Case 1:22-cv-09752-RA Document 36 Filed 05/16/23 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`TIANHAI LACE CO., LTD.; TIANHAI LACE
`(GUANGDONG) LTD.; and TIANHAI LACE
`USA INC.,
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`Plaintiffs,
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`v.
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`22-CV-9752 (RA)
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`MEMORANDUM
`OPINION & ORDER
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`ASOS, PLC.; ASOS.COM LIMITED; ASOS US
`SALES LLC,
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` Defendants.
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`RONNIE ABRAMS, United States District Judge:
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`Plaintiffs, several entities of Tianhai Lace Company, brought this action alleging that
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`Defendants, entities of ASOS, used Plaintiffs’ protected lace designs in various clothing products,
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`and asserting claims for copyright infringement pursuant to 17 U.S.C. § 501, et seq., and under the
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`New York Deceptive Trade Practices Act, New York General Business Law § 349, et seq. (the
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`“DPA”). Now before the Court is Defendants’ motion to dismiss the Complaint. For the reasons
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`that follow, the motion is denied with respect to the copyright infringement claims but granted
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`with respect to the claims brought under the DPA.
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`BACKGROUND
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`The following facts are drawn from the Complaint, and are accepted as true for purposes
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`of the present motion. See Stadnick v. Vivint Solar, Inc., 861 F.3d 31, 35 (2d Cir. 2017).
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`Plaintiffs allege that they have “designed, manufactured, and sold decorative laces” for
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`“more than thirty years,” “enjoy[ing] tremendous commercial success in the fashion industry.”
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`Compl. ¶ 14. Given their extensive lace portfolio, Plaintiffs allege that they have developed and
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`sold original lace designs which are copyrightable subject matter under 17 U.S.C. § 101, et seq.,
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`Case 1:22-cv-09752-RA Document 36 Filed 05/16/23 Page 2 of 9
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`and today own some 22,500 lace designs manufactured for sale in 30 countries across the globe.
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`Id. ¶¶ 15, 20. Plaintiffs allege they are the owners U.S. Copyright Office Registrations for five
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`specific lace designs which are relevant to the present action. Id. ¶ 16; id., Ex. A (Registration
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`Certificates for Copyright Nos. VA 1-971-441, VA 2-293-81, VA 1-847-129, VA 1-861-878, and
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`VA 1-791-176).
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`Defendants are alleged to have “systematically and without authorization reproduced,
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`displayed, distributed, created derivative works of, and otherwise infringed” these five lace designs
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`by offering clothing products for sale which feature the protected designs. Id. ¶ 30. Plaintiffs’
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`investigators “placed multiple orders for” the allegedly infringing products between February 2020
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`and May 2022, and, upon receiving them, “confirmed that none of the laces included in
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`Defendants’ [] [p]roducts were genuine Tianhai laces.” Id. ¶ 31. The Complaint includes a
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`detailed, five-page table showing Plaintiffs’ registered lace designs in the left-most column,
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`Defendants’ allegedly infringing products in the center column, and Plaintiffs’ copyright
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`registration number for the protected design. Id. ¶ 32. Moreover, the Complaint attaches “photos
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`of the purchased Infringing Products,” complete with receipts and email confirmations from
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`ASOS, as Exhibit E.
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`Despite cease-and-desist letters sent beginning in May 2022, Plaintiffs have not received a
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`substantive response from Defendants regarding the alleged infringement. Id. ¶¶ 34–41. Instead,
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`Defendants allegedly “continue to reproduce, display, distribute, create derivative works of, and
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`otherwise infringe the Tianhai Lace Designs in the U.S. and multiple countries through the ASOS
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`E-Commerce Platforms,” resulting in lost sales and licensing income. Id. ¶¶ 42–44. Accordingly,
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`Plaintiffs brought this action in November 2022, see Dkt. 1, Defendants moved to dismiss in
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`February 2023, see Dkt. 25, and the motion was fully briefed in March 2023, see Dkt. 31.
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`LEGAL STANDARD
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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.’” Ashcroft v. Iqbal, 556
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`U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 554, 570 (2007)). “A claim
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`has facial plausibility when the plaintiff pleads factual content that allows the court to draw the
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`reasonable inference that the defendant is liable for the misconduct alleged.” Id. (citing Twombly,
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`550 U.S. at 556). The Court must accept as true all factual allegations and draw all reasonable
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`inferences in Plaintiffs’ favor, see Goldstein v. Pataki, 516 F.3d 50, 56 (2d Cir. 2008), but it need
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`not credit “mere conclusory statements,” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555).
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`“While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual
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`allegations, a plaintiff’s obligation to provide the grounds of his entitlement to relief requires more
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`than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not
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`do.” Twombly, 550 U.S. at 555 (internal citations and alterations omitted). Courts may consider
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`documents incorporated into the complaint when analyzing motions brought under Rule 12(b)(6),
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`including “any written instrument attached to [the complaint] as an exhibit, materials incorporated
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`in [the complaint] by reference, and documents that, although not incorporated by reference, are
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`‘integral’ to the complaint.” Sira v. Morton, 380 F.3d 57, 67 (2d Cir. 2004) (cleaned up) (collecting
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`cases).
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`DISCUSSION
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`Defendants argue, first, that the claim for copyright infringement should be dismissed
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`because the Complaint fails to provide Defendants “fair notice of which products infringe which
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`of Plaintiffs’ Claimed Copyrights,” Mot. at 2; and, second, that the claim brought under New
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`York’s DPA should be dismissed because it is preempted by federal copyright law, id. at 2–3. The
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`court disagrees with Defendants as to the former argument, but agrees as to the latter.
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`I.
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`The Complaint’s Copyright Infringement Allegations are Sufficiently Specific
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`A complaint for copyright infringement must provide the defendant fair notice of the nature
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`of the alleged infringement. Ino, Inc. v. Needle & Threads of West Palm Beach, Inc., 2020 WL
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`7343037, at *2–3 (E.D.N.Y. Dec. 14, 2020). In this district, courts have held that a complaint
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`alleging copyright infringement includes such fair notice where it states: “(1) which specific
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`original works are the subject of the copyright claim, (2) that [the] plaintiff owns the copyrights in
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`those works, (3) that the copyrights have been registered in accordance with the statute, and (4) by
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`what acts during what time the defendant infringed the copyright.” Kelly v. L.L. Cool J., 145
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`F.R.D. 32, 36 (S.D.N.Y. 1992), aff’d, 23 F.3d 398 (2d Cir. 1994); see also Energy Intel. Grp. Inc.
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`v. Jeffries, LLC, 101 F. Supp. 3d 332, 338 (S.D.N.Y. 2015) (observing that the Southern District
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`of New York applies “the Kelly court’s four-prong test to determine whether a claim of copyright
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`infringement satisfies the requirements of Rule 8”); Cole v. John Wiley & Sons, 2012 WL 3133520,
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`at *11–13 (S.D.N.Y. Aug. 1, 2012) (same). Allegations of infringing acts under the fourth Kelly
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`prong must be “set out with some specificity.” Lindsay v. R.M.S. Titanic, 1999 WL 816163, at *4
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`(S.D.N.Y. Oct. 13, 1999). This does not present a “heighted pleading” standard, but is one fully
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`embraced under Federal Rule of Civil Procedure 8, which mandates that a plaintiff provide a “short
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`and plain statement of the claim” in his complaint. Fed. R. Civ. P. 8(a)(2). Because “to survive a
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`motion to dismiss, a plaintiff’s facts must give rise to a plausible narrative supporting his claim,”
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`Warren v. John Wiley & Sons, Inc., 952 F. Supp. 2d 610, 615 (S.D.N.Y. 2013), a complaint in
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`copyright infringement actions must do more than simply “rest on bare-bones allegations that
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`infringement occurred,” Jacobs v. Carnival Corp., 2009 WL 856637, at *4 (S.D.N.Y. Mar. 25,
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`2009).
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`The parties do not dispute that Plaintiffs properly pleaded facts in the Complaint satisfying
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`the first three prongs of the Kelly analysis. First, the Complaint identifies U.S. Copyright
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`Registration Numbers VA 1-971-441, VA 2-293-81, VA 1-847-129, VA 1-861-878, and VA 1-
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`791-176 as the specific protected lace designs that the Defendants purportedly infringed, and
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`further includes a detailed chart displaying these copyrighted lace designs alongside images of
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`Defendants’ purported infringement. Compl. ¶¶ 16, 32. Second, Plaintiffs allege ownership of
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`those design copyrights, as well as, third, that they were properly registered prior to the
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`commencement of this action, as required by the statute. See Compl., Ex. A; see also Exceller
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`Software Corp. v. Pearson Educ., Inc., 2010 WL 4486944, at *6 (S.D.N.Y. Nov. 9, 2010) (“The
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`Amended Complaint alleges that Exceller owns and has registered the source code []. This is
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`sufficient to satisfy the first three [] requirements.”).
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`Defendants argue in their motion to dismiss, however, that the Complaint fails to allege
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`copyright infringement with sufficient particularity to satisfy the fourth Kelly prong, which
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`requires that Plaintiffs identify “by what acts during what time the defendant infringed the
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`copyright[s]” at issue. Kelly, 145 F.R.D. at 36. The Court disagrees. Here, the Complaint includes
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`a detailed table with “close-up portions of what appears to be nine different products”
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`manufactured and sold by Defendants beside Plaintiffs’ copyrighted lace designs. Compl. ¶ 32.
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`And as to Defendants’ insistence that this table leaves them unable to identify their own
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`purportedly infringing products, the Complaint further directs to an attached Exhibit E, which
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`includes Defendants’ own product web pages listing the specific product names—used in
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`commerce by Defendants—for each of the allegedly infringing products. See Compl., Ex. E1
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`(showing “ASOS DESIGN Curve Rosie lace underwired bodysuit in red,” “ASOS DESIGN soft
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`mini skater dress in floral print with eyelash lace,” and “ASOS DESIGN long sleeve pencil dress
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`in lace with geo lace trims”). Defendants bizarre insistence that they are “left only to guess in
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`order to identify the allegedly infringing products,” Mot. at 7, despite this wealth of information
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`in the Complaint is therefore unreasonable in the Court’s view. Any grievance that Defendants’
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`own product names as advertised to consumers are too general for their counsel to be put on notice
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`by this detailed Complaint—which includes website screenshots and product receipts—has
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`nothing to do with whether Plaintiffs have adequately stated claims for which relief can be granted.
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`At bottom, in order to satisfy the fourth Kelly “requirement, the complaint ‘need not specify
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`which copyright is infringed by which act,’ but it must ‘contain some factual allegations to narrow
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`the infringing acts beyond broad conclusory statements of infringement.’” Hartmann v.
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`Amazon.com, Inc., 2021 WL 3683510, at *5 (S.D.N.Y. Aug. 19, 2021) (quoting PalmerKane LLC
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`v. Scholastic Corp., 2013 WL 709276, at *3 (S.D.N.Y. Feb. 27, 2013)). And here, the Complaint
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`goes considerably further than is required as a matter of law with its detailed copyright-to-alleged-
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`infringement table and its attached exhibits. See also Maverick Recording Co. v. Goldshteyn, 2006
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`WL 2166870, at *3 (E.D.N.Y. July 31, 2006) (observing that a “plaintiff need not provide a
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`description of the individual instances or exact times of infringement” so long as a complaint
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`generally “describe[s] how the defendant violated the copyright,” and collecting cases).
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`Accordingly, Defendants’ motion to the dismiss the Complaint for failing to meet the Kelly
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`pleading requirements for a copyright infringement claim is denied.
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`II.
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` The New York DPA Claim is Preempted by Federal Law
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`Defendants separately argue that the Complaint’s claim for misleading and deceptive
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`practices in violation of New York’s DPA should be dismissed. For the reasons set forth below,
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`the Court agrees, as the claim is preempted by the Copyright Act of 1976, 17 U.S.C. § 101, et seq.
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`This case is similar to Adina’s Jewels, Inc. v. Shashi, Inc., where, as here, the plaintiff
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`brought claims both for copyright infringement and violation of New York’s DPA rooted in the
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`defendant’s alleged copying of the plaintiff’s jewelry designs. 442 F. Supp. 3d 766, 770 (S.D.N.Y.
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`2020). The judge there held that the DPA claim was preempted by the Copyright Act because the
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`harm alleged arose solely out of the defendant’s purported copying of the plaintiff’s protected
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`designs—there were no allegations, in other words, which were separate and distinct from a
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`textbook claim for copyright infringement. Id. at 773. DPA claims meant to “target alleged harm
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`arising out of a defendant’s copyrightable material,” the court concluded, were preempted by
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`federal copyright law. Id.
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`Plaintiffs’ reliance upon Twentieth Century Fox Film Corp. v. Marvel Enters., Inc., 155 F.
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`Supp. 2d 1 (S.D.N.Y. 2001), and U-Neek, Inc. v. Wal-Mart Stores, Inc., 147 F. Supp. 2d 15
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`(S.D.N.Y. 2001), in their effort to combat the federal preemption argument is misguided. To start,
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`Twentieth Century Fox concerned whether a New York common law claim for unfair competition
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`was preempted by the Copyright Act, not one brought under the DPA. 155 F. Supp. 2d at 24–25.
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`Moreover, the unfair competition claim was nevertheless dismissed in that case, as the court
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`concluded that the plaintiff did not allege “that defendants’ actions caused public harm.” Id. at 26.
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`And while U-Neek did conclude that a separate element of “intentional deception” for causes of
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`action under the DPA meant that such a claim was not preempted by the Copyright Act, courts in
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`the Second Circuit have long since abandoned that view, and have since uniformly held that DPA
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`claims are so preempted. See, e.g., Lieb v. Korangy Publishing, Inc., 2022 WL 1124850, at *15
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`(E.D.N.Y. Apr. 15, 2022) (where a DPA claim “alleges nothing more than harms arising from
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`alleged copyright infringement, such claim is properly dismissed as preempted”); Aaberg v.
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`Francesca’s Collections, Inc., 2018 WL 1583037, at *9 (S.D.N.Y. Mar. 27, 2018) (holding a claim
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`under the DPA is preempted by the Copyright Act where a plaintiff makes conclusory allegations
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`that consumers were harmed or confused, and the harm complained of arises out of copyright
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`infringement); Diamond Collection LLC v. Underwraps Costume Corporation, 2018 WL
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`1832928, at *8 (E.D.N.Y. Apr. 16, 2018) (same); Adina’s Jewels, 442 F. Supp. 3d at 773 (same);
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`Saint-Amour v. Richmond Organization, Inc., 388 F. Supp. 3d 277, 291 (S.D.N.Y. 2019) (finding
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`that where a DPA claim alleges defendants are “deceiving the public by claiming to own a
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`copyright,” it is preempted as it “seeks to vindicate a right equivalent to the exclusive rights
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`protected by the Copyright Act”); Bubble Genius LLC v. Smith, 239 F. Supp. 3d 586, 604–05
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`(E.D.N.Y. 2017) (same); Eyal R.D. Corp. v. Jewelex New York, Ltd., F. Supp. 2d 441, 449
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`(S.D.N.Y. 2011) (same).
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`Plaintiffs’ claim under the DPA here is no more than a copyright infringement claim
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`minimally refashioned with the addition of conclusory allegations that the infringing conduct was
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`directed at consumers. See Compl. ¶ 55 (“Defendants’ conduct is directed at consumers and injures
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`the public interest.”). As in Saint-Amour, where the complaint alleged only that the defendants
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`were “deceiving the public by claiming to own a copyright” and the Court concluded that “[s]uch
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`a claim is not qualitatively different than the” claim under the Copyright Act, 388 F. Supp. 3d at
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`291, the DPA claim here is preempted. See also Aaberg, 2018 WL 1583037, at *9 (finding, where
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`the plaintiffs “offer[ed] no examples of any consumers who were confused,” and “the gravamen
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`of the complaint [was] harm to another business,” that the plaintiffs failed to allege public harm
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`giving rise to a DPA claim). Accordingly, the motion to dismiss the DPA claim as preempted by
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`the Copyright Act is granted, albeit without prejudice to amendment.
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`CONCLUSION
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`For the foregoing reasons, the motion to dismiss is denied with respect to the copyright
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`infringement claims and granted with respect to the claims brought under the DPA. Should
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`Plaintiffs wish to amend the Complaint, they may do so within thirty (30) days, provided they have
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`a good faith basis for doing so. The Clerk of Court is respectfully directed to terminate the motion
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`pending at Dkt. 25.
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`SO ORDERED.
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`Dated:
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` May 16, 2023
` New York, New York
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`________________________________
`Hon. Ronnie Abrams
`United States District Judge
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