Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC et al

Filing 67

MEMORANDUM Opinion and Order:For the foregoing reasons, the Tribune's motion to dismiss, R. 19, is denied. Signed by the Honorable Thomas M. Durkin on 3/25/2014:Mailed notice(srn, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
LEVEYFILM, INC., F/K/A DON LEVEY
STUDIO, INC.,
Plaintiff,

No. 13 C 4664

v.

Judge Thomas M. Durkin

FOX SPORTS INTERACTIVE MEDIA, LLC,
FOX SPORTS NET CHICAGO HOLDINGS,
LLC, COLLECTIVELY D/B/A
THEJERSEYCHASER.COM; CHICAGO
TRIBUNE COMPANY, LLC, TRIBUNE
INTERACTIVE, LLC, COLLECTIVELY D/B/A
CHICAGOTRIBUNE.COM,
Defendants.
MEMORANDUM OPINION AND ORDER
Leveyfilm, Inc.—a corporate vehicle for the business of photographer Don
Levey—alleges that Chicago Tribune Company, LLC, and Tribune Interactive, LLC
(the “Tribune”), used a photograph for which Leveyfilm held the copyright without
Leveyfilm’s permission in violation of the Copyright Act of 1976, 17 U.S.C. § 501,
and the Digital Millennium Copyright Act, 17 U.S.C. § 1202. See R. 1. Specifically,
in Count III Leveyfilm alleges that the Tribune removed information crediting the
photo to Don Levey and replaced it with a credit to the Tribune in violation of 17
U.S.C. §§ 1202(a) and 1202(b). R. 1 ¶¶ 44-54. The Tribune has moved to dismiss
Count III for failure to state a claim pursuant to Federal Rule of Civil Procedure
12(b)(6). R. 19. For the following reasons, the Tribune’s motion is denied.

Background
On January 26, 1986, the Chicago Bears defeated the New England Patriots
to win Super Bowl XX. R. 1 ¶ 21. The month prior, in hopeful anticipation of that
momentous victory, several Chicago Bears players participated in creation of a rap
song and related video entitled the “Super Bowl Shuffle,” which was produced by
Dick Meyer. Id. ¶ 10-14. Meyer hired Levey to take still photographs of the players,
and used a group photo that Levey took as the cover of the record album recording
of the song. Id. The Super Bowl Shuffle became part of American (or at least
Chicago’s) popular culture lore.
Leveyfilm alleges that Levey granted a license to Meyer to use the photo on
the cover of the album on condition that a credit line identifying Levey as the
photographer would accompany the photo. Id. ¶¶ 16-19. Leveyfilm also alleges that
Levey, through Leveyfilm and its predecessor corporate entities, retained the
copyright for the photo and sole authority to authorize use of the photo. Id. ¶¶16-19,
27-29. The back cover of the Super Bowl Shuffle album—the side that does not
include the photo at issue here—includes the following two credit lines, among
others: “Published by: Red Label Music Publishing, Inc., BMI © 1985;” and
“Photography: Don Levey, Don Levey Studio.” See R. 1-1 at 2-3.
In April 2013, Levey discovered that the Tribune had published the photo on
its website. R. 1 ¶ 24. The Tribune did not include any of the credits from the back
cover of the album. See R. 1-1 at 9. Instead, the Tribune included the following
credit line under the photo: “(Tribune file photo).” Id. Levey argues that the Tribune

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violated the Digital Millennium Copyright Act, 17 U.S.C. § 1202(a), by including the
“(Tribune file photo)” credit line under the photo, and violated 17 U.S.C. § 1202(b),
by failing to include the “Photography: Don Levey, Don Levey Studio” credit line
with the photo. See R. 1 ¶¶ 44-54.
Legal Standard
A Rule 12(b)(6) motion challenges the sufficiency of the complaint. See, e.g.,
Hallinan v. Fraternal Order of Police of Chi. Lodge No. 7, 570 F.3d 811, 820 (7th
Cir. 2009). A complaint must provide “a short and plain statement of the claim
showing that the pleader is entitled to relief,” Fed. R. Civ. P. 8(a)(2), sufficient to
provide defendant with “fair notice” of the claim and the basis for it. Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 555 (2007). This “standard demands more than an
unadorned, the-defendant-unlawfully-harmed-me accusation.” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009). While “detailed factual allegations” are not required, “labels
and conclusions, and a formulaic recitation of the elements of a cause of action will
not do.” Twombly, 550 U.S. at 555. The complaint must “contain sufficient factual
matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
Ashcroft, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570). “‘A claim has facial
plausibility when the plaintiff pleads factual content that allows the court to draw
the reasonable inference that the defendant is liable for the misconduct alleged.’”
Mann v. Vogel, 707 F.3d 872, 877 (7th Cir. 2013) (quoting Iqbal, 556 U.S. at 678). In
applying this standard, the Court accepts all well-pleaded facts as true and draws
all reasonable inferences in favor of the non-moving party. Mann, 707 F.3d at 877.

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Analysis
The Digital Millennium Copyright Act provides the following, in relevant
part:
(a) False Copyright Management Information.—No
person shall knowingly and with the intent to induce,
enable, facilitate, or conceal infringement—
(1) provide copyright management information that is
false, or
(2) distribute or import for distribution copyright
management information that is false.
(b) Removal or Alteration of Copyright Management
Information.—No person shall, without the authority of
the copyright owner or the law—
(1) intentionally remove or alter any copyright
management information,
(2) distribute or import for distribution copyright
management information knowing that the copyright
management information has been removed or altered
without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly
perform works, copies of works, or phonorecords,
knowing that copyright management information has
been removed or altered without authority of the
copyright owner or the law,
knowing, or, with respect to civil remedies under section
1203, having reasonable grounds to know, that it will
induce, enable, facilitate, or conceal an infringement of
any right under this title.
(c) Definition.—As used in this section, the term
“copyright management information” means any of the
following information conveyed in connection with copies
or phonorecords of a work or performances or displays of a
work, including in digital form, except that such term
does not include any personally identifying information
about a user of a work or of a copy, phonorecord,
performance, or display of a work:
(1) The title and other information identifying the
work, including the information set forth on a notice of
copyright.
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(2) The name of, and other identifying information
about, the author of a work.
(3) The name of, and other identifying information
about, the copyright owner of the work, including the
information set forth in a notice of copyright.
(4) With the exception of public performances of works
by radio and television broadcast stations, the name
of, and other identifying information about, a
performer whose performance is fixed in a work other
than an audiovisual work.
(5) With the exception of public performances of works
by radio and television broadcast stations, in the case
of an audiovisual work, the name of, and other
identifying information about, a writer, performer, or
director who is credited in the audiovisual work.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such
information or links to such information.
(8) Such other information as the Register of
Copyrights may prescribe by regulation, except that
the Register of Copyrights may not require the
provision of any information concerning the user of a
copyrighted work.
17 U.S.C. § 1202.
As an initial matter, the Tribune argues in a footnote that “the analog
notations on the back of the album jacket could not possibly constitute [copyright
management information, or “CMI,”] under any circumstances,” because the
notations are not “part of an automated copyright protection system, . . . digital, or
connected to the internet or electronic commerce.” R. 20 at 5 n.3. The plain
language of the statute, however, does not require any such connection. Moreover,
while some courts have wrestled with indications in the statute’s legislative history
that Congress intended CMI to be in digital form, see, e.g., IQ Group, Ltd. v. Wiesner
Pub., LLC, 409 F. Supp. 2d 587 (D.N.J. 2006), most courts in recent years have

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recognized that the plain language of the statute includes no such requirement and
have not reached an analysis of the legislative history. See Murphy v. Millenium
Radio Group LLC, 650 F.3d 295, 305 (3d Cir. 2011) (“[W]e find that CMI, as defined
in § 1202(c), is not restricted to the context of ‘automated copyright protection or
management systems.’”); Cable v. Agence France Presse, 728 F. Supp. 2d 977, 980-81
(N.D. Ill. 2010) (Manning, J.) (agreeing with several district courts that there is no
“textual support in favor of limiting the definition of [CMI]” to digitally recorded
information (citing Associated Press v. All Headline News Corp., 608 F. Supp. 2d
454, 461-62 (S.D.N.Y. 2009); Interplan Architect, Inc. v. C.L. Thomas, Inc., 2009 WL
6443117, at *5 (S.D. Tex. Nov. 13, 2009); Fox v. Hildebrand, 2009 WL 1977996, at
*3 (C.D. Cal. July 1, 2009))); see also Brown v. Stroud, 2011 WL 2600661, at *5
(N.D. Cal. June 30, 2011) (“A growing number of district courts have concluded that
CMI should be construed more broadly. . . . [and have not] limit[ed] the term CMI to
information that functions as part of an automated copyright management or
protection system.”). This line of case law contrary to the Tribune’s argument is
likely why the Tribune relegated the argument to a footnote. The Court will follow
the plain language of the statute, which does not define CMI in terms of an
“automated copyright protection system” or connection with digital media or the
internet.
The Tribune makes two other arguments based on the statutory definition of
CMI. First, the Tribune argues that the credit line “Photography: Don Levey, Don
Levey Studio” is not CMI because it “says nothing whatsoever about copyright or

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copyright ownership.” R. 20 at 8. The statute’s plain terms do not require that
information contain an express reference to copyright or copyright ownership to
qualify as CMI. See 17 U.S.C. § 1202(c). Rather, the definition of CMI includes the
“name of” an “author of a work.” 17 U.S.C. § 1202(c)(2). The credit line on the back
cover of the album plainly indicates that Levey was the photographer, and thus,
was the “author” of the “work” at issue, i.e., the photo. Thus, the credit line,
“Photography: Don Levey, Don Levey Studio,” constitutes CMI under the terms of
the statute. See Cable, 728 F. Supp. 2d at 981 (holding that a photographer’s name
and website address constituted CMI).
Second, the Tribune argues that “[n]otations on the back cover of the album
jacket are disconnected from the Photograph on the front cover of the album and,
thus, are not protected CMI.” R. 20 at 7-8. The Tribune contends that Leveyfilm’s
case is analogous to a case from this District in which the court held that “a general
copyright notice [that] appear[ed] on an entirely different webpage than the [poem]
at issue . . . [was] not ‘conveyed’ with the work” under the definition of CMI in 17
U.S.C. § 1202(c). See Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., 2012
WL 414803, at *7 (N.D. Ill. Feb. 8, 2012); 2013 WL 5348329, at *7 (N.D. Ill. Sept.
24, 2013). The Tribune also cites Schiffer Publishing, Ltd. v. Chronicle Books, LLC,
2004 WL 2583817, at *14 (E.D. Pa. Nov. 12, 2004), in which the court held that
copyright information on a book cover was not CMI “conveyed” with each individual
photo contained within the book, because the copyright information was not
included in “the ‘body’ of, or area around, [the] work itself.” Despite the Tribune’s

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reliance on these cases, in both Personal Keepsakes and Schiffer, the CMI at issue
was much further removed from the work than Levey’s name is from the photo at
issue in this case. In Personal Keepsakes the attribution at issue was on an entirely
different website from the work. Schiffer is a closer case because the attribution was
physically attached to the work like Levey’s name is in this case. But the photo at
issue in Schiffer was one of many contained within a book, and the court held that
the attribution on the cover of the book clearly referred to the book as a whole and
not the individual photos. Here, by contrast, it is “implausible” that a viewer of the
record album would not understand that the credit line “Photography: Don Levey,
Don Levey Studio” on the back of the album also referred to authorship of the photo
on the cover of the album. See Agene France Presse v. Morel, 769 F. Supp. 2d 295,
305 (S.D.N.Y. 2011) (holding that it was “implausible that a viewer of [the
plaintiff’s] photos [on a website] would not understand the designations [of the
plaintiff’s name] appearing next to the images to refer to authorship”).
Moving beyond the statutory definition of CMI, the Tribune also argues that
the statute requires that defendants had knowledge of the removal or falsification of
CMI, and that Leveyfilm’s allegations fail to “allege sufficient underlying facts from
which a court may reasonably infer that [Leveyfilm] acted with the requisite state
of mind.” R. 20 at 11. Leveyfilm alleges the following:
46. . . . any and all versions of the Work(s) which were not
communicated via the Internet would have been initially
conveyed by Levey accompanied by various items
identifying printed on label(s) affixed to a photographic
print or other means of conveyance or otherwise

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accompanying the Work(s) in a visible format or insert
along with the container or other mode of transmittal.
47. That the name “Levey,” or “Don Levey” or “Don Levey
Studio” as well as a copyright notice or claim and various
other items of identifying information, were at all times
relevant, conveyed in connection with the infringed group
shot Work by Levey . . . .
50. Notwithstanding defendants’ knowledge . . . [they]
removed and/or omitted the name and trade designation
“Levey,” “Don Levey” or Don Levey Studio” . . . .
51. As a substitute, . . . [the] Tribune . . . attribut[ed]
authorship in the photography in the name of [the
Tribune] . . . [with] “Tribune file photo” . . . .
R. 1 ¶¶ 46-47, 50-51. The Tribune contends that these allegations contain no facts
regarding the Tribune’s conduct or intent, and amount to Leveyfilm’s improper
supposition that the Tribune “must have” removed Levey’s name and inserted the
Tribune’s name. See R. 20 at 11-12. The Tribune argues that such a supposition
does not meet the “plausibility” standard of Rule 12(b)(6).
The statutory language indicates that knowledge or intent is required: §
1202(a) provides that a defendant “shall knowingly . . . provide copyright
management information that is false”; and § 1202(b) prohibits a defendant from
“intentionally remov[ing] or alter[ing] any copyright management information, [or]
distribut[ing] . . . copyright management information knowing that the copyright
management information has been removed.” But contrary to the Tribune’s
argument, the “‘factual content’” of Leveyfilm’s allegations “‘allows the court to
draw the reasonable inference that the [Tribune] is liable for the misconduct
alleged.’” Mann, 707 F.3d at 877 (quoting Iqbal, 556 U.S. at 678). Levey has not
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alleged how the Tribune came to be in possession of the photo or the specific factual
circumstances of Levey’s name being removed from the photo. But Leveyfilm has
alleged that it always includes Levey’s name with the photo when distributing it
and that the Tribune published the photo without Levey’s name attached. These
two facts make it plausible that the Tribune received the photo with Levey’s named
attached and removed it, and are “enough . . . to raise a reasonable expectation that
discovery will reveal evidence of illegal” conduct by the Tribune. Twombly, 550 U.S.
at 556. Cf. Merideth v. Chi. Tribune Co., LLC, 2014 WL 87518, at *3 & n.2 (N.D. Ill.,
Jan 9, 2014) (Zagel, J.) (the plaintiff’s allegations that the Tribune published a
photograph without certain CMI that the plaintiff alleged he had attached to the
photo could have constituted a plausible allegation that the Tribune removed the
CMI had the plaintiff not also alleged that an intermediary was responsible for
removal of the CMI).
The Tribune cites several cases to support its contention that allegations
such as Leveyfilm’s are insufficient. See R. 20 at 10-12. In Keogh v. Big Lots Corp.,
2006 WL 1129375, at *2 (M.D. Tenn. Apr. 27, 2006), the court held that a plaintiff
who alleged that a defendant who imported birdhouses from China had failed to
allege that the defendant knew the birdhouse design was protected by copyright.
The circumstances in Keogh are entirely different from the circumstances presented
here. The plaintiff in Keogh alleged that there was necessarily an intermediary
between the plaintiff and the defendant who not only removed the CMI but—
according to the plaintiff’s own allegations—created an entirely new work that the

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plaintiff alleged was too similar to the plaintiff’s own work. By contrast, Leveyfilm
alleges that it always distributes the photo at issue with Levey’s name attached to
the photo, making it plausible that the Tribune received the photo with Levey’s
name attached and removed it, and reasonable to expect that discovery will reveal
that this is indeed what occurred. Of course, maybe that is not what happened. But
it is a plausible enough set of allegations to survive Rule 12(b)(6).
The other cases the Tribune cites were decided on or after summary
judgment, and concerned the sufficiency of the evidence as opposed to the
allegations, making those cases inapposite here. See Gordon v. Nextel Commc’ns
and Mullen Advertising, Inc., 345 F.3d 922, 926-27 (6th Cir. 2003); Charles W. Ross
Builder, Inc. v. Olsen Fine Home Bldg., LLC, 2012 WL 48027, at *2 (E.D. Va. Jan. 9,
2012); William Wade Waller Co. v. Nexstar Broad., Inc., 2011 WL 2648584, at *5
(E.D. Ark. July 6, 2011).
Therefore, because Leveyfilm alleges that the Tribune removed Levey’s name
from the photo and replaced it with the Tribune’s name, Leveyfilm has plausibly
alleged that the Tribune is liable under the Digital Millennium Copyright Act, 17
U.S.C. § 1202.

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Conclusion
For the foregoing reasons, the Tribune’s motion, R. 19, is denied.
ENTERED:
______________________________
Honorable Thomas M. Durkin
United States District Judge

Dated: March 25, 2014

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