IP Law Daily, COPYRIGHT—E.D. Pa.: Infringement allegations involving hockey memorabilia hip-checked out of court, (Jan 11, 2023)

By Robert B. Barnett Jr., J.D.

The court ruled that no substantial similarity existed as a matter of law because the complaint relied on unprotectable elements of the copyrighted hockey memorabilia item.

A hockey memorabilia collector’s suit alleging that Fanatics, Inc., infringed his copyright in a hockey puck-shaped piece of hockey memorabilia inside a Stanley Cup replica was dismissed without prejudice because the copyright did not cover all ice-filled hockey puck-shaped items, only the collector’s particular expression of the hockey puck-shaped item, which was insufficiently pleaded, a Pennsylvania federal district court has ruled. A valid infringement complaint cannot rely on the utilitarian use of a see-through hockey puck to display melted rink ice to establish similarity between the works (Grondin v. Fanatics Inc., January 10, 2023, Pratter, G.).

Background. William Grondin makes and sells collectible hockey memorabilia. In 1998, he obtained copyright registration for “Slice of the Ice,” which is a Lucite reproduction of the Stanley Cup, containing a hollowed-out hockey puck in the center that was filled with melted ice gathered from the rink used in a prominent hockey game.

Fanatics, Inc., meanwhile, made and sold a line of memorabilia that consisted of crystal hollowed-out hockey pucks filled with game ice.

Grondin sued Fanatics in Pennsylvania federal court, asserting copyright infringement. The infringement allegations focused on the similar use of a hollowed-out hockey puck to display melted rink ice. Fanatics filed a motion to dismiss.

Infringement. To survive a motion to dismiss, a copyright infringement claim must assert (1) ownership of a valid copyright and (2) unauthorized copying of the original. The court rejected Fanatics’ arguments contesting copyright ownership, ruling that the complaint had sufficiently established that Grondin held a valid copyright in “Slice of the Ice.” Whether the case would be dismissed, therefore, depended upon whether Grondin had adequately pleaded the second element, copying.

Copying. Copying can be established either from actual copying or material appropriation of the copyrighted work. Because actual copying was not alleged, or at least not alleged properly, the court examined whether the complaint had sufficiently established material appropriation.

The material appropriation analysis focuses on substantial similarity, which is determined by excluding any unprotectable elements and then conducting a side-by-side comparison.

Substantial similarity. The court excluded three unprotectable elements: (1) the use of a hockey puck to create hockey memorabilia, (2) the idea of placing game rink ice into a piece of hockey memorabilia, and (3) the decision to use a hollowed-out hockey puck to display the melted ice. Hockey pucks, the court noted, are so common in hockey memorabilia that their existence cannot be copyrighted. Hockey pucks are “inseparable from, indispensable, or even standard treatment of” the sport of hockey (Date E. USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir. 1988)). If Grondin were allowed to copyright the puck itself, he would control the hockey memorabilia market.

The court also excluded the decision to use clear hockey pucks that had hollow cavities to hold melted ice because this is a utilitarian feature that is not copyrightable. The court compared this feature to face and arm cutouts in a banana costume, which were not copyrightable “because they were utilitarian features necessary to realize the idea of a wearable costume.” In this case, a hollow and clear hockey puck was necessary to realize the idea of a puck containing visible melted ice.

Once the court stripped away the unprotectable elements, the complaint failed because it had alleged only that Fanatics copied the idea of using the hollowed-out hockey puck to display melted ice. The court reminded Grondin that copyright protection did not extend to the idea of storing game rink ice in a piece of memorabilia, it extended only to Grodin’s particular expression of that idea.

If Grodin is to succeed on an amended complaint, he will need to plead how Fanatics copied his particular expression of the game ice contained in the see-through hockey puck. Because he made no such allegation in the complaint—relying instead only on the similar use of see-through hockey pucks—the complaint failed as a matter of law to sufficiently plead copyright infringement. Furthermore, the court added, if Grodin is to plead direct copying, he will need to do better than plead generically that Fanatics must have had access to his product because he offered it for sale.

The court, therefore, granted Fanatics motion to dismiss, with leave to amend.

The Case is No. 2:22-cv-01946-GEKP.

Attorneys: Alan L. Frank (Alan L. Frank Law Associates, P.C.) for William Grondin. Matthew Daniel Klayman (Morgan, Lewis & Bockius LLP) for Fanatics, Inc.

Companies: Fanatics, Inc.

Cases: Copyright PennsylvaniaNews