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Viper Nurburgring Record LLC v. Robbins Motor Co., LLC

United States District Court, D. Kansas

September 9, 2019




         Plaintiff Viper Nürburgring Record LLC (“VNR”) is an entity formed for the purpose of pursuing a world-record time on the Nürburgring race track in Nürburg, Germany. Defendant Robbins Motor Company, LLC (“RMC”) and its vice president and officer, Defendant Clayton Robbins (“Mr. Robbins”), [1] made a financial contribution towards VNR's efforts in exchange for, among other things, a license to use one photograph from the event. In this action, VNR alleges willful copyright infringement by Defendants in violation of the Copyright Act, 17 U.S.C. §§ 501, et seq. VNR alleges Defendants exceeded the scope of the agreed-upon license by using more than one photo, thereby infringing on its copyrights. Defendants, in turn, assert multiple defenses and a counterclaim seeking a declaratory judgment that VNR's copyrights are invalid, unenforceable, and not infringed. This matter is now before the Court on VNR's motion for summary judgment on its affirmative claim for copyright infringement, Defendants' counterclaim, and Defendants' defenses. Doc. 86.

         For the following reasons, the Court finds that VNR has established the elements of its prima facie case of copyright infringement. The Court further finds that VNR is entitled to summary judgment on Defendants' counterclaim and defenses of failure to state a claim, invalidity, non-copyrightable elements, unenforceability, express and implied license, permission, fair use, and unclean hands. But, as set forth below, the Court finds a genuine issue of material fact regarding whether the infringement was “willful.” The Court similarly finds a fact issue precluding summary judgment on Defendants' defenses of equitable estoppel and innocent intent. The Court accordingly denies summary judgment on those issues.

         I. BACKGROUND[2]

         A. VNR's World-Record Attempt

         In January 2017-the last year Vipers were manufactured-VNR announced its plan to organize a trip to the Nürburgring race track in Nürburg, Germany, hoping to set a world record on the track with one of two Viper ACR vehicles. VNR planned a first trip to Nürburg in July 2017 and a subsequent trip in August 2017, lining up professional drivers to operate the two cars and soliciting sponsors to provide financial support, the cars themselves, tires, and other spare parts. In exchange for their contributions, sponsors were to receive incentives such as exposure-i.e., their name on the cars involved in the world-record attempt-and a license to use a photo, or photos, from the event.

         To publicize the attempt and provide sponsors with such exposure, VNR hired a professional photographer, Eric Meyer, to take photographs. The agreement between Mr. Meyer and VNR-executed in June 2017, before the first trip to Nürburg-provided in pertinent part that “[a]ll photographs taken shall be the property of [VNR], in perpetuity, ” but granted Mr. Meyer permission “to use [the] photographs solely for his own personal and company self-promotion.” Pursuant to the agreement, Mr. Meyer took photographs for approximately ten days surrounding the first trip to Nürburg in July 2017. Mr. Meyer's photographs captured the Viper ACRs on and off the track, along with numerous images of the cars and the crew in the garage, pits, and on public roads. For each of the photos, Mr. Meyer chose the appropriate equipment and made decisions regarding factors such as the exposure, aperture, angle, and perspective of the images. From the approximately 6, 000 photographs taken by Mr. Meyer, he chose those photos he considered the “best” and edited the color, tint, contrast, brightness, and other parameters of the images.

         B. Defendants' Use of the Photographs

         Before the first Nürburg trip, Mr. Robbins-a vice president and officer of RMC, a Kansas car dealer-contacted VNR about a potential sponsorship. On June 20, 2017, Mr. Robbins sent Russ Oasis, managing member of VNR, a private message via the Viper Owners Association website asking what it would take to get RMC's name on the cars used in the world-record attempt. During this exchange, Mr. Robbins also expressed interest in using photos from the event to promote RMC and specifically inquired regarding the possibility of using the images “in social media and possibly tv ads.” Mr. Oasis responded that-in exchange for a $4, 000 contribution- VNR would place “a small logo [for RMC] on each car” and Mr. Robbins could “use a picture that you select from our photographer for your advertising for [RMC].” Mr. Oasis then asked whether the parties had a deal and Mr. Robbins responded that “we are in for the [$4, 000].” The parties stipulate that this agreement gave RMC a license to use one photograph from the event.

         The dispute in this case ultimately stems from Defendants' use of thirteen photos taken by Mr. Meyer, which VNR alleges exceeded the scope of the agreed-upon license. Following VNR's first world-record attempt, Mr. Robbins downloaded thirteen of Mr. Meyer's photos and saved copies to his computer. In late July 2017, Mr. Robbins sent those photos[3] via email to RMC employee Shannon Wood and instructed that she place one of the pictures on the RMC website. One of the photos-an image showing one of the Viper ACRs straight on with the headlights on- was posted to the website.[4] Mr. Robbins posted the same photo on his personal Facebook account. Mr. Robbins also posted photos taken by Mr. Meyer to RMC's Facebook page.[5] And, in or around late August 2017, RMC posted a banner advertisement for RMC using another one of Mr. Meyer's photos-an image of one of the Viper ACRs from the rear from a distance-to a third-party website.[6]

         C. The Dispute

         In mid-September 2017, Mr. Oasis contacted Mr. Robbins regarding the use of the photographs. Mr. Oasis sent Mr. Robbins a message stating that Mr. Robbins “can't just use [VNR's] pictures in [RMC's] advertising” and that if Mr. Robbins wanted to “license the use of the picture” he would need to pay an additional sum. If not, Mr. Oasis stated that Mr. Robbins would need to “remove the shot” from RMC's advertising. Mr. Oasis continued: “Those pics are our property and we deserve to be compensated for them . . . Would you like to license that shot? It's the fair thing to do.” In response, on September 18, 2017, Mr. Robbins explained that it was his understanding that he could use “photos” and asked for clarification regarding which “shot” Mr. Oasis was referencing. The next day, Mr. Oasis responded that “[t]he picture I'm referring to is the one where you see the back of the car on the ring and your ad is over it”-seemingly a reference to the image used in RMC's banner advertisement.

         The next month, Mr. Oasis again reached out to Mr. Robbins regarding his use of the photos. On October 15, 2017, Mr. Robbins sent Mr. Oasis a message referencing those communications. In his message, Mr. Robbins expressed his understanding that his agreement with VNR permitted him to “use a couple photos.” Mr. Robbins further stated:

If you are dead set on my taking the photo down, I will have no other option but to flame you and Viper Exchange on the forums. My reputation is what built my company and honoring my word. I'm sorry that's not the case for you and how you do business. I'll need to get another banner photo from my IT guy. But if I do I'm going to let everyone know what a sham this whole Ring Record attempt really was.

         Around the same time that VNR was contacting Mr. Robbins regarding the purportedly unauthorized use of the photos, VNR and Mr. Meyer executed an addendum to their June 2017 agreement, reiterating and confirming the intent to transfer and assign any ownership rights in the photos to VNR in exchange for the money paid to Mr. Meyer under the agreement. The addendum was fully executed on October 16, 2017. On October 18, 2017-two days after executing this addendum and three days after Mr. Robbins's message-VNR registered the photos used by Defendants with the U.S. Copyright Office. Of the thousands of photographs taken by Mr. Meyer at the July 2017 world-record attempt, VNR registered only those thirteen photographs at issue in this case.[7]

         Approximately five months later, in March 2018, Mr. Oasis again reached out to Mr. Robbins about his use of the photos. During that exchange, Mr. Robbins claimed that he “shared [the] pictures on Facebook to promote the [world-record] event” and explained that he thought he was only using one photo for advertising, as agreed upon by the parties, and believed that the photos he posted to Facebook were not subject to the parties' agreement. Mr. Robbins also stated that he had “taken down all the pictures.” VNR ultimately filed this lawsuit against Defendants on April 4, 2018, alleging one claim for copyright infringement related to the thirteen photographs registered by VNR. Doc. 85. VNR seeks actual damages as well as statutory damages for “willful” infringement. Id. In response, Defendants assert a litany of defenses and affirmative defenses, as well as a counterclaim seeking a declaratory judgment that VNR's copyrights are invalid and unenforceable and that Defendants did not commit any infringement. Id. VNR now moves for summary judgment on its affirmative claim for copyright infringement, Defendants' counterclaim, and Defendants' defenses. Doc. 86.

         II. STANDARD

         Summary judgment is appropriate where the moving party demonstrates that “there is no genuine dispute as to any material fact” and it is “entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). In applying this standard, courts must view the facts and any reasonable inferences that might be drawn therefrom in the light most favorable to the non-moving party. Henderson v. Inter-Chem Coal Co., 41 F.3d 567, 569 (10th Cir. 1994). “There is no genuine issue of material fact unless the evidence, construed in the light most favorable to the non-moving party, is such that a reasonable jury could return a verdict for the non-moving party.” Bones v. Honeywell Int'l, Inc., 366 F.3d 869, 875 (10th Cir. 2004) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).

         III. ANALYSIS

         A. Claim for Copyright Infringement

         In this case, VNR asserts one claim for copyright infringement under the Copyright Act. Doc. 85. To establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1196 (10th Cir. 2005). Here, in their opposition to summary judgment, Defendants challenge both elements, arguing VNR can show neither ownership of a valid copyright nor copying by Defendants. Doc. 90 at 23-25. The Court addresses the parties' arguments with respect to each element.

         1. Ownership

         The uncontroverted evidence establishes the first element of VNR's prima facie case. The parties stipulate that VNR owns the copyrights at issue.[8] Doc. 85 at 2-3 (stipulating that VNR owns the copyright registrations to the thirteen photos at issue in this case). And the copyrights are valid. To prove validity of the copyrights, VNR presents evidence of the certificates of registration obtained for the photographs. Each certificate identifies VNR as the copyright claimant and each certificate shows that the photos were registered within three months of first publication. Section 410(c) of the Copyright Act provides that such certificates constitute prima facie evidence of validity. 17 U.S.C. § 410(c) (“In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate.”); see also Palladium Music, 398 F.3d at 1196. The certificates presented by VNR therefore create a rebuttable presumption that its copyrights are valid. See In re Indep. Servs. Orgs. Antitrust Litig., 964 F.Supp. 1469, 1474 (D. Kan. 1997) (holding that § 410(c) “creates a rebuttable presumption of the copyright holder's originality and that the subject matter of the work is copyrightable”). Defendants bear the burden to overcome that presumption by offering some evidence to dispute validity. See Harris Mkt. Research v. Marshall Mktg. & Commc'ns, Inc., 948 F.2d 1518, 1526 (10th Cir. 1991).

         Defendants attempt to rebut the presumption of validity by arguing that the photographs at issue are not “original.” Doc. 90 at 24-25. Under the Copyright Act, copyright protection extends only to “original works of authorship.” 17 U.S.C. § 102(a). Within the copyright context, “original” means only that the work was independently created by the author, as opposed to copied from other works, and that it “possesses at least some minimal degree of creativity.” Feist, 499 U.S. at 345. The requisite level of creativity is “extremely low” and “even a slight amount will suffice.” Id. (emphasis added). “The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be.” Id. ...

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