Peker v. Masters Collection

• Decision Date: 16 May 2000
• Docket Number: No. 98 CV 0672.,98 CV 0672.
• Citation: 96 F.Supp.2d 216
• Parties: H.E. Elya PEKER, and Katrina Peker, Plaintiffs, v. MASTERS COLLECTION, Defendants.
• Court: U.S. District Court — Eastern District of New York

96 F.Supp.2d 216

H.E. Elya PEKER, and Katrina Peker, Plaintiffs, v. MASTERS COLLECTION, Defendants.

No. 98 CV 0672.

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

May 16, 2000.

H.E. Elya Peker and Katrina Peker, Brooklyn, NY, pro se.

Robert Haroun, New York City, for defendant.

MEMORANDUM AND ORDER

NICKERSON, District Judge.

Plaintiffs H.E. Elya Peker ("Elya") and Katrina Peker, pro se, bring this action for copyright infringement against defendant Masters Collection ("Masters"). Plaintiffs' complaint alleges that Masters infringed Elya's copyright when it used posters of one of Elya's paintings to create an oil painting replica that was sold through catalogs and over the Internet. Both parties have moved for summary judgment pursuant to Federal Rule of Civil Procedure 56.

I

The record, in substance, shows the following.

Plaintiff Elya is an artist whose oil paintings include "Flowers in Basket," "Big Bouquet of Flowers on Marble Table" ("Big Bouquet"), and "Flowers in Jug." He registered the copyright for these oil paintings on January 19, 1990.

Defendant Masters is a retail business that, among other things, purchases poster prints of paintings and resells them as framed oil painting replicas after adding paint to the poster to replicate the painting.

In 1991, Elya entered into a licensing agreement with Galaxy of Graphics, Ltd. ("Galaxy"), a graphics distributor company that makes and sells poster prints, granting it reproduction rights to produce posters of several of Elya's "paintings," including "Flowers in Basket," "Big Bouquet," and "Flowers in Jug." In return for the license, Elya received an advance of $250 for each "painting" used to make posters and a 10% royalty on each poster print sold.

Between March 1993 and October 1994, Masters purchased from Galaxy at least twenty-one poster prints of "Flowers in Basket," paying $4.50 or $5.00 for each print. The record also shows that Masters purchased at least six poster prints of "Flowers in Jug" and three of "Big Bouquet" between December 1991 and January 1992, paying $7.50 for each print.

To make each oil painting replica, Masters treats a poster with a thin coat of acrylic paint, allowing the poster's ink layer to be separated from its paper backing without ruining the image. The acrylic layer, now bearing the poster's ink image is then mounted on a canvas. Once mounted, Masters employs specially trained artists to apply oil paint in brush strokes to the image, attempting to match the color and style of the original painting. After applying the brush strokes, a thin veneer of protective varnish is applied, similar to the type of varnish used for oil paintings. The new oil painting replica, complete with tangible "bumps" where the paint has been applied, is then placed in a museum-quality frame and sold.

According to the record, Masters marketed the "Flowers in Basket" replica painting for up to $379. Defendant represents that it sold fifteen replica paintings of "Flowers in Basket" at different prices, ranging up to $322.15. The record also shows that Masters sold at least two such paintings of "Big Bouquet" for $199 and $189. Gregory Panjian, the president of Masters, states in a sworn affidavit that no other posters of Elya's paintings were "used" besides "Flowers in Basket," "Big Bouquet," and "Flowers in Jug."

II

Under Rule 56 of the Federal Rules of Civil Procedure, the moving party is entitled to summary judgment "if 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).

The substantive law governing the case will determine those facts that are material, and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Summary judgment is warranted only if "the evidence is such that a reasonable jury could not return a verdict for the nonmoving party." Id.

Moreover, "the inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion." Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986).

III

Because plaintiffs are pro se, this Court has read their "supporting papers liberally, and will interpret them to raise the strongest arguments that they support." Burgos v. Hopkins, 14 F.3d 787, 790 (2d Cir.1994).

Plaintiffs' complaint alleges that Masters infringed Elya's copyright in his "painting," "Flowers in Basket." Elya has moved to amend his complaint to include other paintings. This motion will be discussed in the next section.

To establish a claim for copyright infringement, a plaintiff must show both (1) ownership of a copyright and (2) that defendant engaged in unauthorized "copying," which is shorthand for any infringement on one of the copyright owner's exclusive rights as defined under 17 U.S.C. § 106. See Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992); Microsoft Corp. v. Harmony Computers & Electronics, Inc., 846 F.Supp. 208, 210 (E.D.N.Y.1994).

Because Elya has submitted a certificate of copyright registration of his paintings, which serves as prima facie evidence of valid copyright ownership, Rogers, 960 F.2d at 306, the only issue is whether Masters "copied" Elya's painting in violation of his exclusive rights to (1) "reproduce the copyrighted work in copies" and (2) "prepare derivative works based upon the copyrighted work." 17 U.S.C. § 106(1) and (2).

To show that a defendant has "reproduced" a copyrighted work without authorization, a plaintiff must establish that the defendant had access to the copyrighted work and that there is a "substantial similarity between the copyrighted work and the alleged infringement." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992). "Substantial similarity does not require literally identical copying of every detail." Rogers, 960 F.2d at 307. The necessary degree of similarity is established if "`an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.'" Id. (quoting Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966)).

Masters without question had access to Elya's painting "Flowers in Basket" and used a copy of the painting in its replication process. There is also no question that Masters' oil painting replicas are "substantially similar" to Elya's copyrighted painting. An inspection of one of defendant's "Flowers in Basket" replicas submitted by defendant confirms that its replication process creates a convincing copy of the original oil painting. The replica is covered with numerous visible brush strokes and has the texture of an oil painting. A close and careful inspection reveals that some parts of the painting are not covered with brush strokes. The copying is blatant, and no average attentive lay observer would fail to recognize defendant's appropriation of Elya's work. See Rogers, 960 F.2d at 307-08; Steinberg, 663 F.Supp. at 712-14.

Masters treats the case as if it were selling merely framed posters and fails to mention throughout its papers that its replication process involves applying paint in brush strokes. It explains only that it transfers an image from a poster to a canvas, applies to the image a clear resin, and then re-sells the product in a museum-quality frame. From this description, one might conclude that Masters was in the business of selling fancy framed posters and not oil painting replicas.

But defendant's description is plainly misleading and is inconsistent not only with this Court's inspection, but also with defendant's own brochures, which claim that "[Masters'] artisans are carefully trained to recreate the brushwork of the different styles of paintings we offer. This attention to detail is what makes a replica from [Masters] virtually indistinguishable from the original oil painting masterpiece."

Even if not "virtually indistinguishable," defendant's replica is a convincing copy of Elya's painting and has been made without Elya's permission.

Masters Collection argues that it did not engage in unauthorized "reproduction" because (1) its replication process requires the purchase and use of one poster for each replica and (2) the "first sale doctrine," as codified in 17 U.S.C. § 109, protects its use and sale of each lawfully acquired poster.

Neither of these arguments apply to this case. Masters is not reselling a poster. It is selling a painting that uses the poster as one ingredient. The "first sale" of the poster gives Masters the right to sell the poster in whatever fancy frame or other setting Masters chooses. What that "first sale" of the poster does not sanctify is Masters' transmogrification of that poster by adding paint into what Masters describes as a "virtually indistinguishable" copy of the "original oil painting."

The falsity of Masters' contentions is made evident by C.M. Paula Co. v. Logan, 355 F.Supp. 189 (N.D.Tex.1973), on which Masters relies.

The plaintiff in Logan owned the copyright to artwork used in greeting cards that it produced, and brought suit against the defendant for unauthorized copying. See Logan, 355 F.Supp. at 190. The defendant purchased plaintiff's greeting cards at retail stores, and used a transfer process that lifted the artwork images from the cards and mounted them on ceramic plaques. See id. After mounting an image, the defendant coated the surface with a transparent substance to protect the image and give it a "glazed or crackled appearance." Id. Defendant then re-sold the ceramic plaques. See id.

The District Court found that no unauthorized copying occurred and characterized as being...