Case 1:19-cv-04958-VSB Document 50 Filed 05/02/22 Page 1 of 10
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`19-CV-4958 (VSB)
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`OPINION & ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`----------------------------------------------------------
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`REBECCA FAY WALSH,
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`Plaintiff,
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`-v-
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`TOWNSQUARE MEDIA, INC.,
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`Defendant.
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`---------------------------------------------------------
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`Appearances:
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`Richard Liebowitz
`Liebowitz Law Firm, PLLC
`Valley Stream, New York
`Counsel for Plaintiff
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`Rachel Fan Stern Strom
`James E. Doherty
`Davis Wright Tremaine LLP
`New York, New York
`Counsel for Defendant
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`X:::::::::::X
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`VERNON S. BRODERICK, United States District Judge:
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`On June 1, 2020, I issued an Opinion and Order in which I granted Defendant’s Rule
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`12(c) motion and dismissed this action, because I found that Plaintiff’s copyright infringement
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`claim was barred by the fair use doctrine. Walsh v. Townsquare Media, Inc., 464 F. Supp. 3d
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`570 (S.D.N.Y. 2020) (the “Opinion”). I also denied Plaintiff’s motion for reconsideration of the
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`Opinion, and I reserved judgment on Defendant’s motion for attorneys’ fees under the Copyright
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`Act, 17 U.S.C. § 505, until the parties filed “materials showing the course of negotiations” to
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`settle this action. Walsh v. Townsquare Media, Inc., 19-CV-4958 (VSB), 2021 WL 4481602, at
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`*3 (S.D.N.Y. Sept. 30, 2021) (“Reconsideration Opinion”). Subsequently, “both parties . . .
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`Case 1:19-cv-04958-VSB Document 50 Filed 05/02/22 Page 2 of 10
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`consent[ed] to the public filing” of “settlement communications,” (Doc. 45), which are now
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`available on the docket, (Settlement Emails).1
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`I have reviewed the record in this case, the parties’ briefing on the issue of attorneys’
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`fees, including the settlement communications, and the applicable law. For the reasons that
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`follow, Defendant’s motion for attorneys’ fees under the Copyright Act is GRANTED.2
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`Discussion
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`Section 505 of the Copyright Act allows district courts to “award a reasonable attorney’s
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`fee to the prevailing party as part of the costs.” 17 U.S.C. § 505. In this regard, § 505 “grants
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`courts wide latitude to award attorney’s fees based on the totality of circumstances.” Kirtsaeng
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`v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985 (2016). Indeed, because of the Copyright
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`Act’s statutory grant of authority, “in any given [copyright] case a court may award fees even
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`though the losing party offered reasonable arguments (or, conversely, deny fees even though the
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`losing party made unreasonable ones).” Hughes v. Benjamin, No. 17-cv-6493 (RJS), 2020 WL
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`4500181, at *3 (S.D.N.Y. Aug. 5, 2020) (Sullivan, J.) (quoting Kirtsaeng, 136 S. Ct. at 1988).
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`My inquiry in determining whether to award fees must account for “the totality of the
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`circumstances” and should consider “factors” that include “frivolousness, motivation, objective
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`unreasonableness, and the need in particular circumstances to advance considerations of
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`compensation and deterrence.” See Kirtsaeng, 136 S. Ct. at 1985–86 (citation omitted); Hello I
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`Am Elliot, Inc. v. Sine, 19 Civ. 6905 (PAE), 2021 WL 1191971, at *4 (S.D.N.Y. Mar. 30, 2021)
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`(“Several nonexclusive factors inform a court’s fee-shifting decisions: frivolousness, motivation,
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`1 “Settlement Emails” refers to Exhibit A to the joint letter of the parties filed with the Court on October 20, 2021.
`(Doc. 45-1.)
`2 Here, I presume familiarity with the Opinion and the Reconsideration Opinion, which thoroughly recount the
`factual background and procedural history of this action.
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`2
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`Case 1:19-cv-04958-VSB Document 50 Filed 05/02/22 Page 3 of 10
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`objective unreasonableness, and the need in particular circumstances to advance considerations
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`of compensation and deterrence.” (internal quotation marks and alterations omitted)). “[S]uch
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`factors may be used only ‘so long as they are faithful to the purposes of the Copyright
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`Act.’” Matthew Bender & Co. v. West Publ’g Co., 240 F.3d 116, 121 (2d Cir. 2001) (quoting
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`Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). I consider these factors and determine
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`that they favor the award of attorneys’ fees in this case.
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`A. Objective Unreasonableness & Frivolousness
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`The factors of objective unreasonableness and frivolousness are often analyzed together,
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`as “[t]he test for frivolousness largely duplicates that of objective unreasonableness.” Boesen v.
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`United Sports Publ’ns, Ltd., 20-CV-1552 (ARR) (SIL), 2021 WL 1145730, at *3 (E.D.N.Y. Mar.
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`25, 2021); TCA Television Corp. v. McCollum, No. 15-CV-4325 (GBD) (JCF), 2017 WL
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`2418751, at *14 (S.D.N.Y. June 5, 2017) (“Cases indicate . . . that frivolousness is a particularly
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`intense form of objective unreasonableness.”), report & recommendation adopted, 2018 WL
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`2932724 (S.D.N.Y. June 12, 2018). “[F]rivolousness and objective unreasonableness are not
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`necessarily coextensive.” Gordon v. McGinley, No. 11 Civ. 1001(RJS), 2013 WL 1455122, at
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`*2 n.3 (S.D.N.Y. Mar. 28, 2013) (Sullivan, J.) (citing Matthew Bender & Co., 240 F.3d at
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`122 (“An objectively unreasonable argument is not necessarily frivolous or made in bad faith.”)).
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`However, here, since “the parties do not brief the issue of frivolousness separately from objective
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`reasonableness,” there is no need to for me to analyze the factors separately. See Agence France
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`Presse v. Morel, 10-cv-2730 (AJN), 2015 WL 13021413, at *5 (S.D.N.Y. Mar. 23, 2015), aff’d
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`sub nom. Presse v. Morel, 645 F. App’x 86 (2d Cir. 2016).
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`I held in the Opinion that the fair use factor of purpose and character of the use—which
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`lies at “‘the heart of the fair use inquiry in this Circuit,’” 464 F. Supp. 3d at 580 (alteration marks
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`3
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`omitted) (quoting On Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001))—“favors
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`Defendant because the Article uses the Photograph for an entirely different purpose than
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`originally intended,” id. at 581. Specifically, I found that “Defendant published the Post, which
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`incidentally contained the Photograph, because the Post—or, put differently, the fact that Cardi B
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`had disseminated the Post—was the very thing the Article was reporting on.” Id. at 582
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`(footnote omitted). After finding that this arguably most-important factor favored finding fair
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`use, I went on to rule that each of the other fair use factors favored defendant. Id. at 585–86.
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`Unlike some fair use cases, this one was not a close call. Although “a news reporting
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`purpose by no means guarantees a finding of fair use,” Swatch Grp. Mgmt. Servs. Ltd. v.
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`Bloomberg L.P., 756 F.3d 73, 85 (2d Cir. 2014), it is well established in this Circuit that “use of
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`a copyrighted photograph” is generally fair “where ‘the copyrighted work is itself the subject of
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`the story, transforming the function of the work in the new context.’” Opinion, 464 F. Supp. 3d
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`at 581 (collecting cases and quoting Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp.
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`3d 339, 352 (S.D.N.Y. 2017)). The same is true where the subject of the story is a work that
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`incidentally contains a plaintiff’s work. See Clark v. Transp. Alternatives, Inc., 18 Civ. 9985
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`(VM), 2019 WL 1448448, at *3 (S.D.N.Y. Mar. 18, 2019). As such, this case was far afield
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`from ones that reject a fair use argument because “‘an image [was used] solely to present the
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`content of that image, in a commercial capacity,’ or [was] otherwise use[d] . . . ‘for the precise
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`reason it was created.’” Opinion, 464 F. Supp. 3d at 581 (quoting BWP Media USA, Inc. v.
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`Gossip Cop Media, Inc., 196 F. Supp. 3d 395, 407 (S.D.N.Y. 2016)).3
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`Critically, Plaintiff’s counsel repeatedly opposed a finding of fair use by taking
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`3 Plaintiff argues that cases involving “the fair use doctrine often present close calls that are difficult to predict,”
`(Doc. 33, at 16 (citation omitted)), but this generic argument fails to grapple with specifics relevant to this case.
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`4
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`Case 1:19-cv-04958-VSB Document 50 Filed 05/02/22 Page 5 of 10
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`“objectively [un]reasonable litigation position[s]” that require one to disregard the actual “facts
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`of this case.” Cf. Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 108 (2d Cir. 2014); Amanze
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`v. Adeyemi, 18 CIV. 8808 (NRB), 2019 WL 2866071, at *10 (S.D.N.Y. July 3, 2019) (granting
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`fees under § 505 where “[n]early every argument advanced by plaintiff in this case was either
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`frivolous or based upon mischaracterizations”), aff’d, 824 F. App’x 86 (2d Cir. 2020). Even
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`though it was “apparent on the face of the Article” that “Defendant did not publish the
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`Photograph simply to present its content,” Opinion, 464 F. Supp. 3d at 581, Plaintiff’s counsel
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`obstinately pretended otherwise. In the briefing leading up to the Opinion, Plaintiff’s counsel
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`argued “that Defendant used the Photograph merely to illustrate ‘a news report about Cardi B at
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`Tom Ford’s fashion show,’” which I found to be “manifestly untrue.” Id. at 581 n.12 (citation
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`omitted). Even in her briefs opposing Defendant’s motion for fees, Plaintiff continues to argue
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`that “[a]ny photograph of Cardi B would have sufficed [for Defendant’s Article], which means
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`the Defendant’s use of the Photograph was entirely interchangeable.” (Doc. 33, at 15.) For the
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`reasons explained in my prior opinions and supra, it is impossible to square Plaintiff’s arguments
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`with the facts of this case. As such, I do not see how a “reasonable lawyer with any familiarity
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`of the law of copyright could have thought that the” incidental use of the Photograph “in the
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`context of news reporting” on the Post “was anything but fair.” See Konangataa v. Am.
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`Broadcastingcompanies, Inc., 16-cv-7382 (LAK), 2017 WL 2684067, at *2 (S.D.N.Y. June 21,
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`2017).4
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`4 Plaintiff’s counsel’s position that there was “good faith intent” behind his arguments, (Doc. 33, at 16), is thus
`belied by the record. Moreover, unlike with awards of attorneys’ fees under Federal Rule of Civil Procedure 11, the
`§ 505 analysis does not require a finding of a lack of good faith for a district court to award attorneys’ fees, as Rule
`11 and § 505 have different analytical frameworks. See, e.g., Sorenson v. Wolfson, 683 F. App’x 33, 36–37 (2d Cir.
`2017) (analyzing a motion for attorneys’ fees under § 505 separately from a motion for sanctions for bad faith
`conduct); Burger-Moss v. Steinman, 127 F.R.D. 452, 453 (S.D.N.Y. 1989) (explaining differences between the
`award of attorneys’ fees “under 28 U.S.C. § 1927 and § 505 of the Copyright Act” and “Rule 11”); Margo v. Weiss,
`No. 96 CIV. 3842(MBM), 1998 WL 765185, at *1 (S.D.N.Y. Nov. 3, 1998) (explaining that “objective
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`5
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`Accordingly, I find that Plaintiff, through her counsel, was objectively unreasonable in
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`pursuit of this litigation, which weighs in favor of an award of fees to Defendant.
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`B. Motive and Bad Faith
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`“The presence of improper motivation in bringing a lawsuit or other bad faith conduct
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`weighs heavily in favor of an award of costs and fees.” Ariel(UK) Ltd. v. Reuters Grp. PLC, No.
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`05-CV-9646 (JFK), 2007 WL 194683, at *4 (S.D.N.Y. Jan. 24, 2007) (citing Matthew Bender &
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`Co., 240 F.3d at 125–27)). One example of improper motivation is “gambl[ing] on an
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`unreasonable legal theory in order to achieve a secondary gain,” such as “the leveraging of a
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`settlement.” Torah Soft Ltd. v. Drosnin, No. 00-CV-5650 (JCF), 2001 WL 1506013, at *5
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`(S.D.N.Y. Nov. 27, 2001); see also Video-Cinema Films, Inc. v. Cable News Network, Inc., No.
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`98-CV-7128 (BSJ), 2003 WL 1701904, at *5 (S.D.N.Y. Mar. 31, 2003) (“Plaintiff’s conduct was
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`nothing more than an obvious effort to use the Copyright Act to secure payment
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`from Defendants for their fair use of the film footage. As such, Plaintiff’s motivation was
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`improper . . . ”). “[I]improper motive and bad faith” may be found where the record indicates a
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`lack of “respectful conduct” or “efforts” that run counter to a goal of “efficiently and
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`inexpensively resolv[ing] a dispute.” See Hughes, 2020 WL 4500181, at *4.
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`Here, “[P]laintiff’s approach to settlement was disingenuous” because her counsel made
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`grossly overinflated settlement demands and failed to engage with Defendant’s settlement
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`unreasonableness” is not required for an award of “fees under [§] 505,” whereas “[u]nder Rule 11, . . . the standard
`for triggering the award is objective unreasonableness.”), aff’d, 213 F.3d 55 (2d Cir. 2000) (internal citation
`omitted). As such, even if I were to find Plaintiff’s counsel’s arguments and litigation positions to have been made
`and taken in good faith, that would not preclude an award of attorneys’ fees under § 505 here. See, e.g., Megna v.
`Biocomp Lab’ys Inc., 225 F. Supp. 3d 222, 224 (S.D.N.Y. 2016) (“An award of attorney’s fees is granted . . . even
`though not necessarily brought in subjective bad faith.”); Sparaco v. Lawler, Matusky, Skelly Engineers LLP, 60 F.
`Supp. 2d 247, 258 (S.D.N.Y. 1999) (“There need not be a finding of bad faith or frivolousness by the plaintiff.”);
`Adsani v. Miller, No. 94 Civ. 9131 (DLC), 1996 WL 531858, at *13 (S.D.N.Y. Sept. 19, 1996) (“several courts in
`this Circuit have held that bad faith need not be found in order to award fees under Section 505” and collecting
`cases).
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`6
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`positions.5 Cf. Boesen, 2021 WL 1145730, at *4. In the Settlement Emails,6 Plaintiff’s counsel,
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`Richard Liebowitz, wrote that he was “authorized to make an offer of $25,000” to settle this case
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`prior to the motion practice that led to the Opinion. (See id. at 3.) In response, Defendant’s
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`counsel wrote twelve lines arguing and explaining why Plaintiff’s $25,000 demand was
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`unreasonable and “unrealistic” and counter-offered “$250.” (Id. at 2–3.) Liebowitz offered a
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`one-line response: “Thanks. I am authorized to come down to $24,750.” (Id. at 2). Liebowitz
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`never grappled with Defendant’s arguments, and he provided no explanation of how Plaintiff’s
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`copyright infringement claim could possibly be worth anything near $25,000.
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`The baselessness of Liebowitz’s large settlement demand speaks to bad faith. Despite the
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`Copyright Act’s dire warnings of statutory damages potentially reaching “$150,000” per work
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`willfully infringed, see 17 U.S.C. § 504(c), “courts in this Circuit commonly award, in cases of
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`non-innocent infringement, statutory damages of between three and five times the cost of the
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`licensing fees the defendant would have paid.” Mango v. BuzzFeed, Inc., 356 F. Supp. 3d 368,
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`374 (S.D.N.Y. 2019) (citation omitted), aff’d, 970 F.3d 167 (2d Cir. 2020). As explained in the
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`Reconsideration Opinion, Defendant likely would have paid somewhere from $175 to $499 to
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`license a “photograph[] of Cardi B.” 2021 WL 4481602, at *3.7 Even increasing that
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`5 The disingenuous and inflated settlement demand Plaintiff made further bolsters my finding of objective
`unreasonableness, as “a major discrepancy between damages demanded and a claim’s reasonable expected value can
`speak to ‘the unreasonable nature of [copyright] claims.’” Reconsideration Opinion, 2021 WL 4481602, at *3
`(quoting Baker v. Urb. Outfitters, Inc., 431 F. Supp. 2d 351, 358–59 (S.D.N.Y. 2006)).
`6 Plaintiff concedes that “the Federal Rules of Evidence” do not “preclude” my consideration of any settlement
`negotiations for the purposes of this motion since, “at the time Defendant filed its section 505 motion . . . the case
`had already been closed and issues of liability had been resolved as a matter of law.” (Doc. 46, at 1 (internal
`citations omitted)).
`7 Plaintiff submitted a letter requesting permission to file a supplementary brief to argue, among other things, that
`“the proper rate for use of a Cardi B photo . . . clocks in at $2900.00.” (Doc. 46, at 3.) I need not address this
`argument since I denied Plaintiff’s request, (Doc. 47), which was within my discretion. See In re Aurora Com.
`Corp., No. 19-B-10843 (SCC), 2021 WL 1255668, at *5 (S.D.N.Y. Apr. 1, 2021) (“The decision to grant a
`requested sur-reply is left to the ‘sound discretion of the court.’” (quoting Moreno-Godoy v. Gallet Dreyer &
`Berkey, LLP, 14-CV-7082 (PAE), 2015 WL 5737565, at *8 (S.D.N.Y. Sept. 30, 2015)). However, considering
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`hypothetical licensing cost to $1,000, Plaintiff’s high-end expected damages would reach $5,000.
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`See Mango, 356 F. Supp. 3d at 374. There is thus no reasonable basis for Plaintiff to have
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`demanded $24,750.
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`I therefore find that this factor strongly favors an award of fees.
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`C. Compensation and Deterrence
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`“Compensation and deterrence . . . exist for the dual purposes of incentivizing parties
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`with strong claims to litigate them and deterring parties with weak claims from embarking on
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`wasteful litigation.” Hughes, 2020 WL 4500181, at *4. Courts in this Circuit recognize the
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`importance of “deter[ring] counsel ‘from bringing unreasonable claims based on a cost/benefit
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`analysis [suggesting] that they can score big if they win and that there will be no adverse
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`consequences if they lose.” Bechler v. MVP Grp. Int’l, Inc., No. 16-CV-8837 (LAP), 2021 WL
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`848024, at *7 (S.D.N.Y. Mar. 5, 2021) (quoting Baker, 431 F. Supp. 2d at 359).
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`As explained supra, this case was objectively unreasonable and pursued under
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`circumstances indicating improper motivations. My finding on those two factors thus supports a
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`finding in Defendant’s favor on this factor. See, e.g., Boesen, 2021 WL 1145730, at *5
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`(“plaintiff’s counsel’s failure to pursue an appropriate settlement aligned with their history of
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`misconduct in federal court”); Hughes, 2020 WL 4500181, at *5; Berg v. M&F W. Prods., Inc.,
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`Case No. 6:19-cv-00418-JDK, 2021 WL 2646223, at *4 (E.D. Tex. June 28, 2021)
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`(compensation and deterrence rationale favored award where Plaintiff “aggressively pursued”
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`claims “in spite of undisputed evidence” that contradicted them).
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`Plaintiff’s argument that the proper rate for use of a Cardi B photograph should be $2,900, I find it to be without
`merit. Plaintiff’s letter includes a screenshot showing the cost of licensing a photograph of Cardi B—taken by a
`photographer who is not Plaintiff—where the scope of the license includes “any placement – print or electronic[]
`intended to indirectly promote a product or service.” (See Doc. 46, at 3.) This license is thus far more extensive
`than anything Defendant reasonably would have sought for its non-promotional, online-only Article. See Opinion,
`464 F. Supp. 3d at 576.
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`Moreover, Plaintiff’s counsel repeatedly brings questionable copyright cases in this
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`district, a fact that many judges have found relevant in granting attorneys’ fees to Plaintiff’s
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`counsel’s adversaries. See, e.g., Bechler, 2021 WL 848024, at *7 (“Plaintiff’s counsel, having
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`filed more than 1,200 copyright cases in this district alone over the last four years, is intimately
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`familiar with the law in this area.”); Usherson v. Bandshell Artist Mgmt., 19-CV-6368 (JMF),
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`2020 WL 3483661, at *1 (S.D.N.Y. June 26, 2020), aff’d sub nom. Liebowitz v. Bandshell Artist
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`Mgmt., 6 F.4th 267 (2d Cir. 2021). I find it particularly notable that, even confining my review
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`to factually and procedurally similar cases, this is not Plaintiff’s “counsel’s first rodeo.” Bechler,
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`2021 WL 848024, at *7. Plaintiff’s counsel has filed multiple cases, with similar facts, of which
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`courts in this district disposed on fair use grounds in preliminary motion practice. See Clark,
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`2019 WL 1448448, at *3; Yang v. Mic Network, Inc., 405 F. Supp. 3d 537, 543 (S.D.N.Y.
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`2019), reconsideration denied, 18-CV-7628 (AJN), 2020 WL 6562403 (S.D.N.Y. Nov. 9, 2020);
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`see also Rudkowski v. MIC Network, Inc., 17 Civ. 3647 (DAB), 2018 WL 1801307, at *3–4
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`(S.D.N.Y. Mar. 23, 2018) (dismissing factually-similar case brought by Plaintiff’s counsel on de
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`minimis use grounds), appeal withdrawn, No. 18-2686, 2018 WL 6536114 (2d Cir. Nov. 2,
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`2018).
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`Thus, given the specifics of this case, “the need for compensation and deterrence favors
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`[D]efendant.” Cf. Boesen, 2021 WL 1145730, at *5.
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`Conclusion
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`For the foregoing reasons, Defendant’s motion for attorneys’ fees under § 505 is
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`GRANTED. Because Defendant only sought to establish liability for attorneys’ fees on this
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`motion, and not the amount of the reasonable attorneys’ fees, see Reconsideration Opinion, 2021
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`WL 4481602, at *3 n.2, Defendant is direct to submit documentation supporting its estimated bill
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`of fees and costs by no later than May 17, 2022. Plaintiff is directed to file any objections to the
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`amount of the fees by no later than May 31, 2022.
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`The Clerk of Court is respectfully directed to terminate the open motion at docket number
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`29.
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`SO ORDERED.
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`Dated: May 2, 2022
`New York, New York
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`______________________
`Vernon S. Broderick
`United States District Judge
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