PLAYBOY ENTERPRISES, INC.

v.

George FRENA et. al

839 F.Supp. 1552 (M.D. Fla. 1993)

SCHLESINGER, District Judge.

/1 This cause is before the Court on Plaintiff's First Motion for Partial Summary Judgment (Copyright Infringement) as to Defendant Frena (Doc. No. S-1, filed July 26, 1993), and Plaintiff's Second and Third Motions for Partial Summary Judgment (Trademark Infringement and Lanham Act Violations) as to Defendant Frena (Doc. No. S-3, filed July 29, 1993). In its First Motion for Partial Summary Judgment, Plaintiff requests that the Court grant partial summary judgment that Defendant Frena infringed Plaintiff's copyrights and specifically that the 170 image files in question in Exhibit C to the Tesnakis Affidavit infringed Plaintiff's copyrights in 50 of Plaintiff's copyrighted magazines.. . .

/2 Defendant George Frena operates a subscription computer bulletin board service, Techs Warehouse BBS ("BBS"), that distributed unauthorized copies of Plaintiff Playboy Enterprises, Inc.'s ("PEI") copyrighted photographs. BBS is accessible via telephone modem to customers. For a fee, or to those who purchase certain products from Defendant Frena, anyone with an appropriately equipped computer can log onto BBS. Once logged on subscribers may browse through different BBS directories to look at the pictures and customers may also download the high quality computerized copies of the photographs and then store the copied image from Frena's computer onto their home computer. Many of the images found on BBS include adult subject matter. One hundred and seventy of the images that were available on BBS were copies of photographs taken from PEI's copyrighted materials.

/3 Defendant Frena admits that these materials were displayed on his BBS, [co], that he never obtained authorization or consent from PEI, [co], and that each of the accused computer graphic files on BBS is substantially similar to copyrighted PEI photographs, [co]. Defendant Frena also admits that each of the files in question has been downloaded [fo] by one of his customers. See Defendant's Admissions, Response No. 11.

/4 Subscribers can upload material onto the bulletin board so that any other subscriber, by accessing their computer, can see that material. Defendant Frena states in his Affidavit filed August 4, 1993, that he never uploaded any of PEI's photographs onto BBS and that subscribers to BBS uploaded the photographs. [co]. Defendant Frena states that as soon as he was served with a summons and made aware of this matter, he removed the photographs from BBS and has since that time monitored BBS to prevent additional photographs of PEI from being uploaded. [co] . . .

I. COPYRIGHT INFRINGEMENT

/5 The Copyright Act of 1976 gives copyright owners control over most, if not all, activities of conceivable commercial value. The statute provides that

the owner of a copyright ... has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies ...; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies ... of the copyrighted work to the public ... and (5) in the case of ... pictorial ... works ... to display the copyrighted work publicly.

17 U.S.C. s 106. Engaging in or authorizing any of these categories without the copyright owner's permission violates the exclusive rights of the copyright owner and constitutes infringement of the copyright. See 17 U.S.C. s 501(a).

/6 To establish copyright infringement, PEI must show ownership of the copyright and "copying" by Defendant Frena, [co].

/7 There is no dispute that PEI owns the copyrights on the photographs in question. PEI owns copyright registrations for each of the 50 issues of Playboy publications that contain the photographs on BBS. [co] The copyright registration certificate constitutes prima facie evidence in favor of Plaintiff. See Southern Bell Tel., 756 F.2d at 811. Once the plaintiff has established his prima facie ownership, the burden then shifts to the defendant to counter this evidence. See 3 MELVILLE B. NIMMER, Nimmer on Copyright s 13.01[A], at 13-7 (1993). Defendant Frena, however, failed to rebut the appropriate inference of validity.

/8 Next, PEI must demonstrate copying by Defendant Frena. Since direct evidence of copying is rarely available in a copyright infringement action, copying may be inferentially proven by showing that Defendant Frena had access to the allegedly infringed work, that the allegedly infringing work is substantially similar to the copyrighted work, see Howard v. Sterchi, 974 F.2d 1272 (11th Cir.1992), and that one of the rights statutorily guaranteed to copyright owners is implicated by Frena's actions. See Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir.1991), cert. denied, --- U.S. ----, 112 S.Ct. 373, 116 L.Ed.2d 324.

/9 Access to the copyrighted work is not at issue. Access is essentially undeniable because every month PEI sells over 3.4 million copies of Playboy magazine throughout the United States.[co]

/10 Substantial similarity is also a non-issue in this case. Defendant Frena has admitted that every one of the accused images is substantially similar to the PEI copyrighted photograph from which the accused image was produced.[co] Moreover, not only are the accused works substantially similar to the copyrighted work, but the infringing photographs are essentially exact copies. [co] In many cases, the only difference is that PEI's written text appearing on the same page of the photograph has been removed from the infringing copy.

/11 The next step is to determine whether Defendant Frena violated one of the rights statutorily guaranteed to copyright owners under 17 U.S.C. s 106. See 17 U.S.C. s 501(a).

/12 Public distribution of a copyrighted work is a right reserved to the copyright owner, and usurpation of that right constitutes infringement. See Cable/Home Communication Corp. v. Network Productions, Inc., 902 F.2d 829, 843 (11th Cir.1990). PEI's right under 17 U.S.C. s 106(3) to distribute copies to the public has been implicated by Defendant Frena. Section 106(3) grants the copyright owner "the exclusive right to sell, give away, rent or lend any material embodiment of his work." 2 MELVILLE B. NIMMER, Nimmer on Copyright s 8.11[A], at 8-124.1 (1993). There is no dispute that Defendant Frena supplied a product containing unauthorized copies of a copyrighted work. It does not matter that Defendant Frena claims he did not make the copies itself. See JAY DRATLER, JR., Intellectual Property Law: Commercial, Creative and Industrial Property s 6.01[3], at 6-15 (1991).

/13 Furthermore, the "display" rights of PEI have been infringed upon by Defendant Frena. See 17 U.S.C. s 106(5). The concept of display is broad. See 17 U.S.C. s 101. It covers "the projection of an image on a screen or other surface by any method, the transmission of an image by electronic or other means, and the showing of an image on a cathode ray tube, or similar viewing apparatus connected with any sort of information storage and retrieval system." H.R.Rep. No. 1476, 94th Cong., 2d Sess. 64 (Sept. 3, 1976), reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5677. The display right precludes unauthorized transmission of the display from one place to another, for example, by a computer system. See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 80 (Sept. 3, 1976), reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5694; JAY DRATLER, JR., Intellectual Property Law: Commercial, Creative and Industrial Property s 6.01[4], at 6-24 (1991).

/14 "Display" covers any showing of a "copy" of the work, "either directly or by means of a film, slide, television image or any other device or process." 17 U.S.C. s 101. However, in order for there to be copyright infringement, the display must be public. A "public display" is a display "at a place open to the public or ... where a substantial number of persons outside of a normal circle of family and its social acquaintenances is gathered." 2 MELVILLE B. NIMMER, Nimmer on Copyright s 8.14[C], at 8-169 (1993). A place is "open to the public" in this sense even if access is limited to paying customers. 2 MELVILLE B. NIMMER, Nimmer on Copyright s 8.14[C], at 8-169 n. 36 (1993); see Columbia Pictures Indus., Inc. v. Redd Horne Inc., 749 F.2d 154 (3d Cir.1984).

/15 Defendant's display of PEI's copyrighted photographs to subscribers was a public display. Though limited to subscribers, the audience consisted of "a substantial number of persons outside of a normal circle of family and its social acquaintenances." 2 MELVILLE B. NIMMER, Nimmer on Copyright s 8.14[C], at 8-169 (1993). See also Thomas v. Pansy Ellen Products, 672 F.Supp. 237, 240 (W.D.North Carolina 1987) (display at a trade show was public even though limited to members); Ackee Music, Inc. v. Williams, 650 F.Supp. 653 (D.Kan.1986) (performance of copyrighted songs at defendant's private club constituted a public performance). . ..

/16 There is irrefutable evidence of direct copyright infringement in this case. It does not matter that Defendant Frena may have been unaware of the copyright infringement. Intent to infringe is not needed to find copyright infringement. Intent or knowledge is not an element of infringement, and thus even an innocent infringer is liable for infringement; rather, innocence is significant to a trial court when it fixes statutory damages, which is a remedy equitable in nature. See D.C. Comics Inc. v. Mini Gift Shop, 912 F.2d 29 (2d Cir.1990).

/17 Frena argues that his commercial use was so insignificant as to justify holding for him under the principle of de minimis non curat lex. The Court disagrees. . .. The Court finds that the undisputed facts mandate partial summary judgment that Defendant Frena's unauthorized display and distribution of PEI's copyrighted material is copyright infringement under 17 U.S.C. s 501.. . .

Accordingly, . . .

(3) Plaintiff's First Motion for Partial Summary Judgment (Copyright Infringement) as to Defendant Frena (Doc. No. S-1) is GRANTED,

(4) The remaining issues of the injunction and damages are still remaining for the Court to decide.

DONE AND ORDERED.