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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Mist-On Systems, Inc. v. Gilley's European Tan Spa, et al.

Civ. 02-C-0038-C (W.D. Wis., May 2, 2002)

Court granted defendants' motion for summary judgment and dismissed copyright infringement claim brought by plaintiff, who asserted that defendants had copied a series of FAQs (Frequently Asked Questions) found on plaintiff's website.  The court held that a comparison of the parties' respective FAQs did not support plaintiff's contention of copying.  While there were similarities between the FAQs, they arose from the fact that the parties each created their FAQs to answer factual questions about their respective tanning products, which were themselves similar.  These similarities were not the product of copying.  As neither the ideas and facts presented in these FAQs nor the FAQ format itself could be copyrighted, plaintiff's copyright infringement claim failed.  The balance of plaintiff's claims - unfair competition and trademark infringement arising from the same alleged copying - were dismissed on preemption grounds.

Plaintiff and defendants are competitors who each use the Internet to promote 'spray on' tanning facilities they operate.  Each of the parties' respective web sites features an FAQ describing the parties' respective tanning processes.  Claiming that defendants' copied its FAQ, plaintiff brought this suit for copyright infringement.  Plaintiff also claimed that this alleged copying gave rise to state law unfair competition claims, as well as to "reverse palming off" claims under the Lanham Act.  Finding that defendants had not copied plaintiff's FAQ, the court, on defendants' motion for summary judgment, dismissed plaintiff's suit. 

"To succeed on its copyright infringement claim, plaintiff must show: 1) ownership of a valid copyright and 2) copying of constituent elements of the work that are original."  "Unauthorized copying can be established when the plaintiff can show both that 'the defendant has access to the copyrighted work' and that 'the accused work is substantially similar to the copyrighted work'" (citations omitted).

In this case, there was no dispute that defendant had access to plaintiff's work, given its availability on the web.  The question was whether defendants' FAQ was so 'substantially similar' to plaintiff's as to establish that defendants copied it.  To determine whether there is 'substantial similarity' between two works, courts will "us[e] the 'ordinary observer' test, that is 'whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value."

Generally, ideas and facts themselves are not protected by copyright; only the expression of those ideas is protectable.  As a result, the court held that the presentation of ideas and facts about the parties' businesses in an FAQ format was not protectable via copyright.  This does not mean that the underlying expression contained within an FAQ cannot be protected by copyright.  Rather, it means that the presentation of such expression in an FAQ format is not protectable.  Said the Court:

It follows that a business cannot copyright a Frequently Asked Questions page as such or copyright words or phrases commonly used to assemble any given Frequently Asked Questions page.  The format of a Frequently Asked Questions page is a common idea in our society; the elements of a Frequently Asked Questions page (a list of questions beginning with common words) are stereotypical.  Some additional similarity beyond generic formatting is necessary to establish infringement.

Although there were similarities between the parties' respective FAQs, they were not enough to establish copying.  Instead, "because both web pages focus on a spray-on form of sunless tanning, they provide similar information. …  The similarities between the two pages do not arise from protected expression.  Rather, they arise from the parties' use of a common format to address topics common to the subject of tanning booths."

Plaintiff's pages contained 19 questions and answers, while defendants' contained 16 questions and answers.  Of these, the court determined there were five questions on defendants' page that did not appear on plaintiff's page and seven questions on plaintiff's page that did not appear on defendants' page.  The sequence and wording of the parties' FAQs were different as well.  Finding the plaintiff had not shown that defendants' FAQs were substantially similar to plaintiff's, the court granted defendants' motion for summary judgment, and dismissed plaintiff's copyright infringement claim.

The Court held that plaintiff's state law unfair competition claim and Lanham Act claims - each premised on the content of defendants' FAQ - were pre-empted by the Copyright Act.  As a result, the court dismissed those claims as well.

The full text of the court's decision can be found on a web site maintained by the United States District Court for the Western District of Wisconsin.

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