United States District Court, S.D. New York
MEMORANDUM OPINION AND ORDER
LAURA TAYLOR SWAIN, District Judge.
Defendant John Wiley & Sons, Inc. ("Defendant" or "Wiley"), a publisher of academic, scientific and educational journals and books, moves, pursuant to Federal Rules of Civil Procedure 12(c), 12(h)(3) and the Federal Arbitration Act ("FAA"), to dismiss part of the Second Amended Complaint ("SAC") of Plaintiff photographer Ellen Senisi ("Senisi" or "Plaintiff") in favor of arbitration, and to stay her remaining claims. The Court has jurisdiction of this action pursuant to 28 U.S.C. §§ 1331, 1338(a) and 1367. The Court has carefully considered the parties' submissions and arguments. For the following reasons, the Court grants Wiley's motion to dismiss certain of the claims asserted in the Second Amended Complaint in favor of arbitration, and denies Wiley's motion to stay the remaining claims pending the conclusion of arbitration.
In light of the prior motion practice in this case, the Court presumes the parties' familiarity with the underlying facts, and provides only a brief summary of the relevant background.
On May 16, 2013, Plaintiff Senisi, along with six other photographers, filed suit against Wiley, seeking a declaratory judgment regarding their rights as copyright owners of photographs used by Wiley in its textbooks, including clarity regarding Wiley's prior and ongoing use of their works. (See Complaint, Docket Entry No. 1.) The plaintiffs amended their complaint on July 15, 2013, adding a number of copyright infringement claims based on Wiley's alleged improper use of certain photographs beyond the agreed-upon terms of licenses. (See First Amended Complaint, Docket Entry No. 11.) On August 5, 2013, Wiley moved to dismiss all of the plaintiffs' claims pursuant to Federal Rule of Civil Procedure 12(b)(6), and moved to sever any surviving claims as lacking common questions of law or fact. (See Docket Entry Nos. 15-16.) On March 28, 2014, this Court granted Wiley's motion, dismissing the plaintiffs' declaratory judgment claims and granting Wiley's motion to sever. (See Memorandum Opinion and Order, Docket Entry No. 43.) The Court further directed that one of the seven plaintiffs should amend the complaint to assert his or her copyright claims individually. (See id.)
Senisi thereafter filed her SAC, in which she asserted copyright infringement claims with respect to several licensed photographs. (See Docket Entry No. 45.) Some of the licenses at issue had been entered into directly between Wiley and Senisi, while the rest had been provided to Wiley by Senisi's licensing agent, The Image Works. (See id., Ex. 1.)
In the instant motion, Wiley argues that the invoices for the licenses provided by Senisi contain binding arbitration clauses that require the dismissal of claims stemming from those licenses in favor of arbitration. (See Memorandum of Law in Support of Defendant's Motion to Dismiss Plaintiff's Second Amended Complaint in Part, and to Stay Remaining Claims ("Wiley Memo").) Wiley asserts that it reached out to Plaintiff in an effort to have her voluntarily withdraw her claims concerning these licenses, but Plaintiff refused to do so. (Wiley Memo at pp. 1-2.) Wiley thereafter filed this motion, seeking dismissal of all claims covered by licenses that Senisi had provided, and further seeking a stay of Senisi's remaining claims pending the conclusion of arbitration.
Wiley's Motion to Dismiss Certain Claims as Subject to Arbitration
The Second Circuit has provided district courts with a four-pronged analysis to follow in determining whether a dispute is governed by an arbitration clause: "first, [a court] must determine whether the parties agreed to arbitrate; second, it must determine the scope of that agreement; third, if federal statutory claims are asserted, it must consider whether Congress intended those claims to be nonarbitrable; and fourth, if the court concludes that some, but not all, of the claims in the case are arbitrable, it must then decide whether to stay the balance of the proceedings pending arbitration." JLM Industries, Inc. v. Stolt-Nielsen SA , 387 F.3d 163, 169 (2d Cir. 2004) (internal quotation marks and citations omitted).
Wiley asserts that all claims stemming from the licenses provided directly by Senisi are governed by a set of terms and conditions that includes a valid and binding arbitration clause. Wiley has provided copies of the relevant license invoices with its briefing. (See Declaration of Toby M.J. Butterfield in Support of Defendant's Motion to Dismiss Plaintiff's Second Amended Complaint in Part and to Stay Remaining Claims ("Butterfield Dec."), Ex. A; Reply Declaration of Toby M.J. Butterfield in Support of Defendant's Motion to Dismiss Plaintiff's Second Amended Complaint in Part and to Stay Remaining Claims ("Butterfield Reply Dec."), Ex. C.)
Agreement to Arbitrate
The Federal Arbitration Act ("FAA") provides that "[a] written provision in... a contract evidencing a transaction involving commerce to settle by arbitration a controversy arising out of such contract or transaction... or an agreement in writing to submit to arbitration an existing controversy arising out of such a contract, transaction, or refusal, shall be valid, irrevocable, and enforceable, save upon such grounds exist at law or in equity for the revocation of any contract." 9 U.S.C.S. § 2 (LexisNexis 2008). The Second Circuit has held that "the FAA is an expression of a strong federal policy favoring arbitration as an alternative means of dispute resolution, " JLM Industries , 387 F.3d at 171 (internal quotation and citation omitted), and has noted that, where a broad arbitration clause exists, there is a "presumption of arbitrability." ACE Capital Re Overseas Ltd. v. Cent. United Life Ins. Co. , 307 F.3d 24, 34 (2d Cir. 2002). See also American Express Co. v. Italian Colors Restaurant , 133 S.Ct. 2304, 2309 (2013) ("Th[e] text [of the FAA] reflects the overarching principle that arbitration is a matter of contract... [a]nd consistent with that text, courts must rigorously enforce arbitration agreements according to their terms.").
Each of the invoices provided by Wiley contains language on the front side stating that it is subject to the terms and conditions on the reverse side. (Butterfield Dec., Ex. A; Butterfield Reply Dec., Ex. C.) The reverse side of Plaintiff's invoice form includes a list entitled "Delivery Memo Terms and Conditions, " comprised of ten paragraphs that lay out the terms of the license. (See id.) Paragraph six of this list, captioned "Arbitration, " is a broad arbitration clause that reads, "[c]lient [Wiley] and Photographer [Senisi] agree to submit all disputes hereunder to arbitration... under the rules of the American Arbitration Association. The arbitrator's award shall be final and judgment may be entered on it in any court having jurisdiction thereof." (Butterfield Dec., Ex. A at ¶ 6; Butterfield Reply Dec., Ex. C at ¶ 6.) As Wiley notes, Senisi specifically identifies these invoices in her SAC, and her claims are based on ...