Watson v. Compagnie Financiere Richemont SA

Background

Albert Watson, a professional photographer who resides in New York, alleged that he owns a copyrighted photograph created in 1992. The image depicts a celebrity superimposed over a leopard and was registered with the United States Copyright Office in 1994. Watson alleged that he allowed the photograph to be displayed at the St. Moritz Arts Masters festival in Switzerland but rejected requests to use it commercially.

Watson alleged that Compagnie Financiere Richemont SA, Richemont North America Inc., and Richemont International S.A. copied the photograph and used it, along with Watson’s name and image and the Cartier logo, in a print advertisement. The advertisement appeared on the back cover of Ideabooks magazine from February 2017 through the summer of 2017. The proposed second amended complaint alleged that issues containing the advertisement were circulated in the United States, including New York, and that digital copies were emailed and made available online to readers in the United States.

The operative amended complaint asserted copyright infringement and claims under Sections 50 and 51 of the New York Civil Rights Law. Richemont International S.A. was not yet a defendant. Watson sought permission to file a second amended complaint adding it and asserting direct, contributory, and vicarious copyright infringement claims and New York Civil Rights Law claims against it. Compagnie Financiere Richemont SA and Richemont North America Inc. moved to dismiss the existing claims for failure to state a claim.

Motion to Amend

The court rejected the defendants’ argument that Watson had waited too long to add Richemont International S.A. The court found that jurisdictional discovery produced significant additional information about Richemont International S.A.’s status as an operating subsidiary and that Watson had not unduly delayed seeking amendment. The court also found no showing of bad faith or unfair prejudice.

The court analyzed whether the proposed claims were futile. A proposed amendment is futile when the new claim could not survive a motion to dismiss.

Direct copyright infringement. The court held that the proposed second amended complaint did not adequately allege that Richemont International S.A., or the other defendants, engaged in infringing activity in the United States. The complaint did not allege that Richemont International S.A. created or placed the advertisement in the magazine in the United States, nor did it adequately allege that Richemont International S.A. was responsible for publishing or distributing the magazine there. The court therefore found the proposed direct copyright infringement claim against Richemont International S.A. futile.

Contributory copyright infringement. The court concluded that the proposed complaint adequately stated this claim against Richemont International S.A. It alleged that Richemont International S.A. caused Ideabooks, or the entity publishing and distributing it, to run the advertisement and that Richemont International S.A. knew or should have known the advertisement would appear in the United States.

Vicarious copyright infringement. The court concluded that Watson adequately alleged this claim. The proposed complaint alleged that the defendants created the advertisement, had the legal and practical ability to stop or limit the infringing conduct, and profited from the advertisement while declining to exercise that ability.

New York Civil Rights Law claims. The court concluded that Watson adequately alleged that the defendants used his name and image in an advertisement, without consent, in New York. The court rejected the defendants’ argument that the statute required them to have placed the advertisement in New York. The court also found that the claims against Richemont International S.A. could relate back to the original complaint because Richemont International S.A.’s role and involvement were not known to Watson when he filed the original complaint, and the circumstances supported a finding that it knew or should have known it would have been named but for that mistake.

Motion to Dismiss

The court granted the motion to dismiss the direct copyright infringement claims against Compagnie Financiere Richemont SA and Richemont North America Inc. The court held that neither the amended complaint nor the proposed second amended complaint adequately alleged that those defendants were responsible for publishing or distributing Ideabooks in the United States.

The court denied the motion to dismiss the contributory and vicarious copyright infringement claims against Compagnie Financiere Richemont SA and Richemont North America Inc. It also denied the motion as to the New York Civil Rights Law claims against those defendants.

Disposition

Judge Paul G. Gardephe granted Watson’s motion to amend in part and denied it in part. Watson was permitted to file a second amended complaint adding Richemont International S.A. as a defendant and asserting contributory and vicarious copyright infringement claims and New York Civil Rights Law claims against it. The amendment motion was otherwise denied. The court granted the defendants’ motion to dismiss in part as to the direct copyright infringement claims against Compagnie Financiere Richemont SA and Richemont North America Inc., and otherwise denied it. The order directed Watson to file the second amended complaint by August 31, 2020.