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16 of 16 The Mayor Gallery Ltd v. The Agnes Martin Catalogue..., 2019 WL 2902163...

2019 WL 2902163 (N.Y.Sup.), 2019 N.Y. Slip Op. 32089(U) (Trial Order) Supreme Court of New York. New York County

**1 THE MAYOR GALLERY LTD, Plaintiff, v. THE AGNES MARTIN CATALOGUE RAISONNÉ LLC, Arnold Glimcher, Marc Glimcher, and Tiffany Bell, Defendants.

No. 655489/2016. July 5, 2019.

Decision & Order

Masley, J.

MOTION DATE ______

MOTION SEQ. NO. 004

*1 The following e-filed documents, listed by NYSCEF document number (Motion 004) 92, 93, 94, 95, 96, 97, 98, 99, 100, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115, 116, 117, 118, 119, 120, 121, 131, 136, 137 were read on this motion to/for DISMISSAL.

In its April 3, 2018 decision and order (NYSCEF 66), the court granted defendants' prior motion, motion sequence number (Motion) 001, and dismissed plaintiff's First Amended Complaint (FAC) in its entirety but permitted plaintiff leave to replead several of the dismissed claims. A Second Amended Complaint (SAC), dated April 24, 2018, was filed to NYSCEF on April 25, 2018 (NYSCEF 70). Defendants now move, pursuant to CPLR 3211 (a) (1), (a) (3), and (a) (7) in Motion 004, to dismiss the SAC.

The court incorporates here its April 3, 2018 decision resolving Motion 001 (NYSCEF 66) in which the factual background of this matter is discussed in detail. The court presumes familiarity with the action and the facts in this decision and order are limited to those that illustrate the changes between the FAC and SAC and those otherwise necessary for the court to resolve Motion 004.

The Prior Motion to Dismiss the FAC (Motion 001)

The court dismissed the FAC in its April 3, 2018 decision and order. As a threshold matter, the court narrowed the scope of its review of the FAC on the preliminary bases of plaintiff's standing to **2 raise its various claims. Standing to raise tort claims, such as most of those contained in the FAC and SAC, necessarily depends on whether the plaintiff has sustained an injury. In reviewing the FAC, the court determined that, at that pre-answer motion to dismiss stage, plaintiff's allegations were adequate as to injury with respect to only certain artworks and as to certain defendants; that is, the court determined that, for the purpose of analyzing Motion 001 and the FAC, it would only review the claims to the extent that they involved artworks for which plaintiff had alleged an accrued injury. In short, judicial review was warranted pre-answer and pre-discovery only where plaintiff had issued a refund to certain collectors, as there was otherwise no controversy in tort between the parties to be adjudicated.

Ultimately, the court found that there was only standing as to the artworks sold to two collectors, Levy and Shainwald, who were allegedly refunded by plaintiff after the Notification Letters were sent. Further, plaintiff's injury claims amounted, for each tort claim, to the amount that the four collectors had paid and had been, or may be in the future, refunded; accordingly, the court dismissed for lack of standing plaintiff's first, second, third, fourth, and fifth (inasmuch as it sounded in tort) claims as they related to Kolodny and Labouchère, the collectors who had, at that time, not been refunded.

The court further dismissed plaintiff's first through sixth claims in the FAC as raised against the individual defendants on the basis that plaintiff had alleged “only general, conclusory allegations that the individual defendants participated in the claimed tortious acts or omissions” and had not “demonstrate[d] that the individual defendants benefited from the alleged torts” (NYSCEF 66). The court further dismissed the contract prong of the sixth cause of action as against the individual defendants for lack of privity (id.). Finally, the court dismissed with prejudice plaintiff's General Business Law (GBL) § 349 claim as to all defendants as inadequately pleaded (id.).

Amendments to the SAC

*2 Plaintiff amended the caption to remove as defendants the “Members of the Authentification [sic] Committee of the Agnes Martin Catalogue Raisonné,” identified in the FAC as “John Doe or Jane Doe ##1-6.” The defendants that remain are Agnes Martin Catalogue Raisonné LLC (AMCR), Arnold **3 Glimcher (A Glimcher), Tiffany Bell, and Marc Glimcher (M Glimcher). M Glimcher was identified in the FAC as a member of AMCR's Authentication Committee (Committee) but his identity was not disclosed publicly pursuant to the parties' Stipulation and Order for the Production and Exchange of Confidential Information, so-ordered by Justice Oing on December 20, 2016 (NYSCEF 22). 1

Plaintiff further amended ¶ 8 of the FAC to reflect that A Glimcher “is the managing member” of AMCR, he “controls” AMCR and the Committee, and he is “primarily” responsible for AMCR's policies, practices, procedures, and actions.

Plaintiff states in the SAC that both A Glimcher and M Glimcher are art dealers. M Glimcher is the president of Pace Gallery and was appointed to the Committee by A Glimcher, his father.

Plaintiff states in the SAC that A Glimcher “founded and principally owns” Artifex Press (Artifex), the. company that publishes the. Agnes Martin Catalogue Raisonné (Catalogue), and A Glimcher appointed defendant Bell to the Committee and named her the Catalogue's editor.

Plaintiff adds in the SAC that Kolodny, one of the collectors who owned an artwork at issue, demanded and obtained a full refund pursuant to a warranty of authenticity on November 1, 2016. Another collector, Labouchère, demanded a refund pursuant to a warranty of authenticity but agreed with plaintiff not to seek to enforce any warranty rights until plaintiff “prevails” in this action.

As to the thirteen artworks, the SAC includes plaintiff's allegation that all works were “purportedly signed by Agnes Martin,” and one work, Day & Night, also has a hand-written inscription “To Delphine, Agnes Martin.” 2 Plaintiff alleges that “[d]efendants failed to compare the handwriting . . . on the thirteen artworks.... [h]or did they engage a handwriting expert, at plaintiff's expense, to render an opinion on whether the signatures were authentic.”

**4 Plaintiff further asserts in the SAC that evidence was “ignored” by defendants in evaluating Day & Night when it was submitted the second time: for instance, radiocarbon test results for the work's canvas; an email allegedly from Jack Youngerman, the husband of Delphine Seyrig and a friend of Agnes Martin, in which Youngerman stated “the dedication was an affectionate ‘homage,’ ” but Seyrig never received the painting. Youngerman also expressed in that email his opinion that Day & Night could have been made by only Agnes Martin, not by a counterfeiter. 3

Plaintiff states in the SAC that the collectors have not purchased any artwork from plaintiff since the Notification Letters were received and reasserts none of the thirteen artworks can be offered for resale by plaintiff because of AMCR's decision not to include the works in the Catalogue.

*3 As to A Glimcher and M Glimcher, plaintiff asserts that there is a conflict of interest, or an appearance of such a conflict, because they both own and deal Agnes Martin artworks, and both have “substantial monetary interest in” her artworks, the value of which increases in step with the scarcity of her artworks on the market; thus, A Glimcher and M Glimcher have benefitted financially from AMCR's exclusion of the thirteen artworks from the Catalogue and “their decision to vote to reject” those artworks “was motivated by their economic interest... [to reduce] the number of Agnes Martin artworks in the marketplace.” As to M Glimcher, plaintiff asserts that he lacks the professional experience “and objectivity” to serve on the Committee due to his financial interests.

Plaintiff seeks, apart from the general causes of action in the SAC, to enjoin all defendants to answer certain inquiries posed in the SAC, and to enjoin all defendants from engaging in the alleged improper practices outlined in the SAC. Plaintiff additionally seeks attorneys' fees from defendants other than Bell under GBL § 349 (h).

**5 At oral argument for Motion 004, plaintiff's counsel clarified that the warranties of authenticity provided when the artworks were sold--no contract of sale is included in any papers before the court--were, implied warranties, not written or otherwise recorded, which are “breach[ed]” when AMCR declines to include the artwork in the Catalogue, “compel[ling plaintiff] to issue a refund” (Tr at 9-10). Though not actually alleged, the court presumes that plaintiff refers to the implied warranty applicable to the sale of art goods under the UCC (see UCC § 2-312 [warranty of title implied in sale of art]).

The Claims in the SAC

Plaintiff alleges the following causes of action in the SAC:

1. Product disparagement against all defendants except Bell as to all thirteen artworks;

2. Tortious interference with contract against all defendants except Bell as. to all artworks;

3. Tortious interference with prospective business relations against all defendants except Bell as to all artworks;

4. Negligent misrepresentation against all defendants except Bell as to all artworks;

5. Gross negligence/breach of contract against all defendants except Bell as to all artworks;

6. Breach of contract and breach of implied duty of good faith and fair dealing against all defendants except Bell (for pecuniary damages) and against all defendants (for injunctive relief) as to only one artwork, Day & Night, and

7. Violation of GBL § 349 against all defendants except Bell (for pecuniary damages) and against all defendants (for injunctive relief).

Defendants move, pursuant to CPLR 3211 (a) (1), (a) (3), and (a) (7), to dismiss the SAC entirely.

Discussion

As to Standing and the individual Defendants

As to the threshold issue of standing, the court finds that plaintiff's new allegations that it has refunded Kolodny's purchase is adequate, at this pre-answer, pre-discovery phase, for the court to consider the claims as they relate to Kolodny's submissions to AMCR. As to Labouchère, plaintiff now alleges that he demanded a refund but then rescinded the demand and agreed “in substance” that he “would forebear from enforcing his rights under [the warranties of authenticity] and from demanding and receiving a refund of the purchase prices, but only if and until [plaintiff] brought and then prevailed **6 in [this] action” (NYSCEF 70 [SAC], ¶ 51). Based on that allegation, Labouchère has not demanded or received a refund, or created a pending legal obligation on the part of plaintiff (see id.). Plaintiff states, in its memorandum of law in opposition to Motion 004, that the implied warranties are those controlled by UCC § 2-725 (2), which provides the statute of limitations for enforcing a warranty of goods that involve future performance, such as artworks: the four-year statute of limitations “must await the time of such [future performance and] the cause of action accrues when the breach is or should have been discovered” (NYSCEF 113 at 5, citing UCC § 2-725 [2]). Here, the breach (inauthenticity) occurs, as plaintiff alleges, when Notification Letters decline to include the artworks in the Catalogue.

*4 Plaintiff argues that it has cured the Labouchère-related standing issues in that Labouchère's now alleged to have demanded a refund, but then agreed with plaintiff that the time to enforce the warranty would not toll, and Labouchère would reserve: his right to demand a refund, until plaintiff “prevails in [this] action” (NYSCEF 70, ¶ 51). The court disagrees. Plaintiff has not corrected the identified standing issue as to Labouchère's artworks as plaintiff does not allege that it has sustained an actual or accrued injury regarding those artworks/transactions. This action does not seek a determination or declaration that the artworks are, in fact, authentic, and such relief would hot result from adjudication of these claims. Further, UCC § 2-725 (2) does not impose a legal duty on plaintiff to refund any collector for the artworks; it sets the time at which a collector's claim against plaintiff accrues and within which a collector must seek to enforce the implied warranty. Extending the collector's time to enforce the warranty does not constitute an actual injury sustained by plaintiff: there is no legal obligation imposed on plaintiff to issue a refund now, only the potential to face an enforcement demand or action in the future. Finally, plaintiff alleges in the SAC that Labouchère's right to demand a refund is contingent on plaintiff prevailing in this action; if plaintiff does not prevail, the collector's time to demand or commence an action to enforce the warranty may well have expired.

The court has hot ruled, at any juncture, whether plaintiff ultimately has standing to raise its tort claims--only that, for the purposes of these pre-answer motions, it would evaluate the claims insofar as **7 plaintiff has alleged it has sustained an injury--the most basic, elemental aspect of standing for a tort claim. The court has some doubts as to whether plaintiff has sustained an adequate injury as to all artworks, which were sold prior to the works being sent to AMCR (or any catalogue raisonné), and--as far as plaintiff alleges--none of the sales were contingent upon future inclusion of the works in a catalogue raisonné. Further, the. work that was resubmitted to AMCR by plaintiff, Day & Night, was rendered worthless by the initial non-inclusion in the Catalogue, as plaintiff alleges, and so the non-inclusion of Day & Night after resubmission does not state an accrued pecuniary loss: the artwork's value remained the same, though null, by its second non-inclusion in the Catalogue.

The court also notes defendants' contention that, pursuant to CPLR 3211 (a) (3), plaintiff lacks standing to raise any claims as to the artworks submitted by the collectors on the basis that those claims all arise from the collectors' contracts with AMCR, none of which identify plaintiff as a party to or intended beneficiary of those agreements. Defendants contend that plaintiff lacks standing to raise claims, in tort or contract, as to the collectors' submissions as plaintiff does not allege that any collector assigned or delegated their rights under those agreements to it. The court observes that, apart from its allegations that the artworks were sold with “attending” implied warranties, plaintiff alleges no facts in the SAC indicating that it maintained an interest in, or obligation arising from, the artworks it sold to the collectors. That each sale--for which there are no documents/invoices/ contracts submitted--included an implied warranty of authenticity does not automatically establish a continuing interest in the artworks and plaintiff does not allege that any sale was contingent on inclusion of any given artwork in a catalogue raisonné. In fact, plaintiff alleges that the Catalogue/AMCR existed prior to the Labouchère sales yet. plaintiff did not submit those works to AMCR. prior to the Labouchère transactions.

Nevertheless, the court addresses standing as to the collectors' submissions as necessary in the discussion of each claim below.

All claims in the FAC against the individual defendants were previously dismissed by this court in resolving Motion 001. In the SAC, plaintiff does not assert new facts as to any act or omission by Bell **8 in connection with any of the claims; accordingly, the complaint is dismissed against Bell in her individual capacity. As to A Glimcher, new factual allegations as to his “control” of the Committee, Artifex, and the Catalogue, as well as his personal collection of Agnes Martin artworks being rendered more valuable by declining to include the artworks at issue here in the Catalogue, may suffice to permit the court to analyze the claims in the SAC as raised against him in his individual capacity. As to M Glimcher, plaintiff now alleges that he was motivated by personal profit in declining to include the thirteen artworks at issue because he also owns a substantial collection of Agnes Martin artworks. There are no allegations that M Glimcher controls AMCR or the Catalogue, however, and, accepting as true plaintiff's assertion that the Committee is controlled by A Glimcher, M Glimcher's financial motivation is effectively irrelevant. In any event, the court will consider the claims plaintiff alleges in the SAC as to defendants AMCR, A Glimcher, and M Glimcher as appropriate below.

Standard on a Motion to Dismiss Pursuant to CPLR 3211 (a)

*5 On a pre-answer motion to dismiss, the court affords the complaint a liberal construction, accords plaintiff with every favorable inference, and accepts the factual allegations as true; however, bare legal conclusions and allegations that are flatly contradicted or inherently incredible are not afforded their most favorable intendment (see Leon v Martinez, 84 NY2d 83, 87-88 [1994]; Summit Solomon & Feldesman v Lacher, 212 AD2d 487, 487 [1st Dept 1995]). Accordingly, the court addresses below the claims in the SAC and whether plaintiff's amendments have cured the identified deficiencies and has otherwise satisfied the elements of those claims as to each of the remaining defendants.

1. Product disparagement against AMCR and the Glimchers as to all artworks

“[P]roduct disparagement is an action to recover for words or conduct which tend to disparage or negatively reflect upon the condition, value, or quality of a product or property, and ... the elements of a product disparagement which must be proven are: (1) falsity of the statement; (2) publication to a third person; (3) malice (express or implied); and (4) special damages” ( **9 Thome v Alexander & Louisa Calder Found., 70 AD3d 88, 105 [1st Dept 2009] [alteration in original], Iv denied 15 NY3d 703 [2010], quoting 44 NY Jur 2d, Defamation & Privacy § 273).

Even assuming plaintiff has standing to raise this claim as to all thirteen artworks, only one of which it submitted to AMCR to be considered for inclusion in the Catalogue (the second Day & Night submission [Plaintiff's Submission]), and accepting as true plaintiff's assertion that all the artworks are authentic, and further that publication of the Notification Letters to the submitting parties (the collectors and plaintiff, respectively) constitutes publication of a falsehood (i.e., that the work is inauthentic) to a third party (i.e., plaintiff asserts that the Notification Letter is a statement to the entire art world) (see Thome, 70 AD3d at 105-107 [noting that “[t]here is no question that. . . treating the (non-inclusion of an artwork in a catalogue raisonnè) as a publication asserting the Work's inauthenticity to the world at large would constitute a substantial expansion of the law]), plaintiff's claim remains defective.

With respect to the falsity requirement, the Notification Letters are clear that they are not to be construed as statements that a work is inauthentic, and the Notification Letters plainly state only that the work is not being included in the Catalogue. Further, whether any catalogue raisonné's inclusion or non-inclusion of an artwork has any bearing on a work's value has been recognized by New York court's as a function of the art marketplace, and it is not for the court to determine what the art market should or should not credit as reliable (see id. at 97-98 [noting that a catalogue raisonné is not “controlled by any governmental

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 5 The Mayor Gallery Ltd v. The Agnes Martin Catalogue..., 2019 WL 2902163... regulatory agency,” and there is no “guarantee that the art world will accept (its) validity and reliability”; “(w)hether the art world accepts (it) as a definitive listing of an artist's work is a function of the marketplace, rather than of any legal directive or requirement,” thus, a catalogue's “inclusion or exclusion of particular works creates (no) legal entitlements or obligations”]). First, as to Levy's submission of Day & Night, the one-year statute of limitations for a product disparagement claim accrued, accepting the allegation that the Letter rendered the work unsaleable, on the date it was received in or around September 25 or early-October 2014, and this action was not initiated until October 17, 2017 (NYSCEF 1 [original summons and complaint]). Even if the statute of **10 limitations was extended by plaintiff's resubmission of Day & Night in May 2015, plaintiff has the above-mentioned issue of special damages relating to that work: if it was rendered worthless when it was not included the first time, plaintiff did not sustain a pecuniary loss when the resubmitted work was not included in the Catalogue. Plaintiff also has not cured its inability to allege special damages with respect to the artworks submitted by Labouchère as no refund--or any pecuniary loss--is claimed by plaintiff as to those works at this time. Furthermore, asserting only the sale price and sales tax for the sales of the artworks and nothing more is insufficient to establish special damages here. There are no particular allegations that plaintiff sustained any special damages apart from rescinding the sales to certain collectors as a result of the non-inclusion of the works in the Catalogue. Plaintiff does not assert in more than conclusory, speculative statements that it has sustained any damage to. its business reputation or future sales.

*6 In any event, even assuming that plaintiff has established special damages with respect to the artworks submitted by Shainwald and Kolodny in the amount of refunds it has issued to those collectors, plaintiff's amended allegations in the SAC remain insufficient to adequately state malice for this claim. Plaintiff's allegations that the Committee failed to consider the additional information submitted with Plaintiff's Submission of Day & Night--including the radiocarbon testing results and the - purported email of Youngerman--were included in the FAC and were considered by the court in its earlier decision resolving Motion 001. AMCR, pursuant to the Agreements with the collectors and plaintiff, had no obligation to assign any special importance to the documents submitted with each Agreement, and there is no obligation on the part of AMCR under the Agreements to identify the basis of its decision or the procedures or methods it employed in reaching its decisions.

The amended allegations that A Glimcher and M Glimcher have substantial personal collections of Agnes Martin artworks and are, therefore, financially motivated to decline applications for inclusion in the Catalogue are vague, even accepted as true. Plaintiff's amended allegations are speculative in that they do not identify any specific financial benefit defendants, particularly the Glimchers, obtained in not **11 including the thirteen artworks, and combined with plaintiff's allegation that its principal, James Mayer, and A Glimcher have had unspecified “longstanding frictions” does not establish implied or actual malice sufficient to maintain this action. Likewise, the amended allegation that A Glimcher “controls” the Committee and dictates its determinations is a bare legal conclusion that is not entitled to every favorable inference and does not demonstrate malice for the purpose this product disparagement claim.

Furthermore, as the court previously stated, nothing in the Agreements with AMCR requires defendants to: provide “information and documents explaining and supporting [AMCR's] decision” to include or not include any artwork submitted; allow a submitting person or entity to “review and rebut any documents or information relied upon by defendants”; reveal the identities of the Committee members; or share the policies, practices, and procedures followed by AMCR or the Committee. The Agreements are clear in that they grant AMCR the sole discretion review artworks submitted for inclusion to the Catalogue as it deems appropriate (see e.g. NYSCEF 94, ex B). Plaintiff's allegations that the Committee failed to hire a handwriting expert are speculative, as are the allegations that additional documents submitted by plaintiff with Plaintiff's Submission were ignored.

Accordingly, given the numerous pleading issues impeding this claim, the court declines to infer malice under the circumstances on the record before it in this SAC, which largely reiterate the previously-dismissed allegations in the FAC (e.g. Van-Go Transp. Co., Inc. v New York City Bd. of Educ., 971. F Supp 90, 106 [EDNY 1997] [discussing New York cases]).

2. Tortious interference with contract against AMCR and the Glimchers as to all artworks

As discussed above, plaintiff's amendments in the SAC do not establish continuing obligations in the sale contracts with the collectors. Furthermore, the only allegations that support defendants' knowledge that non-inclusion of the artworks in the Catalogue would force the collectors to rescind and plaintiff to issue refunds is speculative; there are no allegations that any of the defendants were aware of the terms of the sale agreements between plaintiff and the collectors, and those terms are not even **12 wholly alleged by plaintiff in the SAC. Moreover, plaintiff's allegations do not demonstrate that the Notification Letters were sent with the intent to induce a breach of an existing contract, rather than in the furtherance of AMCR's purpose. Nothing plaintiff alleges in the SAC has cured the deficiencies previously identified by the court with the FAC as to this claim, and speculative assertions as to defendants' knowledge or intent are insufficient to adequately allege the necessary elements.

3. Tortious interference with prospective business against AMCR and the Glimchers as to all artworks

*7 Plaintiff has failed to cure the deficiencies with this claim as well. There are no nonconclusory or non-speculative allegations in the SAC that establish, or from which it can be inferred, that defendants were aware of continuing business relationships with the collectors or other related customers and intentionally acted to harm plaintiff's prospective business relationships. Plaintiff's allegation that the collectors have not purchased artworks from plaintiff since the Notification Letters were sent is insufficient; plaintiff does not allege that ongoing business was being conducted with the collectors, or any other customers, that was negatively affected by the Notification Letters.

Further, plaintiff has not established that defendants were solely motivated by malice or used wrongful means to interfere with plaintiff's prospective business relationships. Plaintiff has not alleged that its business relationships, aside from the collectors' particular sale contracts, were impacted by the Notification Letters. Conclusory allegations that that the collectors have not done business with plaintiff since the Letters were sent are insufficient to establish interference with future business relationships absent specific factual statements from which to infer that the collectors had ongoing, continuous business relationships with plaintiffs that were improperly and intentionally impeded by defendants' allegedly improper actions. Thus, plaintiff does not adequately allege this claim and, as malice element is not saved by an independent tort based on the court's rulings above.

4. Negligent misrepresentation against AMCR and the Glimchers as to all artworks

“The elements of a claim for negligent misrepresentation are: (1) the existence of a special or privity-like relationship imposing a duty on the defendant to impart correct information to the plaintiff; **13 (2) that the information was incorrect; and (3) reasonable reliance on the information” (MatlinPatterson ATA Holdings LLC v Federal Express Corp., 87 AD3d 836, 840 [1st Dept 2011] [internal quotation marks and citations omitted]).

Plaintiff has not cured the defects previously identified in that there are no nonconclusory, non-speculative allegations stating that defendants were aware of the ramifications of non-inclusion of each artwork. In the SAC, plaintiff does not assert with adequate facts that defendants were aware that each collector would seek a refund from plaintiff if each submitted work was not included in the Catalogue. Further, plaintiff has not established a privity-like relationship on the basis of only defendants' position of expertise in the field of Agnes Martin artworks and the only contract for which there is privity between the parties is that for Plaintiff's Submission which was the result of an arms-length commercial transaction and which does not support plaintiff's negligent misrepresentation claim (see Mandarin Trading Ltd. v Wildenstein, 17 Misc 3d 1118(A), 2007 NY Slip Op 52059[U], *6 [Sup Ct, NY County 2007], affd 65 AD3d 448 [1st Dept 2009], affd 16 NY3d 173 [2011]).

Further, plaintiff's post-Notification Letter communications with defendants' attorney cannot be used to cure the pleading defects--that plaintiff communicated with defendants after the Letters were sent does not support the knowledge requirement, especially where, for instance, plaintiff only resubmitted one of the thirteen artworks for reconsideration. As discussed above, there is no tenable independent tort claim in the SAC, and, thus, this claim cannot be saved on that basis.

5. Gross negligence contract claim against AMCR and the Glimchers as to all artworks

Plaintiff's amended allegations pertaining to its gross negligence/breach of contract claim also fail to cure the deficiencies identified by the court in its prior decision. Plaintiff speculates that defendants ignored additional evidence submitted with Day & Night with Plaintiff's Submission and failed to engage a handwriting expert to compare the signatures and other writing on the submitted artworks--in particular, Day & Night, the only work for which plaintiff's executed an Agreement with **14 AMCR. The “new” allegations plaintiff relies on were nearly all included in the FAC and considered by the court, and they are not adequate, as repackaged in the SAC, to maintain this claim at this time.

*8 Further, plaintiff's allegations are refuted by the Agreements entered by plaintiff and each of the collectors: in consideration for prospective inclusion of the work in the Catalogue, the contracting parties each agreed that AMCR would examine the work in the manner AMCR, in its sole discretion, deems appropriate. None of plaintiff's amended allegations in the SAC evince “a reckless disregard for the rights of others or ‘smacks' of intentional wrongdoing” (Morgan Stanley Mtge. Loan Trust 2006-13ARX v Morgan Stanley Mtge. Capital Holdings LLC, 143 AD3d 1, 8 [1st Dept 2016]). A contractual gross negligence claim is an extraordinary measure, and “merely alleging that breach of contract duty arose from lack of due care will not” suffice to establish such a claim sounding in tort or contract (see Saint Patrick's Home for the Aged & Infirm v Laticrete Intl., 267 AD2d 166, 166 [1st Dept 1999]).

6. GBL § 349 claim against all defendants

Plaintiff's GBL § 349 claim was previously dismissed with prejudice and there are no new allegations supporting that claim. Accordingly, it is not discussed in this decision as the law of the case requires its dismissal.

7. Plaintiff's request for injunctive relief against defendants and CPLR 3211 (d) request for discovery

While plaintiff has demonstrated that the method of reviewing submitted works is left to the sole discretion of defendants, particularly AMCR, and that plaintiff's post-Notification Letter requests were not answered, plaintiff was well aware that the Agreements it and the collectors entered with AMCR permitted exactly that: AMCR, in its sole discretion, would review applications for inclusion in the Catalogue, it would not furnish explanatory reasons for its decisions to include or not include works, and it was not obligated to permit any party--a contracting party or an entity that sold the work to that party--to refute or supplement AMCR's determinations. Plaintiff has been given additional chances to replead its claims with more particularity and/or with additional nonconclusory facts, as appropriate, but it has not met its burden of alleging factual allegations to sufficiently state the elements of any of its **15 various claims. While limited discovery may disclose certain information to plaintiff to aid it in appropriately pleading its claims, that is not the standard. Rather, the “mere hope that discovery may reveal facts essential to justify opposition doesn't warrant denial” of a motion to dismiss (Karpovich v City of New York, 162 AD3d 996 (2d Dept 2018). Moreover, the court is not inclined to permit plaintiff to use pre-answer discovery to transform mere suspicions into factual assertions to submit what would now be a third amended complaint (see Chappo & Co., Inc. v Ion Geophysical Corp., 83 AD3d 499, 500-501 (1st Dept 2001), especially where plaintiff has failed to allege an evidentiary basis that would circumscribe the clear language of the AMCR Agreements precluding many of plaintiff's claims with respect to its own submission of Day & Night (Plaintiff's Submission), and an overall failure to identify adequate facts that would permit plaintiff's claims to proceed to discovery in the first place.

The facts plaintiff purports to seek are those that have little to no bearing on the claims as the Agreements that it and the collectors freely entered preclude much of the discovery plaintiff seeks to take, and the obligations plaintiff claims were breached are nearly entirely obligations that AMCR was not required to perform or explain under those Agreements.

8. Legal fees

The issue of legal fees under Motion 004, as with Motion 001, are referred to the Special Referee to determine. Specifically, the Special Referee shall hear and report on the extent to which, if at all, the Agreement entered between plaintiff and AMCR in connection with Plaintiff's Submission encompasses plaintiff's dismissed claims in the FAC and SAC, and any other issues pertaining to liability for attorneys' fees, arising from plaintiff's Agreement with respect to Motions 001 and 004 under applicable law and authority.

*9 Accordingly, it is

ORDERED that Motion Sequence Number 004 is granted and Plaintiffs Second Amended Complaint is dismissed in its entirety; and it is further

**16 ORDERED that Plaintiff's request for pre-answer discovery under CPLR 3211 (d) is denied; and it is further

ORDERED that the portion of Defendants' motion that seeks recovery of attorney's fees, costs, and disbursements is severed, and the issues of the amount of reasonable attorneys' fees, costs, and disbursements the Defendants may recover against the Plaintiff are referred to a Special Referee to hear and report (or, if the parties shall so stipulate, to hear and determine); and it is further

ORDERED that counsel for the Defendants shall, within 30 days from the date of this order, serve a copy of this order with notice of entry, together with a completed Information Sheet, upon the Special Referee Clerk in the Motion Support Office (Room 119M), who is directed to consolidate this matter with the previously-severed attorneys' fees issues referred in connection with Motion Sequence Number 001 and to place the consolidated matter on the calendar of the Special Referee's Part for the earliest convenient date.

7/2/2019

DATE

ANDREA MASLEY, J.S.C.

Footnotes 1 To the extent that any documents are filed to the NYSCEF docket in this action, the parties are directed to execute a new stipulation for the exchange of confidential material in the form accepted by Part 48 and to otherwise comport with the Part 48 Rules and Procedures, both available on the NYCourts.gov public website. 2 The FAC included allegations regarding the inscription on Day & Night (NYSCEF 25 [FAC], ¶ 22). 3 The FAC also included allegations regarding plaintiff's resubmission of Day & Night with radiocarbon testing results and the purported email by Youngerman (NYSCEF 25; ¶ 28; see also id. ex B [plaintiff's submission to AMCR for Day & Night, including both radiocarbon testing results and Youngerman's alleged email, annexed to the FAC]).

2018 WL 1638810 (N.Y.Sup.) (Trial Order) Supreme Court of New York. New York County

THE MAYOR GALLERY LTD., Plaintiff, v. THE AGNES MARTIN CATALOGUE RAISONNÉ LLC, Arnold Glimcher, Tiffany Bell, Members of the Authentification Committee of the Agnes Martin Catalogue Raisonné, I.E., John Doe or Jane Doe ##1-6, Defendants.

No. 655489/2016. April 5, 2018.

Decision and Order

Masley, J.

Mot. Seq. No.: 001

*1 Defendants, The Agnes Martin Catalogue Raisonné LLC (AMCR), Arnold Glimcher, Tiffany Bell, and Members of the “Authentification [sic] Committee of the Agnes Martin Catalogue Raisonné” (Committee), “i.e., John Doe or Jane Doe ##1-6,” 1 move, pursuant to CPLR 3211 (a) (1), (a) (3), and (a) (7), to dismiss the amended complaint of plaintiff, The Mayor Gallery Ltd., an international art dealer and gallerist organized under the laws of the United Kingdom.

This action arises from the submission of 13 artworks to AMCR, a private nonprofit organization that authenticates and compiles a catalogue of works by deceased artist Agnes Martin, which is periodically updated and published online (Catalogue). Prior to the formation of AMCR in 2012, plaintiff had sold those artworks, purportedly created by Martin, to four separate private art collectors.

After AMCR was founded, the collectors each submitted their purchased artworks to AMCR to be included in the Catalogue, but AMCR declined after examining the works and the collectors' accompanying applications. After AMCR declined to include one particular work--a painting entitled Day and Night --plaintiff refunded its purchaser, retook possession of the work, and resubmitted the painting to AMCR, which again declined to include the artwork in the Catalogue. In sum, plaintiff refunded two of the collectors and accepted the return of two works; the two remaining collectors retained possession of their respective 11 artworks, but plaintiff alleges that it has agreed to refund those collectors if it does not prevail in this action.

Background

The following allegations are taken from the amended complaint, except as otherwise noted.

A “catalogue raisonné” is a collection of a specific artist's artworks that have been authenticated by some designated person or group, and which often takes the form of a continuously-updated, published compilation that identifies and records (i.e., photographically) the accepted works of the artist (see plaintiff's amended complaint [compl.] ¶¶ 2-3).

Martin was an abstract expressionist and minimalist artist whose artworks “regularly sell at auction and worldwide for hundreds of thousands to millions of dollars” (see id. ¶¶ 1, 7). The amended complaint challenges, among other things, the policies and

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 1 The Mayor Gallery Ltd. v. The Agnes Martin Catalogue..., 2018 WL 1638810... procedures of AMCR, which created and maintains the Catalogue, a digitally-published compilation of Martin's paintings and works on paper, and the Committee, which authenticates and compiles those works for inclusion in the Catalogue. According to plaintiff, Christie's and Sotheby's--“the two dominate [sic] auction houses in the United States and the world”--recognize the Catalogue “as the definitive compilation of authentic artworks of Agnes Martin;” thus, plaintiff alleges that the Committee's decision to not include a work in the Catalogue is “recognized in the worldwide marketplace as a conclusive statement to the public that the artwork is a fake,” and such works are rendered “worthless” and unsaleable (id. ¶¶ 16-18).

The Parties

*2 Plaintiff is an international art dealer and gallerist that sells works of art at auction and in private sales (id. ¶ 6). Its principal is James Mayor.

According to plaintiff, individual defendant Glimcher is “the primary if not the exclusive owner and manager and Chairman” of the Pace Gallery (Pace), “a leading . . . international art dealer and gallery” (id. ¶ 9), the founding member of AMCR, as well as the founder, and current member of, the Committee (see id. ¶¶ 6-8, 13). Pace and Glimcher “claim that they have represented Agnes Martin . . . from 1975 to the present,” and presently represent her estate (id. ¶ 10). AMCR is a New York company formed in November 2012, eight years after Martin's death, to authenticate Martin's paintings and works on paper and to compile and maintain the Catalogue (see id. ¶¶ 7, 13). Individual defendant Bell is the editor of the Catalogue and a member of the Committee. Plaintiff alleges that the four remaining members of the Committee--whose identities are kept secret from the public--were revealed to plaintiff only through documents produced in this action (id. ¶ 14). 2

Submissions to the Catalogue

Plaintiff alleges that “collectors have no choice but to submit their Agnes Martin artworks to defendants for vetting,” and “[c]ollectors are required” to complete a “non-negotiable” “Examination Agreement” (Agreement) for each work submitted (id. ¶ 19). After reviewing the submitted work, “[t]he defendants then take only one of two actions: they either accept or reject the artwork for inclusion in the [Catalogue],” and the collector is notified of the decision by a “cursory form letter, without any explanation of any kind” (id. ¶ 20). Plaintiff alleges that “defendants also refuse to answer. .. reasonable inquiries from the owners of rejected artworks who[]. . . seek an opportunity for rebuttal and detailed information” (id. ¶ 21). However, nothing in the Agreements requires AMCR, or any defendant, to provide such opportunities or information (see e.g. plaintiff's exhibits B, D, E, F, G).

1. Levy's and plaintiff's submissions of Day and Night

Plaintiff alleges that it sold a painting, Day and Night, to private collector Jack Levy for $2.9 million in September 2010. On May 1, 2014, Levy submitted the work to AMCR with a completed Agreement. Levy was informed by AMCR, via “Notification Letter,” dated September 25, 2014, that Day and Night would not be included in the Catalogue (compl. ¶¶ 22-25; plaintiff's exhibit [ex.] D). Plaintiff thereafter refunded the sale price and sales tax to Levy, and accepted the return of the painting.

On May 14, 2015, Plaintiff submitted its own Agreement--which corrected “a number of important errors” made by Levy--to AMCR for Day and Night, along with additional documents supporting the work's exhibition history, photographs of Martin with the work, and radiocarbon test results for its canvas; plaintiff did not, however, resubmit the painting itself, allegedly because Bell told plaintiffs principal, Mayor, that it was “unnecessary” (compl. ¶ 28-31; ex. B). Plaintiff was advised, by Notification Letter dated October 21, 2015, that Day and Night would not be included in the Catalogue. Plaintiff also received a letter, addressed to plaintiff's principal, Mayor, and dated October 22, 2015, from defendants' law firm that stated that: “[o]ther submitted works referencing [plaintiff] in their provenance raised material legal concerns;” and “advised that you will be held responsible for compensatory and punitive damages” “[i]f you bear personal responsibility for the nature of these works and their questionable provenance” (see ex. B).

2. Kolodny, Shainwald, and Labouchère's submissions

*3 Plaintiff sold a work on paper, Untitled, to Patricia and Frank Kolodny in 2009, who gifted the work to their daughter, Johnanna Kolodny (Kolodny). Kolodny submitted Untitled with her Agreement to AMCR on August 15, 2015, and was informed by Notification Letter, dated November 24, 2015, that the work would not be included in the Catalogue. Kolodny “decided to retain ownership of Untitled, but only until and if [plaintiff] established that it was authentic and marketable” (compl. ¶¶ 34-39; ex. E).

In December 2012, plaintiff sold a work on paper, The Invisible, to Sybil Shainwald for $180,000. Shainwald submitted that work and an Agreement to AMCR on August 15, 2015, and was informed by Notification Letter, dated November 24, 2015, that the work would not be included in the Catalogue. Shainwald returned The Invisible to plaintiff, and was refunded the purchase price (compl. ¶¶ 40-45; ex. F).

Plaintiff sold 10 paintings to Pierre de Labouchère in March and October 2013 for a € 3,250,000, “currently converting to $3,625,000.” Labouchère submitted those works, with 10 “identical” Agreements, to AMCR on October 13, 2014, and was notified that the works would not be included in the Catalogue by Notification Letters dated November 24, 2015. He “decided to retain ownership . . . only until and if [plaintiff] established that [they] were authentic and marketable” (compl. ¶¶ 46-51; ex. G).

Plaintiff alleges that, in each instance, “defendants' refusal to approve” each of the above works in the Catalogue “had as its purpose and was in substance and effect a declaration by defendants to [Levy, plaintiff, Kolpdny, Shainwald, and Labouchère, respectively,] and the marketplace that the artwork[s are] fake, rendering [the works] worthless” (compl. ¶¶ 26, 33, 38, 45, 51).

The Amended Complaint

Following the above events, plaintiff's attorney repeatedly sent communications to defendants' attorneys requesting, among other things: the identity of the person who signed the Notification Letters on behalf of AMCR; the names and curriculum vitae of each Committee member; the “steps and procedures” followed by AMCR and the Committee in rejecting the works; the “detailed reasons” the works were rejected from the Catalogue; copies of “any and all documents that were relied upon in connection with each rejection;” a copy of AMCR's operating agreement; and an opportunity for Mayor, “and perhaps others with relevant information, ... to fully examine and respond to the [] requested documents and facts” (ex. H; see compl. ¶¶ 52-65). Those requests were ignored.

On October 17, 2016, plaintiff commenced this action by filing a summons and complaint, and filed an amended complaint on January 9, 2017. The amended complaint contains seven causes of action: (1) product disparagement “for all thirteen artworks” (compl. ¶¶ 66-75); (2) tortious interference with contract “for all thirteen artworks” (id. ¶¶ 76-81); (3) tortious interference with prospective business relations “for all thirteen artworks” (id. ¶¶ 82-88); (4) negligent misrepresentation “for all thirteen artworks” (id. ¶¶ 89-95); (5) gross negligence and breach of contract for “all thirteen artworks” (id. ¶¶ 96-102); (6) breach of implied duty of good faith and fair dealing as to plaintiff's resubmission of Day and Night (id. ¶¶ 103-110); and (7) violation of General Business Law (GBL) § 349 (id. ¶¶ 111-112).

Plaintiff seeks damages in the amount of $7,233,438, the total value of the 13 artworks it sold, and the amount plaintiff has already, or “must be,” refunded to the four collectors; plaintiff also seeks an injunction enjoining defendants to answer the inquiries posed by plaintiff's attorney's letters, or enjoining defendants from engaging in the allegedly deceptive business practices (id. at 26).

*4 Defendants now move to dismiss the amended complaint pursuant to CPLR 3211 (a) (1), (a) (3), and (a) (7), and seek legal fees, costs, and expenses for the defense of this action, as provided under the Agreement plaintiff entered with AMCR when it resubmitted Day and Night (Plaintiff's Agreement).

Discussion

“On a motion to dismiss pursuant to CPLR 3211, the pleading is to be afforded a liberal construction. [The court] accept[s] the facts as alleged in the complaint as true, [and] accord[s] plaintiff[] the benefit of every possible favorable inference” ( Leon v Martinez, 84 NY2d 83, 87-88 [1994] [citation omitted]). However, bare legal conclusions and “factual claims which are either inherently incredible or flatly contradicted by documentary evidence” are not “accorded their most favorable intendment” (Summit Solomon & Feldesman v Lacher, 212 AD2d 487, 487 [1st Dept 1995]).

Part I: Threshold and Preliminary Matters

1. Standing, generally

Defendants contend that plaintiff lacks standing to raise claims challenging the Agreements entered into by the four collectors (Collectors' Agreements) or the rejection of the collectors' submissions because plaintiff was neither a party to, nor a third-party beneficiary of, the Collectors' Agreements.

Plaintiff responds that its first, second, third, fourth, fifth, and seventh claims sound in tort, “wholly independently from the [Plaintiff's] Agreement,” and “arise from defendants' duties in the marketplace of Agnes Martin artworks and to the public at-large [sic], which includes plaintiff.” However, plaintiff's seventh cause of action alleges a violation of GBL § 349, a statutory claim that is separately addressed in Part II, below.

The parties' arguments are misguided.

“Whether a person seeking relief is a proper party to request an adjudication is an aspect of justiciability which, when challenged, must be considered at the outset of any litigation. Standing is a threshold determination, resting in part on policy considerations, that a [party] should be allowed access to the courts to adjudicate the merits of a particular dispute that satisfies the other justiciability criteria. That an issue may be one of ‘vital public concern’ does not entitle a party to standing. ... [A] litigant must establish its standing in order to seek judicial review” ( Society of Plastics Indus., Inc. v County of Suffolk, 77 NY2d 761, 769 [1991] [citations omitted]).

Generally, a party has standing to pursue tort claims when it has been actually aggrieved; that is, absent an injury, there is no controversy to be adjudicated by the court (see Siegel, NY Prac § 136 at 232-233 [4th ed 2005]; see Kronos, Inc. v AVX Corp., 81 NY2d 90, 94 [1993] [“[A]s a general proposition, a tort cause of action cannot accrue until an injury is sustained.”]). To have standing to enforce or challenge a contract, on the other hand, a plaintiff must be a party to, or a third-party beneficiary of, the agreement at issue (see generally Carrieri v Kim, 2014 WL 5342524 [Sup Ct, NY County 2014). Further, “a simple breach of contract is not to be considered a tort unless a legal duty independent of the contract itself has been violated” (OP Sols., Inc. v Crowell & Moring, LLP, 72 AD3d 622, 622 [1st Dept 2010], quoting Clark-Fitzpatrick, Inc. v Long Is. R.R. Co., 70 NY2d 382, 389 [1987]).

*5 Plaintiff's standing to raise its tort claims necessarily depends on its allegations of injury. Plaintiff alleges as to each of its claims that it was injured by the Notification Letters, and the implicit publication of the 13 works' inauthenticity by defendants, “in the amount of $7,233,438 - the total amount paid by and that has already been or must be refunded to [all four collectors]” (see e.g. compl. ¶¶ 71-72, 74). However, only two of the collectors--Levy and Shainwald (Rescinded Collectors)-- actually “rescinded” their contracts and received refunds from plaintiff (see compl. ¶¶ 27, 45). Neither Kolodny nor Labouchère demanded or received a refund for their purchased works (id. ¶¶ 34, 46). Accordingly, no injury to plaintiff has accrued with regard to the Kolodny or Labouchère artworks, and, thus, it does not yet have standing to raise tort claims as to those transactions.

Furthermore, plaintiffs only allegation of injury that is not wholly tied to contract rescission and refunds is its vague, unsupported allegation that defendants interfered with plaintiff's “profitable business relationship[s]” with the four collectors (compl. ¶¶ 82-88). Plaintiff does not, however, allege that those collectors, or any other customers, ceased doing business with it (see id.). In fact, in the paragraphs supporting the tortious interference with prospective business relations claim, plaintiff alleges that it was damaged in the amount of $7,233,438--the total value of refunds it has, or which “must be,” paid to the four collectors (see id.). For each of its tort claims, plaintiff alleges only damages it sustained by rescinding, or potentially rescinding in the future, its past contracts with the four collectors.

Inasmuch as plaintiff has any standing to raise tort claims, that standing extends to only its accrued injuries relating to the Rescinded Collectors; thus, plaintiff's first, second, third, and fourth causes of action are dismissed to the extent that they pertain to plaintiff's contracts with, and works sold to, Kolodny and Labouchère. 3

2. The individual defendants

Defendants contend that each of plaintiff's seven claims must be dismissed as against the individual defendants because the amended complaint does not allege that the individual defendants acted outside of the scope of their employment or sought a personal benefit in connection with the alleged acts or omissions.

Plaintiff responds that piercing the corporate veil to reach the individual defendants is proper because each individual defendant, as a member of the Committee, may be held personally liable for participating in the commission of the torts, even if the tortious acts or omissions were committed in furtherance of AMCR. Plaintiff also argues that the facts “relevant to piercing the corporate veil are within the exclusive knowledge and control of defendants;” thus, dismissing those defendants should be considered “only after issue is joined and discovery completed.”

Limited Liability Company Law § 610 states that “[a] member of a limited liability company is not a proper party to proceedings by or against a limited liability company, except where the object is to enforce a member's right against or liability to the limited liability company.” Recognizing “the essential distinction between a corporation and those individuals who administer its affairs, and that sound public policy restricts the imposition of liability on corporate officers and directors for the acts of the corporation,” the First Department employs an “enhanced pleading requirement” for tort claims allegedly committed by corporate officers ( Petkanas v Kooyman, 303 AD2d 303, 305, [1st Dept 2003]).

Accordingly, a plaintiff's pleadings must contain “particularized ... allegations that the acts of the defendant corporate officers which resulted in the tortious [conduct] either were beyond the scope of their employment or, if not, were motivated by their personal gain, as distinguished from gain for the corporation” (id.). In that context, “personal gain” means that “the challenged acts were undertaken ‘with malice and were calculated to impair the plaintiff's business for the personal profit of the [individual] defendant’ ” (id., quoting Joan Hansen & Co., Inc. v Everlast World's Boxing Headquarters Corp., 296 AD2d 103, 110 [1st Dept 2002]; see also Hoag v Chancellor, Inc., 246 AD2d 224, 230 [1st Dept 1998] [an individual corporate officer/director “is liable when he acts for his personal, rather than the corporate interests.”]).

*6 Here, plaintiff's amended complaint contains only general, conclusory allegations that the individual defendants participated in the claimed tortious acts; there are no specific allegations that the individual defendants committed any specific tortious act or omission. Plaintiff also does not allege particularized facts that demonstrate that the individual defendants benefited from the alleged torts. Accordingly, plaintiff's pleadings are insufficient with respect to its claims against the individual defendants. Further, absent privity between plaintiff and those parties, plaintiff lacks standing to pursue its sixth cause of action--a breach of contract claim relating to Plaintiffs Agreement with AMCR--against the individual defendants (see e.g. Albstein v Elany Contr. Corp., 30 AD3d 210 [1st Dept 2006]). For those reasons, the first through sixth claims are dismissed as against the individual defendants.

3. Whether the Agreement(s) preclude plaintiff's claims, generally

Defendants claim that all of plaintiff's claims are barred by the waiver provisions contained in all 14 Agreements. Plaintiff responds that its claims are not precluded because the Agreements are unenforceable, and that the Collectors' Agreements do not apply because plaintiff was not a party to those contracts.

Plaintiffs Agreement is the only one of the 14 total Agreements that was submitted by plaintiff to AMCR. Plaintiff is neither a party to, nor an intended beneficiary of, the 13 Collectors' Agreements; thus, the Collectors' Agreements do not bar plaintiff's claims. Plaintiff's Agreement pertains to only plaintiff's submission of Day and Night, and does not bar plaintiff's claims as to any of the other 13 submissions to AMCR. 4

Part II: Plaintiffs Seven Causes of Action

1. First cause of action for product disparagement

Defendants contend that plaintiff fails to establish the necessary elements of a product disparagement claim. Plaintiff responds that the elements are adequately pleaded.

“[P]roduct disparagement is an action to recover for words or conduct which tend to disparage or negatively reflect upon the condition, value, or quality of a product or property, and . . . the elements of a product disparagement which must be proven are: (1) falsity of the statement; (2) publication to a third person; (3) malice (express or implied); and (4) special damages” ( Thome v Alexander & Louisa Calder Found., 70 AD3d 88, 105 [1st Dept 2009] [alteration in original], Iv denied 15 NY3d 703 [2010], quoting 44 NY Jur 2d, Defamation & Privacy § 273).

Preliminarily, plaintiff's standing to raise its product disparagement claim against AMCR depends upon plaintiff's allegations of special damages resulting from AMCR's malicious publication to a third person of a false statement. In support of this claim, plaintiff alleges the following harm: “Solely because of the [false statements published to the general public via] the Notification Letters, Kolodny, Shainwald, and Labouchère sought recission of their contracts under which they agreed to purchase the artworks;” plaintiff, “solely because of the Notification Letter, cannot again offer Day and Night for sale;” and plaintiff “was damaged by defendants' product disparagement in the amount of $7,233,438 - the total amount paid by and that has already been or must be refunded to [all four collectors]” (compl. ¶¶ 71-72, 74).

Setting aside the Kolodny and Labouchère transactions, which were not rescinded or refunded, the only special damages plaintiff alleges are the refund amounts paid to the two Rescinded Collectors. Plaintiff, thus, has standing, tenuously, to raise its product disparagement claim as against AMCR in relation to the two rescinded sale contracts. Nonetheless, plaintiff does not sufficiently plead this claim. Even accepting as true plaintiff's allegations that the Notification Letters constituted false statements published to the general public, 5 plaintiff has not met its burden of pleading malice.

*7 In opposition to this motion, plaintiff argues that “[s]pecific allegations” establishing malice are contained in paragraphs 69 and 98 of the amended complaint: “69 .. . . [the false] statements [of inauthenticity] were made without a full and careful examination of the facts relating to authenticity and without providing- indeed refusing to provide- information and documents explaining and supporting the decision. Nor did defendants give [plaintiff], Kolodny, Shainwald and Labouchère an opportunity to review and rebut any documents or information relied upon by defendants in connection with their decisions. In substance, defendants conducted their vetting peremptorily and dictatorially much like a Star Chamber- without disclosing their identities or their policies, practices and procedures and without disclosing the evidence supporting or justifying their decisions and without affording The Mayor Gallery, Kolodny, Shainwald and Labouchère an opportunity to review, respond or dispute their conclusions.

70. The statements made in the Notification Letters were therefore made with ‘malice,’ i.e., willfully and with a reckless disregard for whether the statements were true or false.

....

98. Defendants had a duty to perform-and represented to the plaintiff and the public at-large, expressly or by implication, that they would perform - all tasks necessary and appropriate to determine whether the thirteen artworks were authentic. See, e.g., “Examination Agreement,” for Day and Night, Exhibit “B” hereto, 2 and 5, under which defendants admit the importance of conducting a careful physical examination of the artworks (rather than relying on photographs), consulting other experts and obtaining scientific verifications, e.g. taking tests of paint samples. Defendants intentionally failed to perform such tasks in connection with all thirteen artworks [sic].”

These allegations are speculative, unsupported, and contradicted by other facts in the amended complaint. The only instance in which AMCR did not review an artwork in person was upon the second submission of Day and Night, and the Committee had reviewed that work in person when Levy originally submitted it a short time before plaintiff's submission occurred. Further, there is nothing in the Agreements which requires defendants to: provide “information and documents explaining and supporting [AMCR's] decision;” permit any person to “review and rebut any documents or information relied upon by defendants;” reveal the identities of the Committee members; or share the policies, practices, and procedures of AMCR (see compl. ¶¶ 69, 98). In fact, the Agreements grant AMCR sole discretion as to how it reviews submitted artworks (see e.g. ex. B).

Disregarding the refuted allegations, as well as plaintiff's logically-circular, conclusory allegations of malice, plaintiff's product disparagement claim must be dismissed. While “malice may be inferred in a variety of situations” ( Van-Go Transp. Co., Inc. v New York City Bd. of Educ., 971 F Supp 90, 106 [EDNY 1997] [discussing New York cases]), the court declines to infer malicious intent on this record. Accordingly, plaintiff's first cause of action is dismissed as against all defendants.

2. Second cause of action for tortious interference with contract

*8 Preliminarily, plaintiff has standing to raise this claim only insofar as it alleges that it sustained pecuniary loss as a result of AMCR's interference with the contracts of the Rescinded Collectors.

Defendants argue that the tortious interference with contract claim must be dismissed as insufficiently pleaded because plaintiff alleges only contracts with the collectors that had been fully performed years prior to the Notification Letters, and, even if contractual relations continued to exist, plaintiff fails to allege that defendants were aware of such contracts and intentionally interfered with them.

Plaintiff alleges that the artworks sold to all four collectors included warranties of authenticity (see e.g. compl. ¶¶ 27 [refunding Levy for Day and Night, “honoring its warranty of authenticity”], 45 [honoring “warranty of authenticity” by refunding

Shainwald for purchase of The Invisible]). Further, plaintiff alleges that its principal, Mayor, met with Bell “on several occasions” prior to the various submissions; thus, “defendants knew ... [plaintiff] would be adversely affected” by not including the works in the Catalogue, that “any adverse determination would have the purpose and effect of foreclosing any sale of the artworks by [plaintiff],” and that plaintiff would be “impelled to rescind the sales” to the collectors (compl. ¶¶ 92-93).

“[I]ntentional interference with contractual relations is comprised of four elements: (1) the existence of a contract, enforceable by the plaintiff, (2) the defendant's knowledge of the existence of that contract, (3) the intentional procurement by the defendant of the breach of the contract, and (4) resultant damages to the plaintiff” (Joan Hansen & Co., Inc., 296 AD2d at 111).

Plaintiff does not plead a contractual relationship that it could have enforced; nothing in the amended complaint establishes that any collector had a continuing obligation to plaintiff arising from the contracts for sale. Further, even if plaintiff's allegations of existing contractual relationships are sufficient, the claim must be dismissed because plaintiff does not meet its burden of establishing AMCR's intentional interference. Plaintiff's conclusory allegations that defendants rejected the artworks for the “purpose” of harming plaintiff's existing contracts are not adequate. Affording the non-conclusory facts, and those that are not inherently incredible, every favorable inference, the allegations that Mayor verbally criticized AMCR and Glimcher while talking to Bell, and that that Glimcher has a “conflict of interest” as a gallerist and art dealer, do not sufficiently plead AMCR's intentional procurement of a breach of the Rescinded Collectors' contracts.

3. Third cause of action for tortious interference with prospective business relations

Plaintiff has standing to bring this claim only insofar as it alleges that prospective business relationships were actually harmed. As plaintiff fails to allege any harm to its prospective business with anything other than conclusory assertions, it lacks standing to raise this claim (see Kronos, Inc., 81 NY2d at 94 Siegel; see also Siegel, NY Prac § 136 at 232-233).

In any event, to state a valid cause of action for tortious interference with prospective economic relations, a plaintiff must plead that the defendant used “wrongful means” to disrupt the prospective business relationship, or the defendant was motivated solely by malice ( Carvel Corp. v Noonan, 3 NY3d 182, 190 [2004]). “Wrongful means” include actions that amount to a crime or an independent tort, including physical violence, fraud or misrepresentation, or civil suits ( id. at 191). Plaintiff fails to adequately plead these required elements.

*9 Plaintiff's assertion of prospective economic relations is limited to its unsupported statement that it had “profitable business relationship[s]” with the four collectors until the Notification Letters were sent; plaintiff then identifies only the original sale prices of the artworks as the resulting damages (compl. ¶¶ 82-88). There is no assertion that any actual prospective business was curtailed or harmed, and the computation of damages for this claim illustrates its inherent incredibility. Plaintiff also fails to plead non-conclusory facts supporting either that AMCR intentionally acted to harm plaintiff's prospective business relationships, or that AMCR was motivated solely by malice (see Bank Leumi Trust Co. of New York v Samalot/Edge /Assoc., 202 AD2d 282, 283 [1st Dept 1994]). This claim is dismissed.

4. Fourth cause of action for negligent misrepresentation

Plaintiff's standing to raise this claim is limited to the Rescinded Collectors, as no injury has accrued with respect to the collectors to whom plaintiff did not issue a refund.

“The elements of a claim for negligent misrepresentation are: (1) the existence of a special or privity-like relationship imposing a duty on the defendant to impart correct information to the plaintiff; (2) that the information was incorrect; and (3) reasonable reliance on the information” (MatlinPatterson ATA Holdings LLC v Federal Express Corp., 87 AD3d 836, 840 [1st Dept 2011] [internal quotation marks and citations omitted]).

Even assuming a privity-like relationship between plaintiff and AMCR by virtue of AMCR's position as an arbiter of authenticity of Martin's works, this claim must be dismissed (see Parrott v Coopers & Lybrand, LLP, 95 NY2d 479, 483-484 [2000]). Here, the amended “complaint is devoid of any allegation as to defendants' conduct evincing their understanding of plaintiffs reliance” (Mandarin Trading Ltd. v Wildenstein, 17 Misc 3d 1118(A), 2007 NY Slip Op 52059[U], *6 [Sup Ct, NY County 2007], affd 65 AD3d 448 [1st Dept 2009], affd 16 NY3d 173 [2011]). Accordingly, this claim must be dismissed.

5. Fifth cause of action for gross negligence and breach of contract

Defendants argue that plaintiff's fifth claim must be dismissed as there is no duty on the part of AMCR to plaintiff as to the collectors' submissions, and there is no breach of Plaintiff's Agreement. Plaintiff responds that its fifth claim--styled a tort claim for gross negligence as to all 13 artworks, generally, and a breach of contract claim as to Plaintiffs Agreement and resubmission of Day and Night--is adequately plead. Plaintiff contends that defendants owed and breached a duty of care to the general public as to all the artworks, and breached an implied contractual duty, in Plaintiff's Agreement, to perform their duties competently and professionally.

a. Gross negligence tort claim as to all 13 artworks

To state a claim for gross negligence, plaintiff must establish the following three elements: “(1) the existence of a duty on defendant's part as to plaintiff; (2) a breach of this duty; and (3) injury to the plaintiff as a result thereof ( Akins v Glens Falls City School Dist., 53 NY2d 325, 333 [1981]). Here, plaintiff's claim fails as a matter of law because plaintiff has not established a duty owed to it by AMCR arising from the Collectors' Agreements. Plaintiff was not a party to, or a third-party beneficiary of, any of the Collectors' Agreements, and plaintiff cannot fabricate a duty owed to it, or the entire public, on the basis of solely AMCR's expertise or position in the realm of Martin's work (see Mandarin Trading Ltd. v Wildenstein, 16 NY3d 173, 181 [2011] [finding that “art expertise alone cannot create a special relationship where otherwise the relationship between the parties is too attenuated”]). Plaintiffs gross negligence tort prong of its fifth cause of action is, therefore, dismissed.

b. Gross negligence contract claim as to Plaintiff's Agreement

*10 Plaintiff's breach of contract prong of its fifth claim is premised upon conclusory allegations that defendants were “careless, grossly negligent and reckless in the performance of their obligations to the plaintiff and the public at-large [sic] in their vetting of the 13 artworks” under Plaintiffs and the Collectors' Agreements (see compl. ¶¶ 96-102).

Grossly negligent conduct, as a tort or contract claim, is “that [which] evinces a reckless disregard for the rights of others or ‘smacks' of intentional wrongdoing” (Morgan Stanley Mtge. Loan Trust 2006-13ARX v Morgan Stanley Mtge. Capital Holdings LLC, 143 AD3d 1, 8 [1st Dept 2016]). A contractual gross negligence claim is an exception recognized in cases involving extraordinary circumstances, such as residential mortgage crisis litigation (see id. at 8-9 [“(A)llegations of serious and pervasive misrepresentations regarding the level of risk in an investment with widespread, massive failures will support a claim for contractual gross negligence.”], citing Ambac Assur. UK Ltd. v J.P. Morgan Inv. Mgt., Inc., 88 AD3d 1, 3-13 [1st Dept 2011]). However, “merely alleging that breach of contract duty arose from lack of due care will not transform simple breach of contract into tort” (Saint Patrick's Home for the Aged & Infirm v Laticrete Intl., 267 AD2d 166, 166 [1st Dept 1999]).

Plaintiff does not have standing to raise this contractual claim as to any transaction other than that contemplated in Plaintiff's Agreement. In any event, plaintiff's conclusory allegations that the artworks were not properly examined are insufficient to establish a contractual claim for gross negligence. Those allegations are also refuted by Plaintiff's Agreement, in which plaintiff granted AMCR the “sole discretion” to examine the submitted work as it deems fit (ex. B). Disregarding the refuted, conclusory,

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 9 The Mayor Gallery Ltd. v. The Agnes Martin Catalogue..., 2018 WL 1638810... and inherently incredible allegations, plaintiff does not adequately plead that AMCR recklessly disregarded another's rights or engaged in intentional wrongdoing. Accordingly, the contractual gross negligence prong of plaintiff's fifth cause of action is dismissed.

6. Sixth cause of action for breach of implied duty of good faith and fair dealing

Plaintiff's sixth claim is duplicative of the breach of contract prong of its fifth cause of action as the sixth claim for breach of implied duty of good faith and fair dealing is “not separate and apart from” plaintiff's fifth cause of action for grossly negligent breach of contract; “[t]he claims are predicated upon precisely the same purported wrongful conduct,” and seek essentially the same relief (OP Sols., Inc, 72 AD3d at 622).

Even if the claim is not duplicative, it is insufficiently plead. As discussed above, Plaintiffs Agreement refutes plaintiffs assertions in support of this claim. Additionally, as noted in the discussion of plaintiff's product disparagement claim, neither AMCR or any defendant has an obligation to engage in the conduct of which plaintiff complains (see generally e.g. ex. B at 2-4). Under Plaintiff's Agreement, AMCR is not required to turn over any information other than its decision to accept or decline to include the submitted work by letter, and does not have to grant any person an opportunity to rebut its decision (see id). In fact, Plaintiff's Agreement, like the Collectors' Agreements, provides that AMCR shall have absolute discretion as to when and how it will evaluate submitted artworks (see ex. B). This claim is dismissed.

7. Seventh cause of action for violation of GBL § 349

*11 Plaintiff's seventh cause of action alleging a violation of GBL § 349 must also be dismissed. GBL § 349 (h) creates a cause of action for “any person who has been injured by reason of any violation” of § 349 (a), which prohibits “[d]eceptive acts or practices in the conduct of any business, trade or commerce or in the furnishing of any sen/ice in this state.” “To successfully assert a section 349 (h) claim, a plaintiff must allege that a defendant has engaged in (1) consumer- oriented conduct that is (2) materially misleading and that (3) plaintiff suffered injury as a result of the allegedly deceptive act or practice” ( City of New York v Smokes-Spirits.Com, Inc., 12 NY3d 616, 621 [2009]).

Plaintiff fails to adequately plead each of those elements. Plaintiff does not allege that it is a consumer, or that defendants are merchants, within the ambit of GBL § 349. Moreover, plaintiff's conclusory allegations that the Agreements are materially misleading are refuted by the Agreements; specifically, Plaintiff's Agreement informed plaintiff of its responsibilities and, albeit limited, rights under the contract (see ex. B at 2-4). Plaintiff also does not allege with non-conclusory facts that it suffered a harm as a result of consumer-oriented conduct under either its own Agreement or the Collectors' Agreements (see Kramer v Pollock-Krasner Found., 890 F Supp 250, 258 [SDNY 1995] [analyzing and dismissing a similar GBL § 349 claim involving an art authentication foundation]). Accordingly, this claim is dismissed with prejudice.

Part III: Attorneys' Fees

Plaintiff agreed, as clearly provided in Plaintiff's Agreement: “In the event [that plaintiff] make[s] a legal claim of any kind against AMCR and/or the AMCR Companies and Personnel, [plaintiff] will be fully responsible for payment of any and all reasonable legal fees, costs, and expenses ... of AMCR and the AMCR Companies and Personnel” (ex. B, ¶ 10). Contract provisions such as this are enforceable in New York (see generally Breed, Abbott & Morgan v Hulko, 139 AD2d 71 [1st Dept 1988], affd 74 NY2d 686 [1989]).

Defendants' request is granted. The issue of reasonable attorneys' fees shall be severed and referred to a Special Referee to hear and report (or, if the parties shall so stipulate, to hear and determine).

Accordingly, it is

ORDERED that the defendants' motion to dismiss is granted and the amended complaint is dismissed; and it is further

ORDERED that plaintiff is granted leave to serve a second amended complaint so as to replead the first through sixth causes of action within 20 days after service on plaintiff's attorney of a copy of this order with notice of entry; and it is further

ORDERED that, in the event that plaintiff fails to serve and file an amended complaint in conformity herewith within such time, leave to replead shall be deemed denied, and the Clerk, upon service of a copy of this order with notice of entry and an affirmation/affidavit by defendants' counsel attesting to such non-compliance, is directed to enter judgment dismissing the action in its entirety, with prejudice; and it is further

ORDERED that the portion of defendants' motion that seeks the recovery of attorney's fees, costs, and disbursements is severed, and the issues of the amount of reasonable attorneys' fees, costs, and disbursements the defendants may recover against the plaintiff, The Mayor Gallery Ltd., are referred to a Special Referee to hear and report (or, if the parties shall so stipulate, to hear and determine); and it is further

ORDERED that counsel for the defendants shall, within 30 days from the date of this order, serve a copy of this order with notice of entry, together with a completed Information Sheet, upon the Special Referee Clerk in the Motion Support Office (Room 119M), 6 who is directed to place this matter on the calendar of the Special Referee's Part for the earliest convenient date.

*12 DATED: 4/3/18

ENTER:

Footnotes 1 Plaintiff has learned the identities of the Committee members, denoted “John Doe or Jane Doe ##1-6;” however, the parties stipulated that “[t]he identities of the John Doe/Jane Doe defendants shall remain Attorneys' Eyes Only” until five business days after this motion to dismiss (Mot. Seq. No. 001) is decided, and/or five days after any appeal from this decision is concluded (NYSCEF Doc. No. 23 [stipulation, so ordered 12/20/2016, Oing, J.]; see also Doc. No. 22 [confidentiality stipulation, so ordered 12/20/2016, Oing, J.]). 2 As the court dismisses plaintiff's claims as against the four misnamed defendants, it need not reveal their identities in this decision. 3 The same reasoning applies to the tort prong of plaintiff's fifth cause of action, a hybrid claim alleging gross negligence and breach of contract, which is addressed in Part II, below. 4 The extent to which the claims-waiver provision in Plaintiff's Agreement is enforceable is not addressed in this decision as the court finds, as discussed in Part II, below, that plaintiff does not adequately allege the necessary elements of its claims relating to its own, as opposed to Levy's, submission of Day and Night. 5 As to the falsity element, plaintiff alleges that the artworks are authentic, but does not allege any facts supporting that conclusion. As to the element of publication to a third person, the law is not settled: the First Department has discussed, but not answered, a similar question of whether a catalogue raisonné's silent rejection of an artwork from inclusion in its catalogue can effectively constitute a

false statement published to a third person (see Thome, 70 AD3d 88). In dicta unrelated to its holding, the First Department noted: “as some commentators have suggested, as a practical matter, the denial of authentication is arguably indistinguishable from a direct

assertion of inauthenticity” ( id. at 106). In any event, the First Department ultimately affirmed the trial court's dismissal of the

product disparagement claim as time barred ( id. 106-107). Here, the court declines to needlessly answer those questions. 6 Copies are available in Rm. 119M at 60 Centre Street and on the Court's website at www.nycourts.gov/supctmanh under the “References” section of the “Courthouse Procedures” link).

2018 WL 4220612 (N.Y.Sup.), 2018 N.Y. Slip Op. 32161(U) (Trial Order) Supreme Court of New York. Commercial Division New York County

**1 THE MAYOR GALLERY LTD, Plaintiff, v. THE AGNES MARTIN CATALOGUE RAISONNE LLC, Arnold Glimcher, Tiffany Bell, Members of the Authentification Committee of the Agnes Martin Catalogue Raisonne John Doe, John Doe Jane Doe Jane Doe, Jane Doe, Defendants.

No. 655489/2016. August 30, 2018.

Decision and Order

Masley, J.

MOTION DATE 05/02/2018

MOTION SEQ NO 003

*1 The following e-filed documents, listed by NYSCEF document number (Motion 003) 72, 73, 74, 76, 77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91 were read on this motion to/for AMEND/MODIFY DECISION/ORDER/JUDGMENT

Plaintiff moves, pursuant to CPLR 2221, for leave to reargue the part of this court's April 3, 2018 decision and order (Prior Order) 1 which granted defendants' request for attorneys' fees, costs, and expenses, and which severed and referred to a special referee the issue of the reasonable value of those fees, costs, and expenses Plaintiff requests that, upon reargument, the court (1) modify the Prior Order “to limit defendants [sic] recovery of Legal Fees solely to those incurred in connection with defending against the contract claims advanced in the First Amended Complaint, thereby excluding from the recovery, [sic] all Legal Fees incurred by defendants in connection with the tort claims”, and (2) “[c]larify the [Prior] Order so as to bar **2 defendants from recovering Legal Fees incurred relating to defendants' activities to recover Legal Fees, i.e., barring an award of ‘fees-on-fees.’ ”

The court refers to, and incorporates, the Prior Order, in which the factual and procedural background for this action is set forth in detail.

In defendants' memorandum of law in support of their motion to dismiss the first amended complaint (FAC), they requested an award of legal fees pursuant to paragraphs 9 and 10 of the Examination Agreements entered variously by plaintiff and the four art collectors to whom plaintiff sold certain art works. In it memorandum of law in opposition to the motion to dismiss, plaintiff responded that the “request for an immediate award of attorneys' fees, based on ¶ 10 of the Examination Agreement” should be denied because “the only Examination Agreement signed by and therefore binding on plaintiff relates to Day & Night. Therefore, all claims for attorneys' fees arising from work performed by attorneys on all the tort causes of action . . . are not available against plaintiff.” Plaintiff further responded that “there are issues of fact relating to whether the attorneys' fee provision is unconscionable and contrary to public policy and therefore unenforceable, resolution of which cannot be determined on defendants' motion to dismiss.” 2

In Part III of the Prior Order, the court made the following determination as to the request for attorneys' fees:

**3 “Plaintiff agreed, as clearly provided in Plaintiff's [Examination] Agreement: ‘In the event [that plaintiff] make[s] a legal claim of any kind against AMCR and/or the AMCR Companies and Personnel, [plaintiff] will be fully responsible for payment of any and all reasonable legal fees, costs, and expenses . . . of AMCR and the AMCR Companies and Personnel’ (ex. B, ¶ 10). Contract provisions such as this are enforceable in New York (see generally Breed, Abbott & Morgan v Hulko, 139 AD2d 71 [1st Dept 1988], affd 74 NY2d 686 [1989])” (NYSCEF Doc. No. 66 at 24 [first alteration added]).

*2 On that basis, the court granted defendants' request, and severed and referred “[t]he issue of reasonable attorneys' fees” (id.).

Discussion

As an initial matter, although defendants' do not raise this issue in their opposition, plaintiff's motion for leave to reargue is procedurally defective in that plaintiff failed to attach a copy of the Prior Order or the papers submitted in connection with the underlying motion (defendants' motion to dismiss, motion sequence number 001) (CPLR 2214 [c]; Biscone v JetBlue Airways Corp., 103 AD3d 158, 179-180 [2d Dept 2012] [holding that denial of motions to renew and reargue is appropriate in e- filing actions where movant fails to submit the underlying motion papers], lv dismissed 20 NY3d 1084 [2013]). Indeed, plaintiff does not submit even a party affidavit or attorney affirmation with this motion to reargue. 3 Accordingly, the court exercises its discretion to deny plaintiff's motion to reargue on the basis that its supporting papers are insufficient, **4 particularly because the underlying motion papers in this action were heavily redacted as electronically filed, and the court no longer retains the unredacted chamber's copies (CPLR 2214 [c]).

Furthermore, there is no basis upon which leave to reargue should be granted. A motion for leave to reargue “shall be based upon matters of fact or law allegedly overlooked or misapprehended by the court in determining the prior motion, but shall not include any matters of fact not offered on the prior motion” (CPLR 2221 [d] [2]). The asserted misapprehensions of fact or law claimed by plaintiff on this motion are that the court misconstrued paragraph 10 of the Examination Agreement as entitling defendants to “open-ended recovery of attorneys' fees”; however, the court did not overlook plaintiff's arguments in the underlying motion. Moreover, plaintiff's assertion that the court overlooked plaintiff's arguments in the underlying motion because the court was “misled by defendants [sic] failure to include the opening two sentences of ¶ 10 in their [memorandum of law in support of the underlying motion]” is baseless; the court considered every sentence of every provision in the Examination Agreements, and the court's reference to and quote from paragraph 10 in connection to the attorneys' fees ruling specifically cites exhibit B to plaintiff's FAC, not to any memorandum of defendants.

Contrary to plaintiff's assertions in this motion, the court, after consideration of each argument advanced by the parties, granted defendants' request for attorneys' fees under paragraph 10 of plaintiff's Examination Agreement. There were no matters of fact or law overlooked or misapprehended; the court severed, and referred to a Special Referee to hear and report, the issues of the reasonable value of attorneys' fees, costs, **5 and expenses to which defendants are entitled under paragraph 10 of the plaintiff's Examination Agreement.

*3 Plaintiff's further contention that, upon reargument, the court “should clarify [the Prior] Order to direct the Special Referee to exclude from any fee award time expended by defendants' seeking fees, i.e., ‘fees-on-fees,’ ” is not appropriate for a motion

to reargue as the issue of fees-on-fees is raised for the first time in this motion (see Foley v Roche, 68 AD2d 558, 567-568 [1st Dept 1979]).

Finally, to the extent that the issues raised in this motion were severed and referred to a Special Referee, those matters should be addressed, under CPLR 3104 (c), in the proceedings before the Special Referee.

Accordingly, it is

ORDERED that the motion of plaintiff The Mayor Gallery Ltd. is denied.

8/30/2018

DATE

ANDREA MASLEY, J.S.C.

Footnotes 1 The April 3, 2018 decision and order granted defendants' motion to dismiss plaintiff's first amended complaint, motion sequence number 001 (see NYSCEF Doc No 66) 2 In further support of this prong of its opposition to an award of attorneys' fees, plaintiff referred to pages 10-12 of the same memorandum, in which it argued, in pertinent part, that paragraph 10 of the Examination Agreement is substantively unconscionable inasmuch as that provision “requires payment of defendants' fees - whether or not defendant [sic] prevails on the claim” (emphasis in original). 3 Apart from its attorney's memoranda of law, the sole document submitted by plaintiff in support of this motion is an exhibit denoted “Copy of Contract” in the electronic filing system (see NYSCEF Doc. No. 73).

claim for relief. Fed.Rules Civ.Proc.Rules 12(b) (6), 9(b), 28 U.S.C.A. KeyCite Yellow Flag - Negative Treatment Declined to Extend by Bilinski v. Keith Haring Foundation, Inc., S.D.N.Y., March 6, 2015 2009 WL 1457177 Only the Westlaw citation is currently available. United States District Court, S.D. New York. OPINION AND ORDER

Joe SIMON–WHELAN, Individually And On LAURA TAYLOR SWAIN, District Judge. Behalf Of All Others Similarly Situated, Plaintiffs, *1 Plaintiff Joe Simon–Whelan (“Simon–Whelan” or v. “Plaintiff”) brings this action against the Andy Warhol The ANDY WARHOL FOUNDATION FOR THE Foundation for the Visual Arts, Inc. (the “Foundation”), VISUAL ARTS, INC., the Estate of Andy Warhol, the Estate of Andy Warhol (the “Estate”), Vincent Fremont Vincent Fremont, Individually and as Successor (“Fremont”), individually and in his capacity as Successor Executor for the Estate of Andy Warhol, Vincent Executor of the Estate, Vincent Fremont Enterprises (“VFE”), Fremont Enterprises, the Andy Warhol Art the Andy Warhol Authentication Board, Inc. (the “Board”), Authentication Board, Inc., John Does 1–20, Jane John Does 1–20, Jane Does 1–10 and Richard Roes 1–10 Does 1–10, and Richard Roes 1–10, Defendants. (collectively, “Defendants”). Plaintiff claims, on behalf of himself and a putative class of art buyers who have allegedly No. 07 Civ. 6423(LTS). purchased Warhol works at artificially inflated prices, that the | defendants have violated the federal Sherman Anti–Trust Act May 26, 2009. and New York's Donnelly Act by engaging in a conspiracy to restrain and monopolize trade in the market for Warhol works. Plaintiff asserts a further individual and class claim for unjust West KeySummary enrichment (relating to the allegedly artificially high prices of Warhol works), individual claims for false advertising and 1 Contracts publicity in violation of the federal Lanham Act (relating to Exemption from Liability the denial of the authenticity of a work owned by Plaintiff), fraud (based on allegations that certain defendants induced Executors and Administrators Contracts Plaintiff to submit his work to the Board and to sign a general release and convenant not to sue in connection An art dealer sufficiently alleged facts in with such submissions (the “Submission Agreement”)), and support of his claim that submission agreements an individual and class claim for a declaratory judgment required to re-sell certain pieces of artwork were invalidating the Submission Agreement. utilized in an effort to conceal and protect an artist's estate from recriminations arising from Defendants move to dismiss all of Plaintiff's claims. The illegal action. The dealer alleged the estate Court has reviewed thoroughly all of the parties' submissions oversaw the sale and authentication of all of and arguments in connection with the claims. For the reasons Andy Warhol's paintings, and in order for him stated below, Defendants' motion to dismiss is granted in part receive fair market value for his pieces, he and denied in part. was required to submit them to the estate for authentication with a signed submission agreement. Although the agreement contained a provision releasing the estate from all legal BACKGROUND liability, the dealer's allegations of fraud and The Amended Class Action Complaint (the “Complaint”) wrongdoing in connection with the solicitation includes the following relevant allegations. of the submission agreements was sufficient to invalidate the exculpatory provision and state a

The Estate is located in New York and was determined to owners of Warhols to “lure” them into submitting their have a fair market value just below four hundred million works for authentication (id. at ¶¶ 119, 185), and changes dollars. (Compl. at ¶¶ 19, 43.) The Estate originally owned its authentication policies when the change suits the Board's close to 100,000 works of art by Andy Warhol. (Id. at ¶ financial interests (id. at ¶ 89). Plaintiff alleges that 38.) Originally, the Estate's executor was Frederick Hughes Defendants use their control over the authentication methods (“Hughes”) and Fremont was named as alternate executor. to create a scarcity in the market for Warhol artwork and (Id. at ¶¶ 28, 36.) The Foundation is a not-for-profit charitable inflate the value of the Warhol works in the Foundation's trust incorporated in the State of New York. (Id. at ¶ 18.) Prior possession. (Id. at ¶¶ 17, 214.) to the creation of the Foundation, Freemont oversaw the sale of Warhol's paintings. (Id. at ¶ 3.) Currently, Fremont is the At some time between 1988 and July 1990, the exclusive sales agent for the Foundation's Warhol paintings. Estate implemented a policy requiring persons seeking (Id. at ¶ 51.) VFE is a New York corporation, with its principal authentication of works to sign a “Submission place of business being in New York. (Id. at ¶ 21.) The Board Agreement.” (Id. at ¶ 91.) The Board has continued the is a not-for profit New York corporation, with its principal Estate's policy of requiring persons submitting works for place of business in New York. (Id. at ¶ 22.) The Board is authentication to sign the Submission Agreement. (Id. at responsible for authenticating the works of Andy Warhol. ¶ 97.) The Submission Agreement includes the following (See id. at ¶ 68.) John Does 1–20 are past and present officers clause: of the Foundation. (Id. at ¶ 23.) Jane Does 1–10 are past and present members of the Board. (Id. at ¶ 24.) Richard Roes 1– By signing this letter Owner 10 are past and present agents of the Foundation and/or Board. (Id. at ¶ 25.) ... (iii) hereby indemnifies the Authentication Board, the The Conspiracy Foundation, the Estate of Andy Warhol (the “Estate”), *2 Plaintiff alleges that the Defendants have, for a period and all members of and officers, directors, agents, of twenty years, conspired to control the market for Andy representatives, employees and others at any time acting Warhol artwork. (Compl. at ¶ 1.) The Foundation and the for the Authentication Board, the Foundation or the Estate Board are allegedly the central actors in the conspiracy. (Id. at (collectively, the “Indemnitees”), and agrees to defend and ¶ 9.) According to Plaintiff, Defendants have complete control hold each Indemnitee harmless and releases, waives and over the authentication of Warhol artwork by virtue of the covenants not to sue any Indemnitee, based upon any claim Board's status as sole recognized authentication authority for or liability asserted (a) by Owner or by any person or Warhol works and the Foundation's publication of an official entity acquiring the Work, or any interest in the Work catalogue of Warhol works. (Id. at ¶ 17.) Defendants employ from Owner (a “Buyer”) or any person or entity from two methods for authenticating Warhol artwork. (Id. at ¶ 65.) whom Owner or any predecessor in interest acquired the The first is a system of Board ratings of individual works as Work which is based directly or indirectly on the legend or by Warhol, not by Warhol, or works as to which the Board endorsement, if any, affixed to the Work, or on any letter expresses no opinion at the time. (Id. at ¶ 64–65.) The second herein referred to, or any other action by the Authentication is informal authentication by virtue of inclusion in the Warhol Board or any other Indemnitee in connection herewith, Catalogue Raisonné (the “Catalogue”). (Id.) The Catalogue, including without limitation any claim that the opinion published by the Foundation, is an allegedly comprehensive expressed therein is not correct, or (b) by any other person to whom Owner or the Buyer has made any statement or listing of all authentic Warhol artwork in existence. 1 (Id.) representation respecting the authenticity the Work or any action of the Authentication Board or any other Indemnitee According to Plaintiff, the Board has denied the authenticity in connection therewith, and hereby agrees to pay or of works that were previously owned by the Estate and reimburse each Indemnitee for all costs and expenses stamped with serial numbers from the Estate (id. at ¶ 86), incurred by the Indemnitee in connection with any such routinely denies the authenticity of a certain percentage of asserted claim or liability, including without limitation the Warhols, particularly when several from the same series fees and expenses of legal counsel. (Compl. at ¶ 99, Ex. B are submitted (id. at ¶ 87), has denied authentication as at 3.) a means of retaliation (id. at ¶¶ 83–85), has approached

Defendants have represented that the painting is a fake, thus Double Denied depressing its market value. (Id. at ¶ 237.) *3 Plaintiff originally purchased a painting (referred to herein and in the Complaint as Double Denied ) for $195,000 Plaintiff brings this action requesting a declaratory judgment in 1989. (Id. at ¶ 19.) According to Plaintiff, the painting is that the Submission Agreement is unenforceable, as well one of several created in August 1965 at Warhol's direction as injunctive, declaratory and monetary relief in respect of from an acetate personally created and chosen by Warhol. his claims under Section One and Two of the Sherman (Id.) Plaintiff alleges that the painting had previously been Act, the New York Donnelly Act, the Lanham Act, and for authenticated by the Foundation and the Estate, including by fraud and unjust enrichment. Defendants seek dismissal of Hughes and Fremont, and had passed through several major Plaintiff's claims pursuant to Rule 12(b)(6) of the Federal dealers, each of whom had carefully vetted the painting's Rules of Civil Procedure, arguing that the claims are barred provenance. (Id.) by the release and covenant not to sue provisions of the Submission Agreements, that the allegations of the Complaint Plaintiff offered to sell his painting in or about July 2001. (Id. are insufficient to plead plausibly Plaintiff's antitrust claims at ¶ 148.) Plaintiff alleges that, from July through December because, inter alia, the claims are time barred and Plaintiff 2001, Fremont repeatedly urged Plaintiff, by telephone, email lacks standing to assert them, that the Complaint's Lanham and in a face-to-face meeting in Los Angeles, to submit his Act and fraud allegations are likewise insufficient to meet the painting to the Board. (Id. at ¶ 149.) An interested buyer was applicable pleading standards, and that the Complaint fails also informed by the Board that it would not stand by the prior to state a claim for relief for unjust enrichment as against authentications; the painting would have to be submitted to Fremont as “successor executor.” the Board. (Id. at ¶ 151.) Plaintiff submitted Double Denied for authentication on December 20, 2001, and signed a copy of the Submission Agreement dated December 21, 2001, in connection with the submission. (Compl. at ¶ 153, Ex. B.) DISCUSSION The Board stamped the painting “Denied.” (Id. at ¶¶ 20, Rule 12(b) (6) and 9(b) Standards 155.) After the Board's initial determination, Plaintiff was *4 In deciding a motion to dismiss a complaint for failure informed that he was welcome to resubmit the painting with to state a claim pursuant to Rule 12(b)(6) of the Federal additional documentation. (Id. at ¶ 158.) Fremont urged him Rules of Civil Procedure, the Court must “accept as true to resubmit the painting with additional documentation. (Id. all factual statements alleged in the complaint and draw at ¶ 159.) Plaintiff spent more than a year documenting the reasonable inferences in favor of the non-moving party.” painting's origin and history and resubmitted the painting with additional documentation in February 2003. (Id. at ¶¶ 161– McCarthy v. Dunn & Bradstreet Corp., 483 F.3d 184, 62.) 191 (2d Cir.2007) (internal citations omitted). The issue is whether the plaintiff is entitled to offer evidence to Plaintiff alleges that, on or about February 12, 2003, he was support his claims. Hudson Valley Black Press v. Internal informed by Paul Morissey that Fremont had told Morissey Revenue Service, 307 F.Supp.2d 543, 545 (S.D.N.Y.2004). that the painting had been denied again. (Id. at ¶ 163.) By Nevertheless, “[t]o survive a motion to dismiss, a complaint letter dated July 14, 2003, the Board notified plaintiff that must contain sufficient factual matter, accepted as true, to it had rejected Double Denied a second time. (Id. at ¶ 165.) ‘state a claim to relief that is plausible on its face.’ “ The Board subsequently issued a letter, dated May 18, 2004, Ashcroft v. Iqbal, –––U.S. – – – – , ––– S.Ct. ––––, ––– purporting to explain the basis of the Board's denial. (Id. at L.Ed.2d – – – – , 2009 WL 1361536, at *12 (May 18, 2009) ¶¶ 168–72; Compl. Ex. E.) Plaintiff alleges that the Board fraudulently denied the authenticity of Double Denied and quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, that the denials were a foregone conclusion. (Id. at ¶¶ 247, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). “Where a complaint 249 .) Plaintiff alleges that, as a result of this second rejection, pleads facts that are merely consistent with a defendant's Plaintiff was unable to sell any of the Warhols that he owned liability, it stops short of the line between possibility and without first submitting them to the Board and that he was plausibility of entitlement to relief.” Iqbal, –––U.S. ––––, ultimately forced to sell his Warhols through third-parties at at ––––, 129 S.Ct. 1937, ––– L.Ed.2d ––––, at ––––, 2009 WL a fraction of the price. (Id. at ¶ 166.) Further, Plaintiff alleges that, by excluding Double Denied from the Catalogue, the

1361536, at *12 (internal quotations and citations omitted). clause is unenforceable when, in contravention of acceptable This Twombly standard applies to all civil actions. Id. at *16. notions of morality, the misconduct for which it would grant immunity smacks of intentional wrongdoing. This can be Rule 9(b) of the Federal Rules of Civil Procedure requires explicit, as when it is fraudulent, malicious or prompted by the that “[i]n alleging fraud or mistake, a party must state with sinister intention of one acting in bad faith.” (internal citations particularity the circumstances constituting fraud or mistake.” omitted)). Plaintiff has sufficiently alleged that he was FED. R. CIV. P. 9(b). Particularity requires the plaintiff to fraudulently induced into signing the submission agreements. “(1) specify the statements that the plaintiff contends were See Nurnberg v. Hobo Corp., 30 A.D.3d 359, 360, 819 fraudulent, (2) identify the speaker, (3) state where and when N.Y.S.2d 226 (1st Dep't 2006) (“A party asserting fraudulent the statements were made, and (4) explain why the statements inducement is required to identify a material representation, known to be false and made with the intention of inducing were fraudulent.” Stevelman v. Alias Research, Inc., 174 reliance, and actual reliance resulting in damages.”); see F.3d 79, 84 (2d Cir.1999) (internal citations omitted). The issue is whether the allegations provide fair and reasonable also Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Wise notice of the time, place, speaker, and content of the Metals Group, LLC, 19 A.D.3d 273, 275, 798 N.Y.S.2d 14 (1st Dep't 2005) (“A contract induced by fraud, however, alleged misrepresentation or omission. Shields v. Citytrust is subject to rescission, rendering it unenforceable by the Bancorp, Inc., 25 F.3d 1124, 1128–29 (2d Cir.1994). culpable party.”). The Complaint includes allegations that the Submission Agreements were utilized in an effort to conceal, Validity of the Submission Agreements and to protect Defendants from recriminations arising from, Defendants argue that Plaintiff has failed to state a claim intentional, illegal action. Taking all inferences in Plaintiff's for invalidation of the Submission Agreements he signed in favor, he has sufficiently alleged facts in support of his claim connection with the Board's reviews of Double Denied, and for declaratory relief at this stage of the proceedings and that his entire Complaint should be dismissed, because the Defendants' motion must be denied insofar as it seeks the Submission Agreements include, inter alia, a provision in dismissal of Plaintiff's declaratory judgment claim concerning which Plaintiff “releases, waives and covenants not to sue the Submission Agreements. any Indemnitee ... based upon any claim or liability asserted (a) by [Plaintiff] or by any person or entity acquiring the Sherman Antitrust Act and New York Donnelly Act Claims Work, or any interest in the Work from [Plaintiff] ... which *5 Plaintiff asserts claims under Section One of the is based directly or indirectly on the legend or endorsement, Sherman Act, which prohibits combinations in restraint of if any, affixed to the Work, or on any letter herein referred 2 to, or any other action by the Authentication Board or any trade, and under Section Two of that Act, which prohibits other Indemnitee in connection herewith, including without monopolization. 3 Plaintiff also asserts a claim under New limitation any claim that the opinion is not correct.” (Compl., York State's antitrust statute—the Donnelly Act—which Ex. B, at 3.) prohibits contracts or agreements in restraint of trade and monopolization. See N.Y. Gen. Bus. Law §§ 340 et The Complaint's allegations of fraud and wrongdoing seq. Defendants argue that Plaintiff has failed plausibly to in connection with the solicitation of the Submission plead a conspiracy and that the Complaint must therefore Agreements are sufficient to state plausibly his claim for be dismissed under Twombly, and further argue that Plaintiff declaratory relief invalidating the exculpatory provisions of lacks standing, and that his antitrust claims are time-barred. the agreements. A party may not invoke such an agreement to insulate itself from intentional wrongdoing, such as that The New York Court of Appeals has held that the New alleged in this action. See Kalisch–Jarcho, Inc. v. City York Donnelly Act should generally be construed in light of of New York 58 N.Y.2d 377, 384–85, 461 N.Y.S.2d 746, Sherman Act precedents. X.L.O. Concrete Corp. v. Rivergate 448 N.E.2d 413 (N.Y.1983) (“[A]n exculpatory agreement, Corp., 83 N.Y.2d 513, 518, 611 N.Y.S.2d 786, 634 N.E.2d 158 no matter how flat and unqualified its terms, will not (1994) (“This Court has held that the Donnelly Act, having exonerate a party from liability under all circumstances. been modelled on the Federal Sherman Act of 1890, should Under announced public policy, it will not apply to exemption generally be construed in light of Federal precedent and given of willful or grossly negligent acts ... [and] an exculpatory a different interpretation only where State policy, differences

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Simon-Whelan v. Andy Warhol Foundation for the Visual..., Not Reported in... 2009-1 Trade Cases P 76,657 in the statutory language or the legislative history justify *6 Plaintiff has also sufficiently identified a relevant such a result.” (internal quotations omitted)). Accordingly, geographic and product market in which trade was allegedly the Court analyzes Plaintiff's Sherman Act and New York unreasonably restrained or monopolized, as required to state Donnelly Act claims together. a claim under Sections One and Two of the Sherman Act. See Kramer v. Pollock–Krasner Foundation, 890 F.Supp. 250, Plausibility of Plaintiff's Antitrust Allegations 254 (S.D.N.Y.1995). “In determining the relevant market, the Defendants argue that Plaintiff has failed to plead plausibly general rule is that commodities reasonably interchangeable his antitrust allegations. Having considered carefully all by consumers for the same purposes make up that part of of Defendants' arguments, the Court disagrees. Plaintiff the trade or commerce monopolization of which may be has alleged a conspiracy involving the only two entities illegal.” Vitale v. Marlborough Gallery, No. 93 Civ. 6276, authenticating Warhol works, the Foundation (through 1994 WL 654494, at *3 (S.D.N.Y. July 5, 1994) (internal the Catalogue Raisonné) and the Board (through direct quotations omitted). A narrowly defined submarket can be a authentication), to restrict artificially competition in the relevant geographic product market. Kramer, 890 F.Supp. market for authentic Warhols. This unreasonable restraint in at 254. Plaintiff's allegations of a distinct submarket in the violation of Section One of the Sherman Act, it is alleged, offering and sale, at auction or otherwise, of Andy Warhol raises the prices of the Foundation's Warhol works and works within the modern and contemporary art market are ensures that galleries and museums choose Foundation works (so as to limit the risk that their authenticity will later sufficient in this regard. See Vitale, 1994 WL 654494, at *4 be denied by the Board). Plaintiff has also alleged facts (“Examining plaintiff's assertion of a submarket in light of the indicative of anticompetitive conduct with a specific intent above criteria, the Court finds, for the purposes of this motion to monopolize and a dangerous probability of achieving to dismiss, that Jackson Pollock paintings may constitute a monopoly power in violation of Section Two of the Sherman submarket, the monopolization of which may be unlawful Act. under 15 U.S.C. § 1 or § 2.”).

Plaintiff asserts that the Board is completely dominated and controlled by the Foundation (Compl. at ¶ 66), and Plaintiff's Antitrust Injury that the Foundation uses the Board to remove competing Defendants argue that Plaintiff does not have standing to Warhols from the market in an attempt to monopolize assert his antitrust claims because he has not suffered an the market (Compl. at ¶¶ 13–16). Plaintiff has alleged antitrust injury in connection with either his purchase of sufficient facts in support of the illegal restraint on trade and Double Denied or the Board's denial of the work. “An monopolization claims to satisfy the plausibility standard. antitrust injury is an ‘injury of the type the antitrust laws were For example, Plaintiff alleges that the Board has made intended to prevent and that flows from that which makes unsolicited suggestions that owners of purported Warhol defendants' acts unlawful.’ “ Paycom Billing Services, Inc. works submit their works for authentication; that the Board's v. Mastercard Intern., Inc., 467 F.3d 283, 290 (2d Cir.2006), authentication policies, to the extent that they exist, are applied inconsistently and allow the Board to reverse prior quoting Brunswick Corp. v. Pueblo Bowl–O–Mat, Inc., determinations when doing so would further the conspiracy; 429 U.S. 477, 489, 97 S.Ct. 690, 50 L.Ed.2d 701 (1977). that the Board has refused to authenticate works that the Foundation previously attempted, unsuccessfully, to Plaintiff's allegation that the double-stamping of “Denied” on purchase; that the Board has denied the authenticity of works his artwork in furtherance of the alleged antitrust conspiracy that others associated with the Estate and the Foundation have has prevented him from competing as a seller in the lucrative previously authenticated; and that, unlike other authentication market for authentic Warhols is sufficient to frame an antitrust boards, which are composed of well-qualified and well- injury. See, e.g., Daniel v. American Bd. of Emergency known independent experts, the Board is populated by Medicine, 428 F.3d 408, 439 (2d Cir.2005) (although individuals who lack expertise in the authentication of Warhol plaintiffs lacked standing in that case, the Second Circuit works and who are not independent of the Foundation. recognized that it is possible that a would-be competitor could (Compl. at ¶¶ 8, 74–5, 82–85, 126, 130, 155.) demonstrate standing to challenge an exclusionary scheme that precludes him from entering the market).

the appropriateness of equitable tolling, Boos v. Runyon, Plaintiff has not, however, alleged that he has suffered any 201 F.3d 178, 185 (2d Cir.2000), and “must plead each of injury arising from the alleged price-inflationary aspects of these elements with particularity as required by Rule 9(b) of the conspiracy. Plaintiff did not purchase Double Denied from the Foundation, and nowhere in the Complaint does Plaintiff the Federal Rules of Civil Procedure,” National Group for allege that Double Denied was ever sold by the Foundation or Communications and Computers Ltd. v. Lucent Techs. Inc., recognized by the Board as authentic. Plaintiff has thus failed 420 F.Supp.2d 253, 265 (S.D.N.Y.2006). “[I]n order to toll to plead facts sufficient to demonstrate that he has standing to the statute of limitations under the fraudulent concealment complain of any price-inflation aspect of the alleged antitrust doctrine, Plaintiffs must also allege that they were ignorant conspiracy and the Complaint will be dismissed to the extent of the antitrust violation and that their ignorance was not the Plaintiff's claims are premised on allegations that Defendants' result of a lack of due diligence.” In re Issuer Plaintiff actions have artificially inflated prices for Warhol works. Initial Public Offering Antitrust Litigation, No. 00 Civ. 7804, Those claims will be dismissed for the further reason that, as 2004 WL 487222, *4 (S.D.N.Y. March 12, 2004); see also explained below, any claim that Plaintiff might possess for damages in connection with his purchase of Double Denied Klehr v. A.O. Smith Corp., 521 U.S. 179, 194, 117 S.Ct. is time barred. 1984, 138 L.Ed.2d 373 (1997) (“a plaintiff who is not reasonably diligent may not assert ‘fraudulent concealment.’ ”). Plaintiff's Complaint does not proffer facts sufficient to Statute of Limitations demonstrate that his discovery of a price-related claim was *7 The statute of limitations for federal antitrust claims is prevented by Defendants' concealment of wrongful actions four years. See 15 U.S.C. § 15b. The statute of limitation for during the limitation period, nor does it demonstrate the exercise of due diligence during the period for which Plaintiff New York Donnelly Act claims is also four years. N.Y. seeks to have the limitations bar tolled. Accordingly, this Gen. Bus. Law §§ 340(5); Matter of Crowley Foods, Inc. v. aspect of Plaintiff's antitrust claim will be dismissed. Lefkowitz, 75 A.D.2d 940, 942, 428 N.Y.S.2d 81 (3d Dep't 1980). Defendants argue that Plaintiff's antitrust claim must However, the Court finds that Plaintiff's antitrust be dismissed in its entirety as time barred because, to the monopolization and market restraint allegations, insofar as extent it is premised on his 1989 purchase of Double Denied, they are based on the allegedly exclusionary impact of the it was brought some 14 years too late and, to the extent it Board's second denial of Double Denied, are not time-barred. is premised on exclusion of Double Denied from the market Although the Board's original denial of Plaintiff's painting for authentic Warhol works, it accrued in 2002 when the occurred more than five years before Plaintiff brought this painting's authenticity was first denied. action, Plaintiff has alleged facts sufficient, at this stage, to invoke the continuing conspiracy exception based on As explained above, Plaintiff's allegations are insufficient to the Board's second denial. To come within the continuing demonstrate that he has any claim against Defendants relating conspiracy exception, “a plaintiff must allege that she has to the purchase price of his painting. Nor has he alleged been injured by continued, separate antitrust violations within facts that would warrant a finding of fraudulent concealment that would defeat the limitations bar even if he were able to the limitations period.” Vitale v. Marlborough Gallery, articulate an antitrust claim premised on the price he paid for No. 93 Civ. 6276, 1994 WL 654494, at *5 (S.D.N.Y. Double Denied. In order to toll the statute of limitations on the July 5, 1994) (internal quotations omitted). The continuing basis of fraudulent concealment, Plaintiff must show that “(1) conspiracy exception will start the statute of limitations anew the defendant wrongfully concealed material facts relating if the plaintiff alleges “an overt act which (1) is a new to defendant's wrongdoing; (2) the concealment prevented and independent act that is not merely a reaffirmation of a plaintiff's discovery of the nature of the claim within the previous act; and (2) inflicts new and accumulating injury on limitations period; and (3) plaintiff exercised due diligence the plaintiff.” Id. (internal quotations omitted). Construing the in pursuing the discovery of the claim during the period allegations in the light most favorable to Plaintiff, the Court finds that Plaintiff has alleged sufficiently that the second plaintiff seeks to have tolled.” Corcoran v. N.Y. Power denial was not a mere reaffirmation of the first. Plaintiff Auth., 202 F.3d 530, 543 (2d Cir.1999) (internal quotation alleges that Defendants not only permitted, but encouraged, marks omitted). The plaintiff has the burden of demonstrating him to resubmit the painting with additional documentation

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 6 Simon-Whelan v. Andy Warhol Foundation for the Visual..., Not Reported in... 2009-1 Trade Cases P 76,657 and that he suffered additional, distinct injury as a result of resolution of such issues based on factual findings after a the second denial. bench trial, is not to the contrary.

*8 Therefore, Plaintiff's individual Sherman Antitrust and Additionally, to the extent that Defendants argue that Plaintiff New York Donnelly Act claims are dismissed with prejudice has no claim based on Defendants' May 18, 2004, letter to the extent that they are based on his purchase of Double because he has conceded that descriptive statements in Denied because they are time barred, but Defendants' motion that letter were “literally true,” Plaintiff has sufficiently is denied to the extent that Plaintiff's federal and Donnelly Act alleged that the statements were nonetheless fraudulent and monopolization and market restraint claims are based on the misleading. See Groden v. Random House, Inc., 61 F.3d Board's rejection of Double Denied as an authentic Warhol. 1045 (2d Cir.1995) ( “In order to be actionable under the Lanham Act, a challenged advertisement must be literally Lanham Act Claim false or, though literally true, likely to mislead or confuse Plaintiff asserts a violation of section 43(a) of the Lanham consumers.” (emphasis added)). Act, which prohibits the use of false designation of origin, false or misleading description of fact or false or misleading *9 Plaintiff has not, however, proffered allegations representation of fact that is likely to cause confusion sufficient to frame a violation of the “commercial advertising or promotion” prong of the Lanham Act. “In this circuit, in commerce or in commercial advertising. 4 In addition to constitute ‘commercial advertising or promotion’ under to arguing that Plaintiff is barred from bringing these the Lanham Act, a statement must be: (1) commercial claims insofar as they are based on Defendants' stamping speech, (2) made for the purpose of influencing consumers of Plaintiff's painting “Denied” because the Submission to buy defendant's goods or services, and (3) although Agreements included an acknowledgment that such a stamp representations less formal than those made as part of a classic could be affixed, Defendants argue that Plaintiff cannot assert advertising campaign may suffice, they must be disseminated a Lanham Act claim because the Act does not impose liability sufficiently to the relevant purchasing public.” Gmurzynska v. for statements of opinion, and that Plaintiff has not alleged a Hutton, 355 F.3d 206, 210 (2d Cir.2004) (internal quotations false statement in connection with commercial advertising as omitted). Although Plaintiff alleges that the Catalogue, which required by the “commercial advertising or promotion” prong is published by the Foundation, is the only recognized of the Section 1125(a)(1). means of authentication other than direct authentication by the Board, the Complaint does not proffer allegations as As explained above, Plaintiff has alleged facts sufficient to to Defendants' use of the Catalogue in connection with the state a claim for a declaration that the Submission Agreements commercial offer of their goods and services. are not enforceable. Thus, dismissal of Plaintiff's Lanham Act claims on the basis of the acknowledgment in those Thus, the Court finds that Plaintiff has sufficiently alleged agreements is not appropriate at this stage. violations of Section 43(a) of the Lanham Act in connection with Defendants' letters, but has failed to allege sufficient Plaintiff has also alleged sufficient facts to state a claim facts to plead a Lanham Act claim in connection with the under the Lanham Act in connection with Defendants' letters. exclusion of Double Denied from the Catalogue. Although it is well established that a “statement of opinion is not actionable under the Lanham Act if it could not reasonably be seen as stating or implying provable facts about Fraud a competitor's goods or services,” Boule v. Hutton, 328 Defendants contend that Plaintiff has failed to plead his fraud F.3d 84, 93 (2d Cir.2003), it is not clear, at this stage, that claim with particularity as required by Rule 9(b) and, thus, Defendants' letters were such mere statements of opinion. it should be dismissed. See Fed.R.Civ.P. 9(b). Particularity The Court cannot determine at this stage of the proceeding requires the plaintiff to “(1) specify the statements that the whether the Defendants' letters, although purporting to be plaintiff contends were fraudulent, (2) identify the speaker, opinions, could reasonably be seen as stating or implying (3) state where and when the statements were made, and (4) provable facts about the authenticity of Double Denied. explain why the statements were fraudulent.” Stevelman The Second Circuit's decision in Boule, which involved the v. Alias Research, Inc., 174 F.3d 79, 84 (2d Cir.1999). The issue is whether the allegations provide fair and reasonable

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 7 Simon-Whelan v. Andy Warhol Foundation for the Visual..., Not Reported in... 2009-1 Trade Cases P 76,657 notice of the time, place, speaker, and content of the that the Complaint includes allegations concerning, inter alia, Defendants' profiting at Plaintiff's expense. alleged misrepresentation or omission. Shields v. Citytrust Bancorp, Inc., 25 F.3d 1124, 1128–29, 1130 (2d Cir.1994). Fremont's Official Capacity Plaintiff has alleged fraud sufficiently in connection with Defendants' motion is also denied as to Plaintiff's claims the repudiation of Double Denied. Plaintiff alleges that, in against Fremont in his official capacity. The Complaint July 2001 and continuing through December 2001, Fremont alleges that Fremont is the “successor” executor of the intervened in Plaintiff's attempts to sell Double Denied and Estate. Defendants' arguments regarding the naming and fraudulently induced Plaintiff to submit his painting to the appointment of the Estate's executor and Fremont's actual Board for authentication. Plaintiff further alleges Fremont status can be addressed in an appropriate evidentiary context was aware at the time that the Board would deny the at a later stage of the proceeding. authenticity of Double Denied. Plaintiff also alleges that, in February 2002, Fremont once again induced the Plaintiff to resubmit Double Denied, after conducting additional CONCLUSION research, to the Board. The Complaint alleges that Fremont made these statements with the knowledge that Plaintiff For the foregoing reasons, Defendants' motion to dismiss the would rely on Fremont's statements and that a rejection Complaint is granted in part and denied in part. Plaintiff's by the Board was certain. The Complaint also alleges that antitrust claims are dismissed for lack of standing to the extent in February of 2002 the Board's agent, Claudia Defendi, that they are premised on inflation of the pricesof Warhol urged Plaintiff to resubmit Double Denied despite knowing artwork. Plaintiff's Lanham Act claim is dismissed insofar as that a rejection from the Board was predetermined. See it is premised on the exclusion of Double Denied from the International Motor Sports Group v. Gordon, No. 82709, Catalogue Raisonné. Defendant's motion is denied in all other 98 Civ. 5611, 1999 WL 619633, at *3 (S.D.N.Y. Aug.16, respects. The stay of discovery is lifted and the parties are 1999) (Rule 9(b) does not require “a plaintiff [to] plead directed to confer and to file an updated Joint Preliminary dates, times and places with absolute precision, so long as the Pre–Trial Statement one week before the next conference in complaint gives fair and reasonable notice to defendants of this action, which the Court will hold on Tuesday, June 30, the claim and the grounds upon which it is based”). Plaintiff's 2009, at 3:00 p.m. The Clerk of Court is respectfully requested allegations of fraud in connection with the repudiation of to terminate docket entry no. 21. Double Denied are sufficient under Rule 9(b) and Defendants' motion to dismiss Plaintiff's fraud claim is denied. SO ORDERED.

Unjust Enrichment Claim All Citations *10 Defendants' motion is denied as to Plaintiff's claim of unjust enrichment. The claim is not implausibly pled, in Not Reported in F.Supp.2d, 2009 WL 1457177, 2009-1 Trade Cases P 76,657

Footnotes 1 The Catalogue Raisonné recites that a fourth volume is reserved for newly found works, revised, updated and newly found information. (Reply Brief at 18, n. 2). 2 “Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States ... is declared to be illegal.” 15 U.S.C.A. § 1 (West 2009). 3 “Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce ... shall be deemed to be guilty of a felony ....“ 15 U.S.C.A. § 2 (West 2009). 4 “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading

description of fact, or false or misleading representation of fact, which—(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged by such act.” 15 U.S.C.A. § 1125(a)(1)(A) & (B) (West 1998).

that necessarily flow from the photograph's idea or photographer's choice of a given concept 382 F.Supp.3d 312 are not protectible; thus, although the elements United States District Court, S.D. New York. constituting a photographer's original expression The ANDY WARHOL FOUNDATION of her subject are copyrightable, the subject itself FOR THE VISUAL ARTS, INC., Plaintiff, – and general features of that subject – are not. v. Lynn GOLDSMITH et al., Defendants. [3] Copyrights and Intellectual Property 17-cv-2532 (JGK) Nature and elements of injury | To establish copyright infringement, two Signed July 1, 2019 elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent Synopsis elements of the work that are original. Background: Artistic foundation brought action against professional photographer, seeking judgment declaring that works created by artist on a photograph of a famous musician taken by photographer did not constitute violations [4] Copyrights and Intellectual Property of the Copyright Act. Photographer counterclaimed, asserting Conditions precedent; registration copyright infringement. Both sides moved for summary A party can pursue a copyright infringement judgment. claim in court once the copyright claimant has properly filed a registration application, and the Copyright Register has examined the application and registered the copyright. [Holding:] The District Court, John G. Koeltl, J., held that artist's works were protected by fair use from liability under the Copyright Act. [5] Copyrights and Intellectual Property Weight and Sufficiency Foundation's motion granted; photographer's motion denied. In the absence of proof of direct copying, a copyright infringement claimant may establish Procedural Posture(s): Motion for Summary Judgment. copying circumstantially by demonstrating that the person who composed the allegedly infringing work had access to the copyrighted West Headnotes (30) material and that there are similarities between the two works that are probative of copying. [1] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works Photographs are generally considered creative [6] Copyrights and Intellectual Property works that merit copyright protection. Acts Constituting Infringement A copyright owner must satisfy the improper appropriation prong of a copyright claim by [2] Copyrights and Intellectual Property demonstrating that substantial similarities as to Pictorial, graphic, and sculptural works the protected elements of the work would cause Copyright protectible, original elements of a an average lay observer to recognize the alleged photograph include posing the subjects, lighting, copy as having been appropriated from the angle, selection of film and camera, evoking copyrighted work. the desired expression, and almost any other variant involved, but aspects of a photograph

[7] Copyrights and Intellectual Property Acts Constituting Infringement [11] Copyrights and Intellectual Property “Ordinary observer test” for substantial Fair use and other permitted uses in general similarity between works, for purposes of a Critical question in determining fair use, as copyright infringement claim, asks whether the statutory exception to copyright infringement, ordinary observer, unless he set out to detect is whether copyright law's goal of promoting the disparities between the two works, would the progress of science and useful arts would be disposed to overlook them, and regard their be better served by allowing the use than by aesthetic appeal as the same. preventing it. 17 U.S.C.A. § 107.

[8] Copyrights and Intellectual Property [12] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works Fair use and other permitted uses in general When copyright protected work contains Most important consideration under the purpose both protectible and unprotectable elements, and character factor for fair use statutory such as a photograph, courts analyzing exception to copyright infringement is the copyright infringement claims must take on transformative nature of the work at issue; a more discerning comparison by extracting central purpose of this investigation is to the unprotectable elements from consideration determine whether the new work merely and then considering whether the remaining supersedes the objects of the original creation protectible elements of the works are or instead adds something new, with a further substantially similar; however, this comparison purpose or different character, altering the first must not be so discerning that the protected with new expression, meaning, or message. 17 work's total concept and feel is ignored. U.S.C.A. § 107(1).

[9] Copyrights and Intellectual Property [13] Copyrights and Intellectual Property Summary judgment Fair use and other permitted uses in general Although the issue of fair use, as statutory The law imposes no requirement that a work exception to copyright infringement, is a mixed comment on the original or its author in question of law and fact, the court may resolve order to be considered transformative, as factor issues of fair use at the summary judgment stage for fair use statutory exception to copyright where there are no genuine issues of material fact infringement. 17 U.S.C.A. § 107(1). as to such issues. 17 U.S.C.A. § 107.

[14] Copyrights and Intellectual Property [10] Copyrights and Intellectual Property Fair use and other permitted uses in general Fair use and other permitted uses in general Generally, the more transformative the new Four factors identified by Congress as especially work, the less will be the significance of other relevant in determining whether the use of factors for fair use, as statutory exception to copyrighted work was fair are: (1) the purpose copyright infringement, like commercialism. 17 and character of the use; (2) the nature of the U.S.C.A. § 107(1). copyrighted work; (3) the substantiality of the portion used in relation to the copyrighted work as a whole; (4) the effect on the potential market for or value of the copyrighted work. 17 U.S.C.A. [15] Copyrights and Intellectual Property § 107. Fair use and other permitted uses in general

If looking at the works side-by-side, the copyright infringement, courts consider whether secondary work has a different character, a the copyrighted work is (1) expressive or new expression, and employs new aesthetics creative versus factual or informational and (2) with creative and communicative results distinct unpublished versus published. 17 U.S.C.A. § from the original, the secondary work is 107(2). transformative as a matter of law, as factor of fair use statutory exception to copyright infringement. 17 U.S.C.A. § 107(1). [19] Copyrights and Intellectual Property Fair use and other permitted uses in general With respect to nature of the copyrighted [16] Copyrights and Intellectual Property work factor of fair use exception to copyright Pictorial, graphic, and sculptural works infringement under the Copyright Act, fair use of Artist's print illustrations of famous expressive or creative works is more difficult to musician, based on professional photographer's establish than fair use of factual or informational copyrighted photograph of the musician, were works, and the fair use defense is narrower when transformative, having different character from, applied to unpublished works than when applied giving new expression to, and employing new to published works. 17 U.S.C.A. § 107(2). aesthetics with creative and communicative results distinct from the photograph, strongly weighing in favor of finding artist's works [20] Copyrights and Intellectual Property fell under fair use statutory exception to Fair use and other permitted uses in general copyright infringement; artist's works, which Significance of the nature of the copyrighted used loud, unnatural colors, in contrast to the work factor for fair use statutory exception to black-and-white photograph, could reasonably copyright infringement is diminished when the be perceived to have transformed musician secondary work uses the copyrighted work for a from a vulnerable, uncomfortable person to an transformative purpose. 17 U.S.C.A. § 107(2). iconic, larger-than-life figure, removed from the humanity embodied in the photograph, and were immediately recognizable as being some [21] Copyrights and Intellectual Property of artist's famous representations of famous Pictorial, graphic, and sculptural works persons. 17 U.S.C.A. § 107(1). Nature of the copyrighted work was neutral factor in assessment of whether artist's print illustrations of famous musician, based [17] Copyrights and Intellectual Property on professional photographer's copyrighted Fair use and other permitted uses in general photograph of the musician, fell under fair use Nature of copyrighted work factor of fair use statutory exception to copyright infringement; statutory exception to copyright infringement photograph enjoyed additional protection against calls for recognition that some works are closer fair use due to fact that it was unpublished, to the core of intended copyright protection than but that additional protection carried little force others, with the consequence that fair use is more given that photographer's agency had licensed difficult to establish when the former works are the photograph for use as an artist's reference, copied. 17 U.S.C.A. § 107(2). and because works were transformative. 17 U.S.C.A. § 107(2).

[18] Copyrights and Intellectual Property Fair use and other permitted uses in general [22] Copyrights and Intellectual Property Relevant to the nature of the copyrighted Fair use and other permitted uses in general work factor of fair use statutory exception to

Inquiry for factor of fair use statutory exception Inquiry into effect of use upon potential market to copyright infringement looking at amount for or value of copyrighted work, as factor and substantiality of portion used in relation to of fair use statutory exception to copyright copyrighted work as a whole must take into infringement, must take account not only of account that the extent of permissible copying harm to the original but also of harm to the varies with the purpose and character of the use. market for derivative works; however, the market 17 U.S.C.A. § 107(3). for potential derivative uses includes only those that creators of original works would in general develop or license others to develop. 17 U.S.C.A. [23] Copyrights and Intellectual Property § 107(4). Fair use and other permitted uses in general With respect to factor of fair use statutory exception to copyright infringement looking [26] Copyrights and Intellectual Property at amount and substantiality of portion used Fair use and other permitted uses in general in relation to copyrighted work as a whole, Application of factor of fair use statutory courts ask whether the quantity and value of exception to copyright infringement looking at the materials used are reasonable in relation to the effect of use upon potential market for or the purpose of the copying while recognizing value of copyrighted work focuses primarily on that substantial, key portions of a work may be whether the secondary use usurps the market taken for purposes of transforming that work. 17 or derivative markets for the original work; U.S.C.A. § 107(3). an accused infringer might usurp the market for copyrighted works, including the derivative market, where the infringer's target audience and [24] Copyrights and Intellectual Property the nature of the infringing content is the same as Pictorial, graphic, and sculptural works the original. 17 U.S.C.A. § 107(4). Although artist initially used musician's head and neckline as they appeared in copyrighted photograph, artist removed nearly all the [27] Copyrights and Intellectual Property photograph's protectible elements in creating his Fair use and other permitted uses in general series of works, and in doing so, transformed Analysis of fair use statutory exception to the photograph into something new and different, copyright infringement is concerned with only thus weighing heavily in favor of finding one type of economic injury to a copyright that artist's works fell under fair use statutory holder: the harm that results because the exception to copyright infringement; artist's secondary use serves as a substitute for the works included only musician's head and small original work. 17 U.S.C.A. § 107(4). portion of his neckline, while the copyrighted work captured much of musician's torso, artist removed three-dimensional effects of [28] Copyrights and Intellectual Property the photograph, traded the photograph's white Fair use and other permitted uses in general background for loud colors, and though pose The more transformative the secondary use, the and angle of musician's head were copied less likelihood that the secondary use substitutes from the photograph, those features were not for the original, for purposes of factor of fair use copyrightable. 17 U.S.C.A. § 107(3). statutory exception to copyright infringement looking at the effect of use upon potential market for or value of copyrighted work. 17 U.S.C.A. § [25] Copyrights and Intellectual Property 107(4). Fair use and other permitted uses in general

[29] Copyrights and Intellectual Property Barry Werbin, Gabrielle Casal Wilson, Herrick, Feinstein Pictorial, graphic, and sculptural works LLP, Joel Lawrence Hecker, Law Offices of Joel L. Hecker, Artist's print illustrations of famous musician, New York, NY, for Defendants. which were based on professional photographer's copyrighted photograph of the musician, were not market substitutes that harmed or had OPINION AND ORDER potential to harm photographer, thus favoring finding that artist's works fell under fair use JOHN G. KOELTL, District Judge: statutory exception to copyright infringement; This case raises the question of whether Andy Warhol's use since photographer did not sell her photographs, of a photograph of an iconic singer as the basis for a series of but rather, licensed them, the relevant markets artworks is protected as fair use. were licensing markets, which were distinct from the market for artist's works, and there More particularly, the Andy Warhol Foundation for the Visual was no evidence or reason to conclude that Arts, Inc. (“AWF”), seeks a declaratory judgment declaring photographer's licensees would view artist's that works created by Andy Warhol based on a photograph prints, consisting of stylized works manifesting of Prince Rogers Nelson, best known as “Prince,” taken by a unique aesthetic, as a substitute for photographer Lynn Goldsmith do not constitute violations photographer's intimate and realistic photograph 1 of musician. 17 U.S.C.A. § 107(4). of the Copyright Act. Goldsmith has filed a counterclaim against AWF claiming that the Warhol works do constitute copyright infringement. AWF moves for summary judgment granting its request for a declaratory judgment and dismissing [30] Copyrights and Intellectual Property Goldsmith's counterclaim; Goldsmith moves for summary Pictorial, graphic, and sculptural works judgment denying AWF's request for a declaratory judgment Artist made fair use of professional and holding that AWF infringed her copyright. For the reasons photographer's copyrighted photograph of discussed below, AWF's motion is granted and Goldsmith's famous musician when he created series of motion is denied. works based on the photograph, and thus did not violate the Copyright Act; artist transformed the photograph from depicting musician's head and torso in a black-and-white manner that revealed I. musician was not a comfortable person and a The standard for granting summary judgment is well vulnerable human being, into an illustration of established. “The Court shall grant summary judgment if the just musician's head and neckline, using loud movant shows that there is no genuine dispute as to any and unnatural colors that made artist appear material fact and the movant is entitled to judgment as a matter to be an iconic and larger-than-life figure, stylized in unique aesthetic recognized as being of law.” Fed. R. Civ. P. 56(a); see also *317 Celotex associated with artist and not as a substitute for Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, photographer's intimate and realistic photograph. 91 L.Ed.2d 265 (1986); Gallo v. Prudential Residential 17 U.S.C.A. § 107. Servs., Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir. 1994). “[T]he trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are any genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue- Attorneys and Law Firms finding; it does not extend to issue-resolution.” Gallo, 22 *316 Daniel Rickert Koffmann, Maaren Alia Shah, Luke F.3d at 1224. The moving party bears the initial burden of William Nikas, Quinn Emanuel Urquhart & Sullivan LLP, “informing the district court of the basis for its motion” and New York, NY, for Plaintiff. identifying the matter that “it believes demonstrate[s] the

respect to lighting, camera position, and other elements. See absence of a genuine issue of material fact.” Celotex, 477 id. ¶¶ 44–63. U.S. at 323, 106 S.Ct. 2548. The substantive law governing the case will identify those facts that are material and “[o]nly Andy Warhol, an “art-world colossus” who lived between disputes over facts that might affect the outcome of the suit 1928 and 1987, was an artist who contributed significantly under the governing law will properly preclude the entry of to contemporary art across a variety of media. AWF's 56.1 summary judgment.” Anderson v. Liberty Lobby, Inc., 477 Stmt. ¶¶ 1–2; Goldsmith's 56.1 Stmt. ¶¶ 71, 154. Warhol's U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). contemporary art brand has remained powerful. AWF's 56.1 Stmt. ¶ 1. AWF is a New York not-for-profit corporation that In determining whether summary judgment is appropriate, a was formed in 1987 after Warhol's death and in accordance court must resolve all ambiguities and draw all reasonable with his will. Goldsmith's 56.1 Stmt. ¶¶ 4, 72. It was created inferences against the moving party. See Matsushita Elec. for the purpose of advancing visual art, “particularly work Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. that is experimental, under-recognized, or challenging in 1348, 89 L.Ed.2d 538 (1986). Summary judgment is improper nature.” AWF's 56.1 Counter Stmt. ¶ 238. AWF controls if there is any evidence in the record from any source from Warhol *318 images and licenses them to fund its programs. which a reasonable inference could be drawn in favor of Goldsmith's 56.1 Stmt. ¶ 5. the nonmoving party. See Chambers v. TRM Copy Ctrs. On December 2, 1981, Goldsmith photographed Prince in Corp., 43 F.3d 29, 37 (2d Cir. 1994). If the moving party meets concert at the Palladium in New York City. AWF's 56.1 its burden, the nonmoving party must produce evidence in the Stmt. ¶ 68. The next day, she photographed him in her New record and “may not rely simply on conclusory statements or York City studio on assignment from Newsweek Magazine. on contentions that the affidavits supporting the motion are Id. ¶¶ 69–70. Prince arrived at the studio wearing makeup, not credible.” Ying Jing Gan v. City of New York, 996 and Goldsmith applied more makeup “to connect with Prince physically and in recognition of her feeling [that] F.2d 522, 532 (2d Cir. 1993); see also Scotto v. Almenas, Prince was in touch with the female part of himself” while 143 F.3d 105, 114–15 (2d Cir. 1998). When there are cross also being “very much male.” Id. ¶ 76 (quotation marks motions for summary judgment, the Court must assess each of omitted, alteration in original). Prince was photographed in the motions and determine whether either party is entitled to his own clothes, except for a black sash that he picked from judgment as a matter of law. Admiral Indem. Co. v. Travelers Goldsmith's clothing room and wore around his neck. Id. Cas. & Sur. Co. of Am., 881 F. Supp. 2d 570, 574 (S.D.N.Y. ¶¶ 78–79, 81. Goldsmith chose the photographic equipment 2012). she used for the shoot. Id. ¶ 83. She also decided to use a plain white background and lit the shoot in a way that emphasized Prince's “chiseled bone structure.” Id. ¶¶ 82, 84– II. 85. Goldsmith first shot black and white photographs and then switched to color film. Goldsmith's 56.1 Stmt. ¶ 28. The following facts are undisputed unless otherwise noted. Shortly after the shoot began – and after Goldsmith had taken approximately eleven photographs of Prince – Prince A. retreated to the studio's makeup room. AWF's 56.1 Stmt. ¶¶ 88–89. Goldsmith testified that Prince was “really Lynn Goldsmith is a photographer who has photographed uncomfortable” during the shoot. Id. ¶ 87. Prince remained in numerous rock, jazz, and R&B performers. AWF's 56.1 the makeup room for a while and then, following an exchange Stmt. ¶¶ 37–38. Goldsmith's work centers on helping others with Goldsmith in which she said he could leave if he wanted, formulate their identities, which she aims to capture and he left the studio. Id. ¶ 88. According to Goldsmith, the reveal through her photography. Id. ¶¶ 41, 43. To expose photographs from her shoot with Prince show that he is “not and capture her subjects' “true selves,” Goldsmith employs a comfortable person” and that he is a “vulnerable human several interpersonal techniques to establish rapport with her being.” Id. ¶ 90. Newsweek published one of Goldsmith's subjects, as well as several photographic techniques with photographs of Prince in concert a few weeks after the shoot

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 6 Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 382 F.Supp.3d 312 (2019) 2019 Copr.L.Dec. P 31,483 but did not publish any photographs from the shoot in her studio. Id. ¶¶ 94–95. The “Purple Fame” article and accompanying Warhol illustration of Prince. In October 1984, Vanity Fair – which was at the time and is still owned by Condé Nast, Goldsmith's 56.1 Stmt. ¶ Based on the Goldsmith Prince Photograph, Warhol created 91 – licensed one of Goldsmith's black-and-white studio the “Prince Series,” comprised of sixteen distinct works – portraits of Prince from her December 3, 1981 shoot (the including the one used in Vanity Fair magazine – depicting “Goldsmith Prince Photograph”) for $400. AWF's 56.1 Stmt. Prince's head and a small portion of his neckline. Id. ¶¶ ¶ 97; Goldsmith's 56.1 Stmt. ¶ 40. The Goldsmith Prince 57, 60; AWF's 56.1 Stmt. ¶ 112. Twelve of the works Photograph was licensed “for use as an artist's reference in are silkscreen paintings, two are screen prints on paper, connection with an article to be published in Vanity Fair and two are drawings. AWF's 56.1 Stmt. ¶ 112. Goldsmith Magazine.” Goldsmith's 56.1 Stmt. ¶ 40. The invoice did alleges that Warhol copied the Goldsmith Prince Photograph not specify which photograph from the shoot was licensed at some point during his process of creating the Prince and did not mention Andy Warhol. Id. ¶ 102; Goldsmith's Series; AWF does not concede this point and instead states 56.1 Counter Stmt. ¶ 105. Goldsmith's photography agency, equivocally that “[t]here is no evidence that [Warhol] was through its staff, submitted the Goldsmith Prince Photograph given the photograph itself” but, “somehow,” Warhol created to Vanity Fair; Goldsmith herself did not know at the time the Prince Series. See Goldsmith's Br. at 10–11; AWF's Br. that the photograph had been licensed for use as an artist's at 18. However, AWF fact witness Neil Printz testified that reference. Goldsmith's 56.1 Stmt. ¶ 47. “typically” the Warhol silkscreen paintings and prints were “based on a photograph” and “[t]ypically for Warhol, since Vanity Fair commissioned Warhol to create an illustration of he worked with photographs, he would have his silkscreen Prince for an article titled “Purple Fame,” which was to be printer create a high contrast half tone silkscreen from a published in the November 1984 issue of its magazine. Id. photograph.” Goldsmith's 56.1 Stmt. at ¶ 66; AWF's 56.1 ¶¶ 48–49. Warhol created a full-color illustration of Prince Counter Stmt. ¶ 66. that ultimately appeared in the “Purple Fame” article and in the magazine's table of contents. Id. ¶¶ 49, 53. The article stated that it featured “a special portrait for Vanity Fair *320 by ANDY WARHOL.” Id. ¶ 49. The article contained a copyright attribution credit for the portrait as follows: “source photograph © 1984 by Lynn Goldsmith/LGI.” Id. ¶ 51. Condé Nast's representative stated that the reference to “source photograph” meant the “underlying image that was used to create the artwork.” Id. ¶ 52.

*319

magazine contained a copyright credit to Warhol but not to Goldsmith. Id. ¶ 115. Condé Nast published the magazine in May 2016. Id. ¶ 113.

Goldsmith first learned that Warhol created the Prince illustration for Vanity Fair after Prince's death. Id. ¶ 120. Before then, she had never seen any work in the Prince Series. Id. ¶ 121. Goldsmith contacted AWF and advised that she believed the Condé Nast magazine cover infringed one of her Prince photograph copyrights. Id. ¶ 122. Initially she told AWF that Condé Nast's use infringed one of her colored Prince portraits but, after further comparison, notified AWF that Condé Nast's use actually infringed one of her black- and-white portraits – the Goldsmith Prince Photograph. Id. ¶¶ 123–27. Following this exchange, Goldsmith obtained a copyright registration for the Goldsmith Prince Photograph as an unpublished work. Id. ¶ 159.

The sixteen Prince Series works.

After Warhol died in 1987, AWF obtained ownership of the Prince Series from Warhol's estate. AWF's 56.1 Stmt. ¶ 148. Twelve of the Prince Series works have since been auctioned or sold throughout the world, and AWF has given the remaining four to the Andy Warhol Museum in Pittsburgh, The Condé Nast magazine cover and Pennsylvania. Id. ¶¶ 149–51. The Prince Series works have the Goldsmith Prince Photograph. also been displayed in museums, galleries, books, magazines, promotional materials, and other public locations more than AWF has made each of the Prince Series works available thirty times since the November 1984 issue of Vanity Fair. Id. for licensing to third parties for use in books, magazines, ¶ 152. newspapers, and for other merchandizing purposes. Id. ¶¶ 128–37. Goldsmith licenses single images of her photography for various editorial and commercial uses, often to magazines and record companies. Id. ¶¶ 138–39. She also offers mosaic *321 B. prints, which are composed by combining several of her images, and fine-art prints. Id. ¶¶ 140–42. But Goldsmith has Prince died on April 21, 2016. Goldsmith's 56.1 Stmt. ¶ not yet editioned or sold any prints of the Goldsmith Prince 87. The next day, Vanity Fair published an online copy Photograph. Id. ¶ 143. Goldsmith testified that she has not of its November 1984 “Purple Fame” article, which had done so “because *322 she doesn't edition all her work at credited Warhol and Goldsmith for the Prince illustration in once, and as she gets older she intends to start editioning her the article. Id. ¶ 88. Condé Nast then decided to issue a other works, anticipating that prices will then go up.” Id. commemorative magazine titled “The Genius of Prince” and obtained a commercial license to use one of Warhol's Prince Series works as the magazine's cover. Id. ¶¶ 113, 119. The

Goldsmith testified that in 2004, she sold a fine-art print of Prince that she created in 1993 to a private collector who also III. owns three Warhol works of art. Id. ¶ 155. Moreover, between 2005 and 2016, Goldsmith issued ten or eleven licenses for [1] [2] Photographs are generally considered creative other Goldsmith photographs of Prince – photographs not works that merit copyright protection. Burrow-Giles taken at the December 3, 1981 studio shoot but in other Lithographic Co. v. Sarony, 111 U.S. 53, 60, 4 S.Ct. 279, venues such as concerts – to various magazines and venues. Id. ¶¶ 144–45; AWF's 56.1 Reply Stmt. ¶ 178. However, aside 28 L.Ed. 349 (1884); see Mannion v. Coors Brewing from the license to Vanity Fair in 1984, Goldsmith does not Co., 377 F. Supp. 2d 444, 450 (S.D.N.Y. 2005) (“Almost recall licensing the Goldsmith Prince Photograph or any other any photograph may claim the necessary originality to photograph that she took at the December 1981 studio shoot. support a copyright.” (quotation marks omitted)); Monster AWF's 56.1 Stmt. ¶ 182. Commc'ns, Inc. v. Turner Broad. Sys., Inc., 935 F. Supp. 490, 494 (S.D.N.Y. 1996) (stating that “photographic images of actual people, places and events may be” copyrighted). C. The protectible, original elements of a photograph include “posing the subjects, lighting, angle, selection of film and AWF seeks a declaratory judgment declaring that none of the camera, evoking the desired expression, and almost any other sixteen works in the Prince Series infringe the copyright of the Goldsmith Prince Photograph. AWF argues that the Prince variant involved.” Rogers v. Koons, 960 F.2d 301, 307 (2d Series works are not substantially similar to the Goldsmith Cir. 1992). But “aspects of [a photograph] that necessarily Prince Photograph and, in any event, the Prince Series works flow” from the photograph's idea or the photographer's are protected by the fair use doctrine. Goldsmith, on the other “choice of a given concept” are not protectible. *323 hand, seeks summary judgment denying AWF's request for a Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 declaratory judgment and holding that the Prince Series works F. Supp. 2d 382, 392 (S.D.N.Y. 2005). Thus, although the infringe the copyright of the Goldsmith Prince Photograph. elements constituting a photographer's original expression of She contends that Warhol copied her photograph in creating her subject are copyrightable, the subject itself – and general the Prince Series, that the Prince Series works in their final features of that subject – are not. Kisch v. Ammirati forms are substantially similar to the photograph, and that & Puris Inc., 657 F. Supp. 380, 382 (S.D.N.Y. 1987); see AWF does not have a viable fair use defense. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133, AWF also raises a statute of limitations defense, arguing 136 (2d Cir. 2004). that the Copyright Act's three-year statute of limitations bars Goldsmith from claiming infringement for acts that occurred [3] [4] “To establish copyright infringement, ‘two elements more than three years before she brought her claim. See 17 must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’ U.S.C. § 507(b); Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 124 (2d Cir. 2014). Goldsmith counters that under ” Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996) the “discovery rule,” “copyright infringement claims do not (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 accrue until actual or constructive discovery of the relevant U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). infringement.” See Psihoyos, 748 F.3d at 125. Goldsmith A party can pursue a copyright infringement claim in court adds that, either way, her infringement claim is based on once the copyright claimant has properly filed a registration AWF's licensing a Prince Series work to Condé Nast in 2016, application, and the Copyright Register has examined the which is well within the limitations period. Goldsmith's Br. application and registered the copyright. Fourth Estate Pub. at 40. Similarly, any future licensing of the Prince Series Benefit Corp. v. Wall-Street.com, LLC, ––– U.S. ––––, 139 S. would allegedly constitute new acts of infringement for which Ct. 881, 892, 203 L.Ed.2d 147 (2019). The parties here do not Goldsmith would have a remedy. AWF does not dispute that dispute that Goldsmith has a valid and registered copyright this particular claim is timely brought. AWF's Opp. at 42. for the Goldsmith Prince Photograph.

[5] The second element of a copyright claim has two work's “total concept and feel” is ignored. See Boisson v. subparts: Goldsmith must demonstrate first that AWF copied Banian, Ltd, 273 F.3d 262, 272–73 (2d Cir. 2001). her work and then that such copying was unlawful because a “substantial similarity” exists between the allegedly Goldsmith alleges as one theory of infringement that Warhol, infringing works (the Prince Series works) and the protectible or his agents, reproduced her entire photograph, including its elements of the copyrighted work (the Goldsmith Prince protectible and unprotectible elements, without authorization Photograph). See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), at some point during Warhol's process of creating the Prince Series. See Am. Counterclaim ¶¶ 1, 42; Goldsmith's Br. at 10– 71 F.3d 996, 1002 (2d Cir. 1995); see also Fisher–Price, 3 Inc. v. Well–Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d 11, 23. Although this a valid basis for an infringement claim, Cir. 1994). To establish the first subpart in the absence of it relates to conduct that occurred nearly forty years ago and proof of direct copying, a party “may establish copying is well outside the Copyright Act's statute of limitations. See circumstantially by demonstrating that the person who Stone v. Williams, 970 F.2d 1043, 1049–50 (2d Cir. 1992) composed the [allegedly infringing] work had access to the (“Recovery is allowed only for those acts occurring within copyrighted material and that there are similarities between three years of suit, and is disallowed for earlier infringing the two works that are probative of copying.” Jorgensen v. acts.”). 4 Goldsmith appears to recognize this, and focuses her Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003) (quotation infringement claim primarily on AWF's more recent licensing marks omitted). The similarity established at this stage to of the Price Series works – namely, the 2016 license to Condé prove copying is referred to as “probative similarity.” 2 AWF Nast and the claim by AWF that it has the right to continue does not deny for purposes of these motions that there was licensing the Prince Series works. See Am. Counterclaim ¶¶ access and sufficient probative similarity to establish that 28–32, 42–43; Goldsmith Br. at 40. 5 Warhol “copied” the Goldsmith Prince Photograph – at least to some extent. June 10, 2019 Transcript (“Tr.”) at 4. AWF argues that it did not infringe Goldsmith's copyright to her Prince photograph because none of Warhol's Prince Series [6] [7] [8] “Once actual copying has been established, works, including the work licensed to Condé Nast in 2016, the copyright owner must then satisfy the ‘improper are substantially similar to the Goldsmith Prince Photograph appropriation’ requirement by demonstrating that ‘substantial under the “ordinary observer test” for substantial similarity. similarities’ as to the protected elements of the work would But the Court need not address this argument because it is cause an average lay observer to ‘recognize the alleged plain that the Prince Series works are protected by fair use. 6 copy as having been appropriated from the copyrighted work.’ ” Kate Spade, 388 F. Supp. 2d at 389 (quoting Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, IV. 911–12 (2d Cir. 1980)). This “ordinary observer test” asks “Fair use” is a statutory exception to “whether the ordinary observer, unless he set out to detect [9] [10] [11] copyright infringement. 17 U.S.C. § 107. “Although the issue the disparities [between the two works], would be disposed of fair use is a mixed question of law and fact, the court to overlook them, and regard their aesthetic appeal as may resolve issues of fair use at the summary judgment stage the same.” Folio Impressions, Inc. v. Byer Cal., 937 where,” as here, “there are no genuine issues of material F.2d 759, 765 (2d Cir. 1991) (quotation marks omitted). fact as to such issues.” Bill Graham Archives v. Dorling When the protected work contains both protectible and Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006). “The unprotectible elements, such as a photograph, courts must four factors identified by Congress as especially relevant in take on a more discerning comparison by *324 extracting determining whether the use was fair are: (1) the purpose and the unprotectible elements from consideration and then character of the use; (2) the nature of the copyrighted considering whether the remaining protectible elements of the *325 work; (3) the substantiality of the portion used in relation to works are substantially similar. Kate Spade, 388 F. Supp. the copyrighted work as a whole; (4) the effect on the potential 2d at 390 (citing Knitwaves, 71 F.3d at 1002). However, market for or value of the copyrighted work.” Harper & this comparison must not be so discerning that the protected Row Publishers v. Nation Enters., 471 U.S. 539, 560–61, 105

S.Ct. 2218, 85 L.Ed.2d 588 (1985). These factors must be that benefits the broader public interest.” Blanch v. Koons, weighed in a “an open-ended and context-sensitive inquiry.” 467 F.3d 244, 254 (2d Cir. 2006) (quotation marks omitted). Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013). The Moreover, AWF is a not-for-profit entity that was created for critical question in determining fair use is whether copyright the purpose of advancing visual art, and profits derived from law's goal of “promot[ing] the Progress of Science and useful licensing Warhol's works help fund AWF's programs. Thus, Arts would be better served by allowing the use than by although the Prince Series works are commercial in nature, they also add value to the broader public interest. preventing it.” Castle Rock Entm't, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132, 141 (2d Cir. 1998) (citation and quotation [15] In any event, the Prince Series works are transformative, marks omitted, alteration in original). and therefore the import of their (limited) commercial nature is diluted. If “looking at the [works] side-by-side,” the secondary work “ha[s] a *326 different character, ... a A. new expression, and employ[s] new aesthetics with creative and communicative results distinct” from the original, the [12] [13] [14] The first factor, the purpose and character secondary work is transformative as a matter of law. of the use, considers whether the secondary work “is of a commercial nature or is for nonprofit educational purposes.” Cariou, 714 F.3d at 707–08. The Court must “examine how 17 U.S.C. § 107(1). But the “[m]ost important” consideration the [Prince Series works] may ‘reasonably be perceived’ in under the first factor is the “transformative” nature of the order to assess their transformative nature.” See id. at 707 work at issue. Bill Graham Archives, 448 F.3d at 608. (quoting Campbell, 510 U.S. at 582, 114 S.Ct. 1164). The central purpose of this investigation is to determine “whether the new work merely supersede[s] the objects of Each of the Prince Series works may reasonably be perceived the original creation or instead adds something new, with to be transformative of the Goldsmith Prince Photograph. As a further purpose or different character, altering the first Goldsmith has confirmed, her photographic work centers on with new expression, meaning, or message.” Campbell helping others formulate their identities, which she aims to v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 114 S.Ct. capture and reveal through her photography. Her photoshoot 1164, 127 L.Ed.2d 500 (1994) (citations and quotation illustrated that Prince is “not a comfortable person” and that marks omitted, alteration in original). “The law imposes no he is a “vulnerable human being.” AWF's 56.1 Stmt. ¶ 90. The requirement that a work comment on the original or its author Goldsmith Prince Photograph reflects these qualities. in order to be considered transformative ....” Cariou, 714 Warhol's Prince Series, in contrast, can reasonably be F.3d at 706. Generally, “the more transformative the new perceived to reflect the opposite. In all but one of the work, the less will be the significance of other factors, like works, Prince's torso is removed and his face and a small commercialism ....” Campbell, 510 U.S. at 579, 114 S.Ct. portion of his neckline are brought to the forefront. The details of Prince's bone structure that appear crisply in 1164; see Cariou, 714 F.3d at 708. 7 the photograph, which Goldsmith sought to emphasize, are softened in several of the Prince Series works and outlined or Warhol's Prince Series works are commercial in nature. shaded in the others. Prince appears as a flat, two-dimensional Indeed, twelve of the sixteen works have been auctioned or figure in Warhol's works, rather than the detailed, three- sold throughout the world, and AWF has made each of the dimensional being in Goldsmith's photograph. Moreover, sixteen works available for licensing to third parties for use in many of Warhol's Prince Series works contain loud, unnatural books, magazines, newspapers, and for other merchandizing colors, in stark contrast with the black-and-white original purposes. However, AWF gave four of the works to the photograph. And Warhol's few colorless works appear as Andy Warhol Museum in Pittsburgh, and some of the other rough sketches in which Prince's expression is almost entirely works have been exhibited at other galleries and museums. lost from the original. The Second Circuit Court of Appeals has commented that “[n]otwithstanding the fact that artists are sometimes paid and These alterations result in an aesthetic and character different museums sometimes earn money, the public exhibition of art from the original. The Prince Series works can reasonably is widely and we think properly considered to have value be perceived to have transformed Prince from a vulnerable,

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 11 Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 382 F.Supp.3d 312 (2019) 2019 Copr.L.Dec. P 31,483 uncomfortable person to an iconic, larger-than-life figure. which would ordinarily weigh in Goldsmith's favor. However, The humanity Prince embodies in Goldsmith's photograph the reasons unpublished works enjoy additional protection is gone. Moreover, each Prince Series work is immediately against fair use – including respect for the author's choices recognizable as a “Warhol” rather than as a photograph of of when to make a work public and whether to withhold Prince – in the same way that Warhol's famous representations a work to shore up demand 9 – carry little force in this of Marilyn Monroe and Mao are recognizable as “Warhols,” case, where Goldsmith's photography agency licensed the not as realistic photographs of those persons. 8 photograph for use as an artist's reference. Moreover, this factor is of limited importance because the Prince Series [16] In sum, the Prince Series works are transformative. works are transformative works. Therefore, the second fair They “have a different character, give [Goldsmith's] use factor favors neither party. photograph[ ] a new expression, and employ new aesthetics with creative and communicative results distinct from

[Goldsmith's].” See Cariou, 714 F.3d at 708. They add C. something new to the world of art and the public would be deprived of this contribution if the works could not [22] [23] Under the third factor of the fair use analysis, be distributed. The first fair use factor accordingly weighs courts consider “the amount and substantiality of the portion strongly in AWF's favor. used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). This inquiry “must take into account that the ‘the extent of permissible copying varies with the purpose and

B. character of the use.’ ” Bill Graham Archives, 448 F.3d at 613 (quoting Campbell, 510 U.S. at 586–87, 114 S.Ct. [17] [18] [19] [20] The second fair use factor considers 1164). Courts therefore ask “whether the quantity and value of “the nature of the copyrighted work.” 17 U.S.C. § 107(2). the materials used are reasonable in relation to the purpose of “This factor calls for recognition that some works are closer the copying” while recognizing that substantial, key portions to the core of intended copyright protection than others, with of a work may be taken for purposes of transforming that the consequence that fair use is more difficult to *327 work. Cariou, 714 F.3d at 710 (alteration and quotation establish when the former works are copied.” Campbell, marks omitted). 510 U.S. at 586, 114 S.Ct. 1164. Courts consider whether the copyrighted work is (1) expressive or creative versus factual Goldsmith contends that this factor weighs in her favor or informational and (2) unpublished versus published. because Warhol's Prince Series works contain the essence Cariou, 714 F.3d at 709–10. Fair use of expressive or of the entire Goldsmith Prince Photograph; that the creative works is more difficult to establish than fair use photograph's core protectible elements remain in Warhol's of factual or informational works, and the fair use defense works. Ostensibly in support of this argument, Goldsmith is narrower when applied to unpublished works than when states that “Warhol had to use and incorporate the same expression of the Goldsmith Photo in creating the Warhol applied to published works. Id. However, as with the first [Vanity Fair] image because he was commissioned by Vanity fair use factor, the second factor's significance is diminished Fair to do just that.” Goldsmith's Br. at 35. AWF counters when the secondary work uses the copyrighted work for a that Warhol used only a portion of the Goldsmith Prince transformative purpose. Id. Photograph and that the Prince Series works, in their final forms, contain none of the protectible elements of Goldsmith's [21] AWF does not dispute that the Goldsmith Prince photograph. Photograph is a creative work, and photographs are generally found to be creative works. See Rogers, 960 F.2d at In Kienitz v. Sconnie Nation LLC, the Seventh Circuit 310 (stating that the photograph at issue was a creative Court of Appeals faced circumstances similar to those in this and imaginative work); see also Cariou, 714 F.3d at 710 case, where the defendants took an entire photograph of the (“[T]here is no dispute that [the plaintiff's photographic] then-Mayor of Madison, Wisconsin, from a website without work is creative ....”). The photograph is also unpublished, permission and altered it into a parody of the Mayor. 766

F.3d 756, 757 (7th Cir. 2014). The defendants then sold t- the defendant's works. 714 F.3d at 699–704. The court shirts and tank tops that displayed their altered image. Id. held that although the defendant “used key portions” of the plaintiff's photographs – or sometimes, entire photographs – in creating his artwork, the third factor weighed “heavily” *328 in the defendant's favor because the defendant “transformed those photographs into something new and different.” Id. at 710. 13

This case is similar to both Kienitz and Cariou. The Goldsmith Prince Photograph contains several protectible elements. “Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved.” Rogers, 960 F.2d at 307. Goldsmith has presented evidence demonstrating that she incorporated these elements into her artistic process when shooting Prince, and they are apparent in her photograph. The original photograph and the altered image in Kienitz. However, these creative elements are almost entirely absent from the Prince Series works.

The Kienitz court found that the defendant's work was All but one of Warhol's works include only Prince's head 10 protected by fair use and placed particular emphasis on the and a small portion of his neckline; Goldsmith's photograph third fair use factor, stating: captures much of Prince's torso. The sharp contours of Prince's face that Goldsmith emphasized in her photograph Defendants removed so much of the original that, as with are softened in some Prince Series works and traced over the Cheshire Cat, only the smile remains. Defendants or shaded in others. Moreover, the three-dimensional effect started with a low-resolution version posted on the City's in the photograph, produced by the background and lighting website, so much of the original's detail never had a that Goldsmith chose, was removed by Warhol resulting in a chance to reach the copy; the original's background is gone; flat, two-dimensional and mask-like figure of Prince's head. its colors and shading are gone; the expression in [the And in the majority of his Prince Series works, Warhol Mayor's] eyes can no longer be read; after the posterization traded Goldsmith's white background for a loudly colored (and reproduction by silk-screening), the effect of the background. Indeed, unlike Goldsmith's photograph, most of lighting in the original is almost extinguished. What is left, Warhol's works are entirely in color, and the works that are besides a hint of [the Mayor's] smile, is the outline of his black and white are especially crude and the creative features face, which can't be copyrighted. of the Goldsmith Prince Photograph are especially absent. Id. at 759. Moreover, the Kienitz court factored Ultimately, Warhol's alterations wash away the vulnerability against the defendants the fact that they did not need to and humanity Prince expresses in Goldsmith's photograph use the particular copyrighted photograph “when so many and Warhol instead presents Prince as a larger-than-life icon. noncopyrighted alternatives (including snapshots they could have taken themselves) were available.” 11 Id. In this case, Although the pose and angle of Prince's head were copied however, Goldsmith states that Warhol was required to use from the photograph to the Prince Series, “such a pose cannot be copyrighted” because copyright law “protect[s] her photograph in his works. 12 only plaintiff's particular photographic expression of [a]

The Second Circuit Court of Appeals reached a similar pose[ ] and not the underlying ideas therefor.” See Kate Spade, 388 F. Supp. 2d at 393 (quotation marks omitted). result in Cariou, which involved a defendant-artist using And several non-Goldsmith photographs capture Prince in the plaintiff's photographs as a source for several of *329 a similar pose, indicating that the pose is not particularly

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 13 Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 382 F.Supp.3d 312 (2019) 2019 Copr.L.Dec. P 31,483 original. See AWF 56.1 Stmt. ¶ 96. Finally, to the extent that Prince's facial features remain in Warhol's works, the features Goldsmith wisely does not contend that Warhol's work has usurped her market for direct sales of the Goldsmith Prince themselves are not copyrightable, see Mattel, 365 F.3d at Photograph. It is plain that the markets for a Warhol and 136, and the distinctive (and therefore copyrightable) way in for a Goldsmith fine-art or other type of print are different. which Goldsmith presented those features is absent from the Rather, Goldsmith argues that the Prince Series has harmed Prince Series works. Each Prince Series work contains little, her licensing markets. She maintains that “[h]er licensing if any, of the copyrightable elements of the Goldsmith Prince 14 markets overlap the same markets into which AWF has Photograph. licensed Warhol's imagery for editorial and commercial uses, including magazines ... [and] music album covers.” *330 [24] In short, although Warhol initially used Prince's Goldsmith's Br. at 36–37 (citation omitted). Even though head and neckline as they appear in the Goldsmith Prince Goldsmith has not editioned or licensed any of the Prince Photograph, Warhol removed nearly all the photograph's photographs from her December 3, 1981 shoot apart from the protectible elements in creating the Prince Series. In doing so, 1984 Vanity Fair artist's reference, she claims that “she has Warhol transformed Goldsmith's work “into something new reserved” those rights “for the future when she expects the and different and, as a result, this factor weighs heavily” in value of th[ose] photograph[s] to increase.” Id. at 37. AWF's favor. See Cariou, 714 F.3d at 710. Goldsmith's evidence and arguments do not show that the Prince Series works are market substitutes for her photograph. She provides no reason to conclude that potential licensees D. will view Warhol's *331 Prince Series, consisting of stylized [25] The final fair use factor considers “the effect of the use works manifesting a uniquely Warhol aesthetic, as a substitute upon the potential market for or value of the copyrighted for her intimate and realistic photograph of Prince. Although work.” 17 U.S.C. § 107(4). “This inquiry must take account Goldsmith points out that her photographs and Warhol's not only of harm to the original but also of harm to the works have both appeared in magazines and on album covers, this does not suggest that a magazine or record market for derivative works.” Harper & Row, 471 U.S. company would license a transformative Warhol work in lieu at 568, 105 S.Ct. 2218. However, “[t]he market for potential of a realistic Goldsmith photograph. Moreover, Goldsmith derivative uses includes only those that creators of original does not specify the types of magazines and album covers works would in general develop or license others to develop.” on which she and Warhol appear, and whether they are Campbell, 510 U.S. at 592, 114 S.Ct. 1164. similar. Put simply, the licensing market for Warhol prints is for “Warhols.” This market is distinct from the licensing [26] [27] [28] The application of the fourth factor focuses market for photographs like Goldsmith's – a market which primarily on whether the secondary use “usurps” the market Goldsmith has not even attempted to enter into with her Prince 15 or derivative markets for the original work. Cariou, 714 photographs. F.3d at 708. An accused infringer might “usurp[ ] the market for copyrighted works, including the derivative market, where [29] The evidence shows that the Prince Series works are not the infringer's target audience and the nature of the infringing market substitutes that have harmed – or have the potential to harm – Goldsmith. The final fair use factor accordingly favors content is the same as the original.” Id. at 709. Thus, at AWF. bottom, the fair use analysis “is concerned with only one type of economic injury to a copyright holder: the harm that results because the secondary use serves as a substitute for the * * * original work.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 99 (2d Cir. 2014). “The more transformative the secondary [30] The first, third, and fourth fair use factors favor AWF, use, the less likelihood that the secondary use substitutes for and the second factor is neutral. A holistic weighing of these factors points decidedly in favor of AWF. Therefore, the the original.” Castle Rock Entm't, 150 F.3d at 145; see Prince Series works are protected by fair use, and Goldsmith's Campbell, 510 U.S. at 591, 114 S.Ct. 1164. copyright infringement claim is dismissed. 16

8, 2019. Goldsmith may submit any objections or counter judgment by July 10, 2019.

CONCLUSION The Clerk is directed to close all pending motions.

The Court has considered all the arguments raised by the parties. To the extent not specifically addressed, the SO ORDERED. arguments are either moot or without merit. For the reasons explained above, AWF's motion for summary judgment is All Citations granted, and Goldsmith's motion for summary judgment is 382 F.Supp.3d 312, 2019 Copr.L.Dec. P 31,483 denied. Goldsmith's copyright infringement counterclaim is dismissed. AWF should submit a proposed judgment by July

Footnotes 1 The plaintiff seeks a declaratory judgment against both Lynn Goldsmith and Lynn Goldsmith Ltd., which is Lynn Goldsmith's photography agency. For ease of reference, the Court refers to both parties as “Goldsmith.” 2 The “probative similarity” inquiry and the subsequent “substantial similarity” inquiry are distinct. Thus, this Opinion uses the term “probative similarity” for the sake of clarity to refer to the test for copying that requires access and similarity

probative of copying. See Porto v. Guirgis, 659 F. Supp. 2d 597, 608 n.3 (S.D.N.Y. 2009).

3 See 17 U.S.C. § 106 (“[T]he owner of copyright under this title has the exclusive rights to reproduce the copyrighted work in copies ....”); Walker v. Univ. Books, Inc., 602 F.2d 859, 864 (9th Cir. 1979) (“[T]he fact that an allegedly infringing copy of a protected work may itself be only an inchoate representation of some final product to be marketed commercially does not in itself negate the possibility of infringement.”); 2 Nimmer on Copyright § 8.02[C] (2019) (“[R]eproduction standing alone constitutes a prima facie violation of the copyright owner's rights.”).

4 Goldsmith does not contend that the “discovery rule” set out in Psihoyos, 748 F.3d 120, saves this claim. 5 Indeed, Goldsmith pleads, “Plaintiff Goldsmith does not presently know if the Foundation has made additional unauthorized infringing uses of the Goldsmith Photo within the past three years, and reserves the right to amend this Counterclaim to add any such additional acts of infringement.” Am. Counterclaim ¶ 32 (emphasis added); see also Tr. at 41–42. 6 Other courts have considered whether a work infringed the copyright of a photograph upon which the work was based solely on fair use grounds. See, e.g., Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 757 (7th Cir. 2014); Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013).

7 Goldsmith points out that Cariou has been criticized for over-emphasizing transformative use. Goldsmith's Br. at

29. However, Cariou remains binding law in this Circuit, and indeed this Circuit has a long tradition of recognizing transformative use dating back to Judge Leval's landmark article, Toward A Fair Use Standard, 103 Harv. L. Rev. 1105

(1990), cited in Cariou. 8 At the argument of the current motions, counsel for Goldsmith suggested that the fair use test is “almost like you know it when you see it.” Tr. at 33. This calls to mind Justice Stewart's test for obscenity: “I know it when I see it.” Jacobellis v. Ohio, 378 U.S. 184, 197, 84 S.Ct. 1676, 12 L.Ed.2d 793 (1964) (Stewart J., concurring). If that were the test, it is plain that the Prince Series works are “Warhols,” and the Goldsmith Prince Photograph is not a “Warhol.” 9 See 4 Nimmer on Copyright § 13.05[A][2][b].

10 The court reached this result after expressly criticizing Cariou's approach to transformative use. 11 The court ultimately held that such “lazy appropriat[ion]” was “not enough to offset the fact that, by the time defendants were done, almost none of the copyrighted work remained.” Kienitz, 766 F.3d at 759–60.

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 15 Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 382 F.Supp.3d 312 (2019) 2019 Copr.L.Dec. P 31,483 12 Goldsmith's Br. at 35; see Goldsmith's Opp. at 23 (“Warhol could not have achieved the same effect by a random snapshot and certainly not without referencing the Goldsmith Photo, in contrast to the low resolution website-posted snapshot in

Kienitz.”). 13 The Court of Appeals determined that twenty-five artworks by the defendant were transformative and summary judgment should be granted on the basis of fair use. The Court of Appeals remanded for consideration by the District Court whether five works were protected by fair use because the changes from the original photographs were “relatively minimal.”

Cariou, 714 F. 3d at 711. 14 The two primary cases that Goldsmith relies upon to support her argument to the contrary are distinguishable. Both are unpublished decisions from the Central District of California involving a defendant's copying and then altering the plaintiff's photograph to create a new work based primarily on the original photograph. The court in each case found against the

defendant in its fair use analysis. In the first case, Friedman v. Guetta, the defendant admitted to making only “small alterations” to a digital copy of the plaintiff's photograph, and the defendant “[did] not offer[ ] a transformative alternative

use” of the photograph despite copying “the heart” of the photograph. No. CV10-14, 2011 WL 3510890, at *5–7

(C.D. Cal. May 27, 2011). And in the second case, Morris v. Guetta, it was “not apparent” that the defendants' works “add[ed] something new, ha[d] a further purpose or [were] of a different character due to a new expression, meaning, or

message.” No. CV12-684, 2013 WL 440127, at *8 (C.D. Cal. Feb. 4, 2013). The Morris court also weighed against the defendants the fact that they did not provide “a significant justification” for using the plaintiff's photograph in particular

for “effecting [their] vision.” Id. at *8–9. Warhol, on the other hand, made significant alterations to the Goldsmith Prince Photograph to create transformative works of a character that is different from the original.

15 Cf. Cariou, 714 F.3d at 709 (“[The defendant-artist's] audience is very different from [the plaintiff-photographer's], and there is no evidence that [the defendant's] work ever touched – much less usurped – either the primary or derivative market for [the plaintiff's] work. There is nothing in the record to suggest that [the plaintiff] would ever develop or license

secondary uses of his work in the vein of [the defendant's] artworks.”); Blanch, 467 F.3d at 258 (noting that the secondary work “had no deleterious effect upon the potential market for or value of the copyrighted work” where the plaintiff acknowledged that she had not published or licensed her photograph). Goldsmith points out that one collector who owned three of Warhol's works of art also bought a fine-art print of Prince from her. But as AWF persuasively argues, this does not suggest that the collector “bought the works for the same reason, perceives the works similarly, or believes the works are substitutes for each other (the fact that the collector owns both of them suggests the opposite).” AWF Opp. at 38. 16 The Court did not rely on the report of AWF expert Dr. Thomas Crow or on the declaration of AWF fact witness Neil Printz in reaching this conclusion. Therefore, the Court need not address Goldsmith's argument that these materials cannot be considered. AWF's argument that the Court should exclude the opinions of Jeffrey Sedlik, Goldsmith's expert on derivative markets for Goldsmith's works, also need not be addressed. The fourth fair use factor favors AWF even taking Sedlik's opinions into account.

Artistic Paternity: When and How Artists Can Disavow Their Work

By Daniel Grant • 07/28/16 10:17am

    

Sometimes you don’t want to be associated with your own work. Kevin Whipple

The Public Projects section of sculptor Elyn Zimmerman’s resume is lengthy and includes public art installations from 1982 through 2010. Two projects, however, aren’t on the list. One of those, from the mid-1980s, was for the plaza outside an office building in Bethesda, Md., involving large pieces of stone that channel water emanating from a fountain. “A contractor, looking at it, couldn’t figure out where the water would drain out, so he just drilled this big hole in the bottom,” Zimmerman https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 1/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer told the Observer. “I had a plan for how the water would drain and where it would go, but this contractor just made this big hole in my work, and there was nothing now I could do. I just said, ‘I can’t have my name on this,’” and walked away, leaving behind a decorative assembly of stones for which no credit was listed anywhere. As though the stones fell from the sky. If it looks like an Elyn Zimmerman, well, it isn’t… anymore.

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Most artists want their names and reputations to live on through their work. But from time to time, some will demand that the owner remove their names from the artwork they created when something happens that makes it less of a credit to their name and more of a liability. The artwork is “disclaimed,”

https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 2/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer “disavowed” but not destroyed—it becomes art without an artist.

It certainly isn’t just Elyn Zimmerman. Sculptor Athena Tacha had her name removed from a mid-1970s installation in Smithtown, N.Y., after town administrators stopped taking care of it (“the waterfall stopped running, the pool was a mess”) and made what they viewed as improvements, such as “planting a tree in the middle of it. It became totally unrecognizable to me,” she said. In the past three years, artist Cady Noland has disclaimed authorship of two of her artworks, a 1990 image printed onto an aluminum surface (Cowboys Milking) and a sculptural 1990 piece Log Cabin Blank with Screw Eyes and Café Door, both times claiming condition problems. Both disclaimers affected sales of the respective pieces and, as a result, triggered lawsuits. The lawsuit involving Cowboys Milking, which named Noland as a defendant, was dismissed by the courts, while the one for Log Cabin is ongoing.

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Demanding that their names be removed from artworks is one of the principal actions that artists may take when something happens (drilling a hole in it, planting a tree on it) or doesn’t happen (ordinary maintenance, such as rust removal) to these pieces that render them quite different than their original look and condition. Of course, the owners of the art may not be happy with such repudiation

A federal law, the Visual Artists Rights Act of 1990, or VARA, permits artists to disclaim authorship of their art if that artwork “has been distorted, mutilated, or modified so as to be prejudicial to the [artist’s] honor or reputation.” Certainly, it cannot be expected that art objects will look pristine indefinitely: Colors fade, metal rusts, organic materials decay. With regards to Cowboys Milking, the type of physical changes that took place in the work allegedly resulted from the https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 4/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer passage of time and inherent fragility of the materials used by the artist; the lawsuit against Noland by a dealer who had brought the work to Sotheby’s to sell was dismissed by the courts on other grounds. Log Cabin was in need of restoration before it was purchased in 2013 (it had been displayed for 10 years outside unprotected as the artist intended), and the German gallery that sold it to a Cleveland, Ohio-based art collector had brought in a conservator who replaced the cabin’s rotting wood without consulting the artist, leading the artist to declare that the entire piece was ruined and that her name could no longer be associated with it.

VARA exempts “the passage of time and inherent fragility of the materials,” as well as changes to the artwork as “the result of conservation,” when an artist looks to preemptively block changes that the artwork’s owner might make or to collect damages, unless the conservation is grossly negligent. The right to disclaim authorship, however, has fewer impediments.

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The audience for disclaiming authorship of an artwork is not just its current owner but future buyers who may be dissuaded from purchasing something that the artist claims has been distorted or mutilated. A successful artwork disclaimer would become part of the object’s provenance. VARA also gives artists a right to prevent some types of modifications to a work under limited circumstances, but that right is more narrowly drawn than the artist’s right to disclaim it once the damage is done. “Under VARA, an artist’s right to disclaim a work is a bit broader than his ability to prevent its modification or destruction,” said Kate Lucas, an attorney with Grossman LLP, a Manhattan law firm specializing in art law. “And it seems reasonable to give an artist more control over how his name is connected to a work, and less control over what the owner of an artwork can actually do with his or her own https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 6/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer property. In this regard, VARA is an attempt to strike a balance between private property rights of an owner and the less-tangible moral rights of an artist.”

There have been relatively few cases decided under VARA, and none of those have decided the contours of when an artist may disclaim authorship or what sort of changes in the artwork might trigger a disclaimer. The care and maintenance of artwork by its owner represents a gap in the law, or at least an area where the courts have not yet provided clarity through rulings. Many artists who are commissioned to create public works of art often seek to fill this gap through signed contracts specifying how and how often their creations are to be cared for. Sculptor Donald Lipski, for example, noted that his lawyer, art attorney Barbara Hoffman, has inserted clauses into these contracts that require the buyer “to provide reasonable maintenance of the Work in accordance with instructions to be provided by Artist on Final Acceptance” and that the buyer “agrees to consult with the Artist for any repairs or restoration of the Work and pay Artist a reasonable fee if Artist engages in conservation or repair service.” In one of these contracts with a municipality, the option of Lipski disclaiming authorship of the work, in https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 7/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer the event of poor or absent maintenance, is stated:

The City shall maintain the Artwork in accordance with the maintenance instructions provided by Artist. If the City fails to maintain the Artwork in accordance with the maintenance instructions provided by the Artist, the Artist may make a written request to the City that the Artwork no longer be represented as his work, then the Artwork shall no longer be so represented and the City shall remove all references to Artist on the Artwork or other items or documents under the City’s control.

Government agencies have a relatively good record in maintaining the condition of public artwork, according to Jean Efron, a Washington, D.C. art consultant who has arranged public and private art commissions for over 40 years. Local, state and federal governments have maintenance crews that inspect, clean and refer for restoration artworks that they have commissioned. If she learns of an artwork in need of cleaning or some other treatment—usually, “after the artist brings it to my attention”—Efron will “go look at the work and then talk https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 8/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer with the commissioning agency about what needs to be done.” More problematic are private building owners and developers who commission artists and then sell the property (including the artwork) to someone else. “That’s when I have less control. The commissioning agreement requires the buyer to perform certain tasks, but the new owner may well not be subject to a legal requirement to maintain the artwork.” In a few instances, she noted, artists have found that their creations were physically removed and presumably scrapped by a new owner. “It’s just gone.”

Artists sometimes do not want to be associated with their own work for other reasons than alterations made to it through time, neglect or poor conservation. In some cases, they have thrown unsuccessful works out only to find people going through their garbage to retrieve these pieces and put them on display. Robert Arneson (1930-92) discovered this when he taught at the University of California at Davis. Periodically, he had trouble with the glaze on one of his sculptures, taking the piece out of the kiln and breaking it on the floor, then putting it all in the school’s dumpster. “Students would go through the dumpster, picking out all of the pieces and gluing them back together,” said Sandra Shannonhouse, https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 9/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer administrator for the Arneson estate, “and then they’d keep them or sell them, mostly sell them. It irritated him, first, that students would retrieve things he thought were below his standards and, second, that they would rip him off.”

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The second life of thrown-away artwork is more likely to be the art market; pieces that an artist had discarded and presumably disavowed may generate high prices and (possibly) damage to his or her reputation. At least once, the matter has found its way into a court of law. Frank Stella, who had placed some damaged artwork outside for trash pick- up only to find the work placed on exhibition at a Manhattan art gallery several months later, sued for the return of his work. He won but had to purchase the work back.

Stella’s second try at getting rid of the piece was more successful. It usually https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 10/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer takes only one time to find a discarded work up for sale to make artists more careful about how they destroy items. For his part, Jamie Wyeth, who claims that he destroys “a third of what I do,” sometimes tearing artworks up into small pieces, although his method of choice is burning. “It’s an integral part of my work,” he added, “destroying unwanted art.” Sculpture foundries tend to be highly systematic about completely obliterating the molds used in producing bronzes. “We destroy the molds, and we photo-document the destruction,” said Eliot Gantz, the owner of a foundry in Farmingdale, New York, and Ranieri Sculpture Casting in Manhattan makes a point of cutting up the mold in small piece “in front of the artist,” according to foundry president Domenico Ranieri.

Other artists reject their early work for not reflecting their more mature aesthetic ideas, such as German artist Gerhard Richter who excluded his realistic, figurative paintings from the early to mid-1960s from his catalogue raisonné, and Pablo Picasso who tried to deny painting the 1902 or 1903 La Douleur, which depicts a nude woman with her head in a young man’s lap. Picasso later described the work as a “joke” among his friends. Artist Richard Prince produced paintings, drawings, collages and etchings in the 1970s before https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 11/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer he became, in the 1980s, a celebrated neo-conceptualist known for appropriating images from advertising and elsewhere. Prince claims to have destroyed 500 of these early works: “Just ripped them up,” he said in a 1988 Flash Art magazine interview. He “put them in garbage bags.” Why? “I didn’t like the work I did 10 or so years ago.”

He didn’t destroy everything, however. He couldn’t. A certain number of these pieces were sold during the 1970s, to corporations (Prudential Financial owns the largest single number of them), museums (the Brooklyn Museum, Walker Art Center and Worcester Art Museum, among others) and private individuals. Prince isn’t disclaiming these pieces (he acknowledges that he made them and cashed the checks he received for them) but is claiming that these early works no longer represent him. As the legal copyright holder for them, Prince https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 12/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer has refused to allow any of their images to be reproduced in books or catalogues.

The artist’s biography, posted on his Web site, lists no exhibitions prior to 1980, and the rest of the art world has followed his lead. Much of the remainder of the art world has followed suit. The Guggenheim Museum in New York, which organized a touring Richard Prince retrospective in 2007, also dated the artist’s career from 1980 in its discussion of the artist: “Since his first solo exhibition, at Artists Space in New York in 1980….” In this, the Guggenheim was following the lead of the Whitney Museum of American Art, which staged a retrospective of Prince in 1992 and did not include a single early work by the artist.

Like most of us, the artist Richard Prince wishes he hadn’t done certain things earlier in his life, but his actions—and those of Gerhard Richter and perhaps even Cady Noland—pose the difficult question: Can, or should, an artist define what is his or her career output? Or, when that career began. Are they the best judges of their own work? Readers of fiction are undoubtedly pleased that Franz Kafka’s friend Max Brod chose to ignore Kafka’s death-bed directive to destroy all his writings, instead giving the world a group of celebrated novels, https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 13/15 12/6/2019 Artistic Paternity: When and How Artists Can Disavow Their Work | | Observer short stories and the word “Kafkaesque.” Few artists and writers haven’t tossed out something and, sometimes, quite a lot; those works may be mistakes or, perhaps, the artist makes a mistake in discarding them. Who are we to judge? Or, are we the only judge?

Filed Under: Entertainment, Arts, Pablo Picasso, Richard Prince, Picasso, Gerhard Richter, Frank Stella, Cady Noland, VARA

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https://observer.com/2016/07/artistic-paternity-when-and-how-artists-can-disavow-their-work/ 15/15 12/6/2019 Botched Restoration of Jesus Fresco Miraculously Saves Spanish Town | artnet News

Art World (https://news.artnet.com/art-world) Botched Restoration of Jesus Fresco Miraculously Saves Spanish Town

Christie Chu (https://news.artnet.com/about/christie-chu-193), December 15, 2014

Elías García Martínez, Ecce Homo (1930), and Cecilia Giménez's infamous 2012 restoration attempt.

In 2012, Cecilia Giménez (http://news.artnet.com/in-brief/restorer-behind-beast-jesus-to-star-in-music-video-10349), an 82-year-old widow and amateur painter, attempted to restore Ecce Homo, an almost century-old fresco of Jesus crowned with thorns in her local church in Borja, Spain.

Despite a valiant effort, the tragically failed restoration went viral and Giménez’s attempt was met with mockery and scorn. Images of the botched fresco swirled around Twitter and Facebook, inspiring a slew of memes and parodies (http://www.20minutos.es/fotos/actualidad/las-mejores-parodias-del-ecce-homo-8815/?imagen=2) now found on the Internet.

ADVERTISING https://news.artnet.com/art-world/botched-restoration-of-jesus-fresco-miraculously-saves-spanish-town-197057 1/4 12/6/2019 Botched Restoration of Jesus Fresco Miraculously Saves Spanish Town | artnet News

inRead invented by Teads

But, two years later, the village has reassessed their attitudes and turned their ridicule into gratitude, reports the New York Times (http://www.nytimes.com/2014/12/15/world/a-town-if-not-a-painting-is-restored.html?_r=0). The viral images and memes gifted the rural town with free publicity—150,000 tourists from all over the world came to see Giménez’s artistic endeavor and visit the sanctuary overlooking Borja.

“Why are people coming to see it if it is such a terrible work of art?” asked Andrew Flack, an opera librettist who traveled to Borja for research on a new production. “It’s a pilgrimage of sorts, driven by the media into a phenomenon. God works in mysterious ways. Your disaster could be my miracle.”

A much-needed bolstering to the sleepy local economy ensued with restaurants opening and local and neighboring museums reporting the highest rates of visitation from the spill-over of tourists.

“The impact of Ecce Homo has been really great for businesses,” said Mr. Baya, a restaurateur who has done well enough to open a second restaurant. “Sadly, everyone heads to look at a painting that, frankly, is ugly.”

However “ugly” the fresco may be, Ecce Homo is stamped on the town’s lottery tickets and nearby vineyards are fighting over the right to use the image on wine labels. It’s even gotten plum positioning in a Spanish film in which thieves attempt to steal it.

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https://news.artnet.com/art-world/botched-restoration-of-jesus-fresco-miraculously-saves-spanish-town-197057 4/4 12/6/2019 Clash Over Restoration of Leonardo’s ‘Virgin and Child’ - The New York Times

ART & DESIGN Leonardo Painting’s Restoration Bitterly Divides Art Experts

By ELAINE SCIOLINO JAN. 3, 2012 PARIS — Leonardo da Vinci’s “Virgin and Child With Saint Anne” does not enjoy the same star status as his Mona Lisa. But for the Louvre, it is an equally treasured masterpiece.

Now a battle is raging over the painting’s restoration, pitting the museum and some experts who defend the project against others who believe the cleaning of the 500-year-old canvas has been too aggressive and may already have caused irreversible damage.

Two of France’s leading art experts have resigned from the advisory committee supervising the painting’s restoration to protest the way it has been conducted, according to art specialists have spoken to them.

Neither of the two experts, Ségolène Bergeon Langle, the former director of conservation for the Louvre and France’s national museums, nor Jean-Pierre Cuzin, the former director of paintings at the Louvre, has publicly disclosed the precise reasons behind the resignations; the Louvre has not commented except to confirm their departures.

“At every step along the way I prepared detailed reports in writing to the Louvre to explain my views, my wishes, my concerns” regarding the restoration of the Leonardo, Ms. Bergeon Langle said in a telephone interview. “I took the position for a long time that I would leave if certain red lines were crossed.”

https://www.nytimes.com/2012/01/04/arts/design/clash-over-restoration-of-leonardos-virgin-and-child.html 1/5 12/6/2019 Clash Over Restoration of Leonardo’s ‘Virgin and Child’ - The New York Times

Mr. Cuzin, meanwhile, was widely said to be unhappy that more rather than less work was done on the painting.

The cleaning of the painting was completed in mid-December, leaving a brighter, crowd-pleasing image. The resignations, particularly that of Ms. Bergeon Langle, who is regarded as one of the world’s leading experts in painting conservation, have rattled the Louvre and trained the spotlight on the work of its obscure committee of restoration advisers.

“Their departure is an extremely regrettable loss,” said Jacques Franck, consulting expert to the Armand Hammer Center for Leonardo Studies at the University of California, Los Angeles, and a member of the advisory committee. “Bergeon Langle has always been considered a goddess in the field. There is no better expert than she. She is irreplaceable.”

It is common for experts to disagree over how far to go in restoring important masterpieces. The restoration of Michelangelo’s Sistine Chapel in the 1990s, for example, was criticized by many art experts who argued that much of his original work was lost in the removal of grime and candle smoke.

But the disagreements over the Leonardo restoration are unusual in that it comes from within the Louvre’s advisory body, a group of 20 experts without decision-making power but with global reputations.

“There is no unique truth, but it is fair to say that we haven’t shared the same views about what should and should not be suppressed, the degree of cleaning,” said Mr. Franck, who has written extensively about Leonardo’s painting techniques. “I would have felt quite happy and at ease with a dirtier picture — without bright hues.”

Museums like the Louvre are under pressure to attract audiences with blockbuster shows, often including showy masterpieces whose colors brighten up after thorough cleanings.

The Leonardo painting was acquired by Francis I of France in 1517 and is regarded as perhaps second only to the Mona Lisa among Leonardo’s later works. It

https://www.nytimes.com/2012/01/04/arts/design/clash-over-restoration-of-leonardos-virgin-and-child.html 2/5 12/6/2019 Clash Over Restoration of Leonardo’s ‘Virgin and Child’ - The New York Times

is scheduled to go on display in an exhibition at the museum in March, so there is a rush to finish the restoration work.

A negative perception of the restoration of one of the most complex paintings by Leonardo could damage the museum’s reputation as a prudent, nonintrusive restorer.

Among other issues there were disagreements within the committee over whether a varnish on the painting was a glaze applied by Leonardo himself, something left by later restorers, or a combination of the two.

On Tuesday the advisory committee and Vincent Pomarède, the director of painting and the ultimate decision maker regarding the restoration, met for several hours with the technical team to view the painting and discuss what is left to be done.

The cleaning completed, it was decided to proceed with a minor repainting job to fill in gaps, the results of which will be presented to the committee in several weeks.

Mr. Pomarède, meanwhile, decided to keep trees painted in the landscape by someone other than Leonardo, said a member of the committee who declined to be named because of confidentiality rules.

The cleaning has a long history. The Louvre abandoned an earlier cleaning attempt in 1993 because of concerns that solvents could damage its “sfumato,” an extraordinarily delicate blending technique that was Leonardo’s trademark.

The current effort began in 2010 after a long period of study. The initial thinking was to take a minimalist approach and do little more than remove stains on the painting.

But under the supervision of Cinzia Pasquali, a conservator who works for the Center for Research and Restoration of the Museums of France, the restoration became more ambitious. The Louvre hierarchy and the majority of the advisory committee also favored a thorough restoration.

https://www.nytimes.com/2012/01/04/arts/design/clash-over-restoration-of-leonardos-virgin-and-child.html 3/5 12/6/2019 Clash Over Restoration of Leonardo’s ‘Virgin and Child’ - The New York Times

Le Journal des Arts, a Paris art publication, has repeatedly criticized the project, arguing that it has been more aggressive than initially conceived and risks doing major damage to the painting. News of the resignations from the advisory committee — Ms. Bergeon Langle on Dec. 21, Mr. Cuzin in October — was first reported in this journal late last month.

The Louvre has staunchly defended its approach. “The recent cleaning was     absolutely necessary for both conservation and aesthetical reasons,” Mr. Pomarède said in an e-mail. He added that no member of the committee “has ever said that the cleaning was not prudent and had gone too far technically. It was mostly an aesthetical choice that was discussed.”

He added that all “are satisfied with the result of the cleaning and the beginning of retouching, although some of them would like to see certain small ‘overpaints’ removed.”

He called the two resignations “of course a loss for the diversity of the discussions in the committee,” but declined comment on their reasons for resigning.

In a written rebuttal in October to criticism by the Le Journal des Arts, Mr. Pomarède accused it of “total ignorance” of painting restoration, adding, “Rarely has a restoration been as well prepared, discussed and executed.” The results of cleaning “reveal the excellent state of conservation of the pictorial material and the artistic genius of Leonardo da Vinci, comforting us in the choices made,” he said.

Mr. Pomarède also dismissed reports of disagreements calling it “perfectly normal that a restoration of such a famous work leads to interrogations and discussions.”

But some experts will never abandon the less-is-more standard. “There is an ethical component,” Ms. Bergeon Langle said. “Despite great progress in our competence we need to be driven by modesty. Better and more controllable materials are yet to be discovered. We need to leave some work for future generations.”

A version of this article appears in print on January 4, 2012, on Page C1 of the New York edition with the headline: Leonardo Painting’s Restoration Bitterly Divides Art Experts.

https://www.nytimes.com/2012/01/04/arts/design/clash-over-restoration-of-leonardos-virgin-and-child.html 4/5 12/6/2019 Clash Over Restoration of Leonardo’s ‘Virgin and Child’ - The New York Times

   

https://www.nytimes.com/2012/01/04/arts/design/clash-over-restoration-of-leonardos-virgin-and-child.html 5/5 Fletcher v. Doig, 125 F.Supp.3d 697 (2014)

Agents, Representatives, and Other Third Parties KeyCite Yellow Flag - Negative Treatment The acts of an agent may be considered to be Distinguished by United Airlines, Inc. v. Zaman, N.D.Ill., April 30, 2015 acts of the principal for purposes of determining 125 F.Supp.3d 697 personal jurisdiction over principal. United States District Court, N.D. Illinois, Eastern Division. 2 Cases that cite this headnote Robert FLETCHER and Bartlow Gallery Ltd., Plaintiffs, [2] Constitutional Law v. Non-residents in general Peter DOIG, Gordon Veneklasen, Federal Courts Matthew S. Dontzin, and The Actions by or Against Nonresidents; Dontzin Law Firm LLP, Defendants. "Long-Arm" Jurisdiction Federal Courts 13 C 3270 Personal jurisdiction | A federal court's exercise of jurisdiction over Signed September 30, 2014 A nonresident defendant must be authorized Synopsis by the terms of the forum state's personal Background: Owner of artwork filed suit against purported jurisdiction statute and also must comport with artist, art dealer, and artist's attorney, alleging tortious the requirements of the Fourteenth Amendment's interference with prospective economic advantage and Due Process Clause. U.S. Const. Amend. 14. seeking declaration as to authorship of his artwork. Defendants moved to dismiss. [3] Federal Courts Presumptions and burden of proof

Holdings: The District Court, Gary Feinerman, J., held that: Plaintiff bears burden of establishing personal jurisdiction when defendant challenges it. [1] artist purposefully directed conduct at Illinois;

[2] Illinois court's exercise of personal jurisdiction over [4] Federal Courts nonresident artist would not offend traditional notions of fair Weight and sufficiency play and substantial justice; When a district court rules on a defendant's motion to dismiss based on the submission of [3] plaintiff's choice of forum would not be disturbed; and written materials without holding an evidentiary hearing, plaintiff need only make out a prima [4] fiduciary shield doctrine prevented court's exercise of facie case of personal jurisdiction. Fed. R. Civ. personal jurisdiction over artist's art dealer and his attorney. P. 12(b)(2).

Motion granted in part. [5] Constitutional Law Non-residents in general Procedural Posture(s): Motion to Dismiss. Under Fourteenth Amendment's due process clause, a defendant is subject to personal West Headnotes (31) jurisdiction in a particular state only if the defendant had certain minimum contacts with it such that the maintenance of the suit does [1] Federal Courts

not offend traditional notions of fair play and substantial justice. U.S. Const. Amend. 14. [10] Constitutional Law Non-residents in general [6] Federal Courts The exercise of specific jurisdiction over Purpose, intent, and foreseeability; a nonresident must comport with traditional purposeful availment notions of fair play and substantial justice. U.S. To be subject to personal jurisdiction in Const. Amend. 14. a particular state, a non-resident defendant's contacts must not be merely random, fortuitous, or attenuated; rather, the defendant's conduct and [11] Constitutional Law connection with the forum state must be such that Non-residents in general it should reasonably anticipate being haled into Three requirements for determining whether court there. U.S. Const. Amend. 14. conduct was purposefully directed at forum state, so as to satisfy due process for the exercise of specific personal jurisdiction are: (1) intentional [7] Federal Courts conduct, or intentional and allegedly tortious Related contacts and activities; specific conduct; (2) expressly aimed at the forum state; jurisdiction (3) with defendant's knowledge that the effects When determining whether specific personal would be felt, that is, the plaintiff would be jurisdiction is present, the relevant contacts are injured, in the forum state. U.S. Const. Amend. those that center on the relations among the 14. defendant, the forum, and the litigation; the mere fact that defendant's conduct affected plaintiffs with connections to the forum state does not [12] Constitutional Law suffice to authorize jurisdiction. Non-residents in general

1 Cases that cite this headnote When a plaintiff's claim is for an intentional tort, the analysis of whether due process has been satisfied for the exercise of specific personal [8] Federal Courts jurisdiction focuses on whether the conduct Related contacts and activities; specific underlying the claim was purposely directed at jurisdiction the forum state. U.S. Const. Amend. 14. When determining whether specific personal jurisdiction is present, the relation between defendant and the forum must arise out of [13] Federal Courts contacts that defendant himself creates with the Particular Entities, Contexts, and Causes of forum. Action Artist, a resident of Trinidad and Tobago, purposefully directed his conduct at Illinois, for [9] Federal Courts purposes of Illinois court's exercise of specific Related contacts and activities; specific personal jurisdiction over him in suit brought by jurisdiction owner of artwork allegedly painted by the artist Specific personal jurisdiction is appropriate claiming tortious interference with prospective where: (1) defendant has purposefully directed economic advantage, where artist's agent sent a his activities at the forum state or purposefully letter to an Illinois auction house disclaiming availed himself of the privilege of conducting his authorship of the owner's painting, which business in that state, and (2) the alleged injury then resulted in cancellation of a planned artwork arises out of defendant's forum-related activities.

auction and owner's loss of an allegedly lucrative opportunity. U.S. Const. Amend. 14. [17] Federal Courts 1 Cases that cite this headnote Availability and adequacy Federal court has discretion to dismiss a [14] Constitutional Law case on the ground of forum non conveniens Non-residents in general when an alternative forum has jurisdiction In determining whether the exercise of personal to hear the case, and trial in the chosen jurisdiction over a nonresident defendant would forum would establish oppressiveness and comport with fair play and substantial justice, vexation to defendant out of all proportion to court considers: (1) burden on defendant; (2) plaintiff's convenience, or the chosen forum forum state's interest in adjudicating the dispute; is inappropriate because of considerations (3) plaintiff's interest in obtaining convenient and affecting the court's own administrative and legal effective relief; (4) the interstate judicial system's problems. interest in obtaining the most efficient resolution of controversies; and (5) the shared interest of the several States in furthering fundamental [18] Federal Courts substantive social policies. U. S. Const. Amend. Availability and adequacy 14. A threshold requirement for any forum non conveniens dismissal is the existence of an alternative forum that is both available and [15] Constitutional Law adequate. Particular Parties or Circumstances Federal Courts Particular Entities, Contexts, and Causes of [19] Federal Courts Action Public and private interests; balancing Illinois federal court's exercise of personal interests jurisdiction over artist, a resident of Trinidad and If an adequate alternative forum exists, district Tobago, in tortious interference suit brought by court should consider whether a forum non owner of artwork allegedly painted by the artist, conveniens dismissal would serve the private would not offend traditional notions of fair play interests of the parties and the public interests of and substantial justice; Illinois had interest in the alternative forums. providing a forum for Illinois art gallery to seek redress for economic loss as a result of alleged tortious interference, although records relevant [20] Federal Courts to resolving case were located in Canada, Illinois Public and private interests; balancing court could obtain copies as easily as any other interests state, and suit likely involved application of The private interest factors that court may Illinois substantive law. U.S. Const. Amend. 14. consider in determining application of doctrine of forum non conveniens include: (1) the relative ease of access to sources of proof; [16] Federal Courts (2) availability of compulsory process for Forum Non Conveniens attendance of unwilling, and the cost of obtaining The common law doctrine of “forum non attendance of willing, witnesses; (3) possibility conveniens” allows a federal district court to of view of premises, if view would be appropriate dismiss a suit over which it would normally to the action; and (4) all other practical problems have jurisdiction in order to best serve the that make trial of a case easy, expeditious and convenience of the parties and the ends of justice. inexpensive.

[25] Federal Courts Public and private interests; balancing [21] Federal Courts interests Public and private interests; balancing interests Under forum non conveniens analysis, Illinois plaintiff's choice of Illinois forum to resolve The public interest factors that court may tortious interference suit involving sale of consider in determining application of doctrine artwork would not be disturbed, despite of forum non conveniens include: (1) defendant's claim that Ontario, Canada, was an administrative difficulties stemming from court adequate alternative forum, since, on balance, congestion; (2) local interest in having localized private and public interest factors were neutral; disputes decided at home; (3) the interest in although some records concerning one defendant having the trial of a diversity case in a forum were located in Canada, it would be relatively that is at home with the law that must govern the easy for parties to obtain them in the United action; (4) avoidance of unnecessary problems in States, non-party witnesses were located both conflicts of laws or in the application of foreign in Idaho and in Canada, and both could be law; and (5) the unfairness of burdening citizens compelled to give video depositions via the in an unrelated forum with jury duty. letters rogatory process, it would be only slightly more expensive to obtain the attendance of willing witnesses if the case were dismissed and [22] Federal Courts refiled in Ontario, and both Illinois and Canada Presumptions and burden of proof had an interest in resolving the dispute locally, A defendant invoking forum non conveniens since co-plaintiff was a resident of Ontario. ordinarily bears a heavy burden in opposing plaintiff's chosen forum. [26] Federal Courts Fiduciary duties in general; fiduciary shield [23] Federal Courts The “fiduciary shield doctrine” denies personal Presumptions and burden of proof jurisdiction over an individual whose presence Under forum non conveniens analysis, there is and activity in the state in which the suit is a presumption in favor of allowing a plaintiff brought were solely on behalf of his employer or his choice of courts rather than insisting that he other principal. choose the optimal forum, and a case should not be lightly shifted from one court to another, 1 Cases that cite this headnote forcing the plaintiff to start over. [27] Courts Fiduciary duties in general; fiduciary shield [24] Federal Courts Illinois recognizes the fiduciary shield doctrine, Parties' choice of forum; forum-shopping which denies personal jurisdiction over an Federal Courts individual whose presence and activity in the Presumptions and burden of proof state were solely on behalf of his employer or For purposes of forum non conveniens analysis, other principal. when a plaintiff's choice is not its home forum, presumption in favor of allowing plaintiff his choice of courts applies with less force, for the [28] Constitutional Law assumption that the chosen forum is appropriate Non-residents in general is in such cases less reasonable. Since the fiduciary shield doctrine, which denies personal jurisdiction over an individual whose

presence and activity in the state in which the and attorney had delivered messages on behalf of suit is brought were solely on behalf of his the artist to an Illinois art gallery and an Illinois employer or other principal, is a question of state art auctioneer disclaiming the artist's authorship law rather than due process, even though federal of plaintiff's painting, and although each had due process would permit a court's exercise discretion over precisely how they delivered of personal jurisdiction over a defendant, the the messages that ultimately provided the basis fiduciary shield doctrine may preclude it. U.S. for the tortious interference suit, the underlying Const. Amend. 14. message delivered was that of the artist's alone.

1 Cases that cite this headnote

[29] Courts Fiduciary duties in general; fiduciary shield Attorneys and Law Firms

Under Illinois' fiduciary shield doctrine, which *701 William Frederick Zieske, Zieske Law, Crystal Lake, denies personal jurisdiction over an individual IL, for Plaintiff. whose presence and activity in the state were solely on behalf of his employer or other Suyash Agrawal, Agrawal Evans LLP, Chicago, IL, for principal, the shield is withdrawn if the agent was Defendant. acting also or instead on his own behalf to serve his personal interests. MEMORANDUM OPINION AND ORDER 2 Cases that cite this headnote Gary Feinerman, United States District Judge [30] Courts Robert Fletcher and Bartlow Gallery Ltd. brought this Fiduciary duties in general; fiduciary shield diversity suit against Matthew S. Dontzin and The Dontzin The central issue under Illinois' fiduciary shield Law Firm LLP (together, “Dontzin Defendants”), Gordon doctrine, which denies personal jurisdiction over VeneKlasen, and Peter Doig, seeking damages for their an individual whose presence and activity in the alleged tortious interference with Plaintiffs' prospective state were solely on behalf of his employer or economic advantage by taking action that scuttled the other principal, is whether agent's conduct in auction of a painting owned by Fletcher, and also seeking Illinois was a product of, and was motivated by, a declaration that Doig painted the painting. Doc. 1. his employment situation and not his personal VeneKlasen and the Dontzin Defendants have separately interests. moved to dismiss the complaint under Federal Rules of Civil Procedure 12(b)(2) and 12(b)(6). Docs. 22, 26. Doig has 2 Cases that cite this headnote moved to dismiss under Rule 12(b)(2) or, in the alternative, on the basis of forum non conveniens in favor of a court [31] Federal Courts in Ontario, Canada. Doc. 34. The court grants the Dontzin Tortious or intentional conduct; fraud and Defendants' and VeneKlasen's motions, dismissing the claims breach of fiduciary duties against them for lack of personal jurisdiction, and denies Under Illinois law, fiduciary shield doctrine Doig's motion. prevented court's exercise of personal jurisdiction over New York art dealer and attorney who represented artist from Background Trinidad and Tobago in Illinois suit alleging tortious interference with prospective economic Because Doig has moved to dismiss only under Rule advantage, since their activity in the state was 12(b)(2) and forum non conveniens, and because the court solely on behalf of their principal, rather than is dismissing the Dontzin Defendants and VeneKlasen their personal interests; although both art dealer under Rule 12(b)(2) without reaching their Rule 12(b)(6)

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 5 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) arguments, the relevant background includes not only the 2–3. Doig is represented professionally by VeneKlasen, an art complaint, but also the evidentiary materials submitted by dealer with the Michael Werner Gallery in New York City. both sides. No party has requested an evidentiary hearing, so Doc. 1 at ¶ 5; Doc. 34–2 at ¶ 7. the court must accept Plaintiffs' undisputed factual averments and must resolve all genuine factual disputes in Plaintiffs' Fletcher maintains that he met Doig in 1975 or 1976 while taking college classes at Lakehead University in Thunder Bay, favor. See uBID, Inc. v. GoDaddy Grp., Inc., 623 F.3d 421, Ontario. Doc. 1 at ¶¶ 20–21. Fletcher was employed at the 423–24 (7th Cir.2010); Purdue Research Found. v. Sanofi– time as a correctional officer at Thunder Bay Correctional Synthelabo, S.A., 338 F.3d 773, 782–83 (7th Cir.2003); Center. Id. at ¶ 19. Fletcher claims that he met a fellow Diamond Mortg. Corp. of Ill. v. Sugar, 913 F.2d 1233, 1245 student at Lakeland who used the name “Pete Doige,” who was seventeen years old, and who said that he was born in (7th Cir.1990); Saylor v. Dyniewski, 836 F.2d 341, 342 (7th Scotland. Id. at ¶ 21. Fletcher believes that this individual was Cir.1988). Doig; for the sake of clarity, the seventeen year-old fellow will be referred to as “Doige,” with the court of course taking Fletcher lives in Sault Ste. Marie, Ontario, Canada, and is a no position on the *703 correctness of Fletcher's belief that citizen of Canada, though he spends almost half his time in Doige and Doig are the same person. the United States. Doc. 1 at ¶ 2; Doc. 48–2 *702 at ¶¶ 1, 3–4. Fletcher's girlfriend, eldest son, and parents live in Michigan, According to Fletcher, Doige dropped out of Lakeland his sister lives in Indiana, and his brother lives in a Chicago after being sentenced to five months in the Thunder Bay suburb. Doc. 48–2 at ¶¶ 3, 5–7. Fletcher owns an untitled Correctional Center for LSD possession. Id. at ¶¶ 22–23. acrylic painting on linen signed “1976 Pete Doige,” which While incarcerated, Doige became involved in the prison's art depicts a desert scene with a pond (“the Work”). Doc. 1 at ¶¶ program, where he painted the Work. Id. at ¶ 24. Fletcher, who 1, 8. Here is a reproduction of the Work: recognized Doige in the prison's admitting room, observed the Work in its various stages of completion. Id. at ¶¶ 22, 23. With Fletcher's assistance, Doige applied for and was granted parole, and Fletcher was assigned as his parole officer. Id. at ¶ 25. Fletcher helped Doige obtain employment with the Seafarers Union in Thunder Bay. Id. at ¶ 27. And Fletcher encouraged Doige to keep pursuing art, and accepted Doige's offer to sell the completed Work to him for $100. Id. at ¶ 28.

Decades later, Fletcher came to believe that the Work was by Doig. Id. at ¶ 31. Fletcher consigned the Work to Bartlow Gallery, an art dealer in Chicago, and granted the gallery the exclusive right to market and sell the Work in exchange for a percentage of the proceeds. Id. at ¶ 9. The gallery is storing the Work in Chicago on Fletcher's behalf. Id. at ¶ 8. Peter Bartlow, the owner of Bartlow Gallery, conducted further research into the Work, and noted the following aspects of Doc. 22–3 at 6. Doig's history that parallel Fletcher's recollection of Doige: As described in detail below, Fletcher believes that Doig Doig has publicly stated that he was born in the late 1950s authored the Work in the mid-1970s. Doig is a renowned artist in Scotland, that he emigrated to Canada as a young child, whose painting, White Canoe, sold at Sotheby's for a record- that he used LSD until he was nineteen years old, and that he breaking $11.3 million in 2007, and who recently sold another was a “roustabout” in his late teens in western Canada before painting, The Architect's House in the Ravine, for $12 million. enrolling in art school in England in 1979. Id. at ¶ 32. Bartlow Doc. 1 at ¶ 50. Doig has submitted an affidavit averring that he also believes the Work shares “uncanny commonalities in was born in 1959, that he lived in Canada from approximately composition and execution with known works by Doig.” Ibid. 1966 to 1979, that he has resided in Trinidad since 2002, and that he is a citizen of Trinidad and Tobago. Doc. 34–2 at ¶¶

On September 23, 2011, Bartlow sent an email inquiry to an be of someone named Noige, or Norge, but is definitely address he believed to be Doig's, stating: “If you are Peter not the signature of Peter Doig. Doig please get in touch with Bob Fletcher from Thunder Bay. He has a painting of yours and might want to sell it In response to Mr. VeneKlasen's email, you threatened to but needs guidance on how to proceed.... Your privacy is of extort Mr. VeneKlasen and Mr. Doig unless they provide utmost concern, and we could use a little help.” Id. at ¶¶ you with “concrete evidence” concerning the painting's 17, 33. Bartlow also contacted VeneKlasen, Doig's art dealer, authenticity. In your October 1, 2011 e-mail, for example, by phone. Id. at ¶ 34. Bartlow followed up with an email you stated that “Mr. Fletcher is only interested in receiving to VeneKlasen with further details about Fletcher's (alleged) a fair price for the painting, and does not wish to bring up acquaintance with Doig in Thunder Bay and the (alleged) anything which Mr. Doig would wish to remain private.” resemblance of the Work to Doig's known paintings. Id. at ¶ Similarly, on October 7, you accused Mr. Doig of having 35. “used illegal drugs until 1978” and threatened that “[a] drug record makes things difficult” because “[a] person On October 3, 2011, VeneKlasen, acting on Doig's behalf, who enters the U.S. after denying a drug conviction faces emailed Bartlow denying that Doig knew Fletcher or had ever serious repercussions.” You also accused Mr. Doig of been to Thunder Bay, and stating that the Work “is absolutely having “fabricated elaborate records to gain admission to not by Peter Doig.” Ibid. VeneKlasen added: “Whatever art school.” [Fletcher] alleges is untrue. The painting is NOT by Peter Your unfounded accusations and attempts to extort Doig. Anyone can see that. We are not interested in any further money or promises from Mr. VeneKlasen unless he communication related to this. Good luck in finding the real authenticates Mr. Fletcher's painting are potentially artist for this. Any attempt to attribute this painting to Peter criminal. Accordingly, we demand that you cease and desist Doig in any way will be dealt with by our attorneys.” Id. at ¶ from all communications with Mr. VeneKlasen, Mr. Doig, 36. The same day, VeneKlasen wrote this in a separate email or anyone else at the Michael Werner Gallery. If you fail to to Bartlow: “Further, Doig was 16 at the time and enrolled do so, we will take whatever action we deem necessary to first in Jarvis collegiate institute then SEED school. Both in preserve their rights, including, without limitation, seeking [T]oronto. [H]opefully this will end surreal enquiry.” Doc. the protection of the prosecutor's office and filing suit 22–4 at 6. Bartlow wrote back to VeneKlasen stating that he against you. would end his inquiries if Doig could provide information disproving his authorship of the Work. Doc. 1 at ¶ 37. Id. at ¶ 15; Doc. 1–3 at 1–2.

Doig and VeneKlasen are represented legally by The Dontzin On or about May 17, 2012, Leslie Hindman Auctioneers, Law Firm LLP, a New York-based law firm, and Dontzin, Inc., a leading auction house based in Chicago, expressed to an attorney and owner of the firm. Id. at ¶¶ 1, 6, 15–16. On Plaintiffs an interest in auctioning the Work. Doc. 1 at ¶¶ 11, October 12, 2011, the *704 Dontzin Defendants sent this 39. Plaintiffs believe the Work could sell for more than $1 letter to Bartlow, cc'ing VeneKlasen and Doig: million and possibly more than $10 million if auctioned as a Doig painting. Id. at ¶ 60. We write on behalf of Gordon VeneKlasen, who forwarded us your recent e-mails demanding ‘either fair value’ or Dontzin avers that Leslie Hindman stated in a mid-May 2012 ‘an endorsement of authenticity’ concerning a painting that call to the Michael Werner Gallery that a Chicago dealer your client, Robert Fletcher, claims to have purchased form (presumably Bartlow Gallery) had offered the Work to her. Peter Doig in 1976.... [A]s Mr. VeneKlasen informed you Doc. 22–2 at ¶ 13. The Michael Werner Gallery referred the by e-mail on October 3, 2011, after having consulted with matter to the Dontzin Defendants, who responded on behalf of Mr. Doig, “this work is absolutely not by Peter Doig.” Doig and the Michael Werner Gallery in a letter to Hindman [Quoting VeneKlasen's October 3 email:] Not only does on May 16, 2012 (the “Dontzin–Hindman letter”). Id. at ¶ 14. Mr. Doig not know the owner of this work, he has never The letter, which cc'ed VeneKlasen and Doig, stated: been to the place it is supposedly painted. Additionally, We represent the Michael Werner Gallery (the “Gallery”). he did not even begin to paint on canvas until late 1979, We understand that you have contacted Justine Birbil of the well after this work was made. The signature seems to Gallery to inquire about a purported painting on canvas by

Peter Doig (the “Painting”), which was offered to you by August 26, 2013, he met with Marilyn Doige Bovard, the a dealer in Chicago. As Ms. Birbil explained to you, the sister of a man named Peter Edward Doige (who will be Painting is absolutely not by Mr. Doig, as Mr. Doig himself referred to by his full name), who was born in April 1955 has confirmed. and who died in February 2012 in Alberta, Canada. Doc. 34– 4 at ¶ 5. Bovard resides in Hinton, Alberta. Ibid. She signed We understand that you have been advised by the dealer an affidavit averring that her brother, a carpenter by trade, that the Painting *705 is owned by Robert William attended Lakehead University and served a jail sentence at Fletcher, who was allegedly given the Painting by Mr. Thunder Bay Correctional Center in the 1970s. Doc. 34–5 at Doig in 1976. As the Gallery explained to Peter Bartlow, 4–5. Bovard showed Agrawal her brother's original Lakehead a dealer in Chicago who approached the Gallery about the University student identification card from 1976. Doc. 34– Painting last year, Mr. Doig does not know Mr. Fletcher 4 at ¶ 6; Doc. 34–6 at 1. Bovard avers that she “recall[ed] and certainly never gave him any paintings. In addition, as Peter telling [her] that, while he was an inmate at Thunder the Gallery advised Mr. Bartlow, Mr. Doig did not begin Bay, he took painting and music classes,” and also that he “did to paint on canvas until late 1979, well after the Painting music and art” throughout his life. Doc. 34–5 at 4–5. Bovard was allegedly created. Finally, the signature on the Painting further avers that she has some of her brother's other paintings, appears to be of someone named Noige, or Norge, but is including an acrylic painting of a desert scene. Id. at 5. definitely not the signature of Peter Doig. William Zieske, counsel for Plaintiffs, has submitted an Under the circumstances, the Gallery will have no choice affidavit averring that he spoke with Gwendolyn Woolwine, but to take legal action if the Painting is auctioned or the mother of Peter Edward Doige and Bovard. Doc. 48–3 otherwise sold as a work by Mr. Doig. at ¶ 12. Woolwine lives in Challis, Idaho. Id. at ¶ 17. On Doc. 22–5 at 2–3. Doig avers that the Dontzin Defendants September 2, 2013, Woolwine told Zieske that she believed and VeneKlasen “acted with [his] authority to protect [his] that her son had been incarcerated in Florida, not in Canada; right and interest in not having a piece of art that [he] did that he grew up in the Atlantic provinces of Canada and did not create attributed to [him],” and that, “though [he] was not spend time in Ontario or Thunder *706 Bay; that he not personally involved in every detail, [he] agree[s] with painted very little; and that he never attended college. Id. at what [Defendants] ... communicated to Mr. Bartlow and Ms. ¶ 13. Hindman.” Doc. 34–2 at ¶¶ 18, 20. As a result of receiving this letter, Hindman Auctioneers decided not to auction the Work. Doc. 1 at ¶ 4 1. Discussion

Plaintiffs then filed this suit against Doig, VeneKlasen, I. Doig's Motion to Dismiss and the Dontzin Defendants. Doc. 1. Count I alleges that “Defendants, by the action of Dontzin, acting as agent A. Rule 12(b)(2) for Dontzin Firm, Doig and VeneKlasen, interfered with [1] Doig contends that he is not subject to personal Plaintiffs['] prospective economic advantage by writing to jurisdiction in Illinois because he “had zero contacts with Leslie Hindman Auctioneers, Inc. in or about May, 2012,” anyone in Illinois” and “Plaintiffs cannot point to any contact “with the knowledge of the falsity of the assertions in the that Doig directly made with anyone in this forum.” Doc. letter ..., and with the intention to stop Leslie Hindman 34–1 at 13 (emphasis added). That argument is without Auctioneers ... from auctioning the Work on behalf of merit. Because “the acts of an agent may be considered plaintiffs.” Id. at ¶¶ 55–56. Count II seeks a declaratory to be acts of the principal” in determining the principal's judgment “[d]eclaring the right of plaintiffs, and any agents contacts with Illinois, Stein v. Rio Parismina Lodge, 296 of either of the plaintiffs, to attribute the Work to Peter Doig, Ill.App.3d 520, 231 Ill.Dec. 1, 695 N.E.2d 518, 522 (1998), including such attribution in relation to a private or auction the Dontzin Defendants' and VeneKlasen's contacts with sale of the Work, without interference by defendants and/or Illinois are imputed to Doig for purposes of the personal any of their agents.” Id. at 15. jurisdiction inquiry. See Rice v. Nova Biomedical Corp., 38 F.3d 909, 912 (7th Cir.1994) (holding that whether or not The plot since has thickened. Suyash Agrawal, counsel an agent can be sued in Illinois, “his superiors, who sent him, for Defendants, has submitted an affidavit averring that on

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 8 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) can be by virtue of his having come into the state on their at 444 (internal quotation marks omitted). To be subject to personal jurisdiction, “[t]he defendant's *707 contacts must business”); Stauffacher v. Bennett, 969 F.2d 455, 459 (7th not be merely random, fortuitous, or attenuated; rather, the Cir.1992) (“[I]f Livesey was the agent of the enterprise, what ‘defendant's conduct and connection with the forum state’ more should be necessary to bring the enterprise, and hence must be such that it should ‘reasonably anticipate being haled First Heritage, a principal in it, within the long arm of the long-arm statute?”). Accordingly, the pertinent question here into court there.’ ” Citadel Grp. Ltd. v. Wash. Reg. Med. is whether the Dontzin Defendants' and VeneKlasen's contacts Ctr., 536 F.3d 757, 761 (7th Cir.2008) (quoting Burger with Illinois—which, as discussed below in Section II, were King Corp. v. Rudzewicz, 471 U.S. 462, 474–75, 105 S.Ct. taken on Doig's behalf—are sufficient to support the exercise 2174, 85 L.Ed.2d 528 (1985)). of personal jurisdiction over Doig. [7] [8] [9] [10] “Personal jurisdiction can be general [2] [3] [4] A federal court's “exercise of jurisdiction over or specific, depending on the extent of the defendant's the defendant must be authorized by the terms of the forum state's personal jurisdiction statute and also must comport contacts.” Mobile Anesthesiologists Chicago, 623 F.3d at with the requirements of the Fourteenth Amendment's Due 444; see also Daimler AG v. Bauman, ––– U.S. ––––, 134 Process Clause.” Felland v. Clifton, 682 F.3d 665, 672 S.Ct. 746, 754–55, 187 L.Ed.2d 624 (2014). Plaintiffs here (7th Cir.2012); see also N. Grain Mktg., LLC v. Greving, 743 pursue only a specific jurisdiction theory. Doc. 1 at ¶ 13; F.3d 487, 492 (7th Cir.2014). The Illinois long-arm statute Doc. 48 at 5. When determining whether specific personal permits a court to exercise personal jurisdiction “on any ... jurisdiction is present, the “relevant contacts are those that basis now or hereafter permitted by the Illinois Constitution center on the relations among the defendant, the forum, and and the Constitution of the United States.” 735 ILCS 5/2– the litigation.” Advanced Tactical Ordnance Sys., LLC v. 209(c). Because “there is no operative difference between Real Action Paintball, Inc., 751 F.3d 796, 801 (7th Cir.2014). these two constitutional limits,” a federal court sitting in “The mere fact that [defendant's] conduct affected plaintiffs Illinois and evaluating a Rule 12(b)(2) motion must ask with connections to the forum State does not suffice to “whether the exercise of personal jurisdiction would violate authorize jurisdiction. Furthermore, the relation between the defendant and the forum must arise out of contacts that the federal due process.” Mobile Anesthesiologists Chicago, LLC v. Anesthesia Assocs. of Houston Metroplex, P.A., 623 defendant himself creates with the forum.” Ibid. (internal F.3d 440, 443 (7th Cir.2010). “The plaintiff bears the burden quotation marks and citations omitted, alteration in original). of establishing personal jurisdiction when the defendant Consistent with these principles, the Seventh Circuit has held challenges it. Where, as here, the district court rules on a that “[s]pecific personal jurisdiction is appropriate where (1) defendant's motion to dismiss based on the submission of the defendant has purposefully directed his activities at the written materials without holding an evidentiary hearing, the forum state or purposefully availed himself of the privilege plaintiff need only make out a prima facie case of personal of conducting business in that state, and (2) the alleged jurisdiction.” N. Grain Mktg., 743 F.3d at 491 (internal injury arises out of the defendant's forum-related activities. quotation marks and citation omitted). The exercise of specific jurisdiction must also comport with traditional notions of fair play and substantial justice.” N. [5] [6] “Under the Supreme Court's well-established Grain Mktg., 743 F.3d at 492 (internal quotation marks and interpretation of the Fourteenth Amendment's due process citations omitted); see also Advanced Tactical Ordnance clause, a defendant is subject to personal jurisdiction in a Sys., 751 F.3d at 802–03. particular state only if the defendant had certain minimum contacts with it such that the maintenance of the suit does There is no dispute that Plaintiffs' alleged injury arises out not offend traditional notions of fair play and substantial of Doig's forum-related activities; the alleged injury—the justice.” Mobile Anesthesiologists Chicago, 623 F.3d at auction's cancellation—is plausibly alleged to have been both 443 (internal quotation marks omitted). The Supreme Court directly (“but for”) and proximately (foreseeably) caused has “framed the constitutional inquiry in terms of whether by Defendants' communications to Illinois. The disputed the defendant purposefully avails itself of the benefits and questions here are whether Doig “purposefully directed” his conduct at Illinois, and whether Illinois's exercise of personal protections of conducting activities in the forum state.” Id.

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 9 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) jurisdiction over Doig would offend traditional notions of fair will] consider the two requirements together.” Tamburo, play and substantial justice. Those questions are addressed in 601 F.3d at 704. For many years, the “expressly aimed” turn. standard was in flux in the Seventh Circuit, with Tamburo recognizing “some tension regarding the proper reading

1. “Purposefully Directed” Requirement of Calder ” between Wallace v. Herron, 778 F.2d 391 (7th Cir.1985), and Janmark, Inc. v. Reidy, 132 [11] [12] Where, as here, the plaintiff alleges an intentional tort, the purposeful-direction inquiry “focuses on whether F.3d 1200 (7th Cir.1997). 601 F.3d at 704. The Seventh the conduct underlying the claims was purposely directed Circuit ultimately sided with Wallace, which considers at the forum state.” Tamburo v. Dworkin, 601 F.3d 693, “the relationship between the allegedly tortious conduct and 702 (7th Cir.2010). The Seventh Circuit has “distilled three the forum state itself.” Tamburo, 601 F.3d at 706; see requirements from Calder [v. Jones, 465 U.S. 783, 104 Mobile Anesthesiologists, 623 F.3d at 445. That choice S.Ct. 1482, 79 L.Ed.2d 804 (1984),] for determining whether conduct was ‘purposefully directed’ at the forum state: ‘(1) was vindicated by Walden v. Fiore, ––– U.S. ––––, intentional conduct (or ‘intentional and allegedly tortious’ 134 S.Ct. 1115, 188 L.Ed.2d 12 (2014), which in holding conduct); (2) expressly aimed at the forum state; (3) with that “the defendant's suit-related conduct must create a the defendant's knowledge that the effects would be felt— substantial connection with the forum State,” emphasized that that is, the plaintiff would be injured—in the forum state.’ ” “it is the defendant's conduct that must form the necessary connection with the forum State” and that “a defendant's Felland v. Clifton, 682 F.3d 665, 674–75 (7th Cir.2012) relationship with a plaintiff or third party, standing alone, is (quoting Tamburo, 601 F.3d at 703). “If the plaintiff makes an insufficient basis for jurisdiction.” Id. at 1121–23; see these three showings, he has established that the defendant also Advanced Tactical Ordnance Sys., 751 F.3d at 802 ‘purposefully directed’ his activity at the forum state.” Id. at 675. Plaintiffs have made those showings. (“Although [ Janmark and Wallace ] may be in some tension with one another, after Walden there can be no *708 [13] With respect to the first element, Plaintiffs allege doubt that ‘the plaintiff cannot be the only link between the that the Dontzin Defendants' sending the May 16, 2012 defendant and the forum.’ ”) (quoting Walden, 134 S.Ct. letter to Hindman Auctioneers “was willfully and wantonly at 1122). performed by defendants, with knowledge of the falsity of the assertions in the letter to Leslie Hindman Auctioneers, Inc. denying Doig's execution of the Work, and with the intention As required by Walden, Plaintiffs allege that Doig engaged to stop Leslie Hindman Auctioneers, Inc. from auctioning the (through his agents) in tortious conduct directed at the Illinois Work on behalf of plaintiffs.” Doc. 1 at ¶ 56. That is sufficient forum and a forum-state injury. See Tamburo, 601 F.3d to satisfy the “intentional and allegedly tortious” element. See at 706 (“This case involves both a forum-state injury and Tamburo, 601 F.3d at 704 (“Tamburo ... further alleges that tortious conduct specifically directed at the forum, making this conduct tortiously interfered with his business.... These the forum state the focal point of the tort.”). Doig contacted are intentional-tort allegations, bringing this case squarely Hindman via a letter to Illinois expressly denying that Doig created the Work, thereby causing the alleged harm—the within the Calder formula[.]”); O'Fallon Dev. Co. v. cancellation of the auction of the Work and loss of a lucrative City of O'Fallon, 43 Ill.App.3d 348, 2 Ill.Dec. 6, 356 N.E.2d opportunity. Doc. 1 at ¶¶ 40–41. There is ample evidence that 1293, 1301 (1976) (“Tortious interference with prospective Doig specifically directed this conduct at Illinois and knew economic advantage is an intentional tort.”). that the brunt of the harm would be felt there. VeneKlasen apprised Doig of Bartlow's inquiries from the very beginning, The second element, whether the conduct was expressly and Bartlow's Chicago address was noted at the bottom of aimed at the forum State, “overlaps with [the third element, all his emails, including the September 2011 email to Doig, which asks] whether the defendant knew the plaintiff Doc. 22–3 at 4; and Doig avers that he “reviewed the e- would suffer the injury in the forum state, so [the court

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 10 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) mail correspondence from Mr. Bartlow and conferred with to halt sales of an online auction Mr. VeneKlasen,” Doc. 34–2 at ¶ 11. Additionally, Doig had item originating in Colorado. This reviewed and was cc'ed on the Dontzin Defendants' October satisfied Calder 's “express aiming” 12, 2011 letter to Bartlow, which displayed Bartlow's Chicago requirement and was sufficient to address. Doc. 1–3 at 1; Doc. 34–2 *709 at ¶ 14. Likewise, establish personal jurisdiction over the Doig reviewed and was cc'ed on the Dontzin Defendants' Connecticut company in Colorado. letter to Hindman Auctioneers, which displayed Hindman's Chicago address. Doc. 22–5 at 2; Doc. 34–2 at ¶ 16. Given these facts, it is beyond dispute that Doig knowingly directed Id. at 706–07. As Dudnikov itself explained: his conduct to Illinois. See Felland, 682 F.3d at 675 (holding that “there is no doubt that Clifton knew the alleged harm would be felt in Wisconsin,” given that “Clifton and his associates knew from the beginning that the Fellands [The defendant's conduct] is were Wisconsin residents; their Wisconsin residency was something like a bank shot in noted in various documents possessed and signed by Clifton; basketball. A player who shoots the and Clifton directed multiple communications via several ball off of the backboard intends different media to the Fellands' Wisconsin home”). to hit the backboard, but he does so in the service of his further There is a forum-state injury as well, as the economic intention of putting the ball into the consequences of Doig's conduct were felt in Illinois when basket. Here, defendants intended to Bartlow Gallery allegedly lost out on a potential seven-figure send the [copyright notice] to eBay in California, but they did so with auction of the Work. The Seventh Circuit in Tamburo the ultimate purpose of cancelling cited with approval Dudnikov v. Chalk & Vermilion Fine plaintiffs' auction in Colorado. Their Arts, Inc., 514 F.3d 1063 (10th Cir.2008), a case with facts “express aim” thus can be said to have reached into Colorado in much the analogous to those here. Tamburo, 601 F.3d at 706–08. same way that a basketball player's Tamburo summarized Dudnikov as follows: express aim in shooting off of the backboard is not simply to hit the backboard, but to make a basket.

In Dudnikov a Connecticut-based company notified the online auction host eBay, based in California, that 514 F.3d at 1075. Likewise, although Doig's conduct a line of prints featured in an eBay originated outside of Illinois, he targeted Fletcher and his auction infringed its copyright. eBay dealer Bartlow Gallery, whose business was in Illinois, with responded by cancelling the auction the express goal of inflicting commercial harm there. See for the prints. The online sellers of Tamburo, 601 F.3d at 707 (finding a forum-state injury in the prints lived and operated their Illinois where “the individual defendants purposely targeted business in Colorado; they filed a Tamburo and his business in Illinois with the express goal of copyright suit in Colorado against inflicting commercial and reputational harm on him there”). the Connecticut-based company. The district court dismissed the case For these reasons, Plaintiffs have satisfied the “purposefully for lack of personal jurisdiction.... directed” requirement with respect to Doig. In so holding, In a comprehensive decision, the the court rejects Doig's argument that “the Dontzin–Hindman Tenth Circuit reversed. Although Letter was a cease-and-desist letter, and such letters, alone, the Connecticut company's conduct do not support the exercise of personal jurisdiction over an originated outside of Colorado and out-of-state defendant.” *710 Doc. 56 at 16. The allegedly was technically directed at eBay tortious conduct extends well beyond a simple cease-and- in California, its express goal was

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 11 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) desist letter—among other things, Doig's agents sent a including records from Canadian institutions such as the letter to a non-party, Hindman Auctioneers, disclaiming his Lakehead University, Thunder Bay Correctional Center, the authorship of the Work, which scuttled the planned auction Seafarer's Union, the Thunder Bay Police Service, and the —rendering inapposite the authorities cited by Doig and Royal Canadian Mounted Police, which may shed light on obviating any need to determine whether they apply outside whether Doig or Peter Edward Doige was the Doige that the trademark infringement context. Fletcher knew in the 1970s—“is located in Ontario and elsewhere in Canada.” Doc. 34–1 at 16. Doig's argument is overstated. Although it will undoubtedly be more difficult for an American court than for a Canadian court to obtain 2. Fair Play and Substantial Justice records located in Canada, it is by no means impossible [14] [15] Having found that Plaintiffs' injury arises out or unreasonably difficult. Docs. 34–3, 56–3 (explaining of Doig's forum-related activities and that he purposefully the procedure that Illinois courts must follow to obtain directed his conduct at Illinois, the court turns to the Canadian records). And Doig does not suggest that an Illinois question whether exercising personal jurisdiction over Doig federal court would somehow face greater difficulty obtaining would comport with “fair play and substantial justice.” Canadian evidence than, say, a federal or state court in New The following factors govern that inquiry: “the burden on York, which obviously would have personal jurisdiction over the defendant, the forum State's interest in adjudicating Defendants. Furthermore, the Work, Bartlow Gallery, and the dispute, the plaintiff's interest in obtaining convenient Hindman are located in or near Chicago. Finally, this court is and effective relief, the interstate judicial system's interest capable of expeditiously resolving the dispute, given that it in obtaining the most efficient resolution of controversies, probably involves Illinois substantive law. In sum, the most and the shared interest of the several States in furthering efficient resolution of this dispute is likely to occur in an Illinois courtroom. fundamental substantive social policies.” Tamburo, 601 F.3d at 709 (quoting Burger King, 471 U.S. at 477, 105 *711 The fifth factor is a wash, as it does not appear that S.Ct. 2174) (internal quotation marks omitted). Applying Canada, Trinidad and Tobago, or the United States have a these factors, the court concludes that exercising jurisdiction substantial interest at stake here. See Abad v. Bayer Corp., over Doig in Illinois would not offend traditional notions of 563 F.3d 663, 668 (7th Cir.2009) (“For this is ordinary private fair play and substantial justice. tort litigation that ‘implicates,’ as some judges like to say, no national interest.”). First, it cannot be denied that Doig, who resides in Trinidad, will be burdened by litigating in Illinois. But Doig also * * * would equally if not more burdened if this case were litigated in Ontario, his preferred forum. Thus, the first factor is Because Doig purposefully directed his actions towards inconclusive. Illinois, and because this court's exercise of personal jurisdiction over Doig comports with traditional notions of The second factor, Illinois's interest in adjudicating the fair play and substantial justice, specific jurisdiction lies over dispute, favors Plaintiffs. As the Seventh Circuit has Doig, and his Rule 12(b)(2) motion is denied. observed, “Illinois has a strong interest in providing a forum for its residents and local businesses to seek redress for tort injuries suffered within the state and inflicted by out-of-state B. Forum Non Conveniens actors.” Ibid. Bartlow Gallery, an Illinois business, has Doig argues in the alternative that this case should be allegedly suffered a significant economic loss, and it is in dismissed on the basis of forum non conveniens in favor of a Illinois's interest to provide a forum for it to seek redress. court in Ontario. This argument fails as well.

The third and fourth factors, Plaintiffs' interest in obtaining [16] [17] [18] [19] “The common law doctrine of forum convenient and effective relief, and the interstate judicial non conveniens allows a federal district court to dismiss system's interest in obtaining efficient resolutions of a suit over which it would normally have jurisdiction in controversies, also favor Plaintiffs. Doig contends that “all order to best serve the convenience of the parties and the of the key evidence that Plaintiffs profess to need”— ends of justice.” Stroitelstvo Bulgaria Ltd. v. Bulgarian–

Am. Enter. Fund, 589 F.3d 417, 421 (7th Cir.2009); see that is at home with the law that must govern the action; the avoidance of also Clerides v. Boeing Co., 534 F.3d 623, 627–28 (7th unnecessary problems in conflicts of Cir.2008); In re Bridgestone/Firestone, Inc., 420 F.3d 702, laws or in the application of foreign 703 (7th Cir.2005). “A federal court has discretion to dismiss law; and the unfairness of burdening a case on the ground of forum non conveniens when an citizens in an unrelated forum with alternative forum has jurisdiction to hear [the] case, and ... jury duty. trial in the chosen forum would establish ... oppressiveness and vexation to a defendant ... out of all proportion to plaintiff's convenience, or ... the chosen forum [is] inappropriate because of considerations affecting the court's *712 Stroitelstvo Bulgaria, 589 F.3d at 425 (internal quotation marks omitted and alteration in original). A own administrative and legal problems.” Sinochem Int'l “defendant invoking forum non conveniens ordinarily bears a Co. Ltd. v. Malaysia Int'l Shipping Corp., 549 U.S. 422, 429, heavy burden in opposing the plaintiff's chosen forum.” In re 127 S.Ct. 1184, 167 L.Ed.2d 15 (2007) (internal quotation Hudson, 710 F.3d 716, 718 (7th Cir.2013) (internal quotation marks omitted and alterations in original). “A threshold marks omitted). There is “a presumption in favor of allowing requirement for any forum non conveniens dismissal is the a plaintiff his choice of courts rather than insisting that he existence of an alternative forum that is both ‘available’ and choose the optimal forum,” and “[a] case should not be lightly ‘adequate.” Stroitelstvo Bulgaria Ltd., 589 F.3d at 421 shifted from one court to another, forcing the plaintiff to start (citation omitted). Plaintiffs do not dispute that Ontario is an over.” Abad, 563 F.3d at 666. It is true that “[w]hen the available alternative forum. Doc. 48 at 33. “If an adequate plaintiff's choice is not its home forum, ... the presumption in alternative forum exists, the district court should consider the plaintiff's favor applies with less force, for the assumption whether a forum non conveniens dismissal would serve the that the chosen forum is appropriate is in such cases less private interests of the parties and the public interests of the reasonable,” Sinochem Int'l, 549 U.S. at 430, 127 S.Ct. alternative forums.” Stroitelstvo Bulgaria, 589 F.3d at 424. 1184 (internal quotation marks omitted), but that principle has no application here because Illinois is the home forum of one [20] [21] [22] [23] [24] The private and public interestof the two plaintiffs, Bartlow Gallery. factors identified in Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508–09, 67 S.Ct. 839, 91 L.Ed. 1055 (1947), guide the court's analysis: 1. Private Interest Factors

The private interest factors that a a. Ease of Access to Sources of Proof court may consider include the relative [25] The ease of access to sources of proof slightly favors ease of access to sources of proof; dismissal. Plaintiffs recognize that they “will require some availability of compulsory process for discovery in Canada to determine whether they should attendance of unwilling, and the cost proceed with their claims, now that Defendants have inserted of obtaining attendance of willing, the issue of the deceased carpenter, Peter Edward Doige, witnesses; possibility of view of into this case.” Doc. 48 at 38. Among the records sought premises, if view would be appropriate would be those pertaining to Doige's identity and to the to the action; and all other practical Canadian whereabouts in the mid- to late 1970s of Doig problems that make trial of a case and Peter Edward Doige. Doig has submitted affidavits easy, expeditious and inexpensive.... from a Toronto lawyer, Docs. 34–3, 56–3, averring to The public interest factors include the the difficulties in “gathering this proof ... when channeled administrative difficulties stemming across the border through the U.S. courts than if the case from court congestion; the local were pending in Ontario in the first place.” Doc. 34–1 interest in having localized disputes at 22. The lawyer explains that the Ontario Freedom of decided at home; the interest in having Information and Protection of Privacy Act (“FIPPA”) governs the trial of a diversity case in a forum

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 13 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) the ability to obtain documents without an Ontario court published materials on Canadian law, see Sunstar, Inc. v. order from government institutions in Ontario, including Alberto–Culver Co., 586 F.3d 487, 495–96 (7th Cir.2009), but Lakehead University, Thunder Bay Correctional Center, and the affidavit suffices here because the parties largely agree on Thunder Bay Police Service. Doc. 56–3 at ¶¶ 7–8, 11. the content of the relevant Canadian legal principles.) FIPPA does not permit a government institution to disclose personal information, such as records of employment and Following this process certainly may impose some educational history, unless the information is requested by the inconvenience, but the court does not believe that the individual to whom it relates. Id. at ¶ 12. If the individual process is so burdensome as to strongly favor dismissal. is deceased, FIPPA allows a “close relative or spouse” to See Boston Telecommunications Grp., Inc. v. Wood, 588 request the information for “compassionate reasons,” such as F.3d 1201, 1208 (9th Cir.2009) (“But if this case proceeds to seek information surrounding the individual's death. Id. at in California, Wood may seek these documents through ¶¶ 15–16. The lawyer does not believe that any documents procedures for international third-party discovery, such as pertaining to this case would qualify as information “for those under the Hague Convention on Taking of Evidence compassionate reasons.” Id. at ¶ 16. In any event, the parties Abroad in Civil or Commercial Matters, 23 U.S.T. 2555 indicated at a hearing, Doc. 58, that they do not believe that (1968). ‘Any court ... will necessarily face some difficulty in Woolwine, Peter Edward Doige's mother, would cooperate securing evidence from abroad,’ but these complications do in consenting to the release of his records, and they dispute whether Bovard, his sister, would cooperate. not necessarily justify dismissal.”); Reid–Walen v. Hansen, 933 F.2d 1390, 1398 (8th Cir.1991) (holding that a forum That said, the Toronto lawyer also avers that FIPPA does not non conveniens dismissal was an abuse of discretion because affect “the power of a court ... to compel a witness to testify or “[n]either the Hansens nor the district court have specified compel the production of a document,” and that, “as a result, what sources of proof are available only in Jamaica.... the parties can obtain access to personal information from Presumably, any records of safety precautions the Hansens institutions governed by FIPPA if they successfully obtain an did or did not undertake could be transported [from Jamaica] Ontario court order.” Doc. 56–3 at ¶ 20. The party seeking to Missouri.”) (emphasis added); Lony v. E.I. Du Pont the documents must first obtain letters of request, or “letters de Nemours & Co., 886 F.2d 628, 639 (3d Cir.1989) (same, rogatory,” from the U.S. District Court setting forth the details where the “West German courts have indicated that they will of the requested evidence, and the moving party must then execute letters rogatory for pretrial discovery to the extent that commence a proceeding in Ontario to have the letters of they would order such evidence if the case were tried in their request enforced by an Ontario court. Doc. 34–3 at ¶ 51. The own courts”). Moreover, it would be relatively easy to obtain Ontario court may enforce the U.S. District Court's letters of records from Canada pertaining to Doig's own educational request after an oral hearing supported *713 by affidavit history and criminal record (if any) while he lived in that evidence, or during a trial where witnesses testify regarding country, as all that would be required is Doig's consent, which the evidence. Id. at ¶ 52. In deciding whether to enforce the the court has no reason to be believe that he would withhold. letters of request, the Ontario court considers the relevance of Accordingly, while this factor favors dismissal, it does so only the evidence, whether the evidence is otherwise unavailable, slightly. whether providing the evidence would violate public policy, and whether non-party witnesses would be unduly burdened, and the court issue an order modifying the request as it deems necessary. Id. at ¶¶ 56–57. The Toronto lawyer avers that, in b. Compelling Attendance of Unwilling Witnesses his experience, “the process of enforcing letters of request The second factor, the availability of the compulsory process in Ontario increases the overall cost of the litigation and for the attendance of unwilling witnesses, is neutral. Aside the length of time necessary to obtain relevant information,” from Bovard, Doig lists numerous potential witnesses from and notes that further cost and delay could be incurred if an Canada: “representatives from Lakehead University, the Ontario court were “not satisfied with the detail and clarity Thunder Bay Correctional Center, the Thunder Bay Probation provided in the letters of request” and asked for revised letters and Parole Office, the Seafarer's Union in Ontario, the of request from the U.S. District Court. Id. at ¶ 58. (The Thunder Bay police, the Royal Canadian Mounted Police, and court acknowledges that the Toronto lawyer's affidavit, while the schools that Doig attended during the period in question admissible under Rule 44.1, may be less authoritative than (Jarvis/S.E.E.D).” Doc. 34–1 at 23. However, those non-

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 14 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) party witnesses could be compelled to give video depositions and art experts based in Chicago. Doc. 48 at 40–42. Willing witnesses identified by Doig include the Dontzin Defendants via the letters rogatory process described above. See and VeneKlasen, who are based in New York, and Doig, who *714 DiRienzo v. Philip Services Corp., 294 F.3d 21, 30 is based in Trinidad. Doig does not dispute that, with respect (2d Cir.2002) (recognizing “the availability of letters rogatory to the Dontzin Defendants and VeneKlasen, “it is cheaper to as relevant in deciding whether plaintiffs' chosen forum is fly from New York City to Chicago than to either Thunder inconvenient,” and noting that “[w]hile demeanor evidence Bay or Toronto.” Doc. 48 at 41; see also Doc. 48–3 at ¶ 21 is important when trying a fraud case before a jury ..., (comparing a $188 flight from New York City to Chicago, to videotaped depositions, obtained through letters rogatory, a $334 flight from New York City to Toronto, or a $597 flight could afford the jury an opportunity to assess the credibility from New York City to Thunder Bay); Doc. 56 at 29. If the of these Canadian witnesses”); R. Maganlal & Co. v. case were tried in Ontario, it would be costly for Bartlow and M.G. Chem. Co., 942 F.2d 164, 169 (2d Cir.1991) (“[A]ny the Chicago-based art experts to travel to Canada. Doc. 48–3 testimony MG needs from witnesses whose attendance cannot at ¶¶ 18–19, 21. Because it would be slightly more expensive be compelled can be obtained, for example, through the to obtain the attendance of willing witnesses if the case were use of letters rogatory. ... Therefore, while certain of MG's dismissed and refiled in Ontario, this factor weighs slightly in interests may favor trial in India, they are not sufficiently favor of staying in Illinois. weighty to dislodge Maganlal from its chosen forum.”); Lacey v. Cessna Aircraft Co., 862 F.2d 38, 47 (3d Cir.1988) (holding that a forum non conveniens dismissal d. Viewing the Premises and Other Practical Problems was an abuse of discretion where the “potential witnesses in British Columbia who are not subject to compulsory process The parties do not dispute that the fourth private interest in Pennsylvania, such as the pilot, have made themselves factor, viewing the premises, has no application here. available for deposition”). There would be little value from As for “all other practical problems that make trial of live testimony (as opposed to videotaped depositions) for a case easy, expeditious and inexpensive,” Stroitelstvo the representatives from various Canadian institutions, whose Bulgaria Ltd., 589 F.3d at 425 (internal quotation marks role would be simply to confirm the attendance records and omitted), Doig merely rehashes his argument *715 that it educational history of Doig and/or Peter Edward Doige. may be inconvenient to obtain information from Canadian institutions through letters rogatory. Doc. 34–1 at 25. The It is true that live testimony from Bovard would have slightly court has already found that this consideration at best weighs more impact than videotaped testimony. But if the case only slightly in favor of dismissal. proceeded in Ontario, the Canadian courts would be unable to compel the live attendance of Woolwine, who lives in Overall, then, the private interest factors are essentially Idaho, whose story differs from Bovard's, who has expressed neutral. reluctance to cooperate, and who (like Bovard) would testify, if at all, by video deposition. As for these two key non-party witnesses, then, this factor is a wash. See Reid–Walen v. 2. Public Interest Factors Hansen, 933 F.2d 1390, 1397 (8th Cir.1991) (“In whichever forum the case is tried, witnesses will have to travel or testify The first public interest factor, court congestion, is neutral. As by deposition. If the suit is brought in the U.S., the parties will of June 2014, the median time from filing a civil case to trial in not have compulsory process over any Jamaican witnesses. the Northern District of Illinois was 35.4 months. See Federal By the same token, if the suit is brought in Jamaica, the parties Court Management Statistics, www.uscourts.gov/Statistics/ will lack compulsory process over American witnesses.”). FederalCourtManagement Statistics.aspx, then click on “District Courts,” then select “Illinois Northern” (last viewed September 26, 2014). The Toronto lawyer avers that in Ontario, “in most cases, it would take at least nine (9) months, c. Cost of Obtaining Attendance of Willing Witnesses but more commonly two years or more from the time a This factor weighs slightly against dismissal. Willing claim is commenced [in Ontario] before a matter proceeds witnesses identified by Plaintiffs include Fletcher, Bartlow, to trial.” Doc. 34–3 at ¶ 25. As Plaintiffs correctly note,

“[t]he general time intervals that Mr. Capern provides is As shown in Section I.A above, the Dontzin Defendants' open-ended,” such that “there is no actual comparison to be and VeneKlasen's contacts with Illinois are sufficient to made for purpose of assessing relative court congestion.” support the exercise of personal jurisdiction over them. Those Doc. 48 at 43. Without more information with which to make defendants, however, *716 seek refuge from suit in Illinois under Illinois's fiduciary shield doctrine. a comparison, this factor is neutral. See Clerides, 534 F.3d at 630 (“The court did not have sufficient evidence to [26] [27] [28] “[R]ecognized by the courts of many enable it to assess the congestion of the courts in Greece or states including Illinois,” the fiduciary shield doctrine “denies Cyprus, but, given that the current median time to trial in personal jurisdiction over an individual whose presence and the Northern District of Illinois is twenty-four months, the activity in the state in which the suit is brought were solely judge reasonably concluded that, at best, this factor would be neutral.”). on behalf of his employer or other principal.” Rice v. Nova Biomedical Corp., 38 F.3d 909, 912 (7th Cir.1994); The second public interest factor, “the local interest in having see also ISI Int'l, Inc. v. Borden Ladner Gervais LLP, localized disputes decided at home,” is neutral, as both Illinois 256 F.3d 548, 550 (7th Cir.2001) (“Illinois employs the and Canada have an interest in resolving this dispute locally. fiduciary-shield doctrine, under which a person who enters As noted above, Illinois has such an interest because it is the the state solely as fiduciary for another may not be sued in site of the alleged injury and where Bartlow Gallery conducts Illinois.”) (citation omitted). “[T]he fiduciary-shield doctrine business. See Tamburo, 601 F.3d at 709 (“Illinois has a is a matter of state law only,” and does not flow from federal strong interest in providing a forum for its residents and local due process principles. Hardin Roller Corp. v. Universal businesses to seek redress for tort injuries suffered within the Printing Mach., Inc., 236 F.3d 839, 842 (7th Cir.2001); see state and inflicted by out-of-state actors.”). Canada also has also Newsome v. Gallacher, 722 F.3d 1257, 1278 (10th an interest in resolving the dispute, as Fletcher is a citizen of Cir.2013) (“[T]he Supreme Court has made clear that the Canada, and the case may turn on whether another Canadian fiduciary shield is a question of state law, not due process.”); citizen, Peter Edward Doige, authored the Work. Columbia Briargate Co. v. First Nat. Bank in Dallas, Doig concedes that “the remaining public interest factors ... 713 F.2d 1052, 1057 (4th Cir.1983) (same); see generally do not significantly impact the analysis,” Doc. 34–1 at 26, Robert A. Koenig, “Personal Jurisdiction and the Corporate and thus the court need not consider them. On balance, the Employee: Minimum Contacts Meet the Fiduciary Shield,” private and public interest factors are neutral and do not weigh 38 Stan. L.Rev. 813, 819–21 (1986) (describing the doctrine's in favor of dismissal. And even if the private interest factors origins and noting that “Supreme Court opinions seem to slightly favored dismissal, that would be insufficient for a reject outright the constitutional underpinnings of the rule”). So even where, as here, federal due process would permit the forum non conveniens dismissal. See Clerides, 534 F.3d at court's exercise of personal jurisdiction over a defendant, the 628 (“As a general rule, a plaintiff's choice of forum should fiduciary shield doctrine may nevertheless preclude it. See be disturbed only if the balance of public and private interest Hardin Roller Corp., 236 F.3d at 842; see also Purdue factors strongly favors the defendant.”); AAR Int'l, Inc. Research Found. v. Sanofi–Synthelabo, S.A., 338 F.3d 773, v. Nimelias Enters. S.A., 250 F.3d 510, 524 (7th Cir.2001) 779 (7th Cir.2003) (“A district court sitting in diversity has (“under the usual analysis, there is a strong presumption personal jurisdiction over a nonresident defendant only if a in favor of the plaintiff's choice of forum, which may be court of the state in which it sits would have jurisdiction.”). overcome only when the private and public interest factors clearly point towards trial in the alternative forum ..., and this The Supreme Court of Illinois recognized the doctrine in is particularly true where a domestic plaintiff has filed suit in his own home forum”) (internal quotation marks and citation Rollins v. Ellwood, 141 Ill.2d 244, 152 Ill.Dec. 384, 565 omitted). N.E.2d 1302, 1318 (1990), a case in which two Baltimore police officers traveled to Illinois to arrest a suspected fugitive pursuant to a warrant. Id., 152 Ill.Dec. 384, 565 N.E.2d at II. Dontzin Defendants' and VeneKlasen's 12(b)(2) Motions 1305. As it turned out, they nabbed the wrong man. Ibid. The arrestee (Rollins) filed suit in Illinois against one of the

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 16 Fletcher v. Doig, 125 F.Supp.3d 697 (2014) officers (Ellwood), alleging that he committed the intentional [29] As Rollins makes clear, “[t]he shield is withdrawn torts of kidnapping, unlawful restraint, and conspiracy. Id., if the agent was acting also or instead on his own behalf 152 Ill.Dec. 384, 565 N.E.2d at 1304. —to ‘serve his personal interests.’ ” Rice, 38 F.3d at

The Supreme Court of Illinois held that Ellwood should be 912 (quoting Rollins, 152 Ill.Dec. 384, 565 N.E.2d dismissed as a defendant on the ground that it would be at 1318). At a hearing on the motion to dismiss, Doc. “unfair and unreasonable ... to assert personal jurisdiction 58, Plaintiffs conceded that they do not contend that the over an individual who seeks the protection and benefits of Dontzin Defendants and VeneKlasen were acting to serve Illinois law, not to serve his personal interests, but to serve their personal interests when they communicated to Bartlow Gallery and Hindman in Illinois. Plaintiffs conceded the those of his employer or principal.” Id., 152 Ill.Dec. 384, same point in their brief opposing dismissal. Doc. 48 at 565 N.E.2d at 1318. The court reasoned as follows: 18 (characterizing this case as one “in which a defendant's contacts with Illinois were as an agent of another, and unmotivated by separate personal interests of the agent”). Ellwood entered into Illinois, and Nor do Plaintiffs dispute that the Dontzin Defendants and while in Illinois engaged in conduct VeneKlasen were acting as agents of Doig, who directed them giving rise to the present cause of “not to accept authentication or attribution of the disputed action, solely in his capacity as a painting to Doig, and to take ‘appropriate’ steps to prevent its police officer acting for the Baltimore attribution.” Id. at 21. police department and the State of Maryland. The nature and quality of However, Plaintiffs invoke what they call the “discretion his actions in Illinois were defined and exception” to the doctrine, which they say applies where “the characterized by his status as a police agent acts with discretion in his actions on behalf of the officer employed by these entities. Because Ellwood's conduct in Illinois principal, unlike the police officer in Rollins v. Ellwood.” was a product of, and was motivated Id. at 16. For support, Plaintiffs rely on Renner v. Grand by, his employment situation and not Trunk Western Railroad Co., 263 Ill.App.3d 547, 204 Ill.Dec. his personal interests, we conclude that 42, 641 N.E.2d 1 (1994), which held that the defendant, it would be unfair to use this conduct a railroad engineer based in Michigan assigned to trains to assert personal jurisdiction over him running through Illinois, was subject to personal jurisdiction as an individual. in Illinois in a lawsuit alleging that he negligently operated the train and caused the plaintiff's injury. Id., 204 Ill.Dec. 42, 641 N.E.2d at 1–2. Renner distinguished itself from Ibid. The court rejected the argument that “asserting personal jurisdiction over an employee who acted in the scope Rollins on these grounds: of his *717 employment is justified because the employee is serving his own financial interests when he performs the tasks The Rollins court, in holding that the Illinois courts imposed upon him by his employer,” explaining that “[i]n lacked personal jurisdiction over a non-resident defendant practical terms, an employee, especially one in Ellwood's where the nature and quality of the conduct giving rise to position, has little or no alternative besides unemployment the lawsuit was defined solely by the defendant's status as when ordered to enter another State to carry out the wishes a police officer, merely recognized the extremely limited of his employer,” and that there was “no reason to fashion discretion that may be exercised by a police officer in an exception to the fiduciary shield doctrine that will expose carrying out the orders of his or her superiors. employees who engage in tortious conduct within the scope In this case, however, there has been no showing that the of their employment to the personal jurisdiction of Illinois nature and quality of the acts performed by the nonresident courts.” Ibid. defendant were similarly compelled by his status as a railroad engineer. Petitioner failed to show that the acts giving rise to his status as a defendant in this suit were

compelled by the order of his employer. Rather, this cause of action appears to arise out of alleged negligence Id., 327 Ill.Dec. 935, 903 N.E.2d at 37 (one citation omitted). by a nonresident occurring during normal commercial In rejecting Renner 's interpretation of Rollins, Femal activity in Illinois—a factual matrix which has traditionally confirmed that the central issue under the fiduciary shield subjected that defendant to the personal jurisdiction of the doctrine remains “whether a defendant's conduct in Illinois Illinois courts. was a product of, and was motivated by, his employment situation and not his personal interests.” Id., 327 Ill.Dec. 935, Id., 204 Ill.Dec. 42, 641 N.E.2d at 3 (citations omitted). 903 N.E.2d at 38 (internal quotation marks omitted).

[30] Defendants respond that in Femal v. Square D Co., This court finds Femal more persuasive than Renner 388 Ill.App.3d 134, 327 Ill.Dec. 935, 903 N.E.2d 32, 36–37 (2009), a different and more recent panel of the Appellate in interpreting Rollins and also more consistent with the Seventh Circuit's understanding of the fiduciary shield Court of Illinois rejected *718 Renner 's narrow doctrine. In Rice v. Nova Biomedical Corp., supra, the interpretation of Rollins, reasoning as follows: defendant (Christopher) worked in Massachusetts as Nova's director of technical services and supervised the plaintiff We disagree with the interpretation of Rollins presented (Rice), a Nova employee who worked in Illinois. 38 F.3d in Renner. Our supreme court stated its central holding at 910. Christopher traveled to Illinois to fire the plaintiff in Rollins concisely: Illinois courts lack personal for poor work performance, upon which the plaintiff sued jurisdiction over any “individual who seeks the protection him in Illinois for defamation and retaliation. Ibid. Despite and benefits of Illinois law, not to serve his personal finding the fiduciary shield argument forfeited, the Seventh interests, but to serve those of his employer or principal.” Circuit noted that “Christopher probably was entitled, prima Rollins, 152 Ill.Dec. 384, [565 N.E.2d at 1318]. The facie at least, to the protection of the fiduciary-shield doctrine court discussed, and rejected, two suggested limitations on because, so far as the record of the trial reveals, he was not in the fiduciary shield doctrine. The fact that the defendant fact in Illinois to serve his personal interests.” Id. at 914. committed a tort (even an intentional tort) in Illinois did not Significant for present purposes, the Seventh Circuit adopted give Illinois courts jurisdiction over him. Rollins, 152 the understanding of the fiduciary shield doctrine expressed Ill.Dec. 384, [565 N.E.2d at 1318]. Also, the defendant's years later by Femal and rejected the understanding expressed receipt of payment for his work in Illinois did not give him months earlier by Renner (though without mentioning the kind of personal interest that would undo the protection Renner): of the fiduciary shield. Rollins, 152 Ill.Dec. 384, [565 N.E.2d at 1318].

So a policeman sent into a state to The [ Rollins ] court explained: “In practical terms, an serve an arrest warrant cannot be employee, especially one in Ellwood's position, has little sued there for false arrest, although or no alternative besides unemployment when ordered his superiors, who sent him, can be to enter another State to carry out the wishes of his by virtue of his having come into employer.” [ Ibid.]. We do not construe this as a the state on their business. That was limitation on the fiduciary shield to only those cases, Rollins. If Christopher's action in like Ellwood's, where a paramilitary employer compels its coming into Illinois to fire and defame employee to perform certain acts in Illinois. The court set Rice was done solely on behalf of out the requisite showing in its statement of the principle. Nova, he is under the fiduciary shield Illinois courts lack jurisdiction over an employee or agent and this [is] regardless of whether who comes under the protection of Illinois law to serve the he exercised discretion rather than interests of his employer or principal, and not to serve his personal interests.

lack jurisdiction over O'Shaughnessy.”); Petrich v. MCY Music World, Inc., 371 Ill.App.3d 332, 308 Ill.Dec. 968, *719 merely carrying out precise 862 N.E.2d 1171, 1183 (2007) (dismissing individual band orders mechanically. members as defendants under the fiduciary shield doctrine where the “band members performed the concert [in Illinois] as ZEEKS employees and the band members were paid by Id. at 912 (emphasis added). ZEEKS”); People ex rel. Hartigan v. Kennedy, 215 Ill.App.3d 880, 159 Ill.Dec. 438, 576 N.E.2d 107, 114–15 (1991) [31] So, even accepting Plaintiffs' submission that the (holding that “the fiduciary shield doctrine does protect Dontzin Defendants and VeneKlasen exercised discretion nonresident corporate representatives,” not just corporate over precisely how they delivered messages on behalf of employees, and so “it is improper to hold them subject to Doig to Bartlow Gallery and Hindman Auctioneers, that alone our jurisdiction merely because they were directors of an does not deprive the Dontzin Defendants and VeneKlasen organization that solicited charitable funds in Illinois under of the fiduciary shield doctrine's protection. And as noted the direction of the president”). earlier, Plaintiffs have conceded that the Dontzin Defendants and VeneKlasen were acting not to serve their personal The claims against the Dontzin Defendants and VeneKlasen interests, but solely on Doig's behalf. Doc. 48 at 18, 21. It accordingly are dismissed under Rule 12(b)(2) for lack of follows that the fiduciary shield doctrine protects them from personal jurisdiction. This disposition makes it unnecessary suit in Illinois. See Rice, 38 F.3d at 112–13 (“The record to reach their Rule 12(b)(6) arguments. contains no evidence that Christopher in firing Rice was on a frolic of his own. He may have disliked Rice but if the policeman in Rollins had happened to dislike the person Conclusion on whom he served the arrest warrant he would not have lost his fiduciary shield against a suit for false arrest. No For the foregoing reasons, the Dontzin Defendants' and ‘personal interests’ that might have induced Christopher to VeneKlasen's motions to dismiss are granted, and the claims fire Rice regardless of Nova's interests, or even Christopher's against them are dismissed for lack of personal jurisdiction. conception of Nova's interests, have been identified. It is See Manez v. Bridgestone Firestone N. Am. Tire, LLC, not as if Rice and Christopher had had some relationship 533 F.3d 578, 584 (7th Cir.2008) (“a dismissal for lack of outside their business one, or as if Christopher had been personal ... jurisdiction ... foreclos[es] future litigation of the trying to harm Nova and line his own pocket, or as if the matter in the court issuing the order, [but] does not preclude two men had been competing for the same promotion, or a plaintiff from refiling and litigating in a proper forum”). as if Christopher had wanted Rice's job for his nephew.”); Doig's motion to dismiss is denied, and the claims *720 Femal, 327 Ill.Dec. 935, 903 N.E.2d at 38 (“If O'Shaughnessy against him may proceed. Doig shall answer the complaint by actively sought to reduce Femal's income, out of animosity October 21, 2014. or embarrassment over his own mistakes, that personal interest, and his discretionary act of coming to Illinois to defame Femal in pursuit of that personal interest, may permit All Citations Illinois courts to exercise jurisdiction over O'Shaughnessy. 125 F.Supp.3d 697 On the other hand, if O'Shaughnessy acted solely to advance Rockwell's interests, Rollins instructs us that our courts

Chadbourne, Stanchfield & Levy [Louis S. Levy and George W. Whiteside of counsel], for the defendant. KeyCite Yellow Flag - Negative Treatment Distinguished by Thome v. Alexander & Louisa Calder Foundation , BLACK, J. N.Y.A.D. 1 Dept., December 1, 2009 133 Misc. 871, 234 N.Y.S. 185 After the plaintiff's opening and also at the end of the plaintiff's case defendant moved to dismiss. I denied both Mrs. ANDREE HAHN, Plaintiff, motions and defendant duly excepted. At the end of v. defendant's case defendant again moved to dismiss, and upon Sir JOSEPH DUVEEN, Defendant. that motion I reserved decision. I told counsel that this course would be followed to enable the court, in case the jury Supreme Court, New York County. disagreed, to then pass upon the motion, because there was April 13, 1929. authority for the proposition that such a motion to dismiss survived a disagreement and permitted the court to decide the CITE TITLE AS: Hahn v Duveen motion in the same way that a motion to set aside the verdict for lack of sufficient evidence could be passed upon after a *871 Libel and slander jury had found for a plaintiff or defendant. This logical course Slander of title --- Action to recover damages for alleged of reserving decision upon a motion to dismiss, until after a slander by defendant consisting of statement that painting verdict or failure to find a verdict, has been followed, but in a owned by plaintiff was not original by Leonardo da Vinci late case that very practice has been approved by the learned --- Evidence sufficient to send case to jury --- Decision Appellate Division of this department. In the case of Stock of motion to dismiss at close of trial reserved until after v. Yellow Taxi Company Mr. Justice PHOENIX INGRAHAM action of jury --- Jury disagreed --- Motion to dismiss reserved *872 decision on a motion to dismiss until after denied and case set down for trial the case had gone to the jury. The jury disagreed and he This action is to recover damages for alleged slander of title afterwards granted the motion to dismiss. The case went to of a painting owned by the plaintiff. The basis of the action is the Appellate Division and his decision was unanimously that the defendant stated that the painting was not an original affirmed (222 App. Div. 804). I stated to counsel in this case by Leonardo da Vinci. The evidence consisted almost entirely that I would follow the same course of reserving decision, of testimony by experts. The court reserved decision on the until after the case had been given to the jury, because it motion made at the close of the trial to dismiss the complaint would be very unfortunate if a failure of the jury to agree and submitted the case to the jury which disagreed. The court should deprive the court of the same opportunity to pass had the right to reserve decision until after the case had been upon the sufficiency of the evidence that it would have had acted upon by the jury. to pass upon the same point where the jury had agreed. The evidence introduced by the plaintiff was sufficient to Neither of the counsel wished to try the case a second time justify the court in sending the case to the jury, especially in and both readily agreed that the suggested course should be view of the fact that the defendant made his statement without followed. After fourteen hours' consideration, and after every seeing the painting. Under such circumstances, the testimony effort on the part of the court to induce the jury to agree, of the expert witnesses was enough to enable the jury to reach they finally, at five-thirteen A. M., announced that it would a verdict. be impossible for them to come to the unanimous decision The motion, therefore, to dismiss the complaint is denied and that the law requires before there could be a verdict. The the case is set down for a new trial. jury was discharged and it then became my duty to pass upon the defendant's motion to dismiss, decision upon which had been reserved until after the jury should have agreed ACTION for slander of title based on statements by defendant or failed to agree. The argument of the motion was most that picture owned by plaintiff was not an original by ably presented by both counsel. If there had been a verdict Leonardo da Vinci. for either the plaintiff or defendant in this case I should not have disturbed it, because under my charge the questions Frueauff, Robinson & Sloan [S. L. Miller of counsel], for the were entirely questions of fact. I shall not discuss at length plaintiff. the law I charged at the trial applying to slander of title, because both sides agreed that in order for a plaintiff to

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 1 Hahn v Duveen, 133 Misc. 871 (1929) 234 N.Y.S. 185 recover she must prove that her property is what she claims coupled with this the qualification that the ‘special damage it to be, because until she establishes the genuineness of her must always be such as naturally or reasonably arises from own property she cannot prove that defendant's statement the uttering of the slanderous words of the defendant.‘ One regarding its spuriousness was false. While I realized that of the first things the jury had to decide was whether or this rule might frequently cast a very heavy burden upon a not Sir Joseph Duveen's statement that the Hahn picture plaintiff whose property was attacked, I strictly followed it was not by Leonardo da Vinci was made in good faith. in my charge and even went the full length of charging the Defendant, who had been put upon the stand by plaintiff as jury that even though there had been a reckless attack upon her first witness, sought to justify what he had said about the plaintiff's property, which may have been false, malicious the Hahn picture by stating that it could not be by Leonardo, and without probable cause to believe the attack was true, because he knew that the genuine La Belle Ferroniere by nevertheless plaintiff could not recover any general damage Leonardo was in the Louvre (No. 1600). He further stated she might have sustained, but only such special damage as that he had ‘always had my (his) own opinion about it. arose directly out of the alleged slander itself. Plaintiff Hahn I told you that I have never changed my mind personally claimed that her picture was an original by Leonardo da Vinci. about the painter of the picture, about the authorship of the Defendant said it was not painted by Leonardo, which was picture.‘ (Stenographer's minutes, p. 536.) ‘The Court: Did tantamount to saying that it was not an original by Leonardo you know whether Leonardo painted the picture or not? The and not a replica painted from the same model nor a duplicate Witness (defendant): Of course, it was my opinion that he painted from the original picture by Leonardo. There were painted it. Yes, certainly, I know that he painted the picture. two general contentions. Plaintiff claimed that her sacred The Court: Did you know it? You knew it? *874 The Witness rights of property had been invaded in that defendant *873 (defendant): Yes.‘ (Stenographer's minutes, p. 538.) Later in falsely and maliciously stated to a reporter of the New York the case plaintiff put in evidence the following letter, which World that the Hahn picture was not a genuine Leonardo da was produced by defendant: ‘Messrs. Duveen Brothers, Inc., Vinci; that any expert who pronounced it genuine was not an 720 Fifth Avenue, New York--Gentlemen: I have received expert, and that the genuine La Belle Ferroniere by Leonardo your letter of the 20th of July, with regard to Mr. John J. da Vinci was in the Louvre (No. 1600). Plaintiff said these Harding. I have in no way changed my opinion about the statements by a man of defendant's position in the world of (Hahn) picture ascribed to da Vinci, of which you sent us art, who had not seen the picture, had caused her special a photograph. I am convinced that it is an old copy of the damage by causing the Kansas City Art Museum to call off picture in the Louvre. I do not think it is contemporary, but negotiations then in progress regarding the purchase of the is a little later than the Louvre picture. As for the authorship Hahn picture. Defendant, on the other hand, contended that of the picture you write about, I do not know who painted the sacred right of free speech would be destroyed if such it, but the Louvre picture is not passed by the most eminent statements of opinion as he gave to the New York World connoisseurs as having been painted by Leonardo da Vinci, could not be made in good faith regarding a picture that was and I may say that I am entirely in accord with their opinion. It before the public for sale and which had been the subject of is suggested that the Louvre picture is very close to Leonardo newspaper articles in America and France. Thus there went to da Vinci, but is not by his hand; probably it was painted by the jury the sharp issue between the rights of property and the Boltraffio. I quite appreciate Mr. Harding's position in the rights of free speech. At the trial I charged the jury: ‘If you matter. Kindly inform him, with my compliments, that I have believe defendant's statements about plaintiff's picture were no other reasons to give for my stand in the matter, and I do false, there (was) is nothing in the occasion alone upon which not think it is even worth while consulting with Mr. Berenson, defendant's statement was made, to rebut or negative (such) as he is one of the experts above mentioned. Believe me, inference of malice, but it is for you to say whether or not the yours faithfully, Joseph Duveen.‘ Defendant put in evidence statement was made by defendant in good faith. In so deciding a Paris newspaper interview by Harry Hahn, the husband of you will consider the actual language of the statement itself, plaintiff, disclaiming at that time any contention that the No. as well as all the rest of the evidence before you.‘ Quoting 1600 in the Louvre was not a genuine Leonardo. It will be Odgers on Libel and Slander (p. 80) I further charged the seen, therefore, that there was ample evidence upon which jury that ‘whenever a man unnecessarily intermeddles with to go to the jury upon the question of the good faith of both the affairs of others, with which he is wholly unconcerned, sides. In proceeding to consider whether there was sufficient such officious interference will be deemed malicious and evidence before the jury to warrant a verdict, the first and, he will be liable if special damage follow.‘ I, of course, indeed, the main point is what sort of evidence the owner

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 2 Hahn v Duveen, 133 Misc. 871 (1929) 234 N.Y.S. 185 of a painting is required to present to a jury to prove that are two ways that experts in this case can help you with their a painting is genuine. The law should be flexible enough to opinions. One is by their study of the authentic history of be just, and judicial methods and rules of evidence should in a painting. The other by their study of the methods used or some measure conform to existing conditions. materials employed by the painters or schools of painting of the period in which it is claimed the pictures were painted. While we cannot take things for granted, less exactiture is Because a man claims to be an expert, that does not make sometimes required in proof now than before. A new situation him one. You are to determine just how much of an expert exists in the world of art. Formerly the church, the state a witness is, and you will determine that by his knowledge, and a few powerful men owned all the fine pictures and his experience, his study and his ability to assimilate and statuary. Their experts were men who created canvasses or apply this knowledge, study and experience. I warn you that marbles. As some of the owners became impoverished it in considering the criticisms by one expert of another you will became necessary to sell their art treasures. Frequently, as apply the same rule that I have already given you regarding antiques passed from family to family or from government their conclusions; that is, that you will give them weight only to government, their authenticity was frequently questioned. as they are borne out by reasons founded on facts. * * * Finally, the pendulum of artistic criticism swung slower and The ground for the admission of expert opinion evidence is slower, until it usually stopped at an opinion which remained necessity. The *876 administration of justice requires that, practically standard. But it was always subject to a renewal under proper limitations, a jury should receive the assistance of criticism in books or in the press whenever a critic *875 of those especially qualified by experience and study to leveled his attacks at a certain work. When wealth increased, express an opinion on questions of fact relating to art, science and especially when a few men acquired great wealth, and or trade. The rule has been stated by the New York Court rich men became ambitious to become owners of works of of Appeals as follows: 'It may be broadly stated as a general art, new methods arose whereby careful collectors could with proposition that there are two classes of cases in which expert reasonable certainty determine the authenticity of art objects. testimony is admissible. To the one class belong those cases In cases where every witness, as well as the producer, was in which the conclusions to be drawn by the jury depend dead centuries before, the question of authenticity arose, some upon the existence of facts which are not common knowledge method of establishing authenticity other than the testimony and which are peculiarly within the knowledge of men whose of living witnesses was resorted to. This method was the experience or study enables them to speak with authority upon reading of books by men who had studied the materials and the subject. If, in such cases, the jury with all the facts before methods of old painters, and taking the opinions of such them can form a conclusion thereon, it is their sole province experts. It happens that but few of these expert critics are to do so. In the other class we find those cases in which themselves painters. If they were their testimony could be the conclusions to be drawn from the facts stated as well as quickly tested by profert of their own works. Many critics knowledge of the facts themselves depend upon professional frankly admit their lack of ability to paint; others state equally or scientific knowledge or skill not within the range of frankly that they are critics because it pays them better. It ordinary training or intelligence. In such cases not only the is far from my intention to criticise real critics, but by real facts, but the conclusions to which they lead, may be testified critics I mean those who begin with a fact. In my charge to the jury I said upon the subject of experts: ‘Before charging to by qualified experts' ( Dougherty v. Milliken, 163 N. Y. you on the general law of the case, I wish to say a word 527; 57 N. E. 757; Richardson's Cases in Evidence, p. 954; as to expert testimony. You will be wary in accepting the editorial, New York Law Journal, March 17, 1927). * * * In conclusions of experts when such conclusions are not founded all cases in which the facts can be placed before the jury by upon knowledge, experience and study. An expert is no better any witness, skilled or unskilled, who is capable of describing than his knowledge. His opinion is taken or rejected because them accurately, so that a jury of average intelligence and he knows or does not know more than one who has not training can understand them and form a proper conclusion studied a particular subject. Assuming that he is of equal based on them, expert opinion evidence is inadmissible. * * * intelligence with one who has not studied or specialized in But where the subject-matter is of such a technical nature that a certain subject, his opinion is better by just so much as he the proper conclusion to be drawn from the facts depend upon has intelligently considered the subject. But the opinion of professional or scientific knowledge or skill, qualified experts some experts who have studied a subject less is better than may express their opinion as to the proper inference to be that of others who have studied that subject more, because drawn from a given set of facts as an aid to the jury in reaching they are cleverer in applying what they have learned. There

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 3 Hahn v Duveen, 133 Misc. 871 (1929) 234 N.Y.S. 185 their own conclusion in the case before them. In Mayor v. case, and I, therefore, deny defendant's motion to dismiss. Pentz (24 Wend. N. Y. 668) the court reasoned as follows: Point has been made by counsel for plaintiff in his brief that 'Indeed it would be more logically accurate to say that mere defendant by moving to dismiss because the plaintiff failed opinion, even of men, professional or expert, is not admissible to make out his case by a fair preponderance of the credible as such; but that facts having been proved, men skilled in such evidence or by the greater weight of the evidence waived his matters may be admitted to prove the existence of other more right to dismiss because plaintiff had not produced sufficient general facts or laws of nature, or the course of business, as the evidence. But I do not limit my decision to such a narrow case may be, so as to enable the jury to form an inference for point. The point I have to decide upon this motion to dismiss themselves. Thus, the existence of certain appearances in the is not whether the Hahn picture or the Louvre picture No. dead body having been proved, the chemist testifies that such 1600 is a genuine Leonardo. The only question I have to pass appearances invariably or generally indicate the operation upon here is whether there was sufficient evidence before the of some powerful chemical agent. His scientific opinion jury at the end of the defendant's case to enable the jury to is in fact his testimony to a law of nature.’‘ (Richardson render a verdict for plaintiff or defendant. Concretely put, on Evidence, § 527, p. 387.) ‘Whether any subject is so *878 the real point is whether a dealer or an expert, however far a matter of science, *877 art or trade, as to afford famous (and it is conceded that defendant is one of the greatest reasonable ground for belief that the jury will be aided by dealers in old paintings, although he modestly denies that he the opinion of an expert is a preliminary question for the trial is an expert in the technical sense), can, without seeing a judge. Within limits prescribed by reason, the admissibility picture, declare that it is not the product of a certain master, of the judgments of experts is a matter of administration. * and then when damages are sought for the result of a statement * * On the general subject of qualifications, it is likewise that plaintiff must prove is false, malicious and without important to notice the short and satisfactory administrative probable cause, can contend that the proof of genuineness rule that the mental powers and other acquired experience of offered by plaintiff from the mouths of witnesses who have a witness must be such as to make his judgment potentially studied the admittedly genuine products of a certain master, helpful to the jury.‘ (Chamberlayne Modern Law of Evidence, familiarized themselves with the material upon which the §§ 2375, 2382.) I have profound respect for critics whose picture is painted, the pigments used by the artist, his manner conclusions rest upon facts. What they say should be carefully of treatment and every characteristic that distinguishes that considered by a jury. The opinions of any other kinds of master's work, is not enough to enable a jury to reach a experts are as ‘sounding brass and tinkling cymbals.‘ Some verdict. I do not believe a defendant in such circumstances can of them expound their theories largely by vocal expression contend that the testimony of expert witnesses is not enough and gesture; others wander into a zone of speculation founded to enable the jury to reach a verdict. And this is especially upon nothing more tangible than ‘psychological correlation.‘ true, because defendant had no way other than through the I do not say that this is as absurd as it sounds to a layman, statements of expert witnesses to reach the conclusions that but it is too introspective and subjective to be the basis of formed the basis of his opinion given to the New York World, any opinion a jury can pin its faith upon. There are also which statement is the basis of Mrs. Hahn's claim. I make experts who admit that they have no formulas, rules or ability these observations because defendant's memorandum refers to produce any artistic thing, but who claim to have a sixth to the case of Jendwine v. Slade (2 Esp. 572), a case decided sense which enables some of them after they have seen a about 1799. While the court there said: ‘There being no way picture even for five minutes to definitely determine whether of tracing the picture itself, it could only be matter of opinion it is genuine or not. I do not say that this faculty may not whether the picture in question was the work of the artist be possessed by some men, but it is not based upon enough whose name it bore, or not,‘ it did after its decision, for some objectiveness to convey definite meaning to a jury. It does reason, refer the cause to arbitration. I do not know upon what happen, though, that some or all of these experts are to- evidence the arbitrators gave their decision, but the learned day counseling the purchase or rejection of art objects of chancellor said this ‘opinion‘ evidence was all the evidence great value. The question, therefore, arises whether their available. testimony is competent, how competent it is, and what its probative value is. After carefully considering the really great The court's opinion quoted in the Jendwine case was written arguments offered by counsel in this case I am of the opinion over one hundred years before Professor Laurie wrote on that expert testimony of the proper sort, in connection with Pigments and Mr. Berensen wrote on Italian paintings, and the other facts, is enough to have warranted a verdict in this nearly one hundred years before the X-ray was developed by Professor Roentgen. I have no doubt about the competency of

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Hahn v Duveen, 133 Misc. 871 (1929) 234 N.Y.S. 185 the proof given by expert witnesses as to the authenticity of a stone support,‘ mentioned in the salon of the director of the pictures they testified about. Its weight is another matter, buildings at the Hotel of the Surintendance (superintendent's and that was for the jury. The amount of importance to be office) by Jeaurat (1760) (J) and by du Rameau (1784); the attached to what the experts say depends entirely upon the latter identifies it with Anne Boleyn and declares it to be in factual basis for their conclusions. It required some mental ‘good condition‘ (D. R.). Engeraud's note in the catalogue agility to follow some of the experts from their positive says that there is now actually in the Louvre Gallery, number testimony on the stand to the diametrically opposite views 1600, heights o. m. 62, width o. m. 44. The various catalogues they had expressed in their books long before. The case thus of the Louvre putting a faulty construction on Bailly's text resolved itself into a battle between experts. Plaintiff claims had confused this portrait (the Hahn portrait) with that of La that her picture was the original La Belle Ferroniere painted Belle Ferroniere. M. Durrieu has rectified this error; *880 it by Leonardo da Vinci and was formerly in the Louvre Gallery is presumed that this portrait (the picture now in the Louvre) in Paris, and she bases her contentions upon the testimony is that of Lucretia Crivelli, mistress of Louis Le More (S. M., that the *879 Hahn picture is out of proportion; that it is too pp. 1060-1-2-3). Defendant's witnesses insist that the X-rays short at the bottom for its height at the top, which plaintiff of the Hahn picture do not sustain the plaintiff's contentions claims shows that it was cut off at the bottom. Plaintiff also that it is the picture referred to in the Lepecie catalogue. There claims that it contains a band of paint running from left to was much X-ray evidence regarding the picture number 1600 right at the bottom of the picture, and that this band was of the Louvre. This would have had practically no importance painted over the picture some time after it was first painted. if defendant had not said that either the Louvre picture (1600) And plaintiff claims that the X-ray shows that under this band or the Hahn picture was genuine. In other words, if the jury are shadows which indicate that before the band was painted was satisfied that the Louvre picture was not genuine, under over, the picture had the rest of the arm and part of the hand this statement of the defendant they might give that fact some which held the piece of lace, as described at page 3 in a weight as establishing the authenticity of the Hahn picture. catalogue of Engerud. In this catalogue under the subject of Defendant at the trial submitted a great deal of valuable Leonardo da Vinci (beginning at page 2) on page 3 there testimony from experts recognized as men of world-wide is a quotation from the catalogue of Nicholas Bailly, which reputation upon the authenticity of the two pictures, the Hahn was published in 1709 (S. M., p. 1061). This quotation is picture and the Louvre picture, and some very illuminating as follows: 3 2 (This number 3 2 is the catalogue number evidence upon the X-rays of the two pictures. The points I of the Leonardo pictures). A picture representing a portrait have referred to comprise but a small part of the evidence of a woman; small life-size figure, being 22 pouces (1.066 that was before the jury. I merely list them because they are inches) high by fifteen and a half pouces wide, in gilt border some of the evidence the jury had before them when they (frame). Versailles, Small Gallery of the King, mentioned thus disagreed. Much as I regret that I cannot write an opinion by Pere Dan (1642) at Fountainbleau, as probably forming from which there can be an immediate appeal, so that the law part of the collection of Francis First (who reigned from 1515 may be at once finally fixed without the time and expense of to 1547); portrait of a Duchess of Mantua-Inventory of Le another trial, I am constrained to hold that there was sufficient Brun (1683), No. 16, with this note added: ‘Seen in Paris evidence before the jury to enable them to render a verdict. the 8th of August, 1690‘ (L. B.) (Le Brun). Houasse (1691) Indeed, it took them fourteen hours to finally decide that mentions it in Paris, with this note added, under date of the they could not unanimously agree. Even a cursory reading 29th of October, 1692, ‘Mr. Paillet has given a receipt for of the record shows the close attention they gave the case, these 2 pictures, the other one was a picture by Bellini, to M. and the highly intelligent questions they asked the experts. Houasse, which are in the small gallery at Versailles‘ (H.). To the lay mind, which often resents any verdict that does Paillet mentions it at Versailles and declares it to be painted not accord with opinions they have formed with or without on wood (P.). In 1696 in the Gallery at Versailles (V). In 1737 hearing the facts of a case, and which resents the failure (it) is still in the Versailles Gallery, where it is believed to be of twelve certain men to exactly agree on every point in a the portrait of Anne Boleyn (G. R.). Lepicie (1752) describes case that took nearly four weeks to try, a disagreement offers it thus: ‘This lady is dressed in a red bodice, with sleeves of argument for the abolition of juries. But my own observation the same color, attached with green cords; her hair is dressed is that their verdicts are usually right. With the world's most short and smooth; her collar is trimmed with a cord; she holds famous experts as witnesses, and with the shortening of the a piece of mesh lace and her forehead is encircled by a black case that can easily follow a second trial, it is quite possible cord with a diamond in the centre. The figure has before her that another jury may quickly render a verdict. Motion to

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 5 Hahn v Duveen, 133 Misc. 871 (1929) 234 N.Y.S. 185 dismiss is denied and case is restored to general calendar to Copr. (C) 2019, Secretary of State, State of New York be set for trial by stipulation, or upon motion of either party.

of visual art protected under Visual Artists Rights Act (VARA); once photographs were 384 F.Supp.2d 83 developed, photographer and artist reviewed United States District Court, District of Columbia. them and discussed which frames would make Gary D. LILLEY, Plaintiff, good studies for paintings, and photographer v. turned possession of prints over to artist. 17 Renee STOUT, Defendant. U.S.C.A. § 101.

No. Civ.A. 02–2290(PLF). 1 Cases that cite this headnote | July 19, 2005. [3] Copyrights and Intellectual Property Synopsis Pictorial, Graphic, and Sculptural Works Background: Photographer brought action against artist, The term “for exhibition purposes only” in alleging violation of Visual Artists Rights Act (VARA) and Visual Artists Rights Act's definition of “work Copyright Act. Artist moved to dismiss. of visual art” cannot be limited to the author's purpose at the moment she clicks the camera's shutter; instead, it seems more reasonable that the intent or purpose of the author be examined as of [Holding:] The District Court, Paul L. Friedman, J., held that the time the unique work in question is produced. photographic prints that photographer gave to artist were not produced for exhibition purposes only. 17 U.S.C.A. § 101.

1 Cases that cite this headnote Motion granted in part and denied in part. [4] Copyrights and Intellectual Property Procedural Posture(s): Motion to Dismiss. Pictorial, Graphic, and Sculptural Works Visual Artists Rights Act (VARA) does not pose West Headnotes (6) a per se bar to protection for preparatory works, such as studies. 17 U.S.C.A. § 101. [1] Copyrights and Intellectual Property Pictorial, Graphic, and Sculptural Works Both photographic prints and negatives qualify [5] Copyrights and Intellectual Property as still photographic images and both therefore Pictorial, Graphic, and Sculptural Works are eligible for protection as works of visual art While actual photographic negative might be under Visual Artists Rights Act (VARA). 17 protected under Visual Artists Rights Act U.S.C.A. § 101. (VARA), its status is irrelevant to prints subsequently produced from it; existence of 2 Cases that cite this headnote rights under VARA depends on precisely these distinctions between an original artwork and

[2] Copyrights and Intellectual Property various reproductions of it. 17 U.S.C.A. § Pictorial, Graphic, and Sculptural Works 101. Photographic prints that photographer gave to 1 Cases that cite this headnote artist were produced by developing negatives for primary purpose of assisting artist by providing studies for paintings artist planned to create, [6] Copyrights and Intellectual Property and thus, they were not produced for exhibition Pictorial, Graphic, and Sculptural Works purposes only, as required to qualify as works

It is the original or limited edition still “involved in a personal relationship,” id. at ¶ 10, the failure of photographic image, whether in print or negative which has led, at least in part, to this dispute. See id. at Exh. D. form, that garners the rights the Visual Artists In the summer of 1998, Stout asked Lilley to “take some Rights Act (VARA) bestows. 17 U.S.C.A. § photographs at a friend's home ... as studies for paintings 101. [Stout] planned to create.” Second Am. Compl. at ¶ 12. At the friend's home, Lilley photographed a “red” room using his own camera and choosing the subject matter of each photograph. Id. After the photographs were developed, Stout Attorneys and Law Firms “reviewed [them] with [Lilley] and discussed which frames would make good studies” for her paintings. Id. at ¶ 13. *84 Susan M. Kayser, Howrey Simon Arnold & White, After this review session, Lilley allowed Stout to keep the Washington, DC, for Plaintiff. photographic prints and negatives so that she could finalize her project. Id. at ¶¶ 13, 15. Brian Hill, Miller & Chevalier, Washington, DC, for Defendant. Stout created one painting from the photographs and decided to use the photographs themselves as part of an artwork. Second Am. Compl. at ¶¶ 14–16. This resulting work, entitled MEMORANDUM OPINION “Red Room at Five,” is central to the parties' dispute. Lilley claims that he agreed to allow Stout to use the photographs of PAUL L. FRIEDMAN, District Judge. the “red” room provided that he “receive a complete copy of the artwork and proper attribution for the photographs.” Id. at This case arises from a disputed collaboration between the ¶ 16. Stout agreed *85 to these terms and later gave Lilley two named parties in the production of a work of art. Plaintiff a copy of the work. Id. at ¶ 17. Gary Lilley, a photographer, claims that photographs he produced were incorporated without proper attribution into “Red Room at Five” consists of six of Lilley's photographs an artwork, “Red Room at Five,” created by defendant Renee that had been “selected and arranged by [Stout] and placed Stout. Lilley claims that Stout's acts constituted a violation in a binder with a red cover and illustration.” Second Am. of his rights under the Visual Artists Rights Act of 1990 Compl. at ¶ 17. When Lilley received the work, it did (“VARA”), Pub.L. No. 101–650 (tit.VI), 104 Stat. 5089, not include a colophon, “a notice that accompanies a work 5128–33 (codified in various sections of Title 17 of the United and provides information relating to the publication and States Code), the Copyright Act, 17 U.S.C. § 101 et seq., authorship.” Id. Lilley subsequently requested a copy of the and the Lanham Act, 15 U.S.C. § 1501 et seq. He also makes colophon but was told it was incomplete. Id. at ¶ 18. The claims for breach of contract and unjust enrichment. Stout has personal relationship between the parties ended in August moved to dismiss the VARA and the Copyright Act claims for 2000, and Lilley continued to request copies of the colophon failure to state a claim. By order of March 31, 2005, the Court to no avail. Id. at ¶¶ 19–20. Finally, in April 2001, Lilley granted Stout's motion to dismiss with respect to the VARA received a draft colophon that stated: “Photographs by the claim but denied the motion with respect to the Copyright Act artist and by Gary Lilley at the direction of the artist.” claim. This Opinion explains the Court's March 31 Order. Id. at ¶¶ 21–22. Lilley contends that the language of the colophon amounts to improper attribution of his “work[s] of visual art” under VARA. Id. at ¶ 39. In addition, Lilley I. BACKGROUND claims that Stout is selling both “Red Room at Five” and individual photographs taken by Lilley as her own works, Plaintiff Gary Lilley is a “photographer [who] has been thereby violating the Copyright Act. Id. at ¶¶ 29, 33. taking photographs since at least 1992.” Second Amended Complaint (“Second Am. Compl.”) at ¶ 7. From 1993 to mid– 2000, he and defendant Renee Stout, who is also an artist, II. DISCUSSION “collaborated on several projects.” Id. at ¶¶ 9–10. For an unspecified period of time during that period, they also were

On a motion to dismiss for failure to state a claim under intentional distortion, mutilation, *86 or other modification Rule 12(b)(6) of the Federal Rules of Civil Procedure, the of his or her work, and (b) prevent any destruction of a work Court assumes the truth of the facts alleged and may grant of recognized stature. See 17 U.S.C. § 106A(a)(3). the motion only if it appears that plaintiff will be unable to As “moral rights” legislation, VARA vested immutable prove any set of facts that would justify relief. See Summit rights in an author that generally could not be assigned Health, Ltd. v. Pinhas, 500 U.S. 322, 325, 111 S.Ct. 1842, or transferred, see 17 U.S.C. § 106A(e), and that are 114 L.Ed.2d 366 (1991); Conley v. Gibson, 355 U.S. 41, “independent of the exclusive rights provided in [Section] 45–46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957); Browning v. 106.” Id. Thus, ownership of the copyright in a work is irrelevant to an author's standing to bring a VARA claim. Clinton, 292 F.3d 235, 242 (D.C.Cir.2002); Sparrow v. Indeed, even if an author wishes to waive his or her rights United Air Lines, Inc., 216 F.3d 1111, 1117 (D.C.Cir.2000). under VARA, such a waiver can be effected only by a written The complaint “is construed liberally in the [plaintiff's] instrument signed by the author that specifically identifies favor, and [the Court should] grant plaintiff[ ] the benefit of the work and the specific uses of that work. See 17 U.S.C. § all inferences that can be derived from the facts alleged.” 106A(e). Kowal v. MCI Communications Corp., 16 F.3d 1271, 1276 Absent this waiver, a court must consider whether the artistic (D.C.Cir.1994); see Razzoli v. Fed. Bureau of Prisons, work qualifies as a “work of visual art.” Recognizing the 230 F.3d 371, 374 (D.C.Cir.2000); Taylor v. FDIC, 132 broad scope of protections afforded to eligible authors, Congress created a tightly circumscribed definition for F.3d 753, 761 (D.C.Cir.1997); Harris v. Ladner, 127 F.3d qualified works. See House Report at 6920 (noting that 1121, 1123 (D.C.Cir.1997). While the complaint is to be the Congressional hearings “revealed a consensus that the construed liberally in plaintiff's favor, the Court need not bill's scope should be limited to certain carefully defined accept inferences drawn by the plaintiff if those inferences types of works and artists”). Thus, VARA established a new are unsupported by facts alleged in the complaint; nor must and distinct genus of art: “work[s] of visual art,” which the Court accept plaintiff's legal conclusions. See Kowal v. differs in many respects from the pre-existing categories in MCI Communications Corp., 16 F.3d at 1276. Section 102(a) of the Copyright Act. See 3–8D NIMMER ON COPYRIGHT § 8D.06(A)(1) (2004).

A. Visual Artists Rights Act of 1990 [1] For a photographic work to qualify for protection as a “work of visual art” under VARA, it must meet the Plaintiff has alleged a claim under the Visual Artists statutory definition: “a still photographic image produced for Rights Act of 1990 (“VARA”). Congress enacted VARA to exhibition purposes only, existing in a single copy that is “protect[ ] both the reputations of certain visual artists and signed by the author, or in a limited edition of 200 copies the works of art they create.” H.R. Rep No. 101–514, at or fewer that are signed and consecutively numbered by the 7, reprinted in 1990 U.S.C.C.A.N. 6915 (“House Report”). author.” 17 U.S.C. § 101. 1 The Court concludes that the These protections are enumerated in the individual rights of “attribution” and “integrity,” known collectively as “moral statutory term “still photographic image” in Section 101 rights.” Id. As described in the House Report accompanying has a plain and unambiguous meaning. It is clear from a plain the legislation, “[t]he former ensures that artists are correctly reading of the statute and the specific context in which the identified with the works of art they create, and that they language is used that both photographic prints and negatives are not identified with works created by others. The latter qualify as “still photographic image[s]” and that both allows artists to protect their works against modifications therefore are eligible for protection as “work[s] of visual art” and destructions that are prejudicial to their honors or under VARA. See House Report at 6921 (definition of a “still reputations.” Id. Specifically, the rights of attribution include photographic image” encompasses a wide range of artistic the right to (a) claim authorship of a work he or she created, works, including “positives (for example, prints, contact and (b) prevent the use of one's name as the author of a work sheets, and transparencies such as slides) and negatives that he or she did not create. See 17 U.S.C. § 106A(a)(1)- (negative photographic images or transparent material used (2). The rights of integrity permit an author to (a) prevent any for printing positives) of a photograph.”). See also Flack

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 3 Lilley v. Stout, 384 F.Supp.2d 83 (2005) 75 U.S.P.Q.2d 1843 v. Friends of Queen Catherine Inc., 139 F.Supp.2d at 526, course of creating her art, a photographer almost always will 534 (S.D.N.Y.2001) (citing House Report 101–514 to support create two images, first a negative and then a print, for which the assertion that “even certain photographic negatives are VARA protection may be justified. As plaintiff Lilley notes, covered” by VARA). the term “for exhibition purposes only” cannot be limited to the author's “purpose” at the moment she clicks the camera's [2] In addition to demonstrating that photographs or shutter. If that were the case, then only the photographic negatives are “works of visual art,” a plaintiff to succeed negative would ever be protected, as its production and under VARA also must satisfy the remaining statutory purpose were contemporaneous with the click of the shutter. requirements under the Visual Artists Rights Act: intent to Instead, it seems more reasonable that the intent or purpose of the author be examined as of the time the unique work in exhibit, uniqueness, and signing. See 17 U.S.C. § 101. 3 Defendant argues that plaintiff's complaint fails to make a question is “produced.” sufficient intent to exhibit allegation under the statute—that is, that his prints or negatives were *87 “produced for This method of analysis comports with the uncertain time exhibition purposes only”—or that the prints and negatives in frame expressed in the term “produced” in Section 101 question have been “signed by the author.” See Defendant's and responds to the reality that a negative “produced” in one Memorandum in Support of Motion to Dismiss at 11– instant and a print “produced” in another may correspond to 13. According to the defendant, plaintiff's claim that the different intentions or purposes of the author. While courts photographs at issue were taken “as studies for paintings have expounded on how the process of practical camera defendant planned to create” is sufficient to demonstrate that handling “imbue[s] the medium with almost limitless creative they fall outside the relevant definition of a “work of visual art.” Id. at 13–14. Plaintiff replies that he has averred the potential,” SHL Imaging, Inc. v. Artisan House, Inc., 117 facts necessary to demonstrate the proper intent to exhibit and F.Supp.2d 301, 310 (S.D.N.Y.2000), few *88 opportunities that “community standards” should be applied to the signing have arisen for courts to explore the opportunity for creativity requirement. See Plaintiff's Opposition Memorandum at 9– in the process of developing negatives or producing prints. As many professional photographers and artists recognize, 13. 2 however, the process of producing a print from a negative contains room for originality. Thus, plaintiff Lilley's intent The question of intent to exhibit is especially challenging when clicking the shutter of his camera and creating the in the realm of photography. While it may appear simple negatives is irrelevant to his claim. His probably different to distinguish between an amateur photographer taking purpose in developing the negatives to produce the prints is snapshots on vacation and an artist producing photographs the real issue. Were they “produced for exhibition purposes “for exhibition only,” few artists would characterize their only”? work as the latter. Indeed, many notable “fine art” photographers pursued their work in quite utilitarian contexts. [4] Plaintiff's case presents a good example of the potential See Jennifer T. Olsson, Note: Rights in Fine Art Photography: for the fact that a single work of visual art may be created for Through a Lens Darkly, 70 TEX. L.REV. 1489, 1499–1500 a variety of purposes. As a result, it may be difficult to assign (1992) (“Eugune Atget's revered photographs of a vanishing a specific intent. Plaintiff Lilley admits that the photographs Paris were initially made as reference documents for painters were taken to serve “as studies for paintings defendant [Stout] to copy. Weegee photographed crime scenes in the service of planned to create.” Second Am. Compl. at ¶ 11. Contrary to photojournalism.... August Sander's self imposed mission was defendant's assertion, VARA does not pose a per se bar to to create a virtual catalog of the German people.”) protection for preparatory works, such as studies. See, e.g.,

[3] The technical realities of photography also complicate Flack v. Friends of Queen Catherine Inc., 139 F.Supp.2d the question. At least three distinct phases comprise the 526 at 533 (holding that a clay model, which was part of a photographic process that results in a positive print: practical larger, unfinished bonze sculpture, qualified as a “work of camera handling, negative development, and printing. See, visual art.”) In addition, it may be fair to infer from the facts e.g., 25 THE NEW ENCYCLOPÆDIA BRITANNICA 782– plaintiff alleges—at least on a motion to dismiss for failure to 89 (15th ed.1998) (explaining the photographic process). As state a claim—that, when taking the photographs of the “red” discussed above, both photographic negatives and prints fit room, Lilley intended to exhibit the resulting prints. This the definition of a “still photographic image.” Thus, in the inference could be drawn from plaintiff's artistic background,

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Lilley v. Stout, 384 F.Supp.2d 83 (2005) 75 U.S.P.Q.2d 1843 past experience as a photographer, and previous collaboration with defendant and turning over possession to her. It is with the defendant to create art for exhibition. While these difficult to conceive how plaintiff could have exhibited inferences might be relevant if the issue before the Court these prints once they were incorporated into “Red Room at related to the negatives Lilley produced, the circumstances of Five.” Because plaintiff's own assertions demonstrate that the the photographic prints can be resolved more easily. discrete photographs at issue were not produced *89 solely for exhibition purposes, his photographic prints fail to satisfy Plaintiff's own assertions demonstrate quite clearly that the the definition of “work[s] of visual art” in Section 101, discrete photographic prints at issue were not “produced for and his amended complaint thus fails to state a claim under 4 exhibition purposes only.” 17 U.S.C. § 101 (emphasis VARA. Defendant's motion to dismiss plaintiff's complaint added). His complaint states that once the photographs were for failure to state a claim therefore must be granted. 5 developed, he and the defendant “reviewed the photographs ... and discussed which frames would make good studies for a series of paintings.” Second Am. Compl. at ¶ 13. The B. Remaining Claims photographic prints at issue—those that were “reviewed” with defendant and comprise “Red Room at Five”—therefore With respect to plaintiff's remaining claims under the were not “produced for exhibition purposes only.” Rather, Copyright Act, the Court cannot conclude that plaintiff will they had the primary purpose of assisting defendant Stout in be unable to present any set of facts entitling him to relief. The her artistic endeavor. Indeed, the only suggestion that plaintiff complaint, though lacking in detail, alleges sufficient facts to had any alternative motivation for producing the images make out a prima facie case on these claims. Accordingly, comes from a statement in his opposition to the motion that he defendant's motion to dismiss plaintiff's claim under the “alleged that the photographs were intended for ‘exhibition Copyright Act is denied. purposes only.’ ” See Plaintiff's Opposition to Defendant's Renewed Motion to Dismiss at 12. This statement, however, An Order consistent with this Opinion, dismissing Count II appears nowhere in plaintiff's amended complaint. As a result, of the Amended Complaint (the VARA claim) and denying under the “well-pleaded complaint rule”, it is not an allegation the motion to dismiss Count I (copyright infringement), was that has been pled and may someday be proved at trial. issued on March 31, 2005. Bush v. Clark Const. & Concrete Corp. 267 F.Supp.2d. 43, SO ORDERED. 45 (D.D.C.2003) (citing Caterpillar, Inc. v. Williams, 482 U.S. 386, 392, 107 S.Ct. 2425, 96 L.Ed.2d 318 (1987)). All Citations [5] [6] But even if the claim had been pled in the complaint, it is belied by plaintiff's acts of reviewing the photographs 384 F.Supp.2d 83, 75 U.S.P.Q.2d 1843

Footnotes 1 The extent of VARA coverage for photographic images appears to be a question of first impression. While previous courts have addressed sculpture, see Carter v. Helmsley–Spear, Inc., 71 F.3d 77 (2d Cir.1995), murals, see Pollara v. Seymour, 150 F.Supp.2d 393 (N.D.N.Y.2001), and public art, see Martin v. City of Indianapolis, 192 F.3d 608 (7th. Cir.1999), it appears that none squarely addressed photographic works outside of the mass media context. See, e.g., Berrios Nogueras v. Home Depot, 330 F.Supp.2d 48 (D.P.R.2004) (considering the use of photographic reproductions in publicity brochures). 2 Because of its conclusion regarding the intent to exhibit requirement, the Court need not reach plaintiff's “community standards” argument. 3 It may be relevant here that the statute does not use the word “created,” which has a specific statutory definition, but instead uses the word “produced,” which is undefined. The statutory language speaks of “a still photographic image

produced for exhibition purposes only.” 17 U.S.C. § 101(2). “Created” occurs when a work is “fixed in a copy or

phonorecord for the first time.” Id. at § 101.

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 5 Lilley v. Stout, 384 F.Supp.2d 83 (2005) 75 U.S.P.Q.2d 1843 4 Contrary to plaintiff's assertion, the status of his negatives cannot redeem the failure of the photographic prints to fulfill the statutory requirements of VARA. As discussed above, plaintiff's claim that the negatives fall under the definition of a “still photographic image” is valid, but his subsequent contention that any “prints made from those negatives” are also covered merely because the negatives are covered is implausible. Otherwise, one could avoid the specific intent requirement (not to mention the signing and numbering requirement) for all still photographic images—regardless of the number of prints subsequently produced—merely by claiming VARA protection in the photographic negative from which the numerous prints were made. While the actual negative might be protected under VARA, its status is irrelevant to prints subsequently produced from it. “[T]he existence of rights under VARA depends on precisely these distinctions between

an original artwork and various reproductions of it.” Silberman v. Innovation Luggage, Inc., 67 U.S.P.Q.2d 1489, 1494 (S.D.N.Y.2003). It is the original or limited edition still photographic image, whether in print or negative form, that garners the rights VARA bestows. See House Report at 6921. 5 While, in view of this conclusion, it is not necessary to discuss the signing requirement of the statute, it does not appear from anything in the record that plaintiff's original photographs were signed by him. See Defendants' Joint Opposition to Plaintiff's Motion to Amend Complaint at 7 (“Plaintiff utterly confuses his original photographs, which he never signed, with ‘Red Room at Five,’ which is a work completed by Ms. Stout, using altered copies of Plaintiff's alleged photographs, and signed by her.” ) (emphasis in original).

2012 WL 7964120 (N.Y.Sup.), 2012 N.Y. Slip Op. 33163(U) (Trial Order) Supreme Court, New York. New York County

MARC JANCOU FINE ART LTD., Doing Business As Marc Jancou Contemporary, Plaintiff, v. SOTHEBY'S, INC. and Cady Noland, Defendants.

No. 650316/2012. November 13, 2012.

Decision and Order

For Plaintiff: Hanly Conroy Bierstein Sheridan Fisher & Hayes LLP, By Paul J. Hanly, Jr., Esq., 112 Madison Avenue, New York, New York 10016-7416, 212-784-6400.

For Defendant Sotheby's: Stroock & Stroock & Lavan LLP, By Charles G. Mordler, Esq., 180 Maiden Lane, New York, New York 10038, 212-806-5400.

Present: Ellen M. Coin, J.S.C.

[This opinion is uncorrected and not selected for official publication.]

The following papers, numbered 1 to ___, were read on this motion to/for ......

Notice of Motion/Order to Show Cause - Affidavits - Exhibits ______No(s)......

Answering Affidavits - Exhibits ______No(s)......

Replying Affidavits ______No(s)......

Upon the foregoing papers, it is ordered that this motion is MOTION IS DECIDED IN ACCORDANCE WITH THE ANNEXED DECISION AND ORDER.

Dated: 11/13/12

<> J.S.C.

Subm. Date: August 29, 2012

Mot. Seq.: 002

Papers considered in review of these motion and cross-motion for summary judgment:

Papers Numbered

Notice of Motion and Affidavits Annexed...... 1

Memorandum of Law in Support of Motion to Dismiss...... 2

Jancou's Notice of Cross-Motion for Summary Judgment...... 3

Hanly's Affirm. in Opp. with Attachments Annexed...... 4

Memorandum of Law in Opposition. and in Supp of Cross-Motion...... 5

Memorandum of Law in Reply...... 6

This case arises out of the consignment for sale at auction of a work of art by Plaintiff Marc Jancou Fine Art, Ltd. (“Jancou”) with defendant Sotheby's, Inc. (“Sotheby's”). Sotheby's moves for an order (1)granting summary judgment dismissing the two causes of action asserted against it in the amended complaint and (2)severing its counterclaims. Plaintiff Jancou cross-moves for partial summary judgment on its first cause of action, for breach of contract, against Sotheby's. For the reasons stated herein, the motion is granted and the cross-motion is denied.

The parties entered into a consignment agreement dated September 9, 2011. In its introductory paragraph, it provided, “This agreement confirms your and our agreement under which the property listed on the attached Property Schedule (‘Property’) will be offered for sale at auction....” (Exh. 1 to the Affirmation of Charles G. Moerdler dated May 11, 2012)(emphasis added). The Property Schedule attached to the consignment agreement describes the property as follows: “Cady Noland, Cowboys Milking, 1990 Aluminum print, 48.2 x 72 in.” (Id.). The print was to be auctioned by Sotheby's on November 10, 2011 (Compl., para. 6; Exh. 3 to the Moerdler Aff.).

At the time that the print was initially unpacked in Sotheby's Central Receiving area, it was noted that “there is [s]ome bending of the aluminum at 3 of the corners [and] there are some small areas of bending/indentation in the aluminum; ex: along the left side near the upper corner, and also along the bottom edge near center.” (Email dated September 27, 2011; Exh. 10 to the Moerdler Aff.).

It is undisputed that on or about November 7, 2011, Noland viewed the print and thereafter, through her attorney, asserted that the print had been modified or damaged subsequent to her authorship. Noland then disclaimed authorship of the work under the Visual Artists Rights Act, 17 USC § 106 (“VARA”) and demanded that Sotheby's withdraw it from auction (Affirmation of Jonathan A. Olsoff dated May 10, 2012, paras. 6,7).

Sotheby's attempted to persuade Noland to reconsider her position. When that effort was unsuccessful, Sotheby's immediately contacted Jancou's principal, Marc Jancou, to advise him that Noland's disavowal required Sotheby's to withdraw the print from the auction. Mr. Jancou, in turn, advised Sotheby's that he had a report by a conservator, Christian Scheidmann, that might help persuade Noland to change her mind and reverse her position. Although the report was dated June 30, 2011, Jancou had not disclosed its existence to Sotheby's until after Noland's demand that the work be withdrawn. Mr. Jancou offered to forward the report to Sotheby's, and Sotheby's received it on or about November 9, 2011 (Olsoff Aff. paras. 9, 10).

Regarding the condition of the print, the report stated, “Compared to many other aluminum sheets of this body of work this particular work is in very good condition...However, all four corners are bent and slightly deformed. On the left side upper edge there is a 3″ long deformation in the metal.” In describing the “Actual Treatment” by the conservator, the report stated, “The corners were straightened multiple times with minor success. Also the upper left side edge was bent back into straight shape with little success. The work appears now better maintained than before. Some deformations, however, will always be noticeable.” (Exh. 11; emphasis added).

Upon viewing the conservator's report, Sotheby's advised Jancou that the report was unhelpful and unlikely to persuade Noland to change her position. With Jancou's consent, Sotheby's suggested to Noland's counsel that he speak to the conservator. On

November 9, 2011, Sotheby's received an email from Noland's counsel, in which he “repeat[ed] and re-emphasize[d]” Noland's demand that Sotheby's withdraw the print from auction. He asserted, “The current condition of the work materially differs from that at the time of its creation.” He stated that he did speak with the conservator, “who confirmed Ms. Noland's suspicions that there had been attempts at restoration,” adding, “It's apparent then that Christie's agreed at Ms. Noland's request not to offer the work for sale, in 2011, after [the] efforts at restoration. (Presumably the dealer/consigner of ‘Cowboys Milking’ was well aware of Christie's declination before submitting the work to Sotheby's). [The conservator] said that he reduced the damage, but could not remove the damage, and could not fix it. [He] emphasized that he could not restore the work to its original condition.” (Email of Jonathan N. Halpern to Jonathan Olsoff dated November 9, 2011; Exh. 8 to the Moerdler Aff.).

Thus, Noland's counsel declared her objection to the auctioning or other sale of the work, asserting “her rights under VARA and ... that her honor and reputation will be prejudiced as a result of offering ‘Cowboys Milking’ for sale with her name associated with it, in light of the material and detrimental changes to the work that have occurred since its creation.” (Id.).

Sotheby's withdrew the print from the November 10, 2011 auction sale.

The Amended Complaint

The amended complaint asserts two causes of action against Sotheby's: (1) for breach of contract and (2) for breach of fiduciary duties.

Discussion

The Visual Artists Rights Act (“VARA”) was enacted in 1990 as an amendment to the Copyright Act, to provide for the protection of the “moral rights” of certain artists. ( Pollara v Seymour, 344 F3d 265, 269 [2d Cir 2003]). “[M]oral rights afford protection for the author's personal, non-economic interests in receiving attribution for her work, and in preserving the work in the form in which it was created, even after its sale or licensing.” (Id., citation omitted).

The statute provides inter alia that the author of a work of visual art “shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation....” (17 USCA §106A(a)(2)).

Determination of the instant motion and cross-motion does not require interpretation of VARA. Instead, the issue for the Court is whether, in the face of the artist's objection under VARA to the use of her name as the author of the print, there is any material issue of fact as to whether Sotheby's failed to comply with its contractual and fiduciary obligations to plaintiff. ( Alvarez v Prospect Hosp., 68 NY2d 320, 324 [1986]).

The consignment agreement provided that the property listed on the Property Schedule was to be auctioned. Significantly, the property was listed on that Schedule as “Cady Noland, Cowboys Milking....” (Exh. 1 to the Moerdler Aff.). Regarding withdrawal, the agreement provided that Sotheby's could withdraw any Property at any time before sale if in its “sole judgment (a) there is doubt as to its authenticity or attribution, (b) there is doubt as to the accuracy of any of [Janou's] representations or warranties....” (Id. at para. 9]. Among the representations and warranties contained in the agreement was the representation that Janou had no reason to believe that the property “is not authentic....” (Id. at para. 7).

The essential elements of a breach of contract claim are the formation of a contract between parties, performance by plaintiff, the defendant's failure to perform, and resulting damage to the plaintiff. (Furia v Furia, 116 AD2d 694, 695 [2d Dept 1986]; Severo v Rockefeller Univ., 19 Misc3d 1122A, *3 [Sup Ct, New York County 2008]).

In this case the consignment agreement gave Sotheby's the right to withdraw the print from auction “if in [its] sole judgment” there were doubt as to attribution. Given Noland's assertion of her right under VARA to prevent the use of her name in connection with plaintiff's print, there was more than “doubt” as to attribution, and Sotheby's was within its rights to withdraw the print from the auction in the circumstances here. Only Sotheby's judgment was to be considered under the consignment agreement, and the record establishes that there was a substantial, objective basis for Sotheby's judgment that there was such doubt as to attribution.

The conservator's report, pre-dating the consignment agreement (but not provided to Sotheby's by plaintiff until after execution of the agreement and Noland's assertion of her VARA rights), establishes that the work bore permanent damage that could not be fully repaired. Indeed, Sotheby's Central Receiving department, upon inspection of the print post-execution of the consignment agreement, confirmed damage to the print. While plaintiff points to the excitement expressed about the print in an email by a Sotheby's employee (Exh. 1 to the Affirmation of Paul J. Hanly, Jr., dated June 1, 2012), that email is dated June 9, 2011, and preceded plaintiff's delivery of the print to Sotheby's and Noland's assertion of her right to prevent the use of her name as its author.

Similarly, the undated Condition Report for the print (Exh. 2 to the Hanly Aff.), transmitted by email from Sotheby's to Jancou on November 16, 2011 (in apparent response to a request for it), while stating “This work is in very good condition overall”, also states that “[t]here is a crimp to the upper right corner and another to the lower left corner.” Moreover, the Report contains the following disclaimer: “Please note that Sotheby's is pleased to provide a verbal opinion of the condition of a lot as a courtesy to our clients. However, as we are not professional conservators we do not guarantee the content of the written condition reports.”(emphasis in text). In the face of Noland's invocation of her VARA rights, this subsequently-delivered, qualified report fails to undercut Sotheby's position that in its sole judgment there was “doubt” as to attribution.

Sotheby's has established that it was within its contractual right to withdraw the print from auction. Absent the author's name, the print was not the “Property” listed on the Property Schedule attached to the consignment agreement and there was more than doubt as to attribution: there was no attribution. Under the circumstances here, there is no issue of fact that Sotheby's was not in breach of the consignment agreement. Thus, it is entitled to summary judgment dismissing plaintiff's cause of action for breach of contract.

Similarly, there is no triable issue of fact precluding summary judgment dismissing plaintiff's claim against Sotheby's for breach of fiduciary duty. The elements of a cause of action to recover damages for breach of fiduciary duty are (1) the existence of a fiduciary relationship, (2) misconduct by the defendant, and (3) damages directly caused by the defendant's misconduct. (Burry v Madison Park Owner LLC, 84 AD3d 699, 699-670 [1 st Dept 2011; Rut v Young Adult Institute, Inc., 74 AD3d 776, 777 [2nd Dept 2010]).

Under general principles of agency, an auctioneer acts as the agent of the consignor. ( Cristallina S.A. v Christie, Mansan & Woods Int'l, Inc., 117 AD2d 284, 292 [1 st Dept 1986]). Thus, an agent is a fiduciary with respect to matters within the scope of its agency. (Restatement [Second] of Agency § 13).

While Sotheby's as auctioneer on behalf of Jancou became its agent, its responsibilities were defined and circumscribed by the parties' consignment agreement. ( Greenwood v Koven, 880 F Supp 186, 194 [SDNY 1995]; Sveaas v Christie's Inc., 452 Fed Appx 63, 66-67 [2d Cir 2011]; Mickle v Christie's, 207 F Supp 2d 237, 244-245 [SDNY 2002]).

Thus, Sotheby's fiduciary duty to Jancou was modified, inter alia, by the provision of the consignment agreement giving Sotheby's the right to withdraw the print from auction if in its “sole judgment there is doubt as to its authenticity or attribution.” “Agreements conferring upon one party an indefinite right to condition performance upon a determination that is based on an act of personal discernment or sole discretion are uniformly upheld-subject to a duty on the part of the party so empowered to exercise honest judgment...” (Mickle, 207 F Supp 2d at 246 [citation omitted]). There is no indication that Sotheby's withdrawal of the print item was made in bad faith. On the contrary, Sotheby's has established that there was ample support for its

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Marc Jancou Fine Art Ltd. v. Sotheby's, Inc., 2012 WL 7964120 (2012) determination that there was doubt as to the print's attribution, and thus Jancou's claim for breach of fiduciary duty must be dismissed. (Id. at 246-248).

In accordance with the foregoing, it is hereby

ORDERED that defendant Sotheby's Inc.'s motion for summary judgment is granted and the complaint is severed and dismissed as against Sotheby's Inc. only, and the rest of the action shall continue; and it is further

ORDERED that plaintiff's cross-motion for summary judgment on its breach of contract cause of action is denied.

This constitutes the decision and order of the Court.

Date: November 13, 2012

New York, New York

ENTER:

Ellen M. Coin, A.J.S.C.

The consignment agreement between plaintiff and Sotheby's permitted Sotheby's to withdraw the artwork owned by 107 A.D.3d 637 plaintiff from auction if Sotheby's had any doubt, in its Supreme Court, Appellate Division, sole judgment, as to the work's “attribution” as defined in First Department, New York. the Federal Visual Artists Rights Act of 1990 (17 U.S.C § MARC JANCOU FINE ART 106A). After the artwork was scheduled to be auctioned, LTD., etc., Plaintiff–Appellant, defendant Noland, the author of the artwork, demanded that v. Sotheby's withdraw the work from auction, asserting that her honor and reputation would be prejudiced if the artwork SOTHEBY'S, INC., Defendant–Respondent, were offered for sale with her name associated with it in Cady Noland, Defendant. light of material and detrimental changes to the work that June 27, 2013. had occurred since its creation, in violation of her rights under the Federal Visual Artists Rights Act of 1990 (17 Attorneys and Law Firms U.S.C § 106A; see generally Carter v. Helmsley–Spear, Hanley Conroy Bierstein Sheridan Fisher & Hayes LLP, New Inc., 71 F.3d 77, 81 [2d Cir.1995], cert. denied 517 U.S. York (Thomas I. Sheridan, III of counsel), for appellant. 1208, 116 S.Ct. 1824, 134 L.Ed.2d 930 [1996] ). In light of Noland's assertion and a report showing that the work Stroock & Stroock & Lavan LLP, New York (Charles had been damaged and restoration had been performed on it, G. Moerdler and Daniel N. Bertaccini of counsel), for Sotheby's did not breach the contract or its fiduciary duty to respondent. plaintiff by withdrawing the work from auction.

Opinion *637 Order, Supreme Court, New York County (Ellen M. Coin, J.), entered November 14, 2012, which granted the TOM, J.P., MAZZARELLI , MOSKOWITZ , GISCHE, JJ., motion of defendant *638 Sotheby's, Inc. for summary concur. judgment dismissing the complaint as against it, and denied All Citations plaintiff's cross motion for summary judgment on its breach of contract cause of action against Sotheby's, unanimously 107 A.D.3d 637, 967 N.Y.S.2d 649 (Mem), 2013 N.Y. Slip affirmed, with costs. Op. 04901

[5] museum's act of exhibiting installation in its unfinished state did not violate artist's right of integrity under VARA; 593 F.3d 38 United States Court of Appeals, [6] issues of fact existed as to whether museum owned the First Circuit. physical copy of artist's unfinished installation. MASSACHUSETTS MUSEUM OF CONTEMPORARY ART Affirmed in part, vacated in part, and remanded for further FOUNDATION, INC., Plaintiff, Appellee, proceedings. v. Christoph BÜCHEL, Defendant, Appellant. Procedural Posture(s): On Appeal; Motion for Summary Judgment. No. 08–2199. | Heard June 2, 2009. West Headnotes (28) | Decided Jan. 27, 2010. [1] Copyrights and Intellectual Property Synopsis Pictorial, graphic, and sculptural works Background: Museum sought declaratory judgment that it Visual Artists Rights Act (VARA) is an was entitled to display materials and partial constructions amendment to the Copyright Act that protects the assembled in connection with an unfinished exhibit it had moral rights of certain visual artists in the works planned with artist. Artist counterclaimed, seeking, inter they create. 17 U.S.C.A. § 106A. alia, a declaratory judgment that any public display of the installation would violate his rights under the Visual Artists 3 Cases that cite this headnote Rights Act (VARA) and the Copyright Act. The United States District Court for the District of Massachusetts, 565 [2] Copyrights and Intellectual Property F.Supp.2d 245, Michael A. Ponsor, J., granted museum's Acts Constituting Infringement motion for summary judgment, and artist appealed. One infringes a copyright when he or she violates one of the exclusive rights to a work held by a copyright owner. 17 U.S.C.A. § 501. Holdings: The Court of Appeals, Lipez, Circuit Judge, held that: 1 Cases that cite this headnote

[1] although unfinished, installation was entitled to protection [3] Copyrights and Intellectual Property under VARA; Permanent relief Copyrights and Intellectual Property [2] issues of fact existed as to whether museum modified Recovery in general; actual damages and artist's fixed installation over his objections; profits

[3] issues of fact existed as to whether museum's alleged Copyrights and Intellectual Property modifications to installation had a detrimental impact on his Statutory Damages; Minimum Award honor or reputation; Remedies provided by the Copyright Act include injunctive relief and actual or statutory damages. [4] museum's act of partially covering installation with 17 U.S.C.A. §§ 502, 504. tarpaulins, after the artist refused to finish the work, did not violate artist's right of integrity under VARA;

[4] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works

Beyond the Copyright Act's protections of certain economic rights, the Visual Artists [9] Copyrights and Intellectual Property Rights Act (VARA) provides additional and Pictorial, graphic, and sculptural works independent protections to authors of works of Visual Artists Rights Act (VARA) applies to unfinished, but “fixed,” works of art that, if visual art. 17 U.S.C.A. § 101 et seq. completed, would qualify for protection under 2 Cases that cite this headnote the statute. 17 U.S.C.A. § 106A.

[5] Copyrights and Intellectual Property [10] Copyrights and Intellectual Property Nature of remedy Pictorial, graphic, and sculptural works All remedies available under copyright law, other Although unfinished, artist's art installation was than criminal remedies, are available in an action entitled to protection under the Visual Artists under the Visual Artists Rights Act (VARA) for Rights Act (VARA); installation was a fixed infringement of moral rights. 17 U.S.C.A. §§ work of visual art that, if completed, would 501(a), 506. qualify for protection under the statute. 17 U.S.C.A. § 106A.

3 Cases that cite this headnote [6] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works By guaranteeing the moral rights of attribution [11] Federal Courts and integrity, the Visual Artists Rights Act Summary judgment (VARA) protects both the reputations of certain Court of Appeals reviews the district court's visual artists and the works of art they create. 17 grant of summary judgment de novo, and U.S.C.A. § 106A. the presence of cross-motions neither dilutes nor distorts this standard of review. Fed.Rules 1 Cases that cite this headnote Civ.Proc.Rule 56, 28 U.S.C.A.

3 Cases that cite this headnote [7] Federal Courts Intellectual property Court of Appeals reviews the district court's [12] Federal Civil Procedure interpretation of the Visual Artists Rights Act Materiality and genuineness of fact issue (VARA) de novo. 17 U.S.C.A. § 101 et seq. A dispute is “genuine,” within meaning of rule governing summary judgment motions, if the evidence about the fact is such that a reasonable jury could resolve the point in favor of the non- [8] Statutes moving party. Fed.Rules Civ.Proc.Rule 56(c)(2), Plain Language; Plain, Ordinary, or 28 U.S.C.A. Common Meaning Statutes 2 Cases that cite this headnote Relation to plain, literal, or clear meaning; ambiguity [13] Federal Civil Procedure If a statute's language is plain, the sole function Materiality and genuineness of fact issue of the courts—at least where the disposition A fact is “material,” within meaning of rule required by the text is not absurd—is to enforce governing summary judgment motions, if it has it according to its terms. the potential of determining the outcome of the 5 Cases that cite this headnote litigation. Fed.Rules Civ.Proc.Rule 56(c)(2), 28 U.S.C.A.

injunctive relief to, inter alia, assert or disclaim authorship of a work. 17 U.S.C.A. § 106A. [14] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works The right of integrity codified in the Visual [19] Copyrights and Intellectual Property Artists Rights Act (VARA) allows artists Recovery in general; actual damages and to protect their works against intentional profits modifications that would be prejudicial to their Visual Artists Rights Act (VARA) does not honor or reputations. 17 U.S.C.A. § 106A(a)(3) provide a damages remedy for a violation of an (A). artist's right of attribution. 17 U.S.C.A. § 106A.

[15] Copyrights and Intellectual Property [20] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works Actions for Infringement Congress intended the prejudice requirement Museum's act of dismantling artist's fixed to apply to the right of integrity under the installation rendered moot any claim for Visual Artists Rights Act (VARA) whether the violation of artist's right of attribution under the remedy sought is injunctive relief or damages. 17 Visual Artists Rights Act (VARA); museum's U.S.C.A. § 106A. act prevented further use of artist's name in connection with the work. 17 U.S.C.A. § 106A(a)(1, 2). [16] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works The right of attribution codified in the Visual [21] Copyrights and Intellectual Property Artists Rights Act (VARA) ensures that artists Ownership in general are correctly identified with the works of art they A claim of joint authorship in intellectual create, and that they are not identified with works property requires proof that the parties entertain created by others. 17 U.S.C.A. § 106A(a)(1, 2). in their minds the concept of joint ownership.

[17] Copyrights and Intellectual Property [22] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works Summary judgment Under the Visual Artists Rights Act (VARA), if a Genuine issues of material fact existed as work of visual art has been distorted or modified to whether museum modified artist's fixed (and the original distortion or modification need installation over the artist's objections, to his not be intentional), associating the author's name detriment, precluding summary judgment for with the distorted work against his wishes would museum in artist's claim that such modification violate his right of attribution. 17 U.S.C.A. § violated his right of integrity under the Visual 106A(a)(1, 2). Artists Rights Act (VARA). 17 U.S.C.A. § 106A(a)(3)(A). 3 Cases that cite this headnote

[18] Copyrights and Intellectual Property [23] Copyrights and Intellectual Property Permanent relief Summary judgment The right of attribution under the Visual Artists Genuine issues of material fact existed as Rights Act (VARA) gives an artist a claim for to whether museum's alleged modifications to artist's fixed installation had a detrimental impact

on his honor or reputation, precluding summary Genuine issues of material fact existed as to judgment for museum in artist's claim that whether museum owned the physical copy of such modifications violated his right of integrity artist's unfinished fixed installation, precluding under the Visual Artists Rights Act (VARA). 17 summary judgment for museum in artist's claim, U.S.C.A. § 106A(a)(3)(A). under the Copyright Act, of a violation of his exclusive right to display his copyrighted work publicly. 17 U.S.C.A. §§ 106(5), 109(c). [24] Copyrights and Intellectual Property Pictorial, graphic, and sculptural works 1 Cases that cite this headnote Museum's act of partially covering artist's fixed installation with tarpaulins, after the artist [28] Copyrights and Intellectual Property refused to finish the work, could not reasonably Distinct portions of work; compilations and be deemed an intentional act of distortion or derivative works modification of the artist's work, as would violate Artist was deemed to have waived any claims his right of integrity under the Visual Artists that museum violated his exclusive right, under Rights Act (VARA). 17 U.S.C.A. § 106A(a)(3) the Copyright Act, to prepare derivative works (A). based on his unfinished work of installation 2 Cases that cite this headnote art, where he failed to adequately develop such claim; artist cited no cases and did not explain how the modified work was sufficiently original [25] Copyrights and Intellectual Property and distinctive to qualify as a derivative work. Pictorial, graphic, and sculptural works 17 U.S.C.A. § 106(2). Museum's act of exhibiting artist's fixed installation in its unfinished state, without the 6 Cases that cite this headnote artist's consent, after he refused to finish the work, did not amount to an intentional distortion of the artist's work, as would violate his right of integrity under the Visual Artists Rights Act Attorneys and Law Firms (VARA). 17 U.S.C.A. § 106A(a)(3)(A). *41 George T. Conway III, with whom Elaine P. Golin, 2 Cases that cite this headnote Wachtell, Lipton, Rosen & Katz, John C. Blessington, Sara E. Yevics, K & L Gates LLP, Elena M. Paul, Sergio Muñoz [26] Copyrights and Intellectual Property Sarmiento, and Volunteer Lawyers for the Arts were on brief, Summary judgment for appellant. Genuine issues of material fact existed as John L. Gardiner, with whom Elizabeth A. Hellmann, Kurt to whether museum publicly displayed artist's Wm. Hmr, Lindsay R. Dickerson, and Skadden, Arps, Slate, unfinished fixed installation, without the artist's Meagher & Flom LLP were on brief, for appellee. consent, after he refused to finish the work, precluding summary judgment for museum in Before LIPEZ and HOWARD, Circuit Judges, and artist's claim, under the Copyright Act, of a WOODCOCK, District Judge. * violation of his exclusive right to display his copyrighted work publicly. 17 U.S.C.A. § Opinion 106(5). LIPEZ, Circuit Judge.

As one observer has noted, this case, which raises important [27] Copyrights and Intellectual Property and unsettled legal issues under the Visual Artists Rights Summary judgment Act (“VARA”), may well serve as “the ultimate how-not-

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 to guide in the complicated world of installation art.” Geoff Edgers, Dismantled, The Boston Globe, Oct. 21, 2007, at 1N. I. Artist Christoph Büchel conceived of an ambitious, football- field-sized art installation entitled “Training Ground for A. The Parties Democracy,” which was to be exhibited at the Massachusetts MASS MoCA opened in 1999 as a center for the creation and Museum of Contemporary Art (“MASS MoCA,” or “the display of contemporary art. The Museum “seeks to catalyze Museum”). Unfortunately, the parties never memorialized and support the creation of new art, expose [its] visitors to the terms of their relationship or their understanding of bold visual and performing art in all stages of production, the intellectual property issues involved in the installation and re-invigorate the life of a region in socioeconomic in a written agreement. Even more unfortunately, the need.” Massachusetts Museum of Contemporary Art, project was never completed. Numerous conflicts and a Mission Statement, http://www. massmoca.org/mission.php steadily deteriorating relationship between the artist and the (last visited Jan. 13, 2010). In its expansive facility in Museum prevented the completion of “Training Ground for North Adams, Massachusetts, the Museum strives to “make Democracy” in its final form. the whole cloth of art making, presentation and public participation a seamless continuum.” Id. Over the last decade, In the wake of this failed endeavor, the Museum went to the Museum has hosted the production and presentation of federal court seeking a declaration that it was “entitled to over sixty exhibits of visual art, including over 600 works of present to the public the materials and partial constructions” art by more than 250 individual artists. Some of these works it had collected for “Training Ground for Democracy.” have been displayed in Building 5, the Museum's signature Büchel responded with several counterclaims under VARA exhibition space, which spans the length of a football field. and the Copyright Act, 1 seeking an *42 injunction that The Museum strives to “offer visual artists the tools and time would prevent MASS MoCA from displaying the unfinished to create works of a scale and duration impossible to realize installation and damages for the Museum's alleged violations in the time and space-cramped conditions of most museums,” of his rights under both VARA and the general Copyright Act. and MASS MoCA prides itself on exposing its audiences to “all stages of art production: rehearsals, sculptural fabrication, On cross-motions for summary judgment, the district court and developmental workshops are frequently on view, as are assumed that VARA applies to unfinished works of art, finished works of art.” Id. but it nonetheless ruled for the Museum in all respects because, even granting VARA's applicability, it found no Christoph Büchel is a Swiss visual artist who lives and works in Basel, Switzerland. He is “known for building elaborate, genuine issues of material fact. Massachusetts Museum politically provocative environments for viewers to wander, of Contemporary Art Found., Inc. v. Büchel, 565 F.Supp.2d and sometimes to crawl, through.” Randy Kennedy, The Show 245 (D.Mass.2008). Büchel appeals. Because we find that, Will Go On, but the Art Will Be Shielded, N.Y. Times, May if VARA applies, genuine issues of material fact would 22, 2007, at E1 (“The Show Will Go On ”). One critic has foreclose summary judgment on one of Büchel's VARA stated that “Mr. Büchel's environments are huge in scale,” claims—that MASS MoCA violated his right of artistic “like bristling three-dimensional history paintings,” yet are integrity by modifying the installation—we cannot assume “so obsessively detailed that they might best be described as that VARA applies to unfinished works but instead must panoramic collage.” Roberta Smith, Is It Art Yet? And Who decide its applicability. We conclude that the statute does Decides?, N.Y. Times, Sept. 16, 2007, at 21. apply to such works.

We further conclude that, in addition to his VARA claim, B. Factual Background Büchel asserts a viable claim under the Copyright Act that Focusing first on those facts that are undisputed, we sketch MASS MoCA violated his exclusive right to display his the course of dealings between Büchel and MASS MoCA work publicly. Accordingly, we reverse in part the grant of to put this appeal in context. 2 MASS MoCA *43 became summary judgment for MASS MoCA and remand for further interested in planning a new installation with Büchel. The proceedings. artist visited the North Adams facility in October 2005 to begin preliminary discussions regarding the project, and those discussions continued into 2006. At some point during

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 5 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 this time, Büchel proposed, and the Museum agreed to, [the parties'] relationship on this project,” there is no a project entitled “Training Ground for Democracy.” As indication that Büchel himself ever saw, much less signed, this Museum Director Joseph Thompson indicated in a letter to proposal. 4 The gallery responded with a proposed contract Büchel's gallery representatives, MASS MoCA understood of its own, providing that MASS MoCA should bear the costs that “Büchel's projects typically require a lengthy period of of transporting and organizing the various materials for the installation and preparation,” and that, given the gallery space installation. The Museum did not respond to this proposal. of Building 5, “this project [would] be his largest venture to Additionally, it is undisputed that Büchel never signed a date.” document waiving any rights to which he would otherwise be entitled under VARA. The parties did apparently agree, Büchel conceived of the exhibit as “essentially a village, ... however, that once the planned installation was finished, contain[ing] several major architectural and structural *44 and after the public exhibition period had concluded, elements integrated into a whole, through which a visitor MASS MoCA would not contest Büchel's sole title to any could walk (and climb).” According to an affidavit submitted copyright in the completed work. The parties set an opening to the district court, Büchel envisioned the work in the date of December 16, 2006 for the exhibit. following way: Over the course of the fall, tensions began to develop between the artist and MASS MoCA employees, particularly It was to adopt the role-play of U.S. Joseph Thompson. “In summary, the museum felt the artist's military training for its visitors, who directions were vague, and his financial and logistical would be given the opportunity to demands were increasingly unreasonable; the artist felt the “virtually” change their own various museum was compromising his artistic integrity and failing identities in relation to the collective to follow his instructions.” MASS MoCA, 565 F.Supp.2d at project called “democracy”: training 247. One frequent source of conflict between the parties was to be an immigrant, training to vote, the budget, with the Museum understandably concerned about protest, and revolt, training to loot, keeping its costs for the massive project under control, and training iconoclasm, training to join Büchel understandably insistent that his vision for “Training a political rally, training to be the Ground” be fully realized. But as the district court correctly objects of propaganda, training to be noted, “[t]he dispute about these financial understandings is interrogated and detained and to be not material” to whether Büchel has presented triable claims tried or to judge, training to reconstruct a disaster, training to be in conditions under either VARA or the Copyright Act, id. at 250, and of suspended law, and training various we therefore need not focus on its messy details. other social and political behavior. Instead, for our purposes, the key conflict between MASS MoCA and the artist involved Büchel's dissatisfaction with the way in which the Museum was implementing his In August 2006, Büchel spent ten days in residence at MASS instructions and procuring the items necessary for the MoCA. During this time, he and a partner prepared a basic installation. Büchel himself was not present in North Adams schematic model of the proposed installation. MASS MoCA for the first several months of work on the project. Instead, he agreed to acquire, at Büchel's direction but its own expense, conducted much of his work on the installation throughout the the materials and items necessary for the project. fall of 2006 remotely, by providing Museum personnel with detailed instructions as to the particular materials he required Unfortunately, the parties never formalized the contours and their placement within the exhibition space. of their relationship or firmly established the project's financial scope and precise specifications by executing any In the words of the district court, “[a]t various points in written instrument. Although MASS MoCA's curator, Nato the development of the installation, Büchel proposed several 3 Thompson (no relation to the Museum Director), sent major components,” some but not all of which later became Büchel's gallery sales representative in the United States a part of the installation “as its elements evolved through letter on September 14, 2006 that was designed to “formalize discussions with MASS MoCA during the construction

components of the installation had to be reworked to Büchel's process.” Id. These major components included a movie specifications. In general, he felt that the Museum was trying theater, a house, a bar, a mobile home, various sea containers, to scale back his artistic vision without consulting him. a bomb carousel, and an aircraft fuselage. Id. The Museum had begun seeking out some of these materials and others for Meanwhile, the Museum was running out of money for the potential use in the installation as soon as Büchel left North project. In an attempt to secure further funding, it disregarded Adams at the end of August 2006, and continued to do so Büchel's express wishes and, in late December 2006, asked throughout the fall. One of the Museum's curators described for money from his galleries. Angry and frustrated, the artist the search for these items (at Büchel's direction) as “the wrote that he would not move forward with the installation ultimate scavenger hunt.” However, problems soon arose, until “all financial problems are solved, regarding ALL especially between Thompson and Büchel, as to the progress elements of the show and until my crew is being sure that of the project, particularly when, as Thompson explained in they [are] getting paid.” By mid-January 2007, tensions had an internal Museum email dated October 28, 2006, he had escalated to the point where Büchel informed the Museum tried to “move the project along” by “making a few decisions that he would not return to continue work on “Training in [Büchel's] stead.” Thompson noted that Büchel, whom he Ground” unless certain conditions, both financial and artistic, described as having “clear vision” and “rock solid integrity,” were met. had taken “extreme, mortal[ ] offense” to Thompson's efforts. In Büchel's absence, MASS MoCA staff continued to work On October 29, 2006, Büchel returned to North Adams to on the installation. The parties disagree as to whether the complete “Training Ground for Democracy,” and three of employees were merely executing instructions left by the his assistants from Switzerland arrived shortly thereafter. artist or whether their actions represented independent artistic Unhappy with some of the work that had been done by the judgment, exercised in direct contravention of Büchel's Museum in his absence, Büchel felt that certain logistical express wishes. The parties also disagree as to whether, in the and organizational failures by the Museum had endangered spring of 2007, while negotiations had stalled but work on the the timely opening of the show. Büchel wrote in an email installation was ongoing, the Museum promoted—and even to Thompson that he would not allow the Museum to open showed—the unfinished work to numerous visitors without an “unfinished show in my name, since you are responsible Büchel's consent, in one form or another. for this major delay.” By early December 2006, Büchel insisted that the Museum postpone the opening of the show As the vitriolic exchanges between the parties continued, and and asserted *45 that he would not “accept an opening negotiations over the project's eventual completion became of a work in progress or other compromise.” During the hopeless, “Training Ground” languished in its unfinished first week of the month, MASS MoCA agreed to delay the state. It became clear that Büchel would not complete the opening, posting the following message on its website: “Due installation. On May 22, 2007, MASS MoCA announced the to logistical complexities encountered by the museum in cancellation of “Training Ground,” and contemporaneously preparing galleries for Christoph Büchel's vast installation, publicized the opening of a new exhibit entitled “Made at the exhibition's official opening date ... will be re-scheduled.” MASS MoCA,” which was to be “a documentary project exploring the issues raised in the course of complex Büchel remained onsite at the Museum working on “Training collaborative projects between artists and institutions.” Ground” until December 17, 2006, when he left for the Massachusetts Museum of Contemporary Art, Press Release, holidays. In Büchel's estimation, “Training Ground” was then Presentation of Training Ground for Democracy Cancelled; only about 40% complete. At the time, he planned to return New Exhibition, Made at MASS MoCA, to Open on on January 8, 2007, in order to finish the work in time for Saturday, May 26 (“Press Release”), available at http:// a March 3 opening. When he left North Adams, the artist www.massmoca.org/event_details.php? id=144 (May 22, was obviously disappointed with the progress of “Training 2007). The press release noted that this lawsuit had been filed Ground.” He called the Museum disorganized and faulted the previous day; it also highlighted the Museum's desire to it for underestimating the scope of his project. He felt that use its “other experiences working with artists” to “provide Museum employees, by failing to precisely carry out his [its] audience with thought-provoking insights into the detailed instructions and making artistic decisions in his stead, complexities of the art-making process.” Id. *46 The release had generated even more work for his crew, as numerous further explained that, due to “space constraints imposed by

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 7 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 the materials assembled for Training Ground for Democracy,” On MASS MoCA's motion, the court ordered an expedited the exhibition would be presented in the Museum's “only discovery schedule that included a private viewing by the remaining available gallery space”; therefore, in order to enter district court of Building 5 and the unfinished installation. the exhibit, visitors would have to pass through Building After the close of discovery, both sides filed cross-motions 5, “housing the materials and unfinished fabrications that seeking summary judgment on the complaint and all were to have comprised elements of Training Ground for counterclaims. On September 21, 2007, the court held Democracy.” Id. The Museum represented that “[r]easonable oral argument on the cross-motions and ruled from the steps [had] been taken to control and restrict the view of these bench. That decision addressed only the Museum's original materials, pending a court ruling.” complaint seeking declaratory relief to allow public display of the partially completed project and Büchel's corresponding When “Made at MASS MoCA” opened, many in the art counterclaim seeking to prevent the Museum from showing world disagreed with the Museum's handling of its dispute the then-existing work. The court ruled in favor of the with Büchel, though the parties have different views on Museum, noting that nothing in VARA prevented MASS whether the Museum's actions ultimately tarnished the artist's MoCA from showing the incomplete project. Therefore, reputation. Moreover, the parties differ on whether the MASS MoCA was “entitled to present” the unfinished “reasonable steps ... taken to control and restrict the view installation to the public as long as it posted a disclaimer that of the[ ] materials”—the placement of yellow tarpaulins would “inform anyone viewing the exhibit that the materials over the unfinished work—actually concealed all of the assembled in Building 5 *47 constitute an unfinished project individual components and vital design elements of “Training that [did] not carry out the installation's original intent.” The Ground,” or whether the tarpaulins simply “hid[ ] an elephant court correspondingly denied the artist's request for injunctive behind a napkin,” effectively inviting individuals to peek relief barring public display of the unfinished installation, behind the cloth coverings and view the unfinished work. ruling that he had failed to prove a likelihood of success on the See Charles Giuliano, Christoph Buchel's Tarp Art at Mass merits of his VARA claim. The court stated that it would “in MoCA: Crap Under Wrap (July 31, 2007) (“Crap Under the coming weeks” issue a detailed memorandum explaining Wrap ”), available at http://www. berkshirefin earts.com/ its oral rulings and addressing the remaining claims. show_article.php?article_id=368 & category =finearts. However, several days after obtaining the ruling in its favor, MASS MoCA changed course. The Museum posted an C. Procedural Background announcement on its website stating that it had “begun The Museum sued Büchel on May 21, 2007, in the United removing materials gathered for Training Ground for States District Court for the District of Massachusetts. The Democracy and [would] not permit the public to enter the complaint asserted a single claim for declaratory relief planned installation.” MASS MoCA Blog, “We'll Remove under VARA. The Museum sought a declaration that it Training Ground,” http: // blog.massmoca.org/2007/09/28/ was “entitled to present to the public the materials and well-remove-training-ground/ (Sept. 28, 2007) (last visited partial constructions assembled in connection with an exhibit Jan. 13, 2010). planned with the Swiss artist Büchel.” Büchel responded by asserting five counterclaims against the Museum. The On July 11, 2008, the district court issued its written opinion, first sought a declaratory judgment and an injunction under recognizing that some of the issues presented in the case were VARA prohibiting the Museum from publicly displaying now moot, but nevertheless wishing to explain its holding and “the unfinished Work of Art or any of its component to address the VARA and Copyright Act claims remaining in elements.” The second sought damages for MASS MoCA's the case. The court summarized its holding this way: alleged violations of Büchel's VARA rights by “intentionally distort[ing] and modif[ying] the Work of Art” and allowing members of the public to “see and pass through” the When an artist makes a decision unfinished work, both with and without the yellow tarpaulins. to begin work on a piece of art The third, fourth and fifth counterclaims sought damages and and handles the process of creation injunctive relief under the Copyright Act based on alleged long-distance via e-mail, using violations of Büchel's right to publicly display and create someone else's property, someone derivative works from his work. else's materials, someone else's money,

someone else's staff, and, to a varieties of rights,” but the two most widely recognized are significant extent, someone else's attribution and integrity. Id. at 81 (citing Ralph E. Lerner suggestions regarding the details & Judith Bresler, Art Law 417, 420 (1989)). We will discuss of fabrication—with no enforceable both of these in detail below, but note briefly now that the right written or oral contract defining the of attribution protects the author's right to be identified as the parties' relationship—and that artist author of his work and also protects against the use of his becomes unhappy part-way through the project and abandons it, then name in connection with works created by others. Id. The nothing in the Visual Artists Rights right of integrity “allows the author to prevent any deforming Act or elsewhere in the Copyright Act or mutilating changes to his work.” Id. Although these gives that artist the right to dictate moral rights “exist independent[ly] of the economic rights” what that “someone else” does with granted to all authors under the Copyright Act, 5 William F. what he has left behind, so long as Patry, Patry on Copyright § 16:1 (2009), they are part of the the remnant is not explicitly labeled same statutory framework. as the artist's work. No right of artistic “attribution” or “integrity,” as those terms are conceived by VARA, A. The Copyright Act is implicated, let alone violated in [2] [3] Under the Copyright Act, “[c]opyright protection these circumstances. Similarly, the subsists ... in original works of authorship fixed in any Copyright Act provides no mechanism tangible medium of expression.” 17 U.S.C. § 102(a). A for relief, legal or equitable, to copyright owner has certain exclusive rights to the work, an artist such as Defendant Büchel which are enumerated in 17 U.S.C. § 106. T–Peg, Inc. v. here, based on the decision of an Vermont Timber Works, Inc., 459 F.3d 97, 108 (1st Cir.2006). exhibitor such as Plaintiff MASS Of particular relevance to this litigation, the copyright holder MoCA to allow patrons to walk past has the exclusive right to publicly display the copyrighted covered components of an unfinished installation. work and to prepare derivative works based upon it. 17 U.S.C. § 106(5), (2). “One infringes a copyright when he or she violates one of the exclusive rights to a work held by 565 F.Supp.2d at 248–29. The court therefore granted a copyright owner, and the owner has the right to sue for MASS MoCA's motion for summary judgment and denied infringement.” T–Peg, Inc., 459 F.3d at 108 (citing 17 Büchel's, entering judgment for the Museum on its claim U.S.C. § 501). The remedies provided by the Copyright Act for declaratory relief as well as on all five of Büchel's include injunctive relief and actual or statutory damages. See counterclaims. Büchel appeals. 17 U.S.C. §§ 502, 504. 6

II. B. VARA [4] Beyond the Copyright Act's protections of certain [1] Passed in 1990, the Visual Artists Rights Act, 17 U.S.C. economic rights, VARA provides additional and independent § 106A, was an amendment to the Copyright Act that protects protections to authors of works of visual art. See Carter, the “moral rights” of certain visual artists in the works they 71 F.3d at 81–83. A work of visual art is defined to include create, consistent with Article 6bis of the Berne Convention. “a painting, drawing, print, or sculpture, 7 existing in a Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128, 133 single copy” or in a limited edition. 17 U.S.C. § 101. (1st Cir.2006); Carter v. Helmsley–Spear, Inc., 71 F.3d 77, The definition specifically excludes a number of works that 83 (2d Cir.1995) (citing H.R.Rep. No. 101–514, at 5 (1990) are otherwise copyrightable, including motion pictures and (“House Report”), as reprinted in 1990 U.S.C.C.A.N. 6915, other audiovisual works, books, posters, periodicals, works 6917). 5 The “rubric *48 of moral rights encompasses many

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 9 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 made for hire, and merchandising, advertising, promotional, at 6, as reprinted in 1990 U.S.C.C.A.N. at 6915). Although an artist may not transfer his VARA rights (as they are considered or packaging materials. Id. an extension of his personality), he may waive those rights by “expressly agree[ing] to such waiver in a written instrument.” *49 VARA provides that, in addition to the exclusive rights 17 U.S.C. § 106A(e)(1). Also, “[a]ll remedies available under provided by section 106 of the Copyright Act, but subject copyright law, other than criminal remedies, are available in to certain limitations, the author of a work of visual art an action for infringement of moral rights.” Carter, 71 (1) shall have the right— F.3d at 83 (citing 17 U.S.C. § 506); see also 17 U.S.C. § 8 (A) to claim authorship of that work, and 501(a).

(B) to prevent the use of his or her name as the author of [6] More specifically, by guaranteeing the moral rights any work of visual art which he or she did not create; of “attribution” and “integrity,” VARA “ ‘protects both the reputations of certain visual artists and the works of art they (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event create.’ ” Carter, 71 F.3d at 83 (quoting House Report of a distortion, mutilation, or other modification of the at 6, as reprinted in 1990 U.S.C.C.A.N. at 6915). Before work which would be prejudicial to his or her honor or discussing the precise contours of these rights, we consider reputation; and whether, as a threshold matter, the indisputably unfinished “Training Ground for Democracy” *50 was a “work of (3) subject to the limitations set forth in section 113(d), visual art” within the meaning of VARA. shall have the right—

(A) to prevent any intentional distortion, mutilation, C. Does VARA Apply to Unfinished Works of Art? or other modification of that work which would be Büchel argues that the district court erred by failing to prejudicial to his or her honor or reputation, and any recognize that VARA applies with equal force to incomplete intentional distortion, mutilation, or modification of that artistic endeavors that would otherwise be subject to VARA work is a violation of that right, and protection. He asserts that the Act's plain language compels such a conclusion, which he claims is confirmed by the (B) to prevent any destruction of a work of recognized legislative history and sparse case law interpreting the statute. stature, and any intentional or grossly negligent The Museum, for its part, does not argue that unfinished destruction of that work is a violation of that right. works are excluded from VARA's scope. Instead, it interprets the district court's opinion as “expressly assum[ing]” that 17 U.S.C. § 106A(a). VARA applied to “Training Ground for Democracy” in its incomplete state, and then concluding that Büchel had [5] VARA's passage reflected Congress's belief that the failed to put forth sufficient evidence to raise a triable issue art covered by the Act “meet[s] a special societal need, regarding the violation of his rights under the statute. and [its] protection and preservation serve an important public interest.” House Report at 5–6, as reprinted in 1990 We do not read the district court's ruling to conclude U.S.C.C.A.N. at 6915–16. To encourage the creation of such categorically that VARA does not apply to unfinished works. art, VARA protects the “moral rights” of its creators. These Rather, the court held that, if the statute applied, “display are “rights of a spiritual, non-economic and personal nature” of th[e] unfinished installation would have violated neither that exist “independently of an artist's copyright in his or her work” and “spring from a belief that an artist in the Büchel's right of attribution nor his right of integrity.” 565 process of creation injects his spirit into the work and that F.Supp.2d at 259. Nonetheless, the court repeatedly expressed the artist's personality, as well as the integrity of the work, skepticism about Büchel's claim that the incomplete “Training Ground” fell within VARA's scope, observing at one point in should therefore be protected and preserved.” Carter, 71 its opinion that “unfinished art may not be covered by VARA F.3d at 81. The recognition of moral rights fosters a “ ‘climate of artistic worth and honor that encourages the author in the at all.” Id. at 258; see also id. at 259 (“[I]t is doubtful that VARA even covered the assembled materials that arduous act of creation.’ ” Id. at 83 (quoting House Report

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 10 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 constituted this unfinished installation.”). Moreover, the court reproduced, or otherwise communicated for a period of more qualified the statute's application to unfinished works: “To the than transitory duration.” Id. extent that an artist seeks protection for an uncompleted work, a violation of one of VARA's two explicitly recognized rights Not surprisingly, based on section 101's general must be demonstrated with special clarity.” Id. at 258. definitions, courts have held that the Copyright Act's protections extend to unfinished works. See, e.g., Dumas v. [7] [8] Our review of the district court's interpretation of Gommerman, 865 F.2d 1093, 1097 (9th Cir.1989), rejected on VARA is de novo. Phillips, 459 F.3d at 139. “ ‘As in all other grounds by Community for Creative Non–Violence statutory construction cases, we begin with the language of v. Reid, 490 U.S. 730, 739, 742 n. 8, 109 S.Ct. 2166, 104 the statute,’ ” id. (quoting Barnhart v. Sigmon Coal Co., L.Ed.2d 811 (1989); Zyware, Inc. v. Middlegate, Inc., No. 96 534 U.S. 438, 450, 122 S.Ct. 941, 151 L.Ed.2d 908 (2002)), Civ. 2348(SHS), 1997 WL 685336, at *4 (S.D.N.Y. Nov.4, and “[i]f the meaning of the text is unambiguous our task ends 1997) (noting that there is “no requirement that a work be complete before it is protected by the Copyright Act”); there as well,” United States v. Godin, 534 F.3d 51, 56 (1st Cir.2008). “If the statute's language is plain, the sole function Playboy Enters. Inc. v. Dumas, 831 F.Supp. 295, 314 of the courts—at least where the disposition required by the (S.D.N.Y.1993) (“[T]he [Copyright] Act protects works in text is not absurd—is to enforce it according to its terms.” progress.”), modified on other grounds by 840 F.Supp. 256 In re Rudler, 576 F.3d 37, 44 (1st Cir.2009) (quotation (S.D.N.Y.1993), aff'd in part, rev'd in part by 53 F.3d 549 marks and citations omitted). (2d Cir.1995).

The definition of a “work of visual art” for VARA purposes is [9] Reading VARA in accordance with the definitions in stated “in terms both positive (what it is) and negative (what section 101, it too must be read to protect unfinished, it is not).” Carter, 71 F.3d at 84. An unfinished sculptural but “fixed,” works of art that, if completed, would qualify installation such as “Training Ground for Democracy” is 10 not one of the items specifically excluded from VARA for protection under the statute. To conclude otherwise would be “contrary to the rule that provisions of a single act protection, 9 and MASS MoCA wisely does not attempt to should be construed in as harmonious a fashion as possible.” argue otherwise. Instead, we must determine whether the United States v. Maravilla, 907 F.2d 216, 231 (1st Cir.1990) *51 “positive” aspect of the definition of “work of visual (citation omitted). At least one circuit has previously assumed art” includes an unfinished version of a “sculpture[ ] existing VARA's applicability to unfinished works. See Carter, in a single copy.” 17 U.S.C. § 101. 71 F.3d at 83–88 (discussing VARA claims stemming from an unfinished, walk-through sculpture being installed in the The text of VARA itself does not state when an artistic 11 project becomes a work of visual art subject to its protections. lobby of a building). However, VARA is part of the Copyright Act, and that Act's definition section, which defines “work of visual art,” [10] Our conclusion that the statute's plain language extends specifies that its definitions, unless otherwise provided, its coverage to unfinished works makes it unnecessary to delve into VARA's legislative history. We nonetheless control throughout Title 17. See 17 U.S.C. § 101. That note that we have looked closely at that history, and it general definitional section of the Copyright Act states that a fully supports our reading of the plain language. Common work is “created” when it “is fixed in a copy ... for the first sense points in the same direction. Moral rights protect the time.” Further, “where a work is prepared over a period of personality and creative energy that an artist contributes to time, the portion of it that has been fixed at any particular his or her work. That convergence between artist and artwork time constitutes the work as of that time.” 17 U.S.C. § 101 does not await the final brush stroke or the placement of (emphasis added). A work is “fixed” when it has been formed, the last element in a complex installation. *52 See, e.g., “by or under the authority of the author,” in a way that is Monica Pa & Christopher J. Robinson, Making Lemons out “sufficiently permanent or stable to permit it to be perceived, of Lemons: Recent Developments in the Visual Artists Rights Act, 3 Landslide 22, 24 (Jan./Feb. 2009) (“[T]he history of art

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 11 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 is full of sublime ‘unfinished’ works of art, such as Leonardo da Vinci's Statue of a Horse (begun 1488), Michelangelo's A. The Scope of VARA's Integrity and Attribution Tomb of Pope Julius II (begun 1505), or El Greco's The Vision Rights of St. John (1608–14).”); Laura Flahive Wu, Massachusetts 1. The Right of Integrity Museum of Contemporary Art v. Büchel: Construing Artists' [14] VARA's right of integrity, codified at 17 U.S.C. § Rights in the Context of Institutional Commissions, 32 Colum. 106A(a)(3)(A), provides that an artist shall have the right J.L. & Arts 151, 163 (2008) (noting that “many works are “to prevent *53 any intentional distortion, mutilation, or considered ‘art’ even though they capture creative expression other modification of [his or her] work which would be short of an artist's ultimate realization of that expression”). prejudicial to his or her honor or reputation, and [that] any intentional distortion, mutilation, or modification of that work We thus hold that VARA protects the moral rights of artists is a violation of that right.” It thus allows artists to protect who have “created” works of art within the meaning of the their works against intentional modifications that would be 12 Copyright Act even if those works are not yet complete. prejudicial to their honor or reputations. House Report at 6, as reprinted in 1990 U.S.C.C.A.N. at 6915. 13

III. There is arguably some uncertainty about the plaintiff's burden of proof in a case such as this because the second part [11] [12] [13] Given Büchel's right to protection under of section (a)(3)(A)—stating that “any intentional distortion, VARA for his artistic investment in a partially completed mutilation, or modification of th[e] work is a violation” artwork, we must now assess the district court's ruling that of the right of integrity—does not explicitly require a Büchel failed to raise a genuine issue of material fact with showing of prejudice when the alteration already has occurred respect to any of his claims. We review the district court's and damages, rather than injunctive relief, would be the grant of summary judgment de novo. Insituform Techs., Inc. appropriate remedy. See 5 Patry, supra, § 16:22 (noting the v. Am. Home Assur. Co., 566 F.3d 274, 276 (1st Cir.2009). ambiguity). Because those VARA cases that make it to court “The presence of cross-motions neither dilutes nor distorts are “generally ... decided on threshold questions such as this standard of review.” Scottsdale Ins. Co. v. Torres, whether the artist's work is a work of visual art within the 561 F.3d 74, 77 (1st Cir.2009) (quotation marks and citations scope of the Act,” Pa & Robinson, supra, at 26, courts have omitted); see also Littlefield v. Acadia Ins. Co., 392 F.3d 1, 6 had little occasion to give content to the rights that VARA (1st Cir.2004) (“Cross motions simply require us to determine guarantees. See Wu, supra, at 159 (“[C]ourts avoid construing whether either of the parties deserves judgment as a matter the extent of VARA protection by finding that works do not of law on facts that are not disputed.”) (quotation marks and meet the threshold requirements for ‘visual art’ protected by citation omitted). Summary judgment is appropriate where VARA.”). Unsurprisingly, therefore, we have found no case “there is no genuine issue as to any material fact” and law discussing a possible difference in the showing required “the movant is entitled to judgment as a matter of law.” for injunctive relief and damages for right-of-integrity claims. Fed.R.Civ.P. 56(c)(2); see also Sullivan v. City of Springfield, 561 F.3d 7, 14 (1st Cir.2009). “A dispute is ‘genuine’ if the Some courts, however, have assumed without analysis that evidence about the fact is such that a reasonable jury could the prejudice showing is necessary for both injunctive relief resolve the point in favor of the non-moving party. A fact is and damages. See, e.g., Hanrahan v. Ramirez, No. 2:97–CV– ‘material’ if it has the potential of determining the outcome of 7470, 1998 WL 34369997, at *3 (C.D.Cal. June 3, 1998) the litigation.” Scottsdale Ins. Co., 561 F.3d at 77 (citation (citing 17 U.S.C. § 106A(a)(3)); Carter v. Helmsley– omitted). Spear, Inc., 861 F.Supp. 303, 329–30 (S.D.N.Y.1994), aff'd in part, vacated in part, and rev'd in part by Carter, 71 F.3d We first consider Büchel's claims asserting violations of his at 77. At least one commentator likewise accepts, without attribution and integrity rights under VARA and then address discussion, that the damages remedy requires a showing his claims under other provisions of the Copyright Act, which of prejudice. See Melville B. Nimmer, 3–8D Nimmer on assert violations of his rights to control the display of the Copyright § 8D.06[C][1] (noting that “an intentional and installation and to create derivative works based on it. prejudicial mutilation is an integrity violation, remediable through not only an injunction, but damages as well”).

Interestingly, Nimmer raises, and dismisses, a different artist's reputation in relation to the altered work of art; the imprecision in section (a)(3)(A): artist need not have public stature beyond the context of the creation at issue. See House Report at 15, as reprinted in 1990 The statutory language—“distortion, mutilation, or other U.S.C.C.A.N. at 6925 (“[A]n author need not prove a pre- modification of the work which would be prejudicial existing standing in the artistic community.”). to his or her honor or reputation”—is susceptible of a reading whereby the requisite prejudice applies only to “modification,” not to the antecedents of “distortion” or 2. The Right of Attribution “mutilation.” Though not without ambiguity, the better [16] [17] VARA's right of attribution grants the author of view under the Berne Convention, from which this a work of visual art the right, in part, (1) “to claim authorship language is drawn, is that prejudice applies in all three of that work”; (2) “to prevent the use of his or her name as instances. the author of any work of visual art which he or she did not create”; and (3) “to prevent the use of his or her name as the Id. author of the work of visual art in the event of a distortion, *55 mutilation, or other modification of the work which [15] We agree with Nimmer's view of the provision, would be prejudicial to his or her honor or reputation.” 17 including the application of the prejudice requirement to a U.S.C. § 106A(a)(1),(2). The right “ensures that artists are claim for damages, and consider that construction soundly correctly identified with the works of art they create, and that grounded in VARA's legislative history. Under the heading they are not identified with works created by others.” House “Purpose of the Legislation,” the House Report notes that Report at 6, as reprinted in 1990 U.S.C.C.A.N. at 6915. In the right of integrity “allows artists to protect their works addition, if a work of visual art has been distorted or modified against modifications and destructions that are prejudicial (and, unlike the integrity right, the original distortion or to *54 their honor or reputations.” House Report at 6, as modification need not be intentional), associating the author's reprinted in 1990 U.S.C.C.A.N. at 6915. The Report also name with the distorted work against his wishes would violate notes that the rights provided by VARA are “analogous to his right of attribution. those protected by Article 6bis of the Berne Convention,” id., which in turn describes the right of integrity as applicable [18] The right of attribution under VARA thus gives an artist to “certain modifications and other derogatory actions” that a claim for injunctive relief to, inter alia, assert or disclaim would be prejudicial to the artist's honor or reputation. 14 authorship of a work. Whether VARA entitles an artist to Given the stated purpose of the legislation and the similar damages for violation of the right of attribution is a separate depiction of the integrity right in the Berne Convention, we question. We find the answer in the difference between the conclude that Congress intended the prejudice requirement to statutory language on the right of integrity and the language apply to the right of integrity whether the remedy sought is on the right of attribution. Subsection (a)(3) of section 106A, injunctive relief or damages. 15 which codifies the right of integrity, is further divided into two subsections: (A) confers the right to protect the work Although VARA does not define the terms “prejudicial,” against intentional alterations that would be prejudicial to “honor,” or “reputation,” the House Report recommended that honor or reputation, and (B) confers the right to protect a the prejudice inquiry “focus on the artistic or professional work of “recognized stature” from destruction. 16 Although honor or reputation of the individual as embodied in the both subsections are framed as rights “to prevent” certain work that is protected,” and “examine the way in which a conduct, they both also contain an additional clause stating work has been modified and the professional reputation of that the occurrence of that conduct is, at least in certain the author of the work.” House Report at 15, as reprinted in circumstances, “a violation of th[e] right” to prevent the 1990 U.S.C.C.A.N. at 6925–26 (footnotes omitted). Relying conduct from happening. See 17 U.S.C. § 106A(a)(3)(A) on dictionary definitions of prejudice, honor and reputation, (“any intentional distortion, mutilation, or modification of the district court in Carter concluded that it should “consider that work is a violation of that right”); id. at § 106(a)(3) whether [the proposed] alteration would cause injury or (B) (“any intentional or grossly negligent destruction of that damage to plaintiffs' good name, public esteem, or reputation work is a violation of that right”). in the artistic community.” 861 F.Supp. at 323. We think this a useful approach, but emphasize that the focus is on the

[19] No such “violation” clause is included in the sections relief, and we therefore do not address the attribution claim codifying the right of attribution. See Nimmer, supra, at § in our VARA analysis. We thus consider the evidence in 8D.06[B][1] (“The statute does not make any provision to the light most favorable to Büchel in determining whether redress violation of any of the foregoing three attribution there are genuine issues of material fact regarding the alleged rights.”). The legislative history sheds no light on this violations of his right of integrity. difference, but Nimmer speculates as follows: As noted above, the district court concluded that Büchel's right of integrity was not implicated by MASS MoCA's Perhaps the implication is that whereas conduct. The court found that “nothing in MASS MoCA's an integrity violation could give planned display of the unfinished installation would have rise to a monetary recovery, failure violated Büchel's right of integrity, for the simple reason that to attribute is remediable solely no completed work of art ever existed on these facts for through injunction. If that conclusion the museum to distort, mutilate or modify.” 56 F.Supp.2d were intended, Congress certainly at 260. Although the court stated that it would assume that could have expressed its intent less VARA applied to unfinished works, its analysis appears obliquely. to be influenced by a more limited view of the statute's scope. The court stated that “[t]o suggest that the display of an unfinished and abandoned work somehow constitutes Id. We agree with Nimmer's surmise that VARA does not a distortion, mutilation, or modification of that non-existent provide a damages remedy for an attribution violation. Where work is simply inconsistent with the ordinary usage of those the statutory language is framed as a right “to prevent” terms.” Id. Having concluded that VARA applies with full conduct, it does not necessarily follow that a plaintiff is force to unfinished works, however, we cannot accept the entitled to damages once the conduct occurs. The question district court's reliance on the unfinished state of “Training is whether “doing” the act the artist has a right to prevent Ground” to minimize the rights of its creator. also triggers a damages remedy, and the statutory language indicates that Congress answered that question for the It cannot be disputed that, at least by the time Büchel attribution right differently from the integrity right. left North Adams in December 2006, “Training Ground” was “fixed” within the meaning of the Copyright Act— It is also noteworthy that Congress crafted a damages remedy i.e., materials had been placed in Building 5 “by or under for the destruction of a work of recognized stature that is the authority of the author” in a “sufficiently permanent or narrower than the right to prevent destruction of such works. stable” manner to allow the work to be “communicated for While an artist may “prevent any destruction of a work of a period of more than transitory duration.” 17 U.S.C. § recognized stature,” only an “intentional or grossly negligent 101. The elements of the installation had been chosen by destruction of that work *56 is a violation of that right.” Büchel, and his assistants and the Museum workers had put 17 U.S.C. § 106A(a)(3)(B) (emphasis added). This narrowing numerous components of the project in place under his direct further indicates that Congress did not intend a damages supervision. Although far from complete, the work by the end remedy to arise automatically from the right to prevent of 2006 included parts of the “Saddam Compound” and the conduct. In failing to provide a damages remedy for any type cinema, and Büchel and his assistants had begun detailing of violation of the moral right of attribution, Congress may several of the containers intended to house elements such as a have concluded that artists could obtain adequate relief for the jail, museum and voting booths. With this substantial work in harms of false attribution by resorting to the Copyright Act place, the sculpture had an established presence in Building 5. and other traditional claims. Büchel thus had rights in the work that were protected under VARA, notwithstanding its unfinished state. B. Büchel's VARA Claims [20] With this legal framework in mind, we turn to the record Büchel alleges that MASS MoCA violated his right to before the district court. By dismantling “Training Ground,” integrity in three distinct ways: first, by continuing to work the Museum prevented the further use of Büchel's name in on the installation without his authorization, particularly in connection with the work, eliminating any basis for injunctive early 2007, and by then exhibiting the distorted artwork to the

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 14 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 public; second, by using tarpaulins to “partially cover [ ]”— work with people that think they know my art better than I do and thus modify and distort—the installation, and allowing as well [as] try to sabotage the project....” Museum visitors to see it in that condition; and third, merely by showing Büchel's work in its unfinished state, which he In early 2007, when he was no longer on-site, Büchel again claims was a distortion. Büchel asserts that these actions *57 accused the Museum of “sabotage acts” and, in a January caused prejudice to his honor or reputation. 16 letter, issued an ultimatum: he would return to North Adams to complete “Training Ground” only if the Museum As we shall explain, we conclude that summary judgment assented to a number of specific conditions. Aside from was improperly granted to MASS MoCA because material certain budgetary concerns irrelevant here, Büchel included disputes of fact exist concerning the first of Büchel's integrity the following among his list of demands: claims—i.e., that MASS MoCA modified “Training Ground” over his objections, to his detriment. We further conclude There is NO negotiation about the scope of the project. that the record contains sufficient evidence to allow a jury to There are no elements to be eliminated as you propose find that MASS MoCA's actions caused prejudice to Büchel's and I don't accept any orders and any more pressure or honor or reputation. The other integrity claims, however, are compromises how things have to be done, neither from you unavailing. or your crew....

I will not give you any permission to show an unfinished 1. Continuing Work on “Training Ground” project nor will I show nor let you show any work in Büchel asserts that, in the months following his departure progress, as you proposed already earlier. from North Adams in December 2006, the Museum encroached on his artistic vision by making modifications I will not accept without consequences any additional to the installation that in some instances were directly sabotage acts, as done to artworks of mine and as well done contrary to his instructions. In rejecting Büchel's VARA to the installation in progress[.] claims, the district court described the Museum's actions as perhaps “occasionally misguided” attempts “to implement The letter also identified several points of disagreement with the Museum concerning the content of the project, including Büchel's long-distance instructions.” 565 F.Supp.2d at Büchel's insistence that there be “no transport *58 street 260. The court found that these “[f]umbled efforts to assist in through the exhibition” and that he did not “need to be told creating, or failing to create, a work of art are not equivalent if an airplane fuselage section fits in the show or not. I don't to distortion, modification, or mutilation of the art.” Id. at negotiate constantly my art with you or Nato....” Accusing 260–61. the Museum director of showing “little respect towards [his] plans,” he told Thompson “please don't tell me all the time Although a jury might agree with the court's assessment, the how I have to do my project regarding its scope and it's [sic] evidence viewed in the light most favorable to Büchel would methods that needs [sic] to be applied.” allow a finding that at least some of the Museum's actions violated VARA. The record permits the inference that, even Unsatisfied with the Museum's response to his list of during his time as an artist-in-residence at MASS MoCA, demands, Büchel wrote to Thompson again on January 27, Museum staff members were disregarding his instructions and 2007. He warned that, based on the information he had been intentionally modifying “Training Ground” in a manner that provided, “there [was] a lot of stuff not being done according he did not approve. For example, on December 14, 2006, to my instructions.” Again, he noted several elements of just before he left for the holidays, Büchel complained to the work that had been installed against his wishes. 17 Thompson that in “many cases people just do stuff without Thompson and Büchel traded emails during the first few checking back if its ok to do s[omething], when they think days of February, with Büchel stating that he would “not by themselves the plan has to be changed.” Büchel expressed negotiate further this matter ... because almost any of the main further concerns in an email to Thompson later that month: “I conditions are simply not fulfilled” and Thompson writing don't [k]now if this is really a great opportunity when you get that he believed the Museum had “responded to [Büchel's] an invitation to do a show, where you have to make constantly main issues.” tons of compromises, where you have to fight constantly against stubborn[n]ess as well [as] against the institution and

After that, direct communication between Büchel and the [m]aterials, and with respect to the selection and procurement Museum became sparse. It was during this time, Büchel of pre-existing buildings and vehicles that have been modified alleges, that the Museum developed a “Plan B” 18 to be and incorporated into the [m]aterials.” (Emphasis added.) 19 implemented in the event—which was looking increasingly likely—that he did not return to finish the exhibit. Plan B, MASS MoCA argues that the evidence, taken in its entirety, which involved publicly exhibiting the unfinished installation does not add up to a triable issue with respect to a violation without the artist's permission, called for completing various of Büchel's right of integrity, but shows only that Museum elements of the installation in a way the Museum knew might personnel were attempting to carry out Büchel's vision based differ from Büchel's artistic concept. Büchel cites an email on his instructions. Indeed, the Museum notes that the chain on February 14 that included Joseph Thompson and work slowed as Büchel's instructions became unavailable. 20 Dante Birch, in which Thompson, stating that the Museum MASS MoCA specifically disputes Büchel's reading of the “seem[ed] to be getting closer and closer to Plan B,” gave February 14 email chain as demonstrating the Museum's specific instructions on various elements of the installation. disregard of his creative rights over the installation, asserting Thompson suggested that Museum staff do “[a]nything else that the discussion among its staff members in fact reflects Dante and Nato feel is known with 80% certainty.” a conscious effort to determine how far the Museum could appropriately go in light of the remaining instructions left by At least some Museum staff members recognized that the artist. In one email, for example, Thompson noted that “we continuing to work on the installation without Büchel's input are putting the correct objects in the spaces cb indicated.... might be problematic. Later in the February 14 email chain, That's not ‘doing a buechel [sic]’ that's prepping for buechel Dante Birch noted that he was “interested in protecting [sic] assuming, as we still are, that there is some chance we'll the museum from intellectual property issues.” Pointing out see him here again.” Other communications in the record also that the show was advertised as a Büchel in the Museum's could be interpreted as showing the Museum doing its best to schedule, he stated that when reviewers came, “the question carry out Büchel's concept for the art work. will be ‘what is it?’ ... and if it's reviewed as a Buchel we're in deep shit.” Thompson's plans also raised concern among other [22] As we have noted, a jury may well accept the Museum's MASS MoCA employees, including curator Susan Cross, depiction of its intention and its actions. At this juncture, who cautioned Thompson in a January 31 email that “we however, the record must be viewed in the light most tend to forget that whether we're doing the welding or not, favorable to Büchel. The evidence we have described would there is an ‘author’—an artist for whom we shouldn't make permit a jury to find that the Museum forged ahead with decisions.... At what point, if at all, does an artist lose his the installation in the first half of 2007 knowing that the right to owning the idea and his/her ‘intellectual property?’ ... continuing construction in Büchel's absence would frustrate I think it is still art and still belongs to Buchel.” —and likely contradict—Büchel's artistic vision. We thus conclude that a jury issue exists as to whether these actions [21] Both in his deposition and in his affidavit, Büchel effected *60 an intentional distortion or other modification described ways in which he felt the Museum had knowingly of “Training Ground” that subjected MASS MoCA to liability disregarded his specific instructions. For example, MASS under VARA. MoCA's decision to build a cinderblock wall through the Cape Cod-style house in the installation, despite Büchel's [23] The record also contains evidence from which a *59 expressed desire that the construction await his return, jury could conclude that the Museum's alterations had a resulted in what Büchel considered a “big distortion of the detrimental impact on Büchel's honor or reputation. An article meaning of that element.” The record is replete with similar in the Boston Globe reported that, in February, Museum allegations concerning other components of the installation, officials had shown the unfinished project to a group of including the cinema, the bomb carousel, the Saddam Museum directors and curators who were attending an arts spiderhole, the police car and the mobile home. Indeed, conference in the area. See Geoff Edgers, Behind doors, even the Museum, in its August 31, 2007 memorandum a world unseen: Dispute cloaks massive installation at of law in support of its motion for summary judgment, MASS MoCA, Boston Globe (March 28, 2007), available admitted that the installation “[m]aterials as they now stand at www.boston. com/ae/theater_ arts/articles/2007/03/28/ reflect significant aesthetic and design choices by MASS behind_doors_a_world_unseen/ (“Behind doors, a world MoCA personnel, including with respect to the layout of the unseen ”). Another journalist reported on observing the

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 16 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 unfinished (and still untarped) work. See The Show Will Go intentional distortion and modification to his work in *61 On, supra. which Museum personnel repeatedly ignored his express wishes. Our holding that the summary judgment record Although the commentary generated by these visits is not precludes an affirmance of the district court on this claim all negative, 21 there was sufficient evidence for a jury may serve as a cautionary tale to museums contemplating to find that the changes to “Training Ground” caused similar installations in the future—guiding them to document prejudice to Büchel. The New York Times noted that the terms of their relationship and obtain VARA waivers the exhibition would “certainly give people unfamiliar where necessary—but it does not prevent museums or other with his obsessive, history-driven aesthetic an inaccurate collaborators from working cooperatively with artists on such sense of his art, and this is indeed a form of damage.” non-traditional artworks. Is It Art Yet?, supra. A critic for the Boston Globe similarly observed that “many people are going to judge 2. Showing “Training Ground” Covered with Tarpaulins [Büchel] and his work on the basis of this experience.” Büchel also claims that MASS MoCA improperly modified Ken Johnson, No admittance: MASS MoCA has mishandled and distorted “Training Ground” when it partially covered it disputed art installation, Boston Globe, July 1, 2007, at with the yellow tarpaulins and displayed it in that condition. 1N. One viewer, writing in Commentary magazine, observed He asserts that the record shows beyond dispute that visitors that “I am not sure that it suffers from being enveiled.” looked behind the tarps, that the tarp-adorned installation was Michael J. Lewis, The Cost of Transgression, http:// “judged by others to be Büchel's work, and that his honor w ww.commentarymagazine.com/blogs/index.php/lewis/499 and reputation were harmed by it.” In response, the Museum (June 4, 2007). A review published in Berkshire Fine Arts— argues that the yellow tarpaulins were merely functional—a subtitled “Crap Under Wrap”—concluded that it would be way of keeping people “out” of the installation—rather than a “huge mistake” to uncover the installation, which offered an aesthetic modification of the artwork that gave MASS “virtually nothing of substance or interest.” Crap Under MoCA patrons a distorted view of it. Wrap, supra. Although the tarpaulins did prevent visitors to the Museum The record thus shows that some viewers of the installation from seeing the entire unfinished installation, the record reacted unfavorably to the work in its allegedly modified shows that a number of people were able to form an and distorted form. A factfinder might conclude, of course, impression of “Training Ground” despite the partial covering. that it was Büchel's underlying concept (notwithstanding For example, according to one observer, its unfinished state) rather than MASS MoCA's actions that elicited the negative reactions. However, a jury could also reasonably infer that the negative impressions resulted [the tarps] don't reach the floor, from the Museum's unauthorized modifications to “Training and they rise only about two feet Ground,” diminishing the quality of the work and thereby above eye level, so they don't cover harming Büchel's professional honor or reputation as a visual much. You can easily crouch down artist. to slip your head underneath or peek through the slits between the In concluding that Büchel has adduced sufficient evidence vinyl sheets. Beyond the passageway to support a right-of-integrity claim, we reject the Museum's formed by the tarps, the monumental assertion that to find a violation of Büchel's right of integrity elements of the installation rise in these circumstances would make it impossible for parties to all around you, plain as day— collaborate on large-scale artistic works. The Museum warns the cinderblock walls, the two-story that, under Büchel's interpretation, “no one other than the house, the guard tower, the trailers, the artist himself ... may ever perform any work in fabricating carnival ride, all compacted together visual art unless that specific task has been authorized by in a claustrophobic, politically surreal the artist.” We disagree. Although the artist's vision must borough of hell, George Orwell by way govern, that principle does not prevent collaboration at the of David Lynch. implementation level so long as the artist's vision guides that implementation. Here, Büchel alleges a campaign of

disclosing [his or her] work to the public without the Thomas Micchelli, Christoph Büchel Training Ground author's consent,” and is not covered by VARA. See Cyrill P. for Democracy, The Brooklyn Rail (September 2007), Rigamonti, Deconstructing Moral Rights, 47 Harv. Int'l L.J. available at http://www.brooklynrail. org/2007/09/artseen/ 353, 373, 405 (2006) “( [T]he VARA ignores the rights of buchel. Another critic noted that the installation “under all disclosure and withdrawal and instead focuses on the rights the tarps is really kind of a conceptual peep show. It doesn't of attribution and integrity....”). take much effort or imagination to see most of the work.... Mass MoCA is hiding an elephant behind a napkin,” and Although Büchel proffered an expert who opined that called it a “wink, wink, wrap show.” Crap Under Wrap, supra. showing an unfinished work without the artist's permission Photographs in the record confirm that the covers did not is inherently a distortion, we decline to interpret VARA obscure the general path and layout of the installation. Indeed, to include such a claim where a separate moral right of given the location of “Training Ground,” visitors to “Made disclosure is widely recognized in other jurisdictions and at MASS MoCA” could not avoid seeing the unfinished Congress explicitly limited the statute's coverage to the rights “Training Ground” bedecked in tarpaulins. of attribution and integrity. See Amy M. Adler, Against Moral Rights, 97 Cal. L.Rev. 263, 268 (2009) (noting that most [24] Nonetheless, although the installation unquestionably European countries “recognize a right of divulgation, giving looked different with the tarpaulins partially covering it, the artist the right to decide when (and whether) the work we agree with the district court that the mere covering of is complete and can be shown”); Rigamonti, supra, at 356 the artwork by the Museum, its host, cannot reasonably be (“The standard set of moral rights recognized in the literature deemed an intentional act of distortion or modification of consists of the author's right to claim authorship (right of Büchel's creation. To conclude otherwise would be to say attribution), the right to object to modifications of the work that, even if all had gone well, the Museum would have been (right of integrity), the right to decide when and how the subject to a right-of-integrity claim if it had partially covered work in question will be published (right of disclosure), the work before its formal opening to prevent visitors from and the right to withdraw a work after publication (right of seeing it prematurely. withdrawal).” (footnotes omitted)); 5 Patry on Copyright § 16:23 (noting that VARA does not give the artist “a right This is not to say that MASS MoCA was necessarily acting to prohibit display of mutilated versions of his or her work, with pure intentions when it created “Made at MASS MoCA” only the right to prohibit the mutilation itself”). Any right in close proximity to the tarped “Training Ground.” It might Büchel possesses to withhold display of his artwork must be be a fair inference that *62 the Museum was deliberately found outside VARA. We consider below his claim to such a communicating its anger with Büchel by juxtaposing his unfinished work with the successful artistic collaborations right under section 106(5) of the Copyright Act. See infra depicted in its new exhibition. The partial covering of Section IV. “Training Ground” may have been intended to highlight, 22 rather than hide, the failed collaboration. The right of 4. Summary of VARA Claims integrity under VARA, however, protects the artist from After careful review of the record, we are persuaded that a distortions of his work, not from disparaging commentary reasonable jury could find that Büchel is entitled to relief about his behavior. In our view, a finding that the Museum's under VARA based on the Museum's continuing work on covering of the installation constituted an intentional act of “Training Ground” over his objections. Genuine disputes of distortion or modification of Büchel's artistic creation would material fact foreclose summary judgment for either Büchel stretch VARA beyond sensible boundaries. or MASS MoCA on that claim. *63 We find no merit, however, in Büchel's claim that MASS MoCA intentionally modified or distorted “Training Ground” by covering it with 3. Exhibiting “Training Ground” in Its Unfinished State tarpaulins, and we reject as outside the scope of the statute [25] Büchel maintains that, even aside from the alleged Büchel's claim that the Museum violated VARA by displaying modifications to “Training Ground,” merely exhibiting the the installation over his objections. We affirm the district work of art in its unfinished state, without the artist's consent, court's grant of summary judgment for the Museum on constitutes a distortion. We reject this claim. A separate moral Büchel's right-of-attribution claim, which became moot when right of disclosure (also known as the right of divulgation) MASS MoCA dismantled the installation in 2007. protects an author's authority to “prevent third parties from

[26] We thus turn specifically to this claim. The Museum argues that Büchel has failed to present a triable issue

IV. of fact on his claim under section 106(5) because the unfinished work was never publicly displayed. However, as We now assess Büchel's challenge to the grant of summary we have described in the context of our VARA discussion, judgment for MASS MoCA on his Copyright Act claims. there is significant record evidence suggesting that the work was repeatedly and deliberately exhibited to numerous 23 A. Public Display individuals. The owner of a copyrighted work has the exclusive right [27] MASS MoCA also asserts an affirmative defense to “display the copyrighted work publicly.” 17 U.S.C. § under section 109(c), which provides that “the owner of a 106(5). Displaying a work is defined as “show[ing] a copy particular copy lawfully made under this title, or any person of it, either directly or by means of a film, slide, television authorized by such owner, is entitled, without the authority image, or any other device or process.” 17 U.S.C. § 101. A of the copyright *64 owner, to display that copy publicly.” “copy” includes the original. Id. Büchel argued below, as he 17 U.S.C. § 109(c). The Museum argues that it owned the does on appeal, that the Museum's repeated public exhibitions physical copy of “Training Ground,” and that section 109(c) of “Training Ground for Democracy” constituted a public therefore permitted it to display the unfinished work. Here display of his work in violation of his exclusive right under again, however, the record reveals disputed issues of fact with respect to whether the Museum's copy was “lawfully section 106(5). The district court gave no explicit reason made,” as it may have been created in violation of the artist's for its dismissal of this claim, remarking only that “[f]or rights under VARA. Moreover, Büchel introduced evidence the reasons already stated,” presumably in its discussion of to rebut the Museum's assertion that “the installation's various VARA, MASS MoCA was “entitled to judgment on this components” all belonged to, or were purchased by, MASS count.” 565 F.Supp.2d at 261. MoCA. Finally, Büchel presented evidence that the Museum understood that the physical copy of the installation belonged The court also remarked, however, that since Büchel to him. 24 Accordingly, viewing the evidence in the light most “would have suffered a violation of no right recognized favorable to Büchel, we cannot say that a reasonable jury by this statute, this messy situation simply fell outside could not conclude that the Museum violated his exclusive the boundary of VARA and, a fortiori, outside the more right to publicly display “Training Ground for Democracy.” general provisions of the Copyright Act.” Id. at 260. This statement reflects a misreading of the Copyright Act. B. Derivative Works As we have explained, the moral rights granted to specific The Copyright Act also grants artists the exclusive right artists under VARA are separate and independent from the to “prepare derivative works based upon the copyrighted economic rights guaranteed by section 106. 17 U.S.C. § work.” 17 U.S.C. § 106(2). A derivative work is defined 106A(a) (providing that rights of attribution and integrity are as one “based upon one or more preexisting works,” such as “independent of the exclusive rights provided in section a translation, musical arrangement, fictionalization, “or any 106”). Thus, the inadequacy of claims under VARA does other form in which a work may be recast, transformed, or not, on its own, signify the inadequacy of more traditional adapted.” 17 U.S.C. § 101. A derivative work includes copyright claims. See Wu, supra, at 164 (observing that any work “consisting of editorial revisions, annotations, VARA has “acquired the attributes of a false talisman,” both elaborations, or other modifications which, as a whole, because artists overly rely on it in “instances where economic represent an original work of authorship.” Id. Büchel brought rights, including traditional rights of copyright provided two claims based on this provision, asserting that MASS by Section 106 ... would more effectively protect their MoCA created unauthorized derivative works based on the interests” and also because courts tend to view VARA claims installation itself and on the work's models and plans. as “devalu[ing] entitlements to economic rights pleaded in tandem with VARA claims”). The district court ruled that, “[e]ven assuming that the stumbling, and eventually abandoned, process of

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 19 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 collaboration during 2006 produced an original work of art to derivative work claims, particularly as it intersects with subject to copyright protection, which is highly doubtful, VARA's protection for works of visual art, is complex. clearly no ‘derivative’ work of art was created by MASS See, e.g., Lee v. A.R.T. Co., 125 F.3d 580, 582–83 (7th MoCA's attempt (however flawed) to play its part in this Cir.1997); Henry Hansmann, Authors' and Artists' Moral process.” 565 F.Supp.2d at 261. It further rejected Büchel's Rights: A Comparative Legal and Economic Analysis, 26 argument that, by placing tarpaulins over the unfinished J. Legal Stud. 95, 114–116 (1997). Büchel's undeveloped installation, the Museum created a separate, unauthorized argument is so perfunctory that we deem the claim waived. derivative work. Id. See United States v. Zannino, 895 F.2d 1, 17 (1st Cir.1990) (stating that, on appeal, “issues adverted to in On appeal, Büchel summarily argues that what the Museum a perfunctory manner, unaccompanied by some effort at displayed in Building 5, both with and without the yellow developed argumentation, are deemed waived”). tarpaulins, “recast” or “transformed” the work that he had originally set out in his plans and left behind in December 2006, thus creating derivative works under the Copyright Act. 25 In response, MASS MoCA again argues that its V. staff was following Büchel's instructions when working on We summarize our holdings: “Training Ground” in his absence, and that the Museum therefore was merely executing Büchel's vision rather than 1. VARA's protection of an artist's moral rights extends exercising its own artistic judgment to create a new, derivative to unfinished creations that are “works of art” within the artwork. meaning of the Copyright Act;

A derivative work within the meaning of the Copyright Act 2. The right of integrity under VARA protects artists from “consists of a contribution of original material to a pre- *65 distortions, mutilations or modifications of their works that existing work so as to recast, transform or adapt the pre- are prejudicial to their reputation or honor, and prejudice must existing work,” and the variation from the original must be be shown for both injunctive relief and damages; “sufficient to render the derivative work distinguishable from its prior work in any meaningful manner.” Nimmer, supra, § 3. Büchel has adduced sufficient evidence to raise a genuine 3.03[A]; see also Schrock v. Learning Curve Int'l, Inc., 586 issue of material fact as to whether MASS MoCA violated his right of integrity on one of his three asserted bases for liability, F.3d 513, 520–21 (7th Cir.2009); Woods v. Bourne Co., namely, by modifying “Training Ground” over his objections 60 F.3d 978, 990 (2d Cir.1995). As we have held, Büchel's in a manner that harmed his honor or reputation. His right-of- contention that his work was modified without his permission integrity claims based on the yellow tarpaulins and the mere and to his detriment gives rise to a right-of-integrity claim display of “Training Ground” lack merit; under VARA. Every modification of a work of art does not, however, result in the creation of a derivative work. 4. Büchel's right-of-attribution claim is moot, as VARA provides only injunctive relief to protect the right of [28] In Büchel's 52–page opening brief, there is one attribution and the installation no longer exists; paragraph that purports to analyze the derivative work claim, and that paragraph itself is largely descriptive rather than 5. The record reveals a genuine issue of material fact as analytical. Büchel cites no cases and does not explain how to whether MASS MoCA violated Büchel's exclusive right the modified “Training Ground” was sufficiently original and distinctive within the meaning of the Copyright Act to under section 106(5) of the Copyright Act to display his qualify as a derivative work. His reply brief adds another work publicly; paragraph, citing cases, but he again asserts in summary fashion that the modifications resulted in a derivative work. 6. Büchel fails to adequately develop his claim that MASS He states that the degree of creativity needed for a derivative MoCA violated his exclusive right under section 106(2) work is minimal, but does not explain how the Museum's to prepare derivative works based on “Training Ground,” and alterations create a new work that, as a whole, meets the that claim is therefore waived. Copyright Act's originality requirement. The law applicable

Affirmed in part, vacated in part, and remanded for further proceedings consistent with this decision. Each party is to *66 We thus remand the case for further proceedings on Büchel's remaining right-of-integrity claim under VARA and bear its own costs. his public display claim under section 106 of the Copyright Act. All Citations

593 F.3d 38, 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632

Footnotes * Of the District of Maine, sitting by designation. 1 VARA was enacted as an amendment to the Copyright Act. See infra Section II. 2 We consider the parties' conflicting accounts of the key evidence in our summary judgment analysis, infra. 3 Throughout the opinion, any reference to “Thompson” without a first name will refer to Museum Director Joseph Thompson. Nato Thompson will be identified by his full name. 4 The letter, signed by Museum Director Joseph Thompson, was attached to an email sent by Nato Thompson. The proposal did not lay out a definitive budget for the project, although in a separate letter to Büchel the following day, Joseph Thompson stated “we think we've got a $160,000 project on our hands in direct costs.” In a reply email dated September 24, 2006, Büchel did not explicitly agree to or reject the $160,000 figure, but suggested that MASS MoCA get in touch with his two galleries, which might provide information regarding “potential sponsors like foundations” for the installation. 5 The Berne convention, developed at the instigation of Victor Hugo and first adopted in Berne, Switzerland in 1886, is “ ‘an international copyright treaty providing that works created by citizens of one signatory nation will be fully protected

in other signatory nations, without the need for local formalities.’ ” Phillips, 459 F.3d at 133 n. 3 (quoting Black's Law Dictionary, 8th ed. (1999)). 6 Under the Copyright Act, a plaintiff may elect to recover statutory damages instead of actual damages for each work infringed “in a sum of not less than $750 or more than $30,000 as the court considers just.” 17 U.S.C. § 504(c)(1). If the copyright owner proves that the infringement was committed willfully, the court “in its discretion” may increase the award of statutory damages to “a sum of not more than $150,000.” Id. at 504(c)(2). The award may also be reduced to $200 if the infringer proves that he or she was not aware “and had no reason to believe that his or her acts constituted an infringement of copyright.” Id. 7 The parties do not dispute that, if completed, “Training Ground for Democracy” would have been a sculpture and therefore a qualified “work of visual art” under VARA. Furthermore, VARA's legislative history states that “[t]he term ‘sculpture’ includes, but is not limited to, castings, carvings, modelings, and constructions.” House Report at 11 (1990), as reprinted in 1990 U.S.C.C.A.N. at 6921 (emphasis added). The Second Circuit in Carter similarly considered VARA's application

to a “very large ‘walk-through sculpture’ occupying most, but not all, of [a] building's lobby.” 71 F.3d at 80; see also

id. at 84 (“Concededly, considered as a whole, the work is a sculpture and exists only in a single copy.”).

8 Section 501(a) states, in relevant part, that “[a]nyone who violates any of the exclusive rights of the copyright owner ... or of the author as provided in section 106A(a) [VARA] ... is an infringer of the copyright or right of the author, as the case may be.” The provision further states that, with the exception of the criminal penalties provided under section 506, “any reference to copyright shall be deemed to include the rights conferred by section 106A(a).”

9 As provided in 17 U.S.C. § 106A(c)(3), VARA specifically excludes certain categories of artwork listed in section 101 of the Copyright Act: (A) (i) any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication; (ii) any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container; (iii) any portion or part of any item described in clause (i) or (ii); (B) any work made for hire

17 U.S.C. § 101.

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 21 Massachusetts Museum Of Contemporary Art Foundation, Inc. v...., 593 F.3d 38 (2010) 2009 Copr.L.Dec. P 29,876, 93 U.S.P.Q.2d 1632 10 Nothing in the language of VARA or the definitions provision of the Copyright Act permits distinct treatment for the rights of copyright owners whose works are complete and those whose works are still in progress. We therefore reject the “special clarity” standard articulated by the district court for proving a violation of an artist's VARA rights in an unfinished work of art. 11 The Second Circuit ultimately found that the sculpture was exempted from VARA protections because it was a “work for hire.” See 71 F.3d at 86–88. 12 Our decision in Phillips is not inconsistent with this holding. In Phillips, we held that VARA did not apply to site-specific works of art, in which the particular location of the artwork is one of its physical elements and removal of the artwork

destroys it. 459 F.3d at 140. We observed that VARA does not explicitly address protection for site-specific works

despite the impact of such works on real property interests, id. at 142, and we declined to interpret VARA in a way that

was neither supported by the statutory language nor sensible as policy. See id. at 142–43. Here, the plain language

controls, and there is no conflict with “ ‘long-established and familiar principles' ” of the common law. Id. at 142 (quoting

United States v. Texas, 507 U.S. 529, 534, 113 S.Ct. 1631, 123 L.Ed.2d 245 (1993)).

13 In some jurisdictions, the right of integrity also generally protects artwork from destruction. See Carter, 71 F.3d at 81. In the United States, however, VARA protects only works of “recognized stature” from destruction. 17 U.S.C. § 106A(a) (3)(B). That right is not implicated in this case. 14 Article 6bis of the Berne Convention, which is titled “Moral Rights,” includes a heading that lists among those rights “to object to certain modifications and other derogatory actions.” The provision itself states, in relevant part: (1) Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right ... to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation. Berne Convention for the Protection of Literary and Artistic Works art. 6bis, Sept. 9, 1986, S. Treaty Doc. No. 99–27, 1161 U.N.T.S. 30. 15 Based on revisions to the statutory language made during the legislative process, Patry concludes that “where an intentional distortion, mutilation, or other modification has already occurred, the plaintiff need not prove harm to his or her honor or reputation.” 5 Patry, supra, § 16:22. He further states, without supporting citation, that “[i]t was understood informally” that the final version of the provision was designed “to permit a cause of action ... without the need for proof that the artist's honor or reputation was harmed.” Id. To the extent Patry's conclusion is that no evidence of harm is necessary, we reject it as inconsistent with the available legislative history, as discussed above. It may be, however, that Congress's concern was only that a plaintiff not be required to prove the actual amount of damage to reputation, but

could opt for the statutory damages remedy upon showing prejudice. See 17 U.S.C. §§ 501(a), 504(c) (stating that a VARA plaintiff may elect to recover statutory damages instead of actual damages and profits). 16 Section 106A(a)(3) states that the author of a work of visual art shall have the right “(A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation” and the right “(B) to prevent any destruction of a work of recognized stature.” 17 “I wrote very clearly immediately to [Dante Birch, the Museum's production manager] not to use the method we talked about and stop it ..., as well cinder block walls have to be partly redone that have been built without my instruction....” 18 The term “Plan B” appears in the record in a February 14, 2007 email from Thompson to other Museum staff. 19 This assertion by MASS MoCA was made to support its contention, rejected by the district court and halfheartedly renewed on appeal, that the unfinished installation might constitute a joint work of Büchel and the Museum. A claim

of joint authorship requires proof that the parties “entertain in their minds the concept of joint ownership.” Thomson v. Larson, 147 F.3d 195, 201 (2d Cir.1998) (quotation marks and citation omitted). Here, multiple facts indicate that the parties' understanding from the outset was that “Training Ground” was solely a Christoph Büchel work of art. The Museum's December 6, 2006 postponement announcement described the work as “Christoph Büchel's vast installation” and, as reflected in the emails described above, Museum personnel internally recognized Büchel as the artist, at least as “Training Ground” was originally conceived. It is also undisputed that, at the outset of their relationship, the parties had agreed that Büchel alone would hold the copyright in the finished work. These facts negate any claim of joint authorship. 20 In his deposition, Thompson testified as follows:

[T]here was a whole long list of things for which we had adequate direction and understanding that we could continue forward to a certain point. When the work began to get very detailed and would require input from Christoph, if we could get the input from him, we would continue, and if we didn't, we would stop. 21 Thompson told an outside consultant for the Museum in March 2007 that a curator at the New Museum in New York had just viewed the installation “and said it was one of the best works he's seen in the past three years.” 22 Indeed, the Boston Globe's art critic, Ken Johnson, described the exhibit as a “self-serving photo and text display” that implicitly conveys criticism of Büchel for the failure of “Training Ground for Democracy.” See MASS MoCA has Mishandled Disputed Art Installation, supra. The juxtaposition left Johnson with the impression that MASS MoCA was “exacting revenge” against the artist “by turning his project into a show that misrepresents, dishonors, vilifies, and even ridicules him.” Id. 23 In addition to the journalists and Museum personnel noted earlier, a newspaper reported that the mayor of North Adams had seen the exhibit twice, once with Governor Deval Patrick. See Behind doors, a world unseen, supra. 24 For example, in an email sent on September 11, 2006 to curator Nato Thompson, the Museum's director (Joseph Thompson) said: “I assume you've already laid out the general idea [to Büchel] (we build it, and it belongs to you),” and also noted that Büchel had the right to “sell all or part of it.” The Museum's proposed contract, which was never signed, would have conferred ownership on Büchel. It stated that, “[u]pon termination of the exhibition, the fabricated work shall be owned outright by you, including all copyrights and related preparatory materials.” 25 Our analysis of the right-of-integrity tarpaulin claim disposes as well of Büchel's contention that covering the installation constituted a modification of the original work that resulted in the creation of a derivative work.

Fiduciary or confidential relations 225 F.Supp.3d 201 Under New York law, a fiduciary relation exists United States District Court, S.D. New York. between two persons when one of them is under a duty to act or to give advice for the benefit of Scott C. MUELLER, Plaintiff, the other upon matters within the scope of the v. relation. MICHAEL JANSSEN GALLERY PTE. LTD. 2 Cases that cite this headnote Michael Janssen, Wilhelm Schurmann, Marisa Newman Projects, LLC, Defendants. [3] Fraud 15 Civ. 4827 (NRB) Fiduciary or confidential relations | A fiduciary relationship may arise under New Signed December 1, 2016 York law when one has reposed trust or confidence in the integrity or fidelity on another Synopsis who thereby gains a resulting superiority of Background: Artwork buyer brought claims against influence over the first, or when one assumes independent art advisor for breach of fiduciary duty and control and responsibility over another. unjust enrichment, after artist disavowed the artwork. Advisor filed motion to dismiss for failure to state a claim.

[4] Fraud Fiduciary or confidential relations Holdings: The District Court, Naomi Reice Buchwald, J., Advice alone is not enough to impose a fiduciary held that: duty under New York law.

[1] buyer failed to sufficiently allege a fiduciary relationship 3 Cases that cite this headnote under New York law, and

[2] existence of purchase agreement precluded unjust [5] Fraud enrichment claim under New York law. Fiduciary or confidential relations A conventional business relationship does not create a fiduciary relationship under New York Motion granted. law, in the absence of additional factors.

Procedural Posture(s): Motion to Dismiss. 1 Cases that cite this headnote

West Headnotes (16) [6] Fraud Fiduciary or confidential relations Buyer of artwork, by alleging that he relied on [1] Fraud advice from independent art advisor, regarding Fiduciary or confidential relations inclusion in the purchase agreement of a buy- To state a breach of fiduciary duty claim under back provision to account for the possibility New York law, plaintiff must allege: (1) the that the artist might disavow the artwork, existence of a fiduciary duty; (2) a knowing which possibility the advisor had characterized breach of that duty; and (3) damages resulting as unlikely, failed to sufficiently allege the from the breach. existence of a special relationship of confidence and trust that could give rise to a fiduciary 4 Cases that cite this headnote relationship under New York law, as would be required to state a claim for breach of fiduciary [2] Fraud

duty, in action brought after artist disavowed the Injury and causation artwork. Even assuming that artwork buyer, and independent art advisor who advised buyer that it was unlikely that the artist could disavow the [7] Fraud artwork, had a fiduciary relationship under New Fiduciary or confidential relations York law, buyer failed to sufficiently allege that Under New York, a fiduciary duty cannot be his injury was proximately caused by advisor's imposed unilaterally by one party. purported breach of fiduciary duty, as would be required to state a claim; buyer's alleged 5 Cases that cite this headnote injury was art gallery's failure to return the full purchase price after artist disavowed the artwork, which injury resulted from gallery's conduct, not [8] Fraud Fiduciary or confidential relations advisor's conduct. Fraud Elements of compensation [11] Implied and Constructive Contracts Even assuming that artwork buyer, and Unjust enrichment independent art advisor who advised buyer that To state an unjust enrichment claim under New it was unlikely that the artist could disavow York law, plaintiff must allege that: (1) defendant the artwork, had a fiduciary relationship under was enriched; (2) at plaintiff's expense; and New York law, buyer's allegation that advisor (3) equity and good conscience militate against refused to return to buyer the advisor's share permitting defendant to retain what plaintiff is of the purchase price, after artist disavowed the seeking to recover. artwork, was not a sufficient allegation of a breach of fiduciary duty, as element for stating 3 Cases that cite this headnote a claim; purchase agreement did not impose any obligation on advisor to disgorge her fees, and buyer did not allege some other legal basis for [12] Implied and Constructive Contracts disgorgement. Effect of Express Contract Existence of purchase agreement for artwork, which designated non-signatory defendant as an [9] Fraud independent art advisor, and which addressed Fiduciary or confidential relations the parties' obligations if the artist disavowed the artwork, was a bar under New York law Even assuming that artwork buyer, and to buyer's action against advisor for unjust independent art advisor who advised buyer that enrichment, brought after artist disavowed the it was unlikely that the artist could disavow artwork, even if it was uncertain whether a court the artwork, had a fiduciary relationship under in the country of the artist's residence would New York law, buyer's allegation that advisor enforce a breach of contract judgment issued by advised him not to be deterred by the concern that the District Court. artist would disavow the artwork, without any allegation that advisor advised buyer in bad faith, engaged in self-dealing, or had personal interests that conflicted with buyer's, was insufficient as [13] Implied and Constructive Contracts an allegation of breach of fiduciary duty of Effect of Express Contract loyalty, for purposes of stating a claim. An unjust enrichment claim is barred under New York law if there is a valid contract governing the subject matter of the dispute, even if one of the [10] Fraud parties to the claim is not a party to that contract.

5 Cases that cite this headnote Attorneys and Law Firms

*203 Edmund W. Searby, Baker & Hostetler LLP, [14] Implied and Constructive Contracts Cleveland, OH, Robertson Drake Beckerlegge, Baker & Money or equivalent thereof Hostetler LLP, New York City, NY, for Plaintiff. Even assuming that existence of purchase agreement for artwork, which designated non- Alan Effron, Pelosi, Wolf, Effron & Spates, LLP, New York, signatory defendant as an independent art NY, for Defendants. advisor, and which addressed the parties' obligations if the artist disavowed the artwork, was not a bar under New York law to buyer's MEMORANDUM AND ORDER action against advisor for unjust enrichment, buyer's speculation that advisor received an NAOMI REICE BUCHWALD, UNITED STATES unspecified portion of the money that buyer paid DISTRICT JUDGE to art gallery was not a sufficient allegation of Plaintiff Scott Mueller brings this action against advisor's enrichment, for purposes of stating a defendants Michael Janssen Gallery Pte. Ltd. (the claim. “Janssen Gallery”), Michael Janssen (“Janssen”), Wilhelm Schurmann (“Schumann”), and Marisa Newman Projects, LLC (“Newman”). The lawsuit stems from Mueller's 2014 [15] Implied and Constructive Contracts purchase of an artwork titled “Log Cabin.” The Amended Money or equivalent thereof Complaint asserts unjust enrichment and breach of fiduciary Under New York law, a plaintiff cannot recover duty claims against Newman and various claims against the under an unjust enrichment theory where the other defendants. Newman moved to dismiss pursuant to plaintiff did not pay the fees in question. Federal Rule of Civil Procedure 12(b)(6). For the reasons stated herein, defendant's motion is granted. 3 Cases that cite this headnote

[16] Implied and Constructive Contracts BACKGROUND 1 Unjust enrichment Even assuming that existence of purchase I. Factual Background agreement for artwork, which designated non- “Log Cabin” is an artwork created by American artist Cady signatory defendant as an independent art Noland. Am. Compl. ¶ 7. It consists of a log cabin façade with advisor, and which addressed the parties' an American flag hanging over the entrance. Id. At the time obligations if the artist disavowed the artwork, of the sale at issue in this lawsuit, it was installed in Germany was not a bar under New York law to buyer's *204 and owned by Wilhelm Schurmann, a German citizen. action against advisor for unjust enrichment, Id. ¶¶ 3, 7, 14. buyer failed to sufficiently allege that it was unjust for advisor to receive a fee in connection In July 2014, Mueller entered into an agreement to purchase with the purchase, for purposes of stating a “Log Cabin” through the Janssen Gallery, 2 which had claim; nothing in buyer's allegations suggested acquired the rights to sell the work (the “Agreement”). Id. ¶¶ that advisor was not entitled to any fee it earned. 8, 9. The Agreement provided that Mueller would pay Janssen Gallery $1.4 million and that the work would be delivered to Mueller in Ohio. Id. ¶ 10. The Agreement also included a “buy-back” provision that required Janssen Gallery to return the $1.4 million to Mueller if the artist disavowed her work. Id. ¶ 11.

After executing the Agreement, Mueller wired the full $1.4 failure to state a claim. On May 6, 2016, plaintiff filed a notice million purchase price to the Janssen Gallery. Id. ¶ 13. Prior of dismissal without prejudice against defendant Schurmann. to delivery, however, the artist disavowed “Log Cabin” when she learned that certain logs had rotted and been replaced. Id. ¶¶ 14–16. Mueller subsequently informed Janssen Gallery DISCUSSION and Newman that he was exercising the Agreement's buy- back provision. Id. ¶ 17. The Janssen Gallery and Michael I. Motion to Dismiss Standard Janssen have since returned $600,000 to Mueller, but have A court ruling on a Rule 12(b)(6) motion to dismiss must not returned the remaining $800,000 that Mueller claims he accept as true all factual *205 allegations in the complaint is owed. Id. ¶¶ 20, 22, 23. and draw all reasonable inferences in plaintiff's favor. Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009). “When there are Defendant Newman is an art advisor based in New York. Id. ¶ well-pleaded factual allegations, a court should assume their 4. Although not a signatory to the Agreement, the Agreement veracity and then determine whether they plausibly give rise provides that Newman would act as “an independent art to an entitlement to relief.” Ashcroft v. Iqbal, 556 U.S. 662, advisor to facilitate the sale of the work.” Id. ¶ 4. According 679, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). A claim has to the Amended Complaint, Newman also initially informed “facial plausibility” when the plaintiff pleads “factual content Mueller's art dealer that “Log Cabin” was for sale and retained that allows the court to draw the reasonable inference that the the law firm that drafted the Agreement. Id. ¶¶ 8, 9. defendant is liable for the misconduct alleged.” Id. at 678, The Amended Complaint alleges that Mueller “placed 129 S.Ct. 1937. A court, however, need not accept conclusory confidence and trust in Newman to advise Mueller in good allegations as true. Harris, 572 F.3d at 72. faith” and that Mueller “relied upon” Newman's advice when he purchased the work. Id. ¶¶ 33, 40. In particular, Mueller alleges that Newman “recommended the buy-back provision II. Breach of Fiduciary Duty Claim to address concerns that the artist might disavow the work” [1] To state a breach of fiduciary duty claim under New York and “provided guidance that this was an unlikely concern.” law, plaintiff must allege (1) the existence of a fiduciary duty, Id. ¶ 11. For example, when asked whether the artist had a (2) a knowing breach of that duty, and (3) damages resulting legal right to disown her work under the Visual Artists Rights from the breach. 3 Johnson v. Nextel Commc'ns, Inc., 660 Act, Newman provided Mueller with a memo from Newman's F.3d 131, 138 (2d Cir. 2011). Plaintiff has failed to sufficiently legal counsel concluding that it was “hard to imagine” how allege any element of a breach of fiduciary duty claim against the modifications made to “Log Cabin” would permit the Newman. artist to disavow the work under the Act. Id. ¶ 41. In addition, Newman sent Mueller's art dealer an annotated photograph of “Log Cabin” with comments suggesting that the artist would A. Existence of a Fiduciary Duty not disavow the work. Id. ¶ 42. [2] [3] [4] [5] “Under New York law, ‘a fiduciary relation exists between two persons when one of them is under a duty to act or to give advice for the benefit of the other II. Procedural Background upon matters within the scope of the relation.’ ” Bank of Plaintiff filed his initial complaint on June 22, 2015, and Am. Corp. v. Lemgruber, 385 F.Supp.2d 200, 224 (S.D.N.Y. the Amended Complaint on January 8, 2016. The Amended Complaint asserts a breach of contract claim against Janssen 2005) (alteration in original omitted) (quoting Mandelblatt Gallery and a conversion claim against the gallery's owner, v. Devon Stores, Inc., 132 A.D.2d 162, 168, 521 N.Y.S.2d Michael Janssen. Plaintiff has not served either Michael 672, 676 (1st Dep't 1987)). Such a relationship may arise Janssen or the Janssen Gallery. “when one has reposed trust or confidence in the integrity or fidelity on another who thereby gains a resulting superiority The Amended Complaint also asserts an unjust enrichment of influence over the first, or when one assumes control and breach of fiduciary duty claims against Newman and and responsibility over another.” VTech Holdings, Ltd. an unjust enrichment claim against Wilhelm Schurmann, v. Pricewaterhouse Coopers, LLP, 348 F.Supp.2d 255, 268 “Log Cabin's” original owner. On March 15, 2016, defendant (S.D.N.Y. 2004) (internal quotation marks omitted). “Advice Newman moved to dismiss all claims brought against it for

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Mueller v. Michael Janssen Gallery Pte. Ltd., 225 F.Supp.3d 201 (2016) alone, however, is not enough to impose a fiduciary duty.” thereby gain[ed] a resulting superiority of influence over EBC I, Inc. v. Goldman Sachs & Co., 91 A.D.3d 211, 216, [Mueller].” See VTech Holdings, Ltd., 348 F.Supp.2d at 936 N.Y.S.2d 92, 96 (1st Dep't 2011); see also Citibank, N.A. 268. v. Silverman, 85 A.D.3d 463, 466, 925 N.Y.S.2d 442, 445 (1st Dep't 2011) (reliance on advice insufficient to establish The sole case that Mueller cites in support is not to fiduciary relationship). Likewise, “[a] conventional business relationship does not create a fiduciary relationship in the the contrary. That case, Muller–Paisner v. TIAA, 289 Fed.Appx. 461 (2d Cir. 2008), involved defendants who absence of additional factors.” Feigen v. Advance Capital advertised insurance products and investment options to their Mgt. Corp., 150 A.D.2d 281, 283, 541 N.Y.S.2d 797, 799 (1st customers. In holding that the complaint adequately alleged Dep't 1989). a fiduciary relationship, the Second Circuit relied, in part, on defendants' statements that “trust [was] a crucial dimension of Plaintiff has not adequately alleged that a fiduciary the relationship between the defendants and their customers.” relationship existed between Mueller and Newman. The mere fact that Newman acted as an “independent art advisor” Id. at 466. No similar statements are alleged here. does not create a fiduciary relationship. See, e.g., Mandarin Trading Ltd. v. Wildenstein, 17 Misc.3d 1118(A), at *4, Accordingly, Mueller has failed to allege that a fiduciary 851 N.Y.S.2d 71 (Sup. Ct. N.Y. Cty. 2007) (“[A]llegations relationship arose between Mueller and Newman. of superior knowledge or expertise in the art field are per se insufficient to establish the existence of a fiduciary B. Breach relationship.”), aff'd, 65 A.D.3d 448, 884 N.Y.S.2d 47 [8] Even assuming that a fiduciary relationship existed, the (1st Dep't 2009), aff'd, 16 N.Y.3d 173, 944 N.E.2d 1104, Amended Complaint fails to allege a cognizable breach. 919 N.Y.S.2d 465 (2011); see also Hutton v. Klabal, 726 Plaintiff first argues that Newman breached its fiduciary duty F.Supp. 67, 73 (S.D.N.Y. 1989) (same). And despite the by “refusing to return its share of the purchase price after suggestion in plaintiff's briefing that Mueller “retained” and the artist disavowed the work and after Mueller invoked the “paid” Newman, see Pl's Memo. of Law in Opp. to Newman's buy-back provision.” Am. Compl. ¶ 45; Opp. at 9. But this Mot. to Dismiss (ECF No. 28) *206 (“Opp.”) at 1, 3, the reasoning is circular. The Agreement does not impose any Amended Complaint nowhere alleges as much. obligation on Newman to disgorge its fees. Absent some other independent legal obligation—which is not alleged— [6] [7] Nor has plaintiff established the existence of a Newman's refusal to disgorge its fees cannot, in itself, be a “special relationship of confidence and trust” that may give breach. rise to a fiduciary relationship. At most, Mueller alleges that Newman advised Mueller (which advice actually benefited [9] Plaintiff next argues that Newman breached its fiduciary Mueller) and that Mueller relied on that advice. But providing duty of loyalty by “advising Mueller not to be deterred by advice does not make one a fiduciary. See EBC I, Inc., the concern that Cady would disavow the artwork.” Am. 91 A.D.3d at 216, 936 N.Y.S.2d at 96. Moreover, the Compl. ¶¶ 42, 45; Opp. at 10. But even if true, Newman's fact that Mueller may have relied on Newman's advice is advice would not constitute a breach of loyalty absent some insufficient, because a “fiduciary duty cannot be imposed allegation that Newman advised Mueller in bad faith, engaged unilaterally.” Id. (internal quotation marks omitted); see also in self-dealing, or had personal interests that conflicted with Russell Pub. Grp., Ltd. v. Brown Printing Co., No. 13 CIV. Mueller's. See, e.g., Birnbaum v. Birnbaum, 73 N.Y.2d 5193 (SAS), 2014 WL 1329144, at *3 (S.D.N.Y. Apr. 3, 461, 466, 539 N.E.2d 574, 576, 541 N.Y.S.2d 746 (1989); see 2014) (“[R]eposing trust or confidence in a party that has also Tucker Anthony Realty Corp. v. Schlesinger, 888 F.2d superior access to confidential information is not sufficient 969, 972 (2d Cir. 1989). No such allegations are made here. to establish a fiduciary relationship—under New York law, To the contrary, Newman's advice affirmatively benefited there is no fiduciary duty unless the trust or confidence has Mueller by protecting him against the risk that the artist would been accepted as well.”). In short, the Amended Complaint disown her work. does not suggest that Newman “assume[d] control and responsibility over” Mueller or that Mueller “reposed trust or confidence in the integrity or fidelity on [Newman] who

Finally, plaintiff argues that Newman had a “duty to seek the contract governing the subject matter of the dispute, even if return of the full funds from Janssen Gallery” to Mueller. Opp. one of the parties to the claim is not a party to that contract.” at 10–11. Plaintiff offers no authority *207 to support such Vista Food Exch., Inc. v. Champion Foodservice, LLC, a duty. Moreover, it is unclear how Newman could even seek 124 F.Supp.3d 301, 312 (S.D.N.Y. 2015) (emphasis added); the funds' return since Newman is not alleged to exert control see Maor v. Blu Sand Int'l Inc., 143 A.D.3d 579, 38 N.Y.S.3d or influence over the Janssen Gallery. 907, 908 (1st Dep't 2016) (barring unjust enrichment claim because “there can be no quasi-contract claim against a third- Thus, even if a fiduciary duty existed, plaintiff has failed to party nonsignatory to a contract that covers the subject matter allege that Newman breached that duty. of the claim”); see also Hildene Capital Mgt., LLC v. Friedman, Billings, Ramsey Grp., Inc., No. 11 CIV. 5832 C. Causation (AJN), 2012 WL 3542196, at *10 (S.D.N.Y. Aug. 15, 2012); [10] Plaintiff also fails to allege that his injury “resulted Ellington Credit Fund, Ltd. v. Select Portfolio Servicing, from” Newman's purported breach. See Johnson, 660 F.3d Inc., 837 F.Supp.2d 162, 202–03 (S.D.N.Y. 2011); Randall's at 138; see also LNC Invs., Inc. v. First Fid. Bank, N.A. Is. Aquatic Leisure, LLC v City of N.Y., 92 A.D.3d 463, 464, N.J., 173 F.3d 454, 465 (2d Cir. 1999) (“[W]here damages 938 N.Y.S.2d 62, 63 (1st Dep't 2012). are sought for breach of fiduciary duty under New York law, the plaintiff must demonstrate that the defendant's conduct In response, Mueller relies on a 25–year old opinion from proximately caused injury in order to establish liability.”). this district, Seiden Associates, Inc. v. ANC Holdings,

Mueller's alleged injury is the Janssen Gallery's failure to Inc., 754 F.Supp. 37 (S.D.N.Y. 1991). But Seiden and return $800,000 of the original $1.4 million purchase price. its reasoning have been consistently rejected by New York See Am. Compl. ¶¶ 20, 22, 28. Even assuming that Newman state courts and courts in this district such that it is no was paid by the Janssen Gallery, Mueller's injury results from longer considered good law. See Am. Med. Ass'n v. the Janssen Gallery's conduct, not Newman's. United Healthcare Corp., No. 00 CIV. 2800 (LMM), 2007 WL 683974, at *10 (S.D.N.Y. Mar. 5, 2007) (“Despite the Because plaintiff has failed to state any element of a breach of fiduciary duty, we grant Newman's motion to dismiss the Seiden court's reasoning, subsequent decisions both in claim. New York state courts and in this district have consistently held that claims *208 for unjust enrichment may be precluded by the existence of a contract governing the subject III. Unjust Enrichment Claim matter of the dispute even if one of the parties to the [11] To state an unjust enrichment claim under New York lawsuit is not a party to the contract.”); see also Viable law, plaintiff must allege that “(1) defendant was enriched, Mktg. Corp. v. Intermark Commc'ns, Inc., No. 09–CV– (2) at plaintiff's expense, and (3) equity and good conscience 1500 (JS)(WDW), 2011 WL 3841417, at *3 (E.D.N.Y. Aug. militate against permitting defendant to retain what plaintiff 26, 2011) (“Plaintiff's reliance [on Seiden], however, is is seeking to recover.” Diesel Props S.r.l. v. Greystone Bus. Credit II LLC, 631 F.3d 42, 55 (2d Cir. 2011) (internal misplaced, as the rule pronounced in Seiden has decidedly quotation marks omitted). Plaintiff has failed to state an unjust fallen out of favor in New York courts. The court finds enrichment claim. the trend of recent New York state and federal decisions to be persuasive and concludes that a claim for unjust enrichment, even against a third party, cannot proceed when A. Claim Barred by Existence of the Agreement there is a valid, written agreement governing the subject [12] As an initial matter, Newman argues that the unjust matter of the dispute.” (internal quotation marks omitted) enrichment claim is barred by the existence of the Agreement. (citations omitted)); MBIA Ins. Corp. v. Royal Bank of We agree. Can., 28 Misc.3d 1225(A), at *37, 958 N.Y.S.2d 62 (Sup. Ct. [13] Numerous decisions applying New York law have held Westchester Cty. 2010) (same); Air Atlanta Aero Eng'g that an unjust enrichment claim is barred “if there is a valid

Ltd. v. SP Aircraft Owner I, LLC, 637 F.Supp.2d 185, 196 concerning a fiber-optic network called SAm–1. IDT sought (S.D.N.Y. 2009) (same). 4 to recover investment banking fees that Morgan Stanley had received from Telefonica and other companies in connection Applying the rule here, Mueller's unjust enrichment claim is with the SAm–1 network. The Court of Appeals rejected barred by the Agreement's existence even though Newman IDT's unjust enrichment claim: was not a signatory to that Agreement. The Agreement clearly governs the subject matter at issue—i.e., the parties' obligations in the event that the artist disavowed “Log Nor can the unjust enrichment claim Cabin,” see Effron Decl. (ECF No. 22), Ex. B ¶ 6 5 —and support the disgorgement of any thus precludes Mueller's claim that Newman was unjustly profits Morgan Stanley obtained from enriched by the Janssen Gallery's failure to honor the buy- Telefonica or other companies, in connection with SAm–1 .... In seeking back provision, see Ellington Credit Fund, 837 F.Supp.2d Morgan Stanley's profits from SAm– at 203 (“Although the SPS Affiliates were not parties to 1, IDT does not, and cannot, allege the PSA, they were allegedly enriched as a result of SPS's that Morgan Stanley has been unjustly noncompliance with the PSA's servicing standards. This enriched at IDT's expense, because claim thus falls squarely within the subject matter of the IDT did not pay the alleged fees. PSA.”).

Mueller attempts to avoid this result by arguing that the Agreement may not be enforceable because it is “uncertain” Id. at 142. whether a German court would enforce this breach of contract judgment issued by this Court. Opp. at 15. But Mueller's Other courts applying New York law have similarly rejected argument confuses the enforceability of a contract with the unjust enrichment claims where the plaintiff seeks to recover enforceability of a judgment and in no way suggests that the fees it did not pay. See, e.g., Loreley Fin. (Jersey) No. 3 Agreement is an unenforceable contract, a proposition that Ltd. v. Wells Fargo Sec., LLC, No. 12 CIV. 3723 (RJS), 2013 would, of course, be contrary to plaintiff's interest. WL 1294668, at *16 (S.D.N.Y. Mar. 28, 2013) (“Plaintiffs' claim for unjust enrichment fails because Plaintiffs did not pay these fees; the CDOs paid the fees that Plaintiffs allege B. Failure to State a Claim were unjustly acquired.”), rev'd in part, vacated in part, on Even if the unjust enrichment claim were not precluded by the Agreement's existence, the claim would still fail on its merits. other grounds, 797 F.3d 160 (2d Cir. 2015); In re Bayou Hedge Funds Inv. Litig., 472 F.Supp.2d 528, 531– [14] First, for a claim of unjust enrichment, the Amended 32 (S.D.N.Y. 2007) (dismissing unjust enrichment claims Complaint is curiously devoid of allegations of “enrichment.” brought by hedge fund's investors against law firm retained *209 There is no allegation that Mueller paid Newman or by hedge fund because “the payment by [the hedge fund] of even an allegation of an amount of money that Newman operating expenses (such as legal fees) using misappropriated received from any source. Rather, Mueller alleges that his funds does not confer a ‘direct’ and ‘specific’ benefit on [the only payment was to the Janssen Gallery, and he merely law firm] at the expense of plaintiffs”); Banco Espirito speculates that Newman received an unspecified “percentage Santo de Investimento, S.A. v. Citibank, N.A., No. 03 CIV. or portion.” Am. Compl. ¶¶ 13, 34. 1537 (MBM), 2003 WL 23018888, at *18 (S.D.N.Y. Dec. 22, 2003) (rejecting unjust enrichment claim where plaintiff [15] Second, even assuming that Newman was enriched, the did not pay defendant's fees), aff'd, 110 Fed.Appx. 191 (2d New York Court of Appeals has held that a plaintiff cannot Cir. 2004); Goel v. Ramachandran, 111 A.D.3d 783, 792, 975 recover under an unjust enrichment theory where the plaintiff N.Y.S.2d 428 (2d Dep't 2013) (dismissing unjust enrichment did not pay the fees in question. In IDT Corporation v. claims where payments to defendant were “duly authorized”); Morgan Stanley Dean Witter & Co., 12 N.Y.3d 132, 907 Zimmerman v. Kohn, No. 652826/13, 2014 WL 1490936, N.E.2d 268, 879 N.Y.S.2d 355 (2009), IDT Corporation *3 (Sup. Ct. N.Y. Cty. 2014) (“Unjust enrichment does not entered into an agreement with Telefonica International, S.A., apply to the disgorgement of fees paid by another.” (citing

Janssen and the Janssen Gallery, have not been served. IDT Corp., 12 N.Y.3d at 142, 879 N.Y.S.2d 355, 907 Although service of foreign defendants is not subject to N.E.2d 268)), aff'd, 125 A.D.3d 413, 414, 2 N.Y.S.3d 462, the ordinary 90 day time limit, see Fed. R. Civ. P. 4(m), 464 (1st Dep't 2015), leave to appeal denied, 25 N.Y.3d 907, defendants Janssen and the Janssen Gallery are dismissed 32 N.E.3d 963 (2015). without prejudice given that plaintiff has failed to serve them for over a year. [16] Finally, plaintiff has not adequately alleged that any enrichment was “unjust.” Nothing in the Amended Complaint suggests that Newman was not entitled to any fee it earned V. CONCLUSION in connection with “Log Cabin's” sale. Accordingly, it is not For the aforementioned reasons, defendants' motion to the case that “equity and good conscience militate against dismiss is granted. This Memorandum and Order resolves permitting defendant to retain what plaintiff is seeking to Docket No. 20. The Clerk of the Court is directed to close the case. recover.” Diesel Props S.r.l., 631 F.3d at 55.

SO ORDERED. Plaintiff's unjust enrichment claim against Newman is therefore dismissed. All Citations

*210 IV. Claims Against Other Defendants 225 F.Supp.3d 201 Defendant Schurmann has been dismissed without prejudice. See ECF Nos. 30, 31. The remaining defendants, Michael

Footnotes 1 The following allegations are drawn from the Amended Complaint filed January 8, 2016 (ECF No. 15) (the “Amended Complaint” or “Am. Compl.”), and are assumed to be true. 2 The Janssen Gallery is owned by defendant Michael Janssen, a German citizen. Am. Compl. ¶ 12. It is incorporated in Singapore and has galleries in Singapore and Berlin. Id. 3 Because the parties appear to assume that New York law governs plaintiff's claims, this Court will do the same. See VTech Holdings, Ltd. v. Pricewaterhouse Coopers, LLP, 348 F.Supp.2d 255, 262 (S.D.N.Y. 2004) (“The law of the forum state governs where, as here, neither party alleges that the law of a different state would control and differs from New York law.”).

4 Neither of the other two cases cited by plaintiff change the above conclusion. In TransformaCon, Inc. v. Vista Equity Partners, Inc., No. 15–CV–3371 (SAS), 2015 WL 4461769 (S.D.N.Y. July 21, 2015), the court did not specifically analyze

whether the existence of a contract barred an unjust enrichment claim against a non-signatory to the contract. Id. at *6.

In Hughes v. BCI International Holdings, Inc., 452 F.Supp.2d 290 (S.D.N.Y. 2006), the court recognized that “a valid written agreement may preclude a claim for unjust enrichment even against a non-party to that agreement,” but appeared

to find that the contract in question did not cover the subject matter of the unjust enrichment claim. Id. at 304. In any

event, to the extent that either case can be read as applying the rule set forth in Seiden, they are unpersuasive given the weight of subsequent case law rejecting that rule. 5 Because the Agreement is attached to the Amended Complaint as an exhibit and is incorporated by reference into the Amended Complaint, this Court may consider it on a motion to dismiss. See Chambers v. Time Warner, Inc., 282 F.3d 147, 152 (2d Cir. 2002).

specific art against the conceptual destruction or decontextualization that may result from the 443 Mass. 110 removal of those components from the physical Supreme Judicial Court of Massachusetts, environment in which they have been placed; if Suffolk. the crafted components of site-specific art can David PHILLIPS be extracted from their surroundings without v. physical damage to them, MAPA is not violated PEMBROKE REAL ESTATE, INC. by their removal. M.G.L.A. c. 231, § 85S. 2 Cases that cite this headnote Argued Sept. 7, 2004. | Decided Dec. 21, 2004. [2] Statutes Plain Language; Plain, Ordinary, or Synopsis Common Meaning Background: Sculptor brought action under federal Statutes Visual Artists Rights Act (VARA) and Massachusetts Statute as a Whole; Relation of Parts to Art Preservation Act (MAPA) against manager of public Whole and to One Another sculpture park, seeking injunctive relief to prevent manager from modifying park and from altering sculptures that A statute must be interpreted according to the sculptor created specifically for park. The United States intent of the Legislature ascertained from all its District Court for the District of Massachusetts, Saris, J., words construed by the ordinary and approved 288 F.Supp.2d 89, granted preliminary injunction in favor usage of the language, considered in connection of sculptor. Both parties filed interlocutory appeals to the with the cause of its enactment, the mischief or United States Court of Appeals for the First Circuit, and in the imperfection to be remedied and the main object interim, the District Court certified a question of state law. to be accomplished, to the end that the purpose of its framers may be effectuated.

2 Cases that cite this headnote [Holding:] The Supreme Judicial Court, Cordy, J., held that MAPA does not protect the crafted components [3] Copyrights and Intellectual Property of site-specific art against the conceptual destruction or Constitutional and statutory provisions decontextualization that may result from the removal of those components from the physical environment in which Statutes like the Massachusetts Art Preservation they have been placed, if they can be extracted from their Act (MAPA), which alter common-law property surroundings without physical damage to them. rights and impose new obligations totally unknown at common law, are ordinarily construed strictly, unless the obvious legislative Certified question answered. purpose behind the statute would be defeated by doing so. M.G.L.A. c. 231, § 85S. Procedural Posture(s): Motion for Preliminary Injunction. 2 Cases that cite this headnote

West Headnotes (3)

[1] Copyrights and Intellectual Property Attorneys and Law Firms Pictorial, graphic, and sculptural works **579 Scott P. Lewis, Boston (Thane D. Scott with him) for While the Massachusetts Art Preservation Act the defendant. (MAPA) prohibits the physical destruction of the crafted components of site-specific art, MAPA Andrew D. Epstein, Boston (Lucy D. Lovrien with him) for does not protect the crafted components of site- the plaintiff.

made from and imbedded in nature.” Id. at 234. The facts of The following submitted briefs for amici curiae: this case present the former and not the latter type of site- specific art. Ben Robbins for New England Legal Foundation.

Martin R. Healy, Christopher D. Moore, and Dahlia [1] After considering all the language used in the S. Fetouh, Boston, for National **580 Association of Massachusetts Art Preservation Act, G.L. c. 231, § 85S Industrial and Office Properties. (MAPA), construed as a whole, consistent with what we can glean of the Legislature's intentions in its enactment, Daniel H. Weiner & Francesca K. Garson, New York, NY, for we answer the question as follows: MAPA does not protect Volunteer Lawyers for the Arts of Massachusetts & another. the placement of the type of site-specific art at issue here. Although it prohibits the physical destruction of the crafted Present: MARSHALL, C.J., GREANEY, IRELAND, SPINA, components **581 of such art, MAPA does not protect it SOSMAN, & CORDY, JJ. against the conceptual destruction or decontextualization that may result from the removal of those components from the Opinion physical environment in which they have been placed. If CORDY, J. the crafted components of site-specific art can be extracted from their surroundings without physical damage to them, the *110 There appearing to be no controlling precedent in the statute is not violated by their removal. 3 decisions of the Supreme Judicial Court, a judge of the *111 United States District Court for the District of Massachusetts 1. Background. The relevant background is contained in the 1 certified the following question for our consideration: memorandum and order of the District Court judge. See S.J.C. Rule 1:03, § 3(2); Phillips v. Pembroke Real Estate, Inc., 288 F.Supp.2d 89 (D.Mass.2003). We summarize only those facts “Under the facts and circumstances described in the District that inform our resolution of the certified question. Court's October 24, 2003 Memorandum and Order, to what extent does the Massachusetts Art Preservation Act, Mass. David Phillips is a sculptor who has gained national Gen. Laws ch. 231, § 85S (1984), protect the placement of recognition for his site-specific artwork. In 1999, Pembroke ‘site specific’ art?” Real Estate, Inc. (Pembroke), commissioned Phillips to work The term “site-specific” art does not appear in any applicable on Eastport Park (park), a public green space in the South Massachusetts statute. It is a term that has been defined in the 4 art world as art “[that] is conceived and created in relation to Boston waterfront section of Boston. The commission resulted in two contracts between the parties: the “Eastport the particular conditions of a specific site.” Serra v. United Park Artwork Agreement” (agreement I) and the “Eastport States Gen. Servs. Admin., 847 F.2d 1045, 1047 (2d Cir.1988) Park Stonework Agreement” (agreement II). Pursuant to (quoting sculptor Richard Serra). It has also been described agreement I, Phillips created approximately *113 twenty- as “a combination of readymade work and a crafted work: the seven sculptures for the park, including abstract bronze and site is the readymade work, from which the artist draws her granite works and a dozen realistic bronze sculptures of inspiration, and upon which the artist adds a crafted material. hermit crabs, shrimp, and frogs. Under agreement II, Phillips Together, the readymade and the crafted material exist as the was responsible for the design and installation of rough artwork.” Garson, Before That Artist Came Along, It Was stone walls, split granite paving stones, and other landscape Just a Bridge: The Visual Artists Rights Act and the Removal design elements. 5 Most of Phillips's sculpture and landscape of Site–Specific Artwork, 11 Cornell J.L. & Pub. Pol'y 203, elements are organized along a diagonal sight line, or axis, 230 (2001). The term “site-specific” is also admittedly a “sort passing through the park, and are unified by a theme of spiral of catchall phrase for a variety of artworks that elevate, in and circular forms. At the center of the axis is a large spherical varying degrees, the importance of the relationship between sculpture entitled “Chords.” context and object.” Id. at 233. In some works of site-specific art, the landscape provides the context necessary to give full Soon after the park was completed in the spring of 2000, meaning to otherwise free-standing crafted objects. In other Pembroke determined that it was in need of alteration. A 2 works, such as “earthworks,” the artwork is “completely redesign scheme was prepared by British landscape architect inextricable from [its] site [ ] because *112 [it is] literally Elizabeth Banks. It called for the removal and relocation

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 2 Phillips v. Pembroke Real Estate, Inc., 443 Mass. 110 (2004) 819 N.E.2d 579 of Phillips's sculptures. Phillips protested and, in January, attempting to graft onto a generally inhospitable common 2003, Pembroke agreed to retain all but one of Phillips's law tradition the civil law concept of droit moral, whereby sculptures. 6 Phillips objected to Pembroke's revised plan and a creative artist retains certain inalienable rights with respect subsequently filed suit in the United States District Court for to his or her creation before and after publication, display or the District of Massachusetts, seeking injunctive relief under sale.” Id. at 55, 666 N.E.2d 505, quoting Koven, Observations the Federal Visual Artists Rights Act of 1990, 17 U.S.C. § on the Massachusetts Art Preservation Act, 71 Mass. L.Rev. 106A (2000) (VARA), and MAPA. 101, 101 (1986). To accomplish its ends, MAPA protects both an artist's “right of integrity” (an artist's right not to have On August 21, 2003, at the conclusion of a nonevidentiary his or her creations altered), and an artist's “right of *115 hearing, the United States District Court judge issued paternity” (an artist's right to claim or disclaim authorship of a a temporary restraining order enjoining Pembroke from work of art). Id. at 56, 666 N.E.2d 505. The rights of integrity altering the park. Subsequently, **582 Pembroke and paternity continue for fifty years after the artist's death announced its intention to return to the original redesign and are enforceable by the artist or by his duly authorized scheme, which called for the removal of all of Phillips's representative by an action in the Superior Court. G.L. c. 231, sculptures. After a two-day evidentiary hearing, the United § 85S (g ). States District Court judge issued a memorandum and order in which she found “that the environment of Phillips' integrated In its preamble, MAPA contains the following legislative sculpture along the axis of the Park is a critical element of findings: those works, and changing the location *114 of the sculpture constitutes an alteration” under MAPA. Accordingly, she ordered that Pembroke “not alter, destroy, move or remove “[T]he physical alteration or any of the sculptures along the northeast-southwest axis of destruction of fine art, which is an the Park until the conclusion of this litigation or further order expression of the artist's personality, of the Court. With respect to the other sculptures, Defendant is detrimental to the artist's reputation, may move the sculptures but shall not destroy or alter them.” and artists therefore have an interest in protecting their works of fine art Both parties filed interlocutory appeals with the United States against such alteration or destruction; Court of Appeals for the First Circuit pursuant to 28 U.S.C. and that there is also a public interest in § 1292(a)(1) (2000). In the interim, the District Court judge preserving the integrity of cultural and certified the present question, and the appeals have been artistic creations.” stayed pending its resolution. 7

[2] 2. Discussion. The question before us is one of statutory **583 G.L. c. 231, § 85S (a ). The statute goes on to define construction. “The general and familiar rule is that a statute “[f]ine art” as “any original work of visual or graphic art must be interpreted according to the intent of the Legislature of any media which shall include, but not limited to, any ascertained from all its words construed by the ordinary and painting, print, drawing, sculpture, craft object, photograph, approved usage of the language, considered in connection audio or video tape, film, hologram, or any combination with the cause of its enactment, the mischief or imperfection thereof, of recognized quality.” 8 Id. at § 85S (b ). It then to be remedied and the main object to be accomplished, to provides that: the end that the purpose of its framers may be effectuated.” Industrial Fin. Corp. v. State Tax Comm'n, 367 Mass. 360, “No person, except an artist who owns or possesses a work 364, 326 N.E.2d 1 (1975), quoting Hanlon v. Rollins, 286 of fine art which the artist has created, shall intentionally Mass. 444, 447, 190 N.E. 606 (1934). commit, or authorize the intentional commission of any physical defacement, mutilation, alteration, or destruction In a previous consideration of MAPA, we discussed its of a work of fine art.” purpose and its relation to existing law. Moakley v. Eastwick, Id. at § 85S (c ). MAPA deals separately with “fine art” that 423 Mass. 52, 666 N.E.2d 505 (1996). MAPA followed the has been attached to buildings, the significance of which is lead of similar legislation in California and New York “in discussed later in this opinion. G.L. c. 231, § 85S (h ).

In answering the certified question, we consider whether “medium” of such art is not consistent with these dictionary the Legislature intended to include the type of site-specific definitions, and would require an expansive reading of the art at issue here within the statutory definition of “fine term. However, the dictionary definitions are not conclusive art,” and whether MAPA's prohibitions against “any physical on the issue of legislative intent, and therefore, we look to defacement, *116 mutilation, alteration, or destruction of other provisions of the statute for indicia of such intent, and a work of fine art” extend to the type of “conceptual for the purpose of interpreting the statute as a consistent destruction” that might result from the removal of the crafted whole. components of such art from the site on which they have been placed. It is apparent that in drafting the statute, the Legislature was concerned not only with creating new rights for artists, There is a “community of respected American artists and but also with protecting the rights of property owners who art authorities [that] regard the crafted work and the site of commission artworks that become attached to real property. site-specific artworks as an indivisible whole.” Garson, supra This concern manifests itself in the way § 85S (h ) of MAPA at 239. In the proceedings before the United States District addresses “fine art” attached to buildings. If the art can Court, there was credible expert testimony to the effect that be removed from the building without causing “substantial site specificity has become the “rallying cry” of public artists harm” to the art, the building owner may remove the art after and public art administrators. There was also testimony that giving the artist notice and ninety days to reclaim and remove this “radical redefinition” of sculpture is a relatively recent it himself (at his own expense). G.L. c. 231, § 85S (h ) (2). trend in the history of art. If the artwork cannot be removed from the building without causing the “substantial physical defacement, mutilation, Our responsibility in this case is not to decide whether the alteration, or destruction” of the art, the owner may proceed environment or physical setting of site-specific art is an to remove it unless the artist has expressly reserved his rights integral element of it, but to determine what the Legislature under the statute “by an instrument in writing signed by the intended in 1984 when it enacted MAPA, St.1984, c. 488, owner of such building and properly recorded, prior to the § 1, with no clear reference to such art. In making this installation of such art” (emphasis added). G.L. c. 231, § 85S determination, we write on a clean slate. No State or Federal (h ) (1). appellate court has had occasion to decide whether removing such a work from its site constitutes a violation of the This provision serves two purposes. First, it ensures that the artist's right of integrity as protected under statutes similar to owner of a building will be able to remove unwanted art from MAPA. 9 his property even if the removal would cause physical damage to the art in ways otherwise prohibited by MAPA (unless the In looking to the words of the statute, it is apparent that property owner has signed a written instrument reserving the whether site-specific art comes within MAPA's protection artist's rights). Thus, it “prevent[s] the artist from holding depends on whether the Legislature intended the words “of the building hostage to the artworks.” Ginsburg, Copyright any media” (used in the definition of “[f]ine art”) to mean in the *118 101st Congress: Commentary on the Visual not only physical materials and techniques used by the Artists Rights Act and the Architectural Works Copyright artist to craft an object (such as bronze or **584 granite, Protection Act of 1990, 14 Colum.-VLA J.L. & Arts 477, sculpture or painting), but also the “readymade” physical 486 (1990) (commenting on § 113[d] of VARA). Second, setting or environment that may have inspired the crafting of by requiring that any enforceable reservation of rights be the object, and where it has been *117 placed. Webster's “properly recorded,” the statute protects the integrity of the Dictionary defines “medium” in the context of visual and real property conveyancing system and guards against the graphic art as “the material or technical means for artistic establishment of unnoticed, undetectable, and indeterminate expression (as paint and canvas, lithographic or sculptural encumbrances. 10 stone, or literary or musical form).” Webster's Third New Int'l Dictionary 1403 (1993). The American Heritage Dictionary [3] If the Legislature intended to include the type of defines it as a “specific type of artistic technique or means site-specific art at issue here within MAPA's protections, of expression as determined by the materials used or the it would entail a radical consequence for owners of land, creative methods involved.” American Heritage Dictionary that the Legislature directly averted for owners of buildings. 815 (1981). Phillips's contention that the site can be the Specifically, **585 rights afforded artists would encumber

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 4 Phillips v. Pembroke Real Estate, Inc., 443 Mass. 110 (2004) 819 N.E.2d 579 private and public land with restrictions lasting for the (e.g., painting, drawing, and photography) that an artist life of the artist plus fifty years, without the need for manipulates to create a work of fine art, rather than the such restrictions to be recorded in a registry of deeds. We materials (in this case, the site) and techniques (in this do not lightly read such an intent into a legislative act case, site specificity) that inspire an artist. This is consistent given the recognized legislative policy of disparaging land with the list of examples enumerated by the Legislature restrictions 11 (especially unrecorded ones), the common-law in MAPA itself (“painting, print, drawing, sculpture, craft doctrine disapproving the long-term burdening of property, object, photograph, audio or video tape, film, hologram, or and the corollary judicial practice of construing statutory any combination thereof”). While the *120 Legislature's provisions regarding land restrictions “in favor of freedom inclusion in MAPA of the words “shall include, but not **586 [be] limited to” indicates that the specific examples of alienation.” Stop & Shop Supermarket Co. v. Urstadt of “visual or graphic art of any media” do not represent an Biddle Props., Inc., 433 Mass. 285, 290, 740 N.E.2d 1286 exhaustive list of protected works, we may look to them for (2001), quoting Ward v. Prudential Ins. Co., 299 Mass. 559, guidance in determining the Legislature's intent, particularly 565, 13 N.E.2d 411 (1938). See Bowen v. Campbell, 344 where there is ambiguity in the meaning of the operative word Mass. 24, 26, 181 N.E.2d 342 (1962), quoting Restatement of Property § 418 (“if upon ‘one of two or more possible —“media.” Commonwealth v. Baker, 368 Mass. 58, 68, constructions there is no restraint, such construction is 330 N.E.2d 794 (1975) (“In the absence of specific precedent preferred’ ”). We construe the statute consistent with these on the meaning of a word or phrase in a statute, we are guided principles unless there is evidence of unambiguous legislative by accepted principles of construction. One such principle intent to place restrictions on the *119 physical environment leads us to relate the words in question to the associated words in which the crafted components of site-specific art have been and phrases in the statutory context”). situated. 12 This interpretation is also consistent with our view that the statutory protection afforded fine art is protection from We do not infer such legislative intent from the absence of physical rather than conceptual harm. Section 85S (c ) language extending the protections afforded building owners prohibits “any physical defacement, mutilation, alteration, under § 85S (h ) of MAPA to property owners who might or destruction” of fine art. Phillips maintains that the word otherwise be unable to remove site-specific art from their “physical” only modifies the word “defacement” and urges land. The reasons why the Legislature might treat buildings this court to adopt broad, metaphysical definitions of the differently from other real property with respect to the terms “alteration” and “destruction.” However, such an potential encumbering effect of the statute are not apparent, interpretation is belied if subsection (c ) is read in conjunction and we perceive none. The failure of the statute to address with subsection (a ), which articulates the purpose of the specifically the removal of fine art from land suggests that act and declares that “the physical alteration or destruction the Legislature either did not intend the statute's protection of fine art ... is detrimental to the artist's reputation.” See to extend to the land upon which works of art have been Beeler v. Downey, 387 Mass. 609, 617, 442 N.E.2d 19 (1982) placed, or did not perceive the removal of free-standing (instructing that words used in one part of statute in definite works of art from their sites as causing their “physical sense should be given same meaning in another part of defacement, mutilation, alteration, or destruction.” Either statute). The use of the term “physical” in this section compels way, there was no need for it to consider the possibility the construction of the term “physical” in subsection (c ) to that land might be also “held hostage” to attached artworks. modify all of the words that follow it, including “defacement, Given the Legislature's evident concern that works of fine mutilation, alteration, [and] destruction.” In application, art not burden buildings, and that restrictions encumbering moving Phillips's sculptures will not result in their physical buildings be properly recorded, it is apparent to us that if the destruction, nor will it cause a physical alteration to the Legislature had understood that MAPA would have that same actual sculptures. The harm presented is decontextualization. encumbering effect on the sites of site-specific art, it would That this harm is significant to Phillips (and possibly to the have addressed the subject directly. public) is not to be understated, but it is not the same harm as the actual physical alteration or physical destruction of In light of these provisions, we think it more likely that the the artworks crafted by the artist. The balance struck by the Legislature intended the word “media” to refer to the various Legislature in 1984 deals only with the latter. materials (e.g., paint, charcoal, and film) and techniques

*121 Finally, we are not persuaded that the differing language in VARA and the California Art Preservation Act All Citations (CAPA), Cal. Civ.Code § 987 (West 1982 & Supp.2000), on which MAPA is based, requires a different result. 13 443 Mass. 110, 819 N.E.2d 579

Footnotes 1 The certification was made pursuant to S.J.C. Rule 1:03, as appearing in 382 Mass. 700 (1981), which, in relevant part, provides: “This court may answer questions of law certified to it by ... a United States District Court ... when requested by the certifying court if there are involved in any proceeding before it questions of law of this State which may be determinative of the cause then pending in the certifying court and as to which it appears to the certifying court there is no controlling precedent in the decisions of this court.” 2 Many artists have experimented with materials such as rocks and mud, using them to create large-scale works of art. For example, Robert Smithson's “Spiral Jetty” of 1970, which is located on the Great Salt Lake in Utah, is a coil 1,500 feet long and fifteen feet wide composed of black basalt rocks and earth from the site. The work is only visible when the lake's water level is low. See Govan, Art as Information, 19 Cardozo Arts & Ent. L.J. 109, 115–116 & n.29 (2001). 3 We do not consider or decide how the Massachusetts Art Preservation Act, G.L. c. 231, § 85S (MAPA), would affect the placement of the crafted pieces of site-specific art in the event of their relocation to another site for public display. 4 Pembroke Real Estate, Inc. (Pembroke), is a private real estate developer that leases the Eastport Park (park) land from the Massachusetts Port Authority (Massport). Massport and the Boston Redevelopment Authority have final approval over any changes to the design of the park. 5 The master plan for the park was prepared by noted landscape architect Craig Halvorson. In addition to the work of David Phillips and Halvorson, the park also features bronze benches designed by Judy McKie and large-scale kinetic sculptures designed by Susumu Shingu. 6 Specifically, the January, 2003, redesign scheme called for the removal of a bronze plaque designed by Phillips for one of the Park's walkways and for the relocation of a corner sculpture. In addition, changes to Phillips's stone walkways, pavers, and steps were proposed. 7 Both parties also argued claims under the First Amendment to the United States Constitution in Federal court, which are not before us. We answer only the certified question. See Woodward v. Commissioner of Social Sec., 435 Mass.

536, 538, 760 N.E.2d 257 (2002); Canal Elec. Co. v. Westinghouse Elec. Corp., 406 Mass. 369, 370 n. 1, 548 N.E.2d 182 (1990). 8 “In determining whether a work of fine art is of recognized quality, the court shall rely on the opinions of artist[s], art dealers, collectors of fine art, curators of art museums, restorers and conservators of fine art and other persons involved with the creation or marketing of fine art.” G.L. c. 231, § 85S (f ). 9 The Visual Artists Rights Act of 1990, 17 U.S.C. § 106A (2000) (VARA), the Federal analogue to MAPA, was enacted in 1990. Under § 106A(a)(3)(A) of VARA, “the author of a work of visual art” has the right “to prevent any intentional distortion, mutilation, or other modification of that work.” One Federal trial court has interpreted VARA to exclude from its protection site-specific art, stating that the purpose of the statute “is not ... to preserve a work of visual art where it is, but rather the preserve the work as it is.” Board of Managers of Soho Int'l Arts Condominium v. City of N.Y., U.S. Dist. Ct. No. 01 Civ. 1226 DAB, 2003 WL 11403333 (S.D.N.Y. June 17, 2003)2003 WL 11403333 (S.D.N.Y. June 17, 2003). No State appellate court has rendered a decision on this subject. 10 When the Legislature required the reservations of rights to be “properly recorded” and anticipated that, when recorded, they “shall be binding on subsequent owners,” the lawmakers were contemplating that these instruments would be recorded in the registries of deeds. See Koven, Observations on the Massachusetts Art Preservation Act, 71 Mass. L.Rev. 101, 108 (1986). 11 See, e.g., G.L. c. 184, § 21 (creating duty of grantor to inform grantee of encumbrances), § 23 (creating term limitation on conditions affecting use of real property), and §§ 26–30 (creating term limitations on land use restrictions). 12 Moreover, statutes like MAPA that alter common-law property rights and impose new obligations totally unknown at common law are ordinarily construed strictly, Corcoran v. S.S. Kresge Co., 313 Mass. 299, 303, 47 N.E.2d 257 (1943), unless the obvious legislative purpose behind the statute would be defeated by doing so.

© 2019 Thomson Reuters. No claim to original U.S. Government Works. 6 Phillips v. Pembroke Real Estate, Inc., 443 Mass. 110 (2004) 819 N.E.2d 579 13 The District Court judge noted that VARA, unlike MAPA, contains a “public presentation” exception, which provides that “[t]he modification of a work of visual art which is the result of ... the public presentation, including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification” under § 106A. 17 U.S.C. § 106A(c)(2). In light of the fact that MAPA was passed some six years prior to the enactment of VARA, we are not persuaded that the omission of similar language in MAPA indicates that the Legislature intended to protect the placement and presentation of works of fine art. See 2B N.J. Singer, Sutherland Statutory Construction § 51.06, at 266–267 (6th ed. rev.2000) ( “a state legislature cannot be presumed to know what legislation Congress will pass and the intent of Congress affords no basis for determining the intent of the state legislature”). Nor are we persuaded that the Legislature's failure to provide a provision similar to Cal. Civ.Code § 989(e) (West 1982 & Supp.2000), which states that “[i]f a work of fine art cannot be removed from real property without substantial physical defacement, mutilation, alteration, or destruction of such work, no action to preserve the integrity of the work of fine art may be brought,” indicates that the Legislature intended to protect the rights of artists whose work cannot be removed from land without physical alteration. Section 989 of the California Civil Code confers rights to certain public interest organizations. Cal. Civ.Code § 989(b)(2), (c) (defining “[o]rganization” as a “public or private not-for-profit entity or association, in existence at least three years at the time an action is filed ... a major purpose of which is to stage, display, or otherwise present works of art to the public or to promote the interests of the arts or artists”). It was enacted after CAPA, Cal. Civ.Code § 987 (West 1982 & Supp.2000), and has been interpreted as a reaction to the limits of CAPA, which did not acknowledge “a public interest in preserving cultural and artistic works independent of the interest of the artist.” Note, The “Recognized Stature” Standard in the Visual Artists Rights Act, 68 Fordham L. Rev. 1935, 1943–1944 (2000). There is no evidence that in passing § 989, however, the California Legislature intended to alter the scope of the rights conferred to artists and public interest organizations.

License Agreement stated that its purpose was “to create an arrangement between the Artist and the Licensee for the 2013 WL 182749 creation/production of the Artist's work Prem Love depicted Only the Westlaw citation is currently available. in the attached photos and their derivative works.” (Id. United States District Court, at 1.) The agreement provided for two $50,000 payments S.D. New York. from Gilbert to Indiana, plus a ten percent royalty of all Joao TOVAR, Plaintiff, sales by Gilbert. (Id. at 1–2 .) It also required Indiana to v. indemnify Gilbert for “any third party intellectual property Robert INDIANA, Defendant. claims.” (Id. at 2.) It finally contained a merger clause which stated, in pertinent part: “The Agreement contains the entire No. 12 Civ. 6104(KBF). understanding between the parties.” (Id.) | Jan. 17, 2013. The instant dispute relates, in part, to whether the License Agreement also encompassed another design: a design with block capital letters that used the Latin letters “P,” “R,” “E,” MEMORANDUM DECISION & ORDER and “M” (the “English Prem”). Importantly however, the photographs attached to the License Agreement showed three KATHERINE B. FORREST, District Judge. different designs of only Indian Prem-none of the attachments used the Latin letters “P,” “R,” “E,” or “M.” See Gilbert v. *1 In 2007, a great artist permitted a lesser artist to make Indiana, 09 Civ. 6352, 2012 WL 688811, at *1 (S.D.N.Y. art based on the great artist's most well-known work. In 2008, Mar.2, 2012) (hereinafter “Indiana I” ). 1 The only similarity the lesser artist made several pieces of poor art that was not between Indian Prem and English Prem is not in design, but covered by the license granted, and sold it to a dealer, who rather solely in the use of the word “Prem” (albeit in different then resold it for a substantial profit. In 2009, the great artist languages and script). got wind of the lesser artist's creation of the poor art and made public that he never licensed the poor art's creation and Plaintiff Joao Tovar alleges that he purchased ten English had nothing whatsoever to do with it. Accordingly the poor Prem sculptures from Gilbert beginning in May 2008. art, including any pieces still held by the dealer, plummeted (Compl. ¶¶ 7–8; see also Indiana I, 2012 WL 688811 at *3.) in value. Now the dealer has sued the great artist. But the He alleges that the sculptures purchased had a market value of great artist had no connections with the dealer, contractual or $1.5 million, that he purchased them for $481,625, and that he otherwise. Nor did the great artist ever lie to the dealer about resold “[m]any” of them to third parties for around $710,000. anything, or indeed make any lie that affected the dealer in any (Compl.¶¶ 7, 46, 47.) He further alleges that “[m]any” of way. For those reasons, more fully explained below, the Court those sculptures were resold by those third parties for around here grants the great artist's motion to dismiss, now before the $1.12 million, and that others were “slated for sale in Milan, court, in its entirety. Italy, and Dubai” by Sotheby's and Christie's auction houses. (Id. ¶¶ 24, 48.)

BACKGROUND *2 Tovar does not allege that Indiana created or designed English Prem. Instead, Tovar alleges that “Indiana approved Defendant Robert Indiana created the iconic “LOVE” the creation and production of” English Prem. (Id. ¶ 11.) sculpture, which has the “O” positioned at an angle. (See Compl. ¶ 5.) On August 2, 2007, Indiana and one Tovar also alleges that Indiana “executed a certificate of John Gilbert entered into an agreement (the “License authenticity for the sculptures.” (Id. ¶ 12.) This alleged Agreement”) pursuant to which Indiana as the “Artist” and certificate of authenticity (the “COA”) is attached to the “Licensor” would create—and Gilbert as the “Licensee” complaint. It states: “As editor and publisher of the would produce and sell—objects with Hindi script designs Robert Indiana Perm–Love project ... I hereby certify the of the Hindi word for “love,” spelled phonetically in Latin authenticity of this Robert Indiana sculpture ... [and] have letters from the English alphabet: “prem” (the “Indian zealously reflected his artistic intention in every work Prem” or “Prem Love”). (See generally Compl. Ex. 1.) The that I published.” (Compl.Ex. 2.) The COA ends: “JOHN

GILBERT Prem Love Art Publishing Ltd. Mysore India May Cir.2010). Accordingly, this Court will apply Maine law to 2008,” and is signed by Gilbert. (Id.) On the side of the COA, the issues on this motion. 3 in handwriting, are the words “For Tovar,” with Indiana's signature. (Id.) Legal Standard The story does not, however, end with Tovar's resale of *3 To survive a Rule 12(b)(6) motion to dismiss, “a “many” of the English Prem sculptures for a profit of complaint must contain enough factual material ‘to raise a approximately $230,000. On June 3, 2009, Indiana wrote a right to relief above the speculative level.’ “ Ocasio– letter to one Simon Salama–Caro stating that English Prem Herná ndez v. Fortuño–Burset 640 F.3d 1, 12 (1st Cir.2012) “is ... not my work.” (Compl. ¶ 15 and Ex. 4 at 1.) Tovar alleges that this act rendered the English Prem sculptures he (quoting Bell Alt. Corp. v. Twombly, 550 U.S. 544, 555, purchased “worth little more than the materials from which 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). In other words, they were made.” (Compl. ¶ 16 .) the complaint must allege “enough facts to state a claim to relief that is plausible on its face.” Román–Oliveras v. In this suit against Indiana, Tovar asserts six causes of P.R. Elec. Power Auth., 655 F.3d 43, 49 (1st Cir.2011) action: (1) breach of the License Agreement; (2) product (quoting Twombly, 550 U.S. at 570); see also Ashcroft disparagement; (3) violation of New York Art and Cultural v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d Affairs Law (“NYACAL”) section 13.01.3(a); (4) breach of 868 (2009) (same). “A claim has facial plausibility when the COA; (5) unjust enrichment; and (6) misrepresentation. the plaintiff pleads factual content that allows the court to (Id. ¶¶ 27–78.) draw the reasonable inference that the defendant is liable

Tovar, moreover, is not the only person to have sued Indiana in for the misconduct alleged.” Iqbal, 556 U.S. at 678. In this story. In 2009, Gilbert sued Indiana alleging similar facts applying that standard, the court accepts as true all well- and asserting various claims, each one of which was premised plead factual allegations, but does not credit “mere conclusory on Indiana, as the creator of English Prem, being contractually statements” or “threadbare recitals of the elements of a cause bound to Gilbert, See Indiana I, 2012 WL 688811, at *1–3. of action.” Id. If the court can infer no more than “the This Court granted Indiana's motion for summary judgment mere possibility of misconduct” from the factual averments, on March 2, 2012, ruling, in sum, that English Prem was not dismissal is appropriate. Maldonado v. Fontanes, 568 F.3d covered by the License Agreement, that English Prem was not 263, 268 (1st Cir.2009) (quoting Iqbal, 556 U.S. at 679). a “derivative work” of Indian Prem (which was covered by that agreement), and that Indiana and Gilbert did not modify or amend the License Agreement to cover English Prem either Damages (a) by Indiana's statement “this is an Indiana” upon seeing two As a threshold matter, Tovar has not adequately pleaded designs of English Prem in 2008, or (b) by Indiana placing his damages. This alone disposes of his claims. Damages signature on the COA. See id. at *4–6. are an essential element of breach of contract, product disparagement, and misrepresentation. See Wetmore v. MacDonald, Page, Schatz, Fletcher & Co., LLC, 476 F.3 DISCUSSION 1, 3 (1st Cir.2007) (breach of contract elements include damages) (quoting Me. Energy Recovery Co. v. United Steel Choice of Law Structures, Inc., 724 A.2d 1248, 1250 (Me.1999)) 4 ; Found, This action, originally brought in Maine State Superior Court for Blood Research v. St. Paul Marine & Fire Ins. Co. ., (Knox County) was removed by Indiana to the District of 730 A.2d 175, 179 (Me.1999) (disparagement); Allolding v. Maine, and then transferred to this Court pursuant to 28 Portland Housing Auth., CV–02–675, 2003 WL 23109962, U.S.C. § 1404(a). 2 (See docket no. 20 at 2–4.) “[W]hen at *3 (Me.Super.Ct. Nov. 18, 2003) (misrepresentation). a case is transferred for convenience under 28 U.S.C. § 1404(a), the law of the transferor state is to be applied so Tovar alleges that he purchased ten English Prem sculptures long as the transferor state could properly have exercised from Gilbert for $481,625, and resold “many” of them for jurisdiction.” Gerena v. Korb, 617 F.3d 197, 205 (2d $710,000. (Compl.¶¶ 7–8, 46–47.) He therefore ended up up $228,375 combined as a middleman in transactions in

English Prem, and his tort claims for disparagement and in question, Gilbert and Indiana would get no cash. (See Pl.'s misrepresentation fail immediately . 5 Moreover, any contract Supp. Opp'n at 8; see also Compl. ¶¶ 32–33.) expectation damages Tovar might have based on his resale of any unsold English Prems-damages he does not claim As a textual matter, this argument is fine so far as it goes. in the complaint-would require Tovar's perpetration of the But in reality, it little sense, and indeed is not the law. First, very fraud he complains of. It rings of hypocrisy to claim it reverses the doctrine of third party beneficiary. The third victimhood due to both a fraud being perpetrated upon you party beneficiary does not, by its existence or participation, and your inability to perpetrate that fraud yourself. create the benefit realized by the contracting parties-instead the third party beneficiary is the one actually benefitted Each of Tovar's claims fails, however, for additional reasons from the contracting parties' contract. Second, a distribution as well. or licensing agreement between any manufacturer and any distributor or retailer always contemplates downstream purchasers. The logical consequence of Tovar's argument Third Party Beneficiary of the License Agreement would be that every consumer of any product for which Tovar's first count is for breach of the License Agreement. different companies serve as manufacturer and retailer could Tovar of course did not sign and was not party to the License sue the manufacturer and/or retailer for breach of any of Agreement. He argues, however, that he was an intended third the agreements existing between those entities. This result is party beneficiary of that contract, and therefore entitled to sue absurd. 6 under it. (Pl.'s Supp. Opp'n at 6–9.) Nor is there any language in the contract illustrating *4 In Maine, a party is an intended third party beneficiary an intention of either party to grant rights in any other of a contract between other parties-and can therefore sue party, further refuting Tovar's claim to intended third party to enforce performance of that contract-if “recognition of a right to performance in the beneficiary is appropriate to beneficiary status. See DiMillo, 789 F.Supp.2d at 207– effectuate the intention of the parties [to the contract] and 08; Devine v. Roche Biomed. Labs., 659 A.2d 868, 870 either (a) the performance of the promise will satisfy an (Me.1995); see also Klamath Water Users, 204 F.3d at obligation to the promisee to pay money to the beneficiary; 1211 (interpreting Restatement (Second) of Contracts § 302). or (b) the circumstances indicate that the promisee intends to Tovar argues that the License Agreement's indemnification give the beneficiary the benefit of the promised performance.” term requiring Indiana to indemnify Gilbert for intellectual Davis v. R C & Sons Paving. Inc., 26 A.3d 787, 790 property claims from third parties indicates Indiana and (Me.2011) (quoting Restatement (Second) of Contracts § Gilbert's intent to allow third parties to enforce the contract. 302); DiMillo v. Travelers Prop. Cas. Co. of Am., 789 (Pl.'s Supp. Opp'n at 8; see also Compl. ¶ 34.) Again, this F.Supp.2d 194, 207 (D.Me.2011). confuses the doctrine. The indemnification term represents a promise from Indiana to Gilbert that third parties do not have As an initial matter, there is nothing whatsoever in Tovar's rights or benefits under the License Agreement—it is not any complaint indicating that Gilbert-the promisee-intended to kind of promise granting rights to third parties. give Tovar-the beneficiary-the benefit of the performance promised to Gilbert (the right to produce Indian Prem). *5 Accordingly, Tovar's claim as a third party beneficiary Therefore, even assuming arguendo that Tovar's right to sue of that agreement fails as a matter of law. See DiMillo 278 on Indiana's obligations would “effectuate the intention” of F.Supp.2d at 211–12. 7 Indiana and Gilbert, Tovar's claim still fails. See Davis, 26 A.3d at 790. Tovar's quite general argument in opposition is that he must be an intended third party beneficiary because if Product Disparagement not for him, or any downstream purchaser, neither Gilbert nor The elements of “product disparagement” under Maine law Indiana could make any money from their arrangement. Thus, are “publication by the defendant of the disparaging words, argues Tovar, Gilbert and Indiana both must have intended falsity, malice, lack of privilege, and special damages.” that third parties benefit from the License Agreement by Blood Research, 730 A.2d at 179 n. 1. 8 Tovar alleges that obtaining fine art because without third parties buying the art Indiana's “renunciation” of the authenticity of the English Prem sculptures destroyed their value. (See Compl. ¶¶ 49–51.)

But nowhere does the complaint allege that the renunciation separately defined group. The complaint only alleges that was false. Indeed, Tovar's entire case is dependent on the Gilbert was in the business of selling the English Prem- renunciation—i.e., the statement that English Prem was not an there is no allegation in the complaint that Indiana himself Indiana sculpture—being true. Having failed to allege falsity, ever dealt in fine art. Accordingly, Indiana is not covered by Tovar's claim for product disparagement cannot stand. NYACAL § 13.01 in the first place.

*6 Finally, the very language of the COA itself does not Breach of New York Arts and Cultural Affairs Law § violate section 13.01.3(a). The COA states that “I [Gilbert 13.01.3(a ) ] have zealously reflected his [Indiana's ] artistic intention As an initial matter, it is unclear under what authority Tovar in every work that I [Gilbert ] published,” (Compl.Ex. 2.) asserts his claim for breach of New York statutory law In other words, the COA says that English Prem is by concerning artists and certificates of authenticity. Because Gilbert-which it is-and not by Indiana, and is therefore this case was brought in Maine and transferred to this Court entirely in accord with section 13.01.3(a) which requires that under 28 U.S.C. § 1404(a), the law of Maine governs this “[l]anguage used in a certificate of authenticity ... stating case. Moreover, nothing in the COA-which was executed that ... work is by a named author ... means unequivocally, that in Maine, 9 see Indiana I, 2012 WL 688811, at *3—points the work is by such named author.” NYACAL § 13.01.3(a). towards New York law being applicable to it. Finally, the COA is not part of the License Agreement. Thus, even if the For all these reasons, Tovar's complaint fails to state a claim Court were applying New York law to interpret the terms of for violation of NYACAL § 13.01.3(a) against Indiana. the License Agreement, Maine law would still apply to the COA. Breach of the Certificate of Authority Putting that aside, however, Tovar still fails to state a claim for Tovar next alleges that the COA constituted a contract breach of NYACAL section 13.01.3(a). That section states, between him and Indiana, which Indiana breached by in pertinent part, that “[l]anguage used in a certificate of renouncing his authorship of English Prem. The elements authenticity ... stating that ... work is by a named author ... of breach of contract under Maine law are “(1) breach of a means unequivocally, that the work is by such named author.” material contract term; (2) causation; and (3) damages.” Me. NYACAL § 13.01.3(a). However, section 13.01.3(a) itself Energy Recovery, 724 A.2d at 1250. A breach of a material does not create the cause of action a litigant sues under. contract term of course requires there to be an enforceable That is created in section 13.01.1 which states: “Whenever contract, the elements of which are “(1) a meeting of the minds; (2) consideration; and (3) mutuality of obligations.” an art merchant 10 ... furnishes to a buyer ... who is not an Bradley v. Krwicky, 574 F.Supp.2d 210; 222 (D.Me.2008); see 11 art merchant a certificate of authenticity ... it (a) [s]hall be In re Estate of McPhee, 904 A.2d 401, 402 (Me.2006). presumed to be part of the basis of the bargain; and (b) [s]hall create an express warranty for the material facts stated.” The COA fails to meet any of Maine's requirements for an NYACAL § 13.01.1. enforceable contract. The COA was not negotiated between Tovar and Indiana-it was a document demanded by Tovar of Tovar fails to allege a violation by Indiana of section Gilbert, which Gilbert had endorsed by Indiana-and therefore 13.01.3(a) for several reasons. First, section 13.01, read as there could be no meeting of the minds on any of its a whole, applies only to sales by art merchants to non- terms. There is no allegation or basis upon which to draw art merchants. 12 See NYACAL § 13.01.1. Tovar purchased any inference of consideration for Indiana–Indiana's royalty ten English Prem sculptures, resold “many” of them at a payments from Tovar's purchases were mandated only by substantial profit including to major auction houses such as the License Agreement. And the COA creates no obligation Sotheby's and Christie's. By his own allegations, Tovar is for Tovar–Tovar had already purchased the English Prem clearly in the business of dealing in art, the primary definition sculptures from Gilbert. The COA is therefore not a contract, of an “art merchant” for purposes of NYACAL. See NYACAL and Tovar cannot allege any “breach” of it. § 11.01.2.

Furthermore, section 13.01.1 creates obligations and potential Unjust Enrichment liabilities for art merchants, not artists, who constitute a

Tovar next alleges that Indiana has been unjustly enriched due Tovar's claim fails for the very simple reason that there to his collection of royalty payments from sales of English was nothing false in Indiana's endorsement “For Tovar.” Prem. Unjust enrichment under Maine law requires (1) that Tovar purchased the sculptures from Gilbert and, upon plaintiff “conferred a benefit on” defendant; (2) that defendant having concerns that Gilbert might have lied to him about “had appreciation or knowledge” of the benefit; and (3) the sculptures' authenticity, demanded that Gilbert obtain a that the circumstances show that “ret[ention of] the benefit certificate of authenticity from Indiana. Gilbert then signed without payment of its value” would be inequitable. In re the COA, which states that he, Gilbert, is the publisher Estate of Anderson, 988 A.2d 977, 980 (Me.2010). of English Prem. Indiana apparently placed his signature under his handwritten “For Tovar” because Gilbert would This claim fails for at least two reasons. First, there is no be delivering the COA to Tovar. See Indiana I, 2012 WL well-pleaded allegation that Indiana ever received any benefit 688811, at *3. But the COA itself is a fully executed document from Tovar's purchases of English Prem. The complaint with a signature block for Gilbert, and is signed by Gilbert, does not allege that Indiana received any specific dollar without Indiana's signature being necessary or appearing amount, or any circumstances or details concerning any on it—Indiana's souvenir-like signature is simply a legally- royalty payments made by Gilbert or received by Indiana. inoperative add-on. Indiana wrote “For Tovar” knowing Indeed, the only allegation of value received by Indiana in that the COA was going to Tovar, a true statement of a the whole complaint is the single line; “Indiana has been true fact. Since the statement was not false, the claim for compensated with royalties.” (Compl.¶ 70.) However, as is misrepresentation fails. 14 well-established, simply reciting the elements of an offense, without details from which a court can determine whether the Motion to Amend allegations made are plausible, is insufficient. See Iqbal, Tovar has not moved to amend his complaint. In his 556 U.S. at 678. And since Tovar purchased English Prem, supplemental brief in opposition to Indiana's motion to and the License Agreement under which Indiana would dismiss-Tovar's third brief filed on this motion-however, he be due royalties covered only Indian Prem, it is in fact off-handedly, and without any authority or support, throws implausible that Indiana would have received royalties for in the single line: “Should the Court disagree [with Tovar's Tovar's purchases. Tovar's bald statement that “Indiana has opposition], Tovar respectfully requests the opportunity to been compensated with royalties,” is insufficient to allege the replead the complaint.” (Pl.'s Supp. Opp'n at 2; see also Pl.'s required benefit in an unjust enrichment claim. Corr. Obj. at 11.) Though this request is not being made on any formal motion, the Court will address it regardless. *7 Second, even if Indiana had obtained some benefit in this story, Indiana's retention of that benefit would be far from Rule 15(a) of the Federal Rules of Civil Procedure requires inequitable. Indiana, and possibly Tovar, were essentially that leave to amend be freely granted “when justice defrauded by Gilbert. See Indiana I, 2012 WL 688811, at so requires.” Fed.R.Civ.P. 15(a)(2). “However, it is well *1–2. To the extent inequitable profits were made, they were established that leave to amend a complaint need not be made by Gilbert, not Indiana. Accordingly, Tovar's claim for granted when amendment would be futile.” Ellis v. Chao, unjust enrichment fails. 336 F.3d 114, 127 (2d Cir.2003). Futility turns on whether an amended pleading could withstand a motion to dismiss Misrepresentation pursuant to Rule 12(b)(6) of the Federal Rules of Civil Tovar's final claim is for the tort of misrepresentation arising Procedure. Ricciuti v. New York City Transit Auth., 941 F.3d from his purchase of the English Prem sculptures in reliance 119, 123 (2d Cir.1991). on Indiana's endorsement on the COA. Misrepresentation under Maine law requires (1) a false statement; (2) of material *8 Based on the above reasoning in granting Indiana's fact; (3) with knowledge of or reckless disregard to its falsity; motion to dismiss, the Court finds that an amendment of the (4) for the purpose of inducing another to act in reliance upon complaint on the theories asserted by Tovar would be futile. the statement; (5) the plaintiffs justifiable reliance upon it; Tovar simply has no legal action against Indiana. Tovar might and (6) damages. See Allolding, 2003 WL 23109962, at *3; have claims against Gilbert, the party who sold him the works at issue in this case. But Indiana has and had no contractual Flaherty v. Muther, 17 A.3d 640, 654 (Me.2010). 13 obligations to Tovar, told no lies to Tovar, and had no contact

with Tovar creating legal liabilities. Thus, amendment of the complaint would be futile, and Tovar's request that he be given The Clerk of the Court is directed to terminate the motion at that opportunity is denied. Docket No. 8 and to terminate this case.

SO ORDERED.

CONCLUSION All Citations For the reasons set forth above, defendants' motion to dismiss is GRANTED in its entirety, and this action is dismissed with Not Reported in F.Supp.2d, 2013 WL 182749 prejudice.

Footnotes 1 The copy of the License Agreement, signed in 2007, and attached to the Complaint in this action includes a design of English Prem. (See Compl. Ex. 1 at 4.) However, in related litigation before this Court between Gilbert and Indiana— the parties who in fact executed the License Agreement, and designed, created, and produced both Indian Prem and English Prem-the following facts were undisputed: (1) the License Agreement included only designs of Indian Prem, and not of English Prem; (2) Indiana knew nothing of English Prem in 2007; and (3) English Prem was first made known to Indiana only in early 2008. Indiana I, 2012 WL 688811 at *1–2. Although this is a motion to dismiss, the Court may

properly consider these facts. See San Gerónimo Caribe Project, Inc. v. Acevedo–Vilá, 687 F.3d 465, 471 and n. 2 (1st Cir.2012) (permitting consideration of judicial opinions, other official or public documents, documents central to the parties' claims, documents upon which the complaint relies, and documents the authenticity of which is not in dispute). Based on this timeline and these facts, it is impossible that the English Prem was attached to the License Agreement in 2007, when Gilbert had not shown it to Indiana until 2008, Although Tovar's potentially accidental attachment of an incorrect version of the License Agreement to his complaint was pointed out to Tovar by defense counsel, Tovar has chosen not to directly address the issue in three separate briefs filed on this motion. (See generally docket nos. 10, 16, and 32.) Instead, in the supplemental brief Tovar filed before this Court, Tovar simply acknowledged that “Indiana first saw sketches of English Perm pursuant to a January 21, 2008 letter.” (See Pl.'s Supplemental Mem, of Law in Opp'n to Def. Robert Indiana's Mot. to Dismiss (“Pl.'s Supp. Opp'n”), docket no. 32, at 3.) Thus, Tovar has essentially conceded this point despite the inaccurate version of the License Agreement attached to his complaint. 2 28 U.S.C. § 1404(a) provides: “For the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.” 3 Although the License Agreement contained a choice of forum clause pointing to New York State courts, it in fact contained no choice of law clause. (See Compl. Ex. 1 at 2.) Indeed, even if the License Agreement had contained a choice of law clause mandating New York law, that clause would have governed disputes concerning the language of the contract-it would not govern the legal theories Tovar sues under in this case. 4 There appears to be some confusion in Maine law whether a party must allege actual damages, or simply “nominal” damages to sustain a breach of contract claim. Compare In re Hannaford Bros. Co. Customer Data Security Breach Litis., 4 A.3d 492, 495 (Me., 2010) (“actual injury or damage is an element of ... breach of contract claims”) with Mozingo v. Stanley Med. Research Inst., CV–05–186, 2006 WL 759739, at *1 (Me.Super.Ct. Jan. 28, 2006) (“Although breach of contract damages are generally based on the injured party's interest in having the benefit of its bargain, nominal damages are also available in breach of contract action [sic]”). 5 Tovar requests $1 million in punitive damages on his disparagement claim. (Compl.¶ 53.) “Under Maine law, punitive damages may be imposed if a tortfeasor acts deliberately with ‘express' or ‘actual’ malice, or so outrageously that malice

can be implied.” Shannon v. Sasseville, 684 F.Supp.2d 169, 173 (D.Me.2010). Indiana sold no sculpture to Tovar. There is no allegation he was aware of Tovar's intent to resell the English Prems for value. Indeed, the only allegation connecting Tovar and Indiana at all is that Indiana endorsed Gilbert's COA. This is entirely insufficient to adequately allege any malicious plan on Indiana's part concerning Tovar's purchase and resale of English Prem. Moreover, it was

Indiana, and possibly Tovar, who were taken advantage of by Gilbert. It was Gilbert who acted outrageously by selling sculptures Indiana never agreed to put his name on, and then suing Indiana in an attempt to force Indiana to do so. 6 Tovar cites no caselaw from any jurisdiction for this proposition, and the Court has found none. However, similar situations from other jurisdictions interpreting the Restatement (Second) of Contracts or in which third party beneficiary status requires some manifestation of intent from the contracting parties demonstrate the obvious fallacy of the position. See,

e.g., Klamath Water Users Protective Ass'n v. Patterson, 204 F.3d 1206, 1212 (9th Cir.1999) (although contract between government and damn builder benefitted surrounding irrigators, “to allow [the irrigators] intended third party beneficiary status would open the door to all users receiving a benefit from the Project achieving similar status, a

result not intended by the Contract”); Syngenta Seeds, Inc. v. Bunge N. Am., Inc., 820 F.Supp.2d 953, 966, 983– 84 (N.D.Iowa 2011) (seed manufacturer who sold seed to farmers who stored plants grown from that seed at grain warehouse not intended third party beneficiary of contract between grain warehouse and government permitting grain warehouse to operate); Marvel Enters., Inc. v. World Wrestling Fed'n Entm't. Inc., 271 Ga.App. 607, 610 S.E.2d 583, 591 (Ga.Ct.App.2005) (clothing manufacturer not intended third party beneficiary of contract between performers/licensors and performance company/licensee, although neither performance company nor performers could benefit from contract

without purchasing clothes from manufacturer); Tyler v. PepsiCo. Inc., 198 Ga.App. 223, 400 S.E.2d 673, 677 (Ga.Ct.App.1990) (consumers not third party beneficiaries of agreements between soft drink licensor and soft drink bottler). 7 The result would be the same under New York law, which also requires inter alia that the contracting parties, or the contract itself, manifest an intent to allow third parties to enforce the contract. See Thompson v. Bosswick, 855 F.Supp.2d 67, 84 (S.D.N.Y.2012) (elements include (1) existence of a valid and binding contract between other parties; (2) that the contract was specifically intended for claimant's benefit; and (3) the benefit is immediate, not incidental, indicating that the parties intended to compensate the claimant if the benefit were lost). 8 In New York, “Product Disparagement” similarly requires a statement tending to “negatively reflect upon the condition, value, or quality of a product,” falsity, publication, malice, and special damages. Thome v. Alexander & Louisa Calder Found., 70 A.D.3d 88, 890 N.Y.S.2d 16, 28 (1st Dep't 2009). 9 Or perhaps even in Mysore, India (see Compl. Ex. 2)-but in any event, not in New York. 10 “Art merchant” is defined as one “in the business of dealing” in fine art, or who “holds himself out as having knowledge or skill peculiar” to art. NYACAL § 11.01.2. “Artist” is separately defined as the “creator of a work of fine art.” NYACAL § 11.01.1. 11 “Certificate of authenticity” is defined as “a written statement by an art merchant ... attesting to the authorship of a work of fine art.” NYACAL § 11.01.6. 12 Tovar argues that section 13.01.3 is a stand-alone subsection, for which section 13.01.1's requirement of a sale from an art merchant to a non-art merchant does not apply. (See Pl.'s Corrected Objections to Def.'s Mot. to Dismiss (“Pl.'s Corr. Obj.”), docket no. 16, at 10–11.) Tovar cites no case for this proposition, and every case the Court can find interpreting section 13.01.3 does so in conjunction with section 13.01.1. See, e.g., Robins v. Zwirner, 713 F.Supp.2d 367, 374

(S.D.N.Y.2010); Christie's Inc. v. SWCA, Inc., 22 Misc.3d 380, 867 N.Y.S.2d 650, 656 (N.Y.Sup.Ct.2008); Levin v. Gallery 63 Antiques Corp., 04 Civ. 1504, 2006 WL 2802008, at *10–12 (S.D.N.Y. Sept.28, 2006); Pritzker v. Krishna Gallery of Asian Arts Inc., 93 C 4147, 1996 WL 563442, at *3 (N.D.Ill. Sept.30, 1996) (interpreting NYACAL § 13.01, and noting that an art merchant would be “excluded from protection by the Arts Law”). Plus, divorced from section 13.01.1, section 13.01 .3 simply is an aspirational statement and not an obligation for anyone. 13 Similarly, the elements of an action for fraud in New York are (1) a misrepresentation of fact; (2) which is false; (3) which is known by the defendant to be false; (4) made by the defendant for the purpose of inducing the plaintiff to rely upon it; (5) the plaintiff's justifiable reliance upon the representation; and (6) injury. Shovak v. Long Island Commercial Bank, 50 A.D.3d 1118, 858 N.Y.S.2d 660, 663 (2d Dep't 2008). 14 The claim also fails because there is not a single allegation in the complaint suggesting that Indiana endorsed the COA “For Tovar” for any purpose whatsoever related to Tovar, much less for the purpose of inducing Tovar to act in some way in reliance upon the endorsement. Other than the fact that Tovar has here sued Indiana, there is not even a suggestion that Indiana ever had any contact with Tovar, or could possibly have cared how Tovar acted. Plus, since (1) the License Agreement covered only Indian Prem; (2) the COA was for an English Prem sculpture; (3) that Indiana denied authorship

of English Prem; (4) and that Indiana flat out did not like English Prem, it is entirely implausible that Indiana would have desired any purchaser, Tovar included, to purchase English Prem in reliance on his endorsement of the COA.