McCleese v. Natorp's Inc. et al
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTION TO DISMISS (Doc. 7 ) - The Court hereby GRANTS IN PART and DENIES IN PART Defendant's Motion to Dismiss. This case will proceed on Count I against both Natorp' s and Crai g Natorp for copyright infringement and Count III against Craig Natorp for vicarious infringement. Accordingly, the Court hereby ORDERS that: 1. Defendants' Motion to Dismiss Count I for copyright infringement is DENIED; 2. Defendants' Mot ion to Dismiss Count II for violation of the DMCA is GRANTED; 3. Defendants' Motion to Dismiss Count III for violation of the Lanham Act is GRANTED; 4. Defendants' Motion to Dismiss Count IV for vicarious infringement is DENIED; and 5. Defendants' Motion to Dismiss Count V for common law unfair competition is GRANTED. IT IS SO ORDERED. Signed by Judge Matthew W. McFarland on 06/03/2021. (kaf)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION - CINCINNATI
Case No. 1:20-cv-118
Judge Matthew W. McFarland
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS'
MOTION TO DISMISS (Doc. 7)
This case is before the Court on Defendants' Motion to Dismiss Certain of
Plaintiff's Claims pursuant to Fed. R. Civ. P. 12(b)(6). (Doc. 7.) Plaintiff has filed a
Memorandum in Opposition (Doc. 10) and Defendants have filed a Reply (Doc. 11)
making this matter ripe for review.
Plaintiff Mike McCleese owns a Vermont-based landscape company specializing
in the design and installation of custom gardens. Defendant Natorp's Inc. ("Natorp's")
is an Ohio-based nursery outlet offering custom landscape design services. Defendant
Craig Natorp is the Vice-President and shareholder of Natorp's, and leads the
landscape design team.
Throughout his extensive landscaping career, McCleese collected various
photographs of unique projects and gardens. But in February 2010, Natorp's began
using approximately 24 of McCleese' s photos on its commercial website. The parties
disagree precisely as to how Defendants came into possession of the photos and
whether such use was authorized. Defendants contend that they received authorization
from a now-former Natorp's employee who had previously worked with McCleese on
some of his landscape designs. McCleese argues that only he could grant such
authorization, which he never did.
In May 2018, McCleese visited Natorp' s website and discovered one of his
photos on the main homepage. Upon further investigation, he found an additional 23
photos of his posted on Natorp' s website. They were listed under headings such as
"Backyard Landscape Photos" or "Natural Stone Step Photos." (Doc. 7-6, Page ID 113.)
Each webpage that contained one of Mccleese' s photos also contained Natorp' s own
trademark and copyright symbols at the top and bottom, respectively. Later that month,
while on a work trip to Ohio, McCleese visited Natorp's headquarters and requested
that the photos be removed. Natorp' s complied and removed all of his photos from its
website shortly thereafter. The photos, however, still remain online at various social
media outlets including Natorp's private website, Facebook, and Pinterest.
McCleese thereafter registered a copyright for his photos on January 10, 2019.
McCleese asserts that he "does not license his photos for any commercial purpose, does
not sell copies of his photos, and his photos are unpublished." (Doc. 5, 1 52.)
After the parties failed to resolve the dispute, McCleese filed suit in the U.S.
District Court of Vermont but his complaint was dismissed for lack of personal
jurisdiction. So, in March 2020, he filed the present lawsuit that alleges five causes of
action: Count I for direct copyright infringement against both Natorp' s and Craig
Natorp; Count II for violation of the Digital Millennium Copyright Act against
Natorp' s; Count III for false advertising in violation of the Lanham Act against both
Natorp' s and Craig Natorp; Count IV for vicarious copyright infringement against
Craig Natorp; and Count V for common law unfair competition against both Natorp's
and Craig Natorp. Defendants now move to dismiss causes I, III, IV, and V against
Craig Natorp and causes II, III, IV, and V against Natorp's.
When considering a Fed. R. Civ. P. 12(b)(6) motion to dismiss, the Court accepts
all allegations of material fact as true and construes them in the light most favorable to
the non-moving party. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 554-55 (2007). To survive,
the complaint must contain "sufficient 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
Twombly, 550 U.S. at 570). Facial plausibility is met when "the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged." Id. "Asking for plausible grounds simply calls for
enough fact to raise a reasonable expectation that discovery will reveal evidence."
National Business Development Services, Inc. v. American Credit Educ. and Consulting Inc.,
299 Fed.Appx. 509,512 (6th Cir. 2008) (quoting Twombly, 550 U.S. at 555).
The Court does not accept as true any "conclusory legal allegations that do not
include specific facts necessary to establish the cause of action." New Albany Tractor, Inc.
v. Louisville Tractor, Inc., 650 F.3d 1046, 1050 (6th Cir. 2011). The plaintiff's complaint
instead "must contain either direct or inferential allegations with respect to all material
elements necessary to sustain a recovery under some viable legal theory." Weisbarth v.
Geauga Park Dist., 499 F.3d 538,541 (6th Cir. 2007).
I. Copyright Infringement
Defendants' motion to dismiss count I against Craig Natorp is denied. To
succeed on a copyright infringement claim, a plaintiff must establish (1) ownership of a
valid copyright; and (2) copying of constituent elements of the work that are original.
ECIMOS, LLC v. Carrier Corp., 971 F.3d 616, 627-8 (6th Cir. 2020) (quoting Feist Publ'ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,361 (1991)). The purpose of the second prong is
to examine "whether any copying occurred." Lexmark Int'l, Inc. v. Static Control
Components, Inc., 387 F.3d 522,534 (6th Cir. 2004) (emphasis added).
The first prong is not contested here. As to the second prong, Defendants argue
that McCleese fails to provide factual allegations that connect Craig Natorp' s individual
conduct to the alleged acts of infringement. Principally, Defendants highlight that the
Complaint alleges Craig Natorp merely" authorized" infringement of the photos but
does not allege that he actually engaged in infringement himself.
The Court disagrees. The Complaint does allege factual matter that, when taken
as true, plausibly demonstrates that Craig Natorp was involved in some infringement
activity. First, Craig Natorp is the company's Vice President and a shareholder in the
family-owned corporation. It is plausible that, through these positions, Craig Natorp
exercises some degree of authority over the day-to-day activity of the business. Second,
Craig Natorp leads the landscape design team. McCleese alleges that Defendants used
his photos for advertisements to promote their landscape services. Craig Natorp' s team
would have been the ones to complete those services. The Complaint further alleges
that Natorp's could not possibly believe that the photos represented its own design
team's work. And if anyone at Natorp's would know what was and was not a product
of its own landscape design team, it would be the landscape design team leader.
While Defendants are correct that most of the Complaint refers only to the
company and not Craig Natorp individually, it is well established that a corporation is
an entity that can only act through its agents. Barge v. Jaber, 831 F.Supp. 593,601 (S.D.
Ohio 1993). Craig Natorp's position in the company and management of the landscape
design team leaves the Court with a "reasonable inference" that it is plausible he copied
some constituent element of McCleese's original work. Iqbal, 556 U.S. at 678. The
Complaint also raises a reasonable expectation that more information could be revealed
upon discovery. Twombly, 550 U.S. at 555. Defendants concede that the Complaint
alleges sufficient factual matter to state a plausible claim for copyright infringement
against Natorp's, Inc. The Complaint achieves the same as to Craig Natorp.
II. Vicarious Infringement
Defendant's Motion to Dismiss count IV against Craig Natorp is also denied. A
party may be held vicariously liable for copyright infringement when (1) a defendant
has the right and ability to supervise the infringing conduct; and (2) the defendant has
an obvious and direct financial interest in the infringement. Gordon v. Nextel Commc'ns
& Mullen Advertising, Inc., 345 F.3d 922, 925 (6th Cir. 2003). Vicarious copyright liability
is an "outgrowth" of the common law doctrine of respondeat superior, which holds the
employer liable for the acts of its agents. Id. That a defendant lacks knowledge of the
infringing activity is irrelevant to the analysis. Id.
As to the first element, the Complaint states facially plausible facts that Craig
Natorp had the "right and ability to supervise" the alleged infringing activity. Cases
imposing vicarious liability typically do so upon individuals who exercise" day-to-day
control" of the business. See, e.g. Jobete Music Co., Inc. v. Johnson Commc'ns, Inc., 285
F.Supp.2d 1077, 1084 (S.D. Ohio 2003) (finding majority owner of radio station
vicariously liable for infringement where his duties "include supervising the station
staff ... [through which] station employees" ultimately report to him); King Records, Inc.
v. Bennett, 438 F.Supp.2d 812,852 (M.D. Tenn. 2006) (finding an individual vicariously
liable for a business's infringement when the individual defendant, "made all final
decisions, and was ultimately responsible for anything that happened at [the
In support of their motion to dismiss, Defendants cite to a Northern District of
California decision holding that "bare allegations" that an individual was a corporate
officer are insufficient to support the first element of a vicarious liability claim. Nebula,
LLC v. Chordiant Software, Inc., 2009 WL 750201 at *2 (N.D. Cal. Mar. 20, 2009). But the
Complaint here alleges far more than just Craig Natorp's title as an officer of the
corporation-namely that he is also a shareholder and directly oversees the landscape
design team. More analogous to the case at bar is Jobete Music where this Court held that
a defendant who was a corporate officer, shareholder, and supervisor of certain staff
was vicariously liable for copyright infringement committed by that staff. 285 F.Supp.
2d at 1084. It is plausible that as a team leader and Vice President, Craig Natorp had the
right and ability to supervise both the landscape design team specifically and actions of
the business generally.
As to the second element, the Complaint contains sufficient factual matter to
plausibly allege Craig Natorp' s "obvious and direct financial interest" in the infringing
activity. Gordon, 345 F.3d at 925. Defendants are correct in highlighting the Complaint's
threadbare allegations that Craig Natorp received a" direct financial benefit." But the
Complaint alleges additional facts that raise Craig Natorp' s obvious and direct financial
interest above the plausibility mark. Principally, the Complaint states that Natorp's has
acquired landscape design customers and sold goods and services associated with
landscape design since using McCleese' s photos. This allegation taken together with
Craig Natorp' s status as a shareholder, as leader of the design team, and as a corporate
officer gives rise to a reasonable inference that an "obvious and direct financial interest"
in the infringement is plausible. While the precise nature of Craig Natorp' s financial
interest is unknown, the Complaint also gives rise to the reasonable expectation that
discovery will shed further light on this issue.
III. False Advertising in Violation of the Lanham Act
Defendants' motion to dismiss count III against both Natorp' s and Craig Natorp
is granted. While both parties briefed arguments as to Copyright Act preemption and
whether McCleese could sustain a prima facie Lanham Act claim, the Court limits its
analysis to the issue of standing.
To have statutory standing under the Lanham Act, a plaintiff must demonstrate
(1) that he is within the "zone of interest" protected by Section 1125(a); and (2) show
"proximate causation" between the plaintiff's injury and the alleged violation of the
statute. Lexmark Int'l, Inc. v. Static Components, Inc., 572 U.S. 118, 129 (2014). While the
zone of interests test is "not especially demanding," a plaintiff still must plead an injury
to a commercial interest in sales or business reputation. Id. The plaintiff in Lexmark had
standing because its commercial position and competitiveness in the marketplace had
been injured. Id. at 137. Likewise, a plaintiff who alleges a loss of commercial investors
or damaged business reputation falls within the specific "zone of interests" protected by
the Lanham Act. Charleston Laboratories, Inc. v. SIDIS Corporation, 2017 WL 3725189 *4
(E.D. Ky Aug. 29, 2017).
McCleese contends that he has a commercial interest in his landscape design
services. Beyond this conclusory statement, however, McCleese fails to plead any facts
demonstrating an injury to a commercial or sales interest. Instead, the only injuries
McCleese pleads are immaterial to the legal analysis. First, the Complaint alleges a
conclusory accusation that McCleese has "suffered harm." (Doc. 5,
,r 70.) But in a
motion to dismiss, the Court need not consider threadbare recitation of legal elements
supported by mere conclusory statements. Iqbal, 556 U.S. at 678. Second, McCleese
alleges sadness, distress, and "profound grief" from Natorp's use of a particular
landscape job. (Doc. 5, i!39.) This injury is a mere psychological, emotional harm, one
that the Lanham Act does not contemplate. 15 U.S.C. § 1114, 1117.
Unlike in Charleston Laboratories, the Complaint here fails to allege any injury to
McCleese' s business reputation in the commercial marketplace or that McCleese lost
any business or investors at all. Charleston, 2017 WL 3725189 at *4. Unlike in Lexmark,
the Complaint here does not allege any facts as to how McCleese' s position in the
marketplace was harmed in any way. Lexmark, 572 U.S. at 137. In fact, the Complaint
itself undermines McCleese' s own argument. McCleese concedes that he "does not
license his photos for any commercial purpose, does not sell copies of his photos, and
his photos are unpublished." (Doc. 5,
1 52.) Further, instead of alleging any fact to
suggest a commercial harm to McCleese, the Complaint is mired with accusations that
the Defendants were "unjustly enriched." A plaintiff's standing under the Lanham Act
hinges on a commercial injury to the plaintiff, not merely a benefit to the defendant. See
Lexmark, 572 U.S. at 132.
In sum, the Complaint contains no factual allegations that McCleese suffered an
injury to his commercial sales interest or business reputation. And, as a practical matter,
McCleese himself is in the best position to realize and articulate the commercial injury
that Natorp's false advertising supposedly inflicted. Thus, discovery is not likely to
yield any additional information to this fact. Because the Complaint failed to allege any
commercial injury, the Court must conclude McCleese is not within the Lanham Act's
"zone of interests." Consequently, count III is dismissed.
IV. Common Law Unfair Competition
Defendants' motion to dismiss count V against both Natorp's and Craig Natorp
is granted. Both Ohio and federal courts have recognized that the same Lanham Act
analysis applies to claims under Ohio's statutory and common law of unfair
competition. See Leventhal & Assocs., Inc. v. Thomson Cent. Ohio, 128 Ohio App.3d 188,
714 N.E.2d 418,423 (Ohio Ct.App.1998); Barrios v. American Thermal Instruments, Inc.,
712 F.Supp. 611, 613-14 (S.D. Ohio 1988). Further, both parties agree that the common
law unfair competition claim stands or falls with the Lanham Act claim. Because the
Lanham Act claim fails, so too does McCleese' s state law claims - either by statute or
common law.1 Count Vis dismissed.
V. The Digital Millennium Copyright Act
Defendant's motion to dismiss count II against N atorp' s is granted. Section
1202(a) of the Digital Millennium Copyright Act ("DMCA") provides that "no person
shall knowingly and with the intent to induce, enable, facilitate, or conceal
infringement- (1) provide copyright management information that is false, or (2)
distribute or import for distribution copyright management information that is false."
17 U.S.C. § 1202(a). To properly plead a violation of§ 1202(a), a plaintiff must allege
that "(1) defendant knowingly provided false copyright information; and (2) that the
defendant did so with the intent to induce, enable, facilitate, or conceal an
infringement." Krechmer v. Tantaros, 747 Fed.Appx. 6, 9 (2nd Cir. 2018). "Copyright
management information" ("CMI") includes the name of the copyright ownerincluding as set forth in the notice of copyright-and the name of the author. 17 U.S.C. §
While the Complaint only alleges violation of Ohio's common law of unfair competition, Plaintiff's
Response in Opposition entertains the possibility of amending the Complaint to include a statutory
violation under the Ohio Deceptive Trade Practices Act (ODTPA). Because Plaintiff's Lanham Act claim
fails, the prospective statutory ODTPA claim would fail for the same reasons as the common law claim.
2 While the Complaint failed to reference whether the DMCA claim arose under Section 1201, 1202(a) or
The necessary element common to all DMCA claims is the defendant's
falsification of CMI. Because the Court finds that McCleese has not pleaded facts
sufficient to allege the existence of false CMI, the Court's analysis is limited to that
scope. To establish the existence of CMI, McCleese directs the Court to Natorp's
trademarked logo and standard copyright symbol located at the top and bottom,
respectively, of Natorp's webpages. (Doc. 7-6 at Page ID 113-15.) McCleese argues that
Natorp' s created false CMI merely by displaying its trademark and copyright on the
same webpage as McCleese' s photos. As such, McCleese argues that this false CMI is
"conveyed in connection" with his photos in such a way that anyone viewing the
photos online would conclude they were owned by Natorp' s.
The Court disagrees. Overwhelmingly, case law precedent demonstrates that
even when the same or similar facts alleged are accepted as true and viewed in light
most favorable to McCleese, there is not a plausible claim that false CMI exists. Where a
defendant's "copyright notice was at the bottom of every page of the website in the
generic website footer," copyrighted content on that webpage is not" conveyed" as false
CMI. GC2 Incorporated v. International Game Technology PLC, 255 F.Supp.3d 812,821
(N.D. Ill. 2017). The defendant's trademark or copyright that allegedly makes the CMI
false must appear in the "body" or" area around" the infringed work. Shell v.
Lautenschlager, 2017 WL 4919206 at *9 (N.D. Ohio Oct. 31, 2017). This interpretation "is
1202(b), McCieese has clarified that he intended a§ 1202(a) violation. McCleese concedes that while
discovery may reveal a violation of§ 1202(b), he" does not make that argument at this time." Because the
Complaint does not even allege the existence of any CMI contained in McCleese's original photos nor
does it allege Natorp's altered or removed CMI, the§ 1202(b) claim is irrelevant. The Court proceeds on
the understanding that McCleese is solely alleging Natorp's violated § 1202(a).
consistent with the text of the statute, which requires the CMI to be 'conveyed' with the
copyrighted work." Personal Keepsakes, Inc. v. Personalizationmall.com, Inc. (N.D. Ill. Feb.
8, 2012) (citing 17 U.S.C. § 1202(c)). "Such a rule prevents a 'gotcha' system where a
picture has no CMI near it but the plaintiff relies on a general copyright notice buried
elsewhere on the website." Id.
The Northern District of Illinois recently assessed an argument analogous to
McCleese's. Alan Ross Machinery Corporation v. Machinio Corporation, 2019 WL 1317664
(N.D. Ill. Mar. 22, 2019). In Alan Ross, the plaintiff alleged a violation of the DMCA
when plaintiffs photos and data were posted verbatim on defendant's website. Id. at*
1. To support the existence of CMI that was then falsified, the plaintiff argued its
copyright symbol at the bottom of its webpages sufficed to copyright every photo. Id. at
*3. In rejecting that argument, the court persuasively reasoned that, at most, a generic
copyright notice at the bottom of a webpage conveys the owner's intellectual property
rights in the entire website, not a blanket copyright to all of the photos or data listed on
any given webpage. Id. The same reasoning applies here. McCleese, the Complaint, and
its attached Exhibits rely on nothing more than a copyright symbol and the standard
Natorp' s trademark that appear on every page of the website. 3 McCleese does not
allege that Natorp' s altered or removed any copyright symbol on his photos. McCleese
In assessing a Rule 12(b)(6) motion, this Court relies on the complaint, exhibits attached to it, and
documents that a defendant attaches to the motion to dismiss, if the plaintiff refers to those documents in
his complaint and they are central to his claim. Amini v. Oberlin Coll. , 259 F.3d 493, 502 (6th Cir. 2001).
Plaintiff amended his complaint but did not include the exhibits attached to the original complaint. He
does, however, refer to the exhibits. See, e.g., Doc. 5 at ,r,r 29, 44. And Defendants attach them to their
motion to dismiss. Accordingly, the exhibits attached to the original complaint and the motion to dismiss
are part of the pleadings.
does not allege that Natorp's superimposed its copyright symbol or trademark onto his
photos. Thus, McCleese fails to plausibly allege the existence of false CMI.
But McCleese contends that his case presents a unique issue: is false CMI created
when Natorp' s copyright and trademark "appear on pages consisting almost entirely"
of McCleese's photos? (Doc. 10 at 11.) Again, McCleese's own Complaint and attached
Exhibits undermine such an assertion. McCleese' s 24 copyrighted photos are found at
Exhibit D to the motion to dismiss, and are the same photographs attached to the
Original Complaint as Exhibit A. Exhibit D also includes images of Natorp' s webpages
that are titled, for example, "Stepper Photos," "Natural Stone Step Photos," or
"Backyard Landscape Photos." (Doc. 7-6 at Page ID 113-15.) These are the same
screenshots attached to the Original Complaint as Exhibit B.
While McCleese asserts those webpages contain" almost entirely" his
copyrighted photos, a simple side-by-side comparison reveals they do not. As an
example, one of Natorp' s webpages contains 54 photos, another page has 41, yet
another has 10. Assuming for the sake of argument that the webpage with 41 photos
titled "Backyard Landscape Photos" included all 24 of McCleese' s copyrighted photos
(which it does not), it cannot be said that the webpage consist"almost entirely" of
McCleese's photos. The closest McCleese' s "almost entirely" claim comes to bearing
true is on the webpage titled "Pergola and Trellis Photos." But of the ten photos on that
webpage, at most, two are McCleese' s copyrighted photos. By McCleese' s own
admission, when a business "places its copyright notice on a webpage depicting many
images, but mistakenly includes a small, infringed image, it is unlikely that would be
sufficient to show that the infringer had falsified CMI." (Doc. 10 at 11.) The Court
The Complaint does not allege facts to support the plausible existence of false
CMI. False CMI is a necessary element to sufficiently plead any DMCA claim and
because the Complaint fails to do so, count II is dismissed.
For the reasons stated above, the Court hereby GRANTS IN PART and DENIES
IN PART Defendant's Motion to Dismiss. This case will proceed on Count I against
both Natorp' s and Craig Natorp for copyright infringement and Count III against Craig
Natorp for vicarious infringement. Accordingly, the Court hereby ORDERS that:
1. Defendants' Motion to Dismiss Count I for copyright infringement is
2. Defendants' Motion to Dismiss Count II for violation of the DMCA is
3. Defendants' Motion to Dismiss Count III for violation of the Lanham Act is
4. Defendants' Motion to Dismiss Count IV for vicarious infringement is
5. Defendants' Motion to Dismiss Count V for common law unfair competition
IT IS SO ORDERED.
JUDGE MATTHEW W. McFARLAND
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