Harner v. Wong Corp.
| Decision Date | 31 October 2013 |
| Docket Number | Case No. 1:12-cv-00820-KG-ACT |
| Parties | CHARLES HARNER, Plaintiff, v. WONG CORPORATION, d/b/a PC MAGIC PRO, a/k/a PC MAGIC, Defendant. |
| Court | U.S. District Court — District of New Mexico |
On July 27, 2013, Plaintiff Charles Harner filed a Complaint for Infringement of Copyright (Doc. 1) (Complaint). Defendant Wong Corporation, d/b/a PC Magic Pro, a/k/a PC Magic (Wong) now moves for summary judgment on all of Harner's claims in his Complaint. See Wong Corporation's Motion for Summary Judgment (Doc. 17), and Memorandum of Law in Support of Wong Corporation's Motion for Summary Judgment (Doc. 18) (Motion for Summary Judgment), filed Nov. 28, 2012. Harner opposes the Motion for Summary Judgment. See Response to Motion for Summary Judgment (Doc. 20) (Response), filed Dec. 12, 2012. Wong filed a reply brief on January 2, 2013. See Wong Corporation's Reply Memorandum in Further Support of Its Motion for Summary Judgment (Doc. 21) (Reply). On February 1, 2013, Wong filed a Notice of Supplemental Authority (Doc. 23). Harner responded to the Notice of Supplemental Authority on February 8, 2013. See Response to Notice of Supplemental Authority (Doc. 24). For the following reasons, the Motion for Summary Judgment is granted in part and denied in part.
This is a copyright infringement case that arises from two sets of advertisements. Wong hired Harner to create advertisements for Wong's computer repair business. Subsequently, Wong created its own advertisements for its business. Harner is now suing his former employer, Wong, for copyright infringement. In the Complaint, Harner asserts that Wong violated the Copyright Act of 1976, as amended, 28 U.S.C.A. §§ 1331 and 1338 (Copyright Act), when Wong willfully infringed on Harner's copyrighted materials in five publications: (1) Yellowbook 2008/2009 on pages 256, 261, 264, and 267 (2008/2009 Yellowbook Ads) (Count I)1; (2) "Use through January 2010" DEX Official Directory on page 347 (2010 DEX Ad) (Count II)2; (3) "Use through January 2011" DEX Official Directory on pages 276 and 280 (2011 DEX Ads) (Count III)3; Yellowbook 2010/2011 on page 238 (2010/2011 Yellowbook Ad) (Count IV)4; and (5) online at KRQE.com (KRQE.com Ad) (Count V)5. Harner requests actual damages and lost profits, statutory damages, and attorney's fees pursuant to the Copyright Act.
Wong moves for summary judgment on all Counts in the Complaint. Wong argues that: (1) Harner does not own a valid copyright in the advertisements he created for Wong because Harner's advertisements are not copyrightable; or, alternatively, (2) only the selection andarrangement of the elements in Harner's advertisements qualify for "thin" copyright protection, and Harner cannot prove the required supersubstantial similarity required in a "thin" copyright infringement case; and (3) Harner does not have a claim for statutory damages or attorney's fees under the Copyright Act because Harner registered the advertisements he created for Wong with the United States Copyright Office after the alleged infringement began.
Between 2000 and 2007, Harner was in the business of creating yellow pages7 advertisements. Pl.'s Ex. 2 at ¶ 1 (Doc. 20-3). During that time, Wong operated a computer repair business and employed Sheue Y. Cheng as director of operations. Def.'s Ex. 7 at ¶ 1 (Doc. 18-7). Wong hired Harner to prepare yellow pages advertisements for Wong's business. Complaint at ¶ 5. Harner created at least four yellow pages advertisements for Wong.8 Harner gave Wong permission to publish the advertisements in the yellow pages. Pl.'s Ex. 2 at ¶ 7 (Doc. 20-3). Each of the advertisements contained the following copyright notice: ©2002-2007 Charles Harner H.I.T.S., C.K.S. Id. Harner asserts that he revoked Wong's permission to use his advertisements in 2007. Complaint ¶ 1. Harner claims that in December 2007, March 2008, and May 2008 he warned Cheng that Wong would be infringing on his copyright if Wong used the advertisements any time after their publication in the "Use through January 2008" DEX OfficialDirectory. Id. After the warnings, Wong created its own advertisements for its computer repair business and printed the advertisements in Yellowbooks, in DEX Official Directories, and online at KRQE.com.
Harner registered the advertisements that he created for Wong with the United States Copyright Office under the title "Charles Harner's collection of yp ads" (herein known collectively as the "Registered Works" or each advertisement individually as a "Registered Work").9 See Pl.'s Ex. 2 at ¶ 7 (Doc. 1-2). The registration became effective on June 7, 2010. Id. The Copyright Office Certificate of Registration (Certificate of Registration) states that Harner created "text, photograph(s), 2-D artwork" completed in 2007 and first published on December 15, 2007. Id. The Certificate of Registration lists the material excluded from the claim as "[s]ome photos and artwork" and the new material included in the claim as "[s]ome new photos and artwork, and new text." Id.
Neither the Complaint nor the Certificate of Registration lists the advertisements that Harner created for Wong or where the advertisements were printed. Attached to Wong's Motion for Summary Judgment are four photocopied images of advertisements that Wong labels as the advertisements that Harner created for Wong. See Def.'s Ex. 1 (Doc. 18-1). In Harner's Response, he does not dispute that the attached advertisements are the works that he created for Wong, and he does not describe any other advertisements as works that he created for Wong. Therefore, these four advertisements are considered all of the advertisements that Harner created for Wong and are collectively referred to as the Registered Works.
The four advertisements in the Registered Works have numerous similarities. First, each advertisement has the phrase "COMPUTER PROBLEMS?" printed in large text at the top of theadvertisement. See Def.'s Ex. 1 (Doc. 18-1). To the right of that phrase, each advertisement has a circle with "$25" printed inside of it. Id. All of the advertisements contain the phrase, "WE KNOW HOW COMPUTERS WORK!" near the top of the advertisements. Id. The advertisements all display the telephone number, address, website, and hours of Wong's business. Id. Finally, each advertisement has a picture of Cheng printed in either the lower right or left corner. Id. Although each advertisement contains numerous similarities, each has unique elements and a unique arrangement of these elements. Below is a brief description of the major elements of each advertisement.
The first advertisement contained in the Registered Works (Registered Work #1) features a half-page advertisement printed in a DEX Directory on page 352. The advertisement contains the following four lines of large text at the top of the page, each on its own line: "COMPUTER PROBLEMS?"; "WE KNOW HOW COMPUTERS WORK!"; "Have our PRO-Techs Help PROTECT your computer!!!"; and Below these phrases are seventeen pictures of computer components. Eleven of the pictures are grouped together in the middle left portion of the advertisement in a clustered arrangement. The other six pictures are organized in two stacked horizontal boxes to the right of the other eleven pictures. In the lower box are two arrows pointing to the computer components. Finally, a photo of Cheng facing slightly to the left is printed in the lower right corner of the advertisement with the phrase "Call Us Today!", the store's telephone number, and the store's hours printed on the lower part of her photograph.
Registered Work #2 is the largest of the advertisements, covering roughly two-thirds of the page. On the top of the advertisement in large print is the phrase "COMPUTER PROBLEMS?" Below that phrase, in smaller print, is the phrase "Repair/UPGRADE or get a NEW COMPUTER From us!" and below that phrase, the advertisement states " We Know How Computers Work!" The middle section of the advertisement consists of seven boxes in two rows. The upper row has four boxes side-by-side, each containing pictures of computer components. Three of those four boxes also contain arrows pointing to the pictures of computer components. The remaining three boxes make up the bottom row with the outside boxes containing text and the middle box containing a picture of Wong's employees with the phrase "PRO TEAM" printed on the photo. Finally, a large picture of Cheng is printed in the bottom right corner of the advertisement.
Registered Work #3 is a half-page advertisement. It has five lines of short phrases and slogans at the top half of the advertisement. The top phrase, "COMPUTER PROBLEMS?", is printed in considerably larger text than the other phrases. Below the text, in the lower right quarter of the advertisement are five circles arranged horizontally with pictures of computer components printed within the circles. Registered Work #3 is different from the other advertisements in the Registered Works in two significant ways. First, the picture of Cheng is located in the lower left corner of the advertisement. Second, to the right of Cheng's picture is arectangular box with the heading "WARNING" and a triangle with an exclamation mark inside. Inside the box is the following statement:
Registered Work # 4 is identical to Registered...
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