Amimon, Inc. et al v. Shenzhen Hollyland Tech Co. Ltd et al, No. 1:2020cv09170 - Document 80 (S.D.N.Y. 2021)

Court Description: OPINION AND ORDER: re: 41 FIRST MOTION to Dismiss 12b6 filed by EC Pro Video Systems Inc., 52 FIRST MOTION to Dismiss 12b6 filed by EC Pro Video Systems Inc., 65 FIRST MOTION to Dismiss filed by Shenzhen Hollyland Tech Co. Ltd. For the for egoing reasons, Hollyland and EC Pro's motions are DENIED. The parties are directed to attend a telephonic initial pretrial conference on December 15, 2021, at 3:30 PM. The parties are to dial (877) 411-9748 and enter access code 3029857# when p rompted. The Clerk of the Court is respectfully directed to terminate the motions, Doc. 41, 52, and 65. It is SO ORDERED., ( Initial Conference set for 12/15/2021 at 03:30 PM before Judge Edgardo Ramos.) (Signed by Judge Edgardo Ramos on 11/30/2021) (ama)

Download PDF

Amimon, Inc. et al v. Shenzhen Hollyland Tech Co. Ltd et al Doc. 80 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK AMIMON INC. and AMIMON LTD, Plaintiffs, – against – OPINION AND ORDER 20 Civ. 9170 (ER) SHENZHEN HOLLYLAND TECH CO. LTD, and EC PRO VIDEO SYSTEMS, Defendants. Ramos, D.J.: Amimon Inc. and Amimon Ltd (collectively, “Amimon”) brought this suit against Shenzhen Hollyland Tech Co. (“Hollyland”) and EC Pro Video Systems (“EC Pro”) alleging trade secret misappropriation, copyright infringement, and unfair competition. Doc. 37. Before the Court are Hollyland and ECPro’s motions to dismiss the complaint. For the reasons that follow, the motions are DENIED. I. BACKGROUND Amimon develops technology that enables wireless, near instantaneous video streaming. Doc. 37 ¶ 11. ,WV SURGXFWV DUH XVHG LQ ¿OP SURGXFWLRQ QHZV DQG VSRUWV EURDGFDVWLQJ GURQHV DQG hospital operating rooms. Id. ¶ 12. Amimon develops both the hardware, such as transmitters and receivers, and the software for these products. Id. ¶ 11. Amimon’s VRIWZDUH H[LVWV ¿UVW DV D source code—a version of the software which is written in plain text and editable by a human (the “Source Code”). Id. ¶ 16. ,W LV WKLV PRGL¿DEOH YHUVLRQ RI WKH VRIWZDUH that is the subject of this case. H Source Code is then compiled into a binary version of the software, which is placed on the chipsets in the transmitters and receivers. Id. ¶ 17. Unlike the Source Code, the binary version of the software is encrypted, and cannot be decompiled, reverse engineered, GHFU\SWHG PRGL¿HG RU UHYLHZHG WR DFFHVV WKH XQGHUO\LQJ Source Code. Id. Amimon provides Dockets.Justia.com the chipsets with the binary version of the software to its customers; Amimon does not disclose, sell or distribute WKH XQGHUO\LQJ PRGL¿DEOH Source Code. Id. ¶¶ 17–18. Amimon was granted a copyright registration E\ WKH 8QLWHG 6WDWHV &RS\ULJKW 2 FH for the Source Code software. Id. ¶ 19. Amimon alleges that as a leader in its industry, it spends 5 to 10 million dollars annually to research and develop new technologies, and that the information it develops derives considerable value from not being known outside of Amimon. Id. ¶¶ 13, 38. Furthermore, Amimon alleges that, in addition to obtaining copyrights for its work, it protects its GHYHORSPHQWV E\ UHVWULFWLQJ DFFHVV WR FRQ¿GHQWLDO LQIRUPDWLRQ RQO\ WR VHOHFW LQGLYLGXDOV ZKR DUH VXEMHFW WR VWULFW FRQ¿GHQWLDOLW\ DQG QRQ-disclosure agreements. Id. ¶ 39. Hollyland is a Chinese corporation that, like Amimon, develops and sells video technology. Id. ¶¶ 20–21. EC Pro is a New York based company. Id. ¶ 4. As relevant to this case, EC Pro is Hollyland’s U.S. distributor and exclusive service center. Id. ¶ 20. For reasons not set forth in the complaint, at an undetermined date, Amimon obtained one of Hollyland’s products, called the Cosmo, and examined its chipset. Id. ¶ 29. H FKLSVHW contained within the Cosmo was one of Amimon’s chipsets. 1 Id. ¶ 30. Amimon alleges that from its examination of the chipset, it determined that the source code on the chipset in the Cosmo product was an almost identical match to its own Source Code, but that it had been PRGL¿HG VOLJKWO\ Id. ¶ 31 (emphasis added). Amimon never provided its chipsets or Source Code WR +ROO\ODQG RU (&3UR IRU PRGL¿FDWLRQ RU RWKHUZLVH Id. In light of this discovery, Amimon alleges that because the only way to modify the binary code is by modifying the source In the Complaint, Amimon has included a photo of the Cosmo product’s circuit board. Doc. 37 ¶ H SKRWR shows a chipset with “Amimon” on it. Id. 1 2 code, WKH RQO\ ZD\ WKH FRGH RQ +ROO\ODQG¶V SURGXFW FRXOG EH PRGL¿HG LV through misappropriation of Amimon’s Source Code. Id. ¶ 35. As Amimon explains: [T]he binary code on Amimon’s chipsets cannot be decompiled, reverse engineered, GHFU\SWHG PRGL¿HG RU reviewed. Nevertheless, Amimon’s investigation of the binary code on the chipsets used inside Defendants’ products reveals the binary code to be substantially VLPLODU WR $PLPRQ¶V ELQDU\ FRGH EXW ZLWK VOLJKW PRGL¿FDWLRQV H only way that the binary code on the Amimon chipsets in Defendants’ products could possibly contain binary FRGH ZKLFK GL HUV IURP WKDW GHVLJQHG DQG GLVWULEXWHG E\ $PLPRQ LV LI $PLPRQ¶V VRXUFH FRGH ZHUH REWDLQHG PRGL¿HG UHFRPSLOHG DQG UHLQVWDOOHG RQWR WKH DFFXVHG SURGXFWV HUH exists only one way to modify and replace the binary code on Amimon’s chipsets, which LV IRU 'HIHQGDQWV WR KDYH XVHG $PLPRQ¶V FRQ¿GHQWLDO SURSULHWDU\ DQG FRS\ULJKWHG source code. Doc. 44 at 5 n.3 (citations omitted). In June 2019, Amimon ¿OHG D FRPSOaint against Hollyland and Beijing Huacheng Yuzhe Trading Co., Hollyland’s China based distributor, in a Chinese court, alleging an infringement of its computer software copyright. Doc. 67, Ex. 1. DW FDVH LV RQJRLQJ On November 4, 2020, Amimon ¿OHG the instant action against Hollyland and EC Pro in this Court for trade secret misappropriation under the Defend Trade Secrets Act (“DTSA”) and New York Law, for violation of the Copyright Act, and for unfair competition for misappropriation of skills and expenditures. 2 'RF 2Q )HEUXDU\ $PLPRQ ¿OHG a First Amended Complaint (“FAC”). Doc. 37. Both Hollyland and EC Pro KDYH ¿OHG PRWLRQV WR GLVPLVV H RULJLQDO PRWLRQ WR GLVPLVV ZDV ¿OHG on March 17, 2021. Doc. 41. EC Pro’s counsel sought to amend that motion to clarify that at that time it was only representing EC Pro, and therefore that the motion to dismiss only applied to EC Pro. Counsel advised the Court that Hollyland had not yet been served under the Hague Convention as Hollyland had requested. An H RULJLQDO FRPSODLQW DOVR listed Ikan International, LLC as a defendant. Doc. 11. However, that claim has since been resolved by stipulation between the parties. Doc. 15. 2 3 amended motion to dismiss was ¿OHG on April 4, 2021. Doc. 52. In July 2021, EC Pro’s counsel advised the Court that Hollyland had been served under the Hague Convention, and so counsel would now be representing Hollyland as well. 3 Counsel requested leave to submit an additional motion to dismiss on Hollyland’s behalf DW PRWLRQ ZDV ¿OHG on September 2, 2021. Doc. 65. Hollyland adopts the arguments made in EC Pro’s motion and, in addition, argues that the claims against it should be dismissed for lack of personal jurisdiction, lack of subject matter jurisdiction, forum non conveniens, and international comity. Together, EC Pro and Hollyland have argued that the case should be dismissed under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. II. HOLLYLAND’S MOTION TO DISMISS A. Personal Jurisdiction Legal standard “A plaintiff opposing a motion to dismiss under Rule 12(b)(2) for lack of personal jurisdiction has the burden of establishing that the court has jurisdiction over the defendant.” BHC Interim Funding, LP v. Bracewell & Patterson, LLP, No. 2 Civ. 4695 (LTS), 2003 WL 21467544, at *1 (S.D.N.Y. June 25, 2003) (citing Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999)). To meet this burden where there has been no discovery or evidentiary hearing, the plaintiff must plead facts sufficient for a prima facie showing of jurisdiction. Id. As the Court evaluates a Rule 12(b)(2) motion, it must construe all of the plaintiff’s allegations as true and resolve all doubts in its favor. Casville Invs., Ltd. v. 3 In a letter to the Court requesting a pre-motion conference, Counsel advised the Court that Hollyland had “allegedly” been served EXW WKDW WKH\ ZHUH XQDEOH WR FRQ¿UP ZKLFK GDWH VSHFL¿FDOO\ EHFDXVH Amimon had not VXEPLWWHG DQ D GDYLW RI VHUYLFH. Doc. 58. Hollyland raises this ODFN RI D GDYLW in its argument to dismiss for lack of personal jurisdiction. Doc. 66. However, Hollyland does not contest actual service. 4 Kates, No. 12 Civ. 6968 (RA), 2013 WL 3465816, at *3 (S.D.N.Y. July 8, 2013) (citing Porina v. Marward Shipping Co., 521 F.3d 122, 126 (2d Cir. 2008)). “However, a plaintiff may not rely on conclusory statements without any supporting facts, as such allegations would ‘lack the factual specificity necessary to confer jurisdiction.’” Art Assure Ltd., LLC v. Artmentum GmbH, No. 14 Civ. 3756 (LGS), 2014 WL 5757545, at *2 (S.D.N.Y. Nov. 4, 2014) (quoting Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181, 185 (2d Cir. 1998)). As Rule 12(b)(2) motions are “inherently . . . matter[s] requiring the resolution of factual issues outside of the pleadings,” courts may rely on additional materials outside the pleadings when ruling on such motions. John Hancock Prop. & Cas. Ins. Co. v. Universale Reinsurance Co., No. 91 Civ. 3644 (CES), 1992 WL 26765, at *1 n.1 (S.D.N.Y. Feb. 5, 1992); accord Darby Trading Inc. v. Shell Int’l Trading and Shipping Co., 568 F. Supp. 2d 329, 334 (S.D.N.Y. 2008). In diversity or federal question cases, personal jurisdiction is determined in accordance with the law of the forum in which the federal court sits. Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 208 (2d Cir. 2001) (citing Bensusan Rest. Corp. v. King, 126 F.3d 25, 27 (2d Cir. 1997)). This determination involves a two-step analysis. Metro. Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 567 (2d Cir. 1996). In New York, the court must first determine whether personal jurisdiction is appropriate pursuant to the state’s general jurisdiction statute, Civil Practice Law and Rules (“C.P.L.R.”) § 301, or its long-arm jurisdiction statute, C.P.L.R. § 302(a). If the Court’s exercise of personal jurisdiction is deemed appropriate according to New York law, the second step is an evaluation of whether the court’s exercise of personal jurisdiction comports with the Fifth Amendment Due Process Clause of the United States Constitution. Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 164 (2d Cir. 2010); Best Van Lines, Inc. v. Walker, 490 F.3d 239, 242 (2d Cir. 2007). 5 Personal jurisdiction exists under C.P.L.R. 302(a)(1) C.P.L.R. § 302(a)(1) provides that a court “may exercise personal jurisdiction over any non-domiciliary . . . who in person or through an agent [] transacts any business with the state or contracts anywhere to supply goods or services in the state.” N.Y. C.P.L.R. § 302(a)(1) (McKinney 2008). “To establish personal jurisdiction under Section 302(a)(1), two requirements must be met: (1) [t]he defendant must have transacted business within the state; and (2) the claim asserted must arise from that business activity.” Medicrea USA, Inc. v. K2M Spine, Inc., No. 17 Civ. 8677 (AT), 2018 WL 3407702, at*4 (S.D.N.Y. Feb. 7, 2018) (quoting Sole Resort, S.A. de C.V. v. Allure Resorts Mgmt., LLC, 450 F.3d 100, 103 (2d Cir. 2006). Amimon has alleged that Hollyland works with EC Pro to import Hollyland’s products to sell in New York and therefore, Hollyland transacted business within New York. Doc. 70 at 4. The Court agrees. Amimon has alleged that Hollyland actively advertises and sells products that contain its Source Code. Even though Hollyland itself may not have offices in New York or sell the products directly, its relationship with EC Pro and its purposeful efforts to sell its products in New York are sufficient to establish that it has transacted business within the state. See Joint Stock Co. Channel One Russia Worldwide v. Infomir LLC, No. 16-CV-1318 (GBD), 2017 WL 825482, at *10 (S.D.N.Y. Mar. 2, 2017) (“Thus, regardless of whether [a New York-based recurrent purchaser] was a ‘dealer,’ a ‘reseller,’ or simply a large-volume purchaser . . . [defendant’s] sales to [recurrent purchaser] were purposeful contacts with New York.”). Amimon has further alleged that these contacts are what facilitate the sale of products containing its Source Code in New York. Doc. 70 at 4. Therefore, because Amimon’s claims arise from these contacts, the second prong of C.P.L.R. § 302(a)(1) is also met. See Joint Stock Co., 2017 WL 825482, at *10. 6 Hollyland asserts that the “presence of a distributor in the absence of any other contacts with the forum, has been held not to be sufficient to acquire jurisdiction over a foreign corporation.” Doc. 66 at 4, and Doc. 73 at 3, 4 (citing Jurlique, Inc. v. Austral Biolab Pty., Ltd., 590 N.Y.S.2d 235, 237 (N.Y. App. Div. 1992). However, while the presence of a distributor is insufficient to establish general jurisdiction pursuant to C.P.L.R. § 301, contacts with a distributor may be considered in determining whether specific jurisdiction exists under C.P.L.R. § 302. See Mason Tayler Med. Prods. Corp. v. Qwikstrip Prods., LLC, No 99-CV-01774 (SC), 2000 WL 432807, at *4 (W.D.N.Y. Apr. 14, 2000) (holding that the presence of a sales representative or distributor is not sufficient to establish personal jurisdiction under C.P.L.R. § 301, but that “[t]he plaintiff’s necessary showing under section 302 is considerably less than that needed to establish defendant’s doing business [under section 301]” (internal quotation marks and citation omitted)). Thus, while Amimon’s allegations that Hollyland acted through EC Pro in New York may not be sufficient to establish general jurisdiction under § 301, they are sufficient to establish specific jurisdiction under § 302(a)(1). 4 Hollyland additionally states that Amimon has not yet filed an Affidavit of Service to indicate that Hollyland was served through the Hague. Doc. 66 at 5 n.6. However, Hollyland does not argue that it has not in fact been served, simply that no affidavit of service has been filed with the Court. As Hollyland is not disputing actual service and has not cited any case as to 4 Amimon argues in a footnote that the Court may be able to establish general jurisdiction over Hollyland and alleges that EC Pro may be an “alter-ego” of Hollyland. Doc. 7 DW Q 6LQFH WKH &RXUW ¿QGV WKDW VSHFL¿F jurisdiction has been established, it does not consider whether general jurisdiction also exists. 7 why a lack of an affidavit of service is sufficient to warrant dismissal for lack of personal jurisdiction, the Court will not dismiss on this basis. 5 Due process Due process requires that a defendant have “sufficient minimum contacts with the forum” to justify a court’s exercise of personal jurisdiction, such that the “the assertion of personal jurisdiction over the defendant comports with traditional notions of fair play and substantial justice.” Waldman v. Palestine Liberation Org., 835 F.3d 317, 331 (2d Cir. 2016) (internal quotation marks and citations omitted). The due process inquiry has two parts: (1) “the court must determine whether the defendant has sufficient contacts with the forum state to justify the court’s exercise of personal jurisdiction,” and (2) “the court must determine whether the assertion of personal jurisdiction is reasonable under the circumstances of the particular case.” Schottenstein v. Schottenstein, No. 04 Civ. 5851 (SAS), 2004 WL 2534155, at *7 (S.D.N.Y. Nov. 8, 2004) (citing Metro. Life, 84 F.3d at 567). “The import of the ‘reasonableness’ inquiry varies inversely with the strength of the ‘minimum contacts’ showing—a strong . . . showing by the plaintiff on ‘minimum contacts’ reduces . . . the weight given to ‘reasonableness.’” Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 305 F.3d 120, 129 (2d Cir. 2002) (citing Metro. Life, 84 F.3d at 568–69). “The requisite ‘minimum contacts’ analysis ‘overlaps significantly’ with New York’s § 302(a)(1) inquiry into whether a defendant transacted business in the State.” Minnie Rose LLC v. Yu, 169 F. Supp. 3d 504, 515 (S.D.N.Y. 2016) (citations omitted). Since the Court holds that 5 Hollyland makes additional arguments regarding the lack of jurisdiction HVH DUJXPHQWV DUH SUHPLVHG RQ D ¿QGLQJ RI SHUVRQDO MXULVGLFWLRQ EDVHG RQ D FRQWUDFWXDO UHODWLRQVKLS EHWZHHQ +ROO\ODQG Dnd Amimon, on EC Pro being Hollyland’s agent, and Hollyland’s attendance at a trade show in New York %HFDXVH WKLV &RXUW ¿QGV WKDW jurisdiction exists over Hollyland as a result of its own FRQWDFWV LQ 1HZ <RUN DV RSSRVHG WR D VSHFL¿F FRQWUDFWXDO relationship with EC Pro, or through EC Pro as an agent), the Court need not address these arguments. 8 Hollyland’s contacts with New York through EC Pro are purposeful and related to the cause of action so that Hollyland has sufficient minimum contacts under C.P.L.R. § 302(a)(1), the Court also finds that these contacts meet the due process requirements. See id. The reasonableness inquiry depends on five factors: “(1) the burden that the exercise of jurisdiction will impose on the defendant; (2) the interests of the forum state in adjudicating the case; (3) the plaintiff’s interest in obtaining convenient and effective relief; (4) the most efficient resolution of the controversy; and (5) the interests of the state in furthering substantive social policies.” Id. (citing Schottenstein, 2004 WL 2534155, at *8). Hollyland has not argued, nor does the Court independently find, that the exercise of personal jurisdiction over Hollyland is unreasonable. Although litigating in New York may impose a burden on Hollyland, the burden is outweighed by the other factors. Because the products were being sold in New York, the forum has an interest in the resolution of the dispute. The action involves claims against not only Hollyland, but also EC Pro, so Amimon has an interest in New York as a forum, where Amimon is able to obtain jurisdiction over both defendants and efficiently resolve the controversy. The exercise of personal jurisdiction over Hollyland therefore comports with notions of fair play and substantial justice. Hollyland’s motion to dismiss for lack of personal jurisdiction is denied. B. Subject Matter Jurisdiction Hollyland argues that Amimon has failed to state a claim for trade secret misappropriation, copyright infringement, and unfair competition because the alleged violations occurred overseas. Doc. 66 at 5. Because the DTSA, Copyright Act, and unfair competition laws do not apply extraterritorially, Hollyland argues, the Court does not have subject matter jurisdiction and the claims should be dismissed. Id. However, Amimon’s claims do not pertain to extraterritorial actions, but rather Hollyland’s appropriation and sale of Amimon’s Source 9 Code in the United States through EC Pro. 6 Hollyland’s argument is premised on the notion that it is a manufacturer located in China, and since EC Pro is the entity that is actually selling the products in the United States, any of Hollyland’s allegedly infringing actions occurred in China only. See 'RF DW LV DUJXPHQW ignores the fact that Hollyland purposely established a relationship with EC Pro to sell its products in the United States, presumably believing such an DFWLRQ ZRXOG EH SUR¿WDEOH +ROO\ODQG FDQQRW UHDS WKH EHQH¿WV RI VXFK D UHODWLRQship and simultaneously shield itself from any negative consequences. Because Hollyland is allegedly purposely shipping product that contains Amimon’s Source Code to the United States where it is being sold, the actions are not extraterritorial and Hollyland’s argument is unavailing. C. Forum Non Conveniens H GRFWULQH RI forum non conveniens allows a court to dismiss an action “even if the court is a permissible venue with proper jurisdiction over the claim.” LaSala v. Bank of Cyprus Pub. Co. Ltd., 510 F. Supp. 2d 246, 254 (S.D.N.Y. 2007) (quoting Carey v. Bayerische Hypo-Und Vereinsbank AG, 370 F.3d 234, 237 (2d Cir. 2004)). “A decision to grant or deny a motion to dismiss a cause of action under the doctrine of forum non conveniens lies wholly within the broad discretion of the district court.” Scottish Air Int’l, Inc. v. British Caledonian Grp., PLC, 81 F.3d 1224, 1232 (2d Cir. 1996). H 6HFRQG &LUFXLW KDV ³RXWOLQHG D WKUHH-step process to guide 6 Hollyland primarily cites to cases focused on the extraterritorial application of the Copyright Act, but in all of these cases, the allegedly infringed product was being sold outside of the United States. See, e.g., Energy Intel. Grp., Inc. v. Canaccord Genuity, Inc., No. 16 Civ. 8298 (JGK), 2017 WL 1967366 (S.D.N.Y May 11, 2017) (copyrighted publications sent from Canada to subscribers outside of the United States); Roberts v. Keith, No. 4 Civ. 100079 (LAP), 2009 WL 3572962 (S.D.N.Y. Oct. 23, 2009) (album release in the United Kingdom and Europe); Levitin v. Sony Music Ent., 101 F. Supp. 3d 376 (S.D.N.Y. 2015) (the release of an infringing song outside the United States). DW LV QRW WKH FDVH KHUH 10 the exercise of that discretion.” Norex Petroleum Ltd. v. Access Indus., Inc., 416 F.3d 146, 153 (2d. Cir. 2005) (citing Iragorri v. United Tech. Corp., 274 F.3d 65, 73 (2d Cir. 2001) (en banc)). )LUVW ³D FRXUW GHWHUPLQHV WKH GHJUHH RI GHIHUHQFH SURSHUO\ DFFRUGHG WKH SODLQWL ’s choice of forum.” Id. Second, “it considers whether the alternative forum proposed by the defendants is adequate to adjudicate the parties’ dispute.” Id. And third, “a court balances the private and public interests implicated in the choice of forum.” Id. Deference to Amimon’s choice of forum A defendant who invokes forum non conveniens generally bears “a heavy burden” in opposing a SODLQWL ’s chosen forum. Sinochem Int’l. Co. Ltd. v. Malaysia Int’l Shipping Corp., 549 U.S. 422, 430 (2007). When reviewing a forum non conveniens motion, courts start with “a strong presumption´ LQ IDYRU RI WKH SODLQWL ’s forum choice. Norex, 416 F.3d at 154 (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255 (1981)). “Usually, the greatest deference is D RUGHG D SODLQWL ¶V FKRLFH RI LWV KRPH IRUXP ZKLOH µOHVV GHIHUHQFH¶ LV D RUGHG D foreign SODLQWL ¶V FKRLFH RI D 8QLWHG 6WDWHV IRUXP ´ Id. (citations omitted). However, “the degree of GHIHUHQFH DVVLJQHG WR SODLQWL ¶V FKRLFH GHSHQGV RQ WKH VSHFL¿F IDFWV RI WKH FDVH DQG PD\ EH viewed as operating along a ‘sliding scale.’” Pollux Holding Ltd. v. Chase Manhattan Bank, 329 F.3d 64, 71 (2d Cir. 2003). H 6HFRQG &LUFXLW LQ Iragorri explained the sliding-scale analysis: >7@KH JUHDWHU WKH SODLQWL ’s or the lawsuit’V ERQD ¿GH FRQQHFWLRQ WR WKH 8QLWHG 6WDWHV DQG to the forum of choice and the more it appears that considerations of convenience favor WKH FRQGXFW RI WKH ODZVXLW LQ WKH 8QLWHG 6WDWHV WKH PRUH GL FXOW LW ZLOO EH IRU WKH defendant to gain dismissal for forum non conveniens. . . . On the other hand, the more it appears that tKH SODLQWL ’s choice of a U.S. forum was motivated by forum-shopping reasons . . WKH OHVV GHIHUHQFH WKH SODLQWL ’s choice commands[.] Iragorri, 274 F.3d at 71–72. ,Q VKRUW FRXUWV JLYH JUHDWHU GHIHUHQFH WR D SODLQWL ’s chosen forum when that choice LV PRWLYDWHG E\ FRQYHQLHQFH DQG JLYH OHVV GHIHUHQFH ZKHQ WKH SODLQWL LV 11 merely seeking a tactical advantage. When applying this sliding-scale analysis, courts are guided by Iragorri’s convenience and forum shopping factors. Norex, 416 F.3d at 154–55. Iragorri’s convenience factors are: ³ WKH FRQYHQLHQFH RI WKH SODLQWL ’s residence in relation to the chosen forum, (2) the availability of witnesses or evidence to the forum district, (3) the defendant’s amenability to suit in the forum district, (4) the availability of appropriate legal assistance, and (5) other reasons relating to convenience or expense.” Id. at 155 (quoting Iragorri, 274 F.3d at 72). Conversely, Iragorri’s forum shopping factors are: “(1) attempts to ZLQ D WDFWLFDO DGYDQWDJH UHVXOWLQJ IURP ORFDO ODZV WKDW IDYRU WKH SODLQWL ’s case, (2) the habitual JHQHURVLW\ RI MXULHV LQ WKH 8QLWHG 6WDWHV RU LQ WKH IRUXP GLVWULFW WKH SODLQWL ’s popularity or the defendant’s unpopularity in the region, or (4) the inconvenience and expense to the defendant resulting from litigation in that forum.” Id. (quoting Iragorri, 274 F.3d at 72). Some deference should be given to Amimon’s chosen forum. Weighing strongly in favor of deference is the fact that the cause of action underlying Amimon’s claim occurred in New York, meaning that at least some witnesses and evidence is available in the forum district, and 1HZ <RUN R HUV D IRUXP ZKHUH jurisdiction exists over both defendants. Id. at 155–56 (“‘[A] SODLQWL ¶V FKRLFH RI WKH GHIHQGDQW¶V KRPH IRUXP¶ ZLOO QRW E\ LWVHOI ZDUUDQW D SUHVXPSWLRQ RI convenience but, when such a choice is ‘made to obtain jurisdiction over defendant[,] . . . substantial deference would still be generally appropriate.’” (quoting Pollux, 329 F.3d at 74)). Complicating the forum analysis is the ongoing litigation in China. Hollyland argues that since Amimon has already initiated a lawsuit in China against Hollyland pertaining to copyright infringement of the same Source Code, this additional litigation is indicative of forum shopping with the goal of securing a favorable district. See Doc. 66 at 2. ,W LV QRW LQVLJQL¿FDQW WKDW WKHUH LV ongoing litigation in China. However, Amimon has focused this lawsuit on activity that occurred 12 in New York, has included Hollyland’s New York-based distributor, EC Pro, as a defendant, and has brought claims under U.S. and New York law. “[U]nless the balance is strongly in favor of WKH GHIHQGDQW WKH SODLQWL ¶V choice of forum should rarely be disturbed.” Gilstrap v. Radianz Ltd., 443 F. Supp. 2d 474, 478 (S.D.N.Y. 2006) (quoting Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947)). HUHIRUH Eecause this lawsuit includes allegations of violations of U.S. and New York law, the balance is not strongly in favor of Hollyland and the Court gives some deference to Amimon’s choice of forum. Adequate alternative forum The Court’s deference to Plaintiff’s forum choice does “not necessarily preclude forum non conveniens dismissal.” Norex, 416 F.3d at 157. Rather, it “simply recalibrate[s] the balance for purposes of the remaining analysis.” Id. To be successful on a motion to dismiss on forum non conveniens grounds, “a movant must demonstrate the availability of an adequate alternative forum.” Id. (citation omitted). In order for an alternative forum to be adequate, it must satisfy two requirements. First, all defendants must be amenable to service of process in the alternative forum. Norex, 416 F.3d at 157; Rio Tinto PLC v. Vale S.A., No. 14 Civ. 3042 (RMB), 2014 WL 7191250, at *13 (S.D.N.Y. Dec. 17, 2014) (for an alternative forum to be adequate, “a court must satisfy itself that the litigation may be conducted elsewhere against all defendants” (citing PT United Can Co. v. Crown Cork & Seal Co., 138 F.3d 65, 73 (2d Cir. 1998)) (emphasis added)). And second, the alternative forum must permit litigation of the subject matter of the dispute. Norex, 416 F.3d at 157. It is clear that Hollyland is amenable to service of process in China. What is less clear is whether EC Pro would be. Hollyland has provided no information about whether EC Pro would be subject to jurisdiction in China, stating only that “Plaintiff and Defendants have consented to 13 jurisdiction in China.” Doc. 66 at 11. However, Hollyland is unable to consent on EC Pro’s behalf and EC Pro itself has not consented to jurisdiction in China. Even were EC Pro to consent to jurisdiction in China, the question of whether China would permit litigation of the subject matter of the dispute is even hazier. In the FAC, Amimon asserts claims for trade secret misappropriation under the federal Defend Trade Secrets Act and New York law, copyright infringement under the U.S. Copyright Act, and unfair competition under New York law. The underlying facts Amimon states to support these claims concern the sale of products containing its Source Code in New York. In other words, Amimon has asserted claims for violations that occurred in the United States under U.S. laws. Hollyland states that China would permit litigation of this subject matter because it is a member of a number of international copyright conventions. Doc. 73 at 6 & nn.5–6. Hollyland states that Chinese courts regularly hear and decide cases involving foreign law, citing China’s International Copyright Treaties Implementing Rules as support. Doc. 73 at 6 & n.6. However, aside from these broad statements that Chinese courts adjudicate cases involving foreign law, Hollyland does not provide any specific information as to how a Chinese court would permit litigation of the specific U.S. and New York law violations at issue in this dispute. Hollyland argues that “there is no assumption[] that the Chinese courts would not adjudicate such a matter.” Doc. 73 at 6 (emphasis added). But the burden is on Hollyland to affirmatively show that the Chinese courts would adjudicate such a matter. Hollyland argues that Amimon must have believed China was an adequate alternative because Amimon already has a case pending there concerning a copyright infringement of the same Source Code. According to the translated version of that complaint that Hollyland submitted as an exhibit to its motion, Amimon has asserted a claim for copyright infringement 14 under China’s Copyright Law for the infringement of Amimon’s Source Code in China. Doc. 67, Ex. 1 at 2. Hollyland argues that because many of the facts between the Chinese and U.S. lawsuits overlap, and because Amimon has asserted a copyright infringement claim in both, China is clearly an adequate alternative. However, the fact that China is an adequate forum to adjudicate whether Hollyland violated Chinese law does not inherently mean it is an adequate forum to evaluate whether Hollyland violated U.S. law. See, e.g., Halo Creative & Design Ltd. v. Comptoir Des Indes Inc., 816 F.3d 1366, 1371 (Fed. Cir. 2016) (“It cannot be assumed that a foreign court would adjudicate an intellectual property dispute where the alleged infringement occurred elsewhere, and the case otherwise has little or no connection to the chosen forum.”). It is the responsibility of the party moving for forum non conveniens to prove that an adequate alternative is available. Norex, 416 F.3d at 157. Hollyland has not shown that both defendants are amenable to service of process, nor that China is an adequate alternative to address the U.S.-based laws at issue before the Court here, and because it has not proffered any other alternative forum, the Court finds that no adequate alternative exists. Because the Court determines that no adequate alternative exists, there is no need to evaluate the public and private interests and Hollyland’s motion to dismiss for forum non conveniens is denied. Id. (“If the movant fails to [demonstrate the availability of an adequate alternative forum], the forum non conveniens motion must be denied regardless of the degree of deference accorded plaintiff’s forum choice.”). D. International Comity International comity KDV EHHQ GH¿QHG as “the recognition which one nation allows within its territory to the legislative, executive or judicial acts of another nation.” Hilton v. Guyot, 159 U.S. 113, 164 (1895). Whether to dismiss a case on international comity grounds lies within the discretion of the district court. See Finanz AG Zurich v. Banco Economico S.A., 192 F.3d 240, 15 246 (2d Cir. 1999). H DSSOLFDWLRQ RI FRPLW\ YDULHV GHSHQGLQJ RQ ZKHWKHU D SDUW\ VHHNV UHFRJQLWLRQ RI D IRUHLJQ MXGJPHQW WKDW KDV EHFRPH ¿QDO RU RI D SHQGLQJ SDUDOOHO SURFHHGLQJ WKDW KDV \HW WR UHDFK D ¿QDO MXGJPHQW Klonis v. Nat’l Bank of Greece, S.A., 487 F. Supp. 2d 351, 354–55 (S.D.N.Y. 2006). “In the context of parallel proceedings in a foreign court, a district court should be guided by the principles upon which international comity is based: the proper respect for litigation in and the courts of a sovereign nation, fairness to litigants, and judicial H FLHQF\ ´ Royal & Sun All. Ins. Co. v. Century Int’l Arms, Inc., 466 F.3d 88, 94 (2d Cir. 2006). ³ H PHUH H[LVWHQFH RI SDUDOOHO foreign proceedings does not negate the district courts’ ‘virtually uQÀDJJLQJ REOLJDWLRQ . . to exercise the jurisdiction given them.’” Id. at 92 (quoting Colo. River Water Conservation Dist. v. United States, 424 U.S. 800, 817 (1976)). H 6HFRQG &LUFXLW KDV articulated several nonexclusive factors that courts should consider in making this determination, including: the connection between litigation and the United States, the similarity of the parties DQG LVVXHV WKH DGHTXDF\ RI WKH DOWHUQDWH IRUXP WKH RUGHU LQ ZKLFK DFWLRQV ZHUH ¿OHG WKH interests of judicial economy, and the convenience and potential prejudice to the parties. Id. As there is no exceptional circumstance that warrants the dismissal due to international comity, Hollyland’s request is denied. To begin, there is a direct connection between this litigation and the United States, as the cause of action pertains to the sale of products in New York DQG $PLPRQ KDV ¿OHG FODLPV XQGHU federal and New York state laws. Furthermore, though the parties and issues are similar, there are some substantive GL HUHQFHV (& 3UR LV QRW D SDUW\ WR WKH OLWLJDWLRQ LQ &KLQD DQG WKH RQO\ claim in that litigation appears to be for Chinese copyright infringement; there is no trade secret misappropriation claim, and at no point does Hollyland suggest that Amimon has sought relief under U.S. law in the Chinese court. It is true that the action in China ZDV ¿OHG SULRU WR WKH RQH 16 here, and the issue concerns copyright infringement. Hollyland suggests that were Amimon to succeed in its China-based litigation, it would obtain one of its desired goals of forcing Hollyland to halt production of the infringing product. However, here Amimon seeks not only injunctive relief, but also restitution and damages for the infringement. Even if Hollyland succeeds in its China-based litigation, that would only address the issue of injunctive relief. Furthermore, due WR WKH GL HUHQFHV LQ DSSOLFDELOLW\ RI ODZ, even if Amimon fails in China under China’s copyright restrictions, it may succeed in New York under U.S. law. New York’s exercise of jurisdiction would in no way FRQÀLFW ZLWK RU undermine the outcome of the litigation in China. Hollyland’s request to dismiss due to international comity is denied. III. HOLLYLAND AND EC PRO’S MOTION TO DISMISS When reviewing a motion to dismiss pursuant to Rule 12(b)(6), the Court is required to “accept as true the facts alleged in the Complaint, drawing all reasonable inferences in favor of WKH SODLQWL ´ WR GHWHUPLQH ZKHWKHU SODLQWL KDV SURSHUO\ VWDWHG D FODim upon which relief can be granted. Koch v. Christie’s Int’l PLC, 699 F.3d 141, 145 (2d Cir. 2012). But this requirement does not apply to legal conclusions, recitals of the elements of a cause of action, bare assertions, or conclusory allegations. Ashcroft v. Iqbal, 556 U.S. 662, 678, 681, 686 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 554–55 (2007)). Instead, to satisfy the pleading standard under 5XOH D FRPSODLQW PXVW FRQWDLQ VX FLHQW IDFWXDO PDWWHU WR VWDWH D FODLP WR UHOLHI WKDW is plausible—not merely possible—on its face. Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 570). Only certain documents may be considered by a court reviewing a motion to dismiss: the scope of consideration is “limited to the factual allegationV LQ SODLQWL [’s] amended complaint . . . to documents attached to the complaint as an exhibit or incorporated in it by reference, to matters RI ZKLFK MXGLFLDO QRWLFH PD\ EH WDNHQ RU WR GRFXPHQWV HLWKHU LQ SODLQWL [’s] possession or of 17 ZKLFK SODLQWL [] had knowledge and relied on in bringing suit.” Brass v. Am. Film Techs., Inc., 987 F.2d 142, 150 (2d Cir. 1993) (citation omitted). A complaint is also deemed to include any documents that “although not incorporated by reference, are ‘integral’ to the complaint.” L-7 Designs, Inc. v. Old Navy, LLC, 647 F.3d 419, 422 (2d Cir. 2011) (citation omitted). A. Trade Secret Misappropriation “7R VWDWH D FODLP IRU PLVDSSURSULDWLRQ XQGHU WKH '76$ D SODLQWL PXVW DOOHJH WKDW LW possessed a trade secret that the defendant misappropriated.” Iacovacci v. Brevet Holdings, LLC, 437 F. Supp. 3d 367, 380 (S.D.N.Y. 2020) (citing 18 U.S.C. § 1836(b)(1)). H HOHPHQWV IRU stating a claim of misappropriation of trade secrets under New York law “are fundamentally the same” as those sustaining a claim under the DTSA. Id. (citing N. Atl. Instruments, Inc. v. Haber, 188 F.3d 38, 43–44 (2d Cir. 1999)). ,I D FRPSODLQW VX FLHQWO\ DOOHJHV D FODLP XQGHU WKH '76$ LW DOVR VX FLHQWO\ SOHDGV PLVDSSURSULDWLRQ RI WUDGH VHFUHWV XQGer New York law. Id. (citation omitted). Possession of a Trade Secret H '76$ GH¿QHV WUDGH VHFUHWV DV ³DOO IRUPV DQG W\SHV RI ¿QDQFLDO EXVLQHVV VFLHQWL¿F technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes.” 18 U.S.C. § RXJK WKH 6HFRQG &LUFXLW KDV QRW DUWLFXODWHG D VSHFL¿FLW\ UHTXLUHPHQW IRU SOHDGLQJ D WUDGH VHFUHW DQG LW LV ³QRW QHFHVVDUy to disclose every detail of an alleged trade secret in a complaint,” the district courts routinely require that the allegations must “specify the general contours of a trade secret” without merely restating the elements of one. Democratic Nat’l Comm. v. Russian Fed’n, 392 F. Supp. 3d 410, 448 (S.D.N.Y. 2019) (citations omitted); Lawrence v. NYC Med. Prac., P.C., No. 18 Civ. 8649 (GHW), 2019 18 WL 4194576, at *4 (S.D.N.Y. Sept. 3, 2019) (citation omitted); Medidata Sols., Inc. v. Veeva Sys. Inc., No. 17 Civ. 589, 2018 WL 6173349, at *3 (S.D.N.Y. Nov. 26, 2018). Courts consider several factors as “guideposts,” which need not all be alleged, in GLVFHUQLQJ ZKHWKHU LQIRUPDWLRQ TXDOL¿HV DV D WUDGH VHFUHW LQFOXGLQJ (1) the extent to which the information is known outside of the business; (2) the extent to which it is known by employees and others involved in the business; (3) the extent of measures taken by the business to guard the secrecy of the information; (4) the value of the information to the business and tR LWV FRPSHWLWRUV WKH DPRXQW RI H RUW RU PRQH\ H[SHQGHG E\ WKH EXVLQHVV LQ GHYHORSLQJ WKH LQIRUPDWLRQ WKH HDVH RU GL FXOW\ ZLWK which the information could be properly acquired or duplicated by others. Iacovacci v. Brevet Holdings, LLC, 437 F. Supp. 3d 367, 380 (S.D.N.Y. 2020) (citation omitted). RXJK WKH TXHVWLRQ RI ZKHWKHU SURSULHWDU\ LQIRUPDWLRQ TXDOL¿HV DV D WUDGH VHFUHW LV ordinarily a question of fact not resolvable on a motion to dismiss, courts dismiss claims involving trade secrets where they are not actually secret or there is no discernible economic value from them not being generally known. Zirvi v. Flatley, 433 F. Supp. 3d 448, 465 (S.D.N.Y. 2020); see also ExpertConnect, L.L.C. v. Fowler, No. 18 Civ. 4828, 2019 WL 3004161, at *5 (S.D.N.Y. July 10, 2019). Amimon has alleged VX FLHQW IDFWV WR VXJJHVW that its Source Code is a trade secret. Amimon alleges that it does not disclose, sell, or distribute its Source Code. Instead, it sells an encrypted, compiled version that cannot be decompiled, reverse engineered, or decrypted to discern the underlying Source Code. Doc. 37 ¶¶ 17–18. Furthermore, Amimon alleges it obtained a copyright to protect its Source Code. Id. ¶ 19. Amimon has alleged that it has taken measures to guard the secrecy of the information and that the Source Code is not easily “properly acquired or duplicated by others.” See Iacovacci, 437 F. Supp 3d at 380. 19 Defendants’ argument that Amimon’s allegations are contradictory is easily dismissed. Amimon has alleged that itV WUDGH VHFUHW LV WKH PRGL¿DEOH 6RXUFH &RGH H Source Code is one version of the software, which is then encrypted and compiled as the binary code that exists on the chipsets sold by Amimon. Doc. 37 ¶ 17. While the binary code that is sold cannot be PRGL¿HG WKH Source Code can be. Id. ¶¶ 16–18. Amimon is not alleging that the binary code ZDV PRGL¿HG EXW UDWKHU WKDW defendants obtained the Source Code DQG PRGL¿HG WKDW version of the software. is is not a contradictory allegation. Defendants IXUWKHU DUJXH WKDW $PLPRQ GLG QRW SURYLGH VX FLHQW VSHFL¿FLW\ WR LGHQWLI\ WKH WUDGH VHFUHW DOOHJHGO\ PLVDSSURSULDWHG LV LV DOVR HDVLO\ GLVPLVVHG $PLPRQ VSHFL¿FDOO\ LGHQWL¿HG WKH WUDGH VHFUHW DV the Source Code for its zero-latency transmission software. Doc. 44 at 10. LV LV IDU PRUH VSHFL¿F WKDQ D ³JHQHUDO FDWHJRU>\@ RI FRQ¿GHQWLDO LQIRUPDWLRQ.” See Elsevier Inc. v. Dr. Evidence, LLC, No. 17-cv-5540 (KBF), 2018 WL 557906, at *6 (S.D.N.Y. Jan. 23, 2018). In fact, in Elsevier WKH FRXUW VSHFL¿FDOO\ VWDWHV WKDW ³>Z@KLOH LW LV QRW QHFHVVDU\ WR GLVFORVH HYHU\ GHWDLO RI DQ DOOHJHG WUDGH VHFUHW LQ D FRPSODLQW >WKH SODLQWL @ FRXOG KDYH H[SODLQHG that its ‘interpretation of data’ or ‘pURFHVV WR DVVHVV WKH TXDOLW\ RI HYLGHQFH¶ UHOLHV RQ D VSHFL¿F proprietary algorithm developed at a certain time and which no one else owns.” Id. LV LV HVVHQWLDOO\ WKH OHYHO RI VSHFL¿FLW\ What Amimon has alleged. Defendants additionally argue that Amimon has not alleged that its Source Code has any economic value to Amimon or their competitors. Docs. 42, 53 at 9. Although one of the factors courts consider in determining whether something is a trade secret is “the value of the information to the business and its competitors,” this is only one factor; as discussed previously, not all factors must be alleged in order to determine that information is a trade secret. See Iacovacci, 437 F. Supp 3d at 380. Furthermore, Amimon has alleged that as a leader of the video 20 transmission industry, it spends 5 to 10 million dollars annually to research and develop new technologies. Doc. 37 ¶ 13. $OWKRXJK $PLPRQ KDV IDLOHG WR DOOHJH VSHFL¿FDOO\ KRZ PXFK LW spent on the Source Code in question, or the current value of the Source Code, in light of the RWKHU LQIRUPDWLRQ SURYLGHG $PLPRQ KDV DOOHJHG VX FLHQW IDFWV WR SODXVLEO\ DVVHUW WKDW WKH Source Code is a trade secret. a. Hollyland’s additional argument In Hollyland’s brief, it submits various exhibits to show that the Source Code was publicly available and therefore not a trade secret. See Doc. 66 at 23–25. However, while Hollyland will have the opportunity in the future to contest the validity of Amimon’s assertion that the Source Code is a trade secret, at this point in the litigation process the Court may not rely on extraneous evidence submitted to rebut the allegations in the FAC. See Brass, 987 F.2d at 150. Misappropriation Under the DTSA, “a party must show an unconsented disclosure or use of a trade secret by one who (i) used improper means to acquire the secret, or, (ii) at the time of disclosure, knew or had reason to know that the trade secret was acquired through improper means, under circumstances giving rise to a duty to maintain the secrecy of the trade secret, or derived from or through a person who owed such a duty.” Medidata Solutions, 2018 WL 6173349, at *4 (citations omitted). Improper means includes “inducement of a breach of duty to maintain secrecy,” like a contractual agreement not to disclose information. Id. (citations omitted). Amimon has alleged that defendants have misappropriated Amimon’s Source Code, altered it slightly, and installed it as a new binary code without authorization on Amimon chipsets. Doc. 37 ¶ 22. Defendants argue that Amimon has not alleged any details regarding the precise acquisition of the Source Code, including how it was acquired, who the individuals were, 21 or how they had access to Amimon’s Source Code; Amimon has only claimed that the Source Code has been acquired. Doc. 47 at 7. Furthermore, EC Pro argues that Amimon has not explained how EC Pro “knew” that any trade secrets were being used in the products. AOWKRXJK $PLPRQ GRHV QRW PDNH WKHVH VSHFL¿F DOOHJations, the facts it does provide are VX FLHQW WR SODXVLEO\ conclude that Hollyland and EC Pro misappropriated Amimon’s Source Code. Amimon has alleged that while its Source Code FDQ EH PRGL¿HG WKH FRPSLOHG ELQDU\ version that exists publicly cannot. Doc. 37 ¶¶ 16–17. It has alleged that it does not disclose, sell or distribute its Source Code QRU LV LW GLVFORVHG LQ DQ\ SDWHQW ¿OLQJ RU WHFKQLFDO SXEOLFDWLRQ Id. ¶ 18. After examining one of the Hollyland products that was being sold by EC Pro, it discovered that the product had a compiled version of the Source Code that had been slightly PRGL¿HG Id. ¶ 31. 7DNHQ DV D ZKROH WKHVH IDFWXDO DOOHJDWLRQV DUH VX FLHQW, even if minimally so, to plausibly allege that defendants have misappropriated Amimon’s trade secret. B. Copyright Infringement To state a claim for copyright infringement, a plaintiff must allege that “(1) [the] defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiff’s.” Ritani, LLC v. Aghajayan, 880 F. Supp. 2d 425, 441–42 (S.D.N.Y. 2012); see also Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010). Furthermore, courts in the Second Circuit have held that a plaintiff must allege “(1) which specific original works are the subject of the copyright claim, (2) that the plaintiff owns the copyrights in those works, (3) that the copyrights have been registered in accordance with the statute, and (4) by what acts during what time the defendant infringed the copyright.” Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992). 22 Amimon’s FAC adequately alleges a copyright infringement claim. Defendants argue that Amimon has not alleged evidence of defendants accessing Amimon’s Source Code, and therefore Amimon has not pled sufficient facts to rise above mere speculation that defendants “actually copied” the Source Code. Docs. 42, 53 at 15–16. Proof of access to the copyrighted work is a way that a plaintiff can provide indirect evidence that the defendant actually copied the work when direct evidence of copyright infringement is not available. See Boisson v. Banian, Ltd, 273 F.3d 262, 267 (2d Cir. 2001) (citing Laureyssens v. Idea Grp., Inc., 964 F.2d 131, 140 (2d Cir.1992)). Importantly, this is evidence that must be provided in order for a plaintiff to successfully prove a copyright infringement claim, rather than withstand a motion to dismiss. See Jorgensen v. Epic/Sony Records, 351 F.3d 46 (2d Cir. 2003) (appeal of summary judgment decision). 7 As discussed supra, Amimon has alleged that the copyrighted Source Code exists on the chipsets that Hollyland is selling through EC Pro, and that Amimon never provided the chipsets or Source Code to Hollyland or EC Pro. Doc. 37 ¶ 31. These allegations are sufficient to allege that defendants actually copied Amimon’s copyrighted Source Code. Relatedly, defendants argue in the reply that Amimon failed to meet the fourth prong of Kelly, because it only asserts that there must have been a conspiracy or a meeting of unknown parties, but does not allege specific acts or a specific time when the defendants infringed on the copyright. Doc. 47 at 8. However, for the same reasons just discussed, Amimon’s allegations 7 All of the cases cited by Defendants to support this argument were determinations made on the facts, not on the pleadings: Jamison Bus. Sys., Inc. v. Unique Software Support Corp., No. CV 02-4887 (ETB), 2005 WL 1262095 (E.D.N.Y. May 26, 2005) (Rule 52 motion); Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (review of turn-over order); Bus. Trends Analysts, Inc. v. Freedonia Grp., Inc., 887 F.2d 399 (2d Cir. 1989) (appeal from trial court ruling on the merits); Well-Made Toy Mfg. Corp. v. Go a Int’l Corp., 210 F. Supp. 2d 147 (E.D.N.Y. 2002) (decision after trial). 23 regarding the similarities between its Source Code and that on the chipsets sold by EC Pro are sufficient at this point in the proceeding. Defendants further argue that Amimon has failed to allege “sufficient similarity” between its copyrighted Source Code and their own. Quoting Peter F. Gaito Architecture, LLC v. Simone Development Corp., defendants argue that “a copyright infringement claim must be dismissed where ‘plaintiffs have failed to allege that a substantial similarity exists between [defendants’] work and the protectable elements of [plaintiff’s].’” Docs. 42, 53 at 14 (quoting 602 F.3d 57 (2d Cir. 2010)). However, that case was one where “the works in question [were] attached to [the] plaintiff’s complaint” and so it was “entirely appropriate for the district court to consider the similarity between those works in connection with a motion to dismiss, because the court [had] before it all that [was] necessary in order to make such an evaluation.” Peter F. Gaito Architecture, 602 F.3d at 64. The court specifically acknowledged “that there can be certain instances of alleged copyright infringement where the question of substantial similarity cannot be addressed without the aid of discovery or expert testimony.” Id. at 65 (citing Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 713 (2d Cir. 1992)). Unlike Peter F. Gaito Architecture, where the claim was for infringement of design for a mixed-use development of a parcel of land, Computer Assocs. Int’l, similar to this case, was about infringement of a computer software program. 982 F.2d 693. Amimon has not provided the underlying Source Code or the source code found on the chipset Amimon examined at this time, nor is Amimon required to provide this information to withstand a motion to dismiss. See Rosenberg v. Metropolis, Inc., No. 18 Civ. 4830 (AKH), 2018 WL 11226075, at *2 (S.D.N.Y. Oct. 17, 2018) (“Although a plaintiff must identify with particularity the copyrightable elements of [its program] that it contends were infringed in order to prevail on its claim, it need not plead such detail at [the motion to dismiss] 24 stage of the litigation.” (quoting Software For Moving, Inc. v. Frid, No. 9 Civ. 4341 (DLC), 2010 WL 2143670, at *3 (S.D.N.Y. May 27, 2010))). Since “a motion to dismiss does not involve consideration of whether a plaintiff will ultimately prevail on the merits, but instead solely whether the claimant is entitled to offer evidence in support of [its] claims,” and additional evidence is necessary to determine whether a substantial similarity exists between the two source codes, the motion is denied. 8 Peter F. Gaito Architecture, 602 F.3d at 65. C. Statute of Limitations In Hollyland’s brief in support of its motion, it argues that the statute of limitations for Amimon to bring a misappropriation or copyright infringement claim has expired. Doc. 66 at 21. While courts cannot ordinarily decide a statute of limitations defense on a motion to dismiss, “courts in this district have made an exception where (1) the complaint facially shows QRQFRPSOLDQFH ZLWK WKH OLPLWDWLRQV SHULRG DQG WKH D UPDWLYH GHIHQVH FOHDUO\ DSSHDUV RQ WKH face of the pleadings.” Essex Cap. Corp. v. Garipalli, No. 17 Civ. 6347 (JFK), 2018 WL 6618388, at *2 (S.D.N.Y. Dec. 18, 2018) (citing Tesla Wall Sys., LLC v. Related Cos., L.P., 17 Civ. 5966 (JSR), 2017 WL 6507110, at *6 (S.D.N.Y. Dec. 18, 2017)); see also McKenna v. Wright, 386 F.3d 432, 436 (2d Cir. 2004) (statute of limitations bar warrants 12(b)(6) dismissal “if the defense appears on the face of the complaint”). “:KHUH D SODLQWL ’s ‘claims are timeEDUUHG RQ WKH IDFH RI LWV RZQ FRPSODLQW >SODLQWL @ KDV WKH EXUGHQ RI SOHDGLQJ IDFWV VX FLHQW WR establish that the statutes of limitations should be tolled.’” Essex Cap., 2018 WL 6618388, at *2 8 To the extent defendants argue Amimon is required to provide access to the complete copyright to adequately plead a copyright infringement claim, they are incorrect. Defendants argue that “[a]lleging a registered copyright only IXO¿OOV WKH SUHFRQGLWLRQ WKDW LW KROGV D UHJLVWHUHG FRS\ULJKW ´ 'RF DW %XW WKLV LV SUHFLVHO\ WKH SRLQW—all that is UHTXLUHG RI D SODLQWL DW WKH SOHDGLQJV VWDJH LV WR DOOHJH WKDW LW KROGV D UHJLVWHUHG FRS\ULJKW QRW to provide the copyright itself. See Kelly, 145 F.R.D. at 36. At a later point, Amimon will have to provide the copyrighted material in order to determine if an infringement has occurred. However, that is an analysis for a later date and not necessary to survive a motion to dismiss. 25 (quoting VoiceOne Commc’ns, LLC v. Google Inc., No. 12 Civ. 9433 (PGG), 2014 WL 10936546, at *7 (S.D.N.Y. Mar. 31, 2014)). A party cannot bring a claim under the DTSA “later than 3 years after the date on which the misappropriation with respect to which the action would relate is discovered or by the exercise of reasonable diligence should have been discovered.” 18 U.S.C. § 1836(d). H VWDWXWH of limitations to bring a trade secrets misappropriation claim under New York state law is also three years. See N.Y. C.P.L.R. § 214(4); IDT Corp. v. Morgan Stanley Dean Witter & Co., 907 N.E.2d 268 (N.Y. 2009); Andrew Greenberg, Inc. v. Svane, Inc., 830 N.Y.S.2d 358 (N.Y. App. Div. 2018). H VWDWXWH RI OLPLWDWLRQV IRU D copyright infringement claim, likewise, is three years. 17 U.S.C. § 507(b). Hollyland argues that the statute of limitations to bring either a trade secret or copyright infringement claim began when Hollyland was issued a patent in China in 2016, for a product that used Amimon’s chipset as a component. Doc. 66 at 21. Citing Zirvi v. Flatley, Hollyland argues that “[t]he existence of a patent application or a public patent puts parties on notice of their existence and therefore starts the clock on the limitations period.” 433 F. Supp. 3d 448, 459 (S.D.N.Y. 2020). 6LQFH LW KDV EHHQ ¿YH \HDUV VLQFH WKH SDWHQW ZDV ¿OHG DQG LVVXHG +ROO\ODQG argues that Amimon’s claim is outside the three-year statute of limitations for its trade secret misappropriation and copyright infringement claims. Hollyland’s argument is lacking for a number of reasons. To begin, Hollyland has once DJDLQ FRQÀDWHG WKH FKLSVHW ZLWK WKH 6RXUFH &RGH +ROO\ODQG¶V DOOHJHG SDWHQW LV for a device that incorporated Amimon’s chipset. Doc. 66 at 4. But Amimon has not alleged misappropriation and copyright infringement of its chipset, but rather of the underlying Source Code that is then put on the chipset. See Doc. 44 at 10. Furthermore, for a claim to be dismissed due to a statute 26 of limitations, the claim must clearly be time-barred on the face of the complaint. Essex Cap. Corp., 2018 WL 6618388, at *2. Amimon has not alleged any facts to suggest that the claim is time-barred. Rather, Hollyland has raised a new factual question of whether the existence of its patent LV VX FLHQW WR EHJLQ WKH WROOLQJ RI WKH statute of limitations. LV is not the appropriate stage in the proceeding to determine whether Hollyland’s patent starts the clock for the statute of limitations. See Zirvi ) 6XSS G DW ¿QGLQJ WKDW WKHUH ZHUH ³PXOWLSOH HYHQWV WKDW WKH SODLQWL V WKHPVHOYHV GHVFULEHG LQ WKH &RPSODLQW WKDW WULJJHUHG WKH VWDWXWH RI OLPLWDWLRQV´ Because it is not obvious on the face of Amimon’s complaint that the statute of limitations has tolled, the motion is denied. D. Unfair Competition – Misappropriation of Skills and Expenditures Amimon’s final claim is for unfair competition due to misappropriation of skills and expenditures. Doc. 37 ¶¶ 79–87. Defendants argue that the unfair competition claim is duplicative of the trade secrets claim because both are based on the same set of facts. Docs. 42, 53 at 17. Defendants cite to Uni-Systems, LLC v. U.S. Tennis Ass’n, Inc., which dismissed an unfair competition claim without prejudice on the basis that it was duplicative of a misappropriation of trade secrets claim. 350 F. Supp. 3d 143 (E.D.N.Y. 2018). Although one approach in the Second Circuit has been to dismiss unfair competition claims when they are duplicative, another has been to simply analyze the claims together. See Bancorp Servs., LLC v. Am. Gen. Life Ins. Co., No 14 Civ. 9687 (VEC), 2016 WL 4916969, at *10 (S.D.N.Y. Feb. 11, 2016) (“Courts often analyze misappropriation of trade secret and confidential information and unfair competition claims together.”). Rather than dismiss the claim outright, the Court will follow the latter approach and consider the claims together. 27 IV. CONCLUSION For the foregoing reasons, Hollyland and EC Pro’s motions are DENIED. H SDUWLHV DUH directed to attend a telephonic initial pretrial conference on December 15, 2021, at 3:30 PM. H parties are to dial (877) 411-9748 and enter access code 3029857# when prompted. H &OHUN RI the Court is respectfully directed to terminate the motions, Doc. 41, 52, and 65. It is SO ORDERED. Dated: November 30, 2021 New York, New York Edgardo Ramos, U.S.D.J. 28

Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You should read the full case before relying on it for legal research purposes.

This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.