Case 1:19-cv-11717-LJL Document 30 Filed 09/29/21 Page 1 of 5
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`CARLOS MUNOZ YAGUE,
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`VISIONAIRE PUBLISHING LLC,
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`LEWIS J. LIMAN, United States District Judge:
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`Plaintiff,
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`Defendant.
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`09/29/2021
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`19-cv-11717 (LJL)
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`MEMORANDUM AND
`ORDER
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`Plaintiff Carlos Munoz Yague (“Plaintiff”) requests that the Court refer the case to the
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`magistrate judge for an inquest on damages as well as to determine whether enough evidence
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`exists to support Plaintiff’s claim for statutory damages. Dkt. No. 28. The Court will refer the
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`case to the magistrate judge for an inquest on statutory or actual damages.
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`On September 14, 2021, the Court entered an order granting Plaintiff default judgment as
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`to liability. Dkt. No. 27. At the same time, the Court directed Plaintiff to submit a letter on
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`whether the case should be referred to the magistrate judge for an inquest on damages or whether
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`additional briefing on statutory damages would be submitted. Id. at 3. The latter order was
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`occasioned by the fact that, although Plaintiff sought statutory damages under section 504 of the
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`Copyright Act, 17 U.S.C. 504(c), see Dkt. No. 13 (“Decl.”) ¶ 14, the complaint did not allege an
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`act of copyright infringement that occurred after the date of registration, see Dkt. No. 1.
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`Section 412 of the Copyright Act provides in plain language that “no award of statutory
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`damages or of attorney’s fees, as provided by sections 504 and section 505, shall be made for—
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`(1) any infringement of copyright in an unpublished work commenced before the effective date
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`of its registration; or (2) any infringement of copyright commenced after first publication of the
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`Case 1:19-cv-11717-LJL Document 30 Filed 09/29/21 Page 2 of 5
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`work and before the effective date of its registration, unless such registration is made within
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`three months after first publication of the work.” 17 U.S.C. § 412. The provision differs from
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`section 411 of the Copyright Act, which requires preregistration or registration before an action
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`is commenced under the Copyright Act for damages but does not otherwise limit the actual
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`damages the copyright owner may seek to those incurred after the date of registration. Id. § 411.
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`Section 412 is intended to provide “additional remedies of statutory damages and
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`attorney’s fees as incentives to register.” In re Literary Works in Electronic Databases
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`Copyright Litigation, 509 F.3d 116, 132 (2d Cir. 2007) (Walker J., dissenting), rev’d and
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`remanded sub nom. on other grounds Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); see
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`also Graham v. Prince, 265 F. Supp. 3d 366, 389 (S.D.N.Y. 2017) (“To incentivize prompt
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`copyright registration, the Copyright Act makes registration a condition precedent for recovering
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`both statutory damages and attorneys’ fees.”); Arista Recs. LLC v. Lime Grp. LLC, 2011 WL
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`1226277, at *4 (S.D.N.Y. Mar. 29, 2011) (“The intent behind enacting Section 412 was to make
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`available the ‘extraordinary relief’ of statutory damages only to those who promptly registered
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`their copyrights, and to deny that remedy to those who failed to do so.”); New York Chinese TV
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`Programs, Inc. v. U.E. Enterprises, Inc., 1991 WL 113283, at *11 (S.D.N.Y. June 14, 1991)
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`(“The purpose of § 412 is to encourage timely copyright registration.”); Love v. City of New
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`York, 1989 WL 140578, at *1 (S.D.N.Y. Nov. 17, 1989) (“The threat of such a denial [of
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`statutory damages and attorneys fees] would hardly provide a significant motivation to register
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`early if the owner of the work could obtain those remedies for acts of infringement taking place
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`after a belated registration.”).
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`The complaint in this action, filed on December 21, 2019, does not allege either the date
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`of registration or the date of infringement. See Dkt. No. 1. It alleges that the photograph had
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`been registered with the United States Copyright Office and cites the work’s copyright
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`registration number. Id. ¶ 9. It also alleges that Defendant ran an article featuring the
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`photograph but does not allege the date of the article. Id. ¶ 11.
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`The declaration of counsel in support of the motion for a default judgment asserts that the
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`photograph was registered on October 8, 2019. See Decl. ¶ 14. The Certificate of Registration
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`for the photograph, attached as Exhibit D to the declaration, shows the effective date of
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`registration to be October 8, 2019 and the date of first publication to be February 4, 1998, over
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`21 years earlier. See Dkt. No. 13-4; see also Decl. ¶ 15 (“Attached hereto as Exhibit D is a true
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`and correct copy of Plaintiff’s relevant copyright registration certificate . . . .”). The declaration
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`of counsel admitted, “Plaintiff does not know the exact date when Defendant committed the
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`alleged infringement.” Decl. ¶ 14. But it then urged: “Defendant has failed to appear to defend
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`this action and therefore the presumption should be held against Defendant, i.e., that the
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`infringement occurred after the date of Plaintiff’s October 2019 registration.” Id.
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`After the Court’s order granting default judgment as to liability and in response to the
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`Court’s directive, Plaintiff submitted a letter on September 21, 2021. Dkt. No. 28. The letter
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`notes “that for Plaintiff’s claim to qualify for statutory damages, the alleged infringement would
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`have had to occur at some point between October 8, 2019 (the date of registration) and
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`December 20, 2019 (the date the complaint was filed).” Id. at 1. It also attaches what it asks the
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`Court to receive as “additional factual evidence regarding the date of Defendants’ infringement.”
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`Id. at 2. Counsel conducted a review of the “Wayback Archive” at URL https://web.archive.org
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`and determined that the work in question was first recorded by Wayback on Defendant’s website
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`as of December 10, 2019, which is after the registration date. Id. Counsel recognizes, however,
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`that the evidence from Wayback is not necessarily conclusive and that it is possible that the act
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`of infringement commenced prior to registration. Id.
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`Defendant’s default constitutes an admission to the well-pleaded factual allegations of the
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`complaint except as to damages. See Greyhound Exhibitgroup, Inc. v. E.L.U.L. Realty Corp.,
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`973 F.2d 155, 158 (2d Cir.1992); see Spin Master Ltd. v. 158, 463 F. Supp. 3d 348, 370
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`(S.D.N.Y. 2020) (“Although a default judgment entered on well-pleaded allegations establishes a
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`defendant’s liability, it does not reach the issue of damages”). But it does not give rise to a
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`presumption beyond that the factual allegations are true. Cf. Spin Master, 463 F. Supp. 3d at 374
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`(“If a defendant has the right to default, with the only consequence being that it has lost the
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`ability to defend itself against the well-pleaded allegations of a complaint, it should follow that
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`the mere fact of a default should not increase the quantum of statutory damages.” (citation
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`omitted)). Plaintiff admits that he has not located any case law to support the proposition that the
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`failure to answer should give rise to a presumption that the infringement took place after the date
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`of registration. Dkt. No. 28 at 2. The Court is required to draw plausible inferences from the
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`factual allegations of the complaint. It is not permitted to draw an inference that is merely
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`conceivable, when other inferences are more or equally plausible. Here, for example, it is telling
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`that there are no allegations regarding what prompted Plaintiff to suddenly register in October
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`2019—whether it was the discovery of the alleged infringement, in which case statutory damages
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`may not be available, or some other event.
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`At the inquest, the magistrate judge will have authority to determine both whether the
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`evidence supports an award of statutory damages (and if so to determine the quantum of
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`statutory damages) or, in the alternative, to determine actual damages. See W. Patry, Patry on
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`Case 1:19-cv-11717-LJL Document 30 Filed 09/29/21 Page 5 of 5
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`Copyright § 22:173 (plaintiff may submit alternative requests for actual damages and statutory
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`damages from which plaintiff can select whichever one it likes).
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`SO ORDERED.
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`Dated: September 29, 2021
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`New York, New York
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` __________________________________
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` LEWIS J. LIMAN
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` United States District Judge
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