Stephen F. Gordon v. NEXTEL COMMUNICATIONS and MULLEN ADVERTISING, INC.

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

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

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No. 01-2274 Gordon v. Nextel Communications, et al. 5
that use of Gordon’s artwork was de minimis, primarily for
the reasons articulated by the defendants. JA at 499. Our
review confirms the conclusions of the district court.
Because observability is determined by the length of time
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
of actionable copying. The Bridge illustration is never in
focus and appears only as distant background.
While the use of the Root Canal illustration presents a
closer question, we find its use also to be de minimis. We
have viewed a video copy of the relevant portions of the
alleged infringing commercial, and we find that the
defendants’ use of Root Canal falls below the quantitative
threshold of actionable copying. In contrast to Ringgold,
where the court found that the artwork was “clearly visible ...
with sufficient observable detail for the ‘average lay observer’
... to discern African-Americans in Ringgold’s colorful,
virtually two-dimensional style,” Ringgold, 126 F.3d at 77,
the primary impact of the use of the Root Canal illustration in
the commercial comes from the focus on the words, which are
not copyrightable. The initial focus on the illustration itself
is very brief. Because Gordon’s illustrations appear fleetingly
and are primarily out of focus, we find their use to be de
minimis. Therefore, we affirm the district court’s grant of
summary judgment and we need not address the defendants’
fair use defense.
We turn next to Gordon’s claims under 17 U.S.C. § 1202.
Gordon alleges that the defendants violated sections
1202(b)(1) and (3) because the illustrations used in the
commercials did not include the copyright management
information, which the statute defines as “the title and other
information identifying the work including the information
set forth in a notice of copyright.” 17 U.S.C. § 1202(c)(1).
Section 1202(b) provides, in relevant part,
6 Gordon v. Nextel Communications, et al. No. 01-2274
1By contrast, contributory infringement occurs when a defendant
induces, causes, or materially co ntributes to the infringing conduct of
another, with knowledge of the infringing activity.
No person shall, without the authority of the copyright owner
or the law--
(1) intentionally remove or alter any copyright
management information,
. . . . .
(3) distribute ... copies of works ... knowing that
copyright management information has been removed or
altered without authority of the copyright owner or the
law,
knowing, or, with respect to civil remedies under
section 1203, having reasonable grounds to know, that it
will induce, enable, facilitate, or conceal an infringement
of any right under [federal copyright law].
17 U.S.C. § 1202(b).
We first must address the defendants’ claim that Gordon
failed to present any evidence that the defendants themselves
intentionally removed or altered the copyright information or
that the defendants even knew that the information had been
removed. Regardless of the defendants’ actual knowledge of
the removal or alteration of the copyright information, a party
may be held vicariously liable for the actions of others under
certain circumstance within the copyright context. Vicarious
liability exists when (1) a defendant has the right and ability
to supervise the infringing conduct and (2) the defendant has
an obvious and direct financial interest in the infringement.1
See Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d
304, 307 (2d Cir. 1963). These elements are independent
requirements, and each must be present to render a defendant
vicariously liable. See id. Lack of knowledge of the

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No. 01-2274 Gordon v. Nextel Communications, et al. 7
infringement is irrelevant. See id. Vicarious copyright
liability is an “outgrowth” of the common law doctrine of
respondeat superior, which holds the employer liable for the
acts of its agents. Fonovisa, Inc. v. Cherry Auction, Inc., 76
F.3d 259, 262 (9th Cir. 1996). However, vicarious liability
extends beyond the traditional scope of the master-servant
theory. See Nimmer on Copyright, § 12.04. As long as the
required elements are present, a defendant may be liable, even
in the absence of a traditional employer-employee
relationship. See id.
Shapiro is the landmark case in which vicarious liability for
sales of counterfeit recordings was expanded outside the
employer-employee context. In Shapiro, the court was faced
with a copyright infringement suit against the owner of a
chain of department stores where a concessionaire was selling
counterfeit recordings. Noting that the normal agency rule of
respondeat superior imposes liability on an employer for
copyright infringement by an employee, the Second Circuit
articulated what has become the acknowledged standard for
a finding of vicarious liability in the context of copyright
infringement:
When the right and ability to supervise coalesce with an
obvious and direct financial interest in the exploitation
of copyrighted materials--even in the absence of actual
knowledge that the copyright monolpoly [sic] is being
impaired ..., the purpose of copyright law may be best
effectuated by the imposition of liability upon the
beneficiary of that exploitation.
Shapiro, 316 F.2d at 307 (internal citations omitted).
Although the record is not clear in this regard, it is
reasonable to infer that Mullen, the advertising agency,
retained the ability to supervise the development of the
commercial. Certainly both defendants had direct financial
interests in the exploitation of the copyrighted materials. As
a result, it is inappropriate to permit summary judgment to be
8 Gordon v. Nextel Communications, et al. No. 01-2274
granted based on the defendants’ lack of actual knowledge of
the removal of the copyright management information when
they may be vicariously liable for its removal.
The defendants also suggest that Gordon made a procedural
mistake by failing to name Crossroads, the production
company and purported “direct” actor, as a defendant.
However, the case law suggests that it is permissible for a
plaintiff to name as a defendant one who is liable only as a
vicarious infringer without also naming the “direct” infringer
as a defendant. The primary example of this reasoning is the
Supreme Court opinion in Sony Corp. v. Universal City
Studios, Inc., 464 U.S. 417, 434 (1984) (“The two
respondents in this case do not seek relief against the
Betamax users who have allegedly infringed their
copyrights.”). Nonetheless, there can be no secondary
liability absent primary infringement. See Sony, 464 U.S. at
434 (“To prevail, they have the burden of proving that users
of the Betamax have infringed their copyrights and that Sony
should be held responsible for that infringement.”).
Therefore, it is not fatal to Gordon’s claims that he failed to
name Crossroads as a co-defendant.
We proceed to an examination of the actual elements of the
1202 claims. The very few reported cases that examine the
applicability of this section, which was enacted in 1998,
found that the statute did not apply on the facts presented.
See, e.g., Thron v. HarperCollins Publishers, Inc., 64
U.S.P.Q.2d 1221 (S.D.N.Y. 2002) and Kelly v. Ariba Soft
Corp., 77 F.Supp.2d 1116 (C.D. Cal. 1999).
Regarding the alleged 1202(b)(3) violation, Gordon must
prove that the defendants -- or those for whom they are
vicariously liable -- possessed actual knowledge of the
unauthorized change to the copyright management
information, because the statute requires the defendant to act
“knowing that copyright management information [had] been
removed or altered without authority of the copyright owner
or the law.” 17 U.S.C. § 1202(b)(3). Accord Nimmer,

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No. 01-2274 Gordon v. Nextel Communications, et al. 9
§ 12A.09[B][1][b]. According to the affidavit of Kevin
McCarthy, Crossroads’ art director, when Crossroads
obtained the poster from the Cinema World, its personnel
believed that the poster had been cleared for use in television
commercials. The record contains no proof to contradict this
assertion, nor evidence concerning Cinema World’s conduct.
As a result, there is no proof that the defendants --through
Crossroads or Cinema World -- utilized the version of the
illustrations “knowing that copyright management
information [had] been removed or altered without authority
of the copyright owner.” 17 U.S.C. § 1202(b)(3). The
defendants are entitled to summary judgment on the
1202(b)(3) claim.
A section 1202(b)(1) violation occurs when a person (i)
without authority of the copyright owner or the law
(ii) intentionally removes or alters any copyright management
information (iii) knowing or having reasonable grounds to
know that it will induce, enable, facilitate, or conceal an
infringement of the federal copyright laws. Although Gordon
failed to introduce evidence that Nextel or Mullen was aware
of any infringement until they received the cease and desist
letter from Gordon’s counsel, he argues that because the
copyright information is absent from the illustrations,
Crossroads must have removed it, and that Nextel and Mullen
are liable for Crossroads’ actions.
The defendants assert several defenses to Gordon’s 1202
claim. First, they assert that Gordon failed to present any
evidence that Nextel or Mullen’s conduct brings them within
any of the elements set forth in section 1202. However, as
outlined above, the defendants may be vicariously liable for
the actions of Crossroads and its employees.
Defendants next claim that here, as in Kelly v. Ariba Soft
Corp., there is no proof that the copyright information was
removed from the individual illustrations, rather than the
white space surrounding the illustrations themselves.
However, the parties dispute whether the posters used in the
10 Gordon v. Nextel Communications, et al. No. 01-2274
advertisement were made from Gordon’s wallchart or the
booklet, which contained the copyright management
information within the individual illustrations. Because this
clearly is a dispute of material fact, it is not appropriate to
grant summary judgment on this basis.
Next, the defendants assert that, even if they are vicariously
liable for the actions of Crossroads, there is no proof that any
removal by Crossroads was intentional. In support, they point
to the testimony of Kevin McCarthy, who stated that no one
at Crossroads intended to or did remove the copyright notice
from the artwork. McCarthy admits that he used the rental
poster, scanned and enlarged a portion of it, and made the
framed pictures that were used as the set decorations.
McCarthy admits that he removed the information, and there
is no suggestion that the removal was unintentional.
Defendants further contend that Gordon submitted no proof
that the removal of the copyright notice was done with the
requisite “reason to know that the removal would induce,
enable, facilitate, or conceal an infringement.” 17 U.S.C.
§ 1202(b). Rather, when Crossroads obtained the poster from
the prop company, its personnel believed that the poster had
been cleared for use in television commercials. As a result,
the defendants assert, there is no evidence that Crossroads had
any reason to know that the removal would facilitate or
conceal an infringement. Furthermore, McCarthy asserts that
it was his practice to obtain permission from an artist if the
artwork was not obtained from a prop house, and that he
would have sought Gordon’s approval if he thought there was
a clearance issue in this case. The record contains no
evidence to counter McCarthy’s testimony. As a result,
Gordon may not claim that the copyright information was
removed with reasonable grounds to know that it would
“induce, enable, facilitate, or conceal an infringement.” See
1202(b). We believe that the district court correctly granted
summary judgment for the defendants on Gordon’s 1202
claims.

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No. 01-2274 Gordon v. Nextel Communications, et al. 11
For the foregoing reasons, we affirm the district court’s
opinion in its entirety.

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