Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`Shae Petersen,
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`Plaintiff,
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`-against-
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`Diesel Power Gear LLC et al.,
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`Defendants.
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`12/21/2022
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`1:21-cv-08827 (SDA)
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`OPINION AND ORDER
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`STEWART D. AARON, UNITED STATES MAGISTRATE JUDGE:
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`Plaintiff Shae Petersen (“Plaintiff” or “Petersen”), known professionally as “SRIL,” is an artist
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`who creates murals on building walls, including commissioned murals for clients such as the Utah
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`Jazz, Patagonia, BYU and Reddit. (See Compl., ECF No. 1, ¶ 12.) This action arises from a copyrighted
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`mural created by Petersen, a copy of which was used online by Diesel Power Gear, LLC (“Diesel”),
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`without Petersen’s permission. (See id. ¶¶ 13-18.) Petersen brought this action, alleging that Diesel
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`and three of its principals, David Sparks (“Sparks”), David Kiley (“Kiley”) and Josh Stuart (“Stuart”)1
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`directly infringed on Petersen’s copyright in the mural; that Sparks, Kiley and Stuart are vicariously
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`and contributorily liable for Diesel’s infringement; and that Defendants violated the Digital
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`Millennium Copyright Act (“DMCA”) by intentionally removing information identifying Petersen as
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`the author of the work. (See id. ¶¶ 22-39.)
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`Before the Court is Petersen’s motion for summary judgment, pursuant to Rule 56 of the
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`Federal Rules of Civil Procedure, seeking partial summary judgment as to Defendants’ liability for
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`copyright infringement and for violation of the DMCA, as well as a finding that Defendants’ conduct
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`was willful. (Pl.’s Mot. for Part. Summ. J., ECF No. 47; Pl.’s Proposed Order, ECF No. 47-1.) Petersen
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`1 Sparks, Kiley and Stuart collectively are referred to herein as the “Individual Defendants.” The Individual
`Defendants, along with Diesel, collectively are referred to herein as the “Defendants.”
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`thus seeks to have the action proceed to trial only on the issue of damages. (See Pl.’s Proposed
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`Order ¶ D.) For the reasons set forth below, Petersen’s motion is GRANTED IN PART and DENIED IN
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`PART.
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`I.
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`Undisputed Facts
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`BACKGROUND
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`Petersen created an original mural, entitled “Godlike” (the “Subject Mural”), using the
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`author identification information “SRILART.” (See Defs.’ 56.1 Response, ECF No. 63 at pp. 1-11, ¶¶
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`1-2.) Petersen registered the Subject Mural with the United States Copyright Office, receiving an
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`approved registration dated August 31, 2016 and numbered VA 2-060-694. (See id. ¶ 2.) At all
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`relevant times, Petersen owned all copyrights in and to the Subject Mural. (Id.)
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`At all relevant times, Diesel’s core business model was monthly truck giveaways. (See Defs.’
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`Stmt. Of Add. Undisputed Facts2 ¶ 2.) Each month, Diesel built a custom truck and promoted a
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`giveaway for the truck. (See id.) Each $5 spent on Diesel’s website for diesel-truck-related apparel
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`or other diesel-truck items gave the purchaser an entry to win the truck in a raffle-type drawing.
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`(See id.) Diesel promoted these truck giveaways on social media and other platforms. (See id.)
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`On at least two occasions (i.e., in 2017 and 2020, as discussed further below), Diesel
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`photographed a portion of the Subject Mural as a backdrop for a truck, and the resulting
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`photograph was used for social media posts on Instagram and Facebook. (See Defs.’ 56.1 Response
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`2 Pursuant to Local Civil Rule 56.1, a party opposing a motion for summary judgment may include with its
`opposition papers “additional paragraphs containing a separate, short and concise statement of additional
`material facts as to which it is contended that there exists a genuine issue to be tried.” S. & E.D.N.Y. L. Civ.
`R. 56.1(b). Defendants included with their opposition papers a Statement of Additional Undisputed Facts
`(“SAUF”) (Defs.’ SAUF, ECF No. 63 at pp. 11-15), but Plaintiff failed to respond to such statement. As such,
`each numbered paragraph contained in Defendants’ SAUF is “deemed to be admitted for purposes of the
`motion.” See S. & E.D.N.Y. L. Civ. R. 56.1(c).
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`2
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`¶ 3; Burroughs Decl., Ex. 4, ECF No. 48-1; id., Ex. 6, ECF No. 48-3.) At all relevant times, Sparks, Kiley
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`and Stuart were part owners of Diesel. (See Defs.’ 56.1 Response ¶ 3.)
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`The employees who created and posted promotional content had significant autonomy.
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`(Defs.’ SAUF ¶ 6.) Although, as owners, Sparks, Kiley and Stuart had the right to supervise these
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`employees, very few posts were reviewed or approved by Sparks, Kiley and/or Stuart because they
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`were engaged in other aspects of Diesel’s business. (Id. ¶¶ 5-6.)
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`On or around March 25, 2017, Diesel’s photographer took a picture of a Diesel giveaway
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`truck using a part of the Subject Mural as a backdrop. (Defs.’ SAUF ¶ 7.) The photograph taken by
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`Diesel’s photographer did not include the word “SRILART,” which appeared in the upper right
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`corner of the Subject Mural. (Id. ¶ 8.) Instead, the backdrop of the photograph was only a small
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`section near the center of the Subject Mural. (Id. ¶ 9.) Shortly thereafter, Diesel’s social media
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`employee posted the image as part of an Instagram or Facebook post for the then-current Diesel
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`truck giveaway (the “2017 Post”). (Id. ¶ 10.)
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`Petersen became aware of the 2017 Post and reached out to Diesel to notify Diesel that it
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`was not authorized to use the Subject Mural. (Defs.’ SAUF ¶ 11.) Diesel immediately—within hours
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`of posting—took down the 2017 Post. (Id. ¶ 12.) At this time, Sparks informed all Diesel employees
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`that they should not use the Subject Mural in Diesel’s promotional images. (Id. ¶ 13.) Between 2017
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`and 2020, Diesel had significant employee turnover, including but not limited to its photographer
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`and social media employees. (Id. ¶ 14.)
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`As of June 2020, a new employee, Alec Black (“Black”), was Diesel’s photographer. (Defs.’
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`SAUF ¶ 15.) On or around June 28, 2020, Black was driving around the Salt Lake City area looking
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`for a good photo backdrop for the then-current Diesel giveaway truck. (Id. ¶ 16.) Black saw the
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 4 of 12
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`Subject Mural and decided to use part of it as the backdrop for a photograph of the then-current
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`Diesel giveaway truck. (Id. ¶ 17.) Black took a photograph of the then-current giveaway truck in
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`front of part of the Subject Mural around late morning and posted it in an Instagram post around
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`an hour later (the “2020 Post”). (Id. ¶ 18.)
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`The photograph contained in the 2020 Post did not include the word “SRILART,” which
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`appears in the upper right corner of the Subject Mural. (Defs.’ SAUF ¶ 19.) Instead, the photo
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`backdrop was only a small section near the center of the Subject Mural. (Id. ¶ 20.) Petersen reached
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`out to Sparks regarding use of the Subject Mural in the 2020 Post. (Id. ¶ 22.). Sparks immediately
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`communicated the situation to Black, who responded by removing the 2020 Post within a few hours
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`of when it was posted. (Id. ¶ 23.) Each year, Diesel uses over 700 social media posts as part of its
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`efforts to promote truck giveaways. (Id. ¶ 24.)
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`II.
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`Procedural History
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`On October 28, 2021, Petersen commenced this action asserting claims for copyright
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`infringement; vicarious and contributory copyright infringement; and violations of the DMCA. (See
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`Compl.) On February 14, 2022, Defendants filed their Answer. (See Answer, ECF No. 13.)
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`On October 21, 2022, Petersen filed the motion for summary judgment that is now before
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`the Court. (See Pl.’s Mot. for Part. Summ. J.) On November 23, 2022, Defendants filed their
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`opposition to Petersen’s motion. (See Defs.’ Opp. Mem., ECF No. 62.). On December 7, 2022,
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`Plaintiff filed his reply. (See Pl.’s Reply, ECF No. 64.)
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`LEGAL STANDARDS
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`Summary judgment is appropriate when “the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 5 of 12
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`Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (“[S]ummary judgment is
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`proper ‘if the pleadings, depositions, answers to interrogatories, and admissions on file, together
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`with the affidavits, if any, show that there is no genuine issue as to any material fact and that the
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`moving party is entitled to a judgment as a matter of law.’” (quoting former Fed. R. Civ. P. 56(c))).
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`A genuine dispute exists where “the evidence is such that a reasonable jury could return a verdict
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`for the nonmoving party,” while a fact is material if it “might affect the outcome of the suit under
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`the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “Factual disputes that
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`are 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
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`is some metaphysical doubt as to the material facts,” Matsushita, 475 U.S. at 586 (citations
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`omitted), and she “may not rely on conclusory allegations or unsubstantiated speculation.” Fujitsu
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`Ltd. v. Fed. Express Corp., 247 F.3d 423, 428 (2d Cir. 2001) (internal quotation marks and citation
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`omitted).
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 6 of 12
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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.
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`2002) (citation omitted). “Assessments of credibility and choices between conflicting versions of
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`the events are matters for the jury, not for the court on summary judgment.” Jeffreys v. City of New
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`York, 426 F.3d 549, 553 (2d Cir. 2005) (citation omitted). “[T]he judge must ask . . . not whether
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`. . . the evidence unmistakably favors one side or the other but whether a fair-minded jury could
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`return a verdict for the [non-movant] on the evidence presented.” Id. at 553 (quoting Anderson,
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`477 U.S. at 252). “Summary judgment is improper if any evidence in the record from any source
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`would enable a reasonable inference to be drawn in favor of the nonmoving party.” Gym Door
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`Repairs, Inc. v. Young Equip. Sales, Inc., No. 15-CV-04244 (JGK), 2018 WL 4489278, at *2 (S.D.N.Y.
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`Sept. 19, 2018) (citing Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994)).
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`ANALYSIS
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`In his motion for summary judgment, Plaintiff seeks judgment on the liability of all
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`Defendants for direct copyright infringement and the liability of the Individual Defendants for
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`vicarious and contributory copyright infringement. (Pl.’s Mem. at 5-14.) He also seeks a finding that
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`the Defendants’ infringement was willful. (Id. at 17-19.) In addition, Plaintiff seeks judgment on the
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`liability of all Defendants for violations of the DMCA. (Id. at 14-16.)
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 7 of 12
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`I.
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`Copyright Infringement
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`A.
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`Direct Infringement
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`The Copyright Act of 1976 (“Copyright Act”), 17 U.S.C. §§ 101-803, grants copyright owners
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`a bundle of exclusive rights, including the rights “to reproduce the copyrighted work in copies” and
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`“to prepare derivative works based upon the copyrighted work.” Id. § 106. Plaintiffs must prove the
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`following elements for an infringement claim: (1) they hold a valid ownership interest in the
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`relevant copyrights, (2) defendants have “actually copied” their works, and (3) defendants’
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`“copying is illegal” because of a “substantial similarity” between defendants’ works and the
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`“protectable elements” of their copyrighted works. See Penguin Random House LLC v. Colting, 270
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`F. Supp. 3d 736, 744 (S.D.N.Y. 2017) (citing Castle Rock Entm’t, Inc. v. Carol Pub. Grp., Inc., 150 F.3d
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`132, 137 (2d Cir. 1998)). For a derivative work claim, “plaintiffs must further prove that (4)
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`defendants’ works are unauthorized derivatives under 17 U.S.C. § 106(2).” See id.
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`Plaintiff has established liability for direct copyright infringement by Diesel, as Diesel itself
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`admits. (See Defs.’ Opp. Mem. at 2 (“Diesel Power Gear does not dispute that using a part of the
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`Mural as a backdrop for the 2017 Post and for the 2020 Post constitutes copyright infringement.”).)
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`Plaintiff also moves for summary judgment on the issue of the Individual Defendants’ liability for
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`direct infringement. The Individual Defendants “can be held liable for the infringing acts of [Diesel]
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`if they personally participated in the acts constituting infringement.” See Lechner v. Marco-Domo
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`Internationales Interieur GmbH, No. 03-CV-05664 (JGK), 2005 WL 612814, at *6 (S.D.N.Y. Mar. 14,
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`2005). However, there is a material dispute of fact as to whether the Individual Defendants
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`personally participated in the infringement and/or whether they personally engaged in acts of
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`infringement. None of the Individual Defendants took the photographs used for the 2017 Post or
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 8 of 12
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`the 2020 Post. (See Defs.’ SAUF ¶¶ 7, 18.) Moreover, Defendants dispute, with citation to
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`admissible evidence, Plaintiff’s statements that Stuart “exploited the Subject Mural as part of an
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`online display,” and that “Sparks and Kiley also published the Subject Mural online.”3 (See Defs.’
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`56.1 Response ¶¶ 4-5.) Thus, the issue of whether the Individual Defendants directly infringed
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`Plaintiff’s copyright must be reserved for trial.
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`B.
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`Vicarious Liability
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`Plaintiff moves for summary judgment on the issue of whether the Individual Defendants
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`are vicariously liable for copyright infringement. (Pl.’s Mem. at 13.) To be vicariously liable for
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`copyright infringement, the defendant must have the right and ability to supervise the infringing
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`act and a direct financial interest in the infringing activity. See Gershwin Pub. Corp. v. Columbia
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`Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). Although the Individual Defendants had
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`the ability to supervise the employees who engaged in the infringing activities (see Defs.’ SAUF ¶
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`5), the second element of a vicarious infringement claim is lacking. The second element requires
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`a “causal relationship between the infringing activity and any financial benefit [the] defendant
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`reaps.” Arista Records LLC v. Lime Grp. LLC, 784 F. Supp. 2d 398, 435 (S.D.N.Y. 2011) (internal
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`quotation marks and citations omitted). There is no undisputed record evidence regarding any
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`direct financial benefit received by the Individual Defendants from Diesel’s infringing activities.4
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`Thus, this aspect of Plaintiff’s summary judgment motion also must be denied.
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`3 The Court finds that the record is unclear as to the facts regarding the Individual Defendants’ allegedly
`infringing actions such that summary judgment properly cannot be granted against them.
`4 In his Reply, Plaintiff argues that the Individual Defendants received financial benefits from acts of Diesel’s
`brand ambassadors (Pl. Reply at 4-6), but does not show through undisputed facts a causal relationship
`between the infringing activities and such financial benefits.
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`C.
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`Contributory Infringement
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`Defendants move for summary judgment regarding the Individual Defendants’ liability as
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`contributory infringers. (Pl.’s Mem. at 13-14.) To be liable for contributory infringement, the
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`Individual Defendants must have had knowledge of the underlying direct infringement and engaged
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`in personal conduct that induced, caused or materially contributed to the infringing conduct. See
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`Arista Records, LLC v. Doe 3, 604 F.3d 110, 117-18 (2d Cir. 2010) (citations omitted). “The knowledge
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`standard is an objective one; contributory infringement liability is imposed on persons who ‘know
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`or have reason to know’ of the direct infringement.” Id. Willful blindness is not an excuse, and is
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`sufficient to satisfy the knowledge requirement. Id. at 118. The Individual Defendants’ participation
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`or contribution to the infringement must be substantial. See Arista Records LLC v. USENET.com, 633
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`F. Supp. 2d 124, 155 (S.D.N.Y. 2009).
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`Many of the issues relevant to contributory liability are discussed in other parts of this
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`opinion. Therefore, summary judgment on the Individual Defendants’ liability for contributory
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`infringement is denied on similar grounds as their liability for direct and vicarious infringement.
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`Based upon the Court’s careful review of the summary judgment record, there are material issues
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`of fact regarding whether the Individual Defendants engaged in conduct that encouraged or
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`assisted the infringement.
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`D. Willfulness
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`Plaintiff moves for a summary determination that Defendants’ infringement was willful.
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`(Pl.’s Mem. at 17-19.) Because, as set forth above, the Court has not found the Individual
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`Defendants liable for infringement, the Court need not consider at this time whether the conduct
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 10 of 12
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`of the Individual Defendants was willful, but only must consider whether Diesel’s conduct was
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`willful.
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`To prove “willfulness” under the Copyright Act, the plaintiff must show (1) that the
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`defendant was actually aware of the infringing activity, or (2) that the defendant’s actions were
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`the result of “reckless disregard” for, or “willful blindness” to, the copyright holder’s rights. See
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`Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 263 (2d Cir. 2005)
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`(citations omitted). On the record before the Court, there are material fact issues regarding
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`Diesel’s willfulness. Plaintiff has not proffered undisputed evidence that Diesel was aware at the
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`time photographs first were taken of the Subject Mural and placed on social media that the social
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`media posts constituted infringement. Once Diesel became aware of the infringement, Diesel
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`contends that it took down the offending social media posts within hours of them being posted
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`(see Pl.’s SAUF ¶¶ 12, 23), which would indicate a lack of willfulness. The Court finds that the
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`issue of Diesel’s willfulness must be resolved at trial.
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`II.
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`DMCA
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`Finally, Plaintiff moves for summary judgment on the claim that Defendants violated the
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`DMCA. (Pl.’s Mem. at 14-16.) Plaintiff alleges Defendants violated Section 1202(b)(1) of the DMCA,
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`which provides that no person shall “intentionally remove or alter any copyright information.” 17
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`U.S.C. § 1202(b)(1). To be found liable, the defendant must know or have reasonable grounds to
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`know that “it will induce, enable, facilitate, or conceal an infringement.” 17 U.S.C. § 1202(b).
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`Copyright Management Information (“CMI”) includes “the name of, and other identifying
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`information about, the author of a work.” 17 U.S.C. § 1202(c)(2). To prevail on a claim alleging a
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`violation of Section 1202(b), a plaintiff must show “(1) the existence of CMI on the [work at issue];
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`Case 1:21-cv-08827-SDA Document 65 Filed 12/21/22 Page 11 of 12
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`(2) removal and/or alteration of that information; and (3) that the removal and/or alteration was
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`done intentionally.” Fischer v. Forrest, 286 F. Supp. 3d 590, 608 (S.D.N.Y. 2018) (citing BanxCorp v.
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`Costco Wholesale Corp., 723 F. Supp. 2d 596, 609 (S.D.N.Y. 2010)).
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`In the present case, the question of whether Defendants had the requisite intent to remove
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`the CMI is one that the Court is unable to ascertain from the record, given Defendants’ contention
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`that only a portion of the Subject Mural was used as a backdrop for a photograph.5 Therefore, a
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`judgment on whether Defendants had the intent required for a DMCA violation is inappropriate at
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`this stage of the case.
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`CONCLUSION
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`For the foregoing reasons, Plaintiff’s motion for summary judgment is GRANTED with
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`respect to Diesel’s liability for copyright infringement and DENIED in all other respects. The parties
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`are directed to appear for a telephone conference on January 5, 2023, at 11:30 a.m. EST to address
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`any open damages-related discovery issues (e.g., Def.’s Ltr. Mot., ECF No. 56) and to set a schedule
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`for pre-trial submissions. At the scheduled time, the parties shall each separately call (888) 278-
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`0296 (or (214) 765-0479) and enter access code 6489745.
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`SO ORDERED.
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`5 The Court need not, and does not, now decide whether the CMI should be considered as having been
`removed or altered in circumstances where Defendants contend that they merely took photographs of the
`Subject Mural, not including the CMI. See Falkner v. Gen. Motors LLC, 393 F. Supp. 3d 927, 938 (C.D. Cal.
`2018) (“The Court cannot find, and Plaintiff has not pointed to, any case standing for the proposition that
`failure to include copyright management information—merely by the framing of the scene, rather than by
`any editing or cropping—constitutes removal or alteration.”); but see Mango v. BuzzFeed, Inc., 356 F. Supp.
`3d 368, 377 (S.D.N.Y. 2019) (finding DMCA liability where CMI was “altered and missing”), aff’d, 970 F.3d
`167 (2d Cir. 2020).
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`Dated:
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`New York, New York
`December 21, 2022
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`______________________________
`STEWART D. AARON
`United States Magistrate Judge
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