Jim Marshall Photography, LLC v. John Varvatos of Cal.
| Decision Date | 03 June 2013 |
| Docket Number | No. C-11-06702 DMR,C-11-06702 DMR |
| Court | U.S. District Court — Northern District of California |
| Parties | JIM MARSHALL PHOTOGRAPHY, LLC, Plaintiff, v. JOHN VARVATOS OF CALIFORNIA, et al., Defendants. |
ORDER ON DEFENDANTS' MOTION
FOR PARTIAL SUMMARY
In this action, Plaintiff Jim Marshall Photography, LLC alleges a copyright infringement claim against Defendants John Varvatos Enterprises, Inc. ("JVE"), John Varvatos, an individual ("Varvatos"; collectively, "Varvatos Defendants"), and Bloomingdale's, Inc. (collectively, "Defendants"), as well as a claim of conversion against the Varvatos Defendants. At issue in this motion is Plaintiff's copyright infringement claim as to approximately 149 photographs1 taken bythe late Jim Marshall that are contained on proof sheets. The Varvatos Defendants reproduced the proof sheets as well as individual images from the proof sheets, and displayed the reproductions in JVE stores and JVE-branded retail spaces located in Bloomingdale's stores.2 (TAC ¶ 9; Mar. 7, 2013 Updated Joint Case Management Conference Statement 2-3.) Defendants seek summary judgment as to 29 individual works on the grounds that Plaintiff does not have standing to sue for infringement because Plaintiff cannot establish its ownership of the copyrights in these images. Defendants also argue that Plaintiff does not have proper copyright registrations of the works at issue, which is a prerequisite to filing an infringement lawsuit. 17 U.S.C. § 411(a). Defendants also seek summary judgment based on their affirmative defenses of copyright misuse and unclean hands. For the following reasons, the court grants the motion in part.
Jim Marshall became renowned in the 1960s and 1970s for his photographs of legendary rock and roll and jazz musicians, including Jimi Hendrix, Janis Joplin, the Rolling Stones, John Coltrane, the Beatles, and Jerry Garcia. (Jt. Statement of Material Facts Not in Dispute ("SUF") 1; TAC ¶¶ 4, 7.) During his fifty-year career, Marshall created hundreds of images that were published on more than 500 album covers and in magazines such as Rolling Stone and The Saturday Evening Post. (SUF 2.) Marshall's work also included books of his photographs, including Not Fade Away, a "best of" collection published in 1997, and Jim Marshall: Proof ("Proof"), a 2004 collection of proof sheets from which some of his most famous images had been selected. (SUF 5, 6, 13, 14.)
In 2008, the Varvatos Defendants bought 52 original proof sheets from Marshall, each containing multiple individual photographs. The Varvatos Defendants enlarged and reproduced the proof sheets, as well as certain individual images contained therein, and displayed them in their stores and retail spaces. (Jt. Statement of Material Facts Not in Dispute Re Pl.'s Second Mot. for Partial Summ. J. 1-3, 5, 7.) Marshall died in March 2010. (SUF 3.) Amelia Davis worked as Marshall's assistant from 1998 until his death. She was the sole beneficiary of his estate. (SUF 4; Decl. of Davis, Apr. 18, 2013, ¶ 2.) Davis assigned all of her rights in Marshall's work to Plaintiff Jim Marshall Photography, LLC. (TAC ¶ 4.) Plaintiff filed this lawsuit in 2011, alleging, inter alia, copyright infringement as to the 52 proof sheets and the images they contained on the grounds that Defendants did not have Marshall's permission to reproduce and display the images. (See Compl. ¶¶ 7-11.) In response, Defendants claim that Marshall expressly and impliedly authorized Defendants to copy images from the proof sheets for display in their stores and retail spaces. (Answer ¶ 10.)
As Marshall's sole beneficiary, Davis inherited Marshall's photographic negatives and all existing rights to his work. It is undisputed that Marshall created all of the images at issue in this lawsuit. However, Marshall's estate did not include records critical to determining the legal ownership of the copyrights in the images, such as documents evidencing the publication history of the photographs. As discussed below, the publication history of an image may be central to the question of whether the image has become part of the public domain. Davis admitted that she does not have any records indicating when the images in suit were first published, , nor does she have personal knowledge of such information. For example, Davis was questioned about a photograph of Jimi Hendrix from Not Fade Away that also appeared on an album cover in 1970. (Decl. of Winter, Ex. B (Davis Dep. Mar. 1, 2013 ("Pl.'s Dep.")) 17:7-9; 26:9-17.) When asked whether she had any way of knowing whether the album cover was the first publication of the image, she responded, (Pl.'s Dep. 26:18-22.) She also testified that Marshall did not have any method of segregating unpublished negatives from published negatives. (Davis Dep. 168:22-169:1.)
Marshall's estate also did not include documentation of the circumstances under which he created the images. Such information is also critical to the question of copyright ownership, as the author of a work may not own the copyright in that work if it was created as a work for hire for another.3 Although Marshall did a great deal of photographic work for magazines and record album covers in the 1960s and 1970s, Davis does not have records identifying the specific publications and recording companies. (Davis Dep. 179:11-25.) Nor does Davis have copies of the magazines from the 1960s and 1970s in which Marshall's work was published, other than one single issue of Life magazine. (Pl.'s Dep. 27:6-9; 28:20-29:10.) Davis inherited Marshall's record collection, (Pl.'s Dep. 21:20-22), and believes the collection includes "some" of the examples of the albums on which Marshall's photographs appeared. (Pl.'s Dep. 29:24-30:11.) However, she does not have a collection of all of the albums containing Marshall's photographs. (Pl.'s Dep. 30:21-24.)
Davis does not know whether Marshall had contracts with the magazines in which his photographs appeared, only that he kept the negatives of those images. (Davis Dep. 184:22-186:12.) She has no written agreements between Marshall and Rolling Stone, or between Marshall and any record companies. (Pl.'s Dep. 41:9-17; 118:1-6.) In fact, she testified that it was Marshall's habit to destroy records that were more than ten years old, without exception. (Pl.'s Dep. 92:16-93:7; Davis Dep. 36:2-12; 36:20-25.)
The parties do not dispute that the 1997 book Not Fade Away includes photographs that were originally published prior to 1970, originally published in magazines, and originally published as album covers. (SUF 16, 17, 18.) Marshall wrote captions for the book that indicate that he took some of the photographs "for" various publications, e.g., "for Guitar Player magazine," "taken for Look magazine," and "for Rolling Stone." (SUF 15.) Similarly, his captions for photographs in Proof include statements such as "on assignment for Teen Set magazine," "for the Saturday Evening Post" and "for a Life magazine cover assignment." (SUF 7.) The parties dispute the legalsignificance of Marshall's statements in these captions. Defendants argue that the captions are evidence that the photographs were works for hire. In response, Davis states that since she began working for Marshall in 1998, all "magazine[s], record label[s] or otherwise . . . have been granted licenses to use the photographs as renewals of prior licenses granted or new licenses for new uses," and that "[t]here is simply no evidence that [Marshall] ever worked as anything other than a freelance photographer." (Davis Decl. ¶ 7.) However, she also testified that she has no knowledge of Marshall's business practices prior to 1998. (Davis Dep. 60:23-61:7; 64:7-65:3.) Nearly all of the images in Proof were created prior to 1976, and Not Fade Away contains some photographs that were published before 1970. (SUF 9, 16.) In addition, numerous copyright registrations for Marshall's photographs appear to contradict Davis's statement, as they show copyright claimants such as Milestone Records, Atlantic Records, and MCA Records as "employer[s] for hire." (Defs.' Req. for Judicial Notice ("RJN"), Exs. L, Q; Defs.' Second Req. for Judicial Notice, Ex. 1.4 )
In this motion, Defendants challenge Plaintiff's standing and ability to bring an infringement action with respect to several categories of images: 1) images for which copyright registrations arein the names of third parties, and not in Marshall's name; 2) images which were published before 1978 without a copyright notice in Marshall's name, and therefore may be in the public domain; 3) images which appeared in Not Fade Away and Proof.
A court shall grant summary judgment "if . . . there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The burden of establishing the absence of a genuine issue of material fact lies with the moving party, see Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986), and the court must view the evidence in the light most favorable to the non-movant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (citation omitted). A genuine factual issue exists if, taking into account the burdens of production and proof that would be required at trial, sufficient evidence favors the non-movant such that a reasonable jury could return a verdict in that party's favor. Id. at 248. The court may not weigh the evidence, assess the credibility of witnesses, or resolve issues of fact. See id. at 249.
To defeat summary judgment once the moving party has met its burden, the nonmoving party may not simply rely on the pleadings, but must produce significant probative evidence, by affidavit or as otherwise provided...
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