Response to Mot Dismiss Pollick v Kimberly Clark

8/3/2019 Response to Mot Dismiss Pollick v Kimberly Clark

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UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN

NORTHERN DIVISION

RICHARD POLLICK,

an individual,

Plaintiff,Case No.: 1:11 cv 12420

v. Hon. Thomas L. Ludington

KIMBERLY-CLARK CORPORATION,a Delaware corporation,

Defendant.

BRIEF IN RESPONSE TOMOTION OF KIMBERLY-CLARK CORPORATIONTO DISMISS PLAINTIFFS COMPLAINT

1:11-cv-12420-TLL-CEB Doc # 10 Filed 08/16/11 Pg 1 of 19 Pg ID 100


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STATEMENT OF ISSUES PRESENTED

1. Is Plaintiffs copyright claim based entirely on unprotectable elements such

that it should be dismissed as a matter of law?

Pollick suggests No.

2. Should Plaintiffs copyright claim be dismissed as a matter of law because

Plaintiffs design and Kimberly-Clarks design are not at all similar, let alone

substantially similar?

Pollick suggests No.



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CONTROLLING AUTHORITY

Bridgeport Music, Inc. v. WB Music Corp., 520 F.3d 588 (6th Cir. 2008)

Winfield Collection, Limited v. Gemmy Industries, Corp., 147 Fed.Appx. 547, No. 04-1545, 04-2106, 04-1586, 2005 WL 2077510 (6th Cir. Aug. 29, 2005)

Beaudin v. Ben and Jerrys Homemade, Inc., 896 F.Supp.356 (U.S.D.C. 1995)



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TABLE OF CONTENTS

PAGESTATEMENT OF ISSUES PRESENTED..i

CONTROLLING AUTHORITY........ii

TABLE OF AUTHORITIES........iv

II. BACKGROUND ...................................................................................................... 1

III. ARGUMENT ........................................................................................................... 1

A. Plaintiff States a Valid Claim for Infringement of His Protected Work ............... 1

B. Plaintiff is Asserting Rights Over Protectable Subject Matter. ........................... 2

C. Plaintiffs and Defendants Products are Substantially Similar .......................... 9

D. Defendant is Not Entitled to Costs or Fees ..................................................... 10

IV. CONCLUSION ...................................................................................................... 12



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TABLE OF AUTHORITIES

CASES

Baker v. Selden, 101 U.S. 99 (1879) ........................................................................... 6, 7

Beaudin v. Ben and Jerrys Homemade, Inc., 896 F.Supp.356 (U.S.D.C. 1995) .......... 10

Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267 (6th Cir. 2009) ........... 5, 9

Bridgeport Music, Inc. v. WB Music Corp., 520 F.3d 588 (6th Cir. 2008) ................ 10, 11

Davis v. American Broadcasting Companies, Inc., No. 1:10-CV-167, 2010 WL 2998476

(W.D.Mich. 2010) ......................................................................................................... 9

Feist Publns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) ...................................... 5

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) ............................................................... 10

Frank Betz Assocs., Inc. v. J.O. Clark Construction, L.L.C., No. 3:08-cv-00159, 2010

WL 2253541 (M.D.Tenn., May 30, 2010) ................................................................. 1, 9

Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003) ......................................................... 2, 6, 7

Lexmark Intl, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) ...... 1

Mazer v. Stein, 347 U.S. 201 (1954) ........................................................................... 2, 7

Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir.1960) ................ 10

Robert R. Jones Assocs., Inc. v. Nino Homes, 858 F2d 274 (6th Cir. 1988) ................... 7

Winfield Collection, Limited v. Gemmy Industries, Corp., 147 Fed.Appx. 547, No. 04-

1545, 04-2106, 04-1586, 2005 WL 2077510 (6th Cir. Aug. 29, 2005) ......... 2, 3, 4, 8, 9



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STATUTES

17 U.S.C. 102(b) ........................................................................................................... 2

17 U.S.C. 106(3) ........................................................................................................... 1



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I. Background

On July 20, 1981, the United States Copyright Office received Plaintiffs official

submittal for the registration of his Diaper Jeans artwork, and Plaintiff received a

certificate of Copyright Registration on or about February 13, 1981. In October of 1981,

Plaintiff submitted a copy of his copyrighted artwork to the Defendant, Kimberly-Clark.

Defendant subsequently acknowledged Plaintiffs submission by mailing him, via first-

class mail, a copy of its Policy for Reviewing Patent Applications and a copy of its

Policy for Reviewing Unsolicited Ideas. Defendant did not seek permission from

Plaintiff, and was not granted permission, in any manner, to reproduce, display, or

otherwise exploit Plaintiffs copyrighted artwork. However, the Defendant has

reproduced, created an unauthorized derivative of, and distributed an unauthorized

reproduction of the artwork in derogation of Plaintiffs exclusive rights under 17 U.S.C.

106(3). Plaintiff instituted the present suit against Defendant on the basis that

Defendant has willfully engaged in the infringement of Plaintiffs copyrighted artwork.

II. Argument

A. Plaintiff States a Valid Claim for Infringement of His Protected Work

Copyright protection applies when a plaintiff can establish that it owns a valid

copyrighted work, and that the defendant clearly copied the plaintiffs work. See, e.g.,

Frank Betz Assocs., Inc. v. J.O. Clark Construction, L.L.C., No. 3:08-cv-00159, 2010

WL 2253541, at *8 (M.D.Tenn., May 30, 2010); Lexmark Intl, Inc. v. Static Control

Components, Inc., 387 F.3d 522, 534 (6th Cir. 2004). Where there is no direct evidence

of unauthorized duplication (as is usually the case), a plaintiff is permitted to prove

copyright infringement by showing that (1) defendant(s) had access to the allegedly-



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infringed upon work, and (2) a substantial similarity exists between the works at issue.

Kohus v. Mariol, 328 F.3d 848, 853-54 (6th Cir. 2003). In the instant case, Plaintiff can

establish unequivocally that he owns a valid copyrighted work, evidenced by the

Copyright Registration that Plaintiff received from the United States Copyright Office for

same. Further, Defendant does not raise the issue in its motion as to whether

Defendant had access to Plaintiffs copyrighted work to allow it to duplicate it without his

obligation.1

B. Plaintiff is Asserting Rights Over Protectable Subject Matter.

It is undisputed that copyright protection is given only to the expression of the

idea not the idea itself. Mazer v. Stein, 347 U.S. 201, 217, (1954). See also 17

U.S.C. 102(b). Accordingly, Defendants argue that Plaintiffs Diaper Jeans are a mere

idea, and thus unprotected by copyright. Brief of Defendant, at 10. However, copyright

protection can extend from two-dimensional artworks to three-dimensional

manifestations of that artwork. Thus, Defendants Jeans Diapers product (the

offending matter in question) falls within the scope of Plaintiffs copyrighted Diaper Jean

artwork.

The case that established this extension of protection, Winfield Collection,

Limited v. Gemmy Industries, Corp., 147 Fed.Appx. 547, No. 04-1545, 04-2106, 04-

1586, 2005 WL 2077510 (6th Cir. Aug. 29, 2005), involved artwork that was created to

instruct consumers on how to create a three-dimensional object based on plaintiffs

1To the extent that access to Plaintiffs work is not presumed for purposes of the present motion, Plaintiff

contends the allegations of his complaint state a claim that Defendant had access to his copyrighted work

within the teaching of Robert R. Jones Assocs., Inc. v. Nino Homes, 858 F2d 274 (6th Cir. 1988), which

sets forth that [a]ccess merely means an opportunity to view the protected material. 858 F2d at 277.



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copyrighted two-dimensional drawing. In Winfield, the Sixth Circuit established that,

where works are substantially similar, copyright protection may be extended to a three-

dimensional object created according to the instructions in a two-dimensional

copyrighted design. Specifically, the court recognized that three-dimensional objects

may be protected by two-dimensional copyrighted artwork. Idat *550. The Winfield

court based its finding on the fact that plaintiffs copyright registration included a

photograph of a witch assembled according to the design seeking copyright.

It is equally clear that, in submitting his artwork to the United States Copyright

Office, the protection Plaintiff sought in the case at hand was not just for his visual

representation of Diaper Jeans, but for a manufactured version of Diaper Jeans as well.

At least one purpose of Plaintiffs Diaper Jeans design was to create a three-

dimensional manifestation of that design. This is made obvious by the fact that Plaintiff,

after having obtained a copyright for his Diaper Jeans, mailed the designs to Kimberly-

Clark, a diaper manufacturer. Indeed, it is laughable to suggest that Plaintiff in the

present case sought copyright protection for his Diaper Jeans design simply so that

nobody else can copy the design itself, but can still freely use the design to create

three-dimensional manifestations of that design. It is certainly a reasonable purpose for

a Diaper Jeans design to create a three-dimensional manifestation from that design.

This is clearly a facet of what Plaintiff sought to have protected by his Copyright

Registration.

Further, Winfield Collections creates a distinction between clothing copyrights

and copyrights for three-dimensional objects made from protected two-dimensional



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designs that is applicable to the case at hand. Winfield Collections draws this

distinction by stating that:

giving copyright protection to clothing, which has a utilitarian

function, would allow for the protection of patent-like featureswithout having to fulfill the rigorous standards for obtaining adesign patent. (Citations omitted). The decorative witchesat issue in the instant case, however, are purely aesthetic,and thus have no patent-like features to argue againstcopyright protection.

Id. at *551. Although diapers undisputedly have a utilitarian function, designing that

diaper to appear as if it is made from jean material has no function at all beyond the

aesthetic. Thus, the question becomes whether or not Plaintiffs copyright protection

extends to a purely aesthetic, non-functional aspect of a functional item. Although

Winfield Collections based its assertion, that three-dimensional items may find

protection in a copyright of a two-dimensional design, on the fact that plaintiffs witch

was a purely aesthetic design, the court suggests that copyright protection does

indeed extend to non-functional aspects of an otherwise functional item.

Specifically, the Sixth Circuit asserted that if a work is to some degree

functional, a court must filter out any elements dictated by efficiency [in order to

determine copyrightability]. Id. at *554. Thus, a functional item is not automatically

deemed to be unprotectable by copyright rather, only specifically functional aspects

are unprotectable. The elements of a diaper dictated by efficiency namely, the actual

diaper, and aspects of its design that enable diapers to serve their central purpose (e.g.,

leak control, etc.) are to be filtered out of the courts analysis of protectablity and

substantial similarity. Courts may still, however, allow non-functional elements of a

design, such as the artistic representation of a back pocket stitching design as set



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forth and juxtaposed onto a diaper in order to make the diaper look like jeans, as has

been done and is claimed by Plaintiff, to be protected by copyright. Plaintiffs aesthetic

representation of the diaper therefore falls under this umbrella of non-functional aspects

protectable by copyright.

Assuming without conceding that Plaintiffs copyright does not extend to a three-

dimensional manifestation of a denim-colored rendering of a diaper, it is nonetheless

alleged in Plaintiffs complaint (and not disputed by Defendant) that Defendants two-

dimensional product packaging and marketing materials utilizes Plaintiffs copyrighted

artwork (or a substantially similar version thereof). SeeComplaint, Paragraph 5. Thus,

Defendant is not only guilty of misappropriating a three-dimensional version of Plaintiffs

copyrighted work, but also a carbon copy of the two-dimensional artwork on which

Plaintiff was awarded his copyright originally.

In addition to the filtering out of functional elements, in order to determine which

aspects of a work are copyrightable the court must also filter out elements of the work

that are not original, scenes a faire, the indispensable or standard aspects of a work, or

those that follow directly from unprotectable ideas. Bridgeport Music, Inc. v. UMG

Recordings, Inc., 585 F.3d 267, 274 (6th Cir. 2009). Original means only that the

work was independently created by the author (as opposed to copied from other works),

and that it possesses at least some minimal degree of creativity. The work at issue

need not be novel. Feist Publns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345-46

(1991). Thus, Defendants claim that the idea of Diaper Jeans already existed before

Plaintiff obtained his Copyright Registration is irrelevant to the case at hand.



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Furthermore, that all babies are not running around in Diaper Jeans establishes

the creativity involved in their creation. Diaper Jeans are clearly a marketable item, as

evidenced by the fact that Defendant has chosen to manufacture and sell them (under

the name of Jeans Diapers.). Thus, if they were a common idea lacking in originality,

Diaper Jeans would have existed on the market prior to now. Moreover, the fact that

Plaintiff sought a Copyright Registration for his artwork underscores the fact that it was

an original idea that he wanted to protect.

Filtering out those scenes a faire those elements that follow naturally from a

works theme as required by Kohus, 328 F.3d at 856 strengthens Plaintiffs claim

against Defendant. It cannot be reasonably disputed that the aspect of a diaper that

makes it look like a denim jean article is not an element that follows naturally from the

general theme of a diaper indeed, this is one of the very reasons that Plaintiff sought a

copyright for the design in the first place. Likewise, a diapers design that depicts the

diaper as being made from jean material is by no means indispensable or standard to a

diaper; nor does such design follow directly from the unprotectable idea of a diaper.

In Baker v. Selden, 101 U.S. 99 (1879), plaintiff obtained a copyright for a book

that explained a unique form of bookkeeping. Plaintiff asserted copyright infringement

when defendant made and used account-books arranged on substantially the same

system. The Court held that blank account-books are not the subject of copyright, and

the copyright that plaintiff had for his book did not give him the exclusive right to make

and use account-books illustrated in the same way as his copyrighted book. Id. at 107.

In essence, the plaintiff in Baker could prevent the unauthorized reproduction of the

actual book, but, unless he had a patent, the plaintiff could not prevent others from



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using the accounting forms, the useful article embodied in the book. Nino Homes, 858

F.2d at 278. Distinguishing the present case from the one in Baker, however, is the fact

that there is nothing useful about the aspect of Plaintiffs design over which copyright

protection is being asserted. Plaintiff is not claiming to copyright a diaper; rather, it is

the design of the diaper that he lays claim to. Indeed, the United States Supreme Court

qualified its limitation of copyright protection in Bakerby stating that [o]f course, these

observations [limiting copyright protection] are not intended to apply to ornamental

designs, or pictorial illustrations addressed to the taste. Of these it may be said, that

their form is their essence, and their object, the production of pleasure in their

contemplation. This is their final end. Baker, 101 U.S. at 103-04. Likewise, a diapers

appearance as Diaper Jeans is the entire point of the design and underlies Plaintiffs

rights at issue. The copyrighted artwork does not serve any purpose whatsoever,

functional or otherwise, beyond the aesthetic.

Finally, in its Brief In Support of Defendants Motion to Dismiss Plaintiffs

Complaint, Defendant asserts that the only commonality between Plaintiffs design and

that of Kimberly-Clark is that they both attempt to express the ideaof a diaper that is

supposed to look like jeans but those expressions manifest themselves in an entirely

different way. Brief of Defendant, at 10 (emphasis added). Thus, despite its assertion

throughout that Plaintiff is merely trying to protect the idea of Diaper Jeans, here

Defendant seems to concede that it is the expression of an idea that is at issue, and [i]t

is axiomatic, to begin with, that mere abstract ideas are not protectable, but the

expression of an idea is. Kohus, 328 F.3d at 855 (emphasis added) (citing Mazer v.

Stein, 347 U.S. at 217).



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As to Defendants assertion that Plaintiffs and Defendants expressions

manifest themselves in an entirely different way, where copyrightablity of the work at

issue has been established whether or not the two works do differ is a question for a

jury to decide (an issue that is discussed in the next section). However, even if the

court chooses not to pass this question along to a jury, to support its assertion of

complete unlikeness of the works at issue, Defendant relies on elements of the Diaper

Jeans such as stitching, pockets, labels, and zipper details to establish the dissimilarity.

Brief for Defendant, at 1-2; 7-8. Defendant also states, however, that such elements of

the Diaper Jeans are common elements of any idea for a jean, Brief for Defendant, at

1, and are therefore unprotectable elements that must be removed from consideration

of the two designs similarities. Brief for Defendant, at 8. It is contradictory for

Defendant to rely on these unprotectable elements which elements must be filtered

out of the courts analysis as the only elements that might show dissimilarity between

the two works. Moreover, Plaintiff is not trying to protect the individual generic or

otherwise common elements necessary to represent jeans (i.e., the zippers, buttons,

etc.) that are displayed in his copyrighted artwork as Defendant asserts; rather, he is

asserting rights over the creative expression of diapers designed to resemble jeans.

Common elements of a diaper (such as elastic, padding, and absorbent material) do not

include the appearance of denim jeans. Ultimately, an expression of an idea is

protected by copyright, and it is Plaintiffs expressionof the idea of diapers that look like

denim jeans that is at issue in the current case.

The court in Winfield Collections relevantly asserted that to categorically

refuse to extend copyright protection to a three-dimensional manifestation of Winfields



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witch is to allow a competitor theoretically to steal Winfields precise expression of its

creative vision, thus chilling the very creative expression that copyright law is meant to

foster. Winfield Collections, 2005 WL 2077510 at *552. Denial of copyright protection

in the case at hand would have precisely the same chilling effect.

C. Plaintiffs and Defendants Products are Substantially Similar

Once the unprotectable elements have been filtered out, the two works [at issue]

can be compared to determine whether they are substantially similar, a question of

fact. Bridgeport Music, 585 F.3d at 275. As set forth above, Plaintiffs copyrighted

work includes protectable elements. Thus, as substantial similarity is a question of fact,

granting Defendants motion, would improperly remove this question from a jurys

purview.

[P]roof in copyright cases is frequently fact-intensive and highly circumstantial,

involving factual comparison between works to determine whether they are substantially

similar for purposes of proving copyright infringement. Frank Betz Assocs., 2010 WL

2253541, at *15. (Similarly, due to the inherent subjectivity involved in that inquiry,

summary judgment on the question of substantial similarity is also rarely appropriate.

Id.) Although it is true that a court may dismiss a copyright claim in specific

circumstances where [t]here is no overlap between the original components of the

works, and any similarities between them are either unprotectible or not substantial,

and [r]easonable minds could not differ on this issue, Davis v. American Broadcasting

Companies, Inc., No. 1:10-CV-167, 2010 WL 2998476, at *10 (W.D.Mich. 2010) ,



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III. Conclusion

For the reasons stated above, Plaintiff requests that the court deny Defendants

motion in its entirety, as Plaintiff has shown that his claim regards protectable subject

matter, because the question of whether Defendants product and artwork are

substantially similar to his copyrighted artwork, and because Defendant is not entitled to

fees and costs.

DATED: August 16, 2011

Respectfully submitted,

AIDENBAUM SCHLOFF AND BLOOM PLLC

By: /s/David Gentile__________David Gentile (P62171)Attorney for Plaintiff6960 Orchard Lake Road, Suite 250West Bloomfield, MI 48322(248) 865-6500(248) 865-6505 fax



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CERTIFICATE OF SERVICE

I hereby certify that on August 16, 2011, I electronically filed the foregoing paper with

the Clerk of the Court using the ECF system which will send notification of such filing to

all counsel of record, and I hereby certify that I have mailed by United States Postal

Service the paper to the following participant:

Chad J. Doelllinger, Esq.Attorney for DefendantEimer Stahl Klevorn & Solberg LLP224 South Michigan, Suite 1100Chicago, Illinois 60604

AIDENBAUM SCHLOFF AND BLOOM PLLC

By: /s/David Gentile__________David Gentile (P62171)Attorney for Plaintiff6960 Orchard Lake Road, Suite 250West Bloomfield, MI 48322(248) 865-6500(248) 865-6505 fax



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Response to Mot Dismiss Pollick v Kimberly Clark

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