Free Reply to Response to Motion - District Court of Arizona - Arizona

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LAW OFFICES One Arizona Center, 400 E. Van Buren Phoenix, Arizona 85004-2202 (602) 382-6000

Laura Zeman (#014713) SNELL & WILMER L.L.P. One Arizona Center 400 E. Van Buren Phoenix, AZ 85004-2202 Telephone: (602) 382-6000 Attorneys for Defendants

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

KENT DYER and SUSAN DYER, husband and wife, Plaintiffs, vs. JASON NAPIER and DANIELLE NAPIER, husband and wife; NAPIER SCULPTURE GALLERY, INC., a Washington corporation, Defendants.

No. CV04-0408 PHX SMM REPLY MEMORANDUM IN SUPPORT OF DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT

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Defendants are entitled to summary judgment because Plaintiffs have failed to raise any genuine issue of material fact that would preclude summary judgment. It is

undisputed that the first act of alleged infringement of Kent A. Dyer's photograph "Mother Mountain Lion with Baby in Mouth" was in or about August 2001 and that the effective date of registration for the photograph did not take place until June 2002.1 Although Plaintiffs have set out additional material facts that purport to preclude Defendants' Motion for Partial Summary Judgment, these facts do not support an exception to 17 U.S.C. § 412 which bars Plaintiffs from recovering statutory damages and attorneys fees for any alleged acts of infringement occurring after copyright registration for the "Mother Mountain Lion with Baby in Mouth" photograph.
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Plaintiffs' Memorandum of Points and Authorities Opposing Defendants' Motion for Partial Summary Judgment, page 2
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I.

DEFENDANTS' ARE ENTITLED TO SUMMARY JUDGMENT ON THE ISSUE OF STATUTORY DAMAGES AND ATTORNEY'S FEES Plaintiffs concede that they are not eligible for statutory damages and attorney's

fees under 17 U.S.C. § 412 for Defendants' alleged copyright infringement up to June 3, 2002.2 Therefore, the only remaining issue is whether Plaintiffs are entitled to statutory damages and attorney's fees for Defendants' alleged copyright infringement after the date of Plaintiffs' copyright registration. A. The Legistrative History Of 17 U.S.C. § 412 Supports The Position That Plaintiffs Are Barred From Recovering Statutory Damages And Attorney's Fees

The purpose of 35 U.S.C. § 412 is to induce copyright owners to promptly register their works. The purpose of § 412 is set forth in the House Report on the 1976 Copyrights Act, 90 Stat. 2541 (1976), as follows: Section 412. Registration as Prerequisite to Certain Remedies. The need for section 412 arises from two basic changes the bill will make in the present law (1) Copyright registration for published works, which is useful and important to users and the public at large, would no longer be compulsory, and should therefore be induced in some practical way. (2) The great body of unpublished works now protected at common law would automatically be brought under copyright and give statutory protection. The remedies for infringement presently available at common law should continue to apply to these works under the statute, but they should not be given special statutory remedies unless the owner has, by registration, made a public record of his copyright claim. Under the general scheme of the bill, a copyright owner whose work has been infringed before registration would be entitled to the remedies ordinarily available in infringement cases: an injunction on terms the court considers fair, and his actual damages plus any applicable profits not used as a measure of damages. However, section 412 would deny any award of the special or "extraordinary" remedies of statutory damages or attorney's fees where infringement of the copyright in an unpublished work began before registration or where, in the case of a published work, infringement commenced after publication and before registration (unless registration has been made with a grace period of three months after publication). These
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Plaintiffs' Memorandum of Points and Authorities in Support of Plaintiffs' Opposition to Defendants' Motion for Partial Summary Judgment, page 3
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provisions would be applicable to works of foreign and domestic origin alike. In providing that statutory damages and attorney's fees are not recoverable for infringement of unpublished, unregistered works, clause (1) of section 412 in no way narrows the remedies available under the present law. With respect to published works, clause (2) would generally deny an award of those two special remedies where infringement takes place before registration. As an exception, however, the clause provides a grace period of three months after publication during which registration can be made without loss of remedies: full remedies could be recovered for any infringement begun during the three months after publication if registration is made before that period has ended. This exception is needed to take care of newsworthy or suddenly popular works which may be infringed almost as soon as they are published, before the copyright owner has a reasonable opportunity to register his claim. H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. 158, reprinted in 1976 U.S. Code Cong. & Admin. News, 5669, 5774. It was the intent of Congress to deny the extraordinary relief of statutory damages and attorney's fees to those who fail to timely register their copyrights. If the statute were interpreted to allow these extraordinary remedies for an infringing act which occurs before registration and recurs after registration, it would defeat this intent. Parfums

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Givenchy, Inc. v. C & C Beauty Sales, Inc., 832 F.Supp. 1378, 1895 (Central District of California 1993); Singh v. Famous Overseas, Inc., 680 F. Supp 533, 535-36 (E.D.N.Y. 1988); Mason v. Montgomery Data, Inc., 741 F.Supp. 1282, 1286 (S.D. Texas 1990), rev'd on other grounds, 967 F.2d 135 (5th Cir. Texas 1982). B. Additional Material Facts Cited by Plaintiffs Do Not Constitute "New" Or "Separate" Post-Registration Infringing Activities

Plaintiffs have set forth several material facts which they contend create "new" or "separate" post-registration activities that allow for statutory damages. These facts include the customization of Defendants' large and small size "Precious Cargo" sculptures for their customers, the charging of different prices for the "Precious Cargo" sculptures, the gifts of Defendants' "Precious Cargo" sculptures to various individuals, the retention of personal copies of Defendants' "Precious Cargo" sculptures, and the continued sale of Defendants' "Precious Cargo" sculptures subsequent to being served

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with Plaintiffs' complaint. None of these material facts constitute "new" or "separate" post registration infringing activities that would allow for statutory damages. Courts have interpreted the words "commencement of infringement" in 17 § 412(2) as the first act of infringement in a series of on-going separate infringements. Mason v. Montgomery Data, Inc., 741 F.Supp. 1282, 1286 (S.D. Texas 1990); Whelan Assocs., Inc. v. Jaslow Dental Lab, Inc., 609 F.Supp. 1325, 1331 (E.D. Pa.), aff'd on other grounds, 797 F.2d 1222 (3rd Cir. 1986), cert denied, 479 U.S. 1031, 93 L. Ed. 2d. 831, 107 S. Ct. 877 (1987). A Plaintiff may not recover an award of statutory damages and attorney's fees for infringement that commenced after registration if the same Defendant commenced an infringement of the same work prior to the registration. Mason v. Montgomery Data, Inc., 967 F.2d 135, 144 (5th Cir. 1982). In the instant case, Defendants are accused of committing the same activities (i.e. copying Plaintiffs' photograph) each time, for the same purpose, and using the same copyrighted material (i.e. Plaintiffs' photograph entitled "Motion Mountain Lion with Baby in Mouth"). These alleged acts of infringement clearly constitute a series of on-going separate infringements of the same work with the first alleged act of infringement occurring before registration of the work and the subsequent alleged acts occurring after registration of the work. Therefore, Plaintiffs cannot recover statutory damages and attorney's fees for post-registration acts. Plaintiffs cite Mason and Whelan Associates, Inc. to identify an exception to the language of 17 U.S.C. § 412, namely that a "new" or "separate" basis for the award of statutory damages is created when there is a difference between pre- and post- infringing activities. However, Plaintiffs' contention that certain material facts3 constitute "new" or i.e. the customization of Defendants' large and small size "Precious Cargo" sculptures for their customers, the charging of different prices by Defendants for the "Precious Cargo" sculptures, Defendants' gifting of "Precious Cargo" sculptures to various individuals, the retention of personal copies of Defendants' "Precious Cargo" sculptures, and the continued sale of Defendants' "Precious Cargo" sculptures subsequent to service of this lawsuit (See page 6 of Plaintiffs' Memorandum of Points and Authorities Opposing Defendants' Motion for Partial Summary Judgment).
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"separate" acts of infringement is not consistent with these cases. In Whelan Associates, Inc., Plaintiff argued that a single licensed computer program sold by Defendants prior to Plaintiff's copyright registration was different from the later infringing programs which included improvements. In response, the Court found Plaintiff's first act of infringement, i.e. the single license sold by the Defendants prior to the copyright registration, to constitute the first act of infringement in a series of on-going discrete infringements that precluded attorney's fees under 17 U.S.C. § 412. Whelan Associates, Inc. at 1331. Further, in Mason, Plaintiff published 233 maps

between 1967 and 1980 and registered the copyright for only one map in October 1968. By the time Plaintiff got around to registering the remaining 232 maps, Defendants had already reorganized and used Plaintiff's maps. As a result, the court found that Plaintiff could only recover statutory damages and attorney's fees for infringements of the map that was registered in 1968. Mason at 144. Defendants are accused of infringing Plaintiffs' same photograph before and after the copyright registration for the photograph. Accordingly, Plaintiffs are not entitled to statutory damages and attorneys fees. II. CONCLUSION For the foregoing reasons, the Defendants respectfully request that the Court grant partial motion for summary judgment in its favor barring Plaintiffs from recovering statutory damages and attorney's fees. DATED this _____ day of September, 2005. SNELL & WILMER L.L.P.

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By /s Laura J. Zeman Laura J. Zeman One Arizona Center 400 East Van Buren Street Phoenix, Arizona 85004-2202 Attorneys for Defendants

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CERTIFICATE OF SERVICE I hereby certify that on September 12, 2005, I electronically transmitted the attached document to the Clerk's Office using the CM/ECF System for filing and transmittal of a Notice of Electronic Filing to the following CM/ECF registrants: Christopher D. Lonn, Esq. [email protected] Michelle Justine Perkins [email protected] s/Laura Zeman _

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