Case 1:18-cv-10853-AJN Document 25 Filed 05/28/20 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`Matthew McDermott,
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`Plaintiff,
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`–v–
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`NYFirestore.com, Inc.,
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`Defendant.
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`ALISON J. NATHAN, District Judge:
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`5/28/2020
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`18-cv-10853 (AJN)
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`OPINION & ORDER
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`On May 1, 2019, Plaintiff Matthew McDermott filed a motion for default judgment. See
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`Dkt. No. 17. For the reasons that follow, the Court GRANTS in part and DENIES in part
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`Plaintiff’s motion.
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`I.
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`BACKGROUND
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`On November 19, 2018, Plaintiff filed a Complaint against Defendant, alleging copyright
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`infringement and the removal of copyright management information by Defendant. See Compl.
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`(Dkt. No. 1) ¶¶ 7-28. According to the Complaint, Defendant—a domestic corporation that
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`produces merchandise, including sweatshirts, tee shirts, and throw blankets—displayed on its
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`merchandise unauthorized reproductions of a copyrighted photograph of a New York City
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`firefighter kneeling during September 11th recovery operations in Lower Manhattan. Id. ¶¶ 1, 6,
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`10–16. The Complaint alleges that this photograph is owned and registered by Plaintiff, a
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`professional photographer, and that Defendant had neither a license, nor Plaintiff’s permission or
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`consent, to publish the photograph on its merchandise. Id. ¶¶ 1, 5, 7–9, 16.
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`Defendant was served with the Complaint on December 7, 2018. Dkt. No. 10.
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`Defendant did not appear or respond to it, and on April 30, 2019, Plaintiff requested the entry of
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`a default against Defendant. Dkt. Nos. 14, 15. A certificate of default was entered by the Clerk
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`of Court on May 1, 2019. Dkt. No. 16. That same day, Plaintiff moved for default judgment
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`against Defendant. Dkt. No. 17. Plaintiff served the motion for default judgment on Defendant
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`and filed proof of that service on the public docket. Dkt. Nos. 22, 23.
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`II.
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`DISCUSSION
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`Federal Rule of Civil Procedure 55 sets out a two-step procedure to be followed for the
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`entry of judgment against a party who fails to defend: the entry of a default, and the entry of a
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`default judgment. New York v. Green, 420 F.3d 99, 104 (2d Cir. 2005). The first step, entry of a
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`default, simply “formalizes a judicial recognition that a defendant has, through its failure to
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`defend the action, admitted liability to the plaintiff.” City of New York v. Mickalis Pawn Shop,
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`LLC, 645 F.3d 114, 128 (2d Cir. 2011); see Fed. R. Civ. P. 55(a) (“When a party against whom a
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`judgment for affirmative relief is sought has failed to plead or otherwise defend, and that failure
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`is shown by affidavit or otherwise, the clerk must enter the party’s default.”).
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`“The second step, entry of a default judgment, converts the defendant’s admission of
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`liability into a final judgment that terminates the litigation and awards the plaintiff any relief to
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`which the court decides it is entitled, to the extent permitted by Rule 54(c).” Mickalis Pawn
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`Shop, 645 F.3d at 128. Rule 54(c) states, “[a] default judgment must not differ in kind from, or
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`exceed in amount, what is demanded in the pleadings.” Fed. R. Civ. P. 54(c).
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`A. Liability
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`On a default judgment motion, the defendant is deemed to have admitted all of the well-
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`pleaded factual allegations contained in the complaint. Fed. R. Civ. P. 8(b)(6); S.E.C. v.
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`Razmilovic, 738 F.3d 14, 19 (2d Cir. 2013). However, “because a party in default does not admit
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`conclusions of law,” it is incumbent upon the Court to consider whether the plaintiff has pleaded
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`facts sufficient to establish the defendant’s liability with respect to each cause of action. See
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`Zhen Ming Chen v. Y Café Ave B Inc., 2019 WL 2324567, at *1 (S.D.N.Y. May 30, 2019).
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`1. Copyright Act Claim
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`To establish a violation of the Copyright Act, 17 U.S.C. § 501, a plaintiff must
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`demonstrate his ownership of a valid copyright and defendant’s infringement—that is, copying
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`of original elements of the copyrighted work. See Arista Records LLC v. Doe 3, 604 F.3d 110,
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`117 (2d Cir. 2010); Malibu Media, LLC v. Doe, No. 15-cv-2624 (ER), 2015 WL 6116620, at *3
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`(S.D.N.Y. Oct. 16, 2015). Both requirements are satisfied here. Plaintiff‘s Complaint
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`demonstrates that he owns a valid copyright in the photograph. See Compl. ¶¶ 8–9. Plaintiff has
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`also provided the Court with the photograph’s copyright Certificate of Registration. Dkt. No. 1-
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`2. And the Complaint alleges that Defendant infringed on Plaintiff’s copyright by reproducing
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`and displaying unauthorized copies of the photograph on its merchandise. Compl. ¶¶ 10–16.
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`Accordingly, the Court finds that Plaintiff has established a prima facie case for recovery with
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`respect to his Copyright Act Claim.
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`2. Digital Millennium Copyright Act Claim
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`The Digital Millennium Copyright Act, 17 U.S.C. § 1202, prohibits doing any of the
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`following “without the authority of the copyright owner or the law” and with knowledge or
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`reasonable grounds to know that it will “induce, enable, facilitate, or conceal” infringement:
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`(1) intentionally remov[ing] or alter[ing] any copyright management information,
`(2) distribut[ing] or import[ing] for distribution copyright management information
`knowing that the copyright management information has been removed or altered without
`authority of the copyright owner or the law, or
`(3) distribut[ing] . . . works, copies of works, or phonorecords, knowing that copyright
`management information has been removed or altered without authority of the copyright
`owner or the law . . . .
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`17 U.S.C. § 1202(b).
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`“[T]o state a valid claim under subsection 1202(b), a plaintiff must allege 1) the existence
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`of CMI [copyright management information] on the products at issue; 2) removal and/or
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`alteration of that information; and 3) that the removal and/or alteration was done intentionally.”
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`Aaberg v. Francesca’s Collections, Inc., No. 17-cv-115 (AJN), 2018 WL 1583037, at *6
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`(S.D.N.Y. Mar. 27, 2018). As relevant here, the statutory definition of CMI includes: 1) “[t]he
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`name of, and other identifying information about, the author of a work,” 17 U.S.C. § 1202(c)(2);
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`2) “[t]he name of, and other identifying information about, the copyright owner of the work,
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`including the information set forth in a notice of copyright,” id. § 1202(c)(3); and 3)
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`“[i]dentifying numbers or symbols referring to such information or links to such information,”
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`id. § 1202(c)(7).
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`Plaintiff’s Complaint fails to allege facts establishing any of the elements of a Digital
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`Millennium Copyright Act violation. Indeed, most basically, it fails to allege the existence of
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`copyright management information on the photograph at issue. Accordingly, Plaintiff has failed
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`to establish a prima facie case for recovery with respect to his Digital Millennium Copyright Act
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`claim.
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`B. Damages
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`“Once liability is established, the sole remaining issue before the court is whether the
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`plaintiff has provided adequate support for the relief it seeks.” Bleecker v. Zetian Sys., Inc., No.
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`12-cv-2151 (DLC), 2013 WL 5951162, at *6 (S.D.N.Y. Nov. 1, 2013) (citing Transatlantic
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`Marine Claims Agency, Inc. v. Ace Shipping Corp., Div. of Ace Young Inc., 109 F.3d 105, 111
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`(2d Cir. 1997)). “Even when a default judgment is warranted based on a party’s failure to
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`defend, the allegations in the complaint with respect to the amount of the damages are not
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`deemed true. The district court must instead conduct an inquiry in order to ascertain the amount
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`of damages with reasonable certainty.” Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d
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`151, 155 (2d Cir. 1999) (internal citations omitted). “Establishing the appropriate amount of
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`damages involves two steps: (1) ‘determining the proper rule for calculating damages on . . . a
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`claim’; and (2) ‘assessing plaintiff’s evidence supporting the damages to be determined under
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`this rule.’” Begum v. Ariba Disc., Inc., No. 12-cv-6620 (DLC), 2015 WL 223780, at *4
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`(S.D.N.Y. Jan. 16, 2015) (alteration in original) (quoting Credit Lyonnais, 183 F.3d at 155).
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`To determine the amount of damages, the Court may conduct a hearing, but doing so is
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`not necessary “as long as [the Court] ensure[s] that there was a basis for the damages specified in
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`the default judgment.” Transatlantic Marine, 109 F.3d at 111 (internal quotation marks
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`omitted); see also Action S.A. v. Marc Rich & Co., 951 F.2d 504, 508 (2d Cir. 1991) (stating that
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`a district judge may, but is not required to, conduct a hearing on the matter of damages).
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`1. Copyright Act Claim
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`Under the Copyright Act, “an infringer of copyright is liable for either (1) the copyright
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`owner’s actual damages and any additional profits of the infringer, as provided by subsection (b)
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`or (2) statutory damages, as provided by subsection (c).” 17 U.S.C. § 504(a). Plaintiff has
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`elected to recover actual damages and profits of the infringer in lieu of statutory damages. In his
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`motion papers, Plaintiff seeks $20,000 in actual damages and profits. See Dkt. No. 18 ¶¶ 11, 17.
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`“The Copyright Act grants courts discretion in calculating the actual damages sustained
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`by a prevailing party, as long as the claim is reasonable according to typical market values.”
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`Romanowicz v. Alister & Paine, Inc., No. 17-cv-8937 (PAE) (KHP), 2018 WL 4762980, at *4
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`(S.D.N.Y. Aug. 3, 2018), report and recommendation adopted, No. 17-cv-8937 (PAE) (KHP),
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`2018 WL 4759768 (S.D.N.Y. Oct. 1, 2018). Thus, in “calculating the actual damages portion of
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`§ 504(b) damages, the lost license fee to the copyright holder is a reasonable enough place to
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`start.” Terry v. Masterpiece Advert. Design, No. 17-cv-8240 (NRB), 2018 WL 3104091, at *3
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`(S.D.N.Y. June 21, 2018) (quoting Davis v. Gap, Inc., 246 F.3d 152, 166 (2d Cir. 2001)). “A
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`plaintiff seeking actual damages based on a lost licensing fee must show ‘that the thing taken had
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`a fair market value,’ not merely what the copyright owner ‘would have charged.’” Romanowicz
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`2018 WL 4762980, at *4 (quoting Davis, 246 F.3d at 166). Indeed, the Second Circuit has made
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`clear that an award of actual damages “may not be based on undue speculation.” Davis, 246
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`F.3d at 166 (internal quotation marks omitted).
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`With respect to actual damages, Plaintiff’s counsel Richard Liebowitz avers that
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`“Plaintiff estimates he would have been entitled to charge up to $5000 for use of the Photograph
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`in the manner used by Defendant, which was to sell and distribute tangible merchandise.” Dkt.
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`No. 18 ¶ 14. However, Plaintiff’s motion papers do not provide any documentary evidence
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`whatsoever—“such as invoices for Plaintiff’s past licensing fees for his photographs or the
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`Photograph itself,” Pasatieri v. Starline Prods., Inc., No. 18-cv-4688 (PKC) (VMS), 2020 WL
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`207352, at *4 (E.D.N.Y. Jan. 14, 2020)—that would support his estimate of $5,000 as the lost
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`licensing fee for this photo, cf. Jerstad v. New York Vintners LLC, No. 18-cv-10470 (JGK)
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`(OTW), 2019 WL 6769431, at *3 (S.D.N.Y. Dec. 12, 2019), report and recommendation
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`adopted, No. 18-cv-10470 (JGK), 2020 WL 58237 (S.D.N.Y. Jan. 6, 2020) (“Plaintiff’s
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`declaration on the reasonable license fee merely renders a legal conclusion as opposed to
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`providing any evidence of the photograph’s value.”). As a result, the Court is “unable to
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`ascertain . . . the market value” of the photograph and cannot award actual damages on the basis
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`of Plaintiff’s undue speculation alone. See Renna v. Queens Ledger/Greenpoint Star Inc., No.
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`17-cv-3378 (DRH) (SIL), 2019 WL 1061259, at *4 (E.D.N.Y. Feb. 13, 2019), report and
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`recommendation adopted, No. 17-cv-3378 (DRH) (SIL), 2019 WL 1062490 (E.D.N.Y. Mar. 6,
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`2019). Accordingly, the Court denies without prejudice Plaintiff’s request for actual damages
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`with leave to renew his request supported by evidence “setting forth some reasonable basis for
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`his computation.” Id. (alteration and internal quotation marks omitted) (recommending denial
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`without prejudice of plaintiff’s request for actual damages for copyright infringement because
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`plaintiff failed to submit any affidavits or other documentary evidence in support of it); see also
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`Pasatieri, 2020 WL 207352, at *5 (denying without prejudice unsupported request for actual
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`damages for copyright infringement with leave to renew with supporting evidence).
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`With respect to infringer’s profits, the Court assumes—though Plaintiff does not
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`explicitly state—that the additional $15,000 Plaintiff seeks in damages on this claim are for
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`Defendant’s profits from use of the photograph. See Dkt. No. 18 ¶¶ 11, 14–17. As with his
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`request for actual damages, Plaintiff’s request for profits is completely and utterly unsupported.
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`Indeed, Plaintiff again fails to “provide any information from which the Court could reliably
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`ascertain” Defendant’s profits, Romanowicz, 2018 WL 4762980, at *5, and the Court cannot
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`award damages for infringer’s profits on the basis of undue speculation alone, see Terry, 2018
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`WL 3104091, at *4 (“While courts must necessarily engage in some degree of speculation in
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`assessing copyright damages, a § 504(b) damages award must rely on some factual basis rather
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`than undue speculation.” (internal quotation marks and citations omitted)). Accordingly, the
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`Court also denies without prejudice Plaintiff’s request for infringer’s profits with leave to renew
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`his request supported by evidence. See Pasatieri, 2020 WL 207352, at *5 (denying without
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`prejudice plaintiff’s request for infringer’s profits because he offered no basis on which to award
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`defendant’s profits from its use of the photograph at issue); see also Romanowicz, 2018 WL
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`4762980, at *5 (denying request for infringer’s profits because plaintiff failed to provide any
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`information from which the Court could reliably ascertain such profits).
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`C. Attorney’s Fees and Costs
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`The Copyright Act expressly provides that a court “may” award reasonable attorney’s
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`fees and allow the recovery of full costs. See 17 U.S.C. § 505. Here, Plaintiff seeks attorney’s
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`fees of $4,037.50, Dkt. No. 18 ¶ 20, and costs of $630 for court filing and service fees, id. ¶¶ 20,
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`22. Because the Court denies Plaintiff’s request for damages, it declines to reach Plaintiff’s
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`request for fees and costs at this juncture. If Plaintiff subsequently submits sufficient evidence
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`for an award of damages, the Court will take up his request for fees and costs at that time. See
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`Pasatieri, 2020 WL 207352, at *6.
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`III.
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`CONCLUSION
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`Accordingly, with respect to Plaintiff’s Copyright Act claim, his motion for default
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`judgment is GRANTED as to liability and DENIED without prejudice as to damages, fees, and
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`costs. With respect to his Digital Millennium Copyright Act claim, Plaintiff’s motion for default
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`judgment is DENIED. Within thirty days of the date of this Opinion and Order, Plaintiff must
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`file any motion for damages, fees, and costs.
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`This resolves Docket Number 17.
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`SO ORDERED.
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`Dated: May 28, 2020
`New York, New York
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`____________________________________
`ALISON J. NATHAN
`United States District Judge
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