United States District Court, W.D. Wisconsin
OPINION & ORDER
D. PETERSON District Judge
Scott Boehm is a sports photographer. He alleges that
third-party defendant Event USA Corp. obtained digital copies
of some of Boehm's copyrighted photos and directed
defendant Heyrman Printing, LLC, to print copies of the
photos. Boehm filed suit against Heyrman Printing, accusing
it of copyright infringement. Dkt. 1. Heyrman Printing filed
a third-party complaint for indemnification against Event
USA. Dkt. 10.
USA now moves to dismiss both complaints, contending that
Boehm's infringement claims are barred by the applicable
statute of limitations. Dkt. 29. Heyrman Printing does not
oppose Event USA's motion and agrees that if Boehm's
claims are barred, Heyrman Printing's third-party claim
for indemnification is moot. Dkt. 36. Because Boehm may have
discovered the allegedly infringing activities within three
years of filing suit, the court will deny Event USA's
motion. Unrelatedly, Heyrman Printing moves to amend its
answer to Boehm's complaint. Dkt. 40. The court will
grant Heyrman Printing's motion.
court takes the following facts from Boehm's complaint,
Dkt. 1, and Heyrman Printing's third-party complaint,
Dkt. 10, and accepts them as true for the purposes of these
motions. Zahn v. N. Am. Power & Gas, LLC, 815
F.3d 1082, 1087 (7th Cir. 2016).
USA sells sports prints, posters, canvases, and other
memorabilia. In 2011, Event USA obtained digital copies of
three of Boehm's copyrighted photos from non-party
Legends of the Field: a photo of Green Bay Packers'
outside linebacker Clay Matthews, a photo of Packers'
offensive tackle Derek Sherrod, and a photo of Packers'
linebacker A. J. Hawk. “Shortly thereafter, ”
Event USA directed Heyrman Printing to print 240 prints of
the Sherrod photo and 194 prints of the Hawk photo. Dkt. 10,
never authorized Event USA or Heyrman Printing to copy or use
any of his photos. He filed this lawsuit on May 6, 2016.
Event USA's motion to dismiss
motion to dismiss under Federal Rule of Civil Procedure
12(b)(6) tests the complaint's legal sufficiency. To
state a claim upon which relief can be granted, a complaint
need only provide a “short and plain statement of the
claim showing that the pleader is entitled to relief.”
USA contends that Boehm's claims against Heyrman
Printing, and therefore Heyrman Printing's claims against
Event USA, are barred by the applicable statute of
limitations. A claim under the Copyright Act must be
“commenced within three years after the claim
accrued.” 17 U.S.C. § 507(b). The Seventh Circuit
has long applied the discovery rule of accrual in the
copyright context, i.e., the claim accrues only when the
injured party discovers, or reasonably should have
discovered, the infringement. See Gaiman v.
McFarlane, 360 F.3d 644, 653 (7th Cir. 2004). But the
Supreme Court recently called the discovery rule into
question, using instead the incident of injury rule, i.e.,
the claim accrues when the infringement occurs. See
Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962,
1969 & n.4 (2014). In Petrella, the Court
acknowledged that the majority of circuits use the discovery
rule and noted that the Court has “not passed on the
question, ” but proceeded to analyze the case under the
incident of injury rule. Id.
Seventh Circuit acknowledged Petrella in Chicago
Building Design, P.C. v. Mongolian House, Inc., 770 F.3d
610 (7th Cir. 2014), and stated that “in light of
Petrella, we now know that the right question to ask
in copyright cases is whether the complaint contains
allegations of infringing acts that occurred within the
three-year look-back period from the date on which the suit
was filed.” Id. at 616. But later in the
opinion, the Seventh Circuit noted that it reserved the
question of “whether Petrella abrogates the
discovery rule in copyright cases” at that time.
Id. at 618.
USA argues that Petrella requires courts to use the
incident of injury rule and that, under this rule,
Boehm's claims are time barred. Boehm filed suit on May
6, 2016, so he cannot recover on any infringing acts accruing
before May 6, 2013. Although Boehm's complaint does not
allege the date of infringement or the date of discovery,
Heyrman Printing's third-party complaint alleges that
Event USA acquired the photos at issue in September and
October 2011 and that Heyrman Printing printed the photos
“shortly thereafter.” Event USA argues that the
only “reasonable inference” to draw from these
allegations is that Heyrman Printing printed the photos in
2011. The court need not decide whether dismissing a
plaintiff's claims based on the “reasonable
inferences” drawn from a defendant's third-party
complaint is appropriate because, given that neither
Petrella nor Chicago Building expressly
abrogated the discovery rule, the court must follow the
Seventh Circuit's binding precedent and apply the
discovery rule to copyright infringement claims. Accord
Design Basics LLC v. J & V Roberts Invs., Inc., 130
F.Supp.3d 1266, 1282 (E.D. Wis. 2015); Frerck v. Pearson
Educ., Inc., 63 F.Supp.3d 882, 887 (N.D. Ill. 2014).
Boehm's complaint does not allege when he discovered the
infringement, nor does it need to. See Hollander v.
Brown, 457 F.3d 688, 691 n.1 (7th Cir. 2006) (“[A]
federal complaint does not fail to state a claim simply
because it omits facts that would defeat a statute of
limitations defense.”). The allegations in Boehm's
complaint do not indicate that his claims are barred by the
applicable statute of limitations, so the court will deny
Event USA's motion to dismiss. This issue will likely
resurface at summary judgment, when the court will consider
it in light of the evidence.