United States District Court, D. Massachusetts
REPORT AND RECOMMENDATION RE: DEFENDANT POLYVORE INC.'S MOTION TO DISMISS (DOCKET ENTRY # 56)
MARIANNE B. BOWLER, Magistrate Judge.
In this copyright infringement action, plaintiff Robert Sarvis ("plaintiff") alleges that defendant Polyvore, Inc. ("Polyvore"), an internet service provider, copies, displays and distributes certain copyrighted works of artist Sheila Wolk ("Wolk") assigned to plaintiff. Pending before this court is a motion to dismiss all five counts in a second amended complaint filed by Polyvore under Fed.R.Civ.P. 12(b)(6) ("Rule 12(b)(6)"). (Docket Entry # 56). After conducting a hearing, this court took the motion (Docket Entry # 56) under advisement.
In January 2013, plaintiff filed an amended complaint against Polyvore setting out claims for direct copyright infringement, contributory copyright infringement, vicarious copyright infringement, a declaratory judgment and a permanent injunction. Shortly thereafter, Polyvore filed a motion to dismiss under Rule 12(b)(6). In a Report and Recommendation, this court recommended dismissing the vicarious infringement claim with prejudice. Finding the presence of colorable claims of direct and contributory infringement, the opinion recommended dismissing these claims but allowing plaintiff an opportunity to file an amended complaint with more factual detail. Plaintiff complied by filing the second amended complaint that includes significantly greater factual detail.
In September 2013, the district judge accepted and adopted the Report and Recommendation. In October 2013, plaintiff filed a motion to reconsider the dismissal with prejudice of the vicarious infringement claim. In June 2014, the district judge denied the motion to reconsider the dismissal of the vicarious infringement claim. The district judge also allowed the motion to amend because it "included new facts concerning contest entries, winner lists and Polyvore's search functionality." (Docket Entry # 51). The district judge "decline[d] to address the highly technical [futility] arguments raised by Polyvore [in opposition] until they are squarely before the Court in a motion to dismiss or other dispositive motion." (Docket Entry # 51).
The second amended complaint raises the following claims: (1) direct copyright infringement (Count I); (2) inducement of copyright infringement (Count II); (3) contributory copyright infringement (Count III); (4) vicarious copyright infringement (Count IV); and violation of 17 U.S.C. § 1201 ("section 1201") (Count V). Polyvore seeks to dismiss Count IV because this court dismissed the vicarious infringement claim with prejudice, the district judge accepted and adopted that dismissal and the district judge denied the motion for reconsideration challenging the dismissal. Plaintiff explains that he included the count because the motion for reconsideration remained pending at the time he filed the proposed second amended complaint. (Docket Entry # 67). Although the foregoing decisions are interlocutory, plaintiff fails to provide any adequate basis to revisit them. See generally Villanueva v. United States, 662 F.3d 124, 128 (1st Cir. 2011); Ellis v. United States, 313 F.3d 636, 646-648 (1st Cir. 2002).
STANDARD OF REVIEW
To survive a Rule 12(b)(6) motion to dismiss, the complaint must include factual allegations that when taken as true demonstrate a plausible claim to relief even if actual proof of the facts is improbable. Bell Atlantic v. Twombly, 550 U.S. 544, 555-558 (2007). While "not equivalent to a probability requirement, the plausibility standard asks for more than a sheer possibility that a defendant has acted unlawfully." Boroian v. Mueller, 616 F.3d 60, 65 (1st Cir. 2010) (internal quotation marks omitted). "[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint... has not shown that the pleader is entitled to relief." Feliciano-Hernandez v. Pereira-Castillo, 663 F.3d 527, 533 (1st Cir. 2011) (internal quotation marks and citations omitted). Discarding legal conclusions and taking the facts in the governing complaint as "true and read in a plaintiff's favor even if seemingly incredible, " the complaint "must state a plausible, but not a merely conceivable, case for relief." Sepúlveda-Villarini v. Dept. of Educ., 628 F.3d 25, 29 (1st Cir. 2010).
The court may consider a limited category of documents outside the complaint without converting the motion into one for summary judgment. Such documents include public records, documents central to the plaintiff's claims and documents sufficiently referred to in the complaint. See Butler v. Balolia, 736 F.3d 609, 611 (1st Cir. 2013) (supplementing facts in complaint "by examining documents incorporated by reference into the complaint, matters of public record, and facts susceptible to judicial notice'"); Freeman v. Town of Hudson, 714 F.3d 29, 36 (1st Cir. 2013) (court may consider "official public records; documents central to plaintiffs' claim; and documents sufficiently referred to in the complaint'") (ellipses and internal brackets omitted); Giragosian v. Ryan, 547 F.3d 59, 65-66 (1st Cir. 2008) (can consider documents relied on in complaint, public records and other documents subject to judicial notice). Polyvore's reliance on articles available on the internet is therefore misguided. The articles cited in various footnotes in the supporting memorandum (Docket Entry # 57) are not part of the Rule 12(b)(6) record. Likewise, any statement plaintiff made in the first amended complaint, including statements regarding transformed art, that were not incorporated into the second amended complaint lie outside the Rule 12(b)(6) record. See Evergreen Partnering Group, Inc. v. Pactiv Corp., 720 F.3d 33, 40 n.2 (1st Cir. 2013) ("since [a]n amended complaint supersedes the original complaint, and facts that are neither repeated nor otherwise incorporated into the amended complaint no longer bind the pleader, ' we limit our analysis to the allegations made in Evergreen's Second Amended Complaint") (emphasis added and citation omitted). Adhering to this standard, the facts are as follows.
Plaintiff is the assignee of 22 works of art created by Wolk, an internationally known artist recognized for her fantasy artwork. The assignment is dated September 10, 2012. All of the 22 assigned pieces of art are registered with the United States Copyright Office ("the registered works"). It took Wolk "many months" to create each piece. (Docket Entry # 52, ¶ 15). Wolk has been a professional artist for at least 40 years. She has worked in the realm of fantasy art for 25 years and "[h]er art is in high demand and highly sought by individuals seeking fantasy and fairy art." (Docket Entry # 52, ¶ 13).
By letter dated October 12, 2012, plaintiff notified Polyvore's registered agent that both Polyvore and its users were copying and displaying copyrighted works of Wolk assigned to plaintiff ("the October notice" or "the notice"). The notice identified 20 pieces of art that Polyvore and its users purportedly infringed by copying and displaying images of the art on Polyvore's website ("the copyrighted works"). The notice identified the exact location of each infringing document by providing one or more uniform resource locators ("URL") designating the location on Polyvore's website. The notice describes the URL addresses as "a representative list of" the URLs associated with the infringed art pieces that are copied and displayed on the Polyvore website. (Docket Entry # 52-4). Plaintiff signed the notice, provided his address and included a statement that he had a "good faith belief that" the use infringed the copyrighted works. (Docket Entry # 52-4).
At some point after receiving the notice, Polyvore "removed some copyrighted images from its website, but maintained" links to other internet service providers. The links allowed internet users to access the copyrighted works on Polyvore's website by performing an internet search, albeit not necessarily at the URLs designated in the notice. "[A]s of January 29, 2013, " Polyvore continued to have at least one of the copyrighted works on its website at the URL address designated in the notice. (Docket Entry # 52, ¶ 21) (Docket Entry ## 52-4, 52-8). Further, as stated in the second amended complaint filed in July 2014, images of three of the copyrighted works at the URL addresses in the October 2012 notice are "located at the Polyvore site." (Docket Entry # 52, ¶ 82(c), (d), (e)) (Docket Entry # 52-4) (Docket Entry # 52-7, Ex. E(c), E(d), E(e)).
Polyvore is a peer-to-peer website and an internet service provider. It is connected "through web-links with other" websites such as Google and Facebook. (Docket Entry # 52, ¶ 42). Polyvore advertises itself as a "fashion community'" or "fashion site'" but also provides a large database of searchable images of art works in high resolution. (Docket Entry # 52, ¶¶ 44, 46). Polyvore provides users with a free tool that allows them to clip and copy images, including but not limited to copyrighted images, from other websites and import the images to the user's account on the Polyvore website. In addition to storing one or more single images in an account, a user can create a "set" consisting of a group of independent images. Polyvore does not charge users a fee to use its editing system. In fact, it pays users of its website to clip or copy "large amounts of art" from other websites and to bring a large number of visitors to Polyvore's website. (Docket Entry # 52, ¶¶ 46, 77).
Polyvore compiles a central database that includes all of the "stored art and sets'" of its users in high resolution. (Docket Entry # 52, ¶¶ 46, 50, 51, 60). Polyvore users as well as visitors to the website can access the searchable database of art at no charge by using a search function on the website. A search performed by a user or visitor typically yields a group of small, high resolution images on one side of a computer screen. The user or visitor can then enlarge the image using one of Polyvore's editing tools. To provide an example, a search for "fairies" or "fantasy" yields various images, including small, high resolution images of one or more of the copyrighted works or portions of the copyrighted works. A search for "fairy" produces a number of small, high resolution images, one of them being one of the copyrighted works, albeit not at the URL designated in the October notice. (Docket Entry # 52, ¶ 87) (Docket Entry # 52-10) (Docket Entry # 52-3, No. 15).
When a user or viewer performs a search, the search results also produce small, high resolution images under categories of "[y]ou might also like'" and "more items & looks'" and, with respect to copyrighted images, with the copyright watermarks already removed. (Docket Entry # 52, ¶¶ 72, 89) (Docket Entry # 52-11). A Google search performed in August 2013 using the name of a copyrighted work and "Polyvore" or using the search terms "Polyvore Sheila Wolk" yielded eight URL addresses on the Polyvore website with images of a number of the copyrighted works or portions of the copyrighted works. None of the URL addresses were included in the October notice. "Plaintiff's statistical sample searches" of the Polyvore website for one of the copyrighted works resulted in 39 URL addresses on the website with the copyrighted image. (Docket Entry # 52, ¶¶ 55, 82). Again, none of the 39 URL addresses were included in the October notice.
Polyvore advertises and promotes itself as having the ability to store images in high resolution. The central database includes images, including but not limited to copyrighted art, stored "in high resolution." (Docket Entry # 52, ¶¶ 46, 50, 60). A user can access the high resolution image stored in his or her account or set. A user or visitor can also enlarge the image using an editing tool that Polyvore provides. Drawing reasonable inferences from the second amended complaint, the enlarged image produces a usable high resolution image without a loss of clarity.
Polyvore's editing system allows users or visitors to cut and paste, crop, enlarge and edit the high resolution images stored in the central database and accessed on Polyvore's website. Polyvore has an "automatic feature" that can remove the background or foreground of an image. (Docket Entry # 52, ¶ 65). Users and visitors can therefore separate the central image from the copyrighted notice, which is oftentimes located in the foreground or background of a copyrighted image. The editing system gives the user or visitor the ability to remove copyright notices placed on images and to eliminate an artist's "copyright watermarks." (Docket Entry # 52, ¶¶ 52, 64, 70, 81). "Polyvore and/or its Users removed the copyright watermarks on the [registered works]." (Docket Entry # 52, ¶ 88).
Polyvore's Chief Executive Officer, Jess Lee ("Lee"), belongs to a number of "on-line art sites and art groups." (Docket Entry # 52, ¶ 32). After the date of the October notice, one such group copied and added images to one of the copyrighted works on the Polyvore website. As a user of Polyvore's website, Lee creates sets using one or more copyrighted images on the Polyvore website.
Polyvore generates revenue by receiving commissions from retail merchants when a Polyvore user or visitor purchases a merchant's product as a result of using the Polyvore site. It also receives revenue from advertisers and from fees it receives from sponsors of contests run on Polyvore's website.
Polyvore runs contests on its website more than once a week for Polyvore users. The "contests offer prizes provided by advertising sponsors." (Docket Entry # 52, ¶ 67). Initially, the user creates a set using Polyvore's editing tools and database of images and thereafter enters the set into the contest. Polyvore then copies the set, adds it to the central database and includes the set in an entry list. The sponsor selects the winning entries. Polyvore then copies the winning sets and publishes the list on its website. Users often employ copyrighted images to create the sets entered into the contests. In fact, users have created sets using the copyrighted works with the copyright watermarks removed which Polyvore then copies and enters into ...