Case 2:15-cv-00040-AYS Document 50 Filed 04/14/22 Page 1 of 34 PageID #: 1191
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`MEMORANDUM
`AND ORDER
`CV 15-0040 (AYS)
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`Plaintiff,
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`ANDREW M. LIEB,
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`-against-
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`KORANGY PUBLISHING, INC.
`(d/b/a/ THE REAL DEAL),
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`Defendant.
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`------------------------------------------------------------------X
`APPEARANCES:
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`LIEB AT LAW, P.C.
`BY: DENNIS C. VALET, ESQ.
`308 West Main Street
`Smithtown, NY 11787
`Attorneys for Plaintiff
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`FRIEDBERG PLLC
`BY: BARRY J. FRIEDBERG, ESQ.
`200 Park Avenue South, Suite 1700
`New York, NY 10166
`Attorneys for Defendants
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`FISH & RICHARDSON P.C.
`By: KRISTEN McCALLION, ESQ.
`7 Times Square Suite 20
`New York, NY 10036
`Attorneys for Defendants
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`SHIELDS, Magistrate Judge:
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`Plaintiff, Andrew Lieb (“Plaintiff” or “Lieb”), is an attorney who handles real estate
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`matters. He is also an independent contractor blogger. This litigation arises out of articles
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`authored by Lieb that he arranged to have posted, first in an online publication known as Dan’s
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`Papers, and then again (with limited revision) in the Huffington Post online publication (the
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`“HuffPost Article”). Lieb claims that Defendant, Korangy Publishing, Inc. (“Korangy” or
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`1
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`Case 2:15-cv-00040-AYS Document 50 Filed 04/14/22 Page 2 of 34 PageID #: 1192
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`“Defendant”), infringed the copyright held by Plaintiff for the Huffington Post article – Plaintiff
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`holds no copyright protection for the Dan’s Papers article. In addition to copyright infringement,
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`Plaintiff claims that Defendant’s publication amounts to a deceptive trade practice in violation of
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`Section 349 of the New York State General Business Law (“Section 349” of the “GBL”). (See
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`generally Am. Compl., Docket Entry (“DE”) [21].) Presently before the Court are the parties’
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`renewed motions for summary judgment.1
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`For the reasons set forth below, Defendant’s motion is granted with respect to the
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`copyright claim to the extent that this matter is referred to the Copyright Office for its advice as
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`to whether it would have granted a copyright for the HuffPost Article if it had known of Lieb’s
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`misrepresentation to that office. The motion for summary judgment dismissing the Section 349
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`claim is granted in full. In view of these rulings, the Plaintiff’s motion is denied in its entirety.
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`BACKGROUND
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`Factual Background: Basis of Facts Recited Herein
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`The facts set forth below are drawn from the parties’ statements of material facts
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`I.
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`submitted pursuant to Rule 56.1 of the Local Rules of the United States District Courts for the
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`Southern and Eastern Districts of New York (“Rule 56.1”). (See DE [47-1] (Defendant's Rule
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`56.1 Statement); DE [49-2] (Plaintiff's Rule 56.1 Statement) (collectively the (the “Rule 56.1
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`Statements”).) The facts are undisputed unless otherwise noted. For ease of reference, and to
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`avoid repetition where there is no factual dispute, the Court cites only to Plaintiff’s Rule 56.1
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`1
`The parties originally moved for summary judgment in 2016. (See DE [38], [39].) The
`formerly assigned Magistrate Judge, to whom this matter was assigned for all purposes, denied in
`part and granted in part Defendant’s motion, with an opinion to follow. (DE [43].) This Court
`was assigned the case on October 25, 2021. After a scheduling conference held on November 1,
`2021, counsel were granted the opportunity to re-brief their motions. The presently pending
`cross-motions for summary judgment, (DE [47] and [49]), were fully briefed on March 14, 2022.
`2
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`Statement. The Court also considers and refers to documents submitted by the parties.
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`Defendant’s documents submitted in support of its motion (Exhibits A-P) are annexed to the
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`Declaration of Barry J. Friedberg, Esq., dated January 31, 2022 (the “Friedberg Decl.”). (DE [47-
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`2].) Plaintiff’s documents submitted in support of his motion (Exhibits 1-3) are annexed to the
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`Declaration of Dennis C. Valet, Esq. dated February 22, 2022 (the “Valet Decl.”). DE [49-3].)
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`Where there is any meaningful discrepancy between the parties’ Rule 56.1 Statements, the Court
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`refers to and relies directly upon the underlying documents forming the basis of the parties’
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`statements.
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`II.
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`The Parties
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`Plaintiff is an attorney. He is a real estate lawyer and blogger. (DE [49-2] ¶ 1.) Defendant
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`is the publisher of, among other things, a website devoted to real estate news called “The Real
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`Deal.” (DE [49-2] ¶ 2.)
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`III.
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`The Online Articles
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`A.
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`Lieb’s October 24, 2014 Dan’s Papers Article
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`On October 24, 2014, Lieb published an article on the website of a publication
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`known as Dan’s Papers. While Lieb’s declaration states the date of this publication as October
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`24, 2016, (DE [49-4]), it is clear that the date of publication was 2014, and not 2016. In any
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`event, that October 24, 2014 article, referred to herein as the “Dan’s Papers Article,” was entitled
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`“10 Secrets: What to Do When You Inherit a Hamptons Estate.” (Friedberg Decl., Ex. A.) Lieb
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`neither applied for nor obtained a copyright with respect to the Dan’s Papers Article. (DE [47-1]
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`¶ 6; (DE [49-2] ¶ 6; Pl.’s Responses to Def.’s 1st Set of Interrogatories (Friedberg Decl., Ex. J) ¶
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`9.) While Plaintiff does not dispute the lack of copyright registration for the Dan’s Papers
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`Article, he states that he “granted Dan’s Papers a license” to publish his article. (DE [49-2] ¶ 4.)
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`3
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`Lieb received no monetary compensation for publication of the Dan’s Papers Article. (DE [49-2]
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`¶ 5.)
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`B.
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`Lieb’s October 31, 2014 Huffington Post Article
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`On October 31, 2014, one week after publication of the Dan’s Papers Article,
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`Lieb made certain edits thereto and submitted it in the form of a blog post to the Huffington Post
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`online publication. (Friedberg Decl., Ex. C.) That blog post was entitled “10 Surprises when
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`Inheriting Real Estate.” (DE [49-2] ¶1.) In the HuffPost Article, Lieb expressly notes that it was
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`“[a]dapted from” the Dan’s Papers Article. (Friedberg Decl., Ex. C at 3.) The title of the
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`HuffPost Article removed reference to the Hamptons. (DE [49-2] ¶ 13.) Lieb similarly removed
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`references to “Long Island’s East End” and the Hamptons from the body of the HuffPost Article.
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`(DE [49-2] ¶ 14.) He also made other edits when adapting the Dan’s Papers Article for
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`publication as the HuffPost Article.
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`Plaintiff agrees with Defendant’s characterization of the HuffPost Article as set forth in
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`Defendant’s Rule 56.1 Statement. However, Plaintiff’s Rule 56.1 Statement amplifies
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`Defendant’s characterization, stating that the HuffPost Article and the Dan’s Papers Article
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`shared the primary purpose of “assembl[ing] and explain[ing] ten (10) legal issues which may be
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`relevant to someone who inherits real estate,” and that this “primary purpose” “remained
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`constant between the two articles.” (DE [49-2] ¶ 15.) With the exception of differences discussed
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`in further detail below, the HuffPost Article was a verbatim restatement of the Dan’s Papers
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`Article. (DE [49-2] ¶ 16.) Like the Dan’s Papers Article, Lieb received no monetary
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`compensation for publication of the HuffPost Article. (DE [49-2] ¶ 17.)
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`Publication of the HuffPost Article was governed by an agreement between Plaintiff and
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`the Huffington Post, which was agreed to by Lieb, and reflected in an email dated March 26,
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`2014 – approximately seven months prior to publication of the HuffPost Article. In that email, a
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`representative of the Huffington Post (referred to as the “Huffpost Blogteam”) welcomed Lieb to
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`the “HuffPost blogging platform.” (DE [47-13] at 10.) Attached to this email is a document
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`entitled “HuffPost Blogger Terms, Guidelines, Tips and FAQ” (the “Blogger Terms”). (Id. at
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`11.) This document sets forth the terms under which articles are posted to the HuffPost site.
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`Specifically, the Blogger Terms inform Lieb that by submitting posts, he is an independent
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`contractor who is not entitled to any compensation. The email states that bloggers like Lieb own
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`the copyright to any submitted content and that they can post that content anywhere. (Id. at 12.)
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`However, by submitting material to HuffPost, writers grant to HuffPost “a non-exclusive
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`worldwide, royalty-free, irrevocable, perpetual license to exercise all rights under copyright law
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`with respect to such content,” which the Huffington Post is free to use in a variety of unrestricted
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`ways. (Id.) In accord with the date of this email, Plaintiff states that he entered into a licensing
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`agreement with HuffPost on March 26, 2014, and not on October 31, 2014 – when he later
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`published an article on the HuffPost site. (DE [42-9] ¶ 7.) The Blogger Terms note that HuffPost
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`allows others accessing articles on its site to make “fair use” of materials published therein.
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`Thus, the license states that bloggers like Lieb can make such fair use of HuffPost content. The
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`Huffington Post is not a party to this lawsuit.
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`C.
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`Defendant’s Website and the Article at Issue
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`a.
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`Real Deal Content
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`Defendant states that certain content on its Real Deal site are summaries of
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`articles about real estate that appear elsewhere. These posts link to the original source reporting.
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`(DE [49-2] ¶ 18.) Christopher Cameron, one of Defendant’s reporters, testified at his deposition
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`that he “aggregates” news for the Real Deal website. (DE [49-6] at 7.) Cameron does not create
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`original content. Instead, he reads various news articles and websites and identifies content that
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`might be of interest to Real Deal readers. He then summarizes the article, has its copy edited,
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`creates art, and publishes his summary on the Real Deal site. (DE [49-6] at 8-9.) The corporate
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`deposition of Defendant confirms Cameron’s description of how certain articles are posted to the
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`Real Deal website. Thus, that deponent stated that Defendant’s site publishes articles that are
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`excerpts of content published elsewhere, summarizing the original article in as few words as
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`possible. (DE [49-7] at 13-14.)
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`b.
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`Publication of the Real Deal Article
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`On November 1, 2014, one day after publication of the HuffPost Article,
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`Defendant published a post entitled “Watch for these 10 surprises when inheriting real estate.”
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`(Friedberg Decl., Ex. E; DE [49-2] ¶ 19.) The Court refers to this post as the “Real Deal Article.”
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`Cameron posted the Real Deal Article to Defendant’s website pursuant to his usual duties
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`of summarizing articles of interest to his readers. (DE [49-6] at 15-16.) Thus, Defendant states
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`that it did not reprint or restate the text of the HuffPost Article, but instead, summarized it in
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`“substantially fewer words.” (DE [49-2] ¶ 23; DE [49-7] at 21 (agreeing that the Real Deal
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`Article was found from another publication and “summarized in as few words as possible”).)
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`IV.
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`Plaintiff’s Copyright Registration
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`On November 12, 2014, eleven days after publication of the Real Deal Article, Plaintiff
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`registered a copyright with the United States Copyright Office (the “Copyright Office” or the
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`USCO”) for the HuffPost Article. (Friedberg Decl., Ex. G; DE [49-2] ¶ 24.) The Certificate of
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`Registration for the HuffPost Article states the date of publication as October 31, 2014 (the date
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`of publication of the HuffPost Article). (Friedberg Decl., Ex. G.) Neither the Dan’s Papers
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`Article nor its date of publication are referred to in the copyright registration for the HuffPost
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`Article. (See id.) Plaintiff agrees that he never sought copyright protection for the Dan’s Papers
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`Article. (DE [49-2] ¶ 25.) Nor did he disclose the Dan’s Papers Article to the Copyright Office in
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`any way.
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`V.
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`Defense Counsel Alerts Plaintiff’s Counsel of Derivative Nature of The HuffPost Article
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`On December 10, 2014, prior to initiation of this lawsuit, and in apparent response to a
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`demand for payment, Defense counsel wrote to Plaintiff’s counsel (who appears to be a law
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`partner or associate of Plaintiff Lieb) stating Defendant’s position that there had been no
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`infringement. (DE [48-3].) That letter is annexed to the Friedberg Declaration. (Id.) It advised
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`Plaintiff’s counsel that the HuffPost Article was a derivative work of the Dan’s Papers Article,
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`and that, therefore, the certificate of registration for the HuffPost Article was invalid. (Id.)
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`Plaintiff’s counsel refers to an apparently different letter he received on August 13, 2015, which
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`he states sets forth the same information – although more than a year later (and after initiation of
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`this lawsuit). This letter is not, however, attached to counsel’s declaration. (DE [49-3]; Valet
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`Decl. ¶ 7.) In any event, counsel states that it was not until he received this communication that
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`he and Lieb first became aware of any argument that the Dan’s Papers Article should have been
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`registered instead of the HuffPost Article. (Id.) Similarly, in his declaration submitted in support
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`of his cross-motion, Lieb states: “I do not practice copyright law and have no knowledge of
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`copyright law or its intricacies beyond a layman’s understanding. (DE [49-4] ¶19.) Lieb further
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`states that when he registered the HuffPost Article with the Copyright Office, he was “not acting
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`as an attorney, but as an individual” on his own behalf. (Id.) There is no indication that Plaintiff
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`or Valet have ever made any attempt to contact the Copyright Office to discuss the issue of
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`whether the HuffPost Article was, indeed, derivative of the Dan’s Papers Article. Nor is there
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`any document showing any supplementary registration for the HuffPost Article, or copyright
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`registration of the Dan’s Papers Article.
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`VI.
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`Comparison of the Articles
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`The parties have submitted exhibits highlighting the exact similarities and differences
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`among the three articles described above (collectively, the “Articles”) for the Court’s review.
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`(See e.g., Friedberg Decl., Ex. D.) As noted, Defendant characterizes its article as a summary of
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`the HuffPost Article. Plaintiff disputes Defendant’s characterization and instead refers to the
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`Real Deal article as plagiarism. Specifically, Plaintiff states that Defendant copied the HuffPost
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`Article, maintaining its content and order of the “top 10” style list, attempting to shorten or
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`reword Lieb’s explanation of the legal topics and content chosen by Lieb. (DE [49-2] ¶ 18.)
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`Plaintiff states that the Real Deal Article fails to introduce any new legal concepts or analysis,
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`and that its substantive material is taken directly from the HuffPost Article. (DE [49-2] ¶ 23.)
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`Plaintiff’s papers engage in counting the number of words in each article; an exercise in
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`which the Court does not similarly engage and does not find particularly helpful in this case.
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`Instead of relying on the parties’ exhibits, lists, and word counts, and in view of the fact that the
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`Articles are relatively short pieces, the Court relies only on the actual source material. The
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`Court’s own review and comparison of the Articles follows.
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`A.
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`Similarities Among the Three Articles
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`The Articles are similar in many respects. No party disputes this. All three are
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`written in a “top 10 list” format. All refer to legal matters associated with the inheritance of real
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`estate. These legal concepts are the same and appear in the same order. Those top ten concepts
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`are:
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`• Mortgage Transfer
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`• Reverse Mortgage
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`• Rental
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`• Homeowners Insurance
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`• Testamentary Substitutes
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`• Estate Tax
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`• Capital Gains Tax
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`• Probate
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`• Heirs at Law
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`• Right of Election
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`Following each of these subject headings, the Articles discuss certain scenarios as to how
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`each matter may arise in the real estate inheritance context. The Court turns first to compare the
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`Dan’s Papers Article to the HuffPost Article. Both were authored by Lieb. They are, as discussed
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`below, nearly identical.
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`B.
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`Comparison of the Dan’s Papers Article to the HuffPost Article
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`The Court’s review leads to the conclusion that the HuffPost Article is virtually
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`identical to the Dan’s Papers Article. They contain the same top ten list of legal concepts, listed
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`in the same order, with the same information. Both of Lieb’s articles contain a “Bonus Concept”
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`advising against making a premature decision to sell inherited real estate. The only difference
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`between Plaintiff’s two articles is that the HuffPost Article deletes references to Long Island
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`and/or the Hamptons, replacing them with references to real estate in general. Additionally, the
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`HuffPost Article notes that it was based upon New York law and advises readers to check
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`applicable state law. (Friedberg Decl., Ex. D; DE [47-6] at 4.) The HuffPost Article notes that it
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`was adapted from a Dan’s Papers blog post and links to that article. Both articles identify Lieb as
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`the author. The Dan’s Papers Article describes Lieb as the managing attorney of Lieb at Law,
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`P.C. and a “contributing writer for Behind the Hedges: inside Hamptons Real Estate.” (DE [47-
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`3] at 4.) The HuffPost Article also identifies Lieb as the managing attorney of Lieb at Law, P.C.
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`Additionally, it identifies him as “Founder, the Lieb School.” (DE [47-5] at 1.)
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`C.
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`Comparison of the HuffPost Article to the Real Deal Article.
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`The HuffPost Article is the only article for which copyright registration was
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`obtained, and it therefore forms the only basis for Plaintiff’s claim of infringement. Because it is
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`virtually identical to the Dan’s Papers Article, the Court compares only Lieb’s HuffPost Article
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`to Defendant’s Real Deal Article. The Court’s conclusions herein would not change if it went
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`through the additional exercise of comparing the Dan’s Papers Article with the Real Deal
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`Article. The Court's independent review follows.
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`Both the HuffPost and the Real Deal Articles are written in a common “top ten” format.
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`Both use the word “surprises” and the short phrase “inheriting real estate” in their titles. Thus,
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`the HuffPost Article is entitled: “10 Surprises When Inheriting Real Estate.” The Real Deal
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`Article is entitled “watch for these 10 surprises when inheriting real estate.”
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`It is not disputed that the Real Deal Article refers to the HuffPost Article in three places
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`and contains a hyperlink that links directly to the HuffPost Article. (DE [49-2] ¶ 21-22.) While
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`Plaintiff agrees that the Real Deal Article refers to and contains a hyperlink to his HuffPost
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`Article, he emphasizes that his name is not stated as the author of the linked article. Further,
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`despite the presence of a hyperlink, Plaintiff states that the HuffPost Article does not make clear
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`that the reader may link to his HuffPost Article by clicking on the link. (Id.)
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`As to differences between the Real Deal Article and the HuffPost Article, the HuffPost
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`Article contains full, detailed paragraphs explaining the legal concepts under each of the top ten
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`subheadings. In contrast, Defendant’s Real Deal Article uses different and far less language
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`under each subheading, consisting of one to three sentences for each subject. The HuffPost
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`Article is three and one half pages long; the Real Deal Article is a single page. The HuffPost
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`Article contains references to New York and Federal law. The Real Deal Article, while referring
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`to legal concepts, contains no references to any law – federal or state. The HuffPost Article
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`includes a “Bonus Concept;” the Real Deal Article does not. It is clear that the Real Deal Article
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`is a very brief and more generalized summary of the legal concepts discussed at greater length in
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`the HuffPost Article. Consistent with such a summary, the Real Deal Article characterizes itself
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`as a “roundup of the 10 most common headaches real estate heirs face via the Huffington Post.”
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`(DE [47-7].)
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`VII. The Cross-Motions for Summary Judgment
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`Defendant moves for summary judgment as to all claims. The copyright claim is sought
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`to be dismissed first on the ground that when registering a copyright for the HuffPost Article,
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`Plaintiff made a material representation to the Copyright Office. This misrepresentation – the
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`failure to disclose the earlier publication of the Dan’s Papers Article (which is essentially
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`identical to the HuffPost Article) – is argued to constitute knowingly making an inaccurate
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`statement to the USCO, which requires referral of Lieb’s registration back to the Copyright
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`Office for its advice as to the validity of Plaintiff’s registration.
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`Summary judgment as to the copyright claim is also sought on the merits, on the ground
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`that the Real Deal Article lacks the requisite substantial similarity (within the meaning of the
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`copyright law) to the HuffPost Article. In support of this argument, Defendant argues that it has
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`copied no protected material. As to protected material, Defendant notes, inter alia, that short
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`phrases (including titles) and common themes such as the use of a “top ten” format are not
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`copyrightable. Nor, for that matter, are the legal concepts in any of Lieb’s articles subject to
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`copyright protection. Defendant also argues that when such clearly non-copyrightable material is
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`excluded from the HuffPost Article, it becomes clear that there has been no infringement. In
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`addition to seeking summary judgment as to the copyright claim, Defendant seeks summary
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`judgment dismissing Plaintiffs GBL Section 349 claim on the grounds of preemption and failure
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`to state a claim.
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`Plaintiff cross-moves for summary judgment, arguing that the HuffPost Article was
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`properly registered, and that the Real Deal Article infringes on Plaintiff’s work. Plaintiff also
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`disagrees with Defendant’s positions regarding his claim under Section 349.
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`Having summarized the facts and the parties’ positions as to their motions, the Court
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`turns to the merits thereof.
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`DISCUSSION
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`Legal Principles: Standards on Summary Judgment
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`Summary judgment is appropriately granted only where “the pleadings, depositions,
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`I.
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`answers to interrogatories, and admissions on file, together with the affidavits, if any, show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to judgment
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`as a matter of law.” Fed. R. Civ. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`“An issue of fact is genuine if the evidence is such that a reasonable jury could return a verdict
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`for the non-moving party.” SCR Joint Venture L.P. v. Warshawsky, 559 F.3d 133, 137 (2d Cir.
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`2009) (quoting Roe v. City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008)). A fact is “material” if
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`it might affect the outcome of the litigation under the relevant law. SCR Joint Venture, 559 F.3d
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`at 137 (citation omitted). The party moving for summary judgment is first responsible for
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`demonstrating the absence of any genuine issue of material fact. See Celotex, 477 U.S. at 322.
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`Summary judgment is appropriate when the non-moving party “fails to make a showing
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`sufficient to establish the existence of an element essential to that party’s case, and on which that
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`party will bear the burden of proof at trial.” Abramson v. Pataki, 278 F.3d 93, 101 (2d Cir. 2002)
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`(quoting Celotex, 477 U.S. at 322).
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`In deciding a motion for summary judgment, the Court “must resolve all ambiguities and
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`draw all reasonable inferences against the moving party.” Tolbert v. Smith, 790 F.3d 427, 434
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`(2d Cir. 2015) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
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`(1986)). However, in opposing a motion for summary judgment, the non-moving party may not
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`rely on unsupported assertions, conjecture or surmise, see Goenaga v. March of Dimes Birth
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`Defects Found., 51 F.3d 14, 18 (2d Cir. 1995), and must do more than show that there is “some
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`metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 586. Instead, the non-
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`moving party must “set forth significant, probative evidence on which a reasonable fact-finder
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`could decide” in its favor. Senno v. Elmsford Union Free Sch. Dist., 812 F. Supp. 2d 454, 467
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`(S.D.N.Y. 2011) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256-57 (1986)).
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`II.
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`General Principles of Copyright Law
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`A.
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`Protection in Literary Works and Derivative Works
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`Copyright protection subsists in original works of authorship including literary
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`works. See 17 U.S.C. § 102(a)(1). The copyright laws are limited in that they expressly do not
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`extend protection to any idea, regardless of the form in which it is described, explained or
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`embodied in such work. See 17 U.S.C. §102(b). The law also speaks directly to the limited
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`nature of copyright in works that are based upon earlier published works, or those based upon
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`work existing in the public domain. A work based upon such earlier material may be deemed
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`“derivative work,” which is defined to include “a work based upon one or more preexisting
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`works” including a “work consisting of editorial revisions, annotations, elaborations, or other
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`modifications which, as a whole, represent an original work of authorship.” 17 U.S.C. §101.
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`While such works that are “derivative” of earlier works may be registered, the copyright in those
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`works extends only to new material and “does not imply any exclusive right in the preexisting
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`material.” 17 U.S.C. §103(b).
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`B.
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`Prerequisites to Suit and Elements of Infringement
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`“To establish [copyright] infringement, two elements must be proven: (1)
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`ownership of a valid copyright, and (2) copying of constituent elements of the work that are
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`original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co, Inc., 499 U.S. 340, 361 (1991) (citing Harper
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`& Row, Publ’rs, Inc. v. Nation Enters., 471 U.S. 539, 548 (1985)). While a copyright in a literary
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`work may exist without prior registration, registration is a prerequisite to commencement of a
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`suit for infringement. See 17 U.S.C. § 411(a). Registration is also necessary to obtain an award
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`of damages or attorney’s fees for infringement that occurred prior to registration. See 17 U.S.C.
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`§ 412; see also Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., _ U.S. _, 142 S. Ct. 941, 944-45
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`(2022). Registration of a copyright is prima facie evidence of ownership of a valid copyright. See
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`17 U.S.C. 410(c); see also Gayle v. Villamarin, 18 Civ. 6025, 2021 WL 2828578, at *3
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`(S.D.N.Y. July 7, 2021). The presumption of validity may, however, be rebutted by the alleged
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`infringer. See Gayle, 2021 WL 2828578, at *3 (citing Scholz Design, Inc. v. Sard Custom
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`Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012)).
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`C.
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`Substantial Similarity
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`Even assuming validity of a copyright, a work will infringe on copyrighted work
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`only if it bears substantial similarity to the protected work. Determining substantial similarity
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`requires comparing the works at issue to examine, inter alia, protectable elements of plaintiff’s
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`work, not simply whether they are similar in a lay person’s meaning of the term. See Clanton v.
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`UMG Recordings, Inc., No. 20-cv-5841, 2021 WL 3621784, at *5 (S.D.N.Y. Aug. 16, 2021).
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`Importantly, works containing “both protectible and unprotectible” material must be examined to
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`attempt to “extract the unprotectible elements from . . . consideration and ask whether the
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`protectible elements, standing alone, are substantially similar.” Id. (quoting Peter F. Gaito
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`Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010)).
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`Among those materials generally held to be unprotectible are words and short phrases.
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`Such material is “rarely if ever” sufficiently original to warrant copyright protection. Clanton,
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`2021 WL 3621784, at *6 (citing McDonald v. West, 138 F. Supp. 3d 448, 454 (S.D.N.Y. 2015))
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`(additional citation omitted). Indeed, the relevant regulation listing material not entitled to
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`copyright protection includes “words and short phrases such as names, titles, and slogans,” and
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`works consisting entirely of information that is “common property containing no original
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`authorship.” 37 C.F.R. § 202.1(a). Moreover, the use of words in a wholly functional manner to
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`convey a common idea does not amount to language entitled to the protection of the copyright
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`law. See Clanton, 2021 WL 3621784, at * 6.
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`III.
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`Defendant’s Motion for Summary Judgment as to the Copyright Claim
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`Defendant seeks summary judgment as to Plaintiff’s copyright claim on the grounds that:
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`(1) the Real Deal Article lacks the required substantial similarity to the HuffPost Article to
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`constitute infringement, and (2) Lieb’s failure to disclose the Dan’s Papers Article in his
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`copyright registration for the HuffPost Article is a misrepresentation requiring referral back to
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`the USCO so that it can advise the Court as to whether knowledge of this misrepresentation
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`would have caused it to refuse registration. Because the latter argument is a threshold matter, the
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`Court addresses it first.
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`IV. Motion to Refer Lieb’s Registration to the Copyright Office: Background
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`In support of its motion, Defendant argues that Plaintiff was required to disclose the
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`Dan’s Papers Article as a prior published work. Lieb’s knowing failure to disclose this prior
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`work is argued to have resulted in improper registration of the HuffPost Article as an original
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`literary work, and not as what it is – a derivative work. The Court has outlined above the legal
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`definition of a derivative work. Before determining the issue of whether referral for the advice of
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`the Copyright Office is required, the Court outlines certain USCO forms and pertinent sections
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`of a manual promulgated by that office. That manual, which exists in several editions, but is the
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`same in the areas relevant here, is the Compendium of U.S. Copyright Practices (the
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`“Compendium”). All of these documents are annexed to Defendant’s motion. They refer to the
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`registration of unpublished literary works, as well as those that are derivative of earlier published
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`work. These materials are readily available to all who seek to register copyrights – lawyers and
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`non-lawyers alike. They are discussed herein to provide the proper backdrop to Defendant’s
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`motion, and in particular, to determining the issues of whether Lieb knowingly presented
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`inaccurate information in his application to register a copyright for the HuffPost Article, and
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`whether the Copyright Office would have refused registration if accurate information were
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`presented.
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`A.
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`Forms Explaining How to Register a Copyright
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`To obtain registration of a literary work, an author must submit a copy of their
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`work along with an application that provides information about the work. See 17 U.S.C. § 408-
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`09. The Register of Copyrights reviews the application and, if appropriate, issues a certificate of
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`registration reflecting the information provided by the applicant. See 17 U.S.C. § 410. To aid
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`applicants in the registration process, the Copyright Office provides various forms, which
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`include directions.