Morgan Art Foundation Limited v. Michael McKenzie d/b/a American Image Art

District Court, S.D. New York·Decided September 3, 2025·No. 1:18-cv-04438·Unknown

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK MORGAN ART FOUNDATION LIMITED, Plaintiff, Case No. 1:18-cv-04438 (JLR) -against- (BCM) MICHAEL MCKENZIE d/b/a AMERICAN IMAGE OPINION AND ORDER ART, Defendant. JENNIFER L. ROCHON, United States District Judge: The instant case arises from a long-running dispute between Morgan Art Foundation (“MAF”) and Michael McKenzie d/b/a American Image Art (“McKenzie”) concerning the legal rights to the intellectual property and artistic legacy of the artist Robert Indiana. More than three years into discovery, MAF moved for terminating sanctions against McKenzie pursuant to Federal Rule of Civil Procedure (“Rule”) 37 for McKenzie’s repeated, intentional refusal to comply with Court-ordered discovery and his intentional concealment of evidence. Dkt. 465. Now before the Court are McKenzie’s objections to the Report and Recommendation of Magistrate Judge Moses recommending that the Court grant MAF’s motion in part; impose terminating sanctions as to McKenzie’s remaining counterclaims and MAF’s claim for tortious interference with contract; and impose other, nonterminating sanctions. For the reasons stated herein, the Court adopts Magistrate Judge Moses’s Report and Recommendation and GRANTS in part MAF’s motion for terminating sanctions and other relief. BACKGROUND The Court incorporates the portion of the Report and Recommendation (“R&R”) that describes the background of the case. Dkt. 560 (“R&R”) at 3-31. The following summary focuses on the facts necessary to evaluate the issues presented. I. Factual Background and Procedural History A. The Parties In 1999, MAF, an art dealer, acquired the exclusive right to reproduce, fabricate, and market a wide variety of Robert Indiana artworks, including his well-known LOVE stacked-

word image and sculpture, as the result of a series of written agreements. Dkt. 47 (“FAC”) ¶ 8. McKenzie, an art publisher, also claims an exclusive right to create and market certain Robert Indiana artworks, including the HOPE stacked-word image and sculpture used in then- Senator Barack Obama’s 2008 presidential campaign, which he alleges he acquired by virtue of a 2008 contract. Dkt. 91 (“Third Amended Answer” or “TAA”) ¶¶ 233-234, 237. McKenzie operates his art publishing business, American Image Art (“AIA”), out of a studio in Katonah, New York, where he also maintains his residence. R&R at 14. Until July 2021, McKenzie stored thousands of artworks, purportedly by Indiana, on the first and second floors of his studio and in the basement of his residence. Id. McKenzie and his staff used a computer program, the “Art Archive,” to catalog and keep track of works that McKenzie

produced and sold. Id. McKenzie and his staff had access to the Art Archive, which they began using in 2015, via a website login. Id. at 15. McKenzie’s staff also maintained paper records of the Indiana Artwork. Id. Beginning at least in 2007, McKenzie did business with Gregory Allen, an art dealer who sold art for McKenzie, including the Indiana Artwork. Id. at 16. The two corresponded frequently by email and text. Id. B. The Claims MAF filed this lawsuit on May 18, 2018. Dkt. 1. MAF alleges that McKenzie took advantage of Indiana in his later years and published a series of derivative artworks, supposedly by Indiana, that infringed MAF’s copyright and trademark rights, violated MAF’s contracts with Indiana, harmed Indiana’s market, and undermined Indiana’s carefully restored reputation. FAC ¶¶ 12-17, 93. MAF asserts claims against McKenzie for copyright and trademark infringement, tortious interference with contract, violation of the Visual Artists

Rights Act (VARA) of 1990, 17 U.S.C. § 101 et seq., unfair competition, and defamation. FAC ¶¶ 114, 120-21, 127-128, 140, 147-148, 151-154, 158; see also R&R at 6-12 (summarizing MAF’s claims). McKenzie denies all unlawful conduct and asserts counterclaims against MAF. See generally TAA. Four counterclaims remain following the Court’s resolution of MAF’s motion to dismiss several of McKenzie’s counterclaims, see Morgan Art Found. Ltd. v. McKenzie, No. 18-cv-04438 (AT), 2019 WL 2725625, at *14-17, *20 (S.D.N.Y. July 1, 2019), namely, counterclaims seeking (1) a declaratory judgment that McKenzie had “full authority from Indiana to produce, market, and sell” the Indiana Artworks that he fabricated, TAA ¶ 326, and that the AIA-published Indiana Artworks “are not

forgeries,” id. ¶ 332, and (2) damages for defamation and slander of title, id. ¶¶ 339-345, 379- 388. See R&R at 13-14. C. Discovery Discovery began in 2018. R&R at 16. During the discovery period, which closed on November 19, 2021, McKenzie did not produce the Art Archive, paper records related to the Indiana Artwork, or his communications with Allen. Id. at 15-16, 31. MAF’s initial requests for production sought “all documents and communications relating to or concerning McKenzie’s business dealings or projects with Robert Indiana” and “documents and communications concerning the Indiana Artworks, including the artworks depicted in MAF’s First Amended Complaint and the alleged infringing artworks fabricated by McKenzie.” R&R at 16-17 (alterations adopted) (citation omitted). On November 6, 2018, McKenzie moved to stay the claims against him (and thus stay discovery), or to require MAF to post a bond. Id. at 17. In support of this motion, McKenzie submitted a declaration in which he (falsely) attested that AIA’s records were kept mostly in hard copies and that AIA

did not retain hard copies of business records after three years. Id. at 18. On November 9, 2018, McKenzie made an initial production of documents, the vast majority of which came from the internet or other publicly available sources, and did not include any records from the Art Archive or emails. Id. at 17; see also Dkt. 131 (letter from MAF regarding discovery dispute). When counsel met and conferred on November 13, 2018, McKenzie’s then-counsel at Dunnington Bartholow & Miller LLP “claimed not to know whether AIA had collected emails from any of its employees, including McKenzie.” Dkt. 131 at 2. When MAF made a second request for production, McKenzie refused to produce any further documents or sit for a deposition, invoking his pending stay request. R&R at 18. MAF moved to compel on January 17, 2019. R&R at 19. At a discovery conference

on January 29, 2019, McKenzie’s counsel withdrew the blanket refusal to proceed with discovery. Id. Magistrate Judge Moses did not impose sanctions, but warned McKenzie that his conduct so far “could be ground for shifting the fees,” and that this was his “one free bite” and he would “not get another one.” Id. (citation omitted). Magistrate Judge Moses granted MAF’s motion in part and directed McKenzie to produce, among other things, communications related to the artworks referenced in the parties’ pleadings; to search for and produce documents and electronically stored information (“ESI”) in his personal files; to make a reasonable search for documents and ESI in the physical custody of other workers who created, sent, or received relevant documents; and to produce documents no later than February 28, 2019. Id. Despite this, McKenzie did not produce any documents until April 18, 2019, when he turned over 516 pages of documents, none of which included the Art Archive or any communications from Allen. R&R at 20. McKenzie’s counsel represented that twelve AIA contractors had been asked to search for responsive documents, that some had produced

documents, and that McKenzie was responding to the requests on a rolling basis. Id. On July 1, 2019, the Court denied McKenzie’s motion for a stay and/or an order requiring MAF to post a bond. Dkt. 175.

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