Matthews v. Freedman

• Decision Date: 15 September 1998
• Docket Number: No. 98-1408,98-1408
• Citation: 157 F.3d 25
• Parties: 1998 Copr.L.Dec. P 27,831, 48 U.S.P.Q.2d 1374 Denise MATTHEWS, d/b/a J.D. Benjamin Company, Plaintiff, Appellant, v. Alan FREEDMAN, d/b/a Freedman Enterprises, Elliot Kaplan, and Camelot Enterprises, Inc., Defendants, Appellees. . Heard
• Court: U.S. Court of Appeals — First Circuit

Page 25

157 F.3d 25

1998 Copr.L.Dec. P 27,831, 48 U.S.P.Q.2d 1374

Denise MATTHEWS, d/b/a J.D. Benjamin Company, Plaintiff, Appellant, v. Alan FREEDMAN, d/b/a Freedman Enterprises, Elliot Kaplan and Camelot Enterprises, Inc., Defendants, Appellees.

No. 98-1408.

United States Court of Appeals First Circuit.

Heard Sept. 15, 1998.

Decided Oct. 9, 1998.

James G. Goggin with whom Jacqueline W. Rider and Verrill & Dana, LLP were on brief for appellant.

Andrew D. Epstein with whom Barker, Epstein & Loscocco was on brief for appellees.

Before SELYA, Circuit Judge, ALDRICH, Senior Circuit Judge, and BOUDIN, Circuit Judge.

BOUDIN, Circuit Judge.

Denise Matthews, a fabric designer and wholesale distributor of "soft-good" souvenirs, makes and sells a children's t-shirt with a design entitled, "Someone Went to Boston and got me this shirt because they love me Very much." This phrase appears on a t-shirt surrounded by small drawings of a fish, a sailboat, a lobster, Faneuil Hall, and scattered hearts. Matthews registered this "Someone ..." t-shirt design with the U.S. Copyright Office, receiving a certificate of registration effective August 9, 1995.

In February 1997, Alan Freedman, a competing souvenir producer, began offering a children's t-shirt with the slogan "Someone Who Loves Me Went to Boston and Got Me this Shirt." This phrase appears on the Freedman t-shirt and is surrounded by small drawings of a fish, a sailboat, a lobster, a swan boat, ducklings, and a smiling sun. Freedman and Matthews both attend the Boston Gift Show where Freedman has seen Matthews' "Someone ..." t-shirt displayed.

Matthews filed suit against Freedman for copyright infringement under 17 U.S.C. § 501 et seq. in August 1997. The district court held a non-jury trial on January 21, 1998, and issued a memorandum and order dated February 5, 1998, granting judgment in favor of Freedman on the ground that Freedman's t-shirt did not infringe upon the protectible elements of Matthews' design. Thereafter, the district court also awarded attorney's fees to Freedman in the amount of $25,000. This appeal by Matthews followed.

To make out a copyright infringement, a plaintiff must show ownership of a valid copyright--not questioned here--and the "copying of constituent elements of the work that are original." Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). As to this latter element, sometimes the dispute concerns the factual question of whether the defendant saw and copied the plaintiff's work; but in other cases, as in this one, the dispute centers around more subtle, related questions: what aspects of the plaintiff's work are protectible under the copyright laws and whether whatever copying took place appropriated those elements.

A major limitation on what is protectible under the copyright laws is capsulized in the notion that copyright protects the original expressions of ideas but not the ideas expressed. See Feist, 499 U.S. at 345-51, 111 S.Ct. 1282; CMM Cable Rep, Inc. v. Ocean Coast Properties, Inc., 97 F.3d 1504, 1516 (1st Cir.1996). The point is that the underlying idea (e.g., the travails of two star-crossed lovers), even if original, cannot be removed from the public realm; but its expression in the form of a play script (such as William Shakespeare's Romeo and Juliet ) can be protected. Needless to say, the line is a blurry one.

If the idea-expression dichotomy favors copyright-case defendants, a somewhat different notion in copyright law favors the plaintiffs. It is well-settled that where the plaintiff has copyrighted an original expression, an infringement can be found to exist even where the defendant does not copy the original expression in a literal manner (word-for-word or image-by-image). It is enough to make out infringement--assuming actual copying--if the alleged infringing work is "substantially similar" to the protectible expression in the copywritten work. CMM Cable, 97 F.3d at 1513. In other words, if Romeo and Juliet were under copyright, the infringer could not escape solely by changing the names of every character and altering a few words in every line. ¹

A potential tension is now obvious. An alleged infringing work taken as a whole may seem "substantially similar" to the copyrighted work taken as whole, but the impression of similarity may rest heavily upon similarities in the two works as to elements that are not copyrightable--because those elements are the underlying ideas, or expressions that are not original with the plaintiff, or for some like reason. See Feist, 499 U.S. at 358-60, 111 S.Ct. 1282; CMM Cable, 97 F.3d at 1515. Courts have used various formulas to isolate the protectible expression in the copyrighted work to determine whether the alleged infringing work is "substantially similar" to that protectible expression. ²

That is just what the district court did in the present case. It declined implicitly to give Matthews any protection for the idea that underlies the phrasing on the t-shirt--that the t-shirt's purchase represents someone's love of the donee--or the unoriginal notions of having a legend on a t-shirt, using childish lettering, or placing on the t-shirt symbolic emblems reminiscent of a location (here, Boston). The district court then turned its attention to the remaining elements and found that, as to these elements, the differences between the two works precluded a finding of infringement.

In this regard, the district court pointed to differences in the particular icons selected, their arrangement, the colors used, and the lettering. Examination of Matthews' and Freedman's t-shirts bears out the district court's conclusion; no one would think the lettering, colors or particular icons had been literally copied from one t-shirt to the other. For example, the icons are not all of the same subjects and even where both t-shirts depict a lobster or fish, the drawings are completely different.

Because Matthews does not directly challenge the district court's assessment on an element-by-element basis, we pause only to address the most obvious possible claim: that the expression of the "someone" theme in the two t-shirts is "substantially similar." Obviously, there is a good deal of similarity in the substance of the two competing phrases: "someone went to Boston and got me this shirt because they love me very much" and "someone who loves me went to Boston and got me this shirt." But most of the similarity rests on the fact that both phrases are seeking to express essentially the same idea.

Admittedly, there is some similarity in the two expressions of the idea, but this is largely because both are expressing the same idea briefly and in straightforward terms and the available variations in wording are quite limited. Even if the sentiment were original with Matthews--which is by no means clear--it would virtually give Matthews a monopoly on the underlying idea if everyone else were forbidden from using a differently worded short sentence to express the same sentiment. Cf. CMM Cable, 97 F.3d at 1519-20.

In all events, Matthews' attack on the district court's decision is not based on any refined comparison of individual elements. Rather, Matthews says broadly that the test for copyright infringement is whether the "ordinary observer" would find a substantial similarity between the two works and would be disposed to overlook the disparities as minor. Matthews then argues that the district court, at least if its judgment is reviewed de novo (as Matthews urges), erred because the two t-shirts are to the average observer substantially similar "in design and overall aesthetic appeal" and because "both exhibits have similar 'Someone Who Loves Me Went To Boston And Got Me This Shirt' language and display boats, fish, and a lobster in a childlike fashion."

Case law supports the "ordinary observer" test and the disregard of minor...