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finding "no authority for such a departure from the plain language of Rule 15" stating that plaintiffs have only 21 days to amend as a matter of course
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10 Civ. 8837 (LMM)
12-16-2011
MARTEL ELLIS and FELIX ROVIRA p/k/a BLAH-ZAY BLAH-ZAY, Plaintiffs, v. WYCLEF JEAN and SONY MUSIC HOLDINGS, INC. Defendants.
MEMORANDUM AND ORDER
Defendants in the above action, Wyclef Jean and Sony Music Entertainment ("Sony Music", incorrectly named as "Sony Music Holdings, Inc." in Plaintiffs' complaint) (collectively, "Defendants") move to dismiss Plaintiffs' complaint for copyright infringement pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(c). In response, Plaintiffs bring cross-motions for summary judgment pursuant to Rule 56 and to amend their complaint pursuant to Rule 15.
Defendant Jean's motion is made pursuant to Rule 12(c) and defendant Sony Music's motion is made pursuant to Rule 12(b)(6). (Mem. of Law in Support of Defs.' Mot. to Dismiss ("Defs.' Mem.") at 1.)
For the reasons set forth below, Defendants' motions to dismiss are denied, Plaintiffs' motion for summary judgment is denied, and Plaintiffs' motion to amend is granted.
I. BACKGROUND AND PROCEDURAL HISTORY
The subject of this copyright infringement action is Plaintiffs' 1996 hip-hop song entitled "Danger" ("Plaintiffs' work"), which appears on Plaintiffs' album entitled "Blah Blah Blah". (See Compl. ¶ 7.) Plaintiffs allege in their complaint that, inter alia, defendant Jean's 2007 song entitled "Welcome to the East" ("Defendants' work") unlawfully copied Plaintiffs' work. (See Compl. ¶ 15.)
Plaintiffs contend that defendant Jean and defendant Sony Music jointly "produced, manufactured, released and sold" Jean's album that included the song at issue. (Compl. ¶ 13.)
This is the second litigation Plaintiffs have initiated with respect to this copyright infringement claim. On March 19, 2009, Plaintiffs filed an initial complaint in this Court against defendant Jean and "Sony BMG Music Entertainment (US Latin) LLC" for copyright infringement and violations of the Lanham Act. (See Compl., Ellis v. Jean, 09 Civ. 2546 (S.D.N.Y. Mar. 19, 2009).) Plaintiffs subsequently amended that complaint on April 21, 2009, replacing "Sony BMG Music Entertainment (U.S. Latin) LLC" with "Sony Music Entertainment" as a defendant, and making other minor changes, though the thrust of the complaint and the claims for relief were the same. (See Am. Compl., Ellis v. Jean, 09 Civ. 2546 (S.D.N.Y. Apr. 21, 2009).) On June 2, 2009, Defendants filed a motion to dismiss Plaintiffs' amended complaint arguing that, inter alia, Plaintiffs did not have a valid copyright registration for the song at issue. (See Mem. of Law in Supp. of Defs.' Mot. to Dismiss for Lack of Subject Matter Jurisdiction, at 4-6, Ellis v. Jean, 09 Civ. 2546 (S.D.N.Y. June 2, 2009).) The parties thereafter agreed to a joint stipulation dismissing Plaintiffs' initial action without prejudice, and the Court entered that stipulation by order dated July 2, 2009. (See Stip. and Order, Ellis v. Jean, 09 Civ. 2546 (S.D.N.Y. July 2, 2009).)
Plaintiffs obtained a copyright registration for "Danger" on October 4, 2010 (see Certificate of Registration No. PA-1-700-558, Oct. 4, 2010, attached as Exh. A to Decl. of Felix Rovira, June 20, 2011 ("Cert. of Reg.")), and then filed the instant action on November 23, 2010. On January 26, 2011, defendant Jean answered Plaintiffs' complaint, and filed an amended answer on February 16, 2011. Both Defendants filed their respective motions to dismiss (briefed together) on March 11, 2011. On June 20, 2011, in conjunction with their opposition brief, Plaintiffs filed cross-motions for leave to amend their complaint and for summary judgment.
II. DISCUSSION
A. Defendants' Motions to Dismiss and Plaintiffs' Motion for
Summary Judgment
Defendant Jean moves for dismissal pursuant to Federal Rule of Civil Procedure 12(c) and defendant Sony Music moves for dismissal pursuant to Federal Rule of Civil Procedure 12(b)(6) for several reasons. First, Defendants claim that Plaintiffs have failed to state a cause of action for copyright infringement because the complaint does not "specifically identify the alleged infringing conduct of the Defendants." (Defs.' Mem. at 1.) Second, Defendants contend that Plaintiffs disclaimed the portions of their song that are alleged to have been infringed as "pre-existing material" in their copyright registration. (Id.) Finally, Defendants argue that the court should find, as a matter of law, that Defendants' work is not substantially similar to Plaintiffs' work. (Id. at 12-16.)
On cross-motion, Plaintiffs move for summary judgment pursuant to Federal Rule of Civil Procedure 56 because, they contend, there are no issues of material fact concerning Defendants' purported copying of Plaintiffs' work and Defendants' work is substantially similar to Plaintiffs' work as a matter of law. (Pls.' Mem. of Law in Opp'n to Defs.' Mot. to Dismiss Compl. and in Supp. of Pls.' Cross-Mot. to Amend and for Summ. J. ("Pls.' Opp'n Mem.") at 15-17.)
i. Legal Standards for Motions to Dismiss and Motion for
Summary Judgment
"The standard for granting a Rule 12(c) motion for judgment on the pleadings is identical to that of a Rule 12(b)(6) motion for failure to state a claim." Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001) (citations omitted). "In both postures, the district court must accept all allegations in the complaint as true and draw all inferences in the non-moving party's favor." Id. (citation omitted); see also Bank of New York v. First Millennium, Inc., 607 F.3d 905, 922 (2d Cir. 2010).
Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). In turn, "[t]o survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. (citing Twombly, 550 U.S. at 556). By contrast, "[a] pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not do.'" Id. (citing Twombly, 550 U.S. at 555).
In considering a Rule 12(c) or a Rule 12(b)(6) motion, "a district court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents incorporated by reference in the complaint." Piazza v. Florida Union Free School Dist., 777 F. Supp. 2d 669, 677 (S.D.N.Y. 2011) (quoting DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010) (reviewing a Rule 12(b)(6) dismissal) and citing Dingle v. City of New York, 728 F. Supp. 2d 332, 343 (S.D.N.Y. 2010) (reviewing a Rule 12(c) motion)). "Even where a document is not incorporated by reference, the court may nevertheless consider it where the complaint relies heavily upon its terms and effect, which renders the document integral to the complaint." Id. (citations omitted).
This Court "shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law". Fed. R. Civ. P. 56(a). "'An issue of fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party'"; "'[a] fact is material if it might affect the outcome of the suit under the governing law'". Fincher v. Depository Trust and Clearing Corp., 604 F.3d 712, 720 (2d Cir. 2010) (quoting Roe v. City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008)).
"When ruling on a summary judgment motion, the district court must construe the facts in the light most favorable to the non-moving party and must resolve all ambiguities and draw all reasonable inferences against the movant." Dallas Aerospace, Inc. v. CIS Air Corp., 352 F.3d 775, 780 (2d Cir. 2003) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)). However, the nonmoving party must come forward with specific facts showing that there is a genuine issue for trial. See Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). "[R]eliance upon conclusory statements or mere allegations is not sufficient to defeat a summary judgment motion." Davis v. State of New York, 316 F.3d 93, 100 (2d Cir. 2002) (citations omitted).
ii. Legal Standard for Copyright Infringement
"To establish infringement of copyright, 'two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" Arista Records LLC v. Doe 3, 604 F.3d 110, 117 (2d Cir. 2010) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). To show copying, "a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's." Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010) (citation omitted); see also Boisson v. Banian, Ltd., 273 F.3d 262, 267-68 (2d Cir. 2001).
iii. Defendants' Motion to Dismiss for Failure to
Properly Plead Copyright Infringement
"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." Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992). Defendants acknowledge that Plaintiffs have asserted ownership of their work entitled "Danger" and that they obtained a copyright registration for the work from the U.S. Copyright Office. (See Defs.' Mem. at 6.) However, Defendants contend that beyond those allegations, Plaintiffs have not alleged specific facts to plead a claim of infringement. (See id. at 6-7.)
The Court disagrees. In their Complaint, Plaintiffs name the allegedly infringing work, Defendant Jean's song "Welcome to the East", that they contend has infringed their copyrighted work, "Danger", as well as the time period and extent of Defendants' alleged infringement. (Compl. ¶¶ 15, 28-30.) Plaintiffs also allege that Defendants notified Plaintiffs in advance of their purported copying and engaged in discussions regarding a potential license agreement in advance of that copying. (Id. ¶¶ 16-21.)
As the Supreme Court held in Twombly, Federal Rule of Civil Procedure 8(a)(2) "requires only a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the . . . claim is and the grounds upon which it rests." Twombly, 550 U.S. at 555 (internal quotation marks and citations omitted, ellipses in original). Based upon the allegations contained in Plaintiffs' complaint, Defendants here cannot be said to lack fair notice of Plaintiffs' claims and the grounds upon which they rest. Neither Twombly nor Iqbal requires a plaintiff in a copyright infringement action to plead "specific evidence or extra facts beyond what is needed to make the claim plausible." Arista Records, 604 F.3d at 120-21. Thus, Plaintiffs' complaint adequately states a cause of action for copyright infringement.
iv. Defendants' Motion to Dismiss for Lack of Similarity as
a Matter of Law and Plaintiffs' Cross-Motion for Summary
Judgment
Defendants contend that Plaintiffs' complaint should be dismissed because the only similarities between Plaintiffs' and Defendants' works involve unoriginal lyrics not protected by Plaintiffs' copyright and, in any event, no reasonable jury could find the two works to be substantially similar. (Defs.' Mem. at 8-16.) In response, Plaintiffs have cross-moved for summary judgment alleging that there is no material issue of fact regarding Defendants' purported copying of Plaintiffs' work and that Defendants' and Plaintiffs' works are substantially similar as a matter of law. The Court disagrees with both sides.
At the outset, as noted above, Plaintiffs must show unlawful copying by demonstrating that Defendants have actually copied Plaintiffs' work and that a substantial similarity exists between Defendants' work and protectable elements of Plaintiffs' work. See Peter F. Gaito Architecture, 602 F.3d at 63. Actual copying may be established by direct evidence or by indirect evidence, which "may include proof of access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Boisson, 273 F.3d at 267 (internal quotation omitted). For purposes of their motion, Defendants concede (without prejudice) that Defendants had access to Plaintiffs' work and ask the Court to focus solely on the "similarity issue". (Defs.' Mem. at 6 n.9.)
Because "[t]he test for infringement of a copyright is of necessity vague . . . and because the question of substantial similarity typically presents an extremely close question of fact, questions of non-infringement have traditionally been reserved for the trier of fact." Gaito, 602 F.3d at 63 (citations omitted). Nonetheless, "in certain circumstances, it is entirely appropriate for a district court to resolve that question as a matter of law, 'either because the similarity between two works concerns only non-copyrightable elements of the plaintiff's work, or because no reasonable jury, properly instructed, could find that the two works are substantially similar.'" Id. (quoting Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 240 (2d Cir. 1983)).
"Generally, an allegedly infringing work is considered substantially similar to a copyrighted work if 'the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.'" Boisson, 273 F.3d at 272 (quoting Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765 (2d Cir. 1991)). However, "a 'more refined analysis' is required where a plaintiff's work is not 'wholly original,' but rather incorporates elements from the public domain." Id. (quoting Key Publ'ns., Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991)). In such a case "'[w]hat must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation.'" Id. (quoting Key, 945 F.2d at 514) (alteration in original).
Defendants contend that the only elements of Plaintiffs' work that are arguably shared by Defendants' work are the lyrics "When the East is in the House" and "Oh my God". (Defs.' Mem. at 9.) According to Defendants, these phrases not only are in the public domain, but also were expressly disclaimed by Plaintiffs in their copyright registration for the song "Danger". (Id. at 9-12.) Defendants also argue that "[u]nder the ordinary listener standard, . . . there is no actionable similarity between these or any other protectable musical elements of Plaintiffs' Work and the Jean Song, much less melodic similarities." (Id. at 15.) Thus, according to Defendants, the two songs share no protectable elements and Plaintiffs' complaint must be dismissed. (Id.)
The Court is not persuaded by Defendants' arguments. First, Plaintiffs allege that Defendants have appropriated more than just lyrics. Specifically, Plaintiffs claim that Defendants have copied the "hook" of their musical composition, consisting of the following:
"(a) the words 'Oh My God. When the East in the House. Oh My God. When the East in the House.'; (b) the background vocal music; (c) instrumental music including the tempo/beat, guitar passages, and a drum track; (d) the scratching technique; and (e) the editing of pre-existing sound recordings." (Pls.' Opp'n Mem at 2-3.)Second, the Court has listened to Plaintiffs' and Defendants' songs and cannot rule that Plaintiffs' infringement claim fails as a matter of law under the so-called "ordinary observer" standard. Defendants' song incorporates distinctive portions of Plaintiffs' work, namely the prominent repetition of the lyrics "When the East is in the House" and "Oh My God" as well as musical elements accompanying those lyrics. These lyrics and musical accompaniment are repeated in Plaintiffs' work no less than 25 times, most prominently as the chorus running throughout the song. Defendants in turn repeat these elements (though seemingly at a slightly different tempo and key), both together and in some instances separately, throughout their song. The repeated use of these prominent portions of Plaintiffs' work would be noticeable to an ordinary observer. Thus, Defendants' motions to dismiss will be denied.
Notwithstanding the above, however, the Court cannot grant Plaintiffs summary judgment at this time. Given disputed issues of fact concerning the origin of various elements in Plaintiffs' work, the Court believes that the "more refined analysis" advocated by the Court of Appeals is required here, i.e., "what must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." See Boisson, 273 F.3d at 272 (quotation omitted). Yet at this stage of the case, with no discovery having been conducted, the Court cannot distinguish the relevant protectable portions of Plaintiffs' work from the portions that incorporate elements from the public domain or from prior copyrighted works and may thus be non-protectable.
In applying this test, the Court is mindful of the Court of Appeals' caution that "a work may be copyrightable even though it is entirely a compilation of unprotectible elements." Knitwaves, Inc. v. Lollytogs, Ltd. (Inc.), 71 F.3d 996, 1003-04 (2d Cir. 1995) (citing Feist, 499 U.S. at 362). Thus, the Court should not simply "dissect the works at issue into separate components and compare only the copyrightable elements", but rather be "guided by comparing the 'total concept and feel' of the contested works." Boisson, 273 F.3d at 272 (citations omitted).
For example, while it is clear that both songs incorporate the lyrics "When the East is in the house" and "Oh my God", Defendants correctly note that the copyright registration for Plaintiffs' work "Danger" expressly excludes those lyrics as pre-existing material. (See Cert. of Reg.) In addition, Plaintiffs allege that Defendants have copied "the background vocal music" of their "hook". (Pls.' Opp'n Mem. at 2.) But while an ordinary observer would likely recognize that vocal music in both works, Defendants claim that "the underlying vocals phrase 'Hmm. . .'" used in that portion of Plaintiffs' song was not original, but was instead performed by Gwen McCrae in her song "Rockin' Chair". (See Mem. of Law in Reply and in Opp'n to Pls.' Cross-Mots. for Leave to Amend and for Summ. J. ("Defs.' Reply Mem."), at 4 n.4.)
This point is not contested; Plaintiff Ellis submitted a declaration stating that "[t]he Gwen McRae [sic] sample was background vocals which are heard at certain points in the Plaintiffs' Work". (Decl. of Martell Ellis in Further Supp. of Pls.' Mots. for Summ. J. and for Leave to Amend, ¶ 5.)
"The sine qua non of copyright is originality." Feist, 499 U.S. at 345. Thus, "[t]o qualify for copyright protection, a work must be original to the author." Id. (citation omitted). However, while "the requisite level of creativity" to show originality "is extremely low" (Feist, 499 U.S. at 345), "[t]ypically, when the originality of a copyrighted work is at issue, it becomes a question of fact for the jury to resolve" (Vargas v. Pfizer, Inc., 418 F. Supp. 2d 369, 372 (S.D.N.Y. 2005) (internal quotation omitted)). Such is the case here.
Generally, "[a] certificate of copyright registration constitutes prima facie evidence of the validity of the claimed copyright, as well as the originality of a work." Caffey v. Cook, 409 F. Supp. 2d 484, 495 (S.D.N.Y. 2006) (citing 17 U.S.C. § 410(c); Boisson, 273 F.3d at 268). However, this applies only to registrations "made before or within five years after first publication of the work." 17 U.S.C. § 410(c). "The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court." Id. Here, Plaintiffs' work was published in 1996, yet Plaintiffs did not register their copyright until 2010. (See Pls.' Opp'n Mem. at 1-2; Cert. of Reg.) Due to the significant lapse in time between publication and registration, the Court accords lesser evidentiary weight to Plaintiffs' registration certificate.
Given the above disputed issues of fact, Plaintiffs are not entitled to summary judgment.
Defendants raise other alleged issues of material fact, such as the purported existence of a license agreement entitling Defendants to the use of Plaintiffs' work, that they contend preclude summary judgment. (See Defs.' Reply Mem. at 12.) Because the Court denies Plaintiffs' motion for summary judgment as discussed above, the Court need not address the sufficiency of these alleged issues of fact at this time.
B. Plaintiffs' Motion to Amend
Plaintiffs seek to amend their complaint to add 10 paragraphs detailing various alleged facts, including the specific portions of Plaintiffs' work said to have been copied by Defendants as well as purported licensing discussions concerning Plaintiffs' work. (See Am. Compl., attached as Ex. 2 to Decl. of Keith Sklar, June 20, 2011 ("Proposed Am. Compl."), ¶¶ 17-21, 23-25, 32-33.) For the reasons below, the Court grants Plaintiffs' motion to amend.
Plaintiffs' proposed amended complaint also appears to have incorporated additional, minor changes to at least one of the pre-existing paragraphs from Plaintiffs' original complaint. (See Proposed Am. Compl., ¶ 16.)
i. Legal Standard
Federal Rule of Civil Procedure 15(a)(1) allows a party to amend its pleading once "as a matter of course" within 21 days after serving it or, if a responsive pleading is required, within 21 days of service of the responsive pleading or a motion under Rule 12(b), (e), or (f), whichever is earlier. Rule 15(a)(2) provides that "[i]n all other cases, a party may amend its pleading only with the opposing party's written consent or the court's leave," which should be "freely give[n] . . . when justice so requires."
The rule in the Second Circuit "is to allow a party to amend its complaint unless the nonmovant demonstrates prejudice or bad faith." City of New York v. Group Health Inc., 649 F.3d 151, 157 (2d Cir. 2011) (citation omitted). "Amendment may be prejudicial when, among other things, it would 'require the opponent to expend significant additional resources to conduct discovery and prepare for trial' or 'significantly delay the resolution of the dispute.'" AEP Energy Servs. Gas Holding Co. v. Bank of America, N.A., 626 F.3d 699, 725-26 (2d Cir. 2010) (quoting State Teachers Ret. Bd. v. Fluor Corp., 654 F.2d 843, 856 (2d Cir. 1981)). In addition, a motion to amend a pleading should be denied where the repleading would be futile. Goodrich v. Long Island Rail Road Co., 654 F.3d 190, 200 (2d Cir. 2011) (citation omitted). "An amendment to a pleading is futile if the proposed claim could not withstand a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6)." Lucente v. Int'l Bus. Machines Corp., 310 F.3d 243, 258 (2d Cir. 2002) (citation omitted). The grant or denial of leave to amend a complaint is within the discretion of the district court. See Foman v. Davis, 371 U.S. 178, 182 (1962).
ii. Plaintiffs' Motion to Amend Pursuant to Rule 15(a)(1)
Plaintiffs first argue that they are entitled to add new material to their complaint as of right pursuant to Rule 15(a)(1). (See Pls.' Opp'n Mem. at 13-14.) However, Plaintiffs' motion to amend comes well after Rule 15(a)(1)'s 21-day period in which to amend as a matter of course following a responsive pleading or motion brought pursuant to Rule 12(b). Although Defendant Jean filed his answer to Plaintiffs' complaint on January 26, 2011, and defendant Sony Music filed its motion to dismiss pursuant to Rule 12(b)(6) on March 11, 2011, Plaintiffs did not file their motion to amend until June 20, 2011.
Recognizing this dilemma, Plaintiffs contend that certain extensions to the time for Plaintiffs' response to Defendants' motions to dismiss in effect "extended the time during which Plaintiffs may amend [their] Complaint as of right", at least as to Defendant Sony Music. (Pls.' Opp'n Mem. at 14.) However, Plaintiffs offer no authority for such a departure from the plain language of Rule 15(a)(1), and the Court has found none. Thus, the time for Plaintiffs to amend their complaint as a matter of course pursuant to Rule 15(a)(1) expired prior to the filing of Plaintiffs' motion to amend.
iii. Plaintiffs' Motion to Amend Pursuant to Rule 15(a)(2)
Plaintiffs also move to amend their complaint with the Court's leave pursuant to Rule 15(a)(2), arguing that there has been no undue delay, bad faith, dilatory conduct, or undue prejudice to Defendants. (Id. at 15.) Defendants oppose Plaintiffs' motion on a number of grounds.
(a) Futility
First, Defendants contend that Plaintiffs' proposed amendments would be futile because the amended complaint could not withstand a motion to dismiss. (Defs.' Reply Mem. at 5-6.) In particular, Defendants re-emphasize their contention that "Plaintiffs in their proposed amended Complaint (and opposition) admit that the phrases which are the underlying [subjects] of their infringement claim are excluded from their copyright registration." (Id. at 6.) However, as discussed above, Plaintiffs have not limited their copyright infringement claim to the lyrics that were apparently disclaimed as "pre-existing" in Plaintiffs' copyright registration. (See Cert. of Reg.) In both their proposed amended complaint and their memorandum in opposition to Defendants' motions to dismiss, Plaintiffs expressly allege that Defendants have appropriated not only lyrical phrases, but also background vocal music, instrumental music (including the tempo and beat, guitar passages, and a drum track), the "scratching technique", and the editing of pre-existing sound recordings included in their work. (See Proposed Am. Compl. ¶ 17; Pls.' Opp'n Mem. at 2-3.) Although Plaintiffs' original complaint withstands Defendants' motions to dismiss without such detail, as discussed above, Plaintiffs' proposed amended complaint provides additional specificity regarding Defendants' alleged infringement, and thus the amendment would not be futile.
(b) Undue Delay
Second, Defendants oppose Plaintiffs' motion for leave to amend on the grounds that Plaintiffs have impermissibly delayed seeking amendment for over two years. (Defs.' Reply Mem. at 6-8.) However, Defendants calculate the purported delay based on Plaintiffs' filing of a complaint in an earlier infringement action against Defendants that was subsequently dismissed without prejudice upon stipulation of all parties. (See Stipulation and Order, Ellis v. Jean, Case No. 09 Civ. 2546, July 2, 2009.) Although the prior case was brought on the same grounds and relates to the same alleged conduct as the instant case, the effect of the stipulated dismissal without prejudice was to render that case moot, as if the action had never been filed. See, e.g., Oneida Indian Nation of New York State v. Oneida County, 622 F.2d 624, 629 n.7 (2d Cir. 1980) (citing A. B. Dick Co. v. Marr, 197 F.2d 498, 502 (2d Cir.), cert. denied, 344 U.S. 878 (1951)); 9 Charles Alan Wright, Arthur R. Miller, Mary Kay Kane & Richard L. Marcus, Federal Practice and Procedure § 2367 (3d ed. 2011). In the instant case, Plaintiffs filed their complaint on November 23, 2010, and filed their motion for leave to amend that complaint seven months later, on June 20, 2010. The Court finds that seven months does not constitute a period of undue delay here.
Defendants also cite several cases from this district for the proposition that courts "may deny a motion to amend when the movant knew or should have known of the facts upon which the amendment is based when the original pleading was filed . . . ." (Defs.' Reply Mem. at 7 (quoting Berman v. Parco, 986 F. Supp. 195, 217 (S.D.N.Y. 1997)).) However, the facts of those cases are very different from those present here. In particular, the proposed amendments in each of those cases either would have worked prejudice on the defendants or were futile. See id. (proposed amendment would require defendant to conduct additional discovery where case was otherwise trial-ready); Hallissey v. Am. Online, Inc., Case No. 99 Civ. 3785, 2009 WL 2222739, at *2-3 (S.D.N.Y. July 15, 2009) (plaintiffs' second amended complaint, sought 10 years after initial complaint, would require defendants and court to suffer undue prejudice, i.e., "significant expenditure of additional resources and further delay"); New Hampshire Ins. Co. v. Total Tool Supply, Inc., 621 F.Supp.2d 121, 124-27 (S.D.N.Y. 2009) (denying motion to amend on futility grounds alone, without discussion of any purported delay); Am. Home Assur. Co. v. Jacky Maeder (Hong Kong) Ltd., 969 F. Supp. 184, 188-89 (S.D.N.Y. 1997) (denying leave to amend as untimely, where deadline for applications to amend had passed after counsel represented that amendments were unlikely and "[d]iscovery and trial preparation proceeded on that assumption", as well as futile); Priestley v. Am. Airlines, Inc., Case No. 89 Civ. 8265, 1991 WL 64459, at *2 (S.D.N.Y. Apr. 12, 1991) (motion to amend denied due to undue delay and undue prejudice where amendment would "substantially alter the relief sought in the original complaint and necessitate a reopening of the discovery period when trial is imminent"). As the Second Circuit has recognized, "[m]ere delay, . . . absent a showing of bad faith or undue prejudice, does not provide a basis for a district court to deny the right to amend." State Teachers Ret. Bd., 654 F.2d at 856.
Defendants acknowledge that "a delay, without a showing of bad faith or undue prejudice, is not enough of a basis to deny leave to amend", though they note that courts have held that "the longer the period of unexplained delay, the less will be required of the nonmoving party in terms of a showing of prejudice." (Defs.' Reply Mem. at 8 (citing Evans v. Syracuse City Sch. Dist., 704 F.2d 44, 47 (2d Cir. 1983).)
(c) Prejudice
Finally, Defendants contend that Plaintiffs' amendments would be prejudicial. In determining what constitutes prejudice, courts consider whether the proposed amended complaint would "(i) require the opponent to expend significant additional resources to conduct discovery and prepare for trial; (ii) significantly delay the resolution of the dispute; or (iii) prevent the plaintiff from bringing a timely action in another jurisdiction." Block v. First Blood Assocs., 988 F.2d 344, 350 (2d Cir. 1993) (citations omitted). Generally, "the longer the period of an unexplained delay, the less will be required of the nonmoving party in terms of a showing of prejudice." Id. (citing Evans, 704 F.2d at 47).
Whether or not seven months constitutes a "long" period of delay for purposes of filing a motion to amend a complaint (and this Court holds on the facts of this case that it does not), Defendants have made no showing that the above factors are present here. Discovery has not yet commenced in this case. In addition, Defendants have given no indication that the amendments would impact the timeliness of the resolution of this dispute. Further, there is no contention that the amendments would impact Plaintiffs' ability to bring a timely action in another jurisdiction. Thus, the Court finds that Plaintiffs' proposed amendments would not work prejudice on Defendants, and Plaintiffs' motion for leave so amend their complaint is granted.
III. CONCLUSION
For the foregoing reasons, Defendants' motions to dismiss Plaintiffs' complaint are DENIED, Plaintiffs' motion for summary judgment is DENIED, and Plaintiffs' motion to amend their complaint is GRANTED. Plaintiffs are ordered to formally file the proposed amended complaint attached as Exhibit 2 to the June 20, 2011, Declaration of Keith Sklar within 7 days.
SO ORDERED. Dated: December 16, 2011
/s/_________
Lawrence M. McKenna
U.S.D.J.