Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 1 of 12 Page ID #: 315
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`17cv6720(DLC)
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`OPINION AND ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`--------------------------------------
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`RAY REYNOLDS,
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`
`Plaintiff,
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`
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`-v-
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`HEARST COMMUNICATIONS, INC.,
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`
`Defendant.
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`--------------------------------------
`
`APPEARANCES
`
`For the plaintiff:
`Richard Liebowitz
`Liebowitz Law Firm, PLLC
`11 Sunrise Plaza, Suite 301
`Valleystream, NY 11580
`
`For the defendant:
`Jonathan R. Donnellan
`Ravi V. Sitwala
`Jennifer D. Bishop
`Hearst Corporation
`300 West 57th Street
`New York, NY 10019
`
`DENISE COTE, District Judge:
`
`
`
`On November 24, 2015, Melania Trump spoke at a rally in
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`support of her husband, then-candidate, Donald J. Trump.
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`Plaintiff Ray Reynolds, a photojournalist, captured a photograph
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`of Mrs. Trump as she was on stage. Mr. Reynolds then provided
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`the photograph to the Trump Campaign (the “Campaign”). The
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`Campaign, in turn, provided the photograph to the defendant,
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`requesting that it be included in a July 2016 article published
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`17cv6720(DLC)
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`OPINION AND ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`--------------------------------------
`
`RAY REYNOLDS,
`
`
`Plaintiff,
`
`
`
`-v-
`
`
`HEARST COMMUNICATIONS, INC.,
`
`
`Defendant.
`
`
`--------------------------------------
`
`APPEARANCES
`
`For the plaintiff:
`Richard Liebowitz
`Liebowitz Law Firm, PLLC
`11 Sunrise Plaza, Suite 301
`Valleystream, NY 11580
`
`For the defendant:
`Jonathan R. Donnellan
`Ravi V. Sitwala
`Jennifer D. Bishop
`Hearst Corporation
`300 West 57th Street
`New York, NY 10019
`
`DENISE COTE, District Judge:
`
`
`
`On November 24, 2015, Melania Trump spoke at a rally in
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`support of her husband, then-candidate, Donald J. Trump.
`
`Plaintiff Ray Reynolds, a photojournalist, captured a photograph
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`of Mrs. Trump as she was on stage. Mr. Reynolds then provided
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`the photograph to the Trump Campaign (the “Campaign”). The
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`Campaign, in turn, provided the photograph to the defendant,
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`requesting that it be included in a July 2016 article published
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 2 of 12 Page ID #: 316
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`on Elle magazine’s online site about Mrs. Trump’s personal
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`fashion style. Over a year later, on September 4, 2017,
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`plaintiff commenced this lawsuit against Hearst Communications,
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`Inc. (“Hearst”), which owns and operates Elle. Hearst has moved
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`for imposition of a bond before the plaintiff may proceed
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`further with this lawsuit. For the following reasons, that
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`application is granted.
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`
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`
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`BACKGROUND
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`The complaint in this action alleged that the defendant
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`published plaintiff’s photograph without a license or
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`plaintiff’s permission. It did not reveal that the plaintiff
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`had in fact provided the photograph to the Campaign.
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`At the initial conference held on December 8, when asked
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`how the defendant could have gotten the photograph, Mr.
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`Liebowitz did not explain that the plaintiff had actually given
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`the photograph to the Campaign.1 Instead, he speculated that
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`Hearst may have taken the photograph from an article that the
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`plaintiff had licensed to publish the photograph.2
`
`
`1 Mr. Liebowitz failed to appear at the pretrial conference
`scheduled for December 1, despite being required as principal
`trial counsel to appear at the conference. Instead, without
`seeking prior permission to do so, Mr. Liebowitz sent an
`associate.
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` 2
`
` Mr. Liebowitz did not identify any article licensed by the
`plaintiff to use the photograph. Nor has he done so in
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`2
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 3 of 12 Page ID #: 317
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`Defense counsel then explained that the Campaign had given
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`the photograph to Elle.com. Only at that point did Mr.
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`Liebowitz acknowledge that the plaintiff had in fact given the
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`photograph to the Campaign. He asserted, however, that the
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`plaintiff had not given the Campaign permission to share the
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`photograph with others or media outlets. Mr. Liebowitz also
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`admitted that he had not reached out to the defendant before
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`commencing this lawsuit, and had not discussed the substance of
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`the case with defense counsel prior to the conference.
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`After the initial pretrial conference, defendant filed a
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`motion on December 15, 2017 to require the plaintiff to post
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`security for costs, including attorney’s fees, as a condition of
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`proceeding with this action. The motion became fully submitted
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`on January 26, 2018.
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`From the submissions made in connection with the motion, it
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`appears that there will be a dispute between the plaintiff and
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`the Campaign over the terms under which the plaintiff provided
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`the photograph to the Campaign. The plaintiff explains that he
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`was photographing Donald Trump’s campaign for office in late
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`2015, and on November 24, photographed Melania Trump on stage at
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`the Myrtle Beach Convention Center in South Carolina. He then
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`provided the photograph, along with others he had taken, to the
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`opposition to this motion.
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`3
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 4 of 12 Page ID #: 318
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`Campaign. He does not identify the person in the Campaign to
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`whom he provided the photographs or recite their conversation.
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`Instead, he asserts that it was his “intention” in sharing the
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`images of the Trump Campaign events “for the Trump Campaign to
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`use them in connection with their campaign-related social media
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`sites, print brochures, or ads sponsored by the Trump Campaign.”
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`Then, on January 21, 2016, he deposited this photograph along
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`with others described as “Donald Trump Campaign photos” from
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`November 15 to January 16 with the copyright office for
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`registration. On the plaintiff’s website, he describes himself
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`as the Photographer for the Donald J. Trump for President
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`campaign.
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`On May 16, 2017, the plaintiff provided the photograph to
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`the Liebowitz law firm, and explained that he had given it to
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`“President Trump to use for campaign use only.” He does not
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`identify any occasion on which he has licensed the photograph
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`for publication.
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`In support of this motion for a bond, the defendant
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`explains the circumstances under which it received the
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`photograph from the Campaign. The photograph was published on
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`the Hearst website Elle.com as part of a story about Melania
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`Trump. Through the Campaign’s representatives at Hiltzik
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`Strategies, Mrs. Trump provided exclusive quotes for the article
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`to Elle.com and Hiltzik Strategies provided a digital file of
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`4
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`
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 5 of 12 Page ID #: 319
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`the photograph. Hiltzik Srategies strongly urged that the
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`article use Mrs. Trump’s chosen photographs, indicating that
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`Elle.com would “get more information and exclusive content” if
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`it agreed to use the pre-selected photographs. Hiltzik
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`Strategies noted that Mrs. Trump felt that her selection of
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`photographs represented “her and the clothing the best way.”
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`
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`Local Civil Rule 54.2 provides:
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`DISCUSSION
`
`The Court, on motion or on its own initiative, may order
`any party to file an original bond for costs or additional
`security for costs in such an amount and so conditioned as
`it may designate. For failure to comply with the order the
`Court may make such orders in regard to noncompliance as
`are just, and among others the following: an order striking
`out pleadings or staying further proceedings until the bond
`is filed or dismissing the action or rendering a judgment
`by default against the non-complying party.
`
`
`S.D.N.Y. Local Civ. R. 54.2. A bond for costs in a copyright
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`action may include defendant’s attorney’s fees, as the Copyright
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`Act permits a prevailing defendant to recover its reasonable
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`attorney’s fees. 17 U.S.C. § 505.
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`A court considers the following factors in determining
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`whether to require security for costs:
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`the financial condition and ability to pay of the party at
`issue; whether that party is a non-resident or foreign
`corporation; the merits of the underlying claims; the
`extent and scope of discovery; the legal costs expected to
`be incurred; and compliance with past court orders.
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`
`Cruz v. American Broadcasting Companies, Inc., Dkt. No.
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`17cv8794, 2017 WL 5665657, at *1 (S.D.N.Y. Nov. 17, 2017)
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`5
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 6 of 12 Page ID #: 320
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`(citing Selletti v. Carey, 173 F.R.D. 96, 100 (S.D.N.Y. 1997)
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`(Chin, J.), aff'd, 173 F.3d 104 (2d Cir. 1999)) (emphasis
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`added). “[S]ecurity of attorney’s fees may be included in a
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`bond of costs” under Rule 54.2. Klipsch Group, Inc. v. ePRO E-
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`Commerce Ltd., 880 F.3d 620, 635 (2d Cir. 2018) (citing Johnson
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`v. Kassovitz, 97cv5789 (DLC), 1998 WL 655534, at *1 (S.D.N.Y.
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`Sept. 24, 1998)).
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`A district court may not dismiss a case for failure to
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`comply with a bond requirement, however, without giving adequate
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`consideration to an asserted inability to pay. Selleti v.
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`Carey, 173 F.3d 104, 111 n.9 (2d Cir. 1991). “[T]he imposition
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`of a security requirement may not be used as a means to dismiss
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`suits of questionable merit filed by plaintiffs with few
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`resources.” Id. at 112. See also Atlanta Shipping Corp. v.
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`Chemical Bank, 818 F.2d 250, 251-52 (2d Cir. 1987) (in affirming
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`a dismissal for failure to post bond, emphasized the absence of
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`a showing of inability to pay). Accordingly, the established
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`inability to pay a bond weighs “heavily” against dismissal of a
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`case for failure to pay. Selleti, 173 F.3d at 112. When the
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`amount of a bond exceeds a party’s ability to pay, a court may
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`accept “partial or periodic payment” or rescind the bond
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`requirement. Id. at 111 n.9.
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`It is a defense to copyright infringement that the alleged
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`infringer possessed a license to use the copyrighted work. See
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`6
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 7 of 12 Page ID #: 321
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`Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998). “A copyright
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`owner who grants a nonexclusive license to use his copyrighted
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`material waives his right to sue the licensee for copyright
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`infringement.” 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 259 n.5
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`(2d Cir. 2015) (citation omitted). “A valid license . . .
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`immunizes the licensee from a charge of copyright infringement,
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`provided that the licensee uses the copyright as agreed with the
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`licensor.” Davis v. Blige, 505 F.3d 90, 100 (2d Cir. 2007).
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`“There are two general categories of licenses: non-
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`exclusive licenses, which permit licensees to use the
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`copyrighted material and may be granted to multiple licensees;
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`and exclusive licenses, which grant to the licensee the
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`exclusive right -- superior even to the copyright owners' rights
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`-- to use the copyright material in a manner as specified by the
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`license agreement.” Id. at 99-100. All grants of exclusive
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`rights in a copyright must be made in writing. 17 U.S.C. §
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`204(a). “Under federal law, nonexclusive licenses may be
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`granted orally, or may even be implied from conduct.” Graham,
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`144 F.3d at 235 (citation omitted). See also 3 Nimmer on
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`Copyright § 10.03. A non-exclusive licensee has no right to
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`sell or to sublicense without express authorization, but an
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`exclusive licensee may do so. See 3 Nimmer on Copyright §
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`10.02. Finally, “[t]he burden of proving that a license exists
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`falls on the party invoking the defense.” Graham, 144 F.3d at
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`7
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 8 of 12 Page ID #: 322
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`236. On the other hand, the burden of proving the scope of a
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`license falls on the copyright holder. Id.
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`Based on the representations by the parties, it would
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`appear that the plaintiff gave digital files of photographs to
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`the Campaign with no explicit agreement restricting their use,
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`and that the Campaign provided the photographs which Mrs. Trump
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`particularly liked, to Elle.com for a story on which the
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`Campaign was cooperating. Whether the plaintiff retained any
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`rights in this photograph will require discovery of the
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`plaintiff and the Campaign. If the Campaign violated the
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`plaintiff’s rights when it asked Elle.com to publish the
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`photograph in its story about Mrs. Trump, then it may be
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`required to indemnify the defendant for any damages which the
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`plaintiff succeeds in establishing that the defendant owes the
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`plaintiff.
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`Although he was not forthcoming in either the complaint or
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`when first addressing the Court at the initial pretrial
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`conference, Mr. Liebowitz understood before filing this lawsuit
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`that the plaintiff gave the photograph to the Campaign for its
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`use and that the photograph had been used in a story with which
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`the Campaign was obviously cooperating. Among other things,
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`Mrs. Trump is quoted in the article. There is no indication in
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`the record that Mr. Liebowitz has ever learned of any explicit
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`or even implied agreement between the plaintiff and the Campaign
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`8
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 9 of 12 Page ID #: 323
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`that restricted the Campaign’s use of the photograph in any way.
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`His client only claims that he did not intend to allow the
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`Campaign to share the photograph, but has provided no evidence
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`of an agreement to that effect between him and the Campaign. If
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`Mr. Liebowitz had spoken with defense counsel before filing this
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`action, he would have had occasion to consider all of the facts
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`recited above and to consider whether it was appropriate to sue
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`Hearst at all, or whether he should sue not only Hearst but also
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`the Campaign.
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`Mr. Liebowitz has filed over 500 cases in this district in
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`the past twenty-four months. He has been labelled a copyright
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`“troll.” McDermott v. Monday Monday, LLC, 17cv9230 (DLC), 2018
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`WL 1033240, at *3 n.4 (S.D.N.Y. Feb. 22, 2018). Mr. Liebowitz
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`has been sanctioned by this Court for failure to comply with
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`court orders and for filing misleading documents with the Court.
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`See Paul Steeger v. JMS Cleaning Services, LLC, 17cv8013 (DLC),
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`ECF No. 22 (imposing sanctions on Mr. Liebowitz and listing
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`cases where Mr. Liebowitz has failed to comply with court
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`orders).3 A number Mr. Liebwoitz’s cases have been dismissed
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`from the bench as frivolous. See Cruz v. Am. Broad. Cos.,
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`17cv8794 (LAK), 2017 WL 5665657, at *2 n.11 (S.D.N.Y. Nov. 17,
`
`
`3 In this case as with others, there is no record that Mr.
`Liebowitz complied with the court order that required him to
`serve a notice of the initial pretrial conference on the
`defendant and to file proof of such service.
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`9
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 10 of 12 Page ID #: 324
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`2017) (Judge Kaplan noted that he “awarded over $121,000 in
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`attorney’s fees against a client of Mr. Liebowitz in three
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`other, related copyright infringement cases that were dismissed
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`from the bench.” (citing Kanongataa v. Am. Broad. Cos., 16cv7392
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`(LAK), 2017 WL 4776981, at *3 (S.D.N.Y. Oct. 4, 2017)).
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`Multiple courts, on their own initiative, have ordered Mr.
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`Liebowitz to show cause why he should not be required to post
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`security for costs as a condition of proceeding further with an
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`action. See, e.g., Pereira v. Kendall Jenner, Inc., 17cv6945
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`(RA) (Mr. Liebowitz voluntarily dismissed the case before
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`responding to the Judge Abrams’ Show Cause Order.); Cruz v. Am.
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`Broad. Cos., 17cv8794 (LAK), 2017 WL 5665657, (S.D.N.Y. Nov. 17,
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`2017) (Mr. Liebowitz informed the court that the parties had
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`settled the case before responding to Judge Kaplan’s Show Cause
`
`Order.). See also Tabak v. Idle Media, Inc., 17cv8285 (AT), ECF
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`No. 5 (Judge Torres ordered Mr. Liebowitz to show cause why the
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`action should not be transferred. Mr. Liebowitz voluntarily
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`dismissed the case before responding to the Order to Show
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`Cause.); Reynolds v. Intermarkets, Inc., 17cv8795 (AT), ECF No.
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`4 (same).
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`Based on this record, the imposition of a bond is entirely
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`appropriate. The defendant seeks a bond of at least $105,000.
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`This is in large part based on the attorney’ fees that Hearst
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`would be entitled to if it prevailed in this action. The
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`10
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 11 of 12 Page ID #: 325
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`plaintiff asserts that he lives paycheck to paycheck and cannot
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`pay a bond.
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`A Court has discretion in setting a bond amount under Rule
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`54.2. The text of the rule states that “[t]he court, on motion
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`or on its own initiative, may order any party to file an
`
`original bond for costs or additional security for costs in such
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`an amount ... as it may designate.” S.D.N.Y. Local Civ. R. 54.2
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`(emphasis added). Given the plaintiff’s impecuniosity, the
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`immediate imposition of bond in an amount limited to $10,000 is
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`appropriate. The defendant will be given an opportunity to take
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`discovery of the plaintiff’s financial condition and the parties
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`will be heard as to whether any additional bond requirement
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`should be imposed in this case.
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`The plaintiff argues that his claims are not frivolous and
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`so a bond is inappropriate in this case. Frivolousness is one
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`ground for imposition of a bond; a bond may be justified based
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`on a variety of other factors, see supra. If the Campaign
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`violated the plaintiff’s rights in providing the photograph to
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`the defendant, the plaintiff’s case may have merit. But, to
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`this point, it has been irresponsibly litigated. For example,
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`in opposition to this motion, Mr. Liebowitz argues that his
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`client’s sworn testimony definitively precludes the possibility
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`that he granted the Campaign the right to distribute his
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`photograph. But Mr. Reynold’s testimony does no such thing: he
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`11
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`Case 1:17-cv-06720-DLC Doc #: 29 Filed 03/05/18 Page 12 of 12 Page ID #: 326
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`merely asserts that he did not have the “intention” of allowing
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`the Campaign to distribute his work for publication. Plaintiff
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`describes no communication between him and the Campaign that
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`could justify the claim made in the opposition brief.
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`Mr. Liebowitz also argues that plaintiff has not willfully
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`disobeyed court orders, obstructed discovery, or increased the
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`cost of litigation. This is demonstrably false. Mr. Liebowitz
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`failed to comply with orders in this litigation, as he has in
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`other lawsuits. Further, the failure to include the Campaign as
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`part of this suit, or to even mention the plaintiff’s
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`relationship with the Campaign in the complaint, will inevitably
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`increase the cost of litigation.
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`CONCLUSION
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`The defendant’s December 15, 2017 motion for a bond is
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`granted. The plaintiff shall file a bond with the Clerk of
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`Court in the amount of ten thousand dollars ($10,000) by Friday,
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`March 16.
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`New York, New York
`March 5, 2018
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`Dated:
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`______________________________
` DENISE COTE
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` United States District Judge
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`12
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