422 F.Supp.3d 807
S.D.N.Y.2019Background
- Gasery, a photographer, took images of the Broadway musical Fela! and entered an October 4, 2012 agreement with Kalakuta granting each a 50% undivided copyright interest and authorizing Kalakuta to set sales/licensing terms (with consultation and accounting obligations).
- Kalakuta provided the photographs to Fela Broadway, LLC (FB) and to Stephen Hendel (identified in the agreement as a person Gasery would liaise with); the images were used in playbills, flyers, posters, marquees and other advertising on the production's road tour.
- Gasery alleges Kalakuta, FB, and Hendel licensed, sold, and disseminated the images without proper consultation, attribution, accounting, or compensation to him and without his consent.
- Defendants moved to dismiss: arguing (a) Kalakuta, as co-owner, could license use so no copyright claim against licensees; (b) fiduciary-duty claims were inadequately pleaded; and (c) the remaining state-law claims fail diversity amount-in-controversy requirement.
- The court held Kalakuta granted an implied non-exclusive license to FB and Hendel (so copyright claims were dismissed); dismissed the breach-of-fiduciary-duty claims; but declined to dismiss the state-law claims (accounting, breach of contract, declaratory relief, contractual attorney’s fees) for lack of diversity jurisdiction because Gasery’s asserted damages ($107,001) met the amount-in-controversy at this stage.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether FB and Hendel infringed copyrights | Gasery: Kalakuta did not license FB or Hendel; their use was unauthorized | Kalakuta/FB/Hendel: Kalakuta, as co-owner, granted a (non-exclusive, implied) license to FB and Hendel, insulating them from infringement claims | Court: Implied non-exclusive license existed; copyright claims against FB and Hendel dismissed |
| Whether Gasery pleaded fiduciary duties by Kalakuta or Hendel | Gasery: Hendel and Kalakuta breached fiduciary duties and misused jointly owned assets | Defendants: No special relationship or joint venture; duties arise from contract only and no separate fiduciary duty exists | Court: Fiduciary duty/joint-venture allegations insufficient and duplicative of contract claim; fiduciary claims dismissed |
| Whether federal question jurisdiction remains under Copyright Act | Gasery: asserted copyright claims support federal jurisdiction | Defendants: copyright claims fail, so no federal-question jurisdiction | Court: Copyright claims dismissed; no Copyright Act jurisdiction remains |
| Whether diversity jurisdiction exists for remaining state-law claims (amount-in-controversy) | Gasery: values his 50% interest at $107,001 (half of promotional value per seat) | Defendants: contest valuation and assert contractual offsets (e.g., loan) reduce recoverable amount below $75,000 | Court: At pleadings stage Gasery’s $107,001 allegation is a plausible good-faith amount; diversity jurisdiction held for remaining claims |
Key Cases Cited
- Cortner v. Israel, 732 F.2d 267 (2d Cir.) (joint copyright owners cannot sue each other for infringement)
- Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) (a co-owner may unilaterally grant a non-exclusive license)
- Spinelli v. Nat'l Football League, 903 F.3d 185 (2d Cir. 2018) (limitations on retroactive or post-hoc implied licenses)
- Psihoyos v. Pearson Educ., Inc., 855 F. Supp. 2d 103 (S.D.N.Y. 2012) (implied-license analysis: meeting of the minds and delivery with intent to permit use)
- Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995) (existence of license is an affirmative defense)
- SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D.N.Y. 2000) (classification of license types: written, oral, implied)