Shaking Out the "shakedowns": Pre-discovery Dismissal of Copyright Infringement Cases After Comparison of the Works at Issue

• Citation: Vol. 9 No. 2
• Publication year: 2013

Washington Journal of Law, Technology and Arts Volume 9, Issue 2 Fall 2013

Shaking Out The "Shakedowns": Pre-Discovery Dismissal Of Copyright Infringement Cases After Comparison Of The Works At Issue

Evan Brown(fn*)© Evan Brown

ABSTRACT

In an era of copyright trolling, digital distribution, and widespread reappropriation of creative works, the specter of "shakedown" copyright infringement litigation looms larger than ever before. Some plaintiffs will hold the prospect of expensive and time-consuming discovery over alleged infringers to provoke settlement. In the wake of the Supreme Court's decisions in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal, courts are more likely to consider the costs and time requirements of discovery when considering a defendant's 12(b)(6) motion to dismiss. Several courts have recently indicated a willingness to grant motions to dismiss in copyright infringement cases when discovery is unlikely to produce material evidence. This Article examines the circumstances under which pre-discovery dismissal is likely to be granted, the courts' reasoning for granting dismissal in such cases, and the potential effects on copyright infringement litigation.

TABLE OF CONTENTS

Introduction ................................................................................... 70

I. Pre-Discovery Dismissal Generally ........................................... 71

A. Procedural Considerations ................................................ 71

B. Standard for Dismissal ...................................................... 75

II. Pre-Discovery Dismissal of Copyright Infringement Cases .... 77

A. Challenges to Prima Facie Showing of Infringement ....... 78

1. Copying ....................................................................... 78

2. Substantial Similarity .................................................. 79

B. Affirmative Defenses ........................................................ 82

III. Case Studies in Pre-Discovery Dismissal ............................... 84

IV. The Costs of Pre-Discovery Comparison ............................... 88

Conclusion .................................................................................... 90

Practice Pointers ............................................................................ 91

INTRODUCTION

In an era when costly copyright infringement suits are often initiated to provoke settlements, pre-discovery dismissal is appealing to defendants and courts alike. Pleading rules previously made it difficult to convince a judge to dismiss the case before discovery was allowed, but in the wake of the Supreme Court's groundbreaking decisions in Bell Atlantic Corp. v. Twombly and Ashcroft v. Iqbal, certain types of copyright infringement suits are excellent candidates for pre-discovery dismissal. In particular, cases in which the court need only compare works of authorship to determine whether the plaintiff's claims are plausible. Such cases can be appropriately controlled with pre-discovery dispositive motions. Yet such motions will usually require courts to interpret and compare works, a task that carries certain costs.

This Article examines the circumstances under which a court is likely to consider dismissal of a copyright infringement case without discovery or trial and the pitfalls defendants may face in moving to dismiss. Part I describes the procedure and standards for pre-discovery dismissal. Part II explains how defendants in copyright infringement cases should challenge the elements of a prima facie case for infringement and prevail on defenses to infringement on a motion to dismiss. Part III presents four cases that illustrate an emerging trend toward pre-discovery dismissal of infringement cases in certain circumstances, particularly where comparison of works is sufficient to resolve the claims and the suit appears calculated to provoke settlement. Finally, Part IV introduces some of the procedural problems presented by pre-discovery dismissal based on judicial comparison of works.

I. PRE-DISCOVERY DISMISSAL GENERALLY

The Twombly standard has given courts the opportunity to more easily resolve cases at a very early stage in the litigation process. Defendants who wish to avoid discovery can move to dismiss or request judgment on the pleadings where additional evidence will prove immaterial. The primary vehicle for dismissal is a Rule 12(b)(6) motion to dismiss for failure to state a claim, but motions for judgment on the pleadings and even motions for summary judgment may accomplish the same result in certain cases. Because the plausibility standard requires plaintiffs to plead allegations that illustrate what sort of evidence will be necessary to resolve the claims, pre-discovery dismissal has become a feasible strategy.

A. Procedural Considerations

A defendant who hopes to avoid the expense and inconvenience of discovery can either move for dismissal before filing the responsive pleading or move for judgment on the pleadings. If the defendant has no need to plead additional facts, a motion to dismiss for failure to state a claim is appropriate.(fn2) If a response has been filed, the defendant can instead move for judgment on the pleadings, pursuant to Rule 12(c).(fn3) If the moving party relies on information not included in the filed pleadings, the court will convert the motion to dismiss to a motion for summary judgment. Such a conversion is important to a defendant seeking to avoid discovery, because discovery requests are allowed as part of a motion for summary judgment.(fn4) However, the court has discretion to grant or deny any such discovery request. Thus, pre-discovery dismissal requires a successful 12(b)(6) or 12(c) motion, or a successful argument at the summary judgment stage that discovery is unnecessary.

A 12(b)(6) motion to dismiss tests the plaintiff's claim against the facts alleged in the complaint to determine whether the case can succeed. One important advantage of a 12(b)(6) motion is that the defendant can potentially end the suit without even responding to the complaint. A major drawback, however, is that the defendant cannot argue facts extrinsic to the complaint.(fn5) Thus, affirmative defenses generally cannot be raised on a 12(b)(6) motion.(fn6) There is, however, an important exception to this general rule: If the complaint includes all facts necessary for the defendant to "conclusively establish" the defense, it may be raised.(fn7) As the First Circuit described the exception, "dismissal . . . is appropriate when the face of the complaint clearly reveals the existence of a meritorious affirmative defense."(fn8) That is, the complaint must include all facts necessary for the defendant to establish every element of the defense.(fn9) Statute of limitations or immunity defenses are often raised pursuant to this exception,(fn10) but the exception can also be invoked to assert copyright defenses like fair use.(fn11)

Documents and other works, usually central to copyright infringement cases, can be included among the facts of the complaint in several ways. The plaintiff can incorporate documents into the complaint by attachment.(fn12) The court can also take judicial notice of matters of public record and common public knowledge.(fn13) Most importantly, the defendant can ask the court to incorporate by reference works that are central to the allegations in the complaint but have not been attached, so long as there are not material issues of fact relating to their authenticity.(fn14) A court is especially likely to grant such a request to incorporate when the work is all that is necessary for the court to consider whether the complaint states a valid claim.(fn15) Many district courts have held that works at issue in a copyright infringement case are good candidates for such incorporation by the defendant,(fn16) and at least one circuit court has written approvingly of liberally applying the incorporation by reference doctrine in copyright infringement cases.(fn17)

Of course, affirmative defenses can also be raised in the defendant's responsive pleading. If this is necessary, pre-discovery dismissal is still possible through a 12(c) motion for judgment on the pleadings.(fn18) Any works at issue may be attached to the responsive pleading. This may be a useful tactic if the defendant wishes to assert defenses, like fair use, that can benefit from information not contained in the complaint, including other works not obviously at the heart of the claims. As with a 12(b)(6) motion, if information extrinsic to the pleadings is necessary or if documents external to the pleadings are attached, the court will convert the motion to one for summary judgment. A court may effectively convert the motion even if the pleadings contain all necessary evidence.(fn19)

If a Rule 12 motion is converted to a motion for summary judgment, the court must provide notice to the parties and an opportunity to present evidence consistent with FRCP 56.(fn20) As noted above, the court may entertain discovery requests in conjunction with a motion for summary judgment,(fn21) but any requests should be denied if evidence sufficient to dispose of the case is already in front of court.(fn22) This is especially true in the case of converted Rule 12 motions.(fn23) Courts are also likely to deny discovery requests that are unduly burdensome under the circumstances.(fn24) Thus...