Boesen v. Dimoro Enters.

MICHAEL BARRETT BOESEN, Plaintiff, v. DIMORO ENTERPRISES, LLC, Defendant.

1:20-CV-354 (FJS/CFH)

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF NEW YORK

October 5, 2020

APPEARANCES

OF COUNSEL

LIEBOWITZ LAW FIRM, PLLC

11 Sunrise Plaza, Suite 301

Valley Stream, New York 11580

Attorneys for Plaintiff

RICHARD LIEBOWITZ, ESQ.1

DIMORO ENTERPRISES, LLC

Defendant

NO APPEARANCE

SCULLIN, Senior Judge

MEMORANDUM-DECISION AND ORDER

I. INTRODUCTION

Pending before the Court is Plaintiff's motion for entry of a default judgment against Defendant in the amount of $5,000.00 in actual damages under 17 U.S.C. § 504(b), $2,500.00 inattorney's fees under the Court's inherent power, and $440.00 in costs under Rule 54(d)(1) of the Federal Rules of Civil Procedure. See Dkt. No. 9 at 1.

II. BACKGROUND

Plaintiff brings this action for copyright infringement under Section 501 of the Copyright Act. See Dkt. No. 1, Complaint, at ¶ 1. Plaintiff, whose business is located in Denmark, is a professional photographer, who is in the business of licensing his photographs for a fee. See id. at ¶ 5. According to Plaintiff, Defendant owns and operates a website at 222.SportsRantz.com (the "Website"). See id.

Plaintiff alleges that he photographed tennis player Caroline Wozniacki, is the author of that photograph (the "Photograph"), and at all times has been the sole owner of all right, title and interest in and to the Photograph, including the copyright thereto. See id. at ¶ 8. Furthermore, Plaintiff asserts that he registered the Photograph with the United States Copyright Office and was given Copyright Registration Number VA 2-190-386. See id. at ¶¶ 8-9.

According to Plaintiff this action arises out of Defendant's unauthorized reproduction and public display of the copyrighted Photograph. See id. at ¶ 1. Specifically, Plaintiff alleges that Defendant ran an article on the Website entitled Caroline Wozniacki Retiring After 2020 Australian Open, which featured the Photograph. See id. at ¶ 10 (citing https://sportsrantz.com/2019/12/06/caroline-wozniacki-retiring-after-2020-australian-open/). Plaintiff alleges that Defendant did not license the Photograph from him for its article nor did Defendant have his permission or consent to publish the Photograph on its Website. See id. at ¶ 11.

Based on these allegations, Plaintiff asserts a claim for copyright infringement pursuant to 17 U.S.C. §§ 106, 501. See id. at ¶¶ 12-16. Plaintiff seeks, among other things, relief in the form of actual damages and Defendant's profits, gains or advantage of any kind attributable to Defendant's infringement of the Photograph, and attorney's fees and costs.

III. DISCUSSION

A. Standard of review

Rule 55(a) of the Federal Rules of Civil Procedure, which governs the procedure for entry of a default judgment, provides that, "[w]hen a party against whom a judgment for affirmative relief is sought has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the clerk must enter the party's default." Fed. R. Civ. P. 55(a). Thus, courts in the Second Circuit have established a two-step process: "first, the entry of a default, and second, the entry of a default judgment." City of N.Y. v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 128 (2d Cir. 2011) (citing New York v. Green, 420 F.3d 99, 104 (2d Cir. 2005)). "The entry of default 'formalizes a judicial recognition that a defendant has, through its failure to defend the action, admitted liability to the plaintiff.'" Pasatieri v. Starline Prods., Inc., No. 18-CV-4688 (PKC) (VMS), 2020 WL 207352, *1 (E.D.N.Y. Jan. 14, 2020) (quoting [Mickalis Pawn Shop, LLC, 645 F.3d at 128]); (citing Vt. Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 246 (2d Cir. 2004) (noting that default judgments "track[] the ancient common law axiom that a default is an admission of all well-pleaded allegations against the defaulting party"); United States v. DiPaolo, 466 F. Supp. 2d 476, 482 (S.D.N.Y. 2006) ("[A] party's default is deemed to constitute a concession of all well pleaded allegations of liability." (internal quotation and citations omitted))).

"[T]he decision to grant a motion for a default judgment lies in the sound discretion of the trial court." O'Callaghan v. Sifre, 242 F.R.D. 69, 73 (S.D.N.Y. 2007) (citing Shah v. New York State Dep't of Civil Serv., 168 F.3d 610, 615 (2d Cir. 1999)). When deciding a motion for default judgment, the court "is required to accept all of the [plaintiff's] factual allegations as true and draw all reasonable inferences in its favor." Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009) (citing Au Bon Pain Corp. v. Artect, Inc., 653 F.2d 61, 65 (2d Cir. 1981) (noting that, where a party moves for a default judgment after another party's default, the moving party is "entitled to all reasonable inferences from the evidence offered")). However, "a district court 'need not agree that the alleged facts constitute a valid cause of action.'" Mickalis Pawn Shop, LLC, 645 F.3d at 137 (quoting Au Bon Pain, 653 F.2d at 65). Therefore, the court must "determine whether [a plaintiff's] allegations establish [a defendant's] liability as a matter of law." Finkel, 577 F.3d at 84 (citation omitted).

B. Liability

Plaintiff brings this action for copyright infringement under Section 501 of the Copyright Act. See Dkt. No. 1 at ¶ 1. To establish infringement of a copyright under the Act, a plaintiff must prove two elements: "'(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" BWP Media USA Inc. v. Polyvore, Inc., 922 F.3d 42, 61 (Newman, J., concurring in the result) (quoting Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991)).

Ownership of a valid copyright "'can be established by the introduction into evidence of a Copyright Office certificate of registration,'" which "'if timely obtained "constitute(s) prima facie evidence of the validity of the copyright and of the facts stated in the certificate."'" Sheldon v.Plot Commerce, No. 15 CV 5885 (CBA) (CLP), 2016 WL 5107072, *11 (E.D.N.Y. Aug. 26, 2016) (quotation omitted), report and recommendation adopted, 2016 WL 5107058 (E.D.N.Y. Sept. 19, 2016).

To establish the second element, a plaintiff must meet a "minimal" burden to show that the photograph in question is his original work and allege a violation of his exclusive right under § 106. See id. "The requirements for originality are 'modest.'" Gym Door Repairs, Inc. v. Young Equip. Sales, Inc., 206 F. Supp. 3d 869, 896 (S.D.N.Y. 2016) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1321 (2d Cir. 1989)). As used in copyright cases, the term "'original . . . means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.'" Id. (quoting Feist, 499 U.S. at 345, 111 S. Ct. 1282 (citation omitted)). For photographs, originality "may be founded upon, among other things, the photographer's choice of subject matter, angle of photograph, lighting, determination of the precise time when the photograph is to be taken, the kind of camera, the kind of film, the kind of lens, and the area in which the pictures are taken." E. Am. Trio Prods., Inc. v. Tang Elec. Corp., 97 F. Supp. 2d 395, 417 (S.D.N.Y. 2000) (footnote omitted).

Plaintiff did not submit the Certificate of Registration for the Photograph. Therefore, the Court finds that he has failed to satisfy the first element of his copyright infringement claim, i.e., his ownership of a valid copyright. Accordingly, the Court denies his motion for entry of a default judgment. However, the Court does so without prejudice and with leave to renew the motion to include the necessary documentation to establish his claim for copyright infringement under the Copyright Act.

C. Actual damages, attorney's fees and costs

Since the Court has denied Plaintiff's motion for entry of a default judgment, it does not need to address the issues of damages, attorney's fees and costs. However, because there are some problems with Plaintiff's submissions regarding these issues, the Court will address them here so that, if Plaintiff decides to renew his motion, he is aware of and can cure the problems that exist with regard to these issues.

1. Actual damages

An award of actual damages "undertakes to compensate the [copyright] owner for any harm he suffered by reason of the infringer's illegal act." On Davis v. The Gap, Inc., 246 F.3d 152, 159 (2d Cir. 2001) (citations omitted). Section 504(b) of the Act, which applies to actual damages, provides, in relevant part, that "[t]he copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages." 17 U.S.C. § 504(b).

In his complaint, Plaintiff alleges that, "as a direct and proximate cause of the infringement by the Defendant of Plaintiff's copyright and exclusive rights under copyright, Plaintiff is entitled to damages and Defendant's profits . . . for the infringement." See Complaint at ¶ 16. Upon Defendant's default, Plaintiff's counsel, in his declaration, states that Plaintiff is seeking actual damages to compensate him for his "lost licensing fees" and "Defendant's ill-gotten gains," i.e., Defendant's profits, see Dkt. No. 9-1 at ¶¶ 13-14, as well as "attorneys' fees and costs," see id. at ¶¶ 16-18.

"Courts have adopted a wide range of methods by which to measure actual damages in copyright infringement actions, including the award of lost licensing fees . . . ." AntennaTelevision, A.E. v. Aegean Video Inc., No. 95-CV-2328 (ERK), 1996 WL 298252, *3 (E.D.N.Y. Aug. 23, 1996) (citations omitted). To calculate an award for licensing fees, courts in the Second Circuit rely on "the market value of the fee the owner was entitled to...