United States District Court, D. Kansas
MEMORANDUM AND ORDER
L. TEETER, UNITED STATES DISTRICT JUDGE
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”),  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.
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.
VNR's World-Record Attempt
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
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.
Defendants' Use of the Photographs
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.
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 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. 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. 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
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.
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
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
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.
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.
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)).
Claim for Copyright Infringement
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.
uncontroverted evidence establishes the first element of
VNR's prima facie case. The parties stipulate that VNR
owns the copyrights at issue. 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).
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.