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Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
` Civil Action No. H-05-2027
`
`§§§§§§§§§§
`
`MICHAEL H. PHAM,
`
` Plaintiff,
`
`v.
`
`RAYMOND JONES, JR.,
`
` Defendant.
`
`ORDER
`
`Pending before the Court is Plaintiff Michael H. Pham’s Motion for Summary
`
`Judgment (Instrument No. 20). Having considered the motion, submissions, and
`
`applicable law, the Court determines that the motion should be granted in part and
`
`denied in part.
`
`BACKGROUND
`
`Plaintiff Michael H. Pham (“Pham”) filed the instant action alleging copyright
`
`infringement under federal law and unfair practices and competition under Texas law.
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`Pham and Defendant Raymond Jones Jr. (“Jones”) are both licensed attorneys who
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`practice criminal defense law. Pham finds prospective clients through Harris County
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`public arrest records, and mails them a form letter and brochure informing them of their
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`rights and options as well as of his legal services. Pham alleges he has followed this
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 2 of 13
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`method to solicit clients since February 2001 and that he owns copyrights, which he
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`obtained in May 2005, for the letter and brochure. Pham asserts that in April 2005,
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`Jones began using an almost identical letter and brochure in order to solicit prospective
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`clients and argues such use violates federal copyright law and Texas common law.
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`Following a June 13, 2005 hearing, this Court issued a temporary restraining
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`order restricting Jones’s use of the letter and brochure. Subsequently, the parties
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`agreed upon a preliminary injunction that forbid Jones from using the letter and
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`brochure. On September 16, 2005, Pham moved for summary judgment on his claims.
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`Jones did not respond to the motion.
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`STANDARD OF REVIEW
`
`Jones’s response in opposition was due October 6, 2005, and he failed to
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`respond to the Pham’s motion. Rule 56(e) requires the party against whom a summary
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`judgment motion is made to “set forth specific facts showing that there is a genuine
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`issue for trial.” FED. R. CIV. P. 56(e). Absent such a response, a properly supported
`
`motion for summary judgment should be granted. Eversly v. MBank Dallas, 843 F.2d
`
`172, 174 (5th Cir. 1988). Failure to respond will be taken as a representation of no
`
`opposition. S.D. TEX. LOCAL R. 7.4. However, the mere fact that no opposition is
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`filed does not excuse the moving party from meeting its burden on the summary
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`2
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 3 of 13
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`judgment motion. E.g., John v. La. Bd. of Trs. for State Colls. & Univs., 757 F.2d 698,
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`709 (5th Cir. 1985). Thus, the Court will determine whether Pham has met his burden
`
`for summary judgment on his both his federal and state claims.
`
`ANALYSIS
`
`Pham asserts that Jones copied his letter and brochure in violation of the
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`Copyright Act, 17 U.S.C §§ 101 et seq. (2000) (“Act”). The Act provides copyright
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`protection for “original works of authorship fixed in a tangible medium of expression,”
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`including literary works. § 102(a)(1); see La Resolana Architects, PA v. Clay Realtors
`
`Angel Fire, 416 F.3d 1195, 1198 (10th Cir. 2005) (discussing the history of federal
`
`copyright law). Copyright protection, designed “to promote the Progress of Science
`
`and useful Arts,” gives authors the exclusive right to use, publish or sell their work.
`
`See U.S. CONST. art. I., § 8, cl. 8. A copyright is intended to encourage authors to
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`share their works with the public by giving them protections from unauthorized copying
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`of their expressions. See generally § 106; Sony Corp. of Am. v. Universal City
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`Studios, 464 U.S. 417, 432-34 (1984).
`
`To establish a claim for copyright infringement, the plaintiff must prove (1)
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`ownership of a valid copyright; and (2) legally actionable copying of original elements
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`of the work by the defendant. See Positive Black Talk, Inc. v. Cash Money Records,
`
`Inc., 394 F.3d 357, 367 (5th Cir. 2004); Plains Cotton Coop. Ass’n of Lubbock, Texas
`
`3
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 4 of 13
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`v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1260 (5th Cir. 1987); Miller v.
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`Universal City Studios, 650 F.2d 1365, 1375 (5th Cir. 1981). The ownership element
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`of copyright infringement is demonstrated by “proof of originality, copyrightability, and
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`compliance with applicable statutory formalities.”1 Apple Barrel Prods., Inc. v. R.D.
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`Beard, 730 F.2d 384, 387 (5th Cir. 1984).
`
`A. Copyright Infringement
`
`1. Copyright ownership
`
`Pham claims copyright ownership with respect to his client solicitation letter and
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`brochure. In order to obtain a copyright, a person must submit an application, deposit,
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`and fee to the Register of Copyrights. See generally 17 U.S.C. § 408 (2000). The
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`Register then examines each application to ensure it has been properly completed and
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`that the material is copyrightable. § 410(a). Upon the Register’s determination that
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`these requirements are met, the applicant’s copyright will be registered, and he or she
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`will receive a certificate of registration. Id. A certificate of registration, if obtained
`
`1 The Court notes that for copyright ownership and protection, only a minimal
`level of originality, novelty or creativity is required. See Feist Publ’ns, Inc. v. Rural
`Tel. Serv. Co., 499 U.S. 340, 345 (1991) (noting that “even a small amount [of
`creativity] will suffice”). Further, “a work may be original even though it closely
`resembles other works so long as the similarity is fortuitous, not the result of copying. Id.
`(observing that factual compilations may qualify for protection so long as they surpass the
`low originality threshold); see also Original Appalachian Artworks, Inc. v. Toy Loft, Inc.,
`684 F.2d 821, 824 (11th Cir. 1982).
`
`4
`
`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 5 of 13
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`within the first five years of the work’s publication, constitutes prima facie evidence
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`that the copyright holder retains all rights granted by copyright. See § 410(c); Cabrera
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`v. Teatro Del Sesenta, Inc., 914 F. Supp. 743, 745 n. 1 (D. P. R. 1995). Stated
`
`differently, a certificate of registration creates a rebuttable presumption of copyright
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`protection, shifting the burden to the defendant to proffer evidence as to why the
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`copyright is invalid. See Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th
`
`Cir. 1995); DSC Commc’ns Corp. v. DGI Techs., Inc., 898 F. Supp. 1183, 1187 (N.D.
`
`Tex. 1995); Fin. Control Assocs., Inc. v. Equity Builders, Inc., 799 F. Supp. 1103,
`
`1115 (D. Kan. 1992).
`
`In the case at bar, Pham attached a copy of the certificate of registration for the
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`prospective client letter.2 Consequently, Pham has made a prima facie showing that his
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`letter is “a proper subject for copyright protection, that the statutory formalities of
`
`registration have been satisfied, and that [he] is the owner of the copyright.” See
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`Midway Mfg. Co. v. Dirkschneider, 571 F. Supp. 282, 284 (D. Neb. 1983). Because
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`of the statutory presumption, the burden shifts to Jones to challenge Pham’s copyright
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`ownership. See Cabrera, 914 F. Supp. at 745 n.1 (referencing several cases about the
`
`burden shifting that occurs when a copyright plaintiff obtains a certificate of
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`2 According to the certificate of registration, the effective date of Pham’s
`copyright for the letter is May 23, 2005. The Court notes Pham received the copyright
`within five years of the date of the first publication of the letter.
`
`5
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 6 of 13
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`registration). Jones has not challenged the validity of Pham’s copyright. Accordingly,
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`the Court determines Pham has provided sufficient, uncontroverted evidence that he
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`owns a copyright in the letter to establish the first element of an infringement claim.
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`See Apple Computer, Inc. v. Microsoft Corp., 759 F. Supp. 1444, 1454 (N.D. Cal.
`
`1991) (noting that “the presumptive validity of a certificate of registration may be
`
`resolved on summary judgment”); Childers v. High Soc’y Magazine, 557 F. Supp. 978,
`
`983 (S.D.N.Y. 1983) (stating the plaintiff’s certificate of registration established his
`
`right to summary judgment “unless defendants can put the factual underpinnings of the
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`copyright in issue”).
`
`Pham argues he has presented sufficient evidence to establish a prima facie case
`
`of valid copyright ownership of the brochure. Though he has not yet received a
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`certificate of registration, Pham contends he only is required to prove that the Copyright
`
`Office has received his application, a copy of the brochure, and the requisite application
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`fee before bringing suit for copyright infringement. He has submitted evidence that the
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`brochure registration is complete. Jones has adduced nothing to challenge Pham’s
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`assertions of copyright ownership. The Court determines that Pham has presented
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`sufficient, uncontested evidence of valid copyright ownership of his brochure. See
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`Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991) (determining that
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`plaintiff’s submission of the required materials for registration–even before the receipt
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`6
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 7 of 13
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`of a formal certificate of registration–was sufficient to establish ownership); Apple
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`Barrel Prods., 730 F.2d at 386-87 (same).3
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`2. Copying by Jones
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`To establish the second element of copyright infringement, Pham must
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`demonstrate actionable copying of his work by Jones. Generally, copying is
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`demonstrated through proof that “the defendant had access to the copyrighted material
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`and that there is a ‘substantial similarity’ between the two works.” Allied Mktg. Group
`
`v. CDL Mktg., 878 F.2d 806, 811 (5th Cir. 1989) (citing Apple Barrel Prods., 730 F.2d
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`at 387 n. 3). Plaintiffs may prove copying with either direct or circumstantial evidence.
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`Brigmon v. Array Sys. Corp., 325 F.3d 572, 576 (5th Cir. 2003). Because direct
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`evidence is often difficult to find, copying may be inferred with circumstantial evidence
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`if such evidence shows (1) the defendant had access to the copyrighted work and (2)
`
`there is a substantial similarity between the copyrighted work and the alleged copy.
`
`Id.; see also Peel & Co., Inc. v. The Rug Market, 238 F.3d 391, 394 (5th Cir. 2001);
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`Plains Cotton, 807 F.2d at 1260.
`
`To determine whether the alleged infringer had access to the work, courts
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`3 There is a split of authority about whether an author must have received a
`certificate of registration before being able to sue for copyright infringement. La
`Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-05 (10th Cir.
`2005). However, the law in the Fifth Circuit is clear: An author may sue upon proof that
`he or she has submitted the registration application, fee, and the material proposed for
`copyright to the Register of Copyrights. Id. at 1203-05.
`
`7
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 8 of 13
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`consider whether he or she “had a reasonable opportunity to view the copyrighted
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`work.” Peel, 238 F.3d at 394 (noting that speculation, conjecture or “a bare
`
`possibility” that the alleged infringer had a reasonable opportunity to view the work is
`
`insufficient to show access). In the instant case, Pham has not proffered evidence,
`
`either direct or circumstantial, that Jones had access to either the letter or the brochure.
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`Instead, he avers that the Court should infer access because the two letters and
`
`brochures are so much alike. Consequently, Pham argues that the similarities between
`
`the letters and brochures are sufficient for him to establish actionable copying by Jones
`
`and to succeed at the summary judgment stage.
`
`In the Fifth Circuit, even absent evidence of access, a plaintiff may still establish
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`a case of copying if he or she “showed that the two works were not just substantially
`
`similar, but were so strikingly similar as to preclude the possibility of independent
`
`creation.” Id. at 395; Ferguson v. Nat’l Broad. Co., Inc., 584 F.2d 111, 113 (5th Cir.
`
`1978). Further, when considering whether a copyright infringement plaintiff has
`
`surpassed the substantial similarity requirement, courts within the Fifth Circuit must
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`engage a side-by-side comparison between the original and the copy to determine
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`whether there is a substantially similarity between the two works. Brigmon, 325 F.3d
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`at 577; Peel, 238 F.3d at 395. Consequently, the Court will examine the contents of
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`both Pham’s and Jones’s letter and brochure line by line to determine whether access
`
`8
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 9 of 13
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`may be inferred and a substantial similarity exists.
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`a) The Solicitation Letter. Both letters include the attorneys’ letterhead
`
`information at the top. Jones’s letter next lists the name and address of the prospective
`
`client to whom he ostensibly mailed a copy of the letter. From that point until the
`
`letters conclude, all but two of the words on the page are identical. Both letters
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`substantively begin with a boxed statement informing potential clients their names were
`
`obtained from county arrest records. Next, both lawyers’ letters contain the following
`
`text:
`
`LET ME HELP YOU. You have been arrested and now, you
`are probably wondering what is going to happen with your
`case. The District Attorney’s office will prosecute you to the
`fullest extent of the law. If convicted, you may be fined
`and/or imprisoned.
`
`The letters then explain the options available, such as dismissal, a fine or
`
`deferred adjudication. Both letters list those options using all capital letters and bullet
`
`points.4 They continue with the same statement, “I am an Experienced and
`
`Aggressive lawyer that will Fight for your Freedom.” The letters conclude with the
`
`same prices ranges for felony and misdemeanor crimes along with a statement about
`
`4 The Court notes that both letters contain the same list of possible options and
`outcomes to their cases other than jail time. Also, both contain explain deferred
`adjudication as “a way to keep you from going to jail and to prevent you from having a
`criminal conviction on your record.”
`
`9
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 10 of 13
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`obtaining a free consultation. With the exception of Pham charging fees within a
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`certain price range for “most” misdemeanor and felony cases and Jones charging within
`
`the same price range for “many” misdemeanors and felonies, the contents of the letters
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`are virtually the same. The Court determines that it can infer through the letters’
`
`“striking similarities” that Jones had access to Pham’s letter because “[i]n virtually
`
`every detail,” his letter is identical to Pham’s. See Midway Mfg., 571 F. Supp. at 285;
`
`see also Testa v. Janssen, 492 F. Supp. 198, 203 (W. D. Pa. 1984) (noting that such
`
`similarities must be “of a kind that can only be explained by copying, rather than by
`
`coincidence, independent creation, or prior common source”). Further, “a reasonable
`
`observer, comparing the overall appearance of [the letter] could only conclude” that
`
`Jones copied Pham’s letter. Midway Mfg., 571 F. Supp. at 285. As such, the Court
`
`concludes that Jones’s letter is so substantially similar to Pham’s work that Pham has
`
`shown actionable copying by Jones. Consequently, Pham has established a prima facie
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`case of copyright regarding his solicitation letter. Id.
`
`b) The Brochure. Pham’s brochure, entitled “What You Should Know
`
`About Criminal Law,” presents prospective clients with information about arrest and
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`prosecution, including punishment ranges for different offense categories. It then
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`explains his method of handling each case. Again, Jones’s brochure presents the same
`
`information in exactly the same way, including listing the same steps for handling a
`
`10
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`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 11 of 13
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`case. The only difference in any of the brochure wording is the title of one section: in
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`Pham’s brochure, the section is labeled “How I Handle All Cases”; in Jones’s the same
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`words follow his title, “How Each Case Is Worked.” Both brochures also contain the
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`following section:
`
`WHO IS ON YOUR TEAM
`
`Ever since your arrest, the Police, complainant and District Attorney’s
`office have procured evidence vital to your case.
`
`Contacting me now, you will have an attorney representing your
`interests and allow us to preserve evidence which is crucial to the
`proper handling of your case.
`
`I know that this is personally a difficult situation in your life. Your
`Freedom and Liberty are at risk. That is why I have set reasonably
`fair rates for quality legal representation.5
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`The Court determines that because the two brochures are nearly identical, the
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`Court can infer that Jones had access to Pham’s brochure. See Midway Mfg., 571 F.
`
`Supp. at 285. Further, there is more than a substantial similarity between the two
`
`letters. In fact, an overwhelming majority of the contents of Pham’s brochure appears
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`verbatim in Jones’s. See Fin. Control, 799 F. Supp. at 1115 (stating “[t]he clearest
`
`example of copying is of course a verbatim usurpation of another’s work,” which
`
`5 The Court notes that even the small graphic chosen for this section is the same in
`both brochures. However, the scales of justice graphics on the front of the brochures are
`different.
`
`11
`
`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 12 of 13
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`infringes upon a valid copyright); Saenger Org. , Inc. v. Nationwide Ins. Licensing
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`Assocs., Inc., 864 F. Supp. 246, 249 (D. Mass. 1994) (noting that because both sides
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`agreed that much of the language in an original work and an allegedly infringing one
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`were the same, plaintiff was likely to win a copyright suit); see also Feist, 499 U.S.
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`at 348 (observing that compilations that “contain absolutely no protectible written
`
`expression, only facts, meets the constitutional minimum for copyright protection if it
`
`features an original selection or arrangement”). Pham also has established the copying
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`element for the brochure necessary to a prima facie case of copyright infringement.
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`Accordingly, because he has established the required elements for copyright
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`infringement, the Court determines as a matter of law that Jones has infringed upon
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`Pham’s copyrights in the letter and brochure.
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`Pham requests that the Court award him several types of damages, including any
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`profits attributable to the infringement. However, he neither proposes specific
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`amounts for each category he seeks nor presents evidence to demonstrate that there
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`is no genuine issue of material fact regarding the amount of damages, if any, to which
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`he is entitled. Thus, the Court sets for trial the issue of copyright infringement
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`damages.
`
`B. Unfair Trade Practices and Competition
`
`Pham moves for summary judgment on his state law claims of unfair trade
`
`12
`
`

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`Case 4:05-cv-02027 Document 33 Filed in TXSD on 12/23/05 Page 13 of 13
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`practices and competition. However, he presents nothing more than his conclusory
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`allegations that Jones’s actions constitute unfair trade practices and competition in
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`violation of Texas law in support of his motion. Because a conclusory allegation is
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`insufficient to demonstrate that no genuine issue exists for trial, the Court denies his
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`motion for summary judgment on these state law claims. Accordingly the Court
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`hereby
`
`ORDERS that Pham’s Motion for Summary Judgment (Instrument No. 20) is
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`GRANTED IN PART and DENIED IN PART. Summary judgment is GRANTED
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`as to Pham’s copyright infringement claims regarding his letter and brochure.
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`However, because the Court determines genuine issues of material fact exist, the
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`motion is DENIED as to Pham’s claims for damages for the infringements. The Court
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`further ORDERS that summary judgment is DENIED on Pham’s state law claims for
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`unfair practices and competition. The Court further ORDERS all other requested
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`relief not granted herein is DENIED.
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`SIGNED at Houston, Texas, on this 23rd day of December, 2005.
`
`__________________________
`
`DAVID HITTNER
`
`United States District Judge
`
`13

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