Chicago Copyright Infringement Case Dismissed

By Eric Misterovich

A Chicago copyright infringement case was recently dismissed in the Northern District of Illinois where the Plaintiff failed to establish that its poems were original for the purposes of copyright protection.

 

Background:

 

The court granted Defendant Techny Advisors, LLC (“Defendant”) motion to dismiss Plaintiff Personal Keepsakes, Inc. (“Plaintiff”) claims of copyright infringement and violations of the Digital Millennium Copyright Act (“DCMA”) for failure to state a claim under which relief can be granted (see Counts I and II of Plaintiff’s amended complaint).

 

Plaintiff, a company that creates original poems that are incorporated into personalized gifts and then sold on their online gift store, www.poetrygifts.com, alleged that Defendant, a retailer in the same type of business, illegally used Plaintiff’s copyrighted material in its competing goods.

 

More specifically, Plaintiff exhibited four of Defendant’s merchandise at issue to demonstrate the infringed language allegedly belonging to Plaintiff contained in Defendant’s gifts. One particular gift listed in Count I that Defendant moved to dismiss is a gift titled “On Your Confirmation Day,” which reads, “May the strength of the Holy Spirit be with you, guiding you every day of your life.” Regarding this particular verse, Plaintiff provided examples of gifts sold by Defendant that allegedly contain this copyrighted verse. Further, Plaintiff maintains that its copyright established by means of a Certificate of Registration covers the “On Your Confirmation Day” poem, and that Defendant obtained no license to use it.

 

Additionally, in Count II of its amended complaint, Plaintiff claimed that Defendant violated the DMCA when it removed “copyright management information” (“CMI”) from the “copied” material, such as Plaintiff’s website name and the associated copyright notice. Defendant moves to dismiss this claim entirely.

 

Count I: Copyright Infringement; The Confirmation Gift

 

A copyright infringement claim must allege that (1) the plaintiff owns a valid copyright; and (2) the defendant copied “constituent elements of the work that are original.”[1] Additionally, to receive a copyright, a work must be original.[2]

 

Defendant argued that this claim should be dismissed for three reasons. First, the phrase “May the strength of the Holy Spirit be with you, guiding you every day of your life” is not copyrightable as a matter of law (i.e., it is too common and short a phrase); second, Plaintiff’s asserted copyright registration does not cover the common phrase; and lastly, when the unprotected elements of Plaintiff’s allegedly original work are disregarded, both parties’ works lack the “substantial similarity” requirement for copyright infringement.

 

(1) Plaintiff Does Not Hold A Valid Copyright:

 

The Court held that “originality” requires both independent creation by the author and a “minimal level of creativity.”[3] But that, “common, trite, and clichéd language conveying ideas generally expressed in a limited number of ways are unprotectable.”[4] That is, the short verse that Plaintiff alleged as copyrighted material is too typical and unoriginal to receive copyright protection, as it is common. The court further reasoned that the alleged copyrighted expression is closely similar to other short, widely-used blessings, such as, “May the strength of the Lord be with you,” “May the Lord be with you,” or “God be with You.”

 

In conclusion, the Court holds that given the briefness of the phrase, coupled with its lack of originality, the blessing, “May the strength of the Holy Spirit be with you, guiding you every day of your life,” does not meet the plausibility threshold that it is a valid copyright. Moreover, the court reasoned that Plaintiff failed to offer additional facts that make the copyright claim plausible, and thus, this count of Plaintiff’s complaint fails to state a claim for which relief can be granted.

 

(2) Plaintiff’s Registrations Does Not Include Alleged Phrase:

 

Additionally, Defendant argued that the alleged copyrighted blessing did not receive copyright protection under the certificate of registration as Plaintiff claimed.

 

Defendant maintains that the certificate of registration attached to Plaintiff’s complaint is redacted and in actuality, the registration is for an “entire collection of poems” that encompasses six pages of text with 20 titles listed in the certificate. Defendant argued that while a certificate of registration is prima facie evidence of the validity of a copyright, the certificate of registration in question here is for an “entire collection of poems” and not for the single blessing Plaintiff alleged in its complaint. Finally, “[c]opyright does not protect individual words and ‘fragmentary’ phrases when removed from their form of presentation and compilation.”[5]

 

(3) Substantial Similarity Requirement Not Proven:

 

Alternatively, Defendant argued that even if the copyright registration did include the alleged copyrighted blessing, there is no similarity between Plaintiff’s work and Defendant’s, and thus, there is no copying.

 

The court notes that “when the portion of the expression at issue that is not copyrighted, or could not properly be copyrighted, is set aside, there is virtually nothing of Plaintiff’s allegedly protected work left to compare with Defendant’s version for substantial similarity.” Specifically, a likeness between works is lessened when the similarities are in common usage, such as the ubiquity of the blessing at issue here. Thus, while the framework of both parties work may be coincidentally similar, they are “independently created.”

 

In conclusion, Plaintiff fails to establish any substantial similarity between the elements of its work and Defendant’s, and therefore fails to plausibly allege that work was copied. Additionally, Plaintiff’s claim that its copyright registration includes the blessing fails too.

 

Count II: DMCA Violation Claim

 

Defendant also moves to dismiss Plaintiff’s claim that Defendant violated the DMCA, which states in part that tampering with CMI is prohibited. Specifically, the DMCA creates liability for any person who intentionally provides or distributes false CMI. Additionally, the DMCA prohibits intentional removal or alteration of CMI, and knowing distribution of illegally modified CMI is similarly proscribed.Notably, to be covered by the DMCA, CMI must be conveyed in connection with a copyrighted work.

 

Plaintiff’s asserts two allegations against Defendant regarding this count. First, that Defendant removed the CMI connected with Plaintiff’s poems when it copied the poems; and second, that Defendant attached false CMI on the pages selling the alleged infringing products and in their general website terms and conditions.

 

(1) Alleged CMI Removal:

 

Regarding the first allegation, Defendant maintains that Plaintiff cannot establish a claim pursuant to this provision of the DMCA because the material Defendant allegedly removed or altered is not in fact CMI.

 

Under the DMCA, “copyright management information” includes “any of the following information conveyed in connection with copies … of a work . . . (2) The name of, and other identifying information about, the author of a work. (3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.”[6]

 

Plaintiff claimed that Defendant removed three CMIs from the poems it “copied”: the www.poetrygift.com name, the titles of the works (specifically, “On Your Confirmation Day”), and the copyright notice on every page of the website. Defendant argued that this is a failing argument because these specific allegations are not CMI. The court agreed and held that Plaintiff’s website, poetrygift.com cannot be CMI because the copyright registrations attached to the complaint demonstrate Plaintiff, not poetrygift.com, as the owner of the copyright. That is, the alleged CMI “does not link up in any way to the copyright registration.”

 

To buttress this finding, the court explained further that the titles cannot be CMI because the copyright registrations do not list the titles of the works as they appear on Plaintiff’s website, and instead on the registrations, the copyrighted materials are referred to differently. The court noted that the purpose of a CMI is to put the world on notice that something is copyrighted to prohibit infringement, but that here, Plaintiff makes it impossible for a party actively trying to avoid copyright infringement to do so as the only alleged CMI is on Plaintiff’s website, not the poems or phrases. Thus, Defendant removed no CMI information from the poems.

 

(2) Defendant Did Not Provide False CMI

 

Lastly, Plaintiff alleged that Defendant posted a notice attributing copyright ownership in the infringed works. This claim fails as well because Defendant’s notice is not “conveyed with,” or attributed to the poems, but is instead at the bottom of every page of its website. Thus, because the only CMI displayed appears on the website footer and not the works themselves, the Court held that Defendant is asserting ownership rights in its own website, not claiming ownership of a copyright to all of its products (i.e., short phrases).

 

In conclusion, the court held that Defendant’s motion to dismiss is granted as to Count II in its entirety and Count I as it pertains to the disputed portion of the registered copyright, “May the strength of the Holy Spirit be with you, guiding you every day of your life.”

 



[1] Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361(1991).

[2] Id.

[3] Kelley v. Chicago Park Dist., 635 F.3d 290 (7th Cir. 2011) (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).

[4] Peters v. W., 776 F. Supp. 2d 742, 750 (N.D. Ill. 2011) aff’d, 692 F.3d 629 (7th Cir. 2012); see Allen v. Destiny’s Child, 06 C 6606, 2009 WL 2178676 (N.D. Ill. July 21, 2009).

[5] Hutchins v. Zoll Med. Corp., 492 F.3d 1377,1385 (7th Cir. 2007).

[6] Cable v. Agence France Presse, 728 F. Supp. 2d 977, 979 (N.D. Ill. 2010) (quoting 17 U.S.C. § 1202(c)).

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