Matthews v. Freedman

• Court: Court of Appeals for the First Circuit
• Decided: October 9, 1998
• Docket: 98-1408
• Status: Published

Opinion

USCA1 Opinion

                 United States Court of Appeals

                     For the First Circuit


No. 98-1408



                         DENISE MATTHEWS,

                   d/b/a J.D. BENJAMIN COMPANY,



                      Plaintiff, Appellant,



                                v.



                          ALAN FREEDMAN,

            d/b/a FREEDMAN ENTERPRISES, ELLIOT KAPLAN,

                  and CAMELOT ENTERPRISES, INC.,

                                 

                      Defendants, Appellees.


APPEAL FROM THE UNITED STATES DISTRICT COURT



                FOR THE DISTRICT OF MASSACHUSETTS



           [Hon. Robert E. Keeton, U.S. District Judge]


Before



                      Selya, Circuit Judge,

                                

                 Aldrich, Senior Circuit Judge,

                                

                   and Boudin, Circuit Judge.


James G. Goggin with whom Jacqueline W. Rider and Verrill &

Dana, LLP were on brief for appellant.

     Andrew D. Epstein with whom Barker, Epstein & Loscocco was on

brief for appellees.


October 9, 1998


BOUDIN, Circuit Judge.  Denise Matthews, a fabric

designer and wholesale distributor of "soft-good" souvenirs, makes

and sells a children's t-shirt with a design entitled, "Someone

Went to Boston and got me this shirt because they love me Very

much."  This phrase appears on a t-shirt surrounded by small

drawings of a fish, a sailboat, a lobster, Faneuil Hall, and

scattered hearts.  Matthews registered this "Someone..." t-shirt

design with the U.S. Copyright Office, receiving a certificate of

registration effective August 9, 1995.  

  In February 1997, Alan Freedman, a competing souvenir

producer, began offering a children's t-shirt with the slogan

"Someone Who Loves Me Went to Boston and Got Me this Shirt."  This

phrase appears on the Freedman t-shirt and is surrounded by small

drawings of a fish, a sailboat, a lobster, a swan boat, ducklings,

and a smiling sun.  Freedman and Matthews both attend the Boston

Gift Show where Freedman has seen Matthews' "Someone..." t-shirt

displayed.

  Matthews filed suit against Freedman for copyright

infringement under 17 U.S.C.  501 et seq. in August 1997.  The

district court held a non-jury trial on January 21, 1998, and

issued a memorandum and order dated February 5, 1998, granting

judgment in favor of Freedman on the ground that Freedman's t-shirt

did not infringe upon the protectible elements of Matthews' design. 

Thereafter, the district court also awarded attorney's fees to

Freedman in the amount of $25,000.  This appeal by Matthews

followed.

  To make out a copyright infringement, a plaintiff must

show ownership of a valid copyright--not questioned here--and the

"copying of constituent elements of the work that are original." 

Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361

(1991).  As to this latter element, sometimes the dispute concerns

the factual question of whether the defendant saw and copied the

plaintiff's work; but in other cases, as in this one, the dispute

centers around more subtle, related questions: what aspects of the

plaintiff's work are protectible under the copyright laws and

whether whatever copying took place appropriated those elements.

  A major limitation on what is protectible under the

copyright laws is capsulized in the notion that copyright protects 

the original expressions of ideas but not the ideas expressed.  SeeFeist, 499 U.S. at 345-51; CMM Cable Rep, Inc. v. Ocean Coast

Properties, Inc., 97 F.3d 1504, 1516 (1st Cir. 1996).  The point is

that the underlying idea (e.g., the travails of two star-crossed

lovers), even if original, cannot be removed from the public realm;

but its expression in the form of a play script (such as William

Shakespeare's Romeo and Juliet) can be protected.  Needless to say,

the line is a blurry one.

  If the idea-expression dichotomy favors copyright-case

defendants, a somewhat different notion in copyright law favors the

plaintiffs.  It is well-settled that where the plaintiff has

copyrighted an original expression, an infringement can be found to

exist even where the defendant does not copy the original

expression in a literal manner (word for word or image by image). 

It is enough to make out infringement--assuming actual copying--if

the alleged infringing work is "substantially similar" to the

protectible expression in the copywritten work.  CMM Cable, 97 F.3d

at 1513.  In other words, if Romeo and Juliet were under copyright,

the infringer could not escape solely by changing the names of

every character and altering a few words in every line.

     A potential tension is now obvious.  An alleged

infringing work taken as a whole may seem "substantially similar"

to the copyrighted work taken as whole, but the impression of

similarity may rest heavily upon similarities in the two works as

to elements that are  not copyrightable--because those elements are

the underlying ideas, or expressions that are not original with the

plaintiff, or for some like reason.  See Feist, 499 U.S. at 358-60;

CMM Cable, 97 F.3d at 1515.  Courts have used various formulas to

isolate the protectible expression in the copyrighted work to

determine whether the alleged infringing work is "substantially

similar" to that protectible expression.

     That is just what the district court did in the present

case.  It declined implicitly to give Matthews any protection for

the idea that underlies the phrasing on the t-shirt--that the t-

shirt's purchase represents someone's love of the donee--or the

unoriginal notions of having a legend on a t-shirt, using childish

lettering, or placing on the t-shirt symbolic emblems reminiscent

of a location (here, Boston).  The district court then turned its

attention to the remaining elements and found that, as to theseelements, the differences between the two works precluded a finding

of infringement.

     In this regard, the district court pointed to differences

in the particular icons selected, their arrangement, the colors

used, and the lettering.  Examination of Matthews' and Freedman's

t-shirts bears out the district court's conclusion; no one would

think the lettering, colors or particular icons had been literally

copied from one t-shirt to the other.  For example, the icons are

not all of the same subjects and even where both t-shirts depict a

lobster or fish, the drawings are completely different.

     Because Matthews does not directly challenge the district

court's assessment on an element-by-element basis, we pause only to

address the most obvious possible claim: that the expression of the

"someone" theme in the two t-shirts is "substantially similar." 

Obviously, there is a good deal of similarity in the substance of

the two competing phrases: "someone went to Boston and got me this

shirt because they love me very much" and "someone who loves me

went to Boston and got me this shirt."  But most of the similarity

rests on the fact that both phrases are seeking to express

essentially the same idea.

     Admittedly, there is some similarity in the two

expressions of the idea, but this is largely because both are

expressing the same idea briefly and in straightforward terms and

the available variations in wording are quite limited.  Even if the

sentiment were original with Matthews--which is by no means clear--

it would virtually give Matthews a monopoly on the underlying idea

if everyone else were forbidden from using a differently worded

short sentence to express the same sentiment.  Cf. CMM Cable, 97

F.3d at 1519-20.

     In all events, Matthews' attack on the district court's

decision is not based on any refined comparison of individual

elements.  Rather, Matthews says broadly  that the test for

copyright infringement is whether the "ordinary observer" would

find a substantial similarity between the two works and would be

disposed to overlook the disparities as minor.  Matthews then

argues that the district court, at least if its judgment is

reviewed de novo (as Matthews urges), erred because the two t-

shirts are to the average observer  substantially similar "in

design and overall aesthetic appeal" and because "both exhibits

have similar 'Someone Who Loves Me Went To Boston And Got Me This

Shirt' language and display boats, fish, and a lobster in a

childlike fashion."

     Case law supports the "ordinary observer" test and the

disregard of minor differences in favor of major similarity.  SeeConcrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600,

608-11 (1st Cir. 1988).  As for the proper standard of review,

there is some difference among the circuits where the question of

substantial similarity is based solely on a visual comparison of

two items easily available to the reviewing court.  But even if we

assumed arguendo a de novo standard of review, the protectible

elements here are not substantially similar for reasons already

indicated. 

     Indeed, Matthews' own argument (just quoted) is

practically explicit in its refusal to distinguish what is

protectible from what is not.  Lack of originality to one side, the

notion of displaying "boats, fish and a lobster in childlike

fashion" is not in itself an expression; and although a particular

drawing might be, the two t-shirts in this case do not display

similar icons.  For reasons already indicated, the "someone"

phrasing in the two t-shirts reflects the same sentiment, but the

sentiment is not protectible, and Freedman's expression of it was

different from Matthews', given the limited options available.

     We do not mean to suggest that every element in

copyrighted work must be considered apart from all others; a

collection of protectible elements may seem substantially similar

primarily through the overall impression created by those

protectible elements taken together.  Cf. Knitwaves, Inc. v.

Lollytogs Ltd., 71 F.3d 996, 1003-04 (2d Cir. 1995).  Even entirely

unoriginal expressions taken from others might sometimes be

combined in a way that gave rise to a new protectible expression

(imagine a collage of newspaper headlines juxtaposed in some highly

creative and original fashion).  Cf. Feist, 499 U.S. at 358-59. 

But this case falls into neither of these categories.

     Turning to the issue of attorney's fees, Matthews urges

us to reverse as an abuse of discretion the district court's award

of $25,000 in attorney's fees.  She says that because the district

court found that both parties made "non-meritorious" arguments, the

Supreme Court decision in Fogerty v. Fantasy, Inc., 510 U.S. 517,

534 (1994), dictated an even-handed treatment of attorney's fees,

namely, none to either side.  Matthews also claims that the

district court failed to consider all of the Fogerty factors and

that even if an award was proper, the fees awarded here were

excessive.

     The copyright statute departs from the usual American

rule and says that the district court "may" award attorney's fees

to the prevailing party.  17 U.S.C.  505.  In Fogerty, the Supreme

Court rejected the view that fees should be awarded more readily to

prevailing plaintiffs than to prevailing defendants, 510 U.S. at

533; and it said that the weakness of arguments made was a relevant

consideration.  Id. at 534 n.19.  But the Court did not say that

fees should be withheld from the prevailing party simply because

both sides made some arguments that did not persuade.

     Here, the district court ruled that the Matthews' claim

was not frivolous and was not brought in bad faith, but that

Matthews "did try to extend her copyright protection far beyond

what is allowed by law."  This last conclusion is a judgment call

and, on the present facts, well within the district court's

discretion.  A plaintiff's decision to bring a weak, if

nonfrivolous, case and to argue for an unreasonable extension of

copyright protection are relevant concerns.  Fogerty, 510 U.S. at

526-27; Edwards v. Red Farm Studio Co., 109 F.3d 80, 82-83 (1st

Cir. 1997).  Depending on other circumstances, a district court

could conclude that the losing party should pay even if all of the

arguments it made were reasonable.

     Apart from the weakness of the arguments on both sides,

Matthews says only that her company is not a "corporate giant"; but 

it may well be larger than Freedman's, and anyway Matthews makes no

effort to develop the details, although free to offer such evidence

in the district court.  We conclude that  the district court gave

a rational explanation for its decision to award fees to Freedman,

and that Matthews has failed to show an abuse of discretion or any

other error.  This is equally so as to the amount awarded--$25,000

out of the $60,000 originally sought.

     Freedman has sought a further award of attorney's fees to

cover this appeal.  In our view, Matthews has raised some issues

worth airing; the arguments on appeal mirror those made in the

district court; and we think that $25,000 is an adequate sum for

Freedman for the litigation as a whole, considering that the

district court conducted an abbreviated bench trial using

stipulated facts and affidavits.  Accordingly, in the exercise of

our own discretion, we decline to make any further award to

Freedman.

     Affirmed.