Davis v. The Gap Inc.

Citation246 F.3d 152
Decision Date27 June 2000
Docket NumberDocket No. 99-9081
Parties(2nd Cir. 2001) ON DAVIS, Plaintiff-Appellant, v. THE GAP, INC., Defendant-Appellee. Argued:
CourtUnited States Courts of Appeals. United States Court of Appeals (2nd Circuit)

KENNETH SPOLE, Syosset, N.Y., (On Davis, pro se, on the brief) for Appellant.

LORIN L. REISNER, Debevoise & Plimpton, New York, N.Y. (Suzanne J. Irving on the brief) for Appellees.

Before: LEVAL, PARKER and KATZMANN, Circuit Judges.

LEVAL, Circuit Judge:

Plaintiff On Davis ("Davis") appeals from an order of the United States District Court for the Southern District of New York (Sweet, J.) granting summary judgment to the defendant, The Gap, Inc. ("the Gap"), dismissing plaintiff's claim of copyright infringement. See Davis v. The Gap, Inc., No. 97 CIV. 8606(RWS), 1999 WL 199005 (S.D.N.Y. Apr. 9, 1999) ("Davis I"); Davis v. The Gap, Inc., 186 F.R.D. 322 (S.D.N.Y. 1999) ("Davis II").

Davis is the creator and designer of nonfunctional jewelry worn over the eyes in the manner of eyeglasses. The Gap, Inc. is a major international retailer of clothing and accessories marketed largely to a youthful customer base with annual revenues of several billions of dollars. It operates several chains of retail stores, some under the name "Gap." It is undisputed that the Gap, without Davis's permission, used a photograph of an individual wearing Davis's copyrighted eyewear in an advertisement for the stores operating under the "Gap" trademark that was widely displayed throughout the United States. Davis brought this action seeking a declaratory judgment of infringement and damages, including $2,500,000 in unpaid licensing fees, a percentage of the Gap's profits, punitive damages of $10,000,000, and attorney's fees. The district court granted summary judgment for the Gap on the grounds that (1) Davis's claims for actual damages and profits under 17 U.S.C. § 504(b) (1994) were too speculative to support recovery, or were otherwise barred by a prior ruling of this court, (2) he was not eligible for statutory damages or attorney's fees because he had not timely registered his copyright, and (3) the Copyright Act does not permit recovery of punitive damages. See Davis I, 1999 WL 199005, at *3-8. We affirm in part and, in part, vacate and remand.

BACKGROUND

Davis has created at least fifteen different designs of eye jewelry, which he markets under the name "Onoculii Designs." Davis describes Onoculii eyewear as "sculptured metallic ornamental wearable art." Am. Compl. ¶ 7. Each piece is made of gold, silver, or brass, and is constructed in a manner similar to eyeglasses (a frame hinged to templates that hook over the ears), but with very different effect. The frames support decorative, perforated metallic discs or plates in the place that would be occupied by the lenses of a pair of eyeglasses. The discs effectively conceal the wearer's eyes, although the perforations permit the wearer to see through them. Some of Davis's designs are of flowery or abstract filagree shapes, some are crescents with protruding spokes or wings. The particular piece that gives rise to this action consists of a horizontal bar at the level of the eyebrows from which are suspended a pair of slightly convex, circular discs of polished metal covering the eyes, perforated with dozens of tiny pinprick holes. Davis registered his copyright for the design at issue, effective May 16, 1997.

Davis sought to gain recognition for his Onoculii line by promoting and marketing his designs "in carefully chosen media settings." Am. Compl. ¶ 13. As part of his marketing plan, Davis encouraged "known stylish and popular entertainers" to wear his creations in public settings. Pl's Counter 56.1(c) Statement, ¶8. Entertainers who have worn Onoculii designs while appearing on stage, on MTV, in magazine photographs or other media include Vernon Reid, Thomas Mapfumo, Don Cherry, Sun Ra, Ryo Kawasaki, Cat Coore, Mr. Pepper Seed, Chuck Johnson, and Jack and Jill. Various fashion designers have also featured Davis's eyewear as accessories in runway shows or photographs, and his work has been noted in such publications as Vogue, Women's Wear Daily, Fashion Market, In Fashion, The New York Times, The New York Post, and The Village Voice.

While Davis initially sold his designs on the street, since about 1995 he has marketed his merchandise through boutiques and optical stores. The eyewear sold at a wholesale price of approximately $30-45 a pair. Evidence in the record indicates that it sold at retail for $65-100 a pair in 1995. See Am. Compl., Ex. B. Davis asserts he has earned approximately $10,000 from sales. He testified that on one occasion he received a $50 fee from Vibe magazine for the use of a photograph depicting the musician Sun Ra wearing an Onoculii piece.

In May 1996, prior to Davis's registration of his copyright, the defendant created a series of advertisements showing photographs of people of various lifestyles wearing Gap clothing. The campaign was designed to promote the concept that Gap merchandise is worn by people of all kinds. The ad in question, which bears the caption "fast" emblazoned in red (the "fast" ad), depicts a group of seven young people probably in their twenties, of Asian appearance, standing in a loose V formation staring at the camera with a sultry, pouty, provocative look. The group projects the image of funky intimates of a lively after-hours rock music club. They are dressed primarily in black, exhibiting bare arms and partly bare chests, goatees (accompanied in one case by bleached, streaked hair), large-brimmed, Western-style hats, and distinctive eye shades, worn either over their eyes, on their hats, or cocked over the top of their heads. The central figure, at the apex of the V formation, is wearing Davis's highly distinctive Onoculii eyewear; he peers over the metal disks directly into the camera lens.

The "fast" photograph was taken by the Gap in May 1996 during a photo shoot in the Tribeca area of Manhattan. The defendant provided the subjects with Gap apparel to wear for the shoot, and a trailer in which to change. The Gap claims that it did not furnish eyewear to any of the subjects, and that the subjects were told to wear their own eyewear, wristwatches, earrings, nose-rings or other incidental items, thereby "permitting each person to project accurately his or her own personal image and appearance." Def.'s 56.1(c) Statement, ¶18.

The Gap's "fast" advertisement was published in a variety of magazines, including W, Vanity Fair, Spin, Details, and Entertainment Weekly. Davis claims that the total circulation of these magazines was over 2,500,000. For five weeks during August and September of 1996, the advertisement was displayed on the sides of buses in New York, Boston, Chicago, San Francisco, Atlanta, Washington, D.C., and Seattle. The advertisement may also have been displayed on bus shelters. According to Davis, when used on buses the photograph was cropped so that only the heads and shoulders of the subjects were shown.

Davis submitted evidence showing that during the fourth quarter of 1996, the period that Davis asserts is relevant to the "fast" advertisement, the net annual sales of the parent company, Gap, Inc., increased by about 10 percent, compared to the fourth quarter of 1995, to $1.668 billion dollars. There was no evidence of what portion of the parent company's revenues were attributable to the stores operated under the Gap label, much less what portion was related to the ad in question.

Shortly after seeing the "fast" advertisement in October and November 1996, Davis contacted the Gap by telephone and in writing. The Gap's advertising campaign, which apparently ran during August and September of 1996, had been completed by the time Davis wrote. Davis stated that he had not authorized the use of his design and inquired whether the Gap might be interested in selling a line of his eyewear.

Davis filed this action on November 19, 1997. The Gap then filed a motion for summary judgment, arguing, inter alia, that Davis had no entitlement to damages and that his claims were barred by the de minimis and fair use doctrines.

On April 9, 1999, the district court granted summary judgment for the Gap. See Davis I, 1999 WL 199005, at *10. The district court first noted that Davis was not eligible for "statutory damages" under 17 U.S.C. § 504(c) due to the fact that he had not registered his copyright within three months of his first "publication" of his work or prior to the allegedly infringing use by the Gap.1 As regards damages under 17 U.S.C. § 504(b), the court rejected Davis's claim as unduly speculative and, insofar as it sought damages for Davis's failure to receive a license fee from the Gap, precluded by a prior decision of this court. See Davis I, 1999 WL 199005, at *3-7. Since the court also found Davis ineligible for punitive damages, it concluded that he was not entitled to any form of damages, and thus dismissed his claims. See id. at *8, 10. Davis filed a motion for reconsideration on April 27, 1999, which was denied on June 16, 1999. See Davis II, 186 F.R.D. 322.

On appeal, Davis argues principally that (1) the district court erred by granting summary judgment without ruling on the merits of his claim for declaratory relief; and (2) he was entitled to both compensatory and punitive damages. The Gap defends the district court's judgment and argues in addition that the suit was subject to dismissal under the de minimis and fair use doctrines.

We affirm in part and reverse in part.

DISCUSSION

Summary judgment is proper when the record, viewed in the light most favorable to the party against whom judgment is sought, reveals "no genuine issue as to any material fact" and the moving party is entitled to summary judgment as a matter of law. See Fed.R.Civ.P. 56(c).

A. Declaratory Relief

Davis...

To continue reading

Request your trial
277 cases
  • Sony Music Entm't v. Cox Commc'ns, Inc.
    • United States
    • U.S. District Court — Eastern District of Virginia
    • 2 Junio 2020
    ...§ 14.02[B], at 14–23 to 24; Kamakazi Music Corp. v. Robbins Music Corp. , 534 F.Supp. 69, 78 (S.D.N.Y. 1982). On Davis v. The Gap, Inc. , 246 F.3d 152, 172 (2d Cir. 2001), as amended (May 15, 2001). In accordance with statutory damages' far-reaching objectives, a judge or jury in the Fourth......
  • Straus v. Dvc Worldwide, Inc.
    • United States
    • U.S. District Court — Southern District of Texas
    • 23 Marzo 2007
    ...provides that if unauthorized copying is sufficiently trivial, "the law will not impose legal consequences." On Davis v. The Gap, Inc., 246 F.3d 152, 172-73 (2d Cir.2001) (citing Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 74 (2d Cir.1997)). In Ringgold, the court identif......
  • Video Pipeline v. Buena Vista Home Entertainment
    • United States
    • U.S. District Court — District of New Jersey
    • 28 Marzo 2002
    ...previews, has minimal effect on the market, primarily because they don't usurp the market for the original, citing On Davis v. The Gap, Inc., 246 F.3d 152, 175 (2d Cir.2001), and because there is no market for previews alone, citing Meeropol v. Nizer, 560 F.2d 1061, 1069-70 (2d Cir.1977), c......
  • Navarro v. Procter & Gamble Co.
    • United States
    • U.S. District Court — Southern District of Ohio
    • 19 Enero 2021
    ...industry.17 Id. at 359 ("[A]ctual damages may include in appropriate cases the reasonable license fee[.]") (quoting On Davis v. Gap, Inc., 246 F.3d 152, 167 (2d Cir. 2001) ). But the consequences of infringement may be broader than that. Infringement does not merely harm the copyright owner......
  • Request a trial to view additional results
6 firm's commentaries
  • Emerging Issues In Statutory Damages
    • United States
    • Mondaq United States
    • 12 Julio 2011
    ...the plaintiff's entire company). Cass County Music Co. v. C.H.L.R. Inc., 88 F.3d 635, 643 (1996). Accord on Davis v. The Gap Inc., 246 F.3d 152, 172 (2nd Cir. 2001) ("The purpose of punitive damages—to punish and prevent malicious conduct—is generally achieved under the Copyright Act throug......
  • Transformation' Of Fair Use Back To Its Section 107 Roots
    • United States
    • Mondaq United States
    • 21 Enero 2015
    ...Bill Graham Archives v. Dorling Kindersley, 448 F.3d 605 (2d Cir. 2006); NXIVM v. Ross Inst., 364 F.3d 471 (2d Cir. 2004); Davis v. Gap, 246 F.3d 152 (2d Cir. 2001); Nihon Keizai Shimbun v. Comline Bus. Data, 166 F.3d 65 (2d Cir. 1999); Castle Rock Entertainment v. Carol Publ'g Group, 150 F......
  • Damages for Copyright Infringement before You Register Your Copyright
    • United States
    • LexBlog United States
    • 15 Diciembre 2021
    ...the award of the alleged infringer’s profits examines the facts only from the alleged infringer’s point of view. On Davis v. Gap, Inc., 246 F.3d 152, 159 (2d Cir. 2001). If the alleged infringer has earned a profit, this award makes him disgorge the profit to ensure that he does not benefit......
  • Potential Pitfalls When Using Music In Social Media Marketing
    • United States
    • Mondaq United States
    • 27 Enero 2022
    ...2021. 4 See Fed. R. Civ. P. 37(e). 5 17 U.S.C. ' 504. 6 See Dash v. Mayweather, 731 F.3d 303, 313 (4th Cir. 2013); Davis v. The Gap, Inc., 246 F.3d 152, 166, 171-72 (2d Cir. 7 See Country Road Music, Inc. v. MP3.com, Inc., 279 F. Supp. 2d 325 (S.D.N.Y. 2003); see also Davis, 246 F.3d at 166......
  • Request a trial to view additional results
10 books & journal articles
  • Table Of Cases
    • United States
    • ABA Antitrust Library Antitrust Counterattack in Intellectual Property Litigation Handbook
    • 1 Enero 2010
    ...7 (D.D.C. 2004), 182, 183, 184. Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147 (1st Cir. 1994), 116. Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001), 75, 77. In re Dell Computer Corp., 121 F.T.C. 616 (1996), 110. DeepSouth Packing Co. v. Laitram Corp., 406 U.S. 519 (1972), ......
  • How Much Is Too Much?: Campbell and the Third Fair Use Factor
    • United States
    • University of Whashington School of Law University of Washington Law Review No. 90-2, December 2020
    • Invalid date
    ...Serv. v. CBS Broad., Inc., 305 F.3d 924 (9th Cir. 2002); Ty, Inc. v. Publ'ns Int'l Ltd., 292 F.3d 512 (7th Cir. 2002); Davis v. Gap, Inc., 246 F.3d 152 (2d Cir. 2001); Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267 (11th Cir. 2001); Núñez v. Caribbean Int'l News Corp., 235 F.3d 18 (1st ......
  • An empirical study of U.S. copyright fair use opinions, 1978-2005.
    • United States
    • University of Pennsylvania Law Review Vol. 156 No. 3, January 2008
    • 1 Enero 2008
    ...2001 WL 1111970, at *5 (S.D.N.Y. Sept. 20, 2001) ("[T]his first and foremost factor strongly favors defendant."), On Davis v. Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001) (Leval, J.) (referring to the first factor as "[t]he heart of the fair use inquiry"); Kelly v. Arriba Soft Corp., 77 F. S......
  • Basics of Intellectual Property Laws for the Antitrust Practitioner
    • United States
    • ABA Antitrust Library Antitrust Counterattack in Intellectual Property Litigation Handbook
    • 1 Enero 2010
    ...so broadly as to include revenues from lines of business that were unrelated to the acts of infringement. See Davis v. The Gap, Inc., 246 F.3d 152, 160 (2d Cir. 2001). 381. See Big Seven Music Corp. v. Lennon, 554 F.2d 504, 515 (2d Cir. 1977). 76 Antitrust Counterattack in Intellectual Prop......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT