White et al v. West Publishing Corporation et al

Filing 28

MEMORANDUM OF LAW in Opposition re: 19 MOTION to Dismiss., 21 MOTION to Dismiss the Complaint.. Document filed by Edward L. White, P.C., Kenneth Elan, Edward L. White. (Blue, Gregory)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
EDWARD L. WHITE; EDWARD L. WHITE, P.C.;
and KENNETH ELAN, on behalf of themselves and
all others similarly situated,
12-CV-1340 (JSR)
ECF CASE

Plaintiffs,
- against WEST PUBLISHING CORPORATION d/b/a “West”;
and REED ELSEVIER INC., d/b/a LexisNexis,
Defendants.

PLAINTIFFS’ MEMORANDUM OF LAW
IN OPPOSITION TO DEFENDANTS’
MOTIONS TO DISMISS

Gregory A. Blue
GREGORY A. BLUE, P.C.
405 Lexington Avenue, Suite 2600
New York, New York 10174
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Raymond A. Bragar
BRAGAR WEXLER EAGEL & SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiffs

Table of Contents
Table of Authorities ........................................................................................................... iii

Preliminary Statement..........................................................................................................1

Factual Allegations ..............................................................................................................4

Legal Argument ...................................................................................................................5

I.

Standard on a motion to dismiss. ............................................................................ 5

II.

Elements of a copyright claim. ............................................................................... 6

III.

The Copyright Act permits the issuance of an injunction to prevent
future copying of unregistered works, including works that are not
yet in existence........................................................................................................ 8

A.

B.

IV.

Section 502 of the Copyright Act authorizes this Court to
issue an injunction barring the defendants from infringing
the Plaintiffs’ copyrights in unregistered works. .........................................8

Courts have long held that injunctive relief is available to
plaintiffs alleging an ongoing infringement of unregistered
works, and the threat of future infringement. ............................................10

This Court has the power to enter a declaratory judgment that the
Defendants have no right to copy or sell the Plaintiffs’ works............................. 14

A.

This Court has the power to issue a declaratory judgment in
any action in which there is an actual case or controversy
within the meaning of Article III of the Constitution. ...............................14

B.

This Court can render a declaratory judgment with respect
to unregistered works.................................................................................16

C.

A declaratory judgment would be useful to the parties and
the proposed class. .....................................................................................19

V.

The cases cited by the Defendants do not address the availability of
injunctive or declaratory relief with respect to unregistered works...................... 19

VI.

Request for leave to replead.................................................................................. 24

Conclusion .........................................................................................................................25

ii

Table of Authorities
Cases

Ashcroft v. Iqbal, 556 U.S. 662 (2009) .............................................................................. 5
Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ........................................................... 5, 7
Cable News Network, Inc. v. Video Monitoring Services of America,
Inc., 940 F.2d 1471 (11th Cir. 1991) .................................................................... 13, 14
Compound Stock Earnings Seminars, Inc. v. Dannenberg, No. 3:10-CV2201-D, 2012 U.S. Dist. LEXIS 1014 (Jan. 4, 2012) ................................................. 23
Continental Cas. Co. v. Coastal Sav. Bank, 977 F.2d 734 (2d Cir. 1992)........................ 19
Criterion 508 Solutions, Inc. v. Lockheed Martin Servs., 806 F. Supp. 2d
1078 (S.D. Iowa 2009)................................................................................................ 11
Davis v. Gap, Inc., 246 F.3d 152 (2nd Cir. 2001) ...................................................... 16, 18
Drum Major Music Entm’t Inc. v. Young Money Entm’t, LLC, No. 11 Civ.
1980 (LBS), 2012 U.S. Dist. LEXIS 17290 (S.D.N.Y. Feb. 7, 2012).......................... 21
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) ................................... 6, 7
Fonar Corp. v. Domenick, 105 F.3d 99 (2d Cir. 1997) ...................................................... 6
Frasier v. Gen. Elec. Co., 930 F.2d 1004 (2d Cir. 1991) ................................................... 5
Harris v. Mills, 572 F.3d 66 (2d Cir. 2009)........................................................................ 5
In re Literary Works in Elec. Databases Copyright Litig., 509 F.3d 116
(2d Cir. 2007).............................................................................................. 3, 11, 12, 13
In re Literary Works in Elec. Databases Copyright Litig., 654 F.3d 242
(2d Cir. 2011)................................................................................................................ 2
In re WalMart Stores, Inc., 505 F. Supp. 2d 609 (C.D. Cal. 2007) .................................. 24
Int’l Swaps & Derivatives Ass’n v. Socratek, 712 F. Supp. 2d 96 (S.D.N.Y.
2010) ............................................................................................................................. 6
Interscope Recordings v. Tabor, No. 08-03068, 2009 U.S. Dist. LEXIS
25854 (W.D. Ark. Mar. 16, 2009) .............................................................................. 11
Jewel Source, Inc. v. Primus Jewels, LLC, No. 11 Civ. 3941 (JSR), 2011
U.S. Dist. LEXIS 115830 (S.D.N.Y. Oct 3, 2011)................................................ 21, 22
Kamanou v. Exec. Sec’y of the Comm’n of the Economic Cmty. Of West
African States, No. 10 Civ. 7286 (GBD) (JLC), 2012 U.S. Dist. LEXIS
34495 (S.D.N.Y. Mar. 14, 2012) ................................................................................ 22
Kamanou v. Exec. Sec’y of the Comm’n of the Economic Cmty. Of West
African States, No. 10 Civ. 7286 (GBD) (JLC), 2012 U.S. Dist. LEXIS
7647 (S.D.N.Y. Jan. 19, 2012).................................................................................... 22

iii

Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011).................................................................... 7
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).............................................. 15
Mktg. Tech. Solutions, Inc. v. Medizine LLC, No. 09 Civ. 8122 (LMM),
2010 U.S. Dist. LEXIS 50027 (May 18, 2010) .......................................................... 23
Muench Photography, Inc. v. Houghton Mifflin Harcourt Publ., Co., No.
09 CV 2669 (LAP), 2010 U.S. Dist. LEXIS 107705 (S.D.N.Y. Sept. 27,
2010) ........................................................................................................................... 22
Nike, Inc. v. Already, LLC, 663 F.3d 89 (2d Cir. 2011).................................................... 15
Obodai v. YouTube LLC, No. 11 Civ. 4343 (DLC), 2011 U.S. Dist. LEXIS
150164 (S.D.N.Y Dec. 29, 2011)................................................................................ 21
Olan Mills Inc. v. Linn Photo Co., 23 F.3d 1345 (8th Cir. 1994)................... 10, 11, 12, 16
Psihoyos v. John Wiley & Sons, Inc., Case No. 11 Civ. 1416, 2011 U.S.
Dist. LEXIS 137847 (S.D.N.Y. Nov. 21, 2011) ....................................................... 6, 21
Psihoyos v. John Wiley & Sons, Inc., No. 11 Civ. 1416, 2011 U.S. Dist.
LEXIS 115835 (S.D.N.Y. Oct. 3, 2011)....................................................................... 20
Psihoyos v. John Wiley & Sons, Inc., No. 11 Civ. 1416, 2011 U.S. Dist.
LEXIS 120204 (S.D.N.Y. Oct. 13, 2011)..................................................................... 20
Real Estate Innovations, Inc. v. Houston Ass’n of Realtors, Inc., 422 Fed.
Appx 344, 348 (5th Cir. 2001).................................................................................... 23
Reed Elsevier v. Muchnick, 130 S. Ct. 1237 (2010) ................. 3, 6, 7, 8, 10, 11, 12, 15, 17
Sportsman’s Warehouse, Inc. v. Fair, 576 F. Supp. 2d 1175 (D. Colo.
2008) ........................................................................................................................... 18
Staggs v. West, Civ. No. PJM 08-0728, 2010 U.S. Dist. LEXIS 63174
(D. Md. June 25, 2010) ............................................................................................... 23
Tattoo Art, Inc. v. TAT Int’l, LLC, 794 F. Supp. 2d 634 (E.D. Va. 2011) .................. 11, 12
Telebrands Corp. v. Exceptional Prods., No. 11-CV-2252, 2011 U.S. Dist.
LEXIS 139308 (D.N.J. Dec. 5, 2011)........................................................................... 17
TreadmillDoctor.com, Inc. v. Johnson, No. 08-2877, 2011 U.S. Dist.
LEXIS 34652 (W.D. Tenn. Mar. 31, 2011) .................................................................. 24
Tufenkian Import/Export Ventures, 338 F.3d 127 (2d Cir. 2003) ...................................... 6

iv

Statutes

11 U.S.C. § 411........................................................................... 3, 7, 10, 12, 16, 17, 18, 21
11 U.S.C. § 412................................................................................................... 8, 9, 10, 16
11 U.S.C. § 502................................................................................... 3, 8, 9, 10, 11, 12, 24
28 U.S.C. § 2201......................................................................................................... 15, 18

Rules

Fed. R. Civ. Pro. 15 ...................................................................................................... 4, 24
Fed. R. Civ. Pro. 23(a) ........................................................................................................ 2

Treatises

12-57 James Wm. Moore, MOORE’S FEDERAL PRACTICE - CIVIL § 57.85
(Matthew Bender, 3d Ed)............................................................................................ 16
2-7 Melville B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT §
7.16[C][3] (Matthew Bender, Rev. Ed) ............................................................ 9, 14, 16
2-7 NIMMER § 7.16[B][3].................................................................................................. 18

v

Preliminary Statement
The Complaint in this action alleges that West Publishing Corporation (“West”)
and Reed Elsevier, Inc. (“Reed Elsevier” or “Lexis”) (collectively, “Defendants”) are
engaged in a massive, ongoing infringement of original works of authorship that are
protected under the Copyright Act. 17 U.S.C. § 101, et seq.
Defendants’ Motions to Dismiss Mr. Elan’s claims on the ground that he has not
registered his works should be denied because, on the facts of this case, a class
representative may seek injunctive and declaratory relief even without registration.
On a daily basis, West and Lexis are copying the valuable work of attorneys and
law firms at essentially no cost to themselves. Even though the works they copy are
protected by the Copyright Act from the moment of their creation, the Defendants offer
these works for sale, at infinite markup, without any compensation to those who created
the works. The Defendants’ systematic theft of intellectual property cries out for judicial
remedies tailored to this unusual, but not unique, situation.
It is for this reason that Mr. White (who has registered the works identified in the
Complaint) and Mr. Elan (who has not registered his works) have brought this action
against West and Lexis seeking not only damages, but also injunctive and declaratory
relief. These last two requests are essential, for without them the Defendants will
continue to ignore one of the most fundamental aspects of copyright law: that original
works of authorship are protected from infringement the moment they are written.
For the Defendants, these Motions to Dismiss are only the first step in their
attempt to winnow the class without actually winning on the question of whether they are
stealing works protected by the Copyright Act. They clearly are. The Defendants’
litigation strategy is as transparent as their business plan is cynical: they are trying to

1

bring this case to a halt by causing a pileup at the intersection of copyright law and class
action procedure.
Here is their plan: in their Motions to Dismiss, the Defendants argue that Mr. Elan
cannot bring this case under the Copyright Act unless he registers his works. If he
registers his works, though, the Defendants will argue that Mr. Elan is an inadequate
representative for class members who have not registered their works, and will oppose
class certification on that ground. Fed. Rule Civ. Pro. 23(a). By doing so, the
Defendants hope to leverage this procedural Catch 22—Mr. Elan must register to
represent the class, but if he registers the Defendants will argue that he cannot represent
the class—into a de facto substantive victory that knocks out the overwhelming majority
of potential class members, and enables the Defendants to continue their relentless, daily,
digital copying machine that wrings illegal profits from the copyright-protected works of
others.
To be clear, the Plaintiffs believe that Mr. White, who is the author of registered
as well as unregistered works, can be an effective and vigorous advocate for the rights of
the entire class, including those who have not registered their works. The legal issues
with respect to infringement, and potential defenses to the claim, are identical for Mr.
White and for all attorneys and firms whose works are being infringed, whether
registered or not. But because the remedies available to them for that infringement will
differ, the Defendants eventually will argue that any named plaintiff who has registered
his works cannot, consistent with Rule 23(a)(3), represent class members with respect to
unregistered works. See generally In re Literary Works in Elec. Databases Copyright
Litig., 654 F.3d 242 (2d Cir. 2011) (“In re Literary Works II”) (rejecting settlement that
was the product of four years of mediation on the ground that the owners of unregistered
copyrights were not represented in the settlement process).
2

Mr. Elan, therefore, is in this case as a named plaintiff for a reason. None of his
works are registered. His works are unregistered not because of thrift, oversight, or
recalcitrance in the face of a statutory requirement. Rather, Mr. Elan is in this case
because he provides valuable representation for the thousands of authors whose rights
will be determined by this litigation, no matter who the named plaintiffs are, and to
address the Defendants’ anticipated objections to class certification.
Fortunately for the class that Mr. Elan seeks to represent, there is a clear legal
basis for permitting Mr. Elan to proceed with his claims, and to vindicate the intellectual
property rights of the authors of unregistered works.
First, this Court unquestionably has jurisdiction over Mr. Elan’s claims. Reed
Elsevier v. Muchnick, 130 S. Ct. 1237, 1248 (2010) (“Muchnick”). Because this Court
has jurisdiction, the plain language of Section 502 of the Copyright Act entitles Mr. Elan
to seek injunctive relief barring the defendants from copying and selling his works. As
the Supreme Court’s decision in Muchnick made clear, granting injunctive relief in this
case would in no way expand this Court’s jurisdiction to plaintiffs or claims that are not
within its judicial power. Nor would it offend the purposes of Section 411 of the
Copyright Act. As the Second Circuit recognized, even before Muchnick, “where a
defendant has engaged in a pattern of infringement of a plaintiff’s registered copyrights
and can be expected to continue to infringe new copyrighted material emanating in the
future from the plaintiff,” the availability of injunctive relief covering unregistered works
is consistent with and “furthers the purposes of the Copyright Act generally and does not
undermine the intended effect of section 411(a).” In re Literary Works in Elec.
Databases Copyright Litig., 509 F.3d 116 , 123 (2d Cir. 2007) (“In re Literary Works. I”),
rev’d on other grounds by Muchnick.

3

Second, Mr. Elan, even without registering his works, is entitled to a declaratory
judgment, on behalf of himself and the class that he seeks to represent, that the
Defendants’ copying and sale of his works is unlawful. As is the case with injunctive
relief, registration is not a prerequisite to seeking a declaratory judgment.
Finally, even if the Court dismisses Mr. Elan’s individual claims (which, as
explained more fully below, it should not do), Plaintiffs respectfully submit that they
should be permitted to amend the Complaint so that Mr. White, or another plaintiff with
registered works, be named as the class representative for the authors of all works,
whether registered or unregistered. The parties and the Court should then address his
suitability as a class representative in the context of a proper class certification motion.
Because it is premature for the parties to address, in the context of Defendants’ Motions
to Dismiss, whether Mr. White would be an adequate class representative for the holders
of unregistered copyrights, the Court should, at the very least, grant the Plaintiffs leave to
amend in order to redefine the class and the class representative. Fed. R. Civ. Pro. 15.
For these reasons, as more fully explained below, the Defendants’ Motions to
Dismiss should be denied.

Factual Allegations
The Complaint in this putative class action alleges that the Plaintiffs, two
attorneys and the professional corporation owned solely by one of them, are the authors
of original works of authorship within the meaning of the Copyright Act, namely legal
briefs and other court filings. Mr. White and his professional corporation have obtained
copyright registrations for the works identified in the Complaint [Complaint, ¶ 4];
Mr. Elan has not. [Id. at ¶ 5]
West and Lexis are the two largest providers of electronic research databases
utilized by the legal community. The Complaint alleges that both of the Defendants sell
4

access to certain databases containing copies of the Plaintiffs’ works, as well as the works
of at least thousands of other attorneys and law firms. [Complaint at ¶¶ 22-26] The
Defendants charge substantial fees to provide access to, and copies of, the works of the
members of the putative class. [Id. at ¶ 27]. They have not, however, obtained from the
plaintiffs permission to copy, distribute, or sell their works for profit. [Id. at ¶ 28]
The Complaint alleges that the Defendants are infringing the Plaintiffs’ exclusive
rights under the Copyright Act, and seeks damages [Count I], injunctive relief [Count II],
and a declaratory judgment [Count III]. The Defendants now move to dismiss only the
claims of Mr. Elan and the class he seeks to represent, solely on the ground that Mr. Elan
has not obtained copyright registration for his works.

Legal Argument
I.

Standard on a motion to dismiss.
“In ruling on a motion to dismiss for failure to state a claim upon which relief

may be granted, the court is required to accept the material facts alleged in the complaint
as true.” Frasier v. Gen. Elec. Co., 930 F.2d 1004, 1007 (2d Cir. 1991). The Court also
is required to draw all reasonable inferences from the allegations in the complaint in
favor of the plaintiff. See Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009) (explaining that
in deciding a motion to dismiss, a court “consider[s] the legal sufficiency of the
complaint, taking its factual allegations to be true and drawing all reasonable inferences
in the plaintiff’s favor”).
At the pleading stage, the plaintiff is required to assert “enough facts to state a
claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544,
570 (2007). “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.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
5

II.

Elements of a copyright claim.
“There are only two elements of an infringement claim: ownership of a valid

copyright and the copying of constituent elements of the work that are original.” Fonar
Corp. v. Domenick, 105 F.3d 99, 103 (2d Cir. 1997). See also, e.g., Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (“To establish infringement, two elements
must be proven: (1) ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original.”); Tufenkian Import/Export Ventures, 338 F.3d
127, 131 (2d Cir. 2003) (“Copyright infringement is established when the owner of a
valid copyright demonstrates unauthorized copying.”) (quoting Castle Rock Entm’t, Inc. v.
Carol Publ’g Group, Inc., 150 F.3d 132, 137-38 (2d Cir. 1998)); Int’l Swaps &
Derivatives Ass’n v. Socratek, 712 F. Supp. 2d 96, 102 (S.D.N.Y. 2010) (“To make out a
prima facie case of copyright infringement, a party must show (1) ownership of a valid
copyright in the item and (2) unauthorized copying.”).
Plaintiffs are aware that this Court, citing Muchnick, has suggested that
registration may be viewed as an “element” of a copyright claim. Psihoyos v. John
Wiley & Sons, Inc., Case No. 11 Civ. 1416, 2011 U.S. Dist. LEXIS 137847, at *4-5
(S.D.N.Y. Nov. 21, 2011). While the registration requirement can, in the ordinary case
(like Psihoyos), act as the functional equivalent of an “element” of a copyright
infringement claim (especially when the plaintiff seeks only statutory damages and
attorney’s fees), Plaintiffs respectfully submit that, as a technical matter, Muchnick did
not create a third, new “element” for copyright claims, and certainly did not do so with
respect to claims seeking an injunction or declaratory relief.
In Muchnick, the Supreme Court acknowledged that registration could be one of
three different things: (i) a jurisdictional requirement; (ii) a claims processing rule; or
(iii) an element of a copyright claim. The Court’s analysis, however, focused only on

6

the dichotomy between jurisdictional requirements and claim-processing rules, see, e.g.,
Muchnick at 1243 (“While perhaps clear in theory, the distinction between jurisdictional
conditions and claim-processing rules can be confusing in practice”); id. at 1244
(discussing “the important distinctions between jurisdictional prescriptions and claimprocessing rules”). Ultimately, the Supreme Court concluded that registration is “a
precondition to filing a claim,” id. at 1241, but did not hold that registration is an
“element” of a claim. Indeed, after Muchnick the Second Circuit has continued to
explain that there are only two elements that a plaintiff needs to prove for a copyright
claim. See Kwan v. Schlein, 634 F.3d 224, 229 (2d Cir. 2011) (“To maintain an action
for infringement, a plaintiff must establish ‘(1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are original.’”) (quoting Feist).
Both defendants implicitly acknowledge this analysis. In its Motion to Dismiss,
Reed Elsevier acknowledges the two elements of a copyright claim [Memorandum of
Law in Support of Defendant Reed Elsevier Inc.’s Partial Motion to Dismiss (“Reed
Elsevier Memo”), at p. 3.], and separately refers to Section 411(a)’s registration provision
as a “precondition to filing a claim,” id., as does West. [West Publishing Corporation’s
Memorandum of Law in Support of Partial Motion to Dismiss (“West Memo”), at p. 3.]
It appears, therefore, that the parties to this action agree that registration, while a
procedural bar to certain claims, is not a substantive “element” of a copyright action.
Mr. Elan alleges both elements of a copyright claim: ownership of the copyrights
in his works, and copying. Indeed, the Defendants’ Motions to Dismiss do not dispute
that Mr. Elan has alleged these elements. The Complaint, therefore, alleges sufficient
facts to show that Mr. Elan’s claim of copyright infringement is more than “plausible on
its face.” Bell Atl. Corp. v. Twombly, 550 U.S. at 570.

7

III.

The Copyright Act permits the issuance of an injunction to
prevent future copying of unregistered works, including works
that are not yet in existence.
A.

Section 502 of the Copyright Act authorizes this Court to issue an
injunction barring the defendants from infringing the Plaintiffs’
copyrights in unregistered works.

Since the Supreme Court’s ruling in Muchnick, it is beyond peradventure that this
Court has jurisdiction over copyright claims involving unregistered copyrights, such as
those owned by Mr. Elan. Because this Court has jurisdiction over Mr. Elan’s claims, it
also has express statutory authority to issue an injunction against the Defendants’
infringement of Mr. Elan’s existing and future works.
Section 502 of the Copyright Act provides that, “[a]ny court having jurisdiction
of a civil action arising under this title may, subject to the provisions of section 1498 of
title 28, grant temporary and final injunctions on such terms as it may deem reasonable to
prevent or restrain infringement of a copyright.” (Emphasis added.) By its plain terms,
Section 502 conditions the availability of injunctive relief only on the court’s jurisdiction,
not on registration.
The language of Section 502 contrasts sharply with the wording of Section 412,
which permits the court to award statutory damages or attorney’s fees only if the work at
issue has been registered:
§ 412 REGISTRATION AS PREREQUISITE TO CERTAIN
REMEDIES FOR INFRINGEMENT:
In any action under this title,…no award of statutory
damages or of attorney’s fees, as provided by sections 504
and 505, shall be made for—
(1) any infringement of copyright in an unpublished
work commenced before the effective date of its
registration; or
(2) any infringement of copyright commenced after
first publication of the work and before the effective date of

8

its registration, unless such registration is made within
three months after the first publication of the work.
17 U.S.C. § 412 (emphasis added).
Section 412 shows that Congress certainly knew how to limit the availability of
remedies to those who registered their works. Injunctive relief, however, is not among
the remedies that are available exclusively to those who register. If Congress had
intended to condition injunctive relief on registration, it would have been easy to do: it
would have simply listed injunctive relief in Section 412 as among the remedies available
only to those who have registered, or included a registration requirement in Section 502,
or both. It did neither.
Indeed, the title of Section 412 itself – “REGISTRATION AS PREREQUISITE TO
CERTAIN REMEDIES FOR INFRINGEMENT – makes clear that registration is a requirement
for obtaining only “certain remedies,” not “all” remedies. As the leading treatise on
copyright law explains, the wording and structure of the statute unquestionably makes
injunctive relief available for unregistered works:
“Section 412 of the Copyright Act explicitly labels
registration a “prerequisite to certain remedies for
infringement,” viz., the remedies of attorney’s fees and
statutory damages. The inescapable conclusion from that
language is that registration is not a prerequisite to the
imposition of unenumerated remedies, such as the equitable
imposition of an injunction or seizure.”
2-7 Melville B. Nimmer and David Nimmer, NIMMER ON COPYRIGHT § 7.16[C][3]
(Matthew Bender, Rev. Ed) (hereinafter, “NIMMER”).1
It is also significant that the injunctive remedy available in Section 502 is separate
1

The wording of the statute also makes clear that registration is not an element of
a copyright claim seeking injunctive relief. See Section II, supra. If it were, it would
make no sense to say that an injunction is available even in the absence of registration, i.e.
even if the plaintiff does not satisfy an element of the claim.

9

from the registration requirements in Section 411, and the limitation on remedies in
Section 412. In fact, it is an entirely different chapter of the Copyright Act (chapter 5)
from the provisions relating to registration (chapter 4). The structure of the Copyright
Act therefore further confirms that Congress intended injunctive relief to be separate
from, and stand independent of, registration. See Muchnick at 1245-46 (explaining that
Section 411’s registration requirement “is located in a provision ‘separate’ from those
granting federal courts subject-matter jurisdiction over [copyright] claims”).
B.

Courts have long held that injunctive relief is available to plaintiffs
alleging an ongoing infringement of unregistered works, and the
threat of future infringement.

Both before and after Muchnick, courts have recognized that Section 502
authorizes federal courts to issue injunctions barring the infringement of unregistered
works, as well as future works (which obviously cannot be registered at the time the
injunction issues).
In Olan Mills Inc. v. Linn Photo Co., 23 F.3d 1345 (8th Cir. 1994), the Eighth
Circuit considered whether a plaintiff who had proved infringement of registered works
was entitled to an injunction barring the defendant from infringing unregistered works, as
well as future works. The court held that such an injunction not only was proper, but
expressly authorized by Section 502: “Section 502(a) gives the district court the power to
issue an injunction to prevent infringement of ‘a copyright.’ The power to grant
injunctive relief is not limited to registered copyrights, or even to those copyrights which
give rise to an infringement action.” Id. at 1349. In fact, the Eighth Circuit explained that
granting such relief was hardly unusual:
Courts have traditionally crafted broad injunctions to
protect copyright holders, regardless of the registration
status of the copyright. See Pacific and Southern [Co. v.
Duncan, 744 F.2d 1490,] 1499 [(11th Cir. 1984), cert.
denied, 471 U.S. 1004 (1985)]. Injunctions have even
10

prohibited infringement of works not yet in existence. Id.
at 1499, n.17. (concluding the power of the district courts
to issue injunctions is not limited to works already in
existence but applies to future works as well).
Olan Mills, at 1349.
So, under Section 502, when a court has jurisdiction over a claim, as it does here,
and “[w]hen a copyright owner has established a threat of continuing infringement, the
owner is entitled to an injunction regardless of registration.” Id. (emphasis added).2 See
also Interscope Recordings v. Tabor, No. 08-03068, 2009 U.S. Dist. LEXIS 25854, *5
(W.D. Ark. Mar. 16, 2009) (finding “that courts have traditionally crafted broad
injunctions to protect copyright holders [and] injunctions have even prohibited
infringement of works not yet in existence,” and granting injunction against infringing
plaintiff’s “existing or future copyrights.”); Criterion 508 Solutions, Inc. v. Lockheed
Martin Servs., 806 F. Supp. 2d 1078, 1106 (S.D. Iowa 2009) (holding that a “whether or
not a party can sue for infringement of unregistered materials depends on the type of
damages sought” and that a party seeking injunctive is not required to register a
copyright); Tattoo Art, Inc. v. TAT Int’l, LLC, 794 F. Supp. 2d 634, 666-67 (E.D. Va.
2011) (issuing permanent injunction against the copying of plaintiff’s “copyrighted tattoo
designs, registered or unregistered”).
In the Second Circuit, the most relevant analysis concerning injunctions against
infringement of unregistered works is obsolete. It came in the Court of Appeals’ original
decision in the Muchnick case, In re Literary Works I, which was reversed by the
Supreme Court. In that decision, the Second Circuit was concerned that an injunction

2

In Olan Mills, the plaintiff had registered a limited number of works, but the fact
of that registration was not relevant the court’s holding that an injunction may properly
bar the infringement of unregistered works.

11

against the infringement of unregistered works might exceed the courts’ jurisdictional
authority. The Court of Appeals therefore declined to find that, “where one of the
plaintiff’s claims arises from a registered copyright, section 411(a) vests jurisdiction over
any related infringement claim.” 509 F.3d at 123 (emphasis added). Continuing in that
vein, the Court of Appeals declined “to rule that registration of one party’s copyright
would somehow provide jurisdiction over claims stemming from the unregistered
copyrights of many other parties.” Id. (emphasis added).
After Muchnick, though, the jurisdictional concerns that animated the Court of
Appeals’ discussion have evaporated. Under Muchnick, issuing an injunction against the
infringement of unregistered works does not extend the court’s jurisdiction to works or to
parties otherwise beyond the court’s jurisdictional power, as the Second Circuit believed.
Instead, as the Supreme Court made clear, federal courts already have jurisdiction over
copyright claims involving unregistered works.
Because the Supreme Court has made clear that federal courts have jurisdiction
over claims such as those asserted by Mr. Elan, and because Section 502 states that any
court “having jurisdiction” may enter an injunction, it is clear that this Court can – and
should – issue an injunction to protect unregistered works from infringement.3
Significantly, even in In re Literary Works I, the Second Circuit recognized the
efficacy of issuing an injunction of the type approved by the Eighth Circuit in Olan Mills,
explaining that, “where a defendant has engaged in a pattern of infringement…and can be

3

Other pre-Muchnick decisions declined to issue injunctions covering
unregistered works but, as one court recently observed, “many of these courts reached
that conclusion on the basis of pre-Muchnick jurisprudence, which considered § 411(a)’s
requirement to be jurisdictional in nature.” Tattoo Art, 794 F. Supp. 2d at 662 (collecting
cases).

12

expected to continue to infringe new copyrighted material emanating in the future from
the plaintiff,” the availability of injunctive relief covering unregistered works is
consistent with, and furthers, the purposes of the Copyright Act, “and does not undermine
the intended effect of section 411(a).” In re Literary Works I, at 123.
Here, the Plaintiffs have alleged that the Defendants are engaged in a persistent
and ongoing infringement of their works – and the works of thousands of others – that
will, absent an injunction, continue into the future. In this context, an injunction is not
only proper, but also “furthers, the purposes of the Copyright Act.” In re Literary
Works I, at 123.
Indeed, if injunctive relief were not available to prevent future infringement by
the Defendants, the results would be extraordinarily burdensome to the courts and authors
alike. The Plaintiffs in this case – or in any similar case – could (and, Plaintiffs believe,
will) prevail on their claims, but the Defendants would be free to copy new works on a
daily basis, and continue to infringe them. In the absence of injunctive relief covering
future works, each author would need to obtain a new copyright registration, and
commence a new lawsuit, to put a stop to exactly the same infringing conduct. The
burden of doing so would be tremendous, and would as a practical matter embolden the
Defendants to continue their flagrant infringement. Such a result would make no sense.
One court briefly adopted a contrary construction, holding
that the scope of an injunction is limited to registered
works. Cable News Network, Inc. v. Video Monitoring
Services of America, Inc. [940 F.2d 1471 (11th Cir. 1991)]
expressly held that injunctions, even issued by courts
enjoying appropriate jurisdiction, cannot extend to future or
unregistered works. Until the ruling was vacated by the
entire circuit sitting en banc [949 F.2d 378 (11th Cir.
1991), appeal dismissed en banc, 959 F.2d 188 (11th Cir.
1992)], that construction would have required CNN—
which had been victorious below against a company whose
systematic policy was to infringe the entire CNN
13

cablecast—to file a new lawsuit every day for the
infringement of that day’s work, as the previous injunctions
could not reach conduct respecting a work that had been
“future” at the time of their issuance. Such a result not
only ran afoul of judicial economy, but also contradicted
the holdings of every circuit to confront analogous
circumstances.
2-7 NIMMER § 7.16[C][3] (emphasis added). Just as CNN should not be required to
commence a new action for unlawful copying of each day’s broadcast, the Plaintiffs in
this case, and attorneys generally, should not be forced to commence a new lawsuit
against the Defendants every time a brief is filed and unlawfully copied into the
Defendants’ databases.
As in the CNN case, the availability of injunctive relief concerning unregistered
works, including future works, is appropriately before this Court. Mr. White
unquestionably has the ability to seek that relief, as does Mr. Elan who, as a
representative of authors whose works are not registered, as well as works that have not
yet been written, is (in addition to Mr. White) a proper plaintiff in this case. For these
reasons, Mr. Elan’s claim in Count II for injunctive relief should not be dismissed.

IV.

This Court has the power to enter a declaratory judgment that
the Defendants have no right to copy or sell the Plaintiffs’ works.
Completely independent of his entitlement to injunctive relief, Mr. Elan (like

Mr. White) is entitled to a declaratory judgment, as is sought in Count III of the
Complaint. For the reasons set forth below, the Motions to Dismiss should, therefore, be
denied with respect to Count III as well.
A.

This Court has the power to issue a declaratory judgment in any
action in which there is an actual case or controversy within the
meaning of Article III of the Constitution.

The Court’s authority to enter a declaratory judgment derives not from the
Copyright Act, but from the federal declaratory judgment statute:

14

In a case of actual controversy within its jurisdiction…any
court of the United States, upon the filing of an appropriate
pleading, may declare the rights and other legal relations of
any interested party seeking such declaration, whether or
not further relief is or could be sought.
28 U.S.C. § 2201. “[A] case of actual controversy” within the meaning of Section 2201
is coextensive with the constitutional requirement for standing. Nike, Inc. v. Already,
LLC, 663 F.3d 89, 95 (2d Cir. 2011).
In order to hear a claim for declaratory relief, all that is required is that “the
dispute be ‘definite and concrete, touching the legal relations of parties having adverse
legal interests’; and that it be ‘real and substantial’ and ‘admi[t] of specific relief through
a decree of a conclusive character, as distinguished from an opinion advising what the
law would be upon a hypothetical state of facts.’” MedImmune, Inc. v. Genentech, Inc.,
549 U.S. 118, 127 (2007) (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240-41
(1937)). This test applies in intellectual property cases. See Nike, at 95 (explaining that
MedImmune confirmed that the “totality of the circumstances test for declaratory
judgment actions applied in intellectual property cases”).
As described in the Complaint, and above, both Mr. White and Mr. Elan have
presented this Court with “a case of actual controversy within its jurisdiction.” See
Muchnick. The dispute is in no sense hypothetical or merely peremptory: the Defendants
are currently engaged in an ongoing course of conduct that implicates the Plaintiffs’
copyrights, as well as the works of thousands of attorneys and law firms. This Court can
bring substantial certainty to the situation by entering a declaratory judgment granting
“specific relief through a decree of a conclusive character, as distinguished from an
opinion advising what the law would be upon a hypothetical state of facts.” MedImmune,
at 127. Therefore, both Mr. Elan and Mr. White are entitled to a declaration concerning
the parties’ rights with respect to copying of the works.
15

B.

This Court can render a declaratory judgment with respect to
unregistered works.

“The Declaratory Judgment Act is often used in connection with copyright cases
to secure a declaration as to whether a party possesses a legally cognizable interest in the
intellectual property and, if so, whether there has been an infringement of the interest.”
12-57 James Wm. Moore, MOORE’S FEDERAL PRACTICE - CIVIL § 57.85 (Matthew
Bender, 3d Ed).
The owner of a copyright is entitled to a declaratory judgment of infringement
upon a showing that: (i) he is the owner of a valid copyright, and (ii) infringement. Davis
v. Gap, Inc., 246 F.3d 152, 158-59 (2nd Cir. 2001). In fact, a court can issue a
declaratory judgment even if the party seeking the declaratory relief is not entitled to any
damages under the Copyright Act. Id. at 159. (“The owner of a copyright is thus entitled
to prevail in a claim for declaratory judgment of infringement without showing
entitlement to monetary relief.”)
Section 411 and its registration requirement have no bearing on the Court’s
authority to enter declaratory judgment concerning the fact of infringement for at least
two reasons. First, As explained in Section III(A), supra, Section 412’s listing of “certain
remedies” that are available only to those who have registered their works necessarily
means that other, unenumerated remedies are available to those who have not registered
their works. 2-7 NIMMER § 7.16[C][3]. The reasoning applies with at least equal, if not
greater, force with respect to declaratory relief. The leading treatise on copyright law
explains that, “[t]he contrary ruling of Olan Mills, Inc. v. Linn Photo Co., 795 F.Supp.
1423 (N.D. Iowa 1991) (no declaratory judgment to copyright owner regarding
infringement of unregistered copyright) was appropriately reversed on appeal. 23 F.3d
1345, 1349 (8th Cir. 1994).” 2-7 NIMMER § 7.16[C][3], at fn. 500. See also Telebrands
Corp. v. Exceptional Prods., No. 11-CV-2252, 2011 U.S. Dist. LEXIS 139308, *4-6
16

(D.N.J. Dec. 5, 2011) (holding that while it “is correct that a party may not state a prima
facie case of copyright infringement where the party does not hold a registered copyright
in accordance with 17 U.S.C. § 411(a)… the conclusion that this Court cannot exercise
jurisdiction over [a] declaratory judgment action does not flow from that premise.
(citations omitted)).
Second, an action seeking declaratory relief is not an action for “copyright
infringement” within the meaning of Section 411. Nimmer on Copyright explains that
pre-Muchnick holdings that declaratory judgment actions are not sustainable in the
absence of registration are no longer good law and, in any event, were wrongly decided:
Another case that cannot survive the Supreme Court’s
ruling [in Muchnick] is Stuart Weitzman, LLC v.
Microcomputer Resources, Inc., [542 F.3d 859 (11th Cir.
2008).] Weitzman hired MCR to create software for its
fashion business; after a dispute, Weitzman filed suit for a
declaration that it owned the copy of the software that it
had purchased from MCR and had the right to modify that
software for its own business needs. The Eleventh Circuit
construed the complaint as suggesting that Weitzman
anticipated that MCR would sue it for copyright
infringement. It reasoned, based on the fact that MCR had
never applied to register the software at issue, that “the
district court would lack subject matter jurisdiction if MCR
brought an infringement suit against Weitzman” and, given
that the Declaratory Relief Act does not independently
furnish jurisdiction, the case had to be dismissed.
Recognizing that its ruling would place Weitzman in “an
awkward position” that was “unfortunate,” it still felt
constrained to hew to the consensus that registration is
jurisdictional. With the explosion of that consensus, the
basis for the ruling now evaporates. Moreover, even
without Reed Elsevier v. Muchnick’s clarification of
ranking, the Eleventh Circuit’s reasoning still seems plainly
wrong, given that the registration requirement set forth in
the statute explicitly applies only to “an action for
infringement of the copyright,” not to a declaration of
rights under the Copyright Act. In line with that sentiment,
another decision appropriately allows declaratory relief to
proceed in this posture. [Citing Sportsman’s Warehouse,
17

Inc. v. Fair, 576 F. Supp. 2d 1175, 1183 (D. Colo. 2008)]
2-7 NIMMER § 7.16[B][3][b][v]. Thus, registration is not a prerequisite to a declaratory
judgment claim because a declaratory judgment claim is of a different character. It is not
“an action for infringement of copyright” within the meaning of Section 411, and
registration is not a prerequisite to suit.
In Sportsman’s Warehouse, Inc. v. Fair, the court explained that it could render a
declaratory judgment with respect to unregistered works because the declaratory
judgment statute gave it an independent basis for doing so:
Fair [the defendant] appears to be operating under the
assumption that an action relating to copyright can only be
brought by a copyright holder pursuant to 17 U.S.C. §411,
and since neither Sportsman’s Warehouse nor LeBlanc [the
plaintiffs] hold copyrights, there is no jurisdiction or cause
of action. Fair misapprehends the nature of this case.
LeBlanc and Sportsman’s Warehouse seek a declaration of
non-infringement. The federal declaratory judgment statute,
28 U.S.C. § 2201, vests a district court with the authority to
declare the rights and other legal relations of any interested
party in “a case of actual controversy” within the court’s
jurisdiction. Fair has accused both LeBlanc and
Sportsman’s Warehouse of infringing on his copyright, and
indeed has apparently commenced litigation in Oregon.
Therefore, there is an actual controversy between these
parties and it is appropriate to declare the rights and
obligations of the parties with respect to the infringement
issue.”
Id. at 1183 (D. Col. 2008). While Sportsman’s Warehouse involved a declaratory
judgment sought by a party seeking a declaration of non-infringement, the relief is clearly
available to a party seeking a declaration of infringement as well. See, e.g., Davis v. Gap,
Inc., supra (finding that a court may issue a declaratory judgment of infringement even if
the copyright owner is not entitled to damages).

18

C.

A declaratory judgment would be useful to the parties and the
proposed class.

While this Court has a measure of discretion as to whether to entertain a
declaratory judgment claim, the Second Circuit has held that “a court must entertain a
declaratory judgment action: (1) when the judgment will serve a useful purpose in
clarifying and settling the legal relations in issue, or (2) when it will terminate and afford
relief from the uncertainty, insecurity, and controversy giving rise to the proceeding. If
either prong is met, the action must be entertained.” Continental Cas. Co. v. Coastal Sav.
Bank, 977 F.2d 734, 737 (2d Cir. 1992) (citation omitted).
Given that the Defendants are engaged in a continuing practice of copying
attorneys’ legal filings, all parties would benefit from certainty as to whether the copying
constitutes infringement. It is certainly true that adjudicating the parties rights would
“serve a useful purpose in clarifying and settling the legal relations in issue,” and that it
would “terminate and afford relief from the uncertainty, insecurity, and controversy
giving rise to the proceeding.” Continental Cas. Co., 997 F.2d at 737. Thus, in these
circumstances, even if this Court does not grant Mr. Elan any other relief, it is appropriate
for the Court to declare that the Defendants are unlawfully copying, distributing, and
selling his works in violation of the Copyright Act. For these reasons, the Court should
deny the Motions to Dismiss the Complaint with respect to Count III.

V.

The cases cited by the Defendants do not address the availability
of injunctive or declaratory relief with respect to unregistered
works.
Defendants cite a number of cases for the proposition that all claims concerning

unregistered works must be dismissed. Those cases, however, did not address or decide
the issue of whether injunctive or declaratory relief is available for unpublished works.

19

This Court did not address or determine the issue of whether an author of an
unregistered work could be entitled to an injunction or declaratory relief in Psihoyos v.
John Wiley & Sons, Inc., No. 11 Civ. 1416, 2011 U.S. Dist. LEXIS 115835 (S.D.N.Y. Oct.
3, 2011). In arguing in support of his motion for a preliminary injunction, the plaintiff in
Psihoyos raised (only weakly, in parentheticals, and in reply) the argument that a
preliminary injunction may issue with respect to unregistered works.4 In denying the
motion for a preliminary injunction, though, this Court expressly declined to address the
issue of whether the registration status of Psihoyos’ works was fatal to his claim for
injunctive relief. Instead, this Court held that the plaintiff had failed to establish the other
elements of its claim for injunctive relief:
Because of th[e] uncertainty concerning the validity (or
lack thereof) of plaintiff’s copyright registrations,
plaintiff’s likelihood of success on the merits appeared
equivocal at best. It was not necessary for the Court to
reach a definitive conclusion on this issue, however,
because the preliminary injunction standard is a
conjunctive test….[I]n this case, plaintiff failed to satisfy
the remaining elements of the test.
Id. at *9-10 (citation omitted).
Later in the case, on Psihoyos’ opposition to summary judgment, and in his
Motion for Reconsideration, Psihoyos never made the argument that this Court could
grant injunctive relief with respect to unregistered works. Instead, Psihoyos argued only
that: (i) the unregistered works were similar to certain registered works, and thus
“derivative works,” see Psihoyos v. John Wiley & Sons, Inc., No. 11 Civ. 1416, 2011 U.S.
Dist. LEXIS 120204, at *4-5 (S.D.N.Y. Oct. 13, 2011), and (ii) that belated registration of

4

Memorandum of Law in Support of Plaintiff’s Motion for a Preliminary
Injunction, 11 Civ. 1416 (JSR), Dkt. No. 22, filed Aug. 1, 2011

20

those works cured any registration deficiency. Id. at *5.5 Moreover, the complaint in the
Psihoyos action did not even seek declaratory relief.6 Not surprisingly, then, this Court’s
decisions on summary judgment did not decide the issue of whether injunctive or
declaratory relief is available for infringement of unregistered works.
As in Psihoyos, the plaintiff in Drum Major Music Entm’t Inc. v. Young Money
Entm’t, LLC, No. 11 Civ. 1980 (LBS), 2012 U.S. Dist. LEXIS 17290 (S.D.N.Y. Feb. 7,
2012), only advanced the argument that its belated registration cured any deficiency. Id.
at *14-15. Judge Sand, citing this Court’s decision in Psihoyos, held that it did not. Id. at
*15. Judge Sand did not, however, consider whether injunctive or declaratory relief is
available for unregistered copyrights. The same is true in Obodai v. YouTube LLC, No.
11 Civ. 4343 (DLC), 2011 U.S. Dist. LEXIS 150164 (S.D.N.Y Dec. 29, 2011) (dismissing
the claims of a pro se plaintiff, but never considering the availability of injunctive or
declaratory relief).
In Jewel Source, Inc. v. Primus Jewels, LLC, No. 11 Civ. 3941 (JSR), 2011 U.S.
Dist. LEXIS 115830 (S.D.N.Y. Oct 3, 2011), the plaintiff did not argue that it was
entitled to an injunction or a declaratory judgment with respect to unregistered works.
Rather, the plaintiff argued only that the works in question were foreign works not
required to be registered under 17 U.S.C. § 411(a).7 Thus, in Jewel Source, this Court
was never asked to decide whether a preliminary injunction or declaratory judgment is
5

See also Memorandum of Law in Opposition to Defendant’s Motion for
Summary Judgment, Case No. 11 Civ. 1416 (JPO), Dkt. No. 34, filed Aug. 31, 2011, at
pp. 21-22; and Memorandum of Law In Support of Plaintiff’s Motion For
Reconsideration Under Local Civil Rule 6.3, Dkt. No. 50, filed Oct. 17, 2011, at pp. 5-8.
6

Amended Complaint, Case No. 11 Civ. 1416, Dkt. No. 45, filed Sept. 30, 2011.

7

Memorandum of Law in Opposition to Defendant’s Motion to Dismiss, Case No.
11 Civ. 3941 (JSR), Dkt. No. 13, filed July 6, 2011.

21

available with respect to unregistered works and, not surprisingly, did not do so. See
Jewel Source at *5-6 (rejecting plaintiff’s argument on the ground that “Jewel
published its works in the United States”).
West cites Kamanou v. Exec. Sec’y of the Comm’n of the Economic Cmty. Of
West African States, No. 10 Civ. 7286 (GBD) (JLC), 2012 U.S. Dist. LEXIS 7647
(S.D.N.Y. Jan. 19, 2012), for the proposition that lack of registration mandates dismissal,
but that was only the Magistrate’s Report and Recommendation. Judge Daniels accepted
the Report and Recommendation’s ultimate conclusion that the copyright claim should be
dismissed, but his decision was based only on the fact that the work at issue was a “work
made for hire.” Kamanou v. Exec. Sec’y of the Comm’n of the Economic Cmty. Of West
African States, No. 10 Civ. 7286 (GBD) (JLC), 2012 U.S. Dist. LEXIS 34495, *4-5
(S.D.N.Y. Mar. 14, 2012). The part of the Kamanou Report and Recommendation that
West cites was not a part of Judge Daniels’ opinion. Neither the Report and
Recommendation nor Judge Daniels’ decision discussed injunctive or declaratory relief.
In Muench Photography, Inc. v. Houghton Mifflin Harcourt Publ’g Co., 712 F.
Supp. 2d 84 (S.D.N.Y. 2010), also cited by West, the court addressed “the novel question
of whether the registration of an automated database—here, a compilation of photographs
by different photographers—by a third-party copyright claimant that has been assigned
the rights to the individual works for the purposes of copyright registration registers the
individual works thereby permitting the individual photographers to sue for copyright
infringement.” Id. at 92. The Court’s decision thus was rendered in the context of the
plaintiffs arguing that their works were registered, a contention also rejected by the court
on reconsideration. In Muench Photography, Inc. v. Houghton Mifflin Harcourt Publ.,
Co., No. 09 CV 2669 (LAP), 2010 U.S. Dist. LEXIS 107705 (S.D.N.Y. Sept. 27, 2010)

22

(finding that the failure to include authors’ names in a registration application was not a
mere inaccuracy that “saved” the registration).
Defendants’ resort to decisions from other circuits is similarly uninstructive on
the issue of injunctive or declaratory relief. The issue never was addressed in Real Estate
Innovations, Inc. v. Houston Ass’n of Realtors, Inc., 422 Fed. Appx 344 (5th Cir. 2001),
in which the Fifth Circuit dismissed a copyright claim after rejecting the claimant’s
argument that the work at issue was a derivative work of one that was registered. Id. at
348.8
The remaining cases cited by the Defendants also never addressed, let alone
decided, whether injunctive or declaratory relief is available with respect to unregistered
works. See Staggs v. West, Civ. No. PJM 08-0728, 2010 U.S. Dist. LEXIS 63174, *8
(D. Md. June 25, 2010) (finding that plaintiff’s opposition to dismissal was “largely
incomprehensible and, insofar as the Court can tell, fail[ed] to directly respond to
Defendants’ arguments,” and not addressing any arguments relating to injunctive or
declaratory relief); Mktg. Tech. Solutions, Inc. v. Medizine LLC, No. 09 Civ. 8122
(LMM), 2010 U.S. Dist. LEXIS 50027 (May 18, 2010) (not addressing injunctive or
declaratory relief); Compound Stock Earnings Seminars, Inc. v. Dannenberg, No. 3:10CV-2201-D, 2012 U.S. Dist. LEXIS 1014 (Jan. 4, 2012)(same); TreadmillDoctor.com,
8

Even that conclusion was not on the merits, though, because the claimant’s
derivative work claim was made only at oral argument, and case law on the subject was
submitted to the Court of Appeals only in a letter, one month after argument. For that
reason, and “because the argument was not presented to the district court for its
consideration,” the Fifth Circuit decided not to address the merits of the argument. Id.
Not surprisingly, then, the Fifth Circuit designated the decision – cited here by both
Defendants – as “not for publication,” and indicated that it “is not precedent except under
the limited circumstances set forth in 5TH CIR. R. 47.5.4” (relating to res judicata,
collateral estoppel, law of the case, and similar circumstances). Id. at 345 (unnumbered
footnote). In all events, the opinion has nothing to say about injunctive or declaratory relief.

23

Inc. v. Johnson, No. 08-2877, 2011 U.S. Dist. LEXIS 34652 (W.D. Tenn. Mar. 31, 2011)
(same).
Certainly, none of the cases cited by the defendants contradict the analysis
Section 502 provides a clear statutory basis for granting injunctive relief in any case in
which the court has jurisdiction, and for granting declaratory relief in this procedural
posture. For these reasons, the Motions to Dismiss should be denied.

VI.

Request for leave to replead.
As explained above, Mr. Elan has presented viable claims for at least injunctive

relief and a declaratory judgment. If, however, the Court determines that Mr. Elan is not
a proper named plaintiff, the Court should grant the Plaintiffs leave to amend the
Complaint so that the holder of a registered copyright is a representative of the entire
class of authors, including those with unregistered works. See Fed. R. Civ. Pro. 15(a)(2)
(“The court should freely give leave when justice so requires.”)
While the Defendants will no doubt argue that the owner of a registered copyright
cannot represent the owners of unregistered copyrights, see, generally, In re Literary
Works II, that argument is premature in the context of their Motions to Dismiss. Rather,
it should be addressed in the context of a Motion for Class Certification. “Generally,
courts review class allegations through a motion for class certification.” In re WalMart
Stores, Inc., 505 F. Supp. 2d 609, 614 (C.D. Cal. 2007) (denying motion to dismiss class
claims under Rule 12(b), and holding that such a determination should await class
certification). Indeed, “nearly all of the[] cases [that] considered the issue of the
appropriate contours of class definitions in the context of a motion for class certification.”
Id. The Defendants’ Motions to Dismiss do not address whether Mr. White, or another
plaintiff who registers a copyright can be an adequate representative of the class, and

24

there is no reason for the Court to reach that issue at this time. A full briefing on the
issue of class representation should await briefing on class certification.
Therefore, at the very least, any dismissal of Mr. Elan’s claims should be made
without prejudice, and with leave to replead, especially with respect to claims on behalf
of the unregistered class.

Conclusion
The Motions to Dismiss should be denied. In the alternative, the Plaintiffs
respectfully request that they be granted leave to replead.
Dated:

New York, New York
April 26, 2012
GREGORY A. BLUE, P.C.
By:

/s/ Gregory A. Blue
Gregory A. Blue
The Chrysler Building
405 Lexington Avenue, Suite 2600
New York, NY 10174
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Raymond A. Bragar
BRAGAR WEXLER EAGEL & SQUIRE, P.C.
885 Third Ave., Suite 3040
New York, New York 10022
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorneys for Plaintiffs

25