Free Order on Motion for Reconsideration - District Court of Arizona - Arizona

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

Heritage House '76, Inc., an) ) Arizona corporation, ) ) Plaintiff, ) ) vs. ) ) Life Cycle Books, LTD., a) Canadian corporation; The) Intrepid Group, a Colorado) ) corporation, ) ) Defendants. ) )

No. 03-CV-2516-PHX-FJM ORDER

The court has before it plaintiff's

Motion for Partial

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Reconsideration (doc. 70) and defendant Life Cycle's Motion for

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Reconsideration Regarding Plaintiff's Remaining Trademark

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Infringement Claims (doc. 72).

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I. Plaintiff's Motion for Reconsideration

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Plaintiff moves for reconsideration of our order granting

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defendant Life Cycle Books summary judgment on plaintiff's

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copyright infringement claim. Plaintiff claims that we sua sponte But

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engaged in a discussion of plaintiff's infringement claims.

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defendant moved for summary judgment on plaintiff's complaint "in its entirety," Defendant's Motion for Summary Judgment at 1, which includes an infringement claim. Complaint at 6. Defendant argued

that plaintiff "is not entitled to copyright protection" because plaintiff's work is familiar and an accurate depiction of pre-natal feet. Motion at 2. We found that plaintiff's work, while

copyrighted, is not entitled to protection due to its "standard, stock, or common" elements, Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003), that "flow[] from a commonplace idea." Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 765 (9th Cir. 2000). Defendant

explicitly argued that "even if Plaintiff's copyright was valid, it is not enforceable under the doctrines of scenes a faire and 'merger.'" Motion at 4. Plaintiff is simply mistaken that

"Defendant [only] contended in each of its copyright arguments that Plaintiff does not have a valid copyright." Motion to Reconsider at 4. Plaintiff's assertion that we engaged in a sua sponte

discussion of copyright infringement is erroneous. Plaintiff also argues that we ignored the degree of access defendant had to plaintiff's work. But, as plaintiff argued in its response to defendant's motion for summary judgment, defendant could succeed on summary judgment if "it did not have access to the Plaintiff's Precious Feet sculptoral work" or if "the two works are not substantially similar." Response at 9. We found that the works are not substantially similar. Plaintiff further argues that we

erred in not applying the extrinsic and intrinsic tests for infringement outlined in Cavalier v. Random House, Inc., 297 F.3d 815, 825­26 (9th Cir. 2002). But, Cavalier states that a court

"must take care to inquire only whether 'the protectible elements,

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standing alone, are substantially similar.'" Cavalier, 297 F.3d at 822, quoting Williams v. Crichton, 84 F.3d 581, 588 (2d Cir. 1996) (emphasis in original). We determined that plaintiff's work, a

realistic depiction of pre-natal feet, has very few protectable elements. The image of pre-natal feet, while not commonly visible to the eye, and perhaps not as commonly replicated as other images in nature, is part of the "common heritage of humankind" and we do not "use copyright law to prevent others from depicting [it]." Satava, 323 F.3d at 813. To the extent that there are any

protectable elements in plaintiff's work, plaintiff's are also incorrect that Cavalier requires the strict evaluation of "the subject matter, shapes, colors, materials, and arrangement of the representations" to determine objective similarity in appearance. Cavalier, 297 F.3d at 826. We are to "look[] to the similarity of

the objective details in appearance" and the factors cited by plaintiff merely "may be considered." Id. We did consider the objective details in appearance in determining that, of the potentially protectable elements of plaintiff's work such as "the specific relative vertical positions, the unequal lengths, the asymmetrical overall shapes of the two feet, and the relative dimensions of each of the toes," plaintiff's and defendant's works have "significant differences from the details identified by plaintiff." June 3, 2005 Order at 5. None of the potentially protectable elements were infringed by defendant. Plaintiff is also incorrect that we erred by "fail[ing] to compare the works as a whole." Motion to Reconsider at 15. Plaintiff cites Cavalier for the proposition that "at the end of the day, when the works are considered under the intrinsic test, they should [] be compared as a whole." Cavalier, 297 F.3d at 826. However, Cavalier makes clear that if a plaintiff cannot show a triable issue of fact under the extrinsic test, which it cannot here, defendant prevails on summary judgment because a jury cannot find infringement on the basis of the intrinsic test alone. Id. at 824.

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Therefore, for the reasons set forth in our Order of June 3, 2005, and repeated here, plaintiff's Motion for Partial Reconsideration is denied. II. Defendant's Motion for Partial Reconsideration Defendant moves for reconsideration of our denial of its motion for summary judgment with respect to plaintiff's trademark infringement claims. Absent good cause shown, motions for reconsideration "shall be filed no later than ten (10) days after the filing of the Order that is the subject of the motion." L.R.Civ.P. 7.2(g). Defendant claims that plaintiff's President, Michael Monahan, only recently read and signed his deposition transcript and that defendant did not receive the transcript until "last week," which we presume means approximately July 19, 2005, one week before plaintiff's motion to reconsider was filed on July 26, 2005. The deposition transcript attached to defendant's motion is dated June 23, 2005, more than one month before defendant filed the motion to reconsider. Counsel for defendant was in attendance at Monahan's deposition and was on notice of any statements that could form the basis of a motion for reconsideration. Defendant offers no justification for its failure to take Monahan's deposition in a timely fashion, before the cross-motions for summary judgment were fully briefed. Therefore, defendant has failed to satisfy its burden of "due diligence" to discover this evidence. See Alexander v. City and County of San Fransisco, 29 F.3d 1355, 1368 (9th Cir. 1994); Coastal Transfer Co. v. Toyota Motor Sales, U.S.A., 833 F.2d 208, 211 (9th Cir. 1987). Accordingly, defendant's motion for partial reconsideration is denied. Accordingly, IT IS ORDERED DENYING plaintiff's Motion for Partial Reconsideration (doc. 70); IT IS FURTHER ORDERED DENYING defendant's Motion for Partial Reconsideration (doc. 72).

DATED this 30th day of August, 2005.

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