OPINION AND ORDER Plaintiff Deborah Feingold has brought an action for copyright infringement against Defendant RageOn, Inc. Pending before the Court are the parties’ cross-motions for summary judgment. At issue is whether Plaintiff owns valid copyrights for two photographs — one of Madonna and one of Keanu Reeves. For the reasons set forth below, the Court grants Plaintiff’s motion for summary judgment and denies Defendant’s motion for summary judgment. BACKGROUND Plaintiff is a professional photographer known for her portraits of celebrities and public figures. Two of those portraits figure centrally in the present lawsuit. The first is of the musical artist Madonna holding a red lollipop against her tongue (“the Madonna Photograph”). In 2008, Plaintiff compiled an unpublished book titled “Bright Moments Photographs + Philosophies” (“Bright Moments”). The Madonna photograph appeared on the cover of and inside the book. Plaintiff registered Bright Moments with the United States Copyright Office under registration number VAu 1-091-877, effective December 19, 2009. The parties disagree about whether the Bright Moments copyright protects the Madonna Photograph. The second photograph at issue is of the actor Keanu Reeves (the “Reeves Photograph”). The Reeves Photograph appeared in the March 9, 1989 issue of Rolling Stone magazine. Plaintiff claims, but Defendant disputes, that Plaintiff applied for and secured a copyright registration for the Reeves Photograph with registration number VA0001233837, effective August 14, 2003. In January of 2018, Plaintiff learned that RageOn.com (“RageOn”) was displaying the Madonna and Reeves Photographs. RageOn is a platform that allows vendors to design merchandise and sell it to consumers through RageOn’s online marketplace. RageOn processes purchases made through its online marketplace, collects payment from buyers, submits the buyers’ orders to the merchandise manufacturers, and coordinates shipping from the manufacturers to the buyers. The vendor who designed a given item receives a commission from RageOn when that item is purchased. RageOn offered for sale through its marketplace three t-shirt varieties bearing the image of the Madonna Photograph and one t-shirt variety bearing the image of the Reeves Photograph. Plaintiff initiated this action on March 7, 2018, and filed an amended complaint on May 31, 2018. (ECF Nos. 1, 144.) Discovery was ongoing when, on June 14, 2019, Defendant moved for summary judgment on its affirmative defense that Plaintiff’s Complaint failed to state a claim upon which relief may be granted. (ECF No. 58.) Discovery closed on August 28, 2019. (ECF No. 50.) On October 17, 2019, Plaintiff filed a cross-motion for summary judgment on all her claims: copyright infringement, contributory copyright infringement, and vicarious copyright infringement.1 (ECF No. 123.) LEGAL STANDARDS A. Summary Judgment Standard Summary judgment is appropriate only when “the movant shows that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see O’Hara v. Weeks Marine, Inc., 294 F.3d 55, 61 (2d Cir. 2002). A court considering a motion for summary judgment must view the evidence in the light most favorable to the party against whom summary judgment is sought, and must draw all reasonable inferences in that party’s favor. See L.B. Foster Co. v. Am. Piles, Inc., 138 F.3d 81, 87 (2d Cir. 1998), Whether a disputed issue of fact exists is for the court to decide. Balderman v. United States Veterans Admin., 870 F.2d 57, 60 (2d Cir. 1989). The moving party has the initial burden of demonstrating the absence of a disputed issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the movant can satisfy its burden, “the opposing party must come forward with specific evidence demonstrating the existence of a genuine dispute of material fact.” Brown v. Eli Lilly & Co., 654 F.3d 347, 358 (2d Cir. 2011). Not every disputed fact is material, nor every issue genuine, within the meaning of Rule 56. A fact is “material” in the summary judgment context when its resolution “might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is “genuine” when “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. The same standards apply when a court is resolving cross-motions for summary judgment. “[E]ach party’s motion must be examined on its own merits, and in each case all reasonable inferences must be drawn against the party whose motion is under consideration.” Morales v. Quintel Ent., Inc., 249 F.3d 115, 121 (2d Cir. 2001). B. Copyright Infringement Standard The Copyright Act of 1976 grants copyright owners the exclusive right to reproduce their copyrighted work, to prepare derivatives of the work, and to sell copies of the work. 17 U.S.C. §106; see Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546-47 (1985). To establish liability for an infringement claim, a copyright owner must prove two principal elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Arista Records LLC v. Doe 3, 604 F.3d 110, 117 (2d Cir. 2010) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361(1991)). Regarding the ownership element, a certificate of registration from the United States Register of Copyrights within five years of first publication of a work “constitutes prima facie evidence of the valid ownership of a copyright, although that presumption of ownership may be rebutted.” Hamil Am., Inc. v. GFI, Inc., 193 F.3d 92, 98 (2d Cir. 1999). This presumption “orders the burdens of proof,” relieving a purported copyright owner of any duty “in the first instance to prove all of the multitude of facts that underline the validity of the copyright unless the [alleged infringer], by effectively challenging them, shifts the burden of doing so to the [purported owner].” Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985) (quoting H. Rep. No. 1476, 94th Cong., 2d Sess. 157, reprinted in 1976 U.S. Code Cong. & Ad. News 5659, 5773). “Generally speaking, the presumption of validity may be rebutted ‘[w]here other evidence in the record casts doubt on the question.’” Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (quoting Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980)). Where a work was registered more than five years after its first publication, the evidentiary weight to be accorded the certificate of registration is within the court’s discretion. Stern v. Lavender, 319 F. Supp. 3d 650, 669 (S.D.N.Y. 2018) (Engelmayer, J.) (citing 17 U.S.C. §410(c)). The copying element comprises two requirements: actual copying and improper appropriation. Actual copying may be established either by direct or circumstantial evidence that the alleged infringer had access to the protected work and that the allegedly infringing copy bears a “probative similarity” to the protected work. See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997). Similarities between works are probative of copying if those similarities “would not be expected to arise if the works had been created independently.” Odegard, Inc. v. Costikyan Classic Carpets, Inc., 963 F.Supp. 1328, 1337 (S.D.N.Y. 1997) (Koeltl, J.). Once actual copying has been established, the copyright owner must satisfy the “improper appropriation” requirement by demonstrating that the alleged copy bears “substantial similarities” to the protected elements of the copyrighted work; substantial similarities are those that would cause an average lay observer to “recognize the alleged copy as having been appropriated from the copyrighted work.” Durham Indus., 630 F.2d at 912 (internal quotation and citation omitted). DISCUSSION I. Copyright Infringement: The Madonna Photograph A. Ownership of a Valid Copyright Bright Moments — Plaintiff’s book of photographs, including the Madonna Photograph — is an unpublished collective work. See 17 U.S.C. §408(c). “Registration of an unpublished ‘collection’ extends to each copyrightable element in the collection and to the authorship, if any, involved in selecting and assembling the collection.” 37 C.F.R. 202.3(b)(4)(i). However, “a published design included in an unpublished collection copyright registration application cannot be registered as part of the collection.” Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F. Supp. 2d 223, 235 (S.D.N.Y. 2012) (McMahon, J.). Plaintiff claims that her copyright for Bright Moments under Copyright Registration No. VAu 1-091-877 protects the Madonna Photograph. Defendant argues that the Madonna Photograph falls outside of the coverage of the Bright Moments copyright because the photograph was published prior to its inclusion in Bright Moments. Specifically, Defendant alleges that the Madonna Photograph was published in Star Hits magazine in 1982 or on a Madonna “fanblog” called Madonna Tribe in 2006. The Court finds that the Madonna Photograph remained unpublished when it appeared in Bright Moments and when Bright Moments was registered. The Bright Moments copyright therefore protects the Madonna Photograph. i. Star Hits Magazine Defendant has provided no evidence that the Madonna Photograph appeared in Star Hits magazine “sometime in 1982.” (Def. Supp. Opp’n at 3, ECF No. 146.) Defendant points out that Plaintiff likely captured the Madonna Photograph during a photoshoot for Star Hits magazine. Text accompanying the Madonna Photograph in Bright Moments (“May 1, 1982, 11:15-11:35 am, Star Hits magazine, New York City”) indicates as much. (Def. 56.1 Stmt 32, ECF No. 68.) Plaintiff’s statements in two interviews also seem to suggest that the Madonna Photograph originated in a photoshoot for Star Hits magazine. (Id. at
35, 36.) But this fact does not establish that Star Hits published any of the images produced during the photoshoot, much less that Star Hits published the Madonna Photograph. Plaintiff has sworn that, to the “best of her information and belief,” the Madonna Photograph “did not appear in Star Hits magazine in 1982.” (Pl. Reply Affidavit 3, ECF No. 150.) She states that she included the Madonna Photograph in Bright Moments because it was an image that she “really liked, but one that had not [sic] used publicly before.” (Id. 6.) Notably, Defendant declined to depose Plaintiff. Defendant’s conclusory allegations could not convince a reasonable jury that the Madonna Photograph was published in Star Hits magazine in 1982. ii. Madonna Tribe Defendant also argues that the Madonna Photograph was published on the Madonna Tribe fanblog. But publication entails more than mere display, and Defendant makes no effort to traverse the legal gap between these concepts. Under the Copyright Act, “publication” means “the distribution of copies…of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending”; critically, “[a] public…display of a work does not of itself constitute publication.” 17 U.S.C. §101. “Merely posting a digital file…on the Internet lacks the element of commercial exploitation” that defines publication. Einhorn v. Mergatroyd Prods., 426 F. Supp. 2d 189, 197 n.45 (S.D.N.Y. 2006) (Kaplan, J.); see also McLaren v. Chico’s FAS, Inc., 2010 U.S. Dist. LEXIS 120185, at *12 (S.D.N.Y. Nov. 9, 2010) (Rakoff, J.) (Plaintiff’s “claim that images composing the Collection were posted on her website would not in any event suffice to plead ‘publication.’”). Plaintiff gave the Madonna Photograph to Madonna Tribe to accompany an interview she conducted for the fanblog. (Pl. Reply Affidavit 5.) The record contains no evidence that Plaintiff provided the Madonna Photograph to Madonna Tribe to reap any commercial advantage. Defendant does not argue that any aspect of the fanblog, the interview, the fanblog owner’s actions, or Plaintiff’s actions caused the Madonna Photograph to assume the status of “published,” rather than merely displayed. Defendant’s claim that the Madonna Photograph was published on Madonna Tribe is, like the Star Hits claim, conclusory and conjectural. B. Actual Copying and Appropriation Defendant confines its arguments to the copyright ownership element of infringement; Defendant does not dispute actual copying or appropriation. Plaintiff has supplied ample proof that Defendant accessed the Madonna Photograph and offered for sale items that are probatively and substantially similar to the original work in three places on the RageOn marketplace. Plaintiff is entitled to judgment as a matter of law on her claim that Defendant infringed her valid copyright of the Madonna Photograph. II. Copyright Infringement: The Reeves Photograph A. Ownership of a Valid Copyright The parties’ dispute regarding the Reeves Photograph is limited to whether the federal copyright registration with registration number VA0001233837 pertains to the Reeves Photograph. Defendant states that Plaintiff is not in possession of the certificate of registration for the Reeves Photograph, and therefore cannot prove that the copyright with registration number VA0001233837 protects the Reeves Photograph, rather than some other unspecified work. But Plaintiff’s failure to produce the certificate of registration does not foreclose her from establishing by other means that the copyright with registration number VA0001233837 protects the Reeves Photograph. See Whitehead v. Mix Unit, LLC, 2019 U.S. Dist. LEXIS 15560, at *6 (S.D.N.Y. Jan. 31, 2019) (Cott, M.J.) (Although a certificate of registration “would have been preferable,” plaintiff proved ownership of a valid copyright by providing the copyright registration number for her design, which “correspond[ed] with a relevant entry in the United States Copyright Office’s Public Catalog”). Indeed, Plaintiff has presented overwhelming evidence that she owns a valid copyright for the Reeves Photograph under registration number VA0001233837. The Public Records Catalog of the Library of Congress shows that registration number VA0001233837 protects a “photoprint” owned by claimant Deborah Feingold titled “Keanu Reeves,” which appeared in Rolling Stone on March 9, 1989 on page 31. (Fladgate Affidavit 34, Ex. H, ECF No. 125.) Page 31 of the March 9, 1989 issue of Rolling Stone contains the Reeves Photograph, credited to Plaintiff. (Id.
