Opinion
01 Civ. 8672 (LAK)
October 11, 2002
ORDER
Plaintiff formerly worked as an assistant to defendant, a prominent artist and photographer, and the two allegedly collaborated on two series of photographs that have received some critical acclaim. All went swimmingly for a time, but the parties had a falling out, and plaintiff has brought this action for a determination that he is the joint author of the two series within the meaning of the Copyright Act and for an accounting of their proceeds. Not content with such relief, however, he has asserted a grab bag of other claims, prompting defendant to move for partial summary judgment dismissing all but the joint authorship claim. The issues thus raised may be disposed of summarily.
1. Count 2 of the complaint purports to allege a claim under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), based on defendant's alleged exhibition of the photographs under his name alone, which is said to have been a false designation of origin in light of the parties' alleged joint authorship. Cpt. ¶ 51. Although such claims are a recent development and, in some respects, are narrowly limited, see, e.g., Weber v. Geffen Records, 63 F. Supp.2d 458, 463-64 (S.D.N.Y. 1999), this complaint is barely sufficient to state a cause of action. Whether plaintiff will be able to prove either "the requisite affirmative action of falsely claiming originality beyond that implicit in any allegedly false copyright" claim, likelihood of confusion, or any damages stemming from the allegedly false designation remains to be seen. Defendant's contention that plaintiff is obliged to demonstrate loss of "a definite amount of sales" (Def. Mem. 15) takes too narrow a view of the damages potentially available under Section 43(a). See 4 J. THOMAS McCARTHY, McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 27:43 (4th ed. 2002).
2. Count 3 alleges that defendant's exhibition of the photographs without Professor Patry has taken a different view in his treatise on the ground that it follows the rules for joint authorship of Section 106 rights. 2 WILLIAM F. PATRY, COPYRIGHT LAW AND PRACTICE 1028 (1994). To be sure, one joint author may not sue another for copyright infringement because each is regarded as having undivided ownership of the copyright and thus as having equivalent, nonexclusive rights to exploit it. See, e.g., United States Naval Inst. v. Charter Comms., Inc., 936 F.2d 692, 695 (2d Cir. 1991); Oddo v. Ries, 743 F.2d 630, 632-33 (9th Cir. 1984). But the policies underlying the VASA are not entirely congruent with those underlying the joint authorship and infringement provisions of the rest of the Copyright Act for the reason given in the text. attributing proper authorship to plaintiff violated Section 106A(a)(1)(A) of the Copyright Act, as amended by the Visual Artists Rights Act of 1990 (the "VARA"), 17 U.S.C. § 106A(a)(1)(A), and seeks both damages and an injunction.
The VARA, insofar as it is relevant here, gives an artist who creates a visual work the right to "demand that [the artist's] name be used in conjunction with a display of the work." 3 MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT § 8D.06[B][1] (2002). Plaintiff claims that defendant has violated the statute by exhibiting the photographs without proper attribution to him and seeks damages and an injunction.
Defendant argues that this claim must be dismissed because the statute permits waiver of rights thereunder by one of two or more coauthors. See 17 U.S.C. § 106A(e)(1). The theory is that defendant's display of the works with a claim of sole authorship amounted to a waiver of plaintiff's right of attribution.
This contention is unpersuasive despite the fact that Congress plainly meant for any one of two or more coauthors to bind the others by waiving attribution rights. It is one thing to say that a coauthor, who has rights of exploitation of a copyrighted work identical to those of all other coauthors, may allow a third party to exhibit without crediting any of the coauthors. It is quite another to say that one coauthor may defeat the attribution rights of co-creators while insisting on them for him — or herself. The statutory objectives of fairness for artists and increasing the accuracy of information about visual works of art, see H.R. REP. NO. 101-514, at 16 (1990), would be ill-served by such a peculiar construction of the Act. In any case, there is no suggestion that the formalities of Section 106A(e)(1) were complied with.
3. Count 4 is essentially a duplicate of Count 3 but is brought under N.Y. ARTS CULT. AFF. L. § 14.03, subd. 2 (McKinney Supp. 2002), which confers upon artists, inter alia, a right to claim ownership comparable to that conferred by the VARA. VARA, however, is part of the Copyright Act of 1976, Section 301(f)(1) of which provides in relevant part that "all legal or equitable rights that are equivalent to any of the rights conferred by [VARA] with respect to works of visual art to which the right conferred by section 106A apply are governed exclusively by section 106A and section 113(d) and the provisions of this title relating to such sections. Thereafter, no person is entitled to any such right or equivalent right in any work of visual art under the common law or statutes of any State." 17 U.S.C. § 301(f)(1). Plaintiff's vague claim that the state statute is not preempted by the VARA because it conceivably might be construed to provide greater and different relief is insufficient.
4. Count 5 asserts a claim for breach of a contract pursuant to which the parties allegedly agreed to be co-authors, to share the proceeds of the works, and that plaintiff would be acknowledged as a co-author.
Section 301 of the Copyright Act preempts state law claims that "seek to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright under 17 U.S.C. § 106." Archie Comic Pubs., Inc. v. DeCarlo, 141 F. Supp. d 428, 431 (S.D.N.Y. 2001). The claim of breach of contract by failure to co-authorship to plaintiff does not relate to a right already protected under 17 U.S.C. § 106 and therefore is not preempted. As plaintiff acknowledges, however, the alleged non-attribution is the only element that differentiates this claim from the copyright-based claim asserted in Count 1. (See Pl. Mem. 26-27) In consequence, the balance of the contract claim is preempted.
5. Count 6 alleges a claim for fraud based on the assertion that defendant did not intend to keep the promise he made to pay plaintiff part of the proceeds of the photographs. Breach of contract claims may not so easily be converted into claims for fraud. This one, like so many others, is patently insufficient because plaintiff alleges no facts sufficient to give rise to a strong inference that defendant, at the time he made the promise, did not intend to perform. See, e.g., Gurary v. Winehouse, 190 F.3d 37, 44 (2d Cir. 1999).
6. Count 7 purports to allege a claim for tortious interference with existing or prospective economic relations between plaintiff and non-parties. Defendant seeks its dismissal on the theory that the only wrongful conduct alleged is exploitation of the photographs without proper acknowledgment and that such a claim is preempted by the Copyright Act. It is not clear, however, that plaintiff's claim is so limited. Nor has defendant established the absence of a genuine issue of material fact as to the other elements of the claim. Accordingly, while this claim may well fail to survive a Rule 50 motion at the appropriate point, its dismissal now would be premature.
7. Counts 8 and 9, which purport to allege claims for unfair competition and unjust enrichment, respectively, based exclusively on the facts alluded to above, are efforts to repackage in common law garb the essence of the claims under the Copyright Act and the VARA. They are preempted by the Copyright Act.
Accordingly, defendant's motion for partial summary judgment dismissing the complaint is granted to the extent that Counts 4, 6, 8, 9 and so much of Count 5 as is indicated above are dismissed and otherwise denied.
SO ORDERED.