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NOBLE v. GREAT BRANDS OF EUROPE

December 17, 1996

RICHARD NOBLE, Plaintiff, against GREAT BRANDS OF EUROPE, INC., TBWA CHIAT/DAY, INC., Defendants.


The opinion of the court was delivered by: SCHEINDLIN

 SHIRA A. SCHEINDLIN, U.S.D.J.

 Defendants Great Brands of Europe, Inc. ("Great Brands") and TBWA Chiat/Day ("TBWA") (together, "Defendants") move to dismiss Plaintiff Richard Noble's ("Noble") Complaint *fn1" for lack of subject matter jurisdiction and for failure to state a claim upon which relief can be granted. See Fed. R. Civ. P. 12(b)(1), 12(b)(6). For the reasons discussed below, the motion is granted in part and denied in part.

 I. Legal Standard

 In evaluating a motion to dismiss, a court must accept as true all factual allegations in the complaint. See Cohen v. Koenig, 25 F.3d 1168, 1171-72 (2d Cir. 1994). The court must also draw every reasonable inference in favor of the non-moving party. See Allen v. WestPoint Pepperell, Inc., 945 F.2d 40, 44 (2d Cir. 1991). Additionally, a court may not dismiss a complaint unless "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46, 2 L. Ed. 2d 80, 78 S. Ct. 99 (1957).

 II. Factual Background2

 Noble is a professional photographer and a citizen of Florida. Great Brands is a corporation headquartered in White Plains, New York and TBWA is an advertising agency based in Manhattan. Affidavit of Richard Noble ("Noble Aff.") at 1. Noble had been retained by TBWA to create photographic images for the purposes of advertising Evian bottled water, a Great Brands product. Id. After Noble had created the photographs, *fn3" he and TBWA entered into a licensing agreement, which required TBWA to pay Noble a fixed fee for permission to use the images in advertisements within the United States. Id. The fee was paid and the images were utilized in Evian advertisements in the United States. Id.

 Subsequently, around the end of September 1995, TBWA contacted Noble about using the images in an advertising campaign in Russia and Finland. Noble advised TBWA that his fee for using the images outside the U.S. would be $ 10,000, but TBWA rejected this proposal. Noble Aff. at 1. On November 20, 1995, TBWA nevertheless executed a purchase order for $ 10,000, proposing to use the images in Russia and Finland on behalf of Great Brands/Evian. Affidavit of Richard Goldman, Controller of TBWA ("Goldman Aff."), Exhibit ("Ex.") A. Noble invoiced TBWA for the $ 10,000 usage fee on November 30, 1995. After hearing nothing, Noble called TBWA to request the payment of $ 10,000 and was advised that TBWA had decided not to use the images. Noble asked that TBWA send him written confirmation that the images had not been used. On February 13, 1996, TBWA faxed Noble a letter cancelling its November 20, 1995 purchase order. Noble Aff., Ex. 1. However, the letter failed to confirm that Noble's images had not been used. Id. Noble wrote to TBWA on February 15, 1996, again requesting confirmation that the images were not used, but TBWA did not respond to Noble's request.

 Noble subsequently learned that the images had, in fact, been used in Finland and in Russia. Noble Aff., Ex. 2. Additionally, Noble discovered that TBWA had paid two modeling agencies, whose models appeared in the photographic images, a fee for the use of the images in Finnish and Russian magazines. Noble Aff., Ex. 4. *fn4" Noble alleges that he had licensed the images solely for use in the United States. Further, Noble points out that Great Brands placed its own copyright notice on his photographic image which appeared in the December, 1995 Russian edition of Cosmopolitan. Noble Aff., Ex. 2. Noble also asserts that TBWA had no rights in his images, other than a right of limited usage granted in the original licensing agreement, restricting the use of the images to publications in the United States.

 III. Discussion

 A. Subject Matter Jurisdiction under the Copyright Act *fn5"

 The district courts have exclusive and original jurisdiction over claims "arising under" the Copyright Act. 28 U.S.C. ยง 1338(a). *fn6" However, federal jurisdiction does not attach to a claim involving only the breach of a copyright agreement or the ownership of a copyright, because such a claim does not "arise under" the Copyright Act. See Schoenberg v. Shapolsky Publishers, Inc., 971 F.2d 926, 931 (2d Cir. 1992); T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964), cert. denied, 381 U.S. 915, 14 L. Ed. 2d 435, 85 S. Ct. 1534 (1965). Therefore, in determining whether a claim involving copyright infringement "arises under" the Copyright Act, a court must carefully scrutinize the claim in order to ensure that there exists a serious question of infringement, and not merely an issue of contract interpretation.

 Noble alleges that he owns the copyright in the photographic images and that the Defendants illegally exploited the images. In short, he claims that TBWA, instead of negotiating a contract for foreign use, published the images in flat disregard of his rights. There is no contractual dispute here. The fact that Noble's complaint demands monetary damages and asks that the Defendants be enjoined from further publishing, selling or otherwise using his images also leans in favor of a finding that the infringement claim arises under the Copyright Act. See Schoenberg, 971 F.2d at 931 ("because [plaintiff] is seeking damages for the alleged infringement as well as an injunction against future infringements, his complaint on its face asserts a claim 'arising under' the Copyright Act."). Noble's allegation of copyright infringement and his request for an injunction are a sufficient basis for this Court's exercise of jurisdiction.

 Defendants' attempt to portray the copyright infringement claim as nothing more than a simple contract dispute is misplaced. See Supplemental Memorandum of Law in Support of Defendants' Motion to Dismiss at 2. It is true that district courts in this circuit have not hesitated to dismiss complaints alleging copyright infringement that are in reality breach of contract claims. See, e.g., Hanna-Barbera Prods., Inc. v. Screen Gems-EMI Music Inc., 829 F. Supp. 67 (S.D.N.Y. 1993) (because no copyright issues will remain after contracts are interpreted, the claim does not arise under the Copyright Act); Lukasewych v. Wells, Rich, Greene, Inc., 747 F. Supp. 1089 (S.D.N.Y. 1990) (dispute over terms of license agreement turns on state law, and thus belong in the state forum). However, there is nothing in the Complaint which supports the argument that the copyright infringement claim is a breach of contract claim in disguise. *fn7" Noble's complaint sufficiently pleads a cause of action "arising under" the Copyright Act. *f ...


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