Case 1:22-cv-02205-VEC-GWG Document 90 Filed 06/24/24 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`BRIAN K. WHITE,
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`Plaintiff,
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`-against-
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`DISTOKID, et al.,
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`OPINION & ORDER
`22 Civ. 2205 (VEC) (GWG)
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`Defendants.
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`GABRIEL W. GORENSTEIN, United States Magistrate Judge
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`Plaintiff Brian White has brought suit against defendants DistroKid, LLC, Kid Distro
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`Holdings, LLC, d/b/a Distrokid, (collectively, “DistroKid”) and Eunice Rivers for violations of
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`the Copyright Act and breach of contract. See First-Amended Complaint, filed Dec. 12, 2023
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`(Docket # 69) (“Am. Compl.”). DistroKid has moved to dismiss the claims against it.1 For the
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`following reasons, the motion is granted in part and denied in part.
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`I. BACKGROUND
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`A. Factual Background
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`Plaintiff White is a professional musician who “writes music and beats; does live
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`performances; mixes, produces, sound engineers recorded tracks; and also writes and directs his
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`own music videos.” Am. Compl. ¶ 10. Defendant Rivers is also a musician and “known in the
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`New Jersey area as an accomplished music and club promoter.” Id. ¶¶ 15, 17. White and Rivers
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`met in 2017, id. ¶ 14, and Rivers “took an interest in Mr. White, in part, because of his musical
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`1 See Defendants Distrokid, LLC’s and Kid Distro Holdings, LLC’s Notice of Motion
`and Motion to Dismiss, filed Jan. 24, 2024 (Docket # 76) (“Mot.”); Memorandum of Law in
`Support, filed Jan. 24, 2024 (Docket # 77) (“Mem.”); Plaintiff Brian White’s Opposition, filed
`Feb. 28, 2024 (Docket # 84) (“Opp.”); Reply Memorandum of Law, filed Mar. 27, 2024 (Docket
`# 85) (“Reply”); Letter, filed May 24, 2024 (Docket # 88) (“Pl. Supp. Letter”); Letter, filed June
`7, 2024 (Docket # 89) (“Def. Supp. Letter”).
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`talents, including his ability to write beats . . .,” id. ¶ 16.
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`White “primarily creates beats for his own music” but also “creates beats and licenses
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`them to other artists.” Id. ¶ 20. In November 2020, White created a “series of beats for a
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`number of songs to present for possible licensing to two artists in the New Jersey area.” Id. ¶ 21.
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`White worked “[a]lone and in his own recording studio” and registered a set of beats
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`(hereinafter, “Original Beats”), “along with other songs,” with the United States Copyright
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`Office. Id. ¶¶ 22, 25 (providing Copyright Registration number of PAu004070068). At some
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`point, Rivers and White “discussed the possibility of Ms. Rivers licensing the Original Beats
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`from Mr. White.” Id. ¶ 27.
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`Sometime between December 2020 and January 2021, White and Rivers “entered into an
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`oral agreement.” Id. ¶ 28. The agreement provided that Rivers “could use the Original Beats as
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`music for her singing (recorded and live), so long as she continued to book live performances for
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`Mr. White to perform at and so long as she provided Mr. White with 50% of the proceeds of the
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`exploitation of the Original Beats or any music that included the Original Beats.” Id. ¶ 29. The
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`agreement also provided that if “Rivers failed to continue to perform her payment and live-
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`performance obligations, the license rights would automatically revert back to Mr. White and
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`Ms. Rivers would no longer have the right to use the Original Beats.” Id. White alleges that he
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`has “entered into similar licensing agreements with other artists.” Id. ¶ 31.
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`At some point between December 2020 and April 2021, White emailed electronic copies
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`of the Original Beats to Rivers. Id. ¶ 32. After deciding on which beats she wanted to use,
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`Rivers “without any contribution from Mr. White, wrote lyrics and melodies, or reused lyrics and
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`melodies already written by Ms. Rivers years before, to perform with the Original Beats.” Id.
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`¶ 33. Rivers thereby created an album entitled “Here I Am” (“Album”), which is comprised of
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`several songs. Id. ¶ 35.
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`After she created the Album, Rivers “would reach out to Mr. White to get permission and
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`authorization from him to share the Album.” Id. ¶ 39. This included two instances where Rivers
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`sought “permission” to share the Album “with a radio station” and “to use and/or display the
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`Album in a video.” Id. ¶¶ 40-41. On an unspecified date after Rivers created the Album, White
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`“posted the Album to DistroKid for Ms. Rivers.” Id. ¶ 47.
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`DistroKid is “a music distributor, i.e., a company that, for a fee, populates a musician’s
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`music to a variety of streaming services, online music stores, and other platforms,” such as
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`Spotify, iTunes, Amazon, TikTok, and YouTube Music (collectively, the “Digital Stores”). Id. ¶
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`69; see id. ¶¶ 70, 73. DistroKid “charges an annual fee in exchange for use of its distribution
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`platform” and “offers users upcharges upon each upload of music to [the] Digital Stores.” Id.
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`¶ 71. After a DistroKid user creates an account and uploads their work to DistroKid, DistroKid
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`will “modify the copy to conform with each Digital Store’s uploading requirements,” upload the
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`content onto the Digital Stores’ platforms, and collect royalties from the Digital Stores, which it
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`distributes to the user’s DistroKid account. Id. ¶ 73. DistroKid retains the right to remove any
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`content from the Digital Stores “for reasons including failure to pay its annual fee, its receipt of
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`takedown notices submitted to Digital Stores, or any reason in its business judgment.” Id. ¶ 74.
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`After Rivers created the Album, Rivers and White performed in a show together, which
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`included performance of music from the Album. Id. ¶ 48. However, after that show “Rivers did
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`not continue to meet her obligations under the Agreement to schedule live performances for Mr.
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`White.” Id. ¶ 49. While Rivers “performed songs from the Album at numerous live events,” she
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`“did not ask Mr. White to perform at these live performances,” “did not pay Mr. White his 50%
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`of the proceeds from any of these live performances,” and “did not pay Mr. White 50%” of the
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`proceeds generated by the Album. Id. ¶¶ 50-54. On September 9, 2021, Rivers registered the
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`Album with the United States Copyright Office. Id. ¶ 57 (providing registration number of
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`PA0002326762). In the registration, she “did not reference Mr. White’s copyright registration of
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`the Original Beats.” Id.
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`On December 7, 2021, White “reiterated” to Rivers that she “no longer had his
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`authorization under the license Agreement to use his Original Beats” and indicated that she
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`“must cease any uses of his Original Beats, including any use in the Album.” Id. ¶¶ 58-60. On
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`the same day, White removed the Album from DistroKid. Id. ¶ 59. Nonetheless, Rivers
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`continued to make copies, distribute, and perform the Album. Id. ¶¶ 61-65. Sometime between
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`December 7, 2021, and March 10, 2022, Rivers uploaded the Album to DistroKid herself. Id. ¶¶
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`66, 75. DistroKid then “changed the format of at least one copy” of the Album and “distributed
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`the Album to various Digital Stores.” Id. ¶¶ 78-79. On March 10, 2022, White learned that
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`Rivers had re-uploaded the Album to Distrokid and sent an email to Rivers requesting that it be
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`taken down from DistroKid and the Digital Stores. Id. ¶¶ 67-68.
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`B. Procedural Background
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`On March 17, 2022, White filed the instant action. See Complaint for Copyright
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`Infringement, filed Mar. 17, 2022 (Docket # 2). Plaintiff filed the amended complaint on
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`December 12, 2023. See Am. Compl. On January 24, 2024, DistroKid filed the instant motion
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`to dismiss. The parties consented to adjudication of the motion by the undersigned.
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`II. LEGAL STANDARD
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`A party may move to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) when the opposing
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`party’s complaint “fail[s] to state a claim upon which relief can be granted.” While a court must
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`accept as true all of the factual allegations contained in a complaint, that principle does not apply
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`to legal conclusions. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 555 (2007) (“[A] plaintiff’s obligation to provide the grounds of his
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`entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the
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`elements of a cause of action will not do.”) (punctuation and alterations omitted). In other
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`words, “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements, do not suffice,” Iqbal, 556 U.S. at 678, and a court’s first task is to disregard any
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`conclusory statements in a complaint, id. at 679.
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`Next, a court must determine if the complaint contains “sufficient factual matter” which,
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`if accepted as true, states a claim that is “plausible on its face.” Id. at 678 (citation and
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`punctuation omitted). “A claim has facial plausibility when the plaintiff pleads factual content
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`that allows the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged. The plausibility standard is not akin to a probability requirement, but it asks
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`for more than a sheer possibility that a defendant has acted unlawfully.” Id. (internal citation and
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`punctuation omitted). “[W]here the well-pleaded facts do not permit the court to infer more than
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`the mere possibility of misconduct,” a complaint is insufficient under Fed. R. Civ. P. 8(a)
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`because it has merely “alleged” but not “‘show[n]’ . . . ‘that the pleader is entitled to relief.’” Id.
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`at 679 (quoting Fed. R. Civ. P. 8(a)(2)).
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`III. DISCUSSION
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`White brings two causes of action against DistroKid: one for direct copyright
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`infringement and another for indirect copyright infringement. See Am. Compl. ¶¶ 97-104.
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`DistroKid argues that White fails to state a claim against it, see Mem. at 4-10, and in the event
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`the Court finds otherwise, that it is immune from liability under section 512(c) of the Digital
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`Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512, see Mem. at 10-12. We address each of
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`these arguments separately.
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`A. Direct Copyright Infringement
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`“To establish a claim of copyright infringement, ‘two elements must be proven: (1)
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`ownership of a valid copyright, and (2) copying of constituent elements of the work that are
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`original.’” Abdin v. CBS Broad. Inc., 971 F.3d 57, 66 (2d Cir. 2020) (quoting Feist Publ’ns, Inc.
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`v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)); accord Brunswick Recs. Corp. v. Lastrada
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`Ent. Co., 2023 WL 3010967, at *3 (S.D.N.Y. Apr. 20, 2023). “To satisfy the second element, a
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`plaintiff must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and (2)
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`the copying is illegal because a substantial similarity exists between the defendant’s work and
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`the protectible elements of plaintiff’s work.” Id. (citation and punctuation omitted). “The word
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`‘copying’ is shorthand for the infringing of any of the copyright owner’s . . . exclusive rights . . .
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`described in [17 U.S.C.] § 106.” Arista Recs., LLC v. Doe 3, 604 F.3d 110, 117 (2d Cir. 2010)
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`(citation and punctuation omitted). The relevant rights listed in 17 U.S.C. § 106 are “the
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`exclusive right[] . . . (1) to reproduce the copyrighted work in copies or phonorecords; . . . (3) to
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`distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer
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`of ownership, or by rental, lease, or lending; . . . [and] (6) in the case of sound recordings, to
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`perform the copyrighted work publicly by means of a digital audio transmission.”
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`Here, DistroKid does not dispute that White owns a valid copyright in the Original Beats
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`and that by distributing the Album, Distrokid “copied” the Original Beats that were used in the
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`Album. Rather, DistroKid argues that White’s Original Beats were a component of a “joint
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`work,” the Album, and thus, both White and Rivers have equal rights to distribute it. See Mem.
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`at 4-6. DistroKid also argues that because White licensed his Original Beats to Rivers to create
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`the Album, Rivers and, by extension, DistroKid were permitted to distribute the Album and the
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`Original Beats. See Mem. at 6-8.
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`We address each of these arguments next.
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`1. Joint Work
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`DistroKid argues that the Original Beats were a component of a “joint work,” the Album,
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`and therefore White and Rivers, as co-owners of this work, had equal rights to allow for the
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`work’s distribution. See Mem. at 5-6.
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`The Copyright Act defines a “joint work” as “a work prepared by two or more authors
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`with the intention that their contributions be merged into inseparable or interdependent parts of a
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`unitary whole.” 17 U.S.C. § 101; accord Brooks v. Dash, 852 F. App’x 40, 40-41 (2d Cir. 2021);
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`Webber v. Dash, 2021 WL 3862704, at *8 (S.D.N.Y. Aug. 30, 2021). The authors of a joint
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`work are considered co-owners, 17 U.S.C. § 201(a), and are to “be treated generally as tenants in
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`common, with each co[-]owner having an independent right to use or license the use of a work,
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`subject to a duty of accounting to the other co[-]owners for any profits,” Davis v. Blige, 505 F.3d
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`90, 98 (2d Cir. 2007) (citation and quotation marks omitted) (alteration in original); accord
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`Champlin v. Music Sales Corp., 604 F. Supp. 3d 224, 232 (S.D.N.Y. 2022).
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`In the context of a co-authorship claim, the party asserting co-authorship “bears the
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`burden of establishing that each of the putative co-authors (1) made independently copyrightable
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`contributions to the work; and (2) fully intended to be co-authors.” Thomson v. Larson, 147
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`F.3d 195, 200 (2d Cir. 1998) (citing Childress v. Taylor, 945 F.2d 500, 507-08 (2d Cir. 1991));
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`accord Webber, 2021 WL 3862704, at *8. As to the second element, the intent of the parties, a
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`court must conduct a “nuanced inquiry into factual indicia of ownership and authorship, such as
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`how a collaborator regarded herself in relation to the work in terms of billing and credit,
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`decisionmaking, and the right to enter into contracts.” Larson, 147 F.3d at 201.
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`DistroKid’s primary argument is that “there is no dispute Plaintiff and Rivers intended
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`for their respective parts to be symbiotic components of the final musical works embodied on the
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`Album,” Mem. at 5, and thus, “in the absence of an agreement otherwise made in advance,
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`parties who make interdependent contributions to a work are co-authors,” Def. Supp. Letter at 2
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`(quoting Malloy v. EMI Christian Music Grp., Inc., 2012 WL 13388992, at *3 (S.D.N.Y. May
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`16, 2012)). We disagree with DistroKid’s claim that the amended complaint lacks indicia that
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`the parties did not intend to be co-authors. First, White’s allegations pertaining to the oral
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`agreement reached by White and Rivers — under which Rivers was permitted to use White’s
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`contribution so long as she satisfied certain obligations, see Am. Compl. ¶ 29 — directly negates
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`an inference of co-authorship. Indeed, courts have found a lack of intent to be co-authors where
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`there is an agreement restricting the use of a work or retaining certain rights in one of the
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`authors. See, e.g., Gilliam v. Am. Broad. Companies, Inc., 538 F.2d 14, 22 (2d Cir. 1976)
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`(licensing agreement under which author retained certain rights to license the work “for use on
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`television to parties other than” the defendant “suggest[ed] that the parties did not consider
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`themselves joint authors of a single work”); see also Erickson v. Trinity Theatre, Inc., 13 F.3d
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`1061, 1072 (7th Cir. 1994) (existence licensing agreement showed lack of joint authorship).
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`Second, as White points out, see Pl. Supp. Letter at 2, courts find “the way in which the parties
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`bill or credit themselves to be significant,” Larson, 147 F.3d at 203. In the instant case, there is
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`no indication that the Album was attributed in any way to White, which further negates an
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`inference of an intent to be co-authors. See id. (“[A] writer’s attribution of the work to herself
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`alone is ‘persuasive proof . . . that she intended this particular piece to represent her own
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`individual authorship’ and is ‘prima facie proof that [the] work was not intended to be joint.’”)
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`(alterations in original) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1320 (2d Cir. 1989)).
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`Finally, there is no indication that White had any decisionmaking authority over the creation of
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`the Album, which further negates a finding of co-authorship. See Larson, 147 F.3d at 202-03
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`(“An important indicator of authorship is a contributor’s decisionmaking authority over what
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`changes are made and what is included in a work.”).
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`Obviously, the above indicia do not foreclose a later finding that the Album constitutes a
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`joint work based on other evidence that may be adduced at trial inasmuch as a finding that a
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`work is joint requires a “nuanced inquiry into factual indicia of ownership and authorship.”
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`Larson, 147 F.3d at 201; Caffey v. Cook, 409 F. Supp. 2d 484, 499 (S.D.N.Y. 2006) (“[T]he
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`Second Circuit has declined to define explicitly what sorts of proof are necessary to show joint
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`intent, perhaps because the test of co-authorship intent will vary depending on the specific
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`factual circumstances.”) (citation and internal quotation marks omitted). Thus, we do not
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`definitively resolve the issue based on the allegations in the amended complaint. See Exceller
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`Software Corp. v. Pearson Educ., Inc., 2010 WL 4486944, at *4 (S.D.N.Y. Nov. 9, 2010) (“The
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`question of whether the parties intended to be co-authors is not susceptible to resolution on a
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`motion to dismiss.”).
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`The case law primarily relied on by DistroKid is distinguishable. See Mem. at 5-6; Def.
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`Supp. Letter at 2. For example, in Carroll v. Kahn, 2003 WL 22327299 (N.D.N.Y. Oct. 9,
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`2003), the issue of co-authorship was essentially not in dispute since the copyright registration
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`had the parties listed as co-authors. See id. at *4 (“The registration lists Plaintiff and Benjamin
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`Kahn as co-authors. As such, there is a rebuttable presumption that they are, in fact, co-
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`owners.”) (citations omitted). In Malloy, 2012 WL 13388992, the court addressed a situation
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`where the complaint itself alleged that the question of ownership was not discussed until after the
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`creation of the work, and thus, there was no suggestion that the parties did not intend to be co-
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`authors initially. See id. at *3 (“[B]ecause Plaintiff has pleaded that the parties did not discuss
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`ownership at the time they created the song, Plaintiff will be able to establish at most that he and
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`Paulk were joint authors and are joint owners of the copyright.”). Here, the alleged oral
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`agreement shows an intent to explicitly condition Rivers’ use of White’s contribution on Rivers’
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`performance of the terms of the oral agreement. See Am. Compl. ¶ 29.
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`Accordingly, DistroKid’s argument that the Album is a “joint work” must be rejected at
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`this stage.
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`2. Effect of White’s Licensing of the Original Beats to Rivers
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`DistroKid argues that it was entitled to distribute the Album and the Original Beats
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`because White had granted Rivers a license to use the Original Beats in her album. See Mem. at
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`6-8. White makes three arguments as to why such licensing rights did not exist. See Opp. at 9-
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`10. First, White argues that Rivers never received a right to use his Original Beats since she
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`never fulfilled the conditions upon which the license would be granted — namely, that Rivers
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`had to “continue[] to book live performances for Mr. White” and pay White “50% of the
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`proceeds of the exploitation of the Original Beats or any music that included the Original Beats.”
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`Am. Compl. ¶ 29; see Opp. at 9. Second, White argues that even if the licensing rights vested at
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`some point, there was a “reversion” of these rights after Rivers did not book performances for
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`White or pay him 50% of the proceeds from the exploitation of the Original Beats as agreed. See
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`Opp. at 9. Finally, White argues that even if the licensing rights vested and they did not revert,
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`he revoked Rivers’ licensing rights. See id. at 10.
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`The agreement at issue between White and Rivers was oral and was “negotiated and
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`agreed upon” in New Jersey. Am. Compl. ¶¶ 29-30. White alleges that the agreement had the
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`following terms:
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`Ms. Rivers could use the Original Beats as music for her singing (recorded and
`live), so long as she continued to book live performances for Mr. White to
`perform at and so long as she provided Mr. White with 50% of the proceeds of the
`exploitation of the Original Beats or any music that included the Original Beats.
`However, pursuant to the Agreement, if Ms. Rivers failed to continue to perform
`her payment and live-performance obligations, the license rights would
`automatically revert back to Mr. White and Ms. Rivers would no longer have the
`right to use the Original Beats.
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`Am. Compl. ¶ 29. Both parties acknowledge the formation of this agreement, which White
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`asserts is governed by New Jersey law. See Opp. at 9 n.2.
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`DistroKid argues that while White may have a contract claim against Rivers for violation
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`of their agreement, any claim does not sound in copyright. In brief, DistroKid argues that where
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`“a copyright owner [ ] grants a nonexclusive license to use his copyrighted material,” that owner
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`“waives” the right to sue for infringement and “may sue only for breach of contract.” Mem. at 6
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`(citation and internal quotation marks omitted). DistroKid further argues that because there was
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`consideration for White’s license, the license was “irrevocable” and Rivers’ obligations were
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`enforceable only as “contractual obligations.” Id. at 7-8.
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`In Graham v. James, 144 F.3d 229 (2d Cir. 1998), the Second Circuit considered the issue
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`of whether a licensee’s failure to perform its obligations of paying royalties and including a
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`notice giving credit to the licensor “voided” an implied license. See id. at 236-37. Graham
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`stated that the question turned on whether the obligations were a “breach of a covenant” that
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`inhered the license — which would relegate the licensor exclusively to a remedy in breach of
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`contract — or whether the obligations were a “condition” of the license, which would mean that
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`the material had “not been effectively licensed, and therefore, any use by the licensee is without
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`authority from the licensor and may therefore, constitute an infringement of copyright.” Id. at
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`237.
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`Here, the amended complaint alleges that compliance with the terms of the oral
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`agreement were a “condition” of the license because, as alleged in the amended complaint, “if
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`Ms. Rivers failed to continue to perform her payment and live-performance obligations, the
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`license rights would automatically revert back to Mr. White and Ms. Rivers would no longer
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`have the right to use the Original Beats.” Am. Compl. ¶ 29 (emphasis added). Thus, unlike
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`Graham, where the parties had not spelled out what would happen if the licensee did not satisfy
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`the covenants or conditions, the parties’ agreement here is unmistakable: Rivers would no longer
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`have any license to exploit the work if she failed to adhere to her obligations. Having alleged
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`that Rivers did not satisfy her obligations, the amended complaint adequately alleges that Rivers
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`no longer had any license in the work.
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`Additionally, even if Rivers’ performance of her obligations could be characterized as a
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`covenant, “[a] material breach of a covenant will allow the licensor to rescind the license and
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`hold the licensee liable for infringement for uses of the work thereafter.” Graham, 144 F.3d at
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`237; accord PaySys Int’l, Inc. v. Atos Se, Worldline SA, Atos IT Servs. Ltd., 226 F. Supp. 3d
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`206, 215 (S.D.N.Y. 2016). Here, the amended complaint alleges that White revoked or
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`rescinded Rivers’ right to use the Original Beats because Rivers had failed to satisfy the
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`obligations specified in the oral agreement. Am. Compl. ¶¶ 56, 58, 60. Plaintiff specifically
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`alleges that “[o]n or around December 7, 2021, Mr. White reiterated to Ms. Rivers that she no
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`longer had his authorization under the license Agreement to use his Original Beats.” Am. Coml.
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`¶ 58. All this occurred before Rivers uploaded the Album to DistroKid. See id. ¶ 66.
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`DistroKid argues that the license granted by White to Rivers was not revocable at-will
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`because it was supported by consideration. See Mem. at 6-8; Reply at 1, 3-4. Therefore,
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`according to DistroKid, White’s purported revocation did nothing to alter Rivers’ rights to use
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`the Original Beats. The case cited by DistroKid, Latour v. Columbia Univ., 12 F. Supp. 3d 658
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`(S.D.N.Y. 2014), enunciates this principle by noting that “a nonexclusive license, ‘may be
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`irrevocable if supported by consideration because then the implied license is an implied
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`contract.’” Id. at 662 (quoting Unclaimed Prop. Recovery Serv. v. Kaplan, 2012 WL 4195241,
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`at *4 (E.D.N.Y. Sept. 19, 2012)). Here, however, it is alleged that one of the terms of the oral
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`agreement was that “if Ms. Rivers failed to continue to perform her payment and live-
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`performance obligations, the license rights would automatically revert back to Mr. White and
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`Ms. Rivers would no longer have the right to use the Original Beats.” Am. Compl. ¶ 29. White
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`alleges that Rivers failed to satisfy those two obligations, see id. ¶¶ 51, 54, 55, and that he then
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`informed her that “she no longer had his authorization under the license Agreement to use his
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`Original Beats,” id. ¶ 58. This was all allegedly done before Rivers uploaded the Album to
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`DistroKid. Thus, regardless of whether consideration made the agreement irrevocable at-will or
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`whether White “revoked” the agreement, Rivers did not have the right to use the Original Beats
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`at the time she uploaded the Album to DistroKid under the plain terms of the agreement. See
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`Tasini v. N.Y. Times Co., 206 F.3d 161, 170 (2d Cir. 2000) (“[T]he fact that a party has licensed
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`certain rights to its copyright to another party does not prohibit the licensor from bringing an
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`infringement action where it believes the license is exceeded or the agreement breached.”);
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`PaySys Int’l, Inc. v. Atos Se, Worldline SA, Atos IT Servs. Ltd., 226 F. Supp. 3d 206, 215
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`(S.D.N.Y. 2016) (“[T]he Second Circuit has recognized that a licensor may recover against a
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`licensee for copyright infringement where (1) the licensee’s alleged infringement is outside the
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`scope of the license; (2) the licensee failed to satisfy a condition precedent to the license, such
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`that the license is invalid; or (3) the licensor rescinded the license after the licensee materially
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`breached one of its covenants.”) (citing Graham, 144 F.3d at 235-38).2
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`*
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`*
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`*
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`
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`Finally, DistroKid argues that even if it was not entitled to distribute the Original Beats
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`by way of the Album, it nonetheless cannot be liable for direct copyright infringement since
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`there was no “volitional conduct” on its part. See Reply at 1-2. We decline to consider this
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`argument, however, because it was made for the first time in DistroKid’s reply brief and thus
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`plaintiff never had an opportunity to respond to it. See Playboy Enterprises, Inc. v. Dumas, 960
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`F. Supp. 710, 720 n.7 (S.D.N.Y. 1997) (“Arguments made for the first time in a reply brief need
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`not be considered by a court.”), aff’d, 159 F.3d 1347 (2d Cir. 1998). This ruling is without
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`prejudice to DistroKid raising this argument in an appropriate motion.
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`
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`Accordingly, DistroKid’s motion to dismiss White’s direct copyright infringement claim
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`is denied.
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`B. Indirect Copyright Infringement
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`White’s second cause of action against DistroKid is for “indirect copyright
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`infringement.” See Am. Compl. ¶¶ 100-104. Specifically, White alleges DistroKid is liable for
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`both vicarious and contributory copyright infringement. See Opp. at 12-13; see also Lopez v.
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`Bonanza.com, Inc., 2019 WL 5199431, at *23-25 (S.D.N.Y. Sept. 30, 2019) (considering
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`2 DistroKid repeatedly refers to the fact that at one point White himself uploaded the
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`Album to DistroKid, see e.g., Mem. at 10, Def. Supp. Letter at 2, which the amended complaint
`alleges he later took down, see Am. Compl. ¶ 59. DistroKid’s argument is a red herring because
`the amended complaint alleges that Rivers later re-uploaded the Album, and it is this latter
`upload that is the subject of the infringement claims. See id. ¶ 66.
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`Case 1:22-cv-02205-VEC-GWG Document 90 Filed 06/24/24 Page 15 of 24
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`vicarious and contributory copyright infringement in the context of an “indirect” copyright
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`infringement claim). We address each separately.
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`1. Vicarious Copyright Infringement
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`A person commits vicarious copyright infringement when the person “profit[s] from
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`direct infringement while declining to exercise a right to stop or limit it.” Spinelli v. Nat’l
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`Football League, 903 F.3d 185, 197 (2d Cir. 2018) (quoting Metro-Goldwyn-Mayer Studios Inc.
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`v. Grokster, Ltd., 545 U.S. 913, 930 (2005)); accord Plaid Takeover, LLC v. Owens, 2023 WL
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`6541300, at *6 (S.D.N.Y. Oct. 6, 2023). Thus, to state a claim for vicarious copyright
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`infringement, a plaintiff must “allege that a defendant [1] has declined to exercise the right and
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`ability to supervise or control the infringing activity and [2] enjoys a direct financial benefit from
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`the infringing activity.” Rams v. Def Jam Recordings, Inc., 202 F. Supp. 3d 376, 385 (S.D.N.Y.
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`2016). Importantly, “[w]hile knowledge — either constructive or actual — is a required element
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`of contributory copyright infringement, it is not required to state a claim for vicarious copyright
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`infringement.” Premier Fabrics, Inc. v. Woodland Trading Inc., 42 F. Supp. 3d 549, 555
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`(S.D.N.Y. 2014) (internal citations omitted).
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`As for the first prong, the Second Circuit has stated, “the policies of the copyright law
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`would be best effectuated if [defendant] were held liable, even in the absence of actual
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`knowledge that the copyright monopoly was being impaired, for its failure to police the conduct
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`of the primary infringer.” Gershwin Pub. Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159,
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`1162 (2d Cir. 1971). In other words, “[t]he ability to block infringers’ access to a particular
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`environment for any reason whatsoever is evidence of the right and ability to supervise.” Arista
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`Recs. LLC v. Usenet.com, Inc., 633 F. Supp. 2d 124, 157 (S.D.N.Y. 2009) (citation and
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`quotation marks omitted); accord Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19, 37 (2d Cir.
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`2012). Under this formulation of the test, White has provided sufficient factual allegations
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`establishing DistroKid had the “right and ability to supervise or control the infringing activity.”
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`In particular, White alleges that DistroKid had the ability to remove content from the Digital
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`Stores “for reasons including failure to pay its annual fee, its receipt of takedown notices
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`submitted to Digital Stores, or any reason in its business judgment.” Am. Compl. ¶ 74; see id. ¶
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`82 (“DistroKid could cease the commercial exploitation of musical works it has distributed.”).
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`Such an allegation satisfies the first prong of the test. See BWP Media USA Inc. v. Hollywood
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`Fan Sites, LLC, 69 F. Supp. 3d 342, 357 (S.D.N.Y. 2014) (finding allegations that defendants
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`“retain the right o