Diary of a Copyright Infringement Lawsuit – 6 (The Motion to Dismiss)

Instead of answering the Complaint, the defendant first may file a Motion to Dismiss the complaint.  In sum, a motion to dismiss is a formal way of saying, “Yea?  So what!”  In other words, the defendant is claiming in the motion that, even if all that the plaintiff says in the complaint is true, the plaintiff still may not recover from the defendant.

A motion to dismiss is brought pursuant to Federal Rule of Civil Procedure 12(b)(6) to test the legal sufficiency of the claims asserted in a complaint.  A court should dismiss a complaint where there is either a lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal theory.

When considering a Rule 12(b)(6) motion to dismiss, a court must accept as true all material allegations in the complaint, as well as all reasonable inferences to be drawn from them.  This often is stated as “The complaint must be read in the light most favorable to the nonmoving party.”

In a Motion to Dismiss, the defendant may not rely on anything other than the pleadings to try to show that the case has no merit.  Instead, a defendant may file later a motion for summary judgment under Fed. R. Civ. P. 56 that includes evidence to show the court that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law (more on that in a subsequent blog entry). If the defendant includes evidence with the motion to dismiss, the court must treat the motion as one for summary judgment.

Federal Rule of Civil Procedure 8(a) states that a pleading must contain a “short and plain statement of the claim showing that the pleader is entitled to relief.” Generally, while a plaintiff does not need to provide detailed factual allegations in a complaint, the plaintiff must provide more than just labels, conclusions, and a listing of the elements to a cause of action.

As explained in my Diary of a Copyright Infringement Lawsuit – 3 blog entry, you must include the following for a copyright infringement complaint:

  • identify the copyrighted work at issue;
  • state that the plaintiff owns the copyrighted work;
  • assert that the copyright for the work has been registered with the U.S. Copyright Office (at least provide the registration number, but it’s better to attach the Certificate of Registration); and
  • allege how and when the defendant infringed the copyright (it’s helpful to include an exhibit showing the infringement).

Infringement occurs when (1) the defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiff’s work.

You must do more than to recite these elements — you must provide enough facts for the court to find that you have a real claim.  Otherwise, your complaint will be dismissed.

Such was the case in the matter of Janine Gordon v. Ryan McGinley.  Gordon sued McGinley for copyright infringement for, among other things, allegedly creating images that were “both blatantly and subtly derivative” of Gordon’s work for a series of advertising campaigns commissioned by Levi Strauss.  But McGinley filed a Motion to Dismiss the copyright claims based primarily on the issue of substantial similarity and the Court agreed.  The Court’s Order explaining its finding is found here, but is summarized by its statement:

In this case, the dictates of good eyes and common sense lead inexorably to the conclusion that there is no substantial similarity between Plaintiff’s works and the allegedly infringing compositions of McGinley. 

When the court grants the motion to dismiss in total, then the case usually is over.  However, a court may allow the plaintiff to amend the complaint to try to fix the pleading problems.  But if the court holds that the complaint could not be saved by any amendment, the case will be terminated.  Accordingly, the Gordon court dismissed the case without allowing Gordon the opportunity to amend.

When a court denies the motion to dismiss in full or in part, then the case continues.  The defendant then must file an answer to the complaint within 14 days per Fed. R. Civ. P. 12(a)(4) as discussed in my earlier blog and the case goes to the next step – the Rule 26(f) conference.

Check Photo Attorney on Lynda.com, in the Lynda.com Article Center, and on Twitter!
Share