Petersen v. Diesel Power Gear, LLC

Background

Shae Petersen, who is professionally known as “SRIL,” created an original mural titled “Godlike.” The mural contained the author-identification information “SRILART.” Petersen registered the mural with the United States Copyright Office and owned its copyrights.

Diesel Power Gear, LLC promoted monthly truck giveaways through social-media posts. In 2017 and again in 2020, Diesel photographed a giveaway truck with a portion of Petersen’s mural as the background and posted the photographs on Instagram or Facebook. The photographs did not include the portion of the mural showing “SRILART.” After Petersen notified Diesel about the posts, Diesel removed each post within hours. The court stated that Diesel’s employees who created and posted promotional content had significant autonomy, while the three individual defendants—David Sparks, David Kiley, and Josh Stuart—were part owners of Diesel and had the right to supervise those employees.

Petersen sued Diesel and the three individual defendants for direct copyright infringement, vicarious and contributory copyright infringement, and violations of the Digital Millennium Copyright Act (DMCA). Petersen moved for partial summary judgment, which is a decision without a trial when no genuine dispute of material fact exists, on infringement liability, DMCA liability, and willfulness.

Direct Copyright Infringement

The court granted summary judgment on Diesel’s direct copyright infringement liability. Diesel admitted that using part of the mural as the backdrop for the 2017 and 2020 posts constituted copyright infringement.

The court denied summary judgment on the individual defendants’ direct-infringement liability. Individual defendants may be directly liable when they personally participate in infringing acts, but the record contained a material factual dispute about whether Sparks, Kiley, or Stuart personally participated in or personally committed infringement. None of them took the photographs, and the defendants disputed Petersen’s assertions about the individual defendants’ online use or publication of the mural. The court reserved that issue for trial.

Vicarious and Contributory Liability

The court denied Petersen’s request for summary judgment on vicarious liability. Vicarious liability requires both the right and ability to supervise the infringing conduct and a direct financial interest in the infringing activity. Although the individual defendants could supervise the employees involved, the record did not contain undisputed evidence that they received a direct financial benefit causally connected to the infringement.

The court also denied summary judgment on contributory infringement. This theory requires knowledge of the underlying infringement and personal conduct that induced, caused, or materially contributed to it. The court found material factual disputes about whether the individual defendants encouraged or assisted the infringement.

Willfulness

The court denied Petersen’s request for a ruling that the defendants’ infringement was willful. Willfulness requires proof that a defendant knew about the infringement or recklessly disregarded, or deliberately ignored, the copyright owner’s rights.

The court did not need to decide the individual defendants’ willfulness because it had not found them liable for infringement. As to Diesel, the court found factual disputes about whether Diesel knew when the photographs were taken and posted that the posts infringed Petersen’s copyright. Diesel’s prompt removal of each post after receiving notice could indicate a lack of willfulness. The court therefore left Diesel’s willfulness for trial.

DMCA Claim

The court denied summary judgment on Petersen’s DMCA claim. Petersen alleged that the defendants violated Section 1202(b)(1) by intentionally removing or altering copyright-management information identifying Petersen as the author.

The court stated that the record did not establish the required intent. The defendants contended that they used only a portion of the mural as a photographic backdrop, rather than editing or cropping the mural to remove the author information. The court did not decide whether failing to include the author information by framing the photographs could constitute removal or alteration under the DMCA. It held that judgment on the required intent was inappropriate at that stage.

Disposition

The court granted Petersen’s motion for summary judgment in part with respect to Diesel’s liability for copyright infringement and denied it in all other respects. The parties were directed to participate in a telephone conference concerning open damages-related discovery and the schedule for pretrial submissions.