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WALLACE COMPUTER SERVS. v. ADAMS BUS. FORMS

August 19, 1993

WALLACE COMPUTER SERVICES, INC. d/b/a TOPS AND TOPS BUSINESS FORMS, Plaintiff,
v.
ADAMS BUSINESS FORMS, INC., Defendant.



The opinion of the court was delivered by: BRIAN BARNETT DUFF

 The plaintiff, Wallace Computer Services, Inc., has sued the defendant, Adams Business Forms, Inc., for copyright infringement pursuant to 17 U.S.C.S. 101 et seq. (Count I); for trade dress infringement pursuant to 15 U.S.C. § 1125(a) *fn1" (Count II); for deceptive and unfair trade practices in Illinois pursuant to 815 I.L.C.S. 510/1 *fn2" (Count III); and for unfair competition under the laws of the state of Illinois (Count IV). The defendant has moved to dismiss all four claims pursuant to Fed.R.Civ.P. 12(b)(6). For the reasons set forth below, the motion is denied.

 Background *fn3"

 The plaintiff sells telephone message books in a variety of formats. *fn4" The cover of each message book has a solid color background and prominently displays a rectangular photograph. Each photograph itself has a solid color background which contrasts with the surrounding background color of the cover. On each cover, the background color of the photograph matches the color of the bold text on the cover which says "PHONE MESSAGE BOOK" as well as the company logo. Each photograph depicts two hands on either side of an open message book which is laid out at an angle. The right hand is about to write upon the blank message book, and there is a corner of a telephone in the upper left corner of each photo. Each version of the message book has a different photograph on the cover since the format of the open book portrayed on the cover corresponds with the message book it is promoting. In December, 1992 the plaintiff obtained copyright registrations for three of its cover photographs. It should be noted that the United States Copyright Office refused to allow the registration of either the text or the graphics of the phone message books.

 It is alleged in the complaint that the defendant knew of the plaintiff's copyrights and trade dress prior to its own adoption of similar photographs and trade dress, and that the defendant deliberately sought to trade upon the plaintiff's good will.

 Discussion

 The standard governing this court's decision on a Rule (12)(b)(6) motion is well established. Only if the allegations of the complaint, and all reasonable inferences drawn therefrom, could not support any cause of action may this court grant the motion. See generally Charles Wright & Arthur Miller, 5A Federal Practice and Procedure: Civil 2d § 1357 (West Publishing, 2d ed. 1990). The court must interpret ambiguities in the complaint in favor of the plaintiff, and the plaintiff is free, in defending against the motion, "to allege without evidentiary support any facts [it] pleases that are consistent with the complaint in order to show that there is a state of facts within the scope of the complaint that if proved . . . would entitle [it] to judgment." Early v. Bankers Life and Casualty Co., 959 F.2d 75, 79 (7th Cir. 1992).

 I. Copyright Claim *fn6"

 In order to prevail on a claim of copyright infringement, a plaintiff must prove both ownership of a valid copyright and illicit copying by the defendant. 3 Nimmer on Copyright § 13.01 at 13-6 (1992) ("Nimmer"); See, Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 614 (7th Cir. 1982), cert. denied, 459 U.S. 880, 74 L. Ed. 2d 145, 103 S. Ct. 176 (1982). In the case at bar, the defendant concedes ownership; hence, this court's inquiry will focus on whether the defendant illegally copied the plaintiff's copyrights. To establish illicit copying, a plaintiff must show (1) access (i.e., that the defendant had access to the plaintiff's work) (2) substantial similarity and (3) unlawful appropriation (i.e., substantial similarity as a matter of law). Stillman v. Leo Burnett Co., Inc., 720 F. Supp. 1353, 1358 (1989) (Duff, J). *fn7"

 In Stillman, this court explained that many difficulties arise out of the dual usages of the term "substantial similarity" in copyright law. Stillman, 720 F. Supp. at 1358. First, as used in the second prong of the above test, the phrase refers to an element that must be proved when determining if copying has occurred. Id. If two works are substantially similar in this sense, the likeness between them is great enough to give rise to an inference that the defendant took ideas from the plaintiff's work. Whether or not the defendant used the plaintiff's material as a model is a factual question. See, 3 Nimmer § 13.01[B] at 13-8,9 (1992). Substantial similarity, however, is also used as a term of art relating to the unlawful nature of the similarities between two works. Stillman, 720 F. Supp. at 1358; Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970); 3 Nimmer § 13.01[B] at 13-9 (1992). So, if a latter work has copied only nonprotectible expression, it is not "substantially similar" to the first work under this second definition. As demonstrated by the phraseology of the third prong of the above delineated test, this second definition may be distinguished from the first by using the phrase "substantial similarity as a matter of law."

 In this case, the first element, access, is not in dispute. As for the second element, substantial similarity, the issue is a question of fact. If an ordinary observer could conclude that the defendant copied the plaintiff's expression by using plaintiff's work to create another work which evokes a similar response, then substantial similarity exists between the two works. Stillman, 720 F. Supp. at 1359. The focus of this "ordinary observer" test is on the similarities between two works. See, Atari, 672 F.2d at 618. The plaintiff at bar purports to satisfy this second prong by listing numerous similarities in the two sets of works including, but not limited to, the following: a portion of a telephone is shown in the top left of each photograph; the center of each photograph shows a message book open to an inner page; each message book is at a slight angle; a right hand is shown holding a pen poised over the top (or top right) message blank in each photo; and each photograph's background is a solid color. (Pl.'s Resp. Br. at 3). These facts as alleged are sufficient to show substantial similarity.

 Therefore, the only copyright issue remaining to be addressed by this court is whether there has been unlawful appropriation of the plaintiff's protectible expression; i.e., whether the two works are substantially similar as a matter of law.

 Copyright protection does not extend to ideas -- only to specific expressions of an idea. 17 U.S.C. § 102(b). As applied to paintings and photographs, this means that while the subject matter of a work cannot be protected by a copyright, the artist's or photographer's expression of an idea may be protected. For example, in Franklin Mint Corp. v. Natural Wildlife Art Exchange, Inc., 575 F.2d 62 (3d Cir. 1978), two paintings of cardinals were at issue. That court described the paintings as follows:

 
Both versions depict two cardinals in profile, a male and a female perched one above the other on apple tree branches in blossom. But there are also readily apparent dissimilarities in the paintings in color, ...

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