McCulloch v. Albert E. Price, Inc.

Decision Date28 July 1987
Docket NumberNos. 86-6241,86-6751,s. 86-6241
Parties, 1987 Copr.L.Dec. P 26,141, 3 U.S.P.Q.2d 1503 Carolyn N. McCULLOCH, Lucyann W. Cameron, Elizabeth P. Smoot, the Original Red Plate Company, Plaintiffs-Appellees, v. ALBERT E. PRICE, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Ninth Circuit

Leonard Tachner, Newport Beach, Cal., for plaintiffs-appellees.

Thomas J. Daly, Pasadena, Cal., for defendant-appellant.

Appeal from the United States District Court for the Central District of California.

Before ALARCON, NELSON and O'SCANNLAIN, Circuit Judges.

ALARCON, Circuit Judge:

Defendant-appellant Albert E. Price, Inc. (Price, Inc.) appeals the judgment awarding damages, injunctive relief and attorney's fees to Carolyn N. McCulloch, Lucyann W. Cameron, Elizabeth P. Smoot, and the Original Red Plate Company (collectively referred to as plaintiffs or ORP) for copyright infringement following a bench trial.

Price, Inc. contends (1) the district court failed to apply the first prong of this court's two-part test for "substantial similarity" to determine copyright infringement, (2) the district court failed to conclude that the "idea" and "expression" behind ORP's plate are inseparable and thus not subject to copyright protection, (3) the district court failed to discount the phrase, "You Are Special Today," in evaluating the two-part substantial similarity test for copyright infringement, and (4) the district court abused its discretion in awarding attorney's fees. We affirm in part, and reverse and remand the issue of attorney's fees.

I.

Carolyn N. McCulloch, Lucyann W. Cameron, and Elizabeth P. Smoot jointly designed a decorative red plate which bears the phrase "You Are Special Today." The plate is red with white lettering and contains a floral design. The designers formed The Original Red Plate Company to market their creation. The plaintiffs also developed a booklet entitled "The Magic of the Red Plate" to accompany each sale.

In March 1979, prior to the first sale of the plate, the plaintiffs filed an application with the Copyright Office to register their plate as an unpublished work. A copyright, certificate number VAu-8-504, was issued effective July 9, 1979. ORP also applied for and received a copyright certificate on the plate and booklet in 1982.

In January 1984, ORP filed a complaint claiming copyright and trademark infringement. These claims were based on Price, Inc.'s sale of a decorative plate which bears the phrase "You Are Special Today" and a floral rose design. The plate is white with red lettering. Price, Inc. began selling its plate in 1983.

The district court granted Price, Inc.'s motion for summary judgment on the trademark infringement claim. ORP has not appealed this order.

Following a bench trial, the district court held that (1) Price, Inc. infringed ORP's copyright by copying and selling its plate, (2) Price, Inc. is enjoined from making further sales of the infringing plate, (3) Price, Inc.'s inventory of infringing plates is to be destroyed, and (4) Price, Inc. is liable to ORP for its damages and profits derived by Price, Inc. as a result of the copyright infringement. The court awarded ORP costs and attorney's fees.

II.

Findings of fact are subject to the clearly erroneous standard of review. Cooling Systems & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 487 (9th Cir.1985); Anderson v. City of Bessemer City, 470 U.S. 564, 572, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985). The issue of "substantial similarity" of expression is a finding of fact reviewable for clear error. Cooling Systems, 777 F.2d at 487. Awards of attorney's fees in copyright claims are reviewed for abuse of discretion. Id.

III.

To make out a claim for copyright infringement, the plaintiff must establish that (1) he owns the copyright in the work in question, (2) the defendant had access to the copyrighted work, and (3) there is "substantial similarity" not only of the general ideas of the works but of the expression of those ideas as well. Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 488 (9th Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 513, 83 L.Ed.2d 403 (1984) (citing Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977)). In this case, it is undisputed that ORP owns the copyright in its work, and that Price, Inc. had access to it.

We have developed a two-step test to determine substantial similarity in the ideas of a work and their expression. Cooling Systems, 777 F.2d at 492 n. 9; Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985). Similarity of ideas may be shown by an extrinsic test which focuses on similarities in the objective details of the works. Litchfield, 736 F.2d at 1356. This step is extrinsic "because it depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed." Krofft, 562 F.2d at 1164. The extrinsic test "may often be decided as a matter of law." Id.

Similarity of expression depends on a subjective, intrinsic test which focuses on the response of the "ordinary reasonable person" to the works. Litchfield, 736 F.2d at 1356. The issue is whether the "ordinary reasonable person" would find the "total concept and feel" of the works showed substantial similarity. Id. at 1357. The intrinsic test "is uniquely suited for determination by the trier of fact...." Krofft, 562 F.2d at 1166.

Price, Inc. contends the district court failed to apply this court's two-step test for substantial similarity. Price, Inc. argues "the district court short circuited this two-step test by proceeding directly to the second step," and that "no findings were made on the idea behind ORP's plate or on the substantial similarity of ideas behind ORP's plate and Price's plate." (Emphasis added).

Paragraph 17 of the district court's Findings of Fact states that Price, Inc.'s plate "is confusingly similar in appearance to Plaintiffs' plate...." This finding satisfies the similarity of ideas prong of the two-part test applied in Litchfield. In Litchfield, we stated that the similarity of ideas prong may be shown by focusing on the similarities in the objective details of the works. 736 F.2d at 1356. Concluding that the plates are "confusingly similar in appearance" is tantamount to finding substantial similarities in the objective details of the plates. Thus, although the district court did not expressly state that it was applying the two-part test, it is clear from the record that the court found a similarity of ideas and expression.

Price, Inc. next argues that "[e]ven if the ideas behind the ORP plate and the Price plate are substantially similar, the failure to identify the idea behind the ORP plate undermined the district court's ability to properly evaluate the scope of copyright protection to be accorded ORP's work."

Under our two-part test for copyright infringement, it is not necessary to determine the scope of copyright protection or to identify the idea behind the ORP plate as suggested by Price, Inc. Price, Inc. has not cited any authority which supplements this court's two-part test for copyright infringement with these additional elements, and our research has disclosed none. The district court did not err in failing to identify the idea behind the ORP plate or to determine the scope of copyright protection accorded the ORP plate.

IV.

Price, Inc. also contends the district court's finding that the ORP plate and the Price, Inc. plate are substantially similar is clearly erroneous. Price, Inc. argues that "[a]ny similarities in the two plates are the unavoidable consequence of expressing the same uncopyrightable idea," relying on Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir.1971).

In Kalpakian, plaintiff sued for copyright infringement of its jeweled bee pin claiming it should be protected against the manufacture of any substantially similar object. 446 F.2d at 739. We concluded that the plaintiff had failed to establish substantial similarity.

What is basically at stake is the extent of the copyright owner's monopoly-- from how large an area of activity did Congress intend to allow the copyright owner to exclude others? We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an "idea" that defendants were free to copy. Plaintiff seems to agree, for it disavows any claim that defendants cannot manufacture and sell jeweled bee pins and concedes that only plaintiff's particular design or "expression" of the jeweled bee pin "idea" is protected under its copyright. The difficulty, as we have noted, is that on this record the "idea" and its "expression" appear to be indistinguishable. There is no greater similarity between the pins of plaintiff and defendants than is inevitable from the use of jewel-encrusted bee forms in both.

When the "idea" and its "expression" are thus inseparable, copying the "expression" will not be barred, since protecting the "expression" in such circumstances would confer a monopoly of the "idea" upon the copyright owner free of the conditions and limitations imposed by the patent law.

Id. at 742 (emphasis added). In Krofft, we further explained:

The idea and the expression will coincide when the expression provides nothing new or additional over the idea.... [p] When idea and expression coincide, there will be protection against nothing other than identical copying of the work.... [T]he scope of copyright protection increases with the extent expression differs from the idea.

562 F.2d at 1168.

The Krofft court provides a test for determining whether idea and expression are indistinguishable: "If, in describing how a work is expressed, the...

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