IP Law Daily, COPYRIGHT—C.D. Cal.: Cell phone accessories seller provided evidence that rival copied marketing materials, (Nov 6, 2014)

By Thomas Long, J.D.

Mobile phone accessories seller Cellular Accessories for Less, Inc. (“CAFL”) provided sufficient evidence that competitor Trinitas LLC copied protectable elements of copyrighted product descriptions and other marketing materials to withstand a motion for summary judgment, the federal district court in Los Angeles has decided (Cellular Accessories for Less, Inc. v. Trinitas LLC, November 5, 2014, Pregerson, D.). CAFL could not seek damages, however, and could proceed with its copyright infringement claim for injunctive relief only.

CAFL owned and operated a website that displayed extensive descriptions for approximately 10,000 products. The descriptions went beyond the product specifications provided by manufacturers, and CAFL asserted that the extended descriptions gave it a competitive advantage because they allowed customers to make informed purchasing decisions.

People employed by CAFL added extra text to the basic product specifications and facts provided by the manufacturers. For example, CAFL’s website manager, Ryan Morrison, allegedly authored the text under the “Bluetooth Headset Benefits” heading found on the product description page for the M155 Marque Voice Controlled Bluetooth Wireless Headset (“M155”). This text was duplicated on Trinitas’ website.

In its copyright infringement allegations against Trinitas, CAFL identified 971 product descriptions that allegedly were copied by Trinitas. In addition, CAFL asserted that Trinitas duplicated CAFL’s Frequently Asked Questions (“FAQ”) section.

Trinitas moved for summary judgment, arguing that CAFL did not hold a valid copyright and that CAFL did not possess a protectable interest in the material that allegedly was copied.

Ownership of valid copyright. CAFL held a copyright registration certificate for the contents of the CAFL website, including the product descriptions and the FAQ section. Therefore, CAFL provided prima facie evidence of owning a valid copyright.

Trinitas argued that CAFL did not author the product descriptions on the CAFL website, but that these descriptions came from the manufacturer. To the degree that CAFL edited, rearranged, or modified the product descriptions, Trinitas argued that the edits were not sufficiently original to warrant copyright protection.

These general allegations were not sufficient to shift the burden to CAFL to prove that its work was original, the court said. The burden was on Trinitas to show that CAFL’s work was non-original by comparing it to preexisting works; for example, the manufacturer’s descriptions. If Trinitas could show conclusively that CAFL had copied large portions of the allegedly copyrighted material, and that what remained afterward was trivial, it could succeed on its summary judgment.

CAFL provided a side-by-side comparison of 971 product descriptions that Trinitas allegedly copied. However, neither party had separated out the protectable elements from the allegedly non-protectable elements in all 971 descriptions, the court said. The burden to do so fell on Trinitas.

Trinitas presented some evidence to show that the product description of the M155 Bluetooth Headset contained some non-original elements. CAFL’s president admitted in a deposition that the product description starting with the words “sleek and lightweight” and ending with “the smart way to connect with your smartphone,” as well as the product description under “Product Features” starting with “[t]he easiest way to answer handsfree,” and down to “excellent sound quality and amazing lightweight design,” appeared to be an exact copy of those found on the manufacturer’s website.

However, apart from that portion of the M155 product description, Trinitas did not demonstrate that the product descriptions were non-original and therefore non-protectable, according to the court. Trinitas failed to identify the portions of the pleadings that it believed demonstrated the absence of a genuine issue of material fact.

CAFL also argued that the formatting and arrangement of facts under the headings “Specifications,” “Included Parts,” “Accessories/Replacement Parts,” and “Product Documentation” were entitled to copyright protection. To the extent that CAFL’s employee selected and arranged facts under the headings, Trinitas did not show that CAFL did not exercise the minimal degree of creativity required for copyright protection, the court said. In addition, Trinitas did not dispute CAFL’s contention that its FAQ was original and protectable.

Accordingly, the court held that Trinitas was not entitled to summary judgment based on a non-originality argument.

Copying of protectable elements. To establish copyright infringement, CAFL had to show that Trinitas copied protectable elements of CAFL’s works. Trinitas did not dispute the claim that its website was substantially similar to CAFL’s website. Instead, Trinitas argued that CAFL’s website consisted on unprotectable elements. However, Trinitas did not show that the product descriptions did not contain nontrivial amounts of original material; therefore, Trinitas essentially admitted direct copying of presumptively protectable copyrighted material, the court said. Therefore, the court was not required to engage in a “substantial similarity” analysis. There was a genuine issue of material fact as to infringement of the product descriptions and their arrangements, and Trinitas was not entitled to summary judgment on these claims.

Trinitas’s FAQ section appeared to be substantially similar to CAFL’s FAQ section, in the court’s view. A side by side comparison revealed that the wording and number of questions were not different from each other. Therefore, there was an issue of fact as to the substantial similarity between the two parties’ FAQ sections.

Unclean hands. Trinitas argued that it was entitled to summary judgment on its affirmative defense of unclean hands. CAFL, according to Trinitas, was attempting to gain a monopoly over marketing materials that it did not own. However, CAFL disputed this contention and argued that it had never sought to prevent use by others of marketing materials provided by the manufacturer. Instead, CAFL asserted, it is only trying to protect its copyrighted works. Because there was a factual dispute as to this defense, summary judgment for Trinitas was denied.

Remedies. Trinitas successfully argued that CAFL did not establish any actual damages suffered as a result of the alleged copying. In addition, CAFL was barred from claiming statutory damages under §412 of the Copyright Act for its failure to timely register its works. Accordingly, the court held that CAFL could proceed with its copyright claim for injunctive relief only.

The case is No. CV 12-06736 DDP (SHx).

Attorneys: Daniel C. Cotman (Cotman IP Law Group PLC) for Cellular Accessories for Less, Inc. Daniel C. Lapidus (Lapidus and Lapidus APLC) for Trinitas LLC.

Companies: Cellular Accessories for Less, Inc.; Trinitas LLC

Cases: Copyright TechnologyInternet CaliforniaNews