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January 28, 2004.


The opinion of the court was delivered by: CHARLES BRIEANT, District Judge

Memorandum and Order

There are before the Court for resolution the following motions, all of which were heard and fully submitted for decision on December 13, 2001. The motions are listed in their order of filing:
Document 53 by Barbara Long, Marie Greener, etc, for Summary Judgment dismissing Plaintiff's complaint and for Summary Judgment on their counterclaim, filed November 27, 2002.
Document 55 by Banfi Vintners and Vina Concha Y Tora for Summary Judgment dismissing the complaint, filed September 27, 2002.
Document 63 by Marilyn Carano for partial Summary Judgment in favor of Plaintiff on the issue of infringement as to Defendants Vina Concha Y Toro and Banfi Vintners, filed October 28, 2002.
Document 67 by Barbara Long and Marie Greener for Summary Judgment dismissing the cross claims of Defendants Vina Concha Y Toro, S.A. and Banfi Vintners, filed November 12, 2002.
This is an action for copyright infringement brought by Marilyn Carano a/k/a Lynn Carano doing business as Carano Graphics, on June 27, 2001. The Court has subject matter jurisdiction Page 2 under 28 U.S.C. § 1338. Vina Concha Y Toro is a corporation existing in, and under the laws of Chile, which makes and exports wine under the brand name Concha Y Toro, loosely translated as "shell and bull". Defendant Banfi Vintners, Inc. is the importer and distributor of Concha Y Toro and of other wines made by other wine makers. For convenience, we refer to Vina Concha Y Tora, and Banfi Vintners simply as Banfi, unless the context indicates otherwise. Defendant Barbara Long does business as Leapfrog Brand Strategies ("Leapfrog"). The co-defendant Marie Greener does business as Greener Group, Inc. Leapfrog describes itself as "a consumer research and brand strategy consulting business". Marie Greener apparently is in the same or similar business as Leapfrog and the two organizations have collaborated to perform services for various manufacturers and wholesalers of packaged products.

  The standards for granting Summary Judgment are so well known as not to require repetition. There are no disputed issues of material fact in this case, although the legal consequences flowing from the facts are hotly contested. The relevant facts are as follows.

  Banfi also is the American distributor for another group of wines sold under the name of Riunite, and, in 1999, Banfi retained Leapfrog to analyze consumer perceptions of the Riunite Brand and to propose improved merchandising techniques, including improved packaging. A specialty of Leapfrog is the use of so-called "focus groups" which involves obtaining a panel of persons, a cross-section of the community, to evaluate the products, their names and packaging and express their reactions to existing packaging and merchandising as well as to possible changes and improvements. The project concerned research to understand the public perception of the Page 3 Riunite Brand and the identification of future opportunities for enhanced sales. These marketing services were performed without a written contract, and eventuated to the satisfaction of the account executive at Banfi, although written contracts are the customary means by which Banfi accomplishes similar work. Leapfrog associated Greener with this project and Ms. Long and Ms. Greener worked directly with Banfi representatives. Long and Greener describe their work output as a "Deliverable".

  In connection with the Riunite project, neither Long nor Greener informed Banfi that they worked with a third party to create visual imagery for their consumer exploratory work with the focus groups. In fact, they did so and they had, in connection with the Riunite project, retained Plaintiff, a graphic artist who works independently, as an independent contractor to develop depictions of the Riunite name in various styles, typefaces and colors which were exhibited to the focus groups by Long and Greener in connection with their work for Banfi. Although the Deliverable for Riunite included visual depictions of the Riunite name in various styles and colors, none of them were actually used by Banfi.

  Pleased with the work done by Leapfrog and Greener for Riunite, Banfi retained Leapfrog to do similar work in connection with its line of Concha Y Toro wines (the Concha Y Toro Project). This retainer was also oral, but it was the expectation of Banfi that Leapfrog would be associated with Ms. Greener in preparing the Deliverable and that the scope of the work would be similar to that actually done for Banfi by the same Defendants in connection with Riunite. Banfi anticipated that the same graphic artist who had worked on the Riunite project, or somebody Page 4 similarly situated would be employed by the Leapfrog-Greener joint venture to produce visual art as part of the Deliverable, just as had been done with the Riunite project.

  The July 13th, 1999 presentation, made to Banfi by Leapfrog, outlines the Concha Y Toro Project in the peculiar argot known to those engaged in marketing research. Leapfrog undertook to "define and dimensionalize brand equities among (Banfi's) current consumers and understand the role of the sub-brands (sub-brand names omitted)" and to "identify leverageable company values, heritage and lore." Leapfrog undertook to "define and map the competitive landscape and to identify opportunities for the brand tomorrow." Included also was an undertaking to "identify untapped life style values and desires that can be linked to the brand opportunity"; "explore the opportunity to own the best of Chile imagery linked to wine" and "develop a range of potential brand positionings". Leapfrog described its efforts as including a four stage process: Discovery; Hypothesis Development; Consumer Exploratory; and Strategic Vision. It promised that "from this approach, we will clearly define an ownable brand positioning and vision with directional tactics to build momentum, engage and sustain customers over time." Familiarity of the reader with the initial presentation of Leapfrog to Banfi in connection with the Concha Y Toro Project is assumed. There was no undertaking therein to design a logo for the brand, and no discussion whatever concerning ownership of the intellectual property rights flowing out of the work.

  With the approval of Banfi and without a written contract, Long and Greener went to work and retained Plaintiff to help them as a graphic artist. Ultimately, Leapfrog was paid $95,927.26, which it shared with Greener, by Banfi for the Deliverable dated October 25, 1999 found as Page 5 Exhibit 9 attached to Document 58 on the Motion. Of this sum, they paid $3,289.11 to Plaintiff Marilyn Carano for her part in the effort.

  To earn her fee, Ms. Carano, at the direction of Long and Greener, drew, and revised, a picture of a shell similar to that of a snail, and took from "clip art" in the public domain, the head of a Bull, to express the concept of "shell and bull". It is the alleged copying of this rendition (upon which Ms. Carano later obtained a copyright registration without designating it as a derivative work from the clip art) that is the basis of this lawsuit.

  Leapfrog showed:he drawing, along with some other labels and graphics, which are not in dispute, to its focus groups and, in its Deliverable of October 25, 1999, included a copy of the graphic prepared for Leapfrog and Greener by Ms. Carano, along with a recommendation that Banfi "own an invocative shell and bull icon that visually distinguishes the brand," and "develop powerful iconography for the brand."

  Greener testified, and this fact is apparently confirmed by all other participants, that Leapfrog did not recommend or expect that Banfi would simply take and use the shell and bull design set forth in the Deliverable, but rather would treat it as a sample rendering of a strategic area to be developed by others (Greener deposition at 219).

  Much of the advice in the Deliverable was very basic. For example, Banfi was told by Long and Greener that "Sunrise name (a sub-brand of Concha Y Toro) clearly says morning, and Page 6 is a disconnect with wine; more suited to orange juice, breakfast food." There are numerous other examples in the Deliverable, some of which show that people retain consultants to tell them that which they ought to know without being told. The Deliverable told Banfi that Concha evokes an archetype of "the feminine watery principle; the universal magic; birth, regeneration, life; love; marriage; fertility; the life-giving female `yin'; a good life, a journey across the sea; the two halves being closely held together in passion", while Toro evokes the archetype of "masculine principle in nature; the solar generative force sacred to all sky gods; male procreative strength; royalty; a king; the roaring bull symbolizes thunder, rain and fertility" (Exhibit 9 at B001631). On the following page of the Deliverable, the consultants presented Ms. Carano's rendering of the bull and the shell, with the bull on the left side of the shell, as an "integrated brand icon — telegraphic and timeless". The consultants wrote "the mystery and magic of the name come to life with an evocative, suggestive icon that integrates the dual principles of the shell and the bull" (Page B001632).

  Familiarity of the reader with the balance of the Deliverable is assumed. Clearly, it is an invitation to the client to adopt, as an icon, a simple replication of a shell and a bull, and although the word logo appears nowhere in the Deliverable, the Concha Y Toro drawing is reproduced again at B0001648 under a heading "Universal Appeal" and described as "distinct and evocative, defines the name, evokes a compelling brand mood and spirit, a powerful highly appealing icon that fits the name of a distinct Chilean wine". Beginning at Page B0001649, other possible icons were presented and described as "supportive but not ownable". These include the name superimposed over a bunch of grapes, the name using the Y in the middle of the name to evoke Page 7 two peaks of the Andes, as well as two modern drawings, one of a wine glass on Page B01650 regarded as "relevant but lacked stature". Other labels are included for all of the different Concha Y Toro wines, with different forms of typeface, including some which were marked "rejected".

  Nowhere in the Deliverable is a symbol attached to the Plaintiff's drawing indicating it is copyrighted, and the Deliverable itself is not copyrighted and bears no sign of such. The parties clearly regarded the various icons suggested, including the shell and the bull, as preliminary and mere suggestions. The Defendant consultants were recommending that Banfi develop powerful iconography, and that the idea of the shell and the bull be used to do so, but neither they nor Banfi regarded Plaintiff's work as a final ...

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