Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 1 of 16
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`------------------------------------------------------------------------x
`SCOTT LAINE,
`
`
`
`
`
`:
`
`
`
`
`
`
`
`
`:
`
`
`
`
`Plaintiff,
`
`
`:
`09 CV 3057(HB)
`
`
`
`
`
`
`
`
`:
`
`
`
`- against -
`
`
`
`
`:
`
`
`
`
`
`
`
`
`: OPINION &
`
`
`
`
`
`
`
`
`:
`ORDER
`KATHERINE E. PRIDE,
`
`
`
`
`:
`
`
`
`
`
`
`
`
`
`:
`
`
`
`
`Defendant.
`
`
`:
`
`
`
`
`
`
`
`
`:
`------------------------------------------------------------------------x
`
`Hon. Harold Baer, Jr., District Judge:
`
`This case presents a tangle of issues surrounding the artwork and death of the fashion
`illustrator Richard Ely (“Ely”). Plaintiff Scott Laine (“Plaintiff” or “Laine”) claims that Ely
`sought her out to “enhance his legacy” and “help him return to active, productive, creative
`work.” Second Am. Compl. ¶ 4 (“SAC”). As compensation for this endeavor, Laine sought the
`transfer of all of Ely’s works remaining in his possession, and to effectuate this purpose
`documents were executed for the sale and transfer in May 2008. Most of the materials remained
`in Ely’s physical possession at his home/studio, but Laine was given access to catalogue and
`prepare the works for show or sale. Less than a year later, Ely suffered an accidental fall and
`passed away. After Ely’s death, Defendant Katherine E. Pride (“Defendant” or “Pride”), the
`daughter of Ely as well as the executor of his estate, asserted that Plaintiff did not have any right
`to Ely’s art, rather the work was all part of his estate. Laine claims Pride physically precluded
`her from further access to the artwork, unlawfully authorized the reproduction of the artwork in
`violation of a copyright she holds in the materials, and spread false claims to members of the art
`profession that Laine had forged the transfer and sale documents. As a result, Laine brought suit
`against Pride for copyright infringement, tortuous interference, conversion, and defamation.
`Before this Court is Defendant’s motion to dismiss pursuant to Rule 12(b)(1) and 12(b)(6) of the
`Federal Rules of Civil Procedure for lack of subject matter jurisdiction and failure to state a
`claim. For the reasons that follow, Defendant’s motion to dismiss is GRANTED. The dismissal
`
`
`
`1
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 2 of 16
`
`is WITHOUT PREJUDICE and Plaintiff may re-file her federal claim if the contract dispute at
`the heart of this case is resolved by the New York Surrogate Court in her favor.
`
`
`BACKGROUND
`Richard Ely is a moderately famous artist, whose main focus was on fashion illustrations.
`At least fifty of Ely’s works are a part of the permanent collection of the Museum of Fine Arts in
`Boston (“MFA”). See SAC ¶ 16. According to the MFA, Ely began his career sketching apparel
`for small women’s specialty shops in the 1940s. By the mid-1950s, Ely was a sought-after
`illustrator and by the 1960s he worked for large department stores like Lord & Taylor, as well as
`for Harpers and Queen magazine. In the 1970s he shifted his focus to celebrity portraits,
`focusing on subjects in the art and theatre worlds.1 Ely was also an Adjunct Assistant Professor
`of Illustration at the Fashion Institute of Technology, State University of New York (“FIT”). See
`Fashion Institute of Technology, Faculty, http://www.fitnyc.edu/2413.asp (last visited December
`12, 2009). Ely maintained a studio at his residence in New York City, to work and house some
`of his personal collection. See SAC ¶ 17. Beginning in 2007 and 2008, Ely allegedly took steps
`to return to work, and sell some of his existing works. Id. ¶ 18. It is for these purposes that the
`artist turned to Laine.
`Laine states that she has “more than 20 years experience in the fashion and art world as a
`model, designer, consultant, and lecturer.” SAC ¶ 10. She claims to have been “friends and
`colleagues” with Ely for “more than a decade.” Id. ¶ 19. Plaintiff was interested in Ely’s
`proposal, but believed it to be a significant task which would take “considerable amount of time
`and effort over a period of several years” that included “assessing and cataloguing the Ely
`Collection and taking steps to promote Ely’s name and reputation in the art world.” Id. ¶ 20.
`According to Laine, Ely offered to “turn over ownership of all of his works” as an inducement to
`perform these tasks. Id. ¶ 21. Laine agreed, and met with Ely and an attorney in New York to
`discuss the details of the transaction. She maintains that she also spoke to Ely’s wife and
`daughter (Defendant Pride), and heard no objections from either of them. Id. ¶ 21-22. To
`consummate the transfer, on or about May 23, 2008, Plaintiff and Ely signed and notarized two
`
`
`1 The Museum of Fine Art’s website contains further biographical information and images of Richard Ely’s artwork.
`See Museum of Fine Arts, Boston, Collection Tours: Fashion Illustration from the 1940s-80s,
`http://mfa.org/tours/package.asp?key=957 (Image #4, “Woman with Yves Saint Laurent Opium Fragrance”) (last
`visited December 12, 2009).
`
`
`
`2
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 3 of 16
`
`documents: a “Grant of Full Authority” and a “Bill of Sale.” See SAC, Ex. 1 and 2 (collectively
`the “Transfer Documents”). The “Grant of Full Authority” provided Laine with “absolute,
`exclusive and full authority, in my lifetime and after my demise, to sell, lease and in any other
`manner dispose of and exploit my artistic creations…” See SAC, Ex. 1. The “Bill of Sale”
`purports to “sell, transfer, grant and assign…all right title and interest of [Ely]” in his personal
`collection of artwork to Laine for one dollar in consideration, five-thousand dollars consideration
`previously received, and “50% of any money” received by Laine should she sell any artwork.
`See SAC, Ex. 2. The document further states that the “50% sale proceeds” portion of the
`consideration “shall not inure to the benefit of [Ely’s] heirs or estate” in the event of his death,
`“it being expressly understood that the sale herein is final and complete as of the date-March 1,
`2008.” Id. Despite the purported sale and transfer in ownership, the majority of Ely’s collection
`remained at his apartment studio so that Plaintiff could examine and catalogue the materials with
`Ely’s assistance and input. See SAC ¶ 27. Laine states that she was given a key and “free
`access,” and spent “considerable time” working on the project at his studio/apartment. Id. at ¶
`28.
`
`On February 12, 2009, Ely was severely injured in an accidental fall, and died shortly
`thereafter. See SAC ¶ 29. Following his death, Ely’s daughter, Defendant Pride, took actions
`which are the source of plaintiff’s lawsuit. According to Laine, Defendant barred Plaintiff’s
`entry to Ely’s studio by changing the locks and directing the doorman not to permit Laine any
`access. Pride is also alleged to have removed items from the studio as well as from Ely’s office
`at FIT, which are part of the collection Ely transferred to Plaintiff. See SAC ¶¶ 30-31. Laine
`also claims that Defendant authorized an FIT professor, Peter Emmerich, to “make copies of
`Ely’s works that are covered by Laine’s copyright registration.” Id. ¶¶ 34-38. Finally, Plaintiff
`alleges that Defendant told certain specifically named individuals involved in the art world and
`other “fashion industry participants” that Plaintiff forged the Transfer Documents and that she
`had no rights to any of Ely’s works. Id. ¶¶ 40-43, 45-46. Based on these allegations, Plaintiff
`brought suit for copyright infringement and New York state common law claims of defamation,
`tortuous interference, and conversion. Id. ¶¶ 33-50.
`Pride disputes Laine’s ownership of the art collection. She claims that “[a]ll of Mr. Ely’s
`work, except those he had gifted to his wife, daughter, grandchildren and friends, remained in
`Mr. Ely’s possession in his apartment.” Def.’s Br. in Supp. of Mot. to Dismiss, at 2. (“Def.’s
`
`
`
`3
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 4 of 16
`
`Br.”). Defendant further states that, after the May 23, 2008 date noted in both Transfer
`Documents, Ely in “letters and diary entries…referred to his art as his possession and
`occasionally, to [P]laintiff as his business agent.” Id. Ely had a will, which was admitted to
`probate to the Surrogate’s Court of the State of New York, County of New York, on March 6,
`2009. Id. His will, according to Pride, bequeaths all property to his wife and named Pride as
`executor. Id. The Surrogate responsible for the administration of Ely’s estate has already sent
`them to mediation to fashion, if possible, a preliminary settlement of the dispute over the
`artwork.
`Defendant moves to dismiss Plaintiff’s action on a variety of grounds. First, she argues
`that this Court lacks subject matter jurisdiction because (1) this case falls within the “probate
`exception” to federal jurisdiction; (2) “federal question” jurisdiction is absent due to (a)
`Plaintiff’s untimely registration of copyright and (b) her failure to sufficiently demonstrate
`“arising under” copyright jurisdiction; (3) Defendant in her capacity as executor of Ely’ estate is
`a necessary party and her joinder in that role destroys complete diversity; and (4) there is no
`supplemental jurisdiction over the state law claims because all other grounds for subject matter
`jurisdiction fail. Second, Defendant moves to dismiss for failure to state a claim because (1)
`Plaintiff’s copyright infringement claim fails to specifically allege any actual infringement; (2)
`her defamation claim fails to assert “special damages” and does not make sufficient factual
`allegations to merit a “slander per se” claim that would obviate the need for special damages; and
`(3) her tortious interference and conversion claims fail because they require proof of a valid
`contract.
`
`
`LEGAL STANDARD
`
`
`
`Subject Matter Jurisdiction
`The existence of subject matter jurisdiction is “a threshold inquiry, and a claim is
`properly dismissed for lack of subject matter jurisdiction under Rule 12(b)(1) when the district
`court lacks the statutory or constitutional power to adjudicate it.” See Morrison v. Nat’l Australia
`Bank Ltd., 547 F.3d 167, 170 (2d Cir. 2008) (internal quotation and citation omitted). To resolve
`a motion to dismiss for lack of subject matter jurisdiction, “the court must take all facts alleged
`in the complaint as true and draw all reasonable inferences in favor of plaintiff.” See Raila v.
`United States, 355 F.3d 118, 119 (2d Cir. 2004); see also Arista Records LLC v. Usenet.com.,
`
`
`
`4
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 5 of 16
`
`Inc., No. 07 Civ. 8822(HB), 2008 WL 4974823, at *2 (S.D.N.Y. Nov. 24, 2008). Still, Plaintiff
`bears the burden of establishing subject matter jurisdiction by a preponderance of the evidence.
`See Morrison, 547 F.3d at 170. A court may consider evidence outside the pleadings on a
`12(b)(1) motion to dismiss. Id.; see also Caldwell v. Rudnick, No. 05 Civ. 7382(NRB), 2006
`WL 2109454, at *2 (S.D.N.Y. July 26, 2006) (application of subject matter jurisdiction standard
`to copyright infringement claims).
`Failure to State a Claim
`
`
`A complaint will be dismissed under Rule 12(b)(6) if there is a “failure to state a claim
`upon which relief can be granted.” Fed.R.Civ.P.12(b)(6). To survive a motion to dismiss on this
`ground, a plaintiff must “plead enough facts to state a claim to relief that is plausible on its face.”
`Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A facially plausible claim is one where
`“the plaintiff pleads factual content that allows the court to draw the reasonable inference that the
`defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009).
`Where the court finds well-pleaded factual allegations, it should assume their veracity and
`determine whether they “plausibly give rise to an entitlement to relief.” Id. at 1950. As with a
`subject matter jurisdiction challenge, a court must accept as true all of the factual allegations in
`the plaintiff’s complaint. See, e.g., Rescuecom Corp. v. Google Inc., 562 F.3d 123, 127 (2d Cir.
`2009). Here, a court may consider the complaint as well as “any written instrument attached to
`[the complaint] as an exhibit…any statements or documents incorporated in it by reference…and
`any document not incorporated but that is, nevertheless, ‘integral’ to the complaint because the
`complaint relies heavily upon its terms and effect.” Yung v. Lee, 432 F.3d 142, 146 (2d Cir.
`2005) (internal quotations and citations omitted).
`
`
`DISCUSSION
`Federal Question (Copyright) Jurisdiction
`Failure to Register the Copyright Prior to Instituting an Infringement Claim
`Defendant argues that Plaintiff’s complaint should be dismissed for lack of “federal
`
`question” subject matter jurisdiction. More specifically, she claims that (1) Plaintiff failed to
`timely register her copyright prior to instituting this suit and therefore cannot maintain her
`copyright infringement claim and (2) regardless of registration, her claim does not sufficiently
`
`
`
`5
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 6 of 16
`
`allege facts to find a basis for jurisdiction “arising under” the Copyright Act. Both arguments
`fail.
`
`Pursuant to federal statute, “no civil action for infringement of the copyright in any
`United States work shall be instituted until preregistration or registration of the copyright claim
`has been made in accordance with this title.” 17 U.S.C. § 411(a). A district court lacks subject
`matter jurisdiction over an infringement claim based on unregistered materials. See In re
`Literary Works in Electronic Databases Copyright Litig., 509 F.3d 116, 122 (2d Cir. 1007)
`(noting that the Circuit has twice “squarely held” that this requirement is jurisdictional); Country
`Road Music, Inc. v. MP3.com, Inc., 279 F. Supp. 2d 325, 332 (S.D.N.Y. 2003). As such, a party
`typically cannot bring an action in federal court without first filing and receiving a federally-
`registered copyright. See In re Literary Works, 509 F.3d at 125 n.5 (“registration or
`preregistration must occur before a plaintiff can assert a valid claim”). However, where a
`plaintiff files an infringement suit prior to registration of the copyright at issue, district courts
`have discretion to allow a plaintiff to amend their complaint if they obtain registration after the
`suit’s initiation. See, e.g., Country Road Music, Inc., 279 F. Supp. 2d at 332; J. Racenstein &
`Co., Inc. v. Wallace, No. 96 CIV. 9222(TPG), 1997 WL 605107, at *1 (S.D.N.Y. Oct. 1, 1997)
`(“Where an action is commenced without registration being effected, the defect can be cured by
`subsequent registration, and an appropriate amendment to the complaint may be made to provide
`the necessary basis for subject matter jurisdiction.”). For example, in Demetriades v. Kaufmann,
`plaintiffs mailed their application, but had not received a certificate of registration by the time
`they filed the complaint; the court determined that it had jurisdiction based on the amended
`complaint which incorporated the late-received registration. See 680 F. Supp. 658, 661
`(S.D.N.Y. 1988).
`In the present action, Plaintiff initially filed a complaint pro se in March 2009; it was
`
`subsequently amended in April by counsel that now represents her. Neither the original nor
`amended complaint asserts a copyright infringement claim, instead reliance is placed solely on
`New York state law claims and diversity jurisdiction. On May 28, 2009, Plaintiff filed a Second
`Amended Complaint where for the first time she alleged a copyright infringement claim, and
`attached to the complaint a copyright certificate of registration dated May 19, 2009. See SAC,
`Exhibit 3. I find nothing wrong with this chain of events and see no reason to dismiss the
`Complaint for failure to timely register the copyright. Plaintiff never made a copyright
`
`
`
`6
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 7 of 16
`
`infringement claim prior to obtaining registration. To the contrary, she only added that claim
`after the registration was received. The fact that this did not occur until the Second Amended
`Complaint, and according to Defendant only after Plaintiff was informed of a potential challenge
`to diversity jurisdiction, is consonant with my individual practices that allow the filing of an
`amended complaint in response to a motion to dismiss. Indeed, Plaintiff did not even burden
`Defendant by forcing them to make the motion prior to her amendment of the complaint.
`Further, Defendant fails to allege any prejudice caused by these actions. The Court’s jurisdiction
`is not imperiled by the subsequent amendment of the complaint to add a copyright infringement
`claim based on a valid copyright registration.
` “Arising Under” Copyright Jurisdiction
`Defendant’s second argument regarding federal question jurisdiction is that Plaintiff fails
`
`to satisfy the “arising under” standard for jurisdiction under the Copyright Act. This argument is
`without merit. 28 U.S.C. § 1338(a) provides district courts with original and exclusive
`jurisdiction over “any civil action arising under any Act of Congress relating to patents, plant
`variety protection, copyrights and trademarks.” Not every complaint that refers to the Copyright
`Act arises under it for jurisdictional purposes. See Bassett v. Mashantucket Pequot Tribe, 204
`F.3d 343, 347 (2d Cir. 2000). Pursuant to the “T.B Harms Test” created by Judge Friendly, a suit
`arises under the Copyright Act’s jurisdiction when (1) “[t]he complaint is for a remedy expressly
`granted by the Act (e.g. a suit for infringement…)” or (2) “ [t]he complaint…asserts a claim
`requiring construction of the Act.” Id. at 349 (quoting T.B. Harms Co. v. Eliscu, 339 F.2d 823,
`828 (2d Cir. 1964)). The Second Circuit is clear as to the meaning of the test: “If the complaint
`alleges copyright infringement or seeks an injunction [or some other remedy] under the
`Copyright Act, under T.B. Harms the federal court has jurisdiction.” Bassett, 204 F.3d at 349,
`355. Indeed, district courts should not attempt to “look beyond the complaint” to determine
`whether the plaintiff is “really concerned” about copyright. Id. at 352-53 (finding the test which
`allowed this sort of discretion to be “unworkable”). Even where a court dismisses a copyright
`action for failure to state a claim pursuant to Rule 12(b)(6), the basic claim can still be sufficient
`to support jurisdiction under the act. See Marvullo v. Gruner & Jahr, 105 F. Supp. 2d 225, 233
`(S.D.N.Y. 2000) (finding adequate jurisdiction simply because the complaint alleged copyright
`infringement, but ultimately dismissing it for failure to state a claim).
`
`
`
`7
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 8 of 16
`
`Defendant correctly notes that the Second Circuit has considered “factually related
`
`copyright and contract claims” to be “among the knottiest procedural problems in copyright
`jurisprudence.” See Bassett, 204 F.3d at 347 (quoting 3 Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright § 12.01[A]. at 12-4 (1999)). Unfortunately for Defendant, this simply is
`not the issue before this court. The Bassett Court made this statement with regard to situations
`where the alleged infringement was directly related to the alleged breach of contract. In Bassett,
`for example, the defendant had a license to exploit the plaintiff’s copyright, but plaintiff sued for
`infringement because he alleged that defendant had breached the terms of the licensing
`agreement. See Bassett, 204 F.3d at 345-46. No such “knotty” question is presented here. Laine
`is simply suing Pride for copyright infringement and various tort claims - and does not allege any
`contract claims. The fact that Defendant is skeptical of the validity of the documents which
`transferred the artwork does not by some legal alchemy turn Plaintiff’s straightforward copyright
`claim into a tangled question about whether this is really a copyright or contract claim. Whether
`Plaintiff validly obtained possession and property rights in the artwork is a factually separate
`potential affirmative defense, and does not impact the straightforward T.B. Harms test for
`jurisdiction.
`
`Plaintiff alleges copyright infringement and seeks remedies, such as an injunction,
`expressly granted by the Copyright Act. See SAC ¶¶ 33-38, D. This is a sufficient basis for
`jurisdiction under the Copyright Act.
`
`The Substantive Copyright Claim
`
`It is here, however, that Plaintiff begins her slide down the slippery slope of defeat.
`Laine claims that Pride infringed her copyright in the Ely art collection because she “has
`purported to authorize…Professor Peter Emmerich…to make copies of Ely’s works that are
`covered by Laine’s copyright registration.” SAC ¶ 36. She further alleges that “Emmerich has
`infringed the copyrights in Ely works and refused to cease his infringing conduct.” Id.
`Plaintiff’s allegations are insufficient to support a copyright infringement claim.
`
`The Copyright Act provides, in part, that “the owner of copyright under this title has the
`exclusive rights to do and to authorize any of the following…reproduce the copyrighted work in
`copies…distribute copies…of the copyrighted work.” 17 U.S.C. § 106. A copyright
`infringement claim must allege (1) the specific original works subject to the claim; (2) that the
`
`
`
`8
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 9 of 16
`
`plaintiff owns the copyright; (3) that copyrights have been registered pursuant to the statute; and
`(4) the acts and time that the defendant infringed the copyright. See Kelly v. L.L. Cool J, 145
`F.R.D. 32, 26 (S.D.N.Y. 1992). Plaintiff’s downfall lies in her inability to adequately allege an
`infringing act. Her argument appears to be either that (1) Defendant directly infringed her
`copyright by authorizing another to copy certain covered artwork or (2) Defendant is a
`contributory infringer by providing Professor Emmerich with the ability to copy the materials.
`In neither her complaint nor her moving papers does Plaintiff point to the type of infringement –
`direct or contributory – for which Defendant is allegedly responsible. See generally 3 M.
`Nimmer & D. Nimmer, Nimmer on Copyright, § 12.04[D] (2005) (explaining difference
`between direct and contributory infringement). No matter which way Laine styles her claim
`however, it fails as a matter of law.
`Plaintiff argues that Defendant committed an infringing act when she “purported to
`authorize” Professor Emmerich to make copies because the Copyright Act states that a copyright
`holder has “exclusive rights to do…and to authorize.” See Pl.’s Opp. Br. at 7 (emphasis in
`brief); 17 U.S.C. § 106. If Plaintiff believes this is sufficient to allege a direct infringement of
`her copyright, she is incorrect. Courts in this circuit and elsewhere have clearly held that the
`language “to authorize” does not create an independent, direct claim of copyright infringement.
`“17 U.S.C. § 106 does not create an infringeable right of authorization independent of
`infringement of one of the specific enumerated rights set forth in that section.” National
`Football League v. PrimeTime 24 Joint Venture, No. 98 CIV. 3778(LMM), 1999 WL 163181, at
`*4 (S.D.N.Y. Mar. 24, 1999); Elektra Entertainment Group, Inc. v. Barker, 551 F.Supp.2d 234,
`246 (S.D.N.Y. 2008) (agreeing with National Football League analysis); see also Subafilms, Ltd.
`v. MGM-Pathe Communications Co., 24 F.3d 1088, 1093 (9th Cir. 1994). The “to authorize”
`language was added by Congress solely for the purpose of making it expressly clear that a
`copyright holder can assert contributory infringement as well as direct infringement. The House
`Report is unambiguous in this respect: “Use of the phrase ‘to authorize’ is intended to avoid any
`questions as to the liability of contributory infringers.” H.R.Rep. No. 1476, 94th Cong., 2d Sess.
`61, reprinted in 1976 U.S.C.C.A.N. 5659, 5674. “The only rights granted to the copyright holder
`by the statute are found in the numbered sub-sections of Section 106, and unless one of those
`rights is infringed, the copyright holder has no recourse in law under Section 106.” Elektra
`Entertainment Group, 551 F.Supp.2d at 246. Plaintiff’s complaint fails to allege a direct
`
`
`
`9
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 10 of 16
`
`infringement claim because she does not allege that Defendant committed any acts in the
`enumerated paragraphs of the Copyright Act, such as reproduction or distribution, and because
`“to authorize” in of itself does not create a direct infringement claim. See Elektra Entertainment
`Group, 551 F.Supp.2d at 246 (“Plaintiffs have alleged direct infringement in their Complaint, not
`contributory infringement, so MPAA's argument based on the statute's inclusion of the word
`“authorize” is misplaced.”).
`Even if I were to construe Plaintiff’s complaint to allege contributory infringement on the
`part of the Defendant, the claim must still fail because she does not allege any actual direct
`infringement by another party. “In order to establish liability for contributory or vicarious
`copyright infringement, a plaintiff must first prove that direct infringement of its works occurred
`by showing that it owned a valid copyright and unauthorized infringement of its protected
`material occurred.” Arista Records, Inc. v. Mp3Board, Inc., No. 00 CIV. 4660(SHS), 2002 WL
`1997918, at *3 (S.D.N.Y. Aug. 29, 2002) (citing Sony Corp. of Amer. v. Universal City Studios,
`464 U.S. 417, 434 (1984); Feist Publ'ns v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991);
`Rogers v. Koons, 960 F.2d 301, 306 (2d Cir.1992)). While one could construe Plaintiff’s claim
`to allege contributory infringement on the part of Pride, she fails to allege that Professor
`Emmerich or some other unnamed party directly infringed on her copyright by some act of
`reproduction or otherwise. All Plaintiff claims is that the Professor was authorized “to make
`copies,” and that he “has infringed the copyrights in Ely works and refused to cease his
`infringing conduct.” SAC ¶ 36. Laine does not factually allege that Professor Emmerich
`actually copied any of the artwork or performed any other act that would violate her enumerated
`rights under § 106 of the statute. The assertion that he “infringed the copyrights” is the sort of
`fact-free pleading that provides no notice of the factual underpinnings of the lawsuit, and which
`Twombly sought to curb when they retired the “no set of facts” language in Conley v. Gibson.
`See Twombly, 550 U.S. at 563 (“[A]fter puzzling the profession for 50 years, this famous
`observation has earned its retirement.”).
`Laine has failed to sufficiently allege how Pride infringed her copyright in the art
`collection. She has failed to allege a direct infringement claim because “to authorize” is not
`itself a direct infringement of copyright, and she has failed to allege a contributory infringement
`claim because she has not stated any facts that could lead this court to reasonably conclude that
`Professor Emmerich directly infringed the copyright with Pride’s assistance. As a result, her
`
`
`
`10
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 11 of 16
`
`copyright infringement claim must be dismissed. Since Plaintiff fails to adequately state a
`copyright claim under Rule 12(b)(6), she cannot rely on copyright jurisdiction to support her
`remaining claims.
`
`Diversity Jurisdiction
`
`Since Plaintiff’s copyright infringement claim must be dismissed for failure to state a
`claim, her remaining state law claims are likely to survive only if they are based on diversity
`jurisdiction. District courts “shall have original jurisdiction of all civil actions where the matter
`in controversy exceeds the sum or value of $75,000…and is between…citizens of different
`states.” 28 U.S.C. § 1332(a)(1). This further requires “complete diversity,” that all plaintiffs
`possess state citizenship diverse from all defendants. See Exxon Mobil Corp. v. Allapattah
`Servs., Inc., 545 U.S. 546, 553-54 (2005). “Furthermore, it is well established that the party
`seeking to invoke jurisdiction under 28 U.S.C. § 1332 bears the burden of demonstrating that the
`grounds for diversity exist and that diversity is complete.” Herrick Co., Inc. v. SCS
`Communications, Inc., 251 F.3d 315, 322-23 (2d Cir. 2001) (internal quotations and citations
`removed). “An individual's citizenship, within the meaning of the diversity statute, is
`determined by his domicile.” Palazzo v. Corio, 232 F.3d 38, 42 (2d Cir. 2000). Plaintiff alleges
`that her domicile is in New York, and Defendant’s is in Pennsylvania. See SAC ¶¶ 10-11. On
`its face, the complaint sufficiently alleges diversity jurisdiction. However, Defendant claims that
`Laine has failed to properly join required parties to this lawsuit, namely the Ely Estate in the
`form of the estate executor. Her argument is that, by operation of New York Arts & Cultural
`Affairs Law, the sale and transfer of Ely’s art collection to Laine actually created a
`“consignment” rather than a true sale. See N.Y. Arts & Cult. Aff. Law § 12.01(1)(a) (McKinney
`2009) (“Whenever an artist…delivers or causes to be delivered a work of fine art…of his own
`creation to an art merchant for the purpose of exhibition and/or sale on a commission, fee or
`other basis of compensation, the delivery to and acceptance thereof…establishes a
`consignor/consignee relationship.”). As a result, Ely, and now Ely’s estate, remained the true
`owner of the artwork. According to Pride, “title to [the] art and right to possession of [the] art
`remained with the Decedent” and “[a]t Decedent’s death, title of his artworks passed to his
`Estate, not Plaintiff.” Def.’s Br. at 5. Defendant asserts that she needs to be joined in her
`
`
`
`11
`
`

`
`Case 1:09-cv-03057-HB Document 23 Filed 01/19/10 Page 12 of 16
`
`capacity as executor of the estate to protect its interest in the artwork, and that this joinder would
`destroy complete diversity.
`Joinder of Required Parties
`Rule 19 of the Federal Rules of Civil Procedure provides that “required parties” must be
`joined if “feasible.” Fed.R.Civ.P. 19(a). A person is a required party if
`(A) in that person's absence, the court cannot accord complete relief among
`existing parties; or (B) that person claims an interest relating to the subject of the
`action and is so situated that disposing of the action in the person's absence may:
`(i) as a practical matter impair or impede the person's ability to protect the
`interest; or (ii) leave an existing party subject to a substantial risk of incurring
`double, multiple, or otherwise inconsistent obligations because of the interest.
`
`Id. Whether a particular party must be joined out of necessity requires a fact-intensive
`determination. See 7 Charles Alan Wright et al., Federal Practice & Procedure § 1604,
`available at FPP § 4425 (Westlaw). “Joinder of a party is not feasible where the court’s subject
`matter jurisdiction rests on diversity of citizenship and joining the party to the action would
`destroy complete diversity.” LoCurto v. LoCurto, No. 07 Civ. 8238(NRB), 2008 WL 4410091,
`at *4 (S.D.N.Y. Sept. 25, 2008). If joinder of the party is not feasible, then the court must
`consider whether in “equity and good conscience, the action should proceed among the existing
`parties or should be dismissed.” Fed.R.Civ.P. 19(b). The legal representative of an estate is
`deemed to be a citizen of the same state as the decedent. See 28 U.S.C. § 1332(c)(2). In this
`case, Ely was domiciled in New York. See SAC ¶ 17. Since Plaintiff is also domiciled in New
`York, if Pride must be joined in her capacity as executor of the estate, then complete diversity
`will be destroyed.
`
`The facts of this case present a difficult joinder question. On the one hand, Plaintiff has
`provided prima facie evidence of a valid contract through the Transfer Documents such that, for
`all intents and purposes at this stage of litigation, the artwork is her property. A sale of goods,
`including artwork, is governed by the Uniform Commercial Code (“U.C.C.”) as adopted under
`New