Lefkowitz v. John Wiley & Sons, Inc.

Filing 41

OPINION AND ORDER re: 26 MOTION for Judgment on the Pleadings, filed by John Wiley & Sons, Inc. For the foregoing reasons, Defendant's motion is GRANTED in part and DENIED in part. To the extent Plaintiff's copyright infringement claim includes works not listed on the Lefkowitz Chart, those claims are dismissed. Defendant's motion with respect to Plaintiff's direct copyright infringement claim is otherwise denied. Defendant's motion with respect to Plaintiff 's contributory copyright infringement and breach of contract claims is granted, and those claims are dismissed without prejudice. The Clerk of Court is directed to terminate Docket Entry No. 26. Plaintiff is granted leave to file a second ame nded complaint consistent with this Opinion to cure the pleading deficiencies for Plaintiff's contributory copyright infringement claim. Plaintiff shall file his second amended complaint within four weeks from the date of this Opinion, and Plaintiff's failure to do so will result in the entry of dismissal of that claim. The Court will schedule the next pretrial conference in due course. SO ORDERED. (Signed by Judge Katherine Polk Failla on 6/2/2014) (ja)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
--------------------------------------------------------X
:
LESTER LEFKOWITZ,
:
:
Plaintiff,
:
:
v.
:
:
JOHN WILEY & SONS, INC.,
:
:
Defendant.
:
:
-------------------------------------------------------- X

USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #: _________________
DATE FILED: ______________
June 2, 2014

13 Civ. 6414 (KPF)
OPINION AND ORDER

KATHERINE POLK FAILLA, District Judge:
Plaintiff Lester Lefkowitz claims copyright infringement, contributory
copyright infringement, and breach of contract against Defendant John Wiley &
Sons, Inc., based on Defendant’s alleged use of Plaintiff’s photographs beyond
the scope of Defendant’s licenses and without Plaintiff’s authorization. 1
Defendant has moved, pursuant to Federal Rule of Civil Procedure 12(c), to
dismiss all of Plaintiff’s claims for failure to state a claim; to dismiss Plaintiff’s
infringement claims to the extent those claims are barred by the statute of
limitations; and to dismiss Plaintiff’s breach of contract claim for lack of
standing.
1

Also pending before the Court is Lefkowitz v. McGraw-Hill Global Education Holdings,
LLC, et al., No. 13 Civ. 5023 (KPF), a related action commenced by Plaintiff against
defendants McGraw-Hill Global Holdings, LLC and McGraw Hill School Education
Holdings, LLC (the “McGraw Action”); there, Plaintiff asserts similar claims for copyright
infringement and breach of contract, but not for contributory copyright infringement.
The defendants in the McGraw Action have moved to dismiss Plaintiff’s claims on the
same bases as Defendant moves here. As would be expected, given the identity of
issues (and of counsel), the parties have advanced nearly identical arguments. For this
reason, the Court’s Opinions in both cases, which are being issued on the same day,
mirror one another in certain respects.

For the reasons set forth in the remainder of this Opinion, Defendant’s
motion is granted in part and denied in part. Specifically, because there are
insufficient facts before the Court to determine whether Plaintiff’s infringement
claims are barred by the statute of limitations, Defendant’s motion in this
regard is denied. Defendant’s motion to dismiss Plaintiff’s copyright
infringement claim is likewise denied because Plaintiff has sufficiently pleaded
this cause of action. Conversely, because Plaintiff has failed adequately to
plead a claim for contributory copyright infringement, Defendant’s motion to
dismiss that claim is granted. Finally, Plaintiff is estopped from asserting his
breach of contract claim in the instant case because a United Stated District
Court in the District of Massachusetts has already held that Plaintiff lacks
standing to assert this claim.
BACKGROUND 2
A.

Plaintiff’s Photographs and Licensing Relationships
Plaintiff Lefkowitz is an independent professional photographer residing

in New York. (FAC ¶ 2). Plaintiff is the owner of an exclusive right under the
2

The facts set forth herein are taken from Plaintiff’s First Amended Complaint (“FAC”),
including the exhibits attached thereto, and matters of public record of which the Court
may properly take judicial notice under Federal Rule of Evidence 201. Kramer v. Time
Warner Inc., 937 F.2d 767, 773-74 (2d Cir. 1991) (holding that a court may consider
matters of which judicial notice may be taken under Fed. R. Evid. 201). The facts
drawn from Plaintiff’s FAC are taken as true for purposes of this motion. See Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 555 (2007) (“Factual allegations must be enough to
raise a right to relief above the speculative level, on the assumption that all the
allegations in the complaint are true (even if doubtful in fact).” (internal citation
omitted)).
For convenience, Defendant’s supporting memorandum is referred to as “Def. Br.”;
Plaintiff’s opposition memorandum is referred to as “Pl. Opp.”; and Defendant’s reply
memorandum is referred to as “Def. Reply.”

2

copyright laws in the photographs displayed in Exhibit 1 to Plaintiff’s FAC (the
“Lefkowitz Images”). (Id. at ¶ 8, Ex. 1). The Lefkowitz Images have been
registered with the United States Copyright Office. (Id. at ¶ 9).
On or about June 23, 1997, and July 27, 2000, Plaintiff entered into
agreements (the “TSM Agreements”) with The Stock Market (“TSM”), a stockphotograph licensing agency. (FAC ¶ 10). The TSM Agreements authorized
TSM to issue limited licenses for use of the Lefkowitz Images by third parties,
in exchange for “reasonable license fees.” (Id.). The TSM Agreements also
appointed TSM as Plaintiff’s “exclusive agent … with respect to the licensing of
[his] stock images[,]” and specified that TSM would not license any images “on
a buy-out or exclusive basis” without prior consent. (Id. at ¶ 11, Ex. 2 ¶ 1(d),
Ex. 3 ¶ 1(d)).
On March 23, 2000, the TSM Agreements were assigned to Corbis
Corporation (“Corbis”), another company that licenses the rights to
photographs and other media. (FAC ¶ 12, Ex. 4). Plaintiff acceded to that
assignment “with the understanding that all the terms and conditions of [his]
current contract with [TSM would] remain in full force and effect.” (Id.). Under
the relevant agreements, both TSM and Corbis were required to pay to Plaintiff
a portion of the fees that they received for licensing Plaintiff’s images. (Id. at
¶ 43).
Plaintiff also subsequently entered into a Photographer Representation
Agreement with Corbis dated February 12, 2003 (the “Representation
3

Agreement”), pursuant to which Corbis was authorized to grant third parties
limited-use licenses for Plaintiff’s photographs. (FAC ¶ 13, Ex. 5). The
Representation Agreement also provided:
Corbis, in its sole discretion and without obligation to do so, shall
have full and complete authority to make and settle claims or to
institute proceedings in Corbis’ or your name but at Corbis’
expense to recover damages for Accepted Images lost or damaged
by customers or other parties and for the unauthorized use of
Accepted Images…. Any recovery, after payment of all costs and
expenses including outside attorneys’ fees, shall be treated as
Revenue and you shall receive the appropriate royalty, or 100% in
the case of lost/damages images. Following your notification, if
Corbis declines to bring such a claim within sixty (60) days, we
shall notify you, and you may bring actions in your own name at
your own expense and retain all recoveries.
(Id., Ex. 5).
B.

Defendant’s Alleged Use of the Lefkowitz Images
Defendant John Wiley & Sons, Inc., is a global publisher of, among other

things, educational materials, including textbooks for undergraduate and
graduate students. (FAC ¶ 6). Many of Defendant’s publications contain
contributions from other sources, including photographs licensed to Defendant
by third parties. (Id. at ¶ 7).
Plaintiff alleges that between 1999 and 2011, TSM and Corbis sold
Defendant limited licenses to use copies of the Lefkowitz Images in numerous
educational publications. (FAC ¶ 16). Although Plaintiff alleges that these
licenses were “expressly limited by number of copies, distribution area, image
size, language, duration and/or media (print or electronic)” (id. at ¶ 17), neither
party has provided the Court with the relevant licenses for the images at issue.
4

Instead, Plaintiff attaches to the FAC two standard Corbis license
agreements — dated November 19, 2011, and June 2005 (the “Corbis
Agreements”) — that Plaintiff alleges were incorporated into the specific CorbisDefendant licensing agreements, and thus govern the Corbis-Defendant
licensing arrangement. (FAC ¶ 45, Ex. 7). Under the Corbis Agreements,
among other things:
Corbis in its sole discretion reserves the right to bill [the customer]
(and [the customer] hereby agrees to pay) ten (10) times the normal
license fee for any unauthorized use, in addition to any other fees,
damages, or penalties Corbis may be entitled to under this
agreement or applicable law.
(Id. at Ex. 7, Nov. 19, 2001 agreement (the “Ten Times Provision”)).
1.

Defendant’s Direct Copyright Infringement

As relevant here, Plaintiff identifies 66 instances of alleged infringement
by Defendant in a chart included as Exhibit 1 to the FAC (the “Lefkowitz
Chart”). (FAC, Ex. 1). 3 The Lefkowitz Chart is a summary of information that
Plaintiff derived from Plaintiff’s royalty statements from TSM and Corbis. (Id. at
¶ 16). The summary includes a copy of the image, the author and description
of the image, the image identification number, the copyright registration
number and date, an invoice date, and the particular imprint of Defendant’s
that licensed Plaintiff’s image. (Id. at Ex. 1).

3

Because particular photographs can be the subject of multiple instances of
infringement, the number of instances of alleged infringement does not correlate
precisely with the number of images at issue. When the Court refers to an instance of
infringement, it is referring to a line of the Lefkowitz Chart.

5

Plaintiff alleges, upon information and belief, that Defendant exceeded
the permitted uses under the terms of its licenses with TSM and Corbis for the
Lefkowitz Images, in publications both of which Plaintiff is aware and others
“yet to be discovered.” (FAC ¶ 19). Specifically, Plaintiff contends that
Defendant
copied the [the Lefkowitz Images] in numbers exceeding the limited
print quantities in the licenses, displayed [the Lefkowitz Images]
online or in digital media without permission to do so, distributed
the [the Lefkowitz Images] in geographic territories that were not
authorized, and copied [the Lefkowitz Images] in custom, statespecific, language, or international editions without permission to
do so.
(Id. at ¶ 34).
Plaintiff attests that the infringing conduct occurred after the invoice
date for each instance on the Lefkowitz Chart. (FAC ¶ 34). As for the
particular publications in which the alleged infringement occurred, Plaintiff
identifies nine of Defendant’s publications in which he alleges his photographs
appear, although Plaintiff neither limits the instances of infringement to these
publications, nor identifies which photographs in these publications were
allegedly infringed. (Id. at ¶ 28). Plaintiff alleges that he does not have this
specific information, inasmuch as the royalty statements did not specify the
publication title in which his photographs would appear or the license limits for
the image to which the invoice pertained. (Id. at ¶ 32). Instead, Plaintiff

6

maintains that Defendant has custody of this information because it is
identified in Defendant’s licenses with TSM and Corbis. (Id. at ¶ 33). 4
2.

Defendant’s Contributory Copyright Infringement

The FAC also includes allegations concerning Defendant’s purported
contributory infringement. In this regard, Plaintiff asserts that Defendant
facilitated the international distribution of its publications and, in the course of
so doing, Defendant reproduced and distributed Plaintiff’s images without his
permission to “other entities, subsidiary companies, divisions, affiliates and/or
third parties (‘Third Parties’).” (FAC ¶ 37). Without Plaintiff’s permission, the
allegations continue, the Third Parties included Plaintiff’s photographs in
publications that had been translated into additional languages or published in
local adaptations or reprints. (Id. at ¶ 38).
Plaintiff alleges that “[b]y transmitting [the Lefkowitz Images] to the Third
Parties, Wiley enabled, induced, caused, facilitated, or materially contributed to
the Third Parties’ unauthorized reproduction and distribution of [the Lefkowitz
Images].” (FAC ¶ 38). Plaintiff does not, however, identify any of the Third
Parties who engaged in this alleged conduct.
3.

Defendant’s Pattern of Infringement

Finally, the FAC devotes an entire section to allegations regarding
Defendant’s pattern of infringement. In particular, Plaintiff alleges that

4

According to Plaintiff, prior to filing his complaint, Plaintiff asked Defendant to disclose
its unauthorized uses of his photographs. (FAC ¶ 35). As of the time of the filing of the
complaint, Defendant had not responded to Plaintiff’s request. (Id.).

7

Defendant has a general practice of infringing copyrights on the photographs it
licenses for inclusion in its publications by exceeding the terms of the
individual license agreements. (FAC ¶ 23). Plaintiff also identified numerous
lawsuits in which Defendant has been sued for copyright infringement,
including some in which juries have found Defendant liable for copyright
infringement. (Id. at ¶¶ 23-27).
C.

The Instant Litigation
Plaintiff commenced this action on April 1, 2013, by filing his complaint

in the United States District Court for the Eastern District of Pennsylvania.
(Dkt. #1). On May 13, 2013, Defendant moved to dismiss the complaint under
Federal Rule of Civil Procedure 12(b)(6) or, in the alternative, to transfer venue
to the Southern District of New York based on the forum selection clauses
contained in all the agreements referenced in the complaint. (Dkt. #5). On
August 13, 2013, the Honorable Michael M. Baylson, United States District
Judge for the Eastern District of Pennsylvania, granted Defendant’s motion to
transfer this case to this District. (Dkt. #11). The case was transferred (Dkt.
#13), and accepted by the undersigned as related to Lefkowitz v. McGraw-Hill
Companies, Inc., No. 13 Civ. 5023 (KPF), a case that had been similarly
transferred from the Eastern District of Pennsylvania on July 19, 2013.
On October 2, 2013, Defendant filed a letter requesting a pre-motion
conference regarding its anticipated motion to dismiss under Federal Rule of
Civil Procedure 12(b)(6). (Dkt. #15). By letter dated October 7, 2013, Plaintiff
8

opposed Defendant’s request to file a motion to dismiss under Rule 12(b)(6) on
the basis that Defendant could have included its arguments in the initial
motion to dismiss before Judge Baylson, and thus was barred from filing a
successive Rule 12(b)(6) motion. (Dkt. #16). 5 At the same time, Plaintiff
requested leave to file an amended complaint if the Court found that Plaintiff
had not sufficiently pleaded standing for its breach of contract claim. (Id.).
On October 28, 2013, the Court held a telephone conference with
counsel for the parties in this action (who, as noted, are also counsel in the
related McGraw Action), to discuss the contemplated motions in both cases. At
that conference, the Court determined that Defendant was precluded from
filing a second motion to dismiss, and that the proper procedural course would
be for Defendant to file a motion for judgment on the pleadings under Federal
Rule of Civil Procedure 12(c). The Court also granted Plaintiff’s request for
leave to amend his complaint. Accordingly, the Court ordered Plaintiff to file
his amended complaint by November 4, 2013, and ordered Defendant to file its
answer and motion for a judgment on the pleadings by December 6, 2013.
(Dkt. #21).
Plaintiff filed his FAC on November 4, 2013. (Dkt. #24). The FAC asserts
claims for copyright infringement, contributory copyright infringement, and
breach of contract. For relief, Plaintiff requests (i) a permanent injunction
5

Federal Rule of Civil Procedure 12 states: “Except as provided in Rule 12(h)(2) or (3), a
party that makes a motion under [Rule 12] must not make another motion under this
rule raising a defense or objection that was available to the party but omitted from its
earlier motion.” Fed. R. Civ. P. 12(g)(2).

9

against Defendant and anyone working in concert with Defendant from
copying, displaying, distributing, selling or offering to sell the Lefkowitz Images;
(ii) impoundment of all copies of the Lefkowitz Images used in violation of
Plaintiff’s exclusive copyrights as well as related records and documents and,
at final judgment, destruction or other reasonable disposition of the unlawfully
used Lefkowitz Images, including digital files and any other means by which
they could be used again by Defendant without Plaintiff’s authorization; (iii) an
award of Plaintiff’s actual damages and all profits derived from the
unauthorized use of the Lefkowitz Images or, where applicable and at Plaintiff’s
election, statutory damages; (iv) an award of Plaintiff’s reasonable attorneys’
fees; (v) an award of Plaintiff’s court costs, expert witness fees, interest and all
other amounts authorized under law; and (vi) an award of 10 times the license
fee for unauthorized uses pursuant to the Corbis Agreements.
In accordance with the Court’s order, Defendant filed its answer and its
motion for judgment on the pleadings on December 6, 2013. (Dkt. #25, 26).
Plaintiff filed his opposition on January 3, 2014 (Dkt. #32), and the motion was
fully submitted when Defendant filed its reply on January 10, 2014 (Dkt. #33).
On January 17, February 13, and May 22, 2014, Defendant filed three notices
of supplemental authority (Dkt. #35, 36, 39), and on February 27 and April 28,
2014, Plaintiff also filed notices of supplemental authority (Dkt. #37, 38).
Plaintiff responded to Defendant’s May 22 supplemental authority on May 23,
2014. (Dkt. #40).
10

DISCUSSION
A.

Applicable Law
Federal Rule of Civil Procedure 12(c) provides that “[a]fter the pleadings

are closed — but early enough not to delay trial — a party may move for
judgment on the pleadings.” Fed. R. Civ. P. 12(c). The standard applied to a
motion for judgment on the pleadings is the same as that used for a motion to
dismiss pursuant to Fed. R. Civ. P. 12(b)(6). Sheppard v. Beerman, 18 F.3d
147, 150 (2d Cir. 1994); accord L-7 Designs, Inc. v. Old Navy, LLC., 647 F.3d
419, 429 (2d Cir. 2011). When considering such a motion, a court should
“draw all reasonable inferences in Plaintiffs’ favor, assume all well-pleaded
factual allegations to be true, and determine whether they plausibly give rise to
an entitlement to relief.” Faber v. Metro. Life, 648 F.3d 98, 104 (2d Cir. 2011)
(internal quotation marks omitted) (quoting Selevan v. N.Y. Thruway Auth., 548
F.3d 82, 88 (2d Cir. 2009)). A plaintiff is entitled to relief if he alleges “enough
facts to state a claim to relief that is plausible on its face.” Twombly, 550 U.S.
at 570; see also In re Elevator Antitrust Litig., 502 F.3d 47, 50 (2d Cir. 2007)
(“[W]hile Twombly does not require heightened fact pleading of specifics, it does
require enough facts to nudge [plaintiff’s] claims across the line from
conceivable to plausible.” (internal quotation marks omitted)).
Federal Rule of Civil Procedure 8(a)(2) requires only “a short and plain
statement of the claim showing that the pleader is entitled to relief.” Fed. R.
Civ. P. 8(a)(2). “To survive dismissal, the plaintiff must provide the grounds
11

upon which his claim rests through factual allegations sufficient ‘to raise a
right to relief above the speculative level.’” ATSI Commc’n, Inc. v. Shaar Fund,
Ltd., 493 F.3d 87, 98 (2d Cir. 2007) (quoting Twombly, 550 U.S. at 546);
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“Rule 8 marks a notable and
generous departure from the hyper-technical, code-pleading regime of a prior
era, but it does not unlock the doors of discovery for a plaintiff armed with
nothing more than conclusions.”). Although “[s]pecific facts are not necessary,”
the statement must “give the defendant fair notice of what … the claim is and
the grounds upon which it rests.” Erickson v. Pardus, 551 U.S. 89, 93 (2007).
The Court is not, however, bound to accept “conclusory allegations or
legal conclusions masquerading as factual conclusions.” Rolon v. Hennenman,
517 F.3d 140, 149 (2d Cir. 2008) (quoting Smith v. Local 819 I.B.T. Pension
Plan, 291 F.3d 236, 240 (2d Cir. 2002)); see also Harris v. Mills, 572 F.3d 66,
72 (2d Cir. 2009) (“[A]lthough a court must accept as true all of the allegations
contained in a complaint, that tenet is inapplicable to legal conclusions, and
threadbare recitals of the elements of a cause of action, supported by mere
conclusory statements, do not suffice.” (internal quotation marks omitted)
(quoting Iqbal, 556 U.S. at 678)).
In addition to the complaint, the Court may consider “any written
instrument attached to the complaint as an exhibit, any statements or
documents incorporated in it by reference, and any document upon which the
complaint heavily relies.” In re Thelen LLP, 736 F.3d 213, 219 (2d Cir. 2013).
12

The Court may also consider any items of which judicial notice may be taken.
L-7 Designs, Inc., 647 F.3d at 422.
B.

Analysis
1.

Plaintiff Sufficiently Alleges a Claim for Copyright
Infringement

“[A] properly pleaded copyright infringement claim must allege [i] which
specific original works are the subject of the copyright claim, [ii] that plaintiff
owns the copyrights in those works, [iii] that the copyrights have been
registered in accordance with the statute, and [iv] by what acts during what
time the defendant infringed the copyright.” Kelly v. L.L. Cool J., 145 F.R.D.
32, 36 (S.D.N.Y. 1992); accord Warren v. John Wiley & Sons, Inc., 952 F. Supp.
2d 610, 616 (S.D.N.Y. 2013); see generally Jorgensen v. Epic/Sony Records,
351 F.3d 46, 51 (2d Cir. 2003).
The FAC alleges that Plaintiff is the owner of an exclusive right under the
copyright of the Lefkowitz Images (FAC ¶ 8), and that these images have been
registered with the United States Copyright Office (id. at ¶ 9), thereby satisfying
the second and third requirements for copyright infringement. Plaintiff has
also adequately alleged the first requirement — which specific original works
are the subject of the copyright claim — by including the Lefkowitz Chart as an
exhibit to the FAC. See Schneider v. Pearson Educ., Inc., No. 12 Civ. 6392
(JPO), 2013 WL 1386968, at *3 n.3 (S.D.N.Y. Apr. 5, 2013) (concluding that
plaintiff had alleged sufficiently that specific works as to which he owned the
copyright were infringed upon, where plaintiff listed the photographs at issue
13

and also indicated that the infringement was not limited to these works); but
see Cole v. John Wiley & Sons, Inc., No. 11 Civ. 2090 (DF), 2012 WL 3133520,
at *12 (S.D.N.Y. Aug. 1, 2012) (finding it inadequate for Plaintiff “to base an
infringement claim on overly-inclusive lists of copyrighted works” and “to list
certain works that are the subject of an infringement claim, and then allege
that the claim is also intended to cover other, unidentified works”). 6
Defendant’s arguments to the contrary (see Def. Br. 9-10), do not convince the
Court otherwise.
Defendant further contends that the fourth requirement — by what acts
during what time the defendant infringed the copyright — is not satisfied
because Plaintiff has failed to identify the license terms or the infringing
publication for any of the instances of infringement on the Lefkowitz Chart and,
as a result, Plaintiff has failed to put Defendant on notice of the nature of the
claims asserted against it. (Def. Br. 9-10).
Defendant’s argument is unavailing. First, Defendant places a
heightened pleading requirement upon Plaintiff that is not required by law. For
example, Defendant charges that Plaintiff failed to “differentiate its allegations

6

Notably, Plaintiff does not restrict his claim to the works identified in the Lefkowitz
Chart. Rather, Plaintiff alleges that Defendant exceeded the permitted uses under the
terms of the limited licenses for the works identified in the Lefkowitz Chart and for
other works “yet to be discovered.” (FAC ¶ 19). To the extent that Plaintiff seeks to
assert copyright infringement claims for works not listed in the Lefkowitz Chart, the
Court charts a course closer to Schneider than to Cole, and dismisses that portion of
the FAC. See Warren, 952 F. Supp. 2d at 617 n.2 (“To the extent that [plaintiff] intends
to assert copyright claims regarding these unspecified photographs, that portion of his
Complaint is dismissed.”); Schneider, 2013 WL 1386968, at *3 (“[T]o the extent that
Plaintiff has attempted to state a claim for copyright infringement concerning works
other than the ten listed in Exhibit A of the Complaint, he has failed to do so.”).

14

of conduct among” the instances of infringement listed in the Lefkowitz Chart.
(Def. Br. 9). Yet, as one court has already held, “it is not fatal” for a plaintiff’s
copyright claim if the complaint “fails to specify how each particular
photograph has been infringed.” Warren, 952 F. Supp. 2d at 617.
Second, a review of the FAC demonstrates that it does provide the notice
to Defendant required by Rule 8. Plaintiff alleges that, “[u]pon information and
belief, the licenses granted to Wiley from TSM and Corbis were expressly
limited by number of copies, distribution area, image size, language, duration
and/or media (print or electronic).” (FAC ¶ 17). Plaintiff then alleges that upon
information and belief, Defendant exceeded the permitted uses under the term
of the limited licenses for the Lefkowitz Images (id. at ¶19), by (i) copying the
Lefkowitz Images “in numbers exceeding the limited print quantities in the
licenses”; (ii) displaying the Lefkowitz Images “online or in digital media without
permission to do so”; (iii) distributing the Lefkowitz Images in “geographic
territories that were not authorized”; and (iv) copying the Lefkowitz Images “in
custom, state-specific, language, or international editions without permission
to do so” (id. at ¶ 34). Plaintiff also identifies a set of Defendant’s publications
in which the Lefkowitz Images appear. (Id. at ¶ 28).
Under Rule 8, “[s]pecific facts are not necessary; the statement need only
‘give the defendant fair notice of what the … claim is and the grounds upon
which it rests.’” Erickson, 551 U.S. at 93 (quoting Twombly, 550 U.S. at 555).
Plaintiff’s allegations surely meet this standard. The FAC identifies Plaintiff’s
15

copyright infringement claim, the images that Plaintiff claims were infringed,
and the bases for Plaintiff’s assertion that those images were infringed. The
FAC further alleges that, upon information and belief, Defendant has a “general
practice of infringing copyrights in its use of photographs in its publications.”
(Id. at ¶ 23). In support of this allegation, Plaintiff identifies 15 other lawsuits
filed against Defendant in which litigants make the same claims that Plaintiff
brings here, and two cases in which Defendant was found liable for engaging in
the copyright infringement scheme that Plaintiff advances. (Id. at ¶¶ 23-26).
These allegations, taken as a whole, make plausible that Plaintiff is entitled to
relief, and that this entitlement is more than speculative. 7
Plaintiff also sufficiently narrows the time period by alleging that, upon
information and belief, Defendant engaged in the infringing conduct after the
invoice date listed on the Lefkowitz Chart. (FAC ¶ 34). This allegation provides
the starting date on which Defendant is alleged to have infringed, and therefore
sufficiently identifies the time period during which the infringement may have
occurred. See E. Broadcasting Am. Corp. v. Universal Video, Inc., No. 04 Civ.
5654 (DGT), 2006 WL 767871, at *3 (E.D.N.Y. Mar. 24, 2006) (holding that
plaintiff sufficiently alleged the time frame of the infringing activity, where the
complaint alleged that the infringement took place on or before a particular
date); cf. Blagman v. Apple Inc., No. 12 Civ. 5453 (ALC) (JCF), 2013 WL
7

To be clear, Plaintiff’s allegations are not made sufficient by the mere existence of the
other lawsuits against Defendant. Rather, the alleged existence of these lawsuits, in
conjunction with the rest of Plaintiff’s allegations, imparts plausibility to Plaintiff’s
copyright infringement claim.

16

2181709, at *3 (S.D.N.Y. May 20, 2013) (holding that the plaintiff adequately
pleaded the requisite time period where, although he did not “specify the time
period of infringement[,]” plaintiff did allege the defendants’ “continued
infringement, which courts in this Circuit have held satisfactory to survive a
motion to dismiss” (collecting cases)).
Although many of the cases on which Plaintiff relies are cases in which
the plaintiff provided additional specifications regarding the publications and
licenses at issue (see Pl. Opp. 5 n.16 (citing, among other cases, Carr Clifton v.
Pearson, Educ., Inc. (N.D. Cal. No. 5:11 Civ. 2090-EJD); Alaska Stock, LLC v.
Pearson Educ., Inc. (D. Alaska No. 3:11 Civ. 00162 (TMB))), such details are not
necessary for Plaintiff to plead his claim for copyright infringement adequately.
See Wu v. Pearson Educ., Inc., No. 09 Civ. 6557 (RJH), 2010 WL 3791676, at *6
(S.D.N.Y. Sept. 29, 2010) (holding that plaintiff sufficiently alleged a claim for
copyright infringement where plaintiff alleged that defendant had exceeded the
allowed print run on the licenses governing the works at issue without first
seeking prior authorization or paying any additional licensing fee); Sensi v.
Houghton Mifflin Harcourt Publ’g Co., et al., No. 13 Civ. 2891 (GBD) (finding
complaint sufficient where plaintiff did not include the license terms with its
complaint: “I think the complaint minimally puts the defendant on notice that
defendant was given licenses directly by the plaintiff and by the third party that
they exceeded those licenses by exceeding the limited print run, and I [do not]
think the burden is on the plaintiff at this point to specify every single
17

excessive use in that regard. I don’t think that the notice pleading requires
that kind of specificity.” (Penchina Decl., Ex. 4 at 46)); cf. Warren, 952 F.
Supp. 2d at 618 (“[I]t is not fatal to [the] copyright claim that the Complaint
fails to specify how each particular photograph has been infringed.”).
By contrast, the cases on which Defendant relies in support of its
argument that Plaintiff fails adequately to plead the necessary elements are
readily distinguishable. (Def. Br. 9). In Palmer Kane LLC v. Scholastic Corp.,
the complaint made no mention of a time period, and only contained “several
broad allegations” that the defendant had “exceeded the licenses it obtained to
use Plaintiff’s images, reused Plaintiffs works without a license[,]” and used the
images without permission or prior to obtaining permission.” No 12 Civ. 3890
(TPG), 2013 WL 709276, at *3 (S.D.N.Y. Feb. 28, 2013). The court in Palmer
Kane explained: “Although Exhibit A, listing [the plaintiff’s] works contains an
invoice date for each of the images, the complaint makes no mention of these
dates, let alone how they relate to a time period in which [the defendant]
infringed on [the plaintiff’s] works.” Id. Plaintiff’s complaint is not deficient in
this respect. The FAC identifies the exact relevance of the invoice dates,
thereby delineating the relevant time period. And while it is true that the court
in Palmer Kane faulted the plaintiff there for not limiting its claims to the works
listed, see id. (“[S]ince [plaintiff] has provided a list of works but indicated that
his list is not exhaustive,… the complaint fails to specify which works are at
issue.”), the Court has already dismissed Plaintiff’s claim with respect to works
18

not identified in the Lefkowitz Chart. Even had it not, this similarity with the
present case does not render the FAC inadequate. See Schneider, 2013 WL
1386968, at *3 n.3 (“To the extent, however, that … other district court
opinions set forth [a rule under which a plaintiff fails to state a claim for
copyright infringement where the plaintiff provides a non-exhaustive list of
infringed works,] this Court takes a different course.”).
As for the other cases on which Defendant relies, the plaintiff in Marvullo
v. Gruner & Jahr, 105 F. Supp. 2d 225, 228 (S.D.N.Y. 2000), had conclusorily
alleged that the defendants had published the works at issue “beyond the
scope … of the limited license.” The plaintiff in Cole, 2012 WL 3133520, at
*12-13, similarly, had neither identified any work that it claimed the defendant
had infringed, nor included any detail as to any of the claimed infringing acts.
In short, the FAC contains much more robust allegations than those contained
in the complaints at issue in Palmer, Marvullo, and Cole.
It is also of no moment that many of Plaintiff’s allegations are predicated
“upon information and belief.” Prefacing allegations with this standard
pleading qualification does not eviscerate the sufficiency of a complaint. Wu,
2010 WL 3791676, at *6 (“Pursuant to Rule 11(b) of the Federal Rules of Civil
Procedure, however, plaintiffs may plead the allegations in complaints upon
information and belief, and many of these qualifiers are roughly equivalent to
so pleading.”); see also Schneider, 2013 WL 1386968, at *3 (“[T]he Court fails to
see why several discrete paragraphs in a Complaint should nullify other,
19

factually specific allegations in the Complaint; it would be unjust and
inappropriate to throw out these well-pleaded allegations, merely because
Plaintiff’s Complaint may also contain a bit of bathwater.”). Plaintiff’s pleading
style is particularly appropriate in light of his allegations that key evidence
supporting his claim is in Defendant’s possession. (FAC ¶¶ 19, 27, 35). 8 As
the Second Circuit has stated, in the context of reviewing the sufficiency of a
plaintiff’s claim for copyright infringement:
The Twombly plausibility standard, which applies to all civil
actions, does not prevent a plaintiff from pleading facts alleged
“upon information and belief” where the facts are peculiarly within
the possession and control of the defendant, or where the belief is
based on factual information that makes the inference of
culpability plausible.
Arista Records, LLC v. Doe 3, 604 F.3d 110, 120 (2d Cir. 2010) (internal
citations and quotation marks omitted).
A district court should not dismiss a claim “unless it is satisfied that the
complaint cannot state any set of facts that would entitle [the plaintiff] to
relief.” Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d
Cir. 2001). This is not the case here; the FAC sets out facts entitling Plaintiff to
relief. Moreover, “[a] claim has facial plausibility when the plaintiff pleads
factual content [that] allows the court to draw the reasonable inference that the
8

The parties dispute whether Plaintiff had access to information regarding the license
terms for the works at issue. The Court must take Plaintiff’s allegations that he does
not have access to certain information as true for the purposes of this pleading. Faber,
648 F.3d at 104 (identifying that when considering a motion to dismiss for failure to
state a claim, a court must “assume all well-pleaded factual allegations to be true”
(internal quotation marks omitted)). In any event, Plaintiff was not required to allege
this information here in order for the FAC to meet the pleading requirement, and so the
Court need not resolve this issue in order to resolve the pending motion.

20

defendant is liable for the misconduct alleged. Iqbal, 556 U.S. at 679. The
FAC as a whole satisfies the plausibility requirement; it gives rise to a plausible
narrative supporting Plaintiff’s claim, see Twombly, 550 U.S. at 570, and thus
sufficiently alleges a claim for copyright infringement. See Warren, 952 F.
Supp. 2d at 618 (“[A]ll three Plaintiffs have sufficiently alleged: [i] which specific
works have been infringed; [ii] that Plaintiffs registered and own the copyright
to those work; and [iii] in what way the works were infringed.”); Schneider,
2013 WL 1386968, at *4 (“Plaintiff’s Complaint sufficiently states a claim for
copyright infringement; it both provides ‘fair notice’ to Defendant and contains
specific factual allegations sufficient to ‘nudge[]’ Plaintiff’s infringement claims
‘across the line from conceivable to plausible.’” (quoting Twombly, 550 U.S. at
561, 570)). To require more at this stage in the litigation would be to place an
impermissible burden on Plaintiff.
Accordingly, Defendant’s motion for a judgment on the pleadings as to
Plaintiff’s copyright infringement claim is denied, with the exception that
Plaintiff’s claims for copyright infringement for works not listed in the Lefkowitz
Chart are dismissed.
2.

Plaintiff Fails to State a Claim for Contributory Copyright
Infringement

Defendant next argues that Plaintiff fails to state a claim for contributory
copyright infringement, arguing that the FAC’s allegations of Defendant’s
contribution to and knowledge of alleged infringement by others are nothing

21

more than recitations of the legal standard bereft of factual support. (Def.
Br. 13). On this claim, Defendant is correct.
“Although the Copyright Act does not expressly render anyone liable for
infringement committed by another[,] [] doctrines of secondary liability[,]” such
as contributory copyright infringement, “emerged from common law principles
and are well established in the law.” Metro-Goldwyn-Mayer Studios Inc. v.
Groster, Ltd., 545 U.S. 913, 930 (2005). As an initial matter, for Plaintiff
adequately to plead a claim for contributory copyright infringement, he must
initially plead a claim for direct infringement. Marvullo, 105 F. Supp. 2d at
229. As just held, Plaintiff has satisfied this burden. Beyond that, Plaintiff
must allege that “the defendant with knowledge of the infringing activity,
induced, caused, or materially contributed to the infringing conduct of
another.” Wolk v. Kodak Imaging Network, Inc., 840 F. Supp. 2d 724, 750
(S.D.N.Y. 2012) (internal quotation marks omitted); Brought to Life Music, Inc. v.
MCA Records, Inc., No. 02 Civ. 1164 (RWS), 2003 WL 296561, at *2 (S.D.N.Y.
Feb. 11, 2003) (quoting Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc.,
443 F.2d 1159, 1162 (2d Cir. 1971)). Liability will exist if the “defendant
engages in personal conduct that encourages or assists the infringement,”
Arista Records, 604 F.3d at 118, and there is either actual or constructive
knowledge of the infringing activity, Brought to Life Music, Inc., 2003 WL
296561, at *2.

22

The FAC contains seven allegations targeted toward Plaintiff’s
contributory infringement claim, all of which are pleaded on “information and
belief.” (FAC ¶¶ 36-42). Although it is generally appropriate for Plaintiff to
plead by use of such caveats where “the facts are peculiarly within the
knowledge of the defendants,” it is nonetheless “axiomatic that the complaint
must allege facts demonstrating the basis for the information and belief.”
MLSMK Inv. Co. v. JP Morgan Chase & Co., 737 F. Supp. 2d 137, 144 (S.D.N.Y.
2010); see also Kajoshaj v. New York City Dep’t of Educ., 543 F. App’x 11, 16
(2d Cir. 2013) (summary order) (“While [p]leading on the basis of information
and belief is generally appropriate where information is particularly within
[defendants’] knowledge and control, even such pleadings must be grounded in
a good-faith basis in fact for believing that such comparators exist.” (internal
quotation marks and citations omitted)).
Unlike Plaintiff’s claim for direct infringement, which included
allegations, among others, identifying the licenses, the photographs at issue,
the known publications, and Defendant’s purported penchant for violating
licenses similar to those at issue in this action, Plaintiff’s claim for contributory
infringement provides no such factual foundation. Rather, the contributory
infringement claim appears predicated on nothing more than Plaintiff’s
assumption that Defendant “facilitated the international distribution of its
publications … through its Subsidiary Rights, Global Rights, and Permissions
Departments” (FAC ¶ 36), and then “reproduced and distributed” the Lefkowitz
23

Images to third parties, whom Plaintiff fails to identify (id. at ¶ 37). Based on
this, Plaintiff alleges that “[b]y transmitting” the Lefkowitz Images to third
parties, Defendant “enabled, induced, caused, facilitated, or materially
contributed to the Third Parties’ unauthorized reproduction and distribution”
of the Lefkowitz Images. (Id. at ¶ 38). Plaintiff does not, however, identify a
single publication in which a third party published his images.
The participation prong will not be satisfied by “allegation[s] that a
defendant merely provid[ed] the means to accomplish an infringing activity.”
Brought to Life Music, Inc., 2003 WL 296561, at *2 (internal quotation marks
omitted). “Rather, participation in the infringement must be substantial and
the authorization or assistance must bear a direct relationship to the infringing
acts, and the contributory infringer must have acted in concert with the direct
infringer.” Id. (internal quotation marks omitted). There is nothing in the FAC
to provide a reasonable basis for the Court to conclude that Defendant engaged
in the requisite level of participation.
Similar problems befall Plaintiff’s efforts to demonstrate that Defendant
had knowledge of the infringing activity. Plaintiff alleges that Defendant “knew
when it reproduced and distributed the [Lefkowitz Images] that the Third
Parties would reproduce and distribute the [Lefkowitz Images] without
Plaintiff’s authorization” (FAC ¶ 40), and that Defendant “knew that the Third
Parties were reproducing and distributing the [Lefkowitz Images] without
authorization” (id. at ¶ 41). These allegations of knowledge are inadequate,
24

however, because “[m]ere knowledge of infringing potential or of actual
infringing uses” is not sufficient to subject a party to liability. Metro-GoldwynMayer Studios Inc., 545 U.S. at 937. “[K]nowledge means actual or
constructive knowledge of specific and identifiable infringements of individual
items, not a general awareness that there are infringements.” Wolk, 840 F.
Supp. 2d at 751 (internal quotations marks omitted). Read most generously,
the FAC contains nothing more than a general awareness that third parties
allegedly infringed on Plaintiff’s copyrights.
Whether a party has sufficiently pleaded a claim for contributory
copyright infringement “is a close question on which federal district courts
have diverged when assessing similar complaints.” Muench Photography, Inc. v.
Pearson Educ., Inc., No. 13-cv-03937-WHO, 2013 WL 6172953, at *5 (N.D. Cal.
Nov. 25, 2013) (collecting cases). The FAC here, however, fails adequately to
plead a claim for contributory infringement under decisions on both sides of
this divergence. On one side of the spectrum, in Panoramic Stock Images, Ltd.
v. Pearson Educ., Inc., No. 12 Civ. 9918 (SJC), 2013 WL 2357586, at *3 (N.D.
Ill. May 29, 2013), the court held that the plaintiff failed to state a claim for
contributory infringement because the plaintiff “fail[ed] to identify any third
party or publication that allegedly infringed on its copyrights or any factual
basis suggesting that [the plaintiff] induced or encouraged infringement.” On
the other side of the spectrum, in Bavendam v. Pearson Educ., Inc., No. 13 Civ.
3096 (FSH), 2013 WL 5530008, at *5 (D.N.J. Oct. 3, 2013), the court held that
25

plaintiff’s complaint was sufficient on substantially similar allegations, but
where the plaintiff also provided “two examples of third-party publications that
allegedly included photographs at issue.” Unlike both of these cases, Plaintiff
fails to identify even one publication in which a third party included Plaintiff’s
copyrighted works. The FAC’s allegations are conclusory assertions tracking
the elements of the claim that cannot suffice to state a claim to which Plaintiff
is entitled to relief. See generally Iqbal, 556 U.S. at 678 (“Threadbare recitals of
the elements of a cause of action, supported by mere conclusory statements, do
not suffice.”).
Plaintiff’s failure to plead his contributory copyright infringement claim
adequately at this early stage in the litigation is not fatal. “It is the usual
practice upon granting a motion to dismiss to allow leave to replead.” Cortec
Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 48 (2d Cir. 1991). This principle
is equally applicable to “a motion for judgment on the pleadings brought under
Rule 12(c).” First Cent. Sav. Bank v. Meridian Residential Capital, No. 09 Civ.
3444 (DLI) (LB), 2011 WL 838910, at *11 (E.D.N.Y. Mar. 3, 2011). To that end,
the Court sees no reason to deny Plaintiff the opportunity to plead adequately
his claim for contributory copyright infringement.
Accordingly, Plaintiff is granted leave to file a second amended complaint
consistent with this Opinion. The second amended complaint must be filed
and served no later than four weeks from the date of this Opinion. The
dismissal of Plaintiff’s contributory copyright infringement claim will be held in
26

abeyance pending the filing of the second amended complaint. Plaintiff’s
failure to file a second amended complaint in a timely fashion will result in the
entry of dismissal of his contributory infringement claim.
3.

Defendant Has Not Demonstrated That Plaintiff’s Claims for
Copyright Infringement Are Barred by the Statute of
Limitations

Having determined that Plaintiff has stated a claim for direct copyright
infringement, the Court will now address the scope of Plaintiff’s claim.
A civil action under the Copyright Act must be “commenced within three
years after the claim accrued.” 17 U.S.C. § 507(b) (“No civil action shall be
maintained under the provisions of this title unless it is commenced within
three years after the claim accrued.”). The parties dispute whether the Court
should apply an “injury rule,” under which “a claim accrues at the time of each
act of infringement, regardless of the copyright holder’s knowledge of the
infringement,” Urbont v. Sony Music Entm’t, 863 F. Supp. 2d 279, 281 (S.D.N.Y.
2012), or a “discovery rule,” under which “a claim for copyright infringement
does not accrue until the aggrieved party knows or has reason to know of the
injury that forms the basis of the claim,” id. Defendant argues that the injury
rule applies, and that any claims for copyright infringement under Counts I
and II of the FAC based on alleged acts of infringement prior to April 1, 2010,
are barred by the statute of limitations. (Def. Br. 15-16). Conversely, Plaintiff
contends that the discovery rule applies, and that because Plaintiff has not

27

pleaded facts that would enable the Court to apply the discovery rule to the
case at hand, Defendant’s motion must be denied. (Pl. Opp. 15).
Until recently, the Second Circuit had not determined the appropriate
accrual rule for federal copyright infringement claims. Urbont, 863 F. Supp. 2d
at 282 (“Neither the Supreme Court nor the Second Circuit has ruled on the
appropriate rule for federal copyright infringement claims.”); see also
TufAmerica, Inc. v. Diamond, No. 12 Civ. 3529 (AJN), 2013 WL 4830954, at *17
(S.D.N.Y. Sept. 10, 2013) (same). In the absence of Second Circuit precedent
on this issue, the majority of the courts in this Circuit had initially applied the
discovery rule in infringement cases, based on their interpretation of the
Second Circuit’s holdings in Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir.
1992), and Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996). See Muench
Photography, Inc. v. Houghton Mifflin Harcourt Publ’g Co., No. 09 Civ. 2669
(LAP), 2013 WL 4464002, at *5 (S.D.N.Y. Aug. 21, 2013) (recounting history).
But, beginning with the Supreme Court’s decision in TRW Inc. v. Andrews, 534
U.S. 19 (2001), and particularly after United States District Judge Lewis A.
Kaplan’s decision in Auscape Int’l v. Nat’l Geographic Soc’y, 409 F. Supp. 2d
235 (S.D.N.Y. 2004), the pendulum had swung in the other direction, with the
“majority of courts” in this District applying the injury rule to infringement
claims. TufAmerica, Inc., 2013 WL 4830954, at *17 (“Since Auscape, a growing
majority of the courts in the Southern District of New York to address this

28

question have followed Judge Kaplan’s lead and applied the injury rule to
infringement claims.” (collecting cases)).
On April 4, 2014, the Second Circuit put an end to the uncertainty when
it held, in Psihoyos v. Wiley & Sons., Inc., that the discovery rule applies to
claims for federal copyright infringement. 748 F.3d 120, 124 (2d Cir. 2014)
(“We agree with our sister Circuits that the text and structure of the Copyright
Act, unlike the [Fair Credit Reporting Act], evince Congress’s intent to employ
the discovery rule, not the injury rule.”). Under Psihoyos, “copyright
infringement claims do not accrue until actual or constructive discovery of the
relevant infringement.” Id. Following Psihoyos, this Court applies the
discovery rule here. 9

9

Defendant directs the Court to the Supreme Court’s recent decision in Petrella v. MetroGoldwyn-Mayer, Inc., 572 U.S. —, 2014 WL 2011574 (2014), reading that case to hold
that the injury rule, not the discovery rule, applies to federal copyright infringement
claims. Petrella does not hold as such. Rather, the Supreme Court in Petrella held that
the equitable doctrine of laches did not bar a plaintiff’s claim that was brought within
the three-year statute of limitations period governing copyright infringement claims. In
so doing, the Court plainly did not decide when a copyright infringement action
accrues, stating:
Although we have not passed on the question, nine Courts of Appeals
have adopted, as an alternative to the incident of injury rule, a
“discovery rule,” which starts the limitations period when “the plaintiff
discovers, or with due diligence should have discovered, the injury that
forms the basis for the claim.”
2014 WL 2011574, at *6 n.4 (quoting William A. Graham Co. v. Haughey, 568 F.3d 425,
433 (3d Cir. 2009)). The Court made no further comment on the issue, thereby
purposely leaving it undecided. At the same time, however, the Petrella Court issued
certain statements that could be interpreted to cast doubt on those decisions adopting
the discovery rule, such as Psihoyos. Id. at *6 (“A copyright claim thus arises or
accrue[s] when an infringing act occurs[.]”; “Under the Act’s three-year provision, an
infringement is actionable within three years, and only three years, of its occurrence.”
(internal quotation marks omitted) (emphases added)). Be that as it may, a suggestion
that the Supreme Court may favor the injury rule, without more, does not trump
Second Circuit precedent. For now, Psihoyos remains the law of this Circuit.

29

The FAC is silent on when Plaintiff had “actual or constructive discovery”
of Defendant’s purported infringement. Rather, and as discussed earlier, the
FAC provides the relevant time frame by alleging that upon information and
belief, Defendant infringed after the date on the invoices listed on the Lefkowitz
Chart. (FAC ¶ 34). Consequently, there are insufficient facts before the Court
on which it may determine whether Plaintiff’s direct copyright infringement
claims are time-barred. Defendant’s argument that Plaintiff’s copyright
infringement claims must be dismissed on statute of limitations grounds “is an
affirmative defense for which [Defendant] bears the burden of proof.” United
States v. Livecchi, 711 F.3d 345, 352 (2d Cir. 2013). Because Defendant has
not satisfied this burden, its motion to dismiss on this basis is denied.
Connecticut Indep. Utility Workers Local 12924 v. Connecticut Natural Gas Corp.,
No. 3:12-cv-961 (JBA), 2013 WL 2946119, at *4 (D. Conn. June 14, 2013)
(“Because Defendants’ statute of limitations argument is an affirmative defense
for which [they] bear[ ] the burden of proof, Defendants’ motion to dismiss is
denied on this ground.” (internal quotation marks and citation omitted)).
4.

Plaintiff Is Estopped from Asserting His Breach of Contract
Claim

The preclusive effect of a prior judgment is dictated by the doctrines of
claim preclusion and issue preclusion, also identified as collateral estoppel.
Taylor v. Sturgell, 553 U.S. 880, 892 (2008) (“The preclusive effect of a
judgment is defined by claim preclusion and issue preclusion, which are
collectively referred to as ‘res judicata.’”). “For judgments in federal-question
30

cases … federal courts participate in developing uniform federal rule[s] of res
judicata.” Id. at 891 (internal quotation marks omitted). 10
Under claim preclusion, a final judgment bars “successive litigation of
the very same claim, whether or not relitigation of the claim raises the same
issues as the earlier suit.” Taylor, 553 U.S. at 892 (internal quotation marks
omitted). By contrast, issue preclusion forecloses “successive litigation of an
issue of fact or law actually litigated and resolved in a valid court determination
essential to the prior judgment, even if the issue recurs in the context of a
different claim.” Id. Issue preclusion can be “offensive” or “defensive.”
Parklane Hosiery Co., Inc. v. Shore, 439 U.S. 322, 326 n.4 (1979). As relevant
here, “[d]efensive use occurs when a defendant seeks to prevent a plaintiff from
asserting a claim the plaintiff has previously litigated and lost against another
defendant.” Id.
“By ‘preclud[ing] parties from contesting matters that they have had a
full and fair opportunity to litigate,’” res judicata and collateral estoppel
“protect against ‘the expense and vexation attending multiple lawsuits,
conserv[e] judicial resources, and foste[r] reliance on judicial action by

10

“For judgment in diversity cases, federal law incorporates the rules of preclusion
applied by the State in which the rendering court sits.” Taylor, 553 U.S. at 891 n.4.
Plaintiff, however, alleges that this court has subject matter jurisdiction pursuant to 28
U.S.C. §§ 1331 (federal question) and 1338 (providing district courts with “original
jurisdiction of any civil action arising under any Act of Congress relating to …
copyrights”), and that it has supplemental jurisdiction over the breach of contract
claims under 28 U.S.C. § 1367. Consequently, this Court need not assess New York
State preclusion law. In any event, “there is no discernible difference between federal
and New York law concerning res judicata and collateral estoppel.” Marvel Characters,
Inc. v. Simon, 310 F.3d 280, 286 (2d Cir. 2002).

31

minimizing the possibility of inconsistent decisions.’” Taylor, 553 U.S. at 892
(quoting Montana v. United States, 440 U.S. 147, 153-54 (1979)); Marvel
Characters, 310 F.3d at 286 (“These related but distinct doctrines operate to
prevent parties from contesting matters that they have had a full and fair
opportunity to litigate, thereby conserving judicial resources and protecting
parties from the expense and vexation of multiple lawsuits.”).
For issue preclusion to apply, four elements must be satisfied: “[i] the
issues of both proceedings must be identical, [ii] the relevant issues were
actually litigated and decided in the prior proceeding, [iii] there must have been
‘full and fair opportunity’ for the litigation of the issues in the prior proceeding,
and [iv] the issues were necessary to support a valid and final judgment on the
merits.” Cent. Hudson Gas & Elec. Corp. v. Empresa Naviera Santa S.A., 56
F.3d 359, 368 (2d Cir. 1995). In assessing these requirements, however, the
Court is mindful that “[d]espite the economies achieved by use of collateral
estoppel, it is not to be mechanically applied, for it is capable of producing
extraordinary harsh and unfair results.” Remington Rand Corp. v. AmsterdamRotterdam Bank, N.V., 68 F.3d 1478, 1486 (2d Cir. 1995).
Plaintiff’s breach of contract claim seeks to enforce, in his own right, the
Corbis Agreements that he alleges govern Corbis’ and Defendant’s relationship.
(FAC ¶¶ 43-53). In particular, Plaintiff seeks to recover under the Ten Times
Provision in those contracts. (See id. at ¶ 49). Plaintiff alleges that Defendant
has breached the Corbis Agreements “by exceeding the material terms of the
32

licenses and failing to pay the contractually agreed amount for doing so, i.e.,
refusing to pay the 10 times fees for its unauthorized uses of Lefkowitz’s
images.” (Id.). 11 Defendant argues that Plaintiff is barred from asserting his
breach of contract claim because a district judge in the United States District
Court of Massachusetts, in Lefkowitz v. Houghton Mifflin Harcourt Publ’g Co.,
No. 12-10614-FDS, 2013 WL 3816717, at *5 (D. Mass. July 19, 2013) (the
“Massachusetts Action”), already held that Plaintiff lacks standing to enforce
the Corbis Agreements.
Plaintiff does not dispute that he is “bound” by the decision in the
Massachusetts Action. (Pl. Opp. 18). Instead, Plaintiff contends that the first
requirement of issue preclusion — that the issues in both proceedings be
identical — is not satisfied because the Massachusetts court did not evaluate
the principal-agency argument that Plaintiff advances here, and because
Defendant has not demonstrated that the terms of the agreements in both
actions are identical. (Id. at 18-19 (“[T]here is a real question whether the
issues were identical.”)).
Plaintiff is wrong, and the requirements of issue preclusion are satisfied.
As a preliminary matter, even though the Court must accept Plaintiff’s factual

11

In the context of arguing that the Ten Times Provision is enforceable under New York
law, Plaintiff claims in his papers that his breach of contract claim is not for
Defendant’s unauthorized use of the Lefkowitz Images, but only for Defendant’s refusal
to pay Plaintiff in accordance with the Ten Times Provision. (Pl. Opp. 22). The FAC,
however, ostensibly alleges a breach of contract claim in both respects by its inclusion
of the aforementioned allegation. The Court need not address this potential
inconsistency, because under either scenario Plaintiff’s contract claim is premised on
Defendant’s alleged breach of the Corbis Agreements.

33

allegations as true and draw all reasonable inferences in his favor, issue
preclusion “will nonetheless bar a plaintiff’s claim when [a] plaintiff’s ‘factual
allegations have been decided otherwise in a previous litigation.’” Poindexter v.
Cash Money Records, No. 13 Civ. 1155 (RWS), 2014 WL 818955, at *3 (S.D.N.Y.
Mar. 3, 2014) (quoting Jacobs v. Law Offices of Leonard N. Flamm, No. 04 Civ.
7607 (DC), 2005 WL 1844642, at *3 (S.D.N.Y. July 29, 2005)); cf. Linden Airport
Mgmt. Corp. v. N.Y.C. Econ. Dev. Corp., No. 08 Civ. 3810 (RJS), 2011 WL
2226625, at *3 (S.D.N.Y. June 1, 2011) (“[I]t is well settled that a court may
dismiss a claim on res judicata or collateral estoppel grounds on a Rule 12(b)(6)
motion.”). In such instances, dismissal is appropriate when “‘it is clear from
the face of the complaint, and consideration of matters which the court may
take judicial notice of, that the plaintiff’s claims are barred as a matter of law.’”
Linden Airport Mgmt. Corp., 2011 WL 2226625, at *3 (quoting Conopco, Inc. v.
Roll Int’l, 231 F.3d 82, 86 (2d Cir. 2000)); U.S. Fidelity & Guar. Co. v. Petroleo
Brasileiro S.A., No. 98 Civ. 3099 (JGK), 2001 WL 300735, at *23 n.17 (S.D.N.Y.
Mar. 27, 2001) (relying on cases resolving Rule 12(b)(6) motions to identify that
“[a] collateral estoppel defense [] may be analyzed on a Rule 12(c) motion where
all the relevant facts are set forth in the complaint and in matters of which the
Court may take judicial notice”).
To resolve another preliminary matter, the Court must address Plaintiff’s
argument that Defendant has not met its burden with respect to the
agreements at issue. (Pl. Opp. 18). The Court agrees with Plaintiff that the
34

burden of proving that the issues in both proceedings are identical is on
Defendant. Barnes v. Pozzi, No. 10 Civ. 2554 (JGK), 2012 WL 3155073, at *7
(S.D.N.Y. Aug. 3, 2012) (“The burden of proving that the identical issue was
previously decided is on the party asserting preclusion.” (internal quotation
marks omitted)). But one need only look at the agreements affixed to Plaintiff’s
complaint in the Massachusetts Action, which Defendant submitted with its
motion (Penchina Decl., Ex 1), and the agreements attached to the FAC (FAC,
Ex. 5, 7) to see that Defendant has discharged this burden. The Corbis
Agreements and the Representation Agreement between Corbis and Plaintiff —
the agreements on which Plaintiff relies to advance his standing argument —
are the same in both cases. The Court will thus address the requirements of
issue preclusion in turn.
Starting with the first requirement, the Supreme Court has held that
there does not need to be perfect identity of issues. Montana, 440 U.S. at 155.
Instead, a court must determine “first, whether the issues presented by this
litigation are in substance the same as those resolved [in the prior litigation];
second, whether controlling facts or legal principles have changed significantly
since the [prior litigation]; and finally, whether other special circumstances
warrant an exception to the normal rules of preclusion.” Id. The Court is not
aware of, nor do the parties point to, any controlling facts or legal principles
that have changed since the Massachusetts decision was issued. Similarly,
there are no other special circumstances that counsel against applying issue
35

preclusion to this case. In point of fact, courts in this District “have previously
applied collateral estoppel to the issue of standing.” See, e.g., Hollander v.
Members of The Bd. of Regents of The Univ. of the State of New York, No. 10 Civ.
9277 (LTS) (HBP), 2011 WL 5222912, at *2 (S.D.N.Y. Oct. 31, 2011), aff’d, 524
F. App’x 727 (2d Cir. 2013) (summary order) (“This Court has previously
applied collateral estoppel to the issue of standing.”); Poindexter, 2014 WL
818955, at *7 (holding that “Plaintiff is collaterally estopped for lack of
standing, and Defendant’s motion to dismiss is granted”).
A review of the Massachusetts Action makes clear that the breach of
contract claim presented here is virtually identical to the claim decided by the
Massachusetts court. In the Massachusetts Action, Plaintiff similarly alleged
that publisher Houghton Mifflin Harcourt Publishing Co. (“HMH”) had used his
photographs in violation of Plaintiff’s copyrights, and in breach of the relevant
license agreements. (See Penchina Decl., Ex. 1). Just as here, Plaintiff sought
to enforce the Corbis Agreements against HMH in the Massachusetts Action,
and attached the Corbis Agreements as well as the Representation Agreement
to the complaint. (Compare Penchina Decl., Ex. 1, ¶¶ 10-13, 16-20 & Ex. 2-3,
with FAC ¶¶ 43-53 & Ex. 5, 7). In particular, Plaintiff alleged, as he does here,
that: (i) Corbis licensed photographs as Plaintiff’s agent; (ii) “HMH entered into
license agreements relating to Lefkowitz’[s] images, including but not limited to
the [Corbis Agreements]”; (iii) HMH breached those agreements “by exceeding
material terms of the licenses and failing to pay the contractually agreed
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amount for doing so”; (iv) “Lefkowitz suffered damages as a result of HMH’s
breach of contract”; and (v) “[b]y the terms of the agreements entered into by
HMH, HMH is required to pay ten (10) times the license fee for any
unauthorized use, in addition to any other remedies applicable under copyright
law.” (Compare Penchina Decl. Ex. 1, ¶¶ 26-29, with FAC ¶¶ 44, 60, 64-65).
For relief, Plaintiff sought “an award of ten (10) times the license fee for any
unauthorized use.” (Compare Penchina Decl. Ex. 1 ¶ 4, with FAC ¶ 6).
Among other things, HMH moved to dismiss Plaintiff’s breach of contract
claim for lack of standing. Lefkowitz, 2013 WL 3816717, at *1. HMH argued
that Plaintiff had “no right to enforce the terms of the [Corbis Agreements], and
therefore ha[d] no standing to bring the breach of contract claims set forth in
the complaint.” Id. at *3. The Honorable F. Dennis Saylor IV, United States
District Judge for the District of Massachusetts, engaged in a detailed analysis
of whether Plaintiff had standing to bring his breach of contract claims under
the Corbis Agreements, ultimately holding that Plaintiff “ha[d] not set forth any
adequate basis for [the court] to find that [Plaintiff] ha[d] standing to enforce
the terms of the contracts between Corbis and HMH[,]” and thus “ha[d] not
adequately pleaded standing to bring any claims for breach of contract.” Id. at
*5.
Judge Saylor explained that Plaintiff “ha[d] not established that he ha[d]
standing to sue as a third-party beneficiary” under New York law, the law
governing the Corbis Agreements. Lefkowitz, 2013 WL 3816717, at *4. The
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court also rejected Plaintiff’s argument that he had standing to sue because
Corbis had assigned Plaintiff this right pursuant to a provision in Plaintiff’s
Representation Agreement with Corbis that, according to Plaintiff, granted him
the right to sue for copyright infringement if Corbis declined to so do. Id. at *5.
Because the court held that Plaintiff lacked standing, it granted HMH’s motion
to dismiss Plaintiff’s breach of contract claims. Id.
This Court is presented with the same issue of whether Plaintiff has
standing to pursue his breach of contract claims against a party that licensed
Plaintiff’s photographs from Corbis, claims predicated on the exact same
agreements on which Judge Saylor based his opinion. Moreover, the
Massachusetts Action decided the issue under New York law, just as the
parties would have the Court do here in accordance with the choice-of-law
provision in the Corbis Agreements. (FAC, Ex. 7). Plaintiff contends that the
actions are not sufficiently similar because the district court in Massachusetts
did not assess the principal-agency argument that Plaintiff advances here.
Even if true, the fact that Plaintiff relies on an additional argument here in
support of his claim does not change the analysis. See Hollander, 2011 WL
5222912, at *2 (holding that collateral estoppel barred plaintiff’s attempt to
relitigate his standing to bring an Establishment Clause claim and stating that
“[p]laintiff’s attempt to litigate alternate grounds for standing in this lawsuit is
improper and unavailing”). It is also irrelevant that the images at issue in the
two cases may be different, because the court’s ruling in the Massachusetts
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Action is based on the same agreements on which Plaintiff relies here to
establish standing. See Poindexter, 2014 WL 818955, at *4 (“Although EMI
concerned Plaintiff’s alleged rights to the ‘Thin Line Between Love and Hate’
recording, Judge Swain’s determination bars Plaintiff from re-litigating the
ownership issue with respect to the ‘Love Gonna Pack Up’ recording as well,
given that both recordings are governed by the same 1988 Agreement on which
Judge Swain’s determination is based.”); cf. Fulani v. Bentsen, 862 F. Supp.
1140, 1149 (S.D.N.Y. 1994) (“As Fulani’s asserted injury has not changed,
however, the Court finds that collateral estoppel is applicable despite the fact
that the instant case involved the 1992 general election debates, as opposed to
the 1988 general election debates.”).
Turning to the second requirement, the relevant issue — whether
Plaintiff has standing to pursue his breach of contract claim pursuant to the
Corbis Agreements — was actually litigated and decided in the Massachusetts
Action. This is clearly demonstrated by the above summary of that action, and
Plaintiff does not dispute that this requirement is satisfied. The Court’s
decision here, as it necessarily was in the Massachusetts Action, is limited to
Plaintiff’s ability to assert standing under the Corbis Agreements because it is
those agreements on which Plaintiff relies and which he attached to the FAC.
Plaintiff is, of course, not foreclosed from establishing standing on another
basis, and the Court’s decision here imparts no statement on Plaintiff’s ability
to do so. Indeed, Plaintiff alleges that Defendant “entered into license
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agreements relating to Lefkowitz’s images, including but not limited to the
Corbis agreements referenced in Exhibit 1” (FAC ¶ 60), thereby leaving open
the potential for Plaintiff to establish standing on an agreement not now relied
upon. For that reason, and because the Court has determined that Plaintiff
lacks standing, the dismissal of Plaintiff’s breach of contract claim will be
without prejudice. See Hernandez v. Conriv Realty Assoc., 182 F.3d 121, 123
(2d Cir. 1999) (“Article III deprives federal courts of the power to dismiss a case
with prejudice where federal subject matter jurisdiction does not exist.”).
As for the third requirement, Plaintiff had a “full and fair opportunity” to
litigate the standing issue in the Massachusetts Action, another point that
Plaintiff does not refute. Fulani, 862 F. Supp. at 1150 (holding that plaintiff
had a “full and fair opportunity” to litigate the standing issue in a prior
proceeding, on appeal, and before the Supreme Court); see also Jefferson Ins.
Co. of New York v. Fortress Re, Inc., 616 F. Supp. 874, 877 (S.D.N.Y. 1984) (“A
party given a full and fair opportunity to litigate an issue of law in one action
may be estopped from relitigating it in a subsequent action.”). Particularly in
light of Plaintiff’s “control of and participation in the” Massachusetts Action, he
cannot “seriously contend that he had no ‘full and fair opportunity’ to litigate
all issues decided” in that action. Cent. Hudson Gas & Elec., 56 F.3d at 369.
Lastly, it must be decided whether the issue decided in the prior
proceeding was necessary to support a valid and final judgment on the merits.
This final requirement is also satisfied because the Massachusetts court’s
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decision that Plaintiff lacked standing was the basis on which that court
dismissed Plaintiff’s breach of contract claim. Lefkowitz, 2013 WL 3816717, at
*5 (“Plaintiff has not set forth any adequate basis for this Court to find that he
has standing to enforce the terms of the contracts between Corbis and
[defendant]…. Accordingly, defendant’s motion to dismiss will be granted.”).
Having found all of the requirements of collateral estoppel met, and there
being no reason not to apply this doctrine here, the Court concludes that
Plaintiff is estopped from asserting that he has standing to advance a breach of
contract claim against Defendant predicated on the Corbis Agreements.
Moreover, because the Court has found this issue precluded, it need not
consider the merits of Plaintiff’s breach of contract claims against Defendant.
See Fulani, 862 F. Supp. at 1147 (“As the Court finds that plaintiffs are
estopped from asserting that they have standing to challenge the CPD’s taxexempt status, the Court need not consider the merits of plaintiffs’ claims
against the defendants.”); see also Hollander, 2011 WL 5222912, at *2 (“When
one issue is dispositive of a matter, there is no need for the Court to address
alternative grounds for disposition.”).
Accordingly, Plaintiff’s breach of contract claim is dismissed without
prejudice.

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CONCLUSION
For the foregoing reasons, Defendant’s motion is GRANTED in part and
DENIED in part. To the extent Plaintiff’s copyright infringement claim includes
works not listed on the Lefkowitz Chart, those claims are dismissed.
Defendant’s motion with respect to Plaintiff’s direct copyright infringement
claim is otherwise denied. Defendant’s motion with respect to Plaintiff’s
contributory copyright infringement and breach of contract claims is granted,
and those claims are dismissed without prejudice.
The Clerk of Court is directed to terminate Docket Entry No. 26.
Plaintiff is granted leave to file a second amended complaint consistent
with this Opinion to cure the pleading deficiencies for Plaintiff’s contributory
copyright infringement claim. Plaintiff shall file his second amended complaint
within four weeks from the date of this Opinion, and Plaintiff’s failure to do so
will result in the entry of dismissal of that claim. The Court will schedule the
next pretrial conference in due course.
SO ORDERED.
Dated: June 2, 2014
New York, New York

__________________________________
KATHERINE POLK FAILLA
United States District Judge

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