Case 2:06-cv-02225-MKB-AKT Document 151 Filed 01/14/10 Page 1 of 18 PageID #: 2196
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`_____________________
`
`No 06-CV-2225 (JFB)(AKT)
`_____________________
`
`FRAGRANCENET.COM, INC.,
`
`Plaintiff,
`
`VERSUS
`
`FRAGRANCEX.COM, INC.,
`
`Defendant.
`
`___________________
`
`MEMORANDUM AND ORDER
`January 14, 2010
`___________________
`
`JOSEPH F. BIANCO, District Judge:
`
`Inc.
`Plaintiff FragranceNet.com,
`(hereinafter “plaintiff” or “FragranceNet”)
`brings
`this action against defendant
`FragranceX.com,
`Inc.
`(hereinafter
`“defendant” or “FragranceX”) alleging that
`defendant’s use of plaintiff’s photographs and
`trademarks constitutes copyright
`infringement,
`trademark
`infringement,
`trademark dilution, violation of New York
`General Business Law § 133, state law
`dilution,
`injury
`to business
`reputation,
`common
`law unfair competition and
`misappropriation, passing off, and unjust
`enrichment.
`
`Presently before the Court is defendant’s
`motion to dismiss the complaint under Rule
`12(b)(6) of the Federal Rules of Civil
`
`Procedure. Specifically, defendant contends
`(1) that FragranceNet cannot bring a claim for
`copyright infringement against defendant
`because the photographic images of products
`on FragranceNet’s website are not entitled to
`copyright protection, and (2) FragranceNet
`cannot bring trademark-related claims against
`defendant because FragranceNet does not
`have enforceable rights to the trademarks
`“ F R A G R A N C E N E T ”
`a n d
`“FRAGRANCENET.COM.” For the reasons
`set forth below, the Court concludes that
`plaintiff has asserted plausible claims under
`the copyright and trademark laws that survive
`a motion
`to dismiss.
` Accordingly,
`defendant’s motion is denied in its entirety.
`
`

`
`Case 2:06-cv-02225-MKB-AKT Document 151 Filed 01/14/10 Page 2 of 18 PageID #: 2197
`
`I. BACKGROUND
`
`A. Facts
`
`For purposes of this motion to dismiss, the
`Court has taken the facts described below
`from the plaintiff’s third amended complaint
`(“Compl.”). These facts are not findings of
`fact by the Court but rather are assumed to be
`true for the purpose of deciding this motion
`and are construed in a light most favorable to
`plaintiffs, the non-moving parties. See
`LaFaro v. N.Y. Cardiothoracic Group, 570
`F.3d 471, 475 (2d Cir. 2009).
`
`Plaintiff FragranceNet is a Delaware
`corporation with
`its principal place of
`business in Hauppauge, New York. (Compl.
`¶ 6.) Since January 1997, plaintiff has owned
`and operated an online retail store that sells
`perfume and
`related products at
`www.fragrancenet.com. (Id. ¶¶ 2, 11.)
`Defendant FragranceX
`is a New York
`corporation with
`its principal place of
`business in Long Island City, New York. (Id.
`¶ 7.) Defendant sells perfume online at its
`website, www.fragrancex.com. (Id. ¶ 16.)
`The instant action arises out of defendant’s
`alleged misappropriation and use of more than
`nine- hundred copyrighted images from
`plaintiff’s website and defendant’s alleged use
`of plaintiff’s
`trademarks
`in defendant’s
`website’s metatags and in connection with
`Google’s AdWords program. (Id. ¶ 2.)
`Plaintiff seeks preliminary and permanent
`injunctive relief, as well as compensatory and
`punitive damages based on defendant’s
`actions. (Id. ¶ 4.)
`
`“background, arrangement, lighting, use of
`shadow, angle, and selection of products
`within each line to be included within the
`images are among the original elements
` (Id.)
`contributing
`to
`the [i]mages.”
`FragranceNet owns and has owned the
`copyrights to these images at all relevant
`times. (Id. ¶¶ 14-15.) The complaint alleges
`that defendant copied more than nine hundred
`of
`these copyrighted
`images
`from
`FragranceNet’s website, and posted them on
`its own website. (Id. ¶ 16.) Plaintiff attaches
`to its complaint screenshots depicting its own
`images
`side-by-side with copies of
`defendant’s allegedly infringing images.
`(Compl. Ex. B.) According to the complaint,
`FragranceNet
`informed defendant
`that
`defendant’s actions were
`infringing
`FragranceNet’s copyrights, and FragranceNet
`sent several cease-and-desist
`letters
`to
`defendant, but defendant did not discontinue
`its use of the images. (Compl. ¶¶ 17, 18.)
`Accordingly, plaintiff’s complaint contains a
`cause of action for copyright infringement.
`
`Plaintiff also owns the registrations for the
`trademarks FRAGRANCENET and
`FRAGRANCENET.COM, and plaintiff has
`used those marks in connection with its sale
`and marketing of perfume and related
`products online since January 27, 1997. (Id.
`¶¶ 31, 34.) The marks were first registered by
`Telescents, Inc., a subsidiary of FragranceNet.
`These marks were assigned to plaintiff on
`May 28, 2009. (Def.’s Brief Ex. H.) The
`assignment included the “right to commence
`an action for past or future infringements.”
`(Id.)
`
`According to the complaint, plaintiff has
`created hundreds of images of the products
`that it offers for sale, which are displayed on
`its website so that consumers can see visual
`images of the products. (Id. ¶¶ 12, 13.) The
`
`The complaint alleges that plaintiff has
`marketed and promoted its services under
`these marks in national magazines, newspaper
`inserts, direct mailings, and other advertising
`venues. (Compl. ¶¶ 32, 35.) Plaintiff has sold
`
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`

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`Case 2:06-cv-02225-MKB-AKT Document 151 Filed 01/14/10 Page 3 of 18 PageID #: 2198
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`millions of dollars of merchandise through its
`website, which accepts orders directly from
`customers. (Id. ¶ 33.) Over the past twelve
`years of operation, plaintiff has established a
`reputation for high-quality retail sales and
`customer services under its marks. (Id. ¶ 37.)
`There is customer recognition of these marks,
`and the marks have acquired a substantial
`level of goodwill. (Id.)
`
`The complaint alleges that defendant
`i n s e r t e d p l a i n t i f f ’ s
`t r a d e ma r ks,
`“ F R A G R A N C E N E T ”
`a n d
`“FRAGRANCENET.COM” into the metatags
`on defendant’s website. (Id. ¶ 21.) This
`action causes defendant’s website to appear as
`a search result when a user searches plaintiff’s
`trademarks in an internet search engine. (Id.)
`The complaint also alleges that defendant has
`bid on, purchased, and used certain keywords,
`including plaintiff’s trademarks, in Google’s
`AdWords program, with the knowledge that
`doing so would result in defendant’s links
`appearing as “Sponsored Links” when a
`consumer
`types “FRAGRANCENET,”
`“FRAGRANCENET.COM,” or other
`variations of FragranceNet’s mark into an
`internet keyword search on Google. (Id. ¶
`22.) The AdWords Program by Google
`allows advertisers
`to bid on particular
`keywords that apply to their websites. (Id.)
`Advertisers may specify whether keywords
`should be applied as a “broad match,” “phrase
`match,” “exact match,” or “negative match.”
`When an advertiser bids on a “broad match,”
`its link will appear when a search is conducted
`for that keyword, any of its plural forms,
`synonyms, or phrases similar to the word. (Id.
`¶ 24.) When an advertiser bids on a “phrase
`match,” its link will appear when a user
`searches for a particular phrase, even if that
`phrase is used in combination with other
`words. (Id. ¶ 25.) An “exact match” will
`display the advertiser’s link only when the
`
`3
`
`exact phrase bid on is searched on Google.
`(Id. ¶ 26.) A “negative match” bid allows an
`advertiser to ensure that its link does not
`appear when certain terms are searched. (Id.
`¶ 27.) Sponsored Links appear on the top and
`right side of the search results screen. (Id. ¶
`22.)
`
`According to the complaint, defendant bid
`on certain keywords, including plaintiff’s
`trademarks, to cause its links to appear as
`“Sponsored Links” on Google when a search
`for “FRAGRANCENET” or other variations
`of plaintiff’s mark are performed. (Id. ¶¶ 22,
`28.) As a result, defendant’s links appear on
`the top and right side of the search results
`screen when searches
`for plaintiff’s
`trademarks are performed. (Id.)
`
`that plaintiff
`The complaint alleges
`demanded that defendant discontinue all
`further use of its marks and asked that
`defendant bid on plaintiff’s mark as a
`“negative match” to prevent defendant’s links
`from appearing as results when plaintiff’s
`marks were searched on Google. (Id. ¶ 29.)
`According to the complaint, defendant knew
`that its use of plaintiff’s trademarks in the
`AdWords program would result in consumers
`being “misdirected” to defendant’s website
`instead of plaintiff’s website, but defendant
`continued
`to use plaintiff’s
`trademarks
` (Id. ¶ 39.)
`without permission.
` The
`complaint further alleges that defendant
`reasonably expected to receive revenue from
`interstate or international commerce from this
`use of plaintiff’s trademarks. (Id. ¶ 40.) The
`complaint claims that this practice has caused
`confusion among consumers and has deprived
`FragranceNet of opportunities to expand its
`goodwill; the complaint alleges that plaintiff
`has suffered irreparable harm as a result of
`defendant’s use of its trademarks. (Id. ¶¶ 41-
`46.)
`
`

`
`Case 2:06-cv-02225-MKB-AKT Document 151 Filed 01/14/10 Page 4 of 18 PageID #: 2199
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`B. Procedural History
`
`On July 31, 2009, plaintiff filed its third
`amended complaint against defendant in this
`action. By letter dated August 11, 2009,
`defendant indicated its intention to move for
`dismissal of the complaint for failure to state
`a cause of action upon which relief can be
`granted. A pre-motion conference was held
`on August 20, 2009. On September 21, 2009,
`defendant filed its motion. Plaintiff filed
`opposition papers on October 21, 2009, and
`defendant filed its reply on November 9,
`2009. Oral argument was heard on December
`11, 2009.
` Defendant
`submitted a
`supplemental letter brief on December 23,
`2009. Plaintiff responded on January 11,
`2010. The Court has fully considered the
`submissions of the parties.
`
`II. STANDARD OF REVIEW
`
`In reviewing a motion to dismiss pursuant
`to Federal Rule of Civil Procedure 12(b)(6),
`the Court must accept the factual allegations
`set forth in the complaint as true and draw all
`reasonable inferences in favor of the plaintiff.
`See Cleveland v. Caplaw Enters., 448 F.3d
`518, 521 (2d Cir. 2006); Nechis v. Oxford
`Health Plans, Inc., 421 F.3d 96, 100 (2d Cir.
`2005). The plaintiff must satisfy “a flexible
`‘plausibility standard.’” Iqbal v. Hasty, 490
`F.3d 143, 157 (2d Cir. 2007), rev’d on other
`grounds sub nom. Ashcroft v. Iqbal, --- U.S.
`----, 129 S. Ct. 1937, 173 L. Ed. 2d 868
`(2009). “[O]nce a claim has been stated
`adequately, it may be supported by showing
`any set of facts consistent with the allegations
`in the complaint.” Bell Atl. Corp. v. Twombly,
`550 U.S. 544, 563 (2007). The Court,
`therefore, does not require “heightened fact
`pleading of specifics, but only enough facts to
`state a claim to relief that is plausible on its
`face.” Id. at 570.
`
`4
`
`The Supreme Court recently clarified the
`appropriate pleading standard in Ashcroft v.
`Iqbal, setting forth a two-pronged approach
`for courts deciding a motion to dismiss. ---
`U.S. ----, 129 S. Ct. 1937, 173 L. Ed. 2d 868
`(2009). The Court instructed district courts to
`first “identify[ ] pleadings that, because they
`are no more than conclusions, are not entitled
`to the assumption of truth.” 129 S. Ct. at
`1950. Though “legal conclusions can provide
`the framework of a complaint, they must be
`supported by factual allegations.” Id.
`Second, if a complaint contains “well-pleaded
`factual allegations[,] a court should assume
`their veracity and then determine whether they
`plausibly give rise to an entitlement to relief.”
`Id. “A claim has facial plausibility when the
`plaintiff pleads factual content that allows the
`court to draw the reasonable inference that the
`defendant is liable for the misconduct alleged.
`The plausibility standard is not akin to a
`‘probability requirement,’ but it asks for more
`than a sheer possibility that a defendant has
`acted unlawfully.” Id. at 1949 (quoting and
`citing Twombly, 550 U.S. at 556-57) (internal
`citations omitted).
`
`The Court notes that in adjudicating this
`motion, it is entitled to consider: “(1) facts
`alleged in the complaint and documents
`attached to it or incorporated in it by
`reference, (2) documents ‘integral’ to the
`complaint and relied upon in it, even if not
`attached or incorporated by reference, (3)
`documents or
`information contained
`in
`defendant’s motion papers if plaintiff has
`knowledge or possession of the material and
`relied on it in framing the complaint, (4)
`public disclosure documents required by law
`to be, and that have been, filed with the
`Securities and Exchange Commission, and (5)
`facts of which judicial notice may properly be
`taken under Rule 201 of the Federal Rules of
`Evidence.” In re Merrill Lynch & Co., 273 F.
`
`

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`Case 2:06-cv-02225-MKB-AKT Document 151 Filed 01/14/10 Page 5 of 18 PageID #: 2200
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`Supp. 2d 351, 356-57 (S.D.N.Y. 2003)
`(internal citations omitted), aff'd in part and
`vacated in part on other grounds sub nom.,
`Dabit v. Merrill Lynch, Pierce, Fenner &
`Smith, Inc., 395 F.3d 25 (2d Cir. 2005),
`vacated on other grounds, 547 U.S. 71
`(2006); see also Cortec Indus., Inc. v. Sum
`Holding L.P., 949 F.2d 42, 48 (2d Cir. 1991)
`(“[T]he district court . . . could have viewed
`[the documents] on the motion to dismiss
`because there was undisputed notice to
`plaintiffs of their contents and they were
`integral to plaintiffs’ claim”); Brodeur v. City
`of New York, No. 04 Civ. 1859, 2005 U.S.
`Dist. LEXIS 10865, at *9-*10, 2005 WL
`1139908 (E.D.N.Y. 2005) (stating court could
`consider documents within the public domain
`on a Rule 12(b)(6) motion to dismiss).
`
`III. DISCUSSION
`
`A. Copyright Infringement
`
`Defendant argues that the claim for
`copyright infringement in plaintiff’s third
`amended complaint should be dismissed on
`two grounds: (1) the images at issue do not
`possess the requisite level of originality to be
`copyrightable as a matter of law; and (2) the
`images at issue are nothing but photographs of
`third-parties’ intellectual property without any
`additional creative elements and, accordingly,
`are not copyrightable. The Court addresses
`each of these arguments in turn.
`
`1. Originality of the Copyrighted Images
`
`Defendant first argues that plaintiff’s
`images do not possess the requisite “creative
`or expressive elements” required to be
`copyrightable as a matter of law. Defendant
`does not argue that plaintiff’s pleadings are
`insufficient on their face; rather, defendant
`argues
`that plaintiff does not have a
`
`5
`
`protectable copyright and, therefore, cannot
`bring the copyright claim alleged in the
`complaint against defendant in the first place.
`For the reasons set forth below, the Court is
`unable to rule on the originality of the
`copyrighted images at this juncture and finds
`that plaintiff has adequately stated a plausible
`claim for copyright infringement that survives
`a motion to dismiss.
`
`In order to bring a claim for copyright
`infringement, a plaintiff must establish that
`(1) plaintiff owns a valid copyright and (2)
`defendant copied “constituent elements of the
`work that are original.” Boisson v. Banian,
`Ltd., 273 F.3d 262, 267 (2d Cir. 2001)
`(quoting Feist Publ’ns, Inc. v. Rural Tel. Serv.
`Co., 499 U.S. 340, 361 (1991)); Oriental Art
`Printing, Inc. v. Goldstar Printing Corp., 175
`F. Supp. 2d 542, 545 (S.D.N.Y. 2001).
`Defendant contends that plaintiff does not
`own a valid copyright, as required by the first
`element of copyright infringement.
`
`In order to receive protection under the
`copyright laws, a work must be original.
`Boisson, 273 F.3d at 268; see SHL Imaging,
`Inc. v. Artisan House, Inc., 117 F. Supp. 2d
`301, 309 (S.D.N.Y. 2000) (“The Supreme
`Court in Feist made clear that the originality
`requirement is constitutional, and that no
`work is per se protectible.”). The entirety of
`a work need not be original to obtain
`copyright protection, but copyright protection
`will extend only to those elements of the work
`that are original. Feist Publ’ns, 499 U.S. at
`348-49, 353. The originality requirement
`does not demand that the work for which
`copyright protection is sought be either novel
`or unique; rather, originality requires “a work
`independently created by its author, one not
`copied from pre-existing works, and a work
`that comes from the exercise of the creative
`powers of the author’s mind, in other words,
`
`

`
`Case 2:06-cv-02225-MKB-AKT Document 151 Filed 01/14/10 Page 6 of 18 PageID #: 2201
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`‘the fruits of [the author’s] intellectual
`labor.’” Boisson, 273 F.3d at 268 (quoting
`and citing In re Trade-Mark Cases, 100 U.S.
`82, 94 (1879)); see also Feist, 499 U.S. at 346
`(“Originality does not signify novelty; a work
`may be original even though it closely
`resembles other works . . . .”); id. at 348
`(“[C]hoices as to selection and arrangement,
`so long as they are made independently by the
`compiler and entail a minimal degree of
`creativity, are sufficiently original
`that
`Congress may protect such compilations
`through the copyright laws.”). The threshold
`requirement for originality is “modest.”
`Bleistein v. Donaldson Lithographing Co.,
`188 U.S. 239, 250 (1903) (“Personality
`always contains something unique.
`It
`expresses its singularity even in handwriting,
`and a very modest grade of art has in it
`something irreducible, which is one man’s
`alone.”); Vargas v. Pfizer, Inc., 418 F. Supp.
`2d 369, 372 (S.D.N.Y. 2005) (“It is well
`established that the originality requirement for
`obtaining a copyright is an extremely low
`threshold, unlike the novelty requirement for
`securing a patent. Sufficient originality for
`copyright purposes amounts to little more than
`a prohibition of actual copying.” (quoting
`Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d
`Cir. 1988))). The Supreme Court has stated:
`
`To be sure, the requisite level of
`creativity is extremely low; even a
`slight amount will suffice. The vast
`majority of works make the grade
`quite easily, as they possess some
`creative spark, no matter how crude,
`humble or obvious it might be.
`Originality does not signify novelty; a
`work may be original even though it
`closely resembles other works so long
`as the similarity is fortuitous, not the
`result of copying. To illustrate,
`assume that two poets, each ignorant
`
`6
`
`of the other, compose identical poems.
`Neither work is novel, yet both are
`original and, hence, copyrightable.”
`
`Feist, 499 U.S. at 345-46 (internal quotations
`and citations omitted).
`
`The Copyright Act extends copyright
`protection to pictorial and graphic works. 17
`U.S.C. § 102(a)(5). Accordingly, pictorial
`and graphic works may be copyrighted as
`long as they possess the requisite originality
`for copyrightable works. “Elements of
`originality in a photograph may include
`posing the subjects, lighting, angle, selection
`of film and camera, evoking the desired
`expression, and almost any other variant
`involved.” Rogers v. Koons, 960 F.2d 301,
`307 (2d Cir. 1992) (“Rogers’ inventive efforts
`in posing the group for the photograph, taking
`the picture, and printing ‘Puppies’ suffices to
`meet the original work of art criteria.”); see
`SHL Imaging, 117 F. Supp. 2d at 310 (“The
`technical aspects of photography imbue the
`medium with almost
`limitless creative
`potential. For instance, the selection of a
`camera format governs the film size and
`ultimately the clarity of the negative. Lenses
`affect the perspective. Film can produce an
`array of visual effects. Selection of a fast
`shutter speed freezes motion while a slow
`speed blurs it. Filters alter color, brightness,
`focus and reflection. Even the strength of the
`developing solution can alter the grain of the
`negative.”); see also Kaplan v. Stock Market
`Photo Agency, 133 F. Supp. 2d 317, 323
`(S.D.N.Y. 2001).
`
`The Copyright Act provides that a
`“certificate of [copyright] registration made
`before or within five years after first
`publication of the work shall constitute prima
`facie evidence of
`the validity of
`the
`
`

`
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` 17 U.S.C. § 410(c).1
`copyright.”
`Accordingly, a registered copyright for an
`image serves as prima facie evidence of both
`the validity of
`the copyright and
`the
`originality of the work. Boisson, 273 F.3d at
`268 (citing Gaste v. Kaiserman, 863 F.2d
`1061, 1066 (2d Cir. 1988) (“We also note that
`on the issue of originality, as compared to the
`issue of compliance with statutory formalities,
`it is even clearer that copyright registration
`created a presumption of validity.”)). Because
`plaintiff registered its images, defendant bears
`the burden of establishing lack of originality.
`See Vargas, 418 F. Supp. 2d at 372.
`
`Defendant’s arguments that plaintiff’s
`copyrighted images lack sufficient originality
`to be copyrightable are not persuasive at this
`juncture. First, the copyright registration of
`each of plaintiff’s images affords those
`images a presumption of originality. To rebut
`that presumption, defendant must present
`evidence
`that clearly demonstrates
`that
`plaintiff’s images lack originality. However,
`this determination of whether plaintiff’s
`images are sufficiently original
`to be
`copyrighted
`is a factual
`issue
`that
`is
`inappropriate for determination on a motion to
`dismiss given the allegations in this case. Id.
`(“Typically, ‘[w]hen the originality of a
`copyrighted work is at issue, it becomes a
`question of fact for the jury to resolve.’”
`(quoting Tin Pan Apple, Inc. v. Miller
`Brewing Co., No. 88 Civ. 4085(CSH), 1994
`WL 62360, at *4 (S.D.N.Y. Feb. 24, 1994)));
`
`1 The second element, actual copying of the
`plaintiff’s work, is not at issue at this stage.
`Plaintiff alleges that defendant copied the images
`at issue off plaintiff’s website. Defendant does
`not deny copying the photographs but argues that
`it may legally copy those images because they do
`not possess the requisite originality to be
`copyrightable as a matter of law.
`
`7
`
`see Kregos v. Assoc. Press, 937 F.2d 700, 709
`(2d Cir. 1991) (“If Kregos prevails at trial on
`the factual issues of originality and creativity,
`he will be entitled to protection only against
`infringement of the protectable features of his
`form.”); Nicholls v. Tufenkian Import/ Export
`Ventures, Inc., No. 04 Civ. 2110 (WHP), 2004
`WL 1399187, at *2 (S.D.N.Y. June 23, 2004)
`(“Defendants’ argument that the ‘Prado’
`design lacks originality raises factual issues
`that are best left for trial.”). Although courts
`may resolve this issue as a matter of law in
`certain circumstances, that determination is
`generally made on a motion for summary
`judgment, after the parties have conducted
`discovery and had the opportunity to submit
`evidence on the issue. See Twentieth Century
`Fox Film Corp. v. Marvel Enters., Inc., 220 F.
`Supp. 2d 289, 298 n.11 (S.D.N.Y. 2002)
`(noting, on a motion for summary judgment,
`that “although the question of originality can
`be a question of fact for the jury, it is not
`necessarily so. When a work clearly contains
`sufficient originality to be copyrightable,
`courts may decide the issue as a matter of
`law.” (citations omitted)).
`
`As discussed above, the requirements for
`originality are “modest.” Weissmann v.
`Freeman, 868 F.2d 1313, 1321 (2d Cir. 1989).
`Here, the plaintiff has alleged sufficient facts
`to
`support
`its claim
`for copyright
`infringement. Plaintiff’s complaint alleges
`that “without
`[plaintiff’s] authorization,
`[d]efendant copied more than nine hundred
`(900) copyrighted [i]mages from [plaintiff’s]
`Web site and posted them on the Web site of
`its competing online
`fragrance store,
`www.fragranceX.com.” (Compl. ¶ 16.)
`Plaintiff also alleges that it owns copyright
`registrations for these images. (Compl. ¶¶ 14-
`15.) Plaintiff also attached to its complaint
`screenshots that show its own images side-by-
`side with defendant’s allegedly infringing
`
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`images. (Compl. Ex. B.) Plaintiff has further
`alleged that its copyrighted images were
`“independently created” by its photographer,
`“as opposed to copied from other works.” See
`Feist, 499 U.S. at 345.
`
`Although plaintiff submitted a declaration
`from its photographer regarding the process
`involved in creating these images, this
`declaration may not be considered by the
`Court on a motion to dismiss. See, e.g.,
`Coggins v. County of Nassau, No.
`07-CV-3624 (JFB)(AKT), 2008 WL 2522501,
`at *6-7
`(E.D.N.Y. June 20, 2008).
`Nonetheless, in its complaint, plaintiff has
`alleged that the “background, arrangement,
`lighting, use of shadow, angle, and selection
`of products within each line to be included
`within the images are among the original
`elements contributing to the [i]mages.”
`(Compl. ¶ 12.)
` The
`totality of
`the
`photographer’s lighting selection, camera
`angle, lens and filter selection may be
`sufficient to provide plaintiff’s images with
`the requisite originality for protectable
`images. See SHL Imaging, 117 F. Supp. 2d at
`311 (“What makes plaintiff’s photographs
`original is the totality of the precise lighting
`selection, angle of the camera, lens and filter
`selection.”); Eastern Am. Trio Prods., Inc. v.
`Tang Elec. Corp., 97 F. Supp. 2d 395, 417-18
`(S.D.N.Y. 2000) (when a photographer
`“personally supervised the lay-out of the items
`that were photographed, positioned them in
`what she thought an attractive manner,
`selected particular angles and lighting, and in
`some cases even had the images enhanced by
`a computer to achieve the desired outcome . .
`. [t]he creative elements asserted [satisfied]
`the minimal originality requirement for
`copyright.”).
` These allegations state a
`plausible claim for copyright infringement
`and are sufficient to survive a motion to
`dismiss.
`
`8
`
`Defendant cites Oriental Art Printing, Inc.
`v. Goldstar Printing Corp., 175 F. Supp. 2d
`542 (S.D.N.Y. 2001) in support of its claim
`that plaintiff’s pictures of perfume bottles lack
`originality. That case held that pictures of
`Chinese food dishes taken for a menu lacked
`sufficient artistic quality to be copyrightable.
`Id. at 546. However, unlike in the instant
`case, in which the defendant brings its claim
`based on the pleadings, Oriental Art involved
`a motion to dismiss filed concurrently with a
`motion
`for a preliminary
`injunction;
`accordingly, the court in Oriental Art had an
`evidentiary record before it in making its
` Id. at 544.
`determination.
` Although
`defendant argues that the court in Oriental Art
`stated that “[i]n rendering the decision on the
`motion to dismiss, the Court declines to
`consider the affidavits and exhibits submitted
`by the parties on the pending motions,” id. at
`550, all portions of defendant’s brief that cite
`to and quote from Oriental Art are taken from
`the portion of the opinion discussing the
`motion for preliminary injunction. That
`portion of the opinion cites extensively to
`affidavits, declarations, and exhibits attached
`to the parties’ moving papers. Id. at 546-48.
`Furthermore, in support of its finding that the
`photographs did not have the requisite
`originality required for copyrighted material,
`the court in Oriental Art noted that: “The
`photographs lack any artistic quality, and
`neither the nature and content of such
`photographs, nor plaintiffs’ description of
`their preparation, give the [c]ourt any reason
`to believe that any ‘creative spark’ was
`required to produce them.” Id. at 546. The
`court in Oriental Art further stated: “plaintiffs
`fail to describe how the photographs were
`taken, or how they were incorporated into the
`copyrighted design as a whole. . . . While
`[plaintiff’s president] states that he worked
`with a photographer on the ‘lighting’ and
`‘angles,’ he provides no description of either
`
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`
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`
`the lighting or angles employed, or any
`desired expression.” Id. at 547. Thus, the
`Oriental Art court acknowledged that the
`lighting and angles employed by
`the
`photographer are facts to be considered in the
`determination of an image’s originality. As
`discussed supra, these facts are improper for
`consideration on a motion to dismiss.
`Another distinction between Oriental Art and
`the instant case is that the plaintiffs in
`Oriental Art did not have
`registered
`copyrights in the images at issue but rather
`held a copyright registration only in the
`overall design in which the photographs were
`arranged. Id. at 548 (“Plaintiffs did not
`copyright the photographs themselves, but a
`‘graphic design’ for menus in which they
`appear, which contains arrangements of
`dishes, and in some cases, associated artwork.
`Their copyright
`registration certificate
`constitutes prima facie evidence of a valid
`copyright in such design.”). FragranceNet
`holds registered copyrights for the images at
`issue here
`themselves.
` Thus,
`the
`circumstances in Oriental Art are clearly
`distinguishable from the instant case.
`
`reliance on Custom
`Defendant’s
`Dynamics, LLC v. Radiantz LED Lighting,
`Inc., 535 F. Supp. 2d 542 (E.D.N.C. 2008), a
`case from the Eastern District of North
`Carolina, is similarly flawed. That case held
`that photographs of “aftermarket motorcycle
`taillights with a neutral surface in the
`background,” which were “meant to serve the
`purely utilitarian purpose of displaying
`examples of
`[a] product
`to potential
`consumers” were not copyrightable because
`those images were merely descriptive pictures
`of a product. Id. at 549. However, that non-
`binding case involved photographs that were
`not registered. Id. Furthermore, Custom
`Dynamics was decided after a motion for a
`preliminary injunction; accordingly, there was
`
`an evidentiary record before that court at the
`time of the motion.2 At this stage, however,
`this Court
`lacks sufficient evidence
`to
`determine the originality of the images at
`issue as a matter of law and holds that
`plaintiff has alleged sufficient facts to state a
`
`2 Likewise, in Meshwerks, Inc. v. Toyota Motor
`Sales U.S.A., Inc., 528 F.3d 1258 (10th Cir. 2008),
`also cited by defendant, the court was ruling on a
`motion for summary judgment—not a motion to
` Id. at 1261.
`dismiss.
` That case also
`acknowledged
`that photographs—even
`photographs of objects—can be copyrightable: “to
`the extent a photograph reflects the photographer’s
`decisions regarding pose, positioning, background,
`lighting, shading, and the like, those elements can
`be said to ‘owe their origins’ to the photographer,
`making the photograph copyrightable, at least to
`that extent.” Id. at 1264. Accordingly, the cases
`relied on by defendant consistently acknowledge
`that the determination of a work’s originality is a
`factual one.
`
`The Meshworks court also relies on the
`reasoning in a Ninth Circuit case, Ets-Hokin v.
`Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000).
`In Ets-Hokin, the plaintiff alleged that the
`defendant had infringed on his commercial
`photographs of a Skyy-brand vodka bottle. The
`Ets-Hokin court held that although a vodka bottle
`is usually a utilitarian object that cannot be
`copyrighted, id. at 1080 (citing 17 U.S.C. § 101),
`plaintiff’s photographs of the vodka bottle were
`copyrightable to the extent the photographer had
`made specific decisions regarding the “lighting,
`shading, angle, background, and so forth . . . .” Id.
`at 1077.
`
`FragranceX’s citation to another non-binding
`case, ATC Distribution Group, Inc. v. Whatever It
`Takes Transmissions & Parts, Inc., 402 F.3d 700
`(6th Cir. 2005), is similarly inapposite because
`that case involved a motion for summary
`judgment. Id. at 702-03. Moreover, as discussed
`further infra, that case involved claims relating to
`the originality of derivative works.
`
`9
`
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`
`claim for copyright infringement.
`
`2. Photographs of Third-Parties’ Intellectual
`Property
`
`Defendant next argues that the images at
`issue in this case are per se not copyrightable
`as a matter of law because they are mere
`photographs of
`third-parties’
`intellectual
`property. Defendant argues that photographs
`of another’s
`intellectual property must
`“contain some substantial, not merely trivial
`originality.”
`
`(Def.’s Brief at 11.)
`Accordingly, defendant contends that the
`images on plaintiff’s website are “derivative
`works,” works based upon one or more
`preexisting copyrighted works, see 17 U.S.C.
`§ 101, and are subject to a higher standard of
`originality than original works.
` Thus,
`defendant asserts that the images used by
`plaintiff on its website are not sufficiently
`original to qualify as derivative works of the
`original perfume bottles and boxes
`themselves.3
`
`3 As a threshold matter, the Court notes that
`defendant has failed to assert or offer any evidence
`that the perfume bottles that are the subjects of the
`images in question are copyrighted. Moreover,
`the Court notes that courts are split on whether
`photographs of a copyrighted