John Anthony Drafting & Design LLC v. Burrell ( 2019 )

1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 John Anthony Drafting & Design, LLC, et No. CV-18-00970-PHX-ESW al., 10 ORDER Plaintiff, 11 v. 12 Sabin Lee Burrell, et al., 13 Defendants. 14 15 16 The Court has reviewed the parties’ briefing concerning (i) the Motion for Partial 17 Summary Judgment (Doc. 87) filed by Plaintiff John Anthony Drafting & Design LLC 18 and (ii) the Motion for Summary Judgment (Doc. 89) filed by Defendants Sabin Lee 19 Burrell, Kayla Jantz, 5650 Wilkinson, LLC, and Black Dog Management, L.P.1 For the 20 reasons set forth herein, the Motions (Docs. 87, 89) will be denied.2 21 I. LEGAL STANDARDS 22 Summary judgment is appropriate if the evidence, when reviewed in a light most 23 favorable to the non-moving party, demonstrates “that there is no genuine dispute as to 24 any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. 25 26 1 The parties have consented to proceeding before a Magistrate Judge pursuant to Federal Rule of Civil Procedure 73 and 28 U.S.C.§ 636(c). (Doc. 36). 27 2 Although requested, the Court does not find that oral argument on the Motions is 28 necessary. 1 P. 56(a). Substantive law determines which facts are material in a case and “only 2 disputes over facts that might affect the outcome of the suit under governing law will 3 properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 4 U.S. 242, 248 (1986). “A fact issue is genuine ‘if the evidence is such that a reasonable 5 jury could return a verdict for the nonmoving party.’” Villiarimo v. Aloha Island Air, 6 Inc., 281 F.3d 1054, 1061 (9th Cir. 2002) (quoting Anderson, 477 U.S. at 248). Thus, the 7 nonmoving party must show that the genuine factual issues “can be resolved only by a 8 finder of fact because they may reasonably be resolved in favor of either party.” Cal. 9 Architectural Bldg. Prods., Inc. v. Franciscan Ceramics, Inc., 818 F.2d 1466, 1468 (9th 10 Cir. 1987) (quoting Anderson, 477 U.S. at 250). 11 Because “[c]redibility determinations, the weighing of the evidence, and the 12 drawing of legitimate inferences from the facts are jury functions, not those of a judge . . . 13 [t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be 14 drawn in his favor” at the summary judgment stage. Anderson, 477 U.S. at 255 (citing 15 Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970)); Harris v. Itzhaki, 183 F.3d 16 1043, 1051 (9th Cir. 1999) (“Issues of credibility, including questions of intent, should be 17 left to the jury.”) (citations omitted). 18 When moving for summary judgment, the burden of proof initially rests with the 19 moving party to present the basis for his motion and to identify those portions of the 20 record and affidavits that he believes demonstrate the absence of a genuine issue of 21 material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the movant fails 22 to carry his initial burden of production, the non-movant need not produce anything 23 further. The motion for summary judgment would then fail. However, if the movant 24 meets his initial burden of production, then the burden shifts to the non-moving party to 25 show that a genuine issue of material fact exists and that the movant is not entitled to 26 judgment as a matter of law. Anderson, 477 U.S. at 248, 250; Triton Energy Corp. v. 27 Square D. Co., 68 F.3d 1216, 1221 (9th Cir. 1995). The nonmovant need not establish a 28 material issue of fact conclusively in his favor. First Nat’l Bank of Ariz. v. Cities Serv. 1 Co., 391 U.S. 253, 288-89 (1968). However, he must “come forward with specific facts 2 showing that there is a genuine issue for trial.” Matsushita Elec. Indus. Co., Ltd. v.Zenith 3 Radio Corp., 475 U.S. 574, 587 (1986) (internal citation and emphasis omitted); see Fed. 4 R. Civ. P. 56(c)(1). 5 Conclusory allegations unsupported by factual material are insufficient to defeat a 6 motion for summary judgment. Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989); see 7 also Soremekun v. Thrifty Payless, Inc., 502 F.3d 978, 984 (9th Cir. 2007) (“[c]onclusory, 8 speculative testimony in affidavits and moving papers is insufficient to raise genuine 9 issues of fact and defeat summary judgment”). Nor can such allegations be the basis for 10 a motion for summary judgment. 11 II. BACKGROUND 12 This is a copyright infringement action. Plaintiff John Anthony Macewicz 13 (“Macewicz”) owns an architectural design firm named John Anthony Drafing & Design, 14 LLC (“JADD”). (Doc. 93 at 5, ¶ 10). Defendants Sabin Lee Burrell (“Burrell”) and 15 Kayla Jantz (“Jantz”) are husband and wife. In March 2015, Defendant Burrell entered 16 into a written agreement with JADD for the design of a residential home. (Id. at 6, ¶¶ 13- 17 15). The structure at issue is located at 5650 North Wilkinson Road in Paradise Valley, 18 Arizona and is referred to herein as the “Burrell Residence.” (Doc. 90 at 2, ¶ 3). 19 Defendant Burrell is the sole manager and member of Defendant 5650 Wilkinson, LLC, 20 which is the record owner of the Burrell Residence. (Id. at 9-10, ¶¶ 50-52). Defendant 21 Burrell also is the manager of Panzer Investments, LLC, which is Defendant Black Dog 22 Management, L.P.’s general partner. (Doc. 98 at 10, ¶ 112). Defendant Black Dog 23 Management, L.P. provided financing for the construction of the Burrell Residence. (Id., 24 ¶¶ 113-15). Burrell, Jantz, 5650 Wilkinson, LLC, and Black Dog Management, L.P. are 25 collectively referred herein as the “Burrell Defendants.” The remaining four Defendants 26 are (i) Craig Banner (“Banner”); (ii) American Tradition Builders, Inc. (“ATB”); (iii) 27 28 1 Tom Spencer (“Spencer”); and (iv) CBAN, LLC.3 On April 11, 2016, Defendants 2 Burrell, ATB, and CBAN, LLC entered into a contract for the construction of a residence 3 (the “Building Contract”). (Doc. 90 at 9, ¶ 43). 4 Plaintiff Macewicz states that in May 2016, he applied to register the copyright for 5 the Burrell Residence’s design. (Doc. 88-2 at 4, ¶ 14). The Certificate of Registration 6 issued by the Copyright Office reflects that the title of the protected work is “Burrell 7 Residence.” (Doc. 88-3 at 4). The Certificate of Registration lists an effective date of 8 May 3, 2016, with June 9, 2015 as the date of first publication. (Id.). In January 2018, 9 Plaintiff Macewicz assigned all copyrights in the Burrell Residence to Plaintiff JADD. 10 (Doc. 88-5 at 3). Plaintiffs contend that the home constructed pursuant to the Building 11 Contract infringes on the copyrights in the Burrell Residence’s design. In its Amended 12 Complaint, Plaintiffs assert that the Burrell Defendants are liable for vicarious and 13 contributory copyright infringement. (Doc. 54 at 10, ¶¶ 38-39). One of the Burrell 14 Defendants’ contentions is that Plaintiff JADD’s copyright is not valid because the 15 Burrell Residence does not constitute an original architectural work. 16 III. DISCUSSION 17 A. Plaintiff JADD’s Motion for Partial Summary Judgment (Doc. 87) 18 Architectural plans and drawings are entitled to copyright protection under the 19 Federal Copyright Act. 17 U.S.C. § 101 et seq. “Architectural work” is defined as “the 20 design of a building as embodied in any tangible medium of expression, including a 21 building, architectural plans, or drawings.” 17 U.SC. § 101. Plaintiff JADD moves for 22 summary judgment that it owns a valid copyright in the Burrell Residence’s design. 23 (Doc. 87). 24 To establish copyright infringement, a party must show (i) ownership of a valid 25 copyright and (ii) unauthorized copying by another party of the constituent original 26 elements of the work. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 27 28 3 These Defendants have not moved for summary judgment. 1 (1991). A certificate of registration made within five years of the first publication of the 2 work “constitutes prima facie evidence of copyrightability and shifts the burden to the 3 defendant to demonstrate why the copyright is not valid.” Bibbero Sys., Inc. v. Colwell 4 Sys., Inc., 893 F.2d 1104, 1106 (9th Cir. 1990) (citing 17 U.S.C. § 410(c)). In order to 5 rebut the presumption of validity, an alleged infringer must offer “some evidence or proof 6 to dispute or deny the [copyright holder’s] prima facie case of infringement.” United 7 Fabrics Int'l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011) (internal 8 quotation marks and citation omitted). Because “originality is the indispensable 9 prerequisite for copyrightability,” the alleged infringer may rebut the presumption of 10 validity by showing that “the [copyright holder’s] work is not original.” N. Coast Indus. 11 v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992). Where the accused 12 infringer offers evidence that the plaintiff’s product was copied from another work or 13 other probative evidence as to originality, the burden of proving validity shifts back to the 14 plaintiff. Entm’t Research Grp. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217-18 15 (9th Cir. 1997) (citing North Coast Indus., 972 F.2d at 1033). 16 Although originality is the prerequisite for copyrightability, the “originality 17 requirement does not mean that for valid copyright protection, the copyright must 18 represent something entirely new under the sun.” North Coast, 972 F.2d at 1033. 19 Originality requires that a work “owes its origin” to the “author,” whose contribution is 20 “more than a trivial variation, something recognizably his own.” Id. (quoting Sid & 21 Marty Krofft Television v. McDonald’s Corp., 562 F.2d 1157, 1163 n.5 (9th Cir. 1977)). 22 The Supreme Court has held that “the requisite level of creativity is extremely low; even 23 a slight amount will suffice. The vast majority of works make the grade quite easily, as 24 they possess some creative spark, no matter how crude, humble or obvious it might be.” 25 Feist, 499 U.S. at 345 (internal quotation marks and citation omitted); see also Gaste v. 26 Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) (“[T]he originality requirement for 27 obtaining a copyright is an extremely low threshold, unlike the novelty requirement for 28 securing a patent. Sufficient originality for copyright purposes amounts to little more 1 than a prohibition of actual copying.”). With regard to architectural works, originality 2 can be expressed in the “overall form” and “arrangement and composition of spaces.” 17 3 U.S.C. § 101. 4 Here, Plaintiff JADD has produced evidence that it holds a Certificate of 5 Registration for the Burrell Residence’s design that was issued by the United States 6 Copyright Office within five years of its first publication. (Doc. 88 at 4, ¶ 15; Doc. 88-3 7 at 4). The Burrell Defendants have not presented sufficient evidence controverting that 8 assertion. The Court finds that Plaintiff JADD has provided prima facie evidence of 9 owning a valid copyright in the Burrell Residence’s design. In an attempt to rebut the 10 presumption of validity, the Burrell Defendants assert that Plaintiff Macewicz copied 11 another architect’s work in designing the Burrell Residence. (Doc. 92 at 4-10). The 12 Burrell Defendants explain that Burrell and Jantz provided Plaintiffs with “an example of 13 the contemporary home [Burrell] and Jantz wanted to have designed[.]” (Id. at 5). It is 14 undisputed that the “example” home was designed by architect Gary Wyant of Calvis 15 Wyant Luxury Homes, Inc. (the “Wyant Design”). (Doc. 90 at 3, ¶ 11; Doc. 90-3 at 20). 16 The Burrell Defendants contend that Plaintiff Macewicz “actually copied the [Wyant 17 Design] to make the Burrell Residence and modified it per Burrell and Jantz’s requests 18 and instructions.” (Doc. 93 at 2). 19 “[I]n order to establish that the plaintiff copied a preexisting work, a defendant 20 must show that plaintiff had access to the prior work and that plaintiff’s work is 21 substantially similar to the prior work in both ideas and expression.” N. Coast Indus., 22 972 F.2d at 1033-34; see also 3 Melville B. Nimmer & David Nimmer, Nimmer on 23 Copyright § 12.11 [B] n.50 (1991) (“Proof that the plaintiff copied from prior works 24 should involve the same elements . . . as are required to establish copying by the 25 defendant from the plaintiff, i.e., access and similarity.”). In determining whether two 26 works are “substantially similar” for the purposes of copyright infringement, the Ninth 27 Circuit “employ[s] a two-part analysis: an objective extrinsic test and a subjective 28 intrinsic test.” Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004). “The extrinsic test 1 considers whether two works share a similarity of ideas and expression as measured by 2 external, objective criteria [and] . . . requires analytical dissection of a work and expert 3 testimony.” Id. (internal quotations and citation omitted). “[T]he subjective question 4 whether works are intrinsically similar”—i.e., the subjective intrinsic test—“must be left 5 to the jury.” Id. 6 “Because substantial similarity is customarily an extremely close question of fact, 7 summary judgment has traditionally been frowned upon in copyright litigation.” A.A. 8 Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir. 1980) (citation 9 omitted); see also Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991) 10 (expressing “a certain disfavor for summary judgment on questions of substantial 11 similarity”); Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097 12 (6th Cir. 1984) (“[S]ummary judgment . . . is a practice to be used sparingly in copyright 13 infringement cases.”). “Where reasonable minds could differ on the issue of substantial 14 similarity . . . summary judgment is improper.” Shaw v. Lindheim, 919 F.2d 1353, 1355 15 (9th Cir. 1990). 16 Here, it is undisputed that Plaintiff Macewicz had access to the Wyant Design. 17 (Doc. 90 at 3, ¶¶ 8-11). The issue is whether the Burrell Residence is substantially 18 similar to the Wyant Design. After comparing the Burrell Residence and Wyant Design, 19 the Court finds there is a genuine issue of fact as to whether the Burrell Residence is 20 substantially similar to the Wyant Design. (See Doc. 95-2 at 16, 18). Further, as 21 explained in the following section, there are additional issues of material fact regarding 22 the originality of the Burrell Residence’s design. The Court will deny Plaintiff JADD’s 23 Motion for Partial Summary Judgment (Doc. 87). See, e.g., Frank Betz Assocs., Inc. v. 24 J.O. Clark Const., L.L.C., No. CIV.A 3:08-CV-00159, 2010 WL 2253541, at *15 (M.D. 25 Tenn. May 30, 2010) (denying summary judgment in copyright dispute over home 26 designs because the “inherent subjectivity” of the substantial similarity inquiry makes 27 summary judgment on the issue “rarely appropriate”). 28 1 B. The Burrell Defendants’ Motion for Summary Judgment (Doc. 89) 2 The Burrell Defendants move for summary judgment on three grounds: (i) the 3 Burrell Residence’s design is not protected by copyright; (ii) even if the Burrell 4 Residence’s design is protected by copyright, the Burrell Defendants are not liable for 5 vicarious or contributory infringement; and (iii) Plaintiffs do not have a valid claim for 6 damages. (Doc. 89 at 5-16). 7 1. There are Genuine Issues of Fact as to Whether the Burrell Residence’s Design is Protected by Copyright 8 As explained in the previous section, the Court finds that there is a genuine issue 9 of material fact as to whether the Burrell Residence is substantially similar to the Wyant 10 Design in relation to the contention that Plaintiff Macewicz copied the Burrell 11 Residence’s design from the Wyant Design. The Burrell Defendants also assert that the 12 Burrell Residence is not original and protected by copyright because “Plaintiffs included 13 the design elements that Mr. Burrell and Ms. Jantz had asked to be included and arranged 14 the way Mr. Burrell and Ms. Jantz, with input from their team of professionals, asked for 15 them to be arranged. [SUF ¶ 36].”4 (Doc. 89 at 8). 16 Copyright protection extends to a particular expression of an idea. Boisson v. 17 Banian, Ltd, 273 F.3d 262, 268 (2d Cir. 2001). Although it is undisputed that Burrell and 18 Jantz provided certain parameters and ideas for the Burrell Residence’s design (Doc. 90 19 at 3, ¶ 8), there is sufficient controverting evidence indicating that Plaintiff Macewicz 20 used creativity in designing a home that encompassed those parameters and ideas. See 21 Compass Homes, Inc. v. Trinity Health Grp., Ltd., No. 2:13-CV-647, 2016 WL 3406054, 22 at *6 (S.D. Ohio June 21, 2016) (defendant homeowner “simply put marks to show where 23 she wanted certain features like a toilet and a sink to be located . . . . [T]he evidence is 24 uncontroverted that it was [the designer] who put the ideas to expression by designing the 25 26 27 4 The Burrell Defendants clarify that they are not claiming that they own a copyright in the Burrell Residence’s design as authors or co-authors. (Doc. 97 at 9). 28 1 copyrighted floor plans on [the designer’s] computer”). To reiterate, “the requisite level 2 of creativity is extremely low; even a slight amount will suffice.” Feist, 499 U.S. at 345 3 (internal quotations omitted). A jury could reasonably conclude that in designing the 4 Burrell Residence, Plaintiff Macewicz exercised the minimal degree of creativity that is 5 required for copyright protection. 6 In addition, the Court finds that Plaintiff JADD has produced sufficient evidence 7 disputing the Burrell Defendants’ assertion that the Burrell Residence is not original 8 because “[t]here were only a limited number of ways to configure the home using Mr. 9 Burrell’s example floor plan that would meet the site requirements, zoning regulations, 10 and Mr. Burrell and Ms. Jantz’s parameters.”5 (Doc. 89 at 8). The Burrell Defendants’ 11 Motion for Summary Judgment (Doc. 89) is denied as to the issue of whether Plaintiff 12 JADD holds a valid copyright in the Burrell Residence’s design. 2. There are Genuine Issues of Material Fact as to Whether the 13 Burrell Defendants are Liable for Vicarious or Contributory 14 Copyright Infringement 15 There are three doctrines of copyright liability: direct copyright infringement, 16 contributory copyright infringement, and vicarious copyright infringement. To prove a 17 claim of direct copyright infringement, a plaintiff must show that he owns the copyright 18 and that the defendant violated one or more of the plaintiff’s exclusive rights under the 19 Copyright Act. A & M Records v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). A 20 person may be liable as a contributory infringer if the person has knowledge of the 21 infringing activity and induces, causes, or materially contributes to the infringing conduct 22 of another. Id. at 1019 (quoting Gershwin Publ'g Corp. v. Columbia Artists Mgmt., Inc., 23 443 F.2d 1159, 1162 (2d Cir. 1971)). The knowledge requirement for contributory 24 5 Architectural design components that are required by functional considerations 25 are not protected by copyright. Harvester, Inc. v. Rule Joy Trammell + Rubio, LLC, 716 F. Supp. 2d 428, 441 (E.D. Va. 2010). “[U]nder the merger doctrine, infringement will 26 not be found if a particular idea can only be expressed in a very limited number of ways . . . .” Greenberg v. Town of Falmouth, No. CIV.A. 04-11934-GAO, 2006 WL 297225, at 27 *2 (D. Mass. Feb. 8, 2006). 28 1 copyright infringement includes both those with actual knowledge and those who have 2 reason to know of direct infringement. Id. at 1020. Finally, a defendant is vicariously 3 liable for copyright infringement if he enjoys a direct financial benefit from another’s 4 infringing activity and “has the right and ability to supervise” the infringing activity. Id. 5 at 1022 (quoting Gershwin Publ'g Corp., 443 F.2d at 1162). The vicarious infringer need 6 not know that he is infringing. MetroGoldwyn-Mayer Studios Inc. v. Grokster, Ltd., 125 7 S.Ct. 2764, 2776 n.9 (2005). 8 The Amended Complaint alleges that the Burrell Defendants are liable for 9 vicarious and contributory copyright infringement. (Doc. 54 at 10, ¶¶ 38-39). The 10 Burrell Defendants assert that they did not have a right or ability to supervise the 11 completion of the design process, permitting, and construction of the Burrell Residence 12 and therefore cannot be liable for vicarious infringement. (Doc. 89 at 9). The Burrell 13 Defendants assert that “Mr. Burrell’s sole right in this process was limited to identifying 14 construction errors. [SUF ¶ 48] 5650 Wilkinson, Black Dog, and Kayla Jantz were not 15 parties to the Building Contract and had no right to supervise.” (Id.). It is further 16 contended that Defendant Burrell did not have a direct financial interest in any infringing 17 actions by the home builders because the real estate at issue is owned by Defendant 5650 18 Wilkinson, LLC and not Defendant Burrell. (Id.). 19 It is undisputed that Burrell is authorized to make business decisions on behalf of 20 Black Dog Management, L.P. (Doc. 98 at 9, ¶ 112). Defendant 5650 Wilkinson, LLC is 21 the current record owner of the real property upon which the Burrell Residence was built, 22 and Defendant Burrell is the sole manager and member of that entity. (Doc. 90 at 10, ¶¶ 23 50-52). Jantz deeded the property to 5650 Wilkinson, LLC in June 2016—after the 24 effective date of the Certificate of Registration concerning the purported copyright in the 25 Burrell Residence’s design. (Id., ¶ 51; Doc. 88-3 at 4). The Court concludes that genuine 26 issues of material fact exist regarding whether the Burrell Defendants are liable for 27 vicarious copyright infringement. 28 The Burrell Defendants also argue that they are not liable for contributory 1 infringement, asserting that: Neither Mr. Burrell nor Ms. Jantz had any interaction with 2 Mr. Spencer with respect to the work that he performed, nor 3 did they provide him with copies of Plaintiffs’ designs. [SUF ¶ 53] Mr. Burrell was simply invoiced for Mr. Spencer’s 4 services by ATB. Per the terms of the Building Contract, Mr. 5 Burrell was not expected or allowed to direct Mr. Spencer’s actions or have any direct contact with him. [SUF ¶ 54] At 6 no time did Mr. Burrell or Ms. Jantz instruct, cause or induce 7 anyone to copy Plaintiffs’ Burrell Residence designs. [SUF ¶ 55]. 8 (Doc. 89 at 10). 9 In response, Plaintiffs point to evidence that Plaintiff Macewicz emailed 10 Defendants Burrell and Banner: “I have not given anyone permission to use my designs, 11 and to do so is a violation of federal copyright law. CSOF 105, 106.” (Doc. 94 at 12). 12 Plaintiffs also cite evidence that Defendants Banner, Spencer, and ATB “would not have 13 used Plaintiffs’ Burrell residence work as the source for the construction documents, and 14 the construction of the house itself, without the active assistance and direction of Burrell 15 and Jantz.” (Id.). The Building Contract defines (i) Burrell and Jantz as “The Owner”; 16 (ii) CBAN Properties, LLC as the “Project Manager”; (iii) ATB as “The Builder”; and 17 (iv) 5650 N. Wilkinson, Paradise Valley, Arizona as “The Property.” (Doc. 93-2 at 131). 18 The Building Contract states that the “Project Manager & Builder have worked with the 19 Owner and have caused Architectural, Landscape Design & Civil Engineering plans to be 20 drawn for the work to be built on The Lot.” (Id.). Defendants have not introduced 21 sufficient evidence casting doubt that the architectural plans used to construct the Burrell 22 Residence did not copy the design created by Plaintiff Macewicz. Considering the 23 evidence and drawing all inferences from it in the light most favorable to Plaintiffs, the 24 Court finds a genuine issue of material fact as to contributory copyright infringement.6 25 26 27 6 In its Response (Doc. 94 at 9), Plaintiff JADD alleges that the Burrell Defendants are direct infringers. The Court does not address that issue as it was not raised in the 28 Motion for Summary Judgment (Doc. 89). 1 3. There are Genuine Issues of Material Fact as to Damages 2 The Amended Complaint seeks injunctive relief, along with all monetary remedies 3 provided by 17 U.S.C. § 504(b). (Doc. 54 at 10-11). 4 Under 17 U.S.C. § 504(b), a plaintiff may elect to receive “the actual damages 5 suffered by him or her as a result of the infringement, and any profits of the infringer that 6 are attributable to the infringement and are not taken into account in computing the actual 7 damages.” Alternatively, under § 504(c), “the copyright owner may elect, at any time 8 before final judgment is rendered, to recover, instead of actual damages and profits, an 9 award of statutory damages for all infringements involved in the action, with respect to 10 any one work.” (emphasis added). 11 “The existence of damages suffered is not an essential element of a claim for 12 copyright infringement.” On Davis v. The Gap, Inc., 246 F.3d 152, 158 (2d Cir. 2001), 13 as amended (May 15, 2001) (citing Feist, 499 U.S. at 361); see also 4 Melville B. 14 Nimmer & David Nimmer, Nimmer on Copyright § 13.01, at 13-6 *159 (1999) (“Notably 15 absent from this formulation of the prima facie case is damage or any harm to [the] 16 plaintiff resulting from the infringement.”). “The owner of a copyright is thus entitled to 17 prevail in a claim for declaratory judgment of infringement without showing entitlement 18 to monetary relief.” On Davis v. The Gap, Inc., 246 F.3d at 158. 19 In addition, a plaintiff may elect statutory damages for copyright infringement 20 “regardless of the adequacy of the evidence offered as to his actual damages and the 21 amount of the defendant’s profits.” Columbia Pictures Television, Inc. v. Krypton 22 Broadcasting of Birmingham, Inc., 259 F.3d 1186 (9th Cir. 2001) (internal quotation 23 marks and citation omitted). This is because “awards of statutory damages serve both 24 compensatory and punitive purposes[.]” Los Angeles News Service v. Reuters Television 25 Intern., Ltd., 149 F.3d 987, 996 (9th Cir. 1998). “The availability of statutory damages 26 ensures there will always be an avenue open to sanction an infringer and vindicate the 27 statutory policy of discouraging infringement.” Jackson v. Sturkie, 255 F. Supp. 2d 1096, 28 1101 (N.D. Cal. 2003). However, as a precondition to obtaining statutory damages and attorney’s fees, a plaintiff must have registered its copyright before the alleged 2|| infringement. 17 U.S.C. § 412. 3 Because the Court has denied summary judgment on the issues of the validity of 4|| Plaintiff JADD’s alleged copyright and the Burrell Defendants’ liability for the alleged 5 || copyright infringement, the Court finds that summary judgment on damages is premature 6|| at this time. See Home Design Servs., Inc. v. Trumble, No. 09-CV-00964-WYD-CBS, 2011 WL 843900, at *2 (D. Colo. Mar. 8, 2011) (concluding that any finding regarding 8 || damages, actual or otherwise, concerning alleged copyright infringement was premature 9|| before the plaintiff prevailed on issue of liability); Soft-Aid, Inc. v. Sam-on-Demand, No. CV 14-10419-LTS, 2016 WL 10919656, at *9 (D. Mass. Aug. 11, 2016) (‘At this stage, 11 || issues of fact preclude summary judgment on the issue of infringement. Therefore, the 12 || Court is disinclined to analyze the issue of remedies on an incomplete record prior to a 13 || determination on infringement. It is more appropriate to reserve determination on the 14]| issue of remedies until the trier of fact has a complete factual record before it.”). || Moreover, the Court finds that there are genuine issues of material fact concerning Plaintiffs’ claim for actual damages and infringer profits. The Burrell Defendants’ 17 || Motion for Summary Judgment (Doc. 89) will be denied as to the issue of damages. 18 IV. CONCLUSION 19 Based on the foregoing, 20 IT IS ORDERED denying Plaintiff JADD’s Motion for Partial Summary || Judgment (Doc. 87). 22 IT IS FURTHER ORDERED denying the Burrell Defendants’ Motion for 23 || Summary Judgment (Doc. 89). 24 Dated this 29th day of October, 2019. . Cay) doh 26 Honorable Eileen S. Willett United States Magistrate Judge 28 -13-