Goodman v. Universal Beauty Products Inc.

Filing 60

OPINION & ORDER: re: 43 FIRST MOTION for Partial Summary Judgment on Liability under the Copyright Act. filed by Rod Goodman. For the foregoing reasons, plaintiff's motion for summary judgment is GRANTED. Trial will be limited t o the question of damages. The Clerk of Court is directed to close the open motion at ECF No. 43, and as further set forth in this order. Motions terminated: 43 FIRST MOTION for Partial Summary Judgment on Liability under the Copyright Act, filed by Rod Goodman. (Signed by Judge Katherine B. Forrest on 3/9/2018) (ap)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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ROD GOODMAN,
:
:
Plaintiff,
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:
-v:
:
UNIVERSAL BEAUTY PRODUCTS INC. and :
WALGREEN CO.,
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Defendants.
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USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: _________________
DATE FILED: March 9, 2018

17-cv-1716 (KBF)
OPINION & ORDER

KATHERINE B. FORREST, District Judge:
Plaintiff Rod Goodman is a professional photographer who takes portraits
and headshots. On March 8, 2017, he commenced this action under 17 U.S.C. §§
106, 501, and 602, alleging that defendants Universal Beauty Products Inc. (“UBP”)
and Walgreen Co. (“Walgreens”) featured one of his photographs on the packaging
for a product called Bald Guyz Clear Shave Gel without authorization. (ECF No. 1.)
Plaintiff amended his complaint on June 9, 2017. (ECF No. 22, Am. Compl.)
Discovery closed on January 5, 2018, (ECF No. 17), and now pending before the
Court is plaintiff’s motion for summary judgment. (ECF No. 43.) Defendants argue
that, inter alia, plaintiff has not proven that his copyright registration is valid and
defendants had an implied license to use the image in question. For the reasons
stated below plaintiff’s motion for summary judgment is GRANTED.1

Plaintiff’s Amended Complaint alleges copyright infringement against both defendants under 17
U.S.C. §§ 106 and 501, as well as infringing exportation against UBP under 17 U.S.C. § 602(a)(2).
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I.

BACKGROUND
The following facts are undisputed unless otherwise stated.
Plaintiff is a professional photographer who specializes in portraits and
headshots. (ECF No. 45, Pl.’s Statement Pursuant to Local Rule 56.1 (“56.1
Statement”) ¶ 1.) His clients purchase his photos through a website using a unique
client access code. (Id. ¶ 4.) On or around November 22, 2010, plaintiff
photographed headshots for a bald male model, Jimmy Dahroug. (Id. ¶ 7; see also
Am. Compl., Ex. A; ECF No. 50, Decl. of Howard Brauner (“Brauner Decl.”) ¶ 5;
ECF No. 46-1, Declaration of Richard P. Liebowitz in Supp. of Pl.’s Mot. for Partial
Summ. J. (“Liebowitz Decl.”), Ex. A at 6-8.) At this time, plaintiff’s website stated
that “[n]o images may be reproduced or copied in any manner without written
permission from the photographer.” (56.1 Statement ¶ 5; see also Am. Compl., Ex.
B.) It also contained a user agreement, which stated, in pertinent part:
Products purchased through this website are subject to the terms set
forth by Photographer in a separate license agreement . . . . [T]he
acquisition of a copy of a product does not itself convey any rights
under copyright or other laws to exploit the work. Products purchased
by you through this website may not be reproduced, scanned,
displayed, transmitted, modified, altered or otherwise exploited in any
manner without the prior consent of the photographer.
(56.1 Statement ¶ 6; see also Am. Compl., Ex. C.)
In support of the instant motion, plaintiff also submitted a certificate of
registration with the U.S. Copyright Office that states the date of the Photograph’s

As the summary judgment motion and opposition papers are directed entirely toward the claims
under §§ 106 and 501, the Court assumes that the claim under § 602(a)(2) is withdrawn.

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first publication was November 22, 2010 and that the copyright was certified on
January 9, 2017. (Liebowitz Decl., Ex. A at 2.)
Unbeknownst to Goodman, Dahroug sold his headshot (“the Photograph”) to
a company called BG Products (“BG”), which distributed and sold products
including Bald Guyz Clear Shave Gel. BG marketed and sold the Shave Gel in a
package featuring the Photograph. On November 5, 2013, BG entered into an asset
purchase agreement (“the APA”) with UBP, pursuant to which BG sold whatever
rights and interest it had in the Bald Guyz trademark as well as its existing
inventories of finished products and packaging materials—including the inventories
of Bald Guyz Clear Shave Gel packaging materials. (ECF No. 50-1, Brauner Decl.,
Ex. A.) After the sale, UBP began to sell, inter alia, BG Clear Guyz Shave Gel,
utilizing the Photograph.
At some unspecified time in 2014, plaintiff saw BG Shave Gel in a store and
recognized the Photograph as the headshot he had taken, a copy of which he had
sold to Dahroug in 2010. On March 8, 2017, plaintiff commenced this lawsuit
against UBP for copyright infringement. On June 9, 2017, after discovering that
Walgreens had purchased BG Shave Gel from UBP and sold it on its website,
plaintiff amended his Complaint to add Walgreens as a defendant.
II.

LEGAL PRINCIPLES
A. Standard of Review
“The court shall grant summary judgment if the movant shows that there is

no genuine dispute as to any material fact and the movant is entitled to judgment
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as a matter of law.” Fed. R. Civ. P. 56(a). The moving party bears the initial
burden of demonstrating “the absence of a genuine issue of material fact.” Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986). When the moving party does not bear
the ultimate burden on a particular claim or issue, it need only make a showing
that the non-moving party lacks evidence from which a reasonable jury could find in
the non-moving party’s favor at trial. Id. at 322-23.
In making a determination on summary judgment, the court must “construe
all evidence in the light most favorable to the nonmoving party, drawing all
inferences and resolving all ambiguities in its favor.” Dickerson v. Napolitano, 604
F.3d 732, 740 (2d Cir. 2010). Once the moving party has discharged its burden, the
opposing party must set out specific facts showing a genuine issue of material fact
for trial. Wright v. Goord, 554 F.3d 255, 266 (2d Cir. 2009). “[A] party may not rely
on mere speculation or conjecture as to the true nature of the facts to overcome a
motion for summary judgment,” as “[m]ere conclusory allegations or denials cannot
by themselves create a genuine issue of material fact where none would otherwise
exist.” Hicks v. Baines, 593 F.3d 159, 166 (2d Cir. 2010) (internal citations
omitted).
B. Valid Copyright Ownership
To state a cognizable claim for copyright infringement, a plaintiff must
establish that it owned a valid copyright and that the defendants copied the
copyrighted work without authorization. See Computer Assocs. Int’l v. Altai, 982
F.2d 693, 701 (2d Cir. 1992).
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Under 17 U.S.C. § 410(c), “[a] certificate of registration from the United
States Register of Copyrights constitutes prima facie evidence of the valid
ownership of a copyright.” Hamil Am. Inc. v. GFI, 193 F.3d 92, 98 (2d Cir. 1999)
(citations omitted); see also Folio Impressions, Inc. v. Byer California, 937 F.2d 759,
763 (2d Cir. 1991) (same); Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997)
(same). This presumption of validity is rebutted, however, “where other evidence in
the record casts doubt on the question.” Urbont v. Sony Music Entm’t, 831 F.3d 80,
89 (quoting Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149,
166 (2d Cir. 2003)). The party challenging the validity of the copyright registration
bears the burden of rebutting the presumption. Urbont, 831 F.3d at 89 (quoting
Hamil Am., Inc., 193 F.3d at 98).
“[U]nder Rule 201(b) of the Federal Rules of Evidence, a court may take
judicial notice of facts that are ‘capable of accurate and ready determination by
resort to sources whose accuracy cannot reasonably be questioned.’” Island
Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005)
(quoting Fed. R. Evid. 201(b)). A district court is “entitled to take judicial notice of
[a party’s] federal copyright registrations, as published in the Copyright Office’s
registry.” Id.
C. Defenses
1. Implied License
There is no dispute that defendants sold a product with packaging featuring
the Photograph. A copyright holder possesses the exclusive right to “reproduce
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copyrighted work in copies” and to “distribute copies . . . of the copyrighted work to
the public by sale . . . .” 17 U.S.C. § 106. As such, “an owner may sue for
infringement those who exploit the creative work without permission or
assignment.” Davis v. Blige, 505 F.3d 90, 98 (2d Cir. 2007). Here, defendants
assert that they possessed an implied license to use the Photograph on the
packaging in question.
A copyright owner who grants a license “waives his right to sue the licensee
for copyright infringement.” Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998).
“[C]ourts have found implied licenses only in ‘narrow’ circumstances where one
party ‘created a work at [the other’s] request and handed it over, intending that [the
other] copy and distribute it.’” SmithKline Beecham Consumer Healthcare, L.P. v.
Watson Pharm., Inc., 211 F.3d 21, 25 (2d Cir. 2000) (quoting Effects Assocs., Inc. v.
Cohen, 908 F.2d 555, 558 (9th Cir. 1990)) (emphasis added) (alteration in original).
While the Second Circuit has not yet developed a test for determining whether a
copyright owner has conveyed an implied license, “our Circuit has followed the lead
of other appeals courts and cautioned that implied non-exclusive licenses should be
found only in narrow circumstances where one party created a work at the other’s
request and handed it over, intending that the other copy and distribute it.”
Psihoyos v. Pearson Educ., Inc., 855 F. Supp. 2d 103, 120 (S.D.N.Y. 2012) (quoting
Weinstein Co. v. Smokewood Entm’t Grp., LLC, 664 F.Supp.2d 332, 344 (S.D.N.Y.
2009).

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In this district, the “law in the area of implied licenses shows a measure of
conflict.” Psihoyos, 855 F. Supp. 2d at 119. One approach, the Effects test,
determines whether the plaintiff intended “that the defendant be permitted to use
and distribute his work,” but it does not construe “payment in full as a condition
precedent to implying a license.” Psihoyos, 855 F. Supp. 2d at 120 (citing Effects
Assocs., 908 F.2d 555). The other, more “relaxed” approach looks to the “oft-stated
principle that ‘consent given in the form of mere permission or lack of objection is
also equivalent to a nonexclusive license and is not required to be in writing.’” Id.
at 121 (quoting Keane Dealer Servs., Inc. v. Harts, 968 F. Supp. 944, 947 (S.D.N.Y.
1997)). “Ultimately, whichever test is applied, the question comes down to whether
there was a ‘meeting of the minds’ between the parties to permit the particular
usage at issue.” Id. at 124 (citing Ulloa v. Universal Music and Video Distrib. Corp.,
303 F. Supp. 2d 409, 416 (S.D.N.Y. 2004)).
Additionally, “in most of the cases addressing the defense of license, the issue
has been whether a license is held by the accused infringer. Since, in such cases,
evidence of a license is readily available to the alleged licensee, it is sensible to
place upon that party the burden of coming forward with evidence of a license.”
Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995) (internal citation
omitted).
2. Statute of Limitations
“In 1957, Congress . . . prescribed a three-year look-back limitations period
for all civil claims arising under the Copyright Act. The provision . . . reads: ‘No
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civil action shall be maintained under the provisions of this title unless it is
commenced within three years after the claim accrued.’” Petrella v. MetroGoldwyn-Mayer, Inc., 134 S. Ct. 1962, 1968-69 (2014) (quoting 17 U.S.C. § 507(b)).
“A claim ordinarily accrues ‘when [a] plaintiff has a complete and present cause of
action.’” Id. at 1969 (quoting Bay Area Laundry & Dry Cleaning Pension Tr. Fund
v. Ferbar Corp., 522 U.S. 192, 201 (1997)) (alteration in original). “A copyright
claim thus arises or ‘accrue[s]’ when an infringing act occurs.” Id.; see also Merch.
v. Levy, 92 F.3d 51, 56 (2d Cir. 1996) (“A cause of action accrues when a plaintiff
knows or has reason to know of the injury upon which the claim is premised.”).
However, “[i]t is widely recognized that the separate-accrual rule attends the
copyright statute of limitations. Under that rule, when a defendant commits
successive violations, the statute of limitations runs separately from each violation.
Each time an infringing work is reproduced or distributed, the infringer commits a
new wrong.” Petrella, 134 S. Ct. at 1969. Accordingly,
an infringement is actionable within three years, and only three years,
of its occurrence. And the infringer is insulated from liability for
earlier infringements of the same work. Thus, when a defendant has
engaged (or is alleged to have engaged) in a series of discrete infringing
acts, the copyright holder’s suit ordinarily will be timely under § 507(b)
with respect to more recent acts of infringement (i.e., acts within the
three-year window), but untimely with respect to prior acts of the same
or similar kind.
Id. at 1969-70 (internal citations omitted).
3. Laches and Equitable Estoppel
“[I]n face of a statute of limitations enacted by Congress, laches cannot be
invoked to bar legal relief.” Id. at 1974. “The defense of laches bars a claim when a
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defendant has suffered prejudice because of a plaintiff’s unreasonable and
inexcusable delay in bringing the claim. Laches bars claims for prior infringement
but does not prevent a plaintiff from pursuing future damages for infringement
arising later in time.” Legislator 1357 Ltd. v. Metro-Goldwyn-Mayer, Inc., 452 F.
Supp. 2d 382, 391 (S.D.N.Y. 2006) (citing New Era Publ’ns Int’l v. Henry Holt & Co.,
873 F.2d 576, 584 (2d Cir. 1989)). However, “the express statute of limitations in
the Copyright Act precludes the use of the laches defense in toto, regardless of the
relief sought.” Price v. Fox Entm’t Grp., Inc., No. 05-cv-5259, 2007 WL 241387, at
*3 (S.D.N.Y. Jan. 26, 2007) (citing Lyons Partnership, L.P. v. Morris Costumes, Inc.,
243 F.3d 789 (4th Cir. 2001); Ivani Contracting Corp. v. City of New York, 103 F.3d
257 (2d Cir. 1997)); see also Ivani Contracting, 103 F.3d at 260 (“The prevailing
rule, then, is that when a plaintiff brings a federal statutory claim seeking legal
relief, laches cannot bar that claim, at least where the statute contains an express
limitations period within which the action is timely.”).
The defense of equitable estoppel, on the other hand, “applies when ‘the party
to be estopped had knowledge of defendant’s infringing conduct, and either intended
that his own conduct be relied upon or acted so that the party asserting the estoppel
has a right to believe it was so intended. Additionally, the defendant must be
ignorant of the true facts and must rely on plaintiff’s conduct to his detriment.’”
Legislator 1357, 452 F. Supp. 2d at 391 (quoting Lottie Joplin Thomas Trust v.
Crown Publishers, Inc., 456 F. Supp. 531, 535 (S.D.N.Y. 1977)). “Unlike laches,

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equitable estoppel can be used to prevent a plaintiff from recovering prospective as
well as past damages.” Legislator 1357, 452 F. Supp. 2d at 391.
III.

DISCUSSION
As set forth below, the Court finds that plaintiff owned a valid copyright and

commenced this action within the statute of limitations. The facts do not support
laches or equitable estoppel. Furthermore, there is no evidence from which a
reasonable juror could infer that defendants had an implied license to utilize the
Photograph.
A. Valid Copyright Ownership
With his motion for summary judgment, plaintiff submitted a certificate of
registration for a work entitled “Bald Man.jpg; 11/22/10.” (Leibowitz Decl., Ex. A at
2.) The registration notes that the photograph was first published on November 22,
2010 and that the certification was completed by Richard Liebowitz on January 9,
2017. (Id.) The Court may take judicial notice of this certificate. Island Software &
Computer Serv., 413 F.3d at 261. As described below, defendants have made two
arguments in support of their position that the registration is deficient. However,
they have failed to proffer any evidence in support of such arguments; unsupported
arguments alone do not raise a triable issue that defeats summary judgment.2
Urbont, 831 F.3d at 89.
First, defendants contend that because the registration was not made within
five years of the first publication, it is not prima facie evidence of a valid copyright.

2

The Court notes that a full period of discovery has been completed by the parties.

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In this regard, defendants point to the first publication on November 22, 2010, and
the registration on January 9, 2017. But even assuming that the registration is not
presumed valid, all defendants have done is point to the publication and
registration dates, asserting: “See, this undermines the validity of the copyright.”
But, it does not; such information opens the door to a factual challenge—but no such
challenge materialized. Defendants still must proffer some evidence to bring its
validity into question.
Second, defendants argue that the certificate submitted by plaintiff does not
“prove” that it relates to the Photograph at issue here; rather, they note, the
certificate merely refers to a work entitled “Bald Man.jpg; 11/22/10.” But again,
defendants offer nothing more than speculative assertions to support this
contention. A full period of discovery has occurred in this case; defendants had the
opportunity to request a certified deposit copy from the U.S. Copyright Office and
submit it with their opposition to plaintiff’s motion for summary judgment. Their
failure to submit any evidence, however, prevents them from raising a triable issue
on the validity of the registration.
Additionally, plaintiff submitted a declaration from his attorney, Richard
Liebowitz, which states that the registration is in fact for the Photograph. Notably,
Liebowitz is also the person whose name is on the certification, indicating that he is
the one who filed for certification, and thus has first-hand knowledge of which
artistic work it relates to. However, once again, defendants offer no evidence to
counter Leibowitz’s sworn declaration.
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As such, defendants have failed to raise a genuine dispute of fact as to
copyright ownership.
B. Defenses
1. Implied License
Defendants do not dispute that the Photograph is reproduced on the Bald
Guyz Clear Shave Gel packaging. Rather, they argue that in all events, there is a
triable issue as to whether they had an implied license for such use. As discussed
above, defendants bear the burden of proof on this issue. Bourne, 68 F.3d at 631.
To raise a triable issue, defendants must proffer evidence supportive of an implied
license. Under the Effects test, defendants must offer evidence that indicates
plaintiff intended to permit the defendant to use the Photograph. Effects Assocs.,
908 F.2d 555. Under the more relaxed approach, defendants must demonstrate that
plaintiff consented to the Bald Guyz Shave Gel packaging through “mere
permission” or a “lack of objection.” Keane Dealer Servs., Inc. v. Harts, 968 F.
Supp. at 947. There is no evidence in the record that raises a triable issue of fact
under either approach.
In support of their position, defendants principally point to Dahroug’s initial
receipt of the Photograph in electronic form. According to defendants, this was a
photograph of Dahroug in a digital format that enabled endless copies. However,
defendants ignore the undisputed evidence that Dahroug received his copy of the
Photograph subject to explicit restrictions on use. Those restrictions cabined
Dahroug’s use of the Photograph in various ways; as particularly relevant here,
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Dahroug was prohibited from reproducing, displayed, or otherwise exploiting the
Photograph in any manner without plaintiff’s prior consent. (56.1 Statement ¶ 6;
see also Am. Compl., Ex. C.) It was in this context that Dahroug somehow conveyed
a copy of the Photograph to BG, who placed it on the Shave Gel packaging.
Defendants have not proffered any facts suggesting that Dahroug led BG to believe
Dahroug had more rights than he did in fact have.
The format in which Dahroug received the Photograph from plaintiff also
does not help defendants: it is undisputed that plaintiff gave Dahroug permission to
use the Photograph solely as a headshot. (Mem. Opp. at 8.) But the fact that
plaintiff authorized Dahroug to use the Photograph as a headshot falls far short of
suggesting an implied license for any and all commercial uses, including product
packaging.
But in addition, defendants have not proffered evidence of any intent on
plaintiff’s part to convey a license. For instance, defendants have not proffered
evidence of a discussion or communication (implicit or explicit) between plaintiff
and Dahroug suggesting plaintiff intended, expected, or anticipated that he was
conveying a right to reproduction in external, commercial circumstances (let alone
unlimited and perpetual reproductions). Rather, the record demonstrates that, if
anything, plaintiff communicated the opposite intention. His website contained a
disclaimer and a user agreement that made clear that the “acquisition of a copy of a
product does not itself convey any rights under copyright” and that products
purchased by a customer may not be “reproduced, scanned, displayed, transmitted,
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modified, altered or otherwise exploited in any manner without the prior consent of
the photographer.” (Am. Compl., Ex. C.) In any case, the mere act of providing a
client with a work in digital format does not raise a triable issue of fact. (That is
particularly so when, as here, there are explicit restrictions on use.) Indeed, if this
Court were to rule otherwise, the digital conveyance of a work could always be cited
to defeat summary judgment; more is required.
Defendants also claim that plaintiff’s failure to file a lawsuit for several years
after discovering the infringement is evidence of an implied license, as plaintiff
admits he has known about the infringement since 2014. According to defendants,
this delay in bringing suit constitutes a “lack of objection” under the relaxed
approach. As discussed in more detail below, Congress set a three-year statute of
limitations for copyright claims; certainly, commencing a lawsuit within the
limitations period does not, without more, constitute a sufficient basis for “lack of
objection” to raise a triable issue as to the existence of an implied license. But in
addition, a delay by plaintiff in commencing a lawsuit cannot, on its own, suggest a
question of fact as to an implied license. Defendants offer no assertion that they
knew plaintiff was aware of the Bald Guyz Shave Gel packaging—as such, they
have not persuaded the Court that they relied in any way on plaintiff’s delay, or
that defendants interpreted his delay as evidence he permitted their usage of the
Photograph.

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Accordingly, because defendants have not met their burden of raising a
triable issue of fact as to the existence of an implied license, see Bourne, 68 F.3d at
631, this defense does not shield them from liability.
C. Statute of Limitations, Laches, and Estoppel
Plaintiff claims to have first discovered the infringement in 2014; he notes
further that defendants redesigned the Bald Guyz Shave Gel packaging on or
around July 7, 2014. (ECF No. 54, Reply Mem. at 9; Am. Compl., Ex. D.) Plaintiff
submitted screenshots of the Bald Guyz website taken from an internet archive
website, such that the screenshots display what the website looked like on July 7,
July 8, August 7, and November 29, 2014. These screenshots do not demonstrate
that the packaging did not include the Photograph prior to July 7, 2014, as plaintiff
suggests. But they do indicate that infringement offenses occurred within the three
years prior to plaintiff’s commencement of this lawsuit on March 8, 2017. Under
the separate-accrual rule, the statute of limitations begins to run separately for
each infringing act (i.e., any time a pack of Bald Guyz Shave Gel featuring the
Photograph is sold). Petrella, 134 S. Ct. at 1969-70. So while plaintiff may not be
able to hold defendants liable for any infringement prior to March 8, 2014, the
statute of limitations does not bar damages for infringement(s) after that date.
Additionally, defendants assert defenses of laches and equitable estoppel.
The defense of laches is not available against a claim made within an express
statutory limitations period; as such, defendants cannot assert this defense to avoid

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liability for any infringement that occurred after March 8, 2014.3 Ivani
Contracting, 103 F.3d at 260. As to equitable estoppel, defendants have proffered
no evidence that plaintiff intended defendants to rely upon his action (or inaction),
nor that they in fact relied on plaintiff’s conduct to their detriment. As such, this
defense cannot shield them from liability. Legislator 1357, 452 F. Supp. 2d at 391.
2. Other Defenses
Defendant Walgreens has asserted twenty-three affirmative defenses: (1)
failure to state a claim; (2) copyright registration invalidity or unenforceability; (3)
denial of copyright ownership; (4) license; (5) failure to register in compliance with
Copyright Act; (6) lack of standing; (7) statute of limitations; (8) waiver, estoppel,
justification and/or consent; (9) causality; (10) laches and/or unclean hands, and/or
in pari delicto; (11) Plaintiff’s own conduct; (12) not responsible; (13) no Photograph
in the FAC exhibits; (14) failure to join indispensable party; and (15) indemnity.
(ECF No. 39, Answer and Affirmative Defenses at 4-8.)
Defendant UBP has asserted twenty-two affirmative defenses: (1) failure to
state a claim (2) copyright registration invalidity or unenforceability; (3) denial of
copyright ownership; (4) license; (5) failure to register in compliance with Copyright
Act; (6) lack of standing; (7) statute of limitations; (8) waiver, estoppel, justification
and/or consent; (9) causality; (10) laches and/or unclean hands, and/or in pari
delicto; (11) Plaintiff’s own conduct; (12) not responsible; (13) no Photograph in the

However, the statute of limitations and laches defenses remain available to defendants at the
damages phase, insofar as plaintiff asserts damages for any infringing offenses that occurred before
March 8, 2014.
3

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FAC exhibits; and (14) failure to join indispensable party. (ECF No. 33, Def.
Universal Beauty Products, Inc.’s Answer and Affirmative Defenses to Pl.’s First
Am. Compl. at 5-8.) At this stage, fifteen of Walgreen’s defenses and fourteen of
UBP’s defenses are relevant to this motion as they relate to liability. (The others
relate to damages.)
As set forth above, this Opinion addressed only those defenses which
defendants raised in their opposition papers: copyright registration invalidity;
implied license; statute of limitations; estoppel; and laches. Defendants have not
proffered any evidence in support of the other relevant defenses; as such, those do
not survive plaintiff’s motion for summary judgment (though the defenses relevant
to damages remain). See F.D.I.C. v. Giammettei, 34 F.3d 51, 54–55 (2d Cir. 1994)
(“Where a plaintiff uses a summary judgment motion, in part, to challenge the legal
sufficiency of an affirmative defense—on which the defendant bears the burden of
proof at trial—a plaintiff may satisfy its Rule 56 burden by showing that there is an
absence of evidence to support [an essential element of] the [non-moving party’s]
case. . . . After all, in cases where there is an absence of evidence to support an
essential element of a defense, with respect to that defense there can be no genuine
issue as to any material fact since a complete failure of proof concerning an
essential element of the [defendant’s affirmative defense] necessarily renders all
other facts immaterial.” (internal quotations and citations omitted)).

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IV.

CONCLUSION
For the foregoing reasons, plaintiff’s motion for summary judgment is
GRANTED. Trial will be limited to the question of damages. The Clerk of Court is
directed to close the open motion at ECF No. 43.
SO ORDERED.
Dated:

New York, New York
March 9, 2018
______________________________
KATHERINE B. FORREST
United States District Judge

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