they bear the prescribed notice." 17 U.S.C. § 405(a)(3).
Only the third exception need be addressed in detail. Section 405(a)(1) prevents the divestment of copyright in a work if "the notice has been omitted from no more than a relatively small number of copies . . . distributed to the public." 17 U.S.C. § 404(a)(1). No bright line has been established as to how many is a "relative few" but a review of the cases decided clarifies the issue.
Three thousand copies out of a total of 600,000 copies (0.5% of the total) was found to be no more than a relative few and copyright was not divested by the omission. E. Mishan & Sons, Inc. v. Marycana, Inc., 662 F. Supp. 1339 (S.D.N.Y. 1987). Likewise, the Eleventh Circuit found that 400 out of 40,000 copies (1.0% of the total) was no more than a relative few. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821 (11th Cir. 1982). Significantly, the Eleventh Circuit later found that 2,500 out of 102,500, or 2.4%, was more than a relative few. Donald Frederick Evans & Assoc. v. Continental Homes, Inc., 785 F.2d 897 (11th Cir. 1986). Furthermore, 710 out of 28,000 (2.54% of the total) was found to be more than a relative few. Wabash Pub. Co. v. Flanagan, 1989 U.S. Dist. LEXIS 3546, 10 U.S.P.Q. 2d (BNA) 1714 (N.D. Ill. 1989). There are also several cases which have found that omission of notice from 10.5% to 80.0% of the total number of copies amounted to more than a relative few. E.g., Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, 777 F.2d 485 (9th Cir. 1985); Lifshitz v. Walter Drake & Sons, Inc., 1989 Copyright L. Dec. (CCH) P 26,379 (N.D. Cal. 1988).
Plaintiff bears the burden to prove that less than a relative few of the total number of photos distributed were without a proper copyright notice. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548, 2552-53, 91 L. Ed. 2d 265 (1985); Princess Fabrics, Inc. v. CHF, Inc., 922 F.2d 99, 102 (2d Cir. 1990); House of Hatten, Inc. v. Baby Togs, Inc., 668 F. Supp. 251, 256 (S.D.N.Y. 1987). The evidence he has presented is inconclusive. However, this does not raise a sufficient factual issue to preclude summary judgment. It is permissible for this Court to draw a plausible inference in favor of the non-movant from the evidence presented. Anderson v. Liberty Lobby, 477 U.S. 242, 106 S. Ct. 2505, 2511-12, 91 L. Ed. 2d 202 (1986); see also WILLIAM W. SCHWARZER, ALAN HIRSCH, DAVID J. BARRANS, FEDERAL JUDICIAL CENTER, THE ANALYSIS AND DECISION OF SUMMARY JUDGMENT MOTIONS 61 (1991).
Plaintiff has presented evidence in his affidavit that, even if accepted as true, does not prove that less than a relative few of the distributed photos lacked a notice. Plaintiff asserts that he authorized defendant to mail the photo to "a few" friends. At argument on this motion, plaintiff's counsel conceded that it was reasonable for plaintiff to expect that defendant would mail the photo to at least 100 guests. Upon attending the opening, plaintiff observed about 100 guests; a number over which he has expressed no surprise or consternation. Thus it is reasonable to infer that plaintiff authorized defendant to mail the work to at least 100 invitees.
Plaintiff also alleges that he was given one hundred of the postcards to use. He alleges that he included a copyright notice on each of the postcards he sent out. However, he does not indicate how many of the postcards he sent out. Drawing a more than reasonable inference in favor of plaintiff-movant, he may have sent out all one hundred cards with notice.
Thus, viewing these facts in the light most favorable to Kakizaki, he sent out 100 copies with proper notice and he had authorized defendant to send to out 100 copies. Since 50% of the total copies mailed with the author's permission (100 by defendant plus 100 by plaintiff) did not contain proper notice, more than a relative few were distributed without proper notice. Therefore, § 405(a)(1) does not apply to save the copyright in the work.
Since none of the § 405(a) exceptions apply, plaintiff's copyright was divested by the general publication without notice of the photo to the limited audience of recipients of the invitation without any limits on the uses they could make of the photo.
Plaintiff's other claims are now considered. "State causes of action are 'equivalent' to the exclusive rights within copyright law, and are accordingly preempted by that statute, unless they are 'qualitatively different' from the rights granted under the Copyright Act." Wolff v. Institute of Elec. & Elecs. Eng'g, 768 F. Supp. 66 (S.D.N.Y. 1991) (cites omitted); see also 1 NIMMER, supra, § 1.01[B]. Courts' decisions, as well as Prof. Nimmer, make it clear that state-law claims which are based upon the unauthorized reproduction of a work are equivalent to claims for infringement under federal copyright law.
Plaintiff's unjust enrichment, misappropriation and conversion, and injury to reputation claims all flow from the alleged unauthorized use of the photo by defendant. The unjust enrichment, misappropriation and injury to reputation claims, while properly pleaded, are preempted by the copyright Act. Warner Bros. v. ABC, 720 F.2d 231 (2d Cir. 1983); Selmon v. Hasbro Bradley, Inc., 669 F. Supp. 1267 (S.D.N.Y. 1987); Editorial Photocolor Archives, Inc. v. Granger Collection, 61 N.Y.S.2d 964 (N.Y. 1984); Ehat v. Tanner, 780 F.2d 876 (10th Cir. 1985).
Plaintiff's conversion claim is simply inappropriate. Although conversion is actually a claim based on the physical taking of the property of another, plaintiff alleges that defendant's use of the photo by reproducing copies of it amounts to misappropriation and conversion. Thus, plaintiff is actually alleging that defendant infringed his copyright in his expression as embodied in the photo. Such an act on defendant's part is covered by the Copyright Act of 1976 and plaintiff's claim is therefore preempted. Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d Cir. 1983).
Summary judgment is granted to defendant on plaintiff's copyright infringement claim. Plaintiff's second claim for injury to reputation, third claim for misappropriation and conversion, and fourth claim for unjust enrichment, are dismissed.
Dated: December 15, 1992
New York, N.Y.
JOHN S. MARTIN, JR., U.S.D.J.