Beard v. Helman

• Decision Date: 31 March 2022
• Docket Number: 4:21-CV-00680,No. 4:21-CV-00680
• Citation: 595 F.Supp.3d 332
• Parties: Edward P. BEARD, Jr., Plaintiff, v. Arik HELMAN, et al., Defendants.
• Court: U.S. District Court — Middle District of Pennsylvania

595 F.Supp.3d 332

Edward P. BEARD, Jr., Plaintiff,

v.Arik HELMAN, et al., Defendants.

No. 4:21-CV-00680

United States District Court, M.D. Pennsylvania.

Filed March 31, 2022

Austin White, John G. Himes, McCormick Law Firm, Williamsport, PA, for Plaintiff.

Michael C. Petock, Petock & Petock, LLC, Valley Forge, PA, for Defendants.

MEMORANDUM OPINION

Matthew W. Brann, Chief United States District JudgePresently before the Court is Defendants’ motion for summary judgment.¹This motion, having been fully briefed,² is ripe for disposition.For the following reasons, the Court will grant in part and deny in part Defendants’ motion.

I.BACKGROUND³

The genesis of this dispute occurred in 2008, when Edward P. Beard, Jr., and Arik Helman attended the Florida Renaissance Fair as vendors and discussed Helman's difficulty manufacturing a boot button with a dragon image on the button.⁴Over the course of the next week, Beard created a circular image of a dragon (the "Image") and orally offered to license the Image for Helman's use;⁵ although the exact scope of the licensing agreement is in dispute, Helman acknowledges that Beard "produce[d] a specific licensing [agreement] for [Defendants] to use [the Image] solely for [their] footwear products."⁶

It is undisputed that there were several terms attached to the license.⁷First, Defendants must always attribute the Image to Beard with his copyright of the Image noted.⁸Second, Defendants must receive Beard's approval prior to the sale of any item that featured the Image.⁹Third, the parties agreed that they would cross-promote each other's businesses once buttons that featured the Image went on sale.¹⁰Beard also requested that, once the boot buttons were complete, Defendants provide him with a pair of boots that feature the buttons, although Helman asserts that the parties only agreed that Helman would provide Beard with "a set of the hardware."¹¹

Despite the creation of the Image in 2008, it took several years of work to turn the Image into a design that was suitable for use in a boot button.Over the following two years, Beard and Helman had several discussions regarding the difficulty that Helman was having with creating a mold and casting the Image into a button form, as it was difficult to reduce the size of the Image and retain any meaningful level of detail in the resulting mold.¹²Beard and Helman then had no communication for several years.¹³

In 2019, Defendants were able to create a mold of sufficient quality and began producing boot buttons that featured the Image (the "Boot Buttons").¹⁴Beard contacted Helman in July 2020 after learning through a third party that Defendants had begun producing and selling the Boot Buttons without first obtaining Beard's consent.¹⁵

This sparked a series of emails and Facebook message exchanges between Beard and Helman that form a core portion of this motion for summary judgment.On July 20, 2020 at 10:21 a.m., Beard emailed Helman regarding the Boot Buttons, and asserted that, in 2008, the parties had agreed that Helman may use the Image for boot buttons and, "in exchange," Helman was to: (1) provide Beard with a pair of boots that incorporated the Boot Buttons; (2) acknowledge that the artwork was licensed from Beard "with the appropriate copyright date"; and (3) contact Beard prior to selling the Boot Buttons.¹⁶Beard asserted that Helman may "correct this" issue by doing three things: (1) announce that the artwork used on the Boot Buttons was officially licensed from Beard and update all of Defendants’ prior social media posts regarding the Boot Buttons to include said language; (2) add a link to Beard's website with every social media post that mentioned the Boot Buttons; and (3) provide Beard with a pair of boots that utilized the Boot Buttons.¹⁷

At 12:54 p.m. on the same day, Helman sent a reply email to Beard, in which he acknowledged that Helman licensed the Image to him, that he failed to notify Beard prior to listing the Boot Buttons for sale, and that he failed to properly attribute the Image to Beard.¹⁸Helman offered to provide Beard "with the hardware [he] promised" and make the requested changes to Defendants’ social media posts and offer "some additional layer of active cross" promotion.¹⁹Beard replied by asserting that Helman's offer to provide Beard with "boot buttons is an insult."²⁰

After some back and forth between Beard and Helman, on July 20, 2020 at 5:39 p.m., Beard reiterated that an "acceptable ... remedy" for him would be for Defendants to: (1)"[u]pdate all of your current postings with the phrase ‘officially license artwork by Ed Beard Jr.’ used with permission"; (2) include a link to Beard's website in all of Defendants’ social media posts that reference the Boot Buttons; and (3) provide Beard with a pair of boots that include the Boot Buttons.²¹Helman replied on July 21, 2020 at 2:26 p.m., stating that he would update all social media posts to include the requested language, provide a link to Beard's website, and note that the Image was copyrighted by Beard; Helman made no mention of providing Beard with the requested boots.²²

On July 21, 2020 at 8:19 p.m., Beard sent a Facebook message to Helman stating that the proposed copyright and licensing language that would be included in Defendants’ social media posts "looks good."²³Nevertheless, Beard emphasized that Helman had not addressed the request for boots which, Beard noted, was "a deal breaker."²⁴Due to this outstanding issue, Beard asserted that "we're not in an agreement stage right now[,]we're just in an understanding up to a certain point."²⁵Several minutes later, at 8:35 p.m., Helman responded via Facebook message "[p]lease let me know the size you would like.Confirm the exact writing you would like to appear and we can conclude this transaction."²⁶Just over one hour later, Helman sent an email to Beard stating that, "to move forward," Beard must confirm the accreditation language and sent information related to the boots.²⁷Helman further stated, "I also think that it would be prudent if we reduce the renegotiation of this agreement into a writing so that we do not have to have another discussion like this in 2030."²⁸

Thirteen minutes after that email, Beard responded in a Facebook message, stating that Helman had refused on three occasions to agree to provide Beard with the requested boots and, as a result, Beard was "done" negotiating and his "attorney will be in touch" with Helman.²⁹Beard and Helman then exchanged several emails and Facebook messages wherein Helman insisted that they had reached an agreement to settle the matter, while Beard insisted that they had not and that Helman must immediately cease using the Image in any products.³⁰

Unsatisfied with the attempted resolution of the parties’ dispute, Beard filed suit against Defendants in April 2021.³¹In his complaint, Beard asserts claims of copyright infringement (Count One), contributory copyright infringement (Count Two), vicarious infringement (Count Three), and breach of contract (Count Four).³²

II.DISCUSSION

A.Standard of Review

"One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses."³³The United States Supreme Court has advised that Federal Rule of Civil Procedure 56"should be interpreted in a way that allows it to accomplish this purpose."³⁴Summary judgment is appropriate where "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law."³⁵

Material facts are those "that could alter the outcome" of the litigation, "and disputes are ‘genuine’ if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct."³⁶A defendant"meets this standard when there is an absence of evidence that rationally supports the plaintiff's case."³⁷And a plaintiff must "point to admissible evidence that would be sufficient to show all elements of a prima facie case under applicable substantive law."³⁸

A judge's task when "ruling on a motion for summary judgment or for a directed verdict necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits."³⁹Thus, if "the defendant in a run-of-the-mill civil case moves for summary judgment or for a directed verdict based on the lack of proof of a material fact, the judge must ask himself not whether he thinks the evidence unmistakably favors one side or the other but whether a fair-minded jury could return a verdict for the plaintiff on the evidence presented."⁴⁰

"The mere existence of a scintilla of evidence in support of the [nonmovant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmovant]."⁴¹Part of the judge's role at this stage is to ask "whether there is evidence upon which a jury can properly proceed to find a verdict for the party producing it, upon whom the onus of proof is imposed."⁴²In answering that question, the Court"must view the facts and evidence presented on the motion in the light most favorable to the nonmoving party."⁴³

The party requesting summary judgment bears the initial burden of supporting its motion with evidence from the record.⁴⁴For example, while "at the motion-to-dismiss stage of proceedings a district court is obligated to accept the allegations in a plaintiff's complaint as true, it does not accept mere allegations as true at the summary judgment stage."⁴⁵The moving party must identify those portions of the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact."⁴⁶"Regardless of whether the moving party accompanies its summary judgment motion with affidavits, the motion may, and should, be granted so long as whatever is...