BELL v. MOLONEY

Filing 55

ORDER denying parties' cross 37 and 39 Motions for Summary Judgment and denying 48 Motion to Strike Maxine's Affidavit. Signed by Judge Richard L. Young on 7/18/2017. (TMD)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
RICHARD N. BELL,

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Plaintiff,
vs.
MICHAEL MALONEY,
Defendant.

1:16-cv-01193-RLY-DML

ENTRY ON CROSS MOTIONS FOR SUMMARY JUDGMENT
Plaintiff, Richard N. Bell, alleges that Defendant, Michael Maloney, committed
copyright infringement when he downloaded and published Bell’s photograph of the
Indianapolis skyline without authorization. Bell now moves for summary judgment on
the issue of infringement, and asks that damages be determined at trial. Maloney crossmoves for summary judgment on the issue of ownership. He argues that the photo is a
“work made for hire,” meaning that even though Bell personally took the photograph
with his own camera, he does not actually own the copyright. If true, Bell cannot sue for
infringement. However, Maloney essentially concedes that if Bell does own the
copyright, he infringed.
The court holds that there is a genuine dispute of material fact as to the ownership
of the copyright. Therefore, both motions must be DENIED.
I. Background
Bell, a licensed attorney, was a general partner at the law firm of Cohen & Malad
(“C&M”) from 1984 to 2009. (Filing No. 32-2, First Declaration of Richard Bell ¶¶ 2-3).
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On February 8, 2000, Bell signed a contract with West Publishing on behalf of C&M.
(Filing No. 40-1, Deposition of Richard Bell, Exhibit D). Pursuant to this contract, West
agreed to develop and host an official website for C&M. (Id.). The goal was to generate
business for the firm. (Bell Dep. 73:1-14). Bell is listed as the “Firm Contact” on the
agreement. (Exhibit D to Bell Dep.). Per the terms of the contract, a website
development meeting between West and Bell was scheduled for February 19, 2000, with
an alternate date of February 20. (Id.). Bell has no current recollection of this meeting.
(Bell Dep. 66:18-67:15). Nonetheless, an e-mail to Bell from a West representative dated
February 20 appears to reference Bell’s involvement in the call; the message provides,
“Great first call… lots of info sent in while we were on the phone together…” (Exhibit
E to Bell Dep.).
Bell exchanged numerous e-mails with West employees concerning the C&M
website. All such communications were sent to or from Bell’s office e-mail account
during normal business hours. (See id.). At some point during these discussions, Bell
believes that someone from West proposed using various photographs of Indianapolis on
the C&M website. 1 (Bell Dep. 99:12-15). This was intended to make the website more
attractive. (Id. 109:16-19). Bell rejected the idea of using generic stock photos because
his photos were better and free for C&M to use. (Id. 114:2-15). He had discussions with
West personnel about including his photographs on the website. (Id. 67:20-23). An e-

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In his reply brief, Bell asserts that this conversation took place in August 2000. No date is
mentioned in this part of the deposition though.

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mail dated Wednesday, March 8, 2000 states that Bell “is also sending additional images
for the homepage.” 2 (Exhibit E to Bell Dep.).
On the same day, March 8, at approximately 4:00 p.m., Bell took a photograph of
the downtown Indianapolis skyline from St. Clair Avenue at the canal bridge (the
“Indianapolis Photo”). (Filing No. 41-3, Bell’s Answers to Interrogatories at 3-4; Filing
No. 38-4, Second Declaration of Richard Bell ¶ 1). He used his own camera to take the
Indianapolis Photo; no equipment owned by C&M was used. (Second Bell Dec. ¶ 20).
He was not on property owned by C&M when he took the photo. (Id. ¶ 21).
Bell believes that the website was reviewed by C&M shareholders at firm
meetings before it was launched. (Bell’s Answers to Interrogatories at 5). The partners
specifically discussed using Bell’s photos on the website. (Bell Dep. 77:9-25). While
some partners disagreed with the idea, it was approved after taking a vote. (Id.). Bell
ultimately submitted the Indianapolis Photo to West on August 22, 2000. (Exhibit E to
Bell Dep.). The Indianapolis Photo was displayed on the C&M website, but the exact
dates of publication are somewhat unclear. According to C&M, the photo appeared on its
website from November 2001 to December 2001, and then January 1, 2002 to June 30,
2005. Yet, an e-mail sent from a West representative to Bell indicates that the photo was

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Bell testified, “The idea of adding photographs to the website was not even a subject that was
discussed at any time prior to approximately August of 2000.” (Bell Dep. 82:5-7). In his
briefing, he suggests that this “undisputed” testimony effectively dismantles Maloney’s work for
hire theory. But the March 8 e-mail plainly shows that Bell and West personnel were discussing
adding photos to the website long before August 2000.

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added to the C&M home page on or about August 24, 2000. (Exhibits E and G to Bell
Dep.).
Bell and C&M never executed anything in writing pertaining to ownership rights
of the Indianapolis Photo. (Bell Dep. 97:13-22; Second Bell Dec. ¶ 18). Bell claims that
he was not employed by C&M to take photographs, and that he was never compensated
by C&M for taking photographs. (Second Bell Dec. ¶ 16). C&M did not pay Bell for its
use of the Indianapolis Photo. (Id. ¶¶ 25, 28). C&M has never made any claim that any
of the photographs taken by Bell are owned by the law firm. (Id. ¶ 17).
Bell first published the Indianapolis Photo on August 29, 2000 on Webshots.
(Second Bell Dec. ¶ 4). In 2011, he published the picture on his website,
www.richbellphotos.com. (Id. ¶ 5). Through these websites, he has sold a digital
download version of the Indianapolis Photo for $200.00. (Id. ¶ 6). He currently sells the
photo on the latter page. (Id.; see Filing No. 38-2, Sales Records). Bell registered the
Indianapolis Photo with the U.S. Copyright Office on August 4, 2011. (Second Bell Dec.
¶ 7; Filing No. 38-3, Certificate of Registration).
In May 2015, Bell discovered, via Google Images, that Maloney had published the
Indianapolis Photo on his website in 2013. (Second Bell Dec. ¶¶ 8, 14). Specifically, the
Indianapolis Photo appeared at http://www.maloneyforensics.com/Indianapolis/March_46,_2014.html. (Id. ¶ 13). Maloney did not have permission to use the picture. (Id. ¶ 11).
II. Legal Standard
Summary judgment is appropriate when “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.
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56(a). When considering Bell’s motion, the court considers the facts in the light most
favorable to Maloney; when considering Maloney’s motion, the facts are considered in
the light most favorable to Bell. First State Bank v. Ohio Cas. Ins. Co., 555 F.3d 564,
567 (7th Cir. 2009).
III. Collateral Motions
Before addressing the merits of the parties’ summary judgment motions, the court
briefly examines two collateral motions. First, Bell moves to (a) strike the affidavit of
Maxine Maloney (the Defendant’s wife), and (b) bar her from testifying at trial. Bell
claims that Maxine was not disclosed as a witness on Maloney’s preliminary witness list.
Instead, she was first disclosed on April 14, when Maloney designated her affidavit in
support of his opening summary judgment brief. This is the date that discovery as to
damages closed.
Second, Maloney moves to strike Bell’s reply brief. His brief was due on May 12.
On May 11, one day before the deadline, Bell requested an additional thirty days to
obtain discovery and file his brief. The Magistrate Judge denied his motion on May 23.
Bell then filed his brief on May 26, two weeks after the deadline.
The court finds that while both parties erred here, the errors were harmless.
Neither party presents a convincing argument that he has been prejudiced. Accordingly,
both motions are denied.
IV. Discussion
A plaintiff bringing a claim for copyright infringement can only prevail if he
establishes two elements: “(1) ownership of a valid copyright, and (2) copying of
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constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 361 (1991). In this case, only the first element is disputed. See
Urbont v. Sony Music Entm’t, 831 F.3d 80, 87 n.6 (2d Cir. 2016) (“[P]laintiffs must
prove ownership not only as an element of a copyright infringement claim, but also to
assert their standing to bring suit.”). Copyright ownership “vests initially in the author or
authors of the work.” 17 U.S.C. § 201(a). “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) (citing 17 U.S.C. § 102(a)). Bell created the work at issue
because he personally took the Indianapolis Photo, but that is not the end of the inquiry.
Maloney invokes an exception to this general rule known as the “work made for
hire” doctrine. If this exception applies, “the employer or other person for whom the
work was prepared is considered the author” and owns the copyright, unless there is a
written agreement to the contrary. 17 U.S.C. § 201(b). A work is properly classified as
one made for hire under two circumstances, only one of which is relevant here. If the
work was “prepared by an employee within the scope of his or her employment,” it is a
work for hire. 17 U.S.C. § 101. Such a finding would be fatal to Bell’s case–it would
mean that C&M owns the copyright, and Bell has no standing to sue anyone for
infringement.
Bell concedes that he was an employee of C&M during the relevant period.
Therefore, the dispositive question is whether he was acting within the scope of his
employment when he took the Indianapolis Photo. Courts faced with this question
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generally apply the three-prong test in Restatement (Second) of Agency § 228 (1958).
U.S. Auto Parts Network, Inc. v. Parts Geek, Ltd. Liab. Co., 692 F.3d 1009, 1015 (9th
Cir. 2012) (citing Shaul v. Cherry Valley-Springfield Cent. Sch. Dist., 363 F.3d 177, 186
(2d Cir. 2004); Avtec Sys. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994)). The Restatement
(Second) provides,
(1) Conduct of a servant is within the scope of employment if, but only if:
(a) it is of the kind he is employed to perform;
(b) it occurs substantially within the authorized time and space limits;
[and]
(c) it is actuated, at least in part, by a purpose to serve the master . . .
(2) Conduct of a servant is not within the scope of employment if it is
different in kind from that authorized, far beyond the authorized time or
space limits, or too little actuated by a purpose to serve the master. 3
The court considers each element in turn.
First, Bell argues that taking photos is not the conduct he was employed to
perform. He was hired by C&M to work as an attorney, not a photographer. Bell asserts
that he was not required to take photos as part of his employment, C&M did not provide
him with a camera, and C&M never compensated him for taking photos.

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The American Law Institute has published a more recent Restatement of Agency. The
Restatement (Third) of Agency provides, “An employee acts within the scope of employment
when performing work assigned by the employer or engaging in a course of conduct subject to
the employer’s control. An employee’s act is not within the scope of employment when it occurs
within an independent course of conduct not intended by the employee to serve any purpose of
the employer.” Restatement (Third) of Agency § 7.07(2) (2006). See Mohr v. Sci. & Eng’g
Servs., 204 F. Supp. 3d 1281, 1294 (N.D. Ala. 2016). However, it appears that no court has
adopted the Restatement (Third) in this context. No party raises this test, so the court discusses it
no further.

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Maloney posits that while Bell was not hired by C&M as a photographer per se,
his act of taking the Indianapolis Photo was incidental and ancillary to his role as a
partner in the firm. Bell was not a young associate that was employed solely to conduct
legal research, draft briefs, and respond to discovery requests. Rather, as a partner, Bell
was responsible for both representing clients and creating business for the firm. In an
effort to generate business and attract prospective clients, he was tasked with serving as
the Firm Contact with West, the company developing the C&M website. He
corresponded with several West employees about the website via his office account
during normal business hours. They discussed including photographs of Indianapolis on
the website in general, as well as using Bell’s photos specifically. Based on these facts,
reasonable jurors could disagree as to whether taking the Indianapolis Photo was the type
of conduct Bell was employed to perform.
For the second factor, Bell emphasizes that he was not on C&M property when he
took the photo. Maloney retorts that this would have been impossible–i.e., one cannot
capture a panoramic skyline photo like the one in question from C&M’s business address.
As a result, this fact should purportedly be given little weight. Maloney also highlights
that Bell took the photo during normal work hours (at 4:00 p.m.) on a normal work day (a
Wednesday). Moreover, he notes that lawyers often perform much of their work outside
of their physical office. Reasonable jurors could come to different conclusions as to
whether Maloney’s conduct occurred substantially within authorized time and space
limits.

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Lastly, the court must consider whether Bell took the Indianapolis photo out of a
motivation to serve C&M. This element centers on Bell’s intent, so his own testimony on
the subject is an important consideration. For example, if he said that he took the photo
for his own personal collection with (at least initially) no thought of submitting it to West
for the C&M website, that would support his claim that he was not acting within the
scope of his employment. Strangely though, Bell fails to point to any testimony like this
in his deposition or declarations. While the court has no duty to search the record, see
S.D. Ind. L.R. 56-1(h), it found no such testimony upon conducting its own review of the
evidence. The closest Bell gets is a general statement that “photography has been his
passionate hobby” since 1971. (Second Bell Dec. ¶ 15).
Putting that oddity aside, constructing a timeline is helpful for this factor. The
relevant events are recounted below:
Date
February 8, 2000
February 20, 2000
March 8, 2000
March 8, 2000
Unclear
August 22, 2000

Event
Bell signs a website development contract with
West on behalf of C&M
Bell participates in a conference call with West
personnel to discuss the website
Bell discusses sending additional images to be
used on the C&M website
Bell takes the Indianapolis Photo
The partners at C&M vote in favor of using the
Indianapolis Photo on the website
Bell submits the Indianapolis Photo to West

This chain of events suggests that Bell’s decision to take the photo naturally followed
from the discussions he had with West personnel relating to development of the C&M
website. This inference is also supported by the fact that Bell allowed C&M to use the
photo for free. But if serving C&M was Bell’s purpose, it is unclear why he delayed
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submitting the photo to West for five months. One might conclude that it simply took
time for the C&M partners to approve the photo, but there is scant evidence in the record
on that topic. A reasonable jury considering this evidence could find that Bell’s taking of
the photo was actuated, at least in part, by a purpose to serve C&M.
Overall, the facts of this case give rise to competing inferences. Accordingly, the
court cannot decide, as a matter of law, whether Bell was acting within the scope of his
employment when he took the Indianapolis Photo. See Miller v. Gonzalez, 761 F.3d 822,
827 (7th Cir. 2014) (“[A court’s] job when assessing a summary judgment motion is not
to weigh evidence, make credibility determinations, resolve factual disputes and swearing
contests, or decide which inferences to draw from the facts.”). This means that the court
cannot conclude whether Bell owns the copyright, which is required to establish
infringement. See Feist, 499 U.S. at 361; Urbont, 831 F.3d at 87. These issues must be
resolved at trial.

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V. Conclusion
The court finds that there is a genuine dispute of material fact as to whether Bell
owns the copyright to the Indianapolis Photo. Therefore, the parties’ cross motions for
summary judgment (Filing Nos. 37 and 39) are both DENIED. Bell’s Motion to Strike
Maxine’s Affidavit (Filing No. 48) is also DENIED.

SO ORDERED this 18th day of July 2017.

Distributed Electronically to Registered Counsel of Record.

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