We were recently involved in a copyright infringement case that was appealed to the Ninth Circuit, and I’m happy to say that we won the case. The case started when the author of a hiking and biking guide book to the Sun Valley area and the Sawtooths of Idaho, Lynn Stone, filed suit against my client, Pinon Publishing. Pinon had published a bike riding guide book, GOOD DIRT, written by Greg McRoberts, to rides in the same area. Stone’s book was titled ADVENTURES. Shortly after the case started, Pinon’s second edition came out, titled GOOD DIRT II, and had basically the same maps as DIRT I.
As the outset of the case, Stone and her attorney Ken Pedersen accused Pinon of numerous acts of copyright infringement. We couldn’t figure out what they thought had been copied. As the case developed, the instances of copying were defined as 12 maps. At a later time, it was charged that 8 maps were copied. A side by side comparison of some of the maps in question is sshown below:
Considering that the same artist made both sets of maps, and they are to generally the same trails, it is amazing that they look as different as they do.
One thing that complicated the case is that Greg McRoberts had photocopied several of Lynn Stone’s maps from her book Adventures. He used them to sketch the route of his rides, and turned the sketches over to a local map artist, Evelyn Phillips, to prepare maps for his book. Other of Greg’s rides were sketched on copies of USGS topo maps.
It turned out that Evelyn Phillips had also done Lynn Stone’s maps, and the two were good friends. Phillips turned over Greg’s sketches on Stone’s maps to Stone and her attorney. Mr. Pedersen argued that since actually copying had taken place, the maps of DIRT did not have to have much similarity to the ADVENTURE maps.
We stipulated to the District Court that these pages had been copied, but argued that the maps in the GOOD DIRT book were not copies unless they were significantly similar to those of ADVENTURES. Maps are copyrightable, but only those features that are original notations. The names of geographic features, such as river names, creek names, highway names, peak and valley names, are not copyrightable. Roads, trails, streams and lakes are not copyrightable. Information from USPS topo maps is not copyrightable. What would be copyrightable would be original notations like “good view of Vie Peak from this point,” or “be sure and take water for this section.” As can be seen by a side by side comparison of the maps, there were a few original notations on each of Stone’s ADVENTURE maps, and they were not copied in the DIRT maps.
The selection of exactly the same bike route is also not copyrightable. That is not the purpose of copyright, and selection of rides is not protectable by copyright, only the expression. However, of the rides in GOOD DIRT, only about 8% of the rides were the same rides as in ADVENTURES.
The District Court decided for us on a Motion for Summary Judgment. Applying an extrinsic test, the District Court found that… “It is evident that the selection, arrangement, and presentation of component parts in each author’s respective maps were different. See Narell, 872 F.2d at 912; Hamilton, 583 F.2d at 452. The respective guide books point out different observations and trails, and concentrate on different aspects of the surroundings on each ride. A reasonable person, therefore, could not find that the extrinsic test is satisfied.”. Applying an intrinsic test, the District Court found that “Considering the maps under the rationale articulated by the Landsberg Court, no reasonable person could conclude that the forms of protected expression in the two works are substantially similar. Moreover, were this Court to hold that Defendant’s maps infringed on Plaintiff’s copyright, other parties would basically be precluded from using the factual elements contained in Plaintiff’s maps, which Plaintiff herself obtained through the use of USGS maps and with the production help of Phillips.”
The District Court decision was appealed to the Ninth Circuit Court of Appeals.
We presented our cases before the Ninth Circuit in the courtroom of the University of Washington Law School, I for Pinon, and Mr. Pederson for Stone. We were the only litigants that showed up for court that day, due to a snow storm. Ninth Circuit Judges Graber, Tallman, and Clifton, after a January 8, 2004 hearing upheld the District Court’s grant of summary judgment in favor of Defendant Perpetual Motion, LLC. against Plaintiff Lynne K. Stone.
The Ninth Circuit holding stated that Ms. Stone had failed “to demonstrate direct copying of any entire map from Adventures. See Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989) ("A finding that a defendant copied a plaintiff's work, without application of a substantial similarity analysis, has been made only when the defendant has engaged in virtual duplication of a plaintiff's entire work."). Therefore, Plaintiff must show (1) that Defendant had "'access'" to her work; and (2) that the two works are “'substantially similar.'” Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (quoting Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996).”
The first element of the copying test, access, is conceded; Defendant used Plaintiff's maps as the starting point for its maps. In evaluating substantial similarity, we filter out elements that are not protectable. Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir. 2003). The protectable elements of maps include "not only ... the depiction of a previously undiscovered landmark or the correction or improvement of scale or placement, but also ... selection, design, and synthesis." United States v. Hamilton, 583 F.2d 448, 452 (9th Cir. 1978).
Viewing the evidence in the light most favorable to Plaintiff, no reasonable juror could find substantial similarity of ideas and expression in the Adventures and Good Dirt maps. After the nonprotectable elements of the maps are filtered out, there is no substantial similarity. To be sure, the Adventures maps and the Good Dirt maps cover trails in the same territory. However, the Good Dirt maps generally offer a "zoomed in" and bare-bones perspective; the Adventures maps offer a distant view filled with many more details of the terrain. Although the maps have several basic design features in common, "it is well-settled that copyright of a map does not give the author an exclusive right to the coloring, symbols, and key used in delineating boundaries of and locations within the territory depicted." Hamilton, 583 F.2d at 451.
In a footnote to the decision, the court stated that “ McRoberts; admission that he made photocopies of the maps in Adventures for use as “working copies” in preparation of his own maps is not sufficient to satisfy the second prong. Copyright law’s prohibition against “copying” does not prevent a subsequent author from making photocopies to use solely as source material.