United States District Court, E.D. New York
MEMORANDUM DECISION & ORDER
M. Coqan U.S.D.J.
before the Court is plaintiffs' motion for leave to file
a second amended complaint. Because the proposed amendments
are futile, plaintiffs' motion is denied.
proposed second amended complaint, which is attached to
plaintiffs' memorandum in support of their motion, seeks
to add allegations that plaintiff Jacino is the author and
creator of pictures that defendants used in their repair kits
without plaintiffs' authorization. Based on these alleged
facts, plaintiffs' seek to assert a state law claim for
“trespass to, or conversion of property and unjust
enrichment.” This claim necessarily fails.
plaintiffs have failed to state a claim of conversion or
trespass to chattels. Conversion requires not merely
temporary interference with property rights,
“‘but the exercise of unauthorized dominion and
control to the complete exclusion of the rightful
possessor.'” Mortgage Resolution Servicing, LLC
v. JPMorgan Chase Bank, N.A., No. 15 CV 293, 2017 WL
570929, at *4 (S.D.N.Y. Feb. 13 2017) (quoting Harper
& Row Publishers, Inc. v. Nation Enter., 723 F.2d
195, 201 (2d Cir. 1983)); see also State of New York v.
Seventh Regiment Fund, 98 N.Y.2d 249, 259, 746 N.Y.S.2d
637, 645 (2002) (“Conversion is the unauthorized
assumption and exercise of the right of ownership over goods
belongs to another to the exclusion of the owner's
rights.”) (internal quotation marks omitted). A
trespass to chattel is committed where there is an
“intermeddling with a chattel in the possession of
another” and “the chattel is impaired as to its
condition, quality, or value.” Register.com, Inc.
v. Verio, Inc., 356 F.3d 393, 404 (2d Cir. 2004).
Plaintiffs do not allege that defendants had control over the
pictures nor that the pictures were impaired as a result of
defendants' use, and such allegations would be
inconsistent with the nature of the property at issue here.
and more importantly, plaintiffs' claims are based on
wrongful use, not wrongful possession, and are thus preempted
by federal copyright law. Pursuant to Section 301(a) of the
Copyright Act, federal copyright law will preempt a state law
claim when: (1) the subject matter of the work upon which the
state claims are premised falls within the subject matter
protected by the Copyright Act; and (2) the rights that are
asserted under the state law are equivalent to those
protected by the Copyright Act. See Briarpatch Ltd., L.P.
v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir.
2005); Sun Micro Med. Techs. Corp. v. Passport Health
Commc'ns, Inc., No. 06CV2083, 2006 WL 3500702, at
*11 (S.D.N.Y. Dec. 4, 2006) (internal quotations and
citations omitted). The first requirement is satisfied
“if the claim applies to a work of authorship fixed in
a tangible medium of expression and falling within the ambit
of one of the categories of copyrightable works.”
Briarpatch Ltd., 373 F.3d at 305. Here, this element
is satisfied because pictures are copyrightable works. 17
U.S.C. § 102(5).
the second requirement, it is well settled that when a state
law conversion or trespass to chattel claim is based on
wrongful use of copyrightable property, not wrongful
possession, the claim is identical to a copyright claim.
See, e.g., C.A., Inc. v. Rocket Software,
Inc., 579 F.Supp.2d 355, 368 (E.D.N.Y. 2008)
(preempting trespass to chattels claim because rights
protecting intangible property were equivalent to rights
covered by Copyright Act); Avalos v.
IAC/Interactivecorp., No. 13-CV-8351, 2014 WL 5493242,
at *7 n.4 (S.D.N.Y. Oct. 30, 2014) (holding that the
plaintiff's conversion claim based on the defendants'
unauthorized use of photographs was not “plausibly
based on defendants' physical possession” of the
photographs and was therefore preempted by federal copyright
law); Gary Friedrich Enters., LLC v. Marvel Enters.,
Inc., 713 F.Supp.2d 215, 231 (S.D.N.Y. 2010)
(“[A]ctions for conversion and trespass to chattels
[are] . . . preempted by a federal copyright law.”);
A Slice of Pie Prodss, LLC v. Wayans Bros.
Entm't, 392 F.Supp.2d 297, 317 (D.Conn. 2005)
(“[E]ven a viable conversion claim would be preempted
by the Copyright Act since it is based solely on copying,
i.e. wrongful use, not wrongful possession.”);
Strauss v. Hearst Corp., No. 85-cv-10017, 1998 WL
18932, at *8 (S.D.N.Y. Feb. 19, 1988) (holding that the
plaintiffs conversion claim for the defendant's use of
the plaintiffs photographs was preempted by federal copyright
law because the plaintiff did not allege that the defendant
interfered with plaintiff's “physical
control” of the photographs).
the claim plaintiffs seek to add in the proposed second
amended complaint, necessarily fails, the amendment would be
futile. See DNJ Logistic Grp., Inc v. DHL Express (USA),
Inc., No. 08-CV-2789, 2010 WL 625364, at *11 (E.D.N.Y.
Feb. 19, 2010) (“An amendment is considered futile if
the amended pleading fails to state a claim . . . .”)