CASE 0:14-cv-00365-MJD-LIB Document 21 Filed 06/27/14 Page 1 of 11

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

Mary Whelan,

Case No.:

14-cv-365-MJD-LIB

Plaintiff,
v.

ANSWER AND COUNTERCLAIM

(JURY TRIAL DEMANDED)

Golden Shovel Agency, LLC; Ronald

Kresha; and John Does 1-20,
Defendants.

ANSWER
Defendants Golden Shovel Agency, LLC and Ronald Kresha (Defendants ),
through counsel, state the following Answer to Plaintiffs Complaint. Defendants request
a trial by Jury. Defendants deny each and every allegation in the Complaint except as
may be specifically admitted or qualified. Defendants otherwise state and allege as
follows:
1.

Defendants are without knowledge or information sufficient to form a

belief about the truth of the averments in Paragraph 1.

2.

Defendants admit the allegations of paragraph 2 of the Complaint.

3.

Defendants admit the allegations of paragraph 3 of the Complaint.

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4.

Defendants are without knowledge or information sufficient to form a

belief about the averments in Paragraph 4 of the Complaint and Plaintiff has
insufficiently pleaded its allegations in Paragraph 4 to allow for a response, and therefore
Defendants deny the same.
5.

As to the averments of Paragraph 5 of the Complaint, Defendants admit

only that Plaintiff brings this action as a civil action seeking damages and injunctive
relief for copyright infringement under the copyright laws of the United States (17 U.S.C.
101 et seq.) and deny any allegation that Plaintiff has or that Plaintiff is asserting any
other cause of action because of the previous dismissal of all such claims. Defendants
deny all allegations of copyright infringement. Defendants otherwise admit only that this
Court has jurisdiction to hear the claims of copyright infringement brought by the
Plaintiff.
6.

Defendants deny the averments of Paragraph 6 of the Complaint.

7.

Defendants deny the averments of Paragraph 7 of the Complaint.

8.

Defendants admit only that Plaintiff was an independent contractor for

Golden Shovel Agency, LLC and deny all other averments of Paragraph 8 of the
Complaint.
9.

Defendants admit only that Golden Shovel Agency, LLC did not have a

formal written independent contractor agreement with the Plaintiff. All other averments
in Paragraph 9 of the Complaint are denied.
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10.

Defendants deny the averments of Paragraph 10 of the Complaint.

11.

Defendants are without knowledge or information sufficient to form a

belief about the averments of Paragraph 11 of the Complaint and therefore deny the
same.
12.

Defendants admit only that Defendant Kresha and Plaintiff discussed

Defendant Golden Shovel Agency LLC in 2010, and all other averments of Paragraph 12
are denied.
13.

Defendants deny the averments of Paragraph 13 of the Complaint.

14.

Defendants admit only that Defendant Kresha ceased being involved in the

operations of Atomic Learning, Inc. and all other averments in Paragraph 14 of the
Complaint are denied.
15.

Defendants deny the averments of Paragraph 15.

16.

Defendants admit only that starting in 2010, Plaintiff created certain works

for Defendant Golden Shovel Agency, LLC and all other averments of Paragraph 16 of
the Complaint are denied.
17.

Defendants deny the averments of Paragraph 17 of the Complaint.

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18.

Defendants are without knowledge or information sufficient to form a

belief about the truth of Plaintiffs averments in Paragraph 18 and therefore Defendants
deny the averments of Paragraph 18 of the Complaint.
19.

Defendants deny the allegations of Paragraph 19 of the Complaint.

COUNT 1
COPYRIGHT INFRINGEMENT

20.

Defendants incorporate their responses to Paragraphs 1-19 in their response

to Paragraph 20 of the Complaint.

21.

Defendants deny the averments of Paragraph 21 of the Complaint.

22.

Defendants deny the averments of Paragraph 22 of the Complaint.

23.

Defendants deny the averments of Paragraph 23 of the Complaint.

24.

Defendants deny the averments of Paragraph 24 of the Complaint.

25.

Defendants deny the averments of Paragraph 25 of the Complaint.

26.

Defendants deny the averments of Paragraph 26 of the Complaint.

27.

Defendants deny the averments of Paragraph 27 of the Complaint.

28.

Defendants deny the averments of Paragraph 28 of the Complaint.

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29.

Defendants admit only that an exhibit was attached to the filing of the

Complaint as Docket No. 1-1 and it purports to be a copy of a letter dated May 18, 2012,
to Paul Jacobsen, Attorney at Law. The letter otherwise speaks for itself and all other
averments of Paragraph 29 are denied.
30.

Defendants admit only that an exhibit was attached to the filing of the

Complaint as Docket No. 1-1 and it purports to be a copy of a letter dated July 20, 2012,
to Paul Jacobsen, Attorney at Law. The letter otherwise speaks for itself and all other
averments of Paragraph 30 are denied.
31.

Defendants deny the averments of Paragraph 31 of the Complaint.

32.

Defendants deny the averments of Paragraph 32 of the Complaint.

ALL OTHER COUNTS AND AVERMENTS MADE IN THE COMPLAINT WERE

DISMISSED AS PERMANENTLY BARRED BY APPLICABLE STATUTES OF
LIMITATIONS BY THE PLAINTIFF AND THEREFORE DO NOT REQUIRE A
RESPONSE. TO THE EXTENT ANY FURTHER AVERMENTS DO REQUIRE A
RESPONSE, THE DEFENDANTS DENY THOSE AVERMENTS.
AFFIRMATIVE DEFENSES
1.

Plaintiffs Complaint fails to state a claim upon which relief may be

granted.
2.

Plaintiff is estopped from asserting the claims alleged in the Complaint.

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3.

Plaintiff waived any alleged right to assert the claims alleged in the

Complaint.
4.

Plaintiffs claim is barred in whole or in part by the doctrine of latches.

5.

If Plaintiff sustained any damages as a result of the conduct alleged in the

Complaint, such damages were caused or contributed to by Plaintiffs own actions or the
actions of others over whom Defendants exercised no control.
6.

Plaintiffs claims fail to the extent that they are barred by the applicable

statute of limitations.
7.

Plaintiffs claims for statutory damages are barred in whole or in part by

Plaintiffs failure to timely file a valid copyright registration.

8.

Each copyright asserted by the Plaintiff against the Defendants is invalid

and unenforceable, and Plaintiff lacks standing to bring this suit, for reasons including
without limitation: failing to register a correct, valid, and enforceable copyright
registration; Plaintiff not being the sole author of works Plaintiff is accusing Defendants
of infringing; failing to list all authors on that copyright registration; attempting to
register non-copyrightable subject matter; and attempting to claim ownership of material
not created in whole or in part by Plaintiff.
9.

Defendants have not infringed any valid copyright of the Plaintiff.

10.

Defendants have an express or alternatively implied license to the

Plaintiffs supposed copyrightable material.

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11.

In the event that Defendants are found to have infringed a valid copyright,

Defendants are, at most, innocent infringers under 17 U.S.C. 504(c)(2) and damages
should be diminished accordingly.

WHEREFORE, Defendants pray for the following relief:

1.

Judgment dismissing Plaintiffs claims with prejudice.

2.

Judgment awarding

Defendants their

costs, attorneys fees, and

disbursements.
3.

For such other and further relief as the Court deems just and equitable.

COUNTERCLAIM
Counterclaim Plaintiff Golden Shovel Agency, LLC (Golden Shovel), as against
Counterclaim Defendant Mary Whelan (Whelan), hereby avers as follows and demands
a jury trial on all issues still triable:
1.

Counterclaim Plaintiff, Golden Shovel, is a Minnesota Limited Liability

Company with offices located at 43 East Broadway, Little Falls, Minnesota 56345.
2.

Upon information and belief, Counterclaim Defendant Whelan is a resident

of the City of Farmington, State of Minnesota.

JURISDICTION AND VENUE
3.

This Court has supplemental jurisdiction over the state law claims pleaded

by Golden Shovel pursuant to 28 U.S.C. 1367(a), which are so related to the federal
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claims that they form part of the same claim or controversy. The parties to this litigation
do not dispute venue is appropriate in the United States District Court for the District of
Minnesota and that they are subject to personal jurisdiction in this Court.
COUNTERCLAIM BREACH OF CONTRACT
4.

Golden Shovel hereby realleges and incorporates by reference the

averments contained in its Answer and Paragraphs 1-3 of its Counterclaim.

5.

On or about the fall of 2010, Golden Shovel engaged Whelan to create

works on behalf of Golden Shovel for Golden Shovel, its employees, officers, directors,
board members, and customers to use, distribute, copy, display, create derivative works
of, and generally make use of to the full extent an intellectual property owner would have
the rights to under the various intellectual property laws including without limitation 17
U.S.C. 101 et seq.
6.

In consideration of her creation of such works and the understanding set

forth in Paragraph 5 of this Counterclaim, Whelan was paid no less than $14,500 by
Golden Shovel through June of 2011.
7.

Materials created by Whelan for Golden Shovel included items specific to

Golden Shovel, including press releases, marketing materials using Golden Shovels
name and logo, which did not belong to nor was created by Whelan, and other materials
that have little or no applicability to companies other than Golden Shovel.

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8.

The arrangement between Golden Shovel and Whelan was an express, or in

the alternative, implied, perpetual, irrevocable license to all copyrightable work or other
intellectual property that Whelan created or provided to Golden Shovel, its employees,
directors, officers, board members, or customers for use in relation to the Golden Shovel
business.
9.

The course of conduct, acceptance of payment for services and work

product by Whelan, and communications between Golden Shovel and Whelan all support
the existence of an express, or alternatively, implied, license.
10.

The license granted by Whelan to Golden Shovel is a complete defense to

Whelans copyright infringement allegations against Golden Shovel and Ronald Kresha.
11.

By and through the actions of Whelan and her attorneys, Whelan breached

the license agreement between Whelan and Golden Shovel by asserting, both through
communications and through filing of this lawsuit, that Golden Shovel, its employees,
officers, directors, board members, and customers had no rights to copy, display, create
derivative works of, or otherwise use certain works created by Whelan, alone or in
conjunction with others, for Golden Shovel.
12.

Whelans breach of the license agreement has caused great harm to Golden

Shovel including without limitation the deprivation of use of works created by Whelan
and paid for by Golden Shovel, the time and expense of creating new works, upon
information and belief, damages to Golden Shovels reputation, lost sales and business
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opportunities, the costs and fees associated with this lawsuit, and other damages to be
determined at trial.
DEMAND FOR JURY TRIAL
13.

Golden Shovel hereby demands a trial by jury on all issues so triable

pursuant to Fed. R. Civ. P. 38.

DEMAND FOR RELIEF
WHEREFORE, Golden Shovel asks this Court for all appropriate relief, including:
A.

Entering a judgment that Golden Shovel has a valid and enforceable

perpetual and irrevocable license to all intellectual property including copyright in, to,
and relating to works created by Whelan for Golden Shovel;
B.

Entering a judgment that Whelan has breached the license agreement with

Golden Shovel;
C.

Entering a judgment dismissing Whelans Complaint with prejudice in its

entirety based upon the license between Whelan and Golden Shovel;
D.

Entering a judgment awarding Golden Shovel its damages for Whelans

breach of the license;

E.

Entering a judgment awarding Golden Shovel its costs and attorney fees in

defending against Whelans claims and pursuing Golden Shovels counterclaims;

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F.

Enjoining Whelan from making statements stating or suggesting that

Golden Shovel and its employees, officers, directors, board members, and customers do
not have any and all license rights to use, distribute, copy, display, create derivative
works of, or otherwise exploit the works that Whelan alone or together with others
created for Golden Shovel; and
G.

Awarding to Golden Shovel such other and further relief as its just and

proper.
STINSON LEONARD STREET LLP

Dated: June 27, 2014

By: s/David Axtell

David Axtell (#314596)
Kristin Berger Parker (#389249)
150 South Fifth Street, Suite 2300
Minneapolis, MN 55402
Telephone: 612.335.1500
ATTORNEYS FOR DEFENDANTS RON
KRESHA AND GOLDEN SHOVEL
AGENCY, LLC (COUNTERCLAIMANT)

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