Bayoh v. Afropunk Fest 2015 LLC et al

Filing 98

OPINION AND ORDER.....Defendants August 30, 2019 motion for summary judgment is denied, except as to defendants Afropunk Fest 2015 LLC and Afropunk Global Initiative LLC. (Signed by Judge Denise L. Cote on 1/15/2020) (gr)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------- X
:
MAMBU BAYOH,
:
:
Plaintiff,
:
:
-v:
:
AFROPUNK FEST 2015 LLC, AFROPUNK LLC, :
AFROPUNK GLOBAL INITIATIVE LLC,
:
:
MATTHEW MORGAN and JOCELYN COOPER,
individually,
:
:
:
Defendants.
:
-------------------------------------- X

18cv5820 (DLC)
OPINION AND ORDER

APPEARANCES
For the plaintiff:
Law Office of Robert L. Greener
Robert L. Greener
112 Madison Avenue, 6th Floor
New York, New York 10118
For the defendants:
Lewis Brisbois Bisgaard & Smith LLP
Brian Pete
Jonathan D. Goins
77 Water Street, Suite 2100
New York, New York 10005
DENISE COTE, District Judge:
Photographer Mambu Bayoh brought this lawsuit alleging
copyright infringement by Afropunk LLC (“Afropunk”), its co-CEOs
Matthew Morgan and Jocelyn Cooper, and related entities Afropunk
Fest 2015 LLC and Afropunk Global Initiative LLC.

Plaintiff

asserts that the defendants used his photographs at music
festivals during 2015 and 2016 in ways that exceeded the limited

permission he had given them.

Plaintiff filed copyright

registrations for the photographs in 2017 and this lawsuit in
2018.

Defendants have moved for summary judgment.

For the

following reasons, the defendants’ motion is denied, except as
to the related entities Afropunk Fest 2015 LLC and Afropunk
Global Initiative LLC.
Background
The following facts are undisputed or taken in the light
most favorable to the plaintiff, unless otherwise noted.
I.

Plaintiff’s Relationship With Afropunk
Afropunk organizes a series of music festivals of the same

name; the first Afropunk festival was held in 2005 in Brooklyn,
New York.

Morgan is the founder of Afropunk and serves as its

co-CEO along with Cooper, who supervises marketing and
partnerships for the entity.

Afropunk hires photographers to

shoot its festivals and thereby obtains images to use in future
promotional materials.
In May 2015, an Afropunk employee emailed Bayoh, explaining
that Afropunk was building a new website and would “love for
some of [his] images to be featured.”

Bayoh replied that he had

“retained rights” to the images and would “require compensation
for PR rights regarding [his] images.”

Bayoh’s reply was

forwarded to Morgan, who suggested that they “jump on a call.”
2

According to Bayoh, he gave Morgan permission to use only six
photographs, and only on the website promoting the 2015 Afropunk
festival.
In August 2015, Afropunk hired Bayoh to shoot its upcoming
festival in Brooklyn.

An Afropunk employee sent Bayoh an

agreement that would have granted Afropunk “a worldwide,
perpetual, irrevocable, royalty-free, sub-licensable right to
exploit” any pictures that he took at the festival.
not sign the agreement. 1

Bayoh did

Bayoh did agree to participate in an

“Instagram takeover,” during which he would post images directly
to Afropunk’s Instagram 2 account.

One of the requirements for

participating in the Instagram takeover was that Bayoh submit
forty to fifty images to Afropunk for use on the organization’s
Facebook page.
According to Bayoh, when he arrived at the Brooklyn
Afropunk festival on August 22, 2015, he observed that his
artwork was used in a variety of places -- on posters, on a
Defendants assert that they believe Bayoh must have signed the
license agreement, because it was Afropunk’s routine practice to
have photographers sign such an agreement. But the defendants
have not produced a copy of the agreement signed by Bayoh.
Viewing the facts in the light most favorable to the non-moving
party, it is assumed for the purposes of summary judgment that
Bayoh did not sign the agreement.
1

Instagram is an application that allows users to upload and
share images. See Instagram, Features (last visited Nov. 7,
2019), https://about.instagram.com/features.
2

3

booklet distributed to attendees, and on staff t-shirts.

Bayoh

took photographs during the festival and uploaded twenty-eight
such images into a Dropbox 3 folder that Afropunk had access to.
According to Bayoh, he conveyed his displeasure about the extent
of the use of his images at the festival to Morgan and another
Afropunk employee on August 23.

Afropunk paid Bayoh $1,200 for

his work at the 2015 Brooklyn festival.
During September 2015, an Afropunk employee reached out to
Bayoh about photographing the Atlanta Afropunk festival.

During

September 21 and 22, Bayoh and Morgan exchanged emails in which
Morgan expressed concern that Afropunk had not received as many
images as it expected from Bayoh.

On September 23, Bayoh

uploaded eighty-seven images into a Dropbox account accessible
by Afropunk.

On September 24, Morgan sent a text message to

Bayoh:
I just asked Andrea to fill me in. She said you had
agreed to flight and hotel but didn’t want to give us
use of the images which wouldn’t work. I don’t put
restrictions on you and have opened up our resources
and access to you[;] I don’t want to feel like this is
a one sided relationship. If we sold your images or
made money from them other than using to boost your
profile I’d understand so let me know if you think
that [t]hats the case otherwise I’d like us to agree
that this is our agreement and we will not go back and
Dropbox is a service that allows users to upload files, access
them remotely, and share them with others. See Dropbox,
Features (last accessed Nov. 11, 2019), https://www.dropbox.com/
features.
3

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forth each year as your profile grows and you forget
us little people.
Let me know if you want to come[;] I need to know
today. Flight, hotel and $200. Same requirements as
NY.
Bayoh never responded to this message, and there is no evidence
that the Atlanta Afropunk festival actually occurred.
In the spring of 2016, Bayoh spoke to Whitney Richardson,
an employee of the New York Times to whom Morgan had introduced
Bayoh.

After that conversation, Richardson emailed Morgan and

relayed that Bayoh “was concerned on how his images were going
to be used” and that “he wasn’t comfortable with using his work
for promo.”

Morgan responded indicating that he would not be

receptive to any such complaint “until the images we paid for
are placed in the place they should have been placed months
ago.”
In August of 2016, Bayoh contacted Morgan and requested a
photographer’s pass to the 2016 Brooklyn Afropunk festival.
Morgan declined to provide one, but Bayoh bought a ticket and
attended the 2016 festival nonetheless.

According to Bayoh, he

again observed various uses of his photographs -- on posters, on
directional signs, on a smartphone application for festival
attendees, on Afropunk’s social media, and in Afropunk’s email
communications.

5

II.

Plaintiff’s Copyright Registrations
None of Bayoh’s photographs had been registered with the

U.S. Copyright Office prior to the 2015 or 2016 festivals.

He

first filed an application for copyright registration in June
2017, seeking a group registration of thirteen photographs
collectively entitled “By such and such.”

During the

application process, Bayoh indicated that the “By such and such”
photographs were completed in 2013 and first published on April
7, 2013.

But during his deposition Bayoh testified that some of

the photographs were not in fact taken until 2014 or 2015.
After checking the metadata on the photographs, Bayoh submitted
an errata sheet to his deposition transcript indicating that the
photographs were all taken in 2014 or 2015 and that he had filed
a supplemental registration with the Copyright Office amending
the “By such and such” publication date to 2015.
In July 2018, Bayoh received a second copyright
registration, for a group of fifteen photographs entitled “By
Such and Such II.”

The “By Such and Such II” certificate of

registration indicates that the photographs were completed in
2015 and published on December 1, 2015.

Bayoh now acknowledges,

after reviewing these photographs’ metadata, that some were
created in 2014.

According to Bayoh, in August 2019 he filed

for supplementary registrations to correct the dates of
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completion and publication for both “By such and such” and “By
Such and Such II.”
III. Procedural History
Bayoh filed this lawsuit on June 27, 2018.

At an October

26, 2018 conference, defendants’ motion to dismiss the
plaintiff’s claims for unfair competition and for statutory
copyright damages and attorneys’ fees was granted. 4

Remaining,

therefore, is the plaintiff’s copyright infringement claim for
actual damages or the defendants’ profits attributable to
infringement.
judgment.

On August 30, 2019, Afropunk moved for summary

The motion became fully submitted on October 4.
Discussion

I.

Summary Judgment Standard
Summary judgment may not be granted unless all of the

submissions taken together “show[] that there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.”

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

“Summary

judgment is appropriate when the record taken as a whole could
not lead a rational trier of fact to find for the non-moving

Recovery of statutory damages and attorney’s fees is barred
because no infringement is alleged to have commenced after
Bayoh’s photographs were registered with the Copyright Office,
and registration did not occur until more than three months
after the photographs’ publication. See 17 U.S.C. § 412; Troll
Co. v. Uneeda Doll Co., 483 F.3d 150, 158-59 (2d Cir. 2007).
4

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party.”

Smith v. Cnty. of Suffolk, 776 F.3d 114, 121 (2d Cir.

2015) (citation omitted).

The moving party bears the burden of

demonstrating the absence of a material factual question, and in
making this determination, the court must view all facts in the
light most favorable to the non-moving party.

See Eastman Kodak

Co. v. Image Technical Servs., Inc., 504 U.S. 451, 456 (1992);
Gemmink v. Jay Peak Inc., 807 F.3d. 46, 48 (2d Cir. 2015).
Once the moving party has made a showing that the nonmovant’s claims cannot be sustained, the party opposing summary
judgment “must set forth specific facts demonstrating that there
is a genuine issue for trial.”

Wright v. Goord, 554 F.3d 255,

266 (2d Cir. 2009) (citation omitted).

“[C]onclusory

statements, conjecture, and inadmissible evidence are
insufficient to defeat summary judgment,” Ridinger v. Dow Jones
& Co., 651 F.3d 309, 317 (2d Cir. 2011) (citation omitted).
Only disputes over material facts will properly preclude the
entry of summary judgment.
U.S. 242, 248 (1986).

Anderson v. Liberty Lobby, Inc., 477

“An issue of fact is genuine and material

if the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.”

Cross Commerce Media, Inc. v.

Collective, Inc., 841 F.3d 155, 162 (2d Cir. 2016).

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II.

The Validity of Plaintiff’s Copyright Registrations
The defendants seek dismissal of this action on the ground

that the plaintiff’s copyright registrations are invalid.

A

copyright owner may not bring a claim for infringement until the
work allegedly infringed has been registered with the Copyright
Office.

17 U.S.C. § 411(a); Fourth Estate Pub. Benefit Corp. v.

Wall-Street.com, LLC, 139 S. Ct. 881, 886 (2019).

“Upon

registration of the copyright, however, a copyright owner can
recover for infringement that occurred both before and after
registration.”
886–87.

Fourth Estate Pub. Benefit Corp., 139 S. Ct. at

A certificate of registration issued by the Copyright

Office satisfies this requirement
regardless of whether the certificate contains any
inaccurate information, unless -- (A) the inaccurate
information was included on the application for
copyright registration with knowledge that it was
inaccurate; and (B) the inaccuracy of the information,
if known, would have caused the Register of Copyrights
to refuse registration.
17 U.S.C. § 411(b)(1).
If “inaccurate information” described under § 411(b)(1) is
alleged, then “the court shall request the Register of
Copyrights to advise the court whether the inaccurate
information, if known, would have caused the Register of
Copyrights to refuse registration.”

Id. § 411(b)(2).

The

Second Circuit has not addressed the circumstances under which a
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district court must make such a request.

Other courts, however,

have observed that the language of § 411(b)(2) is mandatory,
meaning that a court may not find a copyright registration to be
invalid due to inaccurate information in the certificate without
first consulting the Copyright Office about the materiality of
the inaccuracy.

See DeliverMed Holdings, LLC v. Schaltenbrand,

734 F.3d 616, 624 (7th Cir. 2013) (finding it error to
invalidate a copyright registration without consulting the
Copyright Office, even though neither party had raised the
possibility of a referral); King-Devick Test Inc. v. NYU Langone
Hosps., No. 17cv9307 (JPO), 2019 WL 3071935, at *7 (S.D.N.Y.
July 15, 2019) (“[A] court may not hold that this exception
applies without first seeking input from the Copyright
Office.”); Palmer/Kane LLC v. Rosen Book Works LLC, 188 F. Supp.
3d 347, 348 (S.D.N.Y. 2016) (“[C]ourts are in agreement that the
provision is mandatory in nature, requiring district courts to
solicit the advice of the Copyright Office when the statutory
conditions are satisfied.”).
The Copyright Office has offered the following suggestion
about how the referral provision should operate:
While 17 U.S.C. § 411(b)(2) requires the court to seek
the Register’s advice when there is an allegation that
an application contains inaccurate information, the
Register observes that the statute says nothing about
the timing of the request. The Register suggests
that, at a minimum, the court retains the power to
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delay the request until a factual record has been
developed, e.g., through affidavits or discovery. The
Register believes that if a court concludes that the
bare allegations are unsupported by any facts, the
court would be free to refrain from issuing requests
to the Register.
Response of the Register of Copyrights at 11, Olem Shoe Corp. v.
Wash. Shoe Corp., No. 09cv23494 (PCH) (S.D. Fla. Oct. 14, 2010),
ECF No. 209; see also DeliverMed, 734 F.3d at 625.
Here, the defendants did not assert that Bayoh included
inaccurate information in his applications for copyright
registration until the filing of their motion for summary
judgment.

Even now, the defendants do not seek a referral to

the Copyright Office for advice concerning whether it would have
refused registration if the true completion and publication
dates of Bayoh’s photographs were known.

Instead, the

defendants argue that Bayoh’s errors concerning the dates render
his copyright registrations “invalid” and thus inadequate to
satisfy the § 411(a) registration requirement for bring suit.
The defendants’ request to invalidate Bayoh’s registrations
is denied.

Section 411(b)(2) does not allow a court to find

that a certificate of copyright registration is invalid on the
basis of inaccuracy without first making a referral to the
Copyright Office.

Having waited until the close of discovery to

attack the validity of the plaintiff’s copyright registrations,

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the defendants must point to some evidence that the
registrations were obtained through knowing misrepresentations. 5
Applying that standard here, the Court finds that no
referral to the Copyright Office is appropriate.

The defendants

have provided no evidence that Bayoh knew that the completion
and publication dates he provided with his applications were
inaccurate on the dates of submission.

Bayoh asserts that he

made an innocent error.

Defendants have provided no

controverting evidence.

His registrations are therefore

sufficient for him to bring suit under § 411(a) and this
litigation need not be delayed to accommodate a referral to the
Copyright Office.
III. The Scope of Defendants’ License
Defendants argue that Bayoh granted them a license to use
his photographs, and thus any liability is limited to damages
for breach of contract rather than infringement.

But “when a

See 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
7.20 (2019) (“[T]o avoid dilatory tactics, some courts refuse to
refer the matter out, absent a sufficient factual allegation by
defendant that plaintiff actually violated § 411(b)(1).”
(citation omitted)); William F. Patry, Patry on Copyright §
17:125.50 (Sept. 2019) (“[H]ow does one in good faith allege
knowledge of misleading the Office without some sort of
evidentiary basis provided to the court?”); Douglas W. Kenyon &
D. Alan Rudlin, Business and Commercial Litigation in Federal
Courts § 100:31 (Robert L. Haig, ed., 4th ed. Nov. 2019)
(“Section 411(b)(2) issues should be addressed early in the
litigation . . . .”).
5

12

license is limited in scope, exploitation of the copyrighted
work outside the specific limits constitutes infringement.”
Spinelli v. Nat’l Football League, 903 F.3d 185, 202 (2d Cir.
2018) (citation omitted); see also Bourne v. Walt Disney Co., 68
F.3d 621, 631 (2d Cir. 1995).

Therefore, a license only

provides a defense to infringement insofar as the “licensee uses
the copyright as agreed with the licensor.”

Universal

Instruments Corp. v. Micro Sys. Eng’g, Inc., 924 F.3d 32, 40 (2d
Cir. 2019).
“[N]onexclusive licenses may be granted orally, or may even
be implied from conduct.”

Graham v. James, 144 F.3d 229, 235

(2d Cir. 1998) (citation omitted).

The existence of a license

constitutes an affirmative defense to infringement, and thus the
burden to prove the existence of a license is on the licensee.
Id. at 236.

But “when the contested issue is the scope of a

license, rather than the existence of one, the copyright owner
bears the burden of proving that the defendant’s copying was
unauthorized under the license.”

Id.; see also Universal

Instruments Corp., 924 F.3d at 40; Reynolds v. Hearst Commc’ns,
Inc., No. 17cv6720 (DLC), 2018 WL 1229840, at *3 (S.D.N.Y. Mar.
5, 2018).
Here, it is undisputed that Bayoh gave the defendants a
license in 2015 to use some of his photographs.
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There is,

however, a genuine dispute concerning the scope of the license:
Defendants say Bayoh gave them an unlimited license, while Bayoh
says he licensed certain photographs to be used on Afropunk’s
2015 festival website and Instagram page only.

Given the

conflicting evidence, the scope of the license cannot be
resolved on summary judgment.
Defendants rely on Graham v. James for the proposition that
“[a] copyright owner who grants a nonexclusive license to use
his copyrighted material waives his right to sue the licensee
for copyright infringement.”

144 F.3d at 236.

But, a licensee

who exceeds the scope of the granted license can be liable for
infringement.
IV.

Spinelli, 903 F.3d at 202.

Equitable Estoppel
Defendants next argue that Bayoh’s lawsuit is barred by

equitable estoppel.

It is helpful at the outset to distinguish

the doctrine of equitable estoppel from the doctrine of laches.
The defense of laches is available when the plaintiff has
engaged in “unreasonable, prejudicial delay in commencing suit.”
Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 667 (2014).
Laches is unavailable as a defense to a copyright infringement
suit that is brought within the three-year statute of
limitations for such actions.

Id.

Equitable estoppel, on the

other hand, is available as a defense when “(1) the party [to be
14

estopped] makes a misrepresentation of fact to another party
with reason to believe that the other party will rely on it;
[and] (2) the other party relies on the misrepresentation to his
detriment.”

Marvel Characters, Inc. v. Simon, 310 F.3d 280, 292

(2d Cir. 2002); see also Petrella, 572 U.S. at 684-85 (noting
that untimeliness is the essential element of laches, while the
elements of equitable estoppel are intentionally misleading
conduct and detrimental reliance).
Defendants prefer a formulation of the equitable estoppel
doctrine that originated in the Ninth Circuit and has been
quoted in one summary order of the Second Circuit:
[A] copyright defendant invoking equitable estoppel
must show that: 1) the plaintiff had knowledge of
defendant’s infringing acts, 2) the plaintiff either
intended that defendant rely on his acts or omissions
or acted or failed to act in such a manner that
defendant had a right to believe that it was intended
to rely on plaintiff’s conduct, 3) the defendant was
ignorant of the true facts, and 4) the defendant
relied on plaintiff’s conduct to its detriment.
Dallal v. The New York Times Co., No. 05-2924, 2006 WL 463386,
at *1 (2d Cir. Feb. 17, 2006) (summary order) (citing Hampton v.
Paramount Pictures Corp., 279 F.3d 100, 104 (9th Cir. 1960));
see also Zuma Press, Inc. v. Getty Images (US), Inc., No.
16cv6110 (AKH), 2019 WL 316001, at *1 (S.D.N.Y. Jan. 24, 2019);
William F. Patry, Patry on Copyright § 20:58 (Sept. 2019).

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The

Court assumes for the purpose of analysis that this is the
proper standard. 6
Bayoh has presented sufficient evidence to raise a genuine
dispute of material fact about the second element -- whether he
intended that the defendants rely on his acts or omissions or
acted or failed to act in such a manner that permitted the
defendants to believe that they were intended to rely on his
conduct.

According to Bayoh, he placed limitations on the

license that he was granting to the defendants and repeatedly
raised objections to the defendants’ more expansive use of his
photographs.

This is sufficient to create a genuine dispute

about whether Bayoh is equitably estopped from asserting
infringement.
Defendants argue that because Bayoh placed his photographs
in a Dropbox account that they could access, never sent them a
cease and desist letter, and did not bring this lawsuit until
2018 that they were misled into thinking they were authorized to

Other authorities suggest that equitable estoppel may require a
more specific showing. See Petrella, 572 U.S. at 684 (estoppel
available when “a copyright owner engages in intentionally
misleading representations concerning his abstention from
suit”); Marvel Characters, Inc., 310 F.3d at 292 (estoppel
available when a copyright owner makes a “misrepresentation of
fact to another party with reason to believe that the other
party will rely on it”). It is unnecessary to determine the
proper standard here as the defendants are not entitled to
summary judgment even on their preferred formulation.
6

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use his photographs.

But on the present record a reasonable

jury could credit Bayoh’s version -- that he clearly
communicated his displeasure about the extent of Afropunk’s use
of his photographs and the defendants therefore had no right to
believe that they were entitled to continued use.
V.

The Statute of Limitations
Defendants argue that Bayoh’s claims should be dismissed as

untimely.

Claims for copyright infringement must be brought

within three years after they accrue.
Petrella, 572 U.S. at 671.
2018.

17 U.S.C. § 507(b);

This suit was brought on June 27,

Summary judgment is therefore proper on any claims that

accrued prior to June 27, 2015.
“[A]n infringement claim does not ‘accrue’ until the
copyright holder discovers, or with due diligence should have
discovered, the infringement.”

Psihoyos v. John Wiley & Sons,

Inc., 748 F.3d 120, 124 (2d Cir. 2014).

Here, there is no

evidence to suggest that Bayoh should have discovered the
alleged infringement prior to attending the Brooklyn Afropunk
festival on August 22, 2015.

None of the claims at issue are

time-barred.
VI.

Claims Against Particular Defendants
Defendants seek summary judgment on the claims against

Afropunk Fest 2015 LLC and Afropunk Global Initiative LLC.
17

It

is undisputed that these entities were not involved in the
alleged infringement.

Defendants’ motion is therefore granted

as to these entities.
Defendants also seek summary judgment on the claims against
Jocelyn Cooper, who has submitted a declaration asserting that
she does not make any decisions concerning Afropunk’s use of
photographs.

Persons who are not the primary infringers may

nonetheless be liable for contributory infringement or vicarious
infringement.

“A person infringes contributorily by

intentionally inducing or encouraging direct infringement, and
infringes vicariously by profiting from direct infringement
while declining to exercise a right to stop or limit it.”
Spinelli, 903 F.3d at 197 (citation omitted).

Vicarious

liability is available against a defendant who had the “right
and ability to supervise” the direct infringer and “an obvious
and direct financial interest in the exploitation of copyrighted
materials.”

EMI Christian Music Grp., Inc. v. MP3tunes, LLC,

844 F.3d 79, 99 (2d Cir. 2016) (citation omitted).

It is

undisputed that Cooper is co-CEO of Afropunk and oversees its
marketing and sponsorship activities. 7

Defendants have not shown

The plaintiff has also provided (1) a declaration from an
Afropunk employee asserting that Cooper was familiar with
Bayoh’s work and (2) emails related to festival photography on
which Cooper was cc’ed.
7

18

an absence of a genuine issue of material fact as to whether
Cooper may be vicariously liable for Afropunk’s alleged
infringement.
Conclusion
Defendants’ August 30, 2019 motion for summary judgment is
denied, except as to defendants Afropunk Fest 2015 LLC and
Afropunk Global Initiative LLC.

Dated:

New York, New York
January 15, 2020
____________________________
DENISE COTE
United States District Judge

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