United States District Court, S.D. New York
OPINION AND ORDER
G. SCHOFIELD, District Judge
Maria Solange Ferrarini brings this action against Defendants
Ipek Irgit and Kiini, LLC (collectively, the
“Defendants”), alleging copyright infringement,
17 U.S.C. § 501; a violation of California's Unfair
Competition law, California Business and Professions Code
§ 17200, et seq.; conversion and/or civil theft under
California and New York common law; and intentional
interference with prospective economic advantage. Defendants
move to dismiss the Amended Complaint (the
“Complaint”) under Federal Rule of Civil
Procedure 12(b)(6). For the following reasons, the motion is
denied as to the copyright infringement claim, and granted as
to the state law claims.
following facts relevant to Defendants' motion are taken
from the Complaint and supporting exhibits, and are accepted
as true for purposes of this motion. See Hu v. City of
New York, 927 F.3d 81, 88 (2d Cir. 2019) (“In
deciding a Rule 12(b)(6) motion, the court may consider only
the facts alleged in the pleadings, documents attached as
exhibits or incorporated by reference in the pleadings[, ]
and matters of which judicial notice may be taken.”)
(internal quotation marks omitted).
is an artisan living in Trancoso, Brazil. In 1998, Plaintiff
created a design for hand knitted, colorful crochet bikinis
and, since then, has sold these bikinis directly to the
public. In 2012, Defendant Irgit purchased one of
Plaintiff's bikinis. In 2013, Defendant Irgit founded
Kiini, LLC and, in 2014, Defendants began manufacturing and
selling bikinis using Plaintiff's design. In December
2014, Defendant Irgit registered Plaintiff's bikini
design with the United States Copyright Office. The copyright
listed Defendant Irgit as the author, and asserted January
30, 2013, as the date of first publication. Defendant Irgit
subsequently assigned the copyright to Kiini, LLC. Defendants
advertised and promoted the bikini through the Kiini, LLC
website, and through numerous interviews in fashion and
swimwear publications around the world. In these promotional
interviews, Defendants falsely portrayed Defendant Irgit as
the creator of the bikini design.
2015, Defendant Irgit sued Victoria's Secret for
infringing Defendant Irgit's purported bikini design.
During that lawsuit, Victoria's Secret subpoenaed
individuals in Kiini, LLC's manufacturing and production
chain, including Sally Wu. In 2012, Defendant Irgit had
emailed Ms. Wu to inquire about potential production of
Plaintiff's bikini design, and had attached images of
Plaintiff's bikini to the email. The images revealed
Plaintiff's actual signature and phone number on the
waistline of the bikini bottom. In an attempt to obstruct Ms.
Wu's cooperation with the subpoena, Defendant Irgit
instructed Ms. Wu not to reveal the bikini was a duplication
of Plaintiff's design, and offered to take Ms. Wu and
three of her friends on a trip anywhere in the world if
Kiini, LLC won its lawsuit against Victoria's Secret. Ms.
Wu never received a copy of the subpoena, and Defendants
secured a settlement with Victoria's Secret.
early 2018, Defendant Irgit sued two smaller swimsuit
manufacturers. The CEO of one of companies was able to locate
Plaintiff in Trancoso, Brazil. Plaintiff subsequently sought
counsel and brought this lawsuit. After Plaintiff secured a
United States copyright registration, Plaintiff amended the
complaint on April 17, 2019, to include a copyright
survive a motion to dismiss under Rule 12(b)(6), “a
complaint must contain 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)). “A claim has facial
plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Id. (citing Twombly, 550 U.S. at 556). It
is not enough for a plaintiff to allege facts that are
consistent with liability; the complaint must
“nudge” claims “across the line from
conceivable to plausible.” Twombly, 550 U.S.
at 570. “To survive dismissal, the plaintiff must
provide the grounds upon which his claim rests through
factual allegations sufficient to raise a right to relief
above the speculative level.” Lanier v. Bats Exch.,
Inc., 838 F.3d 139, 150 (2d Cir. 2016). On a Rule
12(b)(6) motion, “all factual allegations in the
complaint are accepted as true and all inferences are drawn
in the plaintiffs favor.” Apotex Inc. v. Acorda
Therapeutics, Inc., 823 F.3d 51, 59 (2d Cir. 2016).
The Copyright Claim is Not Barred by the Statute of
argue that the Complaint's copyright claim is time
barred. “Although the statute of limitations is
ordinarily an affirmative defense that must be raised in the
answer, a statute of limitations defense may be decided on a
Rule 12(b)(6) motion if the defense appears on the face of
the complaint.” Thea v. Kleinhandler, 807 F.3d
492, 501 (2d Cir. 2015); accord Wei Su v. Sotheby's,
Inc., No. 17 Civ. 4577, 2019 WL 4917609, at *2 (S.D.N.Y.
Oct. 4, 2019).
threshold question for this analysis is the type of claim
brought -- ownership or infringement -- because the type of
claim determines how the statute of limitations is applied.
If the claim is one of ownership, the copyright claim must be
brought “within three years after the claim
accrued.” 17 U.S.C. § 507(b)); see Wilson v.
Dynatone Publ'g Co., 892 F.3d 112, 118 (2d Cir.
2018). “[A]n infringement action may be commenced
within three years of any infringing act, regardless
of any prior acts of infringement; . . . the three-year
limitations period . . . bar[s] only recovery for infringing
acts occurring outside the three-year period.” Kwan
v. Schlein, 634 F.3d 224, 228 (2d Cir. 2011). Where
“the ownership claim is time-barred, and ownership is
the dispositive issue, any attendant infringement claims must
fail.” Id. at 230.
Defendants are correct that Plaintiff brings an ownership
claim. However, because it is not apparent on the face of the
Complaint that the claim accrued more than three years before
Plaintiff brought ...