Design Ideas, Ltd. v. Yankee Candle Co.

• Decision Date: 11 January 2013
• Docket Number: Case No. 10-CV-3217
• Citation: Design Ideas, Ltd. v. Yankee Candle Co., Case No. 10-CV-3217 (C.D. Ill. Jan 11, 2013)
• Parties: DESIGN IDEAS, LTD., an Illinois Corporation, Plaintiff, v. THE YANKEE CANDLE COMPANY, INC., a Massachusetts corporation, Defendant.
• Court: U.S. District Court — Central District of Illinois

DESIGN IDEAS, LTD., an Illinois Corporation, Plaintiff,

v.THE YANKEE CANDLE COMPANY, INC., a Massachusetts corporation, Defendant.

Case No. 10-CV-3217

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF ILLINOIS URBANA DIVISION

ENTERED: January 11, 2013

OPINION

This case is before the court for ruling on the Motion for Attorney Fees (#60) filed by Defendant, the Yankee Candle Company, Inc., the Motion to Reconsider Summary Judgment Pursuant to Rule 59(e) (#61) filed by Plaintiff, Design Ideas, Ltd., and Motions to Correct (#62, #68) filed by Plaintiff. Following this court's careful consideration of the arguments of the parties and the exhibits provided by the parties, Plaintiff's Motions to Correct (#62, #68) are GRANTED, Plaintiff's Motion to Reconsider (#61) is DENIED, and Defendant's Motion for Attorney Fees (#60) is GRANTED.

BACKGROUND

Plaintiff commenced this action on August 24, 2010. Plaintiff alleged that Defendant had distributed glass sculptures which copied nearly exactly Plaintiff's Regatta sculptures. Plaintiff alleged that Defendant's acts constituted willful infringement of its copyrights. On August 9, 2012, this court entered an Opinion (#58) and granted Defendant's Motion for Summary Judgment. This court carefully considered the arguments and exhibits presented,including a set of three sherbet-colored Regatta sculptures provided by Plaintiff as a conventional exhibit. The set consisted of three sailboat shaped sculptures, each of which was a different size and color and had a uniformly sized tea light holder for a base. This court then concluded: (1) that the consistent, well-reasoned decisions of the Copyright Office that Plaintiff's Regatta sculptures were not entitled to copyright protection should be given deference by this court; (2) that the Regatta sculptures were shaped to hold tea lights and, therefore, were useful items; and (3) even if the sailboat shapes attached to the tea light holders were separable from the utilitarian function, the sailboat shapes were not sufficiently creative to be copyrightable. This court stated that "the sailboat shape is a familiar, well-known shape so that decisions regarding curve, size, color, and number included in a set do not make the product sufficiently original so that the work is copyrightable." This court cited Satava v. Lowry, 323 F.3d 805, 811-12 (9th Cir. 2003), a case involving glass-in-glass jellyfish sculptures, to illustrate this court's conclusion that the Regatta sculptures were not sufficiently creative to merit copyright protection.

PENDING MOTIONS

I. MOTION TO RECONSIDER

On September 6, 2012, Plaintiff filed a Motion to Reconsider Summary Judgment Pursuant to Rule 59(e) (#61). Plaintiff attached a Memorandum in Support which was misnamed as a "Motion." On September 7, 2012, Plaintiff filed a Motion to Correct Filing (#62). Plaintiff stated that, by mistake, what should have been labeled and filed as a Memorandum of Law in Support of the Motion was filed as an Exhibit to the Motion.Plaintiff attached a Memorandum of Law and stated that the only difference between this document and what was previously filed was the heading and some minor corrections. Plaintiff's Motion to Correct Filing (#62) is GRANTED. This court has considered the Memorandum of Law attached to the Motion to Correct Filing in ruling on Plaintiff's Motion to Reconsider. On September 24, 2012, Defendant filed its Opposition (#67) to the Motion to Reconsider.

In order to prevail on a Rule 59(e) motion, a plaintiff must clearly establish that there has been a manifest error of law or fact, or that newly discovered evidence precludes entry of judgment. Harrington v. City of Chicago, 433 F.3d 542, 546 (7th Cir. 2006); see also Seng-Tiong Ho v. Taflove, 648 F.3d 489, 505 (7th Cir. 2011). "A 'manifest error' is not demonstrated by the disappointment of the losing party. It is the 'wholesale disregard, misapplication, or failure to recognize controlling precedent.'" Oto v. Metro. Life Ins. Co., 224 F. 3d 601, 606 (7th Cir. 2000), quoting Sedrak v. Callahan, 987 F. Supp. 1063, 1069 (N.D. Ill. 1997). Therefore, it is not enough for a party to take "umbrage with the court's ruling and rehash[] old arguments." Oto, 224 F.3d at 606. This is because a Rule 59(e) motion does not give parties a "second chance" to prevail on the merits. Hutcherson v. Krispy Kreme Doughnut Corp., 803 F. Supp. 2d 952, 956 (S.D. Ind. 2011), citing Fannon v. Guidant Corp., 583 F.3d 995, 1002 (7th Cir. 2009). A judgment shall be altered or amended under Rule 59(e) in the limited circumstances where a court: "(1) patently misunderstood a party[;] or (2) made a decision outside the adversarial issues presented; or (3) made an error not of reasoning but of apprehension." County Materials Corp. v. Allan Block Corp., 436 F. Supp. 2d 997, 999(W.D. Wis. 2006), citing Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990); see also Hutcherson, 803 F. Supp. 2d at 956.

Plaintiff argues that this court "misapprehended and misunderstood [Plaintiff's] asserted works in suit and misapplied the Seventh Circuit's precedent applicable to the case." Plaintiff argued that, when correctly apprehended, and under the applicable Seventh Circuit law, both the frosted white 3-sculpture sailboat set and the sherbet-colored 3-sculpture sailboat set are sufficiently original to have garnered copyright protection upon their creation and fixation by Plaintiff, the Copyright Office's registration refusals notwithstanding. Specifically, Plaintiff insists that this court did not "appear to have apprehended or analyzed [Plaintiff's] said works as sets of three, and rather analyzes single, sculptural units." This court does not agree. Instead, this court agrees with Defendant that this court did not misapprehend the sculptures at issue and properly considered all of Plaintiff's arguments that its sculpture sets were entitled to copyright protection. This court also agrees with Defendant that its Opinion makes it clear that this court carefully examined the sherbet-colored set of sculptures provided by Plaintiff and was well aware that the sculptures were designed in sets of three.

Next, Plaintiff argues that this court improperly relied on the "scenes a faire" doctrine in reaching its conclusion that the sculpture sets were not sufficiently original to warrant copyright protection. "The doctrine of scénes á faire (French for 'scenes for action') prohibits copyright protection in elements or themes that are 'so rudimentary, commonplace, standard, or unavoidable that they do not serve to distinguish one work within a class ofworks from another.'" Schrock v. Learning Curve Int'l, Inc., 586 F.3d 513, 522 n.5 (7th Cir. 2009), quoting Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003). This doctrine has mainly been applied in the film, television, and video contexts. Eagle Servs. Corp. v. H2O Indus. Servs., Inc., 2005 WL 2406041, at *8 (N.D. Ind. 2005).

Plaintiff has argued that the Seventh Circuit has clearly instructed that scénes á faire analysis is not to be used in determining copyright validity, but rather is reserved in determining liability as a limiting doctrine in the substantial similarity analysis, citing Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 913-14 (7th Cir. 1996). It is certainly true that the Seventh Circuit stated in Reed-Union Corp. that the "difference between the scénes á faire doctrine and copyright invalidity is vital to maintain." Reed-Union Corp., 77 F.3d at 914 (emphasis in original).¹

However, Plaintiff has acknowledged that this court did not say it was applying the scénes á faire doctrine in its Opinion. Plaintiff nevertheless insists that this court actually rested its decision on this doctrine. Plaintiff contends that this is shown by this court's citation of Satava, which, according to Plaintiff, is a well known Ninth Circuit scénes á faire case.² This court agrees with Defendant that this court clearly held that the sculptures at issue are not entitled to copyright protection because, to the extent they are conceptuallyseparable, they do not contain sufficient originality. This court did not rely on the scénes á faire doctrine in reaching this conclusion. This court further concludes that its reference to Satava supports its conclusion that the Regatta sculpture sets are not sufficiently original to warrant copyright protection and does not support Plaintiff's argument that this court improperly based its decision on the doctrine of scénes á faire. This court agrees with Defendant that this court cited Satava to emphasize that even the selection of various elements together can still lack the quantum of originality needed to merit copyright protection. See Satava, 323 F.3d at 811-12.

This court concludes that Plaintiff has not shown that it is entitled to relief under Rule 59(e). Accordingly, Plaintiff's Motion to Reconsider (#61) is DENIED.

II. MOTION FOR ATTORNEY FEES

A. PARTIES' FILINGS

On August 24, 2012, Defendant filed a Motion for Attorneys' Fees, Expenses and Costs (#60). Defendant first argued that, as the prevailing party, it is entitled to its attorneys' fees and expenses under the Copyright Act. Defendant also argued that 28 U.S.C. § 1927 provided an additional basis for an award of attorneys' fees because Plaintiff's intentional failure to disclose to both this court and Defendant that its copyright application for the sculptures had been rejected by the Copyright Office prolonged this litigation and directly resulted in Defendant incurring unnecessary fees. Defendant argued that it is entitled to $108,522.00 in attorneys' fees and $342.50 in expenses. Defendant also argued that it is entitled to $25.96 in costs pursuant to Rule 54(d)(1) of the Federal Rules of Civil Procedure.

Defendant attached the affidavit of one of its attorneys, Jacqueline Criswell, in support of its Motion for Attorneys' Fees, Expenses and Costs. In her...