Sygma Photo News, Inc. v. High Soc. Magazine, Inc.

• Decision Date: 27 September 1984
• Docket Number: No. 83 Civ. 7517 (RWS).,83 Civ. 7517 (RWS).
• Citation: 596 F. Supp. 28
• Parties: SYGMA PHOTO NEWS, INC., Plaintiff, v. HIGH SOCIETY MAGAZINE, INC., Drake Publishers, Inc., and Dorjam Publications, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

596 F. Supp. 28

SYGMA PHOTO NEWS, INC., Plaintiff, v. HIGH SOCIETY MAGAZINE, INC., Drake Publishers, Inc., and Dorjam Publications, Inc., Defendants.

No. 83 Civ. 7517 (RWS).

United States District Court, S.D. New York.

April 30, 1984.

On Renewed Motion For Summary Judgment September 27, 1984.

Ben C. Friedman, New York City, for plaintiff.

Abelman, Frayne, Rezac & Schwab, New York City, for defendants; Lawrence E. Abelman, Jonathan L. Rosner, New York City, of counsel.

OPINION

SWEET, District Judge.

Plaintiff Sygma Photo News, Inc. ("Sygma") has moved for summary judgment under Rule 56, Fed.R.Civ.P., against defendants High Society Magazine, Inc. ("High Society"), Drake Publishers, Inc. ("Drake") and Dorjam Publications, Inc. ("Dorjam"). High Society and Drake have moved to dismiss the complaint under Rule 12, Fed.R.Civ.P. Upon the facts and conclusions set forth below, Sygma's motion will be denied with leave to renew. The motion of High Society and Drake will be treated as one for summary judgment and will be denied. The action will proceed in accordance with the schedule set forth below.

The dispute between the parties arises out of the publication by Dorjam of its "Superstars of Celebrity Skin, the Definitive Collector's Edition from High Society, Special No. 6" ("Superstars Edition") which has as its cover a photograph of an unadorned Raquel Welch ("Welch") which is alleged to be the copyrighted property of Sygma. Dorjam has conceded that the publication was without authorization. What has been placed in issue is the right of Sygma to enforce its claimed copyright and the liability of High Society and Drake for Dorjam's acts. Affidavits and exhibits have been submitted and preliminary discovery by way of interrogatories has gone forward. No depositions have been taken, and the following facts have been established by the record presently before the court.

In 1978, Tony Kent ("Kent") took several photographs of Welch. On December 12, 1978, Playboy Enterprises, Inc. ("Playboy") paid Kent $3,000 for an assignment of his rights to "Pictorial Raquel Welch Photographs by Tony Kent." By agreement of August 1, 1979, Playboy assigned all rights to photographs of Welch not used by Playboy to Raquel Welch Productions, Inc. ("RWPI"). In mid-1981, RWPI gave Sygma the exclusive right to distribute certain photographs and in that year Sygma granted to "Paris Match" magazine ("Paris Match") the right to use a photograph (the "Photograph") of Welch which thereafter became the cover of the Paris Match September 4, 1981 issue. The issue contained a general copyright notice. The Photograph also appeared on the cover of the Paris Match International edition, which contained a similar notice.

In February 1983, the Photograph was published as the cover of the Superstars Edition without the authorization of RWPI or Sygma. On May 31, 1983, RWPI assigned its rights in the Photograph to Sygma, describing it in a sworn statement by Welch as:

that certain photograph entitled "RAQUEL WELCH" and alternatively titled "A 42 ANS, ELLE VEUT ETRE LA PLUS BELLE GRAND-MERE DU MONDE", photographed by Tony Kent in 1978, and published as the cover and on page 11 of the September 4, 1981 issue of "PARIS MATCH" magazine.

Sygma then filed its application for copyright of the Photograph, claiming Kent as the author and describing the transfers just set forth.

Dorjam concedes the facts described, but denies the validity of the copyright, claiming that the facts fail to establish the chain of assignment, "particularly since the person alleged by plaintiff to be the author — Tony Kent, — did not assign copyright ownership to any specific photograph ...." The affidavits of Welch and Eliane Laffont, submitted on behalf of Sygma, establish that the Photograph was one of the photographs of Welch made by Kent in 1978. There is, however, no affidavit or sworn statement by a person with knowledge that establishes that the photographs Kent assigned to Playboy, which Playboy later assigned to RWPI, included the Photograph. In view of the logical inference to that effect and Sygma's supporting affidavits, it is highly likely that Sygma will be able to prove its chain of title. However, there is a possible factual dispute as to the chain of title. Although the burden is on defendants to overcome the presumption of validity accorded Sygma's copyright, see Van Cleef & Arpels, Inc. v. Schechter, 308 F.Supp. 674, 676 (S.D.N.Y.1969), the potential fact dispute requires the denial of summary judgment.

Dorjam also resists summary judgment on the ground that material misrepresentations were made in the copyright application, namely that Kent was the author of the Photograph and that the copyright application claimed first publication in the United States, as well as on the ground of omission of notice. While the court's conclusions as to these contentions are not necessary to the disposition of the present motion for summary judgment, perhaps their resolution will be helpful to the parties as the litigation proceeds.

As to the first ground, regardless of whether Kent is indeed the author of the Photograph under 17 U.S.C. § 201, in the context of this dispute, the distinction is not material, assuming that Sygma is able to complete the proof of its claimed chain of title. See Testa v. Janssen, 492 F.Supp. 198 (W.D.Pa.1980).

The inconsistency as to the place of publication resulted after counsel for Sygma explained his dilemma as to the date of the first publication to the examiner. The resulting change in date may have left an error in the place of publication given on the copyright application, but this inconsistency is also not material. See Midway Manufacturing Co. v. Bandai-America, Inc., 546 F.Supp. 125, 143 (D.N.J.1982) (misrepresentation must be intentional and must "harm or prejudice the defendant in some way or affect the validity of the copyright.")

As to the omission of notice, the Photograph was published as the cover of Paris Match, which contained a copyright notice the validity of which defendants have not challenged. Defendants state that Sygma and Welch "may have" authorized publication and sale of the Photograph in the United States without copyright notice. However, under 17 U.S.C. § 405(b), the infringer has the burden of proving it was misled by a publication without notice. Defendants have offered no evidence of omission of notice, and this defense is thus unavailable to defendants.

As for the motion to dismiss the complaint on behalf of High Society and Drake, an officer of defendants has stated by affidavit that High Society was the corporate publisher of High Society Magazine until 1979, when High Society terminated all business activities and transferred its assets to Drake. The officer also stated that in 1982, High Society adopted a plan of dissolution which was effectuated in 1983, and that Dorjam is the sole corporate publisher of the Superstars Edition and that High Society and Drake were not involved in or responsible for publication of the edition. Sygma has submitted copies of the masthead and publisher's letter of the Superstars Edition and of an issue of High Society, which show that the publisher, editor and other staff members of the two publications are the same. Each publication refers to the other. The print orders for the Superstars Edition refer to the issue as "High Society's Celebrity Skin # 6" and are written on High Society stationery. Defendants state that Dorjam was merely using old High Society stationery. Because the motion to dismiss was supplemented by the affidavit just referred to, the motion will be treated as one for summary judgment. Given the facts now before the court, a factual issue has been raised as to whether Drake and High Society are liable to Sygma as contributory infringers. See Peter Pan Fabrics, Inc. v. Acadia Co., 173 F.Supp. 292, 298-99 (S.D. N.Y.1959), aff'd, 274 F.2d 487 (2d Cir.1960). Accordingly, defendants' motion is denied.

Summary judgment for Sygma is denied with leave to renew. Discovery will proceed to be completed by July 2, and the pretrial orders will be filed by July 9, 1984.

IT IS SO ORDERED.

ON RENEWED MOTION FOR SUMMARY JUDGMENT

Sygma Photo News, Inc. ("Sygma") has renewed its motion for summary judgment against High Society Magazine, Inc. ("High Society"), Drake Publishers, Inc. ("Drake") and Dorjam Publications, Inc. ("Dorjam")...