Opinion
Civil Action 22 Civ. 6210 (JLR) (SLC)
09-08-2023
LEONG FRANCISCO PAULO, Plaintiff, v. AGENCE FRANCE-PRESSE; GETTY IMAGES US, INC.; GETTY IMAGES, INC.; JOHN DOES 1-100; and XYZ CORPORATIONS 1-100, Defendants.
HONORABLE JENNIFER L. ROCHON, UNITED STATES DISTRICT JUDGE:
REPORT AND RECOMMENDATION
SARAH L. CAVE, UNITED STATES MAGISTRATE JUDGE
I.INTRODUCTION
Plaintiff Leong Francisco Paulo (“Leong”), a Portuguese photojournalist, brings this action against Agence France-Presse (“AFP”), a French news agency, and Getty Images (U.S.), Inc., a New York Corporation, and Getty Images, Inc., a Delaware corporation (together, the “Getty Defendants,” and, with AFP, “Defendants”), alleging that Defendants' use of his photographs constituted copyright infringement under the Copyright Act, 17 U.S.C. §§ 101, et seq. (the “Act”). (ECF No. 1 (the “Complaint”) ¶¶ 1-3, 109-51, 232-251). This is the second copyright action Leong has initiated against Defendants, the first (the “2021 Action”) having been dismissed on forum non conveniens grounds. See Paulo v. Agence France-Presse, No. 21 Civ. 11209 (JLR) (SLC), 2023 WL 2873257 (S.D.N.Y. Jan. 19, 2023) (“Paulo I”), adopted by, 2023 WL 2707201 (S.D.N.Y. Mar. 30, 2023) (“Paulo II”). Leong concedes that “the vast majority of [the allegations in this action] are identical to those pleaded in the 2021 Action,” and that he brings this action “solely to support claims of infringement of” works that he has registered since the 2021 Action (the “2022 Registered Works”). (ECF No. 1 at 1; see ECF No. 1-1 (redline comparison of the First Amended Complaint (“FAC”) in the 2021 Action with the Complaint)).
The Court employs Leong's preferred name in the Complaint. (ECF No. 1 at 1).
Before the Court is Defendants' motion to dismiss the Complaint as duplicative of the 2021 Action and precluded by the Court's holding in Paulo II (ECF No. 17 (the “Motion”)), which the Honorable Jennifer L. Rochon has referred to the undersigned for this report and recommendation. (ECF No. 10). For the reasons set forth below, I respectfully recommend that the Motion be GRANTED and this action be conditionally DISMISSED.
II.BACKGROUND
A. Factual Background
The factual background and defined terms set forth in Paulo II are incorporated by reference. 2023 WL 2707201, at *1-4. The additional facts necessary to analyze the Motion are taken from the Complaint, “the allegations of which [the Court] accept[s] as true, as well as from other materials” referenced in or attached to the Complaint. In re Amaranth Nat. Gas Commodities Litig., 730 F.3d 170, 176 (2d Cir. 2013); accord DiFolco v. MSNBC Cable LLC, 622 F.3d 104, 110-11 (2d Cir. 2010); Paulo II, 2023 WL 2707201, at *1 n.1.
In 2022, Leong secured United States Copyright registrations for the 24 photographs that comprise the 2022 Registered Works. (ECF No. 1 ¶ 47). To obtain the registrations, Leong used AFP Forum “screen shots . . . that displayed thumbnails” of the 2022 Registered Works. (Id.; see ECF No. 1-30). The nature of Defendants' infringement is identical to that alleged in the 2021 Action. (See ECF No. 1-1 (indicating no substantive changes to paragraphs 1-231 of the Complaint as compared to the FAC in the 2021 Action)).
B. Procedural Background
On December 30, 2021, Leong filed the 2021 Action, and, on July 15, 2022, filed the FAC in the 2021 Action. (Complaint, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. Dec. 30, 2021), ECF No. 1; First Amended Complaint, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. July 15, 2022), ECF No. 52). On July 21, 2022, Leong filed this action. (ECF No. 1). He claims that filing a second action was necessary to “allow him to protect his interests and at the same time be procedurally efficient by having the parties stipulate to consolidate the two cases.” (ECF No. 20 ¶ 5; see ECF No. 1 at 1-2). Defendants declined to stipulate to consolidation. (ECF No. 20 ¶ 6).
On January 19, 2023, the Court issued Paulo I, recommending that Defendants' motion to dismiss (the “MTD”) the FAC be granted and the action be conditionally dismissed pursuant to the doctrine of forum non conveniens. 2023 WL 2873257, at *30. On March 30, 2023, Judge Rochon adopted Paulo I in its entirety, granted the MTD, and dismissed the 2021 Action on forum non conveniens grounds, provided that Defendants agreed to:
(1) accept service in Portugal; (2) submit to the jurisdiction of the Lisbon District Court's Labour Division and/or Intellectual Property Division; (3) waive any statute of limitations defense that may have arisen since the filing of this action; (4) toll the statute of limitations as to Leong's claims under the Act and permit Leong to move to reopen this action and reassert those claims in the event that a Portuguese court were to decline to hear such claims; and (5) agree that Leong is not precluded from arguing that Clause 7 created a license that he rescinded.Paulo II, 2023 WL 2707201, at *14 (the “Conditions”). Judge Rochon also dismissed the 2021 Action as to AFP for lack of personal jurisdiction. Id. Leong declined Defendants' request that he stipulate to dismissal of this action on the Conditions. (ECF No. 20 ¶ 7). Although Leong initially appealed Paulo II to the United States Court of Appeals for the Second Circuit, he subsequently withdrew his appeal. (Notice of Appeal, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. Apr. 28, 2023), ECF No. 104; Mandate of USCA, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. June 1, 2023), ECF No. 110).
The First Action has been closed, although Defendants have filed a motion for attorneys' fees, which is pending before the Court. (Clerk's Judgment, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. Mar. 31, 2023), ECF No. 97; Motion for Attorneys' Fees, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. Apr. 14, 2023), ECF No. 98).
On May 1, 2023, Defendants filed the Motion. (ECF No. 17). On May 15, 2023, Leong filed an opposition to the Motion, and, on May 19, 2023, Defendants filed a reply. (ECF Nos. 19-21).
III. DISCUSSION
A. Legal Standard
“As part of its general power to administer its docket, a district court may stay or dismiss a suit that is duplicative of another federal court suit.” Curtis v. Citibank, N.A., 226 F.3d 133, 138 (2d Cir. 2000) (citing Co. Riv. Water Conservation Dist. v. United States, 424 U.S. 800, 817 (1976)).A suit is duplicative when “the same proof is needed to support the claims in both suits or, in other words, whether facts essential to the second suit were present in the first suit.” Id. at 139. “Application of the rule requires that both cases have identical or substantially similar parties and claims.” Spotless Enters. Inc. v. The Accessory Corp., 415 F.Supp.2d 203, 205 (E.D.N.Y. 2006) (citing In re Cuyahoga Equip. Corp., 980 F.2d 110, 116-17 (2d Cir. 1992)). The district court must “consider the equities of the situation when exercising its discretion” in applying the rule. Curtis, 226 F.3d at 138.
Internal citations and quotation marks are omitted from case citations unless otherwise indicated.
“The power to dismiss a duplicative lawsuit is meant to foster judicial economy and the ‘comprehensive disposition of litigation,'” Curtis, 226 F.3d at 138 (quoting Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co., 342 U.S. 180, 183 (1952)), as well as “to protect parties from ‘the vexation of concurrent litigation over the same subject matter.'” Id. (quoting Adam v. Jacobs, 950 F.2d 89, 93 (2d Cir. 1991)). This “rule against duplicative litigation is distinct from but related to the doctrine of claim preclusion or res judicata.” Id. The latter assesses “the legal efficacy of the first suit, when finally disposed of, as the thing adjudged, regarding the matters at issue in the second suit.” United States v. Haytian Republic, 154 U.S. 118, 124 (1894). “[T]he doctrine of claim preclusion serves the interest of society and litigants in assuring the finality of judgments [and] also fosters judicial economy and protects the parties from vexatious and expensive litigation.” Curtis, 226 F.3d at 138. “Because of the obvious difficulties of anticipating the claim or issue-preclusion effects of a case that is still pending, a court faced with a duplicative suit will commonly stay the second suit, dismiss it without prejudice, enjoin the parties from proceeding with it, or consolidate the two actions.” Id. (collecting cases). In addition, “simple dismissal of the second suit is another common disposition because plaintiffs have no right to maintain two actions on the same subject in the same court, against the same defendant at the same time.” Id. at 139.
The rule against duplicative litigation creates a presumption of dismissal that may be rebutted when the case involves “special circumstances,” Spotless Enters., 415 F.Supp.2d at 205-06, or “the balance of convenience favors the second-filed action.” Emps. Ins. v. Fox Ent. Grp., Inc., 522 F.3d 271, 275 (2d Cir. 2008); see Fort Howard Paper Co. v. William D. Witter, Inc., 787 F.2d 784, 790 (2d Cir. 1986) (explaining that “where there are two competing lawsuits, the first suit should have priority, absent the showing of balance of convenience in favor of the second action, or unless there are special circumstances which justify giving priority to the second”). To rebut this “presumption, however, the balance of convenience must weigh decidedly in favor of the second case.” Clean Vehicle Sols. Am. LLC v. Carollton Exempted Vill. Sch. Dist. Bd. of Educ., No. 15 Civ. 1503 (VB), 2015 WL 5459852, at *5 (S.D.N.Y. Sept. 2, 2015).
Special circumstances such as “customer actions” or “improper anticipatory actions” “may justify a departure from the” rule, but neither circumstance is present here. Spotless Enterprises, 415 F.Supp.2d at 206-07.
B. Application
There is no dispute that there is more than substantial overlap between this action and the 2021 Action. In fact, Leong admits as much, acknowledging that the “Complaint pleads various allegations-the vast majority of which are identical to those pleaded in the 2021 Action.” (ECF No. 1 at 2 (emphasis added); see ECF No. 19 at 6 (Leong admitting that “all of” the allegations in the Complaint “are identical to those pleaded in the 2021 Case except for the 2022 Registered Works”)). His redline of the FAC in the 2021 Action to the Complaint in this action substantiates the similarities, showing nearly identical substantive allegations regarding Defendants' alleged infringement of Leong's photographs. (See ECF No. 1-1 ¶¶ 26-231). Both cases involve the same parties and the same issues as to the validity of Leong's copyrights and whether Defendants' actions infringed those rights. (Id.) The apparent difference between the two cases is that this action is based on the 2022 Registered Works, for which Leong obtained registrations after filing the 2021 Action. (ECF No. 1 ¶ 47).There is thus sufficient similarity between the 2021 Action and this action to apply the presumption of dismissal under the rule against duplicative litigation. See Sentementes v. Lamont, No. 21 Civ. 304 (MPS), 2021 WL 1738997, at *2 (D. Conn. May 3, 2021) (dismissing under duplicative action rule action that raised the same claims against the same parties arising from the same incidents involving plaintiff); Greenaway v. Apple-Metro, Inc, No. 13 Civ. 2818 (ENV) (CLP), 2013 WL 12216603, at *2 (E.D.N.Y. Nov. 19, 2013) (dismissing under duplicative action rule action that “substantially overlap[ped]” with earlier filed action and “involve[d] identical claims, allegations and defendants”).
Leong also does not assert in this action a claim for copyright management information violations, which he did assert in the 2021 Action. (See ECF No. 1-1 ¶ 1; see id. at 59-60).
As set forth above, to rebut the presumption, Leong was required to show that special circumstances exist or that the balance of convenience weighs against dismissal. Based on precedent from this District holding that the failure to register a copyright before filing a lawsuit cannot be cured by amendment but instead requires dismissal (ECF No. 19 at 6 (quoting Malibu Media, LLC v. Doe, No. 18 Civ. 10956 (JMF), 2019 WL 1454317, at *1-3 (S.D.N.Y. Apr. 2, 2019)),Leong asserts that he needed to file this action to “preserve[] his claims of infringement if it is determined . . . that some or all of his works are ‘United States works'” (ECF No. 19 at 6) for which registration is a prerequisite to a suit under the Act. See 17 U.S.C. § 411(a) (“no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with [that] title”); see also Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S.Ct. 881, 886 (2019) (holding that “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright”). He claims that Defendants' declining to “tak[e] a position on this issue[] leav[es] open the possibility that they would move to dismiss or for summary judgment on any nonregistered photos should the case be reopened here.” (ECF No. 19 at 6 (citing ECF No. 18 at 3 n.2)). Leong's argument could be construed as a concession that, to the extent the 2021 Action sought to assert claims based on the 2022 Registered Works, those claims were unexhausted due to lack of registration and subject to dismissal on grounds other than forum non conveniens. The Court need not resolve that question here, however, because the more efficient solution is to dismiss this action, but on the same Conditions as in Paulo II, i.e., that Defendants agree to:
Accord Green v. Pete, No. 22 Civ. 4220 (PAE) (SN), 2023 WL 2393873, at *4 (S.D.N.Y. Jan. 3, 2023) (recommending dismissal without prejudice and explaining that “[b]ecause copyright registration is a statutory prerequisite to the filing of an infringement action, no amendment can cure the deficiency”), adopted by, 2023 WL 2043951 (S.D.N.Y. Feb. 16, 2023); Zonis v. Grubman, No. 20 Civ. 7181 (JMF), 2022 WL 597447, at *2 (S.D.N.Y. Feb. 28, 2022) (explaining that “the failure to register a copyright cannot be cured after a lawsuit has been filed”); Lee v. Black Ent. Television, LLC, No. 19 Civ. 2751 (LAK), 2020 WL 1140795, at *1 (S.D.N.Y. Mar. 6, 2020) (agreeing with Malibu Media and dismissing claims registered seven months after action was filed); Biswas v. Rouen, No. 18 Civ. 9685 (RA), 2019 WL 5260821, at *4 (S.D.N.Y. Oct. 16, 2019) (dismissing copyright claims based on works for which no registration had been issued).
(1) accept service in Portugal; (2) submit to the jurisdiction of the Lisbon District Court's Labour Division and/or Intellectual Property Division; (3) waive any statute of limitations defense that may have arisen since the filing of this action; (4) toll the statute of limitations as to Leong's claims under the Act and permit Leong to move to reopen this action and reassert those claims in the event that a Portuguese court were to decline to hear such claims; and (5) agree that Leong is not precluded from arguing that Clause 7 created a license that he rescinded.Paulo II, 2023 WL 2707201, at *14. In addition, all claims against AFP are subject to dismissal for lack of personal jurisdiction for the same reasons set forth in Paulo II. Id. at *14.
Dismissal on the Conditions places Leong's claims premised on the 2022 Registered Works on the same status as the 2021 Action-dismissed pursuant to forum non conveniens and, as to AFP, due to lack of personal jurisdiction-and prevents Leong from re-litigating those issues. Doing so also preserves until the day, if Leong were to move to reopen this action or the 2021 Action following litigation in Portugal, the question whether the 2022 Registered Works are United States works subject to the registration exhaustion requirement, as well as Defendants' defenses and arguments why his claims lack merit. Defendants do not dispute that the registration exhaustion requirement does not apply to the litigation of Leong's claims in the Portuguese courts, and therefore overreach when they ask that this action “simply be dismissed.” (ECF No. 21 at 3).
Finally, Leong asks the Court to direct Defendants to “execute a stipulation or declaration from counsel agreeing to the five (5) conditions described in [Paulo II] for” dismissal of this action and the 2021 Action. (ECF No. 19 at 7). Leong's request is unnecessary as to the 2021 Action, given Defendants' prior commitment to abide by the Conditions. (See Transcript of December 20, 2022 Proceedings, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. Dec. 27, 2022), ECF No. 85 at 13 (Defendants' counsel acknowledging that Defendants were not arguing that Leong's Clause 7 argument was precluded), 14 (Defendants' counsel agreeing that Plaintiff could bring his claims in Portuguese court), 15 (Defendants agreeing to toll statute of limitations); Defendants' Memorandum of Law, Paulo v. Agence France Presse, et al., No. 21 Civ. 11209 (S.D.N.Y. Aug. 19, 2022), ECF No. 54 at 15 (Defendants agreeing to service of process in Portugal)). See Value Ptrs. S.A. v. Bain & Co., No. 98 Civ. 1562 (SAS), 1998 WL 336648, at *3 (S.D.N.Y. June 22, 1998) (parties not required to submit stipulation where defendant had previously agreed to submit to foreign court's jurisdiction). Defendants have not made such representations in this action, however, and, therefore, requiring the parties to submit a stipulation of dismissal setting forth the Conditions would be consistent with the procedure followed by other courts in this District entering conditional dismissal on forum non conveniens grounds. See, e.g., Aenergy, S.A. v. Rep. of Angola, No. 20 Civ. 3569 (JPC), 2021 WL 1998725, at *20 (S.D.N.Y. May 19, 2021) (requiring parties to submit agreement to litigate in foreign forum consistent with conditions set by district court), aff'd, 31 F.4th 119 (2d Cir. 2022); Owens v. Turkiye Halk Bankasi A.S., No. 20 Civ. 2648 (DLC), 2021 WL 638975, at *6 (S.D.N.Y. Feb. 16, 2021) (same). I therefore respectfully recommend that the Court, should it grant the Motion, require the parties to submit a proposed stipulation of dismissal setting forth the Conditions.
IV.CONCLUSION
For the reasons set forth above, I respectfully recommend that the Motion be GRANTED and this action be DISMISSED pursuant to the doctrine of forum non conveniens on the Conditions, i.e., that Defendants agree to:
(1) accept service in Portugal; (2) submit to the jurisdiction of the Lisbon District Court's Labour Division and/or Intellectual Property Division; (3) waive any statute of limitations defense that may have arisen since the filing of this action; (4) toll the statute of limitations as to Leong's claims under the Act and permit Leong to move to reopen this action and reassert those claims in the event that a Portuguese court were to decline to hear such claims; and (5) agree that Leong is not precluded from arguing that Clause 7 created a license that he rescinded.
In addition, I respectfully recommend that the claims against AFP be DISMISSED for lack of personal jurisdiction, and that the Court require the parties to submit a proposed stipulation of dismissal for this action setting forth the Conditions.
NOTICE OF PROCEDURE FOR FILING OBJECTIONS TO THIS REPORT AND RECOMMENDATION
The parties shall have fourteen (14) days (including weekends and holidays) from service of this Report and Recommendation to file written objections pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil Procedure. See also Fed.R.Civ.P. 6(a), (d) (adding three additional days when service is made under Fed.R.Civ.P. 5(b)(2)(C), (D) or (F)). A party may respond to another party's objections within fourteen (14) days after being served with a copy. Fed.R.Civ.P. 72(b)(2). Such objections, and any response to objections, shall be filed with the Clerk of the Court. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), (d), 72(b). Any requests for an extension of time for filing objections must be addressed to Judge Rochon.
FAILURE TO OBJECT WITHIN FOURTEEN (14) DAYS WILL RESULT IN A WAIVER OF OBJECTIONS AND WILL PRECLUDE APPELLATE REVIEW. See 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 6(a), (d), 72(b); Thomas v. Arn, 474 U.S. 140 (1985).