JAMES D. WHITTEMORE, District Judge.
In this action for copyright infringement, brought pursuant to 17 U.S.C. §§ 101, et seq., Plaintiff alleges that theater programs for "Menopause the Musical" contain an unauthorized reproduction of Plaintiffs copyrighted work, "The Official Baby Boomer Qualifying Exam." Menopause the Musical ("the Musical") has been performed across the country since March 2001. (Am.Compl., Dkt.42, ¶ 16). Defendant Jeanette Linders ("Linders") is the author of the Musical, Defendant J. Jargon Co. is the holder of rights to the Musical, and Defendant TOC Productions, Inc., ("TOC") is a production company that has produced the Musical at various locations throughout the country. (Dkt.42, ¶¶ 16-17). Linders is the President of TOC. (Linders Dep. at 63). In the instant motion, Plaintiff seeks summary judgment against Linders and TOC only. (Dkt. 67 at 1, n. 1).
In 1996, Plaintiff authored the work at issue, "The Official Baby Boomer Qualifying Exam" (hereinafter, "BBQE"). The BBQE is a twenty-nine question test featuring trivia targeted to members of the "Baby Boom generation," those individuals born between the years of 1946 and 1964. (Pl. Dec. ¶¶ 2, 8, Exh. 3). The BBQE includes questions based on music, movies, television, and other cultural phenomena that, as Plaintiff states, true "Baby Boomers should be able to answer." (Pl. Dec. ¶ 5, Exh. 3). In addition to the twentynine questions, the BBQE features a five paragraph essay in which Plaintiff addresses the question "Just what are the qualifications for baby boomer status?" (Pl. Dec. ¶¶ 2, 8, Exh. 3). Plaintiff declares that he located a file containing the BBQE on his computer, dated March 10, 1996. (Pl. Dec. ¶¶ 7-9). Plaintiff also located a file containing an earlier, twentyseven question version of the BBQE, dated June 9, 1995. (Pl. Dec. ¶ 5, Exh. 1). Both versions contain copyrights on the final line to "Hershel Chicowitz," which is Plaintiffs pen name. (Pl. Dec. ¶¶ 5, 8, Exh. 1 at 4, Exh. 3 at 5).
In June 1997, Plaintiff started a website targeted at baby boomers (www.bbhq. com). (Pl. Dec. ¶ 10). According to Plaintiff,
Plaintiff alleges that he has spent "countless hours" addressing unauthorized uses of the BBQE and other copyrighted work on various websites. (Pl. Dec. ¶¶ 20-21). Specifically, Plaintiff submits copies of his correspondence to seven alleged infringers relating to unauthorized uses of the BBQE between August 2000 and March 2004. (Pl. Dec. ¶¶ 22-29, Exhs.9-16). In addition, in 1995 or 1996, Plaintiff posted the twenty-seven question version of the exam, with its copyright notice, on America OnLine ("AOL") and on a website he maintained through CompuServe. (Pl. Dec. ¶ 6). Plaintiff declares that "at some point an unauthorized version of the exam was posted on AOL." (Pl. Dec. ¶ 6). Plaintiff alleges that when he discovered this, he contacted AOL and "had them remove the unauthorized version." (Pl. Dec. ¶ 6).
Over the weekend of June 9, 2006, Plaintiff attended a performance of the Musical in Tampa, Florida. (Pl. Dec. ¶ 32). After returning home from the Musical, Plaintiff noticed that the program that he received for the performance included a page entitled "Take the Age Test," a trivia exam featuring twenty-four fill-in-the-blank questions. (Pl. Dec. ¶ 32, Exh. 17 at 4). As discussed in detail below, the "Take the Age Test" (hereinafter, "Age Test") possesses significant similarities to the BBQE. As a result, Plaintiff contends that the Age Test infringes the BBQE.
At some point that same weekend, Plaintiff visited the Musical's website and completed a form on the website to notify the producers of their allegedly unauthorized use of the BBQE. (Pl. Dec. ¶ 34). As a result, Linders sent an email on June 12, 2006 to employees of the production companies for the Musical, in which she wrote: "GOT THIS OVER THE WEEKEND> IF YOU ARE USING THE AGE TEST PLEASE PUT A c BABYBOOMER HQ. (www.bbhq.com) at the end of the age test." (Dkt.73, Exh. M). The email contains the following version of Plaintiffs communication:
Plaintiff notes that this version of his communication breaks off midsentence and that he would not have typically ended a communication in that manner. (Pl. Dec. ¶ 35).
Plaintiff responded, in part:
Effective August 10, 2006, Plaintiff received a Certificate of Registration for the BBQE. (Pl. Dec, Exh. 6). Plaintiff later received a supplementary Certificate of Registration to correct the "date of first publication" from June 1, 1995 to June 15, 1997. (Pl. Dec. ¶ 14, Exh. 7).
On September 6, 2006, Plaintiff filed this lawsuit, alleging a single claim for copyright infringement based on Defendants' use of the Age Test in programs for the Musical. (Dkt.1). In his motion for summary judgment, Plaintiff argues that he is entitled to judgment as matter of law on his claim of copyright infringement and on each of the Defendants' eleven affirmative defenses. Defendants argue that even if Plaintiff can demonstrate copyright infringement, Plaintiff has suffered no cognizable damages as a matter of law and Defendants are entitled to prevail under the affirmative defenses of fair use and license.
As set forth below, disputed issues of material fact preclude summary judgment on Plaintiffs copyright infringement claim. Further, while Defendants are entitled to summary judgment on Plaintiffs claim for actual damages, there is an issue for the fact-finder on Plaintiffs claim for Defendants' profits attributable to the infringement.
Summary judgment is proper if following discovery, the pleadings, depositions, answers to interrogatories, affidavits and admissions on file show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Fed.R.Civ.P. 56. "An issue of fact is `material' if, under the applicable substantive law, it might affect the outcome of the case." Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259-60 (11th Cir.2004). "An issue of fact is `genuine' if the record taken as a whole could lead a rational trier of fact to find for the nonmoving party." Id. at 1260. All the evidence and factual inferences reasonably drawn from the evidence must be viewed in the light most favorable to the nonmoving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970); Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1280 (11th Cir. 2004).
Once a party properly makes a summary judgment motion by demonstrating the absence of a genuine issue of material fact, whether or not accompanied by affidavits, the nonmoving party must go beyond the pleadings through the use of affidavits, depositions, answers to interrogatories and admissions on file, and designate specific facts showing that there is a genuine issue for trial. Celotex, 477 U.S. at 323-24, 106 S.Ct. 2548. Plaintiffs evidence must be significantly probative to support the claims. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The Court will not weigh the evidence or make findings of fact. Anderson, 477 U.S. at 249, 106 S.Ct. 2505; Morrison v. Amway Corp., 323 F.3d 920, 924 (11th Cir. 2003). Rather, the Court's role is limited to deciding whether there is sufficient evidence upon which a reasonable juror could find for the non-moving party. Id.
A. Copyright Infringement
In the instant action, Plaintiff brings a single claim for copyright infringement,
1. Ownership of a valid copyright
In order to prevail on the first element, ownership of a valid copyright, Plaintiff must demonstrate that he complied with applicable statutory formalities and that the BBQE is "original" within the meaning of the Act. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir.1996). As set forth below, both requirements are met.
a. Statutory formalities
Registration of a work is not a condition of copyright protection. 17 U.S.C. § 408(a). It is, however, a jurisdictional prerequisite to bringing a claim for copyright infringement. M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir.1990); 17 U.S.C. § 411(a). Although Defendants do not dispute that Plaintiff registered his work, effective August 10, 2006, Defendants argue that Plaintiffs registration is invalid.
Specifically, Defendants argue that Plaintiff failed to properly identify his work in the Copyright Registration as a "compilation," even though the BBQE contains quotations from other published works.
In the Eleventh Circuit, omissions or misrepresentations in a copyright application render the registration invalid only when there is "intentional or purposeful concealment of relevant information," that is, scienter. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11th Cir.1982) (finding that there was no fraud on copyright office where plaintiff had not completed item 6 at direction of copyright office personnel); Milliken & Co. v. Shaw Indus., Inc., 978 F.Supp. 1155, 1158 (N.D.Ga.1997).
Although Plaintiff complied with the requisite statutory formalities, the BBQE was not registered until 2006, more than five years after its first publication in 1997. Accordingly, the registration, by itself, does not constitute prima facie evidence of Plaintiffs ownership of a valid copyright. Cf. 17 U.S.C. § 410(c) (a certificate of a registration made "within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright"). Thus, the evidentiary weight to be accorded to the registration is "within the discretion of the court." Id.
The Copyright Act of 1976 confers protection on "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102(a). It is well-established that copyright protection "does not extend to any underlying facts or ideas." BUC Int'l Corp. v. Int'l Yacht Council Ltd., 489 F.3d 1129, 1140 (11th Cir.2007).
Defendants contend that the BBQE is simply a collection of unoriginal facts and phrases, many of which are in the public domain, and therefore does not possess the requisite originality. However, even a purely factual compilation is copyrightable when it involves:"(1) the collection and assembly of pre-existing material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the creation, by virtue of the particular selection, coordination, or arrangement, of an `original' work of authorship." Feist, 499 U.S. at 357, 111 S.Ct. 1282; see also 17 U.S.C. § 103 (providing copyright protection to compilations). Although "originality" is not a rigorous standard, "`the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever.'" BUC Int'l Corp., 489 F.3d at 1141 (quoting Feist, 499 U.S. at 362, 111 S.Ct. 1282).
The BBQE possesses more than the requisite degree of originality. The BBQE includes a five-paragraph introduction by Plaintiff, addressing the question: "Just what are the qualifications for baby boomer status?" (Pl. Dec., Exh. 6 at 4). Following the introduction, the BBQE sets out twenty-nine trivia questions. Plaintiff selected the facts and quotations underlying the questions, all of which purport to correspond to topics of interest and special knowledge of baby boomers. Plaintiff converted the facts and quotations into trivia by phrasing the facts as questions or including "fill-in-the-blanks" within the quotations.
Defendants also argue that the BBQE is not copyrightable pursuant to the doctrine of merger, which provides that "expression is not protected in those instances where there is only one or so few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself." BUC Int'l Corp., 489 F.3d at 1143. (noting that a circle with a diagonal line, indicating that something is prohibited, is not protected because there are only a few ways of visually presenting that something is prohibited). The threshold inquiry in applying the merger doctrine requires a determination of precisely what the "idea" and the "expression" are, id., an inquiry Defendants have not specifically addressed.
To the extent the "idea" in the instant case is a humorous exam based on baby boomer-specific trivia, there are myriad ways in which this idea could be expressed. As noted above, Plaintiff expressed this idea using one approach: selecting twenty-nine subjects to test and phrasing and arranging the questions in a unique manner. As the BBQE is but one conceivable way of formulating a trivia exam targeted at baby boomers, Plaintiff's work is not subject to the merger doctrine. See id. (no merger where the "idea" of presenting information to yacht brokers could be "expressed" by including and arranging a variety of listing criteria).
d. Plaintiffs claim of authorship
In addition to disputing the originality of the BBQE, Defendants raise a number of arguments regarding Plaintiff's claim to authorship of the BBQE.
First, Defendants argue that another website claims a 1994 copyright on a similar test. (Dkt. 78 at 8). Defendants' argument is not supported by the cited record evidence. Although the referenced webpages from the websitewww.commonplace-book.com contain a test entitled "Official Baby Boomer Qualifying Exam," there is no copyright notice after the test. (Greco Dec, Exh. 1 at 608-09). Rather, the webpages include a copyright notice on the last page, as follows: "Copyright 1994-2006. A Commonplace Book. Stephen Mineart. All rights reserved." (Greco Dec, Exh. 1 at 608-09). This notice appears to apply to the entire website, not specifically to the test. More fatal to Defendants' challenge to Plaintiffs authorship, the webpage states "author unknown" immediately after the "Official Baby Boomer Qualifying Exam" title. Accordingly, the Court finds this evidence is insufficient to create a dispute regarding Plaintiffs original authorship of the BBQE, which is supported by Plaintiffs registration and computer files dating from 1995 and 1996.
Second, Defendants argue that Plaintiff "readily deceives when he thinks that a misrepresentation will be in his best
Finally, Defendants argue that Plaintiffs credibility is undermined by his alleged financial motivation in filing this lawsuit. Specifically, Defendants cite a portion of an essay that Plaintiff admits he wrote about Linders, which stated, in part: "Colour My Bankbook. As time goes on you realize just what it means to me. And now, now that you're rich, promise some cash for my quiz that you shared with all of your patrons together. Colour my bankbook with cash from only you." (Pl. Dep. at 121-22). While this may be probative of Plaintiffs motive in filing this lawsuit, the Court finds that Plaintiff's financial motives do not create a dispute as to whether Plaintiff authored the BBQE.
Based on the foregoing, Plaintiff has adequately demonstrated the first element of his copyright infringement claim: ownership of a valid copyright.
2. Copying constituent elements
In order to establish the second element of a claim for copyright infringement, Plaintiff must demonstrate that Defendants copied the constituent elements of Plaintiffs work that were original. Proof of copying may be demonstrated by direct or circumstantial evidence, both of which Plaintiff alleges in the instant case. Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1249 (11th Cir.1999). As set forth below, the Court finds there are disputed issues of material fact precluding Plaintiffs motion for summary judgment on the second element.
a. Direct evidence of copying
Direct evidence of copying rarely exists. Id. Cases in which direct evidence is present typically include evidence of an express admission by the infringer that he or she copied the infringed work. See e.g., Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir.1994) (employee testified that president told her he was having plaintiff's doll copied); SCQuARE Int'l, Ltd. v. BBDO Atlanta, Inc., 455 F.Supp.2d 1347, 1359 (N.D.Ga. 2006) (employees admitted that they copied portions of plaintiffs manual). In addition, when a defendant admits to copying a work derivative of the plaintiffs copyrighted work, this may constitute sufficient evidence of direct copying of the copyrighted work. See e.g., Donald Frederick Evans and Assocs., Inc., 785 F.2d at 904; Lifetime Homes, Inc. v. Walker Homes, Inc., 485 F.Supp.2d 1314, 1320-21 (M.D.Fla.2007).
In this case, Plaintiff argues that there is direct evidence that Defendants copied the BBQE because Linders testified that she received the Age Test in an email and that she directed it to be included in the program for the Musical. (Linders
b. Substantial similarity
Even in cases is which there is no direct evidence of copying, a plaintiff may prevail on the second element by demonstrating that: (1) the defendant had access to the plaintiff's work; and (2) the defendant's work is "substantially similar" to the plaintiff's protected expression. See Beal v. Paramount Pictures Corp., 20 F.3d 454, 459 (11th Cir.1994). A finding of "substantial similarity" between the copyrighted work and the infringing work not only provides circumstantial evidence that Defendants copied the Plaintiff's work, it also demonstrates that Defendants copied the requisite constituent protected elements of Plaintiff's work. Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir.2000).
In the instant case, the parties do not dispute that Defendants had access to Plaintiff's work, which was available on Plaintiff's website. See Herzog, 193 F.3d at 1249 ("access" requires proof of "a reasonable opportunity to view" the work in question). The pertinent issue is whether the Age Test is substantially similar to the BBQE.
Substantial similarity between two works is demonstrated when "an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1266 (11th Cir.2001). In the case of a factual compilation, the substantial similarly requirement involves a narrowed construction: because the components of the compilation are frequently already in the public domain, "[w]hat must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." BellSouth Adver. & Publ'g Corp. v. Donnelley Info. Publ'g, Inc., 999 F.2d 1436, 1445, 1445 n. 22 (11th Cir.1993). Therefore, "[w]hile the works need not be identical, there must be sufficient congruence between the original elements of the copyrighted work and the copied work such that a jury could find infringement." BUC Int'l Corp., 489 F.3d at 1148. Substantial similarity may be determined as a matter of law at the summary judgment stage when no reasonable
Based on a comparison of the Age Test and the copyrighted version of the BBQE, the Court finds that a jury question exists as to substantial similarity. (Pl. Dec., Exhs.7, 17). First, each of the Age Test's twenty-four questions is based on a fact or quotation tested in the BBQE. Second, ten of the Age Test questions contain identical wording to BBQE questions (Age Test questions 4, 5, 7, 9, 10, 11, 13, 14, 16, 24), and ten other questions in the Age Test are phrased with only minor differences from the BBQE questions (Age Test questions 3, 6, 8, 12, 15, 17, 18, 19, 20, 23). Third, the Age Test's twenty-four questions are in the same order as the BBQE's twenty-nine questions. On the other hand, the Age Test does not contain Plaintiffs five introductory paragraphs, it excludes five of the BBQE questions (BBQE questions 10, 15, 20, 28, and 29), and it removes some of Plaintiffs original material from four of the BBQE questions (Age Test questions 1, 2, 21, 22).
Based on the foregoing, there is an issue of fact as to whether there is "sufficient congruence between the original elements of the copyrighted work and the copied work" to render the Age Test and BBQE substantially similar. Plaintiffs motion for summary judgment on Plaintiffs claim for copyright infringement is therefore denied.
The Copyright Act includes a specific provision governing damages, entitling a successful copyright owner to claim: (1) "actual damages suffered by him or her as a result of the infringement;" and (2) "any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages." 17 U.S.C. § 504(b). Defendants' motion for summary judgment is premised on the argument that Plaintiff can prove neither form of compensatory damages as a matter of law. The Court finds that Plaintiff has failed to produce any competent evidence that he suffered actual damages and that Plaintiffs proffered expert on actual damages, Larry Steven Londre, provides unreliable and irrelevant testimony. By contrast, Plaintiff is entitled to have a jury decide whether Defendants have earned profits attributable to their alleged infringement.
1. Actual damages
Actual damages are "often measured by the revenue that the plaintiff lost as a result of the infringement," Montgomery v. Noga, 168 F.3d 1282, 1295 n. 19 (11th Cir.1999), including "lost sales, lost opportunities to license, or diminution in the value of the copyright," On Davis v. The Gap, Inc., 246 F.3d 152, 164 (2d Cir. 2001). Defendants' argument that Plaintiff never earned revenue from the BBQE is undisputed. (Pl. Dep. at 292). Plaintiff also testified that he does not have any evidence that the Age Test had a negative effect on his website. (Pl. Dep. at 189).
a. Retroactive license fee
As Defendants acknowledge, however, a claim for lost profits may include a retroactive license fee measured by what the plaintiff would have earned by licensing the infringing use to the defendant. See e.g., Montgomery, 168 F.3d at 1295-96 (affirming jury award of actual damages based on a retroactive license fee); On Davis, 246 F.3d at 166. In order to demonstrate entitlement to a reasonable license fee, Plaintiff "must show that the thing taken had a fair market value." On Davis, 246 F.3d at 166. Courts have found adequate evidence supporting a finding of fair market value when: (1) the plaintiff demonstrates that he previously received compensation for use of the infringed work; or (2) the plaintiff produces evidence of benchmark licenses, that is, what licensors have paid for use of similar work.
In this case, Plaintiff has never licensed the BBQE for fees. (Pl. Dep. at 159). In fact, the only evidence pertaining to past use of the BBQE indicates that Plaintiff gave a theater group in Minnesota permission to use the BBQE for free, if they gave him credit. (Pl. Dep. at 278). Accordingly, Plaintiff has not demonstrated that the BBQE had a fair market value premised on past license fees paid for its use.
Plaintiff also fails to produce any evidence of benchmark licenses, such as what producers have paid for the use of content similar to the BBQE in theater programs. Indeed, Plaintiff admits that his proffered expert, Larry Steven Londre, fails to address any evidence pertaining to benchmark licenses. (Dkt. 91 at 4). As a result, Defendants have moved to exclude Londre's testimony. (Dkt.83).
Because Plaintiff fails to introduce any evidence, through expert testimony or otherwise, demonstrating that he is entitled to lost profits, including a reasonable retroactive licensing fee, Defendants' motion for summary judgment is GRANTED on Plaintiffs claim for actual damages pursuant to 17 U.S.C. § 504(b).
b. Defendants' Motion in Limine to Exclude the Testimony of Larry Steven Londre
Before expert testimony can be admitted pursuant to Fed.R.Evid. 702, this Court must act as a gatekeeper and screen the proffered evidence to ensure that it is relevant and reliable. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Expert testimony is properly admitted when (1) the expert is qualified to testify competently regarding the matters he intends to address; (2) the methodology by which the expert reaches his conclusion is sufficiently reliable as determined by the sort of inquiry mandated in Daubert; and (3) the testimony assists the trier of fact, through the application of scientific, technical, or specialized expertise, to understand the evidence or to determine a fact in issue. See City of Tuscaloosa v. Harcros Chems., Inc., 158 F.3d 548 (11th Cir. 1999); Fed.R.Evid. 702. Plaintiff bears the burden of establishing the proper foundation for the admissibility of Londre's testimony by a preponderance of the evidence. See Allison v. McGhan Med. Corp., 184 F.3d 1300, 1306 (11th Cir.1999).
Londre opines that the total "value" of pages in those programs that used the Age Test is $206,260.00. (Dkt. 82, Exh. A at 4). Londre calculated this by first determining the cost of a full-page black and white advertisement, as set by the theater for each performance in which programs containing the Age Test were distributed. (Londre Dep. at 113). Londre then multiplied the advertising rate by the duration of the show at the relevant theater. (Londre Dep. at 119, 124-25). The sum of $206,260.00 represents the amounts for all performances at theaters for which Londre was able to obtain advertising rates.
As an initial matter, Londre's methodology is unreliable. Londre bases his calculation of value on advertising rates. However, he testified that the Age Test is "editorial content," not advertising content. (Londre Dep. at 137). There is a
Nonetheless, Plaintiff argues that Londre's reliance on advertising rates is sufficient, as editorial rates are higher than advertising rates, and Londre's valuation is therefore a conservative estimate. (Londre Dep. at 123, 307). Assuming that editorial rates are identical to advertising rates, Londre's calculation is still unreliable and irrelevant, as it does not properly address the fair market value of Defendants' alleged use of the BBQE. Londre testified that publishers of programs pay editorial rates to people to "write and produce the publications" and to "develop content." (Londre Dep. at 308, 141). In this case, by contrast, Defendants allegedly used a pre-existing work. Accordingly, the relevant issue is what a willing buyer would have paid to license a pre-existing work, not what a willing buyer would pay to create that work. See Baker, 254 F.Supp.2d at 359 (expert's evidence of fee for commissioned photography was irrelevant and unreliable as evidence relating to use of fee for use of pre-existing stock photography). The editorial rates, even if properly measured by Londre, are therefore not relevant for the purpose of setting a benchmark license fee, as there is simply no evidence that editorial rates are comparable to license fees. Id.; see also Country Road Music, Inc., 279 F.Supp.2d at 331-32 (proposed license fees were not comparable).
Finally, Plaintiff attempts to cure this deficiency by arguing that Londre's opinions "amount to little more than common sense. Namely, the pages within a theater program have inherent value and this value can be measured with reference to published advertising rates." (Dkt. 91 at 6). Plaintiff's argument misses the mark, as "inherent value" is not the issue for the purpose of calculating actual damages. In calculating actual damages, the question is what "a willing buyer would have been reasonably required to pay to a willing seller for plaintiff['s] work," which, in this case, is properly measured by a retroactive license fee. Deltak, Inc. v. Advanced Sys., Inc., 767 F.2d 357, 361-62 (7th Cir.1985).
For these reasons, the Court finds that Londre's reliance on advertising rates and editorial rates as a measure of actual damages is irrelevant, unreliable as a methodology, and therefore not helpful to the trier of fact. Accordingly, Defendants' motion in limine to exclude the testimony of Londre and evidence of advertising rates is GRANTED.
2. Profits attributable to infringement
Plaintiff also seeks to recover Defendants' profits that are "attributable to the infringement," the second category of compensatory damages provided for in the Copyright Act. With respect to this measure of damages, the statute allocates the parties' respective burdens:
Plaintiff contends that he has met his burden, as he can produce evidence of Defendants' gross ticket revenue from those productions of the Musical that included the Age Test in the programs.
In support of this position, Defendants rely on Ninth Circuit precedent, which requires plaintiffs to produce "sufficient non-speculative evidence to support a causal relationship between the infringement and the profits generated from such an infringement." See Mackie v. Rieser, 296 F.3d 909, 915-16 (9th Cir.2002); see also Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514, 522-23 (4th Cir.2003) (plaintiff must demonstrate nonspeculative evidence of a "conceivable connection" between the revenues and infringement); Univ. of Col. Found., Inc. v. Am. Cyanamid Co., 196 F.3d 1366, 1375 (Fed.Cir.1999) (plaintiff has burden to show a "connection" between sales and infringement). Under this line of cases, the plaintiff must show that the infringement itself—that is, the use of the plaintiff's work—was causally linked to the gross revenue claimed. See id.
By contrast, the Second Circuit requires only a "reasonable relationship" between the revenue and the infringing activity, such as the advertisement containing the infringing use. See On Davis, 246 F.3d at 160; see also Andreas v. Volkswagen of Am., Inc., 336 F.3d 789, 796 (8th Cir.2003) (requiring a "nexus"); Taylor v. Meirick, 712 F.2d 1112, 1122 (7th Cir.1983) ("It was not enough to show [defendant's] gross revenues from the sale of everything he sold"). As explained by the Eighth Circuit, the question under this approach is "whether [the defendant] profited from the infringing commercial at all—for which [plaintiff] carried the burden of proof—rather than the extent that it profited from the infringement—for which [defendant] carried the burden of proof." Andreas, 336 F.3d at 796.
The Eleventh Circuit has not addressed the respective burdens on the parties under the statutory language of § 504(b).
Notwithstanding, a plaintiff's light statutory burden must be read in conjunction with the well-established principle that any claim of damages may not be based on pure speculation. Univ. Computing Co. v. Lykes-Youngstown Corp., 504 F.2d 518, 536 (5th Cir.1974) (noting that "the defendant is normally not assessed damages on wholly speculative expectations of profits"); Estate of Vane v. The Fair, Inc., 849 F.2d 186, 190 (5th Cir.1988) ("We merely hold that it was not error for the district court to reject this attempt to show revenues attributable to the infringement as speculative"); Telecom Tech. Servs. Inc. v. Rolm Co., 388 F.3d 820, 830 (11th Cir.2004) (addressing claim that damages were too speculative). Interpreting the statute with this principle in mind, it is evident that a plaintiff may not seek gross revenues based entirely on a speculative connection to the plaintiff's claim.
Accordingly, this Court follows those courts which have required a "reasonable relationship" between the infringing activity and the infringer's gross revenues. See On Davis, 246 F.3d at 160 ("gross revenue under the statute means gross revenue reasonably related to the infringement, not unrelated revenues."); see also Andreas, 336 F.3d at 796; Taylor, 712 F.2d at 1122. At the summary judgment stage, Plaintiff must introduce nonspeculative evidence of this relationship, consistent with general damages principles. The Court declines, as Defendants urge, to impose a heightened burden on Plaintiff to produce evidence that the infringing use of the Age Test was causally linked to Defendants' gross ticket revenues.
In this case, Plaintiff has carried his burden by seeking revenue only from those shows at which the allegedly infringing programs were distributed. This relationship is not speculative: Plaintiff cites specific record evidence that the program was part and parcel of the Musical. Specifically, Linders testified that Actors' Equity Union "requires a vehicle to showcase the actors, so I have to do a program. . . . Not only is it theatrical tradition but by Actors Equity Union rules, I have to do it." (Linders Dep. at 9). Thus, without a program, there would be no Musical. Additionally, Linders testified that she included material in the program to entertain the audience and that ticketholders take programs home as a "free souvenir." (Linders Dep. at 92; 94-96).
Linders' testimony is sufficient nonspeculative evidence of a "reasonable relationship" between the infringing activity itself—i.e., the program—and the gross revenues from ticket sales. This relationship having been established, it is for the Defendants to argue "elements of profit attributable to factors other than the copyrighted work." 17 U.S.C. 504(b). This highly specific factual inquiry is appropriately left for the fact-finder. See Andreas, 336 F.3d at 798. Based on the foregoing, Defendants' motion for summary judgment is DENIED on Plaintiff's claim pursuant to § 504(b) for Defendants' profits attributable to the infringement.
C. Affirmative Defenses
Defendants have alleged eleven affirmative defenses to Plaintiff's claim of copyright infringement. Plaintiff has moved
1. Implied license
In their Fourth Affirmative Defense, Defendants contend that Plaintiff's claim is barred because the BBQE "is in the public domain/and or [sic] was posted on the Internet without attribution and pursuant to an implied license." Specifically, Defendants contend that Plaintiff granted an implied license to all internet users and to Linders by allowing "unfettered" downloads of the BBQE. (Dkt. 78 at 12).
Although the Copyright Act provides that the transfer of an exclusive license to a work must be in writing, the statute exempts nonexclusive licenses from the writing requirement. See 17 U.S.C. 204; 17 U.S.C. § 101 (defining transfer of copyright ownership to exclude a nonexclusive license).
Defendants have not met their burden. Defendants have introduced no evidence that they requested the creation of the BBQE or that Plaintiff delivered the BBQE to Defendants, both of which are critical components of this defense. Cf. Korman v. HBC Fla., Inc., 182 F.3d 1291, 1293 (11th Cir.1999) (plaintiff granted implied license by conduct where she wrote jingles for defendant radio station for seven years and allowed the station to air those jingles, including the one at issue); Jacob Maxwell, Inc., 110 F.3d at 752 (composer gave oral permission to play song, attended games where song was played, and urged defendant to keep playing song).
Furthermore, Defendants provide no authority for the proposition that the posting of the BBQE on Plaintiff's website granted an implied license to all internet users or that the work thereby entered the
Plaintiffs motion for summary judgment on Defendants' Fourth Affirmative Defense of implied license/public domain is therefore GRANTED.
2. License, estoppel, waiver, consent, acquiescence
In their Sixth Affirmative Defense, Defendants contend that Plaintiffs claim is barred by "license, consent, acquiescence, waiver, and estoppel" because "Plaintiff explicitly contacted Defendants and stated that they could use the alleged work with attribution, a statement upon which Defendants relied to their detriment." As each of the components to Defendants' Sixth Affirmative Defense is premised on Plaintiffs intent to disclaim his rights in the BBQE or to acquiesce to Defendants' use, they are analyzed concurrently.
In copyright infringement actions, an alleged infringer may assert the defense of estoppel by demonstrating that: "(1) the copyright owner knew the facts of the infringement, (2) the copyright owner intended its conduct to be acted upon or the copyright owner acted such that the alleged infringer has a right to believe it was so intended, (3) the alleged infringer is ignorant of the true facts, and (4) the alleged infringer relies on the copyright owner's conduct to his detriment." HGI Assocs., Inc. v. Wetmore Printing Co., 427 F.3d 867, 875 (11th Cir.2005). Similarly, in order to prevail on the equitable defense of acquiescence, Defendants must produce evidence that: (1) Plaintiff actively represented that he would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice. SunAm. Corp. v. Sun Life Assur. Co. of Canada, 77 F.3d 1325, 1334 (11th Cir.1996) (Lanham Act case). Finally, "waiver or abandonment of copyright `occurs only if there is an intent by the copyright proprietor to surrender rights in his work.'" Oravec v. Sunny Isles Luxury Ventures L.C., 469 F.Supp.2d 1148, 1177 (S.D.Fla.2006) (quoting A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1026 (9th Cir.2001)).
Defendants argue that Plaintiffs communication via the Musical's website operates as an equitable bar to his claim:
Based on the foregoing, the Court finds that disputed issues of material fact exist regarding the parties' intent, precluding summary judgment on Defendants' Sixth Affirmative Defense.
3. Unclean hands
In their Fifth Affirmative Defense, Defendants contend that Plaintiff's claim is barred by the doctrine of unclean hands, as Plaintiff's website allegedly includes copyrighted works of many authors, including Linders. Specifically, Defendants argue that Plaintiff has reproduced on his website lyrics from the Musical, the Musical's logo, a banner from the Musical's website, as well as jokes written by third parties.
To prevail on the defense of unclean hands, Defendants must demonstrate that: (1) Plaintiff's alleged wrongdoing is directly related to the claim against which it is asserted; and (2) Defendants were personally injured by Plaintiff's conduct. Calloway v. Partners Nat'l Health Plans, 986 F.2d 446, 450-51 (11th Cir.1993); Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852, 863 (5th Cir. 1979). For instance, the defense has been applied when the "plaintiff misused the process of the courts by falsifying a court order, by falsifying evidence, or by misrepresenting the scope of his copyright to the court and opposing party," or "when the plaintiff obtained information as to the nature of defendant's work through unfair means." 3 Nimmer on Copyright, § 13.09[B](1991).
Defendants provide no authority supporting the application of the defense in these circumstances, as it is not "directly related" to the controversy at issue. Similarly, Defendants fail to demonstrate how Plaintiff's posting of third parties' jokes on his website is "directly related" to the instant claim or how they were personally injured by the alleged use of these work. See Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 379 (5th Cir.2004) (defendants had no evidence they were injured by plaintiff's inclusion of a third parties' copyrighted work). Plaintiff's motion for summary judgment on Defendants' Fifth Affirmative Defense is therefore GRANTED.
4. Fair use
In their Seventh Affirmative Defense, Defendants contend that their use of the BBQE was a fair use, which is a statutory affirmative defense to a claim of copyright infringement. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). In determining whether a challenged use constitutes fair use, the Court considers several factors, including:
The statute lists several fair uses, including "criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research," although this list is not exclusive. Suntrust Bank, 268 F.3d at 1267. Accordingly, fair use analysis "must always be tailored to the individual case." Harper & Row Publishers, Inc. v. Nation Enter., 471 U.S. 539, 552-53, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985).
In certain circumstances, fair use may be determined as a matter of law at the summary judgment stage. See e.g., Stewart v. Abend, 495 U.S. 207, 237, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990); Cable/Home Commc'n Corp. v. Network Prods., 902 F.2d 829, 845 (11th Cir.1990). In the instant case, however, the Court finds that it is premature to address the merits of this defense, as there are underlying issues of material fact. Home Design Servs., Inc. v. Hibiscus Homes of Fla., Inc., No. 6:03-cv-1860, 2005 WL 3445522, at *10 (M.D.Fla. Dec.14, 2005).
For instance, in assessing the "purpose" of the work under the first factor, "[t]he crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price." Harper & Row Inc., 471 U.S. at 562, 105 S.Ct. 2218. As discussed in connection with Plaintiff's claim for damages, there is a question of fact as to whether Defendants "profi[ed] from exploitation of the copyrighted material," because there is an unresolved question as to what percent of the Musical's revenues, if any, are attributable to the alleged infringement. In addition, there are disputed issues of fact with respect to the third factor: "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." Based on the foregoing, the parties' cross-motions for summary judgment are DENIED as to Defendants' Seventh Affirmative Defense.
5. Failure to mitigate
As their Ninth Affirmative Defense, Defendants include the boilerplate allegation that Plaintiff's claim is barred by failure to mitigate his damages. In the instant motion, Plaintiff contends that Defendants have introduced no proof of failure to mitigate damages. Defendants have not addressed the viability of this defense in their response in opposition to Plaintiff's motion. See Celotex, 477 U.S. at 323-24, 106 S.Ct. 2548 (the nonmoving party must go beyond the pleadings and designate specific facts showing that there is a genuine issue for trial). Accordingly, Plaintiff's motion for summary judgment is GRANTED as to Defendants' Ninth Affirmative Defense.
6. Statute of limitations
As their Tenth Affirmative Defense, Defendants contend that Plaintiffs claim is barred by the statute of limitations to the extent Plaintiff seeks to recover for infringement that occurred prior to three years before the filing of this action. A claim for copyright infringement must be asserted within three years after the claim has accrued. 17 U.S.C. § 507(b). As Defendants note, there is a split in authority as to when a claim "accrues"
A minority of courts apply an "injury rule" and hold that a claim for copyright infringement accrues when the infringing act occurs. See e.g., Auscape Int'l v. Nat'l Geographic Soc'y, 409 F.Supp.2d 235 (S.D.N.Y.2004). By contrast, the Second, Fourth, Sixth, Seventh, and Ninth Circuits apply the more lenient "discovery rule" and hold that the action accrues "when the plaintiff learns, or should as a reasonable person have learned, that the defendant was violating his rights." See James W. Ross, Inc. v. Cecil Allen Const., Inc., No. 6:03-cv-792, 2004 WL 1146104, at *2 (M.D.Fla. Apr.26, 2004) (citing cases); Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir. 2007). The courts in the Middle District of Florida, including this Court, have consistently applied the discovery rule. See e.g., Tingley Sys., Inc. v. HealthLink, Inc., 509 F.Supp.2d 1209, 1218 (M.D.Fla.2007); Home Design Servs., Inc., 2005 WL 3445522, at *7. In addition, the Eleventh Circuit has held that "a federal claim is generally considered to accrue when the plaintiff knows or has reason to know of the injury which is the basis of the action." Corn v. City of Lauderdale Lakes, 904 F.2d 585, 588 (11th Cir.1990); see also Rotella v. Wood, 528 U.S. 549, 555, 120 S.Ct. 1075, 145 L.Ed.2d 1047 (2000) (noting the "traditional federal accrual rule of injury discovery" and that "[f]ederal courts, to be sure, generally apply a discovery accrual rule").
Defendants argue that the Supreme Court rejected the discovery rule presumption in TRW Inc. v. Andrews, 534 U.S. 19, 27, 122 S.Ct. 441, 151 L.Ed.2d 339 (2001), and that the injury rule is the proper accrual rule for copyright infringement actions. Defendants' proposed interpretation of TRW is, however, overly broad, as the Supreme Court expressly declined to decide the validity of the presumption of a discovery rule for federal causes of action. See TRW Inc., 534 U.S. at 27, 122 S.Ct. 441 ("To the extent such a presumption exists, a matter this case does not oblige us to decide, the Ninth Circuit conspicuously overstated its scope and force."); Skwira v. United States, 344 F.3d 64, 74 (1st Cir.2003) (noting that TRW's narrow holding did not preclude application of discovery rule in other statutory schemes, including Federal Tort Claims Act). Rather, the Supreme Court rejected the Ninth Circuit Court of Appeal's version of the discovery rule presumption, which provided that "all federal statutes of limitations, regardless of context, incorporate a general discovery rule `unless Congress has expressly legislated otherwise.'" TRW Inc., 534 U.S. at 27, 122 S.Ct. 441 (quoting Andrews v. TRW, Inc., 225 F.3d 1063, 1067 (9th Cir.2000)). The Supreme Court held that because the statute of limitations in the Fair Credit Reporting Act, 15 U.S.C. § 1681p, specifically included a partial discovery rule for material and
In contrast to the statute of limitations at issue in TRW, the statute of limitations in § 507(b) does not contain an exception or other indication that the general discovery rule would not be applicable. See 17 U.S.C. § 507(b). Thus, traditional tenets of statutory construction are not violated by application of the general discovery rule. Accordingly, the Court finds that the general discovery rule applies, pursuant to Eleventh Circuit law. See Corn, 904 F.2d at 588; Home Design Servs., Inc. v. B & B Custom Homes, LLC, 509 F.Supp.2d 968, 971-72 (D.Colo.2007) (holding that TRW did not displace general discovery rule with respect to 17 U.S.C. § 507(b)).
Nonetheless, application of a discovery rule to Plaintiff's claim does not entitle Plaintiff to summary judgment on Defendants' statute of limitations defense. Although Plaintiff filed the lawsuit within three years of becoming aware of the alleged infringement in the Tampa performance of the Musical, "[e]ach act of infringement is a distinct harm giving rise to an independent claim for relief." Stone v. Williams, 970 F.2d 1043, 1049 (2d Cir. 1992). To the extent the infringement is deemed to occur with each unauthorized reproduction or distribution of the Age Test, 17 U.S.C. § 106, Plaintiff has not addressed when he "knew or reasonably should have known" of those acts of infringement occurring more than three years before this lawsuit was filed. Plaintiff's motion for summary judgment is therefore DENIED as to Defendant's Tenth Affirmative Defense.
In their Eleventh Affirmative Defense, Defendants contend that Plaintiff's claim is barred by the equitable doctrine of laches. In order to prevail on this defense, Defendants must demonstrate that: (1) Plaintiff delayed in asserting his rights; (2) the delay was not excusable; and (3) there was undue prejudice to Defendants. Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997) (Lanham Act case); Thompson v. Looney's Tavern Prods., Inc., 204 Fed.Appx. 844, 852 (11th Cir.2006).
It is undisputed that Plaintiff first learned of the infringement over the weekend of June 9, 2006, when Plaintiff attended the Musical. Plaintiff filed the instant action on September 6, 2006. The Court finds that these facts to not demonstrate inexcusable delay. Defendants have not opposed Plaintiffs motion for summary judgment on this defense. Accordingly, Plaintiffs motion for summary judgment is GRANTED on Defendants' Eleventh Affirmative Defense.
8. Remaining defenses
In Defendants' First, Second, Third, and Eighth affirmative defenses, Defendants assert that Plaintiff fails to state a claim for relief, that the BBQE is not copyrightable, that Plaintiffs claim is barred by merger, and that this Court lacks subject matter jurisdiction insofar as Plaintiff lacks a valid copyright registration. Defendant
D. Plaintiff's Motions to Strike
1. Plaintiffs Motion to Strike Defendants' Amended Disclosure of Fact Witnesses and Strike the Testimony of Diana C. Coles (Dkt.88)
By separate motion, Plaintiff moves that the Court strike: (1) the Declaration of Diana C. Coles (Dkt.81), submitted in support of Defendant's opposition to Plaintiffs motion for summary judgment; and (2) any testimony at trial by Coles and three unidentified "Corporate Representatives" from The Tampa Bay Performing Arts Center, Darden Adventure Theatre, and Polk Theatre. Plaintiff contends that the identity of these witness was first disclosed in Defendants' Amended Witness List (Dkt.88-2), which Defendants provided on October 15, 2007. This disclosure occurred well after the non-expert witness disclosure deadline of August 27, 2007 set by the Court's Case Management and Scheduling Order, as amended. (Dkts.16, 41).
As an initial matter, the motion to strike is GRANTED as to the corporate representatives, as Defendant has failed to identify these witnesses by name. Hi Ltd. P'ship v. Winghouse of Fla., Inc., No. 6:03-cv-116, 2004 WL 5486964, at *10 (M.D.Fla. Oct.5, 2004) (noting that identifying witnesses by reference to corporate name is insufficient). With respect to the motion to strike Coles' Declaration and trial testimony, Rule 37(c)(1) provides that if a party fails to disclose or appropriately supplement disclosures, "the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." Fed.R.Civ.P. 37(c)(1). In evaluating whether the failure is harmless, the Court considers: "(1) the importance of the testimony; (2) the reason for the appellant's failure to disclose the witness earlier; and (3) the prejudice to the opposing party if the witness had been allowed to testify." Bearint v. Dorell Juvenile Group, Inc., 389 F.3d 1339, 1353 (11th Cir.2004); Murphy v. Magnolia Elec. Power Ass'n, 639 F.2d 232, 235 (5th Cir. 1981).
Portions of Cole's Declaration are relevant to the issue of damages, a critical issue for the jury to resolve. In addition, Defendants have not established any justification for the failure to timely disclose Coles as a witness. Although Defendants assert that counsel did not become aware of Coles' identity until October 10, 2007, Defendants have not disputed Plaintiffs assertion that Defendants themselves knew of Coles' identity as early as July 2, 2007, based on an email from Joanne Grant, a TOC employee, to Diana Coles of the same date (Coles Dec, Exh. B). Furthermore, Plaintiff would be prejudiced by consideration of Coles' Declaration at the summary judgment stage, as Plaintiff was unable to address Coles' contentions in advance of Defendants' response. Based on the foregoing, Plaintiffs motion to strike Coles' Declaration (Dkt.81) is GRANTED. The Declaration has accordingly been excluded from consideration herein.
Plaintiff has not, however, identified any prejudice to Defendants' presentation of Coles' testimony at trial, to the extent
2. Plaintiff's Motion to Strike the Testimony of Brad Krassner (Dkt.87)
Plaintiff also moves that this Court strike portions of the expert report of Brad Krassner, Defendants' proposed rebuttal expert. As Defendants note, however, Krassner's proffered rebuttal testimony is moot upon the exclusion of Plaintiffs expert, Larry Steven Londre. (Dkt. 92 at 2 n. 1). Accordingly, the motion to strike is GRANTED insofar as Krassner's testimony is moot.
Based on the foregoing, it is
1) Plaintiffs Motion for Partial Summary Judgment (Dkt.67) is
2) Defendants' Amended Motion for Summary Judgment (Dkt.73) is
3) Defendants' Motion in Limine to Exclude the Expert Testimony of Larry Steven Londre and Evidence of Irrelevant Advertising Rates (Dkt.83) is
4) Plaintiffs Motion to Strike the Testimony of Brad Kassner (Dkt.87) is
5) Plaintiffs Motion to Strike Defendants' Amended Disclosure of Fact Witnesses and Strike the Testimony of Diana C. Coles (Dkt.88) is
1. Name the Beatles—both the first and last name of each, of course. Consider this a warm-up. If you can't answer this one without thinking, close up this window, and move on to something else. We have nothing further to discuss.
2. Finish the line: "Lions and tigers and bears, _____." Admittedly, this came along before we boomers were born. But we remember it from both the movies and boob tube.
6. Long before he was Mohammad Ali, before he was The Greatest, we knew him as _____.
8. Those post-baby boomers, or baby boomer wannabees, know Bob Denver as the Skipper's "little buddy." But we true boomers know that Bob Denver is actually Dobie's closest friend, Maynard G. _____.