USDC S.D. New York, August 1, 2008
Plaintiff Richard Feiner and Co. filed suit against the New York Times and others for copyright infringement, false designation of origin under the Lanham Act and common law unfair competition arising out of the New York Times’ publication of a still image from a Laurel & Hardy motion picture. Hal Roach Studios, which was not a party to this action, had a valid registration in the motion picture, and had previously assigned to plaintiff the exclusive rights to utilize the still photographs and other elements of Laurel & Hardy’s motion picture photoplays. The defendants moved to dismiss the complaint, arguing that the plaintiff lacked standing to bring the copyright claim because the assignment from Hal Roach Studios failed to evidence a transfer of any copyrights in the photograph at issue, and that the complaint failed to state a cause of action for false designation of origin or unfair competition.
The court denied the motion to dismiss the copyright claim, holding that the plaintiff, as assignee of the rights to exploit the still images from Laurel & Hardy motion pictures, had standing to bring the claim. The court found that the legal or beneficial owner of an exclusive right under a copyright has standing to sue, whether the original copyright owner, its assignee or exclusive licensee, and that “[b]y its terms, 17 U.S.C. 411(a) requires only that a copyright be registered; it does not require that the plaintiff be the party who caused the registration to occur.” On the Lanham Act claim, the court granted the motion to dismiss, holding that the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp. foreclosed claims for failure to attribute credit. The court likewise dismissed the unfair competition claim as substantially congruent to the Lanham Act claim and otherwise preempted by the Copyright Act.