Bowery v. Best Little Sites

671 F.Supp.3d 1297

Great BOWERY d/b/a Trunk Archive, Plaintiff, v. BEST LITTLE SITES d/b/a www.comicbookmovie.com; Nathan Best;Mark Cassidy; and Joshua Wilding, Defendants.

Case No. 2:21-cv-00567-DBB-JCB

United States District Court, D. Utah

Signed May 2, 2023

Mathew K. Higbee, Ryan E. Carreon, Pro Hac Vice, Law Firm of Higbee & Associates, Santa Ana, CA, for Plaintiff.

Robert E. Aycock, William Chadwick, Kimball Anderson, Salt Lake City, UT, for Defendants Best Little Sites, Nathan Best.

Robert E. Aycock, William Chadwick, Kimball Anderson, Salt Lake City, UT, Robert H. Scott, Akerman LLP, Salt Lake City, UT, Caroline H. Mankey, Akerman LLP, Los Angeles, CA, for Defendants Mark Cassidy, Joshua Wilding.

MEMORANDUM DECISION AND ORDER DENYING IN PART AND GRANTING IN PART PLAINTIFF'S [72] MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS AND DENYING [80] DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS

David Barlow, United States District Judge

Before the court are two motions for judgment on the pleadings. Plaintiff Great Bowery, doing business as Trunk Archive ("Trunk Archive"), moves for partial judgment on the pleadings as to the counterclaim filed by Defendants Best Little Sites, doing business as comicbookmovie.com ("CBM"), and Nathan Best ("Mr. Best") (collectively "CBM Defendants").¹ CBM Defendants, Mark Cassidy ("Mr. Cassidy"), and Joshua Wilding ("Mr. Wilding") (collectively "Defendants") move for judgment on the pleadings.² Having considered the briefing and relevant law, the court finds that oral argument would not materially assist the court in reaching a decision.³ For the reasons below, the court denies in part and grants in part Trunk Archive's motion and denies Defendants' motion.

BACKGROUND

Trunk Archive represents certain photographers.⁴ It licenses their photographs and images.⁵ CBM operates a website where third-party users create and post articles.⁶ CBM does not direct users as to article content, quality, or timing.⁷ The site has a copyright policy that allows users to submit DMCA ("Digital Millennium Copyright Act") take-down requests.⁸ It also contains community guidelines that prohibit the posting of infringing content.⁹ Users must consent to these policies before posting.¹⁰

At issue are eighteen photographs taken by Annie Leibovitz ("Ms. Leibovitz").¹¹ The photographs originally appeared in the publication Vanity Fair.¹² Ms. Leibovitz granted Trunk Archive the exclusive right to license the photographs.¹³ In February 2019, Trunk Archive discovered articles on CBM's website containing unlicensed copies of the photographs.¹⁴ Trunk Archive asserts that CBM paid Mr. Cassidy and Mr. Wilding to create these articles.¹⁵ It also asserts that Mr. Best "has the ability to supervise and control [site] content."¹⁶

CBM Defendants assert that neither CBM nor Mr. Best directed anyone to post the images ("Subject Images") on the website.¹⁷ The Subject Images were not "stored on servers belonging to or controlled by CBM or [Mr.] Best."¹⁸ They "were displayed on CBM's website by embedding the image[s] and linking back to a third-party server that was not owned or controlled by CBM."¹⁹ Mr. Best and CBM disclaim actual knowledge that the Subject Images were allegedly infringing or even posted to the website until they received notice of the litigation.²⁰ CBM removed the images once the instant litigation began.²¹

On September 27, 2021, Trunk Archive filed its Complaint.²² CBM Defendants filed their Answer and Counterclaim on June 23, 2022.²³ Trunk Archive moved to dismiss the counterclaim and strike certain affirmative defenses.²⁴ The court granted in part and denied in part the motion on October 13, 2022.²⁵ On November 29, 2022, Trunk Archive filed an answer and its Motion for Judgment on the Pleadings.²⁶ CBM Defendants filed an opposition on January 17, 2023,²⁷ and Trunk Archive replied on January 31, 2023.²⁸ On February 1, 2023, Defendants filed their Motion for Judgment on the Pleadings.²⁹ Trunk Archive responded on February 2, 2023.³⁰ Defendants filed their reply one week later.³¹

STANDARD

Rule 12(c) of the Federal Rules of Civil Procedure permits a party to move for judgment on the pleadings after pleadings are closed.³² The motion "should not be granted unless the moving party has clearly established that no material issue of fact remains to be resolved and the party is entitled to judgment as a matter of law."³³ Such a motion is evaluated by "the same standard that applies to a Rule 12(b)(6) motion" to dismiss for failure to state a claim.³⁴ The "[p]laintiff must provide 'enough facts to state a claim to relief that is plausible on its face[.]' "³⁵ "A pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not do.' "³⁶ "[A]ll well-pleaded factual allegations, as distinguished from conclusory allegations, are accepted as true and viewed in the light most favorable to . . . the nonmoving party."³⁷

DISCUSSION

The parties collectively raise three issues. Trunk Archive moves for partial judgment on the pleadings as to CBM Defendants' affirmative defenses of "embedding" and the DMCA safe harbor provision. For their part, Defendants move for judgment on the pleadings on Trunk Archive's copyright infringement claim. The court addresses each issue in order.

I. "Embedding" Affirmative Defense

Trunk Archive moves for judgment on the pleadings on CBM Defendants' "embedding" affirmative defense. "Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party's server, into the coder's website."³⁸ When a user "visits a website that includes an 'embed code,' the user's internet browser is directed to retrieve the embedded content from the third-party server and display it on the website."³⁹ "As a result of this process, the user sees the embedded content on the website, even though the content is actually hosted on a third-party's server, rather than on the server that hosts the website."⁴⁰

Trunk Archive argues that since the act of displaying a work publicly means to "transmit or communicate a display to the public,"⁴¹ "each unauthorized showing of a work through a computer infringes on the owner's right of public display."⁴² It likens the act of embedding to an intentional process where the images are communicated to users "via a seamlessly integrated webpage program."⁴³ As such, the mere fact that CBM embedded the images—instead of uploading them from their own servers—is not determinative of whether the images were "publicly displayed."⁴⁴ Trunk Archive contends that the court should focus on the "practical functional perspective"—the display of copyrighted images—instead of letting an "embedding" "hyper[-]technical loophole" excuse liability.⁴⁵

In response, CBM Defendants cite the "server" test as set forth in Perfect 10, Inc. v. Google, Inc. and later affirmed by the Ninth Circuit.⁴⁶ In Perfect 10, the Ninth Circuit addressed whether Google's unauthorized display of thumbnail and full-sized images violated the copyright holder's rights. The court first defined an image as a work "that is fixed in a tangible medium of expression . . . when embodied (i.e., stored) in a computer's server (or hard disk, or other storage device)."⁴⁷ The court defined "display" as an individual's action "to show a copy . . . , either directly or by means of a film, slide, television image, or any other device or process . . . ."⁴⁸ "The image stored in the computer is the 'copy' of the work for purposes of copyright law."⁴⁹ Thus, the "computer owner shows a copy 'by means of a . . . device or process' when the owner uses the computer to fill the computer screen with the photographic image stored on that computer, or by communicating the stored image electronically to another person's computer."⁵⁰ Importantly, "the owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner inline links to or frames the electronic information."⁵¹ Simply put, if a party displayed a copyrighted image that it had stored on its own systems, then it had infringed; if it displayed an image by merely linking or framing content from other websites, then it had not infringed.

The Ninth Circuit found that Google infringed with the thumbnail images because Google's computers had stored copies of Perfect 10's images and then communicated the copies to users.⁵² But Google had not displayed copies of the full-size images when it merely framed inline linked images appearing on the users' screens.⁵³ The court reasoned that Google had only provided HTML instructions that "direct a user's browser to a website publisher's computer that stores the full-size photographic images."⁵⁴ Google had not stored the images. "[T]he owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner inline links to or frames the electronic information."⁵⁵ "[S]uch assistance . . . does not constitute direct infringement of the copyright owner's display rights."⁵⁶ By the same token, CBM Defendants contend that the "server" test applies here.

Addressing the "server" test, Trunk Archive argues that a party could still be liable for infringement through the process of embedding. It contends that the Copyright Act does not require physical possession to violate the Act's "display" right. In consequence, a requirement for a party to have stored the images before infringement would turn the "display" right into a subset of the "reproduction" right.⁵⁷ Trunk Archive argues that Congress did not intend to " 'freeze the scope of copyrightable technology' to then-existing methods of expression."⁵⁸ In essence, it contends that it is immaterial whether a provider displays an image by embedding it or by uploading it from its own server.⁵⁹

The relevant facts are not in dispute. CBM Defendants did not store the Subject Images on servers that they...