Cooley v. Penguin Grp. (USA) Inc.
| Decision Date | 11 July 2014 |
| Docket Number | No. 12–cv–0001 LAK.,12–cv–0001 LAK. |
| Citation | 111 U.S.P.Q.2d 1515,31 F.Supp.3d 599 |
| Parties | Brian COOLEY and Cooley & Co. Ltd., Plaintiffs, v. PENGUIN GROUP (USA) INC., et al., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Sam Peter Israel, Sam P. Israel, P.C., for Plaintiffs.
Danial A. Nelson, Kevin Patrick McCulloch, Nelson & McCulloch LLP, for Defendant Louis Psihoyos.
Brian Cooley created two sculptures of dinosaur eggs for the National Geographic Society (“National Geographic”) for use in connection with an article in its magazine, National Geographic. Louis Psihoyos photographed the sculptures so that the photographs could be published in the article. Pursuant to the terms of their respective contracts with National Geographic, both Cooley and Psihoyos transferred the copyrights in their works to National Geographic with the copyrights to be assigned to them at different times after publication. Later, Psihoyos licensed the photographs of the sculptures for various uses and received royalties on the images. Cooley and his company, Cooley & Co., Ltd. (collectively, “Cooley”), have brought this action against Psihoyos for copyright infringement, violation of the Lanham Act, and unfair competition.1
There are two motions before the Court. Psihoyos moves for summary judgment dismissing the complaint. Cooley seeks partial summary judgment determining that Cooley at all relevant times has owned valid copyrights in the sculptures and that Psihoyos infringed those copyrights.
In 1993, Charlie Magovern discovered a fossilized embryo of a therizinosaur, a variety of dinosaur.2 He playfully named the fossil “Baby Louie” after his friend Louis Psihoyos, a photographer who had photographed a number of fossils that Magovern had discovered.3 Two years later, Psihoyos pitched an article on Magovern's discovery to National Geographic.4 National Geographic agreed. In preparation for the article, it engaged sculptor Brian Cooley to construct models of two dinosaur eggs and Psihoyos to photograph the sculptures.5 Each artist's agreement with National Geographic is relevant to this dispute.
Cooley agreed with National Geographic in September 1995 (as confirmed in writing on November 30, 1995) to create the two dinosaur embryo sculptures for $6,000.6 The agreement provided that:
7
It provided also that Cooley was a “free-lance contractor.”8
National Geographic entered into a letter agreement with Psihoyos some time in the second half of 1995.9 Paragraph 8 provided in relevant part:
The agreement provided also that Psihoyos was a “freelance photographer” and an “independent contractor.”11
Cooley spent hundreds of hours researching, designing, and constructing the sculptures before he completed them in the fall of 1995 in his studio in Canada.12 As Cooley conceived them, the embryos are nestled within the egg shells.13 The embryo lies lengthwise in one and is coiled in the other.14
In November or December of 1995, Psihoyos went to Cooley's studio and photographed the sculptures.15 In early 1996, and thus after Psihoyos photographed the sculptures, National Geographic paid Cooley.16 The article containing the photographs, “The Great Dinosaur Egg Hunt,” was published in the May 1996 issue of National Geographic.17 According to his contract with National Geographic, the copyrights in the photographs were assigned to Psihoyos in or about August 1996, three months after publication. In accordance with Cooley's contract, the copyrights in the sculptures were reassigned to him in or about May 1997, one year after publication.
Psihoyos admits that he provided copies of the photographs to his licensing agent and began licensing them to third parties in 1997.18 Among other things, he authored a book, Hunting Dinosaurs,19 in 2001 that contained copies of certain of the photographs. He created also digital files of the photographs and made them available for licensing through stock photography companies Corbis Corporation, Getty Images and, most recently, Superstock.20
The stock photography companies displayed the images online.21 And in 2011, Dorling Kindersley, a United Kingdom subsidiary of Penguin Group, published three books, Dinosaurs: A Visual Encyclopedia, Dinosaurs: A Children's Encyclopedia, and Ask a Dinosaur, which contained copies of certain of the Psihoyos photographs of the Cooley sculptures that were obtained and licensed through Corbis and Getty.22
Cooley first learned of Psihoyos's licensing activity in October 2011,23 and he brought this suit in December 2011.24 Indeed, he has testified that he would have pursued legal action earlier had Psihoyos's activities come to his attention.25
In an effort to portray Cooley as knowingly having slept on his rights for years while Psihoyos commercially exploited the photographs, Psihoyos asserts that he “can only assume that Mr. Cooley has been fully aware that [the] photographs have been used, copied and displayed over the last fifteen years.”26 But he attributes this assumption only to two facts—National Geographic's use and display of the photographs, including on its website, and their use by Charlie McGovern, who discovered “Baby Louie,” in a traveling museum exhibition. But neither supports his assumption.
The McGovern story is simple. In the late 1990s, Magovern proposed to use Cooley's sculptures in a traveling exhibition organized by his entity, the Stone Company.27 Cooley learned that Psihoyos's photographs of the sculptures were to be displayed in the exhibition but did not object, in part because the Stone Company was “a client.”28 Rather, he told the Stone Company it was “welcome” to use “any images” of the sculptures in the exhibition and in its promotion.29
The National Geographic story is similar. Cooley “expressly authorized” its use of his works.30 Indeed, his contract explicitly gave National Geographic the perpetual non-exclusive right “to reproduce the work for its own purposes without further payment.”31
Accordingly, there is no genuine issue of fact as to Cooley's lack of awareness, until shortly before and in some instances after the commencement of this action, of Psihoyos's alleged infringements.32
Summary judgment is warranted if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.33 The moving party must demonstrate the absence of any genuine issue of material fact, and the Court must view the facts in the light most favorable to the nonmoving party.34 Where, as here, both parties file motions for summary judgment, the court nevertheless “must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration.”35
The Copyright Act “gives copyright owners the exclusive rights, among other things, to reproduce a copyrighted work, to prepare derivative works, to distribute copies to the public, and to display the work publicly.”36 To prove infringement, a plaintiff holding a valid copyright must show that the defendant actually copied protectible elements of the plaintiff's work without the plaintiff's authorization.37 “To demonstrate unauthorized copying, the plaintiff must first ‘show that his work was actually copied’; second, he must establish ‘substantial similarity’ or that ‘the copying amounts to an improper or unlawful appropriation.’ ”38
The parties do not dispute that the egg sculptures that appear in the Psihoyos photographs were the works Cooley prepared. The Court therefore must determine the rights of Cooley and Psihoyos with respect to their respective works, including whether Psihoyos's rights included reproduction and licensing of the photographs depicting those sculptures absent Cooley's permission.
Cooley contends that he owns the copyrights in the sculptures and that Psihoyos's distribution and licensing of the photographs of them has infringed his rights. Psihoyos responds that he has exclusive rights in the photographs by transfer from National Geographic, which commissioned the sculptures from Cooley as “works for hire” and held exclusive rights to the sculptures when it conveyed its rights to Psihoyos.39 Psihoyos points also to the fact that National Geographic retained the right under the Cooley contract “to reproduce the work [i.e., Cooley's sculptures],”40 even after it transferred its other rights in the Cooley sculptures to Cooley.41 Psihoyos interprets that provision to mean that National Geographic's...
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