           RECOMMENDED FOR FULL-TEXT PUBLICATION
                Pursuant to Sixth Circuit Rule 206                          2   Gordon v. Nextel Communications, et al.      No. 01-2274
        ELECTRONIC CITATION: 2003 FED App. 0355P (6th Cir.)
                    File Name: 03a0355p.06                                                      _________________
                                                                                                     COUNSEL
UNITED STATES COURT OF APPEALS
                                                                            ARGUED: John E. Nemazi, BROOKS & KUSHMAN,
                   FOR THE SIXTH CIRCUIT                                    Southfield, Michigan, for Appellant. Herschel P. Fink,
                     _________________                                      HONIGMAN, MILLER, SCHWARTZ & COHN, Detroit,
                                                                            Michigan, for Appellees. ON BRIEF:          Robert C.
 STEPHEN F. GORDON,                 X                                       Brandenburg, BROOKS & KUSHMAN, Southfield,
          Plaintiff-Appellant,       -                                      Michigan, for Appellant. Herschel P. Fink, Cynthia G.
                                     -                                      Thomas, HONIGMAN, MILLER, SCHWARTZ & COHN,
                                     -  No. 01-2274                         Detroit, Michigan, for Appellees.
             v.                      -
                                      >                                                         _________________
                                     ,
 NEXTEL COMMUNICATIONS               -                                                              OPINION
 and MULLEN ADVERTISING ,            -                                                          _________________
 INC.,                               -
         Defendants-Appellees. -                                              MERRITT, Circuit Judge. Plaintiff Stephen F. Gordon
                                     -                                      brought suit against Nextel Communications and Nextel’s
                                    N                                       advertising agency, Mullen Advertising, Inc., for copyright
        Appeal from the United States District Court                        infringement for the unauthorized use of several of Gordon’s
       for the Eastern District of Michigan at Detroit.                     dental illustrations in a television commercial for Nextel’s
  No. 00-73201—John Corbett O’Meara, District Judge.                        two-way text messaging. The district court found that
                                                                            Gordon created the illustrations; nevertheless, the court
                     Argued: March 27, 2003                                 granted defendants’ motion for summary judgment, finding
                                                                            that defendants’ use constituted fair use and was de minimis,
              Decided and Filed: October 6, 2003                            and therefore did not constitute copyright infringement. The
                                                                            court also granted summary judgment as to Gordon’s 17
 Before: MERRITT and BATCHELDER, Circuit Judge;                             U.S.C. § 1202 claim of removal of the copyright notice on the
           DUPLANTIER, District Judge.*                                     basis that Gordon failed to present any evidence that
                                                                            defendants intentionally removed or altered the copyright
                                                                            information or that these defendants knew that the copyright
                                                                            information had been removed. We agree that the use of
                                                                            Gordon’s illustrations was de minimis and therefore affirm the
                                                                            summary judgment as to the copyright infringement claim.
                                                                            In addition, we find that Gordon failed to introduce sufficient
    *
                                                                            evidence that the copyright notice was removed with the
      The Hon orable A drian G. Duplantier, United States D istrict Judge
for the Eastern District of Louisiana, sitting by designation.

                                   1
No. 01-2274     Gordon v. Nextel Communications, et al. 3           4   Gordon v. Nextel Communications, et al.         No. 01-2274

requisite intent; we therefore affirm the summary judgment          126 F.3d at 74. In determining whether the allegedly
with respect to Gordon’s § 1202 claims.                             infringing work falls below the quantitative threshold of
                                                                    substantial similarity to the copyrighted work, courts often
                           I. Facts                                 look to the amount of the copyrighted work that was copied,
                                                                    as well as the observability of the copyrighted work in the
  Gordon is a medical artist whose copyrighted artwork              allegedly infringing work. See id. at 75. Observability is
includes a Dentist-Patient Consultation Illustrations booklet,      determined by the length of time the copyrighted work
which originally consisted of ten sheets of dental illustrations.   appears in the allegedly infringing work, as well as the
Enlarged versions of two of the illustrations can be seen in        prominence in that work as revealed by the lighting and
Nextel’s television commercial featuring a man in a dentist         positioning of the copyrighted work. See id.
chair. Gordon never gave the defendants permission to use
the illustrations, and the versions of the illustrations in the        In analyzing whether a particular use of copyrighted
commercial do not contain the copyright management                  material should be deemed de minimis, courts look to the
information.                                                        regulation issued by the Librarian of Congress providing for
                                                                    royalties to be paid by public broadcasting entities for use of
                        II. Discussion                              published pictorial and visual works. See 37 C.F.R. § 253.8.
                                                                    The regulation distinguishes between a “featured” display and
  Congress has granted exclusive rights to an owner of              a “background and montage” display, setting a higher royalty
copyrighted material to reproduce the work, to prepare              rate for the former. See id. The Librarian has defined a
derivative works, and to distribute copies of the copyrighted       “featured” display as a “full-screen or substantially full screen
work. See 17 U.S.C. § 106(1), (2), and (3). In addition, under      display for more than three seconds,” and a “background or
§ 106(5), the owner has the exclusive right to display the          montage” display as “[a]ny display less than full-screen, or
copyrighted work publicly. See 17 U.S.C. § 106(5).                  full-screen for three seconds or less.” Id.
  With respect to Gordon’s infringement claim under § 106,             Gordon asserts that both illustrations are shown for more
the defendants have asserted two defenses: fair use and de          than the three seconds required by the regulations for royalties
minimis use. Typically, courts examine the de minimis               if shown on public television. Gordon asserts that the Bridge
defense first to determine if any actionable copying has            illustration appears for 10.6 seconds and the Root Canal for
occurred. See Ringgold v. Black Entertainment Television,           7.3 seconds, twice in close-ups. Furthermore, Gordon asserts
Inc., 126 F.3d 70, 77 (2d Cir. 1997). A court will examine          that 2.3 seconds of Root Canal is viewed full-screen or
the fair use defense only if the de minimis threshold for           substantially full screen.
actionable copying has been exceeded. See id. We proceed
accordingly.                                                           In support of their claim that the use of the illustrations was
                                                                    de minimis, the defendants assert that the Bridge illustration
  To establish that a copyright infringement is de minimis,         is never in focus and appears only briefly in background.
the alleged infringer must demonstrate that the copying of the      Additionally, they contend that the illustration component of
protected material is so trivial “as to fall below the              the Root Canal work is observable for less than a second, and
quantitative threshold of substantial similarity, which is          the viewers’ attention is drawn to the words “root canal,”
always a required element of actionable copying.” Ringgold,         which are not copyrightable. The district court concluded
No. 01-2274     Gordon v. Nextel Communications, et al. 5            6    Gordon v. Nextel Communications, et al.            No. 01-2274

that use of Gordon’s artwork was de minimis, primarily for           No person shall, without the authority of the copyright owner
the reasons articulated by the defendants. JA at 499. Our            or the law--
review confirms the conclusions of the district court.
                                                                          (1) intentionally remove or alter any copyright
  Because observability is determined by the length of time              management information,
the copyrighted work appears in the allegedly infringing
work, as well as its prominence as revealed by the lighting                                          .....
and the positioning of the copyrighted work, it is apparent
that the use of the Bridge illustration does not rise to the level          (3) distribute ... copies of works ... knowing that
of actionable copying. The Bridge illustration is never in               copyright management information has been removed or
focus and appears only as distant background.                            altered without authority of the copyright owner or the
                                                                         law,
   While the use of the Root Canal illustration presents a
closer question, we find its use also to be de minimis. We                 knowing, or, with respect to civil remedies under
have viewed a video copy of the relevant portions of the                 section 1203, having reasonable grounds to know, that it
alleged infringing commercial, and we find that the                      will induce, enable, facilitate, or conceal an infringement
defendants’ use of Root Canal falls below the quantitative               of any right under [federal copyright law].
threshold of actionable copying. In contrast to Ringgold,
where the court found that the artwork was “clearly visible ...      17 U.S.C. § 1202(b).
with sufficient observable detail for the ‘average lay observer’
... to discern African-Americans in Ringgold’s colorful,                We first must address the defendants’ claim that Gordon
virtually two-dimensional style,” Ringgold, 126 F.3d at 77,          failed to present any evidence that the defendants themselves
the primary impact of the use of the Root Canal illustration in      intentionally removed or altered the copyright information or
the commercial comes from the focus on the words, which are          that the defendants even knew that the information had been
not copyrightable. The initial focus on the illustration itself      removed. Regardless of the defendants’ actual knowledge of
is very brief. Because Gordon’s illustrations appear fleetingly      the removal or alteration of the copyright information, a party
and are primarily out of focus, we find their use to be de           may be held vicariously liable for the actions of others under
minimis. Therefore, we affirm the district court’s grant of          certain circumstance within the copyright context. Vicarious
summary judgment and we need not address the defendants’             liability exists when (1) a defendant has the right and ability
fair use defense.                                                    to supervise the infringing conduct and (2) the defendant has
                                                                     an obvious and direct financial interest in the infringement.1
  We turn next to Gordon’s claims under 17 U.S.C. § 1202.            See Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d
Gordon alleges that the defendants violated sections                 304, 307 (2d Cir. 1963). These elements are independent
1202(b)(1) and (3) because the illustrations used in the             requirements, and each must be present to render a defendant
commercials did not include the copyright management                 vicariously liable. See id. Lack of knowledge of the
information, which the statute defines as “the title and other
information identifying the work including the information                1
set forth in a notice of copyright.” 17 U.S.C. § 1202(c)(1).              By contrast, contributory infringement occurs when a defendant
Section 1202(b) provides, in relevant part,                          induces, causes, or materially co ntributes to the infringing conduct of
                                                                     another, with knowledge of the infringing activity.
No. 01-2274     Gordon v. Nextel Communications, et al. 7         8   Gordon v. Nextel Communications, et al.      No. 01-2274

infringement is irrelevant. See id. Vicarious copyright           granted based on the defendants’ lack of actual knowledge of
liability is an “outgrowth” of the common law doctrine of         the removal of the copyright management information when
respondeat superior, which holds the employer liable for the      they may be vicariously liable for its removal.
acts of its agents. Fonovisa, Inc. v. Cherry Auction, Inc., 76
F.3d 259, 262 (9th Cir. 1996). However, vicarious liability          The defendants also suggest that Gordon made a procedural
extends beyond the traditional scope of the master-servant        mistake by failing to name Crossroads, the production
theory. See Nimmer on Copyright, § 12.04. As long as the          company and purported “direct” actor, as a defendant.
required elements are present, a defendant may be liable, even    However, the case law suggests that it is permissible for a
in the absence of a traditional employer-employee                 plaintiff to name as a defendant one who is liable only as a
relationship. See id.                                             vicarious infringer without also naming the “direct” infringer
                                                                  as a defendant. The primary example of this reasoning is the
  Shapiro is the landmark case in which vicarious liability for   Supreme Court opinion in Sony Corp. v. Universal City
sales of counterfeit recordings was expanded outside the          Studios, Inc., 464 U.S. 417, 434 (1984) (“The two
employer-employee context. In Shapiro, the court was faced        respondents in this case do not seek relief against the
with a copyright infringement suit against the owner of a         Betamax users who have allegedly infringed their
chain of department stores where a concessionaire was selling     copyrights.”). Nonetheless, there can be no secondary
counterfeit recordings. Noting that the normal agency rule of     liability absent primary infringement. See Sony, 464 U.S. at
respondeat superior imposes liability on an employer for          434 (“To prevail, they have the burden of proving that users
copyright infringement by an employee, the Second Circuit         of the Betamax have infringed their copyrights and that Sony
articulated what has become the acknowledged standard for         should be held responsible for that infringement.”).
a finding of vicarious liability in the context of copyright      Therefore, it is not fatal to Gordon’s claims that he failed to
infringement:                                                     name Crossroads as a co-defendant.
  When the right and ability to supervise coalesce with an          We proceed to an examination of the actual elements of the
  obvious and direct financial interest in the exploitation       1202 claims. The very few reported cases that examine the
  of copyrighted materials--even in the absence of actual         applicability of this section, which was enacted in 1998,
  knowledge that the copyright monolpoly [sic] is being           found that the statute did not apply on the facts presented.
  impaired ..., the purpose of copyright law may be best          See, e.g., Thron v. HarperCollins Publishers, Inc., 64
  effectuated by the imposition of liability upon the             U.S.P.Q.2d 1221 (S.D.N.Y. 2002) and Kelly v. Ariba Soft
  beneficiary of that exploitation.                               Corp., 77 F.Supp.2d 1116 (C.D. Cal. 1999).
Shapiro, 316 F.2d at 307 (internal citations omitted).              Regarding the alleged 1202(b)(3) violation, Gordon must
                                                                  prove that the defendants -- or those for whom they are
   Although the record is not clear in this regard, it is         vicariously liable -- possessed actual knowledge of the
reasonable to infer that Mullen, the advertising agency,          unauthorized change to the copyright management
retained the ability to supervise the development of the          information, because the statute requires the defendant to act
commercial. Certainly both defendants had direct financial        “knowing that copyright management information [had] been
interests in the exploitation of the copyrighted materials. As    removed or altered without authority of the copyright owner
a result, it is inappropriate to permit summary judgment to be    or the law.” 17 U.S.C. § 1202(b)(3). Accord Nimmer,
No. 01-2274     Gordon v. Nextel Communications, et al. 9         10 Gordon v. Nextel Communications, et al.         No. 01-2274

§ 12A.09[B][1][b]. According to the affidavit of Kevin            advertisement were made from Gordon’s wallchart or the
McCarthy, Crossroads’ art director, when Crossroads               booklet, which contained the copyright management
obtained the poster from the Cinema World, its personnel          information within the individual illustrations. Because this
believed that the poster had been cleared for use in television   clearly is a dispute of material fact, it is not appropriate to
commercials. The record contains no proof to contradict this      grant summary judgment on this basis.
assertion, nor evidence concerning Cinema World’s conduct.
As a result, there is no proof that the defendants --through         Next, the defendants assert that, even if they are vicariously
Crossroads or Cinema World -- utilized the version of the         liable for the actions of Crossroads, there is no proof that any
illustrations “knowing that copyright management                  removal by Crossroads was intentional. In support, they point
information [had] been removed or altered without authority       to the testimony of Kevin McCarthy, who stated that no one
of the copyright owner.” 17 U.S.C. § 1202(b)(3). The              at Crossroads intended to or did remove the copyright notice
defendants are entitled to summary judgment on the                from the artwork. McCarthy admits that he used the rental
1202(b)(3) claim.                                                 poster, scanned and enlarged a portion of it, and made the
                                                                  framed pictures that were used as the set decorations.
   A section 1202(b)(1) violation occurs when a person (i)        McCarthy admits that he removed the information, and there
without authority of the copyright owner or the law               is no suggestion that the removal was unintentional.
(ii) intentionally removes or alters any copyright management
information (iii) knowing or having reasonable grounds to            Defendants further contend that Gordon submitted no proof
know that it will induce, enable, facilitate, or conceal an       that the removal of the copyright notice was done with the
infringement of the federal copyright laws. Although Gordon       requisite “reason to know that the removal would induce,
failed to introduce evidence that Nextel or Mullen was aware      enable, facilitate, or conceal an infringement.” 17 U.S.C.
of any infringement until they received the cease and desist      § 1202(b). Rather, when Crossroads obtained the poster from
letter from Gordon’s counsel, he argues that because the          the prop company, its personnel believed that the poster had
copyright information is absent from the illustrations,           been cleared for use in television commercials. As a result,
Crossroads must have removed it, and that Nextel and Mullen       the defendants assert, there is no evidence that Crossroads had
are liable for Crossroads’ actions.                               any reason to know that the removal would facilitate or
                                                                  conceal an infringement. Furthermore, McCarthy asserts that
  The defendants assert several defenses to Gordon’s 1202         it was his practice to obtain permission from an artist if the
claim. First, they assert that Gordon failed to present any       artwork was not obtained from a prop house, and that he
evidence that Nextel or Mullen’s conduct brings them within       would have sought Gordon’s approval if he thought there was
any of the elements set forth in section 1202. However, as        a clearance issue in this case. The record contains no
outlined above, the defendants may be vicariously liable for      evidence to counter McCarthy’s testimony. As a result,
the actions of Crossroads and its employees.                      Gordon may not claim that the copyright information was
                                                                  removed with reasonable grounds to know that it would
  Defendants next claim that here, as in Kelly v. Ariba Soft      “induce, enable, facilitate, or conceal an infringement.” See
Corp., there is no proof that the copyright information was       1202(b). We believe that the district court correctly granted
removed from the individual illustrations, rather than the        summary judgment for the defendants on Gordon’s 1202
white space surrounding the illustrations themselves.             claims.
However, the parties dispute whether the posters used in the
No. 01-2274    Gordon v. Nextel Communications, et al. 11

  For the foregoing reasons, we affirm the district court’s
opinion in its entirety.
