Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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` :
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`JAMES EDWARD McCARTHY, et al.,
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`Plaintiffs,
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`-against-
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`BERNARD STOLLMAN, et al.,
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` :
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`Defendants.
`------------------------------------------------------------------------X
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`06 Civ. 2613 (DAB) (DF)
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`REPORT AND
`RECOMMENDATION
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`TO THE HONORABLE DEBORAH A. BATTS, U.S.D.J.:
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`In this copyright action, which has been referred to me for general pretrial supervision
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`and to report and recommend on dispositive motions, defendants Bernard Stollman (“Stollman”)
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`and ESP-Disk (collectively, “Defendants”) have filed a motion to dismiss the Amended
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`Complaint of plaintiffs James Edward McCarthy, Paul Raymond Thornton, Lawrence Kessler
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`and Kelly Dillion (collectively, “Plaintiffs”). Defendants argue in their motion that the
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`Amended Complaint should be dismissed pursuant to Rule 12(b)(6), for failure to state a claim
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`upon which relief can be granted or, alternatively, pursuant to Rule 8(a) of the Federal Rules of
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`Civil Procedure, for failure to set forth a short and plain statement of Plaintiffs’ claims.
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`For the reasons discussed below, I respectfully recommend that Defendant’s motion (Dkt.
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`40) be denied.
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`BACKGROUND
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`In their Amended Complaint, Plaintiffs allege that Defendants have engaged in the
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`unauthorized reproduction and distribution of certain records and compact discs (“CDs”)
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`embodying musical compositions in which Plaintiffs hold registered copyrights. (See Amended
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`Complaint, dated July 24, 2006 (“Am. Compl.”) (Dkt. 2), at ¶¶ 18, 25-36.)
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 2 of 12
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`More specifically, Plaintiffs allege that they formerly comprised a punk rock band known
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`as the “Godz” and that, during the period from 1966 to 1973, as members of the Godz, they
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`collectively composed the original music and lyrics that constitute the musical compositions at
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`issue. (Id., at ¶¶ 11, 12, 15, 18 and Ex. D.) According to Plaintiffs, Defendants, who managed
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`the Godz at the relevant times and assisted in the production of certain records on which
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`Plaintiffs’ musical compositions were embodied, had agreed to assist Plaintiffs in copyrighting
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`their music. (See id., at ¶¶ 13-14, 17.) Plaintiff allege that Defendants failed to fulfill this
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`obligation and never obtained registered copyrights of the Godz’ musical compositions. (See id.,
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`at ¶ 21.) Prior to this litigation, however, Plaintiffs themselves obtained federal copyright
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`registrations of these musical compositions. (Id., at ¶ 18.) The registrations, certificates of
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`which are attached to the Amended Complaint, apparently became effective in 2005. (See id., at
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`Ex. D.)
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`Plaintiffs claim that, beginning in 2005, Defendants manufactured and sold, and that they
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`continue to manufacture, market and sell, unauthorized CD and digital copies of Plaintiffs’
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`musical compositions. (Id., at ¶¶ 24, 25, 33.) In this regard, Plaintiffs attach to their Amended
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`Complaint documents purporting to be July 2006 printouts from Defendants’ website, showing
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`such CDs being offered for sale. (See id., at Ex. C.) Plaintiffs further allege that Defendants
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`have also licensed third-party vendors to sell CDs containing Plaintiffs’ compositions. (Id., at
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`¶ 26.)
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`Defendants, for their part, assert that Plaintiffs are not the exclusive owners of the
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`copyrights at issue. Rather, Defendants contend that, pursuant to the parties original
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`“coproduction and copublishing agreement” (referred to by Defendants as the “ESP-GODZ
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 3 of 12
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`Agreement”), Defendants own a 50-percent interest in Plaintiffs’ musical works. (See
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`Defendant’s Memorandum of Law in Support of Motion to Dismiss Plaintiff’s Complaint, dated
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`Apr. 3, 2008 (“Def. Mem.”) (Dkt. 42), at 7, 19; see also Answer to Amended Complaint, dated
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`Mar. 13, 2008 (“Answer”) (Dkt. 13), at Ex. 1 (ESP-GODZ Agreement).) In response, Plaintiffs
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`argue that any interest acquired by Defendants through the ESP-GODZ Agreement was
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`expressly limited by the three-year term of the agreement and that, in any event, Defendants
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`breached the agreement in failing to obtain copyrights of the subject works. (See Plaintiff’s
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`Memorandum of Law in Opposition to Defendants’ Motion to Dismiss, dated Aug. 18, 2008
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`(“Pl. Mem.”) (Dkt. 47), at 10; Plaintiffs’ Sur-Reply in Opposition to Defendants’ Motion to
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`Dismiss, dated Sept. 2, 2008 (“Pl. Sur-Reply Mem.”) (Dkt. 53), at 2 (citing Reply to Defendants’
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`Amended Answer and Counterclaims, dated Apr. 7, 2008 (“Reply to Answer and
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`Counterclaims”) (Dkt. 15), at ¶ 53).)
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`In their motion, Defendants seek dismissal of the Amended Complaint on the following
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`grounds: First, Defendants argue that, as a matter of law, federal copyright protection is not
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`available to sound recordings produced prior to February 15, 1972. (Def. Mem., at 15;
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`Defendants’ Memorandum of Law in Response to Plaintiffs’ Opposition to Defendants’ Motion
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`to Dismiss, dated Aug. 29, 2008 (“Def. Reply Mem.”) (Dkt. 50), at 14-15.) Second, Defendants
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`assert that, even if the musical works at issue are subject to federal copyright protection,
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`Defendants possess a 50-percent ownership interest in those musical works. (Def. Mem., at 19.)
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`Finally, Defendants seek dismissal on the ground that Plaintiffs have failed to plead, with
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`sufficient specificity, Defendants’ acts of infringement. (Def. Mem., at 19-20.)
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`3
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 4 of 12
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`DISCUSSION
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`I.
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`APPLICABLE LEGAL STANDARDS
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`A.
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`Rule 12(b)(6)
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`A case is subject to dismissal under Rule 12(b)(6) where the complaint is not legally
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`sufficient to state a claim upon which relief can be granted. See Kopec v. Coughlin, 922 F.2d
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`152, 155 (2d Cir. 1991). In deciding a Rule 12(b)(6) motion, the Court “accept[s] as true all
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`factual statements alleged in the complaint and draw[s] all reasonable inferences in favor of the
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`non-moving party.” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir. 2007)
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`(citation omitted); accord Jaghory v. New York State Dep’t of Ed., 131 F.3d 326, 329
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`(2d Cir. 1997). A court should grant dismissal where, after considering plaintiffs’ allegations in
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`this generous light, “it appears beyond doubt that the plaintiff can prove no set of facts in support
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`of his claim which would entitle him to relief.” Walker v. City of New York, 974 F.2d 293, 298
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`(2d Cir. 1992). At the same time, “conclusory allegations or legal conclusions masquerading as
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`factual conclusions will not suffice to defeat a motion to dismiss.” Achtman v. Kirby, McInerney
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`& Squire, LLP, 464 F.3d 328, 337 (2d Cir. 2006) (citation omitted). Rather, in order to
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`withstand a motion to dismiss, a complaint must plead “enough facts to state a claim for relief
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`that is plausible on its face.” Bell Atl. Corp. v. Twombly, 127 S. Ct. 1955, 1974 (2007); see also
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`Iqbal v. Hasty, 490 F.3d 143, 157-58 (2d Cir. 2007) (a pleader is obliged “to amplify a claim
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`with some factual allegations in those contexts where such amplification is needed to render the
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`claim plausible.”).1
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` In most cases involving pro se litigants, “the submissions of a pro se litigant must be
`1
`construed liberally and interpreted ‘to raise the strongest arguments that they suggest.’”
`Triestman v. Fed. Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006) (collecting authority). In
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 5 of 12
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`B.
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`Rule 8(a)
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`Rule 8(a) of the Federal Rules of Civil Procedure requires that a pleading consist of “a
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`short and plain statement of the claim showing that the pleader is entitled to relief.”
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`Fed. R. Civ. P. 8(a)(2). A pleading “does not have to set out in detail the facts in which the
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`claim for relief is based, but must give the court and the defendant fair notice of what [the]
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`plaintiff’s claim is and the grounds upon which it rests.” Owens v. Suter, 02 Civ. 8198 (SHS),
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`2003 U.S. Dist. LEXIS 3388, at *2-3 (S.D.N.Y. Mar. 7, 2003) (internal citations and quotations
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`omitted); see Salahuddin v. Cuomo, 861 F.2d 40, 42 (2d Cir. 1988) (“The statement should be
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`plain because the principal function of pleadings under the Federal Rules is to give the adverse
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`party fair notice of the claim asserted.”).
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`C.
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`Copyright Infringement
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`Under the Copyright Act, “[c]opyright protection subsists . . . in original works of
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`authorship fixed in any tangible medium of expression . . . from which they can be perceived,
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`reproduced, or otherwise communicated.” 17 U.S.C. § 102(a). Section 106 of the Copyright Act
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`grants, inter alia, the following exclusive rights to the owner:
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`(1) to reproduce the copyrighted work in copies or phonorecords;
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`(2) to prepare derivative works based upon the copyrighted work;
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`(3) to distribute copies or phonorecords of the copyrighted work to the
`public by sale or other transfer of ownership, or by rental, lease, or
`lending;
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`this case, however, pro se defendant Stollman is an intellectual property lawyer, with a self-
`proclaimed specialty in music matters, who is admitted to practice in the State of New York and
`is appearing as counsel on behalf of defendant ESP-Disk. (See Def. Mem., at 1.) Accordingly,
`Defendants’ submissions need not be given the benefit of a liberal construction.
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 6 of 12
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`(4) in the case of . . . musical . . . works, . . . to perform the copyrighted
`work publicly;
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`(5) in the case of . . . musical . . . works, . . . to display the copyrighted
`work publicly; and
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`(6) in the case of sound recordings, to perform the copyrighted work
`publicly by means of a digital audio transmission.
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`17 U.S.C. § 106; see also Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539,
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`546 (1985) (“Section 106 of the Copyright Act confers a bundle of exclusive rights to the owner
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`of the copyright.”).
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`“To establish a prima facie claim of copyright infringement, a plaintiff must allege both
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`‘(1) ownership of a valid copyright and (2) infringement of the copyright by the defendant.’”
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`ABC, Inc. v. Flying J, Inc., No. 06 Civ. 2967 (DAB), 2007 U.S. Dist. LEXIS 13252, at *9
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`(S.D.N.Y. Feb. 22, 2007) (quoting Yurman Design v. PAJ, Inc., 262 F.3d 101, 109 (2d Cir.
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`2001)). Ownership of a valid copyright is adequately pleaded by alleging sole ownership of the
`2
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`copyright and possession of copyright registration certificates. Hogan v. DC Comics, 983 F.
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`Supp. 82, 85 (N.D.N.Y 1997). To allege copyright infringement, a plaintiff must allege that the
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`defendant infringed one or more of the copyright owner’s five exclusive rights, as defined in
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` The second element of an infringement action is described alternatively as “copying.”
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`See, e.g., Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992). The term
`“‘copying’ . . . is shorthand for any infringement on one of the copyright owner’s exclusive
`rights as defined under 17 U.S.C. § 106.” Peker v. Masters Collection, 96 F. Supp. 2d 216, 218
`(E.D.N.Y. 2000).
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` Ultimately, ownership may be established through a certificate of registration, provided
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`that the certificate was made before or within five years after first publication of the work. Troll
`Co. v. Uneeda Doll Co., 483 F.3d 150, 154 (2d Cir. 2007) (citing 17 U.S.C. § 410(c)). The
`evidentiary weight to be accorded certificates of registration made more than five years after first
`publication is within the discretion of the court. Id.
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 7 of 12
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`17 U.S.C. § 106, i.e., the right of reproduction, adaptation, distribution, performance, and/or
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`display. ABC, Inc., 2007 U.S. Dist. LEXIS 13252, at *10.
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`To plead the above elements sufficiently under Rule 8(a), a complaint must allege:
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`(1) which specific original works are the subject of the copyright claim; (2) that the plaintiff
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`owns the copyrights in those works; (3) that the copyrights have been registered in accordance
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`with the statute; and (4) “by what acts during what time” the defendant infringed the copyright.
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`Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992) (citing Franklin Electronic
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`Publishers v. Unisonic Prod. Corp., 763 F. Supp. 1, 4 (S.D.N.Y. 1991)), aff’d, 23 F.3d 398 (2d
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`Cir. 1994); accord Carell v. Shubert Org., Inc., 104 F. Supp. 2d 236, 251 (S.D.N.Y. 2000).
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`II.
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`PLAINTIFF’S MOTION TO DISMISS
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`Accepting as true the facts alleged in the Amended Complaint, Plaintiffs’ claims are
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`sufficiently pleaded to meet the requirements of both Rule 12(b)(6) and Rule 8(a).
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`A.
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`Rule 12(b)(6)
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`1.
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`Ownership of Valid Copyrights
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`Plaintiffs plead that they are the exclusive owners of the copyrights at issue (Am. Compl.,
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`at ¶ 30), alleging in support of their claim of ownership that they composed the musical
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`compositions in question (id., at ¶¶ 12, 18), that the music and song lyrics they composed were
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`original and therefore constituted copyrightable subject matter (id., at ¶ 18), and that they have
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`obtained federal copyright registrations in their musical compositions (see id., at ¶¶ 18, 30-31,
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`and Ex. D). 4
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` Although these registrations, which were obtained long after the compositions were
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`created (see Pl. Mem., at 6; see also Am. Compl., at Ex. D), would not, in themselves, constitute
`prima facie evidence of valid copyright ownership, they may still be entitled to some weight,
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 8 of 12
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`Despite Plaintiff’s allegations of copyright ownership, Defendants argue that, at least
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`with respect to Plaintiffs’ earlier compositions, Plaintiffs cannot prove ownership of valid
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`copyrights as a matter of law, because sound recordings produced prior to February 15, 1972 are
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`not eligible for federal copyright protection. (Def. Mem., at 15; Def. Reply Mem., at 14-15.)
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`Plaintiffs, however, do not seek federal copyright protection of sound recordings, but rather of
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`Plaintiffs’ musical compositions. (Pl. Mem., at 5-7.)
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`“‘Copyright protection extends to two distinct aspects of music: (1) the musical
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`composition, which itself frequently consists of two distinct components – music and lyrics; and
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`(2) a physical embodiment of a particular performance of the musical composition,’ or the sound
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`recording.” PPX Enters. v. Transatlantic Corp., No. 92 Civ. 1749 (PKL), 1994 U.S. Dist.
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`LEXIS 9436, at *7 (S.D.N.Y. July 13, 1994) (quoting 4 Nimmer on Copyright § 24.01); see also
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`Preta v. Collectibles, Inc., No. 00 Civ. 0279 (JGK), 2002 U.S. Dist. LEXIS 5132, at *14-16
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`(S.D.N.Y. Mar. 22, 2002) (analyzing copyright of sound recordings distinctly from copyright of
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`the underlying compositions). Unlike sound recordings, musical compositions predating
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`February 15, 1972 are eligible for federal copyright protection. See PPX Enters., 1994 U.S.
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`Dist. LEXIS 9436, at *7 (protecting copyright of musical composition registered in 1966 against
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`subject to the discretion of the court. See, e.g., Troll Co., 483 F.3d at 154 (finding that plaintiff
`company was likely to succeed in proving ownership, even though copyright registrations were
`obtained belatedly); Yurman Design, Inc. v. Golden Treasure Imps., Inc., 275 F. Supp. 2d 506,
`516-17 (S.D.N.Y. 2003) (granting summary judgment to plaintiff on the issue of copyright
`validity, although registration certificate was procured more than five years after first
`publication, where defendant produced no evidence as to why the certificates were invalid). In
`addition, Plaintiffs’ allegation that Defendants were supposed to have assisted them in obtaining
`the copyright registrations, but failed to do so (Am. Compl., at ¶¶ 13, 14, 17, 21) lends further
`support to Plaintiffs’ claim of valid ownership, as it offers at least some suggestion as to why the
`registrations were not obtained contemporaneously.
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 9 of 12
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`infringement by distribution from 1983 to 1985 of sound recordings of said composition). Thus,
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`Defendants miss the mark with their argument regarding the legal sufficiency of Plaintiffs’
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`allegations of copyright ownership.
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`Defendants further argue that Plaintiffs cannot prove exclusive ownership of the
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`copyrights at issue because Defendants own a 50-percent interest in Plaintiffs’ musical works
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`pursuant to the “ESP-GODZ Agreement.” (Def. Mem., at 7, 19.) Plaintiffs dispute this fact,
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`however (see Pl. Mem., at 10), countering that the ESP-GODZ Agreement was expressly limited
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`to a three-year term and that, in any case, Defendants breached that agreement in failing to
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`obtain copyrights of the subject works (see Pl Sur-Reply Mem., at 2 (citing Reply to Answer and
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`Counterclaims, at ¶ 53); see also Answer, at Ex. 1). As Plaintiffs argue, disputed issues of fact
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`are not appropriately decided at the dismissal stage. (See Pl. Mem., at 10 (citing M. Shanken
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`Communications, Inc. v. Cigar500.com, No. 07 Civ. 7371 (JGK), 2008 U.S. Dist. LEXIS 51997,
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`at *11 (S.D.N.Y. July 7, 2008))). Rather, in deciding a motion to dismiss, the Court accepts as
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`true all facts alleged in the complaint and “draw[s] all reasonable inferences in favor of the non-
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`moving party.” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir. 2007). Thus,
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`for purposes of the pending motion, this Court must accept as true the Plaintiffs’ version of the
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`facts regarding ownership of the copyrights at issue.
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`2.
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`Infringement of the Copyright by Defendants
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`As to their allegations of infringement, Plaintiffs plead that Defendants manufactured and
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`sold, and continue to manufacture, market and sell, CD and digital copies of the Defendants’
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`musical compositions. (Am. Compl., at ¶¶ 25, 33.) Plaintiffs have also attached to their
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`Amended Complaint supposed July 2006 printouts of information that was then available on
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 10 of 12
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`Defendants’ website, showing that Defendants were, at that time, offering for sale CDs
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`containing Plaintiffs’ copyrighted musical compositions. (See id., at Ex. C.) Finally, Plaintiffs
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`allege that Defendants have licensed third-party vendors to sell CDs containing Plaintiffs’
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`compositions. (Id., at ¶ 26.) These allegations of past and ongoing unauthorized reproduction
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`and distribution are sufficient to state a claim for copyright infringement. See 17 U.S.C.
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`§ 102(a)(1), (3); PPX Enters., 1994 U.S. Dist. LEXIS 9436, at *7.
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`As Plaintiffs have sufficiently pleaded both copyright ownership and infringement,
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`Plaintiffs’ claims should not be dismissed under Rule 12(b)(6).
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`B.
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`Rule 8(a)
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`Plaintiffs have listed in their Amended Complaint the specific original works that are the
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`subject of Plaintiffs’ copyright infringement claim (see Am. Compl., at ¶¶ 15, 17-18, and Ex. A),
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`have alleged exclusive ownership of the copyrights in those works (see id., at ¶ 30), and have
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`alleged that the copyrights have been registered in accordance with the applicable statute (see
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`id., at ¶¶ 18, 31, and Exs. A and D). Plaintiffs have further alleged that Defendants have
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`infringed Plaintiffs’ exclusive right of distribution by offering for sale, on Defendants website,
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`CDs containing Plaintiffs copyrighted compositions during an ongoing period beginning in 2005.
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`(See id., at ¶¶ 24-26.) These allegations constitute a short and plain statement of Plaintiffs’
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`claims sufficient to meet the requirements of Rule 8(a). Carell, 104 F. Supp. 2d at 251
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`(complaint sufficient under Rule 8(a), “despite the fact that each individual infringement was not
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`specified,” where plaintiff alleged the publication of certain designs in national and international
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`stage productions and videos in 1997 and 1998 and their use in certain commercial products);
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`Case 1:06-cv-02613-DAB-DCF Document 57 Filed 02/26/09 Page 11 of 12
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`Kelly, 145 F.R.D. at 36 n.3 (infringement claim adequately supported when plaintiff narrowed
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`the infringing act to the publishing and distribution of two specific songs during 1991).
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`Accordingly, Defendants’ alternative argument for dismissal pursuant to Rule 8(a) should
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`also be rejected.
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`CONCLUSION
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`For all of the reasons stated above, I hereby recommend that Defendants’ motion to
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`dismiss the Amended Complaint (Dkt. 40), be denied.
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`Pursuant to 28 U.S.C. § 636(b)(1) and Rule 72(b) of the Federal Rules of Civil
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`Procedure, the parties shall have ten (10) days from service of this Amended Report to file
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`written objections. See also Fed. R. Civ. P. 6. Such objections, and any responses to objections,
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`shall be filed with the Clerk of Court, with courtesy copies delivered to the chambers of the
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`Honorable Deborah A. Batts, United States Courthouse, 500 Pearl Street, Room 2510, New
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`York, New York 10007, and to the chambers of the undersigned, United States Courthouse, 500
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`Pearl Street, Room 525, New York, New York, 10007. Any requests for an extension of time for
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`filing objections must be directed to Judge Batts. FAILURE TO FILE OBJECTIONS WITHIN
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`TEN (10) DAYS WILL RESULT IN A WAIVER OF OBJECTIONS AND WILL PRECLUDE
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`APPELLATE REVIEW. See Thomas v. Arn, 474 U.S. 140, 155 (1985); IUE AFL-CIO Pension
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