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The Wave Studio, LLC v. General Hotel Management Ltd.

United States District Court, S.D. New York

March 10, 2017


          Vijay K. Toke Nate A. Garhart Cobalt LLP Berkeley, California Counsel for Plaintiff

          Howard J. Schwartz Abigail J. Remore Ilana Levin Chiesa Shahinian & Giantomasi PC West Orange, New Jersey Counsel for Defendant


          CATHY SEIBEL, U.S.D.J.

         Before the Court are the Motion for Summary Judgment of Defendant General Hotel Management, Ltd. (“GHM”), (Doc. 178), and the Cross-Motion for Summary Judgment of Plaintiff The Wave Studio, LLC, (Doc. 186). For the following reasons, Defendant's Motion is GRANTED and Plaintiff's Cross-Motion is DENIED without prejudice.

         I. Background

         A. Facts

         The following facts, which are based on Defendant's Local Rule 56.1 Statement and Plaintiff's Counter-Statement thereto, (Doc. 189 (“GHM 56.1 Stmt. & Resp.”)), Plaintiff's Local Rule 56.1 Statement and Defendant's Counter-Statement thereto, (Doc. 198 (“Wave Studio 56.1 Stmt. & Resp.”)), and supporting materials, are undisputed except where noted.[1]

         Lee Kar Yin, known as Junior Lee, is the principal of Plaintiff, The Wave Studio, LLC. (GHM 56.1 Stmt. & Resp. ¶ 1.) Ms. Lee is a Malaysian citizen domiciled in Singapore. (Id.) Plaintiff is organized under the laws of New York and has its principal place of business in White Plains. (Lee Decl. ¶ 6.)[2] Plaintiff was created in September 2011 to serve as a holding company for the enforcement of the United States copyrights at issue in this suit. (Wave Studio 56.1 Stmt. & Resp. ¶¶ 12, 58.) Plaintiff has never employed anyone that resides in the United States, nor has it ever leased or owned any office space in the United States (although, at one point, Plaintiff did use the office of its former lawyers “as an address”). (GHM 56.1 Stmt. & Resp. ¶¶ 13, 14.)[3] Ms. Lee is or was also the principal of several other entities organized under the laws of Singapore including: Wave-S, the Wave Pte. Ltd., the Wave Studio Pte. Ltd., and the Wave Design Pte. Ltd. (collectively the “Wave Entities”). (GHM 56.1 Stmt. & Resp. ¶ 3.) The Wave Entities are all based in Singapore and allegedly created the photographs at issue in this suit. (Id. ¶ 16.)[4]

         Defendant GHM is organized under the laws of the British Virgin Islands and its principal place of business is in Singapore. (Id. ¶ 15.) GHM manages a small group of luxury hotels and resorts, primarily in Southeast Asia, (id. ¶ 4), and denies that it currently manages any hotels in the United States, (Wave Studio 56.1 Stmt. & Resp. ¶ 4). Plaintiff maintains that GHM operates a sales office in New York City dedicated to building brand awareness and sales for GHM-managed properties, but GHM asserts that it merely contracts with a city-based sales representation office that cannot confirm reservations. (Id. ¶ 13.)

         Over a period of several years, the Wave Entities were commissioned to create marketing materials, including photographs, for hotels managed by GHM. (GHM 56.1 Stmt. & Resp. ¶¶ 21, 22.) None of the authors of the photographs at issue are citizens of the United States. (Id. ¶ 11.) The Wave Entities hired Masano Kawana in connection with the photographs at issue, but it is unclear whether he was in fact the photographer or just a factotum for Ms. Lee. (Id. ¶¶ 28-29; Wave Studio 56.1 Stmt. & Resp. ¶ 27.) Mr. Kawana is a citizen of Japan who apparently is based in Singapore. (GHM 56.1 Stmt. & Resp. ¶ 11; Lee Decl. Ex. D; Remore Reply Decl. Ex. 7.)[5] The relevant photographs were taken in Italy, India, Oman, Vietnam, Thailand, Malaysia, Indonesia, Taiwan, Singapore, the Bahamas, and Florida, (GHM 56.1 Stmt. & Resp. ¶ 47), and were first published in Singapore, (id. ¶ 18).

         There was no single master contract between GHM and the Wave Entities. (Id. ¶ 23.) After a project was requested, the Wave Entities would submit a production estimate to the relevant hotel. (Id. ¶ 24.) At least some of the production estimates stated: “We reserve the intellectual property copyright to all designs/soft copies/material/photographs/projects undertaken, ” and “We will proceed on the basis that this estimate is wholly acceptable unless advised to the contrary in writing before the work is undertaken.” (Id. ¶ 25; see, e.g., Lee Decl. Ex. E, at GHM00003.) Some of the production estimates were signed by the hotel and some were not. (Wave Studio 56.1 Stmt. & Resp. ¶ 25.) It is disputed whether the Wave Entities pointed out this language to any of the hotel general managers or to Ralf Ohletz Graf von Plettenburg (“Mr. Ohletz”), Vice President of GHM. (GHM 56.1 Stmt. & Resp. ¶ 26; Wave Studio 56.1 Stmt. & Resp. ¶ 26; Remore Decl. Ex. E.)[6] It is further disputed whether the Wave Entities advised Mr. Ohletz, Hans Jenni, the President and founder of GHM, or Kendall Oei, Director of GHM, that there was any limit on the ways the hotels could use the photographs at issue, (see, e.g., GHM 56.1 Stmt. & Resp. ¶¶ 30, 35), or that the Wave Entities believed they owned any of the photographs or other works created for GHM, (see, e.g., id. ¶¶ 30, 31, 43).

         After each photo shoot, the Wave Entities would provide edited images to the respective hotels on a CD-ROM. (Wave Studio 56.1 Stmt. & Resp. ¶ 31.) The final edited photographs did not contain any markings indicating that the images could not be used without the authorization of the Wave Entities. (GHM 56.1 Stmt. & Resp. ¶ 40.) The hotels paid the Wave Entities directly upon completion of a project. (Id. ¶ 27.) The Wave Entities did not separately invoice GHM or the hotels for individual license fees for the photographs used in the marketing materials they ordered. (Id. ¶ 42.)

         The Wave Entities did not notify Defendant that they objected to particular uses of the photographs on GHM's website until commencing this lawsuit, but Ms. Lee alleges she brought to the attention of Mr. Jenni of GHM that the Nam Hai hotel was using her work without authorization. (Id. ¶¶ 43-45.) As early as 2006, the Wave Entities were aware that GHM provided some of its photographs to third parties, including Interior Design Magazine, Conde Nast Traveler, and American Airlines. (Id. ¶ 46.) Plaintiff asserts that the Wave Entities authorized these uses because Ms. Lee believed them to be limited. (Id.)

         At some point after GHM and the Wave Entities stopped working together, GHM began using Plaintiff's photographs on a new website and some of Plaintiff's photographs were disseminated to third parties. (Wave Studio 56.1 Stmt. & Resp. ¶¶ 41, 42.)

         At the center of this case are seventeen copyrights, registered between December 28, 2010 and February 18, 2011, covering 3000 photographs created by the Wave Entities between 2001 and 2005. (GHM 56.1 Stmt. & Resp. ¶¶ 48-59.)[7] The Wave Entities are listed as the copyright claimants and authors on the Copyright Registrations. (Id. ¶ 17.) Plaintiff alleges that all right, title, and interest in and to the Copyright Registrations was assigned to it on November 11, 2011. (Id. ¶ 10; Wave Studio 56.1 Stmt. & Resp. ¶ 15.) During the course of this litigation, Plaintiff learned that some of the copyright assignments were ineffective because they were made by entities that had been dissolved years before, and that others needed to be clarified. (Wave Studio 56.1 Stmt. & Resp. ¶¶ 61-64.) In an attempt to rectify these issues, on September 4, 2015, a document titled “Declaration of Lee Kar Yin and Nunc Pro Tun[c] Copyright Assignments to the Wave Studio, ” (the “2015 Declaration”) was recorded in the United States Copyright Office. (Id. ¶ 65; GHM 56.1 Stmt. & Resp. ¶ 85.) At that same time, Plaintiff filed documents with the Copyright Office to correct registrations that listed an incorrect claimant. (Wave Studio 56.1 Stmt. & Resp. ¶¶ 68, 69.)

         B. Procedural Background

         Plaintiff filed the original complaint in this action on December 31, 2013, (Doc. 1), and an Amended Complaint (“AC”) on April 23, 2014, (Doc. 7), alleging copyright infringement on the part of GHM, fifty-eight other Defendants (generally, travel-related businesses that maintain websites), and unknown entities “Does 1 through 100, ” arising out of Defendants' unauthorized use of Plaintiff's photographs, (AC ¶¶ 4-69). Plaintiff also filed eight additional suits in the Northern District of California naming twenty-one additional Defendants. (GHM 56.1 Stmt. & Resp. ¶ 6.) All but one of the Northern District of California suits were transferred to this Court and consolidated with the instant case. (Id. ¶ 7.) Soon after the AC was filed, GHM suggested that the Court stay the case as to all Defendants except GHM, and that Plaintiff and GHM first litigate the issue of GHM's right to use and disseminate the photographs. (Doc. 50.) Its theory was that a finding that GHM had such a right would be case-dispositive as to it and the vast majority of the other Defendants, who allegedly received the photographs from GHM. (Id.)[8]Plaintiff consented, (Doc. 60), and the Court stayed the case as to all Defendants except GHM, (Doc. 67). Plaintiff and GHM have each moved for summary judgment.

         II. Legal Standard

         Summary judgment is appropriate when “the movant shows that 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). “[T]he dispute about a material fact is ‘genuine' . . . if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is “material” if it “might affect the outcome of the suit under the governing law . . . . Factual disputes that are irrelevant or unnecessary will not be counted.” Id. On a motion for summary judgment, “[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Id. at 255.

         The movant bears the initial burden of demonstrating “the absence of a genuine issue of material fact, ” and, if satisfied, the burden then shifts to the non-movant to “present evidence sufficient to satisfy every element of the claim.” Holcomb v. Iona Coll., 521 F.3d 130, 137 (2d Cir. 2008) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986)). “The mere existence of a scintilla of evidence in support of the [non-movant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-movant].” Anderson, 477 U.S. at 252. Moreover, the non-movant “must 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), and he “may not rely on conclusory allegations or unsubstantiated speculation, ” Fujitsu Ltd. v. Fed. Express Corp., 247 F.3d 423, 428 (2d Cir. 2001) (internal quotation marks omitted).

         “A party asserting that a fact cannot be or is genuinely disputed must support the assertion by . . . citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of the motion only), admissions, interrogatory answers, or other materials . . . .” Fed.R.Civ.P. 56(c)(1). Where an affidavit is used to support or oppose the motion, it “must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant . . . is competent to testify on the matters stated.” Fed.R.Civ.P. 56(c)(4); see Major League Baseball Props., Inc. v. Salvino, Inc., 542 F.3d 290, 310 (2d Cir. 2008). In the event that “a party fails . . . to properly address another party's assertion of fact as required by Rule 56(c), the court may, ” among other things, “consider the fact undisputed for purposes of the motion [or] grant summary judgment if the motion and supporting materials - including the facts considered undisputed - show that the movant is entitled to it.” Fed.R.Civ.P. 56(e)(2), (3).

         II. Discussion

         Both sides seek summary judgment on various grounds, as to GHM's right, or lack thereof, to use and disseminate the photographs at issue. (See, e.g., D's Mem. at 8-18, 23-39; P's Mem. at 11-13, 22-40.)[9] I need not address most of the issues raised by the parties (e.g., standing, personal jurisdiction, and implied license) because I am persuaded by GHM's argument that I should dismiss Plaintiff's claims against it on the ground of forum non conveniens. See Sinochem Int'l Co. v. Malaysia Int'l Shipping Corp., 549 U.S. 422, 425, 435-36 (2007) (court need not take up jurisdictional issues if it determines that forum non conveniens dismissal is appropriate); Doe v. Hyland Therapeutics Div., 807 F.Supp. 1117, 1133 (S.D.N.Y. 1992) (“Due to this Court's disposition of these cases on forum non conveniens grounds, the question whether plaintiffs have standing to sue need not be reached.”); see also Carijano v. Occidental Petroleum Corp., 643 F.3d 1216, 1227 (9th Cir. 2011) (“[T]he district court was not required to decide the standing question before ruling on the forum non conveniens motion.”) (citing Sinochem Int'l Co., 549 U.S. at 422).

         A. Forum ...

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