MICHAEL YAMASHITA, MICHAEL YAMASHITA, INC. v. SCHOLASTIC INC.
Docket No. 17-1957-cv
United States Court of Appeals FOR THE SECOND CIRCUIT
August 28, 2019
August Term, 2017
(Argued: February 2, 2018 Decided: August 28, 2019)
POOLER, SACK, and CARNEY, Circuit Judges.
Plaintiffs-Appellants Michael Yamashita, a professional photographer and sole owner of Michael Yamashita, Inc., and Michael Yamashita, Inc. (collectively, “Yamashita“), appeal from a judgment entered in the United States District Court for the Southern District of New York (Forrest, J.) in favor of Defendant-Appellee Scholastic Inc., a textbook publisher, finding Yamashita‘s statement of claims for copyright infringement insufficient under
alleged that Scholastic exceeded the limitations of the licenses that it purchased for Yamashita‘s photographs from Corbis Corporation, a stock photography agency; (2) ruling that Yamashita‘s proposed amendments did not cure the Complaint‘s defects and therefore denying leave to amend as futile; and (3) denying Yamashita leave to add to his Complaint four new, common-law claims. We address Yamashita‘s first two arguments in this Opinion, and the third in an accompanying summary order. We AFFIRM the
AFFIRMED.
EDWARD H. ROSENTHAL (Craig B. Whitney, on the brief), Frankfurt Kurnit Klein & Selz, P.C., New York, NY, for Defendant-Appellee Scholastic Inc.
PER CURIAM:
Plaintiffs-Appellants Michael Yamashita, a professional photographer and sole owner of Michael Yamashita, Inc., and Michael Yamashita, Inc. (collectively, “Yamashita”1), appeal from a judgment entered in the United States District Court for the Southern District of New York (Forrest, J.) in favor of Defendant-Appellee Scholastic Inc. (“Scholastic“), an international publisher of children‘s books and textbooks. In 2016, Yamashita sued Scholastic for copyright infringement, claiming that Scholastic exceeded the use limits set in the licenses to Yamashita‘s works that Scholastic purchased from Corbis Corporation (“Corbis“), a stock photography agency that Yamashita had authorized to license his works. The Complaint did not specify the use limits imposed by the Corbis license nor did it allege how Scholastic breached those limits. The District Court dismissed the Complaint for failure to state a claim and denied leave to amend on futility grounds.
On appeal, Yamashita argues primarily that the District Court erred by: (1) finding the Complaint insufficient; (2) ruling that his Proposed Amended Complaint did not cure the defects in the Complaint that the Court identified; and (3) denying him leave to plead four new, common-law claims. We address the first two of these arguments in this Opinion, and the third in an accompanying summary order.
For the reasons set forth below, we AFFIRM the District Court‘s judgment.
BACKGROUND2
Michael Yamashita is a professional photographer and the sole owner of Michael Yamashita, Inc. In an agreement entered into sometime before 2000, Yamashita authorized Corbis, a stock photography agency, to grant limited licenses for use of
Yamashita‘s photographs to interested publishers. Corbis, acting under its own agreements with Scholastic (the world‘s largest publisher and distributor of children‘s books), granted such licenses to Scholastic. Corbis is not a party to this suit.
1. Original Complaint and transfer to the Southern District of New York
In June 2016, Yamashita sued Scholastic in the United States District Court for the District of New Jersey, alleging that the publisher infringed his copyright in 82 photographs by exceeding the terms of the corresponding limited licenses purchased through Corbis. Yamashita listed the photographs that were the subject of the suit
Exhibit 1 displayed the following information for each Photograph: (a) a “thumbnail” copy of the image; (b) an “Image ID” number; (c) a brief description of the image;4 (d) the image‘s copyright registration number and registration date; (e) the number and date of the invoice that Corbis issued to Scholastic capturing the related license; and (f) the imprint within Scholastic for which the publisher had purchased the related license. In addition, the Exhibit 1 spreadsheet included a column labelled “Publication” and another column labelled “License Limits.” With two exceptions,5 the columns provided for “Publication” and “License Limits” contained no data.
In his Complaint, Yamashita alleged “[u]pon information and belief” that “the licenses granted Scholastic were expressly limited by number of copies, distribution area, language, duration, and/or media.” J.A. at 12, ¶ 11. Scholastic “exceeded the licenses” that it purchased, Yamashita alleged, and “infringed Yamashita‘s copyrights in the Photographs in various ways,” including (in Yamashita‘s words) by:
- printing more copies of the Photographs than authorized;
- distributing publications containing the Photographs outside the authorized distribution area;
- publishing the Photographs in electronic, ancillary, or derivative publications without permission;
- publishing the Photographs in international editions and foreign publications without permission; and/or
- publishing the Photographs beyond the specified time limits.
Id. ¶ 13. According to Yamashita, “at the time Scholastic represented to Corbis that it needed specified, limited licenses to use the Photographs in particular publications, Scholastic often knew its actual uses would exceed the rights it was requesting and paying for.” Id. ¶ 12. Yamashita asserted that “Scholastic alone knows of [its] wholly unauthorized uses,” and that Scholastic did “not share[] this knowledge with Yamashita.” Id. at 13, ¶¶ 14–15. The Complaint also identified eight other lawsuits in which Scholastic in recent years “has been sued for copyright infringement in furtherance of its under-licensing practices.” Id. ¶ 16. As a remedy, Yamashita sought both injunctive relief and damages.
Scholastic moved to dismiss the Complaint under
2. The motion to dismiss
In the Southern District of New York, Scholastic renewed its motion and the court dismissed the case. See generally Yamashita v. Scholastic, Inc., No. 16-cv-9201 (KBF), 2017 WL 74738 (S.D.N.Y. Jan. 5, 2017) (Forrest, J.). Invoking the copyright infringement standard set forth in Kelly v. L.L. Cool J, 145 F.R.D. 32 (S.D.N.Y. 1992), aff‘d 23 F.3d 398 (2d Cir. 1994) (Table), the District Court ruled that the Complaint “[did] not plead sufficient facts to support its claims beyond mere speculation,” and thus that the pleading both ran afoul of
In particular, the court faulted Yamashita‘s Complaint for its “speculat[ion] about ‘various ways’ defendant[] might have infringed” his copyrights and its failure to “name a single instance of infringement or [to] allege facts to establish a timeframe for when such an infringement might have occurred.” Id. at *1 (quoting J.A. at 12, Compl. ¶ 13). In the District Court‘s view, the Complaint did not “give the defendant fair notice of what the claim is and the grounds upon which it rests,” id. (alteration omitted) (quoting Twombly, 550 U.S. at 555). The court further found the Complaint inadequate because it “contain[ed] so few factual allegations it is nothing more than a fishing expedition,” id. at *2. The court therefore granted Scholastic‘s motion to dismiss and did so with prejudice.
3. Proposed Amended Complaint and ruling on motion for reconsideration
On Yamashita‘s subsequent motions, the court denied both reconsideration and leave to file a Proposed Amended Complaint (“PAC“), ruling that the PAC failed to cure the original Complaint‘s deficiencies. Indeed, the PAC was largely identical to the Complaint, providing the same information about the parties, jurisdiction, and venue, and the same allegations charging “Copyright infringement against Scholastic.” The PAC contained several additions and modifications to the Complaint‘s statement of the copyright infringement claim, however. Yamashita attached to the PAC copies of three images of his Photographs as they appeared in Scholastic publications. See J.A. at 310, ¶ 15 (Exhibits 2 through 4). With respect to one specific image, identified in Row 80 of Exhibit 1, the PAC included additional information about Scholastic‘s use of the image in one of its publications. Yamashita contends that the three new exhibits to the PAC, Exhibits 2 through 4, established Scholastic‘s use of the relevant image after the expiration of the relevant license. See id. at 310–11, ¶ 16. And, unlike the original Complaint, the PAC also asserted four common-law causes of action: “Breach of contract/specific performance“; “Bailment/breach of duties of bailee“; “Conversion“; and “Accounting.” Id. at 312–18, ¶¶ 25–65.
The District Court rejected Yamashita‘s post-dismissal motions in a brief hand-written order. In addition to denying reconsideration, the court rejected Yamashita‘s request to amend his copyright infringement claim (except as to the Row-80 image), ruling that amendment would be futile because “plaintiff has shown not a single fact supportive of an infringement claim with regard to any of those images.” SPA at 4. The court also denied Yamashita leave to add the proposed common-law claims to his Complaint, reasoning that each “depend[s] on a series of generic PVAs to which plaintiff is not a party,” and that “[t]o bring such claims might well require joinder of Corb[i]s.” Id. The court further wrote that “[i]t [was] also unclear and not ple[]d that Scholastic has breached its obligations to Corb[i]s.” Id. Accordingly, the court ordered Yamashita to file a revised amended complaint that would contain only Yamashita‘s claim relating to the Row-80 image.
Yamashita did as ordered; Scholastic answered; and the parties then stipulated to a
Yamashita timely appealed.
DISCUSSION
Broadly speaking, Yamashita asserts that the District Court erred in three ways. First, he argues that the Complaint as pleaded sufficed to state a claim for copyright infringement. Second, he contends that the court erred in denying him leave to file the PAC and to amend his infringement claim as to all but the Row-80 image. Third, he maintains that the court abused its discretion in denying him leave to plead the four additional, common-law claims. We focus here on the adequacy of Yamashita‘s copyright infringement pleadings and address the court‘s denial of leave to add the proposed common-law claims in a related summary order issued concurrently with this Opinion.
1. The sufficiency of the Complaint‘s copyright infringement pleading
Yamashita‘s one-count Complaint alleged 119 instances of copyright infringement. Because the court dismissed the Complaint under
In addition to the factual allegations contained in Yamashita‘s Complaint, we may consider documents—such as Exhibit 1—that he attaches to and relies on in the Complaint. See Nicosia, 834 F.3d at 230-31. To survive a
The parties have framed their dispute about the Complaint‘s sufficiency around the question whether the District Court erred by adopting the following four-part definition of an adequate copyright infringement claim, provided by the only copyright case cited in its merits order: “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, 145 F.R.D. at 36. Pointing to Supreme Court precedent identifying only two elements of copyright-infringement—“(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original,” Feist Publ‘ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991), Yamashita urges that his Complaint was sufficient notwithstanding its failure to provide details as to other elements.
We think that, under our Circuit‘s governing law, the correct disposition here turns not on whether there are two or four elements of a generic copyright infringement claim, but instead on the implications of the fact, acknowledged in Yamashita‘s Complaint, that Scholastic procured licenses to copy the Photographs. Whether Yamashita‘s Complaint was sufficient to withstand Scholastic‘s motion is determined by our answer to the question whether, in pleading copyright infringement, a plaintiff who has authorized the licensed use of its work to the alleged infringer must allege with specificity facts concerning the limits and asserted breaches of the licenses by the alleged infringer.
We have recognized previously that authorization to copy copyrighted material—i.e., through possession of an applicable license—is generally viewed as an affirmative defense to a claim of copyright infringement, and is a defense that the alleged infringer must plead and prove. See Bourne v. Walt Disney Co., 68 F.3d 621, 630–31 (2d Cir. 1995) (noting that the possession of a license by the alleged infringer is an affirmative defense); see also Spinelli v. Nat‘l Football League, 903 F.3d 185, 199 (2d Cir. 2018) (observing that, where plaintiffs allege that defendants used copyrighted photographs without license to do so, the defendant bears the burden of proving the existence of the license);
Applying these principles in the context of initial pleadings, when the existence of a license is not in question, a copyright holder must plausibly allege that the defendant exceeded particular terms of the license. Although Yamashita stands in this suit not as a party to the contract that set the limits now allegedly breached, and more as a beneficiary of that contract, the Corbis-Scholastic license still sets the terms that provide the foundation for Yamashita‘s Complaint.
Scholastic‘s purchase of licenses for each of the Photographs is undisputed, as we have said, so Scholastic was entitled to some copying. Rather, the gravamen of Yamashita‘s copyright-infringement claim as originally pleaded is that Scholastic (1) “represented to Corbis that it needed specified, limited licenses to use the Photographs in particular publications,” and then (2) ”exceeded the licenses and infringed Yamashita‘s copyrights in the Photographs.” J.A. at 12, ¶¶ 12, 13 (emphasis added). The Complaint alleges that it did so by using them in greater numbers than it had a right to, possibly in publications distributed outside the geographic boundaries of the license, and possibly after expiration of the licenses, among other ways. J.A. at 12, ¶ 13.
But the Complaint failed to identify any specific license limitations as having been breached for any specific Photograph, except the Row-80 image, as to which the claim was settled and dismissed with prejudice,6 and possibly, as noted, the Row-16 image.7 Instead, it offers a laundry list of license limitations that might have been imposed and that might have been violated as to the numerous Photographs. Each of the “various ways” in which Scholastic allegedly “infringed Yamashita‘s copyrights” would give rise to an actionable claim for a given Photograph, however, only if paired with a license limitation that was included in the license covering that Photograph. J.A. at 12, ¶ 13. Absent at least a modicum of such additional factual allegations,
Yamashita‘s Complaint is fairly characterized as no more than a collection of speculative claims based on suspicion alone. Such a complaint for infringement neither complies with
Resisting this conclusion, Yamashita points to district court decisions denying motions to dismiss in cases that are, Yamashita asserts, “just like this one.” Appellants’
We are similarly unpersuaded by Yamashita‘s argument that to require that copyright plaintiffs allege in detail the operative license limitations conflicts with our decision in Arista Records, LLC v. Doe 3, 604 F.3d 110 (2d Cir. 2010). In Arista, as Yamashita observes, we rejected the proposition that Twombly “imposed a heightened standard that requires a complaint to include specific evidence, factual allegations in addition to those required by
Moreover, his Complaint is qualitatively different in two ways from that of the copyright holder in Arista: first, the latter‘s allegations were more specific as to the nature of the allegedly infringing acts, enabling the defendant to respond; and second, the Arista court and the plaintiff were faced with an unidentified infringer, not just unidentified infringing uses. Id. at 121. Here, by contrast, Yamashita names Scholastic and admits, as it must, that the publisher was licensed to use the Photographs. Its Complaint offers little else other than a list of the Photographs at issue and a conclusory charge that the licenses were exceeded. To require more flesh on the bones of an infringement complaint against a license user aligns both with our decision in Bourne and the strictures of
We take this position with some sympathy, still, for Yamashita. It appears that he has no access, through his agent Corbis or otherwise, to information confirming or rebutting the extent of Scholastic‘s use of the images. Yet he feels there are grounds for believing that Scholastic has made unpermitted uses of at least some of his Photographs. His predicament underscores the precarious position that freelance commercial photographers occupy vis-à-vis their agents and publishers. There may be few ways to hold large publishers that operate internationally accountable for their usage of licensed copyrighted works. For this reason, Yamashita has launched what the District Court termed a “fishing expedition,” “trawling” for infringement, trying to place on Scholastic directly the burden of reporting and justifying its uses, and omitting Corbis from the picture. Yamashita, 2017 WL 74738, at *2.
Yamashita is correct that Scholastic should be able to detail its uses of his images and to pair those uses with the license limits that were imposed between it and Corbis, demonstrating either its compliance or exposing its noncompliance with the applicable licenses. But Yamashita does not explain why he is unaware of or cannot access the terms of the licenses executed by Corbis on his behalf. That, at least, would give him the first part of his infringement case: what limits on use were imposed as to each image. It would still put him to the burden of finding instances of actual infringement on which he could build a case against Scholastic, for even with the actual limits known, mere suspicion of overuse is not enough under Bourne to sustain a complaint, or to avoid the audit bureau scenario described above.
And so, ultimately, we cannot accept Yamashita‘s argument that we should casually deem his entirely generic allegations of breach, pleaded “upon information and belief,” sufficient simply because the facts regarding Scholastic‘s actual use of the licensed material are “peculiarly within [Scholastic‘s] possession and control.” Appellants’ Br. at 31. He must marshal more than unsubstantiated suspicions to gain entitlement to broad-ranging discovery of his agent‘s licensee.
We acknowledge that in a similar suit brought by photographers against a publisher, the Third Circuit has recently expressed disagreement with this approach, albeit in a procedural context quite different from that before us. It declined to adopt the pleading rule we enunciated in Bourne, explaining that “[t]he licenses obtained by [the publisher] were not granted by the photographers directly . . . [a]nd the royalty statements . . . lacked specific detail as to the scope of each license. . . [I]t [therefore] stands to reason that the photographers may not be aware of each license issued, or the scope of each license. Because they were not themselves directly privy to those licenses, we cannot expect them to plead unauthorized use as part of a prima facie case.” In re McGraw-Hill Global Ed. Holdings LLC, 909 F.3d 48, 66 (3d Cir. 2018) (citing Muhammad-Ali v. Final Call, Inc., 832 F.3d 760-61 (7th Cir. 2016)).
But this panel is not at liberty to relax the pleading requirements as we have previously applied them. The gravamen of the Complaint is that Scholastic violated Yamashita‘s copyright by exceeding the use limits provided in the Corbis-Scholastic agreement. For the reasons set forth above, Yamashita‘s generic Complaint specifying neither limits set nor limits breached does not state a claim under
2. Proposed Amended Complaint
As noted above, the District Court denied leave to amend the Complaint with regard to Yamashita‘s copyright claim—except insofar as it related to the Row-80 image—because the proposed amendment would not cure the Complaint‘s defects and amendment was futile.
Ordinarily, we review a district court‘s denial of leave to amend for abuse of discretion. Pyskaty v. Wide World of Cars, LLC, 856 F.3d 216, 224 (2d Cir. 2017). When, however, the court denies leave to amend “based on an interpretation
For the reasons described in Section 1, we need not linger long on Yamashita‘s suggestion that the PAC cured the defects in his copyright claim. First, the proposed additions reflected in the PAC primarily relate to the Row-80 image, for which the District Court permitted amendment. The PAC‘s attachments as Exhibits 3 and 4 of copies of Scholastic publications containing two other images (appearing in Rows 10 and 85 of Exhibit 1) do not cure the deficiencies in Yamashita‘s claims, because the PAC does not allege which, if any, license limitations Scholastic breached by including those images in those publications. See J.A. at 310, ¶ 15 (stating merely that, “[a]fter receiving limited licenses from Corbis, Scholastic copied Yamashita‘s Photographs in at least the Scholastic publications shown in Exhibits 2 – 4“). Contrary to Yamashita‘s view, his ability to plead a plausible infringement claim as to a single image (in Row 80) does not render his claim plausible as to all the images shown in the other 118 rows in Exhibit 1, absent plausible allegations of a connection between Scholastic‘s license for and use of the Row-80 image and its license for and use of the other images, or plausible, nonconclusory allegations of a pattern and practice of under-licensing and over-use.
For these reasons, we identify no legal error in the District Court‘s decision to reject as futile Yamashita‘s effort to amend this claim.
CONCLUSION
For the reasons set forth above and in the summary order that accompanies this opinion, the District Court‘s judgment is AFFIRMED.