August 8, 2019

New York Law Journal / Written by: Harvey M. Stone, Richard H. Dolan

This column reports on several significant representative decisions handed down recently in the U.S. District Court for the Eastern District of New York. Judge Sandra J. Feuerstein granted a company's application for a preliminary injunction restraining the Village of East Rockaway from placing certain restrictions on door-todoor solicitation. Judge Pamela C. Chen dismissed copyright claims because of plaintiffs' failure to meet the Copyright Act's registration requirements. And Judge Nina Gershon granted class certification to diabetic New York City public school students seeking injunctive relief relating to an alleged failure by the City Department of Education to provide adequate medical care.

Commercial Speech Rights-Door-to-Door Solicitation

In Aptive Environmental v. Village of East Rockaway, 19 CV 3365 (EDNY, July 16, 2019), Judge Feuerstein granted a preliminary injunction restraining defendant from enforcing provisions of its Village Code that impose a solicitation curfew, a bond requirement and other restrictions on door-to-door commercial solicitation. Plaintiff is a residential pest control company, selling its services almost exclusively by soliciting door-to-door. According to a branch manager in Long Island, its "unique business model is predicated upon establishing a personal and trusting relationship with its customers" so it can "customize its services" to their homes and individual needs.

During its summer season, plaintiff solicits door-to-door between 10:00 a.m. and dusk, with most sales occurring after 5:00 p.m. because most residents are away from home until then.

Chapter 171 of Article III of the Village Code regulates "Solicitors and Canvassers[.]" Plaintiff challenged §171-18 (the "Solicitation Curfew"), which prohibits entering on private property to solicit before 9:00 a.m. or after 5:00 p.m.; and §171-16 (the "Bond Requirement"), which requires solicitors to file a surety bond and comply with prescribed rules of conduct.

As a result of this lawsuit, defendant imposed a moratorium on issuing solicitation licenses. Plaintiff then amended its complaint by adding a challenge to §171-14 (the "License Requirement"), which prohibits soliciting without a license. Plaintiff claimed that there is now a de facto ban on solicitation.

In its complaint, plaintiff asserted that these Code provisions infringed on its commercial speech rights in violation of the First and Fourteenth Amendments. Here, plaintiff seeks a preliminary injunction restraining enforcement of the Solicitation Curfew and the Bond and License Requirements.

A court may preliminarily enjoin government action taken in the public interest only if the moving party has shown that (1) it faces irreparable harm absent injunctive relief; (2) there is a likelihood of success on the merits; and (3) the public interest favors the injunction. The court should also consider whether the "balance of equities" tips in the movant's favor. Slip op. 8.

As to likelihood of success on the merits, "door-to-door solicitation is a form of expression that is entitled to First Amendment protection." Slip op. 9. Under relevant case law, commercial speech restrictions receive "intermediate scrutiny." The court should ask, among other things, whether the ordinance directly advances a substantial town interest and is more extensive than necessary. Slip op. 11.

The Village's asserted interests in protecting the privacy and safety of its residents are substantial, but the regulations in question will not "materially" serve those interests. Solicitation curfews do not deter criminals from approaching residences under a pretense. Nor does a licensing requirement prevent intrusive knocking at the front door. Many non-commercial solicitors do not have to be licensed.

Regarding the need for a bond, "the Village has not shown why criminal or tort laws are inadequate to deter fraud or criminal conduct, or to provide relief to its residents for tortious conduct ..." Slip op. 13. That the ordinances apply solely to commercial activity, but not to religious, charitable or political activity, undermines the assertion of an "inherent safety issue" in door-to-door solicitation.

Less burdensome alternatives exist, moreover, to protect safety and privacy, such as enforcement of trespassing laws and the right of residents to post no-solicitation signs or to refuse to answer the door. Slip op. 15-16.

As to irreparable harm, even a brief loss of First Amendment freedoms will suffice.

The "public interest" also favors the requested relief. At stake here is not only the speaker's own interest in imparting information, but the public interest in receiving it. Slip op. 17.

For these reasons, the balance of equities tipped in plaintiff's favor. In granting the preliminary injunction, Feuerstein stated that the Village may restrict door-to-door solicitation before 9:00 a.m. and after dusk "except upon the invitation of the householder or occupant." Slip op. 19.

Copyright Claims-Failure To Satisfy Registration Requirement

In Whistleblower Productions v. St8cked Media, 18 CV 5258 (EDNY, July 15, 2019), Judge Chen dismissed copyright claims by filmmakers who had failed to seek or obtain registration of the copyrighted material sued upon.

Plaintiffs alleged that they had an agreement with defendants whereby they would work together to make a short documentary film, would use that short documentary to attain funding for a fulllength version, and would share credit for any work thus created, or derivative works based upon such work. Plaintiffs produced the short documentary in collaboration with defendants, and sued for copyright infringement after defendants allegedly signed an agreement to develop a movie or television series based upon it.

The Copyright Act, 17 U.S.C. §411(a), provides that, absent circumstances not alleged to be present, "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."

Plaintiffs conceded that they had neither applied for nor effectuated registration, and did not meet the preregistration or registration requirement of §411(a). They sought a suspension or waiver of that requirement, based on the allegation that defendants were in possession of the film and denied them access, absent which they were unable to comply. The court found the failure under §411(a) to be fatal, and dismissed without prejudice. Slip op. 9-13. Chen cited numerous district court cases from the Second Circuit enforcing the requirements of §411(a), and declined to follow Foundation for Lost Boys & Girls of Sudan v. Alcom Entertainment, 2016 U.S. Dist. LEXIS 183684 (N.D. Ga. March 22, 2016), cited by plaintiffs, or Olan Mills v. Linn Photo Co., 23 F.3d 1345 (8th Cir. 1994), on which Lost Boys relied. These out-of-circuit authorities were inconsistent with the language of §411(a), and with the cases from courts within the Second Circuit enforcing it. Moreover, "even if the Court were to adopt the reasoning of Olan Mills, it would nonetheless find that it does not dictate a different result in this case. In that regard, the Court respectfully disagrees with the district court's application of Olan Mills in Lost Boys where, as here, the plaintiffs neither presented evidence of a prior determination of the defendants' infringement liability nor established a history of continuing infringement." Slip op. 12.

Chen also dismissed plaintiffs' claim under the Declaratory Judgment Act because that Act does not provide an independent cause of action (slip op. 5-6), and declined to exercise supplemental jurisdiction over plaintiffs' state law claims. Slip op. 13.

Class Certification

In M.F., a minor, by and through his parent and natural guardian Yelena Ferrer v. The New York City Department of Education, 18 CV 6109 (EDNY, June 17, 2019), Judge Gershon certified a class of "All students with diabetes who are now or will be entitled to receive diabetes-related care and attend New York City Department of Education schools." Plaintiffs sought injunctive relief under the Rehabilitation Act of 1973, 29 U.S.C. §794; Title II of the Americans with Disabilities Act of 1990, 42 U.S.C. §§12101 (ADA); and the New York City Human Rights Law, N.Y.C. Admin. Code §§8-101 (NYCHRL). Defendants did not object to class certification.

Named plaintiffs, three children with Type 1 or Type 2 diabetes who attended New York City Department of Education (DOE) schools and the American Diabetes Association (the Association), alleged that the DOE and others "systemically failed to provide appropriate care to students with Type 1 and Type 2 diabetes in New York City public schools in violation of the students' civil rights." Plaintiffs alleged that the DOE failed to hold meetings or finalize plans for students as required under the Rehabilitation Act, causing the parents and guardians to go to school to provide the medical care that the DOE failed to provide. The DOE allegedly did not provide adequate training to the school staff to handle diabetes care. In addition, the students were stigmatized because they had to leave class several times a day and could not participate in field trips or before- or after-school activities.

Gershon held that plaintiffs had met the prerequisites to a class action lawsuit. There was an identifiable class, meeting the Second Circuit's implied requirement of ascertainability. Gershon then turned to the factors set forth in Federal Rule of Civil Procedure 23(a). The class here met the numerosity requirement because there were 1,745 students with Type 1 diabetes and 372 students with Type 2 diabetes, far greater than the minimum number of 40 class members. There were also common issues of law for children having both Type 1 and Type 2 diabetes who required diabetes care and were seeking rights guaranteed under §504 of the Rehabilitation Act, the ADA and the NYCHRL. Plaintiffs also met the Rule 23(a) typicality requirement that individual and class claims be interrelated. Here all children with diabetes were subject to the same serious medical risks and required similar care. Thus, injunctive relief would help the children equally.

Finally, named plaintiffs showed that they were able to protect the interests of the class, thus meeting the Rule 23(a) adequacy requirement. The named plaintiffs were all members of the class, recognized their obligations as class representatives, and were committed to representing the needs of all class members. The Association had standing to bring suit on behalf of its members, because (1) its members had standing to sue in their own right; (2) the interests it sought to protect related to its purpose; and (3) neither the claims asserted nor the injunctive relief requested required the individual members to participate in the lawsuit.

HARVEY M. STONE and RICHARD H. DOLAN are partners at Schlam Stone & Dolan. BENNETTE D. KRAMER, a partner of the firm, assisted in the preparation of the article.