Page 3
168 F.3d 861,*; 2004 U.S. App. EASTLAW 3254,**;
69 U.S.P.Q.2D (BNA) 1234; Copy. L. Rep. (CCH) P23,4567

    the entire process-painting, illustration, and anonymous entry into juried show-as a critique of modern art.. Some inspired mimicry may appear to be the work of the mimicked artist. The works of Dutch artists Theo Van Doesburg and Piet Mondrian circa 1917-1930 have what seem to be identical elements-the artists apparently differed over the use of diagonal lines. 19th century, Philadelphia trompe l'oeil artists and friends William Harnett and John Peto painted in styles likely indistinguishable to the untrained eye.

      Kostabi asserts that the Dali signature in the Kostabi Dalis is intended to be a credible reproduction of the original, and instructed his employees to produce such reproductions. The two artists painting the Dali signatures worked from photographs of Dali's signature, some of which were taken at local New York museums (possibly in violation of museum rules). Uncontested evidence indicates that several versions of the Kostabi Dalis were rejected by the artist, at least one because of the inaccuracy of the signature.

      Beginning in April 1999, media coverage of the Kostabi Dalis was sufficient to provide notice to representatives of the Foundation of the existence of the works. At least one specimen of a repropduction was viewable at art dealer Arthur Fromme's Barater International website, A representative of the Foundation contacted Mark Kostabi and two dealers identified as sellers of the Kostabi Dalis or their reproductions, asking that they cease selling the works, few of which had been yet sold. Media coverage of the dispute between the Foundation and Kostabi apparently inspired sales. The dispute ultimately resulted in this action in the District Court. On cross-motions for summary judgment, the District Court granted Kostabi's motion, ruling that the undisputed facts demonstrated that Kostabi was entitled to the defense of fair use.


      The Foundation contends that the District Court erred in granting Kostabi's motion for summary judgment and should have granted partial summary judgment, as to liability, in their favor. The parties disagree over numerous factual issues; they additionally disagree over whether this is a case of copyr right, trademark, or trade use infringement at all, and over the availability of the fair use defense if the Kostabi Dalis are determined infringe. Kostabi argues that the works constitute both parody and serious artistic works in their own right, and

should be evaluated under the standards set forth in Campbell for determining whether parodic uses are "fair." The Foundation argues that the works works in no way alter the original, and in fact replicate a trademark rather than a work. It contends that the necessity for context to understand the point leaves so great an opportunity for initial confusion that the works should fail the fair use test. It further contends that the lack of artistic achievement in the works and the resulting sales, which were greater than previous Kostabi works, cast the use as primarily commercial, further for failure under the fair use test.

I. Standing

      Defendant argues that the plaintiff is the assignor of the intellectual property rights allegedly infringed, and thus lacks standing to bring suit properly brought by the assignees Robert Descharnes and the holding company Damart. The plaintiff acknowledges the agreement, made during Salvador Dali's lifetime, under which Descharnes was charged with administration of the reproduction rights of Dali's work through the year 2004, with the proceeds to benefit the Foundation. In essence, the Foundation licenses the intellectual property rights to Dali name, trademark, and art to Damart.

      Plaintiff has long sought to terminate the agreement for the alleged failure of the licensee to protect these rights. Plaintiff asserts harm resulting from defendant's work, and seeks to protect the intellectual property rights licensed to Damart, as well as the rights retained by plaintiff to market Dali's fine art works, as well as to protect the Dali name from defamation.

      It is noteworthy that the licensing agreement will expire this year, with the rights reverting to the Foundation. It is also noteworthy that the assignee is charged with working for the benefit of the assignor. 17 U.S.C. 501(b) states that "[t]he legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it." Nothing specifically forbids an assignee's standing where it has an assigned interest to protect, but as the Foundation is the beneficiary of the agreement, it has an economic interest that gives it standing. See Morris v. Business Concept Inc., 2000 U.S. Dist. LEXIS 3835, 54 U.S.P.Q.2D (BNA) 1561 (S.D.N.Y. 2000); Marina B. Creation, S.A. v. De Maurier, 685 F. Supp. 910 (S.D.N.Y. 1988). Further, it is not clear that Dali had the legal right to assign his moral rights during his lifetime, and thus the assignment to Damart may not

next page