The opinion of the court was delivered by: Matthew F. Kennelly, District Judge
MEMORANDUM OPINION AND ORDER
Photographer Russell Bryant, who does business as Russ Bryant Photographer, brought this action against James Gordon, Mach 1, LLC, and John Urtis. Bryant sues for copyright infringement and Lanham Act violations under federal law, and also asserts state law claims of consumer fraud, deceptive trade practices, and common law unfair competition. Mach 1, LLC and Gordon have moved for summary judgment on the infringement claim; defendant Urtis has separately moved for summary judgment on that claim. Bryant has filed a cross-motion for summary judgment as to defendant Urtis on the infringement claim. For the following reasons, the Court grants Mach 1, LLC and Gordon's motion in part and denies it in part. The Court denies Urtis' and Bryant's motions for summary judgment.
Bryant is a professional photographer and former Army Ranger. He claims to hold a valid copyright in a photograph he created that depicts an Army Ranger sniper team (the "Bryant photo"). In June 1996, Bryant was invited to photograph an Army Ranger simulated combat demonstration at the Hunter Army Airfield in Savannah, Georgia. The event Bryant photographed was a demonstration of various combat operations, including an actual sniper team outfitted in Ghillie suits.*fn1 The Army Rangers organized the demonstration for an audience of approximately 100 Vietnam veterans who were former members of the 101st Airborne Division.
In preparation for the combat demonstration photo shoot, Bryant had access to the sniper team that would become the central figures in the Bryant photo. Bryant obtained permission to photograph the sniper team, which was part of the Special Operations Command, 1st Ranger Battalion. The sniper team was an actual combat unit team, not part of the training school. The sniper team Bryant photographed was positioned at the edge of a runway, and each member had prepared his own Ghillie suit consistent with the local vegetation growing at the edge of the airfield. The sniper team members used their own weapons, gear, and camouflage technique. Bryant created various photographs of the sniper team using his own camera equipment, including a selection of cameras, lenses, filters, and a light meter. Though Bryant did not pose the sniper team, he selected the subjects, the positioning between himself and the subjects, framed the images in his viewfinder, and controlled the shutter speed and aperture settings based on the light at the airfield that day.
In 1996, Bryant contacted Mach 1, Inc., a seller of "military motivational merchandise" based in Chico, California, and submitted several of his photographs for the company's consideration, including an additional photo in dispute depicting high altitude, low opening (HALO) parachutists jumping out of an airplane. In 1997, Daniel Salcedo, the creative director of Mach 1, Inc., selected the Bryant photo to be included in a coffee table book entitled Eagle Eyes. The Bryant photo was the first photograph in the book, which also included works by other photographers, including John Urtis.
The Bryant photo was reprinted numerous times by Mach 1, Inc. under the direction of Salcedo. Mach 1, Inc. used the Bryant photo in at least one book, a calendar, and various other items of merchandise, such as posters and t-shirts. Mach 1, Inc. also inserted the Bryant photo into a motivational poster entitled "Patience." In the Patience layout, the Bryant photo was placed in the center of a black background with a white border. Beneath the Bryant photo, Salcedo inserted the phrase "Patience --If you have but one shot at an opportunity, make it count."
In January 2001, Mach 1, Inc. filed for bankruptcy. Shortly thereafter, Bryant, through his attorney Michael Thomerson at McCaller & Associates, filed a proof of claim for $5,150. In late 2001, James Gordon learned that the assets of Mach 1, Inc. would be auctioned for sale. Gordon planned on purchasing the assets, and in anticipation of the purchase, he registered Mach 1, LLC as an Indiana limited liability corporation in December 2001. Defendant Mach 1, LLC sells, among other things, military motivational merchandise.
Gordon purchased Mach 1, LLC's assets in January 2002. The assets he purchased included, among other things, office equipment, computers, 200,000 pre-printed merchandise catalogues, t-shirts, posters, coffee mugs, and books. Mach 1, LLC began to sell on its website, www.mach1.com, the merchandise it purchased from the Mach 1, Inc. bankruptcy asset sale, including the Patience motivational poster bearing the Bryant photo.
In the spring of 2003, Mach 1, LLC began running low on its stock of merchandise bearing the Patience layout. Gordon contacted Salcedo, who was then working at Lodestar, Inc., a stock photography company in California, to purchase the right to reproduce and sell a series of five sniper photographs that Gordon planned to use in several layouts with motivational quotes beneath the photographs. Gordon hoped to purchase a sniper photo to replace Bryant's photo in the Patience layout. Salcedo eventually provided Gordon with a picture taken by Urtis that showed a sniper team in Ghillie suits. The record indicates that the Urtis photo was not yet in existence when Gordon first contacted Salcedo. See Urtis Mot. at 5-7, 17-18. The record is unclear as to when Salcedo actually provided the photos to Gordon. Mach 1, LLC purchased the right to create 1000 prints of the Patience layout with the Urtis photo in three different sizes (13 x 20, 8 x 10, and 5 x 7).
Bryant's second amended complaint focuses on two categories of allegedly infringing merchandise: items containing the Patience layout with the Bryant photo and the HALO photo that were purchased in the Mach 1, Inc. bankruptcy asset sale and then resold by Mach 1, LLC, and items containing the Patience layout with the Urtis photo. Mach 1, LLC and Gordon have moved for summary judgment, arguing that Bryant is precluded from bringing an infringement claim because they purchased the assets of Mach 1, Inc. in bankruptcy without objection by Bryant, who had notice of the sale. Mach 1, LLC and Gordon also contend that they did not commit copyright infringement because the protectible elements of Bryant's photo are not substantially similar to the Urtis photo. In his separate motion for summary judgment, Urtis argues that he did not infringe Bryant's copyright but rather used only the underlying idea of a sniper team in a prone position, which he contends cannot be copyrighted. Bryant has cross-moved for summary judgment against Urtis.
Summary judgment is appropriate when the pleadings, depositions, and other materials in the record show that there is no disputed issue of material fact and that the moving party is entitled to judgment as a matter of law. FED.R.CIV. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). In reviewing a motion for summary judgment, the Court must view the facts in the light most favorable to the nonmoving party and draw all reasonable inferences in its favor. Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986); Lesch v. Crown Cork & Seal Co., 282 F.3d 467, 471 (7th Cir. 2002). A genuine issue of triable fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248.
1. Effect of Mach 1, Inc. Asset Sale
Gordon and Mach 1, LLC argue that Bryant's claim is precluded, in part, by the bankruptcy court order approving the sale of Mach 1, Inc.'s assets and the later sale of those assets.
On November 5, 2001, Mach 1, Inc.'s bankruptcy trustee filed, and served on all creditors and parties in interest (including Bryant), a motion seeking authority to sell certain property of Mach 1, Inc.'s bankruptcy estate. The motion stated that the trustee was seeking permission to sell, free and clear of liens, encumbrances, and claims of interest, "[a]ll of Mach 1's Inventory, Furniture, Fixtures, Equipment, Accounts Receivable, Trademarks, Copyrights, UTB Credits, Customer Lists, Phone Numbers, and Goodwill." Urtis Ex. K. Bryant interposed no objection to the motion. On December 11, 2001, the bankruptcy court granted the motion and entered an order authorizing the trustee to sell that same property, "free and clear of liens, encumbrances and claims of interest, including without limitation the claims of photographers and/or artists ...