United States District Court, S.D. New York
March 15, 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
The above captioned matters are consolidated and scheduled for trial
commencing on March 22, 2004. This Order resolves numerous in
limine motions brought by Plaintiff and Defendants on papers and
orally at a hearing held on March 9, 2004. A transcript was made of this
hearing and the Court will make reference to it in this Opinion.
The above captioned cases, Zoll I and Zoll II by
docket date, have been the subject of numerous prior decisions by this
Court and by Magistrate Judge Francis. See 2004 WL 405938
(S.D.N.Y., March 3, 2004); 2004 WL 42260 (S.D.N.Y., Jan. 7,2004); 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). Familiarity with these
decisions and the facts underlying these matters is assumed.
I. Plaintiffs Claims for Damages
Plaintiff has only two surviving claims, one for violations of New York
Civil Rights Law §§ 50 and 51 and one for trespass under California
common law. These claims derive from the production and distribution of
two videotapes, labeled as Plaintiffs exhibits 21 and 23, and the display
of exhibit 21 at a trade show in February 2001 (referred to at the
hearing as the "Magic Show"). Both of these videotapes feature images of
Plaintiff first recorded in 1978. Previously dismissed are claims arising
from broadcasts of exhibit 23 and earlier broadcasts of the 1978 images
in 1978, 1979, and 1997. After the hearing conducted on March 9, 2004 it
is clear to the Court that some general clarification of law relating to
Plaintiffs claims for damages is in order.
A. Law Governing the Relevance of Sales Evidence in Relation to
Claims for Damages
It is important to provide some clarification of what law will guide
the Court's evaluations of relevance with respect to evidence Plaintiff
proposes to present in support of her claim for damages.
Evidence showing an objective market value for the use of Plaintiff's
images in exhibits 21 and 23 would, obviously, be relevant. Also
potentially relevant would be evidence relating to sales of Jordache
products. In order to demonstrate how such evidence might be evaluated
for relevance at trial, it is useful to draw an analogy between the case
at bar and copyright suits generally and copyright suits that pursue
damages for "indirect profits" in particular. See. e.g., Davis v.
Gap, Inc., 246 F.3d 152 (2d. Cir., 2001); Business Trends
Analysts, Inc. v. Freedonia Group, Inc., 887 F.2d 399, 403 (2d. Cir.,
1989); Burns v. Imagine Films Entm't, Inc., Copy. L Rep.,
92-CV-243S, 2001 U.S. Dist. LEXIS 24653 (W.D.N.Y., August 23, 2001);
Mackie v. Rieser, 296 F.3d 909 (9th Cir., 2002). While copyright
cases are controlled by statute and Plaintiffs claims are under
California common law, there is a close enough logical analogy between
the two that the well-developed law in the copyright field can provide
important guidance to the Court and the parties in this case.
In a copyright action, a plaintiff may pursue as damages direct and
indirect profits made by a defendant through the alleged violations. To
make such a claim, however, a plaintiff must show a "causal connection
between the infringement and the defendant's profits." Davis,
246 F.3d at 159. See also Mackie, 296 F.3d. at 915.
Davis is particularly applicable in this case. There, the Second
Circuit upheld the district court's grant of summary judgment in favor of
defendant on plaintiffs claims for damages in the amount of defendant's
gross profits. The court of appeals indicated that damages based on
profits with a closer logical nexus to the alleged violations might have
survived, but concluded that even this more conservative claim would have
required a logical or evidentiary connection between the alleged
violations and defendant's profits. Had this connection been made, the
Second Circuit pointed out, the burden shifting
procedure set forth in 17 U.S.C. § 504(b) would have taken
hold, requiring defendant to "prove its deductible expenses and elements
of profits from those revenues attributable to factors other than the
copyrighted work." Davis 246 F.3d at 160.
While the copyright statute does not apply to this case, the factual
analogy between this case and Davis, where a clothes
manufacturer was alleged to have violated a copyright by using an image
in advertising material, is very close indeed. The evidentiary standards
imposed by the Second Circuit in Davis bear a sensible and
logical resemblance to this case. Thus, the Court intends to conduct the
trial commencing in this case on March 22, 2004 in a way broadly
consistent with the standards and procedures described in Davis
and the other cases cited above.
B. Law Governing Plaintiff's Ability to Recover Damages under the
New York Civil Rights Law
Damages from claims based on New York Human Rights Law § 51 "are
designed primarily to compensate for injury to feelings." Lerman v.
Flynt Distributing Co., 745 F.2d 123, 141 (2d Cir., 1984). Under the
law of this circuit, Plaintiff Zoll's potential recovery on her right to
privacy claim under §§ 50 and 51 of the New York Civil Rights Law
will, in all likelihood, be limited to a nominal amount. The Second
Circuit made that plain in Lerman v. Flynt Distributing Co.,
745 F.2d 123, 141 (2d Cir. 1984):
In any event, damages under the New York statute
often are only nominal since they are designed
primarily to compensate for injury to feelings.
See Lombardo v. Doyle. Dane and Bernbach,
Inc., 58 A.D.2d 620, 621, 396 N.Y.S.2d 661
(2d Dep't 1997). Applying California law on facts
somewhat analogous to those in the instant case,
$25,000 was found to be "substantial compensation
for mental anguish." Clark v. Celeb. Publ.
Inc., 530 F. Supp. 979, 983 (SJXN.Y. 1981).
See also Pirre v. Printing Developments,
468 F. Supp. 1028, 1038 (S.D.N.Y. 1979) (extremely
sensitive plaintiff entitled to no more than
$45,000 for mental anguish); Myers v. U.S.
Camera Publ. Corp., 9 Misc.2d 765, 768,
167 N.Y.S.2d 771 (1957) ($1,500 total damages for
publishing unauthorized full body nude photograph
In Lombardo, the first New York case the Second Circuit cited
in Lerman, the Appellate Division said:
In New York there is a distinction between the
statutory right which protects living persons from
commercial exploitation of their names and
pictures without their written consents, as
embodied in sections 50 and 51 of the New York
Civil Rights Law, and the common-law property
right in one's public personality. The statutory
right is deemed a `'right of privacy and is based
upon the classic right of privacy's theoretical
base, which is to prevent injury to feelings.
Accordingly, in most cases where damages have been
awarded under the Civil Rights law, they have been
58 A.D.2d at 621. Lombardo involved an advertising agency's
unauthorized use in an advertisement of a look-alike actor who imitated
the conducting style of a popular bandleader. Plaintiffs property
interest claim was viable, the Appellate Division continued, because it
alleged "that the imitation is completely unfair, amounts to a deception
of the public, and thus exploits the respondent's property right in his
public personality." Id. at 622.
Subject to any particular proof that the Plaintiff may offer, it would
seem that the amount of damages that Plaintiff may recover on her New
York Civil Rights Law claim is limited and that the Court has supervisory
responsibility to ensure that the final award is reasonable. See
Lerman, 745 F.2d at 141 (reversing award of damages under §§ 50
and 51; "[i]t cannot seriously be contended that Ms. Lerman's lacerated
feelings are worth anything close to $7 million.").
II. Plaintiff's Motion to Amend the Complaint in Zoll
In papers filed and served on March 9, 2004 Plaintiff seeks to amend her
complaint in Zoll II by adding "conversion of her personal
property" wherever trespass is alleged as a cause of action. March 9
Motion at 2. Plaintiffs motivation for this late change derives from
Defendants' proposed jury instructions, which treat Plaintiffs trespass
claims under California law as claims for tortious interference with
rights in land. Id. at 1. Plaintiffs concern is that discussion
of land rights and intrusion upon land will confuse the jury.
Id. The Court agrees. In the Court's opinion, however, another
amendment of the complaint is not necessary.
It has been clear since at least October 2, 2003 that Plaintiffs
trespass claims are for alleged violations of her rights of publicity.
See Zoll v. Ruder Finn, 02 Civ. 3652, 2003 WL 22283830, at
*10-*11 (S.D.N.Y., Oct. 2, 2003). "Trespass" is an accepted form of
action to recover for violations of rights of publicity under
California law. See, e.g., Winter v. DC Comics, 30 Cal.4th 881,
888 (Cal., 2003); Comedy III Productions, Inc. v. Gary Saderup,
Inc., 25 Cal.4th 387, 405 (Cal., 2001). Given this case law, there
is no reason to accommodate another request to amend. The concerns shared
by Plaintiff and the Court arising from Defendants' proposed jury charge
can be remedied by appropriate jury instructions.
Plaintiffs motion to amend is denied. By this Order, the parties are
directed to file and serve modified proposed jury instructions consistent
with this ruling by 12:00 noon on March 19,
2004.*fn1 Courtesy copies of these documents should be provided to
chambers by the same deadline.
III. Plaintiffs Motion to Testify as to the Value to Herself of
Counsel for Plaintiff requests that she be allowed to testify "as to
the value of her likeness, her images, to herself, assuming that [she]
can't establish a market value" for the images. Tr. at 11. Counsel for
Defendants concedes, indeed he asserts, that there is a market value for
the 1978 images. Tr. at 12. He further concedes that this value is
greater than zero. Tr. at 15. Defendants propose to present expert
witness testimony relating to the market value of these images. Plaintiff
is free to do the same. Assuming that reliable evidence establishing a
market value for the 1978 images is made available to the jury at trial,
there is no justification for Plaintiffs proposal that she be allowed to
offer wholly subjective opinions on that question. Testimony of this sort
would not provide the best evidence and would be both irrelevant and
prejudicial. Plaintiffs motion is denied.
This ruling does not purport to limit Plaintiffs ability to testify in
support of her claim for damages under New York Civil Rights Law. Damage
awards based on violations of New York Civil Rights Law § 51 "are
designed primarily to compensate for injury to feelings."
Lerman, 745 F.2d at 141. As a result, "[a]warding damages under
New York Civil Rights Law § 51 and
similar statutes is a difficult question at best. Objective
standards for measuring injury resulting from an invasion of privacy or
an appropriation of one's name, likeness, or reputation are unlikely to
be available." Big Seven Music Corp., 554 F.2d at 512. Plaintiff
may, then, offer relevant testimony relating to the subjective effects on
her of the uses of her images that are relevant in these actions. As a
background matter, Plaintiff may also make reference, in this context
only, to the 1997 commercials and her correspondence with Jordache
relating to those commercials. Plaintiff may not comment on her
reactions to these uses of her image or her reactions to any uses of the
1978 images other than those presented in exhibits 21 and 23.
IV. Defendants' Motion to Preclude Evidence Relating to
Jordache's Sales Numbers
Counsel for Defendants moves under Federal Rules of Evidence 401, 402,
and 403 to exclude from trial reference to and evidence of the value of
Jordache Enterprises' gross sales, Tr. at 20-27,36, and the value of
sales associated with Jordache's "Vintage Line."
It is immediately apparent that the amounts of Jordache's sales to
retailers have no possible relevance to Plaintiffs privacy claim under
the New York statute, which creates a remedy for "injury to feelings" and
can justify only nominal damages. See Lerman, 745 F.2d at 141
(reversing award of damages under §§ 50 and 51; "[i]t cannot seriously
be contended that Ms. Lerman's lacerated feelings are worth anything
close to $7 million."). Informing the jury about Jordache's multi-million
dollar sales carries the unacceptable risk of misleading the jury into
thinking that such impressive dollar amounts have some connection to the
should be awarded for Plaintiffs "lacerated feelings," when in fact
no such connection could exist.
As for Plaintiffs publicity claim, the amount of Jordache's sales might
be relevant if Plaintiff can show a causal connection between the
Defendants' actionable unauthorized uses of her image and specific sales,
a showing required by Second Circuit authority. See, e.g., Big Seven
Music Corp., 554 F.2d at 510 ("In general damages may be recovered
only if there is a necessary, immediate and direct causal connection
between the wrongdoing and the damages."). In Big Seven Music,
defendant John Lennon, the late Beatle, counterclaimed against the
plaintiff music publisher on the theory that plaintiffs unauthorized
release of a Lennon album diminished the sales of an album subsequently
released by Lennon. The district court awarded Lennon damages based on a
finding that Lennon's album "would have sold 100,000 more units (records
or tapes) had the Levy album not been released." 554 F.2d at 508. The
Second Circuit rejected that finding as clearly erroneous and reversed
the damages award, commenting that "the evidence that release of the
`Roots' album injured `Rock `n' Roll' sales in an amount as high as
100,000 units is very thin indeed.") Id. at 510. See also,
Davis, 246 F.3d at 159 (upholding district court's decision to
exclude evidence relating to defendant's gross profits on a claim for
copyright violation*fn2 because plaintiff failed to show a "causal
connection between the infringement and the defendant's profits.").
Presentation at trial of Jordache's sales numbers, some of which are
quite impressive, would also be highly and unfairly prejudicial to
Defendants. Evidence of wealth alone invites the
jury to award Plaintiff sums based on the depth of Jordache's
pockets, rather than on the value contributed to Defendants' businesses
by the use of the 1978 images or actual losses suffered by Plaintiff.
Without sufficient evidence linking Jordache's alleged success to
Defendants' alleged wrongs, descriptions of what is in Jordache's wallet
do not pass muster under Rule 403, F.R.Evid. See e.g. Lerman,
745 F.2d at 141 (discussing and demonstrating the risk of prejudice in
jury awards for suits based on violations of rights to publicity and New
York Civil Rights Law §§ 50 and 51.)
Finally, reference to Jordache's sales numbers would pose a significant
risk of confusing the jury. Plaintiffs surviving causes of action are
limited to the production and distribution of exhibits 21 and 23 and the
display of exhibit 21 at the "Magic Show." These were neither the only
uses of the 1978 images by Jordache nor were these images the only
elements of Jordache's marketing and advertisement plans. Without
specific evidence linking Plaintiffs limited claims based on exhibits 21
and 23 to sales results, there is a significant risk that the jury will
be misled and confused into concluding on speculation that these limited
uses of the 1978 images are predominate or even significant causes of
Jordache's successes or failures. This may be the case, but Plaintiff
will need to prove that it is rather than just say so, or worse, imply
that it is.
The circumstances under which the amount of a defendant's sales would
be probative of a plaintiffs property damages may be illustrated by a
hypothetical case. Assume that an American bicycle manufacturer has had
only modest commercial success, selling 50 bicycles a month to retailers
for the totality of its business life. Two weeks after the famous
bicyclist Lance Armstrong wins his sixth Tour de France, the manufacturer
places in the national media an unauthorized and altered photograph
depicting Armstrong, astride a bicycle bearing the
manufacturer's, flashing the V-for-victory sign. The manufacturer's
monthly sales immediately increase to 1,000 bicycles per month, until
Armstrong's counsel obtains an injunction against what the
Lombardo court would call an illicit exploitation of Armstrong's
"property right in his public personality." If these facts were proved, a
jury could draw a reasonable inference about the value of Armstrong's
property right, and consequently the amount of damages to which he would
In the case at bar, if comparable connective evidence is available to
the Plaintiff, the volume of Jordache's sales to retailers may become
probative on the issue of her damages on this claim. However, Plaintiff
must demonstrate such a connection between the Defendants' actionable
uses of her image and specific sales to allow evidence of sales volume to
come before the jury. Until such a connection is established, Plaintiffs
counsel is directed not to mention the amount of Jordache's sales in
opening to the jury; Plaintiff is directed not to refer to the subject in
her testimony; and documents evidencing the volume of Jordache's sales,
including Plaintiffs exhibits 14, 16, and 19, will not be received into
Plaintiff may move the Court to reconsider this ruling if she can
present evidence making a direct connection between her surviving claims
based on exhibits 21 and 23 and sales of Jordache products. Given this
caveat, the parties are advised to proceed with their agreed upon plan to
take the deposition testimony of Edward Benaderet.
V. Defendants' Motion to Exclude the Testimony of Les
Defendants move to exclude the testimony of Les Eisenstein. Tr. at 27.
In response to this motion, Plaintiff withdrew Mr. Eisenstein as a
witness. Tr. at 28. Defendants' motion is therefore denied as moot.
VI. Defendants' Motion to Exclude Plaintiffs Exhibit 15
Defendants move to exclude Plaintiffs exhibit 15 under Federal Rules of
Evidence 402 and 802. Tr. at 28-29. The Court will reserve its ruling on
this motion. Defendants should reassert their motion at trial if and when
it is appropriate or necessary to do so.
Defendants' Motion to Exclude Plaintiffs Exhibit 51
Defendants move to exclude Plaintiffs exhibit 51 under Federal Rules of
Evidence 402 and 403. Tr. at 32, 35. The Court will reserve its ruling on
this motion. Defendants should reassert their motion at trial if and when
it is appropriate or necessary to do so.
VII. Defendants' Motion to Exclude Plaintiffs Exhibit 53
Defendants move to exclude Plaintiffs exhibit 53 under Federal Rules of
Evidence 402 and 802. Tr. at 33. During a colloquy with the Court,
Defendants withdrew their motion based on Rule 802. Tr. at 34. The Court
will reserve its ruling oh the remaining Rule 402 motion. Defendants
should reassert their motion at trial if and when it is appropriate or
necessary to do so.
IX. Defendants' Motion to Exclude Plaintiffs Exhibit 52
Defendants move to exclude Plaintiffs exhibit 52 under Federal Rules of
Evidence 402 and 403. Tr. at 36. Plaintiffs exhibit 52 is a letter
documenting the "top ten" retailers of Jordache products. This list is
not relevant of itself. If Plaintiff can establish, by reliable evidence,
that any of the retailers listed in the letter was exposed to or directly
affected by the production and distribution of exhibit 21 or exhibit 23
or the display of exhibit 21 in February 2001, then that retailer's
appearance on the list may become relevant. Absent such a foundation,
however, exhibit 52 is irrelevant, prejudicial, and confusing for the
same reasons discussed above in relation to the motion to exclude sales
evidence. On this basis, Defendants' motion to exclude exhibit 52 is
X. Defendants' Motion to Exclude Plaintiffs Exhibit 64
Defendants move to exclude Plaintiffs exhibit 64 under Federal Rule of
Evidence 402. Tr. at 36-37. This motion was denied at the March 9, 2004
hearing. Tr. at 37. This Order does not disturb that ruling.
XI. Defendants' Motion to Enter into Evidence the Deposition
Testimony of Edward Benaderet
At the March 9, 2004 hearing the Court granted on consent Defendants'
motion to offer into evidence the deposition testimony of Edward
Benaderet Tr. at 42. Given the Court's rulings in this Order pertaining
to the exclusion of evidence relating to the value and volume of sales
attributable to Jordache Defendants may elect not to offer into evidence
either the testimony of Mr. Benaderet or Defendants' exhibit M, which is
an accounting report produced by Mr.
Benaderet. The Court cannot advise Defendants on these questions.
In the interest of prudence, however, the Court will remind the parties
that its ruling to exclude evidence relating to sales may be challenged
and reversed if Plaintiff is able to produce reliable evidence that
supports a logical connection between her causes of action and Jordache
XII. Defendants' Motion to Exclude References to Transportation
Services Provided to Howard Goldstein by Defendants
At the March 9, 2004 hearing Defendants moved to enter into evidence
the deposition testimony of Howard Goldstein in lieu of his live
testimony at trial. Tr. at 44. That motion was denied. Id.
Defendants then moved to bar Plaintiff and Plaintiffs counsel from
making reference to any transportation provisions Defendants might
make for Mr. Goldstein in aid of his appearance to offer testimony
at trial. Counsel for Plaintiff agreed that he would not refer to
these arrangements. The Court grants Defendants1 motion on consent.
It is SO ORDERED.