Opinion
Case No. 3:20-cv-28-J-39MCR
2020-09-02
SEVEN OAKS MILLWORK, INC. d/b/a Royal Corinthian, Plaintiff, v. ROYAL FOAM US, LLC, Defendant.
Thomas Michael McDermott, Law Office of Thomas McDermot, LLC, Gainesville, FL, for Plaintiff. Gonzalo Andux, Finnell, McGuinness, Nezami & Andux, PA, Iryna Kharlap, Kharlap Law, Jacksonville, FL, for Defendant.
Thomas Michael McDermott, Law Office of Thomas McDermot, LLC, Gainesville, FL, for Plaintiff.
Gonzalo Andux, Finnell, McGuinness, Nezami & Andux, PA, Iryna Kharlap, Kharlap Law, Jacksonville, FL, for Defendant.
ORDER
BRIAN J. DAVIS, United States District Judge
THIS CAUSE is before the Court on Defendant's Motion to Dismiss (Doc. 8) and Plaintiff's Response (Doc. 9). The Motion is fully briefed and ripe for review.
I. Background
Plaintiff manufactures architectural structures, such as columns, pergolas, and balusters. (Doc. 1 at ¶ 5). To market its products, Plaintiff utilizes a copyrighted catalog containing numerous images, including several of various baluster designs Plaintiff offers for sale. Id. at ¶¶ 7, 9. The Catalog is displayed on Plaintiff's website and is also available in print. Id. at ¶ 5.
Specifically, the ©RC 2003 Catalog, U.S. Copyright Reg. No. VA0001924546, registered on April 4, 2014, referred to herein as the "Catalog." (Doc. 1 at ¶ 5). Plaintiff is the alleged owner of the Catalog's copyright since it purchased the copyright in 2017 from the original registrant. Id. at ¶ 6.
Defendant also sells architectural structures and has its own marketing materials available on its website, which contain images of various baluster designs Defendant offers for sale. Id. at ¶ 9. Plaintiff alleges Defendant infringed its copyright in the Catalog by copying digital images of the baluster designs from the Catalog and marketing the images as if they were Defendant's own work product. Id. All told, Plaintiff alleges Defendant improperly accessed sixteen separate images from the Catalog and misappropriated them for Defendant's own purposes. Id. at ¶ 10.
On January 13, 2020, Plaintiff filed its Complaint in the subject action with the Court. (Doc. 1). The Complaint contains seventeen causes of action, though they fall into two distinct categories: (1) sixteen separate counts for copyright infringement under 17 U.S.C. §§ 501 - 505 ; and (2) a single count for violations of Florida's Deceptive and Unfair Trade Practices Act, Fla. Stat. §§ 501.201 -213 ("FDUTPA"). Defendant's Motion to Dismiss (Doc. 8) seeks dismissal of all claims against it for failing to state a cause of action under Federal Rule of Civil Procedure 12(b)(6).
II. Legal Standard
The Federal Rules of Civil Procedure require that a complaint contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). Indeed, an action fails to state a claim for which relief may be granted, and may be subject to dismissal, if it fails to include such a short and plain statement. See Harper v. Lawrence County, Ala., 592 F.3d 1227, 1232–33 (11th Cir. 2010) (citing Fed. R. Civ. P. 8(a)(2), 12(b)(6) ). A complaint must contain "sufficient factual matter, accepted as true, to ‘state a claim for relief that is plausible on its face.’ " Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atlantic Corp v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). "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." Iqbal, 556 U.S. at 678, 129 S.Ct. 1937.
Pursuant to Federal Rule of Civil Procedure 12(b)(6), a district court may dismiss a complaint for "failure to state a claim upon which relief can be granted." When reviewing a motion to dismiss, the Court must take the complaint's allegations as true and construe them in the light most favorable to the plaintiff. Rivell v. Private Health Care Sys., Inc., 520 F.3d 1308, 1309 (11th Cir. 2008). The Court is required to accept well-pleaded facts as true at this stage, but it is not required to accept a plaintiff's legal conclusions. Chandler v. Sec'y of Fla. Dep't of Transp., 695 F.3d 1194, 1199 (11th Cir. 2012). It is insufficient for a plaintiff's complaint to put forth merely labels, conclusions, and a formulaic recitation of the elements of the cause of action. Twombly, 550 U.S. at 555, 127 S.Ct. 1955.
III. Discussion
A. Copyright Infringement Claims (Counts I through XVI)
Plaintiff has asserted sixteen individual claims of copyright infringement against Defendant related to sixteen images of balusters allegedly lifted from the Catalog and used by Defendant to market and sell its own balusters. To establish copyright infringement, "a plaintiff must prove (1) [its] ownership of the copyright and (2) ‘copying’ by the defendant or person who composed the defendant's work." Ferguson v. NBC, 584 F.2d 111, 113 (5th Cir. 1978) (internal citation omitted). "The second element can be proven either with direct proof of copying or, if direct proof is unavailable, by demonstrating that the defendants had access to the copyrighted work and that the works are substantially similar." Home Design Servs., Inc. v. Turner Heritage Homes Inc., 825 F.3d 1314, 1321 (11th Cir. 2016) (internal quotation and citation omitted). The Court notes Plaintiff has sufficiently alleged its ownership of the copyright at issue in this case—the Catalog. (Doc. 1 at ¶ 6).
Defendant first contends Plaintiff has not sufficiently alleged access to the Catalog in order to state a cause of action. (Doc. 8 at 4-6). In the absence of evidence of direct copying, a plaintiff must show "that the person who composed the defendant's work had access to the copyrighted material and that there is substantial similarity between the two works." Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1248 (11th Cir. 1999). Access requires proof of "a reasonable opportunity to view" the work in question. Id.; see also Ferguson, 584 F.2d at 113.
In making its argument, Defendant relies on several circuit court opinions requiring more than a mere web presence to establish a defendant had adequate access to the copyrighted material to survive summary judgment. However, these cases are distinguishable because a plaintiff does not have the benefit of the presumption of truth at the summary judgment stage and is required to provide sufficient evidence for a court to make a justifiable inference in its favor. See Mize v. Jefferson City Bd. of Educ., 93 F.3d 739, 742 (11th Cir. 1996) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 253–55, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ).
See Design Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093, 1106 (7th Cir. 2017) ; Building Graphics, Inc. v. Lennar Corp., 708 F.3d 573, 577 (4th Cir. 2013).
In this case, Plaintiff is afforded the benefit of the presumption of truth at the motion to dismiss stage. See Iqbal, 556 U.S. at 678, 129 S.Ct. 1937. Plaintiff has alleged repeatedly, though somewhat conclusory, that direct copying took place. (Doc. 1 at ¶¶ 9, 19). This results in Plaintiff not needing to plead access, which is an alternative means of satisfying the second element of a copyright infringement claim. See Home Design, 825 F.3d at 1321. While the Court recognizes Plaintiff's copyright claims would be tenuous absent admissible evidence of direct copying or access at the summary judgment stage, the Complaint as pleaded does not fail for insufficient allegations of access.
Defendant next argues the subject of Plaintiff's copyright infringement claims—the sixteen distinct images contained within the Catalog—are not protectable expressions and cannot form the basis of viable causes of action. (Doc. 8 at 6-14). Even where direct copying is alleged, the Court must consider whether the violative material is substantially similar to the protected elements of the copyrighted material. Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir. 2000) ("No matter how the copying is proved, the plaintiff also must establish specifically that the allegedly infringing work is substantially similar to the plaintiff's work with regard to its protected elements.") (emphasis in original).
Whether portions of a work are unprotected under copyright law is a question of law for the Court. See Home Design, 825 F.3d at 1326. Courts can examine copyright claims for substantial similarity as to a work's protected material at the motion to dismiss stage when a comparison of the undisputed works is possible. See, e.g., Sieger Suarez Architectural Partnership, Inc. v. Arquitectonica Intern. Corp., 998 F. Supp. 2d 1340, 1349-51 (S.D. Fla. 2014) (exhaustively analyzing the propriety of a district court's consideration of substantial similarity at the motion to dismiss stage and concluding the Eleventh Circuit has deemed it appropriate under circumstances similar to those present in this case). Though the Eleventh Circuit has not expressly considered the issue, several circuit courts have allowed a district court to consider substantial similarity at the motion to dismiss stage. Id. at 1350-51 (citing cases from the Third, Fifth, Eighth, Ninth, and Tenth Circuits). Since the undisputed works are attached in their entirety to the Complaint and the works are not highly technical, no additional discovery is necessary for the Court to compare them and determine whether they are substantially similar.
Not all aspects of a copyrighted work enjoy copyright protection. See Home Design, 825 F.3d at 1321 ; see also Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1224 (11th Cir. 2008) ("Not all copying constitutes infringement"). Rather, works and aspects of those works are only protected to the extent they qualify as "original works of authorship." 17 U.S.C. § 102(a) ; see also Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 348, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ("Originality remains the sine qua non of copyright"). Copyright laws protect original expression, not ideas. See Leigh, 212 F.3d at 1214-15.
There are also varying levels of copyright protection afforded to works. Some works, like creative or derivative works, receive "thicker" protection, while protection for compilations and architectural works receive "thin" protection that protects only the original arrangement and coordination of spaces, elements, and other staple building components of a work. See Home Design, 825 F.3d at 1321-22. Photographs are generally protected only as to the "posing of the subject matter, lighting, angle, selection of film and camera, evoking a desired expression, and almost any other variant involved." Epic Metals Corp. v. CONDEC, Inc., 867 F. Supp. 1009, 1013 (M.D. Fla. 1994). When examining works at the level of protected expression, subtle differences can indicate a lack of copyright infringement. See Home Design, 825 F.3d at 1324.
In this case, the Catalog and Defendant's marketing materials are attached to the Complaint (Docs. 1-2, 1-3), meaning they can be considered by the Court on Defendant's Motion to Dismiss. See Financial Sec. Assur., Inc. v. Stephens, Inc., 500 F.3d 1276, 1284 (11th Cir. 2007) (stating the general rule that courts consider the face of a complaint and the documents attached thereto when analyzing a motion to dismiss). Plaintiff's Response also makes clear that the allegedly protected material is the "photographs of the balusters, contained in Plaintiff's catalog." (Doc. 9 at 9 (emphasis in original)). Therefore, the Court's analysis of substantial similarity is limited to the copyright protections afforded to pictorial, graphic, or sculptural works under 17 U.S.C. § 102(a)(5).
Due to this admission by Plaintiff, the Court does not address Defendant's arguments for dismissal of Counts I through XVI based on the unprotected nature of the subject images if they were construed as architectural works under 17 U.S.C. § 102(a)(8).
Despite Plaintiff's strong rhetoric to the contrary, the Court finds the portions of the Catalog which were allegedly copied by Defendant do not constitute protected original expression. The protected aspects of Plaintiff's photographs, to the extent they are individually protected as photographs and not collectively protected as a compilation, include aspects such as how the balusters are posed separately and with rods affixed to either end; the background color; and the inclusion of descriptive material surrounding each baluster design. See Epic Metals, 867 F. Supp. at 1013. None of those aspects are present in Defendant's marketing materials (Doc. 1-3). Therefore, a comparison of the protected aspects of the Catalog's photographs and Defendant's marketing materials, which are undisputed and attached to the Complaint, reveals they are not substantially similar as a matter of law.
For purposes of its ruling, the Court assumes in Plaintiff's favor that the images are individually protected by Plaintiff's registered copyright and are not registered as a compilation in the form of the Catalog as a whole.
Moreover, Defendant's copying of the baluster designs alone would not be a wrongful copying since the baluster image itself is not the type of original expression protected by copyright law. To find otherwise would require the Court to find a picture of a bare, centuries-old baluster design is an expression separable from the idea of the baluster itself. The Court is unwilling to make such a finding, as it is contrary to copyright law. See Leigh, 212 F.3d at 1214-15 (citing Franklin Mint Corp. v. Nat'l Wildlife Art Exch., Inc., 575 F.2d 62, 65 (3d Cir. 1978) (finding an owner's copyright protection in a photograph extends to the original expression—such as lighting, shading, timing, etc.—but not to the object being photographed)). As such, even construing the allegations that copying occurred as true, Plaintiff has failed to allege a wrongful copying and Counts I through XVI are subject to dismissal.
B. FDUTPA Claim (Count XVII)
Plaintiff's Complaint alleges federal question subject matter jurisdiction under 28 U.S.C. § 1331. (Doc. 1 at ¶ 3). When the Complaint was filed, the Court had original jurisdiction over Plaintiff's copyright infringement claims and supplemental jurisdiction over Plaintiff's FDUTPA claim. However, in light of the Court's decision to dismiss Plaintiff's copyright infringement claims over which the Court had original jurisdiction, the Court can decline to exercise supplemental jurisdiction over the remaining FDUTPA claim. See 28 U.S.C. § 1367(c)(3) ; see also Palmer v. Hospital Authority of Randolph County, 22 F.3d 1559, 1566 (11th Cir. 1994) (describing the difference between the district courts’ power to exercise supplemental jurisdiction versus its discretion to not hear a supplemental claim under 28 U.S.C. § 1367 ).
Though the Court acknowledges it has the power to continue exercising supplemental jurisdiction in this case, the Court chooses to exercise its discretion and refuse to do so. Given the unique nature of Plaintiff's state law claim and its alleged divergence from the conduct underpinning Plaintiff's copyright infringement claims, Florida's state court system will be well suited to determine whether the copying of unprotected photographs from Plaintiff's Catalog qualifies as a deceptive or unfair practice under state law.
Accordingly, after due consideration, it is
ORDERED:
1. The Defendant's Motion to Dismiss is GRANTED in part .
2. Counts I through XVI of the Complaint are DISMISSED with prejudice .
3. Count XVII of Plaintiff's Complaint is DISMISSED without prejudice .
4. The Clerk of Court is DIRECTED to enter judgment in accordance with this Order, terminate all pending motions, and close the file.
DONE and ORDERED in Jacksonville, Florida this 2nd day of September, 2020.