Moot Court

Eva Mudd v. Gimmix, Inc.

District Court for the District of New Hampshire

Ira Scible, J.

Eva Mudd has filed a 17 U.S.C. § 412 action against Gimmix, Inc. [Gimmix], a New Hampshire corporation, and Zackary Porter, its main stockholder and President. This court has jurisdiction under 28 U.S.C. § 1338(a).
Mudd seeks relief for his sale of certain ceramic figurines. Gimmix and Porter have responded that copyright resides in Gimmix. They have filed a cross complaint seeking relief against Mudd. Neither side has requested a jury trial. After full consideration of facts agreed upon and as developed at bench and of the legal arguments of the parties, I grant relief as originally requested and deny that sought in the cross complaint.

I. Undisputed Facts      Gimmix manufactures and sells bumper stickers, post cards, posters and the like throughout New England. Most of its merchandise is based on the work of Porter, a graphics artist. In 1993, Porter decided to sell figurines in the shape of black flies bearing the legend, "The New Hampshire State Bird." With drawings showing the proposed figurine from several angles, he approached Mudd, who has a studio in Canterbury, NH, and asked her to turn his drawings into a three dimensional work approximately four inches tall. As a NH native, Mudd was not very excited about this, but business was slow. So she took the commission. When Porter offered a document reciting that her work would be a "copyright for hire," she signed it.
     Porter was sometimes around and asked a few questions as she proceeded, but Mudd worked in her own studio, using her own tools. With Gimmix advancing money for materials and time, after several attempts, Mudd arrived at a version of the black fly that Porter found acceptable. He then registered copyright in his artwork as both author and claimant. He also registered Mudd's final figurine with Gimmix as claimant. After further negotiation, Mudd prepared a mold and made 300 figurines for Gimmix. These sold quickly, and, through early summer, 1995, she made several more sets.
     In 1996, Gentle Ping a buyer for Packrats, a Maine mail order firm, was touring craft shops. At Mudd's studio, he became interested in an early version of the black fly. Mudd told him of its origin and said that she didn't make them any more. When Ping offered to buy a thousand at a price considerably above what Porter had been paying, she became interested.
     Mudd then consulted a neighbor who was going to Franklin Pierce Law Center. Upon being shown a definition in 17 U.S.C. § 101, she concluded that agreeing that her work was "for hire" did not make it so. She then registered copyright in that fly and began selling to Packrats.
     Meanwhile, Porter found that figurines could be made in the Pacific Rim for a fraction of what Mudd had been charging. Gimmix has since sold several thousand imported fllies copied from one made for it by Mudd. During the 1997 black fly season, these came to Mudd's attention, and she promptly instituted suit.
     Since then, no party has made any more flies. However, with another season coming up, the parties are eager to have this resolved.

II. Discussion and Conclusions of Law      Based on exhibits, I find neither the imported fly nor that made for Packrats to be substantially similar to Porter's artwork. Indeed, the fly made for Packrats is very different, and I understand that difference to be why it was originally rejected by Porter. The version finally accepted is closer but still quite different. As a graphics artist, Porter simply did not appreciate the limitations of the medium. In short, his paper fly could not be made of clay.
     Thus, Mudd's work does not infringe copyright in Porter's artwork -- assuming it to be validly registered.[1]
     Moving to the figurines, I find that Mudd's work was not "for hire" (meaning that only Gimmix would own the copyright). While Porter made suggestions and decided to accept what ultimately became the imported fly and rejected others, this does not mean that Mudd was in Gimmix's employ. Also, while Gimmix paid the cost of producing rejected versions, it is important that Mudd used her own tools, in her own studio, and worked without supervision. With regard to the last, it is worth mentioning that, as a matter of law, Porter was not qualified to "supervise." This, standing alone, is enough to make Mudd the sole author (and copyright owner) of all her work, including the imported fly.
     Moreover, I find the works in question not to be "joint" (meaning that either Gimmix or Mudd could make and sell them, perhaps with some kind of cross accounting). The statute requires that joint works be prepared with the intention that the contributions of several authors "be merged into inseparable or interdependent parts of a unitary whole." I find no evidence of such an intent nor of such a result.
     Finally, while Mudd has not registered copyright in the imported fly, I find that figurine sufficiently close to what she did register to infringe that copyright. Also, Gimmix registered the imported fly. Based on the previous discussion, it is clear that the latter registration should be transferred to Mudd. Equity regards as done what should be done, and this supports Mudd's right to a full set of copyright remedies against cheap imitations of her craftsmanship.

III. Relief Gimmix, Inc. and Ira M. Porter, individually, are hereby ordered to turn over Gimmix's inventory of imported flies for destruction, cease henceforth from infringing Eva Mudd's copyrights and execute an assignment of Gimmix's copyright registration of the imported fly to Mudd. Moreover, Mudd is awarded $10,000.00 in statutory damages and, upon receipt of requisite proof, will be awarded costs and attorney fees.

The Appeal      Gimmix has filed timely notice of appeal to the 1st Circuit, challenging that decision.
     * First, it urges that the District Court erred in its emphasis on the fact that Mudd worked without close, continuing supervision. It further urges that, at a minimum, it should be regarded as a joint owner of copyright in the figurines by virtue of Porter's artistic contributions.
     * Second, it urges that, because Mudd did not register within three months of publication of the figurine Gimmix sells, she is entitled to neither attorney fees nor statutory damages. Moreover, it urges that relief awarded by the District Court is otherwise unduly harsh in view of the facts.

[1] It is at best supremely ironic that Porter, clearly an employee of Gimmix, took pains to register his work in his name but Mudd's work in the firm's name.

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