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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...

Allen v. Ghoulish Gallery

2007 WL 4207923 (S.D. Cal., Nov. 20, 2007)

After trial, court dismissed copyright infringement claims advanced by plaintiff against a competitor as a result of defendant’s alleged use of elements of plaintiff’s website on its own website.  Both parties operated websites at which they sold ‘changing portraits’ that contained antique photos that ‘changed’ into haunted spirits when viewed from different angles.  The court found that plaintiff did not possess a copyright in the individual elements of his site, which included unoriginal fonts, a ‘buy it now’ button, and the frame used to display the ‘changing portraits’ offered for sale on plaintiff’s website.  The court held that plaintiff did possess a copyright in the assembled compilation of these elements on his website.  Because defendant’s website was not ‘substantially similar’ to plaintiff’s, however, the court found that defendant was not guilty of copyright infringement.

The court spent the balance of its opinion addressing claims each of the competitors asserted against the other arising, inter alia, out of derogatory statements each made concerning the other, and claims and statements they made concerning their own activities, history and accomplishments.  These claims, including claims for defamation, false advertising and unfair competition, are of little interest to the legal community at large, and will not be discussed here.  Those interested can read the court’s decision which, in large part, dismissed these claims and counterclaims.

In 2003, Plaintiff Edward Allen created a website for his business – Haunted Memories Changing Portraits – at which he offers ‘changing portraits’ for sale to the public.  Using ‘lenticular technology,’ Allen’s ‘changing portraits’ make antique photographs appear to ‘change’ into haunted spirits as one views the image from a different vantage point.

In 2004, defendant Tim Turner, a competitor of plaintiff, created a website for his business – The Ghoulish Gallery – at which he sold his own ‘changing portraits’ to the public.

Complaining that defendant’s website infringed his, plaintiff commenced this suit, charging defendant with copyright infringement.  Importantly, the claim did not arise out of defendant’s copying of the ‘changing portraits’ plaintiff offered for sale.  Instead, it arose out of claims concerning the alleged copyright of the balance of plaintiff’s website.

To prevail on a claim for copyright infringement, a plaintiff must establish that it is the owner of a copyright.  The Court held that plaintiff could not establish that he owned a copyright in the individual elements of his website (excluding the ‘changing portraits’ that appeared thereon).  These elements included fonts created by third parties in which plaintiff displayed the name of his website, and tagline.  These fonts were not created for plaintiff, and were commonly used in the ‘Haunt’ industry.  These elements also included a ‘buy it now’ button, the frame in which plaintiff displayed the changing portraits on his website, ‘spooky eyeball’ wallpaper background on plaintiff’s site – which plaintiff did not establish he created – and the use of the word ‘Little’ to describe changing portraits depicting children.

The court held that plaintiff did, nonetheless, hold a copyright in his website, as a compilation of these non-copyrightable elements.  The combination of these elements created a unique work that was subject to copyright protection.

A party can obtain a copyright in a compilation of specific items which  themselves, individually, are not subject to copyright protection.  Said the Court:

If specific components of a compilation are not original or would not be protected by themselves, a party nonetheless may have protection in the selection, arrangement and presentation of such components. … The required elements to establish copyright protection based on this theory include:

(1) the collection and assembly of pre-existing material, facts or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination or arrangement, of an original work of authorship. … Only some minimal level of creativity is required.

The Court held that plaintiff satisfied this test, and was accordingly entitled to copyright protection for his website.  Said the Court:

The Court found that plaintiff established by a preponderance of the evidence that he is entitled to copyright protection in the selection, arrangement and presentation of the contents of his website as it appeared in December 2004.  Through the use of color, background wallpaper, text, specific gallery portraits, specific frames, fonts, mats and original mini-biographies, plaintiff created a unique work that reflects his own creative and independent judgment.  While copyright protection does not extend to the individual components of that creation, it did extend to the work as a whole.

Plaintiff’s copyright infringement claims nonetheless failed, however, because plaintiff could not establish that defendant copied his website.  When addressing compilations, it is “only the selection and/or arrangement of the work [that] are protected [by copyright] while the individual unprotected elements may be copied.”

To establish defendant copied his website, in the absence of evidence of direct copying, the copyright owner must demonstrate both that defendant had access to plaintiff’s work and that the parties’ works are substantially similar.  This test has both an objective and subjective component.

When addressing a “compilation [that] consists largely of uncopyrightable elements, a court will find copyright infringement where there is ‘bodily appropriation of expression’ or ‘unauthorized use of substantially the entire item.’ Id (finding insufficient similarity where defendants copies or derived less than 70% of their selections from plaintiff’s website.)”

Applying this test, the Court held plaintiff’s copyright infringement claim failed because defendant’s website was not substantially similar to that of the plaintiff.  While the sites both used the same fonts for their website name and tag line, and displayed their changing portraits in frames, three abreast, the sites used different wallpaper backgrounds, and different color schemes.  As time went on, defendant’s site changed, and became more dissimilar.  The use of the same fonts in the sites’ respective titles and tag lines was insufficient to create the required substantial similarity.  Said the Court:

In sum, the only substantial similarity the Court finds between the two websites based on the objective test is use of the Ruben font for the business name and Rudelsberg font for the tag line.  The Ruben font as both parties agree … is publicly available and commonly used in the haunt industry.  The Rudelsberg font is also widely used in the haunt industry … Further, the Court’s subjective impression of the comparison between plaintiff’s protected work with defendant’s work is that their websites are not substantially similar.  Therefore, having compared plaintiff’s protected work with defendant’s work, while the general layout and pattern of both websites appear similar, both the objective and subjective tests reveal the similarities between the selection and/or arrangement of the websites are not substantial enough to qualify for copyright infringement.

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