United States District Court, D. Maryland
ALAN J. GOLDSTEIN, Plaintiff,
METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC., Defendant.
THEODORE D. CHUANG, UNITED STATES DISTRICT JUDGE
copyright infringement action is before the Court on
Defendant Metropolitan Regional Information Systems,
Inc.'s Motion to Dismiss. Having reviewed the Complaint
and the briefs, the Court finds no hearing necessary.
See D. Md. Local R. 105.6 (2016). For the reasons
set forth below, the Motion is GRANTED IN PART and DENIED IN
Alan J. Goldstein is a professional photographer who holds a
copyright, effective March 18, 2009, for a 2007 photograph he
took of the Silver Spring Metro Station in Silver Spring,
Maryland (the "Metro Photograph"). Goldstein
displays the photograph on his website,
www.goldsteinphoto.com, where the photograph appears with the
watermark "© www.goldsteinphoto.com"
centered at the bottom of the image. Compl. ¶ 15, ECF
No. 1; Id. Ex. 2: Website Screenshot, ECF No. 1-2.
Defendant Metropolitan Regional Information Systems, Inc.
("MRIS") operates an online real estate listing
service that allows subscribers, mainly real estate brokers,
to post listings for available properties for a fee.
Subscribers agree to assign to MRIS the copyright in any
photograph they upload to the database.
2014, Goldstein learned that his Metro Photograph had been
uploaded to the MRIS database without his knowledge or
consent, either by MRIS itself, one of its agents, a
subscriber, or an agent of a subscriber, at various points in
2013 and 2014. The uploaded Metro Photograph still had
Goldstein's original watermark, but also had the
additional watermark "© 2013 MRIS" or
"© 2014 MRIS, " depending on the year the
image was uploaded, placed in the bottom left corner of the
image. In a letter dated August 11, 2014, Goldstein's
attorney informed MRIS that the Metro Photograph was being
used on its site without Goldstein's authorization and
demanded that MRIS cease use of the image immediately.
Despite this notice, the Metro Photograph continued to be
displayed on and uploaded to the MRIS site during 2014 and
continuing into 2015, at which point the MRIS watermark was
updated to "© 2015 MRIS." Goldstein asserts
that as a result of the unlawful inclusion of the Metro
Photograph on the MRIS database, the Metro Photograph has
been uploaded to additional real estate websites and used in
additional real estate promotional materials without his
permission. Goldstein also asserts that MRIS has obtained at
least one copyright registration for its website, and that
the site as it was registered included the Metro Photograph.
August 13, 2015, Goldstein filed this suit alleging five
causes of action: (1) direct copyright infringement, in
violation of 17 U.S.C. § 501 (2012); (2) contributory
copyright infringement, in violation of 17 U.S.C. § 501;
(3) a violation of the Digital Millennium Copyright Act
("DMCA"), specifically of 17 U.S.C. § 1202(a);
(4) another violation of the DMCA, specifically of 17 U.S.C.
§ 1202(b); and (5) a violation of the Lanham Act, 15
U.S.C. 1125(a)(1) (2012). On September 4, 2015, MRIS filed a
Motion to Dismiss that included nine exhibits, all of which
MRIS asserts are integral to Goldstein's Complaint.
Alternatively, MRIS argues that its Motion should be
converted to one for summary judgment. Goldstein filed a
Memorandum in Opposition to the Motion on September 21, 2015.
On October 8, 2015, MRIS filed a Reply Memorandum.
seeks dismissal of Goldstein's Complaint under Federal
Rule of Civil Procedure 12(b)(6) on the grounds that: (1)
Goldstein fails to allege adequate facts to state a plausible
claim of direct infringement; (2) Goldstein fails to allege
adequate facts to state a plausible claim of contributory
infringement; (3) MRIS is shielded from liability for direct
and contributory copyright infringement by the safe harbor
provision of the DMCA; (4) Goldstein fails to allege adequate
facts to state a plausible claim under the DMCA; and (5)
Goldstein's Lanham Act claim fails as a matter of law.
defeat a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), the complaint must allege enough facts to
state a plausible claim for relief. Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). A claim is
plausible when the facts pleaded allow "the Court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged." Id. Legal
conclusions or conclusory statements do not suffice.
Id. The Court must examine the complaint as a whole,
consider the factual allegations in the complaint as true,
and construe the factual allegations in the light most
favorable to the plaintiff. Albright v.
Oliver, 510 U.S. 266, 268 (1994); Lambeth
v. Bd. of Comm'rs of Davidson Cty., 407
F.3d 266, 268 (4th Cir. 2005).
Motion, MRIS relies on facts asserted in exhibits attached to
its Motion, which include: a declaration from Brian R.
Westley, MRIS's legal counsel, that details MRIS's
response to the August 11, 2014 letter from Goldstein's
counsel and later correspondence between the parties; copies
of written correspondence between the attorneys related to
possible settlement; a declaration from Darren Lee Bailey,
MRIS's Director of Application Management, that describes
how the MRIS system works generally and, in particular, how
images are uploaded to the system; copies of various parts of
United States Copyright Office indicating that the website
MRIS.com has filed a designation of agent for
notifications of infringement under the Copyright Act. MRIS
claims that this evidence may be considered by the Court on
the Motion to Dismiss because the evidence is "integral
to the complaint and authentic." Mem. Supp. Mot. Dismiss
("Mot. Dismiss") at 6, ECF No. 11-1.
a general rule, extrinsic evidence should not be considered
at the 12(b)(6) stage." Am. Chiropractic Assoc.,
Inc. v. Trigon Healthcare Inc., 367 F.3d 212,
234 (4th Cir. 2004) (internal quotation marks and citation
omitted). A court may consider documents attached to a motion
to dismiss only if those documents were "integral to and
explicitly relied on in the complaint, " if the
plaintiff had "actual notice" of those documents,
and if the plaintiff does not challenge their authenticity.
Id. This standard is not met here. Goldstein's
claims are based on the repeated uploading of his copyrighted
image to the MRIS database and MRIS's insertion of its
own copyright watermark on that image. In light of
Goldstein's claims, it cannot fairly be argued that the
Complaint explicitly relied on the additional settlement
designation of an agent for notifications of infringement.
Further, any claim that Goldstein explicitly relied on, or
had notice of, declarations of MRIS's attorney and its
Director of Application Management executed after the
Complaint was filed would be frivolous. These documents
plainly cannot be considered integral to the Complaint and so
will not be considered in evaluating the Motion to Dismiss.
MRIS suggests that this Court convert the Motion into one for
summary judgment, at which point the Court could consider the
exhibits. However, Goldstein, citing Federal Rule of Civil
Procedure 56(d), asserts that summary judgment would be
premature because he has not yet had time to conduct
discovery. Pl's Opp'n Mot. Dismiss
("Opp'n") at 8 n.2, ECF No. 15. Although a
party may move for summary judgment before the commencement
of discovery, "summary judgment [must] be refused where
the nonmoving party has not had the opportunity to discover
information that is essential to his opposition."
Harrods Ltd. v. Sixty Internet Domain
Names, 302 F.3d 214, 244 (4th Cir. 2002) (quoting
Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 250 n.5 (1986)). That is the situation here. MRIS's
exhibits are aimed at establishing that the images on its
website are uploaded solely by users and that any addition of
MRIS's own copyright to those images is done
automatically, conditions that MRIS argues would permit MRIS
to take refuge in the DMCA's safe harbor defense to
claims of copyright infringement, discussed in more detail
below. See infra part IV. However, Goldstein has yet
to have the opportunity to engage in discovery to test these
assertions and, more broadly, to uncover evidence relating to
the issue of MRIS's knowledge about and involvement in
the uploading of the Metro Photograph, an issue relevant to
the DMCA safe harbor provision. Conversion to summary
judgment now would short-circuit this necessary stage of the
litigation. The Court therefore rejects MRIS's request to
convert its Motion to Dismiss into a Motion for Summary
Count I: Direct Infringement
asserts that the Complaint fails to state a claim for direct
infringement of Goldstein's copyright because Goldstein
has not alleged "volitional conduct" by MRIS. Mot.
Dismiss at 17. To state a claim of direct copyright
infringement, a plaintiff must allege facts that, when
credited, establish that the plaintiff owns a valid copyright
in the work allegedly infringed upon and that the defendant
has copied "constituent elements of the work that are
original." Feist Publ'ns, Inc. v. Rural
Tel. Svc. Co., Inc., 499 U.S. 340, 361 (1991). Here,
Goldstein has asserted that he has a valid copyright in the
Metro Photograph and provides a document supporting that
assertion. See 17 U.S.C. § 410(c) ("In any
judicial proceedings the certificate of registration made
before or within five years after first publication of the
work shall constitute prima facie evidence of the validity of
the copyright[.]"). There is no dispute that the Metro
Photograph has been uploaded to the MRIS website or that the
photograph, which appears on the site in its entirety,
contains constituent elements of the work that are original.
See Feist, 499 U.S. at 345 (stating that, for
copyright purposes, something is original if it was
"independently created by the author" and
"possesses at least some minimal degree of
the only issue in contention is whether Goldstein has alleged
that MRIS engaged in "volitional conduct" in
copying the Metro Photograph to MRIS's webpage. In
asserting that Goldstein has failed adequately to plead that
MRIS engaged in volitional conduct, MRIS relies heavily on
Costar Group, Inc. v. LoopNet, Inc., 373
F.3d 544 (4th Cir. 2004). In Costar, the defendant,
LoopNet, was an online real estate listing service that
allowed users to post real estate listings with photographs,
required those users to certify that the photographs were not
copyrighted by others, and conducted a cursory check of
photographs for any explicit copyright markings before
allowing them to be posted. Id. at 556. A number of
photographs copyrighted by Costar, but which bore no
copyright marks, were posted on LoopNet without Costar's
permission. See Costar Group Inc. v. LoopNet, Inc.,
164 F.Supp.2d 688, 698 (D. Md. 2001). The issue on appeal was
whether LoopNet's general practice of checking for
copyright markings before allowing images to be posted
amounted to "volitional conduct" such that LoopNet
was open to liability for direct copyright infringement for
using Costar's unmarked photographs without permission.
In affirming the district court's grant of summary
judgment to LoopNet, the United States Court of Appeals for
the Fourth Circuit held that direct copyright infringement
requires "actual infringing conduct with a nexus
sufficiently close and causal to the illegal copying that one
could conclude that the machine owner himself trespassed on
the exclusive domain of the copyright owner."
Costar, 373 F.3d at 550. The Court further stated
that there must be "some aspect of volition and
meaningful causation, " rather than simply "passive
ownership and management of an electronic Internet
facility" in order for direct infringement liability to
attach. Id. Applying this standard, the Fourth
Circuit concluded that even though LoopNet conducted a
cursory check of uploaded images for copyright marks, LoopNet
was a passive Internet service provider ("ISP")
that could not be held liable for direct infringement of
Costar's copyright when Costar's unmarked photographs
appeared on its website. Id. at 556.
argues that Costar is on all fours with the present
case. Costar, however, was decided at the summary
judgment stage. On a motion to dismiss, where the Court
considers only the allegations in the Complaint and views
those allegations in the light most favorable to the
nonmoving party, Goldstein's Complaint has stated a
claim. Goldstein alleges that MRIS or an agent of MRIS
uploaded the Metro Photograph and includes in support of that
allegation Exhibit 3 to the Complaint, a screenshot of a
slide in a slideshow that was available on the MRIS website
on August 11, 2014. That slide contains only the Metro
Photograph, annotated with Goldstein's watermark and
MRIS's added watermark "© 2014 MRIS, " and
does not contain any reference to a particular real estate
agent or broker, or to a particular property. Drawing all
inferences in Goldstein's favor, this Exhibit,
particularly with the markings added by MRIS, supports the
reasonable inference that MRIS or its agent, rather than an
outside user of MRIS, engaged in direct infringement by
copying Goldstein's copyrighted photograph to its
website. See Lambeth, 407 F.3d at 268 (holding that
a claim should be dismissed under Rule 12(b)(6) "only if
it appears beyond doubt that the plaintiff can prove no set
of facts that would entitle him to relief.").
Goldstein's Complaint alleges three crucial facts not
present in Costar: (1) when MRIS received it, the
Metro Photograph, on its face, was marked as copyrighted by
Goldstein; (2) MRIS, unlike LoopNet, took the affirmative
step of marking the Metro Photograph as subject to its own
copyright; and (3) MRIS then copyrighted its entire website,
including the Metro Photograph. Thus, based on the
allegations in the Complaint, MRIS's actions went well
beyond the "passive ownership and management" of a
website that was at issue in Costar. Rather than
simply providing a passive venue for others to post
photographs, MRIS doubly asserted a copyright in the Metro
Photograph by stamping that facially copyrighted photograph
with its own copyright markings and then copyrighting the
entire website containing that photograph. Based on these
actions, the Court cannot, at the motion to dismiss stage,
rule out the possibility that MRIS engaged in the necessary
volitional conduct to establish direct copyright
infringement. Thus, the Motion is denied as to Count I.
Count II: Contributory and Vicarious Infringement
also argues that the Complaint fails to state a claim for
contributory infringement. Although the copyright statute
does not expressly provide for "imposition of liability
for copyright infringement on certain parties who have not
themselves engaged in infringing activity, " the United
States Supreme Court has made clear that common law
principles of contributory or vicarious liability, which are
"imposed in virtually all areas of the law, " can
be applied in the copyright context. Sony Corp. v.
Universal City Studios, Inc., 464 U.S. 417, 435 (1984).
As copyright law has developed in the context of the
internet, three sub-species of vicarious liability have
developed, all of which Goldstein pleads here. The Court
addresses each in turn.
state a viable claim for contributory copyright infringement,
a plaintiff must allege facts that, taken as true, establish
that the defendant knew or had reason to know of the
infringing activity and either induced, caused, or materially
contributed to that infringing activity. See ...