Sports Tape Competitor Can’t Make Invalid Copyright Claim Stick

Lumos designed, developed and distributes KT Tape, its brand of kinesiology tape.  Lumos created and published a general instructional video describing the use of its tape in 2009.  Lumos published its collection of short instructional videos showing how to apply the tape for various conditions, such as finger jams and inner knee pain, in January 2012.  Lumos registered its copyrights in the videos with the U.S. Copyright Office on October 24, 2012.  Lumos filed a single work application for the collection of videos.  Lumos later filed a supplemental registration to remove the general instructional video from the copyright registration.  The Copyright Office granted both Lumos’ original and supplemental registration applications.

Lumos filed a copyright infringement suit against LifeStrength, the manufacturer of a competing kinesiology tape, for infringing Lumos’ instructional videos.  Lumos alleged that twenty of LifeStrength’s videos infringe by coping the organizational structure of Lumos’ videos; making identical use of non-essential and unique wording throughout the videos; listing nearly verbatim potential causes of injury found in the same order at the beginning of each video; using nearly identical disclaimer language; and suggesting nearly identical complementary treatments.  In response to Lumos’ motion for partial summary judgment, LifeStrength argued that Lumos’ copyright registration is invalid for failure to meet the single work registration requirements.  The district court agreed with Lumos that LifeStrength is an infringer and granted Lumos’ motion for partial summary judgment.

Lumos’ Single Work Copyright Registration is Valid

Lumos filed one “single work” application to cover its collection of short instructional videos and paid one registration application fee.  The requirements for filing a “single work” copyright registration are:

(i) For the purpose of registration on a single application and upon payment of a single registration fee, the following shall be considered a single work:

(A) In the case of published works: All copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same.

37 C.F.R. § 202.3(b)(4).

“Registration as a ‘published’ collection requires that all of the ‘constituent elements of the collection have been published together as a collection.’  A necessary element of a published collection copyright is that the collection is sold, distributed, or offered for sale concurrently.”  (Opinion pdf page 5). 

LifeStrength disputes the validity of Lumos’ copyright. LifeStrength argues that Lumos’ copyright registration is invalid because the KT Tape instructional video collection was not published concurrently or as a single unit as is required for a single work registration of a published collection. Lumos claims that its erroneous inclusion of the General Instructions video does not invalidate its registration because it did not intend to defraud the Copyright Office and the Copyright Office permitted the correction of the error by granting Lumos’ supplemental registration. The court agrees with Lumos.

(Opinion pdf page 5).

The court ruled that Lumos’ error in including the general video in its copyright registration application does not, by itself, invalidate the registration or prevent the registration from supporting an infringement action.  The record did not show that Lumos knowingly included the general instructional video in its copyright registration application with an intent to defraud the Copyright Office.  The initial inclusion of the general instructions video was an inadvertent mistake.  Lumos filed a supplemental registration to correct its error.  The Copyright Office then issued a supplementary registration certificate. 

A certificate of copyright registration that contains inaccurate information satisfies the litigation registration requirement unless the applicant intended to defraud the Copyright Office by including information it knew to be inaccurate.  The inaccuracy must be of the kind that, if known, would have caused the Register of Copyright to refuse registration.

The Copyright Office’s decision to approve the supplemental registration after it was notified of the error shows that the error was not one that if known, would have caused the Register of Copyrights to refuse registration.  Accordingly, Lumos is presumed to own a valid copyright and Lumos’ previous registration error does not bar its action against LifeStrength for infringement of the copyright.

(Opinion pdf pages 6-7).

LifeStrength Copied Protected Components of Lumos’ Copyrighted Works

Many of LifeStrength’s videos contained identical information and instructions.  In some instances, the Lifestrength videos copied sentences from Lumos’ videos verbatim.  The district court applied the probative similarities test to determine whether there was copying. 

Copying is established through indirect evidence by showing access to the copyrighted work and probative similarities between the works.  The higher the level of the access, the lower the degree of similarity required.  LifeStrength did not dispute that it had access to Lumos’ copyrighted videos.

Probative similarity is a less demanding test than substantial similarity and requires only that the works are similar enough to support an inference that the defendant copied the plaintiff’s work.  To establish probative similarity, the plaintiff must establish that there are similarities between the two works that would not be expected to arise if the works had been created independently.  To complete this analysis, the court must analyze the entire work, and not just the protectable elements.

(Opinion pdf page 7). 

The district court ruled that there were more similarities between the works than could be expected to arise if the works had been created independently. 

Even when there is copying, copyright infringement occurs only when the alleged infringer copies the protectable element of the copyrighted work. 

To impose such liability, the court must find substantial similarity between those aspects of Plaintiff’s videos which are legally protectable and the Defendant’s videos.  A finding of substantial similarity does not require that an infringing work be a ‘virtual copy’ of a protected one. Nor is the sine qua non of substantial similarity whether an ordinary observer would ‘confuse’ the two works in their entirety.  The traditional test is whether the accused work is sufficiently similar that an ordinary reasonable observer would conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression by taking material of substance and value.  The touchstone of the analysis is the overall similarities rather than the minute differences between the two works.

(Opinion pdf page 10).

The district court applied the Tenth Circuit’s “abstraction-filtration-comparison” test.

At the abstraction step, we separate the ideas (and basic utilitarian functions), which are not protectable, from the particular expression of the work. Then, we filter out the nonprotectable components of the product from the original expression. Finally, we compare the remaining protected elements to the allegedly copied work to determine if the two works are substantially similar.

(Opinion pdf page 10).

The district court determined that Lumos’ written disclaimer, the order and selection of causes of injury and the treatments, Lumos’ spoken disclaimers, the entire organizational structure of the videos and the scripts used in the videos, excluding single words or short phrases, were protected elements.

The comparison portion of the analysis requires the court to examine whether the allegedly infringing work is substantially similar to the copyrighted work.

The traditional test for substantial similarity is whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectable expression by taking material of substance and value.

(Opinion pdf page 20).

The district court found that the organizational structure of Lumos’ and Lifestrength’s video was substantially similar, while other parts of Lumos’ videos were copied verbatim.  The district court found that “LifeStrength’s videos are so similar to Lumos’ videos that an ordinary reasonable person would conclude that LifeStrength unlawfully appropriated Lumos’ protectable expression by taking material of substance and value.”  (Opinion pdf page 25).

This case is Lumos, Inc. v. Lifestrength, LLC, No. 2:12-cv-1196-TC, U.S. District Court Utah.

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