Payton v. Defend, Inc.

Filing 118

ORDER Denying Motion For Summary Judgment. "Defendants' motion for summary judgment is denied." Signed by JUDGE SUSAN OKI MOLLWAY on 12/19/17. (cib, )CERTIFICATE OF SERVICEParticipants regist ered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII
KEONI PAYTON,

)
)
Plaintiff,
)
)
vs.
)
)
DEFEND, INC., and MICHAEL
)
BUNTENBAH aka MIKE MALONE,
)
)
Defendants.
)
_____________________________ )

CIVIL NO. 15-00238 SOM/KSC
ORDER DENYING MOTION FOR
SUMMARY JUDGMENT

ORDER DENYING MOTION FOR SUMMARY JUDGMENT
I.

INTRODUCTION.
This case involves alleged copyright infringement.

Defendants seek summary judgment, arguing: (1) Plaintiff Keoni
Payton lacks a protected copyright in his “Defend Hawaii” image;
(2) Payton’s copyright claims are barred by the copyright merger
doctrine and/or the related scènes à faire doctrine; (3) Payton’s
copyright claims violate Defendants’ First Amendment rights; and
(4) Payton is not entitled to statutory damages or attorney’s
fees.
II.

The court denies the motion.
BACKGROUND.
On June 24, 2015, Payton filed the Complaint in this

matter, asserting claims of direct copyright infringement (Count
I), contributory infringement (Count II), and vicarious copyright
infringement (Count III).

See ECF No. 1.

The Complaint alleges that Payton designed and owns an
image containing a drawing of an AR-15 rifle, along with the
words “Defend” and “Hawaii”:

See ECF No. 1, ¶¶ 10-11.

According to the Complaint, Defendants

are using this image (or one similar to it) on clothing and other
products and have been infringing since February 2010.
¶¶ 23, 28. 30.

Id.

The Complaint also alleges that, on June 23,

2015, Defendants’ website listed t-shirts for sale using the
copyrighted image:

2

Payton says he alone designed the image in 2004.

See

Deposition of Keoni Payton at 41-43, ECF No. 112-2, PageID # 76061.

Payton says he used a preinstalled font on his Mac Computer

called “Stencil” for the words “Defend Hawaii.”

He says that he

then used Adobe Photoshop or Adobe Illustrator to stretch the
letters into arches.

Id. at 44-48, PageID # 761-62.

For the

weapon in the image, Payton says he took a picture of a model AR15 Airsoft gun and made it into a silhouette using Photoshop’s
pen tool.

Id. at 48-49, PageID # 762.

Payton says that it only

took a couple of hours to create the image and that he started to
sell stickers and t-shirts with the image on them in 2005.

Id.

at 53, 68, PageID #s 763, 767.
Payton’s ex-girlfriend, Averi Saunders, tells a
different story.

She says that in 2006 she and Payton were

watching an episode of Dave Chappelle’s show when Spike Lee
appeared wearing a “Defend Brooklyn” image.

She says that, after

watching the episode, Payton made the “Defend Hawaii” image,
getting his inspiration for the “Defend Hawaii” image from the
“Defend Brooklyn” image he saw Spike Lee wearing.

See Decl. of

Averi Saunders ¶¶ 1-5, ECF No. 96-11, PageID #s 625-26; see also
ECF No. 96-12, PageID # 629 (image of Spike Lee wearing t-shirt
with “Defend Brooklyn” image on it from Chappelle’s Show on July
9, 2006).

Payton says that Saunders’s recollection is wrong.

See ECF No. 112-2 at 100, PageID # 775.

3

Although Payton recalls

watching the show with Saunders, Payton says that he recalls
thinking at the time that the “Defend Brooklyn” people had copied
his design.

See ECF No. 112-2 at 98, PageID # 775.

Saunders says that, after creating the image, Payton
was incarcerated on drug-related charges.
¶ 7, ECF No. 96-11, PageID # 626.

See Saunders Decl.

Saunders recalls that, while

imprisoned, Payton told her to use the image for their family, as
she was pregnant with his child.

Id. ¶ 8, PageID #s 627.

According to Saunders, she and Justin Anderson formed Defend
Hawaii, LLC, in 2008.

Id., PageID # 626-27.

She says that she

subsequently went into business with Defendant Michael Buntenbah.
She terminated Defend Hawaii, LLC, created Defend, Inc., then
sold her shares of Defend, Inc., to Buntenbah, believing that
“all interest in the Subject Image” was also transferred to
Defend, Inc., and its owner, Buntenbah.

Id. ¶ 10, PageID # 627.

In December 2014, Payton registered the “Defend Hawaii”
image with the federal Copyright Office, Registration Number VA
1-934-173.

ECF No. 112-3 (copy of copyright registration),

PageID #s 824-25.

Earlier in 2014, a trademark had been

registered for a “Defend Brooklyn” image with a silhouette of an
AK-47:

4

According to the trademark registration for that image, it was
first used in 1996.

See ECF No. 96-9, PageID #s 621-22.

The

owner of the “Defend Brooklyn” image is unrelated to any party in
this action.
Payton concedes that the “Defend Hawaii” and “Defend
Brooklyn” images are similar.
112-2, PageID # 775.

See Payton Decl. at 99, ECF No.

He says that the two images appear to use

the same “Stencil” font and include a weapon, but that he did not
copy the Defend Brooklyn image.

Id. at 59-60, PageID # 765.

Payton, however, concedes that it is possible that he saw the
“Defend Brooklyn” image before he created his “Defend Hawaii”
image.
III.

Id. at 57, PageID # 764.
SUMMARY JUDGMENT STANDARD.
The summary judgment standard was set forth in this

court’s order of October 17, 2017.

See ECF No. 106.

That

standard is incorporated herein by reference.
IV.

THE MOTION FOR SUMMARY JUDGMENT IS DENIED.
Payton premises his copyright claims on Defendants’

alleged infringement of his allegedly exclusive rights in his
copyrighted work, infringement that Payton says falls under 17
U.S.C. § 106(1) to (3) with respect to Defendants’ reproduction
of the work, preparation of derivative works, and distribution of
those works.

The Copyright Act, 17 U.S.C. § 501(a), provides:

“Anyone who violates any of the exclusive rights of the copyright
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owner as provided by sections 106 . . . is an infringer of the
copyright or right of the author, as the case may be.”

The

Copyright Act further provides: “The legal or beneficial owner of
an exclusive right under a copyright is entitled . . . to
institute an action for any infringement of that particular right
committed while he or she is the owner of it.”

17 U.S.C.

§ 501(b).
Under 17 U.S.C. § 504(a), a copyright infringer is
liable for actual damages plus profits or for statutory damages.
Section 504(b) explains:
The copyright owner is entitled to recover
the actual damages suffered by him or her as
a result of the infringement, and any profits
of the infringer that are attributable to the
infringement and are not taken into account
in computing the actual damages. In
establishing the infringer’s profits, the
copyright owner is required to present proof
only of the infringer’s gross revenue, and
the infringer is required to prove his or her
deductible expenses and the elements of
profit attributable to factors other than the
copyrighted work.
Under § 504(c)(1), statutory damages are “a sum of not less than
$750 or more than $30,000” for each infringed work.

However,

with a “willful” violation, statutory damages up to $150,000 per
infringed work may be awarded.

17 U.S.C. § 504(c)(2).

U.S.C. § 505, this court may award costs and reasonable
attorneys’ fees to a prevailing party.

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Under 17

Defendants seek summary judgment, arguing that Payton
does not have a valid copyright in an image Defendants contend
was copied from a pre-existing work and is not itself original.
Defendants also argue that, because Payton did not register any
copyright in the “Defend Hawaii” image until 2014, he is not
entitled to statutory damages or attorneys’ fees for any alleged
infringement that began in 2010.
A.

There is A Question of Fact as to Whether Payton
Has Ownership of a Valid Copyright.
1.

Defendants Do Not Establish Entitlement to a
Summary Judgment Ruling That the “Defend
Hawaii” Image Is Not Copyrightable.

Copyright protection exists with respect to “original
works of authorship fixed in any tangible medium of expression,
now known or later developed, from which they can be perceived,
reproduced, or otherwise communicated, either directly or with
the aid of a machine or device.”

17 U.S.C. § 102(a).

The

Supreme Court explains:
The sine qua non of copyright is originality.
To qualify for copyright protection, a work
must be original to the author. Original, as
the term is used in copyright, means only
that the work was independently created by
the author (as opposed to copied from other
works), and that it possesses at least some
minimal degree of creativity.
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
345 (1991) (citation omitted).

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“A plaintiff bringing a claim for copyright
infringement must demonstrate (1) ownership of a valid copyright,
and (2) copying of constituent elements of the work that are
original.”

Funky Films, Inc. v. Time Warner Entm't Co., 462 F.3d

1072, 1076 (9th Cir. 2006).
As Payton himself concedes, the validity of his
copyright cannot be presumed.

See Opposition at 6, ECF No. 111,

PageID # 732 (“Due to the passage of time between the initial
publication and the date of registration it is true that the
validity of the copyright cannot be presumed.
§ 410(c).”).

See 17 U.S.C.

In arguing that Payton lacks a valid copyright,

Defendants break down the image into parts and argue that each
distinct part lacks copyright protection.
For example, Defendants argue that Copyright Office
regulations provide that “[w]ords and short phrases such as
names, titles, and slogans are not subject to copyright
protection.”

37 C.F.R. § 202.1.

But Payton’s “Defend Hawaii”

image is more than a short phrase, as it uses an arched “Stencil”
font combined with the silhouette of an AR-15 rifle.

Payton is

not suing Defendants based solely on their alleged use of words.
Instead, his Complaint alleges that Defendants are using the
entire “Defend Hawaii” image or designs that are substantially
similar to it.

See, e.g., Complaint ¶ 23, ECF No. 1, PageID # 5.

8

Defendants are similarly unpersuasive in arguing that
Payton’s use of the “Stencil” font is not eligible for copyright
protection.

Notwithstanding Copyright Office regulations stating

that a typeface is not subject to copyright protection, 37 C.F.R.
§ 202.1(e), nothing in this case seeks protection based solely on
a font.
Nor is this court persuaded by Defendants’ claim that
the silhouette of an AR-15 rifle is not subject to copyright
protection.

Although Defendants correctly note that, under 37

C.F.R. § 202.1(a), “familiar symbols or designs” are not subject
to copyright protection, Payton used the silhouetted AR-15 as
part of a larger design.
While Defendants note that Payton may have simply
copied the image from the internet, Payton claims to have taken a
picture of a model AR-15 Airsoft gun and used Photoshop to create
the silhouette.

This is sufficient to create a question of fact

as to whether Payton used at least a minimal degree of creativity
in coming up with the silhouette.

See Satava v. Lowry, 323 F.3d

805, 810 (9th Cir. 2003) (noting not only that “any copyrighted
expression must be ‘original,’” but also that the amount of
creativity required to meet this standard is “low” but “not
negligible”; requiring “something more than a ‘merely trivial’
variation”).

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This court recognizes that, at trial, Payton will have
the burden of proving that he owns a valid copyright.

But that

trial burden of proof in no way negates Defendants’ burden on the
present summary judgment motion.

Defendants have the burden of

showing their entitlement to judgment on the motion they have
filed.

As to copyrightability, they do not carry their burden as

movants.
2.

Defendants Do Not Establish As a Matter of
Law That the Combination of the Components of
the “Defend Hawaii” Image Is Not Subject to
Copyright Protection.

Defendants are also unpersuasive in arguing that the
combination of allegedly unprotected elements is so trivial as to
be undeserving of copyright protection.

In Satava, the Ninth

Circuit held “that a combination of unprotectable elements is
eligible for copyright protection only if those elements are
numerous enough and their selection and arrangement original
enough that their combination constitutes an original work of
authorship.”

Satava, 323 F.3d at 811.

Satava determined that a

glass-in-glass jellyfish sculpture was not original enough to
constitute an original work of authorship, stating, “The
selection of the clear glass, oblong shroud, bright colors,
proportion, vertical orientation, and stereotyped jellyfish form,
considered together, lacks the quantum of originality needed to
merit copyright protection.”

The Ninth Circuit ruled, “These

elements are so commonplace in glass-in-glass sculpture and so
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typical of jellyfish physiology that to recognize copyright
protection in their combination effectively would give Satava a
monopoly on lifelike glass-in-glass sculptures of single
jellyfish with vertical tentacles.”

Id. at 812.

The Ninth

Circuit noted, however, that certain aspects of his sculptures
were copyrightable, such as “the distinctive curls of particular
tendrils; the arrangement of certain hues; [and] the unique shape
of jellyfishes’ bells.”

The Ninth Circuit stated that Satava

possessed a “thin copyright” that protected against “only
virtually identical copying.”

Id.

There is an issue of fact as to whether the “Defend
Hawaii” image is original enough to merit copyright protection.
Giving such copyright protection to the image is not akin to
giving protection to a lifelike glass jellyfish in a glass
container.

Payton would not be granted a monopoly over a common

type of art.

Assuming Payton actually created the original

image, the words “Defend Hawaii” with an image of a weapon are
not so commonplace as to give Payton a monopoly over a typical
form of artistic expression.
This court emphasizes that it is not here determining
whether Payton created an original work or whether he derived his
image from the “Defend Brooklyn” image.

Cf. 17 U.S.C. § 103(b)

(“The copyright in a compilation or derivative work extends only
to the material contributed by the author of such work, as

11

distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting
material.”); M. M. Bus. Forms Corp. v. Uarco, Inc., 347 F. Supp.
419, 425 (S.D. Ohio 1972) (“a work may be copyrightable though it
is based upon materials already existent in the public domain if
the author, by virtue of his own skill and effort, has
contributed a distinguishable variation from the previously
existing materials”), aff’d 472 F.2d 1137 (6th Cir. 1973).
is a matter left for trial.

That

Even if Payton derived his image

from the “Defend Brooklyn” image, Payton might still have
protection against identical copying.
812.

See Satava, 323 F.3d at

These are factual issues not resolvable on the present

record.
B.

Defendants Are Not Entitled to Summary Judgment
Based on the Copyright Merger Doctrine or the
Related Scènes à Faire Doctrine.

The Copyright Act unequivocally states, “In no case
does copyright protection for an original work of authorship
extend to any idea.”

17 U.S.C.A. § 102(b).

Defendants argue

that the “idea” of the “Defend Hawaii” image is unprotectable
under the doctrines of merger and scènes à faire.
doctrines are defenses to infringement.

Both of these

Ets-Hokin v. Skyy

Spirits, Inc., 225 F.3d 1068, 1082 (9th Cir. 2000).
“Under the merger doctrine, courts will not protect a
copyrighted work from infringement if the idea underlying the
12

copyrighted work can be expressed in only one way, lest there be
a monopoly on the underlying idea.”
work’s idea and expression merge.

Id.
Id.

This is because the
“[W]hen there exists

similarity of expression (whether literal or nonliteral) that
necessarily results from the fact that the common idea is only
capable of expression in more or less stereotyped form, the
merger doctrine precludes a finding of actionable similarity.”

4

Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 13.03[B][3][d] (rev. ed. 2017).

“The test is improper

monopolization of the subject idea, which may occur even if
several alternative locutions are conceivable.”

Id.

Under the related scènes à faire doctrine, “courts will
not protect a copyrighted work from infringement if the
expression embodied in the work necessarily flows from a
commonplace idea.”

Ets-Hokin, 225 F.3d at 1082.

Like the merger

doctrine, the rationale underlying the scènes à faire doctrine
“is that there should be no monopoly on the underlying
unprotectable idea.”

Id.

Defendants do not meet their initial burden on this
motion for summary judgment of showing that the idea expressed by
“Defend Hawaii” can only be expressed in a limited number of
ways.

In fact, there is a question of fact as to what the idea

behind “Defend Hawaii” is.

According to an article in the

Honolulu Magazine, ECF No. 96-10, PageID # 624, “Defend Hawaii”

13

began as a brand in Mixed Martial Arts for athletes from Hawaii
who were participating in fights on the mainland and abroad.
That brand became “about defending everything that Hawaii means
to you.”

Id.

This article is hearsay that Defendants do not

show is admissible for purposes of this motion.

Even if the

“Defend Hawaii” image is indeed about defending what Hawaii means
to each individual, that idea could be represented in many
different ways.
Martial Arts

If it is about representing Hawaii in Mixed

fights, other words like “Pride Rock,” “Hawaiian

Pride,” or “Represent the 808” appear to express the same
sentiment.
C.

Defendants Fail to Demonstrate that the Copyright
Act Violates Their First Amendment Rights.

Defendants claim that their use of the “Defend Hawaii”
image is protected speech, but they do not analyze this
contention in their papers.

In Eldred v. Ashcroft, 537 U.S. 186,

219 (2003), the Supreme Court noted that the Copyright Clause and
First Amendment “were adopted close in time.

This proximity

indicates the Framers’ view that copyright’s limited monopolies
are compatible with free speech principles.”

Noting that the

Copyright Act’s “purpose is to promote the creation and
publication of free expression,” the Supreme Court stated that
copyright law contains “built-in First Amendment accommodations”
in that it distinguishes between ideas, which are not
copyrightable, and expressions, which are eligible for copyright
14

protection.

Id.

The Supreme Court also noted that the “‘fair

use’ defense allows the public to use not only facts and ideas
contained in a copyrighted work, but also expression itself in
certain circumstances.”

Id.

The Copyright Act’s “built-in free

speech safeguards are generally adequate to address them.”

Id.

at 221.
Defendants argue that the Supreme Court’s use of the
qualifying word “generally” implicitly recognizes that free
speech protections may be inadequate in some cases.
96-1, PageID # 569.

See ECF No.

What Defendants fail to do is demonstrate

that this case involves inadequate protections.

Defendants

simply raise the issue without discussion.
Even if “Defend Hawaii” is a form of protected speech,
it does not necessarily follow that Defendants had a right to put
that speech on a shirt, sticker, etc.

The Copyright Act does not

impermissibly infringe on a person’s right to express the idea of
“Defend Hawaii.”

Payton alleges an exclusive right to put the

“Defend Hawaii” image on merchandise, and, at least on the
present motion, Defendants do not show that this alleged right is
constitutionally overridden by their own alleged right.
D.

Summary Judgment is Denied With Respect to
Statutory Damages and Attorney’s Fees.

Defendants argue that statutory damages and attorney’s
fees are unavailable in this case because the alleged
infringement began before Payton registered his copyright.
15

See

ECF No. 96-1, PageID # 570 (citing 17 U.S.C. § 412).

On the

present record, Defendants fail to meet their initial burden as
movants of showing that § 412(2) bars statutory damages and
attorney’s fees.1
In relevant part, 17 U.S.C. § 412 provides that no
award of statutory damages or attorney’s fees, as provided in 17
U.S.C. §§ 504 and 505, “shall be made for . . . (2) any
infringement of copyright commenced after first publication of
the work and before the effective date of its registration.”
The Ninth Circuit explains that, with exceptions not relevant
here, § 412(2) “mandates that, in order to recover statutory
damages, the copyrighted work must have been registered prior to
commencement of the infringement.”

Derek Andrew, Inc. v. Poof

Apparel Corp., 528 F.3d 696, 699 (9th Cir. 2008).

That is, the

Ninth Circuit has held that § 412 bars an award of statutory
damages (and attorney’s fees) for post-registration infringements
when the initial infringement occurs prior to the effective
copyright registration date and “the first act of infringement in

1

In his opposition to the motion for summary judgment,
Payton argues that this court’s previous order in which it said
it was disregarding this argument because it was untimely raised
for the first time in the reply in support of the previous motion
for summary judgment is law of the case. Because the court did
not decide the issue, the law of the case doctrine is
inapplicable. See United States v. Alexander, 106 F.3d 874, 876
(9th Cir. 1997) (stating that the law of the case doctrine
generally precludes a court from reconsidering an issue that has
already been decided by the same court, or a higher court in the
same case).
16

a series on ongoing infringements of the same kind marks the
commencement of one continuing infringement.”

Id. at 701.

Defendants argue that they are entitled to summary
judgment with respect to statutory damages and attorneys’ fees
pursuant to § 412.

But the record does not indicate that

Defendants’ use of the “Defend Hawaii” image was the beginning of
a series of ongoing infringements that were of the same kind such
that they can be considered one continuing infringement.

To the

contrary, there is no evidence before the court regarding the
nature of Defendants’ alleged infringements over time.

At most,

paragraph 5 of the Complaint alleges:
Defend, Inc. was engaged in the business of
designing, developing, manufacturing, promoting, marketing,
distributing, labeling, and/or selling, directly and indirectly,
through third parties or related entities clothing, hats,
stickers and other merchandise.
ECF No. 1, PageID # 2.

Paragraph 23 of the Complaint then

alleges that Defendants have been using the “Defend Hawaii”
image, or something substantially similar, in sponsoring and
promoting events.

Defendants do not establish the absence of a

genuine issue of fact regarding how they used the “Defend Hawaii”
image over time.

Under these circumstances, Defendants fail to

meet their burden as movants of demonstrating that they are
entitled to summary judgment with respect to statutory damages
and attorney’s fees.

17

V.

CONCLUSION.
For the forgoing reasons, Defendants’ motion for

summary judgment is denied.
IT IS SO ORDERED.
DATED: Honolulu, Hawaii, December 19, 2017.

/s/ Susan Oki Mollway
Susan Oki Mollway
United States District Judge

Payton v. Defend, Inc., et al., Civ. No. 15-00238 SOM/KSC; ORDER DENYING
MOTION FOR SUMMARY JUDGMENT

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