IP Law Daily, COPYRIGHT—E.D. Pa.: Lawsuit over hockey memorabilia is dismissed for a second time, (Apr 18, 2023)

By Matthew Hersh, J.D.

The amended complaint cured inadequate allegations of access, but still failed to plead substantial similarity.

The fact that a merchandiser of hockey memorabilia had access to a derivative of a competitor’s work was sufficient to allege access to the competitor’s original work because the copying of the derivative might also constitute copying of the original, the federal court for Philadelphia has held. But the court, despite finding that the copyright owner had adequately cleared one threshold for stating a copyright infringement claim, nonetheless dismissed the complaint because it alleged copying only of unprotected utilitarian elements of the design (Grondin v. Fanatics Inc., April 14, 2023, Pratter, G.).

The lawsuit arises of the marketing of so-called “crystal pucks,” which are basically hockey pucks made out of glass instead of vulcanized rubber and filled with water. Each set of crystal pucks, which are sold by an NHL-licensed sports merchandise vendor named Fanatics uses water that is taken from the melted ice of a particular game. For example, fans of the Washington Capitals, like this writer, can purchase a crystal puck that is “filled with ice from the 2018 Stanley Cup Final.”

The NHL licensee’s crystal pucks raised the ire of William Grondin, the maker of his own set of hockey memorabilia and a former collaborator with the NHL himself. His product, known as “Slice of the Ice,” consists of a sculpture in the approximate shape of the Stanley Cup with a hockey puck-shaped piece in the center. That centerpiece, too, is filled with water melted from the ice of a particular game. A version of this product, containing water ostensibly from the 1996, Stanley Cup, appears to be available on eBay here. Grondin has held a copyright registration for the work since 1998.

The copyright holder sued the NHL licensee for copyright infringement. In January of this year, the district court dismissed the complaint, finding that the copyright holder had not pleaded facts that would adequately allege that the merchandiser had access to his work or that the two sets of works were substantially similar. Nonetheless, and perhaps heeding Wayne Gretzky’s famous adage that “you miss 100% of the shots you don’t take,” the copyright holder filed an amended complaint. The merchandiser moved again to dismiss, leading to this opinion.

Substantial similarity. The court again dismissed the complaint because the copyright owner had failed to plead facts that could establish substantial similarity. The court’s prior ruling found that none of the alleged common features between the works—the use of a hockey puck, the fact that those pucks are clear, and the fact that they have hollow cavities to hold water—were enough to state a claim. (“A puck is just a puck,” the court held, and the other two features were merely utilitarian.) The new complaint added one more alleged similarity: the precise amount of water inside the puck. Was this enough to make a difference? The court said it did not.

The fact that both works contained the same amount of water inside the pucks did not make a difference, the court reasoned, because the use of water was still fundamentally a utilitarian feature—and thus not protected by copyright. In each work, the court noted, the puck was designed with a mix of both water and air so that it would be obvious to a viewer—from the motion of the water—that there was water inside. The copyright owner argued that the exact amount of water was not a utilitarian feature because it was possible to convey that a puck has water inside even without an air bubble, or perhaps with a different mix of water and air. “But whether a particular feature of a work is utilitarian depends on whether it is useful,” the court noted, “not whether it is indispensable.” Here, placing an air bubble in a water-filled hockey puck served the utilitarian feature of making the water inside visible. That could not be protected under copyright law—and therefore could not be the basis for substantial similarity.

Access. Although the court found that the complaint still failed to state a claim, it did find that the complaint as amended adequately alleged that the merchandiser had access to the original work. The original complaint gave no basis for how the merchandiser might have come across the original work, arguing only that the two works were “strikingly similar.” But the amended complaint, the court noted, added a new allegation: namely that the merchandiser had for a time ran the NHL’s e-commerce website during a period of time when the original “slice of the ice” product was sold through it. To be sure the court noted, the version being sold on the website at the time was a derivative of the one originally registered in 1998—but that made no difference. “It is quite possible to copy the original, protectable elements of a work by copying a derivative thereof,” the court noted.

The case is No. 22-1946.

Attorneys: Alan L. Frank (Alan L. Frank Law Associates PC) for William Grondin. Matthew Daniel Klayman (Morgan, Lewis & Bockius LLP) and R. Charles Henn, Jr. (Kilpatrick Townsend & Stockton LLP) for Fanatics, Inc.

Companies: Fanatics, Inc.

Cases: Copyright PennsylvaniaNews GCNNews