Oppenheimer v. ACL LLC
| Decision Date | 02 December 2020 |
| Docket Number | CIVIL ACTION NO. 3:19-CV-00024-GCM |
| Citation | 504 F.Supp.3d 503 |
| Parties | David OPPENHEIMER, Plaintiff, v. The ACL LLC, William Stacey Moore, Defendants. |
| Court | U.S. District Court — Western District of North Carolina |
Dana A. LeJune, LeJune Law Firm, Houston, TX, for Plaintiff.
Larry S. McDevitt, The Van Winkle Law Firm, Asheville, NC, for Defendants.
THIS MATTER comes before the Court upon Plaintiff's Motion for Summary Judgment [ECF Doc. 13], which was filed on March 23, 2020. Defendants' Memorandum in Opposition to Plaintiff's Motion for Summary Judgment [ECF Doc. 16] was filed on May 6, 2020 and Plaintiff filed a Reply on May 13, 2020. This Motion, now being fully briefed, is ripe for consideration and the Court finds the following.
This copyright infringement case was brought by Plaintiff David Oppenheimer on January 17, 2019 against Defendants William Stacey Moore and the ACL LLC ("ACL"). ECF Doc. 1. The Copyrighted Work is a photograph framing the event center lobby of Harrah's Cherokee Casino Resort ("Harrah's"). ECF Doc. 1-1. Defendant ACL operates the website "iplaycornhole.com" and advertised an event to be held at Harrah's, the "2016 Championship of Bags," on iplaycornhole.com. ECF Doc. 14-2 at 12. Without having licensed to use, obtained authorization, or in any way compensated Plaintiff for its use of the Copyrighted Work, Defendant ACL used the Copyrighted Work on its website to promote the 2016 Championship of Bags. ECF Doc. 14-2 at 2, 12; ECF Doc. 1-3. Plaintiff attests that his copyrighted photographs display his copyright management information ("CMI") when first published, and the Copyrighted Work displayed his CMI when first published. ECF Doc. 1, ¶ 10; ECF Doc. 14-2 at 2. Because Defendants were on notice or should have been on notice for copyrights, Plaintiff sued Defendants for violating federal copyright law. ECF Doc. 1, ¶¶ 1, 10. Any other relevant facts are set forth in the discussion section below.
Under the Federal Rules of Civil Procedure, "[t]he court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Material facts are those "that might affect the outcome of the suit under the governing law," and "the materiality determination rests on the substantive law."
Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute is considered genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment." Id. at 247–48, 106 S.Ct. 2505 (alteration in original).
The "party seeking summary judgment always bears the initial responsibility of informing the district court of the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the movant has met the initial burden, the burden then shifts to the non-moving party to identify specific facts showing there is a genuine issue of material fact. See Anderson , 477 U.S. at 256, 106 S.Ct. 2505. In considering a motion for summary judgment, a Court views all evidence in the light most favorable to the nonmoving party. Id. at 255, 106 S.Ct. 2505.
Where a nonmoving party "shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may: (1) defer considering the motion or deny it; (2) allow time to obtain affidavits or declarations or to take discovery; or (3) issue any other appropriate order." Fed. R. Civ. P. 56(d)(1)–(3). Additionally, where "a party fails to properly support an assertion of fact or fails to properly address another party's assertion of fact as required by Rule 56(c), the court may ... consider the fact undisputed." Fed. R. Civ. P. 56(e)(2). It is with these standards in mind that the Court considers the present matter.
Plaintiff seeks only partial summary judgment, moving for summary judgment as to: (1) Defendants' liability for direct copyright infringement and (2) five of Defendants' affirmative defenses, including fair use, unclean hands, de minimis use, implied license, and failure to mitigate damages. The Court addresses each argument in turn below.
Plaintiff maintains there is no dispute of material fact and Plaintiff is entitled to judgment as a matter of law as to Plaintiff's claim for direct copyright infringement. A copyright holder is granted " ‘exclusive rights’ to use and to authorize the use of his work in five qualified ways, including reproduction of the copyrighted work in copies." Sony Corp. of Am. v. Universal City Studios, Inc. , 464 U.S. 417, 433, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) ; 17 U.S.C. § 106 (2018). Whoever violates an exclusive right of the copyright holder infringes upon the copyright. 17 U.S.C. § 501(a) ; Sony Corp. of Am , 464 U.S. at 433, 104 S.Ct. 774. To allege copyright infringement, a plaintiff must prove: (1) valid copyright ownership and (2) copying of the original elements of the copyright. CoStar Grp., Inc. v. LoopNet, Inc. , 373 F.3d 544, 549 (4th Cir. 2004).
Plaintiff sets forth that he holds a certificate of copyright registration for the Copyrighted Work issued by the United States Copyright Office. ECF Doc. 1-2. A certificate of registration "shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). Thus, Defendants have the burden to overcome the presumption that the copyrights are valid. See Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc. , 618 F.3d 417, 429 (4th Cir. 2010). Defendants make no attempt to dispute the validity of the copyrights for the Copyrighted Work. Therefore, Plaintiff has succeeded in establishing valid copyright ownership exists.
Next, Plaintiff argues there is no contrary evidence to that establishing Defendants directly copied the Copyrighted Work and published it on the internet without license or authorization. ECF Doc. 1-3 (); ECF Doc. 14-2 at 9, 12 (); ECF Doc. 14-2 at 11 (); ECF Doc. 14-2 at 15, 18 (). Again, Defendants do not seek to dispute the validity of this evidence, and by failing to dispute these facts, they have admitted that the Copyrighted Work was copied.
Nevertheless, Defendants argue there could be an issue of material fact as to whether the photograph was provided to Defendants by an act of a sovereign state, the Eastern Band of Cherokee Indians and its tribal entities ("the Tribe"), which could bar Plaintiff's claims. The act of state doctrine is applicable where "the relief sought or the defense interposed would [require] a court in the United States to declare invalid the official act of a foreign sovereign performed within its own territory." W.S. Kirkpatrick & Co. v. Env't Tectonics Corp., Int'l , 493 U.S. 400, 405, 110 S.Ct. 701, 107 L.Ed.2d 816 (1990). The issue only arises Id. at 406, 110 S.Ct. 701 (emphasis in original). The purpose behind the doctrine is that, were the United States to reexamine and possibly condemn the acts of another sovereign state, it could "imperil the amicable relations between governments and vex the peace of nations." Banco Nacional de Cuba v. Sabbatino , 376 U.S. 398, 417–18, 84 S.Ct. 923, 11 L.Ed.2d 804 (1964) (quoting Oetjen v. Cent. Leather Co. , 246 U.S. 297, 303–04, 38 S.Ct. 309, 62 L.Ed. 726 (1918) ). In considering whether the doctrine should be invoked, the policies underlying the act of state doctrine may be considered. W.S. Kirkpatrick & Co. , 493 U.S. at 409, 110 S.Ct. 701.
Defendants urge the Court to conclude that because there may be an issue of fact as to whether the Tribe or its entities acted officially by supplying Defendants with the photograph to be used in marketing the event at Harrah's, summary judgment is improper. According to Defendants, if the Tribe provided the photo to Defendants, granting Plaintiff summary judgment would be an indirect attack on the Tribe's sovereignty. The Court disagrees. To say that the act of state doctrine applies is to argue that the outcome of this case turns on whether the Tribe validly gave the photo to Defendants in its official capacity and, thereby, made it so that Defendants' copying and posting of the Copyrighted Work was not infringement. This theory is far too attenuated where Defendants, who are not alleged to be part of the Tribe, took the Copyrighted Work and illegally copied it onto their website. Such a conclusion is especially true given that Defendants' theory in no way serves to promote the rationale behind the act of...
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