Carrillo v. Sabbadini

Background

Cristina Carrillo brought a copyright-infringement action under the Copyright Act against Micol Sabbadini, ZV NY, Inc. (“ZV NY”), and ZV France. Carrillo alleges that she created a poster reading “Love Will Rise Above All” at the New York City Women’s March on January 21, 2017. She alleges that a photograph used on one of shirts produced through a collaboration involving Sabbadini and ZV NY copied her poster, combined it with another poster, and was made to look like a Polaroid photograph.

According to the complaint, the shirts were launched in February 2018 and continued to be designed, imported, manufactured, and offered for sale through the present. Carrillo alleges that she discovered the alleged infringement on July 4, 2020. She applied for copyright registration on November 7, 2022, and the work was registered on December 4, 2022. Carrillo filed this action on July 1, 2023.

ZV NY filed a partial motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim. ZV NY sought dismissal of Carrillo’s requests for statutory damages and attorney’s fees. ZV NY also asked the court to limit damages and profits to the three years before the complaint was filed.

Statutory Damages and Attorney’s Fees

The Copyright Act permits a copyright owner to seek either actual damages or statutory damages, and it permits a court to award reasonable attorney’s fees to a prevailing party. But the Act bars statutory damages and attorney’s fees for infringement that begins after the work’s first publication and before the copyright registration becomes effective.

The court applied the rule that infringement begins with the first act in a series of continuing infringements. Carrillo’s complaint alleged that ZV NY’s infringement began in February 2018, more than four years before the registration became effective. The complaint also alleged continued use from February 2018 through the present and did not allege an appreciable interruption. The court therefore concluded that the alleged post-registration infringement was part of the same infringement that began before registration.

The court rejected Carrillo’s argument that ZV NY had not shown that the infringement was continuous, explaining that her own complaint alleged continued use and did not allege a significant cessation. The court held that Carrillo could not recover statutory damages or attorney’s fees and granted ZV NY’s motion to dismiss those claims.

Limit on Damages

ZV NY argued that the Copyright Act’s three-year filing deadline also limited the damages Carrillo could recover to the three years preceding July 1, 2023. The court explained that, under the discovery rule applied in the Second Circuit, a copyright claim generally accrues when the copyright owner discovers, or should have discovered with reasonable care, the infringement.

ZV NY relied on an earlier Second Circuit decision that imposed a three-year damages limit distinct from the rule governing when a claim accrues. While the motion was being briefed, however, the Supreme Court decided Warner Chappell Music, Inc. v. Nealy. The court read that decision as holding that a copyright owner with a timely claim may recover damages for infringement regardless of when the infringement occurred. In light of that intervening authority, the court declined to impose ZV NY’s proposed three-year limit and denied that motion.

Disposition

The court stated that ZV NY’s partial motion to dismiss was granted in part and denied in part. ZV NY’s motion to dismiss Carrillo’s claims for statutory damages and attorney’s fees was granted. ZV NY’s motion to limit damages to the three-year period preceding July 1, 2023 was denied. The court directed the defendants to file an answer to the complaint within 30 days and directed the Clerk of Court to terminate the motion at docket entry 18. The opinion did not decide whether the alleged copyright infringement occurred.