Case 1:19-cv-06043-RPK-RML Document 18 Filed 10/19/20 Page 1 of 10 PageID #: 131
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`-against-
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`Plaintiff,
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`HELEN SUK,
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`TASTEMAKERS GLOBAL, INC.,
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`Defendant.
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`REPORT AND
`RECOMMENDATION
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`19 CV 6043 (RPK)(RML)
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`LEVY, United States Magistrate Judge:
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` By order dated June 22, 2020, the Honorable Rachel P. Kovner, United States
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`District Judge, referred plaintiff’s motion for default judgment to me for report and
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`recommendation. For the reasons explained below, I respectfully recommend that plaintiff’s
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`motion be granted in part and denied in part.
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`BACKGROUND AND FACTS
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`On October 28, 2019, plaintiff Helen Suk (“plaintiff”) commenced this copyright
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`infringement action against defendant Tastemakers Global, Inc. (“defendant”) as a result of
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`defendant’s alleged unauthorized reproduction and public display of two copyrighted
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`photographs owned and registered by plaintiff. (Complaint, dated Oct. 28, 2019 (“Compl.”),
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`Dkt. No. 1, ¶¶ 1-2.) Plaintiff has demonstrated that defendant was properly served with the
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`summons and complaint. (See Affidavit of Service of Sharlene Ryan, sworn to Nov. 1, 2019,
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`Dkt. No. 11, Ex. B.) Despite proper service, defendant has failed to appear or otherwise defend
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`this action. (See Request for Certificate of Default, dated Feb. 24, 2020, Dkt. No. 7.) On
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`February 24, 2020, plaintiff requested a certificate of default pursuant to Federal Rule of Civil
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`Procedure 55(a). (Id.) On March 3, 2020, the Clerk of the Court noted defendant’s default. (See
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`Case 1:19-cv-06043-RPK-RML Document 18 Filed 10/19/20 Page 2 of 10 PageID #: 132
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`Certificate of Default, dated Mar. 3, 2020, Dkt. No. 9.) Plaintiff filed the instant motion for
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`default judgment on May 18, 2020. (Motion for Default Judgment, dated May 18, 2020, Dkt.
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`No. 10.) On June 22, 2020, Judge Kovner referred plaintiff’s motion to me for report and
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`recommendation. (Order, dated June 22, 2020.)
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`Plaintiff is a professional photographer who licenses her photographs to online
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`and print media for a fee, with a principal place of business in Toronto, Canada. (Compl. ¶ 5.)
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`Defendant is a domestic business corporation that is duly organized and existing under the laws
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`of Delaware, with its principal place of business in Brooklyn, New York. (Id. ¶¶ 3, 6.)
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`Defendant owns and operates the website www.Tastemakersafrica.com (the “Website”). (Id. ¶
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`6.) Plaintiff asserts that she photographed, is the author of, and has at all times been the sole
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`owner of all right, title, and interest, including the copyright, to two photographs of Zanzibar (the
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`“Photographs”) that appear on the Website. (Id. ¶¶ 7-8.)
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`Plaintiff asserts that the Photographs were registered with the United States
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`Copyright Office and were respectively given Copyright Registration Numbers VA 2-174-972
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`and VA 2-174-970. (Id. ¶ 9.) Plaintiff alleges that defendant ran an article that included the
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`Photographs on the Website without licensing or obtaining permission or consent from plaintiff.
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`(Id. ¶¶ 10-11.) Plaintiff has submitted a copy of the Photographs and a screenshot of the
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`Photographs on the Website. (See id., Exs. A, B.) Plaintiff requests $5,000 in actual damages as
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`well as $2,550.00 in attorney’s fees and $440 in costs under the Copyright Act. (See Declaration
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`of Richard Liebowitz, Esq., dated May 18, 2020 (“Liebowitz Decl.”), Dkt. No. 11, ¶¶ 15, 20;
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`Statement of Damages, dated May 18, 2020 (“Statement of Damages”), Dkt. No. 12, ¶ 2.)
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`I.
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`STANDARD OF REVIEW
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`DISCUSSION
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`Upon default, defendants are deemed to have admitted all of the well-pleaded
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`allegations in the complaint pertaining to liability, but not those pertaining to damages. See
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`Cotton v. Slone, 4 F.3d 176, 181 (2d Cir. 1993); Greyhound Exhibitgroup, Inc. v. E.L.U.L.
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`Realty Corp., 973 F.2d 155, 158 (2d Cir. 1992); Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61,
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`65 (2d Cir. 1981). Even after properly serving a defendant and securing an entry of default, a
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`plaintiff seeking a default judgment must set forth facts sufficient to state a legitimate cause of
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`action. See Chanel, Inc. v. Schwartz, No. 06 CV 3371, 2007 WL 4180615, at *3 (E.D.N.Y. Nov.
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`19, 2007). The court must draw all reasonable inferences in plaintiff’s favor and should grant a
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`default judgment only if plaintiff’s factual allegations, accepted as true, “establish [defendant’s]
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`liability as a matter of law.” Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009).
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`II.
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`LIABILITY
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`“To establish [copyright] infringement, two elements must be proven: (1)
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`ownership of a valid copyright, and (2) copying of constituent elements of the work that are
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`original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (citation
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`omitted); see also Yamashita v. Scholastic Inc., 936 F.3d 98, 104 (2d Cir. 2019) (same). The
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`first element of a copyright infringement claim can be satisfied “by the introduction into
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`evidence of a Copyright Office certificate of registration.” Sheldon v. Plot Commerce, No. 15
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`CV 5885, 2016 WL 5107072, at *11 (E.D.N.Y. Aug. 26, 2016) (internal quotation marks and
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`citations omitted), report and recommendation adopted, 2016 WL 5107058 (E.D.N.Y. Sept. 19,
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`2016). In the Second Circuit, “a certificate of copyright registration is a prerequisite to asserting
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`a civil copyright infringement claim.” Sohm v. Scholastic Inc., 959 F.3d 39, 52-53 (2d Cir.
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`2020) (citing 17 U.S.C. § 411(a)). When introduced, a certificate of registration may serve as
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`“prima facie evidence of the validity of the copyright and of the facts stated in the certificate.”
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`Sheldon, 2016 WL 5107072, at *10 (internal quotation marks and citation omitted); see also 17
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`U.S.C. § 410(c). After the presentation of such a certificate, the burden of proof shifts to the
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`defendant to prove the invalidity of the plaintiff’s copyright; however, “in the context of a
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`default judgment[,] a timely certificate is sufficient to establish validity.” Korzeniewski v. Sapa
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`Pho Vietnamese Rest. Inc., No. 17 CV 5721, 2019 WL 312149, at *5 (E.D.N.Y. Jan. 3, 2019)
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`(citations omitted), report and recommendation adopted, 2019 WL 291145 (E.D.N.Y. Jan. 23,
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`2019).
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`Here, plaintiff has submitted the certificates of registration for the Photographs;
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`each bears an effective date of registration of October 15, 2019 and names plaintiff as the
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`Photograph author and copyright claimant. (See Letter of Helen Suk, dated July 30, 2020, Dkt.
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`No. 17, Exs. 1, 2.) I therefore find that plaintiff has established ownership of two valid
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`copyrights.
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`To establish the second element of a copyright infringement claim, the “[p]laintiff
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`must meet a ‘minimal’ burden to show that the Photograph is his [or her] original work and
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`allege a violation of his [or her] exclusive rights under § 106.” Pasatieri v. Starline Prods., Inc.,
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`No. 18 CV 4688, 2020 WL 207352, at *2 (E.D.N.Y. Jan 14, 2020) (quoting Sheldon, 2016 WL
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`5107072, at *11). In the context of copyright cases, original “means only that the work was
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`independently created by the author (as opposed to copied from other works), and that it
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`possesses at least some minimal degree of creativity.” Feist Publ’ns, 499 U.S. at 345 (citation
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`omitted). “[T]he requisite level of creativity is extremely low” and “[t]he vast majority of works
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`make the grade quite easily, as they possess some creative spark, no matter how crude, humble
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`or obvious it might be.” Id. (internal quotation marks and citation omitted). “For photographs,
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`originality may be founded upon . . . [their] subject matter, angle of photograph, lighting,
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`determination of the precise time when the photograph is to be taken, the kind of camera, the
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`kind of film, the kind of lens, and the area in which the pictures are taken.” Pasatieri, 2020 WL
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`207352, at *2 (citation and quotation marks omitted).
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`Plaintiff alleges that defendant violated her exclusive rights under § 106 by
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`reproducing and publicly displaying the Photographs on defendant’s Website. (Compl. ¶¶ 13-
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`14); see also Korzeniewski, 2019 WL 312149, at *6 (finding that plaintiff’s allegation that
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`defendant reproduced and displayed plaintiff’s image without plaintiff’s consent was enough to
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`establish that defendant violated plaintiff’s exclusive rights in the image). Moreover, the
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`originality of the Photographs can be inferred from plaintiff’s claim that she is the Photographs’
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`author. See id. (finding that plaintiff’s allegation that he was the sole creator of the “original and
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`unique” image was sufficient to establish originality). Given the minimal burden required to
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`establish infringement of original work, I find that plaintiff has also established the second
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`element of a copyright infringement claim.
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`III. DAMAGES
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`“While a default judgment constitutes an admission of liability, the quantum of
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`damages remains to be established by proof unless the amount is liquidated or susceptible to
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`mathematical computation.” John Hancock Life Ins. Co. v. Perchikov, No. 04 CV 98, 2010 WL
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`185007, at *3 (E.D.N.Y. Jan. 15, 2010) (quoting Flaks v. Koegel, 504 F.2d 702, 707 (2d Cir.
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`1974)). Where, as here, the defendants have never appeared, “the Court’s determination [of
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`damages] is based solely on plaintiff’s submissions.” Gilbert v. Hotline Delivery, No. 00 CV
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`0160, 2001 WL 799576, at *2 (S.D.N.Y. July 10, 2001). “As long as there is a sufficient basis
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`from which to evaluate the fairness of the sum awarded, a court may rely upon detailed affidavits
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`and documentary evidence to determine damages.” In re Crazy Eddie Sec. Litig., 948 F. Supp.
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`1154, 1160 (E.D.N.Y. 1996) (citation and quotation marks omitted).
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`Under the Copyright Act, “an infringer of copyright is liable for either (1) the
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`copyright owner’s actual damages and any additional profits of the infringer, as provided by
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`subsection (b); or (2) statutory damages, as provided by subsection (c).” 17 U.S.C. §504(a).
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`Plaintiff has elected to recover actual damages and additional profits of the infringer. (Liebowitz
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`Decl. ¶¶ 15-19.) Pursuant to Section 504(b), plaintiff seeks a total award of $5,000 in damages.
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`(See Statement of Damages ¶ 2; 17 U.S.C. §504(b).)
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`A. Actual Damages
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`“The Copyright Act grants courts discretion in calculating the actual damages
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`sustained by a prevailing party, as long as the claim is reasonable according to typical market
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`values.” Sheldon, 2016 WL 5107072, at *14 (citation omitted). Because it can be “unreasonable
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`to expect plaintiff’s [sic] to be able to calculate the actual damages they have suffered –
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`particularly in default cases,” id., “courts have adopted a wide range of methods by which to
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`measure actual damages in copyright infringement actions, including the award of lost licensing
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`fees.” Antenna Television v. Aegean Video Inc., No. 95 CV 2328, 1996 WL 298252, at * 1
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`(E.D.N.Y. 1996) (citations omitted). To be awarded actual damages based on lost licensing fees,
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`it is not sufficient to merely show the amount the copyright owner “would have charged.” On
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`Davis v. The Gap, Inc., 246 F.3d 152, 166 (2d Cir. 2001). Plaintiff’s “claim for actual damages
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`must also be reasonable according to typical market values.” Pasatieri, 2020 WL 207352, at *4
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`(internal quotations and citations omitted) (emphasis in original). The amount of claimed
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`damages must be based on fact, not “undue speculation.” On Davis, 246 F.3d at 163 (internal
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`quotation and citation omitted). In other words, there must be “some reasonable basis for [the]
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`computation” even if “the calculation [of actual damages] may only be approximate.” Renna v.
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`Queens Ledger/Greenpoint Star Inc., No. 17 CV 3378, 2019 WL 1061259, at *4 (E.D.N.Y. Feb.
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`13, 2019) (internal quotation and citation omitted), report and recommendation adopted, 2019
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`WL 1062490 (E.D.N.Y. Mar. 6, 2019).
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`In the instant case, plaintiff is seeking $2,500 in actual damages for lost licensing
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`fees. (See Statement of Damages ¶ 4.) While plaintiff correctly notes that “the fair market value
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`of the Photographs is what Plaintiff would have been reasonably entitled to charge had
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`Defendant contacted her to obtain permission,” plaintiff provides no reasonable basis for her
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`estimate that she would be “entitled to charge upwards of $1,250” for the use of each of the
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`Photographs. (See id. ¶¶ 3-4.) Indeed, the only foundation for the claimed fees consists of two
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`identical, unsubstantiated assertions found in plaintiff’s Statement of Damages and the
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`declaration of plaintiff’s counsel. (See Statement of Damages ¶ 4; Liebowitz Decl. ¶ 17.)
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`Absent an affidavit or other documentary evidence, the court is unable to meaningfully evaluate
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`whether the claimed licensing fees are reasonable according to typical market values. As other
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`courts in this circuit have recently concluded in strikingly similar cases brought by plaintiff’s
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`counsel, I find that plaintiff’s nominal showing of lost licensing fees is far too speculative of a
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`basis upon which to award actual damages. See, e.g., McDermott v. NYFirestore.com, Inc., No.
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`18 CV 10853, 2020 WL 2765045, at *3 (S.D.N.Y. May 28, 2020); Pasatieri, 2020 WL 207352,
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`at *3-5; Renna, 2019 WL 1061259, at *4.
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`B. Defendant’s Profits
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`Under section 504(b), plaintiff can also recover “profits of the infringer that are
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`attributable to the infringement and are not taken into account in computing the actual damages.”
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`17 U.S.C. §504(b). To obtain damages for the infringer’s profits, “the copyright owner is
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`required to present proof only of the infringer’s gross revenue. . . .” Id.
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`Plaintiff requests a total of $5,000 in damages but has not specified the amount
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`she is seeking to recover for defendant’s profits. (See Statement of Damages ¶ 2.) Since
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`plaintiff claimed $2,500 in actual damages for lost licensing fees, the logical inference is that
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`plaintiff intended to claim the remaining $2,500 in damages for defendant’s profits from
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`infringement. (See id. ¶¶ 3-6.) Aside from citing to general principles in the case law, plaintiff
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`has provided no information from which the court could reliably ascertain defendant’s gross
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`revenue. (See id. ¶¶ 5-6). “The Court recognizes that the type of evidence relevant to the
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`infringer’s profits is most likely in the possession of the Defendant, who has not appeared in this
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`action. However, this does not absolve Plaintiff of his [or her] statutory responsibility to make
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`an evidentiary showing of the infringer’s profits under 17 U.S.C. § 504(b) or otherwise enable
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`the court to make a reasonable estimate.” Eva’s Photography, Inc. v. Alisa, LLC, No. 20 CV
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`01617, 2020 WL 2904848, at *2 (S.D.N.Y. June 3, 2020) (citations omitted). Since plaintiff has
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`failed to provide any evidence of defendant’s profits, I find that there is no reasonable basis upon
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`which to award damages. See Cuffaro v. Fashionisto LLC, No. 19 CV 7265, 2020 WL 5077449,
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`at *4-*5 (S.D.N.Y. July 9, 2020), report and recommendation adopted, 2020 WL 5076826
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`(S.D.N.Y. Aug. 27, 2020) (declining to award any damages for infringer’s profits absent
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`sufficient evidence); Eva’s Photography, Inc., 2020 WL 2904848, at *2 (same); McDermott,
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`2020 WL 2765045, at *4 (same); Pasatieri, 2020 WL 207352, at *5 (E.D.N.Y. Jan. 14, 2020)
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`(same); Romanowicz v. Alister & Paine, Inc., No. 17 CV 8937, 2018 WL 4762980, at *5
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`(S.D.N.Y. Aug. 3, 2018) (same), report and recommendation adopted, 2018 WL 4759768
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`(S.D.N.Y. Oct. 1, 2018).
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`Accordingly, I respectfully recommend that plaintiff’s request for $5,000 in actual
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`damages and defendant’s profits be denied without prejudice and with leave to renew provided
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`plaintiff offers evidence of some reasonable basis for her computations.
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`IV. ATTORNEY’S FEES & COSTS
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`In addition to damages, plaintiff requests attorney’s fees and costs as permitted
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`under the Copyright Act. See 17 U.S.C. § 505 (“In any civil action under this title, the court in
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`its discretion may allow the recovery of full costs by or against any party other than the United
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`States or an officer thereof.”). However, “[a]n award under that statute is not automatic, but
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`rather lies within the sole and rather broad discretion of the court.” Dermansky v. Tel. Media,
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`LLC, No. 19 CV 1149, 2020 WL 1233943, at *7 (E.D.N.Y. Mar. 13, 2020) (quotation marks and
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`citations omitted).
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`Since I have recommended that plaintiff’s application for damages be denied
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`without prejudice and with leave to renew, I decline, at this juncture, to reach plaintiff’s request
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`for fees and costs. See Pasatieri, 2020 WL 207352, at *6 (refraining from analyzing costs where
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`plaintiff did not provide sufficient evidence to support the claim for actual damages); Reena,
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`2019 WL 1061259, at *4 (same).
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`CONCLUSION
`For the foregoing reasons, I respectfully recommend that plaintiff’s motion for
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`default judgment be granted as to liability and denied without prejudice as to damages, attorney’s
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`fees and costs. Plaintiff must file any renewed motion for damages and costs within thirty (30)
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`days.
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`Plaintiff is directed to serve a copy of this Report and Recommendation on
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`defendant by first-class mail, and to file proof of service with the court. Any objections to this
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`Report and Recommendation must be filed electronically within fourteen (14) days. Failure to
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`file objections within the specified time may waive a right to appeal the District Court’s order.
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`See 28 U.S.C. § 636(b)(1); FED. R. CIV. P. 72, 6(a), 6(d).
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`Respectfully submitted,
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` /s/
`ROBERT M. LEVY
`United States Magistrate Judge
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`Dated: Brooklyn, New York
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` October 19, 2020
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