Case 1:19-cv-08208-KPF Document 13 Filed 10/30/19 Page 1 of 3

Robert Tauler, Esq.
Tauler Smith LLP
626 Wilshire Blvd., Suite 510
Los Angeles, CA 90017
(213) 927-9270
rtauler@taulersmith.com

October 30, 2019
VIA ECF AND EMAIL
Honorable Katherine Polk Failla
United States District Court
Southern District of New York
40 Foley Square, Room 2103
New York, NY 10007
Failla_NYSDChambers@nysd.uscourts.gov
Re:

Polaris Images Corporation v. Enttech Media Group, LLC, Case No. 1:19-cv-08208
Request for Pre-Motion Conference

Honorable Judge Failla:
I am managing partner in the office of Tauler Smith LLP, representing the Enttech Media Group,
LLC, in connection with the above-captioned matter. I write to respectfully request a pre-motion
conference seeking leave to file a motion to dismiss under Rule 12(b)(6) of all claims against Enttech. I
have met and conferred with opposing counsel, who will be opposing the motion to dismiss.
Polaris brings one claim for copyright infringement for Defendant’s publication of a social media
post shared publicly by Rachel Dolezal, an individual who garnered national attention for identifying as
African-American while being of European ancestry. Specifically, on June 15, 2019, Dolezal shared on
her public Instagram account the news that she was bisexual along with a “selfie,” (the “Subject Image”)
leading to numerous public news outlets publishing articles about Dolezal’s revelation, including
Defendant, who posted the Instagram post, in its entirety, along with commentary regarding the news.
Plaintiff brings the present suit against Enttech for its republication of the Subject Image, asserting that
it is the “exclusive licensing agent” of Dolezal and that Enttech’s use of the image violates the
Copyright Act. Polaris’ claim fails as a matter of law for three separate reasons.
First, by posting the Subject Image on third party website Instagram on June 15, 2019, Dolezal
has also granted a license to Instagram to use the Subject Image. As such, Polaris is a “nonexclusive
licensee” of the Subject Image, and lacks standing to commence a copyright action. Yong Ki Hong v.
KBS Am., Inc., 951 F. Supp. 2d 402, 429 (E.D.N.Y. 2013)(“The Copyright Act authorizes only two
types of claimants to sue for copyright infringement: (1) owners of copyrights, and (2) persons who have
been granted exclusive licenses by owners of copyrights.”). Thus, Polaris is (at best) a non-exclusive
licensee of the Subject Image, since Instagram also owns a non-exclusive right to the image. John Wiley
& Sons, Inc. v. DRK Photo, 882 F.3d 394, (2d Cir. 2018). The court concluded that this distinction was
dispositive, and held that only an “exclusive licensee is a legal owner of an exclusive right for purposes

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October 30, 2019
of a copyright infringement action under section 501(b), whereas a non-exclusive licensee is not.” Id. at
410 (internal quotations and citations omitted). Several cases are in accord that non-exclusive licensees
like Polaris may not pursue claims for copyright infringement. Eden Toys, Inc. v. Florelee
Undergarment Co., Inc., 697 F.2d 27, 32 (2d Cir.1982), superseded by rule and statute on other
grounds; Yong Ki Hong v. KBS Am., Inc., 951 F. Supp. 2d 402, 429 (E.D.N.Y. 2013)(“Eden
Toys expressly rejected the argument that anyone other than a copyright owner or exclusive licensee
may sue for copyright infringement, even if explicitly authorized to do so by the copyright owner.”).
Second, according to the record of the Subject Image available from the U.S. Copyright Office,
the image was first registered on July 20, 2019, over a month after the infringement alleged in the
Complaint (June 16, 2019), however, a copyright Plaintiff must hold a
valid copyright registration prior to filing a civil claim. Muench Photography, Inc. v. Houghton Mifflin
Harcourt Pub. Co., 2012 WL 1021535, at *5 (S.D.N.Y. Mar. 26, 2012). “Although registration is not
required to obtain copyright protection, see 17 U.S.C. § 408(a), it is a prerequisite to bringing an
infringement action in federal court.” BWP Media USA, Inc. v. Gossip Cop Media, LLC (S.D.N.Y. 2015)
87 F. Supp. 3d 499, 503. Courts in this Circuit have required that a plaintiff either hold a valid copyright
registration outright or have applied and been refused a registration prior to filing a civil claim. Id.
at 504. Thus, Polaris lacks standing to bring the present action, since it was commenced prior to
obtaining copyright registration.
Third, Defendant’s use of the Subject Image in providing direct commentary regarding news of
national interest is considered “fair use” absolving it from liability under the Copyright Act. 17 U.S.C. §
107. “[T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting,
… is not an infringement of copyright.” 17 U.S.C. § 107. Courts in this Circuit have affirmed that
copyright infringement claims may be dismissed pursuant to Rule 12(b)(6) where a comparison of the
works at issue is sufficient to decide the question of fair use. See, TCA Television Corp. v. McCollum,
839 F.3d 168, 178 (2d Cir. 2016)(“this court has acknowledged the possibility of fair use being so
clearly established by a complaint as to support dismissal of a copyright infringement claim”), petition
for cert. filed, No. 16-1258 (U.S. Apr. 18, 2017).
To determine whether use of a work is fair, courts consider several factors: “(1) the purpose and
character of the use, including whether such use is of a commercial nature or is for nonprofit educational
purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or
value of the copyrighted work.” See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994).
Courts developed three guidelines for applying the first factor: (1) whether the material was used
for any of the favored purposes specifically mentioned in the statute, and (2) whether the defendant used
the material for a meaningfully different or “transformative” purpose than the original. If so, then (3)
whether the defendant is a for-profit or non-profit entity deserves little consideration. Campbell v. AcuffRose Music, Inc., 510 U.S. 569, 578-79 (1994). Defendant’s use if for favored purposes specifically
mentioned in the Copyright Act. “News reporting” and “comment” are favored uses under the Copyright
Act, specifically identified as likely fair use. See 17 U.S.C. § 107; TCA Television Corp., 839 F.3d at
179. Defendant’s use of the Subject Image by using the Instagram Post in its entirety and reporting on
the announcement of Dolezal constitutes a favored purpose under the Copyright Act.

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October 30, 2019
Defendant’s use of the photograph is transformative. [C]opying from an original for the purpose
of criticism or commentary on the original or provision of information about it, tends most clearly to
satisfy” the transformative use prong. Authors Guild v. Google, Inc., 804 F.3d 202, 215–16 (2d Cir.
2015)(footnotes omitted). Thus, “[d]isplay of a copyrighted image or video may be transformative
where the use serves to illustrate criticism, commentary, or a news story about that work.” Barcroft
Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 352 (S.D.N.Y. 2017). Defendant’s use of
the Subject Image was transformative since it was a direct copy of the news itself, the Instagram Post,
which contained the Subject Image, and was used strictly for the purpose of conveying information to
the public accurately. Moreover, Defendant’s use of surrounding commentary similarly demonstrates
transformative use. As such, Defendant’s use of the Subject Image satisfies the second prong.
Defendant’s a for-profit entity. Since both prongs are established, Defendant’s existence as a forprofit business “deserves little consideration.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79
(1994).
With respect to the second factor, “The law generally recognizes a greater need to disseminate
factual works than works of fiction or fantasy.” Harper & Row, 471 U.S. at 563, 105 S.Ct. 2218; accord
Authors Guild, 755 F.3d at 96. The Subject Image was embedded in the Instagram Post, which itself was
intended to be factual and informational. Defendant’s republication likewise had the intent to
disseminate the news Dolezal published willingly and publicly. Thus, this element weighs in favor of
Defendant’s claim for fair use.
In examining the third factor, courts consider “the proportion of the original work used, and not
how much of the secondary work comprises the original.” Cariou, 714 F.3d at 710; accord Harper &
Row, 471 U.S. at 565, 105 S.Ct. 2218. Defendant used the entire Instagram Post, and necessarily the
Subject Photo embedded therein in its reporting as copying less would have made Defendant’s use of the
Subject Image useless. This factor is therefore neutral.
With respect to the fourth factor, the court looks to not only the market harm caused by the
particular infringement, but also to whether, if the challenged use becomes widespread, it will adversely
affect the potential market for the copyrighted work. Harper, 471 U.S. at 568, 105 S.Ct. 2218. Here,
Plaintiff does not earn any money from Instagram’s license of the Subject Image. Moreover, the image
is accessible to the public via Instagram’s license at no cost, and the Complaint does not cite to any
marketplace for the Subject Image. Thus, this factor militates towards a finding of fair use.Given that
Defendant’s use of the Subject Image was limited to news reporting and commentary of the Instagram
Post Ms. Dolezal published on the Instagram platform and made publicly available, the Court should
find that Defendant’s use of the Subject Image was fair use.
For the foregoing reasons, Enttech respectfully seeks a conference to set a briefing schedule for
Enttech’s motion to dismiss.
Respectfully submitted,

Robert Tauler, Esq.

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