BiLLCo Int'l Inc v. Charles Prod.S Inc

Decision Date07 March 2011
Docket NumberCivil Action No. DKC 09-2692
CourtU.S. District Court — District of Maryland

Presently pending and ready for review in this copyright case is the motion of Defendant Charles Products, Inc. for summary judgment (ECF No. 28). The issues are fully briefed and the court now rules pursuant to Local Rule 105.6, no hearing being deemed necessary. For the reasons that follow, Defendant's motion for summary judgment will be denied.

I. Background

Plaintiff Billco International, Inc. ("Billco") is a full service importer of custom souvenir products incorporated in the state of New Jersey. (ECF No. 23 ¶¶ 1, 7). Billco supplies souvenir shot glasses to zoos, aquariums, national parks, and other tourist attractions. (ECF No. 30-1, at 70-71). Defendant Charles Products, Inc. ("CPI") is a Maryland corporation. (ECF No. 23 ¶ 2). CPI also designs and sells custom souvenir products to zoos, aquariums, and other tourist attractions, including souvenir shot glasses. (ECF No. 30-10, at 6). Bothparties sell souvenir shot glasses with three-dimensional dolphins and tigers protruding from the sides of the glass. Plaintiff maintains that it owns a copyright on the dolphin and tiger shot glass designs and accuses Defendant of infringement.

A. Plaintiff's Design and Production of the Shot Glasses

Plaintiff developed its line of animal themed shot glasses in 2006. Plaintiff has identified Kristen Nadler, a commercial artist for Billco, as the creator of the two copyrighted works. (ECF No. 30-2, at Interrogatory No. 3). Ms. Nadler testified that the idea for the dolphin shot glass arose from a meeting with Billco customer Dolphin Cay in early 2006. (ECF No. 30-3, at 12). Ms. Nadler asked Billco employee Jennifer McCaffery to prepare design drawings of the dolphin shot glass based on instruction and input from Dolphin Cay and herself. (Id. at 12, 16, 22). Ms. McCaffery prepared two-dimensional renderings using Adobe Illustrator that a showed a lateral view of the shot glass with the outline of a dolphin head and tail protruding from either side of the glass. (Id. at 21). Ms. Nadler reviewed the two-dimensional drawings and submitted them to Plaintiff's supplier, Keystar International Inc. ("Keystar"), along with a written description of the product and a number of reference photographs. (Id. at 14, 17). The reference photographs were images of dolphins taken from the Internet.(Id. at 14).1 Keystar then prepared a three-dimensional mold based on the information supplied by Plaintiff and the mold was approved by Plaintiff for production. (Id. at 20-21).

Ms. Nadler testified that, for the tiger shot glass, she personally prepared the two-dimensional lateral view drawing for Keystar. (Id. at 35-37). The original email transmitting the drawings and instructions to Keystar was corrupted, but in separate correspondence that could be retrieved Ms. Nadler asked Keystar to produce a molded tiger shot glass and to make a shot glass "like the black bear" along with a number of images of tigers for Keystar's reference. (ECF No. 30-6). Plaintiff has also produced a drawing of the tiger labeled as the art file for the tiger shot glass. (ECF No. 30-7). But this file is dated October 6, 2006, a month after the tiger mold was approved for production. (Id.; ECF No. 30-6, at BILLCO 00012).

Plaintiff submitted applications for copyright registration of the three-dimensional dolphin and tiger designs on October 31, 2006. (ECF No. 30-1, at 65, 66). The dolphin shot glass

was assigned U.S. Copyright Registration No. VA-1-380-656, and the tiger shot glass was assigned U.S. Copyright Registration No. VA-1-388-655. (ECF No. 23 ¶¶ 9-10; ECF Nos. 30-9 and 30-10). The registrations list Billco as the author of the works, and they are classified as "works made for hire." (Id.). Attached to the applications were photographs of the shot glasses.

B. Defendant's Design and Production of the Shot Glasses

CPI began to develop its line of three-dimensional animal shot glasses in 2008. In July 2008, Glen Heitman, President of CPI, saw dolphin and fish shot glasses for sale at the Texas Aquarium gift shop. (ECF No. 30-10, at 11-14). He purchased sample dolphin and fish shot glasses from the aquarium and gave them to CPI's product development manager, Doug Miller, when he returned to Maryland. (Id. at 14-15). A CPI employee then contacted one of CPI's suppliers in Hong Kong to see if they could supply the shot glasses to CPI. (ECF No. 30-13, at 35; ECF No. 35-14). The supplier, Keystar, is the same one that supplies Plaintiff with its souvenir shot glasses. Keystar responded "the item is one of our customer's products and they bought from us... and because of our agreement with them, we cannot sell this item to other customers." (ECF No. 32-3, at 12 (BILLCO 00249)).

Because Keystar could not supply the products, CPI began to design its own line and assigned responsibility for the project to Mike Tyree, an in-house commercial artist. Mr. Tyreetestified that he was given a bear shot glass with an anonymous handwritten note requesting that he design a line of animal shot glasses like the bear one to include a tiger and dolphin glass. (ECF No. 30-14, at 4-5, 10). Mr. Tyree prepared two-dimensional design drawings with multiple views for the tiger shot glass without looking at any reference materials. (Id. at 16). He did not see Plaintiff's dolphin or tiger shot glass until his deposition. (Id. at 20-21). These drawings were submitted to Keystar to prepare a mold, but the initial mold was deemed unsatisfactory. In response, Mr. Tyree prepared additional drawings and a tiger painting and submitted them to Keystar with a request for a new mold. (Id. at 22-23). The new mold was also unsatisfactory, and Mr. Tyree prepared a third set of drawings with extra detail for the posture and ear placement. (Id. at 24; ECF No. 15). On its third try, Keystar's mold was accepted, and CPI began to order the product for its clients.

Mr. Tyree also designed the dolphin shot glass designs for CPI. He prepared detailed drawings for two different versions that were submitted to Keystar to prepare a mold. The smaller mold was approved immediately for production. (ECF No. 30-14, at 28).

C. Procedural Background

Plaintiff learned that Defendant was also selling tiger and dolphin shot glasses in August 2009 when it obtained a copy of a CPI product brochure and also mistakenly received a shipment of CPI products from Keystar. (ECF No. 23 ¶¶ 12-13; ECF No. 32-9, at 14). In response, Plaintiff's counsel sent a letter to CPI stating that CPI did not have the right to use its copyrighted designs. (ECF No. 23 ¶ 15). Plaintiff filed its initial complaint in this court on October 16, 2009. (ECF No. 1). The amended complaint includes one count of copyright infringement and alleges that Defendant's acts constitute violations of the exclusive rights of Plaintiff under 17 U.S.C. §§ 106 and 113 and constitute copyright infringement under 17 U.S.C. § 501. (ECF No. 23). On May 10, 2010, Defendant filed a motion for summary judgment. (ECF No. 28).

II. Motion for Summary Judgment
A. Standard of Review

Defendant has moved for summary judgment pursuant to Federal Rule of Civil Procedure 56. A motion for summary judgment will be granted only if there exists no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Emmett v. Johnson, 532 F.3d 291, 297 (4th Cir. 2008). In other words, if there clearly exist factual issues "that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party, " summary judgment is inappropriate. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986); JKC Holding Co., LLC v. Washington Sports Ventures^ Inc., 264 F.3d 459, 465 (4th Cir. 2001).

When ruling on a motion for summary judgment, the court must construe the facts alleged in the light most favorable to the party opposing the motion. See Scott v. Harris, 127 S.Ct. 1769, 1774 (2007); Emmett, 532 F.3d at 297. A party who bears the burden of proof on a particular claim must factually support each element of his or her claim. Celotex Corp., 477 U.S. at 323. "[A] complete failure of proof concerning an essential element... necessarily renders all other facts immaterial." Id. Thus, on those issues on which the nonmoving party will have the burden of proof, it is his or her responsibility to confront the motion for summary judgment with an affidavit or other similar evidence in order to show the existence of a genuine issue for trial. See Anderson, 477 U.S. at 254; Celotex Corp., 477 U.S. at 324. "A mere scintilla of proof, however, will not suffice to prevent summary judgment." Peters v. Jenney, 327 F.3d 307, 314 (4th Cir. 2003). There must be"sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson, 477 U.S. at 249. "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50(citations omitted).

B. Analysis

Copyright protection extends to "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102. A copyright holder has certain exclusive rights to the work, including the right to reproduce all or any part of the copyrighted work. Id. § 106. One infringes a copyright when he or she violates one of the exclusive rights to a work held by a copyright owner, and the owner has the right to sue for infringement. See 17 U.S.C. § 501. To establish a prima facie case of copyright infringement, a plaintiff must demonstrate that (1) "he owned the copyright to the work that was allegedly copied, " and (2) "the defendant copied protected elements of the work." Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350, 353 (4th Cir. 2001).

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