Elatab v. Hesperios, Inc.

Background

Jawad Elatab sued Hesperios, Inc. under Section 501 of the Copyright Act. Elatab alleged that he photographed model Bella Hadid, registered the photograph with the United States Copyright Office, and that Hesperios posted the photograph on Instagram to promote its clothing line. He alleged that Hesperios did not obtain a license or permission to publish the photograph. Hesperios moved to dismiss the complaint under Rule 12(b)(6), which tests whether a complaint states a legally sufficient claim.

Fair Use

The court rejected Hesperios’s fair-use defense. Fair use is a legal doctrine that can permit use of copyrighted material without the copyright owner’s permission in certain circumstances. The court considered the four statutory fair-use factors.

The court found that Hesperios’s use was not transformative because the company posted the photograph without modification, described the clothing shown in the photograph, and stated when the clothing would be available. The court found no commentary or critique that changed the photograph’s original message. It also found that the Instagram post was commercial because it advertised Hesperios’s clothing.

The court treated Elatab’s photograph as a creative work, which weighed against fair use. Although Hesperios used the entire photograph, the court noted that using an entire work does not automatically defeat fair use; here, however, the full use weighed against fair use because the post was an advertisement rather than commentary. Finally, the court found that the post had the potential to interfere with Elatab’s market for licensing the photograph. The court concluded that Hesperios’s use failed to qualify as fair use at the motion-to-dismiss stage.

De Minimis Use

Hesperios also argued that its single Instagram post was de minimis, meaning so trivial that the law would not impose liability. The court rejected that argument because Hesperios used the entire photograph without modification. The court distinguished cases involving use of only a small portion of a copyrighted work.

Copyright-Infringement Allegations

A copyright-infringement claim requires allegations that the plaintiff owns a valid copyright and that the defendant copied original parts of the work without authorization. The court found that Elatab adequately pleaded ownership because he alleged and submitted information about the photograph’s copyright registration. The court also found that he adequately pleaded copying because he alleged that Hesperios posted the photograph without his consent, and Hesperios conceded that it posted the photograph.

Willfulness and Other Damages Requests

Elatab sought statutory damages based on alleged willful infringement. Willfulness requires proof that the defendant knew about the infringement or acted with reckless disregard for, or deliberate ignorance of, the copyright owner’s rights. The court found that Elatab’s complaint merely asserted that the infringement was willful and contained no facts supporting a plausible inference of willfulness.

The court therefore granted Hesperios’s motion to dismiss Elatab’s willful-infringement claim. Because the willfulness allegations were inadequate, the court did not address Elatab’s requests for attorney’s fees, costs, or damages at that time. The court allowed Elatab to amend the complaint by June 18, 2021.

Disposition

Judge Andrew L. Carter, Jr. granted in part and denied in part Hesperios’s motion to dismiss. The court dismissed the willful-infringement claim, while allowing the adequately pleaded copyright-infringement allegations to proceed, subject to Elatab’s opportunity to amend.