United States District Court, C.D. California
[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
Dylan Ruga, Harvey Geller, Steptoe and Johnson LLP, Los Angeles, CA, for Plaintiff.
Daniel M. Petrocelli, Drew E. Breuder, Justine M. Daniels, Robert C. Welsh, O'Melveny and Myers LLP, Los Angeles, CA, for Defendants.
AMENDED ORDER RE: DEFENDANT'S MOTION FOR SUMMARY JUDGMENT, MOTIONS IN LIMINE, AND OBJECTIONS TO EVIDENCE [Dkt. No. 198]
DEAN D. PREGERSON, District Judge.
Presently before the court is Defendant Skechers U.S.A. (" Skechers" )'s Motion for Summary Judgment. Having considered the submissions of the parties and heard oral argument, the court grants the motion in part, denies the motion in part, and adopts the following amended order.
As explained in this court's earlier order denying Defendant's Motion to Dismiss, Skechers is a shoe company. (Declaration of Robert Welsh in support of Motion (" Welsh Dec." ) Ex. 19.) Beginning in 2005, Skechers hired Plaintiff Richard Reinsdorf (" Reinsdorf" ), a photographer, to conduct several photo shoots. (Undisputed Fact ¶ 6). Between 2006 and 2009, Skechers engaged Reinsdorf to conduct five photo shoots at issue here, in connection with Skechers's marketing efforts. (Complaint ¶¶ 14-15, 18-19, 22-23, 25, 29-30.) Prior to each photo shoot, Skechers explained to Reinsdorf the type of images Skechers hoped to capture. (Welsh Dec., Ex. 44 ¶¶ 10, 12.) These explanations included storyboards and photographic examples, as well as drawings depicting particular poses for Skechers' selected models. ( Id. ¶¶ 12, 14.) During the shoots, Reinsdorf posed models, arranged lighting and props, and otherwise directed the photography sessions. (Compl. ¶ 23.) Reinsdorf delivered raw photographs (" the photographs" ) to Skechers at the conclusion of each photo shoot. (UF ¶ 22.)
Upon receiving the photographs from Reinsdorf, Skechers proceeded to modify the images for use in Skechers advertisements. (Welsh Dec., Ex. 44 ¶ 17.) The alterations varied with each image, and ranged from slight modifications in models' skin tone to the substitution of models' body parts and the addition of substantial graphic effects. ( Id. ¶¶ 17, 21.) These enhanced images were then used in Skechers advertisements (" the advertisements" ). ( Id. ¶ 16.) No raw, unaltered photograph was ever incorporated into a finished advertisement. ( Id. )
Reinsdorf submitted invoices to Skechers for his services, and contends that he granted Skechers a limited license to use the photographs. (Compl. ¶¶ 442; Statement of Genuine Issues ¶¶ 16-20, 22). Reinsdorf brought suit in this court alleging copyright infringement, as well as state law causes of action for breach of contract and unfair competition, alleging that Skechers utilized his copyrighted images as part of Skechers' marketing efforts in violation of the temporal and geographic limits of the use licenses. (Compl. ¶ 6.) Skechers now moves for summary judgment.
II. Legal Standard
Summary judgment is appropriate where the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show " 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). A party seeking summary judgment bears the initial burden of informing the court of the basis for its motion and of identifying those portions of the pleadings and discovery responses that demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). All reasonable inferences from the evidence must be drawn in favor of the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the moving party does not bear the burden of proof at trial, it is entitled to summary judgment if it can demonstrate that " there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 323, 106 S.Ct. 2548.
Once the moving party meets its burden, the burden shifts to the nonmoving party opposing the motion, who must " set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 256, 106 S.Ct. 2505. Summary judgment is warranted if a party " fails to make a
showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322, 106 S.Ct. 2548. A genuine issue exists if " the evidence is such that a reasonable jury could return a verdict for the nonmoving party," and material facts are those " that might affect the outcome of the suit under the governing law." Anderson, 477 U.S. at 248, 106 S.Ct. 2505. There is no genuine issue of fact " [w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).
It is not the court's task " to scour the record in search of a genuine issue of triable fact." Keenan v. Allan, 91 F.3d 1275, 1278 (9th Cir.1996). Counsel has an obligation to lay out their support clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031 (9th Cir.2001). The court " need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is not set forth in the opposition papers with adequate references so that it could conveniently be found." Id.
A. Procedural History
Skechers previously brought a Motion to Dismiss for lack of jurisdiction, arguing that the advertisements at issue in this case are joint works created by both Reinsdorf and Skechers. Because the jurisdictional issues were inextricably entwined with the merits of the case, this court applied the more rigorous standard applicable to motions for summary judgment under Federal Rule of Civil Procedure 56. (See March 9, 2012 Order Denying Defendant's Motion to Dismiss (" Order" ), Dkt. No. 28.)
As explained in the court's earlier Order, a joint work is a copyrightable work prepared by (1) two or more authors who (2) make independently copyrightable contributions and (3) intend that those contributions be " merged into inseparable or interdependent parts of a unitary whole." Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 969 (9th Cir.2008). Co-authors in a joint work cannot be held liable to one another for infringement of the copyright in the joint work. Oddo v. Ries, 743 F.2d 630, 632-33 (9th Cir.1984); Thomson v. Larson, 147 F.3d 195, 199 (2d Cir.1998).
This court found that the first two factors, authorship and independently copyrightable contributions, were not at issue. With respect to authorship, the court expressly declined to determine whether Reinsdorf was the sole author of the raw photographs because, even if that were the case, the finished advertisements at issue here would nevertheless be the product of contributions from two authors, Reinsdorf (raw photographs) and Skechers (graphical additions and modifications). (Order at 5 n. 3.)
The court focused, therefore, on the third factor necessary to establish the existence of a joint work: the intent of the parties to merge independent contributions into a unitary whole. After concluding that the record did not establish that Reinsdorf intended his raw photographs to be merged into a finished advertisement, the court denied Skechers' motion. ( Id. at 7.) Reinsdorf did not move for reconsideration or otherwise challenge the court's conclusions.
Now, after the conclusion of discovery, Skechers seeks summary judgment on the joint work issue. Skechers argues that the fully-developed record now demonstrates that Reinsdorf did indeed intend for his raw photographs to be merged with
Skechers' graphical enhancements into a finalized marketing image.
Reinsdorf's opposition to the motion does not dispute Skechers' contentions regarding his intent with respect to the synthesis of the parties' independent contributions. Instead, Reinsdorf now challenges the second, authorship element of the joint work test, arguing that the marketing images at issue here are not the creations of two or more authors. (Opp. at 8-16.)
B. Joint Authorship
This case presents an unusual set of circumstances. In most cases, a plaintiff seeks to establish that he is the sole author of a work, see, e.g., Morrill, 157 F.Supp.2d at 1122, or at least a co-author of a work, see, e.g., Aalmuhammed v. Lee, 202 F.3d 1227, 1230 (9th Cir.2000), so as to enjoy the benefits of copyright ownership (or co-ownership). Here, in contrast, Plaintiff Reinsdorf seeks to disavow any authorship role in the finished marketing works.
Reinsdorf's position is understandable in light of the fact that, as explained above, a co-author in a joint work cannot be liable to another co-owner for infringement of the copyright in that work. Oddo, 743 F.2d at 632-33 (9th Cir.1984). Furthermore, and perhaps more importantly, " [i]n a joint work, ... each author obtains an undivided ownership in the whole of the joint work, including any portion thereof. Consequently, one joint author thereby obtains the right to use or license that portion of the joint work that was the sole creation of the other joint author." 1 Nimmer on Copyright § 6.06[A]. Thus, to bring a successful infringement claim against Skechers, Reinsdorf must establish that his role in the creation of the final marketing images did not rise to the level of authorship.
The criteria for joint authorship include whether 1) an alleged author exercises control over a work, serves as " the inventive or master mind," or creates or gives effect to an idea; 2) there exists an " objective manifestation of a shared intent to be co-authors; and 3) " the audience appeal turns on both contributions and the share of each in its success cannot be appraised." " Aalmuhammed, 202 F.3d at 1233-35 (internal quotations and citations omitted). Due to the variety of ...