U.S. District Judge Paul Engelmayer of the Southern District of New York recently entered an opinion and order in a copyright case involving the famed “Last Sitting” photographs of American movie star Marilyn Monroe. Although the case will continue to proceed towards a trial, Judge Engelmayer resolved various issues in the case including a determination that the owner of the copyrights to the Last Sitting photographs is the trust of the now-deceased photographer who took the photos and not Condé Nast, the publisher of the magazine Vogue where the photographs first appeared in 1962.

This case revolves around the sale of modified and unmodified Last Sitting photographs by Lisa and Lynette Lavender, twin sisters who began working in 2002 for Bert Stern, the photographer who captured the 2,751 images of Marilyn Monroe which are known as the Last Sitting photos. Stern captured the images over the course of three photo shoots with Monroe in 1962 with the intent that the photos would be published in Vogue. Starting in 2010, Stern approved of the Lavender’s creation of jeweled prints of Last Sitting photos and the prints were sold under an agreement that split the profits 50-50 between Stern and the Lavenders. The Lavenders then sold both jeweled and unmodified prints online through eBay and Amazon and, while Stern was aware of these sales and did not pursue legal action up to his death in 2013, the widow of Bert Stern filed suit against the Lavenders over these sales in December 2016.

The Lavenders argued that the photographs were “works for hire” produced for Condé Nast, using Stern’s first-person account of the photo shoots from the 1982 book The Last Sitting, which was the sole piece of evidence entered by the Lavenders to argue that Condé Nast was the owner of the copyrights to these images. Stern had registered copyrights for 100 of the photos in 1982 and then all of the photos in the collection in 2013 while Condé Nast had never pursued an ownership claim and repeatedly obtained licenses from Stern to republish the works. Despite this, the Lavenders argued that the photos were created at Condé Nast’s “instance and expense” making them works for hire under the 1909 Copyright Act.

In analyzing the Lavenders’ work for hire claim, which would render Condé Nast as the only entity capable of pursuing copyright claims against them, Judge Engelmayer noted that Stern’s copyright registrations gave rise to a rebuttable presumption of his ownership of copyright to the photos. By focusing only on the second and third photo sessions with Monroe, which Stern’s written account notes were arranged at Vogue’s request and involved certain expenses for Vogue, “ one can extract aspects of Stern’s narrative to support a work-for-hire theory,” Judge Engelmayer wrote. However, in analyzing the “instance” element, Stern’s narrative shows that the idea to photograph Monroe was his, not Vogue’s. As for the “expense” element, the record is inconclusive as to which party purchased champagne for the second shoot and Stern noted that the photos were developed in his own darkroom.

Further, although Stern’s narrative concedes that there was a contract between Vogue and himself for producing photographs for publication, there was nothing conclusive offered regarding whether that agreement reserved copyright to either Vogue or Stern. “Under these circumstances, assigning dispositive significance to Stern’s narrative would accent an historical accident: that, today, 56 years after the events at issue, Stern’s account alone survives,” Judge Engelmayer wrote. “All other direct evidence bearing on copyright ownership has been lost to history.”

The Lavenders had also cited correspondence from Condé Nast sent in 1998, 2014 and 2017 in which outside counsel for Condé Nast reserved the right to claim that the Last Sitting photos were works for hire. The Court, however, found that this evidence was inadmissible on the ownership issue. For example, the 1998 letter noted that it was possible Condé Nast was the copyright owner based on the absence of the contract discussed by Stern in his 1982 narrative, but this was merely an assertion of a legal position based on a review of materials, not a fact which was dispositive on the issue of ownership.

Alan Behr, partner at Phillips Nizer and lead counsel representing the Stern trust, said the following regarding Judge Engelmayer’s opinion on copyright ownership:

“This is an important victory for holders to rights to legacy photographs. The record may not have been as complete as everyone would have hoped, so the court gave great weight to the value of creation and the creative act. It’s incumbent upon those who would take those rights from that person to have a clear basis for doing so but a clear grant of ownership was not established in this case. This decision will help in the future when people have to go through the question of these legacy works where ownership has been challenged or disputed.”

Although the court determined that Stern was the lawful copyright owner, Judge Engelmayer did find that the online posting of copyright-protected images of the photos being sold would be fair use if the Lavenders can prove at trial that the photos were gifted to them by Stern. Niall MacGiollabhui, counsel representing the Lavenders, offered the following statement on the case:

“While my clients respectfully disagree with Judge Engelmayer’s decision as to copyright ownership, they are very pleased with his ‘fair use’ ruling concerning their online sale of Bert Stern prints, which were given to them by Stern over the course of their decades-long relationship. This ruling is highly significant not just for my clients but for online sales of copyright-protected works in general. They now look forward to full vindication at trial.”

Image Source: Deposit Photos.