Case 1:12-cv-02234-LAK Document 33 Filed 07/09/12 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`LIBERTY MEDIA HOLDINGS, LLC,
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`Plaintiff,
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`-against-
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`12 Civ. 2234 (LAK)
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`CARY TABORA and SCHUYLER WHETSTONE,
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`Defendants.
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`MEMORANDUM OPINION
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`Appearances:
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`Andrew Todd Miltenberg
`Marco Aurelia Santori
`NIESENOFF & MILTENBERG, L.L.P.
`Attorneys for Plaintiff
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`Kelly D. Talcott
`THE LAW OFFICE OF KELLY D. TALCOTT
`Attorney for Defendant Cary Tabora
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`LEWIS A. KAPLAN, District Judge.
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`Plaintiff Liberty Media Holdings, LLC (“Liberty”) claims to hold a registered
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`copyright in the motion picture Corbin Fisher’s Down on the Farm (the “Movie”).1 It charges that
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`the defendants “were part of a scheme to illegally pirate [the Movie] by using advanced internet file-
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`1
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`Complaint [DI 1] (“Cpt.”) ¶ 1.
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`Case 1:12-cv-02234-LAK Document 33 Filed 07/09/12 Page 2 of 6
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`2
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`sharing technology called BitTorrent.”2 More specifically, the complaint alleges that Tabora and
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`Whetstone were roommates, that Tabora had an Internet connection “that Whetstone regularly used
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`. . . for the criminal purpose of pirating copyrighted content,”3 that Tabora was aware of and
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`knowingly participated in Whetstone’s pirating activities,4 and that Tabora declined to put a stop to
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`Whetstone’s piracy despite having had the ability to have done so.5 It asserts claims against both
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`defendants for direct and contributory copyright infringement and against Tabora for negligence.
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`The matter is before the Court on Tabora’s motion to dismiss the complaint for failure to state a
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`claim upon which relief may be granted.6
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`The Copyright Infringement Claims
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`Discussion
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`The Copyright Act creates a cause of action in favor of the owner of a copyright for
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`direct copyright infringement.7 Moreover, those who “infringe[] vicariously by profiting from direct
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`infringement while declining to exercise a right to stop or limit it” are secondarily liable “on a theory
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`2
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`3
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`4
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`5
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`6
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`7
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`Id. ¶ 2.
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`Id. ¶ 4.
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`Id. ¶¶ 4, 7.
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`Id. ¶ 6.
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`Whetstone has not appeared in this action despite apparently having been served. He is in
`default, but no motion for a default judgment against him has been filed.
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`17 U.S.C. § 501.
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`Case 1:12-cv-02234-LAK Document 33 Filed 07/09/12 Page 3 of 6
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`3
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`of contributory or vicarious infringement.”8 Nevertheless, Section 411 of the Act, with exceptions
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`not here pertinent, further provides that “no civil action for infringement of the copyright in any
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`United States work shall be instituted until preregistration or registration of the copyright claim has
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`been made in accordance with this title.”9
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`In this case, Liberty seeks relief for infringement of a copyright in a motion picture
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`entitled Corbin Fisher’s Down on the Farm which, it assets, is the subject of registered copyright
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`number PA 1-698-357.10 Tabora, however, has produced a printout from the public catalog which
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`reveals that the title of the motion picture that is the subject of certificate number PA 1-698-357 is
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`Corbin Fisher Amateur College Men Down on the Farm, a proposition that Liberty does not dispute.
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`This, moreover, is the only work that is the subject of a copyright registration in which Liberty is
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`the claimant and that includes the phrase “Down on the Farm.” Thus, the registration relied upon,
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`at least on its face, is not for the motion picture that is the subject of the alleged infringement. The
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`infringement claims cannot stand in their present form, although Liberty of course may be in a
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`position to amend to allege the requisite registration of a claim to copyright in the motion picture
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`at issue.11
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`8
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`9
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`10
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`11
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`Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 930-31 (2005).
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`17 U.S.C. § 411(a).
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`It has not produced a copy of the certificate of registration.
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`The printout of the portion of the public catalog of the Copyright Office is appropriately
`considered on a motion to dismiss because Liberty effectively incorporated the certificate
`of registration in its complaint and the public catalog entry with respect to that certificate
`is a proper subject of judicial notice in the absence of any dispute or reason to dispute its
`accuracy.
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`Case 1:12-cv-02234-LAK Document 33 Filed 07/09/12 Page 4 of 6
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`4
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`The Negligence Claim
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`The negligence claim suffers from at least two problems, each independently fatal
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`to its survival. It is necessary, however, to discuss only the first.
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`Section 301 of the Copyright Act, with exceptions not here relevant, preempts:
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`“all legal or equitable rights that are equivalent to any of the exclusive rights within
`the general scope of copyright as specified by section 106 in works of authorship that
`are fixed in a tangible medium of expression and come within the subject matter of
`copyright as specified by sections 102 and 103 . . . .”12
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`A state law cause of action therefore is preempted where “(1) the particular work to which the claim
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`is being applied falls within the type of works protected by the Copyright Act under 17 U.S.C. §§
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`102 and 103, and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one
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`of the bundle[s] of exclusive rights already protected by copyright law.”13
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`In this case, the motion picture concededly is within the type of works protected by
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`the Copyright Act. The only issue warranting a moment’s discussion is whether Liberty seeks to
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`vindicate rights with respect to the motion picture that are equivalent to rights already protected by
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`copyright law.
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`Liberty’s claim, generously read, is that Tabora, with full awareness that Whetstone
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`was using his Internet connection to pirate copyrighted motion pictures, either (1) “actively
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`participated” and, indeed, “collaborated and conspired” to carry out the infringement14 or (2) failed
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`12
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`13
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`14
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`17 U.S.C. § 301.
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`Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004) (citing 17
`U.S.C. § 301(a), and Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir.
`1997)).
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`Cpt. ¶ 7.
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`Case 1:12-cv-02234-LAK Document 33 Filed 07/09/12 Page 5 of 6
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`5
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`to put a stop to the use of his Internet access for that purpose.15 In either case, his alleged activities
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`fall squarely within the realm of contributory infringement.
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`As Tabora contends, “[a] defendant may be liable for contributory copyright
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`infringement if ‘with knowledge of the infringing activity,’ the defendant ‘induces, causes, or
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`materially contributes to the infringing conduct of another.’ To satisfy the ‘materially contributes’
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`requirement, Plaintiff must in this case show that Tabora (1) had actual or constructive knowledge
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`that Whetstone’s was infringing Plaintiff’s copyright, and (2) encouraged or assisted Whetstone’s
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`infringement, or provided machinery or goods that facilitate the infringement (except where the
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`equipment is ‘capable of substantial noninfringing uses,’ which of course an Internet connection
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`is).”16 As the complaint alleges that Tabora knew exactly what Whetstone was up to and that Tabora
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`either deliberately participated in the infringement or simply allowed it to go with the indispensable
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`use of Tabora’s Internet connection, the complaint alleges contributory infringement. The right that
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`Liberty seeks to vindicate by its state law negligence claim – the imposition of liability on one who
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`knowingly contributes to a direct infringement by another – already is protected by the Copyright
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`Act under the doctrine of contributory infringement.
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`Liberty nevertheless argues that its negligence claim asserted here17 is not preempted
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`15
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`16
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`17
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`Id. ¶ 4.
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`Tabora Mem. [DI 17], at 8-9 (quoting 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER
`ON COPYRIGHT § 12.04 (Matthew Bender, rev. ed.), and Matthew Bender & Co. v. W. Pub.
`Co, 158 F.3d 693, 706 (2d Cir. 1998)) (citing Gershwin Publ’g Corp. v. Columbia Artists
`Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971), and Sony Corp. of Am. v. Universal City
`Studios, Inc., 464 U.S. 417, 442 (1984)).
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`It bears emphasis that, despite the “negligence” label, this complaint alleges that Tabora
`knowingly facilitated and actively participated in Whetstone’s alleged infringement. This
`case does not involve a concededly ignorant but allegedly careless defendant.
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`Case 1:12-cv-02234-LAK Document 33 Filed 07/09/12 Page 6 of 6
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`because, as the Court understands the argument, the negligence claim rests on infringement by
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`others whereas the Copyright Act provides a remedy only against a direct infringer.18 In light of the
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`preceding discussion and the doctrine of contributory infringement – which Liberty’s memorandum
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`ignores entirely – that position is untenable.
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`6
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`Conclusion
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`For the foregoing reasons, Tabora’s motion to dismiss the complaint [DI 14] is
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`granted in all respects. Liberty may move, not later than July 25, 2012, for leave to amend the direct
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`and contributory infringement claims to assert registration of a claim to copyright to the motion
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`picture that allegedly was infringed.
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`SO ORDERED.
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`Dated:
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`July 9, 2012
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`18
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`Liberty Mem. [DI 31], at 5-6.