Bell v. Gateway Blend LLC

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MISSOURI

EASTERN DIVISION

RICHARD BELL, )

)

Plaintiff, )

)

v. ) Case No. 4: 19 CV 1320 RWS

)

GATEWAY BLEND, LLC, )

)

Defendant. )

MEMORANDUM AND ORDER

Plaintiff Richard Bell, an attorney and photographer, brings a claim of

copyright infringement against defendant, alleging defendant used his copyrighted

photograph without authorization. See 17 U.S.C. § 501. This lawsuit is one of over

100 copyright lawsuits filed by Bell involving the same photograph of the

Indianapolis skyline (the “skyline photograph”). In a similar lawsuit filed by Bell

in the Southern District of Indiana over the skyline photograph, a jury found

against Bell and decided that he did not own the copyright in the photo. Bell v.

Carmen Commercial Real Estate Servs., Case Number 1:16CV1174 JRS-MPB

(S.D. Ind. Sept. 26, 2019) (S.D. Ind. Docket Entry 135). Bell filed a motion for

new trial, which was denied by the Indiana district court on August 25, 2020.

(ECF No. 38-1).

Defendant Gateway Blend moves for judgment on the pleadings on the

ground that Bell is precluded from relitigating the issue of whether he owns a

copyright interest in the skyline photograph based on the jury verdict in Carmen.

For this reason, and the reasons that follow, the motion is granted and this case is

dismissed without prejudice.

Standards Governing Motions for Judgment on the Pleadings

Federal Rule of Civil Procedure 12(c) provides that “[a]fter the pleadings are

closed – but early enough not to delay trial – a party may move for judgment on

the pleadings.” A motion for judgment on the pleadings under Fed. R. Civ. P.

12(c) is reviewed using the same standard that governs a motion to dismiss under

Fed. R. Civ. P. 12(b)(6). NanoMech, Inc. v. Suresh, 777 F.3d 1020, 1023 (8th Cir.

2015) (citing McIvor v. Credit Control Servs., Inc., 773 F.3d 909, 912-13 (8th Cir.

2014)). Therefore, courts must consider whether the complaint pleads “‘enough

facts to state a claim that is plausible on its face.’” NanoMech, 777 F.3d at 1023

(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “‘A claim has

facial plausibility when the plaintiff pleads factual content that allows the court to

draw the reasonable inference that the defendant is liable for the misconduct

alleged.’” Barton v. Taber, 820 F.3d 958, 964 (8th Cir. 2016) (quoting Ashcroft v.

Iqbal, 556 U.S. 662, 678 (2009)). “‘[L]egal conclusions’ and ‘threadbare

recitations of the elements of a cause of action, supported by mere conclusory

statements,’ are not entitled to a presumption of truth when considering the

sufficiency of a complaint.” Zink v. Lombardi, 783 F.3d 1089, 1098 (8th Cir.

2015) (quoting Iqbal, 556 U.S. at 678). The complaint’s factual allegations must

be “sufficient to ‘raise a right to relief above the speculative level . . . .’”

McDonough v. Anoka Cty., 799 F.3d 931, 946 (8th Cir. 2015) (quoting Twombly,

550 U.S. at 555). The Court does not accept as true any “‘legal conclusion

couched as a factual allegation.’” Brown v. Green Tree Servicing LLC, 820 F.3d

371, 373 (8th Cir. 2016) (quoting Iqbal, 556 U.S. at 678). Thus, “[a] pleading that

offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause

of action will not do.’” Ash v. Anderson Merchandisers, LLC, 799 F.3d 957, 960

(8th Cir. 2015) (quoting Iqbal, 556 U.S. at 678). “Determining whether a

complaint states a plausible claim for relief . . . [is] a context-specific task that

requires the reviewing court to draw on its judicial experience and common sense.”

Mickelson v. Cty. of Ramsey, 823 F.3d 918, 923 (8th Cir. 2016) (alteration in

original) (quoting Iqbal, 556 U.S. at 679).

Background Facts

In his complaint for copyright infringement, Bell alleges that he registered

the skyline photograph with the United States Copyright Office under registration

number VA0001785115. (ECF No. 1). Bell contends that he discovered Gateway

Blend’s alleged unauthorized use of the skyline photograph in February 2019 using

an image tracing program. (ECF No. 1). Bell then filed the instant complaint

against Gateway Blend in May of 2019. (ECF Doc. 1).

Bell sued a different defendant for copyright infringement over the skyline

photograph in the Southern District of Indiana and lost the jury trial. Bell v.

Carmen Commercial Real Estate Servs., Case Number 1:16CV1174 JRS-MPB

(S.D. Ind. Sept. 26, 2019). In Carmen, the defendant challenged the validity of

Bell’s copyright ownership in the skyline photograph. At trial, the defendant

offered evidence that at the time Bell allegedly took the skyline photograph, he

was a partner and part owner of the law firm Cohen & Malad, LLP. The defendant

argued that the photograph was taken within the scope of Bell’s employment with

the law firm, such that the skyline photograph was a work for hire owned not by

Bell but by his employer. After consideration of the evidence, the jury concluded

that Bell “did not prove by a preponderance of the evidence that he authored the

Indianapolis Skyline Photo, that he owns a copyright in it, and that he registered it

with the Copyright Office. (S.D. Ind. Docket Entry 138). Bell moved for a new

trial, arguing that defendant should not have been allowed to submit the “work for

hire” issue to the jury. The district court denied the motion for new trial in an

opinion issued August 24, 2020, concluding that defendant properly raised the

work for hire defense. (ECF No. 38).

Discussion

As a jury has determined that Bell does not own the copyright in the skyline

photograph, Gateway Blend contends that he is collaterally estopped from arguing

that he owns the copyright in this case, which is an essential element of his claim.

See Warner Bros. Entertainment, Inc. v. X One X Prods., 644 F.3d 584, 595 (8th

Cir. 2011) (elements of copyright infringement are ownership of a valid copyright

and copying of original elements of the copyrighted work). Bell does not dispute

that he must prove that he owns the copyright in the skyline photograph to prevail

in this case but argues that he should not be precluded from asserting his

ownership rights based on the Carmen verdict.

In the Eighth Circuit, the doctrine of issue preclusion has five elements:

(1) the party sought to be precluded in the second suit must have been a

party, or in privity with a party, to the original lawsuit; (2) the issue

sought to be precluded must be the same as the issue involved in the

prior action; (3) the issue sought to be precluded must have been actually

litigated in the prior action; (4) the issue sought to be precluded must

have been determined by a valid and final judgment; and (5) the

determination in the prior action must have been essential to the prior

judgment.

Robinette v. Jones, 476 F.3d 585, 589 (8th Cir. 2007) (citing Anderson v. Genuine

Parts Co., Inc., 128 F.3d 1267, 1273 (8th Cir. 1997). Here, there is no dispute that

Bell, the party sought to be precluded in this case, was also the plaintiff in Carmen.

Nor is there any dispute that the issue of ownership of the copyright in skyline

photograph, which the jury resolved against Bell in Carmen, is the same issue

sought to be precluded in this case. The issue of Bell’s ownership of the copyright

was actually litigated in the Carmen case and was resolved adversely to Bell. The

Southern District of Indiana’s opinion denying Bell’s motion for new trial

discusses at length the determination that Bell did not prove he owned the

copyright, thus demonstrating that the issue was the basis for, and thus essential to,

the defense verdict in Carmen. (ECF 38-1).

Bell argues that the work for hire issue was wrongly decided by the Carmen

court and points to numerous other cases where he was awarded damages in

copyright infringement cases brought by him over the skyline photograph. But it is

not the province of this Court to determine if the decision in Carmen is erroneous.

Instead, this Court’s consideration of the decision is limited to an examination of

whether the issue of his ownership of the copyright in the skyline photograph was

actually and necessarily decided in Carmen. Clearly, it was. Nor does the fact that

he may have other judgments in his favor preclude application of issue preclusion

against him here. Bell argues that he is entitled to use “offensive collateral

estoppel” against Gateway Blend to prevent it from contesting his ownership of the

copyright because other courts have entered judgments in his favor in copyright

infringement cases brought over the skyline photograph. Offensive collateral

estoppel cannot be applied in this case because Gateway Blend was not a party to

any of those cases or in privity with any party who was. Parklane Hosiery Co. v.

Shore, 439 U.S. 322, 327 n.7 (1979). Therefore, issue preclusion will apply here

as long as the last element is met, namely that the Carmen judgment is final.

The Carmen judgment is a final judgment entitled to preclusive effect.

Bell’s argument that the Carmen judgment is not final because his motion for new

trial and defendant’s motion for attorney’s fees were pending in the Southern

District of Indiana has now been rendered moot by the Carmen court’s August 25,

2020 decision denying Bell a new trial and awarding defendant $172,173.06 in

attorney’s fees and costs. (ECF 38-1). Nor does Bell’s potential appeal of

Carmen affect the finality of the judgment for purposes of issue preclusion. See

John Morrell & Co. v. Local Union 304A of United Food & Commercial Workers,

AFL-CIO, 913 F.2d 544, 563 (8th Cir. 1990) (“finality for purpose of appeal under

[28 U.S.C.] section 1291 is not necessarily the finality that is required for issue

preclusion purposes.”); J.Y.C.C. v. Doe Run Resources, Corp., 403 F. Supp. 3d

737, 745 (E.D. Mo. 2019). Issue preclusion may be invoked when “previous

litigation of a particular issue has reached such a stage that a court sees no really

good reason for permitting it to be litigated again.” In re Nangle, 274 F.3d 481,

485 (8th Cir. 2001) (internal quotation and citations omitted). Precluding Bell

from relitigating the issue of whether he owns the copyright in the skyline

photograph is consistent with the decision reached by the district court in the

District of Oregon in Bell v. Davis, 430 F. Supp. 3d 718, 723-24 (D. Ore. 2019).

Like the District Court of Oregon, this Court likewise concludes that the adverse

jury verdict in Carmen precludes Bell in this case from asserting that he has a

copyright interest in the skyline photograph. See id. Because Bell is precluded

from establishing an essential element of his claim for copyright infringement

against Gateway Blend, his complaint must be dismissed without prejudice.!

Accordingly,

IT IS HEREBY ORDERED that the motion for judgment on the pleadings

[22] is granted, and plaintiff's complaint is dismissed without prejudice.

A separate Order of Dismissal is entered this same date.

Ww

RODNEY W. SIP

UNITED STATES DISTRICT JUDGE

Dated this 31st day of August, 2020.

' Although Gateway Blend’s motion initially sought dismissal with prejudice, in a subsequent

filing with this Court it concedes that Bell’s complaint should be dismissed without prejudice in

the event that Carmen is reversed on appeal. (ECF 34 at 5) (“Granting Gateway’s motion and

dismissing Bell’s complaint without prejudice to refile . .. would end this litigation... . Bell

may refile if... the judgment in Carmen is overturned... .”).