Schatt v. Curtis Management Group, Inc.

• Decision Date: 22 May 1991
• Docket Number: No. 91 Civ. 1098 (WCC).,91 Civ. 1098 (WCC).
• Citation: 764 F. Supp. 902
• Parties: Roy SCHATT, Plaintiff, v. CURTIS MANAGEMENT GROUP, INC.; James Dean Foundation Trust, et al., Defendants.
• Court: U.S. District Court — Southern District of New York

764 F. Supp. 902

Roy SCHATT, Plaintiff, v. CURTIS MANAGEMENT GROUP, INC.; James Dean Foundation Trust, et al., Defendants.

No. 91 Civ. 1098 (WCC).

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

May 22, 1991.

COPYRIGHT MATERIAL OMITTED

Bressler & Bressler, New York City (Martin Bressler, of counsel), for plaintiff.

Klineman, Rose, Wolf and Wallack, Indianapolis, Ind. (Dean T. Barnhard, of counsel), and Bower & Gardner, New York City (Laurence M. Shanahan and Alan G. Katz, of counsel), for Curtis Management Group, Inc.

OPINION AND ORDER

WILLIAM C. CONNER, District Judge.

Photographer Roy Schatt ("Schatt") brings this action¹ for damages and injunctive relief against defendants Curtis Management Group, Inc. ("Curtis"); the James Dean Foundation Trust (the "Foundation"); Advanced Graphics, Inc. ("Advanced"); Culture Shock Ltd. ("Culture"); and At-a-Boy based upon claims of copyright infringement, a violation of 15 U.S.C. § 1125(a) (the "Lanham Act"), and the New York's Artists' Authorship Rights Act, N.Y. Cultural Affairs Law Section 14.03 (the "Cultural Affairs Law").² Plaintiff also asserts a common law claim in tort against defendants for their alleged misrepresentations to licensees of defendant Curtis respecting the right of publicity in Dean. Defendants interpose a counterclaim in their answer to plaintiff's third amended complaint alleging that plaintiff fraudulently held himself out as the proprietor of all rights in and to the photographs of James Dean and thereby unjustly enriched himself at their expense. Defendants request declaratory and injunctive relief and demand the imposition of punitive damages for plaintiff's actions. Subject matter jurisdiction is conferred upon this Court by 28 U.S.C. §§ 1331, 1338(a), 1338(b), 15 U.S.C. § 1121, and personal jurisdiction of defendants is alleged under New York's "long-arm" statute, Section 302 of the New York Civil Practice Law and Rules.

This action is presently before the Court on defendants' motion for partial summary judgment pursuant to Rule 56(c), Fed.R. Civ.P. on plaintiff's claims brought under the Copyright Laws and the Cultural Affairs Law. The Court also considers plaintiff's cross-motion for partial summary judgment pursuant to Rule 56(c) on his claim under the Lanham Act and his related motion to strike defendants' counter-claim under Rule 12(b)(6).

The Court's consideration of the aforementioned motions follows a two-day hearing held on December 10-11, 1990 on plaintiff's motion for a preliminary injunction whereby he sought to enjoin defendants from licensing or disseminating products which allegedly incorporate reproductions of plaintiff's photographs of James Dean. The two-day hearing was terminated by the Court with the consent of the parties so that an expedited trial could be held on the merits beginning June 10, 1991.

BACKGROUND

Plaintiff Roy Schatt is a well-known New York photographer, some of whose photographs have become widely recognized. A book of his photographs of the late actor James Dean ("Dean") was published in 1982 entitled JAMES DEAN: A PORTRAIT (the "Book"). Copyright protection in the Book and in all of the illustrations therein was obtained in plaintiff's name on August 23, 1982. The photographs were taken of Dean during a nine-month period beginning in 1954 when Dean was a photography student of Schatt. A collection of these photographs later became known as the "torn sweater" series for their distinctive character and poses. A number of the photographs appearing in the Book were taken by Dean himself while he was under the tutelage of plaintiff. These photographs are identified accordingly in the Book.

The Foundation, formed by Dean's heirs to safeguard and market the right of publicity in the late actor, operates through its agent, defendant Curtis, to market the name, voice, signature, photograph and likeness of James Dean throughout the world. Beginning sometime after 1985, the Foundation, through Curtis, entered into licensing agreements with a number of third parties for the purpose of marketing its professed right of publicity in James Dean.³ The list of licensees included defendants Advanced, a California poster manufacturer; Culture, a London-based publisher and distributor of calendars; and At-a-Boy, a California manufacturer of wall magnets. Pursuant to their agreements, defendant licensees manufactured products which incorporated reproductions of one or more of plaintiff's photographs of Dean. Answer, ¶ 21. The posters, calendars, and magnets produced by defendants were in some instances altered copies of plaintiff's original work. In no case was plaintiff acknowledged as the originator of the photographs. Plaintiff claims that in the summer of 1990, he first noticed that many of his photographs of Dean which appeared in the Book were being reproduced without permission and without attribution by defendants pursuant to the arrangements described above. Virtually all of these reproductions carried a notice of copyright in the name of the Foundation and acknowledged "Curtis Management Group" as the licensing agent. Plaintiff's Memorandum, at 2. This lawsuit was initiated soon thereafter.

DISCUSSION

A. SUMMARY JUDGMENT

The Standard for Summary Judgment

A party seeking summary judgment must demonstrate that "there is no genuine issue as to any material fact." Fed.R. Civ.P. 56(c); Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir.1986), cert. denied, 480 U.S. 932, 107 S.Ct. 1570, 94 L.Ed.2d 762 (1987); see Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Electrical Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). It must establish that there is a "genuine issue for trial." Id. at 587, 106 S.Ct. at 1356. "In considering the motion, the court's responsibility is not to resolve disputed issues of fact but to assess whether there are any factual issues to be tried, while resolving ambiguities and drawing reasonable inferences against the moving party." Knight, 804 F.2d at 11. The inquiry under a motion for summary judgment is thus the same as that under a motion for a directed verdict: "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 2512, 91 L.Ed.2d 202 (1986).

(1) Defendants' Motion for Summary Judgment on Claims Brought under the Copyright Laws and the Cultural Affairs Law.

(a) Schatt's standing to sue.

Defendants argue that all possessory and proprietary interests in the photographs at issue, including common-law copyrights and the rights to obtain statutory copyrights, belong to Life magazine by reason of plaintiff's dealings with the publication. Alternatively, defendants argue that such rights vested in James Dean as the subject of the photographs. In either scenario, defendants conclude that plaintiff has no standing to bring this lawsuit.⁴ In support of their claim, defendants draw the Court's attention to the holding in Lumiere v. Robertson-Cole Distributing Corp., 280 F. 550 (2d Cir.1922), cert. denied, 259 U.S. 583, 42 S.Ct. 586, 66 L.Ed. 1075 (1922) in which a photographer was denied any right of copyright in photographs he had taken because a third party had engaged the services of the photographer on behalf of the subject and the photographer was paid for the photographs and his services in taking them.

Defendants' effort to apply the holding in Lumiere to the facts here is at best premature. The Court recognizes the general principle that where a party commissions specific work by a photographer, the right to the copyright in the underlying photographs resides with the commissioning party. Lumiere, at 553. However, the preliminary issue of whether Life magazine commissioned the photographs or paid Schatt a fee for a "first look" at plaintiff's work remains a triable question of fact that must be resolved before the holding in Lumiere may be applied here.⁵

Similarly, the factual discrepancies surrounding James Dean's dealings with plaintiff must be reconciled before the Court can consider the applicability of the principle that where a subject comes to a photographer and induces the creation of photographs, the right of copyright "is in the sitter ... and it is not in the photographer." Lumiere, 280 F. at 553. The Court has yet to resolve the factual ambiguity surrounding the relationship between Roy Schatt and James Dean. It is not clear that Schatt and Dean's interaction in the 1950s evidenced a photographer/customer relationship rather than some less formal interchange. This issue remains contested and cannot be resolved on defendants' motion for summary judgment.

(b) Abandonment or forfeiture of Schatt's claim to copyright.

Having denied defendant's preliminary challenge to plaintiff's standing to sue, the Court turns to defendants' claim that to the extent plaintiff ever had enforceable copyrights in the subject photographs, they have been abandoned due to failure to enforce or forfeited due to failure to renew.

(1) Abandonment.

Defendants assert that plaintiff's conduct and testimony compel a holding that plaintiff has "abandoned" his copyright in the James Dean photographs. The "abandonment" of a copyright, as distinguished from its "forfeiture", turns on the state of mind of the copyright proprietor and will occur whenever he engages in "some overt act which manifests his purpose to surrender his rights in the work and to allow the public to copy it." National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594, 598 (2nd Cir.1951). Here, defendants claim to find in plaintiff's testimony a...