Harris Publ'g, Inc. v. Metro Mktg. Inc.

• Decision Date: 30 September 2011
• Docket Number: Case No. CV09-426-E-REB
• Parties: HARRIS PUBLISHING, INC., PLAINTIFF, v. METRO MARKETING, INC., DEFENDANT.
• Court: U.S. District Court — District of Idaho

HARRIS PUBLISHING, INC., PLAINTIFF,

v.METRO MARKETING, INC., DEFENDANT.

Case No. CV09-426-E-REB

UNITED STATES DISTRICT COURT DISTRICT OF IDAHO

DATED: September 30, 2011.

MEMORANDUM DECISION AND ORDER

(Dkts. 28 & 30).

Pending before the Court is a Motion for Summary Judgment filed by Defendant Metro Marketing, Inc. ("Metro"), (Dkt. 28), and a related Motion for Attorney Fees, (Dkt. 30). Counsel appeared before the Court on January 26, 2011 and provided oral argument on the Motion for Summary Judgment. Having considered those arguments and the record in this matter, the Court enters the following order denying Metro's Motions:

I. BACKGROUND¹

In 1984, Plaintiff Harris Publishing, Inc. ("Harris") developed a 2D map of the Idaho Falls, Idaho region. The map has been published bi-annually or annually since then. The Harrismap at issue in this case is a map of the City of Idaho Falls ("Idaho Falls Map"). Included on the reverse side of the Idaho Falls Map is a regional map of Southeast Idaho ("Regional Map"). Plaintiff's Complaint specifies that its copyright infringement claim is related to the Idaho Falls Map, but the Court has ruled that evidence related to the Regional Map may be relevant to the issues to be decided on summary judgment.

On June 5, 2009, Harris submitted a Copyright Registration for the 2006-07, 2007-08 and 2008-09 versions of its map to the U.S. Copyright Office. On August 21,2009, Harris submitted a Copyright Registration for the 2009-10 version of the Harris Publishing Map, but the 2009-10 map is not at issue in this case, except possibly as relevant evidence. The U.S. Copyright Office approved the applications and issued Certificates of Registration for the 2006-07, 2007-08, 2008-09, and 2009-10 versions of the Harris Map.

Harris brought suit against Metro for copyright infringement, unfair competition, and unjust enrichment based on Metro's production of an Idaho Falls map created in 2009 ("Metro Map"). Metro seeks summary judgment on all claims, but focuses on the copyright claim, arguing that (1) Harris is not the author of the Harris Map, and so does not own the copyright; (2) even if Harris has a copyright interest, Metro did not copy the map but rather independently authored its map; and (3) any copying is permitted under the fair use doctrine. Def.'s Mem., pp.1-2 (Dkt. 28-1).

II. DISCUSSION

A. The Summary Judgment Standard

One of the principal purposes of the summary judgment "is to isolate and dispose of factually unsupported claims . . . ." Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). It is"not a disfavored procedural shortcut," but is instead the "principal tool [ ] by which factually insufficient claims or defenses [can] be isolated and prevented from going to trial with the attendant unwarranted consumption of public and private resources." Id. at 327. "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).

The evidence, including all reasonable inferences which may be drawn therefrom, must be viewed in a light most favorable to the non-moving party and the Court must not make credibility findings. See id. at 255. Direct testimony of the non-movant must be believed, however implausible. Leslie v. Grupo ICA, 198 F.3d 1152, 1159 (9th Cir. 1999). On the other hand, the Court is not required to adopt unreasonable inferences from circumstantial evidence. McLaughlin v. Liu, 849 F.2d 1205, 1208 (9th Cir. 1988).

The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir. 2001). To carry this burden, the moving party need not introduce any affirmative evidence (such as affidavits or deposition excerpts) but may simply point out the absence of evidence to support the nonmoving party's case. Fairbank v. Wunderman Cato Johnson, 212 F.3d 528, 532 (9th Cir. 2000).

This shifts the burden to the non-moving party to produce evidence sufficient to support a jury verdict in his favor. See id. at 256-57. The non-moving party must go beyond the pleadings and show "by [his] affidavits, or by the depositions, answers to interrogatories, or admissions on file" that a genuine issue of material fact exists. Celotex, 477 U.S. at 324.

However, the Court is "not required to comb through the record to find some reason to deny a motion for summary judgment." Carmen v. San Francisco Unified Sch. Dist., 237 F.3d 1026, 1029 (9th Cir. 2001) (quoting Forsberg v. Pac. Northwest Bell Tel. Co., 840 F.2d 1409, 1418 (9th Cir. 1988)). Instead, the "party opposing summary judgment must direct [the Court's] attention to specific triable facts." Southern California Gas Co. v. City of Santa Ana, 336 F.3d 885, 889 (9th Cir. 2003). Statements in a brief, unsupported by the record, cannot create an issue of fact. Barnes v. Independent Auto. Dealers, 64 F.3d 1389, 1396 n. 3 (9th Cir. 1995).

B. Copyright Claim

Maps, by statute, are protectable "[p]ictorial, graphic, and sculptural works." 17 U.S.C. § 101. However, as standardly expressed, "[c]opyright law protects an author's expression; facts and ideas within a work are not protected." Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990).

To prevail on its infringement claim, Harris "must demonstrate (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Benay v. Warner Bros. Entertainment, Inc., 607 F.3d 620 (9th Cir. 2010). "[R]egistration of a copyright certificate constitutes prima facie evidence of the validity of a copyright in a judicial proceeding commenced within five years of the copyright's first publication," as is the case here. Entertainment Research Group. v Genesis Creative Group, Inc., 122 F.3d 1211, 1217 (9th Cir. 1997); see also 17 U.S.C. § 410(c).

This "statutory presumption of validity can be rebutted if [Metro] demonstrates that [Harris's] work is not original but copied from another's work." Entertainment Research, 122F.3d at 1218 (internal quotations and citations omitted). If that occurs, the burden of proving validity shifts back to Harris. Id.

1. Material Facts As To Whether the Harris Map is a Derivative Work Are Disputed, Precluding Summary Judgment

Bob Reece hand-drew the first Harris Map in 1984. McFarland Aff., Ex. A, p.6 (Dkt. 28-4). Jason Harris testified that the map was drawn to scale, and Reece worked from the City of Idaho Falls Planning & Zoning Map ("P&Z Map") to develop the Harris Map. McFarland Aff., Ex. A, p.26. When questioned whether Reece relied on any other source, Harris responded: "I don't think so." McFarland Aff., Ex. A, p. 29. Harris also testified that when the map was updated by computer in the mid-1990's, just the P&Z map was used, along with prior versions of the Harris maps. McFarland Aff., Ex. A., pp. 36-38.

Based on this deposition testimony, Metro argues that Harris is "a mere verbal and non-exclusive licensee to whatever copyrights may be owned by the City of Idaho Falls Planning & Zoning ["P&Z"] Department and its map," or, "at best, the Harris Map is a derivative of the P&Z Map." Def.'s Mem., pp.3-4 (Dkt. 28-1). Harris does not claim that it has a written, exclusive licence agreement with the P&Z,² and objects to the characterization of its map as a derivative work.

A derivative work is defined as "a work based upon one or more preexisting works, such as a translation . . . art reproduction, abridgment, condensation, or any other form in which awork may be recast, transformed, or adapted." 17 U.S.C. § 101. "A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a 'derivative work'." Id. "The copyright protection afforded to derivative works is more limited than it is for original works of authorship. . . . [T]he copyright in a derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work." Entertainment Research, 122 F.3d 1211, 1220 (9th Cir. 1997) (internal quotations and citations omitted and emphasis added). To "support a copyright the original aspects of a derivative work must be more than trivial," and "must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material." Id. (internal citations omitted).

Although Metro repeatedly argues that the Harris Map "was taken exclusively from the P&Z Map," there is an issue of fact about this. Jason Harris did testify about what he thought Bob Reece used as a source when creating the 1984 map, but other individuals have filled in information indicating that other sources also were used. Dayne Dingman, a graphic artist who has worked on the Harris maps for eight years, stated that "[o]ne of reference materials used by Harris to create the Harris Idaho Falls Map" is the P&Z Map, but the P&Z Map "identifies only the location and names of streets in the Idaho Falls area," Dingman 1st Aff., ¶ 7 (Dkt. 41)³ , and the Harris Map includes landmarks not included on the P&Z Map.

Dingman, who has helped revise the Harris Maps,⁴ also explained that "Harris generally uses the P&Z Map as a starting point in the creation of its various versions of the Harris Idaho Falls Map, Dingman 1st Aff., ¶ 7 (Dkt. 41). Jason Harris testified in deposition that Harris also (but more recently) uses the emergency services map created by the City of Idaho Falls and Bonneville County as a reference to create the Harris Idaho Falls Map. McFarland Aff., Ex. A, p.39 (Dkt. 28-4). Dingman adds that "[t]he placement and proportion of each revision is a freehand estimate, based loosely on various other reference materials." Dingman 1st Aff., ¶ 8 ...