IP Law Daily, COPYRIGHT—N.D. Cal.: Photographer’s new theories of secondary liability against Meta fail to pass muster, (May 25, 2023)

By Patricia K. Ruiz, J.D.

The court dismissed the photographer’s claims for secondary copyright infringement, DMCA, and Lanham Act, leaving only direct infringement claims.

The federal district court in San Francisco has dismissed claims for secondary copyright infringement, as well as claims under the Lanham Act and the Digital Millennium Copyright Act (DMCA), brought by a photographer against Meta Platforms, Inc. The court determined that the photographer failed to cure the deficiencies found in his first amended complaint, despite asserting new factual basis of infringement caused by Facebook’s “check-in” and “prefetching” functionalities (Logan v. Meta Platforms, Inc., May 24, 2023, Breyer, C.).

First amended complaint. A photographer specializing in aerial and landscape photography alleged he is the owner of the copyright for 258 photographs that have been unlawfully saved on Facebook servers without his permissions. The photographer published his work on Wikimedia Commons, making it available under a Creative Commons license, which dictates that third parties may “reproduce, publicly display, and distribute” the work, “subject to and limited by certain restrictions both under the license terms and according[] to the licensor’s terms, including attribution of the author.”

The photographer’s first amended complaint (FAC) and the court’s prior order granting Meta’s first motion to dismiss focused on the photographer’s allegations related to Facebook’s “embedding” tool—that third parties embed content from Facebook users’ pages onto third-party websites that that Meta embeds content from other websites onto Facebook. Through this process, the photographer alleged that Facebook and third parties lifted his photographs from Wikimedia Commons and stripped the photos of all identifying information, including his attribution, contravening the Creative Commons license that governs third party use of the photographs.

The court held that the photographer failed to plead his secondary liability claims against Meta because he failed to make the threshold showing that there has been direct infringement by third parties. The court also dismissed his direct claims against Meta because he failed to plead his copyright registration in the photos at issue. Further, the court held the photographer could not plead a Lanham Act claim when he alleged only that Facebook misrepresented authorship of the photos, rather than misrepresenting their nature, characteristics, or qualities. Finally, the court dismissed the photographers DMCA claims, as Meta’s copyright tag at the bottom of each Facebook page did not plausibly plead false copyright management information (CMI) under 17 U.S.C. §1202(a), and Meta’s removal of the photographer’s CMI from his photos did not meet the double scienter requirement of §1202(b). The court allowed the photographer leave to amend each of his claims.

Before the court was Meta’s motion to dismiss the photographer’s second amended complaint (SAC). In this motion, Meta did not challenge the photographer’s direct infringement claims to the extent they were based on works registered with the Copyright Office. However, the court noted that to the extent that the photographer was repleading his claims pursuant to his earlier “embedding” theory, those claims were dismissed for the reasons outlined in the court’s prior order.

SAC’s new copyright infringement allegations. While some of the allegations in the SAC still discussed embedding, the photographer’s new allegations centered on Facebook’s “check-in” and “prefetching” functionalities, the court noted. The photographer alleged Facebook users can “check in” to a particular location, such as a city or town. When a Facebook user checks in somewhere, the user’s GPS data is transmitted to Facebook, which then displays to the user photos relevant to the location. When Facebook does this, the photographer alleged, his photographs are displayed from time to time as relevant to the check-in location. This process has resulted in thousands of instances of misappropriation by Facebook, according to the photographer.

Facebook also occasionally employs a process called “prefetching,” which allows Facebook to download mobile content before someone taps a link. This process is usually employed for mobile ads, allowing them to load more quickly. As a result, the content that is prefetched is cached locally on the user’s device for a short amount of time. The photographer alleged that this is how his photographs were transferred between Facebook and its users.

The photographer claimed that, as a result of the “check-in” and “prefetching” processes, Meta has incurred directly liability and secondary liability for copyright infringement.

Secondary copyright infringement. The court found that, because the photographer failed to plausibly plead that Meta’s prefetching and check-in functionalities caused Facebook users to store his photos on their devices, he failed to plead the direct infringement that must underlie any claim for secondary liability. In the FAC, the court found photographer failed to make the threshold showing that there has been direct infringement by third parties, as he only alleged users “can” save embedded photos onto their servers.

In the SAC, the photographer failed to plausibly plead that the prefetching functionality applied to his photographs, only citing an article from Meta’s Business Help Center titled “Understanding Prefetching and How Facebook Uses Prefetching,” which describes prefetching as a process wherein Facebook “download[s] mobile content before someone taps a link.” However, the “mobile content” discussed refers to third-party ads. The document does not indicate that Facebook prefetches content already on Facebook itself, such as the photographs. Even if it did, the document states that “images” are not “cached”—they are not among the content stored to user’s devices for a short amount of time. The document does not discuss the “check-in” feature at all, or even imply that the prefetching or check-in processes are at all linked, the court noted. The photographer did not provide any facts to render any connection between check-in and prefetching plausible, and the court declined to treat such conclusory allegations as true on a motion to dismiss. The court, therefore, dismissed the photographer’s secondary liability claims, finding he failed to plead any underlying direct infringement despite having been granted leave to amend to do so.

Lanham Act unfair competition claim. The photographer reasserted his claim for unfair competition under Section 43(a) of the Lanham Act claim under a different theory, alleging that by resizing and reconfiguring his photographs into thumbnails for location pages on Facebook, Meta altered the content of his photograms, an actionable misrepresentation under the Lanham Act. The court found the photographer pleaded no facts to show that a Facebook user is likely to be deceived by a cropped, resized, or reconfigured thumbnail on a Facebook page or that such deception, even if alleged, was material. Rejecting the photographer’s second attempt “to reconfigure his copyright claim under a trademark statute,” the court dismissed the photographer’s Lanham Act claim without leave to amend.

DMCA claim. The court also dismissed the photographer’s DMCA claim based on the unauthorized removal of his signature from the bottom corner of one of his photos when Facebook turned the photo into a thumbnail image. Finding that the photographer failed to plausibly plead that Meta intentionally removed or altered his copyright information form the photograph in question, the court dismissed the DMCA claim without leave to amend.

The Case is No. 22-cv-01847-CRB.

Attorneys: Lee Squitieri (Squitieri & Fearon LLP) for Don Ramey Logan. Allyson Roz Bennett (Morrison & Foerster LLP) for Meta Platforms, Inc. f/k/a Facebook Inc.

Companies: Meta Platforms, Inc. f/k/a Facebook Inc.

Cases: Copyright TechnologyInternet Trademark CaliforniaNews