Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 1 of 8
`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 1 of 8
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`USDC SDNY
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`DOCUMENT
`ELECTRONICALLY FILED
`DOC #:
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`18 Civ. 8313 (AT)
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`ORDER
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`DATE FILED: 9/1/2020 Plaintiff,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`SAMMY MOURABIT,
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`—against—
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`STEVEN KLEIN, STEVEN KLEIN STUDIO,
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`LLC, STEVEN KLEIN STUDIO, INC.,
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`FRANCOIS NARS, SI-HSEIDO INC.,
`SHISEIDO INTERNATIONAL d/b/a
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`SHISEIDO AMERICAS CORPORATION,
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`Defendants.
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`ANALISA TORRES, United States District Judge:
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`Plaintiff, Sammy Mourabit, brought this action against Defendants, Francois Nars,
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`Shiseido America, Inc., Shiseido International (the “Shiseido Defendants”); Steven Klein, Steven
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`Klein Studio, Inc., and Steven Klein Studio, LLC (the “Klein Defendants”) alleging copyright
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`infringement under the Copyright Act of 1976, 17 U.S.C. § 101 et seq., and several state law
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`claims. Am. Compl., ECF No. 12. The Shiseido Defendants and the Klein Defendants moved to
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`dismiss the amended complaint under Rule 12(b)(6), ECF Nos. 46, 49, and for sanctions, ECF
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`Nos. 61, 64. On July 2, 2019, the Court entered an order granting Defendants’ motions to
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`dismiss and motions for sanctions against Plaintiff’s counsel under 28 U.S.C. § 1927 (the “July
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`Order”). July Order, ECF No. 84. On September 13, 2019, the Court granted a motion for
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`reconsideration filed by Plaintist counsel, and vacated the portion of the July Order awarding
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`sanctions. ECF No. 110.
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`Now before the Comt are motions for attorney’s fees under the Copyright Act, 17 U.S.C.
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`§ 505, brought by the Shisheido Defendants and the Klein Defendants. ECF Nos. 112, 118. For
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`the reasons that follow, Defendants’ motions are DENIED.
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`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 2 of 8
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`BACKGROUND
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`Plaintiff is a makeup artist. Am. Compl. ¶ 7. In 2013, he performed the “makeup
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`artistry” for an editorial to be featured in W Magazine. Id. ¶¶ 20–21. Defendant Steven Klein
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`was the photographer for the shoot. Id. ¶ 22. Klein and Defendant Francois Nars, a well-known
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`makeup artist, then launched a line of makeup (“the Collection”) and used the photographs taken
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`during the W Magazine photoshoot to promote the Collection. Id. ¶ 23. These photos depicted
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`Plaintiff’s makeup artistry, but did not give Plaintiff credit for his work. Id. ¶¶ 24, 27.
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`In his original complaint, and first amended complaint, Plaintiff alleged that he obtained
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`a copyright “in the makeup artistry” used on the model during the photoshoot. Id. ¶ 55; see
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`Original Compl. ¶ 52, ECF No. 1-1. Plaintiff received a copyright for a drawing depicting the
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`makeup used during the shoot (the “Drawing”). See Am. Compl. ¶ 55. (“[Plaintiff] has a
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`copyright in the makeup artistry depicted in . . . certificate of registration No. VA 2-105-396.”);
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`ECF No. 63-1 (copyrighted drawing); ECF No. 63-3 (copyright registration for VA 2-105-396).
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`Plaintiff initiated this case in state court on June 10, 2018, alleging copyright
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`infringement, and state law claims for unjust enrichment, unfair competition and
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`misappropriation, and deceptive business practices. Summons at 1, ECF No. 1-1; Original
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`Compl. ¶¶ 51–74. On July 11, 2018, counsel for the Klein Defendants advised Plaintiff’s
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`counsel that “[t]he nature of your client’s contributions to my client’s photographic visual works
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`are traditionally not protectable.” Pelosi Decl. Ex. B, ECF No. 66-2. The Shiseido Defendants
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`sent a similar message. Catchart Decl. ¶ 14, ECF No. 63. On September 12, 2018, the case was
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`removed to this Court. ECF No. 1. On September 18, 2018, Plaintiff filed an amended
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`complaint alleging copyright infringement, unjust enrichment, and unfair competition and
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`misappropriation. Am. Compl. ¶¶ 54–77. Prior to November 27, 2018, Defendant Klein’s
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`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 3 of 8
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`counsel had additional phone conversations with Plaintiff’s counsel in which Klein’s counsel
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`stated that Plaintiff had no copyright claim for numerous reasons. Pelosi Decl. ¶ 3, ECF No. 66.
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`On November 27, 2018, the parties submitted a joint letter in advance of the initial pretrial
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`conference in which Plaintiff continued to assert the validity of the copyright infringement claim
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`and Defendants argued that the claim was not viable. ECF No. 33.
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`On December 3, 2018, this Court held an initial pretrial conference at which Plaintiff’s
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`counsel stated that Plaintiff would not be amending his complaint. ECF No. 34. On December
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`6, 2018, the Klein Defendants filed a pre-motion letter seeking leave to file a motion to dismiss
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`and setting forth their bases for doing so. ECF No. 37.
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`On December 13, 2018, Plaintiff filed a responsive letter changing course. Pl. Pre-
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`Motion Letter, ECF No. 38. Plaintiff’s letter stated that “there is no copyright claim” because
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`“[m]ake up artistry is not copyrightable,” and that as a result “[Plaintiff’s] copyright claim
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`should be dismissed.” Id at 2–3. For the same reasons, however, Plaintiff argued that his state
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`law claims fell outside the scope of Copyright Act preemption, and should survive. Id. That
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`same day, this Court issued an order stating that “[i]n light of Plaintiff’s admission, should the
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`Klein Defendants file their anticipated motion to dismiss, the Court would likely dismiss the
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`federal copyright claim and deny supplemental jurisdiction over the state law claims.”
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`December 13 Order, ECF No. 39. The order further directed the parties “to file a stipulation of
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`dismissal without prejudice or a letter stating whether they would like to proceed with the motion
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`to dismiss.” Id.
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`On December 18, 2018, Plaintiff’s counsel emailed counsel for the Klein Defendants
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`stating that he was “prepared to file a Notice of Voluntary Dismissal.” ECF No. 74 at 9. On
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`December 20, 2018, the Klein Defendants filed a letter stating that they wished to proceed with
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`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 4 of 8
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`filing a motion to dismiss and did not “consent to filing a stipulation of dismissal” because they
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`intended to seek sanctions and attorneys’ fees against Plaintiff. ECF No. 41. That same day, the
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`Shiseido Defendants filed a letter similarly stating that they wished to proceed with the motion to
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`dismiss. ECF No. 42.
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`On July 2, 2019, the Court granted Defendants’ motions to dismiss, holding that Plaintiff
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`had abandoned his copyright infringement claim, that his state law unjust enrichment and unfair
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`competition claims were preempted by federal law, and that the Court lacked jurisdiction over
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`his claim of deceptive business practices under New York General Business Law § 349. July
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`Order at 3–10. The Second Circuit affirmed that order on June 8, 2020. Mourabit v. Klein, No.
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`19-2142-CV, 2020 WL 3042131 (2d Cir. June 8, 2020).
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`Legal Standard
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`DISCUSSION
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`Section 505 of the Copyright Act allows district courts to “award a reasonable attorney’s
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`I.
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`fee to the prevailing party” in a copyright action. 17 U.S.C. § 505. Courts possess “broad
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`leeway” to award fees under Section 505 when doing so will “advance[] the Copyright Act’s
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`goals.” Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985–86 (2016). “[S]everal
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`nonexclusive factors” inform this exercise of discretion, including “frivolousness, motivation,
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`objective unreasonableness, and the need in particular circumstances to advance considerations
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`of compensation and deterrence.” Id. at 1985 (internal quotation marks, citation, and alteration
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`omitted). “Although objective reasonableness [of the losing party’s position] carries significant
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`weight, courts must view all the circumstances of a case on their own terms.” Id. at 1989.
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`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 5 of 8
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`If a court determines that an award of fees is warranted, it must then assess the prevailing
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`party’s requested fees to ensure that they are reasonable. See Crescent Publ’g Grp., Inc. v.
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`Playboy Enters., Inc., 246 F.3d 142, 150 (2d Cir. 2001).
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`II.
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`Analysis
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`The Court concludes that an award of attorney’s fees would not promote the purposes of
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`the Copyright Act, or efficient litigation. To be sure, there are reasons to believe Plaintiff’s
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`assertion of a copyright infringement claim was not reasonable. First and foremost, Plaintiff
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`repeatedly admitted that the claim was meritless. See Pl. Pre-Motion Letter; Pl. MTD Opp. at 2,
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`3, 5–10, ECF No. 55. In his opposition to Defendants’ motion for attorney’s fees, Plaintiff again
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`admits that he does not have a valid copyright claim, and never did. Pl. Fees Opp. at 8, 16–17,
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`ECF No. 123. Plaintiff’s purported justification for bringing a meritless copyright cause of
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`action does not help his case. Plaintiff claims that he sought copyright registration for the
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`Drawing with the intent of being rejected, in an effort to build a record that would counter an
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`anticipated preemption defense. Id. at 5–6, 16–17. When the registration was unexpectedly
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`approved, he claims, he was forced to make the “strategic choice” to include an infringement
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`claim in this action, despite believing that such a claim was not viable. Id. at 5. The logic
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`appears to be that because Defendants would likely have removed this action to federal court to
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`assert a preemption defense regardless of whether Plaintiff brought a federal claim, there was
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`little harm in throwing in a copyright infringement cause of action, even if such a claim was
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`likely to fail. See id. at 16. The suggestion that Plaintiff did not litigate the copyright claim
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`“vigorously”—because it was asserted in “4 factually scant paragraphs,” in the complaint, and
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`Plaintiff’s counsel did little to press the claim—is likewise unhelpful to Plaintiff. Id. at 6–7, 16.
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`What Plaintiff’s brief describes is bad lawyering, not a reasonable litigation tactic.
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`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 6 of 8
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`Nonetheless, the Court must consider whether an award of attorney’s fees would advance
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`the Copyright Act’s purposes in the context of the litigation as a whole. The Supreme Court has
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`explained that copyright fee awards should “encourage[] parties with strong legal positions to
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`stand on their rights and deter[] those with weak ones from proceeding with litigation.”
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`Kirtsaeng, 136 S. Ct. at 1986. Thus, fee awards to a prevailing defendant can serve the
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`Copyright Act’s goals by making sure “a person defending against a patently meritless copyright
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`claim has every incentive to keep fighting, no matter that attorney’s fees in a protracted suit
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`might be as or more costly than a settlement,” and that “the copyright holder with no reasonable
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`infringement claim has good reason not to bring suit in the first instance (knowing he cannot
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`force a settlement and will have to proceed to judgment).” Id. at 1986–87.
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`Here, Plaintiff conceded that his copyright infringement claim was meritless, and sought
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`to withdraw it, even before a motion to dismiss was filed, and without any settlement offer from
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`Defendants. The Copyright Act’s aims are not advanced by penalizing Plaintiff when he
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`admitted the copyright claim’s failings early in the litigation. Doing so would reverse the
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`paradigm described by the Supreme Court. A plaintiff who realizes that his position is hopeless
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`once confronted with the other side’s arguments against it would have little incentive to admit
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`the error. And a defendant whose adversary has conceded would nonetheless have a financial
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`interest in rejecting the concession, and forcing a judicial determination of the claim’s validity.
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`Courts would be required, at best, to waste time and resources resolving claims on which there is
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`no dispute between the parties, and at worst to wade through doomed arguments thrown up by
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`desperate plaintiffs. Pointlessly prolonging litigation does not serve the Copyright Act’s
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`purposes.
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`Moreover, in this case, the Court has not passed on the merits of Plaintiff’s copyright
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`infringement cause of action. Instead, the Court relied on Plaintiff’s concession and dismissed
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`his copyright claim as abandoned. See July Order at 3. The Supreme Court’s expectation that a
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`“district court that has ruled on the merits of a copyright case can easily assess whether the
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`losing party advanced an unreasonable claim or defense” in determining whether to award
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`attorney’s fees, therefore, does not apply. Kirtsaeng, 136 S. Ct. at 1987. Indeed, because the
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`parties rely on significant evidentiary submissions to establish the reasonableness or
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`unreasonableness of Plaintiff’s claim, awarding attorney’s fees would require the Court to
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`engage in more searching review than it would have had the motion to dismiss been contested.
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`See ECF Nos. 114, 124, 129, 133. Such an inquiry is not consistent with the principles that “a
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`request for attorney’s fees should not result in a second major litigation,” and that courts should
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`avoid “an interpretation of the fee-shifting statutes that would [spawn] a second litigation of
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`significant dimension.” Buckhannon Bd. & Care Home, Inc. v. W. Virginia Dep't of Health &
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`Human Res., 532 U.S. 598, 609 (2001) (internal quotation marks, citations, and alterations
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`omitted).
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`Of course, in some cases an award of attorney’s fees may be necessary even when a
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`plaintiff does voluntarily dismiss copyright claims early in the litigation—for instance, in a
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`meritless suit brought by a “copyright troll play[ing] a numbers game in which it targets
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`hundreds or thousands of defendants seeking quick settlements priced just low enough that it is
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`less expensive for the defendant to pay the troll rather than defend the claim.” McDermott v.
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`Monday Monday, LLC, No. 17 Civ. 9230, 2018 WL 5312903, at *2 (S.D.N.Y. Oct. 26, 2018). In
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`this matter, however, there is no evidence that Plaintiff or his counsel has a regular practice of,
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`for example, taking unreasonable positions and then abandoning them at the first sign of trouble.
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`Case 1:18-cv-08313-AT Document 138 Filed 09/01/20 Page 8 of 8
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`CONCLUSION
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`Accordingly, Defendants’ motions for attorney’s fees are DENIED. The Clerk of Court
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`is directed to terminate the docket entries at ECF Nos. 112, 113, 114, 115, 116, 117, and 118.
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`SO ORDERED.
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`Dated: September 1, 2020
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`New York, New York
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