White et al v. West Publishing Corporation et al

Filing 29

REPLY MEMORANDUM OF LAW in Support re: 21 MOTION to Dismiss the Complaint.. Document filed by West Publishing Corporation. (Marks, Benjamin)

R. Bruce Rich (RR-0313)
Benjamin E. Marks (BM-0796)
Jonathan Bloom (JB-7966)
John R. Gerba (JG-4947)
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, New York 10153
[phone]
Attorneys for Defendant West Publishing Corporation
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------------x
EDWARD L. WHITE; EDWARD L. WHITE, P.C.;
and KENNETH ELAN, on behalf of themselves
and all others similarly situated
Plaintiffs,

12 Civ. 1340 (JSR)

v.
REPLY MEMORANDUM OF
LAW IN FURTHER
SUPPORT OF PARTIAL
MOTION TO DISMISS
WEST PUBLISHING CORPORATION d/b/a/
“West”; and REED ELSEVIER, INC. d/b/a/
LexisNexis,
Defendants.
---------------------------------------------------------------x

Filed Electronically

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ......................................................................................................... ii
PRELIMINARY STATEMENT ................................................................................................... 1
ARGUMENT................................................................................................................................. 2
I.

The Section 411(A) Registration Requirement is a “Precondition to Filing a
Claim” ................................................................................................................................ 2

II.

Non-Registered Claimants Cannot Avoid the Copyright Act’s Registration
Requirement by Purporting to Limit the Relief Sought to Injunctive Relief..................... 3
A.

Neither Section 502 nor Section 412 of the Copyright Act Excuses a
Failure to Satisfy the Registration Requirement.................................................... 4

B.

Courts in This Circuit Uniformly Limit Injunctive Relief for Copyright
Infringement to Plaintiffs Who Have Proven Infringements as to
Registered Works................................................................................................... 6

III.

The Declaratory Judgment Act Does Not Excuse Plaintiffs’ Failure to Register
The Copyrights Alleged to be in Issue............................................................................... 8

IV.

Plaintiffs’ Request for Leave to Replead Should be Denied ........................................... 10

CONCLUSION............................................................................................................................ 10

i

TABLE OF AUTHORITIES
Page(s)
CASES
Criterion 508 Solutions, Inc. v. Lockheed Martin Servs.,
806 F. Supp. 2d 1078 (S.D. Iowa 2009) ....................................................................................7
Davis v. The Gap, Inc.,
246 F.3d 152 (2d Cir. 2001).......................................................................................................9
DRK Photo v. Houghton Mifflin Harcourt Publ’g Co.,
No. CV-09-8225-PCT-NVW, 2010 WL 1688767 (D. Ariz. Apr. 26, 2010).............................7
Greene v. United States,
79 F.3d 1348 (2d Cir. 1996).......................................................................................................8
In re Literary Works in Elec. Databases Copyright Litig.,
509 F.3d 116 (2d Cir. 2007)...................................................................................................6, 7
Interscope Recordings v. Tabor,
Civil No. 08-03068, 2009 WL 708322 (W.D. Ark. Mar. 16, 2009)..........................................8
Jewel Source, Inc. v. Primus Jewels, LLC,
No. 11 Civ. 3941 (JSR), 2011 WL 4634019 (S.D.N.Y. Oct. 3, 2011) ......................................3
Morton v. Mancari,
417 U.S. 535 (1974)...................................................................................................................8
Olan Mills, Inc. v. Linn Photo Co.,
23 F.3d 1345 (8th Cir. 1994) .................................................................................................6, 7
Psihoyos v. John Wiley & Sons, Inc.,
No. 11 Civ. 1416 (JSR), 2011 WL 5980423 (S.D.N.Y. Nov. 29, 2011) ...................................3
Reed Elsevier, Inc. v. Muchnick,
130 S. Ct. 1237 (2010).......................................................................................................2, 5, 6
Sportsman’s Warehouse, Inc. v. Fair,
576 F. Supp. 2d 1175 (D. Colo. 2008).......................................................................................9
Tattoo Art, Inc. v. TAT Int’l, LLC,
794 F. Supp. 2d 634 (E.D. Va. 2011) ........................................................................................7
Telebrands Corp. v. Exceptional Prods.,
No. 11-CV-2252, 2011 WL 6029402 (D.N.J. Dec. 5, 2011).....................................................9

ii

TABLE OF AUTHORITIES (cont’d)
Page(s)
CASES
Walker Mfg., Inc. v. Hoffman, Inc.,
220 F. Supp. 2d 1024 (N. D. Iowa 2002)...................................................................................7
STATUTES
17 U.S.C. § 411(a) ................................................................................................................. passim
17 U.S.C. § 412............................................................................................................................4, 5
17 U.S.C. § 501(b) ...............................................................................................................1, 2, 4, 9
OTHER AUTHORITIES
Complaint, Jewel Source, Inc. v. Primus Jewels, LLC,
No. 11 Civ. 03941 (JSR) (S.D.N.Y. Apr. 25, 2011) ..................................................................4
Complaint, Mktg. Tech. Solutions, Inc. v. Medizine LLC,
No. 09 Civ. 8122 (LMM) (S.D.N.Y. May 13, 2010), 2010 WL 3053685.................................4
Complaint, Muench Photography, Inc. v. Houghton Mifflin Harcourt Publ’g Co.,
712 F. Supp. 2d 84 (S.D.N.Y. 2010) (09 CV 2669 LAP), 2011 WL 2947589..........................4
Complaint, Psihoyos v. John Wiley & Sons, Inc.,
No. 11 Civ. 1416 (JSR) (S.D.N.Y. Mar. 1, 2011), 2011 WL 846898 .......................................4
H.R. Rep. No. 100-609 (1988), reprinted in 1988 U.S.C.C.A.N. 3706...........................................5
H.R. Rep. No. 94-1476 (1976), reprinted in 1976 U.S.C.C.A.N. 5659...........................................5
Melville B. Nimmer & David Nimmer, NIMMER ON COPYRIGHT (2012)..............................6, 7, 10
William Patry, PATRY ON COPYRIGHT (2012)..................................................................................7
S. Rep. No. 100-352 (1988), reprinted in 1988 U.S.C.C.A.N. 3706 ...............................................5

iii

Defendant West Publishing Corporation (“West”) submits this reply memorandum in
further support of its Rule 12(b)(6) motion to dismiss the claims of plaintiff Kenneth Elan and
the alleged subclass of plaintiffs who, like Elan, have not registered copyrights in the allegedly
infringed works.
PRELIMINARY STATEMENT
As demonstrated in West’s opening brief, section 411(a) of the Copyright Act, 17 U.S.C.
§ 411(a), unambiguously requires copyright registration as a prerequisite to institution of an
action for infringement of the type of works at issue here. Because Elan and the members of the
putative “non-registered” subclass he purports to represent (the “Non-registered Subclass”) by
definition have not complied with section 411(a), their claims must be dismissed.
Plaintiffs attempt to circumvent this barrier to the assertion of claims on behalf of the
Non-registered Subclass by arguing that their failure to register allegedly infringed works does
not foreclose pursuit of infringement claims seeking only injunctive and declaratory relief.
Plaintiffs are incorrect. Section 411(a) plainly applies to all infringement claims other than those
that are expressly exempted, and plaintiffs’ claims for injunctive or declaratory relief are not
among those exempted. Section 411(a) is complemented by section 501(b), which, without
qualification as to the nature of the relief sought, conditions entitlement to “institute an action for
any infringement” upon the copyright claimant having met the requirements of section 411(a).
These statutory directives have led courts routinely to dismiss all claims for relief brought by
plaintiffs who do not fall within one of section 411’s limited exemptions and who fail to secure
the registrations required to institute an infringement action.
Plaintiffs cannot avoid dismissal as to unregistered works by invoking the Declaratory
Judgment Act. Plaintiffs did not bring this affirmative action for infringement pursuant to the

Declaratory Judgment Act. In any event, the general jurisdiction provision of that Act does not
trump the specific statutory prerequisite of copyright registration.
Nor can the deficiencies in plaintiffs’ claims on behalf of the purported Non-registered
Subclass be cured by repleading. Repositioning the claims asserted as to unregistered works
either so that the claimants are a part of a unitary purported class of claimants comprising those
with both registered and unregistered works or so as to create two putative subclasses both
represented by plaintiff White would not rectify the fatal deficiency inherent in seeking relief for
plaintiffs who have not registered their works. Granting leave to replead would be futile, for the
claims of class members who have no copyright registrations must be dismissed as a matter of
law regardless of which named plaintiff purports to represent them.
ARGUMENT
I.

THE SECTION 411(A) REGISTRATION REQUIREMENT IS A
“PRECONDITION TO FILING A CLAIM”
As the Supreme Court recognized in Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237

(2010), section 501(b) of the Copyright Act prescribes that a copyright owner claiming
infringement “‘is entitled, subject to the requirements of section 411, to institute an action’ for
copyright infringement.” Id. at 1241 (emphasis in original). Section 411(a), in turn, imposes “a
condition – copyright registration – that plaintiffs ordinarily must satisfy before filing an
infringement claim and invoking the Act’s remedial provisions.” Id. at 1242. This “precondition
to filing a claim” is excused in only three circumstances: “where the work is not a U.S. work,
where the infringement claim concerns rights of attribution and integrity under § 106A, or where
the holder attempted to register the work and registration was refused.” Id. at 1246-47. None of
these exceptions applies to Elan or to the Non-registered Subclass.

2

Post-Muchnick, federal courts, including this one, routinely dismiss infringement claims
under Rule 12(b)(6) where the plaintiff has not complied with section 411(a).1 See Jewel
Source, Inc. v. Primus Jewels, LLC, No. 11 Civ. 3941 (JSR), 2011 WL 4634019, at *2 (S.D.N.Y.
Oct. 3, 2011); Psihoyos v. John Wiley & Sons, Inc., No. 11 Civ. 1416 (JSR), 2011 WL 5980423,
at *2 (S.D.N.Y. Oct. 14, 2011) (holding that section 411(a) is both “an absolute ‘precondition’ to
suit” and an “element” of an infringement claim); West Br. 3-4 & n.1 (collecting cases).
Plaintiffs’ quibble with this Court’s description of copyright registration in Psihoyos as an
element of an infringement claim (Pl. Opp. Br. 6) is without merit; it is, in any event, of no
moment insofar as, however labeled, registration is an unambiguous prerequisite to an
infringement suit that Elan and the Non-registered Subclass have failed (by definition) to satisfy.
II.

NON-REGISTERED CLAIMANTS CANNOT AVOID THE COPYRIGHT ACT’S
REGISTRATION REQUIREMENT BY PURPORTING TO LIMIT THE RELIEF
SOUGHT TO INJUNCTIVE RELIEF
Evidently prepared to abandon their asserted claims for damages for Elan and the Non-

registered Subclass, plaintiffs argue erroneously that this Court may award injunctive relief to
putative class members who cannot satisfy section 411(a). They do so on two grounds. First,
they misread section 502 of the Copyright Act as authorizing a court to award injunctive relief to
a plaintiff that is not entitled to bring suit in the first place. Second, they misinterpret a body of
case law in which courts have awarded to plaintiffs who established a pattern of infringement of
their registered works injunctive relief that extended to those plaintiffs’ unregistered works as
somehow providing a legal path for Elan and the Non-Registered Subclass to secure injunctive
relief without their having registered even a single work. Both arguments lack merit.
1

Muchnick’s separate conclusion that the provisions of section 411 are not jurisdictional is
irrelevant to this motion and only would have had arguable bearing on this lawsuit had West not
moved to dismiss under Rule 12(b)(6).

3

A.

Neither Section 502 nor Section 412 of the Copyright Act Excuses a Failure
to Satisfy the Registration Requirement 

Plaintiffs contend that “Section 502 conditions the availability of injunctive relief only on
the court’s jurisdiction, not on registration,” and they suggest that because the registration
requirement is contained in a different chapter of the Copyright Act, it does not apply to claims
for injunctive relief. Pl. Opp. Br. 8-10. Plaintiffs’ “different chapter” argument is specious. It
ignores section 501(b), which expressly conditions a copyright owner’s entitlement to institute
“an action for any infringement” on compliance with section 411. 17 U.S.C. § 501(b).
Plaintiffs’ argument also proves too much. None of the other remedy provisions that
follow section 501(b), including section 504, which deals with actual damages and profits of the
infringer, expressly condition securing such remedies on prior copyright registration. Instead,
these provisions presuppose the right to sue. Were it otherwise, section 411 would have no
meaning; claimants of unregistered works would be free to ignore section 411 and sue for a
panoply of copyright infringement remedies, including injunctive relief, impounding and
disposition of infringing articles, actual damages, and the infringer’s profits. The purpose of
section 502, along with the remaining chapter 5 remedies, is to provide federal courts with the
discretion to award the prescribed relief for a successful infringement claim instituted in
compliance with section 411.2 No principle of statutory construction supports the proposition

2

Plaintiffs’ effort to distinguish the cases on which West relied in its opening brief on the ground
that they did not involve claims for injunctive relief (Pl. Opp. Br. 21-24) is simply wrong; the
complaints in those actions (as in most copyright cases) included prayers for injunctive relief.
See Complaint at 8-9, Jewel Source, Inc. v. Primus Jewels, LLC, No. 11 Civ. 03941 (JSR)
(S.D.N.Y. Apr. 25, 2011); Complaint at 3, Muench Photography, Inc. v. Houghton Mifflin
Harcourt Publ’g Co., No. 09 CV 2669 LAP (S.D.N.Y. 2010), 2011 WL 2947589; Complaint at
5, Psihoyos v. John Wiley & Sons, Inc., No. 11 Civ. 1416 (JSR) (S.D.N.Y. Mar. 1, 2011), 2011
WL 846898; Amended Complaint at 13, Mktg. Tech. Solutions, Inc. v. Medizine LLC, No. 09
Civ. 8122 (LMM) (S.D.N.Y. May 13, 2010), 2010 WL 3053685.

4

that a plaintiff who has no right to commence an infringement action nevertheless may be
awarded injunctive relief.3
Plaintiffs similarly mislead with their invocation of section 412 as a purported basis for
authorizing their pursuit of injunctive relief on behalf of claimants with unregistered works.
Section 412 conditions the availability of statutory damages and attorney’s fees on registration in
advance of infringement (or within three months of first publication), limiting the remedies
available to plaintiffs who register after infringement but before filing suit. 17 U.S.C. § 412.
That section 412, as an inducement to timely registration, limits the availability of certain
remedies where a copyright has been registered belatedly (albeit still before commencement of
suit) hardly supports the assertion that it implicitly nullifies section 411(a) by allowing owners of
copyrights in unregistered works to seek injunctive relief (or, by plaintiffs’ logic, all other
copyright remedies). Plaintiffs have identified no case that so holds.
As a last-ditch effort, Plaintiffs reach for – and blatantly mischaracterize – secondary
authority to support their attempted end-run of sections 411(a) and 501(b). They cite NIMMER
ON COPYRIGHT (“NIMMER”)

for the proposition that registration is not required for plaintiffs

seeking injunctive relief. See Pl. Opp. Br. 9. But NIMMER, correctly, states precisely the
opposite: that section 411(a)’s requirement that copyrights be registered in advance of instituting
civil actions for infringement of any United States work “extends to all such actions, including
3

Section 411(a) already contains certain express exceptions to the registration requirement. See
17 U.S.C. § 411(a); Muchnick, 130 S. Ct. at 1246. Had Congress had wanted to exempt from
section 411(a) actions seeking only injunctive relief, it surely would have done so expressly.
The legislative history confirms that Congress had no such intent. See H.R. Rep. No. 94-1476, at
157 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5773; see also H.R. Rep. No. 100-609, at 1925 (1988), reprinted in 1988 U.S.C.C.A.N. 3706, 3724-30 (noting public interest in preserving
registration requirement); S. Rep. No. 100-352 at 13 (1988), reprinted in 1988 U.S.C.C.A.N.
3706, 3718-19 (“[C]ompliance with copyright registration procedures is a statutory prerequisite
to the right of an author or other copyright proprietor to seek any redress, whether by injunction,
damages, or both, for infringement of the work.”) (emphasis added).

5

counterclaims, even if the only relief sought is an injunction.” 2-7 Melville B. Nimmer & David
Nimmer, NIMMER ON COPYRIGHT § 7.16[B][1][a] (2012) (emphasis added). Plaintiffs’
discussion of NIMMER also distorts through omission the passage from NIMMER that it quotes, as
the restored, bolded text below reveals:
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. As a
consequence, any court hearing a copyright action--whether
through submission of an appropriate registration certificate or
under any of the various situations in which no such certificate is
required--may order remedies such as seizure or injunction as
permitted by statute, without reference to when the registration
was filed, or even whether the precise items seized or enjoined
are covered by a registration certificate.
2-7 NIMMER § 7.16[C][3] (emphases added).
B.

Courts in This Circuit Uniformly Limit Injunctive Relief for Copyright
Infringement to Plaintiffs Who Have Proven Infringements as to Registered
Works

In contending that “courts have recognized that Section 502 authorizes federal courts to
issue injunctions barring the infringement of unregistered works” (Pl. Opp. Br. 10), Plaintiffs
have confused two very different situations. To be sure, courts in this Circuit and elsewhere
have recognized that it may be appropriate to award to a prevailing plaintiff who has
demonstrated a pattern of infringement as to registered works injunctive relief that extends to,
inter alia, future, as-yet unregistered works to be created by the plaintiff. See, e.g., In re Literary
Works in Elec. Databases Copyright Litig., 509 F.3d 116, 123 (2d Cir. 2007) (“In re Literary
Works”), rev’d on other grounds sub nom. Muchnick, 130 S. Ct. 1237 (2010); Olan Mills, Inc. v.
Linn Photo Co., 23 F.3d 1345 (8th Cir. 1994). This is quite different from allowing pursuit of
liability and injunctive relief predicated solely on unregistered works, as plaintiffs advocate. See,
6

e.g., DRK Photo v. Houghton Mifflin Harcourt Publ’g Co., No. CV-09-8225-PCT-NVW, 2010
WL 1688767, at *1 (D. Ariz. Apr. 26, 2010) (dismissing claims for infringement of unregistered
works because they “cannot as a matter of law” be used to establish liability).
This salient distinction was drawn by the Second Circuit in In re Literary Works. There,
after noting that “we have never held that a district court may enjoin the infringement of
unregistered copyrights,” the Second Circuit opined that the limited extent to which injunctive
relief might be available with respect to unregistered works arises in the circumstance where the
copyright owner has prevailed on claims involving registered works:
[E]ven if injunctive relief against infringement of an unregistered
copyright is available, that relief is properly limited to situations,
as were found to exist in Olan Mills and Pacific and Southern Co.,
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. That sort of prophylactic relief furthers the purposes of
the Copyright Act generally and does not undermine the intended
effect of section 411(a).
Id. at 123. The court of appeals expressly declined to extend that principle to the unregistered
works of other parties, as plaintiffs urge the Court to do here. Id.
With one exception,4 the cases on which plaintiffs rely merely illustrate the
uncontroversial principle that injunctions may be entered covering unregistered works where the
plaintiff established a pattern of infringement of its registered works. See, e.g., Olan Mills, 23
F.3d at 1349; Tattoo Art, Inc. v. TAT Int’l, LLC, 794 F. Supp. 2d 634, 666-67 (E.D. Va. 2011);
4

The only case plaintiffs cite that supports the proposition that a plaintiff has standing to seek
injunctive relief absent even an attempt to register the subject work, Criterion 508 Solutions, Inc.
v. Lockheed Martin Servs., 806 F. Supp. 2d 1078, 1106 (S.D. Iowa 2009) (cited in Pl. Opp. Br.
11), was wrongly decided, as leading commentators have noted. Criterion 508 Solutions relied
on Walker Mfg., Inc. v. Hoffman, Inc., 220 F. Supp. 2d 1024 (N. D. Iowa 2002), which, as
copyright authority William Patry explains, “confused prior decisions … [and] is erroneously
decided.” William Patry, PATRY ON COPYRIGHT § 17.78 (2012). Accord 2-7 NIMMER §
7.16[B][3][b][vi] n.282.

7

Interscope Recordings v. Tabor, Civil No. 08-03068, 2009 WL 708322, at *2 (W.D. Ark. Mar.
16, 2009) (default judgment). Plaintiffs here, by contrast, ask the Court to award injunctive
relief for many thousands of putative class members who have not registered copyrights on the
basis that different works, owned by different parties, in a different subclass are registered. The
Court should decline this invitation to gut section 411.
III.

THE DECLARATORY JUDGMENT ACT DOES NOT EXCUSE PLAINTIFFS’
FAILURE TO REGISTER THE COPYRIGHTS ALLEGED TO BE IN ISSUE
Plaintiffs’ contention that they can maintain a declaratory judgment action seeking a

declaration of infringement even where suit is not authorized by the Copyright Act is equally
misguided. See Pl. Opp. Br. 16-18. As a threshold matter, plaintiffs have not sued under the
Declaratory Judgment Act; they have instead merely sought a declaration of infringement as part
of the relief in an infringement action. If what plaintiffs are seeking is simply a ruling on the
merits rather than an actual declaratory judgment – as appears to be the case – the Court should
oblige by holding that failure to register requires dismissal on the merits under Rule 12(b)(6).
Even were this a proper declaratory judgment action, plaintiffs’ argument still would fail.
As a matter of statutory construction, a general statute such as the Declaratory Judgment Act
does not override a more specific one such as the Copyright Act. See, e.g., Morton v. Mancari,
417 U.S. 535, 550-51 (1974) (“Where there is no clear intention otherwise, a specific statute will
not be controlled or nullified by a general one . . . .”); Greene v. United States, 79 F.3d 1348,
1355 (2d Cir. 1996) (“When two statutes are in conflict, that statute which addresses the matter
at issue in specific terms controls over a statute which addresses the issue in general terms,
unless Congress has manifested a contrary aim.”).
Moreover, the case law does not support the premise that section 411’s registration
requirements are somehow waived where “all” that a declarant seeks is an affirmative ruling that

8

his copyrights have been infringed. To so hold would be to adopt an illusory distinction between
“an action for any infringement,” which plainly requires compliance with section 411 (see
section 501(b)), and “an action for a declaration of infringement” which, according to plaintiffs,
would not. What the existing authority indicates, to the contrary, is that a declaratory judgment
of non-infringement may be available to a party threatened with infringement without a precondition that the copyright owner first have registered the works in issue.
Both of the cases on which plaintiffs rely (see Pl. Opp. Br. 17-18) involved declaratory
judgment actions commenced by potential defendants to copyright infringement actions in
anticipation of affirmative copyright infringement suits by the copyright owners/declaratory
judgment defendants. See Telebrands Corp. v. Exceptional Prods., No. 11-CV-2252, 2011 WL
6029402, at *3 (D.N.J. Dec. 5, 2011); Sportsman’s Warehouse, Inc. v. Fair, 576 F. Supp. 2d
1175, 1179-80 (D. Colo. 2008). Further, Telebrands recognized that an affirmative action by a
copyright owner would require registration to survive a motion to dismiss, and the work at issue
in Sportsman’s Warehouse was registered. See Telebrands, 2011 WL 6029402, at *3 (“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)”); Sportsman’s Warehouse, Inc., 576
F. Supp. 2d at 1191. Plaintiffs’ ipse dixit assertion that if relief is available to a declaratory
judgment plaintiff seeking a declaration of non-infringement in the absence of a copyright
registration, it also must be available to a copyright owner seeking a declaration of infringement
does not withstand scrutiny. Tellingly, the only case they cite for this novel proposition involved
a registered work. See Davis v. The Gap, Inc., 246 F.3d 152, 156, 158 n.1 (2d Cir. 2001) (cited
in Pl. Opp. Br. 18).5

5

Plaintiffs’ citation to NIMMER (Pl. Opp. Br. 16) is again wrenched out of context. NIMMER’s
9

IV.

PLAINTIFFS’ REQUEST FOR LEAVE TO REPLEAD SHOULD BE DENIED
Plaintiffs’ alternate request for leave to replead should be denied as futile. The premise

of the request – that West’s motion is directed primarily to whether Elan is an adequate class
representative (see Pl. Opp. Br. 2, 24) – is erroneous. The motion to dismiss is based on the
failure of Elan and the Non-registered Subclass to comply with section 411, rendering their
infringement claims deficient as a matter of law. This defect cannot be cured by repleading to
designate a new representative; the Non-registered Subclass is deficient by definition.
Accordingly, the dismissal should be with prejudice.
CONCLUSION
For the reasons explained above and in West’s opening brief, the claims of the putative
Non-registered Subclass and proposed class representative Kenneth Elan should be dismissed
with prejudice pursuant to Fed. R. Civ. P. 12(b)(6).
Respectfully submitted,
WEIL, GOTSHAL & MANGES LLP
By:

/s/ Benjamin E. Marks
R. Bruce Rich (RR-0313)
Benjamin E. Marks (BM-0796)
Jonathan Bloom (JB-7966)
John R. Gerba (JG-4947)
767 Fifth Avenue
New York, New York 10153
[phone]
[e-mail]

Attorneys for Defendant West Publishing Corp.

suggestion that a court may award declaratory relief as to unregistered copyrights referred to the
setting, discussed above, in which an adjudication of liability has occurred with respect to
registered works (or otherwise falling under one of section 411’s exceptions). See 2-7 NIMMER §
7.16[C][3] & n.500.

10