LovePop, Inc. v. PaperPopCards Inc.
Filing
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Chief Judge Patti B. Saris: MEMORANDUM and ORDER entered. PaperPop's motion to dismiss (Docket No. 12 ) is ALLOWED IN PART and DENIED IN PART. (Geraldino-Karasek, Clarilde)
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
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Plaintiff,
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v.
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PAPERPOPCARDS, INC.,
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Defendant.
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LOVEPOP, INC.,
Civil Action
No. 17-11017-PBS
MEMORANDUM AND ORDER
February 22, 2018
Saris, C.J.
INTRODUCTION
This case concerns greeting cards that unfold to reveal
intricate three-dimensional designs derived from a paper-cutting
art form called kirigami. Plaintiff LovePop, Inc. (“LovePop”),
alleges, among other things, that Defendant PaperPopCards, Inc.
(“PaperPop”), has infringed its copyrights covering an array of
LovePop greeting cards, as well as videos depicting how the
three-dimensional designs pop up when the cards are opened.
PaperPop moved to dismiss the copyright infringement claim,
arguing that it does not make the cut under Fed. R. Civ. P.
12(b)(6). At a hearing, the Court partially denied the motion as
to three of the allegedly infringing cards. After further
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consideration of the parties’ submissions, the Court ALLOWS IN
PART and DENIES IN PART the remainder of PaperPop’s motion to
dismiss (Docket No. 12).
FACTUAL BACKGROUND
The pertinent facts unfold from LovePop’s Amended Complaint
(Docket No. 28) (“AC”).1
LovePop, a Delaware corporation with its principal place of
business in Boston, Massachusetts, produces three-dimensional
pop-up greeting cards. AC ¶¶ 1, 7. It sells the cards primarily
through its website, but also at specialty card stores and
kiosks in Boston and New York. AC ¶¶ 1, 13. LovePop offers more
than 200 pop-up card designs “for virtually every occasion,
season and sentiment.” AC ¶ 13. The pop-up component inside each
card derives from a paper-cutting art form called kirigami, with
an assist from advanced design software. AC ¶ 12.
Nine LovePop card designs are relevant to this case: (1)
“Rose Bouquet,” (2) “Money Tree,” (3) “French Flower Cart,” (4)
“Nativity,” (5) “Santa Sleigh,” (6) “Hanukkah Menorah,” (7)
“Willow Tree,” (8) “Balloon Bouquet,” and (9) “Willow Love
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LovePop filed its original complaint in June 2017. In September
2017, after argument on the motion to dismiss, LovePop filed an
Amended Complaint that added allegations pertaining to one additional
LovePop card and one additional PaperPop card. Compare Docket No. 1,
with Docket No. 28. Technically, PaperPop still has only moved to
dismiss the original complaint and not the Amended Complaint. For the
sake of efficiency, and because the issues and arguments largely
overlap, the Court will treat the motion as if it were directed toward
the Amended Complaint.
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Scene.” AC ¶ 15. Each design is registered as visual art with
the U.S. Copyright Office. AC ¶ 15.
In addition, LovePop has created original videos depicting
how six of the above designs pop up when the cards are opened.
AC ¶¶ 17-18. These videos, posted on LovePop’s website, are also
registered with the U.S. Copyright Office. AC ¶¶ 17-18.
PaperPop, a New York corporation with its principal place
of business in New York, also sells three-dimensional pop-up
greeting cards. AC ¶¶ 8, 24. According to the Amended Complaint,
PaperPop “slavishly copied” each of the nine LovePop designs
mentioned above. AC ¶¶ 2, 30. Similarly, six of these allegedly
infringing designs appear in videos posted on PaperPop’s
website, illustrating how the pop-up displays work. AC ¶¶ 28-29.
As a result, LovePop accuses PaperPop of, among other
things, infringing its copyrights in the nine card designs and
six videos just described. LovePop’s Amended Complaint contains
four counts: Count I, copyright infringement, 17 U.S.C. § 501;
Count II, trademark infringement, 15 U.S.C. § 1114(1); Count
III, trademark infringement, unfair competition, and false
designation of origin, 15 U.S.C. 1125(a); and Count IV, common
law trademark infringement and unfair competition. AC ¶¶ 59-86.
In July 2017, PaperPop moved to dismiss Count I.
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LEGAL STANDARDS
I.
Motion to Dismiss
In reviewing a Rule 12(b)(6) motion to dismiss, a court
must “[s]et[] aside any statements [in the complaint] that are
merely conclusory” and “construe all factual allegations in the
light most favorable to the non-moving party to determine if
there exists a plausible claim upon which relief may be
granted.” Woods v. Wells Fargo Bank, N.A., 733 F.3d 349, 353
(1st Cir. 2013). “[C]ourts tasked with this feat usually
consider only the complaint, documents attached to it, and
documents expressly incorporated into it.” Foley v. Wells Fargo
Bank, N.A., 772 F.3d 63, 71-72 (1st Cir. 2014). Here, the
parties agree that the Court may properly consider exemplars of
the cards in question, as well as the relevant videos.
II.
Copyright Infringement
“The holder of a valid [visual art] copyright possesses
exclusive rights to reproduce and distribute not only exact
‘copies’ of the [work] but also ‘derivative works’ based upon
it.” Coquico, Inc. v. Rodríguez-Miranda, 562 F.3d 62, 66 (1st
Cir. 2009) (quoting 17 U.S.C. § 106). “A person who trespasses
upon any of these exclusive rights may be held liable for
copyright infringement.” Id. (citing 17 U.S.C. § 501).
“To prevail on a copyright infringement claim, a party must
prove both control of a valid copyright and copying of original
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elements of the work by the putative infringer.” Id. (citing
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361
(1991)). Here, PaperPop challenges only the second component:
the copying of original elements of the copyrighted work.
“That requirement itself involves a bifurcated inquiry.
First, the copyright holder must show that, as a factual matter,
the putative infringer copied the protected work. Second, the
holder must show that the copying was so egregious as to render
the allegedly infringing and infringed works substantially
similar.” Id. at 66-67 (citations omitted). Again, PaperPop
prunes its argument down to the second component: substantial
similarity.
“Works are substantially similar within the intendment of
copyright law if they are so alike that the later (unprotected)
work can fairly be regarded as appropriating the original
expression of the earlier (protected) work.” Id. at 67 (citing
Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33
(1st Cir. 2001)). “To gauge substantial similarity in cases
involving non-technological consumer products, courts often
employ an ‘ordinary observer’ test.” Id. “Under that metric, the
allegedly infringing work will be deemed substantially similar
to the allegedly infringed work if an ordinary observer would be
disposed to overlook any disparities in the works.” Id. (citing
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Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d
600, 607 (1st Cir. 1988)).
When applying this framework, a court must abide by a
cardinal rule of copyright law: that it “protects original
expressions of ideas, not the ideas themselves.” Id. (citing
Johnson v. Gordon, 409 F.3d 12, 19 (1st Cir. 2005)). Thus, in
assessing substantial similarity, a court “must focus upon the
‘constituent elements of the [plaintiff’s] work that are
original.’” Id. (quoting Feist, 499 U.S. at 361). A court
conducts that exercise “by dissecting the copyrighted work and
separating its original expressive elements from its unprotected
content.” Id. at 68. “In performing this dissection, the court
should not lose sight of the forest for the trees; that is, it
should take pains not to focus too intently on particular
unprotected elements at the expense of a work's overall
protected expression.” Id.
Two further copyright principles are folded into this case:
the merger doctrine and the doctrine of scènes à faire. “The
merger doctrine denies copyright protection when creativity
merges with reality; that is, when there is only one way to
express a particular idea.” Id. (citing Concrete Mach., 843 F.2d
at 606). “The doctrine of scènes à faire denies copyright
protection to elements of a work that are for all practical
purposes indispensable, or at least customary, in the treatment
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of a given subject matter.” Id. (citing JCW Invs., Inc. v.
Novelty, Inc., 482 F.3d 910, 915 (7th Cir. 2007)).
Because “the ultimate question of substantial similarity
requires a factual judgment,” Harney v. Sony Pictures
Television, Inc., 704 F.3d 173, 183 (1st Cir. 2013), it is often
“a matter for the trier of fact,” Yankee Candle, 259 F.3d at 34
n.5, and therefore ill-suited to resolution at a motion to
dismiss. That said, courts have, under the right circumstances,
resolved questions of substantial similarity as a matter of law.
See Harney, 704 F.3d at 183 (noting that summary judgment may
enter where reasonable minds cannot differ as to substantial
similarity); Boston Copyright Assocs., Ltd. v. U-Haul Int’l,
Inc., No. 13-cv-12826, 2015 WL 666952, at *3 (D. Mass. Feb. 17,
2015) (quoting Peter F. Gaito Architecture, LLC v. Simone Dev.
Corp., 602 F.3d 57, 64 (2d Cir. 2010)) (noting that dismissal
for failure to state a claim may be appropriate where court
determines that two works are not substantially similar as a
matter of law).
DISCUSSION
I.
The Card Designs
The Court, at a hearing in September 2017, partially denied
PaperPop’s motion to dismiss as to three of the allegedly
infringing designs: “Roses,” “Money Tree,” and “Santa Sleigh.”
The remaining designs are in dispute. It also should be noted at
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this point that LovePop, at the hearing, conceded that it does
not seek to assert copyright protection in the idea of a
kirigami paper sculpture popping up from the inside of a
greeting card. It seeks only to protect the paper sculptures
themselves.
A.
“French Flower Cart” and “Flower Cart”
PaperPop asserts that LovePop’s “French Flower Cart” design
consists largely of unprotectable elements, such as a
rectangular, flower-filled cart equipped with handles, wheels,
and a roof. PaperPop then points out a variety of differences
between the two designs, including variations in the roofs,
handles, window panes, lattices below the windows, flowers
inside the cart, and signs attached to the carts. LovePop points
to a number of similarities between the designs, including the
overall proportions of the carts, as well as the presence of
yellow signs hanging off the side of the carts, decorated black
wheels, and white flower pots.
Even if certain basic elements of a flower cart (like a
rectangular base) are unprotectable, it would seem that “there
is no singular manner of depicting” a flower cart through
kirigami, and that such an endeavor instead would “involve
countless artistic decisions, whether deliberately or
intuitively made, concerning the precise size, shape, . . .
color, juxtaposition of features,” and other aspects of the
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cart. Coquico, 562 F.3d at 69. Along those lines, the Court
perceives a number of conspicuous similarities between the
expressive flourishes in the two designs. For instance, both
carts, which are roughly the same size, contain five rows of
flowers, latticework on the sides, pitched roofs, curved
handles, fanciful wheel designs, and yellow signs dangling from
white supports that extend from one side of the cart. Given
these similarities in the two designs, it is entirely plausible
that an “ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard
their aesthetic appeal as the same.” Concrete Mach., 843 F.2d at
607 (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274
F.2d 487, 489 (2d Cir. 1960)). Accordingly, this aspect of
PaperPop’s motion to dismiss is denied.
B.
“Balloon Bouquet” and “Birthday Box”
PaperPop asserts that a display of “brightly colored
balloons arranged in a bouquet, much like flowers, with a box
holding the arrangement, and stars/ribbons also in the
arrangement” is so common as to escape copyright protection
under either the merger doctrine or the doctrine of scènes à
faire.
However, the expressive components common to the two
balloon-based designs are eye-popping. Although the boxes are
somewhat different sizes, the outside of each box is decorated
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with star- and circle-shaped holes. Inside each box are four
intersecting supports, creating the appearance of a three-bythree grid. The boxes contain roughly the same number of
balloons. Notwithstanding differences in the overall color
scheme and the shapes of the balloons, LovePop has presented a
plausible claim that an ordinary observer would regard the
aesthetic appeal of these two designs as the same. See Concrete
Mach., 843 F.2d at 607.
C.
“Nativity” and “Manger”
PaperPop’s merger doctrine and scènes à faire arguments are
more solidly constructed with respect to the “Nativity” and
“Manger” designs. PaperPop argues that there likely are “only a
limited number of ways of expressing the idea” of a manger or
nativity scene. That is, as PaperPop suggests, a nativity scene
is virtually certain to include Baby Jesus, Mary, Joseph, wise
men, and livestock inside a barn-like structure, as well as
other accoutrements like the Star of Bethlehem. Accordingly,
“the burden of proof is heavy on the plaintiff who may have to
show ‘near identity’ between the works at issue” in order to
succeed on an infringement claim. Concrete Mach., 843 F.2d at
606-07.
Of course, as wise men (and women) know, the issue here is
only whether LovePop has plausibly stated a claim for relief.
And LovePop argues that an ordinary observer plausibly could
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determine that the expressive elements shared between the two
scenes are virtually indistinguishable.
The Court observes that many of the figures in each scene
have nearly identical silhouettes. For example, both sets of
wise men feature one wise man on the left, carrying a spherical
object, and two standing close together on the right, with the
one in front carrying a square-shaped object. Both scenes
feature angels in a similar posture, with seven notches on their
wings and three creases in their robes. Further, both barns have
roofs with five cross-beams and a quatrefoil shape on the front.
Both also have a “front porch” area with latticework that
features a similar alternating pattern. Lanterns hang from the
ceiling in each design. The centerpiece of each scene is, of
course, a Baby Jesus; but both Baby Jesuses are lifting their
right hands, are cast in yellow paper, and rest in white
cradles.
Because of these similarities, it is plausible that an
ordinary observer would overlook the differences between
“Nativity” and “Manger,” and regard the aesthetic appeal of
these two designs as the same, even setting aside the
unprotectable aspects. See Concrete Mach., 843 F.2d at 607.
D.
“Hanukkah Menorah” and “Menorah”
PaperPop’s argument finally lights up with respect to the
“Hanukkah Menorah” design. As discussed earlier, under the
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doctrine of scènes à faire, copyright protection does not extend
“to elements of a work that are for all practical purposes
indispensable, or at least customary, in the treatment of a
given subject matter.” Coquico, 562 F.3d at 68. Here, that
doctrine operates to render unprotectable those elements of a
menorah that are indispensable to depicting the idea: a
candelabra holding nine candles, with four on each side of a
slightly elevated center candle. Because the doctrine of scènes
à faire denies copyright protection to those elements, a factfinder could not consider them in conducting the ordinary
observer test. See Yankee Candle, 259 F.3d at 33–34 (“[O]nly the
‘protected expression’ is relevant to an evaluation of
substantial similarity.”).
What remains in terms of similarity between the two designs
-- both menorahs are gold in color with white candles -- is
simply “not sufficiently original to qualify for copyright
protection.” Id. at 35 (rejecting copyright protection for
“collection of common geometric shapes with a particular
photographic technique” on candle labels); Concrete Mach., 843
F.2d at 606–07 (limiting scope of copyright protection in
concrete deer statue to “discretion[ary]” features like pose,
posture, and facial expression). On top of this, the Court notes
several aesthetic differences between the two designs: LovePop’s
candles have orange flames, while PaperPop’s are yellow with the
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centers cut out; LovePop’s menorah has a Star of David where
PaperPop’s has a ring shape; the candelabra arms on each menorah
have distinct lines. To the extent LovePop’s design is entitled
to any copyright protection, the Court concludes that no
reasonable fact-finder could find the two designs to be
substantially similar based solely on the protected elements (if
any). Accordingly, PaperPop’s motion to dismiss is allowed with
respect to the menorah.
E.
“Willow Tree” and “Wisteria Tree”
The final two card-design claims are rooted in a different
branch of the merger doctrine: when a copyrighted work and an
allegedly infringing work both depict objects found in nature.
The First Circuit has explained that such cases present a
“problem of proof” because the protected work often derives its
essential features from the real-world object, and, of course,
“any subsequent artist” is free to draw inspiration from that
same object. Concrete Mach., 843 F.2d at 607. Even so, a
“reproduction of a natural phenomenon may enjoy copyright
protection.” Coquico, 562 F.3d at 70. “The determining factors
are whether the work possesses original expressive elements and
whether the alleged infringer has copied those elements, as
opposed to gleaning them from the phenomenon in nature.” Id.
LovePop’s Amended Complaint compares its “Willow Tree”
design to PaperPop’s “Wisteria Tree” design. PaperPop argues
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that LovePop’s “Willow Tree” design “mimics nature and thus
contains numerous, unprotectable natural elements common to all
trees.” Moreover, it points out that its design depicts a
different species of tree with different color and foliage,
which renders the two designs insurmountably dissimilar. LovePop
contends that the mere “use of purple rather than green is
insufficient to overcome the substantial similarity” between the
two designs, which consists of their similar “brown tree
trunk[s] . . . decorated with oval-shaped swirls,” “drooping
foliage,” and “a few fallen leaves on the ground around the base
of the tree.”
This dispute presents a close call better resolved by a
trier of fact. A better record is needed to determine whether
PaperPop’s design depicts a wisteria tree as found in nature or
copies protected elements of LovePop’s “Willow Tree” design.
F.
“Willow Tree,” “Willow Love Scene,” and “Willow Tree
Love”
Technically, PaperPop has not moved to dismiss LovePop’s
claim based on these three designs. In any event, the companies’
willow tree designs look strikingly similar. For essentially the
same reasons just discussed regarding the “Wisteria Tree”
design, whether PaperPop’s rendering of the willow tree was the
result of its own creative efforts, or the result of an effort
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to copy one or both of LovePop’s designs is a nuanced factual
question that the Court cannot resolve at a motion to dismiss.
G.
Summary
In sum, PaperPop’s motion to dismiss is ALLOWED with
respect to the “Hanukkah Menorah” and “Menorah” designs. The
motion is DENIED as to the remaining designs.
II.
Videos
LovePop also claims copyright infringement based on videos
that the companies have posted to their respective websites
depicting their three-dimensional cards in action. PaperPop
argues that the videos are not substantially similar because
PaperPop’s videos depict its cards, while LovePop’s videos
depict its cards; and because the two sets of videos are
aesthetically distinct in terms of camera angle, lighting,
color, tone, shadows, and orientation of the cards. Emphasizing
that “[t]he cards themselves are the primary creative elements
in the videos,” LovePop asserts that PaperPop’s videos are
substantially similar to LovePop’s videos “precisely by virtue
of the fact that they feature the infringing cards unfolding.”
At the hearing in September 2017, LovePop seemed to refine
its argument into one based on derivative copyright liability.
The argument is twofold: Because LovePop owns copyrights in its
card designs, it also owns the exclusive right to produce
derivative works based upon those designs. Because PaperPop’s
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cards are so similar to LovePop’s cards, PaperPop’s videos
effectively constitute unauthorized derivative works based upon
LovePop’s card designs, even though PaperPop’s videos actually
depict PaperPop’s own cards.
Framed this way, the issue raises complex questions of
derivative copyright liability that the parties have not
adequately briefed. Accordingly, the motion to dismiss regarding
the videos is DENIED without prejudice.
ORDER
PaperPop’s motion to dismiss (Docket No. 12) is ALLOWED IN
PART and DENIED IN PART.
/s/ PATTI B. SARIS
Patti B. Saris
Chief United States District Judge
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