Paul Rudolph Foundation, Inc. v. Paul Rudolph Heritage Foundation

Background

The Paul Rudolph Foundation (PRF) sued the Paul Rudolph Heritage Foundation (Heritage) and Ernst Wagner over alleged trademark infringement, willful copyright infringement, and related claims concerning the legacy and works of architect Paul Rudolph. PRF also sought a declaration that certain images transferred to the Library of Congress were in the public domain and that Defendants’ copyright registration covering some images was invalid.

Defendants asserted one counterclaim for copyright infringement and thirteen affirmative defenses. Their counterclaim relied on a 2019 Copyright Office registration covering 152 photographs. Defendants alleged that PRF had infringed those copyrights by posting images on its online platforms, identifying two examples: an image of the Parcells Residence and an image of the Green Residence.

Dismissal of the Counterclaim

The court applied the standard for a motion to dismiss for failure to state a claim. A copyright-infringement claim must identify the specific works at issue, allege ownership, allege registration, and state what acts of infringement occurred and when.

The court held that Defendants had identified only the two photographs shown in their exhibits. Their broader allegations about unspecified images did not adequately identify the works, conduct, or timing involved. The court therefore limited the counterclaim to the two identified images.

As to the Parcells Residence image, the court took judicial notice of Library of Congress records showing that the image had been selected for the Paul Rudolph Collection. The court held that the image was in the public domain, meaning that no one owned an enforceable copyright in it. Defendants’ attempt to register a copyright in that image therefore did not create copyright ownership, and the counterclaim was dismissed to the extent it relied on that image.

As to the Green Residence image, the court found that Defendants’ allegations were internally inconsistent. Defendants alleged that the 152 photographs were works made for hire and also alleged that they were photographs taken by Rudolph. Under the court’s explanation of copyright law, ownership of a work made for hire ordinarily belongs to the person who hired the creator, not the creator. If the Green Residence image was such a work, Rudolph could not have transferred its copyright to Wagner through Rudolph’s estate. The court therefore concluded that Defendants had not adequately pleaded ownership and dismissed the counterclaim as to that image as well.

The court granted PRF’s motion to dismiss the amended counterclaim. The conclusion states that the amended counterclaim was dismissed with prejudice.

Motion to Strike Affirmative Defenses

PRF moved to strike the Second, Third, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, and Eleventh affirmative defenses. The court granted the motion as to the Second, Fifth, Eighth, and Eleventh Defenses because Defendants provided no factual allegations supporting them.

The court struck the Third Defense, which asserted fair use, because fair use does not defend against PRF’s claim seeking a declaration about ownership and public-domain status. It struck the Fourth and Seventh Defenses, which concerned authorization and licensing, because Defendants pleaded no supporting facts and instead alleged that their posting of the Balle Photograph was a mistake.

The court also struck the Sixth Defense, which asserted laches and waiver against PRF’s trademark claim. Defendants alleged only that PRF knew of Heritage for five years before filing suit. They did not allege facts showing prejudice from delay or facts showing that PRF intentionally relinquished a known right.

The court denied the motion as to the Ninth Defense, which asserted unclean hands. Although the court was not confident that Defendants could prove the defense, it considered the defense fact-specific and declined to strike it at that stage.

The conclusion states that the motion to strike was granted in part and denied in part. The Second, Third, Fourth, Fifth, Sixth, Seventh, Eighth, and Eleventh Defenses were dismissed with prejudice; the motion was denied as to the Ninth Defense.

Request to Amend

Defendants requested permission to amend their counterclaim and affirmative defenses again. The court denied that request because Defendants did not provide a proposed amended pleading, preventing the court from evaluating the proposed changes. The court also stated that Defendants had already had sufficient opportunities to investigate and plead their claims and defenses.

Result

Judge Colleen McMahon granted PRF’s motion to dismiss the amended counterclaim, with the counterclaim dismissed with prejudice. She granted in part and denied in part PRF’s motion to strike, dismissed the specified affirmative defenses with prejudice, left the Ninth Defense in place, and denied further leave to amend.