United States District Court, W.D. Wisconsin
OPINION AND ORDER
BARBARA B. CRABB, DISTRICT JUDGE
plaintiffs Eric and Tracy Ehmann filed this lawsuit against
defendant Nicholas Metropulos for monetary and injunctive
relief under 17 U.S.C. §§ 501-505, alleging that
defendant violated federal copyright law by using their
registered art work (the “Hodag” logo) on
merchandise that defendant sold online and in his store.
Before the court is defendant's motion under Federal Rule
of Civil Procedure 12(b)(6) to dismiss either plaintiff Tracy
Ehmann or plaintiff Eric Ehmann for lack of standing. Dkt.
#12. (Defendant previously filed a motion to dismiss
plaintiff Eric Ehmann's original complaint, dkt. #5, but
that motion became moot when plaintiff filed an amended
complaint in which his wife was added as a plaintiff.) For
the reasons below, I am denying defendant's motion to
dismiss in its entirety.
resolving a motion to dismiss, the court must take all
well-pleaded facts in the complaint as true and draw all
reasonable inferences in favor of plaintiffs. Reger
Development, LLC v. National City Bank, 592 F.3d
759, 763 (7th Cir. 2010). Plaintiffs allege the following
facts in their amended complaint.
Eric Ehmann and Tracy Ehmann (formerly Tracy Goberville) are
residents of Appleton, Wisconsin and have been married since
2008. Defendant Nicholas Metropulos resides in Rhinelander,
Wisconsin. Since 2006, defendant has produced screen-printed
and embroidered apparel and other items that he sells through
his businesses, Home of The Hodag Wear and Metro
Screenprinting & Embroidery.
Ehmann created a number of original artistic designs of the
“Hodag, ” the mascot of Rhinelander. She created
the “Hodag Logos” on May 9, 2006, and registered
them on May 22, 2006 (registration no. VA-1-370-235).
Sometime thereafter, Tracy and Eric Ehmann entered into
business together as the “Hodag Gallery” and
Tracy Ehmann conveyed all of her ownership and copyright
interests in the Hodag Logos to Eric Ehmann. From 2009 to
2011, plaintiffs produced, advertised and sold apparel and
other merchandise bearing the Hodag Logos and other Hodag
designs through a website and direct mail. However, most of
plaintiffs' business records and the written documents
related to the transfer of ownership of the Hodag Logos were
destroyed in a flood that occurred in the basement of
plaintiffs' home in June 2010. Plaintiffs moved to
Appleton, Wisconsin in July 2011.
18, 2019, Eric Ehmann visited defendant's retail store in
Rhinelander and observed apparel for sale with images of the
Hodag Logos. Defendant also advertises his allegedly
infringing merchandise online. Plaintiffs sent defendant a
cease and desist letter on June 26, 2019, but defendant
refused to comply.
motion to dismiss under Fed.R.Civ.P. 12(b)(6) tests the
complaint's legal sufficiency. A complaint survives a
motion to dismiss if it “contain[s] sufficient factual
matter, accepted as true, to ‘state a claim to relief
that is plausible on its face.'” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell
Atlantic 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.” Id. “The
plausibility standard is not akin to a ‘probability
requirement,' but it asks for more than a sheer
possibility that a defendant has acted unlawfully.”
case, plaintiffs allege that defendant has infringed their
registered copyright. In order to establish copyright
infringement, a plaintiff must show “(1) ownership of a
valid copyright, and (2) copying of constituent elements of
the work that are original.” Feist Publications,
Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340,
361 (1991). See also Mid America Title Co. v. Kirk,
991 F.2d 417, 421 (7th Cir.1993) (citing 5 Charles A. Wright
& Arthur A. Miller, Federal Practice and
Procedure, § 1237, at 283 (1990) (copyright
infringement allegations sufficient to state claim when
plaintiff alleges present copyright ownership by plaintiff,
registration in compliance with applicable statute and
infringement by defendant.). A “copyright owner”
is someone who owns one of the exclusive rights comprised in
a copyright, 17 U.S.C. § 101, including the right to
copy, record, adapt and publish. 17 U.S.C. § 106.
Copyright ownership “vests initially in the author or
authors of the work, ” 17 U.S.C. § 201(a), which
in this case was Tracy Ehmann, but ownership may be
transferred “by any means of conveyance or by operation
of law.” 17 U.S.C. § 201(d)(1).
allege that Tracy Ehmann created the Hodag Logos in 2006 and
later transferred all of her ownership in the registered
copyright to Eric Ehmann. Defendant argues that because Tracy
Ehmann is no longer the owner of the contested copyright, she
does not have standing to sue him for copyright infringement.
In addition, defendant points out that because plaintiffs
allege that all written documents related to the transfer of
ownership were destroyed in a flood in 2010, Eric Ehmann
cannot prove that he is the owner of the copyright because
“[a] transfer of copyright ownership, other than by
operation of law, is not valid unless an instrument of
conveyance, or a note or memorandum of the transfer, is in
writing and signed by the owner of the rights
conveyed.” 17 U.S.C. § 204(a).
defendant is correct that § 204(a) requires that
transfers be in writing, it is still possible, even without
the written agreement itself, that plaintiffs can prove that
a written transfer instrument existed. Brainstorm
Interactive, Inc. v. School Specialty, Inc., 2014 WL
6893881, at *2, 9-10 (W.D. Wis. Dec. 5, 2014) (finding that
even though written transfer agreements no longer existed,
plaintiff had presented sufficient evidence-including
affidavits and deposition testimony- to create genuine issue
of fact as to existence of written agreement). There also is
no requirement that the writing be signed before or at the
time of the transfer of rights. Big Daddy Games, LLC v.
Reel Spin Studios, LLC, 2013 WL 12233949, at *10 (W.D.
Wis. Apr. 10, 2013) (citing Billy Bob Teeth, Inc. v.
Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003)
(“oral assignment may be confirmed later in
addition, as this court noted in Big Daddy Games,
The reason copyright transfers must be in writing is to
protect copyright holders and to resolve disputes between
copyright owners and transferees about the status of the
copyright. Billy Bob Teeth, 329 F.3d at 592. Where
there is no such dispute, an accused third-party infringer
cannot challenge the evidence of transfer in an effort to
avoid suit. Id. (holding that accused infringer
“did not have standing” to argue that