Case 1:16-cv-06171-GHW Document 102 Filed 11/06/18 Page 1 of 38
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`MICHAEL GRECCO PRODUCTIONS, INC.,
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` Plaintiff,
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`X
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`VALUEWALK, LLC and JACOB O. WOLINSKY,
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` Defendants.
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`-against-
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`USDC SDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC #: _________________
`DATE FILED: 11/6/2018
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` 1:16-cv-6171-GHW
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`OPINION AND ORDER
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`GREGORY H. WOODS, United States District Judge:
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`Michael Grecco is a professional photographer, whose celebrity portraits and editorial
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`images have appeared in publications such as Time, Vanity Fair, and Forbes. Grecco contracts with
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`clients through Michael Grecco Productions (“MGP”), his photography studio and business. This
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`matter arises from a copyrighted photograph that Grecco took for Barron’s, a financial news outlet.
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`Valuewalk, LLC is a competitor of Barron’s, owned and operated by Jacob Wolinsky. After the
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`Barron’s article was published, Valuewalk issued its own article on the same subject, illustrated by a
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`photograph identical to the one Grecco had taken—without MGP’s permission. MGP brought this
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`action, alleging that Valuewalk and Wolinsky directly infringed on its copyright in the image, that
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`Wolinsky is vicariously and contributorily liable for Valuewalk’s infringement, and that Valuewalk
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`and Wolinsky have violated the Digital Millennium Copyright Act by intentionally removing the
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`information identifying Grecco as the author of the work.
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`Before the court are cross motions for partial summary judgment. MGP seeks judgment on
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`Valuewalk’s liability for copyright infringement, Wolinsky’s liability for vicarious infringement, and
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`the affirmative defenses asserted by Defendants under the fair use doctrine, the safe harbor
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`provisions of the Digital Millennium Copyright Act, the misuse-of-copyright defense, and the statute
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`of limitations of the Copyright Act. Pl.’s Mot. for Part. Summ. J. (ECF No. 99). Defendants seek
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`Case 1:16-cv-06171-GHW Document 102 Filed 11/06/18 Page 2 of 38
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`judgment dismissing Plaintiff’s direct, contributory, and vicarious infringement claims against
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`Wolinsky, as well as judgment regarding the alleged Digital Millennium Copyright Act violation by
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`both Defendants. Defs.’ Mot. for Part. Summ. J. Defs.’ Mot. for Part. Summ. J. (ECF No. 78).
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`Because the photographs at issue here are substantially identical and publishing the image as
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`an illustration to an article—the exact purpose for which the image was created—does not qualify as
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`fair use, Plaintiff’s motion is granted in part and denied in part; Defendants’ motion is denied in
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`whole.
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`I. BACKGROUND1
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`A. Facts
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`Michael Grecco is a professional photographer who specializes in celebrity portraiture,
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`working with notable figures such as Martin Scorsese, Robert Duvall, and Lucy Liu. Compl. ¶ 7.
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`Grecco’s photos have appeared in Time, Vanity Fair, Forbes, and several other well-regarded
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`publications. Id. Grecco contracts with clients through Plaintiff Michael Grecco Productions
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`(“MGP”), his photography studio and business. Id. at 6. Grecco earns money by taking editorial
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`photos for publishers and licensing his photos for fees as high as $13,500. Id.; Ex. 22 to Pl.’s Mot.
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`for Part. Summ. J. (ECF No. 99-21) (“ImageRights Subpoena Response”) at 13–14.
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`Grecco is also an advocate for copyright enforcement. He educates photographers on ways
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`to protect their intellectual property rights and serves on the Advocacy Committee of the APA,
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`which “fights for the rights of image creators.” Compl. ¶¶ 9–10. Grecco dedicates his time and
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`money to finding instances of copyright infringement and subsequently enforcing his rights under
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`the Copyright Act. Id. ¶ 11.
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`1. The Barron’s Assignment
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`In February of 2011, Barron’s, a financial news outlet, hired Grecco to take the photo at
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`1 The following facts are undisputed unless otherwise noted.
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`issue in this case. Defs.’ 56.1 Stmt. ¶ 2; Ex. 2 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-2)
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`(“Barron’s Email to Grecco”). 2 The assignment was for a cover story profiling Jeffrey Gundlach, a
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`prominent bond trader. Id. Grecco took a studio portrait of Gundlach, looking intently at the
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`camera with his arm clenched in a fist across his chest (the “Gundlach Image”). Ex. 4 to Pl.’s Mot.
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`for Part. Summ. J. (ECF No. 99-4) (“Barron’s Article”). In the photo, Gundlach is positioned in
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`front of a staircase with a spotlight illuminating the left side of his face. Id. Grecco digitally
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`processed and retouched the photo to prepare it for publication. Ex. 3 to Pl.’s Mot. for Part. Summ.
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`J. (ECF No. 99-3) (“MGP Invoice”). For his work, Grecco was paid $2,220.60, which included a
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`creative fee and a fee for editing the photo. Id.
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`The Barron’s article on Gundlach, entitled “The King of Bonds,” was published in February
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`21, 2011. Barron’s Article. The photograph appeared in Barron’s cover story in both its print and
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`on-line editions. Defs.’ 56.1 Stmt. ¶ 2. In both the print and online versions, the text “Michael
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`Grecco for Barron’s” appears in a “gutter credit” beneath the Gundlach image. Id. ¶ 3. Barron’s
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`employs a paywall on its website, blocking public access from certain articles without a subscription.
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`At some point in time, the paywall applied to the Gundlach article. Ex. 4 to Ray Decl. (ECF No.
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`73-4) (“Barron’s Paywall Page”).
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`Barron’s stores the image on its server at http://si.wsj.net/public/resources/images/BA-
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`AV026_Gundla_G_20110218174010.jpg, where it is still available today. Id. ¶ 4; Ex. 5 to Pl.’s Mot.
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`for Part. Summ. J. (ECF No. 99-5) (“Barron’s Server”). The photograph also appears as a search
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`result on Google image, and displays the copyright information identifying Grecco as the
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`photographer with a link to the Barron’s article. Ex. 6 to Ray Decl. (ECF No. 73-6) (“Google Image
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`2 References to “Defs.’ 56.1” are to the Rule 56.1 counterstatement submitted in connection with MGP’s motion.
`References to “Pl.’s 56.1” are to the Rule 56.1 counterstatement submitted in connection with Valuewalk and Wolinsky’s
`motion. In both cases, the Rule 56.1 counterstatements contain both the assertions of the moving party and the
`responses of the non-moving party.
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`Search Result”).
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`2. The Copyright Registration
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`MGP registered its copyright in the Gundlach image with the United States Copyright Office
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`on February 20, 2011 as Registration No. VAu 1-058-559. Defs.’ 56.1 Stmt. ¶ 5; Ex. 6 to Pl.’s Mot.
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`for Part. Summ. J. (ECF No. 99-6) (“Certificate of Registration”). Under the terms of its agreement
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`with Barron’s, MGP retained copyright ownership and licensed the work to Barron’s for its use in
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`the “King of Bonds” article. Defs.’ 56.1 Stmt. ¶ 2. MGP offers a stock license for the Gundlach
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`image for $3,372.00. Defs.’ 56.1 Stmt. ¶ 6; Ex. 8 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-9)
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`(“License Website”).
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`3. Valuewalk and Wolinsky
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`Defendant Valuewalk is a New York based limited liability company, organized under New
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`Jersey law. Defs.’ 56.1 Stmt. ¶ 41; Ex. 10 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-11)
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`(“Valuewalk Company Page”). Valuewalk owns www.valuewalk.com, a financial news outlet which
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`is a competitor of Barron’s. Id. ¶ 24. Like Barron’s, Valuewalk publishes articles on financial topics
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`and often supplements articles with photographs and graphics. Pl.’s 56.1 Stmt. at ¶¶ 3, 20.
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`Defendant Wolinsky is Valuewalk’s owner, sole member, its chief executive officer, and is
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`responsible for its administrative and financial affairs. Id. at ¶¶ 2, 10; Valuewalk Company Page.
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`Defendants contend that Wolinsky does not review or edit all articles prior to publication. Id. at ¶¶
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`27–28; Ex. 7-A to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-7) (“Wolinsky Dep.”) at 30:19–20.
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`However, in his deposition, Wolinsky admitted that he has broad decision-making power to
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`determine what content was published on Valuewalk.com. Wolinsky Dep. at 330:5–331:8. In his
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`deposition, Wolinsky also admitted that, as Editor-in-Chief, “I could technically have final say over
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`any material—any article we publish.” Id. at 30:12-14.; see also 331:3–8 (Wolinsky answering “[I]f I
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`want to, I could” in response to a question asking whether he can make a decision about what gets
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`published on Valuewalk.com). Wolinsky states that he is not always involved in editorial decision-
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`making, but when he is, no person at Valuewalk.com has authority to overrule his editorial decisions.
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`Wolinsky Dep. at 38:13–21.
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`Valuewalk earns revenue from the sale of advertisements displayed on Valuewalk.com,
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`which is the site’s main source of revenue. Defs.’ 56.1 Stmt. ¶ 34; Wolinsky Dep. at 44:14.
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`Valuewalk displayed advertisements to readers who visited the Gundlach Resource Page and admits
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`that it published the Resource Page to generate advertising revenue from reader page views. Defs.’
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`56.1 Stmt. ¶¶ 35–36. Wolinsky earns a salary, profits, and distributions from the advertising
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`revenue generated by the number of page views on published articles. Id. ¶¶ 38–39.
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`4. Valuewalk’s Company Policies
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`Valuewalk relies on contractors to create its content. Id. ¶ 29. The contractors are given
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`assignments by Wolinsky and Valuewalk, and are paid piece-rate by word or article. Id; Wolinsky
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`Dep. 110:1–111:3; Ex. 23 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-22) (“Valuewalk Page
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`Instructions”).
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`Valuewalk has previously used photographs on its website without properly identifying the
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`author. Ex. 25 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-24) (“Barclays Image”); Ex. 26 to Pl.’s
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`Mot. for Part. Summ. J. (ECF No. 99-25) (“AP Image”). Wolinsky has previously ignored
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`allegations of infringement on the Valuewalk site. See Wolinsky Dep. at 134:9–18; Ex. 13 to Pl.’s
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`56.1 Stmt. (ECF No. 92-13) (“Trent Email Chain”); Ex. 21 to Pl.’s 56.1 Stmt. (ECF No. 92-21)
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`(“Effie Gang Email Chain”). In March of 2015, the same year the alleged infringement here was
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`discovered, a different photographer emailed Wolinsky to inform him that a photo he had taken for
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`Barron’s was posted on Valuewalk without a license, and as such, Valuewalk was required to pay a
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`fee for its use. Trent Email Chain. Wolinsky instructed a Valuewalk employee to remove the
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`copyrighted image without responding to the photographer and refused to pay the fee, even after
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`the photographer threatened to bring legal action. Trent Email Chain.
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`Valuewalk maintains that it provides legal and administrative services to its contractors to
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`assist with compliance with intellectual property laws. Pl.’s 56.1 Stmt. ¶ 15. However, Valuewalk
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`admits that it did not provide any evidence that it advised its employees or contractors—or that any
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`company policy existed—to prevent copyright infringement prior to May 2016, after it was sued for
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`copyright infringement by another party. Defs.’ 56.1 Stmt. ¶ 31. Valuewalk did not designate an
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`agent to whom complaints of copyright infringement should be sent with the Copyright Office prior
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`to 2017. Id. ¶ 40; see also Wolinsky Dep. at 244:12–245:1.
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`In Valuewalk’s instructions regarding content preparation for its website, contractors are told
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`to “download [images] from Google” for articles, without mention of intellectual property laws.
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`Valuewalk Page Instructions (“If you can’t find images that are suitable for the article you can
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`download it from Google images and then upload in WordPress media by selecting the upload.file
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`option beside media library.”).
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`5. Valuewalk’s Resource Page on Gundlach
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`In 2012, Valuewalk published a “Resource Page” on Jeffrey Gundlach, the subject of
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`Grecco’s photograph for Barron’s article. Ex. 16 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-17)
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`(“2012 Valuewalk Page”). Wolinsky assigned an independent contractor named Sydra, located in
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`Pakistan, to create the page. Defs.’ 56.1 Stmt. ¶ 11; Ex. 15 to Pl.’s Mot. for Part. Summ. J. (ECF
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`No. 99-16) (“Gundlach Assignment Email”). In his instructions to Sydra, Wolinsky included the
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`text and a photo to be used for the profile. Id. Wolinsky sent Sydra a photograph obtained from
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`Gundlach’s assistant, clearly a different photo than the one at issue here. Gundlach Assignment
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`Email. While the text on the final profile was the same text Wolinsky had emailed to Sydra, a
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`different photo was used on the published version of the page. Id; 2012 Valuewalk Page. The
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`photograph that appeared on the Gundlach page looked like the Grecco’s Gundlach photograph,
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`without any copyright information identifying Grecco as the creator. 2012 Valuewalk Page; Barron’s
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`Article. Valuewalk did not have Grecco’s consent, or a license from MGP, to use the photograph.
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`Defs.’ 56.1 Stmt. ¶ 54. Defendants claim Sydra independently decided to swap the image provided
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`to her by Wolinsky for the Gundlach image, without Wolinsky’s knowledge. Id. ¶ 13.
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`Plaintiff alleges that Valuewalk published the Gundlach profile twice: once in 2012 and again
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`in 2015. Id. ¶ 18. There are two images stored on Valuewalk’s server, at the URLs
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`http://cdn1.valuewalk.com/wp-content/uploads/2012/03/
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`BAAV026_Gundla_G_201102181740101-300x200.jpg and http://www.valuewalk.com/wp-
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`content/uploads/2012/03/ BAAV026_Gundla_G_201102181740101-300x200.jpg. See Ex. 17 to
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`Pl.’s Mot. for Part. Summ. J. (ECF No. 99-18) (“ImageRights Sighting Results”). There are two
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`different versions of the Gundlach profile in the record. 2012 Valuewalk Page; Ex. 18 to Pl.’s Mot.
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`for Part. Summ. J. (ECF No. 99-19) (“2015 Valuewalk Page”). The 2015 page uses the same
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`photograph as the 2012 page, with updated information on Gundlach and is located at a different
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`URL address. 2012 Valuewalk Page; 2015 Valuewalk Page. Unlike the 2012 page, the 2015 version
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`says the article was “Developed by Valuewalk Team.” 2015 Valuewalk Page; Defs.’ 56.1 Stmt. ¶ 18.
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`The Defendants claim they only posted the Gundlach page once, in 2012, and the page was available
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`to the public from 2012–2016. Defs.’ 56.1 Stmt. ¶ 18. Defendants explain the differences between
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`the pages by claiming they were the result of a change in servers. Id. Regular views of the 2012
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`profile stopped on February 2, 2015 and views of the 2015 profile commenced on February 25,
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`2015. Ex. 12 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-13) (“2012 Resource Page Views”); Ex.
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`13 to Pl.’s Mot. for Part. Summ. J. (ECF No. 99-14) (“2015 Resource Page Views”).
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`The title of the 2012 Gundlach Valuewalk profile page was “The New Bond King.” Id.
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`Both the 2012 and 2015 Gundlach profile referenced the Barron’s “King of Bonds” article. In both
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`versions, the introduction section states “Barron’s in a February 2011 cover story called him the
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`“King of Bonds.” 2012 Valuewalk Page; 2015 Valuewalk Page. In the 2012 version, the article also
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`states “In a 2011 cover story, Barron’s magazine anointed Jeff Gundlach as the ‘New Bond King’
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`noting that in a career marked by genius and controversy, he had outpaced even Bill Gross.” 2012
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`Valuewalk Page.
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`In 2015, MGP discovered Barron’s use of the image by running a Google search on the
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`Gundlach image. Defs.’ 56.1 Stmt. ¶ 22. The copyright infringement search company, ImageRights,
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`conducted a search that showed two copies of the photograph were stored on Valuewalk’s server.
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`ImageRights Sighting Results. Grecco had no communications with ImageRights regarding
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`Valuewalk or the Gundlach Image prior to June of 2016. Id. ¶ 23.
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`Defendants claim that the images are not identical because they are different sizes: Grecco’s
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`image being a 553 x 369 pixel 40KB image while Valuewalk’s image is 300 x 200 pixels. Defs.’ Opp.
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`to Pl.’s Mot. for. Summ. J. (ECF No. 85) (“Defs.’ Opp.”) at 5; Defs.’ 56.1 Stmt. ¶ 14. Defendants
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`further assert that the Grecco’s image has a “glossy, professional finish” whereas their version has a
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`“flat, filtered effect.” Defs.’ Opp. at 5; Defs.’ 56.1 Stmt. ¶ 14. Defendants claim that these
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`differences render the Valuewalk photo a new creation because their version of the photograph
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`“lacks the alleged qualities” that make Grecco’s image “unique and different.” Defs.’ Opp. at 5;
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`Defs.’ 56.1 Stmt. ¶ 14. Grecco’s photograph for Barron’s and the photos used by Valuewalk on its
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`website are displayed below:
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`Barron’s Article
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`2012 Valuewalk Page
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`2015 Valuewalk Page
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`B. Procedural History
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`Michael Grecco Productions initiated this action on August 4, 2016, ECF No. 1, and
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`Defendants Valuewalk, LLC and Jacob O. Wolinsky filed their answer on October 7, 2016, ECF
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`No. 20.
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`On June 19, 2017, MGP filed a motion for partial summary judgement. ECF No. 70.
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`Valuewalk and Wolinsky filed their opposition to MGP’s motion on July 24, 2017, ECF Nos. 85–89,
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`and MGP filed its reply on August 7, 2017, ECF No. 100.
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`Valuewalk and Wolinsky also filed their motion for partial summary judgment on June 19,
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`2017. ECF No. 71. MGP filed its opposition on July 24, 2017, ECF No. 91, and Valuewalk and
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`Wolinsky filed their reply on August 7, 2017. ECF Nos. 97–98.
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`II.
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`SUMMARY JUDGMENT STANDARD
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`Summary judgment is appropriate when “the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (“[S]ummary judgment is proper ‘if the
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`pleadings, depositions, answers to interrogatories, and admissions on file, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
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`party is entitled to a judgment as a matter of law.’” (quoting former Fed. R. Civ. P. 56(c))). A
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`genuine dispute exists where “the evidence is such that a reasonable jury could return a verdict for
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`the nonmoving party,” while a fact is material if it “might affect the outcome of the suit under the
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`governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “Factual disputes that are
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`irrelevant or unnecessary will not be counted.” Id.
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`The movant bears the initial burden of demonstrating “the absence of a genuine issue of
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`material fact,” and, if satisfied, the burden then shifts to the non-movant to present “evidence
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`sufficient to satisfy every element of the claim.” Holcomb v. Iona Coll., 521 F.3d 130, 137 (2d Cir.
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`2008) (citing Celotex, 477 U.S. at 323). To defeat a motion for summary judgment, the non-movant
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`“must come forward with ‘specific facts showing that there is a genuine issue for trial.’” Matsushita
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`Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quoting former Fed. R. Civ. P. 56(e)).
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`“The mere existence of a scintilla of evidence in support of the [non-movant’s] position will be
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`insufficient; there must be evidence on which the jury could reasonably find for the [non-movant].”
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`Anderson, 477 U.S. at 252. Moreover, the non-movant “must do more than simply show that there is
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`some metaphysical doubt as to the material facts,” Matsushita, 475 U.S. at 586 (citations omitted),
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`and she “may not rely on conclusory allegations or unsubstantiated speculation.” Fujitsu Ltd. v. Fed.
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`Express Corp., 247 F.3d 423, 428 (2d Cir. 2001) (internal quotation marks and citation omitted).
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`In determining whether there exists a genuine dispute as to a material fact, the Court is
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`“required to resolve all ambiguities and draw all permissible factual inferences in favor of the party
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`against whom summary judgment is sought.” Johnson v. Killian, 680 F.3d 234, 236 (2d Cir. 2012)
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`(citing Terry v. Ashcroft, 336 F.3d 128, 137 (2d Cir. 2003)). The Court’s job is not to “weigh the
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`evidence or resolve issues of fact.” Lucente v. Int’l Bus. Machs. Corp., 310 F.3d 243, 254 (2d Cir. 2002)
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`(citation omitted). “Assessments of credibility and choices between conflicting versions of the
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`events are matters for the jury, not for the court on summary judgment.” Jeffreys v. City of New York,
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`426 F.3d 549, 553 (2d Cir. 2005) (citation omitted). “[T]he judge must ask . . . not whether . . . the
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`evidence unmistakably favors one side or the other but whether a fair-minded jury could return a
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`verdict for the [non-movant] on the evidence presented.” Id. at 553 (quoting Anderson, 477 U.S. at
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`252). “Summary judgment is improper if any evidence in the record from any source would enable a
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`reasonable inference to be drawn in favor of the nonmoving party.” Gym Door Repairs, Inc. v. Young
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`Equip. Sales, Inc., No. 15-cv-4244 (JGK), 2018 WL 4489278, at *2 (S.D.N.Y. Sept. 19, 2018) (citing
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`Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994)).
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`When resolving cross-motions for summary judgment, the same standards apply. “[E]ach
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`party’s motion must be examined on its own merits, and in each case all reasonable inferences must
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`be drawn against the party whose motion is under consideration.” Morales v. Quintel Entm’t, Inc., 249
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`F.3d 115, 121 (2d Cir. 2001) (citing Schwabenbauer v. Bd. of Educ., 667 F.2d 305, 314 (2d Cir. 1981)).
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`“[W]hen both parties move for summary judgment, asserting the absence of any genuine issues of
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`material fact, a court need not enter judgment for either party. Rather, each party’s motion must be
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`examined on its own merits, and in each case all reasonable inferences must be drawn against the
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`party whose motion is under consideration.” Id. at 121(citations omitted).
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`III. DISCUSSION
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`In its motion for summary judgement, Plaintiff seeks judgment on Valuewalk’s liability for
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`copyright infringement, Wolinsky’s liability for vicarious copyright infringement, and on four of the
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`affirmative defenses Defendants raised in their Answer. In its cross-motion, Defendants move for
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`summary judgment on the issues of Wolinsky’s direct, contributory, and vicarious liability, and on
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`Valuewalk and Wolinsky’s liability for the alleged violation of the Digital Millennium Copyright Act.
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`For the following reasons, Plaintiff’s motion is granted in part and denied in part. Defendants’
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`motion is denied in whole.
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`A. Choice of Law
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`As a threshold matter, the copyright laws of the United States apply here. Defendants
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`present a fundamentally erroneous argument that Plaintiff’s claims should be evaluated under
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`Pakistani law. The Defendants point to Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d
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`82 (2d Cir. 1998), for the proposition that the conflict of laws principle of lex loci delicti governs
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`infringement claims regarding copyright. And, indeed, it does. But the doctrine of lex loci deliciti
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`points to the law of the place where the acts giving rise to the liability occurred, and the tort in this
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`case clearly occurred in the United States, not Pakistan. The Copyright Acts prohibits the
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`publication, reproduction and distribution of copyrighted works, all of which took place in the
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`United States. Pl.’s Rep. to Defs.’ Opp. to Pl.’s Mot. for Summ. J. (ECF No. 100) (“Pl.’s Rep.”) at
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`2–3. Defendants’ myopically perceive the forum delicti as the location where the contractor selected
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`the image for inclusion on the webpage. But the fact that a single step in the chain of the creation
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`and publication of an article by a United States company for publication in the United States
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`happened in Pakistan does not make that forum the place of the tort. The place of the tort—the
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`forum delicti here is the United States.
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`Defendants’ argument—that by using a foreign contractor to choose photographs to include
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`in a website directed at directed at United States consumers, a United States based company can
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`avoid liability under the Copyright Act—teeters on line of frivolity, if it does not cross it. These
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`U.S.-based defendants cannot escape liability under the Copyright Act by offshoring part of their
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`production process. To hold otherwise would profoundly undermine the protection of the
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`Copyright Act in the United States.
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`Moreover, even if the location of the tort was narrowly construed to be in Pakistan, while
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`the law is well established that copyright laws have no extraterritorial effect, there is an exception
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`“when those [foreign] acts are intended to, and do, have an effect within the United States.” GB
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`Marketing USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F. Supp. 763, 773 (W.D.N.Y. 1991)
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`(“[T]he court does not limit its inquiry to a purely mechanical examination of where [the infringing]
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`acts physically took place. In fact, it is precisely because the copyright statutes are aimed at
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`infringement in the United States that the court must also consider the location of the effect of
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`[Defendant’s] alleged actions.”) (emphasis added). The allegedly infringing images was stored on
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`Valuewalk’s server in the United States, was accessible from computers within the United States, and
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`its use was directed towards United States readers. See McGraw-Hill Companies, Inc. v. Ingenium Techs.
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`Corp., 375 F. Supp. 2d 252, 257 (S.D.N.Y. 2005) (“[N]o such extraterritorial application is
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`contemplated in this case, where plaintiff seeks an injunction that applies to activities felt within the
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`United States.”); see also United Feature Syndicate, Inc. v. Miller Features Syndicate, Inc., 216 F. Supp. 2d
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`198, 225 (S.D.N.Y. 2002) (holding that a similar defense regarding the extraterritorial application of
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`copyright laws “borders on the frivolous” where allegedly infringing material is accessible from
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`computers within United States).
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`B. Copyright Infringement
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`Plaintiff moves for summary judgment on the issue of direct copyright infringement by
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`Valuewalk, arguing that Valuewalk has infringed on its copyright by “engaging in the unauthorized
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`reproduction and distribution of the work, and by creating a derivative work incorporating the
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`protected work, by publishing an exact copy on their website of the image.” Pl.’s Mot. for Part.
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`Summ. J. at 2. Plaintiff has established liability for copyright infringement by Valuewalk. However,
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`as the Court discusses below, there is a genuine issue of material fact regarding whether or not this
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`claim is barred by the statute of limitations. Therefore, Plaintiff’s motion must be denied pending
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`resolution of that question.
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`Defendants move for summary judgment on the issue of Wolinsky’s liability for direct
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`infringement. There is a material dispute of fact as to Wolinsky’s level of involvement in the
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`infringement, so this issue must be reserved for trial.
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`The Copyright Act grants the owner of the copyright the exclusive right to authorize the
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`reproduction, distribution, and preparation of derivatives of the owner’s work. 17 U.S.C. § 106; see
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`Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 546–47 (1985). Plaintiff must prove
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`the following elements for an infringement claim: (1) it holds a valid ownership interest in the
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`relevant copyrights, (2) defendants have “actually copied” their works, and (3) defendants’ copying is
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`illegal because of a “substantial similarity” between defendants’ works and the “protectable
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`elements” of their copyrighted works. Castle Rock Entm’t, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132,
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`137 (2d Cir. 1998). For a derivative work claim, “plaintiffs must further prove that (4) defendants’
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`works are unauthorized derivatives under 17 U.S.C. § 106(2).” Penguin Random House LLC v. Colting,
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`270 F. Supp. 3d 736, 744 (S.D.N.Y. 2017). Conversely, to prevail on a motion for summary
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`judgment, Defendants must demonstrate the absence of material evidence supporting an essential
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`element of Plaintiff’s copyright infringement claim. Jorgensen v. Epic/Sony Records, 351 F.3d 46, 50 (2d
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`Cir. 2003).
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`1. Ownership of a Valid Copyright
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`A certificate of registration from the United States Register of Copyrights constitutes prima
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`facie evidence of the valid ownership of a copyright. See id. at 51 (citing 17 U.S.C. § 410(c)). The
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`parties do not dispute that the Plaintiff validly obtained a certificate of registration from the United
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`States copyright office for the Gundlach image. Indeed, the Plaintiff has provided a certificate of
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`registration of the copyright. Thus, the undisputed evidence presented by MGP satisfies the first
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`element of an infringement claim.
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`2. Actual Copying
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`
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`Actual copying may be established with circumstantial evidence that the defendant had
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`access to the copyrighted work and that there are probative similarities between the works. Id.
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`Access can be proven through circumstantial evidence that the defendant had a reasonable
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`opportunity to observe the plaintiff’s work. Hamil Am. Inc. v. GFI, 193 F.3d 92, 99 (2d Cir. 1999).
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`In general, “[t]here is an inverse relationship between access and probative similarity such that the
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`stronger the proof of similarity, the less the proof of access is required.” Jorgensen, 351 F.3d at 56
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`(internal citation and quotation marks omitted). Where “the works in question are ‘so strikingly
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`similar as to preclude the possibility of independent creation, copying may be proved without a
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`showing of access.’” Id. (quoting Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir. 1995)). It should be
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`noted that the “probative similarity” inquiry is different than the “substantial similarity” element of
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`the infringement claim. Castle Rock, 150 F.3d at 137. “‘Probative similarity’ is a less demanding test
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`than ‘substantial similarity,’ requiring only that there are similarities between the two works that
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`would not be expected to arise if the works had been independently created.” Odegard, Inc. v.
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`Costikyan Classic Carpets, Inc., 963 F. Supp. 1328, 1337 (S.D.N.Y. 1997).
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`
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`Here, the Valuewalk profiles on Jeffrey Gundlach explicitly reference the Barron’s article
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`that contained the Gundlach photo. 2012 Valuewalk Page; 2015 Valuewalk Page. The file names
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`for the Gundlach images stored on Valuewalk’s server are nearly identical to the file name stored on
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`Barron’s server. Compare ImageRights Sighting Results, with Barron’s Server (showing that the file
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`extensions stored on Valuewalk’s and Barron’s servers only differ by one character). Further, the
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`need to demonstrate access is not as strong because the probative similarity between the two images
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`is unmistakable in this case. Here, a picture is worth a thousand words— one need only peruse the
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`images to conclude that the two works are identical. Accordingly, MGP has satisfied the actual
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`copying element in its claim against Valuewalk.
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`However, Defendants have not met their burden for summary judgment regarding
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`Wolinsky’s liability for direct infringement because there does exist a genuine issue of material fact
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`as to what Wolinsky’s level of involvement was in the infringement. The record certainly indicates
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`that Wolinsky could have had access to the photograph: the draft text from Wolinsky for the
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`Gundlach page referenced the Barron’s