Opinion

Court: District Court, E.D. New York
Filed: Apr 22, 2026
Cited by: 0 cases
Authority: More cited than 41.2%

The opinion

UNITED STATES DISTRICT COURT CLERK

EASTERN DISTRICT OF NEW YORK 4/22/2026

--------------------------------------------------------------X

U.S. DISTRICT COURT

MULTI-STATE PARTNERSHIP FOR

EASTERN DISTRICT OF NEW YORK

PREVENTION, LLC,

LONG ISLAND OFFICE

Plaintiff,

MEMORANDUM

AND ORDER

-against-

24-CV-00013 (JMW)

SAMUEL KENNEDY, and KENNEDY

TECHNOLOGY MK,

Defendants.

--------------------------------------------------------------X

SAMUEL KENNEDY,

Counterclaim Plaintiff,

-against-

MULTI-STATE PARTNERSHIP FOR

PREVENTION, LLC and MARYLAND

PARTNERSHIP FOR PREVENTION, INC.,

Counterclaim Defendants.

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A P P E A R A N C E S:

Jordan Fletcher

Fletcher Law, PLLC

234 Fifth Avenue, 2nd Floor

New York, NY 10001

Attorney for Counterclaim Defendants

Kathleen Rose Fitzpatrick

KRF Legal

249 Smith St, #118

Brooklyn, NY 11231

-and-

Peter Brown

Peter Brown & Associates PLLC

260 Madison Avenue, 16th Floor

New York, NY 10016

Attorneys for Counterclaim Plaintiffs

WICKS, Magistrate Judge:

Plaintiff Multi-State Partnership for Prevention, LLC ( “MSPP”) originally commenced

this declaratory judgment action against Defendants Samuel Kennedy (“Kennedy”) and Kennedy

Technology MK (“KTMK” and collectively, the “Defendants”) for invalidity of copyright, non-

infringement of copyright, trademark infringement, breach of contract, defamation and tortious

interference, arising out of Plaintiff's development of computer software program, PrepMod,

developed in the early stages of the COVID-19 pandemic. (See generally, ECF No. 22.)

Thereafter, the parties sought to amend their pleadings, which was granted by the Court. (ECF

No. 105.) Now before the Court is Plaintiff/Counterclaim Defendants MSPP and Maryland

Partnership for Prevention, Inc. (“MPP”) (collectively, the “Counterclaim Defendants”) Motion

to Dismiss the Counterclaims asserted by Defendant/Counterclaim Plaintiff Kennedy’s Amended

Counterclaims (“ACC”) (ECF Nos. 124-126), Counterclaim Plaintiff’s opposition (ECF No.

131), and Counterclaim Defendants’ reply (ECF No. 134). For the reasons set forth below,

Counterclaim Defendants’ Motion to Dismiss (ECF No. 124) is GRANTED in part and

DENIED in part.

RELEVANT BACKGROUND1

In March 2020, Kennedy was contacted about developing software for MSPP. (See ECF

No. 107 at ¶ 89.) Kennedy was then put in contact with Tiffany Tate (“Tate”), the owner and

1 Familiarity with this action is assumed. The Court points the reader to ECF No. 105 for the factual and

procedural backgrounds in this matter. However, the Court outlines the factual background alleged in the

Amended Answer with Counterclaims. (ECF No. 107.)

single member of MSPP, who explained that she was looking for improvements to be made to

“MSPP software called ClinicWizard and ReadiConsent (the MSPP Software) in anticipation of a

nationwide effort to vaccinate against COVID-19.” (Id. at ¶¶ 83, 89-90.) After reviewing the

MSPP Software, Kennedy discovered several security issues and found the software to be

“poorly structured and unusable.” (Id. at ¶ 92.) Tate was aware of these issues prior to speaking

with Kennedy, and he explained that he will need to write a new program to meet MSPP’s goals.

(Id. at ¶¶ 93-94.) He agreed to develop a software called PrepMod for at a weekly rate of

$10,000, which was later reduced by Kennedy to $7,500. (Id. at ¶ 95.) Tate and Kennedy

discussed the terms, but never reached a formal, written contract (Id. at ¶ 97.)

Kennedy retained KTMK to complete the PrepMod project, and the KTMK employees

together with Kennedy himself began work on April 13, 2020. (Id. at ¶¶ 98-99.) Kennedy and

KTMK worked from April to August of 2020 to complete the PrepMod software, but during the

course of the project, the scope of the work was frequently changed by MSPP. (Id. at ¶¶ 102-03.)

Kennedy sent MSPP three invoices which totaled “$135,000, reduced to $90,000: (a) May 1,

2020, for $15,000; (b) August 3, 2020, for $105,000 reduced to $60,000; and (c) August 17,

2020, for $15,000.” (Id. at ¶ 100.) MSPP paid a total of $30,000 of the $90,000. (Id. at ¶ 101.)

Between the scope of the work changing, and the failure to pay the invoices, the relationship

between Kennedy and MSPP fell apart in August 2020. (Id. at ¶ 104.) On August 17, 2020,

Kennedy formally ended the work and requested MSPP to pay the outstanding $60,000 before he

assigned the copyright. (Id. at ¶ 105.) He explained to Tate that for MSPP to own the copyright

of any derivative works using the PrepMod code, it needed to be assigned to them, but MSPP

refused to pay the unpaid balance. (Id. at ¶¶ 106-07.)

After August 2020, KTMK received copyright assignments, and later, on April 23, 2022,

the US Copyright Office issued a copyright for the PrepMod software. (Id. at ¶¶ 108-09.) On

April 28, 2022, KTMK assigned this copyright to Kennedy. (Id. at ¶ 110.) In late August 2020,

MPP entered a resale agreement with SHI International, Inc. (“SHI”), granting SHI a “license to

purchase, resell market, and distribute the PrepMod software of a derivative thereof, among other

things.” (Id. at ¶ 111.) SHI paid MPP $300,000 pursuant to the agreement, and MPP never

disclosed that it did not own PrepMod, nor that it was the agent of MSPP. (Id. at ¶¶ 112-13.) SHI

and MPP entered a second resale agreement, and SHI then contracted to license PrepMod with

both the Massachusetts Department of Public Health and the Virginia Department of Health. (Id.

at ¶¶ 114-15.) MSPP and/or MPP themselves “licensed the PrepMod software or a derivative

thereof to between twenty-seven (27) and forty-four (44) institutions” without Kennedy’s

authorization. (Id. at ¶ 117.) MPP reported $471,022.00 in program service revenue in 2020,

$4,583,560.00 in 2021, $975.00 in 2022, and $6,556,715.00 in 2023. (Id. at ¶¶ 118-21.)

Therefore, MPP generated revenue through the unlawful licensing and distributing of the

software. (Id. at ¶ 122.)

THE LEGAL FRAMEWORK

“When presented with both a motion under 12(b)(1) to dismiss for lack of subject matter

jurisdiction and a motion under Rule 12(b)(6) to dismiss for failure to state a claim upon which

relief can be granted, the first issue is whether the Court has the subject matter jurisdiction

necessary to consider the merits of the action.” Zapotocky v. CIT Bank, N.A., 587 B.R. 589, 592

(S.D.N.Y. 2018). To prevail against a motion to dismiss for lack of subject matter jurisdiction

under 12(b)(1), the “plaintiff bears the burden of proving the Court’s jurisdiction by a

preponderance of the evidence.” Makarova v. United States, 201 F.3d 110, 113 (2d Cir. 2000)

(citing Fed. R. Civ. P. 12(b)(1)) (“A case is properly dismissed for lack of subject matter

jurisdiction under Rule 12(b)(1) when the district court lacks the statutory or constitutional

power to adjudicate it.”). In considering such a motion, the Court generally “must accept the

material factual allegations in the complaint as true[,]” however, it is not required to “draw all

reasonable inferences in the plaintiff's favor.” Cohen v. Saraya USA, Inc., No. 23-CV-8079

(NJC)(JMW), 2025 WL 581566, at *9 (E.D.N.Y. Jan. 20, 2025), report and recommendation

adopted-, No. 23-CV-8079 (NJC) (JMW), 2025 WL 580369 (E.D.N.Y. Feb. 23, 2025) (quoting

Zapotocky, 587 B.R. at 592).

To survive a motion to dismiss under Rule 12(b)(6), a 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). A claim is facially plausible “when the plaintiff pleads factual content that

allows the court to draw the reasonable inference that the defendant is liable for the misconduct

alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); see also CompassCare v. Hochul, 125

F.4th 49, 56-57 (2d Cir. 2025) (quoting Krys v. Pigott, 749 F.3d 117, 128 (2d Cir. 2014) (“a

complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is

plausible on its face.”)).

“The plausibility standard is not akin to a probability requirement, but it asks for more

than a sheer possibility that a defendant has acted unlawfully.” Annabi v. New York Univ., No. 24-

CV-2601, 2025 WL 1066083, at *1 (2d Cir. Apr. 9, 2025) (quoting Iqbal, 556 U.S. at 678). To

that end, complaints are properly dismissed where, as a matter of law, “the allegations in a

complaint, however true, could not raise a claim of entitlement to relief.” Twombly, 550 U.S. at

558. When considering a motion to dismiss under 12(b)(6), the Court must assume all well-

pleaded facts to be true, “drawing all reasonable inferences in favor of the plaintiff.” Koch v.

Christie’s Int’l PLC, 699 F.3d 141, 145 (2d Cir. 2012). However, this tenet does not apply to

legal conclusions or “threadbare recitals of a cause of action’s elements.” Iqbal, 556 U.S. at

663. Pleadings that offer only “labels and conclusions” or “a formulaic recitation of the elements

of a cause of action will not do.” Twombly, 550 U.S. at 555. More is required. Put differently,

“while a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual

allegations, a plaintiff's obligation to provide the grounds of his entitlement to relief requires

more than labels and conclusions. … Factual allegations must be enough to raise a right to relief

above the speculative level. To survive dismissal, a complaint must provide enough facts to state

a claim to relief that is plausible on its face.” Go New York Tours Inc. v. Gray Line New York

Tours, Inc., No. 24-cv-2392, 2025 WL 947083, at *2 (2d Cir. Mar. 27, 2025) (quoting Mayor &

City Council of Baltimore v. Citigroup, Inc., 709 F.3d 129, 135 (2d Cir. 2013)).

It is under this legal framework, that the Court analyzes the instant motion.

DISCUSSION

Kennedy’s counterclaims include a claim for copyright infringement and a claim for

breach of contract. (See ECF No. 107 at 17-20.) Counterclaim Defendants move to dismiss the

counterclaims on the grounds that (i) Kennedy’s infringement claim is precluded because it fails

to sufficiently allege compliance with the Copyright Act § 411(a)’s registration requirement, (ii)

the contract claim is barred by Maryland’s three-year statute of limitations, (iii) the copyright

infringement claim if not fully precluded, is time barred as to MPP, (iv) Kennedy lacks standing

as the infringement allegations “relate to alleged infringements of certain third-party software

developers’ rights”, and (v) Kennedy’s “demand for statutory damages and attorney’s fees must

be stricken or dismissed because Kennedy is not eligible for either form of relief pursuant to 17

U.S.C. § 412.” (ECF No. 125 at 1.)

Kennedy argues against dismissal on the grounds that (1) the infringement claim does

comply the Copy Right Act § 411(a)’s registration requirement, and the Counterclaim

Defendants waived this argument pursuant to this Court’s Individual Practice Rule 3(d)(1), (2)

the claims against MPP are not time barred because MPP is the alter-ego of MSPP and the claims

relate back to the date of the initial complaint, (3) the contract claims are not time barred because

the claim did not begin to run until March 1, 2021 and regardless, the court can toll the

limitations for equitable reasons, (4) standing exists and should be decided at the summary

judgment stage, and it would be manifest injustice to partially dismiss the copyright claims.

(ECF No. 131 at 6-15.)

I. Choice of Law

The parties stipulated, that all causes of action shall be governed by the laws of the

Fourth Circuit Court of Appeals and the State of Maryland. (See ECF No. 42; Electronic Order

dated 2/09/2024.) Moreover, pursuant to that stipulation, Maryland law governs all substantive

determinations of law in this case, including all claims and counterclaims. (ECF No. 42 at 2.)

(“[A]ll substantive determinations of law, including any and all causes of action and any

counterclaims the Parties may file, shall be governed by and construed in accordance with the

laws of the Fourth Circuit Court of Appeals and State of Maryland.”) For procedural matters, the

Parties agreed to defer to the Court. (See id.) (“[T]he Parties shall defer to the Court for all

procedural matters.”) Counterclaim Defendants argue that the pleading standards, and 411(a) of

the Copyright Act is a precondition to suit thereby making it a procedural issue. (ECF No. 125 at

5-6, 12 nn. 4-5, 7.) The Court agrees that pleading standards are procedural and therefore

governed by federal procedure rules. See Eng v. City of New York, 715 Fed. App’x 49, 52 (2d Cir.

2017). However, as for alleging any elements or finding if a claim is adequately pled, and for any

statute of limitation arguments, the Court will follow Maryland law as well as the Fourth

Circuit.2

II. Copyright Infringement

To establish a copyright infringement claim, “a plaintiff must prove that it owned a valid

Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d 532, 537 (4th Cir. 2015) (quoting

Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 801 (4th Cir. 2001)). Copyright

infringement claims do not have a heightened pleading standard, and Plaintiff only has to plead

that he owns a valid copyright, which was infringed upon. See CoStar Realty Info., Inc. v. Field,

612 F. Supp. 2d 660, 674 (D. Md. 2009). The Copyright Act states that “no civil action for

infringement of the copyright in any United States work shall be instituted until preregistration or

registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. §

411(a). Thus, registration of a copyright is considered “akin to an administrative exhaustion

requirement that the owner must satisfy before suing to enforce ownership rights.” Fourth Est.

Pub. Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296, 300 (2019). The statute of limitations

under the Copyright Act is three years after the claim accrued. Lyons P’ship, L.P., 243 F.3d at 798

(citing 17 U.S.C. §§ 502, 504). “A cause of action for copyright infringement accrues when one

2 While this case is brought under federal question jurisdiction, for purposes of explaining substantive

versus procedural, the Court outlines the differences as if this were a case brought under diversity

jurisdiction. Likewise, other state claims are brought under supplemental jurisdiction. (See ECF No. 106 at

¶¶ 16-17.)

Classification of a law as substantive or procedural for Erie purposes is sometimes a

challenging endeavor, but perhaps even more confounding is the fact that a state's

procedural rules under its own choice-of-law principles can be substantive for purposes of

federal diversity jurisdiction. For instance, a state court considering whether to apply its

own statutes of limitations to claims governed by the laws of other states, may apply its

statutes of limitations as a procedural matter. A federal court, however, may apply the same

statute of limitations because it is “substantive” within the meaning of Erie.

Liberty Synergistics Inc. v. Microflo Ltd., 718 F.3d 138, 152 (2d Cir. 2013) (internal citations and

quotation marks omitted).

has knowledge of a violation or is chargeable with such knowledge.” Hotaling v. Church of Jesus

Christ of Latter-Day Saints, 118 F.3d 199, 202 (4th Cir. 1997) (quoting Roley v. New World

Pictures, Ltd., 19 F.3d 479, 481 (9th Cir. 1994)).

Kennedy has standing to bring the copyright infringement claims. “Only the copyright

owner, or the owner of exclusive rights under the copyright, at the time the alleged acts of

infringement occur, has standing to bring an action for infringement of those rights.” X-It Prods.,

LLC v. Walter Kidde Portable Equip., Inc., 227 F. Supp. 2d 494, 527 (E.D. Va. 2002) (citing

ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d. 971, 980 (2d Cir. 1991)). A party

bringing a claim for copyright infringement satisfies the § 411(a) registration prerequisite if the

Sunrise Assisted Living, Inc., 261 F. Supp. 2d 502, 509 (E.D. Va. 2003). KTMK received

at ¶¶ 108-109.) As stated in the Amended Answer with Counterclaims, Kennedy received his

assignment from KTMK on April 28, 2022. (Id. at ¶ 110.) (“KTMK assigned the PrepMod

valid copyright and the exclusive rights under it, Kennedy has standing to bring a claim for

Kennedy first pled copyright infringement against MSPP on March 1, 2024. (See ECF

No. 48.) However, his first time pleading copyright infringement against MPP was on January

23, 2026. (See ECF No. 107.) The statute of limitations for copyright claims is “three years after

the claim accrues.” Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 202

(4th Cir. 1997). And a claim accrues when “one has knowledge of a violation or is chargeable

with such knowledge.” Lyons P’Ship, L.P., 243 F.3d at 796 (quoting Hotaling, 118 F.3d at 202)

(internal quotation marks and citations omitted). Here, Kennedy asserts that he did not discover

the infringing activity by MPP “until February 2025, when it received SHI’s subpoena

responses.” (ECF No. 131 at 12.) Applying the claim accrual principle from Lyons Partnership,

L.P., Kennedy’s claims would not time barred. Additionally, the claims against MPP relate back

to the date of the initial complaint. Federal Rule of Civil Procedure 15 allows a pleading to relate

back to the date of the original pleading where (1) the claim arises out of the conduct,

transaction, or occurrence in the original pleading; (2) the party received notice, within the Rule

4(m) service period, of the action such that it will not be prejudiced by defending it; and (3) the

party “knew or should have known that the action would have been brought against it, but for a

mistake….” Fed R. Civ. P. 15(c)(1)(B)-(C). Here, the claims of copyright infringement arise out

of the same conduct as the original counterclaim, the party was on notice when the original

counterclaim was brought against MSPP, because Tate owns both MSPP and MPP, and, finally,

MPP should have known the action would be brought against them but for a mistake, as it

licensed PrepMod to SHI. (ECF No. 107 at ¶¶ 83-84, 111.) However, importantly, Kennedy

includes these pertinent allegations in the opposition, but not in the pleadings. His discovery of

the infringement in February 2025 is absent from the Amended Answer with Counterclaims. As a

result, this claim as to MPP must be dismissed without prejudice with ability to amend the

pleading either by stipulation or by the filing of a motion for leave to amend.

The Court does not analyze the elements of copyright infringement as to MPP for the

reasons stated above. However, as to MSPP, the Court has reviewed the prior amended answer

with counterclaim, ECF No. 48, which includes very similar allegations as the current

counterclaim. To successfully bring a copyright infringement claim, Kennedy must prove that he

owned a valid copyright, and the Defendants copied those original elements. Lyons P’ship, L.P.,

243 F.3d at 801 (“To establish a claim for copyright infringement, a plaintiff must prove that it

owned a valid copyright and that the defendant copied the original elements of that copyright.”).

Here, Kennedy does have a valid copyright infringement claim. He successfully pleads that he is

the owner of a valid copyright and alleges that MSPP infringed on the copyright by licensing the

PrepMod software to multiple State Departments of Health, other government agencies, and

healthcare providers. (ECF No. 107 at ¶¶ 110, 126-133.) Thus, both elements are satisfied.

Accordingly, the copyright infringement claim may proceed as against MSPP only.

III. Breach of Contract

To establish breach of contract, Maryland law requires a plaintiff to “allege with certainty

and definiteness facts showing a contractual obligation owed by the defendant to the plaintiff and

a breach of that obligation by defendant.’” Polek v. J.P. Morgan Chase Bank, N.A., 36 A.3d 399,

416 (Md. 2012) (quoting Cont’l Masonry Co. v. Verdel Constr. Co., 170 A.2d 220, 222 (Md.

1977)); See also RRC Northeast, LLC v. BAA Maryland, Inc., 994 A.2d 430, 442 (Md. 2010) (“a

plaintiff need only allege the existence of a contractual obligation owed by the defendant to the

plaintiff, and a material breach of that obligation by the defendant.”). Conclusory statements are

insufficient to support a breach of contract complaint. Polek, 36 A.3d at 409. Furthermore, when

considering whether allegations are adequately pled, ambiguities are “construed against the

pleader.” See RRC Northeast, LLC, 994 A.2d at 440. Under Maryland law, the statute of

limitations to breach of contract claims is three years. Patriot Constr., LLC v. VK Electrical

Servs., LLC, 290 A.3d 1108, 1119 (Md. App. Ct. 2023) (citation omitted); Murphy v. Liberty

Mutual Ins. Co., 274 A.3d 412, 430 n.37 (Md. 2022). The burden of proving the cause of action

accrued prior to the statute of limitations falls on the party raising it as a defense. Patriot Constr.,

LLC, 290 A.3d at 1119 (citing Newell v. Richards, 594 A.2d 1152 (1991)).

Here, the breach of contract claim is time-barred. The claim was first filed by Kennedy

on March 1, 2024. (ECF No. 48.) Therefore, under Maryland law, any claims of breach prior to

March 1, 2021, would be time-barred. See Patriot Constr., LLC, 290 A.3d at 1119 (“Contract

actions are generally governed by Maryland’s three-year statute of limitations.”); Kumar v.

Dhanda, 17 A.3d 744, 747 (Md. Ct. Spec. App. 2011) (“The general statute of limitations for a

civil action in Maryland is three years.”). The invoices sent from Kennedy to Tate contain no

indication of any particular due date for the payments to have been made.3 (ECF No. 61-3.) With

no written contract agreement between Kennedy and Tate, the invoices could be treated as a

contract. Sys. 4, Inc. v. Westfield Prop. Mgmt. LLC, No. 2755, Sept. Term, 2020, 2020 WL

2511435, at *6 (Md. Ct. Spec. App. May 15, 2020) (“Both parties manifested their assent to the

2016 Contract by performing in accordance with it – System 4, for example, by demanding

payment; and Westfield, by making a payment.”). The dates of the unpaid invoices are August 3,

2020, and August 17, 2020. (Id.) Additionally, an email from Tate to Kennedy on August 21,

2020 indicates that she planned to pay the invoices on September 4, 2020. (ECF No. 106-1) (“I

will make a final payment on September 4 (our regular payday) that is reflective of the work

through your departure.”) The Court has to assume either that payment of the invoices was due

on the actual dates of the invoices, or on the September 4th date that Tate asserts in the email.

Either way, the resulting accrual date would lead to this claim falling outside of the statute of

limitations and being time-barred. “In Maryland, the cause of action accrues when the contract is

breached, and when ‘the breach was or should have been discovered.’” Boyd v. Bowen, 806 A.2d

3 Notably, neither party has pointed the Court to the relevant docket entries or documents integral to the

breach of contract claim. Rather, the Court sua sponte reviewed the docket and found the relevant entries

to get a better understanding on when, if any, the date of accrual began.

314, 333 (Md. Ct. Spec. App. 2002). By asserting in the email that payment would be made on

September 4, 2020, Kennedy should have discovered the breach when that payment did not

come. While Kennedy argues that the claim began to run on March 1, 2021, there is nothing to

support this claim besides his own assertions that it would be a reasonable accrual date for the

Court to find. (See ECF No. 131 at 12.) Indeed, Kennedy does not dispute that “the invoices

themselves have no due date,” but avers that “the actual date of MSPP’s breach is uncertain.”

(Id.) That is simply not enough to then randomly apply a date of March 1, 2021.

Accordingly, the breach of contract counterclaim is time barred and therefore, dismissed.

IV. Statutory Damages & Attorneys’ Fees

Counterclaim Defendants lastly argue that the relief sought by Counterclaim Plaintiffs to

recover statutory damages and attorney’s fees should be denied. (See ECF Nos. 125 at 17; 134 at

12.) However, Counterclaim Plaintiffs state that the pre-motion conference letters nor any prior

submission included this argument and therefore should be denied. (ECF No. 131 at 8.) Or, in the

alternative, such a determination is not appropriate at the pleading stage. (Id.) The Amended

Answer with Counterclaims seeks “damages pursuant to 17 U.S.C. § 504(b) totaling the profits

MSPP received by virtue of its infringement in an amount to be determined at trial but no less

than $11,613,242.00, or in the alternative, statutory damages as awarded by this Court pursuant

to 17 U.S.C. § 504(c) in an amount up to $150,000 for each infringement; [and] attorneys’ fees

and costs pursuant to 17 U.S.C. § 505.” (ECF No. 107 at 20.)

Counterclaim Defendants correctly point out that the Copyright Act precludes an award

of statutory damages or of attorney's fees in some cases. Specifically, the Act states,

no award of statutory damages or of attorney's fees, as provided by sections

504 and 505, shall be made for--

(1) any infringement of copyright in an unpublished work commenced before the

effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work

and before the effective date of its registration, unless such registration is made

within three months after the first publication of the work.

17 U.S.C. § 412; See also Pacesetter Homes, Inc. v. GBL Custom Home Design, Inc., No. 20-

CV-2478 (GLR), 2021 WL 3633960, at *3 (D. Md. Aug. 17, 2021) (“[S]tatutory damages and

attorneys’ fees are prohibited where a plaintiff does not register its copyright prior to the alleged

infringement or within three months of first publication.”)

Counterclaim Plaintiffs are correct that this argument was not included in the pre-motion

conference and due to that, it should not be considered. (See ECF No. 110.) The Court’s

Individual Practice Rules provide that,

[c]ounsel should note that, in appropriate cases, the pre-motion letter, along with

counsel’s argument at the pre-motion conference, may be construed, at the

discretion of the Court, as the motion itself. Arguments not raised in the pre-motion

letters or during the pre-motion conference shall be deemed waived. See In re Best

Payphones, Inc., 450 F. App'x 8, 15 (2d Cir. 2011) (upholding construction of pre-

motion letter as motion).

(See Rule 3(D)(1).)

However, the Court in its discretion analyzes this final argument. That is because

any damages or fees that Counterclaim Plaintiffs seek would are precluded as the

Registration occurred on April 23, 2022. (ECF No. 107 at ¶ 109.) As alleged, the

infringing conduct began as early as 2020 and thus, the relief sought does not extend to

pre-registration infringement. See LTVN Holdings, LLC v. Odeh, No. 09-CV-789 (CCB),

2010 WL 2612690, at *3 (D. Md. June 25, 2010) (“Under the Copyright Act, statutory

damages and attorney's fees are unavailable because the plaintiffs did not register their

publication.”); see also Bouchat v. Bon-Ton Dep't Stores, Inc., 506 F.3d 315, 330 (4th Cir.

2007) (internal citation and quotations omitted) (“In other words, infringement

commences for the purposes of § 412 when the first act in a series of acts constituting

continuing infringement occurs. This interpretation makes sense because ‘it would be

peculiar if not inaccurate to use the word commenced to describe a single act rather than

the first in a group of acts.”)

Accordingly, Counterclaim Plaintiffs’ request for statutory damages and attorneys’

fees are stricken from the Amended Answer with Counterclaims.

CONCLUSION

Counterclaim Defendants’ Motion to Dismiss (ECF No. 124) is GRANTED in part and

DENIED in part as set forth above. The oral argument previously scheduled for May 29, 2026,

is hereby cancelled.

Dated: Central Islip, New York.

April 22, 2026

S O O R D E R E D:

James M. Wicks

/S/

JAMES M. WICKS

United States Magistrate Judge

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.