IP Law Daily, COPYRIGHT—D. Utah: A ‘Rembrandt of Snow’ will have to prove ownership and artistry, (Jun 12, 2023)

By Matthew Hersh, J.D.

Because the famed artist’s ski trail maps depicted natural geographic features, they could not be considered original as a matter of law.

An artist who has long been famed for creating watercolor ski trail maps was unable to establish as a matter of law that a seller of ski maps infringed three of his artistic works by selling unauthorized prints, the federal court for Salt Lake City has held. The court, in denying the artist’s motion for summary judgment on his claim that the competing seller purloined his maps outright, found the artist failed to establish his creations were protectible because he did not separate the expressive elements from “factual, naturally occurring, geographic information.” In addition, as to two of the allegedly infringed works, the court also found that the artist would have to prove to a jury whether he continued to hold title to the copyrights in his creations (Niehues v. Whitemyer, June 9, 2023, Barlow, D.).

The lawsuit was brought by James Niehues, a longtime icon in the skiing world for his watercolor trail maps. The maps, which have been used by countless skiers at resorts throughout the U.S., Canada, New Zealand, and even Serbia, have earned the artist the moniker of the “Rembrandt of Snow” and, as one book has it, The Man Behind the Maps.

The mapmaker brought a lawsuit against Gnarwalls, a seller and custom designer of ski maps and trail signs. The mapmaker alleged that the vendor sold unauthorized prints of trail maps he had created for the Jackson, Taos, and Big Sky ski resorts. After discovery, the mapmaker moved for summary judgment, leading to this ruling.

Ownership. The court denied summary judgment, meaning that the mapmaker would have to prove his claims in court. The first question was whether the mapmaker, in fact, owned the copyrights that were the basis of his lawsuit. While there was evidence supporting the artist’s claims, the court found, there were also too many open questions to support summary judgment. The court advanced two central reasons for this conclusion.

First, the court would not presume that the artist had a valid copyright merely because those copyrights had been validly registered with the Copyright Office. The artist’s challenge here was a simple one; under the Copyright Act, he was not entitled to such a presumption because he did not register the works within five years of their publication. To be sure, the court noted, district courts in some other jurisdictions would still give a certain weight to registrations made more than five years after the publication of the work (though this itself was a disputed doctrine). But even the courts that followed this doctrine, the court noted, tended to apply the presumption only where there was evidence that the copyright owner had been exploiting the work regularly after its registration (otherwise, those courts tended to observe, it would be fair to assume that the author registered the copyright only to be able to prosecute a lawsuit). Here, the court observed, there was nothing in the record showing that the artist consistently used his works for years after obtaining the copyright, or even for years after creation. There would be no presumption here.

And with or without that presumption, the court found there were simply too many hurdles for the artist to show—at least as a matter of law on summary judgment—that he or his LLC currently held ownership of the copyrights in two of the three works. The artist’s challenge, the court explained, was that there was simply a murky chain of title as to those works. To be sure, the court noted, Copyright Office records continued to show the artist as the owner of the works. But copyright transfers do not have to be recorded in order to be valid, and there was considerable evidence that ownership of some or all of the exclusive rights on those two works had been transferred to third parties. Thus, a jury would have to decide.

Substantial similarity. Even as to the one work where ownership was not question, a watercolor painting titled Big Sky Ski Map, summary judgment was still not warranted. The artist’s problem, the court noted, was that in order to establish copyright infringement, he would have to show not only that the vendor purloined his work, but that it had purloined specifically protectible elements of his work. Here, the artist’s challenge was heightened because he was not depicting an imaginary scene, but was instead rendering “the factual, naturally occurring, geographic information” portrayed by his map. Surprisingly, the court noted, the artist failed to identify facts showing how he “selected, coordinated, or arranged the map features in an original way.” Nor did the artist explain “how the map exemplifies Mr. Niehues’s artistic expression, say through his use of unique colors, brush stroke style, or any other distinct characteristics.” Without this, the court reasoned, it was “wholly unable to determine” whether the map contained any protectable elements.

The Case is No. 1:21-cv-00134-DBB-CMR.

Attorneys: Deborah Chandler (Anderson & Karrenberg) for James Niehues, James Niehues LLC and Open Road Ski Co. Andrew G. Deiss (Deiss Law PC) for Rick Whitemyer d/b/a Gnarwalls, Amberlee Whitemyer d/b/a Gnarwalls and Buzz Graphics d/b/a Gnarwalls.

Companies: James Niehues LLC; Open Road Ski Co.; Gnarwall; Gnarwalls; Buzz Graphics d/b/a Gnarwalls

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