United States District Court, D. Hawaii
ORDER DENYING MOTION FOR SUMMARY JUDGMENT
OKI MOLLWAY UNITED STATES DISTRICT JUDGE.
case involves alleged copyright infringement. Defendants seek
summary judgment, arguing: (1) Plaintiff Keoni Payton lacks a
protected copyright in his “Defend Hawaii” image;
(2) Payton's copyright claims are barred by the copyright
merger doctrine and/or the related scènes à
faire doctrine; (3) Payton's copyright claims violate
Defendants' First Amendment rights; and (4) Payton is not
entitled to statutory damages or attorney's fees. The
court denies the motion.
24, 2015, Payton filed the Complaint in this matter,
asserting claims of direct copyright infringement (Count I),
contributory infringement (Count II), and vicarious copyright
infringement (Count III). See ECF No. 1.
Complaint alleges that Payton designed and owns an image
containing a drawing of an AR-15 rifle, along with the words
“Defend” and “Hawaii”:
ECF No. 1, ¶¶ 10-11. According to the Complaint,
Defendants are using this image (or one similar to it) on
clothing and other products and have been infringing since
February 2010. Id. ¶¶ 23, 28. 30. The
Complaint also alleges that, on June 23, 2015,
Defendants' website listed t-shirts for sale using the
says he alone designed the image in 2004. See
Deposition of Keoni Payton at 41-43, ECF No. 112-2, PageID #
760-61. Payton says he used a preinstalled font on his Mac
Computer called “Stencil” for the words
“Defend Hawaii.” He says that he then used Adobe
Photoshop or Adobe Illustrator to stretch the letters into
arches. Id. at 44-48, PageID # 761-62. For the
weapon in the image, Payton says he took a picture of a model
AR-15 Airsoft gun and made it into a silhouette using
Photoshop's pen tool. Id. at 48-49, PageID #
762. Payton says that it only took a couple of hours to
create the image and that he started to sell stickers and
t-shirts with the image on them in 2005. Id. at 53,
68, PageID #s 763, 767.
ex-girlfriend, Averi Saunders, tells a different story. She
says that in 2006 she and Payton were watching an episode of
Dave Chappelle's show when Spike Lee appeared wearing a
“Defend Brooklyn” image. She says that, after
watching the episode, Payton made the “Defend
Hawaii” image, getting his inspiration for the
“Defend Hawaii” image from the “Defend
Brooklyn” image he saw Spike Lee wearing. See
Decl. of Averi Saunders ¶¶ 1-5, ECF No. 96-11,
PageID #s 625-26; see also ECF No. 96-12, PageID #
629 (image of Spike Lee wearing t-shirt with “Defend
Brooklyn” image on it from Chappelle's Show on July
9, 2006). Payton says that Saunders's recollection is
wrong. See ECF No. 112-2 at 100, PageID # 775.
Although Payton recalls watching the show with Saunders,
Payton says that he recalls thinking at the time that the
“Defend Brooklyn” people had copied his design.
See ECF No. 112-2 at 98, PageID # 775.
says that, after creating the image, Payton was incarcerated
on drug-related charges. See Saunders Decl. ¶
7, ECF No. 96-11, PageID # 626. Saunders recalls that, while
imprisoned, Payton told her to use the image for their
family, as she was pregnant with his child. Id.
¶ 8, PageID #s 627. According to Saunders, she and
Justin Anderson formed Defend Hawaii, LLC, in 2008.
Id., PageID # 626-27. She says that she subsequently
went into business with Defendant Michael Buntenbah. She
terminated Defend Hawaii, LLC, created Defend, Inc., then
sold her shares of Defend, Inc., to Buntenbah, believing that
“all interest in the Subject Image” was also
transferred to Defend, Inc., and its owner, Buntenbah.
Id. ¶ 10, PageID # 627.
December 2014, Payton registered the “Defend
Hawaii” image with the federal Copyright Office,
Registration Number VA 1-934-173. ECF No. 112-3 (copy of
copyright registration), PageID #s 824-25. Earlier in 2014, a
trademark had been registered for a “Defend
Brooklyn” image with a silhouette of an AK-47:
to the trademark registration for that image, it was first
used in 1996. See ECF No. 96-9, PageID #s 621-22.
The owner of the “Defend Brooklyn” image is
unrelated to any party in this action.
concedes that the “Defend Hawaii” and
“Defend Brooklyn” images are similar.
See Payton Decl. at 99, ECF No. 112-2, PageID # 775.
He says that the two images appear to use the same
“Stencil” font and include a weapon, but that he
did not copy the Defend Brooklyn image. Id. at
59-60, PageID # 765. Payton, however, concedes that it is
possible that he saw the “Defend Brooklyn” image
before he created his “Defend Hawaii” image.
Id. at 57, PageID # 764.
SUMMARY JUDGMENT STANDARD.
summary judgment standard was set forth in this court's
order of October 17, 2017. See ECF No. 106. That