Cobbler Nevada, LLC v. Thomas Gonzales ( 2018 )


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  •                      FOR PUBLICATION
    UNITED STATES COURT OF APPEALS
    FOR THE NINTH CIRCUIT
    COBBLER NEVADA, LLC,                              No. 17-35041
    Plaintiff-Appellant,
    D.C. No.
    v.                           3:15-cv-00866-
    SB
    THOMAS GONZALES,
    Defendant-Appellee.                     OPINION
    Appeal from the United States District Court
    for the District of Oregon
    Michael H. Simon, District Judge, Presiding
    Argued and Submitted May 18, 2018
    Portland, Oregon
    Filed August 27, 2018
    Before: M. Margaret McKeown and Richard A. Paez,
    Circuit Judges, and Robert S. Lasnik, * District Judge.
    Opinion by Judge McKeown
    *
    The Honorable Robert S. Lasnik, United States District Judge for
    the Western District of Washington, sitting by designation.
    2               COBBLER NEVADA V. GONZALES
    SUMMARY **
    Copyright
    The panel affirmed the district court’s dismissal of an
    action under the Copyright Act, alleging direct and
    contributory infringement of plaintiff’s copyrights in a film.
    Plaintiff alleged unauthorized downloading and
    distribution of the film through peer-to-peer BitTorrent
    networks. The panel held that the bare allegation that the
    defendant was the registered subscriber of an Internet
    Protocol address associated with infringing activity was
    insufficient to state a claim for direct or contributory
    infringement. The panel also held that the district court did
    not abuse its discretion in awarding attorney’s fees to the
    defendant under 
    17 U.S.C. § 505
    .
    COUNSEL
    John Mansfield (argued), Harris Bricken, Portland, Oregon;
    Carl D. Crowell, Crowell Law, Salem, Oregon; for Plaintiff-
    Appellant.
    David Hamlin Madden (argued), Mersenne Law, Tigard,
    Oregon, for Defendant-Appellee.
    **
    This summary constitutes no part of the opinion of the court. It
    has been prepared by court staff for the convenience of the reader.
    COBBLER NEVADA V. GONZALES                       3
    OPINION
    McKEOWN, Circuit Judge:
    In this copyright action, we consider whether a bare
    allegation that a defendant is the registered subscriber of an
    Internet Protocol (“IP”) address associated with infringing
    activity is sufficient to state a claim for direct or contributory
    infringement. We conclude that it is not.
    After tracing infringement of its copyrights to a
    particular IP address, Cobbler Nevada, LLC filed suit against
    the John Doe IP address for direct and contributory
    copyright infringement. Cobbler Nevada soon discovered
    that the IP address was registered to Thomas Gonzales, who
    operated an adult foster care home. Cobbler Nevada then
    amended its complaint to name Gonzales as the sole
    defendant, alleging that he directly infringed by copying and
    distributing copyrighted works himself or, in the alternative,
    contributed to another’s infringement by failing to secure his
    internet connection.
    The district court properly dismissed Cobbler Nevada’s
    claims. The direct infringement claim fails because
    Gonzales’s status as the registered subscriber of an
    infringing IP address, standing alone, does not create a
    reasonable inference that he is also the infringer. Because
    multiple devices and individuals may be able to connect via
    an IP address, simply identifying the IP subscriber solves
    only part of the puzzle. A plaintiff must allege something
    more to create a reasonable inference that a subscriber is also
    an infringer. Nor can Cobbler Nevada succeed on a
    contributory infringement theory because, without
    allegations of intentional encouragement or inducement of
    infringement, an individual’s failure to take affirmative steps
    4             COBBLER NEVADA V. GONZALES
    to police his internet connection is insufficient to state a
    claim.
    BACKGROUND
    Cobbler Nevada holds copyrights in the film The
    Cobbler, a magic realism film that features “[a] cobbler,
    bored of his everyday life, [who] stumbles upon a magical
    heirloom that allows him to become other people . . . .” The
    Cobbler, IMDB, https://www.imdb.com/title/tt3203616/
    (last visited July 26, 2018). Like a number of major motion
    pictures scheduled for theatrical release, The Cobbler has
    been the subject of unauthorized downloading and
    distribution (i.e., pirating) through BitTorrent networks. See
    generally Glacier Films (USA), Inc. v. Turchin, 
    896 F.3d 1033
    , 1035–36 (9th Cir. 2018) (providing background on
    piracy via peer-to-peer BitTorrent networks). According to
    Cobbler Nevada, there have been over 10,000 instances of
    infringing activity of The Cobbler traced to Oregon alone.
    Cobbler Nevada identified an IP address located in
    Portland, Oregon, that had downloaded and distributed The
    Cobbler multiple times without authorization. Cobbler
    Nevada filed suit against the unknown holder of the IP
    address—named in the complaint as Doe-24.21.136.125—
    for direct and contributory copyright infringement. Records
    subpoenaed from Comcast identified Thomas Gonzales as
    the subscriber of the internet service associated with the IP
    address.
    After several attempts to reach Gonzales, Cobbler
    Nevada’s counsel finally connected with Gonzales via
    telephone. Once counsel learned that the internet service
    was accessible to both residents and visitors at an adult care
    home, he concluded that “it does not appear that [Gonzales]
    is a regular occupant of the residence or the likely infringer.”
    COBBLER NEVADA V. GONZALES                                5
    Due to confidentiality concerns, Gonzales refused to share
    the names or work schedules of the individuals living and
    working in the home without a court order. Although the
    district court granted leave to depose Gonzales, the
    deposition revealed no new information regarding the
    identity of the actual infringer. 1
    Nevertheless, Cobbler Nevada filed a First Amended
    Complaint and named Gonzales as the sole defendant.
    Cobbler Nevada alleged that Gonzales “copied and
    distributed” The Cobbler or, in the alternative, “facilitated
    and promoted the use of the internet for the infringing of
    [Cobbler Nevada’s] exclusive rights under the Copyright
    Act” by failing to “reasonably secure, police and protect” the
    use of his internet service. Cobbler Nevada also claimed that
    Gonzales “ha[d] been sent over 400 notices of infringing
    activity,” yet “failed and refused to take any action
    whatsoever and either continued to infringe by using
    BitTorrent to download and distribute copyrighted content
    or continued to allow infringing activity after such notices.”
    The only facts in support of Cobbler Nevada’s direct
    infringement claim were that Gonzales was “the subscriber
    of the IP address used to download or distribute the movie,
    and that he was sent notices of infringing activity to which
    he did not respond.” Relying on the magistrate judge’s
    reasoning that these allegations were “not enough” to state a
    claim because there were no facts connecting Gonzales to
    1
    During his deposition, Gonzales testified that, once he became
    aware of the infringing activity, he attempted to find out who the
    infringer was and instructed everyone to stop infringing. He also
    testified that the staff took the same steps, but no one was able to identify
    the infringer.
    6             COBBLER NEVADA V. GONZALES
    the infringing activity, the district court dismissed the direct
    infringement claim without prejudice.
    The district court also dismissed the contributory
    infringement claim, which rested on the theory that Gonzales
    failed to stop infringement by others after being notified of
    such infringement. The court wrote that liability arises by
    “actively encouraging . . . infringement through specific
    acts,” and not by mere failure to take affirmative steps to
    prevent infringement. Cobbler Nevada’s failure to allege
    that Gonzales “promoted, encouraged, enticed, persuaded,
    or induced another to infringe any copyright, let alone
    [Cobbler Nevada’s] copyright,” sunk the claim.
    The district court gave Cobbler Nevada three weeks to
    file an amended complaint. Instead of amending its claims
    against Gonzales, Cobbler Nevada filed a Second Amended
    Complaint in which, once again, it named the Doe IP address
    as the sole defendant. No new factual allegations were
    added. The magistrate judge ordered Cobbler Nevada to
    show cause why the Second Amended Complaint should not
    be dismissed for failure to cure the deficiencies identified in
    the court’s dismissal of the First Amended Complaint, or for
    failure to identify the unknown party in a timely manner
    pursuant to Federal Rule of Civil Procedure 4(m). Less than
    a week later, Cobbler Nevada filed a notice of voluntary
    dismissal.
    Gonzales then filed a motion requesting entry of
    judgment dismissing the case and for attorney’s fees for the
    contributory infringement claim. The district court granted
    the motion and awarded Gonzales attorney’s fees of
    $17,222.40 and costs of $252.20.
    COBBLER NEVADA V. GONZALES                     7
    ANALYSIS
    I. The District Court Properly Dismissed Cobbler
    Nevada’s Direct Infringement Claim Without
    Prejudice
    Although copyright owners can often trace infringement
    of copyrighted material to an IP address, it is not always easy
    to pinpoint the particular individual or device engaged in the
    infringement. Internet providers, such as Comcast or
    AT&T, can go so far as to identify the individual who is
    registered to a particular IP address (i.e., an account holder)
    and the physical address associated with the account, but that
    connection does not mean that the internet subscriber is also
    the infringer. The reasons are obvious—simply establishing
    an account does not mean the subscriber is even accessing
    the internet, and multiple devices can access the internet
    under the same IP address. Identifying an infringer becomes
    even more difficult in instances like this one, where
    numerous people live in and visit a facility that uses the same
    internet service. While we recognize this obstacle to naming
    the correct defendant, this complication does not change the
    plaintiff’s burden to plead factual allegations that create a
    reasonable inference that the defendant is the infringer.
    The only connection between Gonzales and the
    infringement was that he was the registered internet
    subscriber and that he was sent infringement notices. To
    establish a claim of copyright infringement, Cobbler Nevada
    “must show that [it] owns the copyright and that the
    defendant himself violated one or more of the plaintiff’s
    exclusive rights under the Copyright Act.” Ellison v.
    Robertson, 
    357 F.3d 1072
    , 1076 (9th Cir. 2004). Cobbler
    Nevada has not done so.
    8             COBBLER NEVADA V. GONZALES
    This is a situation “[w]here a complaint pleads facts that
    are merely consistent with a defendant’s liability, . . .
    stop[ping] short of the line between possibility and
    plausibility of entitlement to relief.” Ashcroft v. Iqbal,
    
    556 U.S. 662
    , 678 (2009) (internal quotation marks
    omitted). The allegations are not “enough to raise a right to
    relief above a speculative level.” Bell Atl. Corp. v. Twombly,
    
    550 U.S. 544
    , 555 (2007). This result should come as no
    surprise to Cobbler Nevada, which acknowledged that its
    independent investigation did not permit identification of “a
    specific party that is likely to be the infringer.”
    Nor did the district court err in entering judgment in
    favor of Gonzales after Cobbler Nevada voluntarily
    dismissed its Second Amended Complaint. Once the claims
    against Gonzales were dismissed, Cobbler Nevada failed to
    cure the deficiencies and instead amended its complaint to
    name the Doe IP address as the sole defendant. This put
    things right back where they started, naming an IP address
    without identifying an actual infringer. Recognizing that the
    claims against Gonzales were not resolved, the district court
    entered judgment reflecting its earlier dismissal of Cobbler
    Nevada’s direct infringement claim without prejudice and
    the contributory infringement claim with prejudice. Cobbler
    Nevada argues that the district court should have granted it
    further leave to amend before entering judgment, which had
    the effect of foreclosing any further amendment. See Weeks
    v. Bayer, 
    246 F.3d 1231
    , 1236–37 (9th Cir. 2001). In light
    of Cobbler Nevada’s prior amendments to the complaint and
    the futility of any further amendment, however, the district
    court acted within its discretion in not granting further leave
    to amend. See Salameh v. Tarsadia Hotel, 
    726 F.3d 1124
    ,
    1133 (9th Cir. 2013); Lipton v. Pathogenesis Corp., 
    284 F.3d 1027
    , 1039 (9th Cir. 2002).
    COBBLER NEVADA V. GONZALES                    9
    II. The District Court Properly Dismissed Cobbler
    Nevada’s Contributory Infringement Claim With
    Prejudice
    We have adopted the well-settled rule that “[o]ne
    infringes contributorily by intentionally inducing or
    encouraging direct infringement.” Perfect 10, Inc. v.
    Amazon.com, Inc., 
    508 F.3d 1146
    , 1170 (9th Cir. 2007)
    (alteration in original) (quoting Metro-Goldwyn-Mayer
    Studios, Inc. v. Grokster, Ltd., 
    545 U.S. 914
    , 930 (2005)).
    Stated differently, “liability exists if the defendant engages
    in personal conduct that encourages or assists the
    infringement.” A&M Records, Inc. v. Napster, Inc.,
    
    239 F.3d 1004
    , 1019 (9th Cir. 2001) (internal quotation
    marks omitted). A claim for contributory infringement
    requires allegations that the defendant is “one who, with
    knowledge of the infringing activity, induces, causes or
    materially contributes to the infringing conduct of another.”
    Fonovisa v. Cherry Auction, Inc., 
    76 F.3d 259
    , 264 (9th Cir.
    1996) (brackets omitted) (quoting Gershwin Publishing
    Corp. v. Columbia Artists Management, 
    443 F.2d 1159
    ,
    1162 (2d Cir. 1971)). Cobbler Nevada’s contributory
    infringement claim is premised on a bare allegation that
    Gonzales failed to police his internet service. This
    perfunctory allegation, without more, does not sufficiently
    link Gonzales to the alleged infringement.
    At the outset, we recognize that Gonzales’s position—a
    subscriber to internet service—does not fit cleanly within
    our typical contributory liability framework, which often
    involves consumer-facing internet platforms. See, e.g.,
    Grokster, 545 U.S. at 919–20 (computer software provider);
    Amazon, 
    508 F.3d at 1171
     (search engine). Nevertheless, it
    is no leap to apply the framework of similar technology-
    based cases to our analysis of Gonzales’s liability.
    10            COBBLER NEVADA V. GONZALES
    In Sony Corp. of America v. Universal City Studios, Inc.,
    the Supreme Court held that liability for another’s
    infringement cannot arise from the mere distribution of a
    product that is “widely used for legitimate, [non-infringing]
    purposes.” 
    464 U.S. 417
    , 442 (1984). The Court later
    refined the standard for liability, holding that “one who
    distributes a device with the object of promoting its use to
    infringe copyright, as shown by clear expression or other
    affirmative steps taken to foster infringement, is liable for
    the resulting acts of infringement by third parties.”
    Grokster, 545 U.S. at 919. In essence, the limitation of
    liability in Sony—premised on a refusal to impute intent to a
    defendant based solely on knowledge that a product might
    be used for infringement—does not apply “where evidence
    . . . shows statements or actions directed to promoting
    infringement.” Id. at 935. The Court was clear, however,
    that “in the absence of other evidence of intent, a court would
    be unable to find contributory infringement liability merely
    based on a failure to take affirmative steps to prevent
    infringement, if the device otherwise was capable of
    substantial noninfringing uses.” Id. at 939 n.12; see also id.
    at 937 (“[M]ere knowledge of infringing potential or of
    actual infringing uses would not be enough here to subject a
    distributor to liability.”).
    Although circuit courts approach contributory liability
    through varying lenses, our circuit has identified two strands
    of liability following Sony and Grokster: “actively
    encouraging (or inducing) infringement through specific
    acts” or “distributing a product distributees use to infringe
    copyrights, if the product is not capable of ‘substantial’ or
    ‘commercially significant’ noninfringing uses.” Amazon,
    
    508 F.3d at 1170
     (quoting Grokster, 545 U.S. at 942
    (Ginsburg, J., concurring)). We analyze contributory
    liability “in light of ‘rules of fault-based liability derived
    COBBLER NEVADA V. GONZALES                    11
    from the common law,’ and common law principles
    establish that intent may be imputed.” Id. at 1170–71
    (quoting Grokster, 
    545 U.S. 934
    –35).
    Turning to the first strand, Cobbler Nevada’s complaint
    lacks any allegations that Gonzales “actively encourage[ed]
    (or induc[ed]) infringement through specific acts.” 
    Id. at 1170
    . Nothing in Cobbler Nevada’s complaint alleges, or
    even suggests, that Gonzales actively induced or materially
    contributed to the infringement through “purposeful,
    culpable expression and conduct.” Grokster, 545 U.S. at
    937. No allegations suggest that Gonzales made any “clear
    expression” or took “affirmative steps” to foster the
    infringement—Gonzales’s only action was his failure to
    “secure, police and protect” the connection. Id. at 919; see
    also 3 Nimmer on Copyright § 12.04 (“Inducement liability
    . . . rests [] on the defendant’s ‘active steps to encourage
    infringement’ leading to actual infringement taking place.”)
    (quoting Grokster, 545 U.S. at 936). Because a “failure to
    take affirmative steps to prevent infringement” alone cannot
    trigger liability, Grokster, 545 U.S. at 939 n.12, Cobbler
    Nevada failed to “state a claim to relief that is plausible on
    its face,” Iqbal, 
    556 U.S. at 678
     (quoting Twombly, 
    550 U.S. at 570
    ).
    Nor does the second strand implicate Gonzales.
    Providing internet access can hardly be said to be
    distributing a product or service that is not “capable of
    substantial” or “commercially significant noninfringing
    uses.” Sony, 
    464 U.S. at 442
    .
    We note that Cobbler Nevada’s theory both strays from
    precedent and effectively creates an affirmative duty for
    private internet subscribers to actively monitor their internet
    service for infringement. Imposing such a duty would put at
    risk any purchaser of internet service who shares access with
    12                 COBBLER NEVADA V. GONZALES
    a family member or roommate, or who is not technologically
    savvy enough to secure the connection to block access by a
    frugal neighbor. This situation hardly seems to be one of
    “the circumstances in which it is just to hold one individual
    accountable for the actions of another.” 
    Id. at 435
    .
    III. The District Court Did Not Abuse its Discretion By
    Awarding Attorney’s Fees
    The Copyright Act states that the district court “may . . .
    award a reasonable attorney’s fee to the prevailing party as
    part of the costs . . . .” 
    17 U.S.C. § 505
    . Gonzales is the
    “prevailing party” because Cobbler Nevada’s contributory
    infringement claim was dismissed with prejudice. See
    Cadkin v. Loose, 
    569 F.3d 1142
    , 1150 (9th Cir. 2009) (“[A]
    defendant is a prevailing party following dismissal of a claim
    if the plaintiff is judicially precluded from refiling the claim
    against the defendant in federal court.”). 2 In awarding fees
    to Gonzales, the district court acted within its discretion. See
    Entm’t Research 10 Grp. v. Genesis Creative Grp., 
    122 F.3d 1211
    , 1216–17, 1228–29 (9th Cir. 1997).
    The court “enjoys ‘wide latitude to award attorney’s fees
    based on the totality of circumstances in a case,’” though “its
    discretion must remain tethered to judicial guideposts.”
    Glacier Films, 
    2018 WL 3542839
    , at *3 (quoting Kirtsaeng
    v. John Wiley & Sons, Inc., 
    136 S.Ct. 1979
    , 1985 (2016)).
    To guide the district court’s discretion, the Supreme Court
    and our court have provided a “nonexclusive” list of factors
    for courts to consider in making a fee determination. Id.; see
    also Fogerty v. Fantasy, Inc., 
    510 U.S. 517
    , 534 n.19 (1994);
    2
    Gonzales sought fees only for the contributory infringement claim.
    COBBLER NEVADA V. GONZALES                    13
    Perfect 10, Inc. v. Giganews, Inc., 
    847 F.3d 657
    , 675 (9th
    Cir. 2017).
    The district court properly applied the Supreme Court’s
    “Fogerty factors” to the particulars of this case. To begin,
    the court focused on the objective unreasonableness of the
    losing party’s litigating position, a factor that carries
    “substantial weight.” Kirtsaeng, 136 S. Ct. at 1983; Shame
    On You Prods., Inc. v. Banks, 
    893 F.3d 661
    , 666 (9th Cir.
    2018). Specifically, the court flagged as unreasonable
    Cobbler Nevada’s decision to name Gonzales as the
    defendant, even after concluding that Gonzales was not “a
    regular occupant of the residence or a likely infringer.” The
    court also considered deterrence: it reasoned that awarding
    fees would deter Cobbler Nevada from an “overaggressive
    pursuit of alleged infringers without a reasonable factual
    basis” while encouraging defendants with valid defenses to
    defend their rights. See Fogerty, 
    510 U.S. at
    534 n.19. The
    court’s rationale is in keeping with the purposes of the
    Copyright Act. See Kirtsaeng, 136 S. Ct. at 1988–89 (a
    district court “may order fee-shifting . . . to deter . . .
    overaggressive assertions of copyright claims”).
    On the whole, the district court “consider[ed] the facts of
    [this] case, weigh[ed] the appropriate factors, and ma[de] a
    fee determination based on the conduct of both parties.”
    14               COBBLER NEVADA V. GONZALES
    Glacier Films, 
    2018 WL 3542839
    , at *9. 3 We thus uphold
    the fee determination. 4
    AFFIRMED.
    3
    In Glacier Films, we reversed and remanded a fees ruling because
    the district court had based its decision “on a one-size-fits-all disapproval
    of other BitTorrent suits,” not on the facts of the case at hand. 
    2018 WL 3542839
    , at *1, *9. By contrast, the district court trained its focus here
    on the unreasonable conduct of Cobbler Nevada in this particular case.
    4
    To the extent Cobbler Nevada claims that the district court had no
    jurisdiction to award attorney’s fees after the voluntary dismissal, we
    reject that argument for the simple reason that Gonzales was not a party
    to the voluntary dismissal. Wilson v. City of San Jose, 
    111 F.3d 688
    , 692
    (9th Cir. 1997) (“The filing of a notice of voluntary dismissal with the
    court automatically terminates the action as to the defendants who are
    the subjects of the notice.” (emphasis added)). At the time of the
    voluntary dismissal, the only defendant named in the Second Amended
    Complaint was the Doe IP address, not Gonzales.