United States District Court, S.D. New York
OPINION & ORDER
WILLIAM H. PAULEY III, DISTRICT JUDGE
Sh.a (“DigitAlb”) brings this action alleging
copyright infringement, trademark dilution, communications
piracy, and breach of contract against Setplex LLC (d/b/a
NimiTV and d/b/a TVAlb), LBD Group, LLC, Lionel Dreshaj, and
Benjamin Dreshaj (together, “Setplex”). Setplex
moves to dismiss the claims for direct and contributory
copyright infringement in the United States as well as the
trademark dilution claim under Rule 12(b)(6). It also seeks
to dismiss the claim for copyright infringement in various
European countries for forum non conveniens under Rule
12(b)(3), and alternatively asks this Court to decline to
exercise supplemental jurisdiction over that claim. For the
reasons that follow, Setplex's motion is granted in part
and denied in part.
allegations in the First Amended Complaint
(“Compl.”) are presumed true for the purposes of
this motion. This action arises from the piracy of
Albanian-language television programming. DigitAlb is an
Albanian corporation engaged in the distribution of Internet
Protocol Television (“IPTV”) programming from
certain Albanian-language television channels. (Compl.
¶¶ 6, 14-15; Compl., Ex. A.) IPTV involves the
delivery of streaming content and programming by
“sending coded digital transmissions over the Internet,
” which are then translated by standard television
receivers or other devices provided by the distributor to the
subscriber. (See Compl. ¶¶ 6, 12.) DigitAlb
distributed and published this programming pursuant to
licenses from the Albanian and Kosovan originators of the
programming who granted it exclusive distribution rights in
the United States, the European Union, the United Kingdom,
and other independent European countries. (Compl.
¶¶ 6, 13-15.) In addition, DigitAlb licensed other
parties to distribute and publish this programming. (Compl.
¶¶ 6, 13.)
gravamen of the Complaint is that Setplex-a U.S.-based
distributor of Albanian-language content and
programming-infringed DigitAlb's exclusive distribution
rights by pirating, retransmitting, and publishing the
licensed programming to its own customers in the United
States and in Europe without DigitAlb's authorization.
(Compl. ¶¶ 1, 7, 16-17.) Although the Complaint
largely glosses over the method through which Setplex
purportedly distributed this programming, this Court gathers
that, at minimum, Setplex delivered the programming to its
subscribers through its website or by providing its
subscribers with devices or equipment to receive and display
the programming. (Compl. ¶¶ 26, 34, 39.) Following
a pre-motion conference identifying certain pleading
deficiencies in DigitAlb's U.S. copyright claims,
DigitAlb amended its complaint to add “[e]xamples of
the individual daily programs published on each channel and
to which Plaintiff holds exclusive rights.” (Compl.
¶ 14; see Compl., Ex. A.) Four claims are the subject of
this motion: (1) Count I, for direct copyright infringement
in the United States; (2) Count II, for contributory
copyright infringement in the United States; (3) Count IV,
for copyright infringement in the United Kingdom, the
European Union, and other European countries; and (4) Count
VI, for false designation of origin and trademark dilution.
legal standards governing a motion to dismiss for failure to
state a claim are well-established. On a Rule 12(b)(6)
motion, the factual allegations in a complaint are accepted
as true and all reasonable inferences are drawn in the
plaintiff's favor. Gonzalez v. Hasty, 802 F.3d
212, 219 (2d Cir. 2015). To survive a motion to dismiss, the
complaint “must contain sufficient factual
matter” to “state a claim to relief that is
plausible on its face.” Ashcroft v. Iqbal, 556
U.S. 663, 678 (2009) (citation omitted). In other words, the
“[f]actual allegations must be enough to raise a right
to relief above the speculative level.” Bell Atl.
Corp. v. Twombly, 500 U.S. 544, 555 (2007). While a
complaint “does not need detailed factual
allegations” to survive a motion to dismiss, Bell Atl.
Corp., 500 U.S. at 555, a pleading that merely recites
conclusory allegations or a “formulaic recitation of
the elements of a cause of action” fails to state a
claim, Iqbal, 556 U.S. at 678 (citation omitted).
deciding a Rule 12(b)(6) motion, a court may consider only
the facts stated on the face of the complaint, the documents
attached to the complaint by reference, and matters of which
judicial notice may be taken. Leonard F. v. Isr. Disc.
Bank of N.Y., 199 F.3d 99, 107 (2d Cir. 1999). Although
Setplex includes several documentary exhibits in support of
its motion to dismiss, those exhibits are not necessary to
resolution of this motion.
Copyright Infringement Claims
Direct Copyright Infringement
alleges that Setplex violated DigitAlb's exclusive
distribution rights by distributing its licensed programming
in the United States without authorization. (Compl.
¶¶ 19-21.) To state a claim for copyright
infringement, a plaintiff must allege that it owns a valid
copyright and that the defendant violated one of the
exclusive rights the plaintiff holds in the work, which
includes distribution rights. Capitol Records, LLC v.
ReDigi Inc., 934 F.Supp.2d 640, 648 (S.D.N.Y. 2013)
(citing Twin Peaks Prods., Inc. v. Publ'ns Int'l,
Ltd., 996 F.2d 1366, 1372 (2d Cir. 1993)). In other
words, a plaintiff must generally plead (1) the specific
original works are the subject of the copyright claim; (2)
that plaintiff owns the copyrights in those works; (3) that
the copyrights were registered in accordance with 17 U.S.C.
§ 411; and (4) the acts by which and the time period
during which the defendant infringed the copyright. Kelly
v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992).
tethers its arguments for dismissal to DigitAlb's failure
to allege that the at-issue copyrights are registered in
accordance with the Copyright Act. Specifically, it contends
that DigitAlb acknowledges that the copyrights are not
registered pursuant to 17 U.S.C. § 411, and that
DigitAlb has not alleged that the copyrights are exempt from
registration as non-United States works. DigitAlb does not
dispute that the at-issue copyrights are not registered, but
instead retorts-without citing any legal authority-that it is
not required to explicitly plead that the works are exempt
to the Copyright Act, holders of copyrights in “United
States works” may not institute a copyright
infringement suit “until preregistration or
registration has been made.” 17 U.S.C. § 411(a). A
work is a “United States work” only if, in the
case of a published work, it is first published (1) in the
United States; (2) simultaneously in the United States and
another treaty party whose law grants copyright protection
for at least the term provided in the United States; (3)
simultaneously in the United States and a foreign nation that
is not a treaty party; or (4) in a foreign nation that is not
a treaty party, and all the authors of the work are
headquartered in the United States. 17 U.S.C. § 101. On
the other hand, non-United States works-generally, works
first published outside the United States in a foreign
country that is a signatory to the Berne Convention-are
exempt from registration. See 5 Patry on Copyright §
17:77 (2017); accord Jose Armando Bermudez & Co. v.
Bermudez Int'l, 2000 WL 1225792, at *10 (S.D.N.Y.
Aug. 29, 2000).
threshold matter, this Court rejects DigitAlb's assertion
that it is not required to allege exemption from §
411's registration precondition. Although DigitAlb
appears to concede that works first published abroad and in
the United States simultaneously would be subject to
registration, its argument implicitly suggests that because
the Complaint does not allege simultaneous publication, those
works must be exempt. (See Memorandum of Law
Opposing the Motion of Defendants to Dismiss Counts I, II,
IV, and VI of the First Amended Complaint, ECF No. 51
(“Pl.'s Opp.”) at 4.) But this cannot be the
rule. If a court were to woodenly accept that a work is
exempt from registration based on the omission of
allegations indicating that the work is a United States work,
any party seeking to surmount the registration requirement
could simply omit any allegation of first publication in the
United States or first publication simultaneously within and
outside the United States. Thus, should DigitAlb seek to rely
on the § 411 registration exemption, it must allege that
the works are not United States works within the meaning of
§ 101. See Joint Stock Co. Channel One Russia
Worldwide v. Infomir LLC, 2017 WL 696126, at *13
(S.D.N.Y. Feb. 15, 2017); accord Kernel Records Oy v.
Mosley, 694 F.3d 1294, 1304-05 (11th Cir. 2012) (summary
DigitAlb proclaims that it “is certain from the
allegations in the First Amended Complaint” that it did
not publish the at-issue programming simultaneously in the
United States, a careful examination of the relevant
allegations reveals DigitAlb's conclusion to be far from
certain. (See Pl.'s Opp. at 5.) Here, the only
allegations pertaining to publication of the programming are
that DigitAlb “published those works outside of the
United States” and that it “licens[ed] other
distributors within and without the United States, not
including the defendants, to publish them.” (Compl.
¶ 13.) But these allegations do not identify where or
when the programming was first
additional points warrant brief discussion. First, DigitAlb
avers that the programming was “created, developed, and
produced . . . outside of the United States, i.e. in the
Republic of Albania or the Republic of Kosovo.” (Compl.
¶ 13.) Indeed, courts in this Circuit sometimes frame
the registration requirement in terms of the work's
“country of origin.” E.g., Sadhu
Singh Hamdad Trust v. Ajit Newspaper Advert., Mktg. &
Commc'ns, Inc., 503 F.Supp.2d 577, 584 (E.D.N.Y.
2007) (citing Jose Armando Bermudez & Co., 2000
WL 1225792, at *10). Of course, this phrasing makes sense in
light of § 411(a)'s historical exemption from
registration of “copyright[s] in Berne Convention works
whose country of origin is not the United
States.” 17 U.S.C. § 411(a) (1997) (emphasis
added). But like § 101's current definition of
“United States work, ” the preceding version of
§ 101 defined the “country of origin” as the
United States for § 411 purposes based on where the work
was “first published.” See 17 U.S.C.
§ 101 (1997); accord 5 Patry on Copyright
§ 17:77 (couching the “country of origin of the
work” in terms of where that work was first published).
Therefore, while the amended complaint suggests that the
works may have “originated” in Albania or Kosovo
from a layman's perspective, it says nothing about where
the works were first published.
DigitAlb alleges that the programming on at least some of the
at-issue channels-Top Channel, Top News, Musical, and Top
Channel HD-was “first aired . . . either (1) outside of
the United States or (2) simultaneously outside the United
States and within the United States.” (Compl. ¶
50.) This too is insufficient to allege where the works were
first published because the mere public performance or
display of a work does not constitute publication. 17 U.S.C.
§ 101; accord 1 Nimmer on Copyright § 4.11
(explaining that broadcast of audiovisual works does not
constitute publication). Accordingly, DigitAlb's direct
copyright infringement claim is dismissed.
Contributory Copyright Infringement
II alleges contributory infringement by LBD Group and the
Dreshaj Defendants on the basis that they facilitated,
managed, or directed Setplex's unauthorized distribution
of the programming by entering into contracts with consumer
subscribers for the programming and causing the delivery of
the programming to the subscribers. (Compl. ¶¶
26-29.) To state a claim for contributory copyright
infringement, a plaintiff must allege that someone
“with knowledge of the infringing activity induce[d],
cause[d], or materially contribute[d] to the infringing
conduct of another.” Blank Prods., Inc. v.
Warner/Chappell Music, Inc., 2013 WL 32806, at *3
(S.D.N.Y. Jan. 3, 2013) (quoting Arista Records, LLC v.
Doe 3, 604 F.3d 110, 117-18 (2d Cir. 2010)).
Setplex's only argument for dismissal of this claim is
that DigitAlb's failure to sufficiently plead the
registration element is fatal to its contributory copyright
infringement claim. It does not otherwise challenge the
sufficiency of the allegations related to contributory
infringement. This Court's analysis of the direct
copyright infringement claim compels the same result as to
the contributory infringement claim because § 411 is a
precondition to suit, not to bringing direct
infringement claims only. Accordingly, Count II is also