Tomelleri v. Zazzle, Inc.
| Decision Date | 09 December 2015 |
| Docket Number | Case No. 13-CV-02576-EFM-TJJ |
| Parties | JOSEPH R. TOMELLERI, Plaintiff, v. ZAZZLE, INC., Defendant. |
| Court | U.S. District Court — District of Kansas |
Plaintiff Joseph Tomelleri filed this lawsuit against Defendant Zazzle, Inc., alleging direct and indirect copyright infringement and violation of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. §§ 1201 et seq. Defendant has three motions currently pending before the Court: (1) a Motion to Dismiss (Doc. 182); (2) a Motion for Summary Judgment (Doc. 282); and (3) a Motion to Strike the Affidavit of Joseph Tomelleri (Doc. 311). For the following reasons, the Court denies the Motion to Dismiss, denies in part and grants in part the Motion for Summary Judgment, and denies in part and grants in part the Motion to Strike Tomelleri's Affidavit.
Plaintiff is a highly-skilled fish illustrator. Only a few people in the United States perform his type of work. Plaintiff's illustrations have a reputation for showing exactly what fish look like. They have appeared in more than 1,000 publications, including more than ninety different magazines, in hundreds of fish identification publications, and in books. Most of Plaintiff's business is with governmental and private organizations that use the images for identification and advertising, with retailers that use the images on products, and with fish systematists.
Plaintiff generally begins the illustration process by selecting the species of fish he intends to illustrate and collecting specimens and photographs of that fish. Plaintiff collects the specimens and takes the photographs himself and uses specimens and photographs taken by others. The photographs are taken immediately after the fish is caught to record the fish's colors as found in nature. After being photographed, the fish are preserved. The preservation process changes the color and shape of the fish and also frequently damages fins and other attributes of the specimens.
Accurately photographing fish is difficult because a single photograph does not show all of the diagnostic characteristics of the fish and because photographs are a two-dimensionalrepresentation of a three-dimensional object. Photographs of fish may have reflections that obscure details about the fish, such as the number of spots on the fish. In addition, it is not uncommon for fish species to become "bleached" from stress of capture. Thus, the fish must be held in dark buckets or clear plastic bags of water, typically in shaded areas so that their color may return to normal before photographing.
Plaintiff creates his illustrations by hand, without the aid of a computer; he never traces the specimens. Although each illustration typically takes sixty hours to draw, the time spent on an illustration varies depending on the condition of the specimen, the colors in the fish, the size of the drawing, and other factors. Before drawing the fish, Plaintiff measures it using a ruler marked in millimeters. Plaintiff measures the size of the fish and other features, such as the size of the fish's scales, to make sure the proportions of his illustration are exact and the spacing is accurate. He also occasionally uses a dissection microscope that allows him to see and quantitate details that might not be visible to the naked eye.
Plaintiff then uses the measurements, specimens, and photographs to sketch the fish using a graphite pencil. Typically Plaintiff draws smaller fish at two or three times the actual size of the specimen. He draws larger fish smaller than life-size. Plaintiff draws fish in the "left-lateral view" (with the head of the fish facing left) because any scientific work performed on a specimen (fin clips, pulled scales, tissue samples, etc.) are all performed on the "right-lateral view" of the fish by convention.
The outline of Plaintiff's drawing requires him to make certain assumptions about the fish's measurements because of the difficulty in converting a three-dimensional fish specimen into a two-dimensional fish. Also, the chemicals used to preserve the fish can distort the shape of the fish. Plaintiff must also decide how the spread and the disposition of the fins shouldappear in the outline. This is not apparent from the specimen because the fins of the specimen are almost always deflexed and often lay flat against the fish.
After drawing the outline, Plaintiff then typically draws the eye of the fish using his experience, field notes, and photographs. After completing the eye, Plaintiff then colors the head and the body. Plaintiff generally uses thirty to forty colors for an illustration. He attempts to reproduce the color of the fish as accurately as possible by reviewing the photographs taken shortly after the fish is caught. This can involve subjective judgment, though, because no one really knows the color of the fish prior to collection. Plaintiff uses his experience to decide on what shading, contrast, color saturation, etc. to put into the illustration.
Plaintiff's intent with each illustration is to make a scientifically accurate representation of the fish species he is drawing. Plaintiff's artwork is not photo-realistic, but is stylized to interpret certain light reflections and lighten or darken certain parts of the fish to make the drawings more uniform and aesthetically pleasing.
Plaintiff's illustrations differ slightly from the actual specimens. For example, Plaintiff does not count every scale and every scale row on the specimen. Scales and rows are inconsistent in shape and size in any particular species. Rows often morph together, or split apart, can be difficult to count, and are irregular in size. Plaintiff also adds shading to the fish's fin rays, which are clear, so that they are visible in the illustration. Similarly, Plaintiff generally outlines the fish with gray lines using a graphite pencil, focusing on the fish's white belly and white or clear fins. Plaintiff believes that this produces a more eye-pleasing illustration and creates a distinct border to aid in the scanning process.
Plaintiff testified at his deposition that he "express[es] his art" by excluding the imperfection of a particular fish, such as a "freak deformation" on a specimen that had twopectoral fins on one side coming out of the same origin, because he did not want to include scars or other injuries that are not typical of that fish species. This exclusion of imperfections is done to provide a more accurate representation of the typical appearance of that species of fish, because the abnormality would not normally exist in nature.
Defendant operates a website entitled zazzle.com. This website allows third party users to create, buy, and sell customized merchandise online. A user can upload images to zazzle.com and create certain products made available by Defendant, such as a t-shirt or mug, with that image on them. Defendant then manufactures the user's customized product. A user can upload images and create the products privately for the user's own use, or the user can "publish" his products, making them available for sale to the general public. When the user publishes his products, they are sold through the user's "storefront" on the website. Defendant sets the minimum sales price for each product sold through its website.
Defendant requires its website users to agree to its User Agreement. The User Agreement contains the following license:
You retain all ownership rights to your Content submitted to the Site. By submitting Content to Zazzle, you grant Zazzle a nonexclusive, worldwide, transferable license, to use, copy, reproduce, modify, publicly display, and distribute your Content.
The term "Content" is defined in the User Agreement as "material including but not limited to text, data, photographs, graphics, stitch files, images, information, audio clips, and all digital data or any combination of these elements." Every user who wants to sell his or her designs also must agree to the Nonexclusive License Agreement and reaffirm this agreement for everyproduct design that the user publishes. The Nonexclusive License Agreement contains the following license:
By uploading Designs to [zazzle.com] or creating Designs with Zazzle's design tools, you grant the following license to Zazzle: the nonexclusive, worldwide, transferable, sublicensable right to use, reproduce, publicly display, sell, and distribute the Design in or on Products and in advertising, marketing, samples, and promotional materials for the purpose of promoting [zazzle.com] and Products.
Defendant requires each of its users to verify that he or she has the necessary rights to the images the user uploads. Defendant relies on its users' verifications that they have the right to upload an image. Based on the license agreement between Defendant and its users, Defendant provides the following metadata associated with all Realviews2 appearing on zazzle.com:
Zazzle has more than 203 million images in its database. Although Defendant offers instructional information on creating files to upload for designing products, Zazzle users act independently when uploading and designing products. Defendant retains the after-the-fact ability to remove or block access to infringing items uploaded to its websites. Zazzle has created partnerships with well-known copyright and trademark holders, including Disney, Hallmark, and Warner Brothers. It employs a team of people that reviews every order placed and has a policy to suspend the accounts of repeat offenders. Defendant also includes a "Report this product" button on every product page. Anyone can use this button to alert Defendant of a potential violation of its User Agreement. When Defendant's content review team identifies an infringing product design in an order, it cancels the entire order, including...
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