Hartman v. Hallmark Cards, Inc.

• Citation: 833 F.2d 117,4 USPQ2d 1864
• Decision Date: 12 November 1987
• Docket Number: 86-2015,Nos. 86-1926,s. 86-1926
• Parties: 1987 Copr.L.Dec. P 26,189, 4 U.S.P.Q.2d 1864 Debra K. HARTMAN a/k/a Kay Kingsley, Appellant, v. HALLMARK CARDS, INCORPORATED, Mattel, Inc., Appellees. Debra K. HARTMAN a/k/a Kay Kingsley, Appellee, v. HALLMARK CARDS, INCORPORATED, Mattel, Inc., Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

Page 117

833 F.2d 117

1987 Copr.L.Dec. P 26,189, 4 U.S.P.Q.2d 1864

Debra K. HARTMAN a/k/a Kay Kingsley, Appellant, v. HALLMARK CARDS, INCORPORATED, Mattel, Inc., Appellees.

Debra K. HARTMAN a/k/a Kay Kingsley, Appellee, v. HALLMARK CARDS, INCORPORATED, Mattel, Inc., Appellant.

Nos. 86-1926, 86-2015.

United States Court of Appeals,

Eighth Circuit.

Submitted Feb. 9, 1987.

Decided Nov. 12, 1987.

Charles W. Grimes, Stamford, Conn., for appellant.

Robert L. Driscoll, Kansas City, Mo., for appellees.

Before McMILLIAN and FAGG, Circuit Judges, and WOODS, ^* District Judge.

FAGG, Circuit Judge.

Debra K. Hartman appeals the summary judgments entered in favor of defendants Hallmark Cards, Incorporated (Hallmark), and Mattel, Inc. (Mattel), in Hartman's suit for violations of the federal copyright and trademark laws and related state common law claims. See 17 U.S.C. Sec. 501; 15 U.S.C. Sec. 1125(a). Hartman asserts Hallmark and Mattel used Hartman's copyrighted graphics and script entitled "The Adventures of Rainbow Island" (Rainbow Island) as the basis for their commercially successful "Rainbow Brite" character and products (Rainbow Brite).

The district court determined Rainbow Island and Rainbow Brite are not substantially similar and granted summary judgment for Hallmark on each of the federal claims and one of the two state law claims. The remaining pendent state law claim was dismissed without prejudice. See Hartman v. Hallmark Cards, Inc., 639 F.Supp. 816 (W.D.Mo.1986). The district court granted Mattel's later similar motion for summary judgment and entered final judgment in the case. Hartman appeals, and we affirm.

Hallmark cross-appeals from the district court's unpublished order denying Hallmark's motion for attorney fees under the Copyright Act, 17 U.S.C. Sec. 505, the Lanham Act, 15 U.S.C. Sec. 1117, and rule 11 of the Federal Rules of Civil Procedure. We affirm the order denying fees.

Hartman is a free-lance author and artist who obtained a copyright on Rainbow Island in January 1983. During the first few months of 1983 she discussed with Hallmark the content of Rainbow Island and its possible adaptation for use by Hallmark. Hartman submitted Rainbow Island to Hallmark for consideration but Hallmark rejected it. The Rainbow Brite character was created and copyrighted over a period that encompassed the time during which Hartman submitted Rainbow Island to Hallmark. Hallmark developed Rainbow Brite greeting cards and animated television specials and granted licenses to Mattel and others permitting the manufacture and sale of Rainbow Brite merchandise including dolls and toys.

I.

Hartman's arguments on appeal fall into two categories. First, she contends summary judgment relief is inappropriate in this case. Second, Hartman disputes the district court's holding on the pivotal issue of substantial similarity. We reject each of Hartman's contentions.

Hartman claims summary judgment is inappropriate because the district court record was incomplete at the time Hallmark's and Mattel's motions were considered. This claim is based on Hartman's contention the record did not contain some of the items that as a whole make up Rainbow Brite as a commercial property, and because the record contained only inaccurate synopses of others. Hartman argues the district court thus could not have made an adequate comparison of Rainbow Brite and Rainbow Island. We disagree.

The district court indicated in its decision it had reviewed United States Copyright Office authentications of Rainbow Brite and Rainbow Island, the animated productions, and related Rainbow Brite retail merchandise in connection with the motions for summary judgment. The district court also stated it was not relying on any party's synopsis, inaccurate or otherwise, in making its comparison of Rainbow Island and Rainbow Brite. In sum, it is apparent the district court considered the items identified as infringements by Hartman in her complaint: the Rainbow Brite graphics, story line, and television specials.

In view of the fact Hartman agreed to suspend pretrial discovery she is now in no position to contend the district court record was incomplete if it did not contain every commercial application of the Rainbow Brite character. Hartman did not file an affidavit stating any reason she could not effectively oppose Hallmark's motion, and Hartman did not seek to compel further discovery, see Fed.R.Civ.P. 56(f), thus refuting Hartman's contention further discovery was necessary to resolve the motions. See, e.g., Cassidy, Inc. v. Hantz, 717 F.2d 1233, 1235 (8th Cir.1983) (per curiam); Beckers v. International Snowmobile Indus. Ass'n, 581 F.2d 1308, 1311 (8th Cir.1978), cert. denied, 440 U.S. 986, 99 S.Ct. 1801, 60 L.Ed.2d 248 (1979); see also Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 2554-55, 91 L.Ed.2d 265 (1986). Considering the items reviewed by the district court and Hartman's election not to seek to compel discovery, we conclude the record before the district court was adequate to permit decision on the motions for summary judgment.

Hartman also challenges the district court's holding on what it correctly recognized as the central issue--whether Rainbow Brite and Rainbow Island are substantially similar works. To establish her claim for copyright infringement in the absence of direct evidence of copying, Hartman had to prove: (1) her ownership of the copyright in Rainbow Island; (2) access by Hallmark and Mattel to Rainbow Island; and (3) substantial similarity between Rainbow Island and Rainbow Brite in both ideas and expression. McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 318 (9th Cir.1987); Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir.1987). Hallmark and Mattel conceded the first two elements for purposes of the motions for summary judgment, leaving for resolution only the issue of substantial similarity.

Determination of substantial similarity involves a two-step analysis. McCulloch, 823 F.2d at 319. There must be substantial similarity "not only of the general ideas but of the expressions of those ideas as well." Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977). First, similarity of ideas is analyzed extrinsically, focusing on objective similarities in the details of the works. McCulloch, 823 F.2d at 319. Second, if there is substantial similarity in ideas, similarity of expression is evaluated using an intrinsic test depending on the response of the ordinary, reasonable person to the forms of expression. Id. The district court employing the two-step analysis found Hartman's work consisted almost entirely of noncopyrightable general themes or ideas and in any event that the expression by Hallmark and Mattel of any similar ideas did not satisfy the intrinsic test for expression.

Hartman argues the district court failed to recognize the existence of a fact question on the issue of substantial similarity because it ignored the affidavits of literary experts listing similarities of expression between Rainbow Brite and Rainbow Island. The listing of similarities does not alone generate an issue of material fact precluding summary judgment. Litchfield v. Spielberg, 736 F.2d 1352, 1356-57 (9th Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985). Although expert opinion evidence is admissible in connection with the first step of the substantial similarity analysis to show similarity of ideas, analytical dissection and expert opinion are not called for under the second step in which substantial similarity of expression is measured by a different standard--the response of the ordinary, reasonable person. See Baxter, 812 F.2d at 424; Walker v. Time Life Films, Inc., 784 F.2d 44, 51-52 (2d Cir.1986); O'Neill v. Dell Publishing Co., 630 F.2d 685, 690 (1st Cir.1980); Sid & Marty Krofft Television Prods., Inc., 562 F.2d at 1164. By virtue of the standard employed, neither is evidence of an industry's custom relevant under the intrinsic test, and we reject Hartman's argument the district court improperly failed to consider evidence of custom and usage within the artistic design industry. The district court, while not a qualified literary critic, was "fitted by training and experience to compare [the] works and determine whether they evidence substantial similarity." O'Neill, 630 F.2d at 690. Thus, the district court did not commit error in proceeding to the second step to make its determination at the summary judgment stage. See Baxter, 812 F.2d at 424.

Summary judgment is not favored, but when substantial similarity is the sole issue it is appropriate if the works are so dissimilar that "reasonable minds could not differ as to the absence of substantial similarity in expression." Litchfield, 736 F.2d at 1355-56; see also Berkic v. Crichton, 761 F.2d 1289, 1292-93 (9th Cir.), cert. denied, 474 U.S. 826, 106 S.Ct. 85, 88 L.Ed.2d 69 (1985). Infringement of expression occurs only when the total concept and feel of the works in question are substantially similar. Baxter, 812 F.2d at 424. After reviewing the district court's comprehensive opinion and the record, including the content of Rainbow Island and Rainbow Brite, we agree with the district court's conclusion the two creations are not substantially similar in expression. We also agree any remaining apparent similarities are either noncopyrightable ideas, scenes a faire, or of an insubstantial nature. Summary judgment was properly entered against Hartman on her copyright claims.

In view of our conclusion on the issue of substantial similarity, Hartman has " 'little basis for asserting a likelihood of [consumer] confusion' * * * for purposes of a claim under * * * the Lanham Act." Warner Bros., Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231, 246 (2d Cir.1983) (quoting Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir.1980)); see also Mihalek Corp. v. Michigan, 814 F.2d 290, 296 (6th...