Hubay v. Mendez

500 F.Supp.3d 438

Deidra HUBAY, Robert Losieniecki, Jessica Dorantes, and Alexis Gabrielle Herrick, Plaintiffs,

v.Janelle Marina MENDEZ, Pamela Heal, and Military Sexual Trauma Movement, Defendants.

2:19-cv-1327-NR

United States District Court, W.D. Pennsylvania.

Signed November 13, 2020

David G. Oberdick, Katelin J. Montgomery, Meyer, Unkovic & Scott LLP, Pittsburgh, PA, for Plaintiffs.

Brian J. Sommer, Dornish Law Offices, Wexford, PA, Robert G. Androsiglio, Pro Hac Vice, Monarch Law Group, New York, NY, for Defendants.

OPINION

J. NICHOLAS RANJAN, United States District Judge

Breaking up is hard to do, and the split at the heart of this case was no exception. In happier times, the parties were allies in activism, working together toward the admirable goal of ending sexual violence in the military. Now, after falling out amid personality conflicts and disagreement over tactics, they find themselves in federal court, on opposing sides of a copyright-infringement lawsuit. But while the personal conflicts lurking beneath this case run deep, the primary question that the Court must answer is relatively straightforward: Who owns the photos?

The crux of this case is that Plaintiffs want Defendants to stop using (and pay damages for their past use of) certain photographs, taken by Plaintiff Robert Losieniecki, to promote the work of Defendants’ nonprofit group, the Military Sexual Trauma Movement. Mr. Losieniecki took the photographs during a trip MSTM took to Washington, D.C. to protest and lobby elected officials on issues of interest to the group.

Plaintiffs argue that Mr. Losieniecki owns the photographs from that trip—because he took them—and so Defendants’ alleged use of those photographs constitutes copyright infringement. Defendants counter that MSTM owns the photos. They say that Mr. Losieniecki agreed to serve as the group's photographer for the D.C. trip and participated in that event as an "official volunteer." This, they argue, means the photographs are "works made for hire" under the Copyright Act, and thus belong to MSTM.

The precise extent to which Defendants used or continue to use the photographs remains unclear, and further factual development is needed to sort that out. But at this stage, the Court's task is to determine the owner of the copyright. On that issue, the answer is clear. Based on the evidence submitted to the Court, including the testimony presented during the two-day hearing in this case, the Court finds that Mr. Losieniecki owns the photographs at issue. While the Court found much of Defendants’ testimony on the relevant issues to be credible, the inescapable fact is that the "work made for hire" doctrine does not apply here. Instead, that doctrine applies only to works produced by employees or, if a written contract exists, independent contractors. An unpaid volunteer for a nonprofit organization is neither. Alternatively, applying the familiar Reid factors, the Court finds that Mr. Losieniecki was not operating as the equivalent of an employee under the "work made for hire" doctrine, and so owns the photographs on that basis, as well.

The Court will therefore enter a declaration in Mr. Losieniecki's favor on his copyright claim.

PROCEDURAL BACKGROUND

Plaintiffs filed this lawsuit on October 17, 2019. [ECF 1]. In their complaint, Plaintiffs pled claims for (1) copyright infringement (asserted by Plaintiff Losieniecki against all Defendants); (2) invasion of privacy based on misappropriation of names and likenesses (asserted by Plaintiffs Hubay and Dorantes against all Defendants); (3) invasion of privacy based on "false light" (asserted by Plaintiffs Hubay, Dorantes, and Losieniecki against all Defendants); (4) declaratory judgment (asserted by all Plaintiffs against all Defendants); and (5) intentional infliction of emotional distress (asserted by all Plaintiffs against all Defendants).

Then, on November 22, 2019 and December 4, 2019, Plaintiffs requested entries of default after Defendants failed to respond within the time allotted by the Federal Rules of Civil Procedure. [ECF 6; ECF 11]. The Clerk entered a default as to Defendants Janelle Marina Mendez and the Military Sexual Trauma Movement on November 22, 2019, and as to Defendant Pamela Heal on December 5, 2019. [ECF 8; ECF 12]. Defendants then retained counsel and filed a motion to vacate the Clerk's entries of default. [ECF 17]. The Court granted that motion on January 31, 2020. [ECF 23].

Defendants answered the complaint on February 3, 2020. [ECF 24]. In their answer, Defendants asserted six counterclaims of their own: (1) copyright fraud (asserted by all Defendants against Plaintiff Losieniecki); (2) intentional infliction of emotional distress (asserted by all Defendants against all Plaintiffs); (3) declaratory judgment (asserted by all Defendants against all Plaintiffs); (4) tortious interference (asserted by all Defendants against all Plaintiffs); (5) prima facie tort (asserted by all Defendants against all Plaintiffs); and (6) permanent injunction (asserted by all Defendants against all Plaintiffs).

The Court held an initial case management conference on February 13, 2020. [ECF 28]. During that conference, the Court raised with the parties the prospect of early resolution of the threshold legal issues here (most notably, copyright ownership), either through the filing of cross-motions for preliminary injunction or summary judgment, a speedy declaratory-judgment hearing, or a bench trial. [ECF 29, ¶ 7]. The Court left it to the parties to confer and decide on a preferred mechanism, and on February 28, 2020, the parties confirmed that they had agreed to present the issues through cross-motions for preliminary injunction and an evidentiary hearing on those motions. [ECF 33]. They then filed preliminary-injunction motions, and the Court held a two-day evidentiary hearing on those motions on May 8, 2020 and May 13, 2020. [ECF 36; ECF 37; ECF 52; ECF 54].

At the end of the evidentiary hearing, the Court raised with the parties the possibility of converting their motions to ones seeking declarations on the copyright issue, given the complete record presented at the hearing. [ECF 59, p. 182:5-6]. The parties then filed a joint motion to "convert cross-motions for preliminary injunction into cross-motions for declaratory judgment," which the Court granted. [ECF 60; ECF 61]. Afterward, the parties filed proposed findings of fact and conclusions of law in which they requested, in relevant part, declaratory relief to determine ownership of the copyright in Mr. Losieniecki's photographs and Defendants’ alleged infringement of that copyright. [ECF 62; ECF 63].¹

On November 12, 2020, Plaintiffs and Defendant Heal entered a consent decree resolving all claims asserted against Ms. Heal. [ECF 77]. The Court approved the decree on November 13, 2020 and dismissed Plaintiffs’ claims against Ms. Heal with prejudice. [ECF 78].

LEGAL STANDARD

The Court has the authority to grant declaratory relief under the Declaratory Judgment Act, which states, in relevant part:

In a case of actual controversy within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be reviewable as such.

28 U.S.C. § 2201(a).

Expedited resolution of a declaratory-judgment claim is also authorized and appropriate. Under both the Declaratory Judgment Act and Federal Rule of Civil Procedure 57, the Court retains "broad discretion to determine whether some or all of [the parties’] requests for declaratory judgment should be entertained in an expedited fashion." Cty. of Butler v. Wolf , No. 20-677, 2020 WL 2769105, at *2 (W.D. Pa. May 28, 2020) (Stickman, J.). "Expedited proceedings on a motion for declaratory judgment are appropriate where the determination is largely one of law, and factual issues (while expedited discovery is permitted and frequently granted) are not predominant." Id.²

Here, "[a]s the parties have not requested," and are not entitled to, "a jury trial on these issues, the Court will treat the ... evidentiary hearing as a non-jury trial on the merits" of the parties’ copyright-ownership claims. Nolu Plastics, Inc. v. Valu Eng'g, Inc. , No. 04-5149, 2005 WL 670694, at *1, n.1 (E.D. Pa. Mar. 21, 2005) ; see, e.g., Phila. Newspapers, Inc. v. Newspaper & Magazine Employees Union , No. 87-4273, 1987 WL 15430, at *1 (E.D. Pa. Aug. 7, 1987) (entering "findings of facts and conclusions of law" following "expedited consideration" of a request for "declaratory judgment" on a disputed phrase of arbitration agreement).

At a non-jury trial, a district court "sits as the ultimate finder of fact." Ingomar Ltd. P'ship v. Current , No. 06-1433, 2008 WL 2950891, at *1, n.1 (M.D. Pa. July 29, 2008). The district court's factual findings are entitled to deference and reviewed for "clear error" on appeal.

UGI Sunbury LLC v. A Permanent Easement for 1.7575 Acres , 949 F.3d 825, 831 (3d Cir. 2020).

FINDINGS OF FACT

The parties developed the facts relevant to the pending motions over a two-day evidentiary hearing on May 8, 2020 and May 13, 2020. [ECF 52; ECF 54]. Based on the evidence and testimony presented at that hearing, the Court makes the following findings of fact relevant to its decision:

I. The parties’ shared military service and affiliation with MSTM.

1. Despite their current differences, the parties have much in common. All (save for MSTM) are United States military veterans who served their country honorably in various ranks and capacities. Likewise, all of them became activists against sexual violence in the military after they were discharged.

2. Defendant Military Sexual Trauma Movement, referred to by the parties as "MSTM," is a 501(c)(4) nonprofit entity that focuses on lobbying elected...