District court dismisses lawsuit against Meta over Facebook’s embedding tool, finding plaintiff photographer failed to sufficiently plead threshold requirements and essential elements of claims under the Copyright, Lanham and Digital Millennium Copyright Acts.
Photographer Don Logan initiated a putative class-action lawsuit against Facebook’s parent, Meta Platforms Inc., over the social network’s “embedding” tool, asserting claims for direct and secondary copyright infringement under the Copyright Act, false advertising under the Lanham Act and violation of the Digital Millennium Copyright Act (DMCA). Logan alleged that Meta was secondarily liable for copyright infringement by enabling third parties to infringe his copyrighted photographs uploaded to Facebook through embedding on third-party websites. His claim for direct copyright infringement was based on Meta itself allegedly embedding his photos from other websites on Facebook, while his false advertising and DMCA claims centered on Meta’s alleged removal of Logan’s copyright management information (CMI) from the photos embedded on Facebook and alleged misrepresentations concerning their ownership. Meta moved to dismiss the case in its entirety, which the court granted, although it also granted Logan leave to amend his claims.
The district court determined that Logan had failed to sufficiently plead one or more threshold requirements or essential elements of each of his claims, warranting dismissal. The court first ruled that Logan’s claim for secondary infringement under the Copyright Act failed because the underlying element of third-party direct infringement was lacking. Under the Ninth Circuit’s “server test,” a third-party embedder commits direct infringement only when the copyrighted work is stored on that third party’s own servers. But Logan alleged only that third parties “can” save his embedded photos on their servers using Facebook’s embedding tool. He failed to include any allegation that a specific third party had actually done so, leading the court to dismiss his secondary infringement claim, but with leave to amend.
Although Meta argued that Logan’s direct infringement claim similarly failed to meet the Ninth Circuit’s server test, the court disagreed on this point. The court found that Logan sufficiently alleged that Meta had itself copied Logan’s photos from Wikimedia Commons, where they were published under a “Creative Commons” license, and saved them on Facebook’s servers. The court nevertheless dismissed Logan’s direct infringement claim without prejudice, ruling that Logan had failed to meet a different threshold requirement—that he had registered the photos at issue with the U.S. Copyright Office. Though Logan alleged that he had registered “certain” embedded photos with the Copyright Office, he did not specifically allege that he had done so with the photos at issue.
Logan’s false advertising claim under the Lanham Act was also based on Meta’s alleged embedding of photographs from Wikimedia Commons on Facebook and specifically on Meta’s alleged stripping of Logan’s copyright information from the photos and identification of itself as the owner through the “copyright tag on the bottom of each Facebook user page.” The court, applying U.S. Supreme Court and Ninth Circuit precedent, ruled that Logan’s claim for misrepresentation of ownership was an attempt to “repackage” a copyright claim under trademark law, which creates an impermissible overlap between the Lanham and Copyright acts. The court dismissed the false advertising claim, but again without prejudice, giving Logan an opportunity to replead Meta’s alleged misrepresentation of the photographs’ content rather than their ownership.
Finally, the district court found that Logan had failed to sufficiently plead his claims under the DMCA. Logan argued that Meta had improperly removed CMI in violation of the DMCA when it embedded his photos from third-party websites without including copyright ownership information that appeared near the photos, and that it conveyed false CMI when it displayed its own copyright tag at the bottom of Facebook user pages containing embedded photos. On the claim for improper removal of CMI, the court concluded that Logan had failed to sufficiently plead the element of intent, because his alleged CMI was located on the Wikimedia Commons pages from which the photos were embedded rather than on the photos themselves. The court reasoned that Meta’s automatic omission of CMI by embedding a photo outside the full context of the webpage where the CMI was found cannot constitute intentional removal of CMI under the DMCA as a matter of law. On the false CMI claim, the court decided that Meta’s copyright notice on the bottom of Facebook user pages was sufficiently separate and distinct such that it could not be considered “conveyed in connection with” Logan’s photos within the meaning of the DMCA.
Summary prepared by Tal Dickstein and Jordan Meddy