McNeese Photography LLC et al v. Access Midstream Partners LO et al

Filing 145

ORDER granting in part and denying in part 71 Motion for Summary Judgment. Signed by Honorable Timothy D. DeGiusti on 3/10/2017. (mb)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF OKLAHOMA
DAVID MCNEESE,
Plaintiff,
v.
ACCESS MIDSTREAM
PARTNERS, L.P.,
Defendant.

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Case No. CIV-14-503-D

ORDER
Plaintiff David McNeese (McNeese) brings this action against Defendant
Access Midstream Partners, L.P. (Access) for copyright infringement and fraud.
Before the Court is Access’s Motion for Summary Judgment (“Mot.”) [Doc. No.
71], to which McNeese has filed his response in opposition (“Resp.”) [Doc. No.
91]. A hearing was held on January 9, 2017 and the parties submitted supplemental
briefs [Doc. Nos. 142, 143] in response to certain questions from the Court. The
matter is fully briefed and at issue.
The material facts set forth infra are undisputed and, along with all
reasonable inferences, are viewed in the light most favorable to McNeese. Jones v.
Norton, 809 F.3d 564, 573 (10th Cir. 2015). To determine which facts are not in
genuine dispute, the Court disregarded any unsupported allegations, legal
conclusions, or legal arguments couched as facts which appeared in either party’s

statement of material facts or response thereto. See 1st Source Bank v. Village of
Stevensville, 947 F.Supp.2d 934, 937 (N.D. Ind. 2013) (“The purpose of [Rule 56]
statements is to identify the relevant evidence supporting the material facts, not to
make factual or legal arguments. ... In reviewing a party’s statement of material
facts, a court must ‘eliminate from consideration any argument, conclusions, and
assertions that are unsupported by the documented evidence of record offered in
support of the statement.’”) (citations omitted); Chavez v. County of Bernalillo, 3
F.Supp.3d 936, 949 n. 4 (D.N.M. 2014) (same).
Access contends certain facts are undisputed because McNeese was one day
late in responding to its First Requests for Admissions and, according to Access,
such requests are deemed admitted. Mot. at 2, n. 2. It is true that under Rule 36,
when a party fails to make a timely response to a request for admission, the truth of
the matter contained in the request is generally deemed “admitted” and
“conclusively established.” Fed. R. Civ. P. 36(a)(3), (b).1 However, the purpose of
Rule 36 is to expedite trial by eliminating the necessity of proving undisputed and

1

The requests at issue asked McNeese to admit (1) that certain images were not,
contrary to his copyright application, first published as a unit on May 11, 2011 and
(2) were not all published within the same calendar year. Mot. at 2-3. Requests for
admission which ask a party to admit or deny a matter of law are generally
impermissible; however, “[t]hat [a request for admission] has a legal component
does not render the [request] impermissible if it seeks an answer based on the
application of the law to the facts.” S.E.C. v. Goldstone, 300 F.R.D. 505, 528
(D.N.M. 2014) (citation omitted); 7 Moore’s Federal Practice § 36.10[8] at 36-25
(3d ed. 2016).
2

peripheral issues, Keen v. Detroit Diesel Allison, 569 F.2d 547, 554 (10th Cir.
1978), and courts should not employ the rule “to establish facts which are
obviously in dispute or to answer questions of law.” Lakehead Pipe Line Co. v.
Am. Home Assur. Co., 177 F.R.D. 454, 458 (D. Minn. 1997) (citations omitted);
Champlin v. Okla. Furniture Mfg. Co., 324 F.2d 74, 76 (10th Cir. 1963) (responses
to requests for admission may be established “as undisputed material facts in the
case, provided, the parties are in agreement about such facts.”). Thus, courts should
admit untimely answers to requests for admission where it would aid in
determining the material facts and not unfairly prejudice the opposing party. U.S.
Bank Nat’l Ass’n v. Gunn, 23 F.Supp.3d 426, 433 (D. Del. 2014); 8B Wright,
Miller & Marcus, Federal Practice and Procedure § 2257 at 345 (3d ed. 2010).2
Accordingly, the Court exercises its discretion and considers McNeese’s
responses in determining the merits of Access’ motion. Access has not been
substantially prejudiced, since the delay – one day – was not excessive, and Access
makes no argument to the contrary. Moreover, the Court finds that consideration of
McNeese’s responses would aid in determining the material facts at issue.

2

As a result of this discretion, “the failure to respond in a timely fashion does not
require the court automatically to deem all matters admitted.” United States v.
Petroff-Kline, 557 F.3d 285, 293 (6th Cir. 2009) (citation omitted). A party seeking
to amend or withdraw its responses to a request for admission may do so even
without a formal motion. “[A] withdrawal ‘may be imputed from a party’s
actions,’ including the filing of a belated denial.” Id. (citations omitted).
3

FACTUAL BACKGROUND
McNeese owns and operates McNeese Photography, a company specializing
in photography and videography. Access is a natural gas services provider. In
2011, McNeese took 285 photographs of Chesapeake Energy Corporation’s
property,

equipment,

and

employees,

which

he

collectively

entitled

“contactsheet.pdf” (hereinafter “Group 1”). The photographs contained in Group 1
were taken at different angles, degrees, depths, and in various shades of lighting.
McNeese filed an application with the United States Copyright Office to register
Group 1 for copyright protection, and on June 12, 2011, the United States
Copyright Office issued a Certificate of Registration with registration number VA
1-777-187. According to the copyright certificate, the images contained in Group 1
were first published on May 11, 2011.3

3

Pursuant to regulations passed by the Copyright Office, each photograph, whether
registered separately or combined into one registration, has an independent
copyright life. See 37 C.F.R. § 202.3(b)(10); Metro. Reg’l Info. Sys., Inc. v. Am.
Home Realty Network, Inc., 722 F.3d 591, 598 (4th Cir. 2013) (“collective work
registrations [are] sufficient to permit an infringement action on behalf of
component works, at least so long as the registrant owns the rights to the
component works as well.”); Alaska Stock, LLC v. Houghton Mifflin Harcourt
Publishing Co., 747 F.3d 673, 685 (9th Cir. 2014) (same); see also Szabo v.
Errisson, 68 F.3d 940, 943 (5th Cir. 1995) (“[W]hen one copyrights a collection,
the copyright extends to each individual work in the collection even though the
names of each work are not expressly listed in the copyright registration.”),
abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154
(2010).
4

From 2011 to 2013, McNeese granted Chesapeake a non-transferable limited
license for certain photographs he took. McNeese, however, retained all copyright
and ownership rights in the images. In December 2012, Chesapeake sold a
subsidiary, Chesapeake Midstream Development, LLC, to Access. In connection
with the sale, Chesapeake copied and transferred many of McNeese’s photographs
to Access. In 2013, McNeese took an additional 48 photos of Access’s property,
equipment, and employees which he entitled “012214_48 photos” (hereinafter
“Group 2”). Like Group 1, the photographs in Group 2 were taken at different
angles, degrees, depths, and various shades of lighting. McNeese filed an
application with the United States Copyright Office to register Group 2 for
copyright protection, and on January 22, 2014, the Copyright Office issued a
Certificate of Registration for the photographs with the registration number VAu 1157-473.4 Three photographs in Group 1, entitled “midstream_045.jpg,”
“midstream_068.jpg,” and “midstream_110.jpg,” were inadvertently included in
Group 2.

4

“The ‘u’ represents that the works are unpublished.” Family Dollar Stores, Inc. v.
United Fabrics Intern., Inc., 896 F.Supp.2d 223, 225 (S.D.N.Y. 2012) (citing
Determined Prods., Inc. v. Koster, No. 92-1697, 1993 WL 120463, at *1 (N.D.
Cal. Apr. 13, 1993)); see also Olem Shoe Corp. v. Washington Shoe Co., No. 0923494, 2011 WL 6202282, at *7 (S.D. Fla. Dec. 1, 2011) (noting that VAu
designation “signifies an unpublished work which implies that the application
failed to disclose that the work was previously published.”).
5

Unknown to McNeese, Access used a number of photographs from Group 1
and Group 2 in its business materials, including a recruiting brochure, trade booth
graphic, email invitation, computer wallpaper, investor relations folder, and Access
webpages. McNeese sued Access and Chesapeake5 for copyright infringement,
aiding and abetting copyright infringement, and fraud, alleging, inter alia, that
Access wrongfully reproduced the photographs without his permission and
concealed the extent of its use of the photographs.
Access moved for summary judgment on each of McNeese’s claims. It
contended that (1) McNeese’s copyright registrations were invalid; (2) McNeese
did not own valid copyrights in the photographs, (3) McNeese could not establish
the requisite “substantial similarity” necessary to establish his copyright
infringement claim, (4) McNeese’s derivative claims for infringement failed as a
matter of law, and (5) McNeese’s fraud claim lacked evidentiary support.
Subsequent to Access’ motion, McNeese submitted new registration
applications for the photographs contained in Group 2 and obtained nine (9) new
copyright registrations [Doc. No. 140-1]. These new registrations were in part the
subject of a January 9, 2017 hearing in which the Court heard argument from
counsel regarding (1) what images were included in McNeese’s new registration
applications; (2) what responsive action was taken on said applications; and (3)

5

McNeese subsequently dismissed his claims against Chesapeake [Doc. No. 49].
6

whether the Court should utilize the certification procedure set forth in 17 U.S.C. §
411(b) in response to Access’ allegations that McNeese’s copyright registration for
Group 2 was invalid due to its inclusion of previously published photos. After
reviewing the parties’ principal and supplemental briefs, the Court rules as follows.
STANDARD OF DECISION
Summary judgment is proper “if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Universal Underwriters Ins. Co. v. Winton, 818 F.3d 1103, 1105 (10th Cir.
2016) (quoting Fed. R. Civ. P. 56(a)). The movant may make such a showing
through the pleadings, depositions, other discovery materials, and affidavits. Water
Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136, 1142 (10th Cir. 2013). At the
summary judgment stage, the Court views all of the facts in the light most
favorable to the non-movant and draws all reasonable inferences from the record in
favor of the non-moving party. Schaffer v. Salt Lake city Corp., 814 F.3d 1151,
1155 (10th Cir. 2016).
Although the nonmoving party is entitled to all reasonable inferences from
the record, the nonmovant must still identify sufficient evidence requiring
submission to the jury in order to survive summary judgment. Piercy v. Maketa,
480 F.3d 1192, 1197 (10th Cir. 2007). Thus, if the nonmovant bears the burden of
persuasion on a claim at trial, summary judgment may be warranted if the movant
7

points out a lack of evidence to support an essential element of that claim and the
nonmovant cannot identify specific facts that would create a genuine issue. Water
Pik, 726 F.3d at 1143-44. “An issue is ‘genuine’ if there is sufficient evidence on
each side so that a rational trier of fact could resolve the issue either way,” and
“[a]n issue of 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).
DISCUSSION
Copyright protection extends to original works of authorship fixed in any
tangible medium of expression. 17 U.S.C. § 102(a); Blehm v. Jacobs, 702 F.3d
1193, 1200 (10th Cir. 2012) (noting that § 102 enshrines the “fundamental tenet”
that copyright “protection extends only to the author’s original expression and not
to the ideas embodied in that expression.”) (quoting Gates Rubber Co. v. Bando
Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993)). In order to establish a prima
facie case of copyright infringement, a plaintiff must prove two elements: (1)
ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original. Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1138 (10th

8

Cir. 2016).6 The plaintiff bears the burden of proof as to both elements. La
Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171, 1171 (10th Cir. 2009).
With respect to the first element, “[a] plaintiff’s presentation of a certificate
of registration from the U.S. Copyright Office usually constitutes prima facie
evidence of a valid copyright and of the facts stated in the certificate.” Palladium
Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1196 (10th Cir. 2005) (citing 17
U.S.C. § 410(c)). “Upon presentation of such a certificate, the defendant bears the
burden to overcome the presumption of validity. ... To rebut the presumption,
however, a defendant sued for infringement ‘must simply offer some evidence or
proof to dispute or deny the plaintiff’s prima facie case of infringement.’” Id.
(citations omitted).
In rebutting the presumption of validity, a defendant may “contend that a
copyright registration is invalid because of noncompliance with formal registration
requirements or rules, such as the withholding or misstatement of information in
connection with the registration application.” Lumos, Inc. v. LifeStrength, LLC, No.
2:12-cv-1196, 2014 WL 4355451, at *2 (D. Utah Sept. 3, 2014) (quoting L.A.

6

“One can own a copyright without registering. When a photographer has fixed an
image in a tangible medium of expression, he owns the copyright, even though he
has not registered it with the Copyright Office. Registration is permissive, not
mandatory, and may be made long after the work comes into existence.” Alaska
Stock, LLC v. Houghton Mifflin Harcourt Publishing Co., 747 F.3d 673, 685 (9th
Cir. 2014) (citing 17 U.S.C. §§ 102(a), 408(a)).
9

Printex Indus., Inc. v. Le Chateau, Inc., No. 11 Civ. 4248(LTS), 2012 WL 987590,
*4 (S.D.N.Y. Mar. 23, 2012)).
The second element consists of multiple inquiries:
First [the Court] must determine whether, as a factual matter, the
defendant copied plaintiff’s work. ... Second, as a mixed question of
law and fact, [the Court] must evaluate whether the elements copied
by the defendant are protected by copyright. ... In essence, this second
consideration asks whether defendant took “too much” of plaintiff’s
work; it asks what the level of “sameness” is between the two works.
Paycom Payroll, LLC v. Richison, 758 F.3d 1198, 1204 (10th Cir. 2014) (citations
and internal quotations omitted). The Court may address either step first. Gates
Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 833 (10th Cir. 1993).
I.

GROUP 17
As stated, a copyright holder may only sue for infringement of that copyright

if it possesses a valid copyright registration. See 17 U.S.C. § 411(a) (“[N]o civil
action for infringement of the copyright in any United States work shall be
instituted until preregistration or registration of the copyright claim has been made
in accordance with this title.”); Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157
(2010). The Copyright Act permits the registration of multiple works as a single
work. 17 U.S.C. § 408(c)(1). Copyright regulations divide these “single work
registrations” into published and unpublished collections. See 37 C.F.R. §

7

The Court addresses the validity of the subject copyrights in the order of their
respective registration.
10

202.3(b)(4)(i). In order to qualify as a “single work” registration, the Register of
Copyrights states that:
(i)

For the purpose of registration on a single application and upon
payment of a single registration fee, the following shall be
considered a single work:
(A)

In the case of published works: All copyrightable
elements that are otherwise recognizable as selfcontained works, that are included in a single unit of
publication, and in which the copyright claimant is the
same.

37 C.F.R. § 202.3(b)(4)(i)(A). Registration as a “published” collection requires that
all of the constituent elements of the collection have been published together as a
collection. United Fabrics Int’l, Inc. v. C & J Wear, Inc., 630 F.3d 1255, 1259 (9th
Cir. 2011) (“A necessary element of a published-collection copyright is that the
collection is sold, distributed or offered for sale concurrently.”) (citing 37 C.F.R. §
202.3(b)(4); 17 U.S.C. § 101). For unpublished works, “there is no such
requirement.” Id. (citing 37 C.F.R. § 202.3(b)(4)(i)(B)).
Access disputes the validity of McNeese’s copyright as to Group 1 on the
ground that the photographs were not published together as a single unit as is
required for a single work registration of a published collection. Access’ motion,
however, rests this argument mainly on its contention that McNeese’s belated
responses to its Requests for Admission are deemed confessed. As stated above,
however, the Court declines to deem such requests confessed and has considered
11

those responses in evaluating Access’ motion. Both McNeese’s answers and his
affidavit in support of his response to Access’ motion deny that the images
contained in Group 1 were not all published in the same calendar year. As reflected
in the registration, McNeese asserts that the first time he transferred the images to
anyone was when he delivered them to Chesapeake in May 2011. Viewing the
evidence in the light most favorable to McNeese, including all reasonable
inferences, the record supports the finding or inference that the images contained in
Group 1 were first published as a single group on May 11, 2011. Access’ motion
on this issue is denied.8
II.

GROUP 2
Access also argues that McNeese’s certificate of registration as to Group 2 is

invalid because it contains published works that were originally contained in
Group 1. McNeese admits this was done, albeit erroneously.
It is true that “a published design included in an unpublished collection
copyright registration application cannot be registered as part of the collection.”
Family Dollar Stores, Inc. v. United Fabrics Intern., Inc., 896 F.Supp.2d 223, 230
(S.D.N.Y. 2012). “Where the applicant seeks registration as an unpublished work

8

Access also contends the certificate of registration as to Group 1 is invalid
because photos from Group 1 were included in Group 2. Mot. at 12. Although such
an erroneous inclusion may affect the validity of Group 2’s registration, as
discussed herein, Access has not presented any persuasive argument or authority
establishing how this fact invalidates Group 1’s registration.
12

and provides the Office with a statement of facts which clearly show that
publication has occurred, the Office will not register a claim to copyright in the
work as unpublished.” Family Dollar, 896 F.Supp.2d at 230 (quoting United States
Copyright Office, Compendium of Office Practices II § 904(5)). Indeed, wrongly
identifying a number of published individual works as an unpublished collection
has been deemed “a fundamental registration error.” Id. (quoting Determined
Prods., Inc. v. Koster, No. 92-1697, 1993 WL 120463, at *1 (N.D. Cal. Apr. 13,
1993) (emphasis added)); see also Palmer/Kane LLC v. Rosen Book Works LLC,
15-CV-7406, 2016 WL 3042895, at *4 (S.D.N.Y. May 27, 2016).
However, McNeese’s error in itself does not invalidate the registration or
render the certificate of registration incapable of supporting an infringement action.
Inaccuracies in a certificate of registration ordinarily do not affect its validity
unless (1) the inaccurate information was included on the application for copyright
registration with knowledge that it was inaccurate; and (2) the inaccuracy of the
information, if known, would have caused the Register of Copyrights to refuse
registration. See 17 U.S.C. § 411(b); L.A. Printex Indus., Inc. v. Aeropostale, Inc.,
676 F.3d 841, 852–53 (9th Cir. 2012). An owner of a copyright may file an
application for supplemental registration “to correct an error in a copyright
registration or to amplify the information given in a registration.” 17 U.S.C. §

13

408(d). “The information contained in a supplementary registration augments but
does not supersede that contained in the earlier registration.” Id.
It is undisputed that the Group 2 compilation contains published works that
were originally contained in Group 1. Viewed in the light most favorable to
McNeese, however, the record does not demonstrate that McNeese knowingly
included the photographs such that the error was anything other than an inadvertent
mistake, or that McNeese intended to defraud the Copyright Office.9 McNeese
argues that the nine new registrations render Access’ argument moot, thereby
necessitating denial of its motion. According to McNeese, the fact that the Register
of Copyrights issued new registrations evidences that the mistake, if known, would
not have caused the Register to refuse registration. However, McNeese did not
submit supplemental registrations as represented in his response brief. Upon
learning of the error, McNeese submitted new applications and obtained new
copyright registrations for the photographs in question. As a consequence,
McNeese has not refuted Access’ assertion that the error, if known, would have
resulted in a denial. Accordingly, the Court finds Access should be granted
summary judgment on this issue.
9

Because the Court has found that McNeese did not knowingly include false or
inaccurate information in the application, the Court need not seek advice from the
Register of Copyrights pursuant to 17 U.S.C. § 411(b)(2). For such procedure to be
applicable, the inaccurate information must first be found to have been included
“with knowledge that it was inaccurate.” See 17 U.S.C. § 411(b)(1)(A). This is not
the case here.
14

Moreover, in order to maintain a copyright infringement action, a plaintiff
must possess a valid certificate of registration at the time of suit. 17 U.S.C. §
411(a). In this regard, McNeese may not pursue an infringement claim regarding
photographs for which he did not possess a valid registration. To the extent
McNeese intends to assert the new registrations as the basis for his infringement
claim, such action is inappropriate.
III.

OWNERSHIP OF VALID COPYRIGHTS10
Access next contends McNeese does not own valid copyrights in the

photographs because they lack the requisite originality. Specifically, Access
contends the photographs, which mainly consist of shots of pipeline equipment
taken at various angles, are “purely descriptive” and “not sufficiently original to be
protected by copyright law.” Mot. at 15-16. Indeed, in Feist Publications, Inc. v.
Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), cited by Access, the
Supreme Court acknowledged it is “universally understood” that “there can be no
valid copyright in facts” and explained that “[n]o one may claim originality as to
facts ... because facts do not owe their origin to an act of authorship.” Id. at 344
(internal quotations and citation omitted).
Originality, in copyright parlance, means only that the work was
independently created by the author (as opposed to copied from other works), and
10

In light of the Court’s finding, the remaining discussion applies only to the
photographs comprising Group 1.
15

possesses at least some minimal degree of creativity. Savant Homes, 809 F.3d at
1139 (citing Feist, 499 U.S. at 345). “The required 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. With this minimal creative burden in mind, the Court
finds there is a genuine dispute of fact over the originality of the photographs at
issue.
It is true that purely descriptive photographs are deemed not sufficiently
original to be protected by copyright law, in that there is no “creative spark” in a
purely descriptive picture of a product or service. See Inspired By Design, LLC v.
Sammy’s Sew Shop, LLC, No. 16-CV-2290, 2016 WL 6093778, at *9 (D. Kan.
Oct. 19, 2016) (citations omitted). However, it is also true that “courts have
recognized repeatedly that the creative decisions involved in producing a
photograph may render it sufficiently original to be copyrightable and ‘have
carefully delineated selection of subject, posture, background, lighting, and
perhaps even perspective alone as protectable elements of a photographer’s
work.’” Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1077 (9th Cir. 2000)
(quoting Los Angeles News Serv. v. Tullo, 973 F.2d 791, 794 (9th Cir. 1992));
LaChapelle v. Fenty, 812 F.Supp.2d 434, 440 (S.D.N.Y. 2011) (“A photograph
may be original in the rendition of a subject. Rendition concerns not ‘what is
16

depicted, but rather how it is depicted.’ Originality in rendition may reside in the
photographer’s selection of lighting, shade, lens, angle, depth of field,
composition, and other choices, such as manipulation of color balance, saturation,
or contrast, that have an aesthetic effect on the final work.”) (citing Rogers v.
Koons, 960 F.2d 301, 307 (2d Cir. 1992) (further citations omitted)); Bryant v.
Gordon, 483 F.Supp.2d 605, 614 (N.D. Ill. 2007) (“Photographs may be protected
under copyright law based on the expression of the artist’s originality, such as his
choice of composition, lighting, shading, camera angle, background, perspective,
selection of film and camera, and the expression elicited from the subjects.”)
(citations omitted); see also 1 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright § 2A.08[E][3][a][i] at 2A-100 to 101 (2016).
In light of the low threshold for the creativity element, and given that the
types of decisions McNeese made about lighting, shading, angle, background, and
arrangement of the photographs at issue have been recognized as sufficient to
convey copyright protection, the Court concludes Access has not met its burden of
showing the invalidity of McNeese’s copyright in the photographs, and a genuine
issue of material fact exists as to whether the photos are sufficiently creative, and
thus sufficiently original, to merit copyright protection.

17

IV.

SUBSTANTIAL SIMILARITY
The second element of a copyright infringement claim requires a finding that

Access copied constituent elements of the subject work(s) that are original. Savant
Homes, 809 F.3d at 1138. In this regard, “[a] finding that [Access] copied some
aspect of [McNeese’s photographs], however, would not end the court’s inquiry, as
liability for copyright infringement will attach only where protected elements of a
copyrighted work are copied.” Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d
1280, 1284 (10th Cir. 1996) (citing Gates Rubber, 9 F.3d at 833). Thus, the
question of whether Access infringed on McNeese’s copyright turns on whether
Access’s publications are substantially similar to the protectable elements of
McNeese’s photographs. Id. at 1284. Access contends it is entitled to summary
judgment on this issue because under the “abstraction-filtration-comparison” test11
and scenes à faire doctrine,12 McNeese cannot establish “substantial similarity”

11

The Tenth Circuit describes the “abstraction-filtration-comparison” test thusly:
At the abstraction step, we separate the ideas (and basic utilitarian
functions), which are not protectable, from the particular expression
of the work. Then, we filter out the nonprotectable components of the
product from the original expression. Finally, we compare the
remaining protected elements to the allegedly copied work to
determine if the two works are substantially similar.

Country Kids ‘N City Slicks, 77 F.3d at 1285.
12

Under the scenes à faire doctrine, expressive elements of a work of authorship
are not entitled to protection against infringement if they are standard, stock, or
18

between the photo groups “as a whole” and Access’s publications “as a whole,”
and McNeese has failed to allege Access copied a substantial portion of his work.
Mot. at 22, 29.
However, as the Tenth Circuit noted in Mitel, the abstraction-filtrationcomparison test is either unnecessary or simply inapplicable in cases where literal
copying is admitted. Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1373 (10th Cir. 1997);
see also TD Bank, N.A. v. Hill, No. 12-7188, 2015 WL 4523570, at *17 (D.N.J.
July 27, 2015) (holding scenes à faire defense was inapplicable due to defendant’s
significant verbatim copying). In such cases, a court “may proceed directly to the
protectability analysis that is normally subsumed in the filtration portion of the
abstraction-filtration-comparison approach.” Mitel, 124 F.3d at 1373.
Indeed, under the circumstances of this case, the Court finds both doctrines
are inapplicable. The Court observed earlier that each individual photograph has its
own individual copyright life, and Access has admitted to using multiple
photographs from McNeese’s registration. See Mot. at 29. It would be fruitless to
endeavor in such a structured analysis where Access has admitted to using
identical copies of many photographs contained in McNeese’s registered

common to a topic, or if they necessarily follow from a common theme or setting.
Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1374 (10th Cir. 1997) (citing Gates
Rubber, 9 F.3d at 838) (further citations omitted)); see, e.g., Reece v. Island
Treasures Art Gallery, Inc., 468 F.Supp.2d 1197, 1208 (D. Haw. 2006) (applying
the doctrine to photographs).
19

copyright. The Court has found genuine issues of material fact exist as to whether
such photographs contain the requisite originality and creativity entitling them to
protection. Accordingly, Access’s motion on this issue is denied.
V.

CONTRIBUTORY/VICARIOUS COPYRIGHT INFRINGEMENT
Access next contends that because Plaintiff’s copyright infringement claims

fail, it is entitled to summary judgment on his claim for contributory and/or
vicarious infringement. Mot. at 30. Because the Court has found summary
judgment is precluded on the issue of actual copyright infringement, the Court
denies Access’s motion on this claim as well.
VI.

FRAUD
McNeese’s fraud claim alleges Access has concealed the extent of its use of

his photographs in its business materials. Compl., ¶ 52 [Doc. No. 1]. Access
contends McNeese’s fraud claims lack evidentiary support because there is no
evidence to suggest McNeese acted to his detriment or suffered any injury as a
result of such alleged misrepresentations. “Fraud is a generic term embracing the
multifarious means which human ingenuity can devise so one can get advantage
over another by false suggestion or suppression of the truth.” Dani v. Miller, 2016
OK 35, ¶ 25, 374 P.3d 779, 791 (citations omitted).13 The elements of actionable

13

The parties do not dispute that Oklahoma law applies to McNeese’s fraud
claims. See Moore v. Subaru of Am., 891 F.2d 1445, 1448 (10th Cir. 1989) (“[T]he
Oklahoma choice of law rule [with respect to tort claims] requires application of
20

fraud are (1) a false representation, (2) made as a positive assertion which is either
known to be false or is made recklessly without knowledge of the truth, (3) with
the intention that it should be acted upon, and (4) which is relied upon by the other
party to his detriment. Bowman v. Presley, 2009 OK 48, ¶ 13, 212 P.3d 1210,
1218. All elements of fraud must be present; absence of any one is fatal to the
plaintiff’s claim. McCain v. Combined Commc’n Corp. of Okla., Inc., 1998 OK 94,
¶ 11, 975 P.2d 865, 867.
“Fraud is never presumed and each of its elements must be proved by clear
and convincing evidence.” Bowman, 212 P.3d at 1218 (citations omitted); Combs
v. Shelter Mut. Ins. Co., 551 F.3d 991, 999 (10th Cir. 2008). The “clear and
convincing” standard is “the highest standard of proof that the law imposes in civil
cases.” Kupersteinn v. Hoffman-Laroche, 457 F. Supp. 2d 467, 471 (S.D.N.Y.
2006). “Also, the reliance referred to must be justifiable.” State ex rel. S.W. Bell
Tel. Co. v. Brown, 1974 OK 19, ¶ 19, 519 P.2d 491, 495. “[T]he gist of fraudulent
misrepresentation is the production of a false impression ... and damage sustained
as the natural and probable consequence of the acts charged.” Id. (citations
omitted).
Although fraud claims ordinarily present a question of fact, Croslin v.
Enerlex, Inc., 2013 OK 34, ¶ 12, 308 P.3d 1041, 1046, summary judgment is
the law of the state with the most significant relationship to the parties.”) (citations
omitted); see also Martin v. Gray, 2016 OK 114, ¶ 10, 385 P.3d 64, 67 (same).
21

appropriate where, under the uncontroverted facts, a plaintiff fails to demonstrate
the viability of his claim. See, e.g., Alta Health Strategies, Inc. v. Kennedy, 790
F.Supp. 1085, 1093 (D. Utah 1992) (“[A]llegations of fraud do not lend themselves
readily to resolution by way of summary judgment. ... Even so, [s]ummary
judgment is appropriate when conclusory allegations of fraud stand alone,
unsupported by specific evidence pertinent to a claim of common law fraud.”)
(citations and internal quotation marks omitted).
Under this standard, the Court concludes summary judgment is appropriate
because McNeese’s evidence of fraud does not establish a triable issue in light of
the “clear and convincing” evidence standard required under Oklahoma law. The
Court’s function at the summary judgment stage is to determine, viewing the
record as a whole, whether a rational trier of fact could find in McNeese’s favor on
the claim. McNeese has the burden of establishing the existence of a triable issue
of fact. The facts of this case, even viewed in the light most favorable to McNeese,
do not support a finding of detrimental reliance by McNeese. McNeese has made
no serious attempt to show actual damages stemming from the purported
misrepresentations or that he decided to forego a particular course of action due to
Access’ statements. Accordingly, Access is granted summary judgment on
McNeese’s fraud claim.

22

In summary, the Court finds that Access’ Motion for Summary Judgment
should be granted with respect to McNeese’s second cause of action for copyright
infringement of the photographs originally entitled “012214_48 photos” (Group 2)
and his third cause of action for fraud. Access’ motion is denied with respect to
McNeese’s first cause of action for copyright infringement of the registered
photographs entitled “contactsheet.pdf.” (Group 1) and fourth cause of action for
aiding and abetting.14
CONCLUSION
Access’ Motion for Summary Judgment [Doc. No. 71] is GRANTED IN
PART and DENIED IN PART as set forth herein.
IT IS SO ORDERED this 10th day of March, 2017.

14

On August 11, 2014, the original judge assigned to this case granted in part
Access’ Motion to Dismiss and, inter alia, dismissed Plaintiff McNeese
Photography’s claims for copyright infringement and aiding and abetting on the
grounds it failed to allege sufficient facts showing it was the legal or beneficial
owner of the copyrighted material at issue [Doc. No. 21]. McNeese’s claim for
aiding and abetting was not dismissed and remains ripe for disposition.
23