Lane Coder Photography, LLC v. The Hearst Corporation

Background

Lane Coder Photography, LLC brought a copyright action against The Hearst Corporation and Yahoo Inc. The complaint alleged that defendants used photographs taken by W. Lane Coder, Jr. without authorization. Coder had photographed a Connecticut property in 2019 for William Pitt and Julia B. Sotheby’s International Realty. The complaint alleged that Sotheby’s could use the photographs for its own advertising and one limited Wall Street Journal use, but could not sublicense or transmit them to third parties.

The complaint alleged that Hearst published at least eight of the photographs in a House Beautiful article and at least one photograph in a Stamford Advocate article. It also alleged that Yahoo published at least one photograph in a Yahoo! News article after receiving the photographs and content from Hearst under a content license agreement. The complaint further alleged that Hearst removed Coder’s copyright management information, including authorship and ownership credits.

Plaintiff asserted three categories of claims: direct copyright infringement against both defendants, contributory copyright infringement against Hearst for providing the photographs to Yahoo, and two claims against Hearst under the Digital Millennium Copyright Act for knowingly and intentionally misattributing or removing copyright management information. Defendants moved to dismiss under Rules 12(b)(1) and 12(b)(6), alternatively moved to strike allegations under Rule 12(f), and requested attorneys’ fees.

Direct Copyright Infringement

The court held that the complaint adequately stated direct copyright-infringement claims against Hearst and Yahoo. A direct infringement claim requires allegations of ownership of a valid copyright and infringement, including unauthorized copying of protected elements. The complaint attached a copyright registration issued to Coder, alleged that the registration was assigned to Lane Coder Photography, and identified plaintiff as the current copyright owner. The court found those allegations sufficient.

The court also found sufficient allegations that defendants reproduced and publicly displayed unauthorized copies of the photographs. It rejected defendants’ argument that plaintiff had not adequately alleged injury, explaining that damages are not an essential element of copyright infringement at the motion-to-dismiss stage. The motion to dismiss was denied as to the direct-infringement claims.

The court noted that the copyright registration became effective on August 27, 2019, after the alleged April and July 2019 infringements. It explained that registration is a condition to filing an infringement lawsuit, but not a condition of copyright protection, and therefore the timing of registration did not defeat the infringement claims at this stage.

Contributory Copyright Infringement

The court held that the complaint adequately stated a contributory copyright-infringement claim against Hearst. Contributory infringement is secondary liability for helping another party infringe. The claim requires an underlying direct infringement, knowledge or reason to know of that infringement, and material assistance or encouragement.

The complaint alleged that Hearst obtained the photographs from Sotheby’s website even though Sotheby’s had not authorized Hearst to use or distribute them, and that Hearst then provided the photographs to Yahoo under a licensing arrangement. Although the allegations concerning Hearst’s knowledge were sparse, the court found them just sufficient to infer that Hearst had reason to know the photographs were infringing material. The court also found that Hearst materially assisted Yahoo’s alleged infringement by directly providing the photographs. The motion to dismiss was denied as to the contributory-infringement claim.

DMCA Claims

The court granted the motion to dismiss the DMCA claims against Hearst. The relevant DMCA provision protects copyright management information, such as information identifying the author or copyright owner, when that information is conveyed in connection with a copyrighted work. A claim for unlawful removal or alteration requires allegations that the work contained such information, that the information was removed or altered, and that the removal or alteration was intentional.

The court found that the complaint did not adequately plead the threshold fact that the original photographs contained copyright management information. Although the complaint stated generally that Coder included authorship and ownership credits when transmitting the photographs to Sotheby’s, it did not provide an original photograph or other exhibit showing the information. It also did not describe what the information looked like, where it appeared, how it was connected to the photographs, or how Hearst could have accessed it before allegedly removing it. The DMCA claims were therefore dismissed without prejudice.

The court granted plaintiff permission to move for leave to amend the DMCA claims. The motion had to be filed within 30 days of the Memorandum Order and had to include the proposed amended complaint. If plaintiff did not timely seek leave to amend, or if the motion for leave to amend was denied as futile, Counts Three and Four would be dismissed with prejudice.

Statutory Damages, Attorneys’ Fees, and Costs

The court struck plaintiff’s demands for statutory damages, attorneys’ fees, and costs under the Copyright Act. The court explained that 17 U.S.C. § 412 generally bars statutory damages and attorneys’ fees for infringement that began before the copyright’s effective registration date. The complaint alleged only April and July 2019 infringements, while the registration became effective on August 27, 2019. Because the complaint did not identify any specific post-registration infringement, the court concluded that plaintiff could not recover those remedies for the alleged direct and contributory infringement.

Disposition

Judge Laura Taylor Swain concluded that the motion to dismiss was granted in part and denied in part. The motion was denied as to the direct copyright-infringement claims in Count One and the contributory copyright-infringement claim in Count Two. It was granted as to the DMCA claims in Counts Three and Four, which were dismissed without prejudice. The demands for statutory damages, attorneys’ fees, and costs were stricken. The case was referred to a magistrate judge for general pretrial management by separate order.