Case 1:19-cv-03855-AMD-JRC Document 58 Filed 06/02/23 Page 1 of 9 PageID #: 305
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`Plaintiff,
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`- against -
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`MEMORANDUM
`DECISION AND ORDER
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`19-CV-3855 (AMD) (JRC)
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`RONNIE KAHN,
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`Defendants.
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`ANN M. DONNELLY, District Judge:
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`NESHAMA CARLEBACH and NEDARA
`CARLEBACH,
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`The plaintiff brings this action under the Declaratory Judgment Act, 28 U.S.C. § 2201 et
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`seq., and the Copyright Act, 17 U.S.C. § 101 et seq., alleging co-authorship and copyright-
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`infringement claims. Before the Court are the defendants’ motions to dismiss under Federal
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`Rule of Civil Procedure 12(b)(6) for failure to state a claim and for costs, attorney’s fees and
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`sanctions. For the reasons that follow, the motion to dismiss is denied in part and granted in part.
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`The motions for costs, fees and sanctions are denied without prejudice.
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`BACKGROUND
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`According to the second amended complaint, the plaintiff co-wrote a song titled “Return
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`Again” with Shlomo Carlebach in 1975. (ECF No. 33 ¶¶ 1, 2.) The plaintiff wrote the English
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`lyrics, and Mr. Carlebach wrote the music and the Hebrew lyrics. (Id. ¶¶ 12–14.) They
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`registered the song with the U.S. Copyright Office the same year, noting their joint authorship on
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`the registration. (Id. ¶ 14; ECF No. 56-3.)1 Mr. Carlebach died in 1994.
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`1 When ruling on a motion to dismiss, a district court may consider “any written instrument attached to
`[the complaint] as an exhibit or any statements or documents incorporated in it by reference.”
`Chambers v. Time Warner, Inc., 282 F.3d 147, 152 (2d Cir. 2002) (citation omitted). The plaintiff
`expressly refers to the 1975 and 2006 registrations in the complaint and attaches them to his
`memorandum, so the Court will rely on these documents. However, the plaintiff also submits letters
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`In 2006, Mr. Carlebach’s daughters—the defendants in this case—registered a song titled
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`“Return again” with the U.S. Copyright Office. (ECF No. 33 ¶ 17; ECF No. 56-4.) They
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`attributed the “words & music” to Mr. Carlebach and did not mention the plaintiff. (ECF No.
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`56-4.) They also stated that Mr. Carlebach wrote the song in 1965 and first published it in 1978.
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`(Id.)
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`The plaintiff claims that the 2006 registration was for the “very same song,” and that he
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`“did not license the Lyrics” to the defendants or otherwise give them “permission or consent to
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`use the Lyrics . . . in the New Copyright.” (ECF No. 33 ¶¶ 17, 21, 22, 24.) The plaintiff
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`acknowledges that the defendants are Mr. Carlebach’s “heirs” and “now joint owners” of the
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`song but argues that they improperly excluded him from the registration and refused to pay him
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`his share of the royalties. (Id. ¶¶ 10, 20.)
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`The plaintiff seeks a declaratory judgment establishing his joint ownership of the song, as
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`well as an accounting. He also claims that the defendants infringed his copyright in violation of
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`17 U.S.C. §§ 106 and 501, and that they improperly amended the 1975 registration. The
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`defendants move to dismiss for failure to state a claim, as well as for costs, attorney’s fees and
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`sanctions for vexatious litigation. (ECF No. 51.)
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`LEGAL STANDARD
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`Federal Rule 8 of Civil Procedure requires a plaintiff to plead sufficient facts that would
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`“allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct
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`alleged.” Matson v. Bd. of Educ. of City Sch. Dist. of N.Y., 631 F.3d 57, 63 (2d Cir. 2011)
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`(quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). Although “detailed factual allegations”
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`that are entirely “outside” the complaint; the Court cannot consider them “without converting
`Defendants’ motion into one for summary judgment.” PK Music Performance, Inc. v. Timberlake, No.
`16-CV-1215, 2018 WL 4759737, at *5 (S.D.N.Y. Sept. 30, 2018).
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`are not required, a complaint that includes only “labels and conclusions” or “a formulaic
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`recitation of the elements of a cause of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S.
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`544, 555 (2007) (noting that courts “are not bound to accept as true a legal conclusion couched
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`as a factual allegation” (citation omitted)).
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`I.
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`Declaratory Judgment Regarding Joint Ownership
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`DISCUSSION
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`In Count I, the plaintiff “seeks a declaratory judgment regarding his joint ownership of
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`the copyrighted song . . . and . . . a further determination of the validity of the registration . . .
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`[as] registered with Broadcast Music Incorporated (BMI) as being 100% authored by [Mr.
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`Carlebach] when in fact Kahn owns 50% of the song and all income, royalties and revenues
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`related thereto.” (ECF No. 33 ¶ 31 (capitalization altered).) The defendants interpret Count I as
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`a request to declare the plaintiff to be a joint author of the 1975 song and to order BMI, which is
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`not a party to this suit, to change its records. (ECF No. 51-1 at 7.) They argue that those
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`allegations do not state a claim, because (1) declaratory relief is a remedy, not a claim; (2) there
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`is “no allegation anywhere” in the second amended complaint that the ownership of the 1975
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`registration “is disputed;” and (3) the plaintiff “provides no details as to the basis for his 50%
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`ownership” of the BMI registration such as a “contract . . . that would govern his right to a
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`particular share of income.” (Id.; ECF No. 57 at 9.)
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`Although the plaintiff’s allegations may not be “a model of clarity when it comes to
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`articulating . . . causes of action,” the defendants misread his claims. See Pastime LLC v.
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`Schreiber, No. 16-CV-8706, 2017 WL 6033434, at *3–4 (S.D.N.Y. Dec. 5, 2017) (considering
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`several interpretations of a copyright complaint). The plaintiff is not asking the Court to
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`determine the ownership of the 1975 registration—indeed, he provides a copy of that
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`registration, which clearly identifies him as a co-author of the song with Mr. Carlebach. (See
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`ECF No. 56-3.) Instead, the central premise of his complaint is that “on or about October 13,
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`2006,” the defendants “prepared and filed a purported ‘renewal’ of the 1975 copyright which
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`falsely indicates [Mr. Carlebach] to be the sole owner and author” of the song that the plaintiff
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`helped write and that as a result of the 2006 registration, the plaintiff has not received the
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`royalties due to him under the 1975 registration. (ECF No. 33 ¶ 2; see also id. ¶¶ 16, 17, 20, 21,
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`24, 26, 28, 29.) It therefore appears that in Count I, the plaintiff seeks a declaration that he is a
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`co-author of the song the defendants registered in 2006 as well as an order to pay him 50% of the
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`royalties that the defendants have collected on that registration.
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`So construed, the allegations in Count I are sufficient to state a claim. It is the law in this
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`Circuit that district courts can declare parties to be co-authors of a copyrighted work and to order
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`one of them “to account to the other . . . for any profits that are made,” regardless of any
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`contract. Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998); see also Childress v. Taylor,
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`945 F.2d 500, 504–09 (2d Cir. 1991); Edward B. Marks Music Corp. v. Jerry Vogel Music Co.,
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`140 F.2d 266, 267 (2d Cir. 1944).
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`The complaint also includes sufficient factual detail to withstand a motion to dismiss. In
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`addition to the 1975 registration of “Return Again” identifying him as an author of the song, the
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`plaintiff provides a printout from the U.S. Copyright Office database showing that the defendants
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`registered a song titled “Return again” in 2006 and listed Mr. Carlebach as the only author.
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`(ECF Nos. 56-3, 56-4). The plaintiff also alleges that the 2006 copyright is for the “same song”
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`as the 1975 copyright. (ECF No. 33 ¶¶ 17, 21, 24). And he claims that the defendants “have
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`refused to formally recognize Kahn’s joint ownership and have thereby[] refused to provide an
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`accounting to Kahn.” (Id. ¶ 20.) “Federal Rule of Civil Procedure 8(a)(2) requires only a short
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`and plain statement of the claim showing that the pleader is entitled to relief, in order to give the
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`defendant fair notice of what the claim is and the grounds upon which it rests.” Twombly, 550
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`U.S. at 555 (cleaned up). The plaintiff’s pleadings clearly provide this notice. All the
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`defendants have to do is compare the lyrics and music of the 1975 registration that the plaintiff
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`attached to his memorandum with the 2006 registration that they possess as copyright holders.
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`No more is required at this stage of the litigation.2
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`II.
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`Copyright Infringement
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`In Count II, the plaintiff asserts that the defendants “infringed [his] copyright” because
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`they “are not, and have never been, licensed or otherwise authorized to reproduce, publicly
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`display, distribute and/or use the Lyrics.” (ECF No. 33 ¶ 33.) Elsewhere in the complaint,
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`however, the plaintiff acknowledges that as Mr. Carlebach’s “heirs,” the defendants are “joint
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`owners” of the song. (Id. ¶¶ 10, 11, 16.) An “action for infringement between joint authors will
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`not lie because an individual cannot infringe his own copyright.” See Weissmann v. Freeman,
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`868 F.2d 1313, 1318 (2d Cir. 1989). Instead, the proper remedy for “an alleged co-author . . .
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`[is] a declaration of co-ownership rights,” which the plaintiff already seeks in Count I. Kwan v.
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`Schlein, 441 F. Supp. 2d 491, 498–99 (S.D.N.Y. 2006) (reforming an infringement claim to state
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`a co-authorship claim).
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`Nor can the plaintiff claim sole authorship in just the song’s lyrics. As the Second
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`Circuit clarified almost a decade ago, the Copyright Act’s “definition of ‘joint work,’ a work
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`prepared by multiple authors with the intention that their contributions be merged into
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`2 I do not interpret the plaintiff’s reference to BMI as a request that the Court enjoin BMI. (See ECF No.
`33 at 7–8 (asking solely for relief against the defendants).) The Court cannot enjoin nonparties except
`in limited circumstances not applicable in this case. See Fed. R. Civ. P. 65(d)(2); Doctor’s Assocs., Inc.
`v. Reinert & Duree, P.C., 191 F.3d 297, 302 (2d Cir. 1999). Rather, I assume that the plaintiff is simply
`providing context for his claims.
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`inseparable or interdependent parts of a unitary whole, suggests that such inseparable
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`contributions are not themselves ‘works of authorship’” subject to their own copyright
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`protection. 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 257 (2d Cir. 2015) (cleaned up). And
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`courts have long viewed songs as paradigmatic examples of “joint work.” E.g. Childress, 945
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`F.2d at 504–05 (reaching a “fairly straightforward” conclusion that “words and music
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`combine[]” into a single joint work); Edward B. Marks Music Corp., 140 F.2d at 267 (holding,
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`back in 1944, that a co-author of a song could not copyright the lyrics separately from the song);
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`see also 17 U.S.C. § 102(a)(2) (providing copyright protection to “musical work,” which
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`encompasses both the notes and lyrics of a song).
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`Accordingly, the plaintiff may not bring a copyright infringement action against the
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`defendants, and Count II is dismissed.
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`III. Copyright Renewal
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`In Count III, the plaintiff seeks “correction of the defective filing to provide that Plaintiff
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`is a co-owner and joint author of the song” if “the 2006 New Copyright is deemed to be a
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`renewal of the 1975” registration. (ECF No. 33 ¶ 40.) The plaintiff also asks “to access the
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`books and records of Defendants” and to receive “half of all royalties of the song.” (Id. ¶¶ 41–
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`42.)
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`Works created before 1978 are governed by the Copyright Act of 1909. Martha Graham
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`Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemp. Dance, Inc., 380 F.3d 624, 632–
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`33 (2d Cir. 2004). When the Act was passed, it granted copyright protection for an initial term
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`of 28 years, with an additional 28 years available if the copyright owner applied for renewal in
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`the last year of the initial term. Id. at 633. In 1976, Congress extended the renewal term to 47
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`years, and in 1992, it made renewal registration optional. Id. Congress amended this scheme
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`once again in 1998, extending the renewal term by another twenty years. Id. This means that the
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`2006 registration cannot be “deemed . . . a renewal of the 1975” registration (ECF No. 33 ¶ 40),
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`because the initial copyright term for that registration ran out in 2003 and was automatically
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`renewed for another 67 years.
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`But even assuming that the 2006 registration somehow constitutes an improper or a
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`fraudulent application for renewal, the Court cannot correct it. “Nothing in the Copyright Act,
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`nor any other federal statute, grants federal courts the power to cancel or nullify a copyright
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`registration.” Pastime, 2017 WL 6033434, at *3 (citing Brownstein v. Lindsay, 742 F.3d 55, 75
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`(3d Cir. 2014)). Similarly, “there is no precedent supporting the use of a claim for fraud on the
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`Copyright Office as an affirmative cause of action.” Vaad L’Hafotzas Sichos, Inc. v. Krinsky,
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`133 F. Supp. 3d 527, 537 (E.D.N.Y. 2015) (citation omitted). And when it comes to joint
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`authors, “one joint author [may] register[] a copyright individually . . . , but the registered owner
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`holds the copyright in constructive trust for her co-owners.” Edward B. Marks Music Corp., 140
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`F.2d at 267; see also Swan v. EMI Music Pub. Inc., No. 99-CV-9693, 2000 WL 1528261, at *3
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`(S.D.N.Y. Oct. 16, 2000). The plaintiff cites §§ 103 and 104 of the Copyright Act, but those
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`sections pertain to “Subject matter of copyright: Compilations and derivative works,” 17 U.S.C.
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`§ 103, and “Subject matter of copyright: National origin,” id. § 104. In short, there is nothing for
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`the Court to “correct[].” (ECF No. 33 ¶ 40.)
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`That leaves the plaintiff’s request to review the defendants’ financial records and to be
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`paid half of the royalties that the defendants have collected on the 2006 registration. Accounting
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`is a remedy rather than an independent cause of action, and Count I states a claim that, if proven,
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`will entitle the plaintiff to this remedy. Microsoft Corp. v. AGA Sols., Inc., No. 05-CV-5796,
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`2007 WL 777756, at *7 (E.D.N.Y. Mar. 12, 2007). Count III is therefore dismissed.
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`IV. Accounting
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`In Count IV, the plaintiff alleges that he “has the right to access the books and records of
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`Defendants” and that the defendants “have a fiduciary duty to . . . account for any royalties” due
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`to him. (ECF No. 33 ¶¶ 44, 45.) As just discussed, accounting is not a cause of action, and this
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`request is duplicative of Count I. Count IV is dismissed.
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`V. Motions for Costs, Attorney’s Fees and § 1927 Sanctions
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`Because the plaintiff adequately states a co-authorship claim in Count I, any motion for
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`costs or attorney’s fees is premature. See 17 U.S.C. § 505 (allowing “recovery of full costs” and
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`“a reasonable attorney’s fee to the prevailing party” (emphasis added)); see also Huurman v.
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`Foster, No. 07-CV-9326, 2010 WL 2545865, at *16 (S.D.N.Y. June 21, 2010).
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`Sanctions under § 1927 are appropriate when a party “multiples the proceedings in any
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`case unreasonably and vexatiously.” 28 U.S.C. § 1927. This is the plaintiff’s second amended
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`complaint. Judge Mauskopf granted the plaintiff leave to file it after a pre-motion conference,
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`and the plaintiff states a meritorious claim in Count I. Sanctions are thus not warranted at this
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`time. In re 60 E. 80th St. Equities, Inc., 218 F.3d 109, 115 (2d Cir. 2000) (permitting § 1927
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`sanctions only when an “attorney’s actions are so completely without merit as to require the
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`conclusion that they must have been undertaken for some improper purpose” (citation omitted));
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`McCabe v. Lifetime Ent. Servs., LLC, 761 F. App’x 38, 42 (2d Cir. 2019) (“sanctions [are] not
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`appropriate” when “it is not completely inconceivable that a legal theory [supports] a litigant’s
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`claims” (internal quotation marks and citation omitted)). The defendants may renew their
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`request for sanctions later in the litigation if they can show good cause.
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`CONCLUSION
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`The defendants’ motion to dismiss is granted in part and denied in part. The plaintiff
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`may proceed with a co-authorship claim on Count I; Counts II, III and IV are dismissed. The
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`defendants’ motions for costs, fees and sanctions are denied without prejudice to renew.
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`SO ORDERED.
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`Dated: Brooklyn, New York
`June 2, 2023
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`s/Ann M. Donnelly
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`ANN M. DONNELLY
`United States District Judge
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