Kennedy v. Gish, Sherwood & Friends, Inc.

• Decision Date: 05 November 2015
• Docket Number: No. 4:13-CV-2236 JAR,4:13-CV-2236 JAR
• Court: U.S. District Court — Eastern District of Missouri
• Parties: Stephen Kennedy, Plaintiff, v. Gish, Sherwood & Friends, Inc., Defendant.

143 F.Supp.3d 898

Stephen Kennedy, Plaintiff,

v.Gish, Sherwood & Friends, Inc., Defendant.

No. 4:13-CV-2236 JAR

United States District Court, E.D. Missouri, Eastern Division.

Signed November 5, 2015

Ronald J. Eisenberg, Robert Schultz, Schultz and Associates, L.L.P., Chesterfield, MO, for Plaintiff.

Gordon L. Ankney, Mark Sableman, Michael L. Nepple, Thompson Coburn, LLP, St. Louis, MO, James L. Weatherly, Jr., Weatherly and McNally, PLC, Nashville, TN, for Defendant.

MEMORANDUM AND ORDER

JOHN A. ROSS

, UNITED STATES DISTRICT JUDGE

This matter is before the Court on cross motions for summary judgment. Plaintiff Stephen Kennedy ("Kennedy") brings this action against Defendant Gish, Sherwood & Friends, Inc. ("Gish"), asserting copyright infringement and violations of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1201 et seq.

Kennedy, a professional photographer, claims Gish, an advertising agency, copied and used 169 of his photographs without his permission in violation of his copyrights. Gish moves for summary judgment on the issues of copyright ownership (Doc. No. 128) and liability (Doc. No. 159), and partial summary judgment with respect to certain damages limitations. (Doc. No. 161) Kennedy moves for partial summary judgment on Gish's affirmative defenses of consent, permission, license or contract. (Doc. No. 162) The motions are fully briefed and ready for disposition.

I. Facts

The relevant facts are undisputed. Kennedy displays his photographs available for licensing on his websites, kennedystock.com and Stephenkennedy.com. Each page of the websites displays the following notice: © Stephen Kennedy | 314-[redacted]. Each photograph has a yellow tag watermark in the lower right hand corner identifying it as a Kennedy photograph. Each photograph has digitally embedded metadata identifying Kennedy as the copyright owner.

In 2011, Gish copied 169 low-resolution images, through screenshots, from Kennedy's websites for possible use in an advertising campaign for its client First Acceptance Insurance Company ("FAIC"). Gish selected 39 of the 169 photographs for use as "comps," meaning they were incorporated into advertising mockups and presentations to convey Gish's proposed creative direction to FAIC. The remaining 130 photographs were not shown to FAIC at that time. The parties agree that advertising agencies routinely copy and use low-resolution photographs in comps without first notifying the copyright owner and without first securing an express license.

Upon termination of its relationship with Gish, FAIC requested Gish deliver copies of all files relating to the account, including "all working papers and drafts, digital files, copy, photos, and correspondence and reports related to the account." After receiving the files from Gish, FAIC displayed five of Kennedy's low-resolution photographs on its website in its final advertising campaign.

Kennedy's pleadings have gone through a number of revisions, but the operative pleading is his Fifth Amended Complaint against Gish and FAIC¹ filed on June 18, 2015, alleging claims of copyright infringement (Count I), contributory copyright infringement (Count II), vicarious copyright infringement (Count III) and DMCA violation (Count IV). (Fifth Amended Complaint ("FAC"), Doc. No. 119) On Gish's motion and with Kennedy's consent, Counts II and III of the FAC were dismissed on July 15, 2015. (Doc. No. 146) In its Answer to Kennedy's Fifth Amended Complaint, Gish asserted two counterclaims seeking to have Kennedy's copyright registrations invalidated or held unenforceable. Gish alleged Kennedy was not the true owner and author of the copyrights because they were taken in the course of his employment with one of his two companies, Stephen Kennedy, Inc. and Kennedystock, LLC. Gish further alleged Kennedy wrongly identified his photographs as unpublished in his copyright applications when "all or substantially all" of them had in fact been previously uploaded to Kennedy's websites. (Doc. No. 137 at 17-23) Kennedy has moved to dismiss Gish's counterclaims as untimely and because they fail to identify the challenged copyrights. (Doc. No. 140) Gish's counterclaims are proper and timely filed in response to Kennedy's amended complaint. The counterclaims properly identify the copyright registrations Gish seeks to invalidate by registration number. (See Doc. No. 137 at 18) Moreover, Kennedy has addressed the issue of copyright ownership in his responsive briefing to Gish's motion. Accordingly, Kennedy's motion to dismiss Gish's counterclaims will be denied.

II. Legal standard

Summary judgment is appropriate when no genuine issue of material fact exists in the case and the movant is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett , 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)

. The initial burden is placed on the moving party. City of Mt. Pleasant, Iowa v. Associated Elec. Coop., Inc. , 838 F.2d 268, 273 (8th Cir.1988). If the record demonstrates that no genuine issue of fact is in dispute, the burden then shifts to the non-moving party, who must set forth affirmative evidence and specific facts showing a genuine dispute on that issue. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In determining whether summary judgment is appropriate in a particular case, the evidence must be viewed in the light most favorable to the nonmoving party. Osborn v. E.F. Hutton & Co., Inc. , 853 F.2d 616, 618 (8th Cir.1988). Where parties file cross-motions for summary judgment, each summary judgment motion must be evaluated independently to determine whether a genuine issue of material fact exists and whether the movant is entitled to judgment as a matter of law. Husinga v. Federal–Mogul Ignition Co. , 519 F.Supp.2d 929, 942 (S.D.Iowa 2007).

III. Discussion

The Copyright Act of 1976 provides that:

the owner of a copyright...has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies ...; (3) to distribute copies...of the copyrighted work to the public...and (5) in the case of...pictorial...works...to display the copyrighted work publicly.

17 U.S.C. § 106 (2002)

. Engaging in any of these categories without the copyright owner's permission violates the exclusive rights of the copyright owner and constitutes infringement of the copyright. See 17 U.S.C. § 501(a) (2002). To establish copyright infringement, a plaintiff must demonstrate that he owns a valid copyright and that the defendant has copied, displayed, or distributed protected elements of the copyrighted work without authorization. Mulcahy v. Cheetah Learning LLC , 386 F.3d 849, 852 (8th Cir.2004) (citing Feist Publ'n, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991) ). See also

Taylor Corp. v. Four Seasons Greetings, LLC , 403 F.3d 958, 962–63 (8th Cir.2005) ; Moore v. Columbia Pictures Indus., Inc. , 972 F.2d 939, 941 (8th Cir.1992). However, even if the plaintiff makes this prima facie showing, the defendant may avoid liability by establishing its use of the copyrighted work was authorized by express or implied license and/or fair use. Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, P.A. , 2013 WL 4666330, at *8 (D.Minn. Aug. 30, 2013).

A. Gish's Motion for Summary Judgment Regarding Plaintiff's Lack of Copyright Ownership

As a threshold matter, Gish moves to strike Kennedy's responses to certain of its Statement of Uncontroverted Material Facts or, alternatively, deem such statements admitted for purposes of the instant motion. (Doc. No. 172)² Motions to strike are not favored and infrequently granted, because they propose a drastic remedy. Stanbury Law Firm, P.A. v. IRS , 221 F.3d 1059, 1063 (8th Cir.2000)

. Rule 12(f) authorizes a court to strike from a pleading any "redundant, immaterial, impertinent, or scandalous matter." Fed. R. Civ. P. 12(f). A "pleading" as defined in Rule 7(a) does not include statements of fact submitted in support of, or in opposition to, a motion for summary judgment. Thus, there is no specific authority in the Federal Rules for striking a party's statement of uncontroverted facts or responses thereto. Nelson v. Special Admin. Bd. of St. Louis Pub. Sch. , 2012 WL 5508394, at *1 (E.D.Mo. Nov. 14, 2012). Accordingly, Gish's motion to strike will be denied. The Court will examine the entire record, including any properly supported factual contentions, to determine whether there are genuine disputes regarding material facts precluding the entry of summary judgment. See

Fabian v. St. Louis Rams Partnership , 2014 WL 222816, at *1 (E.D.Mo. Jan. 21, 2014). Mere arguments, speculation and/or conclusions fail to create a genuine issue of material fact sufficient to defeat summary judgment.

The plaintiff in a copyright infringement action has the burden of proving ownership of a valid copyright. Taylor , 403 F.3d at 962

. A certificate of copyright registration is prima facie evidence of the validity of the copyright and the facts stated in the certificate, including ownership. See 17 U.S.C. § 410(c) ; Reg'l Multiple Listing Serv. of Minn., Inc. v. Am. Home Realty Network, Inc. , 2012 WL 4470286, at *8 (D.Minn. Sept. 27, 2012) ; Taylor , 403 F.3d at 972. The copyright registrations for the photographs at issue list Kennedy as the copyright owner. (See Doc. No. 119-2) Kennedy is, therefore, entitled to a presumption of the validity of the facts stated therein. Taylor Corp. v. Four Seasons Greetings, LLC , 315 F.3d 1039, 1042 (8th Cir.2003). This presumption is not irrebuttable, but it shifts the burden to the defendant to offer some evidence to dispute the plaintiff's prima facie case of infringement. Lenert v. Duck Head Apparel Co., Inc. , 1996 WL 595691, at *3 (5th Cir. Sept. 25, 1996) ; Norma Ribbon & Trimming, Inc. v. Little , 51 F.3d 45, 47 (5th Cir.1995) (citing Lakedreams v. Taylor , 932 F.2d 1103, 1108 n. 10 (5th Cir.1991) ); Entm't...