Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF ARIZONA
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`John Anthony Drafting & Design, LLC, et
`al.,
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`Plaintiff,
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`v.
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`Sabin Lee Burrell, et al.,
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`No. CV-18-00970-PHX-ESW
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`ORDER
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`Defendants.
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`The Court has reviewed the parties’ briefing concerning (i) the Motion for Partial
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`Summary Judgment (Doc. 87) filed by Plaintiff John Anthony Drafting & Design LLC
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`and (ii) the Motion for Summary Judgment (Doc. 89) filed by Defendants Sabin Lee
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`Burrell, Kayla Jantz, 5650 Wilkinson, LLC, and Black Dog Management, L.P.1 For the
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`reasons set forth herein, the Motions (Docs. 87, 89) will be denied.2
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`I. LEGAL STANDARDS
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`Summary judgment is appropriate if the evidence, when reviewed in a light most
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`favorable to the non-moving party, demonstrates “that there is no genuine dispute as to
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`any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
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`1 The parties have consented to proceeding before a Magistrate Judge pursuant to
`Federal Rule of Civil Procedure 73 and 28 U.S.C.§ 636(c). (Doc. 36).
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`2 Although requested, the Court does not find that oral argument on the Motions is
`necessary.
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 2 of 13
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`P. 56(a). Substantive law determines which facts are material in a case and “only
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`disputes over facts that might affect the outcome of the suit under governing law will
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`properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477
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`U.S. 242, 248 (1986). “A fact issue is genuine ‘if the evidence is such that a reasonable
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`jury could return a verdict for the nonmoving party.’” Villiarimo v. Aloha Island Air,
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`Inc., 281 F.3d 1054, 1061 (9th Cir. 2002) (quoting Anderson, 477 U.S. at 248). Thus, the
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`nonmoving party must show that the genuine factual issues “can be resolved only by a
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`finder of fact because they may reasonably be resolved in favor of either party.” Cal.
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`Architectural Bldg. Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1468 (9th
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`Cir. 1987) (quoting Anderson, 477 U.S. at 250).
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`Because “[c]redibility determinations, the weighing of the evidence, and the
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`drawing of legitimate inferences from the facts are jury functions, not those of a judge . . .
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`[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be
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`drawn in his favor” at the summary judgment stage. Anderson, 477 U.S. at 255 (citing
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`Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970)); Harris v. Itzhaki, 183 F.3d
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`1043, 1051 (9th Cir. 1999) (“Issues of credibility, including questions of intent, should be
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`left to the jury.”) (citations omitted).
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`When moving for summary judgment, the burden of proof initially rests with the
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`moving party to present the basis for his motion and to identify those portions of the
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`record and affidavits that he believes demonstrate the absence of a genuine issue of
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`material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the movant fails
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`to carry his initial burden of production, the non-movant need not produce anything
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`further. The motion for summary judgment would then fail. However, if the movant
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`meets his initial burden of production, then the burden shifts to the non-moving party to
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`show that a genuine issue of material fact exists and that the movant is not entitled to
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`judgment as a matter of law. Anderson, 477 U.S. at 248, 250; Triton Energy Corp. v.
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`Square D. Co., 68 F.3d 1216, 1221 (9th Cir. 1995). The nonmovant need not establish a
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`material issue of fact conclusively in his favor. First Nat’l Bank of Ariz. v. Cities Serv.
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 3 of 13
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`Co., 391 U.S. 253, 288-89 (1968). However, he must “come forward with specific facts
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`showing that there is a genuine issue for trial.” Matsushita Elec. Indus. Co., Ltd. v.Zenith
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`Radio Corp., 475 U.S. 574, 587 (1986) (internal citation and emphasis omitted); see Fed.
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`R. Civ. P. 56(c)(1).
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`Conclusory allegations unsupported by factual material are insufficient to defeat a
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`motion for summary judgment. Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989); see
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`also Soremekun v. Thrifty Payless, Inc., 502 F.3d 978, 984 (9th Cir. 2007) (“[c]onclusory,
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`speculative testimony in affidavits and moving papers is insufficient to raise genuine
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`issues of fact and defeat summary judgment”). Nor can such allegations be the basis for
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`a motion for summary judgment.
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`II. BACKGROUND
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`This is a copyright infringement action. Plaintiff John Anthony Macewicz
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`(“Macewicz”) owns an architectural design firm named John Anthony Drafing & Design,
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`LLC (“JADD”). (Doc. 93 at 5, ¶ 10). Defendants Sabin Lee Burrell (“Burrell”) and
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`Kayla Jantz (“Jantz”) are husband and wife. In March 2015, Defendant Burrell entered
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`into a written agreement with JADD for the design of a residential home. (Id. at 6, ¶¶ 13-
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`15). The structure at issue is located at 5650 North Wilkinson Road in Paradise Valley,
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`Arizona and is referred to herein as the “Burrell Residence.” (Doc. 90 at 2, ¶ 3).
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`Defendant Burrell is the sole manager and member of Defendant 5650 Wilkinson, LLC,
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`which is the record owner of the Burrell Residence. (Id. at 9-10, ¶¶ 50-52). Defendant
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`Burrell also is the manager of Panzer Investments, LLC, which is Defendant Black Dog
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`Management, L.P.’s general partner. (Doc. 98 at 10, ¶ 112). Defendant Black Dog
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`Management, L.P. provided financing for the construction of the Burrell Residence. (Id.,
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`¶¶ 113-15). Burrell, Jantz, 5650 Wilkinson, LLC, and Black Dog Management, L.P. are
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`collectively referred herein as the “Burrell Defendants.” The remaining four Defendants
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`are (i) Craig Banner (“Banner”); (ii) American Tradition Builders, Inc. (“ATB”); (iii)
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 4 of 13
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`Tom Spencer (“Spencer”); and (iv) CBAN, LLC.3 On April 11, 2016, Defendants
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`Burrell, ATB, and CBAN, LLC entered into a contract for the construction of a residence
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`(the “Building Contract”). (Doc. 90 at 9, ¶ 43).
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`Plaintiff Macewicz states that in May 2016, he applied to register the copyright for
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`the Burrell Residence’s design. (Doc. 88-2 at 4, ¶ 14). The Certificate of Registration
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`issued by the Copyright Office reflects that the title of the protected work is “Burrell
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`Residence.” (Doc. 88-3 at 4). The Certificate of Registration lists an effective date of
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`May 3, 2016, with June 9, 2015 as the date of first publication. (Id.). In January 2018,
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`Plaintiff Macewicz assigned all copyrights in the Burrell Residence to Plaintiff JADD.
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`(Doc. 88-5 at 3). Plaintiffs contend that the home constructed pursuant to the Building
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`Contract infringes on the copyrights in the Burrell Residence’s design. In its Amended
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`Complaint, Plaintiffs assert that the Burrell Defendants are liable for vicarious and
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`contributory copyright infringement. (Doc. 54 at 10, ¶¶ 38-39). One of the Burrell
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`Defendants’ contentions is that Plaintiff JADD’s copyright is not valid because the
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`Burrell Residence does not constitute an original architectural work.
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`III. DISCUSSION
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`A. Plaintiff JADD’s Motion for Partial Summary Judgment (Doc. 87)
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`Architectural plans and drawings are entitled to copyright protection under the
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`Federal Copyright Act. 17 U.S.C. § 101 et seq. “Architectural work” is defined as “the
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`design of a building as embodied in any tangible medium of expression, including a
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`building, architectural plans, or drawings.” 17 U.SC. § 101. Plaintiff JADD moves for
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`summary judgment that it owns a valid copyright in the Burrell Residence’s design.
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`(Doc. 87).
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`To establish copyright infringement, a party must show (i) ownership of a valid
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`copyright and (ii) unauthorized copying by another party of the constituent original
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`elements of the work. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361
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`3 These Defendants have not moved for summary judgment.
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 5 of 13
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`(1991). A certificate of registration made within five years of the first publication of the
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`work “constitutes prima facie evidence of copyrightability and shifts the burden to the
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`defendant to demonstrate why the copyright is not valid.” Bibbero Sys., Inc. v. Colwell
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`Sys., Inc., 893 F.2d 1104, 1106 (9th Cir. 1990) (citing 17 U.S.C. § 410(c)). In order to
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`rebut the presumption of validity, an alleged infringer must offer “some evidence or proof
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`to dispute or deny the [copyright holder’s] prima facie case of infringement.” United
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`Fabrics Int'l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011) (internal
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`quotation marks and citation omitted). Because “originality is the indispensable
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`prerequisite for copyrightability,” the alleged infringer may rebut the presumption of
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`validity by showing that “the [copyright holder’s] work is not original.” N. Coast Indus.
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`v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992). Where the accused
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`infringer offers evidence that the plaintiff’s product was copied from another work or
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`other probative evidence as to originality, the burden of proving validity shifts back to the
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`plaintiff. Entm’t Research Grp. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217-18
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`(9th Cir. 1997) (citing North Coast Indus., 972 F.2d at 1033).
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`Although originality is the prerequisite for copyrightability, the “originality
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`requirement does not mean that for valid copyright protection, the copyright must
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`represent something entirely new under the sun.” North Coast, 972 F.2d at 1033.
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`Originality requires that a work “owes its origin” to the “author,” whose contribution is
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`“more than a trivial variation, something recognizably his own.” Id. (quoting Sid &
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`Marty Krofft Television v. McDonald’s Corp., 562 F.2d 1157, 1163 n.5 (9th Cir. 1977)).
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`The Supreme Court has held that “the requisite level of creativity is extremely low; even
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`a slight amount will suffice. The vast majority of works make the grade quite easily, as
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`they possess some creative spark, no matter how crude, humble or obvious it might be.”
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`Feist, 499 U.S. at 345 (internal quotation marks and citation omitted); see also Gaste v.
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`Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) (“[T]he originality requirement for
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`obtaining a copyright is an extremely low threshold, unlike the novelty requirement for
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`securing a patent. Sufficient originality for copyright purposes amounts to little more
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 6 of 13
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`than a prohibition of actual copying.”). With regard to architectural works, originality
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`can be expressed in the “overall form” and “arrangement and composition of spaces.” 17
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`U.S.C. § 101.
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` Here, Plaintiff JADD has produced evidence that it holds a Certificate of
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`Registration for the Burrell Residence’s design that was issued by the United States
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`Copyright Office within five years of its first publication. (Doc. 88 at 4, ¶ 15; Doc. 88-3
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`at 4). The Burrell Defendants have not presented sufficient evidence controverting that
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`assertion. The Court finds that Plaintiff JADD has provided prima facie evidence of
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`owning a valid copyright in the Burrell Residence’s design. In an attempt to rebut the
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`presumption of validity, the Burrell Defendants assert that Plaintiff Macewicz copied
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`another architect’s work in designing the Burrell Residence. (Doc. 92 at 4-10). The
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`Burrell Defendants explain that Burrell and Jantz provided Plaintiffs with “an example of
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`the contemporary home [Burrell] and Jantz wanted to have designed[.]” (Id. at 5). It is
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`undisputed that the “example” home was designed by architect Gary Wyant of Calvis
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`Wyant Luxury Homes, Inc. (the “Wyant Design”). (Doc. 90 at 3, ¶ 11; Doc. 90-3 at 20).
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`The Burrell Defendants contend that Plaintiff Macewicz “actually copied the [Wyant
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`Design] to make the Burrell Residence and modified it per Burrell and Jantz’s requests
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`and instructions.” (Doc. 93 at 2).
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`“[I]n order to establish that the plaintiff copied a preexisting work, a defendant
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`must show that plaintiff had access to the prior work and that plaintiff’s work is
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`substantially similar to the prior work in both ideas and expression.” N. Coast Indus.,
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`972 F.2d at 1033-34; see also 3 Melville B. Nimmer & David Nimmer, Nimmer on
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`Copyright § 12.11 [B] n.50 (1991) (“Proof that the plaintiff copied from prior works
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`should involve the same elements . . . as are required to establish copying by the
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`defendant from the plaintiff, i.e., access and similarity.”). In determining whether two
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`works are “substantially similar” for the purposes of copyright infringement, the Ninth
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`Circuit “employ[s] a two-part analysis: an objective extrinsic test and a subjective
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`intrinsic test.” Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004). “The extrinsic test
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 7 of 13
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`considers whether two works share a similarity of ideas and expression as measured by
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`external, objective criteria [and] . . . requires analytical dissection of a work and expert
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`testimony.” Id. (internal quotations and citation omitted). “[T]he subjective question
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`whether works are intrinsically similar”—i.e., the subjective intrinsic test—“must be left
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`to the jury.” Id.
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`“Because substantial similarity is customarily an extremely close question of fact,
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`summary judgment has traditionally been frowned upon in copyright litigation.” A.A.
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`Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir. 1980) (citation
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`omitted); see also Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991)
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`(expressing “a certain disfavor for summary judgment on questions of substantial
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`similarity”); Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097
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`(6th Cir. 1984) (“[S]ummary judgment . . . is a practice to be used sparingly in copyright
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`infringement cases.”). “Where reasonable minds could differ on the issue of substantial
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`similarity . . . summary judgment is improper.” Shaw v. Lindheim, 919 F.2d 1353, 1355
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`(9th Cir. 1990).
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`Here, it is undisputed that Plaintiff Macewicz had access to the Wyant Design.
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`(Doc. 90 at 3, ¶¶ 8-11). The issue is whether the Burrell Residence is substantially
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`similar to the Wyant Design. After comparing the Burrell Residence and Wyant Design,
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`the Court finds there is a genuine issue of fact as to whether the Burrell Residence is
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`substantially similar to the Wyant Design. (See Doc. 95-2 at 16, 18). Further, as
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`explained in the following section, there are additional issues of material fact regarding
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`the originality of the Burrell Residence’s design. The Court will deny Plaintiff JADD’s
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`Motion for Partial Summary Judgment (Doc. 87). See, e.g., Frank Betz Assocs., Inc. v.
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`J.O. Clark Const., L.L.C., No. CIV.A 3:08-CV-00159, 2010 WL 2253541, at *15 (M.D.
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`Tenn. May 30, 2010) (denying summary judgment in copyright dispute over home
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`designs because the “inherent subjectivity” of the substantial similarity inquiry makes
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`summary judgment on the issue “rarely appropriate”).
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 8 of 13
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`B. The Burrell Defendants’ Motion for Summary Judgment (Doc. 89)
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`The Burrell Defendants move for summary judgment on three grounds: (i) the
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`Burrell Residence’s design is not protected by copyright; (ii) even if the Burrell
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`Residence’s design is protected by copyright, the Burrell Defendants are not liable for
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`vicarious or contributory infringement; and (iii) Plaintiffs do not have a valid claim for
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`damages. (Doc. 89 at 5-16).
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`1. There are Genuine Issues of Fact as to Whether the Burrell
`Residence’s Design is Protected by Copyright
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`As explained in the previous section, the Court finds that there is a genuine issue
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`of material fact as to whether the Burrell Residence is substantially similar to the Wyant
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`Design in relation to the contention that Plaintiff Macewicz copied the Burrell
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`Residence’s design from the Wyant Design. The Burrell Defendants also assert that the
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`Burrell Residence is not original and protected by copyright because “Plaintiffs included
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`the design elements that Mr. Burrell and Ms. Jantz had asked to be included and arranged
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`the way Mr. Burrell and Ms. Jantz, with input from their team of professionals, asked for
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`them to be arranged. [SUF ¶ 36].”4 (Doc. 89 at 8).
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`Copyright protection extends to a particular expression of an idea. Boisson v.
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`Banian, Ltd, 273 F.3d 262, 268 (2d Cir. 2001). Although it is undisputed that Burrell and
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`Jantz provided certain parameters and ideas for the Burrell Residence’s design (Doc. 90
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`at 3, ¶ 8), there is sufficient controverting evidence indicating that Plaintiff Macewicz
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`used creativity in designing a home that encompassed those parameters and ideas. See
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`Compass Homes, Inc. v. Trinity Health Grp., Ltd., No. 2:13-CV-647, 2016 WL 3406054,
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`at *6 (S.D. Ohio June 21, 2016) (defendant homeowner “simply put marks to show where
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`she wanted certain features like a toilet and a sink to be located . . . . [T]he evidence is
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`uncontroverted that it was [the designer] who put the ideas to expression by designing the
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`4 The Burrell Defendants clarify that they are not claiming that they own a
`copyright in the Burrell Residence’s design as authors or co-authors. (Doc. 97 at 9).
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 9 of 13
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`copyrighted floor plans on [the designer’s] computer”). To reiterate, “the requisite level
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`of creativity is extremely low; even a slight amount will suffice.” Feist, 499 U.S. at 345
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`(internal quotations omitted). A jury could reasonably conclude that in designing the
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`Burrell Residence, Plaintiff Macewicz exercised the minimal degree of creativity that is
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`required for copyright protection.
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`In addition, the Court finds that Plaintiff JADD has produced sufficient evidence
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`disputing the Burrell Defendants’ assertion that the Burrell Residence is not original
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`because “[t]here were only a limited number of ways to configure the home using Mr.
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`Burrell’s example floor plan that would meet the site requirements, zoning regulations,
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`and Mr. Burrell and Ms. Jantz’s parameters.”5 (Doc. 89 at 8). The Burrell Defendants’
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`Motion for Summary Judgment (Doc. 89) is denied as to the issue of whether Plaintiff
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`JADD holds a valid copyright in the Burrell Residence’s design.
`2. There are Genuine Issues of Material Fact as to Whether the
`Burrell Defendants are Liable for Vicarious or Contributory
`Copyright Infringement
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`There are three doctrines of copyright liability: direct copyright infringement,
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`contributory copyright infringement, and vicarious copyright infringement. To prove a
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`claim of direct copyright infringement, a plaintiff must show that he owns the copyright
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`and that the defendant violated one or more of the plaintiff’s exclusive rights under the
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`Copyright Act. A & M Records v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). A
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`person may be liable as a contributory infringer if the person has knowledge of the
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`infringing activity and induces, causes, or materially contributes to the infringing conduct
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`of another. Id. at 1019 (quoting Gershwin Publ'g Corp. v. Columbia Artists Mgmt., Inc.,
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`443 F.2d 1159, 1162 (2d Cir. 1971)). The knowledge requirement for contributory
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`5 Architectural design components that are required by functional considerations
`are not protected by copyright. Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716
`F. Supp. 2d 428, 441 (E.D. Va. 2010). “[U]nder the merger doctrine, infringement will
`not be found if a particular idea can only be expressed in a very limited number of ways
`. . . .” Greenberg v. Town of Falmouth, No. CIV.A. 04-11934-GAO, 2006 WL 297225, at
`*2 (D. Mass. Feb. 8, 2006).
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 10 of 13
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`copyright infringement includes both those with actual knowledge and those who have
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`reason to know of direct infringement. Id. at 1020. Finally, a defendant is vicariously
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`liable for copyright infringement if he enjoys a direct financial benefit from another’s
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`infringing activity and “has the right and ability to supervise” the infringing activity. Id.
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`at 1022 (quoting Gershwin Publ'g Corp., 443 F.2d at 1162). The vicarious infringer need
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`not know that he is infringing. MetroGoldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125
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`S.Ct. 2764, 2776 n.9 (2005).
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`The Amended Complaint alleges that the Burrell Defendants are liable for
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`vicarious and contributory copyright infringement. (Doc. 54 at 10, ¶¶ 38-39). The
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`Burrell Defendants assert that they did not have a right or ability to supervise the
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`completion of the design process, permitting, and construction of the Burrell Residence
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`and therefore cannot be liable for vicarious infringement. (Doc. 89 at 9). The Burrell
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`Defendants assert that “Mr. Burrell’s sole right in this process was limited to identifying
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`construction errors. [SUF ¶ 48] 5650 Wilkinson, Black Dog, and Kayla Jantz were not
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`parties to the Building Contract and had no right to supervise.” (Id.). It is further
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`contended that Defendant Burrell did not have a direct financial interest in any infringing
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`actions by the home builders because the real estate at issue is owned by Defendant 5650
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`Wilkinson, LLC and not Defendant Burrell. (Id.).
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`It is undisputed that Burrell is authorized to make business decisions on behalf of
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`Black Dog Management, L.P. (Doc. 98 at 9, ¶ 112). Defendant 5650 Wilkinson, LLC is
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`the current record owner of the real property upon which the Burrell Residence was built,
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`and Defendant Burrell is the sole manager and member of that entity. (Doc. 90 at 10, ¶¶
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`50-52). Jantz deeded the property to 5650 Wilkinson, LLC in June 2016—after the
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`effective date of the Certificate of Registration concerning the purported copyright in the
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`Burrell Residence’s design. (Id., ¶ 51; Doc. 88-3 at 4). The Court concludes that genuine
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`issues of material fact exist regarding whether the Burrell Defendants are liable for
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`vicarious copyright infringement.
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`The Burrell Defendants also argue that they are not liable for contributory
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 11 of 13
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`infringement, asserting that:
`Neither Mr. Burrell nor Ms. Jantz had any interaction with
`Mr. Spencer with respect to the work that he performed, nor
`did they provide him with copies of Plaintiffs’ designs. [SUF
`¶ 53] Mr. Burrell was simply invoiced for Mr. Spencer’s
`services by ATB. Per the terms of the Building Contract, Mr.
`Burrell was not expected or allowed to direct Mr. Spencer’s
`actions or have any direct contact with him. [SUF ¶ 54] At
`no time did Mr. Burrell or Ms. Jantz instruct, cause or induce
`anyone to copy Plaintiffs’ Burrell Residence designs. [SUF ¶
`55].
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`(Doc. 89 at 10).
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`In response, Plaintiffs point to evidence that Plaintiff Macewicz emailed
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`Defendants Burrell and Banner: “I have not given anyone permission to use my designs,
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`and to do so is a violation of federal copyright law. CSOF 105, 106.” (Doc. 94 at 12).
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`Plaintiffs also cite evidence that Defendants Banner, Spencer, and ATB “would not have
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`used Plaintiffs’ Burrell residence work as the source for the construction documents, and
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`the construction of the house itself, without the active assistance and direction of Burrell
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`and Jantz.” (Id.). The Building Contract defines (i) Burrell and Jantz as “The Owner”;
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`(ii) CBAN Properties, LLC as the “Project Manager”; (iii) ATB as “The Builder”; and
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`(iv) 5650 N. Wilkinson, Paradise Valley, Arizona as “The Property.” (Doc. 93-2 at 131).
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`The Building Contract states that the “Project Manager & Builder have worked with the
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`Owner and have caused Architectural, Landscape Design & Civil Engineering plans to be
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`drawn for the work to be built on The Lot.” (Id.). Defendants have not introduced
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`sufficient evidence casting doubt that the architectural plans used to construct the Burrell
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`Residence did not copy the design created by Plaintiff Macewicz. Considering the
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`evidence and drawing all inferences from it in the light most favorable to Plaintiffs, the
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`Court finds a genuine issue of material fact as to contributory copyright infringement.6
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`6 In its Response (Doc. 94 at 9), Plaintiff JADD alleges that the Burrell Defendants
`are direct infringers. The Court does not address that issue as it was not raised in the
`Motion for Summary Judgment (Doc. 89).
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 12 of 13
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`3. There are Genuine Issues of Material Fact as to Damages
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`The Amended Complaint seeks injunctive relief, along with all monetary remedies
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`provided by 17 U.S.C. § 504(b). (Doc. 54 at 10-11).
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`Under 17 U.S.C. § 504(b), a plaintiff may elect to receive “the actual damages
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`suffered by him or her as a result of the infringement, and any profits of the infringer that
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`are attributable to the infringement and are not taken into account in computing the actual
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`damages.” Alternatively, under § 504(c), “the copyright owner may elect, at any time
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`before final judgment is rendered, to recover, instead of actual damages and profits, an
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`award of statutory damages for all infringements involved in the action, with respect to
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`any one work.” (emphasis added).
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`“The existence of damages suffered is not an essential element of a claim for
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`copyright infringement.” On Davis v. The Gap, Inc., 246 F.3d 152, 158 (2d Cir. 2001),
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`as amended (May 15, 2001) (citing Feist, 499 U.S. at 361); see also 4 Melville B.
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`Nimmer & David Nimmer, Nimmer on Copyright § 13.01, at 13-6 *159 (1999) (“Notably
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`absent from this formulation of the prima facie case is damage or any harm to [the]
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`plaintiff resulting from the infringement.”). “The owner of a copyright is thus entitled to
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`prevail in a claim for declaratory judgment of infringement without showing entitlement
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`to monetary relief.” On Davis v. The Gap, Inc., 246 F.3d at 158.
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`In addition, a plaintiff may elect statutory damages for copyright infringement
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`“regardless of the adequacy of the evidence offered as to his actual damages and the
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`amount of the defendant’s profits.” Columbia Pictures Television, Inc. v. Krypton
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`Broadcasting of Birmingham, Inc., 259 F.3d 1186 (9th Cir. 2001) (internal quotation
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`marks and citation omitted). This is because “awards of statutory damages serve both
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`compensatory and punitive purposes[.]” Los Angeles News Service v. Reuters Television
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`Intern., Ltd., 149 F.3d 987, 996 (9th Cir. 1998). “The availability of statutory damages
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`ensures there will always be an avenue open to sanction an infringer and vindicate the
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`statutory policy of discouraging infringement.” Jackson v. Sturkie, 255 F. Supp. 2d 1096,
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`1101 (N.D. Cal. 2003). However, as a precondition to obtaining statutory damages and
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`Case 2:18-cv-00970-ESW Document 99 Filed 10/30/19 Page 13 of 13
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`attorney’s fees, a plaintiff must have registered its copyright before the alleged
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`infringement. 17 U.S.C. § 412.
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`Because the Court has denied summary judgment on the issues of the validity of
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`Plaintiff JADD’s alleged copyright and the Burrell Defendants’ liability for the alleged
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`copyright infringement, the Court finds that summary judgment on damages is premature
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`at this time. See Home Design Servs., Inc. v. Trumble, No. 09-CV-00964-WYD-CBS,
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`2011 WL 843900, at *2 (D. Colo. Mar. 8, 2011) (concluding that any finding regarding
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`damages, actual or otherwise, concerning alleged copyright infringement was premature
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`before the plaintiff prevailed on issue of liability); Soft-Aid, Inc. v. Sam-on-Demand, No.
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`CV 14-10419-LTS, 2016 WL 10919656, at *9 (D. Mass. Aug. 11, 2016) (“At this stage,
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`issues of fact preclude summary judgment on the issue of infringement. Therefore, the
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`Court is disinclined to analyze the issue of remedies on an incomplete record prior to a
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`determination on infringement. It is more appropriate to reserve determination on the
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`issue of remedies until the trier of fact has a complete factual record before it.”).
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`Moreover, the Court finds that there are genuine issues of material fact concerning
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`Plaintiffs’ claim for actual damages and infringer profits. The Burrell Defendants’
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`Motion for Summary Judgment (Doc. 89) will be denied as to the issue of damages.
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`Based on the foregoing,
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`IV. CONCLUSION
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`IT IS ORDERED denying Plaintiff JADD’s Motion for Partial Summary
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`Judgment (Doc. 87).
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`IT IS FURTHER ORDERED denying the Burrell Defendants’ Motion for
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`Summary Judgment (Doc. 89).
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`Dated this 29th day of October, 2019.
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`Honorable Eileen S. Willett
`United States Magistrate Judge
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