Walsh v. Townsquare Media, Inc.

464 F.Supp.3d 570

Rebecca Fay WALSH, Plaintiff,

v.TOWNSQUARE MEDIA, INC., Defendant.

19-CV-4958 (VSB)

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

Signed June 1, 2020

Richard Liebowitz, Liebowitz Law Firm, PLLC, Valley Stream, New York, Counsel for Plaintiff.

Rachel F. Strom, James E. Doherty, Davis Wright Tremaine LLP, New York, New York, Counsel for Defendant.

OPINION & ORDER

VERNON S. BRODERICK, United States District Judge:

Plaintiff Rebecca Fay Walsh brings this action against Townsquare Media, Inc., asserting a claim of copyright infringement in connection with Defendant's unlicensed publication in an online article (the "Article") of a copyrighted photograph (the "Photograph") taken by Plaintiff. Before me is Defendant's motion for judgment on the pleadings. Because Defendant's publication of the Photograph constituted fair use, Defendant's motion for judgment on the pleadings is GRANTED.

I. Factual Background ¹

Plaintiff is a Brooklyn-based professional photographer who licenses her photographs to online and print media for a fee. (Am. Compl. ¶ 5.)² Defendant is a Delaware-incorporated business that owns and operates an online website called XXL Mag ("XXL"), located at the URL www.XXLMag.com. (Id. ¶¶ 6–7.)

On September 5, 2018, Plaintiff photographed rapper and celebrity Cardi B at a Tom Ford Fashion show in New York City. (Id. ¶ 10.) At around the time of the fashion show, she captured numerous photographs of Cardi B, and then made them available for license through Getty Images, a stock photography agency. (Id. ¶ 15; id. Ex. C). Among those photographs is the one at issue in this action, reproduced below in resized but uncropped form:

(Id. Ex. A.) Plaintiff has a copyright to the Photograph, which is registered with the United States Copyright Office. (Id. ¶ 11.)

On September 10, 2018, Townsquare ran an article on XXL Mag entitled Cardi B Partners with Tom Ford for New Lipstick Shade , available at the URL https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-shade-named-after-her/. (Id. ¶ 13.) The text of the Article read as follows:

Cardi B is having a busy 2018 New York Fashion Week. After allegedly getting into a fight with Nicki Minaj, the Invasion of Privacy rapper is now getting her own shade of lipstick from Tom Ford.

The Tom Ford Beauty brand broke the news on Sunday (Sept. 9), posting an image of the bold blue shade and Cardi's name on Instagram. "Meet Cardi. #TFBOYSANDGIRLS #TFLIP #TOMFORDBEAUTY," the caption of the post reads.

Cardi also celebrated the news on IG³ , re-posting the Tom Ford post and adding, "Thank you so much @tomford and @tomfordbeauty!!! So excited for this and what's to come."

Just the latest shade in Tom Ford's Lips & Boys collection, the new Cardi shade follows the brand's trend of naming lipsticks after other celebrities such as Julianne [Moore], Dakota [Johnson] and Naomi [Campbell]. There's no word yet when the lipstick inspired by Cardi will be released.

As expected, the decision to name a lipstick after Cardi following the New York Fashion Week incident has led to a heated debate on the original Instagram post. While some fans were excited about the upcoming product, other's felt that Cardi doesn't deserve to have a lipstick named after her.

But Cardi doesn't seemed to bothered by that. In another Instagram post, the rapper claimed the upcoming lipstick has already sold out, adding, "Sorry:/....."

In footage from the fight, the "Be Careful" rapper can be seen throwing a shoe in the direction of someone, although it's hard to make out if it's actually Minaj. Cardi can also be heard yelling at someone for talking about her daughter, Kulture. "Write some shit about my daughter again," Cardi says.

While it was reported that Bardi's fight was with the Queen artist, Cardi reportedly ended up fighting former Love & Hip Hop: New York star Rah Ali.

Check out the Tom Ford Instagram post below.

(Ans. Ex. C (alterations and errors in original).) Beneath the last sentence of the article, XXL Mag embedded the three Instagram posts that were described in the Article.⁴ (Id. ¶ 13; Ans. ¶ 13.) Plaintiff does not allege that the Post was embedded, alleging only that Defendant "expropriated" the Photograph and "displayed" it in the Article. (Am. Compl. ¶¶ 13, 15.) However, Defendant asserts that the Post was "embedded" (Ans. ¶ 13), and Plaintiff does not dispute this allegation. Moreover, in the current version of the Article, the two Instagram posts that remain displayed link directly to Instagram when clicked on, indicating they have been embedded. See Article, https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-shade-named-after-her/ (last visited April 2, 2020). The first post, by account "tomfordbeauty," announced the lipstick collaboration. (Strom Decl. Ex. C, at 3.)⁵ The second post, from Cardi B's account, reproduced the post by tomfordbeauty in a screenshot, and thanked Tom Ford and tomfordbeauty. (Id. at 4.) The third post (the "Post"), from Cardi B, was a composite image that consisted of an image of the Tom Ford lipstick on the left, the Photograph on the right, and a header reading "Cardi B's Tom Ford Lipstick has already SOLD OUT!!!" (Id. at 5.) Above the composite image was Cardi B's username, her follower count, and a link entitled "View Profile." (Id. ) Below the composite image was a link entitled "View More on Instagram," the number of "likes," and Cardi B's caption for the post: "Sorry:/ ..." (Id. at 5.) Below the caption was a link entitled "view all [ ] comments" and below that, a link entitled "Add a comment ...." (Id. )

The Post appeared as follows:

(Id. Ex. C; Strom Decl. Ex. C.) After Plaintiff filed this lawsuit, Defendant removed the Post from the Article. (Am. Compl. ¶ 17.)

II. Procedural History

Plaintiff commenced this action by filing a complaint on May 28, 2019. (Doc. 1.) The complaint was administratively rejected by the Clerk's Office, and Plaintiff refiled the complaint on May 29, 2019. (Doc. 4.) Defendant filed its answer on June 26, 2019. (Doc. 10.) Plaintiff filed an Amended Complaint on July 17, 2019. (Doc. 11.) Defendant filed its Answer to the Amended Complaint on July 31, 2019. (Doc. 12.)

On August 9, 2019, Defendant filed a motion for judgment on the pleadings, (Doc. 14), with a memorandum of law, declaration, and exhibits in support, (Docs. 15–16). Plaintiff filed her memorandum of law in opposition on September 6, 2019. (Doc. 19.) Defendant filed its reply on September 24, 2019. (Doc. 21.)

III. Legal Standard

Rule 12(c) provides that "[a]fter the pleadings are closed—but early enough not to delay trial—a party may move for judgment on the pleadings." Fed. R. Civ. P. 12(c). In deciding a motion for judgment on the pleadings, a district court must "employ the same standard applicable to Rule 12(b)(6) motions to dismiss, accepting all factual allegations in the [non-moving party's pleading] as true and drawing all reasonable inferences in the nonmoving party's favor."

Vega v. Hempstead Union Free Sch. Dist. , 801 F.3d 72, 78 (2d Cir. 2015) (internal quotation marks omitted). Therefore, to survive a motion pursuant to Rule 12(c), a complaint must "contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face." Hayden v. Paterson , 594 F.3d 150, 160 (2d Cir. 2010). Under Rule 12(c), a party is entitled to judgment on the pleadings "only if it has established that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law." Juster Assocs. v. City of Rutland , 901 F.2d 266, 269 (2d Cir. 1990) (internal quotation marks omitted); see Sellers v. M.C. Floor Crafters, Inc. , 842 F.2d 639, 642 (2d Cir. 1988) (noting that judgment on the pleadings "is appropriate where material facts are undisputed and where a judgment on the merits is possible merely by considering the contents of the pleadings").

On a Rule 12(c) motion, "the court considers the complaint, the answer, any written documents attached to them, and any matter of which the court can take judicial notice for the factual background of the case." L-7 Designs, Inc. v. Old Navy, LLC , 647 F.3d 419, 422 (2d Cir. 2011) (internal quotation marks omitted). The complaint is "deemed to include any written instrument attached to it as an exhibit, materials incorporated in it by reference, and documents that, although not incorporated by reference, are integral to the complaint." Id. (internal quotation marks omitted).

IV. Discussion

A. Applicable Law

The Copyright Act grants a copyright owner the exclusive rights to authorize the reproduction, distribution, and preparation of derivatives of the owner's work. 17 U.S.C. § 106. These rights, however, are in "inevitable tension" with "the ability of authors, artists, and the rest of us to express them-or ourselves by reference to the works of others." Blanch v. Koons , 467 F.3d 244, 250 (2d Cir. 2006). The doctrine of fair use mediates between these two sets of interests and infuses copyright law with the necessary "breathing space." Id. (quoting Campbell v. Acuff–Rose Music, Inc. , 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994)). Under this doctrine, "a defendant who otherwise would have violated one or more of these exclusive rights may avoid liability if [it] can establish that [it] made ‘fair use’ of the copyrighted material." Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. , 756 F.3d 73, 81 (2d Cir. 2014). "To evaluate whether a particular use qualifies as ‘fair use,’ [a court] must engage in ‘an open-ended and context-sensitive inquiry’ " that focuses on four non-exclusive factors set forth in the Copyright Act: (1) the purpose and character of the use, (2) the nature of the 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 copyrighted work. Id. (quoting Blanch , 467 F.3d at 250 ). The Copyright Act also provides...