April 23, 2014

Orion the Hunted: Claimed Author of E-Magazines, Blog, and Software Manual Sues Orion Restoration, LLC and Related Parties for Declaratory Judgment of Copyright Ownership and for Copyright Infringement

On December 21, 2012, plaintiff Brittni Pope filed a complaint in the U.S. District Court for the Northern District of Georgia against Orion Restoration, LLC and related parties (collectively, (“Orion”), seeking a declaratory judgment of copyright ownership in certain works and remedies for copyright infringement.

Ms. Pope alleges that from May 21, 2012 to September 20, 2012, she was engaged by the defendants as an independent contractor “to do marketing and graphic design work,” and that in that capacity, she created the following works: (1) three e-magazine editions of “The Orion”; (2) the “Clear View Software Manual,” which “explained the functionality of Orion’s proprietary software to staff, insurance agents, insurance adjusters, and customers”; (3) “a blog published on the Orion website”; and (4) “the Hail and Storm Damage center for the website, which consists of approximately 30 individual web pages.”

The complaint states that Ms. Pope registered copyrights in the three e-magazines; however, the complaint does not identify the registration numbers or dates for those alleged registrations.

Upon ceasing her work as an independent contractor, alleges the complaint, Ms. Pope “terminated Defendants’ license to her Copyrighted Works and other materials.”  The complaint does not define “Copyrighted Works,” so it is not known whether that term was intended to refer to only the three allegedly-registered e-magazines, or instead to all of the items described at (1)-(4), above.  There is no allegation in the complaint that the alleged independent contractor arrangement or license was governed by any written agreement.

Count I of the complaint seeks a declaratory judgment that Ms. Pope authored and owns the copyrights in “the Copyrighted Works.”  Count II asserts infringement of the copyrights for “the Copyrighted Works” and seeks injunctive and monetary relief set forth in the Copyright Act, including but not limited to statutory damages.

Below are summarized some general legal principles regarding copyright ownership.

Under the Copyright Act of 1976, 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.  The Act carves out an important exception, however, for ‘works made for hire.’”  Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 [ ] (1989) (quoting 17 U.S.C. § 201(b)).  If a copyrighted work falls within that exception, then “‘the employer or other person for whom the work was prepared is considered the author’ and owns the copyright, unless there is a written agreement to the contrary.” Id.

A copyrighted work “comes within the work for hire doctrine if it consists of either (i) a work prepared by an employee within the scope of her employment or (ii) one prepared by an independent contractor on special order or commission.”  Warren Freedenfeld Assocs., Inc. v. McTigue, 531 F.3d 38, 48 (1st Cir. 2008) (citing 17 U.S.C. § 101). [1]

“Works are ‘specially commissioned’ when one person or company asks another to prepare a copyrightable work to benefit the requesting party.”[2]  For a specially-commissioned work to qualify as a “work for hire,” it must meet two criteria.  First, the work must be one of the types recited in a statute of the copyright act, namely, one that is:

specially ordered or commissioned for use as a contribution to a collective work, as part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas . . . .[3]

Second, “the parties [must] expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”[4]  “Thus, unless the . . . materials fall within one of [the] ‘enumerated categories’ and were created pursuant to a written work-for-hire agreement, they will not fall within the statutory exception.”[5]

Even if a copyright claimant succeeds in establishing ownership of certain works, the party charged with infringement may assert the defense of an implied nonexclusive license to use those works. “An implied nonexclusive license, as its designation suggests, is not a written license and can be given either orally or implied from conduct.”[6]  “Such an implied license does not transfer the ownership of a copyright; rather, it ‘simply permits the use of a copyrighted work in a particular manner.’”[7]  Some courts have used a three-part test to determine whether an implied nonexclusive license arose.  Under that test, such a license is created “‘when (1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee copy and distribute his work.’”[8]  At least one court has interpreted that test as requiring examination of “the totality of the circumstances surrounding [the creator’s] conduct.”[9]

The case is Brittni Pope v. Orion Restoration, LLC, Orion Restoration Solutions, LLC, Orion Restoration - Storm Division LLC, and Jason Hunter Cash, No. 1:12-cv-4408-TCB, filed 12/21/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Timothy C. Batten.  

[1] 108 Degrees, LLC v. Merrimack Golf Club, Inc., No. 09-cv-298, 2010 DNH 54, 2010 U.S. Dist. LEXIS 28560, at *5 (D.N.H. Mar. 25, 2010).

[2] Siniouguine v. Mediachase Ltd., No. CV 11-61132012, 2012 U.S. Dist. LEXIS 87190, at *17 (C.D. Cal. June 11, 2012).

[3] 17 U.S.C. § 101 (2012).  “For the purpose of the foregoing sentence, a ‘supplementary work’ is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an ‘instructional text’ is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.”  Id.

[4] Id.

[5] 108 Degrees, 2010 U.S. Dist. LEXIS 28560, at *6.

[6] Nelson-Salabes, Inc. v. Morningside Devel., LLC, 284 F.3d 505, 514 (4th Cir. 2002) (citing I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996)).

[7] Id. (quoting I.A.E., 74 F.3d at 775).

[8] Id. (quoting I.A.E., 74 F.3d at 776).

[9] Id., 284 F.3d at 515.

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