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USCA1 Opinion
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
____________________
No. 95-2375
JAMES L. GRUBB, JR.,
Plaintiff - Appellant,
v.
KMS PATRIOTS, L.P. AND
NATIONAL FOOTBALL LEAGUE PROPERTIES, INC.,
Defendants - Appellees.
____________________
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Edward F. Harrington, U.S. District Judge] ___________________
____________________
Before
Torruella, Chief Judge, ___________
Stahl and Lynch, Circuit Judges. ______________
_____________________
Blair L. Perry, with whom Heidi E. Harvey and Fish & ________________ _________________ _______
Richardson P.C. were on brief for appellant. _______________
Daniel L. Goldberg, with whom Paul M. Robertson and Bingham, __________________ _________________ ________
Dana & Gould were on brief for appellees. ____________
____________________
____________________
TORRUELLA, Chief Judge. Plaintiff-Appellant James L. TORRUELLA, Chief Judge. ___________
Grubb, Jr. ("Grubb" or "Plaintiff"), challenges the district
court's grant of summary judgment for Defendants-Appellees KMS
Patriots, L.P. (the "Patriots"), and National Football League
Properties, Inc. ("NFL Properties") (collectively "Defendants"),
on Grubb's claims of copyright infringement under 17 U.S.C.
501. We affirm the decision of the district court.
I. BACKGROUND I. BACKGROUND
Resolving reasonable inferences in favor of Grubb, the
nonmovant, the summary judgment materials show the following.
The Patriots, a professional football team and a member
of the National Football League, informed NFL Properties on
January 17, 1993, that they were considering a logo change for
the upcoming season. NFL Properties, among other tasks, manages
design and publishing production assignments for the National
Football League. At a meeting between Patriots officials and NFL
Properties representatives on January 27, 1993, the Patriots
asked that the design of the new logo be created within the next
few weeks.
Accordingly, NFL Properties contacted several
independent design firms. On January 27, 1993, Bradley Jansen
("Jansen") of NFL Properties approached Evenson Design Group
("Evenson") about the project, and Evenson agreed to begin work.
Via overnight courier, Jansen sent to Evenson a package
containing, among other things, a purchase order and designs
similar to the one that the Patriots had considered and rejected
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in 1979 ("the 1979 proposed Patriots logo"). Jansen continued to
be in contact with, and meet with, Patriots employees thereafter.
The package was received on January 28, 1993. In his
deposition, Ken Loh ("Loh"), an Evenson employee, stated that he
began sketching the design that the Patriots eventually chose to
replace their old logo ("the Patriots' new logo"). With the aid
of his timesheets, which were generated by a computer program
that both Plaintiff and Defendants have stipulated could not be
backdated, Loh indicated that he had virtually completed the
Patriots' new logo by February 4, 1993. Referring to his
timesheets, Loh stated that as of that date he began work on
creating other logos and revising the logo he had already
created, which he identified as the Patriots new logo.
On February 12, 1993, Evenson sent Loh's design to NFL
Properties. Representatives of NFL Properties met with the
Patriots on February 18, 1993. The Patriots were shown many
proposed logos, including Loh's. The Patriots selected Loh's
design as their new logo on March 5, 1993.
Meanwhile, on February 9, 1993, having heard through
the news media that the Patriots planned to change their logo,
Grubb submitted an unsolicited proposed design ("Grubb's design")
to the Patriots' office in Foxborough, Massachusetts. In his
deposition, Grubb stated that he was told by a Patriots' employee
that the Patriots would contact him later regarding his
submission. Grubb holds a Certificate of Copyright Registration
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for his design, which the United States Copyright Office issued
to him effective February 1, 1994.
The Patriots' new logo and Grubb's design contain some
of the same elements, including a man's face in profile, stars,
and stripes.1 The district court granted summary judgment to
Defendants. The district court concluded that Grubb failed to
show that Loh had access to Grubb's work, relying in part on the
fact that the Patriots established and followed a policy that was
designed to prevent designers -- such as Loh -- from seeing
outside submissions. Additionally, the district court found that
Loh composed the Patriots' new logo independently of Grubb's
design. In the instant appeal, Grubb challenges the district
court's grant of summary judgment to Defendants. In particular,
Grubb argues that his Supplemental Affidavit, in which Grubb
compares Loh's work and his own, asserts facts that create a
direct conflict with Loh's testimony, on which the district court
relied. In the Supplemental Affidavit, Grubb states that "the
relative proportions of the elements of the two designs are
substantially identical and the curve of the base line . . .
appears to be a precise match," and that Loh's work was "probably
. . . traced from some other drawing." According to Grubb, the
district court erred in crediting Loh's testimony in light of
Grubb's Supplemental Affidavit.
____________________
1 See appendices following this opinion. ___
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II. STANDARD OF REVIEW II. STANDARD OF REVIEW
Summary judgment is appropriate when "the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits . . . show that there is no genuine
issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law." Kelly v. United _____ ______
States, 924 F.2d 355, 357 (1st Cir. 1991); see also Fed. R. Civ. ______ ________
P. 56(c). Under Rule 56(c), the opponent of the motion must
produce evidence on which a reasonable finder of fact, under the
appropriate proof burden, could base a verdict for the opponent;
if the opponent cannot produce such evidence, the motion must be
granted. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); ______________ _______
Anderson v. Liberty Lobby, 477 U.S. 242, 249 (1986). ________ _____________
III. DISCUSSION III. DISCUSSION
To prevail on a claim of copyright infringement, a
plaintiff must show two elements: (1) ownership of a valid
copyright and (2) copying of the protected work by the alleged
infringer. See Concrete Mach. Co. v. Classic Lawn Ornaments, ___ ___________________ ________________________
Inc., 843 F.2d 600, 605 (1st Cir. 1988); 3 Melvin B. Nimmer, The ____ ___
Law of Copyright 13.01 at 13-3 (1987). Defendants do not _________________
contest Plaintiff's ownership of a valid copyright on his design.
Therefore, we turn to the issue of whether summary judgment was
proper with respect to the alleged copying.
"Proof by direct evidence of copying is generally not
possible since the actual act of copying is rarely witnessed or
recorded." Concrete Mach., 843 F.2d at 606. Absent direct ______________
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evidence, copying may be inferred from a showing that the
defendant had "access" to the plaintiff's work prior to the
creation of defendant's work, Baxter v. MCA, Inc., 812 F.2d 421, ______ _________
423 (9th Cir. 1987), and that there is "substantial similarity"
between the works, Walker v. Time Life Films, Inc., 784 F.2d 44, ______ ______________________
48 (2d Cir.), cert. denied, 476 U.S. 1159 (1986); see Sid & Marty ____________ ___ ___________
Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d ________________________________ _________________
1157, 1162-63 (9th Cir. 1977). Even if both showings are made,
however, the trier of fact may nonetheless find no copying if the
defendant shows independent creation. Concrete Mach., 843 F.2d _______________
at 606 n.6; Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d ________________ _____________________
498, 501 (2d Cir. 1982). Viewing the summary judgment record in
the best light for Plaintiff, we conclude that he has failed to
raise a genuine issue of material fact with respect to
Defendants' "access"; this deficiency alone suffices to justify
summary judgment.
To satisfy its burden of showing access, the plaintiff
must produce evidence from which a reasonable finder of fact
could infer that the defendant had a reasonable opportunity to
copy his or her work. See Selle v. Gibb, 741 F.2d 896, 901 (7th ___ _____ ____
Cir. 1984). Evidence that only creates a "bare possibility" that
the defendant had access is not sufficient to create a factual
issue as to copying. Jason v. Fonda, 526 F. Supp. 774, 777 (C.D. _____ _____
Cal. 1981) (concluding that the fact that between 200 and 700
copies of plaintiff's book were available in Southern California
bookstores was insufficient to infer that defendant movie
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producers had a reasonable opportunity to copy it), aff'd, 698 _____
F.2d 966 (9th Cir. 1982). "[T]he jury cannot draw an inference
of access based upon speculation and conjecture alone." Selle, _____
741 F.2d at 901.
On the summary judgment materials before it, the
district court concluded that, even drawing all favorable
inferences for Grubb, the evidence did not demonstrate that Loh
had access to Grubb's design; in fact, it showed that Loh
composed his design independently of and prior to Grubb's work.
With respect to Loh's access, Grubb contends that the district
court erred, since an alleged copier's access may be proven by
showing that an intermediary with whom the copier was involved
had access to the copyrighted work under circumstances in which
the copier also may have been given an opportunity to view the
copyrighted work. Grubb also argues that his Supplemental
Affidavit is evidence that Loh had access to Grubb's design.
With respect to the district court's finding of independent prior
creation, Grubb argues that Loh's testimony suggests that Loh
traced the Patriots' New Logo from another design. Grubb also
questions Loh's credibility, and submits that Grubb's
Supplemental Affidavit is evidence that Loh did not independently
create the Patriots' new logo prior to Grubb's design.
Turning first to Loh's access, it is undisputed that
the Patriots received Grubb's sketch on February 9, 1993, via
Grubb's unsolicited submission. Grubb points to several pieces
of evidence that he believes shows Loh had a reasonable
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opportunity to copy Grubb's design. First, according to Grubb's
deposition, the individual Patriots' employee to whom he gave the
design told him that the Patriots would get in contact with him
in the future. Additionally, Grubb points to the fact that
Jansen, as an employee of NFL Properties, admits that he had
contact with representatives of the Patriots beginning on January
27, 1993, and that Jansen had also hired the design firm that
employed Loh. Grubb claims that Jansen is a point of access
between Loh's firm and the Patriots, from which a finder of fact
could permissibly infer a reasonable opportunity to copy.
Finally, Grubb claims that his Supplemental Affidavit is evidence
that Loh had access to Grubb's design.
We need not resolve Grubb's contention that this
evidence entitles him to a finding of access, however, because
even assuming, arguendo, that it did, the undisputed evidence is ________
that Loh created the Patriots' New Logo prior to February 9,
1993.2 As noted, supra, Grubb does not just have to show that _____
Loh had access to Grubb's work; Grubb has to show that Loh had
access to Grubb's work before Loh created the Patriots' New Logo.
See Concrete Mach., 843 F.2d at 605 n.6; Baxter, 812 F.2d at 423. ___ ______________ ______
____________________
2 The district court described this as "independent prior
creation," an independent showing that rebuts a finding of
access. We do not consider whether "independent prior creation"
is a separate showing, see Grubb v. National Football League ___ _____ _________________________
Properties, Inc., slip op. at 6 (D. Mass. 1995) (citing Concrete _________________ ________
Machinery, 843 F.2d at 605 n.6), or whether any showing of access _________
must, as a logical matter, necessarily be access prior to the _____
creation of a defendant's work, see Baxter, 812 F.2d at 423, ___ ______
since resolution of this question either way would not affect the
result of our analysis.
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In his deposition, Loh stated that he began working on the
Patriots' New Logo on January 28, 1993, and by February 4, 1993,
had finished, save for later refinements, the Patriots' New Logo.
Additionally, in his affidavit, Loh further testified that, in
late January of 1993, he created a pencil sketch of the Patriots'
New Logo, to which he added color later that day. With the aid
of his timesheets, he was able in his deposition to pinpoint the
day he created these works as January 28, 1993. What Loh
identified as having been created during this period bears
unmistakable resemblance to the Patriots' New Logo, save for the
color of the star3 in the hat and a few shadings on the face
depicted. This testimony demonstrates that Loh did not have
access to Grubb's design prior to creating the Patriots' new
logo, see Baxter, 812 F.2d at 423, since Grubb's evidence shows ___ ______
that Loh could not have viewed Grubb's design prior to February
9, 1993.
To be sure, Grubb argues that he does in fact dispute
Loh's testimony, and therefore, there remains a genuine issue of
material fact as to the issue of Loh's prior creation. However,
on summary judgment, absent specific facts discrediting testimony
from a witness associated with the movant, and absent a direct
conflict in the testimony, the opponent (although entitled to
have his or her evidence taken as true) is not entitled to have
the defendant's evidence positively disbelieved. Takeall v. _______
____________________
3 While the color of the star changed from white to silver, it
should be noted that the Patriots' actual helmet color -- the
background of the logo -- also changed from white to silver.
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Pepsico, Inc., 809 F. Supp. 19, 23 (D. Md. 1992), aff'd, 14 F.3d _____________ _____
596 (4th Cir. 1993), cert. denied, 114 S. Ct. 2742 (1994); see ____________ ___
also Moreau v. Local 247, Int'l Bhd. of Firemen, 851 F.2d 516, ____ ______ __________________________________
519 (1st Cir. 1988); 10A Charles A. Wright, Arthur R. Miller and
Mary K. Kane, Federal Practice and Procedure: Civil 2d 2726 at _________________________________________
119, nn.11-12 (1983). Grubb first questions the credibility of
Loh's testimony, and second argues that Loh's testimony conflicts
with Grubb's Supplemental Affidavit, since Grubb therein opines
that his and Loh's designs are so similar that Loh must have
copied Grubb's work.
Grubb attempts to call into question Loh's testimony by
arguing that Loh's computer software timesheets do not show what
Loh had drawn on any particular date, and that Loh could not
identify individual sketches he created during the design process
by specific date. Grubb also points to Loh's admission that,
without his timesheets, he could not remember on what date he did
what. Furthermore, Grubb argues that Loh was still sketching
possible logos on or after February 9, 1993. All of this is,
however, irrelevant. The parties stipulated that the timesheet-
generating software program could not be backdated. With his
timesheets and the summaries therein of how he used his time, Loh
testified in his deposition that he began sketching the designs
for the Patriots' New Logo on January 28, 1993, and by February
4, 1993, he had essentially finished designing it. While Loh
testified that he was still working on the project after
February 9, he also testified that this work involved simple
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refinements, such as changing the color of the star. The fact
that Loh needed his timesheets to recollect dates, or that he
continued to work on the Patriots project after February 9, does
not discredit his testimony, particularly where it is undisputed
that the timesheets could not have been backdated.
Besides challenging the credibility of Loh's testimony,
Grubb also argues that his Supplemental Affidavit represents
facts in direct conflict with Loh's testimony. Grubb's
Supplemental Affidavit expresses his opinion of the Patriots' new
logo's similarity to Grubb's work. Grubb supplies reasoning --
pointing to the relative proportions of the elements of the two
designs and the curve of the base line -- for why he believes the
designs are similar. Grubb also concludes that Loh's design must
have been traced from another design.
Grubb's argument seems to be that 1) Loh traced, and 2)
Loh's work resembles Grubb's work, therefore Loh's testimony that
he did not copy Grubb's work, and in fact, created the Patriots'
new logo before Grubb submitted his own design, is in dispute.
However, similarity alone cannot lead to a finding of copying,
without evidence of access prior to the allegedly offending
work's creation. As a result, we must look to whether Grubb's
affidavit actually creates a direct conflict with Loh's testimony
-- since the latter rebutted any finding of access by
demonstrating prior creation. We conclude that, even assuming
that Grubb's Supplemental Affidavit is properly considered expert
testimony, it is simply not in direct conflict with Loh's
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testimony. Similarity cannot substitute for access, and the fact
that Loh admitted to having done "tracings" in the process of
producing his work does not conflict with Loh's statement that he
had virtually completed the Patriots' New Logo by February 4,
1993, since Loh admitted that Evenson had various pictures of
colonial soldiers that he used, and the Summary Judgment
materials indicated that Loh was sent designs similar to the 1979
proposed Patriots' logo, which also depicted a colonial soldier.
The fact that Loh did tracings is simply not in direct conflict
with Loh's testimony that he had created the Patriots' new logo
by February 4, 1993.
As a result, like the district court before us, we
conclude that Loh composed his design prior to Grubb's work.
Such prior creation renders any conclusion of access or inference
of copying illogical. See Concrete Mach., 843 F.2d at 606 n.6 ___ ______________
(stating that "[a]lthough access plus substantial similarity is
required to show copying, the trier of fact may nonetheless find
no copying if the defendant shows independent creation").
Because both access and substantial similarity need be
shown, see Concrete Mach. Co., 843 F.2d at 606; O'Neill v. Dell ___ __________________ _______ ____
Publishing Co., 630 F.2d 685, 686 (1st Cir. 1980), and Plaintiff _______________
has failed to demonstrate a genuine issue of material fact
regarding access, we need go no further. While Plaintiff argues
that "[w]here two designs are so similar that one must have been
copied from the other, proof of access may not be required,
because no explanation other than copying is reasonably
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possible," Brief for the Plaintiff-Appellant at 13, the lone __________________________________
case that Plaintiff cites for this proposition, Flag Fables, Inc. _________________
v. Jean Ann's Country Flags and Crafts, Inc., 730 F. Supp. 1165 __________________________________________
(D. Mass. 1989), in fact states that
this Court's view of the present dispute
[is that] given the indisputable access ____________________
and substantial similarity between the ____________________________
two parties' banners, the evidence of
independent creation advanced at the
hearing by defendants was simply not
persuasive.
Id. at 1181 (emphasis added). Thus, Plaintiff misstates the law ___
by failing to recognize that he bears the burden of showing both ____
reasonable access and substantial similarity. Concrete Mach., ___ ______________
843 F.2d at 606; Walker, 784 F.2d at 48; Sid & Marty Krofft ______ ___________________
Television, 562 F.2d at 1162-63. The reason for both __________
requirements is simple: copyright protection precludes only
copying; if two people arrive at the same result independently,
copyright law will not protect the first. See Selle, 741 F.2d at ___ _____
896 (7th Cir. 1984) (stating that "two works may be identical in
every detail, but, if the alleged infringer created the accused
work independently or both works were copied from a common source
in the public domain, then there is no infringement"); 3 Nimmer
13.02; see also Arthur v. American Broadcasting Cos., 633 F. ________ ______ ___________________________
Supp. 146, 148 n.3, 149 (S.D.N.Y. 1985) (concluding no
infringement even where expressions are extremely similar, if
"nearly all the similarity can be attributed to the fact that
both [works] are artist's renderings of the same unprotectible
idea"; ideas cannot be protected under copyright law, 17 U.S.C.
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102(b)). Thus, like the district court before us, we need not
address the issue of substantial similarity.
CONCLUSION CONCLUSION
As a result of the foregoing, the judgment of the
district court is affirmed. affirmed. ________
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Document Info
Docket Number： 95-2375
Filed Date： 6/20/1996
Precedential Status： Precedential
Modified Date： 9/21/2015