Smith v. Law Office of Richard St. Paul, Esq., PLLC

Filing 38

OPINION AND ORDER: re: 30 MOTION to Dismiss Plaintiff's Complaint filed by Law Office of Richard St. Paul, Esq., PLLC. The motion to dismiss is DENIED, except as to plaintiffs Section 1202(a) claim, as to which the motion is GRANTED. By June 1, 2023, defendant shall file an answer. By separate order, the Court will schedule an initial conference. The Clerk is instructed to terminate the motion. (Doc. #30). SO ORDERED, Law Office of Richard St. Paul, Esq., PLLC answer due 6/1/2023. (Signed by Judge Vincent L. Briccetti on 5/18/2023) (ama)

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 1 of 13

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------------x
BYRON SMITH,
:
Plaintiff,
:
v.
:
:
LAW OFFICE OF RICHARD ST. PAUL, ESQ.,
:
PLLC,
:
Defendant.
:
---------------------------------------------------------------x

OPINION AND ORDER
22 CV 5648 (VB)

Briccetti, J.:
Plaintiff Byron Smith brings claims against defendant Law Office of Richard St. Paul,
Esq., PLLC, for copyright infringement and violations of the Digital Millennium Copyright Act
(“DMCA”), alleging defendant used on its website a copyrighted photograph owned by plaintiff
and removed a credit identifying plaintiff as the photographer.
Now pending is defendant’s motion to dismiss pursuant to Rule 12(b)(6). (Doc. #30).
For the following reasons, the motion to dismiss is GRANTED IN PART and DENIED
IN PART.
The Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331.
BACKGROUND
For the purpose of ruling on the motion to dismiss, the Court accepts as true all wellpleaded factual allegations in the complaint, as well as documents attached to the complaint as
exhibits, and draws all reasonable inferences in plaintiff’s favor, as summarized below.
Plaintiff is a professional photographer who licenses his photographs for publication in
media outlets, and whose “livelihood depends on receiving” such licensing fees. (Doc. #1
(“Compl.”) ¶ 7).

1

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 2 of 13

Plaintiff is allegedly the sole author and copyright owner of an original photograph of a
Housing and Urban Development (“HUD”) administrator touring the Patterson Houses public
housing development in New York (the “Photograph”). Plaintiff claims he registered the
Photograph with the United States Copyright Office under registration number VA 2-144-586,
dated March 26, 2019. A registration record on the Copyright Office website indicates VA 2144-586 is a group registration of nineteen published photographs, including a photograph listed
as “2.19.19. Patterson Houses. Smith.jpg.” See U.S. Copyright Office Public Records System,
https://publicrecords.copyright.gov/detailed-record/30669615 (the “Registration Record”). 1
Plaintiff alleges the Photograph was first published on February 19, 2019, 2 in an article
on the Wall Street Journal website. The article, titled “A HUD Official Gets a First-Hand Look
at NYCHA’s Woes” (the “Journal Article”), included a credit below the image, attributing it to
plaintiff (the “Photo Credit”). (Compl. ¶ 11; Doc. #1-1 at ECF 4). 3
Defendant, a law firm, allegedly owns and operates a website on which it “generates
news content . . . to attract user traffic, promote St. Paul’s legal services and website, and
generate business.” (Compl. ¶ 15).

1

Because the Registration Record is publicly accessible on an official government website,
the Court takes judicial notice of it. See Off. Sol. Grp., LLC v. Nat’l Fire Ins. Co. of Hartford,
544 F. Supp. 3d 405, 412 (S.D.N.Y. 2021).
2

The complaint lists the publication date as February 19, 2021 (Compl. ¶ 11), but
plaintiff’s other allegations, and the Registration Record, suggest this is a typographical error.
3

“ECF __” refers to page numbers automatically assigned by the Court’s Electronic Case
Filing system.
Document 1-1 is comprised of three exhibits. As alleged, these exhibits are: a copy of
the Photograph, at ECF 2 (“Exhibit A”); a screenshot of the Photograph with the Photo Credit, as
used in the Journal Article, at ECF 4 (“Exhibit B”); and two screenshots of defendant’s website,
featuring the Photograph without the Photo Credit, at ECF 6–7 (“Exhibit C”).
2

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 3 of 13

Around May 28, 2020, plaintiff allegedly discovered defendant used the Photograph on
its website as part of a blog post, in which defendant reproduced the Journal Article but omitted
the Photo Credit (the “St. Paul Post”).
According to plaintiff, defendant did not have a license or other permission to use the
Photograph on its website or any other platform. Plaintiff contends defendant intentionally
omitted the Photo Credit “to mislead the public into believing that Defendant either owned the
Patterson Photograph or had legitimately licensed it for use” in the St. Paul Post. (Compl. ¶ 29).
Plaintiff claims defendant’s unauthorized use of the Photograph constitutes copyright
infringement. Plaintiff also claims defendant’s distribution of the Photograph without the Photo
Credit violated two provisions of the DMCA: Section 1202(a), which prohibits providing false
copyright management information (“CMI”), and Section 1202(b)(3), which prohibits
distributing a work with missing or altered CMI.
DISCUSSION
I.

Standard of Review
In deciding a Rule 12(b)(6) motion, the Court evaluates the sufficiency of the complaint

under the “two-pronged approach” articulated by the Supreme Court in Ashcroft v. Iqbal, 556
U.S. 662, 679 (2009). 4 First, a plaintiff’s legal conclusions and “[t]hreadbare recitals of the
elements of a cause of action, supported by mere conclusory statements,” are not entitled to the
assumption of truth and thus are not sufficient to withstand a motion to dismiss. Id. at 678;
Hayden v. Paterson, 594 F.3d 150, 161 (2d Cir. 2010). Second, “[w]hen there are well-pleaded
factual allegations, a court should assume their veracity and then determine whether they

4

Unless otherwise indicated, case quotations omit all internal citations, quotations,
footnotes, and alterations.
3

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 4 of 13

plausibly give rise to an entitlement to relief.” Ashcroft v. Iqbal, 556 U.S. at 679.
To survive a Rule 12(b)(6) motion, the allegations in the complaint must meet a standard
of “plausibility.” Ashcroft v. Iqbal, 556 U.S. at 678; Bell Atl. Corp. v. Twombly, 550 U.S. 544
(2007). A claim is facially plausible “when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. at 678. “The plausibility standard is not akin to a ‘probability
requirement,’ but it asks for more than a sheer possibility that a defendant has acted unlawfully.”
Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. at 556).
II.

Copyright Infringement
Defendant advances two primary reasons for dismissing plaintiff’s copyright

infringement claim: (i) plaintiff does not plausibly allege a prima facie case of copyright
infringement, and (ii) defendant’s use of the Photograph qualifies as a fair use. 5
A.

Prima Facie Case

Defendant argues plaintiff fails to state a claim for copyright infringement because he did
not plausibly allege ownership of a valid copyright or illegal copying of the Photograph.
The Court disagrees.

5

Defendant also contends its use was not infringing because it had a license “to copy, use,
distribute and display” the Photograph. (Doc. #30 (“Def. Mem.”) at ECF 6). However, this
contention is inconsistent with plaintiff’s allegation that he “never at any point” granted
defendant “a license or other permission to display, distribute or otherwise use” the Photograph
(Compl. ¶ 18), and thus, is not a proper basis for dismissal under Rule 12(b)(6). See Playboy
Enters. Int’l Inc. v. Mediatakeout.com LLC, 2016 WL 1023321, at *2 (S.D.N.Y. Mar. 8, 2016)
(on motion to dismiss, rejecting defendant’s argument that it had a license because “[t]he
existence of a license is not even suggested by anything in the Complaint”).
4

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 5 of 13

1.

Applicable Law

To establish a prima facie case of copyright infringement, a plaintiff must plausibly
allege “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work
that are original.” Abdin v. CBS Broad. Inc., 971 F.3d 57, 66 (2d Cir. 2020).
With respect to the first element, a plaintiff must show he “either hold[s] a valid
copyright registration or [has] applied and been refused a registration as a prerequisite to” suing
a defendant for infringing a copyright. Gattoni v. Tibi, LLC, 254 F. Supp. 3d 659, 663
(S.D.N.Y. 2017) (collecting cases).
“To satisfy the second element, a plaintiff must demonstrate that: (1) the defendant has
actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity
exists between the defendant’s work and the protectible elements of plaintiff’s work.” Abdin v.
CBS Broad. Inc., 971 F.3d at 66. “Rather than proving direct copying of a work, plaintiffs may
also establish copying circumstantially by demonstrating that the Defendant had access to the
copyrighted work at the time of the alleged infringement.” Klauber Brothers, Inc. v. QVC, Inc.,
2020 WL 7029088, at *2 (S.D.N.Y. Nov. 30, 2020). As to substantial similarity, “[t]he standard
test . . . is whether an ordinary observer, unless he set out to detect the disparities, would be
disposed to overlook them, and regard the aesthetic appeal as the same.” Abdin v. CBS Broad.
Inc., 971 F.3d at 66.
“When visual works are at issue and (as here) are attached to the pleadings or otherwise
cognizable on a motion to dismiss, the Court must determine whether a reasonable jury could
find substantial similarity based upon a comparison of the two works; on this point, no discovery
or fact-finding is typically necessary.” Hirsch v. CBS Broad. Inc., 2017 WL 3393845, at *4
(S.D.N.Y. Aug. 4, 2017).

5

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 6 of 13

2.

Application

Plaintiff plausibly alleges both elements of a copyright infringement claim.
First, plaintiff plausibly alleges he holds a valid copyright registration for the Photograph.
Plaintiff’s well-pleaded factual allegations, as well as the Registration Record, support a
reasonable inference that plaintiff registered the copyright in March 2019, before bringing this
action. Later in the case, plaintiff may need “to submit the registration certificate and part of the
deposited materials” as evidence that “the copyrighted photograph is indeed protected under
Reg. No. VA-2-144-586.” (Cf. Def. Mem. at ECF 10). But at this early stage, plaintiff has
sufficiently demonstrated he owns a valid copyright in the allegedly infringed work. See
Klauber Brothers, Inc. v. QVC, Inc., 2020 WL 7029088, at *3 (“at the pleading stage,” a plaintiff
need not “submit the ‘deposit’ associated with the [copyright registration] certificate” to
demonstrate ownership of a valid copyright); cf. Accurate Grading Quality Assurance, Inc. v.
Thorpe, 2013 WL 1234836, at *7 (S.D.N.Y. Mar. 26, 2013) (dismissing copyright infringement
claim because “Plaintiffs do not allege existence of a valid copyright” or “that they have
previously sought registration and been denied”).
Second, plaintiff plausibly alleges defendant unlawfully copied the Photograph.
Defendant appears to admit reproducing the Photograph on its website. (See Def. Mem. at ECF
6, 14). 6 And having compared the original Photograph and the alleged copy in the St. Paul Post
(see Exhibit A; Exhibit C), the Court concludes an ordinary observer would “recognize the

6

Even if defendant did not admit it copied the Photograph, plaintiff’s well-pleaded
allegations that defendant reproduced the Journal Article with the Photograph are sufficient to
establish copying. See Klauber Bros., Inc. v. QVC, Inc., 2020 WL 7029088, at *8 (“Plaintiff
must either allege actual copying of the protected work[ ] or allege facts sufficient to allow an
inference that Defendant[ ] had access to the [work] in order to copy [it].”).
6

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 7 of 13

alleged copy as having been appropriated from the copyrighted work.” Knitwaves, Inc. v.
Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995). 7
Accordingly, plaintiff has plausibly alleged a copyright infringement claim.
B.

Fair Use

Defendant argues its use of the Photograph constitutes fair use, and therefore did not
infringe plaintiff’s copyright, as a matter of law.
The Court disagrees.
1.

Applicable Law

“The fair use of a copyrighted work . . . is not an infringement of copyright.” 17 U.S.C.
§ 107. Accordingly, a defendant may “defeat a prima facie showing of infringement . . . by
proving that the doctrine of ‘fair use’ permits his or her employment of the plaintiff’s work.”
Hughes v. Benjamin, 437 F. Supp. 3d 382, 389 (S.D.N.Y. 2020). The Copyright Act sets out
four non-exhaustive factors to consider in determining whether a defendant’s use of a
copyrighted work is a fair use:
(1)
(2)
(3)
(4)

the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
the nature of the copyrighted work;
the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
the effect of the use upon the potential market for or value of the copyrighted
work.

17 U.S.C. § 107. “There are no bright line rules to determine whether a use was a fair use;
instead the analysis is to be done on a case-by-case basis, and all the factors ‘are to be explored,
and the results weighed together, in light of the purposes of copyright.’” Hirsch v. CBS Broad.

7

Defendant’s argument that the ordinary observer test “does not support a finding of
infringement” here (see Def. Mem. at ECF 12–13) is both incoherent and frivolous.
7

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 8 of 13

Inc., 2017 WL 3393845, at *5 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–
78 (1994)).
The first factor, the purpose and character of the use, favors a finding of fair use when the
defendant’s use is “transformative,” that is, when the defendant “adds something new, with a
further purpose or different character, altering the first with new expression, meaning, or
message.” Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013). In addition, a use for “nonprofit
educational purposes” is more likely to be considered fair than a “commercial” use. Swatch Grp.
Mgmt. Servs. Ltd. V. Bloomberg L.P., 756 F.3d 73, 83 (2d Cir. 2014) (quoting 17 U.S.C.
§ 107(1)).
The second factor, the nature of the copyrighted work, favors a fair use determination
when “the work is factual or informational,” and when it was published before the alleged
infringement occurred. Cariou v. Prince, 714 F.3d at 709–10. “Courts in the Second and other
Circuits have found that when the original photographic work was created for news-gathering
purposes, this factor favors fair use.” Hirsch v. CBS Broad. Inc., 2017 WL 3393845, at *6.
In analyzing the third factor, “the amount and substantiality of the portion used,” courts
consider whether “the quantity and value of the materials used are reasonable in relation to the
purpose of the copying.” Swatch Grp. Mgmt. Servs. Ltd. V. Bloomberg L.P., 756 F.3d at 89
(quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 586). “In general, the more of a
copyrighted work that is taken, the less likely the use is to be fair.” Id.
The fourth factor, the effect on the potential market for the copyrighted work, weighs
against fair use when the alleged infringer “usurps the market of the original work.” Blanch v.
Koons, 467 F.3d 244, 251 (2d Cir. 2006). “Infringers usurp the market for copyrighted works
when the infringer’s target audience and the infringing content are the same as the original.”

8

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 9 of 13

Hirsch v. CBS Broad. Inc., 2017 WL 3393845, at *6. “Courts must also consider the harm to
derivative markets for a copyrighted work, such as a market for licensing revenues.” Id.
Whether the defendant’s “use is transformative is important to the usurpation analysis, as ‘the
more transformative the [defendant’s] use, the less likely that it substitutes for the original.’” Id.
(quoting Cariou v. Prince, 714 F.3d at 709).
“Courts most frequently address a proffered fair use defense at summary judgment.”
TCA Television Corp. v. McCollum, 839 F.3d 168, 178 (2d Cir. 2016). A defendant’s
entitlement to the fair use defense “often requires consideration of facts outside of the complaint
and is thus inappropriate to resolve on a motion to dismiss.” Hirsch v. CBS Broad. Inc., 2017
WL 3393845, at *6. However, when “the facts necessary to establish the defense are evident on
the face of the complaint, including any materials properly incorporated into the complaint,”
dismissal under Rule 12(b)(6) may be appropriate. Hughes v. Benjamin, 437 F. Supp. 3d at 389.
2.

Application

Here, it is not evident from the complaint and its incorporated exhibits that the St. Paul
Post was a fair use. Indeed, plaintiff’s allegations, accepted as true at this stage, suggest the use
was not fair.
Notably, the purpose and character of the use—which the Second Circuit has described as
“[t]he heart of the fair use inquiry”—weigh strongly against a fair use determination here.
Blanch v. Koons, 467 F.3d at 251. The complaint and its incorporated exhibits indicate
defendant did not alter the Photograph, add its own commentary, or otherwise alter the message
conveyed by the Photograph. Instead, the St. Paul Post simply “included the original text of the
Journal Article . . . . featuring [the Photograph].” (Compl. ¶ 17).

9

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 10 of 13

Defendant nonetheless contends its use was “transformative” because defendant’s
principal, Richard St. Paul, “attended the meeting in which the HUD Official in the photograph
attended” and “[t]he Law firm’s purpose in posting the Image was to make the public aware that
HUD and its leadership were working to address issues in New York City Public Housing.”
(Def. Mem. at ECF 14). But the Court can discern no meaningful difference between
defendant’s professed purpose and the photojournalistic purpose “for which [the Photograph]
was created,” i.e., depicting the HUD official’s visit to public housing apartments in New York
City. TCA Television Corp. v. McCollum, 839 F.3d at 182–83 (“[T]here is nothing
transformative about using an original work in the manner it was made to be used.”). Indeed, the
Photo Credit, which indicates plaintiff took the photograph “for the Wall Street Journal,” further
illustrates the original photojournalistic purpose. (Exhibit B). As such, the Court cannot
conclude defendant’s use of the Photograph was transformative.
Moreover, because defendant allegedly reproduced the entire Photograph along with the
Journal Article for which it was created, defendant’s use likely “usurps demand for the protected
work by serving as a market substitute,” meaning the fourth factor would also weigh against fair
use here. TCA Television Corp. v. McCollum, 839 F.3d at 186.
In short, defendant’s “entitlement to a fair use defense [is] not so clearly established on
the face of the [complaint] and its incorporated exhibits as to support dismissal.” TCA
Television Corp. v. McCollum, 839 F.3d at 178.
Accordingly, plaintiff’s copyright infringement claim may proceed.
III.

DMCA Claims
Defendant argues plaintiff’s DMCA claims must be dismissed because plaintiff does not

plausibly allege any CMI accompanied the Photograph.

10

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 11 of 13

The Court disagrees as to plaintiff’s Section 1202(b)(3) claim. The Court agrees
plaintiff’s Section 1202(a) claim must be dismissed, but because plaintiff did not plausibly allege
defendant added false CMI.
A.

Applicable Law

The DMCA protects the integrity of CMI “conveyed in connection with” a copyrighted
work. 17 U.S.C. § 1202(c). CMI includes “the name of, and other identifying information
about, the author . . . [or] copyright owner of the work.” Id. § 1202(c)(2)–(3). CMI need not
“appear on the work itself” to be protected under the DMCA. Mango v. BuzzFeed, Inc., 356 F.
Supp. 3d 368, 377–78 (S.D.N.Y. 2019), aff’d, 970 F.3d at 167. As relevant here, a “gutter
credit”—a separate line of text adjacent to a photograph, indicating its photographer—constitutes
CMI under the DMCA. Mango v. BuzzFeed, Inc., 970 F.3d 167, 172 (2d Cir. 2020).
To state a Section 1202(a) claim, a plaintiff “must plausibly allege that [the] defendant
knowingly provided false copyright information and that the defendant did so with the intent to
induce, enable, facilitate, or conceal an infringement.” Krechmer v. Tantaros, 747 F. App’x 6, 9
(2d Cir. 2018) (summary order).
To state a Section 1202(b)(3) claim, a plaintiff must plausibly allege:
(1) the existence of CMI in connection with a copyrighted work; and (2) that a
defendant distributed works or copies of works; (3) while knowing that CMI has
been removed or altered without authority of the copyright owner or the law; and
(4) while knowing, or having reasonable grounds to know that such distribution
will induce, enable, facilitate, or conceal an infringement.
Mango v. BuzzFeed, Inc., 970 F.3d at 171.
B.

Application

Here, plaintiff fails to state a claim under Section 1202(a), but does state a claim under
Section 1202(b)(3).

11

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 12 of 13

With respect to the Section 1202(a) claim, the complaint lacks factual allegations
indicating defendant provided false CMI, such as by adding its own copyright notice or a credit
identifying the wrong individual as the photographer. Cf. Trombetta v. Novocin, 2021 WL
6052198, at *10; Mango v. BuzzFeed, Inc., 356 F. Supp. 3d at 378 (publishing photograph with
false gutter credit violated Section 1202(a)). Accordingly, plaintiff does not state a claim for
providing false CMI.
Plaintiff does, however, state a Section 1202(b)(3) claim for distributing a copyrighted
work whose CMI was removed without authorization. Plaintiff alleges the Photograph was first
published on the Wall Street Journal website with a gutter credit indicating he was the
photographer, i.e., CMI. Plaintiff further alleges defendant distributed the Photograph without
the gutter credit, even though defendant otherwise reproduced the accompanying Journal Article
in the St. Paul Post. Moreover, plaintiff alleges defendant did not have a license to distribute or
otherwise use the Photograph.
In light of these allegations, it is reasonable to infer defendant removed the CMI and
distributed the Photograph “while knowing that CMI ha[d] been removed . . . without authority
of the copyright owner.” Mango v. BuzzFeed, Inc., 970 F.3d at 171; see also Shihab v. Complex
Media, Inc., 2022 WL 3544149, at *5 (S.D.N.Y. Aug. 17, 2022) (concluding complaint
“adequately alleges that [defendant] knew that the CMI had been removed or altered without the
authority of [plaintiff] or the law—as it allegedly removed the CMI itself without authorization
from [plaintiff]”).
Likewise, plaintiff plausibly alleges defendant “knew or had reasonable grounds to know
that its removal of the CMI from the Photograph[ ] would induce, enable, facilitate or conceal an
infringement—specifically, its own alleged infringement of [plaintiff’s copyright] to the

12

Case 7:22-cv-05648-VB Document 38 Filed 05/18/23 Page 13 of 13

Photograph[ ].” Shihab v. Complex Media, Inc., 2022 WL 3544149, at *5; see also Mango v.
BuzzFeed, Inc., 970 F.3d at 172–74 (violation of 1202(b)(3) when defendant knowingly
distributed photograph with altered gutter credit, “thus concealing its infringement”).
Accordingly, plaintiff’s Section 1202(a) claim must be dismissed, but his Section
1202(b)(3) claim may proceed.
CONCLUSION
The motion to dismiss is DENIED, except as to plaintiff’s Section 1202(a) claim, as to
which the motion is GRANTED.
By June 1, 2023, defendant shall file an answer.
By separate order, the Court will schedule an initial conference.
The Clerk is instructed to terminate the motion. (Doc. #30).
Dated: May 18, 2023
White Plains, NY

SO ORDERED:

____________________________
Vincent L. Briccetti
United States District Judge

13