Caner v. Autry
Filing
65
MEMORANDUM OPINION. Signed by Judge Norman K. Moon on May 14, 2014. (sfc)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
LYNCHBURG DIVISION
ERGUN M. CANER,
CASE NO. 6:14-cv-00004
Plaintiff,
MEMORANDUM OPINION
v.
JONATHAN AUTRY,
JUDGE NORMAN K. MOON
Defendant.
This case is before the Court on Defendant Jonathan Autry’s Motion to Dismiss the
Amended Complaint for Failure to State a Claim, or in the Alternative, for Summary Judgment
(“Motion”) (docket no. 28), filed on November 26, 2013. Ergun M. Caner (“Plaintiff” or
“Caner”) originally filed this action in the Northern District of Texas, claiming that Jonathan
Autry (“Defendant” or “Autry”) and another person, Jason Smathers, infringed his copyrights by
posting various videos on YouTube.com and other websites. Plaintiff filed his Amended
Complaint (docket no. 13) on October 14, 2013, in the Northern District of Texas. Plaintiff
seeks a permanent injunction restraining Defendant from any further infringement, along with
costs, attorney’s fees, investigatory fees, and expenses available under 17 U.S.C. § 505 (the
“Copyright Act”). Am. Compl. ¶¶ 48–50.
Ergun M. Caner was born to parents who met at a university in Sweden, and he lived
with them and his brothers in Ohio from the time he was a toddler. 1 His father was a devout
Muslim, highly involved in the Islamic Community in Ohio, and after a painful divorce, Plaintiff
spent weekend visitation at the mosque in Columbus, Ohio with his father. Sometime during
1
For clarity, I provide a brief synopsis of the facts surrounding this case here. In the Background Section and
throughout this opinion, I specify the source and admissibility for each piece of this information.
1
high school, Plaintiff began attending church with a friend and became a born-again Christian,
going on to obtain a Master of Theology from Southeastern Baptist Theological Seminary in
Wake Forest, North Carolina, and a Doctor of Theology from the University of South Africa.
About a year after the terrorist attacks on September 11, 2001, Plaintiff and his brother, Emir
Caner, wrote what became a popular book about their upbringing as Muslims in Ohio and their
conversion to Christianity. Plaintiff became a spokesperson for this background, and was hired
by Jerry Fallwell in 2005 to serve as the dean of the Liberty Theological Seminary.
Around this time, Plaintiff started making claims in his public speeches that he had
grown up as a Muslim in Turkey, steeped and trained in jihad, in a tradition that went back
several generations in his father’s family. After bloggers and major news media outlets began
reporting on contradictions in Plaintiff’s narrative, Liberty University conducted an official
inquiry into these accusations in May 2010. Shortly thereafter, Liberty demoted Plaintiff from
his position as dean, citing contradictions in factual statements he had made. By 2011, Plaintiff
announced that he was called to serve as provost and vice president of academic affairs at
Arlington Baptist College in North Texas.
Defendant attended Liberty Theological Seminary during the time Plaintiff served as
dean, and as Plaintiff concedes, initially supported Plaintiff and his message. Eventually,
revelations led Defendant to believe that Plaintiff was a detriment to the Christian religion and
their common institution, Liberty University. Although accusations against Plaintiff emerged in
2010, it was not until the spring of 2011 and the spring of 2012 that Defendant joined the
criticism by posting the Count Two and Count One Videos, respectively. Mot., Ex. A ¶¶ 8, 18.
In February 2012, Defendant posted the Count One Video, in which Plaintiff proclaimed his
Muslim upbringing in Turkey and expounded on how Muslims in the Middle East would view
2
the U.S. Marines and approach them from the perspective of jihad. Mot., Ex. A ¶¶ 9, 18, 20–23.
Defendant wished to expose Plaintiff’s dishonesty, knowing he was making claims like those in
the Count One Video to countless churches and before the U.S. Military. Mot., Ex. A ¶¶ 21–23.
Plaintiff responded to Defendant’s videos by claiming he possessed copyright protection
over the Count One and Two Videos, filing a takedown notice with YouTube.com in May 2013.
Am. Compl. ¶ 9. Defendant contested the videos’ removal, and on June 4, 2013, YouTube.com
informed Plaintiff that it would repost the videos unless Plaintiff filed legal action within ten
business days. Am. Compl. ¶ 12. This suit followed in the Northern District of Texas, on June
18, 2013.
In the Northern District of Texas, the parties filed various motions related to this case,
including Defendant’s Motion. Plaintiff responded to the Motion on January 6, 2014. On
January 15, 2014, the Northern District of Texas severed Jonathan Autry from the case and
transferred it to this Court, where only two videos mentioned in the Amended Complaint remain
at issue.
Upon arrival in this Court and after various motions by Defendant, Magistrate Judge
Robert S. Ballou ordered the parties to hold a scheduling conference, exchange initial
disclosures, and exchange written discovery while the Motion was pending, but allowed
Defendant to stay further discovery until the Motion’s disposition. See April 11, 2014 Order
(docket no. 56). On April 4, 2014, Defendant filed his reply on the Motion. On April 17, 2014,
Defendant filed notice with this Court that the Northern District of Texas granted an identical
motion to dismiss as to Jason Smathers, the other original defendant. On April 28, 2014,
Defendant filed an unopposed Motion to Supplement the Record (docket no. 58) with copies of
the copyright applications Plaintiff had filed with the Copyright Office, which this Court granted.
3
See April 29, 2014 Order (docket no. 59). A telephonic hearing on the Motion was held at 2:00
p.m. on April 30, 2014. After the hearing, Defendant filed a Second Motion to Supplement the
Record (docket no. 63) with information contesting Plaintiff’s assertion during the hearing that
Defendant was a disgruntled former employee.
For the reasons that follow, I will CONSIDER the Motion as one for summary judgment
and GRANT that Motion (docket no. 28). I will DENY the Second Motion to Supplement the
Record (docket no. 63).
II. BACKGROUND 2
Plaintiff resides in Texas and alleged he was employed at Arlington Baptist College in
Arlington, Texas. 3 The Amended Complaint alleges that Defendant resided in Lynchburg,
Virginia. 4 This Amended Complaint makes claims under the Copyright Act, 17 U.S.C. §§ 101,
2
Plaintiff’s response to the Motion is very brief, essentially contesting only whether he “paid the Copyright
Registration fees, deposited the transcripts with the Copyright Office, and has received receipts of the payment and
deposit from the United States Copyright Office.” Resp. at 1. This Court has gathered background from the
Amended Complaint, sources from which it can take judicial notice, and from the record before it on this converted
motion for summary judgment, as noted for each source outside the Amended Complaint throughout.
3
Although Plaintiff does not specify his place of employment, the address he lists for his place of employment
corresponds to the one Arlington Baptist College lists on its website, of which this Court may sua sponte take
judicial notice. See Jeandron v. Bd. of Regents of Univ. Sys. of Maryland, 510 F. App'x 223, 227–28 (4th Cir. 2013)
(approving a district court’s broad discretion to consider a university’s continuous enrollment requirement from its
website on a motion to dismiss); Fed. R. Ev. 201(c)(1), (d) (allowing a district court to take judicial notice of facts).
Compare Am. Compl. (“Dr. Caner’s place of employment is located at 3001 West Division Street, Arlington, TX
76012.”), with ArlingtonBaptistCollege.edu, Arlington Baptist College Location and Address,
http://www.arlingtonbaptistcollege.edu/contact/arlington-baptist-college-location-and-address (listing address as
3001 W Division St) (last visited Apr. 25, 2014). However, I take judicial notice under Rule 201(b)(2) and
Jeandron that Plaintiff has since been hired as President of Brewton-Parker College in Decatur, Georgia, which
describes itself as a “Georgia Baptist College” and announced Dr. Caner’s selection on its website. See BrewtonParker College Calls Caner as President: Controversial Educator Determined to Raise the College’s Profile,
bpc.edu, BPC News, http://www.bpc.edu/news_and_info/news/2013/December/123_Brewton_Parker_College_Calls_Caner_as_President.htm (last viewed May 14, 2014).
4
Jonathan Autry’s Declaration, attached to the Motion, states that since the filing of the Amended Complaint, he has
moved to the Eastern District of Virginia. Mot., Ex. A ¶ 3. Dr. Caner has not objected to venue. Despite
Defendant’s move, I find proper venue in this district, as it is the one “in which a substantial part of the events or
omissions giving rise to the claim occurred,” and since the two parties do not live in the same state. See 28 U.S.C. §
1391(b)(2).
4
501. Plaintiff became a prominent leader in the evangelical Christian community5 sometime
after the September 11, 2001 terrorist attacks, when he spoke and wrote to numerous audiences
throughout the United States about his upbringing as a Muslim in either Turkey or Ohio, 6 and his
5
Plaintiff’s counsel repeatedly conceded that Plaintiff serves as a visible, public figure within the evangelical
Christian community during the hearing on this Motion. During the hearing, he noted that Plaintiff “is a college
pres[ident],” that he “has written a number of books,” and that he “is someone that is out in the public square.”
Hearing Tr. at 10, Apr. 30, 2014 (docket no. 64). He later compared Plaintiff to “authors, public speakers, [and]
educational leaders,” and noted Plaintiff acts as a “spokesperson and as an academ[ician].” Id. at 10, 28. Indeed,
the United States Marines wanted to hear him speak such that Plaintiff “donated the event . . . almost like a pro bono
or a charity event for the Military” when he made his presentation, and suggested Plaintiff was donated his travel
expenses. Id. at 11, 14. These statements are admissible as opposing party’s statements, made by Plaintiff’s
attorney in a representative capacity. See Fed. R. Ev. 801(d)(2). Furthermore, as noted in footnote 7, this Court
takes judicial notice of Plaintiff’s status as a public figure from the newspaper sources cited in footnote 11, for the
reasons noted therein. I note I do not use these newspaper sources for the truth of the matters asserted, only to show
Plaintiff has been a frequent subject of local and national media coverage as a public figure. See Fed. R. Ev. 801(c).
Information about Plaintiff’s degrees comes directly from his website, and I take notice of it as an indisputable fact
under Federal Rule of Evidence 201(b)(2). See also O'Toole v. Northrop Grumman Corp., 499 F.3d 1218, 1224–25
(10th Cir. 2007) (noting company’s failure to dispute the earnings history it listed on its own website made that
information capable of judicial notice and indisputable under Rule 201(b)). See also bio, erguncaner.com,
http://www.erguncaner.com/biography/ (last viewed May 13, 2014).
6
Compare Ergun Mehmet Caner & Emir Fethi Caner, Unveiling Islam: An Insider’s Look at Muslim Life and
Beliefs 17–19 (2002) [hereinafter “Unveiling Islam”] (noting Plaintiff’s father and mother met at a university in
Sweden, where Ergun was born, then moved “to America,” where “Emir was born after we arrived in Ohio,” and
discussing how Ergun attended a mosque on Broad Street in Columbus, Ohio as a teenager during weekend visits to
his father after his parents’ divorce, until he converted to Christianity at a friend’s urging in high school) with First
Supplement to Record, Copyright Application for “Training Session: What You Need to know About Islam—Base
Theater” at 2–4, 10 [hereinafter “Base Theater Application”] (noting Plaintiff “wore [his] robes” to America, that
there are “two types of Turks who come to America,” that “[w]e came in full gear,” that he was “taught that you
hated me” through his “training and [his] Madrasa Istanbul, and his “training and my Madrasa in Cairo before
[coming] to America,” describing himself as a “Turk,” and saying he did not encounter the two nations of Islam
“until ’78 when we came here to America”) and Dr. Emir Caner, Truett-McConnell College,
http://www.truett.edu/abouttmc/meet-dr-caner.html (noting Dr. Emir Caner was “[b]orn on August 25, 1970 . . . .”);
First Supplement to Record, Copyright Application for “Training Session: What You Need to know About Islam—
O-Club” at 2, 5 [hereinafter “O-Club Application”] (stating “I’m Turkish,” that he “knew nothing about American
until [he] came here when [he] was 14 years old. Everything [he] knew about American culture [he] learned through
American television, whatever they allowed into the Turkish region,” that he “moved to Brooklyn, New York,” that
he was “sworn to Jihad. At the age of 9 until I was 18 years old and [he] became a believer in Jesus Christ”).
I take judicial notice of Plaintiff’s own narratives of his upbringing from the copyright applications he told this
Court he submitted to the Copyright Office, and from his book, Unveiling Islam. These sources provide
“indisputable” evidence of which this Court may take notice under Rule 201(b)(2) on summary judgment. See Fed.
R. Ev. 201(b)(2); O'Toole v. Northrop Grumman Corp., 499 F.3d 1218, 1224–25 (10th Cir. 2007) (noting
company’s failure to dispute the earnings history it listed on its own website made that information capable of
judicial notice and indisputable under Rule 201(b)). Evidence from these sources is also admissible under Federal
Rule of Evidence 801(d)(2) as an opposing party’s statements, or alternatively under Rule 801(c) as not for the truth
of where Plaintiff was raised, but to show the content of his speeches and writings. Fed. R. Ev. 801(c); 801(d)(2). I
take notice of Dr. Emir Caner’s biographical details from the Truett-McConnell College website. See, e.g.,
Jeandron, 510 F. App'x at 227–28; Fed. R. Ev. 201(b)(2), (c)(1), (d).
5
conversion to Christianity as a teenager. 7 Plaintiff became dean of the theological seminary at
Liberty University in 2005, and served in that post until 2010. 8 Controversy emerged in 2010
when public questions were raised regarding some details of Plaintiff’s background. While he
claimed to have been raised as a devout Muslim and jihadist in Turkey until his teenage years, 9
various bloggers and newspapers began to point out that other speeches and a book Plaintiff
7
Again, Plaintiff’s attorney has conceded Plaintiff serves as a “college president,” author who has “written a number
of books,” “someone in the public square,” “spokesperson and . . . academician.” Hearing Tr. at 10, 11, 14, 28, Apr.
30, 2014 (docket no. 64). This Court may take judicial notice under Federal Rule of Evidence 201(b) of facts “not
subject to reasonable dispute” because they are “generally known within the trial court’s territorial jurisdiction” or
“can be accurately and readily determined by sources whose accuracy cannot reasonably be questioned.” Fed. R.
Ev. 201(b)(2). This Court takes judicial notice of the claims made by Plaintiff about his background in his own
book, Unveiling Islam, where he and his brother narrate their upbringing as Muslims and their understanding of
jihad. Unveiling Islam, supra note 5, at 13–20, 26 (narrating their daily life as Muslims, Plaintiff’s conversion to
Christianity, and Plaintiff and his brother’s explanations of Islam ever since). This is indisputable information under
Rule 201(b)(2); see also O'Toole, 499 F.3d at 1224–25. Courts frequently take notice of adjudicative facts from
newspapers, and I do so here, not for the truth of the details asserted in the newspapers, but for Plaintiff’s general
self-promoted reputation as a person with an Islamic upbringing who later converted to Christianity. See infra note
11. Fed. R. Civ. P. 201(b); see, e.g., Crowder v. Kitagawa, 81 F.3d 1480, 1491–92 (9th Cir. 1996) (taking judicial
notice of fact that plaintiff guide-dog users claiming discrimination based on blindness constituted only 1–5% of the
blind population); Peters v. Delaware River Port Auth. of Pennsylvania & New Jersey, 16 F.3d 1346, 1356 (3d Cir.
1994) (taking judicial notice of newspaper accounts that two state entities were in competition with one another at
times); Associated Gen. Contractors of Am. v. City of Columbus, 936 F. Supp. 1363, 1425 (S.D. Ohio 1996) vacated
on other grounds, 172 F.3d 411 (6th Cir. 1999) (collecting cases for proposition that a “court may take judicial
notice of newspaper articles which demonstrate that certain facts were generally known within the court's
jurisdiction”).
8
This Court may take judicial notice under Federal Rule of Evidence 201(b)(1) and (b)(2) of facts “not subject to
reasonable dispute” because they are “generally known within the trial court’s territorial jurisdiction” or “can be
accurately and readily determined by sources whose accuracy cannot reasonably be questioned.” Fed. R. Ev.
201(b). Liberty University’s website lists Dr. Caner as “President of Liberty Baptist Theological Seminary
[“LBTS”] and Graduate School” multiple times, and states that he was dean of LBTS from 2005–2010. See, e.g.,
Affiliated Schools and Companies, liberty.edu,
http://www.liberty.edu/media/1410/archive_finding_aids/AFS%20RG-02.pdf (last viewed April 28, 2014);
Evangelical Manifesto Erroneously Lists Prominent Evangelical Leaders as Signatories, News Articles, liberty.edu
(May 16, 2008), http://www.liberty.edu/law/index.cfm?PID=18456&artid=6969 (last viewed on April 28, 2014);
Dr. Caner guest on national call-in radio show, News & Events, liberty.edu (March 3, 2008)
http://www.liberty.edu/index.cfm?PID=18495&MID=6218 (last viewed April 28, 2014).
9
See First Supplement to Record, Copyright Application for O-Club at 2, 5 (noting “I’m Turkish,” that he “knew
nothing about America until [he] came here when [he] was 14 years old. Everything [he] knew about American
culture I learned through American television, whatever they allowed into the Turkish region,” that he “moved to
Brooklyn, New York,” that he was “sworn to Jihad . . . [a]t the age of 9 until I was 18 years old and I became a
believer in Jesus Christ”). I take judicial notice of these statements under Rule 201(b), and they are admissible
under Rule 201(b) and either Rule 801(d)(2) or 801(c). Fed. R. Ev. 201(b)(2); Fed. R. Ev. 801(c), 801(d)(2); see
also O'Toole v. Northrop Grumman Corp., 499 F.3d at 1224–25.
6
published with his brother 10 claimed he moved to the United States from Sweden when he was
three or four years old. 11 In May 2010, citing “several newspapers rais[ing] questions,” Liberty
University “form[ed] a committee to investigate a series of accusations against” Plaintiff, then
removed Plaintiff from his position as dean in July 2010; by 2011, Arlington Baptist College in
North Texas selected Plaintiff to serve as provost and vice president of academic affairs at
Arlington Baptist College in North Texas. 12
Count One of the Amended Complaint claims Defendant posted a video on YouTube
(“Count One Video”) of a “presentation [Plaintiff made] as part of a training series on the
religion of Islam” to the United States Marines, for which Plaintiff was “compensated as an
10
Unveiling Islam, supra note 5, at 17 (noting Plaintiff’s father and mother met at university in Sweden, where
Ergun was born, then moved “to America,” where “Emir was born after we arrived in Ohio,” and discussing how
Ergun attended a mosque on Broad Street in Columbus, Ohio as a teenager); Fed. R. Ev. 201(b)(2); Fed. R. Ev.
801(c), 801(d)(2); see also O'Toole, 499 F.3d at 1224–25.
11
I take judicial notice of these newspaper articles and blogs for facts that were generally known within the
jurisdiction of this Court, i.e. the criticisms that surrounded Plaintiff beginning in 2010. I do not consider the
contents of these articles for their truth, but for the existence of criticisms made against Plaintiff in the media at that
time. Fed. R. Ev. 201(b)(1); Fed. R. Ev. 801(c). See, e.g., William Wan & Michelle Boorstein, Washington Post,
June 30, 2010, http://www.washingtonpost.com/wp-dyn/content/article/2010/06/29/AR2010062905331.html (last
viewed May 8, 2014) [hereinafter “Liberty U. removing Ergun Caner”] (noting Liberty University was removing
Plaintiff as dean after bloggers pointed out contradictions between his sermons, where he claimed to have been
raised as a jihadist in Turkey until coming to the United States as a teenager, while his book claimed he moved to
Ohio from Sweden as a young child); David Neff, Christianity Today, June 6, 2010,
http://www.christianitytoday.com/gleanings/2010/june/liberty-university-cuts-caner-as-seminarydean.html?paging=off (last viewed May 8, 2014) (same); Ray Reed, Caner Leaving Liberty for Texas College Post,
Lynchburg News & Advance, Updated Feb. 18, 2013, http://www.newsadvance.com/news/local/caner-leavingliberty-for-texas-college-post/article_5e7298ad-7002-5f0b-88cd-b574f128826f.html?mode=jqm (last viewed May 8,
2014) (noting contradictions in Plaintiff’s narrative, including that he “often described himself as an immigrant from
Turkey,” but that court documents indicated he was “born in Sweden and came to the United States with his family
at about the age of 4”).
12
I take judicial notice of the investigation, removal, and move as facts generally known within this trial court’s
jurisdiction, as announced by reliable sources with circumstantial guarantees of trustworthiness and more probative
on the point than any other evidence that can reasonably be obtained, and serving the purposes of the Rules of
Evidence and interests of justice. The investigation was announced by Liberty University on its website, the
removal was reported in the Washington Post based on an official statement by Liberty University, and the move
was reported in a press release on Plaintiff’s own website. Fed. R. Civ. P. 201(b); Fed. R. Ev. 807; Jeandron, 510 F.
App'x at 227–28; O'Toole, 499 F.3d at 1224–25; University Advancement staff, Committee formed to investigate
Caner statements, News & Events, liberty.edu (May 10, 2010),
http://www.liberty.edu/promotionalpublications/index.cfm?PID=18495&MID=18644 (last viewed April 28, 2014);
Liberty U. removing Ergun Caner; Press Release, erguncaner.com, Ergun Caner Called as Provost and Vice
President of Academic Affairs at Arlington Baptist College (May 17, 2011),
http://www.erguncaner.com/2011/05/17/arlingtonbiblecollege/ (last viewed April 28, 2014).
7
independent contractor.” Am. Compl. ¶ 15. Plaintiff claims Defendant thereby infringed on a
copyright “to the content of his presentation,” an application for which is “currently pending at
the Copyright Office.” Am. Compl. ¶ 14. On May 13, 2013, “Dr. Caner filed a takedown notice
. . . with Youtube.com . . . challenging Defendant’s use” of this video and others. Am. Compl.
¶ 9. Defendant then “challeng[ed] the removal of two of Dr. Caner’s videos” and YouTube.com
informed Plaintiff on June 4, 2013, that the “videos would be reposted to Autry’s account if Dr.
Caner did not initiate legal action within ten business days.” Am. Compl. ¶ 12.
Count Two of the Amended Complaint alleges Defendant infringed Plaintiff’s rights with
a second video, titled “Ergun Educated in Cairo, Egypt,” (“Count Two Video”) which “includes
live portions of recorded footage of Dr. Caner during various presentations and sermons.” Am.
Compl. ¶¶ 20–22. Plaintiff alleges he “owns the copyright to the content of his presentation and
has not authorized Autry to use any portion of this work.” Am. Compl. ¶ 22.
Plaintiff filed his initial complaint in the Northern District of Texas on June 18, 2013, and
his Amended Complaint on October 14, 2013. After filing various motions regarding
jurisdiction, venue, and severance, Defendant responded to the Amended Complaint with this
Motion on November 26, 2013. Defendant attached several exhibits to the Motion, related to his
reasons for posting the videos and to Jason Smathers’ alleged Freedom of Information Act
(“FOIA”) request for the Count One Video. Mot. to Dismiss, Exs. A–D. Plaintiff’s response to
the Motion attached an exhibit showing emails from the “Copyright Office” confirming that he
successfully uploaded a file entitled “Ergun Caner trains US Marines o_club.pdf,” and that he
applied and paid for applications for works entitled: “Training Session: What You Need to Know
About Islam—Base Theater” and “Training Session: What You Need to Know About Islam—OClub.” See Resp. on Mot. to Dismiss, Ex. A. The attachments did not include confirmation that
8
Plaintiff successfully uploaded a file corresponding with the “Base Theater” training session file
name, only two confirmations for files entitled “o_club.” Id.
Defendant submitted several more exhibits to this Court through two motions to
supplement the record. This Court granted leave for Defendant to supplement the record on the
first motion, with “electronic cop[ies] of Dr. Caner’s two application for copyrights,” with “the
transcript of Dr. Caner’s respective sermons” attached to each application. Mot. to Supplement
the Record ¶¶ 5–6 (docket no. 58). Defendant also submitted a second declaration by Jonathan
Autry, describing the extent of his and his wife’s employment for Liberty University, and for
Plaintiff. Second Mot. to Supplement the Record, Ex. A (docket no. 63). 13
III. LEGAL STANDARD
In order to survive a motion to dismiss pursuant to Rule 12(b)(6), a complaint must
contain facts sufficient “to raise a right to relief above the speculative level” and “state a claim to
relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 570 (2007).
A claim is plausible if the complaint contains “factual content that allows the court to draw the
reasonable inference that the defendant is liable for the misconduct alleged,” and if there is
“more than a sheer possibility that a defendant has acted unlawfully.” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009). When considering a Rule 12(b)(6) motion, a court must accept all factual
allegations in the complaint as true, and must draw all reasonable inferences in favor of the
plaintiff. Erickson v. Pardus, 551 U.S. 89, 94 (2007). However, a court is not required to
“accept the legal conclusions drawn from the facts” or “accept as true unwarranted inferences,
unreasonable conclusions, or arguments.” Eastern Shore Markets, Inc. v. J.D. Assocs. Ltd.
P’ship, 213 F.3d 175, 180 (4th Cir. 2000) (citations omitted).
13
I do not consider the materials presented with Defendant’s Second Motion to Supplement the Record and hereby
DENY the motion (docket no. 63).
9
Federal Rule of Civil Procedure 56(a) provides that a court should grant summary
judgment “if the movant shows that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” “As to materiality . . . [o]nly disputes over
facts that might affect the outcome of the suit under the governing law will properly preclude the
entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In
order to preclude summary judgment, the dispute about a material fact must be “‘genuine,’ that
is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
Id. See also JKC Holding Co. v. Washington Sports Ventures, Inc., 264 F.3d 459, 465 (4th Cir.
2001). However, if the evidence of a genuine issue of material fact “is merely colorable or is not
significantly probative, summary judgment may be granted.” Anderson, 477 U.S. at 250. In
considering a motion for summary judgment under Rule 56, a court must view the record as a
whole and draw all reasonable inferences in the light most favorable to the nonmoving party.
See, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322–24 (1986); Shaw v. Stroud, 13 F.3d 791,
798 (4th Cir. 1994).
IV. DISCUSSION
This Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a), and venue is
proper pursuant to 28 U.S.C. § 1391(b)(2). Plaintiff’s claims arise under the Copyright Act, 17
U.S.C. §§ 101, 501, and 28 U.S.C. § 1338(a) provides that federal district courts “shall have
original jurisdiction of any civil action arising under any Act of Congress relating to . . .
copyrights . . . .” 28 U.S.C. § 1338(a). Defendant raises multiple issues with Plaintiff’s claim.
Those most central to resolution of this case include whether this Court should consider his
Motion as one to dismiss the complaint or as one for summary judgment, whether this Court can
consider the various exhibits submitted during briefing on the Motion, whether Plaintiff has
10
satisfied the prerequisites to filing a copyright suit, and whether Defendant’s posting of
Plaintiff’s videos constitutes fair use.
A. Exhibits and Alternative Motion for Summary Judgment
Defendant has filed a Motion to dismiss, or in the alternative, for summary judgment, and
both parties have submitted exhibits with their briefs on the Motion. Defendant submitted
documents related to a FOIA request by Jason Smathers. Defendant also submitted a
declaration explaining his motivations for posting the Count One and Two Videos online.
Finally, during briefing, Defendant submitted a declaration about the employment status of
himself and his wife, and copies of the copyright applications that Plaintiff filed with the
Copyright Office. For his part, Plaintiff submitted emails from the “United States Copyright
Office,” which confirm application and payment for two works: (1) “Training Session: What
You Need to Know about Islam—Base Theater,” and (2) “Training Session: What You Need to
Know about Islam—O-Club,” and deposit of the “O-Club” work.
1. Exhibits Extrinsic to the Pleadings
Rule 12(d) prohibits district courts from considering evidence outside the pleadings on
motions to dismiss, unless the process is converted to summary judgment. See Fed. R. Civ. P.
12(d). However, without risking conversion of the proceedings, courts can consider “documents
attached to the complaint, as well as those attached to [a] motion to dismiss, so long as they are
integral to the complaint and authentic,” including documents “incorporated into the complaint.”
Bala v. Commonwealth of Virginia Dep't of Conservation & Recreation, 532 F. App'x 332, 334
(4th Cir. 2013) (internal quotation marks omitted) (citing Sec'y of State for Defence v. Trimble
Navigation Ltd., 484 F.3d 700, 705 (4th Cir. 2007)); E.I. du Pont de Nemours & Co. v. Kolon
Indus., Inc., 637 F.3d 435, 448 (4th Cir. 2011). The Fifth Circuit and some district courts have
11
refused to consider “documents that are mere evidence for the defense” as incorporated into the
complaint. See Kaye v. Lone Star Fund V (U.S.), L.P., 453 B.R. 645, 663–64 (N.D. Tex. 2011).
If I were to consider the Motion under Rule 12(b)(6), I would consider the material
submitted with Plaintiff’s response to the Motion, as it is integral or incorporated into the
Amended Complaint. The Amended Complaint claims that Plaintiff “owns the copyright to the
content of [the presentation in the Count One Video]; [and that] his copyright application is
currently pending at the Copyright Office.” Am. Compl. ¶ 14. Likewise, Plaintiff claims he
“owns the copyright to the content of his presentation and has not authorized [Defendant] to use
any portion of [the Count Two Video].” Am. Compl. ¶ 22.
The Court can consider Exhibit A, attached to Plaintiff’s response to the Motion. This
exhibit purports to show that the U.S. Copyright Office received Plaintiff’s applications for
copyrights over certain works on October 14, 2013. 14 See Resp. to Mot. to Dismiss, Ex. A.
Plaintiff may only satisfy the prerequisites to bring a copyright suit if, before bringing suit, he
actually applied to the U.S. Copyright Office for copyrights in the works at issue. Proof that he
has applied for or owns copyright in the videos thus proves “integral to the complaint,” and since
an application for copyright is mentioned in the complaint, that application may also be
“incorporated into the complaint” by reference. See Bala, 532 F. App’x at 334; Trimble, 484
F.3d at 705.
If I consider most of the exhibits submitted with Defendant’s Motion and in supplemental
briefing, I must convert the motion to dismiss into one for summary judgment. See Bala, 532 F.
App’x at 334; Fed. R. Civ. P. 12(d). These exhibits relate to Defendant’s purpose in posting the
14
Although the emails only confirm deposit of the “o_club” work in PDF form, and contain no confirmation of the
“Base Theater” work’s deposit, the parties have not contested that both works were deposited with the Copyright
Office. Additionally, transcripts of both works are present in the copies of Plaintiff’s copyright applications that
Defendant submitted to this Court on April 29, 2014. See Copy of E-Application (docket no. 60).
12
videos, the method for obtaining the videos, and the content of the copyright applications
Plaintiff submitted, among other things. See Mot., Exs. A–C (docket no. 28); First Mot. to
Supplement Record & Supplement (docket nos. 58, 60); Second Mot. to Supplement Record, Ex.
A (docket no. 63). The Amended Complaint never mentions how Defendant obtained the Count
One and Count Two Videos, his motivations for posting the videos, alludes to any employment
relationship between him and his family and Plaintiff, or specifies the contents of Plaintiff’s
copyright applications.
I could nevertheless consider the copies of Plaintiff’s copyright applications, as the
Amended Complaint refers to Plaintiff’s pending application for copyright over the Count One
Video, and his purported ownership of the copyright over the content in the Count Two Video.
Am. Compl. ¶¶ 14, 22. These applications and their content are incorporated by reference into
the Amended Complaint, or prove integral to it. All other extrinsic exhibits refer to matters not
referenced or discussed in the Amended Complaint, which are not integral to it or incorporated
into it by reference. Therefore, I cannot consider these other documents without converting the
Motion into one for summary judgment. See, e.g., Kaye, 453 B.R. at 663–64 (N.D. Tex. 2011)
(finding documents that are mere evidence for the defense are not incorporated into the
complaint); Caner v. Smathers, No. 4:13-CV-494-Y, slip op. at 6 (N.D. Tex. Apr. 17, 2014)
(declining to consider documents submitted with the same motion as has been filed in this case,
without converting the proceedings into summary judgment).
2. Motion to Dismiss or Motion for Summary Judgment
If a court considers evidence extrinsic to the pleadings on a motion to dismiss, it must
“convert the proceeding to one for summary judgment.” Bala, 532 F. App’x at 334; Fed. R. Civ.
P. 12(d). “But, conversion of a motion to dismiss to one for summary judgment requires that
13
‘[a]ll parties must be given a reasonable opportunity to present all the material that is pertinent to
the motion.’” Bala, 532 F. App’x at 334 (citing Trimble Navigation, 484 F.3d at 705).
Therefore, “such conversion is not appropriate where the parties have not had an opportunity for
reasonable discovery.” E.I. du Pont de Nemours, 637 F.3d at 448; see also Greater Baltimore
Ctr. for Pregnancy Concerns, Inc. v. Mayor & City Council of Baltimore, 721 F.3d 264, 280–81
(4th Cir. 2013).
Several courts considering whether to convert a motion to dismiss into a motion for
summary judgment have used Rule 56(d)’s standards to determine whether a nonmoving party
has had an adequate opportunity for reasonable discovery. See, e.g., Hamilton v. Mayor & City
Council of Baltimore, 807 F. Supp. 2d 331, 341–42 (D. Md. 2011); Park v. Stewart, No. CIV.A.
ELH-13-3242, 2014 WL 1427419, at *3–4 (D. Md. Apr. 10, 2014). First, a nonmoving party
“cannot complain that summary judgment was granted without discovery unless that party has
made an attempt to oppose the motion on the grounds that more time was needed for discovery.”
Hamilton, 807 F. Supp. 2d at 341–42 (quoting Harrods Ltd. v. Sixty Internet Domain Names, 302
F.3d 214, 244 (4th Cir. 2002)). The nonmoving party should file an affidavit or declaration
“explaining why, ‘for specified reasons, it cannot present facts essential to justify its opposition,’
without needed discovery.” Id.; Fed. R. Civ. P. 56(d); but see Park, 2014 WL 142719, at *4
(noting a court may excuse failure to file an affidavit upon other adequate objections from the
nonmoving party informing the district court that more discovery is necessary).
Yet, a party “cannot simply demand discovery for the sake of discovery. Hamilton, 807
F. Supp. 2d at 342. A court may properly deny a nonmoving party’s request for additional
discovery “where the additional evidence sought for discovery would not have by itself created a
genuine issue of material fact sufficient to defeat summary judgment.” Strag v. Bd. of Trs.,
14
Craven Cmty. Coll., 55 F.3d 943, 953 (4th Cir. 1995); id.; see also Works v. Colvin, 519 F. App'x
176, 183–84 (4th Cir. 2013) (“This court has long held that parties wishing to obtain additional
discovery must ‘specifically allege why the information sought would have been sufficient to
create a genuine issue of material fact such that it would have defeated summary judgment.’”).
For the reasons stated below and more fully throughout the fair use analysis, I find it
proper to consider the Motion as one for summary judgment under Rule 56.
It is often the case that a court should not convert a motion during the early stages of a
case, when the nonmoving party may not have had an opportunity to conduct discovery and to
present all material “pertinent to the motion.” See Bala, 532 F. App’x at 334. Yet, a court is not
obligated to delay ruling on a motion simply for the sake of more discovery when a nonmoving
party cannot point to specific information it seeks that might present a genuine issue of material
fact counseling against summary judgment. See Hamilton, 807 F. Supp. 2d at 342; Strag, 55
F.3d at 953. The nonmoving party is obliged to file an affidavit or declaration with the specific
facts it seeks through additional discovery, or at the very least, to otherwise inform the court of
its need for further discovery. Hamilton, 807 F. Supp. 2d at 341–42; Park, 2014 WL 142719, at
*4. If this Court finds that the information Plaintiff seeks would not present a genuine issue of
material fact sufficient to defeat summary judgment, it may deny Plaintiff’s request to conduct
further discovery and consider the Motion as one for summary judgment. See, e.g., Hamilton,
807 F. Supp. 2d at 342; see also Strag, 55 F.3d at 953; Works, 519 F. App’x at 183.
Plaintiff contested Defendant’s requested stay of discovery, and Magistrate Judge Ballou
ordered that a scheduling conference, initial disclosures, and written discovery take place during
the pendency of this Motion. See Order on Mot. to Stay Discovery (docket no. 56). In his
15
response to this Motion, Plaintiff failed to mention any information he seeks through discovery
that might present a dispute of material fact counseling against summary judgment.
Plaintiff also has not filed an affidavit or declaration pointing to specific information he
seeks through discovery that might lead to contested issues of material fact. In fact, Plaintiff’s
court filings have been noticeably sparse. The Amended Complaint is brief, giving very little
factual background about the issues in this case. The response on this Motion is two pages long
and worded in very general language, completely failing to address most of Defendant’s
arguments. Although Plaintiff need only state a claim to relief that is plausible on its face at the
12(b)(6) stage, Plaintiff’s unusual conduct gives rise to the impression that he seeks to reveal as
little as possible to conceal for as long as possible that his claims lack merit.
That impression was corroborated by the conduct of Plaintiff’s counsel at the hearing on
this Motion, where he finally addressed many of Defendant’s arguments. For the first time,
without the benefit of written argument for all to see, or of citation (except sometimes to his own
beliefs or thoughts) Plaintiff cast aspersions on Defendant’s motives and past association with
Plaintiff and argued Defendant was not “qualified” under the fair use doctrine to criticize
Plaintiff. See Hearing Tr. at 9, 11, 14, 16, 21 Apr. 30, 2014 (docket no. 64) (arguing “I’m not
sure Defendant in this case would even be qualified to comment” and attempting to distinguish
“cyber terrorism” from “cyber criticism” by defining as “appropriate criticism from people that
are qualified to render those opinions i[n] the market place and exchange of ideas in academia
and elsewhere,” such that “an anonymous cyber terrorist, in my mind, is not entitled to the same
Fair Use protection as a publicly identified professional of Atheism,” etc.). Sifting carefully
16
through his arguments, I can discern only a few pieces of information Plaintiff seeks that he
claims would reveal material factual disputes. 15
This case largely revolves around whether Defendant’s posting of the Count One and
Two Videos constitutes fair use. Fair use is a complete defense to a copyright claim, meaning
that “the fair use of a copyrighted work . . . is not an infringement of copyright.” Bouchat v.
Baltimore Ravens Ltd. P'ship, 619 F.3d 301, 307–08 (4th Cir. 2010) [hereinafter “Bouchat I”].
All of Plaintiff’s objections to considering this Motion as one for summary judgment involve
information related to the fair use analysis.
First, Plaintiff seeks additional information about Defendant’s underlying purpose in
posting the Count One and Two Videos. For the first time at the hearing on the Motion,
Plaintiff’s attorney represented that Defendant once worked for Plaintiff, and is a disgruntled
“former employee” who “was fully supportive of [Plaintiff], worked under [Plaintiff] and was
terminated and has, we believe, inappropriately attempted to work this copyright issue on
Youtube and other places with the purpose of economically hurting [Plaintiff],” by engaging in
“cyber terrorism” with a “vindictive and destructive” motivation. See Hearing Tr. at 9, 11, 14,
Apr. 30, 2014 (docket no. 64). Plaintiff suggests that discovery would uncover information
about Defendant’s motivations that would show he had an improper purpose, like revenge, in
posting the videos under the fair use analysis. Second, Plaintiff claims discovery might reveal
that Defendant profited from posting the videos online and might reveal “what impact this has
had on [Plaintiff’s] ability to function and continue in his career.” Id. at 11, 12, 20 (“we don’t
15
I note that when I directly asked Plaintiff’s counsel what issues of material fact might exist in this case, he did not
provide a direct answer. He did refer in a roundabout way to the purpose and character of the use, and to the fact
that Defendant used the entire video. See Hearing Tr. at 24–27, Apr. 30, 2014 (docket no. 64). I have cobbled
together those objections and others he made during the hearing as his objections to deciding this Motion on
summary judgment, since he has not more directly objected and set out specific issues of material fact that discovery
would uncover. I observe he has had more than adequate notice I might consider this Motion on Summary
Judgment, both from the captioning of this Motion, in his own reference to that Motion in the response, and during
the hearing.
17
know, for example, . . . if, . . . [Defendant] is in any way commercially making money off of
this,” for example through “lectures or speeches or other things,” and that groups might choose
not to invite Plaintiff to present to them, diminishing value to Plaintiff, because the video was
“available online for free”). Again for the first time at the hearing, Plaintiff argued any profit
Defendant earned from posting the videos, or any market harm to Plaintiff, would prevent
classifying that posting as fair use. Finally, Plaintiff’s counsel made astounding claims during
the hearing that discovery would affect the fair use analysis by showing that Defendant was not
“qualified” to direct “appropriate criticism” at Plaintiff, unlike “people that are qualified to
render those opinions i[n] the market place and exchange of ideas in academia and elsewhere,”
and therefore Defendant could not assert the fair use defense. Hearing Tr. at 11, 14, Apr. 30,
2014 (docket no. 64).
As I explain more fully below, even if Plaintiff obtained all the information he seeks
through further discovery, that information would not raise a dispute of material fact.
Defendant’s use of the videos to criticize Plaintiff as a disingenuous public figure would still
qualify as fair use even if: (1) Defendant was a disgruntled former employee who sought to harm
Plaintiff by criticizing contradictions in his narratives; and (2) Defendant profited from that
criticism and reduced the market for Plaintiff’s work through the force of his criticism. See
generally Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591–92 (1994) (noting that because
“parody may quite legitimately aim at garroting the original, destroying it commercially as well
as artistically, the role of the courts is to distinguish between biting criticism that merely
suppresses demand and copyright infringement which usurps it.” (internal quotation marks and
citations omitted)); NXIVM, 364 F.3d at 482 (“That the fair use, being transformative, might well
18
harm, or even destroy, the market for the original is of no concern to us so long as the harm
stems from the force of the criticism offered.”).
Plaintiff’s spurious assertion that fair use only applies where a speaker “qualified to
render . . . opinions” or to level “appropriate criticism” at a public figure proves ludicrous on its
face. Hearing Tr. at 11, 14, Apr. 30, 2014 (docket no. 64). The First Amendment’s protections,
advanced by the fair use defense, have never applied to some bizarre oligarchy of “qualified”
speakers. Excluding speakers who criticize public figures from protection due to the speaker’s
social status, level of education, or other nebulous “qualifying” factors would nullify the broad
protections the First Amendment is meant to provide, and stifle the open discourse that stands
against tyranny, intolerance, and oppression. Plaintiff himself has extolled the virtues of these
protections and warned against the dangers of censorship and “misinformation”: “The one great
exponent of America is the freedom to think and rationally believe and reasonably consider for
yourself.” Mot., Ex. A, Application for Copyright of “Training Session: What You Need to
Know About Islam – Base Theater,” [hereinafter “Base Theater Application”] at 1, 2.
Conveniently, when criticism is directed at him, Plaintiff comes before this Court and argues that
it should restrict First Amendment fair use protection to some amorphous group of “qualified”
speakers. When pressed at the hearing to provide authority for this counterintuitive proposition,
Plaintiff’s counsel fell back on his “belie[fs]” and failed to do so. Hearing Tr. at 17–18, Apr. 30,
2014 (docket no. 64). As Defendant’s counsel aptly observed during the hearing, if Plaintiff’s
counsel intends to make such outlandish arguments, he should go to the trouble of “typ[ing] out
the citations” for any supporting authority. Id. at 24. I doubt such authority exists.
I therefore consider the Motion as one for summary judgment, because although this case
is in its early stages, I find that more discovery would not give rise to a dispute of material fact
19
preventing the entry of summary judgment. Even if Plaintiff obtained the information he seeks,
no reasonable juror could find for Plaintiff. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1986). I will not allow Plaintiff to strategically prolong this case through an unsupported
request for further discovery. Furthermore, I will rely on the exhibits submitted during briefing
on the Motion, 16 since I am considering it on summary judgment. See Fed. R. Civ. P. 12(d).
B. Plaintiff’s Lack of Response to Most of Defendant’s Arguments
Defendant’s Motion raises a plethora of arguments supporting Defendant’s contention
that he did not infringe a copyright in posting the Count One and Two Videos to YouTube.com.
Plaintiff’s response attempts to answer only two of them: (1) whether he satisfied prerequisites to
copyright suit by applying for copyrights in the videos; and (2) whether his failure to apply for
copyrights until October 2013 meant that this Court should give his applications no weight. See
Resp. to Mot. to Dismiss at 1–2. Many district courts in this circuit and others, including on
motions to dismiss, have “recognized the general principle that a party who fails to address an
issue has conceded the issue.” Kinetic Concepts, Inc. v. Convatec Inc., No. 1:08CV00918, 2010
WL 1667285, at *8–9 (M.D.N.C. Apr. 23, 2010) (considering motion to dismiss and collecting
cases for the proposition); see also, e.g., Brand v. N. Carolina Dep't of Crime Control & Pub.
Safety, 352 F. Supp. 2d 606, 618 (M.D.N.C. 2004); Maryland Elec. Indus. Health Fund v.
MESCO, Inc., No. CIV.A. ELH-12-505, 2014 WL 853237, at *7 (D. Md. Feb. 28, 2014).
Before the hearing on the Motion, Plaintiff had failed to address or contest Defendant’s
assertions that Defendant posted the videos as a fair-use criticism of Plaintiff, or that Plaintiff
waived his exclusive rights or gave license to others to use the videos. At the hearing, Plaintiff’s
counsel conceded several issues, and contested others. For one thing, Plaintiff’s counsel
16
I need not and do not consider the material within and attached to the Second Motion to Supplement the Record
(docket no. 63), as noted previously.
20
admitted that Plaintiff never submitted an application to the U.S. Copyright Office for the Count
Two Video. Hearing Tr. at 12–13, Apr. 30, 2014 (docket no. 64) (“THE COURT: Well, didn’t
he actually though apply for a copyright as to the video entitled Ergun Educated in Cairo, Egypt?
MR GIBBS: Not that particular video, no, sir.”). Therefore, as explained further herein, Plaintiff
has not satisfied an essential precondition for suing Defendant for infringement of the Count
Two Video, and I will dismiss that claim. See Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384,
386–87 (5th Cir. 1984) (finding that to bring suit for copyright infringement, a plaintiff must
“prove payment of the required fee, deposit of the work in question, and receipt by the Copyright
Office of a registration application.”).
Plaintiff’s counsel also conceded that Plaintiff is a public figure. During the hearing, he
called Plaintiff “a college pres[ident],” and asserted that he “has written a number of books,” and
that he “is someone that is out in the public square.” Hearing Tr. at 10, Apr. 30, 2014 (docket
no. 64). He later compared Plaintiff to “authors, public speakers, [and] educational leaders,” and
noted Plaintiff acts as a “spokesperson and as an academ[ician].” Id. at 10, 28. Indeed, the
United States Marines wanted to hear him speak such that Plaintiff “donated the event . . . almost
like a pro bono or a charity event for the Military” when he made his presentation in the Count
One Video, and Plaintiff’s counsel suggested Plaintiff was donated his travel expenses. Id. at 11,
14. Plaintiff only partially contested that he waived or gave license for others to use the Count
One and Count Two Videos. Although Plaintiff could not remember coming to any oral or
written agreement with the U.S. Marines about his presentations, he asserted he gave those
presentations with the personal understanding that he would retain the rights to his work.
Plaintiff avers that he could not find any written agreement concerning these presentations.
21
Although Plaintiff has not filed suit against the United States government for releasing the Count
One Video through a FOIA request, Plaintiff asserted that he still considered the content his own.
C. Preconditions to Copyright Suit: Application or Registration Approach
Copious judicial ink has been spilled over the proper prerequisites for bringing a
copyright suit in federal court. Although the United States Court of Appeals for the Fourth
Circuit has yet to rule on the question, other circuits are divided about whether a litigant need
only apply for a copyright and provide proof of that application before bringing suit in federal
court (the “Application Approach”), or whether a litigant must provide proof of the U.S.
Copyright Office’s grant or denial of copyright registration before suit can be initiated (the
“Registration Approach”). Compare La Resolana Architects, PA v. Clay Realtors Angel Fire,
416 F.3d 1195, 1202–04 (10th Cir. 2005) with Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606
F.3d 612, 615–21 (9th Cir. 2010). The United States Supreme Court has resolved that a court’s
jurisdiction does not hinge on this question. See Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154,
166, 170 (2010) (holding that 17 U.S.C. § 411(a), which “imposes a precondition to filing a
claim,” “does not restrict a federal court’s subject-matter jurisdiction.”).
1. Registration and Application Approaches
Plaintiff alleges copyright infringement under 17 U.S.C. §§ 106 and 506. Section 106
grants “[e]xclusive rights in copyrighted works”:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by
sale or other transfer of ownership, or by rental, lease, or lending . . . .
17 U.S.C. § 106 (1)–(3). Section 501(b) of Title 17 notes that the “legal or beneficial owner of
an exclusive right under a copyright is entitled, subject to the requirements of section 411, to
22
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(a), in turn, says that
no 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. In any case, however, where the deposit,
application, and fee required for registration have been delivered to the Copyright
Office in proper form and registration has been refused, the applicant is entitled to
institute a civil action for infringement if notice thereof, with a copy of the
complaint, is served on the Register of Copyrights. The Register may, at his or her
option, become a party to the action with respect to the issue of registrability of
the copyright claim by entering an appearance within sixty days after such
service, but the Register's failure to become a party shall not deprive the court of
jurisdiction to determine that issue.
17 U.S.C. § 411(a).
Interpreting this language, courts have divided over what is required to show “registration
of the copyright claim . . . made in accordance” with Title 17. Id. The United States Courts of
Appeals for the Tenth and Eleventh Circuits, along with district courts in Maryland and
elsewhere, have found that the U.S. Copyright Office’s grant or denial of registration to a
copyright claim is a precondition for suit. See, e.g., La Resolana Architects, PA v. Clay Realtors
Angel Fire, 416 F.3d 1195, 1202–04 (10th Cir. 2005); M.G.B. Homes, Inc. v. Ameron Homes,
Inc., 903 F.2d 1486, 1489 (11th Cir. 1990), abrogated in part on other grounds by Reed Elsevier,
559 U.S. at 170; Mays and Assocs., Inc. v. Euler, 370 F. Supp. 2d 362, 368–370 (D. Md. 2005).
Under this Registration Approach, courts have reasoned that the requirements for registration of
a copyright are contained in sections 408 and 410 of the Copyright Act, and that the language of
these provisions suggests that registration must include the final decision of the U.S. Copyright
Office over whether to grant or deny registration.
23
The Tenth Circuit reasoned:
Registration is satisfied by completing the following steps:
a. application and payment of fee, § 408;
b. deposit of a copy of the copyrightable material, § 408;
c. examination by the Register of Copyrights, § 410;
d. registration (or refusal to register) by the Register, § 410;
e. issuance of certificate of registration, § 410.
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.
La Resolana Architects, 416 F.3d at 1200. The Tenth Circuit also cited section 410(a), which
provides that the Register of Copyrights (“Register”) “shall register the claim and issue to the
applicant a certificate of registration,” but only “after examination.” Id. at 1201. Likewise,
section 410(b) states that the Register “shall refuse registration” in certain circumstances. Id.
Finally, section 408 notes that “the owner of copyright . . . may obtain registration of the
copyright claim by delivering to the Copyright Office the deposit specified by this section,
together with the application and fee specified by sections 409 and 708.” Id.
In addition to this statutory analysis, other courts have expressed hesitation to
“prematurely . . . ‘prejudge’ a determination to be made by the Copyright Office,” over which
the Copyright Office exercises significant expertise. Mays & Associates, Inc. v. Euler, 370 F.
Supp. 2d 362, 368–70 (D. Md. 2005).
The United States Courts of Appeals for the Fifth, Seventh, Eighth, and Ninth Circuits,
along with district courts in North Carolina, the Eastern District of Virginia, and elsewhere, have
found that a litigant’s completed application for a copyright sufficiently evinces “registration”
under 17 U.S.C. § 411(a). See, e.g., Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612,
615–21 (9th Cir. 2010); Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006); Chi.
24
Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003); Apple Barrel Prods., Inc. v.
Beard, 730 F.2d 384, 386–87 (5th Cir. 1984); Phoenix Renovation Corp. v. Rodriguez, 403 F.
Supp. 2d 510, 514 (E.D. Va. 2005) (citing 17 U.S.C. § 408(a)); Iconbazaar, L.L.C. v. America
Online, Inc., 308 F. Supp. 2d 630, 634 (M.D.N.C. 2004); Secure Servs. Tech., Inc. v. Time &
Space Processing Inc., 722 F. Supp. 1354, 1363–64 (E.D. Va. 1989). A litigant may prove
registration under this Application Approach by showing payment of the required fee, deposit of
the work in question, and receipt by the Copyright Office of a registration application.” Apple
Barrel Prods., 730 F.2d at 386–87.
Courts using the Application Approach read section 408(a) “to mean that a registration
occurs at the time a work's owner deposits a proper application with the Copyright Office,” when
it says that “the owner of copyright or of any exclusive right in the work may obtain registration
of the copyright claim by delivering to the Copyright Office the deposit specified by this section,
together with the application and fee specified by sections 409 and 708.” Phoenix, 403 F. Supp.
2d at 514 (citing 17 U.S.C. § 408(a)). Section 410(d)’s statement that “[t]he effective date of a
copyright registration is the day on which an application, deposit, and fee, which are later
determined . . . to be acceptable for registration, have all been received in the Copyright Office”
is taken to mean that registration is “complete upon application,” not just that registration
certificates are backdated. Id. (citing 7 U.S.C. § 410(d)).
Finally, even if the statutory scheme is ambiguous about what constitutes “registration”
under § 411(a), many courts reason that the Application Approach better comports with policy
concerns and Congress’ purpose in passing the Copyright Act. First, if a court waited for the
Copyright Office to issue or deny registration, “the owner of a copyright would be left in legal
limbo” in the meantime, which could pose a significant delay and risk of copyright dilution by an
25
infringer. Id. at 414–15; Iconbazaar, 308 F. Supp. 2d at 634. Second, even waiting for the
Copyright Office would not necessarily defer to its expertise, because “the owner may bring an
infringement suit even after the Copyright Office denies his or her application.” Phoenix
Renovation, 403 F. Supp. at 515; Iconbazaar, 308 F. Supp. 2d at 634. See also Cosmetic Ideas,
606 F.3d at 615–21. Although copyrights are backdated to the date of completed application,
many courts have found that allowing the Copyright Office to first exercise its expertise should
not warrant delaying litigation while the alleged infringer may continue to dilute the copyright.
Phoenix Renovation, 403 F. Supp. at 515; Iconbazaar, 308 F. Supp. 2d at 634; Cosmetic Ideas,
606 F.3d at 615–21.
The Fourth Circuit has not interpreted this exact issue. In a case concerning whether the
Register of Copyrights has the power to refuse to register a proposed work of art, the Fourth
Circuit found that the Register indeed had discretion over registration – he was not limited to the
power to receive, deposit, and issue a registration certificate. Eltra Corp. v. Ringer, 579 F.2d
294, 299 (4th Cir. 1978). The pertinent discussion occurred in a footnote, where the court in
dicta noted that filing requirements had changed between the 1909 Copyright Act and the 1976
Amendments. Therefore, the plaintiff no longer needed to file a mandamus upon the Register’s
denial of a registration certificate. Id. at 296 n.4. Instead, the 1976 Amendments to the
Copyright Act had “eliminate[d] any need to secure registration as a prerequisite to an
infringement suit and authorize[ation] of suit for infringement.” Id. So instead of filing a
mandamus, a party could sue in federal court “so long as the Register is notified of the
litigation,” even if the Register had denied the copyright claim. Id.
In agreement with the Fifth, Seventh, Eighth, and Ninth Circuits, and with district courts
in Virginia and North Carolina, I find that the Application Approach represents a better reading
26
of the provisions of the Copyright Act at issue, and that it better effectuates the policies Congress
meant to promote through that Act. Therefore, I will apply the Application Approach to
determine whether Plaintiff has satisfied the preconditions to filing a copyright suit in this Court.
2. Plaintiff’s Amended Complaint and Response
In his response to the Motion, Plaintiff submitted emails confirming that he submitted
and paid for two copyright applications. Under the Application Approach, a litigant must show
payment of the required fee, deposit of the work in question, and receipt by the Copyright Office
of a registration application. Apple Barrel Prods., 730 F.2d at 386–87. Plaintiff’s response
purports to show that the U.S. Copyright Office received his complete applications for
copyrights over certain works on October 14, 2013. See Resp. to Mot. to Dismiss, Ex. A. His
response also shows that he submitted payment for two titles. Although he has only shown that
he deposited one of the works, the copies of his applications that Defendant submitted show that
Plaintiff submitted two transcripts that correspond with his confirmed applications. Compare
Resp. to Mot., Ex. A, at 3–4 (confirming receipt of “application and payment” for the works
entitled “Training Session: What You Need to Know About Islam—Base Theater,” assigned
number “1-100652651,” and “Training Session: What You Need to Know About Islam—OClub,” assigned number “1-1006532048.”), with First Supplement to Record, at 1, 23 (reporting
“a true representation of the information submitted to the Copyright Office in association with
the electronic application for registration of material identified as TRAINING SESSION:
WHAT YOU NEED TO KNOW ABOUT ISLAMAC BASE THEATER service number SR 11006528651,” and “TRAINING SESSION: WHAT YOU NEED TO KNOW ABOUT
ISLAMAC O-CLUB service number SR 1-1006532048.”). Plaintiff confirmed during the
27
hearing that the “applications that Defendant submitted and [his] e-mails correspond to the
[C]ount [O]ne [V]ideo.” Hearing Tr. at 30, Apr. 30, 2014 (docket no. 64).
It is uncontested that Plaintiff submitted applications to the U.S. Copyright Office for two
works. According to Defendant, the work entitled, “Training Session: What You Need to Know
About Islam—O-Club” corresponds to the Count One Video he posted in full on YouTube.com.
Mot. at 4–5. Plaintiff has not contested this assertion, and has therefore conceded it. 17 See
Kinetic Concepts, 2010 WL 1667285, at *8–9. Plaintiff and Defendant’s submissions show that
Plaintiff paid the required fee, deposited the work relating to the Count One Video, and that
Copyright Office received his registration application. I adopt the application approach and find
that Plaintiff has satisfied the preconditions for filing a copyright suit concerning the Count One
Video. Plaintiff’s counsel has conceded that Plaintiff never applied for a copyright over the
Count Two Video. Under either approach, Plaintiff has not satisfied the prerequisites for filing a
copyright suit concerning the Count Two Video, and I therefore dismiss Count Two.
D. Fair Use
Common law doctrine has long safeguarded the “fair use” of material otherwise protected
under the Copyright Act. In 1976, Congress codified this doctrine in 17 U.S.C. § 107, but courts
have continued to rely on case law to flesh out the contours of the fair use doctrine. See Bouchat
I, 619 F.3d 301, 307–08 (4th Cir. 2010) (“Congress meant § 107 to restate the present judicial
doctrine of fair use . . . and intended that the courts continue the common-law tradition of fairuse adjudication.” (quoting Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 576 (1994))).
Section 107 provides that, notwithstanding section 106,
17
Even if the Count One Video corresponds with the other included application, the two contain sufficiently similar
content that the analysis would remain the same. Both concern presentations in which Plaintiff discussed his
background and used that proffered expertise to discuss Islamic religion and culture.
28
the fair use of a copyrighted work, including such use by reproduction in copies
or phonorecords or by any other means specified by that section, for purposes
such as criticism, comment, news reporting, teaching (including multiple copies
for classroom use), scholarship, or research, is not an infringement of copyright.
In determining whether the use made of a work in any particular case is a fair use
the factors to be considered shall include—
(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.
The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.
17 U.S.C. § 107. When considering whether an alleged infringement is instead a fair use, courts
should weigh the results of each factor together, in light of the purposes of copyright.” Bouchat
I, 619 F.3d at 307–08.
1. The Purpose and Character of the Use
The purpose and character of a given use weigh heavily in the fair use analysis. A use
more likely qualifies as fair if a work is used for the purpose of criticism or comment, two of the
enumerated fair use exceptions in § 107. Id. To fall within this statutory language, an alleged
infringer must also show the use was “transformative,” or “one that employs the copyrighted
work in a different manner or for a different purpose from the original, thus transforming it.” Id.
at 308–09. This protection for transformative uses reflects “the ‘considerable latitude for
scholarship and comment’ secured by the fair use doctrine,” in order to “protect[] the core value
of free expression from excessive litigation and undue restriction.” Bouchat v. Baltimore Ravens
29
Ltd. P'ship, 737 F.3d 932, 944 (4th Cir. 2013) [hereinafter “Bouchat II”] (citing Eldred v.
Ashcroft, 537 U.S. 186, 219 (2003)).
As for the use’s character, a court must consider “whether [the] use is of a commercial
nature or is for nonprofit educational purposes.” Bouchat I, 619 F.3d at 310 (quoting 17 U.S.C.
§ 107(1)) (internal quotation marks omitted). “The crux of the profit/nonprofit distinction is not
whether the sole motive of the use is monetary gain but whether the user stands to profit from
exploitation of the copyrighted material without paying the customary price.” Id. at 310–11
(emphasis added).
The evidence before the Court in the instant case shows that the purpose and character of
Defendant’s use of Plaintiff’s videotaped speech weigh in favor of finding a fair use.
Furthermore, even if Plaintiff were able to discover and submit the evidence he proposes, the
purpose and character of the use would still weigh in favor of fair use. Defendant has submitted
a sworn declaration that he posted the Count One Video in February 2012 for the purpose of
making “religiously based criticism against a public figure on a matter of public concern . . .
based on [his] sincerely held religious beliefs” that “it is morally wrong to lie, and especially
wrong to lie in a church and to U.S. Marines.” Mot., Ex. A, Autry Decl. ¶¶ 19–21, 40.
Defendant attended Liberty University’s “seminary while Dr. Caner was Dean” and “[w]hen Dr.
Caner’s misrepresentations became public, I desired to expose Dr. Caner, a public figure, for his
dishonesty,” especially after he continued to deny that he had made misrepresentations. Mot.,
Ex. A, Autry Decl. ¶¶ 21, 22. Plaintiff has essentially conceded that Defendant posted the Count
One Video for the purpose of criticism, although he questions whether Defendant “would even
be qualified to comment as his motivation is more that of a former employee,” and thinks that “if
30
the motive is purely to be destructive,” such posting qualifies as “cyber terrorism,” that “is
different than cyber criticism.” Hearing Tr. at 9, 11, 14, Apr. 30, 2014 (docket no. 64).
Clearly, Defendant posted the Count One Video for the transformative purpose of
criticizing Plaintiff. He provided links to the full Count One Video in blog posts that overtly
contrasted Plaintiff’s statements in the videos with statements Plaintiff had made in other
speeches and writings. Mot., Ex. A, Autry Decl. ¶¶ 23–24. Defendant transformatively used a
video of Plaintiff’s presentation to the Marines, not to disseminate or profit from its message
about Plaintiff’s background in Islam, but to “expose” contradictions and “dishonesty” in the
testimony of a well-known evangelist and seminary dean. Id. at 21, 22. See, e.g., Ascend Health
Corp. v. Wells, No. 4:12-CV-00083-BR, 2013 WL 1010589, at *12–14 (E.D.N.C. Mar. 14,
2013) (finding that posting photos of a psychiatric facility on a blog with critical comments
weighed in favor of fair use, especially where there was no indication the blogger profited from
her postings); A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 639 (4th Cir. 2009)
(“The use of a copyrighted work need not alter or augment the work to be transformative in
nature . . . . [T]he fact that there was no substantive alteration to the works does not preclude the
use from being transformative in nature.”). As Defendant implies, this criticism lies at the heart
of what fair use seeks to protect, in that it targets the allegedly inconsistent statements of a
person who has placed himself in the public spotlight through the very narratives now under fire.
I must also consider “the character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1). However,
even commercial and for-profit uses are allowed as fair uses if they are transformative critical,
historical, or educational uses, among others. 17 U.S.C. § 107; New Era Publications Int'l, ApS
v. Henry Holt & Co., Inc., 695 F. Supp. 1493, 1506–07 (S.D.N.Y. 1988) (noting that profit does
31
not weigh against fair use, as practically all publishers stand to profit from critical or educational
works) aff'd, 873 F.2d 576 (2d Cir. 1989). Defendant’s sworn declaration states that he “did not
post the videos to make money and believed that the production constituted fair use,” and that he
has, to the best of his knowledge, never experienced “any financial benefit” from posting the
videos on YouTube. Mot., Ex. A, Autry Decl. ¶¶ 25, 26. During the hearing, Plaintiff suggested
that he thinks discovery might uncover some profit made by Defendant from these postings.
Hearing Tr. at 20, Apr. 30, 2014 (docket no. 64) (“we don’t know, for example, . . . if, . . .
[Defendant] isin any way commercially making money off of this. We’ve been told that there
may be some lectures or speeches or other things.”). Bloggers sometimes profit from their posts
through advertisements or other revenue, just as publishers profit from book reviews and other
critiques. Even if Plaintiff showed that Defendant wished to profit from criticizing Plaintiff, or
that he did profit from his blog posts containing the Count One Video, the transformative, critical
use of the video still receives fair use protection. See New Era Publications, 695 F. Supp. at
1506–07; Bouchat I, 619 F.3d at 310–11.
During the hearing on this Motion, Plaintiff also argued that Defendant’s purposes should
not fit within the fair use exception because he expects to uncover evidence through discovery
that Defendant is a disgruntled “former employee” of Plaintiff who had been fired. See Hearing
Tr. at 9, 21 Apr. 30, 2014 (docket no. 64). According to Plaintiff, Defendant had once been
“fully supportive of [Plaintiff] and his message and his organization” and after being
“terminated,” sought to persecute Plaintiff as a “cyber terrorist” through “vindictive[ly]” posting
the Count One Video and using it to criticize Plaintiff. Id. at 9, 14, 16, 21. Even if Defendant
32
discovered and admitted the evidence he seeks, 18 it would not weigh against Plaintiff in the fair
use analysis.
Plaintiff argues, as usual without citation, that the purpose of a use should account for
any animus an alleged infringer bears toward the plaintiff. Generously interpreted, Plaintiff may
be misconstruing case law finding that courts should account for the bad faith of an infringer
who grafts from another’s work for their own profit. See Harper & Row Publishers, Inc. v.
Nation Enterprises, 471 U.S. 539, 562–63 (1985) (reasoning that fair use “distinguishes between
a true scholar and a chiseler who infringes a work for personal profit,” presupposing “good faith
and fair dealing” such that the analysis should consider the “propriety of the defendant’s
conduct” and the defendant’s intent (internal quotation marks omitted)). Indeed, copyright law
focuses most intensely on whether the purpose of the use is to “exploit[] the copyright material
without paying the customary price.” Bouchat I, 619 F.3d at 310–11. Many speakers who
criticize others using copyrighted works may be motivated to do so based on dislike or distrust of
the object of their criticism. If that were a barrier to free speech, fair use would offer little
protection, and the analysis would delve courts into a complex and highly subjective inquiry
about the motivations and relationships between parties.
Instead, the analysis properly focuses on preventing the unscrupulous appropriation of
another’s work for personal profit. “To enjoin [the publication of criticism] . . . would merely be
allowing a doctrine designed to protect an artist’s commercial rights to be perverted into the
service of suppression of important critical or historical inquiry.” New Era Publications Int'l,
ApS v. Henry Holt & Co., Inc., 695 F. Supp. 1493, 1502–03 (S.D.N.Y. 1988) aff'd, 873 F.2d 576
(2d Cir. 1989).
18
Although Defendant submitted a Second Motion to Supplement the Record with Defendant’s testimony on these
issues, I need not and do not consider that Motion or what it contains in deciding this Motion.
33
The court in New Era emphasized that the fair use doctrine protects a biographer in
publishing quotations from the early letters of a “religious leader . . . renowned for his selfless
kindness, liberality of spirit and sympathy for the sufferings of others” to show “greed, callous
indifference, and . . . racial and religious bigotry” under the fair use doctrine. Id. Likewise, it
protects a journalist in publishing the old letters of a politician who “campaigns on his
decorations for wartime bravery and his strong law and order position” when those letters “seem
to acknowledge that he did not participate in combat, was mistakenly decorated and spent his
military career as a black marketeer in association with hoodlums.” Id. See also NXIVM Corp.
v. Ross Inst., 364 F.3d 471, 477–79 (2d Cir. 2004) (finding transformative, critical use weighed
in favor of fair use when competitor posted portions of a copyrighted manual online to analyze
and criticize those materials, and finding even if competitor posted in bad faith with knowledge
the manual was illegally obtained, transformative use outweighed that bad faith); Hustler
Magazine Inc. v. Moral Majority Inc., 796 F.2d 1148, 1151–52 (9th Cir. 1986) (finding fair use
even though religious leader had dual purposes of profiting and criticizing in sending
copyrighted work to his supporters along with solicitations for money).
Even considering the evidence Plaintiff seeks in discovery, there is simply no indication
Defendant engaged in the type of appropriation the Copyright Act seeks to prevent. 19 Instead, all
the evidence proposed and submitted by both parties suggests Plaintiff has filed this suit to
suppress legitimate criticism of alleged contradictions in the narrative that supported his rise to
prominence. The purpose and character of Defendant’s use weigh strongly in favor of finding
fair use.
2. The Nature of the Copyrighted Work
19
For this reason and others described herein, I find it proper to consider the Motion on summary judgment and
deny Plaintiff any further discovery.
34
“The scope of fair use is greater when ‘informational’ as opposed to more ‘creative’
works are involved.” Hustler, 796 F.2d at 1153–54 (quoting Harper & Row, 471 U.S. at 563, as
saying “The law generally recognizes a greater need to disseminate factual works than works of
fiction or fantasy.”); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 455 n. 40
(1984) (“Copying a news broadcast may have a stronger claim to fair use than copying a motion
picture.”). The transcript Plaintiff submitted to the Copyright Office with his application for the
Count One Video shows his presentation therein was clearly intended to be informational. In the
transcript, Plaintiff answers questions about Islam and jihad, and purports to speak about how
Muslims abroad view Americans, based on his upbringing in that environment. I find the Count
One Video is an informational work, and is therefore entitled to less protection. This factor
weighs in favor of finding fair use.
3. The Amount and Substantiality of the Portion Used
Although reproducing a work in full “‘militat[es] against a finding of fair use,’” such use
“‘does not preclude it.’” Bouchat II, 737 F.3d at 942–43 (quoting Sony Corp., 464 U.S. at 449–
50). “Ultimately, ‘the extent of permissible copying varies with the purpose and character of the
use.” Id. When an alleged infringer has “no choice but to [use the whole work] in order to fulfill
[a] ‘legitimate transformative purpose,’ . . . the transformativeness of the use and the character of
[the] work” lead courts to “give very little weight to this factor.” Id. Indeed, “it would be
senseless to permit the [alleged infringer] to use the [work at issue] for factual, historical
purposes, but permit [the alleged infringer] to show only a half, or two-thirds of it.” Id.
Plaintiff noted during the hearing on this Motion that Defendant used the entirety of a
presentation Plaintiff made to the Marines in the Count One Video. Hearing Tr. at 10, Apr. 30,
2014 (docket no. 64) (“They pretty much conceded number three, the amount and substantiality
35
of the portion. They used the whole thing.”). Defendant claims he did so to provide more
forceful criticism, so he could point out contradictions without readers questioning whether he
had taken Plaintiff’s statements out of context. Mot., Ex. A, Autry Decl. at ¶ 24. I need not rely
on Defendant’s explanation to find that a criticism involving contradictory statements may
necessitate use of an entire work. Just as the Fourth Circuit found it was proper for the NFL to
use an entire copyrighted logo for historical and factual purposes, and that the transformative
nature of the use outweighed the amount of the work used, I find the transformative nature of
Defendant’s use outweighs the fact that he used the entire work in the Count One Video.
Although this factor weighs slightly against fair use, I find it would be senseless to allow
Defendant to criticize Plaintiff, but only less effectively, by using portions of the video. See
Bouchat II, 737 F.3d at 942–43. I give very little weight to this factor. Id.
4. The Effect of the Use on the Work’s Value or Market
The fourth and final factor is “undoubtedly the single most important element of fair
use.” Bouchat I, 619 F.3d at 312. Under this factor, a court is
required to determine whether the defendants' [use of the work] would materially
impair the marketability of the work and whether it would act as a market
substitute for it. A transformative use renders market substitution less likely and
market harm more difficult to infer.
Bouchat II, 737 F.3d at 943 (internal quotation marks and citations omitted) (emphasis added).
To negate fair use under this factor, “one need only show that if the challenged use should
become widespread, it would adversely affect the potential market for the copyrighted work.”
Id.
Forceful criticism that has the potential to destroy the market for a copyrighted work does
not prevent a finding of fair use. See, e.g., Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
591–92 (1994) (noting that because “parody may quite legitimately aim at garroting the original,
36
destroying it commercially as well as artistically, the role of the courts is to distinguish between
biting criticism that merely suppresses demand and copyright infringement which usurps it.”
(internal quotation marks and citations omitted)); NXIVM, 364 F.3d at 482 (“That the fair use,
being transformative, might well harm, or even destroy, the market for the original is of no
concern to us so long as the harm stems from the force of the criticism offered.”); New Era
Publications, 695 F. Supp. at 1506–07.
Here, Defendant transformatively used a video of Plaintiff’s presentation to the Marines
to criticize Plaintiff’s life story and credentials. This transformative use “renders market
substitution less likely and market harm more difficult to infer,” mostly because transformative
uses are less likely to reside at the core of copyright protection, with thefts of others’ original
works. See Bouchat II, 737 F.3d at 943. Hence, it has long been established that fair use
protects the transformative use of a work to criticize, even when the parody or criticism is so
forceful that it may eliminate the market for the object of the criticism. To do otherwise would
stifle free-flowing debate and criticism in the name of protecting original works and creative
labors, taking copyright protections far beyond their intended bounds.
For these reasons, Plaintiff’s request to obtain more discovery on the market effect of
Defendant’s alleged infringement would not uncover any disputes of material fact that could
change the outcome of this Motion. Plaintiff speculated that posting the entire presentation from
the Count One Video online could prevent groups from asking Plaintiff to speak at their
gatherings, because they would already have his speech. These assertions do not change the
analysis because Defendant’s use was critical and transformative. Defendant’s biting criticism
might suppress demand for Plaintiff’s sermons and lectures, and it might well harm, or even
destroy the market for Plaintiff and his testimony. Campbell, 510 U.S. at 591–92; NXIVM, 364
37
F.3d at 482. But Defendant’s use has the potential to suppress demand through forceful criticism
rather than the potential to usurp demand or profit by using Plaintiff’s original work in a similar
fashion. Campbell, 510 U.S. at 591–92. Therefore, the effect of the alleged infringement on the
value of Plaintiff’s work, or on the market for that work, does not weigh against finding fair use.
The Copyright Act does not protect Plaintiff against the type of market harm that may potentially
occur from another’s forceful criticism of his narrative. Bouchat II, 737 F.3d at 943.
5. Conclusion
In sum, I find that the § 107 factors weigh strongly in favor of finding that Defendant’s
use of the Count One Video constitutes fair use. The purpose and character of the use, including
whether that use was for commercial purposes, weigh in favor of fair use. Defendant’s use was
transformative, for the purposes of criticism, and even if he profited from the use, the purpose
and character of his critical use of the Count One Video weigh in favor of fair use. The nature of
the copyrighted work is more factual than creative, and therefore it receives less protection under
the Copyright Act – this factor weighs in favor of finding a fair use. The amount and
substantiality of the portion used weighs slightly against fair use, as Defendant used the entire
work. However, this factor bears less weight for a transformative use, and courts have widely
recognized that transformative, critical uses often require using a work in its entirety. Finally,
damage to the potential market for or value of the work based on the use is difficult to infer, and
any damage that may occur is not the type the Copyright Act prohibits. Plaintiff cannot invoke a
law meant to prevent the free exploitation of original works, when Defendant has here
transformatively used Plaintiff’s work to criticize and challenge the factual narrative Plaintiff
presents therein. This factor does not weigh against finding fair use.
38
I find that the § 107 factors weigh in favor of finding that Defendant’s use of the Count
One Video was a fair use. Furthermore, I find that the facts Plaintiff seeks through further
discovery would not change this analysis or present any “genuine dispute as to any material
fact.” Fed. R. Civ. P. 56(a); Strag v. Bd. of Trs., Craven Cmty. Coll., 55 F.3d at 953; Hamilton,
807 F. Supp. 2d at 342. Even with the evidence Plaintiff seeks, and viewing that potential
evidence in the light most favorable to Plaintiff as the nonmoving party, no reasonable jury could
return a verdict for Plaintiff. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986);
JKC Holding Co. v. Washington Sports Ventures, Inc., 264 F.3d 459, 465 (4th Cir. 2001).
Therefore, I grant Defendant’s motion for summary judgment. Plaintiff can present no evidence
that Defendant has infringed any copyright protections or interests Plaintiff may possess, and I
will accordingly dismiss Plaintiff’s Amended Complaint.
E. Defendant’s Remaining Arguments
Defendant also argues that Plaintiff has no exclusive rights to the content the Count One
or Count Two Videos. Defendant claims Smathers obtained the Count One Video through a
FOIA request, 20 and that Defendant obtained the Count Two Video from Chad Jarrett, to whom
Plaintiff gave permission to use his interview and other video clips. In the alternative, Plaintiff
waived or gave others license to use these videos, Defendant argues, because he gave Jarrett
license to use his interview and presentations in the Count Two Video, and because he may have
20
“Case law analyzing the interaction between the Copyright Act and FOIA exemptions is sparse,” and all the case
law this Court could find deals only with whether the Copyright Act should prevent disclosure of certain materials
under FOIA. It appears that the United States government and courts reviewing FOIA disclosures conduct analyses
under the FOIA exemptions to disclosure, and sometimes account for Copyright Act protections in determining
whether releasing material might affect the market in question or constitute fair use. See, e.g., Hooker v. U.S. Dep't
of Health & Human Servs., 887 F. Supp. 2d 40, 61 & n.18 (D.D.C. 2012) (finding plaintiff conceded that defendants
properly withheld FOIA-requested documents due to Copyright Act protections, and discussing case law on the
intersection of FOIA and the Copyright Act); Renee G. Rabinowitz, The Applicability of the Freedom of Information
Act's Disclosure Requirements to Intellectual Property, 57 Notre Dame Law. 561, 572–79 (1982) (discussing how
courts balance FOIA’s disclosure and transparency goals with copyright protections). Since the fair use analysis
disposes of this case and this question remains unsettled, I do not address Defendant’s FOIA arguments here.
39
given the U.S. Government unlimited rights to the Count One Video. I need not address the
Count Two Video, as I have found that Plaintiff failed to satisfy the preconditions to filing a
copyright infringement suit based on that video. I need not address Defendant’s remaining
arguments concerning the Count One Video, as I have found he has a complete defense to
Plaintiff’s infringement claim through 17 U.S.C. § 107 and the doctrine of fair use.
F. Autry’s Request for Attorney’s Fees Under 17 U.S.C. § 505
Autry has requested attorney’s fees and costs under 17 U.S.C. § 505. These are awarded
at the discretion of the district court, but fees may not be awarded except to the prevailing party.
The Fourth Circuit has confirmed that “[p]revailing plaintiffs and prevailing defendants are to be
treated alike.” O'Well Novelty Co. v. Offenbacher, Inc., 225 F.3d 655, at *7 (4th Cir. 2000)
(citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 533–34 (1994)). “In determining whether to
award attorneys' fees to a prevailing party under § 505, a district court should consider the
following factors: (1) the motivation of the parties, (2) the objective reasonableness of the legal
and factual positions advanced, (3) the need in particular circumstances to advance
considerations of compensation and deterrence, and (4) any other relevant factor presented.” Id.
(citing Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503, 505 (4th Cir. 1996)).
I decline to address attorney’s fees at this stage. If, after the filing of this memorandum
opinion and order, Defendant wishes to seek attorney’s fees under § 505, he should file a motion
to that effect, addressing the Diamond Star factors and enumerating the attorney’s fees and costs
he requests. If he files such a motion, Plaintiff will have fourteen (14) days to respond, and
Defendant seven (7) days to reply to that response, before I will consider it.
40
V. CONCLUSION
For the reasons stated, I will CONSIDER Defendant’s Motion (docket no. 28) as a
Motion for summary judgment, and I will GRANT that Motion. I DENY Defendant’s Second
Motion to Supplement the Record (docket no. 63), and I will not consider his motion for
attorney’s fees and costs at this time.
It is so ORDERED.
14th
Entered this ________ day of May 2014.
41
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