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Healthmate International, LLC v. French

United States District Court, W.D. Missouri, Western Division

June 1, 2017

HEALTHMATE INTERNATIONAL, LLC, Plaintiff,
v.
TIMOTHY W.T. FRENCH, and RAMPANT LION LLC, Defendants.

          ORDER AND OPINION (1) GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT AND (2) DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

          BETH PHILLIPS, JUDGE.

         Plaintiff Healthmate International, LLC initiated this suit, asserting three claims of copyright infringement against Defendants Timothy French and Rampant Lion LLC.[1] Rampant Lion has asserted counterclaims for false advertising under the Lanham Act, tortious interference with contract or business expectancy, and unfair competition. Now pending are cross-motions for summary judgment. Plaintiff seeks summary judgment on all of the claims in the case, and Defendants seek summary judgment on Plaintiffs copyright infringement claims and on Rampant Lion's counterclaim under the Lanham Act. For the following reasons, (1) Plaintiffs motion, (Doc. 160), is GRANTED to the extent that it seeks summary judgment on Rampant Lion's Lanham Act claim and DENIED in all other respects, and (2) Defendants' motion, (Doc. Doc. 162), is DENIED in its entirety.

         A moving party is entitled to summary judgment on a claim only upon a showing that “there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law.” See generally Williams v. City of St. Louis, 783 F.2d 114, 115 (8th Cir. 1986). “[W]hile the materiality determination rests on the substantive law, it is the substantive law's identification of which facts are critical and which facts are irrelevant that governs.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Thus, “[o]nly disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Wierman v. Casey's Gen. Stores, 638 F.3d 984, 993 (8th Cir. 2011) (quotation omitted). In applying this standard, the Court must view the evidence in the light most favorable to the non-moving party, giving that party the benefit of all inferences that may be reasonably drawn from the evidence. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88 (1986); Tyler v. Harper, 744 F.2d 653, 655 (8th Cir. 1984), cert. denied, 470 U.S. 1057 (1985). A party opposing a motion for summary judgment may not simply deny the allegations, but must point to evidence in the Record demonstrating the existence of a factual dispute. Fed.R.Civ.P. 56(c)(1); Conseco Life Ins. Co. v. Williams, 620 F.3d 902, 909-10 (8th Cir. 2010).

         For ease of discussion, the Court will discuss the background relevant to the Court's decision on a count-by-count basis. In light of the Court's rulings an abbreviated statement of the facts is all that is necessary. All citations to documents filed with the Court will utilize the page numbers generated by the Court's CM/ECF system.

         I. PLAINTIFF'S CLAIMS FOR COPYRIGHT INFRINGEMENT

         A. Background

         Plaintiff and Defendants are in the business of selling TENS units. “TENS” stands for Transcutaneous Electrical Nerve Stimulation, and generally speaking TENS units administer electrical current to portions of the body in order to relieve pain. Plaintiff has a Certificate of Registration for three copyrights for graphical displays used on TENS units it sells. All three displays[2] contain a series of picture-based icons that symbolize the TENS unit's various functions and a battery-shaped icon with hashmarks meant to symbolize the amount of energy remaining in the TENS unit. Some of the displays also include icons that represent parts of the body, a clock or timer, or an “intensity” meter (a bar with hashmarks intended to indicate the current's intensity). The Complaint alleges that that Defendants infringed on all three copyrights by copying them for use on their TENS units.

         Defendants argue that they are entitled to summary judgment because Plaintiff's copyrights are invalid. Plaintiff insists that its copyrights are valid and contends that it is entitled to summary judgment because the uncontroverted facts demonstrate that Defendants infringed its three copyrights. For ease of discussion, the Court addresses Defendants' arguments for summary judgment first.

         B. Discussion

         1. Defendants' Arguments That the Copyrights Are Invalid

         Plaintiff's Certificates of Registration are prima facie evidence that the copyrights are valid, 17 U.S.C. § 410(c), but the presumption may be rebutted. E.g., Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039, 1042 (8th Cir. 2003). Defendants attempt to rebut this presumption by arguing that the material Plaintiff claims to have copyrighted (1) is an uncopyrightable “method of operation” or (2) is not original. As discussed below, the Court concludes that Defendants are not entitled to summary judgment on these theories.

         (a) “Method of Operation”

         Copyright protection may be obtained for “original works of authorship, ” which are defined to include “pictorial” and “graphic” works. 17 U.S.C. § 102(a). However, “[i]n no case does copyright protection . . . extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery . . . .” Id. § 102(b). Defendants argue that Plaintiff has attempted to copyright a “method of operation” and rely exclusively on the First Circuit's decision in Lotus Development Corp. v. Borland International, Inc. 49 F.3d. 707 (1st Cir. 1995), aff'd, 516 U.S. 233 (1996), [3] to support their point. Plaintiff argues that Lotus Development does not apply in this case. The Court agrees with Plaintiff.

         As a whole, § 102(b) addresses the difference between an idea and the particular expression of that idea: the former is not copyrightable, but the latter is. See Toro v. R&R Products Co., 787 F.2d 1208, 1211-12 (8th Cir. 1986). Thus, in the earliest case addressing this distinction, it was held that the “idea” of a particular method of accounting cannot be copyrighted, while a book describing how to utilize that accounting method can be copyrighted. Baker v. Selden, 101 U.S. 99, 100-01 (1880). Recognizing the distinction allows others to produce original works discussing the idea and accounts for the “weaker” protection offered to copyrights (as compared to patents). In codifying this concept in § 102(b), Congress did not clearly delineate between the listed categories of uncopyrightable material, Nimmer on Copyright § 2.06[A][3] (2017), and some courts do not find it necessary to distinguish among them. E.g., Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 836 n.13 (10th Cir. 1993). Nonetheless, Defendants focus on § 102(b)'s exclusion of “methods of operation, ” which has been described as applying most readily to “instruction manuals or other directions for use [which are] ineligible for copyright even though the precise textual expression of the manuals or directions might qualify for protection.” Nimmer, § 2A.06[A][3][b]. Thus, for instance, one could not copyright the method for driving a car (and thereby prevent others from producing their own manuals for doing so), although one could copyright a specific treatise explaining how to drive a car.

         Lotus Development involved Lotus 1-2-3, a spreadsheet program that utilized a series of menus and commands to perform functions such as “copy, ” “print, ” and “quit.”[4] Lotus 1-2-3 was so popular that its menus and commands became second nature to users. In 1987, a competitor (Borland) released a competing spreadsheet program that provided users with an “alternate user interface” that allowed users to

see the Lotus menu commands on their screens and . . . interact with Quattro or Quattro Pro as if using Lotus 1-2-3, albeit with a slightly different looking screen and with many Borland options not available on Lotus 1-2-3. In effect, Borland allowed users to choose how they wanted to communicate with Borland's spreadsheet programs: either by using menu commands designed by Borland, or by using the commands and command structure used in Lotus 1-2-3 augmented by Borland-added commands.

49 F.3d at 810. Lotus filed suit, contending the menus and commands for Lotus 1-2-3 were copyrighted and that Borland infringed on that copyright by providing users of its competing product the ability to utilize the same menus and commands.

         The First Circuit held that the menus and commands were not copyrightable because they were the method of operating Lotus 1-2-3, explaining that methods of operation “are the means by which a user operates something. If specific words are essential to operating something, then they are part of a ‘method of operation' and, as such, are unprotectable. This is so whether [the words] must be highlighted, typed in, or even spoken . . . .” Id. at 816. The court then compared Lotus 1-2-3's “direction” to push certain buttons on the keyboard to the buttons on a VCR and determined that Lotus's “command terms are not equivalent to the labels on the VCR's buttons, but are instead equivalent to the buttons themselves.” Id. at 817. The court further contrasted the computer commands from the labels on a VCR's buttons, explaining that “[u]nlike the labels on a VCR's buttons, which merely make operating a VCR easier by indicating the buttons' functions, the Lotus menu commands are essential to operating Lotus 1-2-3. Without the menu commands, there would be no way to ‘push' the Lotus buttons, [but] one could push unlabeled VCR buttons.” Id. In other words, “CTRL” is literally the “button” that operates the program - and the button cannot be copyrighted.

         Even if Lotus Development provides the proper analytical framework for identifying a “method of operation, ”[5] it does not entitle Defendants to judgment as a matter of law. Plaintiff's copyright covers the pictures it has placed on the TENS units' “buttons, ” not the buttons themselves.[6] Plaintiff's icons are thus like “the labels on a VCR's buttons” that Lotus Development described as copyrightable. The pictures are placed on the method of operation - the buttons. They are not themselves the method of operating the TENS units, and they are not transformed into the method of operation just because they are physically placed on the buttons (instead of being placed above or below them). Therefore, the pictures are copyrightable.

         (b) “Original Work”

         To qualify for copyright protection, a work must be original. 17 U.S.C. § 102(a). This

means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. . . . The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be. Originality does not signify novelty; a work may be original even though it ...

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