RECOMMENDED FOR FULL-TEXT PUBLICATION Pursuant to Sixth Circuit Rule 206 2 Gordon v. Nextel Communications, et al. No. 01-2274 ELECTRONIC CITATION: 2003 FED App. 0355P (6th Cir.) File Name: 03a0355p.06 _________________ COUNSEL UNITED STATES COURT OF APPEALS ARGUED: John E. Nemazi, BROOKS & KUSHMAN, FOR THE SIXTH CIRCUIT Southfield, Michigan, for Appellant. Herschel P. Fink, _________________ HONIGMAN, MILLER, SCHWARTZ & COHN, Detroit, Michigan, for Appellees. ON BRIEF: Robert C. STEPHEN F. GORDON, X Brandenburg, BROOKS & KUSHMAN, Southfield, Plaintiff-Appellant, - Michigan, for Appellant. Herschel P. Fink, Cynthia G. - Thomas, HONIGMAN, MILLER, SCHWARTZ & COHN, - No. 01-2274 Detroit, Michigan, for Appellees. v. - > _________________ , NEXTEL COMMUNICATIONS - OPINION and MULLEN ADVERTISING , - _________________ INC., - Defendants-Appellees. - MERRITT, Circuit Judge. Plaintiff Stephen F. Gordon - brought suit against Nextel Communications and Nextel’s N advertising agency, Mullen Advertising, Inc., for copyright Appeal from the United States District Court infringement for the unauthorized use of several of Gordon’s for the Eastern District of Michigan at Detroit. dental illustrations in a television commercial for Nextel’s No. 00-73201—John Corbett O’Meara, District Judge. two-way text messaging. The district court found that Gordon created the illustrations; nevertheless, the court Argued: March 27, 2003 granted defendants’ motion for summary judgment, finding that defendants’ use constituted fair use and was de minimis, Decided and Filed: October 6, 2003 and therefore did not constitute copyright infringement. The court also granted summary judgment as to Gordon’s 17 Before: MERRITT and BATCHELDER, Circuit Judge; U.S.C. § 1202 claim of removal of the copyright notice on the DUPLANTIER, District Judge.* basis that Gordon failed to present any evidence that defendants intentionally removed or altered the copyright information or that these defendants knew that the copyright information had been removed. We agree that the use of Gordon’s illustrations was de minimis and therefore affirm the summary judgment as to the copyright infringement claim. In addition, we find that Gordon failed to introduce sufficient * evidence that the copyright notice was removed with the The Hon orable A drian G. Duplantier, United States D istrict Judge for the Eastern District of Louisiana, sitting by designation.

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requisite intent; we therefore affirm the summary judgment 126 F.3d at 74. In determining whether the allegedly with respect to Gordon’s § 1202 claims. infringing work falls below the quantitative threshold of substantial similarity to the copyrighted work, courts often I. Facts look to the amount of the copyrighted work that was copied, as well as the observability of the copyrighted work in the Gordon is a medical artist whose copyrighted artwork allegedly infringing work. See id. at 75. Observability is includes a Dentist-Patient Consultation Illustrations booklet, determined by the length of time the copyrighted work which originally consisted of ten sheets of dental illustrations. appears in the allegedly infringing work, as well as the Enlarged versions of two of the illustrations can be seen in prominence in that work as revealed by the lighting and Nextel’s television commercial featuring a man in a dentist positioning of the copyrighted work. See id. chair. Gordon never gave the defendants permission to use the illustrations, and the versions of the illustrations in the In analyzing whether a particular use of copyrighted commercial do not contain the copyright management material should be deemed de minimis, courts look to the information. regulation issued by the Librarian of Congress providing for royalties to be paid by public broadcasting entities for use of II. Discussion published pictorial and visual works. See 37 C.F.R. § 253.8. The regulation distinguishes between a “featured” display and Congress has granted exclusive rights to an owner of a “background and montage” display, setting a higher royalty copyrighted material to reproduce the work, to prepare rate for the former. See id. The Librarian has defined a derivative works, and to distribute copies of the copyrighted “featured” display as a “full-screen or substantially full screen work. See 17 U.S.C. § 106(1), (2), and (3). In addition, under display for more than three seconds,” and a “background or § 106(5), the owner has the exclusive right to display the montage” display as “[a]ny display less than full-screen, or copyrighted work publicly. See 17 U.S.C. § 106(5). full-screen for three seconds or less.” Id. With respect to Gordon’s infringement claim under § 106, Gordon asserts that both illustrations are shown for more the defendants have asserted two defenses: fair use and de than the three seconds required by the regulations for royalties minimis use. Typically, courts examine the de minimis if shown on public television. Gordon asserts that the Bridge defense first to determine if any actionable copying has illustration appears for 10.6 seconds and the Root Canal for occurred. See Ringgold v. Black Entertainment Television, 7.3 seconds, twice in close-ups. Furthermore, Gordon asserts Inc., 126 F.3d 70, 77 (2d Cir. 1997). A court will examine that 2.3 seconds of Root Canal is viewed full-screen or the fair use defense only if the de minimis threshold for substantially full screen. actionable copying has been exceeded. See id. We proceed accordingly. In support of their claim that the use of the illustrations was de minimis, the defendants assert that the Bridge illustration To establish that a copyright infringement is de minimis, is never in focus and appears only briefly in background. the alleged infringer must demonstrate that the copying of the Additionally, they contend that the illustration component of protected material is so trivial “as to fall below the the Root Canal work is observable for less than a second, and quantitative threshold of substantial similarity, which is the viewers’ attention is drawn to the words “root canal,” always a required element of actionable copying.” Ringgold, which are not copyrightable. The district court concluded No. 01-2274 Gordon v. Nextel Communications, et al. 5 6 Gordon v. Nextel Communications, et al. No. 01-2274

that use of Gordon’s artwork was de minimis, primarily for No person shall, without the authority of the copyright owner the reasons articulated by the defendants. JA at 499. Our or the law-- review confirms the conclusions of the district court. (1) intentionally remove or alter any copyright Because observability is determined by the length of time management information, the copyrighted work appears in the allegedly infringing work, as well as its prominence as revealed by the lighting ..... and the positioning of the copyrighted work, it is apparent that the use of the Bridge illustration does not rise to the level (3) distribute ... copies of works ... knowing that of actionable copying. The Bridge illustration is never in copyright management information has been removed or focus and appears only as distant background. altered without authority of the copyright owner or the law, While the use of the Root Canal illustration presents a closer question, we find its use also to be de minimis. We knowing, or, with respect to civil remedies under have viewed a video copy of the relevant portions of the section 1203, having reasonable grounds to know, that it alleged infringing commercial, and we find that the will induce, enable, facilitate, or conceal an infringement defendants’ use of Root Canal falls below the quantitative of any right under [federal copyright law]. threshold of actionable copying. In contrast to Ringgold, where the court found that the artwork was “clearly visible ... 17 U.S.C. § 1202(b). with sufficient observable detail for the ‘average lay observer’ ... to discern African-Americans in Ringgold’s colorful, We first must address the defendants’ claim that Gordon virtually two-dimensional style,” Ringgold, 126 F.3d at 77, failed to present any evidence that the defendants themselves the primary impact of the use of the Root Canal illustration in intentionally removed or altered the copyright information or the commercial comes from the focus on the words, which are that the defendants even knew that the information had been not copyrightable. The initial focus on the illustration itself removed. Regardless of the defendants’ actual knowledge of is very brief. Because Gordon’s illustrations appear fleetingly the removal or alteration of the copyright information, a party and are primarily out of focus, we find their use to be de may be held vicariously liable for the actions of others under minimis. Therefore, we affirm the district court’s grant of certain circumstance within the copyright context. Vicarious summary judgment and we need not address the defendants’ liability exists when (1) a defendant has the right and ability fair use defense. to supervise the infringing conduct and (2) the defendant has an obvious and direct financial interest in the infringement.1 We turn next to Gordon’s claims under 17 U.S.C. § 1202. See Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d Gordon alleges that the defendants violated sections 304, 307 (2d Cir. 1963). These elements are independent 1202(b)(1) and (3) because the illustrations used in the requirements, and each must be present to render a defendant commercials did not include the copyright management vicariously liable. See id. Lack of knowledge of the information, which the statute defines as “the title and other information identifying the work including the information 1 set forth in a notice of copyright.” 17 U.S.C. § 1202(c)(1). By contrast, contributory infringement occurs when a defendant Section 1202(b) provides, in relevant part, induces, causes, or materially co ntributes to the infringing conduct of another, with knowledge of the infringing activity. No. 01-2274 Gordon v. Nextel Communications, et al. 7 8 Gordon v. Nextel Communications, et al. No. 01-2274

infringement is irrelevant. See id. Vicarious copyright granted based on the defendants’ lack of actual knowledge of liability is an “outgrowth” of the common law doctrine of the removal of the copyright management information when respondeat superior, which holds the employer liable for the they may be vicariously liable for its removal. acts of its agents. Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 262 (9th Cir. 1996). However, vicarious liability The defendants also suggest that Gordon made a procedural extends beyond the traditional scope of the master-servant mistake by failing to name Crossroads, the production theory. See Nimmer on Copyright, § 12.04. As long as the company and purported “direct” actor, as a defendant. required elements are present, a defendant may be liable, even However, the case law suggests that it is permissible for a in the absence of a traditional employer-employee plaintiff to name as a defendant one who is liable only as a relationship. See id. vicarious infringer without also naming the “direct” infringer as a defendant. The primary example of this reasoning is the Shapiro is the landmark case in which vicarious liability for Supreme Court opinion in Sony Corp. v. Universal City sales of counterfeit recordings was expanded outside the Studios, Inc., 464 U.S. 417, 434 (1984) (“The two employer-employee context. In Shapiro, the court was faced respondents in this case do not seek relief against the with a copyright infringement suit against the owner of a Betamax users who have allegedly infringed their chain of department stores where a concessionaire was selling copyrights.”). Nonetheless, there can be no secondary counterfeit recordings. Noting that the normal agency rule of liability absent primary infringement. See Sony, 464 U.S. at respondeat superior imposes liability on an employer for 434 (“To prevail, they have the burden of proving that users copyright infringement by an employee, the Second Circuit of the Betamax have infringed their copyrights and that Sony articulated what has become the acknowledged standard for should be held responsible for that infringement.”). a finding of vicarious liability in the context of copyright Therefore, it is not fatal to Gordon’s claims that he failed to infringement: name Crossroads as a co-defendant. When the right and ability to supervise coalesce with an We proceed to an examination of the actual elements of the obvious and direct financial interest in the exploitation 1202 claims. The very few reported cases that examine the of copyrighted materials--even in the absence of actual applicability of this section, which was enacted in 1998, knowledge that the copyright monolpoly [sic] is being found that the statute did not apply on the facts presented. impaired ..., the purpose of copyright law may be best See, e.g., Thron v. HarperCollins Publishers, Inc., 64 effectuated by the imposition of liability upon the U.S.P.Q.2d 1221 (S.D.N.Y. 2002) and Kelly v. Ariba Soft beneficiary of that exploitation. Corp., 77 F.Supp.2d 1116 (C.D. Cal. 1999). Shapiro, 316 F.2d at 307 (internal citations omitted). Regarding the alleged 1202(b)(3) violation, Gordon must prove that the defendants -- or those for whom they are Although the record is not clear in this regard, it is vicariously liable -- possessed actual knowledge of the reasonable to infer that Mullen, the advertising agency, unauthorized change to the copyright management retained the ability to supervise the development of the information, because the statute requires the defendant to act commercial. Certainly both defendants had direct financial “knowing that copyright management information [had] been interests in the exploitation of the copyrighted materials. As removed or altered without authority of the copyright owner a result, it is inappropriate to permit summary judgment to be or the law.” 17 U.S.C. § 1202(b)(3). Accord Nimmer, No. 01-2274 Gordon v. Nextel Communications, et al. 9 10 Gordon v. Nextel Communications, et al. No. 01-2274

§ 12A.09[B][1][b]. According to the affidavit of Kevin advertisement were made from Gordon’s wallchart or the McCarthy, Crossroads’ art director, when Crossroads booklet, which contained the copyright management obtained the poster from the Cinema World, its personnel information within the individual illustrations. Because this believed that the poster had been cleared for use in television clearly is a dispute of material fact, it is not appropriate to commercials. The record contains no proof to contradict this grant summary judgment on this basis. assertion, nor evidence concerning Cinema World’s conduct. As a result, there is no proof that the defendants --through Next, the defendants assert that, even if they are vicariously Crossroads or Cinema World -- utilized the version of the liable for the actions of Crossroads, there is no proof that any illustrations “knowing that copyright management removal by Crossroads was intentional. In support, they point information [had] been removed or altered without authority to the testimony of Kevin McCarthy, who stated that no one of the copyright owner.” 17 U.S.C. § 1202(b)(3). The at Crossroads intended to or did remove the copyright notice defendants are entitled to summary judgment on the from the artwork. McCarthy admits that he used the rental 1202(b)(3) claim. poster, scanned and enlarged a portion of it, and made the framed pictures that were used as the set decorations. A section 1202(b)(1) violation occurs when a person (i) McCarthy admits that he removed the information, and there without authority of the copyright owner or the law is no suggestion that the removal was unintentional. (ii) intentionally removes or alters any copyright management information (iii) knowing or having reasonable grounds to Defendants further contend that Gordon submitted no proof know that it will induce, enable, facilitate, or conceal an that the removal of the copyright notice was done with the infringement of the federal copyright laws. Although Gordon requisite “reason to know that the removal would induce, failed to introduce evidence that Nextel or Mullen was aware enable, facilitate, or conceal an infringement.” 17 U.S.C. of any infringement until they received the cease and desist § 1202(b). Rather, when Crossroads obtained the poster from letter from Gordon’s counsel, he argues that because the the prop company, its personnel believed that the poster had copyright information is absent from the illustrations, been cleared for use in television commercials. As a result, Crossroads must have removed it, and that Nextel and Mullen the defendants assert, there is no evidence that Crossroads had are liable for Crossroads’ actions. any reason to know that the removal would facilitate or conceal an infringement. Furthermore, McCarthy asserts that The defendants assert several defenses to Gordon’s 1202 it was his practice to obtain permission from an artist if the claim. First, they assert that Gordon failed to present any artwork was not obtained from a prop house, and that he evidence that Nextel or Mullen’s conduct brings them within would have sought Gordon’s approval if he thought there was any of the elements set forth in section 1202. However, as a clearance issue in this case. The record contains no outlined above, the defendants may be vicariously liable for evidence to counter McCarthy’s testimony. As a result, the actions of Crossroads and its employees. Gordon may not claim that the copyright information was removed with reasonable grounds to know that it would Defendants next claim that here, as in Kelly v. Ariba Soft “induce, enable, facilitate, or conceal an infringement.” See Corp., there is no proof that the copyright information was 1202(b). We believe that the district court correctly granted removed from the individual illustrations, rather than the summary judgment for the defendants on Gordon’s 1202 white space surrounding the illustrations themselves. claims. However, the parties dispute whether the posters used in the No. 01-2274 Gordon v. Nextel Communications, et al. 11

For the foregoing reasons, we affirm the district court’s opinion in its entirety.