Stokes v. Carcavba, LLC

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS EL PASO DIVISION MICHAEL STOKES, § § Plaintiff, § v. § EP-22-CV-00271-ATB § CARCAVBA, LLC, doing business as THE § TOOL BOX BAR, § § Defendant. § MEMORANDUM OPINION AND ORDER1 Plaintiff Michael Stokes, a photographer, brought this copyright-infringement action against Defendant Carcavba, LLC, doing business as “The Tool Box Bar,” alleging that it posted flyers on its Facebook page with edited versions of his two copyrighted photographs. Before the Court is Plaintiff’s “Motion for Summary Judgment” (ECF No. 25) (“Motion”), in which he seeks summary judgment under Federal Rule of Civil Procedure 56 for his copyright infringement claim. Defendant failed to respond to Plaintiff’s Motion. For the reasons below, the Court GRANTS IN PART and DENIES IN PART Plaintiff’s Motion. I. BACKGROUND A. Undisputed Factual Background Plaintiff is a professional photographer.2 His work often features photographs of nude or semi-nude models, including amputee-veterans, which he compiles into table-books.3 Among his works include: (1) a photograph of shirtless male models Michael Houston and Adam Simmons 1 On December 20, 2022, the parties consented to the exercise of jurisdiction by the undersigned United States Magistrate Judge. ECF No. 14. 2 Mot., Ex. 1 at ¶ 5 [hereinafter, Ex. 1 as Stokes Decl.], ECF No. 25-1. 3 Id. ¶¶ 6, 8, 11. wearing white sailor hats and white pants, while kissing and embracing one another inside a submarine or battleship (“Photograph 1”);+ and (2) a photograph of partially dressed male model Colin Wayne in military fatigues in front of two cannons with his right hand raised to his upper- left chest during a cloudy day (“Photograph 2”).° in in a ee ea 7” . er See =e) i — i i □□□ | tee a ea ata PS Me f wf ; » 1 | a je 3 a ae) i Age 7 ie, i Win Ly bus 4 J □ a Pes a Sf Sh tn | pe ill Ww 7 rs Pa | ee ~— 4 Me oi i a Fe 7 . ao 2, Ny ene nN Vi Se PN eh Ed ae a) ate) Plaintiff registered Photograph 1 with the U.S. Copyright Office on October 19, 2015, under Registration No. Vaul-222-629 (“629 Registration”).© He did the same with Photograph 2 on October 21, 2015, under Registration No. Vau1-224-488 (“488 Registration”). ’ 4 Id. 4 19; Mot., Ex. 1(A). > Stokes Decl. § 21. Mot., Ex. 1(B). ® Mot., Ex. 1(C) [hereinafter, the “629 Registration”]. Mot., Ex. 1(D) [hereinafter, the “488 Registration”]. -2- Defendant owns and operates a bar in El Paso, Texas called “The Tool Box Bar.’® Defendant operates a social media account on Facebook in which it advertises and promotes its bar events.” On November 7, 8, 9, and 10, 2018, Defendant posted the following flyer (“Flyer 1”)!° on its Facebook page: Te TTT YALA A ALD [EYA\Y □□ P tT TOE TT NO NAS TE (oT 7 s,s V4 i me gh a pr be . 3: elie ae eee ae ee re > oD PN ewan a □□ al aN 7 fT tO, a ane ] x Writes. Pa = ty Fs im. es ai i □□ x om | fb)» eT a ae pegs gerant 1 a. a a 4 > E18) aa Te □□ - Teh eee: ye ae ee | INET Tt oo Lau PASS Shia Bi 2S On November 11, 2018, Defendant also posted the following flyer (“Flyer 2”)'! on its Facebook page: Answer to Am. Compl. { 6. Mot., Ex. 2(A) at 8 (Answer to Interrogatory No. 5), ECF No. 25-2. 10 Td.; Mot., Ex. 2(D) at CAR000001-—CAR000005. "| Mot., Ex. 2(A) at 8 (Answer to Interrogatory No. 5); Mot., Ex. 2(D) at CAR000006-CAR000007. -3- Me □□□ tO mts). \/ : rR yamrade) Fs = ) a. 4 > YF = 5 4 2 re! ) is. 105") es 5: OG CA 7 i oN), a} en ae i J a =i I O i ' i a of) — >. Ml i 4 □ 2 ow I <_ ~ so ee, Se a ie . . abies Me. x * - □□□ lid J wt ype oe Se) NESS LIS are oa □□□ y be SRSA Lh Ud = □□ et eet BTS ET ot a Gels -14- Photograph 2 Flyer 2 al A ee , = pan Olelso amen). \ : et a K\ a Ame 5 ee 3 ; □□ eS a a "| Lei, ara Fs he: ahi “i ‘all Fal OO te Pa) SP eae re a ~ = iy | a ‘iS □ CAT Ae as teens) 4 sexe) Oo wang 1 A 4 OR ih ’ 3. Substantial Similarity After establishing factual copying, plaintiffs must next show substantial similarity (or “actionable” copying), which requires them to establish “that the allegedly infringing work is substantially similar to protectable elements of the infringed work.” Batiste, 976 F.3d at 502 (citations omitted). This usually requires a “side-by-side comparison” of the works’ protectable elements “‘to determine whether a layman would view the two works as ‘substantially similar.’” Id. (citations omitted). Substantiality is measured by considering “the qualitative and quantitative importance of the copied material to the plaintiff's work as a whole.” Jd. (same). As discussed above, the Court concludes that it may determine whether the Photographs and Flyers are “substantially similar” as a matter of law because, even after viewing the evidence in Defendant’s favor, they are so overwhelmingly identical that no reasonable juror could reach a different conclusion. The Court further concludes that Plaintiff establishes, as a matter of law, that the Photographs and Flyers are “substantially similar” when viewed in a side-by-side comparison -15- because the Flyers copy all the Photographs’ copyrightable elements—that is, their original artistic elements. True, the subject matter of a photograph—here, partially dressed military service members—is not copyrightable. See Sahuc v. Tucker, 300 F. Supp. 2d 461, 465 n.4 (E.D. La. 2004), aff’d sub nom. Sahuc v. Mohiuddin, 166 F. App’x 157 (5th Cir. 2006). That is because copyright law protects only the original expression of a concept and not the concept itself. See 17 U.S.C.§ 102(b); Boisson, 273 F.3d at 268. Nor are the likenesses and poses of the models in Photographs 1 and 2 copyrightable. See Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright § 1.17 (“The name and likeness [of a person] do not become works of authorship simply because they are embodied in a copyrightable form, such as a photograph.”); Gentieu v. John Muller & Co., 712 F. Supp. 740, 742 (W.D. Mo. 1989) (“[T]he plaintiff cannot claim a copyright on the idea of photographing naked babies. Neither can the poses in which those babies are photographed be the proper material for copyright.”). But the selection and arrangement of the subjects’ position, clothing, lighting, shading, color, and angle are all “concrete” original artistic elements of “[a] photographer’s craft” that are copyrightable. See Leigh v. Warner Bros., 212 F.3d 1210, 1215 (11th Cir. 2000); see also Rogers, 960 F.2d at 307 (“Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved.”) (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60 (1884))). Here, aside from the Flyers’ different backgrounds and text, all the original artistic elements of Photographs 1 and 2 remain in place; indeed, the models’ depictions in Flyers 1 and 2 are overwhelmingly identical to those in the Photographs. As discussed above, the only reasonable conclusion that a jury could reach is that the Flyers have the Photographs’ depiction of the models superimposed on different backgrounds and subjacent to the Tool Box Bar’s advertising text. Because Plaintiff establishes all three elements of his copyright infringement claim, the Court GRANTS his Motion regarding liability. B. Damages for Copyright Infringement The Copyright Act allows plaintiffs to recover either actual damages and the infringer’s profits, or statutory damages. 17 U.S.C. § 504(a). Plaintiffs may elect to recover statutory damages if their work was registered before the defendant’s infringement. See id. § 412. Plaintiffs electing statutory damages are entitled to an award between $750 and $30,000 per work infringed, “as the court considers just.” Id. § 504(c)(1). For willful infringement, the maximum permissible award per infringed work rises to $150,000. Id. § 504(c)(2). Plaintiffs establish that an infringement is “willful” upon a showing that (1) the defendant knew it was infringing on the copyright holder’s rights, or (2) the defendant’s actions resulted from “reckless disregard” for, or “willful blindness” to, the copyright holder’s rights. See Berg v. Symons, 393 F. Supp. 2d 525, 539 (S.D. Tex. 2005) (quoting Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 263 (2d Cir. 2005)). In his Motion, Plaintiff elects to recover statutory damages. Mot. at 14–15. Plaintiff may do so because he registered Photographs 1 and 2 in October 2015 before Defendant’s infringement in November 2018.20 Plaintiff asks the Court to award him a total of $71,940.00 in statutory damages ($35,970.00 for each Photograph infringed) because he argues that Defendant’s infringement was willful. See id. at 18–20. Specifically, Plaintiff argues that Defendant (1) admitted not having a license to use the Photographs; (2) “removed the watermark from the 20 See the 629 Registration; the 488 Registration. Photographs (or otherwise cropped [the] same)”; (3) knew “full-well that almost any internet search engine will provide notice that images returned in any search result either are or may be subject to copyright”; and (4) despite having notice of this litigation, continues to display and refuses to remove Flyers 1 and 2 from its Facebook page. Id. at 19. Plaintiff then arrives at the $35,970.00 award per work infringed by arguing that it represents three times the estimated lost licensing fee of $11,990.00—which he in turn obtains from Getty Images, “the leading stock photography agency,” for allegedly comparable stock photographs used for analogous commercial advertising. See id. at 15–18. But the Supreme Court has held that “the Seventh Amendment provides a right to a jury trial on all issues pertinent to an award of statutory damages under § 504(c) of the Copyright Act, including the amount itself.” Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 355 (1998). So just as with any determination of liability under Rule 56, if Plaintiff fails to show that no genuine fact dispute exists and to establish as a matter of law that he is entitled to the requested statutory damages award, then the jury “is to try the material facts” and decide the amount of statutory damages to award Plaintiff. See Baranowski v. Hart, 486 F.3d 112, 126 (5th Cir. 2007) (quoting Plaisance v. Phelps, 845 F.2d 107, 108 (5th Cir. 1988)). Here, after reviewing the proffered evidence in his Motion, the Court concludes that Plaintiff fails to carry his burden under Rule 56 on his request for $71,940.00 in statutory damages. To begin, Plaintiff fails to present sufficient evidence to establish that Defendant’s infringement was willful. Although it is undisputed that Plaintiff and Defendant have executed no license agreement, or that Defendant is not Plaintiff’s customer,21 Plaintiff cites no competent summary judgment evidence to support that Defendant knew it was infringing on Plaintiff’s copyrights, or 21 Mot., Ex. 2(C) at 34 (Answers to Request for Admission 12 & 13). that its actions resulted from “reckless disregard” for, or “willful blindness” to, his copyrights. See Mot. at 19. In fact, all assertions in Plaintiff’s declaration about Defendant’s willfulness are either conclusory, speculative, or begin with the phrase “[u]pon information and belief.”22 See Provident Life & Acc. Ins. Co. v. Goel, 274 F.3d 984, 1000 n.79 (5th Cir. 2001) (statements made on belief or “on information and belief” cannot be used on a summary judgment motion); see also Fed. R. Civ. P. 56(c)(4) (“An affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated.”). Plaintiff also fails to present sufficient competent summary judgment evidence to establish that a lost licensing fee for each Photograph “is worth no less than” $11,990.00. Mot. at 20. First, Plaintiff’s argument relies only on his own declaration and provides no expert declaration supporting the reliability of the methodology he used to estimate the lost licensing fee. To be sure, Plaintiff could testify as his own expert so long as he meets the requirements of Federal Rule of Evidence 702. See Song v. Turtil, No. 21CIV2269VBAEK, 2022 WL 1239590, at *5 (S.D.N.Y. Apr. 27, 2022) (finding that plaintiff failed to satisfy the requirements of Rule 702 to serve as his own expert). Yet Plaintiff provides nothing in the record to show that he satisfies the Rule’s requirements. And second, while a reasonable factfinder could agree that the requested statutory damages award is also warranted because Defendant’s infringement could harm Plaintiff’s business and tarnish his reputation with the Photographs’ models and the military community, Plaintiff’s relevant assertions in his declaration cannot support such a finding as a matter of law. Like his assertions on Defendant’s willfulness, Plaintiff’s assertions on the potential harm to his 22 See Stokes Decl. ¶¶ 46, 48–53. business and reputation are based on his own belief and not personal knowledge.*? See Goel, 274 F.3d at 1000 n.79. Because Plaintiff fails to carry his burden under Rule 56 on damages, the Court DENIES his Motion regarding damages. IV. CONCLUSION For all these reasons, the Court GRANTS IN PART and DENIES IN PART Plaintiff Michael Stokes’ “Motion for Summary Judgment” (ECF No. 25). The Court GRANTS Plaintiff's motion with respect to liability but DENIES Plaintiff's motion in all other respects. So ORDERED and SIGNED this 8th day of March 2024. LO. Br ANNET.BERTON =————~— UNITED STATES MAGISTRATE JUDGE °3 See Stokes Decl. Jf 41, 43-45, 55. -20 -