Advanta-Star Automotive Research Corporation of America v. Reynolds Ford Inc

UNITED STATES DISTRICT COURT FOR THE

WESTERN DISTRICT OF OKLAHOMA

ADVANTA-STAR AUTOMOTIVE )

RESEARCH CORPORATION OF )

AMERICA, )

)

Plaintiff, )

)

v. ) Case No. CIV-19-912-G

)

REYNOLDS FORD, INC., )

)

Defendant. )

ORDER

Now before the Court is the Motion to Dismiss (Doc. No. 10) filed through counsel

by Defendant Reynolds Ford, Inc. Plaintiff Advanta-STAR Automotive Research

Corporation of America (“Advanta-STAR”) has responded in opposition (Doc. No. 20),

and Defendant has replied (Doc. No. 21). Having reviewed the parties’ submissions and

the relevant record, the Court makes its determination.

BACKGROUND

Plaintiff brings this action under the Copyright Act, 17 U.S.C. §§ 101 et seq.,

seeking injunctive relief and damages for the alleged infringement of its protected works.

Plaintiff claims that it holds valid copyrights to certain automobile reviews and other

automobile-related information that it sells or licenses to dealerships for educational and

sales purposes (the “Content”). See Compl. ¶¶ 8-11. According to Plaintiff, Defendant

placed Plaintiff’s Content on its webpages after intentionally modifying the Content to

conceal its source. See id. ¶¶ 15, 20. Plaintiff further contends that Defendant removed

Plaintiff’s notices of copyright ownership from the Content and replaced them with

copyright notices indicating its own ownership, in violation of Title 17, Section 1202 of

the United States Code. See id. ¶¶ 20, 33-35.

STANDARD OF DECISION

In analyzing a motion to dismiss under Rule 12(b)(6), the court “accept[s] as true

all well-pleaded factual allegations in the complaint and view[s] them in the light most

favorable to the plaintiff.” Burnett v. Mortg. Elec. Registration Sys., Inc., 706 F.3d 1231,

1235 (10th Cir. 2013). A complaint fails to state a claim on which relief may be granted

when it lacks factual allegations sufficient “to raise a right to relief above the speculative

level on the assumption that all the allegations in the complaint are true (even if doubtful

in fact).” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (footnote and citation

omitted); see Robbins v. Oklahoma, 519 F.3d 1242, 1247 (10th Cir. 2008) (“[T]o withstand

a motion to dismiss, a complaint must contain enough allegations of fact to state a claim to

relief that is plausible on its face.” (internal quotation marks omitted)). Bare legal

conclusions in a complaint are not entitled to the assumption of truth; “they must be

supported by factual allegations” to state a claim for relief. Ashcroft v. Iqbal, 556 U.S.

662, 679 (2009).

DISCUSSION

To establish copyright infringement, a plaintiff must show “(1) ownership of a valid

copyright, and (2) copying of constituent elements of the work that are original.” Savant

Homes, Inc. v. Collins, 809 F.3d 1133, 1138 (10th Cir. 2016) (internal quotation marks

omitted) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).

Defendant contends that Plaintiff’s copyright infringement claims are deficient in several

respects.

I. Identification of the Copyrights at Issue

Defendant first argues that Plaintiff failed to identify the protected works allegedly

infringed with the specificity necessary to provide Defendant with fair notice of its claim.

See Def.’s Mot. at 1-4; Def.’s Reply at 1-3. In its Complaint, Plaintiff described the

copyrighted materials as “detailed reviews and other information regarding automobiles

and their features.” Compl. ¶ 8. Plaintiff provided the registration numbers of the

copyrights at issue and attached to the Complaint copies of Defendant’s webpages that

allegedly infringe upon those copyrights. See id. ¶ 11 (“The Content is protected by U.S.

copyrights, including registration numbers TX 8-761-015, TX 8-760-971, TX 8-760-

975.”).

Defendant relies primarily on Marshall v. McConnell, No. Civ.A. 3:05-CV-1062L,

2006 WL 740081 (N.D. Tex. Mar. 23, 2006), and Palmer Kane LLC v. Scholastic Corp.,

No. 12 Civ. 3890(TPG), 2014 WL 1303135 (S.D.N.Y. Mar. 31, 2014), to suggest that

Plaintiff’s identification of its copyrights was deficient. Neither decision, however,

prescribes greater specificity than that supplied in Plaintiff’s Complaint. In Marshall, the

court found that the plaintiff’s “broad reference to ‘certain legal treatises and forms’ [was]

inadequate to give [the defendants] notice of the documents they purportedly infringed.”

Marshall, 2006 WL 740081 at *4. Unlike the present action, however, there was no

indication that the complaint included the copyright registration numbers of the infringed

works. In Palmer Kane, the court determined that the plaintiff had failed to adequately

allege the protected works at issue because the list of works provided with the complaint

was not exhaustive. See Palmer Kane LLC., 2014 WL 1303135, at *3. Contrary to the

plaintiff in Palmer Kane, however, Plaintiff attests that it “has predicated its copyright

infringement claim exclusively on the works identified in the Complaint, and has not

alleged that there are other, additional copyrighted works that [Defendant] infringed.” Pl.’s

Resp. at 6. The allegations in the Complaint, viewed in Plaintiff’s favor, do not contradict

this assertion.

Defendant also submits that to plausibly allege copyright infringement, Plaintiff was

required to attach the pertinent copyright registrations to the Complaint and state the first

dates of publication of the works at issue, rather than merely list the registration numbers

in the body of the Complaint. See Def.’s Mot. at 4 n.4 (citing Kindig It Design, Inc. v.

Creative Controls, Inc., 157 F. Supp. 3d 1167 (D. Utah 2016)). The Court disagrees that

the pleading standard requires the level of specificity that Plaintiff seeks. See MiraCorp,

Inc. v. Big Rig Down, LLC, No: 08-2673-KHV, 2009 WL 10688833, at *2 (D. Kan. Oct.

15, 2009) (rejecting argument that copyright infringement claim was deficient because the

complaint did not include a copy of the copyright registration certificate); Arista Records

LLC v. Greubel, 453 F. Supp. 2d 961, 966 (N.D. Tex. 2006) (finding that the defendant’s

failure to identify each copyrighted work by its registration number or attach certificates

of registration to its complaint did not merit dismissal); see also Kindig It Design, Inc., 157

F. Supp. 3d. at 1182 (noting that the plaintiff’s failure to attach the copyrighted works to

its pleading “does not merit dismissal” and that “the discovery process will easily provide

[the defendant] with access to the specific copyrighted materials”).

The Court finds that Plaintiff’s description of the copyrighted works, supplied in

conjunction with the relevant copyright registration numbers, is sufficient to satisfy

Plaintiff’s pleading burden and withstand Defendant’s Rule 12(b)(6) challenge.

II. Secondary Liability

Defendant next seeks dismissal of any claims of vicarious or contributory copyright

infringement alleged in the Complaint. Though the Copyright Act “does not expressly

render anyone liable for infringement committed by another,” Sony Corp. of Am. v.

Universal City Studios, Inc., 464 U.S. 417, 434 (1984), two doctrines of secondary

liability—namely, vicarious infringement and contributory infringement—have “emerged

from common law principles and are well established in the law.” Metro-Goldwyn-Mayer

Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). Thus, a copyright owner may

bring an infringement action not only against the individual or entity engaging in the

unauthorized use of protected material, but also against “vicarious” and “contributory”

infringers. “One infringes contributorily by intentionally inducing or encouraging direct

infringement and infringes vicariously by profiting from direct infringement while

declining to exercise a right to stop or limit it.” Id. (citations omitted).

a. Vicarious Copyright Infringement

In its pleading, Plaintiff alleges that Defendant “has, without authorization from

Plaintiff . . . , made or had made numerous infringing and unauthorized copies of the

Content.” Compl. ¶ 25. Citing this paragraph, and noting that it is “unclear whether the

Complaint alleges a claim of indirect copyright infringement,” Defendant argues that

Plaintiff’s claim of vicarious copyright infringement, if any, should be dismissed because

none of the elements were plausibly pled. Def.’s Mot. at 5. Plaintiff responds that it has

alleged that Defendant “is liable for direct copyright infringement by unlawfully

publishing—or having someone else publish—[Plaintiff’s] copyrighted car comparisons

on [Defendant’s] website” but has not asserted a claim for vicarious copyright

infringement. Pl.’s Resp. at 8 (citation omitted). In view of Plaintiff’s representations, the

Court finds that no claim for vicarious copyright infringement has been asserted and denies

Defendant’s request for dismissal on that ground.

b. Contributory Copyright Infringement

Plaintiff contends, however, that its allegation that Defendant “made or had made”

infringing copies of the Content is sufficient to plausibly allege contributory infringement.

See id. (“[T]he Complaint clearly contemplates that [Defendant] either made the copies

itself or had a third party do so on its behalf.”).

The Tenth Circuit has explained that “[c]ontributory copyright infringement is

derivative of direct copyright infringement . . . [and] occurs when the defendant causes or

materially contributes to another’s infringing activities and knows of the infringement.”

Savant Homes, Inc, 809 F.3d at 1146 (internal quotation marks omitted). Accordingly,

“there can be no contributory infringement without a direct infringement” by another. Id.

(alteration and internal quotation marks omitted); see La Resolana Architects, PA v. Reno,

Inc., 555 F.3d 1171, 1181 (10th Cir. 2009); Capitol Records, Inc. v. Foster, No. Civ. 04-

1569-W, 2007 WL 1028532, at *3 (W.D. Okla. Feb. 6, 2007) (explaining that contributory

copyright infringement requires direct infringement by a third party).

In this case, direct infringement by a third party has not been plausibly pled.

Plaintiff’s sole relevant allegation—that Defendant may have “had made” infringing copies

of the Content—is devoid of factual context. Compl. ¶ 25. Plaintiff does not identify the

third party or parties or substantiate its allegation of third-party involvement with factual

allegations relating specifically to the third-party’s conduct. The Court cannot “draw [a]

reasonable inference” of Defendant’s liability for the derivative contributory copyright

infringement when the predicate third-party direct infringement has not been adequately

alleged. Iqbal, 556 U.S. at 678; see La Resolana Architects, PA, 555 F.3d at 1181

(“Because La Resolana failed to establish that Reno, Inc. infringed its copyright, La

Resolana’s claim of indirect infringement against SWIT necessarily fails.”).

Accordingly, the Court finds that Plaintiff has failed to state a plausible claim

against Defendant for contributory copyright infringement.

III. Removal and Falsification of Copyright Management Information

Plaintiff alleges that Defendant violated 17 U.S.C. § 1202(a) and (b) by replacing

Plaintiff’s copyright management information (“CMI”) with its own prior to publishing the

Content on its website. See Compl. ¶¶ 32-37. As relevant here, subsection 1202(c) defines

CMI as “[t]he name of, and other identifying information about, the copyright owner of the

work, including the information set forth in a notice of copyright,” that is “conveyed in

connection with copies . . . of a work.” 17 U.S.C. § 1202(c).

a. Distribution of False CMI

Defendant seeks dismissal of Plaintiff’s claim of unlawful distribution of false CMI

under § 1202(a), which provides that “[n]o person shall knowingly and with the intent to

induce, enable, facilitate, or conceal infringement . . . provide copyright management

information that is false, or . . . distribute . . . copyright management information that is

false.” Id. § 1202(a). Defendant argues that its copyright designation (“Copyright © 2019

FordDirect. All Rights Reserved.”), which is located at the bottom of the webpages

submitted in Exhibit 1 of the Complaint, does not qualify as CMI under the statutory

definition of that term. Specifically, Defendant submits that its copyright designation is

not “conveyed in connection with” the allegedly infringed Content because it is located in

a “generic website footer” rather than “near or next to” the allegedly infringed Content. 17

U.S.C. § 1202(c); Def.’s Mot. at 6-7 (internal quotation marks omitted).

Defendant cites two district court cases supporting the proposition that copyright

information contained in a generic footer at the bottom of a webpage is not information

“conveyed in connection with” the copyrighted material. See Def’s Mot. at 6-7 (citing

SellPoolSuppliesOnline.com LLC v. Ugly Pools Arizona, Inc., 344 F. Supp. 3d 1075 (D.

Ariz. 2018) and Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., 975 F. Supp.

2d 920 (N.D. Ill. 2013)). In these cases, however, the infringed works were either

photographs displayed on the defendant’s website or poems printed on personalized gift

items displayed on the defendant’s website. Neither case presents the circumstances here,

where the alleged copyrighted work is the text comprising the body of the webpages. The

distinction is appreciable when considering the relative degrees of removal between footer

and copyrighted work. Cf. Personal Keepsakes, Inc., 975 F. Supp. 2d at 929 (“Where the

only CMI displayed by [the defendant] appears on the website’s footer, not on the [poems]

or images [of the gift items] themselves, the only conclusion the Court can reach about the

copyright notice at the bottom of [the defendant’s] . . . website is that it has some

intellectual property rights in its own website, not that it is claiming ownership of a

copyright to all of its products.”).

Moreover, the conclusion reached in SellPoolSuppliesOnline.com and Personal

Keepsakes is by no means universal. See, e.g., Tomelleri v. Zazzle, Inc., No. 13-CV-02576-

EFM-TJJ, 2015 WL 8375083, at *13 (D. Kan. Dec. 9, 2015) (“The Court does not believe

that the phrase ‘conveyed in connection with copies . . . of the work’ requires that the

information be located immediately adjacent to the image to qualify as CMI.”); Janik v.

SMG Media, Inc., No. 16 Civ. 7308 (JGK) (AJP), 2018 WL 345111, at *12 (S.D.N.Y Jan.

10, 2018) (noting that the legislative history of section 1202 explained that “[t]he term

‘conveyed’ is used in its broadest sense . . . [and] merely requires that the information be

accessible in conjunction with, or appear with, the work being accessed”).

Defendant, therefore, has not shown that Plaintiff’s claim for unlawful distribution

of false CMI was inadequately pled.

b. Removal of CMI

Defendant additionally seeks dismissal of Plaintiff’s claim under § 1202(b).

Subsection 1202(b) provides, in relevant part, that “[n]o person shall . . . intentionally

remove or alter any copyright management information, [or] . . . distribute . . . copyright

management information knowing that the copyright management information has been

removed or altered without authority of the copyright owner or the law.” 17 U.S.C. §

1202(b). Referencing its earlier argument, Defendant submits that “it cannot possibly be

said that [Plaintiff] has plausibly alleged the existence of [CMI] on the infringed work, let

alone knowing removal of the same” because Plaintiff failed to adequately identify those

works. Def.’s Mot. at 6 (alterations and internal quotation marks omitted).

The Court has rejected Defendant’s underlying argument that Plaintiff failed to

adequately identify the copyrights at issue. See supra Section I. Moreover, the Complaint

contains multiple allegations of CMI removal. See, e.g., Compl. ¶¶ 15 (“[T]he copyright

notices and all references to Plaintiff . . . had been removed.”), 20 (“Defendant . . .

purposely removed Plaintiff[’s] copyright notices from the Content Defendant has

copied.”), 33 (“Defendant deleted all copyright information from the Content before

publishing the Content on Defendant’s website. This copyright information included

copyright notices identifying Plaintiff . . . as the owner of the Content.”), 35 (“Defendant

intentionally . . . removed copyright management information[] and distributed copyright

management information and copies of the Content knowing that copyright management

information had been removed or altered.”). The Court finds these allegations sufficient

to state a plausible claim for relief under § 1202(b).1

1 In its Reply, Defendant additionally argues that Plaintiff’s § 1202(b) claim fails because

“[Plaintiff’s] Response makes clear that only copying of certain copyrighted elements—as

opposed to the duplication of an entire work—is alleged.” Def.’s Reply at 5. At this stage,

however, the Court’s analysis is constrained to the well-pleaded allegations in the

Complaint, including that Defendant’s webpages “contained substantially the same content

as [Plaintiff’s] copyrighted content.” Compl. ¶ 15. Moreover, the case cited by Defendant

does not support the argument that only exact and entire duplication supports a claim for

CMI removal. See Fischer v. Forrest, 286 F. Supp. 3d 590, 609 (S.D.N.Y. 2018) (noting

that “claims of removal of CMI have been held viable” where “the underlying work has

been substantially or entirely reproduced” (emphasis added)).

CONCLUSION

For the reasons stated above, Defendant’s Motion to Dismiss (Doc. No. 10) is

GRANTED IN PART and DENIED IN PART.

IT IS SO ORDERED this 30th day of September, 2020.

CHARLES B.GOODWIN. |

United States District Judge

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