United States District Court, D. New Hampshire
D'Pergo Custom Guitars, Inc.
Sweetwater Sound, Inc.
McCafferty United States District Judge
Custom Guitars, Inc. (“D'Pergo”) brings this
suit against Sweetwater Sound, Inc.
(“Sweetwater”), alleging claims of copyright and
trademark infringement and violations of the New Hampshire
Consumer Protection Act (“CPA”). D'Pergo
alleges that Sweetwater used a copyrighted photograph of
D'Pergo's trademarked custom guitar necks and
headstock to promote and sell Sweetwater products on
Sweetwater's website. Sweetwater moves for summary
judgment on all of D'Pergo's claims. Doc. no. 111.
D'Pergo moves for summary judgment on its copyright
infringement claim. Doc. no. 112. The opposing party objects
to each motion.
movant is entitled to summary judgment if it “shows
that there is no genuine dispute as to any material fact and
[that it] is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). In reviewing the record, the court
construes all facts and reasonable inferences in the light
most favorable to the nonmovant. Kelley v. Corr. Med.
Servs., Inc., 707 F.3d 108, 115 (1st Cir. 2013).
“Where the parties file cross-motions for summary
judgment, [the court] employ[s] the same standard of review,
but view[s] each motion separately, drawing all inferences in
favor of the nonmoving party.” Fadili v. Deutsche
Bank Nat. Tr. Co., 772 F.3d 951, 953 (1st Cir. 2014).
manufactures and sells custom guitars. In 2003,
D'Pergo's owner, Stefan Dapergolas, created a
photograph showcasing a number of D'Pergo's unique
guitar necks and headstock, which D'Pergo published to
its website (the “Photograph”). D'Pergo used
the Photograph on its website from 2003 - 2006, after which
it took down the Photograph and replaced it with professional
is a retailer that sells musical instruments, including
guitars, through its website. In 2004, Sweetwater copied the
Photograph and published it on Sweetwater's website. More
specifically, Sweetwater used the Photograph in its
“Electric Guitar Buying Guide” (the “Buying
Guide”), in the section titled “Guitar necks
explained.” The end of the Buying Guide features a
number of guitars from various manufacturers for purchase
(not D'Pergo's), as well as a hyperlink to
“Shop for Electric Guitars.”
January 2015, Dapergolas learned that Sweetwater was using
the Photograph in the Buying Guide. D'Pergo later applied
for and was granted a copyright registration for the
Photograph from the Copyright Office.
January 2016, D'Pergo contacted Sweetwater about the
Photograph and Sweetwater removed the Photograph from its
website. D'Pergo subsequently trademarked its headstock
design depicted in the Photograph.
then brought this lawsuit in December 2017. It asserts five
claims: (1) copyright infringement in violation of the
Copyright Act (Count I); (2) unfair competition in violation
of the CPA (Count II); (3) deceptive business practices in
violation of the CPA (Count III); (4) false designation of
origin and unfair competition in violation of the Lanham Act
(Count IV); and (5) trademark infringement in violation of
the Lanham Act (Count V).
moves for summary judgment on all of D'Pergo's
claims. D'Pergo moves for summary judgment on its
copyright infringement claim in Count I. The opposing party
objects to each motion.
states in its motion for summary judgment that it concedes it
used the Photograph without permission in the Buying Guide.
It contends, however, that it is entitled to summary judgment
on D'Pergo's claims for various reasons. The court
addresses each claim in turn.
Copyright Infringement (Count I)
establish copyright infringement under the Copyright Act,
‘two elements must be proven: 1) ownership of a valid
copyright, and (2) copying of constituent elements of the
work that are original.'” Johnson v.
Gordon, 409 F.3d 12, 17 (1st Cir. 2005) (quoting
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 361 (1991)). Once a plaintiff establishes both
elements, it may seek to recover statutory damages, actual
damages, and infringing profits under the Copyright Act. See
17 U.S.C. § 504.
does not address the elements of a copyright infringement
claim in its motion. Instead, it argues that it is entitled
to summary judgment because D'Pergo cannot recover
damages for that claim.
Sweetwater notes, the court held in a previous order that
D'Pergo is not entitled to statutory damages because
D'Pergo did not register its copyright before
Sweetwater's alleged infringement began. See doc. no. 43
at 8 (citing 17 U.S.C. § 412). Sweetwater contends that
the record evidence shows that D'Pergo cannot recover
actual damages or infringing profits. D'Pergo argues that
there is a genuine issue of material fact as to whether it
can recover either category of damages.
copyright infringement case, actual damages “consist of
all income and profits lost as a consequence of the
infringement.” Bruce v. Weekly World News,
Inc., 310 F.3d 25, 28 (1st Cir. 2002). In addition, in
“some cases, a hypothetical license fee is a
permissible basis for determining a plaintiff's
‘actual damages' arising from an
infringement.” Real View, LLC. v. 20-20 Techs.,
Inc., 811 F.Supp.2d 553, 556 (D. Mass. 2011); see also 4
Melville B. Nimmer & David Nimmer, Nimmer on Copyright,
§§ 14.02[A]-[B] (1999). A “reasonable
licensing fee is generally computed by determining the fair
market value. ‘Fair market value' is defined as the
reasonable license fee on which a willing buyer and a willing
seller would have agreed for the use taken by the
infringer.” World Wide Video, 2009 WL 10693580, at *1
(internal citations and quotation marks omitted).
argues that there is no evidence in the record that
D'Pergo suffered actual damages. Specifically, Sweetwater
states that D'Pergo's claim for actual damages is
based on a hypothetical license fee, but that it cannot
recover such damages because: (1) it cannot prove that anyone
would have paid for a license to use the Photograph; and (2)
D'Pergo's damages expert, Jeffrey Sedlik, relies on
improper calculations and assumptions to establish a
hypothetical license fee.
discussed in the court's order denying Sweetwater's
motion to exclude Sedlik, see doc. no. 138, D'Pergo may
offer Sedlik's opinion at trial. Sweetwater is entitled
to cross-examine Sedlik about his opinion and methodology,
and present the opinion of its rebuttal expert, Ellen Boughn.
Because Sedlik's opinion is not excluded, the court must
take it into account in ruling on Sweetwater's motion.
Viewing the evidence in the light most favorable to
D'Pergo, there is a genuine issue of material fact as to
whether D'Pergo suffered actual damages from
Sweetwater's copyright ...