Williams v. D'youville Univ.

1

DR. STEPHEN E. WILLIAMS, DR. JAMES P. LALLEY, DR. HILLARY A. LOCHTE, DR. JAMIE N. DEWATERS, DR. NANCY KACZMAREK, and DR. JULIE H. CARTER, Plaintiffs, v. D'YOUVILLE UNIVERSITY, JBCN EDUCATION PRIVATE, LTD., CHALKBOARD SCHOOL SOLUTIONS, LLP, NATION OF LEARNING EXCELLENCE, and DOES 1-5, Defendants.^[1]

No. 1:21-CV-01001 (JLS) (LGF)

United States District Court, W.D. New York

October 23, 2024

DECISION AND ORDER

JOHN L. SINATRA, JR., UNITED STATES DISTRICT JUDGE

Plaintiffs Dr. Stephen E. Williams, Dr. James P. Lalley, Dr. Hillary A Lochte, Dr. Jamie N. DeWaters, Dr. Nancy Kaczmarek, and Dr Julie H. Carter commenced this action on September 6, 2021. Dkt. 1. This Court referred the case to United States Magistrate Judge Leslie G. Foschio for all proceedings under 28 U.S.C. §§ 636(b)(1)(A) and (B). Dkt. 18.

Presently before the Court is Judge Foschio's Report &amp Recommendation (“R&R”), issued on February 9 2024. Dkt. 62. Judge Foschio recommended that the motions to dismiss by Defendant D'Youville University and JBCN Education Private, Ltd., be granted in part and denied in part. See id. at 48. D'Youville filed objections to the R&R. Dkt. 67. Plaintiffs responded, and D'Youville replied. Dkts. 70, 73.

A district court may accept, reject, or modify the findings or recommendations of a magistrate judge. 28 U.S.C. § 636(b)(1); Fed.R.Civ.P. 72(b)(3). A district court must conduct a de novo review of those portions of a magistrate judge's recommendation to which a party objects. See 28 U.S.C. § 636(b)(1)(C); Fed.R.Civ.P. 72(b)(3). Based on a de novo review, this Court accepts and adopts Judge Foschio's R&R in part, and rejects it in part. The objections are sustained, and the Amended Complaint is dismissed in its entirety.

BACKGROUND

The Court assumes the parties' familiarity with the facts alleged in the complaint and Judge Foschio's analysis in the R&R and, accordingly, provides only a brief recitation of the facts.

Plaintiffs are former full-time faculty members at D'Youville who were terminated on or about September 7, 2018. Dkt. 44 ¶¶ 3-9. While at D'Youville, Plaintiffs were represented by the D'Youville College Chapter of the American Association of University Professors (“AAUP”). See Dkt. 1 ¶ 38.^[2] AAUP and D'Youville were parties to a collective bargaining agreement (“CBA”) in effect from 2017 to 2021. Id.-, see Dkt. 1-8.^[3]

Prior to their termination, Plaintiffs developed, at D'Youville's request, a curriculum and materials for a masters in education program that D'Youville wished to offer in collaboration with several unaccredited institutions. Dkt. 1 ¶¶ 28, 31. Following their departure from D'Youville, Plaintiffs obtained a copyright covering those materials through a joint work entitled, A Professional Masters Degree in Education: A detailed guide from planning to implementation (the “Subject Work”). Dkt. 44 ¶¶ 15-17; see Dkt. 44-2.

On September 6, 2021, Plaintiffs filed this action. Dkt. 1. Plaintiffs later filed the Amended Complaint, alleging copyright infringement, contributory copyright infringement, and vicarious copyright infringement under the Copyright Act of 1976, 17 U.S.C. § 101 et seq., as well as violations of their right to privacy under New York Civil Rights Law §§ 50-51. Dkt. 44 ¶¶ 21-43.

In the R&R, Judge Foschio recommended granting D'Youville's and JBCN's £ motions to dismiss as to Plaintiffs' contributory copyright infringement, vicarious copyright infringement, and state-law privacy claims. Dkt. 62, at 21-33. He further recommended granting JBCN's motion to dismiss based on a lack of personal jurisdiction and Plaintiffs' failure to effectuate timely service. Id. at 3346. But Judge Foschio recommended allowing Plaintiffs' direct copyright infringement claim against D'Youville to proceed. See id. at 8-15.

The Court agrees with Judge Foschio and all of his recommendations, except the recommendation to deny D'Youville's motion to dismiss Plaintiffs' direct copyright infringement claim. As discussed below, Plaintiffs do not plausibly allege that D'Youville's use of the copyrighted material exceeded the scope of the license granted by the CBA.

DISCUSSION

I. LEGAL STANDARDS

A. Motion to Dismiss

On a motion to dismiss, the Court's “task is to access the legal feasibility of the complaint.” See Lynch v. City of N.Y., 952 F.3d 67, 75 (2d Cir. 2020). In doing so, the Court “must take the facts alleged in the complaint as true, drawing all reasonable inferences in [the plaintiffs] favor.” In re NYSE Specialists Sec. Litig., 503 F.3d 89, 91 (2d Cir. 2007).

To survive a motion to dismiss, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). This plausibility standard demands “more than a sheer possibility that a defendant has acted unlawfully.” Id. Ultimately, plausibility “depends on a host of considerations, the full factual picture presented by the complaint, the particular cause of action and its elements, and the existence of alternative explanations so obvious that they render [the] plaintiffs inferences unreasonable.” L-7Designs, Inc. v. Old Navy, LLC, 647 F.3d 419, 430 (2d Cir. 2011).

B. The Copyright Act of 1976

To establish a claim of “copyright infringement, ‘two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.”' Abdin v. CBS Broadcasting, Inc., 971 F.3d 57, 66 (2d Cir. 2020) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). To satisfy the second element, “a plaintiff must demonstrate that: (1) the defendant has actually copied the plaintiffs work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of [the] plaintiffs work.” Id. (alteration, emphasis, internal quotation marks, and citation omitted).

A copyright owner “waives the right to sue, however, for uses of copyrighted material that are authorized by a non-exclusive license.” Great Minds v. Fedex Off. & Print Servs., Inc., 886 F.3d 91, 94 (2d Cir. 2018). Stated differently, “a valid license immunizes the licensee from a charge of copyright infringement, provided that the licensee uses the copyright as agreed with the licensor.” Universal Instruments Corp. v. Micro Sys. Eng'g, Inc., 924 F.3d 32, 40 (2d Cir. 2019) (internal quotation marks and citation omitted). As such, “[w]here a claim turns on the scope of a license, the copyright owner bears the burden of proving that the defendant's use was unauthorized.” Id. at 40-41 (internal quotation marks and citation omitted).

II. ANALYSIS

A. Direct Copyright Infringement

D'Youville objects to Judge Foschio's determination that Plaintiffs stated a claim for direct copyright infringement based on the use of a portion of the Subject Work describing an “Observation Assignment.” See Dkt. 67, at 8-15. Specifically, D'Youville argues that the CBA granted the institution a perpetual license to use: that portion of the Subject Work. See id. at 3-4, 10-15. This Court agrees.

“Copyright licenses . .. are construed according to principles of contract law.” Great Minds, 886 F.3d at 94. In a dispute over the meaning of a contract, “the threshold question is whether the contract is ambiguous, which is a question of law for the court.” Id. (internal quotation marks and citations omitted). Under New York law,^[4] a contract is ambiguous “if its terms could suggest more than more than one meaning when viewed objectively by a reasonably intelligent person who has examined the content of the entire integrated agreement and who is cognizant of the customs, practices, usages and terminology as generally understood in the particular trade or business.” Orchard Hill Master Fund Ltd. v. SBA Commc'ns Corp., 830 F.3d 152, 156-57 (2d Cir. 2016) (internal quotation marks and citation omitted). A contract is “unambiguous, however, if the contract language has a definite and precise meaning[,] . . . concerning which there is no reasonable basis for a difference of opinion.” Id. at 157 (alteration, internal quotation marks, and citation omitted).

Here, the CBA provides that D'Youville “shall retain a permanent license to use for pedagogical^[5] purposes associated with teaching courses at [D'Youville], any and all syllabi created, made or originated by an employee in the course of his or her duties and responsibilities for [D'Youville].” Dkt. 1-8, at 20.2. It further provides that, “[f]or purposes of this Agreement, a syllabus includes the course description, the expected course learning outcomes, course objectives, integrity policy, grading percentages, and list of suggested text and materials.” Id. (emphasis added). That definition of “syllabus” encompasses the portion of the Subject Work at issue.

The Subject Work is comprised of “at least a dozen original syllabi with all the accompanying lecture notes, tests, activitiesf,] and assignments.” See Dkt. 44-3, at 2. One such syllabus is for a 3-credit course called “Meeting the Needs of Exceptional Learners in the Inclusive Classroom” and taught by Plaintiff De Waters. See id. at 25-42. That syllabus contains a course description, course objectives, a course format, course requirements, and a grading policy-all of which are components of a syllabus, according to the CBA. See id.; see also Dkt. 1-8, at 20.2. But it also contains a description of an “Observation Assignment” worth 70% of a student's final grade in the course. See Dkt. 44-3, at 27-29.

Plaintiffs argue that the description of the “Observation Assignment” is not covered by the CBA's definition of a...