Parisienne v. Scripps Media, Inc.

THEODORE PARISIENNE, Plaintiff, v. SCRIPPS MEDIA, INC., Defendant.

No. 19 Civ. 8612 (ER)

United States District Court, S.D. New York

August 17, 2021

OPINION & ORDER

Edgardo Ramos, U.S.D.J.

Theodore Parisienne brings this action against Scripps Media, Inc. asserting a claim for copyright infringement under 17 U.S.C §§ 106, 501. Pending before the Court is Scripps' motion to dismiss the Amended Complaint as time barred under the three-year statute of limitations provision of the Copyright Act, 17 U.S.C. § 507(b). Doc. 20. Because Parisienne's claims cannot be dismissed as untimely at this stage in the litigation, Scripps' motion is DENIED.

I. FACTUAL AND PROCEDURAL BACKGROUND

A. Factual Background

Theodore Parisienne is a professional photographer who licenses his photographs to online and print media. Doc. 17 ¶ 5.^[1] At issue in this case are two photographs that Parisienne took of a person on the wires of the Brooklyn Bridge (the “Photographs”). Id. ¶ 9. Parisienne licensed the Photographs to the New York Daily News, which ran a story that reproduced the Photographs on November 17, 2014. Id. ¶ 10; Doc. 17 Ex. B. Parisienne has always been the sole owner of all right, title, and interest in the Photographs. Id. ¶ 11. He registered the Photographs, along with two other photographs of the same person, with the United States Copyright Office under registration number VA 2-118-788 on September 11, 2018. Id. ¶ 12; Doc. 17 Ex. C.

On March 15, 2016, Scripps Media published an article on its website, www.cracked.com, entitled “6 Famous Places That A-Holes Have Made Intolerable To Visit, ” which featured the Photographs. Id. ¶ 13; Doc. 17 Ex. D. Scripps did not license the Photographs from Parisienne and did not have permission to publish the Photographs on its website. Id. ¶ 14.

Parisienne retained his counsel, the Liebowitz Law Firm, PLLC, on or about September 21, 2016. Id. ¶ 15. The Liebowitz Law Firm provides services to clients including “register[ing] photographs with the Copyright Office and search[ing] the internet to locate infringements.” Id. ¶ 17. Parisienne did not search for infringements of his photographs prior to retaining the Leibowitz Law Firm. Id. ¶ 16. Parisienne discovered Scripps' unauthorized use of his photographs via the Liebowitz Law Firm on September 4, 2018. Id. ¶ 18. Parisienne's discovery of the alleged infringement prompted him to register the Photographs with the Copyright Office on September 11, 2018. Id. ¶ 20. According to Parisienne, prior to discovering Scripps' infringing conduct, “there were no triggering events or ‘storm warnings'” to put Parisienne on inquiry notice that the Photographs were being used without his authority. Id. ¶ 21.

B. Procedural History

Parisienne brought this action on September 16, 2019. Doc. 1. On January 6, 2021, Scripps filed a motion to dismiss the complaint as time barred by the relevant statute of limitations. Doc. 14. Pursuant to Fed.R.Civ.P. 15(a)(1)(B), Parisienne filed the FAC on January 20, 2021, adding factual allegations relevant to the statute of limitations issue. Doc. 17. On January 29, 2021, the Court approved the parties' proposed briefing schedule and allowed Scripps to move to dismiss the FAC. Doc. 19. On March 1, 2021, Scripps filed the instant motion to dismiss the FAC as time barred and for attorney's fees and sanctions. Doc. 20.

II. LEGAL STANDARD

Under Rule 12(b)(6), a complaint may be dismissed for “failure to state a claim upon which relief can be granted.” Fed.R.Civ.P. 12(b)(6). When ruling on a motion to dismiss pursuant to Rule 12(b)(6), the Court must accept all factual allegations in the complaint as true and draw all reasonable inferences in the plaintiff's favor. See Koch v. Christie's Int'l PLC, 699 F.3d 141, 145 (2d Cir. 2012). The Court is not required, however, to credit “mere conclusory statements” or “[t]hreadbare recitals of the elements of a cause of action.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). A claim is facially plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). In resolving a 12(b)(6) motion, a district court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents incorporated by reference in the complaint. DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010).

“The pleading requirements in the Federal Rules of Civil Procedure, however, do not compel a litigant to anticipate potential affirmative defenses, such as the statute of limitations, and to affirmatively plead facts in avoidance of such defenses.” Abbas v. Dixon, 480 F.3d 636, 640 (2d Cir. 2007) (citing Jones v. Bock, 549 U.S. 1999 (2007)). A defendant's “argument that [p]laintiff's copyright infringement claims must be dismissed on statute of limitations grounds ‘is an affirmative defense for which [defendant] bear[s] the burden of proof.'” Lefkowitz v. McGraw-Hill Global Educ. Holdings, LLC, 23 F.Supp.3d 344, 358 (S.D.N.Y. 2014) (quoting United States v. Livecchi, 711 F.3d 345, 352 (2d Cir. 2013)). “A court may dismiss a copyright infringement claim on statute of limitations grounds at the pleadings stage where ‘it is clear from the face of the complaint, and matters of which the court may take judicial notice, that the plaintiff's claims are barred as a matter of law.'” PK Music Performance, Inc. v. Timberlake, No. 16 Civ. 1215 (VSB), 2018 WL 4759737, at *7 (S.D.N.Y. Sept. 30, 2018) (quoting Sewell v. Bernardin, 795 F.3d 337, 339 (2d Cir. 2015)). “However, where there is even ‘some doubt' as to whether dismissal is warranted, a court should not grant a Rule 12(b)(6) motion on statute of limitations grounds.” Id. (citing Ortiz v. Cornetta, 867 F.2d 146, 149 (2d Cir. 1989)).

III. DISCUSSION

A. Application of the Discovery Rule

Scripps moves to dismiss Parisienne's Amended Complaint pursuant to Fed.R.Civ.P. 12(b)(6), asserting that Parisienne's claims are time barred under the Copyright Act's three-year statute of limitations provision, 17 U.S.C. § 507(b). Scripps asserts that the claim accrued on March 15, 2016-the date that the article featuring the Photographs was published on www.cracked.com-and that the discovery rule should not apply to this case. Doc. 21 at 5-6. Scripps does not contend that Parisienne had actual notice of the alleged violations more than three years before the filing of the complaint, but rather that Parisienne, with due diligence, should have discovered the infringing acts more than three years prior to September 16, 2019, the date he brought this claim. Id. at 6-8.

Civil actions under the Copyright Act must be brought “within three years after the claim accrued.” 17 U.S.C § 507(b); accord, e.g., Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 670 (2014); Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 124 (2d Cir. 2014). “The Second Circuit, like ‘every Circuit to have considered the issue of claim accrual in the context of infringement claims,' follows the ‘discovery rule,' under which ‘copyright infringement claims do not accrue until actual or constructive discovery of the relevant infringement.'” Wu v. John Wiley & Sons, Inc., No. 14 Civ. 6746 (AKH) (AJP), 2015 WL 5254885, at *4 (S.D.N.Y. Sept. 10, 2015) (quoting Psihoyos, 748 F.3d at 124-25 & n.3 (collecting cases)). “Therefore, a copyright infringement claim accrues when a plaintiff discovers, or with due diligence should have discovered, the relevant infringement.” PK Music Performance, Inc., 2018 WL 4759737, at *7 (citing Psihoyos, 748 F.3d at 124). However, a copyright holder does not have a general duty to “police the internet to discover [a defendant's] use of his [p]hotograph[s].” Hirsch v. Rehs Galleries, Inc., No. 18 Civ. 11864 (VSB), 2020 WL 917213, at *5 (S.D.N.Y. Feb. 26, 2020).

“In determining the time at which discovery . . . occurred, terms such as inquiry notice and storm warnings may be useful to the extent that they identify a time when the facts would have prompted a reasonably diligent plaintiff to begin investigating.” Merck & Co. v. Reynolds 559 U.S. 633, 653 (2010) (internal quotations omitted). However, “the limitations period does not begin to run until the plaintiff thereafter discovers or a reasonably diligent plaintiff would have discovered the facts constituting the violation. . . irrespective of whether the actual plaintiff undertook a reasonably diligent investigation.” Id. (internal quotations and citations omitted). “The standard for whether a plaintiff should have discovered the relevant infringement is an objective one.” Masi v. Moguldom Media Grp. LLC, No. 18 Civ. 2402 (PAC), 2019 WL 3287819, at *5 (S.D.N.Y. July 22, 2019) (quoting PK Music Performance, Inc., 2018 WL 4759737, at *7); see also Wu v. John Wiley & Sons, Inc., 2015 WL 5254885, at *6 (knowledge that textbook publishers generally exceed licenses was not sufficient to constitute constructive discovery of specific infringement); Staehr v. Hartford Fin. Servs. Grp. Inc., 547 F.3d 406, 427 (2d Cir. 2008) (“Whether a plaintiff was placed on inquiry notice is analyzed under an objective standard.”). To dispute the date on which the claims accrued in copyright cases, a defendant must produce evidence “that would have been sufficient to awaken inquiry.” Michael Grecco Prods., Inc. v. Valuewalk, LLC, 345 F.Supp.3d 482, 512 (S.D.N.Y. 2018) (finding that evidence in the record was insufficient to determine when the statute of limitations began to run); see also Sohm v. Scholastic, Inc., No. 16 Civ. 7098 (JPO), 2018 WL 1605214, at *11 (S.D.N.Y. Mar. 28, 2018), aff'd in part, rev'd in part and ...