Woolcott v. Joseph Baratta, J.R. Baratta, Inc.

ROSALIND WOOLCOTT, Plaintiff, v. JOSEPH BARATTA, J.R. BARATTA, INC. and AMADO ORTIZ, Defendants.

13-CV-2964(JS)(GRB)

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK

Dated: May 7, 2014

MEMORANDUM & ORDER

APPEARANCES

For Plaintiff:

Alex Kriegsman, Esq.

Kriegsman PC

For Defendants

The Baratta

Defendants:

Wendy Ellen Miller, Esq.

Cooper & Dunham

Brian Marc Taddonio, Esq.

Ditthavong Mori & Steiner

Ortiz:

Edward Timothy McAuliffe, Jr., Esq.

Tarbet & Lester, PLLC

SEYBERT, District Judge:

Plaintiff Rosalind Woolcott ("Plaintiff" or "Woolcott") commenced this copyright infringement action on May 20, 2013 against Defendants Joseph Baratta ("Baratta"); J.R. Baratta, Inc. ("J.R. Baratta," and together with Baratta, the "BarattaDefendants"); and Amado Ortiz ("Ortiz" and together with the Baratta Defendants, "Defendants"). Woolcott alleges that Defendants infringed upon her copyright in the architectural design of a residential house in East Hampton, New York when Defendants designed and constructed two houses that, according to Woolcott, are substantially similar to Woolcott's design. The Amended Complaint alleges copyright infringement under 17 U.S.C. § 501 and state law claims of conversion and unfair competition. Defendants move to dismiss Woolcott's copyright claim for lack of statutory standing and for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). (Docket Entries 18-19.) Defendants also move to dismiss the state law claims for lack of subject matter jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(1) or, in the alternative, on the basis that federal copyright law preempts the state law claims. For the following reasons, Defendants' motions are GRANTED IN PART and DENIED IN PART.

BACKGROUND

I. Factual Background¹

Woolcott is an individual residing in East Hampton, New York. (Am. Compl., Docket Enty 15, ¶ 4.) She holds a certificateof copyright registration issued by the United States Copyright Office for an "architectural work" identified in the registration certificate as The Woolcott Residence.² (Am. Compl. Ex. A.) The Woolcott Residence is a design of a residential home "embodied in a tangible medium of expression, including but not limited to, a building, architectural plans, and drawings." (Am. Compl. ¶ 14.) Construction of The Woolcott Residence was completed in East Hampton, New York in May of 2010. (Am. Compl. Ex. A.)

Woolcott alleges that J.R. Baratta (a homebuilding and general contracting company), Baratta (the president of J.R. Baratta), and Ortiz (an architect) illegally copied the design of The Woolcott Residence for use in the construction of two homes in East Hampton, New York--one at 5 Woodpink Drive (the "Woodpink House") and the other on Koala Lane (the "Koala House," and together with the Woodpink House, the "Baratta Houses").³ Woolcott specifically alleges that the Baratta Defendants "gained access to [The Woolcott Residence] by posing as potential buyers" and that they "obtained a copy of the plans for [The Woolcott Residence] through an inquiry at the Town of East Hampton BuildingDepartment." (Am. Comp. ¶¶ 32-33.) The Baratta Defendants then "showed [Ortiz The Woolcott Residence] and the architectural plans" and "employed and solicited [his] services . . . to copy [The Woolcott Residence] and infringe on [Woolcott's] copyright by creating drawings, sketches, and architectural plans that are substantially similar to the protectable elements of [Woolcott's] copyrightable subject matter." (Am. Compl. ¶¶ 34-35.)

The Amended Complaint asserts a cause of action for copyright infringement pursuant to 17 U.S.C. § 501 and state law claims for "conversion of [Woolcott's] intellectual property" and unfair competition. (Am. Compl. ¶¶ 28-60.) With respect to the unfair competition claim, Woolcott alleges that "Defendants obtained plans and designs of Plaintiff's intellectual property through intentional, unlawful, and deceptive conduct" and that the "use by Defendants of Plaintiff's copyright create [sic] an unfair advantage to the detriment of Plaintiff." (Am. Compl. ¶¶ 56, 58.) As an example, Woolcott alleges that she "was planning to sell the plans and designs to [The Woolcott Residence] and had at least one potential buyer who was willing to purchase the plans and designs . . . until he learned of Defendants' unlawful copying." (Am. Compl. ¶ 55.)

The Amended Complaint attaches the registration certificate and the architectural plans to The Woolcott Residence (the "Woolcott Plans"), which Woolcott deposited with theCopyright Office. (See Am. Compl. Exs. A-B.) The Amended Complaint also attaches a photograph of the back side of The Woolcott Residence, but not the front side of it; a photograph of the front side of the Woodpink House, but not the back side of it; and the architectural plans to the Woodpink House. (Am. Compl. Exs. C-E.) The Amended Complaint does not attach any photographs of the Koala House, nor does it attach the architectural plans to the Koala House.

II. Procedural History

Woolcott commenced this action on May 20, 2013. Defendants moved to dismiss the original Complaint in June of 2013. (Docket Entries 9 & 14.) On July 5, 2013, Woolcott filed the Amended Complaint, and the Court subsequently denied Defendants' original motions to dismiss as moot on August 21, 2013. On August9, 2013, the Baratta Defendants moved to dismiss the Amended Complaint. (Docket Entry 18.) On August 15, 2013, Ortiz also moved to dismiss the Amended Complaint. (Docket Entry 19.) These motions are currently pending before the Court.

DISCUSSION

The Court will first address the applicable legal standard before turning to the merits of Defendants' pending motions to dismiss.⁴

I. Legal Standard

In deciding a Rule 12(b)(6) motion to dismiss, the Court applies a "plausibility standard," which is guided by "[t]wo working principles." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009); accord Harris v. Mills, 572 F.3d 66, 71-72 (2d Cir. 2009). First, although the Court must accept all allegations as true, this "tenet" is "inapplicable to legal conclusions;" thus, "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Iqbal, 556 U.S. at 678; accord Harris, 572 F.3d at 72. Second, only complaints that state a "plausible claim for relief" can survive a Rule 12(b)(6) motion to dismiss. Iqbal, 556 U.S. at 679. Determining whether a complaint does so is "a context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Id.; accord Harris, 572 F.3d at 72.

The Court is confined to "the allegations contained within the four corners of [the] complaint." Pani v. Empire Blue Cross Blue Shield, 152 F.3d 67, 71 (2d Cir. 1998). However, this has been interpreted broadly to include any document attached to the complaint, any statements or documents incorporated in thecomplaint by reference, any document on which the complaint heavily relies, and anything of which judicial notice may be taken. See Chambers v. Time Warner, Inc., 282 F.3d 147, 152-53 (2d Cir. 2002) (citations omitted); Kramer v. Time Warner Inc., 937 F.2d 767, 773 (2d Cir. 1991).

II. Copyright Infringement Claim

To state a claim for copyright infringement, a plaintiff must allege: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Perrin & Nissen Ltd. v. SAS Grp., Inc., No. 06-CV-13089, 2009 WL 855693, at *4 (S.D.N.Y. Mar. 27, 2009) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991)). Defendants urge the Court to dismiss Woolcott's copyright infringement claim for two reasons. First, Defendants argue that Woolcott lacks standing to bring her copyright claim because she does not own a valid copyright for The Woolcott Residence. (Baratta Br., Docket Entry 18-1, at 6-8; Ortiz Br. at 4-5.) Second, Defendants argue that Woolcott has not adequately alleged that Defendants copied The Woolcott Residence because The Woolcott Residence is not substantially similar to the Baratta Houses as a matter of law. (Baratta Br. at 8-11; Ortiz Br. at 6.) The Court will address these arguments in turn.

A. Ownership of a Valid Copyright

Section 501(b) of the Copyright Act provides that "the legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b). The Second Circuit has stated that this provision "authorizes only two types of claimants to sue for copyright infringement: (1) owners of copyrights, and (2) persons who have been granted exclusive licenses by owners of copyrights." Eden Toys, Inc. v. Florelee Undergarment Co., 697 F. 2d 27, 32 (2d Cir. 1982), superseded on other grounds by FED. R. CIV. P. 52(a). In addition, under the Copyright Act, a registration certificate "made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c).⁵

Here, Woolcott alleges in the Amended Complaint that The Woolcott Residence "is an original 'architectural work' owned and created by [Woolcott]"⁶ and that Woolcott obtained a certificateof copyright registration from the United States Copyright Office on May 31, 2012. (Am. Compl. ¶¶ 11-13.) These allegations alone are sufficient to state a claim that Woolcott owns a valid copyright. See, e.g., Domino Recording Co. v. Interscope Geffen A&M Records, No. 09-CV-8400, 2010 WL 3001953, at *1 (S.D.N.Y. July 22, 2010); Perrin, 2009 WL 855693, at *4. In addition, by attaching the registration certificate to the Amended Complaint, which states that Woolcott is the author of The Woolcott Residence (Am. Compl. Ex. A), Woolcott has produced prima facie evidence that she is...