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MAROBIE-FL, INC. v. NATIONAL ASS'N OF FIRE EQUIP.

November 13, 1997

MAROBIE-FL, INC. d/b/a GALACTIC SOFTWARE, Plaintiff,
v.
NATIONAL ASSOCIATION OF FIRE EQUIPMENT DISTRIBUTORS AND NORTHWEST NEXUS, INC., Defendants.



The opinion of the court was delivered by: GETTLEMAN

 Plaintiff Marobie-FL, Inc. d/b/a Galactic Software has filed a complaint against defendants National Association of Fire Equipment Distributors ("NAFED") and Northwest Nexus, Inc. ("Northwest") for copyright infringement (Count I) and unfair competition (Count II). Northwest has filed a cross-claim against NAFED seeking indemnification for any judgment or settlement in favor of plaintiff and for any attorneys' fees, costs or other expenses it incurs. Presently before the court are Northwest's motion for summary judgment against plaintiff on Counts I and II and plaintiff's motion for summary judgment against both defendants on Count I.

 FACTUAL BACKGROUND

 The following facts are undisputed except where otherwise noted. Between September 1993 and March 1994, three volumes of software of "clip art" were developed and released for use by people in the fire service industry. Computer clip art consists of ready-made disks of black and white or color line art drawings and graphics that a computer user can display on his computer and use as artwork. Plaintiff asserts that it owns valid copyrights for each volume of the clip art software.

 The World Wide Web (the "Web") or the Internet is a network of interconnected computers linked by communications lines that allows persons with the appropriate software to access other computers with their local computer through the use of a modem. Information on the Web is published in "Web Pages." A Web Page is a collection of electronic documents which may include text, graphics, sound, or video. A Web Page may enable the user to place information on the Web Page or to receive information from the Web Page.

 NAFED has a Web Page on the Web. Pursuant to a contract between NAFED and Northwest, Northwest provided a host computer for NAFED's Web Page and the access link or connection of NAFED's Web Page to Web users. Earl E. Robisheaux ("Robisheaux"), the administrator of NAFED's Web Page, placed certain files on the Northwest computer for NAFED's Web page. Once placed on Northwest's computer for NAFED's Web page, the files were available to be downloaded by Web users. Plaintiff claims these files contained its copyrighted clip art.

 DISCUSSION

 I. SUMMARY JUDGMENT STANDARDS

 A movant is entitled to summary judgment under Rule 56 when the moving papers and affidavits show there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986); Unterreiner v. Volkswagen of America, Inc., 8 F.3d 1206, 1209 (7th Cir. 1993). Once a moving party has met its burden, the non-moving party must go beyond the pleadings and set forth specific facts showing there is a genuine issue for trial. Fed. R. Civ. P. 56(e); Becker v. Tenenbaum-Hill Assoc., Inc., 914 F.2d 107, 110 (7th Cir. 1990). The court considers the record as a whole and draws all reasonable inferences in the light most favorable to the party opposing the motion. Fisher v. Transco Services-Milwaukee, Inc., 979 F.2d 1239, 1242 (7th Cir. 1992).

 A genuine issue of material fact exists when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986); Stewart v. McGinnis, 5 F.3d 1031, 1033 (7th Cir. 1993). However, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Electrical Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986). "The mere existence of a scintilla of evidence in support of the [nonmoving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmoving party]." Anderson, 477 U.S. at 252.

 II. COPYRIGHT INFRINGEMENT (COUNT I)

 To establish a claim of copyright infringement, plaintiff must demonstrate (1) ownership of a valid copyright and (2) "copying" *fn1" of original constituent elements of the work. See Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 519 (7th Cir. 1996), cert. denied, 136 L. Ed. 2d 842, 117 S. Ct. 956 (1997). Violation of any of the exclusive rights of the copyright owner constitutes infringement. 17 U.S.C. § 501(a). These exclusive rights include the right to reproduce the work, the right to prepare derivative works based on the work, the right to distribute copies of the work to the public, and the right to display the work publicly. 17 U.S.C. § 106(1)-(3) & (5).

 Plaintiff claims that NAFED infringed its copyrights when NAFED's agent Robisheaux, after obtaining files containing plaintiff's clip art from an unknown source, copied the files onto the hard drive of his computer and then copied the files onto the hard drive of Northwest's computer by transmitting them over the Internet, thereby making the files available for distribution through NAFED's Web Page. Plaintiff's allegations against Northwest are slightly more complicated. When an Internet user requests a file that is posted on NAFED's Web Page, Northwest's computer sends the information in the requested file to the user's local computer or Internet address. This process is known as "downloading" a file. The files on NAFED's Web Page are stored in the hard drive of Northwest's computer. According to Northwest, when the information in a requested file is sent to an Internet user, the information passes in electronic form through the Random Access Memory ("RAM") of its computer. Plaintiff claims that Northwest directly infringed its copyrights each time an Internet user downloaded one or more of the files containing plaintiff's clip art because, each time, Northwest's computer "copied" the files from its hard drive to its RAM. Plaintiff also claims Northwest is liable for contributory infringement. *fn2"

 A. INFRINGEMENT BY NAFED

 Plaintiff seeks summary judgment against NAFED on Count I on a theory of direct infringement. Direct infringement does not require any particular state of mind. 17 U.S.C. § 501(a); Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552, 1559 (M.D. Fla. 1993) ("Intent or knowledge is not an element of infringement, and thus even an innocent infringer is liable for infringement"). Accordingly, to establish direct infringement by NAFED, plaintiff need only demonstrate that it owns a valid copyright and that NAFED violated one or more of its exclusive rights as the copyright owner. Harris Custom Builders, 92 F.3d at 519. "A certificate of registration from the U.S. Register of Copyrights constitutes prima facie evidence of the validity of a copyright." Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994). Plaintiff has presented a copy of the copyright registration certificate for each of the three volumes of its clip art software. Neither NAFED nor Northwest disputes the validity of these copyrights. Rather, NAFED claims that plaintiff has failed to show that it is a proper claimant.

 The registration certificate for the first volume of clip art states that the authors of the work are Arnold B. Green ("Green") and Aloysius J. Polaneczky ("Polaneczky") and that the copyright claimant is Marobie-FL, Inc. -- the plaintiff in this case. The registration certificate for the second volume of clip art also states that authors of the work are Green and Polaneczky and that plaintiff is the copyright claimant. The registration certificate for the third volume of clip art states that the author of the work is Green and that plaintiff is the copyright claimant. Only "the legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b). A plaintiff in an infringement case who is not the author of the copyrighted work must therefore "establish a proprietary right through the chain of title in order to support a valid claim to the copyright." Motta v. Samuel Weiser, Inc., 768 F.2d 481, 484 (1st Cir. 1985). NAFED claims that Marobie-PA, Inc. -- a Pennsylvania corporation that preceded Marobie-FL, Inc. -- was the corporation in existence when the clip art software was developed and the corporation that initially sold the clip art software. Although all three registration certificates indicate that plaintiff obtained ownership of the copyright from the authors by assignment, NAFED complains that plaintiff has failed to submit any independent evidence of an assignment to it from either the authors or Marobie-PA, Inc.

 A plaintiff's chain of title from the author is presumed by reason of the registration certificate where the plaintiff obtained an assignment of rights prior to registration. 4 Melville B. Nimmer and David Nimmer, Nimmer on Copyright, § 13.01[A]. In the instant case, plaintiff obtained an assignment of rights from the authors prior to registration. Plaintiff's chain of title may therefore be presumed. NAFED's allegations regarding Marobie-PA, Inc. are irrelevant because there is no evidence that Marobie-PA, Inc. ever owned the copyrights. Moreover, plaintiff has submitted with its reply brief documentation of an assignment to it of the rights and interests in the clip art software. *fn3" Accordingly, plaintiff has demonstrated that it owns valid copyrights for the three volumes of clip art software and that it is a proper claimant.

 Plaintiff has also satisfied the second element of direct infringement: violation of one or more of its exclusive rights as the copyright owner. NAFED admits that Robisheaux obtained copies of files containing plaintiff's clip art and placed the files onto the hard drive of his computer. NAFED also admits that Robisheaux placed the files onto the NAFED Web Page by copying them onto to the hard drive of Northwest's computer. These actions constitute a violation of plaintiff's exclusive right to reproduce the clip art. See Sega Enterprises Ltd. v. Maphia, 948 F. Supp. 923, 931-32 (N.D. Cal. 1996) (copies made each time Sega computer program files uploaded to or downloaded from computer bulletin board service); Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552, 1556 (M.D. Fla. 1993) (uploading files containing digitized copies of plaintiff's copyrighted photographs onto computer bulletin board service constituted unauthorized reproduction); 2 Melville B. Nimmer and David Nimmer, Nimmer on Copyright, § 8.08[A][1] ("input of a work into a computer results in the making of a copy, and hence . . . such unauthorized input infringes the copyright owner's reproduction right").

 The placement of the files containing the clip art on NAFED's Web Page also violated plaintiff's exclusive right to publicly distribute the clip art. See Playboy, 839 F. Supp. at 1556-57 (operator of computer bulletin board service which included files containing digitized copies of plaintiffs copyrighted photographs was liable for unauthorized public distribution). *fn4" NAFED denies that anyone other than Robisheaux or Green actually downloaded and received any files containing plaintiff's clip art from NAFED's Web Page. NAFED admits, however, that once the files were uploaded, they were available for downloading by Internet users and that the Northwest server transmitted the files to some Internet users when requested. Thus, unless a genuine issue of material fact exists with ...


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