MICHAEL A. OROPALLO, ESQ., JOHN M. NICHOLS, ESQ., HISCOCK & BARCLAY, LLP, Syracuse, NY, Attorneys for Plaintiff and Counterclaim Defendants.
KENNETH M. ALWEIS, ESQ., MOLLY M. RYAN, ESQ., GOLDBERG SEGALLA, Syracuse, NY, Attorneys for Defendants-Counterclaim Plaintiffs.
ALISON DANACEAU, ESQ., ROBERT D. WILDSTEIN, ESQ., BODKER RAMSEY ANDREWS WINOGRAD & WILDSTEIN, P.C., Atlanta, GA, Attorneys for Defendants-Counterclaim Plaintiffs.
MEMORANDUM-DECISION and ORDER
DAVID N. HURD, District Judge.
RPM Displays, Inc. ("RPM") commenced this declaratory judgment action pursuant to the Copyright Act, 17 U.S.C. §§ 101-1302, against defendants Oz Mannequins International; Oz Mannequins USA, Inc. (collectively "Oz"); and Richard Paul and Simone Bowe Goodrick, the owners of Oz, ("the Goodricks, " collectively with Oz, "defendants"). RPM seeks a declaration that defendants' copyrights are invalid; that the mannequins at issue are not copyrightable; and that it has not infringed defendants' copyrights. It also seeks costs and attorneys' fees. Defendants answered and counterclaimed against RPM alleging copyright infringement and unjust enrichment, and against Maurices Inc. ("Maurices") alleging contributory copyright infringement, breach of contract, and unjust enrichment. Defendants also seek attorneys' fees and costs.
Plaintiffs moved for partial summary judgment. Defendants opposed and plaintiffs replied. Oral argument was heard on June 24, 2013 in Utica, New York. Decision was reserved. Discovery is currently stayed pending outcome of the present motion.
II. FACTUAL BACKGROUND
Unless otherwise noted, the following facts are undisputed. RPM is a mannequin design and production company doing business out of Auburn, New York. Oz is a mannequin design and production company doing business in both Australia and the United States. Maurices is a retail clothing chain based in the United States.
In spring 2010, Maurices was looking to have two female mannequins-one junior and one plus-size-produced for use in its stores. According to plaintiffs, Maurices sent out Requests for Proposals ("RFPs") to various mannequin producers, including Oz and RPM. See Oropallo Decl., Ex. 5, ECF No. 40-6. The RFP requested bids for junior and plus-size mannequins and included precise specifications and a photograph of a model in the required pose. Oz was the successful bidder and began consulting with Maurices. Defendants dispute plaintiffs' characterization of the RFP. Exhibit 5 is an email from Matthew Birong, Maurices' Visual Experience Director to Oz (addressed to Paul Goodrick). It discusses the creative design of the plus-size mannequin and attaches a document containing the precise specifications for the plus-size mannequin and a photograph of a model in the required pose. As defendants point out, the email is sent only to Oz, and not to other mannequin producers. Further, it does not indicate that it is a RFP; it does not request bids for mannequins; and it refers only to the plus-size mannequin.
Defendants eventually created the Bella (junior) and Brandy (plus-size) mannequin models (the "Oz mannequins"). On July 19, 2010, Oz and Maurices entered into a purchase agreement, pursuant to which Maurices agreed to purchase junior and plus-size mannequins from Oz. According to defendants, the agreement contained a "Design Rights" provision which specified that Maurices would retain no intellectual property or ownership rights in the Oz mannequins' design and that it was granted only a limited license to use the design. The Oz mannequins were then manufactured and sold to Maurices throughout 2010 and into 2011.
According to plaintiffs, in 2011, Maurices sent out another RFP with the same idea as the previous RFP. RPM was the successful bidder and created its own version of the requested mannequins-Jasmin (junior) and Susie (plus-size)-in accordance with Maurices' ideas, desired pose, and specifications (the "RPM mannequins"). According to defendants however, Maurices sent the Oz mannequins to a variety of companies including RPM and asked those companies to copy the Oz mannequins, in direct breach of its obligations under the agreement with Oz.
Some time between February 29 and March 2, 2012, the Goodricks viewed RPM's mannequins at the GlobalShop Trade Show in Las Vegas, Nevada. The Goodricks suspected RPM of copying the Oz mannequin design. On March 9, 2012, the Goodricks obtained United States Copyright Registrations for their mannequins, Bella and Brandy (the "copyrights"), with registration beginning on the same date. The copyrights refer to the mannequins as "sculptures."
On March 16, 2012, RPM received a cease and desist letter from Oz, which claimed copyright infringement of the Oz mannequins. The letter advised that RPM's Jasmin and Susie mannequins were virtually identical to Oz's Bella and Brandy mannequins. The letter demanded that RPM "cease and desist from the manufacturing, importation, distribution, exportation, sale, public display, and creation of any derivative, immediately." Compl., Ex. A. The letter further demanded that RPM "sequester any and all Infringing Mannequins or any product or material associated therewith, including tools, for destruction and recall any that are in the marketplace." Id . Maurices received a similar cease and desist letter from Oz on the same date. Oropallo Decl., Ex. 4, ECF No. 40-5. Plaintiffs responded to the letters on April 5, 2013, claiming that the Oz mannequins are not protected by copyright law. Oropallo Decl., Ex. 8, ECF No. 40-9.
Plaintiffs then commenced suit on April 25, 2013, seeking, inter alia, a declaration that the copyrights are invalid.
III. SUMMARY JUDGMENT STANDARD
Summary judgment must be granted when the pleadings, depositions, answers to interrogatories, admissions and affidavits show that there is no genuine issue as to any material fact, and that the moving party is entitled to summary judgment as a matter of law. Fed.R.Civ.P. 56; Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247, 106 S.Ct. 2505, 2509-10 (1986). The moving party carries the initial burden of demonstrating an absence of a genuine issue of material fact. Fed.R.Civ.P. 56; Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 2552 (1986). Facts, inferences therefrom, and ambiguities must be viewed in a light most favorable to the nonmovant. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 1356 (1986).
When the moving party has met its burden, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. , 475 U.S. at 586, 106 S.Ct. at 1356. At that point, the nonmoving party "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56; Liberty Lobby, Inc. , 477 U.S. at 250, 106 S.Ct. at 2511; Matsushita Elec. Indus. Co. , 475 U.S. at 587, 106 S.Ct. at 1356. To withstand a summary judgment motion, sufficient evidence must exist upon which a reasonable jury could return a ...