Jose Luis Pelaez Inc. v. McGraw-Hill Global Education Holdings LLC et al

Filing 99

OPINION AND ORDER re: 43 MOTION to Dismiss (Partially the Second Amended Complaint), filed by McGraw-Hill School Education Holdings, LLC, McGraw-Hill Global Education Holdings LLC. Plaintiffs' Second Amended Complaint and th e attached exhibits provide Defendants with sufficient notice and information to identify the admittedly numerous images at issue in this case. For the foregoing reasons, Defendants' Motion to Dismiss is DENIED. This Opinion and Order resolves Docket Entry 43, and as further set forth in this order. (Signed by Judge Kimba M. Wood on 8/8/2017) (ras)

USDSSDNY
DOCUMENT
ELECTRONICALLY FILED

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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DATE FILED:

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JOSE LUIS PELAEZ, INC. AND JOSE PELAEZ,
Plaintiffs,

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16-CV-5393 (KMW)
OPINION AND ORDER

v.

McGRAW-HILL GLOBAL EDUCATION
HOLDINGS LLC AND McGRAW-HILL SCHOOL
EDUCATION HOLDINGS LLC,
Defendants.

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KIMBA M. WOOD, District Judge:
Plaintiffs Jose Luiz Peleaz, Inc. and Jose Peleaz bring this copyright infringement suit
against Defendants McGraw-Hill Global Education Holdings, LLC and McGraw-Hill School
Education Holdings, LLC (Collectively "MHE").

Plaintiffs filed their first complaint on July 6,

2016. (Compl. [Doc. No. 1]). After some discovery, Plaintiffs filed a Second Amended Complaint
("SAC"), containing numerous new allegations of copyright infringement. (Second Amended
Compl. [Doc. No. 38]). Defendants MHE have filed a motion to dismiss the Complaint in part
for failure to comply with the pleading requirements of Federal Rules of Civil Procedure 8(a) and
12(b)(6). (Mot. to Dismiss [Doc. No. 17]). For the reasons set forth below, the Court DENIES
Defendants' motion to dismiss.

I.

BACKGROUND
The following facts are taken from Plaintiffs Second Amended Complaint and are

assumed to be true for the purpose of Defendants' Motion to Dismiss. See Tellabs, Inc. v. Makar

Issues & Rights, Ltd., 551 U.S. 308, 322 (2007); see also Shipping Fin. Servs. Corp. v. Drakos,
140 F.3d 129, 131 (2d Cir. 1998) ("When considering a motion to dismiss ... for failure to state a
cause of action, a court must accept as true all material factual allegations in the complaint").
Jose Peleaz is a professional photographer and the sole owner of Jose Luiz Peleaz, Inc.
(SAC~

2). MHE is a publisher and distributor of educational textbooks. Id. ~ 3. From 1992 to the

present, MHE, through stock photography agencies Corbis Corporation ("Corbis") and its
predecessor The Stock Market ("TSM"), was issued limited licenses to use photographs taken by
Plaintiffs in various educational publications. Id. ii 8. The Complaint alleges that the licenses TSM
and Corbis granted to MHE were expressly limited by "number of copies, distribution area, image
size, language, duration and/or media (print or electronic)." Id. ii 13. The Complaint further alleges
that Defendants repeatedly infringed on Plaintiffs' copyrights by (1) printing or distributing more
copies of the Photographs than authorized; (2) distributing publications containing the Photographs
outside the authorized distribution area; (3) publishing the Photographs in electronic, ancillary, or
derivative publications without permission; (4) publishing the Photographs in international
editions and foreign publications without permission; and (5) publishing the Photographs beyond
the specified time limits, in violation of 17 U.S.C. §§ 501 et seq. Id. ii 15.

II.

LEGAL ST AND ARD
To survive a Rule 12(b)(6) motion to dismiss, a plaintiff must plead facts sufficient "to

state a claim to relief that is plausible on its face." Bell At!. Corp v. Twombly, 550 U.S. 544, 570
(2007). A claim is facially plausible when the supporting factual allegations "allow[] the court to
draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v.

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Iqbal, 556 U.S. 662, 678 (2009). Where a plaintiff has failed to "nudge" a claim "across the line
from conceivable to plausible," a district court must dismiss the complaint. Twombly, 550 U.S. at
570.
The complaint must give "fair notice of the claim asserted" to allow the defendant "to
answer and prepare for trial." Simmons v. Abruzzo, 49 F.3d 83, 86 (2d Cir.1995) (citing 2A Moore's
Federal Practice

if 8.13,

at 8-58 (2d ed.1994); see Salahuddin v. Cuomo. 861 F.2d 40, 42 (2d

Cir.1988). In cases involving copyright infringement, courts in this Circuit interpret "fair notice"
as requiring the plaintiff to allege: 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. Kelly v. L.L. Cool J, 145 F.R.D. 32, 36 (S.D.N.Y. 1992) (Conner, J.) affd
sub nom. Kelly v. L.L. Cool J. 23 F.3d 398 (2d Cir. 1994). Thus, "a plaintiff ... may not rest on
bare-bones allegations that infringement occurred." Sharp v. Patterson, 2004 WL 2480426, * 12
(S.D.N.Y.2004) (Lynch, J.). Instead, Rule 8(a) requires that the alleged infringing acts be stated
with some specificity. Kelly, 145 F.R.D. at 26 n.3.

III.

DISCUSSION
Defendants argue that some aspects of Plaintiffs' Second Amended Complaint fail to meet

the pleading standard for copyright infringement claims articulated in Kelly. Specifically, MHE
contends that the claims arising from the allegedly infringed photographs contained in Exhibit 2 of
Plaintiffs Second Amended Complaint fail to adequately plead the copyright registration status for
those photographs, as is required by Kelly. (Mem. in Supp, 2 [Doc. No 44 ]). MHE also moves to
dismiss all claims arising from the allegedly infringed photographs contained in Exhibits 3 and 4 of
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Plaintiffs' Second Amended Complaint, on the ground that those exhibits do not contain any
"particularized identification" of the photographs that have been infringed, as is also required by Kelly.

Id. at 3-4.
Exhibit 2 to Plaintiffs' Second Amended Complaint is an excerpt of a report resulting from an
internal search of MHE's !Step database, performed by Defendants in order to locate all uses of
Plaintiffs' photographs in MHE publications. (Mem in Opp'n, 2 [Doc. No. 46]). The report was
furnished to Plaintiffs during discovery. Id. Exhibit 3 is an excerpt of another report created as a result
of a search of CREA TE, a different MHE internal database, that identifies other MHE uses of
Plaintiffs' photographs. Id. at 3-4. This report was also furnished to Plaintiffs in discovery. Id. Plaintiffs
removed from Exhibits 2 and 3 any reference to photographs already included in their original claim
sheet, which they have attached to their Second Amended Complaint as Exhibit I. Exhibits 2 and 3
thus reflect the portions of the newly produced MHE reports for which "Plaintiffs have a good faith
belief reflect uses of their photographs not otherwise included in the Complaint." (Deel. of Amanda
Bruss, 2 [Doc. No. 47]). Plaintiffs' Exhibit 4 contains photocopied excerpts of various textbook
publications that Plaintiffs allege contain infringed photographs. (Mem in Opp'n, 7).
As discussed below, the Court rejects MHE's contentions.
Copyright Registration
Plaintiffs adequately plead copyright registration with respect to the images referenced in
Exhibit 2, as well as the images referenced in the remaining exhibits attached to the Second Amended
Complaint.
In its second Amended Complaint, Plaintiffs clearly state that they "own the copyrights to the
photographic images depicted in Exhibits 1-4 hereto," and that all of the photographs "have been
registered with the United States Copyright Office." (SAC ii 6-7). Plaintiffs need not allege copyright
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registration with any more precision in order to satisfy pleading standards. See Palmer Kane LLC v.

Scholastic Corp., 2013 WL 709276, at *3 (S.D.N.Y. Feb. 27, 2013) (Greisa, J.) ("Contrary to
defendants' contentions, the complaint is not required to attach copies of registration certifications or
provide registration numbers for all the copyrights at issue in order to survive a motion to dismiss").

See also Bill Diodato Photography LLC v. Avon Products Inc., 2012 WL 3240428 at *8 (S.D.N.Y.
Sept. 21 2012) (Sweet, J.); Richard Feiner & Co., Inc. v. Larry Harmon Pictures Corp., 38 F.Supp.2d
276, 279 n.2 (S.D.N .Y.1999) (Owen, J.).

Photograph Identification
With respect to Plaintiffs' Exhibit 3, Defendants contend that the exhibit "contains only a
listing of MHE's CREATE products, without any corresponding listing of either the photo at issue in
that product or the copyright registration status of that photo." (Mem. in Supp, 9).
This claim is without merit. The information contained within the Exhibit sufficiently puts
MHE on notice of which photographs Plaintiffs claim were infringed. Exhibit 3 identifies each
photograph at issue by publication and page number. As Plaintiffs note in their Opposition to
Defendants' motion to dismiss, "[ d ]efendants need merely turn to the pages listed on Exhibit 3 for each
infringing publication to see the infringed works." (Mem. in Opp'n, 5). Furthermore, Exhibit 3 is an
excerpt of a report created by the Defendants themselves in order to locate Plaintiffs' photographs
throughout various MHE products. This fact counsels in favor of a finding that Defendants are more
than able to identify Plaintiffs' photographs when prompted to do so using an organizational chart of
their own making.
Plaintiffs' Exhibit 4, while certainly less synthesized than Exhibit 3, also meets basic pleading
requirements. Exhibit 4 provides photocopies of certain allegedly infringed images as they appear in

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various MHE publications. Defendants argue that some, but not all, of the photographs contained
within Exhibit 4 were previously identified in Exhibits 1 through 3. (Mem. in Supp, 4). The Court
agrees, and notes that Plaintiffs allege some new claims of copyright infringement in Exhibit 4.
However, Exhibit 4 essentially provides the same information contained within Plaintiffs'
Exhibit 3, albeit not in chart form. Exhibit 4 clearly identifies the MHE publications at issue, and points
MHE's attention to the relevant pages within those publications; Plaintiffs include only those pages at
issue in each textbook, rather than the entire work. If there were confusion on the part of the Defendants
as to which images on each page are the subject of Plaintiffs' claims, Plaintiffs cure this defect by
highlighting relevant portions of attached photograph credit pages contained within each of MHE's
textbooks. The credit pages adequately identify the photographs for which Plaintiffs claim copyright
infringement by clearly stating the relevant page and image number that correspond to each of
Plaintiffs' photographs contained within each MHE textbook.
Defendants cite Palmer Kane LLC v. Scholastic Corp., 2013 WL 709276 (S.D.N.Y. Feb. 27,
2013), to support their contention that Plaintiffs' failure to more specifically identify some of the
photographs within Exhibits 3 and 4 warrants 12(b)(6) and 8(a) dismissal. However, the pleading
imperfections at issue here differ from those in Palmer Kane. In Palmer Kane, Judge Greisa dismissed
a portion of Plaintiffs' complaint because Plaintiffs alleged that defendants' infringements extended
beyond those that were enumerated in their pleadings, without providing any information through
which defendants could identify those alleged "extra" infringements. Id. Plaintiffs do not make the
same mistake here. Plaintiffs certainly could have crafted their Second Amended Complaint with more
precision; they could have included a stock image ID number for every photograph at issue, rather than
relying only on publication title and page number in order to locate some of the photographs. In
addition, Plaintiffs' Exhibit 4 could have isolated the allegedly infringed photographs, rather than

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having included entire pages of textbooks on which the photographs at issue are printed alongside
irrelevant images. However, these pleading deficiencies do not amount to nebulous and unverifiable
additional allegations of infringement; Plaintiffs' Second Amended Complaint and the attached
exhibits provide Defendants with sufficient notice and information to identify the admittedly numerous
images at issue in this case.

IV.

CONCLUSION
For the foregoing reasons, Defendants' Motion to Dismiss is DENIED. This Opinion and

Order resolves Docket Entry 43.

SO ORDERED.
DATED:

New York, New York
August 8, 2017

KIMBA M. WOOD
United States District Judge

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