The opinion of the court was delivered by: Debra Freeman, United States Magistrate Judge
REPORT AND RECOMMENDATION
TO THE HONORABLE JED S. RAKOFF, U.S.D.J.:
In this copyright infringement action, pro se plaintiff Daniel Reece ("Reece") claims that his copyrighted artwork, as well as his persona, were used without his permission in a video game developed and/or sold by defendants. Currently referred to this Court for a report and recommendation are defendants' motion to dismiss the Second Amended Complaint (Dkt. 20), and Reece's motion for leave to file a third amended complaint (Dkt. 27).
For the following reasons, I recommend that defendants' motion to dismiss the Second Amended Complaint be granted, and that Reece's motion for leave to file a further amended pleading be denied.
Based on the factual allegations of his Second Amended Complaint, dated October 14, 2010 ("2d Am. Compl.") (Dkt. 9), which are accepted as true for purposes of defendants' motion to dismiss (see infra, at 10), Reece was, at one time, a well-known New York graffiti artist, whose artwork was characterized by a painted design of the name or word "Dip" (see id., at ¶ III(C)(2-3)).*fn1 Reece has obtained registered copyrights for certain of his visual designs, which may generally be characterized as stylized renderings of "Dip" and, in certain instances, of the variant "Dip-ism." (See id., at ¶ III(C)(5-a)*fn2 ; Declaration of Jeremy S. Goldman, Esq., dated Jan. 20, 2011 ("Goldman Decl.") (Dkt. 26), at Ex. C (Reece copyrighted images numbered 1-21, with a certificate of authenticity from the Copyright Office); see also id., at Ex. B (copy of the copyright catalog card for Reece's artwork).)
According to Reece, defendants have developed, and have been selling since at least 2006 (including through the Internet), a video game entitled "Getting Up -- Contents Under Pressure" (the "Game"). (2d Am. Compl., at ¶ III(C)(4-b).) In Reece's view, the Game "pay[s] homage to subway graffiti art, . . . in New York City in particular," and further "pay[s] tribute to the genre's [New York City] legends." (Id., at ¶ III(C)(2).) The Game apparently has an action character named "Dip," includes a scene described as "Dip's Hideout," and prominently displays graffiti-style artwork featuring the name or word "Dip." (Id., at ¶ III(C)(2, 4-a); see also Declaration of Marc Fernandez, dated Jan. 20, 2011 ("Fernandez Decl.") (Dkt. 25), at Ex. A-L (copies of all of the "Dip" artwork contained in the "Dip's Hideout" scene in the Game, as well as copies of other graphic designs in the Game that feature the letters "Dip.").) Based on the exemplars defendants have produced in this action, the Game also displays artwork incorporating the words "dipism" and "dipster." (See Fernandez Decl., at Exs. E-H.)
On December 31, 2009, Reece commenced this action by filing a Complaint, naming as defendants "Marc Ecko Unltd.; Marc Ecko Enterprises et al.; Foundation 9; Sony Corporation et al.; Atari, Inc.; Infogrames Entertainment et al.; Microsoft; and Sean 'Diddy' Combs Bad Boy Worldwide Entertainment et al." (See Complaint, dated Dec. 31, 2009 ("Compl.") (Dkt. 2).*fn3
Generally, Reece claimed that the named defendants had used his artwork and created a character in his likeness, without his knowledge or consent, and without compensating him. (Id., at 3.) More specifically, Reece claimed that defendants' Game had a character, played by Sean "Diddy" Combs, that was based on Reece. (Id.) Reece also claimed that the Game unlawfully used his "Dip" artwork. (Id.)
On April 5, 2010, the Court issued an Order, directing Reece to file an amended complaint to cure certain defects in his initial pleading. (See Order, dated Apr. 5, 2010 (Dkt. 3).) In particular, the Court noted the absence, in the Complaint, of any allegations that Reece owned registered copyrights in his artwork, and that defendants had infringed his copyrights by copying constituent elements of his works that were original. (See id., at 1 (finding that "Plaintiff's broad accusation that defendants have used his artwork without his knowledge or consent cannot sustain this action under 17 U.S.C. § 501").) The Court ordered Reece to file an amended complaint within 60 days. (Id.)
On June 3, 2010, in compliance with the Court's Order, Reece filed an Amended Complaint. (See Amended Complaint, dated June 3, 2010 ("Am. Compl.") (Dkt. 4).) In his Amended Complaint, Reece asserted that his claims were brought pursuant to 17 U.S.C. 501, and he essentially alleged that the Game "developed, promoted, and sold" by defendants contained his copyrighted artwork and depicted him as the "artist Dip," without obtaining his permission or compensating him. (Id. at ¶ III(C).) Reece claimed that, unlike him, other artists from New York City were compensated for defendants' use of their artwork and for depictions of characters in their likeness. (Id.)
Reece then filed a Second Amended Complaint on October 15, 2010. (Second Amended Complaint, dated Oct. 14, 2010 ("2d Am. Compl.") (Dkt. 9).) In this second amended pleading, Reece changed the names of some of the previously-named defendants and dropped Sean "Diddy" Combs as a defendant. (See id. (naming as defendants: "Show &Prove LLC, d/b/a Marc Ecko Entertainment, Marc Ecko Unltd., Marc Ecko Enterprises, et al., Atari, Infogrames Entertainment, SONY Computer Entertainment of America LLC, SONY, et al., Microsoft, Foundation 9 Entertainment, a/k/a The Collective, et al."(collectively, "Defendants").)) Liberally construed, the Second Amended Complaint alleges that Reece holds a valid registered copyright in his "Dip" artwork, and that, without authorization, Defendants have displayed, in their Game, artwork that is substantially similar to his registered designs. (Id., at ¶ III(C)(2-3).) Reece seeks what he describes as "conservative" statutory damages of between $180 million and $900 million, either from each named defendant or from Defendants collectively, based on his estimate of the number of units of the Game that have been distributed by Defendants, both domestically and internationally, since the Game's release. (Id., at ¶ V.)
2. Defendants' Motion To Dismiss
On January 20, 2011, Defendants filed a motion to dismiss the Second Amended Complaint, pursuant to Rules 12(b)(2), 12(b)(6), and 21 of the Federal Rules of Civil Procedure. (See Memorandum of Law in Support of Defendants' Motion to Dismiss Plaintiff's Second Amended Complaint, dated Jan. 20, 2011 ("Defs. Mem.") (Dkt. 21).) Defendants argue, in their motion, that (1) the artwork contained in the Game is not substantially similar to Reece's works as a matter of law; (2) Reece's works were not registered prior to the commencement of this action; (3) the Second Amended Complaint fails to state a claim for vicarious or contributory copyright infringement; (4) the Second Amended Complaint fails to allege a basis for personal jurisdiction over any foreign party; (5) Reece is barred from recovering statutory damages or attorneys' fees because he did not register any copyright prior to the publication of the allegedly infringing works; and (6) each defendant is improperly named. (See id., at 1-2.)
With their motion, Defendants have submitted copies of the 21 images that Reece has apparently deposited to the United States Copyright Office, and as to which he is claiming copyright ownership. (See Goldman Decl., at Ex. C.) In addition, Defendants have submitted a declaration from Marc Fernandez ("Fernandez"), a past Vice President of Creative Development for defendant SHOW & PROVE LLC ("SHOW & PROVE"). (Fernandez Decl., at ¶ 1-2.) Fernandez states that SHOW & PROVE produced and developed the Game, and that he was responsible for managing that development and for supervising the creation of the artwork that appears in the Game. (Id., at ¶ 2) Fernandez attaches to his Declaration "all of the 'Dip' artwork contained in the 'Dip's Hideout' scene in the Game," and copies of "every other graphic design in the Game that, to the best of [Fernandez's] knowledge, features the letters 'Dip.'" (Id., at ¶¶ 3-4 and Exs. A-L.) Thus, Defendants represent that they have placed before the Court all of Reece's copyrighted "Dip" artwork (the "Reece Art"), as well as all of the "Dip" artwork contained in the Game (the "Game Art").
In response to Defendants' motion to dismiss, Reece argues that there is substantial similarity between his copyrighted works and the Game Art. He relies on the fact that his Amended Complaint passed the Court's screening review for "substantive sufficiency," and he generally argues that discovery would allow him to establish grounds for vicarious or contributory copyright infringement. (See generally Affirmation in Opposition To Motion To Dismiss Second Amended Complaint, dated Mar. 7, 2011) ("Reece Opp.") (Dkt. 32).) He defers to the Court on the issues of statutory damages or attorney fees and the proper naming of defendants. (Reece Opp., at 3.)
3. Reece's Motion for Leave To File a Third Amended Complaint
At the same time that Defendants moved to dismiss the Second Amended Complaint, Reece moved for leave to file a Third Amended Complaint (see Notice of Motion, dated Jan. 20, 2011 (Dkt. 27)), contending that "new facts [had] come to light," requiring him to join two new defendants -- Iconix Brand Group Inc., and Amazon.com (id.). In support of naming these new defendants, Reece alleges that, in 2009, Iconix Brand Group Inc. took over, or took control over, relevant parts of the Ecko companies previously named as defendants. (Id., at ¶ III(C)(10-12).) Reece further alleges that Amazon.com is liable for copyright infringement by virtue of its worldwide distribution of the Game. (Id., at ¶ III(C)(13).)
Apart from adding allegations about these proposed new defendants, Reece's proposed Third Amended Complaint is not materially different than his Second Amended Complaint, although Reece's revised factual allegations are slightly more expansive. Reece would now plead, for example, that Defendants' Game used his "artistic persona, name, substantially similar physical representation and artwork," that Defendants neither compensated him nor obtained his consent, that he was "known as a prodigy and intellectually gifted," and that Defendants, through research, would have been able to access his artwork and information about his persona, giving them the means to infringe on his protected rights. (See generally id., ¶ III(C).) Reece concedes, in his proposed Third Amended Complaint, that, in using his "Dip" artwork, Defendants "attempt[ed] [to] chang[e] [the] writing styles," but he nonetheless asserts that "the concept and intellectual property [was] registered as [his.]" (Id.)
Reece makes clear in his papers that, to the extent he raises any arguments in support of his motion to amend that would have bearing on Defendants' motion to dismiss, he wishes to have the Court consider all of his arguments, in both contexts. Thus, in his opposition to the motion to dismiss, Reece explicitly cross-references his reply papers on his motion to amend. (See Reece Opp., at 3.) Accordingly, and in light of Reece's pro se status, this Court will consider his submissions in their entirety, in connection with both of the pending motions.
I. DEFENDANTS' MOTION TO DISMISS
In moving to dismiss the Second Amended Complaint, Defendants principally challenge the adequacy of Reece's copyright claims. Yet, as Defendants also raise a jurisdictional argument (as to one defendant), the Court will address that argument first. See Morrison v. Nat'l Austl. Bank Ltd.,547 F.3d 167, 170 (2d Cir. 2008) (noting that jurisdiction is a threshold inquiry). The Court will then proceed to consider Defendants' other arguments.
When a defendant moves to dismiss a case for lack of personal jurisdiction under Rule 12(b)(2) of the Federal Rules of Civil Procedure, the plaintiff bears the burden of showing that the court has jurisdiction. See Metropolitan Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 566 (2d Cir. 1996) When assessing whether personal jurisdiction is authorized, the court first looks to the long-arm statute of the forum state. Krepps v. Reiner, No. 05 Civ. 0107 (RWS), 2005 LEXIS 15185, * 8 (S.D.N.Y. July 27, 2005). If the exercise of jurisdiction is appropriate under that statute, the court must decide whether such exercise of jurisdiction comports with the requisites of due process. Id. The facts must be construed in a light most favorable to the plaintiff. Id. at *7.
The court may utilize various procedures to rule on a Rule 12(b)(2) motion:.
[It] may determine the motion on the basis of affidavits alone; it may grant discovery; it may conduct a preliminary hearing on the merits. In the absence of a full-blown hearing on the merits, plaintiff need make only a prima facie showing that the court has jurisdiction under a long-arm statute.
Visual Sciences, Inc. v. Integrated Communications, Inc., 660 F.2d 56, 58 (2d Cir. 1981) (internal citations omitted); see also Krepps v. Reiner, No. 05 Civ. 0107 (RWS), 2005 LEXIS 15185, at *15-16 (S.D.N.Y. July 27, 2005) (deferring judgment on Rule 12(b)(2) motion and granting pro se plaintiff 30 days to submit any factual material or to initiate any jurisdictional discovery). A plaintiff may defeat a Rule 12(b)(2) motion to dismiss by making a prima facie showing, through ...