Murakami-Wolf-Swenson, Inc. v. Cole et al

Filing 52

Findings of Fact and Conclusions of Law. The Court concludes as a matter of law pursuant to Rule 52(a)(1) that Defendants willfully violated Plaintiffs copyright in The Point. The Court enters its VERDICT in favor of Plaintiff on the issue of willful infringement. The Court awards Plaintiff statutory damages in the amount of $5,000.00. The Court also concludes a permanent injunction is appropriate. In the event the parties are unable to resolve the issue of attorneys fees and costs by stipu lation, the Court DIRECTS Plaintiffs counsel to submit no later than April 3, 2015 documentation and support for an award of attorneys fees in this matter. Any opposition is due April 20, 2015. The Court will take the issue under advisement on April 20, 2015. Finally, the Court DIRECTS the parties to confer concerning an appropriate form of Judgment and to submit no later than April 3, 2015, their proposed form of Judgment for the Courts consideration. Signed on 03/18/2015 by Judge Anna J. Brown. See attached 17 page Findings of Fact and Conclusions of Law. (bb)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON

MURAKAMI-WOLF-SWENSON, INC.,
Plaintiff,
v.

3:13-CV-01844-BR
FINDINGS OF FACT,
CONCLUSIONS OF LAW,
AND VERDICT

LAWRENCE A. COLE,
individually and d/b/a
ACME-TV, and MAGNUM
PRODUCTIONS LLC, an Oregon
Domestic Limited Liability
Company,
Defendants.

MICHAEL M. RATOZA
Bullivant Houser Bailey, PC
300 Pioneer Tower
888 S.W. Fifth Avenue
Portland, OR 97204
[phone]
BRIDGET B. HIRSCH
7435 Figueroa St.
No. 412422
Los Angeles, CA 90041
[phone]

1 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

EVAN S. COHEN
1180 South Beverly Drive
Suite 510
Los Angeles, CA 90035-1157
310-556-9800
Attorneys for Plaintiff
SCOTT N. BARBUR
JUSTIN R. STEFFEN
Barbur Law Office, LLC
2027 S.E. Jefferson Street, Suite 205
Milwaukie, OR 97222
[phone]
Attorneys for Defendants
BROWN, Judge.
This matter comes before the Court to resolve whether
Defendants willfully infringed Plaintiff’s copyright of an
audiovisual animated film titled The Point.

For the reasons

explained herein, the Court concludes Plaintiff has proved
Defendants willfully infringed Plaintiff’s copyright and awards
to Plaintiff statutory damages of $5,000.00 and reasonable and
necessary attorneys’ fees in an amount to be determined.

The

Court also directs the parties to make additional submissions as
noted herein.

BACKGROUND
The following facts are undisputed unless noted.
In 1970 Murakami Wolf Productions, Inc., predecessor in
interest to Plaintiff Murakami-Wolf-Swenson, Inc., created an
2 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

audiovisual animated film produced for television titled The
Point.

The Point, narrated by Dustin Hoffman, was broadcast on

television by the American Broadcasting Company (ABC) in 1971.
The Point as narrated by Dustin Hoffman was never released for
sale to the public.
In 1985 Vestron Video, Plaintiff’s licensee, released for
sale to the public a videocassette recording of The Point
narrated by Ringo Starr.

The 1985 release of The Point was

identical to the 1971 broadcast except for the change in
narrators.
On January 22, 1987, Murakami Wolf Productions registered a
copyright for The Point with the Register of Copyrights.
Murakami Wolf Productions noted in its Copyright Registration
that The Point was created in 1970 and listed the date “of first
publication of this particular work” as February 11, 1970.
In 1988 The Point was broadcast on television by the Disney
Channel.

Alan Thicke narrated the 1988 broadcast, but everything

else about The Point was identical to both the 1971 broadcast and
the 1985 videocassette release.

Plaintiff never released or

licensed for release to the public the 1988 broadcast version of
The Point.
In 1993 LIVE Home Video, Inc., Plaintiff’s licensee,
released for sale to the public a videocassette recording of the
1985 version of The Point narrated by Ringo Starr.

The 1993

3 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

release of The Point was identical to the 1985 videocassette
release.
In 2004 Sony BMG, Plaintiff’s licensee, released for sale to
the public a digital video disc (DVD) recording of the 1985
version of The Point narrated by Ringo Starr.

The 2004 release

of The Point was identical to the 1985 videocassette release.
As early as 2012 Defendant ACME-TV1 offered for sale and
sold DVD copies of The Point on Amazon.com and ACME-TV.com, which
was run through eBay.com.
Point for sale.

Defendants offered two versions of The

The first version was identical to the 1985

Ringo Starr version of The Point, and the second version was
identical to the 1988 Alan Thicke version of The Point.
On October 16, 2013, Plaintiff filed an action in this Court
against ACME-TV, Magnum Productions, and Lawrence Cole in which
Plaintiff asserted a claim against Defendants for willful
copyright infringement in violation of 17 U.S.C. § 501.
Plaintiff sought damages and injunctive relief.
On April 24, 2014, Plaintiff filed a Motion for Partial
Summary Judgment on the Issue of Liability.
On May 28, 2014, Plaintiff filed a Supplemental Registration
to the Copyright Office changing the date of first publication of
The Point to 1985.
1

ACME-TV was a division of Defendant Magnum Productions LLC
before Magnum Productions dissolved in March 2013. Defendant
Lawrence Cole operates, maintains, and controls ACME-TV.
4 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

On August 13, 2014, the Court issued an Opinion and Order in
which it concluded Plaintiff had an effective and valid copyright
of The Point at the time of its first publication in 1985 and
that Defendants infringed Plaintiff’s copyright of The Point when
they sold and offered it for sale thereafter.
The remaining issue for trial is whether Defendants’
infringement of Plaintiff’s copyright was innocent or willful.
Plaintiff asserts Defendant willfully infringed Plaintiff’s
copyright when they manufactured, offered for sale, and sold
unauthorized copies of The Point.

Plaintiff seeks damages of

$50,000, a permanent injunction, and attorneys’ fees.
Defendants, in turn, contend their manufacture, offer for
sale, and sales of copies of The Point were innocent
infringements rather than willful conduct as evidenced by the
fact that, in their opinion, they adequately researched
Plaintiff’s copyright and they discontinued selling copies of The
Point in July 2013 when Plaintiff advised them that their sales
were infringing Plaintiff’s copyright.

FINDINGS OF FACT
On February 24, 2015, the Court conducted a one-day bench
trial on the agreement of the parties.

The parties submitted

exhibits into evidence and two witnesses testified:

Evan Cohen,

Plaintiff’s administrator of the copyright and film The Point,
5 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

and Defendant Lawrence Cole, co-owner and administrator of
Defendant Magnum Productions LLC.
Having weighed, evaluated, and considered the evidence
presented at trial, the Court makes the following Findings of
Fact pursuant to Federal Rule of Civil Procedure 52(a) by a
preponderance of the evidence:
1.

In 1985 Vestron Video widely distributed the Ringo
Starr narrated version of The Point for sale on VHS
throughout the United States, including in the State of
Oregon.

2.

Cole recorded the Disney Channel broadcast of The Point
(with Alan Thicke as narrator) onto a videocassette
when it was televised in 1988.

3.

In 1993 LIVE Home Video, Inc., widely distributed the
Ringo Starr narrated version of The Point for sale on
VHS throughout the United States, including in the
State of Oregon.

4.

In 2004 Sony BMG widely distributed the Ringo Starr
narrated version of The Point for sale on DVD
throughout the United States, including in the State of
Oregon.

5.

In 2007 Cole and his wife started Magnum Productions
LLC with the intention of finding movies that are in
the public domain, restoring them, and selling them in

6 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

DVD and other formats at their physical store location
in Milwaukie, Oregon, and online through Amazon.com and
Defendants’ website ACME-TV, which was run through
eBay.com.
6.

Cole is not an attorney and does not have any formal
training in copyright law.

7.

In 2008 or 2009 Defendants began to consider selling
the 1988 version of The Point (narrated by Alan Thicke)
in DVD format.

8.

In 2008 or 2009 Cole googled The Point and found the
1985 Ringo Starr version on VHS.

9.

When Cole googled The Point in 2008 or 2009, it is
unlikely that he did not also find at least a passing
reference to the 2004 Sony BMG DVD in light of its
release in 2004.

10.

In 2008 or 2009 Cole found parts or all of three
versions of The Point on YouTube and concluded content
that is protected by copyright is not on YouTube
because he believed companies pull copyright-protected
content off of YouTube right away.

11.

In 2008 or 2009 in an effort to determine whether The
Point was a work that was in the public domain, Cole
noted the final frame of the 1988 version narrated by
Alan Thicke that he had recorded off of the television

7 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

broadcast contained the following notice:
A PRODUCTION OF
NILSSON HOUSE MUSIC, INC.
MURAKAMI WOLF
PRODUCTIONS
INC.
©“THE POINT” 1971 ALL RIGHTS RESERVED
12.

In 2008 or 2009 Cole went to IMDb.com and saw a
“release date” of February 2, 1971, for The Point.

13.

In 2008 or 2009 Cole went to copyrightdata.com and
corresponded with David Hayes, the owner of that
website, concerning what Cole believed to be possible
issues with the copyright notification contained at the
end of the 1988 version of The Point taped off of the
television.

14.

Hayes is not an attorney, and Cole was aware when he
corresponded with Hayes that Hayes was not an attorney.

15.

Cole believed under his interpretation of copyright law
that the copyright notice at the end of the 1988
version of The Point was invalid.

16.

At some point before 2012 Defendants manufactured one
of their versions of The Point by taking the video from
YouTube and combining it with the audio from Cole’s
personal VHS recording of the 1988 Disney Channel
broadcast of The Point.

Defendants manufactured their

other version of The Point by taking the audio and

8 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

visual from YouTube resulting in a copy of the version
narrated by Ringo Starr.
17.

At least as early as 2012 Defendants began selling on
Amazon.com and on their ACME-TV website their versions
of The Point narrated by Alan Thicke and Ringo Starr.

18.

In mid-2012 Cohen discovered Defendants’ version of The
Point narrated by Alan Thicke was for sale on
Amazon.com.

19.

On October 31, 2012, Cohen sent a “take-down” letter to
Amazon.com’s legal department in which he advised
Amazon.com that it was offering for sale a “bootleg
version” of The Point by ACME-TV.

Cohen, however,

included only the AISN number for Defendants’ version
of The Point narrated by Ringo Starr.

Cohen advised

Amazon.com that Defendants’ DVD violated Plaintiff’s
copyright and requested Amazon.com to “delete”
Defendants’ DVD from Amazon’s website.
20.

Defendants did not receive a copy of Plaintiff’s
October 31, 2012, take-down letter, but at some point
Amazon.com sent Cole a notice advising him that it had
“taken down” the version of The Point narrated by Ringo
Starr that was being sold by Defendants.

21.

Defendants elected not to challenge Amazon.com’s
decision to take down Defendants’ version of The Point

9 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

narrated by Ringo Starr.
22.

Cole believed Defendants’ version of The Point narrated
by Alan Thicke did not violate Plaintiff’s copyright
because the notice from Amazon.com did not mention that
version.

Defendants, therefore, continued to sell

their version of The Point narrated by Alan Thicke.
23.

Before July 2013 Cole never went to copyright.gov,
which is the website administered by the United States
Copyright Office, to research whether a valid copyright
of The Point existed.

24.

Before July 2013 Cole never accessed Amazon.com to
review Defendants’ listing for their version of The
Point.

25.

At some point before July 6, 2013, Cohen discovered
Defendants were still selling their version of The
Point narrated by Alan Thicke on their ACME-TV website.

26.

At some point before July 6, 2013, Cohen ordered a copy
of the DVD of The Point that Defendants were offering
for sale on their ACME-TV website.

27.

On July 6, 2013, Cohen received the copy of The Point
DVD that he ordered, and he determined it contained an
exact copy of the version of The Point narrated by Alan
Thicke that was only broadcast on the Disney Channel in
1988.

10 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

28.

The DVD cover included stills from The Point, contained
a notation that it was manufactured and distributed by
Magnum Productions LLC, and stated “Artwork and other
material copyright 2010 by Magnum Productions LLC.”

29.

On July 9, 2013, Cohen sent Cole and Magnum Productions
LLC a letter in which Cohen advised them that
Defendants’ sale of The Point constituted copyright
infringement and directed Defendants immediately to
cease and desist from selling or offering The Point for
sale.

30.

On July 9, 2013, Cole responded to Cohen’s letter via
email and argued to Cohen that he did not believe
Defendants’ version of The Point narrated by Alan
Thicke violated Defendants’ copyright.

31.

On July 10, 2013, Cole advised Cohen via email that
Defendants “removed [their] listing” of The Point
pending Cole’s further research on the issue.

32.

Although Defendants did not also notify Amazon.com or
eBay.com to remove their listing of The Point, Cole
logged into his seller accounts on Amazon.com and
ebay.com and “zeroed out the inventory” in order to
remove any possibility of a sale through those
accounts.

33.

Due to difficulties with the company responsible for

11 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

displaying videos on the website for ACME-TV, however,
ACME-TV continued to display Defendants’ version of The
Point for sale.
34.

After Cole received Plaintiff’s July 9, 2013, letter,
he checked copyright.gov for the first time.

35.

Defendants did not sell any copies of The Point after
July 10, 2013.

36.

On September 6, 2013, Cohen discovered a link to
purchase The Point on Defendants’ ACME-TV website.
Cohen did not click the link to determine whether it
allowed for the actual purchase of the DVD.

37.

By September 9, 2013, Defendants resolved their issues
with their ACME-TV website, and the link for The Point
became “a dead link.”

38.

It strains credulity that Defendants never looked at
the listing on Amazon.com for their version of The
Point.

The record reflects on October 31, 2012, the

listing for Defendants’ version of The Point also
listed the officially-licensed DVD version of the movie
released by Sony BMG in 2004.

If nothing else, this

would have indicated to Defendants that The Point was,
in fact, available on DVD and had been released by a
large company that was likely licensed to do so.

12 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

CONCLUSIONS OF LAW
Infringement is willful within the meaning of the Copyright
Act when the defendant acts with the knowledge that the
defendant’s conduct constitutes copyright infringement or when
the defendant acts with reckless disregard for the copyright
holder’s rights.

See Barboza v. New Form, Inc., 545 F.3d 702,

708 (9th Cir. 2008).

See also IO Group, Inc. v. Jordon, 708 F.

Supp. 2d 989, 1003 (N.D. Cal. 2010).
Based on the Court’s Findings of Fact and the applicable
legal standards, the Court concludes as a matter of law pursuant
to Rule 52(a)(1) that Defendants willfully violated Plaintiff’s
copyright in The Point based on the following:
1.

It was not reasonable and was in reckless disregard of
Plaintiff’s rights for Defendants to manufacture, to
offer for sale, and to sell their version of The Point
without checking the copyright-registration records of
the United States Copyright Office to determine whether
there was a copyright of The Point.

2.

It was not reasonable and was in reckless disregard of
Plaintiff’s rights for Defendants to rely almost
exclusively on the copyright notice in the last frame
of the version of The Point broadcast on television in
1988 that was never intended for publication within the
meaning of the Copyright Act and, therefore, did not

13 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

require a copyright notice.

See pre-1989 17 U.S.C.

§ 405(a)(2)(requiring a copyright notice only on copies
of a work “publicly distributed by authority of the
copyright owner.”).
3.

It was not reasonable and was in reckless disregard of
Plaintiff’s rights for Defendants to conclude that The
Point was in the public domain because versions of The
Point were available on YouTube, which is for display,
is not a distribution device, and is not an
authoritative or reliable indicia of a video’s
copyright status.

4.

It was not reasonable and was in reckless disregard of
Plaintiff’s rights for Defendants to fail to attempt to
contact anyone mentioned in the copyright notice at the
end of the 1988 broadcast of The Point to ascertain the
status of the copyright of The Point.

5.

It was unreasonable and was in reckless disregard of
Plaintiff’s rights for Defendants merely to “zero out”
their inventory of The Point on Amazon.com and their
website run through eBay after Cole was advised of the
copyright status of The Point in July 2013.

Although

zeroing out the inventory may have resulted in no
further sales, Defendants’ version, nevertheless,
remained on the website (albeit with an apparently dead

14 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

link) and continued to give the appearance of being
offered for sale.
6.

By entering into the business of finding movies that
they believe to be in the public domain, manufacturing
them on DVD, and releasing them for sale without the
assistance of legal counsel or the benefit of a legal
education, Defendants took obvious risks in disregard
of copyright standards generally.

As a result

Defendants reached incorrect legal conclusions in this
instance about Plaintiff’s copyright interests.

When

Defendants manufactured, offered for sale, and sold
their version of The Point, their conduct was
unreasonable and in reckless disregard of Plaintiff’s
copyright interests.

VERDICT
For these reasons, the Court enters its VERDICT in favor of
Plaintiff on the issue of willful infringement.
The Court notes there is not any evidence in the record that
Plaintiff sustained actual damages or that Defendants received
any notable monetary profit from their infringement.

In the

Ninth Circuit the purpose of a statutory damage award for
copyright infringement is to penalize the infringer and to deter
future violations of the copyright laws.

See Nintendo of Am. v.

15 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

Dragon Pac. Int'l, 40 F.3d 1007, 1011 (9th Cir. 1994).
Considering all of the evidence presented at trial, the
nature of Plaintiff’s copyright interest, and the circumstances
of Defendants’ infringement in the context of a relatively small
business enterprise, the Court awards Plaintiff statutory damages
in the amount of $5,000.00, a sum the Court concludes is
sufficient to fulfill the purposes for statutory damages without
being unduly punitive.
The Court also concludes a permanent injunction is
appropriate and notes the parties have agreed to the terms of
such an injunction in a March 3, 2015, email to the Court.

The

Court will enter the permanent injunction under a separate Order.
In addition, the Court concludes pursuant to 17 U.S.C. § 505
that an award to Plaintiff of reasonable and necessary attorneys’
fees and costs in an amount to be determined is appropriate in
this case.

The Court DIRECTS the parties to confer concerning

this issue in an effort to reach an agreement and to avoid
incurring additional attorneys’ fees to litigate this aspect of
their dispute.
In the event the parties are unable to resolve the issue of
attorneys’ fees and costs by stipulation, the Court DIRECTS
Plaintiff’s counsel to submit no later than April 3, 2015,
pursuant to Federal Rule of Civil Procedure 54(d)(2) and Local
Rule 54-3 documentation and support for an award of attorneys’
16 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT

fees in this matter.

Any opposition is due April 20, 2015.

The

Court will take the issue under advisement on April 20, 2015.
Finally, the Court DIRECTS the parties to confer concerning
an appropriate form of Judgment and to submit no later than
April 3, 2015, their proposed form of Judgment for the Court’s
consideration.
IT IS SO ORDERED.
DATED this 18th day of March, 2015.

/s/ Anna J. Brown
ANNA J. BROWN
United States District Judge

17 - FINDINGS OF FACT, CONCLUSIONS OF LAW, AND VERDICT