1202 and Lanham Act claims can't save lawsuit against embedding photos

Logan v. Meta Platforms, Inc., 2022 WL 14813836, No. 22-cv-01847-CRB (N.D. Cal. Oct. 25, 2022)

Logan alleged that Facebook’s embedding tool enables third parties to infringe his copyrighted photos uploaded onto his Facebook account by embedding them to third-party websites and allowing embedding on Facebook from other websites, creating both direct and secondary liability. He also alleged removal of his CMI in violation of the Lanham Act and the DMCA §1202. The court granted Meta’s motion to dismiss.

Logan alleged that third-party websites embedded various of his copyrighted photos from his Facebook accounts. In addition, he alleged that Meta itself embedded and thereafter displayed some of Logan’s photos from Wikimedia Commons and saved them onto Facebook’s servers. Algthough Logan published the photos on Wikimedia under a Creative Commons license, he alleged that Meta stripped the photos of all identifying information and falsely identified itself as the owner by displaying its “copyright tag on the bottom of each Facebook user page,” breaching the license.

Secondary liability: requires direct infringement by someone else. But under Perfect 10, embedding is not infringement. “The closest Logan gets to pleading third-party infringement under the server test is by alleging that third parties ‘can’ save his embedded photos onto their servers. But the FAC fails to assert that any specific third party actually did so.” But he gets leave to amend! Hard to see how he can deal with the other requirements for secondary liability, though.

Direct infringement: Logan alleged that “Facebook took [his] content from other sites,” such as Wikimedia, making his theory of direct infringement distinguishable from claims based on his own posting to Facebook. Thus, the complaint adequately pled that Meta saved Logan’s photos onto its servers, satisfying the server test. [Really, it pled that someone did—the court flags the volitional conduct requirement, which is going to be a barrier.] But the claim still failed for failure to plead registration of those photos, though again there was leave to amend.

Lanham Act false advertising: The theory was that Meta misrepresented “the creation and ownership” of Logan’s photos. Dastar doesn’t clearly bar false advertising §43(a)(1)(B) claims in general, but it does bar the claim as pled here: “a copyright claim repackaged under a trademark statute.” Sybersound Recs., Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), applied

Dastar to false advertising claims that turned on putative misrepresentations about “the copyright licensing status of karaoke recordings,” which did not qualify as the “nature, characteristics, or qualities” of goods. Thus, “litigants cannot bring false advertising claims for misrepresentation of authorship” under the Lanham Act. Misattributed authorship is the same for these purposes as misattributed licensing status—allowing the claim would interfere too much with copyright and the Federal Circuit has understandably applied Ninth Circuit law to hold that authorship is also not a nature, characteristic, or quality of goods. Baden Sports, Inc. v. Molten USA, Inc., 556 F.3d 1300 (Fed. Cir. 2009).

While Sybersound suggested that “the original song and artist of [a] karaoke recording” could be a potential “characteristic of [a] good,” that didn’t help the photographer here. “In the specific context of karaoke recordings, misrepresenting the artist of a song goes toward the content of the recording, not the recording’s originator or author.” Were the authorship of the song itself at issue, Dastar and Sybersound would bar the claim. But there was leave to amend to allege some other misrepresentation about his photos.

DMCA §1202: First, the Meta © displayed at the bottom of each Facebook page isn’t CMI as to the photos, because it isn’t “conveyed in connection with” the photos, and thus it can’t be false CMI. A generic copyright notice not located on or next to the photos, located at the bottom of the webpage, is not CMI as to the photos. SellPoolSuppliesOnline .com, LLC v. Ugly Pools Ariz., Inc., 804 F. App’x 668 (9th Cir. 2020).

CMI removal:  Although the complaint clearly specified the CMI allegedly removed—Logan’s “name, the title of the Photograph, and a link to a Creative Commons website ... setting forth the terms and conditions for use”—it still failed to plead the requisite knowledge. The removal/distribution provisions “require the defendant to possess the mental state of knowing, or having a reasonable basis to know, that his actions ‘will induce, enable, facilitate, or conceal’ infringement.” Stevens v. Corelogic, Inc., 899 F.3d 666 (9th Cir. 2018). Although the FRCP provide that “intent, knowledge, and other conditions of a person’s mind may be alleged generally,” the complaint still didn’t plead the requisite double scienter. Since none of the photos themselves contained any watermark, the only identifiable CMI was on Wikimedia, where Logan’s name, licensing information, and use permissions were listed directly below each photograph. “The FAC’s theory thus seems to be that embedding the photos itself evidences Meta’s intent to remove Logan’s CMI from his photos.” But that wasn’t enough. “Unlike editing a plaintiff’s watermark out of a photo, automatically omitting CMI by embedding a photo out of the full context of the webpage where the CMI is found cannot itself plead intentionality as required by the DMCA.” So too with the distribution claim: “embedding Logan’s photos from Wikimedia does not itself establish that Meta ‘kn[ew] that copyright management information ha[d] been removed or altered.’” Third parties embed “hundreds of thousands or even millions of registered copyrighted works” using Facebook’s embed tool, and “[m]ore than 2 billion people use Facebook every month.” “These facts do not plausibly plead that Meta knew third parties removed Logan’s CMI by embedding his photos onto other websites.” Again, leave to amend, though hard to imagine what changes with more pleading.