United States District Court, S.D. New York
BRIAN COOLEY and COOLEY & CO. LTD., Plaintiffs,
PENGUIN GROUP (USA) INC., et al., Defendants
Corrected: July 14, 2014
For Plaintiffs: Sam Peter Israel, SAM P. ISRAEL, P.C.
For Defendant Louis Psihoyos: Danial A. Nelson, Kevin Patrick McCulloch, NELSON & MCCULLOCH LLP.
MEMORANDUM OPINION (Corrected)
Lewis A. Kaplan, United States District Judge.
Brian Cooley created two sculptures of dinosaur eggs for the National Geographic Society (" National Geographic" ) for use in connection with an article in its magazine, National Geographic. Louis Psihoyos photographed the sculptures so that the photographs could be published in the article. Pursuant to the terms of their respective contracts with National Geographic, both Cooley and Psihoyos transferred the copyrights in their works to National Geographic with the copyrights to be assigned to them at different times after publication. Later, Psihoyos licensed the photographs of the sculptures for various uses and received royalties on the images. Cooley and his company, Cooley & Co., Ltd. (collectively, " Cooley" ), have brought this action against Psihoyos for copyright infringement, violation of the Lanham Act, and unfair competition.
There are two motions before the Court. Psihoyos moves for summary judgment dismissing the complaint. Cooley seeks partial summary judgment determining that Cooley at all relevant times has owned valid copyrights in the sculptures and that Psihoyos infringed those copyrights.
In 1993, Charlie Magovern discovered a fossilized embryo of a therizinosaur, a variety of dinosaur. He playfully named the fossil " Baby Louie" after his friend Louis Psihoyos, a photographer who had photographed a number of fossils that Magovern had discovered. Two years later, Psihoyos pitched an article on Magovern' s discovery to National Geographic. National Geographic agreed. In preparation for the article, it engaged sculptor Brian Cooley to construct models of two dinosaur eggs and Psihoyos to photograph the sculptures. Each artist's agreement with National Geographic is relevant to this dispute.
A. The Contracts
Cooley agreed with National Geographic in September 1995 (as confirmed in writing on November 30, 1995) to create the two dinosaur embryo sculptures for $6,000. The agreement provided that:
" [t]he payment will cover purchase by [National Geographic] of all reproduction rights and copyrights in the work. One year after publication the artwork [i.e. the two sculptures] will be returned to you along with all rights including copyright thereto except that you hereby grant [National Geographic] a perpetual non-exclusive right (1) to reproduce the work for its own purposes without further payment, (2) to grant requests for reuse without payment by educational and/or non-profit uses, and (3) to grant permission to other organizations to reproduce the work upon payment of an appropriate fee." 
It provided also that Cooley was a " free-lance contractor." 
National Geographic entered into a letter agreement with Psihoyos some time in the second half of 1995. Paragraph 8 provided in relevant part:
" All photographs taken by you under this Agreement will be considered as specially commissioned for use by [National Geographic] and upon creation all rights, including the copyright, to these photographs will automatically, by virtue of this Agreement, be deemed transferred to [National Geographic]. Ninety days after publication [of the article], and in return for the license granted to [National Geographic] [permitting certain continued uses of the photographs], [National Geographic] will return to you the copyright in all published and unpublished photographs from that assignment." 
The agreement provided also that Psihoyos was a " freelance photographer" and an " independent contractor." 
B. Cooley Creates the Sculptures and Psihoyos Photographs Them
Cooley spent hundreds of hours researching, designing, and constructing the sculptures before he completed them in the fall of 1995 in his studio in Canada. As Cooley conceived them, the embryos are nestled within the egg shells. The embryo lies lengthwise in one and is coiled in the other.
In November or December of 1995, Psihoyos went to Cooley's studio and photographed the sculptures. In early 1996, and thus after Psihoyos photographed the sculptures, National Geographic paid Cooley. The article containing the photographs, " The Great Dinosaur Egg Hunt," was published in the May 1996 issue of National Geographic. According to his contract with National Geographic, the copyrights in the photographs were assigned to Psihoyos in or about August 1996, three months after publication. In accordance with Cooley's contract, the copyrights in the sculptures were reassigned to him in or about May 1997, one year after publication.
C. Photographs of the Sculptures Appear Beyond the Pages of National Geographic
Psihoyos admits that he provided copies of the photographs to his licensing agent and began licensing them to third parties in 1997. Among other things, he authored a book, Hunting Dinosaurs, in 2001 that contained copies of certain of the photographs. He created also digital files of the photographs and made them available for licensing through stock photography companies Corbis Corporation, Getty Images and, most recently, Superstock.
The stock photography companies displayed the images online. And in 2011, Dorling Kindersley, a United Kingdom subsidiary of Penguin Group, published three books, Dinosaurs: A Visual Encyclopedia, Dinosaurs: A Children's Encyclopedia, and Ask a Dinosaur, which contained copies of certain of the Psihoyos photographs of the Cooley sculptures that were obtained and licensed through Corbis and Getty.
Cooley first learned of Psihoyos's licensing activity in October 2011, and he brought this suit in December 2011. Indeed, he has testified that he would have pursued legal action earlier had Psihoyos's activities come to his attention.
In an effort to portray Cooley as knowingly having slept on his rights for years while Psihoyos commercially exploited the photographs, Psihoyos asserts that he " can only assume that Mr. Cooley has been fully aware that [the] photographs have been used, copied and displayed over the last fifteen years."  But he attributes this assumption only to two facts -- National Geographic's use and display of the photographs, including on its website, and their use by Charlie ...