Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 1 of 21 PageID #: 2878
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`CISERO K. MURPHY, JR.,
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`Plaintiff,
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`v.
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`TYRIEK A. MURPHY,
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`Defendant.
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` 20-cv-02388-JRC
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`DEFENDANT’S REPLY BRIEF IN SUPPORT OF HIS
`MOTION FOR PARTIAL SUMMARY JUDGMENT
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 2 of 21 PageID #: 2879
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT ................................................................................. 1
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`ARGUMENT ................................................................................................................ 1
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`I.
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`II.
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`The Court Should Grant Summary Judgment to Tyriek That Plaintiff is Not
`Entitled to Actual Damages or Profits Because Plaintiff Lacks Evidence in
`Support of and has Abandoned his Claim to Such Damages .......................... 1
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`The Court Should Grant Summary Judgment to Tyriek that Plaintiff is Not
`Entitled to Statutory Damages or Attorneys’ Fees .......................................... 2
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Plaintiff Waited at Least Five Months to Register His Copyrights, which
`is Exactly the Type of Delay that Section 412 Was Enacted to Discourage
` ............................................................................................................... 3
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`Plaintiff Does Not Dispute that Tyriek Completed Big City Nights and
`Exchanged Copies of that Work with Dorrance, His Publisher, Prior to
`Plaintiff Registering his Copyrights ......................................................... 5
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`Reproducing the Allegedly Infringing Work Would Violate Plaintiff’s
`Exclusive Right to Reproduce Under Section 106(1), Regardless of
`Whether the Work is Finalized or Publicly Distributed ............................ 6
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`Plaintiff Has Repeatedly Alleged that Reproduction of Big City Nights
`Violates His Copyright. ........................................................................... 9
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`Tyriek’s Reproduction of Big City Nights was the First in a Series of Acts
`that Allegedly Constitute Copyright Infringement Under Section 412. ... 10
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`Under Section 412, Tyriek’s Reproduction of Big City Nights Before
`Plaintiff Registered His Copyrights Bars Plaintiff’s Statutory Damages
`and Attorneys’ Fees Claim. ................................................................... 13
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`CONCLUSION .......................................................................................................... 16
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 3 of 21 PageID #: 2880
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Bouchat v. Bon-Ton Department Stores, Inc.,
` 506 F.3d 315 (4th Cir. 2007) ..............................................................................5, 10, 11
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`Capitol Records, LLC v. ReDigi Inc.,
` 934 F. Supp. 2d 640 (S.D.N.Y. 2013), aff’d, 910 F.3d 649 (2d Cir. 2018) ..................... 7
`
`Crowley v. Jones,
` 608 F. Supp. 3d 78 (S.D.N.Y. 2022) ........................................................................... 11
`
`Engenium Solutions, Inc. v. Symphonic Technologies, Inc.,
` 924 F. Supp. 2d 757 (S.D. Tex. 2013) ........................................................................... 8
`
`Fournier v. Erickson,
` 202 F. Supp. 2d 290 (S.D.N.Y. 2002) ......................................................................... 10
`
`Golden v. Michael Grecco Productions, Inc.,
` 524 F. Supp. 3d 52 (E.D.N.Y. 2021) ........................................................................... 15
`
`Jackson v. Federal Express,
` 766 F.3d 189 (2d Cir. 2014) .......................................................................................... 2
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`Singh v. Famous Overseas, Inc.,
` 680 F. Supp. 533 (E.D.N.Y. 1988) ................................................................... 3, 4, 5, 14
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`Solid Oak Sketches, LLC v. 2K Games, Inc.,
` No. 16-CV-724-LTS, 2016 WL 4126543 (S.D.N.Y. Aug. 2, 2016) ....................... 12, 13
`
`Sony Corp. v. Universal City Studios, Inc.,
` 464 U.S. 417 (1984) ..................................................................................................... 8
`
`Tangorre v. Mako’s, Inc.,
` No. 01-Civ-4430, 2003 WL 470577 (S.D.N.Y. Jan. 6, 2003) ...................................... 14
`
`Walt Disney Productions v. Filmation Associates,
` 628 F. Supp. 871 (C.D. Cal. 1986) ................................................................................ 8
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`
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`STATUTES
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`17 U.S.C. § 101 ......................................................................................................................... 7
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`17 U.S.C. § 106 ..................................................................................................................... 7, 9
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`17 U.S.C. § 106(1) ................................................................................................................ 7, 9
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 4 of 21 PageID #: 2881
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`17 U.S.C. § 412(1) ........................................................................................................... passim
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`Fed. R. Civ. P. 10(c) .................................................................................................................. 9
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`OTHER AUTHORITIES
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`2 Nimmer on Copyright § 8.02 .................................................................................................. 8
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`iv
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 5 of 21 PageID #: 2882
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`PRELIMINARY STATEMENT
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`Defendant Tyriek A. Murphy (“Tyriek Murphy” or “Tyriek”) respectfully submits this
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`Reply Brief in response to Plaintiff’s Opposition (“Opposition” or “Opp.”) and in further
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`support of his Motion for Partial Summary Judgment (“Motion”). There is no dispute as to any
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`of the facts set forth in Tyriek’s Rule 56.1 Statement, including facts that show Plaintiff’s lack
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`of proof of actual damages or of any profit by Tyriek, and facts that show that Tyriek’s allegedly
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`infringing conduct began before Plaintiff registered his copyright, which bars Plaintiff’s claim
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`of statutory damages or attorneys’ fees under Section 412 of the Copyright Act. See generally
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`Plaintiff’s Response to Defendant’s Statement of Undisputed Material Facts (“Response to
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`SUMF”). Therefore, the Court should grant summary judgment in Tyriek’s favor that Plaintiff
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`is not entitled to actual damages; profits attributable to sale of Big City Nights; or statutory
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`damages and attorneys’ fees for his copyright claim.
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`ARGUMENT
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`I.
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`The Court Should Grant Summary Judgment to Tyriek That Plaintiff is Not
`Entitled to Actual Damages or Profits Because Plaintiff Lacks Evidence in Support
`of and has Abandoned his Claim to Such Damages.
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`Plaintiff concedes facts that show there are no (1) actual damages arising from alleged
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`copyright infringement; (2) actual damages arising from Tyriek’s publication and sale of the
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`book Big City Nights; and no (3) profits attributable to the sale of Big City Nights. Specifically,
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`Plaintiff does not dispute that he “has not provided, or seen, any calculation” supporting the
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`baseless $5 million in “copyright infringement” damages that Plaintiff listed in his Rule 26(a)
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`Disclosures, confirming that — as Plaintiff testified at deposition — this number was simply
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`invented out of whole cloth. (Response to SUMF ¶¶ 29-30.) Moreover, Plaintiff does not
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`dispute the fact that he has “not presented any other evidence that he has suffered any other
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`amount of damages for ‘copyright infringement’ or other alleged violations stemming from
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`Tyriek’s publication and sale of Big City Nights.” (Id. ¶ 31.)
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`Nor does Plaintiff argue that summary judgment should be denied as to actual damages.
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`(See generally Opp. at 3-9.) Plaintiff has therefore abandoned his claims for actual damages
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`and profits, as he must, given the total lack of evidence in support of those claims. See, e.g.,
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`Jackson v. Fed. Express, 766 F.3d 189, 198 (2d Cir. 2014) (noting that the court may “infer
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`from a party’s partial opposition [to summary judgment] that relevant claims or defenses that
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`are not defended have been abandoned”). The Court should, accordingly, should enter summary
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`judgment in favor of Tyriek of no actual damages and no entitlement to profits related to
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`Tyriek’s publication and sale of Big City Nights.
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`The only argument made by Plaintiff in response to this Motion pertains to Plaintiff’s
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`alleged entitlement to statutory damages and attorneys’ fees under the Copyright Act, but as
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`addressed below, he is barred from pursuing such damages due to his delay in registering his
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`copyright.
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`II.
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`The Court Should Grant Summary Judgment to Tyriek that Plaintiff is Not
`Entitled to Statutory Damages or Attorneys’ Fees Because Tyriek’s Allegedly
`Infringing Conduct Began Before Plaintiff Registered his Copyrights.
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`In support of Plaintiff’s claim for statutory damages and attorneys’ fees, Plaintiff argues
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`that Tyriek’s reproduction of Big City Nights in March 2017 does not mean that Tyriek’s alleged
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`infringement “commenced,” as a matter of law, before June 15, 2017, which is the date that
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`Plaintiff first obtained his copyright registration. (See Opp. at 7-9.) Instead, Plaintiff contends
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`that the alleged infringement “commenced” under 17 U.S.C. § 412(1) only when Tyriek first
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`offered Big City Nights “to the public by sale,” which did not occur until August 2017, and by
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`2
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 7 of 21 PageID #: 2884
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`which time Plaintiff had obtained his copyright registration.1 (Id. at 7.) According to Plaintiff,
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`“[t]he right violated herein is plaintiff’s right to distribute copies of the copyrighted work to the
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`public by sale.” (Id.)
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`Plaintiff is not entitled to shoehorn his copyright infringement claim in this manner in
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`order to attempt to fabricate a right to seek statutory damages. His argument is belied by the
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`facts (which are undisputed) and the law. Here, it is undisputed that Tyriek distributed copies of
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`Big City Nights to Dorrance Publishing Company before Plaintiff (1) obtained a copyright
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`registration for his own work, and before Plaintiff (2) published his own work. (See Response
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`to SUMF ¶¶ 16-17, 21.) Because creating and distributing infringing copies would violate the
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`right of reproduction, which is one of the exclusive rights of a copyright holder, the alleged
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`copyright infringement by Tyriek “commenced” at least by March 2017, when Tyriek
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`distributed copies of Big City Nights to Dorrance Publishing Company. And because Tyriek’s
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`reproduction of Big City Nights undisputedly preceded the June 2017 first registration of
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`Plaintiff’s copyright, Plaintiff is barred from recovery of statutory damages and attorneys’ fees
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`as a matter of law under Section 412 of the Copyright Act. (See Defendant’s Brief in Support of
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`Motion for Partial Summary Judgment (“Opening Brief”) at 11-13.)
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`A.
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`Plaintiff Waited at Least Five Months to Register His Copyrights, which is
`Exactly the Type of Delay that Section 412 Was Enacted to Discourage.
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`Section 412 of the Copyright Act, which bars Plaintiff’s statutory damages and
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`attorneys’ fees in this case, was enacted to encourage persons who own copyrightable works to
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`register them promptly. See Singh v. Famous Overseas, 680 F. Supp. 533, 535 (E.D.N.Y. 1988).
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`1
`A portion of Plaintiff’s Opposition also appears to argue that Plaintiff has properly
`included a request for statutory damages as part of his Complaint. (See Opp. at 5-6.) Tyriek
`does not dispute that Plaintiff’s Complaint seeks statutory damages and attorneys’ fees. Rather,
`Tyriek contends that Plaintiff is not entitled to either as a matter of law based on the factual
`record of the case.
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`3
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 8 of 21 PageID #: 2885
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`Congress, in enacting Section 412, recognized that copyright registration is not mandatory, and
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`“should therefore be induced in some practical way.” Id. Copyright owners are induced to
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`register because while the ordinary remedies of (1) actual damages, (2) profits not used as a
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`measure of damages, and (3) under some circumstances, an injunction, are available without
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`copyright registration, the “‘extraordinary’ remedies of statutory damages or attorney’s fees” are
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`denied under Section 412 where any infringement of a copyright in an unpublished work began
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`before copyright registration for that work. Id.
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`Plaintiff’s delay in registering his work is exactly what Section 412 was enacted by
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`Congress to discourage. Plaintiff alleges that he completed his work by at least January 16,
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`2017. (Compl. ¶ 40.) He did not first register his work until June 15, 2017, five months later,
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`(id. at Exhibit B), despite the fact that Plaintiff alleges he had been working on the project that
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`resulted in his registered work for years, starting in 2008, and had ample time to plan for
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`registration of his work. (Id. ¶ 13.)
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`Plaintiff suggests that Congress, in enacting Section 412, did not consider a situation in
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`which, as Plaintiff alleges, an unpublished work is “stolen.” (Opp. at 6.) Plaintiff’s position is
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`unsupported by legal authority and inconsistent with the bright-line rule implemented by
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`Congress, under which the particular circumstances of the alleged infringement are not relevant.
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`It is notable that Congress did consider the appropriate length of a grace period to
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`register a work under the circumstances in which a work is published, achieves rapid popularity,
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`and is copied immediately before the owner of the work registers it — and Plaintiff’s delay
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`exceeds even that grace period. See Singh, 680 F. Supp. at 536. Congress allowed a three-
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`month grace period under Section 412(2), which applies only to published works, to give the
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`4
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`owner of a published work a “reasonable opportunity” to register it after publishing.2 Id. Even
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`were this grace period applicable to this case (which it is not), Plaintiff’s delay of at least five
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`months exceeds even it. And, for unpublished works like Plaintiff’s, courts have applied the
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`bright-line rule of Section 412(1), which provides no grace period, to bar relief where
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`infringement began, for example, a mere month before copyright registration. See Bouchat v.
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`Bon-Ton Dep’t Stores, Inc., 506 F.3d at 324, 329-30 (4th Cir. 2007) (confirming no liability for
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`statutory damages where infringement began in June and copyright was registered in July).
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`Congress elected to allow no grace period at all for unpublished works in order to
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`incentivize rapid copyright registration, and courts, applying Congress’s bright-line rule, have
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`allowed none. This Court should also follow the bright-line rule of Section 412(1) and deny
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`Plaintiff’s claim for statutory damages and attorneys’ fees.
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`B.
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`Plaintiff Does Not Dispute that Tyriek Completed Big City Nights and
`Exchanged Copies of that Work with Dorrance, His Publisher, Prior to
`Plaintiff Registering his Copyrights.
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`Plaintiff’s sole legal contention, on which his entire argument relies, is that Tyriek’s
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`actions that precede Plaintiff’s copyright registrations do not constitute commencement of
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`copyright infringement as a matter of law because they did not involve a sale of the work to the
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`public. (Response to SUMF ¶ 4.)
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`There is no dispute that Tyriek reproduced Big City Nights prior to Plaintiff’s copyright
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`registration dates. Plaintiff does not dispute that in March 2017 — prior to Plaintiff obtaining
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`2 The three-month grace period provided by Section 412(2) applies only if the alleged
`infringement began after the work’s publication, and therefore does not help Plaintiff in this
`case. See Singh, 680 F. Supp. at 536 (“[T]he clause provides a grace period of three months
`after publication during which registration can be made without loss of remedies: full remedies
`could be recovered for any infringement begun during the three months after publication if
`registration is made before that period has ended.”) (citing H.R. Rep. No. 94-1476 (94th Cong.,
`2d Sess. 158) (emphasis added)).
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`5
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 10 of 21 PageID #: 2887
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`his copyright registration — “Tyriek created a complete manuscript of the allegedly infringing
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`work and distributed the manuscript to Dorrance Publishing.”3 (Opp. at 7; see Response to
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`SUMF at ¶¶ 8-9.) Plaintiff also does not dispute that Dorrance returned an edited copy of
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`Tyriek’s manuscript, the allegedly infringing work, to him for approval in May 2017, pursuant
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`to a contract between Tyriek and Dorrance. (Response to SUMF at ¶ 12.) It is also undisputed
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`that a number of additional copies and reproductions of the allegedly infringing work were
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`created and distributed, at Tyriek’s direction, to Dorrance Publishing employees between
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`March 7, 2017 and August 31, 2017. (Id. ¶¶ 10-12.) Tyriek paid Dorrance Publishing to
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`undertake these actions as part of preparing Big City Nights for publication. (Id. ¶ 4.)
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`It is therefore undisputed that Tyriek reproduced Big City Nights and caused other copies
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`of that work to be reproduced prior to the effectuation of Plaintiff’s copyright registration.
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`C.
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`Reproducing the Allegedly Infringing Work Would Violate Plaintiff’s
`Exclusive Right to Reproduce Under Section 106(1), Regardless of Whether
`the Work is Finalized or Publicly Distributed.
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`There is no basis in the Copyright Act or in case law that supports Plaintiff’s claim that
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`only a subset of alleged copyright infringement is relevant to whether Plaintiff may seek
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`statutory damages or attorneys’ fees. In referring to the relevant “right violated” solely as a
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`“distribut[ion] . . . to the public by sale,” (Opp. at 7), Plaintiff is seeking to avoid the bar on
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`statutory damages by narrowing his copyright claim to one of the several exclusive rights
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`granted to a copyright holder. The Copyright Act does not so narrowly limit a copyright
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`3 While the resolution of Tyriek’s Motion does not depend on the manner in which Big City
`Nights was created, it is notable that under Plaintiff’s version of the facts, Tyriek also allegedly
`infringed by reproducing the work in yet another way when he allegedly “copied the
`Copyrighted Works to create the Infringing Work” by stealing a copy of Plaintiff’s handwritten
`manuscript, then typing out that manuscript electronically while “ma[king] only superficial
`changes.” (Compl. ¶¶ 43, 69-70.)
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`6
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`owner’s rights. The Copyright Act grants several exclusive rights in copyrighted works, which
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`include the right:
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`(1)
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`(2)
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`(3)
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`(4)
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`to reproduce the copyrighted work in copies . . . ;
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`to prepare derivative works based upon the copyrighted work;
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`to distribute copies . . . of the copyrighted work to the public . . .
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`in the case of literary . . . works . . . to display the copyrighted work
`publicly.
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`17 U.S.C. § 106. Actions that allegedly implicate any of these exclusive rights are therefore
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`relevant to determining when Tyriek’s allegedly infringing conduct commenced.
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`The list of rights provided by the Copyright Act encompasses not only the right of public
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`distribution and sale, but also the copyright owner’s reproduction right — the exclusive right to
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`“reproduce the copyrighted work in copies.” 17 U.S.C. § 106(1). The reproduction right
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`granted by the Copyright Act is triggered “when a copyrighted work is fixed in a new material
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`object.” Capitol Recs., LLC v. ReDigi Inc., 934 F. Supp. 2d 640, 648 (S.D.N.Y. 2013), aff ’d,
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`910 F.3d 649 (2d Cir. 2018). “[M]aterial object[s]” in which copyrighted literary expression
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`may be embodied include “books” and “manuscripts.” 17 U.S.C. § 101. In short —
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`unauthorized reproduction of copyrighted expression from one object (a manuscript) to another
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`object (whether it is re-typed, handwritten, or electronic) constitutes a violation of the copyright
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`owner’s reproduction right under 17 U.S.C. § 106(1).
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`Infringement of the reproduction right does not require that the infringing work ever be
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`sold or distributed to the public. That is why, for example, copying music or software without a
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`license is (generally speaking) copyright infringement, even if done entirely in the privacy of
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`one’s own home, and even if the copy is not distributed or displayed outside of one’s own home.
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`7
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`See 2 Nimmer on Copyright § 8.02[C] (“[C]opyright infringement occurs whenever an
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`unauthorized copy or phonorecord is made, even if it is used solely for the private purposes of
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`the reproducer”); see also Walt Disney Prods. v. Filmation Assocs., 628 F. Supp. 871, 876 (C.D.
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`Cal. 1986) (“[T]he right of reproduction affords a copyright owner protection against an
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`infringer even if he does not also infringe the § 106(3) right of distribution . . . the fact that the
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`[work] may never be published . . . does not obviate the possibility of infringement.” (citing
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`Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 474 (1984)); Engenium Sols., Inc. v.
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`Symphonic Techs., Inc., 924 F. Supp. 2d 757, 789 (S.D. Tex. 2013) (concluding that “the Court
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`need not determine” whether defendant violated the plaintiff’s exclusive right to distribute
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`copies or prepare derivative works, because the defendant “produc[ed] . . . a factual and
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`actionable copy” of the copyrighted work).
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`For example, in Walt Disney v. Filmation, the defendant Filmation argued that it had not
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`infringed Disney’s film copyright because, while Filmation had created a substantial body of
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`work such as scripts, storyboards, a story reel, and a trailer with the infringing material, it had
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`not created a finished film. 628 F. Supp. at 876. The Walt Disney court rejected that argument
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`and explained that, when a work is prepared over time, each portion of the work that is fixed at
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`any particular time constitutes a potentially actionable copy for purposes of the Copyright Act,
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`even if no final version of the film was created or distributed. Id. So too, here — the
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`manuscripts that Tyriek exchanged with Dorrance, and that were internally distributed within
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`Dorrance, would be actionable copies, even if Big City Nights had not yet been finalized and
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`distributed to the public.
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`8
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`D.
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`Plaintiff Has Repeatedly Alleged that Reproduction of Big City Nights
`Violates His Copyright.
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`Plaintiff’s allegations also belie his argument that “distribution to the public by sale” is
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`the only right at issue in this case. Plaintiff has repeatedly alleged in this case that Tyriek’s
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`alleged infringement included reproduction (17 U.S.C. § 106(1)) of Big City Nights. For
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`example, Plaintiff alleges that “Tyriek copied the Copyrighted Works without Cisero’s
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`authorization, consent, or knowledge,” (Compl. ¶ 94), and that Tyriek’s allegedly infringing
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`conduct includes unauthorized “reproduction, distribution, public display, and sale of the
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`Infringing Work.” (Id. ¶ 135 (emphasis added).)
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`Plaintiff’s cease-and-desist letters, which are exhibits to and therefore part of his
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`Complaint, (see Fed. R. Civ. P. 10(c)), also repeatedly allege that Tyriek’s conduct violates the
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`reproduction right under 17 U.S.C. § 106(1). (See Compl. ¶¶ 75, 79, 90, 97 and Exhibits H, J
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`and M.) Plaintiff first demanded that Tyriek “cease and desist from the reproduction and sale of
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`said work immediately.” (Id. at Exhibit H at 1 (emphasis added).) Plaintiff later reiterated his
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`demand that Tyriek “cease and desist from the reproduction and sale of said work immediately.”
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`(Id. at Exhibit L at 1 (emphasis added).) Plaintiff further stated in that letter that Tyriek is “not
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`authorized to reproduce or profit from” Plaintiff’s allegedly copyrighted work. (Id. (emphasis
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`added).)
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`In those same letters, Plaintiff explicitly asserted that Tyriek’s conduct violates three
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`rights under 17 U.S.C. § 106, including the reproduction right. Plaintiff stated: “the Copyright
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`Act provides that Cisero Murphy has the ‘exclusive’ right to authorize all reproductions of Big
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`City Nights, to distribute copies of Big City Nights, and to publicly display Big City Nights. Id.
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`§ 106. [Your] conduct violates all three of these exclusive rights.” (Id. at Exhibit M at 1-2
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`9
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`Case 1:20-cv-02388-JRC Document 74 Filed 05/07/24 Page 14 of 21 PageID #: 2891
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`(emphasis added).) Plaintiff further demanded that Tyriek “cease all reproduction, sale,
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`distribution and display” of Big City Nights. (Id. at 2 (emphasis added).)
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`Plaintiff cannot have it both ways; claiming that Tyriek infringed Plaintiff’s copyright by
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`reproducing, distributing, and selling the work, but now claiming the alleged infringement was
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`limited to public sale in an attempt to avoid the bar on his claim for statutory damages.
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`E.
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`Tyriek’s Reproduction of Big City Nights was the First in a Series of Acts
`that Allegedly Constitute Copyright Infringement Under Section 412.
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`To reiterate, Tyriek’s allegedly infringing reproductions of Big City Nights that preceded
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`Plaintiff’s copyright registration were the “first . . . in a series of acts constituting continuing
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`[alleged] infringement,” including the eventual distribution of Tyriek’s work to the public.
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`Those first reproductions, undertaken in the course of Tyriek’s retention and employment of
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`Dorrance as his publisher to prepare and publish his book, thereby set the time for when the
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`alleged infringement “commenced.” Bouchat, 506 F.3d 315, 330 (citation omitted); see also
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`Fournier v. Erickson, 202 F. Supp. 2d 290, 297 (S.D.N.Y. 2002) (“If any alleged infringement of
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`an unpublished work occurs before registration, statutory damages are unavailable.”).
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`There is no reasoned basis for (as Plaintiff suggests) separating out the earlier acts of
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`reproduction of Big City Nights from the later distribution of that work to the public.
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`Reproduction of the allegedly infringing work necessarily continued after Plaintiff received his
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`copyright registrations — the distribution of Big City Nights to the public required making a
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`physical or electronic copy of (i.e., reproducing) the book each time the book was distributed to
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`someone.
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`This is consistent with how courts have viewed “commencement” of infringement. For
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`example, the Fourth Circuit’s holding in Bouchat v. Bon-Ton Department Stores, Inc., shows
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`that a series of acts constituting (alleged) infringement may include related acts that violate
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`different exclusive rights of the copyright holder in the same series. In Bouchat, the first
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`alleged copyright violation was the display of a “Flying B” logo to the public by NFL
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`Properties, the licensing arm of the National Football League. Id. at 330 (referencing the June
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`1996 exhibition of the Flying B to the public). That display occurred one month before the
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`registration of the “Flying B” copyright by the plaintiff. Id. at 329. The plaintiff later sued
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`hundreds of manufacturers of Ravens merchandise, who had been licensed by NFLP, for
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`copyright infringement for producing and marketing official Ravens merchandise that included
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`the infringing “Flying B.” Id. at 324. Although the licensees’ infringement took place well after
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`the “Flying B” copyright was registered, the Fourth Circuit held that an initial infringing display
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`of the “Flying B” by NFLP would bar the plaintiff from receiving statutory damages or
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`attorneys’ fees under Section 412 in the suit against the manufacturers. Id. at 330-32. The
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`Section 412 bar applied even through the earlier display was done by a different entity (NFLP
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`rather than the merchandise manufacturers) and even though a different exclusive right was at
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`issue in the earlier and later acts (the display right versus the reproduction and distribution
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`right).
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`In reaching this conclusion, the Fourth Circuit presented a hypothetical series of acts
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`constituting continuing copyright infringement. That hypothetical example further illustrates
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`that the first alleged violation of exclusive rights commences the series of acts even where the
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`particular right violated by particular acts in the series changes over time.4 In the Fourth
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`In a similar example that illustrates that the form of infringement does not affect the
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`application of Section 412, in Crowley v. Jones, 608 F. Supp. 3d 78 (S.D.N.Y. 2022), the
`defendant digitally released an album that used plaintiff’s photograph two months before
`plaintiff registered that photograph, and then released vinyl albums and compact disks bearing a
`derivative of that photograph, and used the photograph in online marketing materials, after the
`registration date. Id. at 89. The Court concluded that these acts were collectively continuous
`and ongoing acts of infringement, such that the plaintiff was barred from recovering statutory
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`Circuit’s example, a sweatshirt manufacturer, M Corp., prints a batch of sweatshirts that include
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`the infringing “Flying B” logo pursuant to a license from NFLP, which had earlier designed and
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`distributed the “Flying B” logo. The court explained that M Corp would thereby have violated
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`the reproduction right under Section 106(1). Id. at 331. But because NFLP’s design and
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`distribution of the “Flying B” preceded the date of plaintiff’s copyright registration, no statutory
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`damages would be awarded in this example. See id. The Fourth Circuit explained that the
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`sweatshirt reproduction would be part of a “series of acts constituting continuing infringement,”
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`the first act of which was the pre-registration design and distribution by NFLP. Id. (citation
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`omitted).
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`Similarly, Tyriek’s reproduction of Big City Nights, followed later by the reproduction
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`and distribution to the public of that work, constitute an ongoing series of acts. Any
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`reproduction of Big City Nights before the registration date is therefore sufficient to invoke
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`Section 412. See Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724, 2016 WL
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`4126543 (S.D.N.Y. Aug. 2, 2016). In Solid Oak, (which addressed video games containing
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`allegedly infringing material), the court noted that pre-registration infringing games barred
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`recovery of statutory damages or attorneys’ fees, because Section 412 sets forth a “bright line
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`rule” such that “any infringement before registration” operates as a bar. Id. at *2-3. So too,
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`here – it does not matter that Big City Nights was first reproduced (implicating Section 106(1))
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`as part the process of preparing it for distribution, and then later, after the asserted copyright
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`registration, copied and distributed to the public (implicating Sections 106(1) and 106(3)). Nor
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`does it matter that Dorrance Publishing was involved in making some of those pre-registration
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`copies pursuant to being hired by Tyriek to perform that and other work. As in the Bouchart
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`damages and attorneys’ fees, without differentiating among the different formats or particular
`uses of the photograph. Id. at 90.
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`example, an earlier act in a series of allegedly infringing acts that is carried out by a non-party
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`constitutes part of the series, and in any case, it was Tyriek who initially reproduced and sent a
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`copy of Big City Nights to Dorrance.
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`F.
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`Under Section 412, Tyriek’s Reproduction of Big City Nights Before
`Plaintiff Registered His Copyrights Bars Plaintiff’s Statutory Damages and
`Attorneys’ Fees Cla