IP Law Daily, COPYRIGHT—C.D. Cal.: Photographer can proceed with infringement, DMCA claims against website operator, (Jul 12, 2018)

By Robert B. Barnett Jr., J.D.

A photographer’s copyright infringement claim against Chive Media Group, LLC, which allegedly published his photographs on its website without his permission, survived a motion to dismiss where the complaint established both that he had a valid copyright in the photographs and that Chive had ready access to the copyrighted work, a California federal district court has ruled. At the motion to dismiss stage, a party asserting copyright infringement is not required to plead specific acts of infringing conduct, especially where only one defendant exists. The court also concluded that the photographer’s Digital Millennium Copyright Act (DMCA) claim was sufficiently pleaded where the original photographs contained a watermark, the watermark had apparently been removed from the copies, and the photographer gave no consent for either use of the photos or removal of the watermarks. Lastly, the court dismissed without prejudice the photographer’s claim for vicarious or contributory copyright infringement because the photographer failed to identify the necessary third party that would have acted with Chive to infringe the copyright (McGucken v. Chive Media Group, LLC, July 11, 2018, Lew, R.).

After a photographer found his photographs reproduced on a website without his permission, he filed suit in California federal court against Chive, the owner and operator of the website, for (1) copyright infringement, (2) vicarious and/or contributory copyright infringement, and (3) violations of the DMCA. Chive filed a motion to dismiss all three claims.

Copyright infringement. To survive the motion to dismiss, the photographer’s copyright infringement claim needed to establish (1) ownership of the copyright and (2) a copying of the work (Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869, 876 (9th Cir. 2005)). In his complaint, the photographer asserted that he had registered the photographs with the Copyright Office. That is sufficient, the court said, for pleading purposes. He is not required to produce copies of each registration for each photograph. In this case, the photographer included five separate copyright registrations with his complaint, which the court said served as evidence that he at least registered some of the photographs. As for establishing a copying, the photographer pleaded that his photographs were generally available online and on the photographer’s website. The complaint set forth the urls where the photographs appeared. That was sufficient, the court said, to establish that a reasonable possibility existed that Chive had access to the photographs. The complaint also asserted that the copies on Chive’s website were identical, and the photographer produced copies from both locations to support that claim. Having established both Chive’s access to the photographs and the fact that the photographs were substantially similar, the photographer satisfied his pleading requirements for pleading that a copying had occurred.

Information and belief. One of Chive’s principal arguments in support of its efforts to dismiss all three claims was that the complaint failed to satisfy the Ninth Circuit’s pleading standards because the claims were based on "information and belief" rather than on the photographer’s actual knowledge (that is, the claims failed the "plausibility" standard established in Ashcroft v. Iqbal, 566 U.S. 662 (2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)). But information and belief, the court said, is sufficient where the facts are peculiarly within the defendant’s possession or control. In any event, in this complaint, the photographer produced side-by-side comparisons of the works and other facts to support his claims. As a result, the court said, the argument that the allegations were based only on information and belief did not justify dismissal. Furthermore, at the motion to dismiss stage, the photographer is not required to show any acts of infringement that Chive allegedly committed. This is especially true where, as here, only one defendant is named. The facts set forth in the complaint placed Chive on notice of the claims being asserted and the grounds upon which those claims rested. Nothing more is required of the photographer at the pleading stage.

Vicarious infringement. The court did, however, grant Chive’s motion to dismiss the claim for vicarious or contributory copyright infringement. Such a claim asserts, in effect, that Chive contributed or aided some third party’s infringement of the photographer’s copyright. In the complaint, however, no such third party was ever identified. In the absence of the identity of any third party, the claim fails, and the court agreed to dismiss that claim without prejudice.

DMCA. The same "information and belief" argument that failed for copyright infringement also failed for the DMCA claim. The court noted that the photographs attached as exhibits to the complaint showed that they contained a watermark, which satisfied the DMCA’s requirement that the protected work contain "copyright management information" (as defined in 17 U.S.C. §1202(c)). In addition, the photographer’s complaint sufficiently pleaded that Chive intentionally removed the watermarks before re-publishing the photographs. Side-by-side comparisons establishing that the photographs were identical other than the removal of the watermark gave rise to a compelling inference that Chive copied the photographs. Because the photographer gave no consent for either the reuse of the photograph or the removal of the watermark, the photographer sufficiently pleaded a claim under the DMCA.

Damages. The court also granted Chive’s motion to dismiss the photographer’s claim for statutory damages and attorney fees for failure to supply (1) the date the alleged infringement began, (2) the date the copyrights were registered, and (3) the date the photographs were first published on Chive’s website as required by the statute (17 U.S.C. §412). Because the complaint failed to plead those facts, any claim for statutory damages and attorney fees was dismissed without prejudice.

Leave to amend. The court granted the photographer leave of 21 days to amend the complaint to add the third party under the vicarious claim and to add the necessary dates for purposes of recovering damages.

The court, therefore, granted the motion to dismiss in part and denied it in part.

This case is No. 2:18-cv-01612-RSWL-KS.

Attorneys: Justin M. Gomes (Doniger Burroughs) for Elliot McGucken. Kimberly Diane Howatt (Gordon Rees Scully Mansukhani, LLP) for Chive Media Group, LLC.

Companies: Chive Media Group, LLC

Cases: Copyright TechnologyInternet CaliforniaNews