WATSON v. K2 DESIGN GROUP, INC. et al

Filing 20

ORDER granting 14 Motion to Dismiss for Failure to State a Claim. Amended Complaint due by 8/27/2015. Signed by Judge Beth Bloom on 8/6/2015. (ar2)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 15-CIV-61020-BLOOM/Valle

DIANE L. WATSON,
Plaintiff,
v.
K2 DESIGN GROUP, INC., JENNY PROVOST,
SUSAN MARCOVITCH, LEONARD
MARCOVITCH, and
KELLYE KEEGAN,
Defendants,
________________________________________/
ORDER ON MOTION TO DISMISS1
THIS CAUSE is before the Court upon Defendants, K2 Design Group, Inc., Jenny
Provost, and Kellye Keegan’s Motion to Dismiss, ECF No. [14] (“Motion”). The Court has
reviewed the Motion, all supporting and opposing filings, the record and this case, and is
otherwise fully advised. For the reasons that follow, the Motion is granted with leave to amend.
I. BACKGROUND & FACTS
Plaintiff Diane L. Watson (“Plaintiff”) brings an action for copyright infringement
pursuant to 17 U.S.C. § 101, et seq. (Count I) and civil conversion under Fla. Stat. § 772.11. See
Complaint, ECF No. [1]. Plaintiff is a visual artist who is the owner of several visual works,
including “Mariposa,” “Crescendo,” and “Staccato.” Id. at ¶¶ 7-8, 11. Plaintiff owns copyright
registrations for “Mariposa,” and enjoys inherent copyright protection for “Crescendo” and

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Defendants filed the instant Motion on July 2, 2015, and Plaintiff duly filed her Response on
July 20, 2015. Pursuant to S.D. Fla. L.R. 7.1, a reply memorandum was required on or before
July 30, 2015. When Defendants failed to file a reply by the aforementioned date, the Motion
became ripe for adjudication.
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“Staccato.” Id. at ¶ 11. Defendant K2 Design Group, Inc. (“K2”) is an architectural company
which operates the website www.k2design.net. Id. at ¶ 6.
On or about April 10, 2013, Plaintiff was informed by Defendant Jenny Provost
(“Provost”) that clients K2 and Provost had gained access to Plaintiff’s “Mariposa” image. Id. at
¶ 15. Rather than commission renditions of “Mariposa” from Plaintiff, the clients, Defendants
Susan and Leaonard Marcovitch (hereinafter the “Marcovitches”), commissioned Defendant
Kellye Keegan (“Keegan”), Provost’s assistant and daughter, to make four (4) unauthorized
copies of “Mariposa.” Id. at ¶ 16. Subsequently, the Marcovitches included the unauthorized
reproductions in the redesign of their residence. Id. at ¶ 17. Plaintiff contacted Provost who,
allegedly, admitted to having Keegan make the unauthorized copies at the request of the
Marcovitches. Id. at ¶ 26. Provost then agreed to commission four (4) authorized “Mariposa”
paintings and agreed to remove the unauthorized images from all online and print media. Id. at
¶¶ 28-29.

Notwithstanding Provost’s statements, depictions of K2’s designs featuring the

unauthorized copies of “Mariposa” continue to be featured on its website as well as various
design and trade magazines. Id. at ¶¶ 18-19; see also Composite Exhibit “B” to Plaintiff’s
Complaint, ECF No. [1-3] at 4.

In the publications in which the unauthorized copies of

“Mariposa” are featured, Keegan is credited as the artist. Compl. at ¶ 20. According to Plaintiff,
the redesign of the Marcovitch’s residence has become “synonymous with [K2]” and is regularly
utilized as an example wherever K2 is featured. Id. at ¶ 21.
This was not the only time Plaintiff has discovered infringement by K2. See id. at ¶ 22.
On November 13, 2014, Plaintiff contacted Provost, inquiring as to why “Crescendo,” which had
been sold to a private collector in California, appeared on K2’s website as part of a threedimensional artist rendering. Id.; see also Composite Exhibit “C” to Plaintiff’s Complaint, ECF

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No. [1-4]. In response, Provost contended that Plaintiff had actually authorized the use of
“Crescendo.” Compl. at ¶ 23. Plaintiff vehemently disputes any authorization. Id. at ¶ 24.
Defendants K2, Provost, and Keegan now seek dismissal under Fed. R. Civ. P. 12(b)(6),
or, alternatively, a more definite statement under Fed. R. Civ. P. 12(e).
II. LEGAL STANDARD
Under Federal Rule of Civil Procedure 12(b)(6), a motion to dismiss lies for “failure to
state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). A pleading in a civil
action must contain “a short and plain statement of the claim showing that the pleader is entitled
to relief.” Fed. R. Civ. P. 8(a)(2). To satisfy the Rule 8 pleading requirements, a complaint must
provide the defendant fair notice of what the plaintiff’s claim is and the grounds upon which it
rests. Swierkiewicz v. Sorema N.A., 534 U.S. 506, 512 (2002). While the complaint “does not
need detailed factual allegations,” Rule 8 requires “more than labels and conclusions” and “a
formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555 (2007); see Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (explaining
that the Rule 8(a)(2) pleading standard “demands more than an unadorned, the-defendantunlawfully-harmed-me accusation”). Nor can a complaint rest on “naked assertion[s] devoid of
‘further factual enhancement.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 557
(alteration in original)). The Supreme Court has emphasized that “[t]o survive a motion to
dismiss a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to
relief that is plausible on its face.’” Id. (quoting Twombly, 550 U.S. at 570); see also Am. Dental
Assoc. v. Cigna Corp., 605 F.3d 1283, 1288-90 (11th Cir. 2010).
When reviewing a motion to dismiss, a court, as a general rule, must accept the plaintiff’s
allegations as true and evaluate all plausible inferences derived from those facts in favor of the

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plaintiff. See Chaparro v. Carnival Corp., 693 F.3d 1333, 1337 (11th Cir. 2012); Iqbal, 556 U.S.
at 678. “At a minimum, notice pleading requires that a complaint contain inferential allegations
from which [the court] can identify each of the material elements necessary to sustain a recovery
under some viable legal theory.” Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949, 960 (11th Cir.
2009) (quoting Snow v. DirecTV, Inc., 450 F.3d 1314, 1320 (11th Cir. 2006)).
III. DISCUSSION
Defendants K2, Provost, and Keegan (collectively, “Defendants”) seek dismissal of
Plaintiff’s Complaint on two bases: (1) that two of the three works at issue are not registered; and
(2) that Plaintiff has failed to satisfy conditions precedent with respect to her claim for civil theft
under Fla. Stat. § 772.11. See Motion, ECF No. [14] at 2-4. Alternatively, Defendants seek a
more definite statement. Id. at 3-4.
A.

Copyright Infringement for Unregistered Works

“To make out a prima facie case of copyright infringement, a plaintiff must show that (1)
it owns a valid copyright in the [work] and (2) defendants copied protected elements from the
[work].” Peter Letterese And Associates, Inc. v. World Inst. Of Scientology Enterprises, 533
F.3d 1287, 1300 (11th Cir. 2008) (citations omitted). Plaintiff argues that “Crescendo” and
“Staccato” are not registered works and, accordingly, Plaintiff has not satisfied the precondition
for bringing an infringement action under the Copyright Act.
The Copyright Act provides that “no civil action for infringement of the copyright in any
United States work shall be instituted until preregistration or registration of the copyright claim
has been made in accordance with this title.” 17 U.S.C. § 411(a). Prior to 2010, this requirement
was treated as jurisdictional by the Eleventh Circuit. See MGB Homes, Inc. v. Ameron Homes,
Inc., 903 F.2d 1486, 1488 (11th Cir.1990). In 2010, the Supreme Court abrogated this treatment,

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explicitly deciding that the registration requirement was not jurisdictional. Reed Elsevier, Inc. v.
Muchnick, 559 U.S. 154, 169 (2010) (“We thus conclude that § 411(a)’s registration requirement
is nonjurisdictional, notwithstanding its prior jurisdictional treatment.”). Notwithstanding this
determination, the Supreme Court explicitly declined to address whether § 411(a)’s registration
requirement provides a “mandatory precondition to suit” that district courts should enforce sua
sponte by dismissing infringement claims involving unregistered works. See 559 U.S. at 1249.
In fact, courts in this Circuit have continued to treat § 411(a)’s registration requirement as a
precondition to suit, albeit not in a jurisdictional fashion. See Burruss v. Zolciak-Biermann, No.
1:13-CV-789-WSD, 2013 WL 5606667, at *3 (N.D. Ga. Oct. 11, 2013) (“The Court concludes
that a plaintiff asserting a claim for copyright infringement must provide evidence, or at least
allege, that the copyrighted work is registered with the United States Copyright Office. Absent
that evidence or allegation, the copyright claim is required to be dismissed, but without prejudice
to the filing of an action after the registration is made.”); Davis v. Tampa Bay Arena, Ltd., No.
8:12-CV-60-T-30MAP, 2012 WL 2116136, at *3 (M.D. Fla. June 11, 2012) (“The Court agrees
that, although it is not a jurisdictional issue, registration of a copyright is a mandatory
precondition to suit for copyright infringement.”); Roig v. Star Lofts on the Bay Condo. Ass’n,
Inc., No. 11-20421-CIV, 2011 WL 6178882, at *2 (S.D. Fla. Dec. 12, 2011) (“A plaintiff
seeking to assert a copyright under federal law must register the copyright before filing a civil
action for copyright infringement.”); Marc Anthony Builders, Inc. v. Javic Properties, LLC, No.
8:11-CV-00432-EAK, 2011 WL 2709882, at *2 (M.D. Fla. July 12, 2011) (“Because the
Copyright Act expressly prohibits bringing an infringement action without first obtaining
registration, it is a mandatory precondition, and this action should be dismissed if it is not met.”);
Kernal Records Oy v. Mosley, 794 F. Supp. 2d 1355, 1367 (S.D. Fla. 2011) aff’d sub nom.

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Kernel Records Oy v. Mosley, 694 F.3d 1294 (11th Cir. 2012) (“Registration is simply a
prerequisite to bringing a claim after infringing activity has occurred.”); but see Habersham
Plantation Corp. v. Art & Frame Direct, Inc., No. 10-61532-CIV, 2011 WL 4064087, at *2
(S.D. Fla. Sept. 13, 2011) (declining to dismiss copyright action on the basis of nonregistration).
The Eleventh Circuit appears to agree, indicating that § 411(a) continues to act as a
procedural bar to infringement claims despite the Supreme Court’s classification of the statute as
non-jurisdictional. See Dowbenko v. Google Inc., 582 F. App’x 801, 805 (11th Cir. 2014) (“The
Supreme Court recently clarified that, although § 411(a)’s registration requirement is not
jurisdictional, it nevertheless amounts to ‘a precondition to filing a claim.’”); see also Kernel
Records Oy v. Mosley, 694 F.3d 1294, 1303-05 (11th Cir. 2012) (noting that if the work was not
foreign, “registration was required prior to suit,” and finding that work was not a foreign work
exempt from the registration requirement). Accordingly, this Court follows the rationale of its
predecessors who have had occasion to consider this issue and the Eleventh Circuit: while not a
jurisdictional bar, the explicit language of § 411(a) provides a statutory bar to suit which requires
a plaintiff to first obtain registration for the work at issue prior to initiating suit.
Even construed liberally, as this Court is required to do, there is no indication that
Plaintiff possesses registrations for “Crescendo” and “Staccato.” On the contrary, it appears that
no registration exists: “[Plaintiff] obtained copyright registrations for Mariposa [and] enjoys
inherent copyright protection for the Crescendo and Staccato artworks.”

Compl. at ¶ 11.

Consequently, any claims for infringement of “Crescendo” and “Staccato” merit dismissal.2

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Plaintiff appears not to dispute this, noting in her response that she does not seek recourse for
the infringement of her unregistered works, “but rather refers to the unauthorized use of
Plaintiff’s unregistered works to illustrate the egregious nature of Defendant’s . . . acts.” Pl.
Resp., ECF No. [17] at ¶ 3.
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B.

Civil Theft, Fla. Stat. § 772.11

Next, Defendants contend that Plaintiff fails to satisfy conditions precedent before
bringing an action for civil theft. Section § 772.11 provides in part:
Before filing an action for damages under this section, the person
claiming injury must make a written demand for $200 or the treble
damage amount of the person liable for damages under this
section. If the person to whom a written demand is made complies
with such demand within 30 days after receipt of the demand, that
person shall be given a written release from further civil liability
for the specific act of theft or exploitation by the person making
the written demand.
Fla. Stat. § 772.11(1) (emphasis added); Korman v. Iglesias, 736 F. Supp. 261, 267 (S.D. Fla.
1990) (“[B]efore an action for civil theft is filed the plaintiff must make written demand for
payment upon the defendant, and allow 30 days for payment.”). Plaintiff simply contends that it
was not required to make such a demand.3 See Pl. Resp. at ¶ 4. The Court disagrees. Plaintiff
was required to comply with the statute, which, in turn, required compliance with the demand
requirement. However, “the Southern District of Florida has been lenient in the application of
this rule.” Oginsky v. Paragon Properties of Costa Rica LLC, 784 F. Supp. 2d 1353, 1374 (S.D.
Fla. 2011) (quoting Ames v. Provident Life and Accident Ins. Co., 942 F. Supp. 551, 562 n.8
(S.D. Fla. 1994)); see also Korman, 736 F. Supp. at 267 (finding that this pleading failure is
“excusable neglect” and directing plaintiff to comply with the statute). Accordingly, this Court
declines to impose the harsh sanction of dismissal in this case. Instead, Plaintiff is instructed to
comply with the demand requirements and later amend her complaint to reflect compliance.

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One Court in this District has stated, without citation, that “Florida law does not require a
demand for the return of the money in order to state a cause of action for civil theft.” Century Sr.
Servs. v. Consumer Health Ben. Ass’n, Inc., 770 F. Supp. 2d 1261, 1266 (S.D. Fla. 2011).
Respectfully, this Court finds that this statement is patently incorrect in light of the
straightforward language of § 772.11(1).
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C.

Motion for a More Definite Statement

Plaintiff does not provide the most artfully crafted Complaint. Indeed, the Complaint
contains Count III for vicarious copyright infringement and Count IV for civil theft.
Conspicuously and inexplicably absent, however, are Counts I and II. Further, although the
Complaint seeks recovery for copyright infringement, it does not contain an enumerated count
for direct infringement, only one for vicarious infringement. Most notably, Plaintiff repeatedly
refers to “Defendant” or “Defendants” without reference to the particular Defendant for which
Plaintiff intends to hold responsible under each Count. Based on this imprecision, the Court
finds that a more definite, clarified statement is required.
IV. CONCLUSION
For the foregoing reasons, it is ORDERED AND ADJUDGED that the Defendants’
Motion, ECF No. [14], is GRANTED. Pursuant to 17 U.S.C. § 411(a), any claims premised on
unregistered works is DISMISSED. Further, Plaintiff’s claim for civil theft under Fla. Stat. §
772.11 is DISMISSED without prejudice. Within seven (7) days of this Order, Plaintiff shall
make demand upon Defendants and notify the Court of the same.

Plaintiff shall then be

permitted to amend; however, amendment with respect to this claim must be sought within forty
(40) days after making the appropriate demand. Failure to comply within this time period will
result in abandonment of the claim. Plaintiff shall file an Amended Complaint on or before
August 27, 2015 in order to provide Defendants with a more definite statement.

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DONE AND ORDERED in Fort Lauderdale, Florida, this 6th day of August, 2015.

____________________________________
BETH BLOOM
UNITED STATES DISTRICT JUDGE
Copies to:
Counsel of Record

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