UNITED STATES DISTRICT COURT ELEC1-RONICALLY FILED

SOUTHERN DISTRICT OF NEW YORK

................................................................... X
THE INSTITUTE FOR THE DEVELOPMENT DATE FILED: f ' fWo/
OF EARTH AWARENESS,

Plaintiff. 08 Civ. 6195 (PKC)

MEMORANDUM
AND ORDER

PEOPLE FOR THE ETHICAL TREATMENT OF

ANIMALS,

Defendant.
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PEOPLE FOR THE ETHICAL TREATMENT OF
ANIMALS.

Counterclaim-Plaintiff,

THE INSTITUTE FOR THE DEVELOPMENT OF

EARTH AWARENESS and MARJORIE SPIEGEL.

Counterclaim-Defendants.
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P. KEVIN CASTEL. U.S.D.J.:

Plaintiff The Institute for the Development of Earth Awareness ("IDEA") brings

this copyright infringement action, under 17 U.S.C. 5 101 (The Copyright Act of 1976),

against defendant People for the Ethical Treatment of Animals ("PETA"). IDEA alleges that

PETA has infringed a copyrighted work entitled "The Dreaded Comparison: Human and Animal

Slavery" (the "Work"), and it seeks a permanent injunction to prevent PETA from "reproducing,

making, reprinting, publishing, displaying, manufacturing, selling, offering for sale, promoting,

advertising, distributing andlor commercially exploiting in any manner, either directly ox

indirectly, the Infringing Materials or other works which incorporate the original, protectible

expression of the Work . . . ." (Amend. Compl. at 11.) IDEA also seeks compensation for

damages suffered as a result of PETA's allegedly infringing acts, and it seeks an award of all

profits derived from those acts in an amount to be determined at trial. Id. In lieu of such
damages and profits, IDEA requests, "where applicable and should it so elect," an award of

statutory damages with respect to each infringement under 17 U.S.C. $ 504(c). Id. IDEA
demands that PETA be directed to deliver to all materials which, if sold, distributed or used in

any way, would violate the requested injunction. Id. Finally, IDEA seeks to recover from PETA
all costs incurred in this action, including the reasonable attomey's fees incurred in connection

with IDEA's claim, together with such other relief as the Court may deem just and proper. Id.at
11-12.

PETA moves, pursuant to Rule 12(b)(6), Fed. R. Civ. P., to dismiss

IDEA's claims for statutory damages and attomey's fees. For the reasons explained below,

PETA's motion is granted.'

I. Background

The following facts are alleged in the First Amended Complaint (the "Amended

Complaint") and accepted as true for purposes of this motion. All reasonable inferences are

drawn in the light most favorable to IDEA as the non-movant.

Not later than 1988, IDEA's co-founder, Marjorie Spiegel, authored an illustrated

work entitled "The Dreaded Comparison: Human and Animal Slavery." (Amend. Compl. 7 6.)

A second edition of the work was published in 1989 and the current, revised and expanded

edition was published in 1996. Id. The 1996 edition is still in print and remains commercially

'PETA has also asserted a counterclaim for declaratory judgment against IDEA and IDEA's principal, Marjorie
Spiegel. Answer to First Amended Complaint and Counterclaim for Declaration of Non-lnfingement (Dkt.
No. 18). The Court does not address PETA's counterclaim in this Order.
available. Id. In addition to authoring the original textual matter for the Work, Ms. Spiegel
creatively selected, coordinated and arranged certain illustrations, photographs and quotes

included in the Work. Id.f 7. The Work also includes an original forward written by Alice

Walker. Id. In 2006, IDEA, through its division, Mirror Books, registered a copyright in the
Work. Id.at Ex. A.
Subsequent to the Work's publication in 1988, PETA and IDEA engaged in

negotiations regarding PETA's proposal to reprint excerpts, to obtain multiple copies, or to

reprint and distribute copies of the work in its entirety, but no agreement was ever reached. Id.7
15.

IDEA alleges that, "since at least 2005 and continuing through to the present,

PETA has, without authorization from or attribution to IDEA, prepared, reproduced, distributed

and publicly displayed certain textual and graphical materials . . . copied from and substantially

similar to protectible elements of the Work." Id.7 16. IDEA further alleges that PETA used its

infringing materials: in a media campaign entitled the "Animal Liberation Project," which

includes a touring exhibit; in electronic versions featured on certain websites under PETA's

control; in printed brochures and promotional materials; and in connection with advertising and

fund-raising activities. Id.7 17. IDEA contends that, because the similarities between PETA's

material and the Work are "neither fortuitous nor & minimis," PETA has infringed and

continues to infringe upon IDEA's registered copyright in the Work. Id. 21-22.

Not later than August 3 1,2005, IDEA objected to PETA's use of the alleged

infringing materials and has communicated its continuing objection since that time. Id.7 23.
Despite IDEA's objections, PETA has continued to reproduce, distribute and display the

allegedly infringing materials. Id.

11. Procedural History

IDEA commenced this action on July 8,2008. (Dkt. No. 1.) Prior to the initial

conference in this case, PETA's counsel wrote to the Court seeking to file a motion precluding

IDEA from obtaining statutory damages and attorney's fees because IDEA had not alleged in its

complaint any new use of the copyrighted material after the date of registration, citing 17 U.S.C.

9 412(2) and case law. (Letter of Roger L. Zissu, dated November 20,2008.) At an initial
pretrial conference on November 24,2008, and in view of PETA's arguments, the Court granted

IDEA leave to amend its complaint to allege post-registration acts of infringement. (Dkt. No.

lo.) On January 7,2009, IDEA filed the Amended Complaint, which added a single new

paragraph alleging that PETA had "commenced new infringements . . . since the effective date of

registration of copyright in the Work . . . ." (Amend. Compl. 7 20.) PETA moved to dismiss

IDEA'S claim for statutory damages and attorney's fees on February 6,2009. (Dkt. No. 15.)

111. Discussion

A. Standards of Review

To survive a motion to dismiss under Rule 12(b)(6), "a complaint must contain

sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face."'

Ashcroft v. Iabal, -U.S. -, 129 S.Ct. 1937, 1949 (2009) (citing Bell Atlantic Com. v.

Twomblv, 550 U.S. 544,570 (2007)). In ruling on the sufficiency of a complaint, a court must

limit its review to the facts and allegations that are contained in the complaint and in "any

documents that are either incorporated into the complaint by reference or attached to the

complaint as exhibits." Blue Tree Hotels Inv. (Canada). Ltd. v. Stanvood Hotels & Resorts

Worldwide, Inc., 369 F.3d 212,217 (2d Cir. 2004).

 The Supreme Court has recently set out a "two-pronged" approach for courts

considering a motion lo dismiss. m,129 S.Ct. at 1950. First, the Court must accept a
plaintiffs factual allegations as true and draw all reasonable inferences from those allegations in

plaintiffs favor. Id.at 1949-50. The Court may then proceed to identify pleadings which,
because they are no more than conclusions, are not entitled to the assumption of truth. Id.at
1950.

Second, the Court must determine whether the complaint's "well-pleaded factual

allegations . . .plausibly give rise to an entitlement to relief." Id. "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 1949 (citing Twombly, 550 U.S.
at 556). "The plausibility standard is not akin to a 'probability requirement,' but it asks for more

than a sheer possibility that a defendant has acted unlawfully." Id. Determining the plausibility
of a plaintiffs claim is a "context-specific task that requires the reviewing court to draw on its

judicial experience and common sense." Id.(citation omitted).

B. A~plication

Section 412 bars recovery of statutory damages and attorney's fees under $8 504
and 505 of the Copyright Act where an infringement "commenced after first publication of the

work and before the effective date of its registration, unless such registration is made within

three months after the first publication of the work." 17 U.S.C. $ 412(2). The Second Circuit

has explained that, under this provision, "a plaintiff may not recover statutory damages and

attorney's fees for infringement occurring after registration if that infringement is part of an

ongoing series of infringing acts and the first act occurred before registration." See Troll Co. v.

Uneeda Doll Co., 483 F.3d 150, 158 (2d Cir. 2007) (applying judicial interpretations of section
412 to construe Congressional use of the "continuing infringement doctrine"). To state a claim

for statutory damages and attorney's fees, then, IDEA must allege new, post-registration acts of

infringement by PETA. Id.at 158-59. In deciding whether IDEA's allegations are sufficient to

satisfy this standard, the Court applies the two-pronged test set forth in m.
First, the Court accepts all of the factual allegations in the Amended Complaint as

true and draws all reasonable inferences in IDEA's favor. Iqbal,129 S.Ct. at 1949-50. Legal

conclusions in the Amended Complaint that are unsupported by factual allegations are not

entitled to the Court's assumption of truth. Id.at 1950.

IDEA's original complaint made no mention of post-registration infringement by

PETA. The Court granted IDEA leave to amend its original complaint so that IDEA could

properly allege such infringement. In its Amended Complaint, however, IDEA appears to have

simply restated the language of 17 U.S.C. 6 412 without alleging any facts to support its new
allegation that PETA committed post-registration infringements. (Amend. Compl. 7 20.) The

Amended Complaint adds only a single new paragraph that states, in full:

Upon information and belief, PETA has commenced new

infringements, and prepared and exploited new and materially
different Infringing Materials since the effective date of
registration of copyright in the Work, which acts are not part of a
continuing, ongoing series of infringing acts of the same kind as
those engaged in by PETA prior to the effective date of registration
of the copyright in the Work, but instead are separate
infringements postdating the effective date of registration of the
copyright in the Work.

(Amend. Compl. 7 20.) Because there are no factual allegations to support this conclusory

addition, IDEA's allegation of post-registration infringement is not entitled to the assumption of

truth. &
IJa 129 S.Ct. at 1950.
 Having completed u ' s first step, the Court must next decide whether the

Amended Complaint's well-pleaded factual allegations "plausibly give rise to an entitlement to

relief." Id. In order to state a facially plausible claim, the Amended Complaint must include
"factual content that allows the court to draw the reasonable inference that [PETA] is liable for

the misconduct alleged." Id.at 1949. With respect to IDEA's statutory damages claim, the
Amended Complaint is devoid of such content-it contains only conclusory assertions and offers

no factual allegations to support its theory that post-registration infringement occurred. This

Court is unable to say that there is "more than a sheer possibility" that PETA infringed the

alleged copyright after the effective date of registration and that IDEA is therefore entitled to the

statutory award that it seeks. Id.

The Court concludes that the Amended Complaint fails to state a plausible claim

for statutory damages and attorney's fees under 17 U.S.C. $5 504 and 505. IDEA's claim for
such an award must be dismissed.

IV. Leave to Amend

In opposing PETA's motion, IDEA has requested that it be given "the opportunity

to replead in order to remedy any insufficiency identified by the Court." (IDEA Br. at 24.) The

Federal Rules of Civil Procedure provide that leave to amend should be "freely give[n] . . . when

justice so requires." Fed. R. Civ. P. 15(a)(2). But the Court may deny such leave based on a

variety of factors, including "undue delay, bad faith or dilatory motive on the part of the movant,

repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the

opposing party by virtue of allowance of the amendment, [or] futility of the amendment." Local
802, Associated Musicians of Greater New York v. Parker Meridien Hotel, 145 F.3d 85,89 (2d.

Cir. 1998) (quoting Foman v. Davis, 371 U.S. 178, 182 (1962)). The Second Circuit has
explained that "[wlhere it appears that granting leave to amend is unlikely to be productive . . . it
is not an abuse of discretion to deny leave to amend." Ruff010 v. Oupenheimer & Co., 987 F.2d

129, 131 (2d Cir. 1993) (per curiam) (citations omitted).

IDEA has not identified any additional facts that it would allege if leave to further

amend were granted. IDEA was on notice of PETA's arguments in the letter sent to the Court

before the initial pretrial conference. IDEA was granted leave to amend to cure the noted

deficiency but failed to properly allege any facts that would allow this Court to infer the

plausibility of its statutory damages claim. Accordingly, IDEA's second request for leave to

amend is denied.

V. Conclusion

For the foregoing reasons, PETA's motion to dismiss IDEA's claim for statutory

damages and attorney's fees under Rule 12(b)(6), Fed. R. Civ. P., is granted. Leave to amend is

denied.

SO ORDERED.

w
P. Kevin Caste1
United States District Judge

Dated: New York, NY

August 28,2009