Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 1 of 33

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
JAMES SAINT-AMOUR and ALENA IVLEVA a/k/a
JERRA BLUES, doing business as SATORII, on behalf of
themselves and all others similarly situated,
Plaintiffs,

Case No. 16-cv-04464-DAB

v.
THE RICHMOND ORGANIZATION, INC.
(TRO INC.) and LUDLOW MUSIC, INC.,
Defendants.

MEMORANDUM OF LAW IN SUPPORT OF DEFENDANTS

MOTION TO DISMISS THE CLASS ACTION COMPLAINT

ROBINS KAPLAN LLP

Paul V. LiCalsi, Esq.
Ofer Reger, Esq.
601 Lexington Avenue, Suite 3400
New York, New York 10022-4611
Telephone: (212) 980-7400
Facsimile: (212) 980-7499
PLiCalsi@RobinsKaplan.com
OReger@RobinsKaplan.com
Attorneys for Defendants
The Richmond Organization, Inc.
and Ludlow Music, Inc.

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 2 of 33

Table of Contents
Page
PRELIMINARY STATEMENT .................................................................................................... 1
FACTUAL BACKGROUND ......................................................................................................... 4
ARGUMENT .................................................................................................................................. 5
I.

Standards on a Motion to Dismiss; Plaintiffs Fail to Plead a Plausible Claim

for Relief. ..................................................................................................................... 5

II.

This Court Lacks Subject Matter Jurisdiction Over Plaintiffs Declaratory

Judgment Act Claims Because Plaintiffs Have No Standing to Sue for the
Requested Relief. ......................................................................................................... 6

III.

Even if Plaintiffs Copyright Claims are Sustained, Plaintiffs Remaining

State Law Claims are Preempted by the Copyright Act. ........................................... 14

IV.

A.

Plaintiffs claim for deceptive acts and practices under GBL 349 is
preempted by the Copyright Act. ..................................................................... 15

B.

Even if not preempted, the Complaint fails to state a GBL 349 claim. ........ 17

C.

Plaintiffs claim for breach of contract is preempted by the Copyright

Act. ................................................................................................................... 19

D.

The claim for money had and received is a quasi-contract claim that is
preempted by the Copyright Act; In any event, this claim should be
dismissed as duplicative. .................................................................................. 22

E.

Plaintiffs claim for rescission should be preempted; Alternatively, the

Complaint fails to state a plausible claim for rescission. ................................. 22

Plaintiffs Can Recover No Damages Prior to the Three-Year Statute of

Limitations Contained in the Copyright Act. ............................................................ 24

CONCLUSION ............................................................................................................................. 25

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 3 of 33

Table of Authorities
Page(s)
Cases
Adirondack Cookie Co. v. Monaco Baking Co.,
871 F. Supp. 2d 86 (N.D.N.Y. 2012) .......................................................................................11
Allen v. Scholastic, Inc.,
739 F. Supp. 2d 642 (S.D.N.Y. 2011)........................................................................................5
Alper v. Seavey,
9 A.D.3d 263 (1st Dept 2004) ................................................................................................23
Alvarez v. Smith,
558 U.S. 87 (2009) .....................................................................................................................7
Am. Movie Classics Co. v. Turner Entmt Co.,
922 F. Supp. 926 (S.D.N.Y. 1996)...............................................................................17, 20, 22
Amaretto Ranch Breedables v. Ozimals Inc.,
907 F. Supp. 2d 1080 (N.D. Cal. 2012) .............................................................................10, 13
Ashcroft v. Iqbal,
556 U.S. 662 (2009) ...............................................................................................................5, 6
Atrium Group de Ediciones y Publicaciones, S.L. v. Harry N. Abrams, Inc.,
565 F. Supp. 2d 505 (S.D.N.Y. 2008)......................................................................................16
Authors Guild, Inc. v. Hathitrust,
902 F. Supp. 2d 445 (S.D.N.Y. 2012) revd, 755 F.3d 87 (2d Cir. 2014) ...............................12
Babylon Assocs. v. County of Suffolk,
101 A.D.2d 207 (2d Dept 1984) .............................................................................................23
BanxCorp v. Costco Wholesale Corp.,
723 F. Supp. 2d 596 (S.D.N.Y. 2010)......................................................................................17
Barclays Capital Inc. v. Theflyonthewall.com, Inc.,
650 F.3d 876 (2d Cir. 2011)...............................................................................................14, 15
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) ...............................................................................................................5, 6
Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc.,
373 F.3d 296 (2d Cir. 2004)...................................................................................15, 16, 20, 22

ii

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 4 of 33

BroadVision Inc. v. Gen. Elec. Co.,

No. 08-CV-1478, 2008 U.S. Dist. LEXIS 81863 (S.D.N.Y. Oct. 15, 2008) ...........................20
Cabell v. Sony Pictures Entmt, Inc.,
425 Fed. Appx 42 (2d Cir. 2011)............................................................................................17
Canal+ Image UK, Ltd. v. Lutvak,
773 F. Supp. 2d 419 (S.D.N.Y. 2011)................................................................................19, 20
Computer Assocs. Intl, Inc. v. Altai, Inc.,
982 F.2d 693 (2d Cir. 1992).........................................................................................14, 15, 17
DSC Commcns Corp. v. Pulse Commcns, Inc.,
170 F.3d 1354 (Fed. Cir. 1999)................................................................................................13
Eliya, Inc. v. Kohls Dept Stores,
No. 06-Civ-195 (GEL), 2006 U.S. Dist. LEXIS 66637 (S.D.N.Y. Sept. 13,
2006) ........................................................................................................................................18
Eyal R.D. Corp. v. Jewelex N.Y. Ltd.,
784 F. Supp. 2d 441 (S.D.N.Y. 2011)................................................................................16, 17
Fina Research, S.A. v. Baroid Ltd.,
141 F.3d 1479 (Fed. Cir. 1998)..................................................................................................6
Flast v. Cohen,
392 U.S. 83 (1968) .....................................................................................................................9
Forest Park Pictures v. Universal Television Network, Inc.,
683 F.3d 424 (2d Cir. 2012)...............................................................................................20, 22
Gem Advisors, Inc. v. Invu, Inc.,
No. 01-Civ-1340, 2002 U.S. Dist. LEXIS 5371 (S.D.N.Y. Mar. 26, 2002) ............................22
Gottlieb Dev. LLC v. Paramount Pictures Corp.,
590 F. Supp. 2d 625 (S.D.N.Y. 2008)......................................................................................17
Gucci Am., Inc. v. Duty Free Apparel. Ltd.,
277 F. Supp. 2d 269 (S.D.N.Y. 2003)......................................................................................18
Indep. Order of Foresters v. Donald, Lufkin, & Jenrette, Inc.,
157 F.3d 933 (2d Cir. 1998).....................................................................................................22
Itar-Tass Russian News Agency v. Russian Kurier, Inc.,
153 F.3d 82 (2d Cir. 1998).......................................................................................................12
John Wiley & Sons, Inc. v. DRK Photo,
998 F. Supp. 2d 262 (S.D.N.Y. 2014)........................................................................................9

iii

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 5 of 33

Kregos v. Associated Press,

3 F.3d 656 (2d Cir. 1993) ........................................................................................................17
Krumme v. WestPoint Stevens Inc.,
238 F.3d 133 (2d Cir. 2000).....................................................................................................23
Lennon v. Seaman,
84 F. Supp. 2d 522 (S.D.N.Y. 2000)........................................................................................13
Levine v. Landy,
832 F. Supp. 2d 176 (N.D.N.Y. 2011) .........................................................................15, 17, 18
Marya v. Warner/Chappell Music, Inc.,
131 F. Supp. 3d 975 (C.D. Cal. 2015) .....................................................................................11
Maurizio v. Goldsmith,
230 F.3d 518 (2d Cir. 2000)...............................................................................................17, 18
MedImmune, Inc. v. Genentech, Inc.,
549 U.S. 118 (2007) ...........................................................................................7, 10, 11, 12, 13
Merchant v. Levy,
92 F.3d 51 (2d Cir. 1996) ........................................................................................................24
Musa v. Supershuttle Intl, Inc.,
No. 12-cv-2418, 2013 U.S. Dist. LEXIS 143401 (E.D.N.Y. Sept. 30, 2013) .........................25
Nials v. Bank of Am.,
No. 13-Civ-5720, 2014 U.S. Dist. LEXIS 77070 (S.D.N.Y. May 30, 2014) ..........................24
Nike, Inc. v. Already, LLC,
663 F.3d 89 (2d Cir. 2011), affd, 133 S. Ct. 721 (2013) ..................................................10, 12
Orion Elec. Co., Ltd. v. Funai Elec. Co., Ltd.,
No. 01 Civ. 3510 (AGS) (JCF), 2001 U.S. Dist. LEXIS 19218 (S.D.N.Y. Nov.
26, 2001) ....................................................................................................................................9
Peter F. Gaito Architecture, LLC v. Simone Dev. Corp.,
602 F.3d 57 (2d Cir. 2010).....................................................................................................5, 6
Petrella v. Metro-Goldwyn-Mayer, Inc.,
134 S. Ct. 1962 (2014) .............................................................................................................25
Point Prods. A.G. v. Sony Music Entmt, Inc.,
215 F. Supp. 2d 336 (S.D.N.Y. 2002)......................................................................................21
Price v. Fox Entmt Group, Inc.,
473 F. Supp. 2d 446 (S.D.N.Y. 2007)......................................................................................20

iv

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 6 of 33

Ruotolo v. City of New York,

514 F.3d 184 (2d Cir. 2008).......................................................................................................6
Salerno v. City Univ. of N.Y.,
191 F. Supp. 2d 352 (S.D.N.Y. 2001)......................................................................................25
Samara Bros., Inc. v. Wal-Mart Stores, Inc.,
165 F.3d 120 (2d Cir. 1998) revd on other grounds, 529 U.S. 205 (2000) ............................16
Santa-Rosa v. Combo Records,
471 F.3d 224 (1st Cir. 2006) ....................................................................................................23
Schutte Bagclosures Inc. v. Kwik Lok Corp.,
48 F. Supp. 3d 675 (S.D.N.Y. 2014)..........................................................................................7
Senisi v. John Wiley & Sons, Inc.,
No. 13-cv-1314, 2014 U.S. Dist. LEXIS 44027 (S.D.N.Y. Mar. 28, 2014) ..............................6
Shema Kolainu-Hear Our Voices v. ProviderSoft, LLC,
832 F. Supp. 2d 194 (E.D.N.Y. 2010) .....................................................................................18
Smith v. Educ. People, Inc.,
No. 05-2971-cv, 2008 U.S. App. LEXIS 5988 (2d Cir. Mar. 20, 2008) .................................24
Stadt v. Fox News Network LLC,
719 F. Supp. 2d 312 (S.D.N.Y. 2010)..........................................................................16, 17, 21
Stewart v. Abend,
495 U.S. 207 (1990) .................................................................................................................12
Stone v. Williams,
970 F.2d 1043 (2d Cir. 1992).............................................................................................24, 25
Streck, Inc. v. Research & Diagnostic Sys., Inc.,
665 F.3d 1269 (Fed. Cir. 2012)................................................................................................10
United States v. Juvenile Male,
131 S. Ct. 2860 (2011) ...............................................................................................................8
Velvet Underground v. Andy Warhol Found. for the Visual Arts, Inc.,
890 F. Supp. 2d 398 (S.D.N.Y. 2012)........................................................................8, 9, 10, 13
Wells v. Universal Pictures Co.,
166 F.2d 690 (2d Cir. 1948).....................................................................................................11
Wembley, Inc. v. Superba Cravats, Inc.,
315 F.2d 87 (2d Cir. 1963).........................................................................................................9

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 7 of 33

Xerox Corp. v. Apple Computer, Inc.,

734 F. Supp. 1542 (N.D. Cal. 1990) ..............................................................................7, 11, 12
Statutes
17 U.S.C. 102 ........................................................................................................................14, 15
17 U.S.C. 103 ..............................................................................................................................14
17 U.S.C. 115 ...................................................................................................................... passim
17 U.S.C. 301 ..................................................................................................................14, 19, 23
17 U.S.C. 303(b) ...........................................................................................................................3
17 U.S.C. 501 ..............................................................................................................................12
17 U.S.C. 507 ..............................................................................................................................24
Copyright Act......................................................................................................................... passim
Declaratory Judgement Act (28 U.S.C. 2201 et seq.) ......................................................... passim
N. Y. Gen. Bus. Law 349 ................................................................................2, 15, 16, 17, 18, 19
Rules
Fed. R. Civ. P. 8 .............................................................................................................................24
Fed. R. Civ. P. 9(b) ........................................................................................................................24
Fed. R. Civ. P. 12(b)(1)................................................................................................................1, 6
Fed. R. Civ. P. 12(b)(6)............................................................................................................1, 3, 5
Other Authorities
Melville B. Nimmer and David Nimmer, Nimmer on Copyright,......................................... passim
U.S. Const. Art. III ...............................................................................................................6, 11, 12

vi

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This memorandum of law is respectfully submitted on behalf of Defendants The Richmond

Organization, Inc. and Ludlow Music, Inc. (collectively Defendants), in support of their
motion for an order under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6) dismissing the
Class Action Complaint for lack of subject matter jurisdiction and for failure to state a claim.
PRELIMINARY STATEMENT
Plaintiffs JAMES SAINT-AMOUR and ALENA IVLEVA a/k/a JERRA BLUES, doing
business as SATORII (collectively, Satorii or Plaintiffs) bring this purported class action on
behalf of themselves and a putative class of licensees of the musical composition This Land is
Your Land (the Song or TLIYL), seeking a declaratory judgment that Defendants do not own
a valid copyright to the Song and further seeking the return of licensing fees collected by
Defendants pursuant to their copyrights to the Song. Plaintiffs allege that the Songs author,
Woody Guthrie (Guthrie), published the Song in 1945 in a songbook entitled Ten 10 of
Woody Guthries Songs Book One (10 Songs) with a proper copyright notice, which, because
it was not renewed 28 years later, caused the Song to fall in to the public domain in 1973.
Complaint (Compl.) 12, 24. Plaintiffs allege that the 1956 copyright in the Song registered
by Defendant Ludlow Music, as well as each of the subsequent copyright registrations for
derivative works of the Song in 1958, 1970 and 1972, were invalid because each registration
failed to disclose the 1945 alleged publication and because they allege that Guthrie did not write
the melody of the Song. See id. at 35-40; 48-50; 54-55. Plaintiffs also allege that three record
albums specifically, the liner notes accompanying these albums released by a non-party,
Folkways Records purportedly divested Defendant Ludlow of its four copyrighted versions of
the Song, or at least portions of the Song. Plaintiffs allege in the alternative that Defendants
rights are, at most, limited to the arrangement, accompaniment or obscure alternate verses
contained in each of the respective registrations. See id. at 82-86.

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 9 of 33

The Complaint contains two causes of action for declaratory relief Count 1 seeks a
declaration under the Copyright Act that the Song is in the public domain; Count 2, expressly
dependent upon the entry of a declaratory judgment on Count 1, seeks an injunction preventing
Defendants claims to ownership of copyrights in the Song and restitution for licensees of the
Song. Similarly, Counts 3 through 6 are state law claims dependent on a finding that the
copyrights are invalid. These state law claims are for deceptive acts and practices under New
York General Business Law (GBL) 349 (Count 3), breach of contract (Count 4), money had
and received (Count 5) and rescission for failure of consideration (Count 6).
This Court lacks subject matter jurisdiction over this case because Plaintiffs have not
alleged an adequate basis for standing to assert a claim that arises under the Copyright Act.
Plaintiffs asserted basis for subject-matter jurisdiction is that they are entitled under the
Declaratory Judgement Act (28 U.S.C. 2201 et seq.) to seek declaratory relief arising under the
Copyright Act (and supplemental jurisdiction over the entire case or controversy over the
remaining claims). Compl. 1. Plaintiffs have no standing to affirmatively raise a claim of
invalidity of the copyrights in the Song. First, there is no active case or controversy here because
Plaintiffs have merely obtained a compulsory statutory mechanical license pursuant to 17 U.S.C.
115 and have not alleged any contact whatsoever with Defendants, much less a reasonable
apprehension of a suit (or threatened suit) for copyright infringement. Second, neither the
Copyright Act, nor any controlling decisional law provides for the affirmative relief Plaintiffs
seek here (at least in the absence of any threat of a claim of infringement by Defendants).
The only specific allegation regarding Plaintiffs is that they obtained a compulsory
mechanical license to produce and distribute 500 copies of a version of the Song as a digital
phonorecord. Id. 60. Plaintiffs allege they cannot risk releasing a different version of This

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 10 of 33

Land that they recorded using a completely different melody but the same disputed lyrics,(id.
61), and that they desire to produce a music video of the Song but cannot because then,
Defendants could sue for copyright infringement (if Defendants disputed claims were upheld).1
Id. There is no allegation that Plaintiffs have been threatened by Defendants or have ever even
communicated with Defendants. Plaintiffs payment of $45.50 for a compulsory mechanical
license does not give them standing to challenge the validity of Defendants copyrights.
Even if this Court finds that Plaintiffs do have standing, their claims unquestionably arise
under federal copyright laws and their multiple state law claims improperly attempt to expand
the scope of relief. The state law claims must be dismissed as preempted by the Copyright Act
and/or dismissed for failure to state a claim under Rule 12(b)(6).2
Plaintiffs supplemental state law claims must be dismissed because they are preempted by
the Copyright Act and because they fail to state claims for relief. Each one of the state law
claims depends on a finding under copyright law that Defendants do not own some portion of the
copyrighted versions of the Song. While this Court can decline to exercise supplemental
jurisdiction over these claims, it can also find as a matter of law that they are preempted because
1

Plaintiffs have not requested to use only the melody of the Song and thus they have no standing to challenge
whether the melody of the Song was original to Guthrie. In any event, a copyright may be had in the arrangement of
a public domain song or the words and music together. See Melville B. Nimmer and David Nimmer, Nimmer on
Copyright (hereafter, Nimmer), 2.05.
2
If this case is not dismissed at the pleading stage, Defendants will demonstrate at summary judgment that
Plaintiffs declaratory relief claims fail under the federal copyright laws. The prima facie valid copyright
registrations of the Song in 1956, 1958, 1970 and 1972 registered and owned by Ludlow Music contain versions of
the Song that are sufficiently original and distinguishable from the prior version of the Song alleged in the
Complaint that may be in the public domain. Moreover, despite Plaintiffs conclusory allegation that 10 Songs was
published and offered for sale to the general public, as a general publication of that work (Compl. 24-25),
there is no plausible pleading that this songbook was actually offered for sale to the general public, and Defendants
are confident that the evidence (to the extent Plaintiffs are able to demonstrate standing and proceed with this case)
will confirm that there was no general publication. Furthermore, the allegedly divesting publications of the liner
notes cannot divest the copyrights in the Song under statutory and decisional law. As a result of the adoption by
Congress of Section 303(b) of the Copyright Act, the pre-1978 distribution of a phonorecord shall not for any
purpose constitute a publication of any musical work, dramatic work, or literary work embodied therein. 17
U.S.C. 303(b) (2010) (emphasis added). As the liner notes cited in the Complaint were necessarily distributed
with phonorecords, the plain meaning of this statutory language suggests that these liner notes would not be
considered divesting publications; to find otherwise would undercut the policy of Section 303(b).

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 11 of 33

none of the supplemental claims are qualitatively different from the copyright claims
underlying the declaratory judgment claims (Counts 1 and 2 of the Complaint). Finally, the
Court should order that even to the extent the Declaratory Judgment claims survive, Plaintiffs
and any putative class members cannot recover damages beyond the three-year limitations period
contained in the Copyright Act.
FACTUAL BACKGROUND
Plaintiffs do not challenge the fact that the Copyright Office issued copyright registrations
for the Song in 1956 (EU432559), 1958 (EP126345), 1970 (EP276540) and 1972 (EP301279).
The Complaint alleges that Guthrie wrote the Songs lyrics in or about 1940 and that he
published the Song with a proper copyright notice in 1945 in 10 Songs, which contained the
popular verses. Compl. 12, 15, 21. Plaintiffs allege in conclusory fashion that Guthrie
offered 10 Songs for sale to the general public and sold copies of 10 Songs to the general public,
as a general publication of that work, including This Land. Id. at 25. The songbook contained
a notice Copyright 1945 W. Guthrie. Although it was not registered with the Copyright Office,
the initial term which began on April 3, 1945 allegedly expired on December 31, 1978, (id. at
28), and was not renewed.
Plaintiffs allege that Guthrie recorded This Land for non-party Folkways Records which
released an album in 1951 including the Song with accompanying liner notes that printed the
lyrics without any copyright notice. 23, 31. Notwithstanding Plaintiffs conclusory statement
that the lyrics were previously published in 1945, the lyrics are indisputably different. Compare
id. at 27 with 31. The Complaint alleges in conclusory fashion that Folkways Records
released this album with Guthries permission but does not allege that Guthrie gave permission
to print the lyrics without a notice in the liner notes. See id. at 30.
The Complaint alleges that the 1956 copyright registration by Ludlow was invalid because

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 12 of 33

(a) it failed to disclose that the Song had previously been published by Guthrie in 1945 and that
the lyrics had been published by Folkways Records in 1951 (Compl. 35), and (b) that Guthrie
was not the author of the melody of the composition. Id. at 36. Although the subsequent
copyright registrations in 1958, 1970 and 1972 properly identified new versions of the Song as
derivative works,3 Plaintiffs again allege that they were invalid for the same reasons stated above
(a and b). Id. at 38-40; 46-49; 50-55. The Complaint further alleges that albums released in
1956 and 1961 by Folkways Records again included liner notes which printed the lyrics of the
Song without any copyright notice, and that these albums were released (upon information and
belief) with permission from Defendant Ludlow or Guthrie. Id. at 41-42, 44.
The Complaint alleges that Plaintiffs obtained pursuant to statutory notice under 17
U.S.C. 115, and payment of the sum of $45.50 a compulsory mechanical license to produce
and distribute 500 copies of the Song as digital phonorecords. Compl. 3, 58.
ARGUMENT
I.

Standards on a Motion to Dismiss; Plaintiffs Fail to Plead a Plausible Claim for Relief.
In considering a motion brought under Fed. R. Civ. P. 12(b)(6), a court must accept the

material facts alleged in the Complaint as true and determine whether they raise a right to relief
above the speculative level. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
However, the court is not required to accept as true legal conclusions couched as factual
allegations. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). In the context of copyright infringement
cases, courts in this district have stated that allegations should be deemed true to the extent that
they are consistent with the works themselves. Allen v. Scholastic, Inc., 739 F. Supp. 2d 642,
645 n.1 (S.D.N.Y. 2011) (citing Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602
3

The Complaint essentially concedes that these copyright registrations of TLIYL as derivative works in 1958, 1970
and 1972 were valid, but that the copyrights only covered the specific arrangements and two additional verses in the
1972 copyrighted version. See id. at 82-86.

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 13 of 33

F.3d 57, 64 (2d Cir. 2010)). The works at issue themselves supersede and control contrary
descriptions of them, including any contrary allegations, conclusions or descriptions of the works
contained in the pleadings. Peter F. Gaito, 602 F.3d at 64 (citation and quotations omitted).
In order to avoid dismissal, a complaint must plead enough facts to state a claim to relief
that is plausible on its face. Ruotolo v. City of New York, 514 F.3d 184, 188 (2d Cir. 2008)
(quoting Twombly, 550 U.S. at 570). A plaintiff must provide the grounds for his entitlement to
relief, which requires more than labels and conclusions, and a formulaic recitation of a cause of
actions elements will not do. Twombly, 550 U.S. at 545. Nor does a complaint suffice if it
tenders naked assertion[s] devoid of further factual enhancement. Iqbal, 556 U.S. at 678
(quoting Twombly, 550 U.S. at 557).
II.

This Court Lacks Subject Matter Jurisdiction Over Plaintiffs Declaratory Judgment Act
Claims Because Plaintiffs Have No Standing to Sue for the Requested Relief.
Whether regarded as a matter of constitutional, Article III standing, or statutory standing

under the Copyright Act (and by necessary extension, the Declaratory Judgment Act), the
Plaintiffs do not have standing to bring their asserted claims based on the Copyright Act.
Dismissal of a claim is appropriate under Rule 12(b)(1) when a court lacks subject matter
jurisdiction over a claim. Fed. R. Civ. P. 12(b)(1). A motion brought under Rule 12(b)(1) may
challenge a plaintiffs standing under the Copyright Act, in addition to a claim under the
Declaratory Judgment Act. Senisi v. John Wiley & Sons, Inc., No. 13-cv-1314, 2014 U.S. Dist.
LEXIS 44027, at *10-*11 (S.D.N.Y. Mar. 28, 2014). For the purposes of a Rule 12(b)(1)
motion, the court must accept the Complaints allegations as true but need not draw inferences in
Plaintiffs favor. Id. A declaratory judgment plaintiff bears the burden of proving that there is
an actual controversy. Fina Research, S.A. v. Baroid Ltd., 141 F.3d 1479, 1481 (Fed. Cir. 1998).
In order to have constitutional, Article III standing to bring suit, a plaintiff must present an

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 14 of 33

actual case or controversy to the court. See Alvarez v. Smith, 558 U.S. 87, 92 (2009) ((The
Constitution permits this Court to decide legal questions only in the context of actual Cases or
Controversies.) (citation omitted). The Supreme Court has recently stated that the Declaratory
Judgment Act, in referring to a case of actual controversy essentially subsumes this case or
controversy requirement. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007).
The Declaratory Judgment Act (DJA) provides:
In a case of actual controversy within its jurisdiction, ... any court of the
United States, upon the filing of an appropriate pleading, may declare the
rights and other legal relations of any interested party seeking such
declaration, whether or not further relief is or could be sought.
28 U.S.C. 2201(a). As the MedImmune Court stated, [b]asically, the question in each case is
whether the facts alleged, under all the circumstances, show that there is a substantial
controversy, between parties having adverse legal interests, of sufficient immediacy and reality
to warrant the issuance of a declaratory judgment. MedImmune, 549 U.S. at 127 (internal
citation omitted)). The DJA is not an independent source of federal subject matter jurisdiction,
but rather serves as a procedural vehicle by which other federal claims can be brought. See
Schutte Bagclosures Inc. v. Kwik Lok Corp., 48 F. Supp. 3d 675, 688-689 (S.D.N.Y. 2014) ([I]t
is well established that the DJA does not expand the jurisdiction of the federal courts, and a basis
for subject matter jurisdiction other than the DJA must be found.). Here, the only basis
Plaintiffs plead for their DJA claims is copyright validity. An action for a declaratory judgment
involving the validity of a copyright is justiciable if the plaintiff has a real and reasonable
apprehension of liability caused by the defendants actions. Xerox Corp. v. Apple Computer,
Inc., 734 F. Supp. 1542, 1548 (N.D. Cal. 1990).
While Plaintiffs may have, in some sense, alleged adverse legal interests to Defendants
here, there is insufficient immediacy to warrant the issuance of any declaratory judgment in this

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 15 of 33

case because Plaintiffs face no imminent threat; they have simply obtained a compulsory
mechanical license under 17 U.S.C. 115 and that statutory compulsory license prevents
Defendant from threatening any action. See generally id.; Nimmer 8.04. Nor can there be any
reasonable apprehension caused by Defendants actions because Defendants have not taken any
actions towards or had any communications with Plaintiffs (nor are any pleaded). As explained
below, the Copyright Act does not provide a separate cause of action to licensees to challenge
the validity of a copyright (and the statute enumerates enforceable rights in a variety of other
contexts). Thus, the only way Plaintiffs can viably seek a declaratory judgment is if there is
some imminent threat pleaded for an enumerated claim in the Copyright Act, such as a claim for
infringement, or another type of affirmative claim for a declaratory judgment recognized by the
courts (such as ownership of a copyright, which Plaintiffs do not allege here).
Under the Declaratory Judgment Act, a party who wishes to engage in
conduct that may infringe anothers intellectual property rights may seek a
declaration that those rights are invalid without first exposing itself to liability.
But the dispute must be presented in the context of a specific live grievance
that justifies invoking the protection of the courts to shield the plaintiff against
the defendants actual interference with its legal interests.
Velvet Underground v. Andy Warhol Found. for the Visual Arts, Inc., 890 F. Supp. 2d 398, 404
(S.D.N.Y. 2012) (internal citations and quotation marks omitted). Here, there is no specific
live grievance because Defendants cannot sue for Plaintiffs use of a compulsory mechanical
license and Defendants have not threatened Plaintiffs.
Throughout the litigation, the party seeking relief must have suffered, or be threatened
with, an actual injury traceable to the defendant and likely to be redressed by a favorable judicial
decision. United States v. Juvenile Male, 131 S. Ct. 2860, 2864 (2011). A court may not
maintain a declaratory judgment action when the parties are asking for an advisory opinion,
when the question sought to be adjudicated has been mooted by subsequent developments, and

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 16 of 33

when there is no standing to maintain the action. Velvet Underground, 890 F. Supp. 2d 398, 404
(S.D.N.Y. 2012) (quoting Flast v. Cohen, 392 U.S. 83, 95 (1968)). Courts in this circuit have
found that when a defendant lacks standing to sue a plaintiff for copyright infringement, the
plaintiffs DJA claim seeking a declaration of non-infringement is effectively moot and the court
lacks subject matter jurisdiction over that DJA claim. See John Wiley & Sons, Inc. v. DRK
Photo, 998 F. Supp. 2d 262, 290-291 (S.D.N.Y. 2014) (where court found defendant stock
photography agencys assignments from individual photographers (non-parties) were insufficient
to confer standing on the agency to sue for copyright infringement based on the photographers
works, plaintiff book publishers affirmative DJA claim for non-infringement was moot because
plaintiff did not face imminent threat of infringement suit from defendant agency); Orion Elec.
Co., Ltd. v. Funai Elec. Co., Ltd., No. 01 Civ. 3510 (AGS) (JCF), 2001 U.S. Dist. LEXIS 19218,
at *7-*8 (S.D.N.Y. Nov. 26, 2001) (recognizing that if defendant did not have standing to bring a
claim against the plaintiff, it would not be a proper defendant in a declaratory judgment action).
Similarly, in Velvet Underground, where both plaintiff and defendant claimed rights in an iconic
design, but defendant had given plaintiff a covenant not to sue for infringement of defendants
rights, the court dismissed plaintiffs DJA claim seeking a declaration that defendant had no
copyright in the design because the covenant not to sue vitiates any coercive force that the
[defendants] alleged copyright might have had against [plaintiff] and other parties covered by
the covenant. 890 F. Supp. 2d at 407. While Defendants here may not lack standing to sue for
copyright infringement, as a practical matter, the result is the same because Defendants cannot
sue due to Plaintiffs compulsory license. Moreover, Plaintiffs vague allegations regarding their
desire to produce a music video or release a different version of the Song they recorded are
speculative and insufficiently concrete to serve as a basis for alleged harm. See Wembley, Inc. v.

Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 17 of 33

Superba Cravats, Inc., 315 F.2d 87, 90 (2d Cir. 1963) (stating that a vague and unspecific
desire to practice an invention if a patent should turn out to be invalid smacks too much of the
hypothetical and contingent; further, the fact that plaintiff made its proposed necktie for
purposes of provoking a lawsuit did not suffice to hold that justiciable controversy existed for
DJA claim); Amaretto Ranch Breedables v. Ozimals Inc., 907 F. Supp. 2d 1080, 1086 (N.D. Cal.
2012) (where defendants lacked standing to bring infringement suit, possibility that DJA plaintiff
would face liability on her copyright was too speculative to warrant requested declaration).
In MedImmune, the parties had entered into a patent license agreement after the patentee
notified the petitioner that its patent was being infringed. Although petitioner (licensee) claimed
that the patent was invalid, it continued to make license fee payments under protest, to avoid
respondent patentees threat to have its sales enjoined if it did not make payments. MedImmune,
549 U.S. at 122. The Supreme Court held that there was an actual controversy for petitioners
DJA claim of patent invalidity even in the absence of a reasonable apprehension of imminent
suit but noted that the licensee had presented a sufficient dispute because its avoidance of
imminent injury in paying fees was coerced by the threat of legal action. Id. at 129-32; see also
id. at 122 (noting that licensee received letter from patentee which it considered a clear threat to
enforce the patent and sue for infringement if payment was not made). The Supreme Court did
not dispense with the requirement that there be a specific and immediate dispute between the
parties, with some coercive impact beyond the mere existence of a patent. Velvet Underground,
890 F. Supp. 2d at 406 (discussing MedImmune). Since MedImmune, the Second Circuit has
made clear that the threat of future litigation remains relevant in determining whether an actual
controversy exists. Nike, Inc. v. Already, LLC, 663 F.3d 89, 95-96 (2d Cir. 2011), aff'd, 133 S.
Ct. 721 (2013). See also Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1284

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(Fed. Cir. 2012) (MedImmune does not stand for the proposition that an Article III case or
controversy exists automatically whenever a competitor desires to mount a validity challenge.).
Even after MedImmune, and consistent with previous pronouncements of the legal
standards, a declaratory judgment plaintiff still must allege some threat or specific action by
defendants. See Adirondack Cookie Co. v. Monaco Baking Co., 871 F. Supp. 2d 86, 92
(N.D.N.Y. 2012) ([A] justiciable controversy requires some affirmative act by the [declaratory
defendant], such as creating a reasonable apprehension of an infringement suit, demanding the
right to royalty payments, or creating a barrier to the regulatory approval of a product that is
necessary for marketing.)) (citation omitted). Because Plaintiffs have alleged no affirmative
action by Defendants, there is no substantial controversy here and the Court cannot exercise
subject matter jurisdiction over this claim. See Wells v. Universal Pictures Co., 166 F.2d 690,
692 (2d Cir. 1948) (finding that appellant could not claim jurisdiction under Declaratory
Judgment Act where there was no allegation that the copyright holder had asserted his copyright
would be infringed or even threatened an infringement suit); Xerox Corp, 734 F. Supp. at 1546
(finding plaintiff failed to allege actual controversy for DJA claim regarding validity of
copyright where plaintiff did not allege any threat of suit for infringement or other actions by
defendant that could cause plaintiff reasonable apprehension of liability).
In contrast to Plaintiffs counsels previous case regarding the song Happy Birthday to
You, the actual Plaintiffs here had no direct contact with Defendants, were not asked to pay a
license fee for use of the Song, and were not denied a request to use the Song in any medium.
Cf. Marya v. Warner/Chappell Music, Inc., 131 F. Supp. 3d 975, 983 (C.D. Cal. 2015) (noting
threat of infringement suit). Plaintiffs claimed harm both for the completely theoretical threat
of an infringement suit and for the theoretical claim of their inability to release a song with the

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same lyrics but a different tune is not sufficiently imminent to give them a right to relief. See
Nike, Inc. v. Already, LLC, 663 F.3d 89, 95-96 (2d Cir. 2011) (explaining that MedImmune
requires that there be a real and substantial adversity of legal interests).
Even if Plaintiffs did have Article III standing, there is nothing in the Copyright Act which
gives a licensee a cause of action to affirmatively sue a copyright owner for a declaratory
judgment of invalidity. See Xerox, 734 F. Supp. at 1549 (Viewing the Copyright Act as a
whole, it is apparent that Congress intended that aggrieved copyright holders find their remedies
exclusively in 501-510.). Copyright is a creature of statute. Stewart v. Abend, 495 U.S.
207, 251 (1990). Congress has the power to define standing as to a particular cause of action
more narrowly than what is constitutionally permitted. Authors Guild, Inc. v. Hathitrust, 902 F.
Supp. 2d 445, 451-452 (S.D.N.Y. 2012) revd, 755 F.3d 87 (2d Cir. 2014). The Copyright Act
does not explicitly provide an affirmative cause of action to licensees to challenge the validity of
a copyright, neither generally, nor specifically in Section 115. In fact, the compulsory
mechanical license obtainable under Section 115 is a nonexclusive license. See 17 U.S.C.
115(c)(3)(B); Nimmer 8.04[B]. Such a nonexclusive license does not make a licensee the legal
or beneficial owner of any exclusive right under the Copyright Act, and the Copyright Act
generally restricts standing to those holding or claiming exclusive rights in a copyright. See ItarTass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 92 (2d Cir. 1998) (United
States law permits suit only by owners of an exclusive right under a copyright . . . ." (quoting
17 U.S.C. 501(b)). By contrast, here Plaintiffs seek to become private attorneys general and
without any claim of copyright ownership police the decades-old grant of copyright protection
against Defendants with whom they have no live controversy.
Courts in this circuit and beyond have dismissed attempts to bring affirmative claims under

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the Copyright Act which are not enumerated in the Act or not ripe for adjudication. See Lennon
v. Seaman, 84 F. Supp. 2d 522, 526 (S.D.N.Y. 2000) (dismissing fraud on the copyright office
claim which sought declaratory relief when there could not have been any possible reliance on
alleged misstatements and on ripeness grounds); see also DSC Commcns Corp. v. Pulse
Commcns, Inc., 170 F.3d 1354, 1368 (Fed. Cir. 1999) (dismissing copyright misuse claim on
ground that such a claim was principally a defense to copyright enforcement and inappropriately
brought when copyright claims had been dismissed); Amaretto Ranch Breedables, 907 F. Supp.
2d at 1085-86 (dismissing copyright misuse claim as nothing more than declaratory relief which
can only be asserted as a defense).
Finally, even if there were a basis for standing, this Court should exercise its discretion to
dismiss this case. The Declaratory Judgment Act has long been understood to confer on federal
courts unique and substantial discretion in deciding whether to declare the rights of litigants.
MedImmune, 549 U.S. at 136 (emphasis added). See also id. at 136-37 (noting that lower court
on remand should consider equitable, prudential and policy arguments in favor of discretionary
dismissal and meritsbased arguments in favor of denial). The Second Circuit has provided two
factors for courts to consider in the discretionary analysis of DJA claims: (1) when the
judgment will serve a useful purpose in clarifying and settling the legal relations at issue; and (2)
when it will terminate and afford relief from the uncertainty, insecurity and controversy giving
rise to the proceeding. Velvet Underground, 890 F. Supp. 2d at 411 n. 6 (citation omitted).
As a matter of policy, the Court should consider the implications of granting Plaintiffs
standing to bring suit for a declaratory judgment under the Copyright Act to invalidate a sixtyyear-old copyright on the strength of the filing of a Notice of Intention to Obtain a Compulsory
Mechanical License and the payment of $45.50 for the distribution of 500 copies of a work. As

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the Complaint reflects, the current rate for a compulsory mechanical license under Section 115 is
9.1 cents per copy. Taken to its logical extreme, the principle Plaintiffs are asking this Court to
endorse, is that anyone wishing to record a version of a copyrighted song, by, for instance,
singing into a voice-recording application on their cellular phone and sending a check for 9.1
cents (along with a Notice) to a copyright owner or the Copyright Office (see 17 U.S.C. 115),
could thereby challenge any historical copyright of their choosing in federal court. Beyond the
fact that there is no statutory support in the Copyright Act for the type of claim Plaintiffs are
attempting to bring here, the practical effect of a ruling that such a claim is viable would put all
songwriters and the entirety of the music industry at risk of unimaginable harassment.
III.

Even if Plaintiffs Copyright Claims are Sustained, Plaintiffs Remaining State Law Claims
are Preempted by the Copyright Act.
Section 301(a) of the Copyright Act provides that certain types of rights are governed

exclusively by this title, and that equivalent state law rights are preempted. 17 U.S.C. 301(a)
(emphasis added). The Second Circuit has set forth a two-part test to govern the preemption
inquiry under Section 301(a) a state law claim is preempted if it (i) seeks to vindicate legal or
equitable rights that are equivalent to one of the bundle of exclusive rights already protected
under section 106 the general scope requirement; and (ii) if the work in question is of the
type protected under sections 102 and 103 of the Copyright Act the subject matter
requirement. Barclays Capital Inc. v. Theflyonthewall.com, Inc., 650 F.3d 876, 892 (2d Cir.
2011). Rights falling under the general scope of copyright afford a copyright owner the
exclusive right to: (1) reproduce the copyrighted work; (2) prepare derivative works; (3)
distribute copies of the work by sale or otherwise; and, with respect to certain artistic works, (4)
perform the work publicly; and (5) display the work publicly. Id. at 893 (quoting Computer
Assocs. Intl, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992)).

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Certain state law claims may survive preemption if an extra-element test is met
namely, if an extra element is required instead of or in addition to the acts of reproduction,
performance, distribution, or display. Barclays Capital, 650 F.3d at 893 (citing Altai, 982 F.2d
at 716)) (further citation omitted). The Second Circuit takes a restrictive view of what extra
elements transform an otherwise equivalent [state law] claim into one that is qualitatively
different from a copyright infringement claim. Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc.,
373 F.3d 296, 306 (2d Cir. 2004). Awareness or intent are not extra elements that make a
state law claim qualitatively different. Id. However, a state law claim is qualitatively different
if it requires such elements as breach of fiduciary duty or possession or control of chattels. Id.
There can be no question that the subject matter requirement is met here. The types of
works protected by the Copyright Act include, inter alia, musical works, including any
accompanying words. 17 U.S.C. 102(a). A work need not consist entirely of copyrightable
material in order to meet the subject matter requirement, but instead need only fit into one of the
copyrightable categories in a broad sense. Briarpatch, 373 F.3d at 305. Thus, because Plaintiffs
are challenging the validity of the copyrights in a song (i.e., a musical work), even if some
portion of that song were in the public domain (such as the melody, as Plaintiffs allege), the
subject matter requirement is nevertheless met. See id. Furthermore, each of the state law
claims seeks to vindicate exclusive rights protected by Section 106.
A.

Plaintiffs claim for deceptive acts and practices under GBL 349 is preempted by
the Copyright Act.

Section 349 of the New York General Business Law is a consumer protection statute.
Levine v. Landy, 832 F. Supp. 2d 176, 192 (N.D.N.Y. 2011). The statute provides that deceptive
acts or practices in the conduct of any business, trade or commerce or in the furnishing of any
service in this state are unlawful. N.Y. Gen. Bus. Law 349 (a).

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Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 23 of 33

The only purportedly deceptive act alleged by Plaintiffs underlying this claim is that
Defendants claimed to own a copyright to the melody and well-known lyrics of This Land
when they allegedly did not -- either because the copyrights covered only specific arrangements
and obscure new lyrics (as opposed to the well-known lyrics) or because the copyrights were
allegedly forfeited in 1951, 1961 or 1973. Compl. 98. This claim is explicitly based on
copyright validity and is not qualitatively different from the copyright claims underlying the
declaratory judgment counts.
Plaintiffs will undoubtedly argue that the allegedly deceptive acts or materially false
and misleading statements (see id. at 97-98, 101) constitute additional elements saving this
claim from preemption. Cf Samara Bros., Inc. v. Wal-Mart Stores, Inc., 165 F.3d 120, 131 (2d
Cir. 1998) (finding a claim under 349 not preempted by the Copyright Act because it contained
the additional element of intentional deception which court characterized as actual deceptive
effect on consumers) revd on other grounds, 529 U.S. 205 (2000). But the Second Circuit has
also held that [a]wareness or intent are not extra elements that make a state law claim
qualitatively different. Briarpatch, 373 F.3d at 306. And at least one district court in this circuit
has held that a 349 claim is preempted when a plaintiff alleges harm squarely covered by
federal copyright law such as that arising from the copying of a design. Eyal R.D. Corp. v.
Jewelex N.Y. Ltd., 784 F. Supp. 2d 441, 449 (S.D.N.Y. 2011). See also Stadt v. Fox News
Network LLC, 719 F. Supp. 2d 312, 324 (S.D.N.Y. 2010) (holding unfair competition claim
preempted and casting doubt on continuing viability of Samara Bros. preemption holding given
subsequent decisions in U.S. Supreme Court and S.D.N.Y. holding reverse passing-off claims
preempted); Atrium Group de Ediciones y Publicaciones, S.L. v. Harry N. Abrams, Inc., 565 F.
Supp. 2d 505, 509-510 (S.D.N.Y. 2008) (rejecting claim that alleged deception could

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constitute extra element sufficient to avoid preemption because deception is not the sort of
element that would cause claims for unjust enrichment or misappropriation to be qualitatively
different from the Federal Copyright Act).
Here, Plaintiffs 349 claim is based on the allegation that Defendants allegedly false
claim of copyright ownership constitutes unfair competition. See Compl. 113 (seeking
restitution of money that Defendants collected as a result of unfair competition). The Second
Circuit and district courts in this circuit routinely hold that unfair competition claims are
preempted by the Copyright Act. See, e.g., Cabell v. Sony Pictures Entmt, Inc., 425 Fed. Appx
42, 43 (2d Cir. 2011) (holding unfair competition claim based solely on copying protected
expression preempted and citing Kregos v. Associated Press, 3 F.3d 656, 666 (2d Cir. 1993));
Altai, 982 F.2d at 717 (same); Levine, 832 F. Supp. 2d at 191-192 (holding unfair competition
claim based on unauthorized use of photographs preempted); Eyal R.D. Corp., 784 F. Supp. 2d at
447; Stadt, 719 F. Supp. 2d at 322; Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp.
2d 625, 637 (S.D.N.Y. 2008); Am. Movie Classics Co. v. Turner Entmt Co., 922 F. Supp. 926,
933-34 (S.D.N.Y. 1996). It bears noting that there is no alleged special or fiduciary relationship
between plaintiffs and defendants that might defeat preemption of this claim; entering in to a
license agreement establishes only a business relationship (rather than a fiduciary one).
BanxCorp v. Costco Wholesale Corp., 723 F. Supp. 2d 596, 617-18 (S.D.N.Y. 2010).
B.

Even if not preempted, the Complaint fails to state a GBL 349 claim.

A plaintiff alleging a claim under 349 must plead and prove that (1) the defendants
deceptive acts were directed at consumers, (2) the acts are misleading in a material way, and (3)
the plaintiff has been injured as a result. Stadt, 719 F. Supp. 2d at 319 (quoting Maurizio v.
Goldsmith, 230 F.3d 518, 521 (2d Cir. 2000)) (emphasis added). For the statute to apply, a
plaintiff must establish a direct harm to consumers that is greater than the general consumer

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confusion commonly found in trademark actions. Eliya, Inc. v. Kohl's Dep't Stores, No. 06Civ-195 (GEL), 2006 U.S. Dist. LEXIS 66637, at *22 (S.D.N.Y. Sept. 13, 2006) (citation
omitted). Consumers in this context are defined as those who purchase goods and services for
personal, family or household use. Shema Kolainu-Hear Our Voices v. ProviderSoft, LLC, 832
F. Supp. 2d 194, 204 (E.D.N.Y. 2010) (internal citations omitted). Courts in the Southern
District have explained that the sort of harm necessary to establish consumer injury includes
harms such as potential danger to the public health or safety. Eliya, 2006 U.S. Dist. LEXIS
66637, at *23 (quoting Gucci Am., Inc. v. Duty Free Apparel. Ltd., 277 F. Supp. 2d 269, 273
(S.D.N.Y. 2003) (collecting cases)). Where the only alleged harm is that which is generally
associated with violations of intellectual property law, courts in this district have found that
plaintiffs cannot state a claim under 349. Id. See also Maurizio, 230 F.3d at 522 (holding that
representation that defendant was sole author of book did not state claim under 349 because
such conduct does not implicate New Yorks consumer protection provisions); Levine, 832 F.
Supp. 2d at 192 (holding allegation of harm to consumers from misleading the public as to the
true origin and authorship of photographs insufficient to state a 349 claim).
Plaintiffs do not adequately plead a violation of the statute because there is no plausible (or
even specific, non-conclusory) allegation of harm to consumers, and no specific deceptive acts
alleged. The only mention of harm to consumers are conclusory allegations that they might be
deceived about the allegedly limited scope and validity of Defendants copyright to the Song
or whether Defendants in fact owned a copyright to the Songs melody or lyrics. Compl.
105, 106. These allegations are not directed to the potential danger to the public health or
safety meant to be addressed by the statute, Eliya, Inc., supra, at *22, and there is no implication
of harm regarding goods or services for personal, family or household use. Shema-Kolenu, 832

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Case 1:16-cv-04464-DAB Document 18 Filed 09/02/16 Page 26 of 33

F. Supp. 2d at 204. These allegations cannot sustain a claim under 349. See id. (citing cases).4
C.

Plaintiffs claim for breach of contract is preempted by the Copyright Act.

Plaintiffs breach of contract claim is based on the allegations that Defendants implicitly
represented and warranted that they own the copyright to the Song by Plaintiffs entering in to a
compulsory mechanical license for the Song. Compl. 115. Plaintiffs do not specify how they
entered into this compulsory license other than stating that they sent a statutory notice and paid
the sum of $45.50 to Defendants pursuant to 17 U.S.C. 115. Id. 3.5 As is clear from these
brief allegations, the breach of contract claim is completely dependent upon Plaintiffs allegation
that the copyrights are invalid. Indeed, this claim is quintessentially suited for preemption
because here, the only contract that Plaintiffs can conceivably allege was breached was the
compulsory mechanical license provided by 17 U.S.C. 115 (as part of the federal statutory
scheme of copyright). The entire relationship between Plaintiffs and Defendants here is a
function of this federal statutory scheme which on its face preempts state law. 17 U.S.C. 301.
It would make little sense to apply state decisional law to a statutorily-created quasi-contract
creature of federal law.
While courts in this district have disagreed on how to analyze preemption of breach of
contract claims (see Canal+ Image UK, Ltd. v. Lutvak, 773 F. Supp. 2d 419, 441-46 (S.D.N.Y.
2011) (citing cases)), several cases have held that such claims are preempted if they are not
4

Plaintiffs also cannot meet the third element of a 349 claim that Plaintiffs were injured as a result of
Defendants allegedly deceptive acts because the named Plaintiffs could not have relied on any purported
deception. Plaintiffs had no interaction whatsoever with Defendants. Plaintiffs allege that they simply (and
voluntarily) provided a Notice of Intention to Obtain Compulsory License to Defendants and paid them the sum of
$45.50 for a compulsory mechanical license to produce and distribute 500 copies of the Song as a digital
phonorecord (Compl. 58), under a disputed claim of copyright ownership by Defendants. Id. at 3. Plaintiffs
cannot show that any allegedly deceptive act caused their loss, because they were not even allegedly deceived.
5
There is no allegation that Defendants accepted this payment. Section 115 provides that a person may serve a
Notice of Intention to Obtain Compulsory License on the copyright owner, or if the registration or other public
records of the Copyright Office do not identify the copyright owner and include an address, the person may file the
notice of intention in the Copyright Office. 17 U.S.C. 115(b). Section 115 does not state that the copyright owner
impliedly represents that the copyright is valid to any person who pays a compulsory license fee to the owner.

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qualitatively different from a copyright claim. See, e.g., id. at 446 (holding breach of contract
claim preempted where claim merely alleged that defendants committed an act adapting a
copyrighted film outside an exclusive licensing period that would, by itself, infringe one of the
exclusive rights provided by federal copyright law); BroadVision Inc. v. Gen. Elec. Co., No. 08CV-1478, 2008 U.S. Dist. LEXIS 81863, at *10-*11 (S.D.N.Y. Oct. 15, 2008) (holding contract
claim based on allegation that defendants had used plaintiffs software in ways not permitted by
license agreement preempted); Price v. Fox Entmt Group, Inc., 473 F. Supp. 2d 446, 460-61
(S.D.N.Y. 2007) (finding breach of contract claim based on authors failure to pay profits and
attribute passages to plaintiff preempted); Am. Movie Classics, 922 F. Supp. at 931 ([A] breach
of contract claim is preempted if it is merely based on allegations that the defendant did
something that the copyright laws reserve exclusively to the plaintiff (such as unauthorized
reproduction, performance, distribution or display.)).
Here, the Plaintiffs paid a compulsory license fee and it is alleged that Defendants did
something that the copyright laws reserve exclusively to the Defendants namely, received (to
the extent the Plaintiffs allegation of having paid the sum of $45.50 to Defendants implies that
Defendants received such sum) the compulsory license fee per Section 115. The necessary
corollary of this action Plaintiffs claim that they should not have had to pay the statutorily
prescribed compulsory license fee would, by itself, infringe one of the exclusive rights
provided by federal copyright law. Canal+ Image UK, 773 F. Supp. 2d at 446 (quoting
Briarpatch Ltd., 373 F.3d at 305). In any event, there is no extra element to this claim, i.e., no
separate promise to pay; the contract itself exists entirely by operation of the Copyright Act.
Cf. Forest Park Pictures v. Universal Television Network, Inc., 683 F.3d 424 (2d Cir. 2012)
(breach of contract claim not preempted where based on an implied promise to pay for use of

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ideas and rights asserted only against contractual counterparty, rather than the public at large);
Compl. 7 (seeking declaration that Song is dedicated to public use and in the public domain).
Plaintiffs claim for breach of contract also fails to plausibly state a claim. Under New
York law, to establish a breach of contract, a plaintiff must show (1) the existence of an
agreement, (2) adequate performance of the contract by the [claimant], (3) breach of contract by
the [accused], and (4) damages. Stadt, 719 F. Supp. 2d at 318 (internal quotation and citation
omitted). Plaintiffs have not sufficiently alleged that Defendants breached any contract because
Plaintiffs concede (in the alternative at the very least) (1) that Ludlow has valid copyrights in the
specific arrangements included in the 1958, 1970 and 1972 registrations and (2) that Plaintiffs
sought to license TLIYL, as opposed to a predecessor version, This Land, included in the 1945
songbook 10 Songs. Ludlows 1958, 1970, and 1972 copyrights were explicitly for derivative
works based on a previous registration for TLIYL. See Compl. 37, 46-52. The compulsory
license obtained by the Plaintiffs did not dictate what part of the song Plaintiffs could use. If
Plaintiffs chose to use only public domain elements rather than the original expression in the
derivative works, then they would not need to pay a fee to license the Song, but any damages
they would suffer as a result of not using the protectable elements after having paid for same,
would not be attributable to any breach by Ludlow. See Point Prods. A.G. v. Sony Music
Entmt, Inc., 215 F. Supp. 2d 336, 341-42 (S.D.N.Y. 2002) (Plaintiff cannot recover [for breach
of contract] if it would have suffered harm regardless of defendants actions.). If Ludlow owns
a valid copyright in the Song no matter what the scope of the protectable rights therein may be
Plaintiffs cannot plausibly complain that they were forced to enter a statutory license for the
Song, which Plaintiffs obviously sought out on their own, without negotiating directly with
Ludlow. See Compl. 58. Plaintiffs cannot plausibly claim that they did not receive

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consideration (the right to use a validly copyrighted work) for their fee.
D.

The claim for money had and received is a quasi-contract claim that is preempted by
the Copyright Act; In any event, this claim should be dismissed as duplicative.

Under New York law, claims for unjust enrichment, and money had and received, are
recognized as actions in implied or quasi-contract. Gem Advisors, Inc. v. Invu, Inc., No. 01Civ-1340, 2002 U.S. Dist. LEXIS 5371, at *17-*18 (S.D.N.Y. Mar. 26, 2002) (citations
omitted). As the Second Circuit stated in Forest Park Pictures, quasi-contract claims, wherein a
plaintiff need only prove that the defendant was unjustly enriched through the use of her idea or
work are not materially different from copyright infringement claims and are thus properly
preempted by the Copyright Act. Forest Park Pictures, 683 F.3d at 432. See also Nimmer
19D.03[B][7] (stating that quasi-contract refers to an obligation imposed by law to avoid unjust
enrichment and that such claims are as pre-empted as an actual unjust enrichment claim);
Briarpatch, 373 F.3d at 306 (finding unjust enrichment claim preempted).
In any event, the money had and received claim must be dismissed on the merits because
the Plaintiffs allege the existence of an actual contract the compulsory license. See Indep.
Order of Foresters v. Donald, Lufkin, & Jenrette, Inc., 157 F.3d 933, 940 (2d Cir. 1998)
(affirming dismissal of money had and received claim where there was a valid contract between
the parties covering the matter).
E.

Plaintiffs claim for rescission should be preempted; Alternatively, the Complaint

fails to state a plausible claim for rescission.

Rescission is an equitable remedy for the breach of a contract. Because the claim for
breach of contract should be preempted by the Copyright Act, the claim for rescission should be
subject to the same analysis. See Am. Movie Classics Co., 922 F. Supp. at 932 n.5 (rejecting
argument that a difference in damages claimed for the same basic wrong can change the
preemption analysis and finding breach of contract claim preempted). The only allegations

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regarding rescission in the Amended Complaint allege in conclusory fashion that Defendants
purported licenses were worthless and ineffective and do not constitute valid consideration
(Compl. 122) and that Plaintiffs are entitled to rescind their license agreements with
Defendants and obtain a return of all the money previously paid thereunder. Id. 123. As with
the other claims, the only possible basis for the allegations regarding the worthless licenses
and lack of consideration is the purportedly invalid copyrights. There is nothing qualitatively
different about this claim. See Santa-Rosa v. Combo Records, 471 F.3d 224, 227 (1st Cir.
2006) (Because Santa-Rosa seeks rescission of his contract, if we were to grant him the relief
that he sought, we would be required to determine his ownership rights by reference to the
Copyright Act. As such, 17 U.S.C. 301(a) preempts Santa Rosas rescission claim.).
Under New York law, [i]n order to justify the intervention of equity to rescind a contract, a
party must allege fraud in the inducement of the contract; failure of consideration; an inability to
perform the contract after it is made; or a breach in the contract which substantially defeats the
purpose thereof. Babylon Assocs. v. County of Suffolk, 101 A.D.2d 207, 215 (2d Dept 1984).
Generally, rescission is available where a party lacks a complete and adequate remedy at law and
where the status quo may be substantially restored. Alper v. Seavey, 9 A.D.3d 263, 264 (1st Dept
2004) (quotation omitted). Rescission in New York is an extraordinary remedy, appropriate
only where the breach is found to be material and willful, or, if not willful, so substantial and
fundamental as to strongly tend to defeat the object of the parties in making the contract.
Krumme v. WestPoint Stevens Inc., 238 F.3d 133, 143 (2d Cir. 2000) (quotation omitted).
Plaintiffs have not stated a claim for rescission because they have not alleged fraud in the
inducement of the contract, nor any other potentially applicable theory, with any specificity.
Although it is not particularly clear (due the paucity of allegations related to the claim), the

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rescission claim appears to be based on fraud. See, e.g., Compl. 105 (alleging deceptive
practices and concealments, omissions and misstatements of material facts about the limited
scope and validity of Defendants copyright to the Song); 107; 121. Nowhere does the
Complaint specify even a single alleged misrepresentation or misstatement[] of material fact
by the Defendants. A claim for rescission based on fraud is subject to the heightened
particularity requirements of Rule 9(b). Smith v. Educ. People, Inc., No. 05-2971-cv, 2008 U.S.
App. LEXIS 5988, at *3 (2d Cir. Mar. 20, 2008). Plaintiffs utterly fail to meet the Rule 9(b)
standard, and indeed fail even to meet the Rule 8 standard of stating a plausible claim that would
entitle them to the extraordinary remedy of rescission. See Nials v. Bank of Am., No. 13-Civ5720, 2014 U.S. Dist. LEXIS 77070, at *17 (S.D.N.Y. May 30, 2014) (finding rescission claim
based on fraud is subject to Rule 9(b); rescission claim based on negligent misrepresentation,
mutual mistake or some other theory would still need to state plausible claim for relief;
dismissing claim under either standard). If it not preempted, this claim should be dismissed.
IV.

Plaintiffs Can Recover No Damages Prior to the Three-Year Statute of Limitations

Contained in the Copyright Act.
Section 507(b) of the Copyright Act provides that claims brought under the Act can only

be maintained if brought within three years of the accrual of the claim. 17 U.S.C. 507(b).
Declaratory judgment claims based on the Copyright Act, like those alleged in Claims 1 and 2
here, are subject to the Acts three-year statute of limitations. See id.; Merchant v. Levy, 92 F.3d
51, 56-57 (2d Cir. 1996) (applying three-year statute to declaratory judgment claim regarding
copyright co-ownership and stating: Civil actions under the Copyright Act are subject to a
three-year statute of limitations.); Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir. 1992).
Where it is alleged that a work has been infringed continuously, a plaintiff may recover
only for infringement that occurred during the three-year statutory limitations period, and may

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not recover for infringement which occurred prior to that period. Petrella v. Metro-GoldwynMayer, Inc., 134 S. Ct. 1962, 1969-70 (2014). See also Stone, 970 F.2d at 1049-50 (permitting
damages in a claim for copyright co-ownership only for three years prior to suit); Salerno v. City
Univ. of N.Y., 191 F. Supp. 2d 352, 357 (S.D.N.Y. 2001) (stating that only [infringing acts] that
occurred within three years of the filing of the action would be viable). As the Supreme Court
recently stated, Section 507(b)s limitations period allows plaintiffs to gain retrospective relief
running only three years back from the date the complaint was filed. Petrella, 134 S. Ct. at
1970. Accordingly, any damages even potentially recoverable under Count 2, which seeks
restitution for licensing fees (upon entry of a declaratory judgment on Count 1), to the extent
the claim survives, should be limited to fees collected in the last three years. Id.
To the extent they survive, Plaintiffs putative class claims under the Copyright Act should
be dismissed if they fall outside the three-year period prior to the date of the filing of the
Complaint. See Musa v. Supershuttle Int'l, Inc., No. 12-cv-2418, 2013 U.S. Dist. LEXIS 143401,
at *13 (E.D.N.Y. Sept. 30, 2013) (dismissing class claims accruing prior to applicable statutes of
limitation). Similarly, because all of the Complaints state law claims should be dismissed as
preempted, the purported class period should be limited to the same three-year period.
CONCLUSION
For the foregoing reasons, the Class Action Complaint should be dismissed in its entirety
because Plaintiffs lack standing to sue for invalidity of Ludlow Musics copyrights in the Song.
Furthermore, each of the state law claims should be dismissed with prejudice because they are
not qualitatively different from the copyright claims and should be deemed preempted. Each
state law claim fails to state a viable claim for relief. Finally, even to the extent any of the claims
asserted on behalf of the putative class survive, any claims accruing prior to June 2013 should be
dismissed with prejudice and any potential damages should be limited to that same time period.

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Dated: New York, New York

September 2, 2016

Respectfully submitted,
ROBINS KAPLAN LLP
By:

/s/ Ofer Reger

Paul LiCalsi, Esq.
Ofer Reger, Esq.
601 Lexington Avenue, Suite 3400
New York, New York 10022-4611
Telephone: (212) 980-7400
Facsimile : (212) 980-7499
plicalsi@robinskaplan.com
oreger@robinskaplan.com
Attorneys for Defendants The Richmond
Organization, Inc. and Ludlow Music, Inc.

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