Buchanan v. Shapard Research LLC

Filing 14

ORDER denying 11 Motion to Dismiss, as more fully set out. Signed by Honorable David L. Russell on 10/17/17. (jw)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
ANDREW BUCHANAN,

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Plaintiff,
v.
SHAPARD RESEARCH, LLC,
Defendant.

Case No. CIV-17-633

ORDER
Before the Court is Defendant’s Motion to Dismiss Plaintiff’s copyright
infringement action. Doc. 11. Defendant argues that Plaintiff failed to state a plausible
claim for relief under Fed. R. Civ. Pro. 12(b)(6) and failed to join two Rule 19-required
parties in violation of Rule 12(b)(7).1 In response, Plaintiff argues that Defendant’s alleged
infringement does not constitute fair use and disputes that either absent party is required
under Rule 19. Defendant’s Motion is DENIED.
I.

Failure to State a Plausible Claim

Plaintiff’s Complaint, Doc. 1, sets forth plausible claims on Counts 1–3. A complaint
may be dismissed upon a motion for “failure to state a claim upon which relief can be
granted.” Fed. R. Civ. P. 12(b)(6). Dismissal is proper “if, viewing the well-pleaded factual
allegations in the complaint as true and in the light most favorable to the non-moving party,

1
Defendant also asserted a 12(b)(4) defense, but subsequently withdrew all claims under Rules 12(b)(3)
or 12(b)(4). See Doc. 12.

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the complaint does not contain ‘enough facts to state a claim to relief that is plausible on
its face.’”2 Macarthur v. San Juan County, 497 F.3d 1057, 1064 (10th Cir. 2007) (quoting
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 (2007)); see Aschcroft v. Iqbal, 556 U.S.
662, 676–80 (2009). The plaintiff cannot merely give “labels and conclusions, and a
formulaic recitation of the elements of a cause of action.” Twombly, 550 U.S. at 555. Such
conclusory allegations are not entitled to the court’s presumption for the plaintiff. Instead,
the plaintiff must plead facts that at least makes the claims plausible and raise the “right of
relief above the speculative level.” Id. at 558.
A. Count 1: Copyright Infringement
Plaintiff states a plausible claim in Count 1, copyright infringement, 17 U.S.C. § 101
et seq. To establish copyright infringement, Plaintiff must prove two elements:
“(1) ownership of a valid copyright, and (2) copying of constituent elements of the work
that are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)
Plaintiff first demonstrates he is the exclusive copyright owner of the photograph in
question. Doc. 1-3. Plaintiff then alleges that Defendant infringed by intentionally copying
the photograph to its online polling publication, www.soonerpoll.com. Doc. 1-4. However,
Defendant presents an affirmative defense to infringement: fair use.3

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Plaintiff cites outdated precedent pre-Twombly and Iqbal, Conley v. Gibson, 355 U.S. 41 (1957), that
would heighten Defendant’s burden on its motion to dismiss. Doc-13, at 5. Nonetheless, Defendant fails
to meet either standard.
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Defendant rightly notes that the Court may assess fair use as an affirmative defense at the motion to
dismiss stage. See, e.g., Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 690 (7th Cir. 2012);
Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522, 530 (9th Cir. 2008).

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Plaintiff pleads sufficient facts, viewed in a light most favorable to him as the
nonmoving party, to refute Defendant’s fair use argument. Fair use is codified at 17 U.S.C.
§ 107: “[T]he fair use of a copyrighted work, including such use by reproduction in copies
. . . , for purposes such as criticism, comment, news reporting, teaching (including multiple
copies for classroom use), scholarship, or research, is not an infringement of copyright.”
This copyright exception “allows the public to use not only facts and ideas contained in a
copyrighted work, but also [the author’s] expression itself in certain circumstances.” Golan
v. Holder, 565 U.S. 302, 329 (2012) (quoting Eldred v. Ashcroft, 537 U.S. 186, 219
(2003)). Courts use four factors to assess this copyright exception: “(1) the purpose and
character of the use, including whether such use is of a commercial nature or is for
nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and
substantiality of the portion used in relation to the copyrighted work as a whole; and (4)
the effect of the use upon the potential market for or value of the copyrighted work.”
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994). The four factors “are to be
explored, and the results weighed together, in light of [copyright’s] purposes.” Id. at 578.
Regarding the first factor, Defendant cites the article’s medical subject matter and
relation to pending state legislation to frame it as a non-profit “journalistic piece.” Doc. 11,
at 7. Yet, Plaintiff presents a plausible argument that Defendant’s use of the copyrighted
photograph was commercial in nature. Defendant operates a for-profit “market research”
and “data collection firm,” and posted the copyrighted picture alongside a poll describing
the company’s findings. Doc. 13, at 9; see Doc. 1-4. Presumably, Defendant would only
include the picture if it felt the image would help drive traffic to their website. Plaintiff’s
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“Paterson Affidavit” supports this theory and describes a conversation in which Defendant
allegedly admitted that the poll summary accompanying the photograph furthered a forprofit purpose. See Doc. 13-1.
Next is the nature of the copyrighted work, which speaks to the creativity of the
protected work and whether it is published. See Campbell, 510 U.S. at 586; Harper & Row
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 563–64 (1985). Plaintiff’s complaint
shows that he granted a license to a construction company to publish the photograph on its
website. See Doc. 1-1. Plaintiff also notes the extensive work and creativity entailed in
capturing the photograph in question.
The third factor concerns the copyright infringement’s substantiality. Plaintiff alleges
that Defendant copied the photograph in its entirety and without alteration, save for the
removed copyright notice. Meanwhile, Defendant argues that one photograph is
insubstantial relative to “all the photographs”—what appear from the copyright registration
record to be over 1,200 photographs covered by the copyright in question. See Doc. 1-3.
Lastly, the Court looks to Defendant’s impact on the copyright’s value. Parties
disagree on this factor, particularly what Defendant would owe Plaintiff to obtain a license
on the photograph. Plaintiff alleges damages based both on compensation for such a license
and the alleged infringement’s effect on the market for this photograph.
Viewing the factors in totality and in the light most favorable to Plaintiff, the
nonmoving party, Plaintiff presents a plausible response to Defendant’s fair use defense.
Thus, Defendant fails its burden to dismiss Plaintiff’s copyright infringement action.

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B. Count 2: Contributory Infringement
Plaintiff also states a plausible claim in Count 2, contributory infringement. “One
infringes contributorily by intentionally inducing or encouraging direct infringement.”
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). Defendant
allegedly published the copyrighted photograph online without authorization, accompanied
by links to various social media sites. See Doc. 1-5. Plaintiff argues that Defendant intended
these links to encourage consumers who visited the www.soonerpoll.com article to directly
infringe Plaintiff’s copyright. Defendant denies any knowledge that Plaintiff’s photograph
was copyrighted, let alone the requisite intent for contributory infringement. It is unclear
whether the copyrighted photograph was “capable of ‘substantial’ or ‘commercially
significant’ noninfringing use[].” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
545 U.S. 913, 942 (2005) (quoting Sony Corp. of America v. Universal City Studios, Inc.,
464 U.S. 417, 442 (1984)). Nonetheless, Plaintiff presents a plausible claim that Defendant
possessed the necessary intent to produce liability for contributory infringement.
C. Count 3: Alteration of Copyright Management Information
Plaintiff also states a plausible claim in Count 3, alteration of copyright management
information pursuant to 17 U.S.C. § 1202. Section 1202(a)(1) prohibits “knowingly and
with intent to induce, enable, facilitate, or conceal infringement . . . provid[ing] copyright
management information that is false.” Section 1202(b)(1) prohibits “intentionally
remov[ing] or alter[ing] any copyright management information [without permission of the
owner].”

Plaintiff

alleges

that

he

posted

the

photograph

on

his

website,

www.subtlelightphoto.com, and Defendant removed the photograph’s copyright notice
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before posting it on www.soonerpoll.com. See Doc 1, at 3; 1-4. Defendant argues that he
merely copied the photograph from Hoffman’s website without knowledge of its copyright
because Hoffman had already removed the copyright management information. See Docs.
11-1, 11-3. However, the Court views Plaintiff’s allegations as true and assumes that the
alleged infringing photograph originated from Plaintiff’s website, not Hoffman’s.
Therefore, Plaintiff presents a plausible claim that Defendant altered the photograph in
violation of 12 U.S.C. § 1202.
II.

Failure to Join a Required Party

Defendant argues that Hoffman Construction Company (“Hoffman”) and Seattle
Cancer Cure Alliance (“Cancer Cure”) are “required” parties under Rule 19, thereby
warranting Rule 12(b)(7) dismissal of this case. The proponent of a 12(b)(7) motion has
the burden of proving necessity. See Citizen Band Potawatomi Indian Tribe of Oklahoma
v. Collier, 17 F.3d 1292, 1293 (10th Cir. 1994). “The proponent's burden can be satisfied
by providing ‘affidavits of persons having knowledge of these interests as well as other
relevant extra-pleading evidence.’” Id. (quoting Martin v. Local 147, Int’l Bro. of Painters,
775 F. Supp. 235, 236 (N.D. Ill. 1991)). Rule 19(a) governs because Plaintiff brought a
federal action in which joinder of additional parties would not deprive the court of subjectmatter jurisdiction. Rule 19(a)(1) states that an absent party is “required” if (1) “in that
person’s absence, the court cannot accord complete relief among existing parties,” (2) they
“claim[] an interest relating to the subject of the action” and are situated such that
proceeding without them would “as a practical matter impair or impede” their ability to
protect their interests, or (3) their absence would leave an existing party “subject to a
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substantial risk of incurring double, multiple, or otherwise inconsistent obligations because
of the [absent party’s] interest.”
A. Hoffman
Hoffman does not meet Rule 19’s standards for a required party. Defendant argues
that Hoffman violated Plaintiff’s license to use the copyrighted photograph by altering it
to remove the copyright notice. Hoffman also allegedly contracted with Plaintiff to
photograph Cancer Cure’s medical equipment without its consent, thereby exposing both
Hoffman and Plaintiff to liability from Cancer Cure. Neither of these allegations make
Hoffman a required party. First, the Court can afford complete relief among the existing
parties. It appears Defendant is using Hoffman’s alleged alteration of the photograph’s
copyright notice as a partial defense to Count 3, alteration of copyright management
information in violation of 17 U.S.C. § 1202. Yet, just because Hoffman is a relevant party
does not make him required. As discussed above, Plaintiff’s complaint states a plausible
claim on Counts 1–3 without Hoffman as a party. If Plaintiff chooses to sue Hoffman as
well, it has no bearing on the relief in this case against Defendant. Nor would this case
adversely affect a theoretical action between Plaintiff and Hoffman.
Second, Hoffman does not claim an interest in this case that warrants protection under
Rule 19(a). In fact, Defendant alleges the opposite—that Hoffman is liable to Plaintiff in a
separate infringement action for violating the terms of its license. The Court will not
speculate on a third party’s potential liability, but Defendant has failed to show that
Hoffman claims a required interest in this action.

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Third, Hoffman’s absence would not leave either existing party subject to substantial
prejudice. Neither Plaintiff nor Defendant would face “double, multiple, or otherwise
inconsistent obligations” because this case concerns copyright infringement by Defendant
of a photograph exclusively copyrighted by Plaintiff. Fed. R. Civ. Pro. 19(a). In other
words, Defendant has not demonstrated he is subject to litigation from absent parties for
the conduct in question, nor is it apparent how Plaintiff would be subject to inconsistent
obligations.
B. Cancer Cure
Neither does Seattle Cancer Cure Alliance—which runs the Seattle ProCure facility
depicted in the allegedly copyrighted photograph—satisfy Rule 19 necessity. Defendant
alleges that Cancer Cure “may or may not have a cause of action” against Hoffman or
Plaintiff for photographing its medical machinery. Doc. 11, at 9. Meanwhile, Defendant
asks the Court to find Cancer Cure necessary to this case. Unlike Hoffman who at least
maintains an interest in the copyrighted photograph in question (a license), Cancer Cure is
even less essential to this dispute; litigation against Hoffman or Plaintiff would concern
only the medical facility as the subject of protection, not the photograph. Whether an absent
party has unrelated causes of action at its disposal is irrelevant to this determination.
Defendant’s arguments suggest Rule 19 requires litigation of all issues potentially relevant
to a particular matter. To the contrary, Rule 19 asks whether an absent party is “required”
to resolve the case between Plaintiff and Defendant. Defendant has failed that standard.
Plaintiff presents a plausible claim for relief, and Defendant fails to carry the burden
of proving necessity of an absent party. Defendant’s Motion under Rules 12(b)(6) and
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12(b)(7) is therefore DENIED. The Court does this reluctantly as the damages would
appear de minimis, with attorney’s fees far exceeding any recovery. The Court admonishes
the parties that this will be factored in if attorney’s fees ever become an issue.
IT IS SO ORDERED this 17th day of October, 2017.

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