A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Recommended Preliminary Injunction and Declaratory Judgment Be Granted, In Part, And Denied Monetary Damages and Attorneys’ Fees Be Denied, For Copyright Infringement Of Documentary Film.

In a March 3, 2014 Report and Recommendation to the Honorable Ronnie Abrams, Magistrate Judge Ronald L. Ellis recommended that declaratory judgment for the plaintiff be granted in part; that the plaintiff’s request for a permanent injunction be granted; and that the plaintiff’s requests for monetary damages and attorneys’ and costs be denied.

Plaintiff Tanya Steele commenced this action against defendants Richard Bell and Josh Milani Gallery, Pty. Ltd. for declaratory judgment, copyright infringement, fraud on the U.S. Copyright Office, breach of contract, and other claims concerning the ownership of the film, Blackfella’s Guide to New York City. Plaintiff sought declaratory and injunctive relief, damages, and attorney's fees and costs, pursuant to the Copyright Act. On May 16, 2013, the Honorable Ronnie Abrams entered default judgment against defendants and referred the case for an inquest on damages.

Plaintiff sought a declaration that she is the "sole author of the Film because she singlehandedly generated the concept for the Film and supervised the Film's creation from start to finish." The Supreme Court has stated that "[t]he sine qua non of copyright is originality." "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." As the plaintiff developed the concept, content, and overall aesthetic for the film, created the title to the film, executed the film, prepared production schedules, shot and reviewed footage, and wrote the script, the court recommended that plaintiff's request for a declaration that she is the sole author of the film be granted.

The plaintiff also sought a declaration that she was sole copyright owner of the film. The Copyright Act provides that ..[c]opyright in a work protected under this title vests initially in the author or authors of the work." 17 U.S.C. § 201. The court held that because plaintiff had established that she is the "author" of the film under the Act, copyright thus "vests" in her. The court recommended that her request for a declaration that she is the sole copyright owner be granted.

Plaintiff next asked for a declaration that the defendants infringed her copyright in the film. The Act states: "[a]nyone who violates any of the exclusive rights of the copyright owner ... or of the author ... is an infringer of the copyright or right of the author, as the case may be." 17 U.S.C. § 501 (a). Section 106 provides that "the owner of copyright under this title has the exclusive rights to ... prepare derivative works based upon the copyrighted work." 17 U.S.C. § 106(2). Without plaintiff's knowledge or consent, defendants created and distributed a trailer of the film without crediting plaintiff, posted a still photograph from the film and a link to the trailer of the film on Facebook and the Milani Gallery website, calling it a "trailer for Richard Bell's new video," and, after receiving cease and desist letters and removing the materials, reposted the photograph and trailer. The court held that, since plaintiff was the owner of the copyright, she alone had the right to create derivative works, and defendants violated plaintiff's exclusive rights through their actions. The court recommended that plaintiff's request for declaratory judgment that defendants infringed her copyright should be granted.

Plaintiff next sought a declaration nullifying the defendant's copyright registration because the material covered by the registrations was not original; it belonged solely to plaintiff, and plaintiff never transferred any of these ownership rights to one of the defendants. The Copyright Office has full authority to cancel copyrights that have been registered to work that is not "copyrightable." Plaintiff's counsel argued for the proposition that district courts may nullify copyright registrations before the Copyright Office "if the copyrighted material was not original and therefore not subject to copyright protection in the first place." Deeming her argument unpersuasive, the court recommended that the plaintiff's request that the defendant's copyright be declared invalid and cancelled be denied.

The plaintiff sought a declaration that "any agreements that attempted to transfer any interests (copyright or otherwise) in the film to the defendant were null and void because the plaintiff was the sole copyright owner of the film and thus the sole individual with the right to authorize use of the film. "The owner of copyright under this title has the exclusive rights to ... prepare derivative works based upon the copyrighted work:' 17 US.C. § 106(2). Assuming her allegations to be true, the defendant was not entitled to transfer any interests in the plaintiff's work to other individuals. The court recommended that the plaintiff's request be granted.

A court may grant injunctions "on such terms as it may deem reasonable to prevent or restrain infringement of a copyright." 17 U.S.C. § 502(a). A plaintiff seeking a permanent injunction must show "(1) actual success on the merits and (2) irreparable harm." In intellectual property actions, permanent injunctions are normally granted when there is "a threat of continuing violations."

Here, 17 U.S.C. § 502(a) provided the statutory basis for the plaintiff's injunctive relief. Defendants created, distributed, and exhibited unauthorized derivative works from the film without the plaintiff's permission. Because there was a statutory basis for the injunction, and because the defendants demonstrated that they would continue to appropriate images of and from, the film under false pretenses, the court recommended the plaintiff's request for a permanent injunction be granted.

Because the plaintiff owns the copyright to the film, she may be entitled to monetary damages based on the defendants' infringements. Under the Act, a copyright owner is entitled to recover either (1) actual damages and any additional profits of the infringer; or (2) statutory damages for copyright infringement. 17 U.S.C. § 504(a). "A plaintiff shall elect the form of damages prior to final judgment." "[O]nce a plaintiff elects statutory damages he may no longer seek actual damages." The Court may also award attorney's fees and costs. Statutory damages and attorneys’ fees are not available for an unpublished work, like the plaintiff’s, if any infringement occurs before registration.

Because the plaintiff's actual damages were speculative and did not bear a "necessary, immediate and direct causal connection" to the defendants' infringement, and because she could not demonstrate that the defendants profited from the infringements, the court recommend that her request for actual damages and profits be denied.

With regard to statutory damages and attorneys’ fees, the plaintiff asked the court to find that the effective date of her registration is July 11, 2011, the date on which she filed her application, and not October 25, 2011, the date on which she successfully completed the registration process. The court determined the registration date to be October 25, 2011 based on her failure to properly complete the registration process.

The plaintiff further argued that after she properly registered her copyright on October 25, 2011, the defendants "reposted the infringing works onto their website and Facebook profile," thus acting in "willful defiance of' the plaintiff's copyright. The defendants did not stop infringement for an appreciable amount of time. Instead, they removed the infringing materials for twelve days. The defendants' second act of infringement could not be viewed as a new series of infringement warranting statutory damages and attorney's fees; therefore, the court recommended that the plaintiff's claim for statutory damages and attorney's fees be denied.
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