KASHI v. MCGRAW-HILL GLOBAL EDUCATION HOLDINGS LLC et al

Filing 26

MEMORANDUM OPINION. SIGNED BY HONORABLE WENDY BEETLESTONE ON 10/12/2017. 10/12/2017 ENTERED AND COPIES E-MAILED.(amas)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
ED KASHI,

CIVIL ACTION
Plaintiff,
v.

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

NO. 17-1818

MEMORANDUM O P I N I O N
Plaintiff Ed Kashi, a professional photographer, brings this suit under the Copyright Act,
17 U.S.C. § 101 et seq., against Defendants McGraw-Hill Global Education Holdings and
McGraw-Hill School Education Holdings LLC (collectively, “McGraw-Hill”) for using his
photos in their publications without paying him. McGraw-Hill has filed a motion to dismiss or,
in the alternative, to strike certain allegations. For the reasons set forth in this opinion, McGrawHill’s motion is denied in its entirety.
I.

FACTS
Ed Kashi makes his living by creating and licensing photographs. At some point, he

entered into licensing agreements with stock photo companies, granting them a limited right to
sublicense his photos to third parties in exchange for a percentage of the fees they negotiated.
Sometime after 1995, McGraw-Hill licensed the use of Kashi’s photographs. Some of the
photographs were registered with the United States Copyright Office. Others had pending
copyright registrations.

In any event, any license that McGraw-Hill obtained to use the

photographs was expressly limited in how it could be used by publication, number of copies,
distribution area, image size, language, duration, and the type of media (print or electronic).

For the purposes of McGraw-Hill’s motion to dismiss, the photographs at issue in this
matter can be divided into three categories.

The first category involves those for which

McGraw-Hill was invoiced. Exhibit 1 to the Complaint identifies the photographs by image ID
and includes, among other information, the invoice number, and in some cases, the name of the
publications in which the photograph was used.
The second category of documents is contained in a spreadsheet attached as Exhibit 2 to
the Complaint. This spreadsheet contains the image ID and the name of the publications in
which the photograph appeared, but does not contain any invoice information.1
The third category of documents is set forth in Paragraph 15 of the Complaint, in which
Kashi alleges generally that McGraw-Hill, after obtaining access to Kashi’s copyrighted
photographs, “used them in additional publications without permission, or in excess of
permission granted, but Plaintiff has no way of discovering these additional, unauthorized uses.”
Complaint ¶ 15. The Complaint goes on to further allege that McGraw-Hill “alone knows the
full extent to which it has infringed Plaintiff’s copyrights by making unauthorized uses of the
Photographs.” Complaint ¶ 16.
II.

PROCEDURAL POSTURE
McGraw-Hill has filed a motion to dismiss or, in the alternative, to strike immaterial

allegations, pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(f)(2), respectively.
Regardless of procedural rubric, McGraw-Hill seeks the same result: dismissal (or striking) of all
claims premised on photographs for which Plaintiff has failed to plead a valid, in-force copyright
registration; claims premised on photographs that McGraw-Hill has published, but Plaintiff has
not identified the books in which they were published (entries numbered 48 and 54 of Exhibit 1
1

Both Exhibits 1 and 2 contain a column entitled “Registration information,” which includes a registration number
and a registration date for each of the photographs.

2

to the Complaint); and, claims premised on Paragraph 15 of the Complaint, which, without
identifying any specific photograph or any publications in which the unidentified photographs
were published, alleges that Kashi’s photographs were used “in additional publications without
permission.”
III.

LEGAL STANDARD
At the motion to dismiss stage, all well-pled factual allegations in the complaint are

assumed true. See Warren Gen. Hosp. v. Amgen, Inc., 643 F.3d 77, 84 (3d Cir. 2011). “To
survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true,
to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A plaintiff must plead
“factual content that allows the court to draw the reasonable inference that the defendant is liable
for the misconduct alleged. The plausibility standard is not akin to a ‘probability requirement,’
but it asks for more than a sheer possibility that a defendant has acted unlawfully. Where a
complaint pleads facts that are ‘merely consistent with’ a defendant’s liability, it ‘stops short of
the line between possibility and plausibility of entitlement to relief.’” Id. (quoting Twombly, 550
U.S. at 556-57 (internal quotation marks omitted)). “Context matters in notice pleading,” and
thus “some complaints will require at least some factual allegations to make out a ‘showing that
the pleader is entitled to relief, in order to give the defendant fair notice of what the . . . claim is
and the grounds upon which it rests.’” Phillips v. County of Allegheny, 515 F.3d 224, 232 (3d
Cir. 2008) (quoting Twombly, 550 U.S. at 555). A plaintiff must plead sufficient factual matter
to suggest the elements of the claim.

See Great Western Mining & Mineral Co. v. Fox

Rothschild LLP, 615 F.3d 159, 177 (3d Cir. 2010). This simply requires the facts to “raise a
reasonable expectation that discovery will reveal evidence of the necessary element.” Id.
3

The Court’s analysis of the motion to dismiss proceeds in three steps: first, outline the
elements of the claim alleged; second, remove any legal conclusions; and third, look for wellpled factual allegations and assume they are true. See Bistrian v. Levi, 696 F.3d 352, 365 (3d
Cir. 2012) (citing Iqbal, 556 U.S. at 679) (citations omitted).
IV.

ANALYSIS
To be viable, a claim of copyright infringement requires pleading two elements: first,

ownership of a valid copyright, and second, unauthorized use of the original, constituent
elements of the work. See Star Athletica L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008
(2017); Marino v. Usher, 22 F. Supp. 3d 437, 442 (E.D. Pa. 2014), aff’d, 673 Fed. App’x 125 (3d
Cir. 2016), petition for cert. filed, No. 16–1332 (May 5, 2017).
A. Copyright Registrations
The Copyright Act is clear that “no civil action for infringement of the copyright in any
United States work shall be instituted until preregistration or registration of the copyright claim
has been made in accordance with this title.” 17 U.S.C. § 411(a). Reed Elsevier, Inc. v.
Muchnick, 559 U.S. 154, 166 (2010) (holding Section 411(a) is not a jurisdictional bar to filing a
suit); Gregory S. Markantone DPM, P.C. v. Podiatric Billing Specialists, LLC, 599 Fed. App’x
459, 460 (3d Cir. 2015) (declining to excuse plaintiff’s failure to fulfill § 411(a)’s registration
requirement). McGraw-Hill contends in its opening brief that thirty four of the photographs at
issue had pending copyright registrations, and thus, no cognizable claims could arise from any
use of those photographs. In response, Kashi attached to his opposition brief an affidavit from
his lawyer annexing revised versions of Exhibits 1 and 2 of the Complaint, showing that, in the
intervening period between the filing of the Complaint and the motion to dismiss, all
registrations had been granted. Both McGraw-Hill and Kashi request he be allowed to amend his
4

Complaint to include registrations approved after Kashi filed his Complaint. Leave shall be
granted and that part of McGraw-Hill’s motion which concerns pending copyright registrations
shall be denied.
B. Pleading Requirements
What remains of McGraw-Hill’s motion to dismiss is its contention that Plaintiff has
inadequately pled the second element of the prima facie case for copyright infringement—
unauthorized use of the original, constituent elements of Plaintiff’s works—with respect to the
two photographs listed as entries 48 and 54 of Exhibit 1 to the Complaint as well as all claims
premised on “additional publications” referred to generally in Paragraph 15 of the Complaint.
Defendants argue that in the context of a copyright claim, Federal Rule of Civil
Procedure 8(a)’s mandate that a complaint include a “short and plain statement of the claim
showing that the pleader is entitled to relief,” is augmented by requirements set forth in Gee v.
CBS Inc., 471 F. Supp. 600 (E.D. Pa.), aff’d without op., 612 F.2d 572 (3d Cir. 1979).
According to Gee, in order to properly plead a claim for copyright infringement, a plaintiff must
also include allegations describing “which specific original work is the subject of the copyright
claim, that plaintiff owns the copyright, that the work in question has been registered in
compliance with the statute and by what acts and during what time defendant has infringed the
copyright.” Id. at 643. Although the Third Circuit affirmed Gee without opinion, it did so
summarily without providing any explanation for the panel’s reasoning. Thus, the affirmance
has no precedential value. See Third Circuit, INTERNAL OPERATING PROCEDURES 6.1–6.4
(2017), http://www2.ca3.uscourts.gov/
legacyfiles/IOPs.pdf (noting judgment orders may be filed when the panel “determines that a
written opinion will have no precedential or institutional value.”). Indeed, apart from that
5

summary affirmance there has not been a whiff anywhere that the Third Circuit Court of Appeals
has adopted Gee’s specific pleading requirements. Indeed, the Third Circuit has recently
reiterated that a plaintiff need only properly allege the two traditional elements of a copyright
infringement claim to survive a motion to dismiss. Levey v. Brownstone Inv. Group, LLC, 590
Fed. App’x 132, 135 (3d Cir. 2014).2 Thus, so long as the Plaintiff here has met this pleading
requirement, Defendants have fair notice under Rule 8(a) of the claims against them.
C. Entries 48 and 54
McGraw-Hill argues entries 48 and 54 of Exhibit 1 to the Complaint fail to state a claim
because they do not identify the allegedly infringing books. However, the information supplied
by Kashi in his complaint—including an image ID number, registration number, the number and
date of the invoice as well as the name of the licensor—has, by McGraw-Hill’s own admission,
provided it sufficient information to determine that entries 48 and 54 involve a “non-party
Australian publisher.” Although this information—that an entity other than McGraw-Hill might
have been responsible for the photographs’ dissemination—might raise a valid defense for the
Defendants here, it would be improper to consider this defense on a motion to dismiss, especially
given the defense is not obvious from the face of the Complaint. See Schmidt v. Skolas, 770 F.3d
241, 248–49 (3d Cir. 2014) (“a complaint need not anticipate or overcome affirmative defenses”

2

Even if that were not the case, Gee is distinguishable. Gee involved a lawsuit by purported son of famous
blues singer, Bessie Smith, against a recording company for copyright infringement. Id. at 609–10. The allegedly
copyrighted works were created over 40 years before the suit was brought, and dates were crucial to the Gee court’s
analysis of the complaint. Accordingly, its focus was on determining “which of the claims . . . appeared to be timebarred, and to scrutinize as to those the tolling justification that plaintiffs . . . offered.” Id. at 643. The Gee court
could not proceed with its inquiry, as “none of the foregoing allegations . . . permit this Court to determine which
copyright infringements occurred between 1923 and 1933 . . . and which alleged infringements occurred
subsequently.” Id. In short, statute of limitations defenses and other time-based problems riddled Gee’s underlying
facts and informed the court’s analysis. Finding a lack of factual details concerning the dates of alleged
infringement, the Gee court dismissed the case without leave to amend. See id. at 644.

6

and “courts generally consider only the allegations contained in the complaint, exhibits attached
to the complaint and matters of public record.”) (internal citations omitted).
Accordingly, McGraw-Hill’s motion to dismiss Kashi’s claims premised on entries 48
and 54 of Exhibit 1 shall be denied.
D. Paragraph 15
McGraw-Hill also seeks to dismiss Paragraph 15 of the Complaint, which pleads “upon
information and belief” that McGraw Hill “used [plaintiff’s work] in additional publications,”
but does not specifically identify what they are. Plaintiffs are entitled to plead upon information
and belief “where it can be shown that the requisite factual information is peculiarly within the
defendant’s knowledge or control—so long as there are no boilerplate and conclusory allegations
and plaintiffs accompany their legal theory with factual allegations that make their theoretically
viable claim plausible.” McDermott v. Clondalkin Group, Inc., 649 Fed. App’x 263, 267–68 (3d
Cir. 2016) (citing In re Rockefeller Ctr. Props., Inc. Sec. Litig., 311 F.3d 198, 216 (3d Cir.
2002)) (internal citations omitted). Here, as highlighted in Paragraph 15 by Kashi, he has no
way of discovering the specifics of the alleged uses. What uses McGraw-Hill made of Plaintiff’s
photographs are peculiarly within its control, and it alone knows the full extent to which it used
any of Kashi’s copyrighted images. Reading the Complaint as a whole, other facts, which
Plaintiff has been able to pin down, make the allegations of Paragraph 15 entirely plausible.
Accordingly, McGraw-Hill’s motion to dismiss Paragraph 15 shall be denied.
October 12, 2017
BY THE COURT:

/s/Wendy Beetlestone, J.
____________________________

WENDY BEETLESTONE, J.
7