United States District Court, N.D. California
ORDER DENYING SUMMARY JUDGMENT AND PRELIMINARY
INJUNCTION MOTIONS RE: DKT. NOS. 93, 100, 103, 114
CHHABRIA United States District Judge
seeks a declaration in this case that it did not infringe
Bradley Puetz's copyright entitled "I'm the
Infidel Allah Warned You About" when it sold apparel
with a design uploaded by Jonathan Maginnis. Puetz seeks
damages and an injunction against Teespring for direct and
vicarious infringement and against Maginnis for direct
infringement. Now that discovery has closed, Teespring and
Maginnis have brought motions for summary judgment, arguing
that Puetz cannot show copyright infringement. Puetz has
moved for temporary restraining orders or preliminary
injunctions against Teespring and Maginnis.
Judgment on Direct Infringement
judgment is denied to Teespring and Maginnis. To succeed on a
claim of direct copyright infringement against Teespring or
Maginnis, Puetz must prove he owns a valid copyright in his
design and Teespring or Maginnis copied protected elements of
the design. Three Boys Music Corp. v. Bolton, 212
F.3d 477, 481 (9th Cir. 2000).
copyright registration is prima facie evidence of ownership,
but Teespring contests precisely what Puetz owns, arguing
that most of the design is not protectable. See Syntek
Semiconductor Co., Ltd. v. Microchip Tech. Inc., 307
F.3d 775, 781 (9th Cir. 2002); Shaw v.
Lindheim, 919 F.2d 1353 (9th Cir. 1990), as amended
on denial of reh'g (Nov. 23, 1990). Teespring
observes that some of the individual elements of Puetz's
design are not protectable. See Mattel, Inc. v. MGA
Entm't, Inc., 616 F.3d 904, 913 (9th Cir. 2010),
as amended on denial of reh'g (Oct. 21, 2010);
Alpi Int'l, Ltd v. Anga Supply, LLC, 118
F.Supp.3d 1172, 1176-77 (N.D. Cal. 2015). For example, the
parties agree that the slogan "I'm the infidel Allah
warned you about" is not copyrightable on its own. It is
appropriate, however, to consider the full array of elements
(including combinations of otherwise unprotectable elements)
involved in the creation of the two designs. See Swirsky
v. Carey, 376 F.3d 841, 849 (9th Cir. 2004), as
amended on denial of reh'g (Aug. 24, 2004);
Three Boys Music Corp., 212 F.3d at 485; Baxter
v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987), as
amended (May 11, 1987). The Ninth Circuit has observed
the wide range of expression possible in a drawing.
Mattel, 616 F.3d at 916. Consistent with his
copyright registration, Puetz asserted in his deposition that
"[t]he copyright infringement claim is based on the
design as a whole." Gray Decl. Ex. B, 52:15-16.
"It's the arrangement and the presence. All the
aspects that make the design an original piece of art are
present in the Maginnis design." Gray Decl. Ex. B,
he does not have direct evidence that Maginnis copied his
design, Puetz must show that Maginnis had access to his
design and that Maginnis's design is substantially
similar to his design. Three Boys Music Corp., 212
F.3d at 481. Alternatively, Puetz may carry his burden on
copying by showing that the designs are strikingly similar.
See Id. at 485; Seals-McClellan v. Dreamworks,
Inc., 120 F.App'x 3, 4 (9th Cir. 2004);
Baxter, 812 F.2d at 423-24; 4 Nimmer on Copyright
§ 13.02[B] ("At base, 'striking similarity'
simply means that, in human experience, it is virtually
impossible that the two works could have been independently
created."). On summary judgment, courts use an
"extrinsic" test to assess the similarity of works.
Funky Films, Inc. v. Time Warner Entm't Co., 462
F.3d 1072, 1077 (9th Cir. 2006). The extrinsic test is an
"objective comparison of specific expressive
elements" and focuses on the "articulable
similarities" between the works. Cavalier v. Random
House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).
similarity can satisfy the access and substantial similarity
requirements for copyright infringement because, when two
designs are strikingly similar, a jury may infer that the
alleged infringer had access to the copyrighted work. See
Three Boys Music Corp., 212 F.3d at 485 ("[I]n the
absence of any proof of access, a copyright plaintiff can
still make out a case of infringement by showing that the
songs were 'strikingly similar.'");
Baxter, 812 F.2d at 424 n.2 ("Proof of striking
similarity is an alternative means of proving
'copying' where proof of access is absent.");
Alpi Int'l, 118 F.Supp.3d at 1180; accord
Copyright Infringement - Copying - Access Defined,
Manual of Model Civil Jury Instructions for the District
Courts of the Ninth Circuit (2017) ("Access may be shown
by . . . a similarity between the plaintiff's work and
the defendant's work that is so 'striking' that
it is highly likely the works were not created independent of
one another . . . ."). Cases discussing access in the
context of striking similarity typically do so by way of
illustrating just how striking the similarity between the
protectable elements of the works must be to give rise to the
inference of access. See, e.g., Briggs v.
Blomkamp, 70 F.Supp.3d 1155, 1167 (N.D. Cal. 2014);
Bernal v. Paradigm Talent & Literary Agency, 788
F.Supp.2d 1043, 1052 (C.D. Cal. 2010). But see Stewart v.
Wachowski, 574 F.Supp.2d 1074, 1098-1103, 1098 n.118
(C.D. Cal. 2005).
reasonable jury could find that Puetz's and
Maginnis's designs are strikingly similar. Although, as
Teespring has pointed out, some of the individual elements of
the designs may be common and unprotectable, the feel and
look of the two designs, reached through a series of design
decisions, would support a finding of striking similarity.
designs include all of the same design elements with no
distinct design elements. The clarity, realism, and detail in
the designs are similar (and contrast with Maginnis's
prior designs). Both skulls have furrowed, accentuated brows
and enlarged eye sockets. Both designs place the Arabic word
for "infidel" in monochromatic cursive on the
forehead of the skull. Both designs include the phrase
"I'm the infidel Allah warned you about, " with
"I'm the infidel" wrapping around the skull and
curving less than the skull. Both designs use smaller font
for "Allah warned you about" and break the phrase
between the words "infidel" and "Allah."
The fonts chosen for the all-capital-letter English text are
similarly textured. Again, while Puetz has disclaimed a
copyright claim based on some of these elements in isolation,
he emphasized at his deposition that his claim is based on
these choices and others in combination. See Gray
Decl. Ex. B, 44, 75, 77. And the argument for the similarity
of the works is bolstered by Teespring's own emails to
Maginnis. Puetz Suppl. Decl. Ex. 1.
and Teespring may present evidence that Maginnis
independently created his design and therefore did not
infringe. See Three Boys Music Corp., 212 F.3d at
486. But Maginnis's evidence of independent creation is
not strong enough to entitle him to summary judgment because
a reasonable jury could conclude, particularly given the
striking similarity between his design and Puetz's
design, that Maginnis copied Puetz's design.
judgment is also denied to Teespring on vicarious copyright
liability. To succeed on a claim of vicarious copyright
infringement liability, Puetz must prove that Maginnis
infringed Puetz's design, Teespring exercised control
over Maginnis's conduct, and Teespring benefitted
financially from Maginnis's infringement. Perfect 10,
Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th Cir.
2007), as amended (Dec. 3, 2007). The issue of
direct infringement by Maginnis is discussed above. And
Teespring does not dispute that it derived a direct financial
benefit from Maginnis's alleged infringement.
establish Teespring's control, Puetz must show that
Teespring had "both a legal right to stop or limit the
directly infringing conduct, as well as the practical ability
to do so." Id. Unlike in Perfect 10,
in which the direct infringement was on third party websites
and Google Image Search just reflected the infringing images
on those websites, the alleged infringement here was on
Teespring's website. Teespring can (and did in this case)
remove listings from its website. That is one of its primary
arguments against a preliminary injunction or temporary
restraining order. Maginnis's potential ability to
infringe elsewhere does not preclude a finding of control.
See Id. at 1173-74; A&M Records, Inc. v.
Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) ...