Carol Wilson Fine Arts, Inc. v. Qian
Filing
39
OPINION AND ORDER: Plaintiff's first motion for summary judgment regarding its declaratory judgment claim 9 is GRANTED. Plaintiff's second motion for summary judgment concerning its copyright infringement claim 15 is DENIED. Defendant's cross-motion for summary judgment 18 is also DENIED. Plaintiff's requests for oral argument are DENIED as unnecessary. The Court orders the parties to renew their settlement negotiations with a United States Magistrate or Di strict Court Judge. Within 60 days of the date of this opinion, the parties must provide a joint status report regarding their settlement efforts. If necessary, the Court will then set a status conference to discuss further management of this case. See formal Opinion and Order. Copy of Opinion and Order sent to Pro Se Defendant. Signed on 12/3/2014 by Chief Judge Ann L. Aiken. (rh)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
CAROL WILSON FINE ARTS, INC.,
an Oregon corporation,
Plaintiff,
v.
ZIFEN QIAN, an individual,
Defendant.
Stephen J. Joncus
Norman A. Sfeir
Klarquist Sparkman, LLP
121 S.W. Salmon Street, Suite 1600
Portland, Oregon 97204
Attorneys for plaintiff
Zifen Qian
2811 Beacon Hill Drive
West Linn, Oregon 97068
Pro se defendant
Page 1 - OPINION AND ORDER
Case No. 3:14-cv-00587-AA
OPINION AND ORDER
AIKEN, Chief Judge:
Plaintiff Carol
motions
for
Wilson
summary
Fine Arts,
judgment,
the
Inc.
filed
first
two
pertaining
partial
to
its
declaratory judgment claim and the second relating to its copyright
infringement claim, pursuant to Fed. R. Civ. R.
56(a).
Defendant
Zifen Qian cross-moved for summary judgment. For the reasons set
forth below, plaintiff's first motion is granted and the parties'
remaining motions are denied.
BACKGROUND
Plaintiff
designing,
is
an
marketing,
Oregon
corporation
in
the
business
of
and selling stationary and greeting cards
that incorporate original paintings and illustrations created by
its in-house artists or independent contractors. In 1992, plaintiff
hired defendant and the parties entered into a written employment
agreement. Defendant's initial job title was "Artist," although he
was later promoted to "Senior Artist." In September 2013, plaintiff
terminated
defendant's
employment,
at
which
time
the
parties
executed a severance agreement.
During the course of his 21 years of employment,
created
numerous
original
plaintiff's products.
consist of 21
artworks
The designs
different
floral
at
that
issue
were
in the
defendant
utilized
in
case at bar
watercolor paintings
("Works"),
sixteen of which are registered to plaintiff with the United States
Page 2 - OPINION AND ORDER
Copyright office. 1 After his employment ceased,
defendant began
displaying the Works on his personal website.
Plaintiff became aware of defendant's actions in January 2014.
In February 2014, plaintiff's counsel sent defendant a cease-anddesist
letter,
amicably.
expressing
Defendant
a
responded
desire
to
resolve
immediately,
this
refusing
dispute
to
remove
images of the Works from his website. In March 2014, plaintiff sent
defendant
another
letter,
providing
additional
authorities
and
again requesting that defendant stop engaging in any conduct that
infringed on plaintiff's copyrights. Later that month,
defendant
notified plaintiff that he owned rights to the Works and therefore
did have to curtail his usage now or in the future.
On April 9, 2014, plaintiff filed a complaint in this Court,
alleging
claims
infringement.
for
As relief,
declaratory
judgment
and
copyright
plaintiff seeks a declaration that the
Works were "made for hire" under the Copyright Act, a Court order
permanently enjoining future infringement and requiring the return
of any original Works in defendant's possession, statutory damages
in the minimum amount of $750 per copyrighted work, and impoundment
of the infringing copies.
On June 27,
2014,
plaintiff moved for
summary judgment on its declaratory judgment claim. 2 On August 7,
1
The five uncopyrighted Works "were not used in products,
and therefore were not registered." First Spector Decl. ~ 6.
2
On July 21, 2014, defendant filed a surreply to
plaintiff's first partial motion for summary judgment without
Page 3 - OPINION AND ORDER
2014,
plaintiff moved for
infringement claim.
summary
judgment
disputed
Works.
summary judgment as to its copyright
That same day,
on the
basis
Accordingly,
defendant filed a motion for
that
he
defendant
owns
copyrights
requests
a
in
Court
the
order
indicating that he "owns copyrights of all such paintings" and
requiring
plaintiff
to
"withdraw
immediately
its
unlawful
registrations of copyrights," as well as "[a]n award of One Million
Dollars ($1,000,000)." Def.'s Cross-Mot. Summ. J. 6-7. 3
On September 24, 2014, the parties tried unsuccessfully, via
judicial settlement,
to resolve their dispute.
On September 26,
2014, defendant filed a supplemental brief, without leave from the
Court, in which he reiterated his previous arguments and requested
an additional $5,000,000 in damages as "unpaid compensation from
the sales of [his] paintings published on [plaintiff's] greeting
cards and other paper publications during the 21 years." Def.'s
Supplemental Br. 2.
STANDARD
Summary judgment is appropriate if the pleadings, depositions,
affidavits, answers to interrogatories, and admissions on file, if
obtaining leave from the Court. Ordinarily, the Court would
disregard this document. See LR 7-1(e) (3). Nevertheless, in order
to provide the most complete review of this dispute, and in light
of his prose status, the Court considers defendant's surreply,
especially because it does not alter the outcome of this case.
3
Defendant did not numeralize his motion or briefs, such
that the Court refers to the page numbers assigned in the docket
when citing thereto.
Page 4 - OPINION AND ORDER
any, show "that there is no genuine dispute as to any material fact
and the [moving party] is entitled to judgment as a matter of law."
Fed. R. Civ. P. 56(a). Substantive law on an issue determines the
materiality
of
a
fact.
T. W.
Elec.
Servs.,
Contractors Ass'n, 809 F.2d 626, 630
Inc.
v.
Pac.
Elec.
(9th Cir. 1987). Whether the
evidence is such that a reasonable jury could return a verdict for
the
nonmoving
party determines
the
authenticity of
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
a
dispute.
(1986).
The moving party has the burden of establishing the absence of
a genuine issue of material fact.
U.S.
317,
323
(1986).
Celotex Corp.
v.
Catrett,
477
If the moving party shows the absence of a
genuine issue of material fact, the nonmoving party must go beyond
the pleadings and identify facts which show a genuine issue for
trial. Id. at 324.
Special rules of construction apply when evaluating a summary
judgment motion:
(1) all reasonable doubts as to the existence of
genuine issues of material fact
moving
party;
and
(2)
all
should be resolved against the
inferences
to
be
drawn
from
the
underlying facts must be viewed in the light most favorable to the
nonmoving party. T.W. Elec., 809 F.2d at 630.
DISCUSSION
Plaintiff argues that summary judgment is warranted because
defendant created the Works as an employee and within the scope of
his employment, and then publicly displayed them via his personal
Page 5 - OPINION AND ORDER
website. Conversely, defendant maintains that he owns the exclusive
copyrights to the Works because:
job
duty
in
the
written
paintings
~original
(1)
~[p]ainting
employment
during
the
21
was not part of
agreement";
years
[of
and
(2)
employment
his
with
plaintiff] were independently created without any other person's
control and direction because those are representations of his own
style, philosophy, spirit, emotion and philosophy," as evidenced by
his
~name
and signature being published on [plaintiff's] greeting
cards and other publications." Def.'s Cross-Mot. Summ. J. 1-3.
I.
Declaratory Judgement Claim
Plaintiff's seeks a declaration that it is the sole owner of
any copyrights to the Works. See 28 U.S.C.
Copyright Act,
2201, 2202. Under the
ownership vests initially in the author
~copyright
or authors of the work,
§§
which is generally the creator of the
copyrighted work." U.S. Auto Parts Network,
LLC,
692 F.3d 1009,
1015
quotations omitted) . An
works
made
omitted).
for
~In
hire."
(9th Cir.
~important
Id.
2012)
Inc.
v.
Parts Geek,
(citation and internal
exception" exists, however,
( citation
and
internal
the case of a work made for hire,
~for
quotations
the employer or
other person for whom the work was prepared is considered the
author
and,
unless
the
parties
have
expressly
agreed
otherwise in a written instrument signed by them, owns all of the
rights comprised in the copyright." 17 U.S.C.
for hire" is defined, in relevant part, as
Page 6 - OPINION AND ORDER
~a
§
201(b).
~work
made
work prepared by an
employee within the scope of his or her employment." 17 U.S.C. §
101. "The creator of a work made for hire does not have a legal or
beneficial interest in the copyright and therefore does not have
standing to sue for infringement." Mostowfi v. i2 Telecom Int'l,
Inc., 269 Fed.Appx. 621, 623 (9th Cir. 2008)
(citing Warren v. Fox
Family Worldwide, Inc., 328 F.3d 1136, 1142-43 (9th Cir. 2003)).
Generally, "'when one person engages another .
a work of an artistic nature,
contractual
reservation
of
[and]
the
to produce
in the absence of an express
copyright
in
the
artist,
the
presumption arises that the mutual intent of the parties is that
the title to the copyright shall be in the person at whose instance
and expense the work is done.'" Twentieth Century Fox Film Corp. v.
Entm't Distrib., 429 F.3d 869, 877
548
U.S.
Gertler,
919
352
(2006)
(quoting
F.2d 298,
300
(9th Cir. 2005), cert. denied,
Lin-Brook
(9th Cir.
Builders
1965)).
absence of an agreement to the contrary,
As
Hardware
such,
v.
in the
an employee's conduct
falls within the scope of employment if: "'(a) it is of the kind he
is employed to perform;
(b)
it occurs substantially within the
authorized time and space limits;
[and]
least in part, by a purpose to serve the
(c)
it is actuated,
at
[employer].'" U.S. Auto
Parts, 692 F.3d at 1015 (quoting Restatement (Second) of Agency§
228)); see also Cmty. for Creative Non-Violence v. Reid,
730, 751-52
490 U.S.
(1989).
Concerning the first prong,
Page 7 - OPINION AND ORDER
despite his allegations to the
contrary, the uncontroverted evidence of record demonstrates that
defendant
was
plaintiff's
employment
employed
greeting
and
to
cards
severance
create
and
original
artwork
stationary.
agreement
define
Notably,
B,
Ex.
Although
the
at
1;
see
parties'
also
First
employment
Spector
defendant's job title or specific duties,
in
the
as
the
Ex.
does
A,
at 1;
~~
Decl.
contract
use
both
plaintiff
"Employer" and defendant as the "Employee." Compl.
Compl.
for
3,
5,
not
8.
define
it does stipulate that
"[t]he Employee agrees to perform the work desired by Employer in
a workmanlike manner" and "shall, at all times, provide services to
Employer under Employer's control and direction." Compl. Ex. A, at
1-2.
Further, defendant recognizes he was paid an hourly wage to
create original artwork for plaintiff's products and that his job
~
4;
see also Def.'s Resp.
to
title was "Artist" or "Senior Artist." First Spector Decl.
Second Spector Decl.
~
7; Answer
~
31;
First Partial Mot. Summ. J. 2-3. As such, Gary Spector, plaintiff's
President and Co- Founder, testified that defendant was "employed by
[plaintiff]
as a professional artist for the purpose of creating
original paintings that could be used in [plaintiff's] products." 4
First Spector Decl.
~~
1, 4; Second Spector Decl.
4
~~
4, 7; see also
Under these circumstances, the fact that some of the Works
were signed by defendant is immaterial. The "made for hire"
exception does not hinge on whether the artist signed or was
given credit for the work, especially where, as here, the owner
of the copyright prominently displays its copyright notice
alongside the artist's signature on the product. See Second
Spector Decl. Exs. 1-16.
Page 8 - OPINION AND ORDER
First Spector Decl. Exs. 3-12.
Turning
to
the
second prong,
defendant
created
the
Works
within the authorized time and space limits of his employment with
plaintiff. The employment agreement states that "Employer agrees to
supply the Employee with all necessary material with which the
Employer
desires
the
Employee
to
work."
Compl.
Ex.
A,
at
1.
Accordingly, plaintiff supplied defendant with an on-site office,
which contained a computer, a desk,
enabling him to do his work"
and a drafting table; "tools
such as "brushes,
paper"; and other incidental materials,
and other storage,
"reference
paint,
and art
including art flat files
color corrected lighting, bookshelves, props,
materials
and
books
to
inspire
production equipment. First Spector Decl.
new
ideas,"
and
7, 10. Defendant was
~~
"not permitted to work for [plaintiff] from home" and "required to
maintain regular hours in the office that matched the company's
business hours." Id. at
1-2.
In
exchange,
~~
7-8; see also First Spector Decl. Exs.
defendant
received
an
hourly
rate
for
his
services, occasional yearly bonuses and retirement contributions,
health insurance benefits, and paid vacation and sick leave. First
Spector Decl.
~~
8-9; see also First Spector Decl. Exs. 1-2, 14;
Compl. Ex. A, at 4.
Finally,
regarding the third prong,
defendant's creation of
the Works was actuated by a purpose to serve plaintiff's business
of
generating
aesthetically-pleasing
Page 9 - OPINION AND ORDER
paper
products
featuring
original
artwork.
In
fact,
that
was
the
primary
purpose
defendant's employment with plaintiff. See First Spector Decl.
Second Spector Decl.
~~
of
~
4;
4, 7. As a result, plaintiff had "control
and direction" over defendant's designs and artistic creations.
First Spector Decl.
defendant's
[his]
~~
supervisors
5-8; Compl.
Ex. A.,
"were active
at 1.
Significantly,
in reviewing and managing
work so that the original art he created could be used in
[plaintiff's]
products." First Spector Decl.
~
6;
First Spector
Decl. Exs. 3-12. For instance, when asked by Spector for a "mockup"
of a painting of roses, defendant replied "[h]ere is the side by
side
. I am painting the detailed one now, but if you want to
change something, I have to start over." First Spector Decl. Ex. 6.
Thus, no genuine issue of material fact exists as to whether
the Works were "made for hire" within the meaning of the Copyright
Act. Although defendant makes conclusory statements regarding his
ownership of the Works or the types of tasks he was employed to
perform, he failed to provide any evidence or cite to any precedent
in support of these assertions and the parties did not execute a
written agreement governing these matters.
Resp.
to First Partial Mot.
Partial Mot. Summ.
Summ.
J.;
See generally Def. 's
Def. 's Sur reply to First
J.; Def.'s Resp. to Second Partial Mot. Summ.
J.; Def.'s Cross-Mot.
Summ.
J.; Def.'s Reply to Cross-Mot.
Summ.
J.; see also Van Dyke v. Lions Gate Entm't, Inc., 2013 WL 3878974m
*3 (C.D.Cal. July 24, 2013)
Page 10 - OPINION AND ORDER
("if Van Dyke were an employee at the
time the Film was made, then absent an agreement to the contrary,
his employer would be the owner of the copyright in the Film");
Hernandez v.
2003)
Spacelabs Med.
("conclusory
Inc.,
343 F.3d 1107,
unsupported
allegations,
1116
by
(9th Cir.
facts,
insufficient to survive a motion for summary judgment")
are
( citation
omitted) .
In
sum,
the
undisputed
record
establishes
plaintiff
owns
copyrights in the Works because they were created by defendant
during work hours,
on plaintiff's premises and at its expense,
under plaintiff's direction and control, and while being paid an
hourly wage. Plaintiff's motion is granted and defendant's motion
is denied as to this claim.
II.
Copyright Infringement Claim
A prima facie case of copyright infringement consists of two
elements: "(1) ownership of the copyright; and (2) infringementthat the defendant copied protected elements of the plaintiff's
work." Three Boys Music Corp. v.
Bolton,
212 F.3d 477,
Cir. 2000), cert. denied, 531 U.S. 1126 (2001)
481
(9th
(citations omitted).
It is well-established that a certificate of copyright registration
made within five years of publication entitles its holder to a
presumption of valid copyright ownership. See 17 U.S.C.
Micro
Star v.
Formgen,
Inc.,
154
F.3d 1107,
I,
plaintiff
§
410 (c);
1109-10
(9th Cir.
is
owner
1998) .
As
discussed
in
section
Page 11 - OPINION AND ORDER
the
of
copyrights to the Works.
This conclusion is further bolstered by
the fact that plaintiff registered sixteen of the Works with the
United States Copyright office within the requisite time frame. See
Second Spector Decl.
Houghton Mifflin
~~
2, 5, 11-26; see also Alaska Stock, LLC v.
Harcourt
Publ' g,
747
F. 3d
67 3,
68 5
(9th
Cir.
2014). Significantly, all sixteen registrations reflect that the
Works were "made for hire." Second Spector Decl. Exs. 1-16.
Nonetheless, the Court finds the record insufficient to make
a summary judgment determination regarding plaintiff's copyright
infringement
claim.
It
is undisputed that
defendant posted the
Works on his website. Defendant, however, is not selling the Works
over the internet or making them available for commercial purposes.
Rather,
defendant's
webpage,
arguments,
as
well
as
the
content
of
his
indicate that he is displaying non-scale images of the
Works as part of his artist's portfolio or for academic purposes.
See,
Decl.
e.g.,
Ex.
Def.'s Cross-Mot.
17.
Summ.
J.
6;
see also Second Spector
Plaintiff has not cited to,
and the Court is not
aware of, any authority from within the Ninth Circuit establishing
that
displaying
images
in
this
manner
violates
the
copyright
owner's exclusive rights under the Copyright Act. See Pl.'s Mem. in
Supp.
of Second Partial Mot.
Transfiguration Monastery,
Summ.
Inc. v.
J.
5
Gregory,
(citing Soc' y of Holy
689 F.3d 29,
55
(1st
Cir. 2012)). In fact, although the parties' motions and briefs are
silent concerning whether defendant's conduct constitutes fair use,
Page 12 - OPINION AND ORDER
the
Copyright
circumstances,
Act
contemplates
v. Acuff-Rose Music,
doctrine
in
certain
limited
a registered work may be used publicly by a non-
owner without infringement.
use
that,
thus
5
Inc.,
permits
See 17 U.S.C.
510 U.S.
and
569,
requires
§
107; see also Campbell
577
(1994)
courts
to
(" [t]he fair
avoid
application of the copyright statute when, on occasion,
rigid
it would
stifle the very creativity which that law is designed to foster")
(citation and internal quotations and brackets omitted).
Essentially,
granting
defendant's
motion
would
preclude
artists, even those producing work made for hire, from representing
themselves as the creator of such work, even in a non-commercial or
academic context. The Court is troubled by the implications of such
a
decision,
especially
given
the
potentially
far-reaching
consequences, the significance of the relief requested, the nature
of defendant's utilization of the Works,
and the fact that he is
not represented by counsel, without further argument and evidence
from the parties. See Blaisdell v.
(9th Cir. 2013)
Frappiea, 729 F.3d 1237,
1241
("[c]ourts in this circuit have an obligation to
give a liberal construction to the filings of pro se litigants . .
. [t]his rule relieves prose litigants from the strict application
of procedural rules and demands that courts not hold missing or
5
The Court is mindful of the fact that the defendant bears
the burden of proof in regard to the fair use doctrine, but only
after the plaintiff has met its initial burden of establishing a
prima facie case of copyright infringement. Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1158-59 (9th Cir. 2007)
Page 13 - OPINION AND ORDER
inaccurate
them")
legal
terminology
or
muddled
draftsmanship
against
(citations omitted). Accordingly, the parties' motions are
denied as to plaintiff's copyright infringement claim.
CONCLUSION
Plaintiff's first motion for summary judgment regarding its
declaratory judgment claim (doc. 9) is GRANTED. Plaintiff's second
motion for summary judgment concerning its copyright infringement
claim
(doc.
judgment
15)
is DENIED.
(doc. 18)
Defendant's cross-motion for summary
is also DENIED.
Plaintiff's requests for oral
argument are DENIED as unnecessary. The Court orders the parties to
renew their settlement negotiations with a United States Magistrate
or
District
Court
Judge.
Within
60
days
of
the
date
of
this
opinion, the parties must provide a joint status report regarding
their settlement efforts. If necessary, the Court will then set a
status conference to discuss further management of this case.
A~i-··-~
IT IS SO ORDERED.
Dated
'
~(:?P
thls_~ day
___
of
~2014.
~~
Ann Aiken
United States District Judge
Page 14 - OPINION AND ORDER
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