Citation[]
Dallal v. New York Times Co., 386 F. Supp. 2d 319 (S.D.N.Y. 2005) (full-text).
Factual Background[]
Between 1994 and 2002, freelance photographer Thomas Dallal accepted assignments from the "New York Times" to take pictures relating to the news and articles the Times intended to publish. Dallal received a fixed amount of $200 per day for each assignment. In 1996, the Times began to publish an Internet edition of its newspaper.
In 1997, Dallal sent bills to the Times that included language that said he was granting the Times only a "first exclusive, one time use" of his photographs. In May of 1997, Dallal complained to the Times that he should receive extra compensation because his photographs were used both in the Times' newspaper and on the Internet. The Times, however, refused to pay Dallal the extra compensation. Although Dallal continued to complain orally about not receiving extra compensation, and the Times acknowledged his complaints, he continued to accept assignments at the same fixed rate.
In 2002, Dallal demanded that the Times stop using his photographs in its Internet articles without his permission. In response, the Times ceased all use of Dallal's photographs, removed them from its website, and stopped offering Dallal assignments. In 2003, Dallal filed a complaint against the Times that claimed copyright infringement of 113 photographs published by the Times between 1997 and 2002.
Trial Court Proceedings[]
In response to the Times' motion for summary judgment, Judge Hellerstein noted that in order for the Times to prevail on a defense of equitable estoppel, it was required to show that it had been misled into reasonably and justifiably believing that Dallal would not pursue his claims. Furthermore, Judge Hellerstein noted that a four-part test that must be satisfied.
First, Dallal must have known of the Times' wrongful conduct. Judge Hellerstein noted that assuming the Times’ conduct was wrongful, Dallal was aware of the conduct in 1997 when he complained about the lack of extra compensation.
Second, Dallal must have intended that his conduct be acted upon or acted in a way that the Times had a right to believe it was so intended. Here, Judge Hellerstein found that because Dallal's conduct was an attempt to negotiate a better deal while the parties continued their compensation agreement, it was not an attempt to pursue a copyright infringement claim. Thus, he found that the Times had a right to believe Dallal's conduct was merely an attempt to negotiate his compensation.
Third, the Times must have been ignorant of the true facts that Dallal was trying to protect his copyrights. Judge Hellerstein noted that even though the Times acknowledged Dallal's complaints regarding extra compensation, such acknowledgments did not constitute awareness of a copyright infringement claim.
Finally, the Times must have relied on Dallal's conduct to its detriment. Since the Times proceeded with the understanding that its relationship with Dallal was acceptable to both parties, Judge Hellerstein found that the Times detrimentally relied on Dallal’s conduct.
Therefore, all four elements of the equitable estoppel test were shown. As a result, Judge Hellerstein held that Dallal was equitably estopped from bringing the copyright infringement claims, and granted the Times' motion for summary judgment.