Treadmilldoctor.com, Inc. v. Johnson

Filing 33

ORDER GRANTING 29 Motion to Dismiss. Signed by Judge Samuel H. Mays, Jr., on 3/31/2011. (Mays, Samuel)

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TENNESSEE WESTERN DIVISION

TREADMILLDOCTOR.COM, INC., Plaintiff, v. DON JOHNSON, Individually, d/b/a EXERCISE EQUIPMENT SERVICE, INC., and d/b/a EXERCISE EQUIPMENT SERVICE, INC., d/b/a TREADMILLPARTZONE.COM, Defendants.

) ) ) ) ) ) ) ) ) ) ) ) ) )

No. 08-2877

ORDER GRANTING DEFENDANTS' MOTION TO DISMISS

Before the Court is the August 31, 2010 Motion to Dismiss Second Amended Complaint for Failure to State a Claim ("Motion") filed by Defendants Don Johnson and Exercise Equipment Service, Inc. (collectively, "Defendants"). (Def.'s Mot. to Dismiss

Second Am. Compl. for Failure to State a Claim, ECF No. 29.) ("Defs.' Mot.") responded Plaintiff in TreadmillDoctor.com, on September 30, Inc. 2010.

("Plaintiff")

opposition

(Pl.'s Resp. to Defs.' Mot. to Dismiss Second Am. Compl. for Failure to State a Claim, ECF No. 30.) ("Pl.'s Resp.") For the

following reasons, Defendants' Motion is GRANTED. I. Factual Background

Plaintiff replacement

is

a for

corporation treadmills.

that

provides Am.

service Compl.

and for

parts

(Second

Damages and Injunctive Relief ¶¶ 1, 4, ECF No. 25.) Am. Compl.") maintained a

("Second

Since December 1, 1999, Plaintiff has continuously website, TreadmillDoctor.com, which provides

exercise equipment reviews as a service to potential customers and as a means to attract potential customers to Plaintiff's internet-based salesroom. (Id. ¶¶ 4, 6.) On the website,

Plaintiff maintains a notice of copyright as to all intellectual property contained on the website. (Id. ¶ 10.)

Plaintiff alleges that, on November 30, 2007, it received a certificate of registration for portions of its website. 7.) (Id. ¶

Plaintiff has attached a copy of that certificate to the Amended Complaint. (See id.; Ex. I, ECF No. 25-8.)

Second

However, Plaintiff's name does not appear on the certificate. (See Ex. I.) William Clark The certificate lists the copyright claimant as Stevenson and the authors of the copyrighted

property, entitled "Treadmill & Elliptical Reviews ­ 2008," as William Clark Stevenson and Jon David Stevenson. Second Amended Complaint does not allege that (See id.) William The Clark

Stevenson or Jon David Stevenson transferred the certificate of registration to Plaintiff. (See Second Am. Compl.) It also

does not allege that Defendants copied or otherwise infringed

2

the

copyright

of

materials

protected

by

that

certificate

of

registration.

(See id.)

On December 23, 2008, Plaintiff submitted an application for copyright registration of additional portions of its

website.

(Id. ¶ 8.)

It has attached a copy of that application (See id.; Ex. F, ECF No. 25Plaintiff's name and lists

to the Second Amended Complaint. 5.) The application contains

Plaintiff as the author and copyright claimant for five specific pieces of material: (1) 2008 Elliptical Best Buy Awards, (2) 2008 Elliptical Reviews, (3) 2008 Treadmill Best Buy Awards, (4) Troubleshooting Guide, and (5) 2008 Treadmill Reviews. F, at 2-4, 12, 22, 32, 42.) certificate of registration in (See Ex.

Plaintiff has not received a response to the application.

(Second Am. Compl. ¶ 8.) On January 18, 2010, Plaintiff submitted an application for copyright registration for the entirety of its website. Am. Compl. ¶ 9.) (Second

It has attached a copy of that application and

an email indicating its receipt by the Copyright Office to the Second Amended Complaint. ECF No. 25-7.) (See id.; Ex. G, ECF No. 25-6; Ex. H,

The application contains Plaintiff's name and (See Ex.

lists Plaintiff as the author and copyright claimant. G, at 2-3.) what the

In response to a question on the application asking created and providing checked 3 empty the box boxes for next to

author

potential

responses,

Plaintiff

"Computer

program."

(Id.

at

2.)

It

did

not

check

the

box

for

"Text/poetry," "Editing," "Collective Work," or "Compilation," and did not fill in empty space on the application following the words "Other." (See id.) Plaintiff has not indicated whether

it has received a certificate of registration in response to the application. (See Second Am. Compl.)

Plaintiff states, "That Defendants have committed numerous violations of Plaintiff's intellectual property rights and

infringement on Plaintiff's copyrights, both Federal and common law, as of August 2008 by copying copyrighted materials from Plaintiff's websites and using the copyrighted material on

Defendants' websites without compensating Plaintiff." 11.) In website, support, Plaintiff has attached and printouts

(Id. ¶

from

its

TreadmillDoctor.com, to the

Defendants' Amended

website, Complaint

TreadmillPartsZone.com,

Second

purportedly representing copyright infringement by Defendants. (See id. ¶¶ 2-3, 11-13; Ex. A, ECF No. 25-1; Ex. B, ECF No. 252.) Those printouts show, among other things, substantially

similar language in the "terms of service" sections and return policies listed on both websites. 3-9.) Plaintiff also alleges that it maintains a list of (See Ex. A, at 3-5; Ex. B, at

references on its website and that Defendants copied and placed 4

that list on their website. 13.) copies

(See Second Am. Compl. ¶¶ 2-3, 12-

Plaintiff has attached to the Second Amended Complaint of the reference lists from TreadmillDoctor.com and

TreadmillPartsZone.com. Ex. D, ECF No. 25-4.) Complaint show similar

(See id. ¶¶ 12-13; Ex. C, ECF No. 25-3; The copies attached to the Second Amended lists of service providers presumably

servicing fitness equipment in Massachusetts. Ex. D, at 1.)

(See Ex. C, at 1;

The Second Amended Complaint states, "That Defendants have and are in intentionally violation of infringing [copyright on law] Plaintiff's in an copyrighted to take

works

effort

business from Plaintiff and harm the Plaintiff." Compl. ¶ 17.)

(Second Am.

It also states that Plaintiff has suffered and

will continue to suffer irreparable harm to its business and goodwill if Defendants are not enjoined from infringing on

Plaintiff's copyrighted material.

(See id. ¶ 15.)

It then

lists two counts: (1) intentional infringement of copyrighted work and (2) intentional interference with business

relationships. Plaintiff

(See id. at 4-5.) originally filed a complaint for damages and

injunctive relief with this Court on December 30, 2008. for Damages and Injunctive Relief, ECF No. 1.)

(Compl.

With the Court's (Order, ECF

permission, Plaintiff filed an amended complaint. No. 10.)

On January 20, 2010, Defendants moved to dismiss the 5

amended subject

complaint's matter

copyright

infringement and its

claim

for

lack

of

jurisdiction

intentional

interference

with business relationships claim for failure to state a claim on which relief may be granted. (See Defs.' Mot. to Dismiss for After

Lack of Subject Matter Jurisdiction 1-3, ECF No. 11.)

responding in opposition to that motion to dismiss, Plaintiff moved to file the Second Amended Complaint. ECF No. 14; Second motion Mot., to ECF No. 15.) the (See Pl.'s Resp., This amended Court granted

Defendants'

dismiss

complaint's

intentional interference with business relationships claim, but denied that motion as to Plaintiff's copyright infringement

claim and granted Plaintiff leave to file the Second Amended Complaint. (See Order 6-14, ECF No. 21.)

Plaintiff filed the Second Amended Complaint on July 10, 2010, asserting claims for with order copyright business dismissing claim infringement and

intentional notwithstanding interference

interference the Court's

relationships, the for intentional failure to

with

business

relationship

state a claim.

(See Second Am. Compl. 4-6.)

Defendants then (See

filed the Motion now before the Court on August 31, 2010. Defs.' Mot. 1-2.)

In its response, Plaintiff concedes that its

claim for copyright infringement under common law is preempted by 17 U.S.C. §§ 1 et seq. No. 30-1.) ("Pl.'s Mem.") (Mem. in Supp. of Pl.'s Resp. 3, ECF It also concedes that the Court has 6

dismissed

its

intentional

interference

with

business

relationships claim and states that it did not intend to revive that claim in the Second Amended Complaint. (See id.)

Accordingly, Plaintiff's intentional interference with business relationships claim is DISMISSED. II. Jurisdiction

This Court has previously found that it has jurisdiction pursuant to 28 U.S.C. § 1332. (Order 3, ECF No. 21.) Based on

the allegations in the Second Amended Complaint now before the Court, this Court has subject-matter jurisdiction over

Plaintiff's copyright infringement claim under 28 U.S.C. §§ 1331 and 1338. See 28 U.S.C. §§ 1331, 1338; Reed Elsevier, Inc. v.

Muchnick, 130 S. Ct. 1237, 1246 (2010); Zomba Enters., Inc. v. Panorama Records, Inc., 491 F.3d 574, 580 (6th Cir. 2007). III. Standard of Review In addressing a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), the Court must construe the complaint in the light most favorable to the plaintiff and accept all well-pled factual allegations as true. League of United Latin Am. Citizens v. Bredesen, 500 F.3d 523, 527 (6th Cir. 2007). A plaintiff can support a claim "by

showing any set of facts consistent with the allegations in the complaint." (2007). Bell Atl. Corp. v. Twombly, 550 U.S. 544, 563

This standard requires more than bare assertions of 7

legal conclusions.

Bovee v. Coopers & Lybrand C.P.A., 272 F.3d "[A] formulaic

356, 361 (6th Cir. 2001) (citation omitted).

recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555. Any claim for relief must contain "a

short and plain statement of the claim showing that the pleader is entitled to relief." facts are not necessary; Fed. R. Civ. P. 8(a)(2). the statement need only "Specific `give the

defendant fair notice of what the . . . claim is and the grounds upon which it rests.'" (2007) (per curiam) a Erickson v. Pardus, 551 U.S. 89, 93 (quoting must Twombly, contain 550 U.S. at facts 555). "to

Nonetheless,

complaint

sufficient

`state a claim to relief that is plausible on its face'" to survive a motion to dismiss. Ashcroft v. Iqbal, 129 S. Ct. "The

1937, 1949 (2009) (quoting Twombly, 550 U.S. at 570). plausibility standard is not akin to a

`probability

requirement,' but it asks for more than a sheer possibility that a defendant has acted unlawfully." U.S. at 556). of action, Id. (citing Twombly, 550

"Threadbare recitals of the elements of a cause by mere conclusory statements, do not

supported

suffice."

Id. (citation omitted).

A plaintiff with no facts

and "armed with nothing more than conclusions" cannot "unlock the doors of discovery." IV. Analysis Id. at 1950.

8

"Copyright infringement has two elements: `(1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original.'" Music Corp., v. 508 New F.3d Line 394, Cinema, Enters., Bridgeport Music, Inc. v. WM 398 384 491 (6th F.3d F.3d Cir. 283, at 2007) 293 581 (quoting (6th Cir.

Stromback 2004)); omitted).

accord

Zomba

(citations

"The legal or beneficial owner of an exclusive right

under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b). Section 411 states, in relevant part, that

"[n]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." 17 U.S.C. § 411(a).

In Reed Elsevier, the Supreme Court clarified the effect of § 411(a)'s registration requirement. Ct. at 1241. divest See Reed Elsevier, 130 S.

It held that the registration requirement does not courts of subject-matter where the jurisdiction holder over has

federal

copyright

infringement

claims

copyright

failed to comply with the registration requirement. 1241, 1249. Instead, the "registration

See id. at is a

requirement

precondition to filing a claim that does not restrict a federal court's subject-matter jurisdiction." 9 Id. at 1241. A

"precondition" is "something that must exist before something else can come about." Webster's Third New International

Dictionary 1785 (1986). When a plaintiff files a copyright infringement action

before preregistration or registration of the copyright claim has occurred, the "precondition" required by § 411(a) is not satisfied. registration See Reed Elsevier, 130 S. Ct. at 1241 (holding that of a copyright "is a precondition to filing a

claim"); Coles v. Wonder, 283 F.3d 798, 801 (6th Cir. 2002) ("While copyright protection dates from the time that an artist creates an original work that may be copyrighted, such as a song, a cause of action for infringement cannot be enforced until the artist actually registers the copyright pursuant to the requirements of the Copyright Act.") (citing 17 U.S.C. § 411(a)); Murray Hill Publ'ns, Inc. v. ABC Commc'ns, Inc., 264 F.3d 622, 630 (6th Cir. 2001) (stating that "[a] copyright owner must formally register a derivative work with the United States Copyright Office of as that a prerequisite to filing a suit on for other

infringement

derivative

work"),

abrogated

grounds, Reed Elsevier, 130 S. Ct. 1237; Bus. Audio Plus, L.L.C. v. Commerce Bank, NA, No. 4:10CV2064, 2011 WL 250670, at *2 (E.D. Mo. Jan. 26, 2011) because (dismissing plaintiff plaintiff's failed to copyright allege or

infringement

claim

demonstrate the existence of a valid copyright registration in 10

its

literary

works)

(citations

omitted);

cf.

La

Resolana

Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1200 (10th Cir. 2005) ("The plain language of the statute thus

requires a series of affirmative steps by both the applicant and the Copyright Office. No language in the Act suggests that

registration is accomplished by mere receipt of copyrightable material by the Copyright Office. Instead, the Register of

Copyrights must affirmatively determine copyright protection is warranted, § 411, before registration occurs under the Act."), abrogated on other grounds, Reed Elsevier, 130 S. Ct. 1237. Although the district court has jurisdiction, the action is subject to dismissal when a defendant moves to dismiss the

action for failure to state a claim.

See Sony/ATV Music Publ'g

LLC v. D.J. Miller Music Distribs., Inc., No. 3:09-cv-01098, 2010 WL 3872802, at *4 (M.D. Tenn. Sept. 28, 2010) (concluding after Reed Elsevier that, for where six plaintiffs songs their before copyright did not obtain a

copyright copyright

registrations infringement

they

filed

action,

infringement

claims for the six songs were subject to dismissal for failure to state a claim); Pont Lezica v. Cumulus Media, Inc., No. 3:09cv-912, 2010 WL 711792, to at *2-3 a (M.D. Tenn. Feb. 23, 2010) claim

(granting

motion

dismiss

copyright

infringement

because the plaintiff did not allege that the Copyright Office had approved or denied his application to copyright material at 11

issue), abrogated on other grounds, Reed Elsevier, 130 S. Ct. 1237; Specific LLC, Software 615 F. Solutions, Supp. 2d LLC v. 716 Inst. (M.D. of WorkComp 2009)

Advisors,

708,

Tenn.

("Plainly, Congress intended a scheme in which, before an entity could sue on a claim of copyright infringement, the Copyright Office would be entitled to pass, in an essentially non-binding manner, on the vitality of the copyright."), abrogated on other grounds, Reed Elsevier, 130 S. Ct. 1237. If the action were not

subject to dismissal, the registration requirement would not be a "precondition" to filing a copyright infringement action. Reed Elsevier, 130 S. Ct. at 1241; Webster's Third See New

International Dictionary 1785 (1986). Here, Plaintiff alleges that, on November 30, 2007, it

received a certificate of registration from the Copyright Office for portions of its website. (See Second Am. Compl. ¶ 7.)

Plaintiff has attached a copy of the certificate of registration on which it bases the factual assertion to the Second Amended Complaint. (See id.; Ex. I.) The certificate of registration

attached to the Second Amended Complaint contradicts the factual assertion. (See Ex. I.) (See id.) Plaintiff's name does not appear on Instead, the certificate lists the

the certificate.

copyright claimant as William Clark Stevenson and the authors of the copyrighted property as William Clark Stevenson and Jon

David Stevenson.

(See id.)

When allegations in a complaint are 12

contradicted by written exhibits attached to the complaint, "the exhibits trump the allegations." Abcarian v. McDonald, 617 F.3d

931, 933 (7th Cir. 2010) (citation omitted); accord ALA, Inc. v. CCAIR, Inc., 29 F.3d 855, 859 n.8 (3d Cir. 1994) (citation

omitted); Fayetteville Investors v. Commercial Builders, Inc., 936 F.2d 1462, 1465 (4th Cir. 1991) (citation omitted); Hamilton Foundry & Mach. Co. v. Int'l Molders & Foundry Workers Union of N. Am., 193 F.2d 209, 216 (6th Cir. 1952) (citations omitted). As Defendants correctly argue, Plaintiff does not allege in the Second Amended Complaint that William Clark Stevenson or Jon David Stevenson transferred ownership (See of the certificate of

registration to Plaintiff.

Second Am. Compl. ¶¶ 1-17;

Defs.' Mem. in Supp. of Their Mot. to Dismiss Pl.'s Second Am. Compl. 9-10, ECF No. 29-1.) Although Plaintiff argues in its

response that William Clark Stevenson registered the copyright as Plaintiff's agent and does not claim individual ownership of the copyrighted material (Pl.'s Mem. 4), this Court may not consider reviewing Morgan matters beyond the to Second Amended See 576 Complaint Winget Cir. v. in JP

Defendants' Bank,

motion 537

dismiss. 565,

Chase

N.A.,

F.3d

(6th

2008)

(citation omitted). Based on the allegations in the Second Amended Complaint, Plaintiff has not pled facts plausibly demonstrating that it has an ownership interest in the materials protected by the November 13

30, 2007 certificate of registration.

Plaintiff has also failed

to allege that Defendants copied any information protected by that particular certificate of registration. Compl. ¶¶ 7, 11-13; Ex. A; Ex. B; Ex. C; (See Second Am. Ex. D; Ex. I.)

Therefore, Plaintiff has failed to state a claim for copyright infringement registration. of materials protected by the certificate of

See Iqbal, 129 S. Ct. at 1949; Bridgeport Music,

508 F.3d at 398; Zomba Enters., 491 F.3d at 581. On December 23, 2008, Plaintiff submitted an application for copyright registration of additional portions of its

website, including five specific pieces of material: (1) 2008 Elliptical Best Buy Awards, (2) 2008 Elliptical Reviews, (3) 2008 Treadmill Best Buy Awards, (4) Troubleshooting Guide, and (5) 2008 Treadmill Reviews. at 2-4, 12, 22, 32, 42.) (See Second Am. Compl. ¶ 8; Ex. F, However, Plaintiff does not allege

that Defendants copied any material included in that application and admits that it has not received a certificate of

registration in response to that application. Compl. ¶¶ 8, also 11-13; does Ex. not A; Ex. B; that Ex. it C; has

(See Second Am. Ex. D; Ex. F.) its

Plaintiff

allege

registered

copyright claim.

Therefore, Plaintiff has failed to state a

claim for copyright infringement of materials for which it seeks protection through the December 23, 2008 application. Elsevier, 130 S. Ct. at 1241; 14 Iqbal, 129 S. Ct. See Reed at 1949;

Bridgeport Music, 508 F.3d at 398; Zomba Enters., 491 F.3d at 581; La Resolana Architects, PA, 416 F.3d at 1200; Coles, 283 F.3d at 801; Bus. Audio Plus, L.L.C., 2011 WL 250670, at *2; Sony/ATV Music Publ'g LLC, 2010 WL 3872802, at *4. On January 18, 2010, Plaintiff submitted an application for copyright registration for the entirety of its website. Am. Compl. ¶ 9.) (Second

Plaintiff does not allege that it has received

a certificate of registration in response to that application or that it has registered its copyright claim. (See id.)

Plaintiff has attached a copy of that application to the Second Amended Complaint. copyright (See id.; Ex. G.) for a a That application seeks program," Work," or not a

protection

"Computer "Collective

"Text/poetry," "Compilation."

"Editing,"

(See Ex. G, at 2.)

Plaintiff does not allege (See Second Am.

that Defendants copied its computer program. Compl. ¶¶ 11-14.)

Instead, Plaintiff alleges that Defendants

copied text from its website, such as its terms of service, return policies, and list of service providers. Ex. A; Ex. B; Ex. C; Ex. D.) (See id. ¶ 11;

The Second Amended Complaint does

not state, and Plaintiff's response to Defendants' Motion does not argue, that a copyright of a computer program would include the contents of its website. (See Second Am. Compl; Pl.'s

Resp.; Pl.'s Mem.)

Therefore, Plaintiff has failed to state a See Reed Elsevier, 130

plausible copyright infringement claim. 15

S. Ct. at 1241; Iqbal, 129 S. Ct. at 1949; Bridgeport Music, 508 F.3d at 398; Zomba Enters., 491 F.3d at 581; La Resolana

Architects, PA, 416 F.3d at 1200; Coles, 283 F.3d at 801; Bus. Audio Plus, L.L.C., 2011 WL 250670, at *2; Sony/ATV Music Publ'g LLC, 2010 WL 3872802, at *4. Defendants' Motion must be

granted. Plaintiff argues that Defendants' Motion should be denied because filing their suit argument "is more that lack of registration considered precludes Rule In

appropriately

under

12(b)(1) as a jurisdictional issue."

(See Pl.'s Mem. 4.)

support, Plaintiff cites Specific Software Solutions, a case in which the United States District Court for the Middle District of Tennessee dismissed a copyright infringement action for lack of jurisdiction because the plaintiff had failed to comply with § 411(a)'s registration requirement. See Specific Software

Solutions, 615 F. Supp. 2d at 716. Court has held that a

Since that case, the Supreme failure to comply with

plaintiff's

§ 411(a)'s registration requirement does not divest a district court of subject-matter jurisdiction. Ct. at 1241. Instead, the See Reed Elsevier, 130 S. fails to satisfy "a

plaintiff Id.

precondition to filing a claim." where a plaintiff does not

After Reed Elsevier, that precondition, a

satisfy

defendant may challenge the legal sufficiency of a copyright infringement claim through a motion 16 to dismiss pursuant to

Federal Rule of Civil Procedure 12(b)(6).

See, e.g., Bus. Audio

Plus, L.L.C., 2011 WL 250670, at *2; Sony/ATV Music Publ'g LLC, 2010 WL 3872802, at *4. well-taken. V. Conclusion Therefore, Plaintiff's argument is not

For the foregoing reasons, Defendants' Motion is GRANTED. So ordered this 31st day of March, 2011.

s/ Samuel H. Mays, Jr. SAMUEL H. MAYS, JR. UNITED STATES DISTRICT JUDGE

17