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Jackson v. Odenat

United States District Court, S.D. New York

March 24, 2014

YVES MONDESIR, Third-Party Defendant

Ordered Filed: June 12, 2014

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For Curtis James Jackson, III, Tomorrow Today Entertainment, Inc., and G-Unit Records, Inc., Plaintiffs: Michael Cardello, III, MORITT HOCK HAMROFF & HOROWITZ LLP; Karen L. Stetson, GRAYROBINSON, P.A.

For Worldstar Hip Hop, Inc., Worldstar, LLC, WSHH337, LLC, and Defendant/Third-Party Plaintiff Lee Odenat, Defendants: Scott Zarin, Esq., ZARIN & ASSOCIATES P.C.

For Yves Mondesir, Third-Party Defendant: John P. Fazzio, Katherine Braver, FAZZIO LAW OFFICES.

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JOHN F. KEENAN, United States District Judge.

This action arises from Defendant Lee Odenat's allegedly unauthorized use of Plaintiff Curtis Jackson's likeness and intellectual property as well as the intellectual property of Plaintiffs Tomorrow Today Entertainment, Inc. (" Tomorrow Today Entertainment" ) and G-Unit Records, Inc. (" G-Unit Records" ) on Odenat's website,

Odenat has brought third-party claims against Third-Party Defendant Yves Mondesir, alleging that Mondesir held himself out to be Jackson's agent and authorized Odenat's use of Jackson's likeness and Plaintiffs' intellectual property. Odenat seeks contribution from Mondesir on whatever claims Odenat is found liable to Plaintiffs. Odenat also alleges that Mondesir used the URL on a mixtape released by Mondesir without Odenat's authorization.

Plaintiffs filed a supplemental complaint against Defendants Worldstar Hip Hop, Inc.; Worldstar, LLC; and WSHH337, LLC, which are business entities formed by Odenat after Plaintiffs filed their complaint against him. Plaintiffs allege that Odenat made fraudulent transfers to those entities and that the entities are Odenat's alter egos.

Plaintiffs and Defendants now cross-move for summary judgment on all of the claims and affirmative defenses. Mondesir moves for summary judgment or, in the alternative, dismissal of the third-party complaint for failure to satisfy minimal pleading requirements. He also moves for an award of attorney's fees. For the reasons set forth below, Plaintiffs'

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motion is granted in part and denied in part, Defendants' motion is denied in full, and Mondesir's motion is granted in part and denied in part.

I. Background

Plaintiff Curtis Jackson is a hip-hop artist professionally known as " 50 Cent." His 2003 debut album, Get Rich or Die Tryin', and its follow up, The Massacre, have sold over 25 million copies combined. He has also earned a measure of critical acclaim, having been nominated thirteen times for a Grammy Award. (Jackson Decl. ¶ 5.) In addition to his solo career, Jackson is a member of the G-Unit musical group (" G-Unit" ), along with members Tony Yayo and Lloyd Banks. (Id. ¶ 11; First Odenat Dep. 70-71.)

Jackson also works on the business end of the music industry. He is the president of G-Unit Records and Tomorrow Today Entertainment, both Plaintiffs in this action. G-Unit Records produces and markets G-Unit's music and the music of its members, while Tomorrow Today Entertainment owns and operates the website, which covers Jackson, G-Unit, and hip-hop culture and entertainment in general. (Jackson Decl. ¶ ¶ 12, 22.) Jackson owns registered trademarks for " G-Unit" and " This is 50." (Id. ¶ ¶ 13, 23, Exs. 1-2.)

In November 2003, G-Unit Records and Interscope Records (not a party to this action) registered a copyright for a sound recording titled Beg for Mercy, an album released by G-Unit. The registration form noted that the copyright was for " Sound Recording/Pictorial Matter." (Hilderley Decl. Ex. B.) In October 2005, G-Unit Records and Interscope Records registered a copyright for a sound recording titled Thoughts of a Predicate Felon, a Tony Yayo solo album. The registration form noted that the copyright was for " Most Sound Recording/Pictorial Matter." (Id. Ex. D.)

Third-Party Defendant Yves Mondesir is a disc jockey. He goes by the name " DJ Whoo Kid," and has served as a DJ for G-Unit. He also creates mixtapes, or compilations that include the music of various artists, and distributes them to retailers for promotional purposes. (Mondesir Dep. 26-33.) Sometime in 2005, he released a mixtape titled Are You a Window Shopper? that included songs by Jackson. The URL appeared on the very bottom of the back of the mixtape packaging along with " the NEW #1 mixtape site." (Zarin Decl. Ex. I.)

In July 2005, Defendant Lee Odenat launched the website The website has featured hip-hop mixtapes, as well as videos of hip-hop musicians. (Odenat Decl. ¶ 5.) From some time in 2005 until March 2009 (with a several month hiatus during 2007 when the website was inactive), Odenat's website used three different mastheads that included images of Jackson. Although neither party is sure of the precise dates, they have agreed on a rough timeline. The first masthead was displayed from 2005 until mid-2006 and included images of Jackson, Mondesir, and hip-hop artists Lil Wayne, Jim Jones, Jay-Z, Young Jeezy, and Chamillionaire. (Id. ¶ 9, Ex. B.) From mid-2006 through April 2007, the website displayed a different masthead with images of Jackson, Mondesir, G-Unit members Tony Yayo and Lloyd Banks, and hip-hop artist Young Buck. This masthead also included a link labeled " G-Unit Radio." The link led to a webpage displaying thumbnails of the cover art for several mixtapes in a series of mixtapes called " G-Unit Radio." (Id. ¶ ¶ 11-14, Exs. C-D.) The phrase " Click Here To Hear A Sampler" is next to each thumbnail. (Id. Ex. D.) Until April 2007, Odenat charged viewers a fee. From April 2007 until January 2008, the website

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was nonoperational. (First Odenat Dep. 147-48.) After relaunch, the site no longer charged a fee and, until March 2009, used a new masthead that featured images of Jackson, Jay-Z, and hip-hop artist Jim Jones. (Id. at 24-26; Odenat Decl. Ex. E.)

Plaintiffs commenced this action on June 18, 2009, alleging that Odenat violated their intellectual property rights, used Jackson's image without permission, and misled the public into believing Odenat's website was associated with or endorsed by Jackson and G-Unit Records. The allegedly infringed intellectual property includes the " G-Unit" trademark, photographs of Jackson, a photograph of Tony Yayo from Thoughts of a Predicate Felon, and a photograph of Lloyd Banks from Beg for Mercy. Plaintiffs seek money damages from and injunctive relief against Odenat under the Copyright Act, 17 U.S.C. § § 501-505; sections 32 and 43(a) of the Lanham Act, 15 U.S.C. § § 1114, 1125(a); and sections 50 and 51 of the New York Civil Rights Law. Plaintiffs also seek money damages from Odenat for unfair competition under New York common law.

Odenat's answer, filed July 28, 2009, raises a number of affirmative defenses, including that Plaintiffs' claims are barred by the doctrines of fair use, license, equitable estoppel, and unclean hands. After the filing of the answer, in September 2009, Odenat incorporated Defendant Worldstar Hip Hop, Inc. in Nevada. (Zarin Decl. Ex. A.)

In October 2010, Plaintiffs consented to the filing of Odenat's third-party complaint in which Mondesir was joined as a third-party defendant. Odenat seeks indemnification from Mondesir under a theory of contributory copyright infringement, contributory trademark infringement, and contribution for violation of New York Civil Rights Law § § 50, 51. Odenat also seeks money damages for false designation of origin arising out of Mondesir's use of the URL on Are You a Window Shopper?.

After the filing of the third-party complaint, Odenat formed Defendants WSHH337, LLC and Worldstar, LLC as Delaware limited liability companies in February 2011. (Zarin Decl. Exs. B-C.) In July 2011, Worldstar Hip Hop, Inc. registered the trademark " World Star Hip Hop." (Id. Ex. E.) Worldstar Hip Hop, Inc. then assigned the trademark to Worldstar LLC in September 2011. (Id. Ex. F.)

Plaintiffs filed a supplemental complaint against Worldstar Hip Hop, Inc.; WSHH337, LLC; and Worldstar, LLC. Plaintiffs allege that Odenat created these business entities and transferred assets, including, to them in " not-for-value transactions." Plaintiffs seek to enjoin these entities and hold them liable for the claims against Odenat as his alter ego under a theory of fraudulent transfer.

II. Discussion

A. Summary Judgment Standard

Summary judgment is appropriate when " there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); see also Zann Kwan v. Andalex Grp. LLC, 737 F.3d 834, 843 (2d Cir. 2013). A fact is " material" if it could affect the outcome of the case under the governing substantive law. Spinelli v. City of N.Y., 579 F.3d 160, 166 (2d Cir. 2009). A dispute over a material fact is " genuine" if there is evidence that could allow a " reasonable jury" to " return a verdict for the nonmoving party." McElwee v. Cnty. of Orange, 700 F.3d 635, 640 (2d Cir. 2012) (internal quotation marks omitted). The moving party has the initial burden to show the absence of a genuinely

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disputed material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). If the movant's burden is met, then the nonmoving party must provide evidence to show that there is a genuine factual dispute. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The Court construes the evidence in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

B. Plaintiffs' Copyright Infringement Claim

To succeed on a claim of copyright infringement, a plaintiff must show (1) " ownership of a valid copyright" and (2) " copying of the protectable elements of the copyrighted work." Scholz Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012). A certificate of copyright registration is prima facie evidence of the validity of a copyright, although that presumption is rebuttable. MyWebGrocer, LLC v. Hometown Info, Inc., 375 F.3d 190, 192 (2d Cir. 2004) (citing 17 U.S.C. § 410(c)).

1. Whether Plaintiffs Own a Valid Copyright

Plaintiffs present a Form SR certificate of registration for the album Beg for Mercy, as well as one for the album Thoughts of a Predicate Felon. (Hilderley Decl. Exs. B, D.) They also provide an unrebutted declaration attesting to the fact that the picture of Lloyd Banks was included in the " pictorial matter" registered with Beg for Mercy and that the picture of Tony Yayo was registered as part of the " pictorial matter" accompanying Thoughts of a Predicate Felon. (Hilderley Decl. ¶ ¶ 2-3.) Defendants do not dispute that the pictures are part of the " pictorial matter" ; rather, they argue that the pictures were incorrectly filed as part of the registration for sound recordings. However, the filing of these photographs along with their respective sound recordings was in accordance with Copyright Circular 56, as well as 37 C.F.R. § 202.3(b)(2)(ii)(C). Section 202.3(b)(2)(ii)(C) provides:

In cases where a work contains elements of authorship in which copyright is claimed which fall into two or more classes, the application should be submitted in the class most appropriate to the type of authorship that predominates in the work as a whole. However, in any case where registration is sought for a work consisting of or including a sound recording in which copyright is claimed, the application shall be submitted on Form SR.

37 C.F.R. § 202.3(b)(2)(ii)(C) (emphasis added). Circular 56, which covers registration for sound recordings, also contemplates the filing of " artwork, photographs, and/or liner notes" along with a sound recording. U.S. Copyright Office, Circular 56: Copyright Registration for Sound Recordings, at 3 (reviewed 2012). Contra Defendants' argument, there does not appear to be a requirement that each accompanying element include a separate title.

Defendants also challenge the authorship of the photographs by claiming that the photographers should have been listed as the authors instead of Interscope Records and G-Unit Records. The registrations clearly indicate that the contributions were works made for hire, meaning that Interscope Records and G-Unit Records are presumed to be the co-authors of the works. 17 U.S.C. § 201(b); Cmty. for Creative Non-violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). Defendants attempt to rebut this presumption with the work-for-hire agreement between Interscope Records and Julian Alexander, the art director of Slang

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Inc. According to Defendants, this document rebuts the presumption of authorship because it does not include the names of the photographers. However, the agreement clearly contemplates Alexander subcontracting photography to other individuals. (Supp. Zarin Decl. Ex. 2. ¶ 1.) Thus, Defendants have not provided evidence to rebut the presumption of authorship in Interscope Records and G-Unit Records. The Court finds that Plaintiffs own a valid copyright in the photograph of Tony Yayo and the photograph of Lloyd Banks.

Defendants assert that Plaintiffs did not produce the pictures during discovery. However, according to the unrebutted Hilderly Declaration, the images were deposited as part of the pictorial material accompanying the registration for the albums and are therefore part of the public record maintained by the Copyright Office. See 17 U.S.C. § 705; 37 C.F.R. § 201.2(b)(1). As a public record, it was available to Defendants, and Plaintiffs were not required to produce it. S.E.C. v. Strauss, 94 Civ. 4150, 2009 WL 3459204, at *11-12 (S.D.N.Y. Oct. 28, 2009).

2. Whether Defendants Copied Protectable Elements

Defendants do not contest Plaintiffs' assertion that the images of Tony Yayo and Lloyd Banks used on the second masthead are actual copies of the photographs filed as pictorial matter along with the albums filed with the Copyright Office. (Def. Opp. Mem. 9; Def. Reply Mem. 3.) Nor do Defendants claim to have independently created the pictures used on the masthead. Rather, Defendants argue that there are no substantial similarities between the copyrighted photographs and the images used. However, Plaintiffs only need to show a substantial similarity when there is no evidence of actual direct copying. See Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d 74, 77 (2d Cir. 1999); 3 William F. Patry, Patry on Copyright § 9:21 (2012). Furthermore, a rational jury comparing the pictures and the images on the masthead could only reach one inescapable conclusion: the images on the masthead are substantially similar because they are exact copies. Aside from the obvious cropping, the only discernible difference is that the picture of Lloyd Banks is flipped so that he is facing right instead of left.

Insofar as Defendants challenge whether the photographs were copyrightable, the images at issue exceed the rather low bar for copyright protection of photographs. E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F.Supp.2d 395, 417-18 (S.D.N.Y. 2000). This is also more than de minimis copying. Although the images on the masthead appear to have been cropped, they are recognizable likenesses of both Yayo and Banks, the subjects of the copyrightable photographs. See Rogers v. Koons, 960 F.2d 301, 308 (2d Cir. 1992) (" [N]o copier may defend the act of plagiarism by pointing out how much of the copy he has not pirated." ).

Defendants' answer makes no claim that Jackson or Mondesir ever authorized Odenat to use the copyrighted photos. Nor do they make such an assertion in their moving papers.[1] As to copyright infringement, Plaintiffs are entitled to summary judgment.

C. Plaintiffs' Right of Publicity Claim Under New York Civil Rights Law Section 50 and 51

In New York, the right to privacy and corresponding right of publicity are

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both set forth in sections 50 and 51 of the New York Civil Rights Law. Myskina v. Conde Nast Publ'ns, Inc., 386 F.Supp.2d 409, 414 (S.D.N.Y. 2005). A successful right of publicity claim must show " (1) use of plaintiff's name, portrait, picture or voice (2) for advertising purposes or for the purposes of trade (3) without consent and (4) within the state of New York." Hoepker v. Kruger, 200 F.Supp.2d 340, 348 (S.D.N.Y. 2002) (internal quotation marks omitted). Defendants only contest the first prong. Although they admit that the three images are in fact of Jackson, they argue that the images are not recognizable likenesses of him. Defendants also assert that Plaintiffs' claim is barred by the statute of limitations.

1. Whether the Photographs Are Recognizable Likenesses of Jackson

Whether a photo is a recognizable likeness of the plaintiff is ordinarily a jury question. Allen v. Nat'l Video, Inc., 610 F.Supp. 612, 623 (S.D.N.Y. 1985). Summary judgment is appropriate, however, where the person in the photograph is identifiable by someone familiar with him, even if the pictures are of poor visual quality. See Negri v. Schering Corp., 333 F.Supp. 101, 103-05 (S.D.N.Y. 1971) (granting summary judgment after finding actress's features were " quite clear and characteristic" in the advertisement); Shamsky v. Garan, Inc., 167 Misc. 2d 149, 632 N.Y.S.2d 930, 933-34, 937 (Sup. 1995).

The three images at issue are shots of Jackson's face. The first two mastheads use images of Jackson directly facing the camera, while the third masthead includes an image of Jackson in profile. The highest quality image of the first masthead is part of Exhibit 1 to the Sinnreich Declaration, bearing the stamp 00007. (Sinnreich Decl. Ex. 1.) The image shows a shot of the front of Jackson above the waist, with one arm and a portion of his torso obscured. He is wearing a shirt, a chain, and a baseball cap. The cap casts a dark shadow over most of his forehead and eyes. Despite the shadow, the viewer can make out the shape of Jackson's face. His nose, mouth, cheeks, and the corner of one eye are observable.

Odenat's Declaration includes the best copy of the second masthead. (Odenat Decl. Ex. D.) The image of Jackson is small. Although somewhat pixilated, the image clearly captures the shape of Jackson's face. All of his features are visible.

The Odenat Declaration also presents the best quality copy of the third masthead. (Id. Ex. E.) The image shows the shape of Jackson's profile, with the back of his head in complete shadow save for his ear. His face, ...

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