McNeese Photography LLC et al v. Access Midstream Partners LO et al

Filing 21

ORDER granting in part and denying in part 12 defendant Access Midstream Parnters' motion to dismiss as to the claims of McNeese Photography's for copyright infringement and "aiding and abetting" as well as Mr. McNeese's cl aims for statutory damages stemming from the infringement of "012214_48 photos."...the motion is otherwise denied...it is not apparent that the grounds for dismissal of McNeese Photography's claims can be remedied by amendment but, if they can be plaintiffs shall file any amended complaint within 14 days from the date of this order. Signed by Honorable Joe Heaton on 08/11/2014. (lam)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF OKLAHOMA
McNEESE PHOTOGRAPHY, L.L.C., et al.,)
)
Plaintiffs,
)
vs.
)
)
ACCESS MIDSTREAM PARTNERS,
)
L.P., et al.,
)
)
Defendants.
)

NO. CIV-14-0503-HE

ORDER
Plaintiffs McNeese Photography, L.L.C. and David McNeese filed this action against
Access Midstream Partners, L.P. (“AMP”) and Chesapeake Energy Corporation
(“Chesapeake”) alleging claims for copyright infringement, aiding and abetting copyright
infringement, and fraud. AMP has moved to dismiss the claims against it pursuant to Fed.
R. Civ. P. 12(b)(6). Plaintiffs have responded, and the motion is at issue.1
Rule 12(b)(6) authorizes a court to dismiss a claim when a party fails “to state a claim
upon which relief can be granted.” When considering a Rule 12(b)(6) motion, all wellpleaded factual allegations in the complaint are accepted as true and construed in the light
most favorable to the nonmoving party. Peterson v. Grisham, 594 F.3d 723, 727 (10th Cir.
2010). Unsupported, conclusory allegations, however, need not be accepted as true. See

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Plaintiffs argue that AMP’s motion was untimely filed and should be stricken, stating that
service was effected on May 19, 2014, and the motion was filed on June 9, 2014, outside the 21 day
window provided by Fed. R. Civ. P. 12(a)(1). AMP asserts that because the summons was not sent
“delivery restricted to addressee” as required by state law, the service was deficient, and AMP was
not actually served until May 22, 2014. After a review of the relevant filings, the court concludes
the motion was timely filed.

Kansas Penn Gaming, LLC v. Collins, 656 F.3d 1210, 1214 (10th Cir. 2011). Further, “mere
‘labels and conclusions’ and ‘a formulaic recitation of the elements of a cause of action’ will
not suffice.” Khalik v. United Air Lines, 671 F.3d 1188, 1191 (10th Cir. 2012) (quoting Bell
Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)). The question is whether the
complaint contains “enough facts to state a claim to relief that is plausible on its face.”
Twombly, 550 U.S. at 570.
Background
According to the complaint, Mr. McNeese is a photographer and owner of McNeese
Photography. On June 12, 2011, Mr. McNeese registered “contactsheet.pdf” with the United
States Copyright Office. Contactsheet.pdf is composed of 285 photographs, mostly related
to the oil and gas industry. On January 22, 2014, Mr. McNeese registered “012214_48
photos”, containing 48 photographs, with the United States Copyright Office.
Plaintiffs allege that between 2011 and 2013, they granted a non-transferable license
to Chesapeake for the aforementioned photographs. They assert that when Chesapeake sold
its interest in Chesapeake Midstream Development, L.L.C. to AMP, Chesapeake transferred
the copyrighted photographs to AMP without plaintiffs’ permission and that AMP then used
them for various business purposes. Plaintiffs further allege that when they contacted AMP
to inquire as to which of their copyrighted photographs were in AMP’s possession, AMP
fraudulently provided an incomplete list of the photographs it had, and continued to use
copyrighted photographs not on the list.
Discussion
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AMP argues the copyright infringement claims should be dismissed because the
photographs allegedly infringed upon are not entitled to copyright protection. It asserts that
plaintiffs’ works are compilations and lack the originality necessary to make them protected
under the copyright laws. AMP further argues that McNeese Photography does not state a
claim for copyright infringement because it is not the owner of the photographs in question,
that the fraud claims are preempted by the Copyright Act, and that plaintiffs are not entitled
to statutory damages under the Copyright Act.
Copyright claims
As noted above, AMP argues that plaintiffs’ photographs are not entitled to copyright
protection because they are insufficiently original. It asserts the photograph are merely
depictions of the “raw facts of the world.” “To make a case for copyright infringement,
[plaintiffs] must show (1) [they] own[ ] a valid copyright, and (2) defendant[ ] copied
constituent elements of the work that are original to [plaintiffs].” Meshwerks, Inc. v. Toyota
Motor Sales U.S.A., Inc., 528 F.3d 1258, 1262 (10th Cir. 2008). Copyright protection is
available only to “work [that] contains ‘a degree of originality.’” Id. (quoting Feist Publ'ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991)). A determination of whether
plaintiffs’ works contain sufficient originality to entitle them to copyright protection,
however, involves questions of fact not ordinarily appropriate for resolution on a motion to
dismiss. See, e.g., FragranceNet.com, Inc. v. FragranceX.com, Inc., 679 F. Supp. 2d 312,
320 (E.D.N.Y. 2010) (“[The] determination of whether plaintiff's images are sufficiently
original to be copyrighted is a factual issue that is inappropriate for determination on a
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motion to dismiss . . . .”); see also Lewis v. Kroger Co., 109 F. Supp. 484, 487 (S.D.W. Va.
1952) (“[O]riginality is ordinarily a question of fact, which is not to be decided on motion
to dismiss . . . .”). The court concludes it is premature to resolve any issues as to originality
based purely on the allegations of the complaint.2
AMP also argues the copyright claims are subject to dismissal because “plaintiffs
cannot establish the requisite supersubstantial similarity necessary to prevail.” Plaintiffs
respond by citing various cases indicating the substantial similarity test is not applicable in
cases such as this one, where the claim is that defendants reproduced or used exact copies
of plaintiffs’ works. Here, the complaint does appear to allege the use of exact reproductions
by the defendant. However, even if that was not the case, the pleadings are insufficient to
permit a further determination of substantial similarity here, given that the allegedly
infringing photos are not attached or otherwise before the court. See generally, Jacobsen v.
Deseret Book Co., 287 F.3d 936, 941 (10th Cir. 2002), and Peter F. Gaito Architecture, LLC
v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010) (“Thus, where, as here, the works in
question are attached to a plaintiff's complaint, it is entirely appropriate for the district court
to consider the similarity between those works in connection with a motion to dismiss,
because the court has before it all that is necessary in order to make such an evaluation.”).
There is no basis for dismissing the copyright claims at this point based on similarity.
Apart from its arguments based on the substantive elements of copyright law

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Similarly, it is premature to resolve now the question of whether plaintiffs’ photographs are
entitled to copyright protection individually or only as compilations.
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generally, AMP argues that plaintiff McNeese Photography in particular has not stated a
claim in its favor, because it lacks an ownership interest in the copyrights. As a general rule,
only the legal or beneficial owners of a copyright have a basis for claim based on its
infringement. See Silvers v. Sony Pictures Entm’t, Inc. 402 F.3d 881 (9th Cir. 2005);
Righthaven LLC v. Wolf, 813 F. Supp. 2d 1265, 1271 (D. Colo. 2011). Here, the court
concludes McNeese Photography has not alleged sufficient facts to show that it was the legal
or beneficial owner of the copyrighted material. The complaint indicates that Mr. McNeese
individually owned the photographs and the copyrights to them. See [Doc. #1, para 11] (“Mr.
McNeese retained the copyright and ownership rights in the pictures.”); [Doc. #1, para 22]
(“Mr. McNeese is currently and at all relevant times has been the sole proprietor of all rights,
title and interest in and to the copyrights of [the photographs].”). There is no apparent basis
in the facts alleged for a copyright infringement claim in favor of McNeese Photography.
The motion will be granted as to the copyright claims asserted by it. Further, for the same
reasons, any “aiding and abetting” claim asserted by McNeese Photography is also
dismissed.
Finally, AMP argues that any claim for statutory damages based on infringement of
the “012214_48 photos” should be dismissed because Mr. McNeese did not register his
copyright as to them until after the alleged infringement began. Under the Copyright Act,
an infringer of a copyright may be liable for either statutory damages or for actual damages
and profits. See 17 U.S.C. § 504. However, subject to certain limited exceptions, statutory
damages are not available if the infringement commenced before the filing of the copyright.
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See 17 U.S.C. § 412; see also Wilson v. Brennan, 666 F. Supp. 2d 1242, 1265 (D.N.M. 2009)
aff'd, 390 F. App'x 780 (10th Cir. 2010). Plaintiffs do not contest the point, conceding that
because the copyright for “012214_48 photos” was registered after the alleged infringement,
statutory damages are not available as to those photos. See [Doc. #16, pg. 29]. The motion
will therefore be granted as to any claim for statutory damages based on those photos.
Fraud claims
AMP argues that plaintiffs’ fraud claims are preempted by 17 U.S.C. § 301, which
states
On and after January 1, 1978, all legal or equitable rights that are equivalent
to any of the exclusive rights within the general scope of copyright as specified
by section 106 in works of authorship that are fixed in a tangible medium of
expression and come within the subject matter of copyright as specified by
sections 102 and 103, whether created before or after that date and whether
published or unpublished, are governed exclusively by this title. Thereafter, no
person is entitled to any such right or equivalent right in any such work under
the common law or statutes of any State.
Applying this statute, the Tenth Circuit has held that “a state common law or statutory claim
is preempted by Section 301 if: ‘(1) the work is within the scope of the ‘subject matter of
copyright’ as specified in 17 U.S.C. §§ 102 and 103; and (2) the rights granted under state
law are equivalent to any exclusive rights within the scope of federal copyright as set out in
17 U.S.C. § 106.’” Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 847 (10th
Cir. 1993) (quoting Ehat v. Tanner, 780 F.2d 876, 878 (10th Cir.1985), cert. denied, 479 U.S.
820 (1986)). A claim is not preempted, however, if the “state cause of action requires an
extra element, beyond mere copying, preparation of derivative works, performance,

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distribution or display . . . .” Id. (citing Computer Associates International, Inc. v. Altai, Inc.,
982 F.2d 693, 716 (2nd Cir.1992)).
Plaintiffs argue that their fraud claims are not preempted because they involve the
requisite “extra elements.” Under Oklahoma law, fraud requires the showing of “material,
false representations which are made with knowledge of their falsity, or recklessly made
without knowledge of their truth and as a positive assertion, with the intention that they be
acted upon by another, and relied thereon by another party to his injury.” Dawson v. Tindell,
733 P.2d 407, 408 (Okla. 1987). A material false misrepresentation is not required for
proving copyright infringement. Thus, the state law fraud claims include one or more
elements not necessary to a copyright claim and are hence not preempted by the Copyright
Act.
AMP also asserts that the fraud claims are preempted because they are “equivalent”
to plaintiffs’ rights under the Copyright Act. Specifically, it contends that the fraud claims,
like the copyright claims, are directed to AMP’s alleged use of plaintiffs’ photographs
without their permission, and are necessarily preempted. The court does not read plaintiffs’
complaint so narrowly. Viewing the complaint’s allegations in the light most favorable to
plaintiff, the fraud claims arguably arise out of AMP’s “affirmative false statements to
McNeese and use of the photographs when requested not to do so.” [Doc. #16, pg. 26]
(emphasis added); see also [Doc. #1, para 52] (“[AMP] acted fraudulently in failing to
disclose a complete list of the Plaintiffs’ photographs that [it] had in its possess, had used,
or was continuing to use.”). The fraud claims thus appear to embrace more than a complaint
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of copyright infringement and are therefore not preempted. The motion will be denied as to
the fraud claims.
Conclusion
For the reasons stated, defendant Access Midstream Partners’ motion to dismiss [Doc.
#12] is GRANTED as to the claims of McNeese Photography’s for copyright infringement
and “aiding and abetting,” as well as Mr. McNeese’s claims for statutory damages stemming
from the infringement of “012214_48 photos.” The motion is otherwise DENIED. It is not
apparent that the grounds for dismissal of McNeese Photography’s claims can be remedied
by amendment but, if they can be, plaintiffs shall file any amended complaint within 14 days.
IT IS SO ORDERED.
Dated this 11th day of August, 2014.

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