823 F.2d 316 (9th Cir. 1987), 86-6241, McCulloch v. Albert E. Price, Inc.

Docket Nº:86-6241, 86-6751.
Citation:823 F.2d 316
Party Name: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.
Case Date:July 28, 1987
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 316

823 F.2d 316 (9th Cir. 1987)

3 U.S.P.Q.2d 1503

Carolyn N. McCULLOCH, Lucyann W. Cameron, Elizabeth P.

Smoot, the Original Red Plate Company, Plaintiffs-Appellees,


ALBERT E. PRICE, INC., Defendant-Appellant.

Nos. 86-6241, 86-6751.

United States Court of Appeals, Ninth Circuit

July 28, 1987

Argued and Submitted June 2, 1987.

Page 317

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

Page 318

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.


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.


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.


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

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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...

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