I.C. v. Delta Galil USA

• Decision Date: 29 September 2015
• Docket Number: No. 1:14–cv–7289–GHW.,1:14–cv–7289–GHW.
• Parties: I.C., a minor, by her mother and natural guardian Ellen SOLOVSKY, Plaintiff, v. DELTA GALIL USA and Sock Drawer, LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

135 F.Supp.3d 196

I.C., a minor, by her mother and natural guardian Ellen SOLOVSKY, Plaintiff,

v.DELTA GALIL USA and Sock Drawer, LLC, Defendants.

No. 1:14–cv–7289–GHW.

United States District Court, S.D. New York.

Signed Sept. 29, 2015.

Aura Jean Scileppi, Richard Weiss, William Irvin Dunnegan, Dunnegan & Scileppi LLC, New York, NY, for Plaintiff.

Erik Thomas Kindschi, Kenneth A. Schulman, Maryaneh Mona Simonian, Pryor Cashman LLP, Avid S. Douglas, Gallet Dreyer & Berkey, LLP, New York, NY, for Defendants.

MEMORANDUM OPINION AND ORDER

GREGORY H. WOODS

, District Judge:

I. INTRODUCTION

Miss Matched, Inc., a children's clothing and accessory company, sponsored a contest in 2011 at a New York elementary school, giving students the chance to submit original t-shirt designs in the hopes of having that design featured on a t-shirt. Winning students received $100 gift card and five t-shirts bearing their design, but the contest rules also broadly assigned the ownership rights of submitted designs to Miss Matched. Plaintiff, a minor bringing this action by her mother and natural guardian, entered and won the contest. After discovering that her design spawned an entire catalogue of clothing and accessories, she brought suit for copyright infringement and state law claims for unjust enrichment and quantum meruit against two successor companies of Miss Matched. For the reasons outlined below, defendants' motion to dismiss is GRANTED in part and DENIED in part.

II. BACKGROUND¹

Miss Matched, Inc. sponsored a contest at P.S. 116, an elementary school in the Kips Bay neighborhood of Manhattan, in the fall of 2011. Am. Compl. at ¶ 11, Dkt. No. 47. The contest, "LittleMissMatched's TEE OFF! PROJECT TEE," offered students the chance to design a t-shirt for the company's LittleMissMatched brand of clothing. Id. LittleMissMatched is a girls' clothing brand that generally features bright, contrasting colors and purposely mismatched, but coordinated, designs. Id. at 9. Contest entrants were judged based on "[e]xecution of the theme," "[o]riginality," and "representation of brand message." Contest Rules at 6, Dkt. No. 47–1. The winning design entry would be featured on a t-shirt, and the winner would receive $100 gift card and five t-shirts with his or her design. Am. Compl. at ¶ 11; Contest Rules at ¶ 4.

The contest rules included in the students' submission forms provided that the ownership rights for all contest entries, including the copyrights for all designs submitted, became the property of Miss Matched—either because the entries were works "made for hire" or because the students agreed to assign all ownership rights to Miss Matched. Am. Compl. at ¶ 13; Contest Rules at ¶ 5. Specifically, the contest rules state:

By entering, you agree that your entry shall be a "work made for hire" with all rights therein, including, without limitation, the exclusive copyright, being the property of Sponsor. In the event the entry is considered not to be a "work made for hire," by entering, you irrevocably assign to Sponsor all right, title, and interest in your Content, design and entry (including, without limitation, the copyright) to Sponsor, including in any and all media whether now known or hereafter devised, in perpetuity, anywhere in the world, with the right to make any and all uses thereof, including, without limitation, for purposes of advertising or trade.

Id.

I.C., a second grade student at the elementary school, created a design for the contest in October 2011. Am. Compl. at ¶¶ 13, 15. Her design was hand-drawn on a template provided by Miss Matched. Am. Compl. at ¶ 18; Contest Submission, Dkt. No. 47–2. The design consists of a smiley face on the front of the t-shirt, with the word "Hi" written above and below the face; and a frowning face on the back of the t-shirt, with the word "bye" written above and below the face. Am. Compl. at ¶ 16; Contest Submission. I.C. and her mother signed the submission form, and she submitted her contest entry, the "Hi/Bye" design, to Miss Matched on October 21, 2011. Am. Compl. at ¶¶ 18, 20; Contest Submission, Dkt. No. 47–2. Her design is pictured below:

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In February 2012, Miss Matched announced that I.C. was one of two contest winners selected from her elementary school. Am. Compl. at 22. In the announcement, Miss Matched offered t-shirts featuring the two winning designs for sale to other students at her elementary school. Announcement, Dkt. No. 47–3. I.C. received a $100 gift card and five t-shirts with the "Hi/Bye" design for winning the contest, but did not receive compensation from Miss Matched for any sales of t-shirts with her design. Am. Compl. at ¶¶ 23–24. Subsequent sales of the Hi/Bye t-shirt were not limited to I.C.'s elementary school; indeed, an entire catalogue of clothing and accessories bearing that design continues to be sold under the LittleMissMatched brand, expanding from t-shirts to socks, purses, and headphones, among other items. Am. Compl. at 32, Catalogue, Dkt. No. 47–4. A picture of the t-shirt bearing the Hi/Bye design sold by Miss Matched is shown below:

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Miss Matched subsequently went out of business, but sold all of its assets to defendant Sock Drawer in December 2012. Am. Compl. at ¶ 25. Sock Drawer in turn sold the Miss Matched assets to defendant Delta Galil.² Id. Delta Galil continued Miss Matched's business, and continues to sell clothing and accessories with the Hi/Bye design under the LittleMissMatched brand. Am. Compl. at ¶ 26.

In April 2014, plaintiff sent a letter to Miss Matched, purporting to disaffirm any contract that I.C. entered into with Miss Matched or any affiliated company. Am. Compl. at 29. That same month, plaintiff submitted an application to register the Hi/Bye design with the United States Copyright Office. The Copyright Office rejected the application on June 26, 2014, finding that the design "lacks the authorship necessary to support a copyright claim." Id. at ¶¶ 33–34.

Plaintiff filed this suit on September 9, 2014. In order to satisfy the procedural requirements of 17 U.S.C. § 411(a)

and 37 C.F.R. § 205.13, plaintiff served a notice of initiation of this action and a copy of the complaint on the Register of Copyrights by certified mail on September 12, 2014. Affidavit of Service, Dkt. No. 24. Defendants subsequently informed plaintiff that the delivery address listed in the affidavit was not the correct address for the Copyright Office, which under 37 C.F.R. § 205.13 requires that notice and complaints served by certified mail be sent to a different address than those delivered by hand. Plaintiff attempted to correct the deficiency, and served the notice and complaint on the Register of Copyrights by certified mail to the correct address specified in the regulation. Affidavit of Service, Dkt. No. 35. Section 205.13

also specifies that the Department of Justice and the United States Attorney for the district in which the action is brought must also receive notice and a copy of the complaint, which plaintiff served on November 14, 2014. Affidavits of Service, Dkt. Nos. 25–26.

Defendants filed motions to dismiss plaintiff's complaint on January 2 and January 5, 2015, respectively. The Court thereafter ordered that plaintiff could file an amended complaint to address any deficiencies therein, but cautioned that plaintiff could not expect further opportunities to amend the complaint to address the issues raised in defendants' motions. Dkt. No. 46. Plaintiff filed an amended complaint on January 23, 2015, alleging claims for copyright infringement under 17 U.S.C. § 501

(Count 1), as well as New York state law claims for quantum meruit (Count 2) and unjust enrichment (Count 3). Defendants filed separate motions to dismiss the amended complaint on February 13, 2015, but each defendant incorporated the arguments of the other by reference in order to avoid duplicative arguments.

III. ANALYSIS

To survive a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6)

, a plaintiff must allege sufficient facts, when accepted as true, to "state a claim to relief that is plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). While a complaint need not present "detailed factual allegations," Twombly, 550 U.S. at 555, 127 S.Ct. 1955, legal conclusions, unsupported by factual assertions, are insufficient. Iqbal, 556 U.S. at 679, 129 S.Ct. 1937. In considering a motion to dismiss, the 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) ; see also Fed.R.Civ.P. 10(c) ("A copy of a written instrument that is an exhibit to a pleading is a part of the pleading for all purposes.").

A. Copyright Infringement

In order to establish copyright infringement, a plaintiff must prove two elements:

"(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)

. Defendants argue that plaintiff's copyright infringement claim must be dismissed for a host of reasons, but the Court first turns to whether plaintiff has satisfied the procedural requirements set forth in the Copyright Act and whether plaintiff has standing to bring a claim.

1. Notice Requirement

As an initial matter, defendants argue that plaintiff failed to comply with the mandatory notice requirement set forth in 17 U.S.C. § 411(a)

and 37 C.F.R. § 205.13. Plaintiff initially sent notice of the suit and a copy of the complaint to the incorrect address for the Register of Copyrights, and only corrected that error on November 16, 2014, over two months after filing suit. Moreover, plaintiff did not send the required notice to the Department of Justice and the...