When a plaintiff sues you for copyright infringement but does not attach the allegedly infringed materials to the complaint, but refers to the materials in the complaint, can you move to dismiss the complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure?
The Seventh Circuit seems to say both "no" and "yes" in Sissom v. Snow, --- Fed. Appx. --- (October 1, 2015).
In this case, the district court considered the copyright claims of a journalist Carol Sissom who'd written a 2006 book called the LaSalle Street Murders about her investigation of a cold case that led to the case being reopened.
A problem for Snow's lawyers: how to get rid of the case quickly and show that there was no copyright infringement when Sissom had failed to attach the allegedly infringed materials and the allegedly infringing materials?
(b) How to Present Defenses. Every defense to a claim for relief in any pleading must be asserted in the responsive pleading if one is required. But a party may assert the following defenses by motion:
(7) failure to join a party under Rule 19.
Rule 12(b)(6) is a big shortcut. It saves the defendant the time and money of having to prepare a responsive pleading (answer and counterclaims).
So Snow's lawyers made a motion to dismiss the complaint pursuant to Rule 12(b)(6) and attached Sissom's book, Snow's book and did a comparison showing that there was no copyright infringement.
The district court granted the motion and dismissed the case. Relying on the "incorporation by reference" doctrine, the district court relied on the books referred to in the complaint, but actually supplied by Snow's motion to dismiss. Sissom appealed to the Seventh Circuit.
The Seventh Circuit found that the district court erred by considering materials not attached to the complaint on a Rule 12(b)(6) motion and stated that the motion should have been considered as a motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure.
The Seventh Circuit found the error to be harmless, and affirmed the dismissal of Sissom's claims against Snow with prejudice.
Not mentioned in the Seventh Circuit's decision is Rule 12(d) of the Federal Rules of Civil Procedure which says:
(d) Result of Presenting Matters Outside the Pleadings. If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity to present all the material that is pertinent to the motion.
Using the incorporation by reference doctrine is, as the Seventh Circuit's decision shows, a tricky path. Practice Tip: In making a motion to dismiss pursuant to Rule 12(b)(6), consider asking in the alternative (in case your motion is not granted) for permission to move for summary judgment also under Rule 56. This will give the court the flexibility to move the case quickly if it feels that additional evidence should be reviewed. Moving for summary judgment requires some additional work and time (preparation of a list of undisputed facts and law for example) and a longer briefing schedule, but may be a surer route to a quick and lasting victory.
My book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) contains many practice tips designed to assist attorneys in making litigation decisions and engaging in motion practice. Unlike other works dedicated to copyright law, it seeks to aid the practitioner by showing how to work with clients and investigations, and to navigate the Copyright Office and courts in handling litigation-related matters.
Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd