United States District Court, W.D. Oklahoma
TIMOTHY D. DEGIUSTI UNITED STATES DISTRICT JUDGE
David McNeese (McNeese) brings this action against Defendant
Access Midstream Partners, L.P. (Access) for copyright
infringement and fraud. Before the Court is Access's
Motion for Summary Judgment (“Mot.”) [Doc. No.
71], to which McNeese has filed his response in opposition
(“Resp.”) [Doc. No. 91]. A hearing was held on
January 9, 2017 and the parties submitted supplemental briefs
[Doc. Nos. 142, 143] in response to certain questions from
the Court. The matter is fully briefed and at issue.
material facts set forth infra are undisputed and,
along with all reasonable inferences, are viewed in the light
most favorable to McNeese. Jones v. Norton, 809 F.3d
564, 573 (10th Cir. 2015). To determine which facts are not
in genuine dispute, the Court disregarded any unsupported
allegations, legal conclusions, or legal arguments couched as
facts which appeared in either party's statement of
material facts or response thereto. See 1st Source Bank
v. Village of Stevensville, 947 F.Supp.2d 934, 937 (N.D.
Ind. 2013) (“The purpose of [Rule 56] statements is to
identify the relevant evidence supporting the material facts,
not to make factual or legal arguments. ... In reviewing a
party's statement of material facts, a court must
‘eliminate from consideration any argument,
conclusions, and assertions that are unsupported by the
documented evidence of record offered in support of the
statement.'”) (citations omitted); Chavez v.
County of Bernalillo, 3 F.Supp.3d 936, 949 n. 4 (D.N.M.
contends certain facts are undisputed because McNeese was one
day late in responding to its First Requests for Admissions
and, according to Access, such requests are deemed admitted.
Mot. at 2, n. 2. It is true that under Rule 36, when a party
fails to make a timely response to a request for admission,
the truth of the matter contained in the request is generally
deemed “admitted” and “conclusively
established.” Fed.R.Civ.P. 36(a)(3), (b). However, the
purpose of Rule 36 is to expedite trial by eliminating the
necessity of proving undisputed and peripheral issues,
Keen v. Detroit Diesel Allison, 569 F.2d 547, 554
(10th Cir. 1978), and courts should not employ the rule
“to establish facts which are obviously in dispute or
to answer questions of law.” Lakehead Pipe Line Co.
v. Am. Home Assur. Co., 177 F.R.D. 454, 458 (D. Minn.
1997) (citations omitted); Champlin v. Okla. Furniture
Mfg. Co., 324 F.2d 74, 76 (10th Cir. 1963) (responses to
requests for admission may be established “as
undisputed material facts in the case, provided, the parties
are in agreement about such facts.”). Thus, courts
should admit untimely answers to requests for admission where
it would aid in determining the material facts and not
unfairly prejudice the opposing party. U.S. Bank
Nat'l Ass'n v. Gunn, 23 F.Supp.3d 426, 433 (D.
Del. 2014); 8B Wright, Miller & Marcus, Federal
Practice and Procedure § 2257 at 345 (3d ed.
the Court exercises its discretion and considers
McNeese's responses in determining the merits of
Access' motion. Access has not been substantially
prejudiced, since the delay - one day - was not excessive,
and Access makes no argument to the contrary. Moreover, the
Court finds that consideration of McNeese's responses
would aid in determining the material facts at issue.
owns and operates McNeese Photography, a company specializing
in photography and videography. Access is a natural gas
services provider. In 2011, McNeese took 285 photographs of
Chesapeake Energy Corporation's property, equipment, and
employees, which he collectively entitled
“contactsheet.pdf” (hereinafter “Group
1”). The photographs contained in Group 1 were taken at
different angles, degrees, depths, and in various shades of
lighting. McNeese filed an application with the United States
Copyright Office to register Group 1 for copyright
protection, and on June 12, 2011, the United States Copyright
Office issued a Certificate of Registration with registration
number VA 1-777-187. According to the copyright certificate,
the images contained in Group 1 were first published on May
2011 to 2013, McNeese granted Chesapeake a non-transferable
limited license for certain photographs he took. McNeese,
however, retained all copyright and ownership rights in the
images. In December 2012, Chesapeake sold a subsidiary,
Chesapeake Midstream Development, LLC, to Access. In
connection with the sale, Chesapeake copied and transferred
many of McNeese's photographs to Access. In 2013, McNeese
took an additional 48 photos of Access's property,
equipment, and employees which he entitled “01221448
photos” (hereinafter “Group 2”). Like Group
1, the photographs in Group 2 were taken at different angles,
degrees, depths, and various shades of lighting. McNeese
filed an application with the United States Copyright Office
to register Group 2 for copyright protection, and on January
22, 2014, the Copyright Office issued a Certificate of
Registration for the photographs with the registration number
VAu 1-157-473. Three photographs in Group 1, entitled
“midstream045.jpg, ” “midstream068.jpg,
” and “midstream110.jpg, ” were
inadvertently included in Group 2.
to McNeese, Access used a number of photographs from Group 1
and Group 2 in its business materials, including a recruiting
brochure, trade booth graphic, email invitation, computer
wallpaper, investor relations folder, and Access webpages.
McNeese sued Access and Chesapeake for copyright infringement,
aiding and abetting copyright infringement, and fraud,
alleging, inter alia, that Access wrongfully
reproduced the photographs without his permission and
concealed the extent of its use of the photographs.
moved for summary judgment on each of McNeese's claims.
It contended that (1) McNeese's copyright registrations
were invalid; (2) McNeese did not own valid copyrights in the
photographs, (3) McNeese could not establish the requisite
“substantial similarity” necessary to establish
his copyright infringement claim, (4) McNeese's
derivative claims for infringement failed as a matter of law,
and (5) McNeese's fraud claim lacked evidentiary support.
to Access' motion, McNeese submitted new
registration applications for the photographs contained in
Group 2 and obtained nine (9) new copyright registrations
[Doc. No. 140-1]. These new registrations were in part the
subject of a January 9, 2017 hearing in which the Court heard
argument from counsel regarding (1) what images were included
in McNeese's new registration applications; (2) what
responsive action was taken on said applications; and (3)
whether the Court should utilize the certification procedure
set forth in 17 U.S.C. § 411(b) in response to
Access' allegations that McNeese's copyright
registration for Group 2 was invalid due to its inclusion of
previously published photos. After reviewing the parties'
principal and supplemental briefs, the Court rules as
judgment is proper “if the movant shows that there is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Universal
Underwriters Ins. Co. v. Winton, 818 F.3d 1103, 1105
(10th Cir. 2016) (quoting Fed.R.Civ.P. 56(a)). The movant may
make such a showing through the pleadings, depositions, other
discovery materials, and affidavits. Water Pik, Inc. v.
Med-Systems, Inc., 726 F.3d 1136, 1142 (10th Cir. 2013).
At the summary judgment stage, the Court views all of the
facts in the light most favorable to the non-movant and draws
all reasonable inferences from the record in favor of the
non-moving party. Schaffer v. Salt Lake city Corp.,
814 F.3d 1151, 1155 (10th Cir. 2016).
the nonmoving party is entitled to all reasonable inferences
from the record, the nonmovant must still identify sufficient
evidence requiring submission to the jury in order to survive
summary judgment. Piercy v. Maketa, 480 F.3d 1192,
1197 (10th Cir. 2007). Thus, if the nonmovant bears the
burden of persuasion on a claim at trial, summary judgment
may be warranted if the movant points out a lack of evidence
to support an essential element of that claim and the
nonmovant cannot identify specific facts that would create a
genuine issue. Water Pik, 726 F.3d at 1143-44.
“An issue is ‘genuine' if there is sufficient
evidence on each side so that a rational trier of fact could
resolve the issue either way, ” and “[a]n issue
of fact is ‘material' if under the substantive law
it is essential to the proper disposition of the
claim.” Adler v. Wal-Mart Stores, Inc., 144
F.3d 664, 670 (10th Cir. 1998).
protection extends to original works of authorship fixed in
any tangible medium of expression. 17 U.S.C. § 102(a);
Blehm v. Jacobs, 702 F.3d 1193, 1200 (10th Cir.
2012) (noting that § 102 enshrines the
“fundamental tenet” that copyright
“protection extends only to the author's original
expression and not to the ideas embodied in that
expression.”) (quoting Gates Rubber Co. v. Bando
Chem. Indus., Ltd., 9 F.3d 823, 836 (10th Cir. 1993)).
In order to establish a prima facie case of copyright
infringement, a plaintiff must prove two elements: (1)
ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original.
Savant Homes, Inc. v. Collins, 809 F.3d 1133, 1138
(10th Cir. 2016). The plaintiff bears the burden of proof as
to both elements. La Resolana Architects, PA v. Reno,
Inc., 555 F.3d 1171, 1171 (10th Cir. 2009).
respect to the first element, “[a] plaintiff's
presentation of a certificate of registration from the U.S.
Copyright Office usually constitutes prima facie evidence of
a valid copyright and of the facts stated in the
certificate.” Palladium Music, Inc. v.
EatSleepMusic, Inc., 398 F.3d 1193, 1196 (10th Cir.
2005) (citing 17 U.S.C. § 410(c)). “Upon
presentation of such a certificate, the defendant bears the
burden to overcome the presumption of validity. ... To rebut
the presumption, however, a defendant sued for infringement
‘must simply offer some evidence or proof to dispute or
deny the plaintiff's prima facie case of
infringement.'” Id. (citations omitted).
rebutting the presumption of validity, a defendant may
“contend that a copyright registration is invalid
because of noncompliance with formal registration
requirements or rules, such as the withholding or
misstatement of information in connection with the
registration application.” Lumos, Inc. v.
LifeStrength, LLC, No. 2:12-cv-1196, 2014 WL 4355451, at
*2 (D. Utah Sept. 3, 2014) (quoting L.A. Printex Indus.,
Inc. v. Le Chateau, Inc., No. 11 Civ. 4248(LTS), 2012 WL
987590, *4 (S.D.N.Y. Mar. 23, 2012)).
second element consists of multiple inquiries:
First [the Court] must determine whether, as a factual
matter, the defendant copied plaintiff's work. ...
Second, as a mixed question of law and fact, [the Court] must
evaluate whether the elements copied by the defendant are
protected by copyright. ... In essence, this second
consideration asks whether defendant took “too
much” of plaintiff's work; it asks what the level
of “sameness” is between the two works.
Paycom Payroll, LLC v. Richison, 758 F.3d 1198, 1204
(10th Cir. 2014) (citations and internal quotations omitted).
The Court may address either step first. GatesRubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d ...