Adlife Marketing & Communications Co., Inc. v. Best Yet Market, Inc.
MEMORANDUM OF DECISION & ORDER - For the foregoing reasons, the Defendant's 9 motion pursuant to Rule 12(b)(6), to dismiss the Plaintiff's complaint is granted without prejudice. The Court also grants the Plaintiffs request for leave to amend the complaint. The Plaintiff is instructed to file an amended complaint that cures the deficiencies discussed above within thirty (30) days of the date of this Memorandum of Decision & Order. Failure to file an amended complaint within thirty ( 30) days shall waive the right to amend granted herein and the claims dismissed without prejudice shall, upon proper motion by the Defendant, be dismissed with prejudice. SEE ATTACHED DECISION for details. So Ordered by Judge Arthur D. Spatt on 10/11/2017. (Coleman, Laurie)
3:40 pm, Oct 11, 2017
U.S. DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
LONG ISLAND OFFICE
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
ADLIFE MARKETING &
COMMUNICATIONS CO., INC.,
DECISION & ORDER
-againstBEST YET MARKET, INC.,
HIGBEE & ASSOCIATES
Attorneys for the Plaintiff
1504 Brookhollow Drive, Suite 112
Santa Ana, CA 92705
Rayminh L. Ngo, Esq., Of Counsel
COWAN DEBAETS ABRAHAMS & SHEPPARD LLP
Attorneys for the Defendant
41 Madison Avenue, 38th Floor
New York, NY 10010
Nancy Evelyn Wolff, Esq., Of Counsel
SPATT, District Judge:
The Plaintiff, Adlife Marketing & Communications Co., Inc., (“Adlife” or the “Plaintiff”)
commenced this action against the Defendant, Best Yet Market, Inc. (“Best Yet” or the
“Defendant”), for damages stemming from allegations of copyright infringement of a collection
of the Plaintiff’s photographs. The complaint, which invokes the Court’s jurisdiction under 28
U.S.C. § 1331 and 28 U.S.C. § 1338(a), alleges causes of action resulting from violations of the
federal Copyright Act of 1976 (the “Copyright Act”), 17 U.S.C. § 101 et seq. By this action, the
Plaintiff seeks equitable relief in the form of an injunction preventing the Defendant from further
infringing on the Plaintiff’s copyrighted works, pursuant to 17 U.S.C. § 502, and an award of
monetary damages pursuant to 17 U.S.C. § 504(b), or statutory damages pursuant to 17 U.S.C. §
Presently before the Court is a motion by the Defendant, pursuant to Federal Rule of Civil
Procedure (“FED. R. CIV. P.” or “Rule”) 12(b)(6) to dismiss the Plaintiff’s entire complaint. For
the following reasons, the Defendants’ motion to dismiss pursuant to Rule 12(b)(6) is granted
A. The Factual Background
Unless otherwise noted, the following salient facts are drawn from the complaint and are
construed in favor of the Plaintiff.
1. The Parties
The Plaintiff is a Pawtucket, Rhode Island based advertising and communications
company, which license photography to people and companies for commercial purposes. The
Plaintiff is a “copyright owner” and holds “exclusive rights” to many photographs. Complaint ¶¶
The Defendant is a New York based regional supermarket chain that operates in New York,
Connecticut, and New Jersey. The company’s principal place of business is in Bethpage, NY. Id.
2. The Facts
The Plaintiff is the owner of 61 images (the “Images”) that the Defendant has been using
for at least two years in its weekly circular and on its website without the Plaintiff’s permission.
A subset of the Images (the “Registered Images”), are registered with the United States
Copyright Office under the Registration
Numbers VA0002022966, VA0002024712,
VA0002024450, VA0002023233, VA0002020735, VA0002027172, and VA0002025939. The
Plaintiff has not specified the number and identity of the Registered Images. Id. ¶ 17.
Another subset of the Images (“the Application Images”), contain applications that have
been submitted by the Plaintiff to the United States Copyright Office under the Application
Numbers: 1-43396-51801, 1-49272-21541, 1-45358-21231, 1-45358-21252, 1-47992-55959, 148088-20840, and 1- 4356328982 The Court is not aware of whether a final decision has been
made as to their status or which Images are Application Images. Id. ¶ 18.
After the Plaintiff became aware of the Defendant’s alleged unauthorized use of its
copyrighted Images, the Plaintiff issued multiple notices to the Defendant that informed Best Yet
that the Images “are subject to copyright and to cease use of the Images.” Id. ¶ 19.
The Defendant continues to use the Plaintiff’s Images as of the filing of the complaint with
this Court. Id. ¶ 23.
B. The Procedural Background
On May 16, 2017, the Plaintiff commenced this action against the Defendant by filing the
complaint in this Court.
The present motion was filed on July 24, 2017 by the Defendant seeking to dismiss the
entire complaint, pursuant to Rule 12(b)(6).
A. Standard of Review
In considering a motion to dismiss pursuant to Rule 12(b)(6), the Court must accept the
factual allegations set forth in the complaint as true and draw all reasonable inferences in favor of
the Plaintiff. See, e.g., Walker v. Schult, 717 F.3d 119, 124 (2d Cir. 2013); Cleveland v. Caplaw
Enters., 448 F.3d 518, 521 (2d Cir. 2006); Bold Elec., Inc. v. City of New York, 53 F.3d 465, 469
(2d Cir. 1995); Reed v. Garden City Union Free Sch. Dist., 987 F. Supp. 2d 260, 263 (E.D.N.Y.
Under the Twombly standard, the Court may only dismiss a complaint if it does not contain
enough allegations of fact to state a claim for relief that is “plausible on its face.” Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 1974, 167 L. Ed. 2d 929 (2007). The Second
Circuit has expounded that, after Twombly, the Court’s inquiry under Rule 12(b)(6) is guided by
First, although a court must accept as true all of the allegations contained in a
complaint, that tenet is inapplicable to legal conclusions, and [t]hreadbare recitals
of the elements of a cause of action, supported by mere conclusory statements, do
not suffice. Second, only a complaint that states a plausible claim for relief survives
a motion to dismiss and [d]etermining whether a complaint states a plausible claim
for relief will . . . be a context-specific task that requires the reviewing court to draw
on its judicial experience and common sense.
Harris v. Mills, 572 F.3d 66, 72 (2d Cir. 2009) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 664, 129
S. Ct. 1937, 1940, 173 L. Ed. 2d 868 (2009)).
A complaint must include “a short and plain statement of the claim showing that the pleader
is entitled to relief,” in order to survive a motion to dismiss. FED. R. CIV. P. 8(a)(2). Under Rule
8, a complaint is not required to allege “detailed factual allegations.” Kendall v. Caliber Home
Loans, Inc., 198 F. Supp. 3d 168, 170 (E.D.N.Y. 2016) (quoting Twombly, 550 U.S. at 555). “In
ruling on a motion pursuant to FED. R. CIV. P. 12(b)(6), the duty of a court ‘is merely to assess the
legal feasibility of the complaint, not to assay the weight of the evidence which might be offered
in support thereof.’” DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 113 (2d Cir. 2010) (quoting
Cooper v. Parsky, 140 F.3d 433, 440 (2d Cir. 1998)). The Court “[is] not bound to accept as true
a legal conclusion couched as a factual allegation.” Twombly, 550 U.S. at 555.
B. Applicable Law
The Copyright Act advances Congress’s aims of furthering art and science “by granting
authors a limited monopoly over (and thus the opportunity to profit from) the dissemination of
their original works of authorship.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 95 (2d Cir.
2014). It states that “the owner of copyright under this title has the exclusive rights to do and
authorize . . . (1) to reproduce the copyrighted work in copies or phonorecords; . . . (3) to distribute
copies or phonorecords of the copyrighted work to the public by sale or transfer of ownership, or
by rental, lease, or lending[.]” 17 U.S.C. § 106. If a person or entity violates the owner’s exclusive
rights, that person shall be liable for such infringement. 17 U.S.C. § 501.
“A properly plead[ed] copyright infringement claim must allege (1) which specific original
works are the subject of the copyright claim, (2) that plaintiff owns the copyrights in those works,
(3) that the copyrights have been registered in accordance with the statute, and (4) by what acts
during what time the defendant infringed the copyright.” Warren v. John Wiley & Sons, Inc., 952
F. Supp. 2d 610, 616 (S.D.N.Y. 2013) (quoting Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y.
1992)); accord Kuklachev v. Gelfman, 600 F. Supp. 2d 437, 473 (E.D.N.Y. 2009).
The Defendant argues that a subset of the Images, the Application Images are not registered
in accordance with the Copyright Act; that the Plaintiff fails to allege registration for the Registered
Images with the requisite specificity; and that the Plaintiff does not identify an “actual use” for
two of the Images.
1. Whether the Plaintiff Establishes a Claim with Respect to Unregistered Images
The Defendant contends that the Plaintiff’s claim for copyright infringement fails to state
a plausible claim because the Plaintiff has not yet obtained registration for the Application Images,
as contemplated by the Copyright Act. The Plaintiff counters that there is a split of authority in
the Second Circuit regarding whether registration is required to file a copyright infringement claim
and urge this Court to adopt the “application approach.” For the reasons stated below, the Court
grants the Defendant’s motion to dismiss for failure to state a claim without prejudice.
According to the Copyright Act, registration is not a prerequisite to attaining copyright
protection. See 17 U.S.C. § 408(a). However, “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.” Id. § 411(a). The overwhelming majority of
district courts in this Circuit require that before filing a civil claim, a plaintiff either (1) holds a
valid copyright registration, or (2) has applied for and has been refused registration. See, e.g.,
Manhattan Review LLC v. Yun, No. 16-civ.-102, 2016 WL 6330474, at *5 (S.D.N.Y. Aug. 15,
2016) (“[T]he consensus among courts in the Second Circuit clearly favors the registration
approach, under which … application for copyright registration cannot sustain a claim for
infringement prior to its approval or rejection.” (internal citations omitted)) report and
recommendation adopted sub nom. Manhattan Review LLC v. Yun, No. 16-cv-102, 2016 WL
6330409 (S.D.N.Y. Oct. 26, 2016); Muench Photography, Inc. v. Hoghton Mifflin Harcourt Pub.
Co., No. 09-cv-2669, 2012 WL 1021535, at *2 (S.D.N.Y. Mar. 26, 2012) (collecting cases);
Membler.com LLC v. Barber, No. 12-cv-4941, 2013 WL 5348546, at *4 (E.D.N.Y. Sept. 23, 2013)
(same); BWP Media USA, Inc. v. Gossip Cop Media, LLC, 87 F. Supp. 3d 499, 503-04 (S.D.N.Y.
2015) (same); Zuma Press, Inc. v. Getty Images (US), Inc., No. 16-civ.-6110, 2017 WL 2829517,
at *4 (S.D.N.Y. June 29, 2017) (same); Lumetrics, Inc. v. Blalock, 23 F. Supp. 3d 138, 143-44
(W.D.N.Y. 2014) (same).
The Court is in agreement with the vast majority of courts in this Circuit that a pending
copyright application is an insufficient basis to state a claim for copyright infringement under 17
U.S.C. § 411(a).
This requirement is supported by the Supreme Court’s recent decision in Reed Elsevier,
Inc. v. Muchnick, 559 U.S. 154, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010). There, the Supreme Court
ruled that “[Section 411(a) of the Copyright Act] establishe[d] a condition-copyright registrationthat plaintiffs ordinarily must satisfy before filing an infringement claim and invoking the
[Copyright] Act’s remedial provisions.” Id. at 158. Although Reed Elsevier overruled pre-2010,
Second Circuit cases that held that failing to register was a jurisdictional defect, “it did not affect
the holdings that a work with a pending application is not a registered work within the meaning of
Section 411(a) [of the Copyright Act].” K-Beech, Inc. v. Does 1-29, No. 11-civ.-3331, 2011 WL
4401933, at *1 n.2 (E.D.N.Y. Sept. 19, 2011) (internal citations omitted).
In the instant action, the Plaintiff seeks to hold the Defendant liable for copyright
infringement for two categories of Images, the Registered Images and the Application Images. It
is undisputed that the Registered Images meet the Copyright Act’s requirements under either the
registration requirement or the application requirement. However, for the Application Images, the
Plaintiff merely filed applications with the Copyright Office and has not yet received a decision
on their status. Further, the Plaintiff has failed to allege that the Application Images are subject to
any of the Copyright Act’s enumerated exceptions. See 17 U.S.C. § 411 (a), (c)(1)-(2). As
discussed, the Copyright Act’s registration requirement is a precondition to seeking relief in this
Court. Therefore, if an Image is not registered, an infringement claim may not be brought before
this Court. Given that it is impossible to separate the Plaintiff’s claims based on registered
copyrights, the Plaintiff therefore fails to state a viable claim.
2. Whether the Plaintiff May Amend the Complaint
The Plaintiff requests that the Court grant leave to amend the complaint in the event that
the Court finds that Plaintiff’s copyright infringement claim is insufficient.
According to Rule 15(a), any party may amend a pleading “by leave of court or by written
consent of the adverse party . . . [L]eave shall be freely given when justice so requires[.]” FED. R.
CIV. P. 15(a). Courts have liberally interpreted this Rule. See D.C.R. Trucking & Excavation, Inc.
v. Aetna Cas. And Sur. Co., No. 96-cv-3995, 2002 WL 32096594, at *8 (E.D.N.Y. Oct. 31, 2002).
The power to amend a pleading is within the discretion of the District Court. See Gursky v.
Northwestern Mut. Life Ins. Co., 139 F.R.D. 279, 281 (E.D.N.Y. 1991) (citing Foman v. Davis,
371 U.S. 178, 182, 83 S. Ct. 227, 230, 9 L. Ed. 222 (1962)); see also Zahara v. Town of Southold,
48 F.3d 674, 685 (2d Cir. 1995). “When a motion to dismiss is granted, the usual practice is to
grant leave to amend the complaint.” Hayden v. Cty. of Nassau, 180 F.3d 42, 53 (2d Cir. 1999),
overruled on other grounds, Gonzaga v. Doe, 536 U.S. 273, 122 S. Ct. 2268, 153 L. Ed. 2d 309
(2002); see also Porat v. Lincoln Towers Cmty. Ass’n, 464 F.3d 274, 276 (2d Cir. 2006) (per
curiam) (“[The Second C]ircuit strongly favors liberal grant of an opportunity to replead after
dismissal of a complaint under rule 12(b)(6).”).
“Amendment should only be denied for good reasons such as ‘undue delay, bad faith or
dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments
previously allowed, undue prejudice to the opposing party by virtue of allowance of the
amendment, futility of amendment, etc.’” Res. Mine, Inc. v. Gravity Microsystem LLC, No. 09cv-573, 2014 U.S. Dist. LEXIS 172278, at *10-11 (E.D.N.Y. June 27, 2014) (Report and
Recommendation) (quoting Ruotolo v. City of New York, 514 F.3d 184, 191 (2d Cir. 2008)),
adopted, 2014 U.S. Dist. LEXIS 53980 (E.D.N.Y. Dec. 11, 2014).
“The Rule reflects two of the most important principles behind the Federal Rules: pleadings
are to serve the limited role of providing the opposing party with notice of the claim or defense to
be litigated . . . and mere technicalities should not prevent cases from being decided on the merits.”
D.C.R. Trucking & Excavation, Inc., 2002 WL 32096594, at *8 (quoting Monahan v. N.Y. City
Dep’t of Corrections, 214 F.3d 275, 283 (2d Cir. 2000), cert denied, 531 U.S. 1035, 121 S. Ct.
623, 148 L. Ed. 2d 533 (2000)).
The Plaintiff’s complaint, in its current form, fails to differentiate which images are
Registered Images and which are Application Images.
This prevents the Plaintiff from
successfully pleading a claim for any image, as the Court is unable to distinguish the Plaintiff’s
allegations based upon the registered copyrights versus the unregistered copyrights. In order to
properly plead a claim, the Plaintiff must identify “which specific original works are the subject
of the copyright claim,” Kuklachev, 600 F. Supp. 2d at 473, which, for the Plaintiff means the
Images that are registered with the Copyright Office. See Yun, 2016 WL 6330474, at *5 n.8 (“It
perhaps goes without saying that I also recommend that plaintiffs be given an opportunity to amend
their complaint, given the ease by which the defect can be cured.” (internal citations omitted)).
Accordingly, the Court grants the Plaintiff’s request for leave to amend the complaint.
Further, the Court notes that if the Copyright Office has subsequently rendered any decision on
Application Images that are the subject of this lawsuit, the Plaintiff may add such images to the
amended complaint. See Membler.com, 2013 WL 5348546, at *5 (noting that a plaintiff should
amend a complaint if the plaintiff has received additional registrations after the filing of the
D. Whether the Plaintiff Alleges Registration in Compliance with the Copyright Act
The Defendant asserts that the Plaintiff fails to plead with sufficient specificity that the
Images’ copyrights were registered pursuant to the Copyright Act. In opposition, the Plaintiff
argues that the Defendant seeks to hold the Plaintiff to a higher pleading standard than that which
is required at this stage of the litigation. The Court finds that for the reasons stated below, the
claim is insufficiently pled.
At the motion to dismiss stage, a plaintiff is only required to allege, “that plaintiff owns the
copyrights in those works… [and] that the copyrights have been registered in accordance with the
statute.” Kelly, 145 F.R.D. at 36; accord Warren, 952 F. Supp. 2d at 617. Contrary to the
Defendant’s contentions, the Plaintiff is not required to attach registration certificates for the
purposes of this motion. “[T]he complaint is not required to attached copies of registration
certificates or provide registration numbers for all of the copyrights at issue in order to survive a
motion to dismiss.” Palmer Kane LLC v. Scholastic Corp., No. 12-cv-3890, 2013 WL 709276, at
*3 (S.D.N.Y. Feb. 27, 2013) (internal citations omitted); accord Warren, 952 F. Supp. 2d at 617
(“In short, it would be inappropriate for the Court to require production of the relevant certificates
of incorporation at this preliminary stage of the litigation.”). Such an inquiry is more appropriate
for summary judgment. See Warren, 952 F. Supp. 2d at 617 (internal citations omitted).
Here, the Plaintiff discloses that the Application Images have not yet been registered.
However, the complaint fails to identify which Images were Registered Images and which were
Application Images. Without such information in the pleadings, the Court cannot determine which
works are registered under the Copyright Act.
As such, the Plaintiff fails to state a claim for copyright infringement.
E. Whether the Plaintiff Identifies Acts of Infringement
Finally, the Defendant argues that the Plaintiff fails to plead “by what acts during what
time the defendant infringed the copyright,” Kelly, 145 F.R.D. at 36, for two images, one of a
group of kiwis and another, a collection of butternut squash. In its briefing, the Plaintiff did not
address this argument. The Court rejects the Defendant’s argument that the Plaintiff failed to
sufficiently plead specific infringing acts because it places a heightened pleading obligation upon
the Plaintiff that this Circuit’s jurisprudence does not require.
According to Rule 8, the proper pleading standard for alleging copyright infringement,
“[s]pecific facts are not necessary, the statement must give the defendant fair notice of what … the
claim is and the grounds upon which it rests.” Lefkowitz v. McGraw-Hill Educ. Holdings, LLC,
23 F. Supp. 3d 344, 353 (S.D.N.Y. 2014) (internal citations and quotations omitted). The Plaintiff
is not required to “specify how each particular photograph has been infringed,” Id. at 353 (internal
citations omitted), as the Defendant advocates, but merely to provide the basic notice required
under Rule 8.
In the complaint, the Plaintiff identifies and attaches the Images that the Plaintiff claims
were infringed and details the bases for the copyright infringement. Further, the Plaintiff attaches
to the complaint examples of unauthorized use of the Images by the Defendant. Warren, 952 F.
Supp. 2d at 618 (“[I]t is not fatal to [the] copyright claim that the complaint fails to specify how
each particular photograph has been infringed.”). The Defendant’s attempt to have the Court
examine the images at issue to determine arrangement, shape, and cut of fruits is inappropriate at
the motion to dismiss stage. See Capitol Records, Inc. v. Wings Digital Corp., 218 F. Supp. 2d
280, 284 (E.D.N.Y. 2002) (“Once there has been notice of the claim, the factual details and
evidentiary issues . . . should be developed during discovery.”); Young-Wolff v. McGraw-Hill
Companies, No. 13-cv-4372, 2014 WL 349711, at*5 (S.D.N.Y. Jan. 31, 2014) (“To the extent that
Defendant argues that Plaintiff must allege how each particular photograph has been infringed, the
Court rejects that argument.” (internal citations omitted)).
Accordingly, the Court declines to examine the images at issue at the motion to dismiss
For the foregoing reasons, the Defendant’s motion pursuant to Rule 12(b)(6), to dismiss
the Plaintiff’s complaint is granted without prejudice. The Court also grants the Plaintiff’s request
for leave to amend the complaint. The Plaintiff is instructed to file an amended complaint that
cures the deficiencies discussed above within thirty (30) days of the date of this Memorandum of
Decision & Order. Failure to file an amended complaint within thirty (30) days shall waive the
right to amend granted herein and the claims dismissed without prejudice shall, upon proper
motion by the Defendant, be dismissed with prejudice.
It is SO ORDERED:
Dated: Central Islip, New York
October 11, 2017
__/s/ Arthur D. Spatt__
ARTHUR D. SPATT
United States District Judge
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