McGucken v. Newsweek LLC et al Doc.

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Case 1:19-cv-09617-KPF Document 35 Filed 06/01/20 Page 1 of 25

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
ELLIOT McGUCKEN,

Plaintiff,
19 Civ. 9617 (KPF)
-v.-
OPINION AND ORDER
NEWSWEEK LLC,

Defendant.

KATHERINE POLK FAILLA, District Judge:

Plaintiff Elliot McGucken is a photographer who focuses on landscapes

and seascapes. On March 13, 2019, Plaintiff posted on his Instagram account

a photograph of an ephemeral lake (the “Photograph”) that had appeared in

Death Valley, California. The following day, Defendant Newsweek published an

article about the ephemeral lake (the “Article”), embedding Plaintiff’s Instagram

post of the lake as part of the Article. Plaintiff brought this action for copyright

infringement, alleging that Defendant reproduced and displayed the

Photograph on its website without his consent. Defendant moves to dismiss

the action for failure to state a claim, arguing, inter alia, that it either had a

valid sublicense to use the Photograph as a result of Plaintiff’s public post on

Instagram, or that its publication of the Photograph constituted fair use. For

the reasons set forth in the remainder of this Opinion, Defendant’s motion is

granted in part and denied in part.

Dockets.Justia.com
Case 1:19-cv-09617-KPF Document 35 Filed 06/01/20 Page 2 of 25

BACKGROUND 1

A. Factual Background

1. Plaintiff’s Allegations

Plaintiff is an individual residing in Los Angeles, California, while

Defendant is a limited liability company located in New York, New York. (Am.

Compl. ¶¶ 4-5). Plaintiff operates a public Instagram account on which he

posts photographs he has taken of landscapes and seascapes. (See Wolff Decl.,

Ex. A). On March 13, 2019, Plaintiff posted the Photograph, depicting a large

lake in Death Valley National Park, to his Instagram account. (See id., Ex. B).

On March 14, 2019, Defendant published the Article, titled “Huge Lake

Appears in Death Valley, One of the Hottest, Driest Places on Earth,” on its

website. (See id., Ex. C). The Article noted that Plaintiff had captured

photographs of the ephemeral lake and provided some quotes from Plaintiff

about his observation of the lake. (Id.). Most relevantly to this action, the

Article incorporated Plaintiff’s Instagram post of the Photograph, through a

process known as embedding. (See id.; Wolff Decl., Ex. I). As ably explained by

the Honorable Kimba Wood,

1 The facts in this Opinion are drawn from Plaintiff’s Amended Complaint (“Am. Compl.”
(Dkt. #17)), which is the operative pleading in this action. The Court also relies on the
exhibits attached to the Declaration of Nancy E. Wolff (“Wolff Decl., Ex. [ ]” (Dkt. #22))
insofar as those exhibits show Plaintiff’s Instagram page, the Photograph, and the
Article, all of which are incorporated by reference into the Amended Complaint.
For ease of reference, the Court refers to Defendant’s opening brief as “Def. Br.” (Dkt.
#21); to Plaintiff’s opposing brief as “Pl. Opp.” (Dkt. #26); to Plaintiff’s supplemental
opposition brief as “Pl. Supp. Opp.” (Dkt. #28); and to Defendant’s reply brief as “Def.
Reply” (Dkt. #34). The Court also refers to, but does not rely on, exhibits to the
Declaration of Scott Alan Burroughs as “Burroughs Decl., Ex. [ ]” (Dkt. #27).

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Embedding allows a website coder to incorporate

content, such as an image, that is located on a third-
party’s server, into the coder’s website. When an
individual visits a website that includes an “embed
code,” the user’s internet browser is directed to retrieve
the embedded content from the third-party server and
display it on the website. As a result of this process,
the user sees the embedded content on the website,
even though the content is actually hosted on a third-
party’s server, rather than on the server that hosts the
website.

Sinclair v. Ziff Davis, LLC, No. 18 Civ. 790 (KMW), 2020 WL 1847841, at *1

(S.D.N.Y. Apr. 13, 2020) (internal citations omitted). At no point did Plaintiff

give his consent to Defendant’s use of the Photograph in the Article, nor did

Defendant ever compensate Plaintiff for its use of the Photograph. (Am. Compl.

¶ 10).

On April 1, 2019, Plaintiff registered the Photograph with the United

States Copyright Office, with the registration number of VA 2-145-698. (Am.

Compl. ¶ 9; id., Ex. B). Two days later, on April 3, 2019, Plaintiff sent a cease

and desist letter to Defendant, providing notice of the putative infringement

and requesting that Defendant remove the Photograph from the Article. (Id. at

¶ 11). However, Newsweek had not removed the Photograph or taken down the

Article as of October 13, 2019. (Id.).

2. Instagram’s Terms of Use 2

Given Defendant’s argument that it held a valid sublicense to the

Photograph due to Plaintiff’s decision to post the Photograph publicly on

2 The Court takes judicial notice of Instagram’s Sign-Up Page (Wolff Decl., Ex. D);
Instagram’s Terms of Use (id., Ex. E); Instagram’s Privacy Policy (id., Ex. F); and
Instagram’s Platform Policy (id., Ex. G). All four items are publicly accessible; there is

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Instagram (see Def. Br. 13), the Court provides an overview of the various

agreements governing the parties’ use of Instagram. Everyone who signs up to

use Instagram agrees to Instagram’s Terms of Use. (Wolff Decl., Ex. D). The

Terms of Use prohibit users from “post[ing] private or confidential information

or do[ing] anything that violates someone else’s rights, including intellectual

property.” (Id., Ex. E at 4). The Terms of Use also provide that:

[W]hen you share, post, or upload content that is

covered by intellectual property rights …, you hereby
grant to [Instagram] a non-exclusive, royalty-free,
transferable, sub-licensable, worldwide license to host,
use, distribute, modify, run, copy, publicly perform or
display, translate, and create derivative works of your
content (consistent with your privacy and application
settings).

(Id.).

Instagram’s Privacy Policy, which “applies to all visitors, users, and

others who access the Service,” provides that “other Users may search for, see,

use, or share any of your User Content that you make publicly available

through [Instagram], consistent with the terms and conditions of this Privacy

Policy and our Terms of Use.” (Wolff Decl., Ex. F at 2). In addition, “[s]ubject

to your profile and privacy settings, any User Content that you make public is

searchable by other Users and subject to use under our Instagram API.” (Id. at

no dispute as to the authenticity of the items; and while the meaning of the terms in the
items may be in dispute, the existence of the terms themselves is not. See Fed. R.
Evid. 201(b)(2); Force v. Facebook, Inc., 934 F.3d 53, 59 n.5 (2d Cir. 2019) (finding that
Facebook’s publicly available Terms of Service and Community Standards were subject
to judicial notice). However, the Court notes that the above cited items represent
Instagram’s terms and policies as of February 28, 2020 (see Wolff Decl., Ex. D-G), and
may not represent Instagram’s current policies and terms.

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4). 3 The Privacy Policy notes that once a user has “shared User Content or

made it public, that User Content may be re-shared by others.” (Id.).

Finally, Instagram’s Platform Policy governs the use of the API. (See

Wolff Decl., Ex. G at 2). The Platform Policy states that the Platform is

provided “to help broadcasters and publishers discover content, get digital

rights to media, and share media using web embeds.” (Id.). However, the

Platform Policy instructs users to “[c]omply with any requirements or

restrictions imposed of usage of Instagram photos and videos … by their

respective owners,” and also prohibits users from “provid[ing] or promot[ing]

content that violates any rights of any person, including but not limited to

intellectual property rights.” (Id. at 2-3). The Platform Policy provides that the

Platform is licensed to users, but “User Content is owned by users and not by

Instagram.” (Id. at 4).

B. Procedural Background

Plaintiff initiated this action on October 17, 2019, with the filing of a

complaint against Defendant and other unidentified individuals. (Dkt. #1). On

November 13, 2019, the Court scheduled an initial pretrial conference for

February 20, 2020. (Dkt. #8). On December 6, 2019, Defendant informed the

Court of its intention to file a motion to dismiss. (Dkt. #13). Plaintiff

responded to Defendant’s pre-motion letter on December 11, 2019. (Dkt. #14).

3 The “API” or “application programming interface,” is a service that “enable[s] users to

access and share content posted by other users whose accounts are set to ‘public’
mode.” Sinclair v. Ziff Davis, LLC, No. 18 Civ. 790 (KMW), 2020 WL 1847841, at *1
(S.D.N.Y. Apr. 13, 2020).

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On December 12, 2019, the Court ordered the parties to appear on January 7,

2020, for a pre-motion conference, and adjourned the initial pretrial conference

sine die. (Dkt. #15). The parties appeared for the scheduled pre-motion

conference on January 7, 2020, at which time the Court granted Plaintiff leave

to amend his complaint and scheduled briefing for Defendant’s contemplated

motion to dismiss. (Minute Entry for January 7, 2020).

On January 24, 2020, Plaintiff filed the Amended Complaint. (Dkt. #17).

On February 28, 2020, Defendant filed its motion to dismiss and

accompanying memorandum of law and declaration. (Dkt. #20-22). Plaintiff

filed its opposing memorandum, accompanied by a declaration, on April 13,

2020. (Dkt. #26-27). On April 20, 2020, Plaintiff requested leave to file a

supplemental opposition brief in light of Judge Kimba Wood’s decision in

Sinclair, ostensibly with Defendant’s consent. (Dkt. #28). The Court granted

Plaintiff’s request on April 21, 2020 (Dkt. #29), only to be informed the same

day by Defendant that Plaintiff had allegedly misrepresented his intentions

regarding the supplemental brief to Defendant (Dkt. #30). In response, the

Court ruled that it would only consider those portions of the supplemental brief

that directly addressed Judge Wood’s decision in Sinclair. (Dkt. #31). On

May 4, 2020, Defendant filed its reply brief. (Dkt. #34).

DISCUSSION

A. Motions to Dismiss under Fed. R. Civ. P. 12(b)(6)

When considering a motion to dismiss under Federal Rule of Civil

Procedure 12(b)(6), a court must “draw all reasonable inferences in Plaintiff’s

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favor, assume all well-pleaded factual allegations to be true, and determine

whether they plausibly give rise to an entitlement to relief.” Faber v. Metro. Life

Ins. Co., 648 F.3d 98, 104 (2d Cir. 2011) (internal quotation marks

omitted); see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“To survive a

motion to dismiss, a complaint must contain sufficient factual matter, accepted

as true, to state a claim to relief that is plausible on its face.” (internal

quotation marks omitted)). A plaintiff is entitled to relief if he alleges “enough

facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v.

Twombly, 550 U.S. 544, 570 (2007); see also In re Elevator Antitrust Litig., 502

F.3d 47, 50 (2d Cir. 2007) (“While Twombly does not require heightened fact

pleading of specifics, it does require enough facts to nudge plaintiff’s claims

across the line from conceivable to plausible.” (internal quotation marks

omitted) (citing Twombly, 550 U.S. at 570)).

That said, a court is not bound to accept “conclusory allegations or legal

conclusions masquerading as factual conclusions.” Rolon v. Henneman, 517

F.3d 140, 149 (2d Cir. 2008) (internal quotation marks omitted); see

also Harris v. Mills, 572 F.3d 66, 72 (2d Cir. 2009) (“[A]lthough a court must

accept as true all of the allegations contained in a complaint, that tenet is

inapplicable to legal conclusions, and threadbare recitals of the elements of a

cause of action, supported by mere conclusory statements, do not suffice.”

(internal quotation marks omitted) (quoting Iqbal, 556 U.S. at 678)). Moreover,

“[w]here a complaint pleads facts that are ‘merely consistent with’ a defendant’s

liability, it ‘stops short of the line between possibility and plausibility of

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entitlement to relief.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at

557).

B. The Court Largely Denies Defendant’s Motion to Dismiss

In its motion to dismiss, Defendant does not contest that Plaintiff has

alleged a viable direct claim of copyright infringement. Instead, Defendant’s

motion primarily rests on two independent defenses: (i) Plaintiff’s public

posting of the Photograph on Instagram granted Newsweek a sublicense to use

the Photograph via Instagram’s embedding feature (Def. Br. 12-13), and

(ii) Defendant’s use of the Photograph constituted fair use as a matter of law

(id. at 14). The Court addresses each defense in turn.

1. The Court Cannot Find at This Stage That Defendant Acted

Pursuant to a Valid Sublicense

Defendant’s first defense is both straightforward and relatively novel.

Defendant argues that, per Instagram’s various terms and policies, when

Plaintiff chose to post the Photograph publicly on Instagram, he granted

Instagram a sublicensable license to the Photograph. (Def. Br. 13). Newsweek,

in turn, embedded the Photograph in the Article using Instagram’s API, and in

doing so exercised the sublicense that had previously been granted to

Instagram. (Def. Reply 4).

In examining Defendant’s argument, this Court does not paint on a

blank canvas. Indeed, Judge Kimba Wood examined the exact same

question less than two months ago — whether a web embed of a public post on

Instagram can give rise to a claim of copyright infringement. See generally

Sinclair, 2020 WL 1847841. In Sinclair, Mashable — a media

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website — published an article in which it embedded a photograph that

Sinclair had previously uploaded to and posted publicly on Instagram. See id.

at *1. Mashable argued, and Judge Wood held, that pursuant to Instagram’s

various terms and policies, Sinclair had “granted Instagram the right to

sublicense” the photograph at issue, and that “because Plaintiff uploaded the

Photograph to Instagram and designated it as ‘public,’ she agreed to allow

Mashable, as Instagram’s sublicensee, to embed the Photograph in its website.”

Id. at *2-3.

The Court finds Judge Wood’s decision to be well-reasoned and sees little

cause to disagree with that court’s reading of Instagram’s Terms of Use and

other policies. Indeed, insofar as Plaintiff contends that Instagram lacks the

right to sublicense his publicly posted photographs to other users, the Court

flatly rejects that argument. The Terms of Use unequivocally grant Instagram a

license to sublicense Plaintiff’s publicly posted content (see Wolff Decl., Ex. E at

4), and the Privacy Policy clearly states that “other Users may search for, see,

use, or share any of your User Content that you make publicly available

through” Instagram (id., Ex. F at 2).

Nevertheless, the Court cannot dismiss Plaintiff’s claims based on this

licensing theory at this stage in the litigation. As Plaintiff notes in his

supplemental opposition brief, there is no evidence before the Court of a

sublicense between Instagram and Defendant. (Pl. Supp. Opp. 7-9). Although

Instagram’s various terms and policies clearly foresee the possibility of entities

such as Defendant using web embeds to share other users’ content (see Wolff

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Decl., Ex. G at 2 (noting that Instagram’s Platform exists in part “to help

broadcasters and publishers discover content, get digital rights to media, and

share media using web embeds”)), none of them expressly grants a sublicense

to those who embed publicly posted content. Nor can the Court find, on the

pleadings, evidence of a possible implied sublicense. See SHL Imaging, Inc. v.

Artisan House, Inc., 117 F. Supp. 2d 301, 317 (S.D.N.Y. 2000) (noting that “[a]n

implied license can only exist where an author creates a copyrighted work with

knowledge and intent that the work would be used by another for a specific

purpose” (citing SmithKline Beecham Consumer Healthcare, L.P. v. Watson

Pharms., Inc., 211 F.3d 21, 25 (2d Cir. 2000))).

While the Court acknowledges that it may be possible to read

Instagram’s various terms and policies to grant a sublicense to embedders, the

Court’s role on a Rule 12(b)(6) motion is to “draw all reasonable inferences in

Plaintiff’s favor.” Faber, 648 F.3d at 104. Given the limited review permitted at

this stage, the Court cannot find that Defendant acted pursuant to a

sublicense from Instagram. Accordingly, Defendant’s motion to dismiss on this

ground is denied.

2. Defendant’s Embedding of the Photograph Did Not Constitute

Fair Use as a Matter of Law

As a second, independent reason for dismissal, Defendant argues that its

actions constituted fair use. (Def. Br. 14-15). The Copyright Act, under which

Plaintiff brings this suit, is intended “[t]o promote the Progress of Science and

useful Arts, U.S. Const. art. I, § 8, cl. 8, “by granting authors a limited

monopoly over (and thus the opportunity to profit from) the dissemination of
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their original works of authorship,” Authors Guild, Inc. v. HathiTrust, 755 F.3d

87, 95 (2d Cir. 2014). But there are also limits upon creators’ control over

their own works — in particular, “the doctrine of ‘fair use,’ which allows the

public to draw upon copyrighted materials without the permission of the

copyright holder in certain circumstances.” Id. “[T]he fair use determination is

an open-ended and context-sensitive inquiry,” Cariou v. Prince, 714 F.3d 694,

705 (2d Cir. 2013), but Congress has provided four nonexclusive factors that

inform whether a given use is fair:

(1) the purpose and character of the use, including

whether such use is of a commercial nature or is for
nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in

relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or
value of the copyrighted work.

17 U.S.C. § 107.

“Fair use is an affirmative defense, and therefore Defendant bears the

burden of showing that a given use is fair.” Yang v. Mic Network, Inc., 405 F.

Supp. 3d 537, 542 (S.D.N.Y. 2019) (quoting Authors Guild v. Google, Inc., 804

F.3d 202, 213 (2d Cir. 2015)). “Courts have granted motions to dismiss

infringement claims based on a defendant’s fair use defense when ‘discovery

would not provide any additional relevant information’ and ‘[a]ll that is

necessary for the court to make a determination as to fair use are the two

[works] at issue.’” May v. Sony Music Entm’t, 399 F. Supp. 3d 169, 188

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(S.D.N.Y. 2019) (quoting Arrow Prods., Ltd. v. Weinstein Co., 44 F. Supp. 3d

359, 368 (S.D.N.Y. 2014)). However, as this Court has previously observed,

“there is a dearth of cases granting such a motion.” BWP Media USA, Inc. v.

Gossip Cop Media, LLC, 87 F. Supp. 3d 499, 505 (S.D.N.Y. 2015).

a. The Purpose and Character of the Use Factor Favors

Plaintiff

The first factor in the fair use inquiry, which has been described as “[t]he

heart of the fair use inquiry,” Cariou, 714 F.3d at 705 (alterations in original)

(internal quotation marks omitted) (quoting Blanch v. Koons, 467 F.3d 244, 251

(2d Cir. 2006)), asks in part whether the new work “merely ‘supersede[s] the

objects’ of the original creation, or instead adds something new, with a further

purpose or different character, altering the first with new expression, meaning,

or message; it asks, in other words, whether and to what extent the new work

is ‘transformative,’” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579

(1994) (quoting Folsom v. Marsh, 9 F. Cas. 342, 348 (C.C.D. Mass. 1841) (Story,

J.)); Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1111

(1990)). The Second Circuit has recognized that

[i]n the context of news reporting and analogous

activities, ... the need to convey information to the
public accurately may in some instances make it
desirable and consonant with copyright law for a
defendant to faithfully reproduce an original work
without alteration. Courts often find such uses
transformative by emphasizing the altered purpose or
context of the work, as evidenced by surrounding
commentary or criticism.

Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir.

2014). Yet the Second Circuit has specifically rejected the contention that

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commentary is necessary to the fair use defense, holding that “[t]he law

imposes no requirement that a work comment on the original or its author in

order to be considered transformative.” Cariou, 714 F.3d at 706. “Instead, ... to

qualify as a fair use, a new work generally must alter the original with ‘new

expression, meaning, or message.’” Id. (quoting Campbell, 510 U.S. at 579). In

general, “the more transformative the new work, the less will be the

significance of other factors … that may weigh against a finding of fair use.”

Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 351

(S.D.N.Y. 2017) (quoting Campbell, 510 U.S. at 579).

The commercial nature of the secondary use is also relevant; “[t]he

greater the private economic rewards reaped by the secondary user (to the

exclusion of broader public benefits), the more likely the first factor will favor

the copyright holder and the less likely the use will be considered fair.”

Swatch, 756 F.3d at 83 (alteration in original) (internal quotation marks

omitted) (quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 922 (2d

Cir. 1994)); accord Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S.

539, 562 (1985) (“The fact that a publication was commercial as opposed to

nonprofit is a separate factor that tends to weigh against a finding of fair use.”).

On the other hand, “purposes such as criticism, comment, [and] news

reporting” are set forth in the Copyright Act as prototypical examples of fair

use, 17 U.S.C. § 107, and the Second Circuit has “recognized that ‘[a]lmost all

newspapers, books and magazines are published by commercial enterprises

that seek a profit.’” Swatch, 756 F.3d at 83 (alteration in original)

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(quoting Consumers Union of U.S., Inc. v. Gen. Signal Corp., 724 F.2d 1044,

1049 (2d Cir. 1983)). Accordingly, though a work may be commercial in

nature, where it is found to be transformative courts “do not place much

significance on that fact due to the transformative nature of the work.” Cariou,

714 F.3d at 708.

Finally, courts considering the first statutory factor are directed to

consider whether a defendant acted in bad faith in its use of the copyrighted

material. See NXIVM Corp. v. Ross Inst., 364 F.3d 471, 478 (2d Cir. 2004).

However, “while the good or bad faith of a defendant … should be considered, it

generally contributes little to fair use analysis.” Ferdman v. CBS Interactive,

Inc., 342 F. Supp. 3d 515, 531 (S.D.N.Y. 2018) (quoting NXIVM Corp., 364 F.3d

at 479 n.2); see also Yang, 405 F. Supp. 3d at 546 (“[T]he Second Circuit has

cautioned that bad faith is not ‘itself conclusive of the fair use question, or even

of the first factor.’” (quoting NXIVM Corp., 364 F.3d at 479)).

Comparing the Photograph with its use in the Article, as the Court must

do on a motion to dismiss, the Court cannot find as a matter of law that

Defendant’s use of the Photograph was transformative. Sister courts have

noted that the use of a copyrighted photograph in a news article can properly

be deemed transformative where the photograph itself is the subject of the

story. See, e.g., Ferdman, 342 F. Supp. 3d at 534 (finding that use of a

photograph in an article was transformative because the central subject of the

article was the existence of, and commentary on, the photograph); Barcroft

Media, 297 F. Supp. 3d at 352 (noting that “a news report about video that has

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gone viral on the internet might fairly display a screenshot or clip from that

video to illustrate what all the fuss is about”). But that is not the case here.

Plaintiff posted the Photograph as an illustration of a phenomenon he

observed, and Defendant similarly used the Photograph primarily as an

illustrative aid depicting the subject of the Article. See Ferdman, 342 F. Supp.

3d at 534 (quoting Barcroft Media, 297 F. Supp. 3d at 352). And while it is

true that the Article incorporates quotes from Plaintiff about the taking of the

Photograph, the mere addition of some token commentary is not enough to

transform the use of a photograph when that photograph is not itself the focus

of the article.

Defendant attempts to bolster its characterization of its use of the

Photograph as transformative by relying on Nunez v. Caribbean International

News Corp., 235 F.3d 18 (1st Cir. 2000). (Def. Br. 17). In Nunez, a

professional photographer took several photographs of Miss Puerto Rico

Universe 1997, at least one of which provoked some controversy due to its

risqué nature. See 235 F.3d at 20. Three of the photographs were

subsequently published in the defendant’s newspaper, without the plaintiffs’

permission, as part of articles discussing the controversy around the

photographs. See id. The First Circuit, in finding that the defendant’s use was

transformative, explained that

[W]hat [was] important … [was] that plaintiffs’

photographs were originally intended to appear in
modeling portfolios, not in the newspaper … . Thus, by
using the photographs in conjunction with editorial

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commentary, El Vocero … used the works for “a further

purpose,” by giving them a new “meaning, or message.”

Id. at 23.

In the instant action, Defendant claims that its use was similarly

transformative because it took a photograph that was intended to be “fine art

landscape photography” and transformed it into news or commentary. (Def.

Br. 18). But this draws too fine a distinction between the parties’ uses. What

was important in Nunez was that the defendant imbued the plaintiffs’

photographs with new meaning by transforming them from their original

intent — modeling photographs — into the subject of a news story. Here,

Defendant imbued the Photograph with no such new meaning; the Photograph,

as already noted, was incorporated into the Article merely as an illustrative aid.

Therefore, Defendant’s citation to Nunez is unpersuasive, and the Court finds

that Defendant’s non-transformative use of the Photograph causes the first

statutory factor to lean in Plaintiff’s favor.

The other subfactors that the Court must consider in this first step —

the commercial use of the Photograph and whether Defendant’s use was in bad

faith — do not substantially alter the Court’s analysis. It is clear from the

pleadings that Defendant’s use was commercial in nature, and Defendant does

not dispute that fact. Such a use further weighs against a finding of fair use.

See Ferdman, 342 F. Supp. 3d at 537 (citing Harper & Row, 471 U.S. at 562).

Plaintiff also urges the Court to find that Defendant acted in bad faith. (Pl.

Opp. 18). However, there is nothing in the pleadings to suggest one way or

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another whether Defendant acted in good faith or bad faith. 4 Therefore, this

subfactor neither reinforces nor undermines the Court’s finding. The purpose

and character of Defendant’s use of the Photograph weighs in Plaintiff’s favor. 5

b. The Nature of the Copyrighted Work Factor Favors

Neither Party

The second fair use factor is “the nature of the copyrighted work.” 17

U.S.C. § 107. This factor requires an analysis of “[i] whether the work is

expressive or creative, ... with a greater leeway being allowed to a claim of fair

use where the work is factual or informational, and [ii] whether the work is

published or unpublished, with the scope for fair use involving unpublished

works being considerably narrower.” Cariou, 714 F.3d at 709-10 (alterations in

original) (internal citation and quotation marks omitted) (quoting Blanch, 467

F.3d at 256). Regarding the former, “[t]he law generally recognizes a greater

need to disseminate factual works than works of fiction or fantasy.” Harper &

4 Plaintiff urges the Court to take note of a comment allegedly posted on his Instagram
post of the Photograph, purporting to be from a Newsweek reporter and asking for
permission to use the Photograph. (Burroughs Decl., Ex. 2). However, this comment is
nowhere in Plaintiff’s Amended Complaint, and the Court does not find it proper to take
judicial notice of Plaintiff’s exhibit. It would therefore be improper for the Court to
consider the comment on this Rule 12(b)(6) motion. See Goel v. Bunge, Ltd., 820 F.3d
554, 559 (2d Cir. 2016) (explaining that courts adjudicating Rule 12(b)(6) motions
generally do not look beyond “facts stated on the face of the complaint, … documents
appended to the complaint or incorporated in the complaint by reference, and …
matters of which judicial notice may be taken”).
5 As a final matter, Defendant argues that there “is a strong presumption that the first
factor favors [a] defendant if the allegedly infringing use is among the illustrative
statutory categories of fair use enumerated in [17 U.S.C.] § 107” (Def. Br. 16), of which
categories “news reporting” is one, see 17 U.S.C. § 107. While such a strong
presumption may exist, see Hosseinzadeh v. Klein, 276 F. Supp. 3d 34, 42 (S.D.N.Y.
2017) (quoting Wright v. Warner Books, Inc., 953 F.2d 731, 736 (2d Cir. 1991)), it is
nonetheless clear that the presumption alone is insufficient to support a finding that
the first factor favors Defendant, see, e.g., BWP Media USA, Inc. v. Gossip Cop Media,
LLC, 87 F. Supp. 3d 499, 507 (S.D.N.Y. 2015).

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Row, 471 U.S. at 563; accord Authors Guild, 755 F.3d at 96 (“The second factor

considers whether the copyrighted work is ‘of the creative or instructive type

that the copyright laws value and seek to foster.’” (quoting Leval, supra, at

1123)). Regarding the latter, “[t]he fact that a work is unpublished is a critical

element of its ‘nature.’” Harper & Row, 471 U.S. at 564. Due to the

importance of the author’s right of first publication, “the unpublished nature of

a work is a key, though not necessarily determinative, factor tending to negate

a defense of fair use.” Id. at 554 (internal alterations, citation, and quotation

marks omitted).

Drawing all reasonable inferences in Plaintiff’s favor, the Court finds that

the second factor favors neither party. Although Defendant does not attempt to

argue that the second factor weighs in its favor — instead asserting that the

second factor is largely inconsequential (see Def. Br. 19) — it certainly seems

that the Photograph required some element of creative expression through its

framing and coloration. Indeed, Defendant itself characterized the Photograph

as a work of “fine art landscaping.” (Id. at 18). Additionally, neither party

addresses whether the Photograph was previously published, although the

Court takes judicial notice of the Photograph’s prior publication in the outlet

SFGate. See BWP Media USA, Inc. v. Gossip Cop Media, Inc., 196 F. Supp. 3d

395, 399 n.3 (S.D.N.Y. 2016) (taking judicial notice of existence of article

because it was publicly accessible and contents were readily ascertainable).

Given that the Photograph’s creative nature leans in Plaintiff’s favor, while its

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prior publication weighs in Defendant’s favor, the Court views the second factor

essentially as a wash.

c. The Amount and Substantiality Factor Favors Neither

Party

The third factor in the fair use inquiry is “the amount and substantiality

of the portion used in relation to the copyrighted work as a whole.” 17 U.S.C.

§ 107. In examining this factor courts consider “the proportion of the original

work used, and not how much of the secondary work comprises the original.”

Cariou, 714 F.3d at 710; accord Harper & Row, 471 U.S. at 565. Ultimately,

“[t]he question is whether ‘the quantity and value of the materials used, are

reasonable in relation to the purpose of the copying.’” Blanch, 467 F.3d at 257

(internal quotation marks omitted) (quoting Campbell, 510 U.S. at 586). As

courts have repeatedly emphasized, the inquiry “calls for thought not only

about the quantity of the materials used, but about their quality and

importance, too.” Campbell, 510 U.S. at 587; accord, e.g., Hollander v.

Steinberg, 419 F. App’x 44, 47 (2d Cir. 2011) (summary order) (finding

reasonable a complete reproduction for the purposes of litigation).

In the instant action, Defendant reproduced the Photograph in its

entirety. However, “this factor ‘weighs less when considering a photograph —

where all or most of the work often must be used in order to preserve any

meaning at all — than a work such as a text or musical composition, where

bits and pieces can be excerpted without losing all value.’” Ferdman, 342 F.

Supp. 3d at 539 (quoting N. Jersey Media Grp. Inc. v. Pirro, 74 F. Supp. 3d 605,

621 (S.D.N.Y. 2015)). Given the purpose for which the Photograph was used in
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the Article, it is difficult for the Court to see how less than the entirety of the

Photograph could have been used. Therefore, even affording Plaintiff the

deference his allegations are due at this stage in the litigation, the Court finds

that this factor is neutral. See id. at 539-40 (finding the third factor to be

neutral where no more of the work was taken than necessary).

d. The Effect of the Use Factor Favors Plaintiff

The fourth and final enumerated factor in the fair use inquiry is “the

effect of the use upon the potential market for or value of the copyrighted

work.” 17 U.S.C. § 107. The Supreme Court has described this factor as

“undoubtedly the single most important element of fair use.” Harper &

Row, 471 U.S. at 566. The Second Circuit has emphasized that

The focus here is on whether defendants are offering a

market substitute for the original.... [O]ur concern is
not whether the secondary use suppresses or even
destroys the market for the original work or its potential
derivatives, but whether the secondary use usurps the
market of the original work.

NXIVM Corp., 364 F.3d at 481-82. Put differently, the focus of the inquiry is

“on whether the copy brings to the marketplace a competing substitute for the

original, … so as to deprive the rights holder of significant revenues because of

the likelihood that potential purchasers may opt to acquire the copy in

preference to the original.” Yang, 405 F. Supp. 3d at 547 (quoting Harper &

Row, 471 U.S. at 566). Moreover, the Court must question “not only the

market harm caused by the particular infringement, but also … whether, if the

challenged use becomes widespread, it will adversely affect the potential

market for the copyrighted work.” Barcroft Media, 297 F. Supp. 3d at 355
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(quoting Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 613 (2d

Cir. 2006)). “This inquiry ‘is necessarily intertwined with Factor One; the more

the objective of [the] secondary use differs from that of the original, the less

likely it will supplant the commercial market for the original.’” Yang, 405 F.

Supp. 3d at 547 (quoting Harper & Row, 471 U.S. at 566).

Defendant notes correctly that the Amended Complaint alleges no facts

regarding the existence of a market for the Photograph or any usurpation of

that market by Defendant’s reproduction. (Def. Br. 20-21). However, as

previously noted, the burden of proving fair use is Defendant’s, see May, 399 F.

Supp. 3d at 187, and therefore it is irrelevant whether Plaintiff has pleaded

market usurpation. Moreover, as the Supreme Court has noted, there is a

presumption of market harm “when a commercial use amounts to mere

duplication of the entirety of an original.” Campbell, 510 U.S. at 591. As

already noted in the Court’s analysis of the first factor, Defendant’s use of the

Photograph was both commercial and a mere duplication of the original, as

opposed to constituting a transformative use. Thus, the presumption applies

here. See Ferdman, 342 F. Supp. 3d at 541 (finding a presumption of market

harm applicable where the defendant’s commercial use of the infringing

photograph was a “duplication of the entirety of an original”). And given the

applicability of the presumption and the lack of any countervailing

considerations in the pleadings, the Court finds that the final factor favors

Plaintiff.

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In sum, the Court finds that the first and fourth factors favor Plaintiff,

while the second and third factors are neutral. Under these circumstances, it

is not possible for the Court to conclude that Defendant’s use of the

Photograph was fair as a matter of law. Accordingly, Defendant’s motion to

dismiss based on its alleged fair use of the Photograph is denied.

3. Plaintiff Has Adequately Pleaded Willfulness

In his Amended Complaint, Plaintiff has requested that he be awarded

statutory damages pursuant to 17 U.S.C. § 504(c)(2). (Am. Compl. ¶¶ 21, 27).

Such enhanced statutory damages are proper only where the copyright owner

has sustained the burden of proving, and the court has found, that the

defendant’s infringement was committed willfully. 17 U.S.C. § 504(c)(2).

Defendant argues that Plaintiff’s request for enhanced damages must be

dismissed because Plaintiff has only offered conclusory allegations to support

his prayer for relief. (Def. Br. 21). This, however, is not the case. Plaintiff

alleges that he sent a cease and desist letter to Defendant regarding the

Photograph, and that Defendant maintained its use of the Photograph in spite

of that letter. (Am. Compl. ¶ 11). Although the pleadings are sparse, they are

enough to raise a plausible inference that Defendant acted willfully in its

infringement of the Photograph. See Gossip Cop, 196 F. Supp. 3d at 411

(noting that willfulness “requires only knowledge or reckless disregard on the

part of the defendant”). Accordingly, Defendant’s request that Plaintiff’s prayer

for enhanced damages be dismissed is denied.

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C. The Court Grants Defendant’s Motion to Dismiss Plaintiff’s Claims

for Contributory and Vicarious Infringement

Defendant has moved to dismiss Plaintiff’s claims for contributory and

vicarious infringement. (Def. Br. 22-25). Defendant argues that the Amended

Complaint alleges no facts whatsoever to support any theory of secondary

liability, and instead merely recites conclusory language. (Id. at 23). In order

to allege a claim of contributory infringement, a plaintiff must allege facts

showing that the defendant, with knowledge of the infringing activity,

materially contributed to the infringing conduct of a third party. See Smith v.

BarnesandNoble.com, LLC, 143 F. Supp. 3d 115, 124 (S.D.N.Y. 2015). By

contrast, a claim of vicarious infringement requires a plaintiff to allege “that a

defendant has declined to exercise the right and ability to supervise or control

the infringing activity [by a third party] and enjoys a direct financial benefit

from the infringing activity.” Rams v. Def Jam Recordings, Inc., 202 F. Supp.

3d 376, 385 (S.D.N.Y. 2016).

Defendant is correct that the Amended Complaint fails to allege any facts

that would support a claim of either contributory or vicarious liability. Indeed,

apart from alleging that unidentified defendants “contributed to the

infringement of Plaintiff’s copyrights, or have engaged in one or more of the

wrongful practices alleged herein” (Am. Compl. ¶ 6), there are no facts

supporting the existence of any third parties, as both theories clearly require.

All of Plaintiff’s allegations regarding his claims for contributory and vicarious

infringement are no more than “threadbare recitals of the elements of a cause

of action,” Harris, 572 F.3d at 72, and therefore fail to meet the pleading
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standards required by Iqbal and Twombly. 6 Accordingly, Defendant’s motion to

dismiss Plaintiff’s claims for contributory and vicarious infringement is

granted.

D. The Court Denies Plaintiff’s Request for Leave to Amend

While Plaintiff “maintains that there are no deficiencies in his [Amended]

Complaint,” he asks the Court for leave to amend should the Court find his

pleadings deficient in any way. (Pl. Opp. 23). Although the Court

acknowledges that Federal Rule of Civil Procedure 15(a)(2) embodies a liberal

policy in regard to amendments, Plaintiff’s request here is denied. The Court

has already given Plaintiff the opportunity to amend his complaint, with no

noticeable change to the specificity of his allegations, and Plaintiff has offered

no indication as to how he would correct the deficiencies in his claims for

contributory and vicarious infringement. Indeed, as already noted, Plaintiff

maintains that there are no deficiencies. Under these circumstances, the

Court sees no reason to give Plaintiff a third bite at the apple. See Rosner v.

Star Gas Partners, L.P., 344 F. App’x 642, 645 (2d Cir. 2009) (summary order)

(holding there was no abuse of discretion in denying leave to amend where

plaintiffs had already been given opportunity to amend and offered no

indication as to how they would correct deficiencies in complaint).

6 It is true that such conclusory language could potentially pass muster were the
identities of the third parties or other details regarding Defendant’s or the third parties’
conduct “peculiarly within the possession and control of the defendant.” See Rosenfeld
v. Lenich, 370 F. Supp. 3d 335, 348 (E.D.N.Y. 2019) (quoting Citizens United v.
Schneiderman, 882 F.3d 374, 384 (2d Cir. 2018)). However, Plaintiff has offered no
information that might lead the Court to believe that such is the case.

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CONCLUSION

For the reasons set forth in this Opinion, Defendant’s motion to dismiss

is GRANTED IN PART and DENIED IN PART. Defendant’s motion to dismiss

Plaintiff’s claim of direct copyright infringement is DENIED, as is Defendant’s

motion to dismiss Plaintiff’s prayer for enhanced damages. However,

Defendant’s motion to dismiss Plaintiff’s claims for contributory and vicarious

infringement is GRANTED. In turn, Plaintiff’s request for leave to amend the

Amended Complaint is DENIED.

The Clerk of Court is directed to terminate the motion at docket entry 20.

On or before June 22, 2020, Defendant shall file a responsive pleading. On or

before June 29, 2020, the parties shall submit a proposed Case Management

Plan, as well as the joint status letter contemplated by the Plan.

SO ORDERED.

Dated: June 1, 2020

New York, New York __________________________________
KATHERINE POLK FAILLA
United States District Judge

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