Opinion
Civil Action 23-1621
11-01-2024
VITO PELINO, Plaintiff, v. JON LOGAN, CEO SMART COMMUNICATIONS; MS. L. KOIS; SMART COMMUNICATIONS, Defendants.
MARK R. HORNAK, CHIEF DISTRICT JUDGE
REPORT AND RECOMMENDATION
RE: ECF NOS. 44 AND 48
MAUREEN P. KELLY, UNITED STATES MAGISTRATE JUDGE
I. RECOMMENDATION
Presently before the Court is a Motion to Dismiss filed on behalf of Defendant Ms. L. Kois ("Kois"), ECF No. 44, and a Motion to Dismiss filed on behalf of Defendants Jon Logan ("Logan") and Smart Communications, ECF No. 48.
For the following reasons, it is respectfully recommended that the Court grant both Motions to Dismiss.
II. REPORT
A. FACTUAL AND PROCEDURAL BACKGROUND
Plaintiff Vito Pelino ("Pelino") is an inmate confined at the State Correctional Institution at Greene ("SCI - Greene"). He brings this pro se copyright infringement action for Defendants' participation in making a copy of his registered work to deliver to him through the Pennsylvania Department of Corrections ("DOC") inmate mail distribution process. ECF No. 41.
Pelino created an adult-themed comic book series and registered a copyright for the work with the United States Copyright Office at Number TXu 1-923-034. Id. at 2, see also ECF No. 1-3. Pelino authorized his brother to makes copies of two issues of the series to enter a prisoner literary competition sponsored by Cadmus Publishing. His brother made one copy too many and sent the extra copy to Pelino through DOC's non-privileged mail system. Id. at 2.
In accordance with DC-ADM 803 (Inmate Mail and Incoming Publications), non-privileged inmate correspondence must be sent to DOC's contracted central mail processing center, operated by Defendant Smart Communications. Id., see also ECF No. 49-1 (DC-ADM 803, Section 1.A.3). Smart Communications' staff open and scan incoming non-privileged correspondence and electronically transmit the scanned copies to staff at the inmate's DOC facility. DC-ADM 803, Section 1.C.2-3. DOC facility staff then print and deliver paper copies of the incoming correspondence to the identified inmate recipient. Smart Communications retains the original and an electronic copy of the correspondence for 45 days before destroying both, unless otherwise instructed by DOC. Id., Section 1.C.4, 5.
Pelino names “Smart Communications” as a Defendant but as clarified by counsel, the contracted vendor is Smart Communications Holding, Inc. ECF No. 49 n.1.
Pelino contends that through the DOC and Smart Communications inmate mail process, Defendants violated the Federal Copyright Act of 1976, 17 U.S.C. § 106(1), when they digitally stored, transmitted, and reproduced his copyrighted work without his authorization. ECF No. 41 at 3. As relief, Pelino seeks an injunction voiding the DOC contract with Smart Communications and compelling the DOC to destroy any copies of his registered works. Id. at 4. He also seeks statutory damages of $150,000 pursuant to 17 U.S.C. § 504(c)(2).
Pelino commenced this action on September 11, 2023, with the submission of a Motion for Leave to Proceed in forma pauperis. ECF No. 1. The motion was denied in accordance with the “three strikes” provision of 28 U.S.C. § 1915(g). ECF No. 4. Pelino paid the required filing fee on November 13, 2023, and his initial Complaint against Kois and Logan was docketed on November 13, 2023. ECF No. 4. Logan and Kois each filed a Motion to Dismiss for Failure to State a Claim. ECF Nos. 21 and 26. In response to the motions, Pelino filed “Plaintiff's Amended Complaint for Infringement of Copyright.” ECF No. 41. In the Amended Complaint, Pelino adds Smart Communications as a Defendant and withdraws his claim related to the alleged unlawful distribution of his copyrighted material. Id. As amended, Pelino asserts a single cause of action for copyright infringement under 17 U.S.C. § 106(1), claiming that Defendants violated his exclusive right to reproduce his copyrighted works.
Kois responded to the Amended Complaint with a Motion to Dismiss for failure to state a claim and a brief in support. ECF Nos. 44, 45. Logan and Smart Communications also filed Motion to Dismiss and brief in support. ECF Nos. 48, 49. Pelino filed responses in opposition to both motions. ECF Nos. 54, 55. Logan and Smart Communications filed a Reply and Pelino filed a Sur-Reply. ECF Nos. 56, 57.
The Motions to Dismiss are ripe for consideration.
B. STANDARD OF REVIEW
1. Federal Rule of Civil Procedure 12(b)(6)
A motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) tests the legal sufficiency of the complaint. Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). The complaint must “state a claim to relief that is plausible on its face” by providing facts which “permit the court to infer more than the mere possibility of misconduct…,” Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009), and “raise a right to relief above the speculative level,” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). In assessing the plaintiff's claims, “the Court must accept all non-conclusory allegations in the complaint as true, and the non-moving party ‘must be given the benefit of every favorable inference.'” Mergl v. Wallace, No. 2:21-1335, 2022 WL 4591394, at *3 (W.D. Pa. Sept. 30, 2022) (quoting Malleus v. George, 641 F.3d 560, 563 (3d Cir. 2011) and Kulwicki v. Dawson, 969 F.2d 1454, 1462 (3d Cir. 1992)). “However, the Court ‘disregard[s] threadbare recitals of the elements of a cause of action, legal conclusions, and conclusory statements.'” Mergl, 2022 WL 4591394, at *3 (quoting City of Cambridge Ret. Sys. v. Altisource Asset Mgmt. Corp., 908 F.3d 872, 878-79 (3d Cir. 2018) and James v. City of Wilkes-Barre, 700 F.3d 675, 681 (3d Cir. 2012)).
2. Section 1915A Screening
Despite Pelino's payment of fees to commence this action, and apart from the arguments raised by counsel, the Court is obligated to screen Pelino's Amended Complaint pursuant to 28 U.S.C. § 1915A. Under Section 1915A, the Court must review “a complaint in a civil action in which a prisoner seeks redress from a governmental entity or officers or employee of a governmental entity.” Upon review, the Court must dismiss a complaint or any portion thereof that “is frivolous, malicious, or fails to state a claim upon which relief may be granted.” Id. § 1915A(b)(1). See Savage v. Carney, No. 21-4612, 2022 WL 2047951, at *3 (E.D. Pa. June 7, 2022) (applying 1915A to Corizon, an entity under contract to provide medical services to prison inmates); Saunders v. BB&T Bank, No. 20-4530, 2020 WL 6146654, at *6 (E.D. Pa. Oct. 20, 2020), aff'd as modified 852 Fed.Appx. 651 (3d Cir. 2021) (applying Section 1915A to both government and private party defendants); Sinanan v. Child., Youth & Fam. Div., Cnty. of Northampton, Gov't Agency, No. 23-2442, 2024 WL 308528, at *6 (E.D. Pa. Jan. 26, 2024), appeal dismissed sub nom., No. 24-1218, 2024 WL 3649023 (3d Cir. Mar. 26, 2024) (same).
3. Consideration of Pro Se Filings
Because Pelino is proceeding pro se, his filings are construed liberally. Vogt v. Wetzel, 8 F.4th 182, 185 (3d Cir. 2021) (citing Mala v. Crown Bay Marina, Inc., 704 F.3d 239, 244-45 (3d Cir. 2013)). “This means [the Court] remain[s] flexible, especially ‘when dealing with imprisoned pro se litigants'” like Pelino. Id. “Yet ‘pro se litigants still must allege sufficient facts in their complaints to support a claim. And “they cannot flout procedural rules-they must abide by the same rules that apply to all other litigants.” Id. (internal citation omitted).
C. DISCUSSION
As an initial matter, the Court notes that this is Pelino's fourth lawsuit challenging the above described DOC mail procedures, which were implemented to prevent contraband or narcotics from entering state prisons and exposing DOC staff to drug-soaked mail. See Pelino v. Logan, No. 19-355, 2019 WL 6329733 (Oct. 9, 2019), report and recommendation adopted, 2019 WL 6329656 (W.D. Pa. Nov. 26, 2019), aff'd, No. 19-3831 (3d Cir. June 12, 2020) (dismissing with prejudice Pelino's claims against Smart Communications and Logan for alleged violations of the Stored Communications Act, 18 U.S.C. § 2701(a) for contracting to electronically copy, store, and process DOC inmates' incoming mail); Pelino v. Wetzel, No. 21-1363, 2022 WL 1239050 (3d Cir. Apr. 27, 2022) (affirming dismissal for failure to state a claim Pelino's claims that scanning and photocopying incoming non-privileged mail violates his First and Fourteenth Amendment rights); Pelino v. Wetzel, No. 18-3771, 791 Fed.Appx. 371 (3d Cir. 2020) (affirming dismissal for failure to exhaust administrative remedies action against DOC officials for the alleged violation of rights resulting from use of Smart Communications to process non-privileged inmate mail).
The Court takes judicial notice of a DOC press release dated October 19, 2018, a matter of public record. See Smith v. Wolf, No. 3:19-0711, 2020 WL 4551229, at *7 (M.D. Pa. Aug. 6, 2020) (citing JNL Mgmt., LLC v. Hackensack Univ. Med. Ctr., No. 18-5221, 2019 WL 1951123, at *4 (D.N.J. May 2, 2019) (“[T]he Department of Justice's Press Release is also a matter of public record because it is a record of a government agency.”) (citing Schmidt v. Skolas, 770 F.3d 241, 250 (3d Cir. 2014)). The press release may be located at https://www.media.pa.gov/pages/correctionsdetails.aspx?newsid=362
In her Motion to Dismiss, Kois contends that Pelino's claim fails because he knew of DOC's mail processing requirements and, through his brother, authorized the reproduction of the comic book to facilitate delivery to him. ECF No. 45 at 6. Thus, no infringement occurred. In their Motion to Dismiss, Logan and Smart Communications argue that Pelino fails to state a claim against them because neither had the required volition to infringe the comic book in an unauthorized manner. ECF No. 49 at 8-9. They also contend that as a third-party vendor, Smart Communications assisted DOC, as a party who is authorized and has a right to reproduce Pelino's work. Id. at 7-8.
Neither party squarely addresses the defense of “fair use” that is applicable on the face of Pelino's Amended Complaint. However, upon review, it is recommended that the Court dismiss this action pursuant to its authority under 28 U.S.C. § 1915A for failure to state a claim. See, e.g., McPherson v. United States, 392 Fed.Appx. 938, 943 (3d Cir. 2010) (“We agree that when a statute-of-limitations defense is apparent from the face of the complaint, a court may sua sponte dismiss the complaint pursuant to 28 U.S.C. § 1915 or 28 U.S.C. § 1915A.”). As more fully explained below, Pelino's allegations establish that the one-time scanning and reproduction of a single copy of his work for delivery to him is a “fair use” of the comic book that precludes the imposition of liability for infringement. In addition, the reproduction serves DOC's legitimate penological interest in the safety of inmates and staff and presents no independent commercial purpose or market-based harm. Therefore, Pelino fails to state a plausible claim for relief.
1.Copyright Act and Fair Use
The Copyright Act of 1976 confers a copyright owner the exclusive right to reproduce the copyrighted work. 17 U.S.C. § 106(1). This statutory right is limited so that “[e]ven unauthorized uses of a copyrighted work are not necessarily infringing. An unlicensed use of the copyright is not an infringement unless it conflicts with one of the specific exclusive rights conferred by the copyright statute. Moreover, the definition of exclusive rights in § 106 of the present Act is prefaced by the words ‘subject to sections 107 through 118.' Those sections describe a variety of uses of copyrighted material that ‘are not infringements of copyright notwithstanding the provisions of § 106.'” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 448 (1984) (internal citations omitted). Included in the list is Section 107, “the legislative endorsement of the doctrine of ‘fair use.'” Id.
Fair use is “integral to copyright's objectives.” Hon. Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1110 (1990). The exception provides that “the fair use of a copyrighted work, including such use by reproduction in copies … for purposes such as criticism, comment, news, reporting, teaching … scholarship, or research, is not an infringement of copyright.” 17 U.S.C. § 107. The list of uses is not exclusive and in Sony, supra, was applied to preclude a contributory infringement claim against Betamax for enabling home-use video recording of protected works to facilitate user “time-shifting.” Sony, 464 U.S. at 456. The United States Supreme Court explained that fair use “enable[s] a Court to apply an ‘equitable rule of reason' analysis to particular claims of infringement.'” Id. at 448. The statutory factors to be considered include:
1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value of the copyrighted work.17 U.S.C. § 107.
These statutory factors “are to be explored, and the results weighed together, in light of the purposes of copyright.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994).
In the case at issue, the second and third factors weigh in Pelino's favor because his entire copyrighted work was digitally stored for 45 days and reproduced for delivery to him. ECF No. 41-3. However, when considered against the purpose of copyright generally and the effect of Defendants' use on the value of his work, Pelino fails to allege a plausible claim for infringement.
The first factor “considers the reasons for, and nature of, the copier's use of an original work.” Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 527-28 (2023). “The central question it asks is whether the new work merely supersede[s] the objects of the original creation ... (‘supplanting' the original), or instead adds something new, with a further purpose or different character. In that way, the first factor relates to the problem of substitution- copyright's bête noire. The use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work is more likely to substitute for, or supplan[t], the work.” Id. at 528 (internal citations and quotation marks omitted).
In the Amended Complaint, Pelino alleges that Defendants “digitally stored, transmitted and reproduced” his work to facilitate processing and delivery of his own incoming non-privileged inmate mail to him. ECF No. 41 ¶¶ 7, 8, 10, 11. Thus, he pleads reproduction for a non-commercial use, for the benefit of - and indeed delivery to - the holder of the copyright. Thus, he pleads a use that bears no relation to “the problem of substitution” of his work.
The fourth fair use factor is “the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). “It requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant … would result in a substantially adverse impact on the potential market' for the original.” Campbell, 510 U.S. at 590.
Again, Pelino fails to plead any facts in the Amended Complaint that plausibly show “that some meaningful likelihood of future harm exists” from the challenged reproduction of his work for delivery to him. Sony, 464 U.S. at 451 (emphasis in original). As alleged in the Amended Complaint and set forth in the DOC policy at issue, DOC requires Smart Communications to scan incoming inmate mail, store the original and scanned copies for no longer than 45 days (unless otherwise instructed by DOC), and then destroy the original and scanned copies. ECF No. 45-1 at 14-15. As per the DOC policy, the DOC's employee prints and delivers the scanned copy to the inmate. Thus, as alleged by Pelino, there is no risk of substantial harm to the potential market for his comic book because he is the only recipient of the copy. The fourth factor, like the first factor, favors fair use.
In summary, while this case is in the pleadings stage, the averments of the Amended Complaint, and other documents of record construed in the light most favorable to Pelino are sufficient to conclude that the scanning, reproduction, and short-term storage of Pelino's comic book are fair use and not an infringement of his copyright. Because all relevant facts are before the Court, it is recommended that the Court dismiss the Amended Complaint pursuant to 28 U.S.C. § 1915A for failure to state a claim. See Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012) (affirming dismissal of infringement claim at early stage of proceedings where documents in record were sufficient to determine fair use); Cramer v. Netflix, Inc., No. 22-131, 2023 WL 6130030 (W.D. Pa. 2023) (granting motion to dismiss and dismissing action with prejudice for fair use based on record that included copyrighted material, history of obtaining copyrights, and copy of allegedly infringing copy).
2. Interference with Exclusive Reproduction as Incidental to Incarceration
The Court separately recommends dismissal of Pelino's claim against all Defendants because the challenged conduct is in accordance with a DOC policy addressing a legitimate penological objective and, in this case, cannot support imposing liability.
As Pelino is well-aware, the United States Court of Appeals for the Third Circuit has determined that the scanning, reproduction, and delivery of non-privileged inmate mail does not provide a basis for a First Amendment interference with mail claim or a Fourteenth Amendment due process claim. Pelino, 2022 WL 1239050. The Third Circuit has also held that the DOC mail policy, and Smart Communications' participation in carrying out the policy, do not violate an inmate's Fourth Amendment rights because an inmate has no reasonable expectation of privacy related to personal effects such as non-privileged mail. Robinson v. Pennsylvania Dep't of Corr., 851 Fed.Appx. 289, 293 (3d Cir. 2021). Finally, the Third Circuit held that defendants, including Smart Communications, were entitled to qualified immunity from a First Amendment challenge to the DOC mail policy. Rancourt Little Mountain Woodell v. Wetzel, No. 20-3235, 2022 WL 17424287, at *2 (3d Cir. Dec. 6, 2022).
To the extent that Pelino now alleges that the mail policy interferes with his statutory right to copyright protection, his claim also fails. It has long been recognized that “[l]awful incarceration necessarily operates to deprive a prisoner of certain rights and privileges he would otherwise enjoy in a free society. Some deprivations are a necessary and expected result of being an inmate of a penal institution which must provide for the custody, maintenance, discipline and optimistically, rehabilitation of those who have violated the laws of the sovereign.” Tunnell v. Robinson, 486 F.Supp. 1265, 1268 (W.D. Pa. 1980) (internal citations omitted). For example, “[w]hen a person is lawfully incarcerated in a penal institution, he loses the right, except as granted specially by a court before entering incarceration, to enter into, engage in or conduct ordinary business ventures and he does not have the right to set up his own business oriented ventures and require that special rules and regulations be tailored to accommodate such ventures.” Id.
This general principle was applied in Tormasi v. Hayman, 443 Fed.Appx. 742 (3d Cir. 2011), which affirmed the dismissal of a claim of alleged unlawful interference with a prisoner's statutory right to apply for a patent. Prison officials confiscated the patent application pursuant to a prison regulation that prohibited “commencing or operating a business or group for profit.…” Id. at *1. The regulation was held to be reasonably related to a legitimate penological interest, and thus the confiscation of the patent application did not violate any statutory or constitutional rights.
In this case, under the limited circumstances alleged in the Amended Complaint, the Court need not engage in the test developed by the Supreme Court in Turner v. Safley, 482 U.S. 78 (1987), to test the constitutionality of a policy and determine whether the policy is reasonably related to a legitimate penological interest. But even doing so, it cannot reasonably be disputed that the non-privileged mail procedures implemented by DOC and carried out by Smart Communications are vital to the protection of inmates and prison personnel from the entry of drugs into prison facilities. As recognized in the affirmance of the district court's dismissal of Pelino's earlier action, the mail policy “was implemented in 2018 after correctional staff were purportedly exposed to drug-soaked mail and became ill.” Pelino, 2022 WL 1239050, at *1. Thus, the mail policy is not arbitrary and is rationally related to the institutional security needs of DOC facilities.
See Pelino, 2022 WL 1239050, n. 11 (“Because Pelino has not shown that his rights have been violated, we do not consider whether the policy is constitutional under the test articulated in Turner v. Safley, 482 U.S. 78 (1987).”).
Because Pelino has not stated a claim for relief against any Defendant for the alleged violation of his exclusive right to copy his work, dismissal of this action against all parties with prejudice is proper.
In light of the recommended disposition of this matter, the Court does not address Kois's argument that Pelino's brother acted as his agent and authorized the reproduction of the comic book by sending it to him through DOC's inmate mail system. ECF No. 45 at 6-8. The Court also does not address Smart Communications' argument that as a third-party vendor acting on behalf of DOC, it was authorized to reproduce Pelino's copyrighted work, or that it lacked the requisite volition to infringe in an unauthorized manner. ECF No. 48 at 6-9.
D. CONCLUSION
For the foregoing reasons, it is respectfully recommended that the Court grant the Motion to Dismiss filed on behalf of Defendant Kois, ECF No. 44, and the Motion to Dismiss filed on behalf of Defendants Logan and Smart Communications, ECF No. 48, and that this action be dismissed with prejudice.
In accordance with the Magistrate Judges Act, 28 U.S.C. § 636(b)(1), and Local Rule 72.D.2, the parties may file written objections within fourteen days, or seventeen days for unregistered ECF Users. Objections are to be submitted to the Clerk of Court, United States District Court, 700 Grant Street, Room 3110, Pittsburgh, PA 15219. Failure to timely file objections will waive the right to appeal. Brightwell v. Lehman, 637 F.3d 187, 193 n. 7 (3d Cir. 2011). Any party opposing objections may respond to the objections within 14 days in accordance with Local Civil Rule 72.D.2.
All counsel of record by Notice of Electronic Filing
Vito A. Pelino
KP4339
SCI Greene169 Progress Drive
Waynesburg, PA 15370