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July 2, 2001


The opinion of the court was delivered by: Kaplan, District Judge.

  Plaintiff, the star of the New York production of the musical, Jekyll & Hyde, here sues the producer of the German production for violation of Sections 50 and 51 of the New York Civil Rights Law. He contends that the German producer is using his likeness on merchandise and other materials in violation of the statute. The matter is before the Court on cross motions for summary judgment. The two main issues at this stage are whether there is any genuine issue of material fact regarding the exercise of personal jurisdiction over the defendant and whether the New York Civil Rights Law has extraterritorial effect.

The following facts are undisputed.*fn1 The plaintiff appeared in the eponymous role(s) in the Houston, off-Broadway, and Broadway productions of the musical Jekyll & Hyde from 1995 to 1999. The defendant, a German company, is in the business of theatrical productions and related endeavors. Its principal place of business is Bremen, Germany. Following negotiations in New York, Music Theatre International ("MTI"), Wildhorn Productions, Inc. ("WPI"), and Stage and Screen Music, Inc.("SSMI"), licensed the defendant to produce Jekyll & Hyde in Germany, Austria, and Switzerland.*fn2

This dispute dates back at least to 1998. On March 20, 1998, the defendant received a fax from MTI stating that "[p]er my voice mail message, PACE*fn3 has signed off on the use of the title treatment for Jekyll & Hyde."*fn4 The parties disagree concerning whether this approved defendant's title treatment only or the logo as a whole.*fn5 In any case, defendant's musical and art director wrote to the plaintiff in August 1998, enclosing samples of merchandise and stating that "our logo is a combination of the tour logo (red and black) and the Broadway logo. If you have a closer look at it, you will see that the face is yours! So I thought it a nice idea to get you some samples of it . . ." So much for good intentions.

During the following month, plaintiff's management firm demanded that defendant cease and desist from this use of plaintiff's image. The parties agree that the defendant never obtained written consent from the plaintiff to use his likeness.

The German production of Jekyll & Hyde premiered on February 19, 1999, a month after plaintiff's final appearance in the Broadway production.*fn6 In March 1999, defendant signed an agreement with Polydor Records, GmbH, to release a compact disc of its German-language cast recording of Jekyll & Hyde. The logo containing plaintiff's image appears on the C.D. itself, on the back of the package liner, and on pages of the liner that offer other merchandise featuring the disputed image. The parties agree that this C.D. made its way to New York consumers through at least one sale off defendant's web site, <>, and several sales through local record stores,*fn7 although there is no evidence that defendant was responsible for the C.D. reaching the local stores.

Plaintiff brought this action in March 2000, premising subject matter jurisdiction on diversity or, more properly, alienage. The amended complaint alleges use of the plaintiff's image in violation of New York Civil Rights Law Sections 50 and 51 and requests compensatory and exemplary damages as well as injunctive relief. Defendant has interposed five affirmative defenses: lack of personal jurisdiction, the statute of limitations, lack of subject matter jurisdiction based on the alleged insufficiency of the minimum amount in controversy, failure to state a claim upon which relief may be granted, and forum non conveniens.*fn8

On September 21, 2000, following discovery, plaintiff moved for summary judgment and to dismiss defendant's affirmative defenses. Defendant cross-moved for summary judgment dismissing the complaint on the ground that it fails to state a claim upon which relief may be granted.

It argues that its use of plaintiff's likeness outside New York is not reached by the New York Civil Rights Law, that plaintiff cannot establish any injury from any use of his likeness in New York, and that the Court lacks jurisdiction over defendant's person. It seeks dismissal of plaintiff's prayer for an injunction on the ground of mootness.


A. Personal Jurisdiction

Plaintiff moves for summary judgment dismissing the affirmative defenses, one of which is that the Court lacks personal jurisdiction over the defendant. Ultimately, of course, the burden of pleading and proving facts justifying the exercise of personal jurisdiction over the defendant lies with the plaintiff.*fn9 In order to prevail on the motion to dismiss the defense at this stage of the proceeding, moreover, plaintiff must show that there is "no genuine issue as to any material fact on the jurisdictional question."*fn10 In looking to the affidavits and other materials, courts "`must resolve all ambiguities and draw all reasonable inferences in favor of the party against whom summary judgment is sought.'"*fn11 In other words, resolution of the personal jurisdiction defense must await trial unless plaintiff has established on this motion that jurisdiction over defendant exists even if any factual disputes were resolved in defendant's favor.

Plaintiff argues that he has satisfied three alternative bases for the exercise of personal jurisdiction in this case under New York's long-arm statute,*fn12 Section 302 of New York's Civil Practice Law and Rules ("CPLR"). He asserts that defendant has transacted business in New York and that there is a direct relationship between that conduct and his cause of action.*fn13 He contends that his claim arises out of defendant's commission of a tortious act within the state.*fn14 In any case, he argues that defendant committed a tortious act outside the state that caused injury to the plaintiff within the state and that defendant either "regularly does or solicits business, or engages in any other persistent course of conduct, or derives substantial revenue from goods used or consumed or services rendered, in the state," or "expects or should reasonably expect the act to have consequences in the state and derives substantial revenue from interstate or international commerce." *fn15 As the Court concludes that this action arises out of defendant's transaction of business in New York, however, it is unnecessary to address plaintiff's other jurisdictional arguments.

1. "Transacts Business"

The Second Circuit not long ago summarized the criteria relevant to determining whether a defendant has transacted business in New York within the meaning of CPLR § 302(a), subd. 1:

"The question of whether an out-of-state defendant transacts business in New York is determined by considering a variety of factors, including: (i) whether the defendant has an on-going contractual relationship with a New York corporation . . .; (ii) whether the contract was negotiated or executed in New York . . . and whether, after executing a contract with a New York business, the defendant has visited New York for the purpose of meeting with parties to the contract regarding the relationship . . .; (iii) what the choice-of-law clause is in any such contract . . .; and (iv) whether the contract requires franchisees to send notices and payments into the forum state or subjects them to supervision by the corporation in the forum ...

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