    18-2793
    Joseph v. Buffalo News, Inc.




                             UNITED STATES COURT OF APPEALS
                                 FOR THE SECOND CIRCUIT

                                           SUMMARY ORDER
RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY
ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF
APPELLATE PROCEDURE 32.1 AND THIS COURT=S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER
IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN
ELECTRONIC DATABASE (WITH THE NOTATION ASUMMARY ORDER@). A PARTY CITING TO A SUMMARY
ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

                  At a stated term of the United States Court of Appeals for the Second Circuit,
    held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New
    York, on the 25th day of November, two thousand nineteen.

    PRESENT:
                PIERRE N. LEVAL,
                RICHARD C. WESLEY,
                DEBRA ANN LIVINGSTON,
                      Circuit Judges.
    _____________________________________

    Joel D. Joseph,

                                   Plaintiff-Appellant,

                       v.                                                       18-2793


    Buffalo News, Inc.,

                      Defendant-Appellee.
    _____________________________________


    FOR PLAINTIFF-APPELLANT:                              JOEL D. JOSEPH, pro se, La Jolla, CA.

    FOR DEFENDANT-APPELLEE:                               HEATH SZYMCZAK (Jeremy P. Oczek, , on the
                                                          brief), Bond, Schoenck & King, PLLC,
                                                          Buffalo, NY.
       Appeal from a judgment of the United States District Court for the Western District of New

York (Geraci, J.).

       UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND

DECREED that the judgment of the district court is AFFIRMED.

       Plaintiff Joel Joseph, acting pro se, appeals from the judgment of the United States District

Court for the Western District of New York (Geraci, J.), dismissing his complaint under Fed. R.

Civ. P. 12(b)(6) for failure to state a claim for which relief can be granted. The complaint alleged

that the Buffalo News, Inc., (“Buffalo News”) infringed Joseph’s copyright by publishing an

opinion piece he wrote without authorization. The district court reasoned that the correspondence

between Joseph and Buffalo News communicated Joseph’s authorization to publish, and that Joseph

never requested compensation from the newspaper until after publication. The court also denied

Joseph leave to amend his complaint. We assume the parties’ familiarity with the underlying facts,

the procedural history of the case, and the issues on appeal.

       I.      Dismissal

       “We review de novo a district court’s dismissal of a complaint pursuant to Rule 12(b)(6),

construing the complaint liberally, accepting all factual allegations in the complaint as true, and

drawing all reasonable inferences in the plaintiff’s favor,” Chambers v. Time Warner, Inc., 282

F.3d 147, 152 (2d Cir. 2002), with the reservation that the complaint must plead “enough facts to

state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570

(2007); see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

       A plaintiff states a claim for copyright infringement by showing that he possessed a valid

copyright and that the defendant copied or distributed her copyrighted work without authorization.

See Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.



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2003). There is no dispute that Joseph has a valid copyright in his article. The sole issue is

whether the complaint alleged sufficient facts to show that Buffalo News’s publication was

unauthorized.

        Joseph submitted his article to Buffalo News on August 24, 2015, by email, with a short

message describing the piece, but with no mention of any expectation to be compensated for its

publication.1 A Buffalo News editor responded on September 9, 2015, stating: “I think I’ll have a

spot for this in our Sunday Viewpoints section on Sept. 13. Thank you.” Joseph responded, on the

same day: “Great. Thanks.” Buffalo News then published the article on September 13, 2015. At

no point prior to publication did Joseph demand payment or suggest that he imposed any restrictions

on his authorization to publish. After publication of the article, however, Joseph sent Buffalo

News an invoice demanding compensation.

        The import of Joseph’s correspondence with Buffalo News is that Joseph authorized Buffalo

News to publish his article. By sending the article to the editor and by responding affirmatively

(and without qualification) to the editor’s statement of intention to publish it on September 13,

2015, Joseph granted to Buffalo News a nonexclusive license authorizing publication.                      See

Graham v. James, 144 F.3d 229, 235 (2d Cir. 1998) (“[N]onexclusive licenses may . . . be implied

from conduct.”) (citations omitted). If Joseph wanted to impose a condition on his authorization

to publish, after having received and approved the newspaper’s statement of intention to publish on

September 13, it was incumbent on him to say so prior to the publication on September 13. When

the newspaper published his article in reliance on his unconditional authorization, he was not at


1
  Joseph does not challenge the district court’s consideration of the email exchanges on a motion addressed
to the sufficiency of the complaint. In any event, the district court properly considered them because Joseph
relied on those exchanges in his complaint. See Chambers, 282 F.3d at 153 (district courts may rely on
documents not cited in the complaint where plaintiff relied on the content of the documents in the complaint).


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liberty to condition the publication that had already occurred by making a retroactive demand for

payment. See Einstein Moomjy, 338 F.3d at 131 (“Copyright infringement is established when the

owner of a valid copyright demonstrates unauthorized copying.”) (citation omitted) (emphasis

added). Accordingly, the district court properly dismissed Joseph’s complaint for failure to state

a claim of copyright infringement.

       II.     Denial of Leave to Amend

       We review denials of leave to amend for abuse of discretion. Anderson News, L.L.C. v.

Am. Media, Inc., 680 F.3d 162, 185 (2d Cir. 2012). “Although [Federal Rule of Civil Procedure]

15(a) provides that leave to amend a complaint ‘shall be freely given when justice so requires,’ . . .

it is within the sound discretion of the district court whether to grant or deny leave to amend.”

Zahra v. Town of Southold, 48 F.3d 674, 685 (2d Cir. 1995) (citing John Hancock Mut. Life Ins.

Co. v. Amerford Int’l Corp., 22 F.3d 458, 462 (2d Cir. 1994)). District courts may deny leave to

amend “for good reason, including futility, bad faith, undue delay, or undue prejudice to the

opposing party.” TechnoMarine SA v. Giftports, Inc., 758 F.3d 493, 505 (2d Cir. 2014) (internal

quotation marks omitted).

       Joseph’s proposed amendment was futile. His proposed amended complaint seeks to add

allegations that Buffalo News, in addition to publishing his article in its print edition, also displayed

his article on its website for more than six months after the September 13, 2015 publication.

Because the email correspondence clearly establishes that Joseph granted Buffalo News a

nonexclusive license to publish his article, see supra, the relevant issue with respect to the online

publication is whether such publication was within the scope of that license. When the rightsholder

has licensed the alleged infringer to publish, the rightsholder bears the burden of showing that the

publication made was beyond the scope of the license. Graham, 144 F.3d at 236 (“[W]hen the



                                                   4
contested issue is the scope of a license, rather than the existence of one, the copyright owner bears

the burden of proving that the defendant’s copying was unauthorized under the license . . . .”). The

amended complaint, however, does not allege facts that support the conclusion that he limited the

scope of the license to a one-time print publication.

       Moreover, upon receipt of Joseph’s demand for compensation, Buffalo News offered to

Joseph to “remove your column from The [Buffalo] News’ website if you want.”                    Joseph

responded to the email with a further plea for payment but did not respond to the offer to remove

the article. Because Joseph did not accept Buffalo News’s offer to cease publication on the

website, he fails to assert a valid claim that the continued display on the website thereafter, pursuant

to his prior authorization, infringed his copyright. The district court did not abuse its discretion by

denying Joseph leave to amend his complaint. See Ruffolo v. Oppenheimer & Co., 987 F.2d 129,

131 (2d Cir. 1993) (“Where it appears that granting leave to amend is unlikely to be productive,

however, it is not an abuse of discretion to deny leave to amend.”).

       We have reviewed the remainder of Joseph’s arguments and find them to be without merit.

For the foregoing reasons, the judgment of the district court is AFFIRMED.

                                               FOR THE COURT:
                                               Catherine O’Hagan Wolfe, Clerk of Court




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