Opinion
No. C-06-2389 MMC.
July 25, 2007
Before the Court is the motion for summary judgment or, in the alternative, summary adjudication, filed June 14, 2007 by defendant Nova Wines, Inc. ("Nova"). Plaintiff Pete Livingston ("Livingston") has filed opposition to the motion, as well as a cross-motion for summary judgment. Nova has filed a reply in support of its own motion, as well as an opposition to Livingston's cross-motion. Livingston has filed a reply in support of his cross-motion. Having considered the papers filed in support of and in opposition to the motions, the Court finds the matters appropriate for decision without oral argument, see Civil L.R. 7-1(b), hereby VACATES the July 20, 2007 hearing, and rules as follows.
BACKGROUND
In the Second Amended Complaint, Livingston alleges he owns the copyright to a series of photographs of Marilyn Monroe ("Monroe photographs"), alleged to have been taken by his father, Carl Perutz ("Perutz"), in the late 1950s. (See Second Amended Complaint ("SAC") ¶¶ 1, 7-8.) Livingston alleges he "is the sole heir of his father's photographic work." (See id. ¶¶ 1, 8.) On August 3, 2004, Livington registered the copyright in the Monroe photographs with the Library of Congress Copyright Office, and identified the photographs therein by number as perutz-001 through perutz-81. (See id. ¶ 10; see also Ioannou Decl., filed Feb. 7, 2007, Ex. 14.)
Livingston asserts a claim for copyright infringement against Nova, alleging Nova wrongfully created a derivative work from one of the Monroe photographs, without Livingston's authorization, for use on a label for Nova's 2002 vintage Marilyn Merlot wine. (See id. ¶ 13.) The parties refer to the photograph Nova is alleged to have infringed as perutz-003, the identification number set forth in Livingston's copyright registration for such photograph.
Nova and Livingston have filed cross-motions for summary judgment of the single claim for copyright infringement asserted against Nova.
Livingston also asserts claims against defendant Keya Morgan ("Morgan"), which claims are not at issue in the instant motion.
LEGAL STANDARD
Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment as to "all or any part" of a claim "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." See Fed.R.Civ.P. 56(b), (c). Material facts are those that may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is "genuine" if the evidence is such that "a reasonable jury could return a verdict for the nonmoving party." See id. The Court may not weigh the evidence.See id. at 255. Rather, the nonmoving party's evidence must be believed and "all justifiable inferences must be drawn in [the nonmovant's] favor." See United Steelworkers of Am. v. Phelps Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at 255).The moving party bears the initial responsibility of informing the district court of the basis for its motion and identifying those portions of the pleadings, depositions, interrogatory answers, admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the nonmoving party will bear the burden of proof at trial, the moving party's burden is discharged when it shows the court there is an absence of evidence to support the nonmoving party's case.See id. at 325.
A party opposing a properly supported motion for summary judgment "may not rest upon the mere allegations or denials of [that] party's pleading, but . . . must set forth specific facts showing that there is a genuine issue for trial." See Fed.R.Civ.P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248-49. All that is necessary is submission of sufficient evidence to create a material factual dispute, thereby requiring a jury or judge to resolve the parties' differing versions at trial. See id.
DISCUSSION
A. "Work for Hire"Nova's first argument in support of summary judgment is that the Monroe photograph at issue, perutz-003, was a "work for hire" within the meaning of the Copyright Act of 1909 ("1909 Act"). In particular, Nova contends that Hearst Publications ("Hearst") hired Perutz to create perutz-003 and that, consequently, the copyright owner is Hearst, not Livingston. Accordingly, Nova argues, Livingston lacks standing to assert the instant action for copyright infringement.
In its prior motion for summary judgment, Nova argued that Takashi Oyama ("Oyama"), not Perutz, was the photographer of the Monroe photographs. The Court denied Nova's previous motion for summary judgment on the issue of Oyama's authorship of the Monroe photographs and found Livingston had raised a triable issue as to whether Perutz was the author. (See Order Denying Nova Wines, Inc.'s Motion for Summary Judgment, filed March 14, 2007, at 2:1-6.)
Because perutz-003 was created prior to the January 1, 1978 effective date of the Copyright Act of 1976, the copyright in such photograph is governed by the 1909 Act. See Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869, 876 (9th Cir. 2005) (considering under 1909 Act issue of whether book was "work for hire" because book "was published before the January 1, 1978 effective date of the 1976 Copyright Act"); Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 553 (2d Cir. 1995) (applying 1909 Act to paintings created before January 1, 1978 and applying 1976 Act to paintings created after that date).
The 1909 Act "provides for copyright protection for an `author,'" see Murray v. Gelderman, 566 F.2d 1307, 1309 (5th Cir. 1978) (quoting former 17 U.S.C. § 4), and defines the term "author" to "`include an employer in the case of works for hire,'" see Twentieth Century Fox, 429 F.3d at 877 (quoting former 17 U.S.C. § 26). Thus, under the 1909 Act, where "`one person engages another, whether as employee or as an independent contractor, to produce a work of an artistic nature, . . . in the absence of an express contractual reservation of the copyright in the artist, the presumption arises that the mutual intent of the parties is that the title to the copyright shall be in the person at whose instance and expense the work is done.'" See id. (quoting Lin-Brook Builders Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir. 1965)).
The test for whether a work was created at the "instance" of another is "an inquiry into whether the motivating factor in producing the work was the [engaging party] who induced the creation," and "is shaped in part by the degree to which the [engaging party] had the right to control or supervise the artist's work." See id. at 879 (internal quotations and citations omitted). "[C]omplete control over the author's work is not necessary." Id. at 880. Rather, "the issue is one of degree where the greater the degree of supervisory power and control [the engaging] party has over an independent contractor, the more likely it is that the work was created at the [engaging] party's instance." See id. at 880. The requirement that a work be made at the "expense" of another is "met where a hiring party simply pays an independent contractor a sum certain for his or her work." See Playboy Enterprises, Inc. v. Dumas, 53 F.3d at 555. "In contrast, where the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship." See id.
The issue of whether a work is a "work for hire" is an affirmative defense to a claim of copyright infringement. See Dolman v. Agee, 157 F.3d 708, 712 (9th Cir. 1998). Thus, the defendant has the "initial burden of production on this issue," and must "present some credible evidence" that the creation of the work at issue "was done at the `instance and expense'" of a third party. See id. Where the defendant meets such burden, there arises a "legal presumption that it is a work-for-hire — that the copyright lies ab initio with the [engaging] party." See Twentieth Century Fox, 429 F.3d at 881. The "presumption can be overcome by evidence of an agreement by which the employee or independent contractor retained the copyright in his work." See id. "The employee-plaintiff bears the burden of proving by a preponderance of the evidence that such a contrary agreement was reached." Dolman v. Agee, 157 F.3d at 712.
In support of its contention that Perutz created perutz-003 at the "instance and expense" of Hearst, Nova relies on discovery responses by Livingston and the deposition testimony of Livingston and of Perutz's friend, Ronald W. Butler ("Butler").
Specifically, Nova, on October 27, 2006, served interrogatories on Livingston and asked Livingston therein to "[d]escribe with particularity all instances in which Carl Perutz took photographs of Marilyn Monroe, including, the date, place, and the IDENTITY of any party requesting that said photographs be taken." (See Vasquez Decl. ¶ 8 and Ex. 7, Special Interrogatory No. 11.) On November 24, 2006, Livingston responded:
At least once in 1958. The photos appear to have been created in response to Hearst commissioning an article for the April 6, 1958 issue of American Weekly magazine. Perutz [t]ook photographs of Marilyn Monroe, from which Jon Whitcomb created a derivative work [w]hich was published in said article.
(See id. ¶ 8 and Ex. 7, Response to Special Interrogatory No. 11.) In that regard, Nova submits photocopies of pages from the April 6, 1958 issue of American Weekly, containing an article titled "Milady's Easter Bonnet," which article includes "paintings by Jon Whitcomb" of six celebrities wearing hats, including a painting of Marilyn Monroe ("Monroe"). (See id. ¶ 12 and Ex. 8.)
At his deposition, Livingston testified that the painting of Monroe in the April 6, 1958 issue of American Weekly "appears to be a derivative work created from perutz-002." (See id. Ex. 5 (Livingston Dep.) at 29:25-30:6.) Livingston further testified that his "understanding is that Carl Perutz was hired by a Hearst publication to create a series of photos of Marilyn Monroe to provide to Jon Whitcomb so that he could create a derivative work for this `American Weekly' article." (See id. at 31:20-24.) Livingston explained that his understanding is based on his recollection of a July 1980 article in Playboy magazine. (See id. at 31:7-13 ("My understanding is from the Playboy article of 1980. I think it was the July 1980 Playboy[.]")
Butler testified at his deposition that Perutz created the Monroe photographs "for a magazine who wanted photographs of famous people wearing Easter hats," and that Perutz's "assignment was Marilyn." (See id. Ex. 6 (Butler Dep.) at 45:18-22.) When asked whether "that shoot was specifically for the publication of [that] article," Butler responded, "Yes." (See id. at 46:23-25.) Butler further testified, "I think the pictures were taken and then given to the artist, Jon Whitcomb, who was a famous illustrator of the day," and, specifically, that Perutz "gave them to the magazine and the magazine sent them to Whitcomb." (See id. at 47:11-13, 48:5-12.) Nothing in Butler's testimony suggests he has personal knowledge of the arrangement, if any, between Perutz and Hearst, and his frequent references to a 1980 Playboy article suggest that whatever knowledge he has about the matter comes from the same Playboy article to which Livingston refers. (See id. at 46:1-6, 47:1-4, 47:20-23, 48:16-25.)
No Playboy article from July 1980 has been submitted to the Court. In connection with Nova's prior motion for summary judgment, however, the parties submitted a very brief article from the June 1980 Playboy, in which article Jon Whitcomb is quoted as follows: "For The American Weekly issue of April 6, 1958, Hearst needed an Easter hat feature and asked me to paint six ladies for it. As usual, overnight. A photographer named Carl Perutz or some such Nom de Nikon handled Marilyn." (See Simpich Decl., filed Feb. 23, 2007, Ex. 8.) Said article, however, from which Livingston's and Butler's testimony apparently derives, does not state that Hearst commissioned the Monroe photographs. Rather, Whitcomb states therein that Hearst asked Whitcomb to "paint six ladies" for an Easter Hat feature for the April 6, 1958 issue of American Weekly, and that Perutz "handled Marilyn." (See Simpich Decl., filed Feb. 23, 2007, Ex. 8.)
Any inference drawn from such statement that Hearst commissioned Perutz to take photographs of Monroe would be purely speculative; nothing in Whitcomb's statement even suggests that Perutz had taken the Monroe photographs at Hearst's instance. Moreover, Nova has submitted no evidence that Hearst had any "right to control or supervise the artist's work," see Twentieth Century Fox, 429 F.3d at 879, or that the Monroe photographs were taken at Hearst's expense. Indeed, as Livingston points out, Nova has submitted no evidence "as to what compensation arrangement existed between Perutz and Hearst Publications, nor has [Nova] produced any evidence of payment." (See Livingston Reply at 3.)
Accordingly, Nova has not met its burden of producing "credible evidence" that perutz-003 was created by Perutz at the "instance and expense" of Hearst. Consequently, the Court will deny Nova's motion for summary judgment, and grant Livingston's motion for summary judgment, on the issue of whether perutz-003 is a "work for hire" pursuant to the Copyright Act of 1909.
B. Availability of Statutory Damages or Attorneys' Fees
Nova next argues that even if perutz-003 is not a work for hire, Livingston cannot recover statutory damages or attorneys' fees because the first act of alleged infringement by Nova occurred prior to the registration of perutz-003.
"[A]n infringer of copyright is liable for either — (1) the copyright owner's actual damages and any additional profits of the infringer . . .; or (2) statutory damages," at the copyright owner's election. See 17 U.S.C. 504(a), (c)(1). In addition, the court may "award a reasonable attorney's fee to the prevailing party as part of the costs." See 17 U.S.C. § 505. Subject to exceptions not relevant here, however, "no award of statutory damages or of attorney's fees . . . shall be made for . . . any infringement of copyright in an unpublished work commenced before the effective date of its registration." See 17 U.S.C. § 412. The purpose of § 412 is to encourage copyright owners "to register their works early and to give potential infringers an incentive to check the Copyright Office's national database of records."See Gloster v. Relios, Inc., 2006 WL 1804572 at *1 (E.D. Pa. June 28, 2006); see also 17 U.S.C. § 412, Historical and Statutory Notes (observing § 412 is intended to "induce in some practical way" copyright registration and that copyright holders "should not be given special statutory remedies unless the owner has, by registration, made a public record of his copyright claim").
Here, the effective date of Livingston's certificate of registration of the copyright in the Monroe photographs, including perutz-003, is August 3, 2004. (See Simpich Decl. Ex. 8.) Livingston attests: "None of the images which I filed for copyright protection with the application for registration were published prior to my registration." (See Vasquez Decl. Ex. 4 (Livingston Decl. dated March 8, 2007) ¶ 3.)
For purposes of § 412, a work is published if it is distributed to the public or put on public display with the authorization of the copyright holder. See Zito v. Steeplechase Films, Inc., 267 F. Supp. 1022, 1026 (N.D. Cal. 2003).
Nova submits evidence, however, that any copyright infringement of perutz-003 by Nova commenced prior to the effective date of Livingston's copyright registration. In particular, Nova's General Manager, Donna Holder ("Holder"), attests that Nova began preparing its 2002 Marilyn Merlot label in the second half of 2003, that it submitted the label on December 1, 2003 to the Department of the Treasury, Alcohol and Tobacco Tax and Trade Bureau for certification, and that Nova approved the final version of the label in January 2004. (See Holder Decl. ¶¶ 2-8 and Exs. 9-13.) Holder further attests that Nova's 2002 vintage Marilyn Merlot wine was bottled and labeled on January 29, 2004, and that the first sale of the wine was March 31, 2004. (See Holder Decl. ¶¶ 9-10 and Ex. 14.) As all of such acts occurred prior to the August 3, 2004 effective date of Livingston's copyright registration, Nova argues, Livingston is barred by § 412 from obtaining an award of statutory damages or attorney's fees, even with respect to sales of 2002 Marilyn Merlot that occurred after the August 3, 2004 effective date of Livingston's copyright registration.
"Every court to consider this question has come to the same conclusion; namely, that infringement `commences' for the purposes of § 412 when the first act in a series of acts constituting continuing infringement occurs." See Johnson v.Jones, 149 F.3d 494, 506 (6th Cir. 1998) (rejecting argument that "infringement is `commenced' for the purposes of § 412 each time an infringer commits another in an ongoing series of infringing acts"); see also Singh v. Famous Overseas, Inc., 680 F. Supp. 533 (E.D.N.Y. 1988) (holding statutory damages and attorney's fees unavailable where defendant began selling infringing item prior to registration even though sales continued to be made after registration).
Livingston argues that Nova has not demonstrated that infringement commenced prior to registration because Nova's first sale of 2002 Marilyn Merlot was shipped to Japan, and any infringing act in Japan is not a violation of United States copyright law. Livingston points out that the Ninth Circuit has held that "the United States copyright laws do not reach acts of infringement that take place entirely abroad." See Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088, 1098 (9th Cir. 1994). As Nova points out, however, the infringing conduct begins when the copyrighted work is first copied, not when it is first sold. See, e.g., Twentieth Century Fox, 429 F.3d at 976 ("To demonstrate copyright infringement, the plaintiff must prove ownership of a valid copyright and copying of constituent elements of the work that are original"); CD Law Inc. v. Lawworks, Inc., 1994 WL 840929 at *6 (W.D. Wash. 1994) (holding infringement commenced for purposes of § 412 when product was first copied by defendant; finding plaintiff not entitled to statutory damages and fees for post-registration sales). As noted above, Nova has submitted evidence that the label design was finished by January 2004, and, thus, that any copying of perutz-003 occurred prior to that date.
Nova also argues that it made sales of 2002 Marilyn Merlot domestically prior to the effective date of Livingston's copyright registration. The evidence cited by Nova does not include shipping addresses, however, (see Vasquez Decl. Ex. 16), and, thus, provides no support for its contention that such shipments were sent to addresses within the United States.
Livingston objects to Nova's evidence with respect to the preparation of the 2002 Marilyn Merlot label on two grounds. First, Livingston objects that the evidence was not produced in Nova's initial disclosures or otherwise in response to Livingston's discovery requests. Such objection is overruled. Nova expressly declined to produce documents relating to its use of perutz-003 until the parties had entered into a protective order; a stipulated protective order was not entered until June 13, 2007. Although Nova filed the instant motion the following day, Livingston has not demonstrated that he suffered any prejudice therefrom and has not sought a Rule 56(f) continuance. Livingston next contends that Holder's declaration fails to lay an adequate foundation for admission of such evidence as business records. Such objection also is overruled. See Fed.R. Ev. 803(6).
Accordingly, Nova's motion for summary judgment on the issue of statutory damages and attorneys' fees will be granted, and Livingston's cross-motion for summary judgment on such issue will be denied.
C. Infringement
Livingston seeks summary judgment on the issue of whether Nova has infringed Livingston's copyright in perutz-003. As noted, Livingston has the burden of demonstrating infringement. See Twentieth Century Fox, 429 F.3d at 876. Because Livingston "bears the burden of proof at trial" on the issue of infringement, he can prevail on summary judgment only if he first "come[s] forward with evidence which would entitle him to a directed verdict if the evidence went uncontroverted at trial," and "establish[es] the absence of a genuine issue of fact on each issue material to his [claim]." See Houghton v. South, 965 F.2d 1532, 1536-37 (9th Cir. 1992) (citations omitted). To demonstrate copyright infringement, Livingston "must prove ownership of a valid copyright and copying of constituent elements of the work that are original." See Twentieth Century Fox, 429 F.3d at 876.
Nova has not moved for summary judgment of non-infringement.
"[A]lmost any photograph may claim the necessary originality to support a copyright merely by virtue of the photographer['s] personal choice of subject matter, angle of photograph, lighting, and determination of the precise time when the photograph is to be taken." See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) (internal quotation and citation omitted) (finding commercial photograph of vodka bottle sufficiently creative to merit copyright protection).
1. Ownership
Livingston's certificate of copyright registration is prima facie evidence of the validity of his copyright in the Monroe photographs, including perutz-003, and of the facts stated in the certificate of registration. See Apple Computer v. Formula Int'l Inc., 725 F.2d 521, 523 (9th Cir. 1984) (citing 17 U.S.C. § 410(c)); see also 17 U.S.C. § 410(c). Nova has "the burden of overcoming the presumption of validity" established by Livingston's certificate of copyright registration. See Apple Computer, 725 F.2d at 523.
Nova, in its opposition, relies entirely on the argument that Livingston is not the copyright holder because perutz-003 was a work for hire created by Perutz for Hearst. As discussed above, Nova has failed to meet its initial burden on that issue.
Accordingly, Nova has not raised a triable issue as to Livingston's ownership of the copyright in the Monroe photographs, and the Court will grant Livingston's motion for summary judgment on the issue of ownership.
2. Copying
In order to prevail on his claim of infringement, Livingston must demonstrate not only ownership of the copyright in perutz-003, but also Nova's "copying of constituent elements of the work that are original." See Twentieth Century Fox, 429 F.3d at 976. In particular, "[i]f the plaintiff copyright holder survives the first step, i.e., it establishes that it owns a valid copyright, then the plaintiff must establish infringement by showing both access to its copyrighted material on the part of the alleged infringer and substantial similarity between the copyrighted work and the alleged infringing work." See Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1144 (9th Cir. 2003). In that regard, "[a] grant of summary judgment for [the] plaintiff is proper" where the copyrighted and accused works "are so overwhelmingly identical that the possibility of independent creation is precluded." See Twentieth Century Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1330 (9th Cir. 1983).
As Livingston points out, Nova admitted in response to Livingston's requests for admission that "it hired Susan Ortega to create an original rendition of Marilyn Monroe wearing a hat and that she was given the photograph attached as an Exhibit to Plaintiff's Second Amended Complaint, PERUTZ-003." (See Simpich Decl. Ex. 9 (Nova's response to Requests for Admission No. 6).) Consequently, it is undisputed that Nova had access to perutz-003.
Nova further admits that Ortega "create[d] an original rendering/image that was then used to create a label for [Nova's] 2002 Marilyn Merlot wine bottles." (See id. (Nova's response to Requests for Admission No. 7).) Nova did not admit or deny therein, however, that the resulting label was "substantially similar" to perutz-003.
The Ninth Circuit applies a two-part test to determine substantial similarity. See Berkic v. Crichton, 761 F.2d 1289, 1291 (9th Cir. 1985). "The first part, the `extrinsic test,' is used to determine whether two works are substantially similar in their `general ideas.'" Id. at 1292. "The extrinsic test compares the individual features of the works"; applying the extrinsic test, "analytic dissection and expert testimony are appropriate."See id. (internal quotation and citation omitted). "The second part of the substantial similarity inquiry, the `intrinsic test,' is used to determine whether two works are substantially similar in their `forms of expression.'" Id. "The intrinsic test is subjective; it depends solely on the response of the ordinarily reasonable person," and, consequently, "expert testimony or the comparison of individual features of the works is inappropriate."See id. "Rather, the trier of fact ordinarily decides whether the `total concept and feel' of the two works is substantially similar." Id.
Here, as noted, Nova concedes the 2002 Marilyn Merlot wine label designed by Ortega was based on perutz-003. Although Nova does not expressly concede that the wine label and perutz-003 are substantially similar, it makes no argument that the two works are not substantially similar. Indeed, other than the wine label's omission of a rose on Monroe's hat and what appears to be a corsage on the shoulder of her clothing, the two works are identical. The wine label and perutz-003 both feature the same depiction of Monroe, in which she has the same facial expression, the same hairstyle, and is wearing the same hat that obscures the same portion of her face, under the same lighting conditions. The overall concept and feel of the two works likewise is identical. In short, no reasonable trier of fact could find the two works are not substantially similar.
Accordingly, Livingston's motion for summary judgment on the issue of infringement will be granted.
CONCLUSION
For the reasons set forth above, Nova's motion for summary judgment and Livingston's cross-motion for summary judgment are hereby GRANTED in part and DENIED in part, as follows:
1. With respect to the issue of whether perutz-003 was a work for hire created by Perutz for Hearst, Nova's motion is DENIED and Livingston's cross-motion is GRANTED.
2. With respect to the issue of whether Livingston may recover statutory damages and attorney's fees, Nova's motion is GRANTED and Livingston's cross-motion is DENIED.
3. With respect to the issue of copyright infringement, Livingston's cross-motion is GRANTED.
This order terminates Docket Nos. 167 and 180.