Williams v. Hy-Vee, Inc.

• Court: U.S. District Court — Southern District of Iowa
• Writing for the Court: Rebecca Goodgame Ebinger, United States District Judge
• Citation: Williams v. Hy-Vee, Inc., 661 F.Supp.3d 871 (S.D. Iowa 2023)
• Docket Number: 4:22-cv-00025-RGE-HCA
• Decision Date: 15 March 2023
• Parties: Chris A. WILLIAMS, Plaintiff, v. HY-VEE, INC. and Does 1-10, Defendants.

661 F.Supp.3d 871

Chris A. WILLIAMS, Plaintiff, v. HY-VEE, INC. and Does 1-10, Defendants.

No. 4:22-cv-00025-RGE-HCA

United States District Court, S.D. Iowa, Central Division

Signed March 15, 2023

Claudia Quinones, Pro Hac Vice, Leila Alexandra Amineddoleh, Pro Hac Vice, Travis J. Mock, Pro Hac Vice, Amineddoleh and Associates LLC, New York, NY, Jeffrey L. Goodman, Goodman/Keller P.C., West Des Moines, IA, for Plaintiff.

Timothy J. Zarley, John Gilbertson, Joshua James Conley, Zarley Law Firm PLC, Des Moines, IA, for Defendants.

ORDER GRANTING IN PART DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

Rebecca Goodgame Ebinger, United States District Judge

I. INTRODUCTION

Plaintiff Chris A. Williams sues Defendant Hy-Vee and Does 1-10, alleging claims for copyright infringement in violation of the Copyright Act of 1976, moral rights infringement in violation of the Visual Artists Rights Act of 1991, and removal of copyright management information in violation of the Digital Millennium Copyright Act of 1998.¹ Hy-Vee brings a counterclaim for declaratory judgment invalidating Williams's copyright registration. Hy-Vee moves for summary judgment on all claims.

The Court grants in part Hy-Vee's motion for summary judgment. Hy-Vee is entitled to summary judgment on Williams's claims for copyright infringement, moral rights infringement, and removal of copyright management information. The Court concludes Hy-Vee has satisfied is preliminary burden under 17 U.S.C. § 411(b)(1)(a) to show Williams knowingly provided inaccurate information to the United States Copyright Office in his copyright registration application. Having established this precondition, the Court is mandated under 17 U.S.C. § 411(b)(2) to request the Register of Copyrights advise the Court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse Williams's registration. The Court cannot issue a ruling on Hy-Vee's declaratory judgment request until after it receives guidance from the Register of Copyrights.

II. BACKGROUND

The following facts are either uncontested or, if contested, viewed in the light most favorable to Williams, the non-moving party. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

Williams is a professional artist. Pl.'s Resp. Def.'s Statement Undisputed Facts Supp. Def.'s Mot. Summ. J. ¶ 1, ECF No. 26-1. Williams was commissioned by 6th Avenue Corridor to create a mural on the wall of a building located in Des Moines, Iowa. Id. ¶ 2. On October 5, 2018, Williams and 6th Avenue Corridor entered a written agreement to govern the terms of the mural's commission. Id. ¶ 4; see Def.'s Ex. 3 Supp. Def.'s Mot. Summ. J. at App. 015-17, ECF No. 15-3. The Agreement identifies Williams as "the Artist" and 6th Avenue Corridor as "the Purchaser." ECF No. 26-1 ¶ 5; see ECF No. 15-3 at App. 015. The Agreement describes the work of art Williams was commissioned to create as an "abstract mural" made from paint, approximately thirty by twelve feet in size. Pl.'s Statement Additional Undisputed Facts Supp. Resist. Def.'s Mot. Summ. J. ¶ 13, ECF No. 26-2; ECF No. 15-3 at App. 015.

Section Two of Agreement provides Williams would receive $3,500.00 to "sell the Work to the Purchaser," with half the payment to be paid upon execution of the Agreement and the other half to be paid upon notification the mural was completed. ECF No. 26-1 ¶ 6; ECF No. 15-3 at App. 015.

Section Six of the Agreement, entitled "Ownership," states:

a. In the event of termination of this Agreement . . . the Artist shall retain all rights of ownership in the concept, design, and Work itself, including the right to complete, exhibit, and sell the Work unless the Work is directly painted onto a surface of a building which the Artist does not own.

b. Once the final payment has been made, ownership of the Work transfers to the Purchaser. If a building upon which the Work is installed is not owned by the Purchaser, ownership of the Work transfers to the building owner. Purchaser and/or building owner may not copyright, reproduce, or merchandise images of the Work without the Artist's written consent in advance.

ECF No. 26-1 ¶ 7; ECF No. 15-3 at App. 016.

Section Seven of the Agreement states: "The Purchaser will not permit any use of the Artist's name or misuse of the Work which would reflect discredit on his/her reputation as an artist or which would violate the spirit of the Work." ECF No. 26-1 ¶ 9; ECF No. 15-3 at App. 017.

Section Thirteen of the Agreement states: "This agreement contains all the covenants, promises, agreements, and conditions, either oral or written, between the parties, and may not be changed or modified except in writing signed by authorized representatives of the parties hereto." ECF No. 26-1 ¶ 8; ECF No. 15-3 at App. 017.

On or before November 15, 2018, Williams completed the commissioned mural and 6th Avenue Corridor provided final payment to Williams, per the terms of the Agreement. ECF No. 26-1 ¶ 13. Williams's artistic moniker ("CAW") and his Instagram username ("@KingCaw") are included in the lowermost opposing corners of the mural. ECF No. 26-1 ¶ 3; see Def.'s Ex. 2 Supp. Mot. Summ. J. at App. 014, ECF No. 15-3.

Hy-Vee is an Iowa corporation that operates a chain of grocery stores. ECF No. 26-1 ¶ 15. On February 3, 2019, Hy-Vee aired a commercial during Super Bowl LIII, which featured portions of the mural. Id. ¶ 19; see Def.'s Ex. 4 Supp. Def.'s Mot. Summ. J. 0:15-0:16, 0:46, ECF. No. 15-3. A longer version of the commercial was also posted on Hy-Vee's Facebook page. ECF No. 26-1 ¶ 29; see Def.'s Ex. 5 Supp. Def.'s Mot. Summ. J. 1:10-1:16, 2:59-3:08, ECF No. 15-3. The central portion of the mural is depicted in the commercial. ECF No. 26-1 ¶ 20; see ECF. No. 15-3 at App. 018-19. The commercial does not depict the lower right- and left-hand corners of the mural, where Williams's artistic moniker and Instagram username are respectively located. ECF No. 26-1 ¶¶ 20-21; see ECF No. 15-3 at App. 014.

Williams viewed the commercial when it aired. ECF No. 26-1 ¶ 30; ECF No. 26-1 ¶ 30. He contacted Hy-Vee via Facebook, stating Hy-Vee "need[ed] to pay up" for "using my bright colors and beauty without giving me a penny." ECF No. 26-1 ¶ 31; see Def.'s Ex. 6 Supp. Def.'s Mot. Summ. J. at App. 020, ECF No. 15-3.

On June 26, 2019, Williams registered the mural with the United States Copyright Office under Registration Number VAu001359660. ECF No. 26-1 ¶¶ 37-38; Def.'s Ex. 11 Supp. Def.'s Mot. Summ. J. at App. 041, ECF No. 15-3. On August 1, 2019, he filed suit against Hy-Vee in the United States District Court for the Central District of California, alleging violations of the Copyright Act and Digital Millennium Copyright Act. ECF No. 26-1 ¶¶ 34-35; Def.'s Ex. 9 Supp. Def.'s Mot. Summ. J. at App. 027-38, ECF No. 15-3. Williams voluntarily dismissed that suit in November 2019. ECF No. 26-1 ¶ 36.

On February 3, 2022, Williams filed the present suit. Compl., ECF No. 1. Williams brings claims for copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq.; moral rights infringement in violation of the Visual Artists Rights Act, 17 U.S.C. § 106A; and removal of copyright management information in violation of the Digital Millennium Copyright Act, 17 U.S.C. § 1202(b). Id. ¶¶ 56-86. Hy-Vee brings a counterclaim for declaratory judgment that Williams's copyright registration certificate for the mural is invalid. Def.'s Am. Answer, Affirmative Defenses, and Counterclaim 11-14, ECF No. 12.

Hy-Vee now moves for summary judgment on all claims. Def.'s Mot. Summ. J., ECF No. 15. Williams resists. Pl.'s Resist. Def.'s Mot. Summ. J., ECF No. 26. Hy-Vee requests a hearing. ECF No. 15 at 2. The Court decides Hy-Vee's motion without oral argument, finding the parties' briefings and exhibits adequately present the issues. See LR 7(c); Fed. R. Civ. P. 78(b). Having considered the parties' briefs and exhibits, the Court rules on Hy-Vee's motion for summary judgment.

Additional facts are set forth below as necessary.

III. LEGAL STANDARD

Under Federal Rule of Civil Procedure 56, the Court must grant a party's motion for summary judgment if no genuine issues of material fact exist and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A genuine issue of material fact exists where the issue "may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted." Id. at 248, 106 S.Ct. 2505.

When analyzing whether a party is entitled to summary judgment, a court "may consider only the portion of the submitted materials that is admissible or useable at trial." Moore v. Indehar, 514 F.3d 756, 758 (8th Cir. 2008) (internal quotation marks omitted) (quoting Walker v. Wayne Cnty., 850 F.2d 433, 434 (8th Cir. 1988)). The nonmoving party "receives the benefit of all reasonable inferences supported by the evidence, but has 'the obligation to come forward with specific facts showing that there is a genuine issue for trial.' " Atkinson v. City of Mt. View, 709 F.3d 1201, 1207 (8th Cir. 2013) (quoting Dahl v. Rice Cnty., 621 F.3d 740, 743 (8th Cir. 2010)). "In order to establish the existence of a genuine issue of material fact, a plaintiff may not merely point to unsupported self-serving allegations." Anda v. Wickes Furniture Co., Inc., 517 F.3d 526, 531 (8th Cir. 2008) (cleaned up). "The plaintiff must substantiate [the] allegations with sufficient probative evidence that would permit a finding in [the plaintiff's] favor." Smith v. Int'l Paper Co., 523 F.3d 845, 848 (8th Cir. 2008) (...