1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 DON RAMEY LOGAN, Case No. 22-cv-01847-CRB
9 Plaintiff,
ORDER GRANTING MOTION TO 10 v. DISMISS
11 META PLATFORMS, INC., 12 Defendant.
13 I. BACKGROUND 14 Plaintiff Don Logan initiated this suit as a putative class action against Defendant 15 Meta Platforms, Inc. (“Meta”), asserting various copyright-related claims revolving around 16 Facebook’s embedding tool. Logan’s First Amended Complaint (“FAC”) (dkt. 18) sets 17 forth three sets of factual allegations. First, Logan alleges that Facebook’s embedding tool 18 enables third parties to infringe his copyrighted photos uploaded onto his Facebook 19 account by embedding them to third-party websites. Logan argues that Meta, by providing 20 the tool, is secondarily liable for the infringement. Second, Logan alleges that Meta itself 21 directly infringed his photos by embedding them from other websites onto Facebook and 22 saving them on Facebook’s servers. Third, Logan brings claims under the Lanham Act, 15 23 U.S.C. § 1125(a), and the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. 24 § 1202, alleging that Meta removed his copyright information from his photos and 25 replaced it with information misrepresenting the photos as its own. 26 Meta moves to dismiss the FAC. The Court, finding this mater suitable for 27 resolution without oral argument pursuant to Civil Local Rule 7-1(b), GRANTS the A. Factual Background 1 1. Two Types of Embedding 2 Broadly, Logan alleges that Meta is liable for two types of embedding activity: (1) 3 third parties embedding content from Facebook users’ pages onto third-party websites, and 4 (2) Meta embedding content from other websites onto Facebook. 5 Generally, embedding is a process that enables websites to incorporate other 6 websites’ original content—“links, images, video, gifs and other content”—onto their own 7 sites. FAC ¶¶ 3, 35. For example, Facebook users can upload original content onto 8 Facebook; the content is stored on Facebook’s servers1 and assigned “unique hypertext 9 markup language (‘HTML’) code.”2 Id. ¶ 3. Non-Facebook users can use other websites’ 10 embedding function to “add” the Facebook content’s corresponding HTML code to the 11 third-party website. Id. ¶ 33; Mot. (dkt. 23) at 3. The “embed” code “directs the [third- 12 party] browser to the Facebook servers to retrieve the photo or video,” allowing the 13 external website to display the photo or video hosted on Facebook’s servers. FAC ¶¶ 33, 14 35; Mot. at 3. 15 The FAC also alleges that Meta itself can embed content from third-party websites 16 onto Facebook. FAC ¶¶ 3, 18, 33, 35. According to the FAC, the embedding website— 17 whether a third-party website or Facebook—can save the embedded content onto its own 18 server using the “same [embedding] route,” should it choose to do so. See id. ¶¶ 3, 33, 35. 19 Meta owns a “unique script tool known as ‘safe image.php’ that it [allegedly] uses to take 20 URL[s] and store them on Facebook’s servers.” Id. ¶ 20. 21 2. The Complaint’s Factual Allegations 22 Logan is a California resident and Facebook user. Id. ¶ 4. He is also the creator 23 and copyright owner of various “high-quality photographs” that depict scenic or landmark 24 coastal areas around the country. Id. ¶¶ 4, 56. Meta is a Delaware company headquartered 25 26 1 “A server is . . . a computer connected to the Internet.” Mot. at 3. 27 2 “The HTML code allows for the arrangement of text and/or images and/videos on a page . . . . 1 in Menlo Park, California, and the parent company of Facebook, Inc. (“Facebook”). Id. 2 ¶ 5. Facebook “is a social media and social networking service company” that operates 3 through the Internet. Id. ¶ 1. 4 a. Meta’s Indirect Infringement Through Facebook’s Embedding Tool 5 At an unspecified point in time, Logan created a Facebook account and agreed to 6 Meta’s Terms of Use.3 Id. ¶¶ 4, 46; Mot. at 2. Under the Terms of Use, users grant Meta 7 “a nonexclusive license to publicly reproduce and display the content the user uploads to 8 Facebook.” Mot. at 2; see also Declaration of Annie A. Lee (dkt. 23-1) ¶ 2; Ex. 1 (dkt. 23- 9 2). Logan then began posting photos on his presumably public Facebook account. FAC 10 ¶ 4; see Mot. at 3 (“Only public posts can be embedded; private posts cannot.”). 11 On July 1, 2013, Facebook introduced its embedding tool. FAC ¶ 72. The tool 12 allows any third-party website to embed images from Logan’s Facebook account onto its 13 own site. Id. ¶¶ 32–34, 38–47, 54–56, 58–66. Logan alleges that third-party websites 14 embedded various of his copyrighted photos, including “some” unspecified photos from a 15 list of twenty-six photos provided in the FAC. Id. ¶ 56. Logan further alleges that third 16 parties infringed his exclusive copyright rights by embedding photos from his Facebook 17 account to external websites “all over the internet.” Id. ¶¶ 3, 43. 18 b. Meta’s Direct Infringement by Embedding Photos from 19 Wikimedia Commons 20 Logan separately alleges that at an unspecified point in time, Meta itself embedded 21 and thereafter displayed some of Logan’s photos from Wikimedia Commons 22 (“Wikimedia”) and saved them onto Facebook’s servers. Id. ¶¶ 1, 3, 17–20, 22–30, 37, 41, 23 3 In reviewing a motion to dismiss, “[a] court may . . . consider . . . documents incorporated by 24 reference in the complaint.” United States v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003); see also 25 Tellabs, Inc. v. Makor Issues & Rts., Ltd., 551 U.S. 308, 322. Documents are subject to incorporation by reference if the plaintiff refers to them “extensively,” or they form the basis of 26 the complaint. Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 1002 (9th Cir. 2018). The FAC alleges that “Facebook[’s] terms of use implied to Plaintiff and members of the Class that 27 Facebook would not allow unauthorized use of copyrighted works through its ‘embed’ feature.” 1 56; see also id. ¶ 22 n.1 (providing the link of a Newport Beach photo originally posted on 2 Wikimedia and allegedly saved onto Facebook’s servers). Logan published the photos on 3 Wikimedia under a “Creative Commons” license, which permits licensees to “reproduce, 4 publicly display and distribute copies” of the photos under certain restrictions, including 5 attributing Logan as the author. Id. ¶¶ 25–26. Logan alleges that Meta stripped the photos 6 of all identifying information and falsely identified itself as the owner by displaying its 7 “copyright tag on the bottom of each Facebook user page,” contravening the Creative 8 Commons license. Id. ¶¶ 3, 17–20, 48–50. 9 B. Procedural Background 10 Logan filed the Complaint on February 16, 2022, in the Southern District of New 11 York. Compl. (dkt. 1). On March 21, 2022, the parties stipulated to transfer the action to 12 this District. Stipulation and Order (dkt. 9). On March 24, 2022, the Clerk of Court 13 transferred the case to this District and assigned it to Judge Gonzalez Rogers. District 14 Transfer (dkt. 11). On April 5, 2022, the Court ordered the case related to Hunley v. 15 Instagram, LLC, 3:21-cv-03778-CRB,4 and reassigned the case to this Court. Order 16 Relating Case (dkt. 14); Case Reassigned (dkt. 15). 17 On May 16, 2022, Logan filed the FAC. The FAC asserts the following claims: (1) 18 Lanham Act false advertising under 15 U.S.C. § 1125(a), FAC ¶¶ 79–90; (2) direct 19 copyright infringement under 17 U.S.C. § 106, et seq., id. ¶¶ 91–102; (3) inducement of 20 copyright infringement, id. ¶¶ 103–13; (4) violation of the DMCA, 17 U.S.C. §§ 1201– 21 1205, id. ¶¶ 114–32; (5) contributory copyright infringement, id. ¶¶ 133–40; and (6) 22 vicarious copyright infringement, id. ¶¶ 141–50. 23 On July 27, 2022, Meta filed its Motion to Dismiss. On September 7, 2022, Logan 24 opposed the motion, and on September 21, 2022, Meta filed its Reply. Opp’n (dkt. 26); 25 26 4 Hunley has appealed this Court’s dismissal of that case, seeking a reversal of Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which required the dismissal of Hunley’s 27 claims. See Hunley v. Instagram, LLC, 22-15293 (9th Cir.); Hunley v. Instagram, LLC, No. 21- cv-03778-CRB, 2021 WL 4243385 (N.D. Cal. Sept. 17, 2021); Hunley v. Instagram, LLC, No. 1 Reply (dkt. 28). 2 II. LEGAL STANDARD 3 Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a complaint may be 4 dismissed for failure to state a claim upon which relief may be granted. Fed. R. Civ. P. 5 12(b)(6). Rule 12(b)(6) applies when a complaint lacks either “a cognizable legal theory” 6 or “sufficient facts alleged” under such a theory. Godecke v. Kinetic Concepts, Inc., 937 7 F.3d 1201, 1208 (9th Cir. 2019). Whether a complaint contains sufficient factual 8 allegations depends on whether it pleads enough facts to “state a claim to relief that is 9 plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic 10 Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when the plaintiff 11 pleads factual content that allows the court to draw the reasonable inference that the 12 defendant is liable for the misconduct alleged.” Id. This is not a “probability 13 requirement,” but it requires more than a “sheer possibility” that the defendant is liable: 14 “Where a complaint pleads facts that are merely consistent with a defendant’s liability, it 15 stops short of the line between possibility and plausibility of entitlement to relief.” Id. 16 (quoting Twombly, 550 U.S. at 557). 17 Courts should allow a plaintiff leave to amend unless amendment would be futile. 18 Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv. Inc., 911 F.2d 242, 246–47 (9th 19 Cir. 1990). To determine whether amendment would be futile, courts examine whether the 20 complaint can be amended to cure the defect requiring dismissal “without contradicting 21 any of the allegations of [the] original complaint.” Reddy v. Litton Indus., Inc., 912 F.2d 22 291, 296 (9th Cir. 1990). 23 III. DISCUSSION 24 Meta moves to dismiss all of Logan’s claims without leave to amend. Mot. at 6. 25 Because the FAC fails to plead that any third party saved Logan’s photos onto their 26 servers, the FAC fails to plead the underlying element of third-party direct infringement 27 for Logan’s secondary liability claims. The Court therefore dismisses Logan’s inducement 1 infringement claims. Because Logan fails to plead the copyright registration of the photos 2 at issue, the Court dismisses his direct copyright infringement claim. The Court also 3 dismisses Logan’s false advertising claim, because Supreme Court and Ninth Circuit 4 precedent foreclose repackaging his copyright claims under the Lanham Act. Finally, 5 Logan has failed to plead that Meta provided false copyright management information 6 (“CMI”) in connection with his photos, or that it knowingly removed his CMI. 7 Accordingly, the Court dismisses his DMCA claim. But because amendment would not be 8 futile, the Court GRANTS leave to amend on all claims. 9 A. Secondary Liability for Third-Party Copyright Infringement 10 Logan brings inducement of copyright infringement, contributory copyright 11 infringement, and vicarious copyright infringement claims, alleging that Meta is 12 secondarily liable for third parties directly infringing his Facebook photos by embedding 13 them onto other websites. See FAC ¶¶ 3, 33–43, 104–06, 134–35, 142–43. Meta argues 14 that Logan has not adequately pleaded any of his secondary liability claims, because the 15 FAC does not allege that any third party saved his copyrighted photos onto third-party 16 servers in accordance with the Ninth Circuit’s “server test.” Mot. at 7; see Perfect 10, Inc. 17 v. Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007). In opposition, Logan argues 18 that the FAC pleads facts satisfying the Ninth Circuit’s server test, because it alleges that 19 Meta saved his photos from Wikimedia onto Facebook’s servers. Opp’n at 6–7; see FAC 20 ¶¶ 17–18, 22. As an initial matter, this argument fails, because such allegations go toward 21 Logan’s direct copyright infringement claim, rather than to his secondary liability claims. 22 In order to assert secondary liability claims against Meta, Logan must make the 23 threshold showing that “there has been direct infringement by third parties.” Perfect 10, 24 508 F.3d at 1169. This was the linchpin issue in the related case, Hunley v. Instagram, 25 LLC, No. 21-cv-03778-CRB, 2021 WL 4243385, at *1 (N.D. Cal. Sept. 17, 2021). There, 26 this Court determined that “third parties using Instagram’s embedding tool [who] d[id] not 27 store the images and videos embedded on their websites on their own servers or other 1 62. “Because [third-parties] d[id] not store the images and videos, they d[id] not ‘fix’ the 2 copyrighted work in any ‘tangible medium of expression.’” Hunley, 2021 WL 4243385, at 3 *2 (quoting 17 U.S.C. § 101). Therefore, third-party embedding did not violate Hunley’s 4 exclusive right to display “copies” of his copyrighted works and failed to constitute direct 5 copyright infringement. Id.; see 17 U.S.C. §§ 101, 106. Because Hunley failed to plead 6 the threshold element of direct infringement by third parties, the Court dismissed Hunley’s 7 secondary liability claims against Instagram. Hunley, 2021 WL 4243385, at *3; see also 8 Hunley v. Instagram, LLC, No. 21-cv-03778-CRB, 2022 WL 298570, at *2 (N.D. Cal. 9 Feb. 1, 2022) (dismissing the claims with prejudice). 10 Logan’s secondary liability claims face dismissal for the same reason as Hunley’s. 11 The closest Logan gets to pleading third-party infringement under the server test is by 12 alleging that third parties “can” save his embedded photos onto their servers. See FAC 13 ¶¶ 3, 33, 35. But the FAC fails to assert that any specific third party actually did so. See 14 id. ¶¶ 3, 35; Mot. at 9. This defectively pleads Logan’s secondary liability claims. See 15 Perfect 10, 508 F.3d at 1160–62; BWP Media USA, Inc. v. Linkbucks.com, LLC, No. 14- 16 cv-689-JFW-SHx, 2014 WL 12596429, at *3 (C.D. Cal. Aug. 8, 2014) (internal quotation 17 marks removed) (holding that the plaintiff failed to plead third-party infringement where 18 the FAC failed to state that the “allegedly infringed photographs were not stored directly 19 on the Defendant servers”). Therefore, the Court dismisses Logan’s secondary liability 20 claims with leave to amend. 21 B. Direct Copyright Infringement 22 First, Meta argues that it cannot be liable for direct infringement, because its Terms 23 of Use grant it a license to host and display any of Logan’s photos uploaded to his 24 Facebook account. Mot. at 11. Meta also argues that the FAC fails to plead Logan’s direct 25 infringement claim because the FAC only alleges that third parties embedded his photos 26 onto other websites. Id. at 12. Alternatively, Meta argues that—to the extent Logan 27 claims Meta directly infringed by embedding his photos onto Facebook from other 1 Ninth Circuit’s server test. Id.; Perfect 10, 508 F.3d at 1160. Finally, Meta contends that 2 the FAC fails to “identify what specific use of the embedding tool [is] the basis for 3 [Logan’s] direct infringement claim,” fails to identify which photos were infringed, and 4 fails to plead other elements of direct infringement, including the photos’ copyright 5 registration. Mot. at 10–11, 13 n.5; see also FAC ¶ 51; 17 U.S.C. § 411(a). In response, 6 Logan points out that the FAC alleges that his photos were saved on Facebook’s servers 7 and that “Facebook took [his] content from other sites,” which he argues adequately pleads 8 his direct infringement claim. Opp’n at 6–8; see also FAC ¶¶ 3, 17–20, 22, 28. 9 To successfully plead direct copyright infringement, the FAC must establish that 10 Logan owns the allegedly infringed material, and that Meta “violated at least one exclusive 11 right granted to copyright holders under 17 U.S.C. § 106.” Perfect 10, Inc. v. Giganews, 12 Inc., 847 F.3d 657, 666 (9th Cir. 2017) (citing A&M Records, Inc. v. Napster, Inc., 239 13 F.3d 1004, 1013 (9th Cir. 2001)). Additionally, the plaintiff must show causation, or 14 “volitional conduct,” by the defendant. Id.; see also VHT, Inc. v. Zillow Grp., Inc., 918 15 F.3d 723, 732 (9th Cir. 2019). Logan alleges that he owns the photos in question, and the 16 parties’ sole dispute is whether Logan has sufficiently pleaded that Meta violated his 17 exclusive rights under § 106—“reproduc[ing], distribut[ing], and publicly display[ing]” his 18 photos—with sufficient volitional conduct. FAC ¶ 92; see Mot. at 12; Reply at 3–4; Opp’n 19 at 6–8. 20 As an initial matter, Meta’s arguments misapprehend the FAC’s theory of direct 21 infringement. The FAC, though perhaps confusingly drafted, does plead that Meta saved 22 Logan’s photos from Wikimedia onto its servers. See FAC ¶ 3 (“Facebook downloaded 23 Logans copyrighted photos from Wikicommons . . . then stored . . . the photos . . . .”); id. 24 ¶¶ 17–20; id. ¶ 22 (“Plaintiff has ascertained through forensic research and investigation 25 effort that his copyright protected material . . . have been stored on Facebook servers[.]”); 26 id. ¶ 29; id. ¶ 56 (listing the twenty-six allegedly infringed photos); id. ¶ 22 n.1 (link to the 27 Newport Beach photo allegedly saved on Facebook’s servers). These facts do not go 1 specify the allegedly infringed photos at issue. 2 Meta points out that the FAC confusingly prefaces these photos with the allegation 3 that “Logan’s copyrighted works some of which are reproduced below were unlawfully 4 ‘embedded’ by third party users.” Reply at 3; FAC ¶ 56. However, the first photo listed in 5 the FAC is a Newport Beach photo that Logan alleges was unlawfully embedded by 6 Facebook and saved onto Facebook’s servers. FAC ¶¶ 22 n.1, 56. Moreover, all the other 7 photos except (b) and (d) were originally Wikimedia files that now appear on Facebook. 8 See id. ¶ 56. Generously construing the FAC, it is reasonable to read “some” of the works 9 that were embedded by third parties as referring to photos (b) and (d), while the remaining 10 photos are photos that Facebook allegedly embedded, displayed, and saved onto its 11 servers. See id.; Brach v. Newsom, 6 F.4th 904, 925 (9th Cir. 2021) (“[T]he allegations of 12 a complaint must be generously construed in the light most favorable to the plaintiff.”). 13 Altogether, the FAC adequately pleads that Meta saved Logan’s photos onto its servers, 14 satisfying the server test. Perfect 10, 508 F.3d at 1160; see also Live Face on Web, LLC. 15 v. Roshdieh, No. 16-cv-01405-EDCV-JGB (DTBx), 2016 WL 11505589, at *3 (C.D. Cal. 16 Nov. 16, 2016) (holding that pleading that third parties stored the infringing version of 17 plaintiff’s software on their computer cache, memory, or hard drive was sufficient to 18 sustain the direct infringement claim). 19 Nevertheless, Logan’s direct infringement claim fails, because the FAC fails to 20 plead another threshold requirement: that Logan registered the photos in question with the 21 U.S. Copyright Office. See Mot. at 13 n.5; Reply at 3–4; FAC ¶ 51. Logan’s Opposition 22 is silent on this issue. See Opp’n. A threshold requirement of bringing a copyright suit 23 is—subject to certain limited exceptions not relevant here—that a plaintiff has registered 24 the works at issue with the U.S. Copyright Office. See 17 U.S.C. § 411(a); Fourth Est. 25 Pub. Benefit Corp. v. WallStreet.com, LLC, 139 S. Ct. 881, 886 (2019) (citing 17 U.S.C. 26 §§ 408, 411(c)) (providing that copyright registration “occurs, and a copyright claimant 27 may commence an infringement suit, when the Copyright Office registers a copyright”); 1 7, 2022) (citing Fourth Est. Pub. Benefit Corp., 139 S. Ct. at 886). Thus, Logan must 2 plead that the photos allegedly saved onto Facebook’s servers were registered with the 3 Copyright Office. See Malibu Textiles, Inc. v. Label Lane Int’l, Inc., 922 F.3d 946, 951 4 (9th Cir. 2019) (citation and quotation marks omitted) (“To state a claim for copyright 5 infringement, [the plaintiff] must allege . . . that [he] owns a valid copyright in [the Subject 6 Work].”). 7 The FAC fails to plead this threshold requirement. All it alleges is that “[Logan] 8 has registered certain embedded photos with the United States Copyright Office.” FAC 9 ¶ 51 (emphasis added). This vague allegation fails to establish that the photos at issue are 10 registered with the Copyright Office. See Malibu Textiles, Inc., 922 F.3d at 951; see also 11 Mot. at 13 n.5. Therefore, the Court dismisses Logan’s direct copyright infringement 12 claim with leave to amend. 13 C. Lanham Act False Advertising 14 Meta points out that the FAC brings a Lanham Act false advertising claim on the 15 theory that Meta misrepresented “the creation and ownership” of Logan’s photos. Mot. at 16 13; FAC ¶ 80. Meta argues that Logan cannot bring this claim as a matter of law, citing 17 the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 18 U.S. 23 (2003). Mot. at 13–14. Under Dastar, Meta contends, “allegations of 19 misattribution [of authorship] cannot give rise to a [Lanham Act] false advertising claim,” 20 absent “any allegations regarding the nature, characteristics, or quality of the photos.” Id. 21 at 13–14 (emphasis removed). Meta alternatively argues that if Logan’s false advertising 22 claim is instead predicated on stripping the photos of their licensing information, that too 23 fails to plead an actionable Lanham Act false advertisement claim under Ninth Circuit 24 precedent. Id. at 14; see Sybersound Recs., Inc. v. UAV Corp., 517 F.3d 1137, 1144 (9th 25 Cir. 2008) (holding that the licensing status of a copyrighted recording does not give rise to 26 a claim under § 1125(a)(1)(B)). Logan disagrees, arguing that Dastar and Sybersound do 27 not bar false advertisement claims over misattributed authorship. Opp’n at 11–13. 1 advertisement claims under § 1125(a)(1)(B)—claims the Ninth Circuit has identified as 2 “involv[ing] close questions in an unsettled area of the law.” Classic Media, Inc. v. 3 Mewborn, 532 F.3d 978, 990 (9th Cir. 2008). Nevertheless, the Court agrees that the 4 statute forecloses exactly the kind of claim the FAC pleads: a copyright claim repackaged 5 under a trademark statute. 6 Section 1125(a) of the Lanham Act permits two kinds of claims: false origin under 7 15 U.S.C. § 1125(a)(1)(A), and false advertisement under § 1125(a)(1)(B). The FAC 8 pleads a false advertisement claim under the latter subsection. See FAC ¶¶ 79–90. 9 Section 1125(a)(1)(B) imposes civil liability on: 10 Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any 11 word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading 12 description of fact, or false or misleading representation of fact which . . . in commercial advertising or promotion, 13 misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, 14 services, or commercial activities. 15 § 1125(a)(1)(B). 16 In Dastar, the Supreme Court considered whether plaintiffs could bring false 17 designation of origin claims under § 1125(a)(1)(A) for “reverse passing off”—allegations 18 that the seller “misrepresent[ed] someone else’s goods or services as his own.” 539 U.S. at 19 27 n.1. There, Dastar repackaged and sold as its own a Twentieth Century Fox television 20 series which had entered the public domain after its copyright lapsed. Id. at 26–27. Fox 21 sued for false designation of origin under § 1125(a)(1)(A). Id. at 27. The Supreme Court 22 held that the statute did not permit Fox to bring the claim, holding that the statutory 23 language “origin of goods” “refers to the producer of the tangible goods that are offered 24 for sale, and not to the author of any idea, concept, or communication embodied in those 25 goods.” Id. at 37. “To hold otherwise,” the Court reasoned, “would be akin to finding that 26 § 43(a) created a species of perpetual patent and copyright, which Congress may not do.” 27 Id. (citation omitted). In dictum, however, the Court distinguished scenarios in which a 1 circumstances would fall within the purview of § 1125(a)(1)(B) for “misrepresent[ing] the 2 nature, characteristics [or] qualities” of the good. Id. at 38 (quoting § 1125(a)(1)(B)). But 3 where Dastar “merely [misrepresented that] it [wa]s the producer of the video” in question, 4 the Supreme Court refused to recognize liability under the Lanham Act. Id. 5 The Ninth Circuit’s decision in Sybersound applied the Supreme Court’s reasoning 6 in Dastar with equal force to § 1125(a)(1)(B) claims, holding that the copyright licensing 7 status of karaoke recordings did not qualify as the “nature, characteristics, or qualities” of 8 goods. 517 F.3d at 1144. Like Dastar, the Ninth Circuit reasoned that “[c]onstruing the 9 Lanham Act to cover misrepresentations about copyright licensing status” would “over- 10 exten[d] . . . into areas traditionally occupied by patent or copyright,” by “allow[ing] 11 competitors engaged in the distribution of copyrightable materials to litigate the underlying 12 copyright infringement when they have no standing to do so because they are nonexclusive 13 licensees or third party strangers under copyright law.” Id.; see also Dastar, 539 U.S. at 14 34. The court suggested that by contrast, “the original song and artist of the karaoke 15 recording” might qualify as “characteristics of [a] good.” Sybersound, 517 F.3d at 1144. 16 Applying Dastar and Sybersound’s reasoning, “numerous district courts in 17 California have concluded” that litigants cannot bring false advertising claims for 18 misrepresentation of authorship under § 1125(a)(1)(B). Focal Point Films, LLC v. Sandhu, 19 No. 19-cv-02898-JCS, 2019 WL 7020209, at *6 (N.D. Cal. Dec. 20, 2019) (listing cases). 20 This Court concludes likewise. 21 Dicta from Dastar and Sybersound merely clarify that Logan may bring a false 22 advertisement claim over the content of his photos, not misattributed authorship. Dastar, 23 539 U.S. at 33, 37; Sybersound, 517 F.3d at 1144. Permitting a false attribution of 24 authorship claim to proceed under § 1125(a)(1)(B) would create overlap between the 25 Lanham and Copyright Acts, as recognized by both precedents. See Baden Sports, Inc. v. 26 Molten USA, Inc., 556 F.3d 1300, 1307 (Fed. Cir. 2009) (applying Ninth Circuit law to 27 hold that authorship is not a nature, characteristic, or quality under § 1125(a)(1)(B)). 1 artist of [a] karaoke recording” as a potential “characteristic of [a] good” permits his false 2 advertising claim is unavailing. 517 F.3d at 1144. In the specific context of karaoke 3 recordings, misrepresenting the artist of a song goes toward the content of the recording, 4 not the recording’s originator or author. See Dastar, 539 U.S. at 37. Were the song itself 5 at issue, however, Dastar and Syberound suggest that misrepresenting the song’s artist 6 would not qualify as the “nature, characteristic[], [or] qualit[y] . . . of . . . [a] good[],” and 7 would squarely fall within the realm of authorship. § 1125(a)(1)(B); see Dastar, 539 U.S. 8 at 37; Sybersound, 517 F.3d at 1144. “[T]o allow [Logan] to proceed with a false 9 advertising claim that is fundamentally about the origin of an idea, is contrary to the Ninth 10 Circuit’s interpretation of Dastar.” Baden Sports, Inc., 556 F.3d at 1308 (citing Dastar, 11 539 U.S. at 37; then citing Sybersound, 517 F.3d at 1144). Therefore, the Court dismisses 12 Logan’s false advertising claim. But because Logan may plead that Meta has in some 13 other way misrepresented the “nature, characteristics, [or] qualities” of his photos, the 14 Court GRANTS leave to amend. § 1125(a)(1)(B); see Sweaney, 119 F.3d at 1393. 15 D. Violation of the Digital Millennium Copyright Act 16 The FAC also asserts a DMCA claim under 17 U.S.C. § 1202(a) and (b). FAC 17 ¶¶ 114–32. Meta argues that the FAC inadequately pleads Logan’s DMCA claim under 18 either subsection. The Court agrees. 19 1. False CMI, 17 U.S.C. § 1202(a) 20 Meta argues that its copyright tag displayed at the bottom of each Facebook user 21 page does not qualify as CMI as defined under 17 U.S.C. § 1202(c), because the 22 information is not “conveyed in connection with” Logan’s photos. Reply at 7–8 (quoting 23 § 1202(c)); see FAC ¶¶ 48–50, 115, 125. Logan responds that Meta’s copyright tag is 24 false CMI because it provides information misidentifying Meta as the photos’ author. 25 Opp’n at 13–14. The Court concludes that Meta’s copyright tag does not qualify as CMI 26 “conveyed in connection with” Logan’s photos. § 1202(c). 27 17 U.S.C. § 1202(a) provides that “[n]o person shall knowingly and with the intent 1 for distribution] copyright management information that is false.” The DMCA defines 2 CMI as any information identifying the work, its author or copyright owner, and the terms 3 and condition of use, or “links to such information,” “conveyed in connection with copies 4 . . . of [the] work.” Id. § 1202(c). 5 The Ninth Circuit recently affirmed a district court’s grant of summary judgment 6 against a plaintiff’s false CMI claim, finding that the defendants’ copyright notice was not 7 “conveyed in connection with copies” of the plaintiff’s photos. SellPoolSuppliesOnline 8 .com, LLC v. Ugly Pools Ariz., Inc., 804 F. App’x 668, 670–71 (9th Cir. 2020) (quoting 9 § 1202(c)). There, the defendants’ copyright notice was generic; “not located on or next to 10 [the] Plaintiff’s photos,” which “were imprinted with their own copyright markings”; and 11 “located at the bottom of the webpage in a shaded box, separating it from the rest of the 12 content on the webpage.” Id. at 671. 13 The facts here are indistinguishable: Meta’s allegedly false CMI is “[a] [generic] 14 copyright tag on the bottom of each Facebook user page,” separated from the rest of the 15 content on the webpage, and is not located on or next to Logan’s photos. Id.; see FAC 16 ¶ 49. Although SellPoolSuppliesOnline.com considered a false CMI claim on a motion for 17 summary judgment, taking the facts of the FAC as true, Logan has failed to plead that 18 Meta conveyed CMI in connection with his photos. 804 F. App’x at 669. 19 Accordingly, the Court dismisses Logan’s false CMI claim under § 1202(a) with 20 leave to amend. 21 2. Improper Removal of CMI, 17 U.S.C. § 1202(b) 22 The FAC also alleges that Meta intentionally removed Logan’s CMI from his 23 photos “with the knowledge or reasonable grounds to know that it would enable, facilitate, 24 or conceal its own acts of infringement and infringing acts by others.” FAC ¶¶ 27–30, 25 120–29. Meta argues that the FAC fails to state a claim under § 1202(b), because it does 26 not identify the CMI at issue, “or any removal or alteration by Meta of the CMI.” Mot. at 27 15. Meta also points out that the URL of the Newport Beach photo allegedly saved onto 1 Meta’s arguments about the FAC’s specificity are unpersuasive. The FAC clearly 2 specifies the CMI removed—Logan’s “name, the title of the Photograph, and a link to a 3 Creative Commons website . . . setting forth the terms and conditions for use”—and the 4 photos from which the CMI was allegedly removed. FAC ¶¶ 27–30, 56. While none of 5 Logan’s photos contain any copyright mark, his identifying information is provided 6 immediately beneath each photo on Wikimedia. See id. ¶ 56. This placement is 7 sufficiently close to qualify as CMI “conveyed in connection with” his photos. § 1202(c); 8 see also Friedman v. Live Nation Merchandise, Inc., 833 F.3d 1180, 1187–88 (9th Cir. 9 2016) (finding that image credits near the photos but not on them qualified as CMI). 10 Nevertheless, the FAC fails to plead the requisite knowledge under § 1202(b) for both 11 Logan’s false CMI and improper removal of CMI claims. 12 Section 1202(b)(1) prohibits any person, “without the authority of the copyright 13 owner or the law,” from “intentionally remov[ing] or alter[ing] any copyright management 14 information.” 17 U.S.C. § 1202(b)(1). Section 1202(b)(3) prohibits any person from 15 “distribut[ing], [or] import[ing] for distribution, . . . copies of works . . . knowing that 16 copyright management information has been removed or altered without authority of the 17 copyright owner or the law.” Id. § 1202(b)(3). Additionally, “[b]oth provisions . . . 18 require the defendant to possess the mental state of knowing, or having a reasonable basis 19 to know, that his actions ‘will induce, enable, facilitate, or conceal’ infringement.” 20 Stevens v. Corelogic, Inc., 899 F.3d 666, 673 (9th Cir. 2018) (quoting § 1202(b)(1)(3)). 21 Courts within this District have diverged on the level of specificity required to 22 successfully plead § 1202(b)’s mental state requirements. Compare Philpot v. Alternet 23 Media, Inc., No. 18-cv-044979-TSH, 2018 WL 6267876, at *5 (N.D. Cal. Nov. 30, 2018) 24 (dismissing the complaint’s bald reiteration of the statutory language); Harrington v. 25 Pinterest, Inc., No. 5:20-cv-05290-EJD, 2022 WL 4348460, at *5 (N.D. Cal. Sept. 19, 26 2022) (citing Stevens, 899 F.3d at 674) (dismissing the § 1202(b) claim absent “a 27 sufficient factual basis from which to infer [the defendant] knew or had a reasonable basis 1 v. Stroud, No. 08-cv-02348-JSW, 2011 WL 2600661, at *6 (N.D. Cal. June 30, 2011) 2 (finding general allegations of scienter sufficiently specific and that “arguments regarding 3 knowledge and intent are better addressed by way of a motion for summary judgment”). 4 However, Federal Rule of Civil Procedure 9(b) provides that “intent, knowledge, 5 and other conditions of a person’s mind may be alleged generally.” See, e.g., APL 6 Microscopic, LLC v. Steenblock, No. 21-55745, 2022 WL 4830687, at *2 (9th Cir. Oct. 3, 7 2022) (reversing dismissal of a § 1202(b) claim where screenshots of plaintiff’s works 8 without their watermark on defendant’s social media pages raised a “reasonable inference” 9 that defendant knowingly removed CMI). Language in Stevens stating that “specific 10 allegations as to how identifiable infringements ‘will’ be affected are necessary” under 11 § 1202(b) does not indicate otherwise; there, the Ninth Circuit held that “a plaintiff 12 bringing a Section 1202(b) claim must make an affirmative showing” of scienter in the 13 summary judgment context. 899 F.3d at 674 (quoting United States v. Todd, 627 F.3d 14 329, 334 (9th Cir. 2010)). 15 Even so, the FAC falls short of pleading § 1202(b)’s “double scienter” requirement. 16 Harrington, 2022 WL 4348460, at *3 (quoting Mango v. BuzzFeed, Inc., 970 F.3d 167, 17 171 (2d Cir. 2020)). Again, none of Logan’s photos contain any watermark or copyright 18 mark; the only identifiable CMI is on Wikimedia, where Logan’s name, licensing 19 information, and use permissions are listed directly below each photograph. See FAC 20 ¶ 56. The FAC’s theory thus seems to be that embedding the photos itself evidences 21 Meta’s intent to remove Logan’s CMI from his photos. See id. ¶¶ 29–30. 22 While plaintiffs may generally allege § 1202(b)’s knowledge requirements, 23 embedding itself cannot establish that a defendant “intentionally remove[d] or alter[ed]” a 24 plaintiff’s CMI. § 1202(b)(1). Unlike editing a plaintiff’s watermark out of a photo, 25 automatically omitting CMI by embedding a photo out of the full context of the webpage 26 where the CMI is found cannot itself plead intentionality as required by the DMCA. See, 27 e.g., Bain v. Film Indep., Inc., No. 18-cv-4126-PA (JEMX), 2018 WL 6930766, at *5 1 || sufficiently pleaded plaintiff's DMCA claim). By alleging just that, the FAC pleads 2 || “threadbare recitals” that Meta “intentionally remove[d] or alter[ed] any copyright 3 || management information,” or that Meta “kn[ew] or. . . ha[d] reasonable grounds to know, 4 || that it w[ould] induce, enable, facilitate, or conceal an infringement of any copyright.” 5 Iqbal, 556 U.S. at 678; Stevens, 899 F.3d at 673 (internal quotation marks omitted); see 6 || also Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116, 1122 (C.D. Cal. 1999), aff'd in part 7 || and rev’d in part on other grounds, 280 F.3d 934 (9th Cir. 2002) (“[R]emov[ing] Plaintiff's 8 || images from the context of Plaintiff's Web sites where their [CMI] was located, and 9 || convert[ing] them to thumbnails in Defendant’s index . . . [failed to] show[] [that] 10 || Defendant’s actions were intentional, rather than merely an unintended side effect ....”). 11 The FAC therefore defectively pleads Logan’s DMCA claim under § 1202(b)(1). 12 The FAC fails to plead Logan’s DMCA claim under § 1202(b)(3) for the same 13 |} reason; embedding Logan’s photos from Wikimedia does not itself establish that Meta 14 || “kn[ew] that copyright management information ha[d] been removed or altered.” 15 § 1202(b)(3). Nor does the FAC successfully plead that Meta knew that third parties 16 || embedding Logan’s work from his Facebook account removed any accompanying CMI: 5 17 || third parties embed “hundreds of thousands or even millions of registered copyrighted 5 18 |} works” using Facebook’s embed tool, and “[m]ore than 2 billion people use Facebook 19 |} every month.” FAC 9 53, 61. These facts do not plausibly plead that Meta knew third 20 || parties removed Logan’s CMI by embedding his photos onto other websites. 21 Therefore, the Court dismisses Logan’s DMCA claim with leave to amend. 22 || IV. CONCLUSION 23 For the foregoing reasons, the Court GRANTS Meta’s Motion to Dismiss, with 24 || leave to amend within 21 days of the Court’s order. 25 IT IS SO ORDERED. 26 Dated: October 25, 2022 a ‘->— CHARLES R. BREYER 27 United States District Judge 28