Case 1:18-cv-10387-PKC Document 83 Filed 07/28/20 Page 1 of 6
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`NAZIM I. GUITY,
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`Plaintiff,
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`-against-
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`ANTHONY SANTOS, et al.,
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`Defendants.
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`CASTEL, U.S.D.J.
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` 18-cv-10387 (PKC)
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` OPINION
` AND ORDER
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`Plaintiff Nazim I. Guity moves to reconsider this Court’s Opinion and Order of
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`December 5, 2019 granting defendants’ motion to dismiss plaintiffs’ copyright infringement
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`claims. Briefly, plaintiff alleged that he composed, authored, and was granted a copyright for a
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`musical composition, entitled “Eres Mia” (the “Guity Song”). (Compl. ¶¶ 10, 18). Anthony
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`Santos, working with others, recorded a song entitled “Eres Mia” (the “Santos Song”). (Compl.
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`¶¶ 15–16). Plaintiff alleged that the Santos Song incorporated protected elements of, is
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`substantially similar to, and infringes the copyright for the Guity Song. (Compl. ¶¶ 20–21). “Eres
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`Mia,” translated from Spanish to English, means “You’re Mine.” Applying established principles
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`of copyright law, the Court concluded that under both the reasonable observer and the more
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`discerning observer tests, the two works were not substantially similar as a matter of law.
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`As an alternative to his request for reconsideration, plaintiff seeks to amend his
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`Complaint. Defendants separately move as prevailing parties for an award of attorneys’ fees under
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`section 505 of the Copyright Act of 1976. 17 U.S.C. § 505. For reasons that will be explained,
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`plaintiff’s and defendants’ motions will be denied.
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`Case 1:18-cv-10387-PKC Document 83 Filed 07/28/20 Page 2 of 6
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`I.
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`Plaintiff’s Motion to Reconsider.
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`The Court’s December 5, 2019 Opinion and Order set out the governing principles
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`of copyright law and applied them to the allegations of the Complaint, supplemented by the
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`copyrighted Guity Song and the accused Santos Song as well as a translation of the lyrics of the
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`two songs. (Doc. 62). Among the Court’s conclusions were that “[u]nder either the reasonable
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`observer test, which requires the Court to evaluate the similarities between works through the eyes
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`of an average lay listener, or the more discerning observer test, which requires the Court to look
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`mainly at the protected elements of a song, the ‘total concept[s] and overall feel[s]’ of the Guity
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`Song and the Santos Song respectively are so distinct as to prevent a finding of substantial
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`similarity.” (Doc. 62 at 10).
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`In moving to reconsider under Local Civil Rule 6.3 and Rule 59(e), Fed. R. Civ. P.,
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`plaintiff asserts that the Court failed to take account of what it calls the “fragmented literal
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`similarity” of the two works, citing Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d
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`267, 273 (6th Cir. 2009). While the terminology “fragmented literal similarity” has not been
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`widely accepted by Courts in this Circuit, this Court accepts the proposition that “the copying of a
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`relatively small but qualitatively important or crucial element can be an appropriate basis upon
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`which to find substantial similarity.” Bridgeport Music, 585 F.3d at 275.
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`As Judge Nathan of this Court has pointed out, even a finding that there is an
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`identical fragment in the protected and accused compositions is the beginning, not the end of the
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`analysis, on a Rule 12(b)(6), Fed. R. Civ. P., motion:
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`Having determined that this case is best viewed as one involving
`“fragmented literal similarity,” the question of substantial similarity
`is determined by an analysis of “whether the copying goes to trivial
`or substantial elements” of the original work.
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`Case 1:18-cv-10387-PKC Document 83 Filed 07/28/20 Page 3 of 6
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`TufAmerica, Inc. v. Diamond, 968 F. Supp. 2d 588, 598 (S.D.N.Y. 2013) (quoting Newton v.
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`Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004)).
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`As this Court’s December 5, 2019 Opinion and Order makes plain, the Court
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`examined the two works in their totality as well as their individual elements, including their
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`identical titles (“Eres Mia”), use of common words and phrases (“mine,” “love,” “baby,” “night”),
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`and the similarity or, more accurately, dissimilarity of the musical compositions. The common
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`elements in these two works are trivial, insubstantial, and insufficient to plausibly support the
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`copyright infringement allegations of the Complaint.
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`II.
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`Plaintiff’s Alternative Request to Amend the Complaint.
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`Alternatively, plaintiff’ seeks to amend his Complaint to expand and expound on his
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`infringement claims and theories. This relief is also denied for reasons that will be explained.
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`This action commenced in the Eastern District of Pennsylvania and was transferred
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`to this District on September 26, 2018. Before transfer, the defendants filed a comprehensive
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`motion to dismiss arguing that, under Rule 12(b)(6), the Complaint failed to plausibly allege
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`copyright infringement because the two works were not substantially similar as a matter of law.
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`In responding to this motion, Guity relied upon the same “fragmented literal similarity” theory that
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`he advances here.
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`After transfer, defendants filed a five-page single-spaced letter with exhibits setting
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`forth the basis for its renewed motion to dismiss. (Doc. 48). At a conference held before this
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`Court on January 8, 2019, the Court offered the plaintiff the opportunity to amend his Complaint.
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`In a Scheduling Order of that date, the Court granted him leave to amend his Complaint and gave
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`him until January 22, 2019 to do so. (Doc. 49). Plaintiff simply did not file an Amended
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`Complaint. Accordingly, defendants proceeded to file their motion to dismiss on February 15,
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`2019. (Doc. 52; refiled Mar. 7, 2019 as Doc. 53).
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`Case 1:18-cv-10387-PKC Document 83 Filed 07/28/20 Page 4 of 6
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`The same January 8, 2019 Scheduling Order which gave plaintiff the right to file an
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`Amended Complaint by January 22, 2019 also provided that “the Court hereby limits the time to
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`amend the complaint as of right or move to amend to the later of the following: (a) the date to
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`amend as of right under Rule 15, Fed. R. Civ. P.; or (b) 21 days from the filing of the motion to
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`dismiss.” Plaintiff did not file an amended pleading or motion to amend within 21 days of the
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`filing of the motion to dismiss. Indeed, in opposing the motion to dismiss, plaintiff did not seek
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`leave to amend his Complaint. (Doc 60).
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`Rule 15(a)(2), Fed. R. Civ. P., provides that a “court should freely give leave [to
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`amend] when justice so requires.” But Rule 15 is read in conjunction with Rule 16(a), Fed. R.
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`Civ. P., which establishes “expediting the disposition of [an] action” as one of the purposes of a
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`pretrial conference. Rule 16(b)(3) sets forth both permissive and required content of a court’s
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`scheduling order, stating that “[t]he scheduling order must limit the time to . . . amend the
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`pleadings.” Rule 16(b)(3)(A). A scheduling order “may be modified only for good cause and with
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`the judge’s consent.” Rule 16(b)(4). This Court’s Scheduling Order of January 8, 2019 set the
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`date by which plaintiff could file an amended pleading. He did not do so within the time limit set
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`by the Court and no request for an extension was made before its expiration.
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`In Parker v. Columbia Pictures Indus., the Second Circuit joined other circuits “in
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`holding that despite the lenient standard of Rule 15(a), a district court does not abuse its discretion
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`in denying leave to amend the pleadings after the deadline set in the scheduling order where the
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`moving party has failed to establish good cause.” 204 F.3d 326, 340 (2d Cir. 2000). The diligence
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`of the moving party is an important factor in determining whether good cause has been shown, but
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`it is not the only consideration. Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 244 (2d Cir.
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`2007). Prejudice to the non-moving party is a relevant consideration, id., but the absence of
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`prejudice is not alone sufficient to demonstrate good cause, Gullo v. City of New York, 540 Fed.
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`App’x 45, 47 (2d Cir. 2013) (summary order).
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`Here plaintiff has not been diligent. He had the complete text of defendants’ motion
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`to dismiss filed in the Eastern District of Pennsylvania and a five-page single space letter filed in
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`this District. He was granted leave to file an amended pleading by a given a date and did not do so
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`and sought no extension of the date. He had the full text of defendants’ motion to dismiss filed in
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`this District and was given 21 days within which to seek a further amendment but did not do so.
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`The defendant would be prejudiced by being required to file a third motion to dismiss in response
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`to a belatedly filed amended pleading. Plaintiff has failed to show good cause. The application for
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`leave to file an amended complaint will be denied.
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`III. Defendants’ Motion for Attorneys’ Fees.
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`Defendants move for an award of attorneys’ fees and costs. They invoke section
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`505 of the Copyright Act that permits the Court to award to “the prevailing party” their costs of
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`suit, including attorneys’ fees. 17 U.S.C. § 505. “[T]he award of attorney’s fees is within the
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`sound discretion of the court.” N.A.S. Import, Corp. v. Chenson Enters., Inc., 968 F.2d 250, 253
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`(2d Cir.1992). “[N]o precise rule or formula” governs the determination of when such an award
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`should be granted. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) (quoting Hensley v.
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`Eckerhart, 461 U.S. 424, 436–437 (1983)). Relevant considerations include “frivolousness,
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`motivation, objective unreasonableness (both in the factual and in the legal components of the
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`case) and the need in particular circumstances to advance considerations of compensation and
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`deterrence.” Id. at 534 n. 19 (quoting Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir.
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`1986)).
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`The Court cannot say that the plaintiff’s claims are objectively unreasonable or
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`frivolous. The Court can discern no extraneous motive for the litigation; the Complaint simply
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`Case 1:18-cv-10387-PKC Document 83 Filed 07/28/20 Page 6 of 6
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`alleges copyright infringement. In terms of considerations of compensation and deterrence, there
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`was no bad litigation conduct or untoward behavior that requires deterrence. The Court recognizes
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`that the mere assertion of an unmeritorious claim may alone require compensation and deterrence
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`but does not consider this to be such a case. Plaintiff felt aggrieved because, among other things,
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`the two songs had the same title and then sought a judicial resolution of the question. This action
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`never proceeded beyond the motion to dismiss stage. Based upon a review of the entirety of the
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`record, defendants’ motion for attorneys’ fees is denied.
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`CONCLUSION
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`Plaintiffs’ motion for reconsideration or, alternatively, to amend his complaint,
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`(Doc. 66), is DENIED. Defendants’ motion for attorneys’ fees, (Doc. 76), is DENIED. The Clerk
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`shall terminate the motions
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`SO ORDERED.
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`Dated: New York, New York
` July 28, 2020
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`________________________________
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` P. Kevin Castel
` United States District Judge
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