Case 1:19-cv-02272-AJN Document 58 Filed 05/31/20 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`Peter Chiykowski,
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`–v–
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`Marc Goldner, et al.,
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`19-cv-2272 (AJN)
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`OPINION & ORDER
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`Plaintiff,
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`Defendants.
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`ALISON J. NATHAN, District Judge:
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`Plaintiff Peter Chiykowski, a visual artist, comics illustrator, and an author of songs,
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`short stories, webcomics, and comic books and strips, brings this suit against Defendants Marc
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`Goldner and two limited liability companies of which Goldner is an officer and member, Golden
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`Bell Entertainment, LLC and Golden Bell Studios, LLC, alleging copyright infringement,
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`fraudulent inducement, and breach of contract claims, and seeking a declaratory judgment.
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`Before the Court is Defendants’ partial motion to dismiss the copyright infringement and
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`declaratory judgment claims for failure to state a claim upon which relief can be granted. For the
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`reasons that follow, Defendants’ partial motion to dismiss is DENIED.
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`I.
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`BACKGROUND1
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`Plaintiff is a visual artist, comics illustrator, and an author of songs, short stories,
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`webcomics, and comic books and strips. Second Am. Compl. ¶ 12. He is a Canadian citizen and
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`has resided in Canada or the United Kingdom at all times prior to the commencement of this
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`1 The following facts are drawn from Plaintiff’s Second Amended Complaint (Dkt. No. 22) and are assumed to be
`true for purposes of Defendants’ motion to dismiss. See McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191
`(2d Cir. 2007).
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`action. Id. ¶ 3. He popularizes his work under the pseudonym “Rock, Paper, Cynic.” Id. ¶ 12.
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`Plaintiff illustrated and created the characters in a game—“Turtles Riding Airships”—that he
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`developed with non-party Jason Wiseman. Id. ¶ 14. In 2017, Plaintiff and Wiseman agreed to
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`work with Defendants to publish and distribute “Turtles Riding Airships.” Id. ¶¶ 16–17.
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`In March 2017, Plaintiff met Defendant Goldner at an industry convention and discussed
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`releasing “Turtles Riding Airships” to the public. Id. ¶ 20. They also discussed a Kickstarter
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`campaign Plaintiff had recently launched to develop and print two books—“Be a Turtle and
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`other Secrets to a Happy Life by Rock, Paper, Cynic” and “Is It Canon?” Id. ¶¶ 13, 18, 21. On
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`March 24, 2017, Golder informed Plaintiff that he could obtain better pricing for printing
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`Plaintiff’s books than Plaintiff had found and requested that he and Plaintiff discuss a contract to
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`do so. Id. ¶ 23. On June 23, 2017, Defendants sent Plaintiff a proposed Collaboration
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`Agreement for his signature. Id. ¶ 31. When Plaintiff discovered that this contract included a
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`previously published book he had never discussed including in the agreement, he immediately
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`sough clarification from Goldner that he would retain rights to his characters and would be free
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`to produce work outside the Collaboration Agreement involving these characters. Id. ¶¶ 31–33.
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`Relying on Goldner’s assurances that his characters and future livelihood were protected,
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`Plaintiff signed this Collaboration Agreement on June 23, 2017. Id. ¶ 35. Under this agreement,
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`Plaintiff and Defendant Golden Bell Entertainment agreed to collaborate on “Turtles Riding
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`Airships” and “Be a Turtle and other Secrets to a Happy Life by Rock, Paper, Cynic.” Id. ¶ 36.
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`On June 30, 2017, Goldner executed the Collaboration Agreement. Id. ¶ 42.
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`Pursuant to this agreement, Defendants were to pay Plaintiff three advances and provide
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`him with 1,000 complimentary copies of “Be a Turtle and other Secrets to a Happy Life by
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`Rock, Paper, Cynic,” and Plaintiff was to assign his ownership rights in the agreed-upon works
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`to Golden Bell Entertainment and give it exclusive rights to print, distribute, and market them.
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`Id. ¶ 38; see also Dkt. No. 22-10. Over eight months after Plaintiff signed the Collaboration
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`Agreement, Defendants had failed to print, publish or distribute any books, pay the agreed-upon
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`advances, and deliver Plaintiff his complimentary copies of “Be a Turtle and other Secrets to a
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`Happy Life by Rock, Paper, Cynic.” Id. ¶ 64. On November 16, 2018, Golden Bell
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`Entertainment filed an application before the United States Patent and Trademark Office
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`attempting to obtain registration for Plaintiff’s mark “Rock, Paper, Cynic.” Id. ¶ 79; see also
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`Dkt. Nos. 22-35, 22-36.
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`Plaintiff initiated this action on March 13, 2019 by filing a complaint. See Dkt. No. 1.
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`He has since amended his complaint twice. See Dkt. Nos. 11, 22. The operative complaint, the
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`Second Amended Complaint, was filed on June 7, 2019. See Dkt. No. 22. On June 28, 2019,
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`Defendants filed the partial motion to dismiss that is now before the Court. See Dkt. No. 25.
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`Plaintiff opposed this motion on July 11, 2019, see Dkt. No. 28, and Defendants filed their reply
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`on July 17, 2019, see Dkt. No. 30
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`II.
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`LEGAL STANDARD
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`In deciding a motion to dismiss pursuant to Rule 12(b)(6), the Court accepts the
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`allegations in the complaint as true and draws all reasonable inferences in favor of the non-
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`moving party. McCarthy, 482 F.3d at 191.
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`To survive a motion to dismiss, the complaint must include “enough facts to state a claim
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`to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A
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`claim has facial plausibility when the plaintiff pleads factual content that allows the court to
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`draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft
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`v. Iqbal, 556 U.S. 662, 678 (2009). In other words, “the complaint’s factual allegations must be
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`enough to raise a right to relief above the speculative level, i.e., enough to make the claim
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`plausible.” Arista Records, LLC v. Doe 3, 604 F.3d 110, 120 (2d Cir. 2010) (internal citations
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`and alterations omitted) (quoting Twombly, 550 U.S. at 555, 570). “Threadbare recitals of the
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`elements of a cause of action, supported by mere conclusory statements, do not suffice.” Iqbal,
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`556 U.S. at 678.
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`Generally, “the facts alleged in the complaint, documents attached to the complaint as
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`exhibits, and documents incorporated by reference in the complaint” may be considered in
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`assessing whether a claim is sufficient to survive a Rule 12(b)(6) motion. DiFolco v. MSNBC
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`Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010).
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`III. DISCUSSION
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`In their partial motion to dismiss, Defendants move this Court to dismiss the first and
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`fourth claims asserted by Plaintiff in his Second Amended Complaint for copyright infringement
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`and a declaratory judgment respectively. For the following reasons, Defendants’ motion is
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`denied.
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`A. Copyright Infringement Claim
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`Defendants argue that Plaintiff has failed to adequately allege each element of his
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`copyright infringement claim. The Court disagrees.
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`To state a copyright infringement claim, a plaintiff must allege (1) ownership of a valid
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`copyright and (2) infringement of that copyright by the defendant. See Feist Publications, Inc. v.
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`Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). In this Circuit, to adequately allege ownership
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`and infringement, “a plaintiff must generally plead (1) the specific original works [that] are the
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`subject of the copyright claim; (2) that plaintiff owns the copyrights in those works; (3) that the
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`copyrights were registered in accordance with 17 U.S.C. § 411; and (4) the acts by which and the
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`time period during which the defendant infringed the copyright.” DigitAlb, Sh.a v. Setplex, LLC,
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`284 F. Supp. 3d 547, 554 (S.D.N.Y. 2018) (citing Kelly v. L.L. Cool J., 145 F.R.D. 32, 36
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`(S.D.N.Y. 1992), aff’d, 23 F.3d 398 (2d Cir. 1994)). However, “proof of registration is not
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`necessary if the work . . . originated in a country outside the United States that is a signatory to
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`the Berne Convention for the Protection of Literary and Artistic Works.” U2 Home Entm’t, Inc.
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`v. Kylin TV, Inc., No. 06-cv-02770 (DLI), 2007 WL 2028108, at *7 (E.D.N.Y. July 11, 2007). A
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`party relying on the § 411 registration exemption “must allege that the works are not United
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`States works within the meaning of [17 U.S.C.] § 101.” DigitAlb, 284 F. Supp. 3d at 555.
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`While Defendants argue that registration is an essential prerequisite to commencing a
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`copyright infringement claim, see Dkt. No. 26 at 2, they are incorrect. Contrary to Defendants’
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`contention, see Dkt. No. 30 at 1, the exemption of foreign works from the registration
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`requirement is not an “outlier” position. Rather, this exemption is not only consistent with the
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`text of 17 U.S.C. § 411(a), which requires that only a United States work be registered or
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`preregistered before a civil action for infringement can be instituted, but it is also widely
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`recognized by courts in this Circuit. See, e.g., DigitAlb, 284 F. Supp. 3d at 555 (“[N]on-United
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`States works—generally, works first published outside the United States in a foreign country that
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`is a signatory to the Berne Convention—are exempt from registration.”); Kuklachev v. Gelfman,
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`600 F. Supp. 2d 437, 473 (E.D.N.Y. 2009) (“Under the clear language of the statute, which refers
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`only to ‘any United States work,’ foreign works originating in countries party to the Berne
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`Convention need not comply with § 411.”); Jose Armando Bermudez & Co. v. Bermudez Int’l,
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`No. 99-cv-9346 (AGS), 2000 WL 1225792, at *10 (S.D.N.Y. Aug. 29, 2000) (“No proof of
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`registration is required if the work for which plaintiff seeks protection has been authored in a
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`foreign country covered by an applicable Convention.”); Master Sound Int’l, Inc. v. Polygram
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`Latino U.S., No. 98-cv-8468 (DLC), 1999 WL 595661, at *2 (S.D.N.Y. Aug. 6, 1999) (“[P]roof
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`of registration is not a prerequisite for bringing suit in federal court if the work originated in a
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`country outside the United States that is a signatory to the Berne Convention.”); see also Joint
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`Stock Co. Channel One Russia Worldwide v. Infomir LLC, No. 16-cv-1318 (GBD) (BCM), 2017
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`WL 696126, at *12 (S.D.N.Y. Feb. 15, 2017) (“In the United States, the Berne Convention
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`Implementation Act of 1988 ‘allows owners of unregistered foreign copyrights from Berne
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`Convention signatory nations to bring claims of copyright infringement in United States courts.’”
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`(citations omitted)), report and recommendation adopted, 2017 WL 2988249 (S.D.N.Y. Mar. 27,
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`2017).
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`Applying the elements articulated above, the Court concludes that the Second Amended
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`Complaint sufficiently pleads a claim for copyright infringement. First, it identifies the specific
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`original works that are the subject of the copyright claim as the illustrations that Defendants
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`submitted in support of their trademark applications to the United States Patent and Trademark
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`Office. Second Am. Compl. ¶ 88. Second, it alleges that Plaintiff owns the copyright in those
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`illustrations under Canadian law. Id. ¶¶ 83, 89. Third, it alleges that these illustrations are not
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`United States works—and are thus exempt from § 411’s registration requirement—because they
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`were published for the first time in Canada or are unpublished.2 Id. ¶¶ 84, 88, 90; see 17 U.S.C.
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`§ 101. And fourth, it alleges that Defendants infringed Plaintiff’s copyrights when they used
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`Plaintiff’s illustrations in support of trademark applications they submitted to the United States
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`Patent and Trademark Office. Id. ¶¶ 82, 88, 91.
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`Because Plaintiff has adequately alleged a copyright infringement claim, Defendants’
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`2 The Court takes judicial notice of the fact that Canada is a signatory to the Berne Convention. See World
`Intellectual Property Organization, Contracting Parties > Berne Convention,
`https://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=15; see also La Vigne v. Costco Wholesale
`Corp., 284 F. Supp. 3d 496, 504 (S.D.N.Y. 2018), aff’d, 772 F. App’x 4 (2d Cir. 2019) (“Matters suitable
`for judicial notice include matters of public record.” (citing Giraldo v. Kessler, 694 F.3d 161, 164 (2d Cir. 2012)).
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`motion to dismiss this claim is DENIED.
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`B. Declaratory Judgment Claim
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`Defendants further argue that Plaintiff’s declaratory judgment claim should be dismissed
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`because it is duplicative of Plaintiff’s breach of contract claim. The Court again disagrees.
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`“In order to decide whether to entertain an action for declaratory judgment,” the Second
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`Circuit has “instructed district courts to ask: (1) whether the judgment will serve a useful purpose
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`in clarifying or settling the legal issues involved; and (2) whether a judgment would finalize the
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`controversy and offer relief from uncertainty.” Duane Reade, Inc. v. St. Paul Fire & Marine Ins.
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`Co., 411 F.3d 384, 389 (2d Cir. 2005). Courts reject declaratory judgment claims “when other
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`claims in the suit will resolve the same issues,” because, under such circumstances, a declaratory
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`judgment will not serve any useful purpose. EFG Bank AG v. AXA Equitable Life Ins. Co., 309
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`F. Supp. 3d 89, 99 (S.D.N.Y. 2018).
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`In this case, Plaintiff’s declaratory judgment claim is not duplicative of his breach of
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`contract claim. While his breach of contract claim seeks damages for Defendants’ alleged failure
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`to pay advances on, publish, distribute, market, and commercially exploit two of Plaintiff’s
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`works—“Turtles Riding Airships” and “Be a Turtle and other Secrets to a Happy Life by Rock,
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`Paper, Cynic”—as required by the Collaboration Agreement, see Second Am. Compl. ¶¶ 125–
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`149, his declaratory judgment claim seeks a declaration regarding ownership rights under the
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`Collaboration Agreement to others of Plaintiff’s works, including a September 2018 short story
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`compilation, Plaintiff’s Rock, Paper Cynic trademarks, and Plaintiff’s future works, see id. ¶¶
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`150–161. Though his declaratory judgment claim could have been more artfully pleaded to
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`make explicit the nature of the judgment Plaintiff seeks, it is clear that this claim is not
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`duplicative of any other claims asserted in the Second Amended Complaint. Accordingly,
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`Defendants’ motion to dismiss the declaratory judgment claim is DENIED.
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`IV. CONCLUSION
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`For the foregoing reasons, Defendants’ partial motion to dismiss is DENIED.
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`This resolves Dkt. No. 25. The previously scheduled post-discovery conference will be
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`held on December 4, 2020 at 3:15 p.m.
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`SO ORDERED.
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`Dated: May 31, 2020
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`New York, New York
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`__________________________________
` ALISON J. NATHAN
` United States District Judge
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