328 F.3d 848 (6th Cir. 2003), 01-4089, Kohus v. Mariol

Docket Nº:01-4089
Citation:328 F.3d 848
Party Name:Louis M. Kohus, Plaintiff-Appellant, v. John V. Mariol; James F. Mariol; JVM Innovation & Design, Defendants-Appellees.
Case Date:May 20, 2003
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

Page 848

328 F.3d 848 (6th Cir. 2003)

Louis M. Kohus, Plaintiff-Appellant,


John V. Mariol; James F. Mariol; JVM Innovation & Design, Defendants-Appellees.

No. 01-4089

United States Court of Appeals, Sixth Circuit

May 20, 2003

        Argued: December 12, 2002

Page 849

[Copyrighted Material Omitted]

Page 850

[Copyrighted Material Omitted]

Page 851

        Appeal from the United States District Court for the Southern District of Ohio at Cincinnati. No. 99-00831—Sandra S. Beckwith, District Judge.



        Donald J. Rafferty, COHEN, TODD, KITE & STANFORD, Cincinnati, Ohio, for Appellant.

        Michael D. Johns, DINSMORE & SHOHL, Cincinnati, Ohio, for Appellees.

         ON BRIEF:

        Donald J. Rafferty, COHEN, TODD, KITE & STANFORD, Cincinnati, Ohio, for Appellant.

        Michael D. Johns, Charles H. Brown III, DINSMORE & SHOHL, Cincinnati, Ohio, for Appellees.

        Before: BATCHELDER and MOORE, Circuit Judges; FORESTER, Chief District Judge.[*]


        ALICE M. BATCHELDER, Circuit Judge.

        Louis Kohus ("Kohus") appeals the district court's grant of summary judgment in favor of defendants John Mariol, James Mariol, and JVM Innovation & Design ("Defendants"), on Kohus's claims for copyright infringement. Kohus argues that the district court applied the wrong legal standard, and that the court erred by refusing to consider expert testimony. Having concluded that the Sixth Circuit does not have a settled legal standard in this area, we set out a standard below and remand so the district court may apply that standard.

        Statement of Facts

        Kohus invents and designs consumer products, including children's items. In 1987 he formed Kohus/Mariol, Inc. ("KMI") with John Mariol ("Mariol"). They developed a number of products, including product 11-KMI86, a portable children's playyard, which included drawings for a latch that would lock the upper rails in place for use. This latch ("the 11-KMI86 latch") was unlike others on the market in that it had two flippers, or hinges, instead of one, and this gave it a two-step Page 852

function that could make it safer than comparable latches.         By August of 1988 a serious disagreement had developed between KMI's shareholders, and Kohus and KMI sued Mariol and his father James (who was also an inventor, and worked with Kohus) in Ohio court. The lawsuit remained unresolved for some six years, though the court did order that in the interim James should maintain control of all KMI's products and assets. The parties parted ways, and Mariol acted as his father's agent in handling KMI's products and assets.

        In November of 1994 the KMI litigation finally ended in a settlement. Paragraph two of the settlement agreement provided that "JAMES MARIOL hereby assigns to KOHUS all rights, title and interest, whether known or unknown, that he may now have or hereafter acquire in those . . . products identified in Exhibit B . . ., including without limitation any . . design drawings[.]" Exhibit B included product 11-KMI86. Consequently, after November of 1994 Mariol no longer had the right to develop or market the 11-KMI86 latch.

        In February of 1995 Mariol, who was consulting with Evenflo Juvenile Furniture Co. ("Evenflo") on a project to develop a collapsible playyard, faxed Evenflo a latch drawing entitled "Joint Version No. 2." Kohus alleges that this drawing is substantially similar to the 11-KMI86 latch.

        In January of 1996 Mariol became a contractor for Kolcraft Enterprises, Inc., where he was assigned to assist another engineer in developing a collapsible playyard. Mariol and his co-engineer subsequently obtained two patents from the United States Patent and Trademark Office ("PTO") on playyards they developed at Kolcraft: Patent No. 5,826,285 ("the '285 Patent"), and Patent No. 5,867,851 ("the '851 Patent"). Both of the patent documents present identical drawings of a latch that Kohus alleges was derived from, and substantially similar to, the 11-KMI86 latch. In 1999 Kohus discovered the '285 and '851 Patents while conducting patent searches on the internet, and he then applied for and received a certificate of registration on the 11-KMI86 latch.

        Mariol had, in his patent applications, attempted to establish a claim for the allegedly infringing latch, but the patent examiner had not allowed this and had required him to file that claim separately. Mariol subsequently did so, though he amended the patent application with a supplemental information disclosure statement in which he explained to the PTO that Kohus had filed suit against him. In the supplemental disclosure Mariol included the original drawings of the 11-KMI86 latch, though he had not asked Kohus's permission. The PTO nevertheless rejected the latch-related claims in the patent application, finding that they were "anticipated" by the original drawings of the 11-KMI86 latch.

        Kohus filed this lawsuit on October 1, 1999, contending inter alia that three of Mariol's drawings—Joint Version No. 2, the '285 Patent drawing, and the identical '851 Patent drawing—were substantially similar to the 11-KMI86 latch drawing, and that these three drawings violated his right to create derivatives of the 11-KMI86 latch drawing. The Defendants subsequently filed for summary judgment, arguing that even if the drawings were substantially similar, Kohus's claims should fail because the Defendants did not have access to the 11-KMI86 latch drawing. After the district court found that they did have access and rejected this motion, the Defendants filed another motion for summary judgment, this time arguing that their drawings were not substantially similar to the 11-KMI86 latch drawing. The district court compared the drawings, and refused to consider the conflicting Page 853

testimony of experts proffered by each side. It concluded that no reasonable trier of fact could find that the Defendants' drawings were substantially similar to the 11-KMI86 latch drawing, and held that since Kohus's substantial similarity argument failed, his derivative copying argument should also fail. Kohus now appeals.         Analysis

        I. Whether the Latches Depicted in the Defendants' Drawings Are Substantially Similar to the Latch in Kohus's Copyrighted Drawing

        A. The Applicable Legal Standard

        Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, 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." Fed. R. Civ. P. 56(c). In copyright infringement cases "granting summary judgment, particularly in favor of a defendant, is a practice to be used sparingly," but "a court may compare the two works and render a judgment for the defendant on the ground that as a matter of law a trier of fact would not be permitted to find substantial similarity." Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984) (citations omitted); see also Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir. 1980) ("Because substantial similarity is customarily an extremely close question of fact, summary judgment has traditionally been frowned upon in copyright litigation[.]") (citing Arnstein v. Porter, 154 F.2d 464, 468 & 474 (2d Cir. 1946)).

        To succeed in a copyright infringement action, a plaintiff must establish that he or she owns the copyrighted creation, and that the defendant copied it. Wickham, 739 F.2d at 1097. In the present case Kohus's ownership of the 11-KMI86 latch drawing is not disputed, and copying is the sole issue.

        Not all "copying" is actionable, however: it is a constitutional requirement that a plaintiff bringing an infringement claim must prove "copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (emphasis...

To continue reading