Blehm v. Jacobs et al

Filing 50

ORDER Granting Defendants' 33 Motion for Summary Judgment. The Clerk shall enter judgment for the Defendants, dismissing the Second Amended Complaint and this civil action and awarding costs, by Judge Richard P. Matsch on 9/19/2011.(rpmcd )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Senior District Judge Richard P. Matsch
Civil Action No. 09-cv-02865-RPM
GARY D. BLEHM,
Plaintiff,
v.
ALBERT A. JACOBS,
JOHN JACOBS,
THE LIFE IS GOOD COMPANY f/k/a LIFE IS GOOD, INC.,
LIFE IS GOOD WHOLESALE, INC., and
LIFE IS GOOD RETAIL, INC.,
Defendants.

ORDER GRANTING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

The Second Amended Complaint, filed January 14, 2010, alleges one claim of copyright
infringement and one claim of contributory infringement. On April 6, 2011, the Defendants
moved pursuant to Fed.R.Civ.P. 56 for summary judgment of dismissal. That motion has been
fully briefed and arguments of counsel were heard on September 1, 2011.
Plaintiff Gary Blehm (“the Plaintiff”) is a commercial artist. In 1977, the Plaintiff began
creating cartoon characters, which he named “Penmen.” Penmen are stick figures, characterized
by thick-lined bodies, large feet, disproportionately long legs, four fingers on each hand, round
heads, and large half-moon shaped smiles. (Second Am. Compl. ¶ 11.)
In 1989, the Plaintiff created a poster depicting more than 1,000 Penmen characters in a
variety of poses. The black and white poster is a visual game that challenges the viewer to “Find
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the Two Identical Penmen.” In 1990, the Plaintiff created another Penmen poster having a golf
theme and the title “Find the Fore Identical Penmen.” The Plaintiff created additional versions
of this visual art game in 1991, 1992 and 1993. The Plaintiff uses product codes to identify his
works. The Plaintiff registered his Penmen posters with the United States Copyright Office.
The subject works are five posters identified as:
Poster C001, “Find the Two Identical Penmen,” Registration No. VA 368 815
(Aug. 7, 1989), for “Cartoon Character Designs;”
Poster A001, “Find the Fore Identical Penmen,” Registration No. VA 437 346
(Nov. 26, 1990), for “Modern Art Game;”
Poster C009, “Find the Fore Identical Penmen,” Registration No. VA 607 539
(Aug. 16, 1993), for “Visual Art Puzzle;”
Poster D001, “Find the Two Identical Penmen,” Registration No. VA 468 434
(Aug. 19, 1991), for “Art Game,” and
Poster D002, “Find the Two Identical Penmen,” Registration No. VA 482 967
(Dec. 19, 1991), for “Art Game.”
(Defs.’ Ex. G.)
Defendants Albert A. Jacobs, John Jacobs, the Life is good Company, Life is good
Wholesale, Inc., and Life is good Retail, Inc. (collectively, “the Defendants”) design, produce
and sell tee-shirts and other products featuring a smiling stick figure known as “Jake.” John and
Albert Jacobs are brothers, and the name “Jake” is derived from their surname. In 1989, the
Jacobs brothers began designing and selling tee-shirts in the Boston area. In 1994, they began
selling tee-shirts featuring the Jake image and the phrase “Life is good.” The Jacobs brothers
incorporated the Life is good Company in 1997, and serve as officers of the company.
The Plaintiff alleges that the Defendants’ “Jake character mimics the overall total concept
and feel of the Penman characters,” and that “Defendants’ product line contains unlawful
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elements of [the Plaintiff’s] Copyrighted Works, including a substantially similar stylized
cartoon character, substantially similar or identical themes and/or poses, and a substantially
similar message of unbridled optimism and positivity.” (Second Am. Compl. ¶¶ 31, 35.) The
Plaintiff has identified 67 Jake images (“the accused images”) which the Plaintiff alleges were
copied from his Penmen posters and infringe his copyrights.1
The Defendants argue that the Plaintiff’s claim of copyright infringement fails for any
one or all of the following reasons: (1) undisputed evidence establishes that the Defendants
independently created the accused images; (2) the Plaintiff’s evidence is insufficient to show the
Defendants’ alleged copying of the copyrighted works, and (3) the accused images are not
substantially similar to the protectable elements of the copyrighted works.
Independent creation is a complete defense to a claim of copyright infringement. See
Whelan Assocs. v. Jaslow Dental Lab, Inc., 797 F.2d 1222, 1228 n.7 (3d Cir. 1986) (“The
independent creation of even identical works is therefore not a copyright infringement, and
independent creation is a complete defense to a claim of copyright infringement.”) Summary
judgment on that ground is not appropriate because there are genuine factual disputes regarding
the Defendants’ alleged independent creation.
The question is whether the Plaintiff’s evidence is sufficient to show unlawful copying.
To establish a prima facie claim of copyright infringement, the Plaintiff must show that the
Defendants (1) copied the Plaintiff’s copyrighted works, and (2) copied protected elements of the
copyrighted works. Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir.

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In response to discovery the Plaintiff identified 88 Jake images as infringements. The
Plaintiff has narrowed his claim to 67 accused images.
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1996). The Plaintiff must also show ownership of a valid copyright. The Defendants’ motion
does not challenge the Plaintiff’s allegation that he owns valid copyrights for the posters.
A plaintiff can prove copying either by direct evidence or by showing the defendant’s
access to the copyrighted work and probative similarities between the copyrighted material and
the accused material. Id. “On access, a plaintiff may meet his initial burden by showing that the
defendant had a ‘reasonable opportunity to view’ or ‘opportunity to copy’ the allegedly infringed
work.” Autoskill Inc. v. Nat’l Educ. Support Sys., Inc., 994 F.2d 1476, 1490 (10th Cir. 1993)
(quoting 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.02[A] & n. 5, at
13-15 to -16 (1992)).
The Plaintiff has provided evidence showing that during the period from 1990-93 (the
years immediately preceding the Jacobs’ creation of accused Jake images in 1994), Penmen
posters were being sold and displayed in stores in the Boston area, in close geographic proximity
to where John and Albert Jacobs were selling tee-shirts. The Plaintiff also points to similarities
between the accused Jake characters and Penman characters, arguing that similar themes, poses
and other details are evidence of copying.
The Plaintiff has come forth with sufficient evidence to support a finding that the Jacobs
brothers had access to some of the subject works and an opportunity to copy them.
That does not end the inquiry. “Liability for copyright infringement will attach only
where protected elements of a copyrighted work are copied.” Country Kids, 77 F.3d at 1284.
Whether there has been copying of protected elements of copyrighted works is a mixed
question of fact and law. Id. In this circuit, the “abstraction-filtration-comparison” test must be
applied to identify unprotected features of the copyrighted works. Id. The purpose of the

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abstraction-filtration process is to separate “ideas (and basic utilitarian functions), which are not
protectable, from the particular expression of the work.” Id. at 1284-85. That is, “to the extent
that certain similarities between a copyrighted work and an allegedly infringing work are
inherent in a nonprotectable idea . . . [the court] must filter those similarities out of the
comparison.” Country Kids, 77 F.3d at 1286.
The remaining protected elements, if any, must then be compared to the accused work to
determine whether the two works are “substantially similar.” Id. at 1285. The Tenth Circuit has
explained the test for substantial similarity as follows:
The traditional test for substantial similarity is whether the accused work is so
similar to the plaintiff's work that an ordinary reasonable person would conclude that
the defendant unlawfully appropriated the plaintiff's protectible expression by taking
material of substance and value. . . . The essence of this test is whether the ordinary
observer, unless he set out to detect the disparities, would be disposed to overlook
them, and regard their aesthetic appeal as the same. . . . The touchstone of the
analysis is the overall similarities rather than the minute differences between the two
works.
Id. at 1288 (citations and internal quotations omitted).
Whether works are substantially similar generally is a question for the jury to decide. See
Jacobsen v. Deseret Book Co., 287 F.3d 936, 943 (10th Cir. 2002). However, “the court can
monitor the ‘outer limits’ of similarity if ‘reasonable minds’ could not differ on the question.”
Jacobsen, 185 F.3d at 943 (quoting King of the Mountain Sports, Inc. v. Chrysler Corp., 185
F.3d 1084, 1089 (10th Cir.1999)). In addition, “a court may find non-infringement as a matter of
law where the similarity between the works concerns only non-copyrightable elements of the
plaintiff's work.” Sportsman’s Warehouse, Inc. v. Fair, 576 F.Supp.2d 1175, 1195 (D. Colo.
2008) (citing Warner Bros. Inc. v. Am. Broadcasting Cos., 720 F.2d 231, 240 (2d Cir.1983)).

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Exhibit L to the Plaintiff’s response brief juxtaposes 67 Penmen characters (isolated from
the posters that are the subject works) and 67 accused Jake images that have appeared on Life is
good products. Defendants’ Appendix 3 also provides side-by-side comparisons of the
Plaintiff’s copyrighted posters and the corresponding accused works.
It is beyond dispute that a poster depicting hundreds of small Penmen characters engaged
in various activities is not substantially similar to a tee-shirt with a single stick figure image
portrayed on it. Thus, the accused works do not infringe the subject works as a whole (the
posters). Reasonable minds could not differ on that question.
The Plaintiff contends that the stick figure images on the accused works were derived
from the copyrighted works. The Plaintiff argues that because 17 U.S.C. § 106(2) provides the
copyright owner with the exclusive right to prepare derivative works, the proper comparison is
between individual Penmen characters (extracted from the posters) and individual Jake images
extracted from the context of the accused works.
That argument is not persuasive. Characterizing an accused work as a derivative work
does not avoid the requirement of substantial similarity. See Litchfield v. Spielberg, 736 F.2d
1352, 1357 (9th Cir. 1984) (“[A] work is not derivative unless it has been substantially copied
from the prior work.”) The works must be compared as they were presented to the public.
Feder v. The Videotrip Corp., 697 F. Supp. 1165, 1171 (D. Colo. 1988).
Even if the proper comparison is the one the Plaintiff suggests, the Plaintiff’s claim of
copyright infringement fails. The Plaintiff relies on a study conducted by Dr. Richard Waterman
PhD as evidence of substantial similarity between Penman images and the accused Jake images.
(Pl.’s Ex. M.) The Waterman study is not admissible because it is flawed. In addition, expert

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testimony on the issue of substantial similarity is not necessary because the standard is the
“ordinary observer” test, and application of that standard does not require the assistance of
expert testimony.
Importantly, the “probative similarity” which could support a finding of copying is not
the same as the “substantial similarity” required to prove infringement of protectable elements of
the copyrighted work. See Country Kids, 77 F.3d at 1284-1286 (explaining infringement
analysis); see also Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975)
(“[S]ubstantial similarity to show that the original work has been copied is not the same as
substantial similarity to prove infringement.”)
“One of the fundamental tenets of copyright law is that protection extends only to the
author's original expression and not to the ideas embodied in that expression.” Gates Rubber Co.
v. Bando Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993); see e.g., Mattel, Inc. v. MGA
Entm’t, Inc., 616 F.3d 904, 917 (9th Cir. 2010) (holding the plaintiff could not “claim a
monopoly over fashion dolls with a bratty look or attitude, or dolls sporting trendy clothing
[because] these are all unprotectable ideas.”)
“[T]he scenes a faire doctrine identifies and excludes from protection against
infringement expression whose creation flowed naturally from considerations external to the
author’s creativity.” Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1375 (10th Cir. 1997). Material that
is standard, stock, common to a particular topic, or that “‘necessarily follow[s] from a common
theme or setting’” is not protected. Autoskill, 994 F.2d at 1494 (quoting 3 Nimmer on Copyright
§ 13.03[B][4], at 13-70(1992)).

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The Plaintiff argues that the scènes à faire doctrine applies only to literary works. That
argument misses the point. “Regardless of the method of distilling the protectable aspects of the
[copyrighted work], the ultimate question is whether [the accused work] is ‘substantially similar’
to protectible aspects of [the copyrighted work].” Jacobsen, 287 F.3d at 943 n.5.
Stick figures are by definition simple. See Universal Athletic Sales Co., 511 F.2d at 909
(stating that the use of stick figures involves only “minimal amount of creativity”) In this case,
similarities resulting from common themes and general concepts such as the idea of a person
skateboarding, playing frisbee, playing a musical instrument, holding a birthday cake, roasting a
marshmallow over a campfire, or holding his hand in a peace sign are excluded from protection.
Likewise, poses are excluded from protection to the extent such poses are suggested by the
activities themselves. (See Defs.’ App. 2, side-by-side comparison of Penmen characters
engaged in particular activities and photographs of persons engaged in the same activity.)
Similarities flowing from anatomical features (a head, torso, arms, legs, hands, and feet) cannot
support a claim of infringement. Expression that cannot be separated from the idea is not
protected. See, e.g., Sportsman’s Warehouse, Inc., 576 F.Supp.2d at 1195 (“Courts routinely
find that depictions of animals are unprotectable because the expression of the animal in nature
has merged with the idea of the animal.”)
When unprotectable elements are filtered from the Penmen characters, the remaining
original expression that is subject to protection is thin. There are significant differences between
the Penmen characters and accused Jake images with respect to color, the orientation of the
body, the relation of the body to the head, expression, clothing and other features. (See Defs.’
App. 3.) Similarities between the Penmen images and the accused Jake images flow from

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considerations external to the Plaintiff’s creativity, such as common themes and natural poses.
Consequently, there is no infringement.
Proof of copyright infringement is an essential element of a claim of contributory
infringement. Because the Plaintiff cannot establish his claim of copyright infringement, the
Plaintiff’s claim of contributory infringement also fails.
Accordingly, it is
ORDERED that the Defendants’ motion for summary judgment is granted. The Clerk
shall enter judgment for the Defendants, dismissing the Second Amended Complaint and this
civil action and awarding costs.
Dated: September 19, 2011
BY THE COURT:
s/Richard P. Matsch

Richard P. Matsch, Senior District Judge

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