Case 5:17-cv-00633-R Document 14 Filed 10/17/17 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF OKLAHOMA
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`ANDREW BUCHANAN,
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`Plaintiff,
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`v.
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`SHAPARD RESEARCH, LLC,
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`Case No. CIV-17-633
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`ORDER
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`Defendant.
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`Before the Court is Defendant’s Motion to Dismiss Plaintiff’s copyright
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`infringement action. Doc. 11. Defendant argues that Plaintiff failed to state a plausible
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`claim for relief under Fed. R. Civ. Pro. 12(b)(6) and failed to join two Rule 19-required
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`parties in violation of Rule 12(b)(7).1 In response, Plaintiff argues that Defendant’s alleged
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`infringement does not constitute fair use and disputes that either absent party is required
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`under Rule 19. Defendant’s Motion is DENIED.
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`I. Failure to State a Plausible Claim
`Plaintiff’s Complaint, Doc. 1, sets forth plausible claims on Counts 1–3. A complaint
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`may be dismissed upon a motion for “failure to state a claim upon which relief can be
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`granted.” Fed. R. Civ. P. 12(b)(6). Dismissal is proper “if, viewing the well-pleaded factual
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`allegations in the complaint as true and in the light most favorable to the non-moving party,
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`1 Defendant also asserted a 12(b)(4) defense, but subsequently withdrew all claims under Rules 12(b)(3)
`or 12(b)(4). See Doc. 12.
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`1
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`Case 5:17-cv-00633-R Document 14 Filed 10/17/17 Page 2 of 9
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`the complaint does not contain ‘enough facts to state a claim to relief that is plausible on
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`its face.’”2 Macarthur v. San Juan County, 497 F.3d 1057, 1064 (10th Cir. 2007) (quoting
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 (2007)); see Aschcroft v. Iqbal, 556 U.S.
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`662, 676–80 (2009). The plaintiff cannot merely give “labels and conclusions, and a
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`formulaic recitation of the elements of a cause of action.” Twombly, 550 U.S. at 555. Such
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`conclusory allegations are not entitled to the court’s presumption for the plaintiff. Instead,
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`the plaintiff must plead facts that at least makes the claims plausible and raise the “right of
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`relief above the speculative level.” Id. at 558.
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`A. Count 1: Copyright Infringement
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`Plaintiff states a plausible claim in Count 1, copyright infringement, 17 U.S.C. § 101
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`et seq. To establish copyright infringement, Plaintiff must prove two elements:
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`“(1) ownership of a valid copyright, and (2) copying of constituent elements of the work
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`that are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)
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`Plaintiff first demonstrates he is the exclusive copyright owner of the photograph in
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`question. Doc. 1-3. Plaintiff then alleges that Defendant infringed by intentionally copying
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`the photograph to its online polling publication, www.soonerpoll.com. Doc. 1-4. However,
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`Defendant presents an affirmative defense to infringement: fair use.3
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`2 Plaintiff cites outdated precedent pre-Twombly and Iqbal, Conley v. Gibson, 355 U.S. 41 (1957), that
`would heighten Defendant’s burden on its motion to dismiss. Doc-13, at 5. Nonetheless, Defendant fails
`to meet either standard.
`3 Defendant rightly notes that the Court may assess fair use as an affirmative defense at the motion to
`dismiss stage. See, e.g., Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 690 (7th Cir. 2012);
`Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522, 530 (9th Cir. 2008).
`2
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`Case 5:17-cv-00633-R Document 14 Filed 10/17/17 Page 3 of 9
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`Plaintiff pleads sufficient facts, viewed in a light most favorable to him as the
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`nonmoving party, to refute Defendant’s fair use argument. Fair use is codified at 17 U.S.C.
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`§ 107: “[T]he fair use of a copyrighted work, including such use by reproduction in copies
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`. . . , for purposes such as criticism, comment, news reporting, teaching (including multiple
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`copies for classroom use), scholarship, or research, is not an infringement of copyright.”
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`This copyright exception “allows the public to use not only facts and ideas contained in a
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`copyrighted work, but also [the author’s] expression itself in certain circumstances.” Golan
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`v. Holder, 565 U.S. 302, 329 (2012) (quoting Eldred v. Ashcroft, 537 U.S. 186, 219
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`(2003)). Courts use four factors to assess this copyright exception: “(1) the purpose and
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`character of the use, including whether such use is of a commercial nature or is for
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`nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and
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`substantiality of the portion used in relation to the copyrighted work as a whole; and (4)
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`the effect of the use upon the potential market for or value of the copyrighted work.”
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`Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994). The four factors “are to be
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`explored, and the results weighed together, in light of [copyright’s] purposes.” Id. at 578.
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`Regarding the first factor, Defendant cites the article’s medical subject matter and
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`relation to pending state legislation to frame it as a non-profit “journalistic piece.” Doc. 11,
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`at 7. Yet, Plaintiff presents a plausible argument that Defendant’s use of the copyrighted
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`photograph was commercial in nature. Defendant operates a for-profit “market research”
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`and “data collection firm,” and posted the copyrighted picture alongside a poll describing
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`the company’s findings. Doc. 13, at 9; see Doc. 1-4. Presumably, Defendant would only
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`include the picture if it felt the image would help drive traffic to their website. Plaintiff’s
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`3
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`Case 5:17-cv-00633-R Document 14 Filed 10/17/17 Page 4 of 9
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`“Paterson Affidavit” supports this theory and describes a conversation in which Defendant
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`allegedly admitted that the poll summary accompanying the photograph furthered a for-
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`profit purpose. See Doc. 13-1.
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` Next is the nature of the copyrighted work, which speaks to the creativity of the
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`protected work and whether it is published. See Campbell, 510 U.S. at 586; Harper & Row
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`Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 563–64 (1985). Plaintiff’s complaint
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`shows that he granted a license to a construction company to publish the photograph on its
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`website. See Doc. 1-1. Plaintiff also notes the extensive work and creativity entailed in
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`capturing the photograph in question.
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`The third factor concerns the copyright infringement’s substantiality. Plaintiff alleges
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`that Defendant copied the photograph in its entirety and without alteration, save for the
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`removed copyright notice. Meanwhile, Defendant argues that one photograph is
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`insubstantial relative to “all the photographs”—what appear from the copyright registration
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`record to be over 1,200 photographs covered by the copyright in question. See Doc. 1-3.
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` Lastly, the Court looks to Defendant’s impact on the copyright’s value. Parties
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`disagree on this factor, particularly what Defendant would owe Plaintiff to obtain a license
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`on the photograph. Plaintiff alleges damages based both on compensation for such a license
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`and the alleged infringement’s effect on the market for this photograph.
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`Viewing the factors in totality and in the light most favorable to Plaintiff, the
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`nonmoving party, Plaintiff presents a plausible response to Defendant’s fair use defense.
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`Thus, Defendant fails its burden to dismiss Plaintiff’s copyright infringement action.
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`4
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`Case 5:17-cv-00633-R Document 14 Filed 10/17/17 Page 5 of 9
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`B. Count 2: Contributory Infringement
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`Plaintiff also states a plausible claim in Count 2, contributory infringement. “One
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`infringes contributorily by intentionally inducing or encouraging direct infringement.”
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`Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). Defendant
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`allegedly published the copyrighted photograph online without authorization, accompanied
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`by links to various social media sites. See Doc. 1-5. Plaintiff argues that Defendant intended
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`these links to encourage consumers who visited the www.soonerpoll.com article to directly
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`infringe Plaintiff’s copyright. Defendant denies any knowledge that Plaintiff’s photograph
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`was copyrighted, let alone the requisite intent for contributory infringement. It is unclear
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`whether the copyrighted photograph was “capable of ‘substantial’ or ‘commercially
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`significant’ noninfringing use[].” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
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`545 U.S. 913, 942 (2005) (quoting Sony Corp. of America v. Universal City Studios, Inc.,
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`464 U.S. 417, 442 (1984)). Nonetheless, Plaintiff presents a plausible claim that Defendant
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`possessed the necessary intent to produce liability for contributory infringement.
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`C. Count 3: Alteration of Copyright Management Information
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`Plaintiff also states a plausible claim in Count 3, alteration of copyright management
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`information pursuant to 17 U.S.C. § 1202. Section 1202(a)(1) prohibits “knowingly and
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`with intent to induce, enable, facilitate, or conceal infringement . . . provid[ing] copyright
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`management information that is false.” Section 1202(b)(1) prohibits “intentionally
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`remov[ing] or alter[ing] any copyright management information [without permission of the
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`owner].” Plaintiff alleges
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`that he posted
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`the photograph on his website,
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`www.subtlelightphoto.com, and Defendant removed the photograph’s copyright notice
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`Case 5:17-cv-00633-R Document 14 Filed 10/17/17 Page 6 of 9
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`before posting it on www.soonerpoll.com. See Doc 1, at 3; 1-4. Defendant argues that he
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`merely copied the photograph from Hoffman’s website without knowledge of its copyright
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`because Hoffman had already removed the copyright management information. See Docs.
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`11-1, 11-3. However, the Court views Plaintiff’s allegations as true and assumes that the
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`alleged infringing photograph originated from Plaintiff’s website, not Hoffman’s.
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`Therefore, Plaintiff presents a plausible claim that Defendant altered the photograph in
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`violation of 12 U.S.C. § 1202.
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`II. Failure to Join a Required Party
`Defendant argues that Hoffman Construction Company (“Hoffman”) and Seattle
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`Cancer Cure Alliance (“Cancer Cure”) are “required” parties under Rule 19, thereby
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`warranting Rule 12(b)(7) dismissal of this case. The proponent of a 12(b)(7) motion has
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`the burden of proving necessity. See Citizen Band Potawatomi Indian Tribe of Oklahoma
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`v. Collier, 17 F.3d 1292, 1293 (10th Cir. 1994). “The proponent's burden can be satisfied
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`by providing ‘affidavits of persons having knowledge of these interests as well as other
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`relevant extra-pleading evidence.’” Id. (quoting Martin v. Local 147, Int’l Bro. of Painters,
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`775 F. Supp. 235, 236 (N.D. Ill. 1991)). Rule 19(a) governs because Plaintiff brought a
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`federal action in which joinder of additional parties would not deprive the court of subject-
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`matter jurisdiction. Rule 19(a)(1) states that an absent party is “required” if (1) “in that
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`person’s absence, the court cannot accord complete relief among existing parties,” (2) they
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`“claim[] an interest relating to the subject of the action” and are situated such that
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`proceeding without them would “as a practical matter impair or impede” their ability to
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`protect their interests, or (3) their absence would leave an existing party “subject to a
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`substantial risk of incurring double, multiple, or otherwise inconsistent obligations because
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`of the [absent party’s] interest.”
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`A. Hoffman
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`Hoffman does not meet Rule 19’s standards for a required party. Defendant argues
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`that Hoffman violated Plaintiff’s license to use the copyrighted photograph by altering it
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`to remove the copyright notice. Hoffman also allegedly contracted with Plaintiff to
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`photograph Cancer Cure’s medical equipment without its consent, thereby exposing both
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`Hoffman and Plaintiff to liability from Cancer Cure. Neither of these allegations make
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`Hoffman a required party. First, the Court can afford complete relief among the existing
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`parties. It appears Defendant is using Hoffman’s alleged alteration of the photograph’s
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`copyright notice as a partial defense to Count 3, alteration of copyright management
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`information in violation of 17 U.S.C. § 1202. Yet, just because Hoffman is a relevant party
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`does not make him required. As discussed above, Plaintiff’s complaint states a plausible
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`claim on Counts 1–3 without Hoffman as a party. If Plaintiff chooses to sue Hoffman as
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`well, it has no bearing on the relief in this case against Defendant. Nor would this case
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`adversely affect a theoretical action between Plaintiff and Hoffman.
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`Second, Hoffman does not claim an interest in this case that warrants protection under
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`Rule 19(a). In fact, Defendant alleges the opposite—that Hoffman is liable to Plaintiff in a
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`separate infringement action for violating the terms of its license. The Court will not
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`speculate on a third party’s potential liability, but Defendant has failed to show that
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`Hoffman claims a required interest in this action.
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`Third, Hoffman’s absence would not leave either existing party subject to substantial
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`prejudice. Neither Plaintiff nor Defendant would face “double, multiple, or otherwise
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`inconsistent obligations” because this case concerns copyright infringement by Defendant
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`of a photograph exclusively copyrighted by Plaintiff. Fed. R. Civ. Pro. 19(a). In other
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`words, Defendant has not demonstrated he is subject to litigation from absent parties for
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`the conduct in question, nor is it apparent how Plaintiff would be subject to inconsistent
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`obligations.
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`B. Cancer Cure
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`Neither does Seattle Cancer Cure Alliance—which runs the Seattle ProCure facility
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`depicted in the allegedly copyrighted photograph—satisfy Rule 19 necessity. Defendant
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`alleges that Cancer Cure “may or may not have a cause of action” against Hoffman or
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`Plaintiff for photographing its medical machinery. Doc. 11, at 9. Meanwhile, Defendant
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`asks the Court to find Cancer Cure necessary to this case. Unlike Hoffman who at least
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`maintains an interest in the copyrighted photograph in question (a license), Cancer Cure is
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`even less essential to this dispute; litigation against Hoffman or Plaintiff would concern
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`only the medical facility as the subject of protection, not the photograph. Whether an absent
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`party has unrelated causes of action at its disposal is irrelevant to this determination.
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`Defendant’s arguments suggest Rule 19 requires litigation of all issues potentially relevant
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`to a particular matter. To the contrary, Rule 19 asks whether an absent party is “required”
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`to resolve the case between Plaintiff and Defendant. Defendant has failed that standard.
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`Plaintiff presents a plausible claim for relief, and Defendant fails to carry the burden
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`of proving necessity of an absent party. Defendant’s Motion under Rules 12(b)(6) and
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`12(b)(7) is therefore DENIED. The Court does this reluctantly as the damages would
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`appear de minimis, with attorney’s fees far exceeding any recovery. The Court admonishes
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`the parties that this will be factored in if attorney’s fees ever become an issue.
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`IT IS SO ORDERED this 17th day of October, 2017.
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