Levine v. Landy et al

Filing 19

MEMORANDUM-DECISION & ORDER granting in part and denying in part defts Elliot Landy and Landyvision, Inc.'s 11 Motion to Dismiss for Failure to State a Claim; Defts shall file an answer to the remaining causes of action on or before January 20 , 2012. The following causes of action remain and must be answered: (a) Counts 1-17, Copyright Infringement; (b) Count 18, Unjust Enrichment with respect to Group B photographs; (c) Count 19, Conversion; (d) Count 20, Lanham Act; and (e) Count 21, Accounting with respect to Group B photographs. Signed by Judge David N. Hurd on 12/30/2011. (see)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
-------------------------------BARRY Z. LEVINE
Plaintiff,
-v-

1:11–CV–1038

ELLIOT LANDY & LANDYVISION, INC.,
Defendants.
-------------------------------APPEARANCES:

OF COUNSEL:

HESLIN ROTHENBERG FARLEY & MESITI P.C.
Attorneys for Plaintiff
5 Columbia Circle
Albany, NY 12203

ANNETTE I. KAHLER, ESQ.
NICHOLAS MESITI, ESQ.

COWAN, DeBAETS, ABRAHAMS,
& SHEPPARD LLP
Attorneys for Defendants
41 Madison Avenue
34th Floor
New York, NY 10010

ELEANOR M. LACKMAN, ESQ.

DAVID N. HURD
United States District Judge
MEMORANDUM–DECISION and ORDER
I. INTRODUCTION
Plaintiff Barry Z. Levine ("plaintiff" or "Levine") brought suit against Elliot Landy
("Landy") and his company, Landyvision, Inc. ("Landyvision") (collectively "defendants")
asserting a total of twenty-one causes of action, including copyright infringement, unjust
enrichment, conversion, unfair competition, and that an accounting is due.

Defendants moved to dismiss certain claims pursuant to Federal Rule of Civil
Procedure 12(b)(6). Plaintiff opposed.1 Oral argument was heard in Utica, New York on
December 9, 2011. Decision was reserved.
II. BACKGROUND
A. Facts
The following facts, taken from the complaint and incorporated documents, are
accepted as true for purposes of the motion to dismiss. Plaintiff attended and took
photographs at the 1969 Woodstock music festival. In 1979, he entered into an oral
agreement with Landy, under which Landy would license plaintiff's photographs and remit
royalty payments received from the licensing to plaintiff. As part of this agreement, plaintiff
provided defendant the original slides of his photographs.
In 1994, Levine agreed to license five of his photographs for use in a book published
by Landyvision, Inc. titled "Woodstock 1969–The First Festival" (the "1994 book"). In late
2007 through early 2008, the parties discussed collaborating on a reprint of the 1994 book
but did not reach an agreement. By August 2008, the parties' relationship had soured and
Levine terminated his business relationship with Landy.
According to plaintiff, on November 3, 2008, French publisher Fetjaine published a
French reprint of the 1994 book (the "Fetjaine book") in France, with Landy's authorization.
Plaintiff contends his photographs were used in that book without his permission and some
of the works misrepresented Landy as the photographer. Plaintiff also contends defendants

1
In response to defendants' m otion, plaintiff states "[i]n the event that this court finds plaintiff's
com plaint insufficiently pled for any reason, plaintiff should be granted leave to am end." Pl.'s Opp'n Mem . of
Law, Dkt. No. 13, 19. This request is not considered at this tim e because Levine did not m ake a form al
m otion to am end nor did he go through the proper standard for perm itting an am endm ent.

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used additional photographs without his consent and without crediting him in a 2009 book
they published, titled "Woodstock Vision–The Spirit of a Generation"; on defendants' website
www.landyvision.com; on non-party website www.intercontinental-ltd.com; and in a 2009
book published by non-parties Brad Littleproud ("Littleproud") and Joanne Hague ("Hague"),
titled "Woodstock: Peace, Music and Memories." Finally, Levine asserts defendants
published, distributed, and/or copied some of his photographs, with his permission, but
without remitting payment to him as agreed by the parties.
B. Copyrighted Works
Plaintiff alleges he is "the copyright author and owner of all of Plaintiff's Woodstock
Photographs, whether such photographs are registered or unregistered with the U.S.
Copyright Office." Compl., Dkt. No. 1, ¶ 38. The complaint identifies eight registered
copyrights, id. ¶¶ 40–47, and three pending applications for copyrights, id. ¶¶ 48–50. Since
the filing of the complaint, the three pending applications have been approved, bringing the
total registered copyrights identified in the complaint to eleven. See Decl. of Annette I.
Kahler, Exs. A–B, Dkt. No. 13-2; Letter of Annette I. Kahler, Dkt. No. 18. Many of the
registrations are for collections which include multiple photographs. The registration
certificates attached to the complaint do not indicate which photographs comprise the
collections. Therefore it is difficult to determine precisely how many photographs in total are
involved in this lawsuit.2
Not all the photographs identified in the complaint are alleged to have been infringed.
Eleven photographs are identified as the subject of the copyright infringement claims (Counts

2

For exam ple, the recently registered "W oodstock Artists and Scenery Collection 1" includes five
photographs, only som e are which are alleged to have been infringed. See Dkt. No. 18.
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1–17) ("Group A photographs"). At oral argument, plaintiff's counsel indicated there are
some photographs involved in this lawsuit for which defendants had authorization to
distribute, publish, and/or reproduce (and thus were not infringed upon), but for which
payments were never remitted to plaintiff ("Group B photographs"). Group B photographs
therefore do not include those eleven photographs identified in Counts 1–17, the copyright
infringement claims. The distinction between Group A and Group B photographs is
particularly important in analyzing whether Levine's unjust enrichment claim and demand for
an accounting are preempted by the Copyright Act.
III. DISCUSSION
Defendants move pursuant to Federal Rule of Civil Procedure 12(b)(6) dismissing all
claims relating to the Fetjaine book; claims relating to unregistered copyrights; claims for
statutory damages and attorneys' fees; infringement claims involving third parties; and
plaintiff's Lanham Act, New York State statute, and common law claims as preempted by the
Copyright Act.
A. Legal Standard
When deciding a motion to dismiss pursuant to Rule 12(b)(6), a plaintiff's factual
allegations must be accepted as true and all reasonable inferences must be drawn in favor of
the plaintiff to assess whether a plausible claim for relief has been stated. Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555–61, 127 S. Ct. 1955, 1964–67 (2007); Ashcroft v. Iqbal,
556 U.S. 662, ---, 129 S. Ct. 1937, 1953 (2009) (holding that the pleading rule set forth in
Twombly applies in all civil actions). The factual allegations must be sufficient "to raise a
right to relief above the speculative level," crossing the line from conceivable to plausible.
Twombly, 550 U.S. at 555, 127 S. Ct. at 1965. Additionally, "a formulaic recitation of the
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elements of a cause of action will not do." Id. at 555, 127 S. Ct. at 1965. "A claim has facial
plausibility when the plaintiff pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 129 S.
Ct. at 1949 (citing Twombly, 550 U.S. at 556, 127 S. Ct. at 1965).
Thus, in reviewing the sufficiency of the pleading, a court first may identify legal
conclusions that "are not entitled to the assumption of truth." Id. at 1950. The court should
then "assume [the] veracity" of "well-pleaded factual allegations . . . and determine whether
they plausibly give rise to an entitlement to relief." Id.
B. Fetjaine Book Published in France (Counts 1, 3, 4, 6, 8, 9, 10, and 14)
Defendants argue the copyright infringement claims involving the book published in
France must be dismissed because the court does not have subject matter jurisdiction over
infringement which occurred outside the United States.
It is well established that copyright laws generally do not have extraterritorial
application. Update Art, Inc. v. Modiin Publ'g, Ltd., 843 F.2d 67, 73 (2d Cir. 1988). The
Second Circuit has recognized an exception to this rule when there is a qualifying predicate
infringing act in the United States. Id. For the exception to apply, a plaintiff must show the
conduct: (1) took place in the United States and (2) was in violation of the Copyright Act.
See id. A violation of the Copyright Act occurs when an infringer violates one of the
exclusive rights of a copyright owner in § 106 of the Copyright Act. 17 U.S.C. § 106. Under
§ 106, a copyright owner has the exclusive rights to do and to authorize any of the following:
(1) reproduce the copyrighted work; (2) prepare derivative works; (3) distribute copies of the
work by sale or otherwise; and, with respect to certain artistic works, (4) perform the work
publicly; and (5) display the work publicly. See id. To allege a predicate act, plaintiff must
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assert defendants violated one of the above mentioned rights within the United States. It
should be noted that inducement and causation, alone, are not violations under § 106.
The complaint alleges defendants "copied, distributed, and published, caused to have
published, or induced the publication of" various photographs as part of the Fetjaine book.
Compl., ¶¶ 54, 70, 78, 95, 111, 118, 127, 158. It also states Landy "authored and published"
the book in connection with publisher Fetjaine; "published, caused to be published, or
induced the publication" of the book; intentionally misrepresented plaintiff as associated with
the book; and misrepresented some of the photographs as Landy's when they were actually
plaintiff's. Id. ¶¶ 25–27. Finally, it is undisputed plaintiff did not consent to the use of his
photographs in the Fetjaine book and that since 1979, defendant maintained physical
possession of plaintiff's original Woodstock slides.
Making all reasonable inferences in plaintiff's favor as must be done on a motion to
dismiss, the complaint alleges defendants engaged in conduct in the United States, which if
true, would be in violation of the Copyright Act. While inducement and causation by
defendants are not alone enough to qualify as predicate infringing acts in the United States,
plaintiff has alleged defendants engaged in direct infringement and violations under § 106,
including copying, distributing, and publishing his photographs. If after the course of
discovery, the evidence demonstrates that defendants merely induced or caused publisher
Fetjaine to infringe plaintiff's copyrights, defendants may potentially succeed on a summary
judgment motion. On the present facts, defendants' motion to dismiss claims involving the
Fetjaine book will be denied.

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C. Unregistered Copyrights— 17 U.S.C. § 411 (Counts 5, 11, 12, 13, 14, 15, 16 and
17)
Defendants contend eight causes of action relating to unregistered works must be
dismissed. According to defendants, the following four works are unregistered: (1) the
Richie Havens photograph in Count 5; (2) the Leo Lyons photograph in Counts 11, 12, and
13; (3) the Grace Slick photograph in Counts 14 and 15; and (4) the Aerial View 2
photograph in Counts 16 and 17.
Section 411 of the Copyright Act mandates that, "no civil action for infringement of the
copyright in any United States work shall be instituted until preregistration or registration of
the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a).
Following the filing of the complaint and the briefing of the instant motion, plaintiff
received registration certificates for all four of the works at issue. The Leo Lyons and Aerial
View 2 photographs have an effective registration date of August 30, 2011. The Richie
Havens and Grace Slick photographs have an effective registration date of August 31, 2011.
Therefore plaintiff possesses registered copyrights for all of the works identified in the
copyright infringement claims (Counts 1-17) and defendants' motion to dismiss Counts 5, 11,
12, 13, 14, 15, 16, and 17 will be denied.
D. Statutory Damages and Attorneys' Fees— 17 U.S.C. § 412 (All copyright
infringement claims, Counts 1–17)
Defendants contend plaintiff is prohibited from claiming statutory damages and
attorneys' fees because all of the alleged infringement commenced prior to the registration of
his copyrights with the United States Copyright Office.
Section 504 of the Copyright Act sets forth the types of remedies a plaintiff may seek
in a lawsuit for copyright infringement. That section provides a plaintiff with the option of
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electing one of two types of remedies: "(1) the copyright owner's actual damages and any
additional profits of the infringer . . . or (2) statutory damages." 17 U.S.C. § 504(a)(1)(2).
Additionally, § 505 provides that the court in its discretion may award attorneys' fees and
costs to the prevailing party. 17 U.S.C. § 505. However, the Copyright Act limits the
availability of statutory damages and attorneys' fees to only those plaintiffs who registered
their copyright prior to the commencement of the infringement. Specifically, § 412 of the
Copyright Act provides that:
[N]o award of statutory damages or of attorney's fees, as provided
by sections 504 and 505, shall be made for . . . any infringement
of copyright commenced after first publication of the work and
before the effective date of its registration, unless such
registration is made within three months after the first publication
of the work.
17 U.S.C. § 412(2). Therefore, to determine which photographs, and ultimately under which
causes of action plaintiff may elect statutory damages and/or attorneys' fees, special
attention needs to be given to the date of registration and date of infringement for each
work.3
Plaintiff alleges the photographs in the Fetjaine book (Counts 1, 3, 4, 6, 8, 9, 10, and
14) were infringed on November 3, 2008, the date the book was published. According to the
complaint, the photographs in Counts 1, 3, 4, 6, 8, and 10 were all registered some time in
October 2008, prior to the November 3, 2008, infringement and thus claims for statutory
damages and attorneys' fees for these counts may proceed. The Janis Joplin photograph in
Count 9 was not registered until April 22, 2009. Since the November 3, 2008, infringement
3
In its reply in support of its m otion to dism iss, defendants' counsel prepared a chart sum m arizing
their analyses of claim s for statutory dam ages and attorneys' fees. See Reply Decl. of Eleanor M. Lackm an,
Ex. A, Dkt. No. 14–2. During oral argum ent, plaintiff's counsel subm itted a chart outlining its analyses of
claim s for statutory dam ages and attorneys' fees. See Dkt. No. 17.

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date pre-dates the April 22, 2009, copyright registration, plaintiff cannot obtain statutory
damages or attorneys' fees for Count 9. Count 14 involves the Grace Slick photograph
which was not registered until August 31, 2011, but alleged to be infringed on November 3,
2008. On those facts, Levine cannot elect statutory damages or attorneys' fees. However,
that photograph was first published on August 30, 2011, potentially entitling plaintiff to such
relief under the latter part of § 412(2) providing an exception to the general timeline if "such
registration is made within three months after the first publication of the work." 17 U.S.C. §
412(2). Therefore defendants' motion to dismiss the request as to Count 14 will be denied.
Counts 2, 5, 7, 13, and 17 allege defendants infringed plaintiff's copyrights by posting
his photographs to certain websites. The photographs in Counts 2 and 7 were registered on
October 31, 2008. According to plaintiff, these photographs were displayed at an unknown
date and for a lengthy period. Even drawing all reasonable inferences in plaintiff's favor, he
has not alleged any date, which if true, would entitle him to the relief he requests. Therefore
he cannot elect statutory damages and attorneys' fees for Counts 2 and 7. With respect to
the remaining website-related claims, Count 5 involves the Richie Havens photograph,
registered on August 31, 2011, prior to the alleged infringement on December 9, 2011.4
Therefore the request as to Count 5 may proceed. Similarly, the photographs in Counts 13
and 17 were registered on August 30, 2011, and alleged to have been infringed on

4

It should be noted neither party addressed what the "com m encem ent" date of infringem ent is for
infringem ent occurring on a website. The Second Circuit is clear that, under § 412, "a plaintiff m ay not
recover statutory dam ages and attorney's fees for infringem ent occurring after registration if that infringem ent
is part of an ongoing series of infringing acts and the first act occurred before registration." See Troll Co. v.
Uneeda Doll Co., 483 F.3d 150, 158 (2d Cir. 2007). Therefore, if the com m encem ent dates of the internet
infringem ents were prior to the registration dates for the allegedly infringed works, statutory dam ages and
attorneys' fees would be barred for those works.
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December 9, 2011. Thus, plaintiff's claims for statutory damages and attorneys' fees as to
Counts 13 and 17 may proceed.
Turning to the remaining claims, the photographs in Counts 11, 12, and 16 were not
registered until August 30, 2011, yet alleged to be infringed in 2009. Since any date in 2009
pre-dates the registration of those photographs on August 30, 2011, plaintiff cannot elect to
obtain statutory damages or attorneys' fees for Counts 11, 12, or 16. Finally, Count 15
involves the Grace Slick photograph previously mentioned, registered on August 31, 2011.
Because the infringement for Count 15 occurred some time in 2009—well before
registration—relief would not be available. However, because the work was first published
on August 30, 2011, Levine may elect statutory damages and attorneys' fees because
"registration [would be] made within three months after the first publication of the work." 17
U.S.C. § 412(2). Accordingly, the request as to Count 15 may proceed at this time.
In summary, Levine's request for statutory damages and attorneys' fees for Counts 1,
3, 4, 5, 6, 8, 10, 13, 14, 15, and 17 may proceed at this time. Consequently, he is barred
from seeking statutory damages and attorneys' fees for Counts 2, 7, 9, 11, 12, and 16.
E. Infringement Claims Involving Third Parties (Counts 2, 7, and 12)
Defendants argue claims alleging infringement by non-parties Littleproud, Hague, and
website www.intercontinental-ltd.com must be dismissed because these claims fail to allege
direct infringement by the defendants. They contend Levine's conclusory allegations that
Landy copied, distributed, and published the works at issue are insufficient, particularly
because the complaint identifies non-parties responsible for the infringement.
Similar to the extraterritorial infringement principles explained above, to assert a direct
copyright infringement claim, a plaintiff must proffer sufficient facts to create a reasonable
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inference that defendants copied, distributed, displayed or otherwise violated an exclusive
right in Levine's works under § 106. Defendants are correct in that the complaint alleges
non-parties Littleproud, Hague, and www.intercontinental-ltd.com actually published and/or
distributed Levine's photographs. As previously noted, inducement and causation cannot
form the basis for direct infringement claims under the Copyright Act.
Secondary liability principles were not addressed in either parties' briefs but were
raised at oral argument. "[C]ontributory infringement liability is imposed on persons who
know or have reason to know of the direct infringement" and "liability exists if the defendant
engages in personal conduct that encourages or assists the infringement." Arista Records,
LLC v. Doe 3, 604 F.3d 110, 118 (2d Cir. 2010) (internal citations and quotations omitted).
"One infringes contributorily by intentionally inducing or encouraging direct infringement."
See MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 930, 125 S. Ct. 2764, 2776 (2005).
"Although the Copyright Act does not expressly render anyone liable for infringement
committed by another, these doctrines of secondary liability emerged from common law
principles and are well established in the law." Id. (internal citations and quotations omitted).
"To state a claim for contributory copyright infringement, a plaintiff must aver that the
defendant, 'with knowledge of the infringing activity, induce[d], cause[d], or materially
contribute[d] to the infringing conduct of another.'" Warner Bros. Entm't Inc. v. Ideal World
Direct, 516 F. Supp. 2d 261, 267–68 (S.D.N.Y. 2007) (quoting Gershwin Publ'g Corp. v.
Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). "Secondary liability may
be imposed on a defendant who does nothing more than encourage or induce another to
engage in copyright infringement." Id. at 268 (citing Grokster, 545 U.S. at 936, 125 S. Ct. at

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2779). However, "the fact or intention of a direct infringement" must be alleged and
ultimately proven. See id.
Levine pleads facts giving rise to claims of contributory copyright infringement by
defendants. Count 2 alleges direct infringement by www.intercontinental-ltd.com in
displaying the Hendrix photograph without plaintiff's consent. Compl. ¶ 62. The complaint
asserts "Defendants copied, distributed, and published, caused to have published, or
induced the publication of, the Hendrix Photo on the website." Id.
In Count 7, the complaint alleges www.intercontinental-ltd.com infringed plaintiff's
copyright by displaying the Aerial View 1 photograph without his consent. Id. ¶ 103. It further
alleges "Defendants copied, distributed, and published, caused to have published, or
induced the publication of the Aerial View 1 Photo on the website." Id.
Finally, Count 12 alleges Littleproud and Hague infringed plaintiff's copyright by
distributing books with the Leo Lyons photograph without his permission and intentionally
misrepresenting Landy as author of the photograph. Id. ¶¶ 142–143. The complaint alleges
"Defendants copied, distributed, and published, caused to have published, or induced the
publication of, the Leo Lyons Photo as part of a book titled 'Woodstock: Peace, Music and
Memories.'" Id. ¶ 142.
These causes of action are not specifically titled as claims of direct infringement by
defendants. Instead, they bear the headings "Copyright Infringement." Counts 2, 7, and 12
identify non-parties responsible for displaying the photographs and distributing books
containing Levine's copyrighted works, and assert defendants "copied, distributed, and
published, caused to have published, or induced the publication of" these works. Plaintiff

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adequately alleges contributory copyright infringement and defendants' motion to dismiss
Counts 2, 7, and 12 will be denied.
F. Preemption of Remaining Claims (Counts 18, 19, 20, and 21)
Finally, defendants argue Levine's remaining (non-copyright infringement) claims are
not cognizable as a matter of law because they are preempted by the Copyright Act.
"The Copyright Act preempts state law causes of action that are 'equivalent to any of
the exclusive rights within the general scope of copyright.'" eScholar, LLC v. Otis Educ. Sys.,
Inc., 387 F. Supp. 2d 329, 332 (S.D.N.Y. 2005) (quoting 17 U.S.C. § 301(a)). Section 301
"sets forth a two-part test to determine whether a state-law claim is preempted by the
Copyright Act, with a further 'extra elements' exception." Barclays Capital Inc. v.
Theflyonthewall.com, Inc., 650 F.3d 876, 892 (2d Cir. 2011). A claim is preempted: "(i) if it
seeks to vindicate 'legal or equitable rights that are equivalent' to one of the bundle of
exclusive rights already protected by copyright law" under § 106—the "'general scope
requirement'"; and "(ii) if the work in question is of the type of works protected by the
Copyright Act" under §§ 102 and 103—the "'subject matter requirement.'" Id. (quoting Nat'l
Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir. 1997)).
With regard to the extra elements exception, the Second Circuit observed in National
Basketball Association that "certain forms of commercial misappropriation otherwise within
the general scope requirement will survive preemption if an 'extra-element' test is met." Nat'l
Basketball Ass'n,105 F.3d at 850. Under this test, "if an extra element is required instead of
or in addition to the acts of reproduction, performance, distribution or display, in order to
constitute a state-created cause of action, then the right does not lie within the general scope
of copyright, and there is no preemption." Id. (internal quotations omitted).
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i. Unjust Enrichment (Count 18)
Defendants assert plaintiff's unjust enrichment cause of action is preempted because
it flows directly from his copyright infringement claims. Plaintiff responds that this claim is
qualitatively different than a copyright claim because it relates to his right to receive proceeds
generated from the use of his photographs.
"'Courts have generally concluded that the theory of unjust enrichment protects rights
that are essentially 'equivalent' to rights protected by the Copyright Act; thus, unjust
enrichment claims relating to the use of copyrighted material are generally preempted.'"
Weber v. Geffen Records, Inc., 63 F. Supp. 2d 458, 462 (S.D.N.Y. 1999) (quoting Netzer v.
Continuity Graphic Assocs., Inc., 963 F. Supp. 1308, 1322 (S.D.N.Y. 1997)). In Netzer, "the
gravamen of the unjust enrichment claim [was] unauthorized exploitation of Ms. Mystic [a
comic book character] without providing an accounting." Netzer, 963 F. Supp. at 1322.
Likewise, in Weber, the plaintiff musician was co-owner of copyrighted songs and argued the
defendants' (his former bandmates') copyrights should not entitle them to all the rights that
attach to copyright ownership because they were co-owners. Weber, 63 F. Supp. 2d at 463.
The Weber Court found "[i]t is only through this basic claim that any enrichment is unjust,
that any competition is unfair, or that anyone profiting must account to plaintiff." Id.
As explained above, there are two operative groups of photographs in the complaint:
Group A photographs, alleged to have been infringed and Group B photographs, not alleged
to have been infringed. Separate analyses must be conducted for each group.
With respect to the Group A photographs, given the two-prong test, it is clear plaintiff's
unjust enrichment claim is preempted by the Copyright Act. This claim is analogous to the
Netzer and Weber claims. First, this claim seeks to vindicate plaintiff's rights to distribute,
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publish, and/or reproduce the photographs—rights clearly protected by § 106. Thus the
"general scope requirement" is met. Second, this cause of action applies to plaintiff's
Woodstock photographs—pictorial works protected under § 102, meeting the "subject matter
requirement."
Turning to the extra elements test, "[t]he basic elements of an unjust enrichment claim
in New York require proof that (1) defendant was enriched, (2) at plaintiff's expense, and
(3) equity and good conscience militate against permitting defendant to retain what plaintiff is
seeking to recover." Briarpatch Ltd. v. Phoenix Pictures, Inc., 373 F.3d 296, 306 (2d Cir.
2004). Levine alleges the second and third elements in that "Defendants distributed
numerous of Plaintiff's Woodstock Photographs to Redferns Music Picture Library . . . and
potentially to other publishers . . . without notice or reporting of the same to Plaintiff Levine"
and that "Defendants received remuneration for distribution and publication of Plaintiff’s
Woodstock Photographs, the proceeds of which were not properly reported or remitted to
Plaintiff Levine." Compl., ¶¶ 189–190. These acts, by themselves, would infringe plaintiff's
publication and distribution rights protected by § 106. See Briarpatch, 373 F.3d at 306.
Similar to the plaintiff in Briarpatch, Levine alleges defendants here were enriched by
these acts. In Briarpatch, the Second Circuit held that the enrichment element does not go
"far enough to make the unjust enrichment claim qualitatively different from a copyright
infringement claim." Id. Therefore, plaintiff's unjust enrichment claim with respect to the
Group A photographs (those identified in Counts 1–17) is preempted by the Copyright Act
and will be dismissed.
With respect to the Group B photographs, the outcome is different. Levine contends
he authorized defendants to distribute, publish, and/or reproduce the Group B photographs.
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Therefore, this claim does not seek to vindicate his rights to distribute, publish, and/or
reproduce the photographs. Instead, he takes issue with defendants' failure to remit
payment to him. This is distinguishable from Netzer and Weber where the use was
unauthorized; here there was no unauthorized use of the Group B photographs.
The right which plaintiff seeks to vindicate with respect to the Group B photographs is
his right to payment for their use. Whether termed a right to "payment," "royalties,"
"compensation," "proceeds," or "remuneration," plaintiff is not attempting to vindicate rights
protected by the Copyright Act with regard to these photographs. Because this right is not
one of the bundle of rights protected under § 106, the "general scope requirement" is not
met. Therefore, plaintiff's unjust enrichment claim with respect to the Group B photographs
(those photographs identified in the complaint other than those listed in Counts 1–17) is not
preempted by the Copyright Act and may proceed.
ii. Conversion (Count 19)
The acts of conversion in this cause of action are predicated on Landy's wrongful
possession of the slides, not on the alleged wrongful copying. Defendants concede Levine's
claim relating to the retention of his hard-copy original slides which have not been returned
may proceed. Accordingly, defendants' motion to dismiss Count 19 will be denied.
iii. Unfair Competition (Count 20)
Levine brings unfair competition claims under the Lanham Act, New York common
law, and New York General Business Law section 349. Count 20 alleges when distributing,
publishing, and/or reproducing plaintiff's Woodstock photographs, Landy falsely represented
the photographs as his own. Levine contends the misattribution misled the public as to the
photographs' true authorship.
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The heart of these claims is the allegation of "reverse passing off," the principle that
defendants have "passed off" the Woodstock photographs as their own. See Gary Friedrich
Enters. v. Marvel Enters., 713 F. Supp. 2d 215, 231 (S.D.N.Y. 2010) (citing Dastar Corp. v.
20th Century Fox Film Corp., 539 U.S. 23, 28 n.1, 123 S. Ct. 2041, 2045 (2003)).
a. Lanham Act
Defendants argue the Lanham Act conflicts with the Copyright Act. The Lanham Act
provides in relevant part:
(a)(1) Any person who, on or in connection with any goods or
services . . . uses in commerce . . . any false designation of origin
. . . which(A) is likely to cause confusion . . . as to the origin . . . of his or her
goods . . .
....
shall be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act.

15 U.S.C. § 1125. A false representation to the origin of a work, or a reference which is
misleading or likely to confuse, may form the basis of a claim under subsection (A). See
Waldman Publ'g Corp. v. Landoll, Inc., 43 F.3d 775, 780 (2d Cir. 1994). "Actions arising
under subsection (A), commonly known as reverse passing off claims, proscribe
misrepresentations about who manufactured the product in question." Gary Friedrich
Enters., 713 F. Supp. 2d at 234.
A reverse passing off claim requires the following allegations:
(1) that the [product] at issue originated with the plaintiff; (2) that
[the] origin of the [product] was falsely designated by the
defendant; (3) that the false designation of origin was likely to

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cause consumer confusion; and (4) that the plaintiff was harmed
by the defendant's false designation of origin.
Societe Des Hotels Meridien v. LaSalle Hotel Operating P'ship, 380 F.3d 126, 131 (2d Cir.
2004) (quoting Softel, Inc. v. Dragon Med. & Scientific Commc'ns, 118 F.3d 955, 970 (2d Cir.
1997)). Reverse passing off claims usually involve a manufactured product rather than a
written work, Waldman Publishing Corp., 43 F.3d at 780, and it is clear subsection (A) "does
not . . . cover misrepresentations about the author of an idea, concept, or communication
embodied in those goods." Gary Friedrich Enters., 713 F. Supp. 2d at 234.
In Gary Friedrich Enterprises, the individual plaintiff created the idea for a "Ghost
Rider" comic book character. He later wrote a Ghost Rider comic which was published by
the predecessor to the defendant, Marvel Enterprises. Although he was the author and
creator of the Ghost Rider comic, Marvel Enterprises retained the copyright by agreement.
Decades later, after which the plaintiff claimed the copyright expired and reverted back to
him, Marvel Enterprises licensed its Ghost Rider rights to several entities with the aim of
producing a major feature film and related merchandise. The film and related merchandise
credited Marvel Enterprises as the author of the Ghost Rider characters and story. The
plaintiff initiated a lawsuit alleging unlawful use of his characters and story. The lawsuit
included claims for, inter alia, copyright infringement and unfair competition under the
Lanham Act and the common law.
The defendants in that case moved to dismiss the state law and Lanham Act claims
on the grounds they were preempted by the Copyright Act. The unfair competition claims
alleged "the defendants have caused 'confusion or misunderstanding' regarding the true
ownership of the Ghost Rider characters and story, misleading the consumer public." Gary

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Friedrich Enters., 713 F. Supp. 2d at 231. The court noted "[t]he crux of these claims is the
allegation of 'reverse passing off,' the notion that defendants have 'passed off' the Ghost
Rider ideas as their own." Id.
With respect to the Lanham Act claim, the plaintiffs asserted the defendants' use of
the "Marvel" designation on the Ghost Rider products misled the public as to the origin of the
Ghost Rider character. Id. at 233–34. The court noted actions under subsection (A) of the
Lanham Act "proscribe misrepresentations about who manufactured the product in question."
Id. at 234. On the facts before the court, it concluded subsection (A) "does not, however,
cover misrepresentations about the author of an idea, concept, or communication embodied
in those goods. Here, the plaintiffs' potential claim under subsection (A) is asserting
precisely the misrepresentation of ideas embodied in the Ghost Rider products." Id. In other
words, that section does not protect the misrepresentation of the origin of the Ghost Rider
character. Plaintiff Levine's Lanham Act claim is distinguishable from Gary Friedrich
Enterprises. Here, Levine alleges defendants misrepresented the origin of the photographs
themselves; not the ideas, concepts, or communications embodied in the photographs.
It is on this distinction that Waldman Publishing Corp. is instructive. Waldman Publ'g
Corp., 43 F.3d 775. In Waldman Publishing Corp., the parties were both publishers of
children's books. The plaintiffs contracted with writers to adapt the texts of classic children's
literary works and with artists to create illustrations.5 The plaintiffs alleged the defendants
published books substantially similar to their books without designating the plaintiffs as the

5
The books were adaptions of literary works in the public dom ain and abbreviated versions of the
classics. The stories were written in sim plified language and had illustrations to m ake them m ore appealing
to young children. The plaintiffs credited the writers and artists in the front of each book. Each book also
contained a copyright notice on behalf of the plaintiffs for the cover and the text.

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source of the books. The defendants' books were not exact copies, but the arrangement of
the chapters, the texts, and the illustrations closely followed the plaintiffs' books. It was
undisputed the defendants published the books at their facility.6
In analyzing whether the plaintiffs in Waldman Publishing Corp. sufficiently
demonstrated a false designation of origin, the court acknowledged that "[r]everse passing
off as applied to a written work involves somewhat different concepts" than the typical
manufactured product. Id. at 780. The court explained that with written works, "the Lanham
Act may be used to prevent the misappropriation of credit properly belonging to the original
creator of the work." Id. at 780–81 (internal quotations omitted). Thus, the Lanham Act
prohibits "the reproduction of a work with a false representation as to its creator." Id. at 781.
The court explained "[t]he misappropriation is of the artistic talent required to create the work,
not of the manufacturing talent required for publication." Id. Finally, the Waldman Publishing
Corp. Court noted the distinction between the federal statutes at issue:
[T]he Copyright Act and the Lanham Act address different harms.
Through a copyright infringement action, a copyright owner may
control who publishes, sells or otherwise uses a work. Through a
Lanham Act action, an author may ensure that his or her name is
associated with a work when the work is used.
Id.
Levine asserts defendants inaccurately represented some of the photographs as
taken by Landy. This is sufficient to allege false designation of origin, in that plaintiff alleges
false representation as to the creator of the works. Levine also alleges the public has been
mislead as to the true origin of the photographs and that he has been, and will continue to

6

Each of the books displayed their logo and included a copyright notice on their behalf. A writer by
whom the story was "retold" to and an illustrator were credited in each book.
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be, damaged by the false designation. Accordingly, plaintiff adequately pleads a Lanham Act
claim which is not preempted by the Copyright Act based on these allegations. Because this
analysis is heavily fact dependent, defendants' motion to dismiss based on preemption will
be denied.
b. Common Law
Defendants argue Levine's New York common law claim for unfair competition is also
preempted by the Copyright Act.
"Common law unfair competition is 'a broad and flexible doctrine . . . [that] is
adaptable and capacious.'" Barbagallo v. Marcum LLP, --- F. Supp. 2d ----, No.
11–CV–1358, 2011 WL 5068086, at *11 (E.D.N.Y. Oct. 25, 2011) (quoting Roy Export Co.
Establishment v. Columbia Broad. Sys. Inc., 672 F.2d 1095, 1105 (2d Cir. 1982)). A
common law unfair competition action is generally limited to three categories: "passing off
one's goods as those of another, engaging in activities solely to destroy a rival, and using
methods themselves independently illegal." Id. (quoting Coca-Cola N. Am. v. Crawley Juice,
Inc., No. 9–CV–3259, 2011 WL 1882845, at *7 (E.D.N.Y. May 17, 2011)). Levine's
allegations fall under the misappropriation category of passing off one's goods as those of
another.
To establish an unfair competition claim of misappropriation, a plaintiff must prove his
or her "skills, expenditure, or good will" were "misappropriated" by the defendant and the
defendant "displayed some element of bad faith in doing so." Quadrille Wallpapers & Fabric,
Inc. v. Pucci, No. 1:10–CV–1394, 2011 WL 3794238, at *5 (N.D.N.Y. Aug. 24, 2011) (Kahn,
J.) (quoting Abe's Rooms, Inc. v. Space Hunters, Inc., 38 A.D.3d 690, 692 (N.Y. App. Div. 2d
Dep't 2007)). In applying the extra element test, the Second Circuit has held that New York
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unfair competition claims based solely on the copying of protected expression are preempted
by § 301 of Copyright Act. See Cabell v. Sony Pictures Entm't, Inc., 425 Fed. App'x 42, 43
(2d Cir. 2011) (summary order) (citing Kregos v. Associated Press, 3 F.3d 656, 666 (2d Cir.
1993)). However, "unfair competition claims based upon breaches of confidential
relationships, breaches of fiduciary duties and trade secrets have been held to satisfy the
extra-element test and avoid § 301 preclusion." Kregos, 3 F.3d at 666.
Here, plaintiff's unfair competition claim is based on defendants' reproduction of
plaintiff's photographs and their misrepresentation of the works' authorship. It is essentially a
copyright infringement claim with the added allegation that after unlawfully copying,
distributing, and/or publishing the photographs, defendants stamped their own name or
copyright on the works, rather than plaintiff's. The distinction between copying and failing to
credit an author versus copying and misrepresenting the authorship was essential in
determining whether Levine alleged a "false designation of origin" as required by the Lanham
Act. That distinction does not save plaintiff's common law unfair competition claim. Levine's
claim that defendants misrepresented the authorship is not based upon a breach of
confidential relationship, breach of fiduciary duty, or a trade secret. Accordingly, plaintiff's
common law unfair competition claim is preempted based on these facts and will be
dismissed.
c. New York State General Business Law
Finally, with regard to the claim under section 349 of the New York General Business
Law, defendants contend the complaint fails to allege actual harm to the public at large, as
required by the New York statute.

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Section 349 of the New York General Business Law is a consumer protection statute.
See Stadt v. Fox News Network LLC, 719 F. Supp. 2d 312, 319 (S.D.N.Y. 2010). It provides
that "[d]eceptive acts or practices in the conduct of any business, trade or commerce or in
the furnishing of any service in this state are . . . unlawful." N.Y. Gen. Bus. Law § 349(a). It
creates a private right of action for consumers harmed by violation of the statute. Id.
§ 349(h). To assert a claim under section 349, a plaintiff must allege "(1) the defendant's
deceptive acts were directed at consumers, (2) the acts are misleading in a material way,
and (3) the plaintiff has been injured as a result." Stadt, 719 F. Supp. 2d at 319 (quoting
Maurizio v. Goldsmith, 230 F.3d 518, 521 (2d Cir. 2000)) (emphasis added). "[T]he
gravamen of the complaint must be consumer injury or harm to the public interest."
Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995).
Levine fails to allege the necessary elements to state a claim under this section. The
complaint generally alleges harm to the public but does not allege defendants' actions
harmed the public in a material way. Levine's sole allegation of consumer harm is that
"Defendants have and continue to intentionally misrepresent and misappropriate authorship
of numerous" of plaintiff's photographs, "thereby deceiving and misleading the public as to
the true origin and authorship of said photographs." Compl. ¶ 201. Like in Stadt, the
complaint here "lack[s] any allegations as to how consumers were harmed" by Landy's
deceitful and misleading behavior. Stadt, 719 F. Supp. 2d at 324. Further, "allegations of
consumer confusion are generally not sufficient consumer harm to state a section 349 claim."
Id. For these reasons, Levine has not stated a claim pursuant to section 349 of the New
York General Business Law and this claim will be dismissed.

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iv. Accounting (Count 21)
Defendants take issue with this claim because it is not a cause of action, but instead a
remedy. Regardless, they contend an accounting is preempted when alleged in connection
with copyright infringement claims. Levine points out the claim is premised on the agency
relationship between the parties (terminated in 2008), and not on the alleged infringement.
"To make out a claim for an accounting under New York law, a plaintiff must allege
(a) that a fiduciary relationship existed between the parties, and (b) that the defendant
breached his or her fiduciary duty." Soley v. Wasserman, --- F. Supp. 2d ----, No. 08 Civ.
9262, 2011 WL 4526145, at *33 (S.D.N.Y. Sept. 29, 2011). "[A]ccounting claims based
primarily on copyright infringement do not satisfy the 'extra element' test and are preempted."
Gary Friedrich Enters., 713 F. Supp. 2d at 233.
The distinction between Group A and Group B photographs is again important. Like in
Weber v. Geffen Records, Inc., it is only through plaintiff's claim that he did not authorize
defendants' distribution, publication, and/or reproduction of the Group A photographs that
anyone profiting must account to plaintiff. See Weber, 63 F. Supp. 2d at 463. Because the
accounting claim with respect to the Group A photographs is "based primarily on copyright
infringement," it does not satisfy the extra element test and is preempted. See Gary
Friedrich Enters., 713 F. Supp. 2d at 233.
The accounting claim with respect to the Group B photographs is not "based primarily
on copyright infringement." See id. The complaint alleges the parties had an agency
relationship and Landy was obligated to "report, account, and remit royalty payments" to
plaintiff and "[i]n entering into this agreement, Plaintiff trusted Defendant Landy to be fair,
honest, and truthful in their business dealings." Compl., ¶ 12. Levine also alleges Landy
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breached his duties when he failed to report, account, and remit royalty payments to plaintiff.
See, e.g., id. ¶¶ 35, 189, 190, 209. Further, defendants have exclusive possession of the
books and records reflecting the "copying, use, publication, distribution, and exploitation" by
defendants of Levine's photographs. Id. ¶¶ 208–209. Whether styled as a cause of action or
a requested remedy, plaintiff's request for an accounting with respect to the Group B
photographs is not preempted because it is based on the parties' business relationship.
IV. CONCLUSION
The complaint alleges defendants engaged in conduct in the United States relating to
the Fetjaine book, which if true, would be in violation of the Copyright Act. Further, Levine
possesses registered copyrights for all of the works identified in the copyright infringement
causes of action. Moreover, based on plaintiff's alleged dates, he is limited to seeking
statutory damages and attorneys' fees for only those works registered prior to infringement.
Finally, the complaint contains sufficient allegations giving rise to claims of contributory
copyright infringement and the claims involving third parties will not be dismissed.
Turning to the remaining non-infringement causes of action, plaintiff's unjust
enrichment claim is preempted as to the Group A photographs but not the Group B
photographs. Additionally, defendants' motion to dismiss the conversion and Lanham Act
claims will be denied. However, the common law unfair competition and New York General
Business Law section 349 claims are preempted and will be dismissed. Finally, plaintiff's
demand for an accounting will be dismissed as to the Group A photographs but may remain
as to the Group B photographs.
Therefore, it is
ORDERED that
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1. Defendants Elliot Landy and Landyvision, Inc.'s motion to dismiss is DENIED in
part and GRANTED in part;
2. The requests for statutory damages and attorneys' fees as to Counts 2, 7, 9, 11,
12, and 16 are DISMISSED;
3. The unjust enrichment claim (Count 18) as it relates to Group A photographs is
DISMISSED;
4. The New York State common law unfair competition claim (Count 20) is
DISMISSED;
5. The New York State General Business Law section 349 unfair competition claim
(Count 20) is DISMISSED;
6. The request for an accounting (Count 21) as it relates to Group A photographs is
DISMISSED; and
7. Defendants shall file an answer to the remaining causes of action on or before
January 20, 2012.
IT IS SO ORDERED.

The following causes of action remain and must be answered:
(a) Counts 1-17, Copyright Infringement;
(b) Count 18, Unjust Enrichment with respect to Group B photographs;
(c) Count 19, Conversion;

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(d) Count 20, Lanham Act; and
(e) Count 21, Accounting with respect to Group B photographs.

Dated: December 30, 2011
Utica, New York.

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