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Under a Foot Plant, Co. v. Exterior Design, Inc.

United States District Court, D. Maryland

September 1, 2016



          Beth P. Gesner United States Magistrate Judge

         Plaintiff Under A Foot Plant, Co. (“plaintiff” or “UAFP”) moves for partial summary judgment on the issue of liability in this copyright infringement case against defendant Exterior Design, Inc. (“defendant” or “EDI”). Currently pending before the court are: (1) Defendant Exterior Design, Inc.'s Motion for Judgment on the Pleadings and to Strike (“Defendant's Motion”) (ECF No. 59); (2) Plaintiff Under A Foot Plant, Co.'s Motion for Partial Summary Judgment (“Plaintiff's Motion”) (ECF No. 60); (3) Defendant's Response in Opposition to Plaintiff's Motion (“Defendant's Response”) (ECF No. 61); (4) Plaintiff's Response in Opposition to Defendant's Motion (“Plaintiff's Response”) (ECF No. 62); (5) Defendant's Reply to Plaintiff's Response in Opposition (“Defendant's Reply”) (ECF No. 63); and (6) Plaintiff's Reply to Defendant's Opposition (“Plaintiff's Reply”) (ECF No. 64). The issues are fully briefed, and no hearing is necessary. Loc. R. 105.6. For the reasons stated below, Plaintiff's Motion is GRANTED IN PART and DENIED IN PART, and Defendant's Motion is GRANTED IN PART and DENIED IN PART.


         This case was filed originally in the United States District Court for the District of Oregon. (ECF No. 1.) Defendant's motion to transfer venue was granted, and venue was transferred to this court on March 24, 2015. (ECF No. 17.) After transfer to the District of Maryland, this case was assigned initially to Judge Bredar and, with leave of court, plaintiff filed its First Amended Complaint (“Complaint”) (ECF No. 37), and defendant filed its Answer to First Amended Complaint (“Answer”) (ECF No. 38). With the parties' consent (ECF Nos. 57, 58), Judge Bredar referred this case to the undersigned for all proceedings pursuant to 28 U.S.C. §636(c) and Local Rule 301 on February 19, 2016. (ECF No. 54.) The parties' now-pending motions (ECF Nos. 59, 60) were filed on March 17, 2016 and have been fully briefed.


         Except where noted, the following facts are undisputed.

         Plaintiff Under A Foot Plant, Co. is a business which markets and sells the “STEPABLES®” line of perennial plants, which are conducive to foot traffic and used in pathways, walkways, and borders and to replace grass lawns. (ECF No. 60-3, Declaration of Frances White (“White Decl.”) at ¶ 2.)[1]

         Plaintiff published the “STEPABLES® - Good For Your Sole Brochure” (“the brochure”) on August 27, 2004. (ECF No. 60, Ex. 22.)[2] Plaintiff's copyright application for that brochure was filed on February 1, 2005, and the registration issued on February 7, 2005, Copyright Certificate #VA 1-301-474. (Id.) Plaintiff also published the “2005 STEPABLES.COM” website (“the website”) on April 28, 2005. (ECF No. 60, Ex. 23.) Plaintiff filed a copyright application for the website on July 27, 2005, and the registration for the website issued on July 29, 2005, Copyright Certificate #VA 1-333-190. (Id.)

         The Stepables brochure and website contain photographs created by Frances White, the president of UAFP. (ECF No. 60-3, White Decl.) Ms. White authorized plaintiff to use at least twenty-one (21) of her photographs in plaintiff's marketing materials. (Id.) Ms. White subsequently transferred all of her rights, title, and interest in the twenty-one photographs to plaintiff, retaining only a personal use license. (Id.) The twenty-one photographs were first published between 2001 and 2010. (Id.) Ms. White never authorized defendant to use the images. (Id.)

         Prior to filing this lawsuit, plaintiff filed individual copyright applications for twenty-one (21) of the images contained in the brochure and on the website. Registration certificates for eighteen of the twenty-one images (18 of 21) were issued on April 14, 2014.[3] (ECF No. 60, Exs. 1, 2, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19.) Plaintiff filed copyright applications for three additional images, for which registration certificates were issued on May 5, 2014, October 24, 2014, and October 21, 2014, respectively. (ECF No. 60, Exs. 3, 20, 21.)

         Defendant Exterior Design, Inc. is a wholesale nursery and plant distributor which conducts business under the names, “The Perennial Farm, ” “Treadwell Perennials, ” and “Perennial Farm Marketplace.” (ECF No. 60-2, Deposition of Edward Kiley (“Kiley Depo.”) at pp. 51, 109.) Defendant developed the “Treadwell Plants” product line, and markets and sells its plant products via brochures, print, and online media, including at least four websites.[4] (Id. at 51, 196.)

         Plaintiff alleges that defendant copied and used images from plaintiff's brochure and website in its own marketing materials, including on defendant's website and on a trade show booth display.[5] (ECF No. 60-1 at 8-9.)


         Summary judgment is appropriate when “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). A genuine dispute remains “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is properly considered “material” only if it might affect the outcome of the case under the governing law. Id. The party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact. Fed.R.Civ.P. 56(a); Pulliam Inv. Co., Inc. v. Cameo Props., 810 F.2d 1282, 1286 (4th Cir. 1987). On those issues for which the non-moving party will have the burden of proof, however, it is his or her responsibility to oppose the motion for summary judgment with affidavits or other admissible evidence specified in Federal Rule of Civil Procedure 56. Fed.R.Civ.P. 56(c); Mitchell v. Data Gen. Corp., 12 F.3d 1310, 1315-16 (4th Cir. 1993). If a party fails to make a showing sufficient to establish the existence of an essential element on which that party will bear the burden of proof at trial, summary judgment is proper. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).

         When reviewing a motion for summary judgment, the court does not evaluate whether the evidence favors the moving or non-moving party, but considers whether a fair-minded jury could return a verdict for the non-moving party on the evidence presented. Anderson, 477 U.S. at 252. In undertaking this inquiry, the court views all facts and makes all reasonable inferences in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). The non-moving party, however, may not rest on its pleadings, but must show that specific, material facts exist to create a genuine, triable issue. Celotex, 477 U.S. at 324. A “scintilla” of evidence in favor of the non-moving party, however, is insufficient to prevent an award of summary judgment. Anderson, 477 U.S. at 252. Further, “mere speculation” by the non-moving party or the “building of one inference upon another” cannot create a genuine issue of material fact. Cox v. Cnty. of Prince William, 249 F.3d 295, 299-300 (4th Cir. 2001). Summary judgment should be denied only where a court concludes that a reasonable jury could find in favor of the non-moving party. Anderson, 477 U.S. at 252.

         A. Copyright Infringement

         Copyright protection applies to “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102. The owner of a copyright holds exclusive rights over the work, including the right to reproduce all or any part of the copyrighted work. Id. § 106. The copyright owner may sue for infringement when another person violates one of the copyright holder's exclusive rights. See id. § 501. In order to establish a prima facie case of copyright infringement, a plaintiff must demonstrate “that (1) ‘he owned the copyright to the work that was allegedly copied, ' and (2) ‘the defendant copied protected elements of the work.'” Thomas v. Artino, 723 F.Supp.2d 822, 829 (D. Md. 2010), quoting Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350, 353 (4th Cir. 2001).

         1. Plaintiff's Ownership

         In order to prevail on its motion for partial summary judgment, plaintiff first must establish its ownership of a valid copyright in the images. Here, plaintiff has produced several types of evidence in support of its claim of ownership. Defendant, on the other hand, offers absolutely no evidence to dispute plaintiff's ownership, but merely argues-without any evidentiary support-that plaintiff's images should not be accorded a presumption of validity. (ECF No. 61 at 3-4.)

         A “certificate of a [copyright] registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright.” 17 U.S.C. § 410(c). If the certificate of copyright registration is not obtained within five years of the first publication of the work, the work is not entitled to the statutory presumption of validity, and the “evidentiary weight to be accorded the certificate...shall be within the discretion of the court.” 17 U.S.C. § 410(c). See Michael Grecco Photography, Inc. v. Everett Collection, Inc., 589 F.Supp.2d 375, 381-82 (S.D.N.Y. 2008).

         Plaintiff has produced the February 5, 2005 copyright registration certificate #VA 1-301-474 for its brochure (first published on August 27, 2004) and the July 29, 2005 copyright registration certificate # VA 1-333-190 for its website (first published on April 28, 2005). (ECF No. 60, Exs. 22, 23.) The brochure and the website contain fourteen of the twenty-one images which defendant is alleged to have infringed.[6] (ECF No. 60-3, “White Decl., ” ¶¶ 138-39.) The Fourth Circuit has held that “where an owner of a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action of the constituent part.” Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir. 2003) (citing Morris v. Bus. Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001).[7] See also 2 Nimmer on Copyright § 7.16[B][5][c] (citing Xoom). Plaintiff asserts that it is the owner of the copyright in the fourteen images contained in the brochure and on the website. (ECF No. 60-3, “White Decl.”) Defendant offers no evidence to contradict plaintiff's claim of ownership in the underlying images. (See ECF No. 61 at 3.) While plaintiff did not register the constituent images until 2014, the evidence before the court indicates that plaintiff was at all times the owner of these works. Under Xoom, plaintiff's registration of the brochure and website entitles plaintiff to “copyright protection to the underlying preexisting works of each.” Xoom, 323 F.3d at 283. As the brochure and website were registered within five years of their first publication, moreover, plaintiff's copyright in the fourteen underlying images is presumptively valid.

         Plaintiff has produced additional, persuasive evidence in support of its claim of ownership of the seven additional works[8] which defendant is alleged to have infringed.[9] In particular, plaintiff has produced individual registration certificates for the twenty-one images. (ECF No. 60, Exs. 1-21.) Because these certificates of registration were obtained in 2014, more than five years after first publication of the images, they do not constitute “prima facie evidence of the validity of the copyright.” 17 U.S.C. § 410(c). Instead, the “evidentiary weight to be accorded the certificate…[is] within the discretion of the court.” Id. In light of the sworn affidavit of Frances White (in which Ms. White states that she is the creator of the images and that she transferred all rights in the images to plaintiff) and the absence of any contradictory evidence produced by defendant, the court attributes substantial weight to the individual registration certificates and will consider them to be prima facie evidence of plaintiff's valid copyrights in the images. (ECF No. 60-3, “White Decl.”; ECF No. 61 at 3.) See Grecco, 589 F.Supp.2d at 381-82 (finding that plaintiff owned valid copyrights in the images based on the “considerable evidence” produced by plaintiff and the lack of contradictory evidence produced by defendant).

         In sum, through its registration of the brochure and website, through its subsequent registration of the twenty-one individual images, and in the absence of any evidence to the contrary, the court finds that there is no genuine dispute of material fact as to plaintiff's ownership of a valid copyright in the twenty-one images. Accordingly, plaintiff is entitled to summary judgment on the first element of its copyright infringement claim.

         2. Defendant's Copying

         A plaintiff may prove the second element of its infringement claim-defendant's copying-either through direct or circumstantial evidence. Thomas, 723 F.Supp.2d at 830-31. See M. Kramer Manufacturing Co., Inc. v. Andrews, et al., 783 F.2d 421, 445 (4th Cir. 1986) (“If there was clear proof of actual copying by the defendants, that is the end of the case.”); Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350, 353-54 (4th Cir. 2001) (“Where direct evidence of copying is lacking, plaintiff may prove copying by circumstantial evidence in the form of proof that the alleged infringer had access to the work and that the supposed copy is substantially similar to the author's original work.”) Here, plaintiff asserts that there exists both direct and circumstantial evidence of defendant's copying of the protected images. (ECF No. 60-1 at 8-9.)

         a) Direct ...

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