(C06-0186-MAT) - 1 

Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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 Honorable Mary Alice Theiler 

UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF WASHINGTON AT SEATTLE 

PROPET USA, INC., 

Plaintiff, 

v. 

LLOYD SHUGART, 

Defendant. 

No. C06-0186 MAT 

MOTION FOR PARTIAL 

SUMMARY JUDGMENT AS TO 

OWNERSHIP OF COPYRIGHTS 

NOTE ON MOTION 

CALENDAR: March 2, 2007 

Defendant Lloyd Shugart (“Mr. Shugart”), through undersigned counsel, hereby 

moves pursuant to Rule 56 for partial summary judgment that he is the legal owner of the 

copyrights in the various photographs and images that are the subject of this matter. In 

particular, it is undisputed that (1) Mr. Shugart is the photographer who created the subject 

photographs, (2) he did not create the photographs as a “work made for hire,” and (3) he never 

transferred ownership of any of the copyrights by way of any written instrument. The law is 

crystal clear that ownership of a copyright can only be transferred by means of a written 

instrument signed by the original copyright holder. Under the undisputed facts of this case, 

there is no question that Mr. Shugart retains legal ownership of the copyrights in the 

photographs that are the subject of this action. Because no genuine issue of material fact 

exists with respect to the ownership of the subject copyrights, partial summary judgment that 

Mr. Shugart is the legal owner of the subject copyrights is appropriate at this time. 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 1 of 7
 (C06-0186-MAT) - 2 

Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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I INTRODUCTION 

This case concerns the unauthorized use and distribution by Propet USA, Inc. of 

certain photographic images created by professional photographer Lloyd Shugart. For a time, 

Mr. Shugart and Propet enjoyed a mutually beneficial business relationship wherein Mr. 

Shugart created photographic images of shoes, people, landscapes, etc., that were later 

incorporated into Propet’s promotional materials. In each case, Mr. Shugart provided his 

copyrighted images to Propet pursuant to a “Film Delivery Memo” which provided limited 

rights to Propet to use the images for specific periods and applications only and that limited 

Propet’s right and ablitiy to use the images. 

After several mutually beneficial years, Propet unilaterally, and without cause, elected 

to terminate its business relationship with Mr. Shugart. To add insult to injury, Propet 

continued to use Mr. Shugart’s copyrighted images beyond the scope of the parties’ 

agreement and the terms specified in the Film Delivery Memo. When Mr. Shugart 

complained about the blatant violation by Propet of his copyright rights, Propet responded by 

filing this action for declaratory judgment that Mr. Shugart retained no enforceable rights in 

his images. Mr. Shugart had no choice but to respond with a counterclaim seeking, among 

other things, enforcement of his copyrights barring further misuse of his images by Propet. 

The undisputed facts demonstrate that the only “writing” executed by Mr. Shugart that 

relate to the images and Mr. Shugart’s copyrights therein is the Film Delivery Memo that 

accompanied each set of images. On its face, the Film Delivery Memo only grants limited 

usage rights to Propet and nowhere conveys or transfers any ownership of the underlying 

copyrights to Propet. Under clearly established law requiring transfers of ownership in 

copyrights to be in writing, and given that there are no other writings under which a copyright 

could have been transferred to Propet, the undisputed facts establish as a matter of law that the 

underlying copyrights in the subject images were, are and remain the property of Mr. Shugart. 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 2 of 7
 (C06-0186-MAT) - 3 

Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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II UNDISPUTED FACTS 

The relevant undisputed facts are supported by the accompanying declaration of Lloyd 

Shugart and, in particular, Exhibit A attached thereto. 

The undisputed facts show that at all relevant times, Mr. Shugart has worked as an 

independent contractor and that his services to Propet were performed as an independent 

contractor. 

The undisputed facts further show that Mr. Shugart is the creator of the various 

photographs that underlie this action and that he is the owner of all copyrights in the 

photographs. 

The undisputed facts further show that Mr. Shugart provided each set of images to 

Propet pursuant to a “Film Delivery Memo,” a true and correct copy of which is attached as 

Exhibit A to Mr. Shugart’s accompanying declaration. 

The Film Delivery Memo expressly provides that, “Grant of reproduction rights 

hereunder is conditioned upon [Propet’s] acceptance of each term set forth in this agreement,” 

and that “All rights not expressly licensed to [Propet] in writing remain the exclusive property 

of [Mr. Shugart].” (Exhibit A, ¶ C.) 

The Film Delivery Memo further provides that, “[Propet’s] use allowed is as per 

invoice...” and that, “There shall be no third party use or distribution without written approval 

of [Mr. Shugart].” (Exhibit A, ¶ C.) The invoices referenced in Paragraph C of the Film 

Delivery Memo simply specify the amounts due with respect to a particular project and 

contain nothing whatsoever that can be construed as a transfer of copyright. A representative 

sample of an invoice supplied to Propet along with each Film Delivery Memo is attached as 

Exhibit B to Mr. Shugart’s accompanying declaration. 

The Film Delivery Memo further expressly requires that, “[Propet] will provide 

copyright protection by placing proper copyright notice on any use,” and that, “Proper notice 

shall be ‘© <<year-date-of-job>> Lloyd Shugart’ adjacent to or within the photograph(s).” 

(Exhibit A, ¶ G.) 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 3 of 7
 (C06-0186-MAT) - 4 

Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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The Film Delivery Memos and invoices referenced above are the only writings 

between Propet and Mr. Shugart that pertain to the subject images and, as demonstrated 

below, are insufficient as a matter of law to transfer ownership of the copyrights in the subject 

images to Propet. Indeed, both Propet’s intial and amended Complaints each allege that, 

“There apparently was no written agreement between Propet and Shugart concerning the 

rights, licenses, or ownership of the copyright to the Propet Photos.” This admission by 

Propet is, in itself, dispositive of the copyright ownership question. 

III ARGUMENT 

A. The Applicable Law is Clear: Ownership Interests In A Copyright Can Only Be 

Transferred By Means Of A Written Instrument Signed Or Ratified By The 

Copyright Owner 

Under §204(a) of the Copyright Act, “[a] transfer of copyright ownership, other than 

by operation of law, is not valid unless an instrument of conveyance, or a note or 

memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or 

such owner’s duly authorized agent.” 17 U.S.C. §101. As established in Konigsberg Int’l, 

Inc. v. Rice, 16 F.3d 355 (9th Cir. 1994), “a transfer of copyright is simply ‘not valid’ without 

a writing.” Id. At 357. Such a writing must show an agreement to transfer copyright. See, 

Radio-Television Espanola S.A. v. New World Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir. 1999). 

Furthermore, such a writing must include some language of finality. Id. At 928. 

The requirement for a writing serves several purposes. First, it ensures that a 

copyright will not be inadvertently transferred. Effects Associates, Inc. v. Cohen, 908 F.2d 

555 (9th Cir. 1990). Second, it “forces a party who wants to use the copyrighted work to 

negotiate with the creator to determine precisely what rights are being transferred and at what 

price.” Id. Third, it provides a guide for resolving disputes; the parties can look to the writing 

to determine whether a use is improper. Id. In this way, the writing requirement “enhances 

predictability and certainty of copyright ownership – ‘Congress’[s] paramount goal’ when it 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 4 of 7
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Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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revised the [Copyright] Act in 1976.” Id. (quoting Community for Creative Non-Violence v. 

Reid, 490 U.S. 730, 749 (1989)). 

B. The “Writings” Existent Here Are Insufficient To Transfer Copyright 

Ownership Away From Mr. Shugart 

As noted, the only “writings” that exist in this case that even remotely concern Mr. 

Shugart’s copyrights in his images are the Film Delivery Memo and the invoices they 

reference. As established by Mr. Shugart’s declaration testimony, the invoices themselves say 

absolutely nothing about copyrights, much les who owns them. The invoices simply do not 

affect ownership interests in the underlying copyrights. 

The Film Delivery Memo specifies in clear, unmistakable terms that the only rights 

transferred to Propet are those expressly granted in the Film Delivery Memo and that, “All 

rights not expressly licensed to Client [i.e., Propet] in writing remain the exclusive property of 

Photographer [i.e., Mr. Shugart].” Furthermore, the Film Delivery Memo specifies in clear, 

unambiguous terms, that the “Duration of license is 2 years,” which clearly limits use of the 

images by Propet to that period only. The express requirement of the Film Delivery Memo 

that Propet include a copyright notice specifying that the owner of the copyright is “Lloyd 

Shugart” is further evidence that no general transfer of copyright ownership is made or 

intended by the Film Delivery Memo. Accordingly, nothing in the Film Delivery Memo is or 

can reasonably be construed to be any sort of transfer of copyright ownership. In short, the 

Film Delivery Memo is simply incapable of transferring any copyright ownership interest 

away from Mr. Shugart or to Propet. 

C. Because There Exists No Writing Sufficient To Transfer Away Mr. Shugart’s 

Copyrights In His Images, Mr. Shugart Retains Legal Ownership Of The 

Copyrights In The Subject Images 

The undisputed facts establish that there is no “writing” or “written instrument” 

through which Mr. Shugart either did or could have transferred ownership of his copyrights to 

Porpet or anyone else. On the contrary, the only writing that does exist, namely the Film 

Delivery Memo, clearly limits the rights Propet did acquire to make limited use of the images 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 5 of 7
 (C06-0186-MAT) - 6 

Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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and expressly provides that Mr. Shugart retained all other rights including his copyrights. 

Because there exits no writing through which Mr. Shugart either did or could have transferred 

his copyrights, Mr. Shugart remains the legal owner of those copyrights. Because no genuine 

issue of material fact exists with respect to ownership of the copyrights in the subject images, 

partial summary judgment that Mr. Shugart is the legal owner of the copyrights in the subject 

images is appropriate at this time. 

IV CONCLUSION 

Having demonstrated that no genuine issue of material fact exists as to the lack of any 

writing transferring copyrights from Mr. Shugart, Mr. Shugart’s motion for partial summary 

judgment that he is and remains the legal owner of all copyrights in the subject images should 

be granted. Such action by this Court is respectfully solicited. An appropriate proposed order 

accompanies this motion. 

Dated this 5th day of February, 2007. 

/s/ Philip P. Mann 

Philip P. Mann, WSBA No: 28,860 

1420 Fifth Avenue, Suite 2200 

Seattle, Washington 98101 

(206) 274-5100 

phil@mannlawgroup.com 

Attorneys for Defendant Lloyd Shugart 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 6 of 7
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Motion For Partial Summary Judgment 

MANN LAW GROUP 

1420 Fifth Avenue, Suite 2200 

Seattle, WA 98101 

TELEPHONE: 206.274.5100 

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CERTIFICATE OF SERVICE 

I hereby certify that on the 5th day of February, 2007, I electronically filed the 

foregoing with the Clerk of the Court using the CM/ECF system which will send notification 

of such filing to the following: 

Bruce A. Kaser bruce@vantagelaw.net

James L. Phillips james.phillips@millernash.com, 

Executed on February 5, 2007. 

/s/ Philip P. Mann 

Philip P. Mann, WSBA No: 28,860 

1420 Fifth Avenue, Suite 2200 

Seattle, Washington 98101 

(206) 274-5100 

phil@mannlawgroup.com 

Case 2:06-cv-00186-MAT Document 32 Filed 02/05/07 Page 7 of 7