Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 1 of 17
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`-------------------------------------------------------x
`ELLEN SENISI et al.,
`
`Plaintiffs,
`
`-v-
`
`JOHN WILEY & SONS, INC.,
`
`Defendant.
`-------------------------------------------------------x
`
`No. 13 Civ. 3314 (LTS)(AJP)
`
`MEMORANDUM OPINION AND ORDER
`
`Defendant John Wiley & Sons, Inc. (“Defendant” or “Wiley”), a publisher of
`
`academic, scientific and educational journals and books, including textbooks, moves, pursuant to
`
`Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6), to dismiss the Amended Complaint of
`
`Plaintiffs Ellen Senisi (“Senisi”), Laura Dwight (“Dwight”), Louis Psihoyos (“Psihoyos”),
`
`Norbert Wu (“Wu”), Mark Gibson (“Gibson”), Hazel Hankin (“Hankin”) and the Estate of
`
`Michael Newman (“Newman Estate”) (collectively, “Plaintiffs”). Four of the Plaintiffs, who are
`
`the owners of copyrights to numerous photographs, have sued Wiley for copyright infringement.
`
`In their Amended Complaint, all Plaintiffs also seek a declaration, pursuant to the federal
`1
`
`Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq., that Plaintiffs, as copyright owners of
`
`works previously used and currently being used by Wiley, are entitled to an audit or accounting
`
`of all of Wiley’s uses of all of Plaintiffs’ works. The Court has jurisdiction of this action
`
`pursuant to 28 U.S.C. §§ 1331, 1338(a) and 1367. The Court has considered the parties’
`
`1
`
`Plaintiffs amended their initial complaint in response to detailed notice of Defendant’s
`intent to move against the original complaint. (See Notice of Motion, Docket Entry
`No. 15.)
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`1
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 2 of 17
`
`submissions and arguments. For the following reasons, the Court grants Wiley’s motion to
`
`dismiss the Amended Complaint, without prejudice to the renewal of certain claims.
`
`BACKGROUND
`
`The following facts are alleged in the Amended Complaint. Plaintiffs are six
`
`professional photographers and the estate of a deceased photographer, Michael Newman.
`
`Plaintiffs license their photographs to end-users both directly and through various licensing
`
`agreements with third-party agencies or “stock photo agencies.” (Am. Compl. ¶¶ 14, 36, 67,
`
`71.) Wiley obtains photographs for its publications under direct licenses with photographers
`2
`
`and under indirect licenses through stock photo agencies. (Id. ¶¶ 34, 36, 67.)
`
`Plaintiffs allege that they own the copyrights in “hundreds of images” licensed to
`
`Wiley “for limited and specific uses.” (Id. ¶¶ 13, 31.) According to Plaintiffs, all of the licenses
`
`that were issued to Wiley were “Rights Managed,” meaning that Wiley could only use Plaintiffs’
`
`photographs in limited ways and that the license fees were calculated based on the limited rights
`
`being granted. (Id. ¶¶ 33, 37.) Plaintiffs further allege that the licenses issued by the stock
`
`photo agencies included express audit or certification provisions obliging Wiley to disclose
`
`information regarding the use of any licensed photographs and that Plaintiffs were the direct and
`
`intended beneficiaries of these licensing agreements. (Id. ¶¶ 70-73.)
`
`Plaintiffs claim that Wiley has been sued for numerous copyright infringement
`
`and license violations that are “identical” to those alleged here. (Am. Compl. ¶¶ 19-30.) The
`
`2
`
`These stock photography agencies include Corbis Corp. (“Corbis); Getty Images
`(US) Inc. (“Getty”); Minden Pictures Inc. (“Minden Pictures”); Visions of
`Tomorrow, Inc. (d/b/a Science Faction) (“Science Faction”); The Image Works
`(“Image Works”); Visuals Unlimited (“VU”); and other vendors. (Am. Compl.
`¶ 68.)
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`2
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 3 of 17
`
`Amended Complaint alleges that, “[g]iven the growing evidence of Wiley’s history of copyright
`
`infringements, Plaintiffs became concerned and reasonably suspected that Wiley similarly
`
`violated the terms of licenses governing its limited right to use Plaintiffs’ photos, including both
`
`the licenses issued directly by Plaintiffs and licenses issued indirectly by their agents.” (Id.
`
`¶ 39.) Plaintiffs further contend that “Wiley remains in sole possession of the information
`
`necessary to determine the actual uses that it made of each photo including whether it exceeded
`
`the limitations of its licenses,” but that Wiley has not disclosed any usage information to them.
`
`(Id. ¶¶ 44-50.) According to Plaintiffs, they need this information in order to manage the
`
`licensing of their photographs to other clients. (Id. ¶¶ 51-53.)
`
`In the Amended Complaint, Plaintiffs allege generally, “upon information and
`
`belief,” that Wiley routinely exceeded and continues to exceed license limitations and infringes
`
`Plaintiffs’ copyrights by, inter alia, publishing photographs without permission; reusing
`
`Plaintiffs’ photographs without obtaining a valid license prior to publication; exceeding the
`
`scope of the licenses by printing more copies than authorized; publishing Plaintiffs’ works in
`
`electronic, ancillary, foreign or derivative publications without permission; and refusing to
`
`provide usage information to Plaintiffs. (Id. ¶¶ 23, 86, 111-115.)
`
`Four of the Plaintiffs assert copyright infringement claims against Wiley, which
`
`are related to the photographs identified in Exhibits 7 through 10 attached to the Amended
`
`Complaint. (Am. Compl. ¶¶ 108-109.) Plaintiffs allege generally that they registered their
`
`copyrights with the U.S. Copyright Office, but do not provide registration numbers or
`
`registration dates. (Id. ¶ 110.) Exhibits 7 through 10 are spreadsheets titled “Photos known to
`3
`
`3
`
`On a motion to dismiss, pursuant to Fed. R. Civ. P. 12(b), the court may consider
`documents attached to the complaint, incorporated by reference into the complaint,
`or known to and relied upon by the plaintiff in bringing the suit. ATSI Commc’ns,
`Inc. v. Shaar Fund. Ltd., 493 F.3d 87, 98 (2d Cir. 2007).
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`3
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 4 of 17
`
`be Published by John Wiley Sons, Inc. [sic],” which list photographs owned by Plaintiffs Senisi,
`
`Dwight, Psihoyos, and Wu. These exhibits contain information identifying the photographs
`4
`
`(either by image number or description), information relating to the publication in which the
`
`photograph was allegedly published, and information relating to the terms of the licensing
`
`agreement or lack thereof. (See Am. Compl., Exs. 7-10.) No photographs are attributed to
`5
`
`Hankin or the Newman Estate, neither of which is asserting copyright infringement claims at this
`
`time. (Id. ¶ 108.) Plaintiffs assert that “[a] reasonable opportunity for further investigation and
`
`discovery will confirm that Defendants [sic] also has infringed other copyrighted works created
`
`and owned by Plaintiffs.” (Id. ¶ 87.)
`
`In Count I of the Amended Complaint, Plaintiffs Senisi, Dwight, Psihoyos and
`
`Wu assert claims for copyright infringement, alleging that Wiley willfully violated their
`
`copyrights in the works identified in Exhibits 7 through 10 by exploiting the works in various
`
`ways that exceeded the scope of limited licenses, and by making unlicensed use of the works.
`
`4
`
`5
`
`In the body of the Amended Complaint, Plaintiff Gibson alleges that he owns a
`photograph that Wiley published in the Third Edition of a book entitled
`“Environmental Science” (for which Wiley was held liable for copyright
`infringement in another case) and in two books entitled “Visualizing Geology” and
`“Visualizing Earth Science” also published by Wiley (and at issue in another case).
`(Id. ¶ 41.) Exhibit 11 lists “Gibson photos known to be published by John Wiley &
`Sons, Inc.” However, Gibson does not assert a claim for copyright infringement.
`(See Am. Compl. ¶¶ 108-109.)
`
`Each spreadsheet includes columns specifically identifying: the individual plaintiff
`copyright owners; Wiley as “user;” either the owner or a specific agency as licensor;
`the image number and/or other description of the title of the allegedly infringing
`publication; the number of the allegedly infringing publication; the number of the
`allegedly infringing edition; publication author; “invoice number;” “invoice or royalty
`settlement date;” licensed print run; licensed distribution region; electronic rights if
`any; licensed language; and, in some instances, the location of the photograph in the
`work. None specifically identifies the date of any license or of any alleged
`infringement, nor are any license provisions other than those summarized in the
`spreadsheet provided. With respect to some works, the “Invoice No.” column entry
`indicates “not licensed.” Some of the columns are blank with respect to some of the
`photographs.
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`4
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 5 of 17
`
`These Plaintiffs seek injunctive relief precluding Wiley from copying, displaying, distributing,
`
`advertising and/or selling the infringing publications identified within the Amended Complaint.
`
`(Id. ¶¶ 107-121.) In Count II of the Amended Complaint, all Plaintiffs demand that Wiley
`
`disclose all of the uses that it has made of their photographs. (Id. ¶¶ 43-49, 121-131.) Plaintiffs
`
`assert that Wiley’s failure to disclose this information is “a distinct violation of Plaintiffs’
`
`copyrights,” a breach of their direct licensing agreements with Wiley and a breach of the licenses
`
`issued by the stock photo agencies, which allegedly require that Wiley disclose information
`
`regarding the use of any licensed content. (Id. ¶¶ 63, 73, 75, 123-128.) Claiming that there is
`
`“an actual controversy” as to whether Plaintiffs are entitled to obtain such information from
`
`Defendants, Plaintiffs seek a declaration “of their rights to know and to be provided information
`
`regarding what uses Defendant has made and is making of their creative works.” (Id. ¶¶ 128,
`
`129.)
`
`In its motion, Wiley asserts that Plaintiffs’ copyright infringement claims are
`
`insufficiently pleaded and that, to the extent any of the claims is properly pleaded, each
`
`Plaintiff’s claims should be severed from those of the others. As to the declaratory judgment
`
`claim asserted in Count II, Wiley contends that the court lacks federal question subject matter
`
`jurisdiction and the claim fails on its merits because the disclosure right that Plaintiffs assert
`
`under the Copyright Act is non-existent, and that the claim fails on its merits to the extent it is
`
`asserted pursuant to contracts because Plaintiffs have failed to plead the relevant terms of any of
`
`the contracts.
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`5
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 6 of 17
`
`DISCUSSION
`
`Under Federal Rule of Civil Procedure 12(b)(6), to survive a motion to dismiss, a
`
`complaint must allege “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). Facial plausibility means that the plaintiff
`
`must allege “more than a sheer possibility that a defendant has acted unlawfully;” “the plaintiff
`
`[must] plead[] factual content that allows the court to draw the reasonable inference that the
`
`defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). In
`
`deciding a motion to dismiss, the court “must accept as true all of the factual allegations set out
`
`in plaintiff’s complaint, draw inferences from those allegations in the light most favorable to
`
`plaintiff, and construe the complaint liberally.” Roth v. Jennings, 489 F.3d 499, 510 (2d Cir.
`
`2007) (internal quotation marks and citation omitted). “However, [c]onclusory allegations or
`
`legal conclusions masquerading as factual conclusions’ will not withstand dismissal.” Jacobs v.
`
`Carnival Corp., No. 06 Civ. 0606, 2009 WL 856637, at *3 (S.D.N.Y. March 25, 2009) (citation
`
`omitted; alteration in original).
`
`Under the Declaratory Judgment Act, 28 U.S.C. § 2201, the Court has subject
`
`matter jurisdiction of a matter “only if there would exist a basis for federal jurisdiction in a
`
`coercive action between the two parties.” Ariel UK Ltd. v. Reuters Grp. PLC, No. 05 Civ.
`
`9646(JFK), 2006 WL 3161467, at *10 (S.D.N.Y. Oct. 31, 2006), aff’d, 277 F. App’x 43 (2d Cir.
`
`2008). A plaintiff must also have standing to bring a claim under the Declaratory Judgment Act.
`
`Velvet Underground v. Andy Warhol Found for the Visual Arts, 890 F. Supp. 2d 398, 403-04
`
`(S.D.N.Y. 2012). Where a motion to dismiss for lack of subject matter jurisdiction is brought
`
`under Federal Rule of Civil Procedure 12(b)(1), the court must accept factual allegations in the
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`6
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 7 of 17
`
`complaint as true, but it need not draw inferences favorable to the plaintiff. J.S. ex. Rel. N.S. v.
`
`Attica Cent. Sch., 386 F.3d 107, 110 (2d Cir. 2004).
`
`Count I – Copyright Infringement Claims
`
`Wiley moves to dismiss Plaintiffs’ copyright infringement claims, arguing that
`
`the Amended Complaint has not plausibly alleged facts framing their claims for copyright
`
`infringement. “In order to state a claim for copyright infringement a plaintiff must allege 1)
`
`which specific original works are the subject of the copyright claim, 2) that plaintiff owns
`
`copyrights in those works, 3) that the copyrights have been registered in accordance with the
`
`statute, and (4) by what acts during what time the defendant infringed the copyright.” Palmer
`
`Kane LLC v. Scholastic Corp., No. 12 Civ. 3890, 2013 WL 709276, at *2 (S.D.N.Y. Feb. 27,
`
`2013) (internal quotation marks and citation omitted). “[B]road, sweeping allegations of
`
`infringement do not comply with Rule 8,” which sets the basic pleading standards for federal
`
`court actions. Jacobs, 2009 WL 856637 (internal quotation marks and citation omitted).
`
`As for the second and third elements of a claim for copyright infringement,
`
`namely, that Plaintiffs own copyrights in the relevant works and that those copyrights are valid,
`
`“the complaint is not required to attach copies of registration certificates or provide registration
`
`numbers for all of the copyrights at issue in order to survive a motion to dismiss.” Palmer Kane
`
`LLC, 2013 WL 709276, at *3 (citations omitted). The Amended Complaint here alleges that
`
`Plaintiffs hold valid copyrights that are registered with the United States Copyright Office. (Am.
`
`Compl. ¶¶ 108-110.) Accordingly, at this juncture, Plaintiffs have satisfied the second and third
`
`requirements for the photographs identified in the Complaint. See, e.g., Bill Diodato
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`7
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 8 of 17
`
`Photography LLC v. Avon Products, Inc., 12 Civ. 847(RWS), 2012 WL 3240428, at *8
`
`(S.D.N.Y. Aug.7, 2012) (“The facts alleged in the Complaint, which are accepted as true at this
`
`stage of the litigation, expressly state that ‘Plaintiff has a registered copyright in the creative
`
`works identified herein.’ Accordingly, Plaintiff has fulfilled the precondition of alleging that it
`
`holds a registered copyright”) (internal citation omitted).
`
`As for the first element, whether Plaintiffs have sufficiently pleaded the specific
`
`works that are the subjects of the copyright claim, the spreadsheets attached to the Amended
`
`Complaint as Exhibits 7 through 10 list Plaintiffs’ copyrighted photographs that are purportedly
`
`“known to be published by” Wiley (See Am. Compl., Exs. 7-10.) In the spreadsheets, the
`
`Plaintiffs offer varying degrees of information as to each photograph, including: the
`
`photograph’s licensor; image identification(s); a description of the photograph; the title of the
`
`Wiley publication in which the photograph was published, the publication’s edition number and
`
`author; the invoice number for the purchase of the photograph; the invoice or royalty statement
`
`date; the licensed print run quantity; the licensed distribution region; electronic rights; licensed
`
`languages; and the location of the photograph in the publication. (Id.) Where the claim is that
`
`Wiley had no rights to publish the work at all, the legend “Not licensed” appears in the “Invoice
`
`No.” column. (Id.)
`
`Wiley contends that, even if Plaintiffs have satisfied the first element of a
`
`copyright infringement claim by identifying the relevant works, they have not satisfied the fourth
`
`element because Plaintiffs must identify “by what acts during what time the defendant infringed
`
`[Plaintiffs’] copyright[s].” Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992). The
`
`Amended Complaint does so, insofar as it specifies relevant publications and licensing
`
`restrictions. According to the Amended Complaint, Wiley obtained licenses to use Plaintiffs’
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`8
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 9 of 17
`
`photographs for a specific purpose and then used the images for other purposes and in other
`
`publications, and also used images for which it had not obtained a license. (Am. Compl. ¶ 111.)
`
`In paragraph 86 of the Amended Complaint, Plaintiffs further allege that Wiley infringed upon
`
`each copyrighted work in at least one of eight ways. (Am. Compl. ¶ 86.) As in
`
`Warren/Rubin/Young-Wolff v. Wiley & Sons, Inc., 952 F. Supp. 2d 610, 618 (S.D.N.Y. 2013),
`
`the Court finds the complaint “provides sufficient notice to Wiley as to how the copyrights at
`
`issue have been infringed, as Wiley ‘may, in an abundance of caution, assume that it is being
`
`accused of violating each license in every way identified.’” Id. (quoting Pacific Stock, Inc. v.
`
`Pearson Educ., Inc., No. 11 Civ. 0423, 2012 WL 93182, at *6 (D. Haw. Jan. 11, 2012) (holding
`
`that it is “not fatal to [plaintiff’s] copyright claim that the Complaint fails to specify how each
`
`particular photograph has been infringed”)); Palmer Kane, 2013 WL 709276, at *3 (“the
`
`complaint need not specify which copyright is infringed by which act”). Although the Amended
`
`Complaint does not specify the relevant licensing date for each photograph, Exhibits 7 through
`
`10 do identify the edition of the publication in which the photograph was published; the invoice
`
`or royalty statement dates; the license start dates and the authorized print run. This information
`
`appears to be sufficient to indicate the approximate time frame. C.f. Young-Wolff v.
`
`McGraw-Hill Companies, No. 13 Civ. 4372 (KMW)(JCF), 2014 WL 349711, at * 5 (S.D.N.Y. Jan.
`
`31, 2014) (copyright claim dismissed), where “the Complaint d[id] not contain a single date or
`
`reference to a time period . . . and thus fail[ed] to specify during what time the defendant
`
`infringed the copyright” (internal quotation marks and citations omitted)).
`
`The Court finds that Plaintiffs have adequately pleaded copyright infringement as
`
`to each of the works identified in Exhibits 7 through 10. See Young-Wolff v. McGraw-Hill
`
`Companies, 2014 WL 349711, at * 4 (finding that allegations in an exhibit “which lists for each
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`9
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 10 of 17
`
`photograph at issue an image number and description, the publication title in which the photograph
`
`appears (for most photographs), and the licensing agent, are specific enough to give Defendant fair
`
`notice of the claims against it”) (collecting cases where other courts found similar allegations to be
`
`sufficient); see also Schneider v. Pearson Educ. Inc., No. 12 Civ. 6392(JPO), 2013 WL 1386968,
`
`at *2 (S.D.N.Y. Apr. 5, 2013) (the exhibit to the complaint was sufficient as it “enumerate[d] not
`
`only the name and registration number of each work, but also the name of the Pearson
`
`publication or publications in which each work appeared”).
`
`Plaintiffs further contend that “[a] reasonable opportunity for further investigation
`
`and discovery will confirm that Defendan[t] also has infringed other copyrighted works created
`
`and owned by Plaintiffs.” (Am. Compl. ¶ 87.) This allegation, however, is too vague and
`
`speculative to state a claim for copyright infringement. “[T]o the extent that Plaintiff[s] ha[ve]
`
`attempted to state a claim for copyright infringement concerning works [other than the specific
`
`ones listed in exhibits 7-10], [Plaintiffs] ha[ve] failed to do so.” Schneider, 2013 WL 1386968,
`
`at *3. Defendant’s motion is granted as to any claims for photographs that are not identified in
`
`Exhibits 7 through 10, without prejudice to timely applications to specify further works.
`
`Severance of Plaintiffs’ Claims
`
`Defendants further request that the Court sever any of Plaintiffs’ copyright
`
`infringement claims that survive dismissal, arguing that Plaintiffs do not assert a right to relief
`
`jointly, severally, or in the alternative; their claims do not arise out of the same transactions or
`
`series of transactions or occurrences; and there are insufficient common questions of law or fact.
`
`Under Federal Rule of Civil Procedure 21, a court may sever claims improperly joined but must
`
`consider: “(1) whether the claims arise out of the same transaction or occurrence, (2) whether the
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`10
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 11 of 17
`
`claims present common questions of fact or law, (3) whether severance would serve judicial
`
`economy, (4) prejudice to the parties caused by severance, and (5) whether the claims involve
`
`different witnesses and evidence.” Boston Post Rd. Med. Imaging, P.C. v. Allstate Ins. Co., No.
`
`03 Civ 3923, 2004 WL 1586429, at *1 (S.D.N.Y. July 15, 2004). “Further, ‘[t]he decision
`
`whether to grant a severance motion is committed to the sound discretion of the trial court.’”
`
`In re Merrill Lynch & Co., Inc. Research Reports Securities Litigation, 214 F.R.D. 152, 155
`
`(S.D.N.Y. 2003) (quoting New York v. Hendrickson Bros., Inc., 840 F.2d 1065, 1082 (2d Cir.
`
`1988)). “The trial court . . . has great discretion to restructure an action to promote the efficient
`
`administration of justice.” Id. (citation omitted).
`
`Here, the Plaintiffs did not take any photographs together and each allegedly
`
`licensed his or her photographs to Wiley through multiple stock photography agencies or
`
`through individual direct licensing agreements. These transactions were entered into over a time
`
`span of at least twenty years and relate to different Wiley book titles and different editions of
`
`those books, and there is no publication that is common to all Plaintiffs. (See Am. Compl., Exs.
`
`7-11 (identifying approximately 200 images allegedly licensed to Wiley from at least 10
`
`different sources, printed in approximately numerous textbooks and editions spanning from 1991
`
`to 2011).) Even those claims based on publications that contain more than one allegedly
`
`infringing photograph have different transaction histories. (See Id., Exs. 10-11, the Gibson
`
`photo that appears in Environmental Science, Second Edition was licensed by Visuals Unlimited
`
`while the Wu photo that appears in the same publication was licensed by Wu directly.) Wiley
`
`argues that it will be prejudiced if these actions remain combined, citing examples of how some
`
`defenses, like the statute of limitations or estoppel, will only be available as against certain
`
`Plaintiffs. Despite Wiley’s centralized licensing department and the overlap in the publications
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`11
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 12 of 17
`
`in which the photographs appear, the Court finds that the lack of common questions of fact and
`
`law and the potential prejudice to Wiley justify granting Wiley’s motion to sever Plaintiffs’
`
`remaining copyright infringement claims. See, e.g., Kalie v. Bank of Am. Corp., No 12 Civ.
`
`9192(PAE), 2013 WL 4044951 (S.D.N.Y. Aug. 9, 2013) (severing claims against mortgage
`
`providers alleged to be part of a “single predatory lending scheme” where “[e]ach of those 16
`
`plaintiffs entered into a different loan transaction at a different time, and with one exception each
`
`of the 16 plaintiffs’ claims related to a distinct property”). Accordingly, Plaintiffs will be
`
`afforded 45 days in which to amend the instant complaint to assert the claims of only one of the
`
`Plaintiffs. The surviving claims of the other individual Plaintiffs may be asserted in separate,
`
`new, actions.
`
`Count II – Declaratory Relief Claims
`
`Wiley also moves to dismiss Plaintiffs’ claims for declaratory relief, arguing that
`
`Plaintiffs’ claim of entitlement to accountings of Wiley’s use of their works have no foundation
`
`in the Copyright Act and are plead insufficiently to the extent that they are premised on contract
`
`rights.2
`
`2
`
`Defendants also assert that the Court lacks subject matter jurisdiction of the claims to
`the extent that copyright infringement claims fail. As explained above, the copyright
`claims of the four Plaintiffs whose works are identified in Exhibits 7 through 10 are
`pleaded sufficiently. As to the other three Plaintiffs, who have not pleaded copyright
`infringement claims, the Court finds that their invocation of the Copyright Act as a
`basis for the claimed right to an accounting is sufficient to support subject matter
`jurisdiction, but that the claim fails on the merits for the reasons explained infra. The
`contract-based declaratory judgment claims of those three Plaintiffs are dismissed for
`lack of an independent basis for subject matter jurisdiction.
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`12
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 13 of 17
`
`Plaintiffs assert that, “as the owner[s] of copyrights to their creative works,
`
`Plaintiffs are entitled to know the full scope of Defendant’s past and ongoing use of their
`
`creative works” (Am. Compl. ¶ 123), and that Defendant’s “refus[al] to comply with Plaintiffs’
`
`audit requests constitutes a distinct violation of Plaintiffs’ copyrights, including their right to
`
`exercise exclusive control over the use of their photos and their inherent right to know the uses
`
`that any third-party licensor is making of their works” (id. ¶ 63). Plaintiffs identify no specific
`
`provision of the Copyright Act that confers the claimed rights on them. The rights afforded to
`
`copyright owners are enumerated in Section 106 of the Copyright Act. “Unless one of those
`
`rights is infringed, the copyright holder has no recourse in law under Section 106. Elektra
`
`Entm’t Grp., Inc. v. Barker, 551 F. Supp. 2d 234, 246 (S.D.N.Y. 2008) (citation omitted). The
`
`Copyright Act only confers specific exclusive rights which apply to the “reproduction of,
`
`preparation of derivative works based on, distribution of copies of, public performance of, or
`
`public display of, the copyrighted work.” Briarpatch Ltd., L.P. v. Geisler Roberdeau, Inc., 194
`
`F. Supp. 2d 246, 256 (S.D.N. Y. 2002) (internal quotation marks and citation omitted).
`
`Plaintiffs have not pointed to any language in the Copyright Act that supports
`
`their right to an audit of Wiley’s alleged past and ongoing uses of their copyrighted works, nor
`
`have they shown how such a right could fall within one of the six exclusive rights granted to
`
`copyright owners and enumerated under 17 U.S.C. § 106. They also have not provided any case
`
`law to support their claim. Indeed, the only decisions dealing with such a claim that have been
`
`brought to the Court’s attention reject Plaintiffs’ position. See Young-Wolff v. McGraw-Hill
`
`Companies, 2014 WL 349711, at *6 (dismissing declaratory judgment claim because “Plaintiff
`
`points to neither case law nor language in the Copyright Acting indicating that a copyright owner
`
`has an inherent right to sue a licensee for an audit”). See also Edward H. Rosenthal Decl., Ex. B
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`13
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 14 of 17
`
`(Ellen Senisi v. The Houghton Mifflin Harcourt Publishing Co. et. al., 13 Civ. 2891 (GBD),
`
`Aug. 13, 2013, Transcript, 41: 14-18 (“I am not aware of any case law, any language in the
`
`Copyright Act, or any legitimate legal theory that gives the copyright owner an inherent right to
`
`audit everybody who is licensed by others to use her photograph. She doesn’t have the right to
`
`demand audits from everybody who printed her photo”) (dismissing plaintiff’s declaratory
`
`judgment claim). Accordingly, the Court holds that Plaintiffs’ declaratory judgment claim fails
`
`on the merits insofar as it is based on the Copyright Act.
`
`Contract Based Claims
`
`The Court next considers whether Plaintiffs are entitled, pursuant to contracts
`
`with Wiley and/or as third party beneficiaries of contracts between Wiley and the stock photo
`
`agencies, to an audit or accounting of Wiley’s records under state law. Plaintiffs allege that
`
`Wiley, in refusing to provide them with details of its usage of their works, has breached
`
`obligations under direct and stock photo agency licensing agreements. “Under New York law,
`
`the elements of a breach of contract claim are: (1) the existence of an agreement; (2) adequate
`
`performance of the contract by the plaintiff; (3) breach of [the] contract by the defendant; and (4)
`
`damages.” Swan Media Grp., Inc. v. Staub, 841 F. Supp. 2d 804, 807 (S.D.N.Y. 2012). A
`
`sufficient pleading for breach of contract must, “at a minimum, allege the terms of the contract,
`
`each element of the alleged breach and the resultant damages in a plain and simple fashion.”
`
`Zaro Licensing Inc., v. Cinmar, Inc., 779 F. Supp. 276, 286 (S.D.N.Y. 1991). Plaintiffs allege
`
`that they issued direct licenses to Wiley that were limited to specific usage rights regarding
`
`specific publications and that Wiley exceeded the limits of those direct licenses. Plaintiffs fail,
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`14
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 15 of 17
`
`however, to provide any details regarding the alleged direct contracts between themselves and
`
`Wiley including, when they were entered and what images they concerned. Most significantly,
`
`Plaintiffs do not allege that the direct contracts contained “audit” provisions entitling them to the
`
`relief that they now seek. Accordingly, the Court finds that “[t]hese breach of contract claims
`
`lack the level of specificity required by Rules 8(a)(2) and 12(b)(6)” insofar as they are premised
`
`on obligations under direct agreements between Plaintiffs and Wiley. See
`
`Warren/Rubin/Young-Wolff, 952 F. Supp. 2d at 625 (dismissing breach of contract claim when
`
`the complaint only described an array of photographs and the plaintiff did not identify “with any
`
`specificity the ‘material’ or ‘express or implied’ terms referenced” in the contract.)
`
`To the extent that Plaintiffs assert their declaratory judgment claims as third party
`
`beneficiaries to contracts between the stock photo agencies and Wiley, each Plaintiff must allege
`
`facts sufficient to demonstrate plausibly: “(1) the existence of a valid and binding contract
`
`between other parties, (2) that the contract was intended for [plaintiff’s] benefit and (3) that the
`
`benefit to [plaintiff] is sufficiently immediate, rather than incidental, to indicate the assumption
`
`of a duty to compensate [plaintiff] if the benefit is lost.” Filmore E. BS. Fin Subsidiary LLC v.
`
`Capmark Bank, No. 11 Civ. 4491(PGG), 2013 WL 1294519, at *11 (S.D.N.Y. Mar. 30, 2013).
`
`“It is ancient law in New York that to succeed on a third party beneficiary theory, a non-party
`
`must be the intended beneficiary of the contract, not an incidental beneficiary to whom no duty
`
`is owed.” Madeira v. Affordable Hous. Found., Inc., 469 F.3d 219, 251 (2d Cir. 2006) (internal
`
`quotation marks and citations omitted). Plaintiffs allege that the “[l]icenses issued by these
`
`Stock Photo Agencies included express audit or certification provisions that obligate Wiley to
`
`disclose information regarding use of any licensed content,” and assert that “Plaintiffs are the
`
`intended and direct beneficiaries of any licenses related to their photos that the Stock Photo
`
`SENISI.WPD
`
`V ERSION 03/28/14
`
`15
`
`

`
`Case 1:13-cv-03314-LTS Document 43 Filed 03/28/14 Page 16 of 17
`
`Agencies granted to Defendants.” (Am. Compl. ¶¶ 73,75.) However, Plaintiffs attach only two
`
`blank form Getty and Science Faction agreements to the Amended Complaint. These two
`
`agreements explicitly give only the respective photo agencies – and not Plaintiffs – the option to
`
`exercise any audit rights. (See Ex. 5,¶ 11.2, Ex. 6 ¶ 2.h.) While the Getty form agreement
`3
`
`contains a specific provision regar