Fischer v. Forrest

968 F.3d 216

James H. FISCHER, Plaintiff-Appellant,

v.Sandra F. FORREST, Shane R. Gebauer, Brushy Mountain Bee Farm, Inc., Stephen T. Forrest, Jr., Defendants-Appellees.

Nos. 18-2955-cv

18-2959-cv

August Term 2019

United States Court of Appeals, Second Circuit.

Argued: December 12, 2019

Decided: August 4, 2020

Gregory Keenan (Andrew Grimm, on the brief), Digital Justice Foundation, Floral Park, NY, for Plaintiff-Appellant.

Daniel K. Cahn (Seth L. Hudson, Clements Bernard Walker, Charlotte, NC, on the brief), Law Offices of Cahn & Cahn, Melville, NY, for Defendants-Appellees.

Before: PARKER and CHIN, Circuit Judges, and COTE, District Judge.¹

BARRINGTON D. PARKER, Circuit Judge:

James H. Fischer appeals from a judgment of the United States District Court for the Southern District of New York (Engelmayer, J .). The district court granted summary judgment in favor of the Defendants-Appellees, Sandra Forrest, Shane Gebauer, Stephen Forrest, Jr., and Brushy Mountain Bee Farm ("Brushy Mountain") on Fischer's claims of copyright infringement and copyright management information ("CMI") removal. The controversy underlying this litigation arose from the promotion by the Forrests of their own version of a honey harvesting product. The new product replaced one Fischer had invented and that the Forrests had sold for many years through the website and catalogue of Brushy Mountain, a company the Forrests owned. Judge Engelmayer concluded that Fischer was not entitled to statutory damages or attorneys’ fees, the relief he sought on his copyright infringement claim, because the first allegedly infringing act occurred before the work was registered. See 17 U.S.C. § 412. The district court also concluded that Fischer failed to establish a CMI removal claim under the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1201 et seq . We agree and accordingly, we affirm the judgment of the district court.

BACKGROUND

Fischer is an apiarist who developed a product known as Fischer's Bee-Quick in 1999. Fischer's Bee-Quick is a "honey harvesting aid" that is used to clear bees from the superstructures placed on beehives where bees store honey. Bee-Quick is sprayed on a fume board, which is placed on the superstructures. The scent causes the bees to exit the structure, at which point the honey can be harvested. Bee-Quick was distinguished from the products of Fischer's competitors because it was non-toxic and did not have the offensive odor associated with other honey harvesting aids.

Brushy Mountain was a mail-order business specializing in bee-keeping supplies. It was owned and operated during the relevant period by Sandra and Stephen Forrest and Shane Gebauer, its President. Brushy Mountain circulated a catalogue of products well-known in bee-keeping circles, featuring pictures and product descriptions.

Brushy Mountain began featuring Fischer's Bee-Quick in its catalogue in 2002 and described it as follows:

This 100% Natural, non-toxic blend of oils and herb extracts works just like Bee Go and it smells good! Fischer's Bee Quick is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go? Are you tired of using a hazardous product on the bees you love? Then this is the product for you! J. App'x at 1JA-267.

Fischer sold Bee-Quick on his own website, Bee-Quick.com, starting around 2000 and he continued to do so during the years it also was available from Brushy Mountain. The description of Bee-Quick in Fischer's brochure, which was featured on the Bee-Quick.com website, included the following phrases:

1. Are you tired of your spouse making you sleep in the garage after using Butyric Anhydride?

2. Are you tired of using hazardous products on the bees you love?

3. Fischer's Bee-Quick is a safe, gentle, and pleasant way to harvest your honey.

4. A Natural, Non-Toxic Blend of Oils and Herbal Extracts. J. App'x at 1JA-169.

Around 2010, Brushy Mountain claimed that Fischer's supply of Bee-Quick was unreliable and decided to stop offering it in its catalogue. In its place, Brushy Mountain started selling its own honey harvesting aid called Natural Honey Harvester. Brushy Mountain's January 2011 catalogue described its new product as follows:

For years we have promoted the use of a natural product to harvest honey but an unreliable supply of such a product has forced us to come out with our own. This 100% Natural, non-toxic blend of oils and herb extracts works just like Bee Go and it smells good! Natural Honey Harvester is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go? Are you tired of using hazardous products on the bees you love? Then this is the product for you! J. App'x at 1JA-160.

This text remained in the catalogue largely unchanged through 2014 and was featured on the Brushy Mountain website through 2011.

The similarities between the two descriptions are the basis for Fischer's claims. He contends that Brushy Mountain simply replaced "Fischer's Bee-Quick" with "Natural Honey Harvester" in their advertisements, and that this substitution constitutes copyright infringement and the unlawful removal of CMI. See 17 U.S.C. §§ 504, 1202.

After Fischer initiated this action, initially as a pro se litigant, the parties engaged in extensive motion practice.² The claims that were not dismissed proceeded through discovery, and eventually the Defendants-Appellees moved for summary judgment on the remaining claims. Magistrate Judge Andrew J. Peck, who was managing the pretrial activity, recommended granting the motion in its entirety in a July 2017 Report & Recommendation. The district court adopted that Report & Recommendation in full in a February 2018 order and opinion. The district court held that § 412 of the Copyright Act barred the recovery of statutory damages for copyright infringement because the alleged infringement predated the copyright registration. See 17 U.S.C. § 412. The district court also held that Fischer failed to establish a violation of the DMCA because the changes that Brushy Mountain had made to its catalogue did not constitute removal of CMI. This appeal followed.

STANDARD OF REVIEW

We review a grant of summary judgment de novo, "resolving all ambiguities and drawing all permissible factual inferences in favor of the party against whom summary judgment is sought." FTC v. Moses , 913 F.3d 297, 305 (2d Cir. 2019).³ A "court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a) ; see also Alabama v. North Carolina , 560 U.S. 330, 344, 130 S.Ct. 2295, 176 L.Ed.2d 1070 (2010) (quoting Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ).

DISCUSSION

I.

The Copyright Office registered Fischer's copyright for the Bee-Quick.com website, which includes the Bee-Quick brochure, on February 7, 2011.⁴ We assume Fischer's website and the text contained in it are copyrightable creative works and the registration for the website is valid.

As noted, Fischer has elected to pursue statutory damages. A copyright infringer can be held liable for either actual damages and profits obtained or for statutory damages. 17 U.S.C. § 504(a). However, § 412 precludes statutory damages or attorneys’ fees for "any infringement of copyright in an unpublished work commenced before the effective date of its registration" or "any infringement of copyright commenced after first publication of the work and before the effective date of its registration." 17 U.S.C. § 412. The Defendants-Appellees argue that § 412 bars statutory damages because the first allegedly infringing act occurred prior to February 7, 2011, the registration date of the copyright.

Fischer, on the other hand, argues that § 412 does not apply because there were no pre-registration infringements by the Defendants-Appellees. There are a host of problems with this contention. First, Fischer's pleadings repeatedly referred to the pre-registration use of the advertising text in the Brushy Mountain catalogue as infringements. For example, in the Third Amended Complaint (the operative complaint) Fischer alleged that "permission to use Plaintiff's intellectual property in any way had been revoked, as no permission was granted to use Plaintiff's copyrighted works in any way except specifically in the sales of [Bee-Quick]." Third Am. Compl. ¶ 26; 14 Civ. 1307, Dkt. No. 111. Fischer also alleged that the Defendants-Appellees "no longer had any of Plaintiff's product to sell" as of March 2010 and, consequently, at that point their use of the advertising text constituted infringement. Id . Fischer repeated this allegation of infringement with respect to a December 10, 2010 email from Brushy Mountain informing him that it would be discontinuing Bee-Quick. Fischer alleged that "[a]t that point, Defendants immediately lost any right, license, or permission to use any of Plaintiff's intellectual property." Id. at ¶¶ 46-47. Moreover, the allegedly infringing advertisement for Natural Honey Harvester was in the Brushy Mountain catalogue mailed on January 21, 2011 and the allegedly infringing use of the Bee-Quick advertising text was on the Brushy Mountain website as early as December 26, 2010.

Faced with these obstacles to statutory damages, Fischer's position shifted. He now argues that the Defendants-Appellees’ actions prior to his registration of the copyright are not infringements because they had a license to use his advertising material. Although Fischer posits the existence of a license, he has failed to adduce admissible evidence of its existence, much less evidence as to its scope, terms, or the dates of its creation or revocation.

In addition to being inconsistent with Fischer's pleadings, this argument was raised for the first time in his objections to the Magistrate Judge's July 2017 Report....