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Steele v. Richard Bell and Josh Milani Gallery Pty. Ltd.

United States District Court, S.D. New York

March 28, 2014

TANYA STEELE, Plaintiff,


RONNIE ABRAMS, District Judge.

This case involves a dispute over the rights to a film that Plaintiff Tanya Steele, a Brooklyn-based filmmaker, directed and produced. On May 16, 2013, the Court ordered the Clerk of Court to enter a default against Defendants and referred the case to Magistrate Judge Ellis for an inquest on damages and other relief. The Court has received Judge Ellis's Report and Recommendation ("R & R") and Plaintiff's objections to the R & R. For the following reasons, the Court overrules Plaintiff's objections and adopts the March 3, 2014 R & R in its entirety.


The R & R provides a thorough description of the facts and procedural history of this case. (R & R at 2-6.) The Court therefore sets out only those facts necessary to resolve Plaintiff's objections.

Plaintiff entered into an oral agreement with Defendant Richard Bell to create a short film entitled "Blackfella's Guide to New York City" ("the Film"). (Declaration of Tanya Steele, April 5, 2013 ("Steele Decl.") ¶¶ 10-11.) Plaintiff was to serve as the producer and director, and Bell - an Australian artist - played the main role in the Film and agreed to underwrite its expenses. (Id. ¶ 11.) Filming was completed in May 2010, and in December 2010 Plaintiff sent a "rough cut" of the footage to Bell and Josh Milani, Bell's exclusive dealer and the owner of the gallery named as the other Defendant in this action. (Id. ¶¶ 24, 33.)

At this point, the parties' relationship began to deteriorate. Bell and Milani were largely unresponsive to Plaintiff's communications until May 2011, when Bell suggested that Plaintiff retain an Australian editor to work on the Film. (Id. ¶¶ 33, 37-39.) Plaintiff declined and, after discussions with Bell and Milani about transferring her copyright in the Film, made clear that she was not turning over the copyright and that Defendants were not to use the Film without her permission. (Id. ¶¶ 39-41.) The Film was never completed, because Plaintiff "did not have the funds to complete its post-production" and, although she considered raising the funds, she thought she "would hear back from Mr. Bell." (Id. ¶ 38.)

Plaintiff attempted to register her copyright in July 2011. (Id. ¶ 46.) The Copyright Office did not receive all of the components required for her registration until October 25, 2011, however, and therefore issued her a registration effective on that date. (Id. ¶ 48-49.) Plaintiff asserts that the file she initially submitted containing the Film did not upload correctly, (id. ¶ 48), and - as described further below - asks the Court to deem her registration effective as of July 11, 2011.

According to Plaintiff, beginning in September 2011 Defendants used content from the Film in several ways. Bell displayed a two-minute trailer from the video ("the Trailer") during a tour of his work sponsored by the American Federation of Arts ("AFA"), the first stop of which was Tufts University. (Declaration of Kerry A. Brennan, April 5, 2013 ("Brennan Decl.") ¶ 7; Steele Decl. ¶¶ 57-58.) After Plaintiff's counsel sent cease-and-desist letters, both Tufts and the AFA agreed that they would not display the Trailer. (Brennan Decl. ¶¶ 8-10.) Additionally, Defendants uploaded the Trailer to the video-hosting website Vimeo, and provided links to the Trailer from Defendant Milani Gallery's website and Facebook pages. (Brennan Decl. ¶ 3; Steele Decl. ¶ 53.) Defendants also posted a still photograph from the Trailer on these websites. ("the Photograph"). (Steele Decl. ¶¶ 52-53.) Although the Trailer and Photograph were removed from these websites for nine days after Plaintiff's counsel sent cease-and-desist letters, the infringing content was subsequently re-posted. (Brennan Decl. ¶ 6.)

Plaintiff commenced the instant action on December 20, 2011. (Dkt. no. 1.) Defendants, through counsel, answered; the parties began discovery; and they even reported to the Court that they had reached a settlement in principle. (Brennan Decl. ¶¶ 14-24.) Defendants abandoned the settlement, however. After their counsel moved to withdraw, they chose not to appear further in the action and the Court found them in default. (Dkt. nos. 32-33; Brennan Decl. ¶¶ 25-37.) On May 16, 2013, the Court referred the case to Judge Ellis for an inquest into damages and other relief. (Dkt. no. 42.)

Judge Ellis's R & R recommended that Plaintiff's request for declaratory relief be granted in part and that the Court issue the following declarations: that Steele is the sole author of the Film; that she is the sole copyright owner; that Defendants infringed her copyright in the Film; and that any agreements between Defendants and third parties purporting to transfer rights in the Film are void because Steele is the sole owner. (R & R at 9-13.) Judge Ellis also recommended that the Court permanently enjoin Defendants "from using any aspect of the Film in any way, including, but not limited to, the Unauthorized Trailer and Unauthorized Photograph, " and order them "to remove all existing infringing works and take reasonable efforts to regain copies of the infringing works that Defendants distributed to third parties." (Id. at 15 (quoting Pl.'s Mem. of Law at 2).) Finally, the R & R recommended that Plaintiff's requests for monetary damages and attorney's fees be denied. Judge Ellis concluded that Plaintiff had failed to establish that she suffered actual damages or that Defendants had profited from their use of the Film. (Id. at 16-17.) The R & R further reasoned that under the Copyright Act, owners may recover damages for infringement of unpublished works only for distinct instances of infringement committed after the copyright was registered. Because Defendants began infringing before the copyright was registered and removed the infringement content only for a matter of days, Judge Ellis concluded, they did not engage in a "new series of infringement warranting statutory damages and attorney's fees" even though their infringement continued past the date the copyright was registered. (Id. at 21.)


Plaintiff objects to Judge Ellis's recommendation that she had failed to establish the amount of her actual damages or Defendants' profit from the infringement. (Pl.'s Objections at 1.) She also challenges the R & R's conclusion that she was not entitled to statutory damages or attorney's fees. In particular, she asserts that the effective date of her copyright was July 11, 2011 - the day when she first attempted to file her application - instead of October 25, 2011, the date the Copyright Office designated as the effective date of her copyright registration. (Id.) She also argues that even assuming her registration was not effective until October 25, 2011, Defendants' infringements after that date should constitute a new series of infringement, giving rise to statutory damages and attorney's fees. (Id.)

The Court reviews de novo those portions of the R & R to which the parties have objected, 28 U.S.C. § 636(b)(1), and it reviews for clear error those portions of the R & R to which the parties have not objected, see DiPilato v. 7-Eleven, Inc., 662 F.Supp.2d 333, 339 (S.D.N.Y. 2009).

1. Statutory Background

In the 1976 amendments to the Copyright Act, Congress no longer required owners to register their works to receive copyright protection, but nonetheless recognized that registration is "useful and important to users and the public at large." H.R. Rep. No. 94-1476, at 158 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5774. To encourage registration, Congress provided that owners of unpublished works[1] could recover statutory damages and attorney's fees only for instances of infringement that occurred after registration. See 17 U.S.C. § 412(1). The "remedies ordinarily available in infringement cases" - including "an injunction on terms the court considers fair" and "actual damages plus any applicable profits not used as a measure of damage" - would continue to remain available for infringement that occurred prior to registration. H.R. Rep. No. 94-1476, at 158.

Accordingly, "at any time before final judgment is rendered" a copyright owner may elect to receive either (1) actual damages plus defendant's profits or (2) statutory damages, which, in the case of infringements committed "willfully, " may amount to $150, 000 per work infringed. 17 U.S.C. § 504(c). Here, because Plaintiff has not clearly articulated which type of damages she elects - she seeks "the highest damage award to which she is ...

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