Jamil Gulmann Shihab v. Complex Media, Inc.

Background

Jamil Gulmann Shihab, professionally known as “JAMIL GS,” alleged that he created and owned five registered photographs depicting Raekwon, Ghostface Killah, and Drake. He alleged that Complex Media, Inc. obtained the photographs through an online search-and-copy campaign, removed the “JAMIL GS ©” watermark and other copyright information, and posted altered versions on Complex’s Instagram and Twitter accounts without authorization. The alleged posts included some links or tags to Shihab’s social-media profiles, while others omitted references to him.

Shihab asserted claims under the Copyright Act and the Digital Millennium Copyright Act (DMCA). Complex moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), or alternatively asked the court to treat the motion as one for summary judgment under Rule 12(d). Complex also requested attorney’s fees and costs under 17 U.S.C. § 505. The opinion states that no Doe defendant had been identified or served and that Shihab was on notice that the court would dismiss those defendants after seven days.

Copyright-infringement claim

To state a direct copyright-infringement claim, Shihab had to plausibly allege ownership of a valid copyright and unauthorized copying. Complex argued that Shihab had given it an implied license by posting the photographs publicly on Instagram and Twitter. The court rejected that argument at the pleading stage. It explained that the alleged facts did not show that Shihab created the photographs at Complex’s request or gave them to Complex intending that Complex copy and distribute them.

The court therefore concluded that Shihab plausibly pleaded direct copyright infringement and denied Complex’s motion to dismiss that claim.

Vicarious or contributory infringement

The court granted Complex’s motion to dismiss Shihab’s claim for vicarious or contributory copyright infringement. Those theories require allegations that Complex intentionally induced or encouraged another person’s direct infringement, or profited from another person’s infringement while having the ability to stop or limit it. The court found that the amended complaint did not identify whose direct infringement Complex allegedly induced, encouraged, or financially benefited from, apart from Complex’s own alleged infringement. The complaint’s reliance on unidentified Doe defendants was insufficient, particularly because those defendants had not been timely identified or served.

DMCA claim

The court concluded that Shihab plausibly pleaded a violation of section 1202 of the DMCA, which protects copyright-management information. The court treated the “JAMIL GS ©” watermark as copyright-management information connected to all five photographs. It found that the complaint plausibly alleged that Complex distributed copies of the photographs after removing that information without authorization.

The court also found sufficient allegations that Complex knew, or had reason to know, that removing the watermark would facilitate or conceal infringement. The alleged removal could have facilitated Complex’s own alleged infringement, concealed that infringement in posts that omitted Shihab’s identity, and enabled later copying by others. The court therefore denied Complex’s motion to dismiss the DMCA claim.

Statutory damages, attorney’s fees, and costs

The court dismissed Shihab’s claim for statutory damages, attorney’s fees, and costs connected to copyright infringement. The alleged posts predated Shihab’s October 8, 2020 copyright registrations, and the amended complaint did not allege post-registration infringements that could support those remedies at the pleading stage. The court did not decide the parties’ dispute about the continuing-infringement doctrine.

The court denied Complex’s motion to dismiss Shihab’s claim for statutory damages, attorney’s fees, and costs under the DMCA. It interpreted 17 U.S.C. § 412 as limiting remedies provided by sections 504 and 505, rather than remedies provided by DMCA section 1203. The court also reasoned that the different remedy structures and the nature of a DMCA violation supported treating section 1203 remedies separately from the registration-based limitation in section 412.

Rule 12(d) request and defense fees

The court denied Complex’s request to convert the Rule 12(b)(6) motion into a motion for summary judgment. It stated that it had not relied on matters outside the pleadings that would require conversion. The court also denied Complex’s request for attorney’s fees and costs under section 505 because it was not dismissing the action: Shihab had plausibly pleaded direct copyright infringement and a DMCA violation.

Disposition

Judge P. Castel’s conclusion states that Complex’s Rule 12(b)(6) motion was granted in part and denied in part. The alternative request for conversion to summary judgment was denied, and Complex’s request for attorney’s fees and costs was denied. The court directed the clerk to terminate the motion.