A federal judge from the Northern District of Illinois has denied a motion to dismiss brought by the owners of an Arena Football League team, which was sued by a photographer for copyright infringement, declaratory judgment, and unjust enrichment.
The crux of the issue was a March 2007 agreement the plaintiff, photographer Steven Woltmann, had with the previous owners of the team that allegedly required that all ownership rights in Woltmann’s images would revert back to Woltmann if, among other things, the Chicago Rush filed for bankruptcy or ceased operations.
The Rush entered bankruptcy and the assets were ultimately bought by the Chicago Gridiron, LLC, the defendant. As part of the arrangement, the Arena Football League bequeathed certain intellectual property, including trademarks and trade names of the former Rush team, to Gridiron. Woltmann claimed Gridiron continued to use his images “without his authorization and in contravention of demands made by Woltmann that Gridiron cease and desist from such use.”
Woltmann ultimately conceded that the unjust enrichment claim is preempted by the Copyright Act, 17 USC § 301(a), and withdrew the claim.
The court noted that “The Declaratory Judgment Act provides, in relevant part, that ‘any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.’ 28 U.S.C. § 2201(a). By its terms, the Declaratory Judgment Act gives the district court ‘the discretion to declare the rights of the litigants, 28 U.S.C. § 2201(a); it explicitly states that upon a proper application, the district court may declare the party’s rights.’ Med. Assurance Co. v. Hellman, 610 F.3d 371, 378 (7th Cir. 2010); see also Wilton v. Seven Falls Co., 515 U.S. 277, 287, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995).”
Woltmann is seeking a declaratory judgment “setting out the rights and duties, if any, of each party pursuant to the Rush contract as a matter of law” and that the purchase does “not confer upon Gridiron any rights to Woltmann’s photographs or the use thereof, under contract law or any other theory.” Finally, he is asking the court to declare that an “actual justiciable controversy exists . . . concerning Woltmann’s current and future right to control the photographs.”
Gridiron, in its Rule 12(b)(6) motion, argued that the declaratory judgment claim should be dismissed because Gridiron is not a party to the Rush Contract.
“Accepting all well-pleaded facts as true, and drawing all reasonable inferences in favor of Woltmann, the Court finds that the declaratory judgment claim shall move forward. As Woltmann notes, the Third Amended Complaint alleges that Gridiron’s use of his images ‘constitutes copyright infringement precisely because Gridiron has no basis — contractual or otherwise — to use the images.’
“Whether Gridiron was a party to the Rush Contract — the central ground for dismissal as set forth by Gridiron — is not dispositive at this stage. As the case moves forward, the Court, upon a proper motion, may revisit whether the declaratory judgment claim is appropriate in this case.”
Steven B. Woltmann vs. Arena Football One, LLC, et al.; N.D. Ill.; 11 C 5994,
2011 U.S. Dist. LEXIS 129470; 11/7/11.
Attorneys of record: (for plaintiff) Aleksandra M. S. Vold, Joseph J Siprut, Siprut PC, Chicago, IL. (for defendant) Christopher William Niro, LEAD ATTORNEY, Daniel R. Ferri, Niro, Haller & Niro, Chicago, IL.
To see the plaintiff’s complaint, visit: http://www.siprut.com/assets/attorney_biographies/RushandAFLComplaint.pdf
