Case 3:16-cv-00057-JR Document 181 Filed 11/27/21 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF OREGON
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`EVOX PRODUCTIONS LLC, a
`Delaware limited liability company,
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`Plaintiff,
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`v.
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`CHROME DATA SOLUTIONS LP,
`a Delaware company,
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`HERNÁNDEZ, District Judge:
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`Defendant.
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`No. 3:16-cv-00057-JR
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`ORDER
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`Magistrate Judge Russo issued an Amended Findings and Recommendation on March 3,
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`2021 in which she recommends that this Court grant Defendant’s Motion for Summary Judgment
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`[149]. F&R, ECF 170. The matter is now before the Court pursuant to 28 U.S.C. § 636(b)(1)(B)
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`and Federal Rule of Civil Procedure 72(b).
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`1 - ORDER
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`Case 3:16-cv-00057-JR Document 181 Filed 11/27/21 Page 2 of 5
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`Plaintiff filed timely objections to the Magistrate Judge’s Amended Findings and
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`Recommendation. Pl. Obj., ECF 173. When any party objects to any portion of the Magistrate
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`Judge’s Findings & Recommendation, the district court must make a de novo determination of
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`that portion of the Magistrate Judge’s report. 28 U.S.C. § 636(b)(1); Dawson v. Marshall, 561
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`F.3d 930, 932 (9th Cir. 2009); United States v. Reyna-Tapia, 328 F.3d 1114, 1121 (9th Cir.
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`2003) (en banc).
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`Plaintiff raises two objections to the F&R. First, Plaintiff asserts that the Magistrate
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`Judge erred by rejecting Plaintiff’s evidence as to when the relevant sublicenses ended. Pl. Obj.
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`4. Plaintiff contends that any express sublicense agreements ended no later than 2011. Id. at 5.
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`Plaintiff’s First Amended Complaint (“FAC”) stated that Defendant’s right to issue a sublicense
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`expired “on or before September 30, 2013” and “no later than November 30, 2014.” FAC ¶ 21.
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`The Court concludes that the FAC does not definitively assert the sublicense expiration dates and
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`that Judge Russo erred in not considering Plaintiff’s subsequent evidence of when the sublicense
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`agreements ended. The Court finds that in viewing the facts in the light most favorable to
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`Plaintiff, a reasonable jury could find there were no express sublicensing agreements between
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`Plaintiff and Defendant after 2011 as to iPublishers, Potratz Partners Advertising, Inc.
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`(“Potratz”), and Webnet/DealerDNA (“Webnet”)—the three sublicensees implicated in this case.
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`However, the Court adopts Judge Russo’s finding that Plaintiff granted Defendant an
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`implied license by not objecting to Defendant’s reports of its active sublicensees and accepting
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`royalty payments for those sublicenses. F&R 14-15. The Ninth Circuit has recognized that
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`a copyright owner may grant a nonexclusive license to a third party without complying with the
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`strict writing requirements of the Copyright Act. Foad Consulting Grp., Inc. v. Azzalino, 270
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`F.3d 821, 825 (9th Cir. 2001). The license may be granted orally or may be implied from the
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`2 - ORDER
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`Case 3:16-cv-00057-JR Document 181 Filed 11/27/21 Page 3 of 5
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`conduct of the parties. Id. at 826. “[C]onsent given in the form of mere permission or lack of
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`objection is also equivalent to a nonexclusive license and is not required to be in writing.” I.A.E.,
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`Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996) (emphasis added).
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`Plaintiff’s failure to object to either Defendant’s July 2013 email that listed Defendant’s
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`active sublicensees or Defendant’s 2013-2014 monthly reports and royalty payments
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`unequivocally demonstrates the existence of implied sublicense contracts. Based on the parties’
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`course of dealings, the Court finds implied sublicenses through July 2013 as to Potratz, March
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`2014 as to iPublishers, and November 2014 as to Webnet. See F&R 14-15. The Court also adopts
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`the Judge Russo’s finding that, based on the parties’ contractually agreement, the dispositive
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`limitations period for these copyright claims is January 13, 2014 to January 13, 2016.
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`Second, Plaintiff objects to the Magistrate Judge’s conclusion that no reasonable jury
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`could find Defendant liable for secondary copyright infringement during the dispositive time
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`periods. Pl. Obj. 17. As to iPublishers, Judge Russo found that even if a reasonable jury could
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`find direct infringement, Plaintiff failed to meet its burden regarding the remaining elements of
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`its secondary liability claims. F&R 18. The Court concludes that, as to iPublishers, Plaintiff has
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`not put forth any evidence of direct infringement. Plaintiff advances a public display theory of
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`copyright infringement but provides no evidence that iPublishers publicly displayed its works.
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`The email chain between Defendant and iPublishers on which Plaintiff relies only demonstrates
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`that iPublishers had access to Defendant’s server that contained the Plaintiff’s photographs. It
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`does not constitute evidence that iPublishers publicly displayed the photographs. Thus, because
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`no reasonable jury could find direct infringement on the part of iPublishers, Defendant cannot be
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`liable for secondary copyright infringement.
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`3 - ORDER
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`Case 3:16-cv-00057-JR Document 181 Filed 11/27/21 Page 4 of 5
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`As to Potratz, the Court adopts the Magistrate Judge’s finding that Plaintiff has presented
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`no evidence of direct infringement within the relevant time period. Judge Russo noted that the
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`declarations of Plaintiff’s witnesses, Michael del Monte and Barry Thompson, do not establish
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`that Potratz displayed Plaintiff’s copyrighted material. F&R 21. While the Court agrees, it also
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`asked the parties for supplemental briefing on whether the testimony of del Monte and
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`Thompson is admissible under Rule 1002 of the Federal Rules of Evidence.
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`Under Fed. R. Evid. 1002-1004, a party must produce an original or duplicate of a
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`photograph if the party is trying to “prove its content,” unless the original/duplicate has been lost
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`or destroyed through no fault of the proponent. Seiler v. Lucasfilm, Ltd., 808 F.2d 1316, 1319
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`(9th Cir. 1986). After reviewing the parties’ briefs, the Court concludes that the best-evidence
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`rules applies. In order to show direct infringement, Del Monte and Thompson will necessarily
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`have to try to prove the content of images they saw on Potratz’s server because they will have to
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`testify about how they were able to identify them as Plaintiff’s protected works. “When the
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`contents of a [picture] are at issue, oral testimony as to the [content of the picture] is subject to a
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`greater risk of error than oral testimony as to events or other situations. The human memory is
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`not often capable of reciting the precise [content of a picture], and when the [contents] are in
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`dispute only the [picture] itself, or a true copy, provides reliable evidence.” Seiler v. Lucasfilm,
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`Ltd., 808 F.2d 1316, 1319 (9th Cir. 1986); see also Fed. R. Evid. 1002 advisory committee’s note
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`(“[S]ituations arise in which contents are sought to be proved. Copyright, defamation, and
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`invasion of privacy by photograph or motion picture falls in this category.”). Because direct
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`copyright infringement requires evidence of both the copyrighted work and of the allegedly
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`infringing work, Plaintiff cannot use the testimony of Del Monte and Thompson to prove the
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`content of the images they purportedly saw on Potratz’s server.
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`4 - ORDER
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`Case 3:16-cv-00057-JR Document 181 Filed 11/27/21 Page 5 of 5
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`As to Webnet, the Court adopts the Magistrate’s finding that there is no evidence that
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`Defendant knew of, induced, or encouraged Webnet’s purported direct copyright infringement
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`during the relevant time period.
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`The Court has also reviewed the pertinent portions of the record de novo and finds no
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`other errors in the Magistrate Judge’s Findings & Recommendation.
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`CONCLUSION
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`The Court ADOPTS in part Magistrate Judge Russo’s Findings and Recommendation
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`[170]. Defendant’s Motion for Summary Judgment [149] is GRANTED.
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`IT IS SO ORDERED.
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`November 27, 2021
`DATED: _______________________.
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` ___________________________
`MARCO A. HERNÁNDEZ
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`United States District Judge
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`5 - ORDER
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