Edland v. Basin Elec. Power Coop.

TRAVIS EDLAND, Plaintiff, v. BASIN ELECTRIC POWER COOPERATIVE, Defendant.

4:21-CV-04008-KES

UNITED STATES DISTRICT COURT DISTRICT OF SOUTH DAKOTA SOUTHERN DIVISION

July 21, 2021

ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION TO DISMISS

Plaintiff, Travis Edland, brought suit against defendant, Basin Electric Power Cooperative, alleging three counts of copyright violations. Docket 1. Basin moves to dismiss the three counts in the complaint and seeks attorneys' fees. Docket 10. Edland opposes the motion in part and asks the court to dismiss Count III without prejudice. Docket 13. For the following reasons, the court grants in part and denies in part Basin's motion to dismiss.

FACTUAL BACKGROUND

The facts alleged in the complaint, accepted as true, are as follows:

Prior to July 11, 2020, Edland was employed at Basin's Deer Creek Station power plant located near Elkton, South Dakota. Docket 1 ¶ 8. Basin terminated Edland's employment on July 11, 2020. Id. ¶ 9.

For many years, Edland has maintained a YouTube channel with videos about his experiences with coyotes. Id. ¶ 10. YouTube uses technological protection measures (TPMs) to prevent unauthorized copying, recording, and distribution of video content posted by creators. Id. ¶ 15. Under YouTube's terms of service, users are forbidden from screen-capturing, recording, downloading, or otherwise copying videos posted and streaming on the site. Id. ¶ 16.

Before July 11, 2020, Edland posted videos to his YouTube channel that advocated for workplace protections at the Deer Creek Station in response to the COVID-19 pandemic. Id. ¶ 11. In these videos, Edland discussed recommendations from the Centers for Disease Control (CDC). Id. Two particular videos (the Videos) posted by Edland on or about July 11, 2020, caused Basin to terminate Edland's employment. Id. ¶ 12. The first video was about 30 minutes in duration and had a file name of IMG_0599.MP4. Id. ¶ 13. The second video was about 37 minutes in duration and had a file name of IMG_0599.MP4. Id. Edland removed the videos from public viewing shortly after he posted them to his YouTube channel. Id. ¶ 14. On July 11, 2020, Basin, through an employee, used a mobile phone to record the Videos without authorization from Edland or YouTube and in violation of YouTube's terms of service. Id. ¶¶ 17-18, 20. Without the use of technology to circumvent YouTube's TPMs, Basin would not have been able to obtain a copy of the Videos absent authorization from Edland. Id. ¶ 19. Basin made additional copies, distributed additional copies, and otherwise used, copied, reproduced, performed, and viewed the Videos without Edland's authorization and in violation of Edland's rights. Id. ¶ 21.

Edland was and remains the exclusive owner of all copyrights associated with the Videos. Id. ¶ 23. His copyrights associated with the Videos are registered with the United States Copyright Office, registration number Pau004055591. Id. ¶ 24. Edland's complaint alleges violations of the federal Copyright Act and the Digital Millennium Copyright Act and common law copyright infringement. See Docket 1 ¶¶ 22-46.

LEGAL STANDARD

Rule 12(b)(6) provides for dismissal of a claim if the claimant has failed to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). "To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.' " Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

The court must accept the well-pleaded allegations in the complaint as true and draw all reasonable inferences in favor of the non-moving party. Schriener v. Quicken Loans, Inc., 774 F.3d 442, 444 (8th Cir. 2014). The "plaintiff's obligation to provide the grounds of his entitle[ment] to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555 (alteration in original) (internal quotation marks and citation omitted). "If a plaintiff cannot make the requisite showing, dismissal is appropriate." Abdullah v. Minnesota, 261 F. App'x 926, 927 (8th Cir. 2008).

DISCUSSION

I. Consideration of Materials Outside the Pleadings on a Rule 12(b)(6) Motion

Basin asks the court to consider 4 exhibits in support of its motion to dismiss. Docket 12. The exhibits are: (1) a screenshot of Edland's copyright registration for the Videos, (2) Edland's OSHA complaint, (3) Basin's response to Edland's OSHA complaint, and (4) a letter between counsel discussing, inter alia, dismissal of Count III. See Dockets 12-1, 12-2, 12-3, 12-4. Edland agrees that exhibit 1 is proper for the court to consider, but he opposes consideration of exhibits 2, 3, and 4.

"Though matters outside the pleading may not be considered in deciding a Rule 12 motion to dismiss, documents necessarily embraced by the complaint are not matters outside the pleading." Ashanti v. City of Golden Valley, 666 F.3d 1148, 1151 (8th Cir. 2012) (quoting Enervations, Inc. v. Minn. Mining & Mfg. Co., 380 F.3d 1066, 1069 (8th Cir. 2004)). "Documents necessarily embraced by the pleadings include 'documents whose contents are alleged in a complaint and whose authenticity no party questions, but which are not physically attached to the pleading.' " Id. (quoting Kushner v. Beverly Enters., Inc., 317 F.3d 820, 831 (8th Cir. 2003)). Materials that are part of the public record may also be considered by a court in deciding a Rule 12(b)(6) motion. Levy v. Ohl, 477 F.3d 988, 991 (8th Cir. 2007).

Here, exhibit 1 is a screenshot of a public record available online, and it is embraced by the complaint by specific reference to the copyright registrationnumber. Both parties agree as to the document's authenticity and urge the court to consider it. Thus, the court considers exhibit 1 in its analysis of Basin's motion to dismiss.

Basin asks the court to consider exhibits 2, 3, and 4 on the same grounds as exhibit 1. But Basin provides no support for its conclusion that the exhibits are embraced by the pleadings or a matter of public record. As to exhibits 2 and 3, the complaint makes no mention of an OSHA proceeding that occurred after Edland was terminated by Basin. And exhibit 4 is a private letter between counsel that discusses how litigation would proceed after the complaint was filed. Basin relies on Federal Rule of Evidence 201 and asks the court to take judicial notice of the information in exhibits 2, 3, and 4. Docket 11 at 6 n.2; Docket 14 at 3-4. Taking judicial notice of information filed in or attached to an affidavit, though, would create endless exceptions to the limited material the court considers on a motion to dismiss. The discovery and trial processes, not a motion to dismiss, allow the parties a full exchange of information and resolution of questions of fact. Thus, the court will not consider exhibits 2, 3, and 4 when analyzing Basin's motion. And because exhibits 2, 3, and 4 were "presented to [but] excluded by the court," Basin's motion is analyzed under Rule 12(b)(6) and not under Rule 12(d), which converts a motion to dismiss into a motion for summary judgment. Fed. R. Civ. P. 12(d); Sorace v. United States, 788 F.3d 758, 767 (8th Cir. 2015).

II. Count I: Copyright Act - Infringement

In Count I, Edland asserts that Basin infringed on Edland's exclusive rights in violation of the Copyright Act, 17 U.S.C. § 106, when it willfully reproduced, distributed, performed, and displayed the Videos without Edland's authorization. Docket 1 at ¶¶ 26-34. Basin argues that Count I should be dismissed because Edland fails to establish a valid copyright registration as a precondition for an infringement claim. Docket 11 at 7. Basin also argues that its use of the Videos is protected by the fair use defense. Id.

A. Validity of Copyright Registration

Under the Copyright Act, "no civil action for infringement of the copyright in any . . . work shall be instituted until preregistration or registration of the copyright claim has been made . . . ." 17 U.S.C. § 411(a). A certificate of registration is prima facie evidence of a valid copyright and establishes a rebuttable presumption of validity. Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039, 1042 (8th Cir. 2003) (citing 17 U.S.C. § 410(c)). A certificate of registration is valid, regardless of whether it contains any inaccurate information, unless "inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate" and "the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration." § 411(b)(1).

Basin argues that Edland's certification of registration is invalid because his application for registration contained inaccurate information and he "should have known" that the information was inaccurate. Docket 11 at 7.Specifically, Basin argues that the Videos were incorrectly registered as "unpublished" works when in fact they had previously been "published" on YouTube. Id. at 6-7. But whether the Videos were actually published or unpublished, whether Edland's application contained inaccurate information, and whether he knew the application contained inaccurate information are questions of fact that go beyond the court's Rule 12(b)(6) inquiry.

Here, the complaint states that the Videos are registered with the United States Copyright Office, and exhibit 1 submitted by Basin also indicates that Edland holds a copyright registration in the Videos. This allows the court to draw the inference that Edland has a valid copyright registration for the Videos. Thus, Basin's motion to dismiss Count I based on invalid copyright registration is denied.

B. Copyright Infringement

Basin argues that Edland's copyright infringement claim should be dismissed based on Basin's assertion of the fair use defense. Docket 11 at 8-14. Edland asserts that the complaint...