Denenberg v. LED Technologies, LLC
ORDER granting in part and denying in part 5 Plaintiff's Motion for Summary Judgment. Specifically, Plaintiffs motion is GRANTED as to liability and DENIED as to willful infringement; granting in part and denying in part 16 Defendant 039;s Motion for Summary Judgment. Defendants motion is GRANTED as to willful infringement and DENIED as to innocent infringement. The Court suggests that the parties now consider sitting down with a professional mediator to see whether what remains of this case might be subject to settlement. By Judge R. Brooke Jackson on 09/28/12. (alvsl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge R. Brooke Jackson
Civil Action No. 11-cv-03155-RBJ
STEVEN M. DENENBERG,
LED TECHNOLOGIES, LLC, a Colorado limited liability company,
This matter comes before the Court on a motion for summary judgment from the plaintiff
[docket #5] and a motion for partial summary judgment from the defendant [#16]. Both motions
will be addressed below.
Plaintiff Steven Denenberg is a facial plastic surgeon in Omaha, Nebraska. Dr.
Denenberg takes photographs of his patients before and after procedures and uses those
photographs on his website. Dr. Denenberg created his website in the 1990s and later hired an
artist to help make the site more attractive and easier to navigate. The artist updated the logo and
font and helped to arrange the before and after pictures in a manner that looked less clinical. All
of the content on the website has been registered with the United States Copyright Office,
Copyright Registration No. TX-5-917-608.
Defendant LED Technologies sells a lamp that is advertised to provide anti-aging
benefits. In 2005 LED Technologies hired an outside marketing company, Hannah Media, to
create an infomercial for the company. In creating the infomercial, Hannah Media acquired
photographs that were then used in the infomercial and in other advertising materials. The
photographs acquired by Hannah Media did not contain any copyright notice, watermark, or
other notice of the photographs’ origin or copyright. LED Technologies paid Hanna Media
$21,731.25 for its work on the infomercial, including a line item charge of $350 for “library
Dr. Denenberg’s before and after photographs were used in LED Technologies’
advertising materials for the anti-aging light. Because LED Technologies did not have a license
or other authorization to use the photographs, Dr. Denenberg filed a complaint alleging copyright
infringement for LED Technologies’ use of the copyrighted pictures and seeking statutory
Dr. Denenberg now moves for summary judgment, arguing that there are no genuine
disputes as to any material facts. LED Technologies has also moved for partial summary
judgment relating to statutory damages. Specifically, LED Technologies argues that summary
judgment is appropriate to determine that the defendant did not commit a willful copyright
infringement, but rather any infringement committed by the defendant was an innocent copyright
“Summary judgment is appropriate ‘if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any material fact
and that the movant is entitled to judgment as a matter of law.’” Utah Lighthouse Ministry v.
Found. for Apologetic Info. & Research, 527 F.3d 1045, 1050 (10th Cir. 2008) (quoting Fed. R.
Civ. P. 56 (c)). When deciding a motion for summary judgment, the Court considers “the factual
record, together with all reasonable inferences derived therefrom, in the light most favorable to
the non-moving party . . . .” Id. The Court does not weigh the evidence or make credibility
determinations. Id. The moving party has the burden to show that there is an absence of
evidence to support the nonmoving party’s case. Celotex Corp. v. Catrett, 477 U.S. 317, 325
(1986). The nonmoving party must “designate specific facts showing that there is a genuine
issue for trial.” Id. at 324. In challenging such a showing, the non-movant “must do more than
simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec.
Indus. Co., Ltd. V. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
“Copyright protection subsists . . . in original works of authorship fixed in any tangible
medium of expression.” 17 U.S.C. § 102. The owner of a copyright has the exclusive rights to
reproduce the copyrighted work, prepare derivative works, or display the copyrighted work
publicly. 17 U.S.C. § 106. To prove copyright infringement, a plaintiff must show two
elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 304, 361
The parties do not dispute that LED Technologies used Dr. Denenberg’s photographs
without his permission. However, Dr. Denenberg’s ownership of a valid copyright is disputed.
LED Technologies argues that it is not liable for copyright infringement, because Dr.
Denenberg’s did not have a valid copyright, and because Dr. Denenberg is not the owner of the
First, LED Technologies argues that Dr. Denenberg did not have a valid copyright
because the pictures themselves are not copyrightable. “To qualify for copyright protection, a
work must be original to the author.” Feist, 499 U.S. at, 345. Originality requires “independent
creation plus a modicum of creativity.” Id. at 346. While creativity is required, the threshold is
very low. The Supreme Court has explained, “[t]o be sure, the requisite level of creativity is
extremely low; even a slight amount will suffice. The vast majority of works make the grade
quite easily, as they possess some creative spark, no matter how crude, humble or obvious it
might be.” Id. at 345. (internal quotations omitted).
LED Technologies argues that Dr. Denenberg was merely performing the mechanical
function of operating the camera and did not contribute any creativity to the photographs. While
Dr. Denenberg did not carefully stage the patients and adjust the lighting as a professional
photographer might, that is not the standard. In the act of taking the pictures, Dr. Denenberg had
to make creative decisions, no matter how “crude, humble, or obvious” they may have been.
Further, in arranging the photographs on the website, Dr. Denenberg had to make additional
creative decisions. The pictures are independent creations with at least a modicum of creativity,
and therefore, qualify for copyright protection.
Second, LED Technologies argues that Dr. Denenberg cannot claim copyright ownership,
because he did not create the photographs. Where ownership of a copyright is disputed, the party
claiming ownership has the burden of proving its validity. Autoskill v. Nat’l Educ. Support Sys.,
Inc., 994 F.2d 1476, 1487 (10th Cir. 1993). “[A] certificate of registration of a copyright ‘shall
constitute prima facie evidence of the validity of the copyright and of the facts stated in the
certificate.’” Id. (quoting 17 U.S.C. § 401(c)). The presumption of validity established with a
certificate of registration includes the identification of the author. Id. at 1488. When a plaintiff
presents a registration certificate, the plaintiff establishes a prima facie case that the copyright is
valid and the burden of contesting the validity of the copyright then shifts to the party
challenging it. Id. Dr. Denenberg submitted the registration certificate for Copyright
Registration No. TX-5-917-608 with his motion for summary judgment and thus established a
prima facie case that he is the owner of a valid copyright. Accordingly, the burden shifts to LED
Technologies to show that Dr. Denenberg was not the rightful owner of the copyright.
Copyright ownership initially vests in the author of the work. 17 U.S.C. § 201. “As a
general rule, the author is the party who actually creates the work, that is, the person who
translates an idea into a fixed, tangible expression entitled to copyright protection.” Cmty. for
Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989). An exception to this rule is “works
made for hire.” A work made for hire is “a work prepared by an employee within the scope of
his or her employment.” 17 U.S.C. § 101. “In the case of work made for hire, the employer or
other person for whom the work was prepared . . . owns all of the rights comprised in the
copyright.” 17 U.S.C. § 201(b).
LED Technologies argues that Dr. Denenberg does not own the copyright because his
nurse may have taken the pictures. LED Technologies points to Dr. Denenberg’s deposition
where he acknowledged that “maybe two times in 20 years I’ve had my nurse take the pictures,
but I like to take them myself.” (Denenberg Dep. 26:5-7, Jan. 20, 2012.) This statement does not
create a genuine issue as to a material fact.
A material fact is genuine if “the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Suggesting that twice in 20 years Dr. Denenberg’s nurse might have taken two of the pictures is
no more than a “metaphysical doubt,” and therefore, does not create a genuine dispute.
A fact is material “if under the substantive law it is essential to the proper disposition of
the claim.” Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998) (citing Anderson,
477 U.S. at 248 (1986)). It is not material whether it was Dr. Denenberg or his nurse who took
the pictures because of the works made for hire doctrine. LED Technologies presents no
evidence to suggest that the photographs, if taken by a nurse, would be anything other than
works made for hire. If the photograph was taken by a nurse and was a work made for hire the
copyright would still belong to Dr. Denenberg. Accordingly, it is not material whether Dr.
Denenberg or a nurse took the photographs.
Next, LED Technologies argues that Dr. Denenberg does not own the copyright for his
website because an artist assisted him with his website. In his deposition, Dr. Denenberg
acknowledges that he hired an artist and that the artist adjusted the logo to make it more
attractive and changed some of the font. The artist also showed Dr. Denenberg how to display
the before and after pictures in a way that was less clinical.
That the artist helped update the website to make it more attractive is not enough for
Defendant LED Technologies to meet its burden to show that Dr. Denenberg did not own the
copyright. The website and photographs were created before the artist was hired. Although the
artist helped to improve the website, it was Dr. Denenberg who created the website. Thus, Dr.
Denenberg is the author of the photographs and website and is the copyright holder.
Because LED Technologies has not shown a genuine issue of material fact as to the Dr.
Denenberg’s ownership of a valid copyright and does not dispute that Dr. Denenberg’s
photographs were used without his permission, summary judgment for the plaintiff is appropriate
on the issue of liability.
Upon showing copyright infringement, a plaintiff can seek statutory damages in lieu of
actual damages. 17 U.S.C. § 504(a). Generally, a plaintiff can be awarded “not less than $750
or more than $30,000” statutory damages. Id. at § 504(c). There are two exceptions: (1) if the
infringement was committed willfully the plaintiff may be awarded up to $150,000 per
infringement; and (2) if the infringement was innocent, meaning the infringer was not aware of
and had no reason to believe that his or her acts constituted an infringement of copyright, the
court may reduce the award to not less than $200 per infringement. Id. The copyright holder has
the burden of proving that infringement was committed willfully; the infringer has the burden of
proving the infringement was innocent. Id. Dr. Denenberg now seeks a summary judgment that
the infringement was willful. LED Technologies seeks a summary judgment that the
infringement was not willful, and that the infringement was innocent.
“[T]he prima facie case for willful infringement requires a showing of specific intent to
violate copyright law.” BC Technical, Inc. v. Ensil Int’l Corp., 464 Fed. App’x 689, 696 (10th
Cir. 2012). “Where specific intent is an element of a crime it must be proven as an independent
fact or clearly inferred from the evidence.” Id. (quoting United States v. Sherman, 576 F. 2d
292, 297 (10th Cir. 1978)). Dr. Denenberg offers no evidence that LED Technologies knew that
the pictures were copyrighted. Affidavits from Ronald L. Ferguson and Brent Safer, the cofounders of defendant LED Technologies, declare that LED Technologies had no knowledge that
using the photographs violated copyright law. The pictures did not contain copyright notice,
watermark, or other notice of the photograph’s origin or copyright. Dr. Denenberg has not
shown a genuine issue of material fact that LED Technologies acted willfully, and therefore,
LED Technologies is entitled to partial summary judgment.
Innocent infringement requires LED Technologies to prove that it was not aware of and
had no reason to believe that its acts constituted copyright infringement. LED Technologies
argues that it is an innocent infringer because of its dealings with Hannah Media. LED
Technologies paid Hanna Media to create an infomercial and included in the billing was a line
item charge of $350 for “library stock.” The company argues it was therefore reasonable to
assume that Hannah Media had acquired a license for the photographs. LED Technologies also
included affidavits from its co-founders explaining that the company has a policy of not using
copyrighted works without authorization and routinely purchases licenses to use in advertising
materials. However, Dr. Denenberg has offered evidence that some of the infringing
photographs were not used in the infomercial prepared by Hannah Media, and he argues that
even if they were, this should not have given LED Technologies a reason to believe that the
photographs could be used in additional advertising materials. Because there is a fact dispute
about where LED Technologies acquired the photographs and how they were used, summary
judgment is not appropriate to determine if the infringement was innocent.
1. Plaintiff’s motion for summary judgment [#5] is GRANTED in part and DENIED in
part. Specifically, plaintiff’s motion is GRANTED as to liability and DENIED as to
2. Defendant’s motion for partial summary judgment [#16] is GRANTED in part and
DENIED in part. Defendant’s motion is GRANTED as to willful infringement and
DENIED as to innocent infringement.
3. The Court suggests that the parties now consider sitting down with a professional
mediator to see whether what remains of this case might be subject to settlement.
DATED this 28th day of September, 2012.
BY THE COURT:
R. Brooke Jackson
United States District Judge