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Motion for Summary Judgment




an individual,


Plaintiff,                                                 Case No.  5:07-CV-133 OC-10-GRJ





an individual,







Defendants, Redacted, move for partial summary judgment on the Plaintiff’s entitlement to statutory damages and attorney’s fees as to the Plaintiff’s Copyright Infringement count (Count I).  Defendants also move for summary judgment on the counts for “Unfair Competition” and “Unfair Competition and Deceptive Trade Practices” (Counts II and III).  Additionally, Redacted moves for summary judgment as to all counts of the complaint.


A.              The Plaintiff’s alleged copyrights were registered after Defendant Redacted began selling the items at issue.


            As noted in the complaint, the Plaintiff’s claims revolve around three fish sculptures to which he claims copyrights: the “short big eye,” the “quillback” and the “purple tail.”  See also Plaintiff’s Depo at page 17-19.[1] All three copyright registrations allegedly held by the Plaintiff were obtained in the year 2006 and are of three-dimensional sculptures that Plaintiff had been making and selling since the early to mid 1990s.  Plaintiff’s Depo at page 17-19.  Approximately three to four years before the Plaintiff allegedly registered his copyrights (in 2003), Defendant Redacted began selling all three fish sculptures.  See Redacted Affidavit[2] (attached hereto as Exhibit A) and Redacted Depo.[3] at pages 124-125.   

B.              The Defendants’ actions were innocent, whilst the Plaintiff’s actions were solely designed to institute litigation.


Defendant Redacted never made the sculptures, always having purchased them from third party vendors without notice of any alleged copyright.  See Redacted Depo. pages 139-140.    The Defendants had no knowledge of the Plaintiff’s copyright or copyright registration, until the instant lawsuit was brought.  See Redacted Depo. 139-140 and Plaintiff’s Depo at page 26. 

Plaintiff, however, admits that the sole purpose he registered his copyrights was to bring the instant action after he learned that Redacted was selling the sculptures identified in the Plaintiff’s complaint.  Plaintiff’s Depo at page 51.   The Plaintiff never bothered to request that that the Defendant(s) stop selling the alleged infringing products, as his first contact with either of the Defendants was the service of his complaint in this lawsuit.  Plaintiff’s Depo at page 26.

C.               Defendant Mary Redacted never belonged in this case.

Defendant Mary Redacted (whom is a friend of Redacted and lives with him in the same household) never sold, copied, or distributed any of the items at issue in this case.  See Mary Redacted Depo.[4] at page 9 and Redacted Depo. at pages 108 -111.   The Plaintiff has no actual facts to support a case against Defendant Mary Redacted and admitted that he did not examine the business license of Mr. Redacted; instead, his suit against her is based solely on the fact that she may be Mr. Redacted’s girlfriend and/or may have “worked in the business.”  Plaintiff’s Depo at page 39-40. 

D.             Any damages allegedly suffered are speculative. 

The Plaintiff admitted that he could only guess as to whether or not he had lost sales due to the Defendants’ actions.  Plaintiff’s Depo at page 49.   Although Plaintiff claims generally that he lost sales, when asked at his deposition what led him to that conclusion, he testified that he “would be speculating.”  Id.

II.              ANALYSIS

A.              The Plaintiff is not entitled to either statutory damages or attorneys’ fees as to Count I of the complaint.            


Count I of the Plaintiff’s claim attempts to state a cause of action for copyright infringement.[5]  Because Defendant Redacted was selling the items at issue years before the Plaintiff registered his copyright, however, the Plaintiff is not entitled to an award of either statutory damages or attorneys’ fees.[6]

Section 412(2) of the Copyright Act provides that neither statutory damages nor attorney’s fees are available for “any infringement of copyright commenced after the first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”[7]  The Copyright Act defines publication as the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.  See Section 101 of the Copyright Act.  Section 412 “leaves no room for discretion, mandating that no attorney’s fees or statutory damages be awarded so long as the infringement commenced before registration of the copyright.” Gerig v. Krause Publications, Inc., 58 F.Supp.2d 1261, 1268 (D.Kan. 1999) citing Johnson v. Jones, 149 F.3d 494, 505 (6th Cir.1998). “[I]nfringement ‘commences’ for the purposes of Section 412 when the first act in a series of acts constituting continuing infringement occurs.” Id. at 1268.

In Mason v. Montgomery Data, Inc. 741 F.Supp. 1282 (S.D. Texas, 1990), the court held that copyright holders were not entitled to statutory damages for any continued infringement, in light of late registration of their copyrights.   After an analysis of the Copyright Act of 1976, as amended, 17 U.S.C. §§ 101-914 (1977 and Supp.1990), the Mason court held that “where the alleged infringing activity commences prior to the registration of a copyright, the copyright claimant may not claim statutory damages for continued post-registration activity.”  Id. at 1285, citing Singh v. Famous Overseas, Inc., 680 F.Supp. 533, 536 (E.D.N.Y.1988); Johnson v. University of Virginia, 606 F.Supp. 321, 325 (W.D.Va.1985).  The court clarified that the words “commencement of infringement” under the Copyright Act means the first act of infringement in a series of on-going separate infringements. Mason 741 F.Supp at 1286.[8] 

In this case, there is no dispute that Defendant Redacted was selling the items that allegedly infringe upon the Plaintiff’s copyright years prior to the Plaintiff registering his copyright in 2006.[9]  In fact, as admitted by the Plaintiff in his deposition, the motivating factor behind him registering his copyright was to bring this lawsuit.  Plaintiff’s Depo at page 51.    Plaintiff never bothered to register his copyright for many years after he began making and selling the sculptures at issue. Plaintiff’s Depo at page 17-19.   He also never bothered to contact either Defendant before this lawsuit, instead opting to immediately bring the instant action.  Plaintiff’s Depo at page 26.   For these reasons, the Plaintiff’s request for statutory damages and attorney’s fees under §§ 504(c) and 505[10] of the Copyright Act should be denied with respect to both Defendants.

B.              The Plaintiff is not entitled to actual damages from lost profits or sales because, as he admitted, they are speculative.


The Plaintiff’s complaint alleges the entitlement to actual damages from lost profits or sales.[11]  As an initial matter, actual damages do not normally include future losses. See Abeshouse v. Ultragraphics, Inc., 754 F.2d 467, 470-71 (2d Cir.1985); Cotter v. Christus Gardens, Inc., 238 F.3d 420 (6th Cir. 2000); see also 4 Nimmer on Copyright, supra p. 6, § 14.02[A], at 14-8 (“The primary measure of recovery of actual damages is based upon the extent to which the market value of the copyrighted work, at the time of infringement, has been injured or destroyed by such infringement.”) However, even assuming for the moment that future losses are included, all the Plaintiff’s actual damages from lost profits or sales are (by his own admission) speculative and therefore unrecoverable.

Both Federal and Florida courts are clear that parties cannot recover for speculative damages.  See e.g. Pfanenstiel Architects, Inc. v. Chouteau Petroleum Co., 978 F.2d 430, 432 (8th Cir. 1992) (Architectural firm whose copyrighted drawings were infringed had not established actual damages of $20,000, which could be recovered over and above infringer’s profits; claim that customer of infringer would have paid copyright holder that amount to design buildings based on drawings was speculative); Flight Training, Inc. v. Tropical, Inc.  2007 WL 5117263 (S.D.Fla., 2007) (“It is settled under Florida law that lost profit damages, like all damages, cannot be speculative and must be proved with reasonable certainty”, citing Nebula Glass Int’l, Inc. v. Reichhold, Inc., 454 F.3d 1203, 1213 (11th Cir. 2006)).

In this case, Plaintiff’s own testimony makes it clear that these alleged damages are only speculative. His testimony is as follows:

Q.              Do you believe that you have lost sales because of either of the defendants’ actions?

A.             Yes.

Q.              Okay. And what leads you to that conclusion?

A.              Uhmm, my, uhmm — well, I would be speculating. Because my customers ask me if I am having my work produced in Haiti . And being that my work is original work I think they wonder why I’m selling knock-offs of my own work.


(e.s.).  Plaintiff’s Deposition at page 49.

By his own admission, the Plaintiff could only speculate as to whether he lost any sales due to either Defendant’s alleged actions.  Therefore, summary judgment is appropriate in favor of both Defendants as to the Plaintiff’s request for actual damages from lost profits or sales.


C.              Federal preemption prohibits the Plaintiff from prevailing on his claims for unfair competition (Count II) and unfair competition and deceptive trade practices (Count III).


The Copyright Act of 1976 (17 U.S.C. § 101 et seq.) serves as federal preemption of all state common law and statutory causes of action that fall within the scope of the Act. 17 U.S.C. § 301(a); 28 U.S.C. § 1338(b).  In a similar situation, the court in Meeco Mfg. Co., Inc. v. True Value Co., Slip Copy, 2007 WL 1051259 (W.D. Wash. 2007) held that because the underlying nature of the state law claims are part and parcel of the copyright claim, those state law claims are preempted.  In this regard, the court held as follows:

The gravamen of this action is plaintiff’s claim that “True Value continues to use and display images of MEECO-brand products in True Value’s electronic catalog.” See Dkt. # 1 at ¶ 1. Under § 106(1) of the Copyright Act, a copyright owner has the exclusive right “to reproduce the copyrighted work.” Therefore, while the elements of plaintiff’s unfair competition claim may not be identical to the copyright claims, “the underlying nature of [MEECO’s] state law claims is part and parcel of a copyright claim” for preemption purposes. See Laws, 448 F.3d at 1144. Accordingly, plaintiff’s fifth claim for unfair competition is preempted and dismissed without prejudice.


(e.s.).  Id. at *4.  See also Blue Nile, Inc. v. Ice.com, Inc., 478 F.Supp.2d 1240, 1249 (W.D. Wash. 2007) (holding that “plaintiff’s unfair competition claim is dismissed as preempted because by incorporating the copyright claims by reference, the unfair competition claim is based on rights equivalent to those protected by copyright”). See also Litchfield v. Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1984) (holding that because the unfair competition and misrepresentation claims are “restatements of the copyright infringement claims, they are preempted by federal copyright law”.)

In this case, Counts II and III of the Plaintiff’s Complaint rely heavily on the same allegations that would support the Plaintiff’s copyright infringement count.   In fact, both Counts II and III fully incorporate all of the allegations of Count I, the copyright infringement count.  Because the elements of Counts II and III of the Plaintiff’s Complaint are part and parcel of a copyright claim, those counts are preempted and summary judgment should be entered in favor of the Defendants on these Counts.

D.              Even assuming Counts II and III are not precluded, the Defendants did not copy the Plaintiff’s work and therefore the Plaintiff cannot recover on those counts.


The elements of a cause of action for unfair competition as alleged in Count II of the Amended Complaint are (1) Plaintiff owns the copyright; (2) Plaintiff’s copyright is valid; and (3) Defendant copied the copyrighted work without authorization. Florida Litigation Guide (2003)[12]Count III includes these elements, plus the addition of willfulness.[13]   In this case, however, it is undisputed that the Defendant Chares Redacted did not himself copy the works at issue – he purchased them unknowing of the Plaintiff’s registered copyright. See Redacted Depo. 139-140.    It is also undisputed that the Defendants were not put on notice of the Plaintiff’s copyright until the instant lawsuit was brought and therefore any unfair actions taken were not willful.  See Redacted Depo. 139-140 and Plaintiff’s Depo. at page 26.   Therefore, the Plaintiff cannot sustain a cause of action for unfair completion or unfair competition and deceptive trade practices and summary judgment is proper on both of these counts. 


E.             Plaintiff’s entire Complaint against Mary Redacted is baseless.

Mary Alice Redacted has never sold, copied, or distributed any of the items at issue in this case, and should be immediately dismissed from this suit.  The Plaintiff was put on notice of this fact from the outset of this litigation via the Defendants’ thirteenth affirmative defense.  Again, on July 17, 2007, the undersigned informed the Plaintiff’s counsel of this fact via a letter stating as follows:

I would like to discuss with you the basis of your complaint against Ms. Mary Alice Redacted.  She has absolutely no involvement in this matter, and the inclusion of her in this suit is completely meritless.  If you have any evidence to the contrary please let me know.  Otherwise, I would kindly ask that you drop her from this suit.


See the attached Exhibit 6.


On November 21, 2007, the Plaintiff took Mr. Redacted’s and Ms. Redacted’s depositions.  As indicated in Mr. Redacted’s deposition, Ms. Redacted was a friend of his with no involvement in the sale or advertising of the sculptures at issue in this case. The deposition of Mary Redacted also confirmed the fact that she is not a proper party to this lawsuit.  Plaintiff’s counsel himself even remarked as to this issue and stated as follows during the deposition on the record:

We have every intention – and I say “we” because Kevin and I have talked – based on the representations and what’s been said here today, to drop Mary Alice.  I have no reason to believe we’re going to change our mind.  I just want you to know.


Deposition of Mary Redacted, at page 16.  Nonetheless, the Plaintiff still failed to thereafter dismiss her from this lawsuit.

On February 18, 2008, the Plaintiff’s deposition was taken.  When specifically asked what facts he had to support his suit against Mary Redacted, he stated the general sentiment that he believed she owned the business – however, he admitted that he had no real facts to support this conclusion other than her relationship with Mr. Redacted.  Plaintiff’s Depo at page 39-40.   Therefore, it is clear that there were no actual facts or theories that would support a claim against Ms. Redacted under any of the Counts in the Plaintiff’s Complaint and therefore complete Summary Judgment in her favor is proper. In addition, because the Plaintiff’s relentless pursuit of Ms. Redacted is completely baseless, the Plaintiff and its counsel are subject to attorneys’ fees, costs and sanctions.  As described below, attorney’s fees, costs, and sanctions are supported by Section 505 of the Copyright Act and/or 8 U.S.C. Section 1927.

1.              Attorney’s fees and costs are warranted against the Plaintiff per Section 505 of the Copyright Act.


The first basis for an award of attorneys’ fees is the Copyright Act, which provides, in relevant part, that “the court may . . . award a reasonable attorney’s fee to the prevailing party as part of costs.” 17 U.S.C. § 505. Awarding fees under this provision is a matter of the court’s discretion, but it is to be applied in an evenhanded manner, i.e., “[p]revailing plaintiffs and prevailing defendants are to be treated alike.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994).

The court may consider the following factors, which are non-exclusive: (1) frivolousness; (2) motivation; (3) objective unreasonableness (both in the factual and in the legal components of the case); and (4) the need in particular circumstances to advance considerations of compensation and deterrence (the “Fogerty factors”). Id. at n. 19. In exercising its discretion, the court must keep in mind the key consideration underlying the Fogerty factors: whether awarding fees would advance the purposes of the Copyright Act. Id.  

The Defendant Mary Redacted is the prevailing party with regard to the claims brought against her and therefore is entitled to an award of attorneys’ fees pursuant to 17 U.S.C. § 505.  All four of the Fogerty factors weigh in favor of awarding fees as this case against her never had merit (a fact acknowledged even by the Plaintiff’s own counsel on record during her deposition) and was apparently only litigated to apply pressure on Mr. Redacted to settle this case.  There is no reasonable reason to continue to include her in this litigation.  Ms. Redacted has been forced to retain and compensate the undersigned counsel, and bear the stress and anxiety of litigation.  Therefore, to fairly compensate her and deter other Plaintiff’s from similar tactics, Defendant Mary Redacted should be awarded her attorneys’ fees pursuant to 17 U.S.C. § 505.  See Capitol Records, Inc. v. Foster, 2007 WL 1028532 (W.D. Okla. Feb. 6, 2007) (awarding attorney’s fees to a defendant per Section 505 of the Copyright Act after questioning plaintiffs’ motivations in pursuing claims against someone not involved in the infringement “to press [the defendant] into settlement after [the plaintiff] had ceased to believe she was a direct or ‘primary’ infringer”).

2.             Attorney’s fees and costs are also warranted per 8 U.S.C. Section 1927 and the Court’s companion inherent powers.


Section 1927 provides: “[a]ny attorney or other person admitted to conduct cases in any court of the United States or any Territory thereof who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys’ fees reasonably incurred because of such conduct.”  The 11th Circuit has “consistently held that an attorney multiplies proceedings ‘unreasonably and vexatiously’ within the meaning of the statute only when the attorney’s conduct is so egregious that it is ‘tantamount to bad faith.’” Amlong & Amlong, P.A. v. Denny’s, Inc., 500 F.3d 1230, 1239 (Fla. 11th Cir. 2007).

In this case, the Plaintiff and his attorney knew that Ms. Redacted was a close friend of Mr. Redacted, both living at the same residence.   The depositions of Mr. Redacted and Ms. Redacted made it clear that she had nothing to do with the Plaintiff’s allegations.  The deposition of the Plaintiff further confirmed that there were no facts supporting the lawsuit brought against Mr. Redacted.  Plaintiff’s Depo at page 39-40.   Even Plaintiff’s counsel acknowledged in her deposition that she should be dropped from this case.   Deposition of Mary Redacted, at page 16.  Despite these facts, the Plaintiff’s case against Ms. Redacted continued and the Plaintiff never sought to drop this case against her.

The only logical reason that the Plaintiff continued to prosecute this case against Ms. Redacted was to use her as a pawn, knowing that the stress and aggravation of litigation that she would experience could be used as leverage against Mr. Redacted in an attempt to force him to capitulate and settle. There is no other reason why she would continue to be included in this lawsuit after her deposition, and especially after the deposition of the Plaintiff.  This is exactly the type of bad faith, unreasonable and vexatious behavior that Section 1927 (and this Court’s inherent powers) is designed to curtail and therefore Ms. Redacted should be awarded her fees against Plaintiff’s counsel.

III.             CONCLUSION

Partial summary judgment is proper as to Plaintiff’s claims in Count I for statutory damages and attorneys fees as pled in Count I of his complaint.  Summary judgment is also proper as to Count II and III of the complaint.  All counts of the complaint should be dismissed with respect to Ms. Redacted, and she respectfully requests an award of her attorneys’ fees, costs, and the imposition of sanctions against Plaintiff and his counsel.


/s/ Michael Massey

Michael Massey

Fla. Bar. No. 153680


[1] Excerpts of Plaintiff’s deposition are attached hereto as Exhibit 1.


[2]  Mr. Redacted’s affidavit is attached hereto as Exhibit 2.


[3]  Excerpts of Mr. Redacted’s deposition are attached hereto as Exhibit 3.  Selected exhibits from that deposition are attached as Exhibit 4.

[4]  Ms. Redacted’s deposition is attached hereto as Exhibit 5.


[5] The Defendants dispute that the Plaintiff owns a valid copyright and that the copyrighted material was copied by the Defendants. See Dam Things from Denmark, a/k/a Troll Company ApS v. Russ Berrie & Co., Inc., 290 F.3d 548 at 561 (3d Cir. 2002) (citing Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1231 (3d Cir. 1986)).


[6] Section 504(a) of the Copyright Act provides as follows: “(a) In General.— Except as otherwise provided by this title, an infringer of copyright is liable for either— (1) the copyright owner’s actual damages and any additional profits of the infringer, as provided by subsection (b); or (2) statutory damages, as provided by subsection (c).”


[7] Section 412 off the Copyright Act provides in relevant part:[N]o award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for-(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or any infringement of a copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work. See Niemi v. American Axle Mfg. & Holding Inc, 2008 WL 905558, FN 10 (E.D.Mich.,2008).

[8] Other courts to consider the question have come to the same conclusion; namely, that infringement “commences” for the purposes of § 412 when the first act in a series of acts constituting continuing infringement occurs. See, e.g., Ez-Tixz, Inc. v. Hit-Tix, Inc. , 919 F.Supp. 728, 736 (S.D.N.Y. 1996) (“The alleged acts of infringement that occurred after the copyright was registered do not constitute new acts of infringement but a continuation of the infringement that `commenced’ prior to registration.”); Parfums Givenchy, Inc. v. C & C Beauty Sales, Inc. , 832 F.Supp. 1378, 1393 (C.D. Cal. 1993) (holding that “the first act of infringement in a series of ongoing separate infringements `commence[s]’ one continuing `infringement’) (brackets in original); Mason v. Montgomery Data, Inc. , 741 F.Supp. 1282, 1285 (S.D. Tex. 1990), rev’d on other grounds, 967 F.2d 135 (5th Cir. 1992) (“A `new’ or `separate’ basis for the award of statutory damages is created, however, only where there is a difference between pre- and post-registration infringing activities.”); Singh v. Famous Overseas, Inc. , 680 F.Supp. 533, 535 (E.D.N.Y. 1988), aff’d , 923 F.2d 845 (2d Cir. 1990) (holding that infringement does not “commence” with each new act in an ongoing infringement, because “it would be peculiar if not inaccurate to use the word `commenced’ to describe a single act”); Johnson v. Univ. of Virginia , 606 F.Supp. 321, 325 (D. Va. 1985) (holding that infringement does not “commence” with each new act in an ongoing infringement, because “ascribing such a meaning to the term `commenced’ would totally emasculate § 412”); Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc. , 609 F.Supp. 1325, 1331 (E.D. Penn. 1985), aff’d on other grounds , 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987) (“Interpreting `commencement of infringement’ as the time when the first act of infringement in a series of ongoing discrete infringements occurs . . . would best promote the early registration of a copyright. It would strongly encourage prompt registration.”).


[9] The first “publication” of the alleged copyrighted items occurred in the early to mid 1990s.  See Section 101 of the Copyright Act (defining Publication as the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending….”).  The Plaintiff stated that he registered his alleged copyrights in 2006.  Therefore, Section 412 is applicable.  See Niemi v. American Axle Mfg. & Holding Inc, 2008 WL 905558, FN 10 (E.D. Mich. 2008) (“For § 410(c) and § 412(2) to be invoked, there must have been a “publication” of the copyrighted works.”).


[10] Section 505 of the Copyright Act provides as follows:  “In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”


[11] Section 504(b) of the Copyright Act provides as follows:  “(b) Actual Damages and Profits.— The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.”

[12] Citing Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996), Del Monte Fresh Produce Co. v. Dole Food Co., 136 F. Supp. 2d 1271, 1285, n. 3 (S.D. Fla. 2001), Cornerstone Home Builders, Inc. v. McAllister, 303 F.Supp.2d 1317, 1319 (M.D. Fla. 2004).

[13] Paragraph 44 of the Amended Complaint alleges that “Upon information and belief, the aforesaid acts of Defendants Redacted and Redacted are and were willful and constitute unfair methods of competition and unfair or deceptive acts or practices in violation of the Florida common law.”


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