Brittney Gobble Photography, LLC v. Sinclair Broadcast Group, Inc.
MEMORANDUM OPINION. Signed by Judge Stephanie A. Gallagher on 11/17/2021. (ols, Deputy Clerk)
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 1 of 55
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
* Civil Case No.: SAG-18-03403 (Lead Case)
SINCLAIR BROADCAST GROUP, INC., *
USA ENTERTAINMENT NEWS, INC.
d/b/a “WENN” and “WORLD
ENTERTAINMENT NEWS NETWORK”, *
Third-Party Defendant. *
BRITTNEY GOBBLE PHOTOGRAPHY,
Brittney Gobble Photography, LLC (“BGP” or “Plaintiff”) filed these lawsuits against
Sinclair Broadcast Group, Inc. (“Sinclair”) and several of its subsidiaries and affiliate stations
(individually, the “Station Defendants” and collectively with Sinclair, “Defendants”) for copyright
infringement and violations of the Digital Millennium Copyright Act (“DMCA”) under 17 U.S.C.
§§ 1202(a) and (b). Sinclair also filed a Third-Party Complaint against USA Entertainment News,
Inc. d/b/a “WENN” and “World Entertainment News Network” (“WENN”). ECF 19. The parties
have filed cross-motions for summary judgment, which are now fully briefed. ECF 168 (BGP’s
Motion), ECF 171 (Defendants’ Opposition and Cross-Motion), ECF 183 (BGP’s Reply and
Opposition to Defendants’ Cross-Motion), ECF 185 (Defendants’ Reply).
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Each side has also filed a Daubert motion—BGP’s seeks to exclude Defendants’ proposed
expert, Gary Elsner, and Defendants’ seeks to exclude BGP’s proposed expert, Jeffrey Sedlik.
ECF 163 (Defendants’ motion to exclude Mr. Sedlik), ECF 166 (BGP’s motion to exclude Mr.
Elsner). Those motions are now fully briefed. ECF 169, 170, 181, 182. The Court has considered
all of the pending motions, oppositions, replies, and the exhibits attached thereto. No hearing is
necessary. See Loc. R. 105.6 (D. Md. 2021). For the reasons explained below, BGP’s motion for
summary judgment, ECF 168, will be DENIED except with respect to its argument on the
Defendants’ Fraud on the Copyright Office affirmative defense, which will be held in abeyance.
Defendants’ motion for summary judgment, ECF 171, will be GRANTED in part and DENIED in
part as set forth herein. Further, the Court will GRANT in part and DENY in part Defendants’
motion to exclude Mr. Sedlik’s testimony and DENY BGP’s motion to exclude Mr. Elsner’s
Johnny Gobble, a veterinarian, and his wife Brittney Gobble, a photographer, were among
the first people to successfully breed a Lykoi cat. ECF 168-1 at 1; ECF 171-1 at 2. The Lykoi
breed is a relatively new breed of cat with a distinctive, werewolf-like appearance. ECF 168-4 at
37-38 (Dr. Gobble Deposition); Second Am. Compl. ¶ 33 (Lykoi Cat Photographs). As the
Gobbles began selling their Lykoi cats, Ms. Gobble would photograph them in order to advertise
and promote the breed. ECF 168-4 at 37-38 (Dr. Gobble Deposition). In October, 2015, Ms.
Gobble received copyright protection for various groups of photographs she had taken of the Lykoi
Much of Plaintiff’s briefing on the motions appears to be less than double-spaced and, therefore,
in violation of Local Rule 102.2(b). As a result, several of those briefs are significantly over the
page limits imposed by the local rules and this Court’s orders. In the future, the parties should
adhere to the rules and orders that govern the form and length of court documents, and if they
anticipate a need to exceed an allotted page limit, they should file a motion for leave.
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 3 of 55
cats. ECF 168-5-8. According to BGP, that copyright protection covered 50 of the 51 photographs
at issue in this case. ECF 168-1 at 2. Ms. Gobble assigned her rights to the photographs to BGP.
On November 2, 2015, Clare Penn, on behalf of WENN, contacted the Gobbles by email.
ECF 168-13. Ms. Penn’s email stated:
I am contacting you on behalf of the World Entertainment News Network. One of
the world’s leading press agencies, with offices based in London, New York, LA
and Germany, we syndicate news/features/images to publications worldwide.
I source photographers/images/features/news for WENN’s A Different World of
Photos department; here we focus on stories that are strong pictorially.
I recently came across information regarding the Lykoi breed of cats; I would like
to create a feature/news item for press regarding this unique breed . . . and wondered
if it would be possible to get a selection of hi-res images to accompany editorial
text? . . .
Any images published are used in an editorial context only and accompanied by the
relevant information regarding the breed; we do not allow images to be used out of
Id. Dr. Gobble responded with the following email:
I am writing for my wife’s photos. Here is what she sends to all requests for
Here is a link to an album of some of my hi-res images that I give permission to be
used. I do not give permission for these images to be distributed, or to be used in
an article (or other media) that is purposefully derogatory toward our breed . . . .
Whenever possible, please credit images to “Brittney Gobble”. . . .
If you are going to use our photos, I would like you to state that we are breeding
for health, the breed is a natural occurrence in the feral domestic cat population, the
first were born in Vonore, TN or Sweetwater, TN (the towns are real close), and
we love the public[’]s positive response to the new breed.
ECF 168-14. Ms. Penn responded: “Many thanks Johnny . . . I shall take a look at your website
and let you know if I need any more information.” ECF 168-15.
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WENN took the photographs in the Dropbox link Dr. Gobble sent to Ms. Penn and made
them available to its network of paying subscribers, including Sinclair. On November 4, 2015,
Scott Sistek, a reporter for KOMO News, downloaded copies of the photographs in the Drobpox
folder. ECF 168-16 at 26-27 (Sistek Deposition). Mr. Sistek testified that WENN often put large
amounts of substantive content in photographs’ metadata fields, and that it was his practice to edit
out that content to “put the text content of the story in a body field.” Id. at 21. He did that here
using a content management system called “Clickability” and published an article on the KOMO
News website, ECF 171-35 (KOMO News Article), along with 12 other websites associated with
stations that Sinclair had acquired from Fisher Communications. ECF 168-16 at 33-37. The article
included an accompanying gallery of photographs that were credited to “WENN.com.” ECF 17135.
On November 8, 2015, Ms. Gobble emailed KOMO’s email address, writing:
These images were not to be used without proper credits per the contract with which
I allowed a stock website to use my images. I expect that the proper by line credit
be given, or my images removed as all these images are registered with the
copyright office and my copyright is being violated.
ECF 168-19. Mr. Sistek responded:
I apologize for that, we truncated the caption and turned it into a news article on
the site which does credit your work, but I see the truncation it took your name off
the photo captions. I will go back and add in credit on each photograph caption. If
that is not sufficient, please let me know and again I apologize for truncating too
much in the gallery caption[.]”
Id. Ms. Gobble responded: “I understand! That is absolutely fine! Thank you!” Id. Mr. Sistek
replied, thanking Ms. Gobble, and indicating that he “added your credit and put a link to your
Facebook page on all the captions now.” Id. Ms. Gobble saw the revised captions. ECF 168-10
at 143 (BGP 30(b)(6) Deposition).
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On November 9, 2015, Amanda Ota, a producer at Sinclair’s National Desk, emailed the
Gobbles requesting permission for Sinclair to use Ms. Gobble’s photographs. She wrote:
My name is Amanda Ota and I’m an online news writer at Sinclair Broadcast
Group. I’m working on a write-up of your cats and was wondering if I may have
permission to use the photos shared on your site across all platforms please? We
will be sure to credit you.
ECF 171-33. Dr. Gobble responded the same day:
You can use any photos from our face book and web page as long as your article
portrays the Lykoi and the breeders in a positive way. My wife has the photos
copyrighted, and will refuse any usage if the article is negative toward us or the
breed in any way.
On November 9, 2015, Ms. Ota published an article to the websites of fifty Sinclair stations
using the same body text and photographs that had appeared in Mr. Sistek’s article. ECF 168-35.
Thus, according to BGP, Ms. Ota used the photographs from the Dropbox link, rather than the
watermarked, low-resolution, photographs from BGP’s Facebook page or website. Id. Sixteen of
the photographs included credit to “Brittney Gobble Photography via WENN.com[,]” and the
remaining photographs credited “WENN.com.” ECF 171-39.
On November 10, 2015, Elizabeth Faugl, an employee of Sinclair Communications, LLC,
independently re-published the same article Ms. Ota had published to two Sinclair station websites.
ECF 168-43. These articles included four of the photographs with credit to “Brittney Gobble
Photography via WENN.com.” Id.
On November 12, 2015, the Gobbles wrote to WENN, demanding that WENN cease its
infringement. ECF 168-25. Shortly thereafter, WENN sent a “kill notice” email to a list of
“undisclosed recipients” directing “WENN Agents” to remove the images. ECF 168-26. The
parties dispute whether any of the Defendants received this email. Ultimately, BGP sued WENN
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in the United States District Court for the Eastern District of Tennessee and was eventually
awarded a default judgment in the amount of $5,754,941.88. Brittney Gobble Photography, LLC
v. WENN Limited, No. 3:16-CV-306-HSM-DCP, 2019 WL 2446997, at *11 (E.D. Tenn. Feb. 19,
2019). In November, 2018, BGP sued the Defendants here in four separate lawsuits, which are
The Court will first resolve the parties’ Daubert motions before turning to the motions for
summary judgment. At the outset, however, the Court recognizes that Defendants have raised a
host of evidentiary objections (separate from their Daubert motion). See ECF 185-14. Because
none of this Court’s analysis relies on or references those contested pieces of evidence, however,
the Court declines to address them at this time. The parties are, of course, free to raise these and
any other proper objections as the case progresses, and the Court will address them if and when
they become relevant.
A. Daubert Motions
i. Legal Standard
Federal Rule of Evidence 702 governs the admissibility of expert witness testimony. A
qualified expert may give testimony if:
(a) the expert’s scientific, technical, or other specialized knowledge will
help the trier of fact to understand the evidence or to determine a fact in
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of
Fed. R. Evid. 702. In essence, the trial court must ensure the proposed expert testimony “both
rests on a reliable foundation and is relevant to the task at hand.” Daubert v. Merrell Dow Pharm.,
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Inc., 509 U.S. 579, 597 (1993). In Daubert, the Supreme Court provides five nonexhaustive factors
a court may weigh in making this assessment: (1) “whether a theory or technique . . . can be (and
has been) tested,” (2) “whether the theory or technique has been subjected to peer review and
publication,” (3) “the known or potential rate of error,” (4) “the existence and maintenance of
standards controlling the technique’s operation,” and (5) whether the technique or theory has
gained “general acceptance.” 509 U.S. at 592–94; Pugh v. Louisville Ladder, Inc., 361 F. App’x
448, 452 (4th Cir. 2010). However, ultimately, the inquiry is “a flexible one” and relevant factors
can vary with the needs of each case. Daubert, 509 U.S. at 594.
For the proffered evidence to be sufficiently reliable it “must be derived using scientific or
other valid methods” and not based on mere “belief or speculation.” Casey v. Geek Squad
Subsidiary Best Buy Stores, L.P., 823 F. Supp. 2d 334, 340 (D. Md. 2011) (first quoting Oglesby
v. Gen. Motors Corp., 190 F.3d 244, 250 (4th Cir. 1999); then quoting Bryte ex rel. Bryte v. Am.
Household, Inc., 429 F.3d 469, 477 (4th Cir. 2005)). The court’s analysis focuses on experts’
methods, not their conclusions, but an expert opinion that relies on “assumptions which are
speculative and not supported by the record,” is inadmissible. Tyger Const. Co. Inc. v. Pensacola
Const. Co., 29 F.3d 137, 142 (4th Cir. 1994); see also Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146
(1997) (“[N]othing in either Daubert or the Federal Rules of Evidence requires a district court to
admit opinion evidence that is connected to existing data only by the ipse dixit of the expert. A
court may conclude that there is simply too great an analytical gap between the data and the opinion
proffered.”). For the proffered opinion to be relevant, it “must be ‘sufficiently tied to the facts of
the case that it will aid the jury in resolving a factual dispute.’” Casey, 823 F. Supp. 2d at 340
(quoting Daubert, 509 U.S. at 591). Expert testimony “is presumed to be helpful unless it concerns
matters within the everyday knowledge and experience of a lay juror.” Anderson v. Home Depot
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U.S.A., Inc., No. GJH-2615, 2017 WL 2189508, at *4 (D. Md. May 16, 2017) (quoting Kopf v.
Skyrm, 993 F.2d 374, 377 (4th Cir. 1993)).
The proponent of the expert testimony bears the burden of establishing admissibility, or
“coming forward with evidence from which the trial court could determine that the evidence is
admissible under Daubert.” Anderson, 2017 WL 2189508, at *3 (quoting Main St. Am. Grp. v.
Sears, Roebuck, & Co., No. CIV JFM-08-3292, 2010 WL 956178, at *3 (D. Md. Mar. 11, 2010));
see also Casey, 823 F. Supp. 2d at 340; Daubert, 509 U.S. at 592 n. 10 (explaining admissibility
must be established by a “preponderance of proof”).
In determining the admissibility of expert testimony, the court considers two “guiding, and
sometimes competing, principles.” Westberry v. Gislaved Gummi AB, 178 F.3d 257, 261 (4th Cir.
1999). On the one hand, Rule 702 was “intended to liberalize the introduction of relevant expert
evidence,” and the court need not ensure the expert’s proposed testimony is “irrefutable or
certainly correct.” Id. (explaining that admissible expert testimony can still be vigorously tested
before the jury by “cross-examination, presentation of contrary evidence, and careful instruction
on the burden of proof” (quoting Daubert, 509 U.S. at 596)). On the other hand, “due to the
difficulty of evaluating their testimony, expert witnesses have the potential to ‘be both powerful
and quite misleading.’” Id. (quoting Daubert, 509 U.S. at 595). The court must determine whether
the disputed expert testimony “has greater potential to mislead than to enlighten.” Id. If so, the
testimony should be excluded. Id.; see also Casey, 823 F. Supp. 2d at 340 (noting such testimony
would be barred by Federal Rule of Evidence 403).
ii. Jeffrey Sedlik
Although the Court has no doubt about Mr. Sedlik’s qualifications, or that his testimony
may have been appropriately admitted in other infringement cases, the Court finds that his
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methodology was not reliably applied to the facts of this case and that, therefore, aspects of his
proffered testimony must be excluded under Federal Rule of Evidence 702 and the Daubert
standard. Although BGP had a long history of licensing the photographs at issue here for free, or
for nominal fees, Mr. Sedlik proposes to tell a jury that, in his expert opinion, the fair market value
of the licensing fees BGP lost as a result of Defendants’ infringement is between $18,636,647.50
and $31,061,079.10. ECF 163-3 at 38 (Sedlik Report). That conclusion defies common sense.
And while courts may not (and this Court will not here) exclude an expert simply because they
disagree with the expert’s conclusion, Daubert, 509 U.S. 595, a close look at Mr. Sedlik’s
methodology reveals that it was not reliably applied to the facts at issue here. 2 At bottom, Mr.
Sedlik makes two fundamentally flawed assumptions in applying his methodology to this case.
First, he assumes that in order for the Defendants to license the photographs at issue from BGP,
they would have needed to purchase at least 2,729 separate, one-year, licenses from BGP. And
second, he assumes that because there were relatively few Lykoi cats in existence at the time the
articles were published, and relatively few available pictures of them, that the fair market value of
those photographs would have been between three and five times the price of a non-Lykoi cat
photograph. Those assumptions, along with several others described below, are unsupported by
the facts, and therefore require the Court to exclude Mr. Sedlik’s testimony as to BGP’s actual
1. Lost Licensing Fee Approach to Actual Damages
“The Copyright Act entitles a copyright owner to recover ‘the actual damages suffered by
him or her as a result of the infringement[.]’” Dash v. Mayweather, 731 F.3d 303, 312 (4th Cir.
As explained below, there are also aspects of Mr. Sedlik’s methodology itself that the Court finds
flawed—or, at least, that are insufficiently explained in his report.
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2013) (quoting 17 U.S.C. § 504(b)). While there are several methods of calculating actual damages
in copyright infringement cases, “the primary measure of recovery is the extent to which the market
value of the copyrighted work at the time of the infringement has been injured or destroyed by the
infringement.” Fitzgerald Publishing Co., Inc. v. Baylor Publishing Co., Inc., 807 F.2d 1110,
1118 (2d Cir. 1986). That is an objective inquiry, not a subjective one. Dash, 731 F.3d at 312.
One frequently used method to calculate a copyrighted work’s fair market value at the time
of the infringement is called the lost licensing fee approach. Under that approach, actual damages
are calculated by evaluating “what a willing buyer would have been reasonably required to pay a
willing seller for [the] plaintiffs’ work.” Id. at 313 (quoting Jarvis v. K2 Inc., 486 F.3d 526, 533
(9th Cir. 2007)) (alteration in original). “‘The question is not what the owner would have charged,’
nor what the infringer might have been willing to pay. Rather, the objective inquiry focuses on
the fair market value of the work as ‘negotiated between a willing buyer and a willing seller’
contemplating the use the infringer made.” Id. (quoting On Davis v. The Gap, Inc., 246 F.3d 152,
166, 172 (2d Cir. 2001)).
2. Mr. Sedlik’s Methodology
Mr. Sedlik attempts to calculate BGP’s actual damages using the lost licensing fee
approach. ECF 163-3 at 34 (Sedlik Report). He first found three different photographs of nonLykoi cats and “obtained comparative stock photography license fee quotes from three stock
photography agencies.” 3 Id. He then averaged those quotes and adjusted the average downward
Defendants’ experts dispute the reasonableness of several assumptions made by Mr. Sedlik to
obtain those quotes—for example, his assumptions on circulation, size, placement, and period of
use, each of which affected the ultimate license fee quote. See, e.g., ECF 169-4 at 16-18 (Riley
Report). For purposes of deciding this motion, though, the Court assumes that, even if Defendants’
experts are correct, those assumptions were not so unreliable that they justify Mr. Sedlik’s
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by 9.15% because, in Mr. Sedlik’s view, the 2017 market in which he obtained the quotes was
9.15% more expensive than the 2015 market in existence at the time of Defendants’ alleged
infringement. 4 Id. at 36-37. This calculation produced Mr. Sedlik’s “Average Market Rate, Per
Year (2015),” which he determined was $589.73 for a single, one-year, license to use one of the
photographs. ECF 163-8. Then, Mr. Sedlik determined that Defendants would have needed 2,729
separate one-year licenses to use BGP’s photographs as they did. ECF 163-10. But since many
of the Defendants used the photographs for more than one year, Mr. Sedlik then multiplied the
price of each license unit ($589.73) by the number of years of alleged infringing use for each of
the 2,729 licenses (in other words, this was measuring the number of times each one-year license
would need to have been renewed). Id. Those calculations yielded a base actual damages figure
of $6,212,215.82. Id. By the Court’s count, that means that Mr. Sedlik concluded that Defendants
would have needed to purchase 10,534 “license units” (6,212,215.82 divided by 589.73) in order
to permit their uses of BGP’s photographs.
Next, Mr. Sedlik applied a “scarcity multiplier” because in his view, “few if any other
photographers or stock photo agencies offered quality photographs of Lykoi cats.” ECF 163-3 at
37 (Sedlik Report). According to Mr. Sedlik, “[s]carce images typically demand much greater
license fees than common images, often 3 to 5 times the fee for a common usage.” Id. at 38.
Therefore, Mr. Sedlik multiplied $6,212,215.82 by three and five, to reach an actual damages range
of between $18,636,647.50 and $31,061,079.10. Id.
Defendants also contest the reliability of the methodology Mr. Sedlik used to determine that the
2017 market was more expensive than the 2015 market because he compared the 2015 value of a
single stock photograph to the 2017 value of the same photograph. ECF 163-1 at 19-20. While
the Court has concerns about the reliability of such a conclusion based on Mr. Sedlik’s sample size
of a single photograph, the Court again assumes without deciding that this method was not so
unreliable that it, on its own, justifies Mr. Sedlik’s exclusion. In any event, in this instance his
market assumption ultimately worked in Defendants’ favor.
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3. Reliability of the Application of Mr. Sedlik’s Methodology
a. Licensing Structure
As explained above, Mr. Sedlik purports to use the lost license fee approach to attempt to
calculate BGP’s actual damages. His task, therefore, was to determine “what a willing buyer
would have been reasonably required to pay a willing seller” for the images at issue. Dash, 731
F.3d at 313.
A major flaw in Mr. Sedlik’s approach is his incorrect assumption that each of the
Defendants would have separately licensed each of the photographs. This simply ignores the
business model of a global media company—or, for that matter, any “willing buyer.” See Concord
Boat Corp. v. Brunswick Corp., 207 F.3d 1039, 1057 (11th Cir. 2000) (holding that an expert’s
testimony should have been excluded because the expert had not considered the economic realities
of the relevant market). Clearly, an administrative catastrophe would ensue if each of Sinclair’s
subsidiaries and affiliates were responsible for negotiating its own licensing agreements for each
image it uses. As Mr. Sedlik’s calculations aptly demonstrate, the sheer cost of such a model
would preclude its utility. Put simply, no willing buyer (or related group of willing buyers) would
agree to purchase 2,729 separate licenses costing a total of between 18 and 31 million dollars (over
several years) for permission to use 50 photographs of Lykoi cats. At that cost, any media
company would forego the photographs (or the entire article).
Of course, if a group of related corporate defendants approached BGP seeking a bulk
license to allow the use of all the photographs at issue across many stations’ platforms, it would
be perfectly reasonable for BGP to demand more compensation than the cost of a single license
for use of a single photograph. However, it would be equally unreasonable for BGP to demand
separate one-year licenses, at full cost, for each station’s use of each image. The lost license fee
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approach is meant to determine the reasonable fair market value of the license fees that would
have been required to use the injured plaintiff’s work. Because Mr. Sedlik has simply multiplied
the assumed fair market value of a single license by the number of separate licenses that would be
needed for each station’s use of each photograph, his conclusion is categorically unreasonable.
Accordingly, Mr. Sedlik has not reliably applied the lost license fee approach because he
has not come remotely close to determining “what a willing buyer would have been reasonably
required to pay” BGP for the use of these images. Dash, 731 F.3d at 312. Mr. Sedlik’s actual
damages conclusions, therefore, violate Rule 702 and the Daubert standard.
b. Licensing History
Because Mr. Sedlik attempted to use the lost license fee approach to determine BGP’s
actual damages, he did not base his analysis on BGP’s long history of distributing the images at
issue for free, ECF 163-24 at 123 (BGP 30(b)(6) Deposition), or its history of licensing the
photographs through REX Features, which generated a total of $306.03 over approximately 15
months. ECF 163-3 at 28 (Sedlik Report); ECF 163-15 at 296 (Sedlik Deposition); ECF 170 at 8.
The parties, therefore, dispute the reliability of Mr. Sedlik’s methodology insofar as it disregards
BGP’s actual licensing history. See ECF 163-1 at 9-11; ECF 170 at 8-9.
There is “no requirement that actual damages be calculated based on a plaintiff’s own
history of licensing fees.” Leonard v. Stemtech International, Inc., 834 F.3d 376, 391 (3d Cir.
2016). And per-use approaches can be acceptable methods of determining actual damages.
Navarro v. Proctor & Gamble Co., No. 1:17-cv-406, 2021 WL 868586, at *6 (S.D. Ohio Mar. 8,
2021). For example, under the lost license fee approach, “calculating the ‘fair market value’ of a
license for each unauthorized use is a ‘recognized approach for calculating damages,’ that is only
inappropriate if there is ‘no realistic prospect whatsoever’ that the plaintiff could have negotiated
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a per-use licensing fee.” Id. (quoting Bruce v. Weekly World News, Inc., 310 F.3d 25, 29-30 (1st
Cir. 2002)) (internal citations and alterations omitted).
At this stage, the Court does not have enough information before it to determine whether
there was any “realistic prospect” that BGP “could have negotiated a per-use licensing fee.” Id.
While Mr. Sedlik has not reliably applied the lost license fee approach here, the Court does not, at
least at this point, conclude that it was unreliable to use some version of that approach as a method
of calculating BGP’s actual damages. In other words, Mr. Sedlik’s actual damages conclusions
must be excluded because he has not reliably applied the lost license fee approach, not because
that approach is, itself, unreliable. Accordingly, the fact that Mr. Sedlik did not use BGP’s
licensing history as a baseline for his actual damages conclusions is not a basis on which to exclude
c. Scarcity Multiplier
Aside from simply asserting that scarce images are “often 3 to 5 times” more valuable than
non-scarce images, Mr. Sedlik’s report contains no explanation for why he uses three to five, rather
than any other numerical range. Moreover, Mr. Sedlik testified that he understands the term
“scarce” to refer to a situation where “there’s not enough images to satisfy demand[.]” ECF 16315 at 279. His report contains no explanation for his apparent conclusion that there was an
imbalance between the supply of Lykoi cat photographs and the demand for them, let alone any
explanation for why that purported imbalance justified an increase in their value of three to five
times the value of a non-scarce cat photograph. While those omissions are likely the result of
Plaintiff’s counsel’s instruction to Mr. Sedlik to assume that the photographs were both rare and
scarce, ECF 163-3 at 11 (Assumption M), experts must verify the assumptions they are given—
especially assumptions like this one, which had a monumental impact on Mr. Sedlik’s calculation
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of BGP’s actual damages. FedEx Ground Package Sys. v. Applications Int’l Corp., 695 F. Supp.
2d 216, 224 (W.D. Pa. 2010) (excluding an expert report based on assumed facts the expert “could
have and should have independently verified.”); JMJ Enterprises, Inc. v. Veneto Italian Ice, Inc.,
No. 97-CV-0652, 1998 WL 175888, at *8 (E.D. Pa. Apr. 15, 1998) (excluding an expert’s
testimony regarding a company’s projected future sales because he “did nothing to bridge the
‘analytical gap’ between [plaintiff’s] actual sales and his projection.”); Mosaid Techs. Inc. v. LSI
Corp., No. 10-192-RGA, 2014 WL 807877, at *2-3 (D. Del. Feb. 28, 2014) (excluding expert
testimony on lost profits because the expert relied on assumptions in a business plan provided to
him by the plaintiff, without independently verifying those assumptions).
Mr. Sedlik offers two ways in which he purportedly verified the assumption that
photographs of Lykoi cats were both rare and scarce. First, he writes in his surrebuttal report that
a search for “lykoi” on www.gettyimages.com yielded only 17 photographs, whereas a search for
“cat” returned over 400,000 photographs. ECF 163-14 at 13 (Sedlik Surrebuttal Report). This
search occurred on June 21, 2019—two months after Mr. Sedlik issued his initial report—so it
could not have supported the conclusions he reached in his initial report. Id. Regardless, though,
Mr. Sedlik’s search demonstrates nothing about the demand for the respective photographs and,
correspondingly, their value. Second, Mr. Sedlik testified at his deposition that, after he issued his
reports in this case, he spoke to three photographers who confirmed his belief that photographs of
Lykoi cats were rare. ECF 163-15 at 176 (Sedlik Deposition). Putting aside the fact that these
anecdotal conversations occurred after Mr. Sedlik formed his opinions and issued his reports in
this case, the conversations also do not shed any light on the images’ value. At best, they show
that other industry experts agreed that there were few available Lykoi cat photographs in 2015.
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But that does not mean that the photographs at issue here were, therefore, three to five times more
valuable than the non-Lykoi cat images Mr. Sedlik used to obtain the license fee quotes.
To make matters worse, it does not appear to the Court (at least at this stage) that there is
any evidence in the record to support Mr. Sedlik’s conclusion that the demand for Lykoi cat
photographs outpaced the supply of them so significantly that their value was three to five times
what it otherwise would have been. For example, in Leonard, a Third Circuit case affirming the
denial of a motion for new trial that challenged the district court’s admission of Mr. Sedlik’s
testimony, there was evidence in the record that the photographs at issue were “unique and sought
after because there were very few photographers who had the technical skill necessary to produce
such work.” 834 F.3d at 382. Even the defendant in that case had admitted that the photos were
“extremely valuable.” Id. In contrast, here not only did Mr. Sedlik fail to independently verify
the assumption given to him by Plaintiff’s counsel, but, on the present record, that assumption
appears baseless. BGP may, of course, try to prove this at trial, but the Court cannot allow an
expert to testify that the images are three to five times more valuable than any other image when
neither he nor anyone else has provided any basis for that conclusion.
Mr. Sedlik’s conclusions that the images at issue were “scarce”—and that their scarcity
justified a three to five time increase in their value—appears to rest on nothing more than his
“subjective belief or unsupported speculation.” Daubert, 509 U.S. at 590. Because those opinions
fall short of the standards set forth in Rule 702 and Daubert, they must be excluded.
4. Legal Conclusions
Defendants object to many of Mr. Sedlik’s opinions because they “actually constitute legal
conclusions and are, therefore, inadmissible.” ECF 163-1 at 22. The Court agrees.
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“[O]pinion testimony that states a legal standard or draws a legal conclusion by applying
law to the facts is generally inadmissible.” United States v. McIver, 470 F.3d 550, 562 (4th Cir.
2006). Legal conclusions are identified by “determining whether ‘the terms used by the witness
have a separate, distinct and specialized meaning in the law different from that present in the
vernacular.’” Id. (quoting United States v. Barile, 286 F.3d 749, 760 (4th Cir. 2002)).
Defendants point to the following list of Mr. Sedlik’s opinions that, they argue, constitute
inadmissible legal conclusions:
Plaintiff has sole discretion to determine the license fee to be paid by licensees.
ECF 163-3 at 28 (Sedlik Report).
In an email exchange between Johnny Gobble and WENN whereby WENN
licensed the Photographs from Ms. Gobble, Dr. Gobble clearly and
unambiguously prohibited WENN from distributing the Photographs. Id. at 2829.
The license extended to WENN in this email exchange contained five
conditions. Id. at 30.
Dr. Gobble did not grant WENN the right to sublicense the cat photographs to
third parties. Id.
Sedlik’s various interpretations of the scope of the purported license. Id. at 3132.
Sinclair infringed on Plaintiff’s copyright. Id. at 34.
Sinclair recklessly, intentionally and willfully infringed on Plaintiff’s
copyrights. Id. at 40-42.
Sinclair knowingly committed a DMCA violation. Id. at 43.
Sinclair committed over 7,000 copyright violations. Id. at 44.
Sinclair was put on notice that it was infringing on Plaintiff’s copyrights when
Sinclair received a subpoena in 2017 in the Tennessee Litigation. ECF 163-14
(Sedlik Surrebutal Report).
The purportedly false photo credits harmed Plaintiff. Id. at 13-14.
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Watermarks are considered copyright management information under 17
U.S.C. § 1202. Id. at 14.
Plaintiff is entitled to recover statutory damages at the highest rate (i.e. statutory
damages that are triggered by proof of the defendant’s “willfulness”). ECF
163-3 at 40-45 (Sedlik Report).
ECF 163-1 at 23. The Court agrees that each of these opinions constitutes an impermissible legal
Plaintiff argues that “[i]t seems quite absurd that Sedlik, who is the world’s leading expert
on the definitions and terms of art used in photograph licenses . . ., the scope of those licenses, and
the industry custom and practice on how photograph licenses are implemented and what rights are
conveyed depending on the language of the license would not be permitted to opine on these
issues.” ECF 170 at 19. Plaintiff misunderstands the nature of Mr. Sedlik’s conclusions. Mr.
Sedlik is free to testify about his knowledge and expertise on photograph licenses, the typical scope
of those licenses, and industry customs and practices. What he may not do, however—and what
his report impermissibly does at times—is apply the facts in this case to the law. For example, the
conclusion that the license between BGP and WENN contained five conditions, or that
“Defendants acted with reckless disregard for BGP’s copyrights, knowingly and willfully
infringing on BGP’s copyrights,” are not “factual opinions but rather bald conclusions” about the
ultimate legal issues in this case. Navarro, 2021 WL 868586, at *11. Mr. Sedlik may testify to
his industry expertise, but he may not simply parrot BGP’s legal arguments and lend them the
imprimatur of expert testimony.
5. Disgorgement of Profits
Plaintiff also seeks Mr. Sedlik’s expert testimony on the “causal nexus between
Defendants’ infringement and profits received from advertisements on Defendants’ websites.”
ECF 170 at 20. Because the Court will grant Defendants’ motion for summary judgment on the
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issue of profit damages, the Court need not address the issue of whether Mr. Sedlik should be
permitted to testify on the causal nexus between the Defendants’ alleged infringement and the
advertising revenue they collected in connection with the articles at issue.
In sum, Mr. Sedlik may testify about the methodology he used to arrive at the fair market
value of a license to use one of the images at issue. He may not, however, testify: that the fair
market value of BGP’s lost licensing fees is between $18,636,647.50 and $31,061,079.10; that the
Defendants would have needed 2,729 separate licenses to use the images; that the images were
scarce; or that the images were three to five times more valuable than the stock photographs Mr.
Sedlik used to obtain his license fee quotes. Additionally, while he may testify about his expertise
in the photography industry, and the common norms and practices in that industry, he may not
draw legal conclusions by applying the facts in this case to the law as he understands it.
iii. Gary Elsner
Defendants’ expert Gary Elsner was retained to rebut the proffered testimony of Mr. Sedlik.
ECF 169 at 4-5. BGP now asks the Court to exclude Mr. Elsner’s testimony because it “is
unhelpful and irrelevant because it relates entirely to the licensing and valuation of stock
photographs” (Mr. Elsner’s area of expertise), whereas, according to BGP, the photographs in this
case are not stock photographs. ECF 166 at 2.
As an initial matter, while BGP argues that Mr. Elsner’s testimony would be “irrelevant”
because it would only relate to the licensing and valuation of stock photographs, Mr. Sedlik’s
methodology also relies exclusively on the valuation of stock photographs. ECF 163-3 (Sedlik
Report). Thus, although the Court has substantially limited Mr. Sedlik’s proffered testimony, if
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he testifies, Mr. Elsner’s uncontested expertise in stock photography licensing and valuation is
unquestionably relevant to rebut Mr. Sedlik’s methodology.
The parties also dispute whether the photographs at issue here are stock photographs.
ECF 166 at 5; ECF 169 at 9-10. Because BGP argues they are not, BGP argues Mr. Elsner is
unqualified to testify about them. No matter which side is correct, it is simply not true that Mr.
Elsner’s expertise is limited to the valuation and licensing of stock photographs. ECF 169 at 1213 (listing cases on which he has worked in the last 10 years that do not involve stock
photography); ECF 169-12 at 8 (Elsner Report: “My consulting services have included . . .
Valuation of stock photo collections as well as personal photography collections.”) (emphasis
Regardless, these disputes are red herrings. As BGP has made clear in its advocacy on Mr.
Sedlik’s behalf, and as explained above, it is perfectly permissible under the lost licensing fee
approach to use the fair market valuation of stock photographs to approximate the actual damages
caused by infringing uses of non-stock photographs. Both sides have hired experts to try to do just
that. ECF 163-3 (Sedlik Report using license fee quotes for stock photographs as the basis for his
actual damages calculations); ECF 169-12 at 26-27 (Elsner Report attempting to calculate the fair
market value of the photographs based on (1) their actual history of being licensed as stock
photographs and (2) a hypothetical “microstock” licensing model). Therefore, whether or not Mr.
Elsner’s expertise is limited to stock photography, his testimony is unquestionably relevant and
potentially helpful to the jury. 5
While it may be moot given this Court’s limitations on Mr. Sedlik’s proffered testimony, the only
substantive aspect of Mr. Elsner’s report that BGP challenges is his opinion on the use of scarcity
multipliers. ECF 166 at 7. The only basis for that challenge is “Elsner’s knowledge of multipliers
. . . is based upon caselaw from over fifteen years ago[,]” and that he “ha[s] not kept current with
the legal developments regarding multipliers[.]” Id. at 7-8. Whether a damages multiplier is
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Accordingly, BGP’s motion to exclude his testimony will be denied. 6
B. Motions for Summary Judgment
The parties have filed cross-motions for summary judgment on BGP’s copyright
infringement claims and its DMCA claims. This Court will grant in part and deny in part each
motion and will address the copyright infringement claims before turning to the DMCA claims.
i. Legal Standard
Under Rule 56(a) of the Federal Rules of Civil Procedure, summary judgment is
appropriate only “if the movant shows that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.” The moving party bears the burden of
showing that there is no genuine dispute of material facts. See Casey, 823 F. Supp. 2d at 348
(citing Pulliam Inv. Co. v. Cameo Props., 810 F.2d 1282, 1286 (4th Cir. 1987)). If the moving
party establishes that there is no evidence to support the non-moving party’s case, the burden then
shifts to the non-moving party to proffer specific facts to show a genuine issue exists for trial. Id.
The non-moving party must provide enough admissible evidence to “carry the burden of proof in
[its] claim at trial.” Id. at 349 (quoting Mitchell v. Data Gen. Corp., 12 F.3d 1310, 1315-16 (4th
legally appropriate under prevailing caselaw is a question for this Court, not for Mr. Elsner or any
other expert. Mr. Elsner’s citation to Stehrenberger v. J.R. Reynolds Tobacco Holdings Inc., 335
F. Supp. 2d 466 (S.D.N.Y. 2004) was to discuss that decision’s impact on the stock photography
industry, not to opine on the legal propriety of damages multipliers. ECF 169-12 at 43. In any
event, to the extent the issue of a multiplier remains relevant after the exclusion of Mr. Sedlik’s
anticipated testimony, Mr. Elsner may testify about whether, in his opinion, a multiplier is
necessary to approximate the actual damages BGP suffered in this case, and his allegedly deficient
knowledge of the caselaw or legal developments on that topic has nothing to do with whether he
is qualified to value those damages.
The parties dispute the admissibility of a transcript of Mr. Elsner’s testimony in his deposition in
the case of D’Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc., No. 1:17-CV-000747-LM
(D.N.H.). Because this Court has not relied on that testimony, the Court declines to resolve the
question of its admissibility.
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Cir. 1993)). The mere existence of a scintilla of evidence in support of the non-moving party’s
position will be insufficient; there must be evidence on which the jury could reasonably find in its
favor. Id. at 348 (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251 (1986)). Moreover, a
genuine issue of material fact cannot rest on “mere speculation, or building one inference upon
another.” Id. at 349 (quoting Miskin v. Baxter Healthcare Corp., 107 F. Supp. 2d 669, 671 (D.
Additionally, summary judgment shall be warranted if the non-moving party fails to
provide evidence that establishes an essential element of the case. Id. at 352. The non-moving
party “must produce competent evidence on each element of [its] claim.” Id. at 348-49 (quoting
Miskin, 107 F. Supp. 2d at 671). If the non-moving party fails to do so, “there can be no genuine
issue as to any material fact,” because the failure to prove an essential element of the case
“necessarily renders all other facts immaterial.” Id. at 352 (quoting Celotex Corp. v. Catrett, 477
U.S. 317, 322-23 (1986); Coleman v. United States, 369 F. App’x 459, 461 (4th Cir. 2010)
(unpublished)). In ruling on a motion for summary judgment, a court must view all of the facts,
including reasonable inferences to be drawn from them, “in the light most favorable to the party
opposing the motion.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88
(1986) (quoting United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)).
ii. Copyright Infringement (Count I)
1. Prima Facie Elements of Direct Copyright Infringement
“To establish a claim for copyright infringement a plaintiff must prove that it owned a valid
copyright and that the defendant copied the original elements of that copyright.” Humphrys &
Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d 532, 537 (4th Cir. 2015). The Court
addresses these elements in turn.
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Under 17 U.S.C. § 410(c), “[i]n any judicial proceedings the certificate of a registration
made before or within five years after first publication of the work shall constitute prima facie
evidence of the validity of the copyright and of the facts stated in the certificate.”
BGP has proven that it owns valid copyright registrations for 50 of the 51 photographs at
issue in this case. BGP has four copyright registrations, each effective October 30, 2015, which
was within five years of the photographs’ stated first publication. ECF 168-5-8. Each of the
registrations issued in Ms. Gobble’s name, but she then assigned the rights, title, and interest in
and to the registrations and underlying works to BGP. ECF 168-9. While Defendants challenge
the validity of one of the copyright registrations (that challenge is addressed below), they do not
dispute that the four registrations, valid or not, encompass 50 of the 51 photographs at issue here.
Accordingly, for 50 of the 51 photographs at issue here, BGP has satisfied the ownership prong.
“Copying can be proven through direct or circumstantial evidence.” Humphrys & Partners
Architects, 790 F.3d at 537. “[T]he Copyright Act does not require that the infringer know that he
is infringing or that his conduct amount to a willful violation of the copyright owner’s rights.”
CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544, 549 (4th Cir. 2004). However, copyright
infringement “nonetheless requires conduct by a person who causes in some meaningful way an
infringement.” Id. In the context of the Internet, that volitional requirement is distinct from
“passive ownership and management of an electronic Internet facility[.]” Id. In other words, the
Copyright Act requires a level of volition that goes beyond serving as a mere “conduit of
information and data that connects users over the Internet.” Id. at 550-51 (emphasis in original).
Rather, “[t]here must be actual infringing conduct with a nexus sufficiently close and causal to the
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 24 of 55
illegal copying that one could conclude that the machine owner himself trespassed on the exclusive
domain of the copyright owner.” Id. at 550.
Defendants argue that, with respect to 22 defendants, there is no evidence that they engaged
in volitional activity sufficient to constitute direct infringement. Plaintiff responds that “the word
‘volition in the copyright context does not really mean an ‘act of willing or choosing’ or ‘an act of
deciding,’ but merely the unremarkable proposition that proximate causation historically underlies
copyright infringement liability no less than other torts.” Bell v. Wilmott Storage Servs., LLC, 12
F.4th 1065, 1081 (9th Cir. 2021) (quotations and citations omitted). While that statement is true,
the volition requirement is not a nullity—it requires some conduct sufficient to demonstrate that
the alleged infringer proximately caused the alleged harm to the copyright owner. Thus, on the
one hand “a website or service that provides only a platform for third-party users to upload,
download, and share content, i.e., merely using the platform as a vehicle, has not engaged in
volitional conduct . . . because it is the users who cause infringement.” Id. On the other hand,
“one who ‘exercised control’ or ‘selected any material for upload, download, transmission, or
storage’ has acted volitionally.” Id. (quoting VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723, 732
(9th Cir. 2019)). In Bell for example, the plaintiff met the volition requirement by demonstrating
that the defendant “hosted the . . . photo on its servers in a manner that was accessible to the
public.” Id. In CoStar, by contrast, the Fourth Circuit held that an internet service provider did
not engage in volitional conduct where a third-party user posted copyrighted images that were
displayed on the defendant’s website. CoStar, 373 F.3d at 550.
Plaintiff acknowledges that the only people who actively posted the articles were Mr.
Sistek (an employee of Sinclair Media of Seattle, LLC), Ms. Ota (an employee of Sinclair), and
Ms. Faugl (an employee of Sinclair Communications, LLC). ECF 168-1 at 5 (“Sistek had posted
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the Original Article not only to the KOMO News website but also on the websites of twelve other
Sinclair stations.”); ECF 168-1 at 5 (“Ota distributed the New Article to all fifty of the Station
Defendants’ websites[.]”); ECF 168-1 at 6 (“Faugl . . .published the Revised Article to two station
websites[.]”). The question here, then, is whether any Defendants other than Sinclair Media of
Seattle, LLC, Sinclair, and Sinclair Communications, LLC engaged in volitional conduct sufficient
to be held liable for direct infringement. In other words, did those Station Defendants function
more like an independent website that stored and displayed copyrighted works (as in Bell), or more
like a conduit where third parties posted the infringing material (as in CoStar)?
Plaintiff has not put forward any evidence that would allow a reasonable jury to conclude
that the other 22 Defendants engaged in the requisite volitional conduct to be held liable for direct
infringement. Plaintiff argues that these Station Defendants are “not ‘third parties’ or ‘third-party
users[,]’ [r]ather, they are employees of parent or sister entities, posting on each other’s websites
for their mutual benefit.” ECF 183 at 2-3. And, without citation to any evidence, Plaintiff asserts
that they “assumed responsibility for and maintained the server from which BGP’s Infringing
photographs were publicly displayed.” Id. at 3. None of that demonstrates the requisite volitional
conduct. The fact that the Station Defendants assumed responsibility for the content on their
websites says nothing about whether that content was posted or maintained by virtue of their
volitional acts. The Defendants’ evidence, which BGP leaves uncontested, suggests it was not.
Sinclair’s Chief Digital Officer, Kevin Cotlove, testified that, with respect to the stations
where Sistek initially published the photographs, the images were stored on a server owned and
controlled by Clickability. ECF 185-2 at 45-46 (Cotlove Deposition). When asked whether they
were “also stored locally on hard drives at each of the stations[,]” he responded “[n]ot that we have
records of.” Id. at 46. Counsel for BGP followed up, “But you don’t know?[,]” and Mr. Cotlove
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 26 of 55
responded, “Don’t know.” Id. Similarly, with respect to the stations where Ota and Faugl
published the photographs (via the Storyline software), the images were stored on servers in the
Amazon Web Services “ecosystem.” Id. When asked whether these stations stored the images
locally, Mr. Cotlove testified that, like the images published through Clickability, he did not know
for sure but that Defendants had no records showing the stations stored the photographs locally.
Id. at 46, 49-50.
The facts show, then, that just three actors—Mr. Sistek, Ms. Ota, and Ms. Faugl—
published the articles and images across all the Defendants’ websites. BGP has not marshalled
any evidence to demonstrate that any of the Defendants (other than those that employed Mr. Sistek,
Ms. Ota, and Ms. Faugl) engaged in any volitional conduct in connection with the alleged
infringement. Therefore, while BGP has demonstrated a prima facie case of direct copyright
infringement against Sinclair Media of Seattle, LLC, Sinclair, and Sinclair Communications, LLC,
the Defendants’ motion for summary judgment must be granted with respect to the other 22 Station
2. Affirmative Defenses
Defendants argue that their use of the photographs was permitted by two separate licenses
granted by BGP—the first, from BGP to WENN, and the second from BGP to Ms. Ota. ECF 1711 at 12-23. BGP argues that Defendants’ use of the images “was in excess of or inconsistent with
While some of the Station Defendants shared links to the photographs on their social media
accounts, ECF 171-1 at 12 n.4, the Second Amended Complaint does not allege that this conduct
constituted infringement, and BGP does not argue here that such conduct satisfies the volitional
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any purported licenses.” ECF 168-1 at 12. As explained below, the parties have raised a factual
dispute as to the scope of both potential licenses.
i. WENN License
Plaintiff first argues that Defendants are barred by both claim and issue preclusion from
arguing that the WENN license was a valid license because a federal court in Tennessee “found
that WENN had not obtained any license from Gobble and was, thus, a copyright infringer.” ECF
183 at 3.
Issue preclusion (or collateral estoppel) bars “successive litigation of an issue of fact or
law actually litigated and resolved in a valid court determination essential to the prior judgment,
even if the issue recurs in the context of a different claim.” Hatley v. Watts, 917 F.3d 770, 777
(4th Cir. 2019) (quoting Taylor v. Sturgell, 553 U.S. 880, 892 (2008)).
Plaintiff’s issue preclusion argument fails. The question of whether WENN had obtained
a license from BGP was not “actually litigated” in the Tennessee litigation because the court there
merely accepted the truth of the allegations in the Complaint after WENN defaulted. Brittney
Gobble Photography, LLC, 2019 WL 2446997, at *6; see Russell v. Atl. Cas. Ins. Co., No. RDB06-2162, 2007 WL 9780535 (D. Md. July 30, 2007) (holding under Maryland law that a previous
default judgment had no preclusive effect because the relevant issue had not been “actually
litigated” and there had been no evidentiary development or fact-finding); In re O’Quinn, 401 B.R.
739, 743 (M.D.N.C. 2009) (“Ordinarily under federal law, a judgment entered by default will not
support the application of collateral estoppel because ‘[i]n the case of a judgment entered by . . .
default, none of the issues is actually litigated.’”) (alteration in original) (quoting Restatement
(Second) of Judgments § 27 cmt. E (1982)) (collecting cases).
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 28 of 55
Plaintiff’s argument for claim preclusion fares no better. Claim preclusion applies when
there is: “(1) a final judgment on the merits in a prior suit; (2) an identity of the cause of action in
both the earlier and later suit; and (3) an identity of parties or their privies in the two suits.” Martin
v. American Bancorporation Retirement Plan, 407 F.3d 643, 651 (4th Cir. 2005) (quoting Pueschel
v. United States, 369, F.3d 345, 354-55 (4th Cir. 2004)).
Clearly the defendant in the Tennessee litigation (WENN) is not identical to Defendants
here, and, therefore, claim preclusion may only apply if there is privity between WENN and these
Defendants. For purposes of claim preclusion, “[t]here are three generally recognized categories
of non-parties who will be considered in privity with a party to the prior action and who will
therefore be bound by a prior adjudication: (1) a non-party who controls the original action; (2) a
successor-in-interest to a prior party; and (3) a non-party whose interests were adequately
represented by a party to the original action.” Id. Defendants here did not control the original
action, they are not WENN’s successor-in-interest, and WENN certainly did not adequately
represent Defendants’ interests because it defaulted.
Accordingly, neither claim preclusion nor issue preclusion bars Defendants’ argument that
they received a license from WENN to use the photographs at issue.
2. Scope of the WENN License
The parties dispute whether the WENN license permitted Defendants’ eventual use of the
images. ECF 171-1 at 12-15; ECF 183 at 6-8. Ultimately, the dispute turns on whether BGP
knew, or should have known, that WENN was asking permission to syndicate the photographs in
a way that made them available to its network of subscribers. BGP argues that Dr. Gobble’s
November 2, 2015 email stating “I do not give permission for these images to be distributed”
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clearly prohibited WENN’s eventual circulation of the images to its subscribers, including Sinclair.
ECF 183 at 7.
The parties agree that, because Dr. Gobble was located in Tennessee when he responded
to Clare Penn’s initial email request for the images, Tennessee law applies to the construction of
the license agreement. 8 ECF 183 at 6; ECF 171-1 at 13 n.5. “Under general principles of contract
law, a contract must result from a meeting of the minds of the parties in mutual assent to the terms.”
Sweeten v. Trade Envelopes, Inc., 938 S.W.2d 383, 386 (Tenn. 1996). “[W]hether a meeting of
the minds occurred is a question of fact.” Hazlett v. Family Dollar Stores of Tenn., Inc., No. 3:20cv-00804, 2021 WL 663665, at *6 (M.D. Tenn. Feb. 19, 2021) (quoting Wofford v. M.J. Edwards
& Sons Funeral Home Inc., 490 S.W.3d 800, 807 (Tenn. Ct. app. 2015)).
It is unclear here whether the parties reached a meeting of the minds and, if they did, on
what terms they agreed. Defendants argue Dr. Gobble should have known that WENN’s business
model included syndicating photographs to a network of subscribers, especially because Ms. Penn
stated in her initial email that “we syndicate news/features/images to publications worldwide.”
ECF 171-1 at 13. On the other hand, BGP argues that, whatever WENN’s business model, it
should have interpreted Dr. Gobble’s response as a prohibition on circulating the images to its
Although this dispute does not appear to depend on what law is applied, the Court agrees that
Tennessee law is likely applicable. In a federal question case where a state law issue arises, the
district court “applies the choice-of-law rules of the state in which it sits unless a compelling
federal interest directs otherwise.” Baker v. Antwerpen Motorcars Ltd., 807 F. Supp. 2d 386, 389
n.13 (D. Md. 2011). Maryland “follows the doctrine of lex loci contractus, applying the
substantive law of the place where the contract was formed.” RaceRedi Motorsports, LLC v. Dart
Mach., Ltd., 640 F. Supp. 2d 660, 665 (D. Md. 2009). Under Maryland law, “the place of
formation is said to be the state ‘where the last act necessary to make the contract binding occurs.’”
Baker DC, LLC v. Baggette Constr., Inc., 378 F. Supp. 3d 399, 406 (D. Md. 2019) (quoting
Montage Furniture Servs., LLC v. Regency Furniture, Inc., 966 F. Supp. 2d 595, 523 (D. Md.
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 30 of 55
subscribers. ECF 183 at 7. And to the extent WENN had any confusion about Dr. Gobble’s
response, BGP argues it should have sent a clarifying email. Id.
Accordingly, a jury needs to decide whether a license was formed, when it was formed,
and on what terms it was formed.
3. Revocability and Consideration
Underscoring the parties’ dispute about whether a license was formed, and, if so, what its
terms were, BGP argues that assuming a license was granted, it was not supported by consideration
and was, therefore, revocable at will. Specifically, the parties argue about whether WENN’s
acceptance of Dr. Gobble’s restriction that WENN could not use the images in an article “that is
purposefully derogatory toward our breed” constituted consideration for use of the images. ECF
183 at 9-10.
Under Tennessee law, “consideration exists when the promisee does something that it is
under no legal obligation to do or refrains from doing something which it has a legal right to do.”
Brown Oil Co. v. Johnson, 689 S.W.2d 149, 151 (Tenn. 1985). “Any consideration, however
small, will support a promise.” Smith v. Riley, No. E2001-00828-COA-R3-CV, 2002 WL 122917,
at *3 (Tenn. Ct. App. Jan. 30, 2002).
Again, a factual dispute exists as to whether a license was formed and, if so, what its terms
were. The Court will note, however, that an agreement not to disparage the Lykoi breed can
certainly constitute consideration for use of BGP’s photographs. BGP argues that, “by abiding by
the non-disparagement condition, WENN did not actually refrain from doing something that it had
a legal right to do: WENN was and is still free to disparage the Gobbles or the Lykoi breed as
much as it wants—just not while using the Photographs.” ECF 183 at 9-10. This argument misses
the point; of course WENN was and is free to disparage the Lykoi breed without using the
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photographs. But assuming a license was created, WENN was presumably foregoing the legal
right it would have had in the absence of this restriction to disparage the Lykoi breed while using
the photographs. While a jury will need to sort through the factual issues of whether a license was
created and what its terms were, that promise can constitute consideration on WENN’s behalf.
4. Sistek’s Revisions and Ratification
The parties agree that after communicating with Ms. Gobble, Mr. Sistek added her name
back to the photographs, along with a link to her Facebook page, after he had initially published
them without credit to her. BGP argues that those corrections only lasted for one day, ECF 183 at
12, whereas Defendants argue they lasted for much longer. ECF 171-1 at 19. The competing
evidence on both sides of this issue is thin, at best, but as far as the Court can tell, the parties have
raised a factual dispute on this question which they can seek to resolve at trial.
Further, Defendants argue that when Ms. Gobble was communicating with Mr. Sistek
about these credits, she “must have realized . . . that KOMO had obtained the Photographs from
WENN. Ms. Gobble never expressed to Sistek that WENN had no authority to provide her images
to KOMO or that he must remove the name ‘WENN.com’ from the photo credits.”
Accordingly, Defendants argue that Ms. Gobble ratified Defendants’ publishing the photographs
after having received them from WENN. Ms. Gobble testified, however, that on November 8,
2015, she “contacted [KOMO] because my credit was not given. I had not made the connection
of who WENN was. I assumed they had licensed through REX Features and had done the licensing
and all that correctly and I said it needs to be corrected.” ECF 168-10 at 142 (BGP 30(b)(6)
Again, this dispute raises questions of Ms. Gobble’s state of mind and her credibility that
must be decided by a factfinder. There is undisputed evidence in the record that Ms. Gobble
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communicated with Mr. Sistek about the credits attached to the photographs, including while those
credits attributed the photographs to “WENN.com.” Id.; ECF 171-35 at 5 (showing original
posting of the article with photograph credit to “WENN.com.”). The jury may well believe Ms.
Gobble that she did not realize KOMO received the photographs from WENN. But a reasonable
jury could also find that she must have known that fact, and that her failure to tell Mr. Sistek that
WENN had no authority to provide BGP’s photographs to KOMO ratified KOMO’s publication
ii. Ota License
BGP argues that Ms. Ota exceeded the scope of the license it granted to her by using the
non-watermarked, high-resolution, photographs that were contained in the Dropbox link Dr.
Gobble sent to WENN, rather than the watermarked, low-resolution, photographs Dr. Gobble had
given her permission to use. Moreover, BGP argues that although Ms. Ota had promised to give
BGP credit for the photographs, she changed the credits from Mr. Sistek’s revised article (giving
credit to BGP), replaced them with either “By WENN.com” or “Brittney Gobble Photography via
WENN.com,” and deleted the link to Ms. Gobble’s Facebook page. ECF 168-1 at 5-6.
The parties have raised multiple factual disputes regarding the Ota License. First, the
parties disagree whether the license granted to Ms. Ota conferred any meaningful rights at all—in
other words, if Defendants already had license (via WENN) to use the photographs Ms. Ota used,
then the scope of the license granted to her is irrelevant. ECF 183 at 12. As explained above, that
issue depends on questions of fact that must be resolved by a jury. Second, the parties disagree as
to how many of the photographs Ms. Ota used also appeared (in low-resolution and watermarked
copies) on Ms. Gobble’s website and Facebook page. ECF 171-1 at 20; ECF 168-1 at 15. As
Defendants point out, Ms. Gobble has been inconsistent on that question. Compare ECF 168-1 at
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15 (“[S]ixteen of the Photographs were not embodied in Social Media Images[.]”) with ECF 16854 (Decl. of Brittney Gobble ¶ 5: “13 of the Photographs embodied in the Dropbox Images were
not embodied in the Social Media Images.”). For their part, Defendants argue that 43 of the
photographs Ms. Ota used also appeared on Ms. Gobble’s website and Facebook pages, leaving
just 8 that did not. 9 ECF 171-1 at 20.
The resolution of that dispute matters, because it relates to an important legal question
raised by the Defendants: whether, as a matter of copyright law, BGP had the ability to grant a
license to use only certain copies (i.e. the low-resolution, watermarked, copies of the images) of
copyrighted works, or whether that requirement was merely a contractual covenant, the violation
of which would not give rise to an infringement claim. ECF 185 at 10 (collecting cases). Plaintiff’s
briefing ignores this issue completely. The cases on which Defendants rely, however, appear
persuasive. Graham v. James, 144 F.3d 229, 236-37 (2d Cir. 1998) (requirement to provide
authorship credit was a covenant, limiting the plaintiff to a breach of contract claim); Davis v.
Tampa Bay Arena, Ltd., 8;12-CV-60-T-30MAP, 2013 WL 3285278, at *7-9 (M.D. Fla. June 27,
2013) (requirement that licensee only use low-resolution photographs was a covenant, limiting the
plaintiff to a breach of contract claim); Yellowpages Photos, Inc. v. YP, LLC, 418 F. Supp. 3d 1030,
1049 (M.D. Fla. 2019) aff’d sub nom Yellow Pages Photos, Inc. v. YP, LLC, 856 F. App’x 846,
Defendants argue that they are entitled to summary judgment because, “[t]here is no evidence
that the other Photographs at issue were not also on her website, or that unwatermarked versions
of the Photographs were not on her website. Plaintiff cannot say what was on the website because
Plaintiff didn’t keep a copy before she sold it and did not keep a record of which photos were
posted and taken down.” ECF 171-1 at 20 (emphasis in original). While there is certainly no proof
of these facts, there is evidence that could allow a reasonable jury to determine that the photographs
on BGP’s website and Facebook page were different, in both number and quality, than those in the
Dropbox folder obtained from WENN. See, e.g., ECF 168-10 at 79 (BGP 30(b)(6) Deposition: Q:
“The pictures that were in your Dropbox folder, did you ever display them on your website? A:
Not those same versions. Only the watermarked low resolution versions would have been
displayed on my website.”).
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863 (11th Cir. 2021) (license provision requiring copyright notice was a covenant). Nonetheless,
because the relevance of this legal question depends on several factual findings—for example, that
Ms. Ota did not already have permission via the WENN license to use the photographs from the
Dropbox folder, and that, assuming she did not, she used photographs that did not appear on BGP’s
website or Facebook page—the Court will defer resolution of this question until the factual record
establishes its relevance.
b. Willful Infringement
In order to demonstrate that an infringement under Section 504(c)(2) was willful, the
plaintiff must show that the infringer “‘either had actual knowledge that it was infringing the
owner’s copyrights or acted in reckless disregard of those rights.’” Patrick Collins, Inc. v.
Gillispie, No. 11-CV-01776-AW, 2012 WL 666001, at *3 (D. Md. Feb. 23, 2012) (quoting
Lowry’s Reports, Inc. v. Legg Mason, Inc., 271 F. Supp. 2d 737, 753 (D. Md. 2003)); Lyons P’ship,
L.P. v. Morris Costumes, Inc., 243 F.3d 789, 799-800 (4th Cir. 2001). Accordingly, willfulness
“‘hinges on the alleged infringer’s state of mind—whether the infringer knew that its particular
use violated the owner’s copyrights or willfully ignored the possibility.’” Patrick Collins, Inc.,
2012 WL 666001, at *3 (quoting Lowry’s Reports, Inc., 271 F. Supp. 2d at 753).
BGP argues that Defendants’ infringement was willful for five primary reasons: (1) that
Defendants were put on notice of their alleged infringement when WENN allegedly sent a “kill
notice” to Sinclair; (2) that a 2017 subpoena sent to Sinclair in connection with the Tennessee
litigation put Sinclair on notice of Defendants’ alleged infringement; (3) that the Defendants did
not promptly remove the infringing photographs from public display; (4) that Ms. Ota intentionally
removed credits to the Plaintiff on the photographs; and (5) that Defendants continued to use the
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photographs on their social media pages until May, 2019. The Court addresses these issues in
i. Kill Notice
According to BGP, after the articles had been posted to the Station Defendants’ websites,
Ms. Gobble contacted WENN on November 12, 2015 to demand that WENN cease its
infringement. ECF 168-1 at 6. That conversation apparently prompted WENN to distribute a kill
notice to “its affiliates that had received the infringing images, including Sinclair.” Id. at 7.
Defendants deny ever receiving the kill notice.
This issue was previously litigated in the parties’ discovery dispute over whether Sinclair
should be sanctioned for spoliating emails that, according to BGP, would have shown that it
received the kill notice. Then-Magistrate Judge Deborah L. Boardman wrote a detailed opinion
concluding that “[t]here is no evidence that the emails at issue actually existed, and there is an
inference that they did not exist.” ECF 113 at 1. As Judge Boardman noted, “it is not apparent
from the face of the kill notice exactly who received it.” Id. at 11-12. BGP relied there, as it does
here, on deposition testimony from WENN’s CEO Lloyd Beiny purporting to state that WENN
sent the kill notice to Sinclair. Judge Boardman ruled, though, that Mr. Beiny’s testimony was not
admissible, and that, even if it were, his statements “would not support more than the possibility
that Sinclair may have received the notice.” Id. at 14. Finally, Judge Boardman found that Sinclair
had put forth “credible evidence that it never received the Kill Notice.” Id. at 14-15.
The only evidence that was not before Judge Boardman on which BGP now relies is an
interrogatory response from WENN stating that “on or around November 12, 2015, WENN
removed the Article from its inventory of content and sent an urgent ‘kill notice’ to media outlets
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and agents with instructions to delete the Article.” 10 ECF 183 at 10 n.3. Like the deposition
testimony discussed above, this response is not evidence that Sinclair received the kill notice. And
in the absence of any evidence to support that assertion, no reasonable jury could find that Sinclair
received the notice.
ii. 2017 Subpoena
The parties do not dispute, however, that Sinclair received a subpoena in September, 2017,
in connection with BGP’s lawsuit against WENN in Tennessee. BGP argues that the subpoena
should have put BGP on notice that it was infringing Ms. Gobble’s copyrights. Defendants argue
that “[t]he Subpoena did not state that Sinclair or any of the other defendants were violating
Plaintiff’s copyrights.” ECF 171-1 at 18. Moreover, Defendants argue that when “Sinclair’s
paralegal called Plaintiff’s counsel . . . to find out ‘what this was all about,’ he did not tell her that
Sinclair had violated Plaintiff’s copyrights, that Sinclair’s use of the Photographs was infringing,
or that Plaintiff might sue Sinclair and its stations.” Id. Finally, Defendants suggest that Judge
Boardman already ruled that the subpoena did not put Sinclair on notice of their alleged
The Court disagrees with Defendants’ characterization of Judge Boardman’s ruling with
respect to the subpoena. Judge Boardman was deciding a spoliation dispute and, thus, whether the
subpoena “should have put Sinclair on notice of possible litigation against it” such that Sinclair
should have known it had an obligation to preserve certain evidence. ECF 113 at 17 (emphasis
added). Here, however, the question is whether the subpoena put Sinclair on notice that its use of
BGP’s images was infringing. To be sure, Judge Boardman recognized that Sinclair “believed it
Defendants argue this response is inadmissible. ECF 185 at 8. Because the response is not
evidence that Sinclair received the notice, the issue of its admissibility is irrelevant.
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had permission—indeed had paid WENN to obtain permission—to print the Images.” ECF 113
at 17. And Sinclair is, of course, free to prove that at trial. The question whether the subpoena
put Sinclair on notice of its alleged infringement, however, involves questions about Sinclair’s
credibility and state of mind that must be decided by a factfinder.
iii. Prompt Removal
BGP argues that it took several months for Defendants to remove the allegedly infringing
photographs even after they had been sued in this case. ECF 168-1 at 14. Defendants argue,
however, that it only took a few weeks. ECF 171-1 at 19. According to Defendants, “Sinclair
required time to retain outside counsel, investigate the allegations in the complaint and determine
how to properly remove the Photographs so that no metadata would be lost and evidence would
be preserved.” Id. Competing evidence could support either side’s position. See ECF 171-1 at
19; ECF 185 at 10-12; ECF 183 at 11. Therefore, the promptness with which Defendants removed
the allegedly infringing photographs—and what that says about Defendants’ level of willfulness—
is a factual dispute that must be decided by the jury.
iv. Ota’s Alterations
BGP argues that before Ms. Ota posted the article to each of the Station Defendants’
websites, she intentionally removed the credits to BGP, including the link to Ms. Gobble’s
Facebook page. ECF 183 at 27. BGP argues that 35 of the photographs were credited to
“WENN.com,” whereas sixteen were credited to “Brittney Gobble via WENN.com.” Id. They
argue, therefore, that Ms. Ota must have knowingly falsified the credits. Id. Defendants, however,
argue that the changed credits were the result of a technical error when the photographs and their
metadata were migrated from the Clickability platform to Storyline that was not discovered until
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discovery in this case. ECF 171-1 at 37. A factfinder must, therefore, decide what happened, and
whether any of Ms. Ota’s actions are indicative of Defendants’ alleged willfulness.
v. Defendants’ Social Media Pages
According to BGP, Defendants continued to display the allegedly infringing images on
their social media pages until May, 2019. ECF 168-1 at 21. Defendants argue that “the Complaint
does not allege infringement . . . because of any social media posts by Defendants.” ECF 171-1 at
19. Defendants are correct that that Complaint does not allege that these social media posts
constitute separate acts of infringement. However, BGP is free to attempt to prove to the jury that
the fact that Defendants did not remove the photographs from their social media pages until May,
2019 is somehow indicative of Defendants’ willfulness.
c. Distribution of Copyrighted Material
The Copyright Act recognizes distribution as one of the exclusive rights of copyright,
which includes the rights to “distribute copies . . . of the copyrighted work to the public by sale or
other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 106(3). “[T]o establish
‘distribution’ of a copyrighted work, a plaintiff must show that an infringed work was disseminated
‘to the public.’” Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 203 (4th
Cir. 1997) (quoting 17 U.S.C. § 106(3)). Distribution of a work is distinct from “displaying” that
work. See Advance Magazine Publishers, Inc. v. Leach, 466 F. Supp. 2d 628, 637 (D. Md. 2006).
BGP relies on the Fourth Circuit’s decision in Hotaling to argue that Defendants should be
held liable for distributing BGP’s photographs. ECF 183 at 14. In Hotaling, the Fourth Circuit
held that “[w]hen a public library adds a work to its collection, lists the work in its index or catalog
system, and makes the work available to the borrowing or browsing public, it has completed all
the steps necessary for distribution to the public[.]” Hotaling, 118 F.3d at 203. BGP analogizes
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the facts in Hotaling to the facts here, arguing that Defendants have “downloaded copies of the
Photographs from WENN (added the Photographs to their collection), created articles with the
Photographs on their Clickability and Storyline content management systems (listed them in their
index or catalog system), and posted the articles for the public to access (made the Photographs
available to the browsing public).” ECF 183 at 14.
“While this Court is bound by Fourth Circuit precedent, the Court does not read Hotaling
as broadly as [BGP] urges.” BMG Rights Mgmt. (US) LLC v. Cox Communications, Inc., 149 F.
Supp. 3d 634, 666 (E.D. Va. 2015), aff’d in part, rev’d in part, 881 F.3d 293 (4th Cir. 2018).
Courts around the country “have struggled to define the scope of the holding in Hotaling.” Sony
Music Entertainment v. Cox Communications, Inc., 464 F. Supp. 3d 795, 810 (E.D. Va. 2020); see
Atlantic Recording Corp. v. Howell, 554 F. Supp. 2d 976, 982 (D. Ariz. 2008) (collecting cases).
However, courts in this Circuit, and outside of it, have held that “Hotaling did not announce a rule
of general applicability, but instead articulated a principle that applies only in cases where it is
impossible for a copyright owner to produce proof of actual distribution.”
Entertainment, 464 F. Supp. 3d at 810 (quoting BMG Rights Mgmt. (US) LLC, 149 F. Supp. 3d at
666); see Arista Records, Inc. v. MP3Board, Inc., No. 00 Civ. 4660, 2002 WL 1997918, at *4
(S.D.N.Y. Aug. 29, 2002) (“While a copyright holder may not be required to prove particular
instances of use by the public when the proof is impossible to produce because the infringer has
not kept records of public use, see Hotaling, 118 F.3d at 204, in the present case there has been no
showing that the record companies did not have access to such data.”). Here, of course, “proof of
actual distribution” would not be impossible for BGP to demonstrate, if any such distribution
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“The general rule, supported by the great weight of authority, is that infringement of the
distribution right requires an actual dissemination of either copies or phonorecords.” BMG Rights
Mgmt. (US) LLC, 149 F. Supp. at 666 (quoting Atlantic Recording Corp., 554 F. Supp. 2d at 981
(internal quotations and alteration omitted)) (collecting cases). Numerous courts have recognized
that this reading of the distribution right comports with Section 106(3)’s explanation of that right,
whereas Hotaling’s “making available” standard does not.
Id. (collecting cases); Atlantic
Recording Corp., 554 F. Supp. 2d at 983 (collecting cases). Thus, “Section 106(3) requires a
distribution ‘by sale or other transfer of ownership, or by rental, lease, or lending.’” Id. BGP does
not even attempt to offer such evidence. This Court must, therefore, grant summary judgment in
Defendants’ favor on the issue of distribution.
d. Fair Use
Defendants argue that, even if they infringed BGP’s copyrights, their use of the copyrighted
works should be considered “fair use.” Under 17 U.S.C. § 107, “the fair use of a copyrighted work
. . . for purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research
is not an infringement of copyright.”
The statute provides four factors to evaluate when
considering whether a use of a copyrighted work constitutes a “fair use”: (1) the purpose and
character of the use, including whether such use is of a commercial nature or is for nonprofit
educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of
the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon
the potential market for or value of the copyrighted work. 17 U.S.C. § 107(1)-(4). These factors
must be “weighed together, in light of the purposes of copyright.” Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569, 576 (1994). While the Supreme Court recently emphasized that “fair use
depends on the context[,]” Google LLC v. Oracle America, Inc., 141 S. Ct. 1183, 1199 (2021),
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historically, the first and fourth factors have received primary focus. Philpot v. Media Research
Center, Inc., 279 F. Supp. 3d 708, 714 (E.D. Va. 2018) (explaining that Fourth Circuit precedents
have placed primary focus on the first factor and that the Supreme Court has emphasized the
importance of the fourth factor). Ultimately, the test of whether a secondary use of a copyrighted
work is “fair” is “whether the progress of human thought ‘would be better served by allowing the
use than by preventing it.’” Brammer v. Violent Hues Productions, LLC, 922 F.3d 255, 262 (4th
Cir. 2019) (quoting Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013)).
i. Purpose and Character
In assessing the first factor, “the primary inquiry is whether the use communicates
something new and different from the original or otherwise expands its utility, that is, whether the
use is transformative.” Id. (quoting Fox New Network, LLC v. v. Tveyes, Inc., 883 F.3d 169, 176
(2d Cir. 2018)) (internal quotations and alterations omitted). If the secondary use is of a
commercial nature, it is less likely to be considered “fair” than if it is for an educational or
nonprofit purpose. Id. “The ‘central purpose’ of the first factor’s transformation inquiry is to
determine ‘whether the new work merely ‘supersede[s] the objects’ of the original creation.” Id.
(quoting Campbell, 510 U.S. at 579 (alteration in original)).
A transformative work does
“something more than repackage or republish the original copyrighted work.” Id. at 263 (quoting
Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014)). The more transformative a
work, the more likely it is that the transformed use of it will be considered a “fair use,” and the
less significant the other factors will be. Id.
The transformation inquiry is largely objective and involves comparing the original work
to the secondary use of it. Id. However, the transformation inquiry also considers the context in
which the work appears. “[E]ven a wholesale reproduction may be transformed when placed in a
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‘new context to serve a different purpose,’ but the secondary use still must generate a societal
benefit by imbuing the original with new function or meaning.” Id. (quoting Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007)).
Secondary uses of copyrighted
photographs have been considered “fair use” when the secondary use has journalistic value. Id. at
264 (citing Núñez v. Caribbean Int’l News Corp., 235 F.3d 18, 23 (1st Cir. 2000) (modeling
photograph transformed when published as part of newspaper coverage of a related controversy)).
However, when considering whether the wholesale reproduction of a copyrighted photograph
constitutes “fair use,” the Fourth Circuit has been primarily concerned about whether the use of
the copyrighted photograph is “important to the accurate representation of historical events.” Id.
That is because “absent fair use, a copyright holder could ‘exert enormous influence over new
depictions of historical subjects and events’ and effectively remove certain historical moments
from the public domain.” Id. (quoting Bouchat v. Baltimore Ravens Ltd. P’ship, 737 F.3d 932,
944 (4th Cir. 2013)).
In Bouchat, for example, the Fourth Circuit held that a secondary use of a football team’s
logo “was transformed through its appearance in a documentary-like television program and in a
display case featuring memorabilia from the team’s history.” Id. In Brammer, by contrast, the
Fourth Circuit held that it was not fair use for a film festival operator to use a copyrighted picture
of the Adams Morgan neighborhood in Washington, D.C. on the website’s list of nearby tourist
attractions. Id. There, the court held that, unlike in the Bouchat case, “Violent Hues’ ability to
accomplish its purpose of communicating information about area tourist attractions would not be
hindered if it had to comply with Brammer’s copyright. And society would not be left the poorer
for it.” Id. Moreover, the court found it “telling” that the website operator “d[id] not contest that
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its use provide[d] any distinct sort of ‘public benefit’ that furthers the ‘development of art, science,
and industry.’” Id. (quoting Sundeman v. Seajay Soc’y, Inc., 142 F.3d 194, 203 (4th Cir. 1998)).
Here, Defendants reproduced BGP’s photographs without making any changes to them and
for a commercial purpose. Those facts weigh against fair use. Nonetheless, Defendants’ use here
was more like the secondary use at issue in Bouchat than the one in Brammer—that is, Defendants
used the photographs to accompany a newsworthy story documenting the creation of a new,
visually-distinctive breed of cats. See Núñez, 235 F.3d at 23 (the “transformation of the works
into news—and not the mere newsworthiness of the works themselves—[weighed] in favor of fair
use under the first factor of § 107.”). Because the articles focused, primarily, on the cats’
distinctive look, the photographs were a critical piece of the story. Thus, unlike in Brammer,
Defendants’ ability to “accomplish its purpose of communicating” the information contained in
the articles would have been hindered if it had to comply with BGP’s copyrights. Brammer, 922
F.3d at 264. Accordingly, the first factor weighs in favor of fair use.
ii. Nature of the Copyrighted Work
In assessing the second factor, courts must evaluate “the thickness or thinness of the
author’s exclusive rights and ask whether or not the work had been published at the time of
secondary use.” Id. at 266 (internal quotations and alterations omitted). “When determining the
thickness of a photograph’s copyright, a court weighs the ‘range of creative choices available in
selecting and arranging the photo’s elements,’ examining aspects like ‘lighting, camera angle,
depth of field, and selection of foreground and background elements.’” Id. (quoting Rentmeester
v. Nike, Inc., 883 F.3d 1111, 1120-21 (9th Cir. 2018)). As the Fourth Circuit has explained, “[t]he
ultimate task is to separate the ‘facts or ideas set forth in a work,’ which are not protected, from
the ‘author’s manner of expressing those facts and ideas,’ which is protected.” Id. at 266-67
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(quoting Authors Guild v. Google, Inc., 804 F.3d 202, 214 (2d Cir. 2015)). Photographs, however,
“have long received thick copyright protection[,]” even where they depict reality. Id. at 267
Ms. Gobble clearly made creative choices when taking the photographs here. The cats are
often posed, dressed up with jewelry and clothing, they are photographed at different angles, and
they appear in settings curated with props, backgrounds, and lighting. Those choices demonstrate
that the photographs are entitled to “thick” copyright protection.
The parties also appear to agree that the photographs had been published before. ECF 183
at 16. However, “[t]he Supreme Court has never suggested that publication status is relevant to
all invocations of fair use.”
Brammer, 922 F.3d at 267 (emphasis in original).
photographs are “visual works . . . created, and sold or licensed, usually for repetitive viewing[,]”
their publication status has been considered less consequential in the fair use analysis than, for
example, literary works where the “‘right of first publication’ is particularly significant because
such works, unlike photographs or melodies, are often considered only once.” Id. (first quoting
Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, (1985), then quoting Ringgold
v. Black Entertainment Television, Inc., 126 F.3d 70, 79 (2d Cir. 1997)). Accordingly, “the
published status of the [photographs] has no relevance here[,]” and their “thick” copyright
protection weighs against a finding of fair use. Id.
iii. Amount and Substantiality of the Portion Used
The key question with respect to the third factor is “whether ‘no more was taken than
necessary’ to accomplish the secondary user’s purpose.” Id. at 267-68. Here, there is no dispute
that Defendants published the photographs at issue in their entirety, without changing them in any
way. The third factor, therefore, weighs against fair use.
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iv. Effect of the Use on the Potential Market
The fourth factor requires courts to consider “not only the extent of market harm caused
by the particular actions of the alleged infringer, but also whether unrestricted and widespread
conduct of the sort engaged in by the defendant would result in a substantially adverse impact on
the potential market for the original.” Id. at 268 (quoting Campbell, 510 U.S. at 590).
The Court needs additional factual development in order to properly evaluate the extent of
the market harm that was actually caused by the Defendants’ conduct, and whether “widespread
conduct of the sort engaged in by the defendant would result in a substantially adverse impact on
the potential market” for these photographs. Id. Defendants have put forth evidence that BGP
licensed its photographs for free at least 37 times, ECF 163-19, and that even when BGP partnered
with REX Features to sell the photographs, BGP only generated $306.03. ECF 163-3 at 28 (Sedlik
Report). Those facts appear undisputed. However, although the Court is convinced that the market
for BGP’s photographs is not between $18-31 million as BGP and its expert Mr. Sedlik suggest,
even Defendants’ experts discuss scenarios in which the market for BGP’s photographs may have
exceeded the licensing fees BGP has collected in the past. See, e.g., ECF 169-12 at 25-27 (Elsner
Report). The Court is, therefore, satisfied that a factual dispute exists, and that summary judgment
is not appropriate at this stage.
The Court will note, however, that while it is ultimately Defendants’ burden to prove the
fair use defense, BGP will need to do more than show that its photographs generated a mere
$306.03 in licensing fees in order to rebut Defendants’ evidence and avoid the defense’s
application. BGP must prove either actual market harm, or that the widespread availability of the
photographs would suppress a demand for the photographs that would have existed absent that
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availability. Bouchat, 737 F.3d at 943 (evaluating whether the secondary use of the logo at issue
would have “act[ed] as a market substitute for” the logo itself) (quotation omitted).
e. Fraud on the Copyright Office
Defendants argue that BGP’s copyright for 38 of its photographs is invalid. ECF 171-1 at
26. BGP registered those 38 photographs together as a “unit of publication.” ECF 168-6. To
qualify for registration as a “unit of publication,” however, “[a]ll of the works claimed in the
application must be first published as a single unit on the same date.” United States Copyright
Office, Compendium of U.S. Copyright Office Practices, § 1107.2. The parties appear to agree
that the 38 photographs were not “first published as a single unit on the same date.” ECF 171-1 at
27-28; ECF 183 at 18-19.
Under the Copyright Act, a registration is valid unless “inaccurate information was
included on the application . . . with knowledge that it was inaccurate[,]” and it contains
information that “if known, would have caused the Register of Copyrights to refuse registration.”
17 U.S.C. § 411(b)(1). “In any case in which inaccurate information . . . is alleged, the court shall
request the Register of Copyrights to advise the court whether inaccurate information, if known,
would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(2).
Defendants rely on a Ninth Circuit case that rejected the notion that “the knowledge inquiry
is . . . whether [the plaintiff] knew that [the registration] would run afoul of the single-unit
registration requirements[.]” Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194,
1200 (9th Cir. 2020). Instead, the Ninth Circuit held that because the plaintiff knew “that certain
designs included in the registration were confined and, therefore, were each published separately
to exclusive customers[,]” the knowledge requirement was satisfied, triggering the district court’s
requirement to refer the case to the Copyright Office. The Supreme Court has granted certiorari
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in that case to answer the question whether Section 411 “requires referral to the Copyright Office
where there is no indicia of fraud or material error as to the work at issue in the subject copyright
registration.” Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 20-915 (Jan. 4, 2021) (Petition for
Writ of Certiorari); Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 141 S. Ct. 2698 (2021)
(granting certiorari). The Court heard oral argument in the case on November 8, 2021.
Accordingly, it is likely that the Supreme Court will soon clarify the knowledge standard
in Section 411 and the prerequisites for referral to the Copyright Office. The Court will, therefore,
hold this issue in abeyance pending the Supreme Court’s decision in Unicolors.
3. Contributory Copyright Infringement (Count II)
Count Two of the Second Amended Complaint asserts a claim for Contributory Copyright
Infringement against Sinclair. “When analyzing a contributory infringement claim, courts assess
two elements: participation and knowledge.” Levi v. Twentieth Century Fox Film Corp., No.
3:16CV129, 2017 WL 1227933, at *8 (E.D. Va. Mar. 31, 2017). Defendants argue that “[i]n its
contributory infringement claim, Plaintiff disregards a crucial element of contributory
infringement—that the defendant must have ‘knowledge of the infringing activity.’” ECF 171-1
at 30 (quoting CoStar Grp. Inc. v. Loopnet, Inc., 164 F. Supp. 2d 688, 696 (D. Md. 2001), aff’d
373 F.3d 544 (4th Cir. 2004)). However, there is a factual dispute related to Sinclair’s knowledge
of the alleged infringing activity. Thus, for the same reasons that the Court has denied the parties’
motions for summary judgment with respect to the Defendants’ willfulness (explained above),
those motions will also be denied on the issue of contributory infringement. 11
Of course, BGP’s contributory infringement claim depends on an ultimate finding that a third
party (i.e. a Defendant other than the one to be held contributorily liable) is liable for direct
infringement. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 n.2 (9th Cir. 2001)
(“Secondary liability for copyright infringement does not exist in the absence of direct
infringement by a third party.”).
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 48 of 55
4. Vicarious Copyright Infringement (Count III)
In Count Three, BGP asserts a claim for vicarious copyright infringement against all
Defendants. To establish vicarious copyright infringement, “a copyright owner must demonstrate
that the entity to be held so liable: (1) possessed the right and ability to supervise the infringing
activity; and (2) possessed an obvious and direct financial interest in the exploited copyrighted
materials.” Nelson-Salabes, Inc. v. Morningside Development, LLC, 284 F.3d 505, 513 (4th Cir.
Whether or not Sinclair possessed the right and ability to supervise the Station Defendants’
alleged infringement, BGP’s argument fails on the “direct financial interest” prong. 12 This element
requires “a causal relationship between the infringing activity and any financial benefit a defendant
reaps[.]” BMG Rights Mgmt. (US) LLC, 149 F. Supp. 3d at 665. “Such a direct financial interest
arises where the infringing activity is a ‘draw’ for customers and significant financial benefits
‘flow directly’ from the infringing activity that the defendant helps to facilitate.” Goldstein v.
Metropolitan Regional Information Systems, Inc., No. TDC-15-2400, 2016 WL 4257457, at *5
(D. Md. Aug. 11, 2016).
BGP’s only argument with respect to the “direct financial interest” prong is that, “[t]he
Station Defendants’ websites contain advertisements, and Defendants earn income from those
advertisements based on the number of impressions.” ECF 183 at 23. First, BGP’s purported
support for that argument—citations to less than two pages of deposition testimony by Sinclair’s
corporate designee, David Bochenek—does not stand for the proposition for which it is cited. In
the first excerpt, Mr. Bochenek was testifying, in broad terms, about how “O&O” (owned-and-
BGP’s assertion of vicarious copyright infringement against all Defendants is perplexing, as the
Second Amended Complaint does not make clear how the Station Defendants, who presumably
did not supervise anyone, could be liable for vicarious infringement.
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operated) advertising revenue is “typically” generated. ECF 183-21 at 37:1-2. In the second
excerpt, Mr. Bochenek testifies that the revenue listed on Exhibit 37 “represents the cat revenue
from the different ads[,]” id. at 41:13-15, but then says just one page later that he does not recall
what the revenue listed on Exhibit 37 represents. Id. at 42:16-20. Second, even if BGP is correct
that Defendants receive advertising revenue on a per-impression basis, that fact does nothing to
show that “the availability of infringing photographs . . . drew customers to” Defendants’ websites,
or even that BGP’s photographs drew them to click on the articles at issue here. Id.
In Goldstein, Judge Chuang explained, for example, that, “vicarious liability can exist
against a landlord who charges rent to vendors at a swap meet where pirated music was sold,
[Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 263 (9th Cir. 1996)], or the owner of a chain
of department stores at which counterfeit recordings were sold by a concessionaire, Shapiro,
Bernstein and Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963).” Id. But the court
distinguished those cases because the defendant’s “website ha[d] as its main purpose the posting
of real estate listings, a purpose distinct from trafficking in infringing material[,]” and, therefore it
was not “reasonable to conclude that the availability of infringing photographs . . . drew customers
to subscribe” to the defendant’s service. Id. The same is true here. The purpose of Defendants’
websites is to provide news, not to display infringing materials. Plaintiff has not presented any
evidence to the contrary, nor have they even attempted to present evidence that connects
Defendants’ alleged infringement to viewers’ interest in the articles. Defendants’ motion for
summary judgment must, therefore, be granted on BGP’s vicarious infringement claim.
5. Profit Damages for Copyright Infringement
For very similar reasons, the Defendants’ motion for summary judgment must be granted
on BGP’s claim for profit damages. The Copyright Act allows successful plaintiffs to recover
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profit damages “that are attributable to the infringement and are not taken into account in
computing the actual damages.” 17 U.S.C. § 504(b). The Fourth Circuit has held that “whether
at the summary judgment stage or at trial, a plaintiff seeking profit damages . . . must prove (1) the
amount of the claimed revenue streams, and (2) that there is some reasonable relationship ‘between
the infringement and those particular profit streams.’” Dash, 731 F.3d at 329-30 (quoting Bonner
v. Dawson, 404 F.3d 290, 294 (4th Cir. 2005)) (alterations omitted). The reasonable relationship
element “requires the plaintiff to (1) allege a ‘conceivable connection’ between the infringement
and the claimed revenues, and (2) offer nonspeculative evidence that a causal link exists.” Id.
(quoting Bouchat v. Baltimore Ravens Football Club, Inc., 346 F.3d 514, 522-23 (4th Cir. 2003)).
Like its vicarious infringement claim, BGP’s sole argument on its entitlement to profit
damages is that “Defendants’ website[s] [that] display the photographs contain advertisements
that paid based on the number of impressions.” ECF 183 at 34. Plaintiff cites to the same two
pages of Mr. Bochenek’s deposition testimony described above. Id. at 35. Thus, Plaintiff has not
even attempted to identify an amount of revenue to which it claims it is entitled (aside from
presumably claiming all of it). And it does not put forth any “non-speculative evidence” that
Defendants’ alleged “infringement could reasonably be viewed as one of the causes of the claimed
revenues.” Dash, 731 F.3d at 330-31. Defendants’ motion for summary judgment will, therefore,
be granted with respect to profit damages.
iii. DMCA (Count IV)
In Count 4, Plaintiff argues that the Defendants have violated Sections 1202(a) and 1202(b)
of the DMCA. Section 1202(a) of the DMCA prohibits a person from “knowingly and with the
intent to induce, enable, facilitate or conceal infringement provide copyright management
information that is false.” 17 U.S.C. § 1202(a). Similarly, Section 1202(b) makes it unlawful for
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 51 of 55
a person, “without the authority of the copyright owner or the law,” either to “intentionally remove
or alter any copyright management information,” 17 U.S.C. § 1202(b)(1), or to “distribute” work
“knowing that copyright management information has been removed or altered,” 17 U.S.C. §
Copyright management information (“CMI”) is defined, in relevant part, as “any of the
following information conveyed in connection with copies . . . of a work . . . including in digital
form . . .”:
(1) The title or other information identifying the work, including the information
set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of
the work, including the information set forth in a notice of copyright.
17 U.S.C. § 1202(c). BGP argues that Defendants falsified and distributed the CMI attached to
the photographs by changing their file names and the credit information associated with them.
ECF 168-1 at 24. Defendants do not dispute that this information qualifies as CMI under Section
1. 17 U.S.C. § 1202(a)
To prove a violation of Section 1202(a), a plaintiff must establish three elements: “(1) the
provision or distribution of CMI; (2) that the defendant knew that the CMI was false; and (3) that
the Defendant acted with the intent to conceal copyright infringement.” Michael Grecco Prods.
v. Alamy, Inc., 372 F. Supp. 3d 131, 137 (S.D.N.Y. 2019) (citing Krechmer v. Tantaros, 747 F.
App’x 6, 9 (2d Cir. 2018); Aaberg v. Francesca’s Collections, Inc., No. 17-CV115 (AJN), 2018
WL 1583037, at *6 (S.D.N.Y. Mar. 27, 2018)).
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 52 of 55
Even if BGP could prove that Defendants knowingly distributed false CMI (which is far
from clear), they do not present evidence that could allow a reasonable jury to conclude that any
Defendant was “act[ing] with the intent to conceal copyright infringement.” Michael Grecco
Prods., 372 F. Supp. 3d at 137. BGP argues that Ms. Ota intended to conceal an infringement
because she knew that Ms. Gobble owned the photographs, yet she attributed them to
“WENN.com,” “By WENN.com,” or “Brittney Gobble Photography via WENN.” The fact that
some of the photographs attached to the article Ms. Ota published were attributed to “Brittney
Gobble Photography via WENN” is strong evidence that she was not acting to conceal any
infringement. While the attribution may have been incorrect, it strains credulity to argue that
someone attempting to conceal copyright infringement would do so by including the rightful
copyright owner’s name (whose name includes the name of the photographer who took the
photographs) in the attribution attached to the photographs.
BGP next argues that Ms. Ota’s intent can be inferred because she violated Sinclair’s
corporate policy by failing to “have Brittney email her, indicating that she was the sole owner of
each of [the photographs].” ECF 168-1 at 28. That fact also indicates nothing about Ms. Ota’s
intent. As explained, prior to publishing the photographs, Ms. Ota emailed Dr. Gobble to obtain
permission to use them. To be sure, there are disputed factual questions about whether Ms. Ota
had permission to publish the photographs from the Dropbox folder, and whether she properly
attributed them, but the undisputed evidence suggests that Ms. Ota knew who the rightful owner
of the photographs was and sought the Gobbles’ permission to use them. She may have violated
corporate policy, and she may even have infringed BGP’s copyrights, but her effort to contact the
Gobbles to obtain their permission undermines BGP’s argument that she was intentionally trying
to conceal copyright infringement. Similarly, BGP baselessly argues that the timing of Ms. Ota’s
Case 1:18-cv-03403-SAG Document 194 Filed 11/17/21 Page 53 of 55
email to Dr. Gobble is “suspect” because it was one day after Ms. Gobble had emailed Mr. Sistek
to complain about his improper attributions. Id. But BGP presents no evidence that Ms. Ota knew
about Mr. Sistek’s communication with Ms. Gobble, nor any other reason why the timing of her
email was indicative of her intent to conceal infringement.
Simply put, there is no evidence that Ms. Ota, or anyone else, was intentionally trying to
conceal copyright infringement.
The Court must, therefore, grant Defendants’ motion for
summary judgment on BGP’s Section 1202(a) claim.
2. 17 U.S.C. § 1202(b)
Section 1202(b)(2) prohibits “intentionally remov[ing] or alter[ing] any copyright
management information, . . . knowing, or . . . having reasonable grounds to know, that it will
induce, enable, facilitate, or conceal an infringement[.]” 17 U.S.C. § 1202(b).
With respect to Ms. Ota, there is no evidence that she, in fact, altered or removed any CMI.
BGP argues that the CMI on the photographs Ms. Ota published was different from the CMI on
the photographs in the Dropbox folder. But that is not evidence that Ms. Ota altered or removed
any CMI, and it certainly is not evidence that she did so with “actual knowledge” that the removal
or alteration was “without authority of the copyright owner or the law,” or that she was intending
to “induce, enable, facilitate, or conceal an infringement.” Id. As explained above, even if she did
alter or remove CMI, the evidence strongly suggests she did not have actual knowledge that those
alterations were unlawful or unauthorized, and that she did not intend to “induce, conceal, or
facilitate” any infringement.
With respect to Mr. Sistek, although he admitted to editing the metadata associated with
the photographs in the Dropbox folder, he also explained to Ms. Gobble that it was a mistake, he
explained the cause of that mistake, and then he changed the metadata back to an attribution that
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was acceptable to her (undermining BGP’s argument that he intended to “induce, facilitate, or
conceal” infringement). ECF 168-19 at 4-5. Defendants’ motion for summary judgment must,
therefore, be granted on BGP’s Section 1202(b)(2) alteration/removal claim.
A similar lack of evidence forecloses BGP’s claim that Defendants violated Section
1202(b)(3)’s distribution provision. That provision requires proof of four elements: “(1) the
existence of CMI in connection with a copyrighted work; and (2) that a defendant distributed works
or copies of works; (3) while knowing that CMI has been removed or altered without authority of
the copyright owner or the law; and (4) while knowing, or having reasonable grounds to know that
such distribution will induce, enable, facilitate, or conceal an infringement.” Mango v. BuzzFeed,
Inc., 970 F.3d 167, 171 (2d Cir. 2020) (alterations and quotations omitted). “Section 1202(b)(3)
contains a so-called ‘double scienter’ requirement: the defendant who distributed improperly
attributed copyrighted material must have actual knowledge that the CMI ‘has been removed or
altered without authority of the copyright owner or the law,’ as well as actual or constructive
knowledge that such distribution ‘will induce, enable, facilitate, or conceal an infringement.’” Id.
(quoting 17 U.S.C. § 1202(b)).
For the same reasons explained above, no reasonable jury could find that BGP can meet
this double-scienter requirement. Even if BGP could show that any of the Defendants distributed
CMI “while knowing that CMI ha[d] been removed or altered without authority of the copyright
owner or the law[,]” they have no evidence that would support a jury’s finding that they knew or
had reasonable grounds to know that “such distribution [would] induce, enable, facilitate, or
conceal an infringement.” Id. Summary judgment is therefore warranted for Defendants on the
entirety of Count IV.
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3. Vicarious Violations of the DMCA (Count V)
Although the parties do not independently address it, the Second Amended Complaint
asserts a claim for vicarious violations of the DMCA. However, because there is no evidence of
any direct violation of the DMCA, the Court will grant Defendants’ motion for summary judgment
with respect to BGP’s vicarious DMCA claim.
For the reasons set forth above, Defendants’ motion to exclude Mr. Sedlik’s testimony,
ECF 163, will be GRANTED in part and DENIED in part. BGP’s motion to exclude Mr. Elsner’s
testimony, ECF 166, will be DENIED. BGP’s motion for summary judgment, ECF 168, will be
DENIED except with respect to its argument on the Defendants’ Fraud on the Copyright Office
affirmative defense, which will be held in abeyance. Defendants’ motion for summary judgment,
ECF 171, will be GRANTED in part and DENIED in part as to Count I, DENIED as to Count II,
and GRANTED as to Counts III, IV, and V. Judgment will be ENTERED in favor of all
Defendants except Sinclair Broadcast Group, Inc., Sinclair Communications, LLC, and Sinclair
Media of Seattle, LLC. A separate order follows.
Dated: November 17, 2021
Stephanie A. Gallagher
United States District Judge
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