Predator International, Inc. v. Gamo Outdoor USA, Inc.

Filing 526

ORDER. Plaintiff's 478 Motion In Limine No. 8 Re: Fed. R. Evid. 404 and 406 is denied. Predator may not introduce evidence at trial of the two lawsuits discussed in Docket No. 478. Defendant's 485 Motion In Limine #6 to Exclude Test imony and/or Evidence that the Phrase "Unsurpassed Performance" in and of Itself is a Registered Copyright is granted. The phrase "unsurpassed performance" is not subject to copyright. Predator shall provide the Court with updated information at the February 3, 2014 trial preparation conference regarding the amount of time it anticipates will be required for trial. By Judge Philip A. Brimmer on 1/29/14.(mfiel, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 09-cv-00970-PAB-KMT
PREDATOR INTERNATIONAL, INC., a Colorado corporation,
Plaintiff,
v.
GAMO OUTDOOR USA, INC., a Florida corporation,
Defendant.

ORDER

This matter is before the Court on Plaintiff’s Motion In Limine No. 8 Re: Fed. R.
Evid. 404 and 406 [Docket No. 478] filed by plaintiff Predator International, Inc.
(“Predator”) and Defendant’s Motion In Limine #6 to Exclude Testimony and/or
Evidence that the Phrase “Unsurpassed Performance” in and of Itself is a Registered
Copyright [Docket No. 485].
I. ANALYSIS
A. Evidence of Other Lawsuits against Gamo (Docket No. 478)
Predator has filed a motion in limine for the Court to take judicial notice of two
trademark and trade dress infringement claims brought against Gamo by other entities.
Docket No. 478 at 6. In addition, Predator requests that it be allowed to “prove and
argue that GAMO, as a matter of its business policy and practice, had no reluctance in
risking infringement of the intellectual property rights of others and running the risk of
litigation and that, in accordance with this policy and practice, it copied the Polymag

pellet and its website.” Id. Gamo opposes this motion. Docket No. 508.
Under the Federal Rules of Evidence, evidence is relevant if it “has any tendency
to make a fact more or less probable than it would be without the evidence” and the
“fact is of consequence in determining the action.” Fed. R. Evid. 401.
Two claims are at issue in this case: a claim for copyright infringement and a
claim for violation of the Colorado Consumer Protection Act (“CCPA”), see Colo. Rev.
Stat. § 6-1-113. To prevail on a claim for copyright infringement, a plaintiff must show
“(1) ownership of a valid copyright and (2) copying of constituent elements of the work
that are original.” Jacobsen v. Deseret Book Co., 287 F.3d 936, 942 (10th Cir. 2002)
(internal citation omitted). To prevail on a claim under the CCPA, a plaintiff must show:
(1) that the defendant engaged in an unfair or deceptive trade practice;
(2) that the challenged practice occurred in the course of defendant’s
business, vocation, or occupation;
(3) that it significantly impacts the public as actual or potential consumers of
the defendant’s goods, services, or property;
(4) that the plaintiff suffered injury in fact to a legally protected interest; and
(5) that the challenged practice caused the plaintiff’s injury.
Rhino Linings USA, Inc. v. Rocky Mountain Rhino Lining, Inc., 62 P.3d 142, 146-47
(Colo. 2003). Under the CCPA, a prevailing plaintiff may recover “[t]hree times the
amount of actual damages sustained, if it is established by clear and convincing
evidence that such person engaged in bad faith conduct.” Colo. Rev. Stat. § 6-1113(2)(a)(III).
Predator argues that evidence of infringement lawsuits filed against Gamo by
other entities are “relevant to the issues of bad faith which are central to recovering
treble damages under the CCPA.” Docket No. 478 at 4. Treble damages, however, are
only available to a party that can show it is entitled to recover actual damages. See
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Colo. Rev. Stat. § 6-1-113(2)(a)(III). As the Court explained in its January 10, 2014
Order, “the Court’s summary judgment ruling bars Predator from recovering actual
damages on either its copyright or CCPA claim since both claims are based on the
same underlying set of actions and events.”1 Docket No. 434 at 3 (citing Docket No.
289 at 17; Docket No. 351 at 9; Docket No. 379 at 11). Bad faith is not an element
necessary to establish liability on Predator’s copyright infringement or CCPA claims.
See Jacobsen, 287 F.3d at 942; Rhino Linings USA, Inc., 62 P.3d at 146-47. Thus,
whether Gamo acted in bad faith is not a fact “of consequence in determining the
action.” See Fed. R. Evid. 401. Since relevance is a threshold requirement to
admissibility, see Fed. R. Evid. 402, there is no basis for admitting evidence of the
lawsuits that Predator cites in the instant motion.
B. Copyrightability of the Phrase “Unsurpassed Performance” (Docket No.
485)
In the Final Pretrial Order, Predator states that, “to this day [Gamo] persists in
using Predator’s copyrighted ‘unsurpassed performance’ language on its packages.”
Docket No. 410 at 9-10. Gamo moves the Court to preclude Predator from “introducing
evidence or putting on testimony which would infer or suggest that the phrase
‘unsurpassed performance’ has been registered as a copyright.” Docket No. 485 at 1.
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Predator’s Trial Brief suggests that Predator is not familiar with this portion of
the Court’s January 10, 2014 Order. See Docket No. 499 at 8 (“The August 26 Order of
the Court is the only one dealing with Predator’s CCPA claim other than the Court’s
denial of GAMO’s motion for summary judgment which is discussed in Predator’s
Motion In Limine No. 2. There is nothing in the Doc. 238 Order which denies Predator
the right to seek actual damages on its CCPA claim.”). In order to provide for the
accurate scheduling of the upcoming trial, Predator shall provide the Court with updated
information at the February 3, 2014 trial preparation conference [Docket No. 403]
regarding the amount of time it anticipates will be required for trial.
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Gamo argues that Predator does not have a registered copyright in the phrase
“unsurpassed performance” because it is used only once in the printout of Predator’s
website included in its Copyright Registration and because individual “words and short
phrases” are not protected under the Copyright Act. Docket No. 485 at 3-4. Predator
responds that (1) “short phrases can qualify for copyright protection”; (2) the jury should
be permitted to decide whether the phrase “unsurpassed performance” is subject to
copyright protection; and (3) Predator should be allowed to argue that Gamo’s alleged
copying of the phrase is evidence of its bad faith, which Predator contends is relevant
to its claim under the CCPA. Docket No. 494 at 1-2.
The Tenth Circuit has not ruled on “whether the question of copyrightability is a
pure question of law and thus one for the court, or a mixed question of law and fact and
thus one involving potential jury questions in the presence of materially disputed facts.”
Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1262 n.4 (10th Cir.
2008) (citing Gaiman v. McFarlane, 360 F.3d 644, 648-49 (7th Cir. 2004) (noting
dispute and declining to overturn its previous holding in Publications Int’l, Ltd. v.
Meredith Corp., 88 F.3d 473, 478 (7th Cir. 1996), that copyrightability is a purely legal
question)).
Under the Copyright Act, “[w]ords and short phrases such as names, titles, and
slogans” are not subject to copyright. 37 C.F.R. § 202.1(a); see also Syrus v. Bennett,
455 F. App’x 806, 810 (10th Cir. 2011) (“an ordinary phrase taken from a copyrighted
work may be quoted without fear of infringement”) (internal citation omitted); Moody v.
Morris, 608 F. Supp. 2d 575, 579 (S.D.N.Y. 2009) (“There is no question [] that the

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trademarked phrase ‘Where Words Come Alive’ cannot support a claim for copyright
infringement.”); Davis v. Walt Disney Co., 393 F. Supp. 2d 839, 847 (D. Minn. 2005)
(“As a matter of law, the term ‘Earth Protector’ that appears in Plaintiffs’ copyrighted
drawing is not protectable by copyright.”); Fisher v. United Feature Syndicate, Inc., 37
F. Supp. 2d 1213, 1219 (D. Colo. 1999) (copyright protection for comic strip entitled
“Chipper” did not extend to the use of the name “Chipper” on its own); Arvelo v. Am. Int’l
Ins. Co., 875 F. Supp. 95, 100 (D. Puerto Rico 1995) (“the words ‘Retail Plus,’ in and of
themselves, separated from the rest of the advertising campaign, are not copyrightable
material”).
Predator does not offer any legal authority in support of its contention that short
phrases are occasionally eligible for copyright protection. Instead, it cites two cases
pertaining to contributory copyright infringement without explaining their relevance to
Gamo’s motion. See Docket No. 494 at 2 (citing Docket No. 454 at 18 (citing Viesti
Assocs., Inc. v. Pearson Education, Inc., No. 12-cv-02240-PAB-DW, 2013 WL
4052024, at *7 (D. Colo. Aug. 12, 2013); Shell v. Henderson, No. 09-cv-00309-MSKKMT, 2013 WL 2394935, at *13 (D. Colo. May 31, 2013))). In addition, Predator does
not argue that there are material disputed facts which would support a finding that the
phrase “unsurpassed performance,” standing alone, is entitled to copyright protection.
The Court concludes that this “short phrase,” on its own, is not subject to
copyright protection. See 37 C.F.R. § 202.1(a). Accordingly, Predator may not
introduce evidence that Gamo violated the Copyright Act through its use of the phrase
“unsurpassed performance.” Furthermore, it is not admissible as evidence of Gamo’s

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bad faith, since, as explained above, bad faith is not an element of either of Predator’s
claims.
II. CONCLUSION
For the foregoing reasons, it is
ORDERED that Plaintiff’s Motion In Limine No. 8 Re: Fed. R. Evid. 404 and 406
[Docket No. 478] filed by plaintiff Predator International, Inc. is DENIED. Predator may
not introduce evidence at trial of the two lawsuits discussed in Docket No. 478. It is
further
ORDERED that Defendant’s Motion In Limine #6 to Exclude Testimony and/or
Evidence that the Phrase “Unsurpassed Performance” in and of Itself is a Registered
Copyright [Docket No. 485] is GRANTED. The phrase “unsurpassed performance” is
not subject to copyright. It is further
ORDERED that, pursuant to the Court’s holding that Predator is not entitled to
actual damages on its Colorado Consumer Protection Act claim, see Docket No. 434 at
3, Predator shall provide the Court with updated information at the February 3, 2014
trial preparation conference [Docket No. 403] regarding the amount of time it anticipates
will be required for trial.

DATED January 29, 2014.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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