Wallenfang v. Havel

• Decision Date: 13 April 2010
• Docket Number: Case No. 08-C-288.
• Parties: Mark A. WALLENFANG, Plaintiff,v.John J. HAVEL, Chris Havel, and Pete Petasek, Defendants.
• Court: U.S. District Court — Eastern District of Wisconsin

707 F.Supp.2d 800

Mark A. WALLENFANG, Plaintiff,v.John J. HAVEL, Chris Havel, and Pete Petasek, Defendants.

Case No. 08-C-288.

United States District Court E.D. Wisconsin.

April 13, 2010.

COPYRIGHT MATERIAL OMITTED

Michael T. Hopkins, IP Special Counsel Ltd., Milwaukee, WI, for Plaintiff.

Christopher P. Riordan, Von Briesen & Roper SC, Milwaukee, WI, John R. Petitjean, Hinkfuss Sickel Petitjean & Wieting, Green Bay, WI, for Defendants.

DECISION AND ORDER

WILLIAM C. GRIESBACH, District Judge.

This action arises under the Copyright Act of 1976 (“the Act”), as amended, 17 U.S.C. §§ 101 et seq. Plaintiff Mark Wallenfang sued defendants John Havel, Chris Havel and Pete Petasek for copyright infringement. Wallenfang, a photographer, alleges he owns copyrights on 283 photographs that were used without his permission in a book published by the defendants entitled A Year of Champions: The 1996 Green Bay Packers. He also alleges that a graphic design incorporating some fifteen of his photographs was used without his permission for the book's dust jacket or cover. Wallenfang seeks actual or, alternatively, statutory damages for copyright infringement and a permanent injunction restraining defendants from infringing his copyrights. The matter is presently before me on the defendants' motion to dismiss for lack of subject matter jurisdiction and cross-motions for summary judgment. The defendants first contend that the Court lacks subject matter jurisdiction because Wallenfang's purported claim of copyright infringement is really nothing more than a contract claim in disguise. Wallenfang argues in response that subject matter jurisdiction clearly exists under 28 U.S.C. § 1338(a) because his claim is for copyright infringement, not breach of contract. Wallenfang further argues that the undisputed material facts establish that the defendants infringed his copyrights and he is entitled to judgment as a matter of law. The defendants oppose Wallenfang's motion for summary judgment and, in the event subject matter jurisdiction is determined to exist, seek summary judgment on their own behalf on the ground that Wallenfang is not entitled to statutory damages and cannot prove actual damages.

For the reasons that follow, I conclude that subject matter jurisdiction exists over Wallenfang's copyright claim. I also conclude that neither party is entitled to summary judgment on the grounds asserted. Accordingly, all of the motions before me will be denied.

BACKGROUND

The facts in this case are largely undisputed. Wallenfang is a professional photographer and for 14 seasons has photographed the Green Bay Packers for the Packer Report publication. (Pl.'s Proposed Findings of Fact (“PPFOF”) ¶¶ 4, 5.) On or about May 20, 2005, Wallenfang, Chris Havel and former Green Bay Packer Gilbert Brown entered into a contract with Festival Foods, a Green Bay grocery store, to create and publish a book to be entitled Return To Glory to commemorate the Green Bay Packer football team's 1995-96 championship season. ( Id. ¶ 14.) Under the terms of the agreement, Festival was to underwrite the production and printing costs for the book at Worzalla Publishing Company in Green Bay, provide a professional layout person, and then market, advertise and sell the finished product. ( Id. ¶ 17.) Wallenfang was to provide photographs for use in the book on a one-time basis, and assist Chris Havel in the design and layout of the book and dust cover. ( Id. ¶ 18.) Gilbert Brown was to co-author the text with Chris Havel, set up interviews with other Packer players, and appear at promotional book signings. ( Id. ¶ 19.) Finally, Chris Havel was to co-author the text with Gilbert Brown, assist on the layout and design, and appear at book signings with Gilbert Brown. ( Id. ¶ 20.)

The Agreement provided that the book would be published on or before November 14, 2005. Upon execution of the agreement, Festival advanced Chris Havel $20,000 and Wallenfang $6,000 for the work they were to do in creating the book. ( Id. ¶¶ 21-23.) Sometime thereafter, Wallenfang delivered to Festival two albums containing his proofs for the photographs he took during the 1995-96 season and began creating digital images of the photographs that were selected for use in the book. (Aff. of Christopher P. Riordan, Ex. B, Wallenfang Dep. at 12-13.) The project did not progress as scheduled, however, and no book was published by the November 14, 2005 deadline. Festival eventually terminated the agreement in May 2006. (PPFOF ¶¶ 25-27.)

After Festival pulled out of the arrangement, Wallenfang attempted to revive the project. (Riordan Aff., Ex. B, Wallenfang Dep. at 29-31.) Although the book had been intended to commemorate the ten-year anniversary of the Packer's 1995-96 championship season, the Super Bowl had taken place in 1996. If the book came out in 2006, the parties felt it could still be a success. Havel contacted defendant Pete Petasek, who agreed to underwrite one-half the printing costs in return for a share of the profits. John Havel, Chris' father also came on board and agreed to pay the other half of the costs of printing. ( Id. at 27.) The goal was to complete the project and have it to Worzalla Publishing ready for printing in time for the Christmas season.

During the late summer and fall of 2006, as Petasek pushed Havel to continue writing the text, Wallenfang worked with the person hired to do the layout in an effort to complete the project in time to get the book to Worzalla in time for a pre-Christmas release. ( Id. at 26-29, 35-37.) By this time, the title had been changed to A Year of Champions-1996 Green Bay Packers so as to avoid a trademark or copyright dispute. ( Id. at 52.) As the deadline approached, Wallenfang worked “around the clock” scanning images and meeting with the graphic designer hired to do the layout. ( Id. at 27-28.) Throughout this time, Wallenfang had numerous conversations with Chris Havel and Petasek about his compensation. Despite the absence of a written contract, he continued to work to get the book finished. ( Id. at 26, 37.)

Finally, on October 25, 2006, with the book completed and ready to go to print, Petasek, or his attorney, drafted a one-page document entitled “Agreement,” and Petasek faxed a copy of the Agreement to Wallenfang. ( Id. at 26; Pl.'s Supp. PFOF ¶¶ 2-3.) The Agreement included the following language:

This agreement between Mark A. Wallenfang, photographer, and Chris Havel, writer, grants Chris Havel the use of all images and photographs provided by Mark Wallenfang that will be used in the book A Year of Champions-1996 Green Bay Packers. The use of these photographs and images will be used on a one time use basis for this book only.

(Decl. of Michael T. Hopkins Ex. I.) The Agreement further provided that Wallenfang would receive fees of $7,500 for the photos, images and scanning of photos, royalties, and 50 books on the first printing of the book. ( Id.) Two signature spaces, one for Wallenfang and one for Chris Havel, appeared at the bottom of the Agreement. On the same day he received the Agreement from Petasek, Wallenfang signed the Agreement and faxed it back to Petasek. (Pl.'s Supp. PFOF ¶ 3.) Chris Havel claims he signed the Agreement the same day as well. (Havel's Proposed Findings of Fact (“HPFOF”) ¶ 16.)

Also on October 25, 2006, John Havel, Chris Havel, Petasek and Brown signed an agreement containing the following language:

This agreement between Gilbert Brown and Chris Havel (co-authors) and Petasek Promotions and John Havel (Promoters) grants Petasek Promotions LLC and John Havel sole authority to print and reprint the book: A Year of Champions: The 1996 Green Bay Packers. If Petasek Promotions LLC and John Havel elect not to reprint the book “A Year of Champions: The 1996 Green Bay Packers”, Gilbert Brown and Chris Havel may withdraw this permission and void this agreement.

(Decl. of Michael T. Hopkins Ex. J.) Neither John Havel nor Petasek have entered into any written agreements with Wallenfang concerning the use of his photographs in the Book.

Wallenfang had second thoughts about the terms of the Agreement almost immediately, and maintains that he revoked what he characterizes as his offer before he received any notice of acceptance by Chris Havel. (PPFOF ¶ 35.) Wallenfang claims he did not see a copy of the Agreement bearing Havel's signature until his deposition in this litigation. The parties agree that Wallenfang informed Petasek of his dissatisfaction with the Agreement, saying “it was not going to work,” on October 26, 2006. (HPFOF ¶ 10.) On the same day, Wallenfang drafted a counter agreement which was never signed by any of the parties. (HPFOF ¶¶ 5-6.) Wallenfang never discussed signing this counter agreement with Chris Havel, but indicated in an email sent to Chris Havel and Petasek on October 28, 2006, that the “contract sent on Wednesday, October 25, 2006, is now null and void. One of these contracts must be signed.” (HPFOF ¶¶ 11-12.)

In November 2006, Worzalla printed 10,340 copies of the book, of which 50 were delivered to Wallenfang by Petasek on November 14, 2006. (PPFOF ¶¶ 45-46.) Wallenfang signed a receipt for these copies of the book, which indicated that the books were “Received per Agreement.” (Petasek Dep. Ex. 8.) Of the 10,340 printed copies of the book, defendants sold 5,933 and another 1,500 were conveyed as compensation to Brown or to repay advances made by Festival on the prior book project that never came to fruition. (PPFOF ¶¶ 61-63.) Wallenfang attended a kick-off party for the book in December of 2006 at which the book was marketed, and was aware of retailers attempting to sell the book. (HPFOF ¶ ¶ 24-27.)

Wallenfang registered his copyright in the photographs used in the book, effective August 7, 2007. ( Id. ¶ 56.) He also registered his copyright in the book's cover design, with an effective date of November 24, 2006. (HPFOF ¶ 17.) The date of the book's first publication was November...