Bob Daemmrich Photography, Inc. v. McGraw-Hill School Education Holdings, LLC et al

Filing 42

REPORT AND RECOMMENDATIONS re 33 Motion to Dismiss filed by McGraw-Hill School Education Holdings, LLC, McGraw-Hill Global Education Holdings, LLC. Signed by Judge Andrew W. Austin. (td)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
BOB DAEMMRICH PHOTOGRAPHY,
INC.
v.
MCGRAW-HILL GLOBAL
EDUCATION HOLDINGS, LLC, et al.

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1:15-CV-1098-LY

REPORT AND RECOMMENDATION
OF THE UNITED STATES MAGISTRATE JUDGE
TO:

THE HONORABLE LEE YEAKEL
UNITED STATES DISTRICT JUDGE
Before the Court are Defendants’ Motion to Partially Dismiss First Amended Complaint

(Dkt. No. 33); Plaintiff’s Memorandum in Opposition to Motion to Partially Dismiss First Amended
Complaint (Dkt. No. 36); and Defendants’ Reply (Dkt. No. 38). The District Court referred the
above motion to the undersigned Magistrate Judge for report and recommendation pursuant to 28
U.S.C. §636(b)(1)(A), FED. R. CIV. P. 72, and Rule 1(c) of Appendix C of the Local Rules.
I.

GENERAL BACKGROUND

Plaintiff Bob Daemmrich Photography, Inc. (Daemmrich) brings this suit against McGrawHill Global Education Holdings, LLC and McGraw-Hill School Education Holdings, LLC (McGrawHill) alleging copyright infringement. Daemmrich is a stock photography agency that licenses the
work of Bob Daemmrich to McGraw-Hill both directly and through a number of third-party stock
photography agencies. Daemmrich had sold the limited licenses to use copies of stock photographs
it owned in certain publications. The licenses were limited by number of copies, distribution area,
language, duration, and media type. Daemmrich claims that McGraw-Hill exceeded the licenses,
infringing on the copyrights in the stock photographs in a number of ways, including: printing more

copies than licensed, distributing outside the distribution area, publishing international editions, and
publishing outside the time limits prescribed by the licenses.
On February 13, 2017, Daemmrich filed an Amended Complaint, attaching two new exhibits,
Exhibits 6 and 7, which added a number of claims from documents produced by McGraw-Hill during
discovery. Exhibit 6 comes from McGraw-Hill’s 1Step Database; Exhibit 7 comes from its
CREATE database. The CREATE database was produced shortly before Daemmrich’s amended
pleadings were due. Both database reports provide information from McGraw-Hill’s own records
on stock photographs used in its publications. McGraw-Hill moves to partially dismiss the First
Amended Complaint. It does not challenge the first five exhibits, but only challenges the adequacy
of the pleadings for Exhibits 6 and 7. These exhibits do not include the same information, which
McGraw-Hill argues is required to satisfy the pleading standard in Rule 8(a).
The first five exhibits have columns, in spreadsheet form, containing: (1) a thumbnail of the
image, (2) the stock ID number of the photograph, (3) the copyright registration number, (4) the
invoice number for any licenses, (5) where the photograph was published, and (6) the licencing
information. Though not every column is complete for each image in Exhibits 1–5, all include at
least the image, stock ID number, and copyright registration information. In contrast, Exhibit 6 lists
the (1) ISBN number of the publication in which the infringing photograph is found, (2) title of the
publication, (3) stock ID number, (4) photograph credit included in the publication, and (5) any
invoice information available. It does not include either a thumbnail version of the image itself or
the copyright registration number. Exhibit 7 then provides the (1) book unique identification number
(from McGraw-Hill’s records), (2) author, title, edition, and ISBN number of the publication in
which the photograph is printed, (3) exact location in the publication, and (4) licensor listed in
McGraw-Hill’s records. It does not provide a thumbnail image, stock ID number, or copyright
registration number.
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As Exhibits 6 and 7 do not include the same information that was included in the five
previous exhibits, McGraw-Hill moves to dismiss the claims in each of these exhibits. Specifically,
McGraw-Hill moves to dismiss 338 of the 528 claims in Exhibit 6 and all 212 claims in Exhibit 7.1
Daemmrich contends that it has sufficiently pled copyright infringement for each photograph, and
therefore the claims provided in these exhibits should not be dismissed.
II. LEGAL STANDARD
Federal Rule of Civil Procedure 12(b)(6) allows a party to move to dismiss an action for
failure to state a claim upon which relief can be granted. FED. R. CIV. P.12(b)(6). In deciding a Rule
12(b)(6) motion to dismiss for failure to state a claim, “[t]he court accepts all well-pleaded facts as
true, viewing them in the light most favorable to the [nonmovant].” In re Katrina Canal Breaches
Litig., 495 F.3d 191, 205 (5th Cir. 2007) (internal quotation marks omitted), cert. denied, 552 U.S.
1182 (2008). The Supreme Court has explained that a complaint must contain sufficient factual
matter “to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial
plausibility when the [nonmovant] pleads factual content that allows the court to draw the reasonable
inference that the [movant] is liable for the misconduct alleged.” Id. The court generally is not to
look beyond the pleadings in deciding a motion to dismiss. Spivey v. Robertson, 197 F.3d 772, 774
(5th Cir. 1999).

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McGraw states it was able to discern from Exhibits 1-5 the copyright registration
information for the remaining 190 claims, because these photographs are the same as were provided
in the previous exhibits. Daemmrich merely alleged additional instances of infringement for the
photographs. Further, Daemmrich agrees that some of the claims in Exhibit 6 should be dismissed
without prejudice as it could not locate the registration information for these claims. As such, the
Court RECOMMENDS that the District Court DISMISS WITHOUT PREJUDICE the claims
in Exhibit 6, rows: 10, 14, 70, 75, 76, 77, 99, 103, 147, 176, 184, 186, 187, 210, 226, 233, 234, 235,
236, 237, 244, 246, 293, 296, 297, 304, 311, 314, 315, 316, 317, 320, 344, 346, 348, 353, 380, 381,
382, 383, 408, 416, 417, 419, and 465.
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xIII. ANALYSIS
McGraw-Hill contends that Daemmrich failed to sufficiently plead copyright infringement
for the claims listed in Exhibits 6 and 7 to the Amended Complaint. To succeed on a copyright
infringement claim, a plaintiff must prove that: (1) he owns a valid copyright in the applicable work,
and (2) the defendant copied constituent elements of the plaintiff's work that are original. Positive
Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 367 (5th Cir. 2004). Federal Rule of
Civil Procedure 8(a), requires only “a short and plain statement of the claim showing that the pleader
is entitled to relief.” However, McGraw-Hill argues that courts have applied a heightened pleading
standard for copyright infringement claims, which requires plaintiffs to allege: “(1) which specific
original works are the subject of the claim, (2) that the plaintiff owns the copyright, (3) that the
works have been registered in compliance with the copyright laws, and (4) by what acts and during
what time the defendant has infringed the copyright.” Sefton v. Jew, 201 F. Supp. 2d 730, 747 (W.D.
Tex. 2001) (citing Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992)). But see Arista
Records, LLC v. Greubel, 453 F. Supp. 2d 961, 964 (N.D. Tex. 2006) (“To the extent Gruebel is
suggesting that there is a heightened pleading requirement for copyright litigation, that position does
not comport with the liberal pleading requirements found in the Federal Rules of Civil Procedure.”).
McGraw-Hill contends that Daemmrich has failed to meet this standard because the complaint does
not identify the specific original works at issue or plead a valid registered copyright in the works.
Daemmrich maintains that, even if the heightened pleading standard applies, it has sufficiently
alleged copyright infringement for these exhibits. The Court agrees.
A.

Specific Original Works
First, McGraw-Hill argues that Daemmrich has not identified the works that are the subject

of its claim in Exhibits 6 and 7 with sufficient particularity. McGraw-Hill challenges the sufficiency
of (1) Exhibit 6 on the basis that it failed to include the thumbnail images of each of the copyrighted
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works, and (2) Exhibit 7on the basis that it failed to provide either the Stock ID number or thumbnail
image of each photograph. This argument is misguided. Courts simply do not require the level of
specificity that McGraw-Hill insists upon to state a claim for copyright infiringement. Rather, the
purpose of the complaint is to give fair notice to the defendant of the claims that it must defend
against. Arista Records, 453 F. Supp. 2d at 965. When applying the heightened pleading standard,
courts have found that “copies of a portion of the works at issue and copies of [the defendant’s]
website” gave sufficient notice. Sefton, 201 F. Supp. 2d at 747. Even when the plaintiff “failed to
provide a comprehensive list or set of copies of all the photographs at issue,” courts have refused to
dismiss the claims. Id.; Young-Wolff v. McGraw-Hill Cos., No. 13-CV-4372(KMW)(JCF), 2014
WL 349711, *12 (S.D.N.Y. Jan. 31, 2014) (finding sufficient an exhibit “which lists for each
photograph at issue an image number and description, the publication title in which the photograph
appears (for most photographs), and the licensing agent”). Thus, the level of specificity McGraw-Hill
argues is required has never been applied by the courts.
In fact, most courts have required much less. For example, courts have found that a computer
printout of recording files found on the defendant’s computer identified with sufficient specificity
the allegedly infringing works—even when not every copyrighted recording was identified by name.
See Arista Records, 453 F. Supp. 2d at 965; Warner Bros. Records, Inc. v. Payne, No. W-06-CA051, 2006 WL 2844415, at *2 (W.D. Tex July 17, 2006). The courts found that the printouts gave
the defendants fair notice of the claims alleged. Arista Records, 453 F. Supp. 2d at 965; Warner
Bros. Records, 2006 WL 2844415 at *2.

Even an invoice that identified the copyrighted

photographs by titles—such as “Charlotte Dodds imagery,” “Sensual Embrace,” or “images from
year 2004_campaign 1 and 2007_campaign 1. 2 beauty images / imagery of Kat from Karin
Models”—was found to be sufficiently pled. Bill Diodato Photography LLC v. Avon Products, Inc.,
No. 12 Civ. 847(RWS), 2012 WL 3240428, at *7 (S.D.N.Y. Aug. 7, 2012). In essence, courts only
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require enough information to give the defendant fair notice of the claims against it. See, e.g., Arista
Records, 453 F. Supp. 2d at 965.
Here, Exhibits 6 and 7 have “identif[ied] with some specificity the work[s] at issue.”
Terraspan, LLC v. Rave, LLC, No. 3:12-CV-0816-K, 2012 WL 6115721, at *7 (N.D. Tex. Dec. 10,
2012). First, Exhibit 6 includes for each claim the (1) photograph’s Stock ID number, (2) title and
ISBN number of the publication in which it was printed, (3) photograph credit, and (4) invoice
number for any licenses. The Stock ID number together with the publication information is clearly
sufficient to identify with specificity which work is the basis of each claim. Daemmrich’s failure to
include thumbnails of each image—which appears to be the main difference between the
identification information provided in Exhibits 1–5 and that in Exhibit 6—does not make the claim
imprecise enough to merit dismissal. Young-Wolff, 2014 W 349711, at *4. Similarly, Exhibit 7
contains sufficient information to give McGraw-Hill fair notice of the claim. Though in this exhibit
the photographs are not identified by a Stock ID number, Daemmrich identifies each photograph by
its exact location in McGraw-Hill’s publications and by the provided photograph credit. The
location and publication information clearly identifies the work at issue. In a nearly identical case
from the Eastern District of Pennsylvania, the court found that either the stock ID number or the
exact location of the image was sufficient to identify the photograph. See Eastcott v. McGraw-Hill
Glob. Edu. Holdings, LLC, No. 2:16-CV-904(GAM) (E.D. Pa. Apr. 13, 2017) (attached as Exhibit
to Dkt. No. 41). This Court sees no reason to find otherwise.
Moreover, this information was provided directly from McGraw-Hill’s records. It is
inconsistent to say that the Exhibits fail to give McGraw-Hill fair notice when Daemmrich uses
McGraw-Hill’s own record system to identify an image. McGraw-Hill’s argument that Daemmrich
cannot base its new claims on documents provided from McGraw-Hill because its “own internal
photograph identifications are inaccurate, incomplete, and do not necessarily correspond to an actual
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use of a particular photograph by a photographer or agency” is unpersuasive, to say the least. Dkt.
No. 38 at 5 (emphasis in original). The sheer number of publications in which the stock photographs
have been used makes Daemmrich’s reliance on records provided by McGraw-Hill in discovery—at
least at this early stage—reasonable. See Energy Intelligence Group, 101 F. Supp. 3d at 339 (finding
that knowledge of which employee accessed the works was knowledge within the sole authority of
the defendant and therefore would be impracticable to require the plaintiff to allege). Further,
determinations of the validity of Daemmrich’s claims is better addressed through continued
discovery and a motion for summary judgment. The exhibits give fair notice to McGraw-Hill, and
that is all that is required to survive a motion to dismiss.
On the other hand, courts do require that the list solely identify the works at issue; complaints
which identify a number of copyrighted works, but do not specify which works are the subject of the
lawsuit have been held insufficient under this standard. See Cole v. John Wiley & Sons, Inc., No.
11 Civ. 2090(DF), 2012 WL 3133520, at *12 (S.D.N.Y. Aug. 1, 2012) (“Plaintiff, however, neither
alleges that Wiley infringed his copyright in every photograph listed, nor alleges that Wiley infringed
his copyright in any specific photograph on the list.”). Thus, “a plaintiff may fail to meet this
requirement if the [c]omplaint ‘bases an infringement claim on overly-inclusive lists of copyrighted
works’ that amount to ‘vague and expansive allegations regarding which works are the subject of
[p]laintiff’s claims.” Energy Intelligence Group, Inc. v. Jefferies, LLC, 101 F. Supp. 3d 332, 339
(S.D.N.Y. 2015) (emphasis added) (quoting Cole, 2012 WL 3133520, at * 12); see also Plunket v.
Doyle, No. 99 Civ. 11006(KMW), 2001 WL 175252, at *4 (S.D.N.Y, Feb. 22, 2001) (finding the
complaint insufficient when the plaintiff stated that the copyright claims were not limited to the
works provided). Again, Exhibits 6 and 7 clearly satisfy this standard. In the complaint, Daemmrich
contends that McGraw-Hill infringed on each of the photographs listed in all seven exhibits; thus

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it is clear which claims are at issue. As such, Daemmrich has sufficiently identified the copyrighted
works.
B.

Registered Copyright
McGraw-Hill also complains that Daemmrich has failed to plead registration for the works

in Exhibits 6 and 7. Here, McGraw-Hill argues first that because Exhibits 6 and 7 do not specifically
identify the copyright registration number or certificate of registration for each work, Daemmrich
has failed to plead ownership of a registered copyright. McGraw-Hill is correct that a prerequisite
to bringing a copyright claim under 17 U.S.C. § 411(a) is that the plaintiff must have a copyright
registration or preregistration in the works. Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816
(5th Cir. 1997). However, the Court has found no case in which the plaintiff is required to include
copyright registration numbers or copies of the registration certificates in the complaint in order to
meet the pleading standard. See, e.g., Arista Records, 453 F. Supp. 2d at 966; Bill Diodato
Photography LLC, 2012 WL 3240428, at * 8; Young-Wolff, 2013 WL 349711, at *3. Nor does
McGraw-Hill point to a single case to support its argument. See Dkt. No. 33.
McGraw-Hill further argues that the language used in the complaint is insufficient to plead
ownership of registered copyrighted works for Exhibits 6 and 7. Daemmrich stated in its Amended
Complaint that “Daemmrich is the owner of copyrights in the photographic images (‘Photographs’)
depicted and described in Exhibits 1–7 hereto” and that “[a]s set forth in Exhibits 1–5, the
Photographs have been registered with the United States Copyright Office or have pending copyright
registrations.” Dkt. No. 31 at 2. McGraw-Hill contends that the language only indicates that Exhibits
1–5 have been registered.

However, the Amended Complaint specifically states that the

“Photographs”—which in the previous paragraph was defined as all of the images described in
Exhibits 1–7—have been registered. Thus, though registration information was solely included for
the first five exhibits, Daemmrich has sufficiently alleged that the photographs from all seven
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exhibits have registered copyrights. See Eastcott, supra, No. 2:16-CV–904. This argument therefore
fails.
McGraw-Hill lastly argues that because Daemmrich uses McGraw-Hill’s identification
information for Exhibits 6 and 7 rather than information from its own records, it cannot possibly
know whether it has a registered copyright in the photographs. Again, the Court finds this argument
unpersuasive. Accepting all allegations as true, as is required by Rule 12(b)(6), Daemmrich has
provided a list of stock photographs that it claims are owned and registered by Daemmrich. This is
all that is required at this stage. Arista Records, 453 F. Supp. 2d at 966 (allowing claims to move
forward that pled registered copyrights even when the printouts did not identify the recordings by
title); Bill Diodato Photography, 2012 WL 3240428, at * 8. This argument also fails.
IV. RECOMMENDATION
Based upon the foregoing, the undersigned Magistrate Judge RECOMMENDS that the
District Court GRANT IN PART and DENY IN PART Defendants’ Motion to Partially Dismiss
First Amended Complaint (Dkt. No. 33). Specifically, the Court RECOMMENDS that the District
Court GRANT the motion and DISMISS WITHOUT PREJUDICE the claims listed in Exhibit
6, rows: 10, 14, 70, 75, 76, 77, 99, 103, 147, 176, 184, 186, 187, 210, 226, 233, 234, 235, 236, 237,
244, 246, 293, 296, 297, 304, 311, 314, 315, 316, 317, 320, 344, 346, 348, 353, 380, 381, 382, 383,
408, 416, 417, 419, and 465 and DENY the motion for all other claims.
V. WARNINGS
The parties may file objections to this Report and Recommendation. A party filing
objections must specifically identify those findings or recommendations to which objections are
being made. The District Court need not consider frivolous, conclusive, or general objections. See
Battle v. United States Parole Comm’n, 834 F.2d 419, 421 (5th Cir. 1987).

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A party’s failure to file written objections to the proposed findings and recommendations
contained in this Report within fourteen (14) days after the party is served with a copy of the Report
shall bar that party from de novo review by the District Court of the proposed findings and
recommendations in the Report and, except upon grounds of plain error, shall bar the party from
appellate review of unobjected-to proposed factual findings and legal conclusions accepted by the
District Court. See 28 U.S.C. § 636(b)(1)(c); Thomas v. Arn, 474 U.S. 140, 150-53, 106 S. Ct. 466,
472-74 (1985); Douglass v. United Servs. Auto. Ass’n, 79 F.3d 1415, 1428-29 (5th Cir. 1996) (en
banc).
SIGNED this 12th day of June, 2017.

_____________________________________
ANDREW W. AUSTIN
UNITED STATES MAGISTRATE JUDGE

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