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for the Southern District of New York

Court Converts Defendants’ Motion to Dismiss Copyright Infringement Claims into a Motion for Summary Judgment in Order to Consider Requisite Evidence Outside of the Pleadings.

In a January 6, 2014 ruling, Judge Colleen McMahon converted the defendants’ Penguin/Berkley Publishing US A and others’ Rule 12(b)(6) motion to dismiss plaintiff Charles Newton’s copyright infringement claims into a Rule 12(d) motion for summary judgment, based on defendants’ arguments which required the consideration of evidence not included in the pleadings.

Plaintiff, acting pro se, claimed that defendants infringed upon his copywrited material by defendants’ reprinting portions of plaintiff’s book in a book published by defendants covering the same subject matter. Defendants presented the following arguments in support of their motion to dismiss: (1) plaintiff failed to satisfy the copyright registration precondition to suit, see 17 U.S.C. § 411, (2) the copying of plaintiff’s work was de minimis, and (3) the copying of plaintiff’s work constituted “fair use.”

Section 411(a) of the Copyright Act provides in relevant part that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” The Supreme Court has held that this provision imposes a “precondition” to filing a claim for copyright infringement.”

To survive a motion to dismiss, Second Circuit courts generally require a plaintiff who brings a claim of copyright infringement “to allege (1) which specific original works are the subject of the copyright claim, (2) that plaintiff owns the copyrights in those works, (3) that the copyrights have been registered in accordance with the statute, and (4) by what acts during what time the defendant infringed the copyright.”

Plaintiff failed to include in his pleading the registration number of the most recent version of his book that contained the copywrited material at issue, and first submitted the appropriate registration number in his opposition to defendants’ motion to dismiss. Therefore, the court reasoned, “plaintiff’s submissions in opposition can only be considered if this motion is converted to a motion for summary judgment.”

The Court also deemed defendants’ remaining arguments based on de minimis use and “fair use” more appropriately addressed on a motion for summary judgment. In determining whether use is de minimis, “courts often look to the amount of the copyrighted work that was copied”; however, the inquiry “must be made on a case-by-case basis, as there are no bright-line rules for what constitutes substantial similarity.” While acknowledging that it is appropriate at times for a district court to consider the similarity of works in the motion to dismiss context, such considerations of similarity can only occur if the court can engage in side by side comparison of the works, an impossible task since the plaintiff failed to attach or otherwise reference the alleged infringed upon work to the complaint.

Similarly, the court noted that the “fair use” determination could be made by simply comparing the two works at issue, an impossibility since the alleged infringed upon work was not properly before the court on a motion to dismiss.

Judge McMahon converted the defendants’ motion to a motion for summary judgment, and required the plaintiff to provide the Court with (1) a full copy of the correct text he claimed was infringed, and (2) a registration certificate that related to the text.
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