O'Neil v. Ratajkowski

• Decision Date: 28 September 2021
• Docket Number: 19 Civ. 9769 (AT)
• Citation: 563 F.Supp.3d 112
• Parties: Robert O'NEIL, Plaintiff, v. Emily RATAJKOWSKI and Emrata Holdings, LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

563 F.Supp.3d 112

Robert O'NEIL, Plaintiff,

v.Emily RATAJKOWSKI and Emrata Holdings, LLC, Defendants.

19 Civ. 9769 (AT)

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

Signed September 28, 2021

James H. Freeman, Liebowitz Law Firm, PLLC, New Rochelle, NY, Richard Liebowitz, Liebowitz Law Firm, PLLC, Valleystream, NY, for Plaintiff.

Daniel Adam Schnapp, Nixon Peabody LLP, New York, NY, for Defendant Emily Ratajkowski.

ORDER

ANALISA TORRES, District Judge:

Plaintiff, Robert O'Neil, brings this action alleging copyright infringement by Defendants, Emily Ratajkowski and Emrata Holdings, LLC. Compl., ECF No. 1. The parties cross-move for summary judgment. ECF Nos. 37, 42. For the reasons stated below, both motions are GRANTED in part and DENIED in part.

BACKGROUND

The facts discussed in this opinion are undisputed except where otherwise noted. The Court has drawn all reasonable inferences in favor of the nonmovant. See Costello v. City of Burlington , 632 F.3d 41, 45 (2d Cir. 2011).¹

Ratajkowski is a professional model and actress, who also heads a clothing line. Inamorata. Def. 56.1 Stmt. at 1–2, ECF No. 47: Pl. 56.1 Stmt. ¶ 57, ECF No. 45. Ratajkowski also personally runs an Instagram account with the username Emrata (the "Instagram Account"). Def. 56.1 Stmt. at 2–3. Ratajkowski usually posts personal or political photographs, but she has posted "sponsored posts" on her main Instagram feed, and, more rarely, her Instagram Stories, which disappear in 24 hours. Id. ; Pl. 56.1 Stmt. ¶ 39; Ratajkowski Dep. Tr. at 17:19–18:2, 49:9–14, ECF No. 44-4. The main profile page of the Instagram Account also includes a link to her clothing line. Pl. 56.1 Stmt. ¶ 57. All money she makes through acting, modeling, or the Instagram Account flows to Emrata Holdings, LLC ("Emrata"). Ratajkowski Dep. Tr. at 85:3–15.

Plaintiff is a "paparazzi photographer," who generally attempts to take "candid" shots of celebrities unaware of his presence. Def. 56.1 Stmt. at 3.

On September 13, 2019, Plaintiff photographed Ratajkowski outside of the Adore Flower Shop in downtown Manhattan. Id. at 7–8. He took nine frames in rapid succession, including the photograph at issue here (the "Photograph"), which depicts Ratajkowski on the street, with her face covered by the bouquet of flowers she pulled in front of her face (an action Plaintiff interprets as her hiding from paparazzi photographers). Photograph, ECF No. 1-1; Def. 56.1 Stmt. at 7–8.

Plaintiff then uploaded the Photograph to Splash News ("Splash"), Plaintiff's agency. Def. 56.1 Stmt. at 5–6; Pl. 56.1 Stmt. ¶ 24. Splash posts Plaintiff's photographs online for licensing to its subscribers, in exchange for 40 percent of any license fees. Def. 56.1 Stmt. at 5; Pl. 56.1 Stmt. ¶ 24. Plaintiff made minimal, if any, income from the Photograph. O'Neil Dep. Tr. at 80:25–81:11, ECF No. 44-5. Plaintiff states he also sent the Photograph to his attorney, who then registered it, along with 747 other photographs, with the United States Copyright Office (the "Copyright Office"); his counsel states that this resulted in registration certification VA 2-173-330 (the "Registration"). Def. 56.1 Stmt. at 8–9, 13; Pl. 56.1 Stmt. ¶ 69; Leibowitz Decl. ¶¶ 8–9, ECF No. 44; Registration, ECF No. 43-4.

On September 18, 2019, Ratajkowski posted the Photograph to the Instagram Stories of the Instagram Account. Pl. 56.1 Stmt. ¶ 25; Def. 56.1 Stmt. at 2, 16. It (the "Instagram Photograph") was automatically deleted after 24 hours. Def. 56.1 Stmt. at 7. The Photograph and the Instagram Photograph are largely the same, except Ratajkowski added the words "mood forever" to the bottom of the Instagram Photograph. Photograph; Instagram Photograph, ECF No. 1-2; Pl. 56.1 Stmt. ¶ 31; Def. 56.1 Stmt. at 7.

On October 23, 2019, Plaintiff filed this action, alleging copyright infringement against Defendants. Compl. Defendants move for summary judgment on the grounds that (1) the Photograph is not the subject of a valid copyright, (2) Ratajkowski's reposting was fair use, (3) Plaintiff has not suffered damages, and (4) Plaintiff cannot show facts establishing Emrata's involvement. Def. Mem. at 2–4, ECF No. 38. Defendants also seek an order granting sanctions and attorney's fees. Id. at 3-4. Plaintiff cross-moves for partial summary judgment on the elements of his infringement claim and on Defendants’ affirmative defenses to liability. Pl. Mem. at 2, ECF No. 46.

DISCUSSION

I. Legal Standard

On a motion for summary judgment, the movant must show "that there is no genuine dispute as to any material fact and [that it] is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The movant bears the initial burden of pointing to evidence in the record "which it believes demonstrate[s] the absence of a genuine issue of material fact." Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The movant may support an assertion that there is no genuine dispute by "showing ... that [the] adverse party cannot produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(1)(B). A genuine dispute of material fact exists when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). On summary judgment, the Court construes the facts, resolves all ambiguities, and draws all permissible factual inferences in favor of the non-moving party. See Dallas Aerospace, Inc. v. CIS Air Corp. , 352 F.3d 775, 780 (2d Cir. 2003).

II. 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.’ " Williams v. Crichton , 84 F.3d 581, 587 (2d Cir. 1996) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ). Defendants move for summary judgment on the first prong, arguing that (1) Plaintiff has not demonstrated he registered his copyright in the Photograph, and (2) the Photograph is not sufficiently original to qualify as copyrightable. Def. Mem. at 8–13. Plaintiff moves for summary judgment on both prongs. Pl. Mem. at 8–13.

A. Registration

Under 17 U.S.C. § 410(c), a certificate of registration from the United States Register of Copyrights constitutes prima facie evidence of the valid ownership of a copyright. Jorgensen v. Epic/Sony Records , 351 F.3d 46, 51 (2d Cir. 2003). A plaintiff must demonstrate that a work is protected by a copyright registration. Mantel v. Microsoft Corp. , No. 16 Civ. 5277, 2018 WL 1602863, at *3 (S.D.N.Y. Mar. 29, 2018). Once registration is established, the burden shifts to the defendant to challenge the validity of that registration. Fonar Corp. v. Domenick , 105 F.3d 99, 104 (2d Cir. 1997).

Here, it is impossible to tell from the face of the Registration if it covers the Photograph. ECF No. 43-4; Def. 56.1 Stmt. at 13. Richard Leibowitz, then Plaintiff's attorney, submitted a declaration, stating that it is his firm's "routine practice" to register its clients’ photographs with the Copyright Office, that he directly supervises the support staff that handles the copyright registration process, including Donna Halperin, that the "content title of the Photograph, as listed on the face of the [Registration], is "Emily Ratajkowski20190913_0005.jpg," and that registration of the Photograph was carried out "in accordance with [the firm's] routine practice." Leibowitz Decl. ¶¶ 5–10. Although Plaintiff's briefing and 56.1 statement cite a declaration from Donna Halperin, no such document was filed on the docket. See Pl. Mem. at 10, 26; Pl. 56.1 Stmt. ¶¶ 66, 68–69, 71–72. It also appears that Leibowitz does not have direct knowledge of the registration, see Leibowitz Decl., and, in the past, has stated that he "did not play any role in the filing" of an application done by the internal staff, Usherson v. Bandshell Artist Mgmt. , No. 19 Civ. 6368 (S.D.N.Y. Feb. 7, 2020), ECF No. 63 ¶ 13. Moreover, the Photograph is not the only file in the Registration. The Court, therefore, cannot discern if it is covered by reviewing the Registration. See Iantosca v. Elie Tahari, Ltd. , No. 19 Civ. 4527, 2020 WL 5603538, at *4 (S.D.N.Y. Sept. 18, 2020). Nor did Plaintiff personally apply for registration, permitting the Court to rely on his testimony. Masi v. Moguldom Media Grp. LLC , No. 18 Civ. 2402, 2019 WL 3287819, at *4 (S.D.N.Y. July 22, 2019) ("Given [p]laintiff's sworn declaration, and deposition testimony that he included all 45 of the high resolution photos that appeared in his gallery with his registration application, [d]efendant's speculative statements regarding the scope of the copyright do not create a triable issue of fact as to whether the [r]egistration covers the photographs at issue." (citations omitted)). The Court, therefore, cannot find that Plaintiff submitted sufficient "hard evidence" with his briefing to demonstrate registration. Mantel , 2018 WL 1602863, at *3 ; Ferdman v. CBS Interactive Inc. , 342 F. Supp. 3d 515, 530 (S.D.N.Y. 2018).

However, after the close of summary judgment briefing, Plaintiff's counsel requested that the Court take judicial notice of a certified deposit copy he had requested from the Copyright Office. ECF No. 52. His initial letter to the Court, dated November 24, 2020, consisted of (1) a copy of the certificate from the Copyright Office stating that "the attached flash drive is a true copy of the work" deposited with the Copyright Office under the Registration, (2) an image of a flash drive labelled with the registration number, and (3) a copy of the Photograph. ECF No. 52-1. Defendants oppose such notice, arguing that the documents should have been produced during discovery, and Plaintiff had failed to authenticate the copy of the Photograph as a file on the flash drive and the flash drive as the drive sent with the certificate. ECF No. 53. Plaintiff's...