Grubb v. KMS Patriots, L.P.

• Decision Date: 20 June 1996
• Docket Number: No. 95-2375,95-2375
• Citation: 88 F.3d 1
• Parties: 1996 Copr.L.Dec. P 27,544, 39 U.S.P.Q.2d 1187 James L. GRUBB, Jr., Plaintiff-Appellant, v. KMS PATRIOTS, L.P. and National Football League Properties, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — First Circuit

Page 1

88 F.3d 1

1996 Copr.L.Dec. P 27,544, 39 U.S.P.Q.2d 1187

James L. GRUBB, Jr., Plaintiff-Appellant, v. KMS PATRIOTS, L.P. and National Football League Properties Inc., Defendants-Appellees.

No. 95-2375.

United States Court of Appeals First Circuit.

June 20, 1996.

Blair L. Perry, with whom Heidi E. Harvey and Fish & Richardson P.C., Boston, MA, were on brief, for appellant.

Daniel L. Goldberg, with whom Paul M. Robertson and Bingham, Dana & Gould, Boston, MA, were on brief, for appellees.

Before TORRUELLA, Chief Judge, STAHL and LYNCH, Circuit Judges.

TORRUELLA, Chief Judge.

Plaintiff-Appellant James L. Grubb, Jr. ("Grubb" or "Plaintiff"), challenges the district court's grant of summary judgment for Defendants-Appellees KMS Patriots, L.P. (the "Patriots"), and National Football League Properties, Inc. ("NFL Properties") (collectively "Defendants"), on Grubb's claims of copyright infringement under 17 U.S.C. § 501. We affirm the decision of the district court.

I. BACKGROUND

Resolving reasonable inferences in favor of Grubb, the nonmovant, the summary judgment materials show the following.

The Patriots, a professional football team and a member of the National Football League, informed NFL Properties on January 17, 1993, that they were considering a logo change for the upcoming season. NFL Properties, among other tasks, manages design and publishing production assignments for the National Football League. At a meeting between Patriots officials and NFL Properties representatives on January 27, 1993, the Patriots asked that the design of the new logo be created within the next few weeks.

Accordingly, NFL Properties contacted several independent design firms. On January 27, 1993, Bradley Jansen ("Jansen") of NFL Properties approached Evenson Design Group ("Evenson") about the project, and Evenson agreed to begin work. Via overnight courier, Jansen sent to Evenson a package containing, among other things, a purchase order and designs similar to the one that the Patriots had considered and rejected in 1979 ("the 1979 proposed Patriots logo"). Jansen continued to be in contact with, and meet with, Patriots employees thereafter.

The package was received on January 28, 1993. In his deposition, Ken Loh ("Loh"), an Evenson employee, stated that he began sketching the design that the Patriots eventually chose to replace their old logo ("the Patriots' new logo"). With the aid of his timesheets, which were generated by a computer program that both Plaintiff and Defendants have stipulated could not be backdated, Loh indicated that he had virtually completed the Patriots' new logo by February 4, 1993. Referring to his timesheets, Loh stated that as of that date he began work on creating other logos and revising the logo he had already created, which he identified as the Patriots new logo.

On February 12, 1993, Evenson sent Loh's design to NFL Properties. Representatives of NFL Properties met with the Patriots on February 18, 1993. The Patriots were shown many proposed logos, including Loh's. The Patriots selected Loh's design as their new logo on March 5, 1993.

Meanwhile, on February 9, 1993, having heard through the news media that the Patriots planned to change their logo, Grubb submitted an unsolicited proposed design ("Grubb's design") to the Patriots' office in Foxborough, Massachusetts. In his deposition, Grubb stated that he was told by a Patriots' employee that the Patriots would contact him later regarding his submission. Grubb holds a Certificate of Copyright Registration for his design, which the United States Copyright Office issued to him effective February 1, 1994.

The Patriots' new logo and Grubb's design contain some of the same elements, including a man's face in profile, stars, and stripes. ¹ The district court granted summary judgment to Defendants. The district court concluded that Grubb failed to show that Loh had access to Grubb's work, relying in part on the fact that the Patriots established and followed a policy that was designed to prevent designers--such as Loh--from seeing outside submissions. Additionally, the district court found that Loh composed the Patriots' new logo independently of Grubb's design. In the instant appeal, Grubb challenges the district court's grant of summary judgment to Defendants. In particular, Grubb argues that his Supplemental Affidavit, in which Grubb compares Loh's work and his own, asserts facts that create a direct conflict with Loh's testimony, on which the district court relied. In the Supplemental Affidavit, Grubb states that "the relative proportions of the elements of the two designs are substantially identical and the curve of the base line ... appears to be a precise match," and that Loh's work was "probably ... traced from some other drawing." According to Grubb, the district court erred in crediting Loh's testimony in light of Grubb's Supplemental Affidavit.

II. STANDARD OF REVIEW

Summary judgment is appropriate when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits ... show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Kelly v. United States, 924 F.2d 355, 357 (1st Cir.1991); see also Fed.R.Civ.P. 56(c). Under Rule 56(c), the opponent of the motion must produce evidence on which a reasonable finder of fact, under the appropriate proof burden, could base a verdict for the opponent; if the opponent cannot produce such evidence, the motion must be granted. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby, 477 U.S. 242, 249, 106 S.Ct. 2505, 2510-11, 91 L.Ed.2d 202 (1986).

III. DISCUSSION

To prevail on a claim of copyright infringement, a plaintiff must show two elements: (1) ownership of a valid copyright and (2) copying of the protected work by the alleged infringer. See Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir.1988); 3 Melvin B. Nimmer, The Law of Copyright § 13.01 at 13-3 (1987). Defendants do not contest Plaintiff's ownership of a valid copyright on his design. Therefore, we turn to the issue of whether summary judgment was proper with respect to the alleged copying.

"Proof by direct evidence of copying is generally not possible since the actual act of copying is rarely witnessed or recorded." Concrete Mach., 843 F.2d at 606. Absent direct evidence, copying may be inferred from a showing that the defendant had "access" to the plaintiff's work prior to the creation of defendant's work, Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir.1987), and that there is "substantial similarity" between the works, Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986); see Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1162-63 (9th Cir.1977). Even if both showings are made, however, the trier of fact may nonetheless find no copying if the defendant shows independent creation. Concrete Mach., 843 F.2d at 606 n. 6; Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 501 (2d Cir.1982). Viewing the summary judgment record in the best light for Plaintiff, we conclude that he has failed to raise a genuine issue of material fact with respect to Defendants' "access"; this deficiency alone suffices to justify summary judgment.

To satisfy its burden of showing access, the plaintiff must produce evidence from which a reasonable finder of fact could infer that the defendant had a reasonable opportunity to copy his or her work. See Selle v. Gibb, 741 F.2d 896, 901 (7th Cir.1984). Evidence that only creates a "bare possibility" that the defendant had access is not sufficient to create a factual issue as to copying. Jason v. Fonda, 526 F.Supp. 774, 777 (C.D.Cal.1981) (concluding that the fact that between 200 and 700 copies of plaintiff's book were available in Southern California bookstores was insufficient to infer that defendant movie producers had a reasonable opportunity to copy it), aff'd, 698 F.2d 966 (9th Cir.1982). "[T]he jury cannot draw an inference of access based upon speculation and conjecture alone." Selle, 741 F.2d at 901.

On the summary judgment materials before it, the district court concluded that, even drawing all favorable inferences for Grubb, the evidence did not demonstrate that Loh had access to Grubb's design; in fact, it showed that Loh composed his design independently of and prior to Grubb's work. With respect to Loh's access, Grubb contends that the district court erred, since an alleged copier's access may be proven by showing that an intermediary with whom the copier was involved had access to the copyrighted work under circumstances in which the copier also may have been given an opportunity to view the copyrighted work. Grubb also argues that his Supplemental Affidavit is evidence that Loh had access to Grubb's design. With respect to the district court's finding of independent prior creation, Grubb argues that Loh's testimony suggests that Loh traced the Patriots' New Logo from another design. Grubb also questions Loh's credibility, and submits that Grubb's Supplemental Affidavit is evidence that Loh did not independently create the Patriots' new logo prior to Grubb's design.

Turning first to Loh's access, it is undisputed that the Patriots received Grubb's sketch on February 9, 1993, via Grubb's unsolicited submission. Grubb points to several pieces of evidence that he believes shows Loh had a reasonable opportunity to copy Grubb's design. First, according to Grubb's deposition, the individual Patriots' employee to whom he gave the design told him that the Patriots would get in contact with him in the future. Additionally, Grubb points to the fact that Jansen, as an employee of NFL Properties, admits that he had contact with representatives of the Patriots beginning...