Marvullo v. Gruner & Jahr

• Decision Date: 19 June 2000
• Docket Number: No. 98 Civ. 5000 (RLC).,98 Civ. 5000 (RLC).
• Citation: 105 F.Supp.2d 225
• Parties: Joe MARVULLO, Plaintiff, v. GRUNER & JAHR, Stern Magazine Corporation, Defendants.
• Court: U.S. District Court — Southern District of New York

105 F.Supp.2d 225

Joe MARVULLO, Plaintiff, v. GRUNER & JAHR, Stern Magazine Corporation, Defendants.

No. 98 Civ. 5000 (RLC).

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

June 19, 2000.

Weingrad & Weingrad, L.L.P., New York City (Stephen A. Weingrad, of counsel), for Plaintiff.

Walter, Conston, Alexander & Green, P.C., New York City (Gregory F. Hauser, of counsel), for Defendant Stern Magazine Corp.

OPINION

ROBERT L. CARTER, District Judge.

Defendant Stern Magazine Corporation moves to dismiss the amended complaint of plaintiff Joe Marvullo pursuant to Rule 12(b)(6), F.R. Civ. P., for failure to state a claim upon which relief can be granted. Plaintiff moves for leave to file a seconded amended complaint pursuant to Rule 15(a), F.R. Civ. P.

BACKGROUND¹

Plaintiff Marvullo is a professional photographer who enjoyed a "special relationship" with the "White House Press and Photo office," and in particular with Bob McNeely, Director of Photography at the White House. (Am.Compl. ¶ 42.) Defendant Gruner & Jahr AG & Co. ("Gruner & Jahr") is a German corporation which publishes the German-language periodical Stern Magazine. (Id. ¶ 28, Ex. C.) Stern Magazine Corporation ("Stern") is a subsidiary of Gruner & Jahr and a domestic corporation doing business in New York. (Id. ¶¶ 2, 6.)

In March, 1997, Marvullo approached Stern with an offer of a "story on President Clinton or the White House photographers," claiming that he had "exclusive access" to the White House. (Id. Ex. D.) Over the course of the next several months, he negotiated an agreement to provide Stern with the "editorial use of [a] feature article on The White House Photo Unit in one issue of Stern Magazine" for a fee of $3,000.00 plus expenses, as evidenced by plaintiff's two invoices dated November 19, 1997. (Id. Ex. G.) The agreement licensed Stern's use of plaintiff's "black/white photo of Bob McNeely photographing President Clinton in [a] Cabinet Room meeting" ("McNeely photograph"); approximately 50 or 60 photographs taken by members of the White House Photo Unit; some "text by Joe Marvullo"; and "caption material for [the] photographs." (Id. Ex. G, K.) The first of plaintiff's invoices stated that his fee was specifically in exchange for his "research, photo editing and text," as well as captions, but not for Stern's use of any photographs taken by the White House Photo Unit. (Id. Ex. G.) In a subsequent letter to Stern dated November 20, 1997, in which plaintiff wrote "[h]ere is the billing for `The White House Project'", he added that "the copyright and credit should read (c) Photographer's name/The White House [and any] photos by Joe Marvullo that might be used should read (c) Joe Marvullo." (Id. Ex. H.) Prior to the invoices, Stern had agreed, in a letter dated August 17, 1997, that it would submit the article and accompanying photographs to plaintiff for his approval prior to publication. (Id. ¶ 55, Ex. F.) On December 5, 1997, Stern issued a check to plaintiff for $3,106.95 in exchange for the licensed work and his services. (Id. Ex. I.)

In or about January 1998, Gruner & Jahr published an article in Stern Magazine on President Clinton using eight of the aforementioned photographs, including a cropped version of the McNeely photograph. (Id. ¶ 11, Ex. C.) The article was never submitted to plaintiff for his prior approval. (Id. ¶ 55.) It did not credit Marvullo or any of the individual White House photographers as provided for in the licensing agreement. (Id. ¶¶ 52-54.) Instead, it credited "Bob McNeely/The White House" for each of the published photographs. (Id. Ex. C, J.) Moreover, the photographs did not appear in a positive article on the White House Photo Unit, as agreed to by the parties during previous conversations and correspondence, (see, e.g., id. ¶ 43), but rather in a negative story on President Clinton's political and personal troubles; the story led, in fact, with a graphic sexual discussion of the evidence and legal issues raised in Paula Corbin Jones's sexual harassment lawsuit against the President, (Id. Ex. C, J). Plaintiff's relationship with the White House, as well as his general professional reputation, have been impaired by the publication of the eight photographs alongside of a salacious and unflattering story about the President. (Id. at 34, 65.)

Consequently, plaintiff brought suit against defendants alleging federal claims of copyright infringement under the Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. § 101, et seq., (count I), and unfair competition under the Lanham Trade-Mark Act ("Lanham Act"), 15 U.S.C § 1125(a), (count IV). He also asserted state law claims for conversion (count II), fraud (count III), negligent and common law unfair competition (count V), and tortious misappropriation of good will (count VI).

DISCUSSION

I.

In response to arguments raised in defendant's motion to dismiss, plaintiff moves for leave to file a second amended complaint.² (See Pl's. Mem. Am. Compl. at 1.)³ "Leave to amend, though usually freely given, may be properly denied where the proposed amendment would be legally insufficient on its face or would fail to state a claim." Fisher v. Internal Revenue Service, 1985 WL 1692, at *1 (S.D.N.Y. June 19, 1985) (Carter, J.). "Where it appears that granting leave to amend is unlikely to be productive ... it is not an abuse of discretion to deny leave to amend." Ruffolo v. Oppenheimer & Co., 987 F.2d 129, 131 (2d Cir.1993). See also McNally v. Yarnall, 764 F.Supp. 853, 855 (S.D.N.Y. 1991) (Sweet, J.) ("An amendment is considered futile if the amended pleading fails to state a claim or would be subject to a motion to dismiss on some other basis."). The court may dismiss a complaint for failure to state a claim only if it "`appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief.'" Cooper v. Parsky, 140 F.3d 433, 440 (2d Cir. 1998) (quoting Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)).

A.

Count I of the proposed second amended complaint, alleging copyright infringement, is legally insufficient. First, plaintiff attempts to plead direct copyright infringement by alleging that the McNeely photograph "was published by the Defendants beyond the scope and authority of the limited license." (Second Am. Compl. ¶ 9.) The court recognizes that although generally "[a] copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement," Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998), a licensor may bring a claim for infringement where a licensee uses copyrighted material beyond the scope of a license, see Marshall v. New Kids on the Block Partnership, 780 F.Supp. 1005, 1008-10 (S.D.N.Y.1991) (Patterson, J.) ("Case law in this Circuit indicates that a copyright licensee can make himself a `stranger' to the licensor by using the copyrighted material in a manner that exceeds either the duration or the scope of the license."). Nonetheless, plaintiff's unadorned allegation in paragraph nine that defendants have published the McNeely photograph "beyond the scope ... of the limited license," absent any factual support, merely states a legal conclusion insufficient to withstand a motion to dismiss. "A complaint which consists of conclusory allegations unsupported by factual assertions fails even the liberal standard of Rule 12(b)(6)." De Jesus v. Sears, Roebuck & Co., Inc., 87 F.3d 65, 70 (2d Cir.1996). See also Duncan v. AT & T Communications, Inc., 668 F.Supp. 232, 234 (S.D.N.Y.1987) (Carter, J.) (stating "individual allegations ... may be so baldly conclusory that they fail to give notice of the basic events and circumstances of which the plaintiff complains .... and, as a matter of law, [are] insufficient to state a claim.").⁴

Second, plaintiff alleges that defendants "contributorily infringed said copyright by alternatively acquiring, publishing, using and placing upon the general market ... a photographic image which was copied largely from plaintiff's copyrighted photographic image (Exhibit A)." (Second Am. Compl. ¶ 11.) As a threshold matter, to adequately plead contributory copyright infringement plaintiff must initially plead a direct infringement. See R & R Recreation Products Inc. v. Joan Cook Inc., 25 U.S.P.Q.2d (BNA) 1781, 1784 (S.D.N.Y. Apr.14, 1992) (Martin, J.) ("`[W]ithout the fact or intention of a' direct infringement there is no cause of action for contributory [copyright] infringement." (quoting Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526, 92 S.Ct. 1700, 32 L.Ed.2d 273 (1972))). See generally Subafilms, Ltd. v. MGM-Pathe Communications Co., 24 F.3d 1088, 1092 (9th Cir.1994) (collecting cases); Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir.1971) (requiring contributory infringer to have participated in infringing conduct of another). Although the second amended complaint is not a model of clarity, count I appears to allege that Stern is liable for contributory copyright infringement because it procured the McNeely photograph which defendant Gruner & Jahr later published in violation of plaintiff's copyright. (Second Am. Compl. ¶ 11.) Since the second amended complaint fails to adequately plead a direct copyright infringement, plaintiff's contributory infringement claim would fail.

Even assuming arguendo that plaintiff had sufficiently alleged a direct infringement by Gruner & Jahr, in order then to plead contributory infringement against Stern plaintiff must have alleged that Stern had actual or constructive knowledge of, and participated in, Gruner & Jahr's infringing conduct. See Ez-Tixz, Inc. v. Hit-Tix, Inc., 919 F.Supp. 728, 732 (S.D.N.Y.1996) (Koeltl, J.) ("[O]ne who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a `contributory' inf...