Sullivan, Amy v. Flora, Inc. et al
Filing
101
ORDER denying 51 Motion for Summary Judgment, striking the trial date and setting an in-person hearing on October 14, 2016 at 1:30 p.m. to address any remaining discovery issues. Signed by District Judge William M. Conley on 10/07/2016. (mfh)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
AMY LEE SULLIVAN,
Plaintiff,
OPINION AND ORDER
v.
15-cv-298-wmc
FLORA, INC.,
Defendant.
Plaintiff Amy Lee Sullivan, a freelance illustrator, alleges defendant Flora, Inc.,
violated her copyrights by using illustrations in other advertisements and promotional
materials that she created exclusively for its video projects. In its pending motion for
summary judgment, defendant principally argues that the illustrations were joint works,
and therefore Sullivan cannot assert claims as a sole author.
(Dkt. #51.)1
Perhaps
recognizing potential weaknesses in her claim to sole ownership of a valid copyright,
plaintiff’s response leads with her evidence of infringement -- namely, recently-produced
evidence that Flora had in its possession Sullivan’s multi-layered, original source art,
rather than simply JPEG images of the illustrations in dispute. While this evidence is
material to the question of copying, perhaps compellingly so, it does not respond to the
core issue raised in defendant’s motion -- whether Sullivan owns a valid copyright -- the
court takes up that issue in this opinion and order, finding that there are factual issues as
to joint authorship that require a trial.
Defendant also posits a defense based on certain of plaintiff’s illustrations being derivative
works, which is largely duplicative of defendant’s joint authorship defense involving third-party
Designomotion’s contributions. Although offering a partial defense, the court will address this
argument as well, finding that it does not provide a basis for granting summary judgment.
1
UNDISPUTED FACTS2
A. Background
Plaintiff Amy Lee Sullivan is an independent illustrator now living in Baraboo,
Wisconsin, who sometimes does business as “Design Kit.” Her illustrations are either
done by hand or on a Mac computer using software programs designed for creative
professionals. Sullivan began creating illustrations professionally in approximately 2010.
She is listed as the sole author and creator of a collection of illustrations in two
certifications of registration filed with the United States Copyright Office, registration
numbers VA1-888-930 and VA1-893-717, although the parties dispute whether this is
accurate.
Flora, Inc., is incorporated and maintains its principal place of business in the
State of Washington, where it manufactures and distributes health-related products.
Flora hired Designomotion, Inc., to produce two animated videos promoting Flora’s
products. Designomotion’s founder, sole owner and only full-time employee is Joseph
Silver.
On February 3, 2013, plaintiff Sullivan was contacted by Designomotion’s Silver
to explore her interest in providing illustrations for an animated video for Flora.
(Sullivan Decl., Ex. 3 (dkt. #56-3).) In addition to Sullivan and Silver, other individuals
also worked on the video. The next day, Sullivan responded, indicating she was indeed
interested.
The following undisputed facts are derived from the parties’ submissions on summary judgment,
after resolving all material factual disputes and reasonable inferences in plaintiff’s favor as the
non-moving party.
2
2
On February 14, Silver sent Sullivan a script of the video he drafted, which
included a column for “type” (i.e., words for each screen) and “visual” (i.e., visual content
for each screen) of the planned video. (Sullivan Decl., Ex. 4 (dkt. #56-4).) In that same
email, Silver also sent Sullivan a link to the “Girl Effect” video, based on Flora’s
expressed desire for the “black and white feel” of that video.3 (Def.’s PFOFs (dkt. #53) ¶
45 (quoting Sullivan Depo. (dkt. #50) 67).) In addition to asking Sullivan to review the
video before creating her illustrations, Silver sent Sullivan an email the next day, which
contained approximately 14 “rough sketches” of the proposed illustration work.
(Sullivan Decl., Ex. 5 (dkt. #56-5); Fallon Decl., Ex. 1 (dkt. #54-1).) Those sketches
appear to contain computer generated type with hand-drawn sketches.4
B. The Estimate
That same day, February 15th, Sullivan responded with an email in which she
“estimated the project at 5,” meaning $5,000, and attached a document named
“Estimate-7sources.” (Sullivan Decl., Ex. 7 (dkt. #56-17).) Although the sole defendant
in this case is Flora, not Designomotion, Sullivan relies on the terms of this Estimate in
support of her argument that she is the sole author of the copyrighted illustrations.
The Estimate provides in part:
The “Girl Effect” video is an animated video that had come out earlier that year. See “The Girl
Effect: The Clock Is Ticking,” Youtube, https://www.youtube.com/watch?v=1e8xgF0JtVg (last
visited Sept. 21, 2016).
3
Rather than placing images of Silver’s sketches and other relevant images, including the
copyrighted illustrations, in the facts section, the court will include them below in the opinion,
finding that it is more useful to place the images in comparison for purposes of analyzing whether
Sullivan has a valid copyright.
4
3
If the Client [designated as “Designomotion, Joseph Silver”]
confirms that the Illustrator should proceed with the
assignment based on this Estimate, it is understood that the
assignment shall be subject to the terms shown on this
Estimate and the Client shall sign a Confirmation of
Assignment form incorporating the same specifications and
terms. If the assignment proceeds without a Confirmation of
Assignment being signed by both parties, the assignment shall
be governed by the terms and conditions contained in this
Estimate.
(Id. at 2.)
The “Grant of Rights” section of the Estimate appears as follows:
(Id.)
Finally, the Estimate states that:
“All rights not expressly granted shall be reserved to the illustrator,
including but not limited to all rights in sketches, comps, or other
preliminary materials.” (Id.)
“[i]f the Client wishes to make any additional uses of the Work, Client
shall seek permission from the Illustrator and pay an additional fee to be
agreed upon.” (Id.)
4
C. The 7-Sources Work
After agreeing by a February 21, 2013, email exchange to a budget range below
that contained in Sullivan’s original estimate, Silver sent Sullivan the final script and
directed her to:
mock up 1920x1080 (72dpi) layouts of the frames described
in the script -- and which I scribbled for you. Font-wise, we
would be using Wicked Grit, which I can supply. I’d be
coming to you for illustration and your eye in combining the
illustration with the typography. I would aim to provide
pretty detailed direction to save your time.
(Sullivan Decl., Ex. 8 (dkt. #56-8); Fallon Decl., Ex. 2 (dkt. #54-2) 5-6 (final script).)
As the actual client, Flora specified the size and layout of the frames described in the
script, as well as use of the “Wicked Grit” font.5
In addition to the materials from Silver, Sullivan received a folder of “assets” from
Flora, which included prior advertising materials.
In particular, Flora provided an
advertisement of a screw with the words “WE’VE BEEN SCREWED” and a photograph
of the 7-Sources product bottle, including its label. (Fallon Decl., Ex. 3 (dkt. #54-3).)
Sullivan reviewed this advertisement before creating the illustration for the “SCREWED”
frame. Before illustrating a 7-Sources bottle, Sullivan also reviewed the photograph in
the advertisement of an actual 7-Sources bottle, as well as a physical bottle.
In her declaration, Sullivan describes in great detail her process for creating the
illustrations at issue in the Flora 7-Sources project, including conducting background
The Wicked Grit font appears to be available free on-line. See Google search of “wicked grit
font,” https://www.google.com. In any event, Sullivan is not claiming its use to be part of her
copyright.
5
5
research on various objects, creating rough sketches on a chalkboard, creating an art
board within Adobe Illustrator, which included use of a tablet with a pen, creating a new
layer for each new art element, creating a color palette, and laying out typography,
among other steps.
(Sullivan Decl. (dkt. #56) ¶¶ 25-27.)
There is no dispute that
Sullivan included a representation of the Flora logo in her illustration of the 7-Sources
bottle based on the bottle images that she had looked at, intending for the representation
to be recognizable as the Flora logo.
On March 13, Sullivan sent Designomotion an invoice for $2,500 for the
“Illustration for Flora 7 Sources.”
(Sullivan Decl., Ex. 9 (dkt. #56-9).)
These
illustrations created by Sullivan are the same as those registered in the ‘930 copyright.
D. Flor-Essence Work
In April or early May 2013, Sullivan was commissioned by Silver to create
illustrations for a second Flora video, the Flor-Essence video. For this project, Silver
again sent Sullivan approximately two dozen preliminary sketches, though these images
contain more computer-generated content than the rough hand-drawn sketches provided
as part of the 7-Sources project. (Fallon Decl., Ex. 5 (dkt. #54-5).)6 Also similar to the
7-Sources project, Silver provided Sullivan with a script for the Flor-Essence video
project, which similarly indicated places for “type” and “visual” by frame. (Fallon Decl.,
The parties agree that the sketches provided to the court include certain handwritten notes by
Sullivan and that the image of the 7 Sources bottle in a few of the sketches is the one Sullivan
had prepared for the 7-Sources video. (Def.’s Reply to Def.’s PFOFs (dkt. #62) ¶¶ 49-50.)
Sullivan’s additions are difficult to see in the copy provided to the court. For purposes of
summary judgment, the court will assume that Silver sent Sullivan sketches without those
additions but that version of the document was not preserved. Regardless, there is no dispute
that Silver sent Sullivan a four-page document containing approximately 23 rough illustrations.
6
6
Ex. 6 (dkt. #54-6).)
Sullivan used the visual column of the script to guide the
illustration of the frames of the Flor-Essence video, and the type column contained the
actual words she formatted into those frames. Here, too, Sullivan used the Wicket Grit
font, as directed by Flora.
Specific to this project, Sullivan received reference materials from Flora containing
images of “Great 8” plants.
(Fallon Decl., Ex. 7 (dkt. #54-7).)
While Sullivan
acknowledged that she needed images of the plants to create the illustrations, she
nonetheless testified at her deposition that she did not use the images provided by Flora.
Instead, she claimed to have “probably used several sources,” and more specifically that
she “Googled the plant names and looked at images of that particular plant.” (Sullivan
Depo. (dkt. #50) 95.)
Sullivan completed this project in May 2013 and submitted an invoice dated June
3, 2013, for $3,000 to Designomotion for payment. The images Sullivan created are the
same as those registered in the ‘717 copyright. The invoice included the following terms
and conditions:
Any usage rights not exclusively transferred are reserved to
the illustrator. Usage beyond that granted to the Client
her[e]in shall require payment of a mutually agreed-upon
additional fee subject to terms.
Rights Transferred: For use in 1:30 animated spot for web
and TV.
Duration of Usage: In perpetuity
Limitations of media in which used: Video for web and
television
Limitations on geographical use: none
7
Grant of reproduction rights is conditioned on receipt of
payment.
(Sullivan, Dec., Ex. 10 (dkt. #56-10).)
For both projects, in addition to providing the illustrations in JPEG file format,
Sullivan also provided her original, multi-layered source art.
In particular, Sullivan
delivered to Silver files that included 36 multi-layered source art files for the 7-Sources
project, and 54 multi-layered source art files for the Flor-Essence project.
E. Copyright Registrations
On November 6, 2013, Sullivan registered the copyright for “7 Sources
Illustration Collection,” Registration No. VA 1-888-930, as the sole author. Flora points
out that she did not complete “Space 6: Derivative Work or Compilation.” Sullivan
does not dispute this, but contends this was because the illustrations were not derivative
or a compilation. The ‘930 copyright registration identifies 14 “frames,” a 7S-Bottle
Illustration, a Storyboard and “AmyTex” as the contents. (Sullivan Decl., Ex. 1 (dkt.
#56-1).)
On December 12, 2013, Sullivan registered the copyright for “FEV Illustration
Collection,” Registration No. VA 1-893-717, also as the sole author. Here, too, Flora
points out that Sullivan did not complete Space 6, and Sullivan responded similarly. The
‘717 copyright identifies 12 frames, a “Farm,” “Herbs,” Amy Tex” and “Amy Tex
Bubble” as the contents. (Sullivan Decl., Ex. 2 (dkt. #56-2).)
8
In addition to the illustrations, for both of the copyright registrations, Sullivan
also registered a background texture. (See Sullivan Decl., Ex. 1 (dkt. #56-1) 20; id., Ex. 2
(dkt. #56-2) 18-19.)
F. Alleged Copying
Sullivan alleges that the illustrations that she specifically created for the 7-Sources
and Flor-Essence videos were used in other promotions and advertisements, including the
Floradix video, foreign language versions of the Flor-Essence video and other online
promotional advertising.
OPINION
In order to prove copyright infringement, Sullivan must establish two elements:
“(1) ownership of a valid copyright, and (2) copying of constituent elements of the work
that are original.” Janky v. Lake Cnty. Convention & Visitors Bureau, 576 F.3d 356, 361
(7th Cir. 2009) (quoting Feist Publ’ns, Inc. v. Rural Tel. Servs. Co., 499 U.S. 340, 361
(1991)). As described above, the focus of this opinion -- consistent with the focus of
defendant’s motion for summary judgment -- is on the first element. “To qualify for
copyright protection, a work must be original to the author. Original, as the term is used
in copyright, means only that the work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some minimal degree
of creativity.” Feist Publ’ns, Inc., 499 U.S. at 345.
Because Sullivan obtained certifications of registration for both the 7-Sources
illustrations and for the Flor-Essence illustrations within five years of their first
9
publications, those registrations constitute prima facie evidence of the “validity of the
copyright and of the facts stated in the certificate.” See 17 U.S.C. § 410(c). Still, the
presumption of validity is a rebuttable one, with the burden falling on defendant to prove
that a copyright is not valid. Mid Am. Title Co. v. Kirk, 59 F.3d 719, 721 (7th Cir. 1995)
(“We note, however, that this is simply a rebuttable presumption.”).
In light of the fact that this is defendant’s motion on an issue for which it bears
the burden of proof, to grant summary judgment defendant “must lay out the elements of
the claim, cite the facts which it believes satisfies these elements, and demonstrate why
the record is so one-sided as to rule out the prospect of a finding in favor of the nonmovant on the claim.” Hotel 71 Mezz Lender LLC v. Nat’l Retirement Fund, 778 F.3d 593,
601 (7th Cir. 2015). For the reasons that follow, defendant does not meet this high
hurdle.
I. Joint Work7
Here, defendant Flora principally contends that Silver8 and Sullivan are joint
authors of the illustrations contained in the ‘930 and ‘717 registrations as a matter of
Before turning to the question of whether the illustrations constitute a joint work, the court
notes that Sullivan registered the two sets of illustrations as collections, apparently treating each
set as a single work. See 37 C.F.R. § 202.3. While the parties point to specific illustrations or
images in support of their respective arguments on joint authorship, consistent with the parties’
approach, the court is evaluating the legal question of copyrightability in view of the entire
collection, not each, individual discrete illustration. As such, the court sees no basis to consider
defendant’s discrete challenge based on the background as an element of the collections, at least
at this time.
7
The court opts to refer to the alleged joint author as Silver, rather than Designomotion, but
there seems to be no material distinction for purposes of determining joint authorship between
Silver and his wholly-owned corporate entity.
8
10
law. Title 17 U.S.C. § 201(a) provides that “[t]he authors of a joint work are co-owners
of copyright in the work.” As such, “the joint authors hold undivided interests in [the]
work, despite any differences in each author’s contribution.” Janky, 576 F.3d at 361
(quoting Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1068 (7th Cir. 1994)). As joint
authors, both authors may use or license the joint work. Id. Moreover, if Silver is a joint
author, then Sullivan does not own the copyright exclusively, and Flora would have a
right to use the illustrations with Silver’s permission. See Janky, 576 F.3d at 361 (“The
question is, was Janky the only author? If not—if Farag was a co-author—then Janky
does not own the copyright exclusively, and the Bureau had a right to use the song with
Farag’s permission.”).
In Erickson v. Trinity Theatre, Inc., the Seventh Circuit considered the language of
17 U.S.C. § 101, defining a “joint work” and determined that to satisfy that definition,
there must be “(1) intent to create a joint work; and (2) contribution of independently
copyrightable material.” Janky, 576 F.3d at 362 (citing Erickson, 13 F.3d at 1068, 1071).
The first is generally an issue for the jury, while the second is for the court to determine.
See Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 110 (2d Cir. 2002)
(“[a]uthorship is generally a question for the jury”); Janky, 576 F.3d at 363 (citing
Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir. 2004) (finding for defendant on the
undisputed facts as to joint authorship, while concluding that “copyrightability is always
an issue of law”). The court will consider each element in turn.
11
A. Intent to Create a Joint Work
As for the first element, the Seventh Circuit in Erickson, and reinforced in Janky,
explained that:
the intent prong does not have to do with the collaborators’
intent to recognize each other as co-authors for purposes of
copyright law; the focus is on the parties’ intent to work
together in the creation of a single product, not on the legal
consequences of that collaboration.
Id. (citing Erickson, 13 F.3d at 1068-69). Moreover, Sullivan’s position now is of no
import; instead, the question is whether Sullivan and Silver and/or Flora “intended to be
joint authors at the time the work was created.” Id. (citing Erickson, 13 F.3d at 1070).
Erickson and Janky provide additional guidance on determining this issue of intent.
In Erickson, the court considered whether three copyrighted plays, each a compilation of
scenes and sonnets from Shakespeare and other writers of his time, were joint works
between the playwright and certain actors. Erickson, 13 F.3d at 1063, 1071-72. The
court first considered two of the plays together, finding that neither presented a close
question on intent. For the first play, the court found that one actor’s suggestion that
the playwright include a passage from Macbeth and add an introduction to the play did
not render him a joint author, especially given that he conceded the playwright
determined whether his contributions were included. Id. at 1072. As for the second
play, the court similarly relied on the fact that the playwright “decided which of the
actors’ suggestions were incorporated into the script” to conclude that there was no
intent that the actors be considered joint authors. Id. at 1072. With respect to the third
play, however, there was evidence that at least two of the scenes “were developed through
12
a collaborative process,” and initially, the playwright even credited that actor as an
author of that play. Id. As such, the court found that the third play passed the intent
hurdle, though as explained below, it failed on the second element of showing that the
actor’s contribution was independently copyrightable. See id.
In Janky, the court considered whether a song was a joint work. The plaintiff,
Janky, wrote the music and lyrics for a song she called “Wonders of Indiana.” Janky, 576
F.3d at 359. The song was commissioned by the defendant Lake County Convention
and Visitors Bureau to promote tourism in Lake County, Indiana. Janky then showed
the song to Farag, one of the other members of her doo-wop group. Farag “recommended
revising the lyrics to better suit the Bureau’s vision.” Id. at 360. Janky agreed to make
those changes, and testified that Farag’s recommendations “accounted for 10 percent of
the lyrical content.”
Id.
With those revisions in place, Janky filed a new copyright
registration, listing Farag as a co-author, but then claimed that her representation of joint
authorship in the new copyright registration was a mistaken attempt “to express her
gratitude.” Id. at 362. In light of this “post hoc rationalization,” as well as the fact that
Farag made “significant contributions” and “wielded considerable control over what the
song finally looked like,” the court was unpersuaded, finding that the intent element was
satisfied. Id.
From these two cases, the court finds that evidence of a significant contribution
and some measure of control forms a sufficient basis for inferring intent to produce a
joint work. In contrast, Sullivan mainly relies on a district court case from New York in
support of her argument that neither Silver nor Flora are joint authors. In SHL Imaging,
13
Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D.N.Y 2000), the court rejected the
argument by defendant, a manufacturer of picture and mirror frames, that it was a joint
author of the copyrighted work -- photographs of the frames. The court explained that
“the copyrighted works at issue are the photographs, not the frames,” and that the
“[m]ere selection of the subject matter to be photographed” or “ownership of the physical
embodiment of a work” by itself “does not create joint authorship.” Id. at 315. While
this case may be helpful in considering Flora’s possible role as a joint author in simply
providing a bottle of one of its products or photographs of common plants, the facts in
SHL Imaging are readily distinguishable from the facts here, involving Silver’s more
substantial contribution and control over what was ultimately submitted to Flora (the
close analogue to the manufacturer in SHL Imagining). Indeed, the court is hard-pressed
to analogize in any way Silver’s contribution and role to that of the frame manufacturers
in this case.
Sullivan also relies heavily on the language in the Estimate described in the fact
section above, granting only a right to use the illustrations in the respective videos, and
limiting any other use.
The fact that Sullivan attempted to describe her and
Designomotion’s respective legal rights in an estimate attached to an email appears of
limited weight for at least two reasons. First, it is uncertain if Silver even opened the
attachment or otherwise reviewed it.
Rather, Silver appeared focused solely on the
amount of money Sullivan would charge to complete the work, consistent with his
request for an estimate. Indeed, in his email response, Silver simply thanks Sullivan for
“the note,” without referencing anything about an attachment. (Sullivan Decl., Ex. 8
14
(dkt. #56-8) 2.) During his deposition, Silver simply testified that he “recall[ed] an
estimate in a body of an email.” (Silver Depo. (dkt. #43) 61; id. at 64 (“She got back to
me with an email. In the body of the email, she included an estimate. And on that basis,
I rejected her estimate.”).) However, Silver did not sign the actual Estimate or any other
contract, including an assignment contemplated in the Estimate. To the extent that the
Estimate could be seen as an offer, Silver rejected Sullivan’s offer, and negotiated an
amount of half that offered by Sullivan. Moreover, except for the terms and conditions
included on the invoice, there is no similar purported assignment of rights with respect to
the Flor-Essence project.
In sum, there is no evidence compelling a finding that the
estimate was a negotiated agreement or otherwise reflects the Sullivan and Silver’s intent
not to work collaboratively on these illustrations. Indeed, absent such evidence, the trier
of fact will have to assess whether Silver’s failure to raise any concern with the terms and
conditions in the Estimate has any bearing on his intent that this not be a collaborative
work.
Second, and perhaps more critically, Sullivan’s assertion of certain legal rights and
an attempt to carve out her rights under copyright law is not controlling, or perhaps even
material. As Janky explained, the question of intent to create a joint work “does not have
to do with the collaborators’ intent to recognize each other as co-authors for purposes of
copyright law.” 536 F.3d at 362. Instead, the focus is on “the parties’ intent to work
together in the creation of a single product.”
Id.
More probative is Sullivan’s own
contemporaneous statement at the outset of the 7-Sources project describing the work
with Silver as a “collaboration” -- although she testified at her deposition that she used
15
that term in humor. (Sullivan Depo., Ex. 6 (dkt. #56-6); see also Pl.’s Resp. to Def.’s
PFOFs (dkt. #58) ¶ 12.)
Even putting aside how Sullivan and Silver characterize their working relationship
(either contemporaneously or in more recent court filings), perhaps the best evidence of
their intent to collaborate is in Silver’s contribution, some dictated by Flora, of frame-byframe sketches, frame-by-frame text, input on the overall impression or feel of the
illustrations with reference to the Girl Effect video, selection of the font, and direction on
layout and size. See Janky, 576 F.3d at 362 (finding “post hoc rationalization . . . at odds
with the significant contributions made by Farag”); see also Thomson v. Larson, 147 F.3d
195, 201 (2d Cir. 1998) (“[C]o-authorship intent does not turn solely on the parties’
own words or professed state of mind,” instead such a determination involves a “nuanced
inquiry into factual indicia of ownership and authorship.”).
Indeed, when viewed in
context, Silver, not Sullivan, appears to have greater control over the ultimate work
Sullivan would copyright, as the principal interpreter of Flora’s desired product and
arbiter as to what would be submitted to Flora for approval.
In its briefs, defendant presents images of Silver’s sketches and video scripts
juxtaposed against the copyrighted illustrations to demonstrate the extent of Silver’s
contribution and control over the final illustrations.
Table 1 shows Silver’s original
sketches for the 7-Sources project next to the finished, copyrighted collection of
illustrations:
16
17
18
(Def.’s Br. (dkt. #52) 9-11.)
Silver’s script of the video provides additional support for a finding that Silver
significantly contributed to and controlled the 7-Sources illustrations:
19
(Id. at 13, 14.)
The same is true with respect to the sketches Silver provided to Sullivan as part of
the Flor-Essence project.
20
21
22
(Id. at 22-25.)
Similarly, the Flor-Essence script drafted by Silver was incorporated into the final
illustrations:
23
24
(Id. at 26.)
Looking at the extent of Silver’s contributions to the content, images and their
placement, were it not for Sullivan benefiting from the presumption created by the
copyrights themselves, the defendant would be entitled to summary judgment in favor of
joint authorship. In Janky, the court affirmed the grant of summary judgment in the
defendant’s favor on its challenge to the validity of the plaintiff’s copyright based on
joint ownership. In that case, unlike here, the court also had the benefit of plaintiff’s
copyright registration acknowledging Farag’s contribution. See Janky, 576 F.3d at 362
(noting that “billing or credit may be evidence of intent to create a joint work” (internal
citation and quotation marks omitted)). While the court finds defendant’s evidence and
argument persuasive on the intent prong of the joint authorship test as to Silver, a jury
will be allowed to hear testimony and argument on this issue before the court renders its
final decision in the form of a ruling on directed verdict or, more likely, motion after
verdict.
Consistent with the parties’ approach on summary judgment, the court’s focus
until now has been on Silver as a joint author. The evidence of Flora as a joint author is
significantly more limited, especially considering Sullivan appears to have had no contact
with any Flora employee until after Sullivan completed her work for Designomotion,
indeed until approaching Flora with concerns of copyright infringement. Given this
dynamic, Flora’s status as a joint author appears to hinge on Silver’s status as a joint
author.
Stated another way, absent a showing that Silver and Sullivan intended to
collaborate on these two collections of illustrations, there would be no basis for finding
25
that Sullivan and Flora intended to collaborate. Moreover, given the holding in Janky
that Janky’s co-author Farag could grant the Bureau rights to the song, there seems no
reason even to decide if Flora could be viewed as a co-author in order to use or continue
to use the illustrations in other promotional materials and advertisements.9
Regardless, the court need not consider whether the parties intended for Flora to
be a co-author, considering that its contribution considered in light of the collections of
illustrations, each viewed in their entirety, does not appear to be independently
copyrightable.
B. Independently Copyrightable Contribution
As for the second element of joint authorship identified in Erickson, the Seventh
Circuit rejected a “more than de minimis” requirement, instead requiring that to
constitute a joint work, each contribution must be “independent copyrightable.” 13 F.3d
at 1070-71. This holding was reiterated in Janky. 576 F.3d at 361-63. Here, too, the
lines drawn in Erickson and Janky provide guidance.10
With respect to the one play for which the court found an intent to produce a
joint work, in Erickson the court concluded that the actor’s contributions to the play
Now, if Silver were to receive proceeds from Flora for its use of the illustrations, then Silver
would be obligated to account to his co-author Sullivan for any profits. Erickson, 13 F.3d at 1068
(citing 17 U.S.C. § 201).
9
After Erickson, but before Janky, the Seventh Circuit carved out an exception that does not
appear to apply here -- at least, defendant has not developed an argument in support of the
exception. See Gaiman v. McFarlane, 360 F.3d 644, 659 (7th Cir. 2004) (relaxing independently
copyrightable requirement in instances where “[t]he finished project is copyrightable, yet . . .
none of the separate contributions of the . . . collaborating artists would be”).
10
26
“were not independently copyrightable,” finding that such “[i]deas, refinements and
suggestions, standing alone are not the subject of copyrights.” 13 F.3d at 1072. In
contrast, while acknowledging that it was a “close case,” the Janky court found that
Farag’s contributions to the tourism song “went beyond” that provided by the actor in
Erickson:
“They were concrete expressions and thus pass the test of copyrightability
where mere ideas fail.” 576 F.3d at 363. The court went onto explain:
while Farag’s changes may have accounted for only 10
percent of the lyrics, they were significant. They were
important not only to the final sound, but also to its
commercial viability. Before Farag became involved, the song
celebrated the charm of Indiana as a state; Farag shifted the
focus to Lake County. Without Farag’s input, it is unlikely
that the Bureau would have embraced the song the way it
did.
Id.
Given the obvious similarities of Silver’s role with Flora to that of Farag’s role with
the Bureau, Sullivan understandably directs the court to cases in support of the general
proposition that “the person providing the rough sketches is not an author.” (Pl.’s Opp’n
(dkt. #55) 19-20 (quoting Fleming v. Miles, 181 F. Supp. 2d 1143, 1156 (D. Or. 2001)).)
These cases, however, are either distinguishable or do not provide the support plaintiff
seeks. For example, in Fleming, the focus of the court’s discussion was on whether the
graphic designer -- not the plaintiff who provided sketches and ideas for album art -- was an
author. 181 F. Supp. 2d at 1156 (concluding that the graphic designer in modifying
designs and creating new artwork based on instructions “played a significant role in the
design process and physically created the final product”).
27
Indeed, the district court
concluded that a trial was necessary to determine whether the plaintiff who provided the
sketches was a joint author. Id.
Another case cited by plaintiff, M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d
1486 (11th Cir. 1990), is distinguishable based on the very limited contribution of a
“thumbnail sketch” of a floorplan relative to the final product of architectural drawings
for a new home. Id. at 1493 (“Ballough’s contribution to the final drawings produced by
Unlimited was a thumbnail sketch of the floor plan he desired for the ‘Islander II’ and
approval authority thereafter.”); see also Kendall Holdings, Ltd. v. Egen Cryogenics LLC, 630
F. Supp. 2d 853, 866 (S.D. Ohio 2008) (finding defendant’s evidence, consisting of
“vague statements about contributing drawings and charts does not rebut the
presumption created by Plaintiff’s certificate of registration”); BancTraining Video Sys. v.
First Am. Corp., 956 F.2d 268, 1992 WL 42345, at *3 (6th Cir. Mar. 3, 1992)
(unpublished) (holding that mere “supervision of the production and [provision of] ideas
for the videotapes” was not enough to find defendant a joint author).
Here, defendant has put forth compelling evidence that Silver’s preliminary
sketches and script for each collection of illustrations were concrete expressions, beyond
mere ideas, refinements and suggestions, and therefore independently copyrightable. Cf.
Vent v. Mars Snackfood US, LLC, 611 F. Supp. 2d 333, 339 (S.D.N.Y.), aff’d, 350 F. App’x
533 (2d Cir. 2009) (finding plaintiff’s advertising idea “general and undeveloped,”
specifically noting that “[s]he did not draft any examples or sketches of the
advertisement, did not specify the medium that the advertisement would take, and did
not write a script”). Even if not independently copyrightable, there is at least room to
28
argue that without Silver’s contributions, Sullivan’s work would be equally lacking. See
Gaiman, 360 F.3d at 659 (relaxing independently copyrightable requirement in instances where
“[t]he finished project is copyrightable, yet . . . none of the separate contributions of the . . .
collaborating artists would be”). Regardless, because a jury trial is necessary on the question
of intent, the court will hold open this legal issue for the court as well.
II. Derivative Works
In addition to the joint authorship challenge, Flora also seeks summary judgment
on certain images based on preexisting works, namely the “Screwed” advertisement which
informed the “Screwed” frame in the ‘930 registration, the Flora bottle, including its label
and logo, and photographs of the “Great 8” plants.11 As far as the court can tell -- and
defendant’s argument based on derivative works theory is difficult to follow -- defendant
contends that:
(1) Sullivan’s illustrations containing these items are not sufficiently
original to render them copyrightable; and (2) even if copyrightable as derivative works,
Sullivan’s failure to disclose the preexisting works renders her registrations invalid.12
The Copyright Act defines a “derivative work” as:
a work based upon one or more preexisting works, such as a
translation,
musical
arrangement,
dramatization,
Defendant also posits an argument based on Sullivan’s illustrations being derivative works of
Silver’s sketches and scripts. The court views this as an alternative version of the joint authorship
defense, which appears stronger and more consistent with the facts at issue in this case.
Accordingly, the court has only considered the derivative works challenge with respect to Flora’s
preexisting works.
11
Defendant also may be arguing that Flora’s subsequent use of these images cannot constitute
copying because of Flora’s pre-existing works. Defendant is correct that if Sullivan’s illustrations
are derivative works, her copyright only covers her incremental contribution. This defense,
however, concerns the second prong of plaintiff’s infringement claim -- copying -- and that, too,
requires a jury determination.
12
29
fictionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in
which a work may be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations, elaborations, or
other modifications which, as a whole, represent an original
work of authorship, is a “derivative work”.
17 U.S.C. § 101. An author of a derivative work is entitled to “copyright protection in
the incremental original expression he contributes as long as the derivative work does not
infringe the underlying work.” Schrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 518 (7th
Cir. 2009) (citing 17 U.S.C. § 103(a)).13 “The copyright in a derivative work, however,
‘extends only to the material contributed by the author of such work, as distinguished
from the preexisting material employed in the work.” Id. In Schrock, the court clarified
that there is no higher standard of originality for purposes of determining whether a
derivate work is entitled to copyright protection; rather, “[t]he test of originality is
concededly one with a low threshold in that all that is needed is that the author
contributed something more than a merely trivial variation, something recognizably his
own.” Id. at 521 (internal citation and quotation marks omitted).
In support of its argument that Sullivan’s illustrations are not entitled to copyright
protection, defendant again submits the images of Flora’s preexisting works -- the
“screwed” advertisement, the 7-Sources bottle, Flora’s logo, and the “Great 8” plants
juxtaposed with Sullivan’s illustrations.
Here, however, the evidence is far less
compelling.
To be non-infringing, the author of the derivative work need only “have permission to make the
work from the owner in the underlying work,” and need not have permission to copyright the
derivative work. Schrock, 586 F.3d at 523.
13
30
(Def.’s Br. (dkt. #52) 16.)
(Id. at 17.)
31
(Id. at 18.)
32
33
(Id. at 29-30.)
With the exception perhaps of the Flora logo, the court finds that Sullivan’s
contributions constitute more than a “merely trivial variation” of the underlying,
preexisting works. Schrock, 586 F.3d at 521. As already alluded to, defendant has a more
profound problem with its efforts to pick off these discrete images: each is part of only
certain illustrations.
Defendant fails to explain or develop any argument as to how
Sullivan’s reliance on Flora’s preexisting works with respect to specific, discrete images
would render the collection of illustrations as a whole derivative. While courts have found
that “copyright protection does not extend ‘to derivative works if the pre-existing work
34
tends to pervade the entire derivative work,’” defendant does not, and cannot credibly,
argue that this is the case here. Sobhani v. @Radical.Media Inc., 257 F. Supp. 2d 1234,
1239-40 (C.D. Cal. 2003) (quoting 3 Nimmer on Copyright § 3.06 (2002)).
Second, defendant argues that plaintiff’s registrations are invalid because she failed
to disclose Flora’s underlying, preexisting works, citing 17 U.S.C. § 411(b).
That
provision provides:
(b)(1) A certificate of registration satisfies the requirements of
this section and section 412, regardless of whether the
certificate contains any inaccurate information, unless-(A) the inaccurate information was included on the
application for copyright registration with knowledge that it
was inaccurate; and
(B) the inaccuracy of the information, if known, would have
caused the Register of Copyrights to refuse registration.
There are two core problems with this defense.
Consistent with the express
language of the provision, to find a copyright registration invalid based on “inaccurate
information,” defendant would first need to prove that Sullivan knew that the
information was inaccurate. As described above, Sullivan’s claimed failure to disclose
preexisting works turns on a determination of whether use of certain images in some of
her illustrations renders the entire collection of images a derivative work.
Even if
defendant had developed this legal argument, the court would be hard-pressed to find
that the omission of such evidence constitutes a knowing misrepresentation, rather than
just a mistake based on a misunderstanding of the law. The two cases defendant cites in
support actually illustrate the type of misinformation required to satisfy this requirement,
and they are readily distinguishable from the omissions claimed here. See R. Ready Prods.,
35
Inc. v. Cantrell, 85 F. Supp. 2d 672, 692 (S.D. Tex. 2000) (finding a knowing
misrepresentation where copyright registrant failed to disclose that the “overall concept
behind and numerous elements of Plaintiffs’ registered works are plainly copied from
existing works by The Ritz Corporation and Presidential”); GB Mktg. USA Inc. v.
Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 775 (W.D.N.Y. 1991) (finding a
knowing misrepresentation where copyright registrant of an illustration of a label failed
to disclose the label itself).
Even if the court were in a position to resolve at summary judgment the issue of
whether Sullivan knowingly failed to disclose Flora’s preexisting works, there is a second
problem. The Seventh Circuit advises that determinations of materiality of an omission
are for the Register of Copyrights. See DeliverMed Holdings, LLC v. Schaltenbrand, 734
F.3d 616, 625 (7th Cir. 2013) (discussing 17 U.S.C. § 411(b)(2)). As a result, “courts
can demand that the party seeking invalidation first establish that the other
preconditions to invalidity are satisfied before obtaining the Register’s advice on
materiality.” Id. Not only has defendant failed to make such a showing, but it has not
asked the court to seek a determination on materiality from the Register of Copyrights.
On this record, therefore, the court must reject defendant’s challenge to copyrightability
based on Sullivan’s failure to disclose preexisting works on her application.
III. Next Steps
Consistent with the above discussion, a jury trial will be necessary in this case.
Before that, however, the court must address defendant’s challenge to the scope of
permissible damages raised in various discovery disputes before this court. In light of the
36
court’s schedule, and the possibility that the parties might need some limited time to
complete discovery on damages, the current schedule will be stricken and an in-person
hearing will be scheduled to address any remaining discovery issues and establish a new,
reasonably prompt trial date.
ORDER
IT IS ORDERED that:
1) Defendant Flora, Inc.’s motion for summary judgment (dkt. #51) is DENIED.
2) The current schedule, including the trial date, is STRICKEN.
3) An in-person hearing will be held on Friday, October 14, 2016, at 1:30 p.m. to
address any remaining discovery issues and establish a new trial date.
Entered this 7th day of October, 2016.
BY THE COURT:
/s/
__________________________________
WILLIAM M. CONLEY
District Judge
37
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?