United States Court of Appeals
For the First Circuit
Nos. 06-1556; 06-2127
MAG JEWELRY CO., INC.
Plaintiff - Appellant/Cross-Appellee,
v.
CHEROKEE, INC.; TARGET CORPORATION, d/b/a Target Stores; STYLE
ACCESSORIES, INC.,
Defendants - Appellees/Cross-Appellants,
ROBERT MARGOLIS,
Defendant/Cross-Appellant.
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
[Hon. Ernest C. Torres, U.S. District Judge]
Before
Toruella, Circuit Judge,
Gibson,* Senior Circuit Judge,
and Lipez, Circuit Judge.
Robert W. Clarida, with whom Thomas A. Tarro, III, Kris
Macaruso Marotti, Cowan, Liebowitz & Latman, P.C., and The Law Firm
of Thomas A. Tarro, III, were on brief, for appellant/cross-
appellee.
*
Of the Eighth Circuit, sitting by designation.
Thomas R. Noel, with whom John R. Harrington and Noel & Gyorgy
LLP, were on brief, for appellee/cross-appellant Style Accessories,
Inc.
Craig M. Scott, with whom Christine K. Bush and Duffy Sweeney
& Scott, Ltd., were on brief for appellees/cross-appellants
Cherokee, Inc., Target Corporation and Robert Margolis.
August 8, 2007
LIPEZ, Circuit Judge. In December 2001, plaintiff Mag
Jewelry Company ("Mag") purchased some costume jewelry at a Target
store in Rhode Island. The necklaces, whose pendants were
comprised of four crystal stones in the shape of an angel, were of
interest to Mag because it holds a copyright on that "crystal
angel" design, and Target was not one of Mag's customers. Mag
subsequently filed this copyright infringement action against
Target Corporation and its supplier, Style Accessories, Inc.
("Style").1 The defendants denied copying Mag's angel, claiming
that their jewelry was based on an identical design independently
created by someone else. Following presentation of Mag's case to
a jury, the district court granted defendants' motion for judgment
as a matter of law. Mag appeals that ruling, and, in a cross-
appeal, defendants challenge the district court's refusal to award
attorney's fees.2 After careful review of the record, we affirm
the judgment for defendants on the merits but reverse the fees
ruling.
1
Also named as defendants were Cherokee, Inc., a company
whose principal business is to license trademarks to companies, and
Cherokee's chief executive officer, Robert Margolis. The crystal
angels that Mag purchased at Target were branded with the
"Cherokee" trademark. Mag dismissed all claims against Margolis in
June 2005. Cherokee remains a defendant-appellant, but its
relationship to the case is derivative of Target's and we therefore
do not separately address its liability.
2
Mag's appeal is designated as No. 06-1556; the cross-appeal
was filed several months later and is separately designated as No.
06-2127.
-3-
I.
The angel design at the center of this controversy is a
fairly simple figure. A round crystal stone serves as its head and
a teardrop stone as its body, two oblong ("navette") stones create
the wings, and a metal "jump" ring – a piece typically used to link
a charm to a chain – is attached at the top as a halo. The crystal
stones are commercially sold in standard sizes, and the stones are
neither cut nor otherwise altered to create the angel shape at
issue here. The design has been used for necklaces, earrings and
pins.
The facts underlying the dispute – other than the
ultimate question whether copying occurred – are largely
undisputed. Mag's president, Daniel Magnanimi, applied for
copyright registration for the angel in November 1995, listing 1995
as the year of its creation and June 1, 1995 as the date of first
publication. The United States Copyright Office issued the
registration and, in the following months, Mag sent letters through
counsel to dozens of individuals and businesses demanding that they
stop selling similar crystal angels.
One such letter was sent to Alan Gregerman, a Rhode
Island jewelry designer and manufacturer,3 who was selling a
crystal angel virtually identical to Mag's. Gregerman hired an
3
Gregerman's jewelry business is called Alan Gregerman
Company.
-4-
attorney, who in February 1996 sent a response to Mag stating that
Gregerman had created the same angel design earlier than 1995 and
that he also had "first manufactured, marketed, and sold products
incorporating the angel design" before that year. Gregerman later
testified that he created his crystal angel in the summer of 1994,
that he began selling and shipping copies by September 1994, and
that his angel was included in a 1995 gift catalog. His attorney's
letter reciprocally accused Mag of copyright infringement and
demanded that Mag "cease and desist" using the angel in any
products.
There were further communications between Mag's and
Gregerman's attorneys, followed by two significant events. First,
in June 1996, Mag filed a supplement to its original copyright
registration, changing its crystal angel's date of creation to
March 1992 – more than two years earlier than Gregerman claimed to
have created his angel. Second, Gregerman and Magnanimi agreed
that they both would sell crystal angels without interference or
threat of suit from the other, and Gregerman also gave Mag
permission to make and sell two other angel jewelry designs that he
had created. Magnanimi sent Gregerman a letter reflecting that
arrangement in September 1996, stating that "we have both agreed
that you can make the crystal angel as copyrighted by Mag Jewelry
Co." At trial, Gregerman testified that he rejected his attorney's
advice to pursue litigation at that time because he could continue
-5-
to use the four-stone angel design, and litigation would have upset
his mother, who was elderly and ill.
Mag and Gregerman continued to make and sell crystal
angels, co-existing without incident until Mag discovered the
crystal angel necklaces sold by Target Corporation in late 2001.
After purchasing some at the Target store in Warwick, Rhode Island
in December 2001 and more at a Target store in New York the next
month, Mag filed this copyright infringement action against the
retailer.4 Target later identified Style as its supplier, and Mag
amended its complaint to add Style as a defendant, alleging that
Style had sold crystal angel items that were copied from Mag's
angel.
Style, however, was a customer of Gregerman. In its
answers to Mag's interrogatories, the company denied that it had
copied "any piece sold or created by Mag jewelry" and reported that
it had "adapted a piece purchased from Alan Gregerman Co." to
create the Target necklace. Style had purchased crystal angels
from Gregerman between May 1997 and August 1998 and subsequently
had similar pieces produced, at a lower cost, by two other
companies. Style did not obtain Gregerman's permission to bring
the design to other manufacturers.
4
The lawsuit originally was filed in the Southern District of
New York, but was transferred to Rhode Island in response to
Target's motion.
-6-
Based on the uncontroverted evidence that Style's crystal
angel was modeled on a design it obtained from Gregerman,5 the
defendants moved for summary judgment in July 2005. In support of
their motion, they cited a June 2000 affidavit from Gregerman
stating that he had independently created his crystal angel.6 In
opposition, Mag offered a new affidavit from Gregerman, taken on
September 1, 2005, that included the following assertions:
5. Based on an agreement with Daniel
Magnanimi, Alan Gregerman Company can make and
sell the subject "Crystal Angel" jewelry
piece.
6. I inform any potential customer
interested in purchasing the subject "Crystal
Angel" piece that it has been copyrighted by
Mag Jewelry Co., Inc. and that Alan Gregerman
Company has an agreement with Mag and can make
and sell the piece to its customers.
. . .
8. To the best of my recollection, I
informed Chad Mollica of Style Accessories,
Inc. of the fact that the subject "Crystal
5
Mag does not concede that it was Gregerman's own design, but
has not contested that Style gained access to the crystal angel
through its dealings with Gregerman.
6
That affidavit stated, in part:
Mag's principal, Daniel Magnanimi, . . . proposed an
agreement whereby Mag would not interfere with my
production and sale of my crystal angel if I permitted
Mag to make and sell two other angel jewelry designs I
had created and was then selling. Mr. Magnanimi sent me
a letter in September, 1996 reflecting this arrangement.
I continued selling my crystal angel and still sell that
product to this day.
-7-
Angel" piece was copyrighted by Mag Jewelry
Co.
Relying on the new affidavit, Mag argued during a hearing on the
summary judgment motion that factual disputes remained,
particularly "whether Mr. Gregerman independently created that
piece" and, even if he did create a crystal angel, whether the
angel Gregerman sold to Style was his own or the Mag design. Mag's
counsel suggested that Gregerman was a licensee of Mag, and he told
the court that, if the new affidavit is read "precisely[,] what it
says is that he sold to Style the Mag angel. Assuming that there
even is an angel that he still maintains that he independently
created, that's not what he sold to Style."
At the end of the hearing, the district court denied the
summary judgment motions, observing that "there are just too many
factual links that have to be established here . . . for the Court
to say as a matter of law that this is not an infringing product."
The case thus proceeded to trial before a jury.
In preparation for trial and in response to Gregerman's
second affidavit, defendants sought further discovery and obtained
permission to depose him. At his February 2006 deposition,
Gregerman testified that he originally refused to sign a new
affidavit proposed to him by Mag's counsel because it stated that
Alan Gregerman Company had a license from Mag – "and that was not
the case." Gregerman agreed to the affidavit ultimately submitted
to the court after it was revised to eliminate the license
-8-
reference. At the deposition, the following exchange took place
between Gregerman and defense counsel:
Q. You didn't understand that you had a
license, correct?
A. I did not have – as far as I was
concerned, based upon my definition or my
understanding of a license, I did not have a
license from Danny.
Q. You were selling your Crystal Angel in
the Summer of 2005, correct?
A. Correct.
Q. And that was your creation that you were
selling, correct?
A. Correct.
At trial, Magnanimi testified about his creation of the
crystal angel in 1992 and stated that the piece, which was first
created as a pin, had been displayed at jewelry shows in
Providence, Rhode Island between 1992 and 1994. The earliest
evidence that Mag's crystal angel was distributed to others was an
invoice showing that a sample piece was mailed to a company,
Merlite Industries, in September 1994. Magnanimi testified that
the first documented sale of a crystal angel item occurred in March
1995 and that more than 14,000 pins with that design were sold in
the first half of 1995. At one point during cross-examination,
when asked about his company's effort to secure an assignment from
Gregerman of the copyright in his angel, Magnanimi stated that
there was never a dispute as to whose crystal
angel it was. Alan Gregerman claims that he
independently designed it, and I claim that I
independently designed it.
Whose crystal angel it was from 1995
and 1996 until this day me and Alan Gregerman
-9-
never discussed, didn't care whose crystal
angel it was.
Gregerman, also called as a witness by Mag, described his
own creation of a four-stone crystal angel in 1994 at a customer's
request. On cross-examination, in response to a question by
defense counsel, he agreed that he had "always considered that [he]
independently created that angel," and further agreed that it was
his own angel that he sold to Style. However, he also acknowledged
that he told customers who purchased the crystal angel, including
Style's president, Chad Mollica, that Mag Jewelry had a copyright
on the design and that he and Magnanimi had "an understanding or
agreement" that he could manufacture and sell the four-stone angel
"without any legal repercussions." Upon questioning by Mag's
counsel, Gregerman testified that the crystal angel design sold to
Style was "the same crystal angel design" as Mag's and that,
"[t]echnically," Gregerman had been selling "the crystal angel
design that was copyrighted by Mag Jewelry."
At the close of Mag's presentation of its case-in-chief,
the defendants moved for judgment as a matter of law pursuant to
Federal Rule of Civil Procedure 50, arguing, inter alia, that Mag
had failed to prove that Style copied the Mag crystal angel. In
its oral ruling, the district court stated that the only reasonable
conclusion that could be drawn from the evidence was that
defendants had copied the angel they had obtained from Gregerman.
The court explained:
-10-
I don't see how there could be any contention
here that the defendants copied Mag's crystal
angel as opposed to Gregerman's, because they
had ready access to Gregerman's, and there
would be no reason for them having Gregerman's
crystal angel and having a history of selling
it why they would possibly go to take Mag's
crystal angel.
The court then went on to consider the "fundamental
question" – "whether Gregerman's crystal angel infringed on Mag's
copyright." To establish copyright infringement, a plaintiff must
prove two elements: (1) ownership of a valid copyright and (2)
copying of the protected work by the alleged infringer. Feist
Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991);
Johnson v. Gordon, 409 F.3d 12, 17 (1st Cir. 2005). The plaintiff
bears the burden of proof on both elements. Johnson, 409 F.3d at
17. Mag's ownership of a valid copyright has not been contested;
the focus in this case has been on the element of copying. Direct
evidence of copying is rare, id. at 18; Grubb v. KMS Patriots,
L.P., 88 F.3d 1, 3 (1st Cir. 1996), but an inference of copying may
be drawn from evidence that an alleged copier had access to the
copyright holder's previously created design and that there is a
high degree of similarity between the works, Johnson, 409 F.3d at
18; Grubb, 88 F.3d at 3.7
7
A copyright infringement claim may involve two different
assessments of "similarity" – one to determine whether copying in
fact occurred and the other to evaluate whether it amounted to
infringement – and we have observed that confusion has arisen from
the "dual use of the term 'substantially similar'" to refer to both
issues, Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25,
-11-
Consistent with that framework, the district court noted
that, for Mag to prevail, it would have to make two showings.
First, Mag needed to demonstrate "a sufficient degree of
similarity" between its crystal angel and Gregerman's "to give rise
to an inference of actual copying." Johnson, 409 F.3d at 18. The
court found that Mag's evidence supported such a finding. Second,
Mag had to prove that the similarity in the designs was
attributable to Gregerman's having had access to Mag's crystal
angel rather than to Gregerman's independent creation of the same
design. The district court concluded that Mag's evidence on this
prong fell short, explaining that Mag's failure to elicit probative
evidence of access precluded a jury from finding that the items
sold and manufactured by the defendants were copied from Mag's
33 n.4 (1st Cir. 2001); see also Johnson, 409 F.3d at 18; Matthews
v. Freedman, 157 F.3d 25, 27 n.1 (1st Cir. 1998) (noting the two
uses of "[t]he substantial similarity rubric"). In Johnson, we
used distinct language for each, stating that the fact of copying
may be proven inferentially if there is "probative similarity"
between the works at issue (accompanied by proof of access), i.e.,
"the two works are 'so similar that the court may infer that there
was factual copying.'" 409 F.3d at 18 (quoting Lotus Dev. Corp. v.
Borland Int'l, 49 F.3d 807, 813 (1st Cir. 1995)). Copying as a
factual matter is insufficient to prove infringement, however,
giving rise to the second similarity question: whether the copying
was sufficiently extensive to render the two works "substantially
similar," and therefore actionable. Segrets, Inc. v. Gillman
Knitwear Co., 207 F.3d 56, 60 (1st Cir. 2000). "Th[is] substantial
similarity requirement focuses holistically on the works in
question and entails proof that the copying was so extensive that
it rendered the works so similar that the later work represented a
wrongful appropriation of expression." Johnson, 409 F.3d at 18.
Here, where the copyrighted work and the allegedly infringing item
are essentially the same, the latter inquiry is unnecessary.
-12-
angel.8 The defendants were therefore entitled to judgment as a
matter of law.
On appeal, Mag contends that the district court applied
the wrong legal standard to the issue of access and further erred
by failing to consider Style's access to the Mag design along with
Gregerman's. Mag also claims that the court improperly neglected
a dispositive independent basis on which Mag could have prevailed
before the jury – that Gregerman sold Mag's "crystal angel" design
to Style, and not his own independent creation.
In a cross-appeal, defendants claim that the district
court abused its discretion in rejecting their request for
attorney's fees.
II.
The parties' contentions in this case are sufficiently
unusual that we think it helpful to pause briefly for the purpose
of clarifying the relationships among the central characters. As
noted above, it is undisputed that Gregerman was the original
source of the crystal angel jewelry that Style distributed to
Target. Although Style directly purchased crystal angels from
Gregerman for a little more than a year, it later hired other
8
We note that, even if a plaintiff is able to show both
access and substantial similarity, "the trier of fact may
nonetheless find no copying if the defendant shows independent
creation." Grubb, 88 F.3d at 3; see also Concrete Mach. Co. v.
Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 n.6 (1st Cir.
1988).
-13-
companies to make similar items, but at a lower cost and without
Gregerman's authorization. The necklaces that Mag found at Target
were produced by one or more of these other companies.
When Mag sued Target and Style for copyright
infringement, Style defended in part by claiming that – if the
crystal angel could be copyrighted9 – Mag was not the copyright
holder whose design had been infringed. Style asserted that the
crystal angel necklace sold at Target was based on Gregerman's
independently created design and impliedly claimed that, if any
infringement occurred, it was of Gregerman's design, not Mag's.
Mag ultimately responded in two ways. First, it
maintained that Gregerman was not, in fact, an independent creator,
and so "Gregerman's design" was in reality Mag's design. Second,
Mag argued that even assuming that Gregerman independently created
an identical crystal angel, the angel design that Gregerman sold to
Style was Mag's, and not his own.10 Under either theory, Mag would
have a viable copyright claim against Style.
Gregerman is not a defendant in this case because he and
Magnanimi agreed that both of their companies could make the angel
– whether or not Gregerman was an independent creator – and
9
In its Answer, Style included as an affirmative defense that
Mag's crystal angel "was not original, nor was it an independent
creation."
10
This latter argument is based on Mag's contention that, even
if Gregerman conceived of the crystal angel independently, he
intended to be selling Mag's angel to his customers.
-14-
Gregerman also was free to sell the design to Style and his other
customers. Thus, in selling the crystal angel to Style, Gregerman
did no more than was authorized by the September 1996 letter
agreement. Mag's claim is that Style committed copyright
infringement when – without permission from either Mag or Gregerman
– it took the design it had obtained from Gregerman to other
companies for production of crystal angel jewelry.
Mag argues that we should reject out of hand what it
characterizes as Style's unprecedented independent creation
defense, i.e., that Style is protected by Gregerman's independent
creation notwithstanding the fact it did not have Gregerman's
permission to make the allegedly infringing items. While we can
appreciate Mag's dismay, principles of copyright law on which Mag
itself relies appear to permit just such a defense by Style. Mag
acknowledges in its brief that it is "axiomatic" that separate
copyrights exist in independently created designs, even if the
works are identical. See Boisson v. Banian, Ltd., 273 F.3d 262,
270-71 (2d Cir. 2001); see also Melville B. Nimmer & David Nimmer,
1 Nimmer on Copyright § 2.01[A] (2007) ("[A] work is original and
may command copyright protection, even if it is completely
identical with a prior work, provided it was not copied from such
prior work but is rather a product of the independent efforts of
its author."). Presumably, then, if Gregerman independently
created his design, and if Style copied the crystal angel from
-15-
Gregerman, only Gregerman's rights would be implicated. It would
be up to Gregerman to pursue, or not, his rights in his design.11
The pivotal issues before us, therefore, are whether Mag
provided sufficient evidence of copying by Gregerman to allow a
jury to reject the claim of independent creation, and whether, even
if Gregerman did independently conceive a crystal angel, the
particular design taken without permission by Style was Mag's.
With this background in mind, we turn to our review of
the district court's judgments.
III.
We review de novo the grant of a motion for judgment as
a matter of law under Rule 50, viewing "'the evidence, and
inferences to be drawn therefrom, in the light most favorable to
the non-movant.'" Cardona-Martínez v. Rodríguez-Quiñones, 444 F.3d
25, 28 (1st Cir. 2006) (quoting Mangla v. Brown Univ., 135 F.3d 80,
82 (1st Cir. 1998)). Judgment as a matter of law is appropriate if
the presentation of the party's case reveals no "legally sufficient
evidentiary basis" for a reasonable jury to find for that party.
Fed. R. Civ. P. 50(a)(1); see also id. at 28.
11
At the hearing on defendants' motion for attorney's fees,
the district court observed that "[o]ne of the many missing sets of
facts here is why Mr. Gregerman hasn't sued the Defendants, but
that's neither here nor there." Mag reported in its reply brief
that shortly after judgment was granted for defendants in this case
Gregerman did file his own action against Style. That litigation
is obviously outside the scope of this case, and we take no view of
its merits.
-16-
The district court concluded that defendants were
entitled to judgment because, in its view, there was insufficient
evidence to permit a jury to conclude that Style's crystal angel
originated with Mag's copyrighted design. Specifically, the court
ruled that there was no evidentiary basis for a finding that
Gregerman had access to Mag's crystal angel before he made his own
– and thus no basis for concluding that he copied the Mag angel.
Mag argues that the court erred in evaluating "access."
It claims that copyright law requires only that a defendant had a
"reasonable opportunity" to view the plaintiff's work and that the
court erroneously utilized a more demanding standard. According to
Mag, the court required it to prove that Gregerman actually took
advantage of viewing opportunities and saw the work.
We find this argument unpersuasive. Mag is correct that
"reasonable opportunity" is the applicable standard for evaluating
access; a copyright owner need not demonstrate an alleged
infringer's actual access to a protected work. See Grubb v. KMS
Patriots, L.P., 88 F.3d 1, 3 (1st Cir. 1996). However, "[e]vidence
that only creates a 'bare possibility' that the defendant had
access is not sufficient." Id.; see also, e.g., Gaste v.
Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) (requiring evidence
of "a reasonable possibility of access," which is "more than a bare
possibility and may not be inferred through speculation or
conjecture"); 4 Melville B. Nimmer & David Nimmer, Nimmer on
-17-
Copyright § 13.02[A] (2007) ("Of course, reasonable opportunity
. . . does not encompass any bare possibility in the sense that
anything is possible. Access may not be inferred through mere
speculation or conjecture. There must be a reasonable possibility
of viewing plaintiff's work – not a bare possibility.") (footnotes
omitted).
Here, as the district court noted, there was no evidence
that the Mag angel was widely distributed before Gregerman first
produced large quantities of his crystal angel in late 1994.12 A
sample was provided to a customer, Merlite, in September 1994, but
Mag recorded no sales until early the following year. Mag did not
create its first catalog until December 1996. Although there was
evidence that the crystal angel was displayed at jewelry shows
between 1992 and 1994 – two each year in Rhode Island, where
Gregerman lived13 – the district court observed that "[t]he problem
is that there is no evidence that Mr. Gregerman attended any of
those shows, let alone that he went to Mag's display."
Mag complains that this statement of "[t]he problem"
reflected the incorrect view that Mag had to show that Gregerman
12
The record included a receipt showing Gregerman's sale of
thirty-six pairs of crystal angel earrings to Treasure Chest, Inc.,
in September 1994 and an additional twenty-four pairs to the same
company in December 1994.
13
Magnanimi's testimony indicates that items displayed in the
shows, which took place on two weekends each year, remained in a
permanent showroom that was open every Wednesday.
-18-
actually viewed the design at the shows, while the standard
requires only an opportunity for viewing. However, the gap in
evidence is larger than Mag admits. While evidence that Gregerman
attended the Rhode Island jewelry shows – or, even more generally,
that he sometimes attended similar shows – may have permitted an
inference that he had a reasonable opportunity to view Mag's
design, Mag failed to identify any such evidence. Notably,
Gregerman was called as Mag's witness at trial, but was not asked
about his attendance at trade shows.14
Mag asserts that a reasonable opportunity to view the
copyrighted work can be shown through a "chain of events" or a
"link" by which access might have occurred. It cites Flag Fables,
Inc. v. Jean Ann's Country Flags & Crafts, Inc., 730 F. Supp. 1165
(D. Mass. 1989), to support its contention that the annual display
of Mag crystal angels at trade shows in Rhode Island, "in Mr.
Gregerman's own locality," was sufficient to establish such a
chain. Access was not disputed in Flag Fables, id. at 1171, 1178,
but the judge briefly noted that the defendant could not credibly
argue lack of access in part because plaintiff's decorative banners
14
Mag suggests in its briefs that the district court
improperly relied on Gregerman's "uncorroborated denial of copying"
in finding insufficient evidence of access, and asserts that
Gregerman "never denied that he knew of the [Rhode Island jewelry
show], or that he was for any reason unable to attend." However,
Mag bore the burden to show copying, and the court reasonably could
take into account its failure to establish Gregerman's history of
attending the show – or any other affirmative evidence of access.
-19-
had been displayed at the same craft fairs where the defendant
later sold her flags for more than a year before defendant began
producing her own versions. In addition, the court relied on
evidence that plaintiff's banners had achieved "rapid and
widespread popularity," id. at 1171, and were the subject of a
local newspaper article. No equivalent "chain of events" was shown
here. No evidence placed either Gregerman or Style at the jewelry
trade shows, and, as noted earlier, there is no evidence of
widespread awareness of Mag's crystal angel before Gregerman began
selling his jewelry.
Mag seeks to mitigate the absence of "'affirmative and
probative evidence'" of access, Jorgensen v. Epic/Sony Records, 351
F.3d 46, 51 (2d Cir. 2003) (quoting Scott v. Paramount Pictures
Corp., 449 F. Supp. 518, 520 (D.D.C. 1978), aff'd, 607 F.2d 494
(D.C. Cir. 1979) (table)), by pointing to the "striking similarity"
between the Mag and Gregerman crystal angel pieces. Mag argues
that numerous courts have held that such equivalence between works
is itself independent evidence of access, see Bucklew v. Hawkins,
Ash, Baptie & Co., 329 F.3d 923, 926 (7th Cir. 2003) (citing
cases), and it suggests that other facts in the record also tend to
rebut Gregerman's claim of independent creation. Mag notes
Gregerman's failure to register the copyright in his four-stone
angel, despite his registration of other contemporaneous designs;
his failure to enforce his claimed rights in the crystal angel
-20-
design against infringers, despite enforcing his copyright in other
contemporaneous works; and his issuance of a license to Mag to sell
other of his designs, suggesting a quid pro quo for Mag's allowing
him to sell its crystal angel.15
While the designs' similarity and these additional facts
would have assisted Mag before the jury had it offered some
probative evidence of access, any finding of copying by the jury
based on Gregerman's failure to register copyrights in other
designs or to enforce his rights in the crystal angel beyond his
agreement with Magnanimi would be "mere speculation or
conjecture."16 In addition, as the district court noted, the
striking similarity between the designs "is a little less
compelling in this case . . . because we're dealing with basically
an arrangement of geometric shapes and we're dealing with a final
creation that is sort of fixed in concept. . . . [T]here are only
so many ways one can depict an angel." In a case such as this,
15
At oral argument, Mag emphasized this alleged quid pro quo
and Gregerman's failure to register his four-stone angel as
evidence that Gregerman did not in fact consider the crystal angel
design to be his own. Whatever weight may be attached to these
facts is offset, however, by the evidence that Mag in 1997 asked
Gregerman for an assignment of his copyright in the angel –
suggesting that Mag believed Gregerman had a valid claim of
independent creation. Gregerman testified that he did not sign the
document and has "[n]ever" wished to assign any rights in the
crystal angel.
16
Gregerman testified that he had submitted registrations for
seven or eight copyrights out of the hundreds, possibly thousands,
of designs that he created over twenty-five years, noting that he
had begun registering more frequently than he had in the past.
-21-
where the simplicity of the design makes independent creation
highly plausible, similarity alone could not establish access and,
in turn, copying.17 Cf. Bucklew, 329 F.3d at 926 ("[W]hen the
similarities concern details of such an arbitrary character that
the probability that the infringer had duplicated them
independently is remote, an inference of copying may be drawn
without any additional evidence."); Gaste, 863 F.2d at 1068
("Though striking similarity alone can raise an inference of
copying, that inference must be reasonable in light of all the
evidence."); Selle v. Gibb, 741 F.2d 896, 901 (7th Cir. 1984)
("[A]n inference of access may [] be established circumstantially
by proof of similarity which is so striking that the possibilities
of independent creation, coincidence and prior common source are,
as a practical matter, precluded. . . . [However], striking
similarity is just one piece of circumstantial evidence tending to
show access and must not be considered in isolation . . . .").
On this record, we agree with the district court that no
reasonable finder of fact could conclude that Gregerman had a
reasonable opportunity to view Mag's work before Gregerman produced
his crystal angel. Consequently, the court properly found as a
17
Indeed, we previously have held that, even where two designs
are very similar, proof of access remains necessary. See Grubb v.
KMS Patriots, L.P., 88 F.3d 1, 5-6 (1st Cir. 1996). We explained
that "[t]he 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."
Id. at 6.
-22-
matter of law that Mag could not establish that Style copied its
crystal angel design by copying Gregerman's design.18
IV.
Mag alternatively asserts that, even assuming that
Gregerman independently conceived his crystal angel, Mag was
entitled to prove to a jury that the angel Gregerman sold to Style
was not his own creation, but Mag's design – meaning that when
Style copied the design, it was copying from Mag, not Gregerman.
Mag claims the district court erred in failing to consider this
basis for the infringement claim.
We view this argument to be so implausible as to verge on
frivolity. The record as a whole unequivocally refutes the theory
that Gregerman sold his customers crystal angels that he considered
to be based on Mag's copyrighted design, rather than on his own
essentially identical concept. Gregerman consistently testified
that he sold his own crystal angel design to his customers,
specifically including Style.
18
On the issue of access, Mag alternatively offers a cursory
argument that Style's liability should be premised on its own
access to Mag's crystal angel jewelry. Mag has never argued or
presented evidence that Style was exposed to the crystal angel
outside of its dealings with Gregerman; rather, it argues that
Style gained access to Mag's design through those dealings.
However, as we explain in Section IV, in light of Mag's failure to
offer sufficient evidence of copying by Gregerman, a jury could not
reasonably find that Gregerman provided Mag's design – rather than
his own – to Style. Consequently, there is no basis for a finding
that Style had access to Mag's design through Gregerman.
-23-
Mag's attempt to create a factual dispute by
characterizing Magnanimi's letter to Gregerman in September 1996
as a license agreement is, at best, disingenuous. The letter,
stating that "we have both agreed that you can make the crystal
angel as copyrighted by Mag Jewelry Co.," provides no basis for an
inference that from that time forward Gregerman was selling Mag's
angel pursuant to a license rather than his own creation. Indeed,
such a suggestion defies reason. Gregerman and Magnanimi both
testified that the two angels were essentially the same.19 Given
the assumption of independent creation – and that is the starting
19
At trial, Mag's counsel asked Gregerman if he had been
selling "the crystal angel design that was copyrighted by Mag
Jewelry." He replied, "Technically." Defense counsel immediately
followed up, asking Gregerman if his crystal angel looked the same
as the Mag crystal angel. He responded that "[i]t is the exact
same expression."
Magnanimi testified similarly:
Defense Counsel: So as of June of 1997, you knew that Mr.
Gregerman had the rights to his crystal
angel, didn't you?
Magnanimi: His crystal angel or my crystal angel?
Defense Counsel: His crystal angel.
Magnanimi: . . . [T]here was never a dispute as to
whose crystal angel it was. Alan
Gregerman claims that he independently
designed it, and I claim that I
independently designed it.
Whose crystal angel it was from 1995
and 1996 until this day me and Alan
Gregerman never discussed, didn't care
whose crystal angel it was.
Defense Counsel: Because it's the same angel,
essentially, isn't it?
Magnanimi: Absolutely.
-24-
point for this alternative argument – whether the angel Gregerman
sold to Style was his own design or Mag's depended entirely on
Gregerman's representation. In either case, the jewelry would look
the same. Thus, if Gregerman said he was selling his own angel –
and he did so testify – a jury could find otherwise only if
Gregerman's statements or behavior at the time of the sales
contradicted that assertion.20
In attempting to show such inconsistency, Mag relies in
part on the September 1996 letter. The letter contains only the
single sentence concerning Gregerman's use of the Mag design: "Per
our telephone conversation we have both agreed that you can make
the crystal angel as copyrighted by Mag Jewelry Co." As we already
have pointed out, this says nothing about which angel Gregerman
actually would make and sell. As Magnanimi testified, neither he
nor Gregerman was concerned about that question because both
designs were, essentially, "the same angel." In other words, both
men agreed that "the crystal angel as copyrighted by Mag Jewelry
Co." was identical to the crystal angel that Gregerman claimed to
have created.
20
We acknowledge that this discussion is somewhat elusive in
that we are attempting to ascertain the source of a piece of
jewelry that would look the same regardless of its origin.
However, given the uniformity in the designs, the critical fact in
these circumstances is whom Gregerman identifies as the designer of
the crystal angel jewelry he sold to Style.
-25-
Mag also highlights Gregerman's disclosure to his
customers that Mag possessed a registered copyright on the crystal
angel, as well as Gregerman's assurance that there would be no
litigation over his customers' use of the crystal angel design –
suggesting that these actions demonstrate that Gregerman was
selling Mag's angel. Mag reads too much into these messages.
Gregerman's decision to inform his customers that there was no risk
of legal action stemming from their purchase of his angels, despite
Mag's formal copyright protection, does not contradict his
testimony that he sold Style his own angels.
Nor does the new Gregerman affidavit that was offered by
Mag in its effort to stave off summary judgment fill the gap.
Without doubt, the affidavit could be read out of context as
stating that, in Gregerman's view, he was selling Mag's copyrighted
angel. In it, Gregerman refers to the Mag design as "the subject
'Crystal Angel' jewelry piece" and states that the "Alan Gregerman
Company sold the subject 'Crystal Angel' jewelry piece to Style
Accessories, Inc." Once again, however, the fact that all parties
saw Gregerman's angel as indistinguishable from Mag's provides
necessary context. Gregerman's testimony unmistakably shows that
it was the uniformity between the pieces that caused him to view
-26-
any sale of the former as "[t]echnically" also a sale of the
latter.21
Mag asserts that sufficient ambiguity exists surrounding
these various factors – the agreement, the verbal assurances to
customers, the averments in the new affidavit – that it was
entitled to a jury judgment on the credibility of Gregerman's
assertion that he sold his own angel design to Style. We disagree.
To the extent any of these indicators is equivocal in isolation,
the uncertainty is dispelled when the record is considered as a
whole. On this record, a jury could find for Mag only by engaging
in conjecture or speculation, and defendants' Rule 50 motion may
not be denied on such a basis. See Peguero-Moronta v. Santiago,
464 F.3d 29, 45 (1st Cir. 2006) ("Even though we draw all rational
inferences from the facts in favor of the non-moving party, that
party 'is not entitled to inferences based on speculation and
conjecture.'") (quoting Ferrer v. Zayas, 914 F.2d 309, 311 (1st
Cir. 1990)); Russo v. Baxter Healthcare Corp., 140 F.3d 6, 8 (1st
Cir. 1998) (stating that non-moving party may not rely on
21
Mag attempts to discredit as self-interested – and thus not
credible – Gregerman's testimony that he sold Style his own angel
design because such testimony protects Gregerman's ability to
pursue his own infringement suit against Style. However, if that
were Gregerman's motivation, he would have responded negatively
when asked whether he sold Mag's design to Style. His answer –
"technically" – was unnecessarily precise, confirming that the only
reasonable interpretation of his statements and behavior is that,
in his view, he was selling Style his own creation and not Mag's.
-27-
conjecture or speculation to justify submitting an issue to the
jury).
In sum, we conclude that a reasonable jury could not have
found that Gregerman sold Mag's angel rather than his own to Style.
We therefore affirm the district court's grant of defendants'
motion for judgment under Rule 50.
V.
Under section 505 of the Copyright Act, the district
court "in its discretion" may award a "reasonable attorney's fee"
to the prevailing party. 17 U.S.C. § 505. Such fees are to be
awarded to defendants on an "evenhanded" basis with plaintiffs.
Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994); see also
InvesSys, Inc. v. McGraw-Hill Cos., 369 F.3d 16, 19 (1st Cir.
2004). Among the factors that may be considered are
"'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, 510 U.S. at 534 n.19
(quoting Lieb v. Topstone Indus., 788 F.2d 151, 156 (3d Cir.
1986)). The goal of such awards is to "vindicat[e] the overriding
purpose of the Copyright Act: to encourage the production of
original literary, artistic, and musical expression for the public
good." Lotus Dev. Corp. v. Borland Int'l, Inc., 140 F.3d 70, 73
(1st Cir. 1998); see also Fogerty, 510 U.S. at 524.
-28-
Defendants challenge the district court's refusal to make
a fee award in this case, arguing that the court overemphasized
Mag's subjective good faith and improperly failed to take into
account both the weak factual basis for Mag's position and Mag's
misleading representations at the summary judgment hearing
concerning whether Gregerman sold Style his own, or Mag's, crystal
angel design. Although we may not disturb the trial court's
judgment simply because we would have approached the matter
differently, the court's misapprehension of either the law or the
facts may justify vacating its ruling as an abuse of discretion.
See InvesSys, 369 F.3d at 19; Lotus Dev. Corp., 140 F.3d at 75;
Edwards v. Red Farm Studio Co., 109 F.3d 80, 82-83 (1st Cir. 1997).
Having closely reviewed the record, we agree with
defendants that in rejecting a fee award, the district court relied
on a mistaken notion of the factual reasonableness of Mag's
infringement claim. During the hearing on defendants' fees motion,
the court noted that it was undisputed that Style had copied an
angel obtained from Gregerman and that the issue thus became
"whether Gregerman was producing this crystal angel simply as a
licensee of Mag pursuant to Mag's copyright." The court observed
that, despite its finding that Mag presented insufficient evidence
of access to warrant an inference of copying, that evidentiary
failure did not necessarily lead to an award of attorney's fees.
The court thought it significant that "the issue of Mr. Gregerman's
-29-
access to Mag's crystal angel didn't really surface[,] . . . didn't
become a big issue until the time of trial." The court stated:
It might have been a different matter
if this were an issue that was fully explored
prior to trial, but that wasn't the case.
This issue, although [it] may have been
touched on somewhat collaterally, didn't
really emerge as the focal point in the case
until the time of trial. At least that was my
recollection.
The court went on to identify as the other "significant"
point the "agreement, whether you call it a licensing agreement or
however one characterizes it, there was an agreement between Mag
and Gregerman under which they agreed to sell each other's crystal
angel." The court found "very troubling" the alleged
misrepresentations by Mag concerning the Gregerman affidavit at the
summary judgment hearing,22 but said that "I certainly can't
conclude based on what's been presented to me that . . . there was
any attempt to mislead the Court as to what Gregerman's position
was in this."
22
At that hearing, the court pressed Mag's counsel on whether
Gregerman's two affidavits "really clash with one another" so as to
create a factual dispute requiring trial. Counsel told the court
that the disputed question was whether Gregerman had independently
created the crystal angel; he reported that, in the second
affidavit, Gregerman was moving away from his earlier independent
creation position and "is saying . . . that there is a Mag piece
that is covered by the Mag copyright, and that is what he sold to
Style." Counsel further suggested that Gregerman asserted that his
sales of the Mag angel were pursuant to a licensing agreement.
However, Gregerman's testimony at trial was that he refused to sign
the affidavit until the language referring to a license was
removed.
-30-
We think the court misunderstood the extent and
significance of Mag's shift in its theory of the case to avoid
summary judgment and, indeed, the comments quoted above indicate
that the court may have decided differently had it fully
appreciated Mag's strategy. At the outset of the litigation, Mag
was pursuing Style as an infringer of its crystal angel. Once it
discovered that Style's angel originated with Gregerman, the
infringement claim as originally conceived was no longer viable.
At that point, Mag could show copyright infringement only if it
could prove either that Gregerman's "independent" design had in
fact been copied from Mag's, or that Gregerman had sold Mag's
angel, rather than his own, to Style.
Our analyses in the preceding sections explain why
neither of those positions was vindicated at trial, and we think it
apparent that the inadequacies in Mag's showings are traceable to
facts of which the company had full knowledge at the time of
summary judgment: that Gregerman had consistently maintained that
(1) he independently created his crystal angel, and (2) the angel
he sold to Style was his own (though identical to Mag's). Mag
offered no meaningful contrary evidence at trial.
At both the summary judgment and fees hearings, Mag's
counsel muddied the district court's understanding of the facts by
describing the September 1996 letter from Magnanimi to Gregerman as
a licensing agreement and asserting that Gregerman had agreed to
-31-
sell Mag's angel. There is no evidence that Gregerman agreed to
sell Mag's angel rather than his own, and counsel's assertion at
the fees hearing that Gregerman "testified that he sold the Mag
piece" to Style is – as we have explained – based on statements
taken out of context. Mag's counsel skillfully prepared the 2005
Gregerman affidavit to create that same ambiguity about Gregerman's
sales to Style, despite the company's awareness that Gregerman at
all times insisted that he sold only his own design.
Mag may well have revealed its hand in this litigation
when its counsel noted, at the outset of his argument in opposition
to the fee request, that "[t]he Court should not reward the
Defendants for their admitted actions of copying a copyrighted
piece." Counsel continued: "Maybe it was Mr. Gregerman['s] as they
contend or Mr. Magnanimi's [as] we contend, but they copied a
copyrighted work without authorization, and they should at the very
least not be rewarded for that with an award of attorneys' fees."
Beyond the equities, Mag argued that an award of fees would be
inappropriate because the issues were novel and complex, involving
the odd circumstance of a defendant without authorization from
either of two claimed copyright holders defending against an
infringement claim by asserting that its work originated from the
second holder, not the plaintiff. See, e.g., Lotus Dev. Corp., 140
F.3d at 72 (affirming denial of fees where case involved "a novel
and unsettled question of copyright law"); id. at 75 ("When close
-32-
infringement cases are litigated, copyright law benefits from the
resulting clarification of the doctrine's boundaries.").
We cannot agree with Mag's view that an award of fees in
this case would be improper on the ground that defendants violated
Gregerman's copyright, even if not Mag's. As the district court
recognized, Gregerman's possible case against the defendants is not
relevant, and we have no occasion to speculate on the propriety of
Style's conduct vis-à-vis Gregerman. Nor does this case implicate
a novel or complex issue of copyright law. Although the facts
underlying Style's defense may be unusual, the legal principle at
the core of their argument is, as noted earlier, well established:
separate copyrights exist in each of two identical works that are
independently created.
Mag must have known early on that its infringement claim
was tenuous, yet it managed to prolong the litigation by obscuring
the clarity of the underlying facts – a strategy that undoubtedly
accounts for the district court's imperfect recollection of the
case. Even if Mag was motivated by a good faith belief that Style
was an infringer, its pursuit of these defendants became
indefensible once it learned that Style obtained the design from
Gregerman. In these circumstances, we think the district court's
refusal to award fees may fairly be deemed an abuse of discretion.
See InvesSys, 369 F.3d at 20 ("[I]n section 505 Congress aimed to
provide a potential incentive to the winner who asserts a
-33-
successful copyright claim or defends against an unworthy one.");
Matthews v. Freedman, 157 F.3d 25, 29 (1st Cir. 1998) ("A
plaintiff's decision to bring a weak, if nonfrivolous, case and to
argue for an unreasonable extension of copyright protection are
relevant concerns."); Edwards, 109 F.3d at 82-83 (reversing
district court's denial of fees where plaintiff's action was
"highly unreasonable, if not frivolous" because she relied on
ambiguities she created); cf. Fogerty, 510 U.S. at 527
("[D]efendants who seek to advance a variety of meritorious
copyright defenses should be encouraged to litigate them to the
same extent that plaintiffs are encouraged to litigate meritorious
claims of infringement.").23 We leave to the district court's
discretion on remand the appropriate amount of the fee.
In Appeal No. 06-1556, the judgment of the district court
is affirmed. In Appeal No. 06-2127, the judgment of the district
court is reversed, and the case is remanded for further proceedings
consistent with this opinion.
23
Our conclusion that fees are warranted based on the case
litigated against Style and Target makes it unnecessary to consider
the separate arguments raised on behalf of Cherokee, Inc., and
Robert Margolis. We note, however, that the claims against
Cherokee and Margolis appear to be even more patently unreasonable.
-34-