The opinion of the court was delivered by: Conner, Sr. D.J.
Plaintiff Richard P. Neimark brings this action against the law firm of Ronai & Ronai, LLP for copyright infringement pursuant to 17 U.S.C. § 501 and unfair competition pursuant to15 U.S.C. § 1125(a). Plaintiff alleges that he owns the copyright in a certain cartoon drawing that defendant displayed on its website. Defendant contends, however, that plaintiff's copyright is not valid and therefore moves for summary judgment pursuant to FED. R. CIV. P. 56. For the following reasons, defendant's motion is denied.
The relevant facts are undisputed. Plaintiff is an attorney licensed to practice law in the State of New York. His practice is devoted to personal injury law and is operated out of New City, New York. (See Complt. ¶¶ 6-7, 11.) Defendant is a personal injury law firm owned and operated by Peter Ronai and Holly Ostrov Ronai, both of whom are licensed to practice law in New York, with offices in White Plains, New York and Manhattan. (See id. ¶¶ 8-10, 12; http://www.ronaiandronai.com.)
Over the years, plaintiff has advertised his law practice using a cartoon drawing of a hospital patient fully bandaged lying in a hospital bed with one leg elevated by a sling (the "Drawing"). (See Complt. ¶ 13, Ex. A.) He first published the Drawing on July 1, 1988 and again in 1989 in the Rockland County Yellow Pages. (See id., Ex. C; H. Ronai Decl., Exs. A, B; Pl. Mem. Opp. Summ. J. at 2.) The Drawing bore no copyright notice in either publication. (See H. Ronai Decl., Exs. A, B; Pl. Mem. Opp. Summ. J. at 2.)
On January 30, 1990, plaintiff registered the Drawing with the United States Copyright Office and received a Certificate of Copyright Registration. (See Complt., Ex. C.) Plaintiff thereafter placed advertisements that featured the Drawing in the Rockland County Yellow Pages in 1990, 1991, 1992 and 1993. (See Pl. Mem. Opp. Summ. J. at 2; H. Ronai Decl., Ex. C; H. Ronai Reply Decl., Ex. 1.) In contrast to the 1988 and 1989 advertisements, the 1990, 1991 and 1992 advertisements contained a copyright symbol, i.e., "(c)," at the lower left corner of the page, but did not indicate the year of first publication or the name of the copyright owner. (See H. Ronai Decl., Ex. C; H. Ronai Reply Decl., Ex. 1.) The copyright notice in the 1993 advertisement consisted of the copyright symbol, the date and plaintiff's name. (See H. Ronai Reply Decl., Ex. 1.) Plaintiff presently displays the Drawing on each page of his website. See http://www.neimarklaw.com. Each copy contains the copyright symbol accompanied by the date of publication and his name, except for the copy on the homepage, which contains no notice at all. See id. The copies of the Drawing on plaintiff's website differ slightly from the copies in the Yellow Page advertisements in that they contain a medical chart at the foot of the hospital bed that reads, "Rx Call Neimark," while the latter contain a chart with five rows, eight columns and several check marks. See id.
At some point prior to August 17, 2006, a cartoon drawing substantially identical to the one found on plaintiff's website appeared on the last page of defendant's website. (See Complt. ¶ 25; H. Ronai Decl., Ex. D.) Instead of the inscription "Rx Call Neimark," the drawing on defendant's website featured a medical chart that read, "Call Ronai & Ronai." (See Complt., Ex. B; H. Ronai Decl., Ex. D.) Defendant claims that it hired a college student to create its website and that his whereabouts are currently unknown. (See Def. Reply Mem. Supp. Summ. J. at 5.)
On August 17, 2006, plaintiff served defendant with the Summons and Complaint in the instant action. Defendant immediately removed the image from its website and unsuccessfully attempted to resolve the matter with plaintiff's counsel. On November 3, 2006, this Court held a pre-motion conference and granted defendant permission to file the present motion for summary judgment.
Under FED. R. CIV. P. 56, summary judgment may be granted where there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. See FED. R. CIV. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-50 (1986). The court's role at this stage of the litigation is not to decide issues of material fact, but to discern whether any exist. See Gallo v. Prudential Residential Servs., L.P., 22 F.3d 1219, 1224 (2d Cir. 1994). The burden rests on the movant to demonstrate the absence of a genuine issue of material fact; see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) and, in deciding whether summary judgment is appropriate, the court resolves all ambiguities and draws all permissible factual inferences against the movant. See Anderson, 477 U.S. at 255. Nevertheless, to defeat summary judgment, the non-movant must go beyond the pleadings and "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). "[S]ummary judgment should only be granted '[i]f after discovery, the nonmoving party "has failed to make a sufficient showing on an essential element of [its] case with respect to which [it] has the burden of proof."'" Hellstrom v. U.S. Dep't of Veterans Affairs, 201 F.3d 94, 97 (2d Cir. 2000) (quoting Berger v. United States, 87 F.3d 60, 65 (2d Cir. 1996) (quoting Celotex Corp., 477 U.S. at 323) (emphasis in original; alterations in original).
II. Copyright Infringement
In order to establish a claim for copyright infringement under 17 U.S.C. § 501, a plaintiff must show that: (1) he owns the copyrights in the work at issue;*fn1 (2) the copyright has been registered in accordance with the statute;*fn2 and (3) the defendant copied constituent elements of the work that are original.*fn3 See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (citing Feist Publ'ns Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)); Chere Amie, Inc. v. Windstar Apparel, Corp., 191 F. Supp. 2d 343, 349 (S.D.N.Y. 2001). The issuance of a certificate of registration for a copyright "is prima facie evidence that the copyright is valid." Fonar, 105 F.3d at 104; see also Chere Amie, 191 F. Supp. 2d at 349. Because plaintiff registered the copyright with the United States Copyright Office and is in possession of a Certificate of Copyright Registration, he has satisfied the first two elements. As to the third element, the parties do not dispute that the cartoon on defendant's website was copied from plaintiff's website and that the two are substantially identical. Accordingly, plaintiff has established a prima facie case for copyright infringement.
As an affirmative defense to plaintiff's prima facie case, defendant contends that plaintiff first published the Drawing without a copyright notice in 1988 -- prior to the enactment of the Berne Convention Implementation Act of 1988 (the "Berne Convention"), which obviated the requirement of a copyright notice -- and, consequently, injected the Drawing into the public domain and thus forfeited his exclusive copyright in it. Defendant is correct that works published without a copyright notice prior to the enactment of the Berne Convention on March 1, 1989 are injected into the public domain and thus lose any copyright protection to which they might otherwise have been entitled. See Shapiro & Son Bedspread Corp. v. Royal Mills Assocs., 764 F.2d 69, 72 (2d Cir. 1985) (citing 17 U.S.C. § 405(a) (1982); 2 M. Nimmer, Nimmer on Copyright § 7.14[A] (1984)); Innovative Networks, Inc. v. Satellite Airlines Ticketing Ctrs., Inc., 871 F. Supp. 709, 720 (S.D.N.Y. 1995); Greenwich Film Productions, S.A. v. DRG Records, Inc., No. 91 Civ. 0546, 1992 WL 279357, at *5 (S.D.N.Y. Sept. 25, 1992) ("For works published prior to March 1, 1989, the effective date of the Berne Implementation Amendments, notice is a condition to protection of the work. Absent notice, the work is forfeited and enters, by ...