Regional Multiple Listing Service of Minnesota, Inc. v. American Home Realty Network, Inc.
Filing
265
MEMORANDUM OPINION AND ORDER granting 131 Motion to Modify the Amended Preliminary Injunction by STRIKING amended paragraph 2(c) of the September 27, 2012 35 preliminary injunction order (as amended by the 121 order amending the preliminary injunction order). (Written Opinion). Signed by Judge John R. Tunheim on December 10, 2013. (DML)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
REGIONAL MULTIPLE LISTING
SERVICE OF MINNESOTA, INC., doing
business as NorthStarMLS,
Plaintiff,
v.
Civil No. 12-965 (JRT/FLN)
MEMORANDUM OPINION AND
ORDER GRANTING PLAINTIFF’S
MOTION TO MODIFY AMENDED
PRELIMINARY INJUNCTION
AMERICAN HOME REALTY
NETWORK, INC.,
Defendant.
Calvin L. Litsey, Mary Andreleita Walker, and Richard A. Duncan,
FAEGRE BAKER DANIELS LLP, 90 South 7th Street, Suite 2200,
Minneapolis, MN 55402; Jared B. Briant, FAEGRE BAKER DANIELS
LLP, 1700 Lincoln Street, Suite 3200, Denver, CO 80204; and Brian N.
Larson and Mitchell A. Skinner, LARSON/SOBOTKA PLLC, 2701
University Avenue Southeast, Suite 201, Minneapolis, MN 55414, for
plaintiff.
Chad A. Snyder, Adam P. F. Gislason, Matthew D. Schwandt, and
Michael H. Frasier, SNYDER GISLASON FRASIER LLC, 233 Park
Ave South, Suite 205, Minneapolis, MN 55415, for defendant.
Plaintiff Regional Multiple Listing Service of Minnesota, Inc. (“RMLS”) operates
a real estate listing service called NorthstarMLS. RMLS brought this action for copyright
infringement against Defendant American Home Realty Network, Inc. (“AHRN”). The
Court issued a modified preliminary injunction enjoining AHRN from displaying
material copyrighted by RMLS without authorization.
The modified preliminary
injunction also ordered RMLS to place watermarks on all of the photographs on
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NorthstarMLS for which it owns a copyright and to remove watermarks from any
photographs on NorthstarMLS for which it does not own a copyright. RMLS now moves
this Court to amend its modified preliminary injunction under Federal Rule of Civil
Procedure 60(b)(6) to strike the requirement that it identify its copyrighted photographs
(and only its copyrighted photographs) with a watermark because it argues that it is
unable to comply with the Court’s order. The Court will grant RMLS’s motion to amend
the modified permanent injunction by striking the watermark provision, but will order
RMLS to present an alternative method by which to indicate to AHRN and the Court
which of the photographs in the NorthstarMLS database are subject to the preliminary
injunction order.
BACKGROUND
Much of the background for this action is outlined in the Court’s previous
decisions. See Reg’l Multiple Listing Serv. of Minn., Inc. v. Am. Home Realty Network,
Inc. (“RMLS II”), Civ. No. 12-965, 2013 WL 3367132 (D. Minn. July 5, 2013); Reg’l
Multiple Listing Serv. of Minn., Inc. v. Am. Home Realty Network, Inc. (“RMLS I”), Civ.
No. 12-965, 2012 WL 4470286 (D. Minn. Sept. 27, 2012). The Court will recite here
only those facts relevant to this motion.
I.
THE PARTIES
RMLS is a real estate listing cooperative company made up of more than 13,000
real estate brokers who pool and disseminate information on homes available for sale in
Minnesota and western Wisconsin. Through NorthstarMLS, member-brokers enter into
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an agreement with RMLS to upload photographs and submit descriptions related to a
property. When brokers upload photographs, they are prompted to enter into an
agreement with RMLS (“Participant Agreement”), under which they have the option of
assigning twenty-five percent of any copyright they own in an image to RMLS (“Option
I”) or retaining any copyright the broker owns (“Option II”). RMLS acknowledges that it
does not own the copyrights to all of the images in its database, but asserts that ninetyseven percent of its members select Option I, thus assigning partial ownership of any
copyright to RMLS. (Decl. of John Mosey ¶ 12, July 18, 2013, Docket No. 134.)
AHRN is a company that owns and operates www.neighborcity.com
(“NeighborCity”), which connects potential buyers with real estate agents based on the
types of properties in which a buyer is interested. RMLS sued AHRN for copyright
infringement under 17 U.S.C. §§ 101 et seq. when it noticed that AHRN was posting on
NeighborCity the photos and descriptions for which RMLS claims it owns the copyright.
(Compl. ¶¶ 20-31, Apr. 18, 2012, Docket No. 1.) Specifically, RMLS alleged that
AHRN had reproduced fifty photographs for which RMLS owns the copyright. (Id.
¶ 16.)
II.
SEPTEMBER 2012 PRELIMINARY INJUNCTION ORDER
The Court granted RMLS’ motion for a preliminary injunction and enjoined
AHRN “from engaging in any unauthorized copying, display, use, and/or public
distribution of Plaintiff’s copyrighted photographic works, including, without limitation,
the works covered by U.S. Copyright Reg. Nos. TX VA 1-432-912; VA 1-432-913; VA
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1-432-914; and VA 1-432-917.” RMLS I, 2012 WL 4470286, at *11. The Court noted
that RMLS acknowledged that it did not own the copyrights to all of the photographs in
its database, but concluded that
because RMLS has registered its copyrights and AHRN has not challenged
RMLS’s copyright ownership for the purposes of this motion, the Court
will decline to delineate between those items that RMLS does and does not
own. The Court’s injunction, however, will extend only insofar as
copyrights are owned or co-owned by RMLS.
Id. at *2 n.3. The Court also noted that “RMLS claims that it places watermarks on the
photographs for which it owns copyrights.” Id. The Court concluded that there was a
rebuttable presumption that RMLS owns copyrights to the fifty photographs because the
photographs were registered with the Copyright Office and that AHRN had not rebutted
the presumption. Id. at *8.
III.
JULY 2013 MODIFIED PRELIMINARY INJUNCTION AND CONTEMPT
ORDER
After the Court issued the preliminary injunction, RMLS moved the Court for a
finding of contempt against AHRN and its chief executive officer for alleged violations
of the preliminary injunction order.
Specifically, RMLS pointed to seventy-seven
photographs that AHRN published for which RMLS alleged it owns the copyright.
(Decl. of Michael Bisping ¶ 3, Exs. 1-3, Nov. 15, 2012, Docket No. 51.) RMLS claimed
that four real estate agents took the seventy-seven photos, and those agents confirmed
that they entered into agreements assigning the copyright to their broker, and the brokers
entered into the Participant Agreement with RMLS and selected Option I to assign an
undivided twenty-five percent interest in the copyrights to RMLS. RMLS II, 2013 WL
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3367132, at *3-*4. RMLS also stated that it likely has a copyright registration for the
seventy-seven photographs. Id. at *4 n.6. RMLS argued that AHRN’s chief executive
officer made a misstatement to the Court when he submitted a declaration stating that
AHRN “‘has ensured that its data gathering process does not copy, display, or permit
public distribution of any of the data or other materials which are the subject of the
Court’s Order.’” Id. at *8 (quoting (Decl. of Jonathan Cardella ¶ 5, Oct. 16, 2012,
Docket No. 44)).
The Court concluded that RMLS had proved that AHRN violated the preliminary
injunction as to the photographs taken by two of the four agents. The Court noted that
the preliminary injunction was not limited to only copyrights registered with the
Copyright Office, nor to photographs that contained a watermark. RMLS II, 2013 WL
3367132, at *8 n.17 (“The Court also did not limit the order to the publication of
photographs that contained a watermark, although the Court noted that RMLS had
indicated that it placed a watermark on all copyrighted photographs.”).
Having
concluded that AHRN violated the Court’s order, the Court determined that AHRN had
not met the burden of showing an inability to comply with the order.
The Court
explained that at oral argument it “asked AHRN’s attorney if AHRN was claiming an
inability to comply, and AHRN’s attorney responded that he did not know whether
AHRN had the technological ability to comply with the Court’s order.” Id. at *8. The
Court also noted that “AHRN has never contacted this Court for any clarification of its
order, and it never complained that it was unable to carry out this Court’s order because it
could not determine which photographs on NorthstarMLS were subject to an RMLS
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copyright.” Id. at *9. The Court concluded that sanctions were therefore appropriate
against AHRN, but declined to hold AHRN’s chief executive officer in contempt. Id.
The Court did, however, modify the preliminary injunction to require RMLS to
make clear which photographs in its database it holds a copyright for by ensuring that its
watermark is placed on those photographs for which it owns the copyright and removing
the watermark from photographs for which it does not own the copyright. Id. at *20-*21.
The Court explained that it
is nonetheless concerned that AHRN may find it difficult to determine
which of the photographs on NorthstarMLS are subject to a copyright by
RMLS. In its original preliminary injunction order, the Court noted that
“RMLS claims that it places watermarks on the photographs for which it
owns copyrights.” It is now apparent, however, that RMLS does not place
watermarks on all of the NorthstarMLS photographs that RMLS claims are
copyrighted. Indeed, not all of the seventy-seven photographs subject to
the contempt motion contained a watermark.
Because this Court’s order extends only to RMLS’s copyrighted
material, the Court will modify its preliminary injunction order to make
clearer which photographs must be removed from NeighborCity. The
Court will order that, within thirty days, RMLS place NorthstarMLS
watermarks on all of the photographs on NorthstarMLS that are subject to a
copyright owned or co-owned by RMLS. RMLS must not include a
NorthstarMLS watermark on photographs for which it does not own a
copyright. No later than forty-five days after the entry of this order, AHRN
must then remove all photographs from NeighborCity that are subject to an
RMLS copyright, as indicated by RMLS’s placement of watermarks on the
photographs.
Id. at *10 (citation and footnotes omitted). The Court explained that, because RMLS has
no standing to protect copyright images that it does not own, the Court’s order prohibits
AHRN from displaying only those photographs for which RMLS owns the copyright. Id.
at *10 n.19.
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The Court modified the preliminary injunction so that it (a) enjoined AHRN from
copying, displaying, using, and/or distributing works covered by four specific copyright
registrations and the photographs from the two brokers subject to the contempt order,
(b) enjoined AHRN from copying, displaying, using, and/or distributing any of RMLS’s
other copyrighted photographic works as of August 19, 2013, and (c) ordered RMLS “to
place watermarks on each photograph on NorthstarMLS to which it owns a copyright and
to remove watermarks from any photographs on NorthstarMLS to which it does not own
a copyright” by August 5, 2013. Id. at *20-*21.
IV.
MOTION TO MODIFY THE AMENDED PRELIMINARY INJUNCTION
On July 18, 2013, RMLS filed a motion to modify the amended preliminary
injunction, requesting that the Court strike the portion of the amended preliminary
injunction order requiring RMLS to place watermarks on the photos for which it owns the
copyright and to remove them from the photos for which it does not own the copyright.
(Mot. to Modify Am. Prelim. Inj., July 18, 2013, Docket No. 131.)1 RMLS argues that it
is unable to comply with the Court’s order with regard to removing the watermark from
photographs for which it does not own the copyright.2 It claims that each “photograph in
1
RMLS also requested that the Court suspend the watermark requirement portion of the
July 5, 2013, Order. The Court granted the request and ordered the requirement suspended until
the Court addressed the motion to amend. (Order, Aug. 5, 2013, Docket No. 152.)
2
Although the Court was previously concerned that the watermark was not placed on
some of the photographs for which RMLS did own the copyright, RMLS has clarified and the
Court is satisfied that the watermark is on all photographs, even though it does not always
readily appear when printed on photographs with white space at the bottom. The Court notes
(Footnote continued on next page.)
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the NorthstarMLS database are [sic] automatically stamped with a generic
‘Northstar|MLS’ watermark as it is uploaded to the RMLS system,” and RMLS has no
“other way to add photographs to the database.” (Mem. in Supp. of Mot. to Modify Am.
Prelim. Inj. at 3, July 18, 2013, Docket No. 133 (citing Mosey Decl. ¶ 9).) RMLS argues
that it cannot remove the watermarks from photographs because it “does not have unwatermarked, original photographs saved in its systems – it watermarks the photographs
first, and then saves them.” (Id. at 6.) It claims that in order to remove the watermark it
would have to either “manually crop the watermark out of the photographs or ask the
agents for the Option II listings to re-submit the photographs.” (Id. (citing Mosey Decl.
¶ 11).)3 It claims that, despite the fact that only three percent of its listings are “Option
II” listings, there are still nearly 1,000 such listings which each include several
____________________________________
(Footnote continued.)
that this is primarily a problem when perusing the photographs on paper or as scanned, but not
when viewed on various websites to which NorthstarMLS feeds the listings.
3
The Court is permitted to rely on the statements in the declaration. See Movie Sys., Inc.
v. MAD Minneapolis Audio Distribs., 717 F.2d 427, 432 (8th Cir. 1983) (“it has often been held
that affidavits may be received at a hearing on a motion for a preliminary injunction” and finding
“no impropriety in the district court’s reliance” on affidavits in considering whether to modify a
preliminary injunction without an evidentiary hearing (citing Wounded Knee Legal Def./Offense
Comm. v. Fed. Bureau of Investigation, 507 F.2d 1281, 1287 (8th Cir. 1974))). AHRN disputes
the veracity of the Mosey declaration in a letter to the Court and declaration filed almost four
months after RMLS filed this motion to amend and almost three months after briefing on the
motion concluded. (Letter to District Judge, Nov. 8, 2013, Docket No. 257; Decl. of Adam
Gislason, Nov. 8, 2013, Docket No. 258.) RMLS objects to these filings. (Letter to District
Judge, Nov. 15, 2013, Docket No. 260.) The Court is not required to consider these untimely
and unsolicited filings. Moreover, AHRN’s filings do not suggest that RMLS has the capacity to
remove the watermark from photographs for which it does not own a copyright that already bear
the mark, but rather that the percentage of Option II subscribers might be higher than 3% and
that it might be possible for RMLS to distinguish between Option I and II in placing the
watermark in the future. If true, neither assertion undermines the Court’s determination here.
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photographs, and that it “would have to continue this exercise indefinitely, given the
limitations of its automatic systems.” (Id.) RMLS also claims that the watermark is
intended to indicate source, not copyright ownership. (Id. at 2.)
AHRN opposes the motion to amend, arguing that RMLS has consistently
described its watermarks as copyright notices throughout this litigation and that RMLS’s
claims of copyright ownership are overstated because hired photographers, rather than
brokers, likely hold the copyright to most photos uploaded to NorthstarMLS such that
any assignment by the broker to RMLS assigns no valid copyright ownership. AHRN
argues that, because of the inconsistency between RMLS’s watermarks and copyright
ownership, it has not met its burden of justifying the scope of the injunction issued by the
Court and the injunction is therefore not narrowly tailored. AHRN claims that this puts it
in a difficult position because it is under a preliminary injunction order to not publish any
of RMLS’s copyrighted works under penalty of contempt, but no one, not even RMLS,
can accurately identify which photographs are subject to copyright by RMLS.
DISCUSSION
I.
STANDARD OF REVIEW
Under Federal Rule of Civil Procedure 60(b)(6), a court “may relieve a party or its
legal representative from a final judgment, order, or proceeding for . . . any other reason
that justifies relief.” Relief under Rule 60(b)(6) is an “extraordinary remedy” and “does
not give courts unlimited authority to fashion relief as they deem appropriate,” nor is it a
“substitute for other legal remedies.” In re Zimmerman, 869 F.2d 1126, 1128 (8th Cir.
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1989). It is to be granted only “when exceptional circumstances prevented the moving
party from seeking redress through the usual channels” or where exceptional
circumstances have denied the moving party the full and fair opportunity to litigate the
claim. See id.; United States v. Sybaritic, Inc., 789 F. Supp. 2d 1160, 1172 (D. Minn.
2011) (citing Harley v. Zoesch, 413 F.3d 866, 871 (8th Cir. 2005)).
II.
RMLS’S MOTION TO AMEND
The Court will consider RMLS’s motion to amend in light of these standards for
such motions under Rule 60(b)(6). Because courts have broad discretion to modify
injunctions, particularly when a provision of an injunction proves unworkable, the Court
will conclude that it is within its discretion to modify the preliminary injunction to
remove the watermark requirement. However, the Court will order RMLS to submit to
the Court a feasible method for identifying to AHRN the photographs for which it owns a
copyright (and are therefore subject to the preliminary injunction order). Because the
modified preliminary injunction extends to all photographs for which RMLS owns a
copyright but does not specify which photographs those are, RMLS must make that clear
to AHRN and the Court in order to justify the scope of the injunction.
A.
Authority to Modify a Preliminary Injunction
“In modifying a preliminary injunction, a district court is not bound by a strict
standard of changed circumstances but is authorized to make any changes in the
injunction that are equitable in light of subsequent changes in the facts or the law, or for
any other good reason.” Movie Sys., Inc. v. MAD Minneapolis Audio Distribs., 717 F.2d
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427, 430 (8th Cir. 1983). The Eighth Circuit noted in Movie Systems that the showing
required for modification of a preliminary injunction is less stringent than that required
for modification of a permanent injunction or consent decree. Id.
Looking to the case law on modifying consent decrees, the Supreme Court has
held that “[m]odification of a consent decree may be warranted when changed factual
conditions make compliance with the decree substantially more onerous,” or “when a
decree proves to be unworkable because of unforeseen obstacles, or when enforcement of
the decree without modification would be detrimental to the public interest.” Rufo v.
Inmates of Suffolk Cnty. Jail, 502 U.S. 367, 384-85 (1992) (internal citations omitted).
Courts have interpreted this to mean that “where the order has proved to be a faulty
method for accomplishing the goal for which it was designed, it would be error for a
district court to refuse to grant a modification.” Williams v. Lesiak, 822 F.2d 1223, 1227
(1st Cir. 1987). In light of the Eighth Circuit’s determination in Movie Systems that the
standard for modifying a preliminary injunction is less stringent than that for modifying a
consent decree, the Court interprets these precedents to indicate that a preliminary
injunction may be modified if it proves unworkable.
RMLS has presented evidence that the watermark provision is unworkable
because it does not have the technological capacity to feasibly implement the
requirement. AHRN points to statements made by RMLS throughout this litigation
suggesting that RMLS’s watermark is an accurate proxy for its copyright ownership and
points out that RMLS changed the watermark to not include a copyright “©” symbol at
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some point during the litigation.4 Neither point obviates the need to relieve RMLS of a
requirement that cannot feasibly be accomplished. Certainly, RMLS was in the best
position to know whether its watermark was an accurate indication of copyright
ownership and likely could have determined, before the Court entered the modified
preliminary injunction, both that the watermark did not accurately reflect copyright
ownership and that it would be impossible for RMLS to remove the watermark from
photographs.
Thus, it cannot be said that the watermark provision has proven
“unworkable because of unforeseen obstacles.” Rufo, 502 U.S. at 384.
But as the Eighth Circuit noted in Movie Systems, the standard for modifying a
preliminary injunction is less stringent than that for a consent decree, which was at issue
in Rufo.
Thus, the Court concludes that, in light of RMLS’s declaration that the
watermark provision is infeasible, it is within the Court’s discretion to relieve RMLS of
4
AHRN also cites a case from the Southern District of New York for the proposition that
name designations without a copyright symbol constituted copyright management information
under the Digital Millennium Copyright Act (DCMA) and that it would be “‘implausible’. . . that
a ‘viewer of Morel’s photos would not understand’ those designations to ‘refer to authorship.’”
(Mem. in Opp. to Pl.’s Mot. to Am. Modified Prelim. Inj. at 7, Aug. 15, 2013, Docket No. 155
(quoting Agence France Presse v. Morel, 769 F. Supp. 2d 295, 305 (S.D.N.Y. 2011)).) But
there, the court was determining whether, for the purposes of a motion to dismiss, the
photographer’s name without the copyright symbol could constitute copyright management
information (“CMI”) such that the photographer stated a claim against the Associated Press and
other websites for removing or altering the CMI for the purposes of concealing infringement.
769 F. Supp. 2d at 305-06. The court’s determination that designations using the photographer’s
name without the copyright symbol could still constitute CMI does not suggest that RMLS’s
claim that its watermark (which does not contain a “©”) indicates source rather than authorship
is disingenuous. There the court was considering the designation for the purposes of the DCMA,
which includes specific statutory language addressing a question distinct from the issue before
this Court. Regardless, the Court finds that it is within its discretion to relieve RMLS of the
watermark requirement despite any reliance on the watermark RMLS may have induced from its
previous representations.
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the duty to comply with that provision. The Court is inclined to do so because, although
the provision sensibly sought to relieve AHRN of the burden of determining which of
RMLS’s photographs are subject to its copyright, the specific terms of the watermark
provision were not discussed in the briefing or oral argument before the Court prior to the
Court’s amendment of the preliminary injunction, so RMLS had little opportunity before
the Court ordered amendments to the injunction to object based on infeasibility.
The First Circuit reversed a district court’s sua sponte modification of an
injunction under similar circumstances. In Dr. Jose S. Belaval, Inc. v. Perez-Perdomo,
the district court had modified an injunction in a way that had the effect of relieving the
defendant from making several quarters’ worth of payments to the plaintiff that
previously had been ordered. 465 F.3d 33, 36 (1st Cir. 2006). The First Circuit reversed,
finding that “the structure of the federal rules and the constitutional guarantee of due
process require that a court not [modify an injunction sua sponte] without giving prior
notice to the parties and an opportunity for them to be heard,” and that the district court
had erred in ordering modification of the injunction without any prior notice or
opportunity to be heard on that modification. Id. at 37 (citing Logan v. Zimmerman
Brush Co., 455 U.S. 422, 428-31 (1982); Memphis Light, Gas & Water Div. v. Craft, 436
U.S. 1, 11-12 (1978)). Here, although the Court acted in response to RMLS’s motion for
contempt, the addition of the watermark provision was not requested or discussed by the
parties. The Court intended the watermark provision to serve as a practical means of
enabling AHRN to comply with the preliminary injunction, and it certainly would have
enabled AHRN to determine which photographs are subject to the preliminary injunction
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order. But in light of RMLS’s claims that it is not feasible, the provision “has proved to
be a faulty method for accomplishing the goal for which it was designed.” Lesiak, 822
F.2d at 1227.
B.
Alternative Method for Identifying Copyrights
However, the Court will require RMLS to submit to the Court an alternative
method by which it will indicate to AHRN which photographs are subject to a copyright
by RMLS. This is necessary to justify the scope of the preliminary injunction.
Copyright infringement injunctions should extend to only those works for which
the plaintiff actually owns the copyright. See Chicago Bd. of Educ. v. Substance, Inc.,
354 F.3d 624, 632 (7th Cir. 2003) (where school board may not have owned the copyright
in all of its tests, injunction needed to be modified to extend to only tests “in which the
school board has valid and subsisting copyright,” as “[n]o evidentiary basis has been laid
for a broader injunction”); Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518
F. Supp. 2d 1197, 1229 (C.D. Cal. 2007) (noting injunction should clearly articulate that
it enjoins only copyrights “in which the Plaintiffs own or control rights” (citing
Substance, 354 F.3d at 632)). RMLS relies upon the Eighth Circuit which stated that
“[t]he power to grant injunctive relief is not limited to registered copyrights, or even to
those copyrights which give rise to an infringement action.” Olan Mills, Inc. v. Linn
Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994). But that language in Olan Mills served to
clarify that injunctions need not be limited to presently owned copyrights, but rather may
cover future owned works. Id. It does not stand for the proposition that works that are
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currently not owned by a plaintiff may be included in a copyright infringement
injunction.
The Court followed this guidance in its initial preliminary injunction order by
extending the preliminary “only insofar as copyrights are owned or co-owned by RMLS”
– despite the fact that RMLS did not own copyrights for all of the photographs on
NorthstarMLS – on the basis of RMLS’s claim that it places watermarks on the
photographs for which it owns copyrights. RMLS I, 2012 WL 4470286, at *2 n.3. This
was appropriate at the preliminary injunction stage, where it would have been premature
to require RMLS to produce evidence supporting its copyright ownership of all of the
photographs upon which it would claim infringement during the course of this litigation,
and RMLS had copyright registrations for the fifty photographs it submitted to the Court.
Cf. Johnson v. Radford, 449 F.2d 115, 117 (5th Cir. 1971) (“A temporary injunction is
intended to be temporary, to meet the exigencies of the situation, and necessarily at times
lacks the degree of precision which may be required on final decree.”). When the Court
modified the preliminary injunction, there was no dispute that RMLS likely owns a
copyright to some but not all of the photographs in the NorthstarMLS database.
Although the preliminary injunction continues to apply only to works for which
RMLS owns the copyright, it must still be clear which photographs on NorthstarMLS are
subject to RMLS’s copyright and which are not. “[I]t is basic to the intent of Rule 65(d)
that those against whom an injunction is issued should receive fair and precisely drawn
notice of what the injunction actually prohibits.”
Calvin Klein Cosmetics Corp. v.
Parfums de Coeur, Ltd., 824 F.2d 665, 669 (8th Cir. 1987). The Court did not require
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RMLS to identify at the preliminary injunction stage which of its five million
photographs it owns or co-owns a copyright, (see Mosey Decl. ¶ 4), but instead limited
the injunction to those works RMLS owns or co-owns and assumed, based on RMLS’s
representations, that the watermark served as a proxy for its copyright. As the watermark
is not a feasible method for doing so, RMLS must identify and implement an alternative
method. See United States v. Santee Sioux Tribe of Neb., 254 F.3d 728, 733 (8th Cir.
2001) (“In general, the law places the burden of proof on the party asserting a contention
and seeking to benefit from this contention.”); see also id. (“Furthermore, when true facts
relating to a disputed issue lie peculiarly within the knowledge of one party, it is fair to
assign the burden of proof to that party.”). RMLS has requested injunctive relief and is
the only party with knowledge of which photographs are subject to its copyright, so the
Court deems that it is appropriate in this case to require RMLS to indicate which
photographs are subject to the injunction.5 Cf. Calvin Klein Cosmetics, 824 F.2d at 669
(“we agree with Parfums that Paragraph 1(b) too broadly requires Parfums to guess at
what kind of conduct would be deemed trademark infringement”).
5
RMLS offers as an alternative that it has provided to AHRN copies of the Participant
Agreements in which brokers select either Option I or II as a method for AHRN to determine
which photographs in the NorthstarMLS database are subject to a copyright co-owned by RMLS.
This will not suffice. The documents that RMLS produced, which it confirmed constitute “all of
the Participant Agreements in RMLS possession” do not completely indicate which brokers
selected Option I and II. (Decl. of Adam Gislason ¶¶ 4-5, Aug. 15, 2013, Docket No. 159.)
Counsel for AHRN declared that in his review of the produced documents he found that “a
significant portion of the Participant Agreements are missing the pages containing the Option I
or Option II selection” and that, “for some of the Agreements, the Participant did not select
Option I or Option II, but left those check-boxes blank.” (Id. ¶ 5) He concludes that “it is
impossible for RMLS, AHRN, or this Court to determine from the Participant Agreements alone
whether the Participant selected Option I or Option II.” (Id.)
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The need for clarity from RMLS as to the extent of the preliminary injunction is
especially great where, as here, the stakes are higher for AHRN because RMLS sought
and succeeded in holding AHRN in contempt for its violation of the preliminary
injunction. In light of the contempt order, AHRN must be able to discern which works it
is precluded, under threat of contempt, from displaying. Typically in the context of an
order for contempt, the party “seeking civil contempt bears the initial burden of proving,
by clear and convincing evidence, that the alleged contemnors violated a court order,” but
once that showing has been made, the burden shifts to the alleged contemnors to “show
an inability to comply.” Chicago Truck Drivers v. Bhd. Labor Leasing, 207 F.3d 500,
505 (8th Cir. 2000).
Although the Court has already issued a contempt order, this framework is
instructive here. The Court’s contempt order was in conjunction with an order requiring
RMLS to make clear which photographs are subject to the injunction. When questioned
by the Court at oral argument about its ability to comply with the preliminary injunction
order, counsel for AHRN stated that he did “not know the technology enough to be able
to tell you about the ability to comply.” (Tr. 23, May 30, 2013, Docket No. 113.)
Counsel’s response seemed to focus on whether AHRN’s technology could read or detect
RMLS’s watermark, assuming that the watermark accurately identified the photographs
for which RMLS co-owns a copyright, not whether AHRN could comply with the
injunction if RMLS provided no indication as to its copyright ownership of individual
photographs in its database. In light of RMLS’s current position that it is unable to limit
the watermark to only the photographs for which it owns a copyright, AHRN has
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sufficiently argued that it is unable to comply with the injunction because it cannot
determine which photographs in the NorthstarMLS database are subject to the injunction.
It claims that without accurate watermarks, it “will have no feasible way to identify the
photographs RMLS actually owns, and the injunction will effectively bar it from using
any photograph in NorthstarMLS, for fear of facing another contempt motion.” (Mem. in
Opp. to Pl.’s Mot. to Am. Modified Prelim. Inj. at 17.) Although the Court need not
protect AHRN’s ability to use photographs in the NorthstarMLS database for which it
does not own the copyright, the owners of those copyrights are not party to this suit and
the preliminary injunction and contempt orders do not extend to their works.
See
RMLS II, 2013 WL 3367132, at *10 n.19 (“RMLS also admits that it has no standing to
protect copyrighted images that it does not own. Because this Court’s order extends only
to prohibiting AHRN from displaying copyrights owned by RMLS, RMLS must make
clear which copyrights on NorthstarMLS are in fact owned by RMLS.”).
Therefore, the Court will strike the watermark provision, but order RMLS to
submit to the Court a proposed alternative method by which it will indicate to AHRN and
the Court which photographs are subject to the preliminary injunction. If the Court
determines that the proposed method is adequate, the Court will order RMLS to
implement the method and will institute amended paragraph 2(b) of the preliminary
injunction in a reasonable amount of time following such implementation. Providing
copies of the Participant Agreements will not suffice as an alternative method, but using
the software described in the Second Declaration of Jonathan Cardella, (see Second Decl.
of Jonathan Cardella, Oct. 11, 2013, Docket No. 241), would likely suffice.
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ORDER
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1.
Regional Multiple Listing Service’s Motion to Modify the Amended
Preliminary Injunction [Docket No. 131] is GRANTED by:
a.
STRIKING amended paragraph 2(c) of the September 27, 2012
preliminary injunction order [Docket No. 35] (as amended by the order amending
the preliminary injunction order [Docket No. 121]).
2.
Within ten days of the issuance of this order, Plaintiff RMLS shall submit
to the Court a letter brief proposing an alternative method by which to indicate to AHRN
and the Court which photographs in the NorthstarMLS database are subject to the Court’s
preliminary injunction order. AHRN will have ten days after RMLS’s submission to
submit a response. If RMLS does not submit a satisfactory identification method, the
Court will modify the injunction to apply to only the fifty and seventy-seven photographs
discussed in the Court’s initial [Docket No. 35] and amended [Docket No. 121]
preliminary injunction orders, for which RMLS has already shown a likelihood of
success on the merits.
DATED: December 10, 2013
at Minneapolis, Minnesota.
____s/
____
JOHN R. TUNHEIM
United States District Judge
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