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

Filing 27

REPLY in Support re 9 Motion to Dismiss for Failure to State a Claim , Order on Motion to Strike, filed by Mathew K. Higbee, Higbee & Associates. (Attachments: # 1 Declaration of Mathew K. Higbee, # 2 Exhibit A (Blog Post Featuring Copyrighted Work), # 3 Exhibit B (Higbee Defendants' Letter to Plaintiff 01-30-18)) (Ngo, Rayminh)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NEW YORK
______________________________________
MEYER, SUOZZI, ENGLISH & KLEIN,
P.C.,
Docket No. 2:18-cv-03353-ADS-ARL
Plaintiff,
-againstMATHEW K. HIGBEE, Esq.,
NICK YOUNGSON,
RM MEDIA, LTD., &
HIGBEE & ASSOCIATES,
Defendants.
______________________________________
REPLY MEMORANDUM OF HIGBEE DEFENDANTS
(MATHEW K. HIGBEE, ESQ., and HIGBEE & ASSOCIATES)
IN SUPPORT OF MOTION TO DISMISS

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 Higbee Defendants
(Mathew K. Higbee and Higbee & Associates)

TABLE OF CONTENTS
INTRODUCTION……………………………………………………………………………..

1

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

INTRODUCTION
Plaintiff does nothing to demystify the series of bewildering and absurd things its
Complaint is asking the Court to do, including: (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 and which addresses viable claims
under 17 U.S.C §1202(b)(removal of copyright management information) and of 17 U.S.C §501
(copyright infringement); and (3) asserting a cause of action for an alleged tort with no alleged
damages. As explained more fully below, because the Higbee Defendants have no interest in the
Copyrighted Work at issue, no case or controversy exists to sustain Plaintiff’s claim for
declaratory relief. Additionally, Plaintiff’s supplemental state claim is unsupported by any
allegation of injuries, the allegedly tortious conduct is not consumer oriented and is protected by
the litigation privilege in any event.
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 Rule 12(b)(6) motions, a court is limited to 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 FRE 201.
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)(“Where 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.”).

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Plaintiff accuses Higbee Defendants’ of relying “on extraneous factual allegations” which
it claims are not proper considerations for a motion to dismiss. Pltf’s Opp. p. 3; Schlosser Decl.
¶ 4. This is false. The only facts the Higbee Defendants have relied on are allegations expressly
stated in Plaintiff’s Complaint (including its own exhibits). The Complaint admits that on Dec.
26, 2017, Plaintiff used the Copyrighted Work in a blog article on its website. Complaint ¶¶ 1819. Plaintiff also admits it took the Copyrighted Work from the Blue Diamond Gallery website.
Compl. ¶ 20. Plaintiff attached as “Exhibit 1” a copy of the Blue Diamond Gallery page from
where Plaintiff downloaded the Copyrighted Work. Compl. ¶21, Exhibit 1. Using Plaintiff’s
own Exhibit 1 of its Complaint, the Higbee Defendants pointed out 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 is conspicuously marked “Copyright 2017 RM
Media” at the bottom.
Finally, the Higbee Defendants previously attached a true and correct copy of the blog
post which Plaintiff created and which featured the use of the Copyrighted Work. Plaintiff did
not include this as an Exhibit to its Complaint ostensibly because it would affirmatively
demonstrate Plaintiff’s liability. Nonetheless, documents “integral” to or relied upon in
the complaint, even if not attached to the complaint, may be properly considered on a motion to
dismiss. See Chambrs, 582 F.3d at 152-53; Complaint ¶ 19.
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 or actual controversy exists for 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

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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). Here, the Complaint alleges: “Plaintiff
brings this action for a declaratory judgment … 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 and/or breach of contract claim against Plaintiff. See also Pltf’s
Oppos. 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 seven pages arguing that Plaintiff’s conduct is not copyright infringement
but should, instead, be considered under a theory of breach of contract. Yet, Plaintiff fails to
address the critical issue that no case or controversy regarding 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. The Complaint even 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 Compl. ¶¶ 28-29. Neither of the Higbee Defendants has ever purported
to hold an interest in the Copyrighted Work, and the Complaint does not allege that they have.
Plaintiff makes hay out of 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

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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 does not change
the legal analysis, which is directly on point to the instant case. Even where a court grants a
judgment by default, the 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)(further citation omitted). “If the complaint fails to state a
cognizable claim, a plaintiff may not recover even upon defendant’ default. Allstate Ins. Co. v.
Afanasyev, 2016 U.S. Dist. LEXIS 19084, at *6 (E.D.N.Y. Feb. 11, 2016), 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 that it was the result of a default judgment.
Other courts have reached similar conclusions. See, e.g., Philpot v. LM Communs. II of
S.C., Inc., 2018 U.S. Dist. LEXIS 113927 (E.D. Ky. July 10, 2018). There, the court observed:
[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).
Id. at *19-20.
Here, the license which Plaintiff purportedly relied on—a Creative Commons
Attribution-ShareAlike 3.0 Unported (CC BY 3.0)(the “CC License”)—requires as a condition
that the consumer “give appropriate credit, provide a link to the license, and indicate if changes
were made.” See Compl. 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

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breach by You of the terms of this License.” Id. Plaintiff’s failure to include the requisite
attribution is a violation of the CC License, which would trigger the termination clause and
thereby make any further use of the Copyrighted Work unlicensed. Thus, even if Plaintiff were
correct that its conduct does constitute copyright infringement, is still committed a breach of
contract by failing to include the requisite attribution as expressly required to qualify for the CC
License. As such, Plaintiff cannot be entitled to declaratory relief as requested in the Complaint.
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 Plaintiff states, on a motion to dismiss the only facts to be considered are those

alleged in the complaint. Doe v. Columbia University, 831 F.3d 46, 48 (2d Cir. 2016); Reedv.
Garden City Union Free School Dist., 987 F.Supp.2d 260, 263 (EDNY 2013). This standard is
fatal to Plaintiff’s supplemental state 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 is there any allegation of injury. Plaintiff now claims
for the first time in its memorandum in opposition that it suffered injuries 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”. Pltf’s Oppos.
pp. 21-22. These alleged injuries appear nowhere in the Complaint. Even if they do, the fact the
Plaintiff had to expend time responding to a potential legal claim 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”); Ortho Pharmaceutical Corp. v.

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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”). Indeed, the fact that
Plaintiff immediately filed a suit for declaratory relief is evidence that Plaintiff did not in fact
rely on the claims in the letter it received from the Higbee Defendants.
Tellingly, Plaintiff’s Complaint and memorandum in opposition omit the key fact that the
Higbee Defendants’ original correspondence actually 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 Decl. ¶¶ 21-22, Exhibit B. Copyright management
information is defined 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.). As explained above, Plaintiff did not include a copy of
the blog post as an exhibit to the Complaint, as this would demonstrate that Plaintiff failed to
include the proper credit, which is a condition to obtaining a valid license to use the Copyrighted
Work. The blog post would additionally demonstrate Plaintiff’s violation of 17 U.S.C. § 1202.
Plaintiff also attempts to paint the Higbee Defendants’ alleged actions as deceptive and
misleading based on the Declaration of Kevin Schlosser (Plaintiff’s own counsel) who makes
highly convoluted and disingenuous arguments about how the Copyrighted Work allegedly
appears in Google search results and on the Blue Diamond Gallery Website. See Schlosser
Declaration. Mr. Schlosser declares 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. Yet, he

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fails to elaborate on what, if any changes were made, and or why such unidentified changes
would be material to Plaintiff’s claims, especially where the Plaintiff attached as an exhibit to its
own Complaint the version of the Blue Diamond Gallery page that the Plaintiff claims appeared
at the time it obtained the Copyrighted Work in question.
Additionally, Mr. Schlosser declares:
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.
That declaration is not only misleading, it also contradicts the Plaintiff’s argument that
contract, rather than copyright infringement, is the proper cause of action. Mr. Schlosser declares
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. Yet, his own
Exhibit 4 contains the statement “Images may be subject to copyright” 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 titled “Find free-to-use
images” that 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.
Even if the Plaintiff had in fact obtained the Copyrighted Work in the manner described
in Mr. Schlosser’s declaration, this would only support Defendants’ argument that Plaintiff
engaged in copyright infringement, and not breach of contract, because the Plaintiff would not

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have been aware of the license and therefore would not have entered into any contract. And if
the Plaintiff obtained the Copyrighted Work directly from a Google search while ignoring those
blatant disclaimers, its conduct would not only constitute copyright infringement, but the
infringement would be willful. See Island Software & Comput. Serv., Inc. v. Microsoft Corp.,
413 F.3d 257, 263 (2d Cir. 2005)(reckless disregard of right may constitute willfulness).
Mr. Schlosser implies that the Higbee Defendants were somehow able to change the
Google search results, stating “the Image can, now, no longer be obtained directly from a Google
search.” Schlosser Decl. ¶ 7. However, a cursory review of Exhibit 5 shows that the Copyrighted
Work appears at the bottom of page 11 of that Exhibit. See Schlosser Decl., Exhibit 5. And even
if Mr. Schlosser were correct, it would not be material as the Complaint expressly alleges that the
Plaintiff obtained the Copyrighted Work from the Blue Diamond Gallery Website, not Google.
Complaint ¶¶ 18-20. Moreover, the Higbee Defendants did not at any time have any direct
control over 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 its 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, Plaintiff simply cannot show that any of the Defendants engaged in any sort of
unscrupulous conduct. Its own counsel’s declaration clearly establishes that it was Plaintiff who

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engaged in copyright infringement by either ignoring the disclaimers prominently displayed on
Google or ignoring the licensing terms displayed on the Blue Diamond Gallery Website.
Plaintiff also fails to show how the Higbee Defendants’ alleged conduct was “consumer
oriented” in order to sustain its supplemental state claim. It cites as “evidence” a third-party
Internet forum where anonymous users discuss legal matters including cease and desist letters
they received from the Higbee Defendants. Expressions of discontent posted by a few
anonymous users on a single Internet forum do not in any way establish the alleged conduct is
“consumer oriented”. As law firms routinely do, the Higbee Defendants have sent out legal
correspondences to various third parties on behalf of their clients over the years. Each claim
presents unique facts, allegations, and legal analysis, even if the claims involve the same
represented party or similar legal theories. The fact that other persons may have received legal
correspondences from the Higbee Defendants, in their capacity as counsel for RM Media, does
not render the alleged conduct “consumer oriented” under § 349. See RFP LLC v. SCVNGR,
Inc., 788 F.Supp.2d 191, 199 (S.D.N.Y. 2011)(cease and desist letter did not fall under § 349
because it was only directed at plaintiff and not the public at large).
Finally, Plaintiff complains that the Higbee Defendants “cite to out dated cases” to
support the litigation privilege argument. On the contrary, many of the “outdated” cases cited
were decided in the last 5 years, including one decided just 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 … 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).

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Plaintiff erroneously claims that the Higbee Defendants asserted an “absolute privilege”.
Pltf’s. Oppos. p. 24. On the contrary, the Higbee Defendants have expressly recognized that
their alleged conduct was protected by a “qualified privilege.”, not an absolute privilege. The
New York Court of Appeals recently held that pre-litigation statements made by counsel in
connection with anticipated litigation are subject to a “qualified privilege” where such statements
are “pertinent to a good-faith anticipated litigation”:
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.
Front, Inc. v. Khalil, 24 N.Y.3d 713, 715-720 (Ct. App. 2015).
Here, Plaintiff’s claims against the Higbee Defendants stem from the correspondence sent
by the Higbee Defendants in their representative capacity as attorneys for their clients. The
Higbee Defendants had a good faith basis for their allegations in the correspondence to Plaintiff.
On the other hand, the Plaintiff was, at all relevant times, an established law firm with an army
of attorneys who have formal legal training and was free to independently assess, disagree with
and/or and disregard the Higbee Defendant’s legal claims.
CONCLUSION
For the foregoing reasons, Plaintiff’s claims against Mathew K. Higbee and Higbee &
Associates should both be dismissed with prejudice.
Dated: March 14, 2019

HIGBEE & ASSOCIATES
/s Rayminh L. Ngo
Rayminh L. Ngo, Esq.
Attorney for Mathew K. Higbee and
Higbee & Associates

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