Pinkham v. Sara Lee Corp.
| Decision Date | 22 December 1992 |
| Docket Number | 91-2812 and 91-2815,Nos. 91-2801,s. 91-2801 |
| Citation | 983 F.2d 824 |
| Parties | 1993 Copr.L.Dec. P 27,037, 25 U.S.P.Q.2d 1336 Mary Ellen PINKHAM, Plaintiff-Appellee, v. SARA LEE CORPORATION; Hanes Hosiery, Inc.; L'eggs Products, Inc.; Defendant-Appellant. CAMEX, INC.; Jay Columbus; Victor Benedetto, Defendant, v. MARY ELLEN ENTERPRISES, INC.; Third Party-Defendant-Appellee, v. SARA LEE CORPORATION; Hanes Hosiery, Inc.; L'eggs Products, Inc., Third Party-Plaintiff-Appellant. Mary Ellen PINKHAM, Plaintiff-Appellant, v. SARA LEE CORPORATION; Hanes Hosiery, Inc.; L'eggs Products, Inc.; Defendants-Appellees, Camex, Inc.; Jay Columbus; Victor Benedetto, Defendants. SARA LEE CORPORATION; Hanes Hosiery, Inc.; L'eggs Products, Inc., Third Party-Plaintiffs, v. MARY ELLEN ENTERPRISES, INC., Third Party-Defendant. Mary Ellen PINKHAM, Plaintiff-Appellee, v. SARA LEE CORPORATION; Hanes Hosiery, Inc.; L'eggs Products, Inc.; Defendants, Camex, Inc.; Jay Columbus; Victor Benedetto, Defendants-Appellants. SARA LEE CORPORATION; Hanes Hosiery, Inc.; L'eggs Products, Inc., Third Party-Plaintiffs, v. MARY ELLEN ENTERPRISES, INC., Third Party-Defendant. |
| Court | U.S. Court of Appeals — Eighth Circuit |
Curtis Forslund, Minneapolis, MN, argued (Curtis D. Forslund and Gregory Merz on the brief), for appellants/cross-appellees Sara Lee, et al.
Robert Meloni, New York City, argued (Robert S. Meloni on the brief), for appellants/cross-appellees Victor Benedetto, et al.
Scott Gerrick Harris, Minneapolis, MN, argued (Frank R. Berman and Scott G. Harris on the brief), for appellee/cross-appellant, Mary Ellen Pinkham.
Before McMILLIAN, JOHN R. GIBSON, and MAGILL, Circuit Judges.
These appeals arise from a copyright infringement action brought by Mary Ellen Pinkham pursuant to 17 U.S.C. § 501 (1988). Pinkham is an author who arranged to have Camex, Inc. promote one of her books as a "premium" item. Pinkham allowed Camex to print 13,000 copies of her book for a subsidiary of Sara Lee Corporation. Thereafter, Camex sold Sara Lee approximately 300,000 additional copies of Pinkham's book. Pinkham claims that Camex neither informed her of this sale nor paid her royalties from it. Following the filing of summary judgment motions by all parties, the district court entered judgment against Camex in favor of Pinkham, but denied summary judgment against Sara Lee. Pinkham now argues that the district court erred in allowing Sara Lee to avoid summary judgment by asserting an apparent authority defense. Camex argues that the district court erred in finding no issues of fact material to Pinkham's authorization of Camex's actions, in finding two individuals associated with Camex personally liable, and in rejecting Camex's arguments against the validity of Pinkham's copyright. We affirm the order entering summary judgment against Camex and reverse the order denying summary judgment against Sara Lee.
In 1976, Mary Ellen Pinkham and her mother, Pearl Higginbotham, coauthored Mary Ellen's Best of Helpful Hints and obtained a copyright in both of their names "d/b/a Mary Ellen Enterprises." Pinkham subsequently incorporated Mary Ellen Enterprises and used the corporation to market her own books and those of other authors. Pinkham is the sole shareholder of Mary Ellen Enterprises.
In 1979, Pinkham and Higginbotham revised Mary Ellen's Best of Helpful Hints and obtained a new copyright registered in their own names. In June 1982, Pearl Higginbotham transferred all of her copyright rights in the book to Pinkham.
Pinkham met Jay Columbus and Victor Benedetto, who did business as Camex, Inc., in early 1983 and soon thereafter authorized them to promote her book and other books distributed through Mary Ellen Enterprises. 1 Columbus and Benedetto were to promote Pinkham's books as "premium" items, that is, items offered to consumers in conjunction with the promotion of other products. This arrangement was confirmed in a letter dated December 9, 1983. 2
At about the same time, Columbus told Pinkham that the Sara Lee Corporation was interested in buying her book to use as a premium item to promote L'eggs hosiery. Columbus told Pinkham the deal could result in the sale of millions of copies of her book. Pinkham was excited about the proposal and told Columbus to pursue negotiations with Sara Lee. During this time, Columbus, acting on behalf of Camex, communicated frequently with Pinkham and employees of Mary Ellen Enterprises.
Sara Lee then agreed to "test market" 10,000 to 13,000 copies of the book before deciding whether to purchase additional copies for a large scale distribution (known in the trade as a "roll-out"). After Pinkham approved the initial test market sale of her book, she complied with Camex's request that she give Camex the book's printing film so that Camex could print the copies needed for the test market.
In the first six months of 1984, Sara Lee purchased just over 13,000 copies of Mary Ellen's Best of Helpful Hints for use in the premium test market. Shortly thereafter, Pinkham alleges that Columbus told her Sara Lee was not pleased with the test market results and would not be purchasing additional copies of the book for a roll-out. In accordance with the December 9, 1983, agreement, Camex paid Pinkham fifty percent of the profits realized from the sale of the 13,000 copies. Pinkham and her lawyer asked Camex to return the printing film for the book, and initially were told that it would be sent. Pinkham never received the film, and Camex later told her that it did not have the film.
In April 1987, Pinkham learned that Camex had printed and sold to Sara Lee approximately 300,000 additional copies of Mary Ellen's Best of Helpful Hints. Pinkham states that she had no knowledge of this sale and had never authorized Camex to sell any copies of the book beyond the initial 13,000 test market. Pinkham asserts that Sara Lee never contacted her to obtain permission to use her copyrighted work, and that neither Sara Lee nor Camex was authorized to reproduce or distribute the 300,000 copies of the book.
Pinkham sued Camex (and both Columbus and Benedetto individually) and Sara Lee for infringement of copyright in violation of 17 U.S.C. § 501. All parties eventually filed motions for summary judgment.
The district court first considered Pinkham's motion for summary judgment on the claim for copyright infringement. The court rejected Camex's argument that Pinkham lacked standing, and that Pinkham had authorized Camex to act on her behalf. Pinkham v. Sara Lee Corp., No. 4-87-454, slip op. at 6-10 (D.Minn. Sept. 6, 1989). The court found that Camex had failed to offer any evidence showing that Pinkham or Mary Ellen Enterprises had authorized the sale of the additional 300,000 copies to Sara Lee, and that Camex had therefore infringed Pinkham's copyright in the 1979 edition of Mary Ellen's Best of Helpful Hints. Id. at 9-10. The district court entered partial summary judgment against the Camex defendants. The district court then denied Pinkham's summary judgment motion against Sara Lee, concluding that the defense of apparent authority was available to Sara Lee, and that factual issues relating to this defense remained. Id. at 10-12.
Camex later filed its own summary judgment motion and declaratory judgment on the issue of ownership or validity of the copyright for the 1976 edition of Mary Ellen's Best of Helpful Hints. Camex argued that the copyright notice in the 1976 edition was inadequate, improperly placed, and that the contents of the book had been injected into the public domain. Camex also argued that there was no valid copyright with regards to the portions of the 1979 version of Mary Ellen's Best of Helpful Hints, which were derived from the 1976 edition of the same book, and that it was an innocent infringer due to defective copyright. The district court rejected these arguments and denied Camex's motion for summary judgment. Pinkham v. Sara Lee Corp., No. 4-87-454, slip op. at 14 (D.Minn. Mar. 14, 1991)
The district court certified for immediate appeal under 28 U.S.C. § 1292(b) (1988) the various issues involved in its summary judgment rulings, and we accepted certification.
We review these summary judgment orders de novo and adopt the standards employed by the district court. See Schrader v. Royal Caribbean Cruise Line, Inc., 952 F.2d 1008, 1013 (8th Cir.1991). The standard for reviewing summary judgment orders is well established:
Summary judgment is appropriate when no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law. In order to preclude the entry of summary judgment, it is incumbent upon the nonmoving party to make a sufficient showing on every essential element of its case on which it bears the burden of proof. In determining whether the grant of a motion for 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., 853 F.2d 616, 618 (8th Cir.1988) (citations omitted).
Pinkham appeals the order of the district court denying summary judgment against Sara Lee. The district court denied Pinkham's summary judgment motion, reasoning that "the Sara Lee defendants may defend this case on a theory of apparent authority," and that "material issues of fact exist as to the existence and scope of Camex'[s] apparent authority." Pinkham, slip op. at 11 (Sept. 6, 1989). We reverse.
Sara Lee argues that Pinkham clothed Camex with broad apparent authority to act as her agent and that this authority included the power to authorize the use of Pinkham's copyrighted material by third parties. Sara Lee claims that the relationship negotiated between Pinkham and Columbus, which was confirmed in the December 9, 1983 letter, and the general course of dealing between Pinkham and Camex (e.g., sales of other books through Camex) would support...
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