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MARTHA GRAHAM SCHOOL v. MARTHA GRAHAM CENTER

August 23, 2002

THE MARTHA GRAHAM SCHOOL AND DANCE FOUNDATION, INC. AND RONALD A. PROTAS, INDIVIDUALLY AND AS TRUSTEE OF THE MARTHA GRAHAM TRUST PLAINTIFFS,
V.
MARTHA GRAHAM CENTER OF CONTEMPORARY DANCE, INC. AND MARTHA GRAHAM SCHOOL OF CONTEMPORARY DANCE, INC. DEFENDANTS, ELIOT SPITZER, ATTORNEY GENERAL OF THE STATE OF NEW YORK, INTERVENOR-DEFENDANT.



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

  OPINION

What property did Martha Graham, the great dancer, choreographer, and teacher, own at the time of her death in 1991? That is the central question in the second phase of this lawsuit. The main dispute is with respect to ownership of copyright in the dances she created. That is a federal question. Subsidiary disputes with respect to ownership of the costumes and sets for the dances and fiduciary duties owed by the plaintiff to the defendants are state law issues that arise from the same nucleus of contested facts.

Between 1956 and her death in 1991, Martha Graham was employed by defendants Martha Graham Center of Contemporary Dance Inc. ("the Center") and Martha Graham School of Contemporary Dance Inc. ("the School"), two not-for-profit corporations that operated as a combined entity. During that 35-year period, Graham created many dances with the members of the Martha Graham Dance Company ("the Dance Company") and the students and teachers at the School, all of whom were employed by the defendants. Prior to 1956, Graham had been the individual proprietor of a dance school.

The parties agree that during her lifetime, Graham created 70 dances that are fixed in a tangible medium of expression from which they can be reproduced.*fn1 Thirty-four of those 70 dances were created after 1956 ("the post-1956 dances"), during Graham's employment by the defendants, and 36 were created prior to 1956 ("the pre-1956 dances"). Ronald Protas, as legatee under Graham's will, and as trustee of the Martha Graham Trust ("the Trust"), a revocable trust of which he is the creator, trustee, and sole beneficiary, seeks a declaration that he owns copyright in all of the 70 dances. Defendants counterclaim for a declaration that the Center and the School are the true owners of all rights in Graham's choreographic works and related sets, costumes, and other personal property.

Based on a preponderance of the credible evidence, for the reasons that follow, Protas has proved copyright ownership for the renewal term of one dance. Defendants have proved ownership of copyright in 45 of the dances. Ten dances, of which two were commissioned by third parties, are in the public domain. With respect to five dances (two published and three unpublished) which were commissioned, neither side has borne its burden of proving that the commissioning party intended the copyright to be reserved to Graham. Finally, neither side has proved that the remaining nine dances, which were published, were published with the required statutory copyright notice.

Protas also seeks replevin and a declaration of ownership of all Noguchi sets created for the dances at issue and certain items of tangible property.*fn2 Defendants counterclaim for breach of fiduciary duty by Protas, and seek a constructive trust to recover the proceeds of his licensing of the ballets, sets, and costumes to third parties and of his sale of defendants' property to the Library of Congress. In addition, defendants seek disgorgement of ten years of Protas' salary and of payments made to Protas by defendants under a 1999 license agreement. Defendants also seek the same recovery as damages for counterclaims of fraud and negligent misrepresentation. Finally, defendants counterclaim for replevin of various items of property that Protas currently possesses and assert that Protas owes them money improperly borrowed.

THE FACTS

During a bench trial held between April 22 and April 29, eighteen witnesses testified in the courtroom and designations from the deposition of one witness were submitted. This trial was an effort to recapture a history that partially predated the knowledge and memory of the living witnesses. Accordingly, the few ancient documents that were produced became very important guideposts.

Plaintiff called the following witnesses: (1) Francis Mason, who, in 1973 or 1974, became a member and Chairman of the Center's board of directors. After two or three years, he became Chairman Emeritus of the board. In 2001, Mason again became Chairman of the board; (2) Marvin Preston, IV, who has considerable experience in the financial management of companies, and who became Executive Director of the Center in March of 2000; (3) Kevin Rover who was, from 1984 to 1989, an attorney with the firm of Morrison, Cohen, Singer, & Weinstein, counsel to the Martha Graham Center. He joined the Center's board of directors in the late 1980s; (4) Linda Hodes, who first met Graham in 1940 when she went to Graham's studio for a dance lesson, and who was a principal dancer with the Dance Company from the early 1950s until 1964. In 1977, Hodes became Director of the School and Rehearsal Director of the Dance Company. Between the late 1980s and 1992, Hodes was a member of the Center's board of directors. She also had the title of Associate Artistic Director; (5) James McGarry, the attorney who drew Graham's last will in 1989; (6) Lee Traub, who studied with Graham in 1942, was a member of the Center's board of directors from 1974 to 1994 and Chairman of the board for ten years; (7) Jeannette Roosevelt, who served as a member of the Center's board of directors between 1965 or 1966 and 1973, and became President of the Center in 1968; (8) Judith Schlosser, who has been a member of the Center's board of directors since 1974 or 1975; (9) Ronald Protas, the plaintiff, who met Graham in 1967, and who became an employee of the defendants in 1972. By the mid-1970s, Protas had become Executive Director and a board member of the Center and the School. In approximately 1980, he was given the title of Co-Associate Artistic Director; (10) Cynthia Parker-Kaback, who, in 1973, was hired as manager of the Dance Company by Protas and served until 1982; (11) Petek Gunay, an associate in the law office of plaintiff's counsel, who was assigned by counsel to go to the New York Public Library and view videotapes listed in one of defendants' exhibits.

Defendants called the following witnesses: (1) William McHenry, who was a member of the Center's board of directors from 1967 to 1973; (2) Edmund Pease, a certified financial analyst, who was a member of the Center's board of directors between 1974 and 1979. He also served as Treasurer and Vice-President; (3) Christopher Herrmann, who was assistant to the General Director (Protas) in 1987, then Director of Special Events and Projects until 1989, when he left the Center. In 1990, Herrmann returned to the Center as Director of Film Projects; (4) Stuart Hodes, who was a principal dancer with the Dance Company between 1947 and 1958, after which he taught at the School and worked to help the School gain accreditation; (5) Marvin Preston, see supra (6) Terese Capucilli, who was a principal dancer with the Dance Company between 1979 and 1997, Co-Associate Artistic Director from 1997 to 2000, and currently principal dancer, Artistic Coordinator, and teacher at the School; (7) Christine Dakin, a dancer with the Dance Company between 1976 and 2000, who is currently a member of the dance faculty of the defendants; (8) Janet Eilber, who became a principal dancer with the Dance Company in 1972 and danced with the Company throughout the 1970s. She also was a teacher at the School. In 1998, she was invited to become Artistic Director for the defendants.

After observing the witnesses, evaluating their credibility and weighing all of the evidence, I make the following findings of fact. I incorporate in this opinion the findings of fact stated in my earlier opinion, The Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 153 F. Supp.2d 512 (S.D.N.Y. 2001), aff'd, No. 01-9055 (2d Cir. Jul. 2, 2002). Familiarity with the facts detailed in that opinion is assumed. I will only repeat facts that are of special significance to the claims at issue in this part of the case. After listening to his evasive and inconsistent testimony and observing his demeanor, I again find Protas not to be a credible witness.

Between 1930 and 1956, Graham operated a dance school as a sole proprietorship. Prior to 1956, she created 36 of the dances at issue. She was commissioned by a number of renowned musical and cultural organizations to create seven dances, which were first performed between 1944 and 1953: Appalachian Spring, Herodiade, Dark Meadow, Cave of the Heart, Night Journey, Judith (created in 1950)*fn3, and Canticle for Innocent Comedians. In 1948, Graham was one of the incorporators of the Martha Graham Foundation for Contemporary Dance ("the Foundation"), a not-for-profit corporation that was renamed the Martha Graham Center of Contemporary Dance in 1968.

In December of 1956, Graham sold the dance school she had been running as a sole proprietorship to the then newly incorporated not-for-profit, Martha Graham School of Contemporary Dance, Inc. The purposes of the School, as stated in its certificate of incorporation were to, inter alia, "teach the science and art of the dance," and "in conjunction with the conduct of such school, . . . to compose, perform and demonstrate, and to commission the composition, performance and demonstration of dances, ballets, dramas and music . . . ."

The Center operated as an umbrella organization, encompassing the teaching, choreographing, and performing of dances by the School and the Dance Company. The defendants — the Center and the School — operated as one entity. They were located on the same premises; for many years, they had identical boards of directors which held joint meetings; funds from the Center were used to pay the School's expenses for sets and costumes; and the accounts of the School and Center were combined for auditing purposes.

In December of 1956, when Graham sold her sole proprietorship to the School, she entered into a ten-year employment agreement with the School to serve as "Program Director." Graham's job title later changed to "Artistic Director." There was uniform credible testimony that Graham was an employee of the defendants until her death in 1991. Protas conceded in his testimony that Graham was an employee of the Center. In January 1958, the School submitted a tax protest ("the protest") to Internal Revenue in defense of its previous request for exemption from federal income tax. The protest stated that Graham had "full charge and responsibility for the educational program of the corporation."

In January 1957, in the course of developing the School as the center of her "theatre," Graham gave all of her theatrical properties to the School. In this transfer, Graham included 16 complete theatrical sets, most of which had been created by the renowned artist, Isamu Noguchi, the entire costume wardrobe used with the sixteen works, and all her electrical and basic stage equipment. In 1969, Graham donated to the Center a collection of books and various biographical materials which a professional appraiser valued at $2,500.

In 1968, LeRoy Leatherman, Executive Administrator of the Center, denied a request by the director of the Netherlands School to perform the dances created by Graham. In his letter denying the request, Leatherman stated that Graham had assigned all performing rights to the Center. In 1971, Leatherman wrote a letter on behalf of Graham to Linda Hodes, responding to Hodes' request to perform the dances during her time at the Netherlands Dance Theater. He stated in that letter that Graham had "assigned all rights to all of her works to the Martha Graham Center, Inc." LeRoy Leatherman was the principal managerial employee of the defendants and a member of the board of directors of the School from its founding in 1956 to 1972. In January of 1958, as Secretary and Treasurer of the School, he signed the tax protest submitted to Internal Revenue by the School and stated that the information contained in the protest was true to his knowledge, information, and belief. Jeanette Roosevelt, who served as a member of the Center's board of directors from 1965 or 1966 until the end of 1972, and as President of the Center and of the School from 1968, testified credibly that Leatherman was very loyal to Graham and was concerned that her wishes be met. Roosevelt also testified credibly that during the period in which she served on the board, it was the board's understanding that Graham "gave" her works to the Center and that "whenever dances were created, they would become works that the board was responsible for."

In 1974, Edmund Pease, Treasurer and member of the Center's board of directors, with the aid of Lutz and Carr, an accounting firm, undertook "a thorough study" of the commingling of the assets belonging to the Center and to Graham with the purpose of determining what belonged to whom. According to Pease, his examination of documents dating back to 1948 revealed that dance royalties had been paid to the Foundation/Center and that the Center had borne the expense of creating the sets and costumes. The study's final report concluded that the Center's assets included the dances, sets, and costumes, and recommended that these items be carried on the Center's balance sheet as assets at nominal value. Pease personally submitted this report to Graham. She did not express any disagreement with the report's findings. Pease thereafter presented the report to the Center's board of directors while Graham was present. Francis Mason, member and Chairman of the Center's board of directors at that time, testified that the board approved Pease's report. The report and the board minutes pertaining to this period have been lost or destroyed. Pease was a forthcoming and credible witness at trial.

Ronald Protas first became acquainted with Graham in approximately 1967, when he was a 26-year-old freelance photographer. The two developed a close friendship. Over the years, under Graham's auspices, Protas became an increasingly important figure at the Center. His arrival in 1972 as a Center employee was followed shortly by resignations, requested by Graham, of longstanding members of the board who had personal knowledge of the Center's history. Protas was copied on some of the resignation letters that were received in response to Graham's request. Although he was not a dancer, by the mid-1970s, Protas had become Executive Director of the Center and a board member of the Center and the School. In approximately 1980, he was given the title of Co-Associate Artistic Director.

Protas maintained control over the Center's board minutes and book-keeping by hiring as Center employees individuals who regarded him as the "boss," reported to him, and "accepted his word." In 1973, Protas hired Cynthia Parker-Kaback to serve as a manager for the Dance Company. She remained a Center employee until 1982. Parker-Kaback frequently attended the Center's board meetings and typed the minutes of those meetings. At the first trial, she testified credibly that she gave Protas the minutes for his approval before disseminating them. In addition, Judith Schlosser, a member of the Center's board of directors, testified credibly that the minutes were "usually edited by Mr. Protas."

In 1973, Protas also hired Michele Etienne, who served as the Center's business manager until 1998. On cross-examination at the first trial, Etienne testified that during her employment at the Center, no royalty payments were made to Martha Graham. Although I did not believe much of Etienne's testimony, I do credit her statement that no royalties were paid to Graham by defendants. In spite of that admission, Etienne testified at the first trial that on April 14, 1989, she prepared a memorandum for Protas stating that "[i]n accordance with the Board of Trustees resolution of 1987 Ms. Graham is being paid a royalty of $40,000 per annum for the use of her ballets, her costumes and her Noguchi sets."

Protas had easy access to the Center's funds, and he supervised the Center employees who kept the books. In 1992, Protas "took" $10,000 as a bonus for himself from the Center's funds and later informed Michele Etienne that he had done so. He also borrowed $7,000 and $2,500 on separate occasions from the Center. In addition, in November of 1985, Lutz and Carr, accountants for the Center and School, notified Lee Traub, Chairman of the Center's board of directors, that Protas owed the Center money and that he had "refuse[d] to acknowledge his debt to the Martha Graham Center and School." In December of 1985, Protas wrote to Traub giving examples of what he had spent some of the money on. In explaining that he had spent some of the money on film, video cassettes, and camera equipment, he stated that the "camera equipment . . . reamins [sic] the property of the [C]enter," and that "I donate my photographs for the use of the [C]enter."

As Graham's physical abilities waned in the final years of her life, Protas became her spokesperson. Judith Schlosser testified credibly at the first trial that Graham did not attend board meetings regularly between 1987 and 1991 and that the board would learn of her views through Protas: "Ron Protas would say, Martha wants, or Martha said, or Martha would like."

Although he was a fiduciary of the defendants, Protas was aware of his personal interest and the potentiality of conflict. In June of 1988, Protas wrote to Alex Racolin, a member of the Center's board of directors. In that letter, Protas stated that he "ultimately . . . want[ed]" Rick Burke, a board member, "off the board and friends on, right now the board is tilting in a direction I do not understand and it scares me." In the same letter, Protas wrote: "[f]or now I want to do everything possible to strengthen my position, in terms of [M]artha's will, board people and the sets." Lee Traub, a member of the Center's board of directors, testified credibly that Protas had the "final say" on who could or could not be a board member: "He put them on and took them off."

In June of 1988, Peter Morrison, a member of the Center's board of directors, commenced an investigation into the ownership of Noguchi sets. A mysterious document, entitled "Addendum to the Minutes of the Board of Trustees" for June 23, 1988, a separate page that was not incorporated into the board minutes for that day, states that "[t]he Board unanimously confirmed that all of the sets of Isamu Noguchi were given to Martha Graham, and that if some were credited to the [C]enter's assets, that this was incorrect and would be changed. It was only asked that it be formally implemented through Peter Morrison." It is hard to understand why such a freestanding addendum to the board minutes was necessary. All drafts of minutes, however, were edited by Protas before they were circulated.

When Morrison fell ill, Kevin Rover, a member of the Center's board, took over the investigation. Rover testified credibly that he was not shown numerous documents pertaining to the ownership of the sets and costumes, including, in particular, documents referring to Graham's 1957 transfer of all theatrical properties to the School. Evidence admitted at the first trial shows that Protas wrote Rover a letter stating that:

As we discussed last evening I feel the best way to go forward immediately is to accept Martha's offer to allow the use of the Herodiade set to be used as a loan at Sotheby. The ballet was done in 1944, long before the School or Company [w]as incorporated; so there should be no Rick Burke problem.

Protas then attached the letter addressed to Rover to another letter that he sent to Michael Stout, an attorney, in connection with using some pieces from the Noguchi sets as collateral for a loan from Sotheby's. In the letter to Stout, Protas stated that: "I sent the attached note to Kevin Rover who said there was no problem stating Martha owned her sets prior to 1949. If we could go forward on this with Sotheby's it would be a godsend."

Also admitted at the previous trial was a letter to Protas from Rick Burke, President of the Center and a member of the board of directors. That letter stated:

As far as the art is concerned, it concerned me that last year you attempted to move the art from the Center back to Martha and the Board delay [sic] a decision until we had legal advice which we never acted on. I did talk to Peter who stated flately [sic] that all the art was owned by the Center to protect them from inheretance [sic] taxes and give the Center the necessary assets to finance the company. Your action without talking to me, concerned me and other members of the Board. No one disputes you run the show and deserve what ever Martha wants to give you.

Based on his limited information, on July 18, 1989, Rover announced to the board of directors that in his opinion, "the financial records indicated no grounds for ownership by the Center, and that Ron had acted within the scope of his authority as General Director of the Martha Graham Center." The board then adopted resolutions "recognizing Martha Graham as owner of the Noguchi sets and jewelry" and "ratif[ying] actions undertaken by Protas to secure loans from Sotheby's" while using six Noguchi sculptures as collateral. On June 21, 1989, Protas wrote to Sotheby's to confirm that the Center consented to Sotheby's loan on April 26, 1989 of $200,000 to Graham and that the Center also consented to an additional loan of $475,000 by Sotheby's to Graham.

In June of 1990, the board authorized the Center to accept six Noguchi sculptures (3 Herodiade sculptures, Lyre, Cave of the Heart and Wood Sculpture of a Horse) as a gift from Graham, subject to her right to purchase these sculptures within the five-year period immediately following the date of her gift. The board also resolved that the Center would sell these sculptures to the J.M. Kaplan Fund for $600,000, subject to the Center's right to purchase the sculptures during the subsequent five years. In June 1990, Sotheby's released its security interest in the six sculptures, and the Center assigned all of its rights in the sculptures to the J.M. Kaplan Fund subject to an option to purchase the sculptures within five years.

Martha Graham died in April of 1991. Her last will, executed on January 19, 1989, named Protas as sole executor and legatee, but did not specify what she owned at the time of her death. James McGarry, the attorney who drew that will, testified credibly at the first trial that he prepared it in "no more than an hour, a will of that type." He also testified that he was not asked to conduct an investigation as to what intellectual property, costumes, and sets Graham owned at that time, and that he did not conduct such an investigation. The will contains the following language:

The residue . . . of all my property, real and personal, of every kind and description and wherever situated, including all property over which I may have power of appointment at the time of my death . . . and including all property not otherwise effectively disposed of hereunder . . . I give, devise and bequeath to my said friend, Ron Protas, if he shall survive me, or, if he shall not survive me, to the Martha Graham Center of Contemporary Dance, Inc.
In connection with any rights or interests in any dance works, musical scores, scenery sets, my personal papers and the use of my name, which may pass to my said friend Ron Protas . . . I request, but do not enjoin, that he consult with my friends, Linda Hodes, Diane Gray, Halston, Ted Michaelson, Alex Racolin and Lee Traub, regarding the use of such rights or interests.

After Graham's death, Protas succeeded her as Artistic Director of the Center and the School, and continued to serve as a member of the Center's board of directors. In 1992, attorneys who represented Protas as executor of Graham's estate recommended to him that "an investigation be made as to what rights the Estate actually owns and the status of copyright registrations, if any . . . ." Protas made no such investigation. I did not credit Protas' testimony at the first trial that he told Alex Racolin, a member of the Center's board of directors who is now deceased, of his attorneys' recommendations, and that he was "almost a 100 percent sure that [Racolin] mentioned it at a board meeting to the other board members." There are no board minutes which show that such a discussion took place.

Protas represented to the directors of the Center that he "owned everything" including the Noguchi sets and the copyrights in all the dances. The board members accepted Protas' representations because, as Francis Mason, the current chairman of the Center's board of directors, and a very credible witness, testified, "[w]e trusted Mr. Protas." The only evidence of a communication from Protas to Racolin after Graham's death is a letter that Protas wrote dated 29th August, 1991 that made it appear that Graham, and not the Center, owned the ballets, sets, costumes, and dance films.

In that letter, admitted at the first trial, Protas stated that:

I spoke with Chris about the information of the use of the ballets, costumes and sets for the Center. Since Michele is on holiday, I have asked her assistant, Adrienne, to look for all relevant information.
I have a clear recollection that at a board meeting there was a resolution that for the use of the ballets, costumes and sets for performances of the Martha Graham Dance Company, the Center would pay Martha a royalty of $100,000 beyond her ordinary salary.
To my knowledge, there was never an actual agreement or signed contract and past history always had the Center paying Martha a separate royalty for the use of the ballets in a film. I was concerned about this myself and somewhere, if I can ever find it, is a letter from Martha stating, or clarifying, that the films or the use of the Noguchi's [sic] had to be a separate arrangement.
In regard to the Noguchi castings, it was left to Martha and I to decide what, if anything, we would give to the Center and everyone was very grateful when Kevin Rover and I worked out a contract giving the Center 40% of the income. I don't know if I want to keep this arrangement in all instances. I would like to keep that option open. I know in the two films made for PBS over 15 years ago, Martha was paid a separate royalty by PBS. It could have been higher but she chose to have most of the funds for the films go to the Center, at that time.
In regard to the NHK Japanese Film and the Danish Film, it was my understanding that Martha allowed the use of the choreography only for the Danish American Showing, and only for the showing of the Japanese Film in Japan. Everything else was left for a separate arrangement which was agreeable to Kevin.
I realize now I should have been clear about all of this. There is some background correspondence but I will have to do an all out search for it if it is really necessary. My feeling is that no one on the Board would object to an equitable arrangement. Of course one man's equity is another man's etc. . . .
I know that at the time of the resolution it was understood that it was only for the Company to perform the ballets live, and tour with them. Film deals, cassettes and all the rest were never considered part of the agreement. . . .
P.S. I am not delaying this fax any longer. I had hoped Adrienne would find the relevant materials, but she could not.

Protas' statements to Racolin implying that the defendants had no rights in the films and that "it was only for the Company to perform the ballets live" were misleading. In 1973, Protas himself negotiated a contract pertaining to dance films, retaining "all rights" for the Center, and wrote a letter to Arnold Weissberger stating that:

I am making arrangements to have a work film made of "Clytemnestra" and "Secular Games", "Myth of a Voyage" and "Mendicants of the Evening". I would be grateful if we could draw up a contract between the Center and the photographer, Mr. Nathaniel Tripp, stating that we retain all rights to these films and that he has no authority to make duplicates of them.

Furthermore, Protas had personal knowledge that it was the Center, and not Graham, that received royalties from PBS for at least one film. Minutes of the Center's board of directors' meeting for October 18, 1984 state:

Ron Protas then detailed to the Board the extraordinary filming deal Jim Nomikos had made in Denmark. The Center nows [sic] owns the 90 minute film of the three ballets — "Cave of the Heart", "Errand into the Maze", and "Acts of Light" — which it will sell to PBS for $100,000 and possibly to various European countries. . . . Ron thanked the Board saying that without their support the deal could never have been made.

The board minutes for December 11, 1984 state:

Lee Traub asked how much money had been received from the PBS film; Jim said that it was $100,000. Jim Nomikos also said that because the Center now owned the film and all the rights, it could now sell the broadcast rights and also, possibly, videocassettes around the world. The film could, therefore, generate several hundred thousand dollars income for the Center. The deal was significantly different than all previous film deals the Center had been involved in where it received a fixed fee and no percentage of film sales/broadcast rights.
Ron Protas added the . . . most extraordinary thing about the deal was that Jim Nomikos had sensed that the original NVC deal (where the Center would receive only a fee) was not best for the Center . . . .

The other PBS film that was produced prior to 1984 was "3 by Martha Graham." That film was published in 1969 with notice of the Center's copyright, and the credits at the end of the film list Protas' name for "still photographs." A preponderance of the credible evidence shows that the Center owned all the rights in this film and in the works contained therein and received royalties from licensing this film. William McHenry, a member of the Center's board of directors, testified credibly that in 1969 or 1970, he had negotiated on behalf of the Center the licensing of this film to "N.E.T.," now known as PBS. In a 1969 letter addressed to N.E.T. and copied to Leatherman, McHenry stated that "[i]n the United States we reserve film rights for all uses; outside the United States we are to have all rights." In 1970, Leatherman, on behalf of the Center, executed a license agreement that assured to the Center 25 percent of all gross proceeds in connection with the sale and/or disposition of prints of the film.

With respect to the NHK film, Protas stated to Racolin that "it is my understanding that Martha allowed the use of the choreography only for the Danish American Showing, and only for the showing of the Japanese Film in Japan." Contrary to Protas' "understanding," in September of 1990, the Center entered into an agreement with NHK with respect to two taped dance performances. Protas, as General Director, represented the Center in that agreement. The agreement stated that the Center retained "all broadcast rights outside of Japan," and "the rights to perform" the two dance programs.

In November of 1993, Protas assigned to the Center forty percent of his interest in the Isamu Noguchi sculpture entitled "Herodiade." The ballet Herodiade was created by Graham in 1944. The sets for Herodiade were donated to the School by Graham in 1957 along with other Noguchi sets and theatrical properties.

In April of 1998, on behalf of his personal Trust, Protas entered into an agreement with the Library of Congress for the sale of a collection of various items for the price of $500,000 to be paid in five annual installments. This collection contained scrapbooks, photographs, films, videos, files, letters, programs and notebooks.*fn4 The Center's business and student records were among the items sold. Protas testified that at the time that he entered into the agreement with the Library of Congress, he did not know that Graham had donated many of her books and biographical materials to the Center in 1969.

In the late 1990s, relations between Protas and other members of the defendants' board of directors deteriorated. On July 15, 1999, with the principal motive of persuading Protas to resign as Artistic Director, the Center and the School entered into a ten-year license agreement with the Martha Graham Trust. The license agreement purported to license the ballets, sets, and costumes to the defendants. It contained the following language:

The Trust grants the Center a non-exclusive live performance license to the Martha Graham Ballets (MG Works) specified on the Applicable Works Addendum (Works Addendum). MG works listed within the section of the Works Addendum titled "Company Works" are licensed for performance by the Martha Graham Dance Company ("Company."). MG Works listed within the section of the Works Addendum titled "Ensemble Works" are licensed for performance by the Ensemble of the Martha Graham School of Contemporary Dance ("Ensemble") . . . .
The Trust grants the Center a non-exclusive use license to the Martha Graham Scenic, Costume and Properties Collection ("Collection") for performances, by the Company, Ensemble and School of MG Works licensed herein. . . .
To the extent that any rights to any . . . MG Work is deemed hereafter to accrue to the Center, the School, Company or Ensemble, the Center assigns any or all such rights at such time as they may be deemed to accrue . . . to the Trust. . . .

The "Works Addendum," which was supposed to contain a list of dances for which the Center was granted a non-exclusive live performance license, was never completed or signed.

In 2000, Marvin Preston, the current Executive Director of the Center who has considerable experience in the financial management of companies, undertook a financial assessment of the defendants based on several years of audited financial statements, payroll records, general ledgers, budgets, and other operational documents. He testified credibly that the defendants' profit and loss accounts revealed expenses related to the sets and costumes from which it could be inferred that the sets and costumes were the assets of the defendants.

On May 25, 2000, Protas sent a letter to Francis Mason, the Acting Chairman of the Center's board of directors, terminating the license agreement "effective 12:01 AM EDT on May 26, 2000." On June 22, 2000, the Center's board voted to remove Protas from the board of directors. In July of 2000, Protas began to apply to register copyright in 40 of Graham's choreographic works as unpublished works and obtained certificates of copyright registration for 30 of the works at issue.

The Center began to apply for copyright registration of 15 dances in January 2001. It obtained certificates of copyright registration for 12 dances and certificates of copyright renewal for three dances, Seraphic Dialogue, Cortege of Eagles, and Acrobats of God, as published in the film "3 by Martha Graham." The parties have competing certificates of copyright registration for eight works, three of which are unpublished.

Five reliable documents show that films of 26 dances, 16 of which were created by Graham prior to 1956 and ten of which were created after 1956, have been distributed to the public for money, i.e., published within the meaning of both the 1909 and the 1976 Copyright Acts. The 16 pre-1956 published dances and their years of first publication are: Flute of Krishna (1923), Heretic (1930), Lamentation (1930), Celebration (1934), Frontier (1935), Panorama (1935), Chronicle/Steps in the Street (1936), American Document (1938), El Penitente (1991), Herodiade (1991), Appalachian Spring (1959), Cave of the Heart (1976), Errand into the Maze (1984), Night Journey (1960), Diversion of Angels (1976), and Seraphic Dialogue (1969). The ten post-1956 published dances and their years of first publication are: Clytemnestra (1979), Acrobats of God (1969), Circe (published before 1993), Cortege of Eagles (1969), Adorations (1976), Acts of Light (1984), The Rite of Spring (published before 1993), Temptations of the Moon (published before 1993), Night Chant (published before 1993), and Maple Leaf Rag (1991).

The five documents contain overlapping lists of published dances. While the first two documents described below suffice to show that 26 dances have been published, publication of many of the films contained in those two documents is confirmed by three additional documents. The first document, admitted into evidence "in its entirety," i.e., for all purposes, is a list prepared by Christina Duda, Protas' assistant, of 21 ballets that have been "filmed and sold." In February of 1993, after his attorney sought information on publication with a view to applying to the Copyright Office for registration of copyright in choreography, Protas was specifically informed by his Duda that the following 21 dances had been "filmed and sold": Frontier, Panorama, Chronicle/Steps in the Street, American Document, El Penitente, Herodiade, Appalachian Spring, Cave of the Heart, Errand into the Maze, Night Journey, Diversion of Angels, Seraphic Dialogue, Clytemnestra, Acrobats of God, Circe, Cortege of Eagles, Acts of Light, The Rite of Spring, Temptations of the Moon, Night Chant, and Maple Leaf Rag. Christopher Herrmann, Director of Film Projects at the Center, testified credibly that films of those 21 dances were "made available to the public for money." He also testified that the School ran a boutique that sold videotapes of Graham's dances. Despite his knowledge that these 21 films had been published, beginning in July of 2000, Protas applied to register 19 of the 21 dances as unpublished works and obtained certificates of copyright registration for 15 of them.

Another document prepared by Christopher Herrmann in 1990 contains a list of 19 "commercially produced" films. These 19 films and their dates of publication are: Flute of Krishna (1923), Heretic (1930), Lamentation (1930, 1943, and 1976), Celebration (1934), Frontier (1935 and 1976), Panorama (1935), Chronicle/Steps in the Street (1936), American Document (1938), Appalachian Spring (1959 and 1976), Cave of the Heart (1976 and 1984), Errand into the Maze (1984), Night Journey (1960), Diversion of Angels (1976), Seraphic Dialogue (1969), Clytemnestra (1979), Acrobats of God (1969), Cortege of Eagles (1969), Adorations (1976), and Acts of Light (1984).*fn5 Most of the dances in the list of commercially produced films are also contained in the list of dances that were filmed and sold.

Among the commercially produced films, Seraphic Dialogue, Acrobats of God, and Cortege of Eagles are listed together as works distributed in 1969 and available from "Pyramid Films." A "Pyramid Home Video" videocassette of "3 by Martha Graham" was received in evidence. This videocassette carries a 1969 notice of copyright in the Center's name on its cover and at the end of the film. Furthermore, in a June 1, 2001 letter, the Copyright Office told Protas' attorney that "`3 by Martha Graham' was . . . first published in 1969 or 1970 and was subsequently released by Pyramid Home Video. The videotape is now widely available . . . ." New York Public Library records also show that "3 by Martha Graham" was produced by the Center in 1969 and released in 1970, and that this film's distributor was "Pyramid Film & Video." In addition, Francis Mason testified credibly that this film was available for sale.

A 1991 letter introduced by Protas for the purpose of showing that Martha Graham received royalties for "film distribution through Phoenix Films" establishes that two dances, Appalachian Spring and Night Journey, which also appear in both of the aforementioned lists, were being distributed in about 1961.*fn6 Christopher Herrmann testified credibly that the dance films distributed by "Phoenix Films" were available in video stores. The fourth document, contained in the catalog of the New York Public Library, shows that seven of the 26 published dances were rented or sold prior to 1975.*fn7 The seven dances are: Flute of Krishna, Lamentation, Appalachian Spring, Night Journey, Seraphic Dialogue, Acrobats of God, and Cortege of Eagles.

Fifth, a June 1, 2001 letter from the Copyright Office to Protas' attorney raised serious questions regarding the publication status of many of the 26 published dances. It also noted that publication of 11 dances which Protas had previously registered as unpublished works was "certain or likely": Frontier, Lamentation, El Penitente, Herodiade, Appalachian Spring, Cave of the Heart, Night Journey, Diversion of Angels, Acrobats of God, Cortege of Eagles, and Maple Leaf Rag. The letter listed multiple ways in which many of the works had been published. In particular, it stated that El Penitente, Maple Leaf Rag, and Herodiade were certain or likely to have been published in 1991 in "Five Dances by Martha Graham," a film that was "commercially available from several on-line sources." The Copyright Office also noted that publication of Seraphic Dialogue, Adoration, and Chronicle/Steps in the Street, for which Protas' copyright applications were then pending, was certain or likely.

The Copyright Office requested comments from Protas regarding the publication status of each of those 14 works and underscored its request with the following words:

Please be aware that the question of publication is extremely important to a copyright registration as it affects the deposit copy, copyright notice requirements, and even how a court might view the facts given on a particular registration. In light of the seriousness of this subject, we would appreciate your thorough research in this area concerning both current claims and those already registered so that the most accurate claims possible might be put on record.

In the same letter, based on Protas' attorney's previous response to its specific query regarding the publication status of Clytemnestra, the Copyright Office advised that Protas' application for Clytemnestra as an "unpublished work" would be processed. Clytemnestra is on the list of 21 published works to which Protas was privy in February of 1993.

Protas applied to register copyright in the choreography of Seraphic Dialogue, Cortege of Eagles and Acrobats of God. As discussed above, these three dances were published in 1969 in the film "3 by Martha Graham" with a 1969 notice of copyright in the Center's name. Protas' own name appeared in the credits of this film as one of the two individuals responsible for "still photographs." Yet, he represented to the Copyright Office that these were unpublished works.

In a letter dated February 23, 2001, in response to the Copyright Office's request for clarification, Protas' attorney stated that "the deposit copy [for Seraphic Dialogue] is from a `published' videotape made available in 1992." Had Protas submitted the first published film of Seraphic Dialogue in accordance with the Copyright Office's deposit requirements, he could not have concealed the 1969 notice of copyright in the Center's name. Protas testified that he had seen "some of" this film with Graham in 1969 or 1970 "when it was first made," but that he did not see the notice of copyright.

DISCUSSION

I. The License Agreement

Plaintiff takes the position that defendants have no rights in the ballets since the 1999 license agreement that they signed with the Trust specifically provided that all licenses granted thereunder reverted to the Trust upon the contract's termination. Furthermore, plaintiff argues that the doctrine of licensee estoppel bars defendants from claiming ownership of the ballets, sets, and costumes.

The license agreement provided that:

The Trust grants the Center a non-exclusive live performance license to the Martha Graham Ballets (MG Works) specified on the Applicable Works Addendum (Works Addendum) MG works listed within the section of the Works Addendum titled "Company Works" are licensed for performance by the Martha Graham Dance Company ("Company"). MG Works listed within the section of the Works Addendum titled "Ensemble Works" are licensed for performance by the Ensemble of the Martha Graham School of Contemporary Dance ("Ensemble").

This agreement is incomplete because no "Applicable Works Addendum" was ever finalized by Protas. No addendum was ever signed. Accordingly, the copyright provisions of the license agreement never took effect. Moreover, a license agreement that never took effect cannot provide the foundation for plaintiff's claim of licensee estoppel.

II. Significance of Publication

There is clear and persuasive evidence that films of 16 of the pre-1956 works and ten of the post-1956 works were "commercially produced" and/or "filmed and sold." Seven of these 26 works were also "rented or sold," and two were distributed by Phoenix Films.

The 1909 Act did not define "publication," but the Second Circuit has defined the term: "[P]ublication occurs when by consent of the copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public." Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 590 (2d Cir. 1999) (quoting Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941, 945 (2d Cir. 1975)).

The 1976 Act defines publication in very similar terms:

"Publication" is the distribution of copies or phonorecords of a work to the public by sale or other transfer or ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

17 U.S.C. § 101. See Agee v. Paramount Communications Inc., 59 F.3d 317, 325 (2d Cir. 1995).

Sale, rental, and distribution of films for money all constitute "publication" under both the 1909 and the 1976 Acts. The term "commercially produced" means that the films were produced and introduced into commerce for money, through sale, lease, or rental. Accordingly, 26 of the dances have been published.

Both plaintiff and defendants agree that to establish ownership of copyright in a published work, a claimant must show that the work was published with adequate notice of copyright. Proof of authorship may be sufficient to establish copyright ownership in an unpublished work. With respect to a published work, however, the claimant has the burden of showing that the work was published in compliance with statutory formalities, and in particular, that it carried the requisite copyright notice.

It is well established that "[t]o show ownership of a valid copyright, [the party claiming copyright ownership] . . . bears the burden of proving . . . that he has complied with the requisite statutory formalities." Saenger Org., Inc. v. Nationwide Ins. Licensing Assoc., Inc., 119 F.3d 55, 59 (1st Cir. 1997); see Geoscan, Inc. of Texas v. Geotrace Tech., Inc. 226 F.3d 387, 393 (5th Cir. 2000); Montgomery v. Noga, 168 F.3d 1282, 1289 (11th Cir. 1999). See also Broadcast Music, Inc. v. Patsal Corp., 1993 WL 464689, at *4 (S.D.N.Y. 1993); Broadcast Music, Inc. v. Hearst/ABC Viacom Ent. Servs., 746 F. Supp. 320, 328 n. 7 (S.D.N.Y. 1990).

With respect to published works, the affixation of adequate notice was the principal "statutory formality" required for copyright protection prior to March 1, 1989. On March 1, 1989, United States adherence to the Berne Convention abolished affixation of notice as a statutory requirement for securing copyright. The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853 § 7 (1988) (effective March 1, 1989); 17 U.S.C. § 401 (a) ("[A] notice of copyright may be placed on publicly distributed copies . . . .") (emphasis added). But works published prior to March 1, 1989 did not secure statutory copyright protection unless adequate copyright notice was affixed to the published copies. 17 U.S.C. § 10 (1976 ed.) ("Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright . . ."); 17 U.S.C. § 405 (a) (stating notice requirements for works published before the effective date of the Berne Convention Implementation Act of 1988).

III. Certificates of Copyright Registration

Both sides have procured certificates of copyright in dances described in the applications as unpublished works. Protas has 30*fn8 such certificates, and defendants 12. Defendants have also obtained certificates of copyright renewal for three dances described as published works.

The 1976 Copyright Act, 17 U.S.C. § 410 (c) provides that:

In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.
  It is undisputed that the Copyright Office has no record of any copyright registration made prior to 2000 for any of the dances at issue. In 2000 and 2001, Protas obtained certificates of copyright registration for 30 dances as unpublished works. Of these 30 certificates, 17 are for pre-1956 works: Flute of Krishna, Tanagra, Heretic, Lamentation, Primitive Mysteries, Satyric Festival Song, Frontier, Deep Song, Every Soul is a Circus, El Penitente, Punch and the Judy, Herodiade, Appalachian Spring, Cave of the Heart, Errand into the Maze, Night Journey, and Diversion of Angels. The remaining 13 certificates are for post-1956 works: Embattled Garden, Acrobats of God, Phaedra, Circe, Cortege of Eagles, The Owl and the Pussycat, Judith, Phaedra's Dream, The Rite of Spring, Tangled Night, Temptations of the Moon, Night Chant, and Maple Leaf Rag.*fn9

A preponderance of the credible evidence shows that 18 of the 30 dances registered by Protas as unpublished had been published at least seven years before the Copyright Office received any applications for copyright registration from him. Those 18 dances are: Flute of Krishna, Heretic, Lamentation, Frontier, El Penitente, Appalachian Spring, Herodiade, Cave of the Heart, Night Journey, Errand into the Maze, Diversion of Angels, Acrobats of God, Circe, Cortege of Eagles, The Rite of Spring, Temptations of the Moon, Night Chant, and Maple Leaf Rag. Accordingly, Protas' certificates of registration for these 18 works do not constitute prima facie evidence of the validity of the copyrights or of the facts stated in the certificates. 17 U.S.C. § 410 (c).

Moreover, the evidence is clear and convincing that Protas procured 15 of these certificates by deliberately misrepresenting the publication status of the dances. Those dances are: Frontier, El Penitente, Errand into the Maze, Herodiade, Appalachian Spring, Cave of the Heart, Night Journey, Diversion of Angels, Acrobats of God, Circe, Cortege of Eagles, The Rite of Spring, Temptations of the Moon, Night Chant, and Maple Leaf Rag. By February 1993, Protas knew that those 15 dances had been published. Yet, more than five years later, he applied for and obtained certificates of copyright registration for the choreography of these dances as unpublished works. Protas' representations to the ...


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