
USCA1 Opinion

	




                            UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                 ____________________          No. 95-2375                                 JAMES L. GRUBB, JR.,                                Plaintiff - Appellant,                                          v.                                KMS PATRIOTS, L.P. AND                      NATIONAL FOOTBALL LEAGUE PROPERTIES, INC.,                               Defendants - Appellees.                                 ____________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                          FOR THE DISTRICT OF MASSACHUSETTS                   [Hon. Edward F. Harrington, U.S. District Judge]                                               ___________________                                 ____________________                                        Before                               Torruella, Chief Judge,                                          ___________                           Stahl and Lynch, Circuit Judges.                                            ______________                                _____________________               Blair  L.  Perry,  with whom  Heidi  E.  Harvey  and Fish  &               ________________              _________________      _______          Richardson P.C. were on brief for appellant.          _______________               Daniel L. Goldberg, with whom Paul M. Robertson and Bingham,               __________________            _________________     ________          Dana & Gould were on brief for appellees.          ____________                                 ____________________                                 ____________________                    TORRUELLA, Chief Judge.   Plaintiff-Appellant James  L.                    TORRUELLA, Chief Judge.                               ___________          Grubb,  Jr. ("Grubb"  or  "Plaintiff"),  challenges the  district          court's grant of  summary judgment  for Defendants-Appellees  KMS          Patriots, L.P.  (the  "Patriots"), and  National Football  League          Properties, Inc. ("NFL Properties")  (collectively "Defendants"),          on  Grubb's claims  of copyright  infringement under 17  U.S.C.            501.  We affirm the decision of the district court.                                    I.  BACKGROUND                                    I.  BACKGROUND                    Resolving reasonable inferences in  favor of Grubb, the          nonmovant, the summary judgment materials show the following.                    The Patriots, a professional football team and a member          of  the  National Football  League,  informed  NFL Properties  on          January 17, 1993, that  they were considering  a logo change  for          the upcoming season.  NFL Properties, among  other tasks, manages          design  and publishing  production assignments  for the  National          Football League.  At a meeting between Patriots officials and NFL          Properties  representatives  on January  27,  1993,  the Patriots          asked that the design of the  new logo be created within the next          few weeks.                    Accordingly,    NFL   Properties    contacted   several          independent design  firms.  On  January 27, 1993,  Bradley Jansen          ("Jansen")  of NFL  Properties  approached  Evenson Design  Group          ("Evenson") about the project, and Evenson agreed  to begin work.          Via  overnight   courier,  Jansen  sent  to   Evenson  a  package          containing,  among other  things,  a purchase  order and  designs          similar  to the one that the Patriots had considered and rejected                                         -2-          in 1979 ("the 1979 proposed Patriots logo").  Jansen continued to          be in contact with, and meet with, Patriots employees thereafter.                    The package was received  on January 28, 1993.   In his          deposition, Ken Loh  ("Loh"), an Evenson employee, stated that he          began sketching the design that the Patriots  eventually chose to          replace their old logo ("the Patriots' new logo").   With the aid          of his timesheets,  which were  generated by  a computer  program          that both Plaintiff  and Defendants have stipulated could  not be          backdated,  Loh indicated  that  he had  virtually completed  the          Patriots'  new  logo  by February  4,  1993.    Referring to  his          timesheets, Loh stated  that as  of that  date he  began work  on          creating  other  logos  and  revising  the  logo  he had  already          created, which he identified as the Patriots new logo.                    On February 12, 1993, Evenson sent Loh's  design to NFL          Properties.    Representatives of  NFL  Properties  met with  the          Patriots  on February  18, 1993.   The  Patriots were  shown many          proposed  logos, including  Loh's.   The Patriots  selected Loh's          design as their new logo on March 5, 1993.                    Meanwhile, on  February 9, 1993,  having heard  through          the  news media that the  Patriots planned to  change their logo,          Grubb submitted an unsolicited proposed design ("Grubb's design")          to the  Patriots' office  in Foxborough,  Massachusetts.  In  his          deposition, Grubb stated that he was told by a Patriots' employee          that  the   Patriots  would  contact  him   later  regarding  his          submission.  Grubb holds  a Certificate of Copyright Registration                                         -3-          for his  design, which the United States  Copyright Office issued          to him effective February 1, 1994.                    The Patriots' new logo  and Grubb's design contain some          of the same elements,  including a man's face in  profile, stars,          and  stripes.1  The  district court  granted summary  judgment to          Defendants.   The district court  concluded that Grubb  failed to          show that Loh had access to Grubb's work, relying in  part on the          fact that the Patriots established and followed a policy that was          designed  to  prevent designers  -- such  as  Loh --  from seeing          outside submissions.  Additionally, the district court found that          Loh  composed the  Patriots'  new logo  independently of  Grubb's          design.   In the instant  appeal, Grubb  challenges the  district          court's grant of  summary judgment to Defendants.  In particular,          Grubb  argues that  his  Supplemental Affidavit,  in which  Grubb          compares  Loh's work  and his  own, asserts  facts that  create a          direct conflict with Loh's testimony, on which the district court          relied.   In the  Supplemental Affidavit, Grubb  states that "the          relative  proportions of  the  elements of  the  two designs  are          substantially identical  and the  curve of  the base  line .  . .          appears to be a precise match," and that Loh's work was "probably          . . .  traced from some other drawing."   According to Grubb, the          district court  erred in  crediting Loh's  testimony in light  of          Grubb's Supplemental Affidavit.                                        ____________________          1  See appendices following this opinion.             ___                                         -4-                               II.  STANDARD OF REVIEW                               II.  STANDARD OF REVIEW                    Summary  judgment is  appropriate when  "the pleadings,          depositions, answers to interrogatories, and  admissions on file,          together with the affidavits . . . show that there  is no genuine          issue  as to  any  material fact  and that  the  moving party  is          entitled to  a judgment  as a  matter of law."   Kelly  v. United                                                           _____     ______          States, 924 F.2d 355, 357 (1st Cir. 1991); see also  Fed. R. Civ.          ______                                     ________          P. 56(c).   Under  Rule 56(c),  the opponent  of the  motion must          produce  evidence on which a reasonable finder of fact, under the          appropriate proof burden, could base a verdict for the  opponent;          if  the opponent cannot produce such evidence, the motion must be          granted.  Celotex  Corp. v.  Catrett, 477 U.S.  317, 323  (1986);                    ______________     _______          Anderson v. Liberty Lobby, 477 U.S. 242, 249 (1986).            ________    _____________                                   III.  DISCUSSION                                   III.  DISCUSSION                    To  prevail on  a  claim of  copyright infringement,  a          plaintiff  must  show two  elements:   (1)  ownership of  a valid          copyright  and (2) copying of  the protected work  by the alleged          infringer.   See Concrete  Mach. Co.  v. Classic  Lawn Ornaments,                       ___ ___________________     ________________________          Inc., 843 F.2d 600, 605 (1st Cir. 1988); 3 Melvin  B. Nimmer, The          ____                                                          ___          Law of  Copyright    13.01  at 13-3  (1987).   Defendants do  not          _________________          contest Plaintiff's ownership of a valid copyright on his design.          Therefore, we turn to  the issue of whether summary  judgment was          proper with respect to the alleged copying.                    "Proof by  direct evidence of copying  is generally not          possible since the actual  act of copying is rarely  witnessed or          recorded."    Concrete Mach.,  843 F.2d  at  606.   Absent direct                        ______________                                         -5-          evidence,  copying  may  be  inferred  from  a  showing  that the          defendant  had "access"  to  the plaintiff's  work  prior to  the          creation  of defendant's work, Baxter v. MCA, Inc., 812 F.2d 421,                                         ______    _________          423  (9th Cir. 1987), and  that there is "substantial similarity"          between the works, Walker v. Time  Life Films, Inc., 784 F.2d 44,                             ______    ______________________          48 (2d Cir.), cert. denied, 476 U.S. 1159 (1986); see Sid & Marty                        ____________                        ___ ___________          Krofft  Television Prods.,  Inc.  v. McDonald's  Corp., 562  F.2d          ________________________________     _________________          1157, 1162-63 (9th  Cir. 1977).  Even if both  showings are made,          however, the trier of fact may nonetheless find no copying if the          defendant shows  independent creation.  Concrete  Mach., 843 F.2d                                                  _______________          at  606 n.6; Eden  Toys, Inc. v.  Marshall Field &  Co., 675 F.2d                       ________________     _____________________          498, 501 (2d Cir. 1982).  Viewing the summary judgment record  in          the  best light for Plaintiff, we conclude  that he has failed to          raise  a  genuine  issue  of   material  fact  with  respect   to          Defendants' "access";  this deficiency alone suffices  to justify          summary judgment.                    To satisfy its burden  of showing access, the plaintiff          must  produce evidence  from which  a reasonable  finder of  fact          could infer that  the defendant had  a reasonable opportunity  to          copy his or her work.  See Selle v. Gibb, 741  F.2d 896, 901 (7th                                 ___ _____    ____          Cir. 1984).  Evidence that only creates a "bare possibility" that          the  defendant had access is  not sufficient to  create a factual          issue as to copying.  Jason v. Fonda, 526 F. Supp. 774, 777 (C.D.                                _____    _____          Cal. 1981) (concluding  that the  fact that between  200 and  700          copies of plaintiff's book  were available in Southern California          bookstores  was  insufficient  to  infer  that  defendant   movie                                         -6-          producers had a  reasonable opportunity to  copy it), aff'd,  698                                                                _____          F.2d  966 (9th Cir. 1982).  "[T]he  jury cannot draw an inference          of  access based upon speculation and  conjecture alone."  Selle,                                                                     _____          741 F.2d at 901.                    On  the  summary  judgment  materials  before  it,  the          district   court  concluded  that,  even  drawing  all  favorable          inferences for Grubb, the  evidence did not demonstrate  that Loh          had  access  to  Grubb's design;  in  fact,  it  showed that  Loh          composed his design  independently of and prior  to Grubb's work.          With respect to  Loh's access, Grubb  contends that the  district          court  erred, since an alleged  copier's access may  be proven by          showing that  an intermediary with  whom the copier  was involved          had  access to the copyrighted  work under circumstances in which          the  copier also may  have been given an  opportunity to view the          copyrighted  work.    Grubb  also argues  that  his  Supplemental          Affidavit  is  evidence that  Loh had  access to  Grubb's design.          With respect to the district court's finding of independent prior          creation,  Grubb argues  that Loh's  testimony suggests  that Loh          traced  the Patriots' New Logo  from another design.   Grubb also          questions   Loh's   credibility,   and   submits   that   Grubb's          Supplemental Affidavit is evidence that Loh did not independently          create the Patriots' new logo prior to Grubb's design.                    Turning first  to Loh's  access, it is  undisputed that          the  Patriots received  Grubb's sketch  on February 9,  1993, via          Grubb's unsolicited  submission.  Grubb points  to several pieces          of   evidence  that  he  believes  shows  Loh  had  a  reasonable                                         -7-          opportunity to copy Grubb's design.  First, according to  Grubb's          deposition, the individual Patriots' employee to whom he gave the          design told him that the  Patriots would get in contact with  him          in  the  future.   Additionally, Grubb  points  to the  fact that          Jansen,  as an  employee of  NFL Properties,  admits that  he had          contact with representatives of the Patriots beginning on January          27,  1993, and  that Jansen had  also hired the  design firm that          employed Loh.   Grubb  claims that  Jansen is  a point  of access          between Loh's firm and the Patriots, from which a finder  of fact          could  permissibly  infer  a  reasonable   opportunity  to  copy.          Finally, Grubb claims that his Supplemental Affidavit is evidence          that Loh had access to Grubb's design.                    We  need  not  resolve  Grubb's  contention  that  this          evidence  entitles him to  a finding of  access, however, because          even assuming,  arguendo, that it did, the undisputed evidence is                          ________          that  Loh created  the Patriots'  New Logo  prior to  February 9,          1993.2   As noted, supra, Grubb  does not just have  to show that                             _____          Loh had  access to Grubb's work;  Grubb has to show  that Loh had          access to Grubb's work before Loh created the Patriots' New Logo.          See Concrete Mach., 843 F.2d at 605 n.6; Baxter, 812 F.2d at 423.          ___ ______________                       ______                                        ____________________          2   The  district  court described  this  as  "independent  prior          creation,"  an  independent  showing  that rebuts  a  finding  of          access.  We do not consider whether  "independent prior creation"          is a  separate showing,  see  Grubb v.  National Football  League                                   ___  _____     _________________________          Properties,  Inc., slip op. at 6 (D. Mass. 1995) (citing Concrete          _________________                                        ________          Machinery, 843 F.2d at 605 n.6), or whether any showing of access          _________          must, as a  logical matter,  necessarily be access  prior to  the                                                              _____          creation  of a  defendant's work,  see Baxter,  812 F.2d  at 423,                                             ___ ______          since resolution of this question either way would not affect the          result of our analysis.                                         -8-          In  his deposition,  Loh  stated that  he  began working  on  the          Patriots' New Logo on  January 28, 1993, and by February 4, 1993,          had finished, save for later refinements, the Patriots' New Logo.          Additionally, in  his affidavit,  Loh further testified  that, in          late January of 1993, he created a pencil sketch of the Patriots'          New Logo, to which he  added color later that day.  With  the aid          of his  timesheets, he was able in his deposition to pinpoint the          day  he created  these  works  as January  28,  1993.   What  Loh          identified  as  having  been  created during  this  period  bears          unmistakable resemblance to the Patriots' New Logo, save for  the          color of the  star3 in  the hat and  a few  shadings on the  face          depicted.   This  testimony  demonstrates that  Loh did  not have          access  to Grubb's  design prior  to creating  the  Patriots' new          logo, see Baxter, 812  F.2d at 423, since Grubb's  evidence shows                ___ ______          that Loh could not  have viewed Grubb's design prior  to February          9, 1993.                    To be sure, Grubb  argues that he does in  fact dispute          Loh's testimony, and therefore, there  remains a genuine issue of          material fact as to the issue  of Loh's prior creation.  However,          on summary judgment, absent specific facts discrediting testimony          from  a witness associated with  the movant, and  absent a direct          conflict  in the  testimony, the  opponent (although  entitled to          have his or her evidence  taken as true) is not entitled  to have          the  defendant's  evidence positively  disbelieved.    Takeall v.                                                                 _______                                        ____________________          3  While the color  of the star changed from white to  silver, it          should be noted  that the  Patriots' actual helmet  color --  the          background of the logo -- also changed from white to silver.                                         -9-          Pepsico, Inc., 809 F. Supp. 19, 23 (D. Md. 1992),  aff'd, 14 F.3d          _____________                                      _____          596 (4th Cir. 1993),  cert. denied, 114 S.  Ct. 2742 (1994);  see                                ____________                            ___          also  Moreau v. Local  247, Int'l Bhd. of  Firemen, 851 F.2d 516,          ____  ______    __________________________________          519  (1st Cir. 1988); 10A Charles A. Wright, Arthur R. Miller and          Mary K. Kane, Federal Practice and Procedure:  Civil 2d   2726 at                        _________________________________________          119, nn.11-12 (1983).   Grubb first questions the credibility  of          Loh's testimony, and second argues that Loh's testimony conflicts          with Grubb's  Supplemental Affidavit, since Grubb  therein opines          that  his and  Loh's designs are  so similar  that Loh  must have          copied Grubb's work.                    Grubb attempts to call into question Loh's testimony by          arguing that Loh's computer software timesheets do not  show what          Loh had  drawn on  any particular  date, and  that Loh could  not          identify individual sketches he created during the design process          by specific date.   Grubb  also points to  Loh's admission  that,          without his timesheets, he could not remember on what date he did          what.   Furthermore, Grubb  argues that Loh  was still  sketching          possible logos  on or after  February 9, 1993.   All of  this is,          however, irrelevant.  The  parties stipulated that the timesheet-          generating software  program could  not be  backdated.   With his          timesheets and the summaries therein of how he used his time, Loh          testified  in his deposition that  he began sketching the designs          for the Patriots'  New Logo on January 28,  1993, and by February          4, 1993, he  had essentially  finished designing it.   While  Loh          testified  that  he  was  still  working  on  the  project  after          February 9,  he also  testified  that this  work involved  simple                                         -10-          refinements, such as changing  the color of  the star.  The  fact          that Loh needed  his timesheets  to recollect dates,  or that  he          continued  to work on the Patriots project after February 9, does          not discredit his testimony,  particularly where it is undisputed          that the timesheets could not have been backdated.                    Besides challenging the credibility of Loh's testimony,          Grubb  also  argues  that his  Supplemental  Affidavit represents          facts  in   direct  conflict  with  Loh's   testimony.    Grubb's          Supplemental Affidavit expresses his opinion of the Patriots' new          logo's similarity  to Grubb's work.  Grubb  supplies reasoning --          pointing to the relative  proportions of the elements of  the two          designs and the curve of the base line -- for why he believes the          designs are similar.  Grubb also concludes that Loh's design must          have been traced from another design.                    Grubb's argument seems to be that 1) Loh traced, and 2)          Loh's work resembles Grubb's work, therefore Loh's testimony that          he did not copy Grubb's work, and in fact,  created the Patriots'          new  logo before Grubb submitted  his own design,  is in dispute.          However, similarity alone  cannot lead to  a finding of  copying,          without  evidence  of access  prior  to  the allegedly  offending          work's creation.   As a result, we  must look to  whether Grubb's          affidavit actually creates a direct conflict with Loh's testimony          --   since  the  latter   rebutted  any  finding   of  access  by          demonstrating prior  creation.   We conclude that,  even assuming          that Grubb's Supplemental Affidavit is properly considered expert          testimony, it  is  simply  not  in  direct  conflict  with  Loh's                                         -11-          testimony.  Similarity cannot substitute for access, and the fact          that Loh admitted  to having  done "tracings" in  the process  of          producing his work does not conflict with Loh's statement that he          had virtually  completed the  Patriots' New  Logo by February  4,          1993,  since Loh admitted  that Evenson  had various  pictures of          colonial  soldiers  that  he   used,  and  the  Summary  Judgment          materials indicated that Loh was sent designs similar to the 1979          proposed Patriots' logo, which  also depicted a colonial soldier.          The fact  that Loh did tracings is  simply not in direct conflict          with Loh's testimony that  he had created the Patriots'  new logo          by February 4, 1993.                      As  a result,  like  the district  court before  us, we          conclude  that Loh  composed his  design prior  to  Grubb's work.          Such prior creation renders any conclusion of access or inference          of  copying illogical.  See  Concrete Mach., 843  F.2d at 606 n.6                                  ___  ______________          (stating that  "[a]lthough access plus substantial  similarity is          required  to show copying, the trier of fact may nonetheless find          no copying if the defendant shows independent creation").                    Because both access and substantial similarity need  be          shown, see  Concrete Mach. Co., 843 F.2d  at 606; O'Neill v. Dell                 ___  __________________                    _______    ____          Publishing  Co., 630 F.2d 685, 686 (1st Cir. 1980), and Plaintiff          _______________          has failed  to  demonstrate  a genuine  issue  of  material  fact          regarding  access, we need go no further.  While Plaintiff argues          that "[w]here two designs  are so similar that one must have been          copied  from  the other,  proof of  access  may not  be required,          because  no   explanation  other  than   copying  is   reasonably                                         -12-          possible,"   Brief  for the Plaintiff-Appellant  at 13,  the lone                       __________________________________          case that Plaintiff cites for this proposition, Flag Fables, Inc.                                                          _________________          v. Jean Ann's Country Flags  and Crafts, Inc., 730 F. Supp.  1165             __________________________________________          (D. Mass. 1989), in fact states that                      this Court's view of the  present dispute                      [is that] given  the indisputable  access                                           ____________________                      and  substantial  similarity between  the                      ____________________________                      two  parties'  banners,  the evidence  of                      independent  creation   advanced  at  the                      hearing  by  defendants  was  simply  not                      persuasive.          Id.  at 1181 (emphasis added).  Thus, Plaintiff misstates the law          ___          by failing to  recognize that he bears the burden of showing both                                                                       ____          reasonable  access and substantial  similarity.   Concrete Mach.,                             ___                            ______________          843  F.2d at  606; Walker,  784 F.2d  at 48;  Sid &  Marty Krofft                             ______                     ___________________          Television,  562  F.2d   at  1162-63.     The  reason  for   both          __________          requirements  is  simple:   copyright  protection  precludes only          copying; if two people  arrive at the same result  independently,          copyright law will not protect the first.  See Selle, 741 F.2d at                                                     ___ _____          896 (7th Cir. 1984) (stating that "two works may  be identical in          every detail, but,  if the alleged infringer  created the accused          work independently or both works were copied from a common source          in the public domain, then there is no infringement"); 3 Nimmer            13.02;  see also  Arthur  v. American  Broadcasting Cos.,  633 F.                  ________  ______     ___________________________          Supp.  146,   148  n.3,   149  (S.D.N.Y.  1985)   (concluding  no          infringement  even where  expressions are  extremely similar,  if          "nearly all the  similarity can  be attributed to  the fact  that          both [works]  are artist's  renderings of the  same unprotectible          idea"; ideas cannot be protected under copyright law, 17 U.S.C.                                           -13-          102(b)).  Thus, like  the district court  before us, we need  not          address the issue of substantial similarity.                                      CONCLUSION                                      CONCLUSION                    As  a  result of  the  foregoing, the  judgment  of the          district court is affirmed.                            affirmed.                            ________                                         -14-
