United States District Court, W.D. Missouri, Western Division
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
Healthmate International, LLC initiated this suit, asserting
three claims of copyright infringement against Defendants
Timothy French and Rampant Lion LLC. 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.
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).
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.
PLAINTIFF'S CLAIMS FOR COPYRIGHT
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 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.
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.
Defendants' Arguments That the Copyrights Are
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
“Method of Operation”
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),  to support their point.
Plaintiff argues that Lotus Development does not apply in
this case. The Court agrees with Plaintiff.
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] (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][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.
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.” 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
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.
Lotus Development provides the proper analytical framework
for identifying a “method of operation,
” 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. 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.
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 ...