Meyer, Suozzi, English & Klein, P.C. v. Higbee et al

Filing 12

REPLY in Support re #9 Motion to Dismiss for Failure to State a Claim filed by Mathew K. Higbee, Higbee & Associates. (Attachments: #1 Declaration of Mathew K. Higbee) (Ngo, Rayminh)

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Rayminh L. Ngo, Esq.
EDNY #RN4834
HIGBEE & ASSOCIATES (Of Counsel)
1504 Brookhollow Dr., Ste. 112
Santa Ana, CA 92705
714-617-8336 (Ph)
714-597-6559 (Fax)
[e-mail]
Attorney for Defendants Mathew K. Higbee & Higbee & Associates
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NEW YORK
MEYER, SUOZZI, ENGLISH & KLEIN,
P.C.,

Case No. 2:18-cv-03353-ADS-ARL
DEFENDANTS MATHEW K. HIGBEE,
ESQ., AND HIGBEE & ASSOCIATES
REPLY MEMORANDUM IN SUPPORT
OF MOTION TO DISMISS [F.R.C.P.
12(b)(6)]

Plaintiff,
v.
MATHEW K. HIGBEE, Esq.,
NICK YOUNGSON,
RM MEDIA, LTD., &
HIGBEE & ASSOCIATES,
Defendants.

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TABLE OF CONTENTS
INTRODUCTION……………………………………………………………………………… 1
I.
The Facts Relied On In The Higbee Defendants’ Motion Are Within The Scope Of
The Allegations In The Complaint And May Be Properly Considered…………………….. 2
II.
Plaintiff’s Declaratory Relief Claim Regarding Copyright Infringement Must Be
Dismissed Because The Higbee Defendants Do Not Have Any Interest In The Copyrighted
Work At Issue…………………………………………………………………………………… 3
III.
Plaintiff’s Supplemental State Claim Under NY Gen. Bus. Law § 349 Must Be
Dismissed As Plaintiff Failed To Allege Injury, The Alleged Conduct Is Not Consumer
Oriented And The Alleged Conduct Is Protected By Litigation Privilege………………….. 7
CONCLUSION………………………………………………………………………………... 15

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TABLE OF AUTHORITIES
Cases
Agence Fr. Presse v. Morel, 769 F. Supp. 2d 295, 305 (S.D.N.Y. 2011)....................................... 9
Allstate Ins. Co. v. Afanasyev, 2016 U.S. Dist. LEXIS 19084, at *6 (E.D.N.Y. Feb. 11, 2016) .... 6
Brass v. Am Film Techs, Inc., 987 F.2d 142, 150 (2d Cir. 2002) ................................................... 2
Carlson v American Intl. Group, Inc., 30 N.Y.3d 288, 309 (Ct. App. 2017) ......................... 12, 13
Chambers v. Time Warner, Inc., 282 F.3d 147, 152-53 (2d Cir. 2002)...................................... 2, 3
City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir. 2011) ....................... 6
City of New York v. Smokes-Spirits.com, Inc., 541 F.3d 425, 455 (2d Cir. 2008) ........................ 13
Cortec Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 48 (2d Cir. 1991) ...................................... 2
Crawford v. Franklin Credit Mgmt. Corp., 758 F.3d 473, 490 (2d Cir.2014) ............................. 13
Doe v. Columbia University, 831 F.3d 46, 48 (2d Cir. 2016) ........................................................ 7
Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009) .................................................................. 6
Front, Inc. v. Khalil 24 N.Y.3d 713, 715 (Ct. App. 2015) ........................................................... 14
Gershon v. Hertz Corp., 626 N.Y.S.2d 80, 81 (App. Div. 1995) ................................................... 8
Goshen v. Mutual Life Ins. Co., 1997 N.Y. Misc. LEXIS 486, at *12 (Sup. Ct. N.Y. Cty., Oct. 21,
1997) ........................................................................................................................................... 8
Island Software & Comput. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 263 (2d Cir. 2005) .... 11
Keshin v. Montauk Homes, LLC, 2018-04316 (NY App.—2nd Dept, Jun. 13, 2018) ................. 12
Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941) .............................. 4
Nike, Inc. v. Already, LLC, 663 F.3d 89, 95 (2d Cir. 2011)............................................................ 4
Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 32 F.3d 690, 697 (2d Cir. 1994) ..................... 8
Philpot v. LM Communs. II of S.C., Inc., 2018 U.S. Dist. LEXIS 113927, at *19-20 (E.D. Ky.
July 10, 2018) ............................................................................................................................. 6

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Philpot v. Music Times LLC, 2017 U.S. Dist. LEXIS 48454 (S.D.N.Y. Mar. 29, 2017) ............... 5
Reed v. Garden City Union Free School Dist, 987 F.Supp.2d 260, 263 (EDNY 2013)................. 8
RFP LLC v. SCVNGR, Inc., 788 F.Supp.2d 191, 199 (S.D.N.Y. 2011) ....................................... 14
Schwartz v. Chan, 2018-03930 (1st Dept., 6/5/18) ....................................................................... 14
Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995) .............................. 13
Sklover v. Sack, 102 A.D.3d 855, 856 (2d Dept 2013) ................................................................. 14
Spagnola v. Chubb Corp., 574 F.3d 64, 74 (2d Cir. 2009) ............................................................. 8
Vt. Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241, 246 (2d Cir. 2004) ............................. 6
Other Authorities
Restatement (Second) of Torts § 767............................................................................................ 14

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Defendants MATHEW K. HIGBEE and HIGBEE & ASSOCIATES (hereinafter
collectively “Higbee Defendants”), respectfully submit this reply memorandum in support of
their motion to dismiss the Complaint filed in this action.
INTRODUCTION
Plaintiff’s Opposition does nothing to demystify the series of bewildering and absurd
things its Complaint is asking the Court to do, including, but not limited to: (1) making a
copyright holder’s attorney a party to a copyright claim for a work in which the attorney has no
rights or interest; (2) rendering an attorney a tortfeasor for sending a letter on behalf of its client
that addresses viable claims for violations of 17 U.S. Code §1202(b) — removal of copyright
management information, and of 17 U.S. Code §501 — copyright infringement; and (3) creating
a cause of action for such alleged tort with no alleged damages.
Indeed, the Oppositions own arguments affirmatively demonstrate that Plaintiff
definitively engaged in liability imposing conduct, whether through copyright infringement or, as
Plaintiff claims, through a breach of contract. Under either theory, Plaintiff would be liable.
As explained more fully below, because the Higbee Defendants have no interest in the
Copyrighted Work at issue, thus no case or controversy exists between Plaintiff and the Higbee
Defendants and Plaintiff’s declaratory relief claim must be dismissed. Additionally, Plaintiff’s
supplemental state claim under NY Gen. Bus. Law § 349 must also be dismissed as Plaintiff
failed to allege injury in its Complaint, the allegedly tortious conduct is not consumer oriented
and the allegedly tortious conduct is protected by the litigation privilege.
///
///
///

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ARGUMENT
I.

The Facts Relied On In The Higbee Defendants’ Motion Are Within The Scope Of
The Allegations In The Complaint And May Be Properly Considered.
In resolving the Rule 12(b)(6) motions, the Court is limited to the facts alleged in the

Complaint, including (i) documents attached to or incorporated by reference in the complaint;
(ii) documents "integral" to or relied upon in the complaint, even if not attached or incorporated
by reference, and (iii) facts of which judicial notice may properly be taken under Rule 201 of the
Federal Rules of Evidence. See Chambers v. Time Warner, Inc., 282 F.3d 147, 152-53 (2d Cir.
2002); Brass v. Am Film Techs, Inc., 987 F.2d 142, 150 (2d Cir. 2002); Cortec Indus., Inc. v.
Sum Holding L.P., 949 F.2d 42, 48 (2d Cir. 1991) (stating that "[w]here plaintiff has actual
notice of all the information in the movant's papers and has relied upon these documents in
framing the complaint the necessity of translating a Rule 12(b)(6) motion into one under Rule
56 is largely dissipated.").
Confusingly, the Opposition claims that the Higbee Defendants’ Motion “relies on
extraneous factual allegations” which the Opposition argues are not proper consideration on a
motion to dismiss. Opp. p. 3; Schlosser Decl. ¶ 4. This is patently false. The only information
relied on for the Higbee Defendants’ legal arguments are expressly stated in Plaintiff’s
Complaint.
For example, in its Complaint, Plaintiff expressly admits that on December 26, 2017 it
used the Copyrighted Work in a blog article appearing on its website. Complaint ¶¶ 18-19.
Plaintiff also admits that it took the Copyrighted Work from the Blue Diamond Gallery website.
Complaint ¶ 20. Plaintiff attached as “Exhibit 1” a copy of the Blue Diamond Gallery page from
where Plaintiff downloaded the Copyrighted Work. See Complaint ¶21, Exhibit 1; see also
http://www.thebluediamondgallery.com/b/burden-of-proof.html. Using the information shown in

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Exhibit 1 to the Complaint, the Higbee Defendants describe in their Motion the licensing terms
and attribution requirement that appear on the Blue Diamond Gallery website. Additionally the
fact that the Blue Diamond Gallery is owned by Defendant RM Media should come as no
surprise to Plaintiff as the webpage shown in Exhibit 1 to Plaintiff’s Complaint is clearly marked
“Copyright 2017 RM Media” at the bottom.
Finally, the Higbee Defendants did attach to their Motion a true and correct copy of the
blog post created by Plaintiff featuring Plaintiff’s infringing use of the Copyrighted Work.
Plaintiff did not include a copy of the blog post as an Exhibit to the Complaint, ostensibly
because it would affirmatively demonstrate the Plaintiff failed to include the proper credit, which
is a condition to obtaining a valid license. However, documents "integral" to or relied upon in
the complaint, even if not attached or incorporated by reference may be properly considered on a
Motion to Dismiss, see Chambers v. Time Warner, Inc., 282 F.3d 147, 152-53 (2d Cir. 2002),
and therefore it was proper for the Higbee Defendants to attach it, as the blog post may be
properly considered in connection with this Motion. See Complaint ¶ 19. The nature of
Plaintiff’s use of the Copyrighted Work at issue is an integral to Plaintiff’s claim that it did not
infringe any copyrights and is not liable for breach of the license agreement, which requires
attribution.
None of the facts relied on by the Higbee Defendants for their legal analysis of Plaintiff’s
claims fall outside the scope of the Complaint.
II.

Plaintiff’s Declaratory Relief Claim Regarding Copyright Infringement Must Be
Dismissed Because The Higbee Defendants Do Not Have Any Interest In The
Copyrighted Work At Issue.
In determining whether a case of actual controversy exists to establish subject-matter

jurisdiction over a declaratory action claim, “the question in each case is whether the facts

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alleged, under all the circumstances, show that there is a substantial controversy, between parties
having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
declaratory judgment.” Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273
(1941); Nike, Inc. v. Already, LLC, 663 F.3d 89, 95 (2d Cir. 2011).
As alleged in the Complaint,
“Plaintiff brings this action for a declaratory judgment, pursuant to the Declaratory
Judgment Act, 28 U.S.C. §§ 2201 and 2202, determining and declaring that (a)
Defendants have no legitimate claim for copyright infringement because Plaintiff did
not infringe as a matter of law, and (b) Defendants have no cognizable or recoverable
damages for breach of contract or otherwise.”
Complaint ¶ 3 (emphasis added). Thus, according to the Complaint, the case or controversy to be
determined is whether the Defendants, including the Higbee Defendants, have a legitimate claim
for copyright infringement and/or breach of contract against Defendants. See also Opposition p.
6 (“The foregoing is the factual basis for Plaintiff’s request for a judicial declaration that there is
no copyright infringement under the circumstances here and no entitlement to the statutory
damages”).
The Opposition spends an exhausting seven pages arguing that Plaintiff conduct is not
copyright infringement but should, instead, be considered under a theory of breach of contract.
Setting aside the fact that this argument tacitly acknowledges that Plaintiff would be liable under
either theory, the Opposition fails to address the issue that is critical to the instant Motion: that
no case or controversy regarding copyright infringement and/or breach of contract exists between
Plaintiff and the Higbee defendants because the Higbee defendants do not own any interest in the
Copyrighted Work which forms the basis of the infringement and/or breach of contract claim.
The Complaint acknowledges that the Copyrighted Work was originally registered to
Defendant Youngson, and that the original correspondence sent to Plaintiff identified Defendant

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RM Media as the holder of the rights to the Copyrighted Work. See Complaint ¶¶ 28-29. Neither
of the Higbee Defendants purport to hold any interest in the Copyrighted Work at issue, and the
Complaint does not allege that they do.
Since, as the Complaint acknowledges, the Higbee Defendants do not own any interest in
the Copyrighted Work, to the extent that an actual case or controversy does exist regarding
infringement of the Copyrighted Work or breach of a license agreement, such controversy exists
only between Plaintiff and the holder of the rights to the Copyrighted Work, not the Higbee
Defendants. Therefore, Plaintiff cannot state a claim for the declaratory relief against the Higbee
Defendants, and the claim must be dismissed without leave to amend.
The Higbee Defendants would also note that Plaintiff’s declaratory relief claim is
Plaintiff’s sole basis for this Court to exercise subject matter jurisdiction. Should the Court be
inclined to dismiss the Declaratory Relief claim against the Higbee Defendants, Plaintiff’s
supplemental state claim could not be maintained.
Even if the Court finds the existence of a case or controversy regarding any allegations
pertaining to copyright infringement or breach of contract between Plaintiff and the Higbee
Defendants, the Plaintiff’s own allegations—taken as true—must be resolved in the Higbee
Defendants’ favor.
The Opposition attempts to make hay out of the fact that the fact that the case cited by the
Higbee Defendants, Philpot v. Music Times LLC, 2017 U.S. Dist. LEXIS 48454 (S.D.N.Y. Mar.
29, 2017)(report and recommendation), adopted by Philpot v. Music Times LLC, 2017 U.S. Dist.
LEXIS 70744 (S.D.N.Y., May 9, 2017), was decided on a default judgment. However, this fact
does not change the legal analysis, which is directly on point to the instant case.

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While "default is an admission of all well-pleaded allegations against the defaulting
party," Vt. Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241, 246 (2d Cir. 2004); see
also Finkel v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009) (noting that, where a defendant has
defaulted, the well-pleaded allegations of the complaint are deemed to be true), a court is still
"'required to determine whether the [plaintiff's] allegations establish [the defendant's] liability as
a matter of law,'" City of N.Y. v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir.
2011) (alteration in original; quoting Finkel, 577 F.3d at 84). "If the complaint fails to state a
cognizable claim, a plaintiff may not recover even upon defendant's default." Allstate Ins. Co. v.
Afanasyev, 2016 U.S. Dist. LEXIS 19084, at *6 (E.D.N.Y. Feb. 11, 2016) (citing Finkel, 577
F.3d at 84), report and recommendation adopted, 2016 U.S. Dist. LEXIS 37145 (Mar. 22, 2016).
Thus, the legal determination in Philpot, that failure to include the attribution required by the
Creative Commons license constitutes copyright infringement as a matter of law, is not affected
by the fact the it was the result of a default judgment.
Admittedly, case law regarding Creative Commons licenses is sparse, however other
courts have reached similar conclusions. See Philpot v. LM Communs. II of S.C., Inc., 2018 U.S.
Dist. LEXIS 113927, at *19-20 (E.D. Ky. July 10, 2018)(“[I]n this instance, Defendant used an
exact copy of a cropped portion of that work—posted on Wikipedia and available for use by all
comers for the mere price of compliance with the terms of the Creative Commons license offered
by Philpot—on its website. There is no evidence that Defendant did so with Plaintiff's express
permission or having obtained a license by accepting and observing the terms of the Creative
Commons license offered by Philpot. This is enough to establish infringement under § 501(a).”)
The Opposition’s claim of a license is also unpersuasive. The license relied on by
Plaintiff, a Creative Commons Attribution-ShareAlike 3.0 Unported (CC BY 3.0) (“CC

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License”) which Plaintiff attached to the Complaint as Exhibit 2, requires as a condition, that the
consumer “give appropriate credit, provide a link to the license, and indicate if changes were
made.” See Complaint, Exhibit 2. Under paragraph 7(a) titled “Termination” the CC License
states that “[t]his License and the rights granted hereunder will terminate automatically upon any
breach by You of the terms of this License.” Ibid. Plaintiff’s failure to include the requisite
attribution is a violation of the CC License’s express attribution requirement, which would
trigger the termination clause making any further use of the Copyrighted Work unlicensed and
therefore subject to a claim of infringement.
Even if Plaintiff is correct that its conduct does constitute copyright infringement,
because Plaintiff failed to comply with the terms of the CC License, it would be liable for breach
of contract for failure to include the requisite attribution. As Plaintiff’s declaratory relief claim is
premised on a determination of no infringement or no breach of contract, whether or not
Plaintiff’s failure to attribute is ultimately a creature of copyright or contract is irrelevant because
liability would attach under either theory.
Thus, Plaintiff’s claim for declaratory relief against the Higbee Defendants should be
dismissed.
III. Plaintiff’s Supplemental State Claim Under NY Gen. Bus. Law § 349 Must Be
Dismissed As Plaintiff Failed To Allege Injury, The Alleged Conduct Is Not
Consumer Oriented And The Alleged Conduct Is Protected By Litigation Privilege.
As the Opposition repeatedly states, on a motion to dismiss a complaint for failure to
state a claim under FRCP 12(b)(6), the only facts to be considered are those alleged in the
complaint. Doe v. Columbia University, 831 F.3d 46, 48 (2d Cir. 2016) (citing DiFolco v.
MSNBC Cable LLC, 622 F.3d 104, 110-11 (2d Cir. 2010)); Reed v. Garden City Union Free

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School Dist, 987 F.Supp.2d 260, 263 (EDNY 2013). This standard is fatal to Plaintiff’s claim
under NY Gen. Bus. Law § 349.
“To state a claim under § 349, a plaintiff must allege that: (1) the act or practice was
consumer-oriented; (2) the act or practice was misleading in a material respect; and (3) the
plaintiff was injured as a result.” Spagnola v. Chubb Corp., 574 F.3d 64, 74 (2d Cir.
2009)(emphasis added).
Nowhere in Plaintiff’s Complaint do they allege any injury. The Opposition attempts to
paint over this misstep by claiming that Plaintiff suffered injury in the form of “time spent
assessing the validity of the Defendants’ false claims of copyright, responding to the Higbee
Defendants, and being subsequently harassed by the Higbee Defendants.” Opposition pp. 21-22.
However, no such allegations appear in the Complaint. Even if they did, the fact the Plaintiff had
to expend time responding to a potential legal claim, which is exactly what lawyers like Plaintiff
do all day, such minimal effort is not a result of reliance on a materially deceptive act or
practice. See Goshen v. Mutual Life Ins. Co., 1997 N.Y. Misc. LEXIS 486, at *12 (Sup. Ct. N.Y.
Cty., Oct. 21, 1997) (dismissing claim because plaintiff could not “allege reliance upon the
alleged misrepresentation”); Gershon v. Hertz Corp., 626 N.Y.S.2d 80, 81 (App. Div. 1995)
(finding allegations did not show “materially deceptive conduct on which plaintiff relied to his
detriment”); cf. Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 32 F.3d 690, 697 (2d Cir.
1994) (dismissing section 349 claim because plaintiff “failed to show that it suffered any injury
as a result of … advertisements”). If Plaintiff did in fact think the claims were without merit, it
simply could have chosen not to respond to the correspondence or speak with anyone on the
telephone. Regardless, the allegations in the Complaint do not speak to any injury suffered by
Plaintiff.

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As explained above, Plaintiff would be liable under either a theory of copyright
infringement or, as Plaintiff argues, breach of contract. Even if Plaintiff and the Higbee
Defendants disagree about the applicability of the law to the facts at bar, the fact that Plaintiff
tacitly acknowledges that they would be liable for something undercuts the allegation that
Plaintiff suffered a cognizable injury.
Tellingly, Plaintiff’s Complaint and the Opposition omit the key fact that the Higbee
Defendants original correspondence also averred Plaintiff’s liability for violation of 17 U.S.C. §
1202, which prohibits infringers from "intentionally remov[ing] or alter[ing] any copyright
management information." Higbee Declaration ¶¶ 21-22, Exhibit B. The statue defines copyright
management information as any information conveying "[t]he name of, and other identifying
information about, the author of a work." 17 U.S.C. § 1202(c)(2). A photo credit appearing in
connection with a photograph clearly falls under this definition. See Agence Fr. Presse v. Morel,
769 F. Supp. 2d 295, 305 (S.D.N.Y. 2011)(Holding that a photo credit constitutes Copyright
Management Information for purposes of 17 U.S.C. § 1202, and that failing to include the photo
credit properly states a claim for relief.) Violation of this statute carries a penalty of up to
$25,000 per offense.
As explained above, Plaintiff did not include a copy of the blog post as an Exhibit to the
Complaint, ostensibly because it would affirmatively demonstrate the Plaintiff failed to include
the proper credit, which is a condition to obtaining a valid license to use the Copyrighted Work,
and would also be grounds for a violation of 17 U.S.C. § 1202.
The Opposition also attempts to paint the Defendants’ actions as deceptive and
misleading through the attached Declaration of Kevin Schlosser, which makes a highly
convoluted and disingenuous argument about how the Copyrighted Work at issue allegedly

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appears in Google search results and on the Blue Diamond Gallery Website. See generally
Schlosser Declaration.
Schlosser testifies that “Exhibit 3 is a printout of the recently-altered version of the Blue
[Diamond] Gallery Website page that hosts the Image.” Schlosser Decl. ¶6. However, Schlosser
does not elaborate on what, if any changes were made, and or why such unidentified changes
would be material to Plaintiff’s claims seeing as how Plaintiff attached as an Exhibit to the
Complaint the version of the Blue Diamond Gallery page that Plaintiff claims appeared at the
time it obtained the Copyrighted Work in question.
Additionally, Schlosser also testifies that “Exhibit 4 [to the declaration] is a
demonstration of how the Image previously could be obtained directly from a Google search,
without accessing the Blue [Diamond] Gallery Website, and thereby used free without ever
seeing any mention of attribution of anything else from the Blue [Gallery] Website. . . Annexed
hereto as Exhibit 5 is a demonstration of how the Image can, now, no longer be obtained directly
from a Google search.” Schlosser Decl. ¶7.
Not only is this testimony highly misleading, it also contradicts Plaintiff’s legal argument
that contract, rather than copyright infringement, is the proper cause of action. Schlosser testifies
that he was able to obtain the Copyrighted Work directly through a Google search without
navigating to the Blue Diamond Gallery Website or viewing the licensing terms. If that is in fact
where Plaintiff obtained the Copyrighted Work from, then it strengthens Defendants’ argument
that Plaintiff engaged in copyright infringement, and not breach of contract since, as Schlosser
admits, Plaintiff would not have been aware of the license and therefore would not have entered
into a contract. Additionally, as demonstrated in Schlosser’s Exhibit 4, the text “Images may be
subject to copyright” is prominently displayed below the Copyrighted Work with links to “Learn

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More” and “Get help”. See Schlosser Decl., Exhibit 4. Clicking through the links brings the user
to a Google page title “Find free-to-use images” which contains the following disclaimer:
Note: Before reusing content, make sure that its license is legitimate and check the exact
terms of reuse. For example, the license might require that you give credit to the image
creator when you use the image. Google can't tell if the license label is legitimate, so we
don't know if the content is lawfully licensed.
See https://support.google.com/websearch/answer/29508?hl=en1. Thus, if Plaintiff did indeed
obtain the Copyrighted Work directly from a Google search, while ignoring the blatant
disclaimers provided by Google, not only would that constitute copyright infringement, but the
infringement would arguably be willful. See Island Software & Comput. Serv., Inc. v. Microsoft
Corp., 413 F.3d 257, 263 (2d Cir. 2005) (finding that reckless disregard of right may constitute
willfulness); see also See 17 U.S.C. § 504 (statutory damages may be increased to $150,000 per
infringement if deemed willful.). Schlosser’s Exhibit 4 is nothing more than a step-by-step guide
of how to commit copyright infringement.
Schlosser’s testimony also misleadingly implies that some or all of the Defendants were
somehow able to change the Google search results page by falsely stating that “the Image can,
now, no longer be obtained directly from a Google search.” Schlosser Decl. ¶ 7. A cursory
review of Schlosser’s Exhibit 5 show that the Copyrighted Work appears on the bottom of page
11 of the Exhibit. See Schlosser Decl., Exhibit 5.
Even if Schlosser’s testimony were accurate, it would not be material as it is not part of
the allegations in the Complaint, and the Complaint expressly alleges that Plaintiff obtained the
Copyrighted Work from the Blue Diamond Gallery Website. Complaint ¶¶ 18-20. The testimony
is not accurate, however, as none of the Defendants directly control Google or its complex

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The Court may properly take judicial notice of this webpage pursuant to Federal Rules of Evidence 201.
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algorithms, which individually tailor search based on a number of factors including the prior
searches of each user. As Google explains on their website,
Information such as your location, past search history and Search settings all help us to
tailor your results to what is most useful and relevant for you in that moment.
We use your country and location to deliver content relevant for your area. For instance,
if you’re in Chicago and you search “football”, Google will most likely show you results
about American football and the Chicago Bears first. Whereas if you search “football” in
London, Google will rank results about soccer and the Premier League higher.
…
In some instances, we may also personalize your results using information about your
recent Search activity. For instance, if you search for “Barcelona” and recently searched
for “Barcelona vs Arsenal”, that could be an important clue that you want information
about the football club, not the city.
See https://www.google.com/search/howsearchworks/algorithms/2.
Thus, try as it might, Plaintiff cannot show that any of the Defendants, including the
Higbee Defendants, engaged in any sort of unscrupulous conduct. Instead, as the Schlosser
Declaration clearly establishes, it was Plaintiff who engaged in copyright infringement by either
expressly ignoring the disclaimers prominently displayed on Google or expressly ignoring the
licensing terms displayed on the Blue Diamond Gallery Website.
Additionally, the Opposition has failed to show how the Higbee Defendants’ conduct is
“consumer oriented.” As the New York State Court of Appeals has repeatedly indicated,
“[s]ection 349 does not grant a private remedy for every improper or illegal business practice,
but only for conduct that tends to deceive consumers” in the consuming public at large. Carlson
v American Intl. Group, Inc., 30 N.Y.3d 288, 309 (Ct. App. 2017)(quoting Schlessinger v
Valspar Corp., 21 N.Y.3d 166, 172 (Ct. App. 2013)); see also Keshin v. Montauk Homes, LLC,
2018-04316 (NY App.—2nd Dept, Jun. 13, 2018)(same). Thus, in order to satisfy section 349
2

The Court may properly take judicial notice of this webpage pursuant to Federal Rules of Evidence 201.
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“as a threshold matter”, a plaintiff’s “claims must be predicated on a deceptive act or practice
that is ‘consumer oriented’”. Carlson, 30 N.Y.3d at 309 (citations omitted).
As “evidence” that the Higbee Defendants’ conduct is consumer oriented, the Opposition
cites to a third-party discussion forum where anonymous users discuss legal matters including
cease and desist letters from the Higbee Defendants. This, however is not sufficient to establish
that the Higbee Defendants’ conduct is “consumer oriented” for the purposes of § 349. First, the
Higbee Defendants are a law firm and, as law firms routinely do, the Higbee Defendants send out
numerous letters and other legal correspondence on behalf of their clients. Each claim presents a
unique set of facts, unique allegations, and unique legal analysis, even if those claims involve the
same represented party.
In this case Plaintiff used a photograph labeled “burden-of-proof” as part of a blog post
ironically titled “Standards of Pleading and Proof For Various Claims of Fraud” on their business
website. See Motion, Exhibit A. The fact that other persons may have received legal
correspondence from the Higbee Defendants in their capacity as counsel for Defendants
Youngson and RM Media does not mean that the those persons committed the same torts in the
same manner as Plaintiff.
“[T]he gravamen of a § 349 claim is consumer injury or harm to the public interest." City
of New York v. Smokes-Spirits.com, Inc., 541 F.3d 425, 455 (2d Cir. 2008)(citation omitted).
“The critical question, then, is whether the matter affects the public interest in New York, not
whether the suit is brought by a consumer or a competitor.” Securitron Magnalock Corp. v.
Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995). Thus, a plaintiff must show that the challenged act
or practice had “a broader impact on consumers at large.” Crawford v. Franklin Credit Mgmt.
Corp., 758 F.3d 473, 490 (2d Cir.2014).

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Thus, because the transaction between the Higbee Defendants and Plaintiff is unique and
private between the parties, it is not “consumer oriented” for the purposes of § 349. See RFP
LLC v. SCVNGR, Inc., 788 F.Supp.2d 191, 199 (S.D.N.Y. 2011)(Trademark cease and desist
letter does not fall under the purview of 349 because the letter was only directed at the plaintiff
and not the public at large).
Finally, the Opposition complains that the Higbee Defendants “cite to out dated cases” to
support the argument that the conduct at issue is protected by the litigation privilege. Ironically,
many of the “outdated” cases cited by the Higbee Defendants were decided in the last 5 years,
including one case decided last month. See Schwartz v. Chan, 2018-03930 (1st Dept.,
6/5/18)(statements “prepared in connection with a threatened litigation” is “protected by the
litigation privilege”); Sklover v. Sack, 102 A.D.3d 855, 856 (2d Dept 2013)(statements made for
purposes of settling a prospective malpractice litigation afforded absolute privilege); see also
Restatement (Second) of Torts § 767 cmt. c, at 31 (instituting litigation or threatening to institute
litigation must be done in bad faith to support a claim for contract interference); id. § 773 illus. 1
(a good faith threat to pursue legal proceedings is not improper).
The Opposition erroneously states that the Higbee Defendants claim an “absolute
privilege” with respect to their pre-litigation correspondence. Opposition p. 24. However, the
Higbee Defendants made not such statement in their Motion. Rather, the Higbee Defendants
recognize that their conduct is protect by a “qualified privilege.” In Front, Inc. v. Khalil, the New
York Court of Appeals held that pre-litigation statements made by counsel in connection with
anticipated litigation are subject to a “qualified privilege” against liability. Front, Inc. v. Khalil
24 N.Y.3d 713, 715 (Ct. App. 2015). Under this variation of the litigation privilege, the Court of
Appeals held that pre-litigation statements of counsel are privileged so long as such statements

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are “pertinent to a good-faith anticipated litigation”. Id. at 720. In continuing to recognize New
York’s recognition of the doctrine, the Court of Appeals explained the policy behind it as
follows:
The rationale supporting the application of privileged status to communication made by
attorneys during the course of litigation is also relevant to pre-litigation communication.
When litigation is anticipated, attorneys and parties should be free to communicate in
order to reduce or avoid the need to actually commence litigation. Attorneys often send
cease and desist letters to avoid litigation. Applying privilege to such preliminary
communication encourages potential defendants to negotiate with potential plaintiffs in
order to prevent costly and time-consuming judicial intervention.
Id. at 719.
Here, Plaintiff’s claims against the Higbee Defendants stem from the correspondences
Plaintiff received from the Higbee Defendants in their representative capacity as attorneys for
their clients. As explained above, the Higbee Defendants possessed a good faith basis for the
allegations in their correspondence to Plaintiff. Such conduct is undoubtedly protected by the
litigation privilege.
CONCLUSION
For the foregoing reasons, Plaintiff’s claims against Mathew K. Higbee and Higbee &
Associates should both be dismissed with prejudice.
Dated: July 20, 2018

HIGBEE & ASSOCIATES
/s Rayminh L. Ngo
Rayminh L. Ngo, Esq.
EDNY #RN4834
HIGBEE & ASSOCIATES (Of Counsel)
1504 Brookhollow Dr., Ste. 112
Santa Ana, CA 92705
714-617-8336
[e-mail]
Attorney for Defendants Mathew K. Higbee &
Higbee & Associates

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Case 2:18-cv-03353-ADS-ARL Document 12 Filed 07/20/18 Page 20 of 20 PageID #: 239

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that a true and correct copy of the foregoing was served by
electronically filing with the Clerk of the Court using CM/ECF on this 20th day of July, 2018,
on all counsel or parties of record on the service list below.
/s/ Rayminh L. Ngo
Rayminh L. Ngo, Esq.

SERVICE LIST
Kevin Schlosser
MEYER, SUOZZI, ENGLISH & KLEIN, P.C.
990 Stewart Avenue, Suite 300
Garden City, New York 11530
[e-mail]

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