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United States District Court, S.D. New York

March 2, 2004.

MARIKA ZOLL, Plaintiff -against- RUDER FINN, INC. and JORDACHE ENTERPRISES INC., Defendants; MARIKA ZOLL, Plaintiff -against- JORDACHE ENTERPRISES INC. Defendants

The opinion of the court was delivered by: CHARLES HAIGHT, District Judge


This is the fifth motion for a summary disposition made by Defendants in the above captioned cases. Both actions concern the production and distribution of two promotional videotapes, referred to as Plaintiff's exhibits 21 and 23 in 01 Civ. 1339 ("Zoll I"), and the display of exhibit 21 at a trade-show in February 2001. These two videotapes feature images of Plaintiff that were recorded in 1978. The images were first used during an advertising campaign for Page 2 Jordache that ran in 1978 and 1979. The 1978 images were later repackaged and used to advertise Jordache products in 1997 and again in 2000 and 2001.

The cases were consolidated for trial, by order of this Court, on October 2, 2003. 2003 WL 22283830 (S.D.N.Y., Oct. 2, 2003) (the "October 2 Order"). Prior to that Order, this Court and Magistrate Judge Francis issued numerous Orders in these cases. See 2003 WL 22283830 (S.D.N.Y., Oct. 2, 2003); 2003 WL 1964054 (S.D.N.Y., April 24, 2003); 2002 WL 31873461 (S.D.N.Y., Dec. 24, 2002); 2002 WL 485733 (S.D.N.Y., March 29, 2002); 2002 WL 226692 (S.D.N.Y., Feb. 14, 2002); 2001 WL 1550943 (S.D.N.Y., Dec. 5, 2001). After the October 2 Order, this Court filed another Order dealing with these actions that is reported at 2004 WL 42260 (S.D.N.Y., Jan. 7, 2004).

  The facts underlying this litigation are set forth in these prior decisions. See e.g. 2001 WL 1550943 (S.D.N.Y., Dec. 5, 2001), 2002 WL 31873461 (S.D.N.Y., Dec. 24, 2002), and 2003 WL 1964054 (S.D.N.Y., April 24, 2003). Familiarity with these and the other cited decisions is assumed.

  Presently before the Court is Defendants' Motion for Summary Judgment seeking to dismiss Plaintiff's common law claims for trespass on the basis of laches and equitable estoppel. For reasons set forth below, Defendants' motion is denied.


  Legal Standard

  This is a motion for summary judgment pursuant to Federal Rule of Civil Procedure 56. Rule 56 provides that a court shall grant a motion for summary judgment "if the pleadings, Page 3 depositions, answers to interrogatories, and admissions on file, together with affidavits . . . show that there is no genuine issue as to material fact and that the moving party is entitled to a judgment as a matter of law." See also Celotex Corp. v. Catrett, 477 U.S. 317 (1986). "The party seeking summary judgment bears the burden of establishing that no genuine issue of material fact exists and that the undisputed facts establish her right to judgment as a matter of law." Rodriguez v. City of New York, 72 F.3d 1051, 1060-61 (2d Cir. 1995). In determining whether a genuine issue of material fact exists, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Gibbs-Alfano v. Burton, 281 F.3d 12, 18 (2d Cir. 2002).


  In their Memorandum of Law in Support of Summary Judgment ("Defendants' Motion"), Defendants assert that Plaintiff's common law claims are barred by the equitable doctrine of laches. Defendants' Motion at 10. Defendants claim that Plaintiff should have brought action against Jordache in or soon after 1978 for uses of the 1978 images in 1978 and 1979. By failing to bring action then, Defendants contend that they have been prejudiced by the loss of a waiver that they claim Plaintiff signed in 1978, by the death of Wilhelmina Cooper, who was allegedly Plaintiff's agent in 1978, and because Plaintiff's failure to bring an action in 1978 led Defendants to believe that their rights to use the 1978 images of Plaintiff were unencumbered.

  The affirmative defense of laches "is applied where it is clear that a plaintiff unreasonably delayed in initiating an action and a defendant was unfairly prejudiced by the delay." Robins Island Preservation Fund, Inc. v. Southold Dev. Corp., 959 F.2d 409, 423 (2nd Cir., 1992). Page 4 Laches is an equitable defense that generally plays the same role performed by statutes of limitation in cases at law. Because claims at law are almost always governed by statutory time-limitations, the Supreme Court has stated that "application of the equitable defense of laches in an action at law would be novel indeed." County of Oneida v. Oneida Indian Nation, 470 U.S. 226, 245 (1985). But see Robins Island Preservation Fund, 959 F.2d at 423 (noting that laches may be applicable "to ancient land claims which do not implicate broader federal policy.").

  This is a case at law. This Court will not take a novel action in this case by considering laches defenses against Plaintiff's common law and statutory claims. The Court's refusal to cross the law-equity divide in this case is particularly appropriate given the fact that it has, on numerous occasions, given consideration to and taken action on Defendants' claims that Plaintiff's causes of action are time-barred. See e.g. 2004 WL 42260, at *2 (S.D.N.Y., Jan. 7, 2004); 2003 WL 22283830, at *9 (S.D.N.Y., October 2, 2003); 2002 WL 31873461, at *7 (S.D.N. Y., Dec. 24, 2002); 2002 WL 485733, at *4 (S.D.N.Y., March 29, 2002).

  Those of Plaintiff's original claims that remain in the consolidated action have survived this gauntlet. As survivors, the Court has already held, by a careful review of the relevant statutory schemes, that Plaintiff's remaining claims based on California law and New York Statutes do not compromise the shared group of rights and interests that statutes of limitation and the doctrine of laches each protect within their respective domains. Having reached such findings on the law, the Court need not and will not consider parallel and exclusive equitable remedies.

  On this basis, Defendants' motion for summary judgment on the basis of laches is denied. Page 5

  Equitable Estoppel

  "[T]to assert equitable estoppel, a defendant must show that (1) plaintiff's misleading communication, with plaintiffs knowledge of the true facts, prompted the defendant to infer that the plaintiff would not enforce its rights against the defendant; (2) the defendant relied on that conduct; and (3) the defendant would be prejudiced if the plaintiff were allowed to bring suit." Emmpresa Cubana Del Tabaco v. Culbro Corp., 213 F. Supp.2d 247, 276 (S.D.N.Y., 2002). Defendants' assertion of equitable estoppel in this case is also based on Plaintiff's alleged failure to protect her rights relating to the 1978 images in 1978. Defendants claim that Plaintiff's failure to bring suit led Defendants to the allegedly reasonable assumption that Defendants did not need to seek Plaintiff's consent to use the images in 2000 and 2001.

  The facts surrounding Defendants' decision to use the 1978 images in 2000 and 2001 are, if settled, not captured in their entirety by Defendants' Motion. As this Court pointed out in its December 2002 Order, reported at 2002 WL 31873461 (S.D.N.Y., December 20, 2002), Jordache was, when first making the decision to re-use the 1978 images in 1997, operating under the mistaken belief that Plaintiff was dead. Very much alive, Plaintiff sought compensation from Jordache in 1997 for the then new uses of the 1978 images. Thus, by 2000 and 2001 Defendants were on notice that Plaintiff was alive, that Plaintiff believed that she had a right to compensation for any uses of the 1978 images, and that Plaintiff would seek compensation for any present and future uses of the 1978 images.

  Defendants argue that Plaintiff's attempts to protect her rights to the 1978 images in 1997 are irrelevant. Reply at 3-4. Defendants' claims in this regard center on their laches defense. Equitable estoppel claims, by contrast to laches defenses, do not focus on the filing of a lawsuit Page 6 as the only way to protect rights and interests. See Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 704 (2d Cir. 1970) ("As distinguished from laches, acquiescence constitutes a ground for denial of relief only upon a finding of conduct on the plaintiffs part that amounted to an assurance to the defendant, express or implied, that the plaintiff would not assert his trademark rights against the defendant."). Even if Plaintiff was acquiescing to uses of the 1978 images prior to 1997, since 1997 she clearly has not. She did choose to protect her rights by corresponding with Jordache in 1997 rather than by filing a lawsuit in 1997. This choice, however, did not offer Defendants any assurance that she would not assert her rights by filing a lawsuit if they chose to continue using the 1978 images without her consent.

  Defendants also claim that the correspondence relating to the 1997 re-release only serves to prove "that Jordache believed that it had full legal rights to use the 1978 commercial footage." Reply at 4-5. Of course, this begs the question. A key issue at trial will be whether this belief was legally valid. That Jordache took the time to investigate Plaintiff's claims in the 1997 correspondence and to form this belief about its rights to use the 1978 images does, however, demonstrate that the issues central to the present litigation were reinvigorated in 1997, well before Defendants embarked upon the activities that give rise to these lawsuits.

  For these reasons, Defendants' motion for summary judgment based on equitable estoppel is denied.

  Plaintiffs Motion for Sanctions

  In her response to the present motion, Plaintiff moves for sanctions against Defendants and Defendants' counsel for making frivolous motions and for unreasonable delay. It is this Page 7 Court's normal practice to reserve consideration of sanctions motions until the case in question has reached the end of its life before the Court. In keeping with that practice, the Court reserves decision on Plaintiff's motion for sanctions.



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