Regional Multiple Listing Service of Minnesota, Inc. v. American Home Realty Network, Inc.

Filing 281

ORDER amending paragraph 2 of the preliminary injunction order (as set out in Docket 35 121 265 Orders) (Written Opinion). Signed by Judge John R. Tunheim on January 8, 2014. (DML)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
REGIONAL MULTIPLE LISTING
SERVICE OF MINNESOTA, INC., doing
business as NorthStarMLS,

Civil No. 12-965 (JRT/FLN)

Plaintiff,
ORDER
v.
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 80203; 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
Avenue South, Suite 205, Minneapolis, MN 55415, for defendant.
Plaintiff Regional Multiple Listing Service of Minnesota, Inc. (“RMLS”) moved
the Court to modify its Preliminary Injunction Order issued July 5, 2013 to eliminate the
requirement that RMLS remove watermarks from photographs on its listing service for
which it does not own a copyright. (Mot. to Modify Amended Preliminary Injunction,
July 18, 2013, Docket No. 131.) The Court issued an order eliminating the requirement,
but requiring RMLS to propose an alternative method by which to indicate to defendant

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American Home Realty Network (“AHRN”) and to the Court which photographs in
RMLS’s listing database are subject to the Court’s preliminary injunction order. (Mem.
Op. and Order, Dec. 10, 2013, Docket No. 265.) The Court gave RMLS ten days to
submit a proposed alternative and AHRN ten days to respond.
The parties have submitted their respective proposal and response. (Letter to
District Judge, Dec. 20, 2013, Docket No. 270; Letter to District Judge, Dec. 30, 2013,
Docket No. 278.) RMLS proposes to prospectively add a visually-perceptible watermark,
“© RMLSMN,” to only those photographs for which it owns a copyright.

It also

proposes to investigate the feasibility of using software to embed a digital watermark so
that AHRN could use software to detect and distinguish the watermarked photos. RMLS
further explains that it will apply the new watermark only to photographs that are
associated with a listing for which the broker/participant selected “Option I” (meaning
that the broker/participant assigned part of the copyright of all photographs for that
broker/participant to RMLS) and for which the agent/subscriber posting a listing
confirms that the agent/subscriber owns the copyright for the photographs in that listing
(either by having taken the photographs or through a written assignment). 1 RMLS also
indicates that it will improve its tracking system so that it can easily identify both

1

Under Option II, the broker/participant retains any and all copyright to the photographs,
without assigning any copyright to RMLS. The parties appear to use the terms “broker” and
“participant” to refer to the member entities of RMLS, such as Edina Realty, which enter into the
participant agreement through which they select either Option I or II. The parties appear to use
the terms “agent” and “subscriber” to refer to the individual agents associated with a
broker/participant that post individual listings in the RMLS database. The Court will adopt these
naming norms.

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whether uploaded photographs are associated with an Option I or Option II participant
agreement and whether, on a listing-by-listing basis, an RMLS agent/subscriber owns the
copyright for the photographs in the listing.
AHRN generally approves of RMLS’s proposal, but seeks clarification and greater
detail on two general issues: identification of the source of RMLS’s copyright ownership
and AHRN’s ability to detect the watermark. On the first, AHRN requests that the Court
require RMLS to provide copies of all of the participant agreements in which
broker/participants have selected either Option I or II.

AHRN also raises several

concerns with the adequacy of agents/subscribers’ warranty and confirmation that they
own the copyright to the photographs in a listing and seeks to require RMLS to ask three
specific questions during the photograph upload process. Relatedly, AHRN seeks to
require RMLS to obtain clarification of the agent/subscriber’s copyright ownership on a
photograph-by-photograph basis when a single listing might include photographs with
different copyright ownership.
With regard to AHRN’s ability to detect the watermark, AHRN would require
RMLS to report back on its investigation into the feasibility of digital watermark
software within thirty days rather than sixty days. In the meantime, AHRN seeks the
opportunity to correct any mistakes made by its optical reading software because reading
the watermarks optically is less accurate than reading a digital watermark.
The Court will adopt RMLS’s proposal with an addition proposed by AHRN to
provide AHRN an opportunity to correct erroneous postings in a timely fashion. Most of
the additional clarification and requirements sought by AHRN are not necessary at this
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stage:

It is reasonable for RMLS to rely on agents/subscribers’ assertions and

confirmations of copyright ownership on a listing-by-listing basis for the purposes of the
preliminary injunction. The Court deems sixty days sufficient and appropriate for RMLS
to investigate the feasibility of digital watermark software; AHRN has adequate
alternative methods to review RMLS’s photographs for the watermark without such
software.

ORDER
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that paragraph 2 of the preliminary injunction order (as set out in
Docket No. 35, Docket No. 121, and Docket No. 265) is AMENDED. Paragraph 2 of
the preliminary injunction order shall now read as follows:
(a)

Defendant, along with any of its officers, directors,

subsidiaries, and successors, and all persons and entities acting in concert
therewith, are immediately and until further order of this Court
PRELIMINARILY ENJOINED from engaging in any unauthorized
copying, display, use, and/or public distribution of:
(1) the works covered by U.S. Copyright Reg. Nos. TX VA 1432-912; VA 1-432-913; VA 1-432-914; and VA 1-432-917, and
(2) the photographs from the listings of Twin Oaks and
Countryside attached to the November 15, 2012, Declaration of
Michael Bisping;

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(b)

Defendant, along with any of its officers, directors,

subsidiaries, and successors, and all persons and entities acting in concert
therewith, are immediately and until further order of this Court
PRELIMINARILY ENJOINED from engaging in any unauthorized
copying, display, use, and/or public distribution of any other photographs in
which Plaintiff owns or co-owns the copyright and for which Plaintiff
(1)

has affixed a visually-perceptible watermark to the

photograph in the form of “© RMLSMN,” and
(2)

has obtained duly-executed and complete written

agreements assigning or transferring copyright ownership or coownership in the photograph (agreements may be in the form of
electronic writings and signatures) from the party representing or
warranting its right to assign or transfer copyright ownership or coownership in the photograph;
(c)

Plaintiff shall also undertake the following steps:
(1)

Plaintiff will determine whether it is feasible for

Plaintiff to implement a process in which it also provides a digitallyembedded watermark using Digimarc or other technology for the
photographs to which RMLS has applied the “© RMLSMN”
watermark in accordance with paragraph 2(b) above. Plaintiff will
report back to the Court and Defendant by letter which process it
intends to implement (or explain why it cannot be implemented) but
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shall in any event provide a status report to the Court no later than
sixty (60) days from the date of this Order, and
(2)

Plaintiff will include in its system for uploading

photographs to the NorthstarMLS database a procedure by which the
party uploading the photographs indicates whether or not the
uploading party owns a copyright in the uploaded photographs, and
(3)

In the event Plaintiff learns of any photograph bearing

the “© RMLSMN” watermark appearing on the neighborcity.com
website, or otherwise being used or displayed by Defendant, Plaintiff
shall promptly notify Defendant of the photograph. Defendant will
have three business days after such notice to remove the photograph
and to notify Plaintiff that it has done so. If Defendant fails to
remove the photograph within three days of receiving notice from
Plaintiff, then Plaintiff may file a motion seeking to have Defendant
held in contempt of this Order.

DATED: January 8, 2014
at Minneapolis, Minnesota.

____s/
____
JOHN R. TUNHEIM
United States District Judge

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