Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 1 of 20 PageID #:7724
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`No. 1:18-cv-04738
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`Judge Edmond E. Chang
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`LAURA A. MILLER,
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`Plaintiff,
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`v.
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`THE FRENCH PASTRY SCHOOL LLC and )
`THE BUTTER BOOK LLC,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`This case demonstrates how a failure to hammer out the legal details of a busi-
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`ness relationship in advance is a recipe for a lawsuit. Based on the murky dealings,
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`Laura Miller brought this copyright-infringement lawsuit against The French Pastry
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`School, LLC and The Butter Book, LLC (for convenience’s sake, this Opinion will refer
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`to the Defendants collectively as Butter Book).1 Miller asserts both federal and state
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`law claims arising out of Butter Book’s use of Miller’s allegedly proprietary literary
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`works, which Miller had originally provided to Butter Book. In turn, Butter Book has
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`levelled counterclaims against Miller, challenging Miller’s ownership of the works.
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`The parties now cross-move for summary judgment. For the reasons discussed in this
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`Opinion, Miller’s motion is denied and Butter Book’s motion is granted in part and
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`denied in part.
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`1This Court has subject matter jurisdiction over the case via federal-question jurisdic-
`tion, 28 U.S.C. § 1331, as well as supplemental jurisdiction over the state law claims under
`28 U.S.C. § 1367. Citations to the docket are indicated by “R.” followed by the docket entry.
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`No. 1:18-cv-04738
`
`Judge Edmond E. Chang
`
`
`)
`
`
`
`LAURA A. MILLER,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`
`Plaintiff,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`v.
`
`
`)
`
`
`
`
`
`
`
`THE FRENCH PASTRY SCHOOL LLC and )
`THE BUTTER BOOK LLC,
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`Defendants.
`
`
`)
`
`
`MEMORANDUM OPINION AND ORDER
`
`This case demonstrates how a failure to hammer out the legal details of a busi-
`
`ness relationship in advance is a recipe for a lawsuit. Based on the murky dealings,
`
`Laura Miller brought this copyright-infringement lawsuit against The French Pastry
`
`School, LLC and The Butter Book, LLC (for convenience’s sake, this Opinion will refer
`
`to the Defendants collectively as Butter Book).1 Miller asserts both federal and state
`
`law claims arising out of Butter Book’s use of Miller’s allegedly proprietary literary
`
`works, which Miller had originally provided to Butter Book. In turn, Butter Book has
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`levelled counterclaims against Miller, challenging Miller’s ownership of the works.
`
`The parties now cross-move for summary judgment. For the reasons discussed in this
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`Opinion, Miller’s motion is denied and Butter Book’s motion is granted in part and
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`denied in part.
`
`
`1This Court has subject matter jurisdiction over the case via federal-question jurisdic-
`tion, 28 U.S.C. § 1331, as well as supplemental jurisdiction over the state law claims under
`28 U.S.C. § 1367. Citations to the docket are indicated by “R.” followed by the docket entry.
`
`
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 2 of 20 PageID #:7725
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`I. Background
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`In deciding cross-motions for summary judgment, the Court views the facts in
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`the light most favorable to the respective non-moving party. See Matsushita Elec.
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`Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). So, when the Court eval-
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`uates Butter Book’s motion, Miller gets the benefit of reasonable inferences; con-
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`versely, when evaluating Miller’s cross-motion, the Court gives Butter Book the ben-
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`efit of the doubt.
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`A. Miller-Butter Book Relationship
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`The French Pastry School is a Chicago-based culinary school offering classes
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`in pastry, baking, and the confectionary arts. DSOF ¶ 7.2 It founded the Butter Book
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`in 2015 to provide guidance and resources to confectionary arts enthusiasts through
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`an online website with various course descriptions, demonstration videos, employee
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`biographies, and articles. Id. ¶¶ 10–19.
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`In 2016, Butter Book entered into an agreement with Miller to prepare content
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`for the website. DSOF ¶ 27. As part of the agreement, the parties signed a Confiden-
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`tiality Agreement under which Miller was to return “[i]mmediately upon request” all
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`confidential information to Butter Book and remove any digitally stored confidential
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`information from any storage devices in her possession or control. Id. ¶ 32; R. 222-12,
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`2Citations to the parties’ Local Rule 56.1 Statements of Fact are identified as follows:
`“DSOF” for Butter Book’s (Defendants’) Statement of Undisputed Facts (R. 221); “PSOAF”
`for Miller’s (Plaintiff’s) Statement of Additional Facts (R. 233); “PSOF” for Miller’s Statement
`of Undisputed Facts (R. 234); “Pl.’s Resp. DSOF” for Miller’s Response to the DSOF (R. 233);
`and “Defs.’ Resp. PSOF” for Butter Book’s response to Miller’s Statement of Additional and
`Undisputed Facts (R. 253).
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`2
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 3 of 20 PageID #:7726
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`Defs.’ Exh. 11, Confidentiality Agreement ¶ 2. The parties dispute whether, under
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`the agreement, Miller would begin by independently writing—or instead merely ed-
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`iting—a set of sample glossary terms for Butter Book. Pl.’s Resp. DSOF ¶ 31; Defs.’
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`Resp. PSOF ¶¶ 8–9. Miller contends that she provided the “voice” for Butter Book’s
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`ideas and any edits that Butter Book gave to her were just technical in nature. PSOF
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`¶¶ 11–21. Butter Book denies this contention and instead asserts they gave Miller
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`more thorough feedback and supervision throughout the project. Defs.’ Resp. PSOF
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`¶¶ 8, 17, 20, 23, 34. In any event, Butter Book paid Miller for her work product. DSOF
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`¶ 37.
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`In August 2016, the parties agreed to additional contract terms in which Miller
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`would work on additional content for the website. DSOF ¶¶ 38–39. The new projects
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`assigned to Miller included a new glossary of terms, “learn pages” (that is, food-sci-
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`ence instructional pages), course and series descriptions, employee biographies, and
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`blog entries (collectively designated as the “Works”). DSOF ¶¶ 40, 42–52. The parties
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`dispute whether Miller independently completed these Works. Defs.’ Resp. PSOF
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`¶¶ 8, 9, 66, 67.
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`The parties also dispute how the Works related—if at all—to Miller’s future
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`employment with Butter Book. For example, Miller alleges that she agreed to the rate
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`of $15.00 per glossary term because Butter Book had told her that the company was
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`considering her for a long-term position that would provide her with “financial free-
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`dom.” Pl.’s Resp. DSOF ¶¶ 39, 40. She argues that she was designated by Butter Book
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`as “Lead Writer and Editor” during the duration and the future of the project. PSOF
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 4 of 20 PageID #:7727
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`¶¶ 50–55. In contrast, Butter Book asserts that it never offered or promised Miller
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`employment. DSOF ¶ 69. The company argues that Miller’s understanding of her em-
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`ployment status was premised solely “on statements by Defendants’ representatives
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`asking for Miller to deliver samples of her work to Defendants, and if Defendants’
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`liked the samples, Defendants would give Miller more work.” DSOF ¶ 61. The defense
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`says that, to the extent that Miller was identified as the lead writer and editor, she
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`was in fact not the lead writer and editor during her completion of the Works, and
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`any correspondence discussing the title actually was just “set[ting] the parameters
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`for what future post-launch roles hoped to be.” Defs.’ Resp. PSOF ¶ 50 (emphasis
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`added).
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`As Miller continued to work, from October 2016 to February 2018, Butter Book
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`paid Miller $45,166.45. DSOF ¶ 56. In February 2018, Butter Book informed Miller
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`that it would pay her an additional $7,000. Id. ¶ 83. But the parties dispute the rea-
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`son for this payment. For its part, Butter Book contends that this payment was made
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`in response to an email from Miller, sent back in November 2017, in which she asked
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`to renegotiate her compensation. Id. ¶¶ 79, 83. In contrast, Miller argues that Butter
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`Book paid the $7,000 as “back pay.” Pl.’s Resp. DSOF ¶ 83.
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`Moving forward two more months, on April 20, 2018, Butter Book requested
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`that Miller turn over all of the Works they had sent her, as well as all of the edits
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`that she had completed or was in the process of completing. DSOF ¶ 85; Pl.’s Resp.
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`DSOF ¶ 85. Miller did not do so. Instead, she eventually sent Butter Book copyright
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`license agreements to cover her edits. PSOF¶ 4; Pl.’s Resp. DSOF ¶ 85. But Butter
`4
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 5 of 20 PageID #:7728
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`Book refused to sign the agreements, DSOF ¶ 92, so Miller filed applications for reg-
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`istration of copyrights with the U.S. Copyright Office for the disputed edits. PSOF
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`¶¶ 5, 68–72. On July 5, 2018, Miller offered to provide Butter Book with the Works if
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`Butter Book agreed that Miller owns the Works, or at least agreed not to reproduce,
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`distribute, publicly display, or otherwise use the Works edited by Miller. PSOF ¶ 7;
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`Defs.’ Resp. PSOF ¶ 7. Butter Book refused the proposal. PSOF ¶ 7.
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`B. Procedural Background
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`With those facts (and disputed facts) as the backdrop, the litigation too reflects
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`the contentious relationship between the parties. As pertinent for the here and now,
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`Miller eventually filed a Third Amended Complaint against the Defendants, seeking
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`declarations that (1) Miller owns copyrights to the Works; (2) Miller did not grant an
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`implied license to the Defendants to use the Works; and (3) unauthorized use by the
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`Defendants of the Works constitutes copyright infringement. R. 179, Third Am.
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`Compl. ¶ 4. Miller further asserted claims for fraudulent inducement, fraudulent con-
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`cealment, and promissory estoppel under Illinois law. Id. ¶ 5. The Defendants re-
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`sponded with counterclaims, alleging breach of contract, breach of a confidentiality
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`agreement, copyright ownership over the Works, conversion, and a request for a dec-
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`laration that the Defendants own an implied license to use the disputed Works.
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`R. 141, Defs.’ Am. Counterclaim.
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`Both parties now cross-move for summary judgment on the implied license and
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`copyright infringement claims. Miller moves for summary judgment on copyright
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`5
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 6 of 20 PageID #:7729
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`ownership and Butter Book moves for summary judgment against Miller’s fraudulent
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`inducement, fraudulent concealment, and promissory estoppel claims.
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`II. Legal Standard
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`Summary judgment must be granted “if the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). A genuine issue of material fact exists if “the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving
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`party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In evaluating sum-
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`mary judgment motions, courts must view the facts and draw reasonable inferences
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`in the light most favorable to the non-moving party. Scott v. Harris, 550 U.S. 372, 378
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`(2007). The Court may not weigh conflicting evidence or make credibility determina-
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`tions, Omnicare, Inc. v. UnitedHealth Grp., Inc., 629 F.3d 697, 704 (7th Cir. 2011),
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`and must consider only evidence that can “be presented in a form that would be ad-
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`missible in evidence.” Fed. R. Civ. P. 56(c)(2). The party seeking summary judgment
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`has the initial burden of showing that there is no genuine dispute and that they are
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`entitled to judgment as a matter of law. Carmichael v. Village of Palatine, 605 F.3d
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`451, 460 (7th Cir. 2010); see also Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986);
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`Wheeler v. Lawson, 539 F.3d 629, 634 (7th Cir. 2008). If this burden is met, the ad-
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`verse party must then “set forth specific facts showing that there is a genuine issue
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`for trial.” Anderson, 477 U.S. at 256.
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`6
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 7 of 20 PageID #:7730
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`III. Analysis
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`A. Implied License (Count 2 and Counterclaim 5)
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`Both parties move for summary judgment on Butter Book’s counterclaim that
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`Miller granted Butter Book an implied license to use her Works. The counterclaim’s
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`converse is Miller’s Count 2, which seeks a declaration that there is no such implied
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`license. Butter Book argues it has an implied license to copy, display, and distribute
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`the Works, R. 220, Defs.’ Br. at 5. Conversely, Miller contends that no reasonable jury
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`could conclude that Miller provided an implied license to Butter Book, and that the
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`counterclaim is “premature” to the extent that it seeks an implied-license declaration
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`for “interim” drafts. R. 232, Pl.’s Br. 5–7. The motion is denied on both sides, because
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`whether Miller granted an implied license to Butter Book is a genuinely disputed
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`question of fact.
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`“An accused infringer can avoid liability for copyright infringement if he or she
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`can prove the existence of an implied non-exclusive license to make use of copyrighted
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`material.” Kay Bros. Enters. V. Parente, 2018 WL 3630155 at *22 (N.D. Ill. July 31,
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`2018) (citing Muhammad-Ali v. Final Call, Inc., 832 F.3d 755, 760 (7th Cir. 2016)).
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`An implied non-exclusive license is granted when “(1) a person (the licensee) requests
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`the creation of a work, (2) the creator (the licensor) makes that particular work and
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`delivers it to the licensee who requested it, and (3) the licensor intends that the licen-
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`see-requestor copy and distribute this work.” I.A.E. v. Shaver, 74 F.3d 768, 776 (7th
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`Cir. 1996). “When the totality of the parties’ conduct indicates an intent to grant such
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`permission, the result is a legal nonexclusive license.” Kay Bros. Enterprises, Inc.
`7
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 8 of 20 PageID #:7731
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`2018 WL 3630155, at *8 (cleaned up).3 “And the relevant intent is the licensor’s ob-
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`jective intent at the time of the creation and delivery of the work.” Id. (cleaned up).
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`An implied license is an affirmative defense to copyright infringement, so But-
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`ter Book bears the burden of proof on it. See Muhammad-Ali, 832 F. 2d at 761. As a
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`threshold matter, Miller argues Butter Book’s motion for summary judgment on their
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`implied license counterclaim is premature because it was pled in the alternative. Pl.’s
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`Br. at 5. Miller cites two district court cases, id. (citing Broussard v. TMR Co., 2013
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`WL 5516462, at *7 (W.D. La. Oct. 1, 2013); West Linn Paper Co. v. Alberta-Pacific
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`Forest Indus., Inc., 2018 WL 5116062, at *5 (D. Ore. Oct. 19, 2018)), but Butter Book
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`correctly points out that both cases are starkly different from this case, see R. 254,
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`Am. Defs.’ Reply at 5. Neither Broussard nor West Linn Paper involve copyright
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`claims or implied-license defenses. In Broussard, an environmental contamina-
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`tion/remediation case, the Court held that, at the summary judgment stage, it was
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`too early to decide comparative fault and reduction of damages because there were
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`several other defendants that might have contributed to liability. Broussard, 2013
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`WL 5516462 at *4, *6. In West Linn Paper, the Court determined genuine disputes of
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`material fact needed to be resolved before a counterclaim for reclamation or stoppage
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`could be granted. West Linn Paper Co., 2018 WL 5116062 at *5. So those two cases
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`simply stand for the proposition that sometimes an alternatively pleaded claim will
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`3This Opinion uses (cleaned up) to indicate that internal quotation marks, alterations,
`and citations have been omitted from quotations. See Jack Metzler, Cleaning Up Quotations,
`18 Journal of Appellate Practice and Process 143 (2017).
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 9 of 20 PageID #:7732
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`not be ready for a decision at the summary judgment stage. But that is not the case
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`here. Here, if indeed Butter Book has an implied license to the Works, then the cop-
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`yright dispute would be over and there would be no need to decide whether Miller
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`owns the copyright in the Works. Alternative claims (or defenses) can render primary
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`claims (or defenses) moot, so there is nothing “premature” about deciding alterna-
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`tively pleaded claims before primary ones. (As it turns out, neither side wins sum-
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`mary judgment on the implied-license defense anyway.)
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`Miller also contends that deciding Butter Book’s implied-license defense now
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`(presumably in Butter Book’s favor) would “result in severe unfairness to [her],” be-
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`cause she has expended time and resources on litigating her copyright-ownership
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`claim. Pl.’s Br. at 5. Again, sometimes that is just the way the litigation ball bounces,
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`but there is no general requirement to decide claims before defenses. It is not as if,
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`for example, a plaintiff can demand that a court decide whether there has been a
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`breach of contract when a statute of limitations defense would defeat the contract
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`claim anyway. Again, as it turns out, Butter Book’s summary judgment motion on
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`the implied-license defense is not a winner, but the Court will not simply skip decid-
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`ing it.
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`Moving to the substance of the implied-license defense, Butter Book argues
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`that there is no genuine issue that Miller granted an implied nonexclusive license in
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`the use of her Works. Defs.’ Br. at 5–9. In support, Butter Book cites to I.A.E., Inc. v.
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`Shaver, 74 F.3d 768 (7th Cir. 1996). In I.A.E., an architect agreed to provide multiple
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`drafts of schematic drawings to a construction company for $10,000 under the
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 10 of 20 PageID #:7733
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`assumption that he would remain staffed on the project. Id. at 771. When the archi-
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`tect realized that he would no longer be involved in the project, he tried to take own-
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`ership of the work by writing, “We trust that our ideas and knowledge exhibited in
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`our work will assist [the company] in realizing a credible and flexible use … facility”.
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`Id. The Seventh Circuit rejected the architect’s too-late attempt to assert rights in
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`the drawings. Id. In particular, I.A.E. relied on the architect’s written permission for
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`the company to use his works and the payment of $10,000 ….” Id. at 775 n.10, 776–
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`77.
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`It is true that there are some similarities between this case and I.A.E. Like the
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`architect in I.A.E., Miller sent several drafts of her Works to Butter Book and was
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`paid for her efforts. DSOF ¶ 37. Also, as in I.A.E., Miller sent the Works to Butter
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`Book without warning Butter Book—until after Butter Book requested the entirety
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`of her works in April 2018—that unauthorized use would infringe her copyrights. Id.
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`¶ 86. Unlike I.A.E., however, Miller did propose (in April and June 2018) copyright
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`licensing agreements for the Works, PSOF ¶ 4, before the parties hammered out any
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`specific ownership or licensing arrangement. Also, unlike in I.A.E., Miller applied for
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`and received U.S. copyright registrations for the Works. Id. ¶ 5. In fact, she did not
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`sign the Content Provider Agreement proposed by Butter Book; instead, Miller coun-
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`ter-offered with her own licensing proposal. Id. ¶¶ 6–7. Miller’s refusal to provide the
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`final version of the Works also adds to the dispute over whether an implied license
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`existed, and if so, what Works it covered.
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`10
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 11 of 20 PageID #:7734
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`Indeed, there is even a genuine dispute over whether Miller actually delivered
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`the Works to Butter Book. Butter Book alleges that the final Works comprise the
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`drafts that Miller submitted. Defs.’ Am. Reply at 2. But Butter Book does not point
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`to examples in the record or comparisons between the work product it received and
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`what Miller asserts are the final copyrighted works. With this gap in evidence, a rea-
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`sonable jury could find against an implied license. For her part, Miller argues that
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`materials in the record demonstrate drastic differences between the interim drafts
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`and final work. R. 255, Pl.’s Reply 3. For support, Miller relies on (1) a 223-page chart
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`comparing the interim and final glossary of terms; (2) a 22-page table comparing the
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`interim and final “Food Lover’s Glossary of Terms”; and (3) an eight-page chart com-
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`paring the interim and final course descriptions. See R. 235-1, 235-2, and 235-3, Mil-
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`ler Decl. Exhs. A–C. But these three exhibits are devoid of Bates numbers, authenti-
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`cating evidence, or foundational citations. When the evidence is viewed in the light
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`most favorable to Butter Book, a reasonable jury could find that there was an implied
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`license. Consequently, neither party provides enough evidence on the delivery of the
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`final Works, thus preventing the entry of summary judgment either for or against the
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`implied license. See I.A.E, 74 F.3d at 776.
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`Miller also argues that, even if she provided an implied license to Butter Book
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`at some point, she later revoked it when she sent Butter Book the proposed licensing
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`agreements and filed this suit. But here too an important fact dispute prevents sum-
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`mary judgment in her favor. Pl.’s Br. at 7–8. It is true that, as a matter of Illinois
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`contract law, a license might very well be revocable (that is, terminable) at will by
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 12 of 20 PageID #:7735
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`either side. Walthal v. Rusk, 172 F.3d 481, 485 (7th Cir. 1999) (holding that copyright
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`licenses of indefinite duration can be terminated at any time by either party). The
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`parties in Walthal entered into a written contract that had no specified term and did
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`not identify the circumstances under which the contract would end. Id. at 482. The
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`Seventh Circuit held that applying Illinois contract law would present no conflict with
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`federal copyright law, so a copyright-license agreement could be terminated at will.
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`Id. at 484.
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`But that does not answer the question in this case. Here, Butter Book contends
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`that it paid for an implied license to use the Works indefinitely. See Defs.’ Br. at 7. If
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`this is true, the license might not be revocable. See Myers v. Harold, 279 F. Supp. 3d
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`778, 796 (N.D. Ill. 2017) (holding that “an implied license is irrevocable if there is
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`consideration” for the license to be irrevocable). As noted earlier, however, the scope
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`of the implied license—if there was a license at all—is not definitively proven by ei-
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`ther side, making summary judgment inappropriate. See Natkin v. Winfrey, 111 F.
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`Supp. 2d 1003, 1012 (N.D. Ill. 2000) (concluding that material issues of fact prevented
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`summary judgment on whether the license to copyrighted photographs was of indef-
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`inite duration). In this case, a reasonable jury could go either way on whether the
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`$45,000 in payments were for interim drafts or the final copyrighted Works. So too
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`with the final $7,000 paid by Butter Book to Miller: viewed in the opposing parties’
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`respective favor, either that money was additional consideration or just “back pay.”
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`Pl.’s Resp. DSOF ¶ 83. Neither side wins summary judgment on the implied license.
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`12
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 13 of 20 PageID #:7736
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`B. Copyright Ownership (Count 1)
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`Next, Miller moves for summary judgment on her claim of ownership over the
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`copyrighted material. Miller argues she is the sole author of the copyrighted Works
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`because (1) Butter Book’s contributions are not copyrightable; (2) Miller was the lead
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`writer and editor of the Works; and (3) the text that Butter Book did provide was not
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`original content. Pl.’s Br. at 18–22. Butter Book argues there are “factual issues re-
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`butting Plaintiff’s copyright ownership and validity.” Defs.’ Am. Reply at 7. That is
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`right: summary judgment is denied on copyright ownership.
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`The Copyright Act provides that “[c]opyright protection subsists ... in original
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`works of authorship fixed in any tangible medium of expression ... from which they
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`can be perceived, reproduced, or otherwise communicated, either directly or with the
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`aid of a machine or device.” 17 U.S.C. § 102(a).
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`The Copyright Act defines a “joint work” as “a work prepared by two or more
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`authors with the intention that their contributions be merged into inseparable or in-
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`terdependent parts of a unitary whole.” 17 U.S.C. § 101. For a joint work, the co-
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`authors hold undivided interests in it, despite any differences in the authors’ contri-
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`butions. 17 U.S.C. § 201. “Each author … has the right to use or license the use of the
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`work, subject to an accounting to the other co-authors for any profits.” Erickson v.
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`Trinity Theatre, Inc., 13 F.3d 1061, 1068 (7th Cir. 1994). Thus, even a contributor
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`whose contribution is relatively minor enjoys full rights to the work if the author is
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`truly a joint author. Erickson, 13 F.3d at 1068.
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 14 of 20 PageID #:7737
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`Miller argues that she is the sole author of the Works because any contribu-
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`tions made by Butter Book are not copyrightable. See Pl.’s Br. at 18–20. To Miller’s
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`thinking, she provided the “voice” for Butter Book’s ideas and Butter Book only pro-
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`vided technical edits. Pl.’s Resp. DSOF ¶¶ 12, 30. Butter Book contends that it gave
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`Miller language from its website and Miller relied on its videos to generate the Learn
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`Pages (the online pages that teach food-science concepts). Defs.’ Resp. PSOF ¶¶ 83,
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`86, 89. Again, there is a genuine dispute of material fact over whether Butter Book’s
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`contributions went beyond general “[i]deas, refinements, and suggestions” sufficient
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`to pass the test of copyrightability. Erickson, 13 F.3d at 1072. If the evidence is viewed
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`in Butter Book’s favor, a reasonable jury could find that Butter Book was a joint au-
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`thor.
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`Miller also asserts that she was the lead editor and writer of the Works, which
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`points toward her sole authorship. It is true that Miller has registered the Works
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`with the Copyright Office, PSOF ¶¶ 68–72, which imbues the Works with a rebuttable
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`presumption of validity. Runstadler Studios, Inc. v. MCM Ltd. Partnership, 768 F.
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`Supp. 1292, 1294–95 (7th Cir. 1991). It is also correct that, contrary to Butter Book’s
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`arguments, Miller may be granted copyright ownership where she “selected, coordi-
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`nated, and arranged in such a way” to render her work original. Feist Publications v.
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`Rural Tel. Serv., 499 U.S. 340, 358 (1991) (cleaned up). Again, however, these legal
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`principles must be applied to facts, and the mere title of lead writer and editor is not
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`dispositive. As explained earlier, Miller’s contention that there is only a 0.98% over-
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`lap between the materials provided to her by Butter Book and the final copyrighted
`14
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 15 of 20 PageID #:7738
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`glossary of terms, Pl.’s Reply at 11 (citing Exh. A), is not fully supported or explained
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`by the offered exhibits. The jury will have to decide whether Butter Book was a joint
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`author of the Works.
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`C. Copyright Infringement (Count 3): Actual Controversy
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`Both parties move for summary judgment on Miller’s claim of copyright in-
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`fringement. Miller argues there is definitive evidence of Butter Book’s infringement.
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`Pl.’s Reply at 15. Butter Book argues that Miller is improperly seeking an advisory
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`opinion because no act of actual or threatened infringement has occurred. Defs.’ Br.
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`at 10. Yet again the motions are denied on both sides.
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`The Copyright Act confers on the owner of a copyright the exclusive rights to
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`reproduce the work, to prepare derivative works based upon it, and to display the
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`copyrighted work publicly. 17 U.S.C. §§ 106(1), (2), (5). In order to prevail on a claim
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`of copyright infringement, a plaintiff must establish: “(1) ownership of a valid copy-
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`right and (2) copying of constituent elements of the work that are original.” Janky v.
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`Lake Cty. Convention and Visitors Bureau, 576 F.3d 356, 361 (7th Cir. 2009) (quoting
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`Feist Publications, 499 U.S. at 361). Put another way, a work is copyrightable if it
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`possesses a “modicum of creativity.” Feist Publications, 499 U.S. at 346.
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`To begin, Butter Book asserts that Miller fails to show that there is “any act of
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`actual or threatened infringement in Count III.” Defs.’ Br. at 10. Butter Book con-
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`tends that no evidence shows that it is currently using, or has threatened to use, the
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`Works. Id. at 11. Given this very litigation, however, it is plain that Butter Book
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`asserts licensing rights—and, indeed, even ownership rights—in the Works. See
`15
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 16 of 20 PageID #:7739
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`MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (explaining that
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`whether an actual controversy exists depends on “whether the facts alleged, under
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`all the circumstances, show that there is a substantial controversy, between parties
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`having adverse legal interests, of sufficient immediacy and reality to warrant the is-
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`suance of a declaratory judgment.” (cleaned up)). Miller asserts, for example, that
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`when she raised the issue of licensing in April 2018, she had not yet provided Butter
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`Book with the copyrighted works, Pl.’s Resp. DSOF ¶ 85; and Butter Book expressed
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`intention to publicly display at least some of the Works on their website, id. ¶ 55.
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`What’s more, even the threat to sue for copyright infringement is a significant fact in
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`considering whether there is “an actual rather than merely a potential controversy.”
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`See Klinger v. Conan Doyle Est., Ltd., 755 F.3d 496, 499 (7th Cir. 2014). Butter Book’s
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`myriad assertions of rights in the Works, whether by license or outright ownership,
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`make it plain that the parties are mired in an actual controversy. The copyright-in-
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`fringement claim is ripe and thus survives.
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`D. Fraudulent Inducement or Concealment (Counts 4 and 5)
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`Butter Book next targets Miller’s fraudulent inducement and fraudulent con-
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`cealment claims. According to Butter Book, no reasonable jury could find that (1)
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`Butter Book knew or attempted to conceal at the time it hired Miller that it would
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`not offer her employment; (2) Butter Book intended to make or conceal statements
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`about this fact so Miller would continue providing services; and (3) Butter Book owed
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`Miller a duty to disclose its ability to employ her and to discuss copyright ownership
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`of the Works with her. Defs.’ Br. at 12–15. In response, Miller asserts that Butter
`16
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 17 of 20 PageID #:7740
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`Book promised her employment and she would not have provided the services at the
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`rates she worked for if this was not true. Pl.’s Br. at 10–14. Even when viewed in
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`Miller’s favor, the record evidence does not support the fraud claims.
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`In order to establish fraudulent inducement, Miller must show that (a) Butter
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`Book made a representation of material fact; (b) Butter Book knew that the represen-
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`tation was false when made; (c) Butter Book had the purpose of inducing Miller to
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`act; and (d) Miller reasonably relied on the representation to her detriment. Lewis v.
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`School Dist. #70, 648 F.3d 484, 487 (7th Cir. 2011). Under Illinois law, fraudulent
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`concealment (as distinct from inducement) “requires a plaintiff to allege that the de-
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`fendant concealed a material fact when he was under a duty to disclose that fact to
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`plaintiff.” Squires-Cannon v. Forest Pres. Dist. of Cook Cnty., 897 F.3d 797, 805 (7th
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`Cir. 2018) (cleaned up). “The duty to disclose only arises in certain situations, includ-
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`ing where the plaintiff and defendant are in a fiduciary or confidential relationship
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`and where plaintiff places trust and confidence in defendant, thereby placing defend-
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`ant in a position of influence and superiority over plaintiff.” Id. (cleaned up).
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`Central to Miller’s claims are Butter Book’s alleged statements—as character-
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`ized in Miller’s Local Rule 56.1 response Statement—that “[Miller] would be hired as
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`a full-time employee,” Pl.’s Resp. DSOF ¶ 61. There are several problems with this
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`argument. First, to the extent that Miller is relying on a promise of future action made
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`by Butter Book—rather than a statement of then-existing fact—generally speaking,
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`“Illinois does not recognize a cause for promissory fraud.” JPMorgan Chase Bank,
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`N.A. v. Asia Pulp & Paper Co., 707 F.3d 853, 865 (7th Cir. 2013).
`17
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`Case: 1:18-cv-04738 Document #: 267 Filed: 11/23/21 Page 18 of 20 PageID #:7741
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`It is true that there is an Illinois-recognized form of fraud for promises if the
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`plaintiff can “allege and then prove that, at the time the promise was made, the de-
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`fendant did not intend to fulfill it.” Wigod v. Wells Fargo Bank, N.A., 673 F.3d 547,
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`570 (7th Cir. 2012) (cleaned up). Typically, a plaintiff relying on this theory would
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`offer “a pattern of fraudulent statements, or one particularly egregious fraudulent
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`statement.” Id (cleaned up). There is no record evidence, however, that Butter Book’s
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`actions were embedded in a larger pattern of deception to trick Miller. Indeed, when
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`it comes down to it, Butter Book actually never promised Miller future employment.
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`DSOF ¶ 69. A careful examination of the record bears this out. Miller cites only state-
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`ments of vague intention and hopes, not any concrete promise of future actions. See
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`R. 222-9, Pl.’s Exh. 8., Miller Dep. 94:15–18 (“Oh, I was told [by Butter Book] during
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`that first meeting that eventually this would be—hopefully turn into a full-time, long-
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`term relationship ….”); 95:2–5 (“In person they talked about being hired full time. In
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`the e-mail they referenced long term relationship in which you could—in which I could
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`utilize pastry background and writing skills.”); 273:3–7: (“But Sebastien said at the
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`end of the meeting in regards to time frame to continue—we discussed continuing to
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`work as a fr
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