In 2008, defendants Make Ideas, LLC and its founder Keith Mullin created the "Breathe Right Ball," a ball designed with holes to allow your dog to breathe a little easier (through the holes) during an intense game of fetch. Since my dog (Jack White) has the stamina to last for at least twenty tosses (often when I am on a work Zoom call), I am not in the market for anything that is likely to extend play and try my patience further. Yet ... a successful, long term relationship (like the one I have with Jack) requires compromise (typically from me) and often a cash expenditure (again, from me). But take a look at Jack's form: this dog has skills! Surely, he deserves a new ball?

In 2016, Make Ideas granted to plaintiff Petmate an exclusive license to use Make Ideas' intellectual property in connection with dog toys (including the Chuckit! Air Fetch Ball, currently $6.99 on Amazon). After the license expired and the parties' attempts to negotiate an extension broke down, they ended up in federal court in the Northern District of Texas. Texas being Texas, these former business partners are holding nothing back. Their cross claims cover breach of contract, trademark, design patents, utility patents, copyright, and more. Hell hath no such fury as licensing partners scorned.

Petmate moved for summary judgment on a number of Make Ideas' claims. In this post, I cover only the court's decision on the copyright claim.

Copyright and Advertising Slogans

Make Ideas alleges that Petmate infringed upon its copyright in The Breathe Right Book, a slim tome that the court describes as "generously named" since it consists of only three pages, including the title page. (#judicialshade.) The first part of the book includes a list of "benefit statements" and "unique selling points" for the Breathe Right Ball (e.g., "No more gasping for air when carrying a tennis ball. Breathe better when playing fetch to keep your endurance up. It floats too!"). The second part consists of a functional summary of the the utility patent covering the Breathe Right Ball (e.g., "With increased air flow and breathing, the dog gets more oxygen when running and exercising while holding the ball in its mouth"). Make Ideas alleged that Petmate violated copyright by using, without authorization, content from the book on product packaging and in various marketing materials.

District Judge Jane J. Boyle granted Petmate's motion for summary judgment. At the outset, the court noted that Make Ideas had failed to identify both the specific portions of The Breathe Right Book that allegedly were copied and the materials published by Petmate that included the allegedly infringing content. (#fail.) Although that provided sufficient grounds for granting the motion, the court went further and held that the phrases in the first section of The Breath Right Book were "not copyrightable subject matter for various reasons," including:

  1. Originality. Copyright protection only applies to works that are "original," - i.e., "the work [must be] independently created by the author (as opposed to copied from other works), and [must] possesses at least some minimal degree of creativity." (Citations omitted.) See this post.
  2. Words and Short Phrases. The Copyright Office's regulations provide that "words and short phrases such as names, titles, and slogans" are not subject to copyright because they contain a de minimis amount of authorship. 37 C.F.R. § 202.1; see also U.S. Copyright Office, Compendium of U.S. Copoyright Office Practices § 313.4(C) (3d ed. 2021).
  3. Facts and Ideas. Copyright law does not protect facts; it protects only an author's original expression of those facts. See 17 U.S.C. § 102 (copyright protection does not "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"); see also this post.
  4. Merger Doctrine. Where an idea can be expressed in so few ways such that "protection of the expression would effectively accord protection to the idea itself, ... the idea 'merges' with the expression, and the expression is deemed unprotectable." (Citations omitted.) See this post.
  5. Scenes a Fair. Copyright protection does not extend to "expressions that are standard, stock or common to a particular subject matter or are dictated by external factors." (Citations omitted.) See this post.

The court published this chart that identified the reason(s) why, in its view, each phrase in the first part of The Breath Right Book was not subject to copyright protection:


With respect to the summary of Make Ideas' utility patent in the second part of the book, the court noted that the "overall expression itself likely contains the necessary level of originality for copyright protection," but warned that the "copyright in such an instance would be thin, extending only to the unique combination of words and phrases - the expression - ... used in the summary and not the underlying ideas or methods." However, because (as noted above) Make Ideas did not identify the specific instances in which Petmate actually used material from either section of The Breathe Right Book, summary judgment was granted to Petmate.

Quick note: from the court's decision, you get the impression that Make Ideas was focusing its attention on other issues in this complex case, and the copyright claim was a mere sideshow. While I am inclined to agree with the court that each individual phrase, standing alone, is not subject to copyright protection, it is worth noting that the selection and arrangement of those phrases likely would meet the low threshold for originality established

by Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.

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