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2:13-cv-13127-VAR-DRG Doc # 27 Filed 12/15/14 Pg 1 of 18 Pg ID 234
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`CALIBRATED SUCCESS, INC.,
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`Plaintiff,
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`v.
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`JONATHAN ANDREW CHARTERS,
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`Defendant.
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`/
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`Case No: 13-cv-13127
`Hon. Victoria A. Roberts
`
`ORDER GRANTING IN PART AND DENYING IN PART
`PLAINTIFF’S FOR SUMMARY JUDGMENT (DOC. 11)
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`I.
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`INTRODUCTION AND BACKGROUND
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`Calibrated Success Incorporated (“Calibrated”) holds the copyright to a video
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`entitled “GM EFI Tuning Beginner’s Guide” (“Calibrated’s Tuning Guide”). The video
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`instructs viewers how to modify and enhance performance of their cars. The host and
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`instructor of the video is Greg Banish (“Banish”), principal of Calibrated. To create this
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`video Banish enlisted the help of David Bruckshaw (“Bruckshaw”). Bruckshaw has
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`experience in videography, video editing, and first hand knowledge about Calibrated’s
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`Tuning Guide. Calibrated created the video to sell to the public for $249.95.
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`During the summer of 2010, Defendant Jonathan Charters (“Charters”)
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`downloaded Calibrated’s Tuning Guide from a website named Pirate Bay. He made 50
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`to 75 copies to sell them for $35.00 to $50.00 each. Charters used different websites,
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`emails, and user names to sell copies of Calibrated’s Tuning Guide. On July 22, 2013
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`Calibrated sued Charters for copyright infringement under 17 U.S.C. § 501(a). It says
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`Charters violated its exclusive right to reproduction under and 17 U.S.C. § 106(1), and
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`distribution under 17 U.S.C. § 106(3). During a deposition Charters admitted that he
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`downloaded and duplicated an entire copy of Calibrated’s Tuning Guide 50 to 75 times.
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`He admitted he sold each copy in the range of $35.00 to $50.00, and each copy
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`contained the entire Calibrated Tuning Guide.
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`In response to Calibrated’s motion for Summary Judgment now before the Court,
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`Charters says downloading and copying the Tuning Guide was de minimis, and his
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`actions constitute fair use.
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`The Court GRANTS in part and DENIES in part Calibrated’s motion for Summary
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`Judgment.
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`II.
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`STANDARD OF REVIEW
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`Federal Rule of Civil Procedure 56(a) says a "court shall grant summary
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`judgment if the movant shows that there is no genuine dispute as to any material fact
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`and the movant is entitled to judgment as a matter of law.” A party asserting that a fact
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`cannot be genuinely disputed must support the assertion by citing to particular parts of
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`materials in the record, including depositions, documents, or other materials. Fed. R.
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`Civ. P. 56. The burden is on the moving party to show that no genuine issue of material
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`facts exist, and a court should evaluate the evidence in the light most favorable to the
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`non-moving party. Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 412 (6th Cir.
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`2006).
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`To create a genuine issue of material fact, the non-moving party must present
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`more than a mere scintilla of evidence in support of his position to raise some doubt as
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`to the existence of a fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
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`The non-moving party must bring forth sufficient evidence favoring the nonmoving party
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`for a jury to return a verdict for that party. Id. at 249-50.
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`III.
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`DISCUSSION
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`A.
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`Copyright Infringement
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`Anyone who violates any of the exclusive rights enumerated in 17 U.S.C. §
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`106(a) granted to a copyright holder is liable for copyright infringement.17 U.S.C. §
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`501(a). The prima facie case for copyright infringement has two elements. The first
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`element requires proof of ownership of a valid copyright. Feist Publications, Inc. v. Rural
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`Tel. Serv. Co., 499 U.S. 340, 361 (1991). This element is presumptively established by
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`the copyright registration. Lexmark Int'l, Inc. v. Static Control Components, Inc., 387
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`F.3d 522, 534 (6th Cir. 2004)(abrogated on other grounds). A certificate made before or
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`within five years after the author first publishes the work shall constitute prima facie
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`evidence of the validity of the copyright and of the facts stated in the certificate. 17
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`U.S.C. § 410(c).
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`The second element requires a showing that the defendant violated at least one
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`of the five exclusive rights granted to a copyright holder under 17 U.S.C. § 106. A&M
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`Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001).
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` Calibrated claims a violation of the exclusive right of reproduction and
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`distribution. To show a violation of the exclusive right of reproduction under § 106(1),
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`the plaintiff must demonstrate the defendant copied “protectable elements of the work.”
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`Lexmark, 387 F.3d at 534; Feist, 499 U.S. at 361. And, to show a violation of the
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`exclusive right of distribution under §106(3), the plaintiff must establish that the
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`defendant actually distributed identifiable copies of the work. Atl. Recording Corp. v.
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`Howell, 554 F. Supp. 2d 976, 981 (D. Ariz. 2008); Perfect 10, Inc. v. Amazon.com, Inc.,
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`508 F.3d 1146, 1162 (9th Cir. 2007).
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`Calibrated establishes a prima facie case of copyright infringement against
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`Charters. Calibrated satisfied the first element by providing a certificate of registration
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`identifying the work, author, and date of first publication. The effective date of the
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`certificate is February 11, 2013, and the date of first publication was June 1, 2009. The
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`alleged infringing conduct occurred in 2010 through 2011, which is within five years of
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`first publication. Therefore, the certificate is valid to show ownership of a copyright.
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`Calibrated satisfied the second element of its prima facie case for copyright
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`infringement under §106(1) and §106(3). With respect to §106(1) - the right of exclusive
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`production - Charters admitted he downloaded Calibrated’s Tuning Guide from Pirate
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`Bay and made and sold 50 to 75 copies of the video. Charters Dep. 15:16 - 17:23,
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`January 15, 2014. Bruckshaw, analyzed a disc that Charters allegedly sold, and
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`described the video on the disc as being an “almost perfect... replication of Mr. Banish’s
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`work.” Bruckshaw Dep. 22:17-20, December 17, 2013. Thus, Calibrated has
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`established that Charters infringed its exclusive right to reproduction of the Tuning
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`Guide under § 106(1). Moreover, with respect to § 106(3), Calibrated demonstrated
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`Charters violated its exclusive right to distribution because he admitted in his deposition
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`that he sold all 50 to 75 copies of the Tuning Guide for $35.00 to to $50.00 dollars.
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`Charters’ Dep. 17:19 - 18:1.
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` After examining all evidence in the light most favorable to Charters, the Court
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`finds Calibrated established a prima facie case for copyright infringement against
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`Charters. Charters has not presented evidence or arguments to rebut this finding.
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`However, the Court must evaluate if the de minimis and fair use defenses relieve him
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`from liability.
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`B.
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`The De Minimis Defense
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`Charters says his infringement was de minimis. The de minimis defense requires
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`the alleged infringer to show that his copying of the “protected material is so trivial as to
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`fall below the quantitative threshold of substantial similarity.” Gordon v. Nextel
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`Commc'ns & Mullen Adver., Inc., 345 F.3d 922, 924 (6th Cir. 2003). The quantitative
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`threshold of substantial similarity to the copyrighted work takes into account the amount
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`of the copyrighted work that was copied, and its observability, which is determined by
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`the length of time the copyrighted work appears in the allegedly infringing work. Id.
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`The Court finds that Charters copying of Calibrated’s Tuning Guide was not de
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`minimis. Instead, Charters deposition demonstrates just the opposite; Charters admits
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`downloading Calibrated’s Tuning Guide in its entirety. Charters Dep. 35:10-11. There is
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`nothing de minimis about copying an entire video. Instead, such acts constitute
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`actionable copyright infringement.
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`C.
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`Fair Use Doctrine
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`Charters says he is not liable for copyright infringement because his conduct falls
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`under fair use. The fair use doctrine allows for non copyright holders to use a work for a
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`particular purpose, such as criticism, comment, news reporting, teaching, or research.
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`17 U.S.C. § 107. There are four factors a court should examine to determine if the use
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`was fair: (1) the purpose and character of the use, including whether such use is of a
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`commercial nature or is for nonprofit educational purposes; (2) the nature of the
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`copyrighted work; (3) the amount and substantiality of the portion used in relation to the
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`copyrighted work as a whole; and (4) the effect of the use upon the potential market for
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`or value of the copyrighted work. 17 U.S.C. § 107; Harper & Row Publishers, Inc. v.
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`Nation Enterprises, 471 U.S. 539, 560-61 (1985).
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`The Court examines each element.
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`1.
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` Purpose and Character of the Use
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`This factor evaluates whether the new work is transformative, and to what extent
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`the purpose of the new work is commercial. To see if the work is transformative, a court
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`should examine whether it “adds something new, with a further purpose or different
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`character, altering the first [work] with new expression, meaning, or message.”
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`Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 579 (1994) (internal citations and
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`quotation marks omitted) See also, Zomba Enterprises, Inc. v. Panorama Records, Inc.,
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`491 F.3d 574, 582 (6th Cir. 2007). “The more transformative the new work, the less will
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`be the significance of other factors, like commercialism, that may weigh against a
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`finding of fair use.” Campbell, 510 U.S. at 579. Nonetheless, commercial use still weighs
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`“against a finding of fair use” because “commercial use of copyrighted material is
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`presumptively an unfair exploitation of the monopoly privilege that belongs to the owner
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`of the copyright.” Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539,
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`562 (1985).
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`Charters begins his fair use argument by framing his activities as wanting to help
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`other car enthusiasts learn about automotive activities and car tuning by providing an
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`instructional video. Charters seems to forget that Calibrated’s Tuning Guide is itself an
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`instructional video. Charters illegally downloaded Calibrated’s Tuning Guide and sold
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`copies of it. This indicates a desire to achieve pecuniary gain from another’s work.
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`Moreover, Charters work is not transformative. Charters added material to some
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`of the discs, such as parts numbers and “Corvette RPO codes.” However, it is
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`undisputed that each disc Charters made, even the ones with the added materials,
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`contained a complete copy of Calibrated’s Tuning Guide. Thus, Charters copies of
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`Calibrated’s Tuning Guide did not communicate a new message to the viewer. Charters’
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`copies did not further a different purpose than Calibrated’s discs; It conveyed the same
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`information. Also, Charters sold each copy of the Tuning Guide, thus transforming his
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`actions into a commercial activity. Selling the discs for profit weighs against a finding of
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`fair use. The first factor of the fair use doctrine weighs against Charters.
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`2.
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`The Nature of the Copyrighted Work
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`This prong examines the type of work infringed. The Supreme Court noted “that
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`some works are closer to the core of intended copyright protection than others...Thus, a
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`pure work of fiction is closer to the core of copyright protection than a factual
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`compilation. Campbell, 510 U.S. at 586. “The law generally recognizes a greater need
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`to disseminate factual works than works of fiction or fantasy.” Harper & Row Publishers,
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`471 U.S. at 563. The Southern District of Georgia found that instructional and
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`procedural manuals are more akin to factual works than creative fictional works.
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`Gulfstream Aerospace Corp. v. Camp Sys. Int'l, Inc., 428 F. Supp. 2d 1369, 1378 (S.D.
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`Ga. 2006). However, as the Northern District of California stated:
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`If the selection or arrangement of facts is original, then these elements of the
`work are entitled to copyright protection. [A] compilation is not copyrightable
`per se, but is copyrightable only if its facts have been selected, coordinated,
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`or arranged in such a way that the resulting work as a whole constitutes an
`original work of authorship. Moreover, the requisite level of creativity or
`originality is extremely low; even a slight amount will suffice.
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`Sinai v. Bureau of Auto. Repair, No. C 92 0274 VRW, 1992 WL 470699, at *2 (N.D.
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`Cal. Dec. 21, 1992) quoting , Feist, 499 U.S. at 350- 51. (quotation marks omitted).
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`Calibrated’s Tuning Guide is an instructional video, thus, it appears it would be
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`more factual than creative. Yet, the manner in which the information is presented to the
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`viewer is original. As Calibrated notes, Banish relied on his years of experience to put
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`together, organize and present the information to the viewer. In making the video,
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`Bruckshaw assisted Banish with video photography, audio recordings, and editing. This
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`suggests the requisite level of creativity and originality that entitles the work to copyright
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`protection. The Court finds the second factor of the fair use doctrine weighs against
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`Charters.
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`3.
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`The Substantiality of the Portion Used in Relation to the
`Copyrighted Work as a Whole
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`This prong examines how much of the original work was copied. “The larger the
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`volume... of what is taken, the greater the affront to the interests of the copyright owner,
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`and the less likely that a taking will qualify as a fair use.” Zomba Enterprises, Inc., 491
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`F.3d at 583. However, copying even small portions of a work may weigh against a
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`finding of fair use because “no plagiarist can excuse the wrong by showing how much of
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`his work he did not pirate.” Harper & Row Publishers, 471 U.S. at 565.
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`In response to Calibrated’s Summary Judgment motion, Charters says there is a
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`factual dispute as to amount of purported copyrighted materials used. The Court
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`disagrees. Charters admits in his deposition he made and sold exact copies of
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`Calibrated’s Tuning Guide. Charters Dep at pg 35:12-14. Since Charters copied
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`Calibrated’s Tuning Guide in its entirety, the third factor weighs against a finding of fair
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`use.
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`4.
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`The Effect on the Potential Market for or Value of the
`Copyrighted Work
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`The final prong “requires courts to consider not only the extent of market harm
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`caused by the particular actions of the alleged infringer, but also whether unrestricted
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`and widespread conduct of the sort engaged in by the defendant ... would result in a
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`substantially adverse impact on the potential market for the original.” Campbell, 510
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`U.S. at 590. When the second work is duplicative of the original and it was made for a
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`commercial purpose, there is a presumption of market harm to the original work. Id. at
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`591. The alleged infringer bears the burden to prove the ‘market effect’ factor if the
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`copying was done for a commercial purpose. Zomba Enterprises, Inc., 491 F.3d at 583.
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`Charters says his actions had negligible impact on market value. The Court
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`disagrees. Calibrated sold or intended to sell its Tuning Guide for $249.95. On the other
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`hand, Charters duplicated Calibrated’s Tuning Guide and sold it 50 to 75 times for
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`$35.00 to $50.00. By selling those copies a presumption of market harm arises; it
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`appears Charters sold his copies for commercial gain. Moreover, Charters has already
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`negatively affected Calibrated’s market by usurping up to 75 sales from Calibrated. If
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`Charters continued to sell copies of the Tuning Guide there would be a substantial
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`adverse effect on Calibrated’s market because consumers could purchase the Tuning
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`Guide at a significantly lower price than the original.
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`However, putting aside the presumption, Charters misconstrues the fourth prong
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`by concentrating on his own behavior. As noted, the Court considers whether
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`unrestricted and widespread conduct of the sort engaged in by Charters would
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`adversely impact Calibrated’s potential market. The Court believes so. If others
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`engaged in the same conduct as Charters, the market for Calibrated’s Tuning Guide
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`would be obliterated; no one would pay $249.95 for an item that could be purchased for
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`$35.00 to $50.00. Charters fails to show how his actions, or the actions of others who
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`may engage in the same conduct, would not negatively affect Calibrated’s market.
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`Consequently, the fourth prong weighs against a finding of fair use.
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`Accordingly, the Court finds that each factor in § 107 weighs against a finding of
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`fair use. There is no genuine issue of material fact that Charters is liable for copyright
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`infringement. Moreover, Charters use was neither de minimis nor fair. The Court now
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`turns to the request for injunctive relief and damages.
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`D.
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`Injunctive Relief
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`Calibrated requests permanent injunctive relief through summary judgment.
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`A court may grant injunctive relief as it deems reasonable to prevent or restrain
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`infringement. 17 U.S.C. § 502(a). Permanent injunctions are appropriate when there is a
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`history of past copyright infringements and a substantial likelihood of future copyright
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`infringements. Bridgeport Music, Inc. v. Justin Combs Pub., 507 F.3d 470, 492 (6th Cir.
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`2007).
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`To determine the substantial likelihood of future copyright infringement, courts
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`look to the magnitude of the infringement, whether the infringer maintains possession of
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`the infringing product, and whether the infringer can or has continued its infringing
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`conduct even after the initiation of court proceedings. Columbia Pictures Indus., Inc. v. T
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`& F Enterprises, Inc., 68 F. Supp. 2d 833, 841 (E.D. Mich. 1999) (noting the infringer
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`purchased and rented 400 illegal copies of copyrighted materials); Phoenix Renovation
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`Corp. v. Rodriguez, 461 F. Supp. 2d 411, 424 (E.D. Va. 2006) aff'd, 258 F. App'x 526
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`(4th Cir. 2007). See also, Nat'l Bd. of Med. Examiners v. Optima Univ. LLC, 2011 U.S.
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`Dist. LEXIS 143645, 31 (W.D. Tenn. Sept. 29, 2011)(“defendants' willful ignorance of
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`orders of this court and disregard for the intellectual property rights of the plaintiffs
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`suggests a substantial likelihood they will infringe upon plaintiffs' copyrights in the
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`future”).
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`But, the inquiry does not stop with a finding of a substantial likelihood of
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`continuing infringement. The Supreme Court says a court must analyze the four factors
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`traditionally examined when issuing permanent injunctions in patent and copyright
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`infringement cases. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 392-93
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`(2006)(“this Court has consistently rejected invitations to replace traditional equitable
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`considerations with a rule that an injunction automatically follows a determination that a
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`copyright has been infringed.”)
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`A plaintiff seeking a permanent injunction must demonstrate: (1) it has suffered
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`an irreparable injury; (2) remedies available at law, such as monetary damages, are
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`inadequate to compensate for that injury; (3) considering the balance of hardships
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`between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public
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`interest would not be disserved by a permanent injunction. Id. at 391- 93; Flexible
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`Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 996 (9th Cir. 2011).
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`Calibrated does not sustain its burden. First, Calibrated does not show a
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`substantial likelihood Charters will commit future copyright infringement. Charters
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`admitted he downloaded Calibrated’s Tuning Guide in the summer of 2010, and made
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`50 to 75 copies which he sold. He says the computer he used to make these copies
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`crashed and he disposed of it. Charters says he no longer has a copy of the Tuning
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`Guide. Although Charters made 50 to 75 copies of Calibrated’s Tuning Guide, the Court
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`- and possibly a jury - does not find that number to be of such a magnitude to warrant
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`an injunction in an of itself. More importantly, Calibrated provides no evidence that
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`Charters can still make new copies of Calibrated’s Tuning Guide, or even has a copy of
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`it. Calibrated initiated proceedings on July 22, 2013, and there is no evidence that he
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`continued to sell Calibrated’s Tuning Guide after commencement of suit. Thus, it does
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`not appear that there is a substantial likelihood that Charters will continue to commit
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`copyright infringement.
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`Second, Calibrated fails to address the four factor test used to determine whether
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`to grant a permanent injunction. As stated, Calibrated bears the burden to show it is
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`entitled to the injunction. Calibrated fails to carry its burden and prove an injunction is
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`necessary. The Court will not grant one.
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`E.
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`Impoundment
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`Calibrated requests an impoundment order. “At any time while an action under
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`this title is pending, the court may order the impounding, on such terms as it may deem
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`reasonable- (A) of all copies... claimed to have been made or used in violation of the
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`exclusive right of the copyright owner.” 17 U.S.C. § 503.
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`The Copyright Act does not provide a standard to follow when granting
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`impoundment orders; instead, granting the order is within the court’s discretion. First
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`Tech. Safety Sys., Inc. v. Depinet, 11 F.3d 641, 647 (6th Cir. 1993). However, some
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`courts hold: “a plaintiff seeking an impoundment must meet the requirements for
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`permanent or preliminary injunctive relief.” WPOW, Inc. v. MRLJ Enterprises, 584 F.
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`Supp. 132, 135 (D.D.C. 1984).
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`There does not appear to be guidance from the Eastern District of Michigan or
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`the Sixth Circuit as to what a court should consider when issuing an impoundment
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`order; however, the Court finds the standard identified in WPOW persuasive. Since
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`Calibrated did not satisfy its burden to prove an injunction is warranted, the Court
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`declines to issue an impoundment order.
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`F.
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`Damages
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`1.
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`17 U.S.C. § 504 Statutory Damages
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`Calibrated requests statutory damages upon a finding that Charters willfully
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`committed copyright infringement. 17 U.S.C. § 504(c)(2) allows for enhanced statutory
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`damages for willful infringement. It says:
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`In a case where the copyright owner sustains the burden of proving, and the court
`finds, that infringement was committed willfully, the court in its discretion may
`increase the award of statutory damages to a sum of not more than $150,000. In a
`case where the infringer sustains the burden of proving, and the court finds, that
`such infringer was not aware and had no reason to believe that his or her acts
`constituted an infringement of copyright, the court in its discretion may reduce the
`award of statutory damages to a sum of not less than $200.
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`Infringement is willful when the infringer has knowledge that the his conduct
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`constitutes copyright infringement. Digital Filing Sys., L.L.C. v. Agarwal, No. 03-70437,
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`2005 WL 1702954, at *2 (E.D. Mich. July 20, 2005). Knowledge may be either actual or
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`constructive. Id. “To prove constructive knowledge, courts have generally required the
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`copyright owner to show that the ‘infringer has acted in reckless disregard of the
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`copyright owner's right.’” Id.
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`“Reckless disregard” has not been defined in the copyright context, but courts
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`give examples as to what constitutes such conduct. For instance, the Western District
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`of New York held that a defendant who repeatedly ignores warnings from a copyright
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`holder that its behavior violates copyright law, or has a history of violating copyright laws
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`acts with a reckless disregard. Wow & Flutter Music, Hideout Records & Distributors,
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`Inc. v. Len's Tom Jones Tavern, Inc., 606 F. Supp. 554, 557 (W.D.N.Y. 1985). The Sixth
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`Circuit noted a defendant exhibits reckless disregard when it continues to commit
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`copyright infringement, relying on the fair use defense even after a court has rejected
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`that defense and entered a consent order forbidding the conduct. Zomba Enterprises,
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`Inc., 491 F.3d at 585. And, the Second Circuit noted that a pattern of unreasonable
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`conduct could demonstrate a reckless disregard. Island Software & Computer Serv.,
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`Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir. 2005).
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`In addition to demonstrating actual or constructive knowledge, a plaintiff can
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`prove willfulness by showing that the defendant exhibited willful blindness to the
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`copyright owner’s rights. Willful blindness is defined as a deliberate effort to avoid guilty
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`knowledge. In re Aimster Copyright Litigation, 334 F.3d 643, 650 (7th Cir.2003).
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`“The determination of willfulness, which requires the assessment of the
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`defendant's intent, is an issue of fact.” International Korwin Corp. v. Kowalczyk, 855
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`F.2d 375, 380 (7th Cir.1988). In general, factual issues are not susceptible to summary
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`judgment, and should instead go to a jury. UMG Recordings, Inc. v. Disco Azteca
`
`Distributors, Inc., 446 F. Supp. 2d 1164, 1174 (E.D. Cal. 2006); Sega Enterprises Ltd. v.
`
`MAPHIA, 948 F. Supp. 923, 936 (N.D. Cal. 1996). Nevertheless, “where the relevant
`
`facts are admitted or otherwise undisputed, willfulness can be appropriately resolved on
`
`14
`
`

`
`2:13-cv-13127-VAR-DRG Doc # 27 Filed 12/15/14 Pg 15 of 18 Pg ID 248
`
`summary judgment.” UMG Recordings, Inc., 446 F. Supp. 2d at 1174.
`
`The Court finds there is a genuine issue of material fact as to whether Charters
`
`acted willfully. Calibrated fails to show that Charters had actual or constructive
`
`knowledge that he was committing copyright infringement. It does not present any
`
`evidence, such as a letter or a legal notice informing Charters of Calibrated’s copyright.
`
`Moreover, Calibrated does not point to any behavior by Charters that imputes
`
`constructive knowledge. For instance, Calibrated does not prove that Charters
`
`continued to sell Calibrated’s Tuning Guide after suit was initiated. Calibrated does not
`
`present evidence Charters ignored warnings about his infringing behavior. Calibrated
`
`does not present evidence that Charters has a history of committing copyright
`
`infringement, which would suggest that he was aware of copyright rights and
`
`infringement liability. Instead, Calibrated presents four arguments it says proves that
`
`Charters acted willfully.
`
`First, Calibrated says Charters acted willfully by using aliases, by way of user
`
`names, on the different websites he used to sell copies of Calibrated’s Tuning Guide.
`
`However, many website users and visitors of chat boards use aliases online. A jury
`
`could conclude that using an alias online shows an intent to hide one’s identity to avoid
`
`being caught selling copyrighted material, but a jury could also conclude that using an
`
`alias is the norm for many online sellers of products.
`
`Second, Calibrated says Charters acted willfully because he downloaded the
`
`Tuning Guide from a website named Pirate Bay, and that should have put him on notice
`
`that he was violating the law. Willfulness can be found if it is determined that a person
`
`should have known the activity was illegal. Eros Entm't, Inc. v. Melody Spot, L.L.C., No.
`
`15
`
`

`
`2:13-cv-13127-VAR-DRG Doc # 27 Filed 12/15/14 Pg 16 of 18 Pg ID 249
`
`99 CV 1157 SJ, 2005 WL 4655385, at *8 (E.D.N.Y. Oct. 11, 2005). Calibrated cites no
`
`authority for its argument that the website name alone imputes notice on the infringer
`
`and satisfies willfulness. Courts have said prior infringing conduct may impute notice
`
`and qualify as willful conduct. See, Wow & Flutter Music, 606 F.Supp. at 55. However,
`
`there is no legal authority that this Court is aware of that says the name of a website
`
`without anything more conveys enough notice and knowledge to support a finding of
`
`willfulness.
`
`Third, Calibrated says Charters was “less than completely truthful” at his
`
`deposition about his user names, email addresses and the websites he advertised the
`
`video on, until confronted by Calibrated with the additional information. While it may be
`
`reasonable to assume Charters was being less than truthful, a jury could also believe
`
`Charters was telling the truth when he said he did not remember all of his user names.
`
`Finally, Calibrated alleges Charters destroyed, concealed, or otherwise failed to
`
`produce evidence that would allow Calibrated to establish the magnitude of Charters’
`
`infringement, thus entitling it to the enhanced award. This point is conclusory, and void
`
`of argument. Calibrated provides no evidence that Charters concealed, destroyed, or
`
`failed to produce anything; thus, this a mere allegation.
`
`Although not explicitly argued as evidence of willfulness, Calibrated mentions that
`
`Charters admitted he knew it was unlawful to copy and sell Calibrated’s Tuning Guide.
`
`Charters Dep. 33:4-5. But, earlier in the deposition, Charters said he did not
`
`understand copyright law or that the material was copyrighted. Charters Dep. 18:9-16. If
`
`Charters did not understand copyright law, then why did Charters believe it was illegal
`
`to copy and sell Calibrated’s Tuning Guide? This question creates a credibility issue. It
`
`16
`
`

`
`2:13-cv-13127-VAR-DRG Doc # 27 Filed 12/15/14 Pg 17 of 18 Pg ID 250
`
`needs to be determined whether Charters was being truthful when he said he did not
`
`understand copyright law and Calibrated’s potential rights. As the Second Circuit noted,
`
`“where, as here, credibility, including that of the defendant, is crucial, summary
`
`judgment becomes improper and a trial indispensable.” Arnstein v. Porter, 154 F.2d
`
`464, 471 (2d Cir. 1946).
`
`The Court will not grant summary judgment on damages. The arguments
`
`Calibrated presents fail to conclusively demonstrate willfulness. Moreover, Charters’
`
`intent and credibility are a factual determination to be resolved by a jury.
`
`2.
`
`17 U.S.C. § 505 Attorney Fees and Costs
`
`In addition to statutory damages, Calibrated requests attorney fees and costs.
`
`17 U.S.C. § 505 says “the court in its discretion may allow the recovery of full costs by
`
`or against any party ... Except as otherwise provided by this title, the court may also
`
`award a reasonable attorney's fee to the prevailing party as part of the costs.”
`
`Since the Court finds a genuine issue of material fact remains concerning
`
`willfulness, the Court reserves ruling on the attorney fee request.
`
`IV.
`
`CONCLUSION
`
`The Court GRANTS Calibrated’s Motion for Summary Judgment on Charters’
`
`liability for copyright infringement. The Court DENIES Summary Judgment for injunctive
`
`relief, damages, and costs. Trial will proceed on the issue of damages only.
`
`IT IS ORDERED.
`
`Dated: December 15, 2014
`
` /s/ Victoria A. Roberts
`Victoria A. Roberts
`United States District Judge
`
`17
`
`

`
`2:13-cv-13127-VAR-DRG Doc # 27 Filed 12/15/14 Pg 18 of 18 Pg ID 251
`
`The undersigned certifies that a copy of this
`document was served on the attorneys of record
`and Jonathan Charters by electronic means or U.S.
`Mail on December 15, 2014.
`
`s/Linda Vertriest
`Deputy Clerk
`
`18

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