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Cooley v. Penguin Group (USA) Inc.

United States District Court, S.D. New York

July 11, 2014

BRIAN COOLEY and COOLEY & CO. LTD., Plaintiffs,
PENGUIN GROUP (USA) INC., et al., Defendants

Corrected: July 14, 2014

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For Plaintiffs: Sam Peter Israel, SAM P. ISRAEL, P.C.

For Defendant Louis Psihoyos: Danial A. Nelson, Kevin Patrick McCulloch, NELSON & MCCULLOCH LLP.

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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.[1]

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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.[2] 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.[3] Two years later, Psihoyos pitched an article on Magovern' s discovery to National Geographic.[4] 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.[5] 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.[6] 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." [7]

It provided also that Cooley was a " free-lance contractor." [8]

National Geographic entered into a letter agreement with Psihoyos some time in the second half of 1995.[9] 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." [10]

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The agreement provided also that Psihoyos was a " freelance photographer" and an " independent contractor." [11]

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.[12] As Cooley conceived them, the embryos are nestled within the egg shells.[13] The embryo lies lengthwise in one and is coiled in the other.[14]

In November or December of 1995, Psihoyos went to Cooley's studio and photographed the sculptures.[15] In early 1996, and thus after Psihoyos photographed the sculptures, National Geographic paid Cooley.[16] The article containing the photographs, " The Great Dinosaur Egg Hunt," was published in the May 1996 issue of National Geographic.[17] 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.[18] Among other things, he authored a book, Hunting Dinosaurs,[19] 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.[20]

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The stock photography companies displayed the images online.[21] 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.[22]

Cooley first learned of Psihoyos's licensing activity in October 2011,[23] and he brought this suit in December 2011.[24] Indeed, he has testified that he would have pursued legal action earlier had Psihoyos's activities come to his attention.[25]

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." [26] 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 Magovern, who discovered, " Baby Louie," in a traveling museum exhibition. But neither supports his assumption.

The Magovern story is simple. In the late 1990s, Magovern proposed to use Cooley's sculptures in a traveling exhibition organized by his entity, the Stone Company.[27] Cooley learned that Psihoyos's photographs of the sculptures were to be displayed in the exhibition but did not object, in part because the Stone Company was " a client." [28] Rather, he told the Stone Company it was " welcome" to use " any images" of the sculptures in the exhibition and in

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its promotion.[29]

The National Geographic story is similar. Cooley " expressly authorized" its use of his works.[30] Indeed, his contract explicitly gave National Geographic the perpetual non-exclusive right " to reproduce the work for its own purposes without further payment." [31]

Accordingly, there is no genuine issue of fact as to Cooley's lack of awareness, until shortly before and in some instances after the commencement of this action, of Psihoyos's alleged infringements.[32]


A. Summary Judgment Standard

Summary judgment is warranted if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.[33] The moving party must demonstrate the absence of any genuine issue of material fact, and the Court must view the facts in the light most favorable to the nonmoving party.[34] Where, as here, both parties file motions for summary judgment, the court nevertheless " must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration." [35]

B. Copyright Infringement

The Copyright Act " gives copyright owners the exclusive rights, among other things, to reproduce a copyrighted work, to prepare derivative works, to distribute copies to the public, and to display the work publicly." [36] To prove infringement, a plaintiff holding a valid copyright must show that the defendant actually copied protectible elements of the plaintiff's work without the plaintiff's authorization.[37] " To demonstrate unauthorized copying, the plaintiff must first 'show that his work was actually copied'; second, he must establish

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'substantial similarity' or that 'the copying amounts to an improper or unlawful appropriation.'" [38]

The parties do not dispute that the egg sculptures that appear in the Psihoyos photographs were the works Cooley prepared. The Court therefore must determine the rights of Cooley and Psihoyos with respect to their respective works, including whether Psihoyos's rights included reproduction and licensing of the photographs depicting those sculptures absent Cooley's permission.

1. Infringement

Cooley contends that he owns the copyrights in the sculptures and that Psihoyos's distribution and licensing of the photographs of them has infringed his rights. Psihoyos responds that he has exclusive rights in the photographs by transfer from National Geographic, which commissioned the sculptures from Cooley as " works for hire" and held exclusive rights to the sculptures when it conveyed its rights to Psihoyos.[39] Psihoyos points also to the fact that National Geographic retained the right under the Cooley contract " to reproduce the work [i.e., Cooley's sculptures]," [40] even after it transferred its other rights in the Cooley sculptures to Cooley.[41] Psihoyos interprets that provision to mean that National Geographic's transfer to Psihoyos of its rights in the photographs carried with it National Geographic's right under the Cooley contract to reproduce Cooley's sculptures.[42] Psihoyos's arguments are entirely without merit.

a. Cooley's Ownership of the Sculpture Copyrights

The significance of whether a copyrighted work was made for hire lies in the fact that copyright vests in the author on creation of the work unless the work was made for hire, in which case it vests in the employer or other person for whom it is made.[43] That said, Psihoyos's work-for-hire argument is a red herring given the facts of this case.

The essence of Psihoyos's argument is that National Geographic assigned all of its rights to the photographs and the sculptures, whatever they were, to Psihoyos in or about August 1996, three months after publication of the article. He seems to assert that National Geographic then owned the copyrights in the Cooley sculptures because they were works made for hire and, accordingly, that those copyrights then went to Psihoyos. Although perhaps not necessary to the argument, its corollary seems to be also that National Geographic had no remaining copyright in the Cooley sculptures when those purportedly were assigned to Cooley one year after publication, i.e., in or about May 1997. But this all is nonsense, irrespective of the work-for-hire issue.

Psihoyos's contract with National Geographic provided that National Geographic " return[ed] to [Psihoyos] the copyright in all published and unpublished photographs from [the] assignment." [44] It did not mention any copyright in the sculptures.

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It did not address how National Geographic possibly could " return" to Psihoyos copyright in sculptures that Psihoyos never owned to begin with. Hence, regardless of whether the sculptures were works for hire, National Geographic never transferred to Psihoyos any copyright it may have owned in the sculptures.[45] When the one year anniversary of publication of the article occurred in or about May 1997, National Geographic " return[ed] to [Cooley] . . . all rights including copyright" in the sculptures subject to National Geographic's retention of limited, " perpetual non-exclusive right[s]." [46] Cooley and, now, his company have owned those copyrights ever since.

b. Psihoyos's Copyrights in his Photographs Extend Only to His Original Contributions

Psihoyos's next argues that National Geographic's return to him of copyright in the photographs gave him carte blanche, irrespective of Cooley's creation of the sculptures and National Geographic's return to Cooley of his copyright in them. That argument is equally baseless.

The Copyright Act grants to the holder of a copyright in a work the exclusive right " to prepare derivative works based upon the copyrighted work." [47] A work is deemed derivative for the purposes of the Copyright Act when it is " based upon one or more preexisting works" in any " form in which a work may be recast, transformed, or adapted." [48] In order to constitute a derivative work, the work in question must, " when analyzed as a whole, . . . display sufficient originality so as to amount to an 'original work of authorship.'" [49] The Psihoyos photographs of the sculptures, as Psihoyos conceded at his deposition, are derivative works prepared on the basis of the sculptures.[50]

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No one here claims that the taking of the photographs infringed anyone's copyright. The photographs were taken at the instance of National Geographic and with the consent of Cooley.[51] Moreover, the court already has decided that the copyright in the sculptures was not transferred by National Geographic to Psihoyos and, in any case, has been owned by Cooley since May 1997. The remaining question on this point is the extent, if any, to which Psihoyos's copyright in the photographs -- not the sculptures -- gave him the right to license and otherwise deal with the photographs as he has since May 1997 and gives him such rights going forward.

The Court assumes that Psihoyos's photographs reflect some element of originality.[52] It thus assumes that Psihoyos owns valid copyrights in the photographs. But that does not mean that Psihoyos's copyrights in the photographs give him the unrestricted right to use and license them as he wishes without regard to Cooley's copyrights in the sculptures those photographs depict.

As an initial matter, the fact that Psihoyos is assumed to own valid copyrights in the photographs is the beginning, not the end, of the analysis. The Copyright Act grants the author of a derivative work copyright protection only in whatever increment of original expression the author contributes, but does not disturb the ownership of the copyright or the rights of its holder in respect of the underlying work.[53] In other words, " [t]he copyright in [the derivative] work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the pre-existing material," [54] even where the new and pre-existing material are " inseparably intertwined." [55] The copyright in a derivative

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work thus does not confer the unfettered -- let alone exclusive -- right to reproduce the derivative work in a manner that would infringe rights of the holder of the copyright in the underlying work absent a license to reproduce or otherwise use the underlying work.[56]

In light of these principles, Psihoyos's copyrights in his photographs are essentially immaterial here: They give him rights only to the extent that he may exercise them without infringing Cooley's copyrights in the sculptures. As his original contributions to the photographs are inextricably intertwined with Cooley's sculptures, Psihoyos's ability to exploit his own rights to the photographs without Cooley's consent is virtually nonexistent. If he reproduces an image of a Cooley sculpture, he reproduces also the sculpture, which infringes Cooley's rights[57] if done without Cooley's authorization.[58] Indeed, Psihoyos does not even dispute that his photographs are substantially similar to Cooley's sculptures -- the point of taking them after all was to reproduce them accurately, if in but two dimensions -- thus, conceding infringement absent some affirmative defense.

c. Direct Versus Contributory or Vicarious Infringement

The parties dispute whether Psihoyos infringed Cooley's copyrights directly and, if not, whether Psihoyos may be held secondarily liable for contributory or vicarious infringement assuming the absence of some affirmative defense.

Direct infringement is conduct that is " sufficiently close and causal to the illegal [infringement] that one could conclude that the [defendant] himself trespassed on the exclusive domain of the copyright owner." [59] An intent to infringe is not required, for copyright is a strict liability statute.[60] That said, to establish direct liability the defendant must engage in conduct that is volitional and causally related to the illegal infringement.[61]

Psihoyos's arrangements with the stock photography agencies Getty, Corbis, and Superstock constitute direct infringement. Psihoyos admits that Getty and Corbis obtained the images through his

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licensing agent.[62] Similarly, in 2010, Psihoyos, again through his agent, signed an agreement with Superstock.[63] All three companies displayed the images online and made them available to the public for licensing.[64] It is irrelevant whether Psihoyos personally uploaded the files from the agencies' internal databases to their publicly accessible websites. It is sufficient that Psihoyos made available to the agencies digital copies of his photographs and contracted with them to have the images displayed publicly. Psihoyos's conduct was " sufficiently close and causal to the illegal [display of the photographs] that one could conclude that [Psihoyos] himself trespassed on the exclusive domain of [Cooley]." [65]

Psihoyos's conduct with respect to Dorling Kindersley and Penguin Group's infringing publication and distribution of the photographs in the books, Dinosaurs: A Visual Encyclopedia, Dinosaurs: A Children's Encyclopedia, and Ask a Dinosaur,[66] was more remote. Psihoyos admits that he provided the photographs to his licensing agents, and that he contracted with Corbis and Getty to make copies of the photographs available for licensing.[67] Dorling Kindersley purchased a license in two of the photographs and published them in three books. Dorling Kindersley and Penguin Group then distributed the books.[68] The publication and distribution of the photographs infringed Cooley's reproduction and distribution rights.[69]

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Although Psihoyos himself did not sign an agreement with Penguin, " [o]ne infringes [a copyright] contributorily by intentionally inducing or encouraging direct infringement, and infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it." [70] Psihoyos knowingly induced these infringements by making copies of the photographs available to the public for licensing, he profited from these infringements by receiving royalties, and he had the power to stop the infringements because he controlled whether or not the photographs were publicly available. Whether his liability is couched as contributory or vicarious makes little difference.[71]

2. Alleged Affirmative Defenses

Psihoyos asserts several affirmative defenses in response to Cooley's infringement claims. First, he contends that Cooley's claims are time barred. Second, he purports to have either a contractual or implied license to distribute the photographs. Finally, he claims that Cooley's claims are barred by equitable estoppel and laches. Because the defendant bears at trial the burden of proof as to any affirmative defenses, " a plaintiff may satisfy its Rule 56 burden by showing there is an absence of evidence to support an essential element of the non-moving party's case." [72] Cooley has sought partial summary judgment dismissing the defense of statute of limitations although not the other affirmative defenses.[73]

a. Statute of limitations

The statute of limitations for copyright infringement is three years from the accrual of the claim.[74] Under Psihoyos v. John Wiley & Sons,[75] this Court is bound by the Circuit's determination that an infringement claim accrues when the copyright holder discovers, or with due diligence should have discovered, the infringement.[76]

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Psihoyos claims first to have licensed the photographs in 1997 and asserts that Cooley knew full well or, at least, should have known -- due to the Stone Company exhibition in the late 1990s, at which both the sculptures and photographs were featured and National Geographic's actions[77] -- that Psihoyos was doing so. The Court already has rejected that contention. Accordingly, Psihoyos is not entitled to summary judgment dismissing the case on the basis of the statute of limitations. Moreover, in view of Cooley's unrebutted testimony that he first became aware of Psihoyos's use of the photographs in October 2011, Cooley is entitled to summary judgment striking the limitations defense.

b. Psihoyos Did Not Have A Contractual or An Implied License to Reproduce Cooley's Sculptures

Psihoyos contends that he cannot have infringed Cooley's copyrights in the sculptures because either National Geographic or Cooley granted him a license. This contention is without merit for reasons previously expressed.

c. Estoppel and Laches

Psihoyos claims that Cooley's suit is barred by laches because Cooley delayed unreasonably the initiation of this action and thereby prejudiced Psihoyos.[78] To prevail on laches grounds, a party must demonstrate both that there was a delay in filing suit that was unreasonable, and that the delay caused the defendant prejudice." [79] Those elements are irrelevant here, however, because the defense of laches cannot be used to defeat a claim filed within the Copyright Act's three-year statute of limitations.[80] As the Court has found Cooley's claims to have been timely filed, Psihoyos's laches defense fails as a matter of law.

Psihoyos argues also that Cooley is stopped from asserting his infringement claims because he knew that Psihoyos distributed copies of the photographs and yet did nothing, which caused Psihoyos to rely on Cooley's inaction.[81] A copyright defendant asserting equitable estoppel ultimately must show that:

" (1) plaintiff had knowledge of the defendant's infringing conduct; (2) plaintiff either (a) intended that defendant rely on plaintiff's acts or omissions suggesting authorization, or (b) acted or failed to act in such a manner that defendant had a right to believe it was intended to rely on plaintiff's conduct; (3) defendant was ignorant of the true facts; and (4) defendant relied on plaintiff's conduct to its detriment." [82]

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" Estoppel is a drastic remedy and must be utilized sparingly." [83] The party asserting estoppel must " use due care and not fail to inquire as to rights where that would be the prudent course of conduct." [84]

The claim that Cooley was aware of Psihoyos's allegedly infringing conduct rests on the same basis as the contention that Cooley knew or, in the exercise of due diligence, would have discovered his claims more than three years before the commencement of the action. For reasons previously expressed, there is no admissible evidence challenging Cooley's testimony that he first became aware of Psihoyos's actions in October 2011. Accordingly, the estoppel defense fails as well.

C. Lanham Act Claim

Section 43(a) of the Lanham Act prohibits, among other things, any misrepresentation likely to cause confusion as to the origin of goods.[85] Cooley argues that Psihoyos marketed goods containing images of his sculptures without attribution, which caused consumers to think that Psihoyos was the creator of the sculptures, thereby falsely designating the origin of the goods. Psihoyos moves for summary judgment of dismissal on this claim as well.

The phrase " origin of goods" under the Lanham Act " refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods." [86] It " refers only to the manufacturer or producer of the physical goods that are made available to the public," not " the creator of the underlying work that [is] copied." [87] Therefore, as a matter of law, Cooley -- the author of the sculptures -- has no false designation of origin claim against Psihoyos based upon Psihoyos's reproduction of the sculptures without proper attribution.

D. Unfair Competition

Cooley's unfair competition claim rests upon the same facts that underpin his copyright infringement claim. He asserts that Psihoyos sold Cooley's work without attribution, " deceived the public about the origin and nature of the [sculptures]," and " thereby depriv[ed] . . . Cooley of the commercial benefits stemming from having his name associated with his sculptures." [88] Psihoyos moves as well for summary judgment dismissing Cooley's unfair competition claim.

" An unfair competition claim involving misappropriation usually concerns the taking and use of the plaintiff's property to compete against the plaintiff's own use of the same property." [89] Although Cooley attempts to distinguish his unfair competition claim from his copyright claim

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by highlighting Psihoyos's public deception and the fact that he allegedly profited from " Cooley's expenditure of time, labor and talent," [90] his claim falls squarely within the category preempted by the Copyright Act." [91]

III. Conclusion

For the foregoing reasons, Cooley's motion for summary judgment [DI 63] is granted to the extent that (1) the Court determines that Psihoyos directly and contributorily infringed Cooley's copyrights commencing in or about 1997 and that neither the Cooley nor the Psihoyos agreement with National Geographic warrants any different conclusion, and (2) the affirmative defense of statute of limitations, equitable estoppel, and laches are stricken.

Psihoyos's motion for summary judgment dismissing the complaint [DI 59] is granted insofar as the Lanham Act and unfair competition claims (Counts II and V) are dismissed. It is denied in all other respects.


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