`
`FILED
`
` 2012 Mar-09 PM 04:24
`U.S. DISTRICT COURT
`N.D. OF ALABAMA
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ALABAMA
`WESTERN DIVISION
`
`Case No. 7:09-cv-02462-HGD
`
`))
`
`))
`
`)
`)
`)
`
`))
`
`)
`
`ROB FLEMING,
`
`Plaintiff
`
`vs.
`
`ALABAMA CVS PHARMACY,
`LLC,
`
`Defendant
`
`MEMORANDUM OPINION
`
`The above-entitled civil action is before the court on the motion for summary
`
`judgment on claims of copyright infringement filed by defendant Alabama CVS
`
`Pharmacy, LLC (CVS). (Doc. 49). The parties have consented to the exercise of
`
`jurisdiction by the undersigned magistrate judge pursuant to 28 U.S.C. § 636(c) and
`
`Rule 73, Fed.R.Civ.P.
`
`Plaintiff, Rob Fleming, is a photographer who alleges he owns the copyright
`
`rights in two photographs he took in 2008 and 2009. (Doc. 7, Amended Complaint,
`
`¶¶ 10-12 and Exs. A & B). In June 2007, Fleming’s attorney wrote CVS a letter
`
`complaining that “it has come to the attention of the owners [of Fleming
`
`Page 1 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 2 of 22
`
`Photography] that CVS stores in West Alabama allow customers to reprint or
`
`reproduce copyrighted professional photos.” (Doc. 51-1, Decl. of Peter J. Benson,
`
`at Ex. 1).
`
`In mid-2009, after consulting with his lawyers, Fleming came up with an
`
`investigative strategy to determine whether his photographs were still being
`
`reproduced. (Id. at Ex. 4, pre-investigation notes made by Bo Haugebook, an
`
`employee of Fleming’s counsel and Exs. 1-3, correspondence between plaintiff’s
`
`counsel and CVS). As part of that plan, Fleming asked his wife, friends and
`
`employees to go to several CVS retail locations in western Alabama and use the
`
`self-service photo photocopier kiosks located there to make copies of Fleming’s
`
`photographs. (Id. at Ex. 5, Plaintiff’s Supplemental Response to Defendant’s First
`
`Interrogatories (“Pl. Supp. Resp.”), at Resp. Nos. 1, 3). Fleming asserts that his
`
`agents’ use of the self-service kiosks to make copies of his photographs therefore
`
`makes CVS liable to him for statutory damages for those “infringing” acts. (Id. at
`
`Ex. 5, Resp. Nos. 3, 6; Doc. 7, Amended Complaint, at ¶ 53). It is therefore
`
`undisputed that each of the copies made by Fleming’s agents was expressly
`
`authorized by Fleming. Specifically, Fleming admits that his wife, friends, and
`
`employees “did the copying at [his] request,” and that he and his lawyers “instructed
`
`the[se] individuals to make [the] reproductions” of his photographs by using the
`
`Page 2 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 3 of 22
`
`photo photocopiers found in CVS stores. (See Doc. 51-1, Decl. of Peter J. Benson,
`
`at Ex. 5, Pl. Supp. Resp., Nos. 1, 3 (“The instruction was simple: go into the store
`
`and make copies.”)). Fleming also acknowledges that the photographs he had his
`
`agents copy had been taken by him “for the sole purpose” of being reproduced at
`
`CVS stores, and thus being used in this litigation. (Id. at Pl. Supp. Resp., No. 5).
`
`The process by which Fleming’s agents made copies of his photographs was
`
`the same as the way hundred of thousands of other CVS customers similarly make
`
`more than two million copies each year of their own snapshots using the self-service
`
`kiosks installed at CVS stores. (Doc. 51-2, Decl. of Grant Pill, at ¶¶ 2-6). These
`
`self-service “photo photocopiers” (called “Kodak Picture Kiosks”) operate much like
`
`regular office copiers, and they were designed to eliminate any need for store
`
`employees to be involved with the labor-intensive process of scanning, editing, and
`
`cropping the customers’ photographs. (Id. at ¶¶ 3-4). A complete, step-by-step
`
`description of the process by which a customer is able to make a copy of a printed
`
`photograph using the Kodak Picture Kiosk is set forth in the Declaration of Grant Pill.
`
`(Id. at ¶¶ 5-6 and Ex. A, screenshots from the “Prints From Prints Workflow”).
`
`Essentially, though, a customer (1) puts the printed photograph he or she wishes to
`
`copy onto the scanning bed, (2) instructs the machine to scan the photo,
`
`(3) manipulates the output image to the extent desired (e.g., makes it lighter or darker,
`
`Page 3 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 4 of 22
`
`crops the photograph image), (4) selects the number of copies to be printed, and
`
`(5) places the order, telling the machine to print the selected number of paper copies.
`
`(Id. at ¶ 5). Importantly, though, before a customer can do any of the above steps, he
`
`or she is first asked to read an on-screen “Copyright Notice” that explains that “[i]t
`
`is illegal to reproduce photographs taken by a professional photographer . . . without
`
`permission from the copyright owner.” (Id. at ¶ 6 and Ex. A, at 5). Then, after
`
`reading that notice, if the customer still believes that he or she has the right to copy
`
`the photograph in question, the customer must certify either that the photograph he
`
`or she wishes to copy is not copyrighted or that the customer has “obtained
`
`permission from the copyright holder” to make copies of the photograph. (Id.). The
`
`requirement that a customer certify that he or she has the right to make the requested
`
`copies cannot be bypassed or skipped when using the self-service machines.
`
`(Doc. 51-2, Decl. of Grant Pill, at ¶ 6). Hence, if the customer does not affirmatively
`
`represent that he or she has the lawful right to reproduce the photograph(s) in
`
`question, the machine will not allow the customer to make copies. (Id.).
`
`Fleming’s agents therefore not only had Fleming’s permission to make copies
`
`of the photos in question (see Doc. 50, Undisputed Facts Nos. 3 and 4) and acted at
`
`Fleming’s instruction when doing so, they affirmatively represented to CVS (by
`
`checking the appropriate on-screen box) that they had such permission, and they did
`
`Page 4 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 5 of 22
`
`so before they began the process of making any copies. (Doc. 51-2, Decl. of Grant
`
`Pill, at ¶ 6). In addition to requiring self-service customers to certify that they have
`
`the right to reproduce any photograph they wish to copy, CVS also acts in other ways
`
`to discourage unlawful copying of professional photos. (Id. at ¶ 8). For example,
`
`CVS displays (on the kiosk screens and elsewhere) notices designed to inform
`
`customers that professional photographs often are protected by copyright, and it trains
`
`its full-service Photo Lab staff to be on the lookout for customer-submitted material
`
`that is clearly copyrighted, and if necessary to then verify with the customer that he
`
`or she has permission to make the requested copies. (Id.). At no point during the
`
`self-service copying process described above, however, are any CVS employees
`
`directly involved. (Id. at ¶ 7). Rather, it is only after a customer has finally “placed”
`
`his or her order (i.e., requested that the machine print the copies) that an employee
`
`must briefly intervene. (Id. at ¶¶ 5, 7). Moreover, the extent of the employee’s
`
`involvement is simply to “key” the self-service machine by entering the appropriate
`
`codes so that the customer may then print. (Id. at ¶7; accord Doc. 51-1, Decl. of
`
`Peter J. Benson, at Ex. 5, Pl. Supp. Resp., Nos. 1, 3 (merely alleging that employees
`
`entered the necessary codes when asked to do so by Fleming’s agents)). Any CVS
`
`employee (not just Photo Lab technicians), however, can “key” a machine to enable
`
`a self-service customer to print. (Doc. 51-2, Decl. of Grant Pill, at ¶ 7). Nevertheless,
`
`Page 5 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 6 of 22
`
`they can do so only after the customer has provided written verification (by checking
`
`the appropriate response when the Copyright Notice is displayed) that he or she has
`
`the copyright owner’s permission to make the copies, just as full-service customers
`
`are required to do whenever they seek to copy photographs that bear notices that
`
`suggest that the photographs might be copyrighted. (Id. at ¶¶ 7-8 and Ex. A). The
`
`above-described administrative intervention of “keying” a machine serves two
`
`purposes: (1) it reduces the likelihood a customer will print his or her photos and
`
`leave the store without paying for them, and (2) it enables CVS to keep track of how
`
`many copies the customer is making, thus facilitating the check-out process. (Id. at
`
`¶ 7). Employees, though, are not directly involved in the copying process (i.e.,
`
`scanning, cropping, etc.) itself. (Id.).
`
`DISCUSSION
`
`The Copyright Act of 1976 provides protection to forms of property known as
`
`original expression of authorship. Copyrights are a pillar of the American economy.
`
`Thus, the protection afforded by the Copyright Act is exceedingly important not only
`
`to artists but also to the commercial entities that place copyrighted material into the
`
`marketplace. Copyrights protect a broad variety of creative works ranging from
`
`Page 6 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 7 of 22
`
`books, paintings and music to computer programs, motion pictures and architectural
`
`works, including photographs.
`
`A plaintiff establishes a prima facie case of copyright infringement by
`
`satisfying two elements. A claim of copyright infringement is established if the
`
`plaintiff proves (1) “he owns a valid copyright in a work, and (2) the defendant
`
`copied original elements of that work.” Leigh v. Warner Bros., Inc., 212 F.3d 1210,
`
`1214 (11th Cir. 2000) (citing Feist Publ’ns, Inc. v. Rural Tel. Servs. Co., 499 U.S.
`
`340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991)).
`
`I.
`
`Fleming failed to establish a prima facie case of copyright infringement.
`
`Fleming has the burden of satisfying the elements of the prima facie case.
`
`Initially, the plaintiff bears the burden of proof to submit a valid copyright
`
`registration. Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1233 (11th Cir. 2010).
`
`A “certificate of 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.” 17 U.S.C. § 410(c); Latimer, 601 F.3d at 1233
`
`(quoting Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996)). “Once
`
`the plaintiff produces a certificate of registration, the burden shifts to the defendant
`
`to establish that the ‘work in which copyright is claimed is unprotectable.’” Id.
`
`Page 7 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 8 of 22
`
`Here, Fleming produced a Certificate of Registration number VA 1-658-742
`
`with an effective date of March 28, 2008. The certificate is for the title of work
`
`“Professional Photographs for Rob Fleming Jan. 2008 - March 2008.” Additionally,
`
`Fleming produced Certificate of Registration number Vau 981-367 with an effective
`
`date of April 16, 2009. The certificate is for the title of work “Demopolis River.”
`
`CVS has reserved the right to challenge the copyright registrations should its Motion
`
`for Summary Judgment be denied. For purposes of this motion, Fleming has
`
`submitted a valid copyright registration, which meets the first prong of the elements
`
`of copyright infringement.
`
`Secondly, as a factual matter, the plaintiff must establish that the alleged
`
`infringer actually copied the plaintiff’s copyrighted material to establish a prima facie
`
`case. Latimer, 601 F.3d at 1233. To satisfy the requirements of the second prong for
`
`copyright infringement, the plaintiff must show (1) “whether the defendant, as a
`
`factual matter, copied portions of the plaintiff's work”; and (2) “whether, as a mixed
`
`issue of fact and law, those elements of the copyrighted work that have been copied
`
`are protected expression and of such importance to the copied work that the
`
`appropriation is actionable.” MiTek Holdings, Inc. v. Arce Eng’g, Inc., 89 F.3d 1548,
`
`1554 (11th Cir. 1996). Although not specifically stated in the Copyright Act, there
`
`are three forms of copyright infringement: direct infringement, contributory
`
`Page 8 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 9 of 22
`
`infringement and vicarious infringement. MGM Studios, Inc. v. Grokster, Ltd., 545
`
`U.S. 913, 930, 125 S.Ct. 2764, 2776, 162 L.Ed.2d 781 (2005).
`
`A.
`
`Direct Infringement
`
`“The Copyright Act grants the copyright holder the ‘exclusive’ rights to use
`
`and to authorize the use of his work in five qualified ways, including the reproduction
`
`of the copyright work in copies.” 17 U.S.C. § 106; Sony Corp. of Am. v. Universal
`
`City Studios, Inc., 464 U.S. 417, 433, 104 S.Ct. 774, 784, 78 L.Ed.2d 574 (1984).
`
`“Anyone who violates any of the exclusive rights of the copyright owner, ‘that is,
`
`anyone who trespasses into his exclusive domain by using or authorizing the use of
`
`the copyrighted work in one of the five ways set forth in the statute,’ is an infringer
`
`of the copyright.” 17 U.S.C. § 501(a); Sony Corp., 464 U.S. at 433, 104 S.Ct. at 784.
`
`“Direct copyright infringement arises upon a violation of the exclusive rights of a
`
`copyright holder.” 17 U.S.C. § 501; BUC Int’l Corp. v. Int’l Yacht Council, Ltd., 489
`
`F.3d 1129, 1139 (11th Cir. 2007).
`
`Here, Fleming argues CVS employees directly infringed upon his copyright by
`
`reproducing his protected photographs. However, Fleming’s argument is faulty.
`
`Fleming instructed his spouse, friends and employees to reproduce his copyrighted
`
`photographs at various CVS locations in western Alabama. Since Fleming is the
`
`copyright owner, he “has the exclusive right to do and authorize the reproduction of
`
`Page 9 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 10 of 22
`
`the copyrighted work in copies.” Montgomery v. Noga, 168 F.3d 1282, 1292 (11th
`
`Cir. 1999). Fleming, utilizing his rights under the Copyright Act, authorized his
`
`agents to reproduce his work. Thus, CVS did not directly infringe Fleming’s
`
`copyrights because Fleming authorized his agents to reproduce his copyrighted
`
`photographs.
`
`Fleming argues that CVS employees inserted the “key code” into the kiosk that
`
`allowed Fleming’s agents to reproduce the photographs, and those actions constituted
`
`direct infringement. CVS houses self-service kiosks within their retail locations to
`
`allow customers more privacy and more efficient service. When a customer attempts
`
`to make copies at the kiosk, the customer is given the “Copyright Notice” that
`
`explains “that it is illegal to reproduce photographs taken by a professional
`
`photographer . . . without permission from the copyright owner.” After reading the
`
`notice, the customer must certify either that the photograph he or she wishes to copy
`
`is not copyrighted or that the customer has obtained permission from the copyright
`
`holder to make copies of the photograph. In this case, Fleming’s agents certified on
`
`the kiosk that they had permission to reproduce copyrighted photographs. By
`
`certifying permission to copy, Fleming’s agents represented to CVS that they had
`
`permission from Fleming to reproduce the photographs. Only after Fleming’s agents
`
`certified permission did the CVS employees insert the “key code” into the kiosk. The
`
`Page 10 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 11 of 22
`
`employees did not certify permission to reproduce copyrighted photographs. Thus,
`
`the actions by the employees did not constitute direct infringement. Therefore, CVS
`
`did not directly infringe on Fleming’s copyright because the employees did not
`
`actually reproduce the photographs.
`
`Even so, Fleming has provided conflicting evidence as to the employees’
`
`involvement in reproducing the copyrighted photographs. “When a party has given
`
`clear answers to unambiguous questions which negate the existence of any genuine
`
`issue of material fact, that party cannot thereafter create such an issue with an
`
`affidavit that merely contradicts, without explanation, previously given clear
`
`testimony.” Van T. Junkins and Assocs. v. U.S. Industries, Inc., 736 F.2d 656, 657
`
`(11th Cir. 1984). When this occurs, the court may disregard the affidavit as a sham.
`
`Id. This rule is applied sparingly because of the harsh effect it may have on a party’s
`
`case. Rollins v. TechSouth, Inc., 833 F.2d 1525, 1530 (11th Cir. 1987). The Eleventh
`
`Circuit has stated “[t]o allow every failure of memory or variation in a witness’
`
`testimony to be disregarded as a sham would require far too much from lay witnesses
`
`and would deprive the trier of fact of the traditional opportunity to determine which
`
`point in time and with which words the . . . affiant . . . was stating the truth.” Id.
`
`(quoting Tippens v. Celotex Corp., 805 F.2d 949, 953-54 (11th Cir. 1986)). Thus,
`
`a court must find some inherent inconsistency between an affidavit and a deposition
`
`Page 11 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 12 of 22
`
`before disregarding the affidavit. Id. If no inherent inconsistency exists, the general
`
`rule applies that allows an affidavit to create a genuine issue even if it conflicts with
`
`earlier testimony in the party’s deposition. Id. (quoting Kennett-Murray Corp. v.
`
`Bone, 622 F.2d 887, 893 (5th Cir. 1980)).
`
`In this case, Fleming claims that he has produced five affidavits that provide
`
`legally sufficient evidence to create a genuine issue of material fact about CVS’s
`
`direct involvement in the copyright violation. Fleming’s initial testimony
`
`affirmatively stated his wife, friends and employees made each of the copies and the
`
`employee only inserted the “key code.” Still, the affidavit concerning the employee
`
`performing every action in operating the Kodak kiosk machine was only submitted
`
`after the discovery was completed. Prior to the affidavit, Fleming consistently
`1
`
`testified in deposition and interrogatories that employees did not make the copies.
`
`Based on the inconsistent testimony, the court disregards the subsequent affidavit that
`
`states the CVS employee performed every action of reproducing the photographs at
`
`the kiosk.
`
`Furthermore, Fleming argues that CVS’s conduct is “volitional conduct,” thus,
`
`sufficient to show that CVS directly engaged in the photograph reproduction process.
`
` The subsequent affidavit is also not at issue because the photocopying occurred after the
`1
`complaint was filed. Therefore, Fleming cannot assert the affidavit as evidence to support his claim.
`
`Page 12 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 13 of 22
`
`Fleming cites Arista Records, LLC v. Usenet.Com, Inc., 633 F. Supp. 2d 124, 147-48
`
`(S.D.N.Y. 2009), to support his argument that CVS’s actions constituted direct
`
`infringement. In Arista Records, the court held that a company, with a policy
`
`encouraging infringement plus the ability to stop that infringement, was liable for
`
`direct copyright infringement. CVS actively discourages copyright infringement by
`
`placing notices around the kiosk and the “Copyright Notice” on the kiosk screen.
`
`Hence, Arista Records is not persuasive upon this court. However in CoStar Group
`2
`
`v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir. 2004), the court stated:
`
`But to establish direct liability under §§ 501 and 106 of the Act,
`something more must be shown than mere ownership of a machine used
`by others to make illegal copies. There must be actual infringing
`conduct with a nexus sufficiently close and causal to the illegal copying
`that one could conclude that the machine owner himself trespassed on
`the exclusive domain of the copyright owner. The Netcom court
`described this nexus as requiring some aspect of volition or causation.
`907 F.Supp. at 1370. Indeed, counsel for both parties agreed at oral
`argument that a copy machine owner who makes the machine available
`to the public to use for copying is not, without more, strictly liable under
`§ 106 for illegal copying by a customer. . . . When a customer
`duplicates an infringing work, the owner of the copy machine is not
`considered a direct infringer.
`
` In Disney Enters v. Hotfile Corp., 798 F.Supp.2d 1303 (S.D.Fla. 2011), the court found
`2
`Arista Records was not correctly decided. The court stated the Arista Records “conclusion ignores
`the language of Netcom and other cases following Netcom. As the Fourth Circuit put it, ‘knowledge
`coupled with inducement’ or ‘supervision coupled with a financial interest in the illegal copying’
`gives rise to secondary liability, not direct-infringement liability.” Id. at 1309.
`
`Page 13 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 14 of 22
`
`Id. at 550. Fleming claims CVS’s volitional conduct consisted of an employee
`
`actively inserting the “key code” that is necessary to operate the kiosk. Also, Fleming
`
`asserts that CVS cashiers receive payment for the photographs, which constitutes
`
`volitional conduct. Yet, CVS’s conduct did not constitute volitional conduct;
`
`Fleming’s agents reproduced the photographs. CVS employees were not actively
`
`engaged in the reproduction process except to insert the “key code” required by the
`
`kiosk and to accept payment. Fleming has not produced any evidence that supports
`
`his claim that CVS employees willfully reproduced the copyrighted photographs.
`
`Fleming has failed to establish sufficient evidence to create a genuine issue of
`
`material fact for direct infringement. Fleming has the burden to establish a prima
`
`facie case of copyright infringement but fails to satisfy the second element to
`
`establish a case. Accordingly, CVS did not directly infringe Fleming’s copyright,
`
`since Fleming, the copyright holder, authorized his agents to reproduce his
`
`copyrighted photographs.
`
`B.
`
`Contributory Infringement
`
`The Copyright Act of 1976 does not specifically hold anyone liable for
`
`infringement committed by another person. Secondary liability, contributory and
`
`vicarious liability, is a well established principle derived from common law. MGM
`
`Studios, 545 U.S. at 930, 125 S.Ct at 2776. Contributory infringement refers to the
`
`Page 14 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 15 of 22
`
`intentional inducement, causation or material contribution to another’s infringing
`
`conduct. Greenberg v. Nat’l Geographic Soc., 244 F.3d 1267, 1271 (11th Cir. 2001)
`
`(citing Cable/Home Comm. Corp. v. Network Prods., Inc., 902 F.2d 829, 845 (11th
`
`Cir. 1990)). However, without a finding of direct infringement, there can be no
`
`contributory infringement by another party. Id.
`
`Assuming Fleming established direct infringement, then Fleming may be able
`
`to establish contributory infringement. In order for the defendant to be liable for
`
`contributory infringement, the defendant either must have known or should have
`
`known of a third party’s direct infringement, and despite the knowledge, must have
`
`“induced, caused, or materially contributed to” the wrongful conduct. Cable/Home
`
`Comm., 902 F.2d at 845. Materially contributed means “the defendant substantially
`
`participated in the infringement.” Livnat v. Levi, 1998 WL 43221, *3 (S.D.N.Y.
`
`Feb. 2, 1998).
`
`Here, Fleming asserts that CVS knew or should have known of the
`
`infringement because a CVS employee looked at the face of the copyright-marked
`
`photograph. Also, Fleming argues CVS materially contributed to the infringement
`
`when the CVS employees entered the “key code” into the kiosk and received payment
`
`for the copies. However, Fleming’s agents represented to the employees that they had
`
`permission to reproduce the protected photographs by certifying on the kiosk.
`
`Page 15 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 16 of 22
`
`Fleming claims the CVS training manual states that written permission from the
`
`copyright owner is required. The training manual states that the photo lab is required
`
`to obtain a written authorization from customers utilizing the photo lab services. The
`
`training manual does not require a written authorization for customers using the self-
`
`service kiosks. Fleming authorized his agents to reproduce the photographs; thus,
`
`there was no direct infringement. CVS did not materially contribute because there
`
`was no substantial participation by CVS employees.
`
`Accordingly, Fleming also has failed to establish evidence of contributory
`
`infringement. Since CVS did not directly infringe Fleming’s copyright, CVS cannot
`
`be liable for contributory infringement.
`
`C.
`
`Vicarious Infringement
`
`“Vicarious infringement arises ‘when the defendant profits directly from the
`
`infringement and has a right and ability to supervise the direct infringer, even if the
`
`defendant initially lacks knowledge of the infringement.’” BUC, 489 F.3d at 1139;
`
`MGM Studios, Inc., 545 U.S. at 930, 125 S.Ct. at 2776. Like contributory
`
`infringement, there can be no vicarious infringement without a finding of direct
`
`infringement. Blackwell Pub, Inc. v. Custom Copies, Inc., 2006 WL 1529503, *1
`
`(N.D.Fla. 2006); See Cable/Home Comm., 902 F.2d at 845.
`
`Page 16 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 17 of 22
`
`In Sygma Photo News, Inc. v. High Society Magazine, Inc., 778 F.2d 89, 92 (2d
`
`Cir. 1985), the Second Circuit provided a test for “right and ability to supervise.” The
`
`court held the “right and ability to supervise” is established for vicarious liability
`
`when “[a]ll persons and corporations who participate in, exercise control over, or
`
`benefit from the infringement.” Id.
`
`Even assuming Fleming has established direct infringement, Fleming has not
`
`established vicarious infringement. CVS did not supervise Fleming’s agents or aid
`
`the agents in infringing Fleming’s copyright. The Kodak kiosks are self-service
`
`kiosks located in CVS stores for customers to use. At Fleming’s instruction,
`
`Fleming’s agents used the self-service kiosks to reproduce copies of Fleming’s
`
`copyrighted photographs. Since the kiosks are self-service, CVS does not supervise
`
`customers using the machines; its employees only input the necessary key code after
`
`the customer has certified he or she has permission to copy.
`
`Furthermore, Fleming argues CVS profited from the infringement because CVS
`
`made sales that it otherwise would not have made. Yet, not every benefit is a direct
`
`financial benefit. Klein & Heuchan, Inc. v. CoStar Realty, Info., Inc., 707 F.Supp.2d
`
`1287, 1299 (M.D.Fla. 2010) (citing Ellison v. Robertson, 357 F.3d 1072, 1079 (9th
`
`Cir. 2004)). “The Court cannot assume the infringing activities directly affect
`
`profits.” CoStar, 707 F.Supp.2d at 1298. While CVS charges the same per-print
`
`Page 17 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 18 of 22
`
`price to all users of the self-service kiosk, Fleming has not produced evidence to
`
`support his argument that the reproductions of the photographs directly affected
`
`CVS’s profits. Fleming asserts that the photographs directly affected CVS’s profits
`
`because the stores charged for the reproduced copies. However, CVS received a total
`
`of $212.89 throughout the Alabama stores where Fleming’s agents reproduced the
`
`photographs. The insignificant amount does not amount to enough to directly affect
`
`the profits of the various CVS locations in which the transactions were performed.
`
`In addition, CVS accepted the applicable amount of payment for reproducing the
`
`copies.
`
`In addition, Fleming argues CVS is liable for vicarious infringement based on
`
`the test set out in Gener-Villar v. Adcom Group, Inc., 560 F.Supp.2d 112, 131-32
`
`(D.Puerto Rico 2008). In Gener-Villar, the court held that a defendant incurs
`
`vicarious or contributory liability “when an infringer, while not engaging in an
`
`infringement on its own, has control over the establishment where an infringement
`
`occurs, or the means by which an infringement takes place; knows, or has reason to
`
`know, that the infringement is occurring, and does nothing to stop it.” Id. The court
`
`relied on the “dance hall” cases to determine whether the defendant was liable for
`
`vicarious infringement. Id.
`
`Page 18 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 19 of 22
`
`One such “dance hall” case is the Napster case. A & M Records, Inc., v.
`
`Napster, Inc., 239 F.3d 1004 (9th Cir. 2001); CoStar, 707 F.Supp.2d at 1298. In
`
`Napster, the court found that Napster’s future depended directly on the revenues
`
`earned from the infringing activity. Id. Another “dance hall” case is Major Bob
`
`Music. Major Bob Music v. Stubbs, 851 F.Supp. 475, 480 (S.D.Ga 1994); CoStar,
`
`707 F.Supp.2d at 1298. In Major Bob Music, the court found the defendant was
`
`liable for vicarious infringement because she was the sole owner and derived a
`
`financial benefit from the operation of the establishment.
`
`Here, following Gener-Villar and the dance hall cases cited by Fleming, CVS
`
`would not be liable for vicarious infringement. CVS, as an establishment, does have
`
`control over the Kodak kiosk through inserting the “key code” and collecting
`
`payments but did not derive a substantial financial benefit. As well, CVS
`
`discouraged infringing activity with the “Copyright Notice.” However, Fleming
`
`authorized his agents to reproduce the copyrighted photographs; therefore, no
`
`infringing occurred.
`
`Fleming has failed to establish vicarious infringement since there was no direct
`
`infringement. In addition, Fleming lacked evidence to show CVS profited directly
`
`from the infringement and had the right and ability to supervise the alleged infringers.
`
`Page 19 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 20 of 22
`
`II.
`
`Olan Mills, Inc., v. Linn Photo Co. is not persuasive authority upon the
`court.
`
`Fleming urges the court to follow the reasoning stated by the Eighth Circuit in
`
`Olan Mills, Inc., v. Linn Photo Co., 23 F.3d 1345 (8th Cir. 1994). Fleming argues the
`
`facts in Olan Mills are legally identical to the present case except that Olan Mills did
`
`not involve self-service kiosks. The facts in Olan Mills are as follows:
`
`In mid-1986, Olan Mills discovered that Linn Photo was engaged
`in unauthorized copying of photos to which Olan Mills held the
`copyright. Olan Mills contacted Linn Photo and requested that Linn
`Photo cease this activity.
`
`In 1987, Olan Mills took a number of photos of its employees and
`their families. Olan Mills registered its copyrights in four of these
`photos with the United States Copyright Office. Olan Mills then hired
`a private investigator to conduct an investigation into Linn Photo’s
`allegedly infringing activity. On four separate occasions the investigator
`ordered reproductions of the copyrighted photos from Linn Photo.
`Despite the fact that the photos were clearly marked with a copyright
`notice, Linn Photo made the reproductions and the investigator paid for
`them. For at least three of the requested copies, the investigator signed
`a “Permission to Copy Agreement” which provided:
`
`This is to state that I am the owner of this photo and
`have not given any one else permission to copyright this
`photo. I am submitting it to Linn Photo Company for a
`copy at my request. This copy is for my personal use, and
`I agree to hold harmless, Linn Photo Company or any of its
`agents, from any liability arising from the copying of this
`photo.
`
`Page 20 of 22
`
`
`
`Case 7:09-cv-02462-HGD Document 59 Filed 03/09/12 Page 21 of 22
`
`23 F.3d at 1347. The court reasoned the “investigator’s authority was irrelevant
`
`because Linn Photo only obtained a waiver from the copy owner without any inquiry
`
`as to whether the copyright owner had waived its statutory right of exclusive
`
`reproduction.” Id. Based on the facts, the Eighth Circuit held that Linn Photo
`
`infringed on Olan Mills’ copyright. Id. at 1349.
`
`However, the present facts are not legally identical to the facts stated in Olan
`
`Mills. Fleming did not hire an investigator but instructed his employees, family and
`
`friends to reproduce the photographs using the self-service kiosk. Fleming’s
`
`employees, family and friends were acting as Fleming’s agents, and Fleming had
`
`authority to authorize them to reproduce the photographs. Unlike Olan Mills, the
`
`“Copyright Notice” on the self-service kiosks inquires as to whether the customer has
`
`permission from the copyright holder to make copies. The “Copyright Notice” states,
`
`“By reproducing this photograph, I acknowledge that the picture I am reproducing is
`
`not copyrighted, or I have obtained permission from the copyright holder.” By
`
`accepting the terms of the “Copyright Notice,” Fleming’s age