Etrailer Corporation v. Onyx Enterprises Int'l Corp.

Filing 54

MEMORANDUM AND ORDER... IT IS HEREBY ORDERED that the motion of Defendant Onyx Enterprises, International Corp., to dismiss Plaintiffs amended complaint for failure to state a claim is DENIED. (ECF No. 40 .). Signed by District Judge Audrey G. Fleissig on 2/7/2018. (NEP)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

ETRAILER CORPORATION,
Plaintiff,
vs.
ONYX ENTERPRISES, INT’L CORP.
d/b/a CARiD.COM,
Defendant.

)
)
)
)
)
)
)
)
)
)

Case No. 4:17-CV-01284-AGF

MEMORANDUM AND ORDER
This copyright infringement action is before the Court on the motion (ECF No. 40)
of Defendant Onyx Enterprises, International Corp., to dismiss Plaintiff etrailer
Corporation’s amended complaint for failure to state a claim. For the reasons set forth
below, the motion to dismiss will be denied.
BACKGROUND
Plaintiff is an online vendor of motor vehicle accessories such as trailer hitches,
trailer parts, and towing accessories manufactured by another entity. Plaintiff uses its own
high-quality photographs and videos to advertise and market the products it sells.
Plaintiff asserts in its amended complaint that its photos are “original, creative works” for
which it has several active and valid copyright registrations with the United States
Copyright Office, or pending copyright applications.

ECF No. 32 at 7. Defendant is a

direct competitor of Plaintiff in the online car accessories sales market and sells many of
the same products that Plaintiff sells. The amended complaint includes a link to

Plaintiff’s website where the photos appear—www.etrailer.com. They are realistic
photographs of automotive products depicted in white space.
Plaintiff claims that Defendant engaged in willful direct copyright infringement in
violation of the federal Copyright Act, 17 U.S.C. § 501, by copying and displaying
thousands of Plaintiff’s photos on Defendant’s website and on eBay, to sell the products
depicted in the photos (Count I); and removed copyright management
information—namely Plaintiff’s logos and/or marks—from some of the products depicted
in the photos, in violation of § 1202(b) of the Act. (Count II). For relief, Plaintiff seeks a
finding that Defendant has infringed Plaintiff’s rights to the photos; an order directing
Defendant to provide proof of destruction of unlawful copies of the photos or to allow
Plaintiff to effect the same; an award of monetary damages (statutory damages of $150,000
per infringement or actual damages and disgorgement of profits to be proven at trial,
attorney’s fees, and costs); and permanent injunctive relief.
Defendant argues that Plaintiff’s amended complaint fails to state a claim because
the photos in question are undeserving of copyright protection as they do not involve “even
a modicum of creative expression.” ECF No. 40 at 1. Rather they are, according to
Defendant, “unadorned products depicted in white space . . . .” Id. at 5. Defendant notes
that the amended complaint does not allege that Plaintiff made any decisions with regard to
lighting, shading, or background in producing the photographs.
Plaintiff responds that whether Plaintiff’ photos deserve copyright protection is a
question of fact that cannot be decided on a motion to dismiss, and further that the photos
are copyrightable. Attached to Plaintiff’s response is the July 16, 2017 affidavit of
2

Plaintiff’s “Creative Designer and Lead Digital Imaging Specialist.” The affiant explains
that she was tasked with “formalizing and perfecting [Plaintiff’s] policy of photographing
[Plaintiff’s] products so that those products are displayed in images in a higher quality light
than [Plaintiff’s] competitors, who often simply use stock photos provided from
manufacturers,” and that Plaintiff “photographs the products it sells in a way that makes the
customer feel as if he or she were in the same room as the underlying products.” ECF No.
43-1 at 1-2. She describes and how after taking photos of the products, Plaintiff uses
image editing software, such as Adobe Photoshop, and editing processes, such as Magic
Wand, to edit the photos to adjust the images. The affiant attests further that “[o]ther
techniques that are used are smooth, crop, saturate, and burn to prepare the photographs for
the website,” and that “[u]sing advanced technology, [Plaintiff has] recently been able to
automate some of the processes outlined [in the affidavit].” Id. at 3, 7.
Defendant replies that here the Court could decide the issue as a matter of law at this
stage of the proceedings, from the face of Plaintiff’s complaint, that the photos at issue are
merely descriptive and do not deserve copyright protection. Defendant maintains that the
affidavit described above was improperly filed in response to the motion to dismiss, and
should be disregarded by the Court as an attempt to further amend the complaint, without
leave. Defendant points to the statement in the affidavit that the process of creating the
photos at issue has been automated, as support for Defendant’s position that the photos lack
any creativity and originality.
DISCUSSION
For a plaintiff to survive a motion to dismiss, “a complaint must contain sufficient
3

factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007)). “Threadbare recitals of the elements of a cause of action, supported by
mere conclusory statements, do not suffice.” Id. The reviewing court must accept the
plaintiff’s factual allegations as true and construe them in the plaintiff’s favor, but the court
is not required to accept the legal conclusions the plaintiff draws from the facts alleged.
Id.; Retro Television Network, Inc. v. Luken Commc’ns, LLC, 696 F.3d 766, 768-69 (8th
Cir. 2012). 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.” Ashcroft, 556 U.S. at 678 (citation omitted). While “[t]he
plausibility standard is not akin to a ‘probability requirement’ . . . it asks for more than a
sheer possibility.” Id.
Copyright owners have the exclusive rights to reproduce and distribute copyrighted
works. 17 U.S.C. § 106. To make a case for copyright infringement, a plaintiff must
show (1) it owns a valid copyright, and (2) the defendant copied constituent elements of the
work that are original to the plaintiff. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 346 (1991); Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1262
(10th Cir. 2008). For purposes of the motion before the Court, there is no dispute about
copying; Defendant used Plaintiff’s photos in Defednant’s promotional materials. The
focus instead is on the validity of Plaintiff’s asserted copyright in the photos.
Copyright protection extends only to “original works of authorship. . . . A work is
original if it was independently created by the author and possesses at least some minimal
4

degree of creativity.” Id. at 345. “The requisite level of creativity is extremely low; even
a slight amount will suffice.” Id. “[O]riginality, not ‘sweat of the brow,’ is the
touchstone of copyright protection.” Id. at 359-60. A copyright registration creates a
presumption of the validity of the copyright, 17 U.S.C. §410(c), but Defendant “may
overcome this presumption by presenting evidence and legal argument sufficient to
establish that the works in question were not entitled to copyright protection” after all.
Meshwerks, 528 F.3d at 1262.
“[P]hotographs are not per se copyrightable, for a photograph may lack sufficient
originality to meet the requirements of copyright protection.” Id. at 1264. But “federal
courts have historically applied a generous standard of originality in evaluating
photographic works for copyright protection.” Schrock v. Learning Curve Int’l, Inc., 586
F.3d 513, 519 (7th Cir. 2009) (citing cases).
“[I]n many cases . . . the original expression [the photographer] contributes
lies in the rendition of the subject matter— that is, the effect created by the
combination of his choices of perspective, angle, lighting, shading, focus,
lens, and so on. Most photographs contain at least some originality in their
rendition, see except perhaps for a very limited class of photographs that can
be characterized as “slavish copies” of an underlying work”
Id.
Here, as noted above, Plaintiff alleges that the photographs are “original, creative
works.” In ruling on Defendant’s motion to dismiss, the Court accepts this allegation as
true and construes it is Plaintiff’s favor. The Court does not believe that to survive the
motion to dismiss, Plaintiff was required to add factual allegations as to what specific
aspects of the photos—such as lighting, or background—were creative. The Court cannot
say as a matter of law that Defendant overcame the presumption of validity of Plaintiff’s
5

copyrights, or that the product-accurate photos do not meet the minimal originality
requirement in Feist, so as to protect them from the outright coping that allegedly occurred
here. See, e.g., SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301, 311
(S.D.N.Y. 2000). The Court reaches this conclusion based on the amended complaint
itself, without regard to the affidavit submitted by Plaintiff.
CONCLUSION
Accordingly,
IT IS HEREBY ORDERED that the motion of Defendant Onyx Enterprises,
International Corp., to dismiss Plaintiff’s amended complaint for failure to state a claim is
DENIED. (ECF No. 40.)

_________________________________
AUDREY G. FLEISSIG
UNITED STATES DISTRICT JUDGE
Dated this 7th day of February, 2018.

6