Osment Models, Inc. et al v. Mike's Train House, Inc.

Filing 267

ORDER entered by Judge Nanette Laughrey. It is hereby ORDERED that Defendant Mike's Train House's Motion for Summary Judgment 161 is DENIED.(Smith, Fran)

O s m e n t Models, Inc. et al v. Mike's Train House, Inc.

D o c . 267

I N THE UNITED STATES DISTRICT COURT W E S T E R N DISTRICT OF MISSOURI C E N T R A L DIVISION O S M E N T MODELS, INC, and O CO. P l a i n t if f s , vs. M IK E 'S TRAIN HOUSE, INC. D e f e n d a n t. ) ) ) ) ) ) ) ) ) ) ) ) )

C as e No. 2:09-CV-04189-NKL

ORDER P lain tiff s Osment Models, Inc., and O Co. ("Plaintiffs") and Defendant Mike's Train H o u s e , Inc. ("Mike's"), are companies engaged in the model railroad industry. Plaintiffs h a v e sued Mike's for copyright infringement, false advertising, and unfair competition as to th re e of its copyrighted models. Before the Court is Mike's' Motion for Summary Judgment. [ D o c . # 161]. For the following reasons, Mike's' Motion is DENIED. I. F a c tu a l Background 1 P la in tif f Osment Models, Inc,. is in the business of selling model railroad accessories a n d buildings. Plaintiff O Co. is a holding company that owns certain copyrights and other

The Court has considered the parties' statements of undisputed fact which are supported by evidence. In considering each party's motion, the Court has drawn all inferences in favor of the non-movant. 1

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in t e lle c tu a l property. Plaintiffs previously acquired Mr. Robert Lunde's model business, w h ich included a train depot model and photographs of the actual station, located in J e f fe rs o n , Colorado ("Jefferson Station"), upon which Mr. Lunde based the model. [Doc. # 177, ¶¶ 19-20]. Plaintiffs own copyrights as to three models at issue in this case: the "Fill `E r Up & Fix `Er" gas station ("gas station model"), and the Dansbury Depot and Coal River D e p o t. [Def. Exs. ## 9, 10, 11]. The train depot models are substantially similar to each o th e r such that the initial copyright registration certificate for the Dansbury Depot identified t h e Coal River Depot as a prior registration. [Doc. # 214, ¶ 8]. Throughout the stages of litig a tio n , both parties have often referred to the train depot models as a single model. D e f en d a n t Mike's Train House, Inc., sells model railroad products. [Doc. # 177, ¶¶ 1 -2 ]. In particular, Mike's sells a model gas station and a model train depot, which Plaintiffs c la im infringe on their copyrighted models. Plaintiffs also assert claims of copyright in f rin g e m e n t, unfair competition, and false advertisement due to Mike's' use of photographs o f Plaintiffs' models in its sales catalog. T h e copyright registration certificates as to each of Plaintiffs' models do not state that th e y were based on real-life buildings in the section entitled "Derivative Work or C o m p ilatio n ," which requires a copyright applicant to identify any preexisting work that its w o rk "is based on or incorporates." [Def. Exs. ## 9, 10, 11]. The certificates also do not a c k n o w le d g e Mr. Lunde as an author of the Coal River Depot. Id. Not until June 2010 were P la in tif f s aware that Mr. Lunde referenced the Jefferson Station when making his scratch-

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b u ilt model, which was in turn used to create Plaintiffs' depot design. On June 14, 2010, P la in tif f s filed a supplemental registration for the Coal River Depot indicating, among other th in g s , that Mr. Robert Lunde was an author of the model. It did not list the Jefferson Station a s a pre-existing work. [Docs. # 177, ¶¶ 18-19; # 214-21]. Subsequently, Plaintiffs became a w a re of the extent to which Mr. Lunde had photographed and measured the Jefferson S tation , [Doc. # 177, ¶ 20], and submitted an application in September 2010 for a s u p p le m e n ta ry registration of Coal River to the Copyright Office, identifying the Jefferson S tation as a preexisting work. [Doc. # 214, ¶ 8]. M o d el railroaders demand that model buildings replicate reality and manufacturers s tr iv e to do that in creating their models. [Doc. # 177, ¶ 6]. The founder of Plaintiffs' c o m p a n ie s stated that it is important for Plaintiffs' business that their model buildings look re a lis tic . Id. Plaintiffs simulate real life in their models and make models that are as close to reality as possible. [Doc. # 177, ¶ 9]. To do so, Plaintiffs' usual practice is to use images o f real buildings in the public domain found in publications, historical sources, and the in te rn e t to make and sell model buildings that are modeled after those real buildings. [Doc. # 177, ¶¶ 8, 11]. Plaintiffs do not replicate actual buildings, but rather browse depictions of re a l buildings to get an idea of the type of building they want to create and then make up a c o m b in a tio n of details and architectural elements to make the model more artistic and u n iq u e ; they base their models on a time period and go to great lengths to get the signage and d e ta ils correct. [Doc. # 214, ¶¶ 4-6]. Plaintiffs advertise that their model buildings are "great

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fo r modelers who want realistic structures with architecturally correct details" and are " a rc h ite c tu ra lly accurate models that have been specifically researched and developed for the m o d e l railroading industry." [Doc. # 177, ¶ 13]. The process by which a model builder creates a model involves "reducing the real b u ild in g by a scale factor" and "selective compression," which involves applying artistic im p r e s sio n to hold the look of a building, yet compress it to fit a model train layout. [Docs. # 177, ¶ 7; # 214, ¶ 3]. Enlarging a model building to the size of a real building would often yield absurd results. [Doc. # 214, ¶ 3 ("[Y]ou'd go walk inside of it and the furniture would h a v e to be painted on the wall. You couldn't even turn around.") (citing Pltfs.' Ex. 3, at 61:61 0 )]. T h e Jefferson Station was built around 1880. Though historic, it is not unique, as the sta tio n presents all of the standardized elements typically found in a depot built in the late 1 8 0 0 s , and other train depots similar to it have been observed. [Doc. # 177, ¶ 21]. Images o f the Jefferson Station appear in numerous historical and architectural documents and b o o k s , including the June 1997 issue of Model Railroader, a magazine that Plaintiffs receive a n d review. Additionally, prior to Plaintiffs' introduction of their train depot to the market in 1999, other companies had advertised, displayed, and sold replicas of the Jefferson Station in model railroad magazines that Plaintiffs received. [Doc. # 177, ¶ 22]. Plaintiffs' model, h o w e v e r, differs from both the third-party models and the Jefferson Station in at least twentyo n e ways, including having a raised platform, three-color paint scheme, and different types

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o f framing rails around the window casings. [Doc. # 214, ¶¶ 11-12]. Although there are at le a s t twenty-one uncontested differences between Plaintiffs' train depot model and Mike's, [ D o c s. # 177, ¶ 32; # 214, ¶ 18], several of their similarities include aspects of how P la in tif f s ' model differed from the Jefferson Station and other third-party models. [Doc. # 2 1 4 , ¶ 21]. P lain tiff s do not know the specific buildings or materials that they consulted in d e sig n in g the gas station model because the employees involved in the design have left the c o m p a n y and are not available. [Doc. # 177, ¶ 37]. None of the photographs, pictures, and o th e r depictions of gas stations from Plaintiffs' research and development files, which may h a v e been referenced in the design process, are substantially similar to Plaintiffs' gas station. [ D o c . # 214, ¶¶ 23, 25]. Plaintiffs employed their usual practice for creating new models. [ D o c . # 177, ¶ 38; # 214, ¶ 24]. Mike's experts concluded that Plaintiffs' gas station is " lik e ly" based on an actual, real-life building because its design is typical of gas stations from th e 1920s and 1930s. [Doc. # 177, ¶¶ 39-44]. Plaintiffs contest this assertion. Although th e re are over twenty uncontested differences between Plaintiffs' gas station model and M ik e 's , [Docs. # 177, ¶ 48; # 214, ¶ 28], they are also similar in over twenty other u n co n tested aspects. [Doc. # 214, ¶ 31]. M ik e 's President, Mr. Michael Wolf, testified that photographs of Plaintiffs' depot a n d gas station were used in Mike's' catalog before Mike's had produced its own models. [ D o c . # 214, ¶¶ 22, 32]. The photographs of Plaintiffs' depot and gas station may have been

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m o d if ie d , but they did not reflect any changes to the structure of Plaintiffs' models. [Doc. # 177, ¶¶ 36, 52; # 214, ¶¶ 22, 32]. Plaintiffs seek actual damages (including lost profits and damage to Plaintiffs' re p u ta tio n and goodwill) and Mike's profits as a result of its acts of alleged copyright in f r in g e m e n t , false advertising, and unfair competition. [Doc. # 214, ¶ 33]. Plaintiffs' re p u ta tio n became impaired when Defendant marketed its inferior products­that look like P la in tiff s' products­and postings on internet blogs began to question the relationship b e tw e e n Plaintiffs and Mike's. [Doc. # 214, ¶ 35]. Plaintiffs specifically seek $260,000 for th is reputational damage, [Doc. # 177, ¶ 57], which is based on 2% of Plaintiffs' 2009 annual r e v e n u e . [Doc # 177, at 14]. Plaintiffs frequently used the "2% rule" to assess public re sp o n se , such as to calculate how many tradeshow attendees would purchase product at a p a rtic u la r show and to determine an expected response rate to a mass mailing for marketing p u rpo ses. [Doc. # 177, ¶ 58; # 214, ¶ 35]. II. S u m m a r y Judgment Standard S u m m a ry judgment is proper "if the pleadings, the discovery and disclosure materials o n file, and any affidavits show that there is no genuine issue as to any material fact and that th e movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). The moving p a rty "bears the initial responsibility of informing the district court of the basis for its m o tio n " and must identify "those portions of [the record] which it believes demonstrate the a b s e n c e of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323

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(1 9 8 6 ). If the moving party satisfies its burden, Rule 56(e) requires the non-moving party to respond by submitting evidentiary materials that designate "specific facts showing that th e re is a genuine issue for trial." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U .S . 574, 587 (1986). In determining whether summary judgment is appropriate, a district c o u r t must look at the record and any inferences to be drawn from it in the light most f a v o r a b le to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1 9 8 6 ). Summary judgment is not proper if the evidence is such that a reasonable jury could re tu rn a verdict for the non-moving party. Id. at 248. III. D is c u s s io n M ik e 's Motion for Summary Judgment as to Plaintiffs' copyright infringement claims a re based on the invalidity of Plaintiff's copyrights, either due to fraud on the Copyright O f f ic e at the time of application, or the lack of originality of Plaintiffs' models. A lte rn a tiv e ly, Mike's argues that any copyright Plaintiffs possess is necessarily "thin," and th u s protection is extended only in cases of "virtual identity," which they argue is not present h e re . A. Validity of Plaintiffs' Certificates of Copyright Registration for the P u r p o s e of Commencing an Infringement Action

C o p yrig h t registration is a condition precedent for the commencement of a copyright in f rin g e m e n t action. 17 U.S.C. § 411(a). Registration certificates constitute prima facie e v id e n c e of the validity of the copyright. 17 U.S.C. § 410(c). "A certificate of copyright r e g is tra tio n , therefore, shifts to the defendant the burden to prove the invalidity of the 7

p la in tif f 's copyrights." Entm't Research Grp., Inc. v. Genesis Creative Grp., 122 F.3d 1211, 1 2 1 7 (9th Cir. 1997) (citation omitted). H e re , Plaintiffs have presented copies of certificates of copyright registration as to all o f the models at issue in this litigation. [Def. Exs. ## 9, 10, 11]. Mike's, however, contends th a t Plaintiffs defrauded the Copyright Office by "deliberately failing to disclose" that their m o d e ls are derivatives of works in the public domain. See Whimsicality, Inc. v. Rubie's C o s t u m e Co., 891 F.2d 452, 455 (2d Cir. 1989) (citations omitted) (proof of deliberate m isre p re se n tatio n has been held to overcome this presumption); Mon Cheri Bridals, Inc. v. W e n Wu, 383 Fed. Appx. 228, 232 (3d Cir. 2010) ("Fraud on the Copyright Office is an a f f irm a tiv e defense to claims of copyright infringement. To establish this defense, a d e f en d a n t must show that in applying for the copyright at issue the applicant knowingly or in ten tio n a lly failed to disclose a material fact."). Namely, Mike's states that the train depots a re "replica[s] of the Jefferson Station," [Doc. # 177, at 8], the gas station is also "based on [ a ] real life building[]," [Doc. # 177, at iv, 12], and that this information was "intentionally o m itte d ." [Doc. # 225, at 2]. The evidence Mike's points to in support of its assertions as to the train depots include (1) Plaintiffs' nondisclosure in its initial registrations, (2) testimony by one of the creators o f the train depot models, Mr. Robert Lunde, that he based the train depot on the Jefferson S ta tio n , (3) images of the Jefferson Station appear in numerous historical and architectural d o c u m e n ts and books, (4) that prior to the publication of Plaintiffs' models, the Jefferson

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S ta tio n was featured in the June 1997 issue of Model Railroader, which Plaintiffs receive and re v ie w , and (5) third-party models of the Jefferson Station existed at the time Plaintiffs re lea se d their model. [Doc. # 177, ¶¶ 18-20, 22, 26]. However, none of this evidence is d is p o s itiv e of whether Plaintiffs intentionally or knowingly filed its initial registrations w ith o u t reference to the Jefferson Station. Mike's fails to indicate how Mr. Lunde's k n o w le d g e that he based his model on the Jefferson Station implies that Plaintiffs, s u b s e q u e n t owner of Mr. Lunde's company and work, not only knew that information at the tim e it filed its registrations, but also intentionally omitted that information. Plaintiffs assert to the contrary that when it developed the train depots using the scratch-built model that Mr. L u n d e created, it was not aware of the connection to the actual Jefferson Station. [Doc. # 2 1 4 , ¶ 11]. Mike's also points to evidence of many surrounding facts­images of the J e f fe rs o n Station in texts that Plaintiffs review, other company's models of the Jefferson S ta tio n on the market, and Plaintiffs' desire to "simulate real life" in its models [Doc. # 214, ¶ 4]. The Court also notes that even after Plaintiffs discovered that Mr. Lunde referenced the J e f fe rs o n Station when building the scratch-built model Plaintiffs subsequently developed in to the Coal River Depot, it did not include in its June 2010 supplemental registration a p p lic a tio n that the Jefferson Station was a pre-existing work because it was unaware of the e x te n t to which Mr. Lunde based his model on the Jefferson Station. None of this evidence, h o w e v e r , shows as a matter of law that Osment knowingly or intentionally failed to advise th e Copyright Office that its train depot models were based on Jefferson Station. This

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re m a in s an issue of fact that cannot be resolved on a motion for summary judgment. T h e evidence Mike's points to in support of its assertions as to the gas station include P la in t if f s ' nondisclosure in its initial registration [Doc. # 177, ¶ 18], (2) the photographs, p ic tu re s, and other depictions of gas stations that were used in Plaintiffs' research and d e v e lo p m e n t of the model that may have been referenced in the design process [Doc. # 214, ¶ 23], (3) disputed expert testimony that Plaintiffs' gas station model is "likely based on an a c tu a l, real-life building" [Docs. # 177, ¶ 39; # 214, ¶ 25], (4) expert testimony that P lain tiff s' gas station model is a realistic 1930s era gas station [Doc. # 177, ¶¶ 40-44]. P la in tif f s and Mike's dispute how Plaintiffs' research and development impacts the creation o f a model [Doc. # 214, ¶ 14]: as a search for images upon which models will be copied, or a search for inspiration to create models. Specifically, Plaintiffs maintain that their gas station model is not based on a real-life building. [Doc. # 214, ¶ 25]. In support, they assert th a t their model is not substantially similar to any single image of real gas stations in its d e v e lo p m e n t files, which Mike's does not contest. Thus, whether Plaintiffs' gas station is b a se d on an actual gas station such that it would require disclosure on a registration c e rtif ic a te and whether Plaintiffs' omission of this information was intentional remain issues o f fact for a jury to decide. Mike's appears to argue that mere failure to disclose whether an author used a pree x is tin g work as the basis for his work invalidates a certificate of registration. [Doc. # 177, a t 7-8]. The cases cited to by Mike's, however, do not support this proposition, nor has the

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C o u rt found other support for Mike's argument. See, e.g., Durham Indus., Inc. v. Tomy C o r p ., 630 F.2d 905, 911 (2d Cir. 1980) (examining the limitation of the protection afforded b y 17 U.S.C. § 103 to derivative works insofar that such protection does not affect the scope o f copyright protection in an underlying work); Garner v. Sawgrass Mills Ltd. P'ship, 35 U .S .P .Q .2 d 1396, 1404 (D. Minn. 1994) (granting summary judgment in favor of defendant b ec au se of plaintiff's knowing failure to disclose a preexisting work to the copyright office); G B Marketing USA, Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 774 (W .D .N .Y . 1991) ("[T]he fact that a derivative design is not registered as such does not a u to m a tic a lly invalidate the registration. The determinative factor is whether the omission o c c u r r e d knowingly.") (citation omitted). See also Mon Cheri Bridals, 383 Fed. Appx. at 2 3 2 ("The omission [in the copyright application] must be intentional."). B. O r i g i n a l it y

O rig in a lity is a prerequisite for copyright protection. Feist Publications, Inc. v. Rural T e l. Serv. Co., 499 U.S. 340, 351-52 (1991). Even when a work is based on another, "[n]o m a tte r how poor artistically the author's addition, it is [original] if it be his own." Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951) (citation omitted); M e s h w e r k s , Inc. v. Toyota Motor Sales U.S.A., 528 F.3d 1258, 1263 (10th Cir. 2008) (citing B le is te in v. Donaldson Lithographing Co., 188 U.S. 239, 250 (1903)). Originality requires b o th independent creation and minimal creativity. Feist, 499 U.S. 340, 345 (1991).

C o p yrig h t protection for derivative works covers only those elements that are original to the

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a u th o rs of those works. See, e.g., Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1 1 1 2 (1st Cir. 1993). A copyright registration certificate is prima facie evidence of the o rig in a lity of the registered work. Nimmer on Copyright § 13.01[A], at 13-7. Some courts have articulated how these standards apply to models. For example, in M e sh w e rk s, the Tenth Circuit Court of Appeals found that Meshwerk's models of Toyota's v e h ic le s were "copies" and not independent creations. Meshwerks, 528 F.3d at 1264. There, M e sh w e rk s created digital images of Toyota's vehicles by taking meticulous measurements o f the cars and mapping them onto a computerized grid. Modeling software converted these d ata points into a "wire frame" of each vehicle. Mehswerks' employees later "`sculpted' . . . the lines on the screen to resemble each vehicle as closely as possible." Id. at 1260. The ta sk took between eighty to one hundred hours of work per vehicle due to the difficulty of p o rtra yin g a three-dimensional car as a two-dimensional image. The end results of this labor w e r e "utterly undadorned" digital models that lacked color and shading among other details. Id . at 1261. "Key" to the court's decision was "the fact that Meshwerks' digital wire-frame co m p u ter models depict Toyota's vehicles without any individualizing features: they are u n to u c h e d by a digital paintbrush; they are not depicted in front of a palm tree, whizzing d o w n the open road, or climbing up a mountainside." Id. at 1265. Devoid of such

in d iv i d u a liz a tio n , the court concluded that there was no copyrightable matter for Meshwerks. H e re , Plaintiffs own copyright registrations as to all of the models at issue in this case. M ik e ' s attempts to rebut the statutory presumption of originality, by alleging that Plaintiffs'

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m o d els are "scale[d] down . . . size[s] of real-life buildings using an industry-standard m a th e m a tic a l formula," Plaintiffs' train depot models are based on the Jefferson Station, P la in tif f s changes to the structure of its model as compared to the original Jefferson Station a re minor and trivial, and Plaintiffs "cannot show that they added any elements to the s tru c tu re of the real-life [gas] station that was copied." [Doc. # 177, at 5, 6, 11]. At the s u m m a ry judgment stage, the evidence must show that there are no issues of fact that P la in tif f s' models are not "independent creations" nor convey "minimal creativity" for the m o d e ls to be deemed not original. T h e record, however, does not support such a finding as a matter of law. As to the gas s ta tio n model, it remains a question of fact whether Plaintiffs based its model on a pree x istin g gas station. Even Mike's expert could testify only that Plaintiffs "likely" based its m o d e l on an actual real-life building. [Doc. # 177, ¶ 39]. As to Plaintiffs' train depot m o d els, they are admittedly based on the Jefferson Station. [Doc. # 177, ¶¶ 19-20]. H o w e v e r, to be deemed not original, the record must further show that the models are not in d e p e n d e n t creations nor convey minimal creativity. Unlike the modeling in Meshwerks w h e re modelers took detailed measurements of the real-life cars and painstakingly converted th e m to a digital two-dimensional format, Plaintiffs did not simply "copy" Jefferson Station in to a different medium. Rather, expert testimony shows that Plaintiffs' modelers engaged in "selective compression" as opposed to merely scaling down measurements of the actual b u ild in g . Further, in Meshwerks, the court had emphasized that the vehicle models exhibited

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n o copyrightable expression. Here, there are visual differences between Plaintiff's train d e p o ts and the Jefferson Station. Whether these differences amount to original expression re m a in s a question of fact. M ik e 's argues that the differences are "minor and trivial." [Doc. # 177, at 6]. The p rim a ry case it cites to for support of a standard by which this Court can gauge the triviality o f Plaintiffs' differences is L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976). T h a t case dealt with an "Uncle Sam bank" that has been in the public domain for decades. A p p e lla n t obtained a copyright registration for a plastic version of that bank, which a d m itte d ly had been based on a non-copyrighted cast iron version of the bank. The Court of A p p e a ls for the Second Circuit noted that the lower court found that appellants' plastic v e rs io n "`reproduces' the cast iron bank `except that it proportionately reduces the height f ro m approximately eleven inches to approximately nine inches with trivial variations." Id. a t 489. The Court of Appeals found that the only other differences between the two banks, a sid e from size and material, included the "minor" changes to the shape of the satchel and le a v e s . Id. at 489. Here, unlike the court in Batlin, the Court does not find as a matter of law that P lain tiff s' specific design elements, which they contend are unique to its models, are trivial. R a th e r, based on the images of Jefferson Station and Plaintiffs' models presented to the C o u rt, [Def. Exs. # 16, at 3-5; # 17, at 3; # 28; Doc. # 214-24, at 9-16], the Court notes o s te n sib le visual differences in the setting of the depots, color scheme, signage, bracket

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d e sig n , number of chimneys, window frame design, and back-of-the-building door and a w n i n g design. These differences, combined with selective compression, exceed the

" c o p yin g " in Meshworks and the "trivial" modifications in Batlin. Unlike the car models in M e s h w o r k s and the plastic bank in Batlin, Plaintiffs' models do not appear to be mere re p lic a tio n s of other objects in a different medium. Thus, it remains a question of fact w h e th e r Plaintiff's model is sufficiently original and therefore copyrightable. A s to Plaintiffs' gas station model, Plaintiff's point to the fact that its model is not s u b s ta n tia lly similar to any real-life building or any photos found in its research file, and m a in ta in s that it is a completely original work. Mike's has not shown as a matter of law that it is, thus whether the entire model is copyrightable remains a question of fact. C. " T h in " Copyrights and Protectable Elements

M ik e 's contends that if Plaintiffs' works are copyrightable, then Plaintiffs can m o n o p o lize public domain work and derivative works therefrom. However, its concern is m is p la c e d . Copyright law specifically permits protection of "derivative works" as to those s p e c if ic elements that are original to the authors of the derivative works. Thus, that P lain tiff s' works may be copyrightable does not mean that Plaintiffs own copyright to J e f fe rs o n Station itself, for example. Rather, Plaintiffs copyright protection would extend o n ly to elements that are original to them. The differences noted between Jefferson Station a n d Plaintiffs' train depot models in Part III.B, for example, may be eligible for protection. B e c a u s e the scope of originality for all of Plaintiffs' models remain a question of fact, see

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P a r t III.B, so, too, is the determination of the models' protectable elements. Even if Plaintiffs' works are protected, however, Mike's argues that instead of the g e n e ra ll y applied standard for determining whether a copyright has been

in fringed­"su b stantia l similarity"­a heightened standard such as "supersubstantial similarity" o r "virtual identity" ought to be applied. Mike's contends that the numerous uncontested d if f ere n c es between Plaintiffs' models and its models support a finding that as a matter of la w , Mike's did not infringe on Plaintiffs' copyrights because there exists no "virtual id e n tity" between their models. Several courts appear to apply this heightened similarity standard to cases concerning " th in " copyrights. That is, copyrights that have a scope of protection so narrow that they only p ro te c t from virtually identical copying by an alleged infringer. See e.g., Ets-Hokin v. Skyy S p ir its , Inc., 323 F.3d 763, 766 (9th Cir. 2003). The rationale for this principle is longe sta b lis h e d : "The less developed the characters, the less they can be copyrighted; that is the p e n a lty an author must bear for marking them too indistinctly." P ic tu r e s Corp., 45 F.2d 119, 121 (2d Cir. 1930) (Learned Hand, J.). That Plaintiffs' copyrights may offer protection only to select original elements does n o t necessarily render Plaintiffs' copyrights subject to a "supersubstantial similarity" or " v i rtu a l identity" test as a matter of law for three reasons. First, the scope of Plaintiffs' c o p yrig h ts remain a question of fact. Despite the numerous differences between Mike's' and P lain tiff s' models, there are also numerous similarities. The scope of Plaintiffs' copyrights Nichols v. Universal

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w ill determine whether any of these similarities are protected original elements of Plaintiffs' m o d e ls . Second, what appears to be an enhanced standard for "thin" copyrights is nothing m o re than shorthand terminology for the general "substantially similar" test when the scope o f protection afforded by a copyright is minimal. See e.g., Ets-Hokin v. Skyy Spirits, Inc., 323 F .3 d 763, 766 (9th Cir. 2003) (finding that the similarities between the photographs of the a lle g e d infringer's and those of Ets-Hokin's were "inevitable" because they shared the same id e a of photographing a vodka bottle, and after removing all of the uncopyrightable elements, th e only protection that remained for Ets-Hokin was that from "virtual identity."). Third, the E ig h th Circuit Court of Appeals applied a "substantially similar" standard to the works at is s u e in Schoolhouse, Inc. v. Anderson, 275 F.3d 726 (8th Cir. 2002), even after determining t h a t the work in question only possessed "thin" protection. Id. at 729, 731. Thus, it is in a p p ro p ria te for the Court to apply at this juncture a "supersubstantially similar" or "virtual id e n tity" standard when the scope of Plaintiffs' copyrights remain a factual issue. C. F a ls e Advertising and Unfair Competition

" T h e use of another's product [photographs], misbranded to appear as that of a c o m p e tito r, has been repeatedly found to be `a false designation of origin' actionable under § 43(a) [of the Lanham Act, 15 U.S.C. § 1125(a)]." Truck Equip. Serv. Co. v. Fruehauf C o r p ., 536 F.2d 1210, 1216 (8th Cir. 1976). Mike's President, Mr. Michael Wolf, testified th a t the photographs appearing in Mike's' catalogs were indeed of Plaintiffs' train depot and g a s station with some "modifications." [Doc. #214, ¶¶ 22, 32]. Mike's bald assertion that its

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p h o to g ra p h s are "dissimilar" to Plaintiffs' train depot and gas station does not change the fact th a t the photographs are in fact photographs of Plaintiffs' models. The Court is aware of no l a w , nor has Mike's pointed to any, to support the proposition that as a matter of law, the L an h am Act is not violated if alterations are made to another's product photographs before a p p ro p ria tin g them. Summary judgment as to this issue is denied. D. M o n e ta r y Relief

A s explained in the foregoing, Mike's is not entitled to summary judgment on any of P la in tif f s' claims. Further, the Court has permitted the expert testimony of Mr. Shawn Fox [D o c. # 238], which Plaintiffs assert supports its damages claims. Mike's arguments targeting th e credibility of Mr. Fox's damages calculations are more appropriate before a jury. As to Plaintiffs' claim for reputational damages under the Lanham Act, there is s u f f ic ie n t evidence for Plaintiffs to move forward with their Lanham Act claim. See Part III.C . Further, based on the record, Plaintiffs have made a "submissible case" for reputational d a m a g e s . Marvin Lumber & Cedar Co. v. PPG Indus., 401 F.3d 901, 914 (8th Cir. 2005). At a minimum, Plaintiffs must be able to present evidence supporting the impairment of its re p u ta tio n . See Porous Media Corp. v. Pall Corp., 173 F.3d 1109 (8th Cir. 1999) (upholding ju ry verdict amount for Lanham Act violation based on sufficiency of evidence of loss of g o o d w ill). Evidence of Plaintiffs' reputational damage includes commentary on internet b lo g s that there might exist a relationship between Plaintiffs and Mike's. That this co m m en tary is evidence of reputational damage is rooted in Plaintiffs' assertion that Mike's

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p rod u cts are inferior to its own, [Doc. #214, ¶ 35; Doc. #214-28, at 60:19-23], which Mike's d o e s not specifically contest. At a minimum, this is a jury question. Plaintiffs' basis of their lo ss calculation on a company rule of thumb­that conservatively accounts for public re s p o n s e ­ a ls o creates a submissible case to a jury. Marvin Lumber, 401 F.3d at 913-14 (s u b m is s ib le case does not require mathematical certainty as to loss of goodwill, but does req u ire more than just a "gut" feeling). III. C o n c lu s io n A c c o rd in g ly, it is hereby ORDERED that Defendant Mike's Train House's Motion f o r Summary Judgment [Doc. # 161] is DENIED.

s/ Nanette K. Laughrey NANETTE K. LAUGHREY U n ite d States District Judge D a te d : December 27, 2010 Jefferson City, Missouri

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