Earth Flag Ltd. v. Alamo Flag Co.

• Decision Date: 17 May 2001
• Docket Number: No. 00 CIV. 3961(SAS).,00 CIV. 3961(SAS).
• Citation: 153 F.Supp.2d 349
• Parties: EARTH FLAG LTD., a New York Corporation Plaintiff, v. ALAMO FLAG COMPANY, Ebay, Inc., MRCR Enterprises, Inc., Robert B. Goodspeed, Worldflags, Sharif Kesbeh, Robert P. Knerr d/b/a Walliphant, and John Does 5 through 10, Defendants.
• Court: U.S. District Court — Southern District of New York

Page 349

153 F.Supp.2d 349

EARTH FLAG LTD., a New York Corporation Plaintiff, v. ALAMO FLAG COMPANY, Ebay, Inc., MRCR Enterprises, Inc., Robert B. Goodspeed, Worldflags, Sharif Kesbeh, Robert P. Knerr d/b/a Walliphant, and John Does 5 through 10, Defendants.

No. 00 CIV. 3961(SAS).

United States District Court, S.D. New York.

May 17, 2001.

Joseph O. Sullivan, Joseph O. Sullivan & Associates, Westwood, NJ, for Plaintiff.

H. Nicholas Goodman, Hoong Nan Young, Quirk and Bakalor, P.C., New York City, for Defendant Alamo Flag Company.

Harvey Shapiro, Sargoy, Stein, Rosen & Shapiro, New York City, for Defendant eBay, Inc.

OPINION AND ORDER

SCHEINDLIN, District Judge.

Earth Flag Ltd. ("EFL") is suing defendants, Alamo Flag Company ("Alamo"), eBay, Inc. ("eBay"), MRCR Enterprises, Inc. ("MRCR"), Robert B. Goodspeed, Worldflags, Sharif Kesbeh, Robert P. Knerr d/b/a Walliphant, and John Does 5 through 10, for copyright infringement of EFL's flag bearing a public domain photograph of Earth taken from outer space ("Earth Flag").¹ Plaintiff also asserts state law claims of conversion, quantum meruit, tortious interference with contractual rights, and tortious interference with prospective economic advantage. Both Alamo and eBay now move for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. Plaintiff cross-moves for summary judgment. For the reasons stated below, defendants' motions are granted and plaintiff's cross-motion is denied.

I. LEGAL STANDARD

Rule 56 provides for summary judgment "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). "An issue of fact is `material' for these purposes if it might affect the outcome of the suit under the governing law [while] [a]n issue of fact is `genuine' if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Shade v. Housing Auth. of City of New Haven, 251 F.3d 307, 314 (2d Cir.2001) (quotation marks and citations omitted). "In determining whether a genuine issue of material fact exists, a court must resolve all ambiguities and draw all reasonable inferences against the moving party." Flanigan v. General Elec. Co., 242 F.3d 78, 83 (2d Cir.2001).

II. BACKGROUND

A. Parties

EFL is a California corporation with offices in Maspeth, New York, and is the owner of the copyright in the Earth Flag. See 1/31/01 Affidavit of Henry A. Waxman, President and Sole Shareholder of EFL ("Waxman Aff."), ¶ 2. Alamo is a corporation in the business of selling a large variety of flags and flag related items, and owns a retail store in New York City. See id. ¶ 27; Alamo Rule 56.1 Statement ("Alamo 56.1") ¶ 11. eBay is a Delaware corporation, with its principal place of business in San Jose, California. See eBay Inc.'s Statement of Undisputed Facts ("eBay 56.1") ¶ 7. It operates a website that permits users to both sell and buy a wide variety of merchandise to each other in an auction-style format. See id. ¶ 8. eBay has created a Verified Rights Owner ("VeRO") program, designed to enable rights holders to notify eBay of infringing listings and to request their removal.² See id. ¶¶ 18, 35. Plaintiff contends that eBay permitted defendants MRCR, Goodspeed, and Knerr, among others, to place on its website flags that plaintiff alleges infringe plaintiff's copyright in the Earth Flag.³ See EFL's Rule 56.1 Statement ("Pl.56.1") ¶ 23a; Am. Compl. ¶¶ 4-6.

B. The Earth Flag and the "Imitation" Flags

The Earth Flag was first designed over thirty years ago by John McConnell. See Pl. 56.1 ¶ 3a. Since May 16, 1997, however, EFL has been the exclusive owner of the copyrights to the Earth Flag.⁴ See id. ¶¶ 3b-3h. EFL markets and sells its Earth Flag (under the name "Authentic Earth Flag") in different dimensions, the most important of which is a 3 foot by 5 foot flag which sells for approximately $50.00. See Waxman Aff. ¶ 26. The Earth Flag consists of two identical circular photographs of Earth taken from space, sewn onto each side of a dark blue synthetic fabric. A strip of white fabric is sewn onto one of the shorter ends of the flag, and a grommet is attached to each of the white strip's corners, thus permitting the flag to be flown horizontally or vertically as a banner. Since its creation, the Earth Flag has become closely associated with the environmental movement and "Earth Day". See id. ¶¶ 8-10.

McConnell's Earth Flag was awarded a copyright in 1969. See Pl. 56.1 ¶ 3a. A second, slightly modified, Earth Flag was copyrighted as a work of art on March 28, 1990.⁵ See id. ¶ 3c. The Certificate of Copyright Registration states the following under the heading "Material Added To This Work": "Replace earth image of original Earth Flag with a reproduction of another Apollo photograph by using a lithographic process." Id.; 3/28/90 Certificate of Copyright Registration, Ex. D to Waxman Aff., at 2. On March 30, 1990, a supplemental registration was filed, which "amplified" the nature of the work as follows:

Coverage is of the flag or banner, regardless of size, representing the image of the Earth as taken from outer space by the Apollo mission, reproduced on a dark blue or black background, and the replication or reproduction thereof in any way, on any media or material.

Pl. 56.1 ¶ 3d.

The photograph used to produce the Earth Flag was taken on NASA's Apollo space mission and, as plaintiff admits, is in the public domain. See Alamo 56.1 ¶ 7; Pl. 56.1 ¶ 7. In that photograph, the Earth appears against a dark blue backdrop of space. See Pl. 56.1 ¶ 7a.

On May 23, 2000, Waxman purchased at one of Alamo's retail stores a 3 foot by 5 foot flag bearing a public domain photograph of Earth taken from space on a light blue background ("Alamo Flag"). See Alamo 56.1 ¶ 12. The Alamo Flag, like the Earth Flag, includes a white strip of fabric with grommets at its corners. The photograph of Earth on the Alamo Flag is different than that displayed on EFL's Earth Flag. For example, while the Arabian Peninsula is visible on the Earth Flag, it is not visible on the Alamo Flag. Both the photograph of Earth and the fabric used for the Alamo Flag are of lesser quality than EFL's Earth Flag.⁶ See Waxman Aff. ¶ 29. Accordingly, the Alamo Flag, listed as "Earth" in its catalogue, is less expensive than EFL's Earth Flag. See Alamo Flag Company Catalogue, Ex. H to 1/18/01 Affidavit of H. Nicholas Goodman ("Goodman Aff."), counsel to Alamo Flag Company, at 3, 4.⁷

On approximately February 28, 2000, Waxman learned of "imitation" earth flags being auctioned on eBay's website. Waxman Aff. at ¶¶ 44-45. On February 28, 2000, Waxman allegedly sent eBay an email message complaining of the infringing flags. See id. ¶ 46. eBay has been unable to locate this message and Waxman has been unable to provide a copy of the confirmation that it had been received. See eBay 56.1 ¶ 25. Plaintiff did not avail itself of eBay's VeRO program. See id. ¶¶ 18, 35.

III. DISCUSSION

A. Alamo's Summary Judgment Motion

In a suit for copyright infringement, a plaintiff must establish that: (1) it owns a valid copyright; and (2) the defendants copied original constituent elements of the work. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); Matthew Bender & Co. v. West Publ'g Co., 158 F.3d 674, 679 (2d Cir.1998), cert. denied sub nom West Publ'g Co. v. HyperLaw, Inc., 526 U.S. 1154, 119 S.Ct. 2039, 143 L.Ed.2d 1048 (1999). A plaintiff may prove the second element circumstantially by showing that: (1) the defendants had access to the copyrighted work; and (2) that the allegedly infringing material is "substantially similar" to copyrightable elements of plaintiff's work. Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992).

Alamo contests both elements, contending that the Earth Flag is not entitled to copyright protection because it lacks any original elements, and that the Alamo Flag is not substantially similar to the Earth Flag.⁸

1. Copyrightability

While the Copyright Act provides that a certificate of copyright registration is "prima facie evidence" that the copyright is valid, 17 U.S.C. § 410(c), the registration certificate creates only a rebuttable presumption that the work is copyrightable. See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir.1997); Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980) ("[A] certificate of registration creates no irrebuttable presumption of copyright validity."). Thus, validity should not be assumed where other evidence casts doubt upon the integrity of the copyright. See Durham Indus., 630 F.2d at 908.

Plaintiff concedes that the photograph of the Earth on the Earth Flag is in the public domain. See Pl. 56.1 ¶ 7. Accordingly, the Earth Flag must be analyzed as a "derivative work" of that "preexisting" public domain photograph. 17 U.S.C. § 101.⁹ Although derivative works are protectable, copyright protection extends only to the non-trivial, original contributions of the derivative work's author. See 17 U.S.C. § 103(b); Durham Indus., 630 F.2d at 909.¹⁰ This is consistent with the broader understanding that "[t]he sine qua non of copyright is originality." Feist, 499 U.S. at 345, 111 S.Ct. 1282.

The term "original" means only that the work was independently created by the author, rather than copied from other works, and that it possesses a modicum of creativity. See Matthew Bender, 158 F.3d at 681. Although the standard of originality is low, it is not without effect. A work must possess more than a de minimis quantum of creativity. See Feist, 499 U.S. at 362, 111 S.Ct. 1282. In deciding whether a derivative work contains any non-trivial original contributions, a court must be guided by certain principles of copyright law, three of which are...