Case 1:16-cv-04669-VSB Document 43 Filed 03/28/18 Page 1 of 17
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`ALPHABET INC., et al.,
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`16-CV-4669 (VSB)
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`OPINION & ORDER
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`Plaintiff,
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`Defendants.
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`NIJO MILLS,
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`Appearances:
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`Nijo Mills
`New York, New York
`Pro Se Plaintiff
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`Jason B. Mollick
`Wilson Sonsini Goodrich & Rosati, P.C.
`New York, New York
`Counsel for Defendant Alphabet Inc.
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`Jennifer Philbrick McArdle
`Satterlee Stephens LLP
`New York, New York
`Counsel for Defendant Cengage Learning Holdings II, Inc.
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`VERNON S. BRODERICK, United States District Judge:
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`Pro se Plaintiff Nijo Mills brings this action against Alphabet Inc. (“Alphabet”) and
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`Cengage Learning Holdings II, Inc. (“Cengage”) (collectively, “Defendants”), asserting claims
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`for trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1051, et seq., copyright
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`infringement in violation of the Copyright Act, 17 U.S.C. § 101, et seq., intentional and negligent
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`infliction of emotional distress, unjust enrichment, violation of the Federal Trade Commission
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`Act (the “FTC Act”), 15 U.S.C. § 41, et seq., and violation of the New York Arts and Cultural
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`3/28/2018
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`Case 1:16-cv-04669-VSB Document 43 Filed 03/28/18 Page 2 of 17
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`Affairs law (“NYACAL”). (Doc. 17.) Currently before me is Defendants’ motion to dismiss all
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`of Plaintiff’s claims. (Doc. 32.) Because Plaintiff has demonstrated no trademark rights to the
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`names “google” or “alphabet,” did not register what he claims is his logo with the United States
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`Copyright Office before filing suit, asserts claims for emotional distress and unjust enrichment
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`that are preempted by the Copyright Act, and because the FTC Act does not create a private right
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`of action and the NYACAL is inapplicable to the allegations in this case, Defendants’ motion to
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`dismiss is GRANTED.
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`Background1
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`Plaintiff asserts that on January 5, 1996, at his residence on the island of Saint Thomas in
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`the United States Virgin Islands, he decided to develop a website that would include innovative
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`features including an Internet search engine. (Am. Compl. ¶¶ 9, 12, 14.)2 After brainstorming
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`the idea for his website, Plaintiff sought to come up with a name for the product. (Id. ¶ 10.)
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`Plaintiff states that he first thought of the word “goggles” because “many people and computer
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`enthusiasts wore spectacles.” (Id.) Next, Plaintiff thought of the word “doodle” in order to
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`attract members of the general public who might not have a particular interest in computers. (Id.
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`¶ 11.) Ultimately, Plaintiff decided to combine the two words, thereby arriving at the name
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`“google.” (Id.)
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` Later that day, Plaintiff claims that he began to design a logo for the website on a piece
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`of paper. (Id. ¶¶ 12, 14.) Plaintiff alleges that the drawing combined the name “google” with a
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`picture of a radio, a guitar, and the phrase “What if the whole world ROCKED!” (Id. ¶¶ 14–17,
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`1 I assume Plaintiff’s allegations contained in the Amended Complaint, (Doc. 17), to be true for purposes of this
`motion. See Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 237 (2d Cir. 2007). However, my reference to
`these allegations should not be construed as a finding as to their veracity, and I make no such findings.
`2 “Am. Compl.” refers to Plaintiff’s Amended Complaint, dated October 26, 2016. (Doc. 17.)
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`2
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`Case 1:16-cv-04669-VSB Document 43 Filed 03/28/18 Page 3 of 17
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`Ex. A.) Plaintiff states that the homonym “rock” meant rock and roll, but also referred to the
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`island of Saint Thomas, which is nicknamed “the rock.” (Id. ¶ 17.) On the back of the paper,
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`Plaintiff purportedly rewrote the name “google” in pencil and designated specific colors for each
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`letter of the word. (Id. ¶ 18.) Plaintiff contends that he also came up with the alternative name
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`“alphabet” for his website. (Id. ¶ 20.)
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`Plaintiff maintains that when he came up with the names “google” and “alphabet” and
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`created the logo, an unnamed individual, identified in the Amended Complaint as “Individual 1,”
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`was with Plaintiff in his apartment. (Id.) Soon after Plaintiff had created the logo, developed a
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`color scheme for it, and written the word “google” on both sides of the paper, Individual 1 stole
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`the paper and took it to a nearby parking lot. (Id. ¶ 24.) Plaintiff states that three unnamed co-
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`conspirators were waiting for Individual 1 in a car in the parking lot. (Id.) Individual 1 then
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`showed the piece of paper to the co-conspirators, at which point they all shook hands and drove
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`away. (Id.)
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`Plaintiff says he first learned about Google, Inc. and its search engine in 2002 while
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`taking pre-college courses at Bronx Community College.3 (Id. ¶ 27.) Plaintiff “automatically
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`knew it was the name [he] invented” and that Google had “violated trademark laws by willfully
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`using an unauthorized trademark as a brand, logo, and domain name for their company.” (Id.)
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`Plaintiff complains that Alphabet and Google used Plaintiff’s exact name, colors, and design for
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`its logo without Plaintiff’s consent or authorization. (Id. ¶ 23.)
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`Plaintiff further contends that in September 2013 he saw an unauthorized reproduction of
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`3 According to Defendants, Alphabet is the parent holding company of Google, Inc. (“Google”), an online service
`provider that maintains and operates an Internet search engine, along with a variety of other products and services.
`(Alphabet Mem. 3.) Google was founded in September 1998 by two Ph.D. students at Stanford University named
`Larry Page and Sergey Brin. (Id.; see also Celorio v. Google Inc., No. 1:11-cv-79-SPM-GRJ, 2012 WL 12861605,
`at *1 (N.D. Fla. Nov. 19, 2012).) “Alphabet Mem.” refers to the Memorandum of Law in Support of Defendant
`Alphabet Inc.’s Motion to Dismiss, dated June 9, 2017. (Doc. 33.)
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`3
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`his purported logo in a book published by Cengage, titled “Management 10th Edition,” that he
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`purchased at the Bronx Community College bookstore. (Id. ¶¶ 29–30.) Plaintiff claims that
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`seeing the image caused him anxiety and other emotional distress. (Id. ¶¶ 26, 28, 31, 32, 39.)
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`Plaintiff alleges that the book indicated that the original drawing of the logo was sited at the
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`Doodle Museum, located at Google’s headquarters in Mountain View, California. (Id. ¶ 33.)
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`Procedural History
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`On May 6, 2016, Plaintiff filed a Complaint against Alphabet in New York state court.
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`(Doc. 1-1.) The Complaint consisted of a single sentence alleging that Alphabet was liable for
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`$24,000, with interest, based on “copyright infringement” and “emotional distress.” (Id.) On
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`June 20, 2016, Alphabet removed the Complaint to this Court based on the existence of a federal
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`question under the Copyright Act. (Doc. 1.)
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`On June 27, 2016, Alphabet filed a letter requesting leave to file a motion to dismiss
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`Plaintiff’s Complaint. (Doc. 7.) I directed the parties to appear for a pre-motion conference on
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`August 26, 2016. (Doc. 11.) Prior to the conference, on August 17, 2016, Plaintiff filed a
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`motion to amend his pleading. (Doc. 12.) On August 23, 2016, Alphabet responded with a
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`supplemental letter arguing that Plaintiff’s proposed amended causes of action were implausible
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`and failed to state a claim. (Doc. 13.) At the pre-motion conference, I granted Plaintiff’s request
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`to file an amended complaint.
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`On October 25, 2016, Plaintiff filed his Amended Complaint, adding Cengage as a
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`Defendant. (Doc. 17.) On March 8, 2017, Plaintiff submitted an application to proceed in forma
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`pauperis. (Doc. 19.) On March 9, 2017, Alphabet indicated that it did not oppose the request,
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`(Doc. 20), and I granted it, (Doc. 21). In its March 9 letter, Alphabet also requested that I
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`dismiss the Amended Complaint sua sponte pursuant to 28 U.S.C. § 1915(e)(2)(B). (Doc. 20.)
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`4
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`On March 24, 2017, counsel for Cengage appeared in the case, (Doc. 22), and filed a letter
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`indicating that Cengage would join in the letter request filed by Alphabet for dismissal sua
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`sponte, (Doc. 23). On March 30, 2017, Plaintiff filed a letter in opposition to Defendants’
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`request to dismiss the Amended Complaint sua sponte and requesting an opportunity to respond.
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`(Doc. 24.) On April 3, 2017, I declined to dismiss the Amended Complaint sua sponte and
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`instructed Defendants to file pre-motion letters in anticipation of their motions to dismiss the
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`Amended Complaint. (Doc. 26.)
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`On April 21, 2017, Defendants filed their pre-motion letters, (Docs. 28, 29), and on May
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`12, 2017 Plaintiff submitted a letter in opposition, (Doc. 30). On May 16, 2017, I again declined
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`to dismiss this action sua sponte, but granted Defendants’ request to file their motions to dismiss.
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`(Doc. 31.)
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`On June 9, 2017, Alphabet filed its motion to dismiss, (Doc. 32), along with a
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`memorandum in support, (Doc. 33), and a request for judicial notice with exhibits, (Doc. 34).
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`On June 9, 2017, Cengage filed a notice of joinder in Alphabet’s motion to dismiss. (Doc. 35.)
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`On July 31, 2017, Plaintiff filed an opposition to the motion, (Doc. 36), along with a declaration
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`in support, (Doc. 37). On August 18, 2017, Alphabet filed a reply, (Doc. 38), along with a
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`supplemental request for judicial notice with exhibits,4 (Doc. 39). On August 18, 2017, Cengage
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`filed a reply in further support of its notice of joinder in Alphabet’s motion to dismiss, (Doc. 41),
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`at which point the motion was fully briefed.
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`4 It is not necessary for me to take judicial notice of any facts in order to issue a decision on the present motion.
`Accordingly, I have not considered the facts set forth in Alphabet’s requests for judicial notice.
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`5
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` Legal Standards
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`A.
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`Rule 12(b)(6)
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`To survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), “a
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`complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is
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`plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 570 (2007)). A claim will have “facial plausibility when the plaintiff
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`pleads factual content that allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged.” Id. This standard demands “more than a sheer possibility
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`that a defendant has acted unlawfully.” Id. “Plausibility . . . depends on a host of considerations:
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`the full factual picture presented by the complaint, the particular cause of action and its elements,
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`and the existence of alternative explanations so obvious that they render plaintiff’s inferences
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`unreasonable.” L-7 Designs, Inc. v. Old Navy, LLC, 647 F.3d 419, 430 (2d Cir. 2011).
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`In considering a motion to dismiss, a court must accept as true all well-pleaded facts
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`alleged in the complaint and must draw all reasonable inferences in the plaintiff’s favor. Kassner
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`v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 237 (2d Cir. 2007). A complaint need not make
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`“detailed factual allegations,” but it must contain more than mere “labels and conclusions” or “a
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`formulaic recitation of the elements of a cause of action.” Iqbal, 556 U.S. at 678 (internal
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`quotation marks omitted). Finally, although all allegations contained in the complaint are
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`assumed to be true, this tenet is “inapplicable to legal conclusions.” Id.
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`B.
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`Pro Se Litigant
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`Even after Twombly and Iqbal, a “document filed pro se is to be liberally construed and
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`. . . must be held to less stringent standards than formal pleadings drafted by lawyers.” Boykin v.
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`KeyCorp., 521 F.3d 202, 214 (2d Cir. 2008) (internal quotation marks omitted). Further,
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`pleadings of a pro se party should be read “to raise the strongest arguments that they suggest.”
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`Kevilly v. New York, 410 F. App’x 371, 374 (2d Cir. 2010) (summary order) (internal quotation
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`marks omitted). Nevertheless, dismissal of a pro se complaint is appropriate where a plaintiff
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`fails to state a plausible claim supported by more than conclusory factual allegations. See
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`Walker v. Schult, 717 F.3d 119, 124 (2d Cir. 2013). In other words, the “duty to liberally
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`construe a plaintiff’s complaint is not the equivalent of a duty to re-write it.” Geldzahler v. N.Y.
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`Med. Coll., 663 F. Supp. 2d 379, 387 (S.D.N.Y. 2009) (internal quotation marks omitted).
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` Discussion
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`Defendants move to dismiss all causes of action of the Amended Complaint, arguing both
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`that Plaintiff’s claims are implausible under Federal Rule of Civil Procedure 8, and that
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`Plaintiff’s Amended Complaint fails to state any claims and are barred as a matter of law under
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`Federal Rule of Civil Procedure 12(b)(6). (Alphabet Mem. 8–9.) Because I find that Plaintiff
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`has failed to state a claim upon which any relief may be granted, I do not address Defendants’
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`argument regarding plausibility. I address each cause of action asserted in the Amended
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`Complaint in turn below.
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`A.
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`Trademark Infringement
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`Plaintiff alleges that Defendants “[i]llegally acquired [Plaintiff’s] trademark, then
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`replicated the information for [Defendants’] logo, domain, and products,” in violation of the
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`Lanham Act. (Am. Compl. ¶¶ 47–48.)
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`“To succeed on a federal claim for trademark infringement, the plaintiff must, as an
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`initial matter, show that it has a valid mark that is entitled to protection.” Gameologist Grp.,
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`LLC v. Sci. Games Int’l, Inc., 838 F. Supp. 2d 141, 152–53 (S.D.N.Y. 2011), aff’d, 508 F. App’x
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`31 (2d Cir. 2013). In the absence of federal registration of a mark, a plaintiff must show that it
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`has common law trademark rights based on “actual use of [the] mark in a genuine commercial
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`transaction.” Int’l Healthcare Exch., Inc. v. Global Healthcare Exch., LLC, 470 F. Supp. 2d 365,
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`370 (S.D.N.Y. 2007) (citation omitted); see also Gameologist, 838 F. Supp. 2d at 154 (“The right
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`to exclusive use of a trademark derives from the use in commerce of the mark, rather than from
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`the mark’s mere adoption.”). “There must be a trade in the goods sold under the mark or at least
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`an active and public attempt to establish such a trade. Absent these elements, no trademark can
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`be created or exist.” Momentum Luggage & Leisure Bags v. Jansport, Inc., No. 00 CIV.
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`7909(DLC), 2001 WL 830667, at *5 (S.D.N.Y. July 23, 2001), aff’d, 45 F. App’x 42 (2d Cir.
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`2002); see also Pub. Free Will Corp. v. Verizon Commc’ns Inc., No. 15-CV-6354 (RRM) (JO),
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`2017 WL 1047330, at *3–4 (E.D.N.Y. Mar. 17, 2017) (granting motion to dismiss based on
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`plaintiff’s failure to plausibly allege that it had used its trademark in commerce and possessed a
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`protectable mark under the Lanham Act).
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`Plaintiff’s cause of action for trademark infringement is plainly deficient, and borders on
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`frivolous. Plaintiff does not assert that his purported marks—“google” and “alphabet”—were
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`federally registered or that they were used by him or anyone else in any form of commerce or
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`trade. Plaintiff merely states that he conceived the name “google” for a theoretical search
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`engine, which he never created, and considered the name “alphabet” as an alternative name.
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`Plaintiff contends that he wrote the name “google” on a piece of paper, and uttered the word
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`“alphabet” to an unnamed individual, on one occasion over twenty years ago.
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`Accordingly, Plaintiff does not plausibly allege a cause of action for trademark
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`infringement since he neither registered the marks “google” or “alphabet” nor used them in
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`commerce, and his claim for trademark infringement must be dismissed.5
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`5 Defendants also argue that Plaintiff’s trademark infringement claim should be dismissed because it is barred by the
`doctrine of laches and because Google has developed an “incontestable” right to use its name under the Lanham Act.
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`8
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`B.
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`Copyright Infringement
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`Plaintiff claims that Defendants infringed his copyright in the logo he allegedly drew in
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`1996. (Am. Compl. ¶¶ 40–43.)
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`“To withstand a motion to dismiss, a complaint based on copyright infringement must
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`allege: (1) which original works are the subject of the copyright claim; (2) that the plaintiff owns
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`the copyrights in those works; (3) that the copyrights have been registered in accordance with the
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`statute; and (4) by what acts during what time the defendant infringed the copyright.” Carell v.
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`Shubert Org., 104 F. Supp. 2d 236, 250 (S.D.N.Y. 2000) (internal quotation marks omitted).
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`With regard to the third prong—known as the registration requirement—the Copyright Act states
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`that “no civil action for infringement of the copyright in any United States work shall be
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`instituted until preregistration or registration of the copyright claim has been made in accordance
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`with this title.” 17 U.S.C. § 411(a). “Courts in this Circuit require that a plaintiff either hold a
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`valid copyright registration or have applied and been refused a registration as a prerequisite to
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`filing a civil claim.” Klauber Bros. v. Russell-Newman, Inc., No. 11 Civ. 4985(PGG), 2013 WL
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`1245456, at *4 (S.D.N.Y. Mar. 26, 2013) (citation omitted), aff'd sub nom. Klauber Bros. v. Bon-
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`Ton Stores, Inc., 557 F. App’x 77 (2d Cir. 2014). Section 411(a) “imposes a bar to copyright
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`infringement claims where a plaintiff has not either received or been denied a copyright
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`registration at the time such a claim is interposed.” Muench Photography, Inc. v. Houghton
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`Mifflin Harcourt Publ’g Co., No. 09 CV 2669(LAP), 2012 WL 1021535, at *5 (S.D.N.Y. Mar.
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`26, 2012). A pending application does not suffice. Id.; see also Drum Major Music Entm’t Inc.
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`v. Young Money Entm’t, LLC, No. 11 Civ.1980(LBS), 2012 WL 423350, at *5 (S.D.N.Y. Feb. 7,
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`(Alphabet Mem. 9–11.) Because I dismiss Plaintiff’s trademark infringement claim for failure to state a claim, I do
`not address Defendants’ alternative arguments for dismissal.
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`9
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`2012) (dismissing copyright infringement claims because alleged pending application for
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`copyright registration was insufficient to satisfy the registration requirement).
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`Plaintiff has not complied with the Copyright Act’s registration requirement. In his
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`Amended Complaint, Plaintiff merely alleges that the logo he sketched “has been filed and
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`documented at the United States Copyright Office,” (Am. Compl. ¶ 39), without providing dates
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`or any details related to the purported filing. Plaintiff does not state that his work has actually
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`been registered or rejected, a prerequisite to bringing this cause of action, therefore warranting its
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`dismissal. See, e.g., Accurate Grading Quality Assurance, Inc. v. Thorpe, No. 12 Civ.
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`1343(ALC), 2013 WL 1234836, at *7 (S.D.N.Y. Mar. 26, 2013) (dismissing copyright claims
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`where plaintiffs only alleged infringement of a “legally protected image,” finding that such an
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`allegation “stop[s] short of alleging that [p]laintiffs had copyright protection or had sought
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`copyright protection and been refused at the time of the complaint”).
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`In his opposition brief Plaintiff claims, for the first time, that he has “registered the
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`artwork with the U.S. Copyright Office” and attaches a certificate of registration from the
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`Copyright Office. (Pl.’s Opp. 8, Ex. C.)6 Putting to the side for the moment the fact that
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`Plaintiff’s assertion in his opposition could be read to call into question the veracity of the
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`allegation in his Amended Complaint, the certificate of registration—which Plaintiff apparently
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`applied for on June 29, 2016, more than a month after filing this suit on May 6, 2016—is also
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`insufficient as a matter of law to support a cause of action for infringement since pending
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`applications do not suffice to satisfy the registration requirement. See Drum Major Music Entm’t
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`Inc., 2012 WL 423350, at *5.
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`For these reasons, Plaintiff’s allegations are insufficient to state a claim for copyright
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`6 “Pl.’s Opp.” refers to Plaintiff’s Opposition to the Motion to Dismiss, dated July 31, 2017. (Doc. 36.)
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`infringement, and his cause of action for copyright infringement must be dismissed.7
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`C.
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`Intentional and Negligent Infliction of Emotional Distress
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`Plaintiff asserts claims of intentional and negligent infliction of emotional distress, stating
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`that Defendants’ misappropriation of Plaintiff’s work caused him to suffer emotional and
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`psychological trauma. (Am. Compl. ¶¶ 26, 28, 31, 32, 39, 50–54.)
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`Plaintiff’s state law causes of action for intentional and negligent infliction of emotional
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`distress are preempted by Section 301 of the Copyright Act. Section 301 preempts a state law
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`claim when “(i) the work at issue ‘comes within the subject matter of copyright’ and (ii) the right
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`being asserted is ‘equivalent to any of the exclusive rights within the general scope of
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`copyright.’” Faktor v. Yahoo! Inc., No. 12 Civ. 5220(RA), 2013 WL 1641180, at *4 (S.D.N.Y.
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`Apr. 16, 2013) (quoting 17 U.S.C. § 301(b)). The first prong, referred to as the “subject matter
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`requirement,” is satisfied when the state law claim “applies to a work of authorship fixed in a
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`tangible medium of expression and falling within the ambit of one of the categories of
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`copyrightable works.” Briarpatch Ltd. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir.
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`2004). If the ideas that are the subject of the claim are “fixed in writing . . . the claim is within
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`the subject matter of copyright.” Forest Park Pictures v. Universal Television Network, Inc.,
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`683 F.3d 424, 430 (2d Cir. 2012). The work “need not consist entirely of copyrightable
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`material” but must “only fit into one of the copyrightable categories in a broad sense.”
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`Briarpatch, 373 F.3d at 305; see also Universal City Studios, Inc. v. T-Shirt Gallery, Ltd., 634 F.
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`7 Defendants further assert that Plaintiff’s copyright claim is deficient because Plaintiff fails to allege any plausible
`facts as to when or how Alphabet actually copied Plaintiff’s purported work. (Alphabet Mem. 14–15.) Cengage
`also argues that Plaintiff’s copyright infringement claim is barred by the statute of limitations. (Cengage Mem. 2–
`3.) Because I find that Plaintiff’s failure to register necessitates dismissal of his copyright infringement claim, I do
`not address Defendants’ other arguments for dismissal. “Cengage Mem.” refers to Cengage’s Notice of Joinder in
`Co-Defendant Alphabet Inc.’s Motion to Dismiss Pursuant to Fed. R. Civ. P. 8 and 12(b)(6), dated June 9, 2017.
`(Doc. 35.)
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`Supp. 1468, 1475 n.7 (S.D.N.Y. 1986).
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`Under the second prong, referred to as the “general scope requirement,” a “state right is
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`equivalent to copyright if the state right is infringed by the mere act(s) of reproduction,
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`performance, distribution or display,” Universal City Studios, 634 F. Supp. at 1475 (internal
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`quotation marks omitted). A state law claim is only exempt from preemption if an “‘extra
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`element’ changes the nature of the action so that it is qualitatively different from a copyright
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`infringement claim . . . . An action will not be saved from preemption by elements such as
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`awareness or intent, which alter the action’s scope but not its nature.” Computer Assocs. Int’l,
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`Inc. v. Altai, Inc., 982 F.2d 693, 717–18 (2d Cir. 1992) (internal quotation marks omitted).
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`Both prongs are satisfied here. First, Plaintiff alleges that his ideas were sketched on a
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`piece of paper and thus fixed in writing. Second, Plaintiff’s emotional distress claims do not
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`contain any “extra element” that changes the nature of the action. A claim for intentional
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`infliction of emotional distress requires a plaintiff to show “(1) extreme and outrageous conduct,
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`(2) intent to cause, or disregard of a substantial probability of causing, severe emotional distress,
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`(3) a causal connection between the conduct and injury, and (4) severe emotional distress.”
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`Night Hawk Ltd. v. Briarpatch Ltd., No. 03 Civ. 1382 RWS, 2003 WL 23018833, at *7
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`(S.D.N.Y. Dec. 23, 2003). A claim for negligent infliction of emotional distress requires a
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`plaintiff to show “(1) that the defendant unreasonably endangered the physical safety of plaintiffs
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`or caused them to fear for their safety, (2) causation, and (3) emotional injuries.” Y.D. v. N.Y.C.
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`Dep’t of Educ., No. 14CV1137-LTS, 2016 WL 698139, at *8 (S.D.N.Y. Feb. 19, 2016) (internal
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`quotation marks omitted). Plaintiff’s claims for both intentional and negligent infliction of
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`emotional distress arise from the same underlying conduct as his copyright infringement claim—
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`that Defendants copied and used Plaintiff’s purported work without permission—and do nothing
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`more than seek to vindicate the same rights that federal copyright laws protect. See, e.g.,
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`Giddings v. Vision House Prod., Inc., No. CV 05-2963-PHX-MHM, 2007 WL 2274800, at *2
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`(D. Ariz. Aug. 7, 2007) (finding emotional distress claim preempted because the extreme and
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`outrageous conduct plaintiff relied upon to establish her claim was rooted in defendants’
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`unauthorized reproduction and distribution of plaintiff’s work); Rainey v Wayne State Univ., 26
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`F. Supp. 2d 963, 969 (E.D. Mich. 1998) (finding emotional distress claim preempted because
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`“the extreme and outrageous conduct which plaintiff relies upon to prove her claim is the
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`unauthorized reproduction of her artwork,” which “is exactly what copyright law protects”).
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`Accordingly, Plaintiff’s tort claims for intentional and negligent infliction of emotional
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`distress are dismissed as preempted by the Copyright Act.8
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`D.
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`Unjust Enrichment
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`Plaintiff asserts a cause of action for unjust enrichment asserting that Defendants, by
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`acquiring and using his unauthorized marks, profited at his expense and were unjustly enriched.
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`(Am. Compl. ¶¶ 60–64.)
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`Like the claims for emotional distress, the Copyright Act preempts Plaintiff’s state law
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`claim for unjust enrichment. See supra Part IV.C. “It is well-settled law in this circuit that an
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`unjust enrichment claim based on copyrighted subject matter is preempted by the Copyright Act,
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`because a claim for unjust enrichment contains no ‘extra element’ that makes it qualitatively
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`different from a copyright infringement claim.” Stanacard, LLC v. Rubard, LLC, No. 12 Civ.
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`5176, 2016 WL 462508, at *22 (S.D.N.Y. Feb. 3, 2016); accord, e.g., Briarpatch, 373 F.3d 296,
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`306 (2d Cir. 2004) (“While enrichment is not required for copyright infringement, we do not
`
`
`8 In addition to preemption, Defendants contend that Plaintiff’s emotional distress claims must be dismissed because
`they are without merit. Because I find that the claims are preempted, I do not address Defendants’ alternative
`argument for dismissal.
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`13
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`Case 1:16-cv-04669-VSB Document 43 Filed 03/28/18 Page 14 of 17
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`believe that it goes far enough to make the unjust enrichment claim qualitatively different from a
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`copyright infringement claim.”); U.S. Tennis Ass’n, Inc. v. VSW Prods. LLC, No. 13-CV-4124
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`(NSR), 2013 WL 12195853, at *4 (S.D.N.Y. Nov. 6, 2013) (“The overwhelming majority of
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`courts in this circuit have held that an unjust enrichment claim based upon the copying of subject
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`matter within the scope of the Copyright Act is preempted.”); Affiliated Records Inc. v. Taylor,
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`No. 09 Civ. 9938(KBF), 2012 WL 1675589, at *5 (S.D.N.Y. May 14, 2012) (noting that “[i]t is
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`well-settled that the extra element of ‘enrichment’ does not make that claim qualitatively
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`different from a copyright infringement claim”).
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`Thus, the Copyright Act exclusively governs Plaintiff’s allegations pertaining to unjust
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`enrichment and this claim is dismissed.9
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`E.
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`New York Arts and Cultural Affairs Law
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`Plaintiff claims that by engaging in copyright and trademark infringement of his visual
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`art, Defendants have violated Section 31.04 of the New York Arts and Cultural Affairs Law.
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`(Am. Compl. ¶¶ 12–14, 22, 34, 65–69.) However, Section 31.04 relates to the payment of
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`royalties to performing rights societies for public performances of copyrighted “nondramatic
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`musical work[s].” N.Y. Arts & Cult. Aff. Law § 31.04. In other words, it has nothing to do with
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`Plaintiff’s claims related to trademarks or drawings. In his opposition brief, Plaintiff contends,
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`for the first time, that NYACAL Section 14.03 is also applicable. (Pl.’s Opp. 25.) But Section
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`14.03 protects the moral rights of “fine art” authors by prohibiting the public display of “an
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`altered, defaced, mutilated or modified form if the work is displayed, published or reproduced as
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`being the work of the artist.” N.Y. Arts & Cult. Aff. Law § 14.03(1). None of that is alleged
`
`
`9 Defendants also argue that Plaintiff cannot state a claim for unjust enrichment. However, I find that Plaintiff’s
`unjust enrichment claim is preempted and do not address Defendants’ other argument for dismissal.
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`14
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`Case 1:16-cv-04669-VSB Document 43 Filed 03/28/18 Page 15 of 17
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`here. Rather, Plaintiff asserts that “Defendants have used [his] copyright without giving
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`Plaintiff, the original owner, recognition, and accreditation for [his] accomplished work and
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`contributions.” (Pl.’s Opp. 9.)
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`Because the NYACAL is not applicable to the factual circumstances alleged here, the
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`causes of action based on the NYACAL are dismissed.10
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`F.
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`Federal Trade Commission Act
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`Finally, Plaintiff alleges that Defendants violated the FTC Act by engaging in “unfair
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`methods of competition, and unfair or deceptive acts or practices in or affecting commerce.”
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`(Am. Compl. ¶¶ 55–59.) However, the FTC Act does not provide for a private right of action.
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`Meng v. Xinhuanet Co., No. 16 Civ. 6127 (ER), 2017 WL 3175609, at *3 (S.D.N.Y. July 25,
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`2017); accord, e.g., Alfred Dunhill Ltd. v. Interstate Cigar Co., 499 F.2d 232, 237 (2d Cir. 1974)
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`(“[T]he provisions of the Federal Trade Commission Act may be enforced only by the Federal
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`Trade Commission. Nowhere does the Act bestow upon either competitors or consumers
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`standing to enforce its provisions.”); Oliver v. U.S. Bancorp, No. 14-CV-8948 (PKC), 2015 WL
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`4111908, at *6 (S.D.N.Y. July 8, 2015) (dismissing FTC Act claims because “it is well settled
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`that there is no private right of action under the statute”).
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`Therefore, Plaintiff’s FTC Act claims are dismissed.
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`G.
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`Dismissal with Prejudice
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`Complaints brought pro se typically are dismissed without prejudice. See Cuoco v.
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`Moritsugu, 222 F.3d 99, 112 (2d Cir. 2000) (stating that unless there is no indication that the pro
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`se plaintiff will be able to assert a valid claim giving rise to subject matter jurisdiction, leave to
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`10 Defendants claim that even if Plaintiff’s NYACAL claims were relevant to the copyright alleged in this case, the
`Copyright Act would preempt the claims. Because I find that these claims are dismissed on other grounds, I do not
`address Defendants’ additional grounds for dismissal.
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`15
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`Case 1:16-cv-04669-VSB Document 43 Filed 03/28/18 Page 16 of 17
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`amend should be given). “A pro se complaint should not be dismissed without the Court
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`granting leave to amend at least once when a liberal reading of the compl