93 F. Supp. 3d 193
S.D.N.Y.2015Background
- Michael Ward (Brainteaser Publications), a New Zealand citizen, created a one-player “Scratch Hangman” concept and published a New Zealand book in 2000; he obtained only a provisional patent in 1994 and did not obtain a full patent.
- Ward entered a 2004 publishing agreement with Sterling (later acquired by Barnes & Noble) for a “Scratch and Solve” series; Sterling registered U.S. copyrights in Ward’s name listing authorship generally as text.
- Sterling later published additional “Scratch and Solve” books credited to Sterling employees or pseudonyms; Ward alleged some books copied his work and notified Sterling in 2013, then sued in November 2013 for copyright infringement, trade dress, unfair competition, and unjust enrichment.
- Defendants moved for summary judgment arguing (inter alia) lack of protectable similarity in artwork, that Ward’s U.S. registrations cover only text, absence of trade dress secondary meaning, and preemption of state-law claims.
- The court granted summary judgment dismissing all claims except Ward’s copyright-infringement claim based on the textual instructions protected by his U.S. copyright registrations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendants infringed Ward’s New Zealand book copyright | Ward: New Zealand book’s layout, scratch circles, hangman/gallows and overall look are protected and copied | Defs: These elements are unprotectable (ideas, common shapes, scènes à faire) and the works differ in protectable expression | Held: Dismissed — New Zealand book’s claimed elements are unprotectable or not substantially similar |
| Whether Defendants infringed U.S. copyrights registered in Ward’s name (artwork and gameboards) | Ward: He supplied templates/approved elements; registrations in his name cover the interior gameboards/artwork | Defs: The U.S. registrations list authorship as text only; publishing agreements assign rights to Sterling and permit Sterling to copyright material it supplied | Held: Court rejects artwork claim (registrations do not cover illustrations; agreements assign rights). Survives only as to textual instructions where copying is shown |
| Whether Ward’s trade dress (design/look of the books) is protectable via secondary meaning | Ward: The Scratch Hangman format/look identifies Ward as source (sales, media, consumer recognition) | Defs: No evidence of secondary meaning; format is a product design not inherently distinctive | Held: Dismissed — Ward failed to show secondary meaning; trade dress claim fails |
| Whether state-law unfair competition and unjust enrichment claims survive preemption and substantive review | Ward: Defendants “passed off” goods and were unjustly enriched; unfair competition alleges intentional deception | Defs: Claims are preempted by Copyright Act or lack requisite extra element | Held: Unjust enrichment preempted; unfair competition not preempted but fails on merits for lack of secondary meaning/bad-faith passing-off proof |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (copyright requires minimal creativity; facts/arrangements may be unprotectable)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010) (substantial similarity standard and need to isolate protectable elements)
- Kregos v. Associated Press, 3 F.3d 656 (2d Cir. 1993) (copyright protects expression, not ideas)
- Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357 (2d Cir. 1983) (unprotectable renderings of common ideas; only particularized expression protectable)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (product design trade dress requires secondary meaning)
- Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir. 2004) (preemption test for state-law claims under the Copyright Act)