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Boehm v. Legends of The Field, LLC

United States District Court, W.D. Wisconsin

March 28, 2018


          OPINION & ORDER


         Plaintiffs 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.


         The following facts are undisputed except where noted.

         Plaintiffs 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' photos.

         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.

         But 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 4326308.

         In 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 agreement.

         The 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. § 1367.


         Summary 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)).

         Legends 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.

         “Claim 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.

         As the 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 ...

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