Opinion
Civil No. 2:19cv610
2020-08-07
Jeffrey R. WERNER, Plaintiff, v. BN MEDIA, LLC, and Does 1 through 50 inclusive, Defendants.
Brian Nelson Casey, Taylor Walker PC, Virginia Beach, VA, Saba A. Basria, Higbee and Associates, Santa Ana, CA, for Plaintiff. Damon William Wright, Venable LLP, Washington, DC, Anna Hart Mechling, Gordon Rees Scully Mansukhani, Williamsburg, VA, Jeffrey Alexander Hord, Paley Rothman Goldstein Rosenberg Eig & Cooper Chartered, Bethesda, MD, Ryan Michael Poteet, Gordon Rees Scully Mansukhani, LLP, Alexandria, VA, for Defendants.
Brian Nelson Casey, Taylor Walker PC, Virginia Beach, VA, Saba A. Basria, Higbee and Associates, Santa Ana, CA, for Plaintiff.
Damon William Wright, Venable LLP, Washington, DC, Anna Hart Mechling, Gordon Rees Scully Mansukhani, Williamsburg, VA, Jeffrey Alexander Hord, Paley Rothman Goldstein Rosenberg Eig & Cooper Chartered, Bethesda, MD, Ryan Michael Poteet, Gordon Rees Scully Mansukhani, LLP, Alexandria, VA, for Defendants.
ORDER
Arenda L. Wright Allen, United States District Judge
Pending before the Court is a Motion to Dismiss filed by Defendant BN MEDIA, LLC ("Defendant"). Mot. to Dismiss, ECF No. 32. For the following reasons, Defendant's Motion (ECF No. 32) is DENIED .
I. BACKGROUND
When ruling on a motion to dismiss for failure to state a claim, courts accept a complaint's well-pled factual allegations as true and draw any reasonable inferences in favor of the plaintiff. See Wag More Dogs, Ltd. v. Cozart , 680 F.3d 359, 365 (4th Cir. 2012). The Court therefore reviews the facts as alleged by Mr. Werner in his Amended Complaint.
Plaintiff Mr. Werner is a professional photographer. Am. Compl. at 2, ECF No. 30. He is known for his work capturing videos and photographs of dangerous stunts, exotic animals, "sideshow eccentricities, and people who have overcome incredible obstacles." Id. at 3. His work includes two photographs of Dillie the Deer ("Dillie the Deer Images") and two photographs of conjoined twins ("Conjoined Twins Images"). Id. at 4. Mr. Werner registered these images with the United States Copyright Office. Id. The Dillie the Deer Images are registered under registration number VAu 1-009-693 and the Conjoined Twins Images are registered under registration number VAu 1-029-705. Id. Mr. Werner is the author and sole rights holder of these photographs. Id.
In an effort to protect his rights to all of his photographs, Mr. Werner uses third-party reverse image search software to detect potential infringements. Id. Despite using such software, it sometimes takes years to detect a potential infringement. Id. Additionally, after a list of potential infringements is generated by the software, each search result must be reviewed manually to verify that the result is not a false positive or a licensed use. Id.
Defendant operates the website "https://www.beliefnet.com/" ("Beliefnet"). Id. Beliefnet "provides award winning inspirational online and video content for diverse spiritual audiences." Id. (quotation omitted). Columnists and contributors submit articles, which are then reviewed by Beliefnet before they are published on the website. Id. at 4–5.
On or about May 11, 2018, Mr. Werner discovered that the Dillie the Deer Images were used in an article published on Beliefnet titled "Dillie the Blind Deer is so Dear to Dr. Melanie Butera and Family." Id. at 5. On or about October 29, 2018, Mr. Werner discovered that the Conjoined Twins Images were used in an article published on Beliefnet titled "Tatiana y Krista comparten sus ojos, pensamientos y sensaciones." Id. Mr. Werner did not give Defendant permission to use the photographs and Defendant knew it did not have permission to use the photographs. Id.
On January 2, 2020, Mr. Werner filed an Amended Complaint alleging copyright infringement under 17 U.S.C. § 101, et seq. Id. at 5–6. Defendant filed a Motion to Dismiss under Federal Rule of Civil Procedure 12(b) for failure to state a claim. Mot. to Dismiss, ECF No. 32. Defendant argues that Plaintiff's claim is time-barred under the applicable statute of limitations. Mem. in Supp. at 4–6, ECF No. 32-1. Defendant also argues that even if Plaintiff's claim is not time-barred, Plaintiff cannot recover because "a successful copyright plaintiff can gain retrospective relief only three years back from the time of the suit" and there have been no infringing acts in the past three years. Id. at 7–8. The Motion to Dismiss is fully briefed and ripe for decision.
II. LEGAL STANDARDS
A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) tests the sufficiency of a complaint. Rule 12(b)(6) permits a defendant to seek dismissal of a complaint based on a plaintiff's "failure to state a claim upon which relief can be granted." Fed. R. Civ. P. 12(b)(6). A motion to dismiss for failure to state a claim should be granted if the complaint does not allege "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). "The plausibility standard is not akin to a ‘probability requirement,’ but it asks for more than a sheer possibility that [the] defendant" is liable. Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). "Facts that are ‘merely consistent with’ liability do not establish a plausible claim to relief." United States ex rel. Nathan v. Takeda Pharm. N. Am., Inc. , 707 F.3d 451, 455 (4th Cir. 2013). The " ‘factual allegations must be enough to raise [the] right to relief above the speculative level,’ thereby ‘nudging [the plaintiff's] claims across the line from conceivable to plausible.’ " Vitol, S.A. v. Primerose Shipping Co. , 708 F.3d 527, 543 (4th Cir. 2013) (quoting Twombly , 550 U.S. at 555, 127 S.Ct. 1955 ) (alterations omitted).
At this stage, as noted above, "(1) the complaint is construed in the light most favorable to the plaintiff, (2) its allegations are taken as true, and (3) all reasonable inferences that can be drawn from the pleading are drawn in favor of the pleader." 5B CHARLES A. WRIGHT ET AL. , FEDERAL PRACTICE & PROCEDURE § 1357 & n.11 (3d ed.) (collecting cases); accord Wag More Dogs , 680 F.3d at 365. But courts are not bound by "legal conclusions drawn from the facts" and "need not accept as true unwarranted inferences, unreasonable conclusions, or arguments." E. Shore Mkts., Inc. v. J.D. Assocs. Ltd. P'ship , 213 F.3d 175, 180 (4th Cir. 2000). A threadbare recitation of the "elements of a cause of action, and bare assertions devoid of further factual enhancement fail to constitute well-pled facts for Rule 12(b)(6) purposes." Nemet Chevrolet, Ltd. v. Consumeraffairs.com, Inc. , 591 F.3d 250, 255 (4th Cir. 2009) ; see also Iqbal , 556 U.S. at 663, 129 S.Ct. 1937 (noting that "mere conclusory statements" are insufficient).
III. ANALYSIS
A. Statute of Limitations
"The limitations period for bringing copyright infringement claims is three years after the claim accrues. A claim accrues when one has knowledge of a violation or is chargeable with such knowledge." Lyons Partnership, L.P. v. Morris Costumes, Inc. , 243 F.3d 789, 796 (4th Cir. 2001) (citations and quotations omitted).
The Court agrees with Plaintiff that his Amended Complaint should not be dismissed at this early juncture "based on the defendants' statute of limitations affirmative defense." Brittle v. Warner Bros. Ent., Inc. , 2017 WL 11503437, at *3 (E.D. Va. Aug. 28, 2017). Plaintiff alleges in the Amended Complaint that he became aware of the infringements on May 11, 2018 and October 29, 2018. Am. Compl. at 5, ECF No. 30. Accepting these dates, Plaintiff's suit was filed well within the three-year statute of limitations.
Defendant argues that this Court should dismiss the claims because Plaintiff is chargeable with knowledge prior to those dates because of his use of reverse image search software. Mem. in Supp. at 5–6, ECF No. 32-1. The Court cannot determine from the allegations in the Amended Complaint that Plaintiff's deployment of reverse image software should render him chargeable with knowledge beyond the three-year statute of limitations deadline.
Plaintiff has alleged that it is costly, time-consuming, and labor intensive to run the reverse image searches on all of his works and to confirm that the results are violations of his rights. Am. Compl. at 3, ECF No. 30. This is sufficient at the Motion to Dismiss stage. Whether Mr. Werner acted with reasonable diligence to discover violations may be more appropriately addressed at the summary judgment stage, after the parties have conducted discovery and can present evidence on the diligence—or lack thereof—of Mr. Werner. Defendant's Motion to Dismiss Plaintiff's claim as time-barred under the statute of limitations is denied.
B. Damages
Under 17 U.S.C. § 504(b), a "copyright owner is entitled to recover damages suffered by him or her as a result of the infringement," as well as any profits of the infringer that are "attributable to the infringement and are not taken into account in computing the actual damages." A successful plaintiff may alternatively elect to recover statutory damages instead of actual damages and profits. 17 U.S.C. § 504(c). And, as addressed above, the statute provides that "[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued." 17 U.S.C. § 507(b). This has consequences for determinations of damages.
The United States Supreme Court has been clear that "independent of whether the injury rule or discovery rule applies [in determining the statute of limitations deadline], under the Copyright Act's three-year provision, an infringement is actionable within three years, and only three years , of its occurrence, and that the infringer is insulated from liability for earlier infringements of the same work." Sohm v. Scholastic, Inc. , 959 F.3d 39, 51 (2d Cir. 2020) (internal alterations omitted) (emphasis added) (quoting Petrella v. Metro-Goldwyn-Mayer, Inc. , 572 U.S. 663, 671, 134 S.Ct. 1962, 188 L.Ed.2d 979 (2014) ). Under either theory of accrual, the " § 507(b) [ ] limitations period allows plaintiffs to gain retrospective relief running only three years back from the date the complaint was filed." Id. (internal alterations omitted) (quoting Petrella , 572 U.S. at 672, 134 S.Ct. 1962 ).
Thus, although the discovery rule determines whether a plaintiff timely filed suit, "a three-year lookback period from the time a suit is filed ... determine[s] the extent of the relief available." Id. "A plaintiff's recovery is limited to damages incurred during the three years prior to filing suit." Id. (emphasis added).
Defendant misunderstands this holding when arguing that a plaintiff can recover only for infringements occurring in the previous three years. Such a ruling would replace the discovery rule adopted by the Fourth Circuit with an injury rule. If a plaintiff can only recover for infringements occurring in the past three years—rather than damages incurred in the past three years—then a claim would have to be discovered at the exact moment of infringement for the plaintiff to fully recover for that infringement. The Court rejects that this was the Supreme Court's intent in announcing the Petrella retrospective relief rule. See Petrella , 572 U.S. at 677, 134 S.Ct. 1962 (explaining that laches cannot be invoked as a bar to damages because 17 U.S.C. § 507(b) "itself takes account of delay"). The Petrella Court noted specifically that it has not yet addressed the propriety of the discovery accrual rule and that "[t]he overwhelming majority of courts use discovery accrual in copyright cases." Id. at 670 n.4, 134 S.Ct. 1962 (quotation omitted).
Plaintiff has alleged adequately that he incurred damages in the three years preceding filing suit. Specifically, Plaintiff alleges that he relies on licensing opportunities for a portion of his income. Am. Compl. at 3, ECF No. 30. Plaintiff has therefore alleged damages in the form of the licensing fee that Defendant would have been required to pay for a license to use Plaintiff's photographs in their published articles for the three years prior to his filing suit.
The Court declines to adopt the de facto injury rule suggested by Defendant. Plaintiff has alleged damages incurred in the three years prior to his filing suit. Defendant's Motion to Dismiss for a "valueless" claim is denied.
IV. CONCLUSION
For the foregoing reasons, Defendant's Motion to Dismiss (ECF No. 32) is DENIED . The Clerk is REQUESTED to forward a copy of this Order to counsel of record for all parties.