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Roth v. The Walsh Co Inc.

United States District Court, E.D. Wisconsin

January 24, 2019

IAN ROTH, Plaintiff,
v.
THE WALSH CO., INC., Defendant.

          DECISION AND ORDER ON DEFENDANT'S MOTION TO DISMISS COUNT TWO OF COMPLAINT

          NANCY JOSEPH UNITED STATES MAGISTRATE JUDGE

         Ian Roth, a professional photographer, sues The Walsh Co., Inc. d/b/a Walsh Products, for copyright infringement and violation of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1201 et seq. stemming from Walsh's allegedly infringing use of Roth's copyrighted photograph of a horse. Walsh moves to dismiss Count Two of Roth's complaint-the DMCA claim-because it fails to state a claim upon which relief can be granted pursuant to Fed.R.Civ.P. 12(b)(6). For the reasons that follow, Walsh's motion to dismiss is denied.

         BACKGROUND

         Roth alleges that he is a professional photographer based in Casselberry, Florida who licenses production, display, and distribution rights of his photographs. (Compl. ¶ 1, Docket # 1.) In April 2011, Roth created and was the sole author of a photograph depicting a close-up image of a horse's face. (Id. ¶ 7.) Beginning around July 2012, Roth displayed the photograph on his professional website. (Id. ¶ 8.) Roth registered the photograph with the United States Copyright Office effective October 3, 2017 and supplemented on July 19, 2018. (Id. ¶ 9 and Ex. A.)

         Roth alleges that Walsh owns and operates the website located at http://www.walshproducts.com, as well as Facebook and Instagram pages. (Id. ¶¶ 11-13.) On or around April 29, 2014, Roth alleges that Lindsey Weber, a Sales/Marketing Specialist for Walsh, contacted Roth through Facebook Messenger regarding the availability of the photograph for a two-page spread in Walsh's printed catalogue. (Id. ¶ 14.) Roth alleges he discussed Walsh's use of the photograph in the catalogue and on June 24, 2014, Roth sent a digital file of the photograph to Walsh stating, “All I ask is for the photo to be credited to Ian Roth (as you've already stated) and that I get a few copies of the catalog when it is printed.” (Id. ¶ 15.) Roth alleges that the only use of the photograph the parties discussed was for the printed catalog. (Id. ¶ 16.)

         In September 2016, Roth discovered that Walsh had reproduced and displayed the photograph on its website, its Facebook page, and its Instagram page, using the photograph to promote the business and sale of Walsh's equestrian equipment. (Id. ¶¶ 19-20.) Roth alleges that Walsh reproduced, displayed, and distributed the photograph on its websites without any attribution to Roth. (Id. ¶ 22.) Roth further alleges that Walsh included its own company name or trademarked logo on or directly adjacent to each unauthorized display of the photograph in each of the alleged infringements. (Id. ¶ 23.)

         Roth, through counsel, sent a letter to Walsh on May 22, 2017 giving notice that the reproduction, display, and distribution of the photograph was unauthorized and asked Walsh to cease use of the photograph. (Id. ¶ 24.) However, as of the September 12, 2018 filing of this lawsuit, six of the nine alleged infringements were still active. (Id. ¶ 26.)

         STANDARD OF REVIEW

         A motion to dismiss under Fed.R.Civ.P. 12(b)(6) challenges the sufficiency of the complaint on the basis that the plaintiff has failed to state a claim upon which relief can be granted. A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed.R.Civ.P. 8(a)(2). The Supreme Court has interpreted this language to require that the plaintiff plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). In Ashcroft v. Iqbal, the Supreme Court elaborated further on the pleadings standard, explaining that a “claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged, ” though this “standard is not akin to a ‘probability requirement.'” 556 U.S. 662, 678 (2009). The allegations in the complaint “must be enough to raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555 (internal citation omitted).

         When determining the sufficiency of a complaint, the court should engage in a two-part analysis. See McCauley v. City of Chicago, 671 F.3d 611, 616 (7th Cir. 2011). First, the court must “accept the well-pleaded facts in the complaint as true” while separating out “legal conclusions and conclusory allegations merely reciting the elements of the claim.” Id. (citing Iqbal, 556 U.S. at 680). Next, “[a]fter excising the allegations not entitled to the presumption [of truth], [the court must] determine whether the remaining factual allegations ‘plausibly suggest an entitlement to relief.'” Id. (citing Iqbal, 556 U.S. at 681). As explained in Iqbal, “[d]etermining whether a complaint states a plausible claim for relief will . . . be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” 556 U.S. at 679.

         ANALYSIS

         Walsh moves to dismiss Count Two of Roth's complaint. In Count Two, Roth alleges that Walsh violated the DMCA by providing and distributing false copyright management information (“CMI”), in violation of 17 U.S.C. § 1202(a)(1)-(2). (Compl. ¶¶ 34-39.) The DMCA provides that “No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement-- (1) provide copyright management information that is false, or (2) distribute or import for distribution copyright management information that is false.” 17 U.S.C. § 1202(a)(1)-(2). The DMCA defines CMI as “any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form, except that such term does not include any personally identifying information about a user of a work or of a copy, phonorecord, performance, or display of a work: . . . .” 17 U.S.C. §1202(c). The statute goes on to list eight types of CMI, as relevant here: (2) the name of, and other identifying information about, the author of the work; (3) the name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright; and (7) identifying numbers or symbols referring to such information or links to such information. (Compl. ¶ 35.)

         Here, Roth alleges that Walsh's company name and trademarked logo constitutes CMI, and Walsh provided false CMI in violation of §1202(a) by Walsh placing its name and logo on or directly adjacent to Roth's photograph. (Id. ¶¶ 23, 35-36.)

         Walsh counters with two arguments, the first of which is easily disposed of. Walsh first argues that while the complaint alleges that Walsh's company name and trademarked logo constitute CMI and alleges that Walsh used false CMI, it fails to explicitly make the link that the false CMI is in fact Walsh's company name and trademarked logo. (Def.'s Reply Br. at 1-2, Docket # 16.) I disagree. The complaint plainly alleges that the false CMI is Walsh's company name and trademarked logo and that by placing its name and logo on or directly ...


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