United States District Court, S.D. New York
K. Toke Nate A. Garhart Cobalt LLP Berkeley, California
Counsel for Plaintiff
J. Schwartz Abigail J. Remore Ilana Levin Chiesa Shahinian
& Giantomasi PC West Orange, New Jersey Counsel for
OPINION AND ORDER
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.
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
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.) 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.) 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.)
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.)
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.) 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).
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.) 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).
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.)
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.)
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.)
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.) 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.)
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.)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.
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.
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).
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).
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.) 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).