Case 1:19-cv-09769-AT Document 58 Filed 09/28/21 Page 1 of 31
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`Case 1:19-cv-09769-AT Document 58 Filed 09/28/21 Page
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`ROBERT O’NEIL,
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`USDC SDNY
`DOCUMENT
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`FILED
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`DOC #:
`ELECTRONICALLY
`DATE FILED: _
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`9/28/2021 Plaintiff,
`
`
`-against-
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`19 Civ. 9769
`
`(AT)
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`EMILY RATAJKOWSKI and EMRATA
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`ORDER
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`HOLDINGS, LLC,
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`Defendants.
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`ANALISA TORRES,District Judge:
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`Plaintiff, Robert O’Neil, brings
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`this action
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`alleging copyright infringement by
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`Defendants, Emily Ratajkowski and Emrata
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`Holdings,
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`LLC.
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`Compl.,
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`ECF No. 1. The parties
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`cross-move for summary judgment.
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`ECF Nos. 37, 42. For the reasons stated below, both
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`motions are GRANTEDin part and DENIED in part.
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`BACKGROUND
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`The facts discussed in this
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`are
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`opinion
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`undisputed except where otherwise noted. The
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`Court has drawn all reasonable inferences in favor of the nonmovant. See Costello v.
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`City of
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`Burlington, 632 F.3d 41, 45 (2d Cir.
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`2011).!
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`Ratajkowski is a
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`professional modeland actress, who also heads a
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`clothing line,
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`Inamorata. Def. 56.1 Stmt. at 1-2, ECF No. 47; Pl. 56.1 Stmt.
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`§ 57, ECF No. 45.
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`Ratajkowski
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`also
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`personally
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`runs an
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`Instagram
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`account with the username Emrata
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`(the “Instagram Account”).
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`Def. 56.1 Stmt. at 2-3.
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`Ratajkowski usually posts personalor political photographs, but she has
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`!
`The following facts are drawn from the parties’ pleadings and submissions, including the complaint, the Rule 56.1
`statements of undisputed facts, and the opposing party’s responses. Disputed facts are so noted. Citations to a
`paragraph in the Rule 56.1 statementalso includes the opposing party’s response. Because Defendants did not
`v. Crane Co., No. 12 Civ.
`respondto Plaintiff's 56.1 statement, the Court considers those facts admitted. Kiefer
`7613, 2014 WL 6778704,at *1 (S.D.N.Y. Feb. 3, 2014). However, the court may not
`on the statement of
`rely solely
`undisputed facts contained in the moving party’s Rule 56.1 statement: it also mustbe satisfied that “each statement
`of material fact is supported by record evidencesufficient to
`satisfy the movant’s burden of production[.]” Jackson
`v. Fed. Exp., 766 F.3d 189, 194 (2d Cir. 2014).
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`

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`Case 1:19-cv-09769-AT Document 58 Filed 09/28/21 Page 2 of 31
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`posted “sponsored posts” on her main Instagram feed, and, more rarely, her Instagram Stories,
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`which disappear in 24 hours. Id.; Pl. 56.1 Stmt. ¶ 39; Ratajkowski Dep. Tr. at 17:19–18:2,
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`49:9–14, ECF No. 44-4. The main profile page of the Instagram Account also includes a link to
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`her clothing line. Pl. 56.1 Stmt. ¶ 57. All money she makes through acting, modeling, or the
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`Instagram Account flows to Emrata Holdings, LLC (“Emrata”). Ratajkowski Dep. Tr. at
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`85:3–15.
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`Plaintiff is a “paparazzi photographer,” who generally attempts to take “candid” shots of
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`celebrities unaware of his presence. Def. 56.1 Stmt. at 3.
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`On September 13, 2019, Plaintiff photographed Ratajkowski outside of the Adore Flower
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`Shop in downtown Manhattan. Id. at 7–8. He took nine frames in rapid succession, including
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`the photograph at issue here (the “Photograph”), which depicts Ratajkowski on the street, with
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`her face covered by the bouquet of flowers she pulled in front of her face (an action Plaintiff
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`interprets as her hiding from paparazzi photographers). Photograph, ECF No. 1-1; Def. 56.1
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`Stmt. at 7–8.
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`Plaintiff then uploaded the Photograph to Splash News (“Splash”), Plaintiff’s agency.
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`Def. 56.1 Stmt. at 5–6; Pl. 56.1 Stmt. ¶ 24. Splash posts Plaintiff’s photographs online for
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`licensing to its subscribers, in exchange for 40 percent of any license fees. Def. 56.1 Stmt. at 5;
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`Pl. 56.1 Stmt. ¶ 24. Plaintiff made minimal, if any, income from the Photograph. O’Neil Dep.
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`Tr. at 80:25–81:11, ECF No. 44-5. Plaintiff states he also sent the Photograph to his attorney,
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`who then registered it, along with 747 other photographs, with the United States Copyright
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`Office (the “Copyright Office”); his counsel states that this resulted in registration certification
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`VA 2-173-330 (the “Registration”). Def. 56.1 Stmt. at 8–9, 13; Pl. 56.1 Stmt. ¶ 69; Leibowitz
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`Decl. ¶¶ 8–9, ECF No. 44; Registration, ECF No. 43-4.
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`On September 18, 2019, Ratajkowski posted the Photograph to the Instagram Stories of
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`the Instagram Account. Pl. 56.1 Stmt. ¶ 25; Def. 56.1 Stmt. at 2, 16. It (the “Instagram
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`Photograph”) was automatically deleted after 24 hours. Def. 56.1 Stmt. at 7. The Photograph
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`and the Instagram Photograph are largely the same, except Ratajkowski added the words “mood
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`forever” to the bottom of the Instagram Photograph. Photograph; Instagram Photograph, ECF
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`No. 1-2; Pl. 56.1 Stmt. ¶ 31; Def. 56.1 Stmt. at 7.
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`On October 23, 2019, Plaintiff filed this action, alleging copyright infringement against
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`Defendants. Compl. Defendants move for summary judgment on the grounds that (1) the
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`Photograph is not the subject of a valid copyright, (2) Ratajkowski’s reposting was fair use, (3)
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`Plaintiff has not suffered damages, and (4) Plaintiff cannot show facts establishing Emrata’s
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`involvement. Def. Mem. at 2–4, ECF No. 38. Defendants also seek an order granting sanctions
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`and attorney’s fees. Id. at 3-4. Plaintiff cross-moves for partial summary judgment on the
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`elements of his infringement claim and on Defendants’ affirmative defenses to liability. Pl.
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`Mem. at 2, ECF No. 46.
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`I.
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`Legal Standard
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`DISCUSSION
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`On a motion for summary judgment, the movant must show “that there is no genuine
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`dispute as to any material fact and [that it] is entitled to judgment as a matter of law.” Fed. R.
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`Civ. P. 56(a). The movant bears the initial burden of pointing to evidence in the record “which it
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`believes demonstrate[s] the absence of a genuine issue of material fact.” Celotex Corp. v.
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`Catrett, 477 U.S. 317, 323 (1986). The movant may support an assertion that there is no genuine
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`dispute by “showing . . . that [the] adverse party cannot produce admissible evidence to support
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`the fact.” Fed. R. Civ. P. 56(c)(1)(B). A genuine dispute of material fact exists when “the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). On summary judgment, the Court
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`construes the facts, resolves all ambiguities, and draws all permissible factual inferences in favor
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`of the non-moving party. See Dallas Aerospace, Inc. v. CIS Air Corp., 352 F.3d 775, 780 (2d
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`Cir. 2003).
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`II.
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`Copyright Infringement
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`“To establish copyright infringement, ‘two elements must be proven: (1) ownership of a
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`valid copyright, and (2) copying of constituent elements of the work that are original.’” Williams
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`v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
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`499 U.S. 340, 361 (1991)). Defendants move for summary judgment on the first prong, arguing
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`that (1) Plaintiff has not demonstrated he registered his copyright in the Photograph, and (2) the
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`Photograph is not sufficiently original to qualify as copyrightable. Def. Mem. at 8–13. Plaintiff
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`moves for summary judgment on both prongs. Pl. Mem. at 8–13.
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`A.
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`Registration
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`Under 17 U.S.C. § 410(c), a certificate of registration from the United States Register of
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`Copyrights constitutes prima facie evidence of the valid ownership of a copyright. Jorgensen v.
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`Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003). A plaintiff must demonstrate that a work is
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`protected by a copyright registration. Mantel v. Microsoft Corp., No. 16 Civ. 5277, 2018 WL
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`1602863, at *3 (S.D.N.Y. Mar. 29, 2018). Once registration is established, the burden shifts to
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`the defendant to challenge the validity of that registration. Fonar Corp. v. Domenick, 105 F.3d
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`99, 104 (2d Cir. 1997).
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`Here, it is impossible to tell from the face of the Registration if it covers the Photograph.
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`ECF No. 43-4; Def. 56.1 Stmt. at 13. Richard Leibowitz, then Plaintiff’s attorney, submitted a
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`declaration, stating that it is his firm’s “routine practice” to register its clients’ photographs with
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`the Copyright Office, that he directly supervises the support staff that handles the copyright
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`registration process, including Donna Halperin, that the “content title of the Photograph, as listed
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`on the face of the [Registration], is “Emily Ratajkowski20190913_0005.jpg,” and that
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`registration of the Photograph was carried out “in accordance with [the firm’s] routine practice.”
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`Leibowitz Decl. ¶¶ 5–10. Although Plaintiff’s briefing and 56.1 statement cite a declaration
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`from Donna Halperin, no such document was filed on the docket. See Pl. Mem. at 10, 26; Pl.
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`56.1 Stmt. ¶¶ 66, 68–69, 71–72. It also appears that Leibowitz does not have direct knowledge
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`of the registration, see Leibowitz Decl., and, in the past, has stated that he “did not play any role
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`in the filing” of an application done by the internal staff, Usherson v. Bandshell Artist Mgmt.,
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`No. 19 Civ. 6368 (S.D.N.Y. Feb. 7, 2020), ECF No. 63 ¶ 13. Moreover, the Photograph is not
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`the only file in the Registration. The Court, therefore, cannot discern if it is covered by
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`reviewing the Registration. See Iantosca v. Elie Tahari, Ltd., No. 19 Civ. 4527, 2020 WL
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`5603538, at *4 (S.D.N.Y. Sept. 18, 2020). Nor did Plaintiff personally apply for registration,
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`permitting the Court to rely on his testimony. Masi v. Moguldom Media Grp. LLC, No. 18 Civ.
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`2402, 2019 WL 3287819, at *4 (S.D.N.Y. July 22, 2019) (“Given [p]laintiff’s sworn declaration,
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`and deposition testimony that he included all 45 of the high resolution photos that appeared in his
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`gallery with his registration application, [d]efendant’s speculative statements regarding the scope
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`of the copyright do not create a triable issue of fact as to whether the [r]egistration covers the
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`photographs at issue.” (citations omitted)). The Court, therefore, cannot find that Plaintiff
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`submitted sufficient “hard evidence” with his briefing to demonstrate registration. Mantel, 2018
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`WL 1602863, at *3; Ferdman v. CBS Interactive Inc., 342 F. Supp. 3d 515, 530 (S.D.N.Y.
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`2018).
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`However, after the close of summary judgment briefing, Plaintiff’s counsel requested that
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`the Court take judicial notice of a certified deposit copy he had requested from the Copyright
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`Office. ECF No. 52. His initial letter to the Court, dated November 24, 2020, consisted of (1) a
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`copy of the certificate from the Copyright Office stating that “the attached flash drive is a true
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`copy of the work” deposited with the Copyright Office under the Registration, (2) an image of a
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`flash drive labelled with the registration number, and (3) a copy of the Photograph. ECF No.
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`52-1. Defendants oppose such notice, arguing that the documents should have been produced
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`during discovery, and Plaintiff had failed to authenticate the copy of the Photograph as a file on
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`the flash drive and the flash drive as the drive sent with the certificate. ECF No. 53. Plaintiff’s
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`reply, filed on December 9, 2020, a day late, includes a declaration demonstrating that the copy
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`of the Photograph corresponds to a file saved on the flash drive, and the flash drive was sent
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`from the Copyright Office. ECF No. 55. Defendants object to the late reply. ECF No. 56.
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`The Court concludes that it will permit the one-day late reply and take judicial notice of
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`the deposit copy. Although the extension request was not made in compliance with the Court’s
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`Individual Practices in Civil Cases, the Court recognizes the administrative burden caused by a
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`sudden influx of cases due to Richard Leibowitz’s suspension, ECF Nos. 55, 57, and, therefore,
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`finds good cause for the late submission. And, under Federal Rule of Evidence 201(b), the Court
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`may take judicial notice of public documents such as certifications from the Copyright Office at
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`any point in a litigation, including after the completion of summary judgment briefing. Fed. R.
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`Evid. 201(d); Island Software & Comput. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d
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`Cir. 2005); Otto v. Hearst Commc’ns, Inc., 345 F. Supp. 3d 412, 424 (S.D.N.Y. 2018).
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`Moreover, Plaintiff’s counsel’s declaration sufficiently authenticates the deposit copy. ECF Nos.
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`55-2–55-8; CJ Prods. LLC v. BTC Enters. LLC, No. 10 Civ. 5878, 2012 WL 1999829, at *6 &
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`n.6 (S.D.N.Y. June 1, 2012). And, as opposed to Mantel and Ferdman, discovery sanctions are
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`not appropriate. Here, Plaintiff did not have the deposit copy in his possession during discovery;
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`thus, he did not violate discovery rules by not producing it. ECF No. 39 at 37, 42; cf. Mantel,
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`2018 WL 1602863, at *4 (“Plaintiff represented that he had these documents in his
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`possession . . . [p]laintiff told the [d]efendants that he would produce the documents to them.”);
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`Ferdman, 342 F. Supp. 3d at 526–27, 529–30 (noting that plaintiff attached documents to his
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`summary judgment briefing that had previously been requested and which he had represented he
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`did not possess); see also CJ Prods. LLC, 2012 WL 1999829, at *6 (“[S]ince this litigation is a
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`search for the truth, defendants cannot be prejudiced by the materials.”).
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`With the deposit copy before the Court, Plaintiff has established that the Photograph is
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`registered with the Copyright Office. As Defendants do not otherwise challenge the validity of
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`the Registration, the Court concludes that Plaintiff has demonstrated prima facie evidence of
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`valid copyright ownership. See Iantosca, 2020 WL 5603538, at *5.
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`B.
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`Originality
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`Defendant attempts to rebut the presumption created by the Registration by arguing that
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`the Photograph is insufficiently original. Def. Mem. at 10–13. “To qualify for copyright
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`protection, a work must be original to the author.” Feist Publ’ns., Inc., 499 U.S. at 345. An
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`original work is one that “was independently created by the author” and “possesses at least some
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`minimal degree of creativity.” Id. “Almost any photograph may claim the necessary originality
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`to support a copyright,” as long as there is some originality in “rendition . . . timing . . . [or]
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`creation of the subject.” Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, 450, 452–55
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`(S.D.N.Y. 2005).
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`Courts have found paparazzi photographs original based on their “myriad creative
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`choices, including, for example, their lighting, angle, and focus.” Sands v. CBS Interactive Inc.,
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`No. 18 Civ. 7345, 2019 WL 1447014, at *4 (S.D.N.Y. Mar. 13, 2019). Here, too, the
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`Photograph meets the “extremely low” standard for originality. Feist, 499 U.S. at 345; cf.
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`Bridgeman Art Libr., Ltd. v. Corel Corp., 36 F. Supp. 2d 191, 196–97 (S.D.N.Y. 1999) (finding
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`unoriginal “slavish copies” consisting of photographs of an existing photograph meant to directly
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`reproduce the existing work); Oriental Art Printing, Inc. v. Goldstar Printing Corp., 175 F.
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`Supp. 2d 542, 556–57 (S.D.N.Y. 2001) (finding unoriginal “direct depictions of the most
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`common Chinese food dishes as they appear on the plates served to customers at restaurants,”
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`with no evidence that the photographs were “designed with creativity or art in mind,” rather than
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`“serv[ing] a purely utilitarian purpose” of identifying the dishes on a takeout menu), aff’d in
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`part, appeal dismissed in part sub nom. Oriental Art Printing Inc. v. GS Printing Corp., 34 F.
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`App’x 401 (2d Cir. 2002). Plaintiff selected his location, lighting, equipment, and settings based
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`on the location and timing. Def. 56.1 Stmt. at 8; Pl. 56.1 Stmt. ¶ 21. Moreover, that other
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`photographers took photographs of the same subject matter at the same time does not make the
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`Photograph less original; copyright protects an author’s specific expression capturing a subject,
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`even if others capture the subject as well. Cf. Mannion, 377 F. Supp. 2d at 453 (noting that if
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`another photographer captured the same scene as a copyrighted image, it would not infringe the
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`original image). Therefore, the Photograph has sufficient originality to be copyrighted.
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`Accordingly, Defendants’ motion for summary judgment on the validity of Plaintiff’s copyright
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`is DENIED.
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`Thus, Plaintiff has demonstrated that he owns a valid copyright in the Photograph.
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`Plaintiff has also established that Ratajkowski copied the Photograph. See Williams, 84 F.3d at
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`587 (“In the absence of direct evidence, copying is proven by showing (a) that the defendant had
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`access to the copyrighted work[,] and (b) the substantial similarity of protectible material in the
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`two works.” (quotation marks and citation omitted)); Pl. 56.1 Stmt. ¶¶ 26, 30–31. Accordingly,
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`Plaintiff’s motion for summary judgment regarding Ratajkowski’s infringement is GRANTED.
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`C.
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`Emrata
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`Defendants move for summary judgment dismissing all claims against Emrata. Def.
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`Mem. at 2 n.2. Plaintiff has indicated his intent to dismiss Emrata, ECF No. 28 at 1, but has not
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`done so formally. Plaintiff has not demonstrated Emrata’s liability: it is undisputed that
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`Ratajkowski posts on the Instagram Account in her personal capacity, Def. 56.1 Stmt. at 2, and
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`Plaintiff has demonstrated no facts linking Emrata to the copying of the Photograph.
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`Accordingly, Defendants’ motion for summary judgment as to Emrata is GRANTED.
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`III.
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`Damages
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`Defendants contend that Plaintiff’s claim fails because he cannot establish he is owed
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`money damages. Def. Mem. at 18–23. The Copyright Act provides that a copyright plaintiff
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`may recover either actual damages or statutory damages. 17 U.S.C. § 504. Plaintiff stated in his
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`supplemental disclosures that he is no longer seeking actual damages, ECF No. 39 at 42, nor
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`does he argue for actual damages in this briefing, see Pl. Mem; Pl. Reply at 9–10, ECF No. 51.
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`Therefore, the Court shall only consider whether he is due statutory damages.
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`The Copyright Act permits statutory damages of between $750 and $30,000 per
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`infringement, and up to $150,000 if such infringement was “willful[].” 17 U.S.C. § 504(c).
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`However, statutory damages may not be awarded for infringement of “an unpublished work
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`commenced before the effective date of its registration,” or “commenced after first publication of
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`the work and before the effective date of its registration, unless such registration is made within
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`three months after the first publication of the work.” 17 U.S.C. § 412; see also Troll Co. v.
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`Uneeda Doll Co., 483 F.3d 150, 158 (2d Cir. 2007).
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`Defendants argue that because the Photograph was only posted to Splash, it was not
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`published within the meaning of § 412. Def. Mem. at 21; Def. Opp’n at 19–20, ECF No. 50.
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`The Copyright Act defines publication in relevant part as “the distribution of copies or
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`phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or
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`lending” or “[t]he offering to distribute copies or phonorecords to a group of persons for
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`purposes of further distribution[.]” 17 U.S.C. § 101. The Copyright Office, whose opinion
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`merits deference, further explains that publication occurs where “the offeror”—the copyright
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`owner or someone with their authority—“has completed all the steps necessary for distribution to
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`the public, such that the only further action required is an offeree’s action in obtaining a copy or
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`phonorecord[,]” but not where “distribution of copies or phonorecords requires additional action
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`by the offeror.” U.S. Copyright Office, Compendium of U.S. Copyright Office Practices
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`§§ 1902, 1906.1 (3d ed. 2021), https://www.copyright.gov/comp3/docs/compendium.pdf (the
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`“Copyright Compendium”); Palmer/Kane LLC v. Gareth Stevens Publ’g, No. 15 Civ. 7404,
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`2017 WL 3973957, at *11 (S.D.N.Y. Sept. 7, 2017). Therefore, Splash’s offering the
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`Photograph to its subscribers for the purposes of licensing, carried out with Plaintiff’s authority,
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`constitutes publication. Palmer/Kane LLC, 2017 WL 3973957, at *11; see also Copyright
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`Compendium § 1906.1 (giving as examples of publication an offer by a copyright owner “on a
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`public website to purchase and download an app that they developed and made accessible on that
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`website” and “[a]n advertisement containing pictures of a jewelry design”).
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`Defendants further argue that Splash’s thumbnail postings were merely “samples”, which
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`the Second Circuit in Hub Floral Corp. v. Royal Brass Corp., 454 F.2d 1226 (2d Cir. 1972),
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`recognized as insufficient for publication. Def. Opp’n at 20. However, in Hub Floral, the
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`Second Circuit noted that the full work of the distributed samples—fabric patterns—had not yet
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`been produced, and so, “[s]ince [the copyright holder] was not in a position to commence
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`realizing the benefits of its unique design and the public had not been provided with
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`reproductions, there was no publication.” Id. at 1229. The logical inference of this holding is
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`that if “the samples had been sold or delivered to customers, it would have been deemed
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`publication.” Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, No. 16 Civ. 339, 2017
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`WL 2903180, at *7 (C.D. Cal. Mar. 24, 2017).
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`Here, however, Plaintiff was in a position to immediately realize the benefits of the
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`Photograph, and in fact, Plaintiff earned income on the Photograph between September 13 and
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`19, 2021. O’Neil Dep. Tr. at 80:25–81:4; see Gold Value Int’l Textile, Inc., 2017 WL 2903180,
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`at *7 (noting that plaintiff’s exhibiting smaller images of its designs in books available at its
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`studios “[gave] customers not only the ability to view the designs, but also the ability to acquire
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`them” thereby “showing a willingness to enter into a bargain, such that any reasonable customer
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`would understand the product as being offered to him or her for sale” (quoting Urb. Textile, Inc.
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`v. Cato Corp., No. 14 Civ. 6967, 2016 WL 6804911, at *4 (C.D. Cal. Apr. 1, 2016))); see also
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`Copyright Compendium § 1906.1 (“Publication occurs when fabric, carpet, or wallpaper samples
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`are offered to sales representatives for the purpose of selling those works to wholesalers and
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`retailers.”). Moreover, although Splash’s viewership is limited to its subscribers, ECF No. 49-3,
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`that membership is a far cry from the “few trusted customers” deemed too small a viewership for
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`publication. Peter Pan Fabrics, Inc. v. Dan River Mills, Inc., 295 F. Supp. 1366, 1368
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`(S.D.N.Y.), aff’d, 415 F.2d 1007 (2d Cir. 1969).
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`The Court concludes, therefore, that the Photograph was published when posted on
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`Splash on September 13, 2019. ECF No. 43-2. And, because the Registration’s effective date—
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`October 3, 2019—is within three months of the Photograph’s publication, statutory damages are
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`permitted for Ratajkowski’s infringement, which occurred on September 18, 2019, between
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`publication and the effective date of registration. 17 U.S.C. § 412(2); Registration; Pl. 56.1 Stmt.
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`¶ 25.
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`Moreover, Plaintiff may recover statutory damages despite earning only negligible profits
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`from the Photograph, and, thus, suffering only minimal actual damages. Def. 56.1 Stmt. at 9;
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`O’Neil Dep. Tr. at 80:25–80:4; see Agence France Presse v. Morel, No. 10 Civ. 2730, 2014 WL
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`3963124, at *15 (S.D.N.Y. Aug. 13, 2014) (citing Psihoyos v. John Wiley & Sons, Inc., 748 F.3d
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`120, 127 (2d Cir. 2014)). Although courts are discouraged from awarding windfall statutory
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`damages to plaintiffs, actual damages are only one factor courts consider in determining statutory
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`damages. Cengage Learning, Inc. v. Yousuf, No. 14 Civ. 3174, 2018 WL 6990757, at *3
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`(S.D.N.Y. Dec. 20, 2018), report and recommendation adopted, No. 14 Civ. 3174, 2019 WL
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`162661 (S.D.N.Y. Jan. 10, 2019); Agence France Presse, 2014 WL 3963124, at *15. Therefore,
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`although the Court does not opine on the amount of statutory damages Plaintiff may be due if he
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`prevails at trial, the lack of actual damages does not foreclose his pursuit of statutory damages.
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`Accordingly, Plaintiff is not barred from recovering statutory damages for the
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`infringement, and the Court does not reach the issue of whether his being barred would make
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`summary judgment appropriate. Defendants’ motion for summary judgment based on lack of
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`damages is, therefore, DENIED.
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`IV.
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`Fair Use
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`Plaintiff and Defendants cross-move for summary judgment on whether the posting of the
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`Instagram Photograph was fair use. Fair use, an affirmative defense to copyright infringement,
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`seeks to balance copyright protections and “the ability of [other] authors, artists, and the rest of
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`us to express them—or ourselves by reference to the works of others,” Andy Warhol Found. for
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`Visual Arts, Inc. v. Goldsmith, No. 19-2420, 2021 WL 3742835, at *4 (2d Cir. Aug. 24, 2021)
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`(alteration in original) (quoting Blanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006)), in order to
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`uphold copyright law’s ultimate purpose of “promot[ing] the Progress of Science and useful
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`Arts,” U.S. Const. art. I, § 8, cl. 8.
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`The Copyright Act lists four non-exhaustive factors that courts should consider when
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`evaluating where a use is “fair”:
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`(1) the purpose and character of the use, including whether such use is of a
`commercial nature or is for nonprofit educational purposes;
`(2) the nature of the copyrighted work;
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`Case 1:19-cv-09769-AT Document 58 Filed 09/28/21 Page 13 of 31
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`(3) the amount and substantiality of the portion used in relation to the copyrighted
`work as a whole; and
`(4) the effect of the use upon the potential market for or value of the copyrighted
`work.
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`17 U.S.C. § 107. In weighing these factors, the Court should conduct a “holistic, context-
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`sensitive inquiry” without bright-line rules. Andy Warhol Found., 2021 WL 3742835, at *5.
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`“Fair use is a mixed question of law and fact.” Harper & Row, Publishers, Inc. v. Nation
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`Enters., 471 U.S. 539, 560 (1985). However, the Second Circuit has resolved questions of fair
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`use at the summary judgment stage where the moving party shows there are no genuine issues of
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`material fact. Otto, 345 F. Supp. 3d at 426 (citing Wright v. Warner Books, Inc., 953 F.2d 731,
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`735 (2d Cir. 1991)). Because fair use is an affirmative defense, on which the defendant bears the
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`burden at trial, when a plaintiff challenges it on summary judgment he “may satisfy [his] Rule 56
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`burden by showing that there is an absence of evidence to support an essential element of the
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`non-moving party’s case.” F.D.I.C. v. Giammettei, 34 F.3d 51, 54 (2d Cir. 1994) (citing Celotex,
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`477 U.S. at 325).
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`A.
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`Purpose and Character of the Work
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`1.
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`Transformative Work
`
`The first fair use factor, the purpose and character of the work, focuses primarily on
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`whether the use is “transformative”—that is, “whether the new work merely supersedes the
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`objects of the original creation, or instead adds something new, with a further purpose or
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`different character, altering the first with new expression, meaning, or message.” Andy Warhol
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`Found., 2021 WL 3742835, at *5 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
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`579 (1994)). The “[p]aradigmatic examples” of such transformative uses are those listed in the
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`preamble to § 107: “criticism, comment, news reporting, teaching . . . , scholarship, or research.”
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`Id. (quoting 17 U.S.C. § 107). The Court conducts this inquiry objectively, considering how the
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`Case 1:19-cv-09769-AT Document 58 Filed 09/28/21 Page 14 of 31
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`new use “may reasonably be perceived” without concern for the infringer’s subjective intent. Id.
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`at *5 (quotation marks and citation omitted); Cariou v. Prince, 714 F.3d 694, 707 (2d Cir. 2013).
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`Another court in this district has determined that the purpose of paparazzi photos is to
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`“document the comings and goings of celebrities, illustrate their fashion and lifestyle choices,
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`and accompany gossip and news articles about their lives.” Barcroft Media, Ltd. v. Coed Media
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`Group, LLC, 297 F. Supp. 3d 339, 352 (S.D.N.Y. 2017). Therefore, when news sites have
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`copied paparazzi photographs to document celebrities’ lives, courts have determined those uses
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`are not transformative. Id.; cf. Ferdman, 342 F. Supp. 3d at 534. By contrast, where
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`photographs are used to comment on the image—rather than to illustrate an independent news
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`story—courts have found those uses to be transformative. Ferdman, 342 F. Supp. 3d at 534–35;
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`Barcroft, 297 F. Supp. 3d at 352 (“Display of a copyrighted image or video may be
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`transformative where the use serves to illustrate criticism, commentary, or a news story about
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`that work.” (emphasis in original)); see also Monge v. Maya Mags., Inc., 688 F.3d 1164,
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`1174–76 (9th Cir. 2012). Defendants contend that, by placing the words “mood forever” on the
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`Photograph to post it to her Instagram Stories, the Instagram Photograph “ma[de] commentary
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`and criticism of [Ratajkowski’s] perspective of abusive, aggressive, and harassing practice of
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`paparazzi constantly following her, even when buying flowers for a friend.” Def. Mem. at 16.
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`The Court concludes that there is a genuine issue of material fact regarding whether, and
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`to what extent, Ratajkowski’s use was transformative. A reasonable observer could conclude the
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`Instagram Photograph merely showcases Ratajkowski’s clothes, location, and pose at that time—
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`the same purpose, effectively, as the Photograph. On the other hand, it is possible a reasonable
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`observer could also conclude that, given the flowers covering Ratajkowski’s face and body and
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`the text “mood forever,” the Instagram Photograph instead conveyed that Ratajkowski’s “mood
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`forever” was her attempt to hide from the encroaching eyes of the paparazzi—a commentary on
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`Case 1:19-cv-09769-AT Document 58 Filed 09/28/21 Page 15 of 31
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`the Photograph. See Ratajkowski Dep. Tr. at 39:21–23 (noting that “mood is a millennial way of
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`using an expression or an image to express how someone feels about something”). And, the
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`Court declines to opine on the newsworthiness of Ratajkowski’s battles with paparazzi compared
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`to other events the documentation of which courts have found to be fair use. Ferdman, 342 F.
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`Supp. 3d at 535.
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`2.
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`Commerciality
`
`The first fair use prong also requires an analysis of whether the use was commercial.
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`This inquiry does not turn on whether a defendant’s business is for-profit, Am. Geophysical
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`Union v. Texaco Inc., 60 F.3d 913, 921 (2d Cir. 1994), nor whether “the sole motive of the use is
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`monetary gain,” Otto, 345 F. Supp. 3d at 429 (quoting Harper & Row, 471 U.S. at 562). Instead,
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`“[t]he crux of the profit/nonprofit distinction is . . . whether the user stands to profit from
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`exploitation of copyrighted material without paying the customary price.” Id. (quoting Harper &
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`Row, 471 U.S. at 562). “The greater the private economic rewards reaped by the secondary user
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`(to the exclusion of broader public benefits), the more likely the first factor will favor the
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`copyright holder.” Am. Geophysical Union, 60 F.3d at 922; Assoc. Press v. Meltwater U.S.
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`Holdings, 931 F. Supp. 2d 537, 552 (S.D.N.Y. 2013) (“Where a defendant did not gain ‘direct or
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`immediate commercial advantage’ from the copying, its status as a for-profit enterprise is less
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`relevant.” (quoting Am. Geophysical Union, 60 F.3d at 921)). Conversely, where a use only
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`“trivially affected” the value of a for-profit service, this factor is assigned relatively little weight.
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`Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 83 (2d Cir. 2014). Moreover,
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`the more transformative the new work, “the less will be the significance of . . . commercialism.”
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`Cariou, 714 F.3d at 708; see also Authors Guild v. Google, Inc., 804 F.3d 202, 22