Young-Wolff v. The McGraw Hill Companies
Filing
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OPINION AND ORDER: For the foregoing reasons, the Court DENIES Defendants motion to dismiss as it applies to Plaintiff's copyright infringement claim, but GRANTS the motion as it applies to the unjust enrichment claim. In order to proceed with the copyright claim, however, Plaintiff must submit an amended Exhibit 1 to the First Amended Complaint by April 8, 2015. The current version of that exhibit appears to contain several incomplete publication titles. (See, e.g., FAC Ex. 1 at 1 (listing publication titles "Understanding Human" and "Core Concepts in")). The amended version must list all titles in full. (Signed by Judge Kimba M. Wood on 3/27/2015) (kl)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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DAVID YOUNG-WOLFF,
Plaintiff,
13-CV-4372 (KMW)
OPINION and ORDER
-againstMcGRAW-HILL SCHOOL EDUCATION
HOLDINGS, LLC and McGRAW-HILL GLOBAL
EDUCATION HOLDINGS, LLC,
Defendants.
---------------------------------------------------------------X
KIMBA M. WOOD, U.S.D.J.:
Plaintiff David Young-Wolff, a professional photographer, claims that Defendants
McGraw-Hill School Education Holdings and McGraw-Hill Global Education Holdings
infringed his copyrights in hundreds of photographs by using the images outside the scope of
applicable licenses. The Court dismissed Plaintiff’s initial complaint because it did not
adequately plead the time period of Defendants’ alleged infringement. Young-Wolff v. McGrawHill Companies, No. 13-CV-4372, 2014 WL 349711, at *5 (S.D.N.Y. Jan. 31, 2014). Plaintiff
then filed his First Amended Complaint (“FAC”), which reiterates the initial complaint’s
allegations and adds new pleadings concerning the timing of infringement. The FAC also adds
an unjust enrichment claim as an “alternative” cause of action.
Defendants have moved to dismiss the FAC in its entirety. (See Def. Mot. to Dismiss
Mem. [ECF No. 32]; Def. Mot. to Dismiss Reply [ECF No. 34]). They make three arguments:
(1) that the FAC fails to adequately plead the nature of Defendants’ infringement because it does
not specify which license terms Defendants violated; (2) that the FAC fails to adequately plead
the time period of Defendants’ infringement because its allegations concerning timing are
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implausible and insufficiently specific; and (3) that the unjust enrichment claim is preempted by
the Copyright Act.
For the reasons that follow, the Court DENIES Defendants’ motion to dismiss as it
applies to the copyright infringement claim, but GRANTS the motion as it applies to the unjust
enrichment claim.
I.
Background
Plaintiff filed his initial complaint against the McGraw-Hill Companies (“MHC”), a
publisher of textbooks and other educational materials. The complaint alleged that Plaintiff
owned the copyrights for hundreds of photographs; that he or a licensing agent had granted MHC
limited licenses for those photographs; and that MHC had committed copyright infringement
when it “copied and distributed” the photographs “either without authorization or in excess of
limited licenses.” (Compl. ¶¶ 6–10 [ECF No. 1]). The complaint identified eight specific ways
in which MHC had infringed Plaintiff’s copyrights:
Publishing Plaintiff’s works without permission;
Reusing Plaintiff’s works in subsequent editions of titles without obtaining a valid
license prior to publication;
Publishing Plaintiff’s works prior to obtaining a valid license;
Exceeding the limitations of licenses by printing more copies of the publications
than was authorized;
Exceeding the limitations of licenses by publishing Plaintiff’s works in electronic,
ancillary, or derivative publications without permission;
Exceeding the limitations of licenses by publishing Plaintiff’s works in foreign
editions of publications without permission;
Exceeding the limitations of licenses by distributing publications outside the
authorized distribution area; and/or
Refusing to provide usage information to Plaintiff relating to photographs owned
by Plaintiff.
Id. ¶ 26.
Exhibit 1 to the initial complaint, a spreadsheet, listed the photographs allegedly
infringed and provided four types of information for each image: (1) an image number; (2) a
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description of the image; (3) the title of an MHC publication in which the image appeared; and
(4) the name of the licensing agent, if any, that negotiated a license for the photograph with
MHC. Id. Ex. 1. The complaint did not identify precisely how Defendants infringed each
particular photograph. It also failed to make any allegation about when Defendants’
infringement took place.
The Court dismissed the initial complaint’s copyright claim as inadequately pled because
it failed to allege the time period of MHC’s infringement. Young-Wolff, 2014 WL 349711, at *5.
A properly pled copyright claim, the Court explained, must allege four distinct types of
information, often called “Kelly factors”:
1) which specific original works are the subject of the copyright claim, 2) that
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.
Id. at *2 (citing Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992) (Connor, J.), aff’d sub
nom. Kelly v. L.L. Cool J, 23 F.3d 398 (2d Cir. 1994)). There was no dispute that the initial
complaint adequately pled the first two Kelly factors, and the Court held that it also adequately
pled the third factor. Id. at *2–3. But the initial complaint failed to adequately plead the fourth
Kelly factor. Although it sufficiently alleged “by what acts” MHC infringed Plaintiff’s
copyrights, the initial complaint failed to identify “during what time” those acts of infringement
took place. Id. at *4–5.
Plaintiff then filed the FAC, which names Defendants as corporate successors to MHC.
The FAC reiterates the initial complaint’s factual allegations, with two additions related to the
timing of infringement. First, alongside the image number, image description, publication title,
and licensing agent for each photograph allegedly infringed, the FAC identifies the date of a
license invoice or royalty statement. (See FAC Ex. 1). Second, the FAC alleges that
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Defendants’ infringement “occurred on or about or in close proximity to [those] dates,” or
“shortly after.” (FAC ¶¶ 37–38).
The FAC also adds a new claim for unjust enrichment. That claim is styled as an
“alternative” cause of action, for which Plaintiff could recover only “in the event that
[Defendants’] misconduct does not constitute copyright infringement.” Id. ¶ 48.
II.
Copyright Infringement
Defendants argue that the FAC’s copyright claim must be dismissed because it fails to
adequately plead either the nature or the time period of Defendants’ alleged infringement. The
Court disagrees.
A. Nature of Infringement
Like the initial complaint, the FAC identifies eight ways in which Defendants infringed
Plaintiff’s copyrights, including the following four ways in which Defendants violated applicable
license restrictions:
Exceeding the limitations of licenses by printing more copies of the publications
than was authorized;
Exceeding the limitations of licenses by publishing Plaintiff’s works in electronic,
ancillary, or derivative publications without permission;
Exceeding the limitations of licenses by publishing Plaintiff’s works in foreign
editions of publications without permission;
Exceeding the limitations of licenses by distributing publications outside the
authorized distribution area.
(FAC ¶ 30; cf. Compl. ¶ 26). As the Court previously explained when analyzing the initial
complaint, those allegations adequately describe “by what acts” Defendants infringed Plaintiff’s
copyrights. See Young-Wolff, 2014 WL 349711, at *4–5. By specifying eight particular types of
infringement, the FAC “provides sufficient notice . . . as to how the copyrights at issue have been
infringed, as [Defendants] may, in an abundance of caution, assume that [they are] being accused
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of violating each license in every way identified.” Warren v. John Wiley & Sons, Inc., 952 F.
Supp. 2d 610, 618 (S.D.N.Y. 2013) (Oetken, J.) (internal quotation marks omitted).
Defendants’ argument to the contrary is unpersuasive. Disregarding the reasoning behind
the Court’s previous holding, Defendants contend that the FAC fails to adequately plead which
“license terms” were violated. (Def. Mot. to Dismiss. Reply at 7; see also Def. Mot. to Dismiss
Mem. at 9–11). As noted above, however, the FAC identifies four types of license restrictions
that Defendants disregarded. (See FAC ¶ 30). That pleading is sufficient to provide fair notice
of the nature of the alleged infringement. To the extent that Defendants demand more
specificity — including which individual license terms were violated for each particular
photograph — they misconstrue the applicable pleading standard. See Lefkowitz v. McGraw-Hill
Global Educ. Holdings, LLC, 23 F. Supp. 3d 344, 354 (S.D.N.Y. 2014) (Failla, J.) (holding that
the plaintiff’s failure to identify “information regarding the license limits” for each allegedly
infringed photograph “does not render the FAC insufficient, because Plaintiff need not include
these allegations in order to plead his claim for copyright infringement adequately”); Warren,
952 F. Supp. 2d at 618 (“[I]t is not fatal to Young–Wolff's copyright claim that the Complaint
fails to specify how each particular photograph has been infringed.”); Palmer Kane LLC v.
Scholastic Corp., 12-CV-3890, 2013 WL 709276, at *3 (S.D.N.Y. Feb. 27, 2013) (Griesa, J.)
(“[T]he complaint need not specify which copyright is infringed by which act.”).
B. Time Period of Infringement
Unlike the initial complaint, the FAC alleges a time period for Defendants’ infringement:
“in close proximity to” or “shortly after” the invoice and royalty statement dates identified in
Exhibit 1. Construing those allegations in the light most favorable to Plaintiff, the Court reads
the FAC as pleading that (1) any act of “[p]ublishing Plaintiff’s works prior to obtaining a valid
license,” (FAC ¶ 30), took place before, but “in close proximity to,” the invoice and royalty
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statement dates; and (2) any act of “[e]xceeding the limitations of licenses” or “[r]eusing
Plaintiff’s works in subsequent editions of titles without obtaining a valid license prior to
publication,” id., took place “shortly after” the invoice and royalty statement dates.
By pleading that Defendants’ infringement took place either shortly before or shortly
after particular dates related to each photograph’s license, the FAC provides fair notice of the
approximate timing of Defendants’ alleged wrongdoing. The FAC’s copyright claim thus
remedies the initial complaint’s deficiency and satisfies both the fourth Kelly factor and Federal
Rule of Civil Procedure 8. See Lefkowitz, 23 F. Supp. 3d at 354 (“Plaintiff has . . . adequately
alleged a time period by asserting that, upon information and belief, Defendants engaged in the
infringing conduct after the invoice date listed [for each photograph]. This allegation provides
the starting date on which Defendants are alleged to have infringed, and therefore sufficiently
identifies the time period during which the infringement may have occurred.”); Senisi v. John
Wiley & Sons, Inc., No. 13-CV-3314 [ECF No. 43], at 9 (S.D.N.Y. Mar. 28, 2014) (Swain, J.)
(“Senisi Opinion”) (concluding that a complaint listing invoice or royalty statement dates for
infringed photographs, and alleging that the infringement took place “in close proximity to or
shortly after” those dates, was “sufficient to indicate the approximate time frame” of
infringement)1; E. Broadcasting Am. Corp. v. Universal Video, Inc., No. 04-CV-5654, 2006 WL
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In concluding that the Senisi plaintiffs had provided sufficient information about the timeframe of
infringement, Judge Swain noted that the plaintiffs also identified “the edition of the publication in which [each]
photograph was published,” “the license start dates,” and “the authorized print run.” (Senisi Opinion at 9).
Defendants argue that Senisi is distinguishable because Plaintiff failed to provide those additional types of
information in the FAC. (See Def. Mot. to Dismiss Reply at 4).
The Court disagrees. Of the three additional types of information that Judge Swain mentioned in Senisi,
only “license start dates” would be relevant to the time period (as distinct from the nature) of the alleged
infringement. Those dates, although potentially helpful to a defendant, are not necessary to adequately plead
“during what time” infringement occurred. Invoice and royalty statement dates alone can provide adequate notice of
timing, where infringement is alleged to have occurred “in close proximity to” or “shortly after” those dates.
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767871, at *3 (E.D.N.Y. Mar. 24, 2006) (holding that the plaintiff sufficiently alleged the time
frame of copyright infringement by alleging that it took place “on or before” a particular date).
Defendants’ arguments to the contrary are unavailing. They contend, first, that the
FAC’s timeline for infringement is not “plausible on its face,” as required by Bell Atlantic Corp.
v. Twombly, 550 U.S. 544, 570 (2007). But it is plausible, under Twombly’s definition of the
term, that Defendants’ infringement occurred during a time period ranging from shortly before to
shortly after the invoice and royalty statement dates for Plaintiff’s photographs. Cf. Senisi
Opinion at 9 (approving pleading that the defendant’s infringement occurred “in close proximity
to or shortly after” invoice and royalty statement dates). Defendants also contend that the FAC’s
timeline for infringement — even if plausible — is “too imprecise to satisfy the pleading
requirements for a copyright claim,” because the phrases “in close proximity to” and “shortly
after” are too “vague” to “satisfy the ‘fair notice’ requirement under Rule 8(a).” (Def. Mot. to
Dismiss Mem. at 8–9). As explained above, the Court disagrees. The FAC’s language, although
somewhat imprecise, provides fair notice of the approximate time period of Defendants’ alleged
infringement. That is all that Rule 8 requires. Cf. Lefkowitz, 32 F.Supp.3d at 354; Senisi
Opinion at 9.
III.
Unjust Enrichment
The Copyright Act preempts a state law claim “when: (1) the particular work to which
the claim is being applied falls within the type of works protected by the Copyright Act . . . and
(2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle
of exclusive rights already protected by copyright law under 17 U.S.C. § 106.” Briarpatch Ltd.,
L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004). In other words, when a state
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law claim is essentially identical to a copyright infringement claim, the state law claim is
preempted.
Under that standard, an unjust enrichment claim is generally preempted where it seeks
damages for the unauthorized use of a copyrighted work. Such a claim is essentially identical to
a copyright infringement claim, because it is premised on the violation of a copyright. See, e.g.,
Atrium Grp. De Ediciones Y Publicaciones, S.L. v. Harry N. Abrams, Inc., 565 F. Supp. 2d 505,
509 (S.D.N.Y. 2008) (McMahon, J.) (barring an unjust enrichment claim that sought damages
for unauthorized use of copyrighted works). But an unjust enrichment claim is not preempted if
it seeks relief based on the defendant’s use of a non-copyrighted work or authorized use of a
copyrighted work, neither of which involves the violation of a copyright. See, e.g., Ulloa v.
Universal Music & Video Distribution Corp., 303 F. Supp. 2d 409, 419 (S.D.N.Y. 2004) (Jones,
J.) (holding that an unjust enrichment claim that sought relief based on the defendant’s use of a
non-copyrighted work or authorized use of a copyrighted work was not preempted by the
Copyright Act). A plaintiff may plead a non-preempted unjust enrichment claim “in the
alternative” to a copyright infringement claim, where the existence (and thus the violation) of an
underlying copyright is in dispute. See id. (permitting this type of alternative pleading).
In the FAC, Plaintiff pleads his unjust enrichment claim as follows:
48. In the alternative, Plaintiff alleges that, in the event that McGraw-Hill’s
misconduct does not constitute copyright infringement then its misconduct
constitutes unjust enrichment under New York, California, and/or the common law.
49. In the event that McGraw-Hill contends that its use of Plaintiffs’ photos outside
the or beyond the terms of its license does not constitute a license violation and thus
an infringement of Plaintiff’s copyrights, then McGraw-Hill’s misuse of Plaintiff’s
photos still violated Plaintiff’s rights to the extent that McGraw-Hill was unjustly
enriched by its excessive and/or uncompensated use of Plaintiff’s photos.
50. In each instance that McGraw-Hill used Plaintiff’s photos without obtaining a
license and/or beyond the terms of its limited license, McGraw-Hill either failed to
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pay the requisite license fee and/or paid a lower license fee than was required for
the actual uses it made of Plaintiff’s photos. In both cases, McGraw-Hill’s
misconduct deprived Plaintiff of his rightful license fees and/or royalties.
(FAC ¶¶ 48–50).
Plaintiff’s unjust enrichment claim is preempted because it seeks damages for the
violation of his copyrights, in the form of wrongfully withheld “license fees and/or royalties.”
Id. ¶ 50. Plaintiff does not seek relief on the alternative factual premise that his photographs
were not copyrighted, or that Defendants’ use of the images was licensed. Cf. Ulloa, 303 F.
Supp. 2d at 419. Rather, Plaintiff restates the premise for his copyright infringement claim and
then proposes the doctrine of unjust enrichment as an alternative vehicle for recovering royalties
owed. That type of claim is impermissible. See Briarpatch, 373 F.3d at 305.
IV.
Conclusion
For the foregoing reasons, the Court DENIES Defendants’ motion to dismiss as it applies
to Plaintiff’s copyright infringement claim, but GRANTS the motion as it applies to the unjust
enrichment claim.
In order to proceed with the copyright claim, however, Plaintiff must submit an amended
Exhibit 1 to the First Amended Complaint by April 8, 2015. The current version of that exhibit
appears to contain several incomplete publication titles. (See, e.g., FAC Ex. 1 at 1 (listing
publication titles “Understanding Human” and “Core Concepts in”)). The amended version must
list all titles in full.
SO ORDERED.
Dated: New York, New York
March 27, 2015
/s/
Kimba M. Wood
United States District Judge
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