exhibit a - tabberone

EXHIBIT A

App.003

Case 3:09-cv-02390-F Document 171-2 Filed 05/22/12 of 25 PageID 5088

CIVIL ACTION NO. 3-09CV2390-F

IN THE UNITED STATES DISTRICT COURTNORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

M3 GIRL DESIGNS, LLCPlaintiff

v.

BLUES BROWNIES, LLCKRISTA DUDTE, and

ROBERT DUDTEDefendants

Expert Witness Report ofTed D. Lee

February 28, 2012

App.004


Table of ContentsIntroduction and Background 1

Introduction 1

Background and Qual ifications 1

Assignment 1

Copyright Registration and Viability of Copyright Claim 2

Copyri ght Protection Generally 2

Copyright Infringement Generally 2

Registration Process and Bringing an Infringement Lawsuit.. 3

PlaintifP s Copyright Infringement Allegations 3

Plaintiff's Original Complaint 3

Plaintiff's Second Supplemental Response to Defendant's (sic) First Set of Interrogatories Pursuantto Fed. R Civ. P. Rules 33 .4

Certificates of Registration for the Copyrights-at- Issue 5

Copyright Registration No. VA 1-665-063 for "Snap Caps Jewelry Design/Marketing Materials" 5

Copyright Registration No. VA 1-684-413 for "Snap Caps Marketing Materials Vol. Ill" 5

Copyright Registration No. VA 1-665-059 for "Snap Caps Keeper" 6

PlaintifPs Copyright Claims from Certificates of Registration 6

Compi lation 6

Co Ilective Works 7

Jewelry Design 7

What the Copyrights-at-Issue Do Not Protect 7

PlaintifPs Underlying Jewelry Designs are Not Protected 7

Individual Jewelry Designs in Earliest of the Copyrights-at-Issue still not Protected 10

Invalidity of PlaintifPs Registrations of the Copyrights-at-Issue 13

What is protected by the Copyrights-at-Issue 13

Are Plaintiff's Allegations of Infringement Supported 14

Evidence that Plaintiff's Underlying Bottle Cap Jewelry is Not Original 16

Final Statements 17

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Introduction and Background

Introduction

Defendants' have retained me to provide litigation consulting services in connection withthe above-referenced suit.

Background and Qualifications

I have been a licensed attorney since 1970 and have been a practicing attorney for overforty years. In 1971, I was admitted to practice before the United States Patent and TrademarkOffice ("USPTO"). After graduating law school in 1970, I spent three years serving our countryin the United States Marine Corps as a Staff Judge Advocate. Since that time my entire legalcareer has been devoted to practicing intellectual property law.

In 1973 I moved to San Antonio and began working as an associate at Cox & Smith, Inc.After four years at Cox & Smith I left to form my own intellectual property firm, Gunn, Lee &Miller, P.c. Gunn, Lee & Miller, P.C. was the precursor to my current firm, Gunn, Lee & Cave,P.C.

In my almost forty years of intellectual property practice I have gained experienced in allaspects of intellectual property law. I have prosecuted thousands of copyright, trademark, andpatent applications through the application process. Over that time I have also litigated over onehundred intellectual property cases, many of which involved the same kind of issue in this case.I am Board Certified in Civil Trial Law by the Texas Board of Legal Specialization. Notablecases in which I have been involved include Taco Cabana v. Two Pesos, a trade dress case thatwent all the way to the United States Supreme Court.

I am admitted to the practice before a number of courts across the nation, including theSupreme Court of the United States. I am an active member of the Intellectual Property LawSection of the Texas State Bar and previously served as the Section Chair. I have also authoredclose to numerous articles on various topics of intellectual property law. My other qualificationsand achievements are set forth in the curriculum vitae attached to this report.

Assignment

Plaintiff's Original Complaint in this case alleged a count for copyright infringement.!Although Plaintiff eventually withdrew the Copyright Infringement Count,2 I have been asked toanalyze thc copyright infringement claim Plaintiff originally asserted and provide an opinionconcerning the viability of that claim. To perform my analysis and form my opinion, I reviewedmaterials related to the case which Defendants' counsel has provided to me. These materials arelisted among the items I was provided shown in Exhibit A attached hereto. In addition, I have

I Plaintiffs Original Complaint (Doc. No. I) at 4 (Count I).2 See generally Plaintiff's First and Second Amended Complaints (Doc. Nos. 52 & 72, respectively) (omittingcopyright infringement count).

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consulted legal references concerning copyright law that I have available to me through my legalpractice.

Copyright Registration and Viability of Copyright Claim

Based on the materials I have reviewed, the legal authorities available to me, and myalmost forty years of practicing intellectual property law, my analysis and opinion are set forth asfollows:

Copyright Protection Generally

Copyright law protects "original works of authorship" such as literary works, musicalworks, and pictorial or sculptural works which have been "fixed in any tangible medium ofexpression.',3 A tangible medium of expression is any medium (e.g., paper, video tape, computerdisc, etc.) in which the work of authorship can be fixed so that the work of authorship may be"perceived, reproduced, or otherwise communicated, either directly or with the aid of a machineor device.,,4

Importantly, copyrights do not protect things like concepts or ideas5 Rather, it protectshow an idea or concept may be expressed. For example, copyright law does not protect the ideaor concept of painting a picture of a particular landscape, rather, it protects how an individualauthor expresses his/her artistic interpretation of the landscape. Thus, two painters could standside by side, painting the same landscape without violating copyright law. However, if one ofthe painters copied the other painter's painting of the landscape (i.e., the other painter's artisticexpression of the landscape) the copying author would infringe the original author's copyright.

Copyright Infringement Generally

Anyone who violates any of the exclusive rights of a copyright owner commits copyrightinfringement6 Generally, the exclusive rights of a copyright owners are listed in 17 U.S.c. §106, followed by clarifications and exceptions given in 15 U.S.C. §§ 106A - 122. Among therights listed in Section 106 is the right "to reproduce the copyrighted work in copies orphonorecords.',7 To prove an infringement of the right of reproduction (i.e., unlawful copying), aplaintiff typically must prove (I) a defendant's access to the copyrighted work and (2) substantialsimilarities between the defendant's work and the copyrighted work that are probative ofcopying.8

3 17 U.S.c. § I02(a).4ld5 ld § I02(b) ("In 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 .... ").'ld§5IO.7 ld § 106(1).8 See, e.g., Armour v. Knowles, 512 F.3d 147, 152 (5th Cir. 2007) (going through the requirements necessary toprove copyright infringement).

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Registration Process and Bringing an Infringement Lawsuit

In most instances a plaintiff must register its copyright as a precondition to bringing acopyright infringement suit.9 The United States Copyright Office is the government agency incharge of registering copyright claims. As part of the application process, a copyright claimantsubmits copies of the work the claimant wants registered and the work is deposited in theCopyright Office. 10

Once the Copyright Office approves an application it issues a "Certificate ofRegistration" signed by the Register of Copyrights. The Certificate of Registration combinedwith the deposit tells the world exactly what the "copyright claimant" claims is its copyright. Inthis regard, Certificate of Registration states the nature of the copyright claimant's "authorship"and the deposited copy is referred to for clarification.

Plaintiffs Copyright Infringement Allegations

Among the materials I reviewed, Plaintiffs copyright infringement allegations are setforth in two places: (I) Plaintiff's Original Complaint'l and (2) Plaintiff's Second SupplementalResponse to Defendant's (sic) First Set of Interrogatories Pursuant to Fed. R. Civ. P. Rules 33.12

Plaintifrs Original Complaint

The first count of Plaintiff's Original Complaint is a count for copyright infringement.13

Incorporated into the Copyright Infringement Count is a non-exclusive list of at least twenty-two(22) different designs of Plaintiffs bottle cap jewelry,14 which Plaintiff claims Defendantscopied.ls Also incorporated into the Copyright Infringement Count are Defendants' "fourversions of unique 'keeper' magnetic boards that hold the bottlecap jewelry designs having amagnetic backing.,,16

The Copyright Infringement Count lists three registrations purporting to cover thetwenty-two (22) different jewelry designs: Registration Nos. VA 17 1-665-063, VA 1-684-413,

9 See 17 U.S.c. § 411 (setting forth limited exceptions and stating "no civil action for infringement of the copyrightin any United States work shall be instituted until preregistration or registration of the copyright claim has beenmade in accordance with this title."); see atso Reed Elsevier, Inc. v. Muchnick, _ U.S. _' 130 S. Ct. 1237, 1241(2010) ("Subject to certain exceptions, the Copyright Act requires copyright holders to register their works beforesuing for copyright infringement. ").10 See 17 U.S.C. § 408(a) (indicating that a copyright owner "may obtain registration of the copyright claim bydelivering to the Copyright Office the deposit specified by this section").II (Doc. No. I).12 Attached hereto as Exhibit B.13 Plaintiff's Original Complaint (Doc. No.1) at 4 (Count 1).14 Some of the designs have more than one version so, in reality, there may be more than twenty-two (22) differentdesigns in the list." Plaintiff's Original Complaint (Doc. No. I) at 4, ~ 16.16 [d. ~ 17.17 "V A" stands for "Visual Arts."

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and VA 1-665-059 (collectively, the "Copyrights-at-Issue,,).18 Paragraph No. 21 of theCopyright Count then alleges in its entirety:

The Defendants have, after the date of first use of the subjectmatter covered by the one or more of the copyrights-at-issue,infringed the Plaintiff's statutory and common law copyrights bycopying the subject matter covered by one or more of thecopyrights-at-issue, including the acts of making and distributinginfringing jewelry, authorizing the making and distribution ofinfringing jewelry; marketing and placing in the market infringingjewelry; participating in and furthering such infringing acts, orsharing in the proceeds from such infringing acts. 19

The remaining numbered paragraphs of Plaintiffs Copyright Count did not identify anyother specific works of Defendant's which allegedly infringe the Copyrights-at -Issue. Thus,Plaintiffs copyright infringement claim in Plaintiff's Original Complaint concerns onlyDefendants' alleged infringement of Plaintiff's bottle cap jewelry designs and the keeper boards.

Plaintiffs Second Supplemental Response to Defi:mdant's (sic) First Set of InterrogatoriesPursuant to Fed. R. Civ. P. Rules 33

Plaintiff later identified Defendants' website as an infringement of the Copyrights-at-Issue. In Plaintiff's Second Supplemental Response to Defendant's (.~ic) First Set ofInterrogatories Pursuant to Fed. R. Civ. P. Rules 33 (hereinafter "Supplemental Re;ponses"),Plaintiff states:

Exhibit 1 and 2 are the deposited works for the '063 and '413Registrations, which define different aspects of the registeredcopyright protection, and the Defendants' website as a whole isidentified as a first corresponding infringement of the Plaintiffscopyright rights shown in the deposited works. For instance, theattached marketing materials and copyrighted materials include thecopyrightable arrangement and assortment of bottlecap jewelry onthe deposited webpages and catalog pages. This one to onecorrespondence is shown in Exhibit 5,20 the Defendants (sic)website and marketing materials in comparison to the depositedworks at Exhibit 1 and 2 herein.2l

The Supplemental Responses also identify Plaintiffs specific bottle cap jewelry designsand Defendant's corresponding jewelry designs which Plaintiff claims infringe22 Finally, theSupplemental Responses discuss Registration No. VA 1-665-059 for "Snap Caps Keeper,"

" Plaintiff's Original Complaint (Doc. No. I) at 5, ~ 20.19/d.~21.20 Exhibit 5 from the Supplemental Responses is attached hereto in its entirety as Exhibit C. Color portions ofExhibit 5 are attached hereto as Exhibit D and have Bates numbers corresponding to those in Exhibit 5.21 Supplemental Responses (attached hereto as Exhibit B), at 2.22 Id. at 3-12. Defendants' counsel provided me with a color copy of the jewelry designs in Plaintiff's SupplementalResponses which is attached hereto as Exhibit E.

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stating "[t]he copyrighted work is directed to 'keeper' boards" and "as shown on Defendants'website print-out, the Defendants marketed and published images of "keeper" boards, at leastone of which is substantially similar to the copyrighted works shown above in the '059Copyright Registration. ,,23

Certificates of Registration for the Copyrights-at-Issue

As discussed above, the Certificates of Registration for each of the Copyrights-at -Issuegoverns Plaintiffs copyright claims and provides the basis for Plaintiffs Copyright InfringementCount.24

Copyright Registration No. VA 1-665-063 for "Snap Caps Jewelry Design/Marketing Materials"

The Certificate of Registration for Copyright Registration No. VA 1-665-063 (hereinafter"the '063 Registration") is attached hereto as Exhibit F. The certificate lists the title of the workas "Snap Caps Jewelry DesignlMarketing Materials" and lists "Madeline Elizabeth Bradshaw" asthe author and copyright claimant of the work. It also indicates Ms. Bradshaw created a"Collective Work, Compilation, [and] Jewelry design." Finally, it states this work wascompleted in 2007 and was first published on October I, 2007.

Defendants' counsel has provided me with two copies of the work deposited with the'063 Registration. One copy is a certified color copy of the work and is attached hereto asExhibit G. The other is a copy of the work that Plaintiff attached to its Supplemental Responsesas Exhibit 1 and which is attached hereto as Exhibit H. There are some differences between thetwo deposit copies which I cannot explain but these do not affect my analysis.

Copyright Registration No. VA 1-684-413 for "Snap Caps Marketing Materials Vol. III"

The Certificate of Registration for Copyright Registration No. VA 1-684-413 (hereinafter"the' 413 Registration") is attached hereto as Exhibit 1. The certificate lists the title of the workas "Snap Caps Marketing Materials Vol. III" and lists "Madeline Elizabeth Bradshaw" as theauthor and copyright claimant of the work. It indicates Ms. Bradshaw created a "Compilation ofPhotographs" and also states the work was completed in 2009 and first published on June I,2009.

Defendants' counsel has provided me with two copies of the work deposited with the'413 Registration. One copy is a certified color copy of the work and is attached hereto asExhibit J. The other is a copy of the work that Plaintiff attached to its Supplemental Responsesas Exhibit 2 and is attached hereto as Exhibit K. There are some differences between the twodeposit copies which I cannot explain but these do not affect my analysis.

23 Supplemental Responses at 13.24 Although Madeline Elizabeth Bradshaw is actually listed as the Copyright Claimant in the various registrationsfor the Copyrights-at-Issue, ptaintiff's Original Complain' alleges Plaintiff was assigned all rights to theCopyrights-at-Issue. PlaintifFs Original Complaint at 5, ~ 20. I have not analyzed the assignments but assume forpurposes of this opinion that the assignments properly conveyed the necessary rights for Plaintiff to have assertedthe Copyrights-at-Issue.

SIPage

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Copyright Registration No. VA 1-665-059 for "Snap Caps Keeper"

The Certificate of Registration for Copyright Registration No. VA 1-665-059 (hereinafter"the '059 Registration") is attached hereto as Exhibit L. The certificate lists the title of the workas "Snap Caps Keeper" and lists "Madeline Elizabeth Bradshaw" as the author and copyrightclaimant of the work. It indicates Ms. Bradshaw created a "Collective Work, Compilation, [and]Jewelry design" and also states the work was completed in 2008 and first published onDecember 15,2008.

Defendants' counsel has provided me with a certified color copy of the work depositedwith the '059 Registration. That copy is attached hereto as Exhibit M. Although PlaintiffsSupplemental Responses do not cite a specific exhibit for the'059 Registration deposit, it appearsto be within the deposit of the '063 Registration provided with the Supplemental Responses?;

Plaintifrs Copyright Claims from Certificates of Registnltion

The registrations for the Copyrights-at-Issue list one or more of three basic types ofauthorship: (I) compilation; (2) collective work; and, (3) jewelry design. Each is explainedbelow.

Compilation

All three of the registrations for the Copyrights-at-Issue claim authorship of a"compilation." According to 17 D.S.C. § !OI, "[a] 'compilation' is a work formed by thecollection and assembling of preexisting materials or of data that are selected, coordinated, orarranged in such a way that the resulting work as a whole constitutes an original work ofauthorship.,,26 The House Report prior to the passage of the current Copyright Act furtherexplains, "[a] 'compilation' results from a process of selecting, bringing together, organizing,and arranging previously existing material of all kinds, regardless of whether the individual itemsin the material have been or ever could have been subject to copyright.,,27

A copyright to a compilation is not the same as a copyright to the underlying works of thecompilation?S A compilation copyright protects an author's selection, arrangement, orcoordination of the underlying materials, not the underlying materials themselves29

25 See Exhibit H at M3G-04201.26 17 V.S.C. § 101 (defining "compilation").27 See 1 MELVILLEB. NIMMER& DAVIDNIMMER,NIMMERONCOPYRIGHT§ 3.02, at 3-4 to -5 (revised December20 II) (quoting House Report).28 See 17 V.S.c. § 103(b) (giving the subject matter covered by compilations and derivative works). Section 103(b)states:

The copyright in a compilation or derivative work extends only to the materialcontributed by the author of such work, as distinguished from the preexistingmaterial employed in the work, and does not imply any exclusive right in thepreexisting material. The copyright in such work is independent of, and does notaffect or enlarge the scope, duration, ownership, or subsistence of, any copyrightprotection in the preexisting material.

Id

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Collective Works

Two ofthc three registrations also claim authorship ofa "collective work." According to17 U.S.c. § 101, "[a] 'collective work' is a work, such as a periodical issue, anthology, orencyclopedia, in which a number of contributions, constituting separate and independent worksin themselves, are assembled into a collective whole.,,3o A collective work is a type, or subset, ofcompilation? I The difference is that some compilations consist of underlying materials whichby themselves are not copyrightable whereas the underlying materials of a collective work aren

In special circumstances registration of a collective work will protect the underlyingmaterials; however, as a general matter, "[c]opyright in each separate contribution to a collectivework is distinct from copyright in the collective work as a whole .... ,,33

Jewelry Design

Two of the three registrations also claim authorship of "jewelry design." Jewelry designis not defined in the Copyright Act. Presumably, Plaintiff's intended "jewelry design" to meanthe underlying three-dimensional bottle cap designs in the collective works.

What the Copyrights-at-Issue Do Not Protect

For the reasons that follow, the underlying jewelry or keeper boards themselves are notprotected by the Copyrights-at-Issue.

Plaintiff's Underlying Jewelry Designs are Not Protected

My analysis of the materials I was provided leads me to believe Plaintiff's jewelrydesigns are not covered by the Certificates of Registration for the Copyrights-at-Issue34

Collective work registrations protect the collective whole, namely, the selection, coordination,and arrangement of the underlying works in a sufficiently creative manner to warrant copyrightprotection.

As noted above, a collective work registration can impart copyright protection to each ofthe underlying elements of the collection under special circumstances; however, thesecircumstances are not present from the material I reviewed. A collective work registration willprotect the underlying elements if they were all first published together in a "single unit of

29 See, e.g., Feist Pub/'ns, Inc. v. Rural Tel. Servo Co., 499 U.S. 340, 350-51 (1991) (sating that a factual compilationcopyright "is limited to the particular selection or arrangement" offaclS, not facts themselves).3017 U.S.C. § 10I (defining "collective work").31See id. (defining "compilation" and stating U[t]he tenn 'compilation' includes collective works").32 See I MELVILLEB. NIMMER & DAVIO NIMMER, NIMMER ON COPYRIGHT§ 3.02, at 3-4 to -7 (discussingdifferences between compilations, collective works, and derivative works).J3 17 U.S.C. § 210(c).34 Although Ihe '413 Registration indicates it is for a "Compilation of Photographs," Plaintiff indicated it coveredthe individual jewelry designs in its Supplemental Responses. See Exhibit B at 3-12 (listing the '413 Registration inconjunction with the jewelry designs).

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publication.,,]5 Thus, for Plaintiffs collective work registrations to protect the underlyingmaterial each of the individual bottle cap designs and/or keeper boards in the collections musthave been first published (i.e., first distributed to the publici6 on the same date, together in asingle unit of publication.

In my opinion, it is unlikely each of the underlying bottle cap designs werc published onthe same date in a single unit of publication. The deposits for each of the Copyrights-at-Issueshow duplicative bottle cap designs among the different collections. If a bottle cap design is firstpublished in one collection it cannot be first published in another collection, especially whenPlaintiffs Copyrights-at-Issue all have different publication dates recited in their Certificates ofRegistration.

Specific Examples of the incongruent publication dates were observed in both thecertified, color copies of the deposits and the deposits Plaintiff attached as Exhibits to itsSupplemental Responses. The following are a few of the many examples showing the overlap ofindividual bottlecap designs from the certified, color copies I was provided:

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'063 Registration Deposit, Attachedhereto as Exhibit G, at page "2".

'413 Registration Deposit, attached hereto asExhibit J, at second page.

35 See 37 C.F.R. § 202.3(b)(4)(i)(A) (providing for a single application to protect each underlying element "[i]n thecase of published works: [when] 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"); see also, e.g.,McLaren v. Chicos FAS, Inc., 2010 WL 4615772, at *3 (S.D.N.Y. Nov. 9, 2010) (slip op.) ("The most naturalreading of the regulation's requirement that the copyrightable works form a 'single unit of publication' is that theworks must be first published together to qualifY as such.").36 See 17 U.S.C. § 101 (defining "publication").

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R 1·_Tl{()

'059 Registration, Attached hereto asExhibit M, at page "2".

,413 Registration, Attached hereto asExhibit J, at second page.

'063 Registration, Attached hereto as Exhibit G, atpage "6".

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The foregoing examples, as well as other examples, are also shown in the deposit copiesattached to the Supplemental Responses, though they are in black and white. Those depositcopies are attached hereto and the foregoing examples can be seen by reviewing them.37

Moreover, the Supplemental Responses actually list the duplicative bottlecap designs as betweenthe '063 Registration and the '413 Registration.38

Individual Jewelry Designs in Earliest of the Copyrights-at-Issue still not Protected

Even with the foregoing examples, the '063 Registration, which was the first publishedwork among the Copyrights-at-Issue, may still cover the underlying bottle cap jewelry designs inthat collection, if those underlying designs were all first published together in a "single unit ofpublication." However, the two deposit copies I reviewed for '063 Registration also lead me tobelieve this is unlikely.

Both deposit copies of the '063 Registration contain a variety of different underlyingworks in the collection. For example, the following underlying works were shown:

Examples ofPietures of Various Arrangements of Bottle Cap Designs in '063 Registration

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See Exhibit G, at page "8".

37 See, e.g., Supplemental Responses, Exhibit 1, (attached hereto as Exhibit H) at M3G-04176; Plaintiff'sSupplemental Re;ponses, Exhibit 2, (attached hereto as Exhibit K) at M3G-0414438 See Exhibit B at 3-11 (indicating which individual bottle cap jewelry designs are covered by both registrations).

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App.015


Examples of Marketing Materials in '063 Registration

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With. ckoJ;rc for JOml:llr.ina tkvo ond INpdlC' forha middle IdIoolloda. thls OaR. ••uh .,)cicf',ttQli\ily.wld ndiosit) lI<cnl IIl.mlL l"htJ honkaJ":nI pbrinIJ stiuic; ~CI.,iDnt nJdc. ,helhc'napcT1mITK"d with cmbdhw.e:ntt IUdI K ahlln' IIIW11l'lI:l1lckhctllc:~· eomrlc:t "'llb ~ lfUpl.lnU'd In the back.

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See Exhibit G, at tenth and eleventh pages.

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Trading necklaces @ QThese sweet necklaa' h.1'01!lnlcrch.JngC!able embellishedbottlC'CDP pendants The kids •••.•.dllove 10 trade: tl1cm. Necklaceand cap, $12; elttra CJp~ $6 OItlizards and LiKe Ch,ldrcn'sBoutIque. 136 S. M.lm SI In GoodlettsVIlle, 8S9·S225.

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For a number of reasons the distinctly different types of works shown in the aboveexamples leads me to believe the underlying works of the '063 Registration were not firstpublished on the same date, together in a single unit of publication. First, it seems odd to me thatworks of such a different nature would all be published for the fust time, all together, in a singleunit of publication.

In addition, the second example of marketing materials is apparently a newspaperexcerpt. Defendants' counsel provided me with an email Plaintiff produced in this case whichindicates it was.39 In fact, the second example displays products other than bottle cap jewelryand mentions the popular television show "Project Runway." If example two is indeed anewspaper excerpt, it would have been published apart from the other underlying materials andwould not have been first published in a single unit of publication with the other underlyingmaterials.4o

Finally, the date in the third example leads me to believe it was not part of a single unit ofpublication and also calls the fust publication date of the '063 Registration into question. Theexample states "Grand Opening, Saturday, June 21." June 21 fell on a Saturday in the year 2008.This would have been almost nine months after the date of first publication recited in the '063Registration. For the third example to be included in a collection first published on October I,2007, it would have to have existed at that time. Though I cannot say for certain it did not, a toystore advertising its grand opening almost nine months before it opened seems odd to me.

Invalidity of Plaintiff's Registrations of the Copyrights-at-Issue

According to case law, Plaintiffs registrations of the Copyrights-at-Issue are invalid tothe extent that Plaintiff claims they cover the underlying jewelry designs.41 Moreover, the natureof the '063 Registration deposit leads me to seriously doubt whether that collective work wasever published as whole, in a single unit of publication, despite the October 1,2007 date of firstpublication recited on the certificate of registration. If not, the '063 Registration is also invalidon that basis.

What is protected by the Copyrights-at-Issue

Based on the foregoing, in my opinion, the registrations of the Copyrights-at-Issue, atbest, protect only Plaintiff's choices in the selection and arrangement of the underlying materialsshown in the deposit copies. In other words, the Copyrights-at-Issue only protect Plaintiffschoices to compile and/or collect of these materials. For those Certificates of Registration whichrecite ')ewelry design," my experience tells me that the Copyright Office did not analyze the

39 See Exhibit N (email with altached newspaper excerpt matching that shown in deposit of '063 Registration).40 See McLaren v. Chicos FAS, Inc., 2010 WL 4615772, al *3 (S.D.N.Y. Nov. 9, 2010) (slip op.) (stating "prior,separate publication of a copyrightable work precludes that work from being treated later, together with publishedelements, as a 'single unit of publication''').41 See id. (finding registration invalid); accord Olander Enters., Inc. v. Spencer Gifts, LLC, 2011 WL 4356221 (C.D.Cal. Aug. 25, 2011) (same).

13IPage

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deposited materials in detail and merely assumed the underlying jewelry designs, as well as theother underlying works in the deposit copies, were all published together in a single unit ofpublication42 Clearly they were not.

Additionally, Plaintiff's underlying "keeper boards" for the '059 Registration also do notappear to be protected for the reasons discussed above. Namely, it does not appear that thekeeper boards and the bottle cap jewelry placed thereon were all frrst published in a single unit ofpublication. Therefore, the '059 Registration only appears to cover Plaintiff's choices in theselection and arrangement of keeper boards and the bottle caps attached thereto as shown in thedeposit copies.

Alternatively, the registrations of the Copyrights-at-Issue could cover Plaintiff's selectionand arrangement of photographs of the underlying materials. For example, the '059 Registrationmay cover the selection and arrangement of photographs of keeper boards with the bottle capsattached thereto. If so, each of the underlying photos may be protected individually if they wereall first published at the same time, together in a single unit of publication. If this were the case,however, each photograph should be viewed as a whole for infringement, not for the underlyingelements depicted in the photographs

AI'e Plaintiffs Allegations of Infringement Supported

Under my analysis, Plaintiff's allegation of copyright infringement in Plainliff's OriginalComplainl is not supported by Plaintiffs registrations of the Copyrights-at-Issue and the materialI reviewed. The Original Complainl alleges Defendants copied Plaintiff's bottle cap jewelrydesigns and Plaintiffs keeper boards. As explained above, the registrations of Copyrights-at-Issue do not cover these underlying materials and, to the extent Plaintiff claims they do, theregistrations of the Copyrights-at-Issue are invalid.

Plaintiffs Supplemental Responses seek to expand the copyright infringement claim tothe selection or arrangement of items on Defendant's website but this claim is also not supportedby the materials I reviewed. The Supplemenlal Re;ponses indicate Exhibit 5 attached theretoshows a "one to one correspondence" with the deposit copies of the '063 and '413 Registrations.In reviewing these materials side by side I simply do not see a substantial similarity, or even aremote similarity, between Plaintiffs and Defendants' selection and arrangement of their bottlecap jewelry.43 Furthermore, to the extent the '063 and '413 Registrations may cover theindividual photographs in the collection, I did not see any photographs or other material onDefendants' website which is substantially similar to any singular photograph of Plaintiffs.

42 See Olander Enters., Inc. v. Spencer Gifts, LLC, 2011 WL 4356221, at *5 (C.D. Cal. Aug. 25, 2011) (describingdifficulty Copyright Office has in detennining improper inclusions to collective works).43 Compare Exhibit C (Exhibit 5 from Supplemental Responses), with Exhibit D (color portions of Exhibit 5 fromSupplemental Responses), ondExhibits G & H (color and black and white versions of deposits of'063 Registration),and Exhibits J & K (color and black and white versions of deposits of '063 Registration).

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Finally, Plaintiffs Supplemental Responses also try to expand the copyright infringementclaim to "images of 'keeper' boards" but, again, the '059 Registration cannot cover theunderlying boards themselves for the reasons discussed above. To thc extent the '059Registration may cover the individual photographs of keeper boards, Defendants' website doesnot show works substantially similar to any of the singular photos in the '059 Registration.Defendants' four kceper boards from Defendants' website are shown below next to thephotographs from the '059 Registration.

Defendants' Keeper Boards

See Exhibit D, at BBOO1948

See Exhibit D, at BB001948

See Exhibit D, at BB001948

Provided by Defendants' CounselCompare with Exhibit C, at BB002282 (black

and white version)

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App.020


Plaintiff's Keeper Boards

See Exhibit M, at second page



Evidence that Plaintiff's Underlying BoUIe Cap .Jewelry is Not Original

Even if the registrations for the Copyrights-at-Issue somehow covered the underlyingjewelry designs, I have reviewed material which leads me to question the originality ofPlaintiffs underlying bottle cap jewelry designs. In this regard, Defendant's counsel providedme with a chart showing some of Defendant's allegedly infringing jewelry designs, Plaintiff'ssupposed corresponding jewelry designs, and a source from which Plaintiff may have copied tocreate Plaintiffs alleged original designs. The chart is attached hereto as Exhibit O.

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Though I cannot say with certainty whether Plaintiff copied its bottle cap jewelry designsfrom the sources indicated in the chart, I can say that the sources and Plaintiffs correspondingbottle cap jewelry designs are remarkably similar. The following example is one of the manyshown in the chart:

Defendants'Design Plaintiffs' Design

"Sports" p.23

Source

Source:http://office.microsoft.com/cn-

ns/imagcs/resnlts.aspx?qu=ball&cx=l #pg:l01

r1urportedCopyright

Registration

VA 1-665-063

If Plaintiff did indeed incorporate pre-existing material into its bottle cap jewelry designs,Plaintiffs jewelry designs would be derivative works of the underlying sources.44 If Plaintiff didso without permission from the copyright owner, Plaintiffs copyright in its jewelry designswould not apply to the pre-existing material45 Therefore, Defendant's alleged infringementwould be measured based on the material Plaintiff added, not the overall bottle cap jewelrydesigns46

Final Statcmcnts

I will be pleased to discuss my analysis and opinion if asked to do so. The foregoingopinion and analysis was made based on the materials I was provided and the current legalauthorities available to me. The analysis and opinion may change if additional materials arebrought to my attention or if the legal authority changes. In such a case, I may issue asupplemental or updated report.

I am being compensated at one-half my normal hourly rate of $450 per hour for mattersrelated to the drafting of this report. If called to testifY in this case I will be compensated at mynormal hourly rate. My compensation is not determined by my opinion stated herein or by theoutcome of this case.

~q~Shareholder,Gunn, Lee & Cave, P.e.February 28, 2012

44 See 17V.S.C. § 101(defining"derivativework").45 See id. § 103(a) (giving the scope of protection for a derivative work defining "derivative work")46 Kepner-Tregoe, Inc. v.Exec. Dev., Inc., 79 F. Supp.2d474,492(D.N.J. 1999).

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Ted D. LeeFounding Shareholder

GUNN, LEE & CAVE, P.C.300 Convent St., Suite 1080San Antonio, Texas 78205Phone: (210) 886-9500Fax: (210) [email protected]

PRACTICE LICENSES

State ofIndiana - since 1970State of Texas - since 1973United States Patent and Trademark Office - since 1971

COURTS ADMITTED

State Bar of TexasState Bar of IndianaUnites States Patent & Trademark OfficeSupreme Court of the United States of AmericaUnited States Court of Appeals for the Federal CircuitUnited States Court of Appeals for the Fifth CircuitUnited States Court of Appeals for the Seventh CircuitUnited States Court of Appeals for the Ninth CircuitUnited States Court of Appeals for the Eleventh CircuitUnited States District Court, Western District of TexasUnited States District Court, Northern District of TexasUnited States District Court, Eastern District of TexasUnited States District Court, Southern District of TexasUnited States Court, Southern District ofIndianaUnited States District Court, Northern District of CaliforniaUnited States District Court, Northern District of ArizonaUnited States District Court, Eastern District of ArkansasUnited States District Court, Western District of ArkansasUnites States Court of Military Appeals

CERTIFICATIONS

Board Certified, Civil Trial LawTexas Board of Legal SpecializationState Bar of Texas - since 1981

App.023


mailto:[email protected]

Ted D. Lee

EDUCATION

Bachelor of Electrical Engineering, Auburn UniversityDoctorate of Jurisprudence, University o/Notre Dame

ACADEMIC HONORS

Tuition Scholarship (Notre Dame Law School)Outstanding Engineering Graduate (Auburn University)Tau Beta Pi (Engineering Honorary)Eta Kappa Nu (Electrical Engineering Honorary)Omicron Delta Kappa (Leadership Honorary)Armed Forces Communication and Electronic AssociationFellowship for Electrical Engineering (Auburn University)

EXPERIENCE

Page 2

1998-Present Gunn, Lee & Cave, P.c.Intellectual Property Law Firm, Founding Shareholder, San Antonio, Texas

1977-1998 Gunn, Lee & Miller, P.c.Intellectual Property Firm, Formerly Gunn, Lee & Jackson, Founding Partner, SanAntonio, Texas

1973-1977 Cox & Smith Inc.Patent Allorney, San Antonio, Texas

1970-1973 Captain, United States Marine CorpsStafl"Judge Advocate, tried approximately 300 court martials

1969-1970 Bendix CorporationPatent Agent/Patent Allorney, South Bend, Indiana

1963-1969 National Aeronautics & Space AdministrationCooperative Education student

1962 Brown EngineeringArmed Forces Communication and Electronic Association, Junior Fellowship Award

ADJUNCT PROFESSOR

Business Torts, St. Mary's University Law School

PROFESSIONAL ACTIVITIES/ASSOCIATIONS

• State Bar of Texas - Intellectual Property Law Section -Past Chairman, LitigationCommittee

• State Bar of Texas - Unauthorized Practice of Law Committee, Past Chairman• San Antonio Bar Association - Ethics Committee (Past Chairman); Unauthorized

Practice of Law Committee• American Bar Association - Intellectual Property Law Section• U.S. District Courts Committee - Past Vice Chairman; Chairman, Public Relations

Subcommittee

App.024


Ted D. Lce Page 3

• San Antonio Bar Foundation - Founding Life Fellow• San Antonio Intellectual Property Law Association - Past President• American Intellectual Property Law Association• Judicial Appointments Committee - State Legislative Committee, Past Chairman• International Trademark Association

PUBLICATIONS/SPEECHES

"Opening Statements by the Masters", 7th Advanced Patent Litigation Course, IntellectualProperty Law Section, State Bar of Texas, July 14, 20 II

"Effectively Managing Litigation For In-House Counsel", Advanced Patent Litigation,Intellectual Property Law Section, State Bar of Texas, July 29,2010

"How to Try an Intellectual Property Case Economically", San Antonio Lawyer, July-August, 2010

"Inequitable Conduct: Is the Plague Continuing", 23rd Annual Advanced IntellectualProperty Law Course, Intellectual Property Law Section, State Bar of Texas, March 4,2010

"How to Try (Trying) an Intellectual Property Case Economically (- and WithoutViolating Ethical Rules)", nnd Annual Intellectual Property Law Advanced Course,Intellectual Property Law Section, State Bar of Texas, March 5, 2009

"Nine Ways to Keep Costs Down in IP Disputes", Texas Lawyer, February 2, 2009

"A History of Intellectual Property Practice", 21st Annual Intellectual Property LawCourse, Intellectual Property Law Section, State Bar of Texas, March 6, 2008

"Year in Review", Moderator, Annual Meeting 2008, American Intellectual PropertyLaw Association

"The Ethical Boundaries of Client Solicitation", 20th Annual Intellectual Property LawCourse, Intellectual Property Law Section, State Bar of Texas, March 1,2007

"How the Ballgame is Played:" Ethical Boundaries on Cold Calling Potential Clients,"American Intellectual Property Law Association, Spring Meeting, Chicago, lllinois, May4,2006

"Backdoor Non-Competes in Texas: Trade Secrets," St. Mary's Law Journal, Vol. 36,No.3,p.485,2005

"Doctrine of Equivalents: Still As Confusing as Ever," State Bar Convention, IntellectualProperty Section, July 13, 2003

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Ted D. Lee Page 4

"Witnesses and Depositions," Discovery Skills for Legal Staff in Texas, LormanEducation Services, San Antonio, Texas, March 28, 200 I

"The Application of the Current Laws on Patents, Trademarks, Copyrights and Contractsin the Web Environment," American Marketing Association, Winter MarkctingEducation Conference, Feb. 6, 2000

Co-author, "The Charade: Trying a Patent Case to All 'Three' Juries," Texas IntellectualProperty Law Journal, Vol. 8, No. I,pages 1-37, Fall 1999

"Protecting Your Company's Intellectual Property Asserts, High Tech Business Tactics,"Seminar Six Series, Austin, Texas, April 15, 1998

"Discovery and Sanctions Under the New Federal Rules of Civil Procedure, " FederalCivil Litigation Seminar, Lorman Education Services, San Antonio, Texas, September24,1997

"Recent Developments in Patent Law," Texas Intellectual Property Law Journal, Vol. 5,p. 107, 1996

"Intellectual Property: Patents, Trademarks, Copyrights and Trade Secrets," Texas LawOffice Handbook, Ch. 18, 1994

"Discovery and Sanctions Under the New Federal Rules of Civil Procedure," FederalCivil Litigation Seminar, Lorman Education Services, San Antonio, Texas, September30, 1994

"Protecting Your Goods or Services," Current Issues in Advising Your Business Clients,Lorman Education Services, San Antonio, Texas, June 17, 1994

"Is the Playing Field Level?" Patent Infringemcnt and Invalidity", 1992

"Intellectual Property: Patents, Trademarks, Copyrights and Trade Secrets," Texas LawOjjice Handbook, J,d Ed., 1990

"Who Framed Roger Rabbit? Protecting a Client's Products and Services," TheSubpoena, November, 1988

"The Road Lcss Traveled: State Court Resolution of Patent, Trademark, and CopyrightDisputes," St. Mary's Law Journal, Vol. 19, No.3, p. 703, 1988

"Trying an Intellectual Property Case in State Court," Woodlands Institute, IntellectualProperty Section, State Bar of Texas, 1987

"How to Try an Intellectual Property Case Economically," Patent Law Annual, 1986

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Ted D. Lee Page 5

"An Overview of Patents, Trademarks, Copyrights and Trade Secrets," Texas PracticeGuide, Young Lawyers Section, State Bar of Texas, 1983

"Regulation of Invention Development Services Act," Texas Rev. Civ. Stat. Ann. Art9020

COMMUNITY/CHARITABLE ENEAVORS

• Ronald McDonald House of San Antonio - Past President; Council of Presidents("The housc that San Antonio built," San Antonio Magazine, December 1984, pp.44-48)

• Boy Scouts of America - Past Chairman of Eagle District; Executive Committee,Alamo Area Council; Assistant Scout Master

• Leukemia Society of San Antonio• Up With Downs, inc.• YMCA- Board of Directors• Coker United Methodist Church - Board of Trustees• Notre Dame Alumni Club of San Antonio - Past President• Auburn Alumni Club of San Antonio• Institute of Electrical and Electronic Engineers• The Explorer's Club, Texas Chapter - Past President

INTERESTS

«:Mountain Climbing «:Spelunking «:Bike Riding«:Back-Packing «:Canoeing «:Antiquc Automobiles

App.027


exhibit a - tabberone

Documents