68 F. Supp. 3d 969
W.D. Wis.2014Background
- Plaintiffs Scott Boehm and David Stluka are professional sports photographers who licensed images through Getty Images and registered copyrights to the photos-in-suit.
- Defendants Dan and Ciara Zimprich (On 2 the Field) made and sold unauthorized prints/canvases of plaintiffs’ photos; they acquired many high-resolution images via Getty under Editorial-Newspaper licenses and some from third parties (AW Artworks, Jessie Winiecki).
- Defendant Legends of the Field admitted displaying at least three infringing photos and disputed only the extent of infringement; evidence for six additional photos was insufficiently specific.
- Defendant Sports Plus purchased at least one allegedly infringing reproduction from the Zimpriches and displayed it; it removed the item after suit was filed and contended it lacked knowledge of infringement.
- American Family (insurer of the Zimpriches) intervened to contest duty to defend/coverage under a policy that covers “personal and advertising injury” but excludes intentional acts; key dispute was whether the complaint alleged non-willful infringement triggering coverage.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Legends of the Field infringed copyrights | Boehm/Stluka: Legends displayed copyrighted photos without authorization | Legends admitted three infringements and disputed only quantity/location for others | Summary judgment granted for plaintiffs as to three admitted photos; claims as to six additional photos deferred for further proof |
| Whether Zimpriches infringed copyrights | Plaintiffs: Zimpriches made/sold unauthorized reproductions; registrations are prima facie valid | Zimpriches: challenge copyright validity (work-for-hire) and assert licenses from Getty/third parties | Summary judgment for plaintiffs: Zimpriches infringed; their challenges to registrations/work-for-hire unsupported; Getty editorial licenses did not authorize commercial reproductions |
| Whether Zimpriches’ infringement was willful | Plaintiffs: Zimpriches knowingly exceeded Getty’s editorial license or were willfully blind; continued sales after suit show willfulness | Zimpriches: claimed ignorance, reliance on others, and advice of counsel | Court: some willful infringement (images from Getty and continued sales after suit); willfulness unresolved for images from AW Artworks/Winiecki; advice-of-counsel defense rejected for privilege and insufficiency |
| Whether Sports Plus’s infringement (if any) was willful | Plaintiffs: Sports Plus, in the business, should have inquired and may be reckless | Sports Plus: purchased item from Zimpriches, lacked knowledge, removed item after suit | Summary judgment for Sports Plus: plaintiffs produced no evidence of willfulness; non-willful as a matter of record |
| Whether American Family must defend Zimpriches | Plaintiffs: complaint alleges advertising use and non-willful infringement, triggering coverage | American Family: delay in notice prejudiced insurer and complaint only alleges intentional/willful acts excluded by policy | Summary judgment denied for American Family: court finds no demonstrated prejudice from late notice and the complaint includes allegations of non-willful advertising-related infringement, so duty to defend exists |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright ownership and originality standard)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment / genuine issue standard)
- Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502 (7th Cir.) (prima facie effect of copyright registration)
- Video Views, Inc. v. Studio 21, Ltd., 925 F.2d 1010 (7th Cir.) (willfulness/reckless disregard standard)
- In re Aimster Copyright Litig., 334 F.3d 643 (7th Cir.) (willful blindness counts as knowledge)
- Toksvig v. Bruce Pub. Co., 181 F.2d 664 (strict liability nature of infringement)
- Johnson v. City of Fort Wayne, 91 F.3d 922 (7th Cir.) (summary judgment evidence requirements)
- Doyle v. Engelke, 219 Wis.2d 277 (Wis.) (insurer duty to defend if any claim in complaint falls within policy)
- Estate of Sustache v. Am. Family Mut. Ins. Co., 311 Wis.2d 548 (Wis.) (determine duty to defend by comparing complaint to policy)
- United States v. Rati, 484 F.3d 934 (advice-of-counsel can negate culpable state of mind when properly invoked)
- United States v. Philpot, 733 F.3d 734 (reliance on counsel must be reasonable and privilege waiver issues)