A federal judge from the District of Minnesota has granted partial summary judgment to the National Football League and NFL Properties, LLC as to whether a trophy manufacturer infringed on their copyright when it manufactured fantasy-football-league trophies that resembled the Vince Lombardi Trophy.
“In this Court’s view, no ordinary observer could conclude that Titlecraft’s trophies have anything but the same concept and feel as the Vince Lombardi Trophy,” wrote the court.
The original plaintiff in the case was Titlecraft, Inc., a Minnesota corporation that manufactures custom wood trophies that it sells (through its website) to fantasy-football leagues to be given to league winners. “Its trophies are similar in appearance to the Vince Lombardi Trophy, in that they consist of a football sitting, at a downward angle, atop a base with three tapered sides,” wrote the court. “There are some differences between Titlecraft’s trophies and the Vince Lombardi Trophy, however, including (among other things) that the sides of the base are not concave and the trophies are made from wood rather than silver.”
When the NFL learned of Titlecraft’s business in August 2009, it sent a cease-and-desist letter informing the company that it was infringing the NFL’s rights in the Vince Lombardi Trophy. It demanded that Titlecraft stop selling its trophies and account for all profits it had derived from its allegedly infringing products. Relying on an opinion from legal counsel it had obtained before manufacturing its trophies, Titlecraft denied any infringement and refused to stop selling its trophies.
On March 11, 2010, Titlecraft sued, seeking a declaration that its trophies “do not violate any rights” of the NFL in the Vince Lombardi Trophy. The NFL counterclaimed, asserting inter alia claims for copyright and trademark infringement under the Copyright Act, 17 U.S.C. § 101 et seq., and the Lanham Act, 15 U.S.C. § 1051 et seq., respectively.”
Ultimately, the NFL moved for partial summary judgment as to Titlecraft’s liability for copyright infringement.
“To establish its claim for copyright infringement in the absence of direct evidence of copying, the NFL must prove that (1) it owns a valid copyright to the Vince Lombardi Trophy, (2) Titlecraft had access to the trophy, and (3) Titlecraft’s trophies and the Vince Lombardi Trophy are substantially similar. E.g., Frye v. YMCA Camp Kitaki, 617 F.3d 1005, 1007-08 (8th Cir. 2010). Titlecraft does not dispute the NFL’s ownership of a valid copyright, nor does it dispute that it had access to the Vince Lombardi Trophy. The only issue, therefore, is substantial similarity. When the copyrighted work and the allegedly infringing ones are in the record, a district court has before it sufficient evidence to decide whether the works are substantially similar as a matter of law and enter summary judgment. E.g., Schoolhouse, Inc. v. Anderson, 275 F.3d 726, 728 (8th Cir. 2002); Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 120-21 (8th Cir. 1987).
The court went on to write that Titlecraft’s trophies “contain numerous objective similarities to the Vince Lombardi Trophy; indeed, Titlecraft makes little argument to the contrary. Like the Vince Lombardi Trophy, Titlecraft’s trophies contain downward-angled footballs atop tapered bases. The scale of the footballs to the bases in the trophies is roughly equal, and their sizes are similar. None contains any other football-related adornments, such as a football player, football equipment, or any other object associated with football, like goalposts. The laces on the trophies’ footballs are pointed upward, and each uses a smooth-surfaced football, rather than a textured or pebbled one (as in the case of a real football). Moreover, Titlecraft’s trophies, like the Vince Lombardi Trophy, pertain to performance in the NFL, and as it acknowledges, ‘there is a similarity of ideas . . . in that both are football trophies representing the highest achievement for a team.’ In light of the foregoing, the court concludes, as a matter of law, that Titlecraft’s trophies are substantially similar in idea to the Vince Lombardi Trophy.”
The court went on to note that “infringement does not require a finding that two works are precisely the same; the test is one of similarity, not exact duplication. Differences between two works do not affect their ‘similarity’ if ‘the ordinary observer . . . would be disposed to overlook them, and regard [the works’] aesthetic appeal as the same.’ Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039, 1043 (8th Cir. 2003) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).
“In this Court’s view, no ordinary observer could conclude that Titlecraft’s trophies have anything but the same concept and feel as the Vince Lombardi Trophy. While Titlecraft points out a smattering of differences between the trophies — wood versus metal, slightly different sizes, etc. — the Court must focus on the trophies’ similarities, not their differences. E.g., Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958, 966 (8th Cir. 2005); CSM Investors, Inc. v. Everest Dev., Ltd., 840 F. Supp. 1304, 1312 (D. Minn. 1994).
“Simply put, viewing the trophies side by side renders the similarities between them obvious. Titlecraft’s trophies and the Vince Lombardi Trophy are so substantially similar in terms of shape, size, aesthetics, and ‘feel’ — which far outweigh their minimal differences — that there is only one possible conclusion: Titlecraft’s trophies ‘are appropriations’ of the Vince Lombardi Trophy. Taylor Corp., 403 F.3d at 966. To put it another way, ‘if it walks like a duck, quacks like a duck and looks like a duck, it has got to be a duck’ — or in this case a copy. Eisenrich v. Minneapolis Retail Meat Cutters & Food Handlers Pension Plan, 544 F. Supp. 2d 848, 858 (D. Minn. 2008) (Kyle, J.), aff’d, 574 F.3d 644 (8th Cir. 2009).
“Titlecraft’s arguments to the contrary are unconvincing. It points out that the base of the Vince Lombardi Trophy is a tetrahedron, a common geometric shape that is not entitled to copyright protection. It also argues that under the doctrine of scenes a faire, the football atop the Vince Lombardi Trophy is not protectable because “a football is indispensable to a football trophy.” (Mem. in Opp’n at 7-8.) But at some level of abstraction, all objects are combinations of common geometric shapes; that does not mean they cannot be protected by copyright. As one court has aptly noted, this argument is akin to suggesting that ‘there can be no originality in a painting because all colors of paint have been used somewhere in the past.’ Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1003 (2d Cir. 1995). Moreover, the Court does not believe that the scenes a faire doctrine applies here, because a football is not an indispensable part of a football trophy. Indeed, the NFL has proffered many different examples of trophies that do not include a football, or in which a football is just a minor element and not the trophy’s focal point.
“More fundamentally, these arguments overlook the nature of the Vince Lombardi Trophy’s copyright protection. It is neither the trophy’s base nor its football that is copyrightable. Rather, it is the trophy’s combination of the base, with the football on top, at a certain angle, that is protectable — i.e., the trophy’s originality. In other words, the combination of uncopyrightable elements in an original way renders the trophy appropriate for copyright protection. See, e.g., Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991). And Titlecraft’s trophies infringe that copyright by combining a football and a base, of similar shapes and sizes, in a substantially similar way.”
Titlecraft, Inc., v. National Football League and NFL Properties, LLC; D. Minn.; Civ. No. 10-758 (RHK/JJK), 2010 U.S. Dist. LEXIS 134367; 12/20/10
Attorneys of Record: (for plaintiff) Justin L Seurer, Seurer Law, LLC, Minnetonka, MN. (for defendants) Bruce P Keller, Michael J Beam, PRO HAC VICE,S Debevoise & Plimpton LLP, New York, NY; Timothy J Cruz, Daniel J Connolly, Faegre & Benson LLP, Mpls, MN.
