Skyline v. McGrory - 12(c) Motion

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

SKYLINE DESIGN, INC.,

Plaintiff,

v.

McGRORY GLASS, INC., Defendant.

) ) ) ) ) ) ) ) )

Case No. 1:12-cv-10198 Honorable Edmond E. Chang

McGRORY GLASS, INC.’S MOTION FOR JUDGMENT

ON THE PLEADINGS UNDER FED. R. CIV. P. 12(C) AND SUPPORTING MEMORANDUM OF POINTS AND AUTHORITIES

Case: 1:12-cv-10198 Document #: 25 Filed: 02/06/13 Page 1 of 17 PageID #:144

1

I. INTRODUCTION

The Court should enter judgment on the pleadings in favor of McGrory and dismiss

Plaintiff’s copyright infringement case because there are no facts upon which Plaintiff can ever

state a claim for relief. No reasonable jury could find defendant McGrory Glass, Inc.’s

(“McGrory”) accused MII-247 design substantially similar to the protectable aspects of

Plaintiff’s “Sateen” design. As Plaintiff must prove substantial similarity as an essential element

of its copyright infringement claim, the complaint fails as a matter of law.

As an initial matter, it is important to recognize that Plaintiff’s registered copyright

entitled “Sateen” which has been asserted in this case covers only a particular two-dimensional

graphic design. Although Plaintiff has applied that two-dimensional design to three-dimensional

clear glass panels used for architectural purposes, Plaintiff cannot by doing so expand the scope

of its copyright beyond the two-dimensional graphic design it registered. Specifically, Plaintiff’s

copyright does not extend to the type of medium on which the design is placed; the medium’s

thickness, translucence, or dimension; the practice of etching on glass; the three-dimensional

effect created by etching on two sides of glass; or the vertical/horizontal orientation of the design

on the medium. It cannot be disputed that McGrory is free to compete with Plaintiff in the sale

of clear, architectural glass panels etched on one side or two.

The differences apparent in the accused design are significant and dispositive, given the

limited scope of Plaintiff’s copyright after unprotectable concepts and techniques are identified.

Moreover, both the linear simplicity of the “Sateen” design and its realistic reproduction of

woven strands of fiber as can be found in commonplace, generic fabric designs limit Plaintiff’s

rights to, at best, a “thin” copyright, enforceable only against a substantially undeviating

reproduction. Here, the works speak for themselves: the pattern of parallel bars applied to

McGrory’s MII-247 product and the pattern of woven strands of the “Sateen” design depicted in


2

the Complaint and the Amended Answer are not substantially similar, thus there can be no

copyright infringement as a matter of law.

Pursuant to the Local Rules and this Court’s Case Management Procedures, this Motion

is made following the conference of counsel which took place on February 5, 2013. Counsel for

Plaintiff stated that Plaintiff opposes this Motion.1

II. BACKGROUND

Plaintiff Skyline Design, Inc. (“Plaintiff”) claims ownership of U.S. Copyright

Registration No. VA 1-364-683, dated May 9, 2006, covering a two-dimensional graphic design

entitled “Sateen.” Exh. 1 at ¶¶ 16, 17, 21; Exh. 2 at 2. Plaintiff etches this design on

architectural glass panels that it sells for use as windows, interior glass walls and dividers.

Exh. 1 at ¶¶ 16, 22. Plaintiff initially attempted to register the “Sateen” design as a “three-

dimensional sculpture,” “two-dimensional artwork,” and “architectural work.” See Exh. 2 at 2.

The Copyright Office, however, disagreed with Plaintiff’s description of what was copyrightable,

and Plaintiff’s application was amended to clarify that the subject work was, in fact, a “two-

dimensional artwork.” See id. at 3 (amendment dated 7/17/06).

A copy of the “Sateen” design filed with the U.S. Copyright Office shows—and Plaintiff

in its allegations confirms—that the original aspect of the “Sateen” design is no more than

“a pattern of lines of varying thicknesses and distances from each other . . .” Exh. 1 at ¶ 46;

see generally Exh. 2. The “Sateen” design comprises wavy lines of varying thicknesses that

touch and intersect intermittently. See Exh. 7. The wavy lines are closely spaced, such that they

overlap and merge together at times. See id.

1 Counsel for Plaintiff also indicated that Plaintiff may seek to amend its Complaint to

add a different McGrory product. Should Plaintiff do so, McGrory reserves the right to respond to such amended complaint, as it deems appropriate.


3

The “Sateen” design is one of Plaintiff’s “Weaves & Textures” design collection, and,

indeed, the “Sateen” design looks like loosely woven strands of fiber, with single strands

branching off into multiple strands and coming back together. See id. According to Plaintiff’s

website, in creating the collection that includes “Sateen,” Plaintiff looked at “everyday fabrics

used by indigenous peoples from Mexico and Africa.” See Exh. 8. Plaintiff correctly considers

“Sateen” a “timeless classic[]” design, id., as “sateen” is a term of art for a fabric made with a

“satin weave” that confers a smooth, lustrous finish. See Merriam-Webster Dictionary,

Definition of “Sateen,” available at http://www.merriam-webster.com/dictionary/sateen (last

visited Feb. 6, 2013) (Exh. 18); see also Definition of “Satin Weave,” available at

http://www.merriam-webster.com/dictionary/satin%20weave (last visited Feb. 6, 2013) (Exh.

19).2

Defendant McGrory Glass, Inc. (“McGrory”) purchases architectural glass from an

Italian company, OmniDécor S.p.A., under the OmniDecor designations “Rain,” on which the

design is etched on one side of the glass panel (see Exh. 5, photograph of “Rain”), and

“Bi-Rain,” on which the same design is etched on both sides of the glass panel (see Exh. 6,

photograph of “Bi-Rain,” which McGrory designates as “MII-247”). See Exh. 3 at ¶¶ 24, 27.

The design etched on MII-247 products consists of parallel lines of varying thickness and

distances that do not branch off or intersect. See Exh. 6. The design on the accused product,

MII-247, has an appearance similar to a bar code. See id.

III. LEGAL STANDARD

Federal Rule of Civil Procedure 12(c) permits a party to move for judgment on the

pleadings and dismissal of the complaint after both the plaintiff’s complaint and the defendant’s

2 The Court may properly take judicial notice of these dictionary definitions. Fed. R.

Evid. 201(b).


4

answer have been filed. Fed. R. Civ. P. 12(c). A motion for judgment on the pleadings is

decided based upon a review of the pleadings. Northern Indiana Gun & Outdoor Shows, Inc. v.

City of South Bend, 163 F.3d 449, 452 (7th Cir. 1998). The pleadings include the complaint, the

answer, and any written instruments attached as exhibits. Id. at 452-53; see also Arethas v.

S/TEC Group, Inc., No. 04-cv-6743, 2005 WL 991782, at *6 (N.D. Ill. Apr. 14, 2005) (Exh. 13).

Rule 12(c) motions are reviewed under the same standard as Rule 12(b)(6) motions to dismiss.

Piscotta v. Old Nat’l Bancorp, 499 F.3d 629, 633 (7th Cir. 2007). On a Rule 12(b)(6) motion,

a court must accept well-pleaded allegations as true; however, factual allegations must be

disregarded if they constitute nothing more than “legal conclusions” or “naked assertions.”

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 557 (2007) (“[A] plaintiff’s obligation to provide

the grounds of his entitlement to relief requires more than labels and conclusions, and a

formulaic recitation of a cause of action’s element will not do.”).

In a copyright infringement case, “substantial similarity” is an objective test and a

threshold issue that can be properly resolved at the motion to dismiss stage of litigation.

See, e.g., Peters v. West, 776 F. Supp. 2d 742, 751 (N.D. Ill. 2011), aff’d, 692 F.3d 629 (7th Cir.

2012); Hobbs v. John et al., No. 12-cv-3117, 2012 WL 5342321, at *2-3 (N.D. Ill. Oct. 29, 2012)

(Exh. 14) (finding no substantial similarity as a matter of law); O’Leary v. Books, No. 08-cv-

0008, 2008 WL 3889867, at *2-3 (N.D. Ill. Aug. 18, 2008) (Exh. 15) (same). “[W]here, as here,

the works in question are attached to a plaintiff’s complaint, it is entirely appropriate for the

district court to consider the similarity between those works in connection with a motion to

dismiss, because the court has before it all that is necessary to make such an evaluation.”

Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010). If the

Court determines that the two works are “not substantially similar as a matter of law,” Kregos v.


5

Assoc. Press, 3 F.3d 656, 664 (2d Cir. 1993), the Court can properly conclude that the plaintiff’s

complaint, together with the works incorporated therein, do not “plausibly give rise to an

entitlement to relief.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

In this case, the MII-247 design is not substantially similar to the “Sateen” design as a

matter of law because (1) when medium, technique and concept are properly removed from

consideration, the “Sateen” design is a simple linear design that realistically represents woven

strands of a fabric or textile, thus Plaintiff’s copyright is “thin” and should be afforded limited

protection; and (2) the MII-247 design is different in several ways, and does not appropriate any

protectable aspect of the “Sateen” design. Because substantial similarity, a key element of

Plaintiff’s claim, is absent, the defects in Plaintiff’s complaint cannot be cured by amendment or

discovery. Accordingly, judgment on the pleadings should be entered in McGrory’s favor and

the complaint should be dismissed with prejudice for failure to state a claim upon which relief

can be granted. See Fed. R. Civ. P. 12(c).

IV. ARGUMENT

A. PLAINTIFF’S COPYRIGHT CLAIM FAILS AS A MATTER OF LAW

To prove copyright infringement, Plaintiff must establish: “(1) ownership of a valid

copyright; and (2) unauthorized copying of constituent elements of the work that are original.”

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991); Peters, 692 F.3d at

632. Absent evidence of direct copying, Plaintiff must show that McGrory had access to

Plaintiff’s work and the two works are substantially similar. Peters, 692 F.3d at 633; see also

Nova Design Build v. Grace Hotels, LLC, 652 F.3d 814, 817-18 (7th Cir. 2011).3

3 For purposes of this motion only, McGrory does not dispute that Skyline possesses a

valid copyright in the “Sateen” design or that McGrory had access to the copyrighted work. Therefore, the sole issue to be decided on this motion is whether, as a matter of law, there is


6

Thus, to survive a motion for judgment on the pleadings, Plaintiff must plausibly plead

that the protectable elements of the “Sateen” design are substantially similar to the design

applied to McGrory’s MII-247 product. Iqbal, 556 U.S. at 678. The test in the Seventh Circuit

for determining whether there is substantial similarity is the “ordinary observer” test, i.e.,

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 protectable

expression.” Susan Wakeen Doll Co., Inc. v. Ashton-Drake Galleries, 272 F.3d 441, 450

(7th Cir. 2001); Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 509 (7th Cir.

1994).

Because the test for substantial similarity is an objective test, JCW Inv., Inc. v. Novelty,

Inc., 482 F.3d 910, 916 (7th Cir. 2007), the Court may visually compare the two works at the

pleading stage and determine that they are not substantially similar. See, e.g., Peters v. West,

776 F. Supp. 2d 742, 751 (finding no substantial similarity as a matter of law); O’Leary, 2008

WL 3889867, at *2-3 (Exh. 15) (same); Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124, 1137

(C.D. Cal. 2007) (same); Daley v. Granada U.S. Productions, No. 02-2629, 2003 WL 21294986,

at *1 (E.D. Pa. Jan. 29, 2003) (Exh. 16) (same). For example, this Court compared the lyrics of

two songs on a motion to dismiss and determined that the lyrics are not substantially similar as a

matter of law because the copyrighted work included common themes, words, and phrases not

protected by the Copyright Act. Hobbs, 2012 WL 5342321, at *7 (Exh. 14).

Although works are to be considered as a whole, identifying the unprotectable elements

in the “Sateen” design is a threshold inquiry that must first be made to determine the extent of

the copyright:

substantial similarity between the “Sateen” copyrighted design and the design applied to the MII-247 product.


7

[T]he trick is to begin with the allegedly aggrieved work in one hand and nothing in the other hand and ask “Is it copyrightable? And if so, in what respect? To what extent?” Those limiting questions define whether a comparison need to be made at all and, if so, also defines the universe for such a comparison. It is axiomatic that copyright protects expression, not ideas . . . So the question is not whether plaintiff’s materials contained any original expression, but whether the [defendant’s work] copied protectable parts of that expression or merely used the same underlying ideas.

Francorp, Inc. v. Siebert, 210 F. Supp. 2d 961, 965 (N.D. Ill. 2001) (citing Sassafras

Enterprises, Inc. v. Roshco, Inc., 889 F. Supp. 343, 348 (N.D. Ill. 1995)).

It is axiomatic that copyright protects original expression, not concepts, techniques or

other unprotectable elements. 17 U.S.C. § 102(b); Wildlife Express, 18 F.3d at 511-12; Roulo v.

Russ Berrie & Co., 886 F.2d 931, 939 (7th Cir. 1989). Thus, in applying the ordinary observer

test, a court must first “filter out ideas, processes, facts, idea/expression mergers, and other

unprotectable elements of plaintiff’s copyrighted materials to ascertain whether the defendant

infringed protectable elements of those materials.” Francorp, 210 F. Supp. 2d at 965; Pampered

Chef Ltd. v. Magic Kitchen, Inc., 12 F. Supp. 2d 785, 791-92 (N.D. Ill. 1998). This analysis will

“define whether a comparison [of the copyrighted work and accused work] need to be made at all

and, if so, also defines the universe for such a comparison.” Francorp, 210 F. Supp. 2d at 965

(citation omitted).

When a copyrighted expression adds little new or additional to an idea, the copyright is

“thin,” and the copyrighted expression can be protected only against “virtually identical

copying.” Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 616-17

(7th Cir. 1982); Gentieu v. Tony Stone Images/Chicago, Inc., 255 F. Supp. 2d 838, 850 (N.D. Ill.

2003) (“By utilizing her expression in such a way as to create a naked baby and nothing else the

plaintiff limits her copyright protection to the identical copying of the copyrightable elements of


8

her work.”). Here, the idea embodied in the “Sateen” design is that of woven strands or fabric.

As fully set forth below, the “Sateen” design adds little, if anything, to that idea.

1. Plaintiff’s “Sateen” Copyright Is Extremely Limited in Scope.

In this Circuit, copyrights are deemed to be of limited scope and protected against only

identical copying when idea and expression are indistinguishable or closely aligned. As a work

embodies more and more particularized expression, the work properly receives proportionally

broader copyright protection. Atari, 672 F.2d at 616-17; Pampered Chef, 12 F. Supp. 2d at 791-

92.

The “Sateen” design falls decidedly on the weak end of the copyright spectrum. First,

Plaintiff acknowledges that the “Sateen” design, part of Plaintiff’s “Weaves and Textures”

design collection, was inspired by the “everyday fabrics of the indigenous peoples of Mexico and

Africa.” See Exh. 12. Setting aside the validity question of whether Plaintiff copied the

“Sateen” design from another’s pre-existing design, irregularly spaced, sometimes overlapping,

strands (lines) of varying thicknesses is an idea inherent in commonplace, woven fabrics. Thus,

anyone who wants to evoke the idea of a woven fabric on architectural glass is free to do so.

Even the name of Plaintiff’s design, “Sateen,” indicates that the design is based on a

commonplace woven fabric, sateen.4 Plaintiff’s design faithfully represents a fabric’s weave,

and therefore adds little, if anything, to the underlying idea.

Second, in its Complaint, Plaintiff itself acknowledges the narrow metes and bounds of

its copyright: it is the “ornamental pattern of lines of varying thicknesses and distances from

each other which constitute original aspects of the Sateen . . .” Exh. 1 at ¶ 46. However,

4 “Sateen” is a term of art for a fabric made with a “satin weave” that confers a smooth, lustrous finish. See Merriam-Webster Dictionary, Definition of “Sateen,” available at http://www.merriam-webster.com/dictionary/sateen (last visited Feb. 6, 2013) (Exh. 18); see also Merriam-Webster Dictionary, Definition of “Satin Weave,” available at http://www.merriam-webster.com/dictionary/satin%20weave (last visited Feb. 6, 2013) (Exh. 19).


9

Plaintiff’s copyright does not extend to the idea of lines of varying thicknesses and distances, but

only to the specific distances and thicknesses Plaintiff chose when arranging the lines in the

“Sateen” pattern. Plaintiff asserts copyright in only one rendering of that idea – the “Sateen.”

Plaintiff’s copyright cannot preclude others from utilizing the idea of incorporating lines of

varying thicknesses and distances from each other in two-dimensional artwork.

Third, Plaintiff has no proprietary right in vertical application of its design on a medium.

Whether the design is applied to the medium vertically, horizontally, diagonally, or in some

other orientation is a manner of application, and manners of application, while perhaps in the

realm of patents, are concepts outside the scope of copyright. Thus, the fact that both Plaintiff’s

“Sateen” glass product and the MII-247 glass product show their respective designs in a vertical

orientation and the fact that both designs embody the concept of irregularly spaced lines must

also be disregarded in a substantial similarity analysis. See S.T.R. Indus., Inc. v. Palmer Indus.,

Inc., No. 96-cv-4251, 1999 WL 258455, at *4 (N.D. Ill. Apr. 9, 1999) (Exh. 17) (the placement

of artwork on pool cues is not the subject of copyright.).

Fourth, Plaintiff’s “Sateen” design is a very simple, repeating linear pattern, and for that

reason alone is not entitled to a broad scope of copyright protection. Lines are simple, geometric

figures that are not copyrightable. See Atari Games Corp. v. Oman, 979 F.2d 242, 247 (D.C. Cir.

1992) (“We do not in any way question the Register’s position that ‘simple geometric shapes . . .

are per se not copyrightable’”); Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541,

545 (2d Cir. 1959) (circular, rectangular, and octagonal shapes not protected). Copyright in a

simple repeating pattern of lines is thus necessarily weak.

Plaintiff likewise cannot claim exclusive copyright rights in the technique of etching a

two-dimensional design on one or two sides of clear architectural glass, notwithstanding that


10

Plaintiff has chosen to apply the “Sateen” design to clear architectural glass by means of etching.

As Plaintiff has no intellectual property right to the medium (clear architectural glass) or the

method of application of the design (etching, on one side or two), Plaintiff greatly overreaches

insofar as its Complaint suggests that the visual appearance conferred on McGrory’s MII-247

product as etched, clear architectural glass is a point of similarity relevant to copyright

infringement. See Designer’s View, Inc. v. Publix Super Markets, Inc., 764 F. Supp. 1473, 1479

(S.D. Fla. 1991) (medium of artwork not protected by copyright because affording such

protection “would impermissibly narrow the possibilities available to other . . . designers.”).

The medium and method of application, and the appearance they naturally confer, are not

protectable by copyright, thus the similarity conferred by these unprotectable elements must be

disregarded in a substantial similarity analysis. Wildlife Express, 18 F.3d at 511-12.

Finally, given that designs that serve a utilitarian purpose are not copyrightable,

17 U.S.C. § 101 (definition of “pictorial, graphic or sculptural work”), the Court must consider

any useful qualities of the “Sateen” design in determining the extent of the copyright. Plaintiff

admits that its etched designs such as “Sateen” function for light diffusion and privacy screening.

Exh. 10 (“Our glass designs add beauty, light, and levels of privacy to your space”); Exh. 11

(“We decorate glass to alter the way it transmits light in the built environment. . .”). If the

“Sateen” design were removed from Plaintiff’s architectural glass panels, the product would no

longer diffuse light or provide privacy. Thus, the “Sateen” design is a utilitarian feature of

architectural glass having dubious copyrightability.5 At best, the “Sateen” design is entitled to

very limited protection. See Stanislawski v. Jordan, 337 F. Supp. 2d 1103, 1113 (E.D. Wis.

2004) (“While the artistic element [of the engraved or carved words, symbols, or shapes] is

5 For purposes of this motion only, McGrory does not dispute that Skyline possesses a

valid copyright in the “Sateen” design, but does contest such copyright’s scope.


11

separable from the useful article [i.e., a photograph frame], that element, once removed from the

frame, would receive little protection”). A design that consists of a repeating pattern of lines of

varying thicknesses and distances from each other adds such limited creativity to functional

etched architectural glass that the expression can be protected only against virtually identical

copying. See Atari, 672 F.2d at 616-17 (when expression adds little new or additional over an

idea, it falls towards one end of the spectrum of copyright protection, and can be protected only

against virtually identical copying). As discussed below, the significant differences between the

respective “Sateen” and MII-247 designs belie Plaintiff’s threadbare claim that the designs are

substantially similar.

2. The Design Applied to MII-247 Products Is Not Substantially Similar to the Protectable Elements of “Sateen”

After all unprotectable features of “Sateen” are disregarded, a reasonable ordinary

observer’s visual comparison of the two designs at issue confirms that the design applied to MII-

247 is not substantially similar to “Sateen,” much less a literal reproduction, as required by

Plaintiff’s limited copyright.6 Compare Exh. 7 (a color copy of a photograph of “Sateen”) with

Exh. 5 (a color copy of a photograph of “Rain” (the MII-247 design etched on one side of glass))

and Exh. 6 (a color copy of a photograph of “BiRain” (the MII-247 design etched on two sides of

glass)). When the “Sateen” and MII-247 (OmniDécor “BiRain”) designs are compared, the

several differences between the works are readily apparent.7 See Exh. 4 (reproduced below).

6 McGrory asks this Court to compare the designs in Sateen and MII-247 pursuant to

Federal Rule of Civil Procedure 10(c) to determine that the works are not substantially similar. See Peters, 692 F.3d at 633. Because the Complaint references the Plaintiff’s website, see Exh. 1 at ¶ 32, and the parties’ products, id. at ¶¶ 16-22, 27-28, 45-47, and these items are central to this lawsuit, it is appropriate under Rule 10(c) and Seventh Circuit case law for the Court to consider McGrory’s attachments to its Answer. See Geinosky v. City of Chicago, 675 F.3d 743, 745 n.1 (7th Cir. 2012); Wigod v. Wells Fargo Bank, N.A., 673 F.3d 547, 556 (7th Cir. 2012); Fed. R. Civ. P. 10(c).

7 Due to the inherent difficulty of photographing etched glass, the visual differences


12

Exhibit 8: A photograph showing the Rain, MII-247 (BiRain), and Sateen designs.

The lines in McGrory’s design are parallel, creating the appearance of a bar code, and

thus do not appear “woven.” Specifically, the lines in McGrory’s design do not touch or merge

with one another, as do some lines in “Sateen.” The lines in McGrory’s design have different

thicknesses and spacing than do the lines in “Sateen.” Thus, McGrory’s design does not

appropriate any alleged “artistic judgment” that went into Plaintiff’s pattern of “lines of varying

thickness and distances from each other” in “Sateen.” See Exh. 1 at ¶ 46. Beyond the specific

spacing, thickness and weave-like arrangement of the “Sateen” design, there is no other

copyrightable element to “Sateen.”

A graphical illustration of “Sateen” and MII-247 (“BiRain”) designs showing the actual

etched designs in color, and in juxtaposition, confirms the differences in the patterns. See Exh. 9

(reproduced below).

between “Sateen” and “MII-247” are even more apparent when larger physical samples of the products are compared. McGrory can provide the samples shown in the photographs attached to its Answer and Affirmative Defenses should the Court wish to compare the “Sateen” and MII-247 samples.


13

Exhibit 9: A graphical depiction of Sateen and BiRain.


14

A chart summarizing the differences between the parties’ respective designs is provided

below:

In summary, given these obvious visual differences, and given the limited scope of the

“Sateen” copyright and disregarding the non-protectable elements of Plaintiff’s “Sateen”

product, there can be no reasonable dispute that the design applied to McGrory’s MII-247 is

neither a literal reproduction nor substantially similar to “Sateen” as a matter of law. See, e.g.,

Peters, 776 F. Supp. 2d at 751-52; Hobbs, 2012 WL 5342321, at *7 (Exh. 14); O’Leary,

2008 WL 3889867, at *2-3 (Exh. 15). No reasonable jury could find it so.

V. CONCLUSION

For the foregoing reasons, McGrory requests that the Court enter judgment on the

pleadings in its favor on Plaintiff’s complaint for copyright infringement and award McGrory

attorneys’ fees and costs, pursuant to 17 U.S.C. § 505. Furthermore, because amendment of

Plaintiff’s complaint would be futile, McGrory requests dismissal of the complaint with

prejudice.

Sateen MII-247 (BiRain)

Branching, wavy lines Straight, parallel lines

Lines that touch and intersect randomly

Lines do not touch or intersect

Lines are more regularly spaced and closer together

Some lines are closely spaced; others are spaced further apart

Organic, woven appearance “Bar code” appearance


15

Dated: February 6, 2013 Respectfully submitted,

/s/ Karol A. Kepchar Karol A. Kepchar (pro hac vice) [email protected] Emily C. Johnson (Bar #6289843) [email protected] Laura Geyer (pro hac vice) [email protected] AKIN GUMP STRAUSS HAUER & FELD LLP 1333 New Hampshire Avenue, N.W. Washington, DC 20036 Phone: (202) 887-4000 Steven D. Maslowski (pro hac vice) [email protected] AKIN GUMP STRAUSS HAUER & FELD LLP Two Commerce Square 2001 Market Street, Suite 4100 Philadelphia, PA 19103 Phone: (215) 965-1200 Gregory V. Ginex (Bar #6282955) [email protected] Daniel James VeNard (Bar #6307236) [email protected] BOLLINGER CONNOLLY KRAUSE LLC 500 W. Madison Street, Suite 2430 Chicago, Illinois 60661 Phone: (312) 253-6200 Attorneys for Defendant McGrory Glass, Inc.


16

CERTIFICATE OF SERVICE

I, Gregory V. Ginex, hereby certify that I electronically filed the foregoing McGRORY

GLASS, INC.’S MOTION FOR JUDGMENT ON THE PLEADINGS UNDER FED. R. CIV. P.

12(C) AND SUPPORTING MEMORANDUM OF POINTS AND AUTHORITIES with the

Clerk of the Court for the Northern District of Illinois using the ECF System which will send

notification to the registered participants of the ECF System as listed on the Court’s Notice of

Electronic Filing this 6th day of February, 2013.

/s/ Gregory V. Ginex Gregory V. Ginex


1

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION


Plaintiff,

v.

McGRORY GLASS, INC., Defendant.

) ) ) ) ) ) ) ) )

Case No. 12-cv-10198 Honorable Edmond E. Chang

EXHIBITS IN SUPPORT OF McGRORY GLASS, INC.’S MOTION

FOR JUDGMENT ON THE PLEADINGS UNDER FED. R. CIV. P. 12(C)

Exhibit No.

Docket No.

Description

1 1 Skyline Design, Inc.’s Complaint 2 1-1 Complaint Exhibit A, U.S. Copyright Registration No. VA-1-364-683 3 23 McGrory Glass Inc.’s Amended Answer and Affirmative Defenses 4 23-1 Amended Declaration of Emily C. Johnson 5 23-1 Amended Answer Exhibit 1, color copy of a photograph of “Rain” 6 23-1 Amended Answer Exhibit 2, color copy of a photograph of “BiRain” 7 23-1 Amended Answer Exhibit 3, color copy of a photograph of “Sateen” 8 23-1 Amended Answer Exhibit 4, color copy of a photograph “Rain,” MII-247

(“BiRain”) and “Sateen” 9 23-1 Amended Answer Exhibit 5, graphical depiction of Skyline’s “Sateen” and

McGrory’s MII-247 “BiRain” 10 23-1 Amended Answer Exhibit 6, http://www.skydesign.com/products/glass 11 23-1 Amended Answer Exhibit 7,

http://www.skydesign.com/sites/default/files/AboutGlass_TechnicalSpecifications.pdf

12 23-1 Amended Answer Exhibit 8, http://www.skydesign.com/products/glass/weaves-textures

13 N/A Arethas v. S/TEC Group, Inc., No. 04-cv-6743, 2005 WL 991782 (N.D. Ill. Apr. 14, 2005)

14 N/A Hobbs v. John et al., No. 12-cv-3117, 2012 WL 5342321 (N.D. Ill. Oct. 29, 2012)

15 N/A O’Leary v. Books, No. 08-cv-0008, 2008 WL 3889867 (N.D. Ill. Aug. 18, 2008)

16 N/A Daley v. Granada U.S. Productions, No. 02-2629, 2003 WL 21294986 (E.D. Pa. Jan. 29, 2003)

Case: 1:12-cv-10198 Document #: 25-1 Filed: 02/06/13 Page 1 of 2 PageID #:161

2

17 N/A S.T.R. Indus., Inc. v. Palmer Indus., Inc., No. 96-cv-4251, 1999 WL 258455 (N.D. Ill. Apr. 9, 1999)

18 N/A Merriam-Webster Dictionary, Definition of “Sateen,” http://www.merriam-webster.com/dictionary/sateen

19 N/A Merriam-Webster Dictionary, Definition of “Satin Weave,” http://www.merriam-webster.com/dictionary/satin%20weave


EXHIBIT 1 (Dkt. No. 1 – Skyline Design, Inc.’s Complaint)


1451434

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

__________________________________________ SKYLINE DESIGN, INC., ) ) Plaintiff, ) Case No. -vs- ) ) ) MCGRORY GLASS, INC., ) JURY TRIAL DEMANDED ) Defendant. )

COMPLAINT

Plaintiff SKYLINE DESIGN, INC. (“SKYLINE”), by and through its undersigned

attorneys, alleges:

NATURE OF THE ACTION

1. Defendant MCGRORY GLASS, INC. (“MCGRORY”) has infringed and is

continuing to infringe SKYLINE’s copyright with knowledge that the architectural glass bearing

decorative etchings that they are importing, distributing, offering for sale, and selling infringe

SKYLINE’s copyright in violation of 17 U.S.C. § 501.

2. This suit seeks to redress and enjoin the willful, infringing activities of

MCGRORY.

THE PARTIES

3. SKYLINE is a corporation organized under the laws of the State of Illinois having

its principal place of business at 1240 North Homan Avenue, Chicago, Illinois 60651.

4. SKYLINE designs, manufactures, and sells different types of glass, including

architectural glass that bears any of various original and aesthetic etched designs created by

SKYLINE.

Case: 1:12-cv-10198 Document #: 1 Filed: 12/20/12 Page 1 of 10 PageID #:1Case: 1:12-cv-10198 Document #: 25-2 Filed: 02/06/13 Page 2 of 11 PageID #:164

2 1451434

5. SKYLINE expends considerable resources to develop and create its attractive and

distinctive designs, for which it is known internationally.

6. SKYLINE also expends considerable resources protecting the intellectual

property rights it has in its designs, such as by routinely registering the non-functional and

artistic elements of its decorative glass designs with the United States Copyright Office.

7. Upon investigation and information, McGRORY is a corporation organized and

existing under the laws of the State of New Jersey, having a principal place of business at

1400 Grandview Avenue, Paulsboro, New Jersey 08066.

8. McGRORY is also in the business of selling architectural glass.

9. McGRORY is doing business in this State and District.

JURISDICTION AND VENUE

10. This is an action for copyright infringement arising under the copyright laws of

the United States as set forth in Title 17 of the United States Code Section 501, et seq.

11. This Court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).

12. Venue is proper in the Northern District of Illinois under 28 U.S.C. §§ 1391(b),

(c), and 1400(a).

13. This Court has personal jurisdiction over defendant McGRORY consistent with

the principles underlying the U.S. Constitution.

14. Upon investigation and information, McGRORY is doing business in this State

and District, such as continuously and persistently conducting marketing and sales activities

herein, including such activities conducted by its sales representatives who are specifically

responsible for and regularly perform such activities in this State and District on behalf, and at

the specific direction, of McGRORY.


3 1451434

15. Upon information and belief, McGRORY markets or has marketed, offers for sale

or has offered for sale, or sells or has sold products in this State and District that infringe on

SKYLINE’S copyrights.

BACKGROUND

SKYLINE’s Copyright

16. In 2003, SKYLINE created an original decorative etching design for architectural

glass, which it designated “the Sateen.”

17. On May 9, 2006, U.S. Copyright Registration No. VA 1-364-683 (“SKYLINE’s

Copyright”) registered to SKYLINE for the Sateen. A true and correct copy of the valid

Certificate of Registration of SKYLINE’s Copyright is attached hereto and incorporated herein

as Exhibit A.

18. A deposit copy of the Sateen was filed with the U. S. Copyright Office and is

included in Exhibit A.

19. Several different magnifications of the Sateen were included in the deposit copy

filed with the U.S. Copyright Office. See Exhibit A.

20. The patterned, ornamental lines of varying thicknesses and distances from each

other constitute original aspects of the work protected by SKYLINE’s Copyright and were

selected, arranged, and created entirely on the basis of artistic judgment and to serve purely

aesthetic purposes.

21. SKYLINE is the sole and exclusive owner of all right, title, and interest in and to

the SKYLINE Copyright and the work protected thereby.

22. SKYLINE sells glass incorporating the decorative design protected by

SKYLINE’s Copyright and under the designation Sateen.


4 1451434

MCGRORY’s Infringing Activities

23. Upon investigation and information, McGRORY imports decorative etched

architectural glass that incorporates unauthorized copies of SKYLINE’s Copyright.


architectural glass from and/or that is made by OmniDecor S.p.A. (“OmniDecor”), a glass

company located in Erba, Italy.

25. Upon investigation and information, etched architectural glass imported by

McGRORY from and/or that is made by OmniDecor incorporates unauthorized copies of

SKYLINE’s Copyright.

26. Upon information and belief, within this State and District, McGRORY has

marketed, offered for sale, and/or sold, and continues to market, offer for sale, and/or sell,

decorative etched architectural glass that incorporates unauthorized copies of SKYLINE’s

Copyright.

27. An example of decorative etched architectural glass that incorporates

unauthorized copies of SKYLINE’s Copyright and is imported and/or marketed, offered for sale,

and/or sold by McGRORY is designated by McGRORY as the MII-247.

28. A true and accurate copy of a photograph of the MII-247 next to the Sateen is

attached hereto and incorporated herein as Exhibit B.

29. McGRORY is not now nor has it ever been an authorized dealer for, or been

authorized by SKYLINE to import, copy, offer for sale, sell, or distribute, articles with designs

protected by SKYLINE’s Copyright.


5 1451434

30. OmniDecor is not now nor has it ever been an authorized dealer for, or been

authorized by SKYLINE to copy, offer for sale, sell, or distribute, articles with designs protected

by SKYLINE’s Copyright or to import them to the United States.

31. SKYLINE’s Copyright is well-known to customers and other manufacturers and

distributers of decorative etched architectural glass, nationally and internationally, including, on

investigation and information, McGRORY and OmniDecor.

32. Since 2003, SKYLINE has widely disseminated and publicized the Sateen,

including via: interstate and international sales of the Sateen; interstate and international

advertisement of the Sateen on its web site, in trade publications, and in print advertisements;

displaying samples of the Sateen at trade shows; placement of Sateen samples in publicly-

accessible architecture and design libraries that can be and are consulted by other manufacturers

and distributors of decorative etched architectural glass; distributing samples of the Sateen to

architecture and design firms, general contractors, and glass glazing subcontractors; and

interactions with and exposing samples of the Sateen to manufacturers and distributors of

decorative etched architectural glass such as during competitive bidding on contracts.

33. SKYLINE has placed a notice of copyright on pictorial images of etched

architectural glass bearing the Sateen that it has published.

34. Upon information and belief, McGRORY has known of and had access to the

Sateen at least in part as a result of SKYLINE’s widespread dissemination and publication

thereof.

35. Upon information and belief, employees and/or other agents of McGRORY, on

behalf of McGRORY, have attended trade shows at which SKYLINE has displayed samples of

the Sateen.


6 1451434


behalf of McGRORY, have visited publicly-accessible architecture and design libraries in which

SKYLINE had placed and maintained samples of the Sateen.

37. Upon information and belief, OmniDecor has known of and had access to the


thereof.

38. Upon information and belief, employees and/or other agents of OmniDecor, on

behalf of OmniDecor, have attended trade shows at which SKYLINE has displayed samples of

the Sateen.


behalf of OmniDecor, have visited publicly-accessible architecture and design libraries in which


40. General public access to the Sateen also results from the incorporation of

decorative etched architectural glass bearing the Sateen in buildings and other places that are

viewable by the public.

41. Employees of OmniDecor have visited SKYLINE’s headquarters in the past and

thereby had access to the Sateen.

42. In April 2007, upon learning that McGRORY may have been infringing on its

copyright, SKYLINE sent a letter to McGRORY informing it of the existence of the SKYLINE

Copyright and requesting that McGRORY cease and desist from any infringing activity, and

enclosed a copy of the SKYLINE’s Copyright with the letter.

43. In June 2007, McGRORY stated by letter that it did not identify any of its designs

that were substantially similar to the SKYLINE Copyright.


7 1451434

44. In 2012, SKYLINE again learned that McGRORY was continuing to wrongfully

distribute products incorporating unauthorized copies of the SKYLINE Copyright, including by

offering for sale and/or selling the MII-247.

45. The MII-247 is so similar to the Sateen and the work protected by the SKYLINE

Copyright that the design of the MII-247 could not have been created independently of

knowledge of the Sateen.

46. The MII-247 is substantially similar to the ornamental pattern of lines of varying

thicknesses and distances from each other which constitute original aspects of the Sateen and the

work protected by SKYLINE’s Copyright, and which were selected and created entirely on the

basis of artistic judgment and to serve purely aesthetic purposes. See Exhibit B.

47. The substantial similarity of the MII-247 to the Sateen is even more striking when

the image of the MII-247 shown in Exhibit B is reduced by approximately 30% and compared to

the image of the Sateen shown in Exhibit B.

48. SKYLINE previously filed complaints in this Court against two other parties who

are not presently parties to this action alleging that they infringed SKYLINE’s Copyright. Upon

investigation and information, at least one of those parties purchased the infringing etched

architectural glass from OmniDecor. The disputes underlying each of those actions were

amicably settled by the parties thereto and the actions were consequently dismissed on

stipulation.

FIRST CAUSE OF ACTION: INFRINGEMENT OF U.S. COPYRIGHT REGISTRATION VA 1-364-683

49. Plaintiff SKYLINE realleges each and every allegation set forth in paragraphs 1

through 48 above, and incorporates them herein by reference.


8 1451434

50. Defendant McGRORY has infringed the SKYLINE Copyright by, at least,

importing, offering for sale, and/or selling decorative etched architectural glass, in the United

States under the designation MII-247 which incorporates the two-dimensional artwork protected

by the SKYLINE Copyright.

51. Defendant McGRORY will continue such infringement unless enjoined by this

Court.

52. As a result of McGRORY’s acts, SKYLINE has been damaged and will continue

to be damaged irreparably.

53. McGRORY’s infringement of the SKYLINE Copyright has been knowing and

willful.

54. McGRORY’s infringement of the SKYLINE Copyright has damaged SKYLINE

in an amount that is unknown and cannot at the present time be fully ascertained.

DEMAND FOR A JURY TRIAL

SKYLINE hereby demands a jury trial.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff SKYLINE, respectfully prays this Honorable Court for an entry

of judgment ordering:

(A) A preliminary and permanent injunction against Defendant MCGRORY,

parent companies, subsidiaries, related companies, and all persons acting in

concert or participation with them, or persons acting or purporting to act on

their behalf, including, but not limited to their officers, directors, partners,

owners, agents, representatives, employees, attorneys, successors, and assigns,

and any and all persons acting in concert or privity with them, from infringing

SKYLINE’s copyright as provided in 17 U.S.C. § 502;


9 1451434

(B) MCGRORY, its agents, employees, successors and assigns, be ordered to

deliver under oath, for impoundment during the pendency of this action, all

articles alleged to infringe SKYLINE’s copyrighted architectural glass etching

design called the Sateen;

(C) MCGRORY, its agents, employees, successors and assigns to deliver under

oath for destruction all infringing blueprints, photocopies, plans and other

means for making such infringing copies;

(D) A finding that MCGRORY has infringed SKYLINE’s Copyright;

(E) An award to SKYLINE of statutory damages pursuant to 17 U.S.C. § 504(c)

for each and every act of infringement of SKYLINE’s Copyright in an amount

to be set by the Court, including but not limited to, attorneys’ fees, and a

finding that the infringement by Defendant was committed willfully and

awarding SKYLINE a sum of $150,000 for each willful infringement, as

provided under 17 U.S.C. §504(c)(2), or in the alternative, an accounting of

damages resulting from the infringement of the SKYLINE’s Copyright by

MCGRORY as provided for in 17 U.S.C. §504(b), among other relief;

(F) An award to SKYLINE of interest on all damages incurred, including any

applicable prejudgment and/or post-judgment interest;

(G) Such other and further relief against Defendant McGRORY in favor of

SKYLINE as this Court deems fair and just.


10 1451434

Date: December 20, 2012 Of Counsel: Susan E. Farley, Esq. (pro hac vice to come) HESLIN ROTHENBERG FARLEY & MESITI P.C. 5 Columbia Circle Albany, New York 12203 Telephone: (518) 452-5600 Facsimile: (518) 452-5579 E-mail: [email protected]

Respectfully submitted, SKYLINE DESIGN, INC. By: /s/ George R. Dougherty One of Its Attorneys George R. Dougherty (#6196845) GRIPPO & ELDEN LLC 111 South Wacker Drive Chicago, IL 60606 Telephone: (312) 704-7700 Facsimile: (312) 558-1195 Email: [email protected]


EXHIBIT 2 (Dkt. No. 1-1 – Complaint Exhibit A)


Case: 1:12-cv-10198 Document #: 1-1 Filed: 12/20/12 Page 2 of 13 PageID #:12Case: 1:12-cv-10198 Document #: 25-3 Filed: 02/06/13 Page 2 of 13 PageID #:175

Certificate of RegistratiG

1

This Certificate issued under the seal of the Copyright Office in accordance with title 17, United States Code, attests that registration has been made for the work identified below. The information on this certificate has been made a part ~lthe Copyright Office records.

~~hr::~" of Am"'"

Fo:rmVA Jlar II Wari: oflht Vl&uai Alii UNITED STATES CairYIIJGHT OFFICE

VA 1-364-683

I IV~ I:~ ftiC\liiOII'INIUI1I

09

PuiJIII:afloo liS Ill CoatrfillltiOO If this wmll Will published 1111 B CIII1IJibullom 10 a perbiiaJ, aerial, 01' collec:Uom, giYillnf~ obout the callecdYII worlllo which lila COIIIributloll appearecL Tltla Ill Colledlw Wort V •

Weaves + Textures If publlahed In a periodical or asrlal s~- v.a- v

Contract~ l'<llldarV

Volome 45, Issue S lmiaDIItaV

May2003

NAME OF AlffliOJI 'V' DATES OF BIRTH AND DEATH

-.....

· · Year Born "' . Year Died "'

a~--------mcy-~-·-~ __ ·P_. -·~~;~~~~----------~-----------------Wu lids eo~~tribullell to tile 9ftllt 11 A=:'a Natimai!ty or DomlcBII Wa 'Ibis Author's ~ lo the Wori!.

NOTE. "worllma4er:Jfw~ =-. {Ci= _ _;U:;.;S:;;;A.;;... ______ ..,:_ __ ~? OYIII I!INo ~:.en:= 011 vn l'lleudonymous? DYu 1!1 No '!VIII,'-IIIIIIIillll

Unlllllr lhlllaw, D No • . Domiciled In 1r1!!1Juct111n1 lhllll ·aulh«" of II"IIIDI'IIlllllllllll for illn"lll ganarallf Ills employer, nat lllD amployee (IIIII lnlllnlc• tiona). l'cr mnr pari cflllla WOii 111111111111

Nlllhn or Autllanldp Check IIJIIII'OPriiiiD boa(ea}.See lll8tn.iellon11 * :lii!I=3-Dimensii1Dllll~~~:~~lplllftl D Map 1!1 2-Dimerui0011llll1WOI'Ic D Pho!ogmph

D Rl!productioo or work of art D I11111dry dai gn

D Tec:lm!ad drawing

DText .y8An:hlt.edllraJ work

"m8ddq fer hire" cheek "'lao• In bNIIUDe or AU!hor 't" lhllap-p_...., give lhllemployer tor olher penon fer wllom lhe war11 wu praparlld) 1111 "Aulhllr' Ill lhlll part, and IDBVIIIM ap~~.ee lor dlllu Ill birth and dllllllh bW!b.

W1111111b ~to !lie 9ftllt II "wort~ made for bln"7

DYes

DNo

Natwe of Aulfunldp Ooeck~ bua(ea).S.In~lll 0 3-Dimensional scUlpture D Map D 2-Dimensional enwm 0 Pilctosn~Ph

D Technical dmVIfins DText

D lblproductloo of work of art D Jewelry design D An:llitec:tuml wur1t

. ··COPYRIGHT CLAIMANT(8) Nemelllllllllldn:aa mu11 be Jlven -.I!' lho clalmmt Ia die aamoaa doe oulbar sJ-. iD BJioce 2. V

Skyline Design, Inc. . - . 1240 North Homan Chicago, IL 60651

'rnmlirer.lf lila claiJIIBII~B) llllllled beft!ID IIJIICC 4 ia (on) different from lila Alllhoc(a) llMIIlllln 11pac:11 2, slve 111 brief ata~enent·of hiiW lila claimout(a) oloalned Olllllellhlp of lila copyrisht. W

2003


*Amended by C.O. per authority of Steve Maynard via e-mail dated 7/17/06. · .

EXAMINED BY

CHECKED BY

DO NOT WRITE ABOV.E THIS UN E. IF YOU NEED MO!i'IE SPACE, USE A SEPARATE CONTINUATION SHEET.

P:U:VIOUS REG!STRA1'ION H115 registilltitm rt1r mia wale, ar for lill emtlei wmion of lhiB worlr, alroudy been made In lh<l .~ Oflial7 D Ye;~ Iii! No If~ l!!llllwer iB "Yr:a," <lily i:1 !IIIOih# regislrnlim being llCI!ght? (O.eck appropria!e box.) v

m. D 1'hll is !be me publi:!hed edllkm of a wor1t prev!cra:lty ~eglilered iD ll!lpqbibbed fmm.

II. D 1'hJJ is lbe fimtappl!ca!ion liUbnllled by this lllllht1ras eQpyright claimaut.

c. D This is a thmlged vem.m of lhe WDil<. u shown by &p~K>e 6 on dlls "''Piblkm. II your_._. is uy.., D give: .Pirevl!:ta~ Nlllllller., Year rl R~lloo.., .

DERIVA liVE WORK OR COMPiLATION Complete bolh space 6a .00 6b fw e daivadve wmk; ~ cmly 6b form r:cmpihulon. 1!. ~g Molcria.l Jde!!dly llily pn:crl1dug work or wcri:D llmllbls worlt b based <m or~ V .

FOR COPYRIGKT

OFFICE USE

ONLY

b

-------------------------------------------------------a Steven A. Maynard Conduit Technology Partners, LLC

300 West Grand#412 Chicago, IL 60610

Amaced&and~~nwnber ( 312} 203-2898. Fallll!lll:Ml8 ( 312 )661-0197

Email [email protected]

·check only one II> Doth"!" copyright clalman! · Downer af exclusive Iight(s

·b

CERTIFICATION'" . I, the underB!gned, hereby certify !hat I IIDI the {D author

!fauthorlmhgentof aufbor, Skyline Design. Inc. Narml ol OIJhlf or o!hill" O!lllYII9Ill dMnanl, llf lllllllOr oll!lduolvm rlj;!ol(e) A

of the work identified in thJs appl!calion and !hat £he stalements made by me In this app!ication are correct to the best of my lmowledge.

X

Olrtlfleem will be mailed in window emt$1ope to thle address:

wl!h the

a date of publica lion In space 3, do not sign and submit it before ll1!!l dali!. ·

. Dale March 30, 2006


Under the law, the "author" of a "work made for hire" is generally the employer, not the employee (soe Instructions). For any part of this work that was "made for hire" check "Yes" In the space provided, give the employer (or other parson for whom the work was prepared) as "Author" of thai part, ami leave the space for dates ot birth and doath blank.

See instructions before completing this space.

Form VA For a Work of the Visunl Arts UNITED STATES COPYRIGHT OFFICE

REGISTRATION NUMBER

VA VAU

EFFECTIVE DATE OF REGISTRATION

DO NOT WRITE ABOVE THIS UNE. IF YOU NEED MORE USE A SEPARATE CONTINUATION SHEET.

Tille or This Work V NATURE OF THIS WORK V See instructions

Sateen Decorative Architectural Glass Etching

Previous or Allcrnativc Titles 'if

Publica lion as a Contribution If this work was published us a contribution to a periodical, serial, or colleclion, give information about the collective work in which the contriblllion appeared. Title of Colleclivc Work V

Weaves +Textures

Number 'I? If published in n periodical or serial give: Volume 'if

Contract Volume 45, Issue 5 16

Skyline Design, Inc.

Author's Nalionaliiy or IJomicilc Name ol Country

Was This Author's Contribution to tile Work Was Ibis contribution lo tile work n "'fork made for hire''?

I"J Yes

D No

oR{Cilizen or _U=S::.A.:._ _________ _ Domiciled in

D Y4,

5 "" No II tho answer to either

Anonymous? "-' w of theso qoostions is

Pseudonymous1 D Yes E1 No ;;;'s':"~:;:,detailed

Nnlure of Autliorsb.ip Check appropriate box(es).See instructions 0 3-Dimensional sculpture D Map

El 2-Dimensional artwork D Photograph

D Reproduction of work of art D Jewelry design

Name of Author V

D Technical drawing

D Text

1!1 Architectural work

Dates or l!lirth nod Death Year Bam V Year Died V

Wa.• Ibis ~'Onlribulioil lo tile work a "work made ror hire"'?

Author's Nationality or IJomicilc Name ol CotmliJI

Was This Author's Contribution to the Work

DYes Citizen or DNo Domiciled in

Nature of Authorship Check appropriate box(es).See instructions D 3-Dimensional sculpture D Map

D 2-Dimensional artwork D Photograph

D Reproduction of work of art D Jewelry design

Anonymous?

Pseudonymous?

D Technical drawing

DText

D Architeclural work

Year in Whim Creation of This Work W!IS Daie an<il N2tion of Fi,..lll"ublicalieu oi'Tiiis ll"arllw!ar Work

DYes

DYes

Cmnpleled This lnlom>alioo

2003 Year :!:~~:~on Cl!mi>!alrl illis fniOOlllllllon miL if illills wmi<

Month May Day ----

lias boon published. United States of America

COPYRIGHT CLIHMANT(S) Name and address must be given even if !he claimant is the same as the author given in space 2. '?

DNo If the answer to either ol thesa quastians is

D No "Yes," see delailed instructions.

Year 2003 Nation

Skyline Design, Inc. 1240 North Homan ffi~ ONE DEPOSIT RECEIVED

Chicago, IL 60651 "'o ---------'----------------------------------1::~ TWO DEPOSITS RECEIVED w

(.) TrailSfer If !he claimant(s) named here in Sp;lce4 is (are) different from !he aull"n(s) named in Sp;lce 2, give a brief statement or how the claimant(s) obtnined ownership of !he copyright. V

MORE ON BACK .,_ • Complete all applicable spaces (numbers 5-9) on tha reverse side of this page. • Sea detailed lnslruclions. • Sign the form at line B.

~ =F~U~N=o=s~R~E~C~E=IV~E~D~--------co

DO NOT WRITE HERE

Page 1 of ___ pages


DO NOT WRITE ABOVE THIS LINE. IF YOU NEED MORE

,~~-.--~--·---~-~--~--.-----. •• '.Ao•~:,:·--.~ .. ~.·~,

EXAMINED BY

CHECKED BY

D CORRESPONDENCE

Yes

USE A SEPARATE CONTINUATION SHEET.

Has registralion for this wotk, m: for an earlier '-ersion of this wotk, already been made in the Copyright Office?

DYes Gl No If your allsweris "Yes." why is onolher rcgistr.>rionbeingsougbt7 (Cbedcappropriate box.) W

a. D This is dtc rust published edition of a work previously registered in unpublished form.

h. D This is !he rust application submiued by !his author as copyright claimanL

c. D This is a changed version of dte work, as shown by space 6 on this applicatioa.

If your answer is uYcs,n give: Previous Registration Number V Y car o£ Registration '<'

Complete bolh space 6a and 6b for a derivative work; complete ooly 6h for a compilation. a. Preexisting 1\-f:::alerial Identify any preexisting work or works that tills work is based on or incorporates* 'V

b. Malerinl Added lo This Work Give a brief, general slntement of the material that has been added to !his work and in which copyright is

DEPOSIT ACCOUNT Ifthe registration fee is 10 be charged to a IJ<.'P"5it Account estnblismd in tho Copyrigb< Office, give name aod number of Account. Name 'f A<eoona Number '<'

--------------------- _____________________ ,,, .. '. CORRESPONDENCE Give name aod address to which correspondence about this application should be sent. Nnmc/Address/Apt/City/Sinte/ZIP 'f

Steven A. Maynard Conduit Technology Partners, LLC

Area coda and daytime telephone number ( 312) 203- 2898

Email [email protected]

CERTIFICATION* I. the undersigned, hereby certify that I am the

300 West Grand# 412 Chicago, IL 60610

Fax number

-L--k 1 D olher copyright claimant

( 312) 661-0197

u"'" on y one II> Downer of exclusive righl<fh • .

FORM VA

FOR COPYRIGHT

OFFICE USE

ONLY

instructions before completing this space.

{

Dauthor

· ~authorized agent of au or, Skylme Design, Inc. Name of author or other copyright daimanl, or owner of axdusive righl(s} A

of the work identified in lhis application and that lhe statements made by me in this application are correct to lhe best of my knowledge.

Typed

X

Certificate will be mailed in window envelope to this address:

Namev Steven A. Maynaro

Nt!mbariStreet/AIJt v

300 West Grand# 412

City/Sia!e/ZIP 'fl

Chicago, IL 60610

n gives a date of publication in space 3, do not sign and submit it before that date.

Date March 30, 2006

Rev: Augusl2003--30,000 Web Rev: June 2002 0 Prtnted on recycled paper U.S. Government Printing Office: 2003-496-605/60,029

Case: 1:12-cv-10198 Document #: 1-1 Filed: 12/20/12 Page 6 of 13 PageID #:16Case: 1:12-cv-10198 Document #: 25-3 Filed: 02/06/13 Page 6 of 13 PageID #:179 4/13/06 II :41 Skyline Design

E\RGHITEGTURI\l GlASS ! ART SERVICES 1 CODIVUIMICAST 1 ABOUT SKYLINE 1 BECOME A REP 1 CONTACT US

Portfolio G Collection FOHlglas laurinda Spear ARGH!glas Classic FOSilglas Vitracolor Weaves +Textures

http://skydesign.com/basel Ogreybar.html Pagel of

Case: 1:12-cv-10198 Document #: 1-1 Filed: 12/20/12 Page 7 of 13 PageID #:17Case: 1:12-cv-10198 Document #: 25-3 Filed: 02/06/13 Page 7 of 13 PageID #:180>kyline Design 4/13/06 12:30

lH OtSIGiu ARCHITECTURAl GLASS 1 ART SERVICES 1 CODAIU.IMICAST 1 ABOUT SKYliNE 1 BECOME A REP CONTACT US 1 ~'88 278 46E.o

Portfolio G Collection FOTOglas laurinda Spear ARCHiglas Classic FOSilgl:as Vitracolor Weaves +Textures

http:l/skydesign.com/haselOgreybar.htJnl Page I of

Case: 1:12-cv-10198 Document #: 1-1 Filed: 12/20/12 Page 8 of 13 PageID #:18Case: 1:12-cv-10198 Document #: 25-3 Filed: 02/06/13 Page 8 of 13 PageID #:181Skyline Design

~ [1 [f-1 ~ jll LUL.JIJtt

1888 278 1-fE-E.O

4/13/06 11:4

ARCHiTECTURAL GLASS 1 ART SERVICES 1 CODA!li.IMICAST 1 ABOUT SKYLINE 1 BECOME A REP 1 CONTACT US

Portfolio G Collection FOTOgias Laurinda Spear ARGHiglas Classic FOSilgias Vitracolor Weaves +Textures

ltlp://skydesign.comfbase I Ogreybar.htm! Page I of!

Case: 1:12-cv-10198 Document #: 1-1 Filed: 12/20/12 Page 9 of 13 PageID #:19Case: 1:12-cv-10198 Document #: 25-3 Filed: 02/06/13 Page 9 of 13 PageID #:182 4/13/06 ll :s: Skyline Design

ARCHITECTURAL GLASS 1 ART SERVICES 1 CODAILIUMICAST ! ABOUT SKYLINE 1 BECOME A REP 1 CONTACT US

Portfolio G Collection FOH!glas Laurinda SpBar ARGH!glas Classic H!Silglas Vitracolor Weaves +Textures

http://skydesign.com/base 1 Ogreybar.html Page I of.]


f.------ 59.5"----

120"

SKYLINE DESIGN- WEAVES+ TEXTURES- SATEEN


~ 8 N



:mmmmmmmimi:i:!!!!i!!!l!i!ffi~!!!!!!!!!!!!!!!~;!;!iiiii;;;;;;;~;;;;;;m;g;;iiiiiiiiiiiiiiiiiiiiiiP.i9m~mmm:mmmmmiffliii!i!!!!!!iiii!!il~!'!!;,.;.;;~.;;;;;;;;;;;;;;;;;~;;;;jjjjlilimmmmmmmm:lw.=rn!i!liiirn!""'""""'......;...,"'""'""'m'm'mmmm~~"'"'"';""m:mmm ~'l::i!~J~~~~=m::m:r.~m!r~T~!!!l!!lm;~m!~g~~1~~~~~~~~mm&TGII:~n!r.~~m~~~~~m~~111~~~~~mlw~illliiiliirlimrnHi!H~iffiffiDQililli~~""~~~~uHiGmnmmii~ii.~+:~~~~~:!~!mf!!!i!!!!m!~m:!!!m!!~1:~~ffim~

~

L~~~~~~~~~

EXHIBIT 3 (Dkt. No. 23 – McGrory Glass Inc.’s Amended Answer and Affirmative Defenses)


IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION


Plaintiff,

v.

McGRORY GLASS, INC.,

Defendant.

)

)

)

)

)

)

)

)

)

Case No. 12-cv-10198

Honorable Judge Edmond E. Chang

AMENDED ANSWER AND AFFIRMATIVE DEFENSES

For its amended answer to the Complaint for Copyright Infringement brought by Plaintiff

Skyline Design, Inc. (“Skyline”), Defendant McGrory Glass, Inc. (“McGrory”), by and through

its attorneys, states as follows:

NATURE OF THE ACTION

1. Defendant MCGRORY GLASS, INC. (“MCGRORY”) has infringed and is

continuing to infringe SKYLINE’s copyright with knowledge that the architectural glass bearing

decorative etchings that they are importing, distributing, offering for sale, and selling infringe

SKYLINE’s copyright in violation of 17 U.S.C. § 501.

Answer: McGrory admits only that it purchases, distributes, offers for sale and sells

architectural glass for use as interior and exterior walls in buildings, but expressly denies that it

has violated the alleged copyright of Skyline.

2. This suit seeks to redress and enjoin the willful, infringing activities of

MCGRORY.


2

Answer: McGrory admits only that Skyline has filed this Complaint alleging

copyright infringement against McGrory seeking injunctive and monetary relief. McGrory

otherwise denies the allegations in Paragraph 2 of the Complaint.

THE PARTIES

3. SKYLINE is a corporation organized under the laws of the State of Illinois having

its principal place of business at 1240 North Homan Avenue, Chicago, Illinois 60651.

Answer: McGrory is without knowledge or information sufficient to form a belief

as to the truth of the allegations in Paragraph 3 of the Complaint, and on that basis denies the

allegations therein.

4. SKYLINE designs, manufactures, and sells different types of glass, including

architectural glass that bears any of various original and aesthetic etched designs created by

SKYLINE.




5. SKYLINE expends considerable resources to develop and create its attractive and

distinctive designs, for which it is known internationally.




6. SKYLINE also expends considerable resources protecting the intellectual

property rights it has in its designs, such as by routinely registering the non-functional and

artistic elements of its decorative glass designs with the United States Copyright Office.


3




7. Upon investigation and information, McGRORY is a corporation organized and

existing under the laws of the State of New Jersey, having a principal place of business at

1400 Grandview Avenue, Paulsboro, New Jersey 08066.

Answer: Admitted.

8. McGRORY is also in the business of selling architectural glass.

Answer: Admitted.

9. McGRORY is doing business in this State and District.

Answer: Admitted.

JURISDICTION AND VENUE

10. This is an action for copyright infringement arising under the copyright laws of

the United States as set forth in Title 17 of the United States Code Section 501, et seq.

Answer: McGrory admits only that this action purports to be one for copyright

infringement under the Copyright Act.

11. This Court has jurisdiction under 28 U.S.C. §§ 1331 and 1338(a).

Answer: Admitted.

12. Venue is proper in the Northern District of Illinois under 28 U.S.C. §§ 1391(b),

(c), and 1400(a).

Answer: Admitted.

13. This Court has personal jurisdiction over defendant McGRORY consistent with

the principles underlying the U.S. Constitution.


4

Answer: Admitted.

14. Upon investigation and information, McGRORY is doing business in this State

and District, such as continuously and persistently conducting marketing and sales activities

herein, including such activities conducted by its sales representatives who are specifically

responsible for and regularly perform such activities in this State and District on behalf, and at

the specific direction, of McGRORY.

Answer: McGrory admits only that venue is proper in this District. McGrory

specifically denies that it has violated the alleged copyright of Skyline.

15. Upon information and belief, McGRORY markets or has marketed, offers for sale

or has offered for sale, or sells or has sold products in this State and District that infringe on

SKYLINE’S copyrights.

Answer: McGrory admits only that it markets and sells products in this State and

District. McGrory specifically denies that it has violated the alleged copyright of Skyline.

BACKGROUND

Skyline’s Alleged Copyright

16. In 2003, SKYLINE created an original decorative etching design for architectural

glass, which it designated “the Sateen.”




17. On May 9, 2006, U.S. Copyright Registration No. VA 1-364-683 (“SKYLINE’s

Copyright”) registered to SKYLINE for the Sateen. A true and correct copy of the valid

Certificate of Registration of SKYLINE’s Copyright is attached hereto and incorporated herein


5

as Exhibit A.

Answer: McGrory admits only that a certificate of registration for a two-

dimensional work of visual art entitled “Sateen” issued from the U.S. Copyright Office as

Registration No. VA 1-364-683 dated May 9, 2006, and that a photocopy of such certificate is

attached to the Complaint as part of Exhibit A. McGrory is without knowledge or information

sufficient to form a belief as to the truth of the remaining allegations in Paragraph 17 of the

Complaint, and on that basis denies the same.

18. A deposit copy of the Sateen was filed with the U. S. Copyright Office and is

included in Exhibit A.




19. Several different magnifications of the Sateen were included in the deposit copy

filed with the U.S. Copyright Office. See Exhibit A.




20. The patterned, ornamental lines of varying thicknesses and distances from each

other constitute original aspects of the work protected by SKYLINE’s Copyright and were

selected, arranged, and created entirely on the basis of artistic judgment and to serve purely

aesthetic purposes.

Answer: McGrory expressly denies that the alleged copyrighted design etched on

architectural glass panels serves a purely aesthetic purpose. McGrory is without knowledge or


6

information sufficient to form a belief as to the truth of the remaining allegations in Paragraph 20

of the Complaint, and on that basis denies the allegations.

21. SKYLINE is the sole and exclusive owner of all right, title, and interest in and to

the SKYLINE Copyright and the work protected thereby.




22. SKYLINE sells glass incorporating the decorative design protected by

SKYLINE’s Copyright and under the designation Sateen.




McGrory’s Allegedly Infringing Activities


architectural glass that incorporates unauthorized copies of SKYLINE’s Copyright.

Answer: McGrory admits only that it purchases architectural glass from

OmniDecor S.p.A., which is located in Italy. McGrory expressly denies that any architectural

glass purchased by McGrory from OmniDecor S.p.A. infringes Skyline’s alleged copyright.


architectural glass from and/or that is made by OmniDecor S.p.A. (“OmniDecor”), a glass

company located in Erba, Italy.

Answer: McGrory admits only that it purchases architectural glass from

OmniDécor S.p.A. displaying a pattern of parallel lines under the OmniDecor designations


7

“Rain,” which is etched on one side of the glass panel and “BiRain,” which is etched on both

sides of the glass panel. See Exhibit 1,1 a true and correct color copy of a photograph of “Rain”;

Exhibit 2, a true and correct color copy of a photograph of “BiRain,” which McGrory designates

as “MII-247.” McGrory denies all remaining allegations in Paragraph 24.

25. Upon investigation and information, etched architectural glass imported by

McGRORY from and/or that is made by OmniDecor incorporates unauthorized copies of

SKYLINE’s Copyright.

Answer: McGrory denies all allegations in Paragraph 25.

26. Upon information and belief, within this State and District, McGRORY has

marketed, offered for sale, and/or sold, and continues to market, offer for sale, and/or sell,

decorative etched architectural glass that incorporates unauthorized copies of SKYLINE’s

Copyright.


27. An example of decorative etched architectural glass that incorporates

unauthorized copies of SKYLINE’s Copyright and is imported and/or marketed, offered for sale,

and/or sold by McGRORY is designated by McGRORY as the MII-247.

Answer: McGrory admits only that it markets and sells “BiRain” architectural glass

supplied by OmniDecor S.p.A. under the McGrory designation “MII-247.” See Exhibit 2.

McGrory denies all other allegations in Paragraph 27.

28. A true and accurate copy of a photograph of the MII-247 next to the

Sateen is attached hereto and incorporated herein as Exhibit B.

1 See Declaration of Emily C. Johnson for Exhibits 1–8 to McGrory’s Answer and

Affirmative Defenses filed concurrently herewith.


8

Answer: McGrory admits only that Exhibit B to the Complaint purports to be a

photocopy of a small sample of accused product adjacent to a small sample of architectural glass

etched with the alleged copyrighted design. McGrory is without knowledge or information

sufficient to form a belief as to the truth of the allegations of Paragraph 28 of the Complaint, and

on that basis denies the same.

29. McGRORY is not now nor has it ever been an authorized dealer for, or been

authorized by SKYLINE to import, copy, offer for sale, sell, or distribute, articles with designs

protected by SKYLINE’s Copyright.

Answer: Admitted.

30. OmniDecor is not now nor has it ever been an authorized dealer for, or been

authorized by SKYLINE to copy, offer for sale, sell, or distribute, articles with designs protected

by SKYLINE’s Copyright or to import them to the United States.




31. SKYLINE’s Copyright is well-known to customers and other manufacturers and

distributers of decorative etched architectural glass, nationally and internationally, including, on

investigation and information, McGRORY and OmniDecor.




32. Since 2003, SKYLINE has widely disseminated and publicized the Sateen,

including via: interstate and international sales of the Sateen; interstate and international


9

advertisement of the Sateen on its web site, in trade publications, and in print advertisements;

displaying samples of the Sateen at trade shows; placement of Sateen samples in publicly

accessible architecture and design libraries that can be and are consulted by other manufacturers

and distributors of decorative etched architectural glass; distributing samples of the Sateen to

architecture and design firms, general contractors, and glass glazing subcontractors; and

interactions with and exposing samples of the Sateen to manufacturers and distributors of

decorative etched architectural glass such as during competitive bidding on contracts.




33. SKYLINE has placed a notice of copyright on pictorial images of etched

architectural glass bearing the Sateen that it has published.




34. Upon information and belief, McGRORY has known of and had access to the


thereof.

Answer: McGrory admits only that it received in April, 2007 a letter from Skyline’s

attorneys enclosing a purported photocopy of U.S. Copyright Registration No. VA 1-364-683.

McGrory further admits that, on June 7, 2007, in response to McGrory’s request for a sample of

the alleged copyrighted work, Skyline provided McGrory a sample of “Sateen” architectural

glass etched on both sides. McGrory is without knowledge or information sufficient to form a


10

belief as to the truth of the remaining allegations in Paragraph 34 of the Complaint, and on that

basis denies the allegations.


behalf of McGRORY, have attended trade shows at which SKYLINE has displayed samples of

the Sateen.





behalf of McGRORY, have visited publicly-accessible architecture and design libraries in which





37. Upon information and belief, OmniDecor has known of and had access to the


thereof.





behalf of OmniDecor, have attended trade shows at which SKYLINE has displayed samples of

the Sateen.


11





behalf of OmniDecor, have visited publicly-accessible architecture and design libraries in which



as to the truth of the rest of the allegations in Paragraph 39 of the Complaint, and on that basis

denies the allegations therein.

40. General public access to the Sateen also results from the incorporation of

decorative etched architectural glass bearing the Sateen in buildings and other places that are

viewable by the public.


as to the truth of the rest of the allegations in Paragraph 40 of the Complaint, and on that basis

denies the allegations therein.

41. Employees of OmniDecor have visited SKYLINE’s headquarters in the past and

thereby had access to the Sateen.




42. In April 2007, upon learning that McGRORY may have been infringing on its

copyright, SKYLINE sent a letter to McGRORY informing it of the existence of the SKYLINE

Copyright and requesting that McGRORY cease and desist from any infringing activity, and


12

enclosed a copy of the SKYLINE’s Copyright with the letter.

Answer: McGrory admits only that it received a letter from Skyline’s attorneys in

April 2007 alleging infringement of U.S. Copyright Registration No. VA 1-364-683, enclosing a

purported photocopy of such registration, and demanding McGrory to cease and desist any

infringement thereof. McGrory expressly denies that it has infringed Skyline’s alleged

copyright. McGrory is without knowledge or information sufficient to form a belief as to the

truth of the remaining allegations in Paragraph 42 of the Complaint, and on that basis denies the

allegations.

43. In June 2007, McGRORY stated by letter that it did not identify any of its designs

that were substantially similar to the SKYLINE Copyright.

Answer: McGrory admits only that after receiving a sample of the alleged

copyrighted “Sateen” architectural glass from Skyline’s counsel, McGrory’s counsel informed

Skyline by letter dated June 28, 2007 that McGrory had reviewed its product line and did not

identify any of its products that were substantially similar to the Sateen design, but McGrory’s

counsel invited Skyline’s counsel to provide additional information about Skyline’s basis for its

infringement allegation; however, Skyline took no action until August 28, 2012, when Skyline’s

new counsel sent a second demand letter to McGrory.

44. In 2012, SKYLINE again learned that McGRORY was continuing to wrongfully

distribute products incorporating unauthorized copies of the SKYLINE Copyright, including by

offering for sale and/or selling the MII-247.

Answer: McGrory expressly denies that it has infringed Skyline’s alleged

copyright. McGrory is without knowledge or information sufficient to form a belief as to the


13

truth of the remaining allegations in Paragraph 44 of the Complaint, and on that basis denies the

allegations.

45. The MII-247 is so similar to the Sateen and the work protected by the SKYLINE

Copyright that the design of the MII-247 could not have been created independently of

knowledge of the Sateen.


46. The MII-247 is substantially similar to the ornamental pattern of lines of varying

thicknesses and distances from each other which constitute original aspects of the Sateen and the

work protected by SKYLINE’s Copyright, and which were selected and created entirely on the

basis of artistic judgment and to serve purely aesthetic purposes. See Exhibit B.


47. The substantial similarity of the MII-247 to the Sateen is even more striking when

the image of the MII-247 shown in Exhibit B is reduced by approximately 30% and compared to

the image of the Sateen shown in Exhibit B.


48. SKYLINE previously filed complaints in this Court against two other parties who

are not presently parties to this action alleging that they infringed SKYLINE’s Copyright. Upon

investigation and information, at least one of those parties purchased the infringing etched

architectural glass from OmniDecor. The disputes underlying each of those actions were

amicably settled by the parties thereto and the actions were consequently dismissed on

stipulation.


14



allegations.

FIRST CAUSE OF ACTION:

INFRINGEMENT OF U.S. COPYRIGHT REGISTRATION VA 1-364-683

49. Plaintiff SKYLINE realleges each and every allegation set forth in paragraphs 1

through 48 above, and incorporates them herein by reference.

Answer: McGrory’s answers to the allegations of Paragraphs 1–48 of the

Complaint are restated and fully incorporated herein.

50. Defendant McGRORY has infringed the SKYLINE Copyright by, at least,

importing, offering for sale, and/or selling decorative etched architectural glass, in the United

States under the designation MII-247 which incorporates the two-dimensional artwork protected

by the SKYLINE Copyright.


51. Defendant McGRORY will continue such infringement unless enjoined by this

Court.


52. As a result of McGRORY’s acts, SKYLINE has been damaged and will continue

to be damaged irreparably.


53. McGRORY’s infringement of the SKYLINE Copyright has been knowing and

willful.



15

54. McGRORY’s infringement of the SKYLINE Copyright has damaged SKYLINE

in an amount that is unknown and cannot at the present time be fully ascertained.


AFFIRMATIVE DEFENSES

FIRST AFFIRMATIVE DEFENSE

Skyline has failed to state a claim upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE

Any appropriation of Skyline’s alleged copyrighted design is, at most, de minimis, as the

ordinary observer would not recognize any appropriation due to the lack of substantial similarity

between the protectable elements of the asserted “Sateen” design and the accused product. Compare

Exhibit 1, a true and correct color copy of a photograph of “Rain” etched on one side, and Exhibit 2,

a true and correct color copy of a photograph of “MII-247” etched on two sides, with Exhibit 3, a

true and correct color copy of a photograph of Skyline’s “Sateen” etched on two sides; also compare

Exhibit 4, true and correct color copies of photographs of Skyline’s “Sateen,” “Rain,” and MII-247

“BiRain”; Exhibit 5, a true and correct graphical depiction of Skyline’s “Sateen” and McGrory’s

MII-247 “BiRain.”

THIRD AFFIRMATIVE DEFENSE

McGrory is a bona fide purchaser of the accused product from OmniDecor S.p.A.

If McGrory infringed any copyright right of Skyline, McGrory did so in good faith and with innocent

intent.

FOURTH AFFIRMATIVE DEFENSE

Skyline’s claim is barred because Skyline’s alleged copyright is invalid and/or otherwise

unenforceable. Skyline’s asserted “Sateen” architectural glass design is a functional industrial design


16

upon which the architectural glass relies for light diffusion and privacy screening, and thus is not

subject to copyright protection. See Exhibit 6, a true and correct copy of a webpage printed from

Skyline Design, Inc.’s website, available at http://www.skydesign.com/products/glass

(last visited Feb. 1, 2013); Exhibit 7, a true and correct copy of a webpage

printed from Skyline Design, Inc.’s website, available at http://www.skydesign.com/

sites/default/files/AboutGlass_TechnicalSpecifications.pdf (last visited Jan. 30, 2013).

FIFTH AFFIRMATIVE DEFENSE

Skyline’s asserted copyright relates to “Sateen,” a design from Skyline’s “Weaves &

Textures” design collection inspired by “everyday fabrics used by indigenous peoples from Mexico

and Africa.” Skyline’s copyright claim in “Sateen,” based on “sateen,” a generic fabric design

recognized by Skyline as a “timeless classic,” is barred by the doctrine of merger. See Exhibit 8,

a true and correct copy of a webpage printed from Skyline Design’s website, available at

http://www.skydesign.com/products/glass/weaves-textures (last visited Jan. 30, 2013).

SIXTH AFFIRMATIVE DEFENSE

Skyline claim is barred because Skyline appropriated the design of “Sateen” from “everyday

fabrics used by indigenous peoples from Mexico and Africa,” thus Skyline is not the owner

of any copyright right in the asserted “Sateen” design, and the design is not original to Skyline.

See Exhibit 8.

SEVENTH AFFIRMATIVE DEFENSE

Skyline’s claim is barred by waiver and/or acquiescence.

EIGHTH AFFIRMATIVE DEFENSE

Skyline’s request for injunctive relief is barred because there exists no immediate and

irreparable harm.


http://www.skydesign.com/products/glass

www.skydesign.com/%20sites/default/files/AboutGlass_TechnicalSpecifications.pdf

www.skydesign.com/%20sites/default/files/AboutGlass_TechnicalSpecifications.pdf

http://www.skydesign.com/products/glass/weaves-textures

17

NINTH AFFIRMATIVE DEFENSE

Skyline’s claim is barred due to copyright misuse and/or unclean hands. Skyline has engaged

in improper and/or anticompetitive conduct by attempting to extend the effect or operation of its

copyright beyond the scope of the statutory right, which is limited to two-dimensional artwork.

See Complaint Exhibit A, Certificate of Registration for Visual Arts VA 1-364-683.

TENTH AFFIRMATIVE DEFENSE

If it is ultimately found that Skyline suffered injury or damages as alleged in the Complaint,

which injury or damages McGrory expressly denies, Skyline failed to take reasonable steps to avoid

injury or to mitigate any damages allegedly suffered as a result of any acts or omissions of McGrory.

ELEVENTH AFFIRMATIVE DEFENSE

Any injury or damages suffered by Skyline, which injury or damages McGrory expressly

denies, were proximately and directly caused by the actions of others over whom McGrory had no

control.

TWELFTH AFFIRMATIVE DEFENSE

Skyline’s claim is barred by laches and/or equitable estoppel.

PRAYER

WHEREFORE, McGrory prays that this Court:

1. Deny all of Skyline’s claim for relief and dismiss the Complaint with

prejudice;

2. Declare copyright Registration No. Registration No. VA 1-364-683

invalid and unenforceable;

3. Award McGrory its costs and expenses, including attorneys’ fees pursuant

to 17 U.S.C. § 505; and


18

4. Award such other and further relief as this Court may deem just and

proper.


19

Dated: February 4, 2013 Respectfully submitted,

/s/ Karol A. Kepchar

Karol A. Kepchar (pro hac vice)

[email protected]

Emily C. Johnson (Bar #6289848)

[email protected]

Laura Geyer (pro hac vice)

[email protected]

AKIN GUMP STRAUSS HAUER & FELD LLP

1333 New Hampshire Avenue, N.W.

Washington, DC 20036

Phone: (202) 887-4000

Fax: (202) 887-4288

Steven D. Maslowski (pro hac vice)

[email protected]

AKIN GUMP STRAUSS HAUER & FELD LLP

Two Commerce Square

2001 Market Street, Suite 4100

Philadelphia, PA 19103

Phone: (215) 965-1200

Fax: (215) 965-1210

Gregory V. Ginex (Bar #6282955)

[email protected]

Daniel James VeNard (Bar #6307236)

[email protected]

BOLLINGER CONNOLLY KRAUSE LLC

500 W. Madison Street, Suite 2430

Chicago, Illinois 60661

(312) 253-6200

Attorneys for Defendant McGrory Glass, Inc.


20


I, Gregory V. Ginex, hereby certify that I electronically filed the foregoing AMENDED

ANSWER AND AFFIRMATIVE DEFENSES with the Clerk of the Court for the Northern

District of Illinois using the ECF System which will send notification to the registered

participants of the ECF System as listed on the Court’s Notice of Electronic Filing this 5th day of

February, 2013.

/s/ Gregory V. Ginex

Gregory V. Ginex


EXHIBIT 4 (Dkt. No. 23-1 – Amended Declaration of Emily C. Johnson)


IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION


Plaintiff,

v.

McGRORY GLASS, INC.,

Defendant.

)

)

) Case No. 12-cv-10198

)

) Honorable Edmond E. Chang

)

)

)

)

AMENDED DECLARATION OF EMILY C. JOHNSON

I, Emily C. Johnson, hereby declare and state as follows:

1. I am a counsel at the law firm of Akin Gump Strauss Hauer & Feld LLP and

counsel for McGrory Glass, Inc. (“McGrory”) in this action. I am an attorney at law, duly

licensed to practice before all Courts of the State of Illinois, and I am admitted to practice before

this Court. If called to testify to the following, I could do so truthfully, competently, and of my

own personal knowledge.

2. Attached hereto as Exhibit 1 is a true and correct color copy of a photograph of

“Rain,” taken at Akin Gump Strauss Hauer & Feld LLP on January 31, 2013.


MII-247 “BiRain” taken at Akin Gump Strauss Hauer & Feld LLP on January 31, 2013.


Skyline Design, Inc.’s (“Skyline”) “Sateen,” taken at Akin Gump Strauss Hauer & Feld LLP on

January 31, 2013.

5. Attached hereto as Exhibit 4 are true and correct color copies of photographs of

Skyline’s “Sateen” and McGrory’s “Rain” and MII-247 “BiRain,” taken at Akin Gump Strauss

1


Hauer & Feld LLP on January 31, 2013.

6. Attached hereto as Exhibit 5 is a true and correct graphical depiction of Skyline’s

“Sateen” and McGrory’s MII-247 “BiRain,” prepared by Akin Gump Strauss Hauer & Feld LLP

on February 4, 2013.

7. Attached hereto as Exhibit 6 is a true and correct copy of a webpage printed from

Skyline’s website, available at http://www.skydesign.com/products/glass/ (last visited Feb. 1,

2013).


Skyline’s website, available at http://www.skydesign.com/sites/default/files/

AboutGlass_TechnicalSpecifications.pdf (last visited Jan. 30, 2013).


Skyline’s website, available at http://www.skydesign.com/products/glass/weaves-textures

(last visited Jan. 30, 2013).

I declare under the penalty of perjury of the laws of the United States of America that the

foregoing is true and correct, and that this declaration was executed on February 4, 2013, in

Washington, District of Columbia.

/s/ Emily C. Johnson

Emily C. Johnson

2


http://www.skydesign.com/products/glass/

http://www.skydesign.com/sites/default/files/

http://www.skydesign.com/sites/default/files/



I, Gregory V. Ginex, hereby certify that I electronically filed the foregoing Amended

Declaration of Emily C. Johnson with the Clerk of the Court for the Northern District of Illinois

using the ECF System which will send notification to the registered participants of the ECF

System as listed on the Court’s Notice of Electronic Filing this 5th day of February, 2013.

/s/ Gregory V. Ginex

Gregory V. Ginex

3


EXHIBIT 5 (Dkt. No. 23-1 – Amended Answer Exhibit 1)












- - -6ntl1l Rl1i1z 6mmBiRain

,,,,,,,,,. n1cgro ry .con1 www.mcgrory.com .

SKY L J PHONE FAX

E-MAIL· sa

c GN

.com



Sateen BiRain

Sateen BiRain




File Edit View Favorites Tools Help

(J Suggested Sites IDWeb Slice Gallery

X Find: Pr v1ous Next ILlJOptions • I

oI Glass ISkyline Design

X Convert • Sele•

Portfolio lndusllies Contact About

Gla Magnetic Marl<erglass Mirrors I Chidren's Furniture 1 Favorites

Glass Glass is the core of our business.We have over 50,000 glass rnstallations

around the world.

We decorate glass toalter the way it transmrts fight-from transparent to

translucent to opaqu facllitating !he use of light In the built environment to

inspire the people who rnhabrt 1t

Our glass designs addbeauty, light, and revers of pnvacy to your space.We also

offer a nch array of colorful-as well as func5onal-archllecturalglass products.

such as magnetic markerglass.which foster creativity,communication, and

orgamzation where people interact

The simple, clean elementalmake-up of glass-5and and mineral omes from

!he earth and returns to the earth throughrecycling. Irs the most naturalway to

use light to transform your space.

Our design andmanufacturmg efforts focus on creating a spectrum of

sustainable, handcrafted, quality glass and architecturalproducts-customized to

suit our clients'needs and avoid waste.Whether etched or painted, demountable

or magnetic marker. our award-winning archrtecturalglass products can

111ummate your space.

Our passiOn for glass began when founder Charlie Rizzo learned the craft or

etching glass from English artist Robert Pine in 1985.

Natural, plentiful, pure.andrefined,glass is what sparks our collective

imagmation

Downloads:

Light+ Shadow,Cascade L

ConfidentialClient by GenslerI PhotographerB: ruce Damonte




About Glass: Technical Specifications

We decorate glass to alter the way it transmits light in the built environment, creating

Transparency: transmitting light so that objects can be seen with clarity.

Translucency: diffusing light so that objects cannot be clearly distinguished.

Opacity: entirely obstructing the passage of light.

TECHNIQUES

Our progressive techniques support sustainable

practices that optimize energy use, minimize water

use and transportation resources, reduce waste, and

utilize low-VOC paints and finishes.

Eco-etch®

Our proprietary application utilizes aluminum oxide

etching to provide a fine, consistent finish. May

be applied on both sides for depth and dimension.

Large-scale eco-etch applications are protected by

Skyline Etch Sealer.

Skyline Etch Sealer™

Low-VOC sealer applied on large-scale eco-etch

patterns and surfaces to protect the finished glass

surface, resist fingerprints and discoloration over

time, and facilitate maintenance.

AST™

Unique process that ensures dynamic graphic and

photographic reproduction on glass. Available for

opaque and translucent glass options with vast

color capabilities.

Vitracolor®

Low-VOC, or water-based painting process with an

extensive color selection and exact color matching

formula. Our proprietary automated production

process ensures even distribution of paint for a

uniform coating.

Silk Screening

Used to add contemporary and traditional designs

to mirrors.

CUSTOMIZATION

Most glass patterns are available in both horizontal

and vertical orientations; changing a pattern scale

and/or configuration, or using custom colors may

incur an additional charge.

TYPES OF GLASS

Tempered safety glass

All of our architectural glass products are offered

on tempered safety glass.

Low-iron glass

Ideal for applying color and designs to the front

and back surfaces because of its clarity. Available

in standard and extra-heavy thicknesses.

APPLICATIONS

Skyline offers glass applications in nearly any glass

thickness, type, or make-up, including monolithic

and laminated, fire-rated, mirrors, and more. Our

decorative finishes may be applied to tempered

glass to meet safety and building code requirements.

Maximum size limited to 72” x 144” for patterns.

Certain applications may not be available on all glass

types and/or thicknesses. Surcharges may apply to

oversized or heavy glass.

SUBMITTING CUSTOM COLOR OR ARTWORK

To submit a custom color, just send us the code

or sample of what you’d like to match. We can

match virtually any color. Please see our website for

information on submitting artwork.

SPECIFICATION

We encourage you to contact us directly to provide

specifying instructions for all our glass, as well as

custom specs for your client’s bid-set documents.

MAINTENANCE AND WARRANTY

Please visit our website for detailed product

maintenance and warranty information.

DISCLAIMER

Our product illustrations indicate pattern scale and

density only. Applied finishes and techniques may

affect the overall appearance.

Made in Chicago / © 2011 Skyline Design skydesign.com / 888-278-4660 / [email protected]


mailto:[email protected]



Weaves + Textures | Skyline Design Page 1 of 2

Product Search

Products Portfolio Industries Contact About

Glass | Magnetic Markerglass | Mirrors | Children's Furniture | Favorites

Designed by Lydia Esparza, Wayne Susag, and Skyline Design’s Creative Director Deborah Newmark. The

collection includes ten tactile patterns inspired by everyday fabrics used by indigenous peoples from Mexico and

Africa. The global textile designs give glass a whole new look and feel. Choose from timeless classics such as

Sateen, Challis, and Batiste, among other popular sheer and diaphanous designs.

Weaves + Textures Designers

Product Downloads Specifications

Downloads: About Glass - Technical Specifications

Collection Card Case Study: Healthcare: Bringing Nature Inside

View Portfolio Images

Product Information

Made In Chicago / © 2013 Skyline Design

Sign up for our email newsletter 888-278-4660 / [email protected] /

http://www.skydesign.com/products/glass/weaves-textures 1/30/2013


mailto:[email protected]


Weaves+ Textures ISkyline Design Page 2 of2

http:l/www.skydesi gn.com/pro ducts/glass/weaves-textures i/30/2013




EXHIBIT 13


Only the Westlaw citation is currently available.

United States District Court,N.D. Illinois, Eastern Division.

Spiros ARETHAS, Plaintiff,v.

S/TEC GROUP, INC.; Superior Engineering, LLC,Employee Health Benefit Plan; Professional ClaimsManagement, Inc.; East Coast Underwriters, LLC;

Fidelity Security Life Ins. Co., Defendants.

No. 04 C 6743.April 14, 2005.

David A. Bryant, Daley, DeBofsky & Bryant,Chicago, IL, for Plaintiff.

Lee Thomas Polk, Michael James Mueller, Barnes& Thornburg, Douglas L. Prochnow, Nicole M.DeBruin, Wildman, Harrold, Allen & Dixon,Chicago, IL, for Defendants.

MEMORANDUM OPINIONDERYEGHIAYAN, J.

*1 This matter is before the court on DefendantProfessional Claims Management, Inc.'s (“PCM”)motion to dismiss and on Defendant East Coast Un-derwriters, LLC's (“East Coast”) and Defendant Fi-delity Security Life Insurance Company's(“Fidelity”) motion for judgment on the pleadings.For the reasons stated below, we grant in part anddeny in part PCM's motion to dismiss and we denywithout prejudice East Coast's and Fidelity's motionfor judgment on the pleadings.

BACKGROUNDPlaintiff Spiros Arethas (“Arethas”) alleges

that he is an insured participant of an employeewelfare plan maintained by Defendant Superior En-gineering, LLC, which is now known as S/TECGroup, Inc. (“S/TEC”). Arethas alleges that inApril of 2004 he was diagnosed with Philadelphia-chromosome positive Acute Lymphoblastic Leuk-

emia. According to Arethas, he underwent chemo-therapy and thereafter his physician recommendedthat Arethas undergo a peripheral blood stem celltransplant. Arethas claims that his brother was de-termined to be a match for Arethas's stem cell andwas an ideal donor. Arethas claims that in June of2004 his physician requested an expedited insur-ance approval to proceed onward with the trans-plant at a cost of $180,000. Arethas contends thatsuch a request for expedited recovery must be re-sponded to under the law within 72 hours.However, according to Arethas, PCM did not re-spond to the request until July 7, 2004, over 872hours after the request for coverage. PCM allegedlyresponded by granting coverage only up to $50,000.On July 12, 2004, Arethas sent a letter to PCM ap-pealing the coverage decision. Arethas claims thaton July 13, 2004, his brother attempted to submithimself to further testing for the transplant, but thehospital refused to proceed due to the denial of cov-erage by PCM.

Arethas claims that on July 23, 2004, he againsent a letter to PCM stating that he was in urgentneed of a resolution on the coverage issue. Arethasalleges that on July 26, 2004, he learned that hiswhite blood count was such that it indicated that hisleukemia was no longer in remission and that sincehe was not in remission he could not receive the an-ticipated transplant. On July 27, 2004, Arethas sentanother letter to PCM reiterating his need for an ex-pedited response regarding coverage in case thetransplant became suitable again. Thereafter, Areth-as sent various other letters to PCM regarding cov-erage. Arethas alleges that he has been takingGleevec in order to attempt to go back into remis-sion, but that he is currently not in remission.Arethas brought the instant action and in his com-plaint he includes a claim alleging a denial ofhealth benefits in violation of 29 U.S.C. §2560.503-1(m)(2) and 29 U.S.C. § 1133 of the Em-ployee Retirement Income Security Act (“ERISA”),29 U.S.C. § 1132 et seq. (Count I), a claim for stat-

Page 1Not Reported in F.Supp.2d, 2005 WL 991782 (N.D.Ill.)(Cite as: 2005 WL 991782 (N.D.Ill.))

© 2013 Thomson Reuters. No Claim to Orig. US Gov. Works.


http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=PROFILER-WLD&DocName=0183045701&FindType=h







http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&CMD=ML&DocName=Ibd1c128e475411db9765f9243f53508a&FindType=UM

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&CMD=ML&DocName=Ibd65500e475411db9765f9243f53508a&FindType=MP

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&CMD=ML&DocName=Ibd65500e475411db9765f9243f53508a&FindType=MP

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&CMD=ML&DocName=Ica14d7f8475411db9765f9243f53508a&FindType=UM

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&CMD=ML&DocName=I3898e97f475111db9765f9243f53508a&FindType=BD

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1000546&DocName=29USCAS1133&FindType=L




utory penalties pursuant to 29 U.S.C. § 1024 and §1132(c) (Count II), and a breach of fiduciary dutyclaim (Count III).

LEGAL STANDARD*2 In ruling on a motion to dismiss, the court

must draw all reasonable inferences that favor theplaintiff, construe the allegations of the complaintin the light most favorable to the plaintiff, and ac-cept as true all well-pleaded facts and allegations inthe complaint. Thompson v. Illinois Dep't of Prof'lRegulation, 300 F.3d 750, 753 (7th Cir.2002); Per-kins v. Silverstein, 939 F.2d 463, 466 (7th Cir.1991). The allegations of a complaint should not be dis-missed for a failure to state a claim “unless it ap-pears beyond doubt that the plaintiff can prove noset of facts in support of his claim which would en-title him to relief.” Conley v. Gibson, 355 U.S. 41,45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957); See alsoBaker v. Kingsley, 387 F.3d 649, 664 (7th

Cir.2004)(stating that although the “plaintiffs' al-legations provide[d] little detail ... [the court couldnot] say at [that] early stage in the litigation thatplaintiffs [could] prove no set of facts in support oftheir claim that would entitle them to relief.”). Non-etheless, in order to withstand a motion to dismiss,a complaint must allege the “operative facts” uponwhich each claim is based. Kyle v. Morton HighSchool, 144 F.3d 448, 445-55 (7th Cir.1998); Lu-cien v. Preiner, 967 F.2d 1166, 1168 (7th Cir.1992). Under current notice pleading standard in federalcourts a plaintiff need not “plead facts that, if true,establish each element of a ‘cause of action....” ’See Sanjuan v. American Bd. of Psychiatry andNeurology, Inc., 40 F.3d 247, 251 (7th

Cir.1994)(stating that a “[a]t this stage the plaintiffreceives the benefit of imagination, so long as thehypotheses are consistent with the complaint” andthat “[m]atching facts against legal elements comeslater.”). The plaintiff need not allege all of the factsinvolved in the claim and can plead conclusions.Higgs v. Carter, 286 F.3d 437, 439 (7th Cir.2002);Kyle, 144 F.3d at 455. However, any conclusionspled must “provide the defendant with at least min-imal notice of the claim,” Id., and the plaintiff can-

not satisfy federal pleading requirements merely“by attaching bare legal conclusions to narratedfacts which fail to outline the bases of [his] claim.”Perkins, 939 F.2d at 466-67. The Seventh Circuithas explained that “[o]ne pleads a ‘claim for relief’by briefly describing the events.” Sanjuan, 40F.3d at 251.

A party is permitted under Federal Rule ofCivil Procedure 12(c) to move for judgment on thepleadings after the parties have filed the complaintand the answer. Fed.R.Civ.P. 12(c); Northern Indi-ana Gun & Outdoor Shows, Inc. v. City of SouthBend, 163 F.3d 449, 452 (7th Cir.1998). The courtsapply the Rule 12(b) motion to dismiss standard forRule 12(c) motions and thus the court may “grant aRule 12(c) motion only if ‘it appears beyond doubtthat the plaintiff cannot prove any facts that wouldsupport his claim for relief.” ’ Id. (quoting Craigs,Inc. v. General Elec. Capital Corp., 12 F.3d 686,688 (7th Cir.1993)). The court, in ruling on a mo-tion for judgment on the pleadings, must “accept astrue all well-pleaded allegations,” Forseth v. Vil-lage of Sussex, 199 F.3d 363, 364 (7th Cir.2000),and “view the facts in the complaint in the lightmost favorable to the nonmoving party....” North-ern Indiana Gun & Outdoor Shows, Inc., 163 F.3dat 452(quoting GATX Leasing Corp. v. NationalUnion Fire Ins. Co., 64 F.3d 1112, 1114 (7thCir.1995)). The main difference between a Rule12(b) motion and a Rule 12(c) motion is that a Rule12(b) motion may be filed before the answer to thecomplaint is filed, whereas, a Rule 12(c) motionmay be filed “after the pleadings are closed butwithin such time as not to delay the trial.” Id. n. 3

*3 A court may rule on a judgment on thepleadings under Rule 12(c) based upon a review ofthe pleadings alone. Id. at 452. The pleadings in-clude the complaint, the answer, and any written in-struments attached as exhibits, such as affidavits,letters, contracts, and loan documentation. Id. at452-53. In ruling on a motion for judgment on thepleadings a “district court may take into considera-tion documents incorporated by reference to the







http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=506&FindType=Y&ReferencePositionType=S&SerialNum=2002495126&ReferencePosition=753






http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=708&FindType=Y&SerialNum=1957120403























http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1004365&DocName=USFRCPR12&FindType=L
































pleadings ... [and] may also take judicial notice ofmatters of public record.” U.S. v. Wood, 925 F.2d1580, 1582 (7th Cir.1991). If the court considersmatters outside the pleadings, the court should con-vert the motion for judgment on the pleadings into amotion for summary judgment. Northern IndianaGun & Outdoor Shows, Inc., 163 F.3d at 453 n. 5.

DISCUSSIONI. PCM's Motion to Dismiss

PCM has moved to dismiss the claims in CountI and II against PCM because the Plan administrat-or, rather than PCM made the ultimate denial de-cision. PCM also moves to dismiss the fiduciaryduty claim (Count III) against PCM because PCMis not a fiduciary. As an initial matter, Arethasagrees to voluntarily dismiss PCM from Count II.Therefore, we grant PCM's motion to dismiss CountII.

A. Denial of BenefitsPCM argues that it is the responsibility of the

Plan administrator to make the ultimate determina-tion to deny benefits under the Plan. PCM claimsthat its role in connection with the Plan is to act asa service provider and to provide “case manage-ment and utilization review services, initial claimsreview, and claims payment services.” (Mot.Dis.4).Generally, an ERISA claim for benefits must bebrought against the pertinent plan. Mein v. CarusCorp., 241 F.3d 581, 584-85 (7th Cir.2001). BothArethas and PCM cite with approval Mein v. CarusCorp., 241 F.3d 581 (7th Cir.2001) in support oftheir positions. In Mein, the Seventh Circuit indic-ated that an entity other than the plan may benamed as a defendant for such a claim if the “exactrelationship between that [other entity] and the planis not clearly set out” and it appears that the planand the entity are “closely intertwined....” Id.(quoting Riordan v. Commonwealth Edison Co.,128 F.3d 549, 551 (7th Cir.1997)). In Mein, thecourt allowed the defendant employer to remain asa named defendant in the action because the rela-tionship between the pertinent plan and the employ-er was not clear. Id. In arriving at such a conclu-

sion, the court in Mein noted that the summary plandescription of the plan in question used pronounsthat clearly referred to the defendant employerrather than the plan and that “[t]hroughout the de-scription, as in Riordan, the close relationshipbetween the corporation and the plan is evident.”Id. The court in Mein also noted that “the desig-nated agent for legal process [wa]s the [employer]corporation” and that the plan administrator was thedefendant employer corporation itself which wasprovided with complete control over the plan. Id.Finally, the court in Mein noted that “the plan trust-ee, with whom [the plaintiff] most often communic-ated, was James C. Wilkes, who, although at leaston some occasions, signed letters as trustee for theplan, also used [the defendant employer's] station-ary which indicated that he was vice-president ofhuman resources for the corporation.” Id.

*4 In the instant action, Arethas argues thatPCM “acted as both an administrator and a fidu-ciary” because “PCM is vested with unfettered abil-ity to approve or deny claims and interpret lan-guage, making PCM a fiduciary under ERISA.”(Dis.Ans.6). Arethas also argues that “PCM is act-ing with independent discretion and control in themanagement of this aspect of the Plan....”(Dis.Ans.6). However, other than such conclusorystatements, Arethas fails to show how PCM and thePlan are intertwined such that PCM should benamed as a defendant for the denial of benefits.Arethas apparently recognizes the lack of supportfor his position arguing that at the very least PCM“is clearly acting as the de facto plan administratorfor the Plan.” (Dis.Ans.7). However, Arethas failsto explain why PCM is a de facto plan administrat-or and in support of such a position Arethas cites anEleventh Circuit case which is not controlling pre-cedent. (Dis.Ans.7). Arethas also recites in detail ananalysis of a dissent in a Ninth Circuit case whichis not controlling precedent. (Dis.Ans.7). Arethasacknowledges in his second amended complaintthat S/TEC is the Plan's sponsor and administrator.(SAC Par. 6).



















PCM has also made reference to the terms in-cluded in the Plan itself which are not expressly lis-ted in the second amended complaint. For the pur-poses of a Rule 12(b)(6) motion to dismiss, a courtcan consider a document attached to a motion todismiss, such as a contract, as long as the docu-ment: 1) is “referred to in the plaintiff's complaint,”and 2) is “central to his claim....” Levenstein v.Salafsky, 164 F.3d 345, 347 (7th Cir.1998). InArethas' second amended complaint, he makes spe-cific reference to the Plan and makes it clear thatthe dispute in the action is concerning the Plan.Therefore, we may consider the Plan as part of ouranalysis for the motion to dismiss. The Plan indic-ates that PCM, the Plan Supervisor, is responsiblefor reviewing the facts and documents pertaining toa benefits request and that PCM's review is then tobe delivered to the Plan Administrator. (Plan Sec-tion 7.00). The Plan makes clear that “[t]he Plan isadministered through the Plan Administrator” and“[t]he services of an Independent Plan Supervisorexperienced in claims processing have been re-tained to process claims for the Plan.” (Plan Sec-tion 7.01). The Plan does not allow for legal noticeto be filed with the Plan Supervisor, but insteadalso provides that all legal notices are to be filedwith the Plan or the Plan Administrator. (Plan Sec-tion 7.01). Therefore, since the Plan or at the veryleast the Plan Administrator is the proper Defendantfor a denial of benefits claim, we grant PCM's mo-tion to dismiss the claim for denial of benefitsagainst PCM (Count I).

B. Breach of Fiduciary DutyPCM argues that the breach of fiduciary duty

claim brought against PCM should be dismissed be-cause PCM is not a fiduciary under the Plan. Anon-fiduciary cannot be held liable under ERISAfor a breach of fiduciary duty even if the non-fiduciary “participate[d] knowingly in an ERISA fi-duciary's breach of fiduciary obligations....” Reichv. Continental Cas. Co., 33 F.3d 754, 757 (7th

Cir.1994). See also Schmidt v. Sheet Metal Work-ers' Nat. Pension Fund, 128 F.3d 541, 547 (7th

Cir.1997)(stating that “[i]t goes without saying that

a claim for breach of fiduciary duty lies onlyagainst an individual or entity that qualifies as anERISA ‘fiduciary.” ’). ERISA defines the term“fiduciary” as a person that “exercises any discre-tionary authority or discretionary control respectingmanagement of such plan or exercises any authorityor control respecting management or disposition ofits assets, ... renders investment advice for a fee orother compensation, direct or indirect, with respectto any moneys or other property of such plan, orhas any authority or responsibility to do so, or ...has any discretionary authority or discretionary re-sponsibility in the administration of such plan.” 29U.S.C. § 1002(21). Thus, for an individual or entityto be an ERISA fiduciary, the individual or entity“must exercise a degree of discretion over the man-agement of the plan or its assets, or over the admin-istration of the plan itself.” Schmidt, 128 F.3d at547.

*5 PCM argues that it performs only ministeri-al duties under the Plan, while Arethas contendsthat PCM performs discretionary duties under thePlan. PCM points to the Plan which states in the“Fiduciary Operation” section that “[t]he Plan Ad-ministrator or its designee shall have full discre-tionary authority to correct any defect, supply anyomission or reconcile any inconsistency and resolveany ambiguities in the Plan....” (Plan Section 7.21).Arethas claims that PCM was acting as a fiduciarydesignee of S/TEC when PCM on its own inter-preted the Plan and determined that Arethas' claimwas not covered under the Plan. While PCM insistsin its reply that it performed only ministerial func-tions under the Plan, it is not clear from the plead-ings before us that such is the case. Whether or notPCM acted as S/TEC's fiduciary designee or exer-cised discretionary decision making under any oth-er portion of the Plan requires an inquiry that isbeyond the appropriate inquiry at the pleadingsstage. The fact that PCM's arguments are prematureare illustrated by PCM's recitation of the analysis inTegtmeier v. Midwest Operating Engineers PensionTrust Fund, 390 F.3d 1040 (7th Cir.2004). TheCourt in Tegtmeier addressed a similar issue as in






















the instant action, but the Court was reviewing adistrict court's ruling on the parties' cross motionsfor summary judgment. Id. at 1042. PCM also citesin support of its position Schmidt v. Sheet MetalWorkers' Nat. Pension Fund, 128 F.3d 541 (7th

Cir.1997) in which the Seventh Circuit was review-ing a district court's ruling on a summary judgmentmotion. Id. at 545. Thus, PCM”s arguments regard-ing its fiduciary status are premature at this junc-ture.

PCM also argues that Arethas cannot bring abreach of fiduciary duty claim under 29 U.S.C. §1132(a)(3) (“Section 1132(a)(3)”) for lost benefitsbecause Arethas has available to him an ordinarybenefits claim against the Plan under 29 U.S.C. §1132(a)(1)(B)(“ Section 1132(a)(1)(B) ”). Arethasconcedes in his answer that he is not seeking “to re-cover benefits due to him under the terms of hisplan” pursuant to Section § 1132(a)(1)(B). 29U.S.C. § 1132(a)(1)(B). However, Arethas pointsout that there is relief expressly provided for inSection 1132(a)(3) that may be applicable in thisaction, such as the right by a participant “to enjoinany act or practice which violates any provision ofthis subchapter or the terms of the plan, or ....to ob-tain other appropriate equitable relief....” 29 U.S.C.§ 1132(a)(3). Arethas argues that depending onwhether or not his leukemia again goes into remis-sion he may need to seek relief under Section1132(a)(3) that will not be available under Section1132(a)(1)(B). We agree that PCM's arguments inregards to the breach of fiduciary duty claim arepremature. PCM repeatedly cites in support of itsposition on this point Varity Corp. v. Howe, 516U.S. 489, 116 S.Ct. 1065, 134 L.Ed.2d 130 (1996).However, in Varity, the United States SupremeCourt was not reviewing a district court's ruling atthe pleading stage. In fact, in Varity the districtcourt had conducted a full trial and made findingsof fact prior to the appeal. Id. at 492. PCM alsocites Van Hoey v. Baxter Intern., Inc., 1997 WL665855 (N.D.Ill.1997) in support of its position, butin that case the district court was ruling upon crossmotions for summary judgment rather than a mo-

tion to dismiss. Id. at *1. Therefore, we denyPCM's motion to dismiss the breach of fiduciaryduty claim against PCM (Count III).

II. Motion for Judgment on the Pleadings*6 East Coast and Fidelity have moved for

judgment on the pleadings on all claims broughtagainst the two Defendants. East Coast and Fidelityargue that they cannot be held liable for a denial ofbenefits because they were not parties to the Plan.East Coast and Fidelity also argue that they cannotbe held liable for a breach of fiduciary duties be-cause neither of them are fiduciaries of the Plan.

East Coast and Fidelity have attached affidavitsto their motion for judgment on the pleadings andhave asked the court to consider the affidavits inruling on the motion. Arethas correctly points outthat the court cannot consider such affidavits whenruling on a motion for judgment on the pleadings.A court may rule on a judgment on the pleadingsunder Rule 12(c) based upon a review of the plead-ings alone. Id. at 452. The pleadings include thecomplaint, the answer, and any written instrumentsattached as exhibits, such as affidavits, letters, con-tracts, and loan documentation. Id. at 452-53. Inruling on a motion for judgment on the pleadings, a“district court may take into consideration docu-ments incorporated by reference to the pleadings ...[and] may also take judicial notice of matters ofpublic record.” U.S. v. Wood, 925 F.2d 1580, 1582(7th Cir.1991). If the court considers matters out-side the pleadings, the court should convert the mo-tion for judgment on the pleadings into a motion forsummary judgment. Northern Indiana Gun & Out-door Shows, Inc., 163 F.3d at 453 n. 5.

As indicated above, although in ruling on a mo-tion for judgment on the pleadings a court can con-sider affidavits attached to a complaint or an an-swer to the complaint, a court cannot consider affi-davits that are not a part of the pleadings. Thus, aconsideration of the affidavits attached by eastCoast and Fidelity to their motion for judgment onthe pleadings would only be proper if the court de-cides to convert the motion into a summary judg-







http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&FindType=Y&SerialNum=1997209958














http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&CMD=ML&DocName=Ica14d7f8475411db9765f9243f53508a&FindType=UM


















ment motion. If East Coast and Fidelity want toproceed forward on a motion for judgment on thepleadings, they will need to seek leave to amendtheir answer and attach the affidavits. Otherwiseany future motion for judgment on the pleadingswith affidavits attached would only be proper if thecourt converted the motion into a motion for sum-mary judgment. Therefore, we deny without preju-dice East Coast's and Fidelity's motion for judg-ment on the pleadings.

CONCLUSIONBased on the foregoing analysis, we grant

PCM's motion to dismiss the denial of benefitsclaim brought against PCM and deny PCM's motionto dismiss the breach of fiduciary duty claimbrought against PCM. We deny without prejudiceEast Coast's and Fidelity's motion for judgment onthe pleadings.

N.D.Ill.,2005.Arethas v. S/TEC Group, Inc.Not Reported in F.Supp.2d, 2005 WL 991782(N.D.Ill.)

END OF DOCUMENT




EXHIBIT 14



United States District Court,N.D. Illinois,

Eastern Division.Guy HOBBS, an individual, Plaintiff,

v.Elton JOHN a/k/a Sir Elton Hercules John, an indi-vidual, Bernard John Taupin a/k/a Bernie Taupin,an individual, and Big Pig Music, Ltd., a foreign

business organization, form unknown, Defendants.

No. 12 C 3117.Oct. 29, 2012.

Daniel John Voelker, Tricia Lynn Putzy, VoelkerLitigation Group, Chicago, IL, for Plaintiff.

Stephanie R. Kline, Tom J. Ferber, Ilene S. Farkas,Pryor Cashman LLP, New York, NY, HowardLamar Huntington, Mahoney, Silverman & Cross,LLC, Joliet, IL, Mary Joanne Bortscheller, Willi-ams Montgomery & John Ltd., Chicago, IL, for De-fendants.

MEMORANDUM OPINION AND ORDERAMY J. ST. EVE, District Judge.

*1 On April 26, 2012, Plaintiff Guy Hobbsbrought the present three-count Complaint againstDefendants Elton John, Bernard John Taupin, andBig Pig Music, Ltd., alleging copyright infringe-ment in violation of the Copyright Act of 1976, 17U.S.C. § 101, et seq. (Count I), as well as state lawclaims for the equitable remedies of constructivetrust (Count II) and an accounting (Count III), pur-suant to the Court's supplemental jurisdiction. See28 U.S.C. §§ 1331, 1367(a). On August 7, 2012,Defendants filed a motion to dismiss under FederalRule of Civil Procedure 12(b)(6). For the followingreasons, the Court grants Defendants' motion to dis-miss and dismisses this lawsuit in its entirety.

LEGAL STANDARD

A Rule 12(b)(6) motion challenges the suffi-ciency of the complaint. See Hallinan v. FraternalOrder of Police of Chicago Lodge No. 7, 570 F.3d811, 820 (7th Cir.2009). Under Rule 8(a) (2), acomplaint must include “a short and plain statementof the claim showing that the pleader is entitled torelief.” Fed.R.Civ.P. 8(a)(2). The short and plainstatement under Rule 8(a)(2) must “give the de-fendant fair notice of what the claim is and thegrounds upon which it rests.” Bell Atlantic v.Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167L.Ed.2d 929 (2007) (citation omitted). Under thefederal notice pleading standards, a plaintiff's“factual allegations must be enough to raise a rightto relief above the speculative level.” Twombly, 550U.S. at 555. Put differently, a “complaint must con-tain sufficient factual matter, accepted as true, to‘state a claim to relief that is plausible on its face.’“ Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct.1937, 1949, 173 L.Ed.2d 868 (2009) (quotingTwombly, 550 U.S. at 570). “In evaluating the suffi-ciency of the complaint, [courts] view it in the lightmost favorable to the plaintiff, taking as true allwell-pleaded factual allegations and making allpossible inferences from the allegations in theplaintiff's favor.” AnchorBank, FSB v. Hofer, 649F.3d 610, 614 (7th Cir.2011). Courts may also con-sider documents attached to the pleadings withoutconverting the motion into a motion summary judg-ment, as long as the documents are referred to inthe complaint and central to the claims. SeeGeinosky v. City of Chicago, 675 F.3d 743, 745 n. 1(7th Cir.2012); Wigod v. Wells Fargo Bank, N.A.,673 F.3d 547, 556 (7th Cir.2012) Fed.R.Civ.P.10(c).

BACKGROUNDI. Factual Allegations

Plaintiff Guy Hobbs, who was born in Aus-tralia and raised in the United Kingdom, is anaward-winning freelance photojournalist. (R. 1,Compl.¶ 7.) At the beginning of 1982, after study-ing photography at Salisbury Art College in the

Page 1Slip Copy, 2012 WL 5342321 (N.D.Ill.), 2012 Copr.L.Dec. P 30,336(Cite as: 2012 WL 5342321 (N.D.Ill.))














http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1000546&DocName=28USCAS1367&FindType=L&ReferencePositionType=T&ReferencePosition=SP_8b3b0000958a4

































United Kingdom, Hobbs took his first job as a pho-tographer on a Russian cruise ship, the TarasShevchenko. (Id. ¶ 8.) While on board the Russiancruise ship, Hobbs became romantically involvedwith a Ukrainian waitress. (Id.) Before leaving theTaras Shevchenko in the spring of 1982, he wrotethe lyrics to a song called “Natasha” inspired by hisexperiences with the waitress. (Id. ¶ 9.) In his Com-plaint, Hobbs alleges that “Natasha” is about an im-possible love affair between a Western man and anUkrainian woman during the Cold War. (Id.)

*2 In April 1982, Hobbs transferred to a Greekship and, after a year at sea, he moved to Londonfor two years. (Id. ¶ 10.) On May 10, 1983, Hobbsregistered his copyright of “Natasha” in the UnitedKingdom through the process proscribed by theUnited Kingdom Intellectual Property Office. (Id.)Again, on November 11, 1983, Hobbs registered hiscopyright of “Natasha” in the United Kingdom,along with four other songs' lyrics he had written. (Id. ¶ 12.) Meanwhile, based on information Hobbsfound in a September 1984 issue of a magazinecalled “The Songwriter,” Hobbs forwarded the“Natasha” lyrics to several music publishers, in-cluding Defendant Big Pig, asking them to considerpublishing his lyrics and assisting him in connect-ing with singer/songwriter collaborators. (Id. ¶ 11.)Hobbs maintains that at that time, he thought BigPig was an independent publishing company anddid not know it was affiliated with Defendants Johnand Taupin. (Id.)

In October 1984, after having had no successwith his lyrics, Hobbs returned to his career as aphotojournalist. (Id. ¶ 13.) In 2001, Hobbs cameacross the written lyrics of Defendants' “Nikita” forthe first time in a song book. FN1 (Id. ¶ 14.) Ac-cording to Hobbs, “Nikita” involves an impossiblelove affair between a Western man and an EastGerman woman during the Cold War. (Id.) Hobbsfurther alleges that when he read the “Nikita” lyr-ics, he was shocked by the many similaritiesbetween the lyrics of “Nikita” and “Natasha” andthat since 2001, he has consistently communicated

with Defendants John, Taupin, and their attorneysdemanding compensation for the unauthorized useof his lyrics. (Id. ¶¶ 14–15.)

FN1. Although the statute of limitationsfor copyright infringement is three yearsand starts to run when the plaintiff learns,or should have learned, that the defendantwas violating his rights, see Gaiman v. Mc-Farlane, 360 F.3d 644, 653 (7th Cir.2004),Defendants did not move to dismiss Hobbs'Complaint as untimely.

In 1985, Big Pig copyrighted the musical com-position entitled “Nikita”—Certificate of Registra-tion PA0000267371/1985–11–18. (Id. ¶ 27.) Hobbsmaintains that the authorship on the “Nikita” copy-right application lists John and Taupin, althoughHobbs alleges that John and Taupin never sought orobtained his permission to copy, duplicate, perform,or otherwise use his lyrics to “Natasha” in their mu-sical composition and sound recording of “Nikita.”(Id. ¶¶ 27–28.)

II. Songs' LyricsThe lyrics to Defendants' song “Nikita” are as

follows:

Hey Nikita is it cold

In your little corner of the world

You could roll around the globe

And never find a warmer soul to know

Oh I saw you by the wall

Ten of your tin soldiers in a row

With eyes that looked like ice on fire

The human heart a captive in the snow

Oh Nikita you will never know, anything aboutmy home

I'll never know how good it feels to hold you







Nikita I need you so

Oh Nikita is the other side of any given line intime

Counting ten tin soldiers in a row

Oh no, Nikita you'll never know

Do you ever dream of me

Do you ever see the letters that I write

When you look up through the wire

*3 Nikita do you count the stars at night

And if there comes a time

Guns and gates no longer hold you in

And if you're free to make a choice

Just look towards the west and find a friend






Nikita I need you so

Oh Nikita is the other side of any given line intime

Counting ten tin soldiers in a row


Counting ten tin soldiers in a row.

(R. 23–10, Ex. H, “Nikita” lyrics.)

Hobbs' lyrics to “Natasha” are:

You held my hand a bit too tight

I held back the tears

I wanted just to hold you, whisper in your ear

I love you, girl I need you

Natasha ... Natasha ... I didn't want to go

Natasha ... Natasha ... the freedom you'll neverknow

the freedom you'll never know

But a Ukraine girl and a UK guy just never stooda chance

Never made it to the movies, never took you to adance

You never sent me a Valentine, I never gave youflowers

There was so much I had to say

But time was never ours

You sailed away—no big goodbyes

Misty tears in those pale blue eyes



Run my fingers through your hair




You held my hand a bit too tight

I held back the tears









But Natasha ..... Remember me [spoken quietly ].

(R. 23–11, Ex. I, “Natasha” lyrics.)

ANALYSISI. Copyright Infringement Claim—Count I

To establish a copyright infringement claim, aplaintiff must show: “(1) ownership of a validcopyright; and (2) unauthorized copying of con-stituent elements of the work that are original.” SeePeters v. West, 692 F.3d 629, 632 (7th Cir.2012)(citation omitted); see also Nova Design Build, Inc.v. Grace Hotels, LLC, 652 F.3d 814, 817 (7thCir.2011). As to the second requirement, due to therarity of direct evidence of copying, “a plaintiffmay prove copying by showing that the defendanthad the opportunity to copy the original (oftencalled ‘access') and that the two works are‘substantially similar,’ thus permitting an inferencethat the defendant actually did copy the original.”Peters, 692 F.3d at 633; see also Nova DesignBuild, 652 F.3d at 817–18. The Court focuses onthe “substantially similar” aspect of this require-ment because it is dispositive.FN2 The substantiallysimilar test, also known as the “ordinary observer”test, requires the Court to consider “whether the ac-cused work is so similar to the plaintiff's work thatan ordinary reasonable person would conclude thatthe defendant unlawfully appropriated the plaintiff'sprotectible expression by taking material of sub-stance and value.” Incredible Tech., Inc. v. VirtualTech., Inc., 400 F.3d 1007, 1011 (7th Cir.2005)(citation omitted). The Seventh Circuit has recentlysimplified the test for substantial similarity,namely, whether “the two works share enoughunique features to give rise to a breach of the dutynot to copy another's work.” Peters, 692 F.3d at

633–34. “The test for substantial similarity is anobjective one.” JCW Inv., Inc. v. Novelty, Inc., 482F.3d 910, 916 (7th Cir.2007).FN3

FN2. Defendants concede ownership andaccess solely for purposes of this motion todismiss.

FN3. Because the test for substantial simil-arity is an objective test, district courtsmay determine copyright infringementclaims at the motion to dismiss stage of lit-igation. See, e.g., Peters v. West, 776F.Supp.2d 742 (N.D.Ill.2011), aff'd Petersv. West, 692 F.3d 629 (7th Cir.2012);O'Leary v. Books, No. 08 C 0008, 2008WL 3889867, at *2–3 (N.D.Ill. Aug.18,2008).

*4 In their motion to dismiss, Defendants askthe Court to compare the lyrics of the two songs“Nikita” and “Natasha” pursuant to Rule 10(c) ar-guing that the lyrics are not substantially similar.See Peters, 692 F.3d at 633. Hobbs does not objectto Defendants' Rule 10(c) request, and because theComplaint references both songs' lyrics and the lyr-ics are central to this lawsuit, it is appropriate underRule 10(c) and Seventh Circuit case law for theCourt to consider Defendants' attachments contain-ing the songs' lyrics. See Geinosky, 675 F.3d at 745n. 1; Wigod, 673 F.3d at 556; Peters v. West, 776F.Supp.2d 742, 747 (N.D.Ill.2011).

A. Non–Protectable ElementsThere are several limitations to copyright pro-

tection that are relevant to the parties' arguments.First, it is well-established that common words andphrases are not protected under the Copyright Act.See Peters, 692 F.3d at 635–36 (The ubiquity of“what does not kill me, makes me stronger” sug-gests that Defendants lyrics do not infringe onPlaintiff's song); Johnson v. Gordon, 409 F.3d 12,24 (1st Cir.2005) (“You're the one for me” toocommon and trite to warrant copyright protection);Acuff–Rose Music, Inc. v. Jostens, Inc., 155 F.3d140, 144 (2d Cir.1998) (phrase “you've got to stand






















































for something, or you'll fall for anything” too com-mon to accord copyright protection); 37 C.F.R. §202.1. In other words, “phrases that are ‘standard,stock, ... or that necessarily follow from a commontheme or setting’ may not obtain copyright protec-tion.” Lexmark Int'l Inc. v. Static Control Compon-ents, Inc., 387 F.3d 522, 535 (6th Cir.2004)(citation omitted).

In addition, it is “a fundamental tenet of copy-right law that the idea is not protected, but the ori-ginal expression of the idea is.” JCW Inv., 482 F.3dat 917. Put differently, the “Copyright Act protectsthe expression of ideas, but exempts the ideas them-selves from protection.” Seng–Ting Ho, 648 F.3d at497 (citation omitted). As the Supreme Court re-cently explained:

The idea/expression dichotomy is codified at 17U.S.C. § 102(b): “In no case does copyright pro-tec[t] ... any idea, procedure, process, system,method of operation, concept, principle, or dis-covery ... described, explained, illustrated, or em-bodied in [the copyrighted] work.” “Due to this[idea/expression] distinction, every idea, theory,and fact in a copyrighted work becomes instantlyavailable for public exploitation at the moment ofpublication”; the author's expression alone gainscopyright protection.

Golan v. Holder, ––– U.S. ––––, 132 S.Ct. 873,890, 181 L.Ed.2d 835 (2012) (citing Harper & RowPublishers, Inc. v. National Enter., 471 U.S. 539,556, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)(“idea/expression dichotomy strike[s] a definitionalbalance between the First Amendment and theCopyright Act by permitting free communication offacts while still protecting an author's expression”)(internal quotation marks omitted)). “This limita-tion on copyright protection promotes the purposeof the Copyright Act by assuring ‘authors the rightto their original expression,’ but also by‘encourag[ing] others to build freely upon the ideasand information conveyed by a work.’ ”Seng–Tiong Ho, 648 F.3d 497 (citation omitted).

*5 Furthermore, the scènes à faire doctrineprohibits copyright protection for “incidents, char-acters or settings which are as a practical matter in-dispensable, or at least standard, in the treatment ofa given topic.” Incredible Tech., 400 F.3d at 1012(citation omitted). In other words, “a copyrightowner can't prove infringement by pointing to fea-tures of his work that are found in the defendant'swork as well but that are so rudimentary, common-place, standard, or unavoidable that they do notserve to distinguish one work within a class ofworks from another.” Bucklew v. Hawkins, Ash,Baptie & Co., LLP, 329 F.3d 923, 929 (7thCir.2003).

B. Substantially Similar TestHobbs sets forth the following areas of similar-

ity in the songs' lyrics to establish that Defendantsinfringed his copyrighted lyrics to “Natasha”:

• A theme of impossible love between a Westernman and a Communist woman during the ColdWar;

• Both songs have descriptions of a woman's paleeyes;

• Both songs reference sending correspondence inthe mail;

• Both songs repeat and emphasize a concept ofevents that never happened—the word “never”appears 12 times in “Natasha” and 11 times in“Nikita”;

• In the chorus, the title names are each repeatedfour times and then combined with the phrases“You'll never know,” “you will never know,” “tohold you,” and “I need you;”

• The phrase “to hold you” is repeated three timesin Plaintiff's song, and four times in Defendants'song;

• Each song has a one-word, phonetically-similartitle consisting of a three-syllable Russian name,both beginning with the letter “N” and ending




http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1000547&DocName=37CFRS202.1&FindType=L








http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1000546&DocName=17USCAS102&FindType=L&ReferencePositionType=T&ReferencePosition=SP_a83b000018c76

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1000546&DocName=17USCAS102&FindType=L&ReferencePositionType=T&ReferencePosition=SP_a83b000018c76














with the letter “A;” and

• The title name is repeated 13 times in “Natasha”and 14 times in “Nikita.”

Of these listed similarities, there are certainthemes or ideas that Hobbs argues are protected un-der the Copyright Act, including the impossiblelove affair during the Cold War, a postal theme, andreferences to a woman's pale eyes. These themesare not protected under the Copyright Act becausethey are rudimentary, commonplace, and standardunder the scènes à faire doctrine. See Atari, 672F.2d at 915 (“such stock literary devices are notprotectible by copyright”). Moreover, phrases andthemes that are common, trite, or clichéd are notprotected under copyright laws. See Peters, 776F.Supp.2d at 750; 37 C.F.R. § 202.1. As the Sev-enth Circuit teaches: “If standard features could beused to prove infringement, not only would there begreat confusion because it would be hard to knowwhether the alleged infringer had copied the featurefrom a copyrighted work or from the public do-main, but the net of liability would be cast toowide; authors would find it impossible to writewithout obtaining a myriad [ ] copyright permis-sions.” See Gaiman v. McFarlane, 360 F.3d 644,659 (7th Cir.2004).

The theme of a Cold War love affair, for ex-ample, is not protected under the Copyright Act be-cause this was a common theme in songs, books,and movies for decades. See Hoehling v. UniversalCity Studios, Inc., 618 F.2d 972, 979 (2d Cir.1980)(“Because it is virtually impossible to write about aparticular historical era or fictional theme withoutemploying certain ‘stock’ or standard literarydevices, we have held that scènes à faire are notcopyrightable as a matter of law.”); see also Lex-mark Int'l Inc., 387 F.3d at 535 (“phrases that are‘standard, stock, ... or that necessarily follow froma common theme or setting’ may not obtain copy-right protection.”). In particular, the theme of aCold War love affair is present in other songs writ-ten during the same time period that Hobbs wrote“Natasha.” FN4 Also, the reference to a woman's

light-colored eyes is also too common or clichéd tobe protectable expression. In fact, in 1982, whichwas the same year Hobbs wrote “Natasha,” Defend-ant John wrote a love song called “Blue Eyes.” FN5

Likewise, a postal theme in a love song is verycommon in popular music.FN6

FN4. See Devo, “Cold War,” http://www.lyricsfreak.com/d/devo/cold+war_20039646.html (“I heard it said that all isfair, In love and war so what's life for, Theboy and girl, Two separate worlds, Theendless tug of war, Uh!”); David Bowie &Brian Eno, “Heroes,” ht-tp://www.lyricsfreak.com/d /dav-id+bowie/heroes+single+version_20962708.html (“I, I can remember (I re-member), Standing by the wall (By thewall), And the guns, shot above our heads(Over our heads), And we kissed, asthough nothing could fall (Nothing couldfall”)).

FN5. See Elton John & Gary Osborne,“Blue Eyes,” http://www.lyricsfreak.com/e/elton+john/blue+eyes_20046435.html

FN6. See Dario Marianelli, “Love Letters,”as performed by Elton John, ht-tp://www.lyricsfreak.com/e/elton+john/love+letters_20046251.html

*6 Further, the references to the postal themeare expressed differently. Hobbs' lyrics in“Natasha” are “you never sent me a Valentine” and“Nikita” states “do you ever see the letters that Iwrite?” Likewise, the descriptions of women's eyesare expressed differently, namely, Taupin's andJohn's lyrics state: “With eyes that looked like iceon fire,” whereas Hobbs' lyrics are “Misty tears inthose pale blue eyes.” See Peters, 692 F.3d at 636(“entirely different lines” are not substantially sim-ilar).



















Next, Hobbs argues that the songs' lyrics aresubstantially similar because they emphasize aconcept of events that never happened and that theword “never” appears multiple times in both songs,as well as the phrase “to hold you.” Again, theconcept of events that never happened is too gener-ic to constitute an original expression protected un-der the Copyright Act. See Bucklew, 329 F.3d at929–30. Also, the word “never” and the phrase “tohold you” are not sufficiently unique to be protect-able. See Peters, 692 F.3d at 633–34.

Hobbs additionally points to the chorus, alsoknown as “hook,” of each song, arguing that thetitle/women's names are each repeated four timesand then the names are combined with the phrases“you'll never know,” “you will never know,” “tohold you,” and “I need you.” The phrases, “you'llnever know,” “to hold you,” and “I need you” arecommonly used in musical lyrics.FN7 Also, shortphrases that do not express an “appreciable amountof original text” are not subject to copyright protec-tion. See Alberto–Culver Co. v. Andrea Dumon,Inc., 466 F.2d 705, 711 (7th Cir.1972); 37 C.F.R. §202.1.

FN7. See, e.,g., Mindi Adair, Matthew, Ha-gen, “You'll Never Know,” performed byFrank Sinatra, http://www.lyricsfreak.com/f/frank+sinatra/youll+never+know_20055900 .html; KeithMoon, “I Need You,” ht-tp://www.lyricsfreak.com/w/who/i+need+you_ 20146459.html.

Meanwhile, although Hobbs argues that the lyr-ics are substantially similar because “[e]ach songhas a one-word, phonetically-similar title consistingof a three-syllable Russian name, both beginningwith the letter ‘N’ and ending with the letter ‘A,’ “he acknowledges that the titles “Natasha” and“Nikita” are not identical. Because “titles by them-selves are not subject to copyright protection,” seePeters, 776 F.Supp.2d at 749, the comparison of thetwo titles is not relevant to the Court's analysis, es-pecially because they are not the same. See 37

C.F.R. § 202.1; see also Wihtol v. Wells, 231 F.2d550, 553 (7th Cir.1956). Furthermore, both namesare popular—a quick search on the United StatesCopyright Office's Registered Works Database re-veals that there are other songs entitled “Natasha”and “Nikita” that have copyright protection. See ht-tp//cocatalog.loc.gov.

Hobbs also contends that the songs are substan-tially similar because the women's names are re-peated approximately thirteen times in each song,including the repetition of the names in the hook.Although both songs repeat the women's namesthroughout the song, courts have recognized that inpopular music, most songs are “relatively short andtend to build on or repeat a basic theme.” See Selle,741 F.3d at 904; see also Johnson, 409 F.3d at 22;Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2dCir.1988). Indeed, repeating the name of a love in-terest is common in popular music.FN8

FN8. See Raymond Davies, “Lola,” http://www.lyricsfreak.com/k/kinks/lola_20079021.html; Gordon Sumner, “Roxanne,” ht-tp://www.lyricsfreak.com/j/juliet+simms/roxanne_21016751.html

*7 Thus, after filtering out the non-protectedelements, no similarities exist between the twosongs except for generic themes, words, andphrases, as discussed above. In other words, theubiquity of the common sayings sprinkledthroughout both “Nikita” and “Natasha,” along withthe repeated use of these commons phrases and say-ings in other songs, establish that Defendants' lyricsto “Nikita” do not infringe on Hobbs' lyrics to“Natasha.” See Peters, 692 F.3d at 635–36. In sum,the similarities highlighted by Hobbs are not suffi-ciently unique or complex to establish copyright in-fringement. See id. at 635; Selle v. Gibb, 741 F.2d896, 904 (7th Cir.1984).

Indeed, Hobbs all but admits that these ele-ments are not protectable individually, but arguesthat his unique combination of these elements cre-
































ates a protectable, copyrightable work. (R. 31,Hobbs' Resp., at 7.) As such, Hobbs asks the Courtto compare the “total concept and feel” of the twoworks without looking at whether the copied partsare protected under the Copyright Act. See Atari,672 F.2d at 614. Despite Hobbs' argument, the Sev-enth Circuit has made it abundantly clear that “[i]fthe copied parts are not, on their own, protectableexpression, then there can be no claim for infringe-ment of the reproduction right.” Peters, 692 F.3d at632; see also Incredible Tech., 400 F.3d at 1011–12(“despite what the ordinary observer might see, thecopyright laws preclude appropriation of only thoseelements of the work that are protected by the copy-right.”).

Nevertheless, when viewing these elements incombination, Hobbs has not plausibly alleged that“Nikita” infringes on “Natasha” because the twoworks do not share any unique features that “giverise to a breach of the duty not to copy another'swork.” Peters, 692 F.3d at 633–34; see Selle, 741F.3d at 904. Moreover, there are many dissimilarit-ies between the two songs, including that “Natasha”is about a man from the United Kingdom and anUkrainian woman who met, but never had a chanceafter the woman sailed away. Whereas, “Nikita” isabout an East German woman looking through thewires of the Berlin wall with guns and gates hold-ing her in and soldiers guarding the area. Also, it isapparent from the lyrics in “Nikita” that the manand woman never met. In short, the songs' lyrics aredifferent in content and tell different stories. SeePeters, 776 F.Supp.2d at 751. Therefore, even as-suming that the elements highlighted by Hobbs areprotectable, an ordinary reasonable person wouldnot conclude that Defendants unlawfully appropri-ated Hobbs' lyrics. See Incredible Tech., 400 F.3dat 1011. The Court thus grants Defendants' motionto dismiss Hobbs' copyright claim.

II. State Law Claims—Counts II and IIINext, Defendants argue that the Court should

dismiss Plaintiff's state law claims for a construct-ive trust and an accounting—both equitable remed-

ies under Illinois law—based on preemption. See 17U.S.C. § 301(a). In his response brief, Hobbs doesnot address Defendants' preemption argument. SeeSteen v. Myers, 486 F.3d 1017, 1020 (7th Cir.2007)(absence of discussion in legal memoranda amountsto abandonment of claims). For the sake of com-pleteness, however, the Court will determinewhether the Copyright Act preempts Hobbs' statelaw claims for equitable relief.

*8 “The Copyright Act preempts ‘all legal andequitable rights that are equivalent to any of the ex-clusive rights within the general scope of copyrightas specified by section 106’ and are ‘in a tangiblemedium of expression and come within the subjectmatter of copyright as specified by sections 102 and103.’ ” Seng–Tiong Ho, 648 F.3d at 500 (quoting17 U.S.C. § 301(a)). The Seventh Circuit has“distilled from the language of § 301 two elements:‘First, the work in which the right is asserted mustbe fixed in tangible form and come within the sub-ject matter of copyright as specified in § 102.Second, the right must be equivalent to any of therights specified in § 106.’ ” Id. (quoting BaltimoreOrioles, Inc. v. Major League Baseball PlayersAss'n, 805 F.2d 663, 674 (7th Cir.1986)).

Because the material to which Hobbs assertsrights—the lyrics of the song “Natasha”—are ex-pressions in tangible form, the first element of pree-mption is satisfied. See 17 U.S.C. § 101 (“A workis ‘fixed’ in a tangible medium of expression whenits embodiment in a copy or phonorecord, by or un-der the authority of the author, is sufficiently per-manent or stable to permit it to be perceived, repro-duced, or otherwise communicated for a period ofmore than transitory duration.”); see also Johnsonv. Cypress Hill, 641 F.3d 867, 870 n. 5 (7thCir.2011) (“a ‘composition’ copyright [ ] protectsrights in the underlying work, i.e., the music and, ifapplicable, lyrics.”) (citing 17 U.S.C. § 102(a)(2)).

“The second element for preemption is that therights in the state law claims be equivalent to theexclusive rights under the Copyright Act.”Seng–Tiong Ho, 648 F.3d at 501. The exclusive


































http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=1000546&DocName=17USCAS102&FindType=L&ReferencePositionType=T&ReferencePosition=SP_d86d0000be040

rights set forth in the Copyright Act, include theright to reproduce the copyrighted work, preparederivative works, distribute copies of the work, per-form the copyrighted work publicly, and display thecopyrighted work publicly. See HyperQuest, Inc. v.N'Site Solutions, Inc., 632 F.3d 377, 382 (7thCir.2011).

Here, Hobbs' claim for an accounting reliesupon 17 U.S.C. § 504, regarding Hobbs' recoveryof all profits that are attributable to Defendants' actsof infringement. (Compl.¶ 44.) Furthermore, Hobbsbases his constructive trust claim upon Defendants'alleged infringement of his copyright of “Natasha.”(Id. ¶ 42.) Because Hobbs' claims for state law rem-edies are entirely based on his copyright claim, theCopyright Act preempts them. See Evan LawGroup LLC v. Taylor, No. 09 C 4896, 2010 WL5135904, at *7 (N.D.Ill.Dec.9, 2010) (“CopyrightAct preempts rights, including state common lawremedies, that are equivalent to an exclusive rightwithin the general scope of copyright as specifiedin federal copyright law.”); see also Heriot v.Byrne, No. 07 C 2272, 2008 WL 5397496, at *4(N.D.Ill.Dec.23, 2008) (equitable accounting claimpreempted by Copyright Act). The Court thereforegrants Defendants' motion to dismiss the construct-ive trust and accounting claims as alleged Counts IIand III of the Complaint.

CONCLUSION*9 For the these reasons, the Court grants De-

fendants' motion to dismiss pursuant to FederalRule of Civil Procedure 12(b)(6) and dismisses thislawsuit in its entirety with prejudice.

N.D.Ill.,2012.Hobbs v. JohnSlip Copy, 2012 WL 5342321 (N.D.Ill.), 2012Copr.L.Dec. P 30,336

END OF DOCUMENT



















EXHIBIT 15



United States District Court,N.D. Illinois,

Eastern Division.Grace Jo P. O'LEARY, Plaintiff,

v.Mira BOOKS, a division of Harlequin Enterprises

Ltd.; Maureen Walters, Vice President, CurtisBrown, Ltd.; Josie Schoel, Literary Assistant,

Curtis Brown, Ltd.; and Laura Caldwell, Author,Defendants.

No. 08 CV 08.Aug. 18, 2008.

Grace Jo P. O'Leary, Oak Park, IL, pro se.

Steven P. Mandell, Brendan J. Healey, John DavidFitzpatrick, Mandell, Menkes LLC, Stephen M.Gallagher, Propes & Kaveny, LLC, Chicago, IL, forDefendants.

AMENDED MEMORANDUM OPINION ANDORDER

ROBERT W. GETTLEMAN, District Judge.*1 Plaintiff Grace Jo P. O'Leary has filed a pro

se complaint FN1 for copyright infringement pursu-ant to the Copyright Act of 1976, 17 U.S.C. 101,against defendants Mira Books, a division of Harle-quin Enterprises Ltd.; Maureen Walters, Vice Pres-ident, Curtis Brown, Ltd .; Josie Schoel, LiteraryAssistant, Curtis Brown, Ltd.FN2; and Laura Cald-well. Defendants Mira Books, Walters, and Cald-well have filed motions to dismiss the complaint forfailure to state a claim pursuant to Fed.R.Civ.P.12(b)(6), and defendant Caldwell has filed a motionto dismiss pursuant to Fed.R.Civ.P. 12(b)(5) for im-proper service of process. For the reasons discussedbelow, the court grants defendants' 12(b)(6) mo-tions and denies defendant Caldwell's 12(b)(5) mo-tion as moot.

FN1. Plaintiff was represented by counselfrom March 18, 2008, through April 15,2008. Both her complaint and her responseto defendants' Fed.R.Civ.P. 12(b)(5) and12(b)(6) motions were filed pro se.

FN2. No appearance has been filed in theinstant case on behalf of defendant Schoel,probably because the record does not in-dicate that she has been served with pro-cess. Because plaintiff fails to state a claimagainst defendant Schoel, however, thecourt will dismiss all claims against hersua sponte.

FACTSFN3

FN3. For purposes of a motion to dismiss,the court accepts all well-pleaded allega-tions as true and draws all reasonable in-ferences in favor of the plaintiff. TravelAround the World, Inc. v. Kingdom ofSaudi Arabia, 73 F.3d 1423, 1428 (7thCir.1996).

In October 2004, plaintiff began drafting a nov-el entitled What If. Plaintiff completed her firstdraft on January 27, 2005, and continued to reviseher manuscript thereafter. On August 31, 2005,plaintiff attended a book signing for defendantCaldwell, an author with whom plaintiff had somefamiliarity. FN4 Plaintiff told Caldwell about hermanuscript, and Caldwell suggested she contact de-fendant Walters, her literary agent. Plaintiff calledWalters at Curtis Brown, Ltd., a literary agency,and was given the e-mail address of defendantSchoel, Walters's assistant. Plaintiff submitted acopy of her manuscript to defendant Schoel onSeptember 30, 2005. On November 8, 2005, Schoelsent plaintiff an e-mail stating that the manuscript“didn't hold [her] interest” and that Curtis Brownwas not interested in publishing her novel. Schoeldid not return the copy of the manuscript toplaintiff.


















FN4. According to plaintiff, her formerhusband was a childhood friend of defend-ant Caldwell's father. Additionally, in1993, plaintiff worked for a short period ina Chicago law firm where defendant Cald-well was an associate.

On August 26, 2006, plaintiff wrote to defend-ant Schoel to inform her that she had revised WhatIf. When defendant Schoel did not respond, plaintiffconcluded that some infringement of hermanuscript had taken place.FN5 Plaintiff thenbegan a “search” for “suspected infringements” ofher manuscript by reading back issues of“Publishers Weekly” and looking in Borders book-stores in Oak Park and Chicago, Illinois. On August11, 2007, plaintiff saw a notice that defendant Cald-well would soon publish a new novel entitled TheGood Liar. Plaintiff purchased two copies of thatbook, published by defendant Mira Books, onDecember 23, 2007.

FN5. Plaintiff also claims that some in-fringement of her work occurred after shesubmitted a copy of her manuscript to a“Chicago professor” for review and editingat some point between January 28, 2005,and February 2, 2005.

According to plaintiff, defendant Caldwell'snovel copies portions of What If. Plaintiff'smanuscript concerns an aging musician and his re-lationship with a paralegal. Defendant Caldwell'sThe Good Liar is about a counter-terrorist organiza-tion called “The Trust.” Plaintiff has identified pas-sages of Caldwell's novel that she believes havebeen copied from her manuscript. These passagesdemonstrate that both novels, among other things,are set in the Chicago area, have characters withblonde hair, discuss sex and alcohol, and make ref-erences to bookcases and coffee.

DISCUSSIONDefendants Mira Books, Walters, and Caldwell

have filed motions to dismiss pursuant toFed.R.Civ.P. 12(b)(6). The purpose of a motion to

dismiss is to test the sufficiency of the complaint,not to decide the merits. Gibson v. City of Chicago,910 F.2d 1510, 1520 (7th Cir.1990). Federal noticepleading “requires ‘only a short and plaint state-ment of the claim showing that the pleader is en-titled to relief.’ “ Erickson v. Pardus, --- U.S. ----,127 S.Ct. 2197, 167 L.Ed.2d 1081 (June 4, 2007)(citing Bell Atlantic Corp. v. Twombley, --- U.S. ----, 127 S.Ct. 1955, 1964, 167 L.Ed.2d 929 (2007).When ruling on a motion to dismiss, When rulingon a motion to dismiss, the court must accept allfactual allegations in the complaint as true anddraw all reasonable inferences in favor of theplaintiff. Moranski v. General Motors Corp., 433F.3d 537, 539 (7th Cir.2005). “Factual allegationsmust be enough to raise a right to relief above thespeculative level.” Bell Atlantic, 127 S.Ct. at1964-65.

Copyright Infringement*2 Plaintiff claims that defendant Caldwell

copied portions of What If in her novel The GoodLiar, which defendant Mira Books then published.To establish a claim of copyright infringement,plaintiff must demonstrate (1) ownership of a validcopyright, and (2) “copying” of the original con-stituent elements of the work. JCW Investments,Inc. v. Novelty, Inc., 289 F.Supp.2d 1023, 1031(N.D.Ill.2003).

The parties do not dispute that plaintiff pos-sesses a valid copyright. The court will thereforefocus only on the second prong of the test for copy-right infringement. Plaintiff alleges that The GoodLiar directly copies portions of her manuscript.Plaintiff, however, has provided no support for herassertion; the comparison chart she provides hercomplaint does not make reference to any directlyquoted passages.FN6 Plaintiff may still establishcopying, though, by demonstrating that “the de-fendant had access to the copyrighted work and theaccused work is substantially similar to the copy-righted work.” Susan Wakeen Doll Co., Inc. v.Ashton Drake Galleries, 272 F.3d 441, 450 (7thCir.2001). Substantial similarity exists when “the




























accused work is so similar to the plaintiff's workthat an ordinary reasonable person would concludethat the defendant unlawfully appropriated theplaintiff's protectible expression by taking materialof substance and value.” Wildlife Exp. Corp. v.Carol Wright Sales, Inc., 18 F.3d 502, 508-09 (7thCir.1994).

FN6. Plaintiff does claim that both novelsuse the phrase “guilty as charged.” Usageof such a common phrase does not consti-tute infringement. See, e.g., Bucklew v.Hawkins, Ash, Baptie & Co., 329 F.3d 923,929 (7th Cir.2003) (no infringement forfeatures that are “so rudimentary, so com-monplace, standard or unavoidable thatthey do not serve to distinguish one workwithin a class of works from another”).

There is simply no substantial similaritybetween the two written works at issue. As dis-cussed above, plaintiff's manuscript concerns therelationship between a rock star and a paralegal,while defendant Caldwell's novel tells the story of acounter-terrorist unit. Plaintiff, in fact, does not al-lege that defendant Caldwell appropriated any plotelements from her manuscript. Plaintiff claims onlythat certain passages in the two novels are similar.The passages identified by plaintiff as“substantially similar,” however, are nothing morethan references to common things, places, and emo-tional states. The fact that both written works referto coffee, bookcases, and blonde women hardlymakes them substantially similar; a random com-parison of any two books at the local bookstorewould likely reveal the very same references.Plaintiff cannot establish that the works at issue aresubstantially similar. For that reason, the courtgrants defendants' motions to dismiss pursuant toFed.R.Civ.P. 12(b)(6).

Potential State Law ClaimsPlaintiff alleges that defendant Mira Books has

“engaged in unfair trade practices and unfair com-petition” by publishing The Good Liar. These alleg-ations could possibly be construed as common law

claims for which plaintiff seeks equitable relief.Defendant Mira Books asserts that these claims arepreempted by the Copyright Act.

The Seventh Circuit uses a two-part test to de-termine whether federal copyright law preempts astate law claim. First, the work in which the copy-right is asserted must be “fixed in a tangible medi-um of expression” and come within the subject mat-ter of copyright as specified in Section 102 of theCopyright Act. Baltimore Orioles, Inc. v. MajorLeague Baseball Players Ass'n, 805 F.2d 663, 674(7th Cir.1986). Plaintiff's work is in written form,and plaintiff has registered for a copyright, bringingher manuscript within the subject matter of theCopyright Act.

*3 Second, the right asserted by plaintiff mustbe equivalent to any of the rights specified in 106of the Act.FN7 Id. at 677-78. Plaintiff asserts thatdefendant Mira Books published and marketed TheGood Liar, which infringed on her right to repro-duce and distribute What If as protected by Section106 of the Act. Plaintiff's claim of “unfair tradepractices and unfair competition” are based on thevery same publishing and marketing of The GoodLiar and involve the same rights protected by Sec-tion 106 of the Act. Because both prongs of the testare satisfied, the court finds that any potential statelaw claims alleged by plaintiff are preempted by theCopyright Act.

FN7. Section 106 of the Copyright Actgrants the owner of a copyright the exclus-ive rights to reproduce (whether in originalor derivative form), distribute, perform,and display the copyrighted work.

CONCLUSIONFor the reasons discussed above, the court

grants defendants' motions to dismiss pursuant toFed.R.Civ.P. 12(b)(6). The court also dismisses thecomplaint as to defendant Schoel. Defendant Cald-well's 12(b)(5) motion is denied as moot. Both dis-missals are with prejudice.




















N.D.Ill.,2008.O'Leary v. BooksNot Reported in F.Supp.2d, 2008 WL 3889867(N.D.Ill.)

END OF DOCUMENT




EXHIBIT 16



United States District Court,E.D. Pennsylvania.Brian A. DALEY

v.GRANADA U.S. PRODUCTIONS, et al.

No. Civ.A. 02–2629.Jan. 29, 2003.

MEMORANDUM OPINION AND ORDERWEINER, J.

*1 The plaintiff brought this copyright in-fringement action, claiming the defendants releaseda television and video production entitled Princessof Thieves which plaintiff contends infringes on hiscopyrighted musical play, sHerwood. Presently be-fore the court is the motion of the defendants forjudgment on the pleadings. Since resolution of themotion requires us to examine documents outsidethe pleadings, we will convert the motion to a mo-tion for summary judgment and enter judgment infavor of the defendants and against the plaintiff.

Defendants' motion is based solely on thethreshold issue of whether the copyrightable ele-ments of the two works are so substantially similarthat plaintiff may proceed with a copyright in-fringement action.FN1 The Court can decide thisissue as a matter of law by viewing the two works.The Court has viewed the two works, read all thesubmissions by the parties and reviewed the parties'expert reports. We conclude that the copyrightableelements of the two works are not substantiallysimilar.

FN1. Defendants do not dispute thatplaintiff filed a copyright for his work, ori-ginally titled Sherwood Knights and de-scribed as a musical play on July 29, 1991and subsequently filed additional copy-rights covering songs and scripts with the

latest filing on August 29, 1997.

Summary judgment is appropriate in a casewhere the issue is whether two works are substan-tially similar if “no reasonable juror could find sub-stantial similarity of ideas and expression[,]” view-ing the evidence in the light most favorable to thenon-moving party. Shaw v. Lindheim, 919 F.2d1353, 1355 (9th Cir.1990).

Because direct evidence of copying is seldomavailable, a claimant may prove copying circum-stantially by showing both that the two works at is-sue are substantially similar and that the allegedlyinfringing party had access to the allegedly in-fringed work.FN2 Whelan Associates v. JaslowDental Lab, 797 F.2d 1222, 1231 (3d Cir.1986),cert. denied, 479 U.S. 1031 (1987). Substantialsimilarity is premised upon two findings. First,there must be sufficient similarity between the twoworks at issue to conclude that the alleged infringerused the copyrighted work in producing the al-legedly infringing work. See Whelan Assocs., 797F.2d at 1232. This test, known as the extrinsic test,focuses on the objective similarities in specific ex-pressive elements, such as plot, themes, dialogue,mood, settings, pace and sequence of events in thetwo works. Kouf v. Walt Disney Pictures and Tele-vision, 16 F.3d 1042, 1045 (9th Cir.1994). With re-gard to the first finding, the trier of fact may beaided by expert testimony. Second, there must besufficient intrinsic similarity for an ordinary lay ob-server to conclude that there has been an unlawfulappropriation. Id. Because we find that plaintiff hasnot raised a triable issue of fact under the extrinsictest, we will grant summary judgment in favor ofthe defendants.

FN2. For purposes of the motion for sum-mary judgment only, defendants do notcontest the issue of access. However, thisadmission of access is a factor to be con-sidered in favor of plaintiff. Shaw v. Lind-heim, 919 F.2d 1353, 1362 (9th Cir.1990);

Page 1Not Reported in F.Supp.2d, 2003 WL 21294986 (E.D.Pa.)(Cite as: 2003 WL 21294986 (E.D.Pa.))
























Sid and Marty Krofft Television Prods. Inc.v. McDonald's Corp., 562 F.2d 1157, 1172(9th Cir.1977).

General plot ideas and themes lie in the publicdomain and are not protected by copyright law.Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th

Cir.1984). In addition, all situations and incidentswhich flow naturally from a basic plot premise,known as scenes a faire, are also not entitled tocopyright protection. Berkic v. Crichton, 761 F.2d1289, 1293 (9th Cir.1985). Copyright law protects awriter's expression of ideas, not the ideas them-selves. Feist Publications v. Rural Tel. Serv. Co.,499 U.S. 340, 345–51 (1991); Shaw v. Lindheim,919 F.2d 1353, 1356 (9th Cir.1990).

*2 There is no doubt that the two works doshare many of the same characters, as well as a sim-ilar setting and certain common action sequences.However, this sharing of common features is onlynatural since both works are derived from theRobin Hood legend which has long ago been part ofthe public domain and which has been the subjectof numerous movies, television shows and comicbooks. Thus, both works may properly containscenes of archery tournaments, sword fighting, Not-tingham Castle, Sherwood Forest, appearances byRobin Hood, his Merry Men, the evil Sheriff ofNottingham and the tyrannical Prince John andsuch themes as Prince John trying to displace hisbrother, King Richard, the capture of Robin Hoodby evil forces and his release by the forces of good..

However, a simple viewing of the two worksreveals that they are entirely different with respectto plot, themes, sequence of events, mood and set-ting. sHerwood is a musical play with comic over-tones. The vast majority of the story is told throughsong and dance.

The play finds the evil Prince John trying totake control of the throne from his brother, KingRichard. After Prince John imprisons King Richard,Robin Hood's ex-wife, Maid Marian, seeks outRobin Hood to persuade him to help King Richard.

Margaret, a witch, agrees to help Prince John bykilling Robin Hood to prevent him from savingKing Richard. In exchange, Prince John agrees toobtain for Margaret the magic Sands of Time whichwill give her eternal youth and power.

Robin Hood's teenage daughter, Robyn, is liv-ing with her mother in Nottingham Castle. She doesnot want to pursue the traditional feminine role ofher mother. Robyn has fallen in love with Junior,one of Robin Hood's Merry Men from whom sheconceals her relationship to Robin Hood. Robyn de-cides to join her father and the Merry Men in Sher-wood Forest by disguising herself in her father's oldclothes. Her identity is revealed almost immediatelywhen her hat comes off while celebrating her defeatof Junior in an archery contest. Because he fears forher safety, Robin hood rejects Robyn's plea to livein Sherwood Forest.

Meanwhile, Margaret the witch lures RobinHood into a cave where she and her vixens kill himthrough supernatural forces. After informing Robynof her father's death, Junior assuages Robyn's desireto be the equal of men by telling her that in hisview, women are the stronger sex. He also tries topersuade Robyn to accompany him to save KingRichard. After overhearing Margaret describe howshe killed Robin Hood, Robyn declines Junior's of-fer, stating she must avenge the death of her father.Junior is subsequently killed by Prince John in asword fight at Nottingham Castle. Robyn goes toMargaret's shack where she steals the Sands ofTime. Robyn then uses the magic powers of theSands of Time to bring Robin Hood and Juniorback to life. Alive once again, Robin Hood immedi-ately slits Margaret's throat. Robyn then sprinklesthe Sands of Time on Margaret's wound whichautomatically kills her. Robin Hood, Junior andRobyn then go off to Nottingham castle whereRobyn puts a sack over Prince John's head, KingRichard is saved and the Merry Men prevail. RobinHood remarks how he underestimated his daughterand that he could not have saved King Richardwithout her help. Robin Hood then retires to a




























castle with Marian while their daughter Robyn joinsJunior in Sherwood Forest. Princess of Thieves, onthe other hand, is a made for television adventuremovie. which does not contain any singing and dan-cing. The movie finds an aging Robin Hood facinga crisis when he and Will Scarlett return from battleand announce that King Richard is dying fromwounds sustained in the crusades. King Richard'sevil brother, Prince John, has been in charge ofEngland since the departure of King Richard. RobinHood realizes that Prince John will want to killRichard's illegitimate son, Prince Phillip, so that hecan assume the throne. Therefore, Robin Hood de-cides that he and Will must escort Prince Phillipfrom France to England in safety so that PrincePhilip can ascend to the throne.

*3 Meanwhile Robin Hood's daughter, Gwyn,is a spirited, idealistic young woman who haslargely been ignored by her father because of hergender. Desperate to impress her father, Gwynpleads with Robin to allow her to accompany himto escort Prince Phillip. Robin Hood is adamant thatsuch a mission is far too dangerous for a womanand sets out the next day, leaving Gwyn behind.Gwyn is so frustrated that she cuts her hair anddresses like a boy. However, before they can escortPrince Phillip, Robin and Will are captured by theSheriff of Nottingham and taken to London. Gwynsees this as a perfect opportunity to impress herfather, but she must disguise herself as a youngman in order to ride with the Merry Men. Eventu-ally, Gwyn uses her archery prowess and bravery tosafely escort Prince Phillip to England and to saveher father's life just as he is about to be shot at closerange by the Sheriff of Nottingham. At the sametime she convinces Prince Phillip, who wouldrather lead a simple life, to accept his role as Kingof England by pointing out how terribly the peoplehave been treated under Prince John's reign.Though Gwyn and Philip acknowledge their lovefor each other, they are unable to marry since Philipbecomes king and Gwyn is still a commoner. Bythe end of the film Robin Hood acknowledges thatGwyn is his equal and invites her to join him as his

partner in service to King Phillip.

In addition, many of the characters derivedfrom the Robin Hood legend are portrayed differ-ently in the two works. For example in sHerwood,Robin Hood is actually killed by a witch throughsupernatural forces, and then brought back to lifeby Robyn also through supernatural forces, while inPrincess, Robin Hood, although imprisoned andtortured, is never actually killed and is ultimatelyfreed and saved by Gwyn's bravery and archeryprowess.

The Sheriff of Nottingham appears only brieflyin the beginning of sHerwood, but is the principalvillain in Princess, having frequent battles withRobin Hood, Gwyn and Philip. Maid Marian ap-pears throughout sHerwood, singing and dancingand being reunited with Robin Hood at the end. Bycontrast, Maid Marian does not even appear inPrincess, having died before the story begins. KingRichard the Lionheart appears throughout sHer-wood, even claiming his right to the throne at theclimax of the second act. King Richard never evenappears in Princess having been only referred to asdead or in the process of dying.

In addition, there are many characters whichare unique to each work. For example, in sHer-wood, one of the central characters is Margaret thewitch who, along with her vixens, kill Robin Hoodthrough supernatural forces in order to obtain theSands of Time, which Robyn ultimately steals fromMargaret in order to bring Robin Hood and Juniorback to life. There is no character that is similar toor even resembles Margaret in Princess of Thieves.

Another character who appears in sHerwoodbut not in Princess of Thieves is Junior. Junior livesin Sherwood Forest as one of the Merry Men. Hisonly role in sHerwood is as the romantic interest ofRobyn and his character does not develop as thestory progresses. At the end of sHerwood, Juniorand Robyn have a romantic relationship. The onlycharacter even remotely similar in Princess ofThieves is Prince Philip who is the rightful heir to




the throne. Philip, unlike Junior, is forced to con-ceal his identity through much of the film becausehis life is in danger. The character of Prince Philipevolves throughout the story as Gwyn is able tochange his personality from that of a selfish,spoiled individual to that of a leader who cares forhis countrymen.

*4 Plaintiff claims that his infringement claimis based “on the specific, unique and original ex-pression of the idea of the daughter of Robin Hood,which is developed in detail in Plaintiff's work andsubstantially copied by Defendants.” Plaintiff's Op-position at 5, n .9. Specifically, plaintiff contendsthat both works 1) focus on the father-daughterconflict in which Robin Hood's daughter is desper-ate to prove herself to her father who at first refusesto accept his daughter as his equal but who in theend recognizes her skills and character and 2) con-tain a romantic interest involving Robin Hood'sdaughter.

Of course, the idea of a fictional daughter ofRobin Hood, who embodies the characteristics ofRobin Hood and who proves herself the equal ofmen and who falls in love did not originate withplaintiff. In the 1959 film, Son of Robin Hood,which the court has also viewed, the “son” is actu-ally Robin Hood's daughter, “Deering Hood”, whoalso must dress like a boy in order to prove she isthe equal of men. Deering Hood also opposes anunjust ruler, Duke Simon des Roches. DeeringHood also possesses many of the characteristics ofher father including her skill with a bow and arrowwhich she uses to defeat the enemy in severalscenes. This film has been the subject of a re-gistered copyright since 1959. See Exhibit B to De-fendants Reply Brief.

Second, the themes of a young woman trying toprove herself to her father who ultimately acknow-ledges her as his equal and falling in love arescenes a faire, or standard to any story of a youngwoman coming of age.

Third, even if the idea of a fictional daughter of

Robin Hood falling in love while proving herself toher father and to other men could somehow beviewed as original and unique enough to be copy-righted, we find after viewing the two works thateach expresses such a character in entirely distinct-ive manners, including the manner in which the plotis told, each daughter's motivation and each daugh-ter's relationship to other characters in each story.

In sHerwood, Robyn has been raised in relativeluxury primarily by her mother, Maid Marian, inNottingham Castle. As a teenager, Robyn decidesto rebel against her mother's traditional femininelifestyle and dependence on men. Her primary mo-tivation is to do something with her life and marry aman who will treat her as his equal. Robyn does notspeak of having a conflict with her father or ofwanting to impress him. She also does not displayany social or political motivation. In order to proveherself the equal of men, she decides to disguiseherself in her father's old clothes and hat and seekadventure with her father's band of Merry Men. Herpassion to prove herself the equal of men begins tofade, however, when Junior tells her that he viewswomen as the “stronger” sex, and makes referenceto the emotional strength of his grandmother.

In Princess of Thieves, Gwyn has been raisedin a humble lifestyle at the Abbey by Friar Tuck.Her mother, Maid Marian, is already dead andGwyn has had little contact with her father. She hasbefriended Froderick, a scholar in the Abbey whodoes not appear at all in sHerwood. Angered by herfather's indifference to her and refusal to acknow-ledge her skills, she leaves the Abbey dressed as aboy. She also is socially and politically motivatedto liberate the people of England from the tyrannic-al rule of Prince John.

*5 In sHerwood, Robyn is in love from thestart with a character named Junior, who we aretold is the son of Little John, a friend of RobinHood. In Princess, Gwyn sees Froderick as more ofa brother and is actually in love with Prince Philipwho does not appear at all in sHerwood. In Prin-cess, there is somewhat of a love triangle as both




Froderick and Prince Philip are in love with Gwyn,but Gwyn can only love Prince Phillip.

In sHerwood, Robin interacts and sings withher mother Marian, who does not appear at all inPrincess.

In sHerwood, Robyn's rescue of her father isexpressed through supernatural forces. She stealsthe Sands of Time from Margaret and then assistsher father in killing her by sprinkling them on Mar-garet's wound. In the ultimate scene, she merelyplaces a sack over Prince John's head. Robyn'sarchery prowess is only seen in one scene whereshe impresses the Merry Men by defeating Junior ina contest by knocking over a sapling. Her prowesshas no impact on and plays no role in the outcomeof the story itself.

On the contrary, Gwyn's rescue of her father inPrincess is expressed in a natural and historicalfashion based on the Robin Hood legend. There areno supernatural scenes in Princess. Moreover,Gwyn's archery skills play a much more prominentrole. She wins a contest by splitting the Sheriff's ar-row thereby gaining entry to the castle where herfather is being held captive. During a battle scene,she saves Philip by shooting a guard in the hand.Finally, during the ultimate battle scene, she shootsdown the Sheriff's arrow as it is heading straight forRobin Hood, thus saving her father's life.

Similarly, the only act of kindness to the poorthat Robyn undertakes in sHerwood is to give apoor woman her scarf. The only purpose behindthis act is to impress Junior. In Princess of Thieves,on the other hand, Gwyn intercedes on behalf of ayoung boy accused of stealing in a marketplace. Todistract the merchant and his wealthy customer,Gwyn steals a bag of venison pies and gives themto some poor children. Gwyn uses this incident tomake a political statement to Froderick aboutPrince John's cruelty and injustice. Indeed, one ofGwyn's primary motivations in Princess is to liber-ate the people of England from the tyrannical ruleof Prince John. Robyn is not socially conscious and

her primary motivation is simply to prove she is theequal of men.

Thus, while both works contain the idea of adaughter of Robin Hood who tries to prove herselfthe equal of men and who falls in love, each workexpresses that idea in a different manner and seemsto take a different path toward that end. Based onthe above discussion, it is our view that the twoworks are not so substantially similar to concludethat the defendants used the sHerwood in producingthe Princess of Thieves.

Our conclusion is bolstered by the findings ofdefendant's expert, Robert A. Gorman. Mr. Gor-man's curriculum vitae includes teaching Copyrightfor over 37 years at the University of Pennsylvaniaand other law schools, has authored a Copyrightcasebook and a monograph on Copyright publishedby the Federal Judicial Center. After viewingvideotapes of both sHerwood and Princess ofThieves and the written scripts of both works, Pro-fessor Gorman concluded that “the overwhelmingbulk, if not all, of the similarities, that existbetween sHerwood and Princess are .... part of thepublic domain and may be freely copied .....” Ex-pert Report of Robert A. Gorman at 2 (attached todefendants' reply brief as Exhibit A.) It is furtherthe opinion of Professor Gorman “that there is nocharacter that has been originated by Mr. Daley anddelineated in the necessary measure of detail to jus-tify copyright protection. In any event, there is littleor no overlap of characters and character develop-ment between sHerwood and Princess.” Id. at 3. Fi-nally, with respect to the alleged similaritiesbetween Robyn and Gwyn, Professor Gorman statesthat “[a] teen-age daughter of Robin Hood, seekingto be accepted as a grown-up and the equal of hermale peers, is properly understood as a character“idea” which different authors are permitted toelaborate in their own varying ways-in the charac-ters' behaviors, in their motivations, in their dia-logue, in their relationships with other characters,and in the manner in which they carry forward thedetails of the plot. The ‘substantial similarity’ test




allows for these differing ‘expressions' of character‘ideas,’ and I conclude that such is the case here, inthe comparison of Robyn and Gwyn.” Id. at 4.

*6 Plaintiff's expert on the other hand is BryanScott who describes himself as an Emmy-awardwinning professional writer and television produ-cer. Significantly, Mr. Scott does not state that heviewed the videotapes of the two works, but onlythat he read the scripts. He also does not comparethe two works in terms of plot, incidents or charac-ters, but only conclusory opines that “there is notdoubt in my mind that the original concepts, whichare under protection by copyright law, have beencopied.” Expert Report of Bryan Scott at 2(attached to Plaintiff's Opposition Brief as ExhibitA.). He bases his conclusion largely on the fact thatplaintiff's work has an earlier copyright date andhad been performed in public venues prior to theformation of the script for defendants' work. As aresult, we find the expert opinion of Robert Gormanto be much more persuasive than that of BryanScott.

For the foregoing reasons, judgment will beentered in favor of the defendants and against theplaintiff.

ORDERThe motion of the defendants for judgment on

the pleadings (Doc. # 14) is converted to a motionfor summary judgment.

The motion of the defendants for summaryjudgment (Doc. # 14) is GRANTED.

Judgment is ENTERED in favor of the defend-ants and against the plaintiff.

IT IS SO ORDERED.

E.D.Pa.,2003.Daley v. Granada US ProductionsNot Reported in F.Supp.2d, 2003 WL 21294986(E.D.Pa.)

END OF DOCUMENT




EXHIBIT 17



United States District Court, N.D. Illinois, EasternDivision.

S.T.R. INDUSTRIES, INC., a Delaware Companyd/b/i Illinois, Plaintiff,

v.PALMER INDUSTRIES, INC., Palmer America,

Inc., and Peter Chuang, Defendants.

No. 96 C 4251.April 9, 1999.

MEMORANDUM OPINIONGRADY, District J.

*1 Before the court is defendants' motion forsummary judgment on Count IV of plaintiff'samended complaint. For the reasons explained be-low, the motion is granted.

BACKGROUNDPlaintiff S.T.R. Industries, Inc. (“STR”), is a

Delaware corporation with its principal place ofbusiness in Cary, Illinois. It distributes pool cues topool halls and billiard retailers. STR has two direct-ors and shareholders: Mark Stoller, its president,and Bernice Stoller, its secretary. Defendant PalmerIndustries, Inc. (“Palmer”), is a Taiwanese com-pany that manufactures, purchases, and sells poolcues and billiard accessories. Palmer America, Inc.,is a California corporation that serves as Palmer'sdistributor in the United States. Peter Chuang is thePresident of Palmer Industries. Starting in 1992,STR began purchasing pool cues and other productsfrom Palmer. In some cases, STR asked that Palmerplace particular graphic designs on the cues.

These graphic designs include the six pieces ofartwork that form the basis of STR's copyrightclaims. Five of them appeared on cues listed inSTR's “Cues from the Crypt” series, once called the“Morbid” series. These designs include: (1) “Ace ofStealth”—QA212A, which depicts a caped skeleton

wielding a scythe against the background of an aceof spades playing card; (2)“Headhunter”—QA212B, which depicts a skullpartially covered by a dark cowl; (3) “TheClaw”—QA212C, which depicts a shriveled headtrapped in the claws of a scorpion; (4)“Darkstar”—QA212D, which depicts a skeletonwith an oversized head, a tail, and a prominentlyfeatured skeletal hand clutching an eyeball; and (5)“Warlord”—QA212E, which depicts a skull restingon a sword, a shield, and a pile of bones. Each ofthe designs were reproductions of tattoos that MarkStoller found in a box he kept in his back room.The sixth design at issue in this case is called“Splash”—QA205G, which depicts a geometricpattern. This design reproduces the pattern of apiece of ribbon Bernice Stoller found at a fabricstore.

STR took several steps to incorporate thesedesigns into its line of pool cues. Mark and BerniceStoller chose the tattoos that would appear on thecues. They provided the artwork and decided wherethe tattoos would appear on the cues. They alsochose the color of each cue and its wrapping. In ad-dition, Curtis Gandy, an independent graphic artist,changed some of the background colors of the“Morbid” series graphics.FN1

FN1. The parties dispute the legal relation-ship between Curtis Gandy and STR. Weaddress that dispute below.

In August 1995, the federal copyright office is-sued a certificate of registration in the name ofMark Stoller. Stoller does not know what artwork,if any, was attached to that certificate.FN2 Thecopyright office cannot find any copies of the art-work that was allegedly attached to this certificate.On February 28, 1997, STR filed an amendment tothe certificate, claiming that STR, not Mark Stoller,owned the copyright. The amendment explains thatthe work was “made for hire at the time of cre-ation.”





FN2. Although STR objects that informa-tion about the registration is not material,we believe it may shed some light on thesubject of the copyright claim. MarkStoller admits that he did not sign the certi-ficate, and does not know who did. BerniceStoller, however, identifies the signatureon the certificate as belonging to MarkStoller. Neither remembers the circum-stances surrounding the registration of thecopyright, so neither can aid us in determ-ining exactly what artwork the certificatepurports to register for copyright protec-tion.

*2 In 1995, Palmer reproduced the six designsat issue in this case in the catalog for its own Wan-ston brand of pool cues. Palmer circulated this cata-log to people who inquired about its products at a1995 trade show. After the distribution of less than450 catalogs, Palmer used a black marker to ob-scure the six designs in its remaining catalogs.

On July 12, 1996, STR filed suit againstPalmer on a variety of grounds. FN3 On February28, 1997, it filed the amended complaint that givesrise to this motion. Because the parties apparentlydispute the scope of the copyright claim, we quoterelevant portions of the sections from the amendedcomplaint marked “Facts Common To All Counts”and “Count IV—Copyright Infringement”:

FN3. Because Palmer's instant motion forsummary judgment addresses only thecopyright claims, we do not provide thefacts underlying the other claims here. Wehave briefly set forth some of those facts ina previous opinion, S.T.R. Indus., Inc. v.Palmer Indus., Inc., No. 96 C 4251, 1996WL 717468 (N.D.Ill.Dec. 9, 1996).

26. Prior to August 7, 1995, Mark Stoller, whowas then and ever since has been a citizen of theUnited States, created original artwork(hereinafter the “Artwork”) for incorporation intopool cues. A copy of a brochure including pool

cues having the Artwork is attached hereto as Ex-hibit “C” and made a part hereof.

27. The Artwork is copyrightable under theCopyright Act.

28. The original Artwork has been duly registeredin the Copyright Office of the United States asRegistration No. TX 4–089–776, a copy of theCertificate of Registration is attached hereto asExhibit “D” and made a part hereof. (See Exhibit“D”).

29. The Plaintiff is the copyright owner, assigneeof the copyright owner, or owner of exclusiverights under the Copyright Act, in the originalArtwork....

55. Defendants' acts as hereinabove alleged, con-stitutes infringements of Plaintiff's copyrights inthe original Artwork under the laws of the UnitedStates, as provided by Title 17 U.S.C. par. 501, etseq.

STR asks for injunctive and monetary relief.

Palmer now moves for summary judgment onCount IV of the amended complaint, pursuant toRule 56 of the Federal Rules of Civil Procedure. Itargues that STR has no copyright because it is notthe author of the artwork at issue here.

DISCUSSIONSummary judgment “shall be rendered forth-

with if the pleadings, depositions, answers to inter-rogatories, and admissions on file, together with theaffidavits, if any, show that there is no genuine is-sue as to any material fact and that the movingparty is entitled to a judgment as a matter of law.”Fed.R.Civ.P. 56(c). In considering such a motion,the court construes the evidence and all inferencesthat reasonably can be drawn therefrom in the lightmost favorable to the nonmoving party. O'Connorv. DePaul Univ., 123 F.3d 665, 669 (7th Cir.1997).“A dispute over material facts is genuine if ‘theevidence is such that a reasonable jury could returna verdict for the nonmoving party.” ’ Kennedy v.













Children's Serv. Soc'y, 17 F.3d 980, 983 (7thCir.1994) (quoting Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 248 (1986)). The court will entersummary judgment against a party who does not“come forward with evidence that would reason-ably permit the finder of fact to find in [its] favoron a material question.” McGrath v. Gillis, 44 F.3d567, 569 (7th Cir.1995).

*3 Federal copyright law protects only originalworks. To qualify for copyright protection, a workmust be original to its author. Feist Publications,Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345(1991). A finding of originality depends upon tworequirements: independent creation by the author(as opposed to copying) and a minimal degree ofcreativity. Id. The requisite level of creativity is ex-tremely low, and the majority of works will meet it,but they must possess “some creative spark.” Id. Inits classic formulation, creativity requires that theauthor contribute “more than a ‘merely trivial’ vari-ation, something recognizably ‘his own.’ Original-ity in this context ‘means little more than a prohibi-tion of actual copying.” ’ Alfred Bell & Co. v.Catalda Fine Arts, Inc., 191 F.2d 99, 102–03 (2dCir.1951).

Despite the fact that this threshold is low, it is athreshold nonetheless. Authorship requires morethan a contribution of “mere direction and ideas.”Erickson v. Trinity Theatre, Inc., 13 F.3d 1061,1071 (7th Cir.1994). “Ideas, refinements, and sug-gestions, standing alone, are not the subjects ofcopyrights.” Id. at 1072. The existence of thisthreshold allows authors the right to copyright anytruly original expression, but “encourages others tobuild freely upon the ideas and information con-veyed by a work.” Feist Publications, 499 U.S. at349–50.

Before we address whether STR can claim au-thorship, we must resolve the apparent dispute re-garding the work that STR has purported to copy-right. In its amended complaint, STR alleges thatPalmer has infringed its copyright in the “originalArtwork.” First Amended Complaint, ¶ 55. This al-

legation references a previous allegation that MarkStoller “created original artwork (hereinafter the“Artwork”) for incorporation into pool cues. Acopy of the brochure including pool cues having theArtwork is attached hereto ....” Id., ¶ 26 (emphasisadded). The complaint clearly delineates betweenthe pool cues and the “Artwork” at issue.Moreover, STR's Certificate of Registration and itsAmendment both state that the copyright pertains to“original art work,” not pool cues. STR now argues,however, that Mark Stoller “created the design ofthe pool cues which were the subject of the Certi-ficate of Registration.” S.T.R. Industries, Inc .'s Re-sponse Memorandum to Palmer Industries, Inc.'s,Palmer America, Inc.'s and Peter Chuang's MotionFor Partial Summary Judgment (“Plaintiff's Re-sponse”) at 12. This eleventh-hour attempt to ex-pand the subject of the alleged copyright does notalter the facts as they appear in the amended com-plaint or the certificate. Any purported copyrightapplies only to the artwork, not to the entire poolcues.

We now discuss whether STR's contribution tothe artwork was sufficiently original to create a newcopyright. Each of the designs on the STR cues arereproductions of previously existing artwork. Thefact that these reproductions appear on pool cuesrather than on tattoos does not enhance their origin-ality. See L. Batlin & Son, Inc. v. Snyder, 536 F.2d486, 491 (2d. Cir.1976) (citation omitted) (“merereproduction of a work of art in a different mediumshould not constitute the required originality for thereason that no one can claim to have independentlyevolved any particular medium”). Moreover, the al-teration of background colors is a trivial modifica-tion. See Hearn v. Meyer, 664 F.Supp. 832, 836(S.D.N.Y.1987) (china plate reproduction of art-work from “Wizard of Oz” not original, despite dif-ferent coloring of background and characters). In-deed, copyright office regulations exclude fromcopyright “mere variations of typographic orna-mentation, lettering or coloring.” 37 C.F.R. §202.1(a). Conferring originality on such minor al-terations would confuse copyright law and lead to





































“overlapping claims.” Gracen v. Bradford Ex-change, 698 F.2d 300, 304 (7th Cir.1983).FN4

FN4. “Suppose Artist A produces a repro-duction of the Mona Lisa, a painting in thepublic domain, which differs slightly fromthe original. B also makes a reproductionof the Mona Lisa. A, who has copyrightedhis derivative work, sues B for infringe-ment. B's defense is that he was copyingthe original, not A's reproduction. But ifthe difference between the original and A'sreproduction is slight, the differencebetween A's and B's reproductions willalso be slight, so that if B had access to A'sreproductions the trier of fact will be hard-pressed to decide whether B was copyingA or copying the Mona Lisa itself.” Id.

*4 STR argues that, in addition to providing anidea about background colors, Mark Stoller alsochose “the color of the pool cues, the designs, theplacement of the designs on the cues, and the wrap-ping.” Plaintiff's Response at 12. But Stoller's con-tributions, other than choosing the designs and theirbackground colors, relate to the pool cues, not theartwork. As we have already noted, changing back-ground colors does not have sufficient originality tojustify a copyright. And the mere choosing of adesign does not rise even to the level of a variation,much less a non-trivial one. Similarly, BerniceStoller's selection of the ribbon design for the“Splash” cue does not have the originality requiredto justify a copyright.

STR further argues that it owns the works be-cause of Curtis Gandy's design contributions. Afterarguing that Gandy's work was “for hire,” andtherefore owned by STR, however, plaintiff thenadmits that Gandy's “contributions were not signi-ficant enough to be copyrightable” and labels hiscontributions as “graphic design work related to thecue designs.” Plaintiff's Response at 10. We agreewith the latter assertion; Gandy's contribution to theartwork does not meet the requisite originalitystandard. At most, Gandy scanned the artwork into

a computer, “smoothed” the images, and, like MarkStoller, changed background colors. These trivialcontributions confer no authorship on Gandy. Evenif STR does hold all rights to Gandy's contribution,those rights yield it little. Ownership of Gandy'scontribution does not translate to ownership of theelements of the artwork that he did not create.FN5

FN5. Because Gandy's contribution lacksthe originality to create a copyright, weneed not address whether his work was“for hire.” Palmer argues that the lack of aprior written agreement should preclude afinding of “for hire” status. See RespectInc. v. Committee on Status of Women, 815F.Supp. 1112, 1116–17 (N.D.Ill.1993).However, as STR suggests, Gandy doesnot dispute ownership, and it would be“unusual and unwarranted to permit athird-party infringer to invoke [the writingrequirement] to avoid suit for copyright in-fringement.” Imperial Residential Design,Inc. v. Palms Dev. Group, Inc., 70 F.3d 96,99 (11th Cir.1995) (citing Eden Toys, Inc.v. Florelee Undergarment Co., Inc., 697F.2d 27, 36 (2d. Cir.1982)); see alsoBudget Cinema, Inc. v. Watertower As-socs., 81 F.3d 729, 733 (7th Cir.1996). Wealso note that, after Palmer filed this mo-tion, Gandy signed a written transfer ofany copyright he held.

Because STR fails the originality requirement,we need not address the validity of the Certificateof Registration. In light of our findings, the remain-ing factual dispute surrounding the certificate is notmaterial.

CONCLUSIONFor the foregoing reasons, we grant Palmer's

motion for summary judgment on Count IV ofplaintiff's amended complaint. Because we did notrely on footnote 5 to Defendants' Memorandum inSupport of its Motion for Partial Summary Judg-ment, we deny plaintiff's motion to strike as moot.A status conference is set for June 15, 1999, at 9:30






















a.m. to set this case for trial.

N.D.Ill.,1999.S.T.R. Industries, Inc. v. Palmer Industries, Inc.Not Reported in F.Supp.2d, 1999 WL 258455(N.D.Ill.)

END OF DOCUMENT




EXHIBIT 18


Quizzes & Games Word of the Day Video New Words My Favorites

Subm

Popularity

sateen

sateen3 ENTRIES FOUND:

sateen

satine

sateen weave

Ads by GoogleAre You Writing a Book?Get a free guide to professional editing & publishing options.www.iUniverse.com

sa·teen noun \sa-ˈtēn, sə-\

Definition of SATEEN

: a smooth durable lustrous fabric usually made of cotton in satin weave

See sateen defined for English-language learners »See sateen defined for kids »

Origin of SATEEN

alteration of satin

First Known Use: circa 1878

Rhymes with SATEEN

Andine, arene, baleen, beguine, Benin, benzene, benzine, Bernstein, between, black bean, boreen, bovine, broad bean, buckbean, caffeine, c... [+]more

Learn More About SATEEN

Britannica.com: Encyclopedia article about "sateen"

Browse

Next Word in the Dictionary: sateen weavePrevious Word in the Dictionary: sate (transitive verb)All Words Near: sateen

Seen & Heard

What made you want to look up sateen? Please tell us where you read or heard it (including the quote, if possible).

Name That ThingTake Our 10-Question Quiz

Spell ItThe commonly misspelled words quiz

Hear It, Spell It »

Name That ThingTake our visual vocab quiz

Test Your Knowledge »

A Thoughtful Guide to Words About NonsenseBuffoonery, Codswallop & More

Favorite Pictures in the DictionaryExotic & Intriguing Things, Well Illustrated

Get Our Free AppsVoice Search, Favorites,Word of the Day, and MoreiPhone | iPad | Android | More

Join Us on FB & TwitterGet the Word of the Day and MoreFacebook | Twitter

Like

Facebook social plugin

Add a comment...

Comment using...

Save

Page 1 of 2Sateen - Definition and More from the Free Merriam-Webster Dictionary

2/6/2013http://www.merriam-webster.com/dictionary/sateen


Merriam-Webster on Facebook

View Seen & Heard highlights from around the site »

The Merriam-Webster Unabridged Dictionary

Online access to a legendary resource Log In or Sign Up »

Learning English? We can help.

Visit our free site designed especially for learners and teachers of English LearnersDictionary.com »

Our Dictionary,On Your DevicesMerriam-Webster, With Voice SearchGet the Free Apps! »

Merriam-Webster's Visual Dictionary

The new edition of the remarkable reference features 8,000 illustrations. Learn More »

Join UsMerriam-Websteron Twitter »

Merriam-Websteron Facebook »

Bookstore: Digital and PrintMerriam-Webster references for Mobile, Kindle, print, and more. See all »

Webster's Unabridged Dictionary »WordCentral for Kids »

Other Merriam-Webster DictionariesLearner's ESL Dictionary »Visual Dictionary »

Browse the Dictionary

Browse the Thesaurus

Browse the Spanish-English Dictionary

Browse the Medical Dictionary

Browse the Concise Encyclopedia

Home Help About Us Shop Advertising Info Dictionary API

Privacy Policy About Our Ads Contact Us Browser Tools

© 2013 Merriam-Webster, Incorporated

Like 120k

Page 2 of 2Sateen - Definition and More from the Free Merriam-Webster Dictionary

2/6/2013http://www.merriam-webster.com/dictionary/sateen


EXHIBIT 19


Quizzes & Games Word of the Day Video New Words My Favorites

Subm

Popularity

Merriam-Webster on Facebook

satin weave

satin weaveAds by GoogleCotton Flannel SupplierManufacturer of Cotton Fabrics & Textiles. Wholesale Quantity Only.BriggsTextile.com

satin weave noun

Definition of SATIN WEAVE

: a weave in which warp threads interlace with filling threads to produce a smooth-faced fabric

See satin weave defined for kids »

First Known Use of SATIN WEAVE

circa 1883

Rhymes with SATIN WEAVE

apperceive, basket weave, by-your-leave, disbelieve, family leave, flutter sleeve, interleave, interweave, make-believe, misbelieve, on on... [+]more

Learn More About SATIN WEAVE

Britannica.com: Encyclopedia article about "satin weave"

Browse

Next Word in the Dictionary: satin whitePrevious Word in the Dictionary: satin walnutAll Words Near: satin weave

Seen & Heard

What made you want to look up satin weave? Please tell us where you read or heard it (including the quote, if possible).

View Seen & Heard highlights from around the site »

Name That ThingTake Our 10-Question Quiz

Spell ItThe commonly misspelled words quiz

Hear It, Spell It »

Name That ThingTake our visual vocab quiz

Test Your Knowledge »

A Thoughtful Guide to Words About NonsenseBuffoonery, Codswallop & More

Favorite Pictures in the DictionaryExotic & Intriguing Things, Well Illustrated

Get Our Free AppsVoice Search, Favorites,Word of the Day, and MoreiPhone | iPad | Android | More

Join Us on FB & TwitterGet the Word of the Day and MoreFacebook | Twitter

Like

Facebook social plugin

Add a comment...

Comment using...

Like 120k

Cancer Treatment Centerscancercenter.com

Award-Winning Cancer Centers Specializing in Personalized Care.

Save

Save this word to your Favorites.If you're logged into Facebook, you're ready to go.

Page 1 of 2Satin weave - Definition and More from the Free Merriam-Webster Dictionary

2/6/2013http://www.merriam-webster.com/dictionary/satin%20weave


The Merriam-Webster Unabridged Dictionary

Online access to a legendary resource Log In or Sign Up »

Learning English? We can help.

Visit our free site designed especially for learners and teachers of English LearnersDictionary.com »

Our Dictionary,On Your DevicesMerriam-Webster, With Voice SearchGet the Free Apps! »

Merriam-Webster's Visual Dictionary

The new edition of the remarkable reference features 8,000 illustrations. Learn More »

Join UsMerriam-Websteron Twitter »

Merriam-Websteron Facebook »

Bookstore: Digital and PrintMerriam-Webster references for Mobile, Kindle, print, and more. See all »

Webster's Unabridged Dictionary »WordCentral for Kids »

Other Merriam-Webster DictionariesLearner's ESL Dictionary »Visual Dictionary »

Browse the Dictionary

Browse the Thesaurus

Browse the Spanish-English Dictionary

Browse the Medical Dictionary

Browse the Concise Encyclopedia

Home Help About Us Shop Advertising Info Dictionary API

Privacy Policy About Our Ads Contact Us Browser Tools

© 2013 Merriam-Webster, Incorporated

Page 2 of 2Satin weave - Definition and More from the Free Merriam-Webster Dictionary

2/6/2013http://www.merriam-webster.com/dictionary/satin%20weave


Documents

Skyline v. McGrory - 12(c) Motion