Fleming v. Miles
| Decision Date | 14 June 2001 |
| Docket Number | No. CIV. 00-1288-JE.,CIV. 00-1288-JE. |
| Citation | 181 F.Supp.2d 1143 |
| Parties | Philmore P. FLEMING, dba Philmore Fleming Productions and Roar Records, Plaintiffs, v. Colleen MILES, dba CB Design Graphics, Defendant. |
| Court | U.S. District Court — District of Oregon |
William E. Goshert, DuBoff, Dorband Cushing & King, PLLC, Portland, OR, Sarah S. Conley, Sarah S. Conley, PC, Portland, OR, for Plaintiffs.
Lake James Perriguey, Law Works, LLC, Portland, OR, for Defendant.
Plaintiff Philmore P. Fleming, dba Philmore Fleming Productions and ROAR Records (Fleming), brings this action for copyright infringement against defendant Colleen Miles, dba CB Design Graphics (Miles). The parties have filed cross-motions for summary judgment.
On December 12, 1997, Fleming registered a copyright covering the melodies, music, and lyrics for 13 songs. The following year, he recorded those songs for inclusion on a compact disk. In August 1998, Fleming hired Dan Frazier (Frazier), aka Piet Sloan, to create artwork for the compact disk and related packaging and promotional materials. Fleming also retained the services of Miles, a graphic artist, on a project-by-project basis at the rate of $50 per hour. The record is unclear in places, but it appears that Miles was initially retained by Fleming in January 1997 in connection with other graphics projects, and was then asked to perform the disputed work beginning in late 1998 or early 1999.
It is undisputed that both Frazier and Miles were independent contractors, and neither signed a work-for-hire agreement or contemporaneous written assignment of rights in favor of Fleming. Fleming testified at deposition that he and Miles did not discuss who would own the copyright to the projects that Miles had been commissioned to perform for Fleming.
At Fleming's request, Miles modified certain designs that Fleming furnished to her (which apparently were originally created by Frazier, either alone or in collaboration with Fleming). Miles also created new artwork for Fleming. The latter was based, at least in part, upon instructions from Fleming regarding the text, theme, and overall appearance, but Miles played a significant role in the design process and physically created the final product.
The art known as the "Kyrie Eleison insert" credits several persons and companies involved in producing this compact disk. Among those credits is "Cover design: Colleen Miles[,] CB Design Graphics, Portland, OR." The art known as the "CD jacket" includes the credit "Cover design: Philmore and Piet Sloane."
Most of Miles' work was created on a computer and stored in digital form, which could then be printed. Miles used her own equipment and materials to perform the work, with the exception of the art that Fleming had furnished to her which she then modified or incorporated into the final product.
The parties' submissions are not very informative on this issue, but Miles apparently sent the computer files she created to Centerpoint Graphics, which was to print the materials for Fleming. Centerpoint Graphics apparently did at least one press run of certain promotional postcards for Fleming, and perhaps some of the other printed materials as well. Centerpoint Graphics may also have made master films using the computer files obtained from Miles.
Fleming and Miles parted ways in August 1999, after Fleming failed to pay Miles' invoice for her services. Miles then filed a small claims action against Fleming seeking payment.1 On or about November 3, 1999, an attorney representing Miles, Bartley Day, wrote a letter to the president of Centerpoint Graphics, which stated in relevant part that:
I represent Colleen Miles, a graphics artist, who is presently involved in a dispute with a client of yours, Philmore Fleming. The dispute concerns certain artwork which Mr. Fleming commissioned my client to create in connection with Mr. Fleming's music CD and related promotional materials. Mr. Fleming has not yet paid my client's invoiced charges.
I should mention, before going further, that my client is the copyright owner of the artwork. The federal copyright statute specifically states that commissioned work shall be considered "work for hire" only "if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." Since there was no such agreement between my client and Mr. Fleming, my client is the copyright owner of the artwork, and as such has the sole and exclusive right to make copies of artwork (as well as computer files containing the artwork), and to create derivative works based on the original artwork.
Your company has already printed various materials containing my client's artwork, however this letter concerns not what has already been done, but instead possible future action by your company in regards to the artwork. In particular, my client is concerned about the possibility of your company releasing to Mr. Fleming any computer files containing the artwork, and also the possibility of your company using the existing artwork in the course of creating new artwork. Any such activity would infringe upon my client's copyright in the subject artwork.
The letter then described possible civil and criminal penalties for copyright infringement and requested that employees of Centerpoint Graphics be informed "of the consequences of engaging in any of the infringing activities mentioned above in regards to my client's artwork."
Fleming's response to this letter does not appear in the record, but it can be inferred from a second letter that Miles sent to the president of Centerpoint Graphics dated November 19, 1999:
By way of introduction, I am Colleen Miles, the graphic designer and illustrator previously, but never again, working with Mr. Philmore Fleming. I am writing on my own behalf as I ask for your understanding and acceptance of my full retraction of a letter written to you of my council (sic) on 11-2-99. I am told now that my simple and polite letter has veen (sic) viewed as an "intentional interference" (?) whatever that is.
In this previous letter mentioned above, I had simply asked your print house not to release any downloaded archived files that originated from my computer to Mr. Fleming and still do not understand how I could have interfered when all print work I had allowed was complete. Council (sic) for Mr. Fleming believes he can have these files that he has not paid for. I will not be calling on your company again.
At the bottom of the letter appears a handwritten notation, "copy for DuBoff." Leonard DuBoff is an attorney at the law firm that represents Fleming.
Fleming asserts that, in response to the preceding letters, Centerpoint Graphics refused to give him the artwork or computer files, or to print additional press runs using that artwork. On or about January 6, 2000, Fleming filed an action against Miles in Multnomah County Circuit Court, for intentional interference with business relations. The claim was premised upon the letters to Centerpoint Graphics, and alleged that Miles had falsely represented "that [she] was the owner of the copyright in the work." As a result, Fleming alleged, he had to replace the artwork and have the CD packaging redone, for which he demanded compensation. Fleming later submitted a five-page statement identifying his alleged damages, which included, inter alia, lost profits on potential sales of CDs, other lost business opportunities such as film and television licensing rights or investors who allegedly balked at investing in the company because of pending litigation, the cost for promotional campaigns allegedly suspended after the dispute arose, compensation for Fleming's time, "loss of employee productivity," postage, and legal fees. Miles counterclaimed for the outstanding balance on her fee.
On April 21, 2000, the Register of Copyrights received two Certificates of Registration filed by Miles. The first certificate was for the "2D Graphic Design" entitled "Philmore Fleming Kyrie Eleison CD Insert." The second certificate was for the "2D Graphic Design" entitled "Roar Records/Philmore Fleming Ticket Postcard." Miles did not register certificates covering any of the other disputed works.
On May 17, 2000, Fleming deposed Miles as part of discovery in the state court litigation. Fleming questioned Miles about her contributions to each of the disputed works, and about her assertion of copyright ownership. Miles clarified that she was not asserting ownership of the copyright in all of the disputed works, just certain specified works. She disclaimed any claim of copyright for artwork Fleming or Frazier created.
In accordance with state court rules, the parties were required to submit their dispute to arbitration. A party dissatisfied with the results could demand a trial de novo in the Circuit Court, though certain penalties might apply if that party did not better its position at trial. On June 13, 2000, following a two-day arbitration, judgment was entered in favor of Miles on Fleming's claim for tortious interference with business relations and also on her counterclaim for the outstanding balance on her fee. Fleming did not appeal that decision.
Instead, on August 1, 2000, Fleming commenced a new action against Miles in federal court, for copyright infringement. Miles promptly moved to dismiss the action because Fleming had never registered his alleged copyright, which is a prerequisite to maintaining an action for copyright infringement. Fleming voluntarily dismissed that action.
On or about September 5, 2000, Fleming filed with the Register of Copyrights a Certificate of Registration for a "design: photo & 2-D art/photography" entitled "Roar Records logo/Kyrieleison CD insert Philmore `Dreams of a Journeyman' CD Artwork." Fleming certified that he was the "author" of the work described in the Certificate. One...
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