Grady v. Lambert

Filing 37

ORDER granting in part and denying in part 34 Motion for Summary Judgment by Chief Judge Marcia S. Krieger on 9/29/15.(pglov)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Chief Judge Marcia S. Krieger
Civil Action No. 13-cv-02828-MSK-MJW
JAMES S. GRADY,
Plaintiff,
v.
JEREMY LAMBERT,
Defendant.
______________________________________________________________________________
OPINION AND ORDER GRANTING, IN PART, MOTION FOR SUMMARY
JUDGMENT
______________________________________________________________________________
THIS MATTER comes before the Court pursuant to Mr. Grady’s Motion for Summary
Judgment (# 34). Mr. Lambert filed no response.
FACTS
Mr. Grady is a photographer, holding the copyright in numerous images of “teenaged
glamour models.” Mr. Grady posts those images on a commercial website, trueteenbabes.com,
and users pay a subscription fee to access and view those photographs. At some point prior to
early 2013, Mr. Lambert subscribed to trueteenbabes.com and downloaded a large number of
Mr. Grady’s copyrighted images. In April and May 2013, Mr. Lambert reposted those images on
another website, xbbs.asia, without Mr. Grady’s permission. Mr. Lambert encouraged other
xbbs.asia users to download the images.
Based on these allegations, Mr. Grady asserts five claims against Mr. Lambert: (i) – (iii)
direct, contributory, and vicarious copyright infringement respectively under the Copyright Act,
17 U.S.C. § 501; (iv) trademark infringement on a false designation of origin theory, 15 U.S.C. §
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1125(a), in that Mr. Lambert’s postings on xbbs.asia were likely to deceive customers as to the
source of the photos displayed; and (v) trademark dilution under 15 U.S.C. § 1125(c), in that Mr.
Lambert’s actions caused Mr. Grady’s works “to intermingle with images of poor quality or of
an offensive or illegal nature.”
The record reflects that Mr. Lambert did not respond to discovery, including numerous
Requests for Admission by Mr. Grady. This results in Mr. Lambert admitting the requested
information. Fed. R. Civ. P. 36(a)(3), (b). Mr. Lambert also submitted a written statement that
could be understood as a general admission of culpability.1 Based on this and other evidence,
Mr. Grady moves (# 34) for summary judgment in his favor on all three copyright claims and the
false designation of origin trademark claim. Notably, Mr. Grady’s motion does not address the
issue of damages whatsoever; the final paragraph of his motion merely requests relief in the form
of “an order granting summary judgment . . ., for an order enjoining [Mr. Lambert] from directly
or indirectly infringing on [the copyrights] . . ., and for such other and further relief as the Court
deems just and proper.” Mr. Lambert did not respond to the motion.
ANALYSIS
A. Standard of review
Rule 56 of the Federal Rules of Civil Procedure facilitates the entry of a judgment only if
no trial is necessary. See White v. York Intern. Corp., 45 F.3d 357, 360 (10th Cir. 1995).
Summary adjudication is authorized when there is no genuine dispute as to any material fact and
a party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). Substantive law governs
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That statement reads, in its entirety, “I had [my] computer in my car to get it mirrored [in
response to a discovery request] but it was stolen. I admit that I did it. I am sorry for what I did.
There is no excuse for my actions and it will never happen again. I have never done anything in
the past to get me into trouble. I do not have a job or money and am in the process of applying
for disability. I do not own any property or vehicles. I am more than willing to do community
service if that is what is desired.”
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what facts are material and what issues must be determined. It also specifies the elements that
must be proved for a given claim or defense, sets the standard of proof and identifies the party
with the burden of proof. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986);
Kaiser-Francis Oil Co. v. Producer=s Gas Co., 870 F.2d 563, 565 (10th Cir. 1989). A factual
dispute is Agenuine@ and summary judgment is precluded if the evidence presented in support of
and opposition to the motion is so contradictory that, if presented at trial, a judgment could enter
for either party. See Anderson, 477 U.S. at 248. When considering a summary judgment
motion, a court views all evidence in the light most favorable to the non-moving party, thereby
favoring the right to a trial. See Garrett v. Hewlett Packard Co., 305 F.3d 1210, 1213 (10th Cir.
2002).
If the movant has the burden of proof on a claim or defense, the movant must establish
every element of its claim or defense by sufficient, competent evidence. See Fed. R. Civ. P.
56(c)(1)(A). Once the moving party has met its burden, to avoid summary judgment the
responding party must present sufficient, competent, contradictory evidence to establish a
genuine factual dispute. See Bacchus Indus., Inc. v. Arvin Indus., Inc., 939 F.2d 887, 891 (10th
Cir. 1991); Perry v. Woodward, 199 F.3d 1126, 1131 (10th Cir. 1999). If there is a genuine
dispute as to a material fact, a trial is required. If there is no genuine dispute as to any material
fact, no trial is required. The court then applies the law to the undisputed facts and enters
judgment.
When the non-movant fails to respond to a motion for summary judgment, that does not
mean that the movant necessarily prevails. Failure to respond certainly results in a determination
that no trial is needed because there are no disputed issues of fact, but whether the movant is

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entitled to judgment in its favor as a matter of law depends upon the evidence presented in
support of the motion.
B. Copyright claims
To establish a claim of direct copyright infringement, Mr. Grady must show: (i) that he
held a valid copyright in a particular work; (ii) that Mr. Lambert copied and distributed some
protectable constituent element(s) of that work. Stan Lee Media, Inc. v. Walt Disney Co.,
774F.3d 1292, 1299 (10th Cir. 2014).
Mr. Grady’s photographs are grouped into collections or folders, and Mr. Grady has
copyrighted those photos by folder name (e.g. Brianna Nicole TTB002, Brittany MarieTTB009).
Mr. Grady has tendered a chart that identifies the date on which Mr. Lambert posted photos to
xbbs.asia, the number of photos posted, the folder or collection name from which those photos
were derived, and the Copyright Certificate number for each such collection. Mr. Grady has also
provided the pertinent Copyright Certificates for each folder, each of which name him as the
registrant. Without contradictory evidence from Mr. Lambert, the Court finds that Mr. Grady
has established that he holds the copyrights in the photographs that are at issue. Pursuant to 17
U.S.C. § 106(5), ownership of the copyright in the photos entitled Mr. Grady to the exclusive
right to publicly display the photos.
Mr. Grady asserts in his affidavit and the accompanying table that Mr. Lambert posted
some 33,830 pictures and 45 videos belonging to Mr. Grady to the xbbs.asia site. Mr. Grady
requested that Mr. Lambert admit to having made such postings; Mr. Lambert’s non-response to
that request constitutes an admission by him to having done so. Similarly, Mr. Lambert did not
respond to Mr. Grady’s request that he admit that he published the photos without Mr. Grady’s
permission and that the publication of those photos to xbbs.asia allows others to view, download,

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Once again, Mr. Lambert’s failure to deny these requests constitute admissions as to their truth.
Thus, the Court finds that Mr. Grady has adequately established that Mr. Lambert directly
infringed Mr. Grady’s copyright in the images under 17 U.S.C. § 501, entitling Mr. Grady to a
remedy.
Mr. Grady also asserts separate claims for secondary liability against Mr. Lambert under
theories of vicarious and contributory infringement. Contributory infringement occurs when a
defendant “causes or materially contributes to another’s infringing activities,” knowing such
infringement to be occurring, such as when a defendant authorizes and encourages others to
engage in infringement. Diversey v. Schmidly, 738 F.3d 1196, 1204 (10th Cir. 2013); MetroGoldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 937 (2005). Vicarious liability
arises when a defendant profits from direct infringement committed by others while declining to
exercise a right or power to stop it; that is, when the defendant has both “the right and ability to
supervise the infringing activity” and “a direct financial interest in the activity.” Luvdarts, LLC v.
AT&T Mobility, LLC, 710 F.3d 1068, 1071 (9th Cir. 2013); Grokster, 545 U.S. at 930.
The Court need not reach Mr. Grady’s theories of secondary infringement for several
reasons. First, having already succeeded on his claim of direct infringement, Mr. Grady obtains
nothing more by way of remedy from proving in the alternative that Mr. Lambert could also be
liable for vicarious or contributory infringement. Second, the Court finds that the instant record
would not support a claim for any form of secondary infringement, as the record does not reflect
that any person other than Mr. Lambert infringed Mr. Grady’s copyrights. At best, Mr. Grady’s
affidavit mentions that Mr. Lambert “encouraged other users of [xbbs.asia] to upload other
images of [Mr. Grady’s] works so as to ‘complete the collection’,” but Mr. Grady does not
affirmatively assert the existence of any other person that actually did so. Third, even assuming

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that Mr. Grady could show that Mr. Lambert was successful in encouraging others to also
infringe Mr. Grady’s copyrights, a claim for vicarious liability would not lie because Mr. Grady
asserts no facts showing that Mr. Lambert had the ability to control any other person’s infringing
activities, nor that he had any direct financial interest in doing so. Accordingly, the Court denies
Mr. Grady’s request for summary judgment on his secondary copyright infringement claims.
That leaves the question of an appropriate remedy for Mr. Lambert’s direct infringement.
17 U.S.C. § 502 provides for a permanent injunction to be entered against an infringing
defendant, and Mr. Grady’s motion expressly requests such relief against Mr. Lambert. 15
U.S.C. § 503 provides for impounding infringing articles, a remedy that is impractical in the
circumstances presented here. 15 U.S.C. § 504 permits a copyright owner to obtain an award of
actual damages and profits or statutory damages against an infringer. Although Mr. Grady’s
Complaint requests statutory damages for each infringement, Mr. Grady’s motion does not
request (much less set forth a case justifying) such an award, or otherwise propose the issue of
damages be resolved at some future time. Given that Mr. Grady is represented by counsel and
given other evidence in the record, such as Mr. Lambert’s written “admission” that states that he
has no money or property, the Court does not assume that Mr. Grady’s failure to request a
damage award to be an oversight. Accordingly, the Court will grant Mr. Grady a permanent
injunction against Mr. Lambert infringing upon his copyrights in the future, but will not award
any other relief.
C. Trademark claim
To establish a claim for false designation of origin under the Lanham Act, Mr. Grady
must show: (i) that he has a protectable interest in the mark “TRUE TEEN BABES”; (ii) that
Mr. Lambert has used an identical or similar mark in commerce; and (iii) that Mr. Lambert’s use

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of the mark is likely to confuse consumers as to the source of Mr. Grady’s or Lambert’s goods or
services. 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1238 (10th Cir. 2013).
The Court will assume, for purposes of this analysis, that Mr. Grady has a protectable
interest in the mark and that Mr. Lambert’s republishing of the photos on xbbs.asia included Mr.
Grady’s mark on the photos. But Mr. Grady has not come forward with evidence that, when
reposting the photos, Mr. Lambert was engaging in “commerce”; that is, Mr. Grady has not
shown that Mr. Lambert was himself attempting to sell any goods or services himself. The
Lanham Act is designed to “protect the ability of consumers to distinguish among competing
producers” of goods and services, and “not to prevent all unauthorized uses” of a mark. Utah
Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d 1045,
1052-52 (10th Cir. 2008) (emphasis added). Here, there is nothing in the record that indicates
that Mr. Lambert was attempting to sell Mr. Grady’s work under his own name or was using Mr.
Grady’s work to promote some goods or services that Mr. Lambert was attempting to sell.
Rather, this appears to be a simple case in which a consumer of Mr. Grady’s goods improperly
shared those goods with other consumers, obtaining nothing more than thanks in return. This is
insufficient to support a trademark claim. Id. at 1054 (noting that “not [every] use of the Internet
is necessarily commercial for the purposes of the Lanham Act,” and proof that defendant made
online use of another’s mark, but “not in connection with any goods or services” was insufficient
to support a trademark claim). Accordingly, Mr. Grady’s request for summary judgment on his
trademark claim is denied.
CONCLUSION
For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART Mr.
Grady’s Motion for Summary Judgment (# 34). The Court grants summary judgment to Mr.

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Grady on his claim of direct copyright infringement against Mr. Lambert, but denies the motion
in all other respects. The Court permanently ENJOINS Mr. Lambert from infringing upon any
of Mr. Grady’s copyrights, including copying, republishing, or reposting Mr. Grady’s
copyrighted photographs, videos, or other materials, in any public or private forum or medium,
without first obtaining Mr. Grady’s permission. The Clerk of the Court shall enter judgment
consistent with this Order.
Dated this 29th day of September, 2015.
BY THE COURT:

Marcia S. Krieger
Chief United States District Judge

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