United States District Court, D. Columbia.
[Copyrighted Material Omitted]
ART DRAUGLIS, Plaintiff, Counter Defendant: Jerold I.
Schneider, LEAD ATTORNEY, SCHNEIDER ROTHMAN INTELLECTUAL
PROPERTY LAW GROUP PLLC, Boca Raton, FL.
KAPPA MAP GROUP, LLC, Defendant, Counter Claimant: Esther
Yong, LEAD ATTORNEY, LEWIS BAACH PLLC, Washington, DC;
Clifton Travis Tunnell, PRO HAC VICE, ANDERSON DAILEY LLP,
BERMAN JACKSON, United States District Judge.
Art Drauglis brought this copyright action against defendant
Kappa Map Group, LLC, arising out of defendant's use of a
photograph taken by plaintiff as the cover art for a
commercially-released Montgomery County, Maryland street
atlas. Compl. [Dkt. # 1]. In Count I, plaintiff claims that
defendant infringed his valid copyright in the photograph, in
violation of 17 U.S.C. § 501, when it copied his work
and used it on the atlas's cover without plaintiff's
permission. Id. ¶ ¶ 19-24. In Count II,
plaintiff alleges that defendant included false copyright
management information (" CMI" ) for the photograph
in the atlas, in violation of 17 U.S.C. §
1202(a). Id. ¶ ¶ 25-28. The
parties filed separate cross-motions for summary judgment on
alleges that defendant infringed his copyright in the
photograph because it " copied Plaintiff's work and
made derivatives of the work without Plaintiff's
authorization in violation of 17 U.S.C. § 501."
Id. ¶ 22. But plaintiff uploaded the photograph
to a public photo-sharing website, where he did not assert
exclusive rights to his copyrighted image, and he instead
opted to license the work and make it available for use by
others without compensation. Plaintiff repeatedly voices
consternation in his pleadings about defendant's
distribution of the publication that displayed his work on
its cover for profit, but of the many licenses available to
choose from, plaintiff selected the one that specifically
authorized commercial use. So the only issue before the Court
in Count I is whether defendant -- which gave plaintiff full
credit for the work it displayed on the cover of its
publication -- complied with the technical terms of the
license under which plaintiff published the work. The Court
finds that it did. As for Count II, the Court finds that the
allegedly false copyright notice was not " conveyed in
connection with" the photograph, which is the necessary
predicate for a successful section 1202 claim. Thus, the
Court will grant defendant's motions for summary judgment
on both counts.
April 27, 2008, plaintiff took a photograph entitled "
Swain's Lock." Def.'s Statement of Undisputed
Material Facts in Supp. of Its Mot. for Partial Summ. J.
[Dkt. # 17-2] (" Def.'s SOF" ) ¶ 4;
Pl.'s Concise Statement of Undisputed Facts in Supp. of
Mot. for Partial Summ. J. on Count I of the Compl. [Dkt. #
20-1] (" Pl.'s SOF" ) ¶ 3; see
also Ex. A to Decl. of Karen Taragowski in Supp. of
Pl.'s Mot. for Partial Summ J. [Dkt. # 16-1] (the "
Photograph" ). Plaintiff then posted the
Photograph publicly to the Flickr page he shares with his
wife. Def.'s SOF ¶ 5; Pl.'s SOF ¶ 5. When
plaintiff posted the Photograph on Flickr, he indicated that
it was protected by copyright, but that it was licensed
pursuant to the Creative Commons Attribution-ShareAlike 2.0
license (" the CC BY-SA 2.0 license"
). Def.'s SOF ¶ 6, Pl.'s SOF
¶ 6. On June 9, 2014, plaintiff registered the
Photograph with the Register of Copyrights. Ex. 1 to Notice
of Filing Certificate of Copyright Registration [Dkt. #
is a Pennsylvania-based publisher of maps and atlases.
Def.'s SOF ¶ ¶ 2-3; Pl.'s SOF ¶ 1. At
some point after plaintiff uploaded the Photograph to Flickr,
defendant downloaded a copy of the Photograph from
plaintiff's Flickr account, and in July 2012, it began
publishing and selling a local atlas, entitled the "
Montgomery Co., Maryland Street Atlas," with the
Photograph on the cover under the title banner. Def.'s
SOF ¶ ¶ 7, 15-16; Pl.'s SOF ¶ 7. The way
in which defendant used the Photograph and how it provided
plaintiff with attribution for the Photograph in the atlas
are the focus of this lawsuit. So, on June 26, 2015, the
Court ordered defendant to provide the Court with a copy of
the atlas for its review. Minute Order (June 26, 2015).
Defendant complied, and a copy of the atlas has been made
part of the record in this case. Notice [Dkt. # 37] (the
" Atlas" ).
half of the front cover of the Atlas is comprised of the
title banner, a list of the regions within the county covered
by the Atlas, and a list of features shown on the maps. Atlas
at 1. The bottom half of the front cover
consists exclusively of a color reproduction of the
Photograph, with no text or pictures obscuring it.
Id. Nothing on the front cover identifies who took
the Photograph, but the following text appears at the bottom
of the back cover of the Atlas:
Photo: Swain's Lock, Montgomery Co., MD
Photographer: Carly Lesser & Art Drauglis, Creative Commoms
Id. at 116. The top half of the back cover consists
of the same blue and black logo and title banner that appears
on the front, and the bottom half includes advertisements for
other products sold by defendant and its affiliates, along
with the photo credit set forth above. Id.
inside front cover of the Atlas consists of a legend and an
index of key places in the county. Id. at 2. The
first page of the Atlas itself contains its table of
contents, and that page also bears a copyright notice, which
Copyright © Kappa Map Group, LLC 2012. Portions ©
Navteq 2011. All
Rights Reserved. Reproduction, in whole or in part, by any
means whatsoever, is expressly prohibited without permission
from the publisher.
Id. at 3. Pages 2 through 81 of the Atlas are all
maps, and each individual page displays the following
copyright notice at the bottom: " © Kappa Map
Group, LLC." Id. at 4-83. Pages 82 through 111
comprise the index, the final page -- 112 -- is left blank
for notes, and the inside of the back cover is an
advertisement for other Kappa Map travel products.
Id. at 84-115.
filed the two-count complaint in this case on June 19, 2014,
seeking declaratory and injunctive relief, damages, fees, and
costs. Compl. at 5 ¶ ¶ a--f. Defendant answered and
asserted three counterclaims against plaintiff, seeking a
declaratory judgment of non-infringement of copyright and a
declaratory judgment of non-falsification of CMI, as well as
attorneys' fees and costs. Answer & Countercls. [Dkt. #
6] at 9-12.
discovery, defendant moved for summary judgment on Count I,
plaintiff's copyright infringement claim, and plaintiff
filed a cross-motion seeking judgment in his favor on the
same count. Def.'s Mot. for Partial Summ. J. [Dkt. # 17]
(" Def.'s Count I Mot." ); Pl.'s Mot. for
Partial Summ. J. on Count I & Mem. of P. & A. [Dkt. # 20]
(" Pl.'s Count I Mot." ). Meanwhile, it was
plaintiff who moved for summary judgment on Count II, the
falsification of CMI claim, and defendant filed a
cross-motion. Pl.'s Mot. for Partial Summ. J. & Mem. of
P. & A. [Dkt. # 14] (" Pl.'s Count II Mot." );
Def.'s Mot. for Partial Summ. J. as to Count II [Dkt. #
21]. On July 10, 2015, the Court heard oral argument on both
counts. Minute Entry (July 10, 2015).
judgment is appropriate " if the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The party seeking summary judgment bears
the " initial responsibility of informing the district
court of the basis for its motion, and identifying those
portions of the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, which it believes demonstrate the absence
of a genuine issue of material fact." Celotex Corp.
v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91
L.Ed.2d 265 (1986) (internal quotation marks omitted). To
defeat summary judgment, the non-moving party must "
designate specific facts showing that there is a genuine
issue for trial." Id. at 324 (internal
quotation marks omitted). The existence of a factual dispute
is insufficient to preclude summary judgment. Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct.
2505, 91 L.Ed.2d 202 (1986). A dispute is "
genuine" only if a reasonable fact-finder could find for
the non-moving party; a fact is " material" only if
it is capable of affecting the outcome of the litigation.
Id. at 248; Laningham v. U.S. Navy, 813
F.2d 1236, 1241, 259 U.S. App.D.C. 115 (D.C. Cir. 1987).
The rule governing cross-motions for summary judgment . . .
is that neither party waives the right to a full trial on the
merits by filing its own motion; each side concedes that no
material facts are at issue only for the purposes of its own
motion." Sherwood v. Wash. Post, 871 F.2d 1144,
1147 n.4, 276 U.S. App.D.C. 404 (D.C. Cir. 1989),
quoting McKenzie v. Sawyer, 684 F.2d 62, 68 n.3, 221
U.S. App.D.C. 288 (D.C. Cir. 1982), abrogated on other
grounds by Berger v. Iron Workers Reinforced Rodmen,
Local 201, 170 F.3d 1111, 1125-26, 335 U.S. App.D.C. 179
(D.C. Cir. 1999). In assessing each party's motion,
" [a]ll underlying facts and inferences are analyzed in
the light most favorable to the non-moving party."
N.S. ex rel. Stein v. District of Columbia, 709
F.Supp.2d 57, 65 (D.D.C. 2010), citing Anderson, 477
U.S. at 247.
Defendant is entitled to summary judgment on Count I because
its use of the Photograph in the Atlas did not exceed the
scope of the CC BY-SA 2.0 license.
Count I, plaintiff asserts a claim for copyright infringement
pursuant to 17 U.S.C. § 501. Compl. ¶ ¶ 20-22.
" A plaintiff seeking to establish copyright
infringement must prove (1) ownership of a valid copyright,
and (2) copying of constituent elements of the work that are
original." MOB Music Publ'g v. Zanzibar on the
Waterfront, LLC, 698 F.Supp.2d 197, 201-02 (D.D.C.
2010), quoting Stenograph LLC v. Bossard Assocs.,
Inc., 144 F.3d 96, 99, 330 U.S. App.D.C. 147 (D.C. Cir.
1998). The parties do not dispute that plaintiff is the
holder of a valid copyright for the Photograph. See
Def.'s SOF ¶ 6; Pl.'s SOF ¶ 4. And
defendant admits that it downloaded the Photograph from
plaintiff's Flickr page and published and sold the Atlas
with a copy of the Photograph on the cover. Def.'s SOF
¶ ¶ 15-16. So plaintiff has made out a prima facie
case of copyright infringement, but that is not where the
dispute in this case lies.
[A] 'copyright owner who grants a nonexclusive license to
use his copyrighted material waives his right to sue the
licensee for copyright infringement' and can sue only for
breach of contract." Jacobsen v. Katzer, 535
F.3d 1373, 1380 (Fed. Cir. 2008), first quoting Sun
Microsys., Inc., v. Microsoft Corp., 188 F.3d 1115, 1121
(9th Cir. 1999), abrogated on other grounds by
Perfect 10, Inc. v. Google, Inc., 653 F.3d 976,
979-80 (9th Cir. 2011), and then citing Graham v.
James, 144 F.3d 229, 236 (2d Cir. 1998); see
also Atkins v. Fischer, 331 F.3d 988, 992, 356
U.S. App.D.C. 403 (D.C. Cir. 2003) (" [T]he existence of
an implied license is an affirmative defense to
infringement." ). Only where " a license is limited
in scope and the licensee acts outside the scope" can
" the licensor . . . bring an action for copyright
infringement." Jacobsen, 535 F.3d at 1380,
first citing S.O.S., Inc. v. Payday, Inc., 886 F.2d
1081, 1087 (9th Cir. 1989), and then citing Nimmer on
Copyright, § 1015[A] (1999); see also
S.O.S., Inc., 886 F.2d at 1087 (" A licensee
infringes the owner's copyright if its use exceeds the
scope of its license." ), citing Gilliam v. Am.
Broad. Cos., 538 F.2d 14, 20 (2d Cir. 1976).
does not dispute that he published the Photograph pursuant to
the CC BY-SA 2.0 license. Pl.'s SOF ¶ 6. And his
counsel agreed with the Court's statement that this
particular license " specifically authorizes commercial
use." Tr. of Mots. Hr'g (July 10, 2015) ("
Hr'g Tr." ) 65:21-66:2; see also About the
Licenses, Creative Commons,
http://creativecommons.org/licenses/ (last visited Aug. 18,
2015) (describing the " CC BY-SA" l i cense as one
which " lets others remix, tweak, and build upon [an
author's] work even for commercial purposes" ). So
the only issue to be determined is whether defendant's
use of the Photograph in the Atlas " was outside the
scope of the License." SeeJacobsen,