Facts

Plaintiff Ruth Oates alleged that the city of Los Angeles infringed upon her copyrighted work when it published an original manuscript written by her and displayed in a picture and coloring book for an anti-graffiti program.

On May 18, 1992, Oates created an anti-graffiti piece named "Graffiti: It's Like Ink on a White Rug." In 1996, Oates and the city discussed the possibility of using her work in a anti-graffiti program run by the Department of Public Works. She asserted that she attempted to obtain a letter of agreement, listing the terms of use, but no agreement was reached. She stated that the unexecuted contract permitted the city to utilize her story for a year, from 1996 until 1997.

Oates and a city employee, Jaime Pacheco-Orozco, worked together to develop a picture booklet based on her story. She asserted that Pacheco-Orozco contributed nothing in terms of authorship but found artists/students at East Los Angeles Community College to illustrate the book.

In 1997, the city created the picture booklet, entitled "Kyle the Graffiti Fighting Bear." The booklet's cover stated "by Ruth Oates" and the inside front cover stated "KYLE the Graffiti Fighting Bear (copyright symbol) by Ruth Oates." Subsequently, the city published a coloring book substantially similar to the anti-graffiti book. The inside front cover contained the words "(copyright symbol) 1997 City of Los Angeles, Board of Public Works." The costs to publish the picture book and coloring book were covered by the city.

Oates knew about the city's use of her work and maintained contact with city staff from 1997 until 2006. She alleged that she spoke with city workers of her concern regarding the city's unauthorized use of her text over the course of 2006. Accordingly she delivered a cease and desist letter with the help of her counsel, requesting that the city stop publishing and using "Kyle."

PLAINTIFF'S CONTENTIONS:
Oates brought an action against the city and the Board of Public Works claiming copyright infringement. She asserted that she solely created and is the owner of the written work, title and character of "Kyle" and that the city was an unauthorized user. In addition, she claimed that the city's use was willful, as shown through the transcripts of conversations with city workers and the draft agreement. Furthermore, she alleged that she was not paid for her services. She also claimed that evidence existed to show that the booklet was sold on Amazon.com and that another police department bought 1,000 copies in an unauthorized transaction without her consent. She contended that although her intent was to give the city a limited, one-year license, an agreement was never reached.

DEFENDANT'S CONTENTIONS:
The city of Los Angeles contended that it had no intent to infringe willfully on plaintiff's work or to conceal her contribution, which was shown by the placement of her name as author and copyright owner of "Kyle the Graffiti Fighting Bear" on every variety of the book. Further, the city contended that using "Kyle" was protected according to the Fair Use Doctrine in that the informational work was only utilized for educational purposes. The city also showed that Oates' attorney was the only person to buy a copy of the book on Amazon.com and thus, there was no effect on the market. In addition, no profit was derived from the "sale" to the police department and the department paid the city for printing and shipping expenses. Moreover, the city claimed that "Kyle" was the result of a collaborative effort because the city's employee, Pacheco-Orozco, searched for and enlisted the help of illustrators.

The city also invoked the laches defense and asserted that Oates never requested that it cease using the work until 2006, which was nine years subsequent to "Kyle's" publishing date and nine years after Oates was aware that the city had continued use. Furthermore, the city asserted that prejudice existed as the delay caused the city lose access to documents needed to defend against certain claims, in particular, an executed agreement that allowed the city to utilize Oates' materials until she informed the city otherwise.

Injuries

Oates asserted that the city used and distributed "Kyle the Graffiti Fighting Bear" absent her permission. As a result of the city's actions, her rights in the value of her work as well as the market value for her work were adversely affected. She demanded recovery of an unknown amount of damages for her claimed copyright infringement.

Result

According to Judge Manuel L. Real, any use of Oates' work fell under the Fair Use Doctrine. Further, her action was barred by laches. The judge also found that Oates did not prove that a contract was executed between the parties and even if there did exist a contract, Oates should have brought an action for breach of contract in state court. As a result, the city's motion for summary judgment was granted and the action was dismissed.