throbber
Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 1 of 28
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF WYOMING
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`MOTAMOA HOLDINGS LIMITED,
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`vs.
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`Plaintiff,
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` FILED
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`1:00 pm, 2/16/23
`
` Margaret Botkins
` Clerk of Court
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`
`
`
` Case No. 21-CV-198-NDF
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`VL MEDIA LLC, ILYA
`SHEVCHENKO, and VITALII SOSKOV,
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`
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`Defendants.
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`
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`ORDER GRANTING IN PART MOTION FOR DEFAULT JUDGMENT
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`The Clerk entered default against Defendant VL Media LLC (“VL Media” or
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`“Magicbird”) on January 14, 2022 after the Defendant was served and failed to answer or
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`otherwise defend against the Complaint by Plaintiff Motamoa Holdings Limited
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`(“Motamoa” or “Metalbird”). ECF 11. The Plaintiff now moves for default judgment
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`against VL Media under Federal Rule of Civil Procedure 55(b)(2).1 ECF 34. For the
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`reasons below, the motion is GRANTED in part.
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`I.
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`
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`Background Facts
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`The Court takes the following facts from Plaintiff’s complaint, ECF 1.
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`a.
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`Facts Regarding Plaintiff Motamoa
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`1 This motion does not seek default judgment against Vitalii Soskov or Ilya Shevchenko who are also defendants in
`this case. For purposes of this Order, “Defendant” refers only to VL Media.
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`

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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 2 of 28
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`
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`Plaintiff Motamoa is a New Zealand limited company with its principal place of
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`business in New Zealand. Since 2009, Plaintiff Motamoa, doing business as Metalbird
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`under the Metalbird trademark, (“METALBIRD Mark”), has sold lifelike two-dimensional
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`metal silhouette sculptures of birds that can be affixed to a post or tree by hammering-in
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`part of the sculpture itself. Motamoa has invested substantial time and effort in creating
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`and protecting these unique handcrafted designs. As a result, these proprietary designs are
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`recognizable and identify Metalbird as the source of these distinctive designs.
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`
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`Since 2016, Metalbird has generated substantial revenue and product sales in the
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`United States, which support that the Metalbird name is distinctive in the marketplace.
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`Moreover, customers associated with the products indicate Metalbird as the source. The
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`extensive use and advertising of the METALBIRD Mark has resulted in public recognition
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`that Metalbird is the source of well-known and high-quality artwork and retail services.
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`
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`Plaintiff maintains
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`internet websites at domain names
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`incorporating
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`its
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`METALBIRD Mark. The domain name www.metalbird.com ("Metalbird Website") was
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`originally registered in 2004 and has been owned by Metalbird and its licensees and
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`predecessors since 2016. The Metalbird Website currently offers the following beautifully
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`crafted works of art and sculptures (among others): Hummingbird, Cardinal, Chickadees
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`& Chicks, Bird Feeder, Hummingbird Honeys, Great Horned Owl, Kissing Cardinals,
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`Woodpecker, Bald Eagle, Pair of Swallows, House Finch, Chickadee, Blue Jay, Nuthatch,
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`Wren, Road Runner, Peregrine Falcon, Crow, Pelican, Mockingbird, Belted Kingfisher,
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`Puffin, Fantail, Bat and Turkey (“Metalbird Works of Art”).
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`2
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 3 of 28
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`Metalbird's social media accounts prominently feature the Metalbird brand. To
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`distinguish itself from its Metalbird locations outside of the United States, Metalbird uses
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`the designation Metalbird USA on its primary social media accounts.
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`On or around November 2019, Glass Elephant, Metalbird's digital ad agency, and
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`Vitalii Soskov helped create a video for Metalbird that prominently featured the Metalbird
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`name and was used to showcase and promote Metalbird and its products to the United
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`States marketplace ("Metalbird Hero Ad"). The Metalbird Hero Ad is wholly original and
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`owned exclusively by Metalbird.
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`Metalbird uses the METALBIRD Mark and designs in advertising, marketing, and
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`promotional materials on a nationwide basis through various media, including but not
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`limited to, the internet, print, radio, tradeshows, PR, transit media and influencer
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`marketing. The success of Metalbird's Works of Art is due, in part, to the extensive
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`promotion and advertising it has undertaken for the METALBIRD Mark and designs.
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`Metalbird annually spends in excess of several million United States dollars on advertising,
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`marketing and promotional efforts for the METALBIRD Mark and designs. The
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`METALBIRD Mark and designs are assets of incalculable value and identifiers of
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`Metalbird's goods and services, and goodwill.
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`
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`The Metalbird Works of Art and the Metalbird Website, which is a compilation, are
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`wholly original. In 2021, Motamoa applied for, and was granted, copyright registrations
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`for the Metalbird Website and certain Metalbird Works of Art.
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`3
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 4 of 28
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`b.
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`Facts Regarding Defendant VL Media
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`
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`Vitalii Soskov is a Russian citizen that previously resided in New Zealand and is
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`believed to reside in Turkey. Beginning in September 2019 until sometime in March 2021,
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`Soskov worked for Glass Elephant, a digital ad agency based in New Zealand. As part of
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`his job responsibilities, Soskov was the creative lead and managed all digital advertising
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`for Metalbird, including creating and designing ads, and their placement. Soskov left his
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`position at Glass Elephant in March 2021.
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`
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`Ilya Shevchenko claims to own VL Media, which does business as Magicbird, and
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`resides in Auckland, New Zealand. Soskov and Shevchenko manage and direct VL
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`Media’s conduct at issue in this case.
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`
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`On March 18, 2021, the entity VL Media LLC was organized with the State of
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`Wyoming and has an address in Sheridan, Wyoming. The State of Wyoming records do
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`not identify any of the LLC members.
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`On or around August 2021, Defendant launched the Magicbird e-commerce website
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`offering for sale bird silhouettes and works of art (“Magicbird Website”). Defendant sells
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`the bird silhouettes to customers in the United States and around the world and the
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`Magicbird Website allows customers to select their language and currency, such as United
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`States dollars.
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`Magicbird’s website currently offers multiple designs and works of art, including
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`but not limited to, Hummingbird, Pair of Robins, Pair of Swallows, Pair of Sparrows, Blue
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`Tit, Crested Tit, Blackbird, Nuthatch, European Robin, Eagle, and Woodpecker.
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`4
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 5 of 28
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`
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`On or around September or October 2021, Defendant launched a Facebook video
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`that copied several core elements of Plaintiff’s Metalbird Hero Ad. Metalbird did not
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`authorize or license to Magicbird use of the Metalbird Hero Ad.
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`On or around October 2021, Defendant launched a Facebook ad and video that
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`included a child holding Plaintiff’s package that prominently featured METALBIRD
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`Mark. As part of the advertisement, Magicbird added the comment “Opening a Magicbird
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`box is an experience for the whole family!” Defendant subsequently removed the
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`infringing ad from Facebook after discussions with Metalbird.
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`Defendant had actual knowledge of Metalbird's use and prior rights because Soskov
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`had direct responsibility for Metalbird's digital advertising creation and strategy.
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`Defendant has had actual notice of Metalbird's claims and rights since mid-October 2021
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`and continued with their infringing conduct since that date.
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`II.
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`Analysis
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`A.
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`Subject-Matter and Personal Jurisdiction
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`The Court must have both personal and subject matter jurisdiction to enter a valid
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`judgment. See Williams v. Life Savings and Loan, 802 F.2d 1200, 1202-03 (10th Cir.
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`1986). The Court has federal question subject matter jurisdiction over Plaintiff’s claims
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`for copyright infringement under 17 U.S.C § 101 et seq. and claims for trademark
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`infringement and unfair competition under the Lanham Act 15 U.S.C. § 1125. See
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`28 U.S.C. § 1331. The Court has supplemental jurisdiction over Plaintiff’s claim of unfair
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`competition under Wyoming common law. See 28 U.S.C. § 1367.
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`5
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 6 of 28
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`Plaintiff Motamoa alleges that Defendant VL Media is a Wyoming limited liability
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`company with its principal place of business at 30 N Gould St. Ste R, Sheridan, Wyoming
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`82801. ECF 1, ¶4. For corporations, “the place of incorporation and principal place of
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`business are ‘paradig[m]. . . bases for general jurisdiction.’” Daimler AG v. Bauman,
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`571 U.S. 117, 137 (2014) (citation omitted). “Courts have held that Daimler applies with
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`equal force to limited liability companies.” Warming Trends, LLC v. Flame Designz, LLC,
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`No. 22-cv-00252-PAB-STV, 2023 U.S. Dist. LEXIS 7764, at *10 (D. Colo. Jan. 17, 2023)
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`(quoting Bliss v. Change Healthcare Operations LLC, 2021 U.S. Dist. LEXIS 33412, 2021
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`WL 706770, at *1 (W.D. Okla. Feb. 23, 2021) (collecting cases)). Chief Judge Skavdahl’s
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`thorough analysis in Avus Designs, Inc. v. Grezxx, LLC, explains that, even though LLCs
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`are citizens of their members’ states for purposes of diversity jurisdiction, they are citizens
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`of their incorporation states for purposes of general personal jurisdiction. Avus Designs,
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`Inc., v. Grezxx, LLC, No. 22-CV-0173-SWS, 2022 U.S. Dist. LEXIS 218066, at *19
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`(D. Wyo. Dec 2, 2022). Thus, the Court has general personal jurisdiction over VL Media
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`because it is a Wyoming LLC with a primary place of business in Wyoming. See Daimler,
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`571 U.S. at 137; Warming Trends, LLC, 2023 U.S. Dist. LEXIS 7764, at *10.
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`
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`Personal jurisdiction also requires proper service of the Defendant. Okla. Radio
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`Assocs. v. Fed. Deposit Ins. Corp., 969 F.2d 940, 943 (10th Cir. 1992). Federal Rule of
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`Civil Procedure 4(h) provides that service on a corporation, partnership, or association is
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`adequate if effected “by delivering a copy of the summons and of the complaint to an
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`officer, a managing or general agent, or any other agent authorized by appointment or by
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`law to receive service of process.” Fed. R. Civ. P. 4(h)(1)(B). Here, the Complaint and
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`6
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 7 of 28
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`summons were delivered to Registered Agents Inc. at 30 N. Gould St., Sheridan, WY on
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`11/2/21. ECF 5. According to the Wyoming Secretary of State, Registered Agents Inc. is
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`VL Media’s registered agent. The Court therefore finds service of process was appropriate.
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`B.
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`Legal Standards for Default Judgment
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`According to Federal Rule of Civil Procedure 55(a), before obtaining a default
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`judgment, the party seeking relief must show by affidavit or otherwise prove that the party
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`against whom judgment is sought failed to plead or defend against the party’s complaint.
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`Cunningham v. Technologic United States, No. 19-CV-00231-F, 2020 U.S. Dist. LEXIS
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`257373, at *4 (D. Wyo. June 17, 2020). If the party meets these criteria, “the clerk must
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`enter the party’s default.” Id. The Clerk entered default against VL Media on January 14,
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`2022 on Plaintiff’s motion. ECF 10, 11.
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`Once default is entered in accordance with Rule 55, the party is free to seek a default
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`judgment. Fed. R. Civ. P. 55(b). The Clerk of the Court is responsible for entering a
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`default judgment. Id. The Clerk must enter a default judgment “if the Plaintiff’s claim is
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`for a sum certain or a sum that can be made certain by computation” in the amount verified
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`by the Plaintiff as long as “defendant who has been defaulted for not appearing . . . is
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`neither a minor nor an incompetent person.” Fed. R. Civ. P. 55(b)(1). If a party is unable
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`to prove the certainty of the sum of their claim pursuant to Rule 55(b)(1), the party must
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`file a motion with the court requesting a default judgment. Fed. R. Civ. P. 55(b)(2).
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`Furthermore, “the court may conduct hearings or make referrals…when, to enter or
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`effectuate judgment, it needs to: (A) conduct an accounting; (B) determine the amount of
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`damages; (C) establish the truth of any allegation by evidence; or (D) investigate any other
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`7
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 8 of 28
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`matter.” Id. Nonetheless, “decisions to enter judgment by default are committed to the
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`district court’s sound discretion.” Dennis Garberg & Assocs. v. Pack-Tech Int'l Corp., 115
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`F.3d 767, 771 (10th Cir. 1997). “[A] court may enter a default judgment without a hearing
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`only if the amount claimed is a liquidated sum or one capable of mathematical calculation.”
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`Hunt v. Inter-Globe Energy, Inc., 770 F.2d 145, 148 (10th Cir. 1985).
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`
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`In this case, Plaintiff seeks default judgment on its copyright claim and trademark
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`claim. Plaintiff seeks injunction under the copyright and trademark claims, but only seeks
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`damages on the copyright claims. ECF 34-1, pp. 9, 11-14. Plaintiff seeks statutory
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`damages under copyright law which are an amount capable of mathematical calculation.
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`ECF 34 ¶ 8.C. Plaintiff seeks default judgment for unfair competition under Wyoming
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`common law, ECF 34 ¶ 8.A., but does not support that portion of the motion with argument
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`and does not request a remedy under that claim.
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`“Upon the entry of default against a defendant, the well-pleaded allegations in the
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`complaint are deemed admitted.” Richfield Hosp., Inc. v. Shubh Hotels Detroit, LLC, No.
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`10-CV-00526-PAB-MJW, 2011 WL 3799031 (D. Colo. Aug. 26, 2011); see Olcott v.
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`Delaware Flood Co., 327 F.3d 1115, 1125 (10th Cir. 2003). “It remains for the court to
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`consider whether the unchallenged facts constitute a legitimate cause of action, since a
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`party in default does not admit mere conclusions of law.” Bixler v. Foster, 596 F.3d 751,
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`762 (10th Cir. 2010) (citing 10A Charles A. Wright, Arthur R. Miller & Mary K. Kane,
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`Federal Practice and Procedure § 2688, at 63 (3d ed. 1998); Nishimatsu Constr. Co., 515
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`F.2d 1200, 1206-08 (5th Cir. 1975) (vacating district court's entry of default judgment
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`because the pleadings were insufficient to support the judgment)). Plaintiff’s factual
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`8
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 9 of 28
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`allegations in this case are deemed admitted by Defendant based on the entry of default
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`and must be accepted as true.
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`C.
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`1.
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`Plaintiff’s Count I for Copyright Infringement under 17 U.S.C. § 101 et seq.
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`Copyright Liability
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`Count I alleges copyright infringement under 17 U.S.C. § 101 et seq. ECF 1, ¶ 84.
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`To establish copyright infringement, “two elements must be proven: (1) ownership of a
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`valid copyright, and (2) copying of constituent elements of the work that are original.”
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`Blehm v. Jacobs, 702 F.3d 1193, 1199 (10th Cir. 2012).
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`Often, Plaintiffs satisfy the ownership element by producing a certificate of
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`registration from the copyright office. Craft Smith, Ltd. Liab. Co. v. EC Design, Ltd. Liab.
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`Co., 969 F.3d 1092, 1099 (10th Cir. 2020) (citing Jacobsen v. Deseret Book Co., 287 F.3d
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`936, 942 (10th Cir. 2002) (finding the first element satisfied by a "federally registered
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`copyright" in the accused work)). See also 17 U.S.C. § 410(c) (“[i]n any judicial
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`proceedings the certificate of a registration . . . shall constitute prima facie evidence of the
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`validity of the copyright and of the facts stated in the certificate”).
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`Plaintiff provided the following certificates of registration that satisfy the copyright
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`ownership element:
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`VA 2-256-057
`VA 2-256-058
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`Kissing Cardinals: sculpture
`Valentine’s Day Kissing Cardinals: 2-D artwork,
`compilation of sculpture and photograph
`Hummingbird: sculpture
`VA 2-259-964
`Woodpecker: sculpture
`VA 2-272-087
`Blue Tit: sculpture
`VA 2-272-089
`Pair of Swallows: sculpture
`VA 2-272-090
`VAu 1-434-775 Metalbird Website: Photographs, 2-D artwork, new text,
`and compilation of text, photographs and graphics.
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`9
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 10 of 28
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`ECF 1-6. Plaintiff does not provide proof of copyright registration for the
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`“Metalbird Hero Ad” or otherwise argue that the first copyright element is satisfied
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`regarding the ad. ECF 1-6; ECF 34.
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`The second element, copying of constituent elements of the work that are original,
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`is itself comprised of two components. First, the plaintiff must demonstrate factual
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`copying. Craft Smith, Ltd. Liab. Co., 969 F.3d at 1101 (10th Cir. 2020) (citing Savant
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`Homes, Inc. v. Collins, 809 F.3d 1133, 1138 (10th Cir. 2016)). The alleged facts easily
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`establish the first component, factual copying, as Soskov, Plaintiff’s former web designer
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`is one of the parties alleged to have started VL Media to sell sculptures that resemble
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`Plaintiff’s sculptures.
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`However, “the mere fact that a work is copyrighted does not mean that every
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`element of the work may be protected.” Blehm, 702 F.3d at 1196. The second component
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`of the copying element requires the showing “substantial similarity between the allegedly
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`infringing work and the elements of the copyrighted work that are legally protected.”
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`Blehm, 702 F.3d at 1199. The Court first distills out the protected elements from the
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`unprotected elements and then considers whether any of the protected elements are
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`substantially similar to the accused work. See Savant Homes, 809 F.3d at 1138 (citing
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`Blehm, 702 F.3d at 1200). “[I]n looking at . . . two works of art to determine whether they
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`are substantially similar, focus must be on the similarity of the expression of an idea or
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`fact, not on the similarity of the facts, ideas or concepts themselves. Blehm, 702 F.3d at
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`1200 (10th Cir. 2012) (quoting Rogers v. Koons, 960 F.2d 301, 308 (2d Cir. 1992));
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`10
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 11 of 28
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`Jacobsen, 287 F.3d at 942. The ultimate question is whether an “ordinary reasonable
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`person would conclude that the defendant unlawfully appropriated the plaintiff's
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`protectable expression by taking material of substance and value.” Blehm, 702 F.3d at
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`1202 (10th Cir. 2012) (cleaned up) (citing Country Kids, 77 F.3d at 1288).
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`“In no case does copyright protection. . . extend to any idea, procedure, process,
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`system, method of operation, concept, principle, or discovery, regardless of the form in
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`which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C.
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`§ 102(b). Applying this principle to the sculptures at issue, the concept or idea of a two-
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`dimensional metal bird silhouettes is not protectable. Moreover, the functional aspect of
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`the sculpture, that the sculpture may be hammered into a tree or post for display, is similarly
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`not protectable. See Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
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`(explaining that pictorial, graphic or sculptural work is protectable to the extent it can be
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`“imagined separately” from the useful aspect of the article).
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`Turning next to the subjects of the sculptures, courts in this circuit have followed
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`the holding Ninth Circuit’s holding in Satava v. Lowry that a copyright holder "may not
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`prevent others from copying aspects of his [realistic wildlife] sculptures resulting from
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`either [the animal's]-physiology or from [the animal's] depiction in the [particular artistic]
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`medium." 323 F.3d 805, 810 (9th Cir. 2003); see Sportsmans Warehouse, Inc. v. Fair, 576
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`F. Supp. 2d 1175, 1180-81 (D. Colo. 2008) (“[a]n accurate portrayal of something that
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`exists in the world . . . cannot be copyrighted but original expressions of those facts and
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`ideas receive ‘thin’ copyright protection, perhaps only from exact duplication by others”)
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`(holding that realistic sculptures of elk enjoyed thin copyright protection from exact
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 12 of 28
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`duplication, but not a “monopoly on portraying subjects that occur in nature or aspects of
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`animals that naturally result from their physiology, behavior, or environment”); see also
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`Tomelleri v. Zazzle, Inc., No. 13-CV-02576-EFM-TJJ, 2015 U.S. Dist. LEXIS 165007, at
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`*32 (D. Kan. Dec. 9, 2015) (silhouettes and line drawings did not violate “thin” protections
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`for meticulously-realistic illustrations of fish because overlaying the silhouettes and line
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`drawing on the Plaintiff’s realistic illustrations demonstrated that any copying by the
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`defendant was not exact).
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`Plaintiff’s sculptures are lifelike two-dimensional metal silhouettes of realistic birds
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`posing on branches that can be affixed to a post or tree by hammering-in part of the
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`sculpture to a tree or post. The sculptures utilize cut-outs to outline the bird’s general
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`features. The Court finds that Plaintiff’s sculptures are akin to the Sportsman’s Warehouse
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`elk sculptures and Tomelleri fish illustrations. The selection of birds, their poses, and their
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`features are aspects of realistic portrayals of animals in natural settings that are entitled
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`only to thin copyright protection from exact copy. Similarly, the cut-outs used to highlight
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`each bird’s features are also entitled to only thin protection because, although there is
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`perhaps greater abstraction and artistry required in designing the cutouts, they ultimately
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`serve to outline the birds’ realistic features.
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`The Court finds that Plaintiff cannot establish copyright infringement for Kissing
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`Cardinals, Valentine’s Day Kissing Cardinals¸ Woodpecker, or Blue Tit. These sculptures,
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`like the majority of Defendant’s sculptures, are not exact copies of Plaintiff’s copyrighted
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`works and thus do not violate the thin copyright protection against exact copy that is
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`afforded realistic sculptures of natural subjects. Even where Defendant has chosen the
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 13 of 28
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`same species as Plaintiff’s copyrighted works, Defendant generally uses obviously
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`different poses and different artistic cut-outs to highlight the birds’ features.
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`However, the Court finds that Plaintiff can establish infringement for two
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`copyrighted bird sculptures. Plaintiff’s complaint includes pictures showing that the
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`hummingbird used by Defendant as part of its Magicbird logo is substantially similar to
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`Plaintiff’s copyrighted Hummingbird sculpture registered at VA 2-259-964. The pose and
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`silhouette appear identical, as do the detailed cutouts under the neck, the belly, and the tail.
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`The cutouts of the wings show only a small difference in shape and are perhaps the only
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`portion not exactly copied from Plaintiff’s Hummingbird:
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`Meialbird Hummi•&l>lrd
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`Magicblrd Ru••iD&binl
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`
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`ECF 1, p 31. The overlay of Plaintiff’s hummingbird over Defendant’s logo demonstrates
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`that the images are near exact duplicates except upon the closest inspection. And since
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`copyright protections extend to the creation of derivative art, it makes no difference that
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`Plaintiff’s image is a two-dimensional sculpture while Defendant’s is a two-dimensional
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`logo. See Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1198-99 (10th Cir.
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`2005); 17 U.S.C. §106. Even considering the thin copyright protection available for
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`realistic sculptures, an ordinary reasonable person could conclude that the Defendant
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 14 of 28
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`unlawfully appropriated the plaintiff's protectable expression in Hummingbird. See Blehm,
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`702 F.3d at 1202 (10th Cir. 2012).
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`Plaintiff also includes examples of its copyrighted work Pair of Swallows and the
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`purported copy by Defendant. Accounting for the slightly different perspective of the
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`photographs, the taller bird in each sculpture is nearly identical, except that the vertical
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`median line demarking the swallow’s wing extends higher on Plaintiff’s sculpture and there
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`is a small additional cutout in the tail of Defendant’s sculpture. The pose and silhouette
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`appear identical as do the cutouts on the neck, wingtips, and tail. Defendant’s version adds
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`an additional cutout in the tail.
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`Mttalblrd's Origlllal Works & Distinctive
`Des
`,
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`Pair of Swallows
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`Maglcbird's Infringing Works &
`lnfrin in Ima ••
`Pair of Swallows
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`
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`ECF 1, p. 23. The appearance of the photos in Plaintiff’s brief makes it look like Plaintiff’s
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`sculpture is substantially shorter than Defendant’s, but this reasonably appears to be an
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`illusion of perspective or a result of an error maintaining proportions when drafting the
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`complaint. Another photo from Plaintiff’s website shows the Plaintiff’s Pair of Swallows
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`14
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`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 15 of 28
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`with perspective and proportions that highlight the similarity of Defendant’s sculpture,
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`although this view is from the opposite side:
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`
`ECF 1-1, p. 3. As with Hummingbird, an ordinary reasonable person could conclude that
`
`Defendant copied the protectable expressive elements of Plaintiff’s sculpture.
`
`
`
`Plaintiff also seeks default judgment on infringement of the Metalbird Website. The
`
`registered copyright includes photographs, two-dimensional artwork, new text, and
`
`compilation of text, photographs, and graphics. ECF 1-6. The Plaintiff’s and Defendant’s
`
`websites share generally similar layouts, color schemes, and overall structure, but in large
`
`part the Defendant’s website shows meaningful variation from Plaintiff’s website. For
`
`instance, the photos and product descriptions are all different. However, the Court finds
`
`that some of the text and graphics on Defendant’s website support a finding of copyright
`
`infringement. Plaintiff alleges that the Metalbird Website contains the following phrase:
`
`With the simple tap of a hammer, this beautifully crafted, iconic, life-like bird
`silhouette will transform your backyard, garden or environment into a work of art
`and put smiles on faces for years to come.
`
`ECF 1, ¶ 27.
`
`The complaint then alleges that Defendant’s website includes the following phrase:
`
`15
`
`

`

`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 16 of 28
`
`With the simple tap of a hammer Magicbird has the ability to instantly transform
`your backyard, garden or environment into a small work of art, a beautiful focal
`point to enjoy for many years to come, and an interesting topic for discussion at
`your next get together.
`
`ECF 1. ¶ 56. Additionally, Plaintiff’s website includes the following installation
`
`instruction text and graphics:
`
`ERSY TO IISTRll
`
`lhe,.,r,ct.-toryow
`gr.b. nannllll'_, tip
`
`•pnt. .... '!lffor
`iwOQd
`
`m, - -
`
`. . tlcr-•Oht'llngie,calD11 Yeit-.t:ti.tl'lllt;
`
`9'llflly
`
`ECF 1-1, p. 4. While Defendant’s website and packaging include:
`
`HOW TO INST All
`
`16
`
`

`

`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 17 of 28
`
`ECF 1-8, pg. 33. Although there are differences, these excerpts are at least as similar as
`
`the competing passages in Jacobsen, 287 F.3d at 945 n.7 (10th Cir. 2002). In that case the
`
`Tenth Circuit found it plausible that a historical account infringed on the Plaintiff’s
`
`autobiography when both described the same factual events using a few of the same words
`
`and phrases. Id.
`
`
`
`For the reasons above, the Court finds that Plaintiff’s complaint establishes that
`
`Defendant infringed on Plaintiff’s copyright of Pair of Swallows, Hummingbird, and the
`
`Metalbird Website.
`
`2.
`
`Copyright Damages
`
`
`
`Plaintiff seeks the maximum statutory damages for willful copyright infringement.
`
`ECF 34-1, p. 11. The Copyright Act provides a range of statutory damages for each
`
`infringed work “in a sum of not less than $750 or more than $30,000 as the court considers
`
`just.” 17 U.S.C. § 504(c)(1); see DP Creations, Ltd. Liab. Co. v. Lyn, No. 2:22-cv-00200-
`
`BSJ, 2022 U.S. Dist. LEXIS 229314, at *5 (D. Utah Dec. 20, 2022). See Walt Disney Co.
`
`v. Powell, 897 F.2d 565, 569, 283 U.S. App. D.C. 111 (D.C. Cir. 1990) (“[a] single
`
`infringer of a single work is liable for a single amount . . . no matter how many acts of
`
`infringement are involved in the action and regardless of whether the acts were separate,
`
`isolated or occurred in a related series.” (citation omitted)). If the infringement is willful,
`
`“the court in its discretion may increase the award of statutory damages to a sum of not
`
`more than $150,000.” 17 U.S.C. § 504(c)(2).
`
`
`
`The Court first evaluates whether Defendant’s infringement was willful.
`
`“Willfully,” as used in § 504(c)(2), means “with knowledge that the defendant’s conduct
`
`17
`
`

`

`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 18 of 28
`
`constitutes copyright infringement.” Viper Nürburgring Record LLC v. Robbins Motor
`
`Co. LLC, No. 5:18-cv-04025-HLT, 2019 U.S. Dist. LEXIS 152931, at *19 (D. Kan. Sep.
`
`9, 2019) (citing 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
`
`14.04[B][3][a]). Most of Defendant’s sculptures show sufficient novelty to avoid
`
`copyright liability, and the vast majority of Defendant’s website shows some amount of
`
`creative variation from Plaintiff’s copyrighted website. Even the copying of Pair of
`
`Swallows shows that only one of the two birds was copied and that there was some minor
`
`modification to the copied bird. Similarly, the website used varied phrases and graphics,
`
`even where text and graphics were sufficiently similar to establish default judgment.
`
`Considering Defendant’s efforts to introduce novelty, Plaintiff has not established
`
`Defendant knew the conduct constituted copyright infringement, and the Court does not
`
`find that infringement of Pair of Swallows and the Metalbird Website was willful.
`
`
`
`But Hummingbird is different. Here Defendant not only copied Plaintiff’s’
`
`Hummingbird with almost no variation, Defendant then used the copy as the defining
`
`graphic feature of its own logo. That logo was visible on every page of Defendant’s
`
`website and, as a result, Plaintiff’s copyrighted work became a small part of every sale that
`
`Defendant made. ECF 1-8. The variation on Hummingbird was so imperceptible, and
`
`Defendant’s use of Hummingbird was so pervasive and flagrant, that the Court finds that
`
`Defendant’s copying of Hummingbird was willful.
`
`
`
`Courts consider several factors in determining the amount of statutory damages,
`
`such as: “(i) the expenses saved and the profits reaped; (ii) the revenues lost by the plaintiff;
`
`(iii) the value of the copyright; (iv) the deterrent effect on others besides the defendant; (v)
`
`18
`
`

`

`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 19 of 28
`
`whether the defendant's conduct was innocent or willful; (vi) whether a defendant has
`
`cooperated in providing particular records from which to assess the value of the infringing
`
`material produced; and (vii) the potential for discouraging the defendant.” Fitzgerald Pub.
`
`Co., Inc. v. Baylor Pub. Co., Inc., 807 F.2d 1110, 1117 (2d Cir. 1986).
`
`
`
`The Court agrees with the Plaintiff that it is impossible to ascertain evidence of
`
`Defendant VL Media’s actual profits because Defendant has not participated in the
`
`litigation. For the same reason, it is impossible to determine the effects on Plaintiff’s
`
`business. But although Defendant has provided no records to establish damages, Plaintiff
`
`has left the Court similarly in the dark, only stating that “Metalbird annually spends in
`
`excess of several million U.S. dollars on advertising, marketing and promotional efforts
`
`for the METALBIRD Mark and designs.” Plaintiff has provided little financial context to
`
`aid the Court in understanding the magnitude of the harm.
`
`
`
`In large part, Defendant appears to have borne the cost of creating different
`
`sculptures and a different website. Except for one bird in Pair of Swallows there was no
`
`infringement by the creation, production, and photography of Defendant’s sculptures,
`
`which were authorized to legitimately compete with Plaintiff. The Court concludes that,
`
`to the extent that Plaintiff suffered lost sales, a significant portion of the lost sales would
`
`have been due to legitimate competition from Defendant’s competing sculptures and not
`
`from the infringing conduct.
`
`
`
`The Court also keeps in mind that copyright law only protects infringements in the
`
`United States, and Defendant’s “magicbird.eu” website appears tailored to European
`
`audiences. IMAPizza, LLC v. At Pizza, Ltd., 448 U.S. App. D.C. 231, 236, 965 F.3d 871,
`
`19
`
`

`

`Case 2:21-cv-00198-NDF Document 37 Filed 02/16/23 Page 20 of 28
`
`876 (

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