135 F. Supp. 3d 196
S.D.N.Y.2015Background
- Miss Matched sponsored a 2011 design contest at PS 116; ownership terms stated the works were works made for hire or assigned to Miss Matched.
- I.C., a second‑grade student, created the Hi/Bye design and submitted it with a signed form.
- Winning entrants received a $100 gift card and five shirts; Miss Matched marketed a whole catalogue bearing the design.
- Miss Matched’s assets were later sold to Sock Drawer (Dec. 2012) and then Delta Galil, who continued selling under LittleMissMatched.
- Plaintiff disaffirms the 2011 contract in 2014 and seeks copyright protection, with registration denied by the Copyright Office.
- Defendants move to dismiss; the court partially denies copyright claims and grants preemption-based dismissal of state-law claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing and assignment validity | IC’s design ownership should vest in IC, not Miss Matched. | Submission form/assignment valid; minors can bind by signed contracts. | Question unresolved; court considers assignment effective, but hearing on infancy and unconscionability needed. |
| Notice and filing prerequisites under §411(a) | Notice substantially fulfilled; can proceed despite initial misaddress. | Strict §411(a) compliance required; dismissal | Not dismissed; notice deemed fulfilled; action may proceed. |
| Originality of the Hi/Bye design | Design contains original selection and arrangement. | Elements are common/public domain; not original. | Design deemed sufficiently original to survive motion to dismiss. |
| Copying and substantial similarity | Direct evidence of copying shown by sale of Hi/Bye; strong similarity. | Differences in noncopyrightable elements; need for substantial similarity. | Court finds substantial similarity; infringement plausible at this stage. |
| Preemption of state-law claims | Unjust enrichment/quantum meruit distinguishable from copyright. | Claims preempted by Copyright Act. | State-law claims preempted; claim GRANTED for dismissal. |
Key Cases Cited
- Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991) (originality requires minimal creativity; not copied.)
- Brooks-Ngwenya v. Indianapolis Pub. Sch., 564 F.3d 804 (7th Cir. 2009) (notice under §411(a) is a prerequisite to suit but not fatal when fulfilled.)
- Dalessandro v. Monk, 864 F.2d 6 (2d Cir. 1988) (stay rather than dismissal for premature suit when waiting period lapsed.)
- Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir. 2004) (preemption and scope of Copyright Act.”)
- Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995) (protects expression in selection/arrangement of elements.)
- Gaito Architecture, LLC v. Simone Development Corp., 602 F.3d 57 (2d Cir. 2010) (substantial similarity analysis when elements are not wholly original.)
- Oriental Art Printing, Inc. v. Goldstar Printing Corp., 175 F.Supp.2d 542 (S.D.N.Y. 2001) (limits of originality; caution against overreliance on noncopyrightable elements.)
- Ward v. Nat’l Geographic Soc., 208 F.Supp.2d 429 (S.D.N.Y. 2002) (regarding §701(e) and registration denial procedures.)