Mayer v. Josiah Wedgwood & Sons, Ltd.
| Decision Date | 07 February 1985 |
| Docket Number | No. 84 Civ. 1222 (PKL).,84 Civ. 1222 (PKL). |
| Citation | 601 F. Supp. 1523 |
| Parties | Sandra MAYER, Plaintiff, v. JOSIAH WEDGWOOD & SONS, LTD., Defendant. |
| Court | U.S. District Court — Southern District of New York |
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Lisa Kolb Liebert, New York City, for plaintiff.
Leonard S. Sandweiss, New York City, for defendant.
This case concerns a dispute over a Christmas tree ornament. Rather than fostering peace and harmony in the holiday spirit, the ornament has instead led to litigation.
The ornament consists of a small round cameo made of blue jasperware (dull gloss china), embossed with a white snowflake in bas relief, and mounted in gold. It is surrounded by three alternating perpendicular concentric gold bands, with a small eye hook at the top, presumably for hanging. This ornament was offered for sale in the United States during the 1982 Christmas season by Josiah Wedgwood & Sons, Inc.
This suit centers on plaintiff Sandra Mayer's charge that the snowflake design found on the ornament is a substantial copy of a design she had submitted to the Wedgwood organization some years earlier with a view to marketing a Christmas plate featuring the design. Her plan was ultimately rejected. In the instant suit she claims she is entitled to be paid for her design, which she asserts was the model for Wedgwood's snowflake.
Mayer's complaint was filed in February 1984. The defendant, Josiah Wedgwood & Sons, Ltd. ("JWS Ltd."), is a British corporation with its principal place of business in England. It manufactures the famous Wedgwood brand china. It is a wholly owned subsidiary of Wedgwood plc ("plc"), which likewise is a British corporation headquartered in England. Josiah Wedgwood & Sons, Inc. ("JWS Inc."), is a New York corporation with its principal place of business in either New York or New Jersey. It, too, is a wholly owned subsidiary of plc. It purchases JWS Ltd.'s product and imports it into the United States, where it resells the china out of its own inventory. It is on JWS Inc. that Mayer originally had process served, on the theory that it is JWS Ltd.'s agent or alter ego in New York. She later effected service of process by mail upon JWS Ltd. in England.
This case is now before me on defendant's motion for summary judgment. For the reasons set forth below, that motion should be granted.
The plaintiff, Sandra Mayer, is an artist. Her work, including snowflake designs, has been sold to museums and art houses. Her snowflake designs are a product of her own "interpretation" of what is found in nature. According to Mayer, her work on snowflakes began with a trip to the library —"probably" the Great Neck library — where she looked at books about snow, photocopied certain pages of designs, and "worked from there." She does not remember which books she used, and she destroyed the photocopies when she was done with them. No federally registered copyright was obtained for any of her work, though she did place a copyright notice on at least some of her creations. The design at issue here, however, had no such copyright notice.
In late 1978 or early 1979, Mayer met with Roy Moyer, a representative of the United Nations Children's Fund (UNICEF), and offered to contribute this design to UNICEF for use in a Christmas card to be issued by UNICEF. UNICEF accepted her offer and for the 1979 holiday season marketed a greeting card featuring Mayer's snowflake, which was embossed on the cover. The back of the card acknowledged Mayer's contribution, but contained no copyright notice.1
At about the same time, Mayer began exploring possibilities for commercial exploitation of her snowflake. She engaged the services of one Emil ("Sam") Polk, president of a company called Latama, Inc. It was proposed that a Christmas plate be manufactured, featuring Mayer's design. In an effort to bring the plan to fruition, Polk approached James Fulks, Vice President-Marketing of JWS Inc., to explore possibilities for a deal. Negotiations began, and in December 1978, Mayer submitted to JWS Inc. through Polk an embossed print of the snowflake design.
The Wedgwood organization ordinarily designs, produces and distributes its own products. Occasionally, though, it is approached by outsiders with specific ideas for china products. These are "custom orders." When JWS Inc. receives a proposal for a custom order, it contacts JWS Ltd., which manufactures all of Wedgwood's china, to inform it of the proposal. JWS Ltd. then determines whether production would be feasible, what the necessary costs are, what the minimum quantity should be, and other such matters. JWS Inc. informs the customer of JWS Ltd.'s decision. If the custom order goes ahead, JWS Ltd. manufactures the items and sells them to JWS Inc., which then resells them to the customer.
The Polk proposal was one such custom order. Polk's dealings were wholly with JWS Inc., and the negotiations were evidenced by correspondence between JWS Inc. and Polk and between JWS Ltd. and JWS Inc. Polk never dealt directly with JWS Ltd. The documents indicate that a limited run of 10,000 plates was contemplated, which would be marketed through a new company organized by Polk called Art International. Much of the correspondence concerned the contents of the backstamp on the proposed plates and the design and size of the plate's border. It is clear from the correspondence between the two Wedgwood companies that by October 25, 1979, the Polk project was considered unfeasible and thus would not be going forward.
At this point the evidence presented to me becomes unclear. Mayer testified at deposition that she does not remember requesting return of her print (deposition p. 87). However, in a letter dated July 27, 1983, Catherine Adamczyk, Corporate Secretary of JWS Inc., wrote to Mayer's attorney, Ms. Liebert, that the print had been returned to Polk in 1979. I have no evidence from Polk or anyone else as to where the print is now.
According to the complaint, Mayer discovered "her" snowflake on Wedgwood's ornament on or about November 1, 1982. In 1983, Mayer through Liebert contacted Adamczyk at JWS Inc. to discuss her claim that her design had been used without payment. Adamczyk promised to do some research to determine the source of the design on the Christmas ornament and to get back to Liebert. On November 23, 1983, Adamczyk wrote to Liebert to inform her that the snowflake on the ornament had been created in Wedgwood's Design Studio, adding that Wedgwood had no need to copy snowflake designs from others and had not in fact done so.2
On February 22, 1984, Mayer filed suit against JWS Ltd. Her complaint states two causes of action. The first alleges that JWS Ltd. converted her design to its own use, and the second alleges unfair competition. She seeks damages for the alleged conversion and an accounting and payment to her of all profits earned by JWS Ltd. on sales of the allegedly infringing Christmas ornament. Subject matter jurisdiction is founded on diversity of citizenship under 28 U.S.C. § 1332.3 Process was served on JWS Inc.
On July 13, 1984, after conducting some discovery of plaintiff, defendant filed this motion for summary judgment. JWS Ltd.'s motion raises four objections to Mayer's suit: lack of personal jurisdiction; insufficient service of process; preemption of Mayer's claim by federal copyright law; and failure to join Polk and UNICEF as indispensable parties.
Mayer conducted some discovery, and at about the same time she filed her response to JWS Ltd.'s motion, she effected service by mail upon JWS Ltd. in order to obviate any possible insufficiency of service attributable to the fact that process had been served not on JWS Ltd. but on JWS Inc.
I have received briefs and heard oral argument of defendant's motion. I conclude that defendant's motion should be granted and this case dismissed.
Since subject matter jurisdiction in this case is founded on diversity of citizenship under 28 U.S.C. § 1332, the issue of this Court's personal jurisdiction over JWS Ltd. is determined by the law of the state in which this Court sits, in this case New York. See Arrowsmith v. United Press Int'l, 320 F.2d 219 (2d Cir.1963) (Friendly, J.). The burden of establishing the court's jurisdiction "rests upon the party asserting it." Trafalgar Capital Corp. v. Oil Producers Equip. Corp., 555 F.Supp. 305, 308 (S.D.N.Y.1983) (citation omitted). Accord Lehigh Valley Indus., Inc. v. Birenbaum, 527 F.2d 87, 92 (2d Cir.1975); Bialek v. Racal-Milgo, Inc., 545 F.Supp. 25, 31 (S.D.N.Y.1982). Thus, Mayer "must show by the complaint and supporting affidavits the essential requirements of the jurisdictional statute." Lehigh Valley, supra at 92 (citations omitted).4
Additional facts relevant to the jurisdictional question are as follows. Wedgwood's operations in England are divided among a number of apparently autonomous wholly owned subsidiaries of plc, and its American operation involves a number of different locations. JWS Ltd. manufactures the china products. Products meant for export from England are then sold to Josiah Wedgwood & Sons (Exports) Ltd. ("Exports"), which then resells the America-bound china to JWS Inc. on terms F.O.B. factory. Exports does the shipping. The products sold to JWS Inc. are off-loaded in New Jersey and brought to JWS Inc.'s warehouse, which is also in New Jersey. Occasionally there is an emergency order which must be brought into the U.S. quickly. In such cases, JWS Inc. has the order flown in to Kennedy Airport in New York.
JWS Inc.'s warehouse and the bulk of its employees and offices are located in New Jersey. In its New York facility are its top executive officers, marketing and public relations executives, and a showroom.
JWS Ltd.'s activities in New York are extremely limited. JWS Ltd. does not itself advertise its products in the United States. All American promotion of...
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