Sarvis v. Polyvore, Inc.

Filing 34

Magistrate Judge Marianne B. Bowler: ORDER entered. Certification of Issue to State Court, REPORT AND RECOMMENDATIONS re 16 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM filed by Polyvore, Inc. is ALLOWED as to the vicarious infringement cla im (Count Five). This court further RECOMMENDS that the motion to dismiss be ALLOWED on or after September 9, 2013, as to the remaining counts unless plaintiff files a motion for leave to amend the amended complaint prior to September 9, 2013. ( Objections to R&R due by 8/23/2013)(Feeney, Eileen)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

ROBERT SARVIS,
Plaintiff,

v.

CIVIL ACTION NO.
12-12233-NMG

POLYVORE, INC.,
Defendant.
REPORT AND RECOMMENDATION RE:
DEFENDANT’S MOTION TO DISMISS
DOCKET ENTRY # 16
August 9, 2013

BOWLER, U.S.M.J.
Pending before this court is a motion to dismiss for
failure to state a claim (Docket Entry # 16) filed by defendant
Polyvore, Inc. (“defendant” or “Polyvore”).

On April 4, 2013,

this court held a hearing and took the motion to dismiss under
advisement.
PROCEDURAL BACKGROUND
On January 30, 2013, plaintiff Robert Sarvis (“plaintiff”
or “Sarvis”) filed an amended complaint pursuant to Rule 15(a),
Fed. R. Civ. P.

(Docket Entry # 14).

sets out the following claims:

The amended complaint

declaratory judgment (Count

One); permanent injunction (Count Two); direct copyright
infringement (Count Three); contributory copyright infringement
(Count Four); and vicarious copyright infringement (Count Five).
(Docket Entry # 14).

Plaintiff seeks “a declaration that the

Polyvore’s [sic] use of the Images was an infringement of
Plaintiff’s registered copyright pursuant to 17 U.S.C. § 501,”
an injunction to “enjoin Polyvore from further infringement of
the Images pursuant to 17 U.S.C.S. § 502(a),” an award of
“damages in the amount of $3,000,000 for the willful
infringement by Polyvore of the registered copyrights” and
costs.

(Docket Entry # 14, p. 8).

On February 4, 2013,

plaintiff filed a notification letter as an exhibit to the
amended complaint which he “inadvertently . . . failed to
attach” to the amended complaint.

(Docket Entry # 15).

The current dispute concerns images on defendant’s website
that purportedly infringe copyrighted work of Sheila Wolk
(“Wolk”).

(Docket Entry # 14, ¶ 7).

assignee of Wolk’s work. 1

Plaintiff is the alleged

(Docket Entry # 14, ¶ 5).

The amended

complaint asserts that because Polyvore did not remove the 26
infringing images, it is liable for direct infringement.
(Docket Entry # 14, ¶¶ 29-31).

The amended complaint also

alleges defendant’s contributory infringement because defendant
1

The amended complaint summarily states that, “Robert Sarvis is
the assignee of the copyrights of the art and copyrights of
Sheila Wolk.” (Docket Entry # 14, ¶ 5).
2

receives a financial benefit by allowing users to cut and paste
the images after removing the copyright marks.
14, ¶¶ 36 & 44).

(Docket Entry #

Finally, plaintiff contends that defendant is

liable for vicarious copyright infringement because Polyvore
“profits from the direct infringement of the Images” and has
been “capable of stopping the infringement of the Images but has
declined to do so.”

(Docket Entry # 14, ¶¶ 51 & 52).

On February 4, 2013, defendant filed the motion to dismiss
(Docket Entry # 16) pursuant to Rule 12(b)(6), Fed. R. Civ. P.
(“Rule 12(b)(6)”), and a memorandum in support (Docket Entry #
17).

Defendant first argues that the copyright claims fail

because plaintiff fails to adequately plead statutory standing
under the Copyright Act, 17 U.S.C. § 501(b).
17, p. 17).

(Docket Entry #

Second, defendant contends that the images on its

website are transformative uses and therefore do not infringe
the original images.

(Docket Entry # 17, p. 17).

Third,

defendant asserts that the allegations that Polyvore’s users may
have infringed are insufficient to show that Polyvore is liable
for direct infringement.

(Docket Entry # 17, pp. 18 & 19).

Fourth, defendant maintains that the contributory liability
claim fails because a defendant is not liable for merely
providing means with which a third party infringes.
Entry # 17, pp. 20 & 21).

(Docket

Fifth, defendant submits that the

vicarious liability claim is insufficient for failing to “plead

3

any ‘obvious and direct financial interest’ in the alleged
copyright infringement.”

(Docket Entry # 17, p. 22).

Defendant

then asserts that, “plaintiff’s claims are barred by the Digital
Millennium Copyright Act,” 17 U.S.C. § 512 (“DMCA”), because
Polyvore “meets the threshold requirements for Safe Harbor
Protection” (Docket Entry # 17, pp. 22 & 23) and because
plaintiff’s notice of the infringement was inadequate under 17
U.S.C. § 512(c) (Docket Entry # 17, p. 25).
On February 21, 2013, plaintiff filed an opposition to the
motion.

(Docket Entry # 18).

Plaintiff attached a 30 page

exhibit to the opposition containing screenshots of the Polyvore
website and the original watermarked Wolk images, which are the
subject of the alleged infringement. 2

(Docket Entry # 18-1).

In

the opposition, plaintiff makes a series of arguments seeking to
show that Polyvore is “actively engaged” in copyright
infringement as opposed to passively providing a service with
which users commit copyright infringement.
p. 7).

(Docket Entry # 18,

Plaintiff submits that by providing a search function

that can produce copyrighted images in its results, the website
actively infringed upon copyrights by “storing and providing
these copyrighted images so that Users can recopy and use them.”
(Docket Entry # 18, p. 9) (emphasis in original).
2

Polyvore

Plaintiff asks this court to take judicial notice of the
attached exhibit screenshots and original Wolk images. (Docket
Entry # 18).
4

therefore “copied, displayed and/or distributed the images
without license or approval”
(emphasis removed).

(Docket Entry # 18, p. 18)

Plaintiff argues that copying Wolk’s images

“to offer them as a result of User searches” constitutes active
infringement.

(Docket Entry # 18, p. 18).

Next, plaintiff argues that Polyvore actively infringed by
running contests on the website judging user submitted material.
(Docket Entry # 18, p. 9).

Plaintiff claims that “Polyvore

profits directly from these contests from advertising that runs
simultaneously with the contest, fees it charges contest
underwriters like Samsung, and benefits from the promotion that
increases its user base.”

(Docket Entry # 28, p. 10).

The

amended complaint does not refer to search results or contests.
In response to defendant’s standing argument, plaintiff
contends that he has standing as the assignee of Wolk’s
exclusive copyrights.

(Docket Entry # 18, p. 13).

The amended

complaint identifies plaintiff as an assignee, as opposed to an
exclusive assignee, and does not articulate how plaintiff became
an assignee.

Plaintiff asserts that Rule 8(a)(2), Fed. R. Civ.

P., requires only a “‘short and plain statement’” and that he
does not need to prove that he is Wolk’s assignee in order to
survive a motion to dismiss.

(Docket Entry # 18, pp. 13-14).

Plaintiff’s support for direct copyright infringement
largely repeats the search function and contest entry

5

publication arguments.

Plaintiff cites to the amended complaint

again to state that Polyvore itself directly infringed the Wolk
images’ copyrights because it “copied, displayed and/or
distributed the Images without license or approval.”
Entry # 18, p. 18) (Docket Entry # 14, ¶ 30).

(Docket

Plaintiff raises

additional arguments to support defendant’s contributory and
vicarious infringement of the Wolk images.
On March 21, 2013, defendant filed a reply.
# 29).

(Docket Entry

On March 25, 2013 plaintiff filed a sur-reply.

(Docket

Entry # 30).
STANDARD OF REVIEW
When considering a motion to dismiss under Rule 12(b)(6), a
court “accept[s] as true all well pleaded facts in the complaint
and draw[s] all reasonable inferences in favor of the
plaintiffs.”

Gargano v. Liberty International Underwriters,

Inc., 572 F.3d 45, 48 (1st Cir. 2009).

“The general rules of

pleading require ‘a short and plain statement of the claim
showing that the pleader is entitled to relief.’”

Id.

“This

short and plain statement need only ‘give the defendant fair
notice of what the . . . claim is and the grounds upon which it
rests.’”

Id.

“To survive a motion to dismiss, the complaint must allege
‘a plausible entitlement to relief.’”
F.3d 46, 52 (1st Cir. 2008).

Fitzgerald v. Harris, 549

While “detailed factual

6

allegations” are not required, “a plaintiff’s obligation to
provide the ‘grounds’ of his ‘entitlement for relief’ requires
more than labels and conclusions, and a formulaic recitation of
the elements of a cause of action will not do.”

Bell Atlantic

Corp. v. Twombly, 550 U.S. 554, 555 (2007); Maldonado v.
Fontanes, 563 F.3d 263, 266 (1st Cir. 2009); Thomas v. Rhode
Island, 542 F.3d 944, 948 (1st Cir. 2008).

Additionally, “a

well-pleaded complaint may succeed even if . . . actual proof of
those facts is improbable.”
U.S. at 556.

Bell Atlantic Corp. v. Twombly, 550

Yet, courts “need not accept as true legal

conclusions from the complaint or ‘naked assertions devoid of
further factual enhancement.’”

Maldonado v. Fontanes, 563 F.3d

at 266 (internal quotation omitted).

Nevertheless, “pro se

pleadings are to be liberally construed, in favor of the pro se
party.”

Ayala Serrano v. Gonzalez, 909 F.2d 8, 15 (1st Cir.

1991).
In conducting this review, it is appropriate to consider
“‘documents the authenticity of which are not disputed by the
parties; . . . official public records; . . . documents central
to the plaintiff’s claim; or . . . documents sufficiently
referred to in the complaint.’”

Gargano v. Liberty Int’l

Underwriters, Inc., 572 F.3d at 48 (quoting Watterson v. Page,
987 F.2d 1, 3-4 (1st Cir. 1993)).

Furthermore, “where the

plaintiff has referenced part of a document in the complaint, it

7

is proper for the court to view the rest of that document so as
to be able to understand it in context.”

Airframe Sys. v.

Raytheon Co., 520 F.Supp.2d 258, 263 (D.Mass. 2007) (citing Shaw
v. Digital Equip. Corp., 82 F.3d 1194, 1220 (1st Cir. 1996)); see
also Watterson v. Page, 987 F.2d at 4 (additional documents
treated as part of the pleadings where plaintiffs “introduced
the documents themselves in order to bolster their argument
against defendants’ motions to dismiss”).

Moreover, “[F]or

purposes of a 12(b)(6) motion to dismiss, a court may take
judicial notice of information publicly announced on a party’s
website, as long as the website’s authenticity is not in dispute
and ‘it is capable of accurate and ready determination.’”

Doron

Precision Sys. v. FAAC, Inc., 423 F.Supp.2d 173, 193 n.8
(S.D.N.Y. 2006) (quoting Fed. R. Evid. 201(b)); see also Town of
Southold v. Town of E. Hampton, 406 F.Supp.2d 227, 245 n.2
(E.D.N.Y. 2005) (“this court may take judicial notice of the
contents of a website assuming, as in this case, its
authenticity has not been challenged and ‘it is capable of
accurate and ready determination’”); Monsanto Co. v. PacifiCorp,
2006 WL 1128226 *7 (D.Idaho Apr.24, 2006) (same); New York Elec.
& Gas Corp. v. U.S. Gas & Elec., Inc., 697 F.Supp.2d 417, 437
n.8 (W.D.N.Y. 2010) (same).
FACTUAL BACKGROUND

8

Plaintiff “is the assignee of copyrights of the art and
copyrights of Sheila Wolk.”
is a California corporation.

(Docket Entry # 14, ¶ 5).

Polyvore

(Docket Entry # 15, p. 2).

Defendant’s website, Polyvore.com, offers features such as:
Provid[ing] its Users at no cost and as apart [sic] of the
overall Polyvore system the ability to up-load works of art
and then edit those works of art, which includes, but is
not limited to, the ability [sic] remove or hide
copyrights, modify the image, and create other works of art
or images by incorporating the original works in whole or
in part.
(Docket Entry # 18-1, p. 3) (Docket Entry # 14, ¶¶ 11 & 12).
Polyvore’s editing system allows users to copy images “in whole
and/or in part . . . to form new images” or “transformed art.”
(Docket Entry # 14, ¶¶ 13 & 14).

User generated images are

compiled into collages (“sets”) comprised of multiple images
edited together.

(Docket Entry # 18-1, pp. 11 & 15).

On October 12, 2012, plaintiff sent Polyvore a “DMCA
Notification of Copyright Infringement” (“notification”).
(Docket Entry # 15, p. 2).

The notification informed defendant

that Polyvore users had posted 26 images each of which contained
the copyrighted work of Sheila Wolk.
10).

(Docket Entry # 14, ¶¶ 7 &

The notification identified the 26 images on Polyvore.com

which allegedly infringed a total of 20 Wolk images.
Entry # 15, pp. 3 & 4).

(Docket

In the notification, plaintiff provided

uniform resource locators (“URLs”) for the images on
Polyvore.com as well as the titles of the corresponding Wolk

9

images.

(Docket Entry # 15, pp. 3 & 4).

Plaintiff also

informed defendant that he was the assignee of Wolk’s work and
that he was “authorized to act on behalf of Sheila Wolk to
enforce her exclusive copyrights.”

(Docket Entry # 15, p. 2).

As stated in the amended complaint, Polyvore users uploaded
Wolk images to Polyvore.com and “removed the copyrights from the
Images and claimed the Images or the transformed art using the
Images in whole or in part as their own.”
¶¶ 13 & 14).

(Docket Entry # 14,

Polyvore’s website contains “links with other

service providers that allow the Images to be distributed
worldwide without license or approval.”
45).

(Docket Entry # 14, ¶

Plaintiff attached examples of Wolk images (as displayed

on Polyvore.com) with removed copyrights along with Wolk
originals to his opposition brief. 3
9).

(Docket Entry # 18-1, pp. 5-

Moreover, neither plaintiff nor Wolk gave Polyvore or its

users the right to use Wolk images.

3

(Docket Entry # 14, ¶ 17).

This court takes judicial notice of the images on defendant’s
website as “‘official public records; . . . documents central to
the plaintiff’s claim; or . . . documents sufficiently referred
to in the complaint.’” Gargano v. Liberty Int’l Underwriters,
Inc., 572 F.3d at 48. Alternately, this court takes judicial
notice of the Polyvore.com screenshots as information publicly
displayed on a party’s own website. Doron Precision Sys. v.
FAAC, Inc., 423 F.Supp.2d at 193 n.8. Defendant requested that
the court take judicial notice of information on its website as
a “‘matter of public record . . . not subject to reasonable
dispute’” (Docket Entry # 17, p. 10 n.9) (quoting Intri-Plex
Techs. v. Crest Grp., 499 F.3d 1048, 1052 (9th Cir. 2007)).
10

Polyvore therefore “provides the means for users to copy,
distribute, remove copyrights, and transform images on its
site.”

(Docket Entry # 14, ¶ 38).

Polyvore thereby allows

users to “modify, cut and paste, remove or hide copyright marks,
and form secondary images by incorporating the Images in whole
or in part” and store those secondary images on Polyvore’s
servers.

(Docket Entry # 14, ¶¶ 36 & 44).

Defendant holds contests wherein users submit sets to be
judged on Polyvore.com.

(Docket Entry # 18-1, pp. 3, 11-12).

In one such contest, featuring Samsung Mobile as the “challenge
partner,” the winner received a Samsung Galaxy Note 2 device
with a retail value of $699.

(Docket Entry # 18-1, p. 11).

Sets prominently featuring Wolk’s images have finished in
seventh and in tenth place in two such contests.
# 18-1, pp. 14-20, 22-26).

(Docket Entry

The Wolk images, “Field of Dreams”

and “Gatekeeper,” were both edited in contest sets.
Entry # 18-1, pp. 14, 20, 22-26).

(Docket

As of the date of the amended

complaint, the images listed in the notification were still on
Polyvore’s website.

(Docket Entry # 14, ¶ 41).

As of January

29, 2013, a set containing a Wolk image (“Chameleon”) that
plaintiff identified in the notification was still available
online at the same URL identified by plaintiff in the
notification.

(Docket Entry # 18-1, pp. 28-30).
DISCUSSION

11

Defendant argues that the claims should be dismissed on
four grounds.

First, plaintiff has not “plausibly alleged that

he has standing under the copyright act.”
p. 15).

(Docket Entry # 17,

Second, the allegations in the amended complaint

describe the challenged images as transformative uses thereby
admitting that the images are protected under the fair use
doctrine.

(Docket Entry # 17, p. 16).

Third, plaintiff “has

not plausibly pled a claim” for direct infringement,
contributory infringement or vicarious infringement.
Entry # 17, pp. 18 & 19).

(Docket

Finally, “plaintiff’s claims are

barred by the Digital Millennium Copyright Act,” 17 U.S.C. § 512
(“DMCA”).

(Docket Entry # 17, p. 22).

In opposition, plaintiff initially argues that because he
alleged to be “the assignee of copyrights of the art and
copyrights of Sheila Wolk” in the amended complaint and “it is
impossible to assign copyrights other than in writing (17 USC §
204(a))[sic],” then “it must be inferred that the assignment was
in writing, as it is.”

(Docket Entry # 18, p. 13).

Plaintiff

submits he sufficiently complied with the “short and plain
statement” requirement under Rule 8(a)(2), Fed. R. Civ. P.
(Docket Entry # 18, p. 13).

Second, plaintiff asserts that he

did not need to provide copies of the allegedly infringed Wolk
work because the notification provided the title of the Wolk art
and the URLs of the allegedly infringing images.

12

(Docket Entry

# 18, p. 14-15).

Furthermore, plaintiff maintains that language

in the amended complaint, such as “form new images,” does not
concede that Polyvore users created unauthorized derivative
works.

(Docket Entry 18, p. 16).

Third, plaintiff contends

that the amended complaint adequately alleges both ownership of
the allegedly infringed material and illicit copying by
defendant therefore constituting a claim for direct
infringement.

(Docket Entry # 18, pp. 17-18).

Fourth,

plaintiff argues that defendant is liable for contributory
infringement because the notification gave defendant knowledge
of the infringing activity and defendant materially contributed
to its users’ infringing conduct by providing image editing
tools and requiring use of those tools for contest eligibility.
(Docket Entry # 18, pp. 19-20).

Fifth, plaintiff contends that

defendant had the “right and ability to control” infringing
conduct and derives a financial benefit from the infringing
conduct and is thus liable for vicarious infringement.
Entry # 18, pp. 20-21).

(Docket

Plaintiff’s vicarious infringement

argument relies heavily on Polyvore’s contests, which are not
mentioned in the amended complaint.

(Docket Entry # 18, pp. 20-

21).
Finally, plaintiff contends that defendant does not qualify
for safe harbor under the DMCA, 17 U.S.C. § 512(c)(1), because
the website’s search functions and contests go beyond the mere

13

“storage at direction of a user” that the DMCA meant to protect.
(Docket Entry # 18, pp. 22-23).

Additionally, plaintiff argues

that Polyvore’s editing tools trigger liability under 17 U.S.C.
§ 1201 as a device “primarily designed for the purpose of
circumventing” copyrights.

17 U.S.C. § 1201(a)(2)(A)-(C)

(Docket Entry # 18, p. 23).
I.

Statutory Standing
The Copyright Act states that, “the legal or beneficial

owner of an exclusive right under a copyright is entitled . . .
to institute an action for any infringement of that particular
right committed while he or she is the owner of it.”
§ 501(b).

17 U.S.C.

A plaintiff must “prove ownership of a valid

copyright and the unauthorized copying of constituent elements
of the work that are original.”

Warren Freedenfeld Assocs. v.

McTigue, 531 F.3d 38, 47 (1st Cir. 2008); see also Feist Pub’lns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (same).
“Under 17 U.S.C. § 501(b), only ‘the legal or beneficial owner
of an exclusive right under a copyright is entitled . . . to
institute an action for any infringement of that particular
right committed while he or she is the owner of it.’”

Motta v.

Samuel Weiser, Inc., 768 F.2d at 481, 483-84 (1st Cir. 1985); see
Latin American Music Co. v. Archdiocese at San Juan Roman
Catholic & Apostolic Church, 499 F.3d 32, 41-42 (1st Cir. 2007)

14

(non-exclusive licensee lacked standing because it was not
“legal or beneficial owner” of exclusive right).
Defendant correctly notes that in order for a transfer of
copyright ownership to be valid it must be “in writing and
signed by the owner of the rights conveyed or such owner’s duly
authorized agent.”

17 U.S.C. § 204(a).

Accordingly, the

amended complaint fails to plead how plaintiff came to be the
assignee of Wolk’s art and is therefore deficient.

The amended

complaint contains a conclusory allegation that plaintiff “is
the assignee of copyrights of the art and copyrights [sic] of
Sheila Wolk” (Docket Entry # 14, ¶ 4) without providing any
plausible basis to support such a claim.

Such “naked assertions

devoid of further factual enhancement,” Maldonado v. Fontanes,
563 F.3d at 266, amount to nothing more than “a formulaic
recitation of the elements of a cause of action.”
Corp. v. Twombly, 550 U.S. at 555.

Bell Atlantic

While this court is required

to “draw all reasonable inferences in favor of the plaintiff,”
broadly claiming to own an artist’s copyrights does not support
an inference of actual, exclusive ownership.

See Gargano v.

Liberty Int’l Underwriters, Inc., 572 F.3d at 48.

Furthermore,

because plaintiff has not shown the assignment, this court
cannot determine when it occurred and therefore cannot determine
if the alleged infringement occurred while plaintiff was the
assignee of Wolk’s work.

See Motta v. Samuel Weiser, Inc., 768

15

F.2d at 481, 483-84.

Accordingly, plaintiff has not adequately

pleaded “ownership of a valid copyright” and therefore lacks
statutory standing.

The Copyright Act claims are therefore

subject to dismissal.
II.

Direct Copyright Infringement
In order to prevail on a copyright infringement claim, the

“plaintiff must prove (1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are
original.”

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499

U.S. at 361.

In order to find illicit copying, a plaintiff must

first “prove that the defendant copied the plaintiff’s
copyrighted work either directly or through indirect evidence.”
Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st
Cir. 2001).

“This showing entails proof that, as a factual

matter, the defendant copied the plaintiff’s copyrighted
material.”

Johnson v. Gordon, 409 F.3d 12, 18 (1st Cir. 2005).

Because “plagiarists rarely work in the open and direct proof of
actual copying is seldom available,” a plaintiff may prove
factual copying by “adducing evidence that the alleged infringer
enjoyed access to the copyrighted work and that a sufficient
degree of similarity exists between the copyrighted work and the
allegedly infringing work to give rise to an inference of actual
copying.”

Id.

The First Circuit has “termed the degree of

similarity for purposes of indirectly adducing evidence of

16

copying, ‘probative similarity.’”

Soc’y of the Holy

Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 49 (1st
Cir. 2012) (quoting Johnson v. Gordon, 409 F.3d at 18).
Probative similarity will be found if “the offending and
copyrighted works are so similar that the court may infer that
there was factual copying.”

Lotus Dev. Corp. v. Borderland

Int’l, 49 F.3d 807, 813 (1st Cir. 1995).
After showing factual copying, the plaintiff must establish
substantial similarity, i.e., “that the copying of copyrighted
material was so extensive that it rendered the offending and
copyrighted works substantially similar.”

Id.

In the First

Circuit, courts use the “ordinary observer” test to determine
whether two works are substantially similar.

Soc’y of the Holy

Transfiguration Monastery, Inc. v. Gregory, 689 F.3d at 50.
“Under this rubric, two works will be deemed substantially
similar if a reasonable ordinary observer, on examining both,
‘would be disposed to overlook’ the disparities between the
works, ‘and regard their aesthetic appeal as the same.’”

Id.

(quoting Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843
F.2d 600, 607 (1st Cir. 1988)).
Defendant argues that the amended complaint contains
nothing more than conclusory allegations that Polyvore
“‘promotes, allows, and provides the means and technology for
users to copy, distribute, remove copyrights, and transform

17

images on its site.’”
# 14, ¶ 38).

(Docket Entry # 17, p. 19) (Docket Entry

In opposition, plaintiff contends that the amended

complaint alleges volitional, direct infringement by Polyvore,
stating, “‘Polyvore has copied, displayed and/or distributed the
Images without license or approval in direct violation of the
registered copyrights.’”
Entry # 14, ¶ 30).

(Docket Entry # 18, p. 18) (Docket

Plaintiff attempts to support pleading a

direct action by referencing contests and search functionality
on defendant’s website.

(Docket Entry # 18, p. 18).

Plaintiff

argues that, “[W]hen Polyvore copied those ‘sets’ including the
Images to publish the contest ‘entry list’ and then the list of
winners it violated the exclusive rights of the Plaintiff.”
(Docket Entry # 18, p. 18) (emphasis removed).

Plaintiff

further maintains that defendant “copied the Images to offer
them as a result of User searches, and also created derivative
works” to support the claim for direct infringement.

(Docket

Entry # 18, p. 18).
Despite plaintiff’s use of search functionality and contest
publication arguments in opposition to the motion, the amended
complaint does not mention either.

After accepting “as true all

well pleaded facts in the complaint” and “draw[ing] all
reasonable inferences in favor of the plaintiff,” Gargano v.
Liberty Int’l Underwriters, Inc., 572 F.3d at 48, the amended
complaint pleads nothing more than “labels and conclusions, and

18

a formulaic recitation of the elements of a cause of action.”
Bell Atlantic Corp. v. Twombly, 550 U.S. at 555.

Plaintiff did

not plead that defendant copied sets for contest entry lists,
nor did plaintiff plead that defendant copied Wolk images for
use in search results.

The amended complaint simply states

that, “Polyvore has copied, displayed and/or distributed the
Images without license or approval in direct violation of the
registered copyrights.”

(Docket Entry # 14, ¶ 30).

Count Three

is therefore subject to dismissal.
III.

Contributory Copyright Infringement
A defendant is liable for contributory infringement when it

“‘intentionally induc[es] or encourage[es] direct
infringement.’”

Elsevier Ltd. v. Chitika, Inc., 826 F.Supp.2d

398, 404 (D.Mass. 2011) (quoting Metro-Goldwyn-Mayer Studios,
Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005)); see also
Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d
1159, 1162 (2d Cir. 1971) (“one who, with knowledge of the
infringing activity, induces, causes or materially contributes
to the infringing conduct of another, may be held liable as a
‘contributory’ infringer”).

A defendant need only know or have

reason to know of the infringing conduct in order to be liable
for contributory infringement, despite the defendant’s noninfringing actions.

Gershwin Publ’g Corp. v. Columbia Artists

Mgmt., Inc., 443 F.2d at 1162.

Accordingly, “‘the defendant

19

need only have known of the direct infringer’s activites, and
need not have reached the legal conclusion that those activities
infringed a copyrighted work.’”

Elsevier Ltd. v. Chitika, Inc.,

826 F.Supp.2d at 404 (quoting Jalbert v. Grautski, 554 F.Supp.2d
57, 68 (D.Mass. 2008)) (internal quotation marks omitted).
Despite a seemingly low bar for the knowledge requirement,
a defendant is not liable for contributory infringement unless
it “induces, causes or materially contributes to the infringing
conduct of another.”

Gershwin Publ’g Corp. v. Columbia Artists

Mgmt., Inc., 443 F.2d at 1162.

Furthermore, a defendant’s

actions must exceed mere passivity.

“Something more—deriving

from one’s substantial involvement—is needed.”

Demetriades v.

Kaufmann, 690 F.Supp. 289, 293 (S.D.N.Y. 1988) (emphasis in
original); see also Gershwin Publ’g Corp. v. Columbia Artists
Mgmt., Inc., 443 F.2d at 1163 (liability found due to “pervasive
participation” of a contributory infringer).

Courts limit

contributory infringement “liability to instances of more acute
fault than the mere understanding that some of one’s products
will be misused.”

Metro-Goldwyn-Mayer Studios, Inc. v.

Grokster, Ltd., 545 U.S. at 932-33.
Plaintiff claims that Polyvore is liable for contributory
copyright infringement because it provides users with editing
tools capable of removing copyrights and watermarks and that
Polyvore requires its users to use those tools in its contests.

20

(Docket Entry # 18, p. 20).

Plaintiff did not, however, mention

Polyvore contests in the amended complaint.

The amended

complaint merely alleges that, “Polyvore promotes, allows, and
provides the means and technology for users to copy, distribute,
remove copyrights, and transform images on its site” by using
Polyvore editing tools, and that “Polyvore has induced others by
undertaking purposeful acts aimed at assisting and encouraging
others to infringe on the copyrights of the Plaintiff.”
Entry # 14, ¶¶ 38 & 47).

(Docket

Without the additional information

about Polyvore contests in the amended complaint, which
plaintiff identifies for the first time in the opposition
(Docket Entry # 18), plaintiff has not alleged “a plausible
entitlement for relief.”

Fitzgerald v. Harris, 549, F.3d at 52.

As plead, the contributory infringement count is therefore
deficient.
IV.

Vicarious Copyright Infringement
One “infringes vicariously by profiting from direct

infringement while declining to exercise a right to stop or
limit it.”

Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,

545 U.S. at 930; see also Demetriades v. Kaufmann, 630 F.Supp.
at 292 (“‘when the right and ability to supervise the infringer
coalesce with an obvious and direct financial interest in the
exploitation of copyrighted materials,’ a third party may be
held liable for the direct infringement of another”) (quoting

21

Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d
Cir. 1963)); accord Rosenthal v. E. MPC Computers, LLC, 493
F.Supp.2d 182, 188-189 (D.Mass. 2007) (“although the First
Circuit itself has never discussed vicarious copyright
infringement, at least two judges in this district have . . .
adopted from the Second Circuit” standards for vicarious
liability).

“‘The essential aspect of the direct financial

benefit inquiry is whether there is a causal relationship
between the infringing activity and any financial benefit a
defendant reaps, regardless of how substantial the benefit is in
proportion to a defendant’s overall profits.’”

Agence France

Presse v. Morel, 2013 WL 2253965, *21 (S.D.N.Y. Jan. 14, 2013)
(quoting Ellison v. Robertson, 357 F.3d 1072, 1097 (9th Cir.
2004), in parenthetical), superseded in part on other grounds,
2013 WL 2253965 (S.D.N.Y. May 21, 2013) (allowing motion to
reconsider separate issue on damages award).

In opposition,

plaintiff argues that defendant is liable for vicarious
copyright infringement because it had the right to disqualify
entrants from the contests (Docket Entry # 18-1, pp. 11 & 12),
declined to exercise that right and received a financial benefit
from the infringing activity.

(Docket Entry # 18, pp. 20-21).

Plaintiff maintains that defendant “earns for the adverting
[sic] on the contest page, from fees it charges its advertising
underwriter (e.g. Samsung), and because its contests are user

22

base draws.”

(Docket Entry # 18, p. 21).

These specific

allegations, however, were first proffered in opposition to the
motion.

(Docket Entry # 18).

The amended complaint simply

incorporates all previous averments before adding:
51. At all times Polyvore is [sic] capable of stopping the
infringement of the Images but has declined to do so.
52. Polyvore profits from the direct infringement of the
Images.
53. Polyvore at all times has the right and ability to
control the infringement of its users
(Docket Entry # 14, ¶¶ 51-53).

The amended complaint therefore

recites the elements of the cause of action which, without more,
is not sufficient.
555.

Bell Atlantic Corp. v. Twombly, 550 U.S. at

The amended complaint is particularly deficient in regard

to alleging “an obvious and direct financial interest in the
exploitation of copyrighted materials.”

Shapiro, Bernstein &

Co. v. H.L. Green Co., 316 F.2d at 307.

In opposition,

plaintiff argues that Polyvore’s direct financial interest can
be demonstrated by:
adverting [sic] on the contest page, from fees it charges
its advertising underwriter (e.g. Samsung), and because its
contest are User base draws. Fonvisa, [Inc. v. Cherry
Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996)] (stating
that financial benefit may be shown “where infringing
performances enhance the attractiveness of a venue”).
(Docket Entry # 18, p. 21).

Although plaintiff accurately cites

relevant case law, the amended complaint did not mention
contests, Polyvore’s possible profits from said contests or

23

gaining a user base draw due to its editing software’s
attractive infringing capabilities. 4

Furthermore, plaintiff

appears to apply an incorrect standard to his user base draw
argument. 5

Plaintiff has not alleged that Polyvore users

subscribe to the website in order to infringe on Wolk’s artwork
specifically.

Plaintiff’s vicarious infringement claim, as

stated in the amended complaint, does not link infringement of
Wolk’s work to some kind of direct financial benefit for
Polyvore.

See Ellison v. Robertson, 357 F.3d at 1079 (summary

judgment for defendant granted where “there is not evidence that
indicates that AOL customers either subscribed because of the
available infringing material or canceled subscriptions because
it was no longer available”).

Accordingly, as currently pled,

Count Five does not withstand the motion to dismiss.
V.

Declaratory Relief and Permanent Injunction

4

Even if plead these facts would not set out a plausible claim
of defendant profiting from direct infringement under Grokster.
5
Plaintiff argues that Polyvore attracts users due to the
ability to broadly infringe using Polyvore editing tools. The
applicable standard, however, requires “the right and ability to
supervise the infringing conduct” and (2) an obvious and direct
financial interest in the exploitation of copyrighted
materials.” Parker v. Google, Inc., 422 F.Supp.2d 492, 500
(E.D.Pa. 2006). Thus, the court in Parker dismissed a vicarious
infringement claim because the operative complaint only alleged,
in a conclusory manner, that, “Google’s advertising revenue is
directly related to the number of Google users and that the
number of users ‘is dependent directly on Google’s facilitation
of and participation in the alleged infringement.’” Id.
(quoting the complaint).
24

Defendant argues, in a single sentence, that counts one and
two should be dismissed due to “the absence of any cognizable
substantive claim for copyright infringement.”
17, p. 26, n.21).

(Docket Entry #

As pleaded, plaintiff’s claims for

declaratory and injunctive relief fail for the same reasons and
to the same extent as the direct, contributory and vicarious
copyright infringement claims.
VI.

DMCA’s Safe Harbor
Defendant raises a DMCA safe harbor defense.

It argues

that because it meets the safe harbor requirements of 17 U.S.C.
§ 512(c) it cannot be found liable for direct, contributory or
vicarious copyright infringement.
23).

(Docket Entry # 17, pp. 22-

The statute provides that, “[A] service provider shall not

be liable for monetary relief, or, except as provided in
subsection (j), for injunctive or other equitable relief” for
the actions of its users if the service provider complies with
the requirements of 17 U.S.C. §§ 512(c) and (i).

17 U.S.C. §

512(c)(1); see also Wolk v. Kodak Imaging Network, Inc., 840
F.Supp.2d 724, 743-44 (S.D.N.Y. 2012) (defendant eligible for
DMCA safe harbor after satisfying section 512(c) requirements
and was immune after satisfying section 512(i) requirements).
Because this court finds that the direct, contributory and
vicarious copyright infringement claims are subject to dismissal
on other grounds, defendant’s DMCA safe harbor argument is moot.

25

VII.

Transformative Use Argument
Quoting the amended complaint, defendant next argues that,

“Plaintiff concedes that Polyvore’s users use the site to
‘transform’ images by ‘editing,’ ‘modifying’ and combining them
‘in whole or in part’ to ‘form secondary images’ and ‘create
other works of art.’”

(Docket Entry # 17, p. 16) (Docket Entry

# 14, ¶¶ 10, 12-14, 23, 36-38).

Defendant asserts that because

plaintiff uses the words “transform” and “other works of art,”
plaintiff has “render[ed] his claim of actionable ‘copying’
implausible.”

(Docket Entry # 29, p. 8).

Because this court

recommends dismissal on other grounds, it is not necessary to
address this argument.
IX.

Allowing Leave to Amend
Under certain circumstances, a court may allow a plaintiff

an opportunity to amend a complaint in lieu of a dismissal.

See

Rodi v. Southern New England School of Law, 389 F.3d 5, 20 (1st
Cir. 2004) (directing district court to afford the plaintiff
opportunity to amend and replead chapter 93A claim).

The Rodi

court allowed leave to amend to cure the “modest pleading
defect” of a lack of notice because of the plaintiff’s pro se
status, the existence of a “colorable” chapter 93A claim, the
plaintiff’s statement in that he furnished the required
statutory notice, the district court’s failure to explain the
ground for dismissal and the plaintiff’s request for leave to

26

amend.
merits.

There is also a preference to decide cases on the
See generally Rodi v. Southern New England School of

Law, 389 F.3d at 20 (noting “‘the purpose of pleading is to
facilitate a proper decision on the merits’”).
Although plaintiff did not request leave to amend the
amended complaint, he is proceeding pro se and misunderstands
the “short and plain statement” standard under Rule 8(a)(1),
Fed. R. Civ. P., in relation to the requirement to include facts
in the complaint that demonstrate a plausible entitlement to
relief 6 to avoid a Rule 12(b)(6) dismissal.

With the exception

of the vicarious infringement claim, the opposition includes
facts that, if plead, indicate colorable claims.

For example,

with regard to whether plaintiff is the actual assignee of
Wolk’s copyrighted works, plaintiff could easily attach
documentation, such as written assignment for exclusive rights
to a proposed second amended complaint.

Furthermore, plaintiff

could provide additional facts in a proposed second amended
complaint relative to the contest entry and winner lists and the
use of search functionality to elucidate the plausibility of
direct and contributory infringement beyond a recitation of the
elements of the claims.

Moreover, plaintiff could add facts,

such as specific actions and involvement by Polyvore in

6

Bell Atlantic v. Twombly, 550 U.S. at 555-558.
27

contests, to adequately plead the substantial involvement
requirement of contributory infringement.
Under vicarious infringement, however, plaintiff fails to
allege any direct link between the identified images containing
Wolk’s art and a direct financial benefit.

To cure this

deficiency, plaintiff would need to allege something more than
an amorphous benefit from advertising revenue.

In opposing the

motion to dismiss, plaintiff does not identify how or articulate
the manner in which defendant gained a direct financial benefit
from the 26 alleged infringing images.
CONCLUSION
In accordance with the foregoing discussion, this court
RECOMMENDS 7 that the motion to dismiss (Docket Entry # 16) be
ALLOWED as to the vicarious infringement claim (Count Five).
This court further RECOMMENDS 8 that the motion to dismiss be
ALLOWED on or after September 9, 2013, as to the remaining
counts unless plaintiff files a motion for leave to amend the
amended complaint prior to September 9, 2013, and attaches a
proposed second amended complaint that includes factual

7

Any objections to this Report and Recommendation must be filed
with the Clerk of Court within 14 days of receipt of the Report
and Recommendation to which the objection is made and the basis
for such objection. See Rule 72(b), Fed. R. Civ. P. Any party
may respond to another party’s objections within 14 days after
service of the objections. Failure to file objections within the
specified time waives the right to appeal the order.
8
See the previous footnote.
28

allegations that state plausible direct and contributory
infringement claims along with accompanying declaratory and
injunctive relief claims.

/s/ Marianne B. Bowler
MARIANNE B. BOWLER
United States Magistrate Judge

29