Mywebgrocer, Llc, Plaintiff-Counter-Defendant-Appellant v. Hometown Info, Inc., D/B/A Grocery Shopping Network, and Andrew D. Robinson, Defendants-Third-Party-Plaintiffs-Appellees, Richard E. Tarrant, Third-Party-Defendant

Citations: 375 F.3d 190; 2004 U.S. App. LEXIS 14320Docket: 03-7909

Court: Court of Appeals for the Second Circuit; July 13, 2004; Federal Appellate Court

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MyWebGrocer, LLC appeals the denial of a preliminary injunction by Judge Sessions, which sought to prevent HomeTown Info, Inc. and its CEO, Andrew Robinson, from using grocery product descriptions developed and copyrighted by MyWeb. The district court determined that MyWeb was unlikely to succeed in its copyright claims, stating that the product descriptions lacked sufficient creativity to warrant copyright protection. The appeal was heard by the Second Circuit, with the court affirming the lower court's decision on different grounds.

MyWeb and HomeTown are competitors in online grocery shopping systems. MyWeb had an agreement with D'Agostino Supermarkets to create and maintain its online grocery store, resulting in approximately 18,000 product descriptions crafted by MyWeb, aside from collaboratively developed descriptions for some items. Before the contract renewal was discussed in early 2003, MyWeb secured a copyright from the U.S. Copyright Office for its work related to D'Agostino, effective March 27, 2003, claiming protection for the 18,000 product descriptions.

After MyWeb's contract with D'Agostino was nearing its end, HomeTown launched a new D'Agostino website on April 1, 2003, using the product descriptions provided by D'Agostino verbatim, with minor edits. HomeTown also aimed to attract additional clients from MyWeb's customer base by showcasing the D'Agostino site as an example of its services.

MyWeb initiated a complaint against HomeTown on April 15, 2003, citing multiple claims including copyright infringement and unfair competition. HomeTown counterclaimed with allegations of unfair competition and defamation and sought a declaratory judgment to declare MyWeb's copyright void. MyWeb requested a preliminary injunction on May 7, 2003, to prevent HomeTown from using its product descriptions. The court held evidentiary hearings but ultimately denied the motion, reasoning that MyWeb was unlikely to succeed on its copyright claims since the product descriptions lacked sufficient creativity for copyright protection. MyWeb's information-gathering process was deemed painstaking, yet it exercised minimal discretion in selecting facts, with their arrangement dictated by factual usage.

In reviewing the denial of the preliminary injunction, it was noted that a party must show irreparable harm and either a likelihood of success on the merits or serious questions for litigation. MyWeb established irreparable harm since HomeTown copied its product descriptions, and the court recognized MyWeb's copyright registration as prima facie evidence of validity, which HomeTown failed to rebut. However, MyWeb did not demonstrate a likelihood of success or favorable balance of hardships for the injunction criteria.

The document explains that a compilation of non-protectible facts can be copyrightable if it includes an original selection or arrangement that shows some minimal creativity. Previous case law indicates that the selection process must involve judgment beyond mere inclusion for a compilation to qualify for copyright protection.

MyWeb presented evidence during the hearings, comparing its product descriptions to those of HomeTown and other competitors. MyWeb's descriptions tended to be more detailed, including full product names, advertising slogans, colors, and descriptive phrases, while competitors offered more abbreviated versions. HomeTown argued that factual descriptions are not copyrightable, and while that is correct, some elements of MyWeb's descriptions may reflect original selection, potentially granting them narrow copyright protection against verbatim copying. The case remains open for further evidence regarding the creativity of these descriptions, as a trier of fact could determine that MyWeb's choices reflect a distinct approach to product marketing.

However, it remains uncertain whether MyWeb can succeed on its copyright claim, as comparisons may reveal that its descriptions lack significant creative elements and that variations among competitors are minimal. If MyWeb's descriptions are deemed creative enough to be original, challenges under the merger doctrine—which limits copyright protection when an idea and its expression are inseparable—might not undermine its copyright. The merger doctrine would protect only the original aspects of MyWeb’s selection and arrangement of information, excluding general ideas related to online grocery shopping.

Scenes a faire are elements that arise naturally from a work's theme rather than from an author's creativity, making them unprotectible under copyright law. Examples include common themes in police fiction like foot chases or the archetype of the Irish cop. Such elements can only be protected if expressed in a unique and original manner. In the current case, the scenes a faire doctrine applies to product descriptions, rendering unprotectible elements that lack originality or are subject to the merger doctrine. For instance, product names or manufacturer references may be unprotectible due to these factors. However, if the selection or arrangement of elements is sufficiently creative, it may warrant protection.

MyWeb's request for a preliminary injunction is denied because it has shown only fair grounds for litigation, and the balance of hardships is equal between MyWeb and HomeTown. Both parties would incur monetary damages if the injunction is denied. Conversely, if granted, D'Agostino would likely have to shut down its online grocery store, risking permanent customer loss. After reviewing MyWeb's other arguments, the court finds them unmeritorious, leading to an affirmation of the previous decision. An appendix provides examples of product descriptions from various firms, illustrating similarities and differences in naming and presentation.