Opinion
Index No. 503083/2024
07-26-2024
Darryl McPherson, Plaintiff, v. Kith Retail, LLC d/b/a KITH NYC, Defendant.
Unpublished Opinion
AARON D. MASLOW, J.
The following numbered papers were used on this motion: NYSCEF Document Numbers 12-17, 20-21, 23-33.
Upon the foregoing papers, having heard oral argument, the within motion is determined as hereinafter set forth.
Plaintiff's Complaint
Plaintiff, for his Complaint, alleges that while attending Brooklyn's Afropunk Festival on August 25, 2018, he agreed to be photographed by a New York Times ("NYT") journalist and authorized publication of said photo in an August 28, 2017 NYT article titled "Street Style: Afropunk 2018." The image, in which Plaintiff wore "a canary yellow durag with a cape-like train, emblazoned with hundreds of rhinestones," has been publicly reproduced during the years following, to which Plaintiff filed no complaints. Every year Defendant sponsors a Black History Month Artist Series promoting Black creatives whose works are incorporated into apparel displayed online and in Defendant's physical locations and galleries. In February 2022 and without any knowledge of Plaintiff's photo, Defendant entered into a Licensing Agreement ("the Agreement") with Samuel Olayombo ("the Artist") with respect to his painting, "Slum Flower Titus," depicting a man wearing a long cape-like pink durag with no rhinestones, in which the Artist represented that he had full rights to the licensed work, that the image was used rightfully and legally, and that no third party would have valid claims based on the artwork. Defendant featured the painting in its Black History Month celebration during February 2023 in reliance of the Artist's representations. Plaintiff alleges the painting was adapted from the photograph and claimed Defendant used his likeness without authorization. When Defendant refused to comply with demands such as entering into a business collaboration, Plaintiff brought suit, asserting a violation of his right to privacy and right of publicity under New York Civil Rights Law §§ 50-51 and seeking compensatory damages of "no less than $500,000," punitive damages, and equitable relief. (See generally NYSCEF Doc No. 15, Complaint.)
Defendant's Contentions in Support of CPLR 3211 Motion to Dismiss
First, Defendant argues that the use of the painting in its Black History Month Artist Series is protected by the First Amendment and therefore cannot be the basis of a claim under NYCRL § 51. Defendant maintains Plaintiff has no recourse under § 51 as artistic expressions do not require consent and Plaintiff admitted "Slum Flower Titus" is a work of expression by referring to it as a "painting" and "artwork" that "has been shown at galleries internationally." Defendant cites to Miczura v Knowles (2015 WL 8653578, *2 [Sup Ct, NY County, Dec. 10, 2015, index no. 162333/14] ["[c]ourts have consistently held that Civil Rights Law § 51 does not apply to works of literary and artistic expression"]) and Foster v Swenson (128 A.D.3d 150, 156 [1st Dept 2015] ["when a plaintiff's name, portrait, picture or voice is used in a work of artistic expression without her written consent, she has no recourse pursuant to Civil Rights Law § 51"]) (see NYSCEF Doc No. 13, Mem of Law in Support).
Second, Defendant contends Plaintiff is not entitled to any damages or relief as his claim fails to plead entitlement to equitable relief, compensatory damages, or punitive damages. Defendant claims Plaintiff is not entitled to equitable relief in the form of a "public apology" as such relief is generally granted in the form of injunctions. Furthermore, there is nothing to restrain or prevent as, by Plaintiff's own admission, Defendant no longer displays or publishes the merchandise reflecting the artwork as Defendant promptly "removed most... of the unauthorized content from its website" (see NYSCEF Doc No. 15, Summons and Verified Complaint ¶ 32; NYSCEF Doc No. 13, citing Gibson v SCE Grp., Inc., 391 F.Supp.3d 228, 250 [SDNY 2019] ["Because Plaintiffs have not provided any evidence of a knowing violation of § 51, and because Defendants have already removed the challenged picture, only compensatory damages are available."]). Defendant argues that Plaintiff is not entitled to compensatory damages because Plaintiff fails to plead any facts to suggest a "fair market value" for his likeness apart from its alleged adaptation in the artwork (see NYSCEF Doc No. 15, Summons and Verified Complaint; NYSCEF Doc No. 13, Mem of Law in Support, citing Gibson, 391 F.Supp.3d at 250 ["[c]ompensatory damages are the fair market value of the use for the purposes of trade of [Plaintiff's] face, name and reputation"]). Defendant further argues that Plaintiff failed to offer facts to support how he suffered "severe mental and emotional distress," making him feel as though he "needed to hide from the outside world to protect himself from the near constant bombardment of questions and comments related to the... exploitation of his image" from an inability "to generate income from creative opportunities," let alone what those opportunities were, how the painting affected them, or how much said opportunities were worth (see NYSCEF Doc No. 15, Summons and Verified Complaint ¶¶ 28, 39).
Finally, Defendant maintains that punitive damages are unwarranted considering Defendant did not" knowingly use[ ] such person's name, portrait, picture or voice in such a manner as is forbidden or declared to be unlawful by" § 51 (NYSCEF Doc No. 13, Mem of Law in Support [emphasis added]). Plaintiff's Complaint fails to state that Defendant knowingly or intentionally used an image of Plaintiff and without his authorization, points out Defendant. Defendant contends it had no reason not to believe the Artist who, in the Agreement, warranted that he had full rights to the work, that the artwork was free of any rightful claim of third parties "by way of infringement or the like," and that he had the full right, power, and authority to enter into the Agreement. (NYSCEF Doc No. 16, License Agreement, ¶ 6; NYSCEF Doc No. 13, Mem of Law in Support, citing Emanuel v Free Lance Photographers Guild, Inc, 28 Misc.2d 503, 503 [App Term, 1st Dept 1960] ["The record satisfactorily establishes that defendants sold plaintiff's photograph in good faith and in the honest belief that it was the photograph of another female, from whom they had obtained for a consideration a release to sell it, and in the absence of proof that defendants knowingly used plaintiff's portrait or picture, exemplary damages may not be awarded"]).
Plaintiff's Contentions in Opposition of the Motion
Plaintiff concedes that the Artist's use of the photo in the creation of "Slum Flower Titus" is proper under the First Amendment. However, Plaintiff claims Defendant's use of the painting for commercial purposes is impermissible as Defendant's actions were not exempted as "ancillary use" to promote exhibition of the painting. (See NYSCEF Doc No. 26, Mem of Law in Opposition, citing Hoepker v Kruger, 200 F.Supp.2d 340, 349 [SDNY 2002]; Beverly v Choices Women's Med. Ctr., Inc., 78 N.Y.2d 745, 752-753 [1991] ["The 'advertisement in disguise' caveat to the newsworthiness/public interest exception reinforces this analysis, as does the overarching statutory prohibition against unauthorized privacy invasions for 'advertising purposes.' "].) Therefore, Plaintiff contends that widespread commercial manufacture, distribution, marketing, advertising, promotion and sale of t-shirts and sweaters featuring said portrait depicting Plaintiff are not protected (see NYSCEF Doc No. 26, Mem of Law in Opposition).
Plaintiff further asserts that Defendant's documentary evidence is insufficient on its face and supports his claims for relief. First, Plaintiff argues that the unauthenticated License Agreement is not referenced in the Complaint and does not disprove any allegations of the Complaint (see NYSCEF Doc No. 15, Summons and Verified Complaint). The document is not a party-admission as Plaintiff is not a party in the Agreement and the affidavit is deficient under CPLR 3211 because no one attested that the individual that purportedly signed the Agreement on behalf of Defendant had authority to do so, contends Plaintiff (see NYSCEF Doc No. 26, Mem of Law in Opposition). Furthermore, Plaintiff argues that theAgreement, at most, may allow Defendant to pursue claims against the Artist but does not immunize Defendant from liability or evidence its lack of knowledge precluding punitive damages. Second, Plaintiff argues that the Agreement confirms Defendant's unauthorized commercial use which does not qualify for the public interest exception (see id.). In the Agreement, the Artist granted "a worldwide, exclusive right and license" to use the painting "on and in connection with [sic] the manufacture, distribution, promotion and advertisement of shopping bags given to purchasers of the t-shirts... and/or crewneck sweaters" bearing the artwork, evidencing Defendant's true goal of commercial exploitation and not the proliferation of artistic expression (see NYSCEF Doc No. 26, Mem of Law in Opposition, citing NYSCEF Doc No. 16, License Agreement). Third, Plaintiff maintains that § 51 does not place limits on equitable relief and thereby contends that a public apology is proper as the purpose of such relief is to provide aggrieved parties with a form of recovery to address wrongs that cannot be righted by monetary damages.
Discussion
"To succeed on a motion to dismiss pursuant to CPLR 3211 (a) (1), the documentary evidence that forms the basis of the defense must be such that it resolves all factual issues as a matter of law, and conclusively disposes of the plaintiff's claim.... In order to be documentary, the evidence must be unambiguous, authentic, and undeniable; thus, affidavits are not considered documentary evidence" (Summer v Severance, 85 A.D.3d 1011, 1012 [2d Dept 2011]). "On a motion to dismiss the complaint pursuant to CPLR 3211 (a) (7) for failure to state a cause of action, the court must afford the pleading a liberal construction, accept all facts as alleged in the pleading to be true, accord the plaintiff the benefit of every possible favorable inference, and determine only whether the facts as alleged fit within any cognizable legal theory" (Aviaev v Nissan Infiniti LT, 150 A.D.3d 807, 807-08 [2d Dept 2017]).
Here, Defendant fails to proffer unambiguous, authentic, and undeniable documentary evidence conclusively disposing of Plaintiff's claim pursuant to CPLR 3211 (a) (1). First, Plaintiff correctly contends that the Agreement is unauthenticated and therefore fails to meet admissibility standards under the business record exception (see CPLR 4518). Second, although Plaintiff references an accompanying affidavit, no such affidavit was submitted under Motion Sequence 2 (see IAS Rules, Part 2 Rules, Part II, Subpart B, § 19 ["Previously electronically-filed documents. Where reference is made to a previously electronically-filed document, said document must be submitted as an exhibit on the motion (see Brick&Mortar LLC v Momo Sushi Inc., 79 Misc.3d 1239 [A], 2023 NY Slip Op 50838[U] [Sup Ct, Kings County 2023]). Third, the Agreement, a contract to which Plaintiff it not a party, states in pertinent part:
6. Artist warrants and represents that: (a) each and all of the Artwork, the Commissioned Artwork and the Licensed Artwork are original; (b) neither the Artwork, the Commissioned Artwork, nor any elements of any of them, are copied from any works or designed belonging to another party; (c) each and all of the Artwork, the Commissioned Artwork and the Licensed Artwork are free of the rightful claim of third parties by way of infringement or the like... (NYSCEF Doc No. 16, License Agreement, ¶ 6).
While Defendant contends that this suggests it lacked actual or constructive notice of the photograph because it accepted the Artist's representation, the Agreement adds:
WHEREAS, Artist has created the design shown on Exhibit A, attached hereto and made a part hereof (the" Artwork "), and is the owner of all copyright and other intellectual property rights....
11. This Agreement is made pursuant to and shall be governed by and construed in accordance with the laws of the State of New York with respect to contracts, without regard to any provisions as to choice of law, and the U.S. federal and international laws with respect to copyright. (Id. ¶11.)
Though noted by neither party, such clauses leave open the question of whether Defendant followed general protocol in performing due diligence research on the Artist's work prior to registering the copyright with the U.S. Copyright Office and recording the transfer of ownership. Even if this Court determined that the Agreement was admissible evidence, this begs the question of whether Defendant had or should reasonably have had constructive notice of the photograph.
Furthermore, Defendant has failed to persuade this Court to dismiss the Complaint due to failure to state a cause of action pursuant to CPLR 3211 (a) (7).
By prohibiting the unauthorized use of a person's "name", "portrait" or "picture", [NYCRL § 50 is] designed to protect both an individual's identity and their right to publicity, with the latter representing the proprietary aspect of a person's public persona (citations omitted). To be actionable, a person's "name", "portrait" or "picture", in addition to being without written consent, must be used for "advertising" or "trade" purposes within the state of New York (Civil Rights Law 50 and 51). Only consequential, not incidental, commercial uses of a person's identity are actionable (citations omitted). Uses that are matters of public interest or protected constitutionally are also not with the ambit of the statutes.
(Champion v Take Two Interactive Software, Inc., 64 Misc.3d 530, 536 [Sup Ct, NY County 2019].)
It is settled that "any recognizable likeness, not just an actual photograph, may qualify as a 'portrait or picture.'" Allen [v. National Video, Inc] , 610 F.Supp. at 622 (citing Ali v. Playgirl, Inc., 447 F.Supp. 723, 726 (S.D.N.Y.1978)). Ali involved a composite photograph and drawing of a naked African-American man in a boxing ring, with facial features recognizable as those of Muhammad Ali. (Citation omitted). The court held that this was a portrait or picture of the former world heavyweight boxing champion. (Citation omitted) . Similarly, in Young v. Greneker Studios, 175 Misc. 1027 (N.Y.Sup.Ct. 1941), the court held that a manikin that was modeled on the plaintiff was a portrait or picture of her. (citations omitted). The court explained that "[t]he words 'picture' and 'portrait' are broad enough to include any representation [of a living person], whether by photograph, painting or sculpture." (citations omitted)). The Court further noted that "in Allen [ ] "[t]he privacy law does not prohibit one from evoking certain aspects of another's personality." (citation omitted). Indeed, [the Court] held that "[m]erely suggesting certain characteristics of the plaintiff, without literally using his or her name, portrait, or picture, is not actionable under the statute. (Citation omitted).(Burck v Mars, Inc., 571 F.Supp.2d 446, 451 [SDNY 2008].)
By Defendant's own admission both in the Agreement (see NYSCEF Doc No. 16, License Agreement) and Memorandum of Law (see NYSCEF Doc No. 13, Mem of Law in Support), the purpose of the painting was the "commercial sale of the Artwork as part of a cultural celebration and commercial endeavor" (see NYSCEF Doc No. 13, Mem of Law in Support, quoting NYSCEF Doc No. 16, License Agreement, ¶ 3, 7; Burck, 571 F.Supp.2d at 451; Champion, 64 Misc.3d at 536). Defendant's First Amendment argument also falls short as the cases offered follow dissimilar fact patterns to what is seen in the current motion. For example, Hoepker v Kruger looks at art sold in museum gift shops whereas Stephano v News Group Publications, Inc. (64 N.Y.2d 174, 185 [1984]) reviews the newsworthiness exception due to use of a model's image in an advertisement.
The terms "portrait" or "picture" used in section 51 of the Civil Rights Law are not interpreted literally and, therefore, the reach of the section is not restricted to photographs (see Binns v Vitagraph Co. of Am., 210 NY 51, 57 [1913]). Actionable images constitute "those representations which are recognizable as likenesses of the complaining individual" (Ali v Playgirl, Inc., 447 F.Supp. 723, 726 [SD NY 1978]; see also Allen v National Video, Inc. at 622 [" any recognizable likeness... may qualify as a 'portrait or picture'" (emphasis added)]). To contrast, references, suggestions or evocations of certain characteristics or aspects amounting to nothing more than personifications are not actionable under the statute (see Burck v Mars, Inc., 571 F.Supp.2d 446, 453 [SD NY 2008]; Allen v National Video, Inc.). Put another way, there must be a "close and purposeful resemblance to reality" of the claimant (Onassis v Christian Dior-N.Y., 122 Misc.2d 603, 611 [Sup Ct, NY County 1984]). Although determining whether an image qualifies as a recognizable likeness of a person is generally a jury question, the court may summarily decide the matter in an appropriate case (see Cohen v Herbal Concepts at 384).(Champion, 64 Misc.3d at 535.)
Submitted within the Complaint is a side-by-side comparison of the Festival photograph and "Slum Flower Titus," which has been cached at [insert unique URL created by the LRB] (see NYSCEF Doc No. 15, Summons and Verified Complaint). There are obvious differences between the two pieces including background design and color, durag color and design, skin tone, and choice of glasses/necklace. However, there are just as many similarities including framing of the person, how much skin is showing, placement of the durag on the subject's body, folds of the draped durag, and facial expressions. Rather than "suggesting certain characteristics of the plaintiff" (see Burck, 571 F.Supp.2d at 451), a jury would be able to determine that there is a" 'close and purposeful resemblance to reality' of the claimant" (see Champion., 64 Misc.3d at 535).
Under § 51, Plaintiff has no claim to equitable damages as Defendant removed all advertisements and sellable merchandise featuring "Slum Flower Titus" as of February 28, 2023 (see Gibson, 391 F.Supp.3d at 250). Similarly, Plaintiff also has no claim to punitive damages as Plaintiff failed to allege facts regarding "the existence of circumstances of aggravation or outrage, such as spite or malice, or a fraudulent or evil motive on the part of the defendant, or such a conscious and deliberate disregard of the interests of others that the conduct may be called willful or wanton" (Wilson v Veritas Consulting Group Inc., 2022 WL 4227145, *3 [SDNY Sept. 13, 2022, 21-CV-8318 [JPO] ["NYCRL § 51 allows for the jury, at its discretion, to award exemplary damages if the defendant 'knowingly' used a person's name, portrait, picture or voice without their consent under § 50.... To comport with the Due Process Clause, punitive damages must be tied to the amount of actual damages]). However, Plaintiff may have a claim to compensatory damages or "the fair market value of the use for the purposes of trade of [her] face, name and reputation" (Gibson, 391 F.Supp.3d at 250).
Although CPLR 3016 (b) is included by Defendant as a reason for dismissal of Plaintiff's Complaint, Defendant fails to argue this section's relation to the case at hand and is therefore denied.
Finally, Defendant submitted reply papers including new case law in support of the motion and new evidence including an affirmation by Tony Bercow, Defendant's Chief of Staff and Head of Partnerships (see NYSCEF Doc No. 31, Bercow Affirmation). These contentions and evidence in support are, therefore, not properly before the Court (see USAA Fed. Sav. Bank v Calvin, 145 A.D.3d 704, 706 [2d Dept 2016] ["The function of reply papers is to address arguments made in opposition to the position taken by the movant and not to permit the movant to introduce new arguments in support of, or new grounds or evidence for, the motion"]; All State Flooring Distributors, L.P. v MD Floors, LLC, 131 A.D.3d 834, 836 [1st Dept 2015]; Matter of Allstate Ins. Co. v Dawkins, 52 A.D.3d 826, 827 [2d Dept 2008]).
Conclusion
Accordingly, it is hereby ORFERED as follows:
Defendant Kith Retail, LLC d/b/a Kith NYC's motion to dismiss Plaintiff Darryl McPherson's Complaint pursuant to CPLR §§ 3211 (a) (1), (7) and 3016 (b) is GRANTED solely to the extent of dismissing Plaintiff's claims for equitable relief and punitive damages, and is otherwise DENIED.