President & Fellows of Harvard Coll. v. Steve Elmore, Steve Elmore Photography, Inc.

PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiff, v. STEVE ELMORE, STEVE ELMORE PHOTOGRAPHY, INC., d/b/aSTEVE ELMORE INDIAN ART, and d/b/a SPIRIT BIRD PRESS, Defendants.

No. CIV 15-00472-RB/KK

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW MEXICO

May 19, 2016

MEMORANDUM OPINION AND ORDER

THIS MATTER is before the Court on Defendant's Motion to Dismiss Amended Complaint (Doc. 71); Plaintiff's Motion for Extension of Time to Respond to Defendant Elmore's Motion for Partial Summary Judgment (Doc. 102); Plaintiff's Motion for Leave to Amend Complaint (Doc. 118); Defendant's Motion for Partial Summary Judgment (Doc. 92); and Plaintiff's Cross-Motion for Summary Judgment That Elmore is Liable for Copyright Infringement (Doc. 109). Plaintiff President and Fellows of Harvard College (Harvard) sued Steve Elmore, alleging copyright infringement, breach of contract, and false designation of origin (Doc. 1) and later amended its complaint to include Steve Elmore Photography, Inc., d/b/a Steve Elmore Indian Art, and d/b/a Spirit Bird Press (collectively with Steve Elmore, "Mr. Elmore") (Doc. 17 at 44-65). Harvard requested a preliminary injunction to stop Mr. Elmore from distributing his book and using copyrighted photographs (Doc. 5), and the Court temporarily enjoined distribution of Mr. Elmore's book (Doc. 75). Mr. Elmore and Harvard filed cross motions for partial summary judgment on the copyright infringement claims. (Docs. 92; 109.) Harvard then moved to amend its complaint a second time to add a second copyright infringement claim. (Doc. 118 ¶ 53 at 12; see also Docs. 92 at 14; 118 at 1).

Having reviewed the parties' submissions and arguments, the Court DENIES Defendant's Motion to Dismiss Amended Complaint (Doc. 71); GRANTS Plaintiff's Motion for Extension of Time to Respond to Defendant Elmore's Motion for Partial Summary Judgment (Doc. 102); DENIES Plaintiff's Motion for Leave to Amend Complaint (Doc. 118), GRANTS Defendant's Motion for Partial Summary Judgment (Doc. 92); and DENIES Plaintiff's Cross-Motion for Partial Summary Judgment that Elmore is Liable for Copyright Infringement (Doc. 109).

I. BACKGROUND

Mr. Elmore and Harvard contracted to publish a book, provisionally titled In Search of Nampeyo: the Apprenticeship of a Great Hopi Artist. (Doc. 92-1 at 1.) In theory, it was a good deal for both parties. Harvard stood to benefit because the book would discuss pottery in Harvard's Keam collection, which is held in Harvard's Peabody Museum, and potentially attribute much of the artifacts to a renowned Hopi artist, Nampeyo. (See Docs. 92 ¶ 1; 109 ¶ 1.) Mr. Elmore also stood to benefit, because the book would build his credibility as an author and dealer of Hopi pottery. (See Docs. 92-1; 13-1 ¶ 9.) The deal, however, did not go according to plan.

Three and a half years after the agreement, Harvard declined to publish Mr. Elmore's book and returned rights to the manuscript to Mr. Elmore. (Docs. 92-1; 92-4.) Undeterred, Mr. Elmore decided to self-publish his manuscript, now entitled In Search of Nampeyo: The Early Years, 1875-1892, through Spirit Bird Press, a subsidiary of Steve Elmore Indian Art. (Docs.13-1 ¶¶ 21-22; 109 ¶ 7.) Mr. Elmore used, among other illustrations, one photograph of a "Tusayan or Kayenta black on white jar" from the Keam collection (Tusayan Jar) (Pl.'s Supp. Ex. 1 at 182 fig.8.6) and over 40 images based on photographs in Historic Hopi Ceramics, a book published by Harvard's Peabody Museum Press (Doc. 109-1; see also Pl.'s Prelim. Inj. Ex. 22). Mr. Elmore never asked to publish these images. (Doc. 88 at 89:14-16.)

The photograph of the Tusayan jar was a "conservation image" taken in 1980 "as part of a condition assessment" of the collection. (Doc. 88 at 47:1-2, 47:23-25.) Viewing the facts in a light most favorable to Harvard, Peabody Museum Photographer Hillel Burger took the photograph. (Doc. 109-4 ¶ 15.) According to Harvard, the image was not publicly available until 2002 when Harvard posted the photograph as part of Harvard's online collection. (Doc. 88 at 47:22-48:11.) Mr. Elmore disagrees; he says he purchased a postcard with the photograph at a flea market "in the late '90's." (Doc. 109-2 at 2.) Either way, the photographs are almost identical, with only the slightest difference in shade. (Compare Pl.'s Supp. Ex. 1 with Doc. 109-5.) The image is a close-up side view of the Tusayan jar, angled slightly above eye level to show the entire rim of the jar, which shows two chips in the rim, one in the foreground and one on the back side of the rim. (See Pl.'s Supp. Ex. 1 at 182.) The background reveals a pot to the left of the jar and what looks like another pot and a desk with a picture on it to the right of the jar. (See id.) Harvard applied for copyright registration of this photograph on February 16, 2016 and the U.S. Copyright Office (Copyright Office) registered the copyright sometime between February 18, 2016 and February 25, 2016. (See Docs. 102 at 2; 106 at 4.) The Effective Date of Registration, according to the Copyright Office, is February 16, 2016. (Doc. 109-4 at 9.)

Historic Hopi Ceramics was "meant to be a catalog of the Keam [c]ollection[,]" similar to Harvard's online collections. (Doc. 88 at 50:17-20.) The authors described the book as a"preliminary survey of historic Hopi ceramics from the Keam collection." (Pl.'s Supp. Ex. 2 at 2.) Historic Hopi Ceramics includes photographs of "[t]he majority of decorated Hopi vessels" in the Keam collection, excluding only duplicate artifacts, undecorated bowls, and designs too worn to be captured by a photograph. (Id. at 1.) The authors chose to divide the photographs of the bowls into groups of interior and exterior views "so that the interior and exterior designs could be compared as separate design systems." (Id.) The images float in space. (See id. at 145-454.) Someone, the photographer, author, or another collaborator, stripped the background from each photograph and arranged the images in row upon row for examination. Peabody Museum photographer Hillel Burger provided "photographic expertise" for Historic Hopi Ceramics, but Kathleen Borie and Allyson Humphry "photographed the objects." (Id. at xi.) Harvard registered a copyright for Historic Hopi Ceramics in 1981, the same year the book was published. (Id.; Doc. 6 at 10-11.)

Mr. Elmore commissioned Mark Diederichsen to make illustrations for his book based on the photographs in Historic Hopi Ceramics. (Docs. 88 at 182:13-14; 109-1; Pl.'s Prelim. Inj. Ex. 22.) The process was "inelegant." (Doc. 88 at 61:20 (Mr. Deiderichsen testifying).) Mr. Elmore arranged photographs from Historic Hopi Ceramics into groups and sent them to Mr. Diederichsen. (See Doc. 109-1 (showing lines from separate photographs and tape); Doc. 88 at 187:3-6 (Mr. Diederichsen's testimony on process); id. at 153:20-154:10 (Mr. Elmore's testimony, not contesting process).) Mr. Diedrichsen used the computer program Photoshop to trace over the photographs, fill in the tracings, and erase the photographs. (Doc. 88 at 153:20-154:6, 182:21-25.) By filling in the patterns, Mr. Diederichsen eliminated the photographs' original gray scale. (Id. at 182:21-183:10.) Mr. Diedrichsen colored the images, using tan, black, and red "[t]o identify the design elements" in the pottery. (Id. at 183:23-25, 184:1-5.)Mr. Diederichsen "didn't add anything creative" to the illustrations, but instead "clean[ed] up the design" and "defin[ed] the details . . . ." (Id. at 185:24, 186:10-17.) He also lightened numerous images and removed blemishes in the pots. (Compare Pl.'s Supp. Ex. 1 at 139 with Pl.'s Supp. Ex. 2 at 239.)

After Mr. Elmore published his book, Harvard filed suit alleging, among other claims, that Mr. Elmore infringed on Harvard's copyright for Historic Hopi Ceramics. (Doc. 1 ¶¶ 43-41; see also Doc. 17 ¶¶ 44-51.) Harvard amended its complaint to include Steve Elmore Photography, Inc. on July 28, 2015 (Doc. 7), but Harvard failed to serve Steve Elmore Photography until December 1, 2015 (see Doc. 70). In both the original and amended complaints, Harvard only referenced the photograph of the Tusayan jar in a breach of contract claim, not its infringement claim. (Docs. 1 ¶¶ 30, 55; 17 ¶¶ 31, 56.) During oral arguments for the preliminary injunction, however, Harvard asserted a claim for copyright infringement of the Tusayan jar photograph. (Doc. 88 at 193:7-10.) Harvard presented no evidence of copyright registration, and no registration existed at that time. (See Doc. 109-4.) Still, Mr. Elmore responded substantively to the infringement claim (Doc. 88 at 202:21-25), and the Court ruled that Mr. Elmore likely did not infringe on the copyright of the Tusayan jar photograph for the purpose of the preliminary injunction (Doc. 75 at 16-17).

The parties have since engaged in significant motions practice. Having lost an earlier Motion to Strike Amended Complaint (see Doc. 58), Mr. Elmore moved to dismiss the Amended Complaint for untimely service (Doc. 71). Mr. Elmore also filed a Motion for Partial Summary Judgment, seeking to dismiss claims for infringement of the Historic Hopi Ceramics photographs and the photograph of the Tusayan jar. (Doc. 92 at 1, 14.) The day before Harvard's response was due for the Motion for Partial Summary Judgment, Harvard filed amotion to extend the time to respond. (Doc. 102.) Harvard sought the delay because Harvard's counsel was out of town on a business trip, scheduled prior to Mr. Elmore's filing, and because Harvard was waiting on the copyright registration for the Tusayan jar photograph. (Id. at 2.) Mr. Elmore refused to consent to the extension; he claimed Harvard used three previous extensions "to attempt to gain a tactical advantage . . . ." (Doc. 103 at 2.) Mr. Elmore alleges Harvard now seeks similar unfair advantage by delaying proceedings to register the copyright for the photograph of the Tusayan jar. (Id. at 8-9.)

Harvard filed its response to Mr. Elmore's partial motion...