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Businesses have several available causes of action to claim when a competitor attempts to replicate the business’ appearance in advertising or its products.  Trademark law, such as the Lanham Act, provides many remedies to a business which believes that a competitor is emulating the business and creates a “likelihood of confusion.” Consumer protection laws, like the Florida Unfair and Deceptive Trade Practices Act can also cover such conduct because it qualifies as an unlawful “unfair” or “deceptive” method of competition.  Also available to aggrieved businesses is a claim that the competitor violated their copyright.  When it is appropriately brought, copyright law provides unique remedies and may provide recovery which might not otherwise be unlawful under trademark or consumer protection laws.  However, copyright law has a more limited application in comparison to trademark law in cases involving emulation of design amongst competing businesses, as reflected in the recent case, Off Lease Only, Inc. v. Lakeland Motors, LLC, 20-10825, 2020 WL 5553301 (11th Cir. Sept. 17, 2020).  Peter Mavrick is a Fort Lauderdale business litigation lawyer, and also represents clients in business litigation in Miami, Boca Raton, and Palm Beach.  The Mavrick Law Firm represents clients in breach of contract litigation, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment litigation, and other legal disputes in federal and state courts and in arbitration.

When a competitor emulates the appearance of a company’s products or advertising, the first cause of action to consider is usually under trademark law.  Trademark law was enacted to prevent a business emulating or copying the appearance of another.  Copyright law is generally more concerned with protecting artists from unlawful reproductions of their work, such as in music, film, or in books.  However, in limited scenarios, an aggrieved business may also have the opportunity to initiate business litigation under copywrite law when a competitor copies the artistic qualities of a business’ advertising or products.

Title seventeen of the United States Code protects “in original works of authorship fixed in any tangible medium of expression.  17 U.S.C. § 102(a).  However, “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”  17 U.S.C.A. § 102 (b).  Compilations of “work formed by the collection and assembling of preexisting materials” such that “the resulting work as a whole constitutes an original work of authorship” may also be protected by copyright. 17 U.S.C. § 101.  The copyright protection for compilations only protects the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.  The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.”  17 U.S.C. § 103(b).  Cases deciding business litigation involving copyrights for compilation work has made clear that the protection is far more limited than copyright protection for an original work.  Intervest Const., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914 (11th Cir. 2008) (“Accordingly, any similarity comparison of the works at issue here must be accomplished at the level of protected expression—that is, the arrangement and coordination of those common elements…. In undertaking such a comparison, it should be recalled that the copyright protection in a compilation is ‘thin’”).

An aggrieved plaintiff can seek statutory damages of up to $150,000 when there has been a willful violation of copyright law.  17 U.S.C. § 504(c)(2).  Additionally, Courts have discretion to allow the recovery of full costs and attorneys fees for the prevailing party in such business litigation. 17 U.S.C. § 505.  Accordingly, a plaintiff bringing a copyright claim where the violation is questionable risks an adverse award of attorneys’ fees.

Copyright infringement has two elements “(1) ownership of a valid copyright, and (2) copying of protectable elements.” Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312 (11th Cir. 2012).  “The second element can be proven either with direct proof of copying or, if direct proof is unavailable, by demonstrating that the defendant[ ] had access to the copyrighted work and that the works are substantially similar.” Home Design Services, Inc. v. Turner Heritage Homes Inc., 825 F.3d 1314 (11th Cir. 2016).

“[I]n an action for infringement, it must be determined both whether the similarities between the works are substantial from the point of view of the lay [observer] and whether those similarities involve copyrightable material.”  We can summarize this in “a single inquiry: whether a reasonable jury could find the competing designs substantially similar at the level of protected expression.”

Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312 (11th Cir. 2012); Intervest Const., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914 (11th Cir. 2008)(“When courts have dealt with copyright infringement claims involving creative types of works, ‘substantial similarity’ has been defined as existing ‘where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work’”)

In the recent case, Off Lease Only, Inc. v. Lakeland Motors, LLC, 20-10825, 2020 WL 5553301 (11th Cir. Sept. 17, 2020), a used car dealer was suing a competitor for violations for copying the plaintiff’s billboards along I-4 in its own advertising.  Both billboards contained the prominent phrases “NEED A USED CAR?” and “DON’T PAY MORE.”  The trial court entered summary judgment in favor of the defendant.  The Eleventh Circuit Court of Appeals in the Off Lease case decided that the elements shared between both billboards were not copyrightable material.  Particularly, the similarities concerned only “non-copyrightable elements, namely slogans, short expressions, and a business name.”  Off Lease Only, Inc. v. Lakeland Motors, LLC, 20-10825, 2020 WL 5553301 (11th Cir. Sept. 17, 2020).  Had the defendant in this business litigation also copied the plaintiff’s artistic representation of a car, the defendant may have been in violation of copyright law.

Copyright law provides unique remedies to an aggrieved business that believes a competitor unlawfully copied advertising or product design, but the range of what is protected under copyright law is far more limited than what is protected under the Lanham Act in this type of situation.  Peter Mavrick is a Fort Lauderdale business litigation attorney who also practices business litigation in Miami, Boca Raton, and Palm Beach.  This article does not serve as a substitute for legal advice tailored to a particular situation.

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