FameFlynet, Inc. v. The Shoshanna Collection, LLC et al

Filing 41

OPINION re: 32 CROSS MOTION for Summary Judgment Notice of Motion. filed by The Shoshanna Collection, LLC, Shoshanna Group, Inc., 21 MOTION for Summary Judgment . filed by FameFlynet, Inc., 35 CROSS MOTION for Su mmary Judgment Notice of Motion. filed by The Shoshanna Collection, LLC, Shoshanna Group, Inc., 25 MOTION for Summary Judgment . filed by FameFlynet, Inc. For the foregoing reasons, Pl aintiff ' s motion for summaryjudgment is granted, and Defendants ' cross - motion for summaryjudgment is denied. (Signed by Judge Robert W. Sweet on 9/29/2017) (js)

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~

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

-------------------------------------x
FAMEFLYNET, INC.,
16 Civ. 7645

Plaintiff,

OPINION

-againstTHE SHOSHANNA COLLECTION, LLC
AND SHOSHANNA GROUP, INC.,
Defendants.

-------------------------------------x
A P P E A R A N C E S:

Attorneys for Plaintiff
SANDERS LAW, PLLC
100 Garden City Plaza, Suite 500
Garden City, New York 11530
By:
Craig B. Sanders, Esq.
Jonathan M. Cader, Esq .

Attorneys for Defendants
PRYOR CASHMAN LLP
7 Times Square
New York, New York 10036
By:
Robert J. deBrauwere, Esq.
Ryan S. Klarberg, Esq.

1

Sweet, D. J.

Plaintiff FameFlynet, Inc.

( "FFN" or the "Plaintiff") ,

a photojournalism corporation , has moved pursuant to Federal
Rule of Civil Procedure 56 for summary judgment against
defendants Shoshanna Collection ("Shoshanna Collection") and
Shoshanna Group , Inc.

("Shoshanna Group")

(collec ti vely the

"Defendants" ) , alleging direct copyright infringement in
violation of 17 U. S.C.

§

106. The Defendants have cross - moved

for summary judgment under the same Rule to dismiss the
Plaintiff's complaint (the "Comp l aint " ) for copyr ight
infringement. Based on the facts and conclus i ons set forth
below, the summary judgment motion of the Plaintiff is granted
I

and the cross -motion of the Defendants is denied.

I.

Prior Proceedings

Plaintiff filed a complaint on September 29 , 2016
against the Defendants, alleging c laims of direct and vicarious
copyright infringement in violat i on of 17 U.S.C.

§

106. 1 On June

29 , 2017, Plaintiff moved for summary judgment, and Defendants
timely cross -moved for summary judgment on Julx 14, 2017

1
Although the Plaintiff alleged vicarious copyright infringement in the
Complaint , it onl y submitted briefs in support o f the direct infringement
claim , so the Court considers only tha t claim on this motion.

2

pursuant to this Court 's Order extending the deadline to file
motions until August 4, 2017 . The instant motions were heard and
marked fully submitted on August 16, 2017.

II.

The Facts

The facts have been set forth in Plaintiff's Statement
of Undisputed Facts

("SUF") per Local Civil Rule 56.l(a) and

Defendants' Local Rule 56.1 Responsive Statement of Material
Facts and are not in dispute except as noted below.

The Plaintiff is FameFlynet, Inc., a California -based
photojournalism corporation that provides entertainment-related
goods and services. FFN owns the rights to a multitude of
photographs, primarily featuring celebrities, which it licenses
to online and print publications for profit. Plaintiff's primary
assets are i ts library and archive of celebrity photographs.
Defendants Shoshanna Co ll ection and Shoshanna Group are a New
York-based retail company and the website operator of
www.shoshanna.com (the "Websit e " ), respectively.

At issue here are two photographs, allegedly owned by
the Plaintiff, of the celebrity Emmy Rossum taken at the Chateau
Marmont Hotel in Hollywood, California on July 16, 2015
3

(collectively the "Rossum Photos" or the "Photos") . The
Plaintiff asserts that it registered the Rossum Photos with the
United States Copyright Office (the "USCO") on September 24 ,
2015, under Application No. 1-2734759362, and that the USCO
approved the registration (the "Registration") that day. While
the Defendants do not deny that the Plaintiff successfully
registered some photographs with the USCO, Defendants dispute
that the deposit copy of materials submitted to the USCO
contained the Rossum Photos.

The Rossum Photos were first published on or about
July 16, 2015 by E! Entertainment Online ("E! Entertainment"),
which paid FFN a license fee of $75 for the Photos. On October
7, 2015, FFN observed the Rossum Photos on Defendants' Website
at the following URLs: https://www.shoshanna.com/shop/worldof/cat/celebrities/ and https://www .shoshanna.com/shop/worldof/cat/press/. The parties do not dispute that an employee of
one of the Defendants saved and uploaded the Rossum Photos to
the Website, that Defendants had complete control over the
Website, and that they actively reviewed and monitored the
content posted on the Website.

4

(

III. The Applicable Standard

Surmnary judgment is appropriate only where "there is
no genuine issue as to any material fact and .

. the moving

party is entitled to a judgment as a matter of law."

Fed. R.

Civ. P. 56(c). A dispute is "genuine" if "the evidence is such
that a reasonable jury could return a verdict for the nonmoving
party."

Anderson v. Liberty Lobby, Inc.,

477 U.S. 242 , 248

(1986). The relevant inquiry on application for surmnary judgment
is "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."

Id. at 251 - 52 . A

court is not charged with weighing the evidence and determining
its truth, but with determining whether there is a genuine issue
for trial. Westinghouse Elec. Corp. v . N . Y . C . Transit Auth., 735
F. Supp. 1205, 1212 (S.D .N. Y. 1990)

(quoting Anderson, 477 U.S.

at 249). "[T]he mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly
supported motion for surmnary judgment; the requirement is that
there be no genuine issue of material fact." Anderson, 477 U.S.
at 247 -4 8 (emphasis in origina l ).

5

IV.

The Plaintiff's Motion for Summary Judgment is Granted and
the Defendants' Cross-Motion is Denied

The Copyright Act of 1976 (the "Copyright Act " )
"grants copyright owners a bundle of exclusive rights, including
the rights to 'reproduce the copyrighted work in copies '

and 't o

prepare derivative works based upon the copyrighted work .'"
Castle Rock Entm't, Inc. v . Carol Publ ' g Group, Inc.,
132, 1 37(2d Cir . 1998)

(citing 1 7 U. S . C .

§

150 F.3d

106). To establish a

prima facie c l aim of direct infringement under the Copyright
Act, two elements must be demonstrated: "(1) ownership of a
valid copyright; and (2) copying of constituent elements of the
work that are original. " Feist Pubs ., Inc. v . Rural Tel . Serv.
Co ., Inc.,

499 U.S . 340 , 361 (1991)

(cit in g Harper

&

Row,

Publishers, Inc. v . Nation Enterprises , 471 U. S . 539 , 556
( 1985)) .

a. The Pl aintif f Has Established a Prima Facie Claim for
Di re ct Copyright Inf ringement

To bring a successfu l cla im for copyr ight
infri ngement , the plaintiff must preliminari l y establish valid
ownership of the copyrighted work. See Castle Rock Entm't, Inc .
150 F.3d at 137. In addition , "[ c]opyright registration is a
6

Here, the Plaintiff registered a compilation of
photographs published between "Jul[y] 01, 2015 to Aug 31, 2015;
updated daily" with the USCO, under the title "FameFlynet
Pictures Database" and Registration Number "VA 1-971-327." Pl's.
Br. Ex. F. The Defendants concede that Plaintiff effectively
registered some compilation of photographs, but contest that the
Rossum Photos are included within this compilation. See Defs'.
Reply Br. 3 ("There is not a single reference in the
registration certificate supporting that the registration covers
the Rossum Photographs.").

The USCO provides that a single registration can
effectively cover a group of published photographs if the
following requirements are met: "(a) all the photographs are by
the same photographer

.'

(b) all the photographs are

published in the same calendar year; and (c) all the photographs
have the same copyright claimant." U.S. Copyright Office, Group
Registration of Published Photographs, FL-124

(2012).

Here, the Defendants have neither made any suggestion
nor provided any evidence suggesting that the Plaintiff has
failed to satisfy any of these requirements. First, the
Registration provides that all the photographs are authored by
8

FameFlynet, Inc., in accordance with (a). See Pl.'s Br. Ex. F.
Second, all photographs within the compilation were published
between July and August 2015 pursuant to (b) . See id. Third, the
Registration provides that FameFlynet, Inc. is the claimant to
all the photographs pursuant to (c). See id. Accordingly there
is no reason to believe the single registration for the
compilation of the Plaintiff's photographs is invalid. Moreover,
the Registration is entitled to a prima facie presumption of
validity as provided for in 17 U.S.C.

§

410(c) because the date

of first publication of any of the works in the compilationAugust 31, 2015 -

is well within the five-year limit of the

USCO's grant of the Registration on September 24, 2015.

The Registration constitutes prima facie evidence of
the validity of Plaintiff's copyright, shifting to the
Defendants the "heavy burden" of demonstrating the invalidity of
the copyright. See Jetmax Ltd., 2017 WL 3726756, at *3.
"Generally speaking, the presumption of validity may be rebutted
'[w]here other evidence in the record casts doubt on the
question.'" Fonar Corp. v. Domenick, 105 F.3d 99, 104
1997)
908

(citing Durham Indus., Inc. v. Tomy Corp.,

(2d Cir. 1980)

(2d Cir.

630 F.32d 905,

(emphasis in original)). The Defendants claim

that the Registration issued by the USCO is invalid because
there is "not a single reference" in the Registration

9

specifically noting that it covers the Rossum Photos. Defs'.
Reply Br. 3. The Defendants sudmit no other evidence suggesting
the Registration's invalidity.

The Second Circuit has concluded that "[t]he Copyright
Office has expertise to determine in the first instance whether
a filer has complied with the technical requirements for a
registration certificate," and that "under this doctrine, the
presumption may be overcome only by 'proof of deliberate
misrepresentation.'" Fonar Corp., 105 F.3d at 105 (citing
Whimsicality, Inc., 891 F.2d at 455). To prevail on an assertion

of fraud the Defendants must demonstrate that "(i) the copyright
application contains one or more factual misrepresentations,
(ii) the inaccuracies were 'willful or deliberate,' and (iii)
the Copyright Office relied on the misrepresentations." Id.
(citing Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452,
455 (2d Cir. 1989)). The Fonar Court found that the defendant
did not overcome the presumption of the registration's validity
where it made no allegations that the plaintiff defrauded or
made deliberate misrepresentations to the USCO. Fonar Corp., 105
F.3d at 105. Here, the Defendants likewise have not alleged that
FFN has either defrauded or made any deliberate
misrepresentation to the Copyright Office.

10

As such, the presumption of the Registration's
validity stands, and the Plaintiff's Registration establishes
its ownership of the Rossum Photos.

The second element of the infringement analysis turns
on two requirements - whether the Defendants (i) actually copied
and (ii) improperly appropriated the Photos. See Laureyssens v.
Idea Group, Inc.,

964 F.2d 131, 139-140 (2d Cir. 1992); see also

Yurman Design, Inc. v. Golden Treasure Imps., Inc.,
2d 506, 516 (S.D.N.Y. Aug. 5, 2003)

275 F. Supp.

("To prevail on its motion

for summary judgment for copyright infringement, plaintiff must
also show that no genuine issue of material fact exists as to
whether defendants
works' and (2)

(1)

'have actually copied [plaintiff's]

'that such copying was illegal because a

substantial similarity exists between the defendants'
[photographs] and the protectable elements of the plaintiff's
[photographs]'").

"Actual copying may be established by direct evidence
or by proof of defendant's access to plaintiff's work and
sufficient similarity between the works to support an inference
of copying." Arden v. Columbia Pictures Indus., Inc.,

908 F.

Supp. 1248, 1257 (S.D.N.Y. 1995). Here, the Plaintiff asserts,
and the Defendants do not dispute, the following facts: "FFN's
11

two (2) photographs were also individually saved by Defendants
at the following URLS .

.," SUF ! 23 , and "The Rossum Photos

were uploaded to the Website by an employee of Defendants," id.

! 24. The Defendants assert that they "merely re-published the
Rossum Photos in conformity with the secondary dissemination
rights available from E! Entertainment Online .

." Defs.'

Reply Br. 2. They argue that when E! Entertainment published the
Rossum Photos on its website pursuant to E! Entertainment's
license with the Plaintiff, website visi t ors -

including the

Defendants - gained "the unfettered ability" to republish the
Photos "throughout the Internet, without any restrictions
." Id. 1. In sum, the Defendants saved the Photos from E!

Entertainment's website to other URLs, taking the entirety of
the copyrighted works. Given these undisputed facts, the
Defendants have conceded actual copying of the Rossum Photos for
purposes of this motion.

To prove improper appropriation, the plaintiff "must
also show that substantial similarity exists with respect to
protectible elements of the works." Arden, 908 F. Supp. at 1257.
"[C] ourts employ the ' ord inary observer test,' which asks
'whether the ordinary observer , unless he set out t o detect the
disparities [between the two works], would be disposed to
overlook them, and regard their aesthetic appeal as the same.'"
12

M. Lady, LLC v . AJI, Inc., No. 06-Civ-0194(HBP), 2007 WL

2728711 , at *6 (Sept. 19, 2007) . A side-by-side comparison
demonstrates that, even if there are any disparities between the
Plaintiff's Rossum Photos and those pub lished by the Defendants
- which neither party alleges - there is no doubt that an
ordinary observer would not notice them.

The Defendants have actually and improperly copied the
Plaintiff's works and have accordingly infringed the Plaintiff's
copyright absent a showing of a val i d license for such use.

b . The Defendants Have Not Shown the Existence of a Valid
Li cense Permitting Republication of the Rossum Photos

Even where a plaintiff has demonstrated both ownership
and infringement, "the existence of a license is a valid defense
to an infringement claim ." Agence France Presse v . Morel,

769 F.

Supp. 2d 295 , 302 (S .D.N. Y. 2011) . "Where the dispute turns on
whether a license is held by the accused infringer, the
defendant bears the burden to come forward with evidence of a
license." Id. at 302

(interna l quotations omitted) .

The Defendants assert that their republication of the
Rossum Photos does not violate the Copyright Act " because [su ch]
13

republication mirrors the permitted uses granted to Plaintiff's
licensees,

[so] Defendants'

[sic] shared the Rossum Photos in a

permitted manner." Defs.' Br . 6. The Defendants argue that when
E! Entertainment published the Rossum Photos on its website
pursuant to its license with the Plaintiff , website visitors
gained "the unfettered ability" to republish the Photos
"throughout the Internet, without any restrictions .

ff

Defs.' Reply Br. 1. The Defendants assert that they "merely republished the Rossum Photos in conformity with the secondary
dissemination rights available from E! Entertainment Online .
"

Id.

2.

The Defendants have not come forward with the alleged
E! Entertainment license they claim as the basis of their lawful
republication of the Photos or any legal authorities in support
of their position. As the Defendants bear the burden of
production,

see Agence France Press, 769 F. Supp. 2d at 302 ,

they have failed to demonstrate that their publication of the
Rossum Photos might be permitted pursuant to a license.

For the aforementioned reasons, the Defendants have
infringed FFN's copyright in the Rossum Photos.

14

c. The Plaintiff is Entitled to Statutory Damages

A copyright owner whose rights have been violated may
elect to recover either statutory damages or actual damages and
profits. See 17 U.S.C.

§

504(c) (1)

("[T]he copyright owner may

elect, at any time before final judgment is rendered, to
recover, instead of actual damages and profits, an award of
statutory damages for all infringements involved in the action,
with respect to any one work, for which any one infringer is
liable

in a sum of not less than $750 or more than $30,000

as the court considers just."). If this Court determines that
the Defendant's infringement was willful, it may, in its
discretion, enhance the statutory damages award up to $150,000
per infringed work. See id.

§

504 (c) (2). Alternatively, if the

infringer "was not aware and had no reason to believe that" its
acts "constituted an infringement," the Court may "reduce the
award of statutory damages to a sum of not less than $200." Id.
For the purposes of calculating statutory damages, the Copyright
Act provides that one compilation "constitutes one work." Jett
v. Ficara, No. 04 Civ. 9466(RMB) (HBP), 2007 WL 2197834, at *8

(S.D.N.Y. July 31, 2007) (citing 17 U.S.C.
quotation marks omitted).

15

§

504(c) (1)) (internal

•" .,

A court has "broad discretion " in awarding statutory
damages within the statutory limits. Fitzgerald Publ'g Co . v .
Baylor Publ'g Co. , 807 F.2d 1110 , 1116 (2d Cir . 1986). I n
assessing statutory damages , courts may cons i der the following
factors: " ( l ) the infringer's state of mind;

(2) the expenses

saved, and profits earned, by the infringer;

(3) the revenue

lost by the copyright ho l der ;
infringer and third part i es;

(4) the deterrent effect on the
(5) the infringer ' s cooperating in

providing evidence concern ing the value of the infringing
material; and (6) the conduct and attitude of the parties."
Erickson Prods ., Inc. v. Only Websites, Inc., No. 12-Civ1693(PGG) (KNF), 2016 WL 1337277, at *2 (S . D. N.Y . Mar. 31 , 2016)
(citing N .A. S . Impor. Corp. v . Chenson Enter., Inc.,

968 F.2d

250 , 252 -5 3 (2d Cir . 1992)); see also RSO Records , Inc. v . Peri,
596 F. Supp. 849 , 862 (S . D. N.Y . 1984)

(noting that the

" statutory damages should bear some relation to actual damages
suffered ." ).

To prove willfulness, "the plaintiff must show (1 )
that the defendant was actually aware of the infringing
activity , or (2) that the defendant's act i ons were the result of
'reckless disregard' for, or ' wi llfu l b lindness ' to, the
copyright holder ' s rights." Island Software & Computer Serv.,
Inc. v . Microsoft Corp. , 413 F.3d 257 , 263 (2d Cir . 2005) . As
16

other courts have noted, "trebling the licensing fee .

is in

line with the general approach taken by courts" in determining
statutory damages. Erickson Prods., Inc. , 2016 WL 1337277 , at
*3; see also Broad. Music, Inc . v. Prana Hospitality, Inc. , 158
F. Supp. 3d 184 , 198

(S.D . N.Y . 2016)

(noting that "Second

Circuit case law

. reflects that courts in this Circuit

common l y award , in cases of non - innocent infringement , statutory
damages of between three and five times the cost of the
licensing fees the defendant would have paid"); Sailor Music v.
IML Corp. , 867 F. Supp. 565, 570

(E.D. Mich . 1994)

(finding that

in cases of willful copyright infringement, a "survey of
statutory awards throughout the country .

indicate [ s] that .

. courts typically award three times the amount of a properly
purchased license for each infringement") .

The Plaintiff here seeks a sum total of $25 , 000 in
statutory damages and asks the Court to adjust this award up to
$150,000 upon a finding of willful infringement . See Pl .' s Br.
11 . The Plaintiff supports this suggested figure by stating that
this "should provide Defendants with ample reason not [to]
continue to infringe on content creators rights, " and "any
smaller award would likely fail to impart the necessary message
and , therefore, fail to support the goals of the Copyright Act."
Pl. ' s Reply Br . 19. The Defendants object to this damages
17

recorrunendation, arguing that "even if there were a finding in
favor of Plaintiff,

the customary damage award would

entitle Plaintiff to $225 (i.e., three times Plaintiff's highest
license fee of $75) ." Defs.' Reply Br. 4. The parties do not
dispute that the highest license fee for the Photos was $75 and
was provided by E! Entertainment. See SUF

~

21; Pl.'s Br. 5.

The Plaintiff's rather arbitrary request for $25,000
in statutory damages is inconsistent with the general approach
of trebling the highest licensee fee paid for use of the works.
See Erickson Prods., Inc.,

2016 WL 1337277, at *3. Based on the

undisputed facts that the Defendants' knowingly saved the Photos
and then uploaded them to the Website, which they completely
controlled and actively monitored, the Defendants' willfully
infringed the copyright. See SUF

~~

22-23, 24-28. However,

trebling the $75 licensee fee to $225 in accordance with this
Circuit's 'willful infringement' case law still falls short of
the mandatory minimum statutory damages of $750 under the
Copyright Act. See 17 U.S.C.

§

504 (c ) (1). Absent a showing that

the "infringer was not aware and had no reason to believe that
his or her acts constituted an infringement of copyright,"
sections 504(c) (1) and (2) provide that the Court lacks the
discretion to "reduce the award of statutory damages to a sum of
not less than $200." Id.

§

504(c) (1 ) -(2). Upon the finding of
18

willful infringement the Copyright Act mandates statutory
damages "

. in a sum of not less than $750." See id. §

504(c) (1). Therefore, the Court approves an award of $750 to the
Plaintiff.

d. The Plaintiff is Entitled to Reasonable Attorney's Fees

Finally, the Court considers the Plaintiff's request
for reimbursement of the costs and attorney's fees incurred in
connection with this action. See Pl.'s Br. 1. Section 505 of the
Copyright Act authorizes the Court, at its discretion, to award
reasonable attorney's fees and costs to the prevailing party so
long as the Plaintiff registered the copyright prior to the
commencement of the infringement. 17 U.S.C. § 505; see Levine v.

Landy, 832 F. Supp. 2d 176, 184 (S.D.N.Y. 2011). In a copyright
action, the court exercises this discretion by weighing factors
such as "frivolousness, motivation, objective unreasonableness
(both in the factual and in the legal components of the case)
and the need in particular circumstances to advance
considerations of compensation and deterrence." Kirtsaeng v.

John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985 (2016). The
purpose of fee awards under Section 505 is to "'encourage the
types of lawsuits that promote' the purposes of the Copyright
Act such as 'encouraging and rewarding authors' creations while
19

,--

also enabling others to build on that work . '" BWP Media USA,
2016 WL 8309676 , at *2

Inc.,

(citing Kirtsaeng , 126 S . Ct. at

198 6) .

The Plaintiff ' s request for reasonable attorney ' s fees
and costs is granted as it promotes the stated purposes of the
Copyr i ght Act. Specifica l ly , shifting fees here serves to
encourage and reward innovators for their contributions in the
march toward progress rather than burdening them with the costs
of defending their protected works. The Plaintiff ' s motion for
reasonable costs and attorney ' s fees is granted.

V.

Conclusion

For the foregoing reasons, Pl aintiff ' s motion for summary
judgment is granted , and Defendants '

cross - motion for summary

judgment is denied .

It is so ordered.

l'

New York , NY
September-;J.. ,

2017

U.S . D . J .

20