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
MEMORANDUM OPINION AND ORDER
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
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.
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,
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
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.,
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
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,
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
On this basis, Defendants' motion for summary judgment on the basis of
laches is denied.
"[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
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
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
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
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.
It is SO ORDERED.
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