Lee v. Deck the Walls, Inc.

• Citation: 925 F. Supp. 576
• Decision Date: 01 May 1996
• Docket Number: No. 94 C 4606.,94 C 4606.
• Parties: Annie LEE and Annie Lee & Friends Company, Inc., Plaintiffs, v. DECK THE WALLS, INC. and A.R.T. Company a/k/a Albuquerque A.R.T. Company, Defendants.
• Court: U.S. District Court — Northern District of Illinois

925 F. Supp. 576

Annie LEE and Annie Lee & Friends Company, Inc., Plaintiffs, v. DECK THE WALLS, INC. and A.R.T. Company a/k/a Albuquerque A.R.T. Company, Defendants.

No. 94 C 4606.

United States District Court, N.D. Illinois, Eastern Division.

May 1, 1996.

Philander Scott Neville, Jr., Geraldine C. Simmons, Chicago, IL, for Annie Lee, Annie Lee & Friends Company, Inc.

Philip M. Kolehmainen, Joseph Krieger, Joan Pennington, Mason, Kolehmainen, Rathburn & Wyss, Chicago, IL, for A.R.T. Company.

Richard Eugene Dick, Law Offices of Dick & Harris, Chicago, IL, Deborah L. Taylor, Wilner & Taylor, Houston, TX, for Deck The Walls, Inc.

OPINION AND ORDER

NORGLE, District Judge:

Before the court are the parties' cross motions for summary judgment. For the following reasons, the court dismisses Defendant Deck The Walls, Inc. ("DTW") and grants summary judgment in favor of Defendant A.R.T. Company ("ART") and against Plaintiffs.

I. Facts

The facts are undisputed. Defendant DTW operates as a franchisor for retail art stores. DTW sells art works to the public through its individual retail stores. DTW operates a retail store in North Riverside, Illinois at which it sells various Annie Lee art works. Defendant ART is a wholesaler of decorative ceramic tiles.

Plaintiff Annie Lee is an individual artist who draws and publishes works of art. Annie Lee distributes these works of art through Annie Lee and Friends, Inc. (collectively "Annie Lee"), a store located in Glenwood, Illinois. Annie Lee is the author and creator of fifteen works of art which are the subject of this lawsuit. These works are registered with the Register of Copyrights. Annie Lee published these art works on notecards. DTW's North Riverside, Illinois store purchased 430 such notecards from Annie Lee. DTW sent the notecards to ART who mounted each work onto a ceramic tile. The process of mounting the art work onto the ceramic tiles is relatively simple. ART trimmed the card images, adhered the cards to a ceramic tile, and covered the image with a clear epoxy resin. ART did not reproduce any of Annie Lee's cards. DTW later repurchased the notecards (now mounted on the tiles) from ART and sold them in its store.

Annie Lee commenced this action alleging that DTW and ART engaged in acts tantamount to copyright infringements, unfair competition and a breach of contract. Subsequently, Annie Lee amended the complaint by withdrawing the breach of contract claim. This court then dismissed the unfair competition count. Thus, only a single count, a copyright infringement claim, remains.

II. Discussion

Summary judgment is proper when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The party moving for summary judgment has the initial burden of submitting affidavits and other evidentiary material to show the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986). A genuine issue of material fact exists when "there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2510-11, 91 L.Ed.2d 202 (1986). However, where — as here — the parties concede that no genuine issue of fact exists, the court has a duty to apply the law to the facts and summarily grant judgment in favor of the deserving party. Casey v. Uddeholm Corp., 32 F.3d 1094, 1099 (7th Cir.1994).

A. Dismissal of DTW

Federal Rule of Civil Procedure 4(m) states:

If service of the summons and complaint is not made upon a defendant within 120 days after the filing of the complaint, the court, upon motion or on its own initiative after notice to the plaintiff, shall dismiss the action without prejudice as to that defendant.

ART brought to the court's attention that Annie Lee neglected to serve the Second Amended Complaint upon DTW. Annie Lee did not address that fact in its response. The court, therefore, finds that Annie Lee was on notice of its failure to properly serve DTW and, sua sponte, dismisses DTW as a party to this lawsuit.

B. Copyright Claim

The purpose of the Copyright Act is to reward the creators of copyrighted works and to promote "broad public availability of literature, music, and the other arts." Capital Cities Cable, Inc. v. Crisp, 467 U.S. 691, 710, 104 S.Ct. 2694, 2706, 81 L.Ed.2d 580 (1984). There are two elements to a claim for copyright infringement: (1) plaintiffs ownership of the copyright, and (2) defendant's act or acts of "copying the constituent elements of the copyrighted work that are original." I.A.E., Inc. v. Shaver, 74 F.3d 768, 774 (7th Cir.1996) (citing Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1295-96, 113 L.Ed.2d 358 (1991)). "Copying" means infringing upon a copyright owner's exclusive rights. 17 U.S.C. § 106. The Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. § 101, grants copyright owners exclusive rights to reproduce the copyrighted work, prepare derivative works based upon the copyrighted work, distribute copies of the copyrighted work, and to display the copyrighted work. 17 U.S.C. § 106. However, a copyright holder's distribution right is not absolute. The "First Sale Doctrine," codified at 17 U.S.C. § 109, allows an individual who legally acquired a lawfully-made copy of a copyrighted work to sell or otherwise transfer that particular copy as he or she wishes. Id. Annie Lee bases its claim on its exclusive right "to prepare derivative works based upon its copyrighted work" and "to distribute copies ... of the copyrighted work by sale or other transfer of ownership." 17 U.S.C. § 106(2)(3).

At the outset, the court acknowledges the existence of two similar cases from the Ninth Circuit, Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir.1988) and Munoz v. Albuquerque A.R.T. Co., 829 F.Supp. 309 (D.Alaska 1993), both of which involve the instant Defendant and the same ceramic tile mounting process. Most noteworthy of the two, the Munoz case involved strikingly similar facts: ART purchased an artist's notecards, mounted the notecards onto ceramic tiles pursuant to the same mounting process, and distributed the resulting ceramic tiles. Citing the Mirage Editions case as authority, the district court in Munoz found that the Defendant's acts constitute copyright infringement. Munoz, 829 F.Supp. at 316-17. The parties to the instant action make the same arguments as in Munoz. Yet, while the facts and arguments in the Munoz case and the case sub judice are analogous, the outcomes are much different.

1. Derivative Work

Since both parties agree that Annie Lee held valid copyrights to the fifteen works of art allegedly "copied" by ART, the court need only address the second element of copyright infringement, whether ART engaged in "copying" Annie Lee's works as defined by the Copyright Act. Annie Lee first argues that each ceramic tile produced by ART is a "derivative work" which Annie Lee had the exclusive right to prepare. A "derivative work" is a "work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. § 101. Moreover, a "derivative work" is a work "consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship." Id.

In support of its argument, Annie Lee contends that the tiles fall within the definition of derivative work in that they are either art reproductions or, at the very least, are the result of recasting, transforming or adapting the original work. Annie Lee cites to the Mirage Editions and Munoz cases as persuasive authority.¹ ART responds that, while the two cases do in fact support Annie Lee's argument, the courts involved were in error and reached a result contrary to established case law and the Copyright Act. ART argues that there is no difference between the mounting process and the framing process. Rather than a "derivative work," ART argues that the process is a mere method of using and displaying the purchased copies of Annie Lee's art work. Thus, this case turns on whether each ceramic tile is (1) a "work" derived from Annie Lee's work or (2) a mere medium of display. The Munoz court rejected ART's argument that the ceramic tile is a method of display. In so holding, the district court made the following distinction between framing and mounting a work onto ceramic tile:

Placing a print or painting in a frame and covering it with glass does not recast or transform the work of art. It is commonly understood that this amounts to only a method of display. Moreover, it is a relatively simple matter to remove the print or painting and display it differently if the owner chooses to do so. Neither of these things is true of the art work affixed to a ceramic tile. Moreover, tiles lend themselves to other uses such as trivets (individually) or wall coverings (collectively).

Munoz, 829 F.Supp. at 314. In a footnote, the Munoz court again noted the "significant distinctions between framing and permanently affixing to a substance which lends itself to uses other than merely hanging on a wall." Id. at 314 n. 4. The court went on to reject the applicability of the First Sale Doctrine, and found the ceramic tiles to be copyright infringements.

Respectfully, this court disagrees with the Munoz court; the court finds the proffered distinctions between framed art and "tiled art" unconvincing and without support.² Both framing and tiling utilize the same works purchased from the copyright holder and do not involve "copying" as defined by the Copyright Act. Both processes involve trimming the...