Ross v. CCS International Ltd.

Full title: Frank ROSS and Julietta VASSILKIOTI, Plaintiffs, v. CCS INTERNATIONAL LTD…

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

Date published: Dec 7, 2000

98 CV 4090 (RO) (S.D.N.Y. Dec. 7, 2000)

Opinion

98 CV 4090 (RO).

December 7, 2000.

Phillip H. Gottfried, Esq. Amster, Rothstein Ebenstein. New York, New York, Attorney for Plaintiffs

Emanuel R. Gold, Esq. Law Offices of Emanuel R. Gold. Forest Hills, New York, Attorney for Defendants.

OPINION AND ORDER

RICHARD OWEN, United States District Judge.

Defendant CCS International operates a store on Madison Avenue which sells high-tech security products and services. Defendant Counter Spy Shop is the consumer division of CCS which retails customized security systems. Plaintiffs Frank Ross (a photographer) and Julietta Vassilkioti (a model) have brought claims of copyright infringement, unfair competition, unjust enrichment and violations of the Lanham Act against defendants (collectively "CCS"). Plaintiff Ross moves this Court for partial summary judgement on the infringement claim only, pursuant to Fed.R.Civ.P. 56, for the Court to strike defendants' affirmative defenses, under Fed.R.Civ.P. 12(f), and for the Court to dismiss defendants' fraud, breach of contract. and Lanham Act counterclaims, as a matter of law.

The following are the basic undisputed and controlling facts. Plaintiff Ross and defendants arranged for him as a photographer to take promotional photographs. On October 23, 1993, Ross took the photographs, turning them over later to defendant. Defendants paid Ross for the photographs and used them in promoting its products. This arrangement was not a work for hire arrangement. Plaintiff signed a Model's Release ("Release") dated October 23, 1993, of which defendants are in possession. This form Release, normally used by a model running to the photographer, not the customer, reads:

RELEASE

In consideration of my engagement as a model, upon the terms herein after stated, I hereby grant [CCS] (filled in portion, not part of form), his legal representative and assigns, those for whom [CCS], is acting and those acting with his authority and permission, the absoluteright and permission to copyright and use, reuse and publish, and republish photographic portraits or pictures of me or in which I may be included, in whole or in part, or composite or distorted in character or form, without restriction as to changes or alterations made from time to time, in conjunction with my own or a fictitious name, or reproductions thereof in color or otherwise made through any media at his studio or elsewhere for art, advertising, trade, or any other purpose whatsoever.

I also consent to the use of any printed matter in conjunction therewith.

I hereby waive any right that I may have to inspect or approve the finished product or products or the advertising copy or printed matter that may be used in connection therewith or the use to which it may be applied.

I hereby release, discharge and agree to save harmless [CCS], his legal representatives or assigns, and all persons acting under his permission or authority or those for whom he is acting, from any liability by virtue of blurring, distortion, alteration, optical illusion, or use in composite for, whether intentional or otherwise, that may occur or be produced in the taking of said picture or in any subsequent processing thereof, as well as any publication thereof even though it may' subject me to ridicule. scandal, reproach, scorn and indignity.

I hereby warrant that I am of full age and have every right to contract in my own name in the above regard. I state further that I have read the above authorization, and release and agreement prior to its execution, and that I am fully familiar with the contents thereof. (Emphasis supplied.)

The particulars are disputed, but as I view it. they are essentially irrelevant and immaterial. Ross claims he verbally authorized CCS to use the photographs for their in-house catalogs and brochures only, but instead they have used the photos in an international advertising campaign without further compensating him or requesting his permission. Ross responds that he signed a blank release for the male model, John Guida, after the shoot and because CCS wanted a piece of paper before it would pay him, he gave it to CCS, and CCS subsequently filled in its own name without his permission. CCS, on the other hand, contends Ross filled in CCS on the Release, signed the release before the shoot, and told them the release transferred all his copyright interests in the photos to defendants, and that since he didn't have a "Photographer's Release," he would sign the "Model's Release" as a substitute. In her declaration, CCS's Marsha Jamil states that Ross represented to her that the Release conveyed "all rights to these photographs including the copyright." Ross disputes this conversation.

17 U.S.C. § 204(a) governs and requires any transfer of copyright ownership to be in writing and signed by the owner of the rights conveyed, so the crux of the arguments hinges on the legal effect the Release covers. Plaintiff argues that the plain language of the Release is legally insufficient to transfer Ross' copyright to defendants in pictures of models Vassilkioti and Guida. Within the four corners of the document, the language clearly pertains to Ross, whose copyright interests in pictures taken "of him" are released to a photographer and release the photographer from any liability; the language does not reflect a photographer granting his copyright interests to a purchaser. As such, plaintiff argues that this Release is at least ambiguous, if not invalid, as an instrument capable of transferring to defendants Ross' copyright interests as the photographer and that § 204(a) reflects Congress' policy choice that copyright owners should retain all rights unless specifically transferred. In support, plaintiff cites Papa's June Music, Inc. v. McLean, 921 F. Supp. 1154, 1159 (S.D.N.Y. 1995), which interpreted the writing requirement of § 204(a) as requiring the terms to be "clear," and quotes Effects Assoc., Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990), which states that "§ 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price)" Because of these legal requirements, plaintiff argues there has been no transfer or assignment of plaintiffs copyright interests since the Release is at best ambiguous as to whether plaintiff transferred his copyright interests as a photographer. Defendants, in turn, argue that the release unambiguously transfers Ross' copyright interest in the photographs, that plaintiff intended to transfer those rights, and that at the very least plaintiffs intent creates a factual dispute which should be resolved by a jury.

A plain reading of the Release reveals that Ross granted CCS "the absolute right and permission to copyright., photographic portraits or pictures of [him]," and that Ross "release[d], discharge[d], and agree[d] to save harmless CCS . . . from any liability by virtue of . . . any publication thereof." The only reasonable interpretation of this Release is that Ross, whatever else, did not transfer his copyright of the photographs at issue here since those photographs are not portraits of him, but photographs of others taken by him. Thus, the Release on its face grants CCS the right "to copyright" photographic portraits of Ross and does not contain language which can be read as a present transfer of Ross' copyright interest. Moreover, contrary to defendants contentions, the Release cannot be read as releasing CCS from liability for infringing use of photographs at issue here since Ross never modeled in any of those photographs.

Although defendants throughout their submissions maintained that the Release transferred Ross' copyrights to them, they raised a new legal argument at oral argument. Defendants argued that summary judgment should be denied because there is an issue of fact as to the extent of the "use" Ross granted defendants in his oral agreement allowing them to "use" the photographs for in-house catalogs and brochures only. However, Jamil's affidavit does not support this new argument. As just discussed, the Release does not authorize a "use" of the photographs at issue. Additionally, defendants' opposing affidavits do not address the specific agreement reached regarding the "use" of the photographs. Therefore, the only evidence regarding the oral agreement concerning the "use" of the photographs is Ross' affidavit, which states that the use he agreed to was for in-house catalogs and brochures only. As such, the defendants have not met their burden under Rule 56(e) to come forward with competent affidavits presenting a genuine issue for trial concerning any further extent to which the agreement authorizes defendants the "use" of the photographs. Accordingly, defendants' new legal argument, being without evidentiary support, cannot preclude summary judgment.

The Release being insufficient under § 204's writing requirement to transfer Ross' copyright in the photographs at issue, Ross retained his copyrights. and defendants have infringed, absent a defense. Turning to defendants' affirmative defenses, which plaintiff has moved for the Court to strike as insufficient under Fed R. Civ. P. 12(f), I dismiss with respect to the infringement action the following defenses raised by defendant: equitable estoppel, waiver, consent, acquiescence, abandonment, laches, and unclean hands.

To establish the equitable estoppel defense, defendants must show reasonable reliance which they assert is based on the Release itself and Ross' representation to Jamil that he was conveying to CCS all rights in the photographs including copyrights. But noting but not relying upon CCS' sophistication and access to legal advice, Schlaifer Nance Company v. Estate of Andy Warhol, 119 F.3d 91, 98 (2d Cir. 1197), § 204's requirement of a writing precludes CCS from relying on the foregoing as a basis to now claim ownership of his copyrights. Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990).

I also strike defendants' waiver, acquiescence, and consent defenses. Defendants contend that Ross "expressly waived any and all possible claims against defendants for their use of the photographs" by signing the Release and that Ross acquiesced to CCS' use of the photographs by not promptly asserting his copyright after becoming aware of defendants' use. However, waiver, acquiescence, and consent require an intentional relinquishment of rights, and a document that the statute requires be clear and specific cannot be made such by a statement by the recipient — right or wrong — that he was told it was such. Additionally, Ross' delay in asserting his copyright cannot be interpreted as an intentional relinquishment of that claim since mere delay in asserting rights is not an acquiescence or consent. Johanna Farms, 468 F. Supp. 866. 870 (E.D.N.Y. 1978).

Likewise, abandonment also requires more than mere inaction. To establish the abandonment defense, defendants must show "some overt act which manifests an intent to surrender rights in the copyrighted material." Dodd, Mead Co. v. Lilienthal, 514 F. Supp. 105. 108 (S.D.N.Y. 1981). Defendants contend that Ross manifested an intent to surrender his copyrights by continuing to work for CCS after becoming aware of its infringement does not lead to a conclusion that Ross has relinquished the copyright because in the need for income in the economic reality of the world he has accepted other work from CCS. Accordingly, I strike defendants' abandonment defense.

I also strike defendants laches and unclean hands defenses. These defenses also fall in the face of the statutorily required explicit transfer of copyright. Turning to defendants' fraud, breach of contract and Lanham Act counterclaims, I dismiss them as a matter of law. Since defendants' breach of contract and Lanham Act counterclaims are predicated on the Release adequately transferring to CCS Ross' copyright in the films taken in the shoot, my conclusions above that the Release, as a matter of law, does not so transfer the copyright invalidates these two claims. Defendants' fraud claims are made under New York law, which requires reasonable reliance. Schlaifer Nance, 119 F.3d at 98. Defendants' reliance on Ross' representations in the face of clearly contradictory language in the Release is unreasonable. Accordingly, I dismiss defendants' fraud claim.

Thus, even accepting defendants' evidence, and viewing the record in a light most favorable to them, I grant plaintiff Ross' motion for partial summary judgment on the infringement claim, declaring that the use of the photographs taken by Ross on October 23, 1993 beyond that of in-house catalogs is an infringement of Ross' copyright. Defendants' affirmative defenses and counterclaims are dismissed. The defendants are forthwith enjoined from any future use whatever of any photographs taken by Ross on October 23, 1993, other than for in house catalogs. The parties are to appear before me for a conference on December 22, 2000 in Courtroom 1106 at 2:30 p.m. to set a trial date on the issue of damages. Submit formal order on notice.