Case 1:02-cv-02290-PLF Document 53 Filed 07/19/05 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
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`Civil Action No. 02-2290 (PLF)
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`__________________________________________
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`GARY D. LILLEY,
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`Plaintiff,
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`v.
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`RENEE STOUT,
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`Defendant.
`__________________________________________)
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`MEMORANDUM OPINION
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`This case arises from a disputed collaboration between the two named parties in
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`the production of a work of art. Plaintiff Gary Lilley, a photographer, claims that photographs he
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`produced were incorporated without proper attribution into an artwork, “Red Room at Five,”
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`created by defendant Renee Stout. Lilley claims that Stout’s acts constituted a violation of his
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`rights under the Visual Artists Rights Act of 1990 (“VARA”), Pub.L. No. 101-650 (tit. VI), 104
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`Stat. 5089, 5128-33 (codified in various sections of Title 17 of the United States Code), the
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`Copyright Act, 17 U.S.C. § 101 et seq., and the Lanham Act, 15 U.S.C. § 1501 et seq. He also
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`makes claims for breach of contract and unjust enrichment. Stout has moved to dismiss the
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`VARA and the Copyright Act claims for failure to state a claim. By order of March 31, 2005, the
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`Court granted Stout’s motion to dismiss with respect to the VARA claim but denied the motion
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`with respect to the Copyright Act claim. This Opinion explains the Court’s March 31 Order.
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`I. BACKGROUND
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`Plaintiff Gary Lilley is a “photographer [who] has been taking photographs since
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`at least 1992.” Second Amended Complaint (“Second Am. Compl.”) at ¶ 7. From 1993 to mid-
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`2000, he and defendant Renee Stout, who is also an artist, “collaborated on several projects.” Id.
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`at ¶¶ 9-10. For an unspecified period of time during that period, they also were “involved in a
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`Case 1:02-cv-02290-PLF Document 53 Filed 07/19/05 Page 2 of 9
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`personal relationship,” id. at ¶ 10, the failure of which has led, at least in part, to this dispute.
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`See id. at Exh. D.
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`In the summer of 1998, Stout asked Lilley to “take some photographs at a friend’s
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`home . . . as studies for paintings [Stout] planned to create.” Second Am. Compl. at ¶ 12. At the
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`friend’s home, Lilley photographed a “red” room using his own camera and choosing the subject
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`matter of each photograph. Id. After the photographs were developed, Stout “reviewed [them]
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`with [Lilley] and discussed which frames would make good studies” for her paintings. Id. at
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`¶ 13. After this review session, Lilley allowed Stout to keep the photographic prints and
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`negatives so that she could finalize her project. Id. at ¶¶ 13, 15.
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`Stout created one painting from the photographs and decided to use the
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`photographs themselves as part of an artwork. Second Am. Compl. at ¶¶ 14-16. This resulting
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`work, entitled “Red Room at Five,” is central to the parties’ dispute. Lilley claims that he agreed
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`to allow Stout to use the photographs of the “red” room provided that he “receive a complete
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`copy of the artwork and proper attribution for the photographs.” Id. at ¶ 16. Stout agreed to
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`these terms and later gave Lilley a copy of the work. Id. at ¶ 17.
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`“Red Room at Five” consists of six of Lilley’s photographs that had been
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`“selected and arranged by [Stout] and placed in a binder with a red cover and illustration.”
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`Second Am. Compl. at ¶ 17. When Lilley received the work, it did not include a colophon, “a
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`notice that accompanies a work and provides information relating to the publication and
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`authorship.” Id. Lilley subsequently requested a copy of the colophon but was told it was
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`incomplete. Id. at ¶ 18. The personal relationship between the parties ended in August 2000, and
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`Lilley continued to request copies of the colophon to no avail. Id. at ¶¶ 19-20. Finally, in April
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`2001, Lilley received a draft colophon that stated: “Photographs by the artist and by Gary Lilley
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`at the direction of the artist.” Id. at ¶¶ 21-22. Lilley contends that the language of the colophon
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`amounts to improper attribution of his “work[s] of visual art” under VARA. Id. at ¶ 39. In
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`addition, Lilley claims that Stout is selling both “Red Room at Five” and individual photographs
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`taken by Lilley as her own works, thereby violating the Copyright Act. Id. at ¶¶ 29, 33.
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`II. DISCUSSION
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`On a motion to dismiss for failure to state a claim under Rule 12(b)(6) of the
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`Federal Rules of Civil Procedure, the Court assumes the truth of the facts alleged and may grant
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`the motion only if it appears that plaintiff will be unable to prove any set of facts that would
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`justify relief. See Summit Health, Ltd. v. Pinhas, 500 U.S. 322, 325 (1991); Conley v. Gibson,
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`355 U.S. 41, 45-46 (1957); Browning v. Clinton, 292 F.3d 235, 242 (D.C. Cir. 2002); Sparrow v.
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`United Air Lines, Inc., 216 F.3d 1111, 1117 (D.C. Cir. 2000). The complaint “is construed
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`liberally in the [plaintiff’s] favor, and [the Court should] grant plaintiff[] the benefit of all
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`inferences that can be derived from the facts alleged.” Kowal v. MCI Communications Corp.,
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`16 F.3d 1271, 1276 (D.C. Cir. 1994); see Razzoli v. Fed. Bureau of Prisons, 230 F.3d 371, 374
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`(D.C. Cir. 2000); Taylor v. FDIC, 132 F.3d 753, 761 (D.C. Cir. 1997); Harris v. Ladner, 127 F.3d
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`1121, 1123 (D.C. Cir. 1997). While the complaint is to be construed liberally in plaintiff’s favor,
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`the Court need not accept inferences drawn by the plaintiff if those inferences are unsupported by
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`facts alleged in the complaint; nor must the Court accept plaintiff’s legal conclusions. See
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`Kowal v. MCI Communications Corp., 16 F.3d at 1276.
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`A. Visual Artists Rights Act of 1990
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`Plaintiff has alleged a claim under the Visual Artists Rights Act of 1990
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`(“VARA”). Congress enacted VARA to “protect[] both the reputations of certain visual artists
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`and the works of art they create.” H.R. Rep No. 101-514, at 7, reprinted in 1990 U.S.C.C.A.N.
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`6915 (“House Report”). These protections are enumerated in the individual rights of
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`“attribution” and “integrity,” known collectively as “moral rights.” Id. As described in the
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`House Report accompanying the legislation, “[t]he former ensures that artists are correctly
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`identified with the works of art they create, and that they are not identified with works created by
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`others. The latter allows artists to protect their works against modifications and destructions that
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`are prejudicial to their honors or reputations.” Id. Specifically, the rights of attribution include
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`the right to (a) claim authorship of a work he or she created, and (b) prevent the use of one’s
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`name as the author of a work that he or she did not create. See 17 U.S.C. § 106A(a)(1)-(2). The
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`rights of integrity permit an author to (a) prevent any intentional distortion, mutilation, or other
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`modification of his or her work, and (b) prevent any destruction of a work of recognized stature.
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`See 17 U.S.C. § 106A(a)(3).
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`As “moral rights” legislation, VARA vested immutable rights in an author that
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`generally could not be assigned or transferred, see 17 U.S.C. § 106A(e), and that are
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`“independent of the exclusive rights provided in [Section] 106.” Id. Thus, ownership of the
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`copyright in a work is irrelevant to an author’s standing to bring a VARA claim. Indeed, even if
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`an author wishes to waive his or her rights under VARA, such a waiver can be effected only by a
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`written instrument signed by the author that specifically identifies the work and the specific uses
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`of that work. See 17 U.S.C. § 106A(e).
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`Absent this waiver, a court must consider whether the artistic work qualifies as a
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`“work of visual art.” Recognizing the broad scope of protections afforded to eligible authors,
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`Congress created a tightly circumscribed definition for qualified works. See House Report at
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`6920 (noting that the Congressional hearings “revealed a consensus that the bill’s scope should
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`be limited to certain carefully defined types of works and artists”). Thus, VARA established a
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`new and distinct genus of art: “work[s] of visual art,” which differs in many respects from the
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`pre-existing categories in Section 102(a) of the Copyright Act. See 3-8D NIMMER ON
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`COPYRIGHT § 8D.06(A)(1) (2004).
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`For a photographic work to qualify for protection as a “work of visual art” under
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`VARA, it must meet the statutory definition: “a still photographic image produced for exhibition
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`purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200
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`copies or fewer that are signed and consecutively numbered by the author.” 17 U.S.C. § 101. 1
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`The Court concludes that the statutory term “still photographic image” in Section 101 has a plain
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`and unambiguous meaning. It is clear from a plain reading of the statute and the specific context
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`in which the language is used that both photographic prints and negatives qualify as “still
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`photographic image[s]” and that both therefore are eligible for protection as “work[s] of visual
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`art” under VARA. See House Report at 6921 (definition of a “still photographic image”
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`encompasses a wide range of artistic works, including “positives (for example, prints, contact
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`sheets, and transparencies such as slides) and negatives (negative photographic images or
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`transparent material used for printing positives) of a photograph.” See also Flack v. Friends of
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`Queen Catherine Inc., 139 F.Supp.2d at 526, 534 (S.D.N.Y. 2001) (citing House Report 101-514
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`to support the assertion that “even certain photographic negatives are covered” by VARA).
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`In addition to demonstrating that photographs or negatives are “works of visual
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`art,” a plaintiff to succeed under VARA also must satisfy the remaining statutory requirements
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`under the Visual Artists Rights Act: intent to exhibit, uniqueness, and signing. See 17 U.S.C.
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`§ 101. Defendant argues that plaintiff’s complaint fails to make a sufficient intent to exhibit
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`allegation under the statute -- that is, that his prints or negatives were “produced for exhibition
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`purposes only” -- or that the prints and negatives in question have been “signed by the author.”
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`See Defendant’s Memorandum in Support of Motion to Dismiss at 11-13. According to the
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`defendant, plaintiff’s claim that the photographs at issue were taken “as studies for paintings
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`defendant planned to create” is sufficient to demonstrate that they fall outside the relevant
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`definition of a “work of visual art.” Id. at 13-14. Plaintiff replies that he has averred the facts
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`The extent of VARA coverage for photographic images appears to be a question of first
`mpression. While previous courts have addressed sculpture, see Carter v. Helmsley-Spear, Inc.,
`71 F.3d 77 (2d Cir. 1995), murals, see Pollara v. Seymour, 150 F.Supp.2d 393 (N.D.N.Y. 2001),
`and public art, see Martin v. City of Indianapolis, 192 F.3d 608 (7th. Cir. 1999), it appears that
`none squarely addressed photographic works outside of the mass media context. See, e.g.,
`Berrios Nogueras v. Home Depot, 330 F.Supp.2d 48 (D. P.R. 2004) (considering the use of
`photographic reproductions in publicity brochures).
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`necessary to demonstrate the proper intent to exhibit and that “community standards” should be
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`applied to the signing requirement. See Plaintiff’s Opposition Memorandum at 9-13.2
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`The question of intent to exhibit is especially challenging in the realm of
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`photography. While it may appear simple to distinguish between an amateur photographer taking
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`snapshots on vacation and an artist producing photographs “for exhibition only,” few artists
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`would characterize their work as the latter. Indeed, many notable “fine art” photographers
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`pursued their work in quite utilitarian contexts. See Jennifer T. Olsson, Note: Rights in Fine Art
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`Photography: Through a Lens Darkly, 70 TEX. L. REV. 1489, 1499-1500 (1992) (“Eugune
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`Atget’s revered photographs of a vanishing Paris were initially made as reference documents for
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`painters to copy. Weegee photographed crime scenes in the service of photojournalism. . . .
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`August Sander’s self imposed mission was to create a virtual catalog of the German people.”)
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`The technical realities of photography also complicate the question. At least three
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`distinct phases comprise the photographic process that results in a positive print: practical camera
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`handling, negative development, and printing. See, e.g., 25 THE NEW ENCYCLOPÆDIA
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`BRITANNICA 782-89 (15th ed. 1998) (explaining the photographic process). As discussed above,
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`both photographic negatives and prints fit the definition of a “still photographic image.” Thus, in
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`the course of creating her art, a photographer almost always will create two images, first a
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`negative and then a print, for which VARA protection may be justified. As plaintiff Lilley notes,
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`the term “for exhibition purposes only” cannot be limited to the author’s “purpose” at the
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`moment she clicks the camera’s shutter. If that were the case, then only the photographic
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`negative would ever be protected, as its production and purpose were contemporaneous with the
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`click of the shutter. Instead, it seems more reasonable that the intent or purpose of the author be
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`examined as of the time the unique work in question is “produced.”3
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`Because of its conclusion regarding the intent to exhibit requirement, the Court need not
`each plaintiff’s “community standards” argument.
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`It may be relevant here that the statute does not use the word “created,” which has a
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`pecific statutory definition, but instead uses the word “produced,” which is undefined. The
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`This method of analysis comports with the uncertain time frame expressed in the
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`term “produced” in Section 101 and responds to the reality that a negative “produced” in one
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`instant and a print “produced” in another may correspond to different intentions or purposes of
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`the author. While courts have expounded on how the process of practical camera handling
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`“imbue[s] the medium with almost limitless creative potential,” SHL Imaging, Inc. v. Artisan
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`House, Inc., 117 F.Supp.2d 301, 310 (S.D.N.Y., 2000), few opportunities have arisen for courts
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`to explore the opportunity for creativity in the process of developing negatives or producing
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`prints. As many professional photographers and artists recognize, however, the process of
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`producing a print from a negative contains room for originality. Thus, plaintiff Lilley’s intent
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`when clicking the shutter of his camera and creating the negatives is irrelevant to his claim. His
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`probably different purpose in developing the negatives to produce the prints is the real issue.
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`Were they “produced for exhibition purposes only”?
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`Plaintiff’s case presents a good example of the potential for the fact that a single
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`work of visual art may be created for a variety of purposes. As a result, it may be difficult to
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`assign a specific intent. Plaintiff Lilley admits that the photographs were taken to serve “as
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`studies for paintings defendant [Stout] planned to create.” Second Am. Compl. at ¶ 11. Contrary
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`to defendant’s assertion, VARA does not pose a per se bar to protection for preparatory works,
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`such as studies. See, e.g., Flack v. Friends of Queen Catherine Inc., 139 F.Supp.2d 526 at 533
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`(holding that a clay model, which was part of a larger, unfinished bonze sculpture, qualified as a
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`“work of visual art.”) In addition, it may be fair to infer from the facts plaintiff alleges -- at least
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`on a motion to dismiss for failure to state a claim -- that, when taking the photographs of the
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`“red” room, Lilley intended to exhibit the resulting prints. This inference could be drawn from
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`plaintiff’s artistic background, past experience as a photographer, and previous collaboration
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`with the defendant to create art for exhibition. While these inferences might be relevant if the
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`statutory language speaks of "a still photographic image produced for exhibition purposes only."
`17 U.S.C. § 101 (2). “Created” occurs when a work is “fixed in a copy or phonorecord for the
`first time.” Id. at § 101.
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`Case 1:02-cv-02290-PLF Document 53 Filed 07/19/05 Page 8 of 9
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`issue before the Court related to the negatives Lilley produced, the circumstances of the
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`photographic prints can be resolved more easily.
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`Plaintiff’s own assertions demonstrate quite clearly that the discrete photographic
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`prints at issue were not “produced for exhibition purposes only.” 17 U.S.C. § 101 (emphasis
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`added). His complaint states that once the photographs were developed, he and the defendant
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`“reviewed the photographs . . . and discussed which frames would make good studies for a series
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`of paintings.” Second Am. Compl. at ¶ 13. The photographic prints at issue -- those that were
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`“reviewed” with defendant and comprise “Red Room at Five” -- therefore were not “produced
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`for exhibition purposes only.” Rather, they had the primary purpose of assisting defendant Stout
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`in her artistic endeavor. Indeed, the only suggestion that plaintiff had any alternative motivation
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`for producing the images comes from a statement in his opposition to the motion that he “alleged
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`that the photographs were intended for ‘exhibition purposes only.’” See Plaintiff’s Opposition to
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`Defendant’s Renewed Motion to Dismiss at 12. This statement, however, appears nowhere in
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`plaintiff’s amended complaint. As a result, under the "well-pleaded complaint rule", it is not an
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`allegation that has been pled and may someday be proved at trial. Bush v. Clark Const. &
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`Concrete Corp. 267 F.Supp. 2d. 43, 45 (D.D.C. 2003) (citing Caterpillar, Inc. v. Williams, 482
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`U.S. 386, 392 (1987)).
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`But even if the claim had been pled in the complaint, it is belied by plaintiff’s acts
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`of reviewing the photographs with defendant and turning over possession to her. It is difficult to
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`conceive how plaintiff could have exhibited these prints once they were incorporated into “Red
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`Room at Five.” Because plaintiff’s own assertions demonstrate that the discrete photographs at
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`issue were not produced solely for exhibition purposes, his photographic prints fail to satisfy the
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`definition of “work[s] of visual art” in Section 101, and his amended complaint thus fails to state
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`a claim under VARA. Defendant’s motion to dismiss plaintiff’s complaint for failure to state a
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`claim therefore must be granted.5
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`B. Remaining Claims
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`With respect to plaintiff’s remaining claims under the Copyright Act, the Court
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`cannot conclude that plaintiff will be unable to present any set of facts entitling him to relief.
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`The complaint, though lacking in detail, alleges sufficient facts to make out a prima facie case on
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`these claims. Accordingly, defendant’s motion to dismiss plaintiff’s claim under the Copyright
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`Act is denied.
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`An Order consistent with this Opinion, dismissing Count II of the Amended
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`Complaint (the VARA claim) and denying the motion to dismiss Count I (copyright
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`infringement), was issued on March 31, 2005.
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`SO ORDERED.
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`/s/_______________________
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`PAUL L. FRIEDMAN
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`DATE: July 19, 2005 United States District Judge
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`Contrary to plaintiff’s assertion, the status of his negatives cannot redeem the failure
`f the photographic prints to fulfill the statutory requirements of VARA. As discussed above,
`plaintiff’s claim that the negatives fall under the definition of a “still photographic image” is
`valid, but his subsequent contention that any “prints made from those negatives” are also covered
`merely because the negatives are covered is implausible. Otherwise, one could avoid the specific
`intent requirement (not to mention the signing and numbering requirement) for all still
`photographic images -- regardless of the number of prints subsequently produced -- merely by
`claiming VARA protection in the photographic negative from which the numerous prints were
`made. While the actual negative might be protected under VARA, its status is irrelevant to prints
`subsequently produced from it. “[T]he existence of rights under VARA depends on precisely
`these distinctions between an original artwork and various reproductions of it.” Silberman v.
`Innovation Luggage, Inc., 67 U.S.P.Q.2d 1489, 1494 (S.D.N.Y., 2003). It is the original or
`limited edition still photographic image, whether in print or negative form, that garners the rights
`VARA bestows. See House Report at 6921.
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`While, in view of this conclusion, it is not necessary to discuss the signing requirement of
`he statute, it does not appear from anything in the record that plaintiff’s original photographs
`were signed by him. See Defendants’ Joint Opposition to Plaintiff’s Motion to Amend
`Complaint at 7 (“Plaintiff utterly confuses his original photographs, which he never signed, with
`“Red Room at Five,” which is a work completed by Ms. Stout, using altered copies of Plaintiff’s
`alleged photographs, and signed by her.”) (emphasis in original).
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