Case 1:12-cv-09209-LAK Document 17 Filed 03/31/14 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`ALESSANDRA LATOUR,
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`Plaintiff,
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`-against-
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`12 Civ. 9209 (LAK)
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`COLUMBIA UNIVERSITY and MARK WIGLEY,
`Individually and as agent for Columbia University,
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`Defendants.
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`MEMORANDUM OPINION
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`Appearances:
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`Mary E. Mulligan
`Robert S. Landy
`FRIEDMAN KAPLAN SEILER & ADELMAN LLP
`Attorney for Defendants The Trustees of Columbia
`University in the City of New York and Mark Wigley
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`Susan B. Egan
`EGAN LAW FIRM
`Attorney for Plaintiff Alessandra Latour
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`Case 1:12-cv-09209-LAK Document 17 Filed 03/31/14 Page 2 of 11
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`LEWIS A. KAPLAN, District Judge.
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`Alessandra Latour brings this action for copyright infringement and related state law
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`claims against Columbia University and Mark Wigley, the dean of Columbia University’s Graduate
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`School of Architecture, Planning and Preservation (“GSAPP”). Defendants move for judgment on
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`the pleadings dismissing the complaint. For the reasons set forth below the motion is granted.
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`Facts
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`Latour, an Italian citizen residing in New York,1 decided in 2007 to create a joint
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`post-graduate architectural program on globalization and its consequences focusing on New York
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`and Moscow.2 She called this program “Global Metropolis: New York-Moscow” and wrote a five-
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`page proposal (the “Proposal”) describing the history and rationale of the program and a proposed
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`curriculum.3 The Proposal specified that the program would be “jointly carried out” by GSAPP and
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`the Moscow Architectural Institute (“MARKHI”).4 Latour pitched the program, using the Proposal,
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`first to the Rector of MARKHI and then to Wigley at GSAPP.5
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`MARKHI and GSAPP entered into a Memorandum of Agreement in September
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`2008, which incorporated the Proposal.6 Thereafter, Latour asserts, “MARKHI and GSAPP agreed
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`1
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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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`Cpt. ¶ 5.
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`Id. ¶ 19.
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`Id. ¶¶ 19, 22.
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`Cpt., Ex. 1, at 1-2.
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`Id. ¶¶ 23, 25.
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`Id. ¶ 27 & Ex. 2.
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`Case 1:12-cv-09209-LAK Document 17 Filed 03/31/14 Page 3 of 11
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`2
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`that [she] would head the effort to organize and implement the [p]rogram,” that Wigley promised
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`to compensate her for her work and reimburse her expenses, that she was to be identified as
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`“coordinator” of the program, and that all of this would be memorialized in an agreement with
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`GSAPP.7 Latour allegedly relied on these representations and worked to develop and implement
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`the program for several years.8 In 2010, Wigley said that Latour would be paid more quickly if she
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`were considered a “teacher,” though they agreed that a written contract would identify her as
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`“coordinator.”9 The program began in June 2011 with eight students.10 In its second semester, the
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`plaintiff jointly ran a studio in Moscow with a Russian colleague.11
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`The complaint asserts that in late 2010 “Wigley began taking steps to gain control
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`of the Program from Plaintiff.”12 In January 2012, Latour was offered a written contract but it “did
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`not contain the terms that Wigley had represented.”13 Among other things, it “did not describe her
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`Id. ¶¶ 28, 30-32.
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`Id. ¶¶ 33, 35, 37, 38, 41, 45-47.
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`Id. ¶¶ 43, 44.
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`Id. ¶ 48.
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`Id. ¶ 49.
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`Id. ¶ 51.
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`Id. ¶ 69.
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`Case 1:12-cv-09209-LAK Document 17 Filed 03/31/14 Page 4 of 11
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`3
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`role as coordinator or teacher of the [p]rogram.”14 No contract ever was signed.15
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`On March 20, 2012, Wigley informed Latour that she no longer could be a part of
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`the program.16 Latour responded that GSAPP could not use the Proposal – “the [p]rogram was her
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`idea[,] she did all the work to implement it, and it didn’t belong to GSAPP.”17 Latour asserts that
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`defendants continued to operate the program and used the Proposal on the GSAPP website through
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`the summer of 2012 without permission.18 On September 19, 2012, Latour obtained Certificates of
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`Registration from the United States Copyright Office for two versions of the Proposal, dated July 26,
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`2007 and August 3, 2008, respectively.19
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`Latour alleges that Columbia University committed copyright infringement when it
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`continued to display and use the Proposal on the GSAPP website. The complaint seeks statutory
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`damages for copyright infringement, as well as an order enjoining Columbia University from
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`reproducing and displaying the Proposal and from running a post-graduate degree program entitled
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`“Global Metropolis: New York-Moscow.” The complaint seeks damages also for common law
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`claims of breach of contract, quantum meruit, misappropriation, unfair competition, and libel and
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`slander.
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`14
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`15
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`16
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`17
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`18
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`19
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`Id.
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`Id. ¶ 70.
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`Id. ¶ 73.
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`Id.
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`Id. ¶¶ 78, 122.
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`Id. ¶ 22 & Ex. A.
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`Defendants argue that the complaint fails to state a claim for copyright infringement
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`and that there is no other basis for subject-matter jurisdiction.
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`4
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`I.
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`The Standard
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`Discussion
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`Rule 12(c) governs motions for judgment on the pleadings.20 When deciding a Rule
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`12(c) motion, the Court applies the same standard that would be applied to a Rule 12(b)(6) motion
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`to dismiss.21 The Court therefore views the pleadings in the light most favorable to, and draws all
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`reasonable inferences in favor of, the non-moving party.22 To withstand a Rule 12(c) motion, the
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`plaintiff must plead sufficient facts, accepted as true, “to state a claim to relief that is plausible on
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`its face.”23 A claim is facially plausible “when the plaintiff pleads factual content that allows the
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`court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”24 A
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`20
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`21
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`22
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`23
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`24
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`“After the pleadings are closed – but early enough not to delay trial – a party may move for
`judgment on the pleadings.” FED. R. CIV. P. 12(c).
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`See,e.g., Hayden v. Paterson, 594 F.3d 150, 160 (2d Cir. 2010) (citing Johnson v. Rowley,
`569 F.3d 40, 43 (2d Cir. 2009)); Burnette v. Carothers, 192 F.3d 52, 56 (2d Cir. 1999);
`Nat’l Ass’n of Pharm. Mfrs., Inc. v. Ayerst Labs., Div. of/and Am. Home Prods. Corp., 850
`F.2d 904, 909 n.2 (2d Cir. 1988) (“Pursuant to Fed.R.Civ.P. 12(h)(2) . . . a defense of failure
`to state a claim may be raised in a Rule 12(c) motion for judgment on the pleadings, and
`when this occurs the court simply treats the motion as if it were a motion to dismiss.”).
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`See Hayden, 594 F.3d at 160; Sheppard v. Beerman, 18 F.3d 147, 150 (2d Cir. 1994);
`Madonna v. United States, 878 F.2d 62, 65 (2d Cir. 1989).
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007); see also Hayden, 594 F.3d at
`160, Johnson v. Rowley, 569 F.3d at 43.
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`Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (citing Twombly, 550 U.S. at 556).
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`5
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`cause of action based on only “labels and conclusions” or “a formulaic recitation of the elements”
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`will not survive.25
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`In deciding a motion for judgment on the pleadings, the court considers “the
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`complaint, the answer, any written documents attached to them, and any matter of which the court
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`can take judicial notice for the factual background of the case.”26 In copyright infringement cases,
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`“the works themselves supersede and control contrary descriptions of them.”27
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`II.
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`Copyright Infringement
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`A claim for copyright infringement requires (1) ownership of a valid copyright in a
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`work, and (2) unlawful copying.28 Defendants assert that, even if Latour owns a valid copyright in
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`the Proposal, her claim fails because she granted them an implied license to use the Proposal.29
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`A license is a complete defense to a claim for copyright infringement. “A copyright
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`owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the
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`licensee for copyright infringement” and may sue only for breach of contract.30 Although exclusive
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`25
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`26
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`27
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`28
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`29
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`30
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`Twombly, 550 U.S. at 555.
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`Roberts v. Babkiewicz, 582 F.3d 418, 419 (2d Cir. 2009).
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`See Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010)
`(quoting Walker v. Time Life Films, Inc., 784 F.2d 44, 52 (2d Cir. 1986)).
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` See, e.g., Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
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`Defendants dispute also the validity of Latour’s copyright ownership, though it is discussed
`only briefly in their motion. Having reviewed the parties’ submissions, the Court finds that
`it need not reach the question of whether the Proposal qualifies for copyright protection.
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` Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998).
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`Case 1:12-cv-09209-LAK Document 17 Filed 03/31/14 Page 7 of 11
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`licenses to a copyrighted work must be in writing, “nonexclusive licenses may . . . be granted orally,
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`or may even be implied from conduct.”31 “When the totality of the parties’ conduct indicates an
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`intent to grant such permission, the result is a nonexclusive license.”32
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`There can be no dispute that Latour prepared the Proposal with the intent to deliver
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`it to defendants so that they could establish the post-graduate degree program. The details of the
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`Proposal, such as admissions, curriculum, tuition and costs, were provided to defendants with the
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`express intent that they “be jointly carried out by Columbia University Graduate School of
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`Architecture, Planning and Preservation (GSAPP) in New York and the Moscow Institute of
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`Architecture (MARKHI).”33 The Proposal then was incorporated by the two institutions into their
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`Memorandum of Agreement without any alleged objection from Latour.34 In fact, Latour asserts that
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`the purported infringement did not occur until March 2012 “when [defendants] continued to use the
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`Works (or works substantially similar to the Works) to market and promote the program after
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`Professor Latour was informed . . . that she ‘could no longer be associated with the Master’s Degree
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`Program.’”35 Latour’s conduct, as she describes it, makes clear that she impliedly gave defendants
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`31
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`32
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`33
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`34
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`35
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`Id. at 235 (alteration in original) (quoting 3 Melville B. Nimmer & David Nimmer, NIMMER
`ON COPYRIGHT § 10.03[A][7]).
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`3 NIMMER ON COPYRIGHT § 10.03[A][7]; see also SHL Imaging, Inc. v. Artisan House, Inc.,
`117 F. Supp. 2d 301, 317 (S.D.N.Y. 2000) (“An implied license can only exist where an
`author creates a copyrighted work with knowledge and intent that the work would be used
`by another for a specific purpose.”).
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`Cpt., Ex. 1 at 1-2.
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`Cpt. ¶ 27.
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`DI 13 (Pls. Mem. of Law in Opposition), at 9. Of course, Latour’s claim would be barred
`by the statute of limitations if she argued that defendants unlawfully copied her Proposal
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`a license to use the Proposal for the joint-degree program.
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`Implied licenses are revocable where no consideration has been given.36 The parties
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`agree, however, that a nonexclusive license, “may be irrevocable if supported by consideration
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`because then the implied license is an implied contract.”37
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`Latour argues that even if defendants had an implied license to reproduce and display
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`the Proposal, it was revocable because defendants “failed to convey any consideration . . . for any
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`of her contributions, including the license.”38 This argument is without merit. Latour asserts: “The
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`Complaint alleges that Professor Latour was prevented, and ultimately removed, from coordinating
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`and teaching the [p]rogram . . . and she was never reimbursed or compensated.”39 The complaint
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`alleges also, however, that (1) Latour was designated a “coordinator” or “teacher” of the program
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`for several years,40 and (2) Latour was permitted to run a studio in Moscow for participating students
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`when it was incorporated into the 2008 Memorandum of Agreement. See 17 U.S.C.
`§ 507(b).
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`See, e.g., 3 NIMMER ON COPYRIGHT § 10.02[b][5] (“[N]onexclusive licenses are revocable
`absent consideration.”); Keane Dealer Servs. v. Harts, 968 F.Supp. 944, 947 (S.D.N.Y.
`1997).
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`Unclaimed Prop. Recovery Serv. v. Kaplan, No. 11-cv-1799, 2012 WL 4195241, at *4
`(E.D.N.Y. Sept. 19, 2012) (internal quotation marks and citations omitted), aff’d 734 F.3d
`142 (2d Cir. 2013); see also 3 NIMMER ON COPYRIGHT § 10.02[b][5] (“It . . . follows that
`[licenses] are irrevocable if supported by consideration.”).
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`DI 13 (Pls. Mem. of Law in Opposition), at 7.
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`Id.
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`Cpt. ¶¶ 31, 43, 44, 73.
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`36
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`37
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`38
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`39
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`40
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`during the second semester of the program.41 Latour received consideration for granting defendants
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`a license of the Proposal when they provided her a position as a coordinator to develop and
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`implement the joint-degree program. Moreover, Latour alleges that her compensation and
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`reimbursement of expenses were owed only after she provided the Proposal and began working to
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`implement the program.42 Defendants’ obligation to pay her, therefore, constituted a covenant,
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`rather than a condition precedent, and is enforceable only as a contractual obligation.43
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`In short, Latour provided defendants an irrevocable license to the Proposal. The
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`injuries of which she complains are products of alleged breaches of contract, not copyright
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`infringement.
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`III.
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`State Law Claims
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`Latour pleads also state law claims of breach of contract, quantum meruit,
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`misappropriation, unfair competition, and libel and slander. The complaint does not assert diversity
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`jurisdiction and alleges that Latour is an “Italian citizen residing in New York.”44 Latour now
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`requests leave to amend her complaint to allege diversity jurisdiction because she is “truly a citizen
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`of the world”45 and files an affidavit to respond to, among other things, defendants’ assertion that
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`41
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`42
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`43
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`44
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`45
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`Id. ¶ 49.
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`Id. ¶ 28.
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`See Graham v. James, 144 F.3d at 236-237 (nonpayment of royalties was breach of a
`covenant not a condition).
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`Cpt. ¶ 5.
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`DI 13 (Pls. Mem. of Law in Opposition), at 9.
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`she is domiciled in New York.46
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`While leave to amend should be granted freely when justice so requires, the Court
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`finds that amending the complaint in this regard would be futile. “[T]he district courts shall not
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`have original jurisdiction . . . between citizens of a State and citizens or subjects of a foreign state
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`who are lawfully admitted for permanent residence in the United States and are domiciled in the
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`same State.”47 The legislative history indicates that this provision was enacted “to preclude Federal
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`alienage jurisdiction under paragraph 1332(a)(2) in suits between a citizen of a state and an alien
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`permanently residing in the same state.”48 Latour’s claims that she is a citizen of Italy and maintains
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`an apartment in Moscow are of no moment.49 She is an alien admitted for permanent residence in
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`the United States.50 She does not claim that she is domiciled anywhere other than New York51 and
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`she affirmatively asserts that she owns two apartments in New York, pays New York taxes, and
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`46
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`47
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`48
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`49
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`50
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`51
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`See Latour Aff. [DI 14].
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`28 U.S.C. § 1332(a)(2).
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`H.R. REP. NO. 112-10, at 7 (2011).
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`Latour Aff. [DI 14] ¶¶ 2, 4.
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`See Landy Decl. [DI 12] ¶ 5 & Ex. D.
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`It is worth noting – though the Court does not rely on its observation – that this absence in
`Latour’s affidavit appears not to have been mere oversight, as claiming otherwise could
`place her permanent residency status in doubt. See U.S. CITIZENSHIP AND IMMIGRATION
`SERVICES, International Travel as a Permanent Resident, http://www.uscis.gov/
`green-card/after-green-card-granted/international-travel-permanent-resident (last visited
`Mar. 31, 2014) (“If it is determined . . . that you did not intend to make the United States
`your permanent home, you will be found to have abandoned your permanent residency
`status.”); see also Trombati v. Mukasey, 265 Fed. Appx. 18, 19 (2d Cir. 2008) (permanent
`residency status abandoned where visit outside of the United States was not made with the
`intention to return “within a period relatively short, fixed by some early event”).
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`resides here.52 Congress enacted 28 U.S.C. § 1332(a)(2) specifically to defeat diversity or alienage
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`jurisdiction in these circumstances.
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`The Court declines to exercise supplemental jurisdiction over the remaining state law
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`claims.53 Though defendants have moved for judgment on the pleadings dismissing on the merits
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`Latour’s claims for misappropriation, unfair competition and libel and/or slander, the Court declines
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`to adjudicate that aspect of the motion, leaving it for consideration by a state court should the parties
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`determine to continue this dispute in the New York courts.
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`Conclusion
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`Defendants’ motion for judgment on the pleadings [DI 10] is granted in all respects.
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`The copyright infringement claim is dismissed on the merits. The remaining claims are dismissed
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`for lack of subject matter jurisdiction. The Clerk of Court shall enter judgment and close this case.
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`SO ORDERED.
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`Dated:
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`March 31, 2014
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`52
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`53
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`Latour Aff. [DI 14] ¶ 3; Cpt. ¶ 5.
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`28 U.S.C. § 1367(c).