Opinion
50605, 16670-05.
Decided April 11, 2006.
Counsel for Plaintiff, Simmons, Jannace Stagg, LLP, Syosset, New York.
Counsel for Defendant, Agon Sports, LLC, Nashville, TN.
Plaintiff Roland Schoeman ("Schoeman") moves for a preliminary injunction enjoining Defendant Agon Sports, LLC ("Agon") from publishing, sending or, in any way, disseminating or trading on his image or likeness in any catalogue, advertisement, website or any other medium.
Plaintiff also seeks an order directing Agon to recall and retract all catalogues and/or publications containing his image, mailed, sent or disseminated in or after 2005 and remove any image of him contained on their website.
BACKGROUND
As a world renowned Olympic and World Champion swimmer for South Africa, who holds various world records, Schoeman is a well recognized figure in the world of international competitive swimming. As such, he derives a substantial portion of his livelihood through endorsements and advertisements.
Agon is a manufacturer of custom swimwear. It markets and solicits the sale of its products through advertisements and catalogues, extensively within the State of New York.
In 2003, Agon approached Schoeman to model its swimwear in its 2004 catalogue. An agreement was reached for that purpose. No further use of Plaintiff's image was discussed or agreed to. Nevertheless, Agon again used Schoeman's photograph in its 2005 catalogue.
In February 2005, a letter was sent to Jennifer Edison Escalas, an officer of Agon, stating that the agreement to use Schoeman's image had expired and that Agon should cease and desist from its further use.
On April 29, 2005, Plaintiff's attorney spoke with Agon's CEO, Rafael Escalas ("Escalas") who acknowledged receipt of counsel's earlier letter and confirmed that Agon would not use Plaintiff's image or likeness any further. Escalas further represented that it had not submitted Plaintiff's image for any current publication or advertisement and would not in the future. Such promise included Agon's website. That representation was again confirmed by Agon's counsel in August 2005.
DISCUSSION
A. Preliminary Consideration
Civil Rights Law § 51 affords an absolute right to injunctive relief for the unauthorized use of a person's image or likeness regardless of the relative damage to the parties. Onassis v. Christian Dior-New York, Inc., 122 Misc 2d 603 (Sup.Ct. NY Co. 1984), aff'd., 110 AD2d 1095 (1st Dept. 1985). See also, Durgom v. Columbia Broadcasting System, Inc., 29 Misc 2d 394, 396 (Sup.Ct. NY Co. 1961), where the court held:
"Regardless of what the equities of the situation may be and the damage to Defendants from the granting of the injunction, a denial of injunctive relief for a conceded violation of the statute [Civil Rights Law § 51] would emasculate the provisions of injunctive relief and cannot be justified."
While Onassis and Durgom suggest that a traditional analysis of the three prong test for a preliminary injunction can be avoided, other cases apply such analysis in determining whether a preliminary injunction should be granted. See, e.g., Herink v. Harper Row Publishers, Inc., 607 F. Supp. 657, 660 (S.D.N.Y. 1985) (applying likelihood of success analysis).
Thus, to assure a complete analysis of the issues presented on this motion, the Court will analyze the irreparable harm, likelihood of success on the merits and balancing of the equities of Plaintiff's claim for a preliminary injunction.
B. Legal Standard
The party seeking a preliminary injunction must establish (1) a likelihood of success on the merits; (2) the plaintiff will suffer irreparable harm in the absence of an injunction; and (3) a balancing of the equities favors the granting of an injunction. Aetna Ins. Co. v. Capasso, 75 NY2d 860 (1990); Doe v. Axelrod, 73 NY2d 748 (1988); W.T. Grant v. Srogi, 52 NY2d 496 (1981); and Olabi v. Mayfield, 8 AD3d 459 (2nd Dept. 2004).
A preliminary injunction may be issued to preserve the status quo pending a full hearing on the merits of the action. Olympic Tower Condominium v. Cocoziello, 306 AD2d 159 (1st Dept. 2003); and Livas v. Mitzner, 303 AD2d 381 (2nd Dept. 2003).
A preliminary injunction will be granted only if there is a clear right to the relief upon the law and the undisputed facts. Peterson v. Corbin, 275 AD2d 35 (2nd Dept. 2000); and Carman v. Congregation De Milta of New York, Inc., 269 AD2d 416 (2nd Dept. 1992).
1. Likelihood of Success on the Merits
Schoeman's application is predicated on Agon's violation of Civil Rights Law §§ 50 and 51.
In order to establish liability for invasion of the right to privacy under New York's Civil Rights Law, the Plaintiff must demonstrate four elements; to wit: the defendant (1) used the plaintiff's picture for advertising or trade purposes (2) within New York (3) without Plaintiff's consent and (4) there was a direct and substantial connection between the appearance of plaintiff's name or likeness and the main purpose and subject of the work. Civil Rights Law §§ 50 and 51. See, Molina v. Phoenix Sound Inc., 297 AD2d 595 (1st Dept. 2002); and Cohen v. Herbal Concepts, 63 NY2d 379 (1984). See also, D' Andrea v. Rafla-Demetrious, 972 F. Supp. 154 (E.D.N.Y. 1997), aff'd., 146 F.3d 63 (2nd Cir. 1998).
The purpose of using Schoeman's picture was indisputably for advertising or trade. Schoeman, an Olympic gold and silver medalist swimmer, is well recognized within the international swimming community as a result of his great success and prowess in his sport. Defendant's catalogue is a publication used for the sole purpose of selling swimming apparel. Agon has admitted using Plaintiff's picture in its 2005 catalogue. Thus, Plaintiff's picture was directly and substantially used to increase sales of Agon's swimming apparel and, ultimately, generate profits. The fact that the product being sold is swimming apparel and that Plaintiff is a world renowned swimmer establishes that there is a direct and substantial connection between the use of Plaintiff's picture and the main purpose of the work.
Defendant's catalogue is primarily distributed within the State of New York, satisfying the second element.
Civil Rights Law §§ 50 and 51 apply to any use of a person's picture or likeness for advertising or trade purposes whenever the Defendant has not obtained the person's written consent to do so. It would, therefore, apply in cases where the plaintiff generally seeks publicity, for commercial purposes but has not given written consent for a particular use. Stephano v. News Group Publications, Inc., 64 NY2d 174, 183 (1984). See, gen'lly, Welsh v. Mr. Christmas, Inc., 57 NY2d 143 (1982). Schoenman, who has consciously sought to establish publicity value for his persona and likeness cannot be exploited by Agon without his consent or due compensation. Srephano v. News Group Publications, supra. See also, Haelen Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2nd Cir.), cert. den., 346 U.S. 816 (1953).
It is undisputed that Plaintiff did not give Defendant consent to use his image or likeness in the Agon 2005 catalogue. Originally, in 2003, he did give his consent for the 2004 catalogue but nothing more. Plaintiff's consent expired in 2004. On or about February 14, 2005, Plaintiff's attorney sent a letter to Jennifer Escalas of Agon, demanding that Defendant cease and desist from any further use of his image in any manner whatsoever. Thus, it was patently clear to Agon that Plaintiff did not consent to Defendant's continued use of his image beyond the 2004 catalogue.
Although the prohibition against the use of one's likeliness without their consent is clear, New York courts "have been reluctant to impose liability under §§ 50 and 51 for incidental' use of a person's name or image, because of the danger of impos[ing]' an un-called for burden and hazard' on publishers." Netzer v. Continuity Graphic Assocs., Inc., 963 F. Supp. 1308, 1326 (S.D.NY 1997) quoting, Damron v. Doubleday, Doran Co., 133 Misc. 302, 303 (Sup.Ct. NY Co. 1928), aff'd., 226 A.D. 796 (1st Dept. 1929) and aff'd 226 A.D. 796, 234 N.Y.S. 774 (1st Dept. 1929). See, Costanza v. Seinfeld, 279 AD2d 255 (1st Dept. 2001); and D'Andrea v. Ralfa-Demetrious, supra. "Isolated" or "fleeting and incidental" uses of a person's name or image, even if unauthorized, are insufficient to establish an invasion of privacy claim. University of Notre Dame Du Lac v. Twentieth Century-Fox, 22 AD2d 452 (1st Dept. 1965).
Such exception is inapplicable here. The use of Plaintiff's picture was not "incidental" or "isolated". Schoeman's picture was directly related to the purpose of the catalogue. Even after written demand was made to cease and desist its unauthorized use, Agon used Plaintiff's picture for the purpose of selling its sports apparel.
Therefore, under Civil Rights Law §§ 50 and 51, Schoeman has demonstrated a likelihood of success on the merits of the case.
2. Irreparable Harm
It is undisputed that Schoeman's identity was impermissibly misappropriated for the purposes of trade and advertising. Therefore, he has suffered harm. However, the relief cannot be as broad as he seeks.
Advertisements that have already been published are not subject to recall as a form of relief based on a violation of Civil Rights Law § 51. Onassis v. Christian Dior-New York, supra; and Albert v. New York Tel. Co., 28 Misc 2d 296 (Sup.Ct. NY Co), aff'd., 11 AD2d 656 (1st Dept 1960). However, pursuant to § 51, plaintiffs who claim they have been damaged by the publication of the advertisement can pursue compensatory and punitive relief at trial. Id.; Welsh v. Mr. Christmas Inc., supra at 150.
Section 51 of the Civil Rights Law provides that "the jury in its discretion, may award exemplary damages" if it be can be shown that "the defendant shall have knowingly used such person's name, portrait or picture." Welch v. Mr. Christmas, Inc., Id. In order to recover exemplary damages under the statute no more needs to be established than the knowing use of the picture. Brinkley v. Casablancas 80 AD2d. 428 (1st Dept. 1981).
In this case, Schoeman, as a public figure, can estimate the fair monetary value of the use of his image and pursue these legal forms of relief without resorting to the recall of the catalogues already distributed.
Agon has already distributed the 2005 catalogues with Schoeman's picture in it. The recall of all of the catalogues distributed, many of which have been delivered to private residences, would be nearly impossible. Directing and enforcing a recall and retraction will place an unacceptable financial burden on Defendant, especially where Plaintiff can be fully compensated monetarily. Therefore, this branch of injunctive relief, seeking the recall of the 2005 Agon catalogue, must be denied.
With respect to Agon's prospective use of Schoeman's picture, an injunction barring its further use must be granted. Civil Rights Law §§ 50 and 51 affords any person the right to be protected from his picture being used for advertising or trade purposes without his consent. To allow Agon to continue to use Schoeman's picture in the future would violate his right to privacy. There can be no doubt but that as a world class athlete, Schoeman has a limited amount of the time in which he will remain an elite competitor and in the public eye. Thus, he has an absolute right to determine how to best exploit his talent and renown. Neither Agon nor anyone else should be permitted to deprive Schoeman of this well-earned right.
C. Undertaking
"Prior to granting of a preliminary injunction, the plaintiff shall give an undertaking in an amount to be fixed by the court, that the plaintiff, if it is finally determined that he or she was not entitled to an injunction, will pay to the defendant" CPLR 6312(b).
In the face of Agon's admitted knowledge that Schoeman withdrew his consent to the use of his image and likeness, it seems unlikely that the injunctive relief granted herein will be found to be improvident. However, since establishing an undertaking is mandatory to prevent an injunction from being voidable ( Guliano v. Carlisle, 236 AD2d 364 [2nd Dept. 1997]), the Court sets an undertaking in the sum of $1,000.
Accordingly, it is, ORDERED, that the Plaintiff's motion for an injunction enjoining Agon from publishing, transmitting or, in any way, disseminating Plaintiff's picture, image or likeness, in any print, electronic or any other medium including but not limited to catalogues, websites and advertising Agon is directed to forthwith remove Plaintiff's image and likeness and any mention of Plaintiff in all advertising, promotions and its website is granted; provided that, within fifteen (15) days of the date of this order, Plaintiff posts an undertaking in the sum of $1,000 with a surety, by depositing such sum with the Nassau County Clerk or depositing such sum in an interest bearing escrow to be established and maintained by counsel for Plaintiff, subject to further order of this Court; and it is further, ORDERED, that counsel for the parties shall appear for a conference before this Court on May 15, 2006 at 9:30 A.M.
This constitutes the decision and order of the Court.