969 F.3d 1092
10th Cir.2020Background
- EC Design (Erin Condren) has sold the coil-bound, laminated LifePlanner since 2007; the planner contains monthly/weekly calendars, colorful artwork, inspirational quotations, tabs, sticker pages, and other arranged content. EC Design registered a compilation copyright (2016/2017, ‘725 Registration) covering 2‑D artwork and selected phrases/graphics.
- Craft Smith (with input from Michaels) developed the Recollections Planner in 2016 to sell at Michaels; evidence shows Craft Smith used a LifePlanner as a model for size, coil, laminated cover, pagination, and sheet counts, but used different artwork and quotations.
- EC Design sued Craft Smith and Michaels for copyright and unregistered trade‑dress infringement; the district court granted summary judgment to Craft Smith and Michaels on both claims.
- On appeal, the Tenth Circuit held EC Design owns a valid compilation copyright in the LifePlanner but affirmed summary judgment because no reasonable juror could find the Recollections Planner substantially similar to the LifePlanner’s protected expression (the specific selection/arrangement of text and artwork).
- The court also affirmed dismissal of the trade‑dress claim: LifePlanner’s product‑design trade dress must show secondary meaning, and EC Design’s circumstantial evidence (sales, advertising, alleged intentional copying, media attention) failed to raise a genuine dispute that consumers primarily identify the planner’s design with EC Design as source.
- Judgment: the Tenth Circuit affirmed the district court’s grant of summary judgment for Appellees on both copyright and trade‑dress claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity/scope of compilation copyright | EC Design: registration proves a valid copyright covering the LifePlanner compilation (text + 2‑D artwork and arrangement). | Craft Smith: registration does not cover the broad compilation scope EC Design asserts; layout/format not protectable. | Court: Registration establishes a valid compilation copyright (element one). Scope is limited to the selection/coordination/arrangement of specific text and artwork, not the general format or layout. |
| Substantial similarity / infringement | EC Design: Recollections copies calendar forms, three‑section organization, tab size, sticker pages, pagination and overall arrangement — raising triable issue. | Craft Smith: Defendants used different artwork and quotations; similarities are in unprotectable format/layout and functional elements, not protected expression. | Court: No reasonable jury could find the protectable elements (specific text/artwork and their arrangement) substantially similar; summary judgment for defendants. |
| Trade dress distinctiveness (secondary meaning) | EC Design: long use, significant sales (~1.55M planners; >$65M revenue), advertising, media attention, and evidence of intentional copying create a triable issue on secondary meaning. | Craft Smith: Product‑design trade dress requires secondary meaning; sales/advertising/copying can be explained by product functionality and popularity rather than source identification. | Court: Evidence fails to show the design primarily identifies source; sales, advertising, and alleged copying do not create a genuine issue for product‑design trade dress; summary judgment affirmed. |
| Applicability of Sally Beauty (sales + intentional copying) | EC Design: Sally Beauty supports that significant sales plus intentional copying suffice to create a jury question on secondary meaning. | Craft Smith: Sally Beauty addressed product‑packaging trade dress; it should not be extended to product‑design trade dress. | Court: Declines to extend Sally Beauty’s packaging analysis per se to product design; intentional copying + sales alone insufficient to show secondary meaning for product design. |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991) (compilation copyright requires originality in selection/arrangement; treat work "as a whole").
- Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (U.S. 2017) (separability test for pictorial/graphic features of useful articles).
- Wal‑Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (U.S. 2000) (product‑design trade dress is protectable only upon a showing of secondary meaning).
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (trade dress can include overall image and appearance).
- Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002) (sales + intentional copying can create jury issue on secondary meaning for product‑packaging trade dress).
- Blehm v. Jacobs, 702 F.3d 1193 (10th Cir. 2012) (substantial‑similarity framework and treat compilation protection as thin).
- Savant Homes, Inc. v. Collins, 809 F.3d 1133 (10th Cir. 2016) (two‑part infringement test; factors for secondary meaning evidence).
- TransWestern Pub. Co. v. Multimedia Mktg. Assocs., 133 F.3d 773 (10th Cir. 1998) (compilation protection is thin; compare works as a whole).
- Jacobsen v. Deseret Book Co., 287 F.3d 936 (10th Cir. 2002) (certificate of registration is prima facie evidence of copyright validity).
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (U.S. 2001) (caution against overextension of trade‑dress protection).