Wolk v. Kodak Imaging Network, Inc. et al

Filing 102

OPINION: re: 83 MOTION to Admit Expert Testimony. filed by Sheila Wolk, 77 MOTION for Summary Judgment. filed by Photobucket.com, Inc., 90 MOTION for Summary Judgment. filed by Sheila Wolk. Based upon the facts and conclusions set forth above , Wolk/s motion for partial summary judgment against the Kodak Defendants, motion for summary judgment against Photobucket, motion to amend, motion to admit expert testimony and motion to investigate are denied, and the Defendants' motions for summary judgment are granted. (Signed by Judge Robert W. Sweet on 12/21/2011) (pl) Modified on 1/3/2012 (pl).

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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SHEILA WOLK,
10 Civ. 4135
Plaintiff,
OPINION
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KODAK IMAGING NETWORK, INC., EASTMAN
KODAK COMPANY, and PHOTOBUCKET.COM,

INC. ,

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Defendants.

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A P PEA RAN C E S:

Pro Se
Sheila Wolk

7 West 87th Street, Apt. 2D

New York, NY 10024

Attorneys
Defendants Kodak Imaging Network, Inc.
and Eastman Kodak Company
NIXON PEABODY LLP

100 Summer Street

Boston, MA 02110

By: Gina M. McCreadie, Esq.

437 Madison Avenue

New York, NY 10022

By: Mark D. Robins, Esq.

One Embarcadero Center

San Francisco, CA 94111

By: Talley M. Henry,

Attorneys for Defendant Photobucket.com, Inc.
NORWICK SCHAD & GOERING
110 East 59th Street, 29th Floor
New York, NY 10022
By: Kenneth P. Norwick, Esq.
SATTERLEE STEPHENS BURKE & BURKE LLP
230 Park Avenue
New York, NY 10169
By. Mark Alan Lerner, Esq.

Sweet, D.J.

There are seven motions pending before the Court.
se Sheila Wolk (the "PI

Plaintiff

ntiff" or "Wolk") has

filed motions, pursuant to Fed. R. Civ. P. 56, for both partial
summary judgment against Defendants Kodak Imaging Network, Inc.
and Eastman Kodak Company (collectively, the "Kodak Defendants")
as well as summary judgment against Photobucket.com, Inc.
("Photobucket" and, with the Kodak Defendants, the
"Defendants").

The Kodak Defendants have filed a cross motion

for summary judgment with respect to all counts
complaint pursuant to the same rule.
own similar motion.

Plaintiff's

Photobucket has filed its

In addition to the four summary judgment

motions, also pending before the Court are Plaintiff's motion to
amend, Plaintiff's motion to admit expert testimony and a motion
Plaintiff has filed entitled "Motion To Investigate The
Subordination And Acts Of Perjury By The Defendants."

Upon the findings and conclusions set forth below,
Plaintiff's motion for partial summary judgment against the
Kodak Defendants, motion for summary judgment against
Photobucket, motion to amend, motion to admit expert testimony

1

and motion to invest

e are denied.

Defendants' motions for

summary judgment are granted.

Prior Proceedings

Wolk filed her initial complaint on May 19, 2010 and
an amended complaint on July 6, 2010 (
Compla

"Complaint").

In the

, Wolk seeks declaratory judgment and an injunction and

alleges both direct and secondary copyright infringement and
interference with advantageous business relationships.

Wolk, an

independent artist of fantasy images and sports art, licenses
her images through an exclusive licensing agent.

Wolk alleges

that clients of Photobucket have displayed, copied, modified and
otherwise used her images on its s

in violation

her

copyrights, and that the Defendants have displayed, copied,
prepared derivative works and distributed her images without a
id license.

The Complaint

leges seven counts{ including a

request for a declaratory judgment { a request for an injunction{
contributory copyright infringement by Photobucket{ vicarious
copyright infringement by Photobucket, direct infringement by
Photobucket, direct liability for infringement by the Kodak
2

Defendants and interference with advantageous business relations
by the Kodak Defendants.

There have been several matters upon which the Court
has already passed judgment.

On September 15, 2010, Wolk filed

an Emergency Motion for a Preliminary Injunction.

After

granting requests for extensions of time, the motion was
considered fully submitted on November 3, 2010, and,

an

opinion dated March 17, 2011, Wolk's motion was denied on
grounds that the Plaintiff did not demonstrate a likelihood of
success on the merits and the Plaintiff failed to satisfy the
other criteria necessary to obtain relief.
Wolk filed a motion to compel the release
documents to her proposed expert witness.

On March 22, 2011,
confidential
Plaintiff's motion

was denied on grounds that the Plaintiff had not established her
expert to be a "bona fide professional expert" as required under
the parties' Stipulated Confidentiality Order, but the Plaintiff
was granted leave to move to qualify her proposed expert as an
appropriate witness under Daubert.

Also on March 22, 2011,

aintiff filed a motion to increase the time allotted for
discovery and expert reports.

The motion was granted and

deadlines to complete discovery and serve expert reports were
extended.

On April 11, 2011, Wolk filed a motion to strike
3

deposition testimony of Plaintiff's licensing agent and
information relating to Plaintiff's expert.

Finding no basis

under the Rules of Civil Procedure for this request, the Court
denied the Plaintiff's motion.

There are seven motions that remain pending before the
Court.

On April 8, 2011, Plaintiff filed a "Motion To

Investigate The Subordination And Acts Of Perjury By The
Defendants," and, on April 19, 2011, both the Kodak Defendants
and Photobucket filed separate affirmations in opposition to the
Plaintiff's motion.

On May 4, 2011, Wolk filed a motion for

partial summary judgment against the Kodak Defendants.

In

response, the Kodak Defendants filed both their opposition to
the Plaintiff's motion for partial summary judgment as well as a
cross-motion for summary judgment on all counts.
were marked fully submitted on July 27, 2011.

The motions

Plaintiff filed a

motion to amend her complaint on June 26, 2011, which the Kodak
Defendants have opposed.

On September 13, 2011, Wolk filed a

motion to admit the expert testimony of Dr. Robert Sarvis.
motion was marked fully submitted on October 28, 2011.

The

On

September 23, Photobucket filed a motion for summary judgment
with respect to all counts of the Complaint.

On October 15,

2011, the Plaintiff filed a cross-motion for summary judgment

4

against Photobucket on all counts.

These motions were marked

fully submitted on November 30, 2011.

The Facts

The facts are set forth in the Local Rule 56.1
Statements of Undisputed Fact submitted by Wolk, the Kodak
Defendants and Photobucket.

The facts are not in dispute except

as noted below.

Wolk has been a professional artist for over 40 years.
Working alone, Wolk spends a great deal of time creating and
producing her art.

Some of the images Wolk creates can consume

as much as a year of Wolk's professional time to create and
produce in final form.

The Plaintiff's sole source of income is

the sale or licensing of her art, and Wolk runs an online store
that exclusively sells her art.

The art the Plaintiff creates

is owed by Wolk and is registered with the United States
Copyright Office.

Photobucket is a photo-sharing Internet service
provider that operates a website located at
http://www.photobucket.com.

Photobucket is what is known as a

5

"user-generated content" website, which provides an online
platform for users to post material that the users themselves
upload.

Photobucket enables users who establish a Photobucket

account to upload digital photographs and videos so that they
may be stored and viewed on the website.
ed to Photobucket, of which

The images and videos

are approximately 9

billion, are generated by the users themselves.
video on Photobucket is associat
resource locator, or "URL."
to users to use

Each image or

with a unique uniform

Photobucket does not charge a fee

s website, and Photobucket earns the majority

of its income from advertising revenue.

Eastman Kodak is a company founded in 1889 whose
bus
products.

involves the development of cameras, film and related
In 2001, Eastman Kodak acquired Ofat a , Inc. as a

wholly-owned subsidiary.

In 2005, Ofoto, Inc. changed its name

to Kodak Imaging Network and the anI
became known as KODAK

lery.

KODAK

photography

ce

lery offers its

customers the ability to upload their personal digit
photographs, create and store albums to share with family and
friends, and to order prints of and products containing their
digital photographs.

Ef

ive January 21, 2009, photobucket

and Kodak Imaging Network entered into a Photo Print and

6

Merchandise Agreement (the "Agreement

lf

),

which allowed

Photobucket users to print images obtained from Photobucket on
products available through KODAK Gallery.

Eastman Kodak was not

a party to the Agreement.

At the time this action was commenced, Photobucket
allowed users to submit photos to Photobucket's former business
partner, Kodak Imaging Network, to create prints and other items
incorporating the photographs.

Photobucket states that it did

not control the Kodak Defendants' activities pursuant to this
relationship and that it was not involved in the Kodak
Defendants' fulfillment of orders.
it played no role

a user's

Photobucket also states that

cision to access the Kodak

Defendants' services and no role in the user's selection of
images for which the user desired the Kodak Defendants'
services.

Wolk disputes this characterization of the

relationship between Photobucket and the Kodak Defendants,
stating that Photobucket understood the

ationship under the

Agreement between Photobucket and Kodak Imaging Network to be a
partnership.

Photobucket contends that it has referred to Kodak

Imaging Network colloquially as its former business "partner,"
but disputes the characterization as to how it understood the
relationship.

Photobucket disputes Wolk's contention that
7

Photobucket had the ability to control the activities of the
Kodak Defendants.

Photobucket also avers that Photobucket's

financial benefit from its business relationship with the Kodak
Defendants was not contingent on the particular images submitted
to Kodak Imaging Network by users.

Rather, Photobucket received

the same payment for any image printed by a Kodak Imaging
Network user, regardless of content.

The Kodak Defendants state

that, under the Agreement between Kodak Imaging Network and
Photobucket, Kodak Imaging Network was obligated to pay
Photobucket 50% of "net profits,fi meaning total monthly gross
revenue less certain expenses.

Photobucket's website includes "Terms
available to users of the website.

Use" that are

Under the Terms of Use,

Photobucket users "represent and warrant that

the posting

and use of your Content on or through the Photobucket Services
does not violate the privacy rights, publ

ity rights,

copyrights, contract rights, intellectual property rights or any
other rights of any person."

In addition, the Terms of Use

state:

Protecting Copyrights and Other Intellectual Property.
Photobucket respects the intellectual property of
others, and requires that our users do the same. You

8

may not upload, embed, post, email, transmit or
otherwise make available any material that infringes
any copyright, patent, trademark, trade secret or
other proprietary rights of any person or entity.
Photobucket has the right to terminate the Membership
of Infringers.
If you believe your work has been
copied and posted on or through the Photobucket
Services
a way that constitutes copyright
infringement, please follow the procedures set forth
in the Photobucket copyright and IP Policy.

The Plaintiff states that Photobucket does not require
perspective users to read the Terms of Use in order to register
as a user.

Photobucket does not

spute this

t insofar as

Photobucket only requires users to agree to its Terms of Use in
order to

ster, and Photobucket has no way of requiring users

to actually read the terms.

Photobucket states that it has taken steps in
accordance with the Digital Millennium Copyright Act

(the

"DMCA") that enable copyright owners who believe their rights
are being infringed by Photobucket users to notify Photobucket
and have their content removed.
website advises

According to Photobucket t the

sitors to the website how to complain if they

believe their rights are being infringed and, on every page
where an image is displayed, there is a link
"report inappropriate content.1t

lowing viewers to

Users who click this link are

9

prompted to view Photobucket's "Copyright and Intellectual
Property Policy" and are directed to send Photobucket a notice
of infringement, or "take-down notice."

According to

Photobucket, the website provides instructions for users to send
the take-down notice, informing users of the elements required
under the DMCA to provide Photobucket with the information
necessary to remove the infringing material.

Among other

things, the instructions state: "Identify the material or link
you claim is infringing (or the subject of infringing activity)
and that access to which is to be disabled, including at a
minimum, if applicable, the URL of the link shown on the
Photobucket website where such material may be found."

The

instructions also designate an agent to receive notices of
alleged infringement.

Photobucket has stated that staff members

review each take-down notice to ensure that the copyright holder
has provided the specific URL for each allegedly infringing
image because, if a copyright holder provides only an image, the
website does not have the capability to search the 9 billion
images and videos for infringing material.

According to

Photobucket, if a take-down notice does not provide the URL for
the allegedly infringing content, Photobucket st

f members

contact the copyright holder to request the information.

10

iff states that she has limited knowledge of

The
computers and
science.

no formal education in computers or computer

The knowledge she does have of computers has come from

using a personal computer and not from formal computer training.
Photobucket does not dispute this fact, but highlights that
Wolk, via a notices sent using Photobucket's onl

reporting

system as early as May 2008 and in emails to Defendants'
counsel, has proven

f able to ascertain and report to

Photobucket alleged infringements of her work by URL, the
specific character string that constitutes a re

to an

Internet resource, and that Wolk operates an online retail
store.

Wolk states that when she first noticed Photobucket, she

did not know what a URL was or how it functioned in computer
systems.

According to Photobucket, if a take-down notice with a

URL is received, Photobucket removes the infringing images and
provides the copyright holder with an email informing them that
the content has been removed.

An email is also sent to

user

who posted the allegedly infringing image to allow the user to
of infringement.

the copyright holder's cl
Photobucket states that it

a policy of banning repeat

offenders from using the website.
11

Wolk has stated that the Photobucket software

fers

tools to allow its users to defeat copyright holders' watermark.
Photobucket does not dispute that the software offers editing
toolst but rejects the characterization that these tools are
provided to allow customers to defeat a copyright ownerts
watermark.

Wolk states that Photobucketts search function can,

in some categories, cause a user to have search results with
more than 70% of the images displayed being protected by
copyright.

Photobucket disputes this fact and states that the

websitets search function is entirely dependent on information
supplied by the Photobucket users who post the material.

Wolk

avers that Photobucket received a direct financial benefit from
the alleged copyright infringement of her art and images.
Photobucket disputes this fact, stating that it received the
same share of profits realized by Kodak for infringing and non
infringing images and its revenues were in no way enhanced by or
dependent on the allegedly infringing nature of any particular
image.

Wolk has contended, and Photobucket does not dispute t
that users of Photobucket have copied, displayed and modified
Wolk's copyrighted material

t

and Plaintiff has not given
12

approval for any of these users to copy, display, mOdify or
otherwise use her art.

The

iff states

a

products have

been made using her images by Kodak pursuant to

Agreement

with Photobucket, a fact Photobucket does not dispute to the
extent such products were ordered by Wolk,

proposed expert

Dr. Robert Sarvis or her proposed expert's assistant Nick
Vi

lio.

The Kodak Defendants aver that, during discovery

this action, the Kodak Defendants first became aware of three
placed through KODAK Gallery by Nick Virgilio for
products containing images he obtained from Photobucket at
request of Wolk's potential expert witness, Dr. Robert
s.

Photobucket notes that the

iary record does not

lude any such products having been made prior to the filing
the Complaint.

According to Wolk, Kodak Imaging Network's

standard operating procedure is to visually review each image
product prior to production, a fact
dispute.

With

Kodak Defendants

to Wolk's contention that Kodak Imaging

Network made products using her images, the Kodak Defendants
state that the three orders placed involving Wolk's

were

fulfilled by Kodak Imaging Network's third-party fulfillment
vendors without any human intervention by any employee
Kodak Defendants.

13

the

Wolk avers that Photobucket and the Kodak Defendants
have transformed her images without license or approval and have
transferred her images to subcontractors who have produced
products using her images without license or her approval.
Photobucket disputes these facts,

stating that there is no

evidence that Photobucket transforms images when users decide to
have images made into prints or other Kodak products.
Furthermore, Photobucket states that it does not trans
images, but rather allows users to select images which are then
automatically sent to Kodak Imaging Network, and Photobucket had
no knowledge of the images selected and plays no role in how the
selected images are handled by the Kodak Defendants.

Wolk states that in late 2007 or early 2008, she
became aware that her images were being copied, displayed and
modified by users of Photobucket in violation of her copyrights.
Photobucket does not dispute this fact, but notes that Wolk did
not attempt to notify Photobucket of any purported infringements
until May 9, 2008.

When Wolk did notify Photobucket, she did so

through the website, clicking on the image and selecting an
option which allowed her to "report inappropriate content."
Wolk then selected the "infringes on my copyright" option,
causing a button linking to Photobucket's "Copyright Policy" to
14

appear.

The Copyright Policy did not define URL as an

abbreviation for "uniform resource locator," but the policy did
indicate that a URL link should

included where applicable.

Wolk avers that, even after notifying Photobucket, her images
were still displayed, copied and being modified.

Photobucket

denies this contention, stating that when Wolk identified
infringing images to Photobucket via a proper notice with a URL,
the images were removed.

On May 9, 2008, Wolk, in an init

notice, identified

an alleged infringement of a painting the Plaintiff called
"Sanctuary" and included a URL.

Wolk's notice stated, in part:

"Can you please remove my solely owned copyrighted painting of
'SANCTUARY' from this persons page.

I never gave permissions

for them or anyone to use my artworks in this fashion of
gliiter t graphics t sparkles t messeges, etc.

All my artworks are

copyrighted at the Library of Congress in Washington D.C. and I
am sole owner of

1 copyrights."

In a second notice sent on

the same day, Wolk identified two other images,

ong with URLs,

and stated: "My 'Tranquilityt COPYRIGHTED PAINTING ( copyrighted
in Washington D.C. with the US Copyright Bureau) WHICH I AM SOLE
OWNER OF is in hennesey page of your website .
photobucket .. please remove my artwork from this page

15

"

(ellipses in original) and "please remove these two paintings of
mine that were altered without permissions and grabbed by your
site person to give away or for you to sell as prints .

"

According to Photobucket t on the following daYt
Photobucket advised Wolk that these notices did not fully comply
with Photobucketts or the DMCA's requirements for take-down
notices, and Wolk was provided with instructions on how to
provide a complete and compliant notice.

On May 12, 2008, Wolk

submitted to Photobucket revised notices identifying the images
with URLs for the infringements she referenced in her May 9,
2008 notices.

The same day, Photobucket advised Wolk that it

had removed the alleged infringing images.

On January II, 2010 t Gordon P. Black, Corporate
Counsel for Applejack Art Partners, Inc. sent a take-down notice
to Photobucket.

The notice explained that Applejack Art

Partners, Inc. is the exclusive licensor of Wolk's artwork, and
the notice listed 12 URLs and artwork titles for Photobucket to
remove.

The same daYt photobucket faxed a response stating: "We

received your fax requesting the removal of content infringing
on Sheila Wolk's copyright.

Only one direct link was supplied,

and we are unable to find the images by their titles alone.
16

ease provide the direct links to the images you need removed."
The response included instructions for how to find the direct
link.

Photobucket states that it never received a response to

this January 11, 2010 fax.

Wolk's initial complaint, filed on May 19, 2010, named
15 of her paintings that were
Photobucket.

legedly infringed by

At least six of these alleged infringements had

not been previously identified to Photobucket.

Wolk's initial

complaint did not provide any URLs for her alleged continuing
infringements.

On July 2, 1020, Wolk filed her Amended

Complaint that added 7 more titles of paintings.

The Amended

Complaint noted that, after filing the initial complaint but
prior to filing the amended complaint, Wolk provided an
additional listing of infringing images to Photobucket at
Photobucket's request.

According to Photobucket, the notice

provided 123 URL-specific addresses for alleged infringmenets
and, the day after the notice was received, Photobucket's then­
counsel responded, stating that Photobucket had removed 102 of
the images, but that additional information was required on the
remaining 21 images.

Photobucket states that Wolk never

responded to this request for additional information.

17

On July 171 2010 1 following the filing of the Amended
Complaint

Wolk sent two emails to Photobucket/s couns

I

detailing more than 700 URL-identified alleged infringements.
On July 221 2010 1 Photobucket/s counsel responded: "I am writing
to report to you that Photobucket has taken down all of the
images you identify by specific URL in your two e-mails to me
dated July 17.

As we had previously requested

l

those URLs were

sufficiently complete to enable Photobucket to identify each of
the images that you were seeking to have taken down.1f

According to Wolk

l

sample searches she has conducted

have yielded approximately 3 / 000 infringements of her images.
Wolk states that this represents a small portion of the full
amount

infringements occurring on Photobucket of her images

I

and that many or her infringements consist of multiple
duplicates of images

I

sometimes five or six copies of the same

image by a single user.

Photobucket does not dispute this facti

but states that prior to Wolk filing this lawsuit

I

Photobucket

received no notice of these other purported infringements, and
these other purported infringements the Plaintiff has identified
post-date the filing of her init
states that

complaint.

Photobucket

has removed each infringing image when it

received a DMCA-complaint notice from Wolk.

18

Wolk states that

Photobucket has failed to implement and remove repeat
infringers, and that Wolk has identif

22 repeat infringers.

The Applicable Standards l

In addressing the present motions, the Court is
mindful that Wolk is proceeding pro se and that her submissions
are held to ·less stringent standards than formal pleadings
drafted by lawyers .

s v. Rowe, 449 U.S. 5, 9, 101

"

S.Ct. 173, 66 L.Ed.2d 163 (1980)

(quot

U.S. 519, 520, 92 S.Ct. 594, 30 L.
"construe the pleadings of a

Haines v. Kerner, 404

.2d 652

(1972)).

The courts

se plaintiff liberally and

interpret them to raise the strongest arguments they suggest."
Fuller v. Armstrong, 204 Fed. Appx. 987, 988
so Lerman v. Bd. of Elections in Ci

1

(2d Cir. 2006) ; see

N.Y., 232 F.3d 135,

As noted above, on April 11, 2011, Plaintiff filed a
"Motion To Investigate The Subornation And Acts Of Perjury By
The Defendants." The Plaintiff's motion states that
affidavit
a defense witness contained false information and
that, ·on information and belief," the Defendants' attorneys
knowingly drafted the false affidavit and permitted it to be
filed with the Court. Notwithstanding the seriousness of her
legations, Wolk has provided no evidence to support her
contention that a witness committed
ury and that two
attorneys in this act
committed subornation of perjury.
Plaintiff's accusations are completely unsupported, and the
motion is denied.
19

139 -4 0 (2d Cir. 2000)

("Since most pro se plaintiffs lack

familiarity with the formalities of pleading requirements, we
must construe pro se complaints liberally, applying a more
flexible standard to evaluate their sufficiency that we would
when reviewing a complaint submitted by counsel. H).

However,

the courts will not "excuse frivolous or vexatious filings by
pro se litigants,H Iwachiw v. New York State

' t of Motor

Vehicles, 396 F.3d 525, 529 n.1 (2d Cir. 2005), and "pro se
status 'does not exempt a party from compliance with relevant
rules of procedural and substantive law.'H

Triestman v. Fed.

Bureau of Prisons, 470 F.3d 471, 477 (2d Cir. 2006)

(quoting

Traguth v. Zuck, 710 F.2d 90, 95 (2d Cir. 1983)).

A. Applicable Standard on a Motion to Amend

Leave to amend should be "freely give(n]
justice so requires."

. when

Fed. R. Civ. P. 15(a) (2).

Notwithstanding this lenient standard, the decision to grant or
deny leave to amend is within the discretion of the dist
court.

ct

See Forman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9

L.Ed.2d 222

(1962).

A district court may properly deny leave to

amend for "undue delay, bad faith or dilatory motive on the part
of the movant, repeated failure to cure deficiencies by

20

amendments previously allowed, undue prejudice to the opposing
party by virtue of allowance of the amendment, futility of
amendment, etc./I

See id.; see also SCS Commc'ns

Herrick Co., Inc., 360 F.3d 329, 345 (2d

Inc. v.

r. 2004)

(" [U]nder

Fed. R. Civ. P. 15(a), leave to amend a pleading may only be
given when factors such as undue delay or undue prejudice to the
opposing party are absent.").

However,

itself, sufficient to justify denial

"mere delay is not, of
a Rule 15(a) motion./I

Parker v. Columbia Pictures Indus., 204 F.3d 326, 339 (2d Cir.
2000) .

"Although Rule 15(a) governs the amendment of
pleadings, Rule 16(b) also may limit the ability of a party to
amend a pleading if the deadline specified in the scheduling
order for amendment of the pleadings has passed./I
2nd Ave. Delicatessen Inc., 496 F.3d 229, 243
Rule 16(b) (4) provides
for good cause[.]"

"[a] schedule may

Kassner v.

(2d Cir. 2007).
modified only

The Second Circuit has held that, where a

district court has set a deadline for amending pleadings,
Rule 16(b)
standard

"the

'good cause' standard, rather than the more liberal
Rule 15(a), governs a motion to amend filed after

the deadline [.]/1

Parker, 204 F.3d at 340.

21

"A finding of good cause depends on the diligence of
the moving party."
86 (2d Cir. 2003)
pI

Grochowski v.

r

---------------------------------

, 318 F.3d 80,

(affirming denial of leave to amend where the

ntiffs delayed more than one year, discovery had completed

and a summary judgment motion was pending) .

"[T]he good cause

standard is not satisfied when the proposed amendment rests on
information 'that the party knew, or should have known, in
advance of the deadline.'"

Ltd. V. NBTY

Supp. 2d 527,536 (E.D.N.Y. 2010)

(citation omitted)

Inc., 754 F.
(finding

plaintiff acted with diligence in seeking leave to amend within
two months of discovering the facts underlying its new cause of
action)

i

but see Jackson v. Roslyn Bd. of Educ., 596 F. Supp. 2d

581, 586 (E.D.N.Y. 2009)

(finding plaintiff's delay of nearly

five months to evince "a lack of diligence") .

Although the moving party's diligence is a district
court's "primary consideration" in its Rule 16(b) good cause
inquiry, a court "also may consider other relevant factors
including, in particular, whether allowing the amendment of the
pleading at this stage of the litigation will prejudice
defendants."

Kassner, 496 F.3d at 244.

An amendment is

prejudicial to the non-moving party if it "would require the
opponent to expend significant additional resources to conduct

22

discovery and prepare for trial or significantly delay the
resolution of the dispute."

Ruotolo v.

of New York, 514

F.3d 184, 192 (2d Cir. 2008).

B. Applicable Standard on a Motion to Admit Expert Testimony

A district court can admit expert testimony from a
person "qualified as an expert by knowledge, skill, experience,
training, or education," assuming that "scientific, technical,
or other specialized knowledge will assist the trier of fact to
understand the evidence or to determine a fact in issue."
R. Evid. 702.

Fed.

Under Daubert v. Merrell Dow Pharm., Inc., 509

U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993), and Rule 702
of the Federal Rules of Evidence, the Court's role is to
determine whether the "expert" is qualified to testify as an
expert.

The Court conducts a two-part inquiry:

(1) whether the

expert used a reliable methodology; and (2) whether the
testimony will assist the

er of fact to understand the

evidence or to determine a fact in issue.
592 93.

Daubert, 509 U.S. at

The district court should not admit testimony that is

"directed solely to lay matters which a jury is capable of
understanding and deciding without the expert's help."
v. Castillo, 924 F.2d 1227, 1232 (2d Cir. 1991).
23

United

C. Applicable Standard on a Motion for Summary Judgment

Summary judgment should be rendered if the pleadings,
the discovery and disclosure materials on file, and any
affidavits show that there is no genuine issue as to any
material fact and that the movant is entitled to judgment as a
matter of law.

Fed. R. Civ. P. 56(c).

The courts do not

issues of fact on a motion for summary judgment, but, rather,
determine "whether the evidence presents a sufficient
disagreement to require submission to a jury or whether it is so
one-sided that one party must prevail as a matter of law."
Anderson v.

Inc., 477 U.S. 242, 251-52, 106 S.Ct.

--------------------~----~~------

2505, 91 L.Ed.2d 202

(1986).

"The party seeking summary judgment bears the burden
of establishing that no genuine issue of material fact exists
and that the undisputed facts establish [its] right to judgment
as a matter of law."
1060 61 (2d Cir. 1995).

, 72 F.3d 1051,
Summary judgment is appropriate where

the moving party has shown that "little or no evidence may be
found in support of the nonmoving party's case.

When no

rational jury could find in favor of the nonmoving party because
24

the evidence to support its case is so slight, there is no
genuine issue of material fact and a grant of summary judgment
is proper."

Gallo v. Prudential Residential Servs., L.P., 22

F.3d 1219, 1223-24 (2d Cir. 1994)

(citations omitted).

In

considering a summary judgment motion, the Court must "view the
evidence in the light most favorable to the non-moving party and
draw all reasonable inference in its favor, and may grant
summary judgment only when no reasonable trier of fact could
find in favor of the nonmoving party."
F.3d 77, 79 (2d Cir. 1995)
marks omitted)

i

Allen v. Coughlin, 64

(internal citations and quotation

see also Matsushita Elec. Indus. Co. v. Zenith

Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538
(1986).

However, "the non-moving party may not rely simply on

conclusory allegations or speculation to avoid summary judgment,
but instead must offer evidence to show that its version of
events is not wholly fanciful."
109 (2d Cir. 1999)

Morris v. Lindau, 196 F.3d 102,

(quotation omitted) .

Plaintiff's Motion to Amend the Complaint Is Denied

As described above, motions to amend are typically
governed by Fed. R. Civ. P. 15(a), which requires a court to
find undue delay, bad faith or dilatory motive, repeated failure
25

to cure deficiencies by previously allowed amendments, or undue
prejudice to the opposing party to justify denial of a motion to
amend.

However, when a motion to amend is brought after the

deadline set for such motions by the scheduling order, the
motion is governed by Rule 16(b), which provides that scheduling
orders "shall not be modified except upon a showing of good
cause."

Fed. R. Civ. P. 16(b); Parker, 204 F.3d at 339-40.

Wolk's motion to amend was filed on June 26, 2011, nearly seven
months after the November 30, 2010 deadline set by the
scheduling order to which the parties stipulated.

Accordingly

the Rule 16(b) "good cause" standard will be applied.

In her amended complaint, Wolk proposes to retract
Count VII, which alleges interference with advantageous business
relations by Kodak Gallery and the Kodak Defendants, and instead
bring a new Count VIII alleging unfair competition by Kodak
Gallery and the Kodak Defendants.

The new count alleges that

the Kodak Defendants, without authorization or license, copied,
distributed, produced and sold the Plaintiff's work, and that
the products the Kodak Defendants produce are in direct
competition with products produced under license using Wolk's
images by Wolk's licensees.

As such, the Kodak Gallery and the

Kodak Defendants directly interfere with the commercialization
26

of the Plaintiff's images, damaging the Plaintiff in the amount
of $1,500,000.

The proposed amended complaint also requests an

award of punitive damages in the amount of $6,000,000 for the
unfair competition

Kodak Gall

and the Kodak Defendants.

As described above, when a motion to amend is brought
after

deadline set by the Court, Fed. R. Civ. P. 16(b),

which provides that scheduling orders "shall not be modified
except upon a showing

good cause," applies.

"Good cause" is

not satisfied when the proposed amended complaint rests on
information that the movant "knew, or should have known, in
advance of the deadline."

Enzymotec, 754 F. Supp. 2d at 536.

Here, Wolk has not shown good cause to add a claim
law unfair competition.

common

There is no evidence that the unfair
s that were not available to

competition claim turns on any

Wolk when she commenced this action, as all the facts alleged in
the proposed Count VIII were included in her original amended
complaint.

As such, Wolk has not shown the "good cause"

necessary to allow her to amend her complaint after the November
30, 2010 deadline.

While it is true that Wolk is proceeding

se, even

when her motion to amend is evaluated under the less stringent
27

standard provided by Fed. R. Civ. P. 15(a), her motion still
fails.

Wolk moved to amend her complaint in late June 2011.

Her motion comes after she previously amended her complaint,
after the November 30, 2010 deadline for amending the pleadings,
after the motions for summary judgment were filed and after the
June IS, 2011 discovery deadline.

Even under the more liberal

Rule 15(a) standard, it is improper to amend a complaint and add
a new claim in response to a motion for summary judgment when
discovery is complete.

See, e.g., AEP Energy Servs. Gas Holding

Co. v. Bank of Am., N.A., 626 F.3d 699, 726-27 (2d Cir. 2010)
(holding that leave to amend should be denied where motion to
amend was filed after defendant had filed summary judgment
papers based on existing claims) i
., 482 F.3d 184, 202

--~-

(2d Cir. 2007)

v. Dunn & Bradstreet
("Plaintiffs sought to

amend their complaint after an inordinate delay.

By that time,

discovery had closed, defendants had filed for summary judgment,
and nearly two years had passed since the filing of the original
complaint.

In light of this record, we conclude that the

district court did not exceed its discretion in denying
plaintiffs' leave to amend.

ll

).

Given that discovery has been

completed, it would be inappropriate to allow the Plaintiff to
amend her complaint at this stage of the litigation.

28

The

aintiff cannot meet either the "good cause"

standard under Fed. R. Civ. P. 16(b) or the less stringent
standard provided under Fed. R. Civ. P. 15(a).

Accordingly, her

motion to amend the complaint is denied.

Plaintiff's Motion to Admit Expert Testimony Is Denied

Plaintiff has filed a motion to admit the expert
testimony of Dr. Robert Sarvis.

In her motion, Wolk states that

Dr. Sarvis holds a Doctor of Business Administration, has
previously studied probability and statistics, has taught
undergraduate and graduate level courses in business and
statistics at accredited univers
consultant on various financ
five years.

ies and has served as a
and copyright issues for over

Wolk's motion states:

The methodology of statistical analysis employed by Dr.
Sarvis is generally accepted, reliable, and well tested in
the scientific community. The approach is peer reviewed
and included in most textbooks on the subject
population
sampling and statistical analysis. He bases his
conclusions and opinions upon the result of these
statistical surveys for which standard deviation and
statistical error can and are measured.

29

Wolk states that Dr. Sarvis' testimony is important to
adjudicating this case because Dr. Sarvis can address the
irreparable harm to the Plaintiff resulting from the Defendants'
alleged actions.

Furthermore, Wolk states that Dr. Sarvis will

establish that the solicitation and display of copyrighted
images by Photobucket is an integral part of Photobucket's
business and that the Defendants "turned a blind eye" to the
copying, displaying, transfer and reproduction of the
Plaintiff's artwork.

The Plaintiff's motion does not include

any written report, opinion, affidavit or any statement from Dr.
Sarvis.

"Whether a purported expert witness is qualified
is a 'threshold question' to be resolved prior to other
inquiries."

See Arista Records LLC v. Lime Group LLC, No. 06 CV

5936 (KMW) , 2011 WL 1674796, at *2
==~~____~~_o~f_N .Y~.,
__

(S.D.N.Y. May 2, 2011)

414 F.3d 381, 396 n.ll (2d

(citing

r. 2005).

The only evidence Plaintiff has submitted attesting to Dr.
Sarvis' qualifications is his "Vita," which describes Dr.
Sarvis' educational background, teaching experience and business
and consulting experience.

The Defendants argue that this vita

provides insufficient evidence of Dr. Sarvis' qualifications in
the field of statistics, noting that Dr. Sarvis' vita does not
30

list any degree or professional certification

statistics

1

nor

does it list any published works or testimony presented in the
field of statistics.

However

1

Dr. Sarvis

l

vita does include

courses in "business statistics" and states that he has
experience teaching statistics at the undergraduate and graduate
levels.

As Judge Weinstein instructs

l

qualifying expert witnesses is liberal.

"The standard for
This generosity extends

to substantive as well as formal qualifications."
Federal Evidence 1

§

702.04[1].

4 Weinstein/s

Accordingly, Dr. Sarvis

l

testimony will not be excluded on grounds that his
qualifications are insufficient.

The Plaintiff's motion to admit Dr. Sarvis' testimony
is denied because the Plaintiff has failed to provide the Court
with information sufficient to conduct a Daubert analysis.
though discovery in this matter has concluded, no expert
report or statement for the basis of Dr. Sarvis' opinions has
been provided.

While Plaintiff's

lure to serve an expert

report by the April 30 1 2011 deadline may be excused on account
of the then-pending (and ultimately unsuccessful) motion to
compel the production of documents to Dr. Sarvis

l

the Plaintiff

had ample time following the resolution of that motion to serve
a report or seek additional extensions.
31

The Court/s August 25,

2011 order provided the Plaintiff until September 15, 2011 to
file a motion to admit Dr. Sarvis as an expert under Daubert,
but the Plaintiff did not serve any report.

Under Daubert, the trial court is tasked with
"ensuring that an expert's testimony both rests on reliable
foundation and is relevant to the task at hand."
U.S. at 597.

Daubert, 509

The proponent of expert testimony bears the

burden, by preponderance of the evidence, to demonstrate that
the admissibility requirements of Rule 702 are satisfied.

See

In re NYSE Specialists Litig., 260 F.R.D. 55, 65 (S.D.N.Y. 2009)
(citing United States v. Williams, 506 F.3d 151, 160 (2d Cir.
2007)).

Fed. R. Evid. 702 provides:

A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify in
the form of an opinion or otherwise 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
issue;
(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 the case.
In addition to the requirements of Fed. R. Evid. 702, Daubert
enumerates other factors which bear on the reliability of
32

proposed expert testimony, including (i) whether the theory or
technique can be tested;

(ii) whether the theory or technique

has been subject to peer review;
potenti

(iii) the technique's nknown or

error H and nthe existence and maintenance of

rate

standards controlling the technique's operation"; and (iv)
whether a particular technique or theory has gained general
acceptance in the scientific community.

See Daubert, 509 U.S.

at 593-94; Williams, 506 F.3d at 160.

Here, the Plaintiff asks the Court to conduct a
Daubert analysis based solely on her descriptions
conclusions.

Dr. Sarvis!

No explanation has been provided regarding Dr.

Sarvis' methods, excepting the Plaintiff!s contention that
"[t)he methodology of statistical analysis employed by Dr.
Sarvis is generally accepted! reliable! and well tested in the
scientific community.H

Even if this contention is accepted, the

Plaintiff's motion fails to allege any facts which support the
methodology's acceptance in the scientific community.

The

motion does not identify any peers who have reviewed the
methodology or any data to support the methodology's acceptance
or reliability.

The motion fails to present

ficient facts or

data upon which Dr. Sarvis' opinions are based, a
description of the princ

ficient

es and methods Dr. Sarvis' employed
33

or a description

how Dr. Sarvis' applied his methodology to

the facts of the case.

Because the

intiff's motion fails to

meet the criteria established in Fed. R. Evid. 702 or Daubert,
the Plaintiff's motion to admit expert testimony must be denied.

Plaintiff's Motions for Partial Summary Judgment Against the
Kodak Defendants and Summary Judgment Against Photobucket Are
Denied, and Defendants' Motions for Summary Judgment Are Granted

On May 2, 2011, Wolk moved for partial summary
judgment against the Kodak Defendants.

The Kodak Defendants

have opposed the Plaintiff's motion for partial summary judgment
and have filed a cross-motion for summary judgment on all
counts.

In addition, Photobucket has filed a motion

judgment seeking dismissal

all

Plaintiffts

summary
aims, to

which wolk has responded with a cross-motion for summary
judgment against Photobucket.

For the reasons stated below, the

Plaintiff's motions for partial summary judgment against the
Kodak Defendants and summary judgment against Photobucket are
denied, and

Defendants' motions for summary judgment are

granted.

A. The Plaintiff's Motion For Partial Summary Judgment With
Respect To The Kodak Defendants Is Denied, And The Kodak
Defendants' Motion For Summary Judgment Is Granted

34

Wolk has moved for partial summary judgment against
the Kodak Defendants, seeking a declaratory ruling that the
Kodak Defendants infringed on the copyrights of the Plaintiff,
that the Kodak Defendants are not a "service provider" or, in
the alternative, are not protected by the safe harbor provisions
of the DMCA, that the Kodak Defendants' infringement was willful
and that the Plaintiff is ent
U.S.C. §§ 504 (a) (2),
infringed.

led to statutory damages under 17

(c) (1) and (c) (2) per work of art

In the Complaint, there are four counts pertaining

to the Kodak Defendants: Count I requesting a declaratory
judgment that the Defendants' infringed upon the Plaintiff's
copyrights, Count II requesting a permanent injunction, Count VI
alleging direct liability for infringement by Kodak Gallery and
the Kodak Defendants and Count VII alleging interference with
advantageous business relations by Kodak Gallery and the Kodak
Defendants.

In her reply brief in support of the motion for

partial summary judgment, the Plaintiff has stated that she
waives her claims for tortious interference against the Kodak
Defendants.

Accordingly, the remaining question relevant to

whether the Kodak Defendants can be held liable is whether the

35

Kodak Defendants engaged in direct infringement of Walk's
copyrighted images. 2

In her motion, Walk details ten instances where the
Kodak Defendants allegedly made, sold and shipped products using
Wolk's copyrighted images without obtaining Wolk's permission or
a valid license.
106(1),

Because the Copyright Act, 17 U.S.C.

§§

(2) and (5), grants the owner of the copyright exclusive

rights to reproduce, produce derivative works and distribute the
copyrighted images, Wolk argues that the Kodak Defendants'
creation and distribution of these products causes them to be
liable for statutory damages as set forth in 17 U.S.C.
504(a) (2),

(c) (1) and (c) (2).

§

Although direct infringement is

not a strict liability tort, Wolk alleges that the Kodak
Defendants' infringing activity meets the level of "volition"
required under the Second
CSC
------

rcuit case of Cartoon Network LP v.

Inc., 536 F.3d 121, 130 31 (2d Cir. 2008) because

---~~------

the Kodak Defendant's made copies of
2

images and transformed

While a defendant may be held secondarily liable for
another's infringement, see
Am. v. Universal
Studios, Inc., 464 U.S. 417, 434-35, 104 S.Ct. 774, 78 L.Ed.2d
574 (1984), Wolk has not pled any form of secondarily liability
with respect to the Kodak Defendants. Wolk has pled various
forms of secondary liability against Photobucket. Accordingly,
it is assumed that the only form of infringement Wolk alleges
against the Kodak Defendants is direct infringement.
36

them into products, thereby changing the Kodak Defendants'
status from being "passive providers of a space in which
infringing activities happen to occur to active participants in
the process of copyright infringement."

Arista Records LLC v.

Usenet.com, Inc., 633 F. Supp. 2d 124, 148 (S.D.N.Y. 2009)
Wolk also argues that, unlike Cartoon Network where the
defendants made a single copy, the Kodak Defendants have made
multiple copies, modifying wolk1s artwork to conform to a
particular product.

As such, Wolk concludes that the Kodak

Defendants have directly infringed.

Wolk avers that the Kodak Defendants do not qualify
for the safe harbor the DMCA affords to "service providers"
where incidental infringement occurs when these service
providers perform Internet functions, such as providing storage
at the discretion of a user.

The Plaintiff further contends

that Eastman Kodak is vicariously liable because Kodak Imaging
Network is a wholly-owned subsidiary of Eastman Kodak.

Wolk states that she is entitled to statutory damages
and that, pursuant to 17 U.S.C.

§

504(c) (1), the Kodak

Defendants are obligated to pay damages on a per image basis.
The Plaintiff notes that statutory damages are awarded when no
37

actual damages are proven or actual damages and profits are
difficult or impossible to calculate, and, in this case, the
Kodak Defendants have either intentionally or with wanton
disregard failed to keep and maintain the records necessary to
calculate damages.

Wolk contends that, since the Kodak

Defendants cannot demonstrate either that they were unaware or
that they had no reason to believe that their acts constituted
infringement, the Kodak Defendants' are strictly liable, their
infringement is considered "willful ll under the statute and the
district court has discretion to increase the damages award up
to $150,000 per "willfullyll infringed work, pursuant to 17
U.S.C.

§

504(c) (2).

In support of this argument, Wolk notes

that Dr. Sarvis and his assistant were able to purchase products
that contained Wolk's copyrighted images after this action had
been filed, and, under applicable Second Circuit precedent,
where sophisticated defendants knew or should have known that
their conduct was infringing, those defendants infringement is
classified as "willful. 1I

See Twin Peaks Prods.,

Inc. v.

Publications Int'l, Ltd., 996 F.2d 1366, 1382 (2d Cir. 1993).
The Plaintiff argues that this is a case where the imposition of
statutory damages is necessary as a deterrent to protect
artists, who often have limited resources and are unable to
protect their rights.
38

"To establish a claim of copyright infringement, a
pI

iff must establish (1) ownership of a valid copyright, and

(2) unauthorized copying or a violation of one of the other
exclusive rights afforded copyright owners pursuant to the
Copyright Act."
229, 232

Byrne v. British Broad Corp., 132 F. Supp. 2d

(S.D.N.Y. 2001)

(citing Twin Peaks, 996 F.2d at 1372).

Direct liability requires "volitional conduct" that "causes" the
infringement.

See Cartoon Network, 536 F.3d at 131.

In Cartoon

Network, the Second Circuit addressed a case involving
Cablevision's Remote Storage Digital Video Recorder
which

em,

lowed cable television subscribers to select programs to

be reproduced onto Cablevision's hard drives for later playback.
See Cartoon Network, 536 F.3d at 123 25, 130.
whether Cabl

In determining

sion could be held liable for creating an

unauthorized reproduction of a tel

sion program, the Second

Circuit adopted the "volition standard", noting that:

[T]o establish direct liability under.
. the [Copyright] Act,
something more must be shown than mere ownership of a machine
used by others to make illegal copies. There must be actual
infringing conduct with a nexus suffic
ly close and causal to
the illegal copying that one could conclude that the machine
owner himself trespassed on the exclus
domain of the
copyright owner.
Id. at 130.

39

In deciding the case, the Second Circuit held that
"Cablevision's conduct in designing, housing and maintaining a
system that exists only to produce a copy" was not sufficiently
proximate to any instance of unauthorized copying instigated by
a Cablevision customer to hold Cablevision liable as a direct
infringer.

rd. at 131.

Rather,

"by selling access to a system

that automatically produces copies on command, Cablevision more
closely resembles a store proprietor who charges customers to
use a photocopier on his premises and it seems incorrect to say,
without more, that such a proprietor 'makes' any copies when his
machines are actually operated by his customers."

rd. at 132.

Accordingly, the Second Circuit reversed the summary judgment
that had been entered against Cablevision.

rd.

Applying Cartoon Network to the Kodak Defendants,
there is no evidence of volitional conduct, thereby preventing
Wolk from establishing direct liability.

Wolk has presented two

theories to hold the Kodak Defendants liable for infringement:
first, the Kodak Defendants infringed because they reproduced
her images onto various productsi and second, the Kodak
Defendants infringed because an electronic preview page is
generated on the Kodak Gallery website when a user is making an
order for a product bearing an image imported from the

40

Photobucket website.

However, the evidence the Kodak Defendants

have offered, which Wolk has not rebutted, is that the transfer
of information about an order from the KODAK Gallery website to
the fulfillment vendor is done electronically through an
automated computer system and that all of the information
displayed on the KODAK Gallery website, including the simulation
of products containing the Photobucket images, is done
electronically.

There is no dispute that any reproduction,

display or transmission of the Plaintiff's images by or through
the KODAK Gallery website is an automated process with no human
intervention by any employee of the Kodak Defendants.

The fact

that Wolk's images are copied into product simulations in
addition to being transmitted to fulfillment vendors does not
constitute a volitional act where the copying is automated.
Di

Enters.

Inc. v. Hotfile

See

., No. 11 20427-CIV JORDON,

2011 WL 2899374, at *5 (S.D. Fla. July 8, 2011)

("Finally, the

plaintiffs contend that they have alleged a volitional act
because they have

leged that hotfile.com makes additional

copies once the copyrighted material is uploaded to the server.
This argument too fails, for courts have repeatedly held that
the automated conduct of software, unaided by human
intervention, is not 'volitional.'").

Furthermore, the display

of copyrighted images on a defendant's website does not
41

demonstrate volition.

See CoStar

Inc. v.

Inc.,

----------~~--~--------~~--~-----

373 F.3d 544, 550 (4th Cir. 2004)

(holding that Internet service

provider did not engage in volitional conduct sufficient for
copyright liability where user of service posted copyrighted
images that were displayed on defendant's website)
Cartoon Network, 536 F.3d at 130 31).

(cited by

Because the Plaintiff has

failed to establish any volitional conduct, the Kodak Defendants
are not liable for direct infringement.

Because the Kodak Defendants cannot be held liable
direct infringement, the issues of whether they fall under the
DMCA'S "safe harbor" provision, whether their alleged
infringement was "willful" under the statute and whether Wolk is
entitled to damages per work of art infringed need not be
reached.

Similarly, although the Kodak Defendants dispute

whether the Plaintiff has properly asserted a claim of vicarious
liability against Eastman Kodak, there is no need to address
this issue because the Plaintiff has not established liability
on the part of either of the Kodak Defendants.

B. The Plaintiff's Cross-Motion For Summary Judgment Against
Photobucket Is Denied, And Photobucket's Motion For Summary
Judgment Is Granted

42

There are five counts in the Complaint applicable to
Photobucket: Count I requesting a declaratory judgment that
Photobucket has infringed on Wolkts copyrights, Count II
requesting a permanent injunction preventing Photobucket from
continuing to infringe, Count III alleging contributory
copyright infringement, Count IV alleging vicarious copyright
infringement and Count V alleging direct infringement.

On

September 23, 2011, Photobucket filed its motion for summary
judgment with respect to all counts.

In response, Wolk filed

her opposition to Photobucket's motion as well as a cross-motion
seeking summary judgment against Photobucket.

For the reasons

stated below, Wolk's cross-motion for summary judgment fails,
and Photobucket's motion for summary judgment is granted with
respect to

1 counts.

1. Photobucket Cannot Be Held Liable Because It Falls
Within The DNCA's "Safe Harbor"

Photobucket cannot be held liable for infringing upon
Wolk's copyrighted work because Photobucket falls within the
DMCA's "safe harbor," thereby protecting Photobucket against the
Plaintiff's copyright infringement

43

aims.

A. Photobucket Meets The Threshold Requirements To
Qualify For The DMCA's "Safe Harbor" Provisions

To qualify for the "safe harbor" provisions under the
DMCA, a party must meet certain threshold requirements,
including that the party (1) must be a "service provider" as
defined by the statute;

(2) must have adopted and reasonably

implemented a policy for the termination in appropriate
circumstances of users who are repeat infringers; and (3) must
not interfere with standard technical measures used by copyright
owners to identify or protect copyrighted works.

Corbis

--------"~

v. Amazon. com, Inc., 351 F. Supp. 2d 1090, 1099 (W.D. Wash.
2004), overruled on other grounds, Cosmetic Ideas, Inc. v.
__~_I_n_t_e_r a_c_t______~_., 606 F.3d 612
__

(9th Cir. 2010) i 10 Grp.,

Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d 1132, 1142 43

(N.D.

Cal. 2008).

Photobucket meets the applicable definition of a
"service provider" under the DMCA.

The DMCA includes two

definitions of the term "service provider:/I

(A) As used in subsection (a), the term 'service provider'
means an entity offering the transmission, routing, or
providing of connections for digital online communications,
between or among points specified by a user, of material of

44

the user's choosing, without modification to the content
the mat
as sent or received.
(B) As used in this section, other than in subsection (a),
the term 'service provider' means a provider of online
services or network access r or the operator of facilities
therefor, and includes an entity described in subparagraph
(A) .

17 U.S.C.

512(k) (1).

§

Because Photobucket is eligible under

the "safe harbor" contained in 17 U.S.C.
definition included in 17 U.S.C.

§

§

512(c), the broader

512(k) (1) (B)

See 10 Grp., 586 F. Supp. 2d at 1143 n.7.

is applicable.

The DMCA's definition

of "service provider

ll

is intended to encompass a broad set of

Internet entities.

See Corbis, 351 F. Supp. 2d at 1100 ("This

definition encompasses a broad variety of Internet
activities.

II

).

Courts have found services similar to

Photobucket, such as Youtube.com and Veoh.com, to be "service
providers" under the DMCA.
Inc.

r

See Viacom Int' I, Inc. v. YouTube,

718 F. Supp. 2d 514, 518 (S.D.N.Y. 2010)

Supp. 2d at 1143.

Because Photobucket

and allows online sharing of photos and

i

10 Grp.,

586 F.

a site that hosts
at the direction

of users, Photobucket, like YouTube.com or Veoh.com, qualifies
as a "service provider

ll

under

§

512(k) (1) (B).

Photobucket has also adopted and reasonably
implemented a policy for the termination in appropriate

45

circumstances of users who are repeat infringers.

Pursuant to

a safe harbor, a service

17 U.S.C. § 512(i), to qualify

provider must demonstrate that it has uadopted and reasonably
implemented, and informs subscribes and account holders of the
service provider's system or network of, a policy that provides
for

termination in appropriate circumstances of subscribers

and account holders of the
who are repeat infringers./I

ce provider's system or network
17 U.S.C.

§

512(i) (1) (A); see also

Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1109 (9th Cir.
2007).

To fulfill the requirements of 17 U.S.C. § 512(i), a

service provider must (i) adopt a policy that provides for the
termination of service access for repeat copyright infringers;
(ii) inform users of the service policy; and (iii) implement the
policy in a reasonable manner.

Corbis, 351 F. Supp. 2d at 1100j

see also Perfect 10, 488 F.3d at 1109 15.

In

opposition papers, Wolk has alleged that

Photobucket does not terminate repeat infringers and that
Photobucket has merely "given 1

service to this and created a

paper policy it does not enforce./I

The evidence, however,

establishes that Photobucket has developed a policy under which
copyright holders can submit a take-down notice and that this
policy was made available to the public on Photobucket's
46

website.

When Photobucket received Wolk's take-down notices,

both those that included URLs as well as those that did not,
Photobucket acted to remove the infringing mat

As such,

the evidence presented indicates that Photobucket has fulfilled
the requirements of 17 U.S.C.

§

512(i), having adopted,

informed

users of and reasonably implemented a policy of terminating
users who repeatedly infringe copyrights.

Photobucket also meets the third threshold
qualification, as
standard techni

"accommodates and does not interfere with
measures."

17 U.S.C.

described by the Court in 10 Group,
measures" are

§

512 (i) (1) (B).

As

"standard technical

ined as "technical measures that are used by

copyright owners to identify or protect copyrighted works" and
which have been developed pursuant to a broad consensus of
copyright owners and service providers
voluntary, multi industry standards

an open, fair,
, are available to

any person on reasonable and nondiscriminatory terms and do not
impose substantial costs on service providers or substantial
burdens on their systems or networks.
2d at 1142 n.6.

47

See 10 Grp., 586 F. Supp.

Wolk argues that, because Photobucket affords its
users computer tools that allow users to obliterate, hide or
crop out the copyright watermarks on the electronic images
uploaded, Photobucket is precluded
harbor.{{

using the DMCA "safe

Wolkfs contention is that Photobucket has developed

these tools because, if users could not remove the watermark,
Photobucketts business would suffer because those users who seek
copyright
free.

art and photos would be unable to obtain them for

However f the Plaintiff does not

that Photobucket

advises or encourages its users to use the photo editing tools
to circumvent the copyright.

The fact that

watermarks

appear suggests that Photobucket does, indeed t accommodate
"standard technical measures.

1I

While the Plaintiff argues that

the editing software "interfere[s] with standard technical
measures t {{

is not Photobucket t but rather users, who would

use the editing tools to attempt to circumvent copyright
protection measures that were already on the site.

AccordinglYf

the editing tools Photobucket provides do not disquali

it from

"safe harbor{{ eligibility.

B. Photobuoket Is Sheltered From Liability Under
17 U.S.C. § 512(0)

48

Once the threshold requirements are met, a party may
be eligible for one or more of the four "safe harbor" provisions
codified at 17 U.S.C. § 512(a) through § 512(d).

In this case,

the most applicable "safe harbor" is that included in 17 U.S.C.
§512 (c) :

(c) Infor.mation residing on systems or networks at
direction of users.
(1) In general. A service provider shall not be liable
for monetary relief, or, except as provided in
subsection (j), for injunctive or other equitable
relief, for infringement of copyright by reason of the
storage at the direction of a user of materi
that
resides on a system or network controlled or operated
by or for the service provider, if the service
provider­
(A) (i) does not have actual knowledge that the
material or an activity using the material on the
system or network is infringing;

(ii) in the absence of such actual knowledge, is not
aware of facts or circumstances for which infringing
activity is apparent; or
(iii) upon obtaining such knowledge or awareness,
acts expeditiously to remove, or disable access to,
the material;

does not receive a financial benefit directly
attributable to the infringing activity, in a case
in which the service provider has the right and
ability to control such activity; and
(B)

(C) upon notification of claimed infringement as
described in paragraph (3), responds expeditiously
to remove, or disable access to, the material that

49

is claimed to be infringing or to be the subject of
infringing activity.
(2) Designated agent. The limitations on liability
established in this subjection apply to a service
provider only if the service provider has designated
an agent to receive notifications
claimed
infringement described in paragraph (3), by making
available through its service, including on its
website in a location accessible to the public, and by
providing to the Copyright Office, substantially
following information:
(A) the name, address, phone number, and electronic
mail address of the agent.

Other contact information which the Register of
Copyrights may deem appropriate.
(B)

The Register of Copyrights shall maintain a current
directory of agents available to the public for
inspection, including through the Internet, in both
electronic and hard copy formats, and may require
payment of a fee by service providers to cover the
costs of maintaining the directory.

Here, photobucket has

filled all the statutory conditions

necessary to be sheltered from liability.

i.

Photobucket Did Not Have Actual Knowledge Of
The Infringing Activity, Was Not Aware Of
Any Facts From Which Infringing Activity Was
Apparent And Expeditiously Removed
Infringing Material When It Obtained
Sufficient Information

As described in the statute above, to meet the
eligibility requirements of the 17 U.S.C.

50

§

512(c)

"safe harbor"

provision, Photobucket must show, inter alia, that it did not
have actual knowledge that the material or an act

ty using the

material on the system or network is infringing and was not
aware of

ts or circumstances from which infringing activity

is apparent.

Where a service provider does obtain either actual

or apparent knowledge, it may still enjoy the "safe harbor" if
it acts expeditiously to remove or disable access to
infringing

al.

There is no evidence that Photobucket had actual or
constructive knowledge of the copyright infringement wolk
alleges.

To be DMCA-compliant so as to constitute notice

sufficient to give knowledge to a service provider of
infringement, the notice a copyright owner submits to the
service provider must include six elements:

(1) a physical or

electronic signature of a person authori

to act on behalf

the owner of an exc

ive right that is

legedly infringed;

(2)

identification of the copyrighted work claimed to have been
infringed;

(3) identification of the material that is claimed to

be infringing or to be

subject of infringing activity and

that is to be removed or access to which is to
information reasonably sufficient to permit
to locate the materiali

disabled, and
service provider

(4) information reasonably sufficient to
51

permit the service provider to contact the complaining partYi
(5) a statement that the complaining party has a good

th

belief that use of the material in the manner complained

is

not authorized by the copyright owner, its agent, or the lawi
and (6) a statement that the information in the notification is
accurate, and under penalty of perjury, that the complaining
party is authorized to act on behalf of the copyright owner.
See 17 U.S.C.

§

512(c) (3) i see also Hendrickson v. eBay, Inc.,

165 F. Supp. 2d 1082, 1089 (C.D. Cal. 2001).

As described above, prior to the commencement of this
litigation, Wolk

Photobucket with fifteen notices of

the infringement

works.

f

notices were not DMCA-compliant.

Eleven of these

Wolk argues that these fifteen

notices serve as DMCA-compliant notice of any and all other
unidentified alleged

ringements of these nine works that may

appear on the Photobucket s

e, thereby providing Photobucket

with the requisite knowledge necessary to require it to remove
those alleged infringements.
incorrect.

aintiff, however, is

Section 512(c) (3) (A) (iii) and 512(c) (3) (A) (v)

require a DMCA-compliant take-down not
U[i]dentification of the material
infringing or to be the subject

to provide
is claimed to be
activity and that

52

is to be removed or access to which is to be disabled t and
information reasonably sufficient to permit the service provider
to locate the material" and a "statement that the complaining
party has a good faith belief that the use of the materi
the manner complained

is not authorized by the copyright

owner, its agentt or

law.

in

512 (c) (3) (A) (v) .

II

17 U.S.C.

§§

512 (c) (3) (A) (iii),

"An example of such sufficient information

would be a copy or description of the allegedly
material and the so

led 'uniform resource locator'

(i.e. web site address) which allegedly conta
material.

1I

ringing

Viacom, 718 F. Supp. 2d at 521.

(URL)
infringing

In Viacom, the

Court rejected the plaintiffs' complaint that the
provider t YouTube t "remove[d] only the specific
in DMCA notices t and not other clips which
works.

II

Id. at 528.

ce
ips identified
the same

The same reasoning applies here:

Photobucket cannot be held liable for its

lure to remove

images for which the Plaintiff failed to provide proper notice.

though wolk advocates for a

tern where one notice

of infringement would apply to all instances of that image
appearing on the website t it would be irresponsible for
Photobucket to assume infringement
describes.

the way the Plaintiff

Because Wolk and other copyright holders retain the

53

right to license their work, a policy under which Photobucket
assumes infringement could result

Photobucket unlawfully

blocking others from uploading images to which they hold valid
Notices that do not identi

I

the

the specific location of

leged infringement are not sufficient to confer "actual
on the service provider.

knowl

See UMG Recordings, Inc. v.

Veoh Networks Inc., 665 F. Supp. 2d 1099, 1108 09 (C.D. Cal.
2009)

("If merely hosting user contribut

material capable of

copyright protection were enough to impute actual knowledge to a
service provider, the section 512(c)

vast portions of content on the internet are

letter
eligible

harbor would be a dead

copyright protection. H); Hendrickson, 165 F. Supp.

2d at 1082 ("[DMCA] expressly provides that if the copyright
holder's attempted notification fails to 'comply substantially'
with the elements of notification described
(c) (3),

subsection

that notification shall not be considered when

evaluating whether the service provider had ac
constructive knowl

or

of the infringing activity

. ") .

In those circumstances where Wolk validly notified
Photobucket of
Photobucket has

activity, it is undisputed
promptly to take down the

material in an expeditious manner.
54

Even in instances where

notices were non-compliant, Photobucket acted to remove the
material.

Accordingly, because Photobucket did not have
knowledge that the material or an activity using the material on
the system or network was infringing, was not aware of facts or
circumstances from which infringing activity is apparent and
acted expeditiously to remove infringing material when it became
aware, Photobucket is entitled to the protection of the "safe
harbor n afforded under 17 U.S.C.

§

512(c).

ii. Photobucket Does Not Have The "Right And
Ability To Control" And Does Not Receive
Direct Financial Benefit From The Alleged
Infringing Activity

Section 512 (c) (1) (B) conditions the availability of
the "safe harbor" on the service provider not receiving "a
financial benefit directly attributable to the infringing
activity, in a case in which the service provider has the right
and ability to control such activity.n

In other words, the

service provider complies with the provision if it "either does
not have the right and ability to control the infringing
activity, or - if it does - that it does not receive a financial

55

benefit directly attributable to the infringing activity."

IO

Grp., 586 F. Supp. 2d at 1146.

"[T]he right and ability to control infringing
activity, as the concept is used in the DMCA, cannot simply mean
the ability of a service provider to remove or block access to
materials posted on its website or stored on its system."
Corbis, 351 F. Supp. 2d at 1110.

Instead, such a right and

ability to control must take the form of prescreening content,
rendering extensive advice to users regarding content and
editing user content.

See id.

not engage in such activit

In this case, Photobucket does

, and, considering that millions of

images are uploaded daily, it is unlikely that this kind of
prescreening is even feasible.

Cf. 10 Grp., 586 F. Supp. 2d at

1153 (where "hundreds of thousands of video files" had been

uploaded to a website, the Court found that "no reasonable juror
could conclude that a comprehensive review of every file would
be feasible") .

There is also no evidence that Photobucket receives "a
financial benefit directly attributable to the infringing
activity."

As noted by the Ninth Circuit in Perfect 10, where

there is no evidence in the record that the service provider
56

nattracted or retained subscriptions because of the infringement
or lost subscriptions because of its eventual obstruction of the
infringement," no reasonable jury could conclude that the
service provider received a direct financi
providing access to the infringing material.
F.3d at 1118.
financi

While Wolk

benefit from
Perfect 10, 488

leges that Photobucket receives a

benefit from infringements from a profit-sharing

relationship with the Kodak Defendants, there is no evidence
indicating that either the Kodak Defendants or Photobucket
capitalizes specifically because a given image a user selects to
print is infringing.

The Defendants' profits are derived from

the service they provide, not a particular infringement.
Furthermore, Photobucket has no knowledge of which images users
may select to send to the Kodak Defendants to be printed, and,
as such, Photobucket has no ability to control whether users
request that infringing material be printed.

Because the evidence does not support a finding that
Photobucket received \\a financial benefit directly attributable
to the infringing activity, in a case

which the service

provider has the right and ability to control such activity,"
the limitation to the \\safe harbor" provided in 17 U.S.C.
512(c) (1) (B) does not apply to Photobucket.

57

§

iii.
Upon Notification Of Claimed Infringement,
Photobucket Responded To Remove The
Allegedly Infringing Material

To be eligible for the "safe harbor" provided in 17
U.S.C.

§

512(c), it must be shown that a service provider "upon

notification of claimed infringement as described in paragraph
(3), responds expeditiously to remove, or disable access to, the
material that is claimed to be infringing or to be the subject
of infringing activity."

As described above, whenever Wolk had

validly notified Photobucket of infringing activity, Photobucket
acted promptly to take down the infringing material in an
expeditious manner.

In those instances where Wolk's notices

were non-DMCA compliant, Photobucket still acted to remove the
material to the best of its ability.

iv. Photobucket Has Designated An Agent To
Receive Notifications Of Claimed
Infringements

Finally, to be eligible for the "safe harbor" under 17
U.S.C.

§

512(c), a service provider must designate an agent to

receive DMCA notifications.

The statute requires that the

service provider make "available through its service, including
on its website in a location accessible to the public, and by
58

providing to the Copyright Off
information .

, substantially the following

. the name, address, phone number, and

ectronic mail address of the agent."

17 U.S.C.

§

512(c) (2).

Here, the evidentiary record includes instructions Photobucket
provided on its website that included the following contact
information for Photobucket's designated copyright agent:

Copyright Agent

Photobucket.com, Inc.

PO Box 13003

Denver, CO 80201

[e-mail]

Fax: ( 3 03 ) 3 95 1165

though this contact information does not include a name or
phone number, the statute mandates that the service provider
provide "substantially the following information," and by
including the address, email address and fax number of the
copyright agent, Photobucket has included sufficient information
to have designated an agent.

v.

Photobucket Has No Duty To Police Its
Website For Infringements

As described above, Photobucket is a website that
consists of over 9 billion images and videos.

under the

aintiff's theory, Photobucket would be required to police its

59

website for infringing copies of her work wherever they may
appear once she has provided a DMCA-compliant notice.

However,

under 17 U.S.C. § 512(m), the DMCA limits Photobucket's
obligations:

(m) Protection of privacy. Nothing in this section shall be
construed to condition the applicability of subsections (a)
through (d) on­
(l) a service provider monitoring its service or
affirmatively seeking facts indicating infringing
activity, except to the extent consistent with a
standard technical measure complying with the
provisions of subsection (i) i or
(2) a service provider gaining access to, removing, or
disabling access to material in cases in which such
conduct is prohibited by law.

"The DMCA is explicit: it shall not be construed to condition
'safe harbor' protection on 'a service provider monitoring its
service or affirmatively seeking facts indicating infringing
activity .

If

Viacom, 718 F. Supp. 2d at 524

Perfect la, 488 F.3d at 1113).

(citing

Thus, the DMCA does not require

the policing the Plaintiff suggests.

Because Photobucket fulfills all the required
provisions of the statute and because the DMCA does not require
the active enforcement the Plaintiff has described, Photobucket
is able to take advantage of the "safe harbor" provision under

60

17 U.S.C. § 512(c).

Accordingly, Photobucket "shall not be

liable for monetary relief, or .

. for injunct

reI

f or

other equitable relief, for infringement of copyright by reason
of the storage at the direction

a user of material that

resides on a system or network controlled or operated by or for
the service provider."

17 U.S.C.

§

512 (c) (1).

2. Photobucket Cannot Be Held Liable For Contributory
Or Vicarious Infringement

In Counts III and IV of her complaint, Wolk alleges
contributory and vicarious copyright infringement by
Photobucket.

Because Photobucket is afforded the protection of

the DMCA's "safe harbor" provision, these secondary infringement
claims are also dismissed.

See Viacom, 718 F. Supp. 2d at 529

("Defendants are granted summary judgment that they qualify for
the protection of 17 U.S.C.
plaintif

512(c)

. against all of

'claims for direct and secondary copyright

infringement.").
of this "

§

However, in addition to having the protection

harbor" provision, there are additional reasons

why Photobucket cannot, in

s case, be held liable for

contributory or vicarious copyright

61

ringement.

A defendant may be secondarily liable for another's
infringement.

While "[t]he Copyright Act does not expressly

render anyone liable for infringement committed by another," it
"does not preclude the imposition of liability for copyright
infringements on certain parties who have not themselves engaged
in the infringing activity.

Sony, 464 U.S. at 434-35.

Through

contributory infringement, one infringes "by intentionally
inducing or encouraging direct infringement."
Studios Inc v. Grokster
S.Ct. 2764, 162 L.Ed.2d 781

Metro-Goldwyn­

Ltd., 545 U.S. 913, 930, 125

(2005).

exists where one "profit[s] from

Vicarious infringement
rect infringement while

declining to exercise a right to stop or limit it."

Id.

As

these definitions suggest, in order to hold a defendant
secondarily liable someone else must have directly infringed on
the copyright holder's rights.
(2d Cir. 2005)

(" [T]

See Faulkner, 409 F.3d 26, 40

can be no contributory infringement

absent actual infringement. ") i Matthew Bender & Co. v. West
Publ'

Co., 158 F.3d 693, 706 (2d Cir. 1998)

(rejecting

plaintiff's contributory infringement claim, in part, because
the plaintiff "has failed to identify any primary infringer") .
Here, however, t

Plaintiff has failed to adduce sufficient

evidence to support a claim for either contributory or vicarious
infringement.
62

i.

The Evidence Does Not Support The
Plaintiff's Allegation Of Contributory
Infringement

Count III of Wolk's complaint alleges that Photobucket
engaged in the contributory infringement of Wolk!s copyrighted
artwork because of its business relationship with the Kodak
Defendants.

"To establish a claim for contributory copyright

infringement! a plaintiff must allege that the defendant 'with
knowledge of the infringing activity! induced, caused! or
materially contributed to the infringing conduct of another.'"
Brought to Life Music, Inc. v. MCA Records, Inc.! No. 02 CIV.
1164, 2003 WL 296561, at *2 (S.D.N.Y. Feb. 11, 2003)

1159, 1162 (2d Cir. 1971)).

{quoting

An allegation that a defendant

"merely provid[ed] the means to accomplish an infringing
activity" is insufficient to establish a claim for contributory
infringement.
at *3

Livnat v. Lavi! No. 96 CIV. 4967, 1998 WL 43221,

(S.D.N.Y. Feb. 2, 1998) i see also

Music, Inc.! No. 93 CIV. 3914, 1998 WL 851574, at *37 (S.D.N.Y.
Dec. 7, 1998)

("A mere allegation that the defendant provided

the third party with the opportunity to engage in wrongful
conduct would not even be enough to survive a motion to

63

dismiss.") .

Participation must be Usubstant

"

v. Kaufmann, 690 F. Supp. 289, 294 (S.D.N.Y. 1988).

Demet

ades

In addition

to establishing a defendant's substantial participation, the
plaintiff must also demonstrate the defendant's knowledge of the
infringing activity.

One who "supplies another with instruments

by which another commits a tort, must be shown to have knowledge
that the other will or can reasonably be expected to commit a
tort with the supplied instrument.
wrongdoing.
defendant."

The test is whether [the]

. might well have been anticipated by the
Display Producers, Inc. v. Shulton, Inc., 525 F.

Supp. 631, 633

(S.D.N.Y. 1981).

"[O]ne who furnishes a

copyrighted work to another but is innocent of any knowledge of
the other party's intended illegitimate use will not be liable."
Livnat, 1998 WL 43221, at *3.

In this case, the Plaintiff has

led to establish

the elements required to state a claim for contributory
infringement.

The Plaintiff has not demonstrated Photobucket to

have acted with knowledge that it was passing along infringing
images to the Kodak Defendants.

There is also no evidence that

Photobucket and the Kodak Defendants acted in concert to
infringe upon the Plaintiff's rights.

Instead, the evidence

suggests that the Photobucket website was, at most, a means for

64

unidentified users of the website to accomplish an infringing
activity.

Although the Plaintiff invokes Metro-Goldwyn-Mayer

Studios, 545 U.S. 913, A&M Records, Inc. v. Napster, 239 F.3d
1004 (9th Cir. 2001) and In re Aimster Copyright Litig., 334
F.3d 643

(7th Cir. 2003), in support of her claim for

contributory infringement, these cases address facts that do not
exist in the present action.

While those three cases involved

peer to-peer websites and evidence that facilitating the
unauthorized exchange

copyrighted material was a central

component of the defendants' business strategy, the Plaintiff in
this case has presented no evidence suggesting that Photobucket
sought to encourage copyright inf

ngement or promoted its

service as a means of circumventing copyright.

Additionally, as

described above, the Plaintiff bears the burden of establishing
Photobucket's knowledge of the infringing activity.

The

Plaintiff's attempt to establish knowledge using the notices the
Plaintiff sent is unavailing because, as the Court noted in
Viacom, "knowledge," means "actual or constructive knowledge
specific and identifiable infringements

individual items,"

not "a general awareness that there are infringements."
718 F. Supp. 2d at 525.

Viacom,

As such, the Plaintiff has presented

insufficient evidence to support a claim for contributory
infringement.
65

ii. The Evidence Does Not Support The
Plaintiff's Allegation Of Vicarious
Infringement

Count IV of Wolk/s complaint

leges Photobucket to

have engaged in vicarious copyright infringement.

"[O]ne may e

vicariously liable if he has the right and ability to supervise
the infringing activity and also has a direct financ
in such activities.

1I

Gershwin Publ/g

l

interest

443 F.2d at 1162.

Similar to contributory liabilitYI vicarious infringement "is
established if it is shown that a partYI with knowledge of
infringing act

ty, induces, causes, or materially contributes

to the infringing conduct

another."

Universal Ci

Studios

Inc. v. Nintendo Co. Ltd., 615 F. Supp. 838 1 857 (S.D.N.Y.
1985).

As described above, the Plaintiff has presented no

evidence that Photobucket had any "right and ability to
supervise" any

leged infringing activity by the Kodak

Defendants, nor is there evidence suggesting that Photobucket
had "knowledge" of such infringing activity.

Accordingly, Count

IV, alleging Photobucket to have vicariously infringed upon
Wolk's copyrights, is dismissed.

Conclusion

66

Based upon the facts and conclusions set forth above,
Wolk/s motion for partial summary judgment against the Kodak
Defendants, motion for summary judgment against Photobucket

l

motion to amend, motion to admit expert testimony and motion to
investigate are denied, and the Defendants' motions for summary
judgment are granted.

It is so ordered.

New York, NY
December;Ll, 2011

ROBERT W. SWEET
U.S.D.J.

67