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September 23, 1999


The opinion of the court was delivered by: Ann Claire Williams, District Judge.


Plaintiffs Glovaroma, Inc. ("Glovaroma"), the Zappa Family Trust (the "Trust"), and Gail Zappa allege that Maljack Productions, Inc. ("MPI") violated the Copyright Act, 17 U.S.C. § 101-1332, and the Trademark Act, 15 U.S.C. § 1051-1127. Plaintiffs also have a claim for an accounting. Both parties now move the court for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. For the reasons set forth below, the court denies plaintiffs' motion for summary judgment but grants defendant's motion for summary judgment in part and denies it in part.


The late Frank Zappa was a legendary rock-and-roll music icon who created many musical works using both audio and video mediums. Since Frank Zappa's death, his widow Gail Zappa has controlled the rights to her deceased husband's creative works through Glovaroma and the Trust. Glovaroma creates and produces videotapes of Frank Zappa's creative works under the registered trademark "Honker Home Video." Gail Zappa owns the right to use Frank Zappa's name, voice, photograph, and likeness as a successor-in-interest, Defendant MPI, and Illinois corporation, is in the business of licensing and distributing video products.

In December 1987, Gail Zappa and MPI reached an oral agreement that gave MPI the right to produce and distribute five Frank Zappa videos under the Honker Home Video trademark label. The videos that are part of this dispute are "Baby Snakes," "Uncle Meat," "Video From Hell," "The True Story of Frank Zappa's 200 Motels," and "The Amazing Mr. Bickford" (the "Videos"). Pursuant to this agreement, MPI had a license to manufacture, rent, sublease, advertise, and market copies of these Videos in the United States. In 1987, MPI began distributing four of the Videos. Early in 1990, MPI began distributing the fifth video.

The copyright registration certificates for the Videos identify Frank Zappa as the author of the new matter. His personal efforts, which were not as "work made for hire," include editing, new lyrics and music, writing, producing, and directing. (Gerber Decl. Exs. O, Q, S, U, W.) The certificates identify part of the new matter as "work made for hire." (Def.'s 12(M) ¶ 4.) MPI contends that no written "work made for hire" agreements exist for the Videos.

The registration certificates for the video sleeves accompanying the videos "Baby Snakes," "Uncle Meat," "Video From Hell," and "The True Story of Frank Zappa's 200 Motels" (the "Four Sleeves") identify Honker Home Video as the author and describe the work as "work made for hire." (Def,'s 12(M) ¶¶ 6-7.) Frank Zappa created the Four Sleeves with help from Greg Gorman, Cal Schenkel, and perhaps others. (G. Zappa Dep. 149-55.) Frank Zappa's personal efforts included graphic design and art direction. (Id.)

Glovaroma does business as Honker Home Video. (Def.'s 12(M) ¶ 8.) Glovaroma had no employees who designed the Four Sleeves. (Def.'s 12(M) ¶ 9.) Furthermore, MPI claims that no written "work made for hire" agreements exist for the Four Sleeves. (Def.'s 12(M) ¶¶ 5, 10.)

The copyright registration certificate for "The Amazing Mr. Bickford" video sleeve (the "Bickford sleeve") identifies Cal Schenkel as the author. (Def.'s 12(M) ¶ 11.) The registration certificate further states that Schenkel transferred copyright ownership of the Bickford sleeve to Frank Zappa "by agreement." (Def.'s 12(M) ¶ 12.) MPI claims, however, that no written agreement regarding the transfer of copyright ownership exists between Schenkel and Frank Zappa. (Def.'s 12(M) ¶ 13.) In 1993, Frank and Gail Zappa reached a written assignment agreement and transferred their ownership of all tangible and intangible property to the Zappa Family Trust. (Plaintiffs.' Resp. Ex. D.)

With respect to the trademark infringement claim, MPI contends that it never signed an agreement that inured its use of the Honker Video label to Glovaroma's benefit. (Def.'s 12(M) ¶ 22.) Therefore, MPI claims that it is the owner of the Honker Home Video label because it initiated the use of the trademark in commerce. (Def.'s 12(M) ¶ 20.) Moreover, MPI only used the Honker Home Video label after May 1994 to sell its existing inventory. (Def.'s 12(M) ¶ 23.) Finally, MPI contends that Gail Zappa's objection to the royalty report in April 1989 demonstrates her earliest knowledge of the alleged under-reporting. (Def.'s 12(M) ¶ 24.)


Both parties move the court to enter summary judgment on their behalf under Rule 56 of the Federal Rules of Civil Procedure. The court will render summary judgment only if the factual record shows "that there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law." Bratton v. Roadway Package Sys., Inc., 77 F.3d 168, 173 (7th Cir. 1996) (quoting Fed.R.Civ.P. 56(c)). The court will not render summary judgment if "a reasonable jury could return a verdict for the nonmoving party. "Sullivan v. Cox, 78 F.3d 322, 325 (7th Cir. 1996) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). In ruling on a motion for summary judgment, the court views the facts in the light most favorable to the nonmoving party. See Bratton, 77 F.3d at 171 (citation omitted); Sullivan, 78 F.3d at 325 (citation omitted).

On a motion for summary judgment, the moving party "bears the initial burden of showing that no genuine issue of material fact exists." Hudson Ins. Co. v. City of Chicago Heights, 48 F.3d 234, 237 (7th Cir. 1995) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). Then the burden shifts to the nonmoving party, which "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); accord NLFC, Inc. v. Devcom Mid-America, Inc., 45 F.3d 231, 234 (7th Cir. 1995) (citations omitted).

These burdens are reflected in Rule 12 of the Local General Rules for the Northern District of Illinois. See Waldridge v. American Hoechst Corp., 24 F.3d 918, 921-22 (7th Cir. 1994). Under Rule 12(M)(3), the moving party must submit a statement of material facts in the form of short numbered paragraphs supported by specific references to the factual record. Under Rule 12(N)(3), the nonmoving party must submit a response to each such paragraph, including (in the case of disagreement) specific references to the factual record.*fn1 If the nonmoving party fails to disagree with a fact in the moving party's 12(M) statement, the court will deem that fact admitted. See Local Rule 12(N)(3). Similarly, if the nonmoving party disagrees with a fact in the moving party's statement but fails to support its disagreement with a specific reference to the factual record, the court may deem that fact admitted as well. See Fed.R.Civ.P. 56(e); Flaherty v. Gas Research Institute, 31 F.3d 451, 453 (7th Cir. 1994) (citations omitted). The Seventh Circuit Court of Appeals has "repeatedly upheld the strict enforcement of these rules." Waldridge, 24 F.3d at 922; see also, e.g., Knoblauch v. DEF Express Corporation, 86 F.3d 684, 690 (7th Cir. 1996).

I. Copyright Infringement

A. The Video Sleeves

To establish copyright infringement, plaintiffs' must prove that they own the copyrights and that defendant copied the "constituent elements of the work that are original." See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Generally, plaintiffs can prove ownership by a copyright registration. See 17 U.S.C. § 401(c). Under the Copyright Act (the "Act"), copyright ownership "vests initially in the author or authors of the work." 17 U.S.C. § 201(a). "As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection." Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). The Copyright Act, however, creates an exception for "works made for hire." 17 U.S.C. § 201(b).

In a "work made for hire," the "author" and initial owner of the copyright is not the creator of the work but the employer or the party that commissioned the work Section 201(b) provides:

  In the case of work made for hire, the employer or other person
  for whom the work was prepared is considered the author for
  purposes of this title, and, unless the parties have expressly
  agreed otherwise in a written instrument signed by them, owns
  all the rights comprised in the copyright.
  Id. Section 101 defines a "work made for hire" as:
  (1) a work prepared by an employee within the scope of his or

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