Teespring, Inc. v. Puetz
ORDER by Judge Vince Chhabria denying 93 , 100 Motions for Summary Judgment; denying 103 , 114 Motions for Temporary Restraining Order and Preliminary Injunction. (vclc2S, COURT STAFF) (Filed on 3/13/2017)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
Case No. 15-cv-04149-VC
BRADLEY JOHN PUETZ,
ORDER DENYING SUMMARY
JUDGMENT AND PRELIMINARY
Re: Dkt. Nos. 93, 100, 103, 114
Teespring 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.
Summary Judgment on Direct Infringement
Summary 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).
Puetz's 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, 77:7-9.
Because 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).
Striking 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).
A 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.
The two 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. 1.1
Maginnis 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.
Vicarious Copyright Infringement
Summary 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
A separate finding of substantial similarity is not necessary when a court finds that there is a
jury question on striking similarity. A jury may infer copying (rather than just access) from
striking similarity. See, e.g., Baxter, 812 F.2d at 424 n.2. But see Standard Fabrics Int'l, Inc. v.
Dress Barn Inc., No. 15-cv-08437-ODW (PJW), 2017 WL 240072, at *4 (C.D. Cal. Jan. 19,
2017). In any event, a jury could find that the designs are substantially similar for the same
reasons that it could find them to be strikingly similar. See Wilson v. Walt Disney Co., 123 F.
Supp. 3d 1172, 1173 (N.D. Cal. 2015).
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.
To 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) (A registration system could provide control.); Fonovisa, Inc. v. Cherry Auction, Inc., 76
F.3d 259 (9th Cir. 1996) (A broad contract with swap meet operators could provide control.).2
The motions for temporary restraining orders or preliminary injunctions are denied
because Puetz has not shown that he has suffered or will suffer irreparable harm in the absence
of an injunction. To receive a preliminary injunction or temporary restraining order, Puetz "must
establish that [he] is likely to succeed on the merits, that [he] is likely to suffer irreparable harm
in the absence of preliminary relief, that the balance of equities tips in [his] favor, and that an
injunction is in the public interest." Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008);
see eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391-92 (2006); Perfect 10, Inc. v. Google,
Inc., 653 F.3d 976, 981 (9th Cir. 2011). If the balance of equities "tips sharply" in Puetz's favor,
he may obtain a temporary restraining order if he can show "serious questions going to the
merits." All. for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011). Interim relief
The parties have several remaining disputes about the sufficiency of evidence with respect to
proof of access and forms of relief that each side may seek. These disputes may be resolved at
the pretrial conference by way of motions in limine.
is "never awarded as of right," and the movant bears the burden of showing that the standard has
been met. Winter, 555 U.S. at 19, 24.
Puetz has not shown he will suffer irreparable harm in the absence of an injunction. This
is most obviously so in light of his delay in filing these motions for interim relief. The motion
against Maginnis was filed December 20, 2016, and the motion against Teespring was filed
February 1, 2017, both more than a year after Teespring filed this lawsuit. Nor is there evidence
of consistent, continuing violations. Teespring has removed Maginnis's design and other similar
designs from its website. Puetz points in his motions to a few times he has found allegedly
infringing designs on Teespring and ViralStyle, but there is uncontroverted evidence that these
websites quickly took down the listings. Teespring also has an automated system for identifying
and removing listings that include Puetz's design and similar designs. The automated system
further decreases the likelihood of irreparable harm to Puetz during this lawsuit.
IT IS SO ORDERED.
Dated: March 13, 2017
United States District Judge
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