                 NOT RECOMMENDED FOR FULL-TEXT PUBLICATION
                            File Name: 05a0757n.06
                             Filed: August 29, 2005

                                Case Nos. 04-1545, 04-2106, 04-1586

                            UNITED STATES COURT OF APPEALS
                                 FOR THE SIXTH CIRCUIT


WINFIELD COLLECTION, LIMITED,              )
                                           )
      Plaintiff-Appellant Cross-Appellee, )
                                           )                     ON APPEAL FROM THE
             v.                           )                      UNITED STATES DISTRICT
                                           )                     COURT FOR THE EASTERN
GEMMY INDUSTRIES, CORP.,                   )                     DISTRICT OF MICHIGAN
                                           )
      Defendant-Appellee Cross-Appellant. )
                                           )
__________________________________________

BEFORE: KEITH, BATCHELDER, and COLE, Circuit Judges.

        ALICE M. BATCHELDER, Circuit Judge. Winfield Collection Limited (“Winfield”)

appeals the district court’s order granting summary judgment to Gemmy Industries Corp.

(“Gemmy”) on Winfield’s copyright infringement action against Gemmy and dismissing the action.

Winfield also appeals the district court’s award of attorney fees to Gemmy. Gemmy cross appeals

a ruling by the district court refusing to strike certain evidence that Gemmy maintains was

improperly withheld by Winfield during discovery. Because Gemmy’s allegedly infringing work

is not substantially similar to Winfield’s work, and the district court’s refusal to strike the challenged

evidence was harmless in any event, we affirm the judgments of the district court dismissing

Winfield’s copyright claim and refusing to strike the disputed evidence. We conclude, however, that

the district court abused its discretion in finding that Winfield’s complaint was frivolous, and we

reverse the judgment awarding attorney fees to Gemmy.
                                            BACKGROUND

        Winfield produces two-dimensional craft designs, which consumers purchase to produce

craft projects. These designs include instructions and images that explain how to create and

assemble the particular project. In 1996, Winfield produced a design that enables consumers to craft

a witch-like figure that appears to have just crashed into a tree, pole, or other structure (“Winfield’s

witch”). The design calls for consumers to use plywood for the figure’s body/clothing, hat, socks,

and boots; a mop for the hair; and a black plastic trash bag for the cape. The design further suggests

how consumers should paint the plywood (e.g., lime and white stripes for the socks and “fire red”

for the fingernails). Winfield sells only the designs for the crafts, not the materials for use in making

the crafts. On July 23, 1996, Winfield obtained Copyright Registration No. VA-781-855 for its

witch design, which included a photograph of a witch assembled according to that design.

Winfield’s copyright application claims copyright protection for two-dimensional artwork, text, and

photographs, and “[a]ll text and artwork of new patterns as listed.”

        Gemmy produces three-dimensional figures, not two-dimensional designs. Prior to 1996,

Gemmy produced a decorative witch figure sitting on a broom, which consumers could hang in the

air (“Gemmy’s hanging witch”). Gemmy copyrighted this witch, No. VA1-198-449. In addition,

in 1998, Gemmy began to produce two witch figures that appear to have just crashed into a tree or

similar object while flying on a broom (collectively, “Gemmy’s crashing witch”).1 One figure

comes with a tree trunk; the other can be attached to a consumer’s existing tree, pole, or similar

object; and both are the subject of Copyright Registration No. VA1-003-018. Gemmy’s hanging

witch and crashing witch do not require consumers to craft or assemble the figures. Furthermore,

        1
       At no point does either party advance arguments involving any difference in appearance between the two
Gemmy crashing witches.

                                                     2
Gemmy’s witches are not made from plywood and other household materials. The figures are

finished products made from refined materials, with detailed features such as molded-plastic hands,

socks, and boots; silk-like hair; molded-foam arms, legs, and body; and fabric hat, clothing, and

cape.

        Winfield’s one-count complaint alleged that Gemmy’s crashing witch infringed the copyright

of Winfield’s witch. Gemmy responded with a two-count counterclaim. First, Gemmy asked for

a declaratory judgment of non-infringement; second, Gemmy argued that if the court were to

determine that its crashing witch is substantially similar to Winfield’s witch, then Winfield’s witch

is substantially similar to–and thus infringes–Gemmy’s earlier hanging witch.

        The district court granted summary judgment to Gemmy, holding that it did not infringe

Winfield’s copyright. The court held that Gemmy did not have access to Winfield’s witch design;

that, even if it did have access, Gemmy’s three-dimensional crashing witch was not substantially

similar to Winfield’s two-dimensional witch design; and that even if Winfield had copyright

protection in a three-dimensional depiction of its witch design, Gemmy’s crashing witch was not

substantially similar. The district court therefore granted Gemmy a declaratory judgment of non-

infringement. Because the court found no substantial similarity between Gemmy’s crashing witch

and Winfield’s witch, the court dismissed Gemmy’s infringement counterclaim as moot, since it was

premised on a finding of substantial similarity on Winfield’s infringement claim.

        On appeal, Winfield argues that Gemmy did in fact have access to Winfield’s design and

photographs of Winfield’s assembled witch, primarily through catalogues mass mailed by Winfield.

In addition, Winfield argues that the district court erred in refusing to accord copyright protection

to the three-dimensional display of its witch. Winfield also argues that the district court erred by


                                                 3
according no originality to–and thus finding no protectible elements in–Winfield’s witch. Finally,

Winfield argues that the district court erred by basing its finding of no substantial similarity on the

fact that Gemmy’s crashing witch was made of materials different from those making up Winfield’s

witch. Gemmy cross appeals, arguing that the district court should have excluded Winfield’s

catalogues from evidence because Winfield did not properly disclose them in response to Gemmy’s

discovery requests. Winfield appeals the district court’s grant of attorney fees to Gemmy under 17

U.S.C. § 505, arguing that even if the district court was correct in dismissing it, Winfield’s

infringement claim was not frivolous. Finally, Gemmy requests, in two last-minute motions

submitted to this court, that we supplement the record with certain evidence, and strike certain other

evidence from the record, before deciding this case.

                                            ANALYSIS

I.     Standard of Review and Applicable Legal Standard For Copyright Infringement

       Summary judgment is proper “if the pleadings, depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any, 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.” Fed. R. Civ.

P. 56(c). Granting summary judgment in copyright infringement cases, “particularly in favor of a

defendant, is a practice to be used sparingly, but a court may compare the two works and render a

judgment for the defendant on the ground that as a matter of law a trier of fact would not be

permitted to find substantial similarity.” Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003)

(internal quotations omitted).

       To succeed in a copyright infringement action, a plaintiff must establish that it owned the

copyrighted creation and that defendant copied it. Id. In this case, Winfield’s ownership of the


                                                  4
copyright on its witch design is not disputed; thus, whether Gemmy copied Winfield’s witch is the

only copyright issue in the case. In cases where there is no direct evidence of copying, a plaintiff

may establish an inference of copying by showing 1) defendant’s access to the allegedly infringed

work and 2) a substantial similarity between the two works at issue. Id. at 853-54. The district court

held that Winfield failed to establish either of these elements.

II.    The Extent Of Winfield’s Copyright Protection

       In order to determine whether Winfield’s copyright was infringed, we must decide, as a

threshold matter, the extent of Winfield’s copyright protection in its witch. The district court held

that Winfield’s copyright protection extended only to its witch design, not to the figure crafted from

that design. Nonetheless, Winfield’s copyright registration included not only its design, but a

photograph of a witch assembled according to that design. In addition, Winfield’s registration

indicates the “nature of authorship” as, inter alia, photographs. Therefore, Winfield clearly sought

copyright protection not only in its witch design, but in the three-dimensional witch constructed

according to the instructions in that design.

       In limiting protection to the design, the district court cited several cases involving clothing,

in which courts refused to accord copyright protection to the actual articles of clothing, despite

recognizing protection for the clothing designs. Not only were these all district court opinions from

other circuits, they were all cases in which the court’s decision rested upon, to great extent, a

specific problem: namely, that giving copyright protection to clothing, which has a utilitarian

function, would allow for the protection of patent-like features without having to fulfill the rigorous

standards for obtaining a design patent. See Jack Adelman, Inc. v. Sonners & Gordon, Inc., 112

F.Supp. 187, 188-89 (S.D.N.Y. 1934); Beaudin v. Ben and Jerry’s Homemade, Inc., 896 F.Supp.


                                                  5
356, 358 (D. Vt. 1995); Russell v. Trimfit, Inc., 428 F.Supp. 91, 93-95 (E.D. Pa. 1977). The

decorative witches at issue in the instant case, however, are purely aesthetic, and thus have no

patent-like features to argue against copyright protection.

       Robert R. Jones Assoc., Inc. v. Nino Homes, 858 F.2d 274 (6th Cir. 1998), a design

architecture case that Gemmy cites on appeal, is similarly inapposite. Nino Homes involved an

alleged infringer’s using plaintiff’s copyrighted architectural plans to construct homes similar to

those constructed according to plaintiff’s plans. The Nino Homes court ruled that “one may

construct a house which is identical to a house depicted in copyrighted architectural plans, but one

may not directly copy those plans and then use the infringing copy to construct the house.” Id. at

280. Gemmy points to Nino Homes for the proposition that while it is forbidden from copying

Winfield’s design, Gemmy is free to copy the object constructed from that design. But as with the

clothing cases, the outcome of Nino Homes was dependent upon the peculiar nature of houses as

“useful” objects: i.e., utilitarian or functional creations whose protection sounds more appropriately

in patent than in copyright. Throughout its analysis, the Nino Homes court explicitly and repeatedly

acknowledged this problem of merging copyright into patent. See id. at 278-80. Furthermore, Nino

Homes, like the clothing cases, relied upon Baker v. Selden, 101 U.S. 99 (1879), for the principle

that copyright protection is not to be extended from patterns/drawings to the objects they describe.

But Baker dealt with a book that described useful forms and modes of accounting: i.e., functional

features more appropriate for patent protection than copyright. Even the Baker Court included the

following caveat in its opinion:

       Of course, these observations 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.


                                                  6
       This is their final end. They are as much the product of genius and the result of
       composition, as are the lines of the poet or the historian’s period.

Id. at 103-04.

       In the case before us, Winfield’s witch is, in Baker’s terms, a purely “ornamental design.”

It is art, plain and simple; like a painting or a sculpture, its only function lies in being pleasing to

the eye. Therefore, the reasoning behind the clothing and architecture cases clearly does not apply.

The parties do not direct us to any cases where patterns or drawings instruct the creation of purely

ornamental objects. We think, however, that the most useful paradigm is the case law affording

copyright protection for two-dimensional drawings/cartoons to three-dimensional depictions that

are substantially similar. See King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924)

(finding copying in defendant’s creating three-dimensional “Sparky” figure based on copyrighted

two-dimensional cartoon); Geisel v. Poynter Prods. Inc., 295 F.Supp. 331 (S.D.N.Y. 1968)

(according copyright protection to three-dimensional Dr. Seuss dolls based upon two-dimensional

cartoon); Fleischer Studios, Inc. v. Freundlich, 5 F.Supp. 808 (S.D.N.Y. 1934) (according copyright

protection to three-dimensional Betty Boop doll based upon two-dimensional cartoon).

       In the Sparky toy horse case, the Second Circuit said the following:

       We do not think it avoids the infringement of the copyright to take the substance or
       idea, and produce it through a different medium, and picturing in shape and details
       in sufficient imitation to make it a true copy of the character thought of by the
       appellant’s employee. Doing this is omitting the work of the artisan, but
       appropriating the genius of the artist.

King Features, 299 F. at 535. Similarly, in the Betty Boop case, the court noted the very distinctive

features of the cartoon girl and then said that defendants:

       did not make an exact copy of the embodiment of the plaintiffs’ character as depicted
       by Fleischer, but what they did make gives precisely the same impression because
       there is really no essential difference between the plaintiffs’ drawing and the

                                                   7
         defendants’ doll except that the hair is somewhat differently arranged . . . The
         defendants’ doll, therefore, comes within the definition of a copy which is laid down
         in [the Sparky toy horse case].

Fleischer Studios, 5 F.Supp. at 809.

         Under the reasoning presented in this line of cases, Winfield’s witch copyright–consisting

of detailed patterns and photos of an assembled product–should encompass three-dimensional

copyright protection. Otherwise, although there is no allegation that Gemmy did so in this case, a

Winfield competitor could simply follow Winfield’s instructions to the letter and create the exact

artistic product that Winfield developed through its own ingenuity, and then the competitor could

sell that three-dimensional replica as its own. Or a competitor could reach the same result by closely

studying the photographs in Winfield’s catalogues and using them to reverse-engineer a Winfield

witch. In either case, to categorically refuse to extend copyright protection to a three-dimensional

manifestation of Winfield’s witch is to allow a competitor theoretically to steal Winfield’s precise

expression of its creative vision, thus chilling the very creative expression that copyright law is

meant to foster.2

III.     Access

         Having decided that Winfield’s copyright protection extends to the actual witch decoration


         2
           Winfield argues at times that its three-dimensional assembled witch is a derivative work, which Winfield has
the exclusive right to create. See 17 U.S.C. § 106(2). This argument is meritless for several reasons. First, it conflicts
with Winfield’s better argument that its copyrighted design and photographs accord protection to three-dimensional
copies (i.e., not derivative works). Second, Winfield’s three-dimensional witch is almost certainly not a derivative work;
it involved not a scintilla of independent creativity, but merely employing physical labor to carry out the design
instructions. See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909-10 (2d Cir. 1980) (noting that “to support a
copyright the original aspects of a derivative work must be more than trivial,” and that although reproducing pre-existing
works in a different medium involves some degree of manufacturing skill, that does not constitute originality for
copyright purposes). And finally, even if Winfield’s witch were a valid derivative work spawned from its copyrighted
design, Winfield would be precluded from suing to claim its infringement, since it has not registered its three-
dimensional witch as a derivative work. See Murray Hill Publ’ns, Inc. v. ABC Communications, Inc., 264 F.3d 622, 632
(6th Cir. 2001) (holding that “before an infringement suit can be sustained based on the derivative work, that derivative
work must be registered”).

                                                            8
crafted from its design, we must apply the test for copyright infringement. The first question is

whether Gemmy had access to Winfield’s witch in order to copy it. See Kohus, 328 F.3d at 853-54.

“The access element of a copyright infringement claim is usually the less problematic.” Murray Hill

Publ’ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 316 (6th Cir. 2004). Access

requires the defendant’s seeing or having a reasonable opportunity to see plaintiff’s work and thus

having the opportunity to copy it. See id. We have cited with approval the notion that evidence that

a third party with whom both plaintiff and defendant were dealing had possession of plaintiff’s work

is sufficient to establish access by the defendant. See id.

       The district court found that, although Winfield “explains how [Gemmy] had a reasonable

opportunity to view figures crafted from [Winfield’s] design, [Winfield] neglects to establish how

[Gemmy] had a reasonable opportunity to view the design itself,” and thus the court held that

Winfield failed to satisfy the access element. Because Winfield’s copyright protection extends to

the actual witch decoration crafted from its design and photographs thereof, however, the district

court’s finding that Gemmy failed the access prong solely because it lacked access to Winfield’s

design was erroneous. The district court found that Gemmy had access to photographs of Winfield’s

assembled witch, on the basis of Winfield’s unrefuted affidavits swearing that photographs of its

witch appeared in millions of catalogues distributed throughout the country. This was all that was

necessary for Gemmy to have had the requisite access to make copying possible.

IV.    Substantial Similarity

       Once a plaintiff has established access, it must show substantial similarity between the two

works at issue. See Kohus, 328 F.3d at 853-54. The district court found no substantial similarity

between Winfield’s witch and Gemmy’s crashing witch for two basic reasons. First, the court held


                                                  9
that Winfield maintained copyright protection only in its two-dimensional witch design, and thus

that Gemmy’s three-dimensional crashing witch could not possibly be substantially similar.

Alternatively, the district court held that a witch constructed from Winfield’s design was still not

substantially similar to a Gemmy crashing witch. While we do not agree that Winfield’s copyright

protection was limited to its design, we do agree with the district court’s bottom-line conclusion that

Gemmy’s crashing witch is not substantially similar to a witch crafted from Winfield’s design.

       This circuit adopted a two-step approach for substantial similarity in Kohus, 328 F.3d 848.

The first step is to “filter out the unoriginal, unprotectible elements–elements that were not

independently created by the inventor, and that possess no minimal degree of creativity.” Id. at 855.

A helpful tool in performing this analysis is Judge Learned Hand’s famous abstractions test:

       Upon any work, and especially upon a play, a great number of patterns of increasing
       generality will fit equally well, as more and more of the incident is left out. The last
       may perhaps be no more than the most general statement of what the play is about,
       and at times might consist only of its title; but there is a point in this series of
       abstractions where they are no longer protected, since otherwise the playwright could
       prevent the use of his “ideas,” to which, apart from their expression, his property is
       never extended.

Id. (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930)). This test does

not lay out a concrete dividing line, but is a helpful methodological tool that can be used to identify

a spectrum of options. Id.

       In performing the filtering process, the basic guidepost to keep in mind is that copyright only

protects an author’s original expression; thus, courts must exclude as unprotectible any elements of

the work that are not original. The originality requirement does not mean that an element must be

novel or unique, only that it was independently created by the author. See id. at 853. In addition,

courts must be careful to make the ever-difficult distinction between an author’s ideas and his


                                                  10
expression of those ideas. See id. at 855 (“It is axiomatic . . . that mere abstract ideas are not

protectible, but the expression of an idea is.”) (citing Mazer v. Stein, 347 U.S. 201, 217 (1954)).

More specifically, if there is essentially only one way to express an idea, then that idea and its

expression are inseparable, and thus under the merger doctrine such expression is not protected. In

addition, courts must filter out scenes a faire, which are those elements that follow naturally from

the work’s theme, rather than from the author’s creativity. Id. at 856. Finally, if a work is to some

degree functional, a court must filter out any elements dictated by efficiency. Id.

       Once the unprotectible elements have been filtered out, the second step is to determine

whether the allegedly infringing work is substantially similar to the protectible elements of the

original. Id. This analysis requires that the trier of fact determine substantial similarity from the

perspective of the work’s target audience. Id. at 857. Normally, a copyright work’s target audience

is the lay public, or the ordinary reasonable person, id., and in the case before us both parties agree

on this as the intended audience. Therefore, expert testimony should not be required for this portion

of the analysis. See id.

       The district court performed an originality analysis for Winfield’s three-dimensional

witch–even though it did not deem it protected by Winfield’s design copyright–in which the court

found that Winfield’s witch contained no original elements of expression. Winfield correctly argues

that the district court erred in performing this originality analysis.

       The district court properly noted that in determining originality, it must filter out ideas,

expression that is inseparable from the idea expressed (merger doctrine), elements common to the

topic being depicted (scenes a faire), and anything functional. It was thus correct in noting that

elements such as a flowing cape, curled boots, black clothing, and a broom are scenes a faire for a


                                                  11
witch, or at least so abstract as to constitute unprotectible ideas rather than particularized expression.

Nonetheless, to the extent that the district court implies that just because these generalized elements

are unprotectible, Gemmy could have produced an exact replica of Winfield’s witch–or even an

exact replica of that witch’s hair, broom, cape, or clothing–it is incorrect.

        Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133 (2d Cir. 2004), a case cited by

Winfield, is instructive. Mattel rejected the notion that vague doll features such as widely spaced

eyes, upturned noses, and bow lips could never merit protection, stating that “[t]he proposition that

standard or common features are not protected is inconsistent with copyright law.” Id. at 135. The

Mattel court also said the following:

        There are innumerable ways of making upturned noses, bow lips, and widely spaced
        eyes. Even if the record had shown that many dolls possess upturned noses, bow
        lips, and wide-spaced eyes, it would not follow that each such doll–assuming it was
        independently created and not copied from others–would not enjoy protection from
        copying.

Id. But then the Mattel court said something that is not so favorable to Winfield:

        Mattel’s copyright in a doll visage with an upturned nose, bow lips, and widely
        spaced eyes will not prevent a competitor from making dolls with upturned noses,
        bow lips, and widely spaced eyes, even if the competitor has taken the idea from
        Mattel’s example, so long as the competitor has not copied Mattel’s particularized
        expression. An upturned nose, bow lips, and wide eyes are the “idea” of a certain
        type of doll face. That idea belongs not to Mattel but to the public domain.

Id. at 136. In other words, there has to be particularized similarity in the works’ features for

copyright infringement, but just because that similarity might be encompassed within a more general

idea unworthy of copyright protection does not mean that the more particularized similarity cannot

constitute infringement.

        The district court in the case at bar made a mistake similar to that made by the district court

in Mattel. The court reasoned that because elements such as flowing capes and black clothing are

                                                   12
scenes a faire and/or abstract ideas with regard to witches, Winfield’s witch’s cape and clothing (for

example) lack originality and are thus entirely unworthy of protection. This broad proclamation is

incorrect, for at some point Gemmy could make a flowing cape or black clothing that is so similar

to Winfield’s cape and clothing as to constitute copying.

       But the Mattel analysis ultimately dooms Winfield’s case. To make its witch seem similar

to Gemmy’s requires Winfield to describe the elements of its witch at a level of generality that is

so abstract as to constitute scenes a faire for witches, or at least ideas rather than expression.

Winfield’s flowing cape, black clothing, bent hat, and perpendicular broom are like the upturned

noses, wide eyes, and bow lips in Mattel. These characteristics are too generalized by themselves

to warrant protection, although the particular capes, clothing, hats, or brooms could theoretically be

similar enough to constitute infringement. Winfield loses because, viewing its witch side-by-side

with Gemmy’s crashing witch, the two are not even close to looking the same, apart from the

generalized idea that they are both witches crashing into trees. Their hats, brooms, capes, hair,

shoes, and colors are all significantly different. To the extent Gemmy has copied anything, it has

copied Winfield’s idea of a crashing witch, not its particularized expression of that witch. See, e.g.,

Beaudin, 896 F.Supp. 356 (finding no substantial similarity between two hats covered in Holstein

cow patterns, where even though defendant admitted it took the idea from plaintiff’s hats, defendant

had not actually copied the exact same pattern onto any of its hats).

       Winfield also argues that the district court erred by basing its finding of no substantial

similarity on the stark differences in materials making up Winfield’s and Gemmy’s witches. The

district court noted the following:

       [F]igures from [Winfield’s] design have a mop for the hair and a black plastic trash
       bag for the cape. In sharp contrast, [Gemmy’s] crashing-witch figure is not made

                                                  13
       from plywood and household materials such as mops and plastic bags; rather, the
       figure is made from refined materials and have [sic] detailed features: molded-
       plastic hands, socks, and boots; silk-like hair; foam for the arms, legs, and body; and
       fabric for the hat, clothing, and cape. These stark differences preclude a finding that
       [Gemmy’s] crashing-witch figure is substantially similar to a figure crafted from
       [Winfield’s] crashing-witch design.

We read this passage as merely stating an additional reason for not finding substantial similarity

between Winfield’s and Gemmy’s witches. Not only do the witches look different, but they are

made from very different materials that contribute to their different appearances. It is certainly not

error to point out the different constituent materials in the context of determining that two works do

not look the same. No matter what the focus, however, the important point is that Winfield’s and

Gemmy’s witches are not substantially similar in appearance, which means that Winfield’s copyright

infringement claim was properly rejected by the district court.

V.     Gemmy’s Cross Appeal On Discovery Issues

       Gemmy moved for the district court to strike several of Winfield’s exhibits attached to its

summary judgment opposition brief, because Winfield allegedly failed to properly produce them in

response to valid discovery requests. This handful of exhibits included examples of Winfield’s

catalogues containing pictures of its assembled witch as an advertisement for selling the design, a

chart compiled by Winfield describing the circulation of its various catalogues, and a district court

opinion in a related case involving Winfield’s witch and a different defendant. The district court

refused Gemmy’s motion, adopting as its reasoning a portion of Winfield’s brief in opposition, and

Gemmy appeals this ruling.

       We review a district court’s evidentiary rulings for abuse of discretion. United States v.

Brown, 367 F.3d 549, 554 (6th Cir. 2004). Regardless of the propriety of the district court’s refusal

to strike the evidence, we fail to see any harm to Gemmy resulting from this decision. Even if the

                                                 14
district court were to have ignored the catalogues, Winfield would still have put forth sufficient

proof of access, as Gemmy never disputed that millions of catalogues had been in circulation with

pictures of Winfield’s witch. And as to the other district court opinion, if it is “evidence” at all,

there is no indication that the district court in this case relied on it. We find no abuse of discretion

here. See Fed. R. Civ. P. 37(c)(1) (allowing the district court to refuse to exclude evidence if lack

of prior disclosure was harmless).

VI.     Attorney Fees

       Winfield also appeals the district court’s decision to award attorney fees to Gemmy

pursuant to 17 U.S.C. § 505. We review a district court’s decision to grant or deny fees for abuse

of discretion. Murray Hill Publ’ns, Inc. v. ABC Communications, Inc., 264 F.3d 622, 639 (6th Cir.

2001); see 17 U.S.C. § 505 (providing that “the court in its discretion may allow the recovery of full

costs . . . [including] a reasonable attorney’s fee to the prevailing party as part of the costs”). The

Supreme Court has approved of several factors in determining when to award attorney fees to a

prevailing party in a copyright case, including “frivolousness, motivation, objective

unreasonableness (both in the factual and in the legal components of the case) and the need in

particular circumstances to advance considerations of compensation and deterrence.” Fogerty v.

Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994) (internal quotation omitted). In its opinion regarding

the attorney-fees issue, the district court awarded Gemmy $50,376.17 in fees, stating that the court’s

opinion regarding the substantive copyright issues made it clear that Winfield’s complaint was

“frivolous and objectively unreasonable, and, further, it is important to deter [Winfield] from bring

[sic] such claims in the future.”




                                                  15
       We are convinced that Winfield’s infringement claim was not frivolous or objectively

unreasonable. The district court based its decision primarily on the premise that Winfield’s

copyright protection was limited to its design, and that Winfield could not reasonably claim that its

two-dimensional design could be substantially similar to Gemmy’s three-dimensional witch. For

reasons set out above, this premise was erroneous; Winfield’s copyright protection extended to its

constructed witch and photographs of that witch. In addition to this fundamental mistake, the district

court also erred in its analyses of access and originality. In light of these errors, which made the

case look more lopsided than it was, and given the inherently subjective nature of the abstractions

test, we hold that the district court abused its discretion in finding Winfield’s complaint frivolous

and objectively unreasonable, and we therefore reverse the court’s award of attorney fees to Gemmy.

VII.   Last-Minute Motions

       In the final days before oral argument was heard in this appeal, Gemmy submitted two

motions to this court: a Motion to Supplement the Record with evidence that Winfield was aware

of Gemmy’s earlier hanging witch when Winfield filed its infringement complaint, and a Motion

to Strike certain evidence relating to a similar litigation between Winfield and Sun Hill Industries,

Inc. These motions were filed only sixteen days prior to oral argument, in response to filings made

by Winfield more than four months prior. Because Gemmy offers no compelling reason for our

considering evidence not before the district court; because the disputed evidence in the two motions

is of little or no relevance to our substantive decisions in this case; and because of the inexplicable

lateness of these submissions, both motions are denied.

                                          CONCLUSION




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       Accordingly, we AFFIRM the district court’s judgments dismissing Winfield’s copyright

claim and denying Gemmy’s Motion to Strike certain of Winfield’s summary judgment exhibits; we

REVERSE the district court’s award of attorney fees to Gemmy; and we DENY Gemmy’s last-

minute Motion to Supplement the Record and Motion to Strike submitted to this court on appeal.




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