Case 3:15-cv-00799-JWD-RLB Document 62 02/24/17 Page 1 of 18
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`UNITED STATES DISTRICT COURT
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`MIDDLE DISTRICT OF LOUISIANA
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`PAUL CHARBONNET
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`v.
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`CHESTER CHARLES MALVEAUX
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`CIVIL ACTION
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`NO. 15-799-JWD-RLB
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`RULING AND ORDER
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`This matter comes before the Court on the Motion to Dismiss (Doc. 31) filed by Defendant
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`Chester Charles Malveaux. In a previous order (Doc. 32), the Court exercised its discretion to
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`convert Defendant’s Motion to Dismiss into a Motion for Summary Judgment. Subsequently, pro
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`se Plaintiff Paul Charbonnet opposed the motion. (Doc. 47.) Oral argument is not necessary.
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`Plaintiff brings a claim for copyright infringement under the Copyright Act of 1976, 17
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`U.S.C. § 101 et. seq. (Doc. 1 at 1, 5.) Plaintiff claims that Defendant is “us[ing], reproduc[ing],
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`and publish[ing]” Plaintiff’s copyrighted work in violation of Plaintiff’s copyright. (Doc. 1 at 5.)
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`According to Plaintiff, he has not “authorized, licensed, permitted, or otherwise approved
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`[Defendant’s] use, reproduction or publishing of” his copyrighted work. (Doc. 1 at 5.) As a result,
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`Plaintiff seeks “permanent injunctive relief to restrain and enjoin [Defendant] from continuing the
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`infringing conduct, pursuant to 17 U.S.C. § 502.” (Doc. 1 at 6.) Lastly, Plaintiff also submits
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`several state law claims for improper management and breach of fiduciary duty, conversion, and
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`unfair trade practices.
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`In the instant motion, Defendant contends that he has a co-ownership interest in the
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`copyrighted material at issue. As a result, Defendant argues, he cannot be an infringer of a
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`copyright he owns.
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`Having carefully reviewed the law, the facts in the record, and the arguments and
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`submissions of the parties, the Court finds that Defendant’s motion should be denied. Defendant
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`has failed to support his claim of co-ownership beyond conclusory statements. Conversely,
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`Plaintiff has provided a Certificate of Registration issued by the U.S. Copyright Office; this
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`certificate serves as prima facie evidence that he is the sole owner of the copyright. Moreover,
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`even if the certificate is invalid, Plaintiff directly rebuts Defendants claim of co-ownership. As a
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`result, there is a genuine issue of material fact regarding ownership of the copyrighted material,
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`and summary judgment is not warranted.
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`I.
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`Factual Background
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`A. Preliminary Procedural Issue
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`Preliminarily, most of the following factual background is taken from the complaint (Doc.
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`1). Ordinarily, this is not proper summary judgment evidence. See Fed. R. Civ. P. 56(c).
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`However, the Plaintiff’s complaint is verified. (Doc. 1 at 16.) In Lodge Hall Music, Inc. v.
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`Waco Wrangler Club, Inc., the Fifth Circuit stated: “We have previously held that ‘verified
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`pleadings may in some circumstances be treated as affidavits in support of a motion for summary
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`judgment.’ Id., 831 F.2d 77, 80 (5th Cir. 1987) (citing Fowler v. S. Bell Tel. & Tel. Co., 343 F.2d
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`150, 154 (5th Cir. 1965); Gordon v. Watson, 622 F.2d 120, 122 (5th Cir. 1980)). Nonetheless,
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`pleadings, like summary judgment affidavits, must meet Rule 56(e)’s requirement that statements
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`“shall be made on personal knowledge, shall set forth such facts as would be admissible evidence,
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`and shall show affirmatively that the affiant is competent to testify to the matters stated therein.”
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`Id. (citing Fed. R. Civ. P. 56(e)); see also Sheinkopf v. Stone, 927 F.2d 1259, 1262 (1st Cir. 1991)
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`(stating that a verified complaint should be treated as the functional equivalent of an affidavit as
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`long as it satisfies the requirements of Rule 56(e)); Fowler, 343 F.2d at 154 (“summary judgment
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`is not warranted unless the verified pleadings meet the standards for affidavits laid down by Rule
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`56(e) . . . verification must be on personal knowledge alone . . . [not] verified only on ‘knowledge,
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`information, and belief.’). Accordingly, the Court will treat Plaintiff’s allegations as an affidavit
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`opposing summary judgment, provided that they are based on personal knowledge and are
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`otherwise admissible.
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`B. Formation of Atmosphere Aerial, LLC
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`Plaintiff Paul Charbonnet is a resident of Baton Rouge, LA. Chester Charles Malveaux is
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`also a resident of Baton Rouge, LA. (Doc. 1 at 2.)
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`Together, Plaintiff and Defendant formed “Atmosphere Aerial, LLC” (“AA I”), a
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`Louisiana Limited Liability Company, registered with the Louisiana Secretary of State on August
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`12, 2014. (Doc. 1 at 2; Doc. 38-1 at 1.) According to Plaintiff’s complaint, AA I was engaged in
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`the business of aerial photography and videography. (Doc. 1 at 3.) Although Plaintiff was listed as
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`a member and Defendant was listed as the manager in AA I’s Initial Report, it was the parties’
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`intention that Defendant be a member of AA I as well. (Doc. 1 at 2–3.) Defendant was treated as
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`such. (Id.) Plaintiff asserts that Plaintiff and Defendant were the only two members of AA I and
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`each owned a 50% interest in the company. (Doc. 1 at 3.) However, Defendant asserts that
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`Plaintiff’s interest in AA I was “no more than 50%,” while Defendant had the remaining interest.
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`(Doc. 38-1 at 1.) AA I did not have an operating agreement. (Doc. 1 at 3.)
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`Plaintiff stated that both Plaintiff and Defendant, in their individual capacities, “purchased
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`equipment used by [AA I] and paid LLC expenses as capital contributions . . . with the intent that
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`their capital accounts would be returned by [AA I] in full.” (Doc. 1 at 3.) Defendant asserts in his
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`affidavit that “he contributed all of the funds for its operations, and [his] . . . ability to pilot the
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`drones used” while Plaintiff “only contributed his ability as a cameraman and his familiarity with
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`website art software.” (Doc. 31-3.)
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`AA I was dissolved by an Affidavit to Dissolve on July 9, 2015. (Doc. 1 at 3; Doc. 38-1 at
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`1; Doc. 1-3.) After AA I was dissolved, Plaintiff “registered a new entity also named Atmosphere
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`Aerial, LLC [AA II] with the Louisiana Secretary of State on July 9, 2015 . . . [Plaintiff] is the sole
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`member of [(“AA II”)]. (Doc. 1 at 4; Doc. 31-1 at 2.) Further, Plaintiff “registered the Logo as a
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`trademark, service mark, and trade name with the Louisiana Secretary of State under the name of
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`[AA II].” (Doc. 1 at 5.) After the dissolution of AA I, Defendant formed Atmosphere Aerial Media,
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`LLC (“AA Media”). (Doc. 1 at 5.)
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`C. Creation and registration of the logo
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`Plaintiff declares in his complaint that he created a logo containing the name
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`“Atmosphere Aerial” (the “Logo”) on March 28, 2014. (Doc. 1 at 4; Doc. 47 at 1; Doc. 47-1.)
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`The Logo was registered by Plaintiff in his own name on July 13, 2015. (Doc. 31-2; Doc. 47-2.)
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`The registration lists Plaintiff as sole author, copyright claimant, and the only person with rights
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`and permissions to the logo. (Doc. 47-2.)
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`Defendant, through his affidavit, asserts that Plaintiff and Defendant jointly designed the
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`Logo. (Doc. 31-3.) Defendant also asserts that the Logo was created for AA I. (Doc. 38-1 at 1.)
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`The Logo was not used before AA I’s creation. (Doc. 31-3.) Additionally, Defendant also states in
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`his affidavit that “[o]nce [AA I] was in business the Logo was regularly used in commerce” by
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`AA I. (Doc. 38-1 at 1.) Defendant also provided a newspaper article from The Advocate and images
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`of T-shirts containing the Logo as evidence that the Logo was created for AA I. (Doc. 38 at 2–3;
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`Doc. 38-1 at 1–8.)
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`II.
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`Relevant Standards
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`A. Rule 56 Standard
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`“The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
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`Civ. P. 56(a). If the mover bears his burden of showing that there is no genuine issue of fact, “its
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`opponent must do more than simply show that there is some metaphysical doubt as to the material
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`facts . . . [T]he nonmoving party must come forward with ‘specific facts showing that there is a
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`genuine issue for trial.’” See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
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`586–587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986) (internal citations omitted). The non-mover's
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`burden is not satisfied by “conclusory allegations, by unsubstantiated assertions, or by only a
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`‘scintilla’ of evidence.” Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (citations
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`and internal quotations omitted). “Where the record taken as a whole could not lead a rational trier
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`of fact to find for the non-moving party, there is no ‘genuine issue for trial.’ ” Matsushita Elec.
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`Indus. Co., 475 U.S. at 587. Further:
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`In resolving the motion, the court may not undertake to evaluate the credibility of
`the witnesses, weigh the evidence, or resolve factual disputes; so long as the
`evidence in the record is such that a reasonable jury drawing all inferences in favor
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`of the nonmoving party could arrive at a verdict in that party's favor, the court must
`deny the motion.
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`International Shortstop, Inc. v. Rally's, Inc., 939 F.2d 1257, 1263 (5th Cir. 1991).
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`B. Standard for Pro Se Litigants
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`Both Plaintiff and Defendant have, at various times throughout this case, proceeded pro se.
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`(See Doc. 1 at 15; Doc. 31.) Defendant was represented by counsel when he submitted the instant
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`motion (See Doc. 31), but his reply was a pro se filing. (Doc. 53.)1 Plaintiff, on the other hand,
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`was represented by attorneys when he filed his complaint (Doc. 1) but not when he filed his
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`“opposition” to the instant motion. (See Doc. 47.)
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` “A document filed pro se is to be liberally construed.” Erickson v. Pardus, 551 U.S. 89,
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`94, 127 S. Ct. 2197, 2200, 167 L. Ed. 2d 1081 (2007). Consequently, the Court will liberally
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`construe the documents submitted by the litigants while proceeding pro se.
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`III. Discussion
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`A. Parties’ Arguments
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`1. Defendant’s arguments
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`a. Summary
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`Defendant argues that he is entitled to summary judgment because the logo was jointly
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`created and/or jointly owned by both Plaintiff and Defendant, thus the Plaintiff has not alleged a
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`valid copyright infringement claim. (Doc. 31-1 at 1.) Defendant also argues that the remaining
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`causes of action are state law claims that can only be included in this suit by the Court’s exercise
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`of supplemental jurisdiction where there exists proper original jurisdiction. (Doc. 31-1 at 1.) Since
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`the Plaintiff has failed to allege a valid copyright infringement claim, the Plaintiff’s other claims
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`should be dismissed for lack of subject matter jurisdiction.
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`1 Subsequently, a different attorney enrolled on behalf of the Defendant. (See Docs. 58–59.)
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`b. The Logo is a joint work
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`Defendant argues that the “design and creation of the logo at issue was a joint effort by
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`[Defendant] and Plaintiff” and, as such, was co-owned by the parties, pursuant to 17 U.S.C.
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`§201(a). (Doc. 31-1 at 2.) The Defendant, in the affidavit in support of his motion, states that
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`during Defendant’s and Plaintiff’s discussions in 2013–2014 regarding the formation of AA I, the
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`parties jointly designed the logo. (Doc. 31-3 at 1.) Since the parties were co-creators and co-owners
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`of the logo, each owner has a “full right to use the copyrighted work. Thus, [Defendant] . . . cannot
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`infringe upon a copyright on a work that he co-owns.” (Doc. 31-1 at 2.)
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`c. Effect of the Logo’s registration with the U.S. Copyright Office
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`Further, the Defendant argues that the Plaintiff’s registration of the logo, listing only the
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`Plaintiff as the sole author, copyright claimant, and the only person with rights and permissions to
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`the logo does not answer the question of actual ownership of a copyright under 17 U.S.C. §106.
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`(Doc. 31-1 at 4.) Defendant contends that actual ownership “attaches to a work whenever the
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`copyright owner publically distributes or displays the work.” (Doc. 31-1 at 4 (citing 17 U.S.C. §
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`401.).)2 Further, Defendant states that “a work may be registered with the U.S. Copyright office,
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`but registration is not a condition of copyright protection.” (Doc. 31-1 at 4 (citing 17 U.S.C. §
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`408).) Thus, Defendant concludes:
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`[T]he seminal question is not whether the logo at issue was registered with the U.S.
`Copyright office, but who owns the work. [Defendant] maintains that the work was
`jointly owned and thus, Plaintiff’s registration of the work with the Copyright office
`without stating in his application that the work was co-owned appears to be fraud
`on the U.S. Copyright office.
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`2 It should be briefly mentioned that Defendant’s citation to 17 U.S.C. § 401 for the proposition stated is inaccurate.
`As will later be discussed, copyright ownership is determined once an “original work [] of authorship” has been
`“fixed in any tangible medium of expression, now known or later developed, for which . . . [it] can be perceived,
`reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a).
`17 U.S.C. § 401 merely deals with when notice of copyright protection can be placed on a copyrighted work. See 17
`U.S.C. § 401.
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`(Doc. 31-1 at 4.)
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`d. The Logo was the property of AA I
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`In the alternative, Defendant argues that “even if [the logo] had not been co-created . . . it
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`was created for and the property of [AA I].” (Doc. 31-3 at 3.) Defendant looks to the work for hire
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`doctrine under 17 U.S.C. §201(b) in support of his argument that the logo was the property of AA
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`I. (Doc. 31-1 at 3.) According to Defendant, “when a work was created for hire, then the employer
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`(or LLC in this case) for whom the work was prepared is considered the owner.” (Doc. 31-1 at 3.)
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`Defendant contends that “the logo was never used before the formation of [AA I]. Thus there can
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`be no doubt that the logo was created for [AA I].” (Doc. 31-1 at 3.) Defendant states that the
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`purpose of the logo’s creation is clear because one can “observe that [the logo] was uniquely
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`designed for [AA I].” (Doc. 31-1 at 3.)
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`Further, Defendant contends that when AA I was formed, the logo “was either jointly
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`contributed or contributed by Plaintiff as part of the capital contribution required when forming an
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`LLC.” (Doc. 31-1 at 3.) Defendant claims that since the logo was a part of AA I’s assets, and
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`because there was never a valid transfer of the logo’s ownership to either the Plaintiff in his
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`personal capacity or AA II, the copyright “remains incorporeal movable property co-owned by the
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`two owners of [AA I] [(i.e. Plaintiff and Defendant)].” (Doc. 31-1 at 3.) A transfer of copyright
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`ownership of the logo required an instrument of conveyance, or a note or memorandum of transfer,
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`in writing and signed by the copyright owner or its agent. (Doc. 31-1 at 3 (citing 17 U.S.C. §
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`204(a)).) According to Defendant, since he was the manager of AA I, any writing transferring
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`ownership from AA I to Plaintiff in any capacity would have to be signed by him or the owner of
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`the logo (which he asserts to be AA I). (Doc. 31-1 at 3.) No such writing exists, and, thus, the
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`copyright is jointly owned by Plaintiff and Defendant because they were co-owners of AA I. (Doc.
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`31-1 at 4.)
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`2.Plaintiff’s Arguments
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`a. The logo is not a joint work-it is the sole work of the Plaintiff
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`Plaintiff begins his response to Defendant’s argument by stating that neither Defendant nor
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`any of his companies ever “owned any part of the [logo].” (Doc. 47 a 1.)3 Plaintiff’s position is
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`that he is the “sole creator, author, and owner” of the logo (Doc. 47 at 1), directly opposing
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`Defendant’s position that the logo was a joint work. In support of this position, Plaintiff references
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`what appears to be a screenshot from a computer in which there is a document containing the logo,
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`which is time stamped as “created” on “Friday, March 28, 2014 at 1:07 PM.” (Doc. 47-1.) Further,
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`Plaintiff argues that he is the sole creator and author under of the logo under 17 U.S.C. § 102, and
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`the use of the logo by “[AA I] does not grant [Defendant] any ownership in the logo nor allow
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`[Defendant] to dictate the use of the logo.” (Doc. 47 at 3.)
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`b. The logo is registered to Plaintiff in his individual capacity
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`Plaintiff also responds to Defendant’s arguments regarding the effect of copyright
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`registration by stating that he “legally filed and was granted the Copyright by the United States
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`Copyright Office making [Plaintiff] the copyright holder for the…Logo.” (Doc. 47 at 1) (emphasis
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`added).)
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`c. The logo was not a work for hire
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`In response to Defendant’s argument that even if the logo was created solely by the
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`Plaintiff, it was created for and thus owned by AA I, Plaintiff argues that because the logo was
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`3 Plaintiff’s counter arguments are found in Plaintiff’s objections to Defendant’s Statement of Undisputed Facts.
`However, the Court will construe the document liberally as also serving as the Plaintiff’s opposition to Defendant’s
`Motion for Summary Judgment.
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`created prior to the formation of AA I, “Defendants [sic] claim that the logo was created for the
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`use of [AA I] is chronically [sic] impossible.”4 (Doc. 47 at 3.) Plaintiff declares that the logo was
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`created on March 28, 2014, but the formation of AA I was not until August 12, 2014. (Doc. 47 at
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`3.) Instead, Plaintiff asserts that, as copyright author and owner of the logo, he allowed AA I to
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`use the logo, but never transferred his ownership or rights in the logo. (Doc. 47 at 3.) Plaintiff goes
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`on to say that once AA I was dissolved the “rights to use the logo was [sic] then revoked to only
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`be used by the creator and copyright holder [(i.e. the Plaintiff)].” (Doc. 47 at 3.)
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`d. No operations agreement was signed
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`Plaintiff continues to attack the Defendant’s claim of ownership in the logo made through
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`Defendant’s ownership in AA I by stating:
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`Being that no operations agreement was signed the handling of the dissolved
`companies profits, assets, contributions to capital must adhere to the Louisiana Law
`Title 12. Notably RS 12:1335.1, RS 12:1336, RS 12:1337, [and] RS 12:1321. The
`claim that defendant makes that the [logo] was used on T-shirts in a newspaper
`article does not give [Defendant] ownership of any kind to the logo as that the
`Plaintiff . . . is the executive creator and owner of the [logo].
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`(Doc. 47 at 3–4 (sic).)
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`e. The Court already ruled on Jurisdiction in Plaintiff’s favor
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`The Plaintiff also argues that this Court has already ruled on its jurisdiction over the
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`Plaintiff’s claims. (Doc. 47 at 4.)
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`3. Defendant’s Reply to Plaintiff’s Objections in Opposition to Defense
`Motion for Summary Judgement
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`In his response to Plaintiff’s arguments, Defendant reasons that the issue of whether
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`Plaintiff was the sole creator of the logo or whether it was jointly created by Plaintiff and
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`Defendant is immaterial for ruling on this motion. (Doc. 53 at 1.) Defendant explains that there
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`4 The Court assumes that Plaintiff meant that Defendant’s claim is chronologically impossible.
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`are “undisputed” “salient facts” that decide the issue of ownership. (Doc. 53 at 1–2.) According
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`to Defendant, “[The Defendant’s] affidavit establishes that the LOGO regardless of who created
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`it was created through joint venture between the Plaintiff and the Defendant for the benefit of
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`[AA I].” (Doc. 53 at 2.) “The fact that the logo was created for and on behalf of [AA I] is not
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`disputed by the defendant and is apparent on the face of the LOGO which bears the name
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`‘Atmosphere Aerial’ as part of the logo itself which clearly demonstrates its creation for [AA I].”
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`(Doc. 53 at 2.) Defendant continues: “Therefore under 17 USC section 201 paragraph b the
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`ownership of the LOGO lies with [AA I] for which it was created and or for the Joint Venture
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`between the Plaintiff and Defendant for creation thereof.” (Doc. 53 at 2.) Concluding, Defendant
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`argues that any claims of ownership that Plaintiff may have made in its petition are “conclusory
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`allegations of law which must be ignored. The undisputed fact show that as a matter of law there
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`was joint ownership of the LOGO.” (Doc. 53 at 2.)
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`B. Analysis
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`In resolving this motion, the material issue before the Court is the ownership of the
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`copyrights of the logo. For the following reasons, the Court finds that there is a genuine of material
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`fact concerning copyright ownership that prohibits the Court from granting this motion.
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`Defendant argues that he is a co-owner of the copyright of the logo, and as such, he cannot
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`be an infringer upon a work that he co-owns. (Doc. 31-1 at 2.). Defendant advances his contention
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`that he is a co-owner through two theories: (1) that he and Plaintiff jointly created the work (Doc.
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`31-1 at 2); or (2) that the logo was a work for hire, owned by AA I and a part of its assets, and
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`Defendant’s ownership interest in AA I makes him a co-owner in the work. (Doc. 31-1 at 3.)
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`In the exercise of its constitutional authority, U.S. Const. Art I, § 8, cl. 8, amending several
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`prior laws, Congress passed the Copyright Act of 1976, an Act for the general revision of the
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`Copyright Law, Title 17 of the United States Code, and for other purposes, Pub L. No. 94–553, 90
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`Stat. 2541 (Oct. 19, 1976). Under the Act, “[c]opyright in a work protected under this title vests
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`initially in the author or authors of the work,” and “[i]n the case of a work made for hire, the
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`employer or other person for whom the work was prepared is considered the author for purposes
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`of this title.” 17 U.S.C. §201(a)–(b); Goodman v. Lee, 815 F.2d 1030, 1032 n. 6 (5th Cir. 1987)
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`(citing § 201 (a)); Easter Seal Soc'y for Crippled Children & Adults of La., Inc. v. Playboy Enters.,
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`815 F.2d 323, 328 (5th Cir. 1987) (citing § 201(b) and the definition of “work for hire” encoded
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`in § 101(1)–(2)). A copyright arises—and the Act’s protection attaches—once an “original work
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`[] of authorship” has been “fixed in any tangible medium of expression, now known or later
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`developed, for which . . . [it] can be perceived, reproduced, or otherwise communicated, either
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`directly or with the aid of a machine or device.” 17 U.S.C. § 102(a); see also, e.g., Rodrigue v.
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`Rodrigue, 218 F.3d 432, 435–36 (5th Cir. 2000) (“[T]he author's copyright arises at the moment
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`of creation of the work[.]”); H.R. Rep. No. 94-1476, at 51 (1976) (describing “originality and
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`fixation in tangible form” as the “two fundamental criteria of copyright protection” established in
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`§ 102(a)).
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`1.Genuine issue of material fact regarding ownership of the copyright
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`In analyzing the matter at hand, the Court will first address Defendant’s argument that the
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`Logo was a joint work. As noted above, “[c]opyright in a work protected under this title vests
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`initially in the author or authors of the work.” 17 U.S.C. §201(a) (emphasis added). The rights of
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`co-owners of a copyrighted joint work are well-established. As Defendant correctly notes, co-
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`owners of a copyright cannot be liable to another co-owner for copyright infringement because
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`each co-owner has an independent right to use or license use of the copyrighted work. Quintanilla,
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`139 F.3d at 498 (5th Cir. 1988); Oddo v. Ries, 743 F.2d 630, 632–33 (9th Cir. 1984); Morrill v.
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`Smashing Pumpkins, 157 F. Supp. 2d 1120, 1126 (C.D. Cal. 2001) (citing Oddo). However, this
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`part of the inquiry turns upon the determination of what constitutes a “joint work.”
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`“A ‘joint work’ is a work prepared by two or more authors with the intention that their
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`contributions be merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. §
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`101; see also, e.g., Quintanilla v. Texas Television Inc., 139 F.3d 494, 498 (5th Cir. 1998); BTE v.
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`Bonnecaze, 43 F. Supp. 2d 619, 622 (E.D. La. 1999). The definition of a joint work also serves as
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`a definition of a work of joint authorship. Childress v. Taylor, 945 F.2d 500, 505 (2d Cir. 1991)
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`(citing 1 NIMMER ON COPYRIGHT § 6.01 (1991)). Under the Act, co-authors of a joint work are
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`considered co-owners of a copyright in that work. 17 U.S.C. § 201(a); see also, e.g., Goodman v.
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`Lee, 78 F.3d 1007, 1011 (5th Cir. 1996).
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`The joint work is dependent on the creation of the work by the joint authors, as well as the
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`nature of the work. Childress, 945 F.2d at 505. “[A] work is ‘joint’ if the authors collaborated with
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`each other, or if each of the authors prepared his or her contribution with the knowledge and
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`intention that it would be merged with the contributions of other authors as ‘inseparable or
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`interdependent parts of a unitary whole.’ ” Id. (quoting H.R. Rep. No. 1476, 94th Cong., 2d Sess.
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`120 (1976)); S. Rep. No. 473, 94th Cong., 2d Sess. 103 (1975)). The linchpin of the statutory
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`definition of a joint work “is the intention at the time the writing is done that the parts be absorbed
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`or combined into an integrated unit.” BTE, 43 F. Supp. 2d at 622 (quoting Thomson v. Larson, 147
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`F.3d 195, 199 (2d Cir. 1998) (citing H.R. Rep. No. 1476, 94th Cong. 120, 121 (1976)) (internal
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`quotations omitted) (emphasis added); see also Childress, 945 F.2d at 505 (“[t]he touchstone here
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`is the intention, at the time the writing is done[.]”). Furthermore, “parts of a unitary whole” are
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`“interdependent” when they can have some meaning standing alone, but “achieve their primary
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`significance because of their combined effect, as in the case of the words and music of a song.”
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`Childress, 945 F.2d at 505 (citing House Report at 120; Senate Report at 103). The court in
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`Childress v. Taylor promulgated a two-prong test used by courts to determine whether a
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`contributor to a copyrighted work is entitled to be regarded as a joint author, which asks whether
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`the party claiming joint authorship has established that the parties: “(1) made independently
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`copyrightable contributions to work; and (2) fully intended to be co-authors.” Thomson, 147 F.3d
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`at 199–200 (citing Childress, 945 F.2d 500); see also, Aillet, Fenner, Jolly & McClelland, Inc. v.
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`U.L. Coleman Co., Ltd., 2012 WL 4450977, at *2 (W.D. La. Sept. 25, 2012); BTE, 43 F. Supp. 2d
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`at 622–625.
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`While Defendant claims that the “design and creation of the logo at issue was a joint effort
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`by [Defendant] and Plaintiff” (Doc. 31-1 at 2), he only supports this with a conclusory statement
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`in his affidavit that the parties jointly designed the logo during their discussion in 2013–2014
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`regarding the formation of AA I. (Doc. 31-3 at 1.) However, Plaintiff squarely contends that he is
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`the “sole creator, author, and owner” of the logo. (Doc. 47 at 1.) In support of this, Plaintiff has
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`supplied the Court with statements from his verified complaint (Doc. 1 at 4); his Certificate of
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`Registration, listing Plaintiff as the sole owner, copyright claimant, and the only person with rights
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`and permissions to the logo (Doc. 47-2); and a screenshot of a computer image showing a
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`document containing a picture of the logo with the time stamp “date of creation” on “Friday, March
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`28, 2014 at 1:07 PM.” (Doc. 47-1.)
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`Although the Court does not find the computer image dispositive on the issue of the
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`Plaintiff’s sole creation, it certainly supports his position. Furthermore, the Court is bound to give
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`weight to the evidentiary value of the Certificate of Registration. Defendant correctly argues that
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`registration of the logo is not a condition of copyright protection. (Doc. 31-1 at 4.) Under 17 U.S.C.
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`§408(a), “the owner of copyright or of any exclusive right in the work may obtain a registration of
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`the copyright claim by delivering to the Copyright Office the deposit specified by this section,
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`together with the application and fee specified by sections 409 and 708. Such registration is not a
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`condition of copyright protection.” (emphasis added). But, a certificate of registration creates a
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`rebuttable presumption regarding the validity of the copyright and the facts stated in the certificate.
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`Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995); Durham Indus., Inc. v.
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`Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980) (stating that “[s]uch a certificate, if timely obtained,
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`‘constitutes(s) prima facie evidence of the validity of the copyright and of the facts stated in the
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`certificate.’”) (citing 17 U.S.C. § 410(c)). Specifically, the presumption of validity extends to the
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`ownership of the copyright. Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992) (citing Hasbro
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`Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985). When there is evidence in
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`the record that casts doubt on the validity of the certificate, validity should not be assumed. See
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`Durham, 630 F.2d at 908.
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`Here, Plaintiff has provided the Court with a certificate which lists the Plaintiff as the sole
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`owner of the copyright. Defendant argues that Plaintiffs registration with the Copyright Office
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`without mentioning that the work is co-owned “appears to be fraud.” (Doc. 31-1 at 4.) Yet, as
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`previously mentioned, Defendant has provided this Court with no evidence of the logo’s joint
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`workmanship other than an affidavit with a conclusory statement that the parties jointly designed
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`the logo. Thus, this Court cannot, under the two prong test enumerated in Childress, weigh at the
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`summary judgment stage whether Defendant is entitled to be regarded as a joint author. Because
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`of this, the Court also cannot conclude that the Plaintiff fraudulently registered the logo by failing
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`to list Defendant as a co-author.
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`Even if the registration is invalid and the Court were not bound to follow the presumption
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`of Plaintiff’s ownership, there still exists a material issue of genuine fact regarding whether the
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`logo was jointly created by the parties or solely created by the Plaintiff. Again, Plaintiff specifically
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`stated in his verified complaint that he created the logo at issue (Doc. 1 at 4), and the Court will
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`treat this statement as summary judgement evidence. See Lodge Hall Music, 831 F.2d at 80.
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`Therefore, summary judgment is not appropriate.
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`2. Works for Hire Doctrine not applicable
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`Defendant makes an alternative claim of co-ownership of the logo based on the argument
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`that the logo was a “work for hire” under 17 U.S.C. § 201(b). (Doc. 31-3 at 3.) Defendant argues
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`that even if Plaintiff was the sole author of the Logo, the purpose of the Logo was clearly created
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`for AA I, and thus forms a part of AA I’s assets, to which Defendant has an ownership claim. (Doc.
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`31-1 at 3.)
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`“In the case of a work made for hire, the employer or other person for whom the work was
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`prepared is considered the author for purposes of this title.” 17 U.S.C. § 201(a). A work for hire is
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`allowed in two circumstances:
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`(1) a work prepared by an employee within the scope of his or her employment; or
`(2) a work specially ordered or commissioned for use as a contribution to a
`collective work, as a part of a motion picture or other audiovisual work, as a
`translation, as a supplementary work, as a compilation, as an instructional text, as
`a test, as answer material for a test, or as an atlas, if the parties expressly agree in a
`written instrument signed by them that the work