Smith v. Law Office of Richard St. Paul, Esq., PLLC

Background

Byron Smith alleged that he is the author and copyright owner of a photograph showing a Housing and Urban Development administrator touring the Patterson Houses public housing development in New York. He alleged that the photograph was published on the Wall Street Journal website with a credit identifying him as the photographer. Smith further alleged that the Law Office of Richard St. Paul, Esq., PLLC, used the photograph in a post on its website without a license or permission and omitted the photographer credit.

Smith asserted a copyright-infringement claim and two claims under the Digital Millennium Copyright Act. Section 1202(a) addresses knowingly providing false copyright-management information. Section 1202(b)(3) addresses distributing a copyrighted work after copyright-management information has been removed or altered without authorization.

Rule 12(b)(6) Standard

The court evaluated whether the complaint stated plausible claims for relief. At this stage, the court accepted well-pleaded factual allegations as true, drew reasonable inferences for Smith, and did not accept bare legal conclusions as facts.

Copyright-Infringement Claim

The court held that Smith plausibly alleged the two elements of copyright infringement: ownership of a valid copyright and copying of original parts of the work. The complaint and a publicly available Copyright Office registration record supported a reasonable inference that Smith registered the photograph before bringing the action. The court noted that Smith might later need to submit additional registration materials, but found the allegations sufficient at the pleading stage.

The court also found that Smith plausibly alleged copying. The defendant appeared to admit reproducing the photograph, and the court concluded that an ordinary observer could recognize the image on the defendant’s website as having been taken from Smith’s photograph.

The court rejected dismissal based on fair use. Fair use is a defense that depends on weighing factors such as the purpose of the use, the nature of the copyrighted work, the amount used, and the effect on the work’s market. The court found that the complaint and its exhibits did not establish fair use clearly enough to resolve the issue on a motion to dismiss. In particular, the defendant allegedly reproduced the photograph and the accompanying article without meaningfully changing the photograph or adding commentary. The court also reasoned that the use could substitute for the original work and affect licensing revenue. The copyright claim therefore may proceed.

Digital Millennium Copyright Act Claims

The court dismissed the Section 1202(a) claim because Smith did not plausibly allege that the defendant added false copyright-management information, such as a false copyright notice or an incorrect photographer credit.

The court allowed the Section 1202(b)(3) claim to proceed. Smith plausibly alleged that the photograph was published with a photographer credit, that the defendant distributed the photograph without that credit, and that the defendant lacked authorization to use the photograph. Those allegations supported reasonable inferences that the defendant removed the copyright-management information without authorization and knew, or had reason to know, that doing so could facilitate or conceal its alleged infringement.

Disposition

The court’s order states that the motion to dismiss was granted in part and denied in part. The Section 1202(a) claim was dismissed. The copyright-infringement claim and the Section 1202(b)(3) claim were allowed to proceed. The defendant was ordered to file an answer by June 1, 2023, and the court directed that an initial conference would be scheduled by separate order.