Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC et al

Filing 20

Order Granting Motion to Dismiss granting 9 Motion to Dismiss for Failure to State a Claim; denying 17 Motion for Hearing. Closing Case. Motions Terminated: 17 MOTION for Hearing re 9 Defendant's MOTION TO DISMISS 1 Complaint, FOR FAILURE TO STATE A CLAIM , 16 Response in Opposition to Motion to Dismiss filed by Fourth Estate Public Benefit Corporation, 9 Defendant's MOTION TO DISMISS 1 Complaint, FOR FAILURE TO STATE A CLAIM filed by Wall-Street.com, LLC, Jerrold D. Burben. Signed by Judge Robert N. Scola, Jr on 5/23/2016. (lrz) NOTICE: If there are sealed documents in this case, they may be unsealed after 1 year or as directed by Court Order, unless they have been designated to be permanently sealed. See Local Rule 5.4 and Administrative Order 2014-69.

United States District Court
for the
Southern District of Florida
Fourth Estate Public Benefit Corp.,
Plaintiff
v.
Wall-Street.com and Jerrold D.
Burden, Defendant.

)
)
) Civil Action No. 16-60497-Civ-Scola
)

Order Granting Motion to Dismiss
The Defendants Wall-Street.com, LLC and Jerrold D. Burden ask the
Court to dismiss the Plaintiff Fourth Estate Public Benefit Corp.’s Complaint
for copyright infringement (Counts 1 and 2) and removal of copyright
management information (Count 3). (See Compl., ECF No. 1.) The Defendants
argue that the copyright infringement claims must be dismissed, because
Fourth Estate’s alleged copyrighted works have not been registered. (Mot. 2,
ECF No. 9.) As to the remaining claim, the Defendants argue that Fourth
Estate lacks standing. In its response, although Fourth Estate defended
against dismissal of its copyright infringement claim, it did not address the
Defendants request to dismiss for lack of standing. (Resp., ECF No. 16.) After
reviewing the motion, the record, and the relevant legal authorities and for the
reasons explained more fully below, the Court grants the Motion to Dismiss
(ECF No. 9).
A court considering a motion to dismiss, filed under Federal Rule of Civil
Procedure 12(b)(6), must accept all of the complaint’s allegations as true,
construing them in the light most favorable to the plaintiff. Pielage v.
McConnell, 516 F.3d 1282, 1284 (11th Cir. 2008). Although a pleading need
only contain a short and plain statement of the claim showing that the pleader
is entitled to relief, a plaintiff must nevertheless articulate “enough facts to
state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly,
550 U.S. 544, 570 (2007). A court must dismiss a plaintiff’s claims if she fails
to nudge her “claims across the line from conceivable to plausible.” Twombly,
550 U.S. at 570.
“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 & Assocs., Inc. v.
World Inst. of Scientology Enters., 533 F.3d 1287, 1300 (11th Cir. 2008)
(citations omitted). 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.” Watson v. K2 Design Grp., Inc., No. 15-CIV-61020,
2015 WL 4720797, at *2-3 (S.D. Fla. Aug. 7, 2015) (Bloom, J.) (quoting 17
U.S.C. § 411(a)).
The Defendants argue that because Fourth Estate’s alleged copyrighted
works are not registered, Fourth Estate has not satisfied the precondition for
bringing an infringement action under the Copyright Act. Fourth Estate
counters that although its works were not registered, an application to register
was pending at the time of the suit, which is sufficient to survive a motion to
dismiss. (Resp. 2, ECF No. 16.)
Although registration is no longer a jurisdictional requirement, see Reed
Elsevier, Inc. v. Muchnick, 559 U.S. 154, 169 (2010), it is nonetheless a
procedural bar to infringement claims. See Dowbenko v. Google Inc., 582
Fed.Appx. 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).
See generally, Watson, 2015 WL 4720797, at *2-3 (providing a comprehensive
summary of the case law on this issue). As a result, because a plaintiff must
first obtain registration for the work at issue prior to initiating suit, the Court
must dismiss Fourth Estate’s claims for copyright infringement.
As to the remaining claim for injunctive relief based on removal of
copyright management information, Fourth Estate’s response is silent as to
Count 3 in its entirety—Fourth Estate offers no opposition to Defendants’
claims that Fourth Estate lacks standing to obtain injunctive relief on behalf of
a third-party. Accordingly, the Court holds that Fourth Estate has abandoned
Count 3. Phan v. Accredited Home Lenders Holding Co., No. 309-CV-328-J32TEM, 2010 WL 1268013, at *5 (M.D. Fla. Mar. 29, 2010) (citing Abolition of
Marijuana Prohibition v. City of Atlanta, 219 F.3d 1301, 1326 (11th Cir. 2000)).
Accordingly, for the foregoing reasons, the Court grants without
prejudice the Motion to Dismiss (ECF No. 9). The Court denies the Request for
Oral Argument (ECF No. 17) and directs the Clerk to close the case.
Done and ordered, at Miami, Florida, on March 23, 2016.
________________________________
Robert N. Scola, Jr.
United States District Judge