433 F.Supp.3d 227
D.N.H.2020Background:
- D’Pergo created and published a photograph (the Photograph) of its custom guitar necks/headstock in 2003; it removed the Photograph from its site in 2006.
- Sweetwater copied and published the Photograph in its online "Electric Guitar Buying Guide" in 2004; Sweetwater concedes it used the Photograph without permission.
- D’Pergo discovered Sweetwater’s use in 2015, later obtained a copyright registration for the Photograph and registered a headstock-design trademark, and sued Sweetwater in December 2017 asserting copyright, Lanham Act, and New Hampshire CPA claims.
- Sweetwater moved for summary judgment on all claims; D’Pergo moved for summary judgment on copyright liability.
- The court previously ruled D’Pergo is not entitled to statutory copyright damages because registration occurred after the infringement began; experts for damages (Sedlik and Einhorn) were not excluded.
- The court finds copyright liability established but leaves damages (actual damages and infringing profits) for trial issues; it dismisses Lanham Act trademark claims (Counts IV and V) as trade dress was waived; CPA claims survive.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright liability — ownership and copying | D’Pergo: undisputed ownership (registered) and copying by Sweetwater establish infringement | Sweetwater: conceded copying but disputed consequences/damages, not liability | Court: liability established; summary judgment for D’Pergo on Count I (liability) granted |
| Recoverable copyright damages — actual damages (hypothetical license) | D’Pergo: may recover actual damages via a reasonable hypothetical license; expert Sedlik supports valuation | Sweetwater: no evidence a license would have been paid; Sedlik’s methods unreliable | Court: genuine factual dispute exists; Sedlik admissible; summary judgment denied to Sweetwater on actual damages |
| Recoverable copyright damages — infringing profits and causal nexus | D’Pergo: offers expert Einhorn tying Sweetwater revenues from Buying Guide viewers to infringement | Sweetwater: plaintiff must link infringement to defendant revenues with a legally significant causal connection; D’Pergo’s showing is speculative | Court: disputed factual record; D’Pergo’s evidence suffices to survive summary judgment on infringing profits |
| Lanham Act claims / trade dress v. trademark | D’Pergo: headstock design registration and Qualitex authority support trademark protection for design | Sweetwater: the headstock is a product configuration/trade dress, not a protectable trademark here; D’Pergo waived trade dress claim | Court: headstock design is trade dress territory; D’Pergo waived trade dress; Counts IV and V dismissed (summary judgment for Sweetwater) |
| New Hampshire CPA claims | D’Pergo: Sweetwater’s use passed off D’Pergo’s goods and caused likely confusion | Sweetwater: CPA claims mirror Lanham Act and fail if Lanham claims fail | Court: CPA broader than Lanham Act; CPA claims survive summary judgment (Sweetwater not entitled to judgment) |
Key Cases Cited
- Johnson v. Gordon, 409 F.3d 12 (1st Cir. 2005) (elements of copyright infringement)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality requirement for copyright)
- Bruce v. Weekly World News, Inc., 310 F.3d 25 (1st Cir. 2002) (actual damages concept in copyright cases)
- Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147 (1st Cir. 1994) (plaintiff’s burden to show defendant gross revenues under § 504(b))
- John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26 (1st Cir. 2003) (discussion of § 504(b) burdens)
- Jane Doe No. 1 v. Backpage.com, LLC, 817 F.3d 12 (1st Cir. 2016) (linking display of image to discrete portion of publisher’s profits)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (Lanham Act’s broad language regarding what may function as a trademark)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (trade dress doctrine and product design protection)
- Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514 (4th Cir. 2003) (defendant can rebut profit attribution by showing revenues driven by non-infringing factors)