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Palmer/Kane LLC v. Benchmark Education Company LLC

United States District Court, S.D. New York

January 6, 2020

PALMER/KANE LLC, Plaintiff,
v.
BENCHMARK EDUCATION COMPANY LLC, and DOES 1-10, Defendants. Image No. Photograph Title Photograph ID Copyright Registration Publication Date(s) Infringing Title(s)

          OPINION & ORDER

          NELSON S. ROMAN, UNITED STATES DISTRICT JUDGE

         Plaintiff Palmer/Kane LLC ("P/K" or "Plaintiff') commenced this copyright infringement action against Defendant Benchmark Education Company LLC ("Benchmark" or "Defendant") on October 12, 2018. (See Complaint ("Compl."), ECF No. 1.) Plaintiff P/K alleges that it owns certain professionally-taken photographs, and that Benchmark has violated P/K's federally-registered copyrights by using such photographs without or in excess of licenses from P/K. Before this court is Defendant's motion to dismiss the complaint pursuant to Federal Rule of Civil Procedure 12(b)(6). (ECF No. 18.) For the following reasons, Defendant's motion is GRANTED in part and DENIED in part.

         FACTUAL BACKGROUND

         The following facts are derived from the Complaint and are assumed to be true for the purpose of this motion.

         Plaintiff P/K is a stock photography production company that produces commercial imagery. (Compl. ¶ 11.) P/K is the exclusive owner of thousands of photographs, which have been produced by Patricia Kane and photographed by Gabe Palmer, both members of P/K. (Id. ¶ 15.) The Complaint alleges that the photographs at issue in this case (the "Images") are each subject to one of the following three registrations with the United States Copyright Office:

• VAu 529-623, registered June 25, 2001 (the “ '623 Registration”);
• VA 1 -297-358, registered February 2, 2005 (the “ '358 Registration”); and
• VA 1 -811-724, registered October 12, 2011 (the “ '724 Registration”).

(Id. ¶ 16.) P/K licenses certain of its photographs through agencies such as non-party Corbis Corporation (“Corbis”). (Id. ¶ 11.) Corbis, in turn, licenses those photographs to its customers on a “rights-managed basis, ” meaning that the customers are issued a limited editorial use license that restricts the use of the photographs according to a variety of factors, e.g., media type, size, etc. (Id. ¶ 18.)

         One of Corbis's customers is Benchmark. (Id.) Benchmark is a publisher of, among other things, educational materials that are made available in paperback as well as digital formats. (Id. ¶ 2.) P/K alleges that Benchmark: (1) used certain Images without seeking any permission or license; (2) used certain Images in ways that exceeded the scope of any licenses; and (3) used certain Images where any licenses had expired. (Id. ¶ 3.) P/K alleges that it has identified at least 12 acts of copyright infringement, as summarized below:

Image No.
Photograph Title
Photograph ID
Copyright Registration
Publication Date(s)
Infringing Title(s)

1

Workers in Protective Suits Sampling Lake Water

I4690008

'623

2006

“Discover Forensic Chemistry” and ancillary products.

2

Water Testing

I4670102

'623

2005

“Ocean Pollution” and ancillary products.

3

High School Chemistry

O0670109

'623

2004

“Science Measuring Tools” and ancillary products.

4

Family Watching Falling Stars

PE1220350

'623

2006

“Stars” and ancillary products.

5

Children Using Flash Cards to Learn Math

O0660106

'623

2004

“Welcome to Our School” and ancillary products.

6

Veterinarian Giving Dog Examination

SC0030102

'623

Unknown title and ancillary products.

7

Juicy Fruit

NT5288640

'358

2004

“Crazy Fruit Salad” and ancillary products.

8

Brother and Sister at the Beach

PE0040191

'358

2007

“Life at the Beach” and ancillary products.

9

A line of Shadows

PE0410488

'358

2011

“Making Maps” and ancillary products.

10

Family Beach Outing

PE0130107

'358

2007

“Summer to Fall” and ancillary products.

11

Boy and Girl Looking at Globe

4215212623

'724

2007

“All About Continents” and in “Mapping the Way” and ancillary products for both titles.

12

Speeding Wheelchair Athlete

PS2710298

'724

2005

“Three Laws of Motion” and ancillary products.

(See Id. Ex. A.)[1]

         Plaintiff also alleges the involvement of various Doe defendants who are printers or other parties that were involved in the printing and/or distribution of titles containing P/K's photographs. (Id.¶ 14.)

         STANDARD OF REVIEW

         Rule 12(b)(6)

         On a 12(b)(6) motion, dismissal is proper unless the complaint “contain[s] 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)). When there are well-pleaded factual allegations in the complaint, “a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief.” Id. at 679. In deciding a motion to dismiss, a court must “construe all reasonable inferences that can be drawn from the complaint in the light most favorable to the plaintiff.” Arar v. Ashcroft, 585 F.3d 559, 567 (2d Cir. 2009). The critical inquiry is whether the plaintiff has pleaded sufficient facts to nudge the claims “across the line from conceivable to plausible.” Twombly, 550 U.S. at 570. A motion to dismiss will be denied where the allegations “allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678.

         Rule 8

         Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain a “short and plain statement of the claim showing that the pleader is entitled to relief.” In this Circuit, to meet the pleading requirements under Rule 8 in cases involving copyright infringement, plaintiffs have consistently been required to allege the four-prong standard set forth in Kelly v. L.L. Cool J., 145 F.R.D. 32, 36, n.3 (S.D.N.Y. 1992). See Jacobs v. Carnival Corp., No. 06 CIV. 0606 (DAB), 2009 WL 856637, at *4 (S.D.N.Y. Mar. 25, 2009). Under Kelly, the complaint must allege:'(1) which specific original works are the subject of the copyright claim, (2) that plaintiff owns the copyrights in those works, (3) that the copyrights have been registered in accordance with the statute, and (4) by what acts during what time the defendant infringed the copyright.'” Jose Luis Pelaez, Inc. v. McGraw-Hill Glob. Educ. Holdings LLC, No. 16-CV-5393 (KMW), 2017 WL 3432303, at *2 (S.D.N.Y. Aug. 9, 2017) (quoting Kelly., 145 F.R.D. at 36, aff'd, 23 F.3d 398 (2d Cir. 1994), cert. denied, 513 U.S. 950 (1994)).

         DISCUSSION

         Benchmark argues that Plaintiff has failed to adequately plead valid copyright registration status for any of the works that Plaintiff claims Benchmark infringed. (Def. Mem. in Supp. of Motion (“Def. Mem.”) at 11, ECF No. 19.) Benchmark further contends that P/K's claims are barred by the Copyright Act's statute of limitations. (Id. at 15-19.) Benchmark additionally argues that the Complaint has failed to identify the specific infringing works or infringing acts. (Id. at 19-22.) Lastly, Benchmark moves to dismiss P/K's claims to the extent they allege contributory and/or vicarious copyright infringement. (Id. at 22-25.) These arguments are addressed in turn.

         I. Copyright Infringement Pleading Requirements

         As to the adequacy of P/K's pleadings, the Court considers whether each of the four Kelly factors has been satisfied. See Kelly, 145 F.R.D. at 36.

         a. Identification of Specific Photographs

         Plaintiff alleges that it has “identified at least 12 acts of infringement by Benchmark of its Photographs, ” which are set forth in a chart attached to the Complaint. (See Compl. ¶ 17 & Ex. A.) The chart includes the photograph's title, “photograph ID, ” the relevant copyright registration, publication date(s), and “infringing title(s).” (See id., Ex. A.) In the Complaint, Plaintiff provides additional details regarding seven of the Images in the chart: Image Nos. 2, 3, 4, 5, 8, 10 and 11. (See Id. ¶¶ 20-45.) Plaintiff, however, notes that the works identified in the Complaint represent “a fraction of the acts of copyright infringement that Benchmark committed, ” and suggests that “access to Benchmark's records” would reveal the “full scope of infringing publications.” (Id. ¶ 4.) In this vein, Plaintiff references “additional” Photographs, “other . . . editions” “other . . . titles” and “additional licenses” that it implicates in the infringement. (See Id. ¶¶ 25, 28, 31, 35, 39.)

         Defendant argues that Plaintiff has not sufficiently identified the infringing works, and thus has failed to satisfy the first Kelly factor. (Def. Mem. at 18-22.) Courts appear to be divided on this issue: some dismiss complaints where the list of works provided is not exhaustive of potential infringement claims, [2] while others allow complaints that rely upon such incomplete lists, but dismiss any unidentified works.[3] The Court agrees with the reasoning set forth in Schneider v. Pearson Education, Inc., which follows the latter approach:

[T]he Court fails to see why several discrete paragraphs in a Complaint should nullify other, factually specific allegations in the Complaint; it would be unjust and inappropriate to throw out these well-pleaded allegations, merely because Plaintiff's Complaint may also contain a bit of bathwater. Simply stated, Plaintiff has alleged that specific works to which he owned the copyright were infringed upon, and by doing so, he has adequately pleaded this element under Rule 12(b)(6).

No. 12 CIV. 6392 JPO, 2013 WL 1386968, at *3 (S.D.N.Y. Apr. 5, 2013). Plaintiff has enumerated twelve works that are the subjects of its action in Exhibit A to the Complaint. Accordingly, the Court will not dismiss Plaintiff's claims wholesale. The Court finds that Plaintiff has adequately identified only those works listed in Exhibit A of the Complaint, and therefore any claims as to works other than those listed in Exhibit A are dismissed without prejudice.[4]

         b. P/K's Ownership of the Images' Copyright

         Plaintiff alleges that it is the exclusive owner to the copyrights of the Images, which are each subject to one of three registrations listed in the Complaint. (Compl. ¶¶ 15-16.) Exhibit A notes which registration applies to each Image listed. (Id., Ex. A.) Because Defendant does not ...


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