Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`THE PAUL RUDOLPH FOUNDATION,
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`Plaintiff,
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`-against-
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`PAUL RUDOLPH HERITAGE FOUNDATION
`and ERNST WAGNER,
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`Defendants.
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`9/8/2022
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`No. 20 Civ. 8180 (CM)
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`MEMORANDUM AND ORDER GRANTING PLAINTIFF’S MOTION TO DISMISS
`DEFENDANTS’ COUNTERCLAIM AND GRANTING IN PART AND DENYING IN
`PART PLAINTIFF’S MOTION TO STRIKE
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`McMahon, J.:
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`Plaintiff, the Paul Rudolph Foundation (“PRF”) is a non-profit organization that was
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`founded to preserve the legacy of modern architect Paul Rudolph and to educate others in the field
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`of architecture. Defendant Ernst Wagner was one of the founding members of Plaintiff PRF; he
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`was voted off PRF’s board of directors in 2014. Wagner thereafter founded Defendant Paul
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`Rudolph Heritage Foundation (“Heritage”) (together with Wagner, “Defendants”).
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`PRF claims that Heritage is nothing more than a copycat organization founded by Wagner
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`to impede PRF’s efforts to function without him. Plaintiff brings this seven-count action against
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`Defendants for trademark infringement, willful copyright infringement, and related common law
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`claims. Plaintiff also seeks a declaration that certain images of Rudolph’s work that were
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`transferred to the Paul M. Rudolph Archive at the Library of Congress (and the intellectual
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`property rights to those images dedicated to the public) are in the public domain, and that
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`Defendants’ copyright registration purporting to cover those images is therefore invalid.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 2 of 24
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`Defendants assert one counterclaim for copyright infringement and thirteen affirmative
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`defenses to Plaintiff’s claims.1
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`Presently before the court is Plaintiff’s motion to dismiss the counterclaim and to strike
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`certain of the affirmative defenses asserted by Defendants. The motion to dismiss is granted and
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`the motion to strike is granted in part and denied in part.
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`BACKGROUND
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`A. Relevant Factual Background
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`For a fulsome recitation of the facts as alleged in Plaintiff’s Amended Complaint (later
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`superseded by the Second Amended Complaint, Docket No. 67), please refer to the court’s
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`September 30, 2021, Memorandum and Order Granting in Part and Denying in Part Defendants’
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`Motion to Dismiss the Amended Complaint. (Docket No. 66). The following facts relevant to the
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`pending motions are taken from Defendants’ Amended Answer and Counterclaim, filed November
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`17, 2021 (“Counterclaim”) (Docket No. 86) and Plaintiff’s Second Amended Complaint filed
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`October 12, 2021 (“SAC”) (Docket No. 67).
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`1. The Disposition of Rudolph’s Estate and the Rudolph Archive.
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`On September 30, 1996, Rudolph executed a will (the “96 Will”), which named his
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`attorney John Newhouse as his executor. (SAC ¶ 12.) Pursuant to the 96 Will, a $2,000,000
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`testamentary trust was established for the benefit of Wagner, Rudolph’s longtime friend. The trust
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`was to be funded by the sale of certain real property at 23 Beekman Place in Manhattan. (SAC ¶
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`13.)
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`In the 96 Will Rudolph bequeathed the physical copies of his drawings, plans, renderings,
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`blueprints, models, papers, treatises, and other materials related to his architectural practice (the
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`1 For clarity, the court refers to Wagner and Heritage is “Defendants” consistently throughout this opinion
`instead of “Counterclaim-Plaintiffs.”
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 3 of 24
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`“Rudolph Archive”) to the Library of Congress. There was no mention of any disposition of the
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`intellectual property in those materials in the 96 Will, but Wagner was named as the residuary
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`beneficiary under the 96 Will.
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`On March 17, 1997, Rudolph suffered a heart attack and went into a coma. On April 16,
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`1997, after Rudolph awoke from the coma, he executed a new will (the “97 Will”), pursuant to
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`which Rudolph bequeathed to Wagner $1,000,000 outright, as opposed to $2,000,000 in trust.
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`(SAC ¶¶ 19-20). The 97 Will also provided for the outright transfer to Wagner of a piece of
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`property on West 58th Street that Rudolph owned. (Id.).
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`In the ’97 Will, as in its predecessor, Rudolph bequeathed his Archive to the Library of
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`Congress. (Id.). And, like its predecessor, the 97 Will said nothing about the intellectual property
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`rights appurtenant to the physical items in the Archive. (Id. ¶ 21).
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`Because both the 96 Will and the 97 Will say nothing about the disposition of Rudolph’s
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`intellectual property, had either been submitted for probate as written, the intellectual property
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`would have likely been disposed of as “residue.” (Id. ¶ 22).
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`In July of 1997, Rudolph’s sister and his office manager instituted an Article 81
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`guardianship proceeding alleging that Wagner had induced Rudolph to amend his will in 1997 to
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`Wagner's benefit. (SAC ¶ 25). Rudolph died before the hearing took place, and the ’97 Will was
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`submitted for probate. (Id. ¶¶ 26, 28).
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`In its Second Amended Complaint, Plaintiff alleges that Newhouse (Rudolph’s attorney)
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`sought leave to file objections to the ’97 Will (SAC ¶ 29) and that a Court-appointed Evaluator
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`questioned whether Rudolph had the mental capacity to execute documents during the period when
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`the ’97 Will was signed (SAC ¶ 27). Defendants dispute those allegations.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 4 of 24
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`On June 6, 2001, Wagner, Wagner's attorney Heckman, Newhouse, and the LOCTFB
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`resolved the probate challenges by entering into a stipulation of settlement (“Stipulation of
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`Settlement”), and by modifying the terms of the 97 Will. (SAC 3¶ 1; Counterclaim ¶ 17). This
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`“Reformed Will” is the will that was eventually probated.
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`In relevant part:
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`Article THIRD provides for a bequest of certain tangible property to Wagner. Excluded
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`from that property in the Reformed Will is the following:
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`Currency and any and all drawings, plans, renderings, blueprints, models, papers, treatises,
`and other materials that I prepared or had prepared in connection with my professional
`practice of architecture which is hereinafter specifically disposed of in Article FOURTH
`hereof.
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`Article FOURTH of the Reformed Will bequeaths all such materials to the LOCTFB.
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`With respect to that bequest, the Stipulation of Settlement provides as follows:
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`In furtherance of fulfilling the wishes of Paul M. Rudolph as set forth in Article FOURTH
`of the Reformed 1997 Will, the LOC Trust Fund Board shall transfer to the Library of
`Congress those items among the Architectural Archives and among the items set forth in
`Paragraph 5 below that the Library of Congress determines are suitable for its collections.
`The intellectual property rights of all such items transferred to the Library of Congress
`shall be dedicated to the public.
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`
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`Defendants allege in their counterclaim that “Wagner, as the residuary beneficiary of the
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`Estate, inherited all intellectual property rights and, as the executor, owns the inalienable statutory
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`right of termination under the Copyright Act.” (Counterclaim ¶ 18). Plaintiff PRF maintains that
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`the phrase “The intellectual property rights of all such items transferred to the Library of Congress
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`shall be dedicated to the public,” means that the Estate voluntarily and irrevocably abandoned
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`Rudolph’s intellectual property rights in the 20,000 or so works from the Rudolph Archive which
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`were donated to the Library of Congress and became part of the public domain. (SAC ¶¶ 36-40).
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 5 of 24
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`2. PRF and Heritage
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`In June of 2001, Wagner founded Plaintiff – the Paul Rudolph Foundation (aka PRF) – to
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`preserve and share Rudolph’s architectural legacy. (Counterclaim ¶ 8). Defendants plead that,
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`“Despite being the sole founder of PRF and the residuary beneficiary of Rudolph’s estate,
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`[Defendant] Wagner did not insist on having exclusive control of PRF, and selflessly shared power
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`among the board members.” (Id. ¶ 9). PRF operated out of the West 58 Street property that was
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`transferred to Wagner in the Reformed Will; that property was designed by Rudolph and is referred
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`to by the parties as the “Modulightor Building.” (Id. ¶ 10).
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`In 2014, PRF’s board members voted to remove Wagner from the board. (Counterclaim
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`¶12). Upon removal from PRF’s board, Wagner founded Heritage in 2015 to continue preserving
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`and sharing Rudolph’s legacy. (Id. ¶ 14). According to Plaintiff, in reality, Wagner founded
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`Heritage to compete with and harass PRF. (See SAC at page 2).
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`Plaintiff alleges that, prior to the founding of Heritage, PRF operated as the sole charitable
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`organization chartered to further the knowledge, understanding, and preservation of the work of
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`Paul Rudolph as well to promote dialog and greater public understanding of architecture. (SAC ¶
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`41). In furtherance of its objective, PRF has worked closely with the LOC to digitize the Rudolph
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`Archive so that the materials contained therein can be made available and readily accessible to
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`those who wish to view them for educational and research purposes. (SAC ¶ 45). For example,
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`in in October of 2018, Plaintiff co-sponsored the Paul Rudolph Centenary Symposium in
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`conjunction with the Library of Congress in honor of what would have been Paul Rudolph’s 100th
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`birthday. (Id. ¶ 46).
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 6 of 24
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`3. The ‘158 Registration and PRF’s Purported Copyright Infringement.
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`Defendants plead that on November 13, 2019, Kelvin Dickson – the President of Heritage
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`– registered with the U.S. Copyright Office “152 unpublished photographs from the Paul Rudolph
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`Architectural Archives.” (See Docket No. 86, Exhibit E, certification of registration from the U.S.
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`Copyright Office Registration No. VAU001380158) (the “’158 Registration”). (Docket No. 86, ¶
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`50). Defendants assert that the ‘158 Registration covers “152 unpublished photographs” created
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`as “work for hire” that were not among those selected by the Library of Congress. Defendants’
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`argument is that Wagner, as the residuary beneficiary of the Revised Will, inherited all material
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`prepared (and the intellectual property rights to that material) by Rudolph in connection with his
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`professional practice of architecture, other than for the materials “selected” by the LOC pursuant
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`to the Stipulation of Settlement. The ‘158 Registration purportedly memorializes Wagner’s
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`copyrights to 152 unpublished “work-for-hire” images from the Rudolph Archive that were not
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`selected by the LOC.
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`In direct contradiction to their allegation that the deposit materials submitted with
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`Defendants’ copyright registration application a collection of “unpublished” images, Defendants
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`plead in their counterclaim that 3 of the 152 photographs have in fact been published in “Paul
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`Rudolph: the Late Work,” a book by Roberto de Alba.2 (Counterclaim, ¶ 55). In relevant part,
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`Defendants’ Counterclaim states:
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`The only published photographs accompanying the application were as follows:
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`a. 1968.07-02.03.0017 - published in 'Paul Rudolph: The Late Work' by Roberto de
`Alba on page 45
`b. 1972.01-02.03.0036 - published in 'Paul Rudolph: The Late Work' by Roberto de
`Alba on page 65. Photo by Donalad Luckenbill, a Rudolph employee.
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`2 De Alba’s book was published in May 2003, 16 years before Defendants filed for a certification of
`registration in 2019.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 7 of 24
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`c. 1972.01-02.03.0033 - published in 'Paul Rudolph: The Late Work' by Roberto de
`Alba on page 67. Photo by Donalad Luckenbill, a Rudolph employee.
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`Counterclaim, ¶ 55.
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`According to Paragraph 55 of the Counterclaim, at least 2 of the 152 images registered by
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`Defendants were taken not by Rudolph himself, but by a Rudolph employee named “Donalad3
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`Luckenbill.” (Id.). That at least two of the images registered were taken by someone other than
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`Rudolph contradicts Defendants’ own pleading that “the deposit materials accompanying the
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`application contain previously unpublished photos taken by Rudolph,” and, “upon information and
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`belief, photographs that Rudolph took during a family trip.” (Counterclaim ¶ 54).
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`Defendants allege that, “Upon information and belief, none of the deposit materials were
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`ever transferred to the LOC and are not part of the LOC Paul Rudolph collection.” (Counterclaim
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`¶ 57). Moreover, the “deposit materials with the copyright registration are available as public
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`records on the Copyright Office Website and can be verified by Plaintiff.” (Id. ¶ 58).
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`Notwithstanding their copyright registration, Defendants allege that, “After the date of
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`registration of the above-identified copyrights and continuing to date, [Plaintiff] has infringed and
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`on information and belief intends to continue to infringe the copyrights in [Heritage’s ‘158
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`Registration] by publishing, displaying, distributing, selling, and/or offering for sale, without
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`[Defendants’] permission or consent, copies, reproductions, and derivative works of [Defendants’]
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`copyrighted images.” (Counterclaim ¶ 60).
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`Defendants attach two “examples” of Plaintiff’s “infringing uses as of November 11,
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`2021,” without specifying what images were used and in what ways. (Id.). The court notes that
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`images posted by PRF on or before November 11, 2021, predate Defendants’ November 13, 2019,
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`3 The court presumes Defendants mean “Donald” and not “Donalad” – this is just one of the many
`examples of Defendants’ failure to proofread their pleading.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 8 of 24
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`registration of 152 images with the U.S. Copyright Office. Defendants concede that PRF’s
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`Instagram account has been disabled and thus “no longer infringes” on Defendants’ copyrights.
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`But “Infringing images continue o[n] their Facebook account and the website as of the filing.”
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`(Counterclaim ¶ 61). Defendants do not allege what images are improperly posted on PRF’s
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`Facebook and website, nor do they identify the corresponding registration numbers to demonstrate
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`that those images are registered by Defendants with the U.S. Copyright Office.
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`Finally, without including any facts to back such an allegation up, Defendants assert that
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`“Upon information and belief, said conduct by [Plaintiff] was and is willfully done with knowledge
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`of [Defendants’] copyrights” in the images at issue. (Id. ¶ 62).
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`B. Procedural History
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`On September 30, 2021, the court granted in part and denied in part Defendants’ motion to
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`dismiss the first amended complaint. (See Docket No. 66, Memorandum and Order Granting in
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`Part and Denying in Part Defendants’ Motion to Dismiss) (the “Order on the Motion to Dismiss”).
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`The court dismissed PRF’s false advertising claim with prejudice. The court dismissed PRF’s
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`Declaratory Judgment Act (“DJA”) claim with leave to plead a concrete intention to use the
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`photographs they claim were improperly registered by Defendants with the U.S. Copyright Office.
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`Finally, the court dismissed Plaintiff’s Computer Fraud and Abuse Act (“CFAA”) claim with leave
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`to allege a security breach and at least $5,000 in damages flowing from an investigation into that
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`security breach in order to state a claim pursuant to the CFAA.
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`On October 12, 2021, Plaintiff filed the Second Amended Complaint (“SAC”), which is
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`the operative pleading in this action. (See Docket No. 67). Plaintiff seeks relief from, inter alia,
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`the various and persistent harassment by Defendants in the form of willful trademark and copyright
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`infringement, unfair competition, use of Plaintiff’s business files to compete against Plaintiff, and
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 9 of 24
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`any other relief the court deems just and proper so that PRF may proceed with its mission without
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`fear of further bad faith disruption and harassment by Defendants. (See SAC at page 2). For a
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`summary of the facts underlying Plaintiff’s claims, the reader is directed to the court’s decision on
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`the motion to dismiss. (Docket No. 66). The facts relevant to both Plaintiff’s case and Defendants’
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`counterclaim have to do with Defendants’ ‘158 Registration and the images materials purportedly
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`selected by the LOC for inclusion in their Paul Rudolph Collection, described above (see supra,
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`Section A.3).
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`On November 11, 2021, Defendants answered the SAC and asserted thirteen affirmative
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`defenses and one counterclaim for copyright infringement against PRF. (Docket No. 82). Six
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`days later on November 17, 2021, Defendants filed an amended answer to the SAC. (Docket No.
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`86). The amended answer also included thirteen affirmative defenses and one counterclaim for
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`copyright infringement. (Id.). For the purpose of this opinion, the amended counterclaim is
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`referred to as the “Counterclaim.”
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`On December 2, 2021, PRF moved to strike Defendants’ Amended Affirmative Defenses
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`to the dismiss the Amended Counterclaim. (Docket No. 89). But the court stayed briefing on
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`PRF’s motion and discovery in this case and ordered that the parties engage in a good faith effort
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`to mediate this case under the supervision of Magistrate Judge Cave. (See Docket Nos. 84, 93).
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`In August of this year Magistrate Judge Cave advised the court that the mediation in this
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`case had ended unsuccessfully. Accordingly, the court lifted the stay of the proceedings and
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`ordered that the parties complete discovery by December 7, 2022, that Defendants file their
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`opposition to PRF’s motion to dismiss Defendants’ counterclaim by August 19, and that PRF file
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`its reply in support of its motion by August 24. (Docket No. 94).
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 10 of 24
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`PRF’s motion to dismiss the counterclaim and motion to strike Defendants’ affirmative
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`defenses are now fully briefed and pending before the court.
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`LEGAL STANDARDS
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`1. 12(b)(6) Motion to Dismiss
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`A motion to dismiss counterclaims is governed by the familiar standards of Rule 12(b)(6).
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`Counterclaims will survive a motion to dismiss as long as they contain “sufficient factual matter,
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`accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S.
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`662, 678 (2009) (internal quotation marks omitted). Claimants must do more, however, than
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`merely attach “labels and conclusions” to bald factual assertions. Bell Atl. Corp. v. Twombly, 550
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`U.S. 544, 557 (2007).
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`“To survive a motion to dismiss, ‘a complaint must contain sufficient factual matter,
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`accepted as true, to state a claim to relief that is plausible on its face.’” Sphere Digital, LLC v.
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`Armstrong, No. 20-cv-4313 (CM), 2020 WL 6064156, at *4 (S.D.N.Y. Oct. 14, 2020) (quoting
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). And “all reasonable inferences should be drawn in
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`favor of the plaintiff,” but the “complaint must contain sufficient allegations to nudge a claim
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`‘across the line from conceivable to plausible.’” Ibid. (quoting Bell Atl. Corp. v. Twombly, 550
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`U.S. 544, 555 (2007)).
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`“In determining the adequacy of a claim under Rule 12(b)(6), consideration is limited to
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`facts stated on the face of the complaint, in documents appended to the complaint or incorporated
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`into the complaint by reference, and to matters of which judicial notice may be taken.” Allen v.
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`WestPoint-Pepperell, Inc., 945 F.2d 40, 44 (2d Cir. 1991). The court may consider the full text
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`of documents that are cited in, incorporated by reference in, or “integral” to the complaint. San
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 11 of 24
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`Leandro Emergency Med. Grp. Profit Sharing Plan v. Philip Morris Companies, Inc., 75 F.3d
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`801, 809 (2d Cir. 1996).
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`2. Motion to Strike
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`Under Rule 12(f), the Court “may strike from a pleading an insufficient defense or any
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`redundant, immaterial, impertinent, or scandalous matter.” Fed. R. Civ. P. 12(f).
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`When assessing whether to strike an affirmative defense, district courts in this Circuit
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`consider three factors. First, the court must consider whether the affirmative defense satisfies the
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`plausibility standard articulated in Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), recognizing
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`that “applying the plausibility standard to any pleading is a ‘context-specific’ task.” GEOMC Co.
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`v. Calmare Therapeutics Inc., 918 F.3d 92, 97–98 (2d Cir. 2019) (quoting Ashcroft v. Iqbal, 556
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`U.S. 662, 679 (2009)). For “context,” court should consider how long the defendant had to plead
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`the affirmative defense, the facts available to the defendant, and the nature of the affirmative
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`defenses (e.g., whether they are fact intensive). Id. at 98. Second, the court must consider whether
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`the movant has shown that “there is no question of law which might allow the defense to succeed,”
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`keeping in mind that “an affirmative defense is improper and should be stricken if it is a legally
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`insufficient basis for precluding a plaintiff from prevailing on its claims.” GEOMC Co., 918 F.3d
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`at 98. And third, court must assess the degree to which “the moving party ... is prejudiced by the
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`inclusion of the defense,” keeping in mind that, “A factually sufficient and legally valid defense
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`should always be allowed if timely filed even if it will prejudice the plaintiff by expanding the
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`scope of the litigation.” Id. at 98–99.
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`DISCUSSION
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`I.
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`PLAINTIFF’S MOTION TO DISMISS DEFENDANTS’ COUNTERCLAIM IS
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`GRANTED.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 12 of 24
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`Plaintiff moves to dismiss Defendants’ amended copyright infringement counterclaim for
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`failure to state a claim upon which relief may be granted.
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`To state a claim for copyright infringement, a plaintiff (or, in this case, a counterclaim
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`plaintiff) must allege: (1) which specific original works are the subject of the copyright claim; (2)
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`that plaintiff owns the copyrights in those works; (3) that the copyrights have been registered in
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`accordance with the statute; and (4) by what acts during what time the defendant infringed the
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`copyright. Kelly v. L.L. Cool J., 145 F.R.D. 32, 36, n.3 (S.D.N.Y. 1992).
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`Plaintiff argues that Defendants’ counterclaim for copyright infringement must be
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`dismissed because – despite having over a year to prepare their answer to Plaintiff’s complaint(s)
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`– Defendants’ copyright infringement counterclaim is riddled with deficiencies.
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`The court agrees.
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`Defendants fail to specify which works within a 152-photograph group copyright
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`registration were used by PRF in violation of Defendants’ copyrights, and they fail to plead how
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`and when PRF infringed those copyrights. Defendants instead attach two “examples” of PRF’s
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`alleged infringing activity, both of which predate the date of registration (despite alleging
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`“ongoing” infringement). One of Defendants’ “examples” is PRF’s posting of a photograph that
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`is in the public domain – it is part of the Paul Rudolph Collection at the Library of Congress –
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`which cannot constitute copyright infringement as a matter of law. Other facts pleaded in the
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`complaint give rise to an inference that Defendants do not own the copyright in the second
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`“example” image.
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`1. Defendants plead only two instances of copyright infringement in their
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`counterclaim.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 13 of 24
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`I begin by noting that Defendants, despite their sweeping pleading, have identified only
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`two arguable instances of copyright infringement.
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`Defendants allege that PRF “has infringed and on information and belief intends to
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`continue to infringe the copyrights in [the ‘158 Registration]” and attach two “examples of PRF’s
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`infringing uses as of November 11, 2021, 2021. … as Exhibits G and H.” (Counterclaim, ¶ 60).
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`Exhibit G appears to be a screen grab of a post on PRF’s Facebook page featuring a photo of the
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`“Parcells Residence” in Grosse Pointe, MI. (See Docket No. 86-7) (the “Parcells Residence
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`image”). Exhibit H appears to be a screen grab of a post on PRF’s Facebook page which includes
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`an image of “Green Residence (1969) emerging from a Pennsylvania field,” which allegedly “held
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`special significance for Rudolph.” (Docket No. 86-8) (the “Green Residence image”). Defendants
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`do not identify in their complaint any other images that were infringed or any other instances when
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`Plaintiffs made use of any of the 152 works that were the subject of the ‘158 registration.
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`By failing to specify the works that were infringed, or where, when, and how the
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`infringement occurred, Defendants have failed to plead any instance of copyright infringement
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`aside from the two identified in the preceding paragraph.
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`When pleading a claim of copyright infringement a plaintiff must plead which specific
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`original works are the subject of the copyright claim. Kelly, 145 F.R.D. at 36. The law requires a
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`plaintiff (in this case, the counterclaim plaintiff) to identify each instance of infringement with
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`specificity; it is not sufficient for a plaintiff to list “examples” of works that were allegedly
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`infringed and then claim that other, unidentified works were also infringed. Cole v. John Wiley &
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`Sons, Inc., No. 11 CIV. 2090 DF, 2012 WL 3133520, at *12 (S.D.N.Y. Aug. 1, 2012). Such a
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`pleading fails to give the (counterclaim) defendant notice of how it purportedly violated the law.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 14 of 24
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`For example, in Palmer Kane LLC v. Scholastic Corp., No. 12 CIV. 3890 TPG, 2014 WL
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`1303135, at *3 (S.D.N.Y. Mar. 31, 2014), the court dismissed the plaintiff’s copyright claim
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`because plaintiff failed to sufficiently plead exactly which specific original photographs were the
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`subject of plaintiff’s claim; the complaint simply contained an allegedly non-exhaustive list of the
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`photographs at issue.
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`Accordingly, the court rules that Defendants’ copyright infringement counterclaim is
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`limited to the two identified instances in which photos of the “Parcells Residence” and the “Green
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`Residence” allegedly appeared on Plaintiff’s platforms. (Exhibits G and H to Defendants’
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`Counterclaim, Docket No. 86-7,8).
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`2. Defendants fail to plead ownership of the intellectual property rights to the image
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`of the Parcells Residence; the counterclaim is dismissed as to that image.
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`The author of a work is the presumptive owner of the intellectual property rights to that
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`work. The author can, of course, transfer ownership rights to physical works and intellectual
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`property rights in those works to someone or something else. As the residuary beneficiary under
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`Rudolph’s Revised Will, Defendant Wagner inherited any intellectual property rights that Rudolph
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`owned at the time of his death – other, of course, than the intellectual property rights attendant to
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`the items that the LOC chose to keep for its archive.4 The parties do not disagree that Wagner
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`does not own the works that the LOC chose to accept for its Paul Rudolph collection. In their
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`counterclaim, Defendants repeatedly assert that the images at issue – which, as discussed above,
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`4 At this stage of litigation the court has no idea whether Rudolph transferred his copyrights in non-LOC
`works to persons other than Wagner who purchased or otherwise came into ownership of them. Nor, as we shall see,
`is it clear that Wagner succeeded to the copyright in all the items of tangible property that he inherited pursuant to
`the settlement of the will contest – because, per the facts alleged in the complaint, it is legally impossible for
`Rudolph to have owned the copyright in those of his works that qualify as “works for hire.” But Wagner assuredly
`owns some of Rudolph’s copyrights, which are a separate piece of property from the tangible items to which
`Wagner took title.
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 15 of 24
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`means the Parcells Residence and Green Residence photographs -- were not selected by the LOC
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`to be featured in the PR Collection.
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`But as PRF points out, the image of the Parcells Residence was selected by the LOC and
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`is in the public domain as part of the Paul Rudolph Collection. (Docket No. 91-2).
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`When considering a motion to dismiss, the court “may consider any . . . documents upon
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`which the complaint relies, and which are integral to the complaint.” Subaru Distributors Corp. v.
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`Subaru of America, Inc., 425 F.3d 119, 122 (2d Cir. 2005). Moreover, the court may consider
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`documents that are referenced in the counterclaim, documents that are either in Defendants’
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`possession or that Defendants knew of when they filed their counterclaim, and documents of which
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`judicial notice may be taken. Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir.2002).
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`Defendants’ allegation that none of the photographs in the ‘158 registration were selected
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`by the LOC is “integral” to its counterclaim, since the claim is for copyright infringement, and it
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`is not possible to infringe the copyright in a work that has fallen into the public domain. Which
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`images are in the Paul Rudolph Collection at the Library of Congress is a matter of public record,
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`so a list of what the LOC owns is “integral” to the Counterclaim. No such list is attached to the
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`pleading, however.
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`Plaintiff has attached to its responsive papers documentation of the images that are owned
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`and archived by the LOC. “Where public records that are integral to a [] complaint are not attached
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`to it, the court, in considering a Rule 12(b)(6) motion, is permitted to take judicial notice of those
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`records.” Roth v. Jennings, 489 F. 3d 499, 509 (2d Cir. 2007). One of the images listed in the
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`public record provided by Plaintiff is the Parcells Residence image. (See Docket No. 91-2, Exhibit
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`2). The court accordingly can take judicial notice that the Parcells Residence image was selected
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`by the LOC. That makes Defendants’ assertion – made, I should note, “upon information and
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 16 of 24
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`belief” – that “none of the [152 photographs it purportedly copyrighted] were [sic] ever transferred
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`to the LOC and are not part of the LOC Paul Rudolph Collection” demonstrably untrue.
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`(Counterclaim, ¶ 57).5 The Parcells Image has passed into the public domain, by virtue of the fact
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`that it is owned by the LOC. As a matter of law, Defendants do not own the intellectual property
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`rights to images that are in the public domain. Dean v. Cameron, 53 F. Supp. 3d 641, 646 (S.D.N.Y.
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`2014); Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2d Cir.1992) (“material found
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`in the public domain. . . is free for the taking and cannot be appropriated by a single author”).
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`Defendants’ effort to register a copyright in that image as part of the ‘158 registration did not
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`confer a copyright and was totally ineffective.
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`Defendants assert that whether certain images (I assume including the Parcells photograph)
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`that are among the 152 photographs that are included in the ‘158 Registration “are the same images
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`within the LOC collection” is a question of fact that cannot be answered at the motion to dismiss
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`stage. (See Defendants’ Opposition, Docket No. 98 at 10). The only thing I can imagine is that
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`Defendants believe there may be multiple images of the same item, not all of which were
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`transferred to the LOC. But Defendants do not allege that there are multiple images of the Parcells
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`Residence. Nor do they plead any factual basis for believing that Defendants and the LOC each
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`own different images of any of the same subject.
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`Finally, as noted above, Defendants’ assertion that the LOC did not select any of the 152
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`photographs that were the subject of the ‘158 registration (including the Parcells Image) is pleaded
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`on information and belief. Pleading on information and belief is inappropriate form of pleading if
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`5 In fact, PRF contends that the rights to at least 20 of the photographs that Defendants registered with the
`U.S. Copyright Office were expressly dedicated to the public pursuant to the Stipulation of Settlement. (See Docket
`No. 90 at 12).
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`Case 1:20-cv-08180-CM Document 106 Filed 09/08/22 Page 17 of 24
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`the matter is wi