OPINION AND ORDER
William J. Warren, Laurie Rubin, and David Young-Wolff bring separate actions against John Wiley & Sons, Inc. (“Wiley”) for copyright infringement and related claims. Rubin’s action is also against William Zerter and Hilary Newman (employees of Wiley), and John Does 1-10 (“the Printer Defendants”). Defendants now move to dismiss these actions for failure to state a claim, pursuant to Rules 9(b) and 12(b)(6) of the Federal Rules of Civil Procedure.
I. Background
A. Factual Background
The following facts are taken from Plaintiffs’ Complaints and are presumed true for purposes of this motion.
1. The Parties
Warren, Rubin, and Young-Wolff are professional photographers who make their living by taking and licensing photographs.
Wiley is a publisher of textbooks, professional and trade books, and scholarly journals.
Newman is the Manager of the Photo Department of the Global Education Division at Wiley.
The Printer Defendants are yet-to-be ascertained printing companies engaged by Wiley to print infringing publications.
2. The Warren Action
Warren’s lawsuit (“the Warren Action”) alleges copyright infringement and fraud.
Warren is the creator and owner of a photograph known as “Executives Silhouetted.” Warren has provided a copy of the picture but has not included a registration number in his Complaint or appended a copyright certifícate thereto. Wiley obtained a copy of “Executives Silhouetted” through Plaintiffs licensing agent, Corbis Corporation (“Corbis”), and later used it on the cover of a book entitled “The Five Dysfunctions of a Team: A Leadership Fable,” by the business author Patrick Lencioni.
3. The Young-Wolff Action
Young-Wolff has also sued Wiley (“the Young-Wolff Action”), alleging copyright infringement, fraud, fraudulent concealment, breach of contract, and copyright exportation.
Young-Wolff alleges that Wiley has infringed seventeen of Young-Wolff s photographs. Young-Wolff has provided a copyright registration numbers for each photograph.
Wiley has entered into hundreds of license agreements with unnamed licensing agents regarding photographs owned by Young-Wolff, each requiring Wiley to disclose usage information upon request, which Wiley has purportedly failed to do. Young-Wolff alleges that Wiley breached these contracts by exceeding the usage provided for in the licenses, by publishing the photographs prior to the start date of the licenses, and/or by failing to disclose usage information. Young-Wolff also alleges that Wiley published Young-Wolffs photographs in publication that Wiley willfully exported to foreign countries without permission from Young-Wolff.
4. The Rubin Action
In her lawsuit (“the Rubin Action”), Rubin alleges that Wiley, Newman, and Zerter engaged in copyright infringement, fraud, and fraudulent concealment, and that Wiley engaged in infringing exportation.
Rubin alleges that she registered the copyright for the photograph at issue, “Burnt Toast,” with the U.S. Copyright Office, but she has failed to include a registration number or copyright certifícate showing ownership of the photograph.
Prior to March 3, 2000, an unnamed Wiley photo editor contacted Rubin asking her to use “Burnt Toast” for a textbook entitled “Fundamentals of Physics, 6th edition” (“the Sixth Edition”).
Rubin provided Wiley a limited license to use the photograph to print 100,000 copies of the Sixth Edition to be printed in English only. This license was solely for distribution of the Sixth Edition in the United States. Defendants have published well in excess of 100,000 copies of the photograph and have published multiple foreign editions, totaling 627,639 copies of the textbook.
5. Allegations Regarding Wiley’s Willful and Fraudulent Conduct
In each of the three above-mentioned actions, Plaintiffs allege that Wiley’s willfulness can be inferred from Wiley’s history of violating licenses. Plaintiffs also allege that Wiley made misrepresentations and concealed its impermissible use of
In negotiating the license for Warren’s photograph in February 2007, Wiley’s agent, Adrian Morgan, represented to Warren that Wiley intended to use “Executives Silhouetted” only for a hardcover edition of “The Five Dysfunctions of a Team.” Warren alleges that Wiley used Warren’s images in other publications and prior to entering into the February 2007 agreement, thereby exceeding the obtained license.
The Rubin and Young-Wolff Complaints also allege that Wiley is engaged in a “clean up campaign,” whereby Wiley com tacts photographers whose photographs were used without permission in an effort' to “clean up” past infringements. Both Complaints allege that Zerter arid Newman have headed this campaign. Rubin and Young-Wolff allege that Wiley has made the strategic decision to request permission for the use of photographs, or seek an extension, without informing the photographers that their works have already been infringed.
In February 2012, Newman contacted Rubin and requested an extension of the license for “Burnt Toast.” She did not disclose, however, that the request pertained to books that had already been published, nor did she disclose that Wiley had already violated its license. In subsequent correspondences with Rubin, Zerter intentionally misrepresented the actual print run of the Sixth Edition to Rubin.
B. Procedural Background
The Rubin and Warren Actions were filed on June 28, 2012, while the Young-Wolff Action was filed on July-5, 2012. . On September 27, 2012, motions to dismiss, or, in the alternative, to strike, were filed in each action. Plaintiffs in each action are represented by the same attorneys, as are Defendants.
II. Motions to Dismiss
A. Standard of Review
As a general rule, when deciding a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), a court is obliged to “accept as true all of the factual allegations contained in the complaint,” Bell Atlantic Corp. v. Twombly,
While Federal Rule of Civil Procedure 8(a) requires only a “short and plain statement of the claim showing that the pleader is entitled to relief,” Fed.R.Civ.P. 8(a)(2), in order to avoid dismissal, a plaintiff must state “the grounds upon which his claim rests through factual allegations sufficient ‘to raise a right to relief above the speculative level.’ ” ATSI Comm., Inc. v. Shaar Fund, Ltd.,
Claims sounding in fraud must satisfy not only Rule 12(b)(6), but also Rule 9(b); thus unlike copyright claims, claims for fraud, as well as fraudulent concealment, must “state with particularity the circumstances constituting fraud or mistake.” Fed.R.Civ.P. 9(b). Unlike pleadings analyzed solely under Rule 12(b)(6), “Rule 9(b) pleadings cannot be based upon information and belief.” DiVittorio v. Equidyne Extractive Indus., Inc.,
B. Copyright Infringement Claims against Wiley
1. Applicable Law
The Copyright Act of 1976 provides that “the owner of copyright under this title has the exclusive rights to do and to authorize,” inter alia: “(1) to reproduce the copyrighted work in copies or phonorecords ...; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.-...” 17 U.S.C. § 106; see also Arista Records, LLC v. Doe S,
“A properly plead[ed] copyright infringement claim must 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.” Kelly v. L.L. Cool J.,
2. The Works that Are the Subject of the Claims
Young-Wolff, Warren, and Rubin have each enumerated the works that are the subjects of their respective actions. {See Warren Compl. at ¶ 11; Rubin Compl. at ¶¶ 14, 45; Young-Wolff Compl. at ¶¶ 11-47).
Wiley argues that Young-Wolff, the sole plaintiff to allege the infringement of .more than one photograph, has failed to provide adequate notice as to which of YoungWolffs photographs are at issue in this action. Wiley points out that, while the Young-Wolff Complaint purports to allege seventeen instances of copyright infringement, it also includes a list of 278 images whose licenses were allegedly breached by Wiley. {Id., Ex. 1.) This, argues Wiley, makes ambiguous which precise images are the subject of Young-Wolff s copyright infringement claim. The Court disagrees. The Young-Wolff Complaint states quite clearly which seventeen photographs are
3. Plaintiffs’ Ownership and Registration of the Copyrights
Young-Wolff has listed the names and registration numbers of the seventeen works at issue in his action. By contrast, Warren and Rubin have not attached a copyright certificate or identified the registration numbers of their photographs, which Wiley argues is fatal to Warren’s ease. As explained above, at this stage, Plaintiffs need only “allege ... that plain: tiff owns the copyrights in those works” and “that the copyrights have been registered in accordance with the statute,” Kelly,
Accordingly, all three Plaintiffs have sufficiently alleged that they own and properly registered the relevant photographs.
4. The Acts by which the Copyrights Were Infringed
Wiley next argues that ' Plaintiffs have failed to allege “by what acts during what time the defendant infringed the copyright.” Kelly, F.R.D. at 36. The Court disagrees.
According to the Warren Complaint, Wiley obtained a license to use Warren’s photograph for a specific pur
Similarly, paragraph 49 of the Young-Wolff Complaint alleges that the seventeen works were infringed upon in at least eight ways:
• Publishing Plaintiffs works without permission;
• Reusing Plaintiffs works in subsequent editions of titles without obtaining a valid license prior to publication;
• Publishing Plaintiffs works prior to obtaining a valid license;
• Exceeding the limitations of licenses by printing more copies of the publications than was authorized;
• Exceeding the limitations of licenses by' publishing Plaintiffs works in electronic, ancillary, or derivative publications without permission;
• Exceeding the limitations of licenses by distributing publications outside the authorized distribution area; and/or
• Refusing to provide usage information to Plaintiff relating to photographs owned by Plaintiff.
This paragraph provides sufficient, notice to Wiley as to how the 'copyrights at issue have been infringed, as Wiley “may, in an abundance of caution, assume that it is being accused of violating each license in every way identified.” Pacific Stock, Inc. v. Pearson Educ., Inc., No. 11 Civ. 0423,
Finally, Rubin has alleged that Wiley printed her photograph, without permission and in violation of its license, in (1) books aside from the 6th Edition; (2) more than 100,000 copies of the 6th Edition; and (3) publications outside the United States. (¶¶ 48-50). Again, these allegations sufficiently inform Wiley as to how it has purportedly infringed Rubin’s copyright.
5. Conclusion
Accordingly, all three Plaintiffs have sufficiently alleged: (1) which specific works have been infringed (2) that Plaintiffs registered and own the copyright to those work; and (3) in what way the works were infringed. Their copyright infringement claims, at least as to Wiley, therefore survive Wiley’s motion to dismiss.
C. The Copyright Claim against Newman and Zerter
Rubin also alleges copyright infringement against Newman and Zerter in their personal capacities. (Rubin Compl. at ¶¶ 51-52.) A corporate employee can be held personally liable for copyright infringement under a theory of contributory
According to the Rubin Complaint, “Defendants Zerter and Newman personally participated in Wiley’s infringements and had knowledge, information, and control over such infringements.” (Rubin Compl. at ¶ 51.) This conclusory allegation appears to be based upon Zerter and Newman’s role in the so-called “clean-up campaign” allegedly waged to keep Rubin in the dark about the infringements on her work. (Id. at ¶¶ 38-43.) These allegations are insufficient to state a claim for personal liability. Rubin has failed to state any fact-based allegations indicating that Zerter or Newman authorized, or played any part at all, in the alleged infringement itself, as opposed to Wiley’s conduct after the infringement. Notably, it was, according to the Rubin Complaint, an unnamed ‘Wiley photo editor,” rather than Newman or Zerter, who initially sought a license from Wiley.
D. The Infringing Exportation Claims
Rubin and Young-Wolff separately plead claim for infringing exportation against Wiley, pursuant to 17 U.S.C. § 602, based upon Wiley’s alleged publication of their “photos in publications exported by Wiley to foreign countries.” (Rubin Compl. at ¶ 84; Young-Wolff Compl. at ¶ 131.) Wiley argues that these are impermissible claims, which must be dismissed.
Section 602(a)(2) provides that “[i]mportation into the United States or exportation from the United States, without the authority of the owner of copyright under this title ... is an infringement of the exclusive right to distribute copies or phonoreeords under section 106, actionable under sections 501 and 506.” In other words, the plain language of the statute makes clear that an exportation of a copyrighted work without the permission of the copyright owner is merely a type of copyright infringement, rather than a separate cause of action. Thus, Wiley is correct that the unauthorized import or export of copies under § 602 are simply additional examples of infringement under § 106. Accordingly, to the extent that Rubin and Young-Wolff purport to state separate claims for fraudulent exportation, those claims are dismissed. Rubin and Young-Wolff shall be permitted to pursue their claim of unauthorized exportation, however, as part of their claims for copyright infringement.
E. The Fraud Claims
All three actions allege that Wiley committed fraud, while the Rubin and Young-Wolff claims also allege fraudulent concealment. Rubin also alleges fraud and fraudulent concealment claims against Zerter and Newman. All of Plaintiffs’ fraud and fraudulent concealment claims fail under both Rules 9(b) and 12(b)(6).
1. Rule 9(b)
In order to comply .with Rule 9(b), a complaint alleging fraud “must: (1) specify the statements that the plaintiff contends were fraudulent, (2) identify the speaker, (3) state where and when the
In connection with his fraud claim, Young-Wolff alleges:
Upon information and belief, Defendant intentionally and willfully and knowingly misrepresented material facts to Plaintiffs licensing agents, including, but not limited to, falsely representing that publications had not already occurred, the Wiley intended uses of Plaintiffs photographs would be limited to requested print run numbers and would not include any foreign editions or sales.
Upon information and belief, Defendant intentionally and willfully and knowingly misrepresented material facts to Plaintiff licensing agents, including, but not limited to, misrepresenting the past publications and future publication plans for Plaintiffs photographs.
Young-Wolff Compl. at ¶¶ 102.) Nowhere in these paragraphs, nor anywhere else in his Complaint, does Young-Wolff specifically identify the “time, place, speaker, and content” of even one fraudulent statement, nor does he allege to whom these fraudulent statements were made. Young-Wolffs claim for fraudulent concealment also lacks the requisite specificity. Rather than specifying the particular omissions made by Wiley and the persons responsible for them, the Young-Wolff Complaint simply alleges that “Defendant knowingly, willfully, and intentionally ... fraudulently concealed crucial facts from Plaintiffs agent.” (Id. at ¶ 116.) This falls short of the level of pleading required by Rule 9(b). Accord Schneider,
Warren’s fraud claim also fails under Rule 9(b). Warren’s claim for fraud is premised upon his allegation that Defendant made “various misrepresentations” to Warren in order to “fraudulently obtain access” to Warren’s photo on terms beneficial to Wiley. (Warren Compl. at ¶ 44.) Warren provides only the name of the employee who made one of these misrepresentations. (Compare id. at ¶ 38 (alleging that Adrian Morgan misrepresented material facts in order to convince Warran to provide Wiley with a license) with id. at ¶¶ 39-43 (allegations that “Defendant” committed fraudulent acts)). Thus, the majority of Warren’s fraud allegations
Moreover, most of the factual allegations supporting Warren’s fraud claim — including his allegation about Morgan — are pleaded “upon information and belief.” (See Warren Compl. at ¶ 38 (“Upon information and belief, Defendant, by and through its agent Adrian Morgan, intentionally and willfully and knowingly misrepresented material facts to Plaintiff in seeking his permission to use an image and in negotiating the terms of the license.”); see also id. at ¶¶ 39-47.)
The Rubin Complaint also lacks the specificity required by Rule 9(b). The Rubin Complaint first alleges that a photo editor contacted Rubin prior to March 3, 2000 and knowingly misinformed Rubin as to the number of copies that Wiley was to publish, but fails to specify who made the misrepresentation. (Rubin Compl. at ¶¶ 14-16.) Similarly, Rubin’s allegations that ‘Whey, Newman, and Zerter” made misrepresentations concerning (1) Wiley’s intention to use Rubin’s photograph in more than 100,000 copies of the Sixth Edition, (2) Wiley’s intention to include the work in foreign editions and sales, and (3) the number of copies of the Sixth Edition actual printed, all lack the specificity required by Rule 9(b). (Id. at ¶¶ 58-59; see also ¶ 78 (alleging, as part of her claim for fraudulent concealment, that “Defendants Newman and Zerter withheld and misrepresented crucial facts ... ”) Indeed, Rule 9(b) cannot be satisfied by allegations that “vaguely attributef ] the alleged fraudulent statements to ‘defendants,’ ” without specifying which defendant in particular made the" complained of acts or omissions. Mills v. Polar Molecular Corp.,
2. Rule 12(b)(6)
Additionally, Plaintiffs have failed to state claims for fraud or fraudulent concealment under Rule 12(b)(6). To state a claim for fraud under New York law, a plaintiff must allege: “(1) a false representation (2) of a material fact with (3) intent to defraud and (4) reasonable
a. Damages
Plaintiffs have all failed to allege the requisite damages to support their claims for fraud and fraudulent concealment. See Semerdjian v. McDougal Littell, No. 07 Civ. 7496(LMM),
Plaintiffs have also failed to adequately allege damages resulting from their fraud claims. Under New York law, the alleged losses stemming from a fraud “must be the direct, immediate, and proximate result of the misrepresentation.” Kregos v. Assoc. Press,
b. Reasonable Reliance
Moreover, several of Plaintiffs’ claims for fraud and fraudulent concealment fail to allege that Plaintiffs actually relied upon the alleged misrepresentations or concealments. For example, Rubin alleges that Newman concealed certain facts about the print run of her photograph “Burnt Toast” (Rubin Compl. at ¶ 39), but nowhere in her complaint does Rubin allege that she reasonably relied upon these misrepresentations. (See id. at ¶¶ 71-82.) This is yet another infirmity present in Plaintiffs’ fraud and fraudulent concealment claims.
3. Conclusion
In sum, Young-Wolff, Warren, and Rubin have failed to properly allege claims for fraud or fraudulent concealment, under either Rule 9(b) Rule 12(b)(6). The claims for fraud and fraudulent concealment are therefore dismissed.
F. Breach of Contract
Young-Wolff also brings claims for breaches of various licensing agreements. The Court agrees with Wiley that these claims must fail.
“Under New York law, the elements of a breach of contract claim are (1) the existence of an agreement; (2) adequate performance of the contract by the plaintiff; (3) breach of contract by the defendant; and (4) damages.” Swan Media Group, Inc. v. Staub,
Here, the contracts at issue are the “hundreds of license agreements relating to Plaintiffs images,” of which “Plaintiff is an intended beneficiary ... including but not limited to the agreements referenced in Exhibit 1.” (Young-Wolff Compl. at ¶¶ 124-25.) The Young-Wolff Complaint alleges that these contracts “require Wiley to disclose usage information to Plaintiff’ but that “Wiley has refused to disclose” this information. (Id. at ¶¶ 126-27.) Young-Wolff further alleges that “Defendant has breached each one of the contracts identified in Exhibit 1 by publishing the photographs governed by those agreements prior to the state date of the licenses and/or by exceeding material terms in the licenses, and or [sic ] by violating the
These breach of contract claims lack the level of specificity required by Rules 8(a)(2) and 12(b)(6). Despite the Young-Wolff Complaint’s assertion to the contrary, Exhibit 1 does not “identify]” any “contracts” at all (Id. at ¶ 128.), nor does Exhibit 1 list any of the contract terms. It merely describes an array, of photographs in which Wiley expressed interest, and perhaps licensed. Young-Wolff has not named any of the licensing agents that are parties to these alleged contracts, nor has he identified with any specificity the “material” or “express or implied” terms referenced in his Complaint, nor how any of the contracts’ terms were violated in any specific instance. While Young-Wolff does allege that these licensing agreements “require Wiley to disclose usage information” and that Wiley breached some or all of these contracts by failing to do so, Young-Wolff sets forth no facts substantiating these allegations, such as the dates on which the information was requested, or the dates on which those requests were denied.
In short, Young-Wolff simply cannot successfully plead over 270 breaches of contract with a handful of sweeping, conclusory allegations. Were the Court to allow such pleading, it would provide an avenue to use the discovery process to conduct baseless fishing expeditions, something the Supreme Court has explicitly directed lower courts to prevent. See Iqbal,
III. Conclusion
For the foregoing reasons, Wiley’s motions to dismiss are GRANTED in part and DENIED in part. The copyright infringement claims against Wiley survive, while the copyright exportation, fraud claims, and breach of contract claims are all dismissed. Additionally, Rubin’s claims against Zerter and Newman are DISMISSED. Wiley’s motions to strike are DENIED.
The Clerk of the Court is directed to terminate the motions at Docket Number 11 in 12 Civ. 5070, Docket Numbers 12 and 15 in 12 Civ. 5071, and Docket Number 10 in 12 Civ. 5230.
SO ORDERED.
Notes
. Defendants also move to strike certain portions of the Complaints pursuant to Rule 12(f). Those motions are denied.
. Similarly, Wiley notes that parts of Warren’s Complaint indicate that his action concerns not just "Executives Silhouetted” but also other, unnamed photographs. (See, e.g., Warren Compl. at ¶ 34 (“Defendant’s unauthorized use of Plaintiff's copyrighted images was willful.” (emphasis added)).) To the extent that Warren intends to assert copyright claims regarding these unspecified photographs, that portion of his Complaint is dismissed. Accord Schneider v. Pearson Educ., Inc., No. 12 Civ. 6392(JPO),
. Nor does the fact that Newman was one of two Wiley editors who countersigned the licensee permit one to reasonably draw the inference that Newman had either the right to stop or limit any alleged infringement or that Newman authorized the infringing use. ,
. Indeed, it is not even clear from the face of the Rubin Complaint that Newman is a corpo
. Zerter also moves to dismiss the claims against him for failure to adequately plead personal jurisdiction. Because Rubin has failed to state a claim against Zerter, the Court need not reach the question of personal jurisdiction. It does appear, however, that this Court’s jurisdiction over Zerter is lacking. See Alki Partners, L.P. v. Votas Holding GmbH,
. This is important, if at all, because it likely means that Rubin and Young-Wolff can pursue an award of statutory damages only once for each photograph at issue. See WB Music Corp. v. RTV Commc’ns Grp., Inc.,
. As is indicated by the portions of the Young-Wolff Complaint cited above, many of -the allegations supporting Young-Wolff's fraud claim are also made "upon information and belief.” This is true for Rubin’s fraud claim as well.
. Plaintiffs argue that this Court should disregard the above-cited cases, and should instead hold, as some district courts have done, that a plaintiff alleging fraud is required to demonstrate only that the pecuniary harm stems from the defendant’ fraudulent conduct, but not that the damages alleged in the fraud claim are distinct from those alleged in the copyright claim. See, e.g., Wood v. Houghton Mifflin Harcourt Publ’g Co.,
. Exhibit 1 also lists the “invoice' number” and "invoice date"-of a percentage o'f• the photographs listed.