JBrick, LLC v. Chazak Kinder, Inc.

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

JBRICK, LLC,

Plaintiff,

v. MEMORANDUM & ORDER

21-CV-02883 (HG) (RLM)

CHAZAK KINDER, INC., CHAZAK

DISTRIBUTION, INC., YAACOV

SCHWARTZ, and MARAV USA LLC.

Defendants.

HECTOR GONZALEZ, United States District Judge:

Plaintiff JBrick, LLC (“Plaintiff” or “JBrick”) brings this action against Defendants

Chazak Kinder, Inc. (“Chazak Kinder”), Chazak Distribution, Inc. (“Chazak Distribution”),

Marav USA, LLC (“Bingo Wholesale”), and Yaacov Schwartz alleging copyright infringement

pursuant to 17 U.S.C. §§ 101–1511. ECF No. 46 (Second Amended Complaint). Plaintiff

alleges that Defendants Chazak Kinder and Chazak Distribution are each an “alter ego” of

Defendant Schwartz (together, “Defendants” or “Chazak Parties”). Defendants assert

counterclaims against Plaintiff for non-infringement of copyright, copyright invalidity, tortious

interference with prospective economic advantage, and false advertising. ECF No. 80 at 36–42

(Defendants’ Counterclaims).

Presently before the Court is Plaintiff’s motion for summary judgment on Defendants’

counterclaims for copyright invalidity, tortious interference with prospective economic

advantage, and false advertising. ECF No. 81. For the reasons set forth below, Plaintiff’s

motion for summary judgment is granted.

BACKGROUND1

The Court assumes familiarity with the facts and history of this litigation and only

provides a summary of the pertinent facts and procedural history. See JBrick, LLC v. Chazak

Kinder, Inc., No. 21-cv-2883, 2022 WL 17177854 (E.D.N.Y. Nov. 23, 2022).

Plaintiff alleges that JBrick was established by Yitzchok and Channie Kasowitz in 2014.

ECF No. 46 at 4. Plaintiff further alleges that Mr. Kasowitz’s “true passion project” was the

creation of a “unique, accurately scaled, genuine LEGO®-brick interpretation” of the Second

Beit Hamikdash, or Second Holy Temple (“Second Holy Temple”). ECF No. 46 at 4–5. Mr.

Kasowitz testified, and Defendants admit, that JBrick created a LEGO®-brick Second Holy

Temple product (“Second Holy Temple Product”) based on Mr. Kasowitz’s independent research

and at least three years of studying historical teachings. ECF No. 72-1 at 4 (Defendants’

Responses to JBrick’s Statement of Facts); ECF No. 72-2 at 3 (Defendants’ Statements of Facts

in Opposition to JBrick’s Motion for Summary Judgment) (“JBrick developed its Second Holy

Temple product . . . based on . . . Mr. Kasowitz’s . . . research and analysis of Jewish religious

texts and scholarly interpretations of those texts”); ECF No. 84 at 5 (Defendants’ Opposition to

Motion for Summary Judgment). Mr. Kasowitz further testified that he consulted with various

rabbis as part of the design process for the Second Holy Temple Product. ECF No. 72-1 at 4.

Mr. Kasowitz also testified that the Second Holy Temple Product is a “tangible, sculptural

interpretation of what . . . the [Second Holy Temple] may have looked like in real life, based on

the written words and interpretation of the Hebrew scholar and philosopher Maimonides.” Id. at

5. JBrick owns the copyright registrations for its Second Holy Temple Product, and its

1 Unless otherwise specified, the facts cited by the Court are undisputed.

photograph of its Second Holy Temple Product (the “Copyright Registrations”). ECF No. 72-1

at 3.

Plaintiff alleges that Defendants produced “almost an exact replica” of Plaintiff’s Second

Holy Temple Product, containing “all of the unique features that set the JBrick . . . set apart from

its competitors.” ECF No. 46 at 13. On May 21, 2021, JBrick filed a complaint asserting

claims for copyright infringement and unfair competition against Defendants. ECF No. 1. On

July 23, 2021, Defendants filed an answer along with counterclaims for non-infringement of

copyright, copyright invalidity, tortious interference with prospective economic advantage, and

false advertising. ECF No. 16. On April 25, 2022, Plaintiff filed its second amended complaint

(“SAC”). ECF No. 46. On December 22, 2022, Defendants filed an answer to Plaintiff’s SAC,

and asserted the same counterclaims. ECF No. 80. On December 23, 2022, Plaintiff filed a

motion for summary judgment on Defendants’ counterclaims of copyright invalidity, tortious

interference with economic advantage, and false advertising. ECF No. 81. On January 20, 2023,

Defendants filed an opposition, and Plaintiff shortly thereafter filed a reply. ECF Nos. 84, 88.

LEGAL STANDARD

Summary judgment is appropriate “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). In other words, a court should grant summary judgment “if the pleadings, depositions,

answers to interrogatories, and admissions on file, together with the affidavits, if any, show that

there is no genuine issue as to any material fact and that the moving party is entitled to a

judgment as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986).2 The

2 Unless noted, case law quotations in this Order accept all alterations and omit all internal

quotation marks, citations, and footnotes.

moving party has the burden of demonstrating that there is no genuine issue of material fact.

Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). “Where the moving party demonstrates the

absence of a genuine issue of material fact, the opposing party must come forward with specific

evidence demonstrating the existence of a genuine dispute of material fact.” Brown v. Eli Lilly &

Co., 654 F.3d 347, 358 (2d Cir. 2011). In deciding a summary judgment motion, any

ambiguities and inferences drawn from the facts must be viewed in the light most favorable to

the nonmoving party. LaFond v. Gen. Physics Servs. Corp., 50 F.3d 165, 171 (2d Cir. 1995).

DISCUSSION

I. Defendants’ Counterclaim for Copyright Invalidity Is Dismissed

Defendants seek a declaration pursuant to 28 U.S.C. §§ 2201–2202 that JBrick’s

Copyright Registrations are invalid and unenforceable. ECF No. 80 at 38. Defendants argue that

Plaintiff’s Second Holy Temple Product fails “to exhibit sufficient creativity or originality to be

entitled to copyright protection or registration.” Id. Plaintiff argues that it is entitled to summary

judgment on Defendants’ copyright invalidity counterclaim because Defendants have produced

no evidence that support their allegations that Plaintiff’s Second Holy Temple Product is not

original. ECF No. 81 at 5–6.

“In a case of actual controversy within its jurisdiction . . . any court of the United States,

upon the filing of an appropriate pleading, may declare the rights and other legal relations of any

interested party seeking such declaration, whether or not further relief is or could be sought.” 28

U.S.C. § 2201(a). “Courts may entertain declaratory judgment counterclaims in suits for

intellectual property infringement where the counterclaims seek a declaration of invalidity.”

Beverly Hills Teddy Bear Co. v. Best Brands Consumer Prods., Inc., No. 19-cv-3766, 2021 WL

2534000, at *7 (S.D.N.Y. June 21, 2021).

Under the Copyright Act of 1976, a copyright registration creates a rebuttable

presumption that the copyright is valid. See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir.

1997) (“A certificate of copyright registration is prima facie evidence that the copyright is valid.

Moreover, possession of a registration certificate creates a rebuttable presumption that the work

in question is copyrightable.”). The presumption of validity may be rebutted “where other

evidence casts doubt on the question.” Id. (emphasis in original). In other words, given that

JBrick possesses the Copyright Registrations, the burden shifts to Defendants to come forward

with “evidence that the work[s] [were] copied from the public domain.” Id. The Court finds that

Defendants have failed to meet their burden.

“Typically, when the originality of a copyrighted work is at issue, it becomes a question

of fact for the jury to resolve.” King-Devick Test Inc. v. NYU Langone Hospitals, No. 17-cv-

9307, 2019 WL 78986, at *4 (S.D.N.Y. Jan. 2, 2019). However, “a court may resolve the

question of originality as a matter of law at the summary-judgment stage if the evidence is such

that no reasonable juror could disagree as to whether or not the work in question is sufficiently

creative to warrant copyright protection.” Id. Defendants argue that because information

concerning the Second Holy Temple is in the public domain, Plaintiff’s copyrighted works are

not original. As a result, Defendants contend that Plaintiff’s Second Holy Temple Product can

be copied and used in derivative works. ECF No. 84 at 4. Defendants further argue that a

“historically accurate replication does not constitute a new original work.” Id. at 5. Plaintiff

responds that: (i) there is no evidence to support that Plaintiff’s depiction of the Second Holy

Temple is in the public domain; (ii) there is no evidence that Plaintiff’s depiction is a historically

accurate replication because the Second Holy Temple was destroyed in 70 C.E. and there are no

images from before the building was destroyed; and (iii) in order to create the Second Holy

Temple Product, Mr. Kasowitz read numerous “written textual descriptions and translated words

into a 3D sculpture,” further supporting its originality. ECF No. 88 at 2–4.

As discussed previously, the presumption of copyright validity may be rebutted “where

other evidence casts doubt on the question.” Fonar Corp., 105 F.3d at 104 (emphasis in

original). Both parties agree that (i) JBrick owns the Copyright Registrations, ECF No. 72-1 at

3, and that (ii) “the evidence establishes that [JBrick’s] founder . . . studied historical teachings

for three years to accurately depict the [Second Holy Temple] in [JBrick’s] . . . replica.” ECF

No. 84 at 5. Defendants provide no evidence to rebut the presumption of validity of the

Copyright Registrations other than arguments that “[a]ll of the [Second] Holy Temple Product’s

elements are derived from factual and historical research.” ECF No. 84 at 5. “The sine qua non

of copyright is originality. To qualify for copyright protection, a work must be original to the

author. Original, as the term is used in copyright, means only that the work was independently

created by the author (as opposed to copied from other works), and that it possesses at least some

minimal degree of creativity.” Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 143 (2d Cir.

1998). Defendants do not provide any evidence that the work had been copied from the public

domain. In fact, in response to Plaintiff’s request for production of documents “that form the

basis for or to support or refute the assertion . . . that the [Second Holy Temple Product] is an

unoriginal rendition of the [Second] Holy Temple, or that the set would not be copyrightable

because it is based on known public domain elements,” Defendants identified four written texts.

ECF No. 72-1 at ¶ 22. “A copyright is invalid only if the subject work shows no originality —

that is, if the copyrighted work is in no way a distinguishable variation on something already in

the public domain.” MMS Trading Co. Pty Ltd. v. Hutton Toys, LLC, No. 20-cv-1360, 2021 WL

1193947, at *6 (E.D.N.Y. Mar. 29, 2021). The Court finds that no reasonable juror could

disagree that Plaintiff’s Second Holy Temple Product, which both parties agree is based on a

translation of research, analysis and interpretation of written Jewish religious texts into a 3D

sculpture of a structure destroyed in 70 C.E., is sufficiently creative to warrant copyright

protection. See King-Devick Test Inc., 2019 WL 78986, at *4; see also ECF No. 72-2 at 3.

Because Defendants provide no evidence to rebut the presumption of originality, Plaintiff is

therefore entitled to summary judgment on Defendants’ copyright invalidity counterclaim.3

II. Defendants’ Counterclaim for Tortious Interference with Prospective Economic

Advantage Is Dismissed

Plaintiff contends that Defendants cannot prove all of the elements of their counterclaim

for tortious interference with prospective economic advantage, and therefore it is entitled to

summary judgment. ECF No. 81 at 11–12. Defendants respond that issues of genuine material

fact remain with respect to whether Plaintiff’s actions damaged Defendants’ business

relationships with their customers. ECF No. 84 at 10.

“Under New York law, to state a claim for tortious interference with prospective

economic advantage, the plaintiff must allege that[:] (1) it had a business relationship with a

3 Plaintiff seemingly also seeks summary judgment on Defendants’ affirmative defenses of

invalidity of copyright, the doctrine of merger and the doctrine of scenes a faire. ECF No. 81 at

5. Plaintiff argues that these affirmative defenses seek “to rebut [Plaintiff’s] presumption of

[copyright] validity.” Id. In light of the dismissal of Defendants’ counterclaim for copyright

invalidity, the Court dismisses Defendants’ affirmative defense for invalidity of copyright.

However, the affirmative defenses of the doctrine of merger and the doctrine of scenes a faire

can presumably be used to defend a copyright infringement claim and are therefore not

dismissed. ECF No. 46 ¶¶ 37–42. “The scenes a faire doctrine refers to unprotectible elements

that flow from a work’s theme rather than from an author’s creativity.” Point 4 Data Corp. v.

Tri-State Surgical Supply & Equip., Ltd., No. 11-cv-726, 2013 WL 4409434, at *18 n.32

(E.D.N.Y. Aug. 2, 2013). “[I]f a work copies the original way in which the author has selected,

coordinated, and arranged these unprotectable elements to such an extent that the copying work

is substantially similar to the expression of ideas and total concept and overall feel of the copied

work, infringement can occur.” Williams v. A&E Television Networks, 122 F. Supp. 3d 157, 162

(S.D.N.Y. 2015). “The merger doctrine . . . limits what aspects of work can be protected by

copyright law.” Point 4 Data Corp., 2013 WL 4409434, at *18 n.31. “[I]n the Second Circuit,

the merger doctrine relates to infringement, not copyrightability.” Int’l Code Council, Inc. v.

UpCodes, Inc., No. 17-cv-6261, 2020 WL 2750636, at *20 (S.D.N.Y. May 27, 2020).

third party; (2) the defendant knew of that relationship and intentionally interfered with it; (3) the

defendant acted solely out of malice, or used dishonest, unfair, or improper means; and (4) the

defendant’s interference caused injury to the relationship.” Kirch v. Liberty Media Corp., 449

F.3d 388, 400 (2d Cir. 2006). “Courts dismiss tortious interference claims that fail to allege any

one of these elements.” Camelot SI, LLC v. ThreeSixty Brands Grp. LLC, 632 F. Supp. 3d 471,

482–83 (S.D.N.Y. 2022) (emphasis added).

Defendants allege that they had business relationships with several third-party vendors

and that Plaintiff interfered by emailing these vendors “claim[ing] that [their] advertising of

[Chazak Kinder’s] Holy Temple Model Set violated [JBrick’s] intellectual property rights.” ECF

No. 80 at 39–40. Because of Plaintiff’s email notices, these third-party vendors allegedly

stopped selling Chazak Kinder’s “Holy Temple Model Set” product. Id. Plaintiff argues that

with the exception of the first element, “the record is entirely devoid of evidence demonstrating

the remaining elements of tortious interference.” ECF No. 81 at 10. Plaintiff contends that it did

not act “solely out of malice” because as a copyright owner, it has the right to enforce its

copyright against infringement. Id. at 10–11 (“JBrick’s action of notifying those entities about

their infringement was warranted, well within JBrick’s rights, and justifies JBrick’s act of

sending these notices.”). The Court finds that Defendants have failed to establish that Plaintiff

“acted solely out of malice, or used dishonest, unfair, or improper means.” Kirch, 449 F.3d at

400 (emphasis added).

Both parties agree that JBrick owns a copyright for its Second Holy Temple Product.

ECF No. 72-1 at 3. Defendants dispute whether such work is an “original sculpture,” and

whether they infringed on the copyright, but admit that JBrick nevertheless owns the copyright.

Id. Defendants allege that Plaintiff sent “copyright takedown requests” to several of Defendants’

vendors, claiming that the vendors’ advertising of Chazak Kinder’s Holy Temple Model product

violated JBrick’s “intellectual property rights.” ECF No. 80 at 39. “As a general rule, a

defendant’s conduct must amount to a crime or an independent tort in order to constitute tortious

interference with a prospective (non-contractual) economic advantage. . . . The wrongful means

element sets a high bar.” Prepaid Ventures, Ltd. v. Paul Compton, No. 18-cv-2102, 2022 WL

18859053, at *14 (E.D.N.Y. Dec. 21, 2022). “Seeking to protect a copyright by alerting a third

party that the copyright is being infringed constitutes a justification defense” to tortious

interference with prospective economic advantage. P. Kaufmann, Inc. v. Americraft Fabrics,

Inc., 232 F. Supp. 2d 220, 225 (S.D.N.Y. 2002). Defendants have provided no evidence that

Plaintiff alerted third parties for any reason, other than to protect its copyright. See, e.g., ECF

No. 84-4 (email from JBrick’s counsel to third-party vendor regarding copyright infringement).

Accordingly, the Court dismisses Defendants’ counterclaim for tortious interference with

prospective economic advantage. P. Kaufmann, Inc., 232 F. Supp. 2d at 225 (dismissing

counterclaim for tortious interference with prospective economic advantage because plaintiff’s

“actions in notifying the stream-of-commerce customers of the potential infringement were

justified”).

III. Defendants’ Counterclaim for False Advertising Is Dismissed

Defendants contend that Plaintiff is falsely advertising that its Second Holy Temple

Product is “Made in the USA!” in violation of section 43(a) of the Lanham Act. ECF No. 80 at

40–41. Plaintiff argues that Defendants “have failed to produce any evidence, nor provided any

testimony, demonstrating that they have been injured as a result of [Plaintiff’s] alleged

misrepresentation.” ECF No. 81 at 13.

Section 43(a) of the Lanham Act “prohibits the use of any false or misleading description

of fact in promotional statements that misrepresents the nature, characteristics, or qualities of

products or services.” Int’l Code Council, Inc. v. UpCodes Inc., 43 F.4th 46, 56 (2d Cir. 2022);

see also 15 U.S.C. § 1125(a)(1). To state a claim under Section 43(a) of the Lanham Act, a

plaintiff must plausibly allege: (i) the falsity of the challenged statement; (ii) the materiality of

the misrepresentation, “i.e., that the false or misleading representation involved an inherent or

material quality of the product”; (iii) “that the defendant placed the false or misleading statement

in interstate commerce”; and (iv) “that the plaintiff has been injured as a result of the

misrepresentation, either by direct diversion of sales or by a lessening of goodwill associated

with its products.” Int’l Code Council, Inc., 43 F.4th at 56. “To satisfy the injury requirement, a

false advertising claimant must demonstrate injury by way of lost sales or damage to business

reputation. The injury must be economic or reputational injury flowing directly from the

deception wrought and such injury occurs when deception of consumers causes them to withhold

trade from the plaintiff.” C.M.B. Prods., Inc. v. SRB Brooklyn, LLC, No. 19-cv-2009, 2022 WL

2704506, at *10 (E.D.N.Y. July 12, 2022). “[W]here . . . a misleading advertisement does not

make comparative claims about a direct competitor, a plaintiff must demonstrate actual injury

and causation.” Dependable Sales & Serv., Inc. v. TrueCar, Inc., 394 F. Supp. 3d 368, 374

(S.D.N.Y. 2019).

Both parties agree that “Defendants cannot specify any damages they purportedly

incurred as a result of Plaintiff’s alleged false advertising” that the Second Holy Temple Product

was made in the United States. ECF No. 72-1 at 26. Both parties further agree that “Defendants

have no evidence of any person purchasing a product from Plaintiff based on Plaintiff’s alleged

false statements, nor do they have evidence that any person decided not to purchase products

from Defendants because of Plaintiff’s allegedly false claim that its products were made in the

U.S.A.” Id. Accordingly, Defendants fail to satisfy the fourth element of their false advertising

counterclaim, and it must therefore be dismissed. See C.M.B. Prods., Inc., 2022 WL 2704506, at

*10 (finding that moving party was entitled to summary judgment because claimant failed to

demonstrate injury); Dependable Sales & Serv., Inc., 394 F. Supp. 3d at 375 (granting summary

judgment and concluding that “false-advertising plaintiff who does not come forward with

evidence of an injury proximately caused by defendant’s advertisements does not have a

statutory interest in deterring willful violations of the Lanham Act”).

CONCLUSION

For the foregoing reasons, the Court GRANTS Plaintiff’s motion for summary judgment

and dismisses Defendants’ counterclaims for copyright invalidity, tortious interference with

prospective economic advantage, and false advertising.

SO ORDERED.

/s/ Hector Gonzalez

HECTOR GONZALEZ

United States District Judge

Dated: Brooklyn, New York

September 21, 2023