388 F. Supp. 3d 1385
D. Utah2019Background
- EC Design (Erin Condren) sells the LifePlanner, a customizable planner product line since 2007; millions sold and substantial revenue. Craft Smith manufactured the Recollections Planner sold by Michaels beginning October 2016.
- Craft Smith solicited an EC LifePlanner sample, instructed its manufacturer to "match" size, pagination, coil, paper/laminate, and sticker sizing, and produced planner files sent to the manufacturer in April 2016.
- EC sent a cease-and-desist in November 2016; Craft Smith then filed for a declaratory judgment in December 2016 and EC registered certain 2016–17 LifePlanner artwork/compilation copyrights in December 2016 and August 2017 (with the Copyright Office refusing a "layout" claim).
- EC sued for copyright and unregistered trade dress infringement and related state claims; Craft Smith and Michaels moved for summary judgment.
- The district court granted summary judgment to Craft Smith and Michaels on copyright and trade dress claims, dismissed state claims without prejudice, and dismissed EC's counterclaim with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether EC owns a valid compilation copyright in the LifePlanner selection and arrangement | EC: compilation copyright in the selection/arrangement of planner parts is protectable; registrations (2016–17) and derivative status support validity | Craft Smith: registration did not claim layout/compilation at issue; Copyright Office refused "layout"; no presumption of validity for broader compilation claim | Court: no presumption of validity for the asserted compilation; even on the merits the asserted compilation is not original/protectable under §102/§103 |
| Whether the asserted compilation contains protectable expression (literary or pictorial/graphic) | EC: planner incorporates text, phrases, graphics and thus qualifies as literary or pictorial compilation | Craft Smith: much of planner is blank forms, calendars, templates, and useful article elements; layout and calendars are unprotectable | Court: the asserted compilation (excluding 2‑D artwork/phrases/graphics) is unprotectable — largely templates, common property, blank forms and a useful article; separability and §102 requirements not met |
| Whether Craft Smith copied protectable elements enough to infringe (supersubstantial similarity) | EC: selection/arrangement copied; evidence of intentional copying of layout and specs | Craft Smith: even if copying occurred, the works are not virtually identical; many material differences exist | Court: applying the thin‑work/supersubstantial similarity standard, no reasonable juror could find the Recollections planner virtually identical — summary judgment for defendants |
| Whether LifePlanner trade dress is protectable and infringed under the Lanham Act | EC: overall "look and feel" of the LifePlanner (combination of features) has acquired distinctiveness/secondary meaning and is nonfunctional | Craft Smith: the asserted trade dress is generic/common in the industry; EC lacks direct evidence of secondary meaning or consumer confusion | Court: trade dress is product design (cannot be inherently distinctive); EC failed to show secondary meaning or likelihood of confusion — summary judgment for defendants |
Key Cases Cited
- Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) (textual test for copyright in designs on useful articles; separability analysis)
- Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) (minimal creativity requirement for compilation copyright and limits on protection of facts)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (inherent distinctiveness and trade dress protection for product image/packaging)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (product design trade dress cannot be inherently distinctive; secondary meaning required)
- Blehm v. Jacobs, 702 F.3d 1193 (10th Cir. 2012) (substantial similarity analysis and use of ordinary observer test)
- Enterprise Management Ltd. v. Warrick, 717 F.3d 1112 (10th Cir. 2013) (compilation of uncopyrightable elements may be protected if original selection/arrangement exists)
- TransWestern Publishing Co. v. Multimedia Marketing Assocs., Inc., 133 F.3d 773 (10th Cir. 1998) (thin‑copyright concept and need for greater similarity for compilations)