Boehm v. Svehla
| Decision Date | 27 September 2017 |
| Docket Number | 15-cv-379-jdp |
| Parties | SCOTT BOEHM and DAVID STLUKA, Plaintiffs, v. SCOTT SVEHLA, et al., Defendants. |
| Court | U.S. District Court — Western District of Wisconsin |
Plaintiffs Scott Boehm and David Stluka are professional sports photographers. In this copyright infringement suit, they allege that defendants copied, printed, displayed, and sold plaintiffs' photos without authorization. Most of the defendants admit that their use of plaintiffs' photographs would infringe plaintiffs' copyrights. The main questions here concern the extent of infringement and thus damages, and in some cases, whether plaintiffs' claims have been released or are otherwise barred.
Now before the court are several motions for partial summary judgment. Plaintiffs move for summary judgment that defendants willfully infringed plaintiffs' copyright in specific photos, but they also contend that they might bring additional claims of infringement to trial. Defendants move for summary judgment that a finding of infringement is precluded by a number of affirmative defenses and that their infringement, if any, was not willful. Some defendants also move for summary judgment that they did not infringe plaintiffs' copyright, directly or indirectly. The court will grant in part and deny in part each motion. The court will also identify a range of issues that are not resolved by the parties' summary judgment motion but that the court intends to resolve as a matter of law before trial.
The following facts are material and, except where noted, undisputed. Plaintiffs object to many of defendants' proposed facts as relying on "the self-serving declaration of an interested party." Plaintiffs' objection is frivolous: a party's own affidavit can support or oppose a dispositive motion "as long as it otherwise contains information that would be admissible if he were testifying directly." Rooni v. Biser, 742 F.3d 737, 740 (7th Cir. 2014). When plaintiffs make no other objection, the court will accept the proposed fact as undisputed without further note. Most of the details of the infringement at issue in this suit will be set out in the analysis section. The court begins with the general background on plaintiffs' other copyright infringement suits and their relationship to defendants.
Plaintiffs brought suit against Dan and Ciara Zimprich and Legends of the Field, among others, in Boehm v. Zimprich (Boehm I), No. 14-cv-16 (W.D. Wis. filed Jan. 9, 2014), transferred from No. 13-cv-1031 (S.D.N.Y. filed Feb. 14, 2013). The Zimpriches own "On 2 the Field," a sports memorabilia vendor with a store in Madison. The Zimpriches made and sold prints and photo canvases of dozens of plaintiffs' photographs without authorization. They provided reproductions of plaintiffs' photographs and digital copies of plaintiffs' photographs to defendants in this suit. Legends sells sports memorabilia through its retail stores. Like the Zimpriches, Legends provided reproductions of plaintiffs' photographs and digital copies of plaintiffs' photographs to defendants in this suit.
In Boehm I, plaintiffs alleged that Legends created or sold reproductions of plaintiffs' photographs without authorization. Boehm I, No. 14-cv-16, Dkt. 33. Plaintiffs alleged that the Zimpriches used plaintiffs' photographs without authorization to create sports memorabilia products and to promote their business through advertising. Plaintiffs alleged that theZimpriches provided infringing products to Legends and to other defendants in Boehm I. The court granted plaintiffs' motion for partial summary judgment, concluding plaintiffs were entitled to judgment of infringement against Legends and the Zimpriches. Before the court could resolve the remaining damages issues in that case, plaintiffs entered into settlement agreements with Legends and the Zimpriches and released their claims against Legends and the Zimpriches. See Dkt. 373-2 and Dkt. 373-3. The parties stipulated to dismiss plaintiffs' claims against Legends and the Zimpriches with prejudice on January 16, 2015. Boehm I, No. 14-cv-16, Dkt. 174 and Dkt. 176.
Five months later, plaintiffs filed this suit, which the court will refer to as Boehm II. Plaintiffs assert copyright infringement claims against a number of defendants, alleging that defendants directly infringed plaintiffs' copyrights and contributed to the direct infringement by the Zimpriches and Legends at issue in Boehm I. Dkt. 63. The defendants fall into two groups: retail defendants who sell sports prints, posters, canvases, and other memorabilia online and in retail stores; and supply defendants who distribute sports memorabilia wholesale to retail merchants and often create the prints, canvases, and other memorabilia in question. The retail defendants are: Event USA; Nicholas Martin (who does business as defendant Sports-4-Less); Scott's Brewery Collectibles, LLC, (SBC) and its owner, Scott Svehla; and Scooter G Sports and its owner, Scott Gonnering. The supply defendants are: Jerry Miller (who does business as Signature Sports); AW Artworks LLC and its owner, Andrew Wredberg; David Thomason (who does business as Fan4Ever); and Beyond Studio Publishing LLC and its owner, Luke Wein. The facts related to each defendant's individual acts of infringement are set out in the analysis section.
While this case was pending, plaintiffs filed a new suit against the Zimpriches and Legends: Boehm v. Legends of the Field, LLC, No. 15-cv-683 (W.D. Wis. filed Oct. 23, 2015), which the court will refer to as Boehm III. In Boehm III, plaintiffs allege that the Zimpriches and Legends breached the Boehm I settlement agreements and engaged in new infringing acts, including contributing to the Boehm II defendants' direct infringement of plaintiffs' photos. Boehm III, No. 15-cv-683, Dkt. 30. Litigation continues in Boehm III.
This case arises under federal law, the Copyright Act of 1976, 17 U.S.C. § 101, et seq., so the court has subject matter jurisdiction on the basis of a federal question under 28 U.S.C. §§ 1331 and 1338(a).
Several defendants advance affirmative defenses based on the effect of the Boehm I settlement agreement, so the court will address these defenses first. The court will then turn to the cross-motions for summary judgment as to each defendant's individual acts of infringement.
Summary judgment is appropriate if a moving party "shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When, as here, the parties have filed cross-motions for summary judgment, the court "look[s] to the burden of proof that each party would bear on an issue of trial; [and] then require[s] that party to go beyond the pleadings and affirmatively to establish a genuine issue of material fact." Santaella v. Metro. Life Ins. Co., 123 F.3d 456, 461(7th Cir. 1997). If either party "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden at trial," summary judgment against that party is appropriate. Mid Am. Title Co. v. Kirk, 59 F.3d 719, 721 (7th Cir. 1995) (quoting Tatalovich v. City of Superior, 904 F.2d 1135, 1139 (7th Cir. 1990)). "As with any summary judgment motion, this [c]ourt reviews these cross-motions 'construing all facts, and drawing all reasonable inferences from those facts, in favor of . . . the non-moving party.'" Wis. Cent., Ltd. v. Shannon, 539 F.3d 751, 756 (7th Cir. 2008) .
Several defendants contend that plaintiffs' claims are no longer viable after the settlement of Boehm I, which led to the dismissal of that case with prejudice. These defendants say that they got the infringing images from the Zimpriches or Legends, and they contend that they are entitled to the benefit of the release granted in the settlement agreements or that claim preclusion bars plaintiffs' claims against them.
These affirmative defenses were not asserted in their original responsive pleadings, so Event USA, Thomason, Svehla, Martin, Miller, Wredberg, and AW move to amend their pleadings to include them. Dkt. 368; Dkt. 379; Dkt. 386; Dkt. 401; Dkt. 402; Dkt. 486. Leave to amend should be freely granted when justice so requires. Fed. R. Civ. P. 15(a)(2). Plaintiffs oppose the motions as untimely and futile. Dkt. 381; Dkt. 383; Dkt. 409. The court sees no undue delay, because the defenses were asserted within a reasonable time after defendants got copies of the settlement agreements in Boehm I. The court will grant the motions to amend,allowing defendants to assert these defenses, and decide them on the merits, thus addressing the question of futility.
The court starts with some general principles. Parties who act in concert to produce a single harm are joint tortfeasors. See Paroline v. United States, 134 S. Ct. 1710, 1741 (2014) (Sotomayor, J., dissenting); Restatement (Second) of Torts § 875 (Am. Law Inst. 1965). Joint tortfeasors are jointly and severally liable to the plaintiff for compensatory damages. Minix v. Canarecci, 597 F.3d 824, 829-30 (7th Cir. 2010). A joint tortfeasor is not an indispensable party, which means that a plaintiff does not have to bring suit against all tortfeasors in one action. See, e.g., Salton Inc. v. Philips Domestic Appliances & Personal Care B.V., 391 F.3d 871, 877 (7th Cir. 2004). Under common law, a settlement with one joint tortfeasor would preclude subsequent suits against the others, but this "one satisfaction" rule has long been abrogated. See United States v. ...
To continue reading
Request your trial