The opinion of the court was delivered by: Loretta A. Preska, United States District Judge
Plaintiff Kent Baker ("Baker") brings this action against defendants Urban Outfitters, Inc. and Urban Outfitters Wholesale, Inc. (collectively, "defendants" or "Urban") for copyright infringement arising out of Urban's failure to seek permission to use a photograph taken by Baker as a disposable paper insert in one of its plastic picture frames. Presently pending are four separate motions: (1) plaintiff's motion for summary judgment on the issue of copyright infringement; (2) defendants' motion in limine to exclude the expert testimony and expert report of plaintiff's damage expert, Kathy Eng; (3) defendants' motion for partial summary judgment on the issue of damages; and (4) plaintiff's Rule 11 motion. For the reasons set forth below, plaintiff's motions are denied, defendants' partial summary judgment motion is granted, and defendants' motion in limine is granted.
Though the briefing in this case has been substantial, the facts giving rise to this action are reasonably brief and straightforward.
1. The Photograph Baker, a professional photographer, took a series of photographs during a four-week road trip along Route 66 in April and May of 1999. (May 7, 2002 Deposition of Kent Baker, at 27). During the course of the trip, Baker took a photograph (hereafter, "the Photograph") of a man in a cowboy hat, Mark Anthony Howells, leaping from one boxcar to another. (Defendants' Statement of Material Facts Not in Dispute, hereafter "Defs' Statement," at ¶ 1). A collection of the photographs from Baker's trip was subsequently published in 1999 in a hardcover book entitled "66/99 An American Road Trip" (hereafter, "66/99"). (Defs' Statement ¶ 3).
Between September 2000 and March 2001, Urban used the Photograph as the basis for a disposable paper insert (hereafter, the "Paper Insert") in its 8" x 10" plastic picture frame products. (Plaintiff's Statement of Undisputed Material Facts, hereafter "Pl's Statement," at ¶ 2). The Paper Insert was incorporated in, and sold as part of, approximately 862 picture frames, which retailed for $6.00 and cost Urban $1.48 to produce. (Defs' Statement ¶¶ 12-13). Urban's gross profit on the 862 plastic frames was $3,896.00. (Defs' Statement ¶ 14).
Urban used the Photograph without authorization by Baker or by Ipso Facto Publishers ("Ipso"), the publisher of "66/99." (Pl's statement ¶¶ 23-24). Additionally, when preparing the Photograph for use as the Paper Insert in its picture frames, Urban cropped the image, flipped the orientation of the image from right-left to left-right, changed the image from full color to blue and yellow only and incorporated its "Urban Outfitters" mark into the upper right-hand corner of the Photograph. (Pl's Statement ¶¶ 25-28, 47-50).
2. The Licensing of Baker's Work On March 28, 1999, Ipso and Baker entered into a contract wherein Ipso would pay Baker an advance payment of ¶ 1,000. (Defendants' Response to Plaintiff's Motion for Summary Judgment of Copyright Infringement, hereafter "Defs' SJ Resp.," at Exh.A). In exchange, Baker granted Ipso the "sole and exclusive right" to publish "66/99." (Id.). In addition, paragraph 2 of the agreement between Ipso and Baker provides that "The publisher shall further pay the photographer fifty per cent (50%) of the gross amount of the proceeds from the sale of subsidiary rights." (Id.). Upon returning from his trip, the photographs from the trip were compiled and published in "66/99."
As part of a feature story on Route 66, Baker licensed thirteen photographs from his trip to a British publication called The Independent Magazine. (Defs' Statement ¶ 4). In conjunction with the use of those photographs, Baker was paid ¶ 750, or approximately $1,145. (Defs' Statement ¶ 5). Baker also licensed photographs from his Route 66 trip and/or "66/99" to another British publication called i-D Magazine. (Defs' Statement ¶ 6). The photographs were used in two issues of i-D Magazine, first in September 1999 and then in January/February 2000, and Baker was paid i-D Magazine's standard page rate of ¶ 50 per page. (Defs' Statement ¶¶ 7-8).
3. The Instant Action Urban was informed of its infringing conduct when Baker, by his agent Kathy Eng, informed Urban's General Counsel and Secretary, Glenn A. Bodzy, that Urban had infringed Baker's copyright. (Pl's Statement ¶ 74). Urban then entered negotiations with multiple representatives of Baker for use of the Photograph; when it became clear that the matter could not be amicably resolved, in March 2001, Urban took action to remove the picture frames from its shelves and to replace the Paper Insert with a different insert. (Pl's Statement ¶ 74; Defs' Statement ¶ 15). On March 9, 2001, Baker registered the Photograph (as part of a photo essay collection) with the United States Copyright Office. (Appendices to Defendants' Memorandum of Law in Support of Motion for Partial Summary Judgment Pursuant to Fed.R.Civ.P. 56, hereafter "Defs' App.," at Exh. D).
On June 15, 2001, Baker filed an original complaint, alleging copyright infringement, tortious misappropriation of goodwill and infringement under the Digital Millennium Copyright Act. See Compl. ¶¶ 19-43.*fn1 On January 9, 2002, Urban made an Offer of Judgment to Baker, pursuant to Rule 68, in the amount of $9,096. 00. On August 6, 2002, after the close of discovery, Baker filed a motion for sanctions pursuant to Rule 11 of the Federal Rules of Civil Procedure. On August 23, 2002, Urban filed a motion pursuant to Rule 56 of the Federal Rules for summary judgment with respect to Baker's claim for copyright infringement damages and tortious misappropriation.*fn2 On August 26, 2002, Baker filed a motion pursuant to Rule 56 for summary judgment on the issue of copyright infringement. Lastly, on October 10, 2002, Urban filed a motion in limine for an order excluding the expert report and testimony of Baker's damage expert, Kathy Eng.
I. Summary Judgment Standard
Under Rule 56, summary judgment shall be rendered if the pleadings, depositions, answers, interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. See Fed.R. Civ. Proc. 56(c); Anderson v. Liberty Lobby, 477 U.S. 242, 250 (1986). An issue of fact is genuine when "a reasonable jury could return a verdict for the nonmoving party," and facts are material to the outcome of the litigation if application of the relevant substantive law requires their determination. Anderson, 477 U.S. at 248.
The moving party has the initial burden of "informing the district court of the basis for its motion" and identifying the matter that "it believes demonstrate[s] the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
The substantive law determines the facts which are material to the outcome of a particular litigation. Anderson, 477 U.S. at 250; Heyman v. Commerce & Indus. Ins. Co., 524 F.2d 1317, 1320 (2d Cir. 1975). In determining whether summary judgment is appropriate, a court must resolve all ambiguities, and draw all reasonable inferences against the moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)).
If the moving party meets its burden, the burden then shifts to the non-moving party to come forward with "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.Proc. 56(e). The non-moving party must "do more than simply show there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586. Only when it is apparent, however, that no rational finder of fact "could find in favor of the non-moving party because the evidence to support its case is so slight" should summary judgment be granted. Gallo v. Prudential Residential Servs. Ltd. Partnership, 22 F.3d 1219, 1223 (2d Cir. 1994).
II. Baker's Summary Judgment Motion
To establish a claim for copyright infringement, a plaintiff bears the burden of proving both "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
Here, Urban has conceded the copying issue. Thus, the only remaining issue is whether Baker has proven ownership of the copyright. Baker, in his moving papers, states merely that
Baker's work was copyrighted when created in 1999 in
the United States under U.S. copyright law
(17 U.S.C. § 101). Therefore, having proven the
first element, in order to prevail in this motion for
summary judgment, plaintiff will have to show only
that defendants copied the protected work without
Plaintiff's Memorandum of Law in Support of Plaintiff's Motion for Summary Judgment of Copyright Infringement ("Pl's SJ Br.") at 3.
Although it is true that the Photograph was copyrighted upon its creation, it is equally true that the ownership rights in that copyright "may be transferred in whole or in part by any means of conveyance or by operation of law . . ." 17 U.S.C. § 201(d)(1). Urban, in responding to Baker's motion for summary judgment, asserts that a material issue of fact exists as to whether Baker transferred his rights in the Photograph to Ipso as part of the agreement that granted Ipso the rights to "66/99." See Defs' SJ Resp. at 5. According to Urban, the transfer by Baker to Ipso of the "sole and exclusive right" to publish "66/99," see Defs' SJ Resp. Ex. A, could reasonably be construed to include the rights to the photographs contained therein. See Defs' SJ Resp. at 8; see also Werbungs Und Commerz Union Austalt v. Collectors' Guild, Ltd., 930 F.2d 1021, 1026 (2d Cir. 1991) (contract could reasonably be read to transfer rights to the book as well as the illustrations therein). Similarly, Urban contends that the transfer by Baker to Ipso of "subsidiary rights," see id., which include, inter alia, commercial rights to the work, further creates a genuine issue of material fact as to whether the agreement contemplated transfer of rights to the individual photographs.
Baker's agreement with Ipso regarding "66/99" is ambiguous. It may not have transferred any rights to the Photograph; then again, maybe it did. Neither interpretation of the agreement is unreasonable, and a jury could reasonably adopt either interpretation based upon the facts presented. As the Court of Appeals stated in Werbungs, "because the contract is susceptible to more than one reasonable interpretation, ...