The opinion of the court was delivered by: Ann Claire Williams, District Judge.
MEMORANDUM OPINION AND ORDER
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
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)
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
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)
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