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Caldwell-Gadson v. Thomson Multimedia S.A

United States District Court, S.D. Indiana, Indianapolis Division
Sep 18, 2001
IP 99-1734-C-T/G (S.D. Ind. Sep. 18, 2001)

Opinion

IP 99-1734-C-T/G

September 18, 2001


ENTRY ON MOTION FOR SUMMARY JUDGMENT, MOTIONS FOR RULE 11 SANCTIONS AND REQUEST FOR RECONSIDERATION

Though this entry is being made available to the public on the court's web site, it is not intended for commercial publication either electronically or in paper form. The reason for this caveat is to avoid adding to the research burden faced by litigants and courts. Under the law of the case doctrine, it is presumed that the ruling or rulings in this entry will govern throughout the litigation before this court. See, e.g., Tr. of Pension, Welfare, Vacation Fringe Benefit Funds of IBEW Local 701 v. Pyramid Elec., 223 F.3d 459, 468 n. 4 (7th Cir. 2000). It should be noted, however, that this district judge's decision has no precedential authority and, therefore, is not binding on other courts, other judges in this district, or even other cases before this district judge. See, e.g., Howard v. Wal-Mart Stores, Inc., 160 F.3d 358, 359 (7th Cir. 1998) ("a district court's decision does not have precedential authority"); Malabarba v. Chicago Tribune Co., 149 F.3d 690, 697 (7th Cir. 1998) ("district court opinions are of little or no authoritative value").


In this action, Plaintiff Marcella Caldwell-Gadson alleges copyright infringement and plagiarism. Plaintiff has filed a motion for summary judgment and in the alternative seeks summary judgment as to certain issues. Plaintiff also has filed two motions for sanctions under Rule 11. Defendants oppose all motions filed by Plaintiff. They also request reconsideration of the court's ruling on their motion to disqualify Plaintiff's counsel.

I. Motion for Summary Judgment

A. Summary Judgment Standard

Summary judgment is appropriate if the record shows "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." FED. R. CIV. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "[A] party seeking summary judgment always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of `the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp., 477 U.S. at 323; see Adickes v. S.H. Kress Co., 398 U.S. 144 (1970); McClendon v. Ind. Sugars, Inc., 108 F.3d 789, 795 (7th Cir. 1997). If the party moving for summary judgment discharges this burden, then the nonmovant "bears the burden of establishing that summary judgment is inappropriate because there is a genuine issue [of material fact]." McClendon, 108 F.3d at 795; Logan v. Commercial Union Ins. Co., 96 F.3d 971, 979 (7th Cir. 1996) ("Only after the movant has articulated with references to the record and to the law specific reasons why it believes there is no genuine issue of material fact must the nonmovant present evidence sufficient to demonstrate an issue for trial.").

B. Local Rule 56.1

Local Rule 56.1 governs summary judgment procedure in this district. The rule requires that a party moving for summary judgment serve and file inter alia "a Statement of Material Facts ["SMF"] . . . in compliance with L.R. 56.1(f), as to which the moving party contends there is no genuine issue and that entitles the moving party to a judgment as a matter of law. . . ." S.D. IND. L.R. 56.1(a)(1). Local Rule 56.1(f) sets forth certain requirements for factual assertions such as a SMF, including that they consist of numbered sentences, S.D. IND. L.R. 56.1(f)(1); and that "[e]ach stated material fact shall be substantiated by specific citation to record evidence." S.D. IND. L.R. 56.1(f)(2).

The court applies the version of the rule in effect at the time Plaintiff filed her motion for summary judgment. That is the version effective January 1, 2000.

The Seventh Circuit has "consistently and repeatedly upheld a district court's discretion to require strict compliance with its local rules governing summary judgment." Bordelon v. Chicago Sch. Reform Bd. of Tr., 233 F.3d 524, 527 (7th Cir. 2000); see also Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 921-22 (7th Cir. 1994) ("We have endorsed the exacting obligation these rules impose on a party . . . to highlight which factual averments are in conflict as well as what record evidence there is to confirm the dispute. . . ."). Such rules serve an important purpose. As the Seventh Circuit explained in Waldridge:

These statements are not merely superfluous abstracts of the evidence. Rather, they are intended to alert the court to precisely what factual questions are in dispute and point the court to the specific evidence in the record that supports a party's position on each of these questions.

. . .

Rules like 56.1 no doubt benefit the parties themselves by requiring their opponents to clarify exactly what they dispute and on what evidence they rely. But they are of significantly greater benefit to the court, which does not have the advantage of the parties' familiarity with the record and often cannot afford to spend the time combing the record to locate the relevant information.

Waldridge, 24 F.3d at 923-24 (citation omitted). The factual statements "are, in short, roadmaps, and without them the court should not have to proceed further, regardless of how readily it might be able to distill the relevant information from the record on its own." Id. at 923.

A district judge is not required to scour the record searching for evidence to support a party's claims or factual assertions. See, e.g., Bombard v. Fort Wayne Newspapers, Inc., 92 F.3d 560, 562 (7th Cir. 1996) ("It is not our function to scour the record in search of evidence to defeat a motion for summary judgment; we rely on the nonmoving party to identify with reasonable particularity the evidence upon which he relies."); United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) ("Judges are not like pigs, hunting for truffles buried in briefs."). In today's era of crowded federal dockets, the court has neither the time nor the inclination to do so. Indeed, as mentioned, Local Rule 56.1 expressly requires parties to direct the court to specific evidence in the record to support their factual assertions. See S.D. IND. L.R. 56.1(a)(1) (requiring a Statement of Material Facts in compliance with L.R. 56.1(f)); S.D. Ind. L.R., 56.1(f)(2) (requiring that each material fact "be substantiated by specific citation to record evidence"); Rice v. Ind. State Police, No. IP98-0201-C-B/S, ___ F. Supp.2d ___, 2001 WL 483441, at *4 (S.D.Ind. Apr. 12, 2001).

Defendants' failure to raise Plaintiff's noncompliance with Local Rule 56.1 does not preclude the court from strictly enforcing the rule. See Waldridge, 24 F.3d at 923-24 ("there is nothing improper in the court enforcing the rule [56.1] strictly, even if the parties themselves have not raised the matter").

Though Plaintiff has made two attempts at compliance with Local Rule 56.1, her efforts have fallen far short of the rule's requirements. Her Brief In Support Of Plaintiff's Motion For Summary Judgment Or Partial Summary Judgment In The Alternative, filed April 24, 2000, contains a section entitled "Statement Of Material Facts" (hereinafter "SMF"). Plaintiff's SMF, however, wholly fails to comply with 56.1(f): it does not consist of numbered sentences as required by 56.1(f)(1); and, moreover, each stated material fact is not substantiated by any citation, let alone specific citation, to record evidence as required by 56.1(f)(2).

Plaintiff subsequently filed her "Numbered Version Of Plaintiff's Statement Of Material Facts For Plaintiff's Motion For Summary Judgment Or Partial Summary Judgment In The Alternative," attempting to comply with Local rule 56.1(f). With the exception of the numbering of the factual assertions, the numbered version is identical to the original version of the SMF. Like the original version of the SMF, the numbered version fails to comply with Local Rule 56.1(f)(2) in that none of the factual assertions are substantiated by specific citation to record evidence. Thus, it is unclear upon what materials in the record Plaintiff relies to support her summary judgment motion. The court notes Plaintiff filed her own affidavit with her motion and, therefore, presumably relies in part upon that affidavit. But Plaintiff's affidavit does not provide support for each factual assertion made in her SMF.

Plaintiff did not seek leave of court to file the numbered version.

The court will not scour the record in search of support for the factual assertions in Plaintiff's SMF. Instead, the court chooses to strictly enforce Local Rule 56.1. Strict enforcement is appropriate even though Plaintiff has not submitted extensive affidavits and other evidence to support her motion. After all, Plaintiff had two tries at compliance with the rule, yet failed to comply fully. The consequence of strictly enforcing the rule is that Plaintiff's SMF (both the unnumbered version and the numbered version) will be disregarded and are STRICKEN.

The court notes that Plaintiff filed the affidavit of Gregory P. Gadson, her attorney, in connection with her reply brief. Plaintiff, however, again failed to comply with Local Rule 56.1. Though she purportedly relies on statements contained in Mr. Gadson's affidavit to supplement her filing of other admissible evidence, Plaintiff did not submit a Statement of Additional Evidence on Reply as required by 56.1(d)(1). Plaintiff's noncompliance with Local Rule 56.1(d)(1) is a sufficient reason for the court to disregard the statements made in Mr. Gadson's affidavit.

As a result of the striking of Plaintiff's SMF and disregard of evidence offered by her in support of her summary judgment motion, that motion is without any factual support and, therefore, should be denied. This may seem a harsh result. But even if the court were to consider Plaintiff's unsupported factual assertions and evidence submitted by Plaintiff, Defendants have come forward with responses to Plaintiff's SMF and a Statement of Additional Material Facts ("SAMF"). For the most part, the factual assertions in Defendants' responses and SAMF are substantiated by specific citation to record evidence. The court therefore assumes that the facts asserted by Defendants are true to the extent they are supported by admissible evidence. See S.D. IND. L.R. 56.1(g).

Moreover, some of Plaintiff's factual assertions are conclusory and lacking in foundation. When ruling on a motion for summary judgment, "a court must not consider those parts of an affidavit that are insufficient under Rule 56(e)." Adusumilli v. City of Chicago, 164 F.3d 353, 359 (7th Cir. 1998), cert. denied, 528 U.S. 988 (1999). Rule 56(e) mandates that "[s]upporting and opposing affidavits shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein." FED. R. CIV. P. 56(e); see also FED. R. EVID. 602 ("A witness may not testify to a matter unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter."); O'Regan v. Arbitration Forums, Inc., 246 F.3d 975, 986 (7th Cir. 2001) ("Affidavits must be based on personal knowledge"). "[S]tatements outside the affiant's personal knowledge or statements that are the result of speculation or conjecture or merely conclusory do not meet this requirement." Stagman v. Ryan, 176 F.3d 986, 995 (7th Cir.), cert. denied, 528 U.S. 986 (1999). Plaintiff asserts that "It was clearly understood by the Defendants that the Inventors Awards Book was the sole work of the Plaintiff and that the book resulted solely from the creative energy of the Plaintiff, as evidenced by the January 14, 1998 memorandum included in the Amended Complaint as Exhibit D." (Pl.'s SMF No. 15.) Exhibit D to the Amended Complaint, a memorandum from Muriel Bourgeois, Thomson Patent Information Manager, to Candi Gaines, dated January 14, 1998, does not provide evidence to support this assertion. The memorandum compliments the quality of the Inventors Awards Book, but says nothing as to whether it was the sole work of Plaintiff or resulted solely from her creative energy. Additionally, Plaintiff fails to provide a foundation for her knowledge regarding what the Defendants understood about the Inventors Awards Book. Another example of a factual assertion lacking foundation is the assertion that the Defendants "knew that the Plaintiff was the sole author of the `Inventors Awards Book,' had notice and knowledge that the Plaintiff's creative work was copyrighted, and that in light of the circumstances the Defendant Corporations were in no way entitled to ownership or future use of the Plaintiff's copyrighted material without her consent." (Pl.'s SMF No. 25.) Furthermore, some of Plaintiff's factual assertions are legal conclusions. The previous assertion contains an example of a legal conclusion. Another example is found in Plaintiff's assertion that "In producing the 1998 Awards book, the Defendants, Carter and Bowman willfully copied or willfully caused to be copied the creative works embodied in the Plaintiff's copyrighted `Inventors Awards Book.'" (Pl.'s SMF No. 29.) These types of statements are properly disregarded by the court in any event as they are insufficient under Rule 56(e).

To be sure, parts of affidavits offered by Defendants are subject to valid criticism. The court will simply disregard those portions of the affidavits relied upon by Defendants which fail to meet Rule 56(e)'s requirements.

When the court examines the factual assertions and affidavits properly before it, it must reach the conclusion that, with one exception, Plaintiff has not shown the absence of a genuine issue of material fact on any issue on which she requests summary judgment and, in the alternative, partial summary judgment. (See Pl.'s Mot. Summ. J. at 2-3 ("Specific Facts and Issues for the Consideration of Partial Summ. J.)). That single exception is Defendants' preemption defense against Plaintiff's passing off claim.

C. Facts

The following facts are supported by admissible evidence. Prior to October 1997, Beatrix de Russe, Vice President, Licensing and Intellectual Property for Thomson Multimedia S.A., assigned Gregory P. Gadson, then employed by Thomson Consumer Electronics, Inc. ("Thomson"), the task as part of his job responsibilities of planning and coordinating the 1997 Inventors Award Ceremony and Banquet. Ms. de Russe provided Mr. Gadson with a budget but no specific instructions on how he should plan the ceremony, merely instructing him to stay within the budget. Defendants claim that Mr. Gadson should have been aware that it was Thomson's practice to re-use portions of past award ceremony materials.

Mr. Gadson obtained the assistance of Marcella Caldwell-Gadson, his wife, in planning the ceremony. Ms. Caldwell-Gadson has never been employed by Thomson. Defendants' only contact with her was through Mr. Gadson who was the only person at Thomson who dealt with Ms. Caldwell-Gadson. If Ms. Caldwell-Gadson was not compensated by Defendants, then it was at least in part because Mr. Gadson did not request or arrange for such compensation. Defendants maintain that Mr. Gadson had a duty to obtain the rights and licenses to ownership and use of the written materials created in connection with his assignment to plan the 1997 awards ceremony, regardless of how he arranged to have the materials created.

Ms. Caldwell-Gadson claims to have created and designed all of the written materials associated with the ceremony, including the "Inventors Awards Book" (the "Book"), which is Exhibit B to the Amended Complaint. Portions of the Book, however, were not created by her. These portions include the Thomson headquarters' building sketch, the Thomson company history time line, the Nipper and Chipper trademarks used by Thomson, and all of the photographs appearing in the Book. In addition, Claudia Jackson, then one of Thomson's secretaries in Patent Operations, assisted with the preparation of the Book by obtaining biographical and work history data from inventors to be honored and preparing written summaries of such data. Many of these written summaries were reprinted in the Book with only minor editing by Ms. Caldwell-Gadson.

Defendants attempt to offer evidence that another secretary, Candi Gaines, also wrote summaries for the inventor biographies, offering Mr. Carter's statement that "To my knowledge, the Thomson secretaries in Patent Operations, Claudia Jackson and Candi Gaines, wrote summaries of the inventor biographies that appear in the `Inventors Awards Book.'" (Carter Aff. 11/10/00 ¶ 9.) Mr. Carter's affidavit does not indicate the basis for his knowledge that Ms. Jackson and Ms. Gaines wrote such summaries. Therefore, his statement does not establish a material issue of fact on that matter. Whether Ms. Gaines also wrote summaries for inventor biographies really doesn't matter any way as there is sufficient evidence from which a trier of fact could find that Ms. Jackson wrote such summaries which were included in the Inventors Awards Book.

The Inventors Awards Book itself indicates a copyright in Ms. Caldwell-Gadson to the cover of the Book and the invitations for the 1997 awards ceremony. Thomson used neither the cover nor the invitations in connection with its 1998 awards ceremony.

Ms. Caldwell-Gadson obtained a copyright registration for the Inventors Awards Book, Certificate of Registration Number TX 4-793-053, issued by the Register of Copyrights, effective May 26, 1998, the validity of which is challenged by Defendants.

Defendants allege that Ms. Caldwell-Gadson obtained the copyright registration fraudulently, knowing she was not the author of the Book. Plaintiff alleges that the Defendants, without her knowledge, consent or compensation, used her copyrighted creative work in their "Worldwide Patent Inventors Awards Book," which is Exhibit E to the Amended Complaint.

Defendants offer Mr. Carter's affidavit as evidentiary support for these allegations. Whether the copyright was fraudulently obtained invites a conclusion of law, and the basis for Mr. Carter's knowledge about Ms. Caldwell-Gadson's state of mind is not established by his affidavit. Thus, the court is left with mere allegations rather than facts on this matter.

D. Discussion

Plaintiff's SMF having been stricken, she simply has not and cannot carry her burden of demonstrating the absence of a genuine issue of material fact. As stated, even if Plaintiff's SMF were properly supported by admissible evidence, Defendants have shown the existence of genuine issues of material fact necessitating trial on her copyright infringement and state law claims.

1. Authorship of the Inventors Awards Book

Plaintiff alleges that she is the sole author of the Inventors Awards Book, but given the ruling that her SMF should be stricken, she has not properly presented any evidence to support that allegation. For this reason, summary judgment in favor of Plaintiff on the issue of authorship of the Inventors Awards Book is inappropriate.

The court notes that Defendants contend there is a genuine issue of material fact as to whether the Inventors Award Book is a work of joint authorship. The Seventh Circuit has adopted the following test for joint authorship: To establish "joint authorship" in a work a party must show: (1) that the parties intended to be joint authors at the time the work was created; and (2) that each author's contribution to the work is independently copyrightable. Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1068-71 (7th Cir. 1994). The former is established if the parties intended to merge their respective contributions into a single whole. 17 U.S.C. § 101; see Childress v. Taylor, 945 F.2d 500, 505 (2nd Cir. 1991).

Defendants argue that the evidence establishes that a substantial part of the Inventors Awards Book was authored by someone other than Plaintiff, and they have presented evidence that portions of the Book were not created by Ms. Caldwell-Gadson but by others. But Defendants have not directed the court's attention to evidence in the record which shows that the joint authorship test has been met. Of course, that failure does not require entry of summary judgment in favor of Plaintiff as it is only after a proper summary judgment motion has been made that the nonmovant must demonstrate a genuine issue for trial.

Defendants also attack the validity of Plaintiff's copyright registration, arguing that Plaintiff's application for copyright registration failed to indicate the Inventors Awards Book contained material previously created or created by others. "[A] plaintiff's knowing failure to advise the Copyright Office of facts which might have led to the rejection of a registration application constitutes grounds for holding the registration invalid and incapable of supporting an infringement action." Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 667 (3rd Cir. 1990). The court merely notes this argument has been made by Defendants, however. Defendants offer no evidence to establish either that (1) Ms. Caldwell-Gadson knowingly failed to advise the Copyright Office of (2) facts which might have led to the rejection of her copyright application.

Defendant further attacks the validity of Plaintiff's copyright registration, contending that the work created by Plaintiff was not sufficiently original. "To receive a copyright, the work must be original." Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994). When the copyrighted material is challenged on originality grounds, the presumption of a valid copyright is overcome by proof that the plaintiff's work was copied from other works. See Masquerade Novelty, 912 F.2d 668-69 (citation omitted). Defendants have offered some evidence that portions of the Inventors Awards Book were copied from the work of others, but resolution of the originality issue awaits further factual development.

Defendants claim that Plaintiff created at best a compilation of work embodying facts and elements preexisting and created by others. Facts may not be copyrighted, true enough. See, e.g., Feist Pub., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 350-51, 360 (1991). However, "[a] factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement." Id. at 350; see also Warren Pub., Inc. v. Microdos Data Corp., 115 F.3d 1509, 1515 (11th Cir. 1997). Thus, even assuming that the Inventors Awards Book is nothing more than a factual compilation, that alone does not compel the conclusion that Plaintiff's copyright registration is invalid.

2. Express or Implied License

Plaintiff seeks summary judgment on Defendants' claim of an implied license (the fifth affirmative defense) to use the materials contained in the Inventors Awards Book. She claims that no implied license in the Book was sought or given to Defendants. She also claims she did not give Defendants permission to make future copies or derivative works of the Book. She argues there is no established course of dealing between her and Defendants that would justify Defendants' belief in the existence of an implied license.

Plaintiff contends that if Defendants do not present admissible evidence of an express or implied license, then the court must assume that no such license exists. Because Plaintiff has not discharged her burden of demonstrating the absence of a genuine issue of fact regarding the existence of a license, Defendants are under no obligation to offer evidence proving the existence of an express or implied license at this stage of the litigation. See, e.g., Logan v. Commercial Union Ins. Co., 96 F.3d 971, 979 (7th Cir. 1996) ("Only after the movant has articulated with references to the record and to the law specific reasons why it believes there is no genuine issue of material fact must the nonmovant present evidence sufficient to demonstrate an issue for trial.").

Defendants argue that the only persons having knowledge of the actual arrangement between Plaintiff and Defendants with respect to the rights given Defendants to the Inventors Awards Book are Plaintiff and Mr. Gadson, who as an agent of Thomson owed a fiduciary duty to Thomson. This suggests that reconsideration of the court's decision denying Defendants' motion to disqualify Mr. Gadson as Plaintiff's counsel may be in order. This issue is taken up infra.

Defendants claim they are entitled to an implied license for use of the materials in the Inventors Awards Book based on the conduct of the parties. It seems Defendants are arguing that they had at the least a nonexclusive license in the Book, which is an affirmative defense to a copyright infringement claim, see, e.g., I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996). A nonexclusive license need not be in writing. See, e.g., Kennedy v. Nat'l Juvenile Detention Ass'n, 187 F.3d 690, 694 (7th Cir. 1999); Shaver, 74 F.3d at 775; 3 MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT § 10.03[A][7], at 10-42 (2000). It may be granted orally or implied from conduct, including lack of objection. See Shaver, 74 F.3d at 775 (quoting NIMMER ON COPYRIGHT § 10.03[A] at 10-40.1). The Seventh Circuit has recognized that: "An implied nonexclusive license has been granted where (1) the licensee requests the creation of a work; (2) the licensor creates the work and delivers it to the licensee who asked for it; and (3) the licensor intends that the licensee copy and distribute the work." Kennedy, 187 F.3d at 694; see also Shaver, 74 F.3d at 776. The Seventh Circuit has applied the following factors in determining whether an implied license exists: "the language of the copyright registration certificate, the letter agreement [that is, contract], and deposition testimony; and the delivery of the copyrighted material without warning that its further use would constitute copyright infringement."

Shaver, 74 F.3d at 776 (holding district court correctly determined that an implied nonexclusive license was granted). On the present record, the court cannot rule as a matter of law that no implied nonexclusive license in the Inventors Awards Book was given by Plaintiff to Defendants.

3. Copyright Infringement

Plaintiff alleges Defendants infringed her copyright in the Inventors Awards Book. To prove copyright infringement, a party must establish: "(1) ownership of a valid copyright, and 2) copying of constituent elements of the work that are original." Feist Pub., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 519 (7th Cir. 1996). "To receive a copyright, the work must be original." Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994); see also Feist, 499 U.S. at 345 ("The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author.") (citation omitted). This means "that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Id. (citing 1 M[ELVILLE B]. NIMMER D[AVID] NIMMER, [NIMMER ON] COPYRIGHT §§ 2.01[A], [B] (1990)). The creativity bar is "extremely low; even a small amount will suffice." Feist, 499 U.S. at 345.

A certificate of registration from the U.S. Register of Copyrights constitutes prima facie evidence of the validity of a copyright. See 17 U.S.C. § 410(c); Fonar Corp. v. Domenick, 105 F.3d 99, 105 (2nd Cir. 1997); Wildlife Exp. Corp., 18 F.3d at 507. If a party produces a certificate of registration, then the burden shifts to the alleged infringer to demonstrate that the copyright is invalid. See Fonar Corp., 105 F.3d at 105; Wildlife Exp. Corp., 18 F.3d at 507. Ms. Caldwell-Gadson has produced a certificate of registration for the Inventors Awards Book; therefore, Defendants bear the burden of showing that the copyright is invalid.

Defendants have not demonstrated the invalidity of Plaintiff's copyright. Yet, even assuming that the copyright in the Inventor Awards Book is valid, Plaintiff has not proven the second element of a copyright infringement claim, that is, copying of constituent elements of the work that are original. Assuming further that Defendants copied constituent elements of the Book that are original to Plaintiff, the existence of a nonexclusive license would constitute an affirmative defense to Plaintiff's copyright infringement claim. As explained, the court cannot rule out such a defense at this stage. Therefore, summary judgment in favor of Plaintiff on her copyright infringement claim is inappropriate.

4. Willful Infringement

Plaintiff alleges that Defendants willfully infringed her copyright in the Inventors Awards Book. (A finding that copyright infringement was willful allows the court to increase statutory damages. 17 U.S.C. § 504(c)(2).) Since summary judgment should not be granted on Plaintiff's copyright infringement claim, it follows that summary judgment should not be granted on her willful infringement claim either.

Summary judgment on Plaintiff's willful infringement claim is inappropriate for another reason. "Willfull" is not defined by the Copyright Act. See Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 511 (7th Cir. 1994). Whether infringement is willful is a factual question. See id. In the Seventh Circuit, a willfulness finding is justified "if the infringer knows that its conduct is an infringement or if the infringer has acted in reckless disregard of the copyright owner's right." Id. The record is devoid of any evidence that Defendants knew their conduct was an infringement or acted in reckless disregard of Ms. Caldwell-Gadson's alleged rights. In fact, the only evidence of notice of Plaintiff's copyright to Defendants is notice of a copyright only in the cover to the Inventors Awards Book and invitations which were not used in connection with the 1998 ceremony. This is an additional reason why Plaintiff is not entitled to summary judgment on the issue of willful infringement.

5. Fair Use

Plaintiff seeks summary judgment on Defendants' affirmative defense of fair use. She contends that the doctrine of fair use is inapplicable because Defendants' alleged infringement of her copyright was not for any purpose expressly mentioned in 17 U.S.C. § 107 or any other similar purpose. Defendants respond that the language in the first part of § 107 is not limitative, citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577-78 (1994). Defendants are correct.

The Supreme Court explained that the determination of fair use "is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis." Campbell, 510 U.S. at 577 (citations omitted). The Court explained that the statute's "text employs the terms `including' and `such as' in the preamble paragraph to indicate the `illustrative and not limitative' function of the examples given . . . which thus provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses." Id. at 577-78. Thus, Plaintiff's claim that fair use is unavailable simply because Defendants' use was not for a purpose specifically mentioned in § 107 is unavailing. Furthermore, in determining the issue of fair use, the court must weigh all four factors set forth in § 107, "in light of the purposes of copyright." Id. at 578. Given the incomplete record before it, the court is unable to weigh the four factors. Therefore, it would be inappropriate to grant Plaintiff summary judgment on the fair use affirmative defense.

6. Equitable Relief

Plaintiff contends that because she bases her action on legal theories of recovery rather than equitable theories, equitable defenses are unavailable to Defendants. Plaintiff, however, does seek injunctive relief against Defendants. (See Am. Compl. at 11, Relief Sought, ¶ 1.) "A suit for copyright infringement, insofar as it seeks an injunction, is equitable in nature." Tempo Music, Inc. v. Myers, 407 F.2d 503, 507 (4th Cir. 1969); see also Broadcast Music, Inc. v. Dici Naz Velleggia, Inc., 490 F. Supp. 1342, 1342-43 (D. Md. 1980). Plaintiff's protests regarding Defendants' equitable defenses therefore are in vain. Moreover, some courts have recognized that "[t]he doctrine of unclean hands, like the doctrine of equitable estoppel, is not limited to suits in equity; the general principle is equally suited to damage actions." F. E. L. Pubs., Ltd. v. Catholic Bishop of Chicago, 506 F. Supp. 1127, 1137 (N.D.Ill. 1981), rev'd on other grounds, No. 81-1333, 1982 WL 19198 (7th Cir. Mar. 25, 1982); see also Associated Bus. Tel. Sys. Corp. v. Greater Capital Corp., 729 F. Supp. 1488, 1496 (D.N.J. 1990), aff'd, 919 F.2d 135 (3rd Cir. 1990). In addition, equitable estoppel is applicable to suits in equity and in law. See Tempo Music, 407 F.2d at 507.

Plaintiff further contends that Defendants must establish four elements in order to avail themselves of equitable relief, citing Hampton v. Paramount Pictures Corp., 279 F.2d 100 (9th Cir. 1960), and Service and Training, Inc. v. Data Gen. Corp., 963 F.2d 680 (4th Cir. 1992). The four factors set forth in these two cases were necessary to establish equitable estoppel. See Serv. Training, Inc., 963 F.2d at 690; Hampton, 279 F.2d at 104. The cases do not purport to establish that the same four factors are necessary with respect to every equitable defense. In any event, Plaintiff has not shown an absence of a genuine issue of material fact so as to preclude Defendants as a matter of law from pursuing equitable defenses.

7. Preemption of State Law Claims

Plaintiff seeks summary judgment on Defendants' claim that the Copyright Act preempts her state law claims for plagiarism and passing-off. The Act preempts state law claims that fall within the subject matter of the copyright and where the right protected by state law is equivalent to any exclusive right under the Act. 17 U.S.C. § 301. The Seventh Circuit has interpreted § 301 as establishing two requisites for preemption of a state law right: (1) "the work in which the right is asserted must be fixed in tangible form and come within the subject matter of copyright as specified in § 102 [or § 103];" and (2) "the right must be equivalent to any of the rights specified in § 106." Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 674 (7th Cir. 1986).

The first requirement easily is satisfied in the instant case. The Inventors Awards Book is fixed in a tangible form and comes within the subject matter of copyright, see 17 U.S.C. § 102 (works of authorship), 103 (compilations and derivative works). As for the second requirement, "[a] right under state law is `equivalent' to one of the rights within the general scope of copyright if it is violated by the exercise of any of the rights set forth in § 106." Baltimore Orioles, 805 F.2d at 676. As the Seventh Circuit explained: "That section grants the owner of a copyright the exclusive rights to reproduce (whether in original or derivative form), distribute, perform, and display the copyrighted work. Thus, a right is equivalent to one of the rights comprised by a copyright if it is infringed by the mere act of reproduction, performance, distribution or display." Id. at 677 (quotation omitted). On the other hand, "if a state cause of action requires an extra element, beyond mere copying . . ., then the state cause of action is qualitatively different from . . . a copyright infringement claim and federal law will not preempt the state action." Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 847 (10th Cir. 1993); see also Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2nd Cir. 1992); 1 MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT § 1.01[B][1], at 1-13-15.

Several courts have concluded that state law claims alleging the tort of passing off escape preemption by the Copyright Act. See, e.g., Fun-Damental Too, Ltd. v. Universal Music Group, Inc., No. CIV.A. 97-1595, 1997 WL 381608, at *5, 43 U.S.P.Q.2d 1595 (E.D.Pa. Jul. 8, 1997); Lone Wolf McQuade Assocs. v. CBS Inc., 961 F. Supp. at 599 (S.D.N.Y. 1997); see also NIMMER ON COPYRIGHT § 1.01[B][1][e] at 1-28 ("there is no preemption . . . of state law of unfair competition of the `passing off' variety."). The court's independent research did not uncover any case which addressed whether the Copyright Act preempts the Indiana tort of passing off. However, it seems that one element of the tort of unfair competition in "passing off" the work of one as the work of another is that deception be a natural and probable consequence of the tortfeasor's acts. See Hammons Mobile Homes, Inc. v. Laser Mobile Home Transp., Inc., 501 N.E.2d 458, 461 (Ind.Ct.App. 1986). Because the tort requires this additional element of deception, the tort of passing off would not be preempted by the Copyright Act.

Defendants apparently acknowledge that the tort of passing off has an element additional to that found in copyright infringement. (See Defs.' Br. Opp'n Pl.'s Mot. Summ. J. at 16-17 ("If there is no proof . . . of consumer confusion, then the `passing off' theory . . . cannot succeed, and it must be understood that the `plagiarism' count recites only a supposed state law cause of action for copying. Thus, at the very least there is a genuine issue as to whether Plaintiff's second count is within the preemption zone drawn by the Copyright Act.")).

A claim alleging simple plagiarism, on the other hand, is preempted by the Copyright Act. Black's Law Dictionary defines "plagiarism" as "[t]he act of appropriating the literary composition of another, or parts or passages of his writings . . . and passing them off as the product of one's own mind. If the material is protected by copyright, such act may constitute an offense of copyright infringement." BLACK'S LAW DICTIONARY 1150 (6th ed. 1990). Thus, the right protected against plagiarism is a right equivalent to a right comprised by a copyright. Other courts have found that state law claims alleging plagiarism are subject to preemption under the Copyright Act. See United States ex rel. Berge v. Bd. of Tr. of the Univ. of Ala., 104 F.3d 1453, 1464 (4th Cir. 1997) ("Berge's charge of plagiarism and lack of attribution can only amount to, indeed, are tantamount to, a claim of copyright infringement. . . ."); Wharton v. Columbia Pictures Indus., Inc., 907 F. Supp. 144, 146 (D.Md. 1995) (claims alleging plagiarism are preempted by Copyright Act). The court concludes that Plaintiff's claim for plagiarism in general is preempted by the Copyright Act.

Accordingly, to the extent Plaintiff asserts a plagiarism claim of "passing off," Plaintiff's motion for summary judgment is GRANTED as to Defendants' preemption defense to such a claim, but DENIED to the extent she may be asserting a plagiarism claim.

II. Motions for Sanctions

Plaintiff moves for Rule 11 sanctions against Defendants for alleged submission of perjured testimony, namely statements in the affidavit of Jeffrey D. Carter, dated March 1, 2000, statements in the affidavit of Claudia Jackson, dated November 10, 2000, and a statement in Mr. Carter's affidavit, dated November 10, 2000. Plaintiff claims that Defendant Carter has no such knowledge as alleged in his affidavit. She bases this claim on the fact that Mr. Gadson did not report to Mr. Carter and the Defendants' failure to substantiate Mr. Carter's statements with documentary evidence or factual details. Plaintiff argues that defense counsel John McNett was at least on inquiry notice that Mr. Carter's affidavit contained perjured testimony because it contains "information that would normally and appropriately have been the subject of an affidavit by someone in a supervisory role, and no such person was apparently willing to execute such an affidavit." (Pl.'s Mot. Rule 11 Sanctions Against Defs. at 5.) As for the statements regarding Ms. Jackson's and Ms. Gaines's involvement in drafting biographical and work summaries, Plaintiff maintains that neither of them wrote such summaries for if they had, Defendants would have produced them and would have alleged that they wrote the biographies. Plaintiff also criticizes the timing of the execution of the affidavits.

The statements are:

5. While serving as an Attorney for the Corporate Defendants, Greg Gadson provided the Corporate Defendants with legal representation in obtaining from Marcella Caldwell-Gadson any rights, express or implied, belonging to the Corporate Defendants in material contained in the "Inventors Awards Book." 6. During my employment with Thomson Consumer Electronics, I obtained first hand knowledge that it was and still is an understanding of the Corporate Defendants that Greg Gadson's aforementioned representation resulted in a failure to obtain express rights belonging to the Corporate Defendants in material contained in the "Inventors Awards Book," but did result in an implied license belonging to the Corporate Defendants in material contained in the "Inventors Awards Book."

The statements are:

4. As part of such assistance, along with the help of our other Secretary in our Department, Ethel ("Candi") Gaines, I obtained biographical and work history data from inventors to be honored at the ceremony, and prepared written summaries of such data. To my knowledge, these summaries were forwarded to the Plaintiff. 5. To the best of my recollections, many of these summaries were reprinted in the "Inventors Awards Book" with only minor editing by the Plaintiff.

That statement is: "9. To my knowledge, the Thomson secretaries in Patent Operations, Claudia Jackson and Candi Gaines, wrote summaries of the inventor biographies that appear in the "Inventors Awards Book."

Defendants in response argue Plaintiff violated Rule 11's safe harbor provision by prematurely filing her first sanctions motion. They contend that both sanctions motions lack evidentiary or legal support and that Plaintiff attempts to convert an issue of fact into a claim of perjury. Defendants request expenses and fees, pursuant to FED. R. CIV. P. 11(c)(1)(A), incurred by them in opposing the two sanctions motions. Finally, though not made in a separate motion, Defendants request the court to reconsider its prior denial of their motion to disqualify Plaintiff's counsel.

Though Plaintiff may indeed be correct that the statements by Mr. Carter are conclusory and lack a sufficient foundation to establish his personal knowledge of the matters contained in the subject paragraphs, that alone does not compel the conclusion that Mr. Carter's statements constitute perjury. And, Plaintiff offers nothing of substance to support her claim of perjury. Plaintiff's assertion that no one in a supervisory capacity over Mr. Gadson was willing to execute an affidavit is based on shear speculation. Further, the absence of such an affidavit wholly fails to provide any notice whatsoever that Mr. Carter's affidavit contained perjury. Similarly, Plaintiff's argument that had Ms. Jackson and Ms. Gaines wrote biographical summaries, then Defendants would have produced them, is wholly conclusory and unsupported speculation without any basis in fact. Defendants are not required to produce any and all documentation to refute Plaintiff's claims; sworn statements under oath that dispute statements by Plaintiff are sufficient. Moreover, contrary to Plaintiff's claim, at a minimum, Defendants' Third and Tenth Affirmative Defenses make allegations that would include claims that persons other than Plaintiff authored portions of the Inventors Awards Book. The timing of the execution of the affidavits toward the end of the deadline for responding to Plaintiff's summary judgment motion is no indication whatsoever that any matters contained therein consist of perjury.

A Rule 11 sanctions motion is not the proper vehicle with which to challenge the foundation for statements made in an affidavit. Nor is it a proper discovery tool. See FED. R. CIV. P. 11 advisory committee's note (1993 Amendments). Accusations of perjury are serious and should not be made lightly. The same applies equally to sanctions motions. It does not seem that Plaintiff has given her sanctions motions or perjury accusations the careful thought they were due. The motions for sanctions are not well-founded. Plaintiff is reminded that the filing of a sanctions motion is itself subject to sanctions. See id.

Given this conclusion, the court need not and does not address whether Plaintiff complied with Rule 11's safe harbor provision.

Plaintiff's request for a hearing on her motions for sanctions is DENIED, and the motions for sanctions are DENIED. An award of reasonable expenses and attorney's fees incurred by Defendants in opposing the motions is warranted and authorized under Rule 11(c)(1)(A), and Defendants' request for such an award is GRANTED.

III. Reconsideration of Motion to Disqualify Plaintiff's Counsel

Defendants seek reconsideration of the court's decision denying Defendants' motion to disqualify Plaintiff's counsel. On reconsideration of the issue and consideration of Defendants' affidavits submitted in opposition to Plaintiff's summary judgment motion as well as Plaintiff's submission of Mr. Gadson's affidavit, the court finds that Mr. Gadson is likely to be a necessary witness at trial. As their fifth affirmative defense, Defendants allege they had an implied license to use the materials contained in the Inventors Awards Book. In her affidavit, Ms. de Russe states that "Greg Gadson was the person responsible for dealing with the Plaintiff and would be the only person who would know what form of arrangement [regarding compensation] was made with the Plaintiff." (de Russe Aff. ¶ 7.)

In addition, Mr. Carter states in his affidavit that "To my knowledge, the only contact Thomson had with the Plaintiff in planning the event [the 1997 Inventors Awards Ceremony] was through Greg Gadson. . . ." (Carter Aff. 11/10/00 ¶ 7.) Mr. Carter further states that "To my knowledge, Greg Gadson was the sole contact with the Plaintiff in that regard [with respect to obtaining ownership rights in materials created for the 1997 ceremony and compensation]. . . ." (Carter Aff. 11/10/00 ¶ 13.) Thus, it appears that Mr. Gadson is the only Thomson employee or former employee who can testify about the contacts with Plaintiff regarding the 1997 ceremony and Inventors Awards Book. At the least, Mr. Gadson would be the best and likely a necessary witness to testify on Thomson's behalf on such matters.

Because Mr. Gadson is likely to be a necessary witness at trial, the court must consider Rule 3.7(a) of the Indiana Rules of Professional Conduct which provides:

A lawyer shall not act as an advocate at a trial in which the lawyer is likely to be a necessary witness except where: (1) the testimony relates to an uncontested issue; (2) the testimony relates to the nature and value of legal services rendered in the case; or (3) disqualification of the lawyer would work substantial hardship on the client.

PRO. COND. R. 3.7(a). Neither subsection (1) nor (2) is applicable with respect to Mr. Gadson's anticipated testimony. Yet, the question remains whether Mr. Gadson's disqualification would work substantial hardship on Plaintiff. Defendants argued it would not because she herself is an attorney. They also argued that no substantial hardship would visit Plaintiff because discovery had not yet commenced. The motion to disqualify was filed on March 1, 2000, however; and now the deadline for discovery has long since passed. Plaintiff has not addressed whether the disqualification of Mr. Gadson as her counsel would cause her substantial hardship. In order to aid its reconsideration of the motion to disqualify, the court finds that additional information will be necessary on the issue of whether Mr. Gadson's disqualification would work substantial hardship on Plaintiff.

IV. Conclusion

Plaintiff's Rule 11 motion and second Rule 11 motion for sanctions are DENIED.

Plaintiff's request for a hearing on her motions for sanctions is DENIED. Defendants' request for an award of reasonable expenses and attorney's fees incurred by them in opposing the two sanctions motions is GRANTED. Defendants are DIRECTED to file within 15 days of this date a statement regarding their reasonable attorneys' fees and expenses incurred in opposing Plaintiff's two motions for sanctions.

Plaintiff's SMF, both the numbered version and unnumbered version, are STRICKEN. Plaintiff's motion for partial summary judgment is GRANTED IN PART on Defendants' preemption defense to Plaintiff's passing off claim to the extent she alleges such a claim in Count II of the Amended Complaint. Such a claim is not preempted by the Copyright Act. In all other respects, however, Plaintiff's motion for summary judgment is DENIED.

Defendants' motion for reconsideration of the decision denying their motion to disqualify Plaintiff's counsel is GRANTED. The court will reconsider the motion to disqualify, and now ORDERS Plaintiff to show cause why Gadson's disqualification would work substantial hardship on her within 15 days of this date. She may also file a brief in support of her position. Defendants are ALLOWED 15 days from the receipt of Plaintiff's submission(s) within which to serve and file a reply brief on the hardship issue.


Summaries of

Caldwell-Gadson v. Thomson Multimedia S.A

United States District Court, S.D. Indiana, Indianapolis Division
Sep 18, 2001
IP 99-1734-C-T/G (S.D. Ind. Sep. 18, 2001)
Case details for

Caldwell-Gadson v. Thomson Multimedia S.A

Case Details

Full title:MARCELLA CALDWELL-GADSON, Plaintiff, vs. THOMSON MULTIMEDIA, S.A., THOMSON…

Court:United States District Court, S.D. Indiana, Indianapolis Division

Date published: Sep 18, 2001

Citations

IP 99-1734-C-T/G (S.D. Ind. Sep. 18, 2001)

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