Elatab v. Hesperios, Inc.

JAWAD ELATAB Plaintiff, v. HESPERIOS, INC., Defendant.

19 CV 9678 (ALC)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

June 2, 2021

MEMORANDUM AND ORDER

ANDREW L. CARTER, JR., District Judge:

Plaintiff, Jawad Elatab, brings this action for copyright infringement pursuant to Section 501 of the Copyright Act, alleging that Defendant, Hesperios, Inc., published a photograph taken by Plaintiff on its Instagram account to promote its clothing line. Pending before the Court is Defendant's motion to dismiss Plaintiff's complaint. For the following reasons, Defendant's motion to dismiss is granted in part and denied in part.

BACKGROUND AND PROCEDURAL HISTORY

Plaintiff commenced this action on October 20, 2019. Compl., ECF No. 1. Plaintiff photographed model Bella Hadid and registered the photograph with the United States Copyright Office. Id. at ¶¶ 7-9. Plaintiff alleges that Defendant ran the photograph on Instagram to promote their brand. Id. at ¶ 10. Defendant did not license the photograph from Plaintiff, and Plaintiff did not give Defendant permission or consent to publish the photograph. Id. at ¶ 11. Defendant moved to dismiss this action on October 6, 2020. (ECF No. 34.) Plaintiff opposed the motion on November 16, 2020, and Defendant replied on November 19, 2020. (ECF Nos. 37, 38.) The Court considers the motion fully briefed.

I. STANDARD OF REVIEW

To survive a motion to dismiss pursuant to Rule 12(b)(6), "a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is facially plausible "when the plaintiff pleads factual content that allows the Court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. (citing Twombly, 550 U.S. at 556). The plaintiff must allege sufficient facts to show "more than a sheer possibility that a defendant has acted unlawfully," and accordingly, where the plaintiff alleges facts that are "'merely consistent with' a defendant's liability, it 'stops short of the line between possibility and plausibility of entitlement to relief.'" Id. (quoting Twombly, 550 U.S. at 557).

In considering a motion to dismiss, the court accepts as true all factual allegations in the complaint and draws all reasonable inferences in the plaintiff's favor. See Goldstein v. Pataki, 516 F.3d 50, 56 (2d Cir. 2008). However, the court need not credit "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements." Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555); see also id. at 681. Instead, the complaint must provide factual allegations sufficient "to give the defendant fair notice of what the claim is and the grounds upon which it rests." Port Dock & Stone Corp. v. Oldcastle Northeast, Inc., 507 F.3d 117, 121 (2d Cir. 2007) (citing Twombly, 550 U.S. at 555). In addition to the factual allegations in the complaint, the court also may consider "the documents attached to the complaint as exhibits, and any documents incorporated in the complaint by reference." Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010) (citation and internal quotation marks omitted).

II. Fair Use

The Court shall first address Defendant's affirmative defenses, starting with Defendant's argument that its actions constituted fair use. (Def. Br. 11-15). The Copyright Act, under which Plaintiff brings this suit, is intended "[t]o promote the Progress of Science and useful Arts, U.S. Const. art. I, § 8, cl. 8, "by granting authors a limited monopoly over (and thus the opportunity to profit from) the dissemination of their original works of authorship," Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 95 (2d Cir. 2014). But there are also limits upon creators' control over their own works — in particular, "the doctrine of 'fair use,' which allows the public to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances." Id. "[T]he fair use determination is an open-ended and context-sensitive inquiry," Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013), but Congress has provided four nonexclusive factors that inform whether a given use is fair:

(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;

(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.

17 U.S.C. § 107.

"Fair use is an affirmative defense, and therefore Defendant bears the burden of showing that a given use is fair." Yang v. Mic Network, Inc., 405 F. Supp. 3d 537, 542 (S.D.N.Y. 2019) (quoting Authors Guild v. Google, Inc., 804 F.3d 202, 213 (2d Cir. 2015)). "Courts have granted motions to dismiss infringement claims based on a defendant's fair use defense when 'discovery would not provide any additional relevant information' and '[a]ll that is necessary for the court to make a determination as to fair use are the two [works] at issue.' " May v. Sony MusicEntm't, 399 F. Supp. 3d 169, 188 (S.D.N.Y. 2019) (quoting Arrow Prods., Ltd. v. Weinstein Co., 44 F. Supp. 3d 359, 368 (S.D.N.Y. 2014)). However, as this Court has previously observed, "there is a dearth of cases granting such a motion." BWP Media USA, Inc. v. Gossip Cop Media, LLC, 87 F. Supp. 3d 499, 505 (S.D.N.Y. 2015).

1. Purpose and Character of the Use

The heart of the fair use inquiry is the purpose and character of the use. Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006). It includes two considerations: the transformative nature of the work, see Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006); and whether the "use is of a commercial nature or is for nonprofit educational purposes," 17 U.S.C. § 107(1). "The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 569 (1994).

A. Transformative Use

To determine whether the secondary use is transformative, the "question is whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Bill Graham, 448 F.3d at 608 (quotation omitted); Authors Guild., 804 F.3d at 214 ("[A] transformative use is one that communicates something new and different from the original or expands its utility, thus serving copyright's overall objective of contributing to public knowledge."). A secondary use "can be transformative in function or purpose [even] without altering or actually adding to the original work." Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014) (quotation omitted).

Defendant argues that it's use of the picture was transformative as Defendant created the clothes that the model was wearing, and Defendant's purpose in posting the image was to invite its Instagram followers to provide commentary on the photograph. See Defs.' Mem. of Law at 12. The Court disagrees. The Instagram post reads "@Bellahadid in our Lou tank and Lou Bel skirt knit set in fawn brown. Coming soon for Fall, although available now in summer colours." Plaintiff posted the copyrighted image without any modification along with a description of what the model was wearing as well as when the item would be available. Nowhere in Defendant's posting of the image does Defendant invite its Instagram followers to provide commentary. Nor does Defendant provide its own critique of the image. While commentary and critique have been considered fair use, the Court cannot credit Defendant's assertion that its posting of the photo alters the original message of the photograph. See Weinberg v. Dirty World, LLC, No. 16 CV 9179, 2017 WL 5665023, at *5-10, 13 (C.D. Cal. July 27, 2017) (use of photo was transformative in part because "[r]ather than using the photo to merely identify Plaintiff or his wife, as Plaintiff did on her Facebook profile page . . . the entire Post uses the Video Image as part of a direct critique on Plaintiff's wife's appearance, her status as a model, her husband, and her relationship with her husband."); Dhillon v. Does 1-10, No. 13 CV 1465 , 2014 WL 722592, at *3-6 (N.D. Cal. Feb. 25, 2014) (use was transformative when picture was originally taken to depict plaintiff in a positive light, then used "as part of [defendant's] criticism of, and commentary on, the plaintiff's politics"). This is not the case here. In light of the above and drawing all reasonable inferences in Plaintiff's favor, the Court finds that Plaintiff's posting of the photograph was not transformative.

B. Defendant's Instagram Post was for Commercial Benefit

Plaintiff alleges that Defendant posted the photograph on Instagram as marketing to promote their brand. Compl. at ¶ 10. As the Court discussed supra, Defendant's assertion that thephotograph was posted to invite its Instagram followers to comment is bellied by the actual posting promoting the clothing and telling its followers that it was "available now in summer colours." Moreover, in Defendant's memorandum of law, Defendant alleges that it asked Mode PR, an international marketing firm, if it could post the image to which mode PR responded, "Post share for sure I would send them to potential wholesale clients as well." Def.'s Mem. of Law at 17. Accordingly, this sub-factor counts against finding fair use as Defendant has failed to demonstrate that its post was anything other than commercial use to advertise its clothing.

2. The Nature of the Copyrighted Work

The Second Circuit has identified two sub-factors to...