IP Law Daily, COPYRIGHT—S.D.N.Y.: Contributory infringement claim survives in professor’s lawsuit against ex-student, (Nov 8, 2024)

By Jonathan Anderson

However, the court said claims for direct copyright infringement and misappropriation of trade secrets were statutorily barred because the suit was filed too late.

The U.S. District Court for the Southern District of New York has dismissed with prejudice claims for direct copyright infringement and misappropriation of trade secrets in a lawsuit brought by a professor against her former student. The court held that the two dismissed claims were barred by statute of limitations. The court held a contributory infringement claim is not time barred and allowed it to survive (Gong v. Savage, No. 1:23-cv-07355-AS (S.D.N.Y. Nov. 4, 2024)).

Background. Plaintiff, Hongmian Gong, a professor at Hunter College, part of the City University of New York (CUNY), alleged that defendant, Lerone Savage, her former student, incorporated her proprietary information into his master’s thesis. Following Savage’s submission of his thesis in 2017, Gong complained to CUNY and argued that publication of the thesis would disclose the proprietary information. CUNY advised Savage to embargo the thesis for three years, which he did. The embargo ended on Aug. 22, 2020, and CUNY made the thesis publicly available.

Gong subsequently registered three copyrights for the proprietary information in August 2021. In August 2023, Gong filed suit, and in December 2023, she sent a takedown notice to CUNY under the Digital Millenium Copyright Act. CUNY removed the thesis from public view on Dec. 23, 2023, pending resolution of the case.

Gong filed a second amended complaint for direct and contributory copyright infringement under the Copyright Act, 17 U.S.C. § 501, and misappropriation of trade secrets under the Defend Trade Secrets Act (DTSA), 18 U.S.C. § 1836(b). Savage moved to dismiss the complaint for failure to state a claim.

Direct copyright infringement claim. First, the court held that because it is clear from the face of the complaint that Gong knew about Savage’s infringement in 2017, her direct copyright infringement claim is barred by the Copyright Act’s three-year statute of limitations. Gong filed the first complaint in the instant case in August 2023, but the statute of limitations expired in 2020. Although Gong argued that she did not know the full extent of Savage’s infringement until the thesis was published, the court said Gong still knew that the subject material was incorporated into the thesis.

Contributory infringement claim. Second, the court held that Gong’s contributory infringement claim survives for now, but Gong will have to marshal evidence at trial to prove that Savage intentionally induced CUNY’s infringement. Gong alleges that CUNY infringed on her copyrights when it made Savage’s thesis available online, and she seeks to hold Savage contributorily liable. The court said this claim is not time barred because Gong did not have a complete and present cause of action for contributory infringement against Savage until CUNY published the thesis online in August 2020.

Trade secrets claim. Third, the court held that because Gong did not file suit until 2023, her trade secrets claim, like the direct copyright claim, is barred by the three-year statute of limitations under the DTSA.

The Case is No. 1:23-cv-07355-AS.

Judge: Subramanian, A.

Attorneys: Albert Wai-Kit Chan (Law Offices of Albert Wai-Kit Chan) for Hongmian Gong. James Decristofaro (James J. Decristofaro, Attorney at Law) for Lerone Savage.

Cases: Copyright TradeSecrets NewYorkNews