Golden v. Michael Grecco Prods., Inc.

524 F.Supp.3d 52

Lee GOLDEN III, Plaintiff,

v.MICHAEL GRECCO PRODUCTIONS, INC.; Michael Grecco ; Michael Grecco Photography, Inc. ; John Does 1-10; and Business Entities A-J, Defendants.

19-CV-3156 (NGG) (RER)

United States District Court, E.D. New York.

Signed March 9, 2021

Joshua Matthew Lurie, Lurie, Strupinsky, LLP, Hackensack, NJ, Yevgeny Strupinsky, Lurie Strupinsky LLP, Brooklyn, NY, for Plaintiff.

Robert Michael Brill, Law Offices of Robert M. Brill, LLC, New York, NY, for Defendants Michael Grecco Productions, Inc., Michael Grecco, Michael Grecco Photography, Inc.

Rayminh Ngo, Nao Law Practice, Salt Lake City, UT, for Defendants.

MEMORANDUM & ORDER

NICHOLAS G. GARAUFIS, United States District Judge.

In February 2019, a representative for Defendant Michael Grecco and his associated co-Defendant business entities contacted Plaintiff Lee Golden III to inform him that a July 2015 post on Golden's blog contained a copyrighted image that he did not have a license to use. The image was a 1998 portrait of the actress Lucy Lawless in her iconic 1990s titular role as Xena: Warrior Princess (the "Xena Photograph"). In anticipation of a lawsuit for copyright infringement, Golden filed this action, seeking a Declaratory Judgment stating that his use of the image was not copyright infringement under the Fair Use Doctrine. Grecco answered and asserted a counterclaim for copyright infringement, to which Golden asserted 15 affirmative defenses. Now before the court is Grecco's Motion for Summary Judgment on Golden's original claim and his counterclaim. (See Defs.’ Mem. in Supp. of Mot. for Summ. J. ("Mem.") (Dkt. 25); Pl.’s Mem. in Opp. ("Opp.") (Dkt. 26); Defs.’ Reply ("Reply") (Dkt. 27).) For the following reasons, Grecco's motion is GRANTED. The court awards Defendant $750 in statutory damages, the minimum allowable under the Copyright Act, and declines to award attorneys’ fees or costs. See 17 U.S.C. §§ 504(c)(2), 505.

I. BACKGROUND¹

Michael Grecco is a successful photographer whose work has appeared frequently in popular media. (See Defs.’ Local R. 56.1 Statement ("56.1") (Dkt. 25-1) ¶ 1.) In 1997, he travelled to New Zealand for a photoshoot for the television show Xena: Warrior Princess , for which MCA Television Group paid him $25,000. (Id. ¶¶ 3-4.) Grecco retained all copyrights to the photographs from the shoot, including the Xena Photograph. (Id. ¶ 8.) He subsequently transferred the copyrights to Michael Grecco Photography, Inc., which changed its name to Michael Grecco Productions, Inc. in 2012. (Id. ¶¶ 9-10, 17.)² Since 2009, many of Grecco's photographs have been available to license through Getty Images, including the Xena Photograph. (Id. ¶ 12.) Golden claims, based on information produced during discovery, that the Xena Photograph was licensed 11 times between 2010 and 2013, generating a total of $3.94 in revenue for Grecco, and has not been licensed since. (See Opp. at 12; Decl. of Yevgeny Strupinsky (Dkt. 26-3) Ex. 1 at ECF p. 5.) Grecco insists that is an "erroneous interpretation of the licensing spreadsheet provided in discovery," but declines to provide the correct amount, claiming that the licensing fee is irrelevant to the case at bar. (See Reply at 3.) The United States Copyright Office issued a registration for a group of Grecco's photographs, including the Xena Photograph, on July 7, 2010. (Id. ¶¶ 15-16.)

Lee Golden III is the owner and operator of the pop culture blog www.filmcombatsyndicate.com. (56.1 ¶ 20.) In 2015, Golden published a blogpost about a rumored reboot of the 1990s television series Xena: Warrior Princess with the title, "The XENA Series Reboot Was Happening. Then It Wasn't, But Now It Is ... Is It?". (Decl. of Lee Golden III ("Golden Decl.") (Dkt. 26-2) ¶ 7; 56.1 ¶ 21.) Along with the blogpost, Golden posted an image of Lucy Lawless as Xena; specifically, he posted Grecco's Xena Photograph. (See Blogpost (Dkt. 25-2) at ECF p. 54.) Golden found the picture by searching the social media platform Tumblr and avers that he believed it was "a free, promotional photograph of Xena on Tumbler [sic] posted with permission and free to use." (Golden Decl. ¶¶ 8-10.) Golden's website earns money by displaying banner ads and is paid per click on its articles; however, he asserts that he never earned any money from the Xena post and submits evidence to show that the post earned no money from July 2018 until it was taken down. (Id. ¶¶ 11-13.)

On October 5, 2018, Grecco discovered Golden's blogpost, which was more than three years old. (56.1 ¶ 21.)³ In February 2019, Grecco's counsel contacted Golden, alleging that he was unlawfully displaying a copyrighted image. (Golden Decl. ¶ 14.) Golden immediately responded to apologize and to say that he did not know the material was copyrighted. (See Feb. 13, 2019 Email of Lee Golden (Dkt. 26-2) at ECF p. 10.) Golden took down the blogpost upon receiving the notice. (Golden Decl. ¶ 14.) Despite the apology and removal, on April 29, 2019, Grecco's attorney wrote Golden to say that he was liable for up to $150,000 for his infringement, but that Grecco would accept a $25,000 settlement. (See April 29, 2019 Letter (Dkt. 26-2) at ECF p. 13.) Grecco's attorney also included a draft complaint that he threatened to file in the United States District Court in Los Angeles if Golden failed to meet the settlement demand. (Id. ) Rather than face costly litigation in California, Golden filed this case, seeking a declaration that he did not violate Grecco's copyright, or in the alternative, that he was liable for either no compensatory damages or significantly reduced statutory damages because he was an innocent infringer. (See Compl. (Dkt. 1) ¶ 1.) Grecco then asserted a single counterclaim for copyright infringement. (See Arts. and Amend. Counterclaim (Dkt. 12).)

II. LEGAL STANDARD

Summary judgment is appropriate when "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. Pro. 56(a). "The role of the court is not to resolve disputed issues of fact but to assess whether there are any factual issues to be tried. In determining whether summary judgment is appropriate, this court will construe the facts in the light most favorable to the non-moving party and must resolve all ambiguities and draw all reasonable inferences against the movant." Brod v. Omya, Inc. , 653 F.3d 156, 164 (2d Cir. 2011).⁴ "A ‘material’ fact is one capable of influencing the case's outcome under governing substantive law, and a ‘genuine’ dispute is one as to which the evidence would permit a reasonable juror to find for the party opposing the motion." Figueroa v. Mazza , 825 F.3d 89, 98 (2d Cir. 2016) (citing Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). The movant may discharge its initial burden by demonstrating that the non-movant "has ‘failed to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.’ " Lantheus Med. Imaging, Inc. v. Zurich Am. Ins. Co. , 225 F. Supp. 3d 443, 451 (S.D.N.Y. 2015) (quoting Celotex Corp. v. Catrett , 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ). While the court must draw all inferences in favor of the non-movant, the non-movant "may not rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment." Fletcher v. Atex, Inc. , 68 F.3d 1451, 1456 (2d Cir. 1995).

III. DISCUSSION

For ease of analysis, the court first considers Grecco's counter-claim for copyright infringement, followed by Golden's fair use defense and other affirmative defenses.

A. Copyright Infringement

"To establish [copyright] infringement two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

Ownership is not at issue here, because Golden admits that Grecco has produced a valid copyright registration for the Xena Photograph. (56.1 ¶ 16; Pl.’s 56.1 Resp. (Dkt. 26-1) ¶ 16.) See Scholz Design, Inc. v. Sard Custom Homes, LLC , 691 F.3d 182, 186 (2d Cir. 2012) ("A certificate of copyright registration is prima facie evidence of ownership of a valid copyright, but the alleged infringer may rebut that presumption.").

Grecco has also met the second prong for "originality" because the Xena Photograph is clearly an example of portrait photography, reflecting the artistic choices of Grecco, its author. See 17 U.S.C. § 102(a)(5) (extending copyright protection to "pictorial" and "graphic" works of authorship); see also Burrow-Giles Lithographic Co. v. Sarony , 111 U.S. 53, 60, 4 S.Ct. 279, 28 L.Ed. 349 (1884) (holding that a photographic portrait of Oscar Wilde was "an original work of art, the product of [the photographer's] intellectual invention, of which [the photographer] is the author, and of a class of inventions for which the constitution intended that congress should secure to him the exclusive right to use, publish, and sell, as it has done by [statute]."). Grecco has therefore demonstrated that he is entitled to summary judgment on his counterclaim for copyright infringement, subject to Golden's affirmative defenses, considered below.

B. Fair Use

Golden's primary defense, asserted in his Complaint and in his affirmative defenses to Grecco's counterclaim (see Ans. to Counterclaim (Dkt. 15)), is that his blogpost constituted a fair use of the copyrighted image and is therefore not infringement under 17 U.S.C. § 107.

The purpose of copyright law is "[t]o promote the Progress of Science and useful Arts," U.S. Const., Art. I, § 8, cl. 8, and "expand public knowledge and understanding ... by giving potential creators exclusive control over copying of their works, thus giving them a financial incentive to create...