Opinion
22 Civ. 9913 (JGLC) (GWG)
01-08-2024
MARIE BARSCH, Plaintiff, v. PREVISE, LLC et al., Defendants.
REPORT & RECOMMENDATION
GABRIEL W. GORENSTEIN, United States Magistrate Judge.
Plaintiff Marie Barsch brought this action against defendants Previse, LLC (“Previse”) and SelfMadeMe, Inc. (“SelfMade”) alleging copyright infringement under 17 U.S.C. §§ 101 et seq. of the Copyright Act. See Complaint, filed Nov. 21, 2022 (Docket # 1) (“Compl.”). Both defendants have defaulted and Barsch seeks a judgment against them for statutory damages and costs. For the following reasons, Barsch should be awarded a judgment of $30,000.00 in damages plus $672.00 in costs.
See Proposed Conclusions of Fact and Law, filed July 31, 2023 (Docket # 33) (“Prop. Find.”).
I. BACKGROUND
Barsch is a “professional fashion and beauty photographer,” Compl. ¶ 9, and the owner of the photograph at issue in this case, see id. ¶¶ 11-13 (providing the U.S. Copyright Office registration number). Around late November 2019, Previse, “a health and wellness company that sells vegan beauty products,” id. ¶ 14, used Barsch's photograph in social media posts on Previse's Instagram and Facebook accounts, see id. ¶¶ 20, 24. In the posts, the photograph was accompanied by the text “Powered by nature[,] brazen through Previse,” and the Instagram post contained an “Instagram Shopping” link that allowed viewers to purchase a product called “Hydromilk Hyaluronic Pressed Serum” for $34.50. See id. ¶¶ 21-24.
In March 2021, Barsch discovered both posts. See id. ¶ 27. Upon discovery, Barsch's “agent reached out to Defendant Previse to try and resolve the matter, but was directed to contact Defendant SelfMade.” See id. ¶ 28. SelfMade is “a company specializing in digital marketing.” Id. ¶ 17. After numerous failed attempts at reaching SelfMade, Barsch filed the instant action. See id. ¶ 29. As of the filing, the Instagram post had not been taken down. See id. ¶ 30.
On November 28, 2022, and December 5, 2022, Barsch served the defendants. See Proof of Service, filed Dec. 6, 2022 (Docket # 11) (SelfMade); Proof of Service, filed Dec. 7, 2022 (Docket # 13) (Previse). After neither party responded to the complaint, the district court entered an “order of default” and then referred the matter for an inquest. See Order, filed June 14, 2023 (Docket # 30), at 1; Order of Reference, filed June 14, 2023 (Docket # 31).
II. LEGAL STANDARD
In light of defendants' default, Barsch's properly pleaded allegations in the amended complaint, except those related to damages, are accepted as true. See City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir. 2011) (“It is an ancient common law axiom that a defendant who defaults thereby admits all well-pleaded factual allegations contained in the complaint.”) (citation and punctuation omitted); Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009) (“In light of [defendant's] default, a court is required to accept all . . . factual allegations as true and draw all reasonable inferences in [plaintiff's] favor.”).
As to damages, “[t]he district court must [ ] conduct an inquiry in order to ascertain the amount of damages with reasonable certainty.” Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d 151, 155 (2d Cir. 1999). This inquiry requires the district court to: (1) “determin[e] the proper rule for calculating damages on . . . a claim” and (2) “assess[] plaintiff's evidence supporting the damages to be determined under this rule.” Id.
Barsch bears the burden of establishing her entitlement to the amount sought. See Trs. of Local 813 Ins. Tr. Fund v. Rogan Bros. Sanitation Inc., 2018 WL 1587058, at *5 (S.D.N.Y. Mar. 28, 2018). In the case of a default where the defendants have never appeared, “a court may base its determination of damages solely on the plaintiff's submissions.” Id. (citing Fustok v. ContiCommodity Servs., Inc., 873 F.2d 38, 40 (2d Cir. 1989)). While a court must “take the necessary steps to establish damages with reasonable certainty,” Transatlantic Marine Claims Agency, Inc. v. Ace Shipping Corp., 109 F.3d 105, 111 (2d Cir. 1997), a court need not hold a hearing “as long as it ensure[s] that there [is] a basis for the damages specified in a default judgment,” Fustok, 873 F.2d at 40.
Here, the Court's Scheduling Order notified the parties that the Court might conduct the inquest into damages based upon the written submissions of the parties, but that a party may seek an evidentiary hearing. See Scheduling Order, filed June 14, 2023 (Docket # 32), ¶ 3. No party has requested an evidentiary hearing. Moreover, because plaintiff's submissions provide a basis for an award of damages, no hearing is required.
III. DISCUSSION
A. Liability
To establish a claim of copyright infringement, Barsch “must show: (i) ownership of a valid copyright; and (ii) unauthorized copying of the copyrighted work.” Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003) (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) and Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc., 150 F.3d 132, 137 (2d Cir. 1998)).
Barsch has shown both of these elements. As to ownership, the photograph at issue was registered with the U.S. Copyright Office as part of a group registration of photographs. See Compl. ¶ 13 (providing U.S. Copyright Office Registration No. VA 2-217-810). While Barsch did not attach a certificate of registration, “courts in this Circuit have accepted a copyright registration number alone to establish copyright ownership in default judgment cases.” Vidyashev v. Visual ID Source, Inc., 2021 WL 4925733, at *3 (E.D.N.Y. Sept. 28, 2021), adopted by 2021 WL 4902528 (E.D.N.Y. Oct. 21, 2021); see Bass v. Diversity Inc. Media, 2020 WL 2765093, at *2 (S.D.N.Y. May 28, 2020). As to unauthorized copying, Barsch did not consent to the use of the photograph, see Compl. ¶ 32, and a review of the Facebook and Instagram posts shows the use of Barsch's work, see Photograph, annexed as Ex. A to Compl. (Docket # 1-1); Instagram Post, annexed as Ex. B to Compl. (Docket # 1-1); Facebook Post, annexed as Ex. C to Compl. (Docket # 1-1). Additionally, the advertisements were posted through Previse's Facebook and Instagram accounts, and when Barsch requested the posts be taken down, Previse directed Barsch to SelfMade, which has been authorized by Previse to post the content to Previse's social media accounts. See Compl. ¶¶ 19, 26, 28. Barsch's allegations are sufficient to establish liability for both defendants.
B. Statutory Damages
“[A]n infringer of copyright is liable for either” actual damages or statutory damages. 17 U.S.C. § 504(a)(1)-(2). Here, Barsch has elected to recover statutory damages. See Prop. Find. at 3. Where a copyright owner elects to recover statutory damages, it may recover “with respect to any one work, . . . no[] less than $750 or more than $30,000 as the court considers just.” 17 U.S.C. § 504(c)(1). However, if the court finds the “infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000.” 17 U.S.C. § 504(c)(2). In order to “prove that a copier's infringement was willful[, a copyright holder] must show that the infringer ‘had knowledge that its conduct represented infringement or . . . recklessly disregarded the possibility.'” Bryant v. Media Right Prods., Inc., 603 F.3d 135, 143 (2d Cir. 2010) (quoting Twin Peaks Prods., Inc. v. Publ'ns Int'l Ltd., 996 F.2d 1366, 1382 (2d Cir. 1993)). “Courts frequently infer willfulness where a defendant defaults.” Hounddog Prods., L.L.C. v. Empire Film Grp., Inc., 826 F.Supp.2d 619, 631 (S.D.N.Y. 2011) (collecting cases).
“No proof of actual damages or, in fact, any damages, is necessary for the award of statutory damages.” Hollander Glass Texas, Inc. v. Rosen-Paramount Glass Co., Inc., 291 F.Supp.3d 554, 559 (S.D.N.Y. 2018) (citation omitted), adopted by 2019 WL 416327 (S.D.N.Y. Feb. 1, 2019). In awarding statutory damages, courts in this Circuit examine:
(1) the infringer's state of mind; (2) the expenses saved, and profits earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on the infringer and third parties; (5) the infringer's cooperation in providing evidence concerning the value of the infringing material; and (6) the conduct and attitude of the parties.Bryant, 603 F.3d at 144 (citation omitted). These factors are commonly referred to as the “Bryant factors.” The court has “wide discretion” in determining an appropriate award of statutory damages. See Fitzgerald Publ'g Co., Inc. v. Baylor Publ'g Co., Inc., 807 F.2d 1110, 1116 (2d Cir. 1986); accord Noble v. Crazetees.com, 2015 WL 5697780, at *6 (S.D.N.Y. Sept. 28, 2015) (citations omitted).
Here, Barsch seeks an award of $30,000, see Prop. Find. at 5, which is the maximum allowable for non-willful infringement under 17 U.S.C. § 504(c)(1). The Court turns next to the Bryant factors.
On the first page of Barsch's Proposed Conclusions of Fact And Law, she seeks “[t]he amount of $16,250 for statutory damages for one count of willful copyright infringement pursuant to 17 U.S.C. § 504(c).” Prop. Find. at 1. On the fifth page, however, Barsch states that she seeks $30,000. See id. at 5. Given that Barsch's presentation justifies an award of $30,000, the Court ignores the $16,250 figure.
As to the first Bryant factor, defendants' state of mind, defendants' default is sufficient to support a finding that they acted willfully. Accord Zuru (Singapore) PTE., LTD. v. Individuals, Corps., Ltd. Liab. Companies, Partnerships, & Unincorporated Associations Identified on Schedule A Hereto, 2023 WL 2747055, at *3 (S.D.N.Y. Mar. 31, 2023), adopted by 2023 WL 2986932 (S.D.N.Y. Apr. 18, 2023); see Experience Hendrix, L.L.C. v. Pitsicalis, 2020 WL 3564485, at *11 (S.D.N.Y. July 1, 2020) (“With respect to the first factor, by virtue of their default, [defendants] are deemed to be willful infringers.”) (citation and quotation marks omitted), adopted by 2020 WL 4261818 (S.D.N.Y. July 24, 2020).
As to the second and third factors, we cannot determine from the record the full extent of the expenses saved or the profits earned by defendants. However, Barsch provided a comparable license, charging a client $3,250 for use of one of her photographs for one year. See License, annexed as Ex. 7 to Prop. Find. (Docket # 33-1). While it is unclear from the pleadings when the Facebook post was removed, the Instagram post had not been taken down at the time of filing the complaint. See Compl. ¶ 30. As the infringement continued for approximately three years, Barsch lost the opportunity to collect three years of licensing fees, which potentially would have amounted to $9,750. See Prop. Find. at 5.
As to the fourth factor, deterrence, “courts have repeatedly emphasized that defendants must not be able to sneer in the face of copyright owners and copyright laws.” Tu v. TAD Sys. Tech. Inc., 2009 WL 2905780, at *6 (E.D.N.Y. Sept. 10, 2009) (quoting New York Chinese TV Programs, Inc. v. U.E. Enterprises, Inc., 1991 WL 113283, at *4 (S.D.N.Y. June 14, 1991) (internal quotation marks omitted)). A heightened award is reasonable in light of “the need to send a signal to these defendants, as well as others, that they will pay a substantial price for willfully infringing the intellectual property rights of others.” Telebrands Corp. v. HM Imp. USA Corp., 2012 WL 3930405, at *9 (E.D.N.Y. July 26, 2012), adopted by 2012 WL 3957188 (E.D.N.Y. Sept. 10, 2012).
As to the fifth factor, “[t]he fact that this case proceeded by default establishes . . . that there was no participation, much less cooperation, by [defendants.” AW Licensing, LLC v. Bao, 2016 WL 4137453, at *3 (S.D.N.Y. Aug. 2, 2016). This factor similarly supports a heightened award. Accord Zuru (Singapore) PTE., LTD., 2023 WL 2747055, at *4.
Looking at the factors collectively, Barsch's requested damages amount of $30,000 is reasonable as it represents approximately three times the comparable licensing fee. See Prop. Find. at 5. Courts in this circuit typically permit a multiplier of ”between three and five times the cost of the licensing fees the defendant would have paid.” Broad. Music, Inc. v. Prana Hosp., Inc., 158 F.Supp.3d 184, 199 (S.D.N.Y. 2016); accord Korzeniewski v. Sapa Pho Vietnamese Rest. Inc., 2019 WL 312149, at *8 (E.D.N.Y. Jan. 3, 2019), adopted by 2019 WL 291145 (E.D.N.Y. Jan. 23, 2019).
Accordingly, an award of $30,000.00 is well within the range of an appropriate award.
C. Attorney's Fees and Costs
A court may, “in its discretion[,] . . . allow the recovery of full costs[,]” and “award a reasonable attorney's fee to the prevailing party as part of the costs” for copyright infringement. 17 U.S.C. § 505. Barsch does not seek attorney's fees but does seek $672 in costs, see Prop. Find. at 5, consisting of a $402 filing fee and $270 in service of process fees, id. at 8; Letter, filed Jan. 4, 2024 (Docket # 37) (providing an invoice showing $270 in service of process fees).
Such expenditures are appropriately awarded as costs and therefore should be allowed. See, e.g., Reiffer v. NYC Luxury Limousine Ltd., 2023 WL 5052034, at *3 (S.D.N.Y. Aug. 8, 2023).
Accordingly, Barsch should be awarded $672 in costs.
Conclusion
For the foregoing reasons, judgment should be entered against Previse, LLC and SelfMadeMe, Inc. in favor of Barsch in the amount of $30,672.00.
In addition to the two named defendants, Barsch sued “Does 1 through 10.” See Compl. Barsch stated “[p]laintiff is unaware of the true names and capacities of the Defendants sued herein as DOES 1 through 10, inclusive, and for that reason, sues such Defendants under such fictitious names.” Id. ¶ 8. “While the naming of fictitious defendants is permissible when a plaintiff has not yet discovered the identity of a party, ‘[f]ictitious parties must eventually be dismissed, if discovery yields no identities.'” Vega-Santana v. National R.R. Passenger Corp., 956 F.Supp.2d 556, 562-63 (S.D.N.Y. 2013) (internal citations omitted) (quoting Kemper Ins. Cos. v. Fed. Express Corp., 115 F.Supp.2d 116, 125 (D. Mass. 2000)). Here, Barsch has never identified these defendants. Accordingly, the action should be dismissed as against the Doe defendants.
PROCEDURE FOR FILING OBJECTIONS TO THIS REPORT AND RECOMMENDATION
Pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil
Procedure, the parties have fourteen (14) days (including weekends and holidays) from service of this Report and Recommendation to file any objections. See also Fed.R.Civ.P. 6(a), (b), (d). A party may respond to any objections within 14 days after being served. Any objections and responses shall be filed with the Clerk of the Court. Any request for an extension of time to file objections or responses must be directed to Judge Clarke. If a party fails to file timely objections, that party will not be permitted to raise any objections to this Report and Recommendation on appeal. See Thomas v. Arn, 474 U.S. 140 (1985); Wagner & Wagner, LLP v. Atkinson, Haskins, Nellis, Brittingham, Gladd & Carwile, P.C., 596 F.3d 84, 92 (2d Cir. 2010).
SO ORDERED.