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

Filing 25

REPLY in Support re Order on Motion to Dismiss for Failure to State a Claim,,, Order on Motion to Strike,, 9 Motion to Dismiss for Failure to State a Claim , 11 Memorandum in Opposition filed by Mathew K. Higbee, Higbee & Associates. (Attachments: # 1 Declaration of Mathew K. Higbee) (Ngo, Rayminh) STRICKEN pursuant to the 3/13/2019 Electronic Order Order of Judge Arthur D. Spatt. This entry has been modified on 3/14/2019 to indicate Reply in Support 25 has been stricken. (Coleman, Laurie).

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.,
Plaintiff,
v.

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)]

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

TABLE OF CONTENTS
ARGUMENT………………………………………………………………………………… 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………………………………………………………………………….. 1

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………………………………………………………… 2

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…………………………………………………………………………….. 5

CONCLUSION……………………………………………………………………………..... 10

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.
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, Plaintiff 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 facts relied on in 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. Using the information shown
in 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, 282 F.3d at 152-53, and therefore it was proper for the Higbee
Defendants to attach it. See Complaint ¶ 19. The nature of Plaintiff’s use of the Copyrighted
Work at issue is an integral to Plaintiff’s declaratory relief claim.
II.

Plaintiff’s Declaratory Relief Claim 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
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, the case or controversy to be determined is whether the
Defendants, including the Higbee Defendants, have a legitimate claim for copyright infringement

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and/or breach of contract against Plaintiff. 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”).
Plaintiff spends an exhausting seven pages arguing that Plaintiff’s 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
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 Plaintiff cannot state a claim for
the declaratory relief against the Higbee Defendants, and the claim must be dismissed without
leave to amend.
Plaintiff 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. While default is
an admission of all well-pleaded allegations against a defaulting party, 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 v. Romanowicz, 577 F.3d 79, 84 (2d Cir. 2009)). "If the complaint fails

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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 no affected by the fact the it was the result of a default judgment. 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).”)
Plaintiff’s claim of a license is also unpersuasive. The license relied on, a Creative
Commons Attribution-ShareAlike 3.0 Unported (CC BY 3.0) (“CC 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 were correct that its conduct does constitute copyright infringement, it
would be liable for breach of contract for failure to include the requisite attribution because
Plaintiff failed to comply with the express terms of the CC License. As Plaintiff’s declaratory
relief claim is premised on a determination of no infringement or no breach of contract, whether

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or not Plaintiff’s failure to attribute is ultimately a creature of copyright or contract is irrelevant
because liability would attach under either theory.
III.
Plaintiff’s Supplemental State Claim Must Be Dismissed As Plaintiff Failed To
Allege Injury, 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)); Reedv. Garden City Union Free
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).
Nowhere in Plaintiff’s Complaint does it allege any injury. Plaintiff attempts to paint over
this misstep by claiming that it 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, 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”); cf. Ortho
Pharmaceutical Corp. v. Cosparophar, 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”). Indeed, the fact that Plaintiff immediately filed a suit for declaratory relief is
evidence Plaintiff did not in fact rely on the claims in the letter sent by the Higbee Defendants.

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Tellingly, Plaintiff’s Complaint and memorandum in 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.
Plaintiff 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 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.

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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
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=en. 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). 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.

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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
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/.
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, Plaintiff has failed to show how the Higbee Defendants’ conduct is
“consumer oriented.” 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” under § 349.
The Higbee Defendants are a law firm and, as law firms routinely do, send out numerous letters
and other legal correspondence on behalf of their clients. Each claim presents a unique set of

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facts, unique allegations, and unique legal analysis, even if those claims involve the same
represented party or similar legal theories. The fact that other persons may have received legal
correspondence from the Higbee Defendants in their capacity as counsel for Defendants
Youngson and/or RM Media does not mean that the those persons committed the same torts in
the same manner as Plaintiff.
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, Plaintiff 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 were decided in the last 5 years, including one case decided
three days prior to the filing of Plaintiff’s Complaint. 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).
Plaintiff 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 no such claim. 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 so long as such statements are “pertinent to a
good-faith anticipated litigation”. 24 N.Y.3d 713, 715-720 (Ct. App. 2015). The court in Khalil
explained the policy behind New York’s recognition of the litigation privilege:
The rationale supporting the application of privileged status to communication made by

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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: Mar. 11, 2019

HIGBEE & ASSOCIATES
/s Rayminh L. Ngo
Rayminh L. Ngo, Esq. (Of Counsel)
EDNY #RN4834
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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