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RICHARD FEINER & CO. v. H.R.I. INDUS.

May 27, 1998

RICHARD FEINER & CO., INC., Plaintiff,
v.
H.R.I. INDUS., INC. CO., Defendant.



The opinion of the court was delivered by: OWEN

OPINION AND ORDER

 OWEN, District Judge

 Plaintiff Richard Feiner & Co., Inc.'s complaint, asserting copyright, trademark and certain state law claims, has been answered by defendant H.R.I. Industries, Inc. Co.'s motion to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim, with an alternative summary judgment motion under Fed. R. Civ. P. 56. *fn1" Feiner has cross moved for, among other things, summary judgement, damages and an injunction on its substantive claims. *fn2"

 Feiner is presently the sole copyright holder and licensor for several Laurel & Hardy photoplays, including for the Laurel & Hardy comedy short entitled "Liberty" (the "photoplay"), which was first created in 1929. Its present copyright derives from a judgment granted on May 7, 1991 by Judge Letts in the Central District of California (Docket No. CV 84-6291), which court-ordered copyright was registered on May 14, 1991. HRI is the publisher of the Hollywood Reporter, a daily and weekly trade magazine serving the television and motion picture industries. On March 12, 1997, HRI copied, colorized and placed a still photograph derived from the photoplay *fn3" on an interior cover page introducing a Special Effects & Stunts section in HRI's daily publication of Hollywood Reporter (the "section"). The photograph shows Laurel and Hardy perched at the edge of a tall building, with Hardy clinging to both Laurel and a leaning beam for what appears to be his own dear life. HRI did not seek license or consent from Feiner before reproducing and publishing the photograph. *fn4" Both parties agree that the photograph as acquired by HRI was initially used as a promotional still for the photoplay entitled "Laurel & Hardy's Laughing 20's", distributed by MGM, *fn5" although the photograph itself was owned and distributed by the National Screen Services Corp. on MGM's behalf. The photograph was bought by HRI from Marc Wanamaker, an employee of an archival agency called Bison Archives. *fn6"

 As acquired by HRI, the photograph had on it a 1965 copyright notice and several legends at its bottom, one referencing the "Laughing 20s" MGM distribution, another an explicit copyright notice extending permission for newspaper and magazine reproduction. *fn7" Another legend states that the photograph is the property of National Screen Service and its use is limited to promotion for exhibitions of the "Laughing 20's" photoplay, adding "Must be returned immediately thereafter."

 In connection with HRI's use of the photograph in its magazine, the section's second page contains an "On the Cover" legend attributing the photograph to the "Liberty" comedy short without mention of Feiner, and includes as attribution for the photograph:

 
Photograph: Marc Wanamaker/Bison Archives Color tinting on the cover by Marta Foust

 Feiner's complaint states seven claims, involving (1) a copyright claim, with three other claims regarding various remedies available under the Copyright Act, 17 U.S.C. 101, et. seq., (2) a trademark claim under the Lanham Act, 25 U.S.C. § 1125(a), and (3) unfair competition claims under New York state law. *fn8" HRI, however, asserts as affirmative defenses that (1) because MGM abandoned the copyright for the photograph to the public domain, Feiner has no standing to bring suit; (2) as a magazine publisher, it made a valid permissive use of the photograph under the 1965 MGM copyright notice; or (3) to the extent its use of the photograph was an unauthorized use, it was di minimus, and constituted fair use under copyright law.

 As to Feiner's motion for summary judgment, the Court's only task is to determine whether or not there are issues of material fact to be tried. See Meeropol v. Nizer, 417 F. Supp. 1201, 1207-1208 (S.D.N.Y. 1976). In general, a plaintiff, in order to establish a copyright claim, must demonstrate that it holds a valid copyright in the relevant work, and that the protected work was copied *fn9" by the defendant. See Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985). Here, Feiner's valid copyright in the photograph, as well HRI's copying, has been conceded. Thus, to deny plaintiff summary judgement, the burden derives upon HRI to competently put before the court sufficient facts, which if credited by the trier of fact, would place in issue defendant's contention that its use of the photograph was in some way privileged. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).

 HRI first contends that it had permission to copy the photograph because MGM's 1965 copyright notice granted wide license to magazine publishers. Yet, as observed by me in a previous opinion involving the same work, although MGM was the copyright licensee for the photoplays comprising the "Laughing 20's" as of 1965, MGM's successor, Turner Entertainment, lost those rights by a lapse in renewal as of June 8, 1993. See Feiner & Co. v. Turner Entertainment Co., et al., 1997 U.S. Dist. LEXIS 14826 (S.D.N.Y.) at *4 (1997). Thus, if Turner's rights had lapsed, MGM's permission granted thereunder has also lapsed. See, e.g., Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 526 F. Supp. 1187, 1191 (S.D.N.Y. 1981) (the scope of rights granted to and by a licensee are limited by the scope of the license). To HRI's contention that my conclusion in the Turner case is not dispositive here because my final judgement in the case (that Feiner, not Turner, held the copyright) did not issue until months after HRI's use of the photo, I observe that my holding in the Turner case merely involved the chronology of the emergence of Feiner's rights as established by the 1991 court order in the Central District of California.

 HRI next contends that MGM abandoned its copyright in relation to the photograph for magazine and newspaper reproduction by its 1965 copyright notice, and that the photograph thereafter entered the public domain by its broad and extensive dissemination. As such, HRI continues, Feiner took its copyright interest subject to that abandonment and therefore Feiner's copyright does not embrace the photograph. In order to agree with HRI, I would first need to conclude that MGM clearly manifested its intent to abandon its 1965 copyright "through some affirmative act." Hadady Corp. v. Dean Witter Reynolds, 739 F. Supp. 1392, 1398 (C.D.Cal. 1990). Next, I would need some basis for concluding that the photograph is now in the public domain. While various arguments have been presented in connection with MGM's likely intent, *fn10" no basis exists on this record for concluding that the photograph became part of the public domain as a result of MGM's notice. There has been nothing more than conclusory statements offered for the premise, either as to the extent of the photograph's dissemination or on what basis it may have been disseminated (that is, whether it was founded upon MGM's purported abandonment). Conclusory allegations cannot avoid summary judgement. See Celotex Corp., 477 U.S. at 322-23. HRI's abandonment defense is accordingly rejected. *fn11"

 Finally, HRI asserts fair use and de minimus defenses. The Second Circuit has held that, while summary judgment in the face of a defendant's fair use defense is permissible, Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1259 (2d Cir. 1986), it is an exceptionally strict test to grant or deny the fair use defense as a matter of law. See Meeropol v. Nizer, 560 F.2d 1061, 1071 (S.D.N.Y. 1976).

 HRI contends that it used the photograph in connection with "a newsworthy informational package" and thus its use can be properly construed as "news reporting", which receives greater protection under the ...


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