Jim Marshall Photography, LLC v. Varvatos

Circumstances under which a work was created must be documented to clearly show whether an artist or a magazine owns the copyright to a work.

Opinion (Ryu): Jim Marshall ("Marshall") was a renowned music photographer in the 1960s and 1970s whose photographs were published on album covers and in magazines throughout his fifty-year career. John Varvatos Enterprises, Inc. and John Varvatos (collectively "Varvatos") owned and operated JVE stores and JVE retail spaces in Bloomingdale's stores. In 2008, Varvatos purchased 52 original proof sheets from Marshall and displayed them in their stores and retail spaces. In 2010, Marshall died leaving his entire estate, including all existing rights to his body of work, to his assistant, Amelia Davis ("Davis"). In 2011, Davis filed suit alleging copyright infringement as to the 52 proof sheets and the images on the grounds that Varvatos did not have Marshall's permission to reproduce and display the images. Varvatos sought summary judgment as to 29 individual works, claiming that Marshall could not establish ownership of copyrights of the 29 images. In order to establish copyright infringement (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original both must be proven. The 1976 Copyright Act emphasizes that copyright ownership and ownership of material object in which the copyrighted work is embodied are entirely separate things. Thus, transfer of a material object does not of itself carry any rights under the copyright. Davis argued that, as with the case of Abend v. MCA, Inc., where an author has no intention to donate his work to the public, copyright notice by the publisher of the work is sufficient to obtain a valid copyright on behalf of the beneficial owner. Three of the 29 images first appeared in magazines, but Davis failed to satisfy the two requirements or application of the exception announced in Abend: that the magazine publisher purchased limited publication rights to the images, and that the publisher bought such rights under circumstances which show that Marshall had no intention to donate his work to the public. Varvatos also sought summary judgment of its affirmative defenses of copyright misuse and unclean hands. The court found no evidence that Marshall acted improperly to gain a competitive advantage with respect to the copyrights at issue, nor is there evidence of fraud or misconduct. However, because the circumstances under which the works were created were not documented, summary judgment is GRANTED in favor of Varvatos as to Davis's copyright infringement claim regarding the 29 images.