CMM Cable Rep., Inc. v. OCEAN COAST PROPERTIES

• Decision Date: 04 November 1994
• Docket Number: Civ. No. 94-290-P-H.
• Citation: 879 F. Supp. 132
• Parties: CMM CABLE REP., INC. d/b/a Creative Media Management, Plaintiff, v. OCEAN COAST PROPERTIES, INC. d/b/a WPOR-FM, et al., Defendants.
• Court: U.S. District Court — District of Maine

879 F. Supp. 132

CMM CABLE REP., INC. d/b/a Creative Media Management, Plaintiff, v. OCEAN COAST PROPERTIES, INC. d/b/a WPOR-FM, et al., Defendants.

Civ. No. 94-290-P-H.

United States District Court, D. Maine.

November 4, 1994.

Anne S. Mason, Mason & Associates, Clearwater, FL, John H. Rich, III, William J. Sheils, Perkins Thompson Hinckley & Keddy, Portland, ME, for plaintiff.

James G. Goggin, Roy S. McCandless, Verrill & Dana, Portland, ME, for defendants.

ORDER ON PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

HORNBY, District Judge.

The plaintiff seeks issuance of a preliminary injunction against the defendants based upon copyright infringement, trademark infringement and trade dress infringement. I heard testimony and received exhibits on October 18, October 31 and November 1, 1994. In this Circuit, the standards for granting a preliminary injunction are clear. Specifically, the Court must find that (1) the plaintiff will suffer irreparable harm without the injunction; (2) this injury outweighs any harm to the defendant; (3) the plaintiff has exhibited a likelihood of success on the merits; and (4) the public interest will not be adversely affected. See Gately v. Commonwealth of Massachusetts, 2 F.3d 1221, 1224 (1st Cir.1993), cert. denied, ___ U.S. ___, 114 S.Ct. 1832, 128 L.Ed.2d 461 (1994).

CMM Cable Rep. Inc., d/b/a Creative Media Management, Inc. ("CMM") designs and provides direct mail programs for radio stations to help them increase and preserve listenership. Traditionally, for competitive reasons, such services can only be sold to one radio station at a time in a given market, and CMM follows this tradition. One of CMM's most successful promotions is its PAYROLL CHECKOFF or PAYCHECK PAYOFF direct mail contests. CMM has trademarked these items and has copyrighted the materials it has used in these campaigns at various radio stations. As noted in a recent decision and as the evidence shows here,

the general concept of the PAYROLL PAYOFF and PAYCHECK PAYOFF promotions is to entice a listener to tune into the radio station by promising payment of an "hourly wage" by the radio station if the listener calls in after his or her name is selected and read on the air. One name is read each hour during a pre-determined time span. If a listener does not call the radio station in response to his or her name being read over the air, the prior successful caller continues to be paid. This caller gets paid an amount every hour until the next successful caller responds to his or her name being read on the air or until the contest ends. Listeners supply their names to the station in response to direct mail pieces containing mail-in or faxin forms.

CMM Cable Rep., Inc. v. Keymarket Communications, Inc., 870 F.Supp. 631 (M.D.Pa. 1994). CMM has discussed this type of promotion with its Portland client WMGX, but WMGX has not yet used it, preferring other promotional devices that CMM markets. Use of the payroll- or paycheck- type campaign by a competitor like the defendant Ocean Coast Properties, Inc. d/b/a WPOR-FM ("WPOR") makes it unlikely that WMGX would purchase it from CMM.

WPOR learned of the payroll contest idea from seeing a CMM brochure that radio station WIKX ("KIX") used in the Punta Gorda, Florida, market. William Therriault of WPOR called CMM to inquire about buying the promotion, but was told that CMM could not do business with WPOR because CMM already had a client in the Portland market. WPOR then inquired of its marketing consultant McVay Media. McVay Media had in its files examples of "Payday" contests and "boilerplate" for a payroll-type contest. It advised WPOR to consult with its lawyers about any infringement questions before proceeding. McVay representatives also told WPOR that a number of such contests had been used over the years.¹

WPOR then prepared a typewritten sheet of copy that it wished to use (it is not in evidence) and took the KIX brochure and the typewritten sheet of copy to its graphic designer, Graphics Northern. It told the graphic designer to prepare a brochure for a "PAYDAY contest" campaign but to avoid copying the KIX brochure. Mr. Spizuoco, the Graphics Northern designer, testified that he put away the KIX brochure before he designed the WPOR brochure. On the witness stand, he described differences between them. Those differences include such things as typestyle, colors, certain layout elements and the substitution of a time clock motif for the cowboy (boot and lariat) motif in the KIX brochure.

Copyright Infringement

The standards for preliminary injunctive relief are modified somewhat in copyright infringement cases. Specifically, if likelihood of success is shown, "irreparable harm is usually presumed," Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 611 (1st Cir.1988), and there is "no need actually to prove irreparable harm." Id. at 612. Moreover, "the issue of public policy rarely is a genuine issue if the copyright owner has established a likelihood of success." Id. Finally, "where the only hardship that the defendant will suffer is lost profits from an activity which has been shown likely to be infringing, such an argument in defense `merits little equitable consideration.'" Id. (quoting Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325, 1333 (7th Cir.1977), cert. denied, 434 U.S. 1070, 98 S.Ct. 1252, 55 L.Ed.2d 772 (1978)). Consequently, it is clear that in a copyright infringement case the first and critical factor to be considered is the likelihood of success on the merits. The strength of this likelihood may affect the analysis of hardship to the defendant. Id.

Likelihood of Success

The copyright infringement claim here is based largely upon the assertion that the WPOR PAYDAY contest direct mailer, newspaper advertisements, radio and television commentary now being used in the Portland area infringe CMM's copyrighted direct mail brochure for WIKX in Punta Gorda, Florida. No registration certificate has been presented to the Court for the KIX brochure, but it is undisputed that CMM has filed for registration. Depending on its timing, the filing may have an impact on issues like damages and attorney fees, but it does not affect the claim for injunctive relief. See 17 U.S.C. §§ 412, 502. Preliminary injunctive relief is a hotly contested issue because WPOR and CMM's client, WMGX, are competitors now in the midst of the Arbitron fall sweeps. Listenership statistics accumulated now as a result of the contest will affect advertising revenue over the next six months.

In evaluating likelihood of success, I must first determine whether CMM has anything that is copyrightable. At one extreme, clearly it does, inasmuch as the copyrighted KIX brochure includes elements of text, layout and design. At the other extreme, it is also clear that CMM cannot copyright an idea. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-45, 111 S.Ct. 1282, 1286-87, 113 L.Ed.2d 358 (1991).² As Judge Learned Hand and Professor Nimmer have observed, however, the idea/expression dichotomy, though neat, often does not solve real disputes.³

In essence, the parties here are fighting over the use of a radio direct mail promotion. At one level of abstraction,⁴ the concept is that of a sweepstakes: names are drawn randomly for a cash award. At a different level, the concept involves an accumulating cash jackpot with a "hook" through the direct mail brochure to persuade a radio station listener to become or remain a listener to the particular station. The listener completes an entry form, mails it in, then listens to the radio station in the hope of hearing her name announced. If she calls in upon hearing her name announced, she wins a cash award that accumulates until someone else whose name is announced calls in. At still a third level, the concept involves a metaphor of employment. The listener winning the accumulating cash award is described as an employee on the payroll of the radio station who is paid a wage for listening until someone else takes her place by calling in. The fourth level is the actual words, design and layout used.

It is easy enough under Feist Publications' idea/expression dichotomy to conclude that the concept of a sweepstakes is not copyrightable and that the concept of an accumulating cash jackpot paid out to people who write in, listen and then telephone the station is likewise not copyrightable. But can someone copyright the metaphor of employment for these ideas on the basis that the metaphorical terminology of employment is protectible expression? If the employment metaphor is on the protected expression side of the line, has CMM contributed the modicum of originality required for copyright? See Feist Publications, 499 U.S. at 345-47, 111 S.Ct. at 1287-88. The answer to the last question avoids the need to answer the more difficult one that precedes it.

The evidence shows that before CMM copyrighted its material, its principal, Ms. Izor, was aware of an existing radio broadcast promotion called "Working Women's Wednesday." This promotion paid an accumulating cash award on Wednesday to a woman who called in; she was termed an employee of the station until a succeeding caller displaced her. Ms. Izor gave the following questions and answers on cross-examination:

Q. What was it that caused you to think of let's have a Payroll Payoff promotion?

A. Hearing Working Women's Wednesday on the air at KTK and hearing the actual methodology of earning an hourly wage.

Q. Those are the things that prompted you to come up with the Payroll Payoff contest?

A. It prompted me to take that particular mechanic and expand it into a total week campaign, create graphics to go with it, make it a full-time job instead of a part-time job, make it available to everyone instead of women and make it much more than a Wednesday type contest.

Transcript of October 18, 1994 Hearing, p. 127 lines 10-20 (emphasis supplied).

Although...