Copyright Law: Seventh Circuit Slaughters True Crime Writer On Motion To Dismiss

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.

In 2012, defendant Robert Snow wrote Slaughter on North LaSalle.  Slaughter told the story of Sissom's investigation, subsequent developments and was critical of Sissom.   At the heart of Sissom's copyright claims were passages in Slaughter recounting and paraphrasing the investigation described in Sissom's book.

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?

Snow's defense lawyers relied on the "incorporation by reference" doctrine to bring a motion to dismiss the complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure:

Rule 12. Defenses and Objections: When and How Presented; Motion for Judgment on the Pleadings; Consolidating Motions; Waiving Defenses; Pretrial Hearing

(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:

 

(1) lack of subject-matter jurisdiction;

(2) lack of personal jurisdiction;

(3) improper venue;

(4) insufficient process;

(5) insufficient service of process;

(6) failure to state a claim upon which relief can be granted; and

(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.

 

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 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
 

Copyright Law - Seventh Circuit: Does Kanye West Kill You or Make You Stronger?

Music Copyrights,  Access, Substantial Similarity, Song Lyrics, Motion to Dismiss

Peters v. Kanye West, 692 F.3d 629 (7^th Circuit August 20, 2012).  Vince P. gave song “Stronger” quoting Nietzsche to Joe Monopoly.  Monopoly agreed to rep him if a label financed.  Deal fell through.  Less than a year later Kanye West comes out with megahit titled “Stronger” quoting Nietzsche.  Joe Monopoly is a producer on the album.   District court finds the songs not similar, affirms the district court’s dismissal following a Rule 12(b)(6) motion to dismiss.  Lyrics in opinion, good discussion of access.

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Copyright Law - Ninth Circuit: Copyright As Intentional Tort Against a Shoe Supports Personal Jurisdiction

Personal Jurisdiction, Copyright Infringement, Motion to Dismiss

Washington Shoe Company v. A-Z Sporting Goods Inc., 2012 WL 6582345 (9^th Circuit December 17, 2012).  Long-time Arkansas client of Washington Shoe Co. buys Chinese knockoffs of Washington Shoe products.  Sells in retail store in Arkansas next to real Washington Shoe products.  Get cease and desist letter.  Sells knockoffs to thrift store.   Washington Shoe brings suit in Washington State.  District court dismisses for lack of personal jurisdiction.  Ninth Circuit reverses.  Holds that intentional tort is expressly aimed at copyright holder in Washington State.  This is part of a trend of dramatically expanding the concept of personal jurisdiction over defendants in copyright infringement cases who satisfy none of the traditional criteria for long-arm jurisdiction.

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Copyright Law - Second Circuit: Are Judges More Discerning Than Ordinary People?

Motion to Dismiss, Copyright in Literary Works, Substantial Similarity, “More Discerning Ordinary Observer” Test

DiTocco v. Riordan, 2012 WL 4016898 (2d Circuit September 13, 2012)(summary order).  The district court dismissed a copyright infringement claim after determining that the series of five Percy Jackson and the Olympian books were not substantially similar to plaintiff’s books The Hero Perseus and Atlas’ Revenge.   The Second Circuit affirmed, applying the “more discerning ordinary observer” test which requires an extraction of unprotectable elements and answering the question of whether the protectable elements, standing alone, are substantially similar, with an eye to “the total concept and feel”.  Since “what is required is only a visual comparison of the works” and the district court did not err in its finding of lack of substantial similarity, the dismissal was affirmed.

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Copyright Law - Second Circuit: Can Lamp Fixture Elements Be Conceptually Separable?

Copyrightability of Useful Objects, Merger Doctrine, Separability, Light Fixtures and Lamps, Motion to Dismiss Copyright Infringement Action

Aqua Creations USA Inc. v. Hilton Worldwide, Inc., 2012 WL 2687957 (2d Cir. July 9, 2012)(unpublished summary order).  Here the Second Circuit affirmed the dismissal of an amended complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim.   Plaintiff was a manufacturer of lamp fixtures.  The Copyright Office denied Plaintiff registration for the lamp fixtures.  Useful items are not generally copyrightable.  An exception is only to the extent that a design “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”.  The court noted that no aspect of the lamp could be physically separated, citing the famous Mazer v. Stein, 347 U.S. 201 (1954)(copyrighted statue of a dancer as a lamp base remained protectable).   The court then reviewed “conceptual severability” (also known as the “merger doctrine”) – “if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements.”   Conversely “where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.”   Pleading tip:  the court chided plaintiff for pleading in a conclusory manner that elements were conceptually and physically separable, but failing to identify any such elements, even on appeal.  In drafting a complaint, a plaintiff should specify elements that are either physically or conceptually separable.

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Copyright Law - Second Circuit: Are Prom Dresses Useful?

Prom Dress, Copyrightability, Useful Articles, Decorative Elements, Separability, Motion to Dismiss

Jovani Fashion Ltd. v. Fiesta Fashions, 2012 WL 4856412 (2d Circuit October 15, 2012).  Articles of clothing are “useful articles” not protected by Copyright.   Design and decorative elements were neither physically nor conceptually separable and thus not protectable.   District court’s dismissal on Rule 12(b)(6) motion affirmed.

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Copyright Law - Seventh Circuit: Expedited Summary Judgment Is A Pain in the Butt

Copyright Infringement, Fair Use as Affirmative Defense, Rule 12(b)(6) Motion to Dismiss, Parody, Audiovisual Works and the Incorporation by Reference Doctrine

Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7^th Cir. June 7, 2012).  Plaintiff  Brownmark produced a video celebrating anal sex called “What What In the Butt” performed by Samwell.

South Park produced a parody.  According to the court, the parody took the “heart” of the Brownmark work.  The South Park video was this:  the country of Canada went on strike because it was not getting “internet dollars” from viral videos.   A South Park character named Butters made a video to go viral and buy off Canada.  You can watch both on YouTube.

 

The interesting part about this case (aside from the original that is more comic and disturbing than the parody), is that the plaintiff did not attach its work to the complaint nor did it attach the allegedly infringing work, yet a motion to dismiss was granted on the affirmative defense of fair use (parody).  Defendant South Park responded to the motion to dismiss by attaching its parody and the original video to a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure (FRCP).  Ordinarily, a district court may not consider materials extraneous to the complaint without converting the motion to a motion for summary judgment under FRCP 56.  See FRCP 12(d).  Under the “incorporation by reference” doctrine, the district court might be free to look at the videos because the complaint had incorporated the videos by reference.  Since the parties declined to brief the issue, the court saved it for another day.  Instead the court treated the motion as one for summary judgment, noted that Brownmark failed to request discovery and failed to provide a list of possible evidence that would support its infringement claim.   On appeal, Brownmark’s broad list of discovery that it would have sought gives Brownmark “the appearance of a ‘copyright troll’” and the 7th Circuit was “confident” that the district court would have “refused to grant such expansive demands”. The 7th Circuit noted that South Park had “miscaptioned” its motion and ought to have said that it was a summary judgment motion. Since only two videos were necessary to review and grant summary judgment, Brownmark was not prejudiced by the lack of notice ordinarily afforded on a motion for summary judgment. Practice tip: this case shows a willingness of federal courts to “cut to the chase” in a case where plaintiff has not articulated early and clearly the need for additional discovery and where plaintiffs have not clearly put the infringement: the original and the allegedly infringing material before the court in its complaint.

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Copyright Lawsuit is Alleged To Be Liberty Media Gay Porn Extortion Plot Against University of Michigan, Manhattan College

On February 11, 2011, a woman acting pro se made a motion to dismiss or to sever the claims against her based on the plaintiff's failure to allege "purposeful availment" of the Plaintiff's business in California.  From her motion:

    "Plaintiff Liberty Media Holdings, LLC ("Plaintiff') is a producer of

9      pornographic materials, who has filed this Complaint in an effort to extort money from
10    various individuals, including Ms. Lewis. The basis of Plaintiff's lawsuit is that
11    Ms. Lewis, or someone using her IP address, accessed explicit internet content-
12    purportedly, one movie-by "bypassing the necessary payment and login steps required
13    of users." (Complaint,')[ 2.) But Plaintiff refuses to provide any evidence that Ms. Lewis
14    accessed any alleged movie.
 
The well-written motion is in the third person, casting doubt on whether Ms. Lewis drafted the motion or was herself represented by a John Doe attorney.
 
In the same case, Liberty Media Holdings LLC v. Does 1-59, 2011 292 WL 292128 (S.D. Cal. Jan. 25, 2011), the court ordered disclosure of personal information from University of Michigan and Manhattan College among others.

The movant claims she is an electrician from New Jersey and never accessed http://www.corbinfisher.com/.

The complaint claims that the Does accessed its served and obtained copyrighted materials.

The SD Cal judge is giving the colleges and the individuals the opportunity to quash the subpoena.

12 b Motion to Dismiss Liberty Media Holdings v. John Does 1-59

Corbin FisherFrom Wikipedia, the free encyclopediaJump to: navigation, search


According to Wikipedia, Corbin Fisher is an alias.   The information on Wikipedia also suggests that http://www.amateurcollegemen.com/ may not be strictly amateur.

From Wikipedia:

Corbin Fisher
Logo
Type LLC
Industry Film
Genre Film studio
Founded 2004
Founder(s) Corbin Fisher
Headquarters San Diego, CA, USA
Key people Jason Gibson, CEO
Brian Dunlap, vice president
Marc Randazza, general counsel
Products Gay pornography
Website CorbinFisher.com
Corbin Fisher is an American film studio with a focus in gay pornography. The studio maintains a website at CorbinFisher.com; other web properties of the company include AmateurCollegeMen.com, AmateurCollegeSex.com and ShopCorbinFisher.com.[1] The company also produces pornographic photo books. The company is based in San Diego, California.[2] The founder of Corbin Fisher, who goes by the same name as an alias, started filming men and making videos during his spare time, and started the website CorbinFisher.com in 2004. AmateurCollegeMen.com was also begun in 2004, and the company grew quickly. It launched AmateurCollegeSex.com in 2006, and the company continued to focus on a niche of straight male actors performing in gay pornography.

In September 2008, the company began offering health benefits, scholarships, and 401(k) pension plans to actors who signed exclusive contracts with the company. The company released its first full-length DVD in September 2008, and a photobook Playing Hard to Get was produced in 2009. In 2009, the gay Europorn studio Bel Ami chose Corbin Fisher as its first collaboration on a production with a studio based in the United States. Free speech attorney Marc Randazza was brought on as the company's general counsel in 2009, and he helped bring about a settlement with a cellphone content provider after Corbin Fisher brought a copyright infringement claim against the provider. In November 2009, Corbin Fisher offered a contract deal to Levi Johnston, father of Republican party politician Sarah Palin's grandchild.

Corbin Fisher's products have been well-received, both by others within the industry and by media commentators. In 2006, Corbin Fisher won an award in the category of Adult Gay Megasite at the Cybersocket Awards. Since then, it has been recognized with multiple nominations for awards within the industry; both for its video content and websites. The company received the Free Speech Coalition Award of Excellence at the 2010 Cybersocket Awards.

Marc Randazza, the attorney representing Liberty Media, is Corbin Fisher's General Counsel and a blogger who edits The Legal Satyricon.

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Copyright Law: NYU Bobcat May Not Be "Work For Hire" Rules EDNY Judge

NYU Bobcat Logo

In Fleurimond v. New York University, --- F.Supp.2d ----, 2010 WL 2773089 (EDNY July 14, 2010), Judge Spatt found that the question of whether the NYU Bobcat logo is a work for hire is a question of fact.

Defendant NYU made a motion for judgment on the pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure.   NYU's motion attached the designer's W-2 form and other documents supporting the contention that Fleurimond was an employee of NYU and created the Bobcat within the scope of her employment.   Judge Spatt pointed out that such documents could not be submitted on a Rule 12(c) pre-answer motion for judgment since only documents relied on by the complaint are appropriately considered at that stage of the pleadings:

NYU contends that the W-2 form and the emails between Fleurimond and several NYU employees conclusively establish that Fleurimond developed Orion while she was an NYU employee, acting within the scope of her employment. However, in the Court's view, these documents may not be considered on a Rule 12(c) motion for judgment on the pleadings. These documents were neither referenced in Fleurimond's complaint, nor relied upon in drafting the complaint. It is equally clear that they are not documents of which the Court may take judicial notice.



In the Daily News coverage of the case here, Fleurimond is described as a "freelancer".   Judge Spatt found that Fleurimond's allegation that she was the "sole creator" of the Bobcat logo was sufficient to render her claim of authorship "plausible" under the Twombly and Iqbal pleading standards.

Under 17 USC 201(a), copyright vests initially in the author of a work.

17 USC 201(b) provides:

(b) Works Made for Hire. — In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.


Judge Spatt applied the work-for-hire test (part of federal common law created in the landmark CCNV v. Reid case):

the hiring party's right to control the manner and means by which the product is accomplished ... the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. Community for Creative Non-Violence v. Reid, 490 U.S. at 751-52.

Judge Spatt's conclusions here:

Even with the benefit of the materials NYU appended to its reply papers, the Court is not in a position, at this stage, to comprehensively assess these factors. The W-2 form and the emails seem to suggest that Fleurimond was an NYU employee acting within the scope of her employment when she developed Orion. However, the Court is not prepared to conclusively determine these issues without giving Fleurimond an opportunity to conduct discovery.


In summary, the Court finds that Fleurimond has offered a plausible copyright infringement claim. Her allegation that she is the sole creator of Orion suggests that she could be the legal owner of the Orion copyright. Evidence that exists outside the four corners of the complaint reflects that NYU may be the rightful copyright owner under Section 201(b). However this is not an issue that can be addressed on a Rule 12(c) motion and the Court declines to convert NYU's motion to one for summary judgment. Fleurimond v. New York University L 2773089, 3 -4 (E.D.N.Y. 2010)

I discuss the Work for Hire Doctrine in Copyright Litigation Handbook - Chapter 8: Copyright Ownership and Licensing Litigation and in Chapter 13:  Answer and Defenses.

Earlier Copyright Litigation Blog posts relating to works for hire here and here.

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Second Circuit - Architectural Works: Noninfringement of Copyright on A Rule 12(b)(6) Motion

In Peter F. Gaito Architecture, LLC v. Simone Development Corp., 2010 WL 1337225, 1 (2d Cir. April 5, 2010), the Second Circuit held for the first time that a district court may compare the registered copyrighted materials annexed to the complaint to the allegedly infringing materials, enter a finding of non-infringement as a matter of law, and throw the case out on a Rule 12(b)(6) motion for failure to state a claim.

Ordinarily the facts alleged on the face of a Rule 12(b)(6) motion are assumed to be true in the earliest stage of a litigation.

District courts within the Circuit had been throwing cases out for a while, using the Second Circuit's "good eyes and common sense" standard to determining whether any reasonable juror could find the infringing materials to be "substantially similar".

Although the court tried to limit the holding to the facts involving very dissimilar buildings, the holding is likely to have a much broader application.