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Schenck v. Orosz

United States District Court, M.D. Tennessee, Nashville Division

May 20, 2015



ALETA A. TRAUGER, District Judge.

The plaintiffs have filed a Motion for Contempt for Violation of Preliminary Injunction Order (Docket No. 114), to which the defendants have filed a Response in opposition (Docket No. 127), and the plaintiffs have filed a Reply (Docket No. 132). The plaintiffs have also filed a Motion for Summary Judgment (Docket No. 116), to which the defendants have filed a Response in opposition (Docket No. 135), and the plaintiffs have filed a Reply (Docket No. 141). For the reasons stated herein, the Motion for Contempt will be denied, the Motion for Summary Judgment will be denied without prejudice, and the parties will be ordered to make supplemental submissions regarding the potential referral of certain questions to the Register of Copyrights.


I. Overview

Plaintiffs Bethany Primrose and her husband, Russell Schenck, do business as "Insomniac Arts" ("Insomniac") in Nashville, Tennessee. Primrose creates graphic designs ("Graphic Designs") that Insomniac prints onto goods such as mobile phone cases, tablet covers, mugs, t-shirts, and other novelty items. Insomniac also creates images of the products with the designs superimposed upon them ("Product Designs"), which Insomniac uses to market and sell the items in online marketplaces, such as and through its own webpage. Both before and after the plaintiffs initiated this litigation, the plaintiffs filed copyright registrations relating to the Graphic Images and Product Designs. For the most part, the plaintiffs have essentially batch-registered "collections" of Product Images. Each collection contains variations on a central theme, such as designs stating "Peace, Love, and Equality" or "Breast Cancer Awareness."

Defendant Cale Orosz is a Nevada resident who operates defendant Case Doodle, LLC ("Case Doodle"). Orosz and Case Doodle operate under alternate business names, including the website "" and "Ecello Electronics." Orosz and Case Doodle market and sell products in competition with the plaintiffs. The plaintiffs contend that the defendants copied and counterfeited Insomniac's copyrighted Graphic Designs and Product Images, in violation of the Copyright Act, 17 U.S.C. § 101 et seq. At least until a preliminary injunction issued in this case, the images on the defendants' goods were identical to the plaintiffs' Graphic Designs.

II. Pre-Summary Judgment Proceedings

A. The Plaintiffs' Complaints and the Court's Preliminary Injunction Orders

From the outset, this case has been litigated as a scattershot affair. The plaintiffs initially filed an unverified Complaint (Docket No. 1) that did not identify the specific copyrights at issue, was not accompanied by a preliminary injunction motion, and (apparently) was not properly served on the defendants. After the defendants moved to dismiss for improper service and failure to state a claim (Docket No. 15), the plaintiffs refiled an unverified Amended Complaint (Docket No. 22). As best the court could tell, the Amended Complaint referenced approximately 61 copyright collections (only five of which had been registered before filing suit) and alleged infringement of only a subset of the copyrights.

After the defendants again moved to dismiss for failure to state a claim (Docket No. 28), the plaintiffs filed a retroactive "Verification" of their Amended Complaint (Docket No. 32) and a Rule 65 Motion for Preliminary Injunction (Docket No. 33), which the court granted in part and denied in part ( see Docket Nos. 58 (Memorandum) and 59 (Order)). In its November 7, 2013 Memorandum concerning the Rule 65 motion (the "11/7/13 PI Memorandum"), the court observed that the defendants did not submit any sworn rebuttal to the plaintiffs' fundamental allegation: namely, that Orosz had wholesale plagiarized the plaintiffs' works and marketed them online for profit. Nevertheless, after parsing the record, the court was limited to enjoining the defendants only as to the five timely registered copyrights ( i.e., 5 of the 61 copyrights at issue). The court held that the plaintiffs would need to re-plead claims relative to the remaining unregistered or untimely registered copyrights. Also, because of ambiguities in the record and the plaintiffs' failure to file a proposed injunction order, the court ordered the plaintiffs to file a supplemental affidavit and a proposed injunction. The plaintiffs complied (Docket Nos. 60 and 61) and the court entered a Preliminary Injunction Order on November 18, 2013 (Docket No. 62).

On February 24, 2014, with leave of court, the plaintiffs filed a Second Amended Verified Complaint. (Docket No. 77) (the "SAVC"). The SAVC re-pleaded claims relative to additional copyrights, placing at issue a total of approximately 44 copyright registrations. Without consulting the defendants, the plaintiffs moved for an expansion of the Preliminary Injunction to include these additional copyrights. (Docket No. 77.) After the defendants objected in part (Docket No. 79), the court ordered the parties to confer on agreed language for the expanded injunction (Docket No. 80). The parties complied (Docket No. 81), and the court entered an Expanded Preliminary Injunction Order on March 21, 2014 (Docket No. 82). In the meantime, the defendants responded to the SAVC by filing an Answer and Counterclaims, seeking a declaration of non-infringement (Count I), a declaration of invalidity based on fraud on the Copyright Office (Count II), and a declaration of invalidity based on lack of originality (Docket No. 78).

On March 31, 2014, again without consulting the defendants beforehand, the plaintiffs simultaneously filed a Motion to Strike certain of the defendants' affirmative defenses (Docket No. 84), a Motion to Dismiss the Counterclaims (Docket No. 86), and a Motion for Leave to File a Third Amended Verified Complaint (Docket No. 83). The defendants did not oppose the request for leave to amend, which the court granted on April 16, 2014 (Docket No. 91), thereby mooting the plaintiffs' Rule 12 motions. The court expressed some concern that the parties, particularly the plaintiffs, were not communicating before filing avoidable motions.

On July 7, 2014, the plaintiffs filed their Third Amended Verified Complaint (Docket No. 92) ("TAVC"), which remains the plaintiffs' operative complaint in this case. The parties appear to agree that the TAVC places at issue 43 different copyrighted collections. The defendants responded to the TAVC by filing an Answer and Counterclaims. (Docket No. 93.) The plaintiffs filed an Answer to the defendants' counterclaims. (Docket No. 94.)

B. Discovery and Failed Attempts to Move Under Rule 56

Based on the record before the court, it appears that the discovery period was not well-utilized. As best the court can tell, neither party took any depositions or retained testifying experts, and there is no indication that the plaintiffs served written discovery.

The unevenness continued at the close of fact discovery. Without seeking the requisite leave of court (as required by ¶ 11 of the Case Management Order (the "CMO")), the plaintiffs filed a Motion for Partial Summary Judgment (Docket No. 95). Apparently realizing their mistake, the plaintiffs four days later retroactively requested leave to file a partial Rule 56 motion. (Docket No. 99). While the motion was necessary, it was not sufficient: because the plaintiffs failed to explain why a partial Rule 56 motion was justified - a requirement under CMO ¶ 11- the court denied the request for leave. (Docket No. 100.)

The plaintiffs filed a renewed Motion for Leave to File a Motion for Partial Summary Judgment (Docket No. 101), in which they contended that the court should rule in their favor relative to 28 of the 43 copyrights at issue in the TAVC. The defendants filed a Response in opposition (Docket No. 102), pointing out that (1) the plaintiffs' proposed motion and statement of facts inappropriately purported to treat the court's 11/7/13 PI Memorandum as preclusive findings of fact and law at the Rule 56 stage, and (2) the plaintiffs improperly relied on hearsay statements as to what the Copyright Office had allegedly told Primrose about her copyright registrations. The defendants threatened to move for sanctions under Rule 11, contending that they had informed the plaintiffs in an August 1, 2014 email about both of these deficiencies. On January 27, 2015, the court denied the plaintiff's request for leave to move for partial summary judgment. (Docket No. 103).

After failing to obtain leave to file a partial summary judgment motion, the plaintiffs moved to dismiss without prejudice 15 of their 43 registrations ( i.e., the ones on which they had not been seeking summary judgment) under Rule 41. (Docket No. 104.) In a Response in opposition to the plaintiff's Rule 41 motion, the defendants pointed out that the plaintiffs' motion raised more questions than answers, leaving open how dismissal would impact the defendants' counterclaims and whether the plaintiffs would seek to reassert the dismissed copyright claims. (Docket No. 105.) After a telephone conference with the court, the parties filed a Proposed Order of Dismissal (Docket No. 112), which the court entered on March 16, 2015 (Docket No. 113).[1]

Having narrowed the case to 28 copyrighted collections, the plaintiffs, on March 17, 2015, moved for "full" summary judgment (Docket No. 116) - a motion for which leave of court is not required - and for contempt (Docket No. 114).

III. The Motion for Summary Judgment

The Motion for Summary Judgment attaches and relies upon copies of the copyright registrations for each collection, as well as screenshots reflecting purported infringement by the defendants on or ( See Docket No. 116, Ex. 1, Parts 1-28).) At the time they were filed, the screenshots were not authenticated. The motion is also supported by the Declaration of Bethany Primrose (Docket No. 118), in which (1) Primrose describes how she creates the Graphic Designs and Product Images, and (2) Primrose avers that, after learning that the defendants were challenging the validity of her copyright registrations, she called the Copyright Office and received assurances from an unidentified person that the registrations did not need to be amended or otherwise corrected. The motion is also supported by a Statement of Facts (Docket No. 119), which largely recites the court's November 7, 2013 PI Memorandum as "facts", without referencing evidence in the record. Essentially, the Rule 56 motion contains the same procedural and evidentiary deficiencies that the defendants pointed out to the plaintiffs at least twice before, and on which the court had denied the plaintiffs' second request for leave to file a partial summary judgment motion.

The defendants have filed a Response in opposition (Docket No. 135), supported by a Memorandum of Law (Docket No. 138), the Declaration of Cale Orosz (Docket No. 137), the Declaration of Christopher McGeehan (Docket No. 139) (attaching evidentiary materials), and a Response to the plaintiffs' Statement of Facts (Docket No. 136). The plaintiffs have filed a Reply (Docket No. 141), which is supported by the Declaration of Bethany Primrose on Personal Knowledge (Docket No. 142) (averring that she personally took the screen captures reflecting infringement by the defendants), the Declaration of Anjlee Khurana in Support of Plaintiffs' Summary Judgment Reply (Docket No. 143) (averring that, on January 8, 2015, a named supervisory Copyright Office official assured Khurana that posting all of the images on a website was an appropriate unit of publication at the time the plaintiffs registered their copyright collections), the Declaration of Bethany Primrose on Creation of Product Images ...

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