Section 602 of Copyright Act Does Not Set Cause of Action Separate From Infringement

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By Anandashankar Mazumdar  


Section 602 of the Copyright Act of 1976, which bars unauthorized exportation or importation of protected works, merely defines a type of copyright infringement and does not create a cause of action separate from infringement under Section 106, the U.S. District Court for the Southern District of New York ruled July 2 (Warren v. John Wiley & Sons Inc.,  S.D.N.Y., No. 1:12-cv-05070-JPO-MHD, 7/2/13).

Granting in part a defense motion to dismiss, the court also rejected claims of fraud for lack of specificity.

Photographers: Uses Exceeded Licenses

Laurie Rubin is a professional photographer based in Chicago who holds copyright interest in a work called “Burnt Toast.”

John Wiley & Sons Inc. of Hoboken, N.J., is a publisher of educational materials, including textbooks. In 2000, while preparing for the publication of Fundamentals of Physics (6th ed.) by David Halladay, Robert Resnick, and Jearl Walker, Wiley licensed use of Rubin's “Burnt Toast” for 100,000 English-edition hard copies.

However, the licensed images were used beyond the terms of the license, such as for foreign-language editions and electronic formats as well as for print runs exceeding 600,000 copies.

According to Rubin, Wiley's practices have included many instances of such behavior and Wiley initiated a “clean-up” program to obtain expanded licenses to cover its actual publication history. However, according to Rubin, Wiley, when contacting copyright holders to sign extended licenses, does not disclose that it has already used the works in violation of the original licenses.

In 2012, Rubin thus sued Wiley, some of its employees, as well as unidentified printing companies, alleging willful copyright infringement, fraud, fraudulent concealment, and infringing exportation.

William James Warren, a California-based photographer, similarly licensed several images to Wiley, including one titled “Executives Silhouetted” for use on the cover of The Five Dysfunctions of a Team: A Leadership Fable by Patrick M. Lencioni. David Young-Wolff was another photographer, based in the Los Angeles area, who granted licenses for 17 images, including an image of a mother and child, for use in Wiley's Visualizing Psychology by Siri Carpenter and Karen Huffman.

Warren and Young-Wolff also sued Wiley, making allegations similar to those made by Rubin.

Wiley and the other defendants moved for dismissal under Fed. R. Civ. P. 9(b) and 12(b)(6) for failure to state a claim for which relief is available under the law.

Ownership Established for Pleading Purposes

Judge J. Paul Oetken first rejected Wiley's claim that Young-Wolff's complaint had not adequately identified the 17 copyrighted works at issue. An appendix to the complaint lists the works, the court said, and “does not create any ambiguity as to the alleged infringement at issue.”

Next, the court rejected Wiley's argument that Warren and Rubin's complaints did not meet the standards of Rule 12(b)(6) because they had failed to attach copies of the relevant registration certificates. At this stage, the court said, it was sufficient that the plaintiffs had alleged registration.

To require anything more than that at the pleading stage would amount to “subject[ing] copyright plaintiffs to a heightened level of pleading, which is prohibited by decisions such as Mid America Title Co. v. Kirk, 991 F.2d 417, 26 U.S.P.Q.2d 1538 (7th Cir. 1993).

Thus, for the purposes of Rule 12(b)(6), the plaintiffs had adequately alleged ownership of valid copyrights and registration of the same. The court also rejected the argument that the plaintiffs had inadequately alleged what acts on Wiley's part amounted to infringement.

However, the court did dismiss the plaintiffs' claims against the individual Wiley employees, given that there was no indication that those employees had either authorized or had individually benefited from the infringement.

Rubin and Young-Wolff's claims of infringing exportation under Section 602 were found to be redundant, the court said. Section 602 merely defines certain acts as constituting copyright infringement under Section 106, the court said, and thus cannot constitute separate claims:  

[T]he plain language of the statute make it 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.  



Turning to the claims of fraud and fraudulent concealment, the court found that they were insufficient under both Rule 12(b)(6) and Rule 9(b), which applies specifically to fraud claims. To the extent that the plaintiffs were alleging misrepresentation by omission or commission, the court said, the allegations must specify specific persons and the specific statements that they made that were false.

Furthermore, there was inadequate allegation of harm or damages resulting from any alleged fraud distinct from the general infringement claims, the court said. Finally, there was no evidence that the plaintiffs had detrimentally relied upon any alleged misrepresentations.

Finally, the court found the plaintiffs' claims of breach of contract under New York state law insufficiently specific and dismissed those as well.

Warren was represented by Danial A. Nelson of Nelson & McCulloch, New York. Wiley was represented by Anna Kadyshevich Frankfurt of Kurnit Klein & Seiz, New York.

By Anandashankar Mazumdar  

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