United States District Court, W.D. Wisconsin
OPINION & ORDER
D. PETERSON DISTRICT JUDGE.
Scott Boehm and David Stluka are professional sports
photographers. They have sued numerous sports memorabilia
retailers in multiple lawsuits for copyright infringement.
This is their second lawsuit against defendant Legends of the
Field, LLC. Now before the court are the parties'
cross-motions for summary judgment. Dkt. 105 and Dkt. 144.
Legends moves for summary judgment that plaintiffs'
infringement claims are barred by a number of affirmative
defenses, among other things. Because the doctrine of claim
preclusion clearly bars plaintiffs' copyright
infringement claims, the court will dismiss those claims with
prejudice and relinquish supplemental jurisdiction over the
remaining state-law claims.
following facts are undisputed except where noted.
are professional sports photographers. They have registered
their copyrights to the photos at issue in this suit. Legends
sells sports memorabilia through its retail stores. It
acquired digital copies of plaintiffs' photos without
authorization. Legends then offered for sale in its stores
prints, canvases, and posters featuring plaintiffs'
first brought suit against Legends, among others, in
Boehm v. Zimprich (Boehm I), No. 14-cv-16
(W.D. Wis. filed Jan. 9, 2014), transferred from No.
13-cv-1031 (S.D.N.Y. filed Feb. 14, 2013). Plaintiffs alleged
that Legends created, displayed, or sold items featuring
plaintiffs' photos without authorization. The court
granted plaintiffs' motion for partial summary judgment,
finding that Legends infringed plaintiffs' copyrights. On
January 13, 2015, before the court could resolve the
remaining damages issues in the case, plaintiffs entered into
a settlement agreement with Legends of the Field.
See Dkt. 116-3. Under the terms of the settlement,
Legends agreed to pay plaintiffs a certain monetary sum and
represented that (1) it had “removed any and all copies
of all [of plaintiffs'] photos identified in the Action
on document bates-labeled GETTY P000447 from any and all
websites in its control”; (2) it had “deleted or
destroyed any and all digital copies of those photos from any
systems and servers in its possession”; and (3) it
would “refrain from any unauthorized uses of those
photos in the future.” Id. at 3-4. Both
parties released all claims “of any nature[, ] accrued
or unaccrued, . . . known or unknown, arising out of the
substance of the claims, defenses, or positions of any Party
asserted in the Action, including specifically any and all
claims of unauthorized use of [plaintiffs'] images by
[Legends] from the beginning of time to the Effective
Date” of the agreement, that is, January 13, 2015.
Id. at 3. Both parties also agreed to keep the terms
of the agreement confidential. Plaintiffs dismissed their
claims against Legends with prejudice on January 16.
See No. 14-cv-16, Dkt. 174. Legends paid the full
settlement amount to plaintiffs on March 24 in accordance
with the agreement.
despite Legends' representation, it did not remove every
infringing item from its inventory. Some items were
overlooked. After the settlement agreement was signed and
Boehm I was dismissed, Legends sold several items
featuring plaintiffs' photos and publicly displayed
several of plaintiffs' photos in online advertisements.
After plaintiffs became aware of these infringing acts, they
filed this lawsuit on October 23, 2015. The court will refer
to this lawsuit as Boehm III to distinguish it from
Boehm v. Martin (Boehm II), No. 15-cv-379
(W.D. Wis. filed June 19, 2015), a related lawsuit filed
against several sports memorabilia retailers and suppliers
who bought infringing items from or sold infringing items to
the Boehm I defendants. In a September 27, 2017
opinion, the court determined that many of plaintiffs'
claims in Boehm II could have been litigated in
Boehm I and therefore were barred by claim
preclusion. See Boehm II, No. 15-cv-379, 2017 WL
Boehm III, plaintiffs assert claims against Legends
for breach of the settlement agreement's confidentiality
provision, fraudulent misrepresentation concerning removing
plaintiffs' photos from its inventory, and engaging in
new infringing acts, both directly and indirectly. Legends
asserts counterclaims for breach of the settlement
agreement's release, breach of the duty of good faith and
fair dealing for failing to notify Legends of technical
breaches, and declaratory judgment to enforce the settlement
court has subject matter jurisdiction over plaintiffs'
copyright infringement claims under 28 U.S.C. § 1331
because they arise under federal law. It may exercise
supplemental jurisdiction over plaintiffs' state-law
claims and Legends' counterclaims under 28 U.S.C. §
judgment is appropriate if a moving party “shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). When, as here, the parties have filed
cross-motions for summary judgment, the court “look[s]
to the burden of proof that each party would bear on an issue
of trial; [and] then require[s] that party to go beyond the
pleadings and affirmatively to establish a genuine issue of
material fact.” Santaella v. Metro. Life Ins.
Co., 123 F.3d 456, 461 (7th Cir. 1997). If either party
“fails to make a showing sufficient to establish the
existence of an element essential to that party's case,
and on which that party will bear the burden at trial,
” summary judgment against that party is appropriate.
Mid Am. Title Co. v. Kirk, 59 F.3d 719, 721 (7th
Cir. 1995). “As with any summary judgment motion, this
[c]ourt reviews these cross-motions ‘construing all
facts, and drawing all reasonable inferences from those
facts, in favor of . . . the non-moving party.'”
Wis. Cent., Ltd. v. Shannon, 539 F.3d 751, 756 (7th
Cir. 2008) (quoting Auto. Mechs. Local 701 Welfare &
Pension Funds v. Vanguard Car Rental USA, Inc., 502 F.3d
740, 748 (7th Cir. 2007)).
argues that plaintiffs' claims of copyright infringement
are barred by the Boehm I settlement agreement,
among other things. The thrust of Legends' argument is
that the infringing acts at issue in Boehm III all
concern copies of plaintiffs' photos that were at issue
in Boehm I and incorporated into the Boehm
I settlement agreement, and therefore fall within the
scope of the Boehm I settlement agreement release.
This argument aligns with the court's claim preclusion
analysis in Boehm II. If claim preclusion applied to
claims against the Boehm II defendants, who
weren't defendants in Boehm I, it clearly
applies to claims against Legends, who was a defendant in
Boehm I. Even if Legends hadn't made a similar
argument in this case, the court may raise claim preclusion
sua sponte where, as here, the doctrine “clearly
applies.” Reed v. Mackey, 669 F. App'x
307, 308 (7th Cir. 2016) (citing Kratville v.
Runyon, 90 F.3d 195, 197-98 (7th Cir. 1996)). So the
court will undertake the same claim preclusion analysis used
in Boehm II.
preclusion applies when (1) the two lawsuits ‘arise out
of “a common core of operative facts”'; (2)
the parties are identical or in privity; and (3) the first
lawsuit resulted in a final judgment on the merits.”
Boehm II, 2017 WL 4326308, at *4 (quoting Bell
v. Taylor, 827 F.3d 699, 706 (7th Cir. 2016)). Beginning
with the first element, “to determine whether the same
transaction is at issue in both cases, courts ‘consider
the totality of the claims, including the nature of the
claims, the legal basis for recovery, the law involved, and
the respective factual backgrounds.'” Id.
(quoting Bernstein v. Bankert, 733 F.3d 190, 227
(7th Cir. 2013)). Just as in Boehm II,
plaintiffs' infringement claims here involve the same law
and legal basis for recovery. The same images-and the same
copies of those images-are at issue in both suits. And the
parties are the same. The infringing acts may be different,
but as explained in Boehm II, that fact is not
decisive when the additional acts of display or distribution
involve copies covered by the judgment. See Id. The
first element is satisfied. The second element, identity of
parties, was the decisive issue in Boehm II-because
the Boehm II defendants' interests were not
adequately represented by Legends in Boehm I, claim
preclusion did not apply to the “Legends joint
tortfeasors” (unlike the “Zimprich joint
tortfeasors”). But not so here, where the parties are
exactly the same. The second element is satisfied.
And the third element, a final judgment, is satisfied for the
same reasons discussed in Boehm II: “A
stipulation of dismissal with prejudice is a final judgment
for claim preclusion purposes.” Id. at *5.
court explained in Boehm II, “claim preclusion
bars successive litigation of any claims that were litigated
or could have been litigated in Boehm I.”
Id. at *6. That means plaintiffs are barred from
litigating any claim of infringement against Legends
“based on infringing copies made before January 16,
2015, the date of the final judgment in Boehm I. New
copies of plaintiffs' copyrighted works made after that
date inflict injuries sufficiently distinct to regard them as
not arising from the core of operative facts in Boehm
I. But the ...