# JBrick, LLC v. Chazak Kinder, Inc.

> District Court, E.D. New York · September 21, 2023

URL: https://www.frixlaw.com/law-library/cases/10310438

## Case

- **Court:** District Court, E.D. New York
- **Decided:** September 21, 2023
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10310438. Public record. Not legal advice.