OPINION AND ORDER
Plaintiff Forest River, Inc., and Defendant Heartland Recreational Vehicles, LLC, are competitors in the travel trailer, or recreational vehicle (RV), market. The Plaintiff has sued the Defendant over the Defendant’s use of a drawing representing the floor plan of one of the Plaintiffs RVs. The Plaintiff alleges that the Defendant copied the floor plan from the Plaintiff in violation of federal copyright laws and used the drawing to engage in unfair competition. This matter is before the Court on Defendant Heartland Recreational Vehicles, LLC’s Motion to Dismiss Plaintiff Forest River, Inc.’s Amended Complaint for Failure to State a Claim [ECF No. 9], filed on March 26, 2010.
BACKGROUND
On January 7, 2010, the Plaintiff filed a Complaint and on March 2 filed an Amended Complaint asserting that the Defendant violated the copyright laws of the United States, including Title 17, United States Code, § 101 et seq. The Plaintiff alleges that it is the exclusive owner of a travel trailer floor plan entitled RP-176 (RP-176 Floor Plan or the Floor Plan), which represents the layout of its R.Pod travel trailer. The RP-176. Floor Plan is attached to the Amended Complaint as Exhibit 1. The Plaintiff alleges that the Defendant copied the RP-176 Floor Plan
On March 26, the Defendant filed its Motion to Dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) [ECF No. 9] and Memorandum in Support [ECF No. 10], arguing that both the Plaintiffs copyright infringement and unfair competition claims fail as a matter of law. The Defendant submits that, even if it used the technical drawing of the RP-176 Floor Plan to construct its MPG travel trailer, such use does not constitute copyright infringement. The Defendant further contends that the trailer itself cannot violate any copyright in the Plaintiffs R.Pod vehicle as an “architectural work” under the Architectural Works Copyright Protection Act because recreational vehicles are expressly excluded from the definition of architectural works that are subject to copyright protection. (Def.’s Mem. 2.) The Defendant justifies its inclusion of the RP-176 Floor Plan in its advertising on the ground that, because the use of the Floor Plan is the limited practical method to accurately represent and compare the floor plans of the companies’ competing products, the Floor Plan is not entitled to copyright protection. Additionally and alternatively, the Defendant maintains that its use of the Floor Plan in comparative advertising constitutes a non-infringing fair use. Regarding the Plaintiffs claim for unfair competition, the Defendant argues that the Plaintiff has failed to state a claim because unfair competition cannot be based on an allegation that another copied, revised, or used a copyrighted work.
On April 13, the Plaintiff responded [ECF No. 15] to the Defendant’s Motion to Dismiss. The Plaintiff submits that the Defendant engaged in an act of infringement when it first copied the Floor Plan and then used the infringing copy or derivatives of the copy to manufacture a useful item, the MPG travel trailer. It maintains that the Defendant relies on factual conclusions that are not compelled by the record to assert defenses to the advertising, including the fair use defense, and that the Plaintiff.has sufficiently pleaded a cause of action for unfair competition.
On April 23, the Defendant filed a Reply, asserting that the Plaintiff cited outdated and inapplicable case law, relied on argument that runs contrary to copyright law, applied the incorrect standard to determine the sufficiency of its Amended Complaint, and impermissibly attempted to plead additional facts that were not included in its Amended Complaint.
DISCUSSION
A. Standard of Review
A motion to dismiss pursuant to Rule 12(b)(6) tests the sufficiency of the complaint, not the merits of the case. Requirements for stating a claim under the
The Seventh Circuit has provided the following summary of the lessons to be learned from a recent series of the Supreme Court opinions on notice pleading and the Rule 12(b)(6) standard:
First, a plaintiff must provide notice to defendants of her claims. Second, courts must accept a plaintiffs factual allegations as true, but some factual allegations will be so sketchy or implausible that they fail to provide sufficient notice to defendants of the plaintiffs claim. Third, in considering the plaintiffs factual allegations, courts should not accept as adequate abstract recitations of the elements of a cause of action or eonclusory legal statements.
Brooks v. Ross,
B. Defining the Work Subject to Copyright Protection
The Court assumes that the following is true for purposes of determining whether the Plaintiff has stated a claim for copyright infringement: The Plaintiff created the RP-176 Floor Plan drawing to represent the layout of its R.Pod travel trailer, and the Plaintiff is the owner of all copyrights in the RP-176 Floor Plan. The Defendant created a copy of that drawing, and then used the copy to manufacture its own MPG travel trailer. The Defendant also copied the drawing into print advertising to compare the layout of its product with the Plaintiffs R.Pod travel trailer, and this advertisement showed the competitors’ trailers to have identical floor plans. The Defendant reproduced, published, and distributed the advertisement
To prevail on a claim of copyright infringement, a plaintiff must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
Graphic works, including technical drawings, are among the works that are eligible for copyright protection. 17 U.S.C. § 102(a)(5). The Architectural Works Copyright Protection Act of 1990 (AWCPA), amended the Copyright Act of 1976 to include architectural works as a separate category from other technical drawings.
See
17 U.S.C. § 102(a)(8). Now, the holder of a copyright in architectural plans is entitled to two forms of protection under the Act.
See T-Peg, Inc. v. Vermont Timber Works, Inc.,
[T]he design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.
17 U.S.C. § 101. Regulations implementing the Copyright Act, as amended by the AWCPA, define the term "building" as "humanly habitable structures that are intended to be both permanent and stationary, such as houses." 37 C.F.R. § 202.11(b)(2). Excluded from copyright protection as an architectural work are "[s]tructures other than buildings, such as bridges, cloverleafs, dams, walkways, tents, recreational vehicles, mobile homes, and boats ... [and] standard configurations of spaces." 37 C.F.R. § 202.11(d) (emphasis added). Thus, any of the protections afforded specifically to architectural works are not pertinent to the Plaintiff’s claims in this lawsuit. The Plaintiff’s Floor Plan is instead protected under § 102(a)(5) as a technical drawing. The Floor Plan is afforded the same protection that was given to technical drawings before the enactment of the AWCPA. See H.R. Rep. No. 101-735 at 19 (1990), reprinted in 1990 U.S.C.C.A.N. 6935, 6952.
C. Copyright Infringement
I. Manufacturing of the MPG Travel Trailer
The Defendant argues that the Plaintiff has not stated a claim for copyright infringement with respect to the Defendant’s use of copies of the Floor Plans to manufacture its MPG travel trailer. The Defendant asserts that even when a plaintiff holds a copyright in a graphic drawing of a useful article, others are not precluded from manufacturing and marketing the article itself.
Gusler v. Fischer
[w]hile it may be true that the mere “manufacture of a useful article from a copyrighted technical drawing does not constitute copyright infringement,” where, instead, the copyright in technical drawing is infringed by first copying that drawing and then the copy is used for the manufacture of a useful article, there is copyright infringement with respect to the useful article.
(Pl.’s Resp. 5, ECF No. 15.) The Plaintiff argues that this intermediate step is the "separate act of infringement" referred to in the foremost copyright law treatise, Nimmer on Copyrights, and cites
Herman Frankel Organization v. Tegman,
The legal issue before the Court is whether a copyright in a technical drawing of a non-architectural useful article precludes another party from using copies of that drawing to construct the useful article. If the holder of a copyright in a non-architectural technical drawing is not afforded such protection, then the Plaintiffs Amended Complaint has failed to state a claim for infringement as it relates the Defendant’s production of the MPG travel trailer.
The Court is not inclined to recognize a distinction between using original copyrighted technical drawings to build an RV and using duplicate copyrighted technical drawings to construct an RV, with only the latter constituting copyright infringement with respect to the finished product. To hold otherwise would be to elevate the Plaintiff’s copyright to a patent. Similar attempts to expand the scope of copyright protection to include the act of manufacturing a non-architectural useful item using a derivative of the copyrighted drawing of that item have failed. For example, in
National Medical Care, Inc. v. Espiritu,
The Plaintiff does not persuasively explain why its technical drawing should receive greater protection than that afforded to the technical drawings in
Espíritu
and
Niemi.
The cases cited by the Plaintiff,
Robert R. Jones
and
Tegman,
specifically dealt with architectural structures. The courts in those cases awarded some relief to the plaintiffs on the grounds that the defendant was prohibited from constructing a home from the infringing use of copied plans.
Robert R. Jones,
858 F.2d at
The sections of Nimmer on Copyright that the Plaintiff cites also pertain solely to architectural works, specifically to the protection afforded such works prior to the enactment of the AWCPA. (See PL Resp. App., Nimmer on Copyright, § 2.08[D][2], ECF Nos. 15-5 to 15-9.) A careful reading of the treatise reveals that the “separate act of infringement” it refers to is the copying of the technical drawing, not the building of a structure from the infringing copy. Indeed, Nimmer concludes that architectural structures themselves were afforded virtually no protection prior to the AWCPA, and cites Espíritu as an example of the application of the “doctrine that a copyright for a work of utility protects only against copying of such works for purposes of explanation (e.g., the making of an unauthorized plan), but not against copying of such works for purposes of use (e.g., the construction of an unauthorized structure).” (Id., ECF Nos. 15-8, 15-9.) The author surmises that pre-AWCPA drawings of architectural works would receive similar treatment.
The Court could locate no postAWCPA decision that recognized the distinction the Plaintiff requests when referring to useful articles depicted in drawings protected under § 102(a)(5) as technical drawings. To the extent the Plaintiffs Amended Complaint attempts to assert a claim for copyright infringement on the basis that the Defendant manufactured travel trailers using copies of its Floor Plan, that claim fails as a matter of law. The Defendant was entitled to manufacture and market its own travel trailer, even one with the same layout as the Plaintiffs. However, because the Plaintiffs copyright protects the design drawing from being copied, and the Amended Complaint alleges that the Defendant created derivative Floor Plan drawings, it states a claim for copyright infringement as to the copies (as distinct from the actual trailer).
2. Use of the Floor Plan in Comparative Advertising
Copyright owners have the exclusive right to “reproduce,” “prepare derivative works,” “distribute copies,” and “display” copyrighted work. 17 U.S.C. § 106. The Plaintiff alleges that the Defendant copied its drawing of the RP-176 Floor Plan in its advertisements for competing trailers, which is attached to the Amended Complaint as Exhibit 2. The Defendant argues that even if it copied the Floor Plan, there was no infringement under the doctrines of merger and
scenes a faire.
Merger refers to the situation where there is only one feasible way of expressing an idea (in other words, there is a merger of the idea and its expression), so that if the expression were copyrightable, it would mean that the idea was copyrightable, and ideas are not copyrightable.
Bucklew v. Hawkins, Ash, Baptie & Co., LLP,
The Defendant argues that there are limited practical means available to represent the layout (or floor plan) of a travel trailer, and that the use of a two-dimensional drawing is the standard method of doing so. Thus, protection of a two-dimensional drawing in comparative advertising would, the Defendant argues, lead effectively to according protection to the idea itself. The Plaintiff counters that there are numerous ways to express the layout of an RV and posits that the Defendant could have compared layouts “by any number of types of photographs or by drawings” the Defendant made itself from an inspection of the actual trailers. (Pl.’s Resp. 8, ECF No. 15.) The Plaintiff notes that the drawings could have been set up as plan views or perspective views, and could have been made with color enhancements.
Without commenting on the relative merit of any of the Plaintiffs claims, the Court finds that merger and
scenes a faire
are affirmative defenses, or at least belong in a more detailed discussion about copyrightability.
See
4-13
Nimmer
§§ 13.03[B][3], 13.03[B][4] (noting that there is some disagreement as to whether the doctrines of merger and
scenes a faire
figure into the issue of copyrightability or are more properly defenses to infringement). The dispositive question will be, not how many alternative methods of expression actually exist, but “whether other options practically exist under the circumstances.”
Lexmark Int’l, Inc. v. Static Control Components, Inc.,
The Defendant also argues that its use of the Floor Plan in comparative advertising represented non-infringing “fair use.” The fair use doctrine is an affirmative defense to a copyright infringement action. It confers a privilege to use copyrighted material in a reasonable manner without the owner’s consent.
Hustler Magazine, Inc. v. Moral Majority,
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
17 U.S.C. § 107. Application of the statute and the doctrine requires a case-by-case analysis, and the burden of proof is on the copier.
Campbell v. Acuff-Rose Music, Inc.,
1. The Purpose and Character of the Use
An advertisement for the sale of a product clearly has a commercial purpose. The statutory text relating to the different purposes and character of use highlights commercial and nonprofit educational purposes opposite each other. 17 U.S.C. § 107(1). However, the analysis is also guided by the examples given in the preamble to § 107, which include use for criticism or comment.
Campbell,
In any event, more significant than whether the work is commercial in nature is whether the Defendant’s use was “trans-formative:” “The central purpose of this investigation is to see ... whether the new work merely supercedes the objects of the original creation, ... or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”
Campbell,
The Defendant submits that the RP-Floor Plan, standing alone, provides only the dimensions and layout of the R.Pod. However, when combined with the other informative elements of the Defendant’s advertisement, the resulting work has a
The Court does not agree that the Defendant’s use was so clearly transformative. The most basic purpose of the Floor Plan is to show the layout of the travel trailer, including placement of useful features and dimensions. Presumably, the Plaintiff desired to show the layout of its travel trailer for various purposes, including informing the consuming public. The Defendant’s use of the Floor Plan retained this same purpose. Merely adding information about its own trailer did not transform this use to something new or different. The Defendant cannot even argue that its use involves comment or criticism of the Plaintiffs Floor Plan because the Defendant used the same exact drawing to represent its own product. Moreover, the floor plan in the advertisement was a straight copy of the Plaintiffs Floor Plan. To represent the layout of the R.Pod, the Defendant copied the Floor Plan of the R.Pod exactly. The Defendant then used this same exact replication to portray the layout of the MPG trailer, even shading the same areas and using the same text and font to label different sections of its trailer. 1 Whether the two products indeed have the exact same layout and interior dimensions is not known to the Court at this stage of the proceedings. Based on the current record, and at this stage of the proceedings, the Court does not have sufficient facts to conclude that the Defendant created a new meaning or purpose and did not, instead, supercede the Plaintiffs use of the copyrighted drawing.
The Defendant also submits that, because its advertisement allows consumers to make better-informed purchases, it is the type that courts have “consistently championed as beneficial to a free market society.” (Def. Mem. 8-9, ECF No. 10.) The Fifth Circuit, in
Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc.,
Comparative advertising, when truthful and nondeceptive, is a source of important information to consumers and assists them in making rational purchase decisions. Comparative advertising encourages product improvement and innovation, and can lead to lower prices in the marketplace.
Id.
at 1027 (quoting 16 C.F.R. § 14.15(c) (1980)). The
Sony
court concluded that the defendant’s comparative advertising using screen shots of the plaintiffs video games to show the look of video games’ graphics on a television when played on a console as compared to how they look on a personal computer screen when played using the defendant’s product, redounded greatly to the purchasing public’s benefit with very little corresponding loss to the
The copyrightable material that was copied in the comparative advertising in the two above-cited cases was copied for the purpose of distinguishing between two products. Here, the Defendant’s portrayal of the layout of its RV is indistinguishable from the layout of the Plaintiffs product. Thus, the Defendant’s reproduction of a product with the same layout (as opposed to one that it champions as superior) is not as likely to encourage product improvement and innovation in response. The Plaintiff also argues that whether copying its Floor Plan truthfully informs the public depends on whether the MPG product is indeed the same as the R.Pod, such that they can be truthfully represented by the same Floor Plan. The Plaintiff has made no allegation in its Amended Complaint that the two products do not indeed have the same layout. However, the advertisement itself lists different dimensions for the height, length, and cargo capacity of the trailers without any corresponding difference is the pictured floor plans. With so many details relevant to this factor yet unknown, the Court cannot assign a weight to this factor of the fair use doctrine.
2. The Nature of the Copyrighted Work
Works that are creative in nature are closer to the core of intended copyright protection than are more fact-based works.
Campbell,
In its Amended Complaint, the Plaintiff alleges that the Floor Plan was based upon prior floor plans and travel trailers, but added original material, including a kitchen slide-out, entertainment center, storage bunk sections, and orientation and sizing of all the RV’s sections. The purpose of the Floor Plan was, presumably, to show the manufacturer how to build the product and to inform dealers and consumers about the product, which is arguably a very functional purpose. The Plaintiff argues that the drawings are creative because they are not within the ability of an average person to create instantly. At least some of the RP-176 Floor Plan was based upon prior floor plans and trailers. How much creativity was required to create the new aspects, including the orientation and sizing, is unknown. The level of creativity expended in creating the Floor Plan drawing is not a determination that can be made at the pleading stage.
The fair use doctrine is more likely to apply to published works.
Harper & Row,
3. The Amount and Substantiality of Portion Used
The Supreme Court has stated that
[t]he third factor asks whether “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” § 107(3) (or, in Justice Story’s words, “the quantity and value of the materials used,”) are reasonable in relation to the purpose of the copying. ... [T]he extent of permissible copying varies with the purpose and character of the use.
Campbell,
This factor does not weigh for or against either party. It is unknown whether the Defendant’s copying was for the same intrinsic purpose for which the Plaintiff intended to use the Floor Plan since the Amended Complaint is silent as to what degree the Plaintiff used the Floor Plan drawing in its own advertising to consumers. Thus, although the Defendant copied the Floor Plan as a whole, it may have been reasonable to do so to accurately portray the layout of the trailers. If the Defendant had only copied a portion of the Floor Plan, it would have been difficult for consumers to compare the layout of the interior spaces of each product. Because there are too many unknown facts to determine whether the purpose and character of the use tends toward fair use, the extent of the permissible use is likewise unknown.
4. Effect of the Use Upon Potential Market For or Value of Copyrighted Work
The United States Supreme Court has stated that this factor is "the single most important element of fair use."
Harper & Row Pubs., Inc. v. Nation Enters.,
The relevant market is the market for “the copyrighted work,” 17 U.S.C. § 107(4), which in this case is the RP-176 Floor Plan. But the Floor Plan does not, itself, have a market or any value that was impacted by the Defendant’s use. The Plaintiff does not purport to be in the business of selling RV floor plans, but to be in the business of “manufacturing and selling travel trailers.” (Am. Compl. ¶ 12, ECF No. 4.) Moreover, manufacturers of travel trailers would not be required to obtain a license to use any of the ideas portrayed in the drawing, so it does not have value for obtaining licenses for the creation of derivative works or useful items. The Plaintiffs argument that the Floor Plan has value, as shown by the fact that the Defendant used it instead of creating its own drawing, does not address how the Defendant’s use of the drawing diminished this value. In fact, copying cannot be both the measure of value and evidence of a decrease in value, or no use could ever constitute a fair use. The Plaintiff alleges in its Amended Complaint that the advertisement resulted in monetary gain for the Defendant. (Am. Compl. ¶ 19.) This gain, presumably, was in the form of sales of the MPG trailer that the Plaintiff contends would have been for their R.Pod. But any allegation that the advertisement had the effect of causing
The Floor Plan of an RV is not a substitute for the RV itself, and the Defendant’s use of the Floor Plan did not usurp the demand for the original work or compete in any way with the original. The Plaintiff cannot show damage to a non-existent market, and it has alleged no facts from which it can reasonably be inferred that the value of its Floor Plan has been diminished. Accordingly, this factor weighs in favor of finding that copying the Floor Plan in the comparative advertising was a fair use of the copyrighted drawing.
5. Balancing of Factors
Applying the four factors specified in 17 U.S.C. § 107, the Court cannot determine at the pleading stage whether the Plaintiff has failed to state a plausible claim for relief on grounds that the affirmative defense of fair use applies to the comparative advertising that forms the basis of the Plaintiffs claim for copyright infringement. For the first factor, the Court concludes that the use of the Plaintiffs Floor Plan in comparative advertising is not transformatively different from the original purpose of the Floor Plan, but that the weight of this factor cannot be fully appreciated without further development of the record. The second factor may weigh in favor of fair use because the work is more factual and less creative, although a more developed record regarding the process of creating the Floor Plan may impact this factor. The Floor Plan was copied in its entirety, but such use may have been necessary depending on the purpose of the copying. Finally, the pleadings support the conclusion that the Defendant’s use does not harm the market for the copyrighted material or reduce its value, but this factor could still be outweighed by others. Because the Plaintiff has not pleaded itself out of court by alleging facts that establish the existence of the fair use defense, dismissal is not appropriate.
See United States Gypsum Co. v. Ind. Gas Co.,
D. Unfair Competition and Unfair Trade Practices
In its Amended Complaint, the Plaintiff alleges that the Defendant has engaged in “unfair trade practices and unfair competition in connection with its publication of infringing advertisements and sale of infringing travel trailers.” (Am. Compl. ¶ 21.) This statement is a legal conclusion that must be supported by a sufficiently plausible factual basis to state a claim for upon which relief may be granted.
Reger Dev., LLC v. Nat’l City Bank,
The factual allegation that the Plaintiff points to in support of his claim for unfair competition is that the Defendant distributed copies of the comparative advertisement containing the derivative Floor Plan to potential customers, “which were intended to confuse and/or deceive customers into thinking about some connection with [the Plaintiff].” (Am. Compl. ¶ 15; Ex. 2.) The Plaintiff does not identify the
The Plaintiff does not identify the statutory source for its claim. Section 43(a) of the Lanham Act prohibits activity such as trademark infringement that deceives consumers and impairs a producer’s goodwill.
Dastar Corp. v. Twentieth Century Fox Film Corp.,
The Plaintiff may have intended to assert the common law tort of unfair competition on the basis of the advertisement.
See Keaton v. Keaton,
CONCLUSION
For the foregoing reasons, the Defendant’s Motion to Dismiss [ECF No. 9] is GRANTED IN PART AND DENIED IN PART. The claim for copyright infringement with respect to the Defendant’s manufacture of a competing trailer and the claim for unfair trade practice and unfair competition are DISMISSED. Pursuant to the Magistrate Judge’s April 30, 2010, Order [ECF No. 18], the parties are to submit a joint status report within two weeks of the issuance of this Opinion and Order.
Notes
. This shading does not appear on Exhibit 1 to the Amended Complaint, which is a copy of the RP-176 Floor Plan created by the Plaintiff.