Bill Graham Archives v. Dorling Kindersley Ltd.

• Decision Date: 12 May 2005
• Docket Number: No. 03CV9507GBD.,03CV9507GBD.
• Citation: 386 F.Supp.2d 324
• Parties: BILL GRAHAM ARCHIVES, LLC Plaintiff, v. DORLING KINDERSLEY LIMITED, Dorling Kindersley Publishing, Inc., and Donnelley & Sons Company, Defendants.
• Court: U.S. District Court — Southern District of New York

Page 324

386 F.Supp.2d 324

BILL GRAHAM ARCHIVES, LLC Plaintiff, v. DORLING KINDERSLEY LIMITED, Dorling Kindersley Publishing, Inc., and Donnelley & Sons Company, Defendants.

No. 03CV9507GBD.

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

May 12, 2005.

Michael S. Elkin, William F. Patry, Thomas P. Lane, Deborah L. McNamara, Thelen, Reid & Priest LLP, New York City, for Plaintiff.

Richard Dannay, Thomas Kjellberg, Cowan, Liebowitz & Latman, P.C., New York City, for Defendants.

MEMORANDUM OPINION & ORDER

DANIELS, District Judge.

Plaintiff Bill Graham Archives, LLC ("Bill Graham" or "plaintiff") brings suit asserting copyright infringement of seven visual art images by defendants Dorling Kindersley Limited, Dorling Kindersley Publishing, Inc., and R.R. Donnelley & Sons Company (together, "Dorling" or "defendants"). Defendants moved for summary judgment pursuant to Fed.R.Civ.P. 56. Plaintiffs cross-moved for summary judgment. For the reasons stated below, defendants' motion is granted and plaintiff's motion is denied.

BACKGROUND

The dispute in this copyright infringement action centers on seven reduced images of concert posters reproduced by defendants in their entirety in the book Grateful Dead: The Illustrated Trip ("defendants' book or Trip"). There is no dispute that the images were copied. Plaintiff alleges that their single reproduction without permission constitutes copyright infringement. The seven pieces were used on certain pages of defendants' book as small "thumbnail" reproductions. The images appeared in the book in chronological order.¹

Defendants' first sought permission to use the pieces when defendants' researcher forwarded a letter to plaintiff from the head of Grateful Dead Productions ("GDP"). The letter described Trip, confirmed GDP's participation, and requested plaintiff's cooperation "in order to help make this book the definitive Grateful Dead history" in May 2003. See Def. Ex. T; Gibbs Dep. 172-79. Plaintiff responded by offering permission in exchange for GDP's grant to plaintiff of rights "to create CDs and DVDs out of our archived audio and video recordings of Grateful Dead concerts." Def. Ex. U. GDP rejected plaintiff's offer and at GDP's instruction Dorling's researcher contacted plaintiff's archivist directly, informing her, inter alia, that "[a]t this stage it is hard to estimate exactly which images we would like to use as we are still in the process of designing spreads around the text. We would plan to use the images inside, within a textual context at around ½ page each and would require clearance for world rights." Def. Ex. W. Plaintiff responded "[o]f course we agree that our posters will greatly enhance any Grateful Dead book and would be open to negotiating a licensing contract with you. Licensing fees are within industry standards and based on poster series type, image size, number of images, and quantity of books being printed." Id.

By autumn 2003, Dorling's researcher had cleared permission for the bulk of the visual material to be included in Trip, including six of seven works in which Bill Graham claims rights in this lawsuit: the New Year's Eve 1988 and 1991 posters, Def. Ex. X; the 1969 Jefferson Airplane/Grateful Dead poster, Def. Ex. Y; the 1993 "fake" New Year's poster, Def. Ex. Z; the 1980 "Warfield" poster, Def. Ex. AA; and the reused ticket, Def. Ex. BB. On October 23, 2003, Dorling's researcher again contacted plaintiff for permission to use two images in which plaintiff had asserted rights: the September 1967 "Airplane/Dead" poster that appears on page 76 of Trips; and a 1966 Jefferson Airplane/Grateful Dead Fillmore concert poster reproduced on page 58. Def. Ex. S. Plaintiff's representative responded with an offer to "license these two images for $2500. each poster or $5000, in total," Def. Ex.CC.² On November 17, plaintiff sent Dorling's researcher two emails, stating that "you included at least 3, if not more, images that we own and have the copyright to," and that "if we do not have an agreement by close of business tomorrow, I will instruct Thelen Reid to take the most aggressive action possible." Def. Ex. DD.

Plaintiff thereafter brought suit, alleging copyright infringement under the Copyright Act. Plaintiff seeks, among other things, to enjoin defendants' further distribution of the Trip, the destruction of all unsold books, as well as actual and statutory damages. Defendants moved for summary judgment, contending that their reproduction of the images constitutes fair use of the copyrighted works pursuant to Section 107 of the Copyright Act. Plaintiff cross-moved for summary judgment. The sole issue before this Court is whether defendants' use of plaintiff's work constitutes fair use under the Copyright Act.

SUMMARY JUDGMENT STANDARD

Summary judgment is proper when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). Under this rule, the moving party bears the initial burden of demonstrating that the evidence fails to raise a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). After such a showing, the non-moving party must respond with "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). "The non-moving party may not rely on mere conclusory allegations nor speculation, but instead must offer some hard evidence" to show that there is a genuine issue for the trier of fact to resolve. D'Amico v. City of New York, 132 F.3d 145, 149 (2d Cir.1998).

When deciding the motion, the Court views the evidence in the light most favorable to the non-moving party and draws all reasonable inferences in favor of that party. See Schneider v. Feinberg, 345 F.3d 135, 144 (2d Cir.2003). The Court's role is not to resolve disputed matters it may find in the record, but merely to determine, as a threshold matter, if any exist. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Gibson v. American Broad. Cos., 892 F.2d 1128, 1132 (2d Cir.1989).

In order to establish a claim of copyright infringement, the plaintiff must establish (1) ownership of a valid copyright and (2) unauthorized copying or a violation of one of the other exclusive rights afforded copyright owners pursuant to the Copyright Act. See Twin Peaks Productions v. Publications Int'l. Ltd., 996 F.2d 1366, 1372 (2d Cir.1993). Although defendants in the present case disagree that plaintiff owns a valid copyright to the concert posters, "the defense has made its summary judgment motion solely on the ground that [their reproduction in Trip] is a fair use as a matter of law." Transcript of oral argument dated January 19, 2005 at 3. Because a finding of fair use negates any liability stemming from defendants' use of the posters, the validity of plaintiff's claim of copyright ownership need not be decided.

FAIR USE

"From the infancy of copyright protection," the fair use doctrine "has been thought necessary to fulfill copyright's very purpose, `[t]o promote the Progress of Science and useful Arts.' "Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const., art. I, § 8, cl.8). "[I]n truth, in literature, in science and art, there are, and can be few, if any, things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before." Id. Until the 1976 Copyright Act, the doctrine of fair use grew exclusively out of the common law. See id., at 576, 114 S.Ct. 1164; See Folsom v. Marsh, 9 F.Cas 342, 348 (C.D.Mass 1900) (C.C.D.Mass.1841) (Story, J.).

With the Copyright Act, Congress restated the common law tradition of fair use. The statute provides that the use or reproduction of a copyrighted work is "not an infringement of copyright" if it is used "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research." 17 U.S.C. § 107. In determining whether the work has been used for such a purpose, the statute lists four nonexclusive factors to consider: 1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect of the use upon the potential market for, or value of, the copyrighted work. 17 U.S.C. § 107(1) — (4).

This section of the Copyright Act "intended that courts continue the common law tradition of fair use adjudication" and "permits and requires courts to avoid rigid application of the copyright statute, when, on occasion, it would stifle the very creativity that law is designed to foster." Campbell, 510 U.S. at 577, 114 S.Ct. 1164. Fair use analysis therefore, always "calls for a case-by-case analysis." Id. The fair use examples provided in § 107 are "illustrative and not limitative" and "provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses." Id.; Nimmer § 13.05[A], at 13-153 ("The factors contained in Section 107 are merely by way of example, and are not an exhaustive enumeration.") The ultimate test of fair use, therefore, is whether the copyright law's goal of "promot[ing] the Progress of Science and useful Arts," U.S. Const., art. I § 8, cl., 8, "would be better served by allowing the use than by preventing it." Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1077 (2d Cir.1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960)). The burden of proof is on the defendants to demonstrate fair...