Case 1:20-cv-08180-CM-SLC Document 66 Filed 09/30/21 Page 1 of 31
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`THE PAUL RUDOLPH FOUNDATION,
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`Plaintiff,
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`-against-
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`PAUL RUDOLPH HERITAGE FOUNDATION
`and ERNST WAGNER
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`Defendants.
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`It rr========::::::1
`-... USDCSDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC #: _____ i---1--~
`DATE FILED:
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`No. 20 Civ. 8180 (CM)
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`MEMORANDUM AND ORDER GRANTING IN PART AND DENYING IN PART
`DEFENDANTS' MOTION TO DISMISS
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`McMahon, J.:
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`Plaintiff, the Paul Rudolph Foundation ("PRF" or "Plaintiff'), brings this nine-count action
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`against Defendants, the Paul Rudolph Heritage Foundation ("Heritage") and Ernst Wagner
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`("Wagner," together "Defendants"), for trademark infringement, copyright infringement, violation
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`of the Computer Fraud and Abuse Act, and related New York state statutory and common law
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`claims. Plaintiff also seeks a declaratory judgment that the works transferred to the Paul M.
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`Rudolph Archive at the Library of Congress are in the public domain and that Defendants'
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`copyright registration covering those works is invalid.
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`Defendants move to dismiss the First Amended Complaint ("FAC," dkt. 24). That motion
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`is GRANTED in part and DENIED in part. Count III is dismissed with prejudice, Counts VII and
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`IX are dismissed without prejudice, and the motion is otherwise denied.
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`I.
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`Factual Background
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`BACKGROUND
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`Although the FAC is replete with allegations regarding Wagner' s alleged dishonest and
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`malicious conduct, I here summarize only those facts relevant to the Defendants ' motion to dismiss
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`the FAC.
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`A. The Parties
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`Plaintiff is a New York-based non-profit organization. It was founded after the death of
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`renowned modern architect Paul Rudolph, to preserve his legacy as Chair of the Yale Department
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`of Architecture and Brutalist/Modernist architectural designer. (F AC~ 1, 8.)
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`Defendant Wagner was one of the founding members of the plaintiff foundation, as well
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`as its former president. Wagner is domiciled in New York. (FAC ~ 2.)
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`On March 2, 2014, Wagner was voted off Plaintiffs Board, after other members grew
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`unhappy with his behavior. (FAC ~~ 76-85.)
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`Heritage is a New York-based non-profit organization formed by Defendant Wagner in
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`2015 after his ouster from PRF. (F AC ~ 99.) Heritage operates out of a property at West 58th
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`Street in Manhattan, the former headquarters of PRF. (FAC ~ 105.)
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`B. Rudolph 's Estate
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`(1) The 1996 Will
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`On September 30, 1996, Rudolph executed a will. (the "'96 Will) . Under this will , a
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`$2,000,000 testamentary trust was established for the benefit of Wagner, Rudolph' s longtime
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`friend. The trust was to be funded by the sale of certain real property at 23 Beekman Place in
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`Manhattan. (FAC ~ 13.)
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`In the ' 96 Will, Rudolph bequeathed the physical copies of his drawings, plans, renderings,
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`blueprints, models, papers, treatises, and other materials related to his architectural practice (the
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`"Rudolph Archive") to the Library of Congress. (FAC, 10.) "), which named his attorney John
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`Newhouse as his executor. (FAC ,, 11 , 12.) There was no mention of any disposition of the
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`intellectual property in those materials in the 1996 Will ; but Wagner was named as the residuary
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`beneficiary under the Will (FAC, 23.) Assuming arguendo that the intellectual property was part
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`of the residue - as plaintiff alleges (F AC, 22) - it appears to this court that Wagner would have
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`succeeded to those rights under the 1996 Will, even though, according to Plaintiff, Rudolph wanted
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`scholars and the public to have meaningful access to his work. (F AC, 9)
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`John Newhouse, Rudolph's long-time attorney in fact and health care agent, was named as
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`Executor of the 1996 Will.
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`(2) The 1997 Will
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`On March 1 7, 1997, Rudolph suffered a heart attack. Plaintiff alleges that, while Rudolph
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`was in a coma, Wagner and his attorney, Thomas Heckman, devised a plan to draft a new will that
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`would convey a greater share of Rudolph ' s assets to Wagner. (FAC ,,16-18 .)
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`On April 16, 1997, sho1ily after Rudolph awoke from the coma, Rudolph executed a new
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`will ('" 97 Will"). In that will, Rudolph bequeathed to Wagner $1,000,000 outright, as opposed to
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`$2,000,000 in trust. The '97 Will also provided for the outright transfer to Wagner of a piece of
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`property on West 58th Street that Rudolph owned.
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`(FAC , 20.) And the will made other,
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`unspecified changes that were deemed
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`In the '97 Will, as in its predecessor, Rudolph bequeathed his Archive to the Library of
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`Congress. (Id.) Again the Will said nothing about the intellectual property rights appurtenant to
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`the physical items in the Archive (F AC , 22). However, the residuary beneficiary under the 1997
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`Will was not Wagner, but the Library of Congress Trust Fund Board (LOCTFB). (FAC, 24.)
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`(3) The Guardianship Proceeding, Rudolph' s Death, the Will Contest and Reformed Will
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`In July of 1997, Rudolph's sister and his office manager instituted an Article 81
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`guardianship proceeding, alleging that Wagner had induced Rudolph to amend his will to
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`Wagner's benefit. (F AC 125.) Rudolph died before the hearing took place, and the '97 Will was
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`submitted for probate. (FAC 11 26, 28.) Plaintiff alleges that Newhouse (Rudolph's attorney)
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`sought leave to file objections to the '97 Will. (F AC 129 .) It also alleges that a Court-appointed
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`Evaluator questioned whether Rudloph had the capacity to execute documents during the period
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`when the '97 Will was signed. (F AC 126)
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`On June 6, 2001, Wagner, Wagner's attorney Heckman, Newhouse, and the LOCTFB
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`resolved the probate challenges by entering into a stipulation of settlement ("Stipulation of
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`Settlement"), and by modifying the terms of the '97 Will. (F AC 1 31.) This "Reformed Will" is
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`the will that was eventually probated.
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`Article THIRD provides for a bequest of certain tangible property to Wagner. Excluded
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`from that property in the Reformed Will is the following:
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`Currency and any and all drawings, plans, renderings, blueprints, models,
`papers, treatises, and other materials that I prepared or had prepared in
`connection with my professional practice of architecture which is hereinafter
`specifically disposed of in Article FOURTH hereof.
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`Article FOURTH of the Reformed Will bequeathes all such materials to the LOCTFB .
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`With respect to that bequest, the Stipulation of Settlement provides as follows:
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`In furtherance of fulfilling the wishes of Paul M. Rudolph as set forth in
`Article FOURTH of the Reformed 1997 Will, the LOC Trust Fund Board shall
`transfer to the Library of Congress those items among the Architectural Archives
`and among the items set forth in Paragraph 5 below that the Library of Congress
`determines are suitable for its collections. The intellectual property rights of all
`such items transferred to the Library of Congress shall be dedicated to the public.
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`(FAC 1 32.) Plaintiff alleges that approximately 20,000 works physical works from the
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`Rudolph Archive (some of which are the subject of this dispute) were ultimately donated
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`to the Library of Congress and became part of the public domain. Plaintiff further alleges
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`that the phrase "The Intellectual property rights of all such items transferred to the Library
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`of Congress shall be dedicated to the public," means that the Estate voluntarily and
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`irrevocably abandoned Rudolph's intellectual property rights in those 20,000 works. (FAC
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`~ 40).
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`Per the complaint, Wagner inherited the West 5 8th Street Property. (F AC 60).
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`C. Paul Rudolph Foundation
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`Plaintiff is a charitable organization that began operating under the name Paul Rudolph
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`Foundation in 2002.
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`(FAC ~ 48.) Plaintiff alleges that it has used the name exclusively and
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`continuously in connection with promoting public awareness of architectural preservation and
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`restoration, including on the internet and its social media accounts. (FAC ~~ 49, 51.) Plaintiffs
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`name, Paul Rudolph Foundation, is a registered trademark, and has allegedly acquired strong
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`secondary meaning. (FAC ~ 55.)
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`From 2002 until 2014 Wagner served on Plaintiffs Board, including as its President.
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`During that period, the Plaintiff Foundation operated out of the West 58 th Street property. During
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`portions of that period, both Plaintiff and a business operated by Wagner out of the same premises,
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`Modulightor, even shared a computer server.
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`However, the F AC alleges a variety of ways in which Wagner - even during his term as
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`President of Plaintiffs Board - sought to undermine Plaintiffs operations and aggrandize his own
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`role as the conservator of Rudolph's memory. As a result, Wagner was voted off the Board in
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`2014, whereupon he evicted Plaintiff from that property. Plaintiff migrated its files to a cloud based
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`server after it parted ways with Wagner, ultimately deleting them. (FAC ~ 61)
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`D. Paul Rodolph Heritage Foundation
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`After Wagner was thrown out of the Paul Rudolph Foundation, Plaintiff alleges that
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`Heritage is a copycat organization that engages in business activities that are duplicative of
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`Plaintiffs. (PAC~ 101-112.) According to the PAC, Wagner deliberately chose the name for the
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`Paul Rudolph Heritage Foundation to create confusion and benefit from the goodwill associated
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`with Plaintiffs Paul Rudolph Foundation mark. (PAC~ 100.)
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`The First Amended Complaint is replete with allegations of deliberate copymg of
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`Plaintiffs material by the Defendant Foundation (see. , e.g. PAC~ 112) and instances of confusion
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`between the two enterprises (persons appearing at events sponsored by Defendant thinking they
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`were appearing at an event sponsored by Plaintiff; individuals tagging the wrong social media
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`posts; persons contacting the wrong organization to conduct tours of the West 58 th Street property).
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`The Complaint also alleges that Defendant has misappropriated and exhibited on the internet
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`property that belongs to Plaintiff, including donations of Rudolph material that were made to
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`Plaintiff and solicited and accepted while Wagner was associated with Plaintiff and photographs
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`of Rudolph works that were copyrighted by Plaintiff.
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`(PAC ~112-120) And it alleges that
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`Defendants have falsely accused Plaintiff of possessing property that belongs to Wagner (but
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`which does not in fact belong to Wagner) and of holding itself out as the Rudolph Estate (which
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`is is not), while asserting that Wagner' s Foundation holds "termination rights to any license or
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`transfer of copyright" (F AC ~ 127), including specifically copyrights that were dedicated to the
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`public via transfer to the LOCTFB and so extinguished.
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`Plaintiff also alleges that Wagner, or someone acting at his behest, stole material belonging
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`to Plaintiff that was formerly stored on the shared server-including 24 photographs of Rudolph's
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`Brookhollow Plaza building in Dallas, Texas, that were taken by George Balle and registered for
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`copyright by Plaintiff with the U.S . Copyright Office in 2020 (the "Balle Photographs"). (F AC~
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`57-59.) Heritage has allegedly posted at least one of the Balle Photographs on its Instagram page,
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`with a caption claiming that the image "is from the archives of the Paul Rudolph Heritage
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`Foundation." (FAC ~ 114 & Ex. 6.) Plaintiff also alleges that Heritage has posted other images
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`that it could only have obtained by accessing Plaintiff's deleted files and has claimed ownership
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`of those materials in their captions. (FAC ~~ 119, 120.)
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`E. Dispute Over Plaintiff's Social Media
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`Plaintiff alleges that, in the fall of 2019, Defendants lodged a bad faith campaign against
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`Plaintiff's social media presence by submitting at least 36 takedown notices to Facebook and
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`Instagram under the Digital Millennium Copyright Act (the "DMCA"). (F AC~ 130.) Each notice
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`asserted that a particular photo posted on one of Plaintiff's account infringed on Defendants' valid
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`copyright. Plaintiff alleges that among the 36 images that were the subject of the takedown notices
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`were digitized images taken from the Rudolph Archive - i.e., images that were given to the Library
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`of Congress and whose IP rights were dedicated to the public pursuant to the Stipulation of
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`Settlement. (FAC ~ 131.)
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`As a result of Defendants filing the DMCA takedown notices, Instagram disabled
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`Plaintiff's account on November 1, 2019, and Facebook disabled Plaintiff's account on an
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`unspecified date. (FAC ~ 133.) Plaintiff has since regained access to its Facebook account; its
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`efforts to obtain access to its Instagram account are ongoing. (FAC ~ 137.)
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`Plaintiff responded by filing counterclaims with Facebook, alleging that the takedown
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`notices filed by Defendants fraudulently claimed intellectual property rights to the photographs
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`posted on Plaintiff's account when, in reality, the posted photographs were in the public domain.
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`On November 11 , 2019, Plaintiff received a letter from Defendants, in which Defendants
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`threatened to file a lawsuit in response to the counterclaims Plaintiff filed with Face book. (F AC
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`1138.)
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`F. Defendants ' Copyright Reg No. VAU00J380158
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`Plaintiff alleges that on November 13, 2019 (while the parties were disputing the DMCA
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`takedown notices), Defendants registered a collection of 152 photos of Rudolph's architectural
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`works with the U.S. Copyright Office (under U.S. Copyright Reg. No. VAU001380158), including
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`certain images from the Rudolph Archive, the rights to which were expressly dedicated to the
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`public pursuant to the Stipulation of Settlement. (F AC 11228, 232.)
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`II.
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`Procedural History
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`On October 1, 2020, Plaintiff filed the original complaint in this action. (Dkt. 1.) On
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`January 14, 2021, Plaintiff filed the F AC. (Dkt. 24.) The nine-count F AC alleges violations of the
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`Lanham Act arising from defendants' infringement of Plaintiffs trademark (Count I) and unfair
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`competition (Count II); New York's false advertising statute (Count III); common law trademark
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`infringement and unfair competition (Count IV); and violations of the federal Copyright Act
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`(Count V), the DMCA (Count VIII), and the Computer Fraud and Abuse Act (Count IX). Plaintiff
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`also seeks declarations that (i) the materials in the Rudolph Archive are in the public domain
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`(Count VI), and (ii) that intellectual property rights to certain material were dedicated to the public,
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`and that Defendant's copyright registration of that material is invalid (Count VII).
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`Before the Court is Defendants' motion to dismiss all but Counts I, II, and IV -
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`the
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`trademark infringement and unfair competition counts. (Dkt. 29.)
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`DISCUSSION
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`Ill.
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`Legal Standards
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`A. Rule 12(b)(6)
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`"To survive a motion to dismiss, 'a complaint must contain sufficient factual matter,
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`accepted as true, to state a claim to relief that is plausible on its face.'" Sphere Digital, LLC v.
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`Armstrong, No. 20-cv-4313 (CM) , 2020 WL 6064156, at *4 (S.D.N.Y. Oct. 14, 2020) (quoting
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`Ashcroft v. Iqbal, 556 U.S. 662,678 (2009)). " [A]ll reasonable inferences should be drawn in favor
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`of the plaintiff," but the "complaint must contain sufficient allegations to nudge a claim 'across
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`the line from conceivable to plausible."' Ibid. (quoting Bell At!. Corp. v. Twombly, 550 U.S. 544,
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`555 (2007)).
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`B. Rule I 2(b)(I)
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`For a federal court to have subject-matter jurisdiction over a case, a plaintiff must have
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`standing. The " 'irreducible constitutional minimum' " of standing requires that a "plaintiff must
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`have (1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the
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`defendant, and (3) that is likely to be redressed by a favorable judicial decision." Spokeo, Inc. v.
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`Robins, 136 S. Ct. 1540, 1547 (2016) (quoting Lujan v. Defenders of Wildlife, 504 U.S. 555, 560
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`(1992)).
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`IV.
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`The Motion to Dismiss Count III (NYGBL 133,349, 360-1) Is GRANTED
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`A. Applicable Law
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`To bring a claim for deceptive acts or practices in the conduct of business under the New
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`Yark statute, plaintiff must allege that: (1) the challenged act or practice was consumer-oriented;
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`(2) it was misleading in a material way; and (3) plaintiff suffered injury as a result of the deceptive
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`act. New World Sols., Inc. v. NameMedia Inc., 150 F.Supp.3d 287 (S .D.N.Y. 2015); Burberry Ltd.
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`v. Euro Mada Inc., No. 08CV5781-CM, 2009 WL 1675080, at *16 (S.D.N.Y. June 10, 2009).
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`"Section 349 is a consumer protection statute which, until 1980 when it was amended to
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`allow a private right of action, was enforceable only by the State Attorney General." U-Neek, Inc.
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`v. Wal-Mart Stores, Inc., 147 F. Supp. 2d 158, 176 (S.D.N.Y. 2001). Thus, conduct prohibited by
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`the statute usually "involves an individual consumer who falls victim to misrepresentations made
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`by a seller of consumer goods usually by way of false and misleading advertising." Gottlieb Dev. ,
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`LLC v. Paramount Pictures Corp., 590 F.Supp.2d 625, 636 (S.D.N. Y.2008) (internal citation
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`omitted).
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`Corporate competitors, as opposed to consumers, may bring a claim under that statute "so
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`long as some harm to the public at large is at issue." Securitron Magnalock Corp. v. Schnabolk,
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`65 F.3d 256, 264 (2d Cir. 1995); DO Denim, LLC v. Fried Denim, Inc., 634 F.Supp.2d 403, 408
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`(S.D .N.Y. 2009). A corporate competitor alleging harm to its own business must also allege that
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`the challenged conduct has "significant ramifications for the public at large." Gucci America, Inc.
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`v. Duty Free Apparel, Ltd., 277 F.Supp.2d 269,273 (S.D.N.Y. 2003); see also LBF Travel, Inc. v.
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`Fareportal, Inc. , No. 13-CV-9143, 2014 WL 5671853, at *10 (S.D.N.Y. Nov. 5, 2014) (report
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`and recommendation) (explaining same). That is because Section 349 is, at its core, a consumer
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`protection statute; a corporate competitor plaintiff states a claim under the statute "only if it asserts
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`consumer injury or harm to the public interest." Perkins School for the Blind v. Maxi- Aids, Inc.,
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`274 F.Supp.2d 319,327 (E.D.N.Y. 2003). When such a claim is brought by a corporate competitor,
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`courts have required that the alleged harm be akin to the sort of offense to the public interest that
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`would trigger FTC intervention under 15 U.S.C. § 45 - namely, a situation that poses danger to
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`public health or safety. See Chanel, Inc. v. Rea/Real, Inc., 449 F. Supp. 3d 422, 448 (S.D.N.Y.
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`2020) (quoting RCA Trademark Mgmt. S.A .S. v. Voxx Intern. Corp., 2015 WL 5008762, at *4
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`(S.D.N.Y. 2015)).
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`B. Application
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`Defendants argue that claims involving trademark violations are not cognizable under N.Y.
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`GBL § 349 unless "' there is a specific and substantial injury to the public interest"' that rises above
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`'" ordinary trademark infringement or dilution."' (Defs Mot. at p. 30 (quoting New World Sols. ,
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`Inc., 150 F. Supp. 3d at 331-32.) That is conect. Where a claim arises out of a trademark
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`infringement dispute between competitors, "the core of the claim is harm to another business as
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`opposed to consumers," and any alleged harm to the public is "too insubstantial to satisfy the
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`pleading requirements," necessary to survive a Rule 12(b)(6) motion. Gucci America, 277
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`F.Supp.2d at 273.
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`Plaintiff fails to allege harm to the public sufficient to sustain its § 349 claim. Plaintiffs
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`allegations concerning public interest are limited to conclusory assertions that Defendants' acts
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`intended to, and did in fact, mislead, deceive, and confuse the public as to the identity of
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`Defendants. (FAC ~~ 157, 160, 177.) The FAC focuses on the alleged harms suffered by Plaintiff,
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`not by the public, beyond bald assertions of public confusion. (See F AC, ~ 176) (the challenged
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`acts "were intended to confuse, and did confuse, consumers as to the relationship between Plaintiff
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`and Defendants, all causing damage and irreparable harm to Plaintiff'). Plaintiff identifies no facts
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`from which this Court may infer that the "core" of its claims is harm to the consuming public, and
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`not just harm to Plaintiffs own business interests. See Gucci America, 277 F.Supp.2d at 273. It is
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`well established that claims "alleging only general consumer confusion do not threaten ... direct
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`harm to consumers for purposes of stating a claim under section 349." Luv N' Care, Ltd. v.
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`Walgreen Co., 695 F. Supp . 2d 125, 136 (S.D.N.Y. 2010). And there are certainly no allegations
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`of potential for injury to the public health or safety.
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`Plaintiff argues that a § 349 private plaintiff need plead only three elements: (1) that the
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`challenged act or practice was consumer-oriented; (2) that it was misleading in a material way;
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`and (3) that plaintiff suffered injury as a result of the deceptive act. (Opp . at p. 29.) But that is
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`incorrect. Courts have consistently found that the gravamen of a § 349 claim is "' injury or harm
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`to the public interest,"' Tropical Sails Corp. v. Yext, Inc., No . 14-CV-7582, 2015 WL 2359098,
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`at *3 (S.D .N .Y. May 18, 2015) (quoting Schnabolk, 65 F.3d at 264), and have dismissed claims
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`that do not rise to that level. Because the F AC fails to allege any harm to consumers that risese to
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`a level that would interest the FTC, Plaintiff has not stated a viable claim under N .Y. GBL § 349.
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`Count III is, therefore, dismissed.
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`V.
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`Count V: Copyright Infringement
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`Defendants move to dismiss Count V under Rule 12(b )(1 ), for lack of standing, and Rule
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`12(b)(6), for failure to state a claim. This motion is DENIED.
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`A. l 2(b)(l )
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`Standing to sue for copyright infringement is governed by section 50l(b) of the 1976
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`Copyright Act, which provides: "The legal or beneficial owner of an exclusive right under a
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`copyright is entitled, subject to the requirements of section 411 , to institute an action for any
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`infringement of that particular right committed while he or she is the owner of it." 17 U.S .C.A. §
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`501 (b ). Moreover, " [a] certificate of registration from the United States Register of Copyrights
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`constitutes primafacie evidence of the valid ownership of a copyright." Jorgensen v. Epic/Sony
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`Records, 351 F.3d 46 , 51 (2d Cir. 2003).
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`Defendants argue that Plaintiff lacks standing to bring a copyright infringement claim
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`because, "Plaintiff does not allege ownership of copyright in 2019 or authorization to sue for
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`infringements" and because "the bare assignment of an accrued cause of action are incorrect."
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`(Def's Mot. at p. 22.) The Second Circuit has recognized that an owner of an exclusive right is
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`entitled to institute an action for infringement of that right committed prior to a grant of copyright
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`from the grantor, provided that the document granting the copyright expressly includes the causes
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`of action with respect to that right, accrued pnor to the grant. See ABKCO Music, Inc. v.
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`Harrisongs Music, Ltd. , 944 F.2d 971 , 980 (2d Cir. 1991). But "if the accrued causes of action are
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`not expressly included in the assignment, the assignee will not be able to prosecute them. " Id.
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`Defendants rely on Getty Images for the proposition that Plaintiff lacks standing to bring
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`this claim without a specific assignment of the right to prosecute accrued causes of action. That
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`is not the case here. Plaintiff does not claim to have been granted the rights to an accrued cause of
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`action along with the copyright assignment. Plaintiff alleges that, at all times pertinent to the F AC,
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`Plaintiff owned the copyrights to the Balle Photographs. Accepting the allegations as true, as I
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`must, the fact that Plaintiff did not register its copyright with the Copyright Office until the year
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`after the alleged infringement is irrelevant. One must register a copyright in order to bring suit for
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`infringement; but one can own a copyright that is not registered. According to the F AC, Plaintiff
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`obtained the copyrights to the Balle Photographs sometime after their creation in 2009, but before
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`the alleged infringement took place in 2019. That gives Plaintiff standing to bring Count V.
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`B. 12(b)(6)
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`The allegations must include a "plain statement of the claim showing that the pleader is
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`entitled to relief' to provide the defendant with adequate notice of the claim against him, and of
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`the grounds upon which it rests."' Twombly , 550 U.S. at 555 .
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`This district employs a four-prong test to determine whether a claim of copyright
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`infringement is adequately plead. "To survive dismissal, the complaint must allege: '(1) which
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`specific original works are the subject of the copyright claim, (2) that plaintiff owns the copyrights
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`in those works, (3) that the copyrights have been registered in accordance with the statute, and ( 4)
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`by what acts and during what time the defendant infringed the copyright."' Energy Intelligence
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`Group, Inc. v. Jeffries, LLC, 101 F.Supp.3d 332, 338 (S.D.N.Y. 2015).
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`Defendants appear to argue that the F AC fails to allege the fourth element of a copyright
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`infringement claim, on the ground that "conclusory allegations that Defendants committed direct,
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`vicarious and contributory infringement of unpublished Balle Photographs" are insufficient. (Def's
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`Mot. At p. 22.) They are wrong. Plaintiff specifically alleges that Defendants "posted, without
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`authorization, one of the copyrighted Balle Photographs on its Instagram page," and attach the
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`lnstagram post as Exhibit 6. (FAC ~ 114.) The F AC narrows the infringing act to the unauthorized
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`publishing of one specific photograph in 2019, which is sufficiently specific to put Defendants on
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`notice. Kelly v. L.L. Cool J~, 145 F.R.D. 32, 36 n.3 (S.D.N.Y. 1992), affd sub nom. Kelly v. L.L.
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`Cool J, 23 F.3d 398 (2d Cir. 1994). The Kelly court determined that the copyright infringement
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`claim was sufficiently plead because plaintiff narrowed the infringing act to the publishing and
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`distribution of two specific songs during 1991. Id. Although the allegations did not specify the
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`nature of the claimed infringement, "such a level of specificity is not required" to state a claim for
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`copyright infringement. Id.
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`The F AC makes a short, plain statement of the subject of the claim, as required by Rule 8.
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`The motion to dismiss Count V, for copyright infringement, is denied.
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`It is, however, the case that Section 412 of the Copyright Act precludes statutory damages
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`or attorneys ' fees for any infringement of copyright in an unpublished work commenced before
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`the effective date of its registration. 17 U.S.C. § 412; Fischer v. Forrest, 968 F.3d 216, 220 (2d
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`Cir. 2020). The registration dates of the Balle Photographs are all in 2020, after the alleged
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`infringement occurred in January of 2019. Because the first (and only) alleged act of infringement
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`occurred prior to the registration date of the copyright, it would appear that Plaintiff is not entitled
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`to attorney's fees on its copyright claim. However, this issue need not be (and is not appropriately)
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`resolved on a motion to dismiss, but if and when we get around to calculating damages.
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`Case 1:20-cv-08180-CM-SLC Document 66 Filed 09/30/21 Page 15 of 31
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`VI.
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`Counts VI and VII (The Declaratory Judgment Counts)
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`Plaintiff asserts two different claims under the Declaratory Judgment Act. In Count VI, it
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`seeks a declaration that it has the right to use the materials that were donated to the Library of
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`Congress because those materials are in the public domain, since the stipulation of settlement
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`"dedicates" the copyright in those works to the public. In Count VII, it seeks a declaration that a
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`November 13, 2019 copyright registration by Defendants in 152 photographs of Rudolph's
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`architectural works are invalid; these works are among the 20,000 that were donated to the
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`Library of Congress. Defendants move to dismiss both counts as non-justiciable, in that there is
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`no live case in controversy to be resolved, which would make the court's opinion on either claim
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`an advisory opinion.
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`The DJA provides:
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`In a case of actual controversy within its jurisdiction, ... any court of the United
`States, upon the filing of an appropriate pleading, may declare the rights and other
`legal relations of any interested party seeking such declaration, whether or not
`further relief is or could be sought.
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`28 U.S.C. § 220l(a).
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`" [T]he phrase 'case of actual controversy' in the Act refers to the type of 'Cases' and
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`'Controversies' that are justiciable under Article III." Medlmmune, Inc. v. Genentech, Inc., 549
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`U.S. 118, 127 (2007) (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S. 227,240 (1937)). Because
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`Article III of the Constitution authorizes federal courts to adjudicate only "cases" or
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`"controversies," U.S. Const. Art. III, § 2, an "actual controversy must be extant" not just "at the
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`time the complaint is filed," but throughout "all stages" of the litigation. Alvarez v. Smith, 558 U.S.
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`87(2009). The controversy must at all times remain "definite and concrete, touching the legal
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`relations of parties having adverse legal interests." Medimmune, 549 U.S. at 127 (quoting Aetna
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`Life Ins. Co., 300 U.S. at 240-241). "Throughout the litigation, the party seeking relief must have
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`Case 1:20-cv-08180-CM-SLC Document 66 Filed 09/30/21 Page 16 of 31
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`suffered, or be threatened with, an actual injury traceable to the defendant and likely to be redressed
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`by a favorable judicial decision." United States v. Juvenile Male, -U.S.--, 131 S.Ct. 2860,
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`2864 (2011) (quoting Spencer v. Kemna, 523 U.S. 1, 7 (1998)). As with any federal action, courts
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`may not entertain actions for declaratory judgment "when the parties are asking for an advisory
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`opinion, when the question sought to be adjudicated has been mooted by subsequent developments,
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`and when there is no standing to maintain the action." Flast v. Cohen, 392 U.S. 83, 95 (1968)
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`(footnotes omitted).
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`Under the DJA, a party who wishes to engage in conduct that may infringe another's
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`intellectual property rights may seek a declaration that those rights are invalid without first
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`exposing itself to liability. 28 U.S .C. § 2201(a); Medimmune, 549 U.S . at 129-30. However, the
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`dispute must be "presented in the context of a specific live grievance." Golden v. Zwick/er, 394
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`U.S. 103 , 110 (1969), that justifies invoking the protection of the courts to shield the plaintiff
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`against the defendant's "actual interference" with its legal interests. Goosby v. Osser, 409 U.S.
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`512, 517 (1973).
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`Thus, even when parties "continue to dispute the lawfulness" of the conduct that gave rise
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`to the action, their dispute is not justiciable if "that dispute is [not] embedded in any actual
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`controversy about the plaintiffs' particular legal rights." Alvarez, 130 S.Ct. at 580 (Emphasis
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`added). Divorced from "any concrete actual or threatened harm," the parties' "abstract dispute
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`about the law ... falls outside the scope of the constitutional words 'Cases' and 'Controversies."'
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`Id. at 580- 81.
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`A. Counts VI Alleges a Case in Controversy
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`The Declaratory Judgment Act states:
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`In a case of actual controversy within its jurisdiction .. . any court of the United
`States, upon the filing of an appropriate pleading, may declare the rights and other
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`Case 1:20-cv-08180-CM-SLC Document 66 Filed 09/30/21 Page 17 of 31
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`legal relations of any interested party seeking such declaration, whether or not
`further relief is or could be sought.
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`28 U.S.C. § 2201(a) (emphasis added).
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`As the Supreme Court has noted, "Basically, the question in each case is whether the facts
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`alleged, under all circumstances, show that there is a substantial controversy, between parties
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`having adverse le