IP Law Daily, COPYRIGHT—W.D. Mo.: Alleged infringement of ant photos by pest control company raised fact questions, (Apr 27, 2020)

By Pamela C. Maloney, J.D.

Whether a post-infringement license to use copyrighted ant photos applied retroactively and whether a pest control business could assert the safe use defense could not be resolved on dismissal motion.

Allegations that the posting of two photographs of ants on a pest control company’s website infringed the photographer’s copyrights in those photos were sufficient to state a copyright infringement claim, a federal district court in Kansas City, Missouri, ruled denying the pest control company’s motion to dismiss. According to the court, the validity of the pest control company’s post-infringement license and its asserting of the fair use defense raised questions of fact that could not be resolved at this stage in the proceeding (Wild v. Rockwell Labs, Ltd., April 20, 2020, Ketchmark, R.).

A biologist and part-time photographer had created a portfolio of work that depicted entomology subjects such as ants, bees, wasps, and mosquitos. These photographs, which could be licensed on a national basis for a minimal fee of $1,000, had been used in magazines, books, and television programs. Rockwell Labs, Ltd. owned and operated a pest control business that it promoted through its website maggiesfarmproducts.com. Rockwell Labs allegedly had copied two of the photographer’s copyrighted works, one of a pharaoh ant and one of a pavement ant, and distributed it on their website. The photographer, who had not licensed either photo to Rockwell Labs, nor granted it permission to use them, notified the company of the infringement. After attempts to settle the dispute were unsuccessful, the photographer filed an infringement action against Rockwell Labs. Before the court was Rockwell Labs motion to dismiss for failure to state a claim.

Post-infringement licenses. Rockwell Labs argued that its purchase of two separate licenses for the photos in question two weeks before the infringement claim had been filed negated the photographer’s claim. However, the post-infringement license was outside the pleadings and the complaint, which expressly stated that Rockwell Labs had never licensed the photos or had permission to use them. Therefore, Rockwell Labs’ claim that those allegations were false simply raised a factual dispute that could not be considered on a motion to dismiss.

In addition, even if the district court could consider Rockwell Labs’ proffer of post-infringement licenses, it was not clear from the documents submitted that the licenses were both retroactive and in full satisfaction of the alleged prior infringement. Thus, the motion to dismiss on the basis of post-infringement licenses was denied.

Fair use. Rockwell Labs also asserted the fair use defense in support of its motion to dismiss, arguing that the company had used the photos "not so much for selling products, as for informing and educating the public about identifying and controlling various insects." The company also argued that only about $520 of product was purchased from its website during the relevant period, and that the parties operated in significantly different markets. The photographer countered that Rockwell Labs’ fair use defense raised issues that were outside the complaint, including the company’s purported intent in using the image and the amount of money derived from sales during the time they were using the image. The district court agreed that the fair use defense relied on facts that fell outside the complaint or other pleadings, and, as such, could not be resolved at this phase in the proceedings and without discovery. Furthermore, the court could not convert the motion into one for summary judgment. Thus, the motion to dismiss was denied on this basis as well.

Adequacy of complaint. Finally, the district court refused to grant the motion to dismiss on the ground that the photographer had failed to allege any facts that gave rise to a claim for personal liability against the owner of Rockwell Labs. Both parties agreed that an individual could be subject to vicarious liability if he or she had the right and ability to supervise the infringing activity and had a direct financial interest in that activity. The compliant, while not detailed or verbose, adequately stated that the named individual owned, controlled, and/or operated Rockwell Labs, that both defendants had infringed the works to promote the business, and that the defendants had performed the acts alleged in the course and scope of their business activities. Thus, the motion to dismiss for failure to state a claim against the owner of Rockwell Labs was denied.

This case is No. 4:19-CV-00919-W-RK.

Attorneys: Nathan Kyle Bruns (Ross & Voytas, LLC) for Dr. Alexander L. Wild. James J. Kernell (Erickson Kernell IP, LLC) for Rockwell Labs, Ltd. d/b/a Maggie's Farm and Dr. Cisse Spragins.

Companies: Rockwell Labs, Ltd. d/b/a Maggie's Farm

Cases: Copyright GCNNews MissouriNews