Runstadler Studios, Inc. v. MCM Ltd. Partnership

• Decision Date: 14 June 1991
• Docket Number: No. 90 C 2642.,90 C 2642.
• Citation: 768 F. Supp. 1292
• Parties: RUNSTADLER STUDIOS, INC., a California corporation, Plaintiff, v. MCM LIMITED PARTNERSHIP, d/b/a Merrill Chase Galleries Limited Partnership, N Corporation, a Nevada corporation, General Partner, and Jeph Bilsky, Defendants.
• Court: U.S. District Court — Northern District of Illinois

768 F. Supp. 1292

RUNSTADLER STUDIOS, INC., a California corporation, Plaintiff, v. MCM LIMITED PARTNERSHIP, d/b/a Merrill Chase Galleries Limited Partnership, N Corporation, a Nevada corporation, General Partner, and Jeph Bilsky, Defendants.

No. 90 C 2642.

United States District Court, N.D. Illinois, E.D.

June 14, 1991.

Eugene E. Gozdecki, Paul L. Zido, Howard A. Vocks, Gozdecki, Zido & Behnke, Chicago, Ill., for plaintiff.

James T. Fizgibbon, Angelo J. Bufalino, Curtis Michael Kendall, Lockwood, Alex, Fitzgibbon & Cummings, James King Gardner, Kenneth Clark Schirle, Neal, Gerber & Eisenberg, Chicago, Ill., for defendants.

MEMORANDUM AND ORDER

MORAN, District Judge.

Plaintiff Runstadler Studios, Inc. Runstadler), owner of the copyright on a sculpture known as "Spiral Motion," brought suit against defendants MCM Limited Partnership (Merrill Chase) and Jeph Bilsky (Bilsky) claiming copyright infringement. The complaint also alleges deceptive trade practices by the defendants and claims liability under the Illinois Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 121½, ¶¶ 311 et seq. Runstadler then filed a motion for preliminary and permanent injunctive relief.¹ On August 17, 1990, following several days of hearings, this court found that Bilsky had indirectly copied Spiral Motion, but left for another day whether Runstadler's copyright was valid and whether defendants infringed any valid copyright. That day is now here and, while we find the copyright valid, we find no infringement. Consequently, we deny plaintiff's motion for a permanent injunction.

FACTS

Sometime between July and December of 1983, plaintiff produced Spiral Motion, a glass sculpture. This sculpture is composed of 39 clear glass rectangles, overlying each other to form a spiral with approximately 405° of arc. The rectangular glass panes are approximately 24 inches long,² 1¼ inches wide, and 3/16-inch thick. The panes are unbeveled and thus have six surfaces. In the spiral, the hexahedrons touch at their tips. On January 11, 1988, Runstadler applied for a copyright registration, using a form for registering textual materials (class TX) rather than visual arts (class VA). Pictures of Spiral Motion were attached to the January 11th application. On February 12, 1988, the Copyright Office issued Certificate of Registration No. TX 2,280,285 for Spiral Motion.

In 1986 or 1987, Bilsky produced a spiral sculpture that had similarities to and differences from Spiral Motion. The Bilsky sculpture also is composed of glass panes, although it uses only 17. These panes are beveled, resulting in panes of ten faces. The decahedrons are 24 inches high, 3 inches wide, and ¼-inch thick. Because of the beveled surfaces the decahedrons of the Bilsky sculpture overlap at the inside edges. The arc formed by the spiral is approximately 360°. Bilsky filed an application in 1987 to register a copyright on his sculpture, but the Copyright Office rejected his application, contending that the sculpture was an uncopyrightable aggregation of generic shapes.³ Subsequently, Bilsky agreed to allow Merrill Chase to sell copies of his work, and Merrill Chase has sold such items.

DISCUSSION

The plaintiff has the burden of proving copyright infringement. To prevail, the plaintiff must show that it owns a valid copyright and that the defendant "copied" its work.⁴ Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 614 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982).

I. Does Runstadler Have a Valid Copyright?

Defendants dispute that plaintiff has a valid copyright, contending that Spiral Motion does not contain copyrightable subject matter; that plaintiff's work is not original or sufficiently creative; and that Runstadler's sculpture does not contain any copyrightable expression. Plaintiff of course disputes all of defendants' arguments and points out that the certificate of copyright registration for Spiral Motion is "prima facie evidence of the validity of the copyright." See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir.1989); 17 U.S.C. § 410(c). However, this presumption of validity is rebuttable. See Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985). Because Runstadler has produced the copyright certificate to Spiral Motion, the burden shifts to the defendants to present evidence of copyright invalidity. See Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 826 (11th Cir.1982).

Defendants, however, argue that the presumption of validity should not apply in this case or, if it applies, it should be a weakened presumption. We disagree. Defendants first argue that the registration is invalid because Runstadler applied using the wrong form. However, the certificate remains valid in the absence of fraud. See Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir.1984); Apple Computer, Inc. v. Microsoft Corp., 759 F.Supp. 1444, 1453-54 (N.D.Cal.1991); Folio Impressions, Inc. v. Byer California, 752 F.Supp. 583, 591 (S.D.N.Y.1990). Defendants have introduced no evidence of "knowing failure" by Runstadler to advise the Copyright Office of all the facts. To the contrary, we note that although Runstadler used the wrong application form, it attached photographs of Spiral Motion to the application.

Defendants next argue that the presumption of validity should be weakened. Defendants correctly point out that this presumption of copyright validity only applies if the certificate of registration is dated within five years of first publication of the work. 17 U.S.C. § 410(c). However, defendants contend, without providing any support, that this presumption becomes weaker when an author applies for registration close to the five-year cutoff. We find no support for defendants' argument. Section 410(c) states that if registration is made within five years the certificate is prima facie evidence of validity. If the statutory language is clear, the courts must take the plain meaning as conclusive. Sullivan v. Stroop, ___ U.S. ___, 110 S.Ct. 2499, 2502-03, 110 L.Ed.2d 438 (1990) (quoting K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 291-92, 108 S.Ct. 1811, 1817-18, 100 L.Ed.2d 313 (1988)). We see no language in the statute to justify a sliding scale of validity. The presumption of validity of the copyright on Spiral Motion stands.

Defendants have introduced a number of arguments in an attempt to show that Runstadler's copyright is invalid. Defendants first contend Spiral Motion is not an "original work of authorship" that is entitled to receive copyright protection. See 17 U.S.C. § 102(a). We note that the presumption of copyright validity implies a presumption of originality. See Folio, 752 F.Supp. at 586 n. 3. Recently the Supreme Court stated two requirements, independent creation and creativity, flow from this statutory phrase, which has its origin in the Constitution. Feist Publications, Inc. v. Rural Telephone Service Co., ___ U.S. ___, ___, 111 S.Ct. 1282, 1287-88, 113 L.Ed.2d 358 (1991). Turning first to independent creation, defendants have introduced no evidence that Runstadler copied Spiral Motion — they have not overcome the presumption of originality.

Defendants next argue that Spiral Motion is lacking in creativity because the sculpture is simply a combination of uncopyrightable standard shapes. The level of creativity required for a valid copyright is "extremely low." Id. 111 S.Ct. at 1287. Further, contrary to defendants' assertions, combinations of standard shapes may possess the requisite creativity necessary for copyright protection.⁵See Roulo, 886 F.2d at 939-40 (unique combination of common elements copyrightable); Atari Games Corp. v. Oman, 888 F.2d 878, 883-84 (D.C.Cir.1989) (collecting cases). We hold that Spiral Motion possesses the required creativity to qualify as an original work of authorship. The choice of location, orientation and dimensions of the glass panes, and the degree of are of the spiral, show far more than a trivial amount of intellectual labor and artistic expression on plaintiff's part.

Defendants next contend that Runstadler's copyright is invalid because it is an uncopyrightable idea. See 17 U.S.C. § 102(a). Defendants claim that the idea behind Spiral Motion is "a spiral composed of long and thin rectangular panes of glass which overlie one another rotating around a common axis and fastened together with invisible glue" (Mem. of Merrill Chase at 7). Plaintiff counters that the idea is "a spiral sculpture composed of rectangular pieces of glass" (Pl. Reply Mem. at 23). That takes us into the tension between idea and the expression of that idea, a difficult concept that we consider more fully later. For now, however, we confine our determination to the conclusion that Spiral Motion is one expression of an idea, among possible others, which is, perhaps, another way of saying that it possesses originality. See Whelan Assocs. v. Jaslow Dental Laboratory, 797 F.2d 1222, 1236 & n. 28 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987) ("Where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea.").

In summary, defendants have not overcome the presumption that plaintiff's copyright is valid.

II. Did Bilsky "Copy" Spiral Motion?

To prevail, plaintiff has the burden of showing that defendants "copied" Spiral Motion. We have placed "copy" in quotes because it is used in two senses. Plaintiff must establish, directly or inferentially, that defendant was aware of plaintiff's work and relied upon it in creating the allegedly infringing work. That inquiry raises factual issues. Did the defendant have access to plaintiff's work? If proof of access is lacking or uncertain, are there substantial similarities that, in the circumstances of the case, indicate defendant was aware of and relied...