Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF MISSISSIPPI
`JACKSON DIVISION
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`MICHAEL MCCULLOUGH
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`PLAINTIFF
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`VS.
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`CIVIL ACTION NO. 3:07CV527TLS-JCS
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`OWENS ENTERPRISES, INC.
`AND JOHN DOES 1-5
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`DEFENDANTS
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`MEMORANDUM OPINION AND ORDER
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`This cause is before the court on motion by plaintiff Michael
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`McCullough for partial summary judgment on the issue of the
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`validity of his copyright, and a separate motion by McCullough for
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`judgment on the pleadings on Counts I, II and IV of the
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`counterclaim brought against him by defendant Owens Enterprises,
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`Inc. (Owens). Owens has responded to the motions and the court,
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`having considered the parties’ submissions, concludes that
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`McCullough’s motion for partial summary judgment on the issue of
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`the validity of his copyright should be granted, but that his
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`motion for judgment on the pleadings on Counts I, II and IV of the
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`counterclaim should be denied.
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`Plaintiff Michael McCullough brought this action for
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`copyright infringement under the Federal Copyright Act, 17 U.S.C.
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`§ 101 et seq., alleging that he holds a registered copyright for
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`the design of a proprietary copyright called the Pony Pal Tire
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`Swing and that defendant Owens Enterprises has infringed his
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`copyright by manufacturing and selling a product with the
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`identical appearance and design features as plaintiff’s Pony Pal
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`Tire Swing. Previously in this cause, Owens moved to dismiss
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`plaintiff’s complaint, arguing that plaintiff’s copyright
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 2 of 11
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`“contains only uncopyrightable subject matter” and is therefore
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`“null and void.” This court denied Owens’ motion, holding that as
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`a matter of law, McCullough’s certificate of copyright
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`registration was prima facie evidence that his copyright is valid,
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`and that while the presumption is rebuttable so that Owens would
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`have the opportunity to challenge its validity, Owens could not
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`properly do so by way of a Rule 12(b)(6) motion to dismiss.
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`McCullough has now moved for partial summary judgment on the
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`validity of his copyright, presenting in support of his motion his
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`certificate of copyright registration.
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`“‘To establish copyright infringement, a plaintiff must prove
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`ownership of a valid copyright and copying of constituent elements
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`of the work that are copyrightable.’” Compaq Computer Corp. v.
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`Ergonome Inc., 387 F.3d 403, 407-408 (5th Cir. 2004) (quoting Eng’g
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`Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1340
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`(5th Cir. 1994)). “Copyright ownership is shown by (1) proof of
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`originality and copyrightability and (2) compliance with the
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`applicable statutory requirements.” Id. Copyright certificates
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`of registration “constitute prima facie evidence of the validity
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`of the copyright[s],” 17 U.S.C. § 410(c), though such
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`“certificates create only a rebuttable presumption that the
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`copyrights are valid. Norma Ribbon & Trimming, Inc. v. Little, 51
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`F.3d 45, 47 (5th Cir. 1995) (citations omitted).
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`By virtue of his duly issued certificate of copyright
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`registration, McCullough enjoys a statutory rebuttable presumption
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 3 of 11
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`under 17 U.S.C. 410(c) that his copyright is valid and
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`enforceable. In that his copyright is prima facie evidence of its
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`validity, then to avoid summary judgment, then to avoid summary
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`judgment, Owens must come forward with some evidence to challenge
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`its validity. It has not done so. Instead, in response to
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`McCullough’s motion, Owens states that McCullough’s motion is
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`premature because Owens has not conducted discovery, and that it
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`is entitled to discovery prior to responding to plaintiff’s
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`motion.
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`Rule 56 does not require that any discovery take place before
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`summary judgment can be granted; if a party cannot adequately
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`defend such a motion, Rule 56(f) provides the remedy. Rule 56(f)
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`states:
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`If a party opposing [a summary-judgment] motion shows by
`affidavit that, for specified reasons, it cannot present
`facts essential to justify its opposition, the court
`may: (1) deny the motion; (2) order a continuance to
`enable affidavits to be obtained, depositions to be
`taken, or other discovery to be undertaken; or (3) issue
`any other just order.
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`Fed. R. Civ. Proc. 56(f). The purpose of this rule is to “allow
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`further discovery to safeguard non-moving parties from summary
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`judgment motions that they cannot adequately oppose.” Culwell v.
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`City of Fort Worth, 468 F.3d 868, 871 (5th Cir. 2006) (citation
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`omitted). The Fifth Circuit has repeatedly admonished that Rule
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`56(f) “may not be invoked by the mere assertion that discovery is
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`incomplete; the opposing party must demonstrate how the [requested
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`discovery or time to provide other summary-judgment evidence] will
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 4 of 11
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`enable him to rebut the movant's allegations of no genuine issue
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`of material fact.” See Dreyer v. Yelverton, 291 Fed. Appx. 571,
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`577-578, 2008 WL 3911072, 5 (5th Cir. 2008) (quoting Leatherman v.
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`Tarrant County Narcotics Intelligence and Coordination Unit, 28
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`F.3d 1388, 1396 (5th Cir. 1994). That is,
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`“[a] non-movant seeking relief under Rule 56(f) must
`show: (1) why he needs additional discovery and (2) how
`that discovery will create a genuine issue of material
`fact.” Adams v. Travelers Indem. Co. of Conn., 465 F.3d
`156, 162 (5th Cir. 2006); Beattie v. Madison County Sch.
`Dist., 254 F.3d 595, 605 (5th Cir. 2001); see also
`Access Telecom, Inc. v. MCI Telecomms. Corp., 197 F.3d
`694, 719 (5th Cir. 1999) (“To obtain a continuance of a
`motion for summary judgment, a party must specifically
`explain both why it is currently unable to present
`evidence creating a genuine issue of material fact and
`how a continuance would enable the party to present such
`evidence.” (citation and internal quotation marks
`omitted)). “A party cannot evade summary judgment
`simply by arguing that additional discovery is needed,
`and may not simply rely on vague assertions that
`additional discovery will produce needed, but
`unspecified facts.” Adams, 465 F.3d at 162 (footnotes
`and internal quotation marks omitted).
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`Dreyer, 291 Fed. Appx. at 577-578, 2008 WL 3911072, at 5.
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`In Owens’ response to plaintiff’s motion, it notes that it
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`has challenged both the originality and copyrightability of
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`plaintiff’s copyright.
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`“Original, as the term is used in copyright, means only
`that the work was independently created by the author
`(as opposed to copied from other works), and that it
`possesses at least some minimal degree of creativity.”
`Feist Publications, Inc. v. Rural Tel. Serv. Co., 499
`U.S. 340, 345, 111 S. Ct. 1282, 1287, 113 L. Ed. 2d 358
`(1991) (citing 1 M. Nimmer & D. Nimmer, Copyright §§
`2.01[A], [B] (1990)). ... “[A] work may be protected by
`copyright even though it is based on ... something
`already in the public domain if the author, through his
`skill and effort, has contributed a distinguishable
`variation from the older works.” Donald v. Zack Meyer's
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 5 of 11
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`T.V. Sales & Serv., 426 F.2d 1027, 1029 (5th Cir. 1970),
`cert. denied, 400 U.S. 992, 91 S. Ct. 459, 27 L. Ed. 2d
`441 (1971). However, a “distinguishable variation” must
`be substantial and not merely trivial. Id. at 1030
`(citing Chamberlin v. Uris Sales Corp., 150 F.2d 512,
`513 (2d Cir. 1945)).
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`Norma Ribbon & Trimming, Inc., 51 F.3d at 47. As for
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`copyrightability, 17 U.S.C. § 102(b) explicitly removes from
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`copyright protection “any idea, procedure, process, system, method
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`of operation ...” and § 101 explicitly excludes those works whose
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`“mechanical or utilitarian” function cannot be separated from the
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`work in which it adheres. See 17 U.S.C. §§ 101 & 102(b). Such
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`articles are only copyrightable to the extent that the creative
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`elements “can be identified separately from, and are capable of
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`existing independently of, the utilitarian aspects of the
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`article.” 17 U.S.C. § 101.
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`Owens notes that McCullough’s certificate of copyright
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`registration states that plaintiff’s Pony Pal Tire Swing design is
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`based on the Pony Tire Swing, and Owens concludes that since there
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`has been no discovery in this case and since neither Owens nor
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`this court has had an opportunity to compare the Pony Pal Tire
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`Swing and Pony Tire Swing to determine the level of variation,
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`then a significant issue of material fact remains as to the
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`originality of the Pony Pal Tire Swing, so that summary judgment
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`at this time would be premature. Likewise, Owens argues that
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`since there has been no discovery, the utilitarian aspects of
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`plaintiff’s Pony Pal Tire Swing have not been examined for
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 6 of 11
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`artistic merit, and for this reason also, summary judgment would
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`be premature.
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`The court recognizes that the parties have not undertaken any
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`discovery in the case, apparently owing to the fact that they were
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`engaged in ongoing settlement negotiations. This, in fact,
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`prompted them to jointly request entry of an amended scheduling
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`order giving the additional time for discovery just days before
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`McCullough filed his motion for partial summary judgment.1
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`Notwithstanding this, however, the court concludes that defendant
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`has failed to make the showing required by Rule 56(f). Again,
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`under Rule 56(f), Owens may not obtain a continuance merely by
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`asserting that discovery is incomplete. Rather, it “must
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`specifically explain both why [it] is currently unable to present
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`evidence creating a genuine issue of material fact and how a
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`continuance would enable [it] to present such evidence.” Access
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`Telecom, Inc. v. MCI Telecomms. Corp., 197 F.3d 694, 719 (5th Cir.
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`1999). Owens declares that there has been no comparison of
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`McCullough’s Pony Pal Tire Swing to the Pony Tire Swing on which
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`McCullough’s design was based; yet Owens has not shown why it has
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`1
`Plaintiff’s argument that “[d]efendant has had the
`opportunity over seven (7) months to develop its discovery
`activities, and more than five (5) months since the first
`scheduling order in which to begin that discovery effort[,] [y]et
`Defendant has sat on its hands and done nothing to move those
`issues forward,” strikes the court as disingenuous, given that
`plaintiff’s own attorney, one week prior to filing the motion for
`partial summary judgment, filed a joint motion to amend the
`scheduling order on October 20, 2008, stating therein that
`unforseen delays in completing settlement discussions had “limited
`the parties’ efforts to pursue pre-trial discovery and motions.”
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 7 of 11
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`not been able to make such a comparison and why a continuance
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`would aid it in that effort, and these matters are not otherwise
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`apparent to the court. Similarly, while Owens declares that the
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`utilitarian aspects of plaintiff’s Pony Pal Tire Swing have not
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`been examined for artistic merit, it has not explained why it has
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`been unable to make or obtain such an examination or how discovery
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`would aid it in this effort, and it is not apparent to the court
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`why Owens could not and/or has not undertaken such an examination.
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`For these reasons, the court concludes that McCullough is entitled
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`to partial summary judgment on the issue of the validity of his
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`copyright.
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`McCullough also seeks judgment on Counts I, II and IV of
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`Owens’ counterclaim, which allege claims of tortious interference
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`with contracts, tortious interference with business relations and
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`negligence, based on a June 16, 2006 letter McCullough sent to
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`Love’s Travel Stops and Country Stores upon learning that Love’s
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`had entered an agreement with Owens to sell its product. In the
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`letter, plaintiff wrote:
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`Recently it has come to my attention that Love’s is
`carrying a swing made by Owen Enterprises out of
`Jackson, MS. This is an exact duplicate of my
`copyrighted product. Mr. Owens has previously been sent
`a cease and desist order. He responded verbally that he
`would make the changes to his product. He has not done
`so and continues to reproduce my swing. I will
`reluctantly now have to follow through with my Lawsuit
`to get him to stop.
` My request to Love’s is to discontinue this product
`in your stores. My position is that Mr. Owen is
`profiting from my long years of work to get my product
`on the market nationwide and is unfairly and illegally
`benefitting using my product.
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 8 of 11
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`Pony Pal will sell to Love’s the original product
`with displays and service your stores nationwide, most
`likely at a lower cost and with a much better display.
`...
` This letter is not intended in anyway to involve
`Love’s in litigation, we are only asking your company to
`do the right thing.
`I am requesting a meeting with your buyer to see if
`we can get your business.
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`In its counterclaim, Owens alleges that after being informed by
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`McCullough that the Owens product infringed McCullough’s
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`copyright, Owens changed the design of the stirrups on his product
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`(which was the aspect of his design to which McCullough had
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`objected). Owens alleges that, notwithstanding that the product
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`being sold through Love’s had the modified stirrup design,
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`McCullough nevertheless contacted Love’s and threatened to sue
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`Love’s for copyright infringement if Love’s did not immediately
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`cease doing business with Owens, and that as a result of
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`McCullough’s threats, Love’s ceased doing business with Owens.
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`Owens alleges that McCullough “knowingly created a frivolous
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`complaint based on an invalid, void and/or inapplicable copyright
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`certificate for the purpose of harassing [Owens] and interfering
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`with [Owens’] business and contractual relations.”
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`Claims of tortious interference with business relations and
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`tortious interference with contract both require proof
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`(1) that the defendant’s acts were intentional and willful;
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`(2) the acts were calculated to cause damage to the plaintiff in
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`his lawful business; (3) the acts were done with the unlawful
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`purpose of causing damage and loss without right or justifiable
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 9 of 11
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`cause on the part of the defendant (which constitutes malice), and
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`(4) actual loss and damage resulted. See Richard v. Supervalu,
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`Inc., 974 So. 2d 944 (Miss. Ct. App. 2008) (tortious interference
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`with business relations); Grice v. FedEx Ground Package System,
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`Inc., 925 So. 2d 907 (Miss. Ct. App. 2006).
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`McCullough has moved for judgment on the pleadings, arguing
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`that Owens cannot establish the third element, malice. McCullough
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`reasons that, as the registered copyright holder, he had the right
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`to take action to protect his intellectual property against
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`infringing products. See 17 U.S.C. § 501 (“The legal or
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`beneficial owner of an exclusive right under a copyright is
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`entitled ... to institute an action for any infringement of that
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`particular right committed while he or she is the owner of it.”).
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`And he concludes that since he rightly believed that his exclusive
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`right to reproduce and distribute copies of his copyrighted work
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`had been violated by Owens, then in so informing Love’s, he did
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`not act without right or justifiable cause, as required for Owens
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`to sustain its tortious interference claims.
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`While the court accepts that McCullough rightly believed he
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`had a valid copyright for his Pony Pal Tire Swing--after all, the
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`court had concluded that plaintiff holds a valid copyright--that
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`belief alone would not foreclose a finding of malice for purposes
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`of Owens’ tortious interference claim, for in addition to
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`believing that he had a valid copyright, McCullough need also have
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`reasonably believed that Owens’ product violated his copyright.
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 10 of 11
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`Viewing Owens’ allegations in the light most favorable to it,
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`Owens has in substance alleged that McCullough knew that Owens’
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`product did not infringe McCullough’s copyright and that
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`therefore, McCullough had no “right or justifiable cause” to
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`assert the contrary to Love’s.
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`Judgment on the pleadings may be granted when the moving
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`party clearly establishes on the face of the pleadings that no
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`material issue of fact remains to be resolved and that the moving
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`party is entitled to judgment as a matter of law. Greenberg v.
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`General Mills Fun Group, Inc., 478 F.2d 254, 256 (5th Cir. 1973).
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`The well-stated allegations of the non-moving party are accepted
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`as true, while any allegations of the moving party which have been
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`denied must be assumed to be false. See Swerdloff v. Miami Nat.
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`Bank, 584 F.2d 54, 57 (5th Cir. 1978); see also Tufaro v. City of
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`New Orleans, 2004 WL 1920937, 4 (E.D. La. 2004). That is,
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`“judgment on the pleadings is appropriate where, even if all
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`allegations of fact of the opposing party are accepted as true,
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`the moving party is nevertheless clearly entitled to judgment as a
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`matter of law.” Sullivan v. Discount Plumbing, 2004 WL 1836760, 1
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`(N.D. Tex. 2004) (citing Hebert Abstract Co., Inc. v. Touchstone
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`Props., Ltd., 914 F.2d 74, 76 (5th Cir. 1990)). Accepting Owens’
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`allegations as true, the court cannot conclude that McCullough is
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`entitled to judgment as a matter of law on Owens’ tortious
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`interference counterclaims.
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`Case 3:07-cv-00527-TSL-JCS Document 32 Filed 02/03/09 Page 11 of 11
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`Owens’ negligence claim appears to be based on the same
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`allegations that provide the basis for its tortious interference
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`claim. In seeking judgment on the pleadings, McCullough argues
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`that he breached no duty to Owens as he had a good faith belief in
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`the validity of his copyright and hence committed no negligent act
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`by attempting to enforce that copyright. The court concludes that
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`McCullough’s motion on this claim must be denied for the same
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`reason the court has concluded the tortious inference claims may
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`not be disposed of via judgment on the pleadings.
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`Based on the foregoing, it is ordered that McCullough’s
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`motion for partial summary judgment is granted. It is further
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`ordered that his motion for judgment on the pleadings is denied.
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`SO ORDERED this 3rd day of February, 2009.
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`/s/ Tom S. Lee
`UNITED STATES DISTRICT JUDGE
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