Masterfile v. Gale et al

Filing 46

MEMORANDUM DECISION granting 16 Motion for Partial Summary Judgment; denying 19 Motion for Summary Judgment. Signed by Judge Dee Benson on 10/4/2011. (rlr)

IN THE UNITED STATES COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION

MASTERFILE CORPORATION,
Plaintiff,

MEMORANDUM DECISION AND
ORDER

vs.

Case No. 2:09-cv-966

MARTIN GALE, d/b/a THE GALE TEAM;
LAURIE GALE, d/b/a THE GALE TEAM;
and GALE SERVICES, P.C., d/b/a THE
GALE TEAM,

Judge Dee Benson

Defendants.

Before the court are defendants Gale Services, P.C., Martin Gale, and Laurie Gale’s (“the
Gale Team”) Motion for Summary Judgment (Dkt. No. 19) and plaintiff Masterfile’s Motion for
Partial Summary Judgment (Dkt. No. 16). The court held a hearing on the motion. At the
hearing, Masterfile was represented by Wesley Felix and the Gale Team was represented by
Billie Siddoway and Andrew Deiss. After taking the matter under advisement, the court has
further considered the law and facts relating to the motion. Being fully advised, the court
renders the following Memorandum Decision and Order.

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BACKGROUND
The facts of this case are straightforward. Martin and Laurie Gale are real estate agents
who own and operate Gale Services, P.C. In 2004, the Gale Team purchased an electronic
presentation from Real Estate Power Tools. The presentation was embedded on the Gale Team’s
website.
Masterfile is a stock photography agency that licenses images for commercial use. In the
spring of 2009, Masterfile discovered that the Gale Team displayed twenty-seven images from
the Real Estate Power Tools presentation that Masterfile claims are copyrighted. On October 28,
2009, Masterfile filed its lawsuit against the Gale Team claiming copyright infringement.
SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate “if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any material fact
and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). The court
must construe all facts and reasonable inferences therefrom in the light most favorable to the
nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
DISCUSSION
In order to succeed in a copyright infringement case, “a plaintiff must prove (1)
ownership of a valid copyright and (2) unauthorized copying of constituent elements of the work
that are original.” Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1196 (10th Cir.
2005). Additionally, any claim needs to commence “within three years after the claim accrued.”
17 U.S.C. § 507.

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I. OWNERSHIP OF A VALID COPYRIGHT
“Presentation of a certificate of registration from the U.S. Copyright Office usually
constitutes prima facie evidence of a valid copyright.” Palladium Music, Inc., 398 F.3d at 1196;
17 U.S.C. § 410(c). Masterfile claims it owns copyrights to twenty-seven images that were
displayed on the Gale Team’s website. Masterfile produced the certificates of registration to
each of the twenty-seven disputed images.
The Gale Team contends, however, that Masterfile did not comply with the group
registration procedures because the photographer for each of the photos needs to be the same
person. 37 C.F.R. § 202.3(10)(ii). The Gale Team further contends that the court should follow
Muench Photography, Inc. v. Houghton Mifflin Harcourt Publishing Co., 712 F.Supp.2d 84
(S.D.N.Y., 2010). In the Muench case the court held that registration of an automated database
does not extend protection to the individual photographs in the database. As explained below,
the court rejects both of these arguments.
First, the court finds that 37 C.F.R. § 202.3(10)(ii), as relied upon by the Gale Team, is
inapplicable in this case; it applies only to cases of an individual photographer registering
multiple images at once, and not to image libraries. Because the images at issue in this case
were created by multiple photographers, Masterfile does not need to comply with the
requirements in 37 C.F.R. § 202.3(10)(ii).
Second, the court declines to apply the reasoning in Muench to this case. The disputed
images in this case were registered as part of a collected work in an automated database.
“Registration of a collection extends copyright protection to each copyrightable element in the

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collection.” King Records, Inc. v. Bennett, 438 F.Supp. 2d 812, 841 (M.D. Tenn. 2006); See
Nimmer on Copyright, §7.16[B][2][c]. Masterfile owns, for the purposes of copyright
registration, the copyrights of each of the individual images at issue. (Pigeon Decl., ¶ 2.)
Because Masterfile owns the constituent parts of the collection the registration of the collection
extends copyright protection to the constituent parts. See King Records, Inc. v. Bennett, 438
F.Supp. 2d 812,841 (M.D. Tenn. 2006).
Having determined that Masterfile owns copyrights to the disputed images, the must
determine whether there was an unauthorized copying of Masterfile’s images.
II. UNAUTHORIZED COPYING
In order to show unauthorized copying the plaintiff must show substantial similarity
between the copyrighted work and the defendant’s work. Country Kids ‘N City Slicks, Inc. v.
Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996).
The Gale Team has admitted that the images on its website and Masterfile’s copyrighted
images are “substantially similar.” The Gale Team has also admitted that it did not have a
licence from Masterfile to show the images on the website. The facts, as they pertain to
unauthorized copying, show that the Gale Team copied the images by placing them on the
website through the Real Estate Power Tools presentation.
III. STATUTE OF LIMITATION
Finally, the Gale Team asserts that Masterfile’s claims are untimely. As set forth
previously, any claim needs to commence “within three years after the claim accrued.” 17
U.S.C. § 507. “A copyright claim accrues when the plaintiff learns or in the exercise of due

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diligence should have learned, that the defendant was infringing its rights.” Techni-Graphic
Services, Inc., v. Majestic Homes, Inc., 2:02-cv-923-DAK, 2005, WL 357208 (D. Utah 2005).
The Gale Team purchased the presentation in 2004, and claims that Masterfile should
have learned about the existence of the images at that time. The court disagrees. While the Gale
Team may have purchased the presentation in 2004, the facts reveal that it was not until 2009
that Masterfile discovered the website with the disputed images. There is nothing to indicate
that Masterfile knew or should have known about the disputed images before 2009.
Accordingly, Masterfile’s claims accrued in 2009 and are not time-barred.
CONCLUSION
For the reasons stated above, the Gale Team’s Motion for Summary Judgment is
DENIED and Masterfile’s Motion for Partial Summary Judgment is GRANTED.
DATED this 4th day of October, 2011.

_________________________________
Dee Benson
United States District Judge

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