CHRISTINA A. SNYDER, District Judge.
Plaintiff Richard Machowicz ("Machowicz") and his wholly-owned LLC, Mindlab Media ("Mindlab") (collectively, "plaintiffs"), filed the instant action on April 21, 2011. On February 6, 2012, the Court granted defendant UCT's motion to dismiss plaintiff's First Amended Complaint without prejudice. Dkt. No. 65. Plaintiff filed the operative Second Amended Complaint ("SAC") on February 28, 2012, against defendants LWRC International, LLC ("LWRCI"), UCT Arms, LLC ("UCT"), Tango Down, Inc., SPS Technologies, LLC, NICORR, and Over the Beach.
Thereafter, plaintiffs dismissed defendants Nicorr, UCT, and SPS Technologies from this action pursuant to Fed. R. Civ. P. 41. Dkt. Nos. 75, 77, 89. The Court then dismissed defendant Tango Down with prejudice pursuant to the parties' stipulation, leaving only defendant LWRCI. Dkt. No. 106.
On February 8, 2013, plaintiff Mindlab filed a motion for summary judgment as to its first claim for copyright infringement. Defendant opposed the motion on February 25, 2013, and plaintiff filed a reply on March 4, 2013. The Court held a hearing on March 18, 2013. After considering the parties' arguments, the Court finds and concludes as follows.
Machowicz is a television personality who has hosted numerous television shows with national and international viewership, including "Future Weapons," "Weapons that Changed the World," "Deadliest Warrior," and "Most Lethal." Plaintiff's Undisputed Material Facts ("PUMF") ¶¶ 1-2. He is also a former Navy Seal, the author of a best-selling book
Defendant LWRCI is an developer, manufacturer, marketer, and seller of sophisticated firearm weapons and accessories. PUMF ¶ 6. LWRCI was created in April 2008, following an asset purchase from Lietner-Wise Rifle Company, and bills itself as a sophisticated developer and manufacturer of accurate and reliable firearm weapons and accessories. PUMF ¶¶ 7, 9. Defendant advertises its products through print advertisements in magazines and other "gun periodicals" and over the internet.
In May or June 2010, Machowicz contacted LWRCI about obtaining an LWRCI rifle for use on a television show on Spike TV. PUMF ¶ 10. Machowicz testifies that he agreed to send LWRCI's executive vice president, Darren Mellors, an autographed photo of himself with the weapon, and that LWRCI agreed to send plaintiff one of its rifles. PUMF ¶ 11. In June of 2010, LWRCI sent a rifle to plaintiff. PUMF ¶ 12. Per Mellor's instructions, the packing list and invoice that accompanied the delivery of the rifle stated "TO BE USED ON SPIKE TV AS ADVERTISING," presumably in reference to the rifle. PUMF ¶¶ 13-15.
On January 9, 2011, Machowicz emailed a photograph of himself holding an LWRCI rifle to Mellors. PUMF ¶ 17. It is this photograph that Mindlab claims to hold a valid copyright registration over. PUMF ¶¶ 23-24. In his email, Machowicz "apolgize[d] for the incredibly long delay in getting these pics to you," and stated that he "hope[d] these [pictures] work for you. I'll be a [sic] Shot Show and also hope to see you there as well." Machowicz Decl. Ex. B. Machowicz also noted that he was beginning to film a new television series which might lend itself to a "big LWRC opportunity."
On January 10, 2011, Mellors responded to Machowicz by email, stating "Thanks for doing that!" and asking: "How can I use the pics? Can I use them in print advertising?" Machowicz Decl. Ex. C; PUMF ¶ 18. Neither Mellors nor LWRCI received a response to these two questions by email, telephone, or through an in-person meeting. PUMF ¶¶ 19-20. Sometime between January 9 and January 16, 2011, Mellors submitted an advertisement containing the photograph to Guns & Ammo magazine.
Around this time, plaintiffs began to seek out potential commercial endorsement opportunities with gun manufacturers, including LWRCI.
Defendant contends that the parties' dealings in fact date to 2007, when Machowicz and Mellors met at the filming of a show called Future Weapons. Def.'s Additional Undisputed Material Facts ("DUMF") ¶ 1. There, Machowicz told Mellors that he was "impressed with . . . the 7.62 rifle and was interested in getting one." Mellors Depo. 64:10-14. Mellors responded that "if we could do something together, like if I could get a photograph to use, um, in advertising or something, um, that — that I'd be happy to send him one."
Then in June 2010, Machowicz called Mellors to tell him that he was impressed with the REPR—one of defendant's rifles—and asked "whatever happened to you sending me one of those rifles[?]" Mellors Depo. 68:4-5; 74:4-10; DUMF ¶ 4. In response, Mellors told Machowicz that he had spoken to Lear, but that Lear "started negotiating with [Mellors] about money," whereas Mellors thought "the deal was about the trade of a photo for use in advertising for the rifle."
Once Mellors received the email containing the photo on January 9, 2011, as discussed above, he wrote back to Machowicz asking how he could use the photo. Mellors testifies he did so because he wanted Machowicz to feel "in control—of his image and his employment of it;" that he wanted him to "feel comfortable . . . with the arrangement." DUMF ¶ 9; Mellors Depo. 85:1-8. When Machowicz did not respond to Mellor's January 9 email, Mellors apparently decided that Machowicz did not wish to place any restrictions on the use of the photograph by LWRCI. DUMF ¶ 10. Mellors then had the photograph inserted into an advertisement, as previously noted. DUMF ¶ 14; Mellors Depo. 124:14-18 (testifying that the photographs were "obviously staged to showcase our product for use in advertising"). After plaintiff objected to defendant's use of the photograph, this suit followed.
Summary judgment is appropriate where "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The moving party bears the initial burden of identifying relevant portions of the record that demonstrate the absence of a fact or facts necessary for one or more essential elements of each claim upon which the moving party seeks judgment.
If the moving party meets its initial burden, the opposing party must then set out specific facts showing a genuine issue for trial in order to defeat the motion.
In light of the facts presented by the nonmoving party, along with any undisputed facts, the Court must decide whether the moving party is entitled to judgment as a matter of law.
Plaintiff Mindlab argues that it is entitled to a grant of summary judgment in its favor on its claim for copyright infringement. A copyright infringement claim has two elements: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."
First, the Court must address the issue of ownership of a copyright. Under 17 U.S.C. § 410(c), "the registration of a copyright certificate constitutes prima facie evidence of the validity of a copyright in a judicial proceeding commenced within five years of the copyright's first publication."
In addition, "[i]n the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title . . . and owns all of the rights comprised in the copyright." 17 U.S.C. § 201(b). "Works made for hire," in turn, are works: (1) prepared by an employee within the scope of his or her employment; or (2) specially commissioned for one of various enumerated purposes, including "for use as a contribution to a collective work," so long as the "parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. . . ." 17 U.S.C. § 101.
Defendant notes that it is undisputed that plaintiff's neighbor, J. Alan Barnes, is the person who took the photograph in question, and that he was not an employee of Mindlab at the time he took the photo. DUMF ¶¶ 19-20. From this premise, defendant argues that plaintiff has not demonstrated that Barnes executed a written "work for hire" agreement with Mindlab prior to the photograph being commissioned for one of the statutorily enumerated work for hire purposes, and therefore Mindlab fails to demonstrate ownership of a valid copyright. Defendant primarily focuses on the latter requirement: that the work be "specially ordered or commissioned for use as a contribution to a collective work," or any of the other specifically enumerated categories identified in 17 U.S.C. § 101." Opp'n at 9.
The Court disagrees; Mindlab has adequately demonstrated its ownership of the subject work as a work for hire. At the outset, the Court notes that there is no dispute between the two potential owners of the copyright—Barnes and Mindlab—in this case. In this situation, it is generally "unusual and unwarranted to permit third parties such as the instant defendant[] to invoke § 101 to avoid a suit for infringement."
Even assuming that the subject work could not be considered a work for hire, Barnes transferred any interest he had in the subject work to Mindlab through the same "Work for Hire" agreement discussed above.
Defendant makes a further challenge to plaintiff's ownership of a valid copyright—namely, that plaintiff has failed to demonstrate that the photograph in question is the photograph that actually pertains to the copyright registration at issue, or number VA 1-756-728. Without any evidence of which particular image was submitted to the copyright office to obtain this copyright registration, defendant argues, there is no proof that the photographs that defendant used in its advertising are covered by this registration number. Opp'n at 11. This argument is without merit. Plaintiff offers the Certificate of Registration for VA 1-765-728, which indicates title of the work is "J. Alan Barnes Photo of Richard `Mack' Machowicz," and that the registration was certified by attorney David Pierce. And in his reply declaration, plaintiff's counsel offers a copy of the subject work that was submitted to obtain this copyright registration number, which he testifies was produced during discovery to defendant. Pierce Reply Decl. Ex. I. Defendant offers no evidence to the contrary. This, in addition to the Certificate of Registration itself, is sufficient to demonstrate that the VA 1-765-728 registration corresponds to the photograph in question.
The Court concludes, however, that disputed issues of material fact preclude a grant of summary judgment in plaintiff's favor on the issue of infringement, willful or otherwise. In particular, the parties dispute whether defendant had "permission" to use the copyrighted work in its print advertising.
Although neither party discusses the applicable legal framework, the principles governing grants of non-exclusive copyright licenses are well-established. Generally, as plaintiff argues, transfer of copyright ownership must be in writing. 17 U.S.C. § 204. Under 17 U.S.C. § 101, however, grants of a non-exclusive license to use a copyrighted work are not a "transfer of copyright ownership," and hence are not subject to the writing requirement.
When considering the third element of this test, the licensor's intent, courts consider whether the totality of the parties' conduct indicates that the licensor intended to grant the licensee permission to use the work.
For one, as discussed above, the parties dispute whether they in fact entered into an oral agreement that granted defendant a non-exclusive license to use the photograph in question. Without making credibility determinations, the Court cannot resolve this dispute in either party's favor on this motion. Moreover, on all three factors of the test for the creation of an implied non-exclusive license, disputed issues of material fact preclude a grant of summary judgment in plaintiff's favor.
In accordance with the foregoing, plaintiff's motion for summary judgment is hereby GRANTED in part and DENIED in part.
IT IS SO ORDERED.
