Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 1 of 18
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` 21-cv-5483 (PKC)
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` OPINION
` AND ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`SHANE CROWLEY,
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`Plaintiff,
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`-against-
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`JOSEPH GUILLERMO JONES p/k/a “JIM
`JONES,” an individual doing business as “THE
`FRAUD DEPARTMENT”; RORY WILLIAM
`QUIGLEY p/k/a “HARRY FRAUD,” an
`individual, and doing business as “THE FRAUD
`DEPARTMENT”; EMPIRE DISTRIBUTION
`INC., a California Corporation; 2428392, INC., a
`Delaware corporation, individually and doing
`business as “FYE”; AMOEBA MUSIC, INC., a
`California corporation; and DOES 1-10,
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`Defendants.
`-----------------------------------------------------------x
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`CASTEL, U.S.D.J.
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`In November 2020, plaintiff Shane Crowley photographed defendant Joseph
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`Guillermo Jones, a popular rap artist who performs under the name “Jim Jones.” Crowley later
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`emailed the photographs to Jones’s manager, non-party Tony Villegas. In a text message,
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`Crowley requested that Villegas “have these images credited if used.” Villegas asked Crowley
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`to clarify what he meant, and Crowley responded, “if used on web credit – Shane Crowley and if
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`used on IG tag or @ @shaneroowwley.” Villegas accepted Crowley’s request with the reply,
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`“Ok bet. Got you”
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`According to the Second Amended Complaint (the “Complaint”), one of those
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`photographs (the “Photograph”) was thereafter used without credit as cover art for Jones’s 2021
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`album “The Fraud Department,” exploiting it in a derivative form on both online music services
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 2 of 18
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`and physical albums sold on vinyl and CD. Crowley asserts that these uses went beyond the
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`nonexclusive license that he granted to Villegas in their text-message exchange, and brings
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`claims under the Copyright Act and the Digital Millennium Copyright Act (“DMCA”).
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`Defendants move to dismiss the Complaint pursuant to Rule 12(b)(6), Fed. R.
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`Civ. P. Because the Complaint plausibly alleges that defendants’ exploitation of the Photograph
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`was not permitted by the license from Crowley to Villegas, the motion to dismiss the copyright
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`infringement claims will be denied. Defendants’ motion to dismiss Crowley’s request for
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`statutory damages and attorneys’ fees will be granted, as will the motion to dismiss his claim
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`brought under the DMCA.
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`FACTS ALLEGED IN THE COMPLAINT.
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`The Court accepts the non-conclusory allegations of the Complaint as true and
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`draws all reasonable inferences in favor of Crowley as the party opposing the motion. The
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`Complaint refers to the grant of a license but does not annex the text-message exchange in which
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`the license was purportedly granted.
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`Crowley is a photographer of hip-hop music and culture. (Compl’t ¶ 12.)
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`Defendant Rory William Quigley, who performs under the stage name “Harry Fraud,”
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`collaborated with Jones on an album released in 2021 called “The Fraud Department.” (Compl’t
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`¶¶ 5-6, 19, 50.)
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`The Complaint alleges that Crowley took photographs of Jones that he later
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`transmitted to Villegas, and that a modified version of one of the photographs (the “Photograph”)
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`was used as album art for “The Fraud Department.” On November 8, 2020, Crowley sent the
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`Photograph to Villegas via e-mail. (Compl’t ¶ 15.) The Photograph was later registered with the
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`United States Copyright Office, and appears as follows:
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 3 of 18
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`(Compl’t ¶ 13 & Ex. A.)
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`The Complaint makes frequent reference to a “license” granted from Crowley to
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`Villegas for the Photograph, conditioned on crediting Crowley as the photographer. (See, e.g.,
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`Compl’t ¶¶ 16, 17, 18, 22, 34.) The Complaint does not set forth the precise terms of the license
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`or the words used to grant the license. Defendants’ motion annexes an exchange of text
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`messages between Crowley and Villegas about the use of Crowley’s photographs. (Docket #
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`43.) In opposition, Crowley does not dispute that these messages were the basis of the purported
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`license. (Opp. Mem. at 5-8.) Because these messages appear to constitute the license referenced
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`throughout the Complaint, they are properly considered on this Rule 12(b)(6) motion. Goel v.
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`Bunge, Ltd., 820 F.3d 554, 558-59 (2d Cir. 2016) (documents integral to a complaint may be
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`considered on a motion to dismiss).
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 4 of 18
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`Crowley and Villegas (who goes by the nickname “Capone”) exchanged the
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`following messages on November 9, 2020:
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`(Villegas Dec. Ex. B.)
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`On February 19, 2021, defendants released the album “The Fraud Department” on
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`various digital platforms, and released the album on vinyl and compact disc at some point
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`thereafter. (Compl’t ¶ 19.) The album art featured a derivative and uncredited version of the
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`Photograph, several exemplars of which are reproduced in the Complaint, including the
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`following:
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`(Compl’t ¶¶ 25-27.)
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`Crowley asserts that he did not authorize this use and exploitation of the
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`Photograph. (Compl’t ¶ 22.) The Complaint states, “To the extent Plaintiff at one point granted
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`a limited, non-exclusive license, that license failed for lack of consideration and an unmet
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`condition, and has since been revoked.” (Compl’t ¶ 22.) Crowley also asserts that defendants
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`ignored a cease-and-desist letter than he sent on March 31, 2021. (Compl’t ¶ 24.)
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`Count One of the Complaint asserts a claim of copyright infringement against all
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`defendants and Count Two alleges vicarious and/or contributory copyright infringement against
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`all defendants. (Compl’t ¶¶ 29-46.) Count Three alleges that defendants violated the Digital
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`Millennium Copyright Act, 17 U.S.C. § 1202, by adding their own names and logo and removing
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`Crowley’s copyright-management information. (Compl’t ¶¶ 47-54.)
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`Defendants assert that their exploitation of the Photograph was consistent with the
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`license granted in the text-message exchange, and that the Complaint therefore does not
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`plausibly allege acts of copyright infringement. They also argue that the Complaint does not
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 6 of 18
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`plausibly allege a violation of the DMCA, both because Crowley has not alleged that he included
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`any copyright management information on the Photograph and because the version of the
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`Photograph used as album art is a derivative of the original image.
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`RULE 12(b)(6) STANDARD.
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`Rule 12(b)(6) requires a complaint to “contain sufficient factual matter, accepted
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`as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662,
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`678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In assessing
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`the sufficiency of a pleading, a court must disregard legal conclusions, which are not entitled to
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`the presumption of truth. Id. Instead, the Court must examine the well-pleaded factual
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`allegations and “determine whether they plausibly give rise to an entitlement to relief.” Id. at
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`679. “Dismissal is appropriate when ‘it is clear from the face of the complaint, and matters of
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`which the court may take judicial notice, that the plaintiff’s claims are barred as a matter of
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`law.’” Parkcentral Global Hub Ltd. v. Porsche Auto. Holdings SE, 763 F.3d 198, 208-09 (2d
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`Cir. 2014) (quoting Conopco, Inc. v. Roll Int’l, 231 F.3d 82, 86 (2d Cir. 2000)).
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`“A motion brought under Rule 12(b)(6) challenges only the legal feasibility of a
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`complaint. The test of a claim’s substantive merits is reserved for the summary judgment
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`procedure, governed by [Rule] 56, where both parties may conduct appropriate discovery and
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`submit the additional supporting material contemplated by that rule.” Goel, 820 F.3d at 558-59
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`(citation and quotation marks omitted). A court adjudicating a motion to dismiss may consider
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`“only a narrow universe of materials” beyond the pleadings, including documents incorporated
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`into the complaint by reference and matters of which judicial notice may be taken. Id. at 559. A
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`court also may consider a document that is “integral” to the complaint, even if it is not expressly
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`referenced – most typically a contract or other legal document. Id. Fact-based arguments raised
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 7 of 18
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`in declarations or exhibits that are not integral to a complaint are not properly considered on a
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`Rule 12(b)(6) motion. See, e.g., Marquette Transportation Fin., LLC v. Soleil Chartered Bank,
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`2020 WL 122975, at *6 (S.D.N.Y. Jan. 16, 2020) (Schofield, J.).
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`DISCUSSION.
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`I.
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`Defendants’ Motion to Dismiss Based on the “Nonexclusive License”
`from Crowley Will Be Denied.
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`Defendants urge that Counts One and Two fail to plausibly allege copyright
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`infringement because Crowley granted defendants a nonexclusive license to use the Photograph.
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`In opposition, Crowley notes that his text messages with Crowley referenced publication of his
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`work on the “web” and Instagram, and that he did not consent to any broader exploitation.
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`Based on the Complaint and the language of the text messages, the Court concludes that the
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`Complaint plausibly alleges copyright infringement.
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`“‘Copyright infringement is established when the owner of a valid copyright
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`demonstrates unauthorized copying.’” Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy,
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`Inc., 338 F.3d 127, 131 (2d Cir. 2003) (quoting Castle Rock Entm’t, Inc. v. Carol Publ’g Group,
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`Inc., 150 F.3d 132, 137-38 (2d Cir. 1998)). However, a “[a] copyright owner who grants a
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`nonexclusive license to use his copyrighted material waives his right to sue the licensee for
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`copyright infringement.” Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998). “The existence of
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`a license is an affirmative defense, placing upon the party claiming a license the burden of
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`coming forward with evidence of one.” Spinelli v. Nat’l Football League, 903 F.3d 185, 197 (2d
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`Cir. 2018) (quotation marks omitted). An affirmative defense “may be raised in a pre-answer
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`Rule 12(b)(6) motion if the defense appears on the face of the complaint.” Chen v. Major
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`League Baseball Properties, Inc., 798 F.3d 72, 81 (2d Cir. 2015) (quotation marks omitted).
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 8 of 18
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`The existence of a license “requires proof, at a minimum, ‘of a meeting of the
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`minds between the licensor and licensee such that it is fair to infer that the licensor intended to
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`grant a nonexclusive license.’” Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d
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`339, 349 (S.D.N.Y. 2017) (Furman J.) (quoting Assoc. Press v. Meltwater U.S. Holdings, Inc.,
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`931 F.Supp.2d 537, 562 (S.D.N.Y. 2013) (Cote, J.)). “‘There can be no meeting of the minds . . .
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`where essential material terms are missing.’” Id. (quoting Vian v. Carey, 1993 WL 138837, at
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`*3 (S.D.N.Y. Apr. 23, 1993) (Mukasey, J.)). “By contrast, where only the scope of the license is
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`at issue, it is the copyright owner’s burden to show that the defendant’s use of a work was
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`unauthorized.” Spinelli, 903 F.3d at 197 (quotation marks and bracket omitted). “If a license is
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`limited in scope and the licensee acts outside the scope, the licensor can bring an action for
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`copyright infringement.” Sohm v. Scholastic Inc., 959 F.3d 39, 46 (2d Cir. 2020) (quotation
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`marks and alteration omitted).
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`Relying solely on the allegations of the Complaint and without consideration of
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`the text-message exchange, the Complaint comfortably states a claim for relief. It asserts that
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`“any license that at one point existed would not have permitted use of the Subject Photograph
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`without credit, or on apps or physical album covers, and it would not allow for sublicensing or
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`assignment.” (Compl’t ¶ 16.) But considering the text-message exchange, as defendants urge,
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`does not alter the results. As noted, the Court may consider the text-message exchange on this
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`motion without converting it into one for summary judgment. Defendants urge that, based on the
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`text of the Complaint and the text messages between Crowley and Villegas, Crowley granted a
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`nonexclusive license to exploit the Photograph, including as digital album art. But the Court
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`concludes that a reasonable fact finder could find that any license reflected in the message
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`exchange is limited in scope and does not extend to the accused work.
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`In their text exchange, after Crowley requested that he be credited as
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`photographer, Villegas asked “[w]hat you mean exactly,” and Crowley specified his request for
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`credit on the Photograph “if used on web” and “if used on IG . . . .” However, the Complaint
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`plausibly describes exploitation of the Photograph that goes beyond the “web” and Instagram,
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`and asserts that it was used in derivative form as art for “The Fraud Department” album on apps,
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`online retail sites and streaming platforms, as well as physical albums. (Compl’t ¶¶ 14, 16, 19.)
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`Defendants urge that Crowley’s reference to the “web” should be understood to include a variety
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`of online platforms, and that the mention of Instagram amounted to a license to post the
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`Photograph to apps other than Instagram. But, at the pleading stage, the Court is unable to
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`conclude that the spare language of the text exchange demonstrated that Crowley and Villegas
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`agreed that the word “web” would encompass the Photograph’s use on apps and streaming
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`platforms. Indeed, Crowley’s specific reference to Instagram appears to reflect the
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`understanding that any photograph’s exploitation on apps would be limited to Instagram.
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`Defendants also make factual assertions that are not properly considered on a
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`motion to dismiss, and the Court declines to consider them on this motion. The Declaration of
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`Eamon Mulligan, an officer at defendant Empire Distribution, Inc., asserts that the Photograph
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`was not used in CD and vinyl versions of “The Fraud Department” album. (Docket # 44.) The
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`Declaration of Leonard F. Lesser also describes the declarant’s experience of purchasing CD and
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`vinyl copies of “The Fraud Department” that did not include the Photograph as cover art.
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`(Docket # 45.) However, the Complaint alleges that the Photograph was, in fact, used for
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`physical albums, and it includes screenshots from retail sites that show a derivative of the
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`Photograph as the packaging art on physical albums. (Compl’t ¶¶ 26-27.) These screenshots
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`support the plausibility of Crowley’s non-conclusory, factual assertion that the Photograph was
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`used as art on physical albums. Similarly, Villegas’s factual assertions that he “had forgotten”
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`that Crowley had taken the Photograph, that the photograph “was easily replaced” by other art,
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`and that the Photograph was used only in “web based posts and thumbnails” are not properly
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`considered on a motion to dismiss. (Villegas Dec. ¶¶ 10-12.) Because the Complaint plausibly
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`alleges that defendants exploited the Photograph in mediums that were not included in the
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`nonexclusive license, the motion to dismiss the copyright-infringement claims in Counts One
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`and Two will be denied.
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`II.
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`Defendants’ Arguments Related to Photographer Credit and Consideration
`Do Not Require the Dismissal of Any Claim.
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`The Complaint asserts that defendants acted contrary to the parties’ license by
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`exploiting the Photograph without properly crediting Crowley. (Compl’t ¶¶ 14, 16-17, 19, 22.)
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`It describes artist credit as a “condition” of the license and asserts that defendants’ failure to
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`credit Crowley resulted in the license’s termination. (Compl’t ¶ 17.)
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`In moving to dismiss, defendants urge that any failure to credit Crowley
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`amounted to a breach of contract but does not allow for a claim of copyright infringement.
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`“Generally, ‘if the licensee’s improper conduct constitutes a breach of a covenant undertaken by
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`the licensee and if such covenant constitutes an enforceable contractual obligation, then the
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`licensor will have a cause of action for breach of contract,’ not copyright infringement.” Sohm,
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`959 F.3d at 45 (quoting Graham, 144 F.3d at 236). “However, ‘if the nature of a licensee’s
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`violation consists of a failure to satisfy a condition to the license, it follows that the rights
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`dependent upon satisfaction of such condition have not been effectively licensed, and therefore,
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`any use by the licensee is without authority from the licensor and may therefore, constitute an
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`infringement of copyright.’” Sohm, 959 F.3d at 45 (quoting Graham, 144 F.3d at 237). Under
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`New York law, the terms of an agreement are presumed to be covenants rather than conditions,
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`but “[l]inguistic conventions of condition – such as ‘if,’ ‘on condition that,’ ‘provided that,’ ‘in
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`the event that,’ and ‘subject to[ ]’ – can ‘make plain’ a condition precedent.” Id. at 45-46
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`(collecting cases).
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`By requesting credit “if used on web” and “if used on IG,” Crowley used the type
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`of “linguistic convention[ ] of condition” that plausibly supports reading the exchange as setting
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`forth a condition rather than a covenant. Id. At the Rule 12(b)(6) stage, where every reasonable
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`inference is drawn in favor of the plaintiff as non-movant, the use of the conditional “if”
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`plausibly alleges that the requirement of photo credit was a condition of the license rather than a
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`covenant. The ultimate construction of the license is better undertaken after the close of
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`discovery on a more complete factual record.
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`The Complaint also asserts that the “license failed for lack of consideration . . . .”
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`(Compl’t ¶ 22.) Defendants urge that they granted consideration to Crowley because they agreed
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`to give him public credit as the images’ photographer, as well as by permitting him to take the
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`photographs. Again, however, the Complaint plausibly alleges that defendants’ exploitation of
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`the Photograph went beyond the uses permitted by any license and amounted to acts of
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`infringement. Even if defendants are correct that they provided consideration for the license and
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`the license remained in effect, the Complaint would still plausibly allege infringing uses of the
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`Photograph.
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`Defendants’ motion to dismiss on these grounds will therefore be denied.
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`III.
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`Crowley’s Requests for Statutory Damages and Attorneys’ Fees Will Be
`Dismissed.
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`Crowley seeks statutory damages and attorneys’ fees under the Copyright Act.
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`(Compl’t ¶¶ 38, 46.) Section 412 of the Copyright Act precludes a fees award and statutory
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`damages for an act of infringement that commenced prior to the date of the copyright’s
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`registration. Courts in this Circuit have consistently held that section 412 applies to ongoing acts
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`of infringement that commenced prior to registration. Because defendants’ alleged acts of
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`infringement began on February 19, 2021 and Crowley’s copyright was not registered until April
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`19, 2021, his requests for statutory damages and attorneys’ fees will be dismissed.
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`Section 504(a) of the Copyright Act provides that a copyright infringer is liable
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`for either the copyright owner’s actual damages or statutory damages. 17 U.S.C. § 504(a).
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`Section 505 provides that a court may award reasonable attorney’s fees to the prevailing party in
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`a copyright action. Id. § 505. However, “17 U.S.C. § 412 precludes an award of attorney’s fees
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`for any act of infringement commenced prior to the effective date of registration of the asserted
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`copyright.” Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1012 (2d Cir. 1995); 17
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`U.S.C. § 412 (“no award of statutory damages or attorney’s fees, as provided by sections 504 and
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`505, shall be made for – (1) any infringement of copyright in an unpublished work commenced
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`before the effective date of its registration . . . .”). “Even ‘[w]here the alleged infringement
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`begins before registration and continues after registration, statutory damages and attorney fees
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`are still unavailable.’” Solid Oak Sketches, LLC v. 2K Games, Inc., 2016 WL 4126543, at *2
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`(S.D.N.Y. Aug. 2, 2016) (Swain, J.) (quoting Argentto Sys., Inc. v. Subin Assocs., LLP, 2011
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`WL 2534896, at *2 (S.D.N.Y. June 24, 2011) (Sweet, J.)). As explained by Judge Swain:
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`Courts in this district have held that Section 412 of the Copyright
`Act imposes a bright-line rule that precludes recovery of statutory
`damages and attorneys’ fees where the first act of infringement in a
`series of ongoing infringements occurred prior to the work’s
`copyright registration, finding such a bright-line rule preferable to
`case-by-case analyses of whether a series of infringements has
`stopped sufficiently such that the restart constitutes a new set of
`infringements.
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`Id. (quotation marks omitted); accord Craig v. UMG Recordings, Inc., 380 F. Supp. 3d 324, 336
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`(S.D.N.Y. 2019) (Oetken, J.) (collecting cases); Shady Recs., Inc. v. Source Enterprises, Inc.,
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`2005 WL 14920, at *20-22 (S.D.N.Y. Jan. 3, 2005) (Lynch, J.). However, section 412 does not
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`bar statutory damages and attorneys’ fees if the initial, ongoing infringement has “ceased for an
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`appreciable period of time.” Troll Co. v. Uneeda Doll Co., 483 F.3d 150, 159 (2d Cir. 2007).
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`Judge Swain has concluded that a one-year gap separating pre-registration infringement from
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`post-registration infringement was continuous, and not the type of “appreciable period”
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`referenced in Troll. Solid Oak, 2016 WL 4126543, at *3.
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`Conspicuously, the Complaint does not identify the date of the Photograph’s
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`copyright registration. It alleges that Crowley created the Photograph “and registered the work
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`with the U.S. Copyright Office under VA-2-249-138.” (Compl’t ¶ 13.) The Complaint
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`identifies February 19, 2021 as the date when “The Fraud Department” was digitally released.
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`(Compl’t ¶ 19.) The Complaint later alleges, on information and belief, that the release of
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`physical vinyl records and compact discs bearing a derivative of the Photograph post-dated
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`Crowley’s copyright registration, and that the Photograph was used in other online marketing
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`materials after the date of registration. (Compl’t ¶¶ 19, 27-28.)
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`The Court takes judicial notice that the United States Copyright Office has
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`recorded a single copyright for Crowley, which is dated April 19, 2021, for Registration Number
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`VA0002249138.1 See Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257,
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`261 (2d Cir. 2005) (published copyright registrations are properly subject to judicial notice).
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`Though in a different format, this Registration Number matches the number cited in the
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`Complaint. The April 19, 2021 registration post-dates by two months the digital release date of
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`1 https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First
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`“The Fraud Department.” (Compl’t ¶ 19.) The Complaint describes continuous and ongoing
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`acts of infringement over a period of a few months, which both pre-date and post-date the
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`registration date of the Photograph.
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`Because defendants’ continuous acts of infringement “commenced prior to the
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`effective date of registration of the asserted copyright,” plaintiff’s requests for statutory damages
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`and attorneys’ fees are barred by 17 U.S.C. § 412. Defendants’ motion to dismiss Crowley’s
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`requests for such relief will be granted.
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`IV.
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`Crowley’s DMCA Claim Will Be Dismissed.
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`Count Three alleges that defendants violated the DMCA, 17 U.S.C. § 1202, by
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`removing copyright-management information (“CMI”) from the Photograph and adding their
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`own information to the image. (Compl’t ¶¶ 47-54.) The Complaint describes defendants’
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`exploitation of the Photograph as “an unlawful derivative that is false” and contains “false” CMI,
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`specifically by adding the names “Jim Jones” and “Harry Fraud” to the photo, along with a logo.
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`(Compl’t ¶ 50.) The Complaint alleges that any viewer of the album art would believe that
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`defendants authored and owned the image. (Compl’t ¶ 52.)
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`The DMCA provides that no person shall knowingly “provide” or “distribute”
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`false CMI with the intent to facilitate or conceal infringement. 17 U.S.C. § 1202(a). CMI
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`includes “[t]he name of, and other identifying information about, the author . . . [or] copyright
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`owner of the work.” Id. § 1202(c)(2)-(3). “Therefore, to state a claim under Section 1202(a), a
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`plaintiff must allege that the defendant both knew that the CMI was false, and provided or
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`distributed the false CMI with the intent to induce, enable, facilitate, or conceal infringement.”
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`Wood v. Observer Holdings, LLC, 2021 WL 2874100, at *5 (S.D.N.Y. July 8, 2021) (Stanton,
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`J.) (quotation marks omitted).
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`However, where an allegedly infringing work is derivative to the original, a
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`defendant does not violate the DMCA by printing his own name on the derivative work, even if
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`the derivative work is an act of infringement. Park v. Skidmore, Owings & Merrill LLP, 2019
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`WL 9228987, at *11 (S.D.N.Y. Sept. 30, 2019) (Sullivan, J.). In other words, a defendant
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`“cannot violate the DMCA by associating its name” with a derivative work that “is
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`unquestionably a distinct work,” even if the derivative work infringes a copyright. Id.; accord
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`Dominick R. Pilla, Architecture-Engineering P.C. v. Gilat, 2022 WL 1003852, at *26 (S.D.N.Y.
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`Mar. 29, 2022) (“Even if Defendants had improperly infringed upon Plaintiff’s copyright by
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`incorporating protected features into their redesign, Defendants did not violate the DMCA by
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`printing [Plaintiff’s] name on the distinct products [Plaintiff] had generated.”) (Karas, J.)
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`(quotation marks omitted); Michael Grecco Prods., Inc. v. Time USA, LLC, 2021 WL 3192543,
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`at *5 (S.D.N.Y. July 27, 2021) (“a party that puts its own CMI on work distinct from work
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`owned by a copyright holder is not liable under Section 1202(a), even if the party’s work
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`incorporates the copyright holder’s work.”) (Buchwald, J.).
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`The Complaint repeatedly describes defendants’ allegedly infringing use of the
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`photograph as a derivative work, an assertion that is consistent with the exemplars included in
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`the Complaint. (See, e.g., Compl’t ¶¶ 19, 23, 26, 30 & Ex. A.) As reflected in the Complaint’s
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`exemplars, defendants altered the Photograph by using a grainy, horizontal filter that gives an
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`appearance similar to closed-circuit camera footage, and adding boundary lines and a central grid
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`similar to what a photographer would see when looking through a camera. The text “Jim Jones
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`& Harry Fraud” and “The Fraud Department” identify the album’s musical artists, and a logo
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`appears at the bottom of the image. While the Complaint plausibly alleges that defendants’ use
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`of the Photograph was an act of infringement, it also expressly identifies that use as derivative,
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 16 of 18
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`an assertion that is consistent with the images included in the Complaint. Because the Complaint
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`alleges that defendants associated their names with a distinct work, Crowley’s claim under
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`section 1202(a) will be dismissed.
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`The DMCA also provides that no person shall “intentionally remove or alter any
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`[CMI]” without the authority of the copyright owner. Id. § 1202(b). “To establish a violation of
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`this subsection, a litigant must show (1) the existence of CMI on the allegedly infringed work,
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`(2) the removal or alteration of that information and (3) that the removal was intentional.”
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`Fischer v. Forrest, 968 F.3d 216, 223 (2d Cir. 2020).
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`Defendants’ motion to dismiss the section 1202(b) claim will be granted because
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`the Complaint does not identify the existence of CMI on the Photograph. It asserts that
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`Crowley’s work “was routinely published with attribution, credit and other copyright
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`information,” but it does not describe any CMI associated with the Photograph. (Compl’t ¶ 48.)
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`The subsequent allegation that defendants altered or removed Crowley’s CMI is conclusory and
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`does not identify any CMI. (Compl’t ¶ 49.) The original of the Photograph annexed at Exhibit
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`A does not reflect any visible CMI, nor does the Complaint does not allege that any CMI
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`metadata was contained in the Photograph. Because the Complaint fails to allege the existence
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`of any CMI associated with the photograph, the claim under section 1202(b) will be dismissed.
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`Lastly, because the Complaint does not plausibly allege a violation of the DMCA,
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`Crowley’s request for statutory damages and attorneys’ fees under the DMCA will also be
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`dismissed.
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`V.
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`Leave to Amend Will Be Denied.
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`Lastly, Crowley requests leave to amend the Complaint in the event that the Court
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`concludes that his pleadings “are deficient in any way.” (Opp. Mem. 16.) Crowley has twice
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 17 of 18
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`amended his pleading, first in September 2021 and then in October 2021, both times after receipt
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`of a pre-motion letter from defendants. (Docket # 24, 33.) Crowley does not explain the basis
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`for any new amended. Leave to amend is therefore denied.
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`On August 20, 2021, defendants Jones and Quigley filed a five-page, single-space
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`letter outlining deficiencies in the Complaint, relying on the content of the text messages and
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`arguing that the language reflected a covenant rather than a condition. (Docket # 10.) Empire
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`joined the letter. (Docket # 14.) Plaintiff responded asserting that defendants’ positions were
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`without merit but alternatively seeking leave “to amend his complaint to cure the perceived
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`deficiencies and obviate the need for, or streamline, Defendants’ motion practice.” (Docket #
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`20.)
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`Thereafter, the Court granted leave to amend (Docket # 21) and on September 17,
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`2021, plaintiff filed a First Amended Complaint (Docket # 24). Defendants Jones and Quigley
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`(Docket # 27) later joined by Empire (Docket # 28) pointed out continued deficiencies in the
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`First Amended Complaint. Initially, plaintiff did not seek leave to amend (Docket #29) but
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`changed his position and sought further leave to amend (Docket # 30). The Court granted leave
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`to file a Second Amended Complaint (Docket # 32), which was filed thereafter (Docket # 33).
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`With the Second Amended Complaint in hand, plaintiff may no further request to amend, but
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`answered the motion 22 days after it was filed. Given the latitude afforded to plaintiff in making
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`amendments, his present vague, non-specific request for leave to amend in the event his
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`complaint was found deficient in any way is denied.
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`CONCLUSION.
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`Defendants’ motion to dismiss is DENIED as to Count One and Count Two. It is
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`GRANTED as to plaintiff’s request for statutory damages and attorneys’ fees under the
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`Case 1:21-cv-05483-PKC Document 51 Filed 06/22/22 Page 18 of 18
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`Copyright Act. It is also GRANTED as to Count Three. Plaintiffs’ request for leave to amend is
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`DENIED.
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`The Clerk is respectfully directed to terminate the motion. (Docket # 41.)
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`SO ORDERED.
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`Dated: New York, New York
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`June 22, 2022
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