USDC S.D. New York, September 17, 2008
On cross-motions in this action for copyright infringement, the district court had denied the cross-motion of the defendant for summary judgment invalidating the registered copyright of the plaintiff and declaring non-infringement. The court then granted the plaintiff’s motion to dismiss certain of defendant’s counterclaims that stemmed from letters plaintiff sent to jewelry retailers, placing them on notice of the defendant’s asserted infringement of plaintiff’s copyright.
The court held that “[a] copyright owner who believes that its copyright is being infringed is entitled to send such letters.” In reaching this holding, the court relied on the Second Circuit’s decision in Shapiro & Son Bedspread Corp. v. Royal Mills Associates, 764 F.2d 69 (2d Cir. 1985), which held that when Shapiro notified Royal’s customers that Royal was infringing Shapiro’s copyrights it did not act improperly “since if in fact, Shapiro has a valid copyright in the [subject] design, as may prove to be the case, sellers of infringing works may indeed be subject to certain sanctions.” Based on this language from Shapiro, the court further held that it is not necessary that the validity of the plaintiff’s copyright has been established beyond question at the time such letters were sent. Accordingly, the letters sent by the plaintiff to the retailers “were proper as a matter of law.”