No. 19-894
`
`In the
`Supreme Court of the United States
`
`MICHAEL YAMASHITA, et al.,
`
`v.
`
`SCHOLASTIC INC.,
`
`Petitioners,
`
`Respondent.
`
`On PetitiOn fOr a Writ Of CertiOrari tO the United
`StateS COUrt Of aPPealS fOr the SeCOnd CirCUit
`
`BRIEF IN OPPOSITION
`
`edward h. rosenthal
`Counsel of Record
`FrankFurt kurnIt kleIn
`& selz, P.C.
`28 Liberty Street
`New York, New York 10005
`(212) 980-0120
`erosenthal@fkks.com
`
`Counsel for Respondent
`
`294641
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`
`
`In the
`Supreme Court of the United States
`
`MICHAEL YAMASHITA, et al.,
`
`v.
`
`SCHOLASTIC INC.,
`
`Petitioners,
`
`Respondent.
`
`On PetitiOn fOr a Writ Of CertiOrari tO the United
`StateS COUrt Of aPPealS fOr the SeCOnd CirCUit
`
`BRIEF IN OPPOSITION
`
`edward h. rosenthal
`Counsel of Record
`FrankFurt kurnIt kleIn
`& selz, P.C.
`28 Liberty Street
`New York, New York 10005
`(212) 980-0120
`erosenthal@fkks.com
`
`Counsel for Respondent
`
`294641
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`
`
`i
`
`COUNTERSTATEMENT OF THE
`QUESTION PRESENTED
`
`Whether Petitioners have presented compelling
`reasons to grant the Petition where (1) no Circuit Court
`split exists with respect to the proper pleading standard
`for copyright infringement; and (2) the Second Circuit’s
`decision does not conflict with Feist Publ’ns, Inc. v. Rural
`Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991) or any other
`decision of this Court.
`
`
`
`ii
`
`PARTIES TO THE PROCEEDINGS AND
`CORPORATE DISCLOSURE STATEMENT
`
`There are no parties to the proceedings other than
`those listed in the caption. Petitioners Michael Yamashita,
`Inc. and Michael Yamashita (collectively “Yamashita”)
`were plaintiffs in the district court and appellants in the
`court of appeals. Respondent Scholastic Inc. (“Scholastic”)
`was defendant in the district court and appellee in the
`court of appeals.
`
`Pursuant to Rule 29.6 of the Supreme Court Rules,
`Scholastic states that Scholastic Corporation is a publicly
`held corporation owning 10% or more of Scholastic Inc.’s
`stock.
`
`
`
`iii
`
`COUNTERSTATEMENT OF THE QUESTION
` PRESENTED . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . i
`
`PA R T I E S T O T H E P R O C E E DI N G S
`A N D C OR P OR A T E DI S C L O S U R E
` STATEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ii
`
`TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . iii
`
`TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . vi
`
`BRIEF IN OPPOSITION TO PETITION FOR
` WRIT OF CERTIORARI . . . . . . . . . . . . . . . . . . . . . .1
`
`STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . .3
`
`I. BACKGROUND AND FACTS OF THE
`
`CASE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`A. YA M A SH I TA’ S C OM PL A I N T
`C O N T A I N S N O S P E C I F I C
`A L L E G A T I O N S
`O F
`INFRINGEMENT. . . . . . . . . . . . . . . . . . . . .4
`
`
`
`B. S C H O L A S T I C M O V E S T O
`DISMISS AND TO TRANSFER
`THE CASE TO THE SOUTHERN
`DISTRICT OF NEW YORK. . . . . . . . . . . . .6
`
`
`
`II. PROCEEDINGS BELOW. . . . . . . . . . . . . . . . . . .6
`
`TABLE OF CONTENTS
`
`Page
`
`
`
`iv
`
`A. T H E D I S T R I C T C O U R T
`DISMISSES THE CA SE A S A
`“FISHING EXPEDITION” AND
`“A IMLESS TR AW LING” NOT
`PERMITTED BY RULE 8. . . . . . . . . . . . . .6
`
`
`
`B. Y A M A S H I T A’ S A M E N D E D
`C O M P L A I N T L A R G E L Y
`REPEATS THE CONCLUSORY
`ALLEGATIONS . . . . . . . . . . . . . . . . . . . . . . .7
`
`
`
`C. T H E A P P E L L A T E C O U R T
`AFFIRMS THE LOWER COURT’S
`DISMISSAL . . . . . . . . . . . . . . . . . . . . . . . . . .8
`
`
`
`D. Y A M A S H I T A F I L E S H I S
`PET I T ION FOR A W RI T OF
`CERTIORARI. . . . . . . . . . . . . . . . . . . . . . . .10
`
`
`
`III. REA S ONS FOR DEN Y ING T H E
`
`PETITION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`A. T H E S E C O N D C I R C U I T
`DID NOT IDENTIF Y A NEW
`PLEA DING STA NDA RD FOR
`COPYRIGHT INFRINGEMENT
`ACTIONS. . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`
`
`B. CASES CITED FROM THE THIRD
`A N D S E V E N T H C I R C U I T S
`DO NOT CREATE A CIRCUIT
`SPLIT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13
`
`
`
`Table of Contents
`
`Page
`
`
`
`v
`
`C. THE SECOND CIRCUIT’S RULE
`
`IS THE CORRECT ONE . . . . . . . . . . . . . .15
`
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18
`
`Table of Contents
`
`Page
`
`
`
`vi
`
`CASES
`
`Ashcroft v. Iqbal,
`
`556 U.S. 662 (2009). . . . . . . . . . . . . . . . . . . .2, 11, 12, 15
`
`Baisden v. I’m Ready Prods., Inc.,
`
`693 F.3d 491 (5th Cir. 2012). . . . . . . . . . . . . . . . . . . . .13
`
`Bell Atl. Corp. v. Twombly,
`
`550 U.S. 544 (2007) . . . . . . . . . . . . . . . . . . .2, 11, 12, 15
`
`Bourne v. Walt Disney Co.,
`
`68 F.3d 621 (2d Cir. 1995) . . . . . . . . . . . . . . . . .9, 10, 13
`
`Carlin v. Bezos,
`649 F. App’x 181 (3d Cir.), cert. denied,
`
`
`137 S. Ct. 168, 196 L. Ed. 2d 141 (2016),
`reh’g denied, 137 S. Ct. 543,
`
`
`196 L. Ed. 2d 438 (2016) . . . . . . . . . . . . . . . . . . . . . . .14
`
`CBS Corp. v. F.C.C.,
`
`663 F.3d 122 (3d Cir. 2011) . . . . . . . . . . . . . . . . . . . . .14
`
`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
`
`499 U.S. 340 (1991) . . . . . . . . . . . . . . . . . . . . . . .1, 11, 12
`
`Graham v. James,
`
`144 F.3d 229 (2d Cir. 1998) . . . . . . . . . . . . . . . . . . . . .13
`
`TABLE OF CITED AUTHORITIES
`
`Page
`
`
`
`vii
`
`Kelly v. L.L. Cool J.,
`
`145 F.R.D. 32 (S.D.N.Y. 1992),
` aff’d, 23 F.3d 398 (2d Cir. 1994) . . . . . . . . . . . . . . . . .12
`
`MacLean Assocs., Inc. v.
`Wm. M. Mercer-Meidinger-Hansen, Inc.,
`952 F.2d 769 (3d Cir. 1991) . . . . . . . . . . . . . . . . . . . . .14
`
`
`
`MAI Sys. Corp. v. Peak Computer, Inc.,
`
`991 F.2d 511 (9th Cir. 1993). . . . . . . . . . . . . . . . . . . . .13
`
`In re McGraw-Hill Global Educ. Holdings LLC,
`
`909 F.3d 48 (3d Cir. 2018) . . . . . . . . . . . . . . 2, 11, 13, 14
`
`MDY Indus., LLC v. Blizzard Entm’t, Inc.,
`
`629 F.3d 928 (9th Cir. 2010). . . . . . . . . . . . . . . . . . . . .13
`
`Muhammad-Ali v. Final Call, Inc.,
`
`832 F.3d 755 (7th Cir. 2016). . . . . . . . . . . . . 3, 11, 14, 15
`
`Pa. Pharmacists Ass’n v. Houstoun,
`
`283 F.3d 531 (3d Cir. 2002) . . . . . . . . . . . . . . . . . . . . .14
`
`Petrella v. Metro-Goldwyn-Mayer, Inc.,
`
`572 U.S. 663 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`SCA Hygiene Prods. Aktiebolag v.
`First Quality Baby Prods., LLC,
`137 S. Ct. 954 (2017). . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`
`
`Cited Authorities
`
`Page
`
`
`
`viii
`
`Spinelli v., Nat’l Football League,
`
`903 F.3d 185 (2d Cir. 2018) . . . . . . . . . . . . . . . . . . . . . .9
`
`Tasini v. N.Y. Times Co.,
`
`206 F.3d 161 (2d Cir. 2000) . . . . . . . . . . . . . . . . . . . . .13
`
`Yamashita v. Scholastic Inc.,
`
`936 F.3d 98 (2d Cir. 2019) . . . . . . . . . . . . . . . . . . . . . . .8
`
`Young-Wolff v. McGraw-Hill Cos.,
` No. 13 Civ. 4372, 2014 WL 349711
`
`(S.D.N.Y. Jan. 31, 2014) . . . . . . . . . . . . . . . . . . . . . . . .16
`
`STATUTES
`
`Copyright Act, 17 U.S.C. § 101 et seq. . . . . . . . . . . . . . . .16
`
`OTHER AUTHORITIES
`
`3-18 Milgrim on Licensing § 18.64 (2017). . . . . . . . . . . .16
`
`Federal Rules of Civil Procedure Rule 8 . . . . . . . passim
`
`Cited Authorities
`
`Page
`
`
`
`1
`
`BRIEF IN OPPOSITION TO PETITION
`FOR WRIT OF CERTIORARI
`
`Yamashita claims that the Second Circuit misapplied
`the pleading standard for a copyright infringement
`claim, and that this standard is being applied differently
`in the Second Circuit than in other Circuits. Neither of
`these contentions is valid. Yamashita brought an action
`for breach of copyright alleging that it had licensed to
`Scholastic the right to use certain photographs and that
`Scholastic might have exceeded the permitted scope
`of those licenses—some of which date back for twenty
`years. Yamashita contends that he should be permitted to
`proceed with this case despite being unable to plead any
`infringing conduct with plausibility as required by Rule 8
`of the Federal Rules of Civil Procedure (“Rule 8”), and
`to use the action to determine whether any infringement
`occurred. In a nutshell, Yamashita seeks to use the courts
`to conduct an audit of Scholastic’s uses of his photographs,
`an attempt that the district and appellate courts properly
`rejected.
`
`Yamashita now seeks to save his claims by arguing
`that there is a split between the Second Circuit, on one
`hand, and the Third and Seventh Circuits, on the other,
`regarding the appropriate pleading standard. He suggests
`that the Second Circuit improperly requires a plaintiff
`in a copyright infringement case to plead extra elements
`in a way that is inconsistent with the two elements of a
`copyright infringement claim described by this Court
`in Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
`340 (1991), a case that did not involve any analysis of the
`pleading standard. In essence, Yamashita asserts that
`the Second Circuit failed to follow Feist and hold that in
`
`
`
`2
`
`order to plead a claim for copyright infringement, all a
`plaintiff needs to do is to allege, without anything more,
`that he: (i) owns some copyrighted material; and (ii) that
`the defendant may possibly have used such material in
`some unspecified way during some unspecified period of
`time without the copyright holder’s permission.
`
`First, Yamashita mischaracterizes the Second
`Circuit’s holding. In its decision, the Second Circuit was
`clear that its ruling “turn[ed] not on whether there are
`two or four elements of a generic copyright infringement
`claim…” App.11a-App.12a. The Second Circuit merely
`followed the requirements of Rule 8, as they were
`articulated by this Court in Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662
`(2009), by requiring Yamashita to plead, with plausibility,
`that his photographs were actually infringed.
`
`Moreover, to the extent there is any disagreement
`between the Circuits that have looked at the pleading
`issue, it is exceedingly narrow. Yamashita makes much of
`the fact that the Second Circuit followed its long-standing
`precedent—shared by the Fifth and Ninth Circuits—by
`requiring him to specifically allege use of his photographs
`by Scholastic outside of the terms of the licenses his agents
`granted and he identified in his Complaint. He claims
`that this burden is inconsistent with decisions from the
`Third and Seventh Circuits. It is not. To the extent the
`Third Circuit suggested that it might apply a different
`pleading requirement than the one applied in the Second
`Circuit in In re McGraw-Hill Global Educ. Holdings
`LLC, 909 F.3d 48 (3d Cir. 2018), that case involved dueling
`petitions for writs of mandamus to determine whether
`lower courts properly dealt with motions to transfer
`
`
`
`3
`
`venue. The pleading standard issue was not before that
`court and anything it might have said in the course of its
`opinion is therefore dicta. The Seventh Circuit’s decision
`in Muhammad-Ali v. Final Call, Inc., 832 F.3d 755 (7th
`Cir. 2016), is easily distinguished on its facts because
`there, unlike in the instant case, the plaintiff had alleged
`copyright infringement with specificity and the defendant
`had raised the possible existence of an implied license
`in order to justify what the plaintiff had claimed was a
`completely unlicensed infringement.
`
`Given that there is no split among the Circuit Courts,
`and that the decision of the Second Circuit correctly
`applied the pleading standard encapsulated by Rule 8,
`Yamashita’s Petition for a Writ of Certiorari should be
`denied.
`
`STATEMENT OF THE CASE
`
`I. BACKGROUND AND FACTS OF THE CASE
`
`Yamashita originally brought this action on June 28,
`2016, accusing Scholastic of copyright infringement related
`to 119 licensed uses (the “Uses”) of 83 photographs identified
`in the exhibit to the Complaint (the “Photographs”).
`App.29a-App.75a (the “Complaint” or “Compl.”). The
`earliest invoices for these licensed Uses date back to June
`16, 1999—nearly eighteen years before Yamashita filed
`the Complaint. App.36a-App.37a (Compl., Ex. A rows 1-4).
`As of the date of filing, 77 of the invoices for the Uses
`(approximately 65%) were at least ten years old. App.36a-
`App.75a (Compl., Ex. A rows 1-79, 105-118).
`
`
`
`4
`
`The case was originally filed in the District Court
`for the District of New Jersey. App.29a. That court
`transferred the case to the Southern District of New
`York pursuant to a mandatory venue provision. The
`District Court (Forrest, J.) then dismissed all but one of
`Yamashita’s claims for failure to state any cause of action
`for copyright infringement. App.21a. The parties settled
`the one remaining claim, and an appeal to the Second
`Circuit followed. The Second Circuit affirmed the District
`Court’s order dismissing the case in a per curiam opinion
`published at 936 F.3d 98. App.1a.
`
`A. YAMASHITA’S COMPLAINT CONTAINS
`N O S P E C I F I C A L L E G A T I O N S O F
`INFRINGEMENT
`
`Michael Yamashita alleges that he is a professional
`photographer who resides in New Jersey. App.30a (Compl.
`¶ 2). Michael Yamashita, Inc. is a New Jersey corporation
`owned by Mr. Yamashita. App.30a (Compl. ¶ 3). Scholastic
`is a New York corporation that is the world’s largest
`publisher and distributor of children’s books. App.30a
`(Compl. ¶ 4).
`
`In the Complaint, Yamashita claimed that Scholastic
`exceeded the scope of 119 licenses granted to Scholastic
`and, as a result, infringed the copyrights in the
`Photographs at some unspecified time in one or more of
`five possible ways. Yamashita provided no factual basis
`for his purported belief that this infringement occurred.
`He did not identify the way in which any of the licenses
`had allegedly been exceeded or when such alleged
`infringement had taken place. Yamashita merely pled,
`upon information and belief, a list of ways all of these
`
`
`
`5
`
`licenses might have been exceeded. App.31a-App.32a
`(Compl. ¶ 13 (listing five possible bases for infringement
`using an “and/or” connector)). Yamashita confirmed
`that he had no specific information on how or when—or,
`indeed, if—his Photographs had been infringed, alleging
`instead that “Scholastic alone knows the full extent to
`which it has infringed Yamashita’s copyrights by making
`unauthorized uses of the Photographs, but it has not
`shared this knowledge with Yamashita.” App.32a (Compl.
`¶ 15). Thus, Yamashita sought to use this litigation as a
`means of auditing Scholastic’s use of photographs, some
`of which were licensed nearly twenty years ago.
`
`The only material allegations in the Complaint based
`on facts (rather than speculation pled on unsupported
`information and belief) were that: (1) Yamashita owns the
`copyrights in the Photographs (App.31a (Compl. ¶ 7)); (2)
`acting through the stock photo agency Corbis Corporation
`(“Corbis”), Yamashita sold Scholastic limited licenses to
`use those Photographs (App.31a (Compl. ¶¶ 9-10)); and (3)
`that Scholastic has been sued for copyright infringement
`in other cases involving other photographers and other
`publications. App.32a (Compl. ¶ 16). Yamashita did not
`identify the purported limits to any license or describe
`how or when Scholastic may have exceeded such limits.
`
`The specific information in the Complaint about the
`alleged licenses to Scholastic was included in the exhibit
`appended to the Complaint, which identified the invoice
`date and Corbis’s invoice number for each of these licenses.
`App.36a-App.75a. The Exhibit listed 119 licensed Uses,
`but identified only three of the Scholastic book titles that
`purportedly included licensed Photographs—two of which
`were apparently the hardcover and paperback versions
`
`
`
`6
`
`of the same publication. App.29a-App.75a (Compl. ¶¶ 16,
`72, 80).
`
`B. SCHOLASTIC MOVES TO DISMISS AND TO
`TRANSFER THE CASE TO THE SOUTHERN
`DISTRICT OF NEW YORK
`
`On September 14, 2016, Scholastic moved to dismiss
`the Complaint for failure to meet the standards of Rule
`8 and/or to transfer the matter from the District of New
`Jersey to the Southern District of New York. App.21a-
`App.22a. Scholastic also argued that the Complaint failed
`to satisfy the requirements of Rule 8 and, in particular,
`failed to allege by what acts and at what time Yamashita’s
`Photographs were allegedly infringed. See id. Scholastic
`further contended that Yamashita improperly was seeking
`to audit Scholastic for all uses of his Photographs, despite
`lacking any right to do so under the Copyright Act or any
`bargained-for contractual right to audit.
`
`On November 29, 2016, the District of New Jersey
`(Chesler, J.) ordered transfer, but did not reach Scholastic’s
`motion to dismiss. See generally App.21a-22a.
`
`II. PROCEEDINGS BELOW
`
`A. THE DISTRICT COURT DISMISSES THE
`CASE AS A “FISHING EXPEDITION” AND
`“AIMLESS TRAWLING” NOT PERMITTED
`BY RULE 8
`
`Upon receipt of the case, the District Court for the
`Southern District of New York inquired whether Scholastic
`intended to renew its motion to dismiss, which it would
`
`
`
`7
`
`hear without further briefing. App.21a-22a. Scholastic
`confirmed that it did, and the Court thereafter heard the
`motion. See generally App.21a-App.24a.
`
`In the order that followed, the District Court dismissed
`Yamashita’s Complaint in its entirety for failure to “plead
`facts to support its claims beyond mere speculation . . . .”
`as is required by Rule 8. App.21a-App.24a (the “Dismissal
`Order”). As the District Court stated, while the Complaint
`“speculate[d] about ‘various ways’ defendants might have
`infringed” Yamashita’s copyrights, it failed to “name a
`single instance of infringement or allege facts to establish
`a timeframe for when such an infringement might have
`occurred.” App.23a. It also rejected Yamashita’s argument
`that he properly established a timeframe for the alleged
`infringement by claiming that it occurred after Scholastic
`obtained the photographs, noting that ‘[a]ny infringement
`would necessarily happen ‘after’ defendants accessed the
`copyrighted material.” App.23a n.1. The District Court
`concluded that “[t]he complaint contain[ed] so few factual
`allegations it is nothing more than a fishing expedition.
`Rule 8 does not permit such aimless trawling.” App.23a.
`
`B. YAMASHITA’S AMENDED COMPLAINT
`LARGELY REPEATS THE CONCLUSORY
`ALLEGATIONS
`
`On January 23, 2017, Yamashita sought reconsideration
`of the Dismissal Order and leave to file an amended
`complaint. App.7a. Yamashita did not contest the District
`Court’s finding that the initial Complaint was a fishing
`expedition, but asked that the District Court allow him to
`replead the very same 119 Uses by providing additional
`information related to only one. App.7a.
`
`
`
`8
`
`The proposed first amended complaint that Yamashita
`attached to his motion provided no additional information
`whatsoever regarding 118 of the Uses that the District
`Court dismissed and merely included images of 2 other
`licensed Uses that provided no indication that Scholastic
`exceeded the terms of the licenses for those Uses. See id.
`Yamashita instead confirmed, as he did in the Complaint,
`that he still had no information of infringement for those
`Uses. App.8a. The lone additional fact Yamashita pled
`concerned only the Use identified in row 80 of the initial
`Complaint (the “Row 80 Use”). Yamashita claimed that a
`reference to the publication associated with the Row 80
`Use appeared on Scholastic’s website as part of a lesson
`plan—with no link or other apparent way to purchase
`that book—after the license for the Row 80 Use allegedly
`expired. App.7a.
`
`In an Order dated February 28, 2017, the District
`Court granted leave to amend only as to the Row 80 Use,
`and denied leave as to all other Uses as “plaintiff has
`shown not a single fact supportive of an infringement
`claim with regard to any of these images.” App.8a-App.9a.
`The parties then settled the Row 80 Use (App.9a), and
`the case was appealed to the Court of Appeals for the
`Second Circuit.
`
`C. THE APPELLATE COURT AFFIRMS THE
`LOWER COURT’S DISMISSAL
`
`The Second Circuit affirmed the District Court’s
`dismissal of the Complaint. See App.1a-App.20a
`(Yamashita v. Scholastic Inc., 936 F.3d 98 (2d Cir. 2019)).
`The appellate court acknowledged that Yamashita had
`pointed to Feist, and that he had urged the court to find
`
`
`
`9
`
`that, under that decision, he need only establish two
`elements—(1) ownership of a valid copyright and (2)
`copying of the constituent elements of the work that are
`original—in order to properly plead his claim. App.10a-
`App.11a. However, the Second Circuit was clear that “the
`correct disposition here turns not on whether there are
`two or four elements of a generic copyright infringement
`claim, but…whether, in pleading copyright infringement,
`a plaintiff who has authorized the licensed use of its
`work to the alleged infringer must allege with specificity
`facts concerning the limits and asserted breaches of the
`licenses…” App.11a.
`
`In finding that Yamashita did not meet this standard,
`the Second Circuit confirmed that while the existence of
`a license is “generally viewed as an affirmative defense
`to a claim of copyright infringement” (App.11a-App.12a
`(citing Bourne v. Walt Disney Co., 68 F.3d 621, 630-31 (2d
`Cir. 1995); Spinelli v., Nat’l Football League, 903 F.3d 185,
`199 (2d Cir. 2018)), “in cases where only the scope of the
`licenses is at issue, the copyright owner bears the burden
`of proving that the defendant’s copying was unauthorized.”
`App.12a (quoting Bourne, 68 F.3d at 631). In other words,
`“when the existence of a license is not in question, a
`copyright holder must plausibly allege that the defendant
`exceeded particular terms of the license.” App.12a
`(emphasis in original). The Second Circuit ultimately held
`that “[a]bsent at least a modicum of such additional factual
`allegations, Yamashita’s Complaint is fairly characterized
`as no more than a collection of speculative claims based on
`suspicion alone. Such a complaint for infringement neither
`complies with Rule 8 nor states a plausible claim for relief.
`Accordingly, we are compelled to agree with the District
`Court that the Complaint does not survive Scholastic’s
`motion to dismiss.” App.14a.
`
`
`
`10
`
`In so holding, the Second Circuit held that “to sustain
`such a compliant that alleges nothing but suspicions of
`infringement where a license has been granted is to
`invite transformation of the courts into an audit bureau
`for copyright licensing, an administrative function that
`[they] are hardly designed to serve.” App.16a. The court
`also noted that although the Third Circuit had “expressed
`disagreement” with the Second Circuit’s approach in
`Bourne, that case was decided “in a procedural context
`quite different from that before” the Second Circuit.
`App.18a-App.19a. Yamashita thus had to “marshal more
`than unsubstantiated suspicions to gain entitlement to
`broad-ranging discovery of his agent’s licensee,” i.e.,
`Scholastic. App.17a.
`
`The Second Circuit subsequently denied Yamashita’s
`petition to rehear the case en banc. App.25a-App.26a.
`
`D. YAMASHITA FILES HIS PETITION FOR A
`WRIT OF CERTIORARI
`
`Yamashita filed a Petition for a Writ of Certiorari to
`this Court (the “Petition”). The Petition claims that the
`fundamental issue is whether the Second Circuit “err[ed]
`in holding that a complaint for copyright infringement
`must be dismissed unless it alleges particular facts
`showing ‘1) which specific original works are the subject of
`the copyright claim, 2) that plaintiff owns the copyrights in
`those works, 3) that the copyrights have been registered in
`accordance with the statute, and 4) [as now required by the
`Second Circuit but not by the Third and Seventh Circuits]
`by what acts during what time the defendant infringed the
`copyright’?” Petition at 2 (emphasis in original). Yamashita
`further argues that this final element stands in conflict
`
`
`
`11
`
`with the Third Circuit’s decision in In re McGraw-Hill,
`the Seventh Circuit’s decision in Muhammad-Ali and this
`Court’s holding in Feist. See id.
`
`III. REASONS FOR DENYING THE PETITION
`
`A. THE SECOND CIRCUIT DID NOT IDENTIFY
`A NEW PLEA DING STA NDARD FOR
`COPYRIGHT INFRINGEMENT ACTIONS
`
`Yamashita argues that the Petition presents a
`question that “is both straightforward and manifestly
`important.” Petition at 6. He claims that “there is one
`pleading standard [for copyright infringement claims]
`in New York and a very different one in Chicago and
`Philadelphia.” Id. This is not the case.
`
`The Second Circuit was clear that it was not applying
`any heightened pleading standard. While the court
`acknowledged that “[t]he parties ha[d] framed their dispute
`about the Complaint’s sufficiency around the question
`whether the District Court erred by adopting the…four-
`part definition of an adequate copyright infringement
`claim…the correct disposition here turns not on whether
`there are two or four elements of a generic copyright
`infringement claim, but instead on the implications of
`the fact, acknowledged in Yamashita’s Complaint, that
`Scholastic procured licenses to copy the Photographs.”
`App.10a-App.11a. All that the Second Circuit did was to
`analyze the sufficiency of Yamashita’s Complaint under
`Rule 8 and the standards articulated by this Court in
`both Iqbal and Twombly. In doing so, it found that the
`Complaint did not meet this standard. App.14a (“Absent
`at least a modicum of such additional factual allegations,
`
`
`
`12
`
`Yamashita’s Complaint is fairly characterized as no more
`than a collection of speculative claims based on suspicion
`alone. Such a complaint for infringement neither complies
`with Rule 8 nor states a plausible claim for relief.”).
`
`To the extent the District Court—and not the Second
`Circuit—relied on the articulation of the elements of a
`copyright claim in Kelly v. L.L. Cool J., 145 F.R.D. 32
`(S.D.N.Y. 1992), aff’d 23 F.3d 398 (2d Cir. 1994), Kelly is in
`no way inconsistent with Feist. Yamashita is correct that
`Feist—a thirty-year-old case famously involving an issue
`concerning the copyrightability of listings in a telephone
`book rather than the pleading standard (id., 499 U.S. at
`342)—articulates only two elements that must be proven
`to establish copyright infringement: “(1) ownership of a
`valid copyright, and (2) copying of constituent elements of
`the work that are original” (id. 361), where Kelly breaks
`these elements down to a more granular four. See Kelly,
`145 F.R.D. at 36 (“A properly plead copyright infringement
`claim must allege 1) which specific original works are the
`subject of the copyright claim, 2) that plaintiff owns the
`copyrights in those works, 3) that the copyrights have
`been registered in accordance with the statute, and 4)
`by what acts during what time the defendant infringed
`the copyright.”). However, Kelly—decided and affirmed
`after Feist—merely articulates the types of facts that
`must be pled to establish this second element with the
`requisite amount of particularity required by Rule 8 and
`the standards articulated in Iqbal and Twombly.
`
`Accordingly, this case neither presents a Circuit split
`on what the appropriate pleading standard is for copyright
`cases, or otherwise conflicts with the precedent of this
`Court. The Petition should therefore be denied.
`
`
`
`13
`
`B. CASES CITED FROM THE THIRD AND
`SEVENTH CIRCUITS DO NOT CREATE A
`CIRCUIT SPLIT
`
`If the Petition points to any disagreement at all
`between Circuits it is far narrower than the pleading
`standard, and not a Circuit split.
`
`As the Second Circuit recognized in this case (see
`App.11a-App.12a), it long ago adopted the rule that,
`where the existence of a license is clear from the face of
`the Complaint, the copyright owner must plead—and, in
`later stages, prove—that that license has been exceeded.
`See Bourne, 68 F.3d at 631 (2d Cir. 1995); Graham v.
`James, 144 F.3d 229, 236 (2d Cir. 1998); Tasini v. N.Y.
`Times Co., 206 F.3d 161, 171 (2d Cir. 2000). This is also
`the rule in the Ninth Circuit (see MDY Indus., LLC v.
`Blizzard Entm’t, Inc., 629 F.3d 928, 940 (9th Cir. 2010)
`(in the face of a license, “the potential for infringement
`exists only where the licensee’s action (1) exceeds the
`license’s scope (2) in a manner that implicates one of the
`licensor’s exclusive statutory rights.”); MAI Sys. Corp.
`v. Peak Computer, Inc., 991 F.2d 511, 517 (9th Cir. 1993)
`(same)) and the Fifth Circuit. See Baisden v. I’m Ready
`Prods., Inc., 693 F.3d 491 (5th Cir. 2012) (upholding jury
`instruction in a copyright infringement case that stated
`that “[Plaintiff] must prove by a preponderance of the
`evidence that Defendants’ copying was not authorized by
`this license”).
`
`While the Third Circuit indicated that it may be
`inclined to establish a different rule in In re McGraw-
`Hill, that case is hardly binding Third Circuit precedent.
`In re McGraw-Hill involved dueling petitions for writs of
`
`
`
`14
`
`mandamus to determine whether two lower courts properly
`dealt with motions to transfer venue. See id., 909 F.3d at
`52 (“These consolidated mandamus petitions require us to
`decide whether two professional photographers bringing
`separate copyright infringement actions are bound by a
`forum selection clause in contracts they did not sign.”). The
`proper pleading standard was not in front of the court,
`and thus anything said on the subject is dicta. See CBS
`Corp. v. F.C.C., 663 F.3d 122, 164 (3d Cir. 2011) (finding
`was “merely background information incidental to the
`Supreme Court’s holding and therefore dicta.”).
`
`The decision in In re McGraw-Hill also is contrary to
`prior, binding Third Circuit precedent affirming dismissal
`of a copyright infringement claim where the plaintiff had
`not demonstrated that defendant exceeded the scope of
`the license Plaintiff granted. See Carlin v. Bezos, 649 F.
`App’x 181, 182 (3d Cir.), cert. denied, 137 S. Ct. 168, 196
`L. Ed. 2d 141 (2016), reh’g denied, 137 S. Ct. 543, 196 L.
`Ed. 2d 438 (2016)); see also MacLean Assocs., Inc. v. Wm.
`M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 779
`(3d Cir. 1991) (a copyright owner who grants a license
`to use his copyrighted material typically can maintain a
`claim of copyright infringement only by showing that the
`“licensee’s use goes beyond the scope of the nonexclusive
`license.”). Thus, even had the issue been in front of the In
`re McGraw-Hill panel—and it was not—the panel would
`not have been free to overrule these prior decisions. See
`Pa. Pharmacists Ass’n v. Houstoun, 283 F.3d 531, 534 (3d
`Cir. 2002) (“Under a longstanding practice of our Court,
`a panel may not overrule another panel decision”).
`
`Muhammad-Ali, while somewhat closer to the instant
`case in terms of its procedural posture, is distinguishable
`
`
`
`15
`
`on its facts. There, the plaintiff had not pled that a license
`had been issued and the case did not involve the question
`whether the claim of infringement had been pleaded with
`the requisite specificity. Rather, the defendant, faced
`with a claim of copyright infringement based upon its
`distribution of lithographs depicting Louis Farrakhan,
`asserted that its use had been permitted under an implied
`license. See id., 832 F.3d at 762. In other words, unlike
`the situation here, there was a dispute as to the existence
`of the license rather than simply to its scope, and placing
`the onus of establishing a license on the licensor makes
`more sense.
`
`Neither of these cases creates a Circuit split on even
`this narrower issue of which party bears the burden of
`pleading or proving that a use exceeded the scope of a
`license, and thus this petition should be denied.
`
`C. THE SECOND CIRCUIT’S RULE IS THE
`CORRECT ONE
`
`In any case, the Second Circuit’s rule is the better
`choice, as it follows the requirements of Rule 8 as they
`were articulated by this Court in Iqbal and Twombly.
`By Yamashita’s own admission, at the time he filed his
`Complaint, he lacked knowledge that Scholastic infringed
`any of his copyrighted works. See App.32a (Compl. ¶¶ 14-
`15). He instead sought to turn a claim for copyright
`infringement into an opportunity to audit Scholastic’s
`uses of his photographs, and relied on the continued
`viability of the so-called “discovery rule” as governing the
`question as to when the statute of limitations accrues in
`
`
`
`16
`
`copyright cases1 to extend that audit back nearly twenty
`years. This is not only inconsistent with the Copyright
`Act, which does not grant copyright owners a statutory
`right to audit supposed uses of their works (see 17 U.S.C.
`§ 106 (identifying the exclusive rights of copyright owners,
`which does not include an audit right); see also Young-Wolff
`v. McGraw-Hill Cos., No. 13 Civ. 4372, 2014 WL 349711, at
`*6-8 (S.D.N.Y. Jan. 31, 2014) (“Plaintiff points to neither
`case law nor language in the Copyright Act[] indicating
`that a copyright owner has an inherent right to sue a
`licensee for an audit.”)), but with Yamashita’s licenses,
`which did not provide him with an audit right despite the
`fact that such provisions are common. See 3-18 Milgrim
`on Licensing § 18.64 (2017) (“One of the most common
`provisions of a license agreement is a
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