L.A. T-Shirt & Print, Inc. v. Rue 21, Inc., 16-CV-5400 (RA)

OPINION & ORDER

RONNIE ABRAMS, United States District Judge:

These consolidated actions address the scope of copyright protection for several designs depicting bears and elephants. Plaintiffs L.A. T-Shirt and Print, Inc. ("L.A. T-Shirt") and Ben Kwok claim that Defendants Rue 21, Inc., 6 Two Apparel, Ltd., Sears Holding Corp., Sears, Roebuck & Co., Kmart Corp., and Ross Stores, Inc. infringed their copyrights by selling T-shirts featuring their copyrighted designs. Before the Court is Defendants' motion to dismiss the complaint. For the reasons set forth below, Defendants' motion is denied.

L.A. T-Shirt creates and obtains rights to two-dimensional designs used in apparel. See Compl. ¶ 1, No. 16-CV-5400 ("'5400 Compl.") (Dkt. 1). At issue in this case are four copyrighted designs.¹ The first is the "Tribal Bear," for which L.A. T-Shirt owns Registration No. VA 1-953-175. See id. ¶ 9. The Tribal Bear design depicts a bear sporting red sunglasses and a feathered headdress, with a red cup in its right hand. See Decl. of Ben Kwok ("Kwok Decl.") Ex. 1, No. 16-CV-5400 (Dkt. 68-1). Incorporated within the bear is a complex pattern of stripes filled with

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various shapes, including diamonds and triangles, in a combination of different colors, the most prominent of which are shades of turquoise, red, and ivory. See id. The second copyrighted design is the "Party Bear," for which L.A. T-Shirt owns Registration No. VA 1-979-412. See Compl. ¶ 14, No. 16-CV-5710 ("'5710 Compl.") (Dkt. 1). The Party Bear also depicts a bear with the same internal pattern, wearing red sunglasses—but no headdress—and raising a red cup in its right hand. See Kwok Decl. Ex. 2 (Dkt. 68-2). The third copyrighted design is the "Navajo Pattern," for which L.A. T-Shirt owns Registration No. VA 1-979-414, which is the internal pattern used in the Tribal Bear and Party Bear designs. See '5710 Compl. ¶ 14; Kwok Decl. Ex. 3 (Dkt. 68-3). The final copyrighted design at issue is the "Ornate Elephant," which is registered by Ben Kwok under Registration No. VA 1-871-548 and exclusively licensed to L.A. T-Shirt. See Compl. ¶ 10, No. 16-CV-6021 ("'6021 Compl.") (Dkt. 1). The Ornate Elephant depicts an elephant, standing with its trunk hanging slightly to its right and featuring an intricate internal design of stripes, concentric circles, and other patterns, each including various shapes in shades of ivory, blue, red, and black. See Kwok Decl. Ex. 4.

Between April 2015 and March 2016, Plaintiffs discovered that Defendants were selling garments featuring "identical or substantially similar" designs. '5400 Compl. ¶ 11. First, in or around April 2015, L.A. T-Shirt discovered that Rue 21, Inc. ("Rue 21") and 6 Two Apparel Group Ltd. ("6 Two") were selling two allegedly infringing T-shirts: one featuring a bear with an ornate internal pattern, red sunglasses, and a feathered headdress, see '5400 Compl. ¶ 11; Kwok Decl. Ex. 9, and one featuring an elephant with a complex and colored internal pattern, see Compl. ¶ 11, No. 16-CV-5702 ("'5702 Compl.") (Dkt. 1); Kwok Decl. Ex. 12. Second, in February 2016, L.A. T-Shirt allegedly discovered that Ross Stores, Inc. ("Ross") was selling a T-shirt that, like the Tribal Bear design, depicted a bear with an ornate internal pattern, red sunglasses, and a feathered

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headdress. See Compl. ¶ 11, No. 16-CV-5706 ("'5706 Compl.") (Dkt. 1); Kwok Decl. Ex. 10. Third, in March 2016, L.A. T-Shirt discovered that Sears Holdings Corp., Sears, Roebuck & Co., and Kmart Corp. (collectively, "Sears"), as well as 6 Two, were selling garments including designs that are, according to Plaintiffs, identical or substantially similar to the Party Bear, Navajo Pattern, and Ornate Elephant. See '5710 Compl. ¶ 16; Compl. ¶ 15, No. 16-CV-6017 ("'6017 Compl.") (Dkt. 1); Kwok Decl. Exs. 5, 6, 11. The T-shirt allegedly sold by Sears, for example, features a bear with an ornate internal design wearing red sunglasses and raising a red cup, framed by text reading "BAD DECISIONS MAKE GREAT STORIES." See Kwok Decl. Ex. 11. Finally, in March 2016, L.A. T-Shirt and Kwok allegedly discovered that Ross was also selling garments featuring an elephant that, in their view, was identical or substantially similar to the Ornate Elephant. See '6021 Compl. ¶ 11; Kwok Decl. Ex. 13.

Between March 3, 2016 and May 26, 2016, L.A. T-Shirt filed six complaints against Defendants in the United States District Court for the Central District of California, asserting claims for copyright infringement and vicarious and/or contributory copyright infringement.² Aside from the Defendants' names, the copyrights at issue, and the dates on which the allegedly infringing activity was discovered, the complaints are essentially identical. The cases were subsequently transferred to this Court. On August 16, 2016, the Court consolidated the cases into two actions: one involving alleged infringement of the Tribal Bear, Party Bear, and Navajo Pattern designs and one involving alleged infringement of the Ornate Elephant design. See Order, No. 16-CV-5400 (Dkt. 43).

On September 6, 2016, Defendants filed answers in both of the consolidated actions. See Answer, No. 16-CV-5400 (Dkt. 52); Answer, No. 16-CV-5702 (Dkt. 45). On November 30, 2016,

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despite having already answered the complaints, Defendants filed a motion to dismiss the complaints for failure to state a claim or, in the alternative, for summary judgment. See Defs.' Mot. to Dismiss, No. 16-CV-5400 (Dkt. 58).³ On December 16, 2016, Plaintiffs filed a brief in opposition. See Pls.' Opp'n Mem., No. 16-CV-5400 (Dkt. 67). On December 29, 2016, Defendants filed a declaration in reply. See Decl. of Jack S. Dweck in Supp. of Mot. to Dismiss ("Defs.' Reply Decl."), No. 16-CV-5400 (Dkt. 73).⁴

Because Defendants filed this motion to dismiss for failure to state a claim after filing an answer, the Court construes the motion as a motion for judgment on the pleadings under Rule 12(c). See Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001); accord Ne. Indus. Dev. Corp. v. Parkstone Capital Partners, LLC (In re Ne. Indus. Dev. Corp.), No. 14-CV-7056 (NSR), 2015 WL 3776390, at *2 (S.D.N.Y. June 16, 2015); Funnekotter v. Agric. Dev. Bank of Zim., No. 13-CV-1917 (CM), 2013 WL 6091616, at *2 (S.D.N.Y. Nov. 15, 2013). "The standard for addressing a Rule 12(c) motion for judgment on the pleadings is the same as that for a Rule 12(b)(6) motion to dismiss for failure to state a claim." Hogan v. Fischer, 738 F.3d 509, 514-15 (2d Cir. 2013). To survive a motion to dismiss under Rule 12(b)(6), a complaint must plead "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable

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for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). "Where a complaint pleads facts that are 'merely consistent with' a defendant's liability, it 'stops short of the line between possibility and plausibility of entitlement to relief.'" Id. (quoting Twombly, 550 U.S. at 557). When considering a Rule 12(b)(6) motion, courts "accept[] plaintiffs' plausible allegations as true and draw[] all reasonable inferences in their favor." Fernandez v. Zoni Language Ctrs., Inc., 858 F.3d 45, 48 (2d Cir. 2017).

"On a 12(c) motion, the court considers 'the complaint, the answer, any written documents attached to them, and any matter of which the court can take judicial notice for the factual background of the case.'" L-7 Designs, Inc. v. Old Navy, LLC, 647 F.3d 419, 422 (2d Cir. 2011) (quoting Roberts v. Babkiewicz, 582 F.3d 418, 419 (2d Cir. 2009) (per curiam)). "A complaint 'is deemed to include any written instrument attached to it as an exhibit or any statements or documents incorporated in it by reference.'" Nicosia v. Amazon.com, Inc., 834 F.3d 220, 230 (2d Cir. 2016) (quoting Chambers v. Time Warner, Inc., 282 F.3d 147, 152 (2d Cir. 2002)); accord Kalyanaram v. Am. Ass'n of Univ. Professors at N.Y. Inst. of Tech., Inc., 742 F.3d 42, 44 n.1 (2d Cir. 2014). "Where a document is not incorporated by reference, the court may nevertheless consider it where the complaint 'relies heavily upon its terms and effect,' thereby rendering the document 'integral' to the complaint." Nicosia, 834 F.3d at 230 (quoting DiFolco v. MSNBC Cable LLC, 622 F.3d 104, 111 (2d Cir. 2010)). For a document to be considered "integral" to a plaintiff's complaint, the plaintiff must "rely on the terms and effect of the document in drafting the complaint; mere notice or possession is not enough." Id. at 231 (emphasis in original) (quoting Glob. Network Commc'ns, Inc. v. City of New York, 458 F.3d 150, 156 (2d Cir. 2006)); accord Chambers, 282 F.3d at 153. Here, although Plaintiffs did not attach images of their copyrighted works or Defendants' allegedly infringing works to their complaints, Plaintiffs rely heavily upon

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the appearance of these works—indeed, Plaintiffs' infringement claims turn on the similarities between the appearances of their works and Defendants'. Thus, the Court may consider images of Plaintiffs' and Defendants' works as "integral" to the complaints in evaluating Defendants' motion. See Nicosia, 834 F.3d at 230; Sira v. Morton, 380 F.3d 57, 67 (2d Cir. 2004) (holding that documents could be considered as a part of the complaint where the "complaint explicitly refers to and relies upon" them).⁵

"To prove a claim of copyright infringement, a plaintiff must show (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original." Urbont v. Sony...