Michael Grecco Productions, Inc. v. RADesign, Inc.
- Ronnie Abrams
- 1:21-cv-08381
- U.S. District Court · Southern District of New York
- 10
In Michael Grecco Productions, Inc. v. RADesign, Inc., Judge Abrams granted Defendants’ untimeliness dismissal motion without prejudice, allowing amendment.
Michael Grecco Productions, Inc.’s copyright-infringement claims against RADesign, Inc.; Davis by Ruthie Davis, Inc.; Ruthie Allyn Davis; Ruthie Davis, Inc.; and Does 1–5 were dismissed without prejudice, subject to Plaintiff’s opportunity to amend within 30 days.
What happened
Michael Grecco Productions, Inc. sued RADesign, Inc. and the other named defendants for allegedly using copyrighted photographs of Amber Rose wearing Ruthie Davis shoes without permission. The photographs were allegedly posted on Defendants’ website and Twitter, and Plaintiff said it discovered the use in February 2021.
The court ruled that the complaint showed the claims were filed too late under the Copyright Act’s three-year deadline. It found that Plaintiff’s experience identifying and pursuing online copyright infringement made it unreasonable to rely on discovering the alleged infringement years after it began. The complaint also did not plausibly allege a later, separate infringing publication.
Judge Ronnie Abrams granted Defendants’ motion to dismiss without prejudice. Plaintiff may amend the complaint within 30 days if it has a good-faith basis to allege a later infringing act that falls within the limitations period.
The detailed version
- Michael Grecco Productions, Inc. v. RADesign, Inc. · No. 1:21-cv-08381
- Ronnie Abrams
- June 20, 2023
Background
Michael Grecco Productions, Inc. alleged that it owned copyrights in photographs created by Michael Grecco. The photographs depicted celebrity Amber Rose wearing Ruthie Davis shoes and were published on the cover of Inked Magazine in 2017. Plaintiff alleged that Defendants later republished at least two photographs on the Ruthie Davis website and posted them on Twitter to promote the brand, without obtaining a license or paying a fee.
The complaint alleged that Defendants’ website use began on August 16, 2017, and continued afterward. Plaintiff alleged that it discovered the infringement on February 8, 2021, sent a cease-and-desist letter in June 2021, and filed the copyright-infringement action in 2021. The complaint also alleged that Michael Grecco had substantial experience identifying and pursuing online copyright infringement, including through workshops, conferences, educational materials, and prior lawsuits.
Defendants moved to dismiss the complaint as untimely under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when the complaint itself shows that a claim is legally barred.
Statute of limitations and discovery rule
The Copyright Act requires a civil infringement action to be filed within three years after the claim accrues. In the Second Circuit, the discovery rule generally provides that a claim accrues when the copyright holder actually discovers, or should have discovered through reasonable diligence, the infringement.
The court held that the complaint’s own allegations made the claims time-barred. It emphasized Plaintiff’s allegations that Grecco actively searched for difficult-to-detect infringements and had extensive experience enforcing copyright rights. The court also considered Plaintiff’s more than 130 prior copyright-infringement cases. Based on those allegations, the court concluded that Plaintiff should have discovered the alleged infringement within the limitations period and could not rely on the discovery rule to extend the deadline.
The court acknowledged that other decisions had rejected or limited the reasoning that a sophisticated copyright holder should have discovered infringement earlier. It nevertheless concluded that the approach used in those cases was a useful framework when the complaint itself showed that the plaintiff’s delayed discovery was unreasonable. The court found that this complaint did so.
Separate-accrual rule
The court also rejected Plaintiff’s reliance on the separate-accrual rule. Under that rule, successive violations may start separate limitations periods. But the complaint alleged only that Defendants’ use of the images began on August 16, 2017, and continued afterward.
The court explained that merely leaving copyrighted material on a website does not itself create a new infringement each time the material remains available or is accessed. If Plaintiff intended to rely on a later, separate republication or distribution, it needed to allege specific facts showing that such an act occurred within the three-year period. The court found that the complaint did not do so.
Leave to amend and disposition
The court concluded that amendment would not necessarily be futile because Plaintiff might be able to allege a separately occurring distribution or publication of the photographs within the limitations period. It therefore granted Defendants’ motion to dismiss, albeit without prejudice, and gave Plaintiff 30 days to amend the complaint if it had a good-faith basis for doing so.
Read the full 10-page opinion on CourtListener, the free public archive maintained by the Free Law Project.