Pleading Copyright Infringement: What To Do When Registering Your Copyrights After Starting A Lawsuit?

In a recent case in the Southern District of New York, Judge Robert Sweet cited Copyright Litigation Handbook for the proposition that a plaintiff that started a lawsuit without registered copyrights ought to promptly supplement the complaint to avoid dismissal.   In this case, Judge Sweet dismissed the copyright infringement complaint for failure to state a claim under Rule 12(b)(6) of the Federal Rules of Civil Procedure.


Rule 15 of the Federal Rules of Civil Procedure governs amendments and supplements to a complaint.   Here's the cite.


MATILDE GATTONI, Plaintiff, v TIBI, LLC, Defendant., 16 CIV. 7527 (RWS), 2017 WL 2313882, at *3 [SDNY May 25, 2017]

 

Because Gattoni has alleged only that the registration for the allegedly infringed film is pending, and because no application has been made by Gattoni to amend the Complaint if and when the Photograph became registered, Gattoni has not properly pled the pre-requisite element of a copyright infringement claim, and the Complaint's cause of action for copyright infringement necessarily fails to state a claim. The Defendant's motion to dismiss the copyright infringement claim is granted without prejudice. See Membler.com LLC v. Barber, No. 12–CV-4941 JS GR, 2013 WL 5348546, at *5 (E.D.N.Y. Sept. 23, 2013) (explaining that Pyatt v. Raymond, 462 F. App'x 22 (2d Cir. 2012) now stands for the proposition that post-commencement registrations will not automatically be read into the complaint and the plaintiff should seek amendment); Raymond J. Dowd, Copyright Litigation Handbook § 7:1 (2d ed. 2012) (“[I]f a plaintiff registers copyrights after the filing of a complaint but does not supplement the complaint pursuant to Rule 15(d) of the Federal Rules of Civil Procedure, the court may dismiss the case.”); Patry on Copyright § 19:4 (2013) (“Where plaintiff has received registrations subsequent to the filing of the complaint, the complaint should be amended.”).

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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 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 - Second Circuit - Copyrightability of a Light Fixture Revisited?

Ochre LLC v. Rockwell Architecture, Planning and Design, P.C., 2013 WL 3606123 (2d Cir. 2013)

 

Ochre's Arctic Pear "Round 45" Chandelier

 

In any suit for copyright infringement, a plaintiff must establish its ownership of a valid copyright and that the defendant copied the copyrighted work.  Copyright protection does not subsist in useful articles.  Nor can aesthetic or artistic features in works of applied art or industrial design be copyrighted if the features cannot be identified separately from the useful article.  But where a useful article incorporates a design that is “physically or conceptually separable” from an underlying useful product, the object is eligible for copyright protection.  The Second Circuit affirmed the district court’s finding that facts were not pleaded that made physical or conceptual separability plausible.  The Second Circuit noted that after two opportunities to amend the complaint, the plaintiff could not articulate why the elements of the design to which it pointed do not “reflect a merger of aesthetic and functional considerations.”

Ron Coleman of the Likelihood of Confusion blog represented the plaintiff and has posted the pleadings online.

To read the Summary Order by Judges Pooler, Lohier, Jr., and Carney, click here.



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 Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2012-2013) by Raymond J. Dowd
 

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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Pleadings and Iqubal - How Courts Are Interpreting Rule 12(b)(6)

Good article here in The Federal Lawyer on Iqubal in the Circuit courts by John McCarthy, President of the SDNY Chapter of the Federal Bar Association.

Disclosure: I am on the Editorial Board of The Federal Lawyer and serve as a Federal Bar Association Vice President for the Second Circuit.  I still think it's a good article.  McCarthy found 5,200 cases citing Iqubal, 242 of which were appellate decisions.

First Sale Doctrine as A Defense to Copyright Infringement (Ch 12)

When you purchase a book, you can read it, then resell it to someone else. There's quite a traffic in used books. Other copies of works subject to copyright may be resold, such as a CD containing a sound recording.

In Brilliance Audio, Inc. v. Haights Cross Communications, Inc. ---F.3d ---, 2007 WL 188103 (6th Cir. 2007) a case discussed on the Patry Copyright Blog, the Sixth Circuit analyzed the first sale doctrine in both the trademark and the copyright context. Brilliance produced audiobooks. Haights Cross purchased a copy of Brilliance's sound recording. It then repackaged the copy, and offered the copy for rental.

Generally speaking, one may rent a copyrighted work that one has purchased. The two exceptions, elaborated at 17 U.S.C.A. Section 119 involve sound recordings and software. In other words, if you buy a musical recording or a copy of Microsoft Office, you can't rent those copies out.

The Sixth Circuit found that on the trademark claims, the plaintiff's actions fell within two exceptions to the trademark first sale doctrine: (1) the plaintiff alleged a repackaging without adequate notice to the consumer and (2) the repackaged materials using the plaintiff's trademark were materially different from those produced and labelled by the plaintiff.

The Sixth Circuit also found that Section 119's rental exception to the first sale doctrine did not apply to sound recordings based on literary works, but only sound recordings based on musical works. The lone dissenting judge pointed the majority to the plain language of Section 119 which appears to ban rentals of all sound recordings.

The Sixth Circuit noted that this was a case of first impression. It will be interesting to see whether a rental market will suddenly spring up around the works of Bill Cosby, George Carlin, Richard Pryor, Robin Williams and other works of comic genius that do not incorporate music.

Procedural Note: The District Court dismissed plaintiff's claims on a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure "because the defense of first sale appeared on the face of the complaint." The Sixth Circuit construed the complaint broadly and in the light most favorable to the plaintiff and reversed. The Sixth Circuit did not criticize the maneuver of moving to dismiss under Rule 12(b)(6) based on a defense appearing on the face of the complaint.

Practice Tip: Where your client has legally purchased copies of works that were manufactured with the authority of the copyright holder, you may assert the first sale doctrine. If factual allegations appearing on the face of the complaint support assertion of the first sale doctrine, consider a motion to dismiss. NB. Be careful about resales in the U.S. of products manufactured abroad. The first sale doctrine may not in certain circumstances extinguish all distribution rights of the copyright holder in these products.

Defense of Equitable Estoppel in Copyright Litigation (CLH Ch 12)

Last weekend's visit to the Sagamore for the annual meeting of the New York State Bar Association's IP Law Section was well worth it. My publisher West arranged for a book signing. Special thanks to Debra Resnick of FTI Consulting, Joyce Creidy of Thomson Compumark, Marc Lieberstein of Pitney Hardin and Cathy Teeter of NYSBA for the warm welcome and the kind patronage. The Copyright Litigation Handbook t-shirts were a big hit, and several bar associations expressed interest in having me speak to their members.

On September 21, 2006, Judge Cedarbaum in the Southern District of New York made an interesting decision involving Ian Fleming's Chitty Chitty Bang Bang. Legislator 1357 Ltd v. Metro-Goldwyn-Mayer Inc., 2006 WL 2709783. Fleming wrote it just before he died. Before he died, he assigned the publishing and film rights to it to separate trusts, but the story was not published prior to his death. Later, a film was based on this short story. A film based on a copyrighted work is known as a "derivative work".

Judge Cedarbaum's decision decides fascinating issues of whether the short story was "posthumous" and interpretes the Copyright Act's provisions on heirs recapturing copyrights. Professor Patry has discussed those elements of the decision here. I would like to focus on that portion of the opinion discussing the defense of equitable estoppel. My recently-published Copyright Litigation Handbook discusses equitable estoppel in Chapter 12 "Answer and Defenses". Judge Cedarbaum carefully distinguishes between the defenses of laches and estoppel and notes that it is an open question whether or not the defense of laches is available in the Second Circuit.

Overview: Rule 12(b)(6) of the Federal Rules of Civil Procedure (FRCP) requires that certain defenses be asserted in the answer to a complaint, except for certain defenses that may be asserted in a motion, at the option of a pleader. Rule 8(c) of the FRCP provides the checklist of such defenses and specifies estoppel. The motion for partial summary judgment before Judge Cedarbaum was made under FRCP 56 which requires the court to examine all admissible evidence to determine whether "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." (citations omitted).

Decision: Plaintiffs moved for partial summary judgment. Defendants resisted, based on a defense of laches. The court found that defendant's laches arguments raised instead a "genuine issue of disputed fact" (and therefore a potentially valid defense of equitable estoppel) due to representations by plaintiffs after Fleming's death and lengthy delay in filing the action, as well as defendants' good-faith belief that plaintiffs viewed them as the owners of the film rights in the Work. The court noted that the defense of equitable estoppel applies when "the party to be estopped had knowledge of defendant's infringing conduct, and either intended that his own conduct be relied upon or acted so that the party asserting the estoppel has a right to believe it was so intended. Additionally, the defendant must be ignorant of the true facts and must rely on plaintiff's conduct to his detriment." Additionally "[u]nlike laches, equitable estoppel can be used to prevent a plaintiff from recovering prospective as well as past damages." (citations omitted).

The court contrasted a line of case law permitting equitable estoppel in copyright cases with a line of cases rejecting laches as the equitable equivalent of a statute of limitations, and noting a three-way split in the various circuits on whether and how the laches defense is available, together with a discussion of the Second Circuit cases showing that the Second Circuit hasn't reached the question.

Practice Tip for Lawyers: Judge Cedarbaum's opinion provides a strong hook for defendants who can present solid evidence that they have published believing in good faith that they were entitled to do so. It also serves as a warning to defendants in copyright litigation that careful pleading of defenses is essential. At least in the Second Circuit, equitable estoppel may provide the most powerful defense.

To purchase the Copyright Litigation Handbook (West 2006), please go here and use OFFER NUMBER 523571.