Restellini v. The Wildenstein Plattner Institute, Inc.

Background

Marc Restellini sued The Wildenstein Plattner Institute, Inc. (WPI) and Fonds Wildenstein Plattner Institute France over WPI’s digitization of materials connected to a planned catalogue of Amedeo Modigliani’s works. WPI asserted amended counterclaims against Restellini and Institut Restellini SAS — Documentation Centre (the counterclaim defendants), alleging copyright infringement and false advertising under section 43(a)(1) of the Lanham Act.

The dispute concerned research materials that WPI called the “Modigliani Material.” WPI alleged that the material consisted of research and other materials assembled and analyzed by employees of the Wildenstein Institute during its collaboration with Restellini. WPI also challenged a statement on the Institut’s website saying that the Modigliani catalogue had been transferred to the Institut and would be continued using new methods.

Copyright Counterclaim

The counterclaim defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether the pleading states a legally sufficient claim. The court held that a copyright plaintiff must identify the specific original works involved, ownership of the copyrights, registration when required, and the acts and time period of the alleged infringement. At the pleading stage, a plaintiff need not identify every allegedly infringed element or every individual work in a subset, but must provide an exhaustive list or concrete representative examples.

The court concluded that WPI’s description of the “Modigliani Material” was too vague. WPI referred generally to research materials, provenance materials, dossiers, publications, archival photographs, and information gathered about Modigliani’s works. But it did not identify the individual works merged into the alleged collective work, provide representative examples, or specify the form of the ultimate work product. Without that information, the court could not evaluate the remaining elements of the copyright claim. The court therefore granted the counterclaim defendants’ motion to dismiss the copyright counterclaim.

False-Advertising Counterclaim

WPI alleged that the Institut’s website statement falsely suggested that the materials needed for the Modigliani catalogue had been legally transferred to the Institut. The court found that the statement was not literally false because it did not mention the Modigliani Material and could reasonably be understood as referring to the transfer of labor on the catalogue rather than intellectual-property rights. The court nevertheless found that WPI plausibly alleged implied falsity: the statement could mislead consumers, and WPI alleged that the Institut knew of the misleading implication and used the statement for commercial purposes.

The court then addressed materiality, meaning whether the alleged misrepresentation concerned the nature, characteristics, or qualities of the goods or services and was likely to affect purchasing decisions. Relying on the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., the court held that the alleged misrepresentation concerned ownership, authorship, or rights to use information—not the nature or qualities of a physical product or service. Those issues sound in copyright and are not actionable under the Lanham Act’s false-advertising provision. Because the statement was not material, the court did not examine the other elements of the false-advertising claim and granted the Institut’s motion to dismiss that claim.

Disposition

Judge Analisa Torres concluded that the counterclaim defendants’ motion to dismiss was granted. The order also directed the Clerk of Court to terminate the motion at docket entry 66.