Summary
applying the Restatement analysis to plaintiffs' claim of invasion of privacy by appropriation
Summary of this case from Souza v. Charmed LLCOpinion
No. 21-CV-4024 CJW-MAR
2021-10-20
Laney Marie GRINER and Sam Griner, Plaintiffs, v. Steven Arnold KING, King for Congress, and Does 1-10, Defendants.
Michael Douglas Steger, Pro Hac Vice, Law Offices of Michael D. Steger PC, Orangeburg, NY, William Jeremiah Hale, Goosmann Law Firm, Omaha, NE, for Plaintiffs. Michael Keith Blankenship, Pro Hac Vice, Da Vinci's Notebook LLC, Manassas, VA, Daniel B. Shuck, Shuck Law Firm, Sioux City, IA, Michael J. O'Neill, Landmark Legal Foundation, Leesburg, VA, for Defendants Steven Arnold King, King for Congress. Daniel B. Shuck, Shuck Law Firm, Sioux City, IA, for Defendant Does 1-10.
Michael Douglas Steger, Pro Hac Vice, Law Offices of Michael D. Steger PC, Orangeburg, NY, William Jeremiah Hale, Goosmann Law Firm, Omaha, NE, for Plaintiffs.
Michael Keith Blankenship, Pro Hac Vice, Da Vinci's Notebook LLC, Manassas, VA, Daniel B. Shuck, Shuck Law Firm, Sioux City, IA, Michael J. O'Neill, Landmark Legal Foundation, Leesburg, VA, for Defendants Steven Arnold King, King for Congress.
Daniel B. Shuck, Shuck Law Firm, Sioux City, IA, for Defendant Does 1-10.
ORDER
C.J. Williams, United States District Judge
TABLE OF CONTENTS
I. INTRODUCTION...
II. BACKGROUND...
A. Factual Background...
B. Procedural History...
C. Standard Under FED. R. CIV. P. 12(b)(6)...
III. ANALYSIS...
A. Defendant King's Personal Liability...
B. Copyright Infringement Claim...
1. Pleading Standard...–––– 2. Copyright in the Photograph...–––– 3. Copyright Abandonment...–––– 4. Protected Elements of the Photograph...–––– 5. Copying in Fact...–––– a. Access...–––– b. Substantial Similarity...–––– 6. First Sale Arguments...
D. Invasion of Privacy Claim...
IV. CONCLUSION...
I. INTRODUCTION
This matter is before the Court on defendants’ Motion to Dismiss for Failure to State a Claim. (Doc. 43). Plaintiffs timely resisted this motion. (Doc. 45). For the following reasons, the Court denies defendants’ motion.
II. BACKGROUND
This case involves alleged infringements of a copyrighted photographic work and an unauthorized use of a person's likeness. The following allegations are taken as true unless otherwise noted. The Court will discuss additional facts and law as they become necessary to its analysis.
A. Factual Background
The following facts are taken from plaintiffs’ Amended Complaint, (Doc. 16), and are accepted as true for the purposes of this motion. Bell Atlantic Corp. v. Twombly , 550 U.S. 544, 555–56, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). Defendant Steven King ("King") is a former Congressman. (Id. , at 5–6). Defendant King for Congress is a campaign committee for defendant Steve King that owns and operates a website at www.steveking.com ("the website"), and posts various videos and pictures on the website to raise money from political donors for defendant King's campaign. (Id. , at 2, 5). Each of the defendants was the "founder, editor in chief, senior editor, agent, affiliate, officer, director, manager, principal, alter-ego, and/or employee" of the remaining defendants and each defendant "at all times had control over the content displayed on the website, acting within the scope of such agency, affiliation, alter-ego relationship and/or employment." (Id. , at 3). Plaintiffs Laney Marie Griner ("Laney") and Sam Griner ("Sam") are individuals residing in Jacksonville, Florida. (Id. , at 2).
Plaintiff Laney owns the registered copyright in a photograph of plaintiff Sam (the "Photograph") that formed the basis of a popular Internet meme titled "Success Kid." (Id. , at 4). The Photograph was registered on February 22, 2012. (Id. , at 4–5). Plaintiff Laney licensed the Photograph commercially to advertisers "including Coca-Cola, General Mills, Microsoft, Vitamin Water, Hot Topic, Virgin Mobil, and many others." (Id. , at 5). Plaintiffs allege that plaintiffs did not license the Photograph to defendants and that defendants used the Photograph "without Plaintiffs’ knowledge or consent." (Id. ).
On or about January 2020, each defendant posted a Success Kid meme based on the Photograph on the Website to raise money for and to solicit volunteers for defendants King and King for Congress. (Id. , at 6, 9). The meme places the image of plaintiff Sam on a different background than that of the Photograph. (Id. , at 9). Each defendant received money from this post. (Id. ).
B. Procedural History
On December 30, 2020, plaintiffs filed a Complaint against defendants Steven King, King for Congress, Winred, Inc., and Does 1–10 in the United States District Court for the District of Columbia. (Doc. 1). On April 7, 2021, plaintiffs filed an Amended Complaint naming the same defendants but including more factual allegations against all defendants. (Docs. 16; 17-1). On May 3, 2021, plaintiffs voluntarily dismissed claims against Winred, Inc. (Doc. 28). On May 17, 2021, the remaining defendants filed a First Motion to Dismiss for Lack of Personal Jurisdiction and Failure to State a Claim, as well as a Motion to Transfer Case. (Doc. 29). On June 2, 2021, both parties moved to transfer this matter to the Northern District of Iowa. (Doc. 32). On June 21, 2021, the case was so transferred. (Doc. 34). On July 21, 2021, defendants Steven Arnold King and King for Congress filed a second Motion to Dismiss for Failure to State a Claim. (Doc. 43).
Plaintiffs’ Amended Complaint claimed the following against both defendants: (1) copyright infringement, (2) violations of the Digital Millennium Copyright Act ("DMCA"), and (3) unauthorized use of likeness. (Doc. 16, at 7-9). In response to defendants’ Motion to Dismiss (Doc. 43), plaintiffs dismissed their second claim for relief, the DMCA claim. (Doc. 45, at 15). Therefore, the Court now considers the claims of (1) copyright infringement and (2) unauthorized use of likeness.
C. Standard Under FED. R. CIV. P. 12(b)(6)
Federal Rule of Civil Procedure 8(a) provides that a complaint must contain "a short and plain statement of the grounds for the court's jurisdiction ... a short and plain statement of the claim showing that the pleader is entitled to relief ... and a demand for the relief sought."
Rule 12(b)(6) provides that a party may assert the defense of failure to state a claim upon which relief can be granted by motion. "While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the grounds of his entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (cleaned up). "Factual allegations must be enough to raise a right to relief above the speculative level," but "a well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of those facts is improbable, and that recovery is very remote and unlikely." Id. at 555-56, 127 S.Ct. 1955. Indeed, a theory asserted need only be plausible, which requires "enough fact to raise a reasonable expectation that discovery will reveal evidence of [the conduct alleged]." Id. at 556, 127 S.Ct. 1955. In ruling on a Rule 12(b)(6) motion, the court must accept as true all the factual allegations in the complaint and draw all reasonable inferences in favor of the nonmoving party. Simes v. Ark. Jud. Discipline & Disability Comm'n , 734 F.3d 830, 834 (8th Cir. 2013) (citation omitted).
"[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged —but has not shown —that the pleader is entitled to relief." Ashcroft v. Iqbal , 556 U.S. 662, 679, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (emphasis added) (cleaned up). "When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief." Id. When a pleading contains no more than conclusions, however, those conclusions "are not entitled to the assumption of truth." Id. "While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations." Id. "[T]here is no justification for dismissing a complaint for insufficiency of statement, except where it appears to a certainty that the plaintiff would be entitled to no relief under any state of facts which could be proved in support of the claim." Leimer v. State Mut. Life Assurance Co. of Worcester , 108 F.2d 302, 306 (8th Cir. 1940) ; Warner v. Wartburg Coll. , No. 21-CV-2029-CJW-MAR, 2021 WL 3276375, at *2 (N.D. Iowa July 30, 2021).
III. ANALYSIS
The Court turns to the parties’ arguments. Defendants advance several arguments in support of the Motion to Dismiss. They argue that plaintiffs failed to plead defendant King's personal liability. (Doc. 43-1, at 12-15). They argue that plaintiffs did not meet the pleading standard for copyright infringement claims. (Doc. 47, at 2). They argue that plaintiff Laney did not have copyright in the copy of the Photograph that defendants copied. (Doc. 43-1, at 16-17). They also argue that plaintiff Laney abandoned the copyright in the Photograph. (Id. , at 17). Alternatively, even if plaintiff Laney had copyright in the Photograph, defendants argue that they did not copy protected elements of the Photograph. (Id. , at 18-19). They argue that plaintiffs did not successfully allege access and substantial similarity. (Id. , at 18-19). They also argue that plaintiffs exhausted their rights in the Photograph. (Doc. 47, at 5). Lastly, defendants argue that plaintiffs did not successfully allege invasion of privacy. (Docs. 43-1, at 21-22; 47, at 3). The Court takes each argument in turn.
Both parties raise facts and accusations that are not germane to this analysis. See, e.g. , Doc. 16, at 2; Doc. 43-1, at 7. The Court will not address them here.
A. Defendant King's Personal Liability
As a preliminary matter, the Court discusses defendant King's personal liability. Defendants label King for Congress as an unincorporated association and argue that plaintiffs fail to allege facts and circumstances that would make King "personally liable" for the use of the Photograph. (Doc. 43-1, at 12).
Defendants argue that defendant Steven King cannot be personally liable solely by virtue of membership in defendant King for Congress in these circumstances, and points to case law discussing when a member of an association is personally liable for conduct of the association. (Id. , at 12-14). Under the common law, a member of an unincorporated entity is not liable for the acts of the entity save for certain circumstances not at issue here. (Id. , at 12). Under relevant Iowa law, where members contract in the name of an unincorporated association, they and all the members who authorize, approve, consent, and ratify the contract are personally liable for the obligations of such contract. Wilson & Co. v. United Packinghouse Workers , 181 F. Supp. 809, 815 (N.D. Iowa 1960). The personal liability of the members of an unincorporated association also includes tort liability. Id. at 16.
Defendants note that if the individual members are too numerous and cannot all be sued in court at once, one or more could be sued in a representative capacity. (Id. , at 13) (citing Keller & Bennett v. Tracy , 11 Iowa 530, 531 (1861) ). Alternatively, under principles of vicarious liability, members may be liable for the acts of officers, agents, or members of the association when the membership knows of such acts and actively or passively approves them. (Id. , at 13). Defendants advance similar theories under the Revised Uniform Unincorporated Nonprofit Association Act ("RUUNAA"). (Id. , at 14). Under Iowa's version of the RUUNAA, a member or manager is not personally liable for a liability of an unincorporated nonprofit association solely because the member acts as a member or the manager acts as a manager. Iowa Code Chapter 501B.8(1).
Defendants’ arguments do not fit this case. None of these doctrines apply here because plaintiffs do not allege that defendant King is liable by virtue of membership in defendant King for Congress's copyright infringement and invasion of privacy. Plaintiffs instead allege that "each" defendant, King and King for Congress, posted the Photograph "without Plaintiffs’ knowledge or consent" and thus infringed on copyright and invaded privacy. (Doc. 16, at 5). Therefore, at this stage, plaintiffs have alleged claims directly against each defendant. Claims against defendant King cannot be dismissed on this ground at this stage.
B. Copyright Infringement Claim
Photographs are entitled to copyright protection. Burrow-Giles Lithographic Co. v. Sarony , 111 U.S. 53, 61, 4 S.Ct. 279, 28 L.Ed. 349 (1884). Under Title 17, United States Code, Section 106 —commonly referred to as the Copyright Act—the owner of a copyright has the exclusive right to, for example, (1) reproduce the copyrighted work in copies or phonorecords, (2) prepare derivative works based upon the copyrighted work, and (3) distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.
The Copyright Act thus grants "a bundle of exclusive rights to the owner of the copyright." Harper & Row Publishers, Inc. v. Nation Enters. , 471 U.S. 539, 546, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). The copyright owner's right to publish, copy, and distribute the work "vest in the author of an original work from the time of its creation." Id. This bundle of rights includes the exclusive rights to reproduce and distribute copies of the copyrighted work, and to prepare derivative works based upon the copyrighted work. See 17 U.S.C. § 106. Thus, unauthorized reproduction or distribution of the work, and unauthorized preparation of derivative works "based upon" the work, constitute copyright infringement. Id.
To prove a copyright infringement a plaintiff must show: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ; see also Taylor Corp. v. Four Seasons Greetings, L.L.C. , 403 F.3d 958, 962–63 (8th Cir. 2005). Parties do not dispute the ownership of the original Photograph. (Doc. 45, at 8). Taking all the allegations as true and drawing all reasonable inferences in their favor, plaintiffs’ allegations of copyright infringement are sufficient at this stage to state a claim.
1. Pleading Standard
Defendants argue that plaintiffs must, and failed to, allege that the copying was unauthorized. (Doc. 47, at 2). As a preliminary matter, the Court clarifies the pleading standard. The issue is whether defendants must raise "authorization" as an affirmative defense or whether plaintiffs must raise "lack of authorization" as an element of the prima facie case.
The Supreme Court has held that to establish copyright infringement, "two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. , 499 U.S. at 361, 111 S.Ct. 1282. The Supreme Court has also held that anyone "who is authorized by the copyright owner" to use the copyrighted work in a way specified in the statute or who makes a fair use of the work is not an infringer of the copyright with respect to such use. Sony Corp. of Am. v. Universal City Studios, Inc. , 464 U.S. 417, 433, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984).
Other circuits require defendant to show that the use was authorized. Muhammad-Ali v. Final Call, Inc. , 832 F.3d 755, 760 (7th Cir. 2016) ("[T]he existence of a license, exclusive or nonexclusive, creates an affirmative defense to a claim of copyright infringement."); Bourne v. Walt Disney Co. , 68 F.3d 621, 631 (2d Cir. 1995) (noting that "possession of a license by an accused infringer traditionally has been characterized as a matter of affirmative defense"); 2 Patry on Copyright § 5:118 (noting that existence of a license, that is, "permission to use" the "copyrighted work," is an affirmative defense); Chamberlain Grp., Inc. v. Skylink Techs., Inc. , 381 F.3d 1178, 1193 (Fed. Cir. 2004) ("[A] plaintiff only needs to show that the defendant has used her property; the burden of proving that the use was authorized falls squarely on the defendant."); In re McGraw-Hill Glob. Educ. Holdings L.L.C. , 909 F.3d 48, 66 (3d Cir. 2018).
The courts justify placing this burden on defendants due to asymmetry of access to information: "proving a negative is a challenge in any context," Vieth v. Jubelirer , 541 U.S. 267, 311, 124 S.Ct. 1769, 158 L.Ed.2d 546 (2004), and if there is evidence of a license, it is most likely to be in the possession of the purported licensee. See Bourne , 68 F.3d at 631 ; Muhammad-Ali , 832 F.3d at 761. When the author of the work is not directly privy to the licenses, such as when the copier alleges the existence of a sublicensor, the Court cannot expect the author to "plead unauthorized use as part of a prima facie case." In re McGraw-Hill Glob. Educ. Holdings L.L.C. , 909 F.3d 48, 66 (3d Cir. 2018).
The Court of Appeals for the Eighth Circuit does not require the plaintiff to plead "unauthorized" use. Instead, the elements of copyright infringement of the reproduction right are (1) ownership of a valid copyright and (2) copying of original elements of the copyrighted work. Warner Bros. Entm't, Inc. v. X One X Prods. , 644 F.3d 584, 595 (8th Cir. 2011) ("The elements of copyright infringement are (1) ownership of a valid copyright and (2) copying of original elements of the copyrighted work."); Taylor Corp. , 403 F.3d at 962-63 ("To prevail on its copyright infringement claim, Taylor must prove ownership of a valid copyright and copying of original elements of the work."); Mulcahy v. Cheetah Learning L.L.C. , 386 F.3d 849, 852 (8th Cir. 2004) ("Two elements are required to establish copyright infringement, ownership of a valid copyright and copying of original elements of the work.").
To be sure, the Court of Appeals for the Eighth Circuit has held out as an example, but not a requirement, that the potential violation of the copyright owner's reproduction right be "unauthorized." MPAY Inc. v. Erie Custom Comput. Applications, Inc. , 970 F.3d 1010, 1016 (8th Cir. 2020) ("To demonstrate copyright infringement, MPAY must show that it owned a valid copyright and that Appellees violated MPAY's copyright "by, for example, unauthorized reproduction and distribution of the copyrighted work."); Pinkham v. Sara Lee Corp. , 983 F.2d 824, 830 (8th Cir. 1992) ("A claim for copyright infringement involves two elements: (1) ownership and validity of the copyright, and (2) potential violation of the copyright owner's exclusive rights by, for example, unauthorized reproduction and distribution of the copyrighted work."). Under this precedent, "unauthorized" reproduction and distribution of the copyrighted work is not necessary to find a violation of the reproductive right. Therefore, the Court will not require plaintiffs to allege that defendants’ copying of the Photograph was unauthorized.
Even if the Court required such a pleading, plaintiffs pled "unauthorized copying" appropriately. Plaintiffs alleged that they did not license the Photograph to defendants, (Doc. 16, at 5), and plaintiffs repeatedly allege that defendants’ posting of the Photograph was "unauthorized." (Id. , at 7). Among these allegations in their Amended Complaint plaintiffs alleged: defendants received money from donations made in response to "[d]efendants’ unauthorized posting of the Subject Photo on the Website ...."; the Infringing Photograph "constitutes unauthorized uses of the Subject Photograph."; and defendants published and displayed "the Infringing Photograph to the public, including without limitation, on www.steveking.com without authorization or consent." (Id. ).
Thus, the Court denies defendants’ motion to dismiss on this ground.
2. Copyright in the Photograph
Both parties dispute whether plaintiff Laney had copyright in the Photograph when defendants copied that Photograph. (Docs. 43-1, at 16-17; 45, at 8).
Defendants argue that plaintiffs cannot show that defendants copied a protected copy of the Success Kid Photograph. (Doc. 43-1, at 16). Defendants assert that plaintiff Laney gave away the work in 2007 and that the early life of the Photograph was "marked by unrestricted usage of the image." (Id. , at 16-17). Defendants then argue that liability turns on "whether Defendant[s] ‘copied’ a version of the Gesturing Toddler Image that [plaintiff Laney] authorized for copying or whether it did not." (Id. , at 16). For legal support, defendants draw upon Judge Learned Hand's explanation: "but if by some magic a man who had never known it were to compose anew Keats's ‘Ode on a Grecian Urn,’ he would be an "author," and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats's." (Id. , at 16–17) (citing Sheldon v. Metro-Goldwyn Pictures Corp. , 81 F.2d 49, 54 (2d Cir. 1936) ). Here, defendants argue that many copies of the Photograph derive from the early releases "marked by unrestricted usage of the image," and thus were not protected by copyright. (Id. , at 16).
That argument is unsupported by law and misunderstands Judge Hand's quote. A work must be "original," amongst other requirements, to receive copyright protection. 17 U.S.C. § 102(a). Judge Hand's quote means that a work need not be new or first-of-its-kind to be "original." Originality in copyright "means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Feist Publ'ns, Inc. , 499 U.S. at 345-46, 111 S.Ct. 1282. Originality "does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying." Id. The Supreme Court gave this example: "To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable." Id. In other words, if both Shakespeare and a monkey, each ignorant of the other, composed identical versions of Hamlet, both works would be original and thus copyrightable, subject to the other terms of Section 102(a).
Plaintiffs’ Photograph does not match this situation, as no other person took an identical picture to the one at issue here. Therefore, insofar as defendants argue that plaintiffs cannot show that they copied a protected photograph, their defense is unsupported by law, and not enough to dismiss plaintiffs’ Amended Complaint.
3. Copyright Abandonment
Defendants then argue that plaintiff Laney "abandoned her right to these copies[,]" an argument that inches closer to existing doctrine. (Doc. 43-1, at 6). Plaintiffs assert that there are no means under copyright law for a work to inadvertently enter the public domain, by abandonment or otherwise, save for the provisions of the Copyright Act that deals with term length. 17 U.S.C. § 302(a) ; (Doc. 45, at 8).
Simultaneously, defendant King also asserts that plaintiff Laney granted several licenses to Facebook and Instagram, including a right to further sublease content. (Doc. 43-1, at 6). Defendants also allege plaintiff Laney then encouraged third party uses of the Photograph.
But courts have repeatedly held that an owner may abandon a copyright, even though the Copyright Act does not so state. The Eighth Circuit Court of Appeals has not held that an abandonment doctrine exists, but its component districts have held that copyright can be abandoned if there is both (1) an intent by the copyright owner to surrender the rights and (2) an overt act showing that intent. Johnson v. Salomon , No. 4-73 Civ 536, 1977 WL 22758, at *30 (D. Minn. May 25, 1977) ; Sw. Bell Tel. Co. v. Nationwide Indep. Directory Serv. , 371 F. Supp. 900, 906 (W.D. Ark. 1974) ; Bubble Pony, Inc. v. Facepunch Studios Ltd. , No. 15-601(DSD/FLN), 2017 WL 1379326, at *3, *8 (D. Minn. Apr. 14, 2017) ; Rouse v. Walter & Assocs., L.L.C. , 513 F. Supp. 2d 1041, 1069 (S.D. Iowa 2007). Failure to object or to act has usually not shown "intent to relinquish" the rights, however. Bubble Pony, Inc. , 2017 WL 1379326, at *3.
Other circuits have also followed an abandonment doctrine. Zyla v. Wadsworth , 360 F.3d 243, 250 (1st Cir. 2004) ; Nat'l Comics Publ'ns, Inc. v. Fawcett Publ'ns, Inc. , 191 F.2d 594, 598 (2d Cir. 1951) ; Dam Things from Den. v. Russ Berrie & Co. , 290 F.3d 548, 560 (3d Cir. 2002) ; Imperial Homes Corp. v. Lamont , 458 F.2d 895 (5th Cir. 1972) ; Micro Star v. Formgen Inc. , 154 F.3d 1107, 1114 (9th Cir. 1998). So too do the leading scholars in copyright law. 4 Nimmer on Copyright § 13.06 (citations omitted).
Here, taking the facts in the Amended Complaint, (Doc. 16), as true, plaintiffs did not commit an overt act that showed intent to abandon their rights in the Photograph. Plaintiff Laney registered the copyright in the Photograph on February 22, 2012. (Id. , at 4). Subsequently, plaintiff Laney licensed the Photograph to third parties who "bargained for licenses" and "paid for the rights they legitimately acquired." (Id. , at 5). Even though defendants raise factual assertions in rebuttal, (Doc. 47, at 6-7), the Court cannot consider them at this stage. Drawing all reasonable inferences in plaintiffs’ favor, plaintiff Laney's licensing behavior shows that she did not commit any overt act that showed an intent to surrender her rights in the work between taking the Photograph and registering of the copyright, or after registering the copyright. (Docs. 1; 16). The doctrine of copyright abandonment is not grounds to dismiss plaintiffs’ claim at this stage.
4. Protected Elements of the Photograph
Defendants also argue that plaintiffs did not successfully allege that defendants copied "protected elements" of the Photograph, because the image of plaintiff Sam was unprotected. (Doc. 43-1, at 18). The issue is whether plaintiff Laney's copyright in the Photograph extends to the image of Sam Griner as he made his iconic pose. Defendants describe plaintiff Sam as the "Subject" and seems to argue that the "Subject" is not a copyrightable element. (Id. , at 16). But defendants mistakenly conflate the Subject and the image of the Subject when copyright law recognizes a legal distinction between the two.
Copyright protection extends to the components of a work that are original to the author. Feist Pub'ns, Inc. , 499 U.S. at 348, 111 S.Ct. 1282. To be original, the "requisite level of creativity is extremely low; even a slight amount will suffice." Id. at 354, 111 S.Ct. 1282. In the context of photographs, the image of a subject and the subject itself may both receive copyright protection, based on the originality of the photograph. Mannion v. Coors Brewing Co. , 377 F. Supp. 2d 444, 452 (S.D.N.Y. 2005). A photograph may be original in three respects that are not mutually exclusive. Id. There may be originality in rendition, which resides "in such specialties as angle of shot, light and shade, exposure, effects achieved by means of filters, developing techniques etc." Id. To the extent a photograph is original in this way, "copyright protects not what is depicted, but rather how it is depicted." Id. There may be originality in timing. In that case, the image that exhibits the originality, but not the underlying subject, qualifies for copyright protection. Id. at 453. There may also be originality in the creation of the subject if the author created "the scene or subject to be photographed." Id. A photograph may be original to the extent that the photographer created "the scene." Id.
To conclude, the nature and extent of protection conferred by the copyright in a photograph will vary depending on the nature of its originality. Id. Insofar as a photograph is original in the rendition or timing, copyright protects the image but does not prevent others from photographing the same object or scene. Id. By contrast, to the extent that a photograph is original in the creation of the subject, copyright extends also to that subject. Id. at 454. Thus, an artist who arranges and then photographs a scene often will have the right to prevent others from duplicating that scene in a photograph or other medium. Id.
Here, plaintiffs did not plead that they "arranged and then photographed" the scene, so they are not entitled to originality "in the creation of the subject." If another photographer had taken a different picture of plaintiff Sam when he made the iconic pose, plaintiff Laney would not have copyright in that different picture. But taking these facts as true and drawing all reasonable inferences in her favor, plaintiffs have alleged sufficient facts to show originality at least in timing, because the image, not the underlying subject, is original. Therefore, plaintiffs have alleged sufficient facts to show that the image of Sam Griner, the Photograph, is entitled to copyright protection. That is, on these facts, plaintiff Laney is entitled to copyright protection in every version of the Photograph that she took of plaintiff Sam making the iconic pose, including the meme posted by defendants.
5. Copying in Fact
Taking these facts as true and all reasonable inferences in plaintiffs favor, plaintiffs thus sufficiently alleged that they have copyright in the Photograph. The Court turns to whether, taking these facts as true, it is plausible that defendants copied the Photograph.
Copying may be established in two ways. First, copying can be established by direct evidence. Such evidence of copying is difficult to establish "because it includes evidence such as party admissions, witness accounts of the physical act of copying, and common errors in the works of plaintiffs and the defendants." Rottlund Co. v. Pinnacle Corp. , 452 F.3d 726, 732 (8th Cir. 2006). Because direct evidence is rare, copying can also be established by "demonstration of access (by the alleged infringer) and substantial similarity (between the works at issue)." Design Basics v. Spahn & Rose Lumber Co. , No. 19-CV-1015-CJW-MAR, 2021 WL 493415, at *4 (N.D. Iowa Feb. 10, 2021) (cleaned up); Designworks Homes Inc. v. Columbia House of Brokers Realty, Inc. , 421 F. Supp. 3d 838, 843 (W.D. Mo. 2019) (cleaned up).
a. Access
A plaintiff "can establish access by showing that the defendants had an opportunity to view or copy his work." Moore v. Columbia Pictures Indus., Inc. , 972 F.2d 939, 942 (8th Cir. 1992) (cleaned up). A plaintiff must prove that "defendants had a ‘reasonable possibility’ of viewing [the] work," and the mere possibility of access is not enough. Id. (citing Ferguson v. Nat'l Broadcasting Co. , 584 F.2d 111, 113 (5th Cir. 1978) ). Access "may not be inferred based on conjecture and speculation." Hoch v. MasterCard Int'l Inc. , 284 F. Supp. 2d 1217, 1220 (D. Minn. 2003) (citing Selle v. Gibb , 741 F.2d 896, 901 (7th Cir. 1984) ); Design Basics, L.L.C. , 2021 WL 493415, at *4.
A reasonable possibility of access "may be established by evidence that prior to the creation of the infringing work, the copyrighted work was widely disseminated to the public." Hoch , 284 F. Supp. 2d at 1220. In determining whether a work was widely distributed enough to evidence access, courts consider the number of copies distributed, the commercial success, and national performances or distribution. Id.
Here, plaintiffs allege sufficient facts showing that defendants had an opportunity to view or copy the Photograph. Plaintiffs alleged that plaintiff Laney registered the Photograph in 2012. (Doc. 1, at 3). They allege that the Photograph "quickly gained widespread popularity and became an Internet ‘meme’ through millions of people non-commercially posting the Photograph on their social media accounts ...." (Id. , at 4). They also allege that the photograph is known "throughout this country and internationally[.]" (Id. , at 3). Plaintiffs then allege that in 2020, defendants posted a copy of the Photograph. (Id. , at 5). Taking the facts as pled as true, plaintiffs thus allege that at least millions of copies were distributed before the infringing work. (Id. , at 4). This is sufficient to state a claim that defendants had access to the work.
b. Substantial Similarity
A court can properly determine substantial similarity as a matter of law. See Nelson , 873 F.2d at 1142. Because substantial similarity "is a close question of fact, however, summary judgment has traditionally been frowned upon." Benchmark Homes, Inc. v. Legacy Home Builders, L.L.C. , No, 8:03CV527, 2006 WL 994566, at *3 (D. Neb. Jan. 27, 2006) (cleaned up). See also Hartman v. Hallmark Cards, Inc. , 833 F.2d 117, 121 (8th Cir. 1987) ("Summary judgment is not favored, but when substantial similarity is the sole issue it is appropriate if the works are so dissimilar that ‘reasonable minds could not differ as to the absence of substantial similarity in expression.’ "); Design Basics , 2021 WL 493415, at *7. This preference against resolving substantial similarity on summary judgment logically applies with greater strength against resolving substantial similarity on motions to dismiss for failure to state a claim.
The Eighth Circuit Court of Appeals uses a two-step process to determine whether two works are substantially similar. Hartman , 833 F.2d at 120. The two-step process considers the substantial similarity "not only of the general ideas but of the expressions of those ideas as well." Id. First, "similarity of ideas is analyzed extrinsically, focusing on objective similarities in the details of the works." Id. The extrinsic test depends on objective criteria, such as "the type of artwork involved, the materials used, the subject matter, and the setting for the subject." Nelson v. PRN Prods., Inc. , 873 F.2d 1141, 1143 (8th Cir. 1989) (citation omitted). Second, "if there is substantial similarity in ideas, similarity of expression is evaluated using an intrinsic test depending on the response of the ordinary, reasonable person to the forms of expression." Hartman , 833 F.2d at 120.
Defendants ask the Court to apply the three stages of analysis from Comput. Assocs. Int'l v. Altai, Inc. : (1) abstraction, (2) filtration, and (3) comparison. (Doc. 43-1, at 18) (citing 982 F.2d 693, 706 (2d Cir. 1992) ). That test does not apply here for two reasons. First, it is not the law of this circuit. Second, it is meant to "determine whether the non-literal elements of two or more computer programs are substantially similar." Id. at 706 (emphasis added); see also id. at 721.
First, plaintiffs have alleged sufficient facts to show substantial similarity of ideas based on objective similarities in the details of the work. Taking the alleged pictures here as true representations of the works, the pictures feature one very prominent similarity—namely, plaintiff Sam Griner's youthful visage. On its face, plaintiffs’ Photograph and defendants’ meme use the same subject at the same time, wearing the same clothing, in the same pose. (Doc. 1, at 4, 6). Further, both subjects are featured in the foreground. (Id. ). In short, the subject is identical. The pictures have differences, to be sure. The subject in the Photograph is to the left of center, while the subject in the Infringing Work is to the right of center. (Id. ). The subject in the Photograph is larger in relation to the entire work than is the subject in the Infringing Work. (Id. ). The backgrounds are entirely different. (Id. ). But despite these differences, the Court finds that substantial similarity in ideas is plausible.
Plaintiffs have also alleged sufficient facts to show substantial similarity of expressions based on the intrinsic test. Here, as noted above, plaintiffs have sufficiently alleged that the Photograph of Sam Griner is protectable. Drawing all reasonable inferences in plaintiffs’ favor, an ordinary, reasonable person would likely find the image of Sam Griner in defendants’ advertisement to be identical to the image of Sam Griner in the Photograph. Therefore, plaintiffs have sufficiently alleged substantial similarity, and have thus sufficiently stated a claim of copyright infringement.
6. First Sale Arguments
Defendants’ exhaustion and first-sale doctrine arguments (Doc. 47, at 5) do not apply to this dispute, because they are limited to infringements of plaintiff Laney's distribution right. That is, they only apply when a plaintiff seeks to prevent a defendant from selling or giving away copies of plaintiffs’ work. See 17 U.S.C. § 109(a) ("[T]he owner of a particular copy or phonorecord lawfully made under this title is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. ") (emphasis added); see also 2 NIMMER ON COPYRIGHT §§ 8.12, 8.13. Defendants’ reliance on Allison v. Vintage Sports Plaques similarly misses the mark as that case concerns the distribution right, not at issue here. 136 F.3d 1443, 1450 (11th Cir. 1998). Therefore, defendants’ arguments do not furnish a basis to dismiss plaintiffs’ claim.
D. Invasion of Privacy Claim
The Court turns to plaintiffs’ claim of invasion of privacy by appropriation. The Iowa Supreme Court recognizes the tort of "invasion of privacy." Winegard v. Larsen , 260 N.W.2d 816 (Iowa 1977). Adopting the description of the Second Restatement of Torts, the Iowa Supreme Court describes the tort as follows:
(1) One who invades the right of privacy of another is subject to liability for the resulting harm to the interests of the other.
(2) The right of privacy is invaded by
(a) unreasonable intrusion upon the seclusion of another, as stated in § 652B; or
(b) appropriation of the other's name, or likeness, as stated in § 652C; or
(c) unreasonable publicity given to the other's private life, as stated in § 652D; or
(d) publicity that unreasonably places the other in a false light before the public, as stated in § 652E.
Winegard , 260 N.W.2d at 822. Iowa state courts have not elaborated on the "appropriation" form of this tort. Madison J. Murhammer Colon, Note: How Can Iowans Effectively Prevent the Commercial Misappropriation of Their Identities? Why Iowa Needs a Right of Publicity Statute , 106 IOWA L. REV. 411, 427 (2020). Cf. Koeppel v. Speirs , 808 N.W.2d 177, 181 (Iowa 2011) ; Stessman v. Am. Black Hawk Broad. Co. , 416 N.W.2d 685, 686 (Iowa 1987).
Neither has this Court. The Court has recognized the four types of claims falling under "invasion of privacy" under Iowa law, but has not had occasion to analyze the "appropriation" form. See Newkirk v. GKN Armstrong Wheels, Inc. , 168 F. Supp. 3d 1174, 1201 (N.D. Iowa 2016) (focusing on "false light"); Tinius v. Carroll County Sheriff Dep't , 321 F. Supp. 2d 1064, 1082 (N.D. Iowa 2004) (focusing on "intrusion upon seclusion"); Hanson v. Hancock Cnty. Memorial Hospital , 938 F. Supp. 1419, 1435–36 (N.D. Iowa 1996) (focusing on "intrusion upon seclusion" and "unreasonable publicity"); Luken v. Edwards , No. C10-4097-MWB, 2011 WL 1655902, at *5 (N.D. Iowa May 3, 2011) (focusing on "intrusion upon seclusion"); McFarland v. McFarland , 684 F. Supp. 2d 1073, 1092 (N.D. Iowa 2010) (focusing on "false light").
The Restatement of Torts elaborates on the "appropriation" form of "invasion of privacy." Section 652A of the Restatement of Torts states that the "right of privacy is invaded by ... (b) appropriation of the other's name or likeness, as stated in § 652C." RESTATEMENT (SECOND) OF TORTS § 652A (AM. L. INST. 1977). Section 652C in turn states that "[o]ne who appropriates to his own use or benefit the name or likeness of another is subject to liability to the other for invasion of his privacy." Id. , at Section 652C. The common form of this invasion is the appropriation and use of a plaintiff's name or likeness to advertise a defendant's business or product, or for some "similar commercial purpose." Id. at Section 652C cmt. b.
Comment d of Section 652C sketches the bounds of appropriation. The tort applies only when the name or likeness is published to appropriate "to the defendant's benefit the commercial or other values associated with the name or the likeness[.]" Id. at § 652C cmt. d. It does not apply to an "incidental use" of a plaintiff's name or likeness, such as a "mere mention" of his name or likeness, a reference to the plaintiff's name or likeness while legitimately discussing "his public activities," or a publication of his name or likeness for a purpose "other than taking advantage of the reputation, prestige, or other values associated with him." Id.
Defendants argue that this unauthorized publication is not an appropriation, because it only uses the likeness of Sam Griner and does not appropriate the values that people associate with the individual Sam Griner. (Doc. 47, at 3). They implicitly argue that the Restatement and precedent distinguish between appropriating the value of a person and appropriating the value of his likeness, where the use of a likeness "for the sake of a likeness, rather than the person" is an incidental use and not an appropriation. (Id. , at 3). Therefore, defendants argue, plaintiffs would need to show that defendants published the Photograph to "invoke the qualities that the people associate particularly with Sam Griner" for defendant King's benefit. (Id. , at 3).
The Restatement does not clearly distinguish between appropriating the value associated with the individual and appropriating the value associated with the likeness. Granted, comment d of Section 652C states that the value of the likeness is not "appropriated when it is published for purposes other than taking advantage of his reputation, prestige, or other value associated with him ...." RESTATEMENT (SECOND) OF TORTS § 652C cmt. d (emphasis added). But that same comment also found an invasion of privacy when publicity is given to appropriate the "commercial or other values associated with the name or likeness ." Id. (emphasis added).
Furthermore, defendants’ cited precedents do not match this dispute. In Barnhart v. Paisano Publications, LLC , a federal court in Maryland declined to support an appropriation claim when the record did not establish that the plaintiff was "famous or a professional model or that there [was] any special value associated with her likeness." 457 F. Supp. 2d 590, 595 (D. Md. 2006). In Nelson v. Maine Times , the court dismissed an appropriation claim when the plaintiff could not show that the publisher, in this case a newspaper, had financially benefited from publishing the unauthorized likeness. 373 A.2d 1221, 1222 (Me. 1977).
But here, plaintiffs can allege a special value associated with Sam Griner's likeness in the Photograph. Plaintiffs alleged and argued that plaintiff Laney licensed the Photograph commercially, and that legitimate advertisers, unlike defendants, "paid for the rights they legitimately acquired." (Docs. 16, at 5; 45, at 11). Taking these facts as true, the Court can reasonably infer in plaintiffs’ favor that a commercial value is associated with the likeness, a value equivalent to the price that "legitimate advertisers" paid for the rights in the Photograph. Furthermore, the Court may infer at this stage that when defendants published that likeness without paying for the rights, defendants appropriated that commercial value in the form of the payment avoided.
So, plaintiffs alleged that defendants published plaintiff Sam's likeness, did so without authorization, and did so to appropriate the commercial value of plaintiff Sam's likeness. At this stage, these allegations are sufficient to state a claim of relief. Therefore, the Court will not dismiss plaintiffs’ invasion-of-privacy claim for failure to state a claim.
IV. CONCLUSION
For these reasons, defendants’ Motion to Dismiss (Doc. 43) is denied.
IT IS SO ORDERED this 20th day of October, 2021.