
    White Studio, Inc., Respondent, v. Alexander W. Dreyfoos and Henry Obstfield, Appellants.
    First Department,
    May 29, 1913.
    Civil rights — reproduction and sale of photograph — contract — relation between photographer and customer—suit to enjoin reproduction of photograph.
    The ordinary contract between a photographer and his customer is one of employment. The customer, as employer, is exclusive owner of all proprietary rights,! both in the conception and production of the work.
    Hence, where a person who has had her photograph taken authorizes persons other thari the photographer to market copies thereof, the photographer, having no copyright, cannot maintain a suit to enjoin the reproduction and sale of the picture.
    Appeal by the defendants, Alexander W. Dreyfoos and' another, from an order of the Supreme Court, made at the New York Special Term and entered in the office of the clerk of the county of New York on the 24th day of March, 1913, granting the plaintiff’s motion for an injunction pendente lite.
    
    
      Leo G. Rosenblatt of counsel [Fixman, Lewis & Seligsberg, attorneys], for the appellants.
    
      George Edwin Joseph of counsel [Leon Laski, attorney], for the respondent.
   Clarke, J.:

Plaintiff is a corporation. Its business is that. of making original photographs. It uses the name White ” as a trade ñame. Defendants áre copartners doing business under- the name Apeda Studio. Their chief business is that of manifold reproduction of photographs, and in the theatrical trade their name Apeda ” has become almost synonymous with photographic reproduction.

Plaintiff’s claim is that the defendants have reproduced plaintiff’s work in large quantities, and sold such reproductions at a less rate than it charges. It claims that it was being unfairly competed with. The defendants offer to omit the plaintiff’s name from its reproductions, but this is not what the plaintiff desires. It wants the benefit of the increased advertisement caused by the distribution of the defendants’ reproductions with its name appearing thereon, but in addition it asks that there should appear Reproduced by Apeda,” or words to that effect.

The order appealed from provides: ‘ ‘ That the defendants and each of them, their agents, servants and employees, be and they hereby are enjoined and restrained during the pendency of this action from reproducing photographs posed, taken and made by the plaintiff and on which reproductions appear the plaintiff’s trade name, unless the said defendants shall indicate on such photographic reproductions in some suitable words, that the said is a photographic reproduction of a photograph originally made, taken and posed by this plaintiff; and it is further ordered, that the defendants and each of them, their agents, servants and employees be, and they hereby are, enjoined and restrained during the pendency of this action, from making, selling, vending or otherwise disposing of reproductions of photographs originally taken, made and posed by the plaintiff and upon which reproductions appear the plaintiff’s trade name ‘White ’ unless the defendants shall indicate upon the said photographic reproductions in some suitable words that the same are reproductions made by the defendants of photographs originally taken, made and posed by the plaintiff herein.”

It is settled law that the ordinary contract between a photographer and his customers is a contract of employment. The conception as well as the production of the photograph is work done for the customers .and they, not their employee, are the exclusive owners of all proprietary rights. (Boucas v. Cooke, L. R. [1903] 2 K. B. Div. 227; Press Pub. Co. v. Falk, 59 Fed. Rep. 324; Pollard v. Photographic Co., L. R. 40 Ch. Div. 345, cited in Roberson v. Rochester Folding Box Co., 171 N. Y. 538.)

In the Roberson case the Court of Appeals- suggested that “ The legislative body could very well interfere and arbitrarily provide that no one should be permitted for his own selfish purpose to use the picture or the name of another for advertising purposes without his consent.” ■ The Legislature took the hint and in sections 50 and 51 of the Civil Eights Law (Consol. Laws, chap. 6; Laws of 1909, chap. 14) prohibited the use for advertising purposes or for the purposes of trade of the portrait or picture of any living person without having first obtained the written consent of such person. (See, also, Laws of 1911, chap. 226, amdg.:§ 51.) The actress, the reproduction of whose portrait is one of the acts complained of, gave 'to the defendants written orders for such reproductions and with instructions that they should be marked “Apeda, N. Y.”

The plaintiff has no copyright. It has no right to sell and dispose of reproductions- from its negative without the consent of its sitter. Haying no copyright it attempts to prevent the ' defendants from reproducing and selling, with the consent of the sitter, as if it had such Copyright. The language of the court in Bamforth v. Douglas Post Card & Machine Co. (158 Fed. Rep. 355) is applicable. “No question under the law of trademarks or the law of unfair competition is now involved. These cards are not trade-marks, either singly or collectively, in. any sense of the word. They do not identify and distinguish the complainants’ product, but are the product itself; and there can be no question of unfair competition, because the complainants . have no legal right to the exclusive production and sale. It would be useless to elaborate a subject so well understood. A photograph, if it- be also an artistic production, the result of original intellectual conception on the part of the author, may be copyrighted with the same effect as if it were a book; but without this protection of the Federal statutes neither the book nor the photograph can continue to be the author’s exclusive property after it has been printed and offered to the public for sale. , * * * ■ No doubt a photograph might be adopted as a trade-mark to distinguish a manufactured article; but how a photograph, if it be also a work of art, and therefore capable of copyright, can be the subject of unfair competition I am unable to understand. The only possible way to compete with such a photograph is to reproduce it, and any one may do this lawfully after it has been published, unless the protection of the Federal statutes concerning copyright has previously been obtained. * * To .copy is, therefore, not to compete unfairly in a legal sense, but to compete with the full sanction of the law.”

The attempt here made to prevent copying without complying with the provisions of the copyright law must fail. As the plaintiff has refused the offer of the defendants to eliminate its name from the reproductions, it has no substantial claim to any equitable relief.

The order appealed from should, therefore, be reversed, with ten dollars costs and disbursements, and the motion for an injunction denied, with ten dollars costs to the appellants.

Ingraham, P. J., Scott, Dowling and Hotchkiss, JJ., concurred.

Order reversed, with ten dollars costs and disbursements, and motion denied, with ten dollars costs.  