United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION & ORDER
Honorable Thomas M. Durkin United States District Judge.
Estate of Vivian Maier brings this copyright and trademark
infringement case against defendants Jeffrey Goldstein and
Vivian Maier Prints, Inc., for allegedly engaging in copying,
public exhibition, and commercial exploitation of the
unpublished photographs of Vivian Maier, a Chicago
photographer who achieved worldwide fame posthumously. Before
the Court is defendants' motion to dismiss
plaintiff's amended complaint (R. 42). Defendants first
rehash an argument already rejected when this Court granted
plaintiff's motion for a temporary restraining order
(“TRO”) that the Court lacks subject matter
jurisdiction under the probate exception to federal
jurisdiction. On this basis, defendants argue that the case
should be dismissed under Fed.R.Civ.P. 12(b)(1). Defendants
also argue that plaintiff fails to state a claim under
Fed.R.Civ.P. 12(b)(6). For the following reasons,
defendants' motion is denied.
12(b)(6) motion challenges the sufficiency of the
complaint. E.g., Hallinan v. Fraternal Order of Police of
Chi. Lodge No. 7, 570 F.3d 811, 820 (7th Cir. 2009). A
complaint must provide “a short and plain statement of
the claim showing that the pleader is entitled to relief,
” Fed.R.Civ.P. 8(a)(2), and giving defendant
“fair notice” of the claim and the basis for it.
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
(2007). This standard “demands more than an unadorned,
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). While
“detailed factual allegations” are not required,
“labels and conclusions, and a formulaic recitation of
the elements of a cause of action will not do.”
Twombly, 550 U.S. at 555. The complaint must
“contain sufficient factual matter, accepted as true,
to ‘state a claim to relief that is plausible on its
face.'” Iqbal, 556 U.S. at 678 (quoting
Twombly, 550 U.S. at 570). “‘A claim has
facial plausibility when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct
alleged.'” Mann v. Vogel, 707 F.3d 872,
877 (7th Cir. 2013) (quoting Iqbal, 556 U.S. at
678). In applying this standard, the Court accepts all
well-pleaded facts as true and draws all reasonable
inferences in favor of the non-moving party. Id.
12(b)(1) authorizes the Court to dismiss any claim for which
the Court lacks subject matter jurisdiction. Article III,
Section 2 of the U.S. Constitution defines the outer bounds
of a federal court's subject matter jurisdiction;
generally, a court's jurisdiction in a civil case arises
from a federal question, a deprivation of one's civil
rights, or diversity among the parties. See 28
U.S.C. §§ 1331, 1332, 1343; see also Rabe v.
United Air Lines, Inc., 636 F.3d 866, 872 (7th Cir.
2010). When a defendant challenges jurisdiction, the
plaintiff bears the burden of establishing a court's
jurisdiction. Lujan v. Defenders of Wildlife, 504
U.S. 555, 561 (1992). As with a Rule 12(b)(6) motion, in
deciding a Rule 12(b)(1) motion the Court must “accept
as true all well-pleaded factual allegations and draw all
reasonable inferences in favor of the plaintiff.”
St. John's United Church of Christ v. City of
Chi., 502 F.3d 616, 625 (7th Cir. 2007) (quotation marks
Maier spent most of her life working in the Chicago area as a
nanny. R. 38 ¶ 14. Her photography was never
professionally shown during her lifetime; indeed, most of her
photographs were not developed while she was alive.
Id. ¶ 15. Maier died intestate on April 21,
2009. Id. ¶ 16. With no known heirs at the
time, a public administrator was appointed to administer
Maier's estate. Id. ¶¶ 19-21.
estate-the plaintiff in this case-owns the copyright in all
works of authorship created by Maier, including but not
limited to her photographs (“Maier works”).
Id. ¶ 18. Plaintiff also owns the VIVIAN MAIER
trademark. Id. ¶ 22. A use-based application
for that trademark is currently pending with the U.S. Patent
and Trademark Office. Id.
in approximately 2010, defendant Goldstein amassed a series
of Maier's vintage prints. Id. ¶ 23. He
also acquired approximately 15% of Maier's known black
and white negatives and slides (totaling approximately 17,
000 images), negatives for approximately 1, 800 color images,
and other Maier-related items. Id. ¶¶
October 25, 2010, Goldstein founded defendant Vivian Maier
Prints, Inc. Id. ¶ 26. In late 2010 and 2011,
Goldstein processed undeveloped film he had acquired and made
digital copies and prints of the Maier works in his
possession. Id. ¶¶ 29-30. He began to sell
the prints for well over $1, 000 each. Id. ¶
31. In approximately April 2011, Goldstein began to exhibit
the prints at public exhibitions. Id. ¶ 32.
registered the domain name
“vivianmaierprints.com” and launched a website at
that address in approximately February 2011. Id.
¶ 33. The website featured a facsimile signature of
Vivian Maier and the header “Vivian Maier Prints,
Inc.” Id. Goldstein posted dozens of images of
Maier works on the website without authorization from
plaintiff. Id. ¶ 34. Although Goldstein has
since disabled the homepage, pages throughout the site
displaying Maier works remain active. Id.
October 2012, Goldstein caused a book to be published
consisting largely of reproductions of unpublished Maier
photographs; a special edition of the book sold for $850 a
copy. Id. ¶ 35. Goldstein also began selling
Maier prints to galleries outside Chicago in 2012.
Id. ¶ 36.
and 2014, Goldstein continued to organize public exhibitions
and sales of Maier's work for significant sums.
Id. ¶¶ 38, 40. He “licensed”
certain Maier images for which he held the negatives to the
British Broadcasting Corporation (“BBC”), which
used them in connection with a 2013 documentary on Maier.
Id. ¶ 39. He also caused another book of
reproductions of Maier photographs to be published in October
2014. Id. ¶ 41.
never sought or received permission from plaintiff to
reproduce and sell prints of Maier's work, to conduct
exhibitions of Maier's work, to publish books using her
images, to use her name or identity in the trade name of
Goldstein's company, or to make any statements suggesting
that Goldstein's enterprise was endorsed by or affiliated
with plaintiff. Id. ¶ 42. The complaint alleges
on information and belief that when asked about copyright
issues, Goldstein took the position “that his efforts
to establish a market for Maier's works entitled him to
copy, publish, and profit from Maier's works.”
Id. ¶ 43.
August 2014, plaintiff's attorneys sent Goldstein a
letter informing him that they had been retained to
investigate, among other things, Goldstein's potential
infringement of plaintiff's copyright. Id.
¶ 45. The letter informed Goldstein of his obligation to
take reasonable steps to preserve and retain all documents
related to Maier and his use of her works. Id.
early September 2014, the Cook County Circuit Court granted a
petition for a citation to discover and recover assets from
Goldstein. Id. ¶¶ 44, 46. Plaintiff's
and defendants' counsel subsequently had negotiations
about a possible resolution of the issues between the
parties. Id. ¶¶ 47-49. While these
negotiations were occurring, Goldstein traveled to Canada to
seek a purchaser of his collection of black and white Maier
negatives. Id. ¶ 50. In approximately December
2014, Goldstein sold his entire collection of black and white
Maier negatives to a gallery in Canada. Id. ¶
51. The gallery explained in a January 2015 interview with
Canadian Art magazine that “the border does
complicate things a bit . . . for Cook County to try to
extradite material that's in another country, there's
definitely a couple more layers of protection there.”
Id. ¶ 52. A January 2015 article reported that
Goldstein told the Chicago Tribune: “I'm not going
to partner up with Cook County. I'd cut my wrists
first.” Id. ¶ 53. Plaintiff believes
Goldstein continues to possess approximately 1, 400 prints of
Maier works with a market value of between two and four
million dollars. Id. ¶ 66.
February 2015, Goldstein filed a counterclaim against
plaintiff in the Cook County lawsuit for unjust enrichment,
arguing that his infringing conduct created the value of
Maier's copyright, and he should be entitled to an
interest in Maier's works as a result. Id.
¶ 55. The court dismissed the counterclaim in January
2016. Id. In July 2017, ...