BETH PHILLIPS, JUDGE.
Plaintiff Healthmate International, LLC initiated this suit, asserting three claims of copyright infringement against Defendants Timothy French and Rampant Lion LLC.
A moving party is entitled to summary judgment on a claim only upon a showing that "there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law." See generally Williams v. City of St. Louis, 783 F.2d 114, 115 (8th Cir. 1986). "[W]hile the materiality determination rests on the substantive law, it is the substantive law's identification of which facts are critical and which facts are irrelevant that governs." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Thus, "[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Wierman v. Casey's Gen. Stores, 638 F.3d 984, 993 (8th Cir. 2011) (quotation omitted). In applying this standard, the Court must view the evidence in the light most favorable to the non-moving party, giving that party the benefit of all inferences that may be reasonably drawn from the evidence. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Tyler v. Harper, 744 F.2d 653, 655 (8th Cir. 1984), cert. denied, 470 U.S. 1057, 105 S.Ct. 1767, 84 L.Ed.2d 828 (1985). A party opposing a motion for summary judgment may not simply deny the allegations, but must point to evidence in the Record demonstrating the existence of a factual dispute. Fed. R. Civ. P. 56(c)(1); Conseco Life Ins. Co. v. Williams, 620 F.3d 902, 909-10 (8th Cir. 2010).
For ease of discussion, the Court will discuss the background relevant to the Court's decision on a count-by-count basis. In light of the Court's rulings an abbreviated statement of the facts is all that is necessary. All citations to documents filed with the Court will utilize the page numbers generated by the Court's CM/ECF system.
Plaintiff and Defendants are in the business of selling TENS units. "TENS"
Defendants argue that they are entitled to summary judgment because Plaintiff's copyrights are invalid. Plaintiff insists that its copyrights are valid and contends that it is entitled to summary judgment because the uncontroverted facts demonstrate that Defendants infringed its three copyrights. For ease of discussion, the Court addresses Defendants' arguments for summary judgment first.
Plaintiff's Certificates of Registration are prima facie evidence that the copyrights are valid, 17 U.S.C. § 410(c), but the presumption may be rebutted. E.g., Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039, 1042 (8th Cir. 2003). Defendants attempt to rebut this presumption by arguing that the material Plaintiff claims to have copyrighted (1) is an uncopyrightable "method of operation" or (2) is not original. As discussed below, the Court concludes that Defendants are not entitled to summary judgment on these theories.
Copyright protection may be obtained for "original works of authorship," which are defined to include "pictorial" and "graphic" works. 17 U.S.C. § 102(a). However, "[i]n no case does copyright protection... extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery...." Id. § 102(b). Defendants argue that Plaintiff has attempted to copyright a "method of operation" and rely exclusively on the First Circuit's decision in Lotus Development Corp. v. Borland International, Inc. 49 F.3d 807 (1st Cir. 1995), aff'd, 516 U.S. 233, 116 S.Ct. 804, 133 L.Ed.2d 610 (1996),
As a whole, § 102(b) addresses the difference between an idea and the particular expression of that idea: the former is not copyrightable, but the latter is. See Toro v. R & R Products Co., 787 F.2d 1208, 1211-12 (8th Cir. 1986). Thus, in the earliest case addressing this distinction, it was held that the "idea" of a particular method of accounting cannot be copyrighted, while a book describing how to utilize that accounting method can be copyrighted. Baker v. Selden, 101 U.S. 99, 100-01, 25 S.Ct. 841 (1879). Recognizing the distinction
Lotus Development involved Lotus 1-2-3, a spreadsheet program that utilized a series of menus and commands to perform functions such as "copy," "print," and "quit."
49 F.3d at 810. Lotus filed suit, contending the menus and commands for Lotus 1-2-3 were copyrighted and that Borland infringed on that copyright by providing users of its competing product the ability to utilize the same menus and commands.
The First Circuit held that the menus and commands were not copyrightable because they were the method of operating Lotus 1-2-3, explaining that methods of operation "are the means by which a user operates something. If specific words are essential to operating something, then they are part of a `method of operation' and, as such, are unprotectable. This is so whether [the words] must be highlighted, typed in, or even spoken...." Id. at 816. The court then compared Lotus 1-2-3's "direction" to push certain buttons on the keyboard to the buttons on a VCR and determined that Lotus's "command terms are not equivalent to the labels on the VCR's buttons, but are instead equivalent to the buttons themselves." Id. at 817. The court further contrasted the computer commands from the labels on a VCR's buttons, explaining that "[u]nlike the labels on a VCR's buttons, which merely make operating a VCR easier by indicating the buttons' functions, the Lotus menu commands are essential to operating Lotus 1-2-3. Without the menu commands, there would be no way to
Even if Lotus Development provides the proper analytical framework for identifying a "method of operation,"
To qualify for copyright protection, a work must be original. 17 U.S.C. § 102(a). This
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (quotations omitted). Whether a work is "original" within the meaning of § 102(a) depends, at least in part, on facts about the work's creation. E.g., Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404, 1409 (11th Cir. 2015) (originality is a question of fact); Los Angeles News Serv. v. Tullo, 973 F.2d 791, 793 (9th Cir. 1992) (originality is a mixed question of fact and law).
Defendants contend that Plaintiff (or more precisely, Shawn Chen, the son of Plaintiff's owner) copied the icons from a competitor, so the icons that Plaintiff claims to have copyrighted are not original. However, there is evidence in the Record (primarily from Chen's deposition) that indicates otherwise. Therefore, the Record does not conclusively establish that the material is not original and the Court cannot grant summary judgment on this basis.
To establish infringement, Plaintiff must demonstrate that it owned a copyright on material that was copied by Defendants. "[C]opying can be established by demonstration of access (by the alleged infringer) and substantial similarity (between the works at issue)." Moore v. Columbia Pictures Indus., Inc., 972 F.2d 939, 941-42 (8th Cir. 1992). In this case, factual disputes prevent the Court from determining that these requirements have been met, so the issue must be resolved by a jury.
The Court holds that Plaintiff's copyrights are not invalid attempts to protect methods of operating its TENS units. The Record does not establish that the copyrights are invalid because they attempt to protect unoriginal material. Similarly, the Record does not conclusively establish that Defendants violated the copyrights. For these reasons, both sides' requests for summary judgment are denied.
The parties agree to the following facts (and some of these "facts" are actually legal matters). There are a great many other facts discussed in connection with the Lanham Act claim, but these are the only facts necessary to resolve the issues discussed in Part II(B), below.
Plaintiff operates a website through which it sells its products. Some of the product descriptions indicated that the products in question were "FDA approved."
Given the technical meanings accorded to the phrases, Plaintiff's products are "FDA cleared" but not "FDA approved." Thus, it was incorrect to say that Plaintiff's products were FDA approved, at least as that phrase is understood in terms of FDA regulations and procedures. Plaintiff's product descriptions also utilized the phrase "FDA cleared," and some of Plaintiff's product descriptions actually used both phrases. Significantly for purposes of the legal issues to be discussed, Plaintiff's product descriptions do not say anything about Rampant Lion's products.
Generally, the Lanham Act provides a cause of action against those who utilize a "false or misleading description, or false or misleading representation of fact" in advertising that "misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities." 15 U.S.C. § 1125(a)(1)(B).
United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1180 (8th Cir. 1998). "In addition, to recover damages a plaintiff must prove both actual damages and a causal link between defendant's violation and those damages." Id. (quotation omitted).
The parties present several arguments, but the Court will focus only on those that are necessary to resolve the fate of the Lanham Act Claim. Plaintiff contends that Rampant Lion cannot establish the second element — that customers were or are likely to be deceived — because it does not have customer surveys or other evidence typically used to establish this element. Rampant Lion concedes that it does not have any such evidence, but insists that it is not necessary in this case. The Court agrees with Plaintiff, but its analysis requires it to first ascertain the "type" of misstatement that Plaintiff made when it described its products as FDA Approved.
As stated above, the first element of a Lanham Act claim requires a false statement. The law recognizes different types of statements, and the type of statement affects how the other elements may be proved. Thus, before considering what kind of evidence is necessary to prove deception (the second element), the Court must first determine what type of misstatement is at issue.
"The false statement necessary to establish a Lanham Act violation generally falls into one of two categories: (1) commercial claims that are literally false as a factual matter; and (2) claims that may be literally true or ambiguous but which implicitly convey a false impression, are misleading in context, or likely to deceive consumers." United Indus., 140 F.3d at 1180. However, some statements are incapable of being false at all because they are insufficiently specific. Such statements are "generally known as `puffery' or `puffing.' Puffery is exaggerated advertising, blustering, and boasting upon which no reasonable buyer would rely and is not actionable under" the Lanham Act. Id. (quotation omitted). "Nonactionable puffery includes representations of product superiority that are vague or highly subjective. However, false descriptions of specific or absolute characteristics of a product ... are actionable." Id. (citations omitted). Rampant Lion contends Plaintiff's representation that its TENS units were "FDA approved" is literally false. Plaintiff contends the representation was mere puffery or, at worst, an ambiguous statement that was not literally false. As discussed below, the Court concludes the statement was not puffery and was not literally false, but rather was an ambiguous statement that was capable of conveying a false impression.
The representation is also not literally false. "The standard for proving literal falsity is rigorous. Only an unambiguous message can be literally false. When an ad can reasonably be understood as conveying different messages, a literal falsity argument must fail. In assessing whether an advertisement is literally false, a court must analyze the message conveyed within its full context." See Buetow v. A.L.S. Enterprises, Inc., 650 F.3d 1178, 1185 (8th Cir. 2011) (quotations omitted; emphasis in original). Rampant Lion contends the representation that TENS units have been "FDA approved" is literally false because under the FDA's regulations there is a difference between "FDA approved" and "FDA cleared," and the FDA does not regard Plaintiff's TENS units as "FDA approved." There is no doubt that the phrases mean different things to the FDA, but that is not the test for literal falsehood. The question is, as Buetow explains, whether the phrase is unambiguously false to consumers, which requires the Court to determine if "the false message will necessarily and unavoidably be received by the consumer." Id. (quotation omitted; emphasis supplied).
The terms "clear" and "approve" have ordinary meanings, and the process necessary for the FDA to "clear" TENS units — the process that actually applied to Plaintiff's TENS units — qualifies under the dictionary definition of "approval"
The second element of a Lanham Act claim requires Rampant Lion to prove that a substantial segment of the buying public was or could be deceived by Plaintiff's claim that its TENS units were FDA approved. The Court's determination that the statement is not a literal falsehood affects the manner in which Rampant Lion must prove this element.
"If a plaintiff proves that a challenged claim is literally false, a court may grant relief without considering whether the buying public was actually misled; actual consumer confusion need not be proved." United Indus. Corp., 140 F.3d at 1180. But, if "a commercial claim is not literally false but is misleading in context, proof that the advertising actually conveyed the implied message and thereby deceived a significant portion of the recipients becomes critical." Id. at 1182. The need to demonstrate that a significant portion of consumers has been or could be deceived requires more than a showing that one or a few consumers are deceived, so proof of this element takes the form of consumer surveys. Id.; see also Blue Dane Simmental Corp. v. American Simmental Ass'n, 178 F.3d 1035, 1043 (8th Cir. 1999); Rainbow Play Sys., Inc. v. GroundScape Techs., LLC., 364 F.Supp.2d 1026, 1032 (D. Minn. 2005).
Rampant Lion concedes that it does not have the surveys necessary to prove this element; instead, it contends that it does not need surveys.
Rampant Lion also suggests in passing that Plaintiff's bad faith or willfulness can excuse the need to prove actual or potential deception. (Doc. 163, p. 24.) This argument would be rejected even if it were squarely presented because, given the nature of Rampant Lion's Lanham Act claim, bad faith and willfulness cannot substitute for a showing of actual or potential deception. Willfulness gives rise to a presumption of deception only in Lanham Act cases where false comparative advertising is alleged. Porous Media Corp. v. Pall Corp., 110 F.3d 1329, 1334-35 (8th Cir. 1997). A claim of false comparative advertising is predicated on two types of claims, both of which involve or imply a comparison between products, such as "our product is better than theirs." E.g., EFCO Corp. v. Symons Corp., 219 F.3d 734, 739-40 (8th Cir. 2000); United Indus., 140 F.3d at 1181-82; see also Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 259-61 (2d Cir. 2014) (discussing need to limit circumstances in which proof of deception can be
Plaintiff's statements that its TENS units are "FDA approved" are not literally false or mere puffery. Therefore, to prevail on its Lanham Act claim Rampant Lion must prove that the statements have actually deceived, or are capable of deceiving, consumers. Plaintiff concedes that it does not have any such evidence, so summary judgment is granted to Plaintiff on this claim.
Plaintiff seeks summary judgment on Rampant Lion's second and third counterclaims, contending that Rampant Lion has no evidence to support its claims. (Doc. 161, pp. 40-42.) This argument is insufficient. To obtain summary judgment, the moving party must "show[] that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Plaintiff has not identified the absence of undisputed facts; instead, it has simply declared that Rampant Lion has no facts and thereby attempts to shift the initial burden and make Rampant Lion come forth with facts supporting its claims. The nonmoving party's obligation does not arise unless the moving party first identifies undisputed facts entitling it to judgment as a matter of law.
Plaintiff's Motion for Summary Judgment is granted in part and Defendants' Motion for Summary Judgment is denied. The Court grants summary judgment to Plaintiff on Rampant Lion's counterclaim under the Lanham Act. The motions are denied in all other respects.
IT IS SO ORDERED.
