Yankee Candle Co v. Bridgewater Candle Co

• Decision Date: 11 May 2001
• Docket Number: No. 00-2472,00-2472
• Citation: 259 F.3d 25
• Parties: (1st Cir. 2001) THE YANKEE CANDLE COMPANY, INC., Plaintiff, Appellant, v. THE BRIDGEWATER CANDLE COMPANY, LLC, Defendant, Appellee. Heard
• Court: U.S. Court of Appeals — First Circuit

Page 25

259 F.3d 25 (1st Cir. 2001)

THE YANKEE CANDLE COMPANY, INC., Plaintiff, Appellant, v. THE BRIDGEWATER CANDLE COMPANY, LLC, Defendant, Appellee.

No. 00-2472

United States Court of Appeals For the First Circuit

Heard May 11, 2001

Decided August 6, 2001

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS [Hon. Michael A. Ponsor, U.S. District Judge] [Copyrighted Material Omitted]

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

[Copyrighted Material Omitted] Gregory L. Baker, with whom Colin Foley, Howrey Simon Arnold & White, Cecil E. Key, Jr., and Brobeck, Phleger & Harrison, were on brief, for appellant.

Michael A. Albert, with whom Ilan D. Barzilay, Wolf, Greenfield & Sacks, P.C., Richard J. Moose and Dority & Manning, P.A., were on brief, for appellee.

Before Boudin, Chief Judge, Bownes, Senior Circuit Judge, and Torruella, Circuit Judge.

TORRUELLA, Circuit Judge.

Yankee Candle Company ("Yankee"), a leading manufacturer of scented candles, sued competitor Bridgewater Candle Company ("Bridgewater") on counts of copyright infringement and trade dress infringement under federal law, as well as on state claims of common law trade dress infringement, tortious interference, and deceptive trade practices under Mass. Gen. Laws ch. 93A. The district court granted summary judgment to Bridgewater on all claims except those of tortious interference and violation of 93A. Yankee Candle Co. v. Bridgewater Candle Co., 99 F. Supp. 2d 140 (D. Mass. 2000) [hereinafter Yankee I]. In a later memorandum, the district court determined that Yankee's evidentiary support for its federal copyright and trade dress claims was irrelevant with respect to the state claim for tortious interference and substantially limited Yankee's ability to introduce such evidence. Yankee Candle Co. v. Bridgewater Candle Co., 107 F. Supp. 2d 82, 86-87 (D. Mass. 2000) (memorandum) [hereinafter Yankee II]. The court also concluded that the alleged actionable behavior was not committed "primarily and substantially" in Massachusetts, and granted Bridgewater summary judgment on Yankee's 93A claim. Id. at 88-89. Yankee then stipulated as to the voluntary dismissal of its tortious interference claim so that it could appeal.

On appeal, Yankee challenges: (i) the grant of summary judgment on its copyright claims; (ii) the grant of summary judgment on its federal trade dress claims; (iii) the district court's decision to narrow the scope of trial and severely limit allowable evidence; and (iv) the grant of summary judgment on the 93A claim. For the reasons explained herein, we affirm the opinions of the district court.

I. Copyright Claims

Our review of the entry of summary judgment is de novo. Domnguez-Cruz v. Suttle Caribe, Inc., 202 F.3d 424, 428 (1st Cir. 2000); see also Folio Impressions, Inc. v. Byer Calif., 937 F.2d 759, 766 (2d Cir. 1991) (appropriate to review district court's evaluation of substantial similarity de novo when only visual comparisons are required).

A. The District Court Approach

Yankee claims that Bridgewater has infringed its copyright on the labels of nine candle fragrances.¹ The district court, proceeding in the following manner, concluded that Bridgewater's labels were non-infringing as a matter of law. First, applying the doctrines of "merger" and "scene-a-faire," the court determined that, to prevail, Yankee had to show that Bridgewater's labels were "nearly identical" to Yankee's. Yankee I, 99 F. Supp. 2d at 145. Second, in making this comparison, the district court ignored "certain similarities" that it viewed as "crude, physical elements" not entitled to copyright protection, such as the label's rectangular shape, its gold border, and the use of a full-bleed style of photography.² Id. at 148. Third, the court applied the "ordinary observer" test to the remaining elements of the copyrighted label, ultimately concluding that no reasonable juror could conclude that any of the Bridgewater labels were substantially similar to the corresponding Yankee label. Id. at 148-50.

Yankee claims that the district court erred by ignoring its proffered evidence of actual copying. As a result, says Yankee, the court incorrectly engaged in a point-by-point comparison of protected elements as opposed to a broader determination based on the "total look and feel" of the entire label. Yankee also argues that the district court was over-enthusiastic in determining which elements of the labels were not protected, and thus used an improper baseline for its determination of substantial similarity. For purposes of this appeal, we assume that Yankee provided sufficient evidence of actual copying to survive summary judgment.³ After applying the relevant law, we conclude that even if Bridgewater actually copied Yankee's labels, the merger doctrine operates so that no reasonable juror could have found Bridgewater's labels to be "substantially similar" to those of Yankee. We therefore affirm the grant of summary judgment on this basis.

B. Applicable Law

To prevail on a claim of copyright infringement, the plaintiff must show both ownership of a valid copyright and illicit copying. Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Matthews v. Freedman, 157 F.3d 25, 26-27 (1st Cir. 1998). There is no dispute here as to the first prong of this test; Yankee retains valid copyrights on the nine candle labels at issue. The second question is a more complicated one.

This Court conducts a two-part test to determine if illicit copying has occurred. First, a plaintiff must prove that the defendant copied the plaintiff's copyrighted work, either directly or through indirect evidence. Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56, 60 (1st Cir. 2000). Second, "the plaintiff must prove that the copying of the copyrighted material was so extensive that it rendered the infringing and copyrighted works 'substantially similar.'"⁴ Id.; see also Skinder-Strauss Assocs. v. Mass. Continuing Legal Educ., Inc., 914 F. Supp. 665, 672 (D. Mass. 1995) ("Even evidence of actual copying may be insufficient, however, if this copying was not substantial."). Because we assume, for purposes of this appeal, that actual copying has taken place, we move directly to the second prong.

Whether there is substantial similarity between copyrightable expressions is determined by the "ordinary observer" test. Concrete Mach. Co. v. Classic Lawn Ornaments, 843 F.2d 600, 607 (1st Cir. 1988). "The test 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 protected expression by taking material of substance and value." Id. (quoting Educ. Testing Servs. v. Katzman, 793 F.2d 533, 541 (3d Cir. 1986)). The determination of whether an allegedly infringing label is substantially similar to its alleged model or influence is not so simple a task, however, as a strict visual comparison of the two items. Any comparison between the two works must be informed by a key theoretical foundation of copyright law: that "[i]deas cannot be copyrighted," id. at 606 (citing Harper & Row, Pubs., Inc. v. Nation Enters., 471 U.S. 539, 547 (1985)), and therefore that "[a]n artist 'can claim to own only an original manner of expressing ideas,' not the ideas themselves," id. (quoting Cooling Sys. & Flexibles v. Stuart Radiator, 777 F.2d 485, 491 (9th Cir. 1985)). Because of this dichotomy between "idea" and "expression," only the "protected expression" is relevant to an evaluation of substantial similarity. Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir. 2000). We must first consider, then, to what extent the Yankee labels are protected expression.⁵

In determining what aspects of the Yankee labels are protected under copyright law, we follow essentially the same path as did the district court. We first "dissect" the work to remove those aspects not protected by copyright. Despite Yankee's argument to the contrary, this Court has indicated that dissection analysis is an appropriate method of evaluating substantial similarity even when actual copying has occurred. "By dissecting the accused work and identifying those features which are protected . . . [t]he court can also determine . . . those aspects of the work that . . . should be considered in the . . . comparative analysis under the ordinary observer test." Concrete Mach., 843 F.2d at 609. Second, we apply the doctrines of merger and scene-a-faire to determine how "substantially similar" the copy must be to infringe. Id. at 609 n.9 ("For example, the court may find that the idea and expression are so inseparable that copying of the work is not prohibited or that only exact reproduction of the work will justify a finding of infringement.").

There may be a qualification to the dissection test of some importance in certain cases. In Knitwaves, Inc. v. Lollywogs, Ltd., 71 F.3d 996, 1003 (2d Cir. 1996), the Second Circuit suggested that the dissection test may not fully resolve the legal issues where the copyright holder claims that the copyrighted material is essentially a host of uncopyrightable individual elements that have been arranged in a unique way that qualifies them for copyright protection. Cf. Feist, 499 U.S. at 362 (copyright available for compilations of unprotectible facts). This Court, however, has been more enthusiastic than the Second Circuit about the use of dissection analysis to disaggregate a visual work into its component elements for the purpose of removing the unprotectible elements contained within. Compare Concrete Mach., 843 F.2d at 609, with Knitwaves, 71 F.3d at 1003.

At any rate, we do not necessarily reject this qualification but think that it has no direct application here. Our reasons for thinking that there is nothing very unique in this combination of elements follows from our discussion of the...