Arvelo v. American Intern. Ins. Co.

• Decision Date: 09 February 1995
• Docket Number: Civ. No. 93-1287 (JP).
• Citation: 875 F. Supp. 95
• Parties: Gilberto ARVELO, Plaintiff v. AMERICAN INTERNATIONAL INSURANCE COMPANY, Defendant.
• Court: U.S. District Court — District of Puerto Rico

875 F. Supp. 95

Gilberto ARVELO, Plaintiff v. AMERICAN INTERNATIONAL INSURANCE COMPANY, Defendant.

Civ. No. 93-1287 (JP).

United States District Court, D. Puerto Rico.

February 9, 1995.

COPYRIGHT MATERIAL OMITTED

Peter John Porrata, Hato Rey, PR and Celso López, San Sebastián, PR, for plaintiff.

Lisa Bhatia Gautier, Cordero, Miranda & Pinto, San Juan, PR, for defendant.

OPINION AND ORDER

PIERAS, District Judge.

The Court has before it defendant's Motion for Summary Judgment (docket No. 40), plaintiff's Opposition to Motion for Summary Judgment and Motion for Partial Summary Judgment (docket No. 49), and the respective supplements to their motions.

Plaintiff, Gilberto Arvelo, filed the instant case alleging copyright infringement, trademark infringement and violation of principles of unfair competition under the Lanham Act against defendant, American International Insurance Company ("AIIC"), for defendant's use of the name "Retail Plus" as the title for its small business owner insurance policy. Plaintiff alleges that he created the name "Retail Plus" and that AIIC infringed upon the copyright of his proposed advertising campaign, infringed general trademark principles and misappropriated his intellectual property by using the name "Retail Plus" for its insurance policy. Defendant admits that it used the title "Retail Plus" for its insurance policy, but denies that this action violates any federal statute.

For the following reasons, defendant's motion is hereby GRANTED and plaintiff's motion is hereby DENIED.

I. UNCONTESTED FACTS

The parties jointly stipulated that the following are uncontested facts:

1. Plaintiff, Mr. Gilberto Arvelo, is a publicist and resident of Puerto Rico.

2. Defendant, American International Insurance Company, is an insurance company incorporated under the laws of the Commonwealth of Puerto Rico.

3. AIIC developed an insurance policy for small business owners during the spring of 1991. An authentic, complete and accurate copy of AIIC's insurance policy entitled "Retail Plus" is found as Exhibit D to defendant's Motion for Summary Judgment (docket No. 40), which was submitted in defendant's Motion Submitting Documents (docket No. 47).

4. AIIC held a competition between its employees in order to chose a new name for the policy. Between thirty and forty names were suggested during this competition, however, none of those names was selected.

5. Mr. Carlos Amy, the AIIC marketing manager in charge of developing the new insurance policy, invited Mr. Gilberto Arvelo to create an advertising campaign for AIIC, including ideas for marketing the new insurance policy. They also asked Mr. Arvelo to produce a name for the policy.

6. Mr. Arvelo created such an advertising campaign for AIIC and presented the campaign to AIIC corporate officers on May 14, 1991. In conjunction with the advertising campaign, Mr. Arvelo invented the name "Retail Plus" for the new insurance policy.

7. Defendant had access to Mr. Arvelo's entire advertising campaign, including the name "Retail Plus", during Mr. Arvelo's presentation to AIIC corporate officers on May 14, 1991.

8. Soon after the presentation, Mr. Amy notified Mr. Arvelo that AIIC was not interested in implementing his whole advertising campaign; AIIC was only interested in the name, "Retail Plus", which Mr. Arvelo had suggested for AIIC's new insurance policy.

9. AIIC offered to pay Mr. Arvelo Two Hundred and Fifty Dollars ($250.00) for the name "Retail Plus".

10. Mr. Arvelo rejected AIIC's offer of paying Two Hundred and Fifty dollars ($250.00) for the name "Retail Plus".

11. Mr. Amy, the marketing manager who had negotiated with Mr. Arvelo for the use of the name "Retail Plus", suggested to other AIIC department heads that AIIC adopt the name "Retail Plus" for its insurance policy.

12. The department heads reached a consensus and adopted the name "Retail Plus" for AIIC's insurance policy.

13. On November 20, 1991, AIIC received trademark registration for the trademark "Retail Plus" at the Division of Corporations and Trademarks of the Department of State, Commonwealth of Puerto Rico, number 30,476.

14. On September 18, 1992, Mr. Arvelo obtained federal registration copying the advertising campaign that he had created for AIIC, number TX 538 977. An authentic, complete and accurate copy of Mr. Arvelo's copyrighted advertising campaign is found as Exhibit D to defendant's Motion for Summary Judgement (docket No. 40) which was submitted in defendant's Motion Submitting Documents (docket No. 47). Plaintiff accepted that this is a true copy of his copyrighted advertising campaign.

15. Plaintiff admits that ten pages of the twenty-eight page copyrighted advertising campaign contain public information and are therefore not copyrightable material.

16. Six pages are dedicated to "American International Insurance Media Recommendation" containing cost estimates of advertising for different stages of the proposed media campaign.

17. Four pages contain a breakdown of the different types of newspaper advertisements, a list of when the suggested advertisements should appear in the newspapers, and an approximation of the cost of the advertising during each stage.

18. The remaining eight pages of Mr. Arvelo's advertising campaign contain four proposals for advertisements. For each proposed advertisement, there is a copy of the actual advertisement, followed by a one-page textual description of the advertisement.

19. Defendant's twenty-six page insurance policy is titled "Retail Plus". It is a general business liability policy designed for small business owners, containing detailed terms and conditions for compliance with insurance coverage, such as what is covered and what is excluded under the policy; what are the policy limits and deductibles; specific and general conditions regarding property loss; and provisions on optional coverage.

20. The name "Retail Plus" is mentioned at least three times in the insurance policy, on the first page of every section: property coverage, general liability coverage, and common policy conditions.

21. Plaintiff admits that AIIC did not copy any other aspect of his copyrighted advertising campaign, besides the name "Retail Plus" and that both documents are not substantially similar.

22. Plaintiff did not obtain any trademark registration, either federal or in the Commonwealth of Puerto Rico, for the mark "Retail Plus".

23. Plaintiff never sold any good or service under the name "Retail Plus", nor used the name in any other capacity with the exception of the proposal, which was later on copyrighted.

II. MOTION FOR SUMMARY JUDGMENT STANDARD

Rule 56(c) of the Federal Rules of Civil Procedure provides for the entry of summary judgment in a case where "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 judgment as a matter of law." Fed.R.Civ.P. 56(c); Pagano v. Frank, 983 F.2d 343, 347 (1st Cir.1993); Brennan v. Hendrigan, 888 F.2d 189, 191 (1st Cir.1989); Lipsett v. University of Puerto Rico, 864 F.2d 881, 894 (1st Cir.1988).

Summary judgment is appropriate where, after drawing all reasonable inferences in favor of the party against whom summary judgment is sought, there is not the slightest doubt as to whether a genuine issue of material fact exists. Kennedy v. Josephthal & Co., 814 F.2d 798, 804 (1st Cir.1987); Peckham v. Ronrico Corp., 171 F.2d 653 (1st Cir.1948). A "genuine" issue is one that is dispositive, and which consequently must be decided at trial. Mack v. Great Atlantic and Pacific Tea Co., 871 F.2d 179, 181 (1st Cir. 1989); Anderson v. Liberty Lobby, 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986). A material fact, which is defined by the substantive law, is one which affects the outcome of the suit and which must be resolved before attending to related legal issues. Mack, 871 F.2d at 181.

The party filing a motion for summary judgment bears the initial burden of proof to show "that there is an absence of evidence to support the non-moving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986). Thereafter, the burden shifts to the non-movant to provide the Court, through the filing of supporting affidavits or otherwise, with "some indication that he can produce the quantum of evidence necessary to enable him to reach the jury with his claim." Hahn v. Sargent, 523 F.2d 461, 468 (1st Cir.1975); see also Brennan, 888 F.2d at 191. The non-movant cannot rest upon mere allegations or denial of the pleadings. Fed. R.Civ.P. 56(e). Indeed, the non-movant must affirmatively show that "sufficient evidence supporting the claimed factual dispute exists to require a jury or judge to resolve the parties' differing versions of truth at trial." First National Bank v. Cities Service Co., 391 U.S. 253, 288-89, 88 S.Ct. 1575, 1592, 20 L.Ed.2d 569 (1968). On issues where the non-movant bears the ultimate burden of proof, he must present definite, competent evidence to rebut the motion. See Anderson, 477 U.S. at 256-57, 106 S.Ct. at 2514-15.

III. COPYRIGHT INFRINGEMENT

The owner of a federally registered copyright has the exclusive right to reproduce the copyrighted work, 17 U.S.C. § 106, and violation of that right can constitute infringement, 17 U.S.C. § 501. To establish a claim of copyright infringement, plaintiff has the burden of proving that defendant copied the protected work. Motta v. Samuel Weiser Inc., 768 F.2d 481, 483 (1st Cir.), cert. denied, 474 U.S. 1033, 106 S.Ct. 596, 88 L.Ed.2d 575 (1985). Concrete Machinery Company, Inc. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir.1988).

Since direct evidence that defendant has copied plaintiff's work is generally unobtainable, copying can be inferred from two elements: first, that defendant had access to...