Bouchat v. Baltimore Ravens Ltd. P'ship
| Decision Date | 27 December 2012 |
| Docket Number | CIVIL ACTION NO. MJG-08-397 |
| Parties | FREDERICK E. BOUCHAT Plaintiff v. BALTIMORE RAVENS LIMITED PARTNERSHIP, et al. Defendants |
| Court | U.S. District Court — District of Maryland |
The Court has conducted proceedings, including a bench trial, on remand of the instant case pursuant to the decision in Bouchat v. Baltimore Ravens Ltd. P'ship, 619 F.3d 301 (4th Cir. 2010) (). The Court now issues this Memorandum of Decision on Remand as its findings of fact and conclusions of law in compliance with Rule 52(a) of the Federal Rules of Civil Procedure.
The Court finds the facts stated herein based upon its evaluation of the evidence, including the credibility of witnesses, and the inferences that the Court has found it reasonable to draw from the evidence.
Discussions of the pertinent background can be found in no less than seven (so far) published decisions of this Court andthe United States Court of Appeals for the Fourth Circuit.1 Accordingly, a brief background statement shall suffice.
In late 1995, the Cleveland Browns football team moved to Baltimore. However, because the owner agreed to leave the Browns' name in Cleveland for use by a replacement team, a new name was needed for Baltimore. In December 1995, while the owners were considering a name to choose, an amateur artist, Frederick E. Bouchat ("Bouchat") created drawings of insignia that he imagined might be used by the new football team depending upon the name selected. These included such names as the Bombers, the Americans, the Jockeys, etc. and, of course, "the Ravens."
Bouchat prepared a drawing for a Ravens team referred to as the "Shield Drawing."By virtue of his creating the drawing, Bouchat obtained common law copyright rights therein.
A copy of the Shield Drawing was sent by Bouchat to the head of the Baltimore Stadium Authority and ended up with the commercial artists retained by the National Football League ("NFL") and the Baltimore Ravens team ("the Ravens")2 to design the team's insignia and uniforms. The artists infringed Bouchat's copyright by copying the Shield Drawing and creating what is referred to as the "Flying B Logo."
The Ravens used the Flying B Logo as the teams' primary logo during the first three seasons, 1996, 1997, and 1998.
Bouchat sued the NFL and Ravens and established infringement of his copyright in the Shield Drawing by their use of the Flying B Logo. Bouchat, however, recovered no damages due to a jury's finding that no part of the profits of the infringers, relating to the infringements then at issue, hadbeen attributable to the copyright infringement. This Court's Judgment, awarding no damages, was affirmed by the United States Court of Appeals for the Fourth Circuit.3
In 1999, the Ravens adopted a new logo that has been used since.
For about eight years, the NFL and the Ravens did not make any significant use of the Flying B Logo.4 However, in or about 2008, Bouchat found that the Ravens and the NFL were using the Flying B Logo in three manners:
Bouchat brought the instant lawsuit, seeking to enjoin these uses of the Flying B Logo.
This Court, deciding the case on an agreed submitted record, held that there was no infringement because each of these uses was a non-infringing fair use under 17 U.S.C. § 107. Bouchat v. Baltimore Ravens Ltd. P'ship, 587 F. Supp. 2d 686 (D. Md. 2008). On appeal, the United States Court of Appeals for the Fourth Circuit reversed in part. The Fourth Circuit agreed with this Court's holding that the aforesaid headquarters display was a fair use. However, the appellate court held that the sale of highlight films and display of film clips at football games was not. The panel's majority decision stated:
We reverse in part because the Ravens and the NFL did not establish fair use of the Flying B logo in the highlight films sold by the NFL and the highlight film played during the Ravens home football games. The films infringe on Bouchat's copyrighted work, and his request for injunctive relief against this infringement is not precluded. On remand the district court will consider whether an injunction is appropriate.
Bouchat 2010, 619 F.3d at 317.
In the Memorandum and Order Re: Permanent Injunction [Document 52], the Court declined to grant Bouchat an injunction against future use of the Flying B Logo in the films at issueprovided that he receive reasonable compensation for any such use.
In Bouchat 2010, the United States Court of Appeals for the Fourth Circuit held that it must "permit[] the district court to decide in the first place whether to grant or deny [injunctive] relief." Bouchat 2010, 619 F.3d at 317 n. 2. Accordingly, the appellate court stated that "[o]n remand the district court will consider whether an injunction is appropriate." Defendants contend that the Fourth Circuit, thereby, restricted this Court's authority to issue a decision that does no more than make the "binary" decision to grant or deny an injunction. The Court disagrees.
The case of Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 1988), presented a situation analogous to the instant case and a decision that the Court finds persuasive. In Abend, the owner of the copyright on a novel established infringement by the movie "Rear Window." The copyright owner sought an injunction against distribution of the motion picture.
The Abend court recognized that the value of contributions of non-infringers to an infringing movie can warrant the denial of injunctive relief, stating:
The Abend court observed that "courts might . . . award damages or a continuing royalty instead of an injunction in suchspecial circumstances"5 and that "Abend can be compensated adequately for the infringement by monetary compensation." Id. at 1479.
This Court found circumstances existing analogous to those presented in Abend. The ability of the Court to provide reasonable compensation to Bouchat for the Defendants' infringing use of his copyright-protected work was a determinative factor in its decision to deny injunctive relief.
This Court will not permit Defendants to take Bouchat's intellectual property without recognition of his authorship and without any compensation whatsoever. While the amount of compensation reasonably due Bouchat may be small, it should not be zero. The United States Court of Appeals for the Fourth Circuit has rejected Defendants' contention that the uses at issue are non-infringing fair uses. If, as Defendants contend, this Court could not provide Bouchat any compensation whatsoever, this Court would grant Bouchat the injunctive relief sought.
The Court will, therefore, determine the amount of compensation that must be paid Bouchat for any repetition of the uses at issue of the Flying B Logo.
The Court finds that the reasonable compensation due Bouchat for repetitions of the infringements at issue would be a reasonable royalty for the uses of his copyright-protected work.
It may well be true, as contended by Defendants, that the Shield Drawing has no fair market value separate and apart from the Flying B Logo, which derives its value entirely from its association with the Ravens. Moreover, Bouchat has never sold, licensed or attempted to sell or license, the Shield Drawing.6 Nevertheless, the Flying B Logo is an improvement of the Shield Drawing and is, in and of itself, an infringement of Bouchat's copyright. Hence, the market for the Flying B Logo includes, in effect, the market for Bouchat's copyright-protected work in the Shield Drawing.
While Defendants may doggedly refuse to recognize it, the fact remains that any future infringement of Bouchat's copyright will constitute taking Bouchat's property. As stated by the United States Court of Appeals for the Second Circuit:
[A]s between leaving the victim of the illegal taking with nothing, and charging the illegal taker with the reasonable cost of what he took, the latter, at least in some circumstances, is the preferable solution.
Davis v. The Gap, Inc., 246 F.3d 152, 166 (2d Cir. 2001).
The instant case presents a circumstance in which it is preferable to pay the copyright owner reasonable compensation rather than let the Defendants continue to infringe without cost or...
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