BILL COBB v. AMERICAN URBAN RADIO NETWORKS LLC
24 Civ. 1305
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
February 27, 2025
PAUL A. ENGELMAYER, District Judge
OPINION & ORDER
Plaintiff Bill Cobb, an aerial photographer, brings this copyright-infringement action against defendant American Urban Radio Networks LLC (“AURN“) under the Copyright Act,
I. Background1
Cobb is a professional photographer who specializes in aerial photography of urban landscapes. AC ¶ 2. On September 20, 2016, Cobb registered for copyright protection a photograph he took of the Evanston, Illinois skyline, titled “chicago_253_81225” (the “Work“). Id. ¶¶ 11-12. He displayed the Work on his personal website for commercial licensing and other custom requests. Id. ¶ 13.
AURN is a national radio network alleged to be the “#1 Nielsen rated national audio network company reaching African Americans[,] [w]ith over 40 million weekly listeners on
On or about August 25, 2021, Cobb discovered AURN‘s allegedly unauthorized use of the Work on the Website. Id. ¶ 20. There, the Work was annexed to an AURN news article about a citywide proposal to address income inequality in Evanston. See id., Ex. 4. Cobb states that the Website‘s use of the Work included an identifying “watermark” that Cobb had superimposed on the bottom right corner of the photograph. Id. ¶ 24.; see also id., Ex. 5. Cobb alleges that “[a]fter AURN copied the Work, it made further copies and distributed the Work on the internet.” Id. ¶ 22. Cobb alleges that AURN‘s unauthorized use and distribution of the Work was “in connection with Defendant‘s business for purposes of advertising and promoting Defendant‘s business[.]” Id. ¶ 26. Cobb alleges that he notified AURN of the allegedly infringing activity on July 13, 2022, and again on January 5, 2023. Id. ¶ 28. However, AURN did not respond, and, as of the filing the Complaint, the Work remained on the Website. Id.
On February 21, 2024, Cobb filed the Complaint. Dkt. 1. On June 21, 2024, AURN moved to dismiss. Dkt. 18. On July 12, 2024, Cobb filed the Amended Complaint, operative today, which brings a single count of copyright infringement under the Copyright Act,
II. Discussion
To survive a
AURN‘s arguments in support of dismissal are based on the fair use defense to copyright infringement. See
A. Infringement
To state a claim for copyright infringement, a complaint must allege (1) which specific original works are the subject of the copyright claim, (2) that plaintiff owns the copyrights in those works, (3) that the copyrights have been registered in accordance with the statute, and (4) by what acts during what time the defendant infringed the copyright. See Warren v. John Wiley & Sons, Inc., 952 F. Supp. 2d 610, 616 (S.D.N.Y. 2013) (quoting Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992)).
As to the first prong, the complaint need only state “which specific original works are the subject of the copyright claim.” Warren, 952 F. Supp. 2d at 616. Here, the AC identifies the specific work at issue. It names the Work, “chicago_253_81225,” as the subject of the infringement claim and attaches a copy of the image. AC ¶ 11; id., Ex. 3. That satisfies the first
The second and third prongs require the plaintiff “to assert ownership of the relevant copyrights,” and to allege “federal copyright registration of the relevant works.” Hartmann v. Amazon, Inc., 2021 WL 3683510, at *4 (S.D.N.Y. Aug. 19, 2021). Here, Cobb has annexed to the AC a certificate of registration from the Copyright Office, which names Cobb as the owner of the copyright for the Work. AC, Ex. 2. That registration “constitutes prima facie evidence of the valid ownership of a copyright,” Hartmann, 2021 WL 3683510, at *4 (citation omitted), and thus satisfies the second and third Kelly prongs. See Davidson v. 925 LLC, No. 23 Civ. 9891, 2025 WL 35039, at *4 (S.D.N.Y. Jan. 6, 2025) (provision of copyright registration certificate satisfies second and third prong); Marvullo v. Gruner & Jahr AG & Co., No. 98 Civ. 5000, 2001 WL 40772, at *2 (S.D.N.Y. Jan. 17, 2001) (same).
The fourth prong requires that the complaint state “by what acts during what time the defendant infringed the copyright.” Kelly, 145 F.R.D. at 36. The complaint need not “specify which copyright is infringed by which act,” but must “contain some factual allegations to narrow the infringing acts beyond broad conclusory statements of infringement.” Palmer Kane LLC v. Scholastic Corp., No. 12 Civ. 3890, 2013 WL 709276, at *3 (S.D.N.Y. Feb. 27, 2013). Here, the AC identifies the date Cobb discovered the alleged infringement and the date upon which he gave notice to AURN, alleges that AURN “copied Cobb‘s Work without Cobb‘s permission,” “made further copies” of the Work, “distributed the Work on the internet,” and “displayed [the
The AC thus pleads a plausible claim of direct copyright infringement.2
B. Fair Use Affirmative Defense
Section 107 of the Copyright Act provides that “the fair use of a copyrighted work, ... for purposes such as criticism, comment, news reporting, teaching ..., scholarship, or research, is not an infringement of copyright.”
the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; - the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
The fair use doctrine reflects Congress‘s recognition that, consistent with the Act‘s purposes, “‘some opportunity for fair use of copyrighted materials’ is necessary to promote progress in science and art.” TCA Television Corp. v. McCollum, 839 F.3d 168, 178 (2d Cir. 2016) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994)). The Act “reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts.” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 526 (2023) (citing Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975)). The fair use test is thus “flexible” in its application, and “requires judicial balancing, depending upon relevant circumstances.” Id. at 527 (quoting Google LLC v. Oracle Am., Inc., 593 U.S. 1, 19 (2021)).
Important here, because fair use is “an open-ended and context-sensitive inquiry,” Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013), this defense is rarely resolved at the motion to dismiss stage. See TCA Television Corp., 839 F.3d at 178 (“Courts most frequently address a proffered fair use defense at summary judgment.“); Playboy Enters. Int‘l Inc. v. Mediatakeout.com LLC, No. 15 Civ. 7053, 2016 WL 1023321, at *3 (S.D.N.Y. Mar. 8, 2016) (“[T]he fair-use defense is so fact-sensitive that the Second Circuit has instructed district courts
This is not such a case, as the following review of the statutory factors reflects.
1. Purpose and Character of the Use
The first fair use factor, which evaluates the “purpose and character of the use,” is “[t]he heart of the fair use inquiry.” Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006) (citation omitted). The “central” question it asks is “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character.” Andy Warhol, 598 U.S. at 528 (cleaned up) (citing Campbell, 510 U.S. at 579). In assessing this factor, courts consider whether the use was (1) transformative, (2) for commercial purposes, or (3) in bad faith. See Schwartzwald v. Oath Inc., No. 19 Civ. 9938, 2020 WL 5441291, at *3 (S.D.N.Y. Sept. 10, 2020); see also NXIVM Corp. v. Ross Inst., 364 F.3d 471, 477-78 (2d Cir. 2004).
a. Transformativeness
A use that “has a further purpose or different character is said to be ‘transformative.‘” Andy Warhol, 598 U.S. at 529 (quoting P. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990)). Thus, a copyrighted image may be transformative where “the use serves to illustrate criticism, commentary, or a news story about that work.” Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 352 (S.D.N.Y. 2017) (emphasis in original). However, if a photograph is merely used as an “illustrative aid” that “depicts the subjects described in an article,” courts routinely find that this does not constitute transformative use. Id.
The AC pleads facts plausibly supporting that AURN‘s use of the work was not transformative. The use of a copyrighted photo in a news article can constitute transformative use where the photo is used to add commentary or criticism to the subject of the article. See Yang v. Mic Network, Inc., 405 F. Supp. 3d 537, 543 (S.D.N.Y. 2019) (“Using a portion of an original work to identify and inform viewers about the subject of a controversy can constitute transformative use.“). But the pleadings do not support such here. AURN‘s use of the Work‘s depiction of the Evanston skyline is used as an “illustrative aid” to its news article about income inequality in Evanston. McGucken, 464 F. Supp. 3d at 606. AURN thus appears to fail to imbue the photograph with any “new meaning.” Id. Any argument to the contrary “would eliminate copyright protection any time a copyrighted photograph was used in conjunction with a news story about the subject of that photograph.” Barcroft, 297 F. Supp. 3d at 352. This subfactor weighs in Cobb‘s favor.
b. Commercial nature
With respect to the second subfactor, “the greater the private economic rewards reaped by the secondary user (to the exclusion of broader public benefits), the more likely the first factor will favor the copyright holder and the less likely the use will be considered fair.” Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 83 (2d Cir. 2014) (cleaned up). Taking the AC‘s allegations as true, as the Court must at this stage, AURN‘s act of infringement generated commercial revenue for it. AC ¶ 26. To be sure, AURN disputes that fact. See D. Mem. at 5 (“[T]here was absolutely no commercial exploitation of the Cobb Photo associated with Defendant‘s publication of the Reparations Article on its website resulting in any financial gain
c. Bad faith
The propriety of a defendant‘s conduct “is an integral part of the analysis under the first factor,” and “courts [should] consider a defendant‘s bad faith in applying the first statutory factor.” NXIVM Corp., 364 F.3d at 478. At the motion to dismiss stage, the absence of bad faith must be “evident on the face of the complaint.” Winfrey, 717 F.3d at 308. As alleged, AURN intentionally used Cobb‘s copyrighted work. AC ¶¶ 24-25, 34; id., Ex. 5. To be sure, AURN claims it was unaware that it was infringing. See D. Mem. at 10. But on the challenge to the pleadings, the Court again must credit the allegations in the AC. See Koch, 699 F.3d at 145. This subfactor, too, presently favors Cobb.
2. Nature of the Work
In assessing the nature of the work, the Court considers “(1) whether the work is expressive or creative, such as a work of fiction, or more factual, with a greater leeway being allowed to a claim of fair use where the work is factual or informational, and (2) whether the work is published or unpublished, with the scope for fair use involving unpublished works being considerably narrower.” Blanch, 467 F.3d at 256 (citation omitted).
As to the first subfactor, Cobb alleges that his choices of “perspective, orientation, positioning, lighting, and other details” in capturing the photograph renders the Work an original expression. See AC ¶ 15; see also Pl. Mem. at 8. AURN argues that the Work is merely a
With respect to the second subfactor, “the unpublished nature of a work is a key, though not necessarily determinative, factor tending to negate a defense of fair use.” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 554 (1985) (cleaned up). The AC‘s allegation that the Work was published, see AC ¶ 13, favors a finding of fair use.
Given these offsetting considerations, the Court finds that the second factor, as a whole, is neutral.
3. The Amount and Substantiality Used
The third factor in the fair use inquiry is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole[.]”
Here, AURN reproduced the entirety of the Work, as AURN acknowledges. See D. Mem. at 7. But “this factor ‘weighs less when considering a photograph—where all or most of the work often must be used in order to preserve any meaning at all—than a work such as a text or musical composition, where bits and pieces can be excerpted without losing all value.‘” Ferdman v. CBS Interactive, Inc., 342 F. Supp. 3d 515, 539 (S.D.N.Y. 2018) (quoting N. J. Media Grp. Inc. v. Pirro, 74 F. Supp. 3d 605, 621 (S.D.N.Y. 2015)). Because it would not have been feasible for AURN to use less than the entire photo for its article, the Court finds this third factor not to favor either party. See McGucken, 464 F. Supp. 3d at 608 (finding third factor neutral when entirety of the photograph was reproduced in the secondary work).
4. Effect Upon the Potential Market
The fourth and final factor is “the effect of the use upon the potential market for or value of the copyrighted work.”
AURN fairly notes that the AC neither identifies a market for the Work nor an economic loss attributable to AURN‘s infringing use of the Work. See D. Memo at 8. The AC did, however, allege that the Work is available for “commercial licensing or other custom requests,”
It is, further, entirely plausible that AURN‘s use of the Work would supplant Cobb‘s profits. Cobb‘s business model involves the licensing of his photos for commercial use, and AURN used the Work in the same way as would be expected of one of Cobb‘s customers. See AC ¶¶ 13, 20; id., Ex. 4. This factor, on the pleadings, favors Cobb.
* * *
For the reasons above, the Court concludes, based on the pleadings, that the first and fourth factors favor plaintiff and that the second and third are neutral. Given these findings, the Court cannot find fair use is “evident” at this stage. Winfrey, 717 F.3d at 308. AURN‘s motion to dismiss on this ground must be denied, without prejudice to its ability to litigate the point anew on summary judgment.
For the foregoing reasons, the Court denies AURN‘s motion to dismiss. The Clerk of Court is respectfully directed to terminate the motion pending at docket 23. By separate order, the Court will schedule an initial pretrial conference.
SO ORDERED.
PAUL A. ENGELMAYER
United States District Judge
Dated: February 27, 2025
New York, New York