Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 1 of 13
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CASE NO. 05-60538-CIV-MARRA/JOHNSON
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`ULTRA-IMAGES, LLC, a
`Florida company,
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`Plaintiff,
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`vs.
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`DARREN A. FRANCLEMONT et al.,
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`Defendants.
`_____________________________________/
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`OPINION AND ORDER
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`This cause is before the Court upon Defendants Entertainment U.S.A., Inc. and
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`Entertainment Productions, Inc.’s Motion for Summary Judgment [DE 250]; Plaintiff’s Motion
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`for Enlargement of Time to File Opposition to Motions for Summary Judgment [DE 291] and
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`Plaintiff’s Cross-Motion for Summary Judgment [DE 301]. The Court has carefully considered
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`the motions and is otherwise fully advised in the premises.
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`I. Background
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`The Court notes that its previous orders in this case provide the relevant background to
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`these motions. In sum, Plaintiff Ultra Images, LLC (“Plaintiff”), an entity engaged in the
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`business of owning and enforcing intellectual property rights, claims that Defendants
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`Entertainment U.S.A., Inc. and Entertainment Productions, Inc. (“Defendants”) infringed its
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`copyright in the Jesse Portrait. (Second Am. Compl. ¶ ¶ 16, 69-74.)
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`The facts relevant to the copyright claim stem from the various assignments executed
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`pertaining to the Jesse Portrait. On May 10, 2002, Richard Anderson, the photographer of the
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 2 of 13
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`Jessie Portrait, assigned to his wife, Eszter Barany Anderson, his entire collection of still
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`images, any registrations and copyright applications relating thereto and “all causes of action,
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`either in law or equity for past, present or future infringement based on the copyrights.” (DE 250-
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`4.) Next, on December 6, 2004, Eszter Barany Anderson assigned to Plaintiff “all right[s], title
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`and interest in and to the following described copyright and rights pertaining to said copyright
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`and to the [Jesse Portrait].” Notably, this assignment did not assign the causes of action. (DE
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`245-4.) On December 17, 2004, Richard Anderson executed an assignment that purported to
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`assign the copyrights and causes of action relating to the Jesse Portrait to Plaintiff. (DE 103.)
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`Finally, on April 9, 2007, Eszter Barany Anderson assigned to Plaintiff her rights in the Jesse
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`Portrait and the related causes of action. (DE 250-3.) When asked why she executed the 2007
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`assignment, Eszter Barany Anderson stated, “”To guarantee that what I said earlier - That was
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`reinforcing it by me signing it.” (Dep. of E. Anderson 79.) Notably, that assignment stated that it
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`was “intended nunc pro tunc to formalize, supplement and otherwise effect the assignment and
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`confirmation of rights given and choses in action assigned at that time.” The Complaint attached
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`only the December 17, 2004 assignment.
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`On December 17, 2004, Richard Anderson filed a certificate of registration with the
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`United States Copyright Office for the Jesse Portrait. (DE 103.) In that application, Richard
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`Anderson identified the copyright claimant as Plaintiff and stated that all rights in the Jesse
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`Portrait were transferred by the author to Plaintiff by written contract.
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`In arguing for summary judgment, Defendants contend that Plaintiff’s copyright
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` Other images were assigned as well but this motion concerns only the rights surrounding
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`the Jesse Portrait.
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 3 of 13
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`registration in the Jesse Portrait is invalid based on Richard Anderson’s filing of false
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`information to the Copyright Office regarding the assignment of the copyright of the Jesse
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`Portrait. Defendants also claim that Plaintiff lacks standing to bring any action for copyright
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`violations because it did not own the accrued causes of action when it filed the instant action. In
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`addition, Defendants assert that Plaintiff’s claim is barred by laches and that there is no evidence
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`to support a claim for damages. In response, Plaintiff states that Defendants have made no
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`showing of fraud with respect to the copyright registration and that immaterial errors on the
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`registration do not jeopardize the registration’s validity. Plaintiff counters that it possesses
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`standing based on its April 2007 assignment which cured any defects in the prior assignments.
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`With respect to the laches defense, Plaintiff asserts that Defendants’ willful infringement
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`prevents the application of that defense in this case. Lastly, Plaintiff claims that there are
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`material issues of fact regarding damages and that additional discovery is needed to determine
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`damages.
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`II. Summary Judgment Standard
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`The Court may grant summary judgment “if the pleadings, depositions, answers to
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`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
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`genuine issue as to any material fact and that the moving party is entitled to a judgment as a
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`matter of law.” Fed. R. Civ. P. 56(c). The stringent burden of establishing the absence of a
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`genuine issue of material fact lies with the moving party. Celotex Corp. v. Catrett, 477 U.S. 317,
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` Plaintiff also moves for summary judgment on the standing and ownership issues.
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`Defendants point out that Plaintiff’s motion for summary judgment was filed after the deadline
`for the filing of substantive motions. (Def. Reply 4.) Given that the Court finds that there are
`material issues of fact with respect to standing and ownership, the Court makes no findings as a
`matter of law in favor of either party.
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 4 of 13
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`323 (1986). The Court should not grant summary judgment unless it is clear that a trial is
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`unnecessary, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986), and any doubts in this
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`regard should be resolved against the moving party. Adickes v. S.H. Kress & Co., 398 U.S. 144,
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`157 (1970).
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`The movant “bears the initial responsibility of informing the district court of the basis for
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`its motion, and identifying those portions of [the record] which it believes demonstrate the
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`absence of a genuine issue of material fact.” Celotex Corp., 477 U.S. at 323. To discharge this
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`burden, the movant must point out to the Court that there is an absence of evidence to support the
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`nonmoving party’s case. Id. at 325.
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`After the movant has met its burden under Rule 56(c), the burden of production shifts and
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`the nonmoving party “must do more than simply show that there is some metaphysical doubt as
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`to the material facts.” Matsushita Electronic Industrial Co. v. Zenith Radio Corp., 475 U.S. 574,
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`586 (1986). According to the plain language of Fed. R. Civ. P. 56(e), the non-moving party
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`“may not rest upon the mere allegations or denials of the adverse party’s pleadings,” but instead
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`must come forward with “specific facts showing that there is a genuine issue for trial.” Fed. R.
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`Civ. P. 56(e); Matsushita, 475 U.S. at 587.
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`Essentially, so long as the non-moving party has had an ample opportunity to conduct
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`discovery, it must come forward with affirmative evidence to support its claim. Anderson, 477
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`U.S. at 257. “A mere ‘scintilla’ of evidence supporting the opposing party’s position will not
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`suffice; there must be a sufficient showing that the jury could reasonably find for that party.”
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`Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990). If the evidence advanced by the non-
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`moving party “is merely colorable, or is not significantly probative, then summary judgment may
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 5 of 13
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`be granted.” Anderson, 477 U.S. 242, 249-50.
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`III. Discussion
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`A. Copyright Registration Validity
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`In making the argument that Plaintiff’s copyright registration is invalid, Defendants point
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`to the language on the certificate of copyright registration that states that Richard Anderson had
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`transferred his rights in the Jesse Portrait to Plaintiff by written contract as evidenced by the
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`December 17, 2004 assignment from Richard Anderson to Plaintiff. Defendants note, however,
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`that the December 17, 2004 assignment was “false” because Richard Anderson had already given
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`away his interest in the Jesse Portrait to his wife by virtue of the May 10, 2002 assignment.
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`Thus, according to Defendants, Richard Anderson “knowingly misrepresented material facts to
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`the Copyright Office” and the Copyright Office would not have issued the copyright to Plaintiff
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`had it known that there was “no valid contract transferring the right from Richard Anderson to
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`[Plaintiff].” (Def. Mot. 11.) Based on that, Defendants claim that the copyright registration is
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`invalid.
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`The Eleventh Circuit has stated that while “omissions and misrepresentations in a
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`copyright application can render the registration invalid,” it is necessary to show that there has
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`been “intentional or purposeful concealment of relevant information.” Original Appalachian
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`Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11 Cir. 1982). In other words, to succeed
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`in invalidating the registration, Defendants must show that the element of “scienter” is met. Id.
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`In contrast, “[i]mmaterial, inadvertent errors in an application for copyright registration do not
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`jeopardize the validity of the registration.” Data General Corp. v. Grumman Systems Support
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`Corp., 36 F.3d 1147, 1161 (1 Cir. 1994). “[A]n error is immaterial if its discovery is not likely
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 6 of 13
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`to have led the Copyright Office to refuse the application.” Id. citing Eckes v. Card Prices
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`Update, 736 F.2d 859, 861-62 (2d Cir.1984).
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`Based on the record, the Court finds that genuine issues of material fact exist regarding
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`whether the registration is valid. A fact finder will need to determine if Richard Anderson acted
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`with scienter or if he made an inadvertent mistake when applying for the registration. In
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`addressing a similar question of whether an “irregularit[y]” in the copyright application
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`constituted fraud, the court in Arthur Rutenberg Homes, Inc. v. Berger, 910 F. Supp. 603 (M.D.
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`Fla. 1995), stated that “intent is not an issue that lends itself to resolution on a summary
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`judgment motion.” Id. at 607. Likewise, it is also a question of fact if the information found on
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`the registration, i.e., that Richard Anderson transferred his rights in the Jesse Portrait to Plaintiff
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`by written contract, is “relevant information.”
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`In so ruling, the Court notes that the cases cited by Defendants are not controlling on this
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`Court and, significantly, those cases fail to address the element of scienter required by the
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`Eleventh Circuit. Instead, Defendants summarily conclude that Richard Anderson “knowingly
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`misrepresented” facts to the Copyright Office. But, as stated herein, the Court finds that summary
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`judgment is not an appropriate mechanism to determine whether Richard Anderson “knowingly
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`misrepresented” facts or provided mistaken information to the copyright office. Thus, summary
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` Defendants also urge this Court to find invalidity of the registration because the
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`registration was made over five years after the Jesse Portrait was published. (Def. Mot. 10.)
`Although 17 U.S.C. § 410(c) provides that “the certificate of a registration made before or within
`five years after first publication of the work shall constitute prima facie evidence of the validity
`of the copyright and of the facts stated in the certificate,” that provision also states that “[t]he
`evidentiary weight to be accorded the certificate of a registration made thereafter shall be within
`the discretion of the court.” Based on the record at this stage in the proceeding, the Court cannot
`find, as a matter of law, that the certificate of registration is invalid.
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 7 of 13
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`judgment on the validity of the copyright is denied.
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`B. Standing
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`Defendants claim that Plaintiff does not have standing to pursue this action because when
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`the suit was filed in April of 2005, Plaintiff had not been given any right or entitlement to
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`prosecute claims for copyright infringement for the Jesse Portrait. Specifically, Defendants claim
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`the December 17, 2004 assignment failed to provide this right because Richard Anderson had
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`previously assigned his rights to his wife in 2002 and thus he had no rights to give Plaintiff.
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`Likewise, Defendants state that Eszter Barany Anderson’s December 6, 2004 assignment also
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`failed to provide this right since that assignment had no mention of any assignment of causes of
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`action. (Def. Mot. 14-15.)
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`The Court finds that there is a question of fact that precludes the entry of summary
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`judgment on this issue. Specifically, a fact finder must determine whether the April 2007
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`assignment was a memorialization of an earlier oral assignment of the causes of action, executed
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`prior to the lawsuit being filed, by Eszter Barany Anderson to Plaintiff. A fact finder could find
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`that Eszter Barany Anderson’s testimony that the April 2007 assignment served “to guarantee
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`what I said earlier” meant that she previously granted Plaintiff the right to prosecute claims for
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`copyright infringement orally prior to the filing of this action. (Dep. of E. Anderson 79.)
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`Oral assignments of a cause of action for copyright infringement are valid, if later
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`memorialized by a written assignment. In an analogous context, the Eleventh Circuit examined
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`17 U.S.C. § 204(a), the provision of the copyright statute that sets out the requirements of a
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` That provision states: “A transfer of copyright ownership, other than by operation of
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`law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is
`in writing and signed by the owner of the rights conveyed or such owner's duly authorized
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 8 of 13
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`transfer of copyright ownership, and the effect of an oral assignment later confirmed in writing.
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`See Imperial Residential Design, Inc. v. Palms Development Group, Inc., 70 F.3d 96 (11 Cir.
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`1995); Arthur Rutenberg Homes, Inc. v. Drew Homes, Inc., 29 F.3d 1529, 1532 (11 Cir. 1994).
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`The Eleventh Circuit held that "a copyright owner's later execution of a writing which confirms
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`an earlier oral agreement validates the transfer ab initio." Imperial Residential, 70 F.3d at 99.
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`The Court finds that this reasoning is applicable here.
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`Nonetheless, Defendants argue that these cases do not address the issue of “whether
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`federal jurisdiction for accrued causes of copyright infringement may be based on an assignment
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`that fails to convey those rights.” (Def. Reply 5.) That argument presupposes a finding that
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`Eszter Barany Anderson did not assign the causes of action to Plaintiff prior to suit. That
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`finding, however, is one that must be reserved for the trier of fact and cannot be made as a matter
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`of law. Moreover, a finding of an oral assignment memorialized by the April 2007 written
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`document will render irrelevant Defendants’ contention (Def. Reply 5) that the written
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`assignments executed in 2002 and 2004 failed to convey the rights at issue. 5
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`For the reasons stated herein, summary judgment on the issue of standing is denied.
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`agent.” 17 U.S.C. § 204(a).
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` With respect to Defendants’ argument that the April 2007 assignment cannot
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`retroactively cure a standing defect, the Court notes that there is a disagreement among the courts
`on this issue. Compare Enzo APA Son, Inc. v. Geapag A.G., 134 F.3d 1090 (Fed. Cir. 1998)
`(nunc pro tunc assignments cannot confer standing retroactively) with Intimo, Inc. v. Briefly
`Stated, Inc., 948 F. Supp. 315 (S.D.N.Y. 1996) (later assignment provided the plaintiff with
`standing to sue for copyright infringements that occurred before the second assignment was
`executed). The Court need not address this issue unless and until the fact finder determines that
`Plaintiff was not given an oral assignment of rights, later memorialized in April 2007.
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 9 of 13
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`C. Laches
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`In making its argument for the application of a laches defense, Defendants contend that
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`Richard Anderson, the predecessor in interest to Plaintiff, knew in the mid-1990s that Defendants
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`were using the Jesse Portrait but never filed suit to protect his rights. Defendants also claim that
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`they are prejudiced, since the conversations and events took place over ten years ago and former
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`employees and relevant documents are now unavailable to be used in their defense. (Def. Mot.
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`15-16.) Plaintiff, however, argues that Defendants willfully infringed the copyright of the Jesse
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`Portrait and laches is therefore an unavailable defense. (Pl. Resp. 13-15.)
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`The Court begins by noting that the Circuits are split on whether laches is a viable
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`defense in a copyright action. Bridgeport Music, Inc. v. Justin Combs Pub., — F.3d —, No. 06-
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`6294, 2007 WL 3010525, * 17 (6 Cir. Oct. 17, 2007) (the laches defense should be applied to
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`copyright cases “rarely” and “in unusual circumstances.”); Danjaq LLC v. Sony Corp., 263 F.3d
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`942 (9 Cir. 2001) (applying laches defense to copyright action); Lyons P’ship, L.P. v. Morris
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`Costumes, Inc., 243 F.3d 789, 797 (4 Cir. 2001) (since the Copyright Act contains an express
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`statute of limitations, there is no laches defense to a copyright action); see Calhoun v. Lillenas
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`Publ’g., 298 F.3d 1228, 1235 n.3 (11 Cir. 2002) (Birch, J., specially concurring) (recognizing
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`the split in circuits “on whether it is appropriate to consider a laches defense where an
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`infringement action is brought within the statutory three-year period of limitations”). A recent
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`unpublished Eleventh Circuit case relied upon the Danjaq case to find that a copyright claim was
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`barred by laches. Thompson v. Looney’s Tavern Productions, Inc., 204 Fed. Appx. 844, 852 (11th
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`Cir. 2006). For the purposes of this motion, the Court will assume laches is a viable defense in a
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`copyright claim.
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 10 of 13
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` To establish laches, Defendants must show 1) a delay in asserting a right or claim, 2) that
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`the delay was not excusable, and 3) that there was undue prejudice to the party against whom the
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`claim is asserted. United States v. Barfield, 396 F.3d 1144, 1150 (11 Cir. 2005); Ambrit, Inc. v.
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`Kraft, Inc., 812 F.2d 1531, 1545 (11 Cir. 1986). In examining the laches defense in the
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`summary judgment context, numerous courts have acknowledged that “caution is called for
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`before laches is applied on summary judgment where facts have only been developed in
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`affidavits and allegations.” Ecology Center of Louisiana, Inc. v. Coleman, 515 F.2d 860, 868 n.8
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`(5 Cir. 1975); see Kourtis v. Cameron, 419 F.3d 989, 1000 (9 Cir. 2005) (same); Goldberg v.
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`Cameron, 482 F. Supp. 2d 1136, 1152 (N.D. Cal. 2007) (same).
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`Significantly, willful infringement by a defendant is an exception to the laches defense.
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`Danjaq, 263 F.3d at 957-58. “‘Willful’ refers to conduct that occurs with knowledge that the
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`defendant's conduct constitutes copyright infringement.” Id. (internal quotation marks omitted.)
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`The determination of willfulness is a question of fact reserved for the jury.
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`The Court finds that the continued use of the Jesse Portrait by Defendants, which
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`Defendants do not dispute, raises a question of fact as to the issues of laches and willful
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`infringement. Given that the Court must view the facts in a light most favorable to Plaintiff, the
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`Court must credit, at the summary judgment stage, the testimony of Richard Anderson that
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` The decisions of the United States Court of Appeals for the Fifth Circuit, as that court
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`existed on September 30, 1981, handed down by that court prior to the close of business on that
`date, shall be binding as precedent in the Eleventh Circuit, for this court, the district courts, and
`the bankruptcy courts in the circuit. Bonner v. Pritchard, 661 F.2d 1206, 1207 (11 Cir. 1981)
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`(en banc).
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 11 of 13
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`limitations were placed on Defendants’ use of the Jesse Portrait. Therefore, a fact finder could
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`determine that Defendants’ continued use of the photograph constitutes willful infringement.
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`The viability of the willfulness exception to the laches defense therefore precludes the Court
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`from finding, as a matter of law, that this claim is barred by laches.
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`D. Damages
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`Defendants seek a ruling from the Court that there is no evidence to support a claim for
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`damages. (Def. Mot. 16-17.). In making that claim, Defendants state that they are entitled to
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`summary judgment because Plaintiffs “cannot prove any connection between the photo on the
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`sign outside the building and the club’s profit.” (Def. Mot. 17.) In response, Plaintiff state that
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`Defendants have obstructed its ability to obtain necessary discovery concerning damages. (Pl.
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`Resp. 15.)
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`To begin, Defendants have failed to discharge its burden on summary judgment. In
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`discussing that burden, the Eleventh Circuit has stated “it is never enough simply to state that the
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`non-moving party cannot meet its burden at trial.” Clark v. Coats & Clark, Inc., 929 F.2d 604,
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`608 (11 Cir. 1991). That is precisely what Defendants have done here. Furthermore, in seeking
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`summary judgment on damages, Defendants have ignored that Plaintiff may elect not to seek
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`actual damages and profits but instead seek statutory damages. 17 U.S.C. § 504. In that
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`circumstance, if the infringement is found to be willful, a fact finder must determine if enhanced
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`statutory damages should be imposed. Feltner v. Columbia Pictures Television, Inc., 523 U.S.
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` Defendants’ statement of facts highlights the testimony of Richard Anderson, who
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`claimed that the money he received for the photograph was for its single, past use. (Def.
`Statement of Facts, 2.) In addition, Defendants’ statement of facts noted “by way of contrast,”
`that defense witnesses, Darren Franclemont and Steve Cooper, testified that no limits were
`placed on Defendants’ use of the photograph. (Def. Statement of Facts, 2-3.)
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`Case 0:05-cv-60538-KAM Document 378 Entered on FLSD Docket 12/20/2007 Page 12 of 13
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`340 (1998) (in copyright cases the fact finder must decide if enhanced statutory damages should
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`be imposed when the infringement was committed willfully). Thus, the Court cannot make any
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`determination regarding statutory damages at the summary judgment stage. Lastly, given that
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`this case is proceeding to trial, the Court finds that without hearing the evidence, it is premature
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`to issue a ruling on actual damages. Thus, Defendants’ motion for summary judgment on the
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`issue of damages is denied.
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`With respect to Plaintiff’s request to seek additional discovery and an enlargement of
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`time to do so, the Court denies that request. There are no pending discovery motions seeking to
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`compel discovery or contempt for failure of Defendants to turn over previously ordered
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`discovery. Plaintiff cannot complain that there is evidence it needs that Defendants have not
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`provided and the Court notes that the deadline for discovery has now passed. Accordingly,
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`Plaintiff’s request is denied.
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`IV. Conclusion
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`Accordingly, it is hereby ORDERED AND ADJUDGED as follows:
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`1)
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`2)
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`Defendants’ Motion for Summary Judgment [DE 250] is DENIED.
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`Plaintiff’s Motion for Enlargement of Time to File Opposition to Motions for
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`Summary Judgment [DE 291] is DENIED.
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`3)
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` Plaintiff’s Cross-Motion for Summary Judgment [DE 301] is DENIED.
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`DONE AND ORDERED in Chambers at West Palm Beach, Palm Beach County,
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`Florida, this 20 day of December 2007.
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`______________________________________
`KENNETH A. MARRA
`United States District Judge
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`Copies to:
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`All counsel of record
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