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The US Court of Appeals for the Tenth Circuit on 11-8-2020 dismissed an appeal against Michaels Stores Inc. and Craft Smith that alleged the companies infringed on a designer’s copyrights and trade dress rights with a “knockoff” version of a personal planner.

EC Design has sold its personal organizer, the LifePlanner, since 2007. In 2015, Craft Smith reached out to Michaels about creating a planner like the LifePlanner. Craft Smith then designed a spiral-bound planner that used the same pagination and sheet counts as the LifePlanner, calling its product the Recollections Planner. Before selling the product, Michaels asked Craft Smith to validate that the planner was not too similar to the EC Design organizer. In October 2016, Michaels began selling the Recollections Planner.

In November 2016, EC Design told Craft Smith and Michaels that the Recollections Planner infringed on the LifePlanner’s copyright and trade dress. Craft Smith then sought declaratory judgment in federal court that it did not. EC Design counterclaimed, alleging that the Recollections Planner infringed on the LifePlanner’s registered compilation copyright and unregistered trade dress. The district court granted summary judgment in favor of Craft Smith and Michaels, concluding that EC Design did not have a valid copyright in its asserted LifePlanner compilation.

On appeal, the Tenth Circuit court held that, although EC Design did own a valid copyright, EC Design did not raise a genuine issue of material fact about the required substantial similarity between the products. EC Design claimed that Craft Smith adopted a similar format to the LifePlanner, not that Craft Smith copied or used similar artwork or text. The court said that this was not part of protectable expression, because copyright law does not protect ideas. EC Design also failed to create a genuine issue of material fact about the secondary meaning of the LifePlanner’s trade dress.

Finally, we conclude by considering EC Design’s evidence that third parties commented that the Recollections Planner was a “knockoff” of the LifePlanner. As support for the relevance of this sort of evidence, EC Design cites Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002). In Abercrombie, the Sixth Circuit allowed evidence that “consumers remark[ed] on the similarity of designs” to show “actual confusion by consumers.” Id. at 639–40. Actual consumer confusion is the fourth category of Savant Homes evidence. Here, EC Design has not used this evidence to show actual consumer confusion, so its reliance on Abercrombie is misplaced.26 And because EC Design fails to explain how this evidence shows that consumers view the LifePlanner’s trade dress as a source identifier, we conclude that EC Design’s evidence of third-party recognition does not create a genuine issue of material fact over secondary meaning.

Because of this, the court affirmed the lower court’s summary judgment and dismissed the appeal.

See the order