The opinion of the court was delivered by: Robert P. Patterson, Jr., District Judge.
This is an action for injunctive relief and damages alleging
copyright infringement. Seven of the defendants jointly move
to dismiss the Complaint for lack of subject matter
jurisdiction pursuant to Fed. R.Civ.P. 12(b)(1). For the
reasons set forth below, the motion is denied.
Plaintiff Elizabeth Marshall is a New York resident working
as a professional photographer under the name Bette Marshall.
Defendant New Kids on the Block Partnership (the "New Kids")
is a Massachusetts partnership doing business as a popular
music recording group. Defendant Dick Scott Enterprises is a
New York corporation which serves as manager of the New Kids.
Defendant Big Step Productions is a New York corporation which
owns the trademark to "New Kids on the Block." Defendants
Topps Company, Inc. and Unique Industries are Pennsylvania
corporations. Defendant Button Up is a Michigan corporation.
Defendant ASP Productions is a California corporation.
Defendant Penguin Books USA, Inc. is a New York corporation.
Defendant Bantam Books is a division of Bantam Doubleday Dell
Publishing Group, a New York corporation.
The Complaint alleges that on or about September 20, 1989
Ms. Marshall conducted a photo session in which she took
photographs of the members of the New Kids (the
"Photographs"). Ms. Marshall claims that she is the sole owner
of the copyright in the Photographs and that she has received
a certificate of registration for the Photographs from the
Register of Copyrights. Complaint ¶¶ 5, 17.
Photo Session, New Kids On The Block One Door
Poster, One 2X3 poster of group, One individual
poster Each Kid. Additional Posters to be
negotiated with Photographer. Photographs for
public relations, Tour Book and Fan Club. After
selection, pictures to be returned to Elizabeth
Marshall for Editorial Distribution. All Photos
used to be credited to BETTE Marshall. Additional
uses (including Albums. etc.) to be negotiated.
The reverse of the Invoice states in part:
REPRODUCTION RIGHTS: Reproduction rights are
conditioned on Photographers receipt of payment
in full and Client's proper use of copyright
notice. All rights not expressly granted herein
remain the exclusive property of Photographer.
Unless otherwise stated on the face of this
Agreement, duration of the License is one year
from Agreement date and limited to use in the
United States of America. Client may not sell,
assign or otherwise transfer the License, or any
rights or obligations under this License without
Photographer's prior written consent.
Marshall Aff., Exh. B. Ms. Marshall states that Mr. Wilford
paid the Invoice and never indicated that it did not
accurately reflect the license granted by her to the New Kids.
Marshall Aff. ¶ 4.
Ms. Marshall alleges that the Defendants have published and
displayed the Photographs in a manner which has infringed her
copyright. Complaint ¶ 21. She states that she has seen the
Photographs on the following New Kids items, none of which were
authorized by the license agreement: trading cards, the top of
display boxes for the trading cards, tablecloths, paper plates,
wallet cards, buttons, books, and posters. Marshall Aff. ¶ 7.
She also provides copies of pages from the book "Our Story: New
Kids On The Block" in which photographs credited to "Elizabeth
Marshall" appear. Marshall Aff., Exh. C.
Mr. Wilford offers a different version of the license
granted to the New Kids. He states that prior to September 20,
1989, he entered into an oral contract with Ms. Marshall (the
"Oral Contract") which gave the New Kids a much broader
license than that memorialized by the Invoice. The Oral
Contract permitted the New Kids to use the Photographs without
limitation for public relations, posters, products for the New
Kids fan clubs, and merchandising through the Winterland
Company.*fn2 Mr. Wilford states that all of the uses of the
Photographs complained of by Ms. Marshall were permissible
uses within the scope of the Oral Contract. Affidavit of Win
Wilford, sworn to on October 11, 1991 ("Wilford Aff.") ¶¶ 4-5.
Ms. Marshall has filed suit for copyright infringement,
(1) an order enjoining Defendants from future