UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION
PREPARED FOOD PHOTOS, INC. f/k/a ) CASE NO. 1:23-cv-2470 ADLIFE MARKETING & ) COMMUNICATIONS CO., INC., ) JUDGE CHARLES E. FLEMING ) Plaintiff, ) ) ORDER GRANTING PLAINTIFF’S vs. ) MOTION FOR DEFAULT JUDGMENT ) ANTONIO’S PIZZA, INC. d/b/a ) ANTONIO’S SHOPPES AT PARMA, )
Defendant.
Before the Court is the motion of Plaintiff Prepared Food Photos, Inc. f/k/a Adlife Marketing & Communications Co., Inc. (“Plaintiff”) for default final judgment (the “Motion”) against Defendant Antonio’s Pizza, Inc. d/b/a Antonio’s Shoppes at Parma (“Defendant”). (ECF No. 6). The Court has considered the Motion, has noted the Clerk’s default against Defendant, and is otherwise advised in the premises. Pursuant to Rule 55 of the Federal Rules of Civil Procedure, the Court concludes that Plaintiff has met its burden of showing that it is entitled to a final default judgment as to Defendant. Plaintiff has also met its burden of showing that it is entitled to permanent injunctive relief against Defendant as specified herein. Accordingly, it is ORDERED AND ADJUDGED as follows: I. FINDINGS OF FACT1 1. Plaintiff is in the business of licensing high-end, professional photographs for the
1 A district court must exercise “independent judgment” in adopting a party’s proposed findings. Bright v. Westmoreland Cnty., 380 F.3d 729, 731–32 (3rd Cir. 2004). In this case, the Court has independently analyzed the evidence presented and has adopted only those findings which the Court has independently deemed appropriate under the circumstances. food industry. 2. Plaintiff generally operates on a subscription basis whereby it charges its clients (generally, grocery stores, restaurant chains, food service companies, etc.) a minimum monthly fee of $999.00 (https://preparedfoodphotos.com/featured-subscriptions/) for access to its library of professional photographs.
3. Plaintiff’s standard licensing terms require a minimum of a twelve (12) month licensing commitment (https://preparedfoodphotos.com/terms.of.use.php) to avoid scenarios whereby a licensee pays for one (1) month of access, downloads the entire library of 20,000+ photographs, and immediately terminates the license agreement. 4. Plaintiff’s business model relies on its recurring monthly subscription service and the income derived therefrom such that Plaintiff can continue to maintain its impressive portfolio. 5. Plaintiff has numerous paying subscribers paying monthly subscription fees ranging from $999.00/month to $2,500.00/month (depending on the number of ‘end users’ for which Plaintiff’s photographs are to be used). Generally stated, the bulk of Plaintiff’s subscribers
are professional ad agencies that develop weekly ads/grocery store websites for their own ‘end users’ (i.e., grocery stores, meat/dairy sellers, etc.). 6. Plaintiff owns each of the photographs available for license on its website and serves as the licensing agent with respect to licensing such photographs for limited use by Plaintiff’s customers. To that end, Plaintiff’s standard terms include a limited, non-transferable license for use of any photograph by the customer only. Plaintiff’s license terms make clear that all copyright ownership remains with Plaintiff and that its customers are not permitted to transfer, assign, or sub-license any of Plaintiff’s photographs to another person/entity. 7. In 1997, a professional photographer employed and/or contracted by Plaintiff created a photograph of a bowl of spaghetti and meatballs titled “SpaghettiMeatball012_ □□□□ (the “First Photograph”). A copy of the First Photograph is displayed below:
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> 8. The First Photograph was registered by Plaintiff (pursuant to a work-for-hire agreement with the author that transferred all rights and title in the photograph to Plaintiff) with the Register of Copyrights on February 12, 2017 and was assigned Registration No. VA 2-064- 187. A true and correct copy of the Certificate of Registration pertaining to the First Photograph is attached to the Complaint as Exhibit A thereto. 9. In 2007, a professional photographer employed and/or contracted by Plaintiff created a photograph of a plate of salad and a bowl of soup titled “SoupSalad001” (the “Second Photograph”). A copy of the Second Photograph is displayed below:
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10. The Second Photograph was registered by Plaintiff (pursuant to a work-for-hire agreement with the author that transferred all rights and title in the photograph to Plaintiff) with the Register of Copyrights on August 26, 2016, and was assigned Registration No. VA 2-014-921. A true and correct copy of the Certificate of Registration pertaining to the Second Photograph is attached to the Complaint as Exhibit B thereto. 11. The First Photograph and the Second Photograph are collectively referred to herein as the “Work.” 12. Plaintiffs the owner of the Work and has remained the owner at all times material hereto. 13. Defendant is an Italian restaurant serving the Cleveland area. 14. Defendant advertises/markets its business through its —_ website (https://www.antoniosparmatown.net/) and other forms of advertising. 15. On a date after the above-referenced copyright registration of the Work, Defendant displayed and/or published the Work on its website, webpage, and/or social media (at https://www.antoniosparmatown.net/catering and _https://www.antoniosparmatown.net/salads- and-sandwiches):
16. A true and correct copy of screenshots of Defendant’s website, webpage, and/or social media, displaying the copyrighted Work, is attached to the Complaint as Exhibit C thereto. 17. Defendant is not and has never been licensed to use or display the Work. Defendant never contacted Plaintiff to seek permission to use the Work in connection with its
website/advertising or for any other purpose. 18. Defendant utilized the Work for commercial use. 19. Upon information and belief, Defendant located a copy of the Work on the internet and, rather than contact Plaintiff to secure a license, simply copied the Work for its own commercial use. 20. Plaintiff’s primary business is the creation of new photo/video content and licensing such content to supermarkets, ad agencies, etc. To ensure that Plaintiff’s valuable intellectual property is not being misappropriated (which necessarily lowers the value thereof), Plaintiff employs a full-time paralegal and other staff that each (when time permits) perform reverse-
image searches using Google Images (https://www.google.com/imghp?hl=en) and review grocery store electronic/print ads to determine whether Plaintiff’s images are being misused. 21. Plaintiff’s staff generally searches using a rotating sub-set of photographs that may be illegally/improperly published by non-licensees. Given the volume of Plaintiff’s library, Plaintiff was reasonably unable to discover Defendant’s improper use of the Work at issue in this lawsuit prior to the aforementioned date of discovery. 22. Through its ongoing diligent efforts to identify unauthorized use of its photographs, Plaintiff first discovered the Defendant’s unauthorized use/display of the Work in January 2021. 23. Following Plaintiff’s discovery, Plaintiff notified Defendant in writing of such unauthorized use. To date, Plaintiff has been unable to negotiate a reasonable license for the past/existing infringement of the Work. II. CONCLUSIONS OF LAW A. Applicable Legal Standards Federal Rule of Civil Procedure 55 sets forth two steps to obtain a default judgment. First,
when a defendant fails to plead or otherwise defend a lawsuit, the clerk of court may enter default. Fed. R. Civ. P. 55(a). Second, after entry of default, the Court may enter default judgment against the defendant, so long as the defendant is not an infant or incompetent. Fed. R. Civ. P. 55(b)(2). B. Copyright Infringement The Copyright Act, 17 U.S.C. § 501(a), provides that “[a]nyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 [17 U.S.C. §§ 106-122] or of the author as provided in section 106A(a) [17 U.S.C. § 106A(a)] ... is an infringer of the copyright or right of the author, as the case may be.” 17 U.S.C. § 501(a). Copyright infringement has two elements that must be proven: “(1) ownership of the copyright by the
plaintiff; (2) copying by the defendant.” Ford Motor Co. v. Airpro Diagnostics LLC, No. 20-CV- 10518, 2022 U.S. Dist. LEXIS 228708, at *23 (E.D. Mich. Dec. 20, 2022). With respect to the first element, a certificate of registration “made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.” 17 U.S.C. § 410(c). Here, the Complaint alleges that the Work was not registered until later than 5 years from first publication. The registration certificate therefore does not constitute “prima facie” evidence of validity, but it certainly is evidence enough to satisfy the first element of an infringement claim. See, e.g., Ultra-Images, LLC v. Franclemont, No. 05-60538-CIV, 2007 U.S. Dist. LEXIS 93610, at *11–12 n.3 (S.D. Fla. Dec. 20, 2007) (“Defendants also urge this Court to find invalidity of the registration because the registration was made over five years after the Jesse Portrait was published…. Based on the record at this stage in the proceeding, the Court cannot find, as a matter of law, that the certificate of registration is invalid.”); Lifetime Homes, Inc. v.
Residential Dev. Corp., 510 F. Supp. 2d 794, 801 (M.D. Fla. 2007) (“Although Plaintiff did not file the copyright registration within the five year time period, Plaintiff has produced the certificate of registration for the Model A and Defendants have not pointed to any evidence indicating that Plaintiff's certificate of registration is not valid. Further, Defendants make no argument nor present any evidence to support a finding that Plaintiff does not in fact own the copyright for the Model A plans.”). As succinctly explained in Southall v. Force Partners, LLC: The last sentence is crucial here: Section 410(c) confers discretion on the court on how to treat a certificate obtained five years after publication. In other words, the statute mandates a presumption of validity for pre-five-year certificates, but the statute does not forbid a presumption of validity for post-five-year certificates. Post-five-year certificates are still eligible to qualify as prima facie evidence of a valid copyright. Yurman Design, Inc. v. Golden Treasure Imps., Inc., 275 F. Supp. 2d 506, 515-16 (S.D.N.Y. 2003) (holding that late registrations can be considered prima facie evidence of valid copyright); Telerate Sys., Inc. v. Caro, 689 F. Supp. 221, 227 n. 7 (S.D.N.Y. 1988) (explaining “[e]ven if the certificate were ... issued more than five years after the actual date of first publication, the court would be inclined to give the certificate the weight of prima facie evidence, as permitted under Section 410(c).”). In any event, the strength of the presumption is not a matter that should be resolved at the pleading stage. The parties must develop facts in discovery before the certificate's evidentiary weight can be presented to the Court for decision.2 The copyright-infringement claim survives.
No. 1:20-cv-03223, 2021 U.S. Dist. LEXIS 164680, at *7 (N.D. Ill. Aug. 31, 2021) (emphasis added). Plaintiff registered the Work pursuant to 17 U.S.C. § 411(a) with the Register of Copyrights
2 Emphasis added. as set forth above. By virtue of its default, Defendant does not have any right to challenge Plaintiff’s registration/ownership of a valid copyright. A plaintiff may establish an inference of copying by showing that (1) “defendant had access to the work,” and (2) “that the original and allegedly infringing work are substantially similar.” Parker v. Winwood, 938 F.3d 833, 836 (6th Cir. 2019). However, “even when a plaintiff is unable to prove access, she can establish copying
by showing a ‘striking similarity' between her work and the allegedly infringing one.’” Id. (quoting Murray Hill Publ’ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 317 (6th Cir. 2004)). The screenshots of Defendant’s website unequivocally show Defendant’s copying of the Work. Defendant’s default further constitutes an admission as to such copying. There is no factual or subjective issue of “substantial similarity” here as Defendant copied and published a duplicate image of the Work. Thus, Defendant undisputedly copied Plaintiff’s copyrighted work and a Final Default Judgment will be entered against Defendant on Count I of the Complaint. C. Willfulness
“Infringement is willful when the infringer has knowledge that his conduct constitutes copyright infringement.” Calibrated Success, Inc. v. Charters, 72 F. Supp. 3d 763, 774–75 (E.D. Mich. 2014). Knowledge may be either actual or constructive. Id. “To prove constructive knowledge, courts have generally required the copyright owner to show that the ‘infringer has acted in reckless disregard of the copyright owner’s right.’” Id. (citation omitted). When awarding increased damages in the context of Section 504(c)(2), “deterrence of future violations is a legitimate consideration” because “defendants must not be able to sneer in the face of copyright owners and copyright laws.” Cable/Home Communication Corp. v. Network Productions, 902 F.2d 829, 851 (11th Cir. 1990) (internal quotation omitted). “A determination of willfulness requires an assessment of a defendant's state of mind.” Friedman v. Live Nation Merch., Inc., 833 F.3d 1180, 1186 (9th Cir. 2016). Willfulness determinations are thus difficult when a defendant (as here) defaults and does not participate in the lawsuit. See, e.g. Pearson Educ., Inc. v. Aegis Trading Corp., No. 16-CV-0743 (GBD)(SN), 2017 U.S. Dist. LEXIS 45887, at *18 (S.D.N.Y. Mar. 27, 2017) (“The reason for why it is difficult to
assess defendants' profits or plaintiffs' lost revenues is defendants’ willful conduct and their default and refusal to participate in this litigation.”). As a result, the vast majority of courts will infer willfulness from a defendant’s default. See, e.g., W. Stone Works Co. v. Wilson's Funeral Home, No. 2:21-cv-02103-TLP-tmp, 2021 U.S. Dist. LEXIS 133878, at *5 (W.D. Tenn. July 19, 2021) (“[B]ecause Plaintiff obtained a default judgment here, Plaintiff has met its burden of showing that Defendants willfully infringed Plaintiff's work.”); Kinman v. Burnop, No. 3:18-cv- 00809, 2020 U.S. Dist. LEXIS 24461, at *12 (M.D. Tenn. Feb. 12, 2020) (“Where a defendant has defaulted, willful copyright infringement is proven.”); Microsoft Corp. v. McGee, 490 F. Supp. 2d 874, 880 (S.D. Ohio 2007) (same).
In addition to its default, Defendant’s willfulness is further demonstrated by the inclusion of a copyright disclaimer on its website (“© 2023 The content on this website is owned by us and our licensors. Do not copy any content (including images) without our consent.”) – indicating that Defendant understands the importance of copyright protection/intellectual property rights and is actually representing that it owns each of the photographs published on its websites. See, e.g., Bell v. ROI Prop. Grp. Mgmt., LLC, No. 1:18-cv-00043-TWP-DLP, 2018 U.S. Dist. LEXIS 127717, at *3 (S.D. Ind. July 31, 2018) (“[T]he willfulness of ROI’s infringement is evidenced by the fact that at the bottom of the webpage on which the Indianapolis photograph was unlawfully published appeared the following: ‘Copyright © 2017.’ By placing a copyright mark at the bottom of its webpage that contained Mr. Bell’s copyrighted Indianapolis Photograph, Mr. Bell asserts ROI willfully infringed his copyright by claiming that it owned the copyright to everything on the webpage.”); John Perez Graphics & Design, LLC v. Green Tree Inv. Grp., Inc., Civil Action No. 3:12-cv-4194-M, 2013 U.S. Dist. LEXIS 61928, at *12-13 (N.D. Tex. May 1, 2013) (“Once on Defendant’s website, Defendant asserted ownership of Plaintiff’s Registered Work by including a
copyright notice at the bottom of the page. Based on these allegations, the Court finds Plaintiff has sufficiently pled a willful violation….”). Defendant clearly understands that professional photography such as the Work is generally paid for and cannot simply be copied from the internet. The above demonstrates that Defendant had actual knowledge, or at least acted with reckless disregard, of the fact that its conduct infringed upon Plaintiff’s exclusive copyrights in the Work. Accordingly, Defendant’s default and the well-pled facts of the Complaint, which are admitted by Defendant’s default, establish that Defendant’s infringement of the Work was willful and deliberate. D. Plaintiff’s Damages
1. Actual Damages Pursuant to 17 U.S.C. § 504(b), a “copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement.” Actual damages are usually determined by the loss in the fair market value of the copyright, measured by the profits lost due to the infringement or by the value of the use of the copyrighted work to the infringer.” Leonard v. Stemtech Int’l, Inc., 834 F.3d 376, 390 (3d Cir. 2016); see also Lorentz v. Sunshine Health Prods., No. 09-61529-CIV-MORE, 2010 U.S. Dist. LEXIS 148752, at *12 (S.D. Fla. Sep. 7, 2010) (providing that actual damages are “often measured by the revenue that the plaintiff lost as a result of the infringement, which includes lost sales, lost opportunities to license, or diminution in the value of the copyright.”). The copyright owner may also recover the fair market value of the licensing fee that would have been charged for the work that was infringed. See Leonard, 834 F.3d at 390 (“One method involves calculating the fair market value of the licensing fees the owner was entitled to charge for such use.”). As set forth above and in the declaration of Rebecca Jones (Plaintiff’s Secretary), Plaintiff
exclusively operates on a subscription basis whereby it provides access to its library at $999.00 per month with a minimum twelve (12) month contract commitment (i.e., a licensee must pay at least $11,988.00 for access to any of Plaintiff’s photographs for anywhere from 1 day to 1 year). Plaintiff generally does not license individual photographs as doing so greatly diminishes the value of Plaintiff’s subscription model. Plaintiff offers semi-exclusivity to its licensees – Plaintiff knows exactly what ad agencies, grocery stores, etc. have access to its library and can assure its customers that a competitor down the street will not be using the same photograph(s) in its own weekly ads, circulars, internet marketing, etc. Plaintiff’s customers often spend tens (if not hundreds) of thousands of dollars publishing weekly ads and developing marketing campaigns to advertise their
products/services. Because Plaintiff markets its photographic library on the basis of its exclusivity, the copying and publishing of individual photographs by non-licensees greatly reduces the value of Plaintiff’s library. Plaintiff employs multiple full-time employees to locate and identify such nonauthorized uses in an effort to ensure exclusivity to Plaintiff’s licensees. Plaintiff incurs these expenses (payroll etc.) to protect the integrity of its library. Plaintiff’s library of photographs was created over a 15 – 20-year period of time (with new creative works being made through the present date). Plaintiff has employed professional staff photographers and likewise utilizes other professional photographers (on a work-for-hire basis), all of which specialize in high-end product/food photography. All of these photographers are provided specific instructions with respect to Plaintiff’s vision/overall composition requirements – namely, that food/product photography should result in images/meals accessible to the general public that an average family could prepare for a meal. For any image (including the ones at issue in this lawsuit), Plaintiff’s photographers spend hours using specialized lighting/equipment and
take dozens (if not hundreds) of images before identifying 1 – 2 for inclusion in Plaintiff’s library. For any given photograph, Plaintiff then has costs associated with post-processing the image in specialized editing software such as Adobe Photoshop, Adobe Lightroom, and/or other programs so that the desired end-look of the photograph can be achieved, for their proper use in print and digital media advertising. When Plaintiff’s staff discovers an existing (i.e., published and available for viewing on the internet) infringement of one of its photographs, Plaintiff creates an infringement notice on the date of discovery or within 1 – 2 days thereafter. The infringement notice identifies the date of discovery, displays the subject photograph, and displays a screenshot of the infringer’s alleged use
together with a website URL (if available) where the infringement is located. A true and correct copy of Plaintiff’s infringement notices with respect to the Work at issue in this lawsuit are attached to the Jones Decl. The screenshot of Defendant’s website shows that the First Photograph was published by Defendant at least as of March 29, 2021, and the Second Photograph was published by Defendant at least as of January 20, 2021. Defendant’s failure to participate in this lawsuit has limited Plaintiff’s ability to conduct discovery to fully discover the extent of its infringement and/or the exact date on which the Work was uploaded and/or removed from Defendant’s website, but it appears that the Work was uploaded at least as early as June 1, 2018 and remained published there through at least March 29, 2021. This can be determined by viewing the Wayback Machine (http://web.archive.org/), a digital archive of the World Wide Web founded by the Internet Archive. Courts often take judicial notice of the Wayback machine’s captures/screenshots of websites. See, e.g., Martins v. 3PD, Case No. 11-11313-DPW, 2013 U.S. Dist. LEXIS 45753, at *47–49 n.8 (D. Mass. Mar. 28, 2013)
(“I take judicial notice of various historical versions of the 3PD website available on the Internet Archive . . . as facts readily determinable by resorts to a source whose accuracy cannot reasonably be questioned.”); Pond Guy, Inc. v. Aquascape Design, Inc., Case No. 13-13229, 2014 U.S. Dist. LEXIS 85504, at *9 (E.D. Mich. June 24, 2014) (taking judicial notice of the parties’ historical presence as represented by the Internet Archive because “[a]s a resource the accuracy of which cannot reasonably be questioned, the Internet Archive has been found to be an acceptable source for taking of judicial notice.”). The Wayback Machine indexed the subject webpage on June 1,2018 (https://web.archive.org/web/20180601120316/https://www.antoniosparmatown.net/) which shows the Work published thereon (with earlier-dated screenshots not showing the Work
thereon – e.g., https://web.archive.org/web/20160608123522/https://www.antoniosparmatown.net/). For each year that Defendant published the Work, Plaintiff would be owed an annual license fee of (at minimum) $11,988.00. Here, it is known that the Work was published as of June 1, 2018 and that it remained published by Defendant through at least March 29, 2021. Given the above, the fairest beginning measure of Plaintiff’s actual damages in this case is the $11,988.00 annual cost for licensing any image from Plaintiff’s library multiplied by the number of years of use. As such, Plaintiff’s actual damages are equivalent to a 3-year licensing period – (a) June 1, 2018 –May 31, 2019; (b) June 1, 2019 – May 31, 2020; and (c) June 1, 2020 – March 29, 2021. This amounts to a total of $35,964.00 ($11,988 x 3 years of use). In Prepared Food Photos, Inc. f/k/a Adlife Marketing & Communications Co., Inc. v. Patriot Fine Foods LLC, the $11,988.00 license was found to be a useful tool to properly calculate Plaintiff’s damages. Here, Plaintiff provides access to its library at a price $999.00 per month with a minimum twelve-month contract commitment, meaning, a licensee must pay $11,988 for access to any of Plaintiff’s photographs for any amount of time within a one-year period. (DE 13, Ex. A. ¶¶ 4–5). Plaintiff has numerous clients who pay this annual subscription fee. (Id. ¶ 4). While that demonstrates that licensors have indeed licensed its library on an annual basis for $11,988, it is unclear whether any licensor has paid that amount to utilize a single photograph in the library. Nevertheless, I find $11,988 to be a useful proxy given the below-described difficulties in calculating with precision Plaintiff’s actual damages. Prepared Foods Photos, Inc. v. Patriot Fine Foods LLC, No. 21-82129-CV, 2022 U.S. Dist. LEXIS 205649, at *10 (S.D. Fla. Mar. 22, 2022). The same analysis was adopted by a multitude of other courts to subsequently consider the issue of Plaintiff’s damages based on the facts before those courts. See, e.g., Prepared Food Photos, Inc. v. 193 Corp., No. 1:22-cv-03832, 2022 U.S. Dist. LEXIS 205690 (N.D. Ill. Sep. 21, 2022) (awarding Plaintiff $35,964.00 in actual damages, representing the $11,988.00 annual license fee x 3 years of usage of pre-registration usage of a single photo; Prepared Food Photos, Inc. v. Miami Beach 411 Corp., No. 22-23197-CIV- ALTONAGA/Damian, 2022 U.S. Dist. LEXIS 216003 (S.D. Fla. Nov. 28, 2022) (awarding Plaintiff $35,964.00 in actual damages, representing the $11,988.00 annual license fee x 3 years of usage of a single photo). Defendant’s inaction and refusal to participate in this lawsuit suppressed the information necessary to fully calculate Plaintiff’s actual damages. Similarly, Defendant’s refusal to cooperate in this lawsuit has prevented Plaintiff from discovering any profits received by Defendant that would be recoverable pursuant to 17 U.S.C. § 504(b) in addition to Plaintiff’s actual losses. To establish Defendant’s profits subject to disgorgement under § 504(b), a “copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to provide his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.” 17 U.S.C. § 504(b). Defendant solely controls all information concerning its gross revenue related to its infringing uses of the Work, and it has stymied Plaintiff’s ability to present that
evidence to the Court. In view of the foregoing, the Court has calculated Plaintiff’s actual damages to be $35,964.00. 2. Statutory Damages Pursuant to 17 U.S.C. § 504(c), Plaintiff has elected to recover statutory damages for Defendant’s infringement of Plaintiff’s exclusive rights in the copyrighted Work, and enhancement of its statutory award based upon the willfulness of such infringement. Where (as here) willful infringement has occurred, courts will generally award 3x – 5x the lost licensing fees. See, e.g. Nicholl v. Sec. Studies Grp., Civil Action No. 1:21cv0563 (TSE/JFA), 2022 U.S. Dist. LEXIS 95811, at *11 (E.D. Va. Mar. 25, 2022) (“In cases of knowing and deliberate infringement,
it is common practice to award more than the statutory minimum and more than the infringer would have paid in licensing fees. An award equal to five times the typical licensing fee is also more likely to deter future copyright infringement than an award of the licensing fees alone.”); Broad. Music, Inc. v. Prana Hosp’y, Inc., 158 F. Supp. 3d 184, 199 (S.D.N.Y. 2016) (“[C]ourts in this Circuit commonly award, in cases of non-innocent infringement, statutory damages of between three and five times the cost of the licensing fees the defendant would have paid.”); Broad. Music, Inc. v. N. Lights, Inc., 555 F. Supp. 2d 328, 332 (N.D.N.Y. 2008) (“[T]o put infringers on notice that it costs less to obey the copyright laws than to violate them, a statutory damage award should significantly exceed the amount of unpaid license fees. As such, courts often impose statutory damages in an amount more than double unpaid licensing fees where the infringement was not innocent.”). In cases of non-willful infringement, statutory damages may be awarded up to $30,000.00 resulting from the infringement of the copyrighted Work. See 17 U.S.C. § 504(c)(1). However, as discussed above, Defendant’s conduct – as well as its decision not to defend against Plaintiff’s
claim – demonstrates that its conduct is willful. Had Plaintiff been able to conduct discovery and gather information on the scope of Defendant’s infringement, actual damages would have likely been greater than the reasonable licensing fee for the Work. Here, doubling $11,988 will appropriately account for the circumstances surrounding this infringement and the need for deterrence. Defendant’s declination to participate in this litigation impeded the court’s ability to calculate the total extent of Plaintiff’s actual damages, including Defendant’s profits. Defendant likely profited to some degree from its unauthorized use; Plaintiff alleges that Defendant made commercial use of the Work for at least one year, advertising the sale of “USA Prime Angus London Broil” on its website for $9.99 per pound. (DE 1 ¶¶ 15, 17). Further, as described above, Defendant’s conduct was willful. And “deterrence of future violations is a legitimate consideration” because “defendants must not be able to sneer in the face of copyright owners and copyright laws.” Cable/Home Commc’n Corp., 902 F.3d at 851 (internal quotation omitted). The need to deter future violations is an especially appropriate consideration here, given Defendant’s default.
Patriot Fine Foods LLC, 2022 U.S. Dist. LEXIS 205649, at *12-13. The same facts as in Patriot Fine Foods apply to the present case. Plaintiff was unable to conduct discovery or gather information. Plaintiff’s licensing structure is a strong proxy for calculating damages. Given the circumstances of the instant case, the Court finds that an award of statutory damages in the amount of $71,928.00 ($35,96400 x 2) under 17 U.S.C. § 504(c)(2) is appropriate to compensate Plaintiff for the damages suffered, to create a strong disincentive against infringers intentionally hiding the profits from their infringing conduct in the hope of earning more than they can be held accountable for in actual damages, and to deter future violations of copyright law. The Court shall apply the same multiplier Judge Middlebrooks applied in Patriot Fine Foods, wherein Judge Middlebrooks doubled the actual damages (the one annual period of use) to account for Plaintiff’s inability to conduct discovery and to deter future violations. E. Permanent Injunction Pursuant to 17 U.S.C. § 502(a), “[a]ny court having jurisdiction of a civil action arising under this title may, subject to the provisions of section 1498 of title 28, grant temporary and final
injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” 17 U.S.C. § 502. Injunctions are regularly issued pursuant to Section 502 because “the public interest is the interest in upholding copyright protections”; and courts also regularly issue injunctions as part of default judgments. Arista Records, 298 F. Supp. 2d 1310, 1314 (S.D. Fla. 2003) (entering a permanent injunction against the defendants with respect to a plaintiff’s copyrighted work, including plaintiff’s work to be created in the future). As established by the well-pled facts of the Complaint and admitted by Defendant’s default, this Court has proper jurisdiction over this action. Defendant’s conduct has caused, and any continued infringing conduct will continue to cause irreparable injury to Plaintiff, such that
Plaintiff has no adequate remedy at law. For example, the ability of Defendant to use Plaintiff’s work for its own commercial benefit without compensation to Plaintiff greatly impairs the market value of the work, since others competing in that business or in related business areas, will not want to obtain a license to Plaintiff’s works if it is already associated with a competing business; and potential licensees of Plaintiff will not want to pay license fees to Plaintiff if they see other commercial enterprises taking and using Plaintiffs photographs for their own commercial purposes without paying any fee at all. Accordingly, this Court will enter a permanent injunction against Defendant, its employees, agents, officers, directors, attorneys, successors, affiliates, subsidiaries and assigns, and all those in active concert and participation with Defendant, prohibiting it from (a) directly or indirectly infringing Plaintiff’s copyright or continuing to market, offer, sell, dispose of, license, lease, transfer, publicly display, advertise, reproduce, develop, or manufacture any work derived or copied from Plaintiff’s copyrighted photographs or to participate or assist in any such activity; and (b) directly or indirectly reproducing, displaying, distributing, otherwise using, or retaining
any copy, whether in physical or electronic form, of any copyrighted photograph owned by Plaintiff. III. CONCLUSION For the foregoing reasons, the Court GRANTS Plaintiff’s motion for default judgment (ECF No. 6) and enters judgment in favor of Plaintiff Prepared Food Photos, Inc. and against Defendant Antonio’s Pizza, Inc. as follows: 1. Plaintiff shall recover from Defendant the principal sum of $71,928.00 for which let execution issue. 2. Defendant, its employees, agents, officers, directors, attorneys, successors,
affiliates, subsidiaries and assigns, and all those in active concert and participation with Defendant are permanently enjoined from (a) directly or indirectly infringing Plaintiff’s copyright or continuing to market, offer, sell, dispose of, license, lease, transfer, publicly display, advertise, reproduce, develop, or manufacture any work derived or copied from Plaintiff’s copyrighted photographs or to participate or assist in any such activity; and (b) directly or indirectly reproducing, displaying, distributing, otherwise using, or retaining any copy, whether in physical or electronic form, of any copyrighted photograph owned by Plaintiff. 3. The Court will retain jurisdiction to enforce the Final Judgment and Permanent Injunction and consider any motion for attorney’s fees, expenses, and costs. IT IS SO ORDERED. Date: May 6, 2024 ‘ad Hive CHARLES E. FLEMING UNITED STATES DISTRICT JUDGE