United States District Court, D. Massachusetts
ORDER ON MOTION TO DISMISS OR, IN THE ALTERNATIVE,
FOR SUMMARY JUDGMENT (DOC. NO. 11)
Sorokin United States District Judge
before the Court is Defendant Her Campus Media, LLC's
(“Her Campus”) Motion to Dismiss for Failure to
State a Claim or, in the Alternative, for Summary Judgment.
Doc. No. 11. Plaintiff Getty Images (US), Inc. (“Getty
Images”), a leading provider of digital photographic
content, contends that Her Campus, a website that publishes
content focused on college-aged women, reproduced and
publicly displayed, without authorization, twenty-four works
that were registered by Getty Images with the U.S. Copyright
Office. According to Getty Images, the alleged infringement
at issue here was carried out, in the first instance, by Her
Campus employees, as well as “unpaid student
authors” who are “de facto employees or agents of
Her Campus.” Doc. No. 1 ¶ 15, 18. Getty Images
alleges that Her Campus “exercises full editorial
control over articles published on its Website, ”
including those authored by student contributors. Id
Additionally, Getty Images alleges that this lawsuit comes
after it sent “multiple notices to Her Campus about its
unauthorized use of photographs owned by Getty Images,
” as well as communications to Her Campus co-founder
Annie Wang that “provided her with documented evidence
showing [hundreds of] infringement[s].” Id.
¶¶ 23-25. Thus, Getty Images alleges that Her
Campus “acted willfully or with reckless disregard of
facts and circumstances that would put a reasonable website
owner or operator on notice of the [alleged]
infringements.” Id ⁋ 37.
Campus first moves for dismissal. In reviewing a Rule
12(b)(6) motion to dismiss, a court must “[s]et aside
any statements [in the complaint] that are merely
conclusory” and “construe all factual allegations
in the light most favorable to the non-moving party to
determine if there exists a plausible claim upon which relief
may be granted.” Woods v. Wells Fargo Bank,
N.A., 733 F.3d 349, 353 (1st Cir. 2013). “To
prevail on a copyright infringement claim, a party must prove
both control of a valid copyright and copying of original
elements of the work by the putative infringer.”
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 361 (1991); LovePop, Inc. v. PaperPopCards,
Inc., 286 F.Supp.3d 283, 287 (D. Mass. 2018). Here,
Getty Images has pled facts sufficient to state such a claim.
Doc. No. 1 ¶¶ 30-35 (describing copyrighted works
and providing registration information); Doc. No. 1-5
(providing screenshots of allegedly infringing images as they
appeared on Her Campus' website).
Getty Images' well-pleaded allegations of copyright
infringement, Her Campus seeks dismissal by raising several
affirmative defenses. “Affirmative defenses . . . may
be raised in a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), provided that the facts establishing the
defense[s] [are] clear on the face of the plaintiffs
pleadings.” Monsarrat v. Zaiger, 286 F.Supp.3d
253, 256 (D. Mass. 2017), reconsideration denied,
303 F.Supp.3d 164 (D. Mass. 2018) (quoting Santana-Castro
v. Toledo-Davila, 579 F.3d 109, 113-14 (1st Cir. 2009)).
The defendant bears the burden of proving such defenses.
Soc'y of Holy Transfiguration Monastery,
Inc. v. Gregory, 689 F.3d 29, 59 (1st Cir. 2012). Her
Campus presents two primary defenses: (1) that it is entitled
protection under the safe harbor provision of the Digital
Millennium Copyright Act (“DMCA”), 17 U.S.C.
§ 512(c); and (2) that the appearance of Getty
Images' copyrighted photographs on its website
constituted fair use under 17 U.S.C. §
each of these defenses, “the complaint itself must
establish the facts necessary to sustain defendant's
[affirmative] defense.” BWP Media USA Inc. v.
Hollywood Fan Sites, LLC, 69 F.Supp.3d 342, 358
(S.D.N.Y. 2014). In the DMCA context, courts have held that
“[o]nly when the plaintiff pleads itself out of
court-that is, admits all the ingredients of an impenetrable
defense-may a complaint that otherwise states a claim be
dismissed under Rule 12(b)(6).” H-D U.S.A., LLC v.
SunFrog, LLC, 282 F.Supp.3d 1055, 1061 (E.D. Wis. 2017)
(quoting Xechem, Inc. v. Bristol-Myers Squibb Co.,
372 F.3d 899, 901 (7th Cir. 2004)). Similarly, courts
routinely decline to grant dismissal based on a fair use
defense when, as here, “[t]he facts, as alleged in the
complaint, are simply insufficient to conduct a thorough
analysis of fair use.” Browne v. McCain, 612
F.Supp.2d 1125, 1130 (C.D. Cal. 2009); accord Vil v.
Poteau, No. 11-CV-11622-DJC, 2013 WL 3878741, at *7 (D.
Mass. July 26, 2013). Accordingly, Her Campus' motion to
dismiss is DENIED.
alternative, Her Campus moves for summary judgment, relying
on submitted affidavits to augment the record before the
Court. Doc. No. 13. Under the familiar standard, summary
judgment is appropriate when “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). In making its determination, the Court
“must view the entire record in the light most
hospitable to the party opposing summary judgment, indulging
in all reasonable inferences in that party's
favor.” Griggs-Ryan v. Smith, 904 F.2d 112,
115 (1st Cir.1990). However, “trial courts should
refrain from entertaining summary judgment motions until
after the parties have had a sufficient opportunity to
conduct necessary discovery.” Velez v. Awning
Windows, Inc., 375 F.3d 35, 39 (1st Cir. 2004).
outset, the Court concludes that Her Campus' failure to
include a Statement of Material Facts, as required by Local
Rule 56.1, is a sufficient ground for denying its motion
without prejudice. Additionally, however, the affirmative
defenses that Her Campus raises as the basis for its motion
for summary judgment turn on many facts entirely under its
control and either absent from the record or disputed by the
parties. This includes the precise nature of the relationship
between Her Campus and its student contributors, as well as
the existence and sufficiency of Her Campus' repeat
infringer policy. Under these circumstances, Getty Images
“has demonstrated that additional discovery is likely
to uncover facts that may influence the outcome of the
pending motion.” Angelo v. USA Triathlon, No.
13-CV-12177-ADB, 2016 WL 126248, at *3 (D. Mass. Jan. 12,
2016). This is precisely the purpose of Rule 56(d), which
“protects a litigant who justifiably needs additional
time to respond in an effective manner to a summary judgment
motion.” Rivera-Almodovar v. Instituto
Socioeconomico Comunitario, Inc., 730 F.3d 23, 28 (1st
Cir.2013). Thus, Her Campus' motion for summary judgment
is premature and DENIED.
Campus shall, within ten days of this Order, file its answer
to Getty Images' complaint. The Clerk shall schedule a
Rule 16 conference for December 2, 2019 at 2 PM.
 Her Campus briefly urges two
additional affirmative defenses, neither of which succeed.
First, Her Campus argues that Getty Images “brought
this lawsuit as a sales tool, not in order to rectify any
legal wrong.” Doc. No. 11 at 15. However, “the
defense of illegality or unclean hands is ‘recognized
only rarely [in copyright law], when the plaintiff's
transgression is of serious proportions and relates directly
to the subject matter of the infringement action.'”
Dream Games of Arizona, Inc. v. PC Onsite, 561 F.3d
983, 990-91 (9th Cir. 2009) (quoting 4 Nimmer on Copyright
§ 13.09[B]). Given that none of the facts alleged in the
complaint suggest grave transgressions or fraudulent
misconduct, Her Campus cannot sustain a 12(b)(6) dismissal
based on this affirmative defense.
Second, Her Campus argues that Getty Images
“failed to mitigate its damages” by neglecting to
“inform Her Campus as to the identity of the [allegedly
infringing] images.” Doc. No. 11 at 15. A failure to
mitigate damages, however, is not grounds for dismissal;
indeed, Getty Images “may elect, at any time before
final judgment is rendered, to recover, instead of actual
damages and profits, an award of statutory damages.” 17
U.S.C. § 504(c)(1); see also Arista Records, Inc. v.
Flea World, Inc., 356 F.Supp.2d 411, 422 (D.N.J. ...