Case 1:19-cv-00520-PKC-CLP Document 16 Filed 06/05/19 Page 1 of 16 PageID #: 103
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`XCLUSIVE-LEE, INC.,
`
`Plaintiff,
`
`v.
`
`No. 19 Civ. 520
`
`JELENA NOURA “GIGI” HADID,
`
`Defendant.
`
`REPLY MEMORANDUM OF LAW IN
`SUPPORT OF DEFENDANT’S MOTION TO DISMISS
`
`John C. Quinn
`Matthew J. Craig
`Talia I. Nissimyan
`KAPLAN HECKER & FINK LLP
`350 Fifth Avenue, Suite 7110
`New York, New York 10118
`(212) 763-0883
`
`Attorneys for Defendant
`
`June 5, 2019
`
`

`

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` 
`
`TABLE OF CONTENTS
`PRELIMINARY STATEMENT .................................................................................................... 1
`ARGUMENT .................................................................................................................................. 2
`I. XCLUSIVE CONFIRMS THAT THE COMPLAINT DOES NOT SATISFY BASIC
`REQUIREMENTS FOR BRINGING A COPYRIGHT SUIT ............................................ 2
`
`II. XCLUSIVE FAILS TO OVERCOME ADDITIONAL GROUNDS FOR DISMISSAL
`BASED ON THE FAIR USE AND IMPLIED LICENSE DOCTRINES ........................... 4
`
`A. Fair Use ......................................................................................................................... 4
`
`B.
`
`Implied License ............................................................................................................. 9
`
`III. XCLUSIVE’S SPECULATION IS INSUFFICIENT TO SAVE ITS CLAIM FOR
`CONTRIBUTORY INFRINGEMENT ................................................................................ 9
`
`CONCLUSION ............................................................................................................................. 11
`
`
`
`
`
`

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` 
`
`
`
`TABLE OF AUTHORITIES
`
`CASES 
`
`PAGE(S)
`
`ABKCO Music, Inc. v. Harrisongs Music, Ltd.,
`944 F.2d 971 (2d Cir. 1991) ........................................................................................................ 3
`
`Am. Geophysical Union v. Texaco Inc.,
`60 F.3d 913 (2d Cir. 1994) ...................................................................................................... 4, 7
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .................................................................................................................. 10
`
`Authors Guild, Inc. v. HathiTrust,
`755 F.3d 87 (2d Cir. 2014) .......................................................................................................... 6
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) .................................................................................................................. 10
`
`Blanch v. Koons,
`467 F.3d 244 (2d Cir. 2006) ........................................................................................................ 4
`
`Burrow-Giles Lithographic Co. v. Sarony,
`111 U.S. 53 (1884) ...................................................................................................................... 6
`
`Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994) .................................................................................................................... 4
`
`Capitol Records, Inc. v. Wings Dig. Corp.,
`218 F. Supp. 2d 280 (E.D.N.Y. 2002) ......................................................................................... 3
`
`Cariou v. Prince,
`714 F.3d 694 (2d Cir. 2013) ........................................................................................................ 7
`
`Compaq Comput. Corp. v. Ergonome Inc.,
`387 F.3d 403 (5th Cir. 2004) ....................................................................................................... 5
`
`
`Corbis Corp. v. UGO Networks, Inc.,
`322 F. Supp. 2d 520 (S.D.N.Y. 2004) .........................................................................................3
`
`Faulkner v. Nat’l Geographic Enters. Inc.,
`409 F.3d 26 (2d Cir. 2005) ........................................................................................................ 10
`
`Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC,
`139 S. Ct. 881 (2019) .................................................................................................................. 2
`
` 
`
`‐ii- 
`
`

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` 
`
`Fox News Network v. Tveyes, Inc.,
`883 F.3d 169 (2d Cir. 2018) ........................................................................................................ 7
`
`Graham v. Prince,
`265 F. Supp. 3d 366 (S.D.N.Y. 2017) ......................................................................................... 7
`
`House of Bryant Publications, LLC v. A & E Television Networks,
`No. 09 Civ. 502, 2009 WL 3673055 (M.D. Tenn. Oct. 30, 2009) .............................................. 8
`
`Hutson v. Notorious B.I.G., LLC,
`No. 14 Civ. 2307, 2015 WL 9450623 (S.D.N.Y. Dec. 22, 2015) ............................................... 3
`
`In re Am. Express Anti-Steering Rules Antitrust Litig.,
`361 F. Supp. 3d 324 (E.D.N.Y. 2019) ......................................................................................... 2
`
`In re Picard,
`917 F.3d 85 (2d Cir. 2019) .......................................................................................................... 2
`
`Joe Hand Promotions, Inc. v. Maupin,
`No. 15 Civ. 6355, 2018 WL 2417840 (E.D.N.Y. May 25, 2018) ............................................... 9
`
`Katz v. Google Inc.,
`802 F.3d 1178 (11th Cir. 2015) ................................................................................................... 5
`
`Lombardo v. Dr. Seuss Enters., L.P.,
`279 F. Supp. 3d 497 (S.D.N.Y. 2017) ......................................................................................... 4
`
`On Davis v. The Gap, Inc.,
`246 F.3d 152 (2d Cir. 2001) ........................................................................................................ 4
`
`Otto v. Hearst Commc’ns, Inc.,
`345 F. Supp. 3d 412 (S.D.N.Y. 2018) ......................................................................................... 5
`
`Oyewole v. Ora,
`291 F. Supp. 3d 422 (S.D.N.Y. 2018) ......................................................................................... 8
`
`Papa’s-June Music, Inc. v. McLean,
`921 F. Supp. 1154 (S.D.N.Y. 1996) ............................................................................................ 3
`
`Rentmeester v. Nike, Inc.,
`883 F.3d 1111 (9th Cir. 2018) ..................................................................................................... 6
`
`Reis, Inc. v. Lennar Corp.,
`No. 15 Civ. 7905, 2016 WL 3702736 (S.D.N.Y. July 5, 2016) ................................................ 10
`
`Richard Anderson Photography v. Brown,
`No. 85 Civ. 373, 1990 WL 538929 (W.D. Va. Apr. 16, 1990) ................................................... 7
`
` 
`
`‐iii- 
`
`

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` 
`
`Stanacard, LLC v. Rubard, LLC,
`No. 12 Civ. 5176, 2016 WL 462508 (S.D.N.Y. Feb. 3, 2016) ................................................. 10
`
`TCA Television Corp. v. McCollum,
`839 F.3d 168 (2d Cir. 2016) .................................................................................................... 7, 8
`
`United States ex rel. Hanks v. U.S. Oncology Speciality, LLP,
`336 F. Supp. 3d 90 (E.D.N.Y. 2018) ........................................................................................... 3
`
`Wolo Mfg. Corp. v. ABC Corp.,
`349 F. Supp. 3d 176 (E.D.N.Y. 2018) ....................................................................................... 10
`
`STATUTES 
`
`17 U.S.C. § 411 ........................................................................................................................... 2, 3
`
` 
`
`‐iv- 
`
`

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` 
`
` PRELIMINARY STATEMENT
`
`Xclusive’s opposition makes no effort to deny the twisted dynamic at the heart of this
`
`case. A paparazzo followed Ms. Hadid so he could take her picture and exploit her image for
`
`profit. When Ms. Hadid came upon the photographer outside a Manhattan building, she stopped
`
`and posed for the camera. In that moment, the paparazzo snapped a photograph, undoubtedly
`
`made more valuable by Ms. Hadid’s participation. Xclusive vaguely alleges that it later became
`
`an owner or exclusive licensee of that photograph, and Xclusive apparently decided that
`
`capitalizing on Ms. Hadid’s fame through licensing her image was not enough. So Xclusive sued
`
`Ms. Hadid, seeking significant monetary damages based on allegations that she reposted a
`
`cropped version of the photograph of herself to her personal Instagram page.
`
`Xclusive’s opposition leaves no doubt that the Complaint fails to state a claim upon
`
`which relief may be granted. Xclusive asks the Court to ignore a binding Supreme Court decision
`
`that requires a plaintiff in a copyright suit to have the registration in hand at the time of filing.
`
`Xclusive also suggests, contrary to precedent, that it can bring the photographer’s accrued claims
`
`without alleging facts that show it has a right to do so. Further, Xclusive exaggerates the scope of
`
`Ms. Hadid’s fair use and implied license arguments, which are unique to Ms. Hadid and would
`
`permit only her narrow use of the photograph. And, faced with an unambiguous rule that
`
`contributory infringement claims require allegations of primary infringement that someone else
`
`committed, Xclusive asks the Court to just “assume” someone did.
`
`The opposition’s failure to address the fundamental defects in the Complaint underscores
`
`what this case really is: an effort to extract a settlement through the mere pendency of litigation,
`
`with little concern for basic requirements of copyright law or for the waste of judicial resources
`
`that this suit engenders. The Court should put an end to this abuse of the Copyright Act.
`
`

`

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` 
`
`I.
`
`
`
` ARGUMENT
`
`XCLUSIVE CONFIRMS THAT THE COMPLAINT DOES NOT SATISFY BASIC
`REQUIREMENTS FOR BRINGING A COPYRIGHT SUIT
`
`Xclusive attempts to evade two basic requirements that a plaintiff must satisfy to bring a
`
`copyright claim. Xclusive’s half-baked opposition only confirms that dismissal is appropriate.1
`
`Xclusive first asks the Court to ignore binding precedent on the requirement that a
`
`plaintiff not sue for infringement until “registration of the copyright claim has been made.” 17
`
`U.S.C. § 411(a). A unanimous Supreme Court recently held that “the only satisfactory reading”
`
`of this provision is that registration occurs “when the Copyright Office grants registration,” not
`
`when a copyright holder submits an application. Fourth Estate Pub. Benefit Corp. v. Wall-
`
`Street.com, LLC, 139 S. Ct. 881, 888 (2019). Submitting an application is all that Xclusive
`
`claims to have done here. Compl. ¶ 19.
`
`Xclusive seems to believe that just because it filed its Complaint before Fourth Estate
`
`was decided, this Court is free to ignore that decision and craft its own interpretation of § 411(a)
`
`as a matter of “discretion.” Opp’n at 2. That is not how statutory interpretation works. See In re
`
`Picard, 917 F.3d 85, 101 (2d Cir. 2019) (interpretation of statutes is a matter of law, not “a
`
`matter of judicial discretion”). Nor is it how stare decisis works. See In re Am. Express Anti-
`
`Steering Rules Antitrust Litig., 361 F. Supp. 3d 324, 337 (E.D.N.Y. 2019) (“The doctrine of stare
`
`decisis compels a district court to abide by the legal decisions of higher courts in the same
`
`jurisdiction.”). When a higher court hands down a definitive interpretation of a statutory
`
`                                                            
`1 In addition to its more substantive shortcomings, Xclusive’s opposition includes unfilled placeholders and passages
`lifted from other briefs with the names of other parties from other cases. Opp’n at 6, 7, 11. The brief also makes
`further reference to a purported settlement in another case whose existence is not confirmed by the public record.
`Opp’n at 2. Ms. Hadid previously noted that David Deal was counsel to the plaintiff in that case, and reserved all
`rights to seek an appropriate remedy if Mr. Deal “disclosed confidential information pertaining to a settlement to
`Xclusive or to others.” MTD at 3 n.1 In its opposition, Xclusive offers no response to this concern and instead
`doubles down by referencing the purported settlement again. Ms. Hadid continues to reserve all rights. 
`‐2- 
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` 
`
`

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` 
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`provision, that interpretation is binding in pending litigation. See, e.g., United States ex rel.
`
`Hanks v. U.S. Oncology Speciality, LLP, 336 F. Supp. 3d 90, 99, 115 (E.D.N.Y. 2018)
`
`(dismissing case based on statutory filing bar, even though Second Circuit rendered the relevant
`
`interpretation of that bar eight years after Hanks filed his suit).
`
`Simply put, Fourth Estate binds this Court. And even if it didn’t, Xclusive offers no
`
`reason for the Court to depart from an interpretation compelled by the statutory text, adopted by
`
`all nine justices, and consistent with longstanding authority in this Circuit. See, e.g., Corbis
`
`Corp. v. UGO Networks, Inc., 322 F. Supp. 2d 520, 521-22 (S.D.N.Y. 2004); Capitol Records,
`
`Inc. v. Wings Dig. Corp., 218 F. Supp. 2d 280, 284 (E.D.N.Y. 2002). The photograph of Ms.
`
`Hadid was not registered at the time of filing as § 411(a) plainly requires, and the Complaint
`
`should be dismissed as matter of law on that basis.
`
`Xclusive next argues that its Complaint need not include any allegations demonstrating
`
`its right to sue. Opp’n at 3. Besides a cursory reference to Rule 8, Xclusive identifies no
`
`authority for its position and ignores clear caselaw holding that even where a photographer
`
`assigns or exclusively licenses his copyright, the assignee or exclusive licensee may bring the
`
`photographer’s accrued causes of action only where the right to do so is “expressly included” in
`
`the assignment or licensing agreement. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d
`
`971, 980 (2d Cir. 1991). Xclusive makes no allegations about whether and how it obtained the
`
`right to bring the photographer’s accrued claims. See MTD at 6. The Complaint should therefore
`
`be dismissed. See Hutson v. Notorious B.I.G., LLC, No. 14 Civ. 2307, 2015 WL 9450623, at *4
`
`(S.D.N.Y. Dec. 22, 2015) (dismissing complaint that lacked allegations of an agreement that
`
`“expressly included the right to sue for causes of action that accrued prior to [plaintiff’s]
`
`ownership”); Papa’s-June Music, Inc. v. McLean, 921 F. Supp. 1154, 1160 (S.D.N.Y. 1996).
`
` 
`
`‐3- 
`
`

`

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` 
`
`II.
`
`
`
`
`
`XCLUSIVE FAILS TO OVERCOME ADDITIONAL GROUNDS FOR
`DISMISSAL BASED ON THE FAIR USE AND IMPLIED LICENSE DOCTRINES
`
`
`
`A.
`
`Fair Use
`
`Fair use analysis requires “an open-ended and context-sensitive inquiry.” Blanch v.
`
`Koons, 467 F.3d 244, 251 (2d Cir. 2006). Xclusive fails to heed this directive, and instead
`
`overstates the narrow fair use argument that Ms. Hadid has made and ignores the significant
`
`authorities that support it.
`
`
`
`First factor. Xclusive’s argument on the first fair use factor is a red herring. Xclusive
`
`dedicates pages of its brief to the claim that Hadid “stated the incorrect legal standard of what
`
`qualifies as a transformative use,” and concludes that Ms. Hadid’s alleged use is “not even close
`
`to being transformative.” Opp’n at 5.
`
`
`
`Ms. Hadid has not claimed that her alleged use has the transformative character of, say,
`
`Matthew Lombardo’s comedic play featuring a “rather down-and-out 45 year-old version of
`
`Cindy–Lou Who” from Dr. Seuss’s well-known book How the Grinch Stole Christmas. See
`
`Lombardo v. Dr. Seuss Enters., L.P., 279 F. Supp. 3d 497, 503, 515 (S.D.N.Y. 2017), aff’d, 729
`
`F. App’x 131 (2d Cir. 2018) (finding Lombardo’s play to constitute fair use of Seuss’s book).
`
`But, as Ms. Hadid explained in her opening brief, MTD at 8, such “transformative use is not
`
`absolutely necessary,” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994), and where
`
`a use is not transformative, the question of “whether the new use is commercial thus acquires
`
`[greater] importance,” On Davis v. The Gap, Inc., 246 F.3d 152, 175 (2d Cir. 2001).
`
`On that question, Xclusive acknowledges but simply rejects language from the Second Circuit’s
`
`decision in Blanch v. Koons,2 and instead offers its own formulation, purportedly based on an
`
`                                                            
`2 The Second Circuit said the following: “The commercial/nonprofit dichotomy concerns the unfairness that arises
`when a secondary user makes unauthorized use of copyrighted material to capture significant revenues as a direct
` 
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` 
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`‐4- 
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`

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` 
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`older decision of the Fifth Circuit,3 and then ends its analysis there. The simple fact is that
`
`Xclusive does not dispute that the Complaint alleges only that Ms. Hadid reposted an image to
`
`her personal Instagram page and made no effort to commercially exploit it. Compl. ¶¶ 9-11; see
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`MTD 8. The first factor thus weighs in Ms. Hadid’s favor.
`
`
`
`Second factor. Xclusive claims that the paparazzi photograph here is a “highly creative
`
`and expressive” work because it required decisions about “timing, lighting, angle, composition,
`
`and others,” and that the second factor therefore weighs in its favor. Opp’n at 6. But the
`
`photograph simply places Ms. Hadid in the center of the frame and relies on lighting and
`
`background elements over which the photographer had no control. Compl., Ex. A. If this
`
`photograph qualifies as “highly creative and expressive,” so too would nearly every other
`
`photograph ever snapped on the street. Xclusive’s argument cannot be squared with the
`
`distinction between factual and creative works that courts have consistently drawn, including in
`
`connection with photographs like the one here. See, e.g., Katz v. Google Inc., 802 F.3d 1178,
`
`1183 (11th Cir. 2015) (second factor favored fair use where photograph was “merely a candid
`
`shot in public setting” and photographer did not attempt to “convey ideas, emotions, or in any
`
`way influence [the subject’s] pose, expression, or clothing”); Otto v. Hearst Commc’ns, Inc., 345
`
`F. Supp. 3d 412, 430 (S.D.N.Y. 2018) (second factor favored fair use where photograph was a
`
`candid shot at wedding and photographer “did not direct or pose the subjects of the photo, nor
`
`control the lighting or the background”).
`
`                                                            
`consequence of copying the original work.” Blanch, 467 F.3d at 253 (quoting Am. Geophysical Union v. Texaco
`Inc., 60 F.3d 913, 922 (2d Cir. 1994)); see MTD at 8. Faced with that language, Xclusive simply asserts without
`citation that “the question of commerciality is not a question of whether Hadid did or did not use the Photograph to
`‘capture significant revenue.’” Opp’n at 6 (emphasis added).
`
` After rejecting the Second Circuit’s formulation, the opposition simply asserts the following: “Rather, the question
`is whether Hadid gained a commercial advantage, either directly or indirectly, as a consequence of using the
`Photograph without paying the customary licensing fee.” Opp’n at 6 (citing Compaq Comput. Corp. v. Ergonome
`Inc., 387 F.3d 403, 409 (5th Cir. 2004)). 
`
` 3
`
` 
`
`‐5- 
`
`

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` 
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`Xclusive does not grapple with these authorities, and the two cases on which Xclusive
`
`attempts to rely, see Opp’n at 6-7, do nothing to advance its argument. Burrow-Giles
`
`Lithographic Co. v. Sarony established that Congress had the power to extend copyright
`
`protection to photographs, and has nothing to do with fair use. 111 U.S. 53, 60 (1884).
`
`Rentmeester v. Nike, Inc. is not a fair use case either, although it did find that a photograph of
`
`Michael Jordan exhibited a high degree of creativity where the photographer inserted a
`
`basketball hoop as a “prop” in a “whimsical[]” setting, and captured Jordan in a pose “inspired
`
`more by ballet’s grand jeté than by any pose a basketball player might naturally adopt.” 883 F.3d
`
`1111, 1120-21 (9th Cir. 2018). If anything, Rentmeester’s famous image of Jordan illustrates
`
`what “highly creative and expressive” truly means—and confirms that the photograph at issue
`
`here is undeserving of the label.
`
`
`
`Finally, Xclusive denounces Ms. Hadid’s “preposterous” claim that she “somehow
`
`maintains joint copyright” in the photograph. Opp’n at 7. But that misstates Ms. Hadid’s
`
`position. See MTD at 9-10. Ms. Hadid has simply pointed out that because she is responsible for
`
`certain creative elements that “the copyright laws value and seek to foster” (e.g., her pose),
`
`Xclusive cannot rely on those elements to swing the second fair use factor in its favor. Authors
`
`Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014) (quotation marks omitted).
`
`Third factor. Xclusive next argues that it “cannot seriously be doubted that the minimal
`
`cropping employed by Hadid here is insufficient to render [her] use fair under the third factor.”
`
`Opp’n at 9. Xclusive’s characterization of the cropping here as “minimal” finds no basis in the
`
`Complaint or in the cases on which Xclusive relies. A comparison of the images Xclusive
`
`submitted to the Court reveals that Ms. Hadid is alleged to have reposted about half of the
`
`original image. See Compl., Exs. 1, 3-4. Moreover, in both of the cases that Xclusive cites in its
`
` 
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`‐6- 
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`

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` 
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`opposition, see Opp’n at 8-9, the defendant had used all or nearly all of the work in question, and
`
`even that did not necessarily preclude a fair use finding. See Cariou v. Prince, 714 F.3d 694,
`
`710-11 (2d Cir. 2013); Graham v. Prince, 265 F. Supp. 3d 366, 382 (S.D.N.Y. 2017).
`
`
`
`Xclusive’s further suggestion that the “heart” of the photograph “remains intact” only
`
`doubles downs on the fundamental error that undermines Xclusive’s argument on the second
`
`factor. Opp’n at 10. The cropping here resulted in an image that emphasizes Ms. Hadid’s unique
`
`pose and deemphasizes any independent decisions made by the photographer, such as the
`
`framing of the original image. Because the cropped version takes no more than is necessary to
`
`capture Ms. Hadid’s contributions, the third fair use factor weighs in Ms. Hadid’s favor.
`
`
`
` Fourth factor. Xclusive’s argument on the “most important” fair use factor rests on an
`
`error of law and a misunderstanding of Ms. Hadid’s claim. Fox News Network v. Tveyes, Inc.,
`
`883 F.3d 169, 179 (2d Cir. 2018).
`
`Xclusive contends that Ms. Hadid’s “use of the Photograph serves as a market substitute
`
`for the Photograph, and that alone tips the balance of this factor in favor of Plaintiff.” Opp’n at
`
`10. But a defendant’s use in itself is insufficient to make the fourth factor weigh in a plaintiff’s
`
`favor. Indeed, the Second Circuit has roundly rejected efforts to focus “on possible lost licensing
`
`fees from [a defendant’s] challenged use” because doing so would mean that the fourth factor
`
`would “always favor [a] copyright owner.” TCA Television Corp. v. McCollum, 839 F.3d 168,
`
`186 (2d Cir. 2016) (citing Am. Geophysical Union, 60 F.3d at 929 n.17).4
`
`                                                            
`4 It is true that the Western District of Virginia’s unpublished 1990 decision in Richard Anderson Photography v.
`Brown apparently considered the loss of licensing fees from the defendant in its fair use analysis. No. 85 Civ. 373,
`1990 WL 538929, at *2 (W.D. Va. Apr. 16, 1990); see Opp’n at 10. But that case, which concerned images used
`without permission in a fundraising brochure, is easily distinguished from the instant one, and, in any event, the
`language that Xclusive quotes runs counter to the authorities that bind this Court.
`‐7- 
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` 
`
`

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`Xclusive further contends that if Ms. Hadid’s fair use argument is accepted, “potential
`
`licensees of the Photograph will no longer be incentivized to pay a licensing fee to use the
`
`Photograph” and instead “could simply copy the version published by Hadid for free.” Opp’n
`
`at 10. That argument mistakes Ms. Hadid’s claim. The fair use argument here is unique to Ms.
`
`Hadid and confined by the facts that (1) Ms. Hadid is the subject of the photograph (2) who
`
`participated in its creation and (3) whose celebrity the photographer sought to exploit in the first
`
`place. Unlike the cases on which Xclusive relies, see id. at 10-11, this is not a case where
`
`deeming Ms. Hadid’s use fair would obviate the need for other potential licensees to seek a
`
`license from Xclusive to use the photograph. Cf. TCA Television Corp., 839 F.3d at 186
`
`(accepting plaintiff’s allegation that permitting play’s verbatim incorporation of Abbott and
`
`Costello routine could affect the active market for licensing similar derivative works); House of
`
`Bryant Publications, LLC v. A & E Television Networks, No. 09 Civ. 502, 2009 WL 3673055, at
`
`*9 (M.D. Tenn. Oct. 30, 2009) (agreeing with plaintiff’s argument that if every potential licensee
`
`could rely on defendant’s theory to make unlicensed use of “Rocky Top” song, plaintiff’s
`
`licensing ability would be eroded). Thus, finding fair use in these circumstances would not
`
`deprive Xclusive of any, let alone significant, revenue.
`
`
`
`Other considerations. Xclusive fails altogether to address the “other relevant
`
`considerations” that Ms. Hadid set forth in her brief and that cases like Fox News instruct courts
`
`to consider. MTD at 7, 12. At bottom, this dispute exists only because the photographer sought to
`
`exploit Ms. Hadid’s fame and image, and the photograph at issue was possible only because of
`
`Ms. Hadid’s participation in its creation. Id. at 12. Taking these considerations and the four
`
`statutory factors together, the Court should dismiss the Complaint on fair use grounds. See
`
`Oyewole v. Ora, 291 F. Supp. 3d 422, 436 (S.D.N.Y. 2018).
`
` 
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`‐8- 
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`Case 1:19-cv-00520-PKC-CLP Document 16 Filed 06/05/19 Page 14 of 16 PageID #: 116
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` 
`
`
`
`B.
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`Implied License
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`The implied license doctrine provides a similarly narrow basis on which to dismiss the
`
`Complaint. Xclusive howls that Ms. Hadid’s implied license argument “runs counter to all prior
`
`established legal holdings” and is a “blatant attempt to rewrite established legal doctrine.” Opp’n
`
`at 11-12. Tellingly, Xclusive cites not a single case to back up its melodramatic argument and
`
`fails to identify a single error in any of the cases on which Ms. Hadid relies. See MTD at 13.
`
`
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`Xclusive similarly overreaches with its claim that acknowledging Ms. Hadid’s implied
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`license here would “obliterate[]” the copyrights of “the majority of the world’s authors.” Opp’n
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`at 12. The license that this Court should imply is premised on the undisputed “objective conduct”
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`that enabled this particular photograph to be taken. Joe Hand Promotions, Inc. v. Maupin, No. 15
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`Civ. 6355, 2018 WL 2417840, at *5 (E.D.N.Y. May 25, 2018) (quotation marks omitted).5 The
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`implied license here would be narrow, allowing use of the already published photograph only “in
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`ways that do not interfere with the photographer’s ability to profit.” MTD at 13. Given the
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`contours of this license, and the unique circumstances in which such a license could be implied,
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`dismissing on implied license grounds would hardly have the “obliterating” effect of which
`
`Xclusive warns.
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`III. XCLUSIVE’S SPECULATION IS INSUFFICIENT TO SAVE ITS CLAIM FOR
`CONTRIBUTORY INFRINGEMENT
`
`
`
`Xclusive all but concedes that its contributory infringement claim is insufficient as a
`
`matter of law. To state such a claim, a plaintiff must allege an instance of primary infringement,
`
`                                                            
`5 Xclusive offers up four factual questions about circumstances surrounding the photograph’s creation in an effort to
`suggest that Ms. Hadid’s implied license argument is best decided after discovery. Opp’n at 11-12. Two of
`Xclusive’s questions (“How far was the photographer from Hadid when the Photograph was captured?” and “Did
`Hadid know the photographer?”) have no apparent relevance to whether Ms. Hadid has an implied license. The other
`two (“Did Hadid and the photographer exchange words?” and “Did Hadid ask about using the Photograph?”) are
`pure speculation without any basis. In any event, the Complaint, together with its exhibits, is sufficient to establish
`the existence of an implied license.
`
` 
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`‐9- 
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`Case 1:19-cv-00520-PKC-CLP Document 16 Filed 06/05/19 Page 15 of 16 PageID #: 117
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` 
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`Faulkner v. Nat’l Geographic Enters. Inc., 409 F.3d 26, 40 (2d Cir. 2005), and that the defendant
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`had “knowledge of the underlying direct infringement” and took “substantial” steps to
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`“encourage[] or assist[]” it, Stanacard, LLC v. Rubard, LLC, No. 12 Civ. 5176, 2016 WL
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`462508, at *14 (S.D.N.Y. Feb. 3, 2016) (quotation marks omitted). The Complaint here pleads
`
`no facts that would satisfy these requirements, and the opposition makes no effort to contend
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`otherwise. See Opp’n at 12. Instead, Xclusive muses that it is “safe to assume that a percentage
`
`of the followers that ‘liked’ the infringing [Instagram] post also took the time to ‘share’ the
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`post.” Id. But Xclusive has filed a Complaint in a federal court, where the law requires a plaintiff
`
`to plead “enough facts to state a claim to relief that is plausible on its face,” Bell Atl. Corp. v.
`
`Twombly, 550 U.S. 544, 570 (2007), and provides that “mere conclusory statements” and “naked
`
`assertions devoid of further factual enhancement” will not suffice, Ashcroft v. Iqbal, 556 U.S.
`
`662, 678 (2009) (quotation marks and brackets omitted). Xclusive’s “assum[ption]” is
`
`insufficient to state a claim, and the contributory infringement claim, therefore, must be
`
`dismissed. See, e.g., Wolo Mfg. Corp. v. ABC Corp., 349 F. Supp. 3d 176, 202 (E.D.N.Y. 2018);
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`Reis, Inc. v. Lennar Corp., No. 15 Civ. 7905, 2016 WL 3702736, at *4 (S.D.N.Y. July 5, 2016).
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` 
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`‐10- 
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`Case 1:19-cv-00520-PKC-CLP Document 16 Filed 06/05/19 Page 16 of 16 PageID #: 118
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` CONCLUSION
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`For the reasons set forth above, as well as those set forth in Ms. Hadid’s opening brief,
`
`the Court should grant Ms. Hadid’s motion to dismiss.
`
`Dated: New York, New York
`June 5, 2019
`
`Respectfully submitted,
`
`
`John C. Quinn John C. Quinn
`Matthew J. Craig
`Talia I. Nissimyan
`KAPLAN HECKER & FINK LLP
`350 Fifth Avenue, Suite 7110
`New York, New York 10118
`(212) 763-0883
`jquinn@kaplanhecker.com
`mcraig@kaplanhecker.com
`tnissimyan@kaplanhecker.com
`
`Attorneys for Defendant
`
`‐11- 
`
`