Swanigan v. Young et al
Filing
34
DECISION & ORDER: that the Defendants' motions to dismiss, dkt. #s 24, 26, 31 are hereby Granted with prejudice. Signed by Senior Judge Thomas J. McAvoy on 11/30/2016. (Copy served via regular and certified mail to Pro Se parties and therefore, pursuant to Fed.R.Civ.P. 6(d), an additional 3 (three) days for service may be allowed)(hmr)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________________
EARL SWANIGAN,
Plaintiff,
v.
1:15-CV-1272
KENNETH YOUNG, and
FULFILLMENT CENTER,
Defendants.
_________________________________________
THOMAS J. McAVOY,
Senior United States District Judge
DECISION & ORDER
Before the Court are Defendants’ motions to dismiss the Amended Complaint.
See dkt. #s 24, 26, 31. The parties have briefed the issues and the Court has
determined to decide the matter without oral argument. For the reasons stated below,
Defendants’ motions will be granted.
I.
BACKGROUND1
This case concerns the Defendants’ alleged unauthorized use of the Plaintiff’s
artwork. On October 26, 2015, Plaintiff, proceeding pro se, commenced an action for
copyright infringement under the Copyright Act, 17 U.S.C. § 501. See Amended
Complaint (“Amend. Compl.”) dkt. # 23. Plaintiff’s Complaint alleges that he is an artist
1
For the purposes of this motion, the factual allegations in the Complaint are
assumed to be true. See Holmes v. Grubman, 568 F.3d 329, 335 (2d Cir. 2009).
1
from the Hudson Valley. See id. at attachment (“attach.”) # 6. 2 Plaintiff contends that
Defendant Kenneth Young violated 17 U.S.C. § 501(b) by producing artwork containing
images created by the Plaintiff without permission. He further alleges that Defendant
Fulfillment Center contracted with Young to “mass produce” Plaintiff’s images on
iPhone cases, greeting cards, and portraits. The image in question, which is included
as an exhibit to Plaintiff’s Original Complaint, appears to depict Plaintiff on the street,
transporting two of his paintings on a hand cart. The Plaintiff’s artwork is visible as part
of the larger image. In the Amended Complaint, Plaintiff reasserts the allegations in the
Original Complaint and adds four allegations. See dkt. # 23. First, Plaintiff alleges that
the copyrighted image is entitled “A Pig Catching a Ride with Earl” with reference
number 1-3184022439. Id. Second, Plaintif f personally witnessed Defendant Young
taking his picture and requested that Young not use his photo in any capacity. Id.
Third, Young disregarded Plaintiff’s request and advertised and sold the photo on his
website. Id. Finally, Defendant Young offered Plaintiff $8.50, the net revenue from the
photo sales. See id. at p. 2. Plaintiff alleges that Defendants violated his rights with
their unauthorized use of his images and demands $150,000 in damages.
After being served with the Amended Complaint, Defendants filed separate
motions to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6). See dkt. #s
24, 26, 31. Plaintiff responded to those motions. See dkt. # 30. Defendant Fulfillment
Center submitted a reply, bringing the case to its present posture.
II.
LEGAL STANDARD
2
The complaint is not paragraphed. It consists of a two-page single paragraph
with 14 attachments.
2
Defendants have filed motions to dismiss Plaintiff’s claims pursuant to Federal
Rule of Civil Procedure 12(b)(6). Defendants argue that Plaintiff has not stated a claim
upon which relief could be granted, even if all factual allegations in the complaint were
proved true See dkt. # 24, 26, 31. On a Rule 12(b)(6) m otion, the Court must accept
“all factual allegations in the complaint as true, and draw[] all reasonable inferences in
the plaintiff's favor.” Holmes v. Grubman, 568 F.3d 329, 335 (2d Cir. 2009) (internal
quotation marks omitted). This tenet does not apply to legal conclusions, non-factual
matter, or “conclusory statements” set forth in a complaint. Ashcroft v. Iqbal, 556 U.S.
662, 678-79 (2009).
To survive a motion to dismiss, “a complaint must contain sufficient factual
matter, accepted as true, to state a claim to relief that is plausible on its face.” Id.
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim will have “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.” Id. When,
as here, the Plaintiff proceeds pro se, the Court will construe [the complaint] broadly,
and interpret [it] to raise the strongest arguments that [it] suggests.’” Weixel v. Bd. of
Educ. of N.Y., 287 F.3d 138, 146 (2d Cir. 2002) (quoting Cruz v. Gomez, 202 F.3d 593,
597 (2d Cir. 2000)).
When considering a motion to dismiss for failure to state a claim pursuant to
Rule 12(b)(6), a district court “may consider the facts alleged in the complaint,
documents attached to the complaint as exhibits, and documents incorporated by
reference in the complaint.” DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir.
2010). The Court may also review “documents that the plaintiffs either possessed or
3
knew about and upon which they relied in bringing the suit.” Rothman v. Gregor, 220
F.3d 81, 88 (2d Cir. 2000); see Jenkins v. Cty. of Washington, 126 F. Supp. 3d 255,
274 (N.D.N.Y. 2015);3 Chambers v. Time Warner, 282 F.3d 147, 153, n.3 (2d Cir.
2002)(“[T]he court may [also] . . . consider . . . any documents relied on and/or
referenced in the complaint (even if those documents are not attached to the complaint,
if those documents are provided by defendants in their motion to dismiss)[.]”).
III.
ANALYSIS
Defendants seek to dismiss Plaintiff’s copyright infringement claim. To prevail on
a copyright infringement claim under 17 U.S.C. § 501, a plaintiff must demonstrate both
ownership of a valid copyright and infringement. See Yurman Design, Inc. v. PAJ, Inc.,
262 F.3d 101, 108-09 (2d Cir. 2001). To demonstrate ownership, the plaintiff must
have a valid copyright. Scholz Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182,
186 (2d Cir. 2012). “A certificate of copyright registration is prima facie evidence of
ownership of a valid copyright[.]” Id. To establish infringement, Plaintiff must satisfy
two elements: (1) the Defendant has actually copied the Plaintiff's work; and (2) the
copying is illegal because a substantial similarity exists between the defendant’s work
and the protectible elements of plaintiff's.” Peter F. Gaito Architecture, LLC v. Simone
Development Corp., 602 F.3d 57, 63 (2d Cir. 2010).
3
“The following matters outside the four corners of the complaint may be
considered without triggering the standard governing a motion for summary judgment:
(1) documents attached as an exhibit to the complaint or answer, (2) documents
incorporated by reference in the complaint (and provided by the parties), (3) documents
that, although not incorporated by reference, are ‘integral’ to the complaint, or (4) any
matter of which the court can take judicial notice for the factual background of the
case.”
4
Actual copying may be proved directly or indirectly. Direct evidence of copying
includes proof that (1) an alleged infringer had a “reasonable possibility of access” to
the original work and (2) that probative similarities exist between the works. Jorgensen
v. Epic/Sony Records, 351 F.3d 46, 54 (2d Cir. 2003). Indirect evidence of copying
includes proof that (1) defendants had access to the copyrighted work, and (2) that
probative similarities exist between the works. See Hamil Am., Inc. v. GFI, 193 F.3d 92,
99 (2d Cir. 1999). A finding of “probative similarity” may exist in protected or
unprotected elements. See Nimmer on Copyright § 13.01[B].
In determining whether the Defendant’s work is substantially similar to Plaintiff’s
expression, courts apply the “ordinary observer test.” Knitwaves, Inc. v. Lollytogs Ltd.
(Inc.), 71 F.3d 996, 1002 (2d Cir. 1995). That test asks whether “an average lay
observer would recognize the alleged copy as having been appropriated from the
copyrighted work.” Id. Analyzing works with both protectible and unprotectible
elements calls for a “more discerning” analysis. Fisher-Price, Inc. v. Well-Made Toy
Mfg. Corp., 25 F.3d 119, 123 (2d Cir. 1994). Courts “must attempt to extract the
unprotectible elements from [its] consideration and ask whether the protectible
elements, standing alone, are substantially similar.” Knitwaves, 71 F.3d at 1002
(emphasis in original). Thus, when faced with works containing both protectible and
unprotectible elements, courts must “examine the works’ ‘total concept and feel.’”
Knitwaves, 71 F.3d at 1003 (citing Feist Publications, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 362 (1991)). In an infringement analysis, examining a works’ total concept
and feel “must begin by dissecting the copyrighted work into its component parts in
order to clarify precisely what is not original,” while understanding that the “infringement
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analysis is not simply a matter of ascertaining similarity between components viewed in
isolation.” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d
127, 134 (2d Cir. 2003). Courts must “analyze the two works closely to figure out in
what respects, if any, they are similar, and then determine whether these similarities are
due to protected aesthetic expressions original to the allegedly infringed work, or
whether the similarity is to something in the original that is free for the taking.” Id. at
134-35.
When a court considers a Rule 12(b)(6) motion to dismiss in a copyright
infringement action, “the works themselves supersede and control contrary descriptions
of them.” Walker v. Time Life Films, Inc., 784 F.2d 44, 52 (2d Cir. 1986)). In
considering whether the works are substantially similar, “no discovery or fact-finding is
typically necessary, because ‘what is required is only a visual comparison of the
works.’” Peter F. Gaito Architecture, 602 F.3d at 64 (citing Folio Impressions, Inc. v.
Byer Cal., 937 F.2d 759, 766 (2d Cir. 1991)).
[I]t is entirely appropriate for the district court to consider the similarity
between [the subject] works in connection with a motion to dismiss,
because the court has before it all that is necessary in order to make such
an evaluation. If, in making that evaluation, the district court determines
that the two works are not substantially similar as a matter of law, the
district court can properly conclude that the plaintiff's complaint, together
with the works incorporated therein, do not plausibly give rise to an
entitlement to relief.
Id.
The Court reads Plaintiff’s Complaint to allege that Defendants violated his
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copyright in the artwork contained in Defendant Young’s image. Defendants4 argue that
the Complaint should be dismissed because Plaintiff has failed to state the basic
prerequisites of a copyright claim.5 See dkt. # 24. Plaintiff failed to properly allege that
a copyright has been registered in accordance with the statute. Id. at 3. Plaintiff’s
response confirms that he seeks damages for copyright infringement. See dkt. # 23 at
2.
Federal law permits a copyright owner to initiate an infringement action against a
person who violates his rights in the copyrighted performance. See 17 U.S.C. § 501(b).
Generally, to demonstrate copyright infringement, Plaintiff “must allege (1) which
specific original works are subject of the copyright claim, (2) that the plaintiff owns the
copyrights in those works, (3) that the copyrights have been registered in accordance
with the statute, and (4) by what acts during what time the defendant infringed the
copyright.” Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D. N.Y. 1992). The complaint “is
4
Defendant Young proceeds pro se. The Court reads his argument to track
Fulfillment Center’s more-developed argument regarding a copyright claim and will
evaluate them together. The Court notes that Defendant Young’s papers also appear
to contain an offer to settle this matter. The Court cannot order settlement. Should
Defendant Young prefer to attempt to dispose of this matter with a settlement, he
should deal directly with the Plaintiff. If the parties reach a settlement, they should
report that fact to the Court.
5
Defendant Fulfillment Center argues that the Complaint should be dismissed
pursuant to Federal Rule of Civil Procedure 8(a)(2) and 12(b)(6). That argument is
somewhat misplaced. Rule 8(a)(2) provides the standard by which a Complaint should
be drafted, requiring that “[a] pleading that states a claim for relief must contain: . . . (2)
a short and plain statement of the claim showing that the pleader is entitled to relief[.]”
FED. R. CIV. P. 8(a)(2). Federal Rule of Civil Procedure 12(b)(6) establishes the means
by which a claim that fails to meet this standard can be dismissed, providing that a party
may move to dismiss a pleading for “failure to state a claim upon which relief can be
granted.” FED. R. CIV. P. 12(b)(6). The Court will use the legal standards developed
under Rule 12(b)(6) to evaluate the motions in this case.
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deemed to include any written instrument attached to it as an exhibit or any statements
or documents incorporated in it by reference.” Cortec Indus., Inc. v. Sum Holding L.P.,
949 F.2d 42, 47 (2d Cir. 1991). Courts are permitted to take judicial notice of public
records that are integral to a party’s claims or contradict the party’s factual assertions,
even if the corresponding documents are not attached to or incorporated by reference
in the complaint. See Roth v. Jennings, 489 F.3d 499, 509 (2d Cir. 2007).
Here, Plaintiff provided two grounds to support his copyright infringement claim.
First, an exhibit, which showed direct evidence of artwork that is probatively similar to
the alleged copyrighted work titled, “A Pig Catching a Ride with Earl.” Second, an
application reference number from the Copyright Office, numbered 1-3184022439. The
complaint included no information as to the date the copyrighted artwork was registered
or a certificate of copyright registration. The Court takes judicial notice of copyright
number VA0002013032 of the United States Copyright Office Public Catalog. Plaintiff
is listed as the owner of the copyrighted work titled “A Pig Catching a Ride with Earl,”
with a registration date of March 1, 2016, and a publication date of February 15, 2014.
Providing Plaintiff’s Complaint with the generous reading accorded pro se
plaintiffs, the Court finds that Plaintiff has not alleged ownership of a valid copyright in
any of the images in question. First, copyright ownership vests initially in the author or
authors of the work. 17 U.S.C. § 201(a). As a general rule, “the author is the party who
actually creates the work, that is, the person who translates an idea into a fixed,
tangible expression entitled to copyright protection.” 16 Casa Duse, LLC v. Merkin, 791
F.3d 247, 258 (2d Cir. 2015) (quoting Cmty. for Creative Non-Violence v. Reid, 490
U.S. 730, 737 (1989)). Here, the Court finds “A Pig Catching a Ride with Earl,” the
8
artwork contained in Defendant Young’s image, to be copyrighted work owned by
Plaintiff. Id.
Although a work is protected by copyright the moment it is created, Plaintiff must
first register his copyrighted work before he can enforce that copyright in a court. 17
U.S.C. § 411(a); see Literary Works in Elec. Databases Copyright Litig. v. Thomson
Corp., 654 F.3d 242, 246 (2d Cir. 2011) (“[C]laims . . . cannot be litigated for damages
purposes unless they are registered with the Copyright office”). Here, the Court takes
judicial notice that the copyrighted work was registered after the instant action began
and approximately two years after it was first published. Plaintiff can only obtain
damages for infringement that took place either after registration or after publication if
the work was registered within three months after the first publication. 17 U.S.C. §
411(a); see 16 Casa Duse, LLC, 791 F.3d at 263. Plaintif f has provided no
documentation proving that the alleged copyright existed before he filed the instant
action or within three months after the first publication. Plaintiff could not have
conceivably copyrighted the image in question before the instant action or within three
months after the first publication. Without proof of a registered copyright that predates
this action, Plaintiff cannot prevail on his infringement claim. Therefore, the Court
grants the motion to dismiss with prejudice.
Plaintiff, an artist, could conceivably have a state-law claim. Since the copyright
infringement claim, over which the Court had original jurisdiction, has been dismissed,
the Court declines to exercise supplemental jurisdiction on any state-law claims. See
Jones v. Ford Motor Credit Co., 358 F.3d 205, 214 (2d Cir. 2004).
V.
CONCLUSION
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For the reasons stated above, the Defendants’ motions to dismiss, dkt. #s 24,
26, 31 are hereby GRANTED with prejudice.
IT IS SO ORDERED.
Dated: November 30, 2016
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