Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 1 of 8
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`19-cv-4958 (VSB)
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`OPINION & ORDER
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`Plaintiff,
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`Defendant.
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`TOWNSQUARE MEDIA, INC.,
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`REBECCA FAY WALSH,
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`Appearances:
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`James H. Freeman
`Liebowitz Law Firm, PLLC
`Valley Stream, New York
`Counsel for Plaintiff
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`Rachel Fan Stern Strom
`Davis Wright Tremaine LLP
`New York, New York
`Counsel for Defendant
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`James E. Doherety
`James Doherty, Law Office
`New York, New York
`Counsel for Defendant
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`VERNON S. BRODERICK, United States District Judge:
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`On June 1, 2020, I issued an Opinion and Order in which I granted Defendant’s Rule
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`12(c) motion and dismissed this action, because I found that Plaintiff’s copyright infringement
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`claims were barred by the fair use doctrine. Walsh v. Townsquare Media, Inc., 464 F. Supp. 3d
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`570 (S.D.N.Y. 2020) (the “Opinion”). Now before me are Plaintiff’s motion for reconsideration
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`of the Opinion, as well as Defendant’s motion for attorneys’ fees. For the reasons that follow,
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`Plaintiff’s motion for reconsideration is DENIED, and Defendant’s motion for attorneys’ fees
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`will be held in abeyance until I receive further information as specified herein.
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`9/30/2021
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 2 of 8
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`Background
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`In this Opinion & Order, I presume familiarity with the Opinion and with this action’s
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`procedural history, so I will only give a brief overview here. In short, Defendant published an
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`article (the “Article”) on its website about how the musician Cardi B had partnered with celebrity
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`fashion designer Tom Ford on a new lipstick. 464 F. Supp. 3d at 575–77. The Article embedded
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`a post from Cardi B’s official Instagram (the “Post”) about how the lipstick “ha[d] already
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`SOLD OUT!!!” Id. at 578. The Article also discussed the Post. Id. at 576. The Post displays
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`text, a photograph of the lipstick, and, relevantly, a photograph of Cardi B herself. Id. The
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`photograph or Cardi B (“Photograph”) was taken by the Plaintiff and formed the basis for the
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`claims in this action.
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`In the Opinion, I found that Defendant was shielded from liability by copyright law’s fair
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`use doctrine. On the first fair use factor, I found that the usage was transformative, because
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`rather than merely “depict[ing] Cardi B at Tom Ford’s fashion show,” which was Plaintiff’s
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`stated purpose for taking the Photograph, 464 F. Supp. 3d at 581, Defendant’s Article
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`“incidentally contained the photograph” to illustrate that “Cardi B had disseminated” the
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`embedded Instagram Post about the new lipstick—which was “the very thing [Defendant’s]
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`Article was reporting on,” id. at 581–82. I also made findings with respect to the other fair use
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`factors. For example, on the factor of “the effect of the use on the market for or the value of the
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`original work,” I found this weighed in favor of finding fair use “because the Photograph did not
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`appear on its own, but as part of [Cardi B’s Instagram] Post, alongside text and another image,”
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`which rendered it “implausible that Defendant’s use would compete with Plaintiff’s business or
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`affect the market value of her work.” Id. at 586. After weighing the factors together, I
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`concluded that the fair use analysis favored Defendant. Id.
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 3 of 8
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`Legal Standard
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`“Motions for reconsideration are governed principally by Federal Rule of Civil Procedure
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`59(e) and Local Civil Rule 6.3, which are meant to ‘ensure the finality of decisions and to
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`prevent the practice of a losing party examining a decision and then plugging the gaps of a lost
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`motion with additional matters.’” In re Gen. Motors LLC Ignition Switch Litig., 14-MD-2543
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`(JMF), 2021 WL 1700318, at *1 (S.D.N.Y. Apr. 29, 2021) (quoting Medisim Ltd. v. BestMed
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`LLC, No. 10-CV-2463 (SAS), 2012 WL 1450420, at *1 (S.D.N.Y. Apr. 23, 2012)).
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`“Generally, a party seeking reconsideration must show either ‘an intervening change of
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`controlling law, the availability of new evidence, or the need to correct a clear error or prevent
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`manifest injustice.’” Phx. Light SF Ltd. v. U.S. Bank Nat’l Ass’n, 14-CV-10116 (VSB), 2020
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`WL 4699043, at *1 (S.D.N.Y. Aug. 12, 2020) (quoting In re Beacon Assocs. Litig., 818 F. Supp.
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`2d 697, 701–02 (S.D.N.Y. 2011)). A motion for reconsideration “is not a vehicle for relitigating
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`old issues, presenting the case under new theories, securing a rehearing on the merits, or
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`otherwise taking a ‘second bite at the apple’. . . .” Analytical Surveys, Inc. v. Tonga Partners,
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`L.P., 684 F.3d 36, 52 (2d Cir. 2012) (quoting Sequa Corp. v. GBJ Corp., 156 F.3d 136, 144 (2d
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`Cir. 1998)); Polsby v. St. Martin’s Press, Inc., No. 97 Civ. 690(MBM), 2000 WL 98057, at *1
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`(S.D.N.Y. Jan. 18, 2000) (“[A] party may not advance new facts, issues or arguments not
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`previously presented to the Court.”) (internal quotation marks omitted). “Rather, ‘the standard
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`for granting [the motion] is strict, and reconsideration will generally be denied unless the moving
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`party can point to controlling decisions or data that the court overlooked.’” Analytical Surveys,
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`684 F.3d at 52 (quoting Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995)). Where
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`the motion “merely offers substantially the same arguments . . . offered on the original motion or
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`attempts to advance new facts, the motion for reconsideration must be denied.” Silverman v.
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 4 of 8
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`Miranda, 06 Civ. 13222 (ER), 2017 WL 1434411, at *1 (S.D.N.Y. Apr. 10, 2017) (internal
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`quotation marks omitted). The decision of whether to grant or deny a motion for reconsideration
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`is “within ‘the sound discretion of the district court.’” Premium Sports Inc. v. Connell, No. 10
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`Civ. 3753(KBF), 2012 WL 2878085, at *1 (S.D.N.Y. July 11, 2012) (quoting Aczel v. Labonia,
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`584 F.3d 52, 61 (2d Cir. 2009)).
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` Discussion
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`A. Reconsideration
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`Plaintiff argues that I misapplied the law on fair use. First, she says that Defendant’s use
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`of the photograph could not be transformative, because the Article “offered no commentary
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`whatsoever directed at the Photograph itself, nor was there any news reporting about the
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`photograph at all.” (MTR Br. 3.)1 However, Plaintiff never advanced this argument about the
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`transformative use factor in her briefing in opposition to Defendant’s motion for judgment on the
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`pleadings, nor does Plaintiff point to controlling law or overlooked facts that support it. Because
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`of this, her argument is improper on a motion for reconsideration. See Behrens v. JPMorgan
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`Chase Bank N.A., 16-CV-5508 (VSB), 2021 WL 4134887, at *1 (S.D.N.Y. Sept. 9, 2021) (“A
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`motion for reconsideration ‘is not a vehicle for relitigating old issues, presenting the case under
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`new theories, securing a rehearing on the merits, or otherwise taking a second bite at the apple’”)
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`(quoting Analytical Surveys, 684 F.3d 36, 52 (2d Cir. 2012)).
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`Moreover, Plaintiff has failed to make a persuasive argument about why her position on
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`transformative use is correct. According to Plaintiff, fair use should require Defendants to have
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`offered “commentary” specifically “directed at the Photograph itself,” (MTR Br. 3), even
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`though, as I found, the Article was reporting on Cardi B’s Instagram Post, which in turn
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`1 “MTR Br.” refers to the Memorandum of Law in Support of Plaintiff’s Motion for Reconsideration. (Doc. 25.)
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 5 of 8
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`contained the Photograph. See Opinion, 464 F. Supp. 3d at 583–84 (“the Post ‘was the story.’”)
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`(citation omitted). Taken to its core, and despite clear law about how the “use of a copyrighted
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`work for news reporting purposes is likely to constitute fair use,” id. at 580 (citing Swatch Grp.
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`Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 85 (2d Cir. 2014)), Plaintiff’s argument is that
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`fair use should not be found where a defendant uses a work that happens to contain a copyrighted
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`part unless the defendant also comments on said part. Plaintiff does not cite case law that
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`supports this argument, and the argument simply does not make sense given the existing law.
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`For example, the Second Circuit cited with approval a case that held it was fair use when a “TV
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`newscast of [a] street festival” incidentally happened to “include[] [a] copyrighted song.”
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`Ringgold v. Black Ent. Television, Inc., 126 F.3d 70, 79 (2d Cir. 1997) (citing Italian Book Corp.
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`v. American Broadcasting Cos., 458 F. Supp. 65 (S.D.N.Y.1978)).
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`Second, on the fair use doctrine’s “fourth factor” about the potential market impacts
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`resulting from Defendant’s use of the Photograph, Plaintiff argues that the Article’s usage of the
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`Photograph could be deemed to take place in the same market for a “photograph depicting Cardi
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`B.” (MTR Br. 8.) This argument also must fail. First, Plaintiff never previously “brought [it] to
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`my attention,” which renders it inappropriate on a motion for reconsideration. Behrens, 2021
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`WL 4134887, at *3. Second, Plaintiff’s argument does not actually address my holding—or the
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`controlling case law I cited—that “because the Photograph did not appear on its own, but as part
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`of [Cardi B’s Instagram] Post, . . . it is implausible that Defendant’s use would compete with
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`Plaintiff’s business or affect the market or value for her work.” Opinion, 464 F. Supp. 3d at 586
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`(citing, among other cases, Authors Guild v. Google, Inc., 804 F.3d 202, 223 (2d Cir. 2015)).
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`Plaintiff thus presents me with no reason to think that I erred in my holding, much less that the
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`Opinion contains a “clear error” or must be modified “to prevent manifest injustice.” Beacon
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 6 of 8
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`Assocs., 818 F. Supp. 2d at 701–02.
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`B. Attorneys’ Fees
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`Section 505 of the Copyright Act allows district courts to “award a reasonable attorney’s
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`fee to the prevailing party.” 17 U.S.C. § 505. Section 505 “grants courts wide latitude to award
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`attorney’s fees based on the totality of circumstances.” Kirtsaeng v. John Wiley & Sons, Inc.,
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`136 S. Ct. 1979, 1985 (2016). Indeed, because of the Copyright Act’s statutory grant of
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`authority, “in any given [copyright] case a court may award fees even though the losing party
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`offered reasonable arguments (or, conversely, deny fees even though the losing party made
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`unreasonable ones).” Hughes v. Benjamin, No. 17-cv-6493 (RJS), 2020 WL 4500181, at *3
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`(S.D.N.Y. Aug. 5, 2020) (Sullivan, J.) (quoting Kirtsaeng, 136 S. Ct. at 1988). My inquiry in
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`determining whether to award fees must account for “the totality of the circumstances” and
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`should consider “factors” that include “frivolousness, motivation, objective unreasonableness,
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`and the need in particular circumstances to advance considerations of compensation and
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`deterrence.” See Kirtsaeng, 136 S. Ct. at 1985–86 (citation omitted); Hello I Am Elliot, Inc. v.
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`Sine, 19 Civ. 6905 (PAE), 2021 WL 1191971, at *4 (S.D.N.Y. Mar. 30, 2021) (“Several
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`nonexclusive factors inform a court’s fee-shifting decisions: frivolousness, motivation, objective
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`unreasonableness, and the need in particular circumstances to advance considerations of
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`compensation and deterrence.”) (internal quotation marks omitted). “[S]uch factors may be used
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`only ‘so long as they are faithful to the purposes of the Copyright Act.’” Matthew Bender & Co.
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`v. West Publ’g Co., 240 F.3d 116, 121 (2d Cir. 2001) (quoting Fogerty v. Fantasy, Inc., 510 U.S.
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`517, 534 n.19 (1994)).
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`Defendant makes a variety of arguments in support of its motion for fees, but I find that
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`my assessment of them is best undertaken at a later date. In particular, Defendant argues that I
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 7 of 8
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`should consider Plaintiff’s “improper motivation for pursuing” this suit, which it argues is
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`illustrated by the course of communications between the parties’ counsel. (Fee Br. 9.)2
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`Specifically, Defendant states that it made “reasonable settlement offers” in an attempt to avoid
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`litigation, but that “Plaintiff’s counsel never once provided any rebuttal to Defendant’s fair use
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`argument and, instead, simply rested on inflated settlement demands.” (Id.) In a supporting
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`declaration, Defendant says it is willing to submit the materials substantiating the course of
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`attempted negotiations “under seal or in camera.” (Strom Decl. ¶ 4.)3 All Plaintiff says on this
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`point is that whether its “settlement demands were unreasonable is quite subjective and should
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`not be credited.”
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`I agree that the course of negotiations may properly bear on my decision. Among other
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`things, a major discrepancy between damages demanded and a claim’s reasonable expected
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`value can speak to “the unreasonable nature of [copyright] claims.” Baker v. Urb. Outfitters,
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`Inc., 431 F. Supp. 2d 351, 358–59 (S.D.N.Y. 2006) (finding unreasonableness where plaintiff
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`“maintained [a] demand for more than $260,000 in ‘actual damages’ on a claim that was shown
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`fairly promptly not to be worth more than $3896.”), aff’d, 249 F. App’x 845 (2d Cir. 2007).
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`Here, the basis for Plaintiff’s claim was Defendant’s use of the Photograph without paying a
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`license fee through the Getty Images stock photography website. Opinion, 464 F. Supp. 3d at
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`575. One can license very similar photographs of Cardi B from Getty Images with “[s]tandard
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`2 “Fee Br.” refers to the Memorandum of Law in Support of the Motion for an Award of Attorneys’ Fees. (Doc. 29.)
`I note that, at this time, Defendant is only asking me to decide whether Plaintiff is liable “for Defendant’s attorneys’
`fees,” and Defendant has stated it will provide evidence as to the amount of fees if it receives a favorable
`determination. (Fee Br. 2 n.1.) This bifurcation of liability for fees and the amount of fees in the course of a § 505
`fee determination is proper under Federal Rule of Civil Procedure 54(d)(2)(C). Hudson v. Universal Studios, Inc.,
`No. 04 Civ. 6997(GEL), 2009 WL 536564, at *1 n.1 (S.D.N.Y. Mar. 4, 2009).
`3 “Strom Decl.” refers to the Declaration of Rachel F. Strom in Support of Defendant’s Motion for Fees and Costs.
`(Doc. 31.)
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`Case 1:19-cv-04958-VSB Document 43 Filed 09/30/21 Page 8 of 8
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`editorial rights” from Getty Images for anywhere from $175 to $499, depending on how large of
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`an image one intends to display. See Cardi B is seen attending the Tom Ford fashion . . .,
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`gettyimages, https://www.gettyimages.com/detail/news-photo/cardi-b-is-seen-attending-the-tom-
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`ford-fashion-during-new-news-photo/1027432574 (last visited Sept. 30, 2021).4 The course of
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`negotiations that preceded Plaintiff’s filing suit may thus inform whether I should award fees in
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`this case.
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`Accordingly, I will hold Defendant’s motion in abeyance until Defendant files materials
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`showing the course of negotiations with me under seal. In doing so, Defendant is directed to
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`follow my Individual Rule 5.B on Redactions and Filing Under Seal, which, among other things,
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`requires it to file an appropriate letter motion in support.
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` Conclusion
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`For the foregoing reasons, Plaintiff’s motion for reconsideration is DENIED, and
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`Defendant’s motion for attorneys’ fees is held in abeyance. The Clerk of Court is respectfully
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`directed to terminate the open motion at docket number 24 and to hold the open motion at docket
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`number 29 in abeyance. Defendant is directed to file the materials requested above within 30
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`days of entry of this Opinion & Order.
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`SO ORDERED.
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`Dated: September 30, 2021
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` New York, New York
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`______________________
`Vernon S. Broderick
`United States District Judge
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`4 I was unable to locate the Photograph itself on Getty Images.
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