Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.
On January 10, 2023, Justice Pratter of the United States District Court for the Eastern District of Pennsylvania ruled that storing melted rink ice from championship hockey matches in a piece of memorabilia is not copyrightable. Justice Pratter confirmed that the scope of copyright law extends only to the expression of ideas, but not the ideas itself.
The plaintiff, William Grondin, sued sports merchandise company Fanatics Inc. (“Fanatics”) for copyright infringement. Mr. Grondin alleged that he owns copyright for “Slice of the Ice”, a Stanley Cup-shaped piece of hockey memorabilia incorporating melted ice from championship hockey games. He also alleged that Fanatics unlawfully copied his work in its own ice-filled hockey puck-shaped memorabilia. To establish copyright infringement, the following criteria must be met:
- Grondin owns valid copyright in “Slice of the Ice”; and
- Fanatics unlawfully copied the original, protectable elements of Mr. Grondin’s work.
While the court found sufficient evidence that Mr. Grondin owned valid copyright in “Slice of the Ice”, Fanatics succeeded in its motion to dismiss on the basis that the elements allegedly copied from Mr. Grondin’s work were not copyrightable.
Justice Pratter relied on the longstanding notion in copyright law (as early as 1879 in the US) that copyright does not protect ideas, only the expression of ideas. The sole element which Mr. Grondin alleged Fanatics copied was the “hockey puck-shaped piece with a hollow cavity into which melted rink ice is placed.” The idea of storing melted rink ice in hockey memorabilia is not protected by copyright. The question became whether Mr. Grondin’s specific expression of this idea in “Slice of the Ice” is copyrightable and if Fanatics substantially copied this expression.
The court rejected Fanatics’ argument that the use of a hockey puck to express the idea of storing melted ice in memorabilia is inevitable and simply inherent in the underlying idea. This argument was supported by the fact that Fanatics also stored melted ice in Stanley Cup- and snow globe-shaped memorabilia. However, Justice Pratter held that hockey pucks are inseparable and indispensable from the sport of hockey. Allowing Mr. Grondin to establish substantial similarity merely on the shared use of this element would effectively provide him a monopoly on the underlying idea of hockey memorabilia. The court also held that the distinguishable elements of the hockey pucks in both works, notably its clarity and hollow cavity to hold melted ice, are merely utilitarian features which permit the idea of a water-filled puck. These utilitarian features are not protected by copyright. Since the sole element by which Mr. Grondin alleged copying by Fanatics is an idea not within the scope of copyright protection, the court held that there was no basis for a copyright infringement claim.
Interestingly, the court granted the dismissal without prejudice. This ruling leaves open the possibility that the action could be amended. Alternatively, Mr. Grondin could allege copying of other aesthetic or non-utilitarian features from which substantial similarity might be established against Fanatics or other sports companies.
(Alt Text: Comparison of Mr. Grondon’s work with the allegedly infringing hockey memorabilia; Source: @copyrightlately on Twitter)