Summary
dismissing complaint for failure to allege infringement of protected rights when complaint merely stated that defendant "provided a copy" of copyrighted sound recording to a musician who used it to prepare derivative works
Summary of this case from Maverick Recording Company v. GoldshteynOpinion
02 Civ. 1164 (RWS)
February 11, 2003
DeSIMONE, AVILES, SHORTER OXAMENDI, By: RALPH DeSIMONE, ESQ., LOUISE CHERKIS, ESQ., Of Counsel, New York, NY, Attorneys for Plaintiff.
SONNENSCHEIN NATH ROSENTHAL, By: CHRISTINE LEPERA, ESQ., HOWARD H. WELLER, ESQ., Of Counsel, New York, NY, Attorneys for Defendant Scott Storch.
OPINION
Defendant Scott Storch ("Storch") has moved to dismiss the complaint of plaintiff Brought to Life Music, Inc. ("BTLMI") pursuant to Rule 12(b)(6), Fed.R.Civ.P., for failure to state a claim and pursuant to Rule 12(b) 2 and 3, Fed.R.Civ.P., for lack of personal jurisdiction and venue. For the reasons set forth below, the motion is granted.
Prior Proceedings
The complaint in this action was filed on February 13, 2002, alleging copyright infringement of BTLMI's musical recording "Sam Adams" and inducement to infringe the same work.
The complaint states as to Storch:
Upon information and belief, defendant Mr. Scott Storch is an associate of the defendant Andre Young p/k/a Dr. Dre and provided a copy of the musical track Sam Adams to defendant Andre Young p/k/a Dr. Dre.
The plaintiff Brought To Life, Inc. is informed and believes, therefore avers, that the defendants have infringed upon the copyright of plaintiff Brought To Life, Inc. in its Sam Adams musical track by copying portions of the Sam Adams musical track from the song entitled FAMILY AFFAIR appearing on the compact disc entitled NO MORE DRAMA, and the compact disc NO MORE DRAMA being the infringing work has been sold within this judicial district and elsewhere.
Plaintiff alleges copying and infringement by the remaining defendants.
The instant motion was heard and marked fully submitted on January 15, 2003.
The Standard For 12(b)(6)
Dismissal of a complaint pursuant to Federal Rules of Civil Procedure 12(b)(6) is appropriate only if "it appears beyond doubt that the plaintiff can prove no set of facts in support of the claim which would entitle him to relief." Carell v. The Shubert Organization, Inc., 104 F. Supp.2d 236, 246 (S.D.N.Y. 2000). A pleading "must at least set forth sufficient information for the court to determine whether some recognized legal theory exists on which relief" can be found. 2 James Wm. Moore et al., Moore's Federal Practice ¶ 12.34[1][b] (3d ed. 2002). Moreover, it is the legal sufficiency of the complaint, "not the weight of any evidence offered in support of the action" that is to be assessed. Spadafor v. Reale, 2001 WL 1020359, at *1 (S.D.N.Y. Sept. 5, 2001).
The Complaint Fails to Allege a Claim for Copyright Infringement
To withstand a motion to dismiss, a properly plead copyright infringement claim must allege:
(i) which specific original work is the subject of the claim, (ii) that plaintiff owns the copyright in the work, (iii) that the copyright has been registered in accordance with the statute, and (iv) by what acts during what time the defendant infringed the copyright.
Marvullo v. Gruner Jahr AG Co., 2001 WL 40772, at *2 (S.D.N.Y. Jan. 17, 2002) (citing Kelly v. L.L. Cool J., 145 F.R.D. 32, 35 (S.D.N.Y. 1992), aff'd, 23 F.3d 398 (2d Cir.) cert. denied, 513 U.S. 130 (1994)).
Plaintiff here has not alleged that Storch has violated any of its alleged exclusive rights in its works. Specifically, Storch is not alleged to have (i) reproduced plaintiff's work; (ii) prepared derivative works based on plaintiff's work; (iii) distributed copies of plaintiff's work to the public for sale; or (iv) performed plaintiff's work publicly by means of digital audio transmission. See 17 U.S.C. § 106. Plaintiff has not attempted to describe "by what acts and during what time" Storch infringed the copyright.
The Complaint Fails to Allege a Claim for Contributory Copyright Infringement
To establish a claim for contributory copyright infringement, a plaintiff must allege that the defendant "with knowledge of the infringing activity, induce[d], cause[d], or materially contribute[d] to the infringing conduct of another." Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). A plaintiff must allege that the defendant knew of, and substantially participated in, the alleged direct infringement, for a claim of contributory infringement to stand.
Significantly, with regard to the participation prong, an allegation that a defendant "merely provid[ed] the means to accomplish an infringing activity" is insufficient to establish a claim for contributory infringement. Livnat v. Lavi, 1998 WL 43221, at *3 (S.D.N.Y. Feb. 2, 1998) (citation omitted); see also Quiroga v. Fall River Music, Inc., 1998 WL 851574, at *37 (S.D.N.Y. Dec. 7, 1998) ("[a] mere allegation that the defendant provided the third party with the opportunity to engage in wrongful conduct would not even be enough to survive a motion to dismiss"); Display Producers, Inc. v. Shulton, Inc., 525 F. Supp. 631, 633 (S.D.N.Y. 1981) (a mere allegation that the defendant provided the primary infringer "with the opportunity to engage in wrongful conduct does not, without more, state a claim for contributory infringement . . ."). Rather, participation in the infringement must be "substantial" and the "authorization or assistance must bear a direct relationship to the infringing acts, and the contributory infringer must have acted in concert with the direct infringer." Livnat, supra, 1998 WL 43221, at *3 (citing 3 Melville B. Nimmer, David Nimmer, Nimmer on Copyright § 12.04[A][2][a], at 12-75 (1996)).
In addition to the requirement of substantial participation, knowledge of the infringing activity is also critical to sustaining a claim for contributory infringement. Thus, one who "supplies another with instruments by which another commits a tort, must be shown to have knowledge that the other will or can reasonably be expected to commit a tort with the supplied instrument. The test is whether [the] wrongdoing . . . might well have been anticipated by the defendant." Display Producers, 525 F. Supp. at 633 (citations omitted). Moreover, while knowledge of the infringing activity may be actual or constructive, "one who furnishes a copyrighted work to another but is innocent of any knowledge of the other party's intended illegitimate use will not be liable." Livnat, supra, 1998 WL 43221, at *3 (citing 3 Nimmer on Copyright § 12.04[A][2][b] at 12-76-77).
Here, the complaint does not allege that Storch had knowledge of, or reasonably should have anticipated the alleged infringement and alleges only that (i) Storch gave defendant Andre Young a copy of BTLMI's song, and that (ii) its copyright was infringed with knowledge.
There is no allegation of any participation in the alleged infringement by Storch, let alone substantial participation amounting to the "conver[sion] [of] plaintiff's song for his own use."
BTLMI has not distinguished the authorities cited by Storch. See Carell v. The Shubert Organization, Inc., 104 F. Supp.2d 236, 271 (S.D.N.Y. 2000) (motion to dismiss claim of contributory infringement granted where plaintiff failed to allege authorization or participation sufficient for liability); Cable News Network, L.P., L.L.I.P. v. GOSMS.com, Inc., 2000 WL 1678039, at *6 (S.D.N.Y. Nov. 6, 2000) (motion to dismiss claim of contributory infringement granted where plaintiff failed to allege supervision or control over, or contribution to, the infringement); Livnat, supra, 1998 WL 43221, at *4 (plaintiff could not sustain a claim for contributory copyright infringement against a defendant who left plaintiff's photographs with the primary infringer since the defendant lacked actual or constructive knowledge that the primary infringer would make use of the photographs) and Calloway v. The Marvel Entertainment Group, 1983 WL 1152, at *2 (S.D.N.Y. Dec. 23, 1983) (motion to dismiss claim of contributory infringement granted where plaintiff failed to allege that defendant supervised or had a financial interest in the infringing activities or participated in the dissemination of the work or materially contributed to the infringement).
In fact, the allegation by BTLMI of contributory infringement is made in plaintiff's opposition, not in the complaint. As this Court previously pointed out, more specific allegations contained in an opposing brief cannot be used to supplement otherwise conclusory allegations in a complaint. Livnat v. Lavi, 1997 WL 566097, at FN1 (S.D.N.Y. Sept. 8, 1997). In any event, even the allegations in BTLMI's opposition fail to support a claim of contributory infringement against defendant Storch. The allegation that Storch's infringement is "well documented in his association with co-defendant Andre Young" does not allege a claim for contributory infringement.
The Complaint Fails to Allege Personal Jurisdiction Adequately
BTLMI has alleged that Storch is a Pennsylvania resident (Compl. ¶ 4) and has failed to show that jurisdiction over Storch may be asserted under CPLR 301, which applies to non-resident defendants who are "engaged in such a continuous and systematic course of `doing business' in New York as to warrant a finding of `presence'" in the state. Carell, supra, 104 F. Supp.2d at 268. Thus, a non-resident defendant must conduct, or purposefully direct business, in New York "`not occasionally or casually, but with a fair measure of permanence and continuity.'" Id. (citations omitted); Landoil Resources Corp. v. Alexander Alexander Servs., Inc., 918 F.2d 1039, 1043 (2d Cir. 1991) (citation omitted). In determining whether a defendant "does business" in New York for purposes of CPLR 301, courts traditionally consider the existence of an office in New York, the solicitation of business in New York, the presence of bank accounts and other property in New York, and the presence of employees or agents in New York. See Carell, supra, 104 F. Supp.2d at 268; Landoil Resources, supra, 918 F.2d at 1043. Nowhere in the complaint does BTLMI allege the existence of any of the traditional indicia.
The activities set forth in the opposition to the motion include (i) Storch's involvement with musical recordings produced in New York; (ii) the derivation of income from the sale of musical recordings nationwide, including New York; (iii) musical performances in New York; and (iv) co-publishing relationship with a New York entity. These activities, not alleged in the complaint but asserted, do not constitute as stated the degree of continuous and systematic contacts required under CPLR 301. See Mantello v. Hall, 947 F. Supp. 92, 98 (S.D.N.Y. 1996) (finding allegations that defendant regularly entered into licensing agreements with New York entities for rights to produce plays elsewhere and regularly hired New York actors did not amount to "doing business" and stating that "`[t]he mere existence of a business relationship with entities within the forum state is insufficient to establish presence'") (citations omitted); Jacobs v. Felix Bloch Erben Verlag fur Buhne Film und Funk KG, 160 F. Supp.2d 722, 732 (S.D.N.Y. 2001) (producers' contacts with this forum, which included viewing theater productions, negotiating, and casting and hiring talent for productions overseas, were insufficient to establish jurisdiction under CPLR 301). BTLMI has relied on ABKCO Indus., Inc. v. Lennon, 377 N.Y.S.2d 362 (N.Y.Sup.Ct. 1975). That case was "an exception to the norm" and a "departure from established principle and precedent" because the defendant there, a member of The Beatles, exploited his musical recordings through New York accountants and attorneys whom he had retained on a continuing basis (see ABKCO Indus., Inc. v. Lennon, 384 N.Y.S.2d 781, 784 (1st Dep't 1976)) and was therefore found to be doing business in New York "pervasively, unmistakably, undeniably, continuously, and substantially." 377 N.Y.S.2d at 366.
Under CPLR 302(a)(1), which establishes jurisdiction when the defendant transacts business in the state, "[i]t is well-settled that the relationship between the claim and the in-state transaction must be `direct.'" Jacobs, 10 F. Supp.2d at 739 (finding connection between alleged copyright infringement and defendants' in-state activities was too remote).
Cases invoking a contributory infringement theory to establish an agency relationship sufficient to invoke CPLR 302(a)(2) require a close nexus between the defendant and the primary infringer such that the defendant can be deemed to be purposefully using an intermediary "to take advantage of the market in the forum state, while avoiding jurisdiction for infringement." The Topps Co., Inc. v. Gerrit J. Verbug Co., 961 F. Supp. 88, 91 (S.D.N.Y. 1997). No such connection is alleged here.
CPLR 302(a)(3) authorizes jurisdiction over non-domiciliaries who commit a tortious act outside the state causing injury to person or property within the state. As concluded above, the complaint has failed to allege that Storch committed such an act.
In the absence of appropriate jurisdictional allegations, the complaint is dismissed.
Conclusion
For the reasons set forth above, the motion of Storch is granted, and the complaint is dismissed with leave granted to replead within twenty (20) days.
It is so ordered.