Greenberg v. Scholastic, Inc.

          MEMORANDUM

          C. DARNELL JONES, II J.

         I. Introduction

         Plaintiff 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.

         II. Background

         Jeffrey 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.)

         For 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.^[1] (Am. Compl. ¶ 9, Ex. 1.)

         The 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.)

         III. Standard of Review

         In 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).

         IV. Discussion

         In 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, 2003).

         A. Registration

         The 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.

         Courts 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)^[2] (“to satisfy § 411 and establish one of the required elements of an infringement claim, Plaintiffs must establish ...