant has not shown that there is only
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`one way to express the idea of a precast concrete vault. Plaintiff, for example, has produced
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`three of its competitors’ drawings which clearly show precast concrete vaults that are similarly
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`sized, yet have quite different appearances from Plaintiff’s drawings. (Dkt. No. 54 at 19-20.)
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`The Court will not apply the merger doctrine.
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`e.
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`Scenes a Faire Doctrine
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`Defendant incorrectly invokes the scenes a faire (standard feature) doctrine.
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`Scenes a faire holds that when similar features in the item claimed to be copyrighted are
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`“‘as a practical matter indispensable, or at least standard, in the treatment of a given [idea],’”
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`they are treated like ideas and are therefore not protected by copyright.” Apple, 35 F.3d at 1144
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`(quoting Frybarger v. Int’l Bus. Machs. Corp., 812 F.2d 525 (9th Cir. 1987)). Under this
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 14
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 15 of 22
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`doctrine of, “‘expressions indispensable and naturally associated with the treatment of a given
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`idea are treated like ideas and are therefore not protected by copyright.’” Bach v. Forever Living
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`Prods. U.S., Inc., 473 F. Supp. 2d 1127, 1136 (W.D. Wash. 2007) (quoting Rice, 330 F.3d at
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`1175 (internal quotation marks omitted)). For example, in the context of a computer desktop
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`using multiple “windows,” there are only two ways of displaying them: overlapping or tiled.
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`One cannot copyright the idea of an overlapping window because of the scenes a faire doctrine.
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`However, the doctrine does not apply to the particular expression of how to present overlapping
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`windows. Apple, 35 F.3d at 1144.
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`The scenes a faire doctrine does not apply in this case. Plaintiff is not claiming copyright
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`protection for drawings that are the only drawings one can make of utility vaults. It is only
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`claiming copyright for certain specific expression of various vault formations. As Plaintiff has
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`shown, there are many expressions that one can make of a utility vault, even ones that meet
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`certain overall dimensions requested by a third-party. (Dkt. No. 54 at 18-20.) That is, one can
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`draw a fifteen foot by seven foot utility vault with three levels and certain interior features
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`without having the drawing be identical to the Plaintiff’s drawing. (See id. at 19.) Defendant
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`claims that customers demand that bids include drawings “equal to” Plaintiff’s drawings. (See
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`Dkt. No. 42 at 4 (citing Jacobs Dep. at 34-38).) This does not show that all drawings of vaults
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`must be essentially identical to Plaintiff’s. Rather, as Plaintiff has shown, one can draw a vault
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`that has meets the equivalent specifications of one of Plaintiff’s drawings without the depicted
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`objects being substantially similar. The Court does not find the scenes a faire doctrine applicable
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`to this claim.
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`5.
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`Lanham Act Claim
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`ORDER ON PLAINTIFF’S AND DEFENDANT’S
`MOTIONS FOR SUMMARY JUDGMENT AND
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND- 15
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`Case 2:10-cv-00322-MJP Document 73 Filed 03/02/11 Page 16 of 22
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`Defendant correctly argues that Plaintiff’s trade dress Lanham Act claim must be
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`dismissed for lack of evidence. Plaintiff fail