Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 1 of 25
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`17cv4102
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`OPINION & ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`DIGITALB, SH.A,
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`Plaintiff,
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`-against-
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`SETPLEX, LLC, et al.,
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`Defendants.
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`WILLIAM H. PAULEY III, District Judge:
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`DigitAlb, Sh.a (“DigitAlb”) brings this action alleging copyright infringement,
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`trademark dilution, communications piracy, and breach of contract against Setplex LLC (d/b/a
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`NimiTV and d/b/a TVAlb), LBD Group, LLC, Lionel Dreshaj, and Benjamin Dreshaj (together,
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`“Setplex”). Setplex moves to dismiss the claims for direct and contributory copyright
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`infringement in the United States as well as the trademark dilution claim under Rule 12(b)(6). It
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`also seeks to dismiss the claim for copyright infringement in various European countries for
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`forum non conveniens under Rule 12(b)(3), and alternatively asks this Court to decline to
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`exercise supplemental jurisdiction over that claim. For the reasons that follow, Setplex’s motion
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`is granted in part and denied in part.
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`BACKGROUND
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`The allegations in the First Amended Complaint (“Compl.”) are presumed true for
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`the purposes of this motion. This action arises from the piracy of Albanian-language television
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`programming. DigitAlb is an Albanian corporation engaged in the distribution of Internet
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`Protocol Television (“IPTV”) programming from certain Albanian-language television channels.
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`(Compl. ¶¶ 6, 14-15; Compl., Ex. A.) IPTV involves the delivery of streaming content and
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`programming by “sending coded digital transmissions over the Internet,” which are then
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`translated by standard television receivers or other devices provided by the distributor to the
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`subscriber. (See Compl. ¶¶ 6, 12.) DigitAlb distributed and published this programming
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`pursuant to licenses from the Albanian and Kosovan originators of the programming who
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`granted it exclusive distribution rights in the United States, the European Union, the United
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`Kingdom, and other independent European countries. (Compl. ¶¶ 6, 13-15.) In addition,
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`DigitAlb licensed other parties to distribute and publish this programming. (Compl. ¶¶ 6, 13.)
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`The gravamen of the Complaint is that Setplex—a U.S.-based distributor of
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`Albanian-language content and programming—infringed DigitAlb’s exclusive distribution rights
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`by pirating, retransmitting, and publishing the licensed programming to its own customers in the
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`United States and in Europe without DigitAlb’s authorization. (Compl. ¶¶ 1, 7, 16-17.)
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`Although the Complaint largely glosses over the method through which Setplex purportedly
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`distributed this programming, this Court gathers that, at minimum, Setplex delivered the
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`programming to its subscribers through its website or by providing its subscribers with devices
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`or equipment to receive and display the programming. (Compl. ¶¶ 26, 34, 39.) Following a pre-
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`motion conference identifying certain pleading deficiencies in DigitAlb’s U.S. copyright claims,
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`DigitAlb amended its complaint to add “[e]xamples of the individual daily programs published
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`on each channel and to which Plaintiff holds exclusive rights.” (Compl. ¶ 14; see Compl., Ex.
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`A.) Four claims are the subject of this motion: (1) Count I, for direct copyright infringement in
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`the United States; (2) Count II, for contributory copyright infringement in the United States; (3)
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`Count IV, for copyright infringement in the United Kingdom, the European Union, and other
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`European countries; and (4) Count VI, for false designation of origin and trademark dilution.
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`Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 3 of 25
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`LEGAL STANDARD
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`The legal standards governing a motion to dismiss for failure to state a claim are
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`well-established. On a Rule 12(b)(6) motion, the factual allegations in a complaint are accepted
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`as true and all reasonable inferences are drawn in the plaintiff’s favor. Gonzalez v. Hasty, 802
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`F.3d 212, 219 (2d Cir. 2015). To survive a motion to dismiss, the complaint “must contain
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`sufficient factual matter” to “state a claim to relief that is plausible on its face.” Ashcroft v.
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`Iqbal, 556 U.S. 663, 678 (2009) (citation omitted). In other words, the “[f]actual allegations
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`must be enough to raise a right to relief above the speculative level.” Bell Atl. Corp. v.
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`Twombly, 500 U.S. 544, 555 (2007). While a complaint “does not need detailed factual
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`allegations” to survive a motion to dismiss, Bell Atl. Corp., 500 U.S. at 555, a pleading that
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`merely recites conclusory allegations or a “formulaic recitation of the elements of a cause of
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`action” fails to state a claim, Iqbal, 556 U.S. at 678 (citation omitted).
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`In deciding a Rule 12(b)(6) motion, a court may consider only the facts stated on
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`the face of the complaint, the documents attached to the complaint by reference, and matters of
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`which judicial notice may be taken. Leonard F. v. Isr. Disc. Bank of N.Y., 199 F.3d 99, 107 (2d
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`Cir. 1999). Although Setplex includes several documentary exhibits in support of its motion to
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`dismiss, those exhibits are not necessary to resolution of this motion.
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`DISCUSSION
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`I.
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`U.S. Copyright Infringement Claims
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`A. Direct Copyright Infringement
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`Count I alleges that Setplex violated DigitAlb’s exclusive distribution rights by
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`distributing its licensed programming in the United States without authorization. (Compl. ¶¶ 19-
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`21.) To state a claim for copyright infringement, a plaintiff must allege that it owns a valid
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`copyright and that the defendant violated one of the exclusive rights the plaintiff holds in the
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`work, which includes distribution rights. Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d
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`640, 648 (S.D.N.Y. 2013) (citing Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d 1366,
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`1372 (2d Cir. 1993)). In other words, a plaintiff must generally plead (1) the specific original
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`works are the subject of the copyright claim; (2) that plaintiff owns the copyrights in those
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`works; (3) that the copyrights were registered in accordance with 17 U.S.C. § 411; and (4) the
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`acts by which and the time period during which the defendant infringed the copyright. Kelly v.
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`L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992).
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`Setplex tethers its arguments for dismissal to DigitAlb’s failure to allege that the
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`at-issue copyrights are registered in accordance with the Copyright Act. Specifically, it contends
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`that DigitAlb acknowledges that the copyrights are not registered pursuant to 17 U.S.C. § 411,
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`and that DigitAlb has not alleged that the copyrights are exempt from registration as non-United
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`States works. DigitAlb does not dispute that the at-issue copyrights are not registered, but
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`instead retorts—without citing any legal authority—that it is not required to explicitly plead that
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`the works are exempt from registration.
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`Pursuant to the Copyright Act, holders of copyrights in “United States works”
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`may not institute a copyright infringement suit “until preregistration or registration has been
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`made.” 17 U.S.C. § 411(a). A work is a “United States work” only if, in the case of a published
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`work, it is first published (1) in the United States; (2) simultaneously in the United States and
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`another treaty party whose law grants copyright protection for at least the term provided in the
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`United States; (3) simultaneously in the United States and a foreign nation that is not a treaty
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`party; or (4) in a foreign nation that is not a treaty party, and all the authors of the work are
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`headquartered in the United States. 17 U.S.C. § 101. On the other hand, non–United States
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`works—generally, works first published outside the United States in a foreign country that is a
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`signatory to the Berne Convention—are exempt from registration. See 5 Patry on Copyright
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`§ 17:77 (2017); accord Jose Armando Bermudez & Co. v. Bermudez Int’l, 2000 WL 1225792, at
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`*10 (S.D.N.Y. Aug. 29, 2000).
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`As a threshold matter, this Court rejects DigitAlb’s assertion that it is not required
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`to allege exemption from § 411’s registration precondition. Although DigitAlb appears to
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`concede that works first published abroad and in the United States simultaneously would be
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`subject to registration, its argument implicitly suggests that because the Complaint does not
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`allege simultaneous publication, those works must be exempt. (See Memorandum of Law
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`Opposing the Motion of Defendants to Dismiss Counts I, II, IV, and VI of the First Amended
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`Complaint, ECF No. 51 (“Pl.’s Opp.”) at 4.) But this cannot be the rule. If a court were to
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`woodenly accept that a work is exempt from registration based on the omission of allegations
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`indicating that the work is a United States work, any party seeking to surmount the registration
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`requirement could simply omit any allegation of first publication in the United States or first
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`publication simultaneously within and outside the United States. Thus, should DigitAlb seek to
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`rely on the § 411 registration exemption, it must allege that the works are not United States
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`works within the meaning of § 101. See Joint Stock Co. Channel One Russia Worldwide v.
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`Infomir LLC, 2017 WL 696126, at *13 (S.D.N.Y. Feb. 15, 2017); accord Kernel Records Oy v.
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`Mosley, 694 F.3d 1294, 1304-05 (11th Cir. 2012) (summary judgment context).
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`While DigitAlb proclaims that it “is certain from the allegations in the First
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`Amended Complaint” that it did not publish the at-issue programming simultaneously in the
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`United States, a careful examination of the relevant allegations reveals DigitAlb’s conclusion to
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`be far from certain. (See Pl.’s Opp. at 5.) Here, the only allegations pertaining to publication of
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`the programming are that DigitAlb “published those works outside of the United States” and that
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`it “licens[ed] other distributors within and without the United States, not including the
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`defendants, to publish them.” (Compl. ¶ 13.) But these allegations do not identify where or
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`when the programming was first published.1
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`Two additional points warrant brief discussion. First, DigitAlb avers that the
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`programming was “created, developed, and produced . . . outside of the United States, i.e. in the
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`Republic of Albania or the Republic of Kosovo.” (Compl. ¶ 13.) Indeed, courts in this Circuit
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`sometimes frame the registration requirement in terms of the work’s “country of origin.” E.g.,
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`Sadhu Singh Hamdad Trust v. Ajit Newspaper Advert., Mktg. & Commc’ns, Inc., 503 F. Supp.
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`2d 577, 584 (E.D.N.Y. 2007) (citing Jose Armando Bermudez & Co., 2000 WL 1225792, at
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`*10). Of course, this phrasing makes sense in light of § 411(a)’s historical exemption from
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`registration of “copyright[s] in Berne Convention works whose country of origin is not the
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`United States.” 17 U.S.C. § 411(a) (1997) (emphasis added). But like § 101’s current definition
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`of “United States work,” the preceding version of § 101 defined the “country of origin” as the
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`United States for § 411 purposes based on where the work was “first published.” See 17 U.S.C.
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`§ 101 (1997); accord 5 Patry on Copyright § 17:77 (couching the “country of origin of the work”
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`in terms of where that work was first published). Therefore, while the amended complaint
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`suggests that the works may have “originated” in Albania or Kosovo from a layman’s
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`perspective, it says nothing about where the works were first published.
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`Second, DigitAlb alleges that the programming on at least some of the at-issue
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`At oral argument, counsel for DigitAlb represented that the programs were first published in Albania and
`Kosovo. (Oral Arg. Hr’g Tr. 8:15-8:17.) These statements by counsel do not validly amend DigitAlb’s pleadings.
`Cf. Wright v. Ernst & Young LLP, 152 F.3d 169, 178 (2d Cir. 1998) (parties may not amend pleadings through
`statements in briefs).(cid:3)
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`channels—Top Channel, Top News, Musical, and Top Channel HD—was “first aired . . . either
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`(1) outside of the United States or (2) simultaneously outside the United States and within the
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`United States.” (Compl. ¶ 50.) This too is insufficient to allege where the works were first
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`published because the mere public performance or display of a work does not constitute
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`publication. 17 U.S.C. § 101; accord 1 Nimmer on Copyright § 4.11 (explaining that broadcast
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`of audiovisual works does not constitute publication). Accordingly, DigitAlb’s direct copyright
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`infringement claim is dismissed.
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`B. Contributory Copyright Infringement
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`Count II alleges contributory infringement by LBD Group and the Dreshaj
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`Defendants on the basis that they facilitated, managed, or directed Setplex’s unauthorized
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`distribution of the programming by entering into contracts with consumer subscribers for the
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`programming and causing the delivery of the programming to the subscribers. (Compl. ¶¶ 26-
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`29.) To state a claim for contributory copyright infringement, a plaintiff must allege that
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`someone “with knowledge of the infringing activity[] induce[d], cause[d], or materially
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`contribute[d] to the infringing conduct of another.” Blank Prods., Inc. v. Warner/Chappell
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`Music, Inc., 2013 WL 32806, at *3 (S.D.N.Y. Jan. 3, 2013) (quoting Arista Records, LLC v. Doe
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`3, 604 F.3d 110, 117-18 (2d Cir. 2010)). Setplex’s only argument for dismissal of this claim is
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`that DigitAlb’s failure to sufficiently plead the registration element is fatal to its contributory
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`copyright infringement claim. It does not otherwise challenge the sufficiency of the allegations
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`related to contributory infringement. This Court’s analysis of the direct copyright infringement
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`claim compels the same result as to the contributory infringement claim because § 411 is a
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`precondition to suit, not to bringing direct infringement claims only. Accordingly, Count II is
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`also dismissed.
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`C. Leave to Amend
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`Setplex contends that DigitAlb should not be afforded another opportunity to
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`amend its copyright infringement claims because it received notice at the pre-motion conference
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`of the need to allege additional details. Such details included whether the allegedly infringed
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`works are foreign works, the country of origin, and the date of publication. (Hr’g Tr. at 8:25-
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`10:22.) DigitAlb offers no argument in opposition. See In re Jumei Int’l Holding Ltd. Sec.
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`Litig., 2017 WL 95176, at *5 n.4 (S.D.N.Y. Jan. 10, 2017) (arguments not rebutted in opposition
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`briefs are deemed conceded). At oral argument on the motion, DigitAlb admitted that it could
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`have pleaded that the at-issue works were exempt. Counsel offered no explanation for why he
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`did not do so aside from his belief that it was not necessary. (Oral Arg. Hr’g Tr. at 4:10-4:22.)
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`Courts have dismissed claims with prejudice on the basis that “the plaintiff has already had an
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`opportunity to replead after specific warnings as to a complaint’s deficiencies.” Tamar v. Mind
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`C.T.I., Ltd., 723 F. Supp. 2d 546, 559 (S.D.N.Y. 2010). A fundamental purpose of a pre-motion
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`conference is to discuss potential defects in pleadings and to obviate successive pleadings.
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`Accordingly, leave to amend Counts I and II is unwarranted.
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`II.
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`Trademark Dilution Claim
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`Setplex seeks to dismiss Count VI for false designation of origin and trademark
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`dilution under the Lanham Act. As an initial matter, DigitAlb appears to conflate a claim for
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`false designation of origin under 15 U.S.C. § 1125(a) with a claim for trademark dilution under
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`15 U.S.C. § 1125(c). In essence, DigitAlb alleges that each at-issue television channel contains a
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`unique symbol that appears in the corner of the television screen. (Compl. ¶ 59.) While the
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`Complaint purports to state a cause of action under § 1125(c), DigitAlb alleges that Setplex’s
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`unauthorized distribution of the television programming and use of the symbols on their websites
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`Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 9 of 25
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`constitute a false designation of origin within the meaning of § 1125(a)(1). (Compl. ¶ 64.)
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`However, it also avers that Setplex’s use of these symbols dilutes the quality of the symbols.
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`(Compl. ¶ 65.) In its briefing, DigitAlb appears to have abandoned any § 1125(a) claim, and
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`fails to make any effort in its opposition to refute Setplex’s argument that such a claim should be
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`dismissed based on DigitAlb’s failure to allege the existence of a valid mark entitled to Lanham
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`Act protection. See In re Jumei Int’l Holding Ltd. Sec. Litig., 2017 WL 95176, at *5 n.4. Thus,
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`this Court construes Count VI as bringing a claim for trademark dilution.
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`To state a claim for federal trademark dilution, the plaintiff must allege: (1) the
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`mark is famous; (2) defendant’s use of the mark is made in commerce; (3) the defendant used the
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`mark after the mark is famous; and (4) the defendant’s use of the mark is likely to dilute the
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`quality of the mark by blurring or tarnishment. A.V.E.L.A., Inc. v. Estate of Marilyn Monroe,
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`LLC, 131 F. Supp. 3d 196, 211 (S.D.N.Y. 2015); see 15 U.S.C. § 1125(c)(1). Fame is the “key
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`ingredient” in a trademark dilution claim. Global Brand Holdings, LLC v. Church & Dwight
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`Co., 2017 WL 6515419, at *2 (citing Savin Corp. v. Savin Grp., 291 F.3d 439, 440 (2d Cir.
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`2004)). For a mark to be considered famous, “it must be ‘widely recognized by the general
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`consuming public of the United States’ as a designation of the source of the goods or of the
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`mark’s owner.” Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F. Supp. 3d 675, 702 (S.D.N.Y.
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`2014) (citing 15 U.S.C. § 1125(c)(2)(A)). Courts have “generally limited famous marks to those
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`that receive multi-million dollar advertising budgets, generate hundreds of millions of dollars in
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`sales annually, and are almost universally recognized by the general public.” Schutte
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`Bagclosures Inc., 48 F. Supp. 3d at 702. Put differently, dilution claims are restricted to marks
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`that are “truly famous” or so well-known that they are essentially household names, such as
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`Coca-Cola, Nike, or Budweiser. Luv N’ Care, Ltd. v. Regent Baby Prods. Corp., 841 F. Supp.
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`2d 753, 757-58 (S.D.N.Y. 2012).
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`DigitAlb counters that fame in niche markets—such as Albanian-language
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`television—is sufficient for a trademark dilution claim if the plaintiff and defendant are using the
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`mark in the same market, citing the Seventh Circuit’s decision in Syndicate Sales Inc. v.
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`Hampshire Paper Corp., 192 F.3d 633 (7th Cir. 1999). But DigitAlb’s reliance is misplaced. In
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`2006, the Trademark Dilution Revision Act (“TDRA”) amended the federal anti-dilution statute,
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`abrogating Syndicate Sales’s reasoning by adding language explicitly defining a “famous” mark
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`to be one “widely recognized by the general consuming public of the United States . . . .”2 15
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`U.S.C. § 1125(c)(2)(A) (emphasis added); see Luv N’ Care, 841 F. Supp. 2d at 757-58 (noting
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`that the inclusion of this language “was intended to reject dilution claims based on niche fame”).
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`Indeed, the Seventh Circuit’s conclusion was premised on the fact that one of the factors for
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`determining whether a mark is famous “indicates that fame may be constricted to a particular
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`market”—a factor that was since omitted by the TDRA amendments. See Syndicate Sales, 192
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`F.3d at 641. Thus, it should be no surprise that no post-TDRA case cites to Syndicate Sales for
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`the niche-fame proposition.
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`DigitAlb’s failure to plausibly allege that the symbols are famous to the general
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`consuming public of the United States is fatal to its trademark dilution claim. Global Brand
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`Holdings, LLC, 2017 WL 6515419, at *3 (holding that allegations of niche fame or a substantial
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`advertising budget are, standing alone, insufficient to plead wide recognition by the general
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`consuming public). The only allegation that pertains to the fame of the symbols is a conclusory
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`allegation that each of these symbols is “is associated by the public in the United States . . . with
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`2
`As Setplex points out, the Seventh Circuit itself recognized that the TDRA amendment “eliminated any
`possibility of ‘niche fame,’ which some courts had recognized before the amendment.” Top Tobacco, L.P. v. N. Atl.
`Operating Co., 509 F.3d 380, 384 (7th Cir. 2007) (citing Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d
`633 (7th Cir. 1999)).
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`each of the individual channels and is widely recognized by the general public as a deviation of
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`the source of the content distributed by the channels . . . .” (Compl. ¶ 61.) But this allegation
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`amounts to nothing more than a recitation of § 1125(c)(2)(A)’s definition of a “famous” mark.
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`Accord Global Brand Holdings, LLC, 2017 WL 6515419, at *4 (explaining that mere conclusory
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`statements that a mark is “famous” and widely recognized by the general consuming public are
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`insufficient). Moreover, the Complaint is devoid of factual allegations that shed light on the
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`extent of the symbols’ advertising, publicity, or actual recognition by the general public, or
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`whether any of the symbols were registered. See 15 U.S.C. § 1125(c)(2)(A)(i)-(iv). Instead, it
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`merely alleges that DigitAlb is engaged in the business of providing Internet Protocol Television
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`“to, among others, an Albanian language speaking consumer base in the United States . . . .”
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`(Compl. ¶ 11.) This allegation suggests at most that the mark may be recognized by Albanian-
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`language consumers—clearly a niche market.3 As such, leave to replead would be futile. See
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`Joint Stock Co., 2017 WL 696126, at *24 (noting the unlikelihood “that plaintiffs, who are all
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`Russian-language broadcasters headquartered in the Russian Federation, could plead facts
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`showing that their marks are famous to the ‘general consuming public of the United States’”).
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`Count VI of the Complaint is dismissed because it does not contain sufficient
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`factual matter to plausibly allege that the mark is even close to being “widely recognized by the
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`general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A); accord Heller Inc.
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`3
`DigitAlb contends in its opposition that its content may have up to 200,000 viewers in the United States,
`that it maintains a website, and that it advertises worldwide, relying on New York City Triathlon, LLC v. NYC
`Triathlon Club, Inc. But this amounts to nothing more than a belated effort by DigitAlb to amend its complaint
`through statements in its briefs. See Wright, 152 F.3d at 178. New York City Triathlon is also distinguishable on
`the facts. There, the court found that the NYC TRIATHLON mark was famous based on extensive national and
`international publicity and media coverage, prominent sponsorship, and evidence of national and international
`recognition and renown. New York City Triathlon, LLC, 704 F. Supp. 2d 305, 321-22 (S.D.N.Y. 2010). In any
`case, the mere fact that DigitAlb has a website and advertises worldwide is insufficient for its marks to be widely
`recognized by the general consuming public. E.g., Global Brand Holdings, LLC, 2017 WL 6515419, at *5.
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`Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 12 of 25
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`v. Design Within Reach, Inc., 2009 WL 2486054, at *4 (S.D.N.Y. Aug. 14, 2009). The parties’
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`arguments as to the extraterritorial application of the Lanham Act are moot.
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`III.
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`Breach of Contract Claim
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`DigitAlb nestles a breach of contract claim against Setplex among its domestic
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`and foreign copyright infringement claims. Although Setplex does not seek dismissal of that
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`claim, federal courts have an “independent obligation to consider the presence or absence of
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`subject matter jurisdiction sua sponte.” In re Tronox Inc., 855 F.3d 84, 95 (2d Cir. 2017) (citing
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`Joseph v. Leavitt, 465 F.3d 87, 89 (2d Cir. 2006)). Because this Court is not convinced it has
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`jurisdiction over this claim, DigitAlb is directed to file affidavits or an amended complaint
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`setting forth in good faith the basis for subject matter jurisdiction.
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`The breach of contract claim revolves around a licensing agreement that Setplex
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`entered into with Top Channel sh.a, an Albanian corporation that owned the exclusive rights to
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`distribute the contents of Top Channel, Top News, Musical, and Top Channel HD. (Compl.
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`¶¶ 48, 50.) Under that licensing agreement, Setplex received the right to distribute the content of
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`those channels on a non-exclusive basis in the United States and Canada. (Compl. ¶¶ 48, 51.)
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`During the term of the agreement, Setplex fell into arrears with its license payments to the tune
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`of $75,000, which remained unpaid despite repeated demands by Top Channel sh.a. (Compl.
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`¶¶ 53-54.) Top Channel sh.a subsequently assigned its claims under the licensing agreement to
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`DigitAlb. (Compl. ¶ 55.)
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`Because DigitAlb premises subject matter jurisdiction over Count V on
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`§ 1332(a)(2) and § 1332(a)(4),4 (see Compl. ¶ 2), it “bears the burden of demonstrating that the
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`The amount in controversy exceeds the statutory limit based on DigitAlb’s allegations that the payments
`total $75,000 and that the licensing agreement entitles it to reasonable attorney’s fees in collecting the delinquent
`payments. (Compl. ¶¶ 53, 56.) See Maxons Restorations, Inc. v. Newman, 292 F. Supp. 2d 477, 482 (S.D.N.Y.
`2003) (noting that attorney’s fees may be included in calculating amount in controversy only if recoverable as of
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`Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 13 of 25
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`grounds for diversity exist and that diversity is complete,” Advani Enters., Inc. v. Underwriters
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`at Lloyds, 140 F.3d 157, 160 (2d Cir. 1998). At the outset, § 1332(a)(4) is inapplicable because
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`DigitAlb is not a foreign state, a political subdivision of a foreign state, or an agency or
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`instrumentality of a foreign state as defined in 28 U.S.C. § 1603. See 28 U.S.C. § 1332(a)(4).
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`But even under § 1332(a)(2), DigitAlb’s allegations regarding the citizenship of
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`the Defendants are insufficient to support the exercise of subject matter jurisdiction over the
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`breach of contract claim. On one hand, DigitAlb alleges that it is an Albanian corporation with
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`its principal place of business in Albania. (Compl. ¶ 6.) Thus, it is a citizen of Albania. See 28
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`U.S.C. § 1332(c)(1). On the other hand, the pleadings and record are bereft of averments
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`demonstrating the citizenship of Defendants. See Leveraged Leasing Admin. Corp. v.
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`PacifiCorp Capital, Inc., 87 F.3d 44, 47 (2d Cir. 1996) (“It is firmly established that diversity of
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`citizenship should be distinctly and positively averred in the pleadings, or should appear with
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`equal distinctness in other parts of the record.” (quotation marks and citation omitted)).
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`At most, the allegations reveal that the individual Defendants—Lionel Dreshaj
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`and Benjamin Dreshaj—reside in the Southern District of New York. (Compl. ¶ 5.) But it is
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`black-letter law that “a statement of the parties’ residence is insufficient to establish their
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`citizenship.” Leveraged Leasing Admin. Corp., 87 F.3d at 47. DigitAlb’s allegations as to the
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`entity Defendants fare no better. Both Setplex LLC and LBD Group LLC are alleged only to be
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`Delaware limited-liability companies, each with its principal place of business in New York.
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`(Compl. ¶¶ 7-8.) A limited-liability company’s citizenship is the citizenship of each of its
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`members. WBCMT 2007-C33 NY Living, LLC v. 1145 Clay Ave. Owner, LLC, 964 F. Supp.
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`2d 265, 267 (S.D.N.Y. 2013); see also Bayerische Landesbank, N.Y. Branch v. Aladdin Capital
`
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`right pursuant to statute or contract); see also In re Ciprofloxacin Hydrochloride Antitrust Litig., 166 F. Supp. 2d
`740, 755 (E.D.N.Y. 2001).
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`Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 14 of 25
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`Mgmt. LLC, 692 F.3d 42, 49 (2d Cir. 2012). However, this Court cannot determine the
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`citizenship of either Setplex LLC or LBD Group LLC because the Complaint does not set forth
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`the citizenship of their members. See Avant Capital Partners, LLC v. W108 Development LLC,
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`--- F. Supp. 3d ---, 2016 WL 3660756, at *2 (S.D.N.Y. 2016) (finding allegations of LLCs’
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`residences, states of formation, and principal places of business to be insufficient). It is possible,
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`for example, that an individual Defendant is a foreign citizen currently residing in New York, or
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`that an entity Defendant is a foreign citizen based on the citizenship of its members. And if any
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`Defendant is a foreign citizen, then this Court may not exercise subject matter jurisdiction under
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`§ 1332(a)(2). See F5 Capital v. Pappas, 856 F.3d 61, 75 (2d Cir. 2017) (noting that diversity is
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`“lacking within the meaning of [§ 1332(a)(2)] where the only parties are foreign entities, or
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`where on one side there are citizens and aliens and on the opposite side there are only aliens”
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`(alteration in original and citation omitted)).
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`Although the allegations in the Complaint do not support the exercise of subject
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`matter jurisdiction over Count V, this Court will afford DigitAlb an opportunity to either file
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`affidavits or an amended complaint setting forth the grounds for subject matter jurisdiction. See
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`28 U.S.C. § 1653 (“Defective allegations of jurisdiction may be amended, upon terms, in the trial
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`or appellate courts.”). As the Second Circuit has explained, a plaintiff’s failure to include
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`“adequate allegations to show that the district court has subject matter jurisdiction” is not
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`necessarily fatal because “‘the actual existence of diversity jurisdiction, ab initio, does not
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`depend on the complaint’s compliance with these procedural requirements.’” Durant, Nichols,
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`Houston, Hodgson & Cortese-Costa P.C. v. Dupont, 565 F.3d 56, 64 (2d Cir. 2009) (emphasis in
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`original and citation omitted).
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`Case 1:17-cv-04102-WHP Document 63 Filed 01/11/18 Page 15 of 25
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`IV.
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`Foreign Copyright Infringement Claims
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`Setplex contends that this Court should dismiss Count IV under the forum non
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`conveniens doctrine. In the alternative, Setplex argues that this Court should decline to exercise
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`supplemental jurisdiction over that claim. Each argument is addressed in turn.
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`A. Forum Non Conveniens
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`Forum non conveniens is “a discretionary device permitting a court in rare
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`instances to dismiss a claim even if the court is a permissible venue with proper jurisdiction over
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`the claim.” Carey v. Bayerische Hypo-Und Vereinsbank AG, 370 F.3d 234, 237 (2d Cir. 2004).
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`In resolving a forum non conveniens challenge, a court may “rely on evidence outside the
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`pleadings, including affidavits.” Erausquin v. Notz, Stucki Mgmt. (Bermuda) Ltd., 806 F. Supp.
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`2d 712, 724 (S.D.N.Y. 2011) (citing Alcoa S.S. Co. v. M/V Nordic Regent, 654 F.2d 147, 158
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`(2d Cir. 1980) (en banc). In so doing, a court applies the “three-step analysis set forth in Iragorri
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`v. United Techs. Corp.” Abdullahi v. Pfizer Inc., 562 F.3d 163 (2d Cir. 2009). Under the
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`Iragorri analysis, the court (1) “determines the degree of deference properly accorded the
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`plaintiff’s choice of forum; (2) “considers whether the alternative forum proposed by the
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`defendants is adequate to adjudicate the parties’ dispute”; and (3) “balances the private and
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`public interests implicated in the choice of forum.” Norex Petroleum Ltd. v. Access Indus., Inc.,
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`416 F.3d 146, 153 (2d Cir. 2005).
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`As an initial matter, forum non conveniens is most commonly applied in the
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`context of whether to dismiss an entire action, as opposed to merely dismissing fewer than all of
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`the claims—as Setplex seeks to do here. Cf. Atl. Marine Constr. Co. v. U.S. Dist. Court for W.
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`Dist. of Tex