United States District Court, E.D. Pennsylvania
DARNELL JONES, II J.
Jeffrey Greenberg, a professional photographer, brings this
suit against Defendant Scholastic, Inc. under the Copyright
Act, 17 U.S.C. §§ 101 et seq., for
allegedly using his photographs in its publications without
paying him. In response, Defendant has filed a Motion to
Dismiss Plaintiff's First Amended Complaint. For the
reasons set forth below, Defendant's Motion shall be
granted in part and denied in part.
Greenberg makes his living by creating and licensing
photographs. (Am. Compl. ¶ 2.) These photographs have
been registered or have registrations pending with the United
States Copyright Office. (Am. Compl. ¶ 7.) Plaintiff
entered into licensing agreements with stock photo agencies
(licensees), granting them a limited right to sublicense his
photos to third parties in exchange for a percentage of the
fees they negotiated. (Am. Compl. ¶ 8.) Beginning in
1998, Defendant obtained access to several of Plaintiff's
photographs through the licensees. (Am. Compl. ¶ 9.)
However, any license that Defendant obtained was expressly
limited with regard to how it could be used by number of
copies, distribution area, image size, language, duration and
type of media (print or electronic). (Am. Compl. ¶ 10.)
purposes of the instant Motion, the photographs at issue can
be divided into two categories. The first category involves
those for which Defendant was invoiced. (Am. Compl. ¶
9.) Exhibit 1 to the Amended Complaint identifies the
photographs by image ID and includes, among other
information, the invoice number, and in some cases, the names
of the publications in which the photograph was
used. (Am. Compl. ¶ 9, Ex. 1.)
second category of documents is set forth in Paragraphs 12
and 13 of the Amended Complaint, in which Plaintiff alleges
that Defendant, after retaining access to Plaintiff's
copyrighted photographs, “used the Photographs in
additional publications without permission, or in excess of
permission granted.” (Am. Compl. ¶¶ 12, 13.)
The Amended Complaint goes on to further allege that
“Greenberg has no way of discovering the full extent of
Scholastic's additional unauthorized uses of his
work” and that “Scholastic alone knows the full
extent to which it has infringed Plaintiff's
copyrights[.]” (Am. Compl. ¶ 14.)
Standard of Review
deciding a motion to dismiss pursuant to Rule 12(b)(6),
courts must accept all factual allegations as true, construe
the complaint in the light most favorable to the plaintiff,
and determine whether, under any reasonable reading of the
complaint, the plaintiff may be entitled to relief.
Phillips v. County of Allegheny, 515 F.3d 224, 233
(3d Cir. 2008) (internal quotation and citation omitted).
After the Supreme Court's decision in Bell Atl. Corp.
v. Twombly, [t]hreadbare recitals of the elements of a
cause of action, supported by mere conclusory statements, do
not suffice. Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (citing Twombly, 550 U.S. 544, 555 (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 for the misconduct
alleged. Id. at 678 (citing Twombly, 550
U.S. at 556). This standard asks for more than a sheer
possibility that a defendant has acted unlawfully. Id.
Accord Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d
Cir. 2009) (“[A]ll civil complaints must contain more
than an unadorned, the-defendant-unlawfully-harmed-me
accusation.”) (internal quotation marks omitted).
order to plead a plausible copyright infringement claim, a
plaintiff must allege ownership of a valid copyright and
unauthorized use of the original, constituent elements of the
work. See Star Athletica L.L.C. v. Varsity Brands,
Inc., 137 S.Ct. 1002, 1008 (2017); Tanikumi v. Walt
Disney Co., 616 F. App'x 515, 519 (3d Cir. 2015);
Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199,
203 (3d Cir. 2005); Dun & Bradstreet Software Servs.
v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir.
2002); Tanksley v. Daniels, 259 F.Supp.3d 271, 280
(E.D. Pa. 2017); Cottrill v. Spears, Civ. No.
02-3646, 2003 U.S. Dist. LEXIS 8823, at *14 (E.D. Pa. May 22,
Copyright Act states that “no civil action for
infringement of the copyright in any United States work shall
be instituted until preregistration or registration of the
copyright claim has been made in accordance with this
title.” 17 U.S.C. § 411(a). Defendant herein
asserts that the majority of photographs at issue lack a
completed copyright registration, therefore no claims can be
brought regarding use of those photographs.
are split over the interpretation of the language of the
statute “with some endorsing an ‘application'
approach in which a copyright infringement plaintiff may rely
on his pending copyright application to bring suit, while
others take the ‘registration approach'… in
which the Copyright Office's issuance of a certificate of
registration is a prerequisite to suit.” Patrick
Collins, Inc. v. Doe, 843 F.Supp.2d 565, 568 (E.D. Pa.
2011). The Third Circuit has not expressly addressed the
issue. However, recent cases within the Third Circuit-and in
particular, this District-have adopted the
“registration approach.” See Dawes-Lloyd v.
Publish America, LLLP, 441 F. App'x 956, 957 (3d
Cir. 2011) (per curiam) (granting judgment in favor of
Defendant because Plaintiff “did not hold a registered
copyright.”); Ford Motor Co. v. Summit Motor
Prods., 930 F.2d 277, 290-291 (3d Cir. 1991)
(reiterating how copyright registrations must be utilized to
establish “validity and ownership of the
material.”); Browne v. Zaslow, 103 F.Supp.3d
666, 671-72 (E.D. Pa. 2015) (“to satisfy § 411 and
establish one of the required elements of an infringement
claim, Plaintiffs must establish ...