Opinion
05 Civ. 0459 (SHS) (JCF).
February 21, 2008
MEMORANDUM AND ORDER
This is an action for deprivation of authorship credit and royalties arising out of the publication of the book "Find It Online." On October 23, 2007, after the plaintiff, Shirley Y. Kwan, engaged counsel for the first time, I granted leave to Ms. Kwan to amend the complaint to assert claims for copyright infringement against the publisher Better Resource Bureau, Inc. ("BRB") and discrimination on the basis of race against both BRB and Alan M. Schlein. Kwan v. Schlein, 246 F.R.D. 447 (S.D.N.Y. 2007). Pursuant to my October 23 Order, the plaintiff served and filed a Second Amended Complaint on November 15, 2007. The plaintiff then submitted the pending motion for leave to file a Third Amended Complaint that includes a claim for copyright infringement against Mr. Schlein. Mr. Schlein opposes the motion, and BRB cross-moves to strike portions of the plaintiff's Second Amended Complaint and Proposed Third Amended Complaint. For the reasons that follow, both the plaintiff's motion and BRB's cross-motion are denied.
Two of the entities identified in the caption, BRB Publications and Facts on Demand Press, are apparently merely trade names for BRB. (Transcript of proceedings before the Honorable Sidney H. Stein dated March 23, 2007, at 14). The claims against the other defendants were dismissed without prejudice in July 2006 because they were never served with the summons and complaint.
Background
Familiarity with the underlying facts of the case is presumed. After entering into a contract with BRB to edit "Find It Online," which was to be written principally by Mr. Schlein, the plaintiff's role in the project allegedly expanded, and BRB purportedly promised to credit her as co-author of the book. However, in February 1999, BRB published "Find It Online" with Mr. Schlein listed as the only author. Subsequent editions of the book were published in 2002, 2003, and 2004, each with the plaintiff credited as an editor only, or not credited at all.
The factual background of this action is set out at greater length in previous opinions, see Kwan v. Schlein, 441 F. Supp. 2d 491 (S.D.N.Y. 2006); Kwan v. Schlein, 246 F.R.D. 447 (S.D.N.Y. 2007).
In addition, prior to publication of the First Edition of "Find It Online," BRB and Mr. Schlein filed copyright registrations listing themselves as joint authors. They also filed copyright registrations for the Third and Fourth editions. In 2005, the plaintiff filed her own copyright registration for "Find It Online," identifying herself as a co-author and indicating that the work had been completed in 1998. (Certificate of Registration for TXu-358-470, dated Feb. 25, 2005, attached as Exh. 8 to Proposed Third Amended Complaint ("TAC")).
The plaintiff, proceeding pro se, filed this action on December 13, 2004. Many of her initial claims were dismissed on motion by the defendants. Kwan v. Schlein, 441 F. Supp. 2d 491 (S.D.N.Y. 2006). Ms. Kwan then engaged counsel and filed a motion for leave to file a Second Amended Complaint that included claims for copyright infringement, an accounting of profits, discrimination on the basis of race, and fraud in connection with a May 23, 2002 letter from BRB. (Second Amended Complaint ("SAC"), dated Nov. 9, 2007). By my October 23 Order, I granted the plaintiff leave to assert a copyright claim against BRB and a claim for discrimination on the basis of race against both defendants. However, I denied leave to assert the claim of fraud and the demand for an accounting. With respect to the fraud claim, I found that since "[t]he same factual predicates . . . alleged in the Second Amended Complaint were also asserted in the Amended Complaint," the plaintiff's attempt to revive her fraud claim should be rejected as "an untimely motion for reconsideration" of the decision on the motion to dismiss. Kwan, 246 F.R.D. at 453. I further denied the plaintiff leave to assert the copyright infringement claim against Mr. Schlein because "there [were] no factual allegations in the Second Amended Complaint that would serve as a basis for a claim that Ms. Kwan was the sole author" rather than a joint author with Mr. Schlein. Id. at 452.
After I rendered my decision, the plaintiff moved for reconsideration pursuant to Local Rule 6.3. I granted reconsideration but adhered to my prior determination. (Order dated Nov. 5, 2007). In response to a letter from plaintiff's counsel seeking clarification, I noted that the plaintiff was entitled to replead an infringement claim against Mr. Schlein, but that she would have to obtain leave to do so based on a proposed amended pleading. (Order dated Nov. 6, 2007). I noted, however, that she was foreclosed from repleading the fraud claim. (Order dated Nov. 6, 2007). Accordingly, the plaintiff filed a Second Amended Complaint that included only an infringement claim against BRB and a discrimination claim. She then filed a separate motion with a Proposed Third Amended Complaint that adds factual allegations and an infringement claim against Mr. Schlein. Mr. Schlein opposes further amendment, arguing chiefly that the Third Amended Complaint fails to allege facts that could support a claim of sole authorship. BRB has filed an application styled as a cross-motion to strike allegations relating to fraud in the plaintiff's Second and Third Amended Complaints that BRB contends are precluded by my October 23 Order.
Discussion
A. Infringement Claim Against Mr. Schlein
A motion to amend is governed by Rule 15(a) of the Federal Rules of Civil Procedure, which states that "[t]he court should freely give leave when justice so requires." Fed.R.Civ.P. 15(a). Notwithstanding the liberality of the rule, "it is within the sound discretion of the court whether to grant leave to amend." John Hancock Mutual Life Insurance Co. v. Amerford International Corp., 22 F.3d 458, 462 (2d Cir. 1994); accord Krumme v. WestPoint Stevens Inc., 143 F.3d 71, 88 (2d Cir. 1998). A motion to amend may be denied as futile if the amendment would not withstand a motion to dismiss pursuant to Rule 12(b)(6). See Oneida Indian Nation of New York v. City of Sherill, 337 F.3d 139, 168 (2d Cir. 2003), rev'd on other grounds, 544 U.S. 197 (2005); Smith v. CPC International, Inc., 104 F. Supp. 2d 272, 274 (S.D.N.Y. 2000). To survive a 12(b)(6) motion, a complaint "does not need detailed factual allegations"; however, it "requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do."Bell Atlantic Corp. v. Twombly, ___ U.S. ___, ___, 127 S. Ct. 1955, 1964-65 (2007). The allegations offered by the plaintiff "must be enough to raise a right to relief above a speculative level." Id.
It is well established that a copyright litigant cannot maintain an action against a joint author for infringement because "an individual cannot infringe his own copyright." Kwan, 441 F. Supp. 2d at 498 (quoting Weissmann v. Freeman, 868 F.2d 1313, 1318 (2d Cir. 1989). Where it has not yet been determined whether a work was jointly authored or where joint authorship is contested by the defendant, a plaintiff may raise infringement and joint authorship claims in the alternative. See Maurizio v. Goldsmith, 230 F.3d 518, 519 (2d Cir. 2000); Ulloa v. Universal Music Video Distribution Corp., 303 F. Supp. 2d 409, 418 n. 12 (S.D.N.Y. 2004) (construing claims of infringement and joint authorship as alternative causes of action). Ms. Kwan's previous assertions of joint authorship, therefore, do not preclude her from raising an infringement claim against Mr. Schlein now. See Johnson v. Arista Holding, No. 05 Civ. 9645, 2006 WL 3511894, at *5 (S.D.N.Y. 2006) (declining to award summary judgment on infringement claim even though plaintiff admitted intent to be joint author with defendant because defendant did not admit intent to be joint author with plaintiff); see also Thompson v. Larson, 147 F.3d 195, 205-06 (2d Cir. 1998) (leaving open the question of "whether a person who makes a non-de minimus copyrightable contribution but cannot meet the mutual intent requirement of co-authorship retains . . . any rights and interests in his or her own contribution" to the collective work).
However, Rule 8 of the Federal Rules of Civil Procedure requires that a defendant be provided with fair notice of the grounds upon which a claim rests. Thus, any plaintiff pleading a copyright infringement claim must identify the "specific original work that is the subject of the claim." Sharp v. Patterson, No. 03 Civ. 8772, 2004 WL 2480426, at *12 (S.D.N.Y. Nov. 3, 2004) (internal quotation marks omitted); see also North American Thought Combine, Inc. v. Kelly, No. 01 Civ. 8112, 2003 WL 355237, at *2 (S.D.N.Y. Feb. 18, 2003) (complaint must specify "specific contributions of the relative parties" to joint works); Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992) (listing elements that copyright infringement claimant must plead). In cases where courts have permitted plaintiffs to plead joint authorship and infringement claims in the alternative, only the plaintiff's individual contributions to the work in question can serve as the basis of the infringement claim. See Maurizio v. Goldsmith, No. 96 Civ. 4332, 2001 WL 1568428, at *2-3 (S.D.N.Y. Dec. 5, 2001) (holding that only outline and draft chapters that plaintiff allegedly authored could be subject of infringement claim against main author who incorporated them into published work, but that finding of joint authorship would preclude infringement claim);see also Thompson, 147 F.3d at 198 n. 10 (infringement claim based on dramaturge's creation of character elements and significant portion of dialogue and sound lyrics); Johnson, 2006 WL 3511894, at *2 (infringement claim based on session musician's original contributions to studio recording).
I previously noted that in order to sustain an infringement claim against Mr. Schlein, Ms. Kwan would be required to proffer facts supporting sole authorship. Kwan, 246 F.R.D. at 452. Although she does not have to allege that she was sole author of the entire work, Rule 8 requires her to identify the contributions she made that were original and independent of Mr. Schlein. See Sharp, 2004 WL 2480426, at *12. Despite having had multiple opportunities to replead, she has not done so. At most, the Third Amended Complaint alleges that BRB regarded Ms. Kwan as having edited and re-written portions of Mr. Schlein's original manuscripts "to get them in acceptable format." (TAC, ¶ 16). However, this does not establish that Ms. Kwan independently authored anything. I previously denied leave to include the infringement claim against Mr. Schlein based on the plaintiff's conclusory allegation that her role exceeded that of an editor and that she "authored substantial portions of the First Edition" as well. (SAC, ¶ 10). If anything, the Third Amended Complaint contains less information establishing Ms Kwan's original contributions, and thus it fares no better.
B. Allegations of Fraud Against BRB
Next, BRB moves to strike "any and all allegations of fraud . . . in both the Second Amended Complaint and the proposed Third Amended Complaint" because the "[p]laintiff's fraud claim has already been dismissed by the Court." (Affirmation of Mathew P. Barry dated Dec. 4, 2007 ("Barry 12/4/07 Aff."), ¶ 1). Although BRB does not provide a list of the paragraphs it wishes to be stricken, it refers in its argument to paragraphs 13 and 15 of the Second Amended Complaint, and to paragraphs 30 and 34 of the Third Amended Complaint. Because leave to file the Third Amended Complaint is denied, I will limit the discussion below to the Second Amended Complaint.
Paragraph 13 of the Second Amended Complaint reads as follows:
On or about May 23, 2002, Defendant BRB Publications notified Plaintiff in writing (the "May 2002 Letter") that Defendant BRB Publications was in the process of finalizing the Third Edition and that the Third Edition had "been completely re-written" from the Second Edition. Defendant BRB Publications further informed Plaintiff in the May 2002 Letter that Defendant BRB Publications would not be paying royalties for any edition after the Second Edition under its agreement with Plaintiff.
Although this paragraph previously served as the factual basis for a since-dismissed fraud claim, nothing prevents the plaintiff from recounting the contents of a communication from the defendant. Moreover, this communication is relevant to both the copyright and race discrimination claims. It establishes that BRB discontinued Ms. Kwan's royalty payments and provides BRB's stated explanation for doing so. If Ms. Kwan's other allegations are true, then Paragraph 13 speaks to the nature of the harm inflicted by BRB.
Paragraph 15 of the Second Amended Complaint alleges, "upon information and belief," that BRB sent Ms. Kwan the May 2002 communication "with the purpose and intention of defrauding [her]." This paragraph avers knowledge and fraudulent intent, two elements that were previously included in order to state a claim for fraud but are no longer necessary for that purpose since the fraud claim is foreclosed. The plaintiff argues that this allegation will still be relevant to show "an intent to discriminate by Defendant BRB Publications." (Opposition to Defendant BRB Publication's Cross-Motion to Strike at 2 (internal quotation omitted)). However, even if the plaintiff is able to prove that BRB misrepresented the degree of difference between the Third Edition of "Find It Online" and previous editions, this would not establish racial animus or discriminatory intent against Ms. Kwan. Nevertheless, although the plaintiff did not make such an argument, BRB's knowledge of the falsity of the May 2002 communication could be relevant to a finding of willfulness for the purpose of increasing an award of statutory damages pursuant to 17 U.S.C. § 504(c)(2).
BRB's motion to strike is therefore denied.
Conclusion
For the reasons set forth above, both the plaintiff's motion to amend and defendant BRB's cross-motion to strike portions of the Second Amended Complaint are denied.
SO ORDERED.