Cambridge Literary v. W. Goebel Porzellanfabrik, Civil Action No. 00-10343-NG.

• Decision Date: 08 August 2006
• Docket Number: Civil Action No. 00-10343-NG.
• Citation: 448 F.Supp.2d 244
• Parties: CAMBRIDGE LITERARY PROPERTIES, LTD., Plaintiff, v. W. GOEBEL PORZELLANFABRIK G.M.B.H. & CO. KG. and Goebel Art G.m.b.H., Defendants.
• Court: U.S. District Court — District of Massachusetts

448 F.Supp.2d 244

CAMBRIDGE LITERARY PROPERTIES, LTD., Plaintiff, v. W. GOEBEL PORZELLANFABRIK G.M.B.H. & CO. KG. and Goebel Art G.m.b.H., Defendants.

Civil Action No. 00-10343-NG.

United States District Court, D. Massachusetts.

August 8, 2006.

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Henry Herrmann, Boston, MA, for Plaintiff.

David P. Shouvlin, Porter, Wright, Morris & Arthur LLP, Columbus, OH, Dr. Jur. Horst Von Der Osten, Kaiser-Friedrich-Ring, Deusseldorf, Germany, Joseph D. Steinfield, David E. Plotkin, Prince, Lobel Glovsky & Tye LLP, Boston, MA, for Defendants.

GERTNER, District Judge.

Electronic ORDER entered granting 106 Motion for Summary Judgment, adopting Report and Recommendations re 146: After carefully reviewing Magistrate Judge Dein's lengthy Report and Recommendation in connection with Defendant's Motion for Summary Judgment, and the voluminous objections and responses filed by each side, I adopt the Report and Recommendation without change. First, I reject the plaintiff's objections to that portion of the Magistrate's decision that addresses the statute of limitations issues. I entirely agree that Cambridge's claims are barred by the Copyright Act's three year statute of limitation, that, even assuming Cambridge had asserted a state law cause of action, these claims would still be time-barred. I also agree that there is no basis on the record to conclude that the limitations period is tolled (under the doctrine of equitable tolling). Second, I also reject defendant's objections to that portion of the Magistrate's decision that deals with issue preclusion, which would have provided an alternative basis for the dismissal of this action. I agree with Magistrate Judge Dein that there are issues of fact with respect to issue preclusion on this record. Nevertheless, based on the limitations finding, I conclude that summary judgment for the defendant be GRANTED on the grounds that plaintiff's claims are untimely.

REPORT AND RECOMMENDATION ON DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

DEIN, United States Magistrate Judge.

I. INTRODUCTION

The plaintiff, Cambridge Literary Properties, Ltd. ("Cambridge"), has brought this action against the defendants, W. Goebel Porzellanfabrik G.m.b.H. & Co. Kg. and Goebel Art G.m.b.H. (collectively, "Goebel"), seeking a share of the defendants' profits resulting from their use of images allegedly taken from a book in which Cambridge claims to have a copyright interest. By its Amended Complaint, Cambridge claims that it is the coowner of the United States Renewal Copyright ("Renewal Copyright") in the book "Das Hummelbuch," and, as such, is entitled to an accounting and imposition of a constructive trust to recover its alleged share of the profits that Goebel has realized and will continue to realize from, among other things, the distribution and sale of figurines and products allegedly derived from the book, its use of the figure "The Merry Wanderer" as its trademark or logo, and membership fees for the M.I. Hummel Club in the United States.

Presently before the court is the Defendants' Motion for Summary Judgment (Docket No. 106) in which Goebel is seeking summary judgment on the grounds that the plaintiffs claims are time-barred and because Cambridge is collaterally estopped from claiming a co-ownership interest in the Renewal Copyright due to the doctrine of issue preclusion. For the reasons detailed herein, this court finds that Cambridge's claims are barred by the Copyright Act's three-year statute of limitations, and that, even assuming Cambridge had asserted a state law cause of action, these same claims would remain time-barred under Massachusetts law. This court also finds, however, that there are disputed facts relating to the issue preclusion claim. Accordingly, this court recommends to the District Judge to whom this case is assigned that the defendants' motion for summary judgment be ALLOWED on the grounds that the plaintiffs claims are untimely.

II. STATEMENT OF FACTS¹

The following material facts are undisputed unless otherwise indicated.

Creation and Copyright of "Das Hummelbuch"

The facts giving rise to this litigation have occurred over the course of more than seventy years, and began with the drawings of Berta Hummel, a gifted artist who was born in Bavaria in 1909 and enrolled in the Academy of Applied Arts in Munich, Germany in 1927. (Defs.' Ex. A ¶ 6). At some point during her life, Berta Hummel began drawing pictures of children in rural settings wearing traditional German clothing. (Id.). In 1931, she joined the Convent of Siessen ("Convent"), a Congregation of Franciscan Sisters, and, after taking her vows, became Sister Maria Innocentia Hummel. (Id.). During or prior to 1934, Sister Hummel and the Convent had some of Sister Hummel's drawings published as postcards. (Id.; DF ¶ 1).

In May 1934, Emil Fink, the head of a German publishing company, Emil Fink Verlag ("Fink"), entered into an agreement with Sister Hummel and the Convent by which Fink became authorized to publish forty of Sister Hummel's drawings in a book entitled "Das Hummelbuch." (DF ¶ 3; Defs.' Ex. A-2). Thereafter, in November 1934, Fink entered into an agreement with Margarete Seemann ("Seemann"), an Austrian poet, pursuant to which Seemann agreed to provide an introduction and poems for the book. (DF ¶ 3; Defs.' Ex. A-3). Fink published Das Hummelbuch in December 1934. (DF ¶ 4).

Goebel also entered into an agreement with Sister Hummel and the Convent, which the parties executed in November 1935. (DF ¶ 2; Defs.' Ex. A-1). Pursuant to the contract, Sister Hummel agreed to convey to Goebel the exclusive right to transform her drawings into figurines (the "Hummel figurines") in exchange for licensing fees.² (DF ¶ 2; Defs.' Ex. A-1). The parties dispute whether Goebel based its design and manufacture of Hummel figurines on copyrighted images contained in Das Hummelbuch or on postcards and drawings that predated publication of the book. (Am. Compl. ¶ 71; Defs.' Ex. A ¶ 5).

In 1936, Fink filed an application for copyright of Das Hummelbuch with the United States Copyright Office.³ (DF ¶ 4). Fink stated in the application form that it was the copyright owner and that Berta Hummel and Margarete Seemann were the authors of the book. (Defs.' Ex. A-4). It is Seemann's copyright interest in Das Hummelbuch that gives rise to Cambridge's co-ownership claims in this action. Specifically, Cambridge alleges that Seemann was a joint author of the book (Am. Compl.¶ 35), and its claims depend upon a showing that Seemann, Fink, and Sister Hummel each had a separate ownership interest in the copyright and its renewal.

Seemann died in 1949, prior to the expiration of the initial term of the copyright in Das Hummelbuch. (DF ¶ 5; Am. Compl. ¶ 45). At that time, Seemann's interests, if any, reverted to her sister, Theresia Romanowicz, a resident of Vienna, Austria and Seemann's sole next of kin. (Am.Compl.¶ 46). Thirteen years after Seemann's death, in 1962, Fink applied to the United States Copyright Office for a Renewal Copyright in Das Hummelbuch. (DF ¶ 6). On the application, Fink identified itself as a "proprietor of copyright in a work made for hire." (Id.; Defs.' Ex. 5). Cambridge disputes that Das Hummelbuch was a "work made for hire" under copyright law, and asserts instead that it was a joint work of joint authorship. (Am. Compl. ¶¶ 33-40). Cambridge also alleges that when Fink obtained the Renewal Copyright, Theresia Romanowicz was entitled to a co-ownership interest in the Renewal Copyright even though she was not named in the registration. (Id. ¶ 46). Goebel disputes Cambridge's position, contending instead that Das Hummelbuch was a work made for hire under copyright law, and that all of the renewal rights vested in Fink alone. (See Defs.' Mem. at 19-20).

Theresia Romanowicz died in about 1970. (Am.Compl.¶ (50). Cambridge alleges that her daughter, Maria Romanowicz of Vienna, Austria,⁴ and her niece, Dr. Alexandrine Cermanovic—Kuzmanovic of Belgrade, Yugoslavia, inherited her entire estate in equal halves. (Id. ¶ 50; Defs.' Ex. E at 126-29, 256-57). Therefore, Cambridge asserts, Ms. Romanowicz and Dr. Cermanovic-Kuzmanovic each obtained ownership interests in the Renewal Copyright. (Am.Compl.¶ 51).

In 1971, Fink assigned all of its interest in the Renewal Copyright to Goebel. (DF ¶ 7). Cambridge contends, and Goebel denies, that this assignment did not negate the ownership interests of Seemann's heirs, Ms. Romanowicz and Dr. Cermanovic-Kuzmanovic. (Am.Compl.¶ 70).

Litigation Regarding Rights to the Renewal Copyright

Schmid Brothers, Inc. ("Schmid") was the distributor of Goebel's Hummel figurines in the United States. (DF ¶ 8). Schmid also claimed to be the assignee of Sister Hummel's sole legal heir, with all of the right, title, and interest in the works of art created by Sister Hummel. (Defs.' Ex. K-2 ¶¶ 4-5). For purposes of this litigation, there is no dispute between the parties regarding the chain of ownership originating from Sister Hummel's interests in the copyright of Das Hummelbuch.

Schmid and Goebel have a history of litigation against one another dating back to the late 1960s. (DF ¶ 8; PF ¶ 8). Henry Herrmann, Cambridge's sole shareholder and counsel in this action, has represented Schmid in a number of these lawsuits.⁵ (DF ¶¶ 8, 15; PF ¶ 8). Attorney Herrmann also served as a director of Schmid for several years. (DF ¶ 8).

Of particular relevance to the instant litigation, in 1990 Schmid filed a lawsuit against Goebel in the United States District Court for the Eastern District of New York in which it claimed that Schmid and Goebel were co-proprietors in the Renewal Copyright of Das Hummelbuch (the "New York Litigation"). (DF ¶ 10; Defs.' Ex. K-2 ¶¶ 10-15). In 1992, Attorney Herrmann, acting on behalf of Schmid, signed a Consent Judgment in, that case, in which the parties to the litigation stated that they had "undivided one-half...