Grubb v. KMS Patriots, L.P.

Opinion

USCA1 Opinion

UNITED STATES COURT OF APPEALS

                                FOR THE FIRST CIRCUIT

                                 ____________________



          No. 95-2375



                                 JAMES L. GRUBB, JR.,



                                Plaintiff - Appellant,



                                          v.



                                KMS PATRIOTS, L.P. AND

                      NATIONAL FOOTBALL LEAGUE PROPERTIES, INC.,



                               Defendants - Appellees.



                                 ____________________



                     APPEAL FROM THE UNITED STATES DISTRICT COURT



                          FOR THE DISTRICT OF MASSACHUSETTS



                   [Hon. Edward F. Harrington, U.S. District Judge]
                                               ___________________



                                 ____________________



                                        Before



                               Torruella, Chief Judge,
                                          ___________



                           Stahl and Lynch, Circuit Judges.
                                            ______________



                                _____________________



               Blair  L.  Perry,  with whom  Heidi  E.  Harvey  and Fish  &
               ________________              _________________      _______

          Richardson P.C. were on brief for appellant.
          _______________

               Daniel L. Goldberg, with whom Paul M. Robertson and Bingham,
               __________________            _________________     ________

          Dana & Gould were on brief for appellees.
          ____________


____________________


____________________



TORRUELLA, Chief Judge.   Plaintiff-Appellant James  L.
                    TORRUELLA, Chief Judge.
                               ___________



          Grubb,  Jr. ("Grubb"  or  "Plaintiff"),  challenges the  district



          court's grant of  summary judgment  for Defendants-Appellees  KMS



          Patriots, L.P.  (the  "Patriots"), and  National Football  League



          Properties, Inc. ("NFL Properties")  (collectively "Defendants"),



          on  Grubb's claims  of copyright  infringement under 17  U.S.C.  



          501.  We affirm the decision of the district court.



                                    I.  BACKGROUND
                                    I.  BACKGROUND



                    Resolving reasonable inferences in  favor of Grubb, the



          nonmovant, the summary judgment materials show the following.



                    The Patriots, a professional football team and a member



          of  the  National Football  League,  informed  NFL Properties  on



          January 17, 1993, that  they were considering  a logo change  for



          the upcoming season.  NFL Properties, among  other tasks, manages



          design  and publishing  production assignments  for the  National



          Football League.  At a meeting between Patriots officials and NFL



          Properties  representatives  on January  27,  1993,  the Patriots



          asked that the design of the  new logo be created within the next



          few weeks.



                    Accordingly,    NFL   Properties    contacted   several



          independent design  firms.  On  January 27, 1993,  Bradley Jansen



          ("Jansen")  of NFL  Properties  approached  Evenson Design  Group



          ("Evenson") about the project, and Evenson agreed  to begin work.



          Via  overnight   courier,  Jansen  sent  to   Evenson  a  package



          containing,  among other  things,  a purchase  order and  designs



          similar  to the one that the Patriots had considered and rejected


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in 1979 ("the 1979 proposed Patriots logo").  Jansen continued to



          be in contact with, and meet with, Patriots employees thereafter.



                    The package was received  on January 28, 1993.   In his



          deposition, Ken Loh  ("Loh"), an Evenson employee, stated that he



          began sketching the design that the Patriots  eventually chose to



          replace their old logo ("the Patriots' new logo").   With the aid



          of his timesheets,  which were  generated by  a computer  program



          that both Plaintiff  and Defendants have stipulated could  not be



          backdated,  Loh indicated  that  he had  virtually completed  the



          Patriots'  new  logo  by February  4,  1993.    Referring to  his



          timesheets, Loh stated  that as  of that  date he  began work  on



          creating  other  logos  and  revising  the  logo  he had  already



          created, which he identified as the Patriots new logo.



                    On February 12, 1993, Evenson sent Loh's  design to NFL



          Properties.    Representatives of  NFL  Properties  met with  the



          Patriots  on February  18, 1993.   The  Patriots were  shown many



          proposed  logos, including  Loh's.   The Patriots  selected Loh's



          design as their new logo on March 5, 1993.



                    Meanwhile, on  February 9, 1993,  having heard  through



          the  news media that the  Patriots planned to  change their logo,



          Grubb submitted an unsolicited proposed design ("Grubb's design")



          to the  Patriots' office  in Foxborough,  Massachusetts.  In  his



          deposition, Grubb stated that he was told by a Patriots' employee



          that  the   Patriots  would  contact  him   later  regarding  his



          submission.  Grubb holds  a Certificate of Copyright Registration


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for his  design, which the United States  Copyright Office issued



          to him effective February 1, 1994.



                    The Patriots' new logo  and Grubb's design contain some



          of the same elements,  including a man's face in  profile, stars,



          and  stripes.1  The  district court  granted summary  judgment to



          Defendants.   The district court  concluded that Grubb  failed to



          show that Loh had access to Grubb's work, relying in  part on the



          fact that the Patriots established and followed a policy that was



          designed  to  prevent designers  -- such  as  Loh --  from seeing



          outside submissions.  Additionally, the district court found that



          Loh  composed the  Patriots'  new logo  independently of  Grubb's



          design.   In the instant  appeal, Grubb  challenges the  district



          court's grant of  summary judgment to Defendants.  In particular,



          Grubb  argues that  his  Supplemental Affidavit,  in which  Grubb



          compares  Loh's work  and his  own, asserts  facts that  create a



          direct conflict with Loh's testimony, on which the district court



          relied.   In the  Supplemental Affidavit, Grubb  states that "the



          relative  proportions of  the  elements of  the  two designs  are



          substantially identical  and the  curve of  the base  line .  . .



          appears to be a precise match," and that Loh's work was "probably



          . . .  traced from some other drawing."   According to Grubb, the



          district court  erred in  crediting Loh's  testimony in light  of



          Grubb's Supplemental Affidavit.


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          1  See appendices following this opinion.
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II.  STANDARD OF REVIEW
                               II.  STANDARD OF REVIEW



                    Summary  judgment is  appropriate when  "the pleadings,



          depositions, answers to interrogatories, and  admissions on file,



          together with the affidavits . . . show that there  is no genuine



          issue  as to  any  material fact  and that  the  moving party  is



          entitled to  a judgment  as a  matter of law."   Kelly  v. United
                                                           _____     ______



          States, 924 F.2d 355, 357 (1st Cir. 1991); see also  Fed. R. Civ.
          ______                                     ________



          P. 56(c).   Under  Rule 56(c),  the opponent  of the  motion must



          produce  evidence on which a reasonable finder of fact, under the



          appropriate proof burden, could base a verdict for the  opponent;



          if  the opponent cannot produce such evidence, the motion must be



          granted.  Celotex  Corp. v.  Catrett, 477 U.S.  317, 323  (1986);
                    ______________     _______



          Anderson v. Liberty Lobby, 477 U.S. 242, 249 (1986).  
          ________    _____________



                                   III.  DISCUSSION
                                   III.  DISCUSSION



                    To  prevail on  a  claim of  copyright infringement,  a



          plaintiff  must  show two  elements:   (1)  ownership of  a valid



          copyright  and (2) copying of  the protected work  by the alleged



          infringer.   See Concrete  Mach. Co.  v. Classic  Lawn Ornaments,
                       ___ ___________________     ________________________



          Inc., 843 F.2d 600, 605 (1st Cir. 1988); 3 Melvin  B. Nimmer, The
          ____                                                          ___



          Law of  Copyright    13.01  at 13-3  (1987).   Defendants do  not
          _________________



          contest Plaintiff's ownership of a valid copyright on his design.



          Therefore, we turn to  the issue of whether summary  judgment was



          proper with respect to the alleged copying.



                    "Proof by  direct evidence of copying  is generally not



          possible since the actual  act of copying is rarely  witnessed or



          recorded."    Concrete Mach.,  843 F.2d  at  606.   Absent direct
                        ______________


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evidence,  copying  may  be  inferred  from  a  showing  that the



          defendant  had "access"  to  the plaintiff's  work  prior to  the



          creation  of defendant's work, Baxter v. MCA, Inc., 812 F.2d 421,
                                         ______    _________



          423  (9th Cir. 1987), and  that there is "substantial similarity"



          between the works, Walker v. Time  Life Films, Inc., 784 F.2d 44,
                             ______    ______________________



          48 (2d Cir.), cert. denied, 476 U.S. 1159 (1986); see Sid & Marty
                        ____________                        ___ ___________



          Krofft  Television Prods.,  Inc.  v. McDonald's  Corp., 562  F.2d
          ________________________________     _________________



          1157, 1162-63 (9th  Cir. 1977).  Even if both  showings are made,



          however, the trier of fact may nonetheless find no copying if the



          defendant shows  independent creation.  Concrete  Mach., 843 F.2d
                                                  _______________



          at  606 n.6; Eden  Toys, Inc. v.  Marshall Field &  Co., 675 F.2d
                       ________________     _____________________



          498, 501 (2d Cir. 1982).  Viewing the summary judgment record  in



          the  best light for Plaintiff, we conclude  that he has failed to



          raise  a  genuine  issue  of   material  fact  with  respect   to



          Defendants' "access";  this deficiency alone suffices  to justify



          summary judgment.



                    To satisfy its burden  of showing access, the plaintiff



          must  produce evidence  from which  a reasonable  finder of  fact



          could infer that  the defendant had  a reasonable opportunity  to



          copy his or her work.  See Selle v. Gibb, 741  F.2d 896, 901 (7th
                                 ___ _____    ____



          Cir. 1984).  Evidence that only creates a "bare possibility" that



          the  defendant had access is  not sufficient to  create a factual



          issue as to copying.  Jason v. Fonda, 526 F. Supp. 774, 777 (C.D.
                                _____    _____



          Cal. 1981) (concluding  that the  fact that between  200 and  700



          copies of plaintiff's book  were available in Southern California



          bookstores  was  insufficient  to  infer  that  defendant   movie


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producers had a  reasonable opportunity to  copy it), aff'd,  698
                                                                _____



          F.2d  966 (9th Cir. 1982).  "[T]he  jury cannot draw an inference



          of  access based upon speculation and  conjecture alone."  Selle,
                                                                     _____



          741 F.2d at 901.



                    On  the  summary  judgment  materials  before  it,  the



          district   court  concluded  that,  even  drawing  all  favorable



          inferences for Grubb, the  evidence did not demonstrate  that Loh



          had  access  to  Grubb's design;  in  fact,  it  showed that  Loh



          composed his design  independently of and prior  to Grubb's work.



          With respect to  Loh's access, Grubb  contends that the  district



          court  erred, since an alleged  copier's access may  be proven by



          showing that  an intermediary with  whom the copier  was involved



          had  access to the copyrighted  work under circumstances in which



          the  copier also may  have been given an  opportunity to view the



          copyrighted  work.    Grubb  also argues  that  his  Supplemental



          Affidavit  is  evidence that  Loh had  access to  Grubb's design.



          With respect to the district court's finding of independent prior



          creation,  Grubb argues  that Loh's  testimony suggests  that Loh



          traced  the Patriots' New Logo  from another design.   Grubb also



          questions   Loh's   credibility,   and   submits   that   Grubb's



          Supplemental Affidavit is evidence that Loh did not independently



          create the Patriots' new logo prior to Grubb's design.



                    Turning first  to Loh's  access, it is  undisputed that



          the  Patriots received  Grubb's sketch  on February 9,  1993, via



          Grubb's unsolicited  submission.  Grubb points  to several pieces



          of   evidence  that  he  believes  shows  Loh  had  a  reasonable


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opportunity to copy Grubb's design.  First, according to  Grubb's



          deposition, the individual Patriots' employee to whom he gave the



          design told him that the  Patriots would get in contact with  him



          in  the  future.   Additionally, Grubb  points  to the  fact that



          Jansen,  as an  employee of  NFL Properties,  admits that  he had



          contact with representatives of the Patriots beginning on January



          27,  1993, and  that Jansen had  also hired the  design firm that



          employed Loh.   Grubb  claims that  Jansen is  a point  of access



          between Loh's firm and the Patriots, from which a finder  of fact



          could  permissibly  infer  a  reasonable   opportunity  to  copy.



          Finally, Grubb claims that his Supplemental Affidavit is evidence



          that Loh had access to Grubb's design.



                    We  need  not  resolve  Grubb's  contention  that  this



          evidence  entitles him to  a finding of  access, however, because



          even assuming,  arguendo, that it did, the undisputed evidence is
                          ________



          that  Loh created  the Patriots'  New Logo  prior to  February 9,



          1993.2   As noted, supra, Grubb  does not just have  to show that
                             _____



          Loh had  access to Grubb's work;  Grubb has to show  that Loh had



          access to Grubb's work before Loh created the Patriots' New Logo.



          See Concrete Mach., 843 F.2d at 605 n.6; Baxter, 812 F.2d at 423.
          ___ ______________                       ______



                              
          ____________________



          2   The  district  court described  this  as  "independent  prior

          creation,"  an  independent  showing  that rebuts  a  finding  of

          access.  We do not consider whether  "independent prior creation"

          is a  separate showing,  see  Grubb v.  National Football  League
                                   ___  _____     _________________________

          Properties,  Inc., slip op. at 6 (D. Mass. 1995) (citing Concrete
          _________________                                        ________

          Machinery, 843 F.2d at 605 n.6), or whether any showing of access
          _________

          must, as a  logical matter,  necessarily be access  prior to  the
                                                              _____

          creation  of a  defendant's work,  see Baxter,  812 F.2d  at 423,
                                             ___ ______

          since resolution of this question either way would not affect the

          result of our analysis.



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In  his deposition,  Loh  stated that  he  began working  on  the



          Patriots' New Logo on  January 28, 1993, and by February 4, 1993,



          had finished, save for later refinements, the Patriots' New Logo.



          Additionally, in  his affidavit,  Loh further testified  that, in



          late January of 1993, he created a pencil sketch of the Patriots'



          New Logo, to which he  added color later that day.  With  the aid



          of his  timesheets, he was able in his deposition to pinpoint the



          day  he created  these  works  as January  28,  1993.   What  Loh



          identified  as  having  been  created during  this  period  bears



          unmistakable resemblance to the Patriots' New Logo, save for  the



          color of the  star3 in  the hat and  a few  shadings on the  face



          depicted.   This  testimony  demonstrates that  Loh did  not have



          access  to Grubb's  design prior  to creating  the  Patriots' new



          logo, see Baxter, 812  F.2d at 423, since Grubb's  evidence shows
                ___ ______



          that Loh could not  have viewed Grubb's design prior  to February



          9, 1993.



                    To be sure, Grubb  argues that he does in  fact dispute



          Loh's testimony, and therefore, there  remains a genuine issue of



          material fact as to the issue  of Loh's prior creation.  However,



          on summary judgment, absent specific facts discrediting testimony



          from  a witness associated with  the movant, and  absent a direct



          conflict  in the  testimony, the  opponent (although  entitled to



          have his or her evidence  taken as true) is not entitled  to have



          the  defendant's  evidence positively  disbelieved.    Takeall v.
                                                                 _______

                              
          ____________________



          3  While the color  of the star changed from white to  silver, it

          should be noted  that the  Patriots' actual helmet  color --  the

          background of the logo -- also changed from white to silver.



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Pepsico, Inc., 809 F. Supp. 19, 23 (D. Md. 1992),  aff'd, 14 F.3d
          _____________                                      _____



          596 (4th Cir. 1993),  cert. denied, 114 S.  Ct. 2742 (1994);  see
                                ____________                            ___



          also  Moreau v. Local  247, Int'l Bhd. of  Firemen, 851 F.2d 516,
          ____  ______    __________________________________



          519  (1st Cir. 1988); 10A Charles A. Wright, Arthur R. Miller and



          Mary K. Kane, Federal Practice and Procedure:  Civil 2d   2726 at
                        _________________________________________



          119, nn.11-12 (1983).   Grubb first questions the credibility  of



          Loh's testimony, and second argues that Loh's testimony conflicts



          with Grubb's  Supplemental Affidavit, since Grubb  therein opines



          that  his and  Loh's designs are  so similar  that Loh  must have



          copied Grubb's work.



                    Grubb attempts to call into question Loh's testimony by



          arguing that Loh's computer software timesheets do not  show what



          Loh had  drawn on  any particular  date, and  that Loh could  not



          identify individual sketches he created during the design process



          by specific date.   Grubb  also points to  Loh's admission  that,



          without his timesheets, he could not remember on what date he did



          what.   Furthermore, Grubb  argues that Loh  was still  sketching



          possible logos  on or after  February 9, 1993.   All of  this is,



          however, irrelevant.  The  parties stipulated that the timesheet-



          generating software  program could  not be  backdated.   With his



          timesheets and the summaries therein of how he used his time, Loh



          testified  in his deposition that  he began sketching the designs



          for the Patriots'  New Logo on January 28,  1993, and by February



          4, 1993, he  had essentially  finished designing it.   While  Loh



          testified  that  he  was  still  working  on  the  project  after



          February 9,  he also  testified  that this  work involved  simple


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refinements, such as changing  the color of  the star.  The  fact



          that Loh needed  his timesheets  to recollect dates,  or that  he



          continued  to work on the Patriots project after February 9, does



          not discredit his testimony,  particularly where it is undisputed



          that the timesheets could not have been backdated.



                    Besides challenging the credibility of Loh's testimony,



          Grubb  also  argues  that his  Supplemental  Affidavit represents



          facts  in   direct  conflict  with  Loh's   testimony.    Grubb's



          Supplemental Affidavit expresses his opinion of the Patriots' new



          logo's similarity  to Grubb's work.  Grubb  supplies reasoning --



          pointing to the relative  proportions of the elements of  the two



          designs and the curve of the base line -- for why he believes the



          designs are similar.  Grubb also concludes that Loh's design must



          have been traced from another design.



                    Grubb's argument seems to be that 1) Loh traced, and 2)



          Loh's work resembles Grubb's work, therefore Loh's testimony that



          he did not copy Grubb's work, and in fact,  created the Patriots'



          new  logo before Grubb submitted  his own design,  is in dispute.



          However, similarity alone  cannot lead to  a finding of  copying,



          without  evidence  of access  prior  to  the allegedly  offending



          work's creation.   As a result, we  must look to  whether Grubb's



          affidavit actually creates a direct conflict with Loh's testimony



          --   since  the  latter   rebutted  any  finding   of  access  by



          demonstrating prior  creation.   We conclude that,  even assuming



          that Grubb's Supplemental Affidavit is properly considered expert



          testimony, it  is  simply  not  in  direct  conflict  with  Loh's


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testimony.  Similarity cannot substitute for access, and the fact



          that Loh admitted  to having  done "tracings" in  the process  of



          producing his work does not conflict with Loh's statement that he



          had virtually  completed the  Patriots' New  Logo by February  4,



          1993,  since Loh admitted  that Evenson  had various  pictures of



          colonial  soldiers  that  he   used,  and  the  Summary  Judgment



          materials indicated that Loh was sent designs similar to the 1979



          proposed Patriots' logo, which  also depicted a colonial soldier.



          The fact  that Loh did tracings is  simply not in direct conflict



          with Loh's testimony that  he had created the Patriots'  new logo



          by February 4, 1993.  



                    As  a result,  like  the district  court before  us, we



          conclude  that Loh  composed his  design prior  to  Grubb's work.



          Such prior creation renders any conclusion of access or inference



          of  copying illogical.  See  Concrete Mach., 843  F.2d at 606 n.6
                                  ___  ______________



          (stating that  "[a]lthough access plus substantial  similarity is



          required  to show copying, the trier of fact may nonetheless find



          no copying if the defendant shows independent creation").



                    Because both access and substantial similarity need  be



          shown, see  Concrete Mach. Co., 843 F.2d  at 606; O'Neill v. Dell
                 ___  __________________                    _______    ____



          Publishing  Co., 630 F.2d 685, 686 (1st Cir. 1980), and Plaintiff
          _______________



          has failed  to  demonstrate  a genuine  issue  of  material  fact



          regarding  access, we need go no further.  While Plaintiff argues



          that "[w]here two designs  are so similar that one must have been



          copied  from  the other,  proof of  access  may not  be required,



          because  no   explanation  other  than   copying  is   reasonably


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possible,"   Brief  for the Plaintiff-Appellant  at 13,  the lone
                       __________________________________



          case that Plaintiff cites for this proposition, Flag Fables, Inc.
                                                          _________________



          v. Jean Ann's Country Flags  and Crafts, Inc., 730 F. Supp.  1165
             __________________________________________



          (D. Mass. 1989), in fact states that



                      this Court's view of the  present dispute

                      [is that] given  the indisputable  access
                                           ____________________

                      and  substantial  similarity between  the
                      ____________________________

                      two  parties'  banners,  the evidence  of

                      independent  creation   advanced  at  the

                      hearing  by  defendants  was  simply  not

                      persuasive.



          Id.  at 1181 (emphasis added).  Thus, Plaintiff misstates the law
          ___



          by failing to  recognize that he bears the burden of showing both
                                                                       ____



          reasonable  access and substantial  similarity.   Concrete Mach.,
                             ___                            ______________



          843  F.2d at  606; Walker,  784 F.2d  at 48;  Sid &  Marty Krofft
                             ______                     ___________________



          Television,  562  F.2d   at  1162-63.     The  reason  for   both
          __________



          requirements  is  simple:   copyright  protection  precludes only



          copying; if two people  arrive at the same result  independently,



          copyright law will not protect the first.  See Selle, 741 F.2d at
                                                     ___ _____



          896 (7th Cir. 1984) (stating that "two works may  be identical in



          every detail, but,  if the alleged infringer  created the accused



          work independently or both works were copied from a common source



          in the public domain, then there is no infringement"); 3 Nimmer  



          13.02;  see also  Arthur  v. American  Broadcasting Cos.,  633 F.
                  ________  ______     ___________________________



          Supp.  146,   148  n.3,   149  (S.D.N.Y.  1985)   (concluding  no



          infringement  even where  expressions are  extremely similar,  if



          "nearly all the  similarity can  be attributed to  the fact  that



          both [works]  are artist's  renderings of the  same unprotectible



          idea"; ideas cannot be protected under copyright law, 17 U.S.C.  


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102(b)).  Thus, like  the district court  before us, we need  not



          address the issue of substantial similarity.



                                      CONCLUSION
                                      CONCLUSION



                    As  a  result of  the  foregoing, the  judgment  of the



          district court is affirmed.
                            affirmed.
                            ________


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