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