Mometrix Media, LLC v. LCR Publishing, LLC ( 2018 )

TEXAS COURT OF APPEALS, THIRD DISTRICT, AT AUSTIN
NO. 03-17-00570-CV
Mometrix Media, LLC, Appellant
v.
LCR Publishing, LLC, Appellee
FROM THE DISTRICT COURT OF TRAVIS COUNTY, 345TH JUDICIAL DISTRICT
NO. D-1-GN-17-001625, HONORABLE J. DAVID PHILLIPS, JUDGE PRESIDING
OPINION
In this interlocutory appeal, Mometrix Media, LLC (Mometrix) appeals from the trial
court’s denial of its motion to dismiss pursuant to the Texas Citizens Participation Act (TCPA). See
generally Tex. Civ. Prac. & Rem. Code §§ 27.001–.011. LCR Publishing, LLC (LCR) sued
Mometrix alleging tortious interference with contract after Mometrix communicated to online
retailer Amazon that it believed LCR’s publications infringed on copyrighted material and Amazon
removed the publications from its website. Mometrix filed a TCPA motion to dismiss, contending
that LCR’s suit was a legal action based on a communication about a matter of public concern. See
id. §§ 27.001(1), (3), (6), (7), .003(a). On appeal, Mometrix for the first time challenges the
jurisdiction of the trial court and this Court. For the reasons that follow, we remand this case to the
trial court for a determination of its subject matter jurisdiction.
FACTUAL AND PROCEDURAL BACKGROUND1
LCR is a Texas publishing company specializing in the creation and distribution of
test preparation materials and study guides for standardized exams. Mometrix is a direct competitor
of LCR. In approximately May 2016, LCR began offering its publications online through
Amazon.com, where Mometrix also offers its publications. LCR noticed that within days after the
publication of a new study guide, anonymous negative online reviews would appear. Within
ten months, LCR’s publications received approximately 50 negative reviews. In March 2017, LCR
discovered that its publications were no longer available for sale on Amazon.com. LCR contacted
Amazon’s “copyright agent,” CreateSpace,2 and learned that Mometrix had filed complaints alleging
that four of LCR’s publications infringed on Mometrix’s copyrights. LCR contacted Mometrix,
which declined to explain the basis for its complaints. LCR subsequently obtained copies of
the complaints.
In April 2017, LCR filed suit against Mometrix alleging that Mometrix had tortiously
interfered with LCR’s existing relationship with CreateSpace/Amazon by wrongfully asserting
copyright infringement claims.3 Mometrix filed a motion to dismiss, arguing (1) that the TCPA
1
The factual background is taken from the appellate record and the parties’ briefs. We
accept as true all facts stated and not contradicted by another party. See Tex. R. App. P. 38.1(g).
2
Mometrix refers to CreateSpace as Amazon’s “copyright agent” that takes infringement
complaints. LCR has referred to CreateSpace as Amazon’s “online publisher” and as a
“subsidiary” of Amazon. Documentary evidence in the record reflects that CreateSpace is “an
Amazon company.”
3
LCR also filed suit against “John Doe,” asserting causes of action under the Lanham Act,
common law unfair competition, and tortious interference with prospective business relations. “John
Doe” has not been identified, and LCR’s claims against him, which were based on the negative
online reviews, are not at issue in this appeal.
2
applied because LCR’s suit was a legal action based on Mometrix’s communications to CreateSpace,
which were protected under the TCPA as Mometrix’s exercise of the right of free speech on matters
of public concern, specifically on issues concerning goods or products in the marketplace, see id.
§§ 27.001(1), (3), (6), (7)(E), .003(a); (2) that consequently LCR was required to establish a prima
facie case of its tortious interference claim to avoid dismissal, see id. § 27.005(b), (c); and (3) that
even if LCR could establish a prima facie case, its claim should be dismissed because Mometrix had
established an affirmative defense of justification, see id. § 27.005(d). LCR sought limited discovery
related to the motion to dismiss, see id.§§ 27.003(c), .006(b), which the trial court granted.
Mometrix filed a petition for writ of mandamus in this Court challenging the discovery order, which
this Court denied. Mometrix then sought mandamus relief in the Texas Supreme Court, which also
denied relief. After the parties completed the allowed discovery, LCR filed a motion for
supplemental limited discovery, which the trial court granted in part. Following a hearing, the trial
court denied Mometrix’s motion to dismiss. This interlocutory appeal followed. See id. § 27.008.
DISCUSSION
On appeal, Mometrix for the first time challenges the trial court’s and this Court’s
subject matter jurisdiction. Mometrix argues that LCR’s claim for tortious interference with contract
is preempted by federal copyright law and that federal courts have exclusive jurisdiction over the
case as one arising under the Copyright Act. See 17 U.S.C. § 301 (providing that Copyright Act
preempts all legal or equitable rights that are equivalent to exclusive rights within scope of Copyright
Act); 28 U.S.C. § 1338(a) (providing that federal courts have exclusive jurisdiction over action
“arising under” Copyright Act). A preemption argument that implicates subject matter
3
jurisdiction—that is, choice of forum rather than merely choice of law—such as Mometrix’s
argument here, may be raised for the first time on appeal. See Oncor Elec. Delivery Co. LLC
v. Chaparral Energy, LLC, 546 S.W.3d 133, 138 (Tex. 2018) (“Because a challenge to the court’s
subject-matter jurisdiction cannot be waived, a party may raise exclusive jurisdiction for the first
time on appeal.”); Brauer v. Brauer, No. 02-11-00109-CV, 2012 Tex. App. LEXIS 7991, at *7 (Tex.
App.—Fort Worth Sept. 20, 2012, no pet.) (mem. op.) (“A defendant may raise a pre-emption
argument for the first time on appeal only if the issue of pre-emption implicates the subject matter
jurisdiction of the court, that is, the choice of forum rather than merely the choice of law.”); see also
Freedom Commc’ns, Inc. v. Coronado, 372 S.W.3d 621, 623 (Tex. 2012) (per curiam) (“We must
consider our jurisdiction, even if that consideration is sua sponte.”); Rusk State Hosp. v. Black,
392 S.W.3d 88, 103 (Tex. 2012) (Lehrmann, J., dissenting) (“Subject matter jurisdiction cannot be
waived or conferred by agreement, can be raised at any time, and must be considered by a court sua
sponte.”). Mometrix contends that because the federal courts have exclusive jurisdiction, this Court
lacks jurisdiction and must dismiss LCR’s suit against Mometrix.4
Preemption under Federal Copyright Law and Exclusive Federal Jurisdiction
The trial court and this Court would generally have subject matter jurisdiction over
LCR’s state law claim for tortious interference. The question here, however, is whether LCR’s claim
4
At the same time, Mometrix “appeals the trial court’s denial of the TCPA motion” and
contends that we should “reverse the trial court and render judgment in favor of Mometrix and
remand for attorney’s fees and sanctions as required by the TCPA.” See Tex. Civ. Prac. & Rem.
Code § 27.009(a)(1), (2). Because of our disposition of the jurisdictional issue, we do not address
this contention.
4
for tortious interference is preempted by federal law, specifically whether it falls within the scope
of the Copyright Act. “The Copyright Act expressly preempts all causes of action falling within its
scope, with few exceptions.” Daboub v. Gibbons, 42 F.3d 285, 288 (5th Cir. 1995); see 17 U.S.C.
§ 301(a) (providing that all claims that are equivalent to exclusive rights within scope of copyright
are governed exclusively by Copyright Act).5 The Fifth Circuit has established a two-part test to
determine if a state law claim is preempted. Spear Mktg., Inc. v. BancorpSouth Bank, 791 F.3d 586,
594 (5th Cir. 2015); Carson v. Dynegy, 344 F.3d 446, 456 (5th Cir. 2003); Efremov v. GeoSteering,
LLC, No. 01-16-00358-CV, 2017 Tex. App. LEXIS 2166, at *6 (Tex. App.—Houston [1st Dist.]
Mar. 14, 2017, pet. denied) (mem. op.). Under the first prong, the claim is examined to determine
whether it falls within the subject matter of copyright. See Spear Mktg., 791 F.3d at 594;
GlobeRanger Corp. v. Software AG, 691 F.3d 702, 706 (5th Cir. 2012); Daboub, 42 F.3d at 289;
Butler v. Continental Airlines, Inc., 31 S.W.3d 642, 650 (Tex. App.—Houston [1st Dist.] 2000, pet.
denied). Under the second prong, the claim is preempted if it protects rights equivalent to any of the
exclusive rights of a copyright. Spear Mktg., 791 F.3d at 594; Carson, 344 F.3d at 456; Efremov,
2017 Tex. App. LEXIS 2166, at *7. “The test for evaluating the equivalency of rights is commonly
referred to as the ‘extra element’ test.” Carson, 344 F.3d at 456; Alcatel USA, Inc. v. DGI Techs.,
5
See also H.R. Rep. No. 94-1476, at 130 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5746 (“Preemption of State Law. The intention of section 301 is to preempt and abolish any rights
under the common law or statutes of a State that are equivalent to copyright and that extend to works
coming within the scope of the Federal copyright law. The declaration of this principle in section
301 is intended to be stated in the clearest and most unequivocal language possible, so as to foreclose
any conceivable misinterpretation of its unqualified intention that Congress shall act preemptively,
and to avoid the development of any vague borderline areas between State and Federal protection.
. . . All corresponding State laws, whether common law or statutory, are preempted and abrogated.”).
5
Inc., 166 F.3d 772, 787 (5th Cir. 1999). Under the extra element test, the rights granted under a state
law claim are equivalent to the rights granted by the Copyright Act if the elements of the state law
cause of action would not establish qualitatively different conduct by the defendant than the elements
for an action under the Copyright Act would establish. Alcatel, 166 F.3d at 787; Daboub, 42 F.3d
at 290; Butler, 31 S.W.3d at 651. If the complained-of acts of the defendant would establish a
violation of both state law and copyright law, then the rights under the state law are deemed
equivalent to the rights granted under copyright law. Alcatel, 166 F.3d at 787. In short, “[w]hen the
essence of a state law claim is the same as that in a copyright action[,] it is not qualitatively
different.” Masck v. Sports Illustrated, No. 13-10226, 2013 U.S. Dist. LEXIS 81677, at *14
(E.D. Mich. June 11, 2013). The Fifth Circuit has held that “both prongs of [the] two-factor test
must be satisfied for preemption to occur.” Carson, 344 F.3d at 456.
“Ordinarily, preemption operates as an affirmative defense to a plaintiff’s state-law
claims but does not deprive state courts of jurisdiction over those claims.” Mills v. Warner Lambert
Co., 157 S.W.3d 424, 425 (Tex. 2005) (per curiam); see Metropolitan Life Ins. Co. v. Taylor,
481 U.S. 58, 63 (1987) (stating that preemption does not necessarily confer jurisdiction since it is
generally defense to plaintiff’s suit). “State-court jurisdiction is affected only when Congress
requires that claims be addressed exclusively in a federal forum.” Mills, 157 S.W.3d at 425; see
Chappell v. SCA Servs., Inc., 540 F. Supp. 1087, 1095 (C.D. Ill. 1982) (explaining that under federal
preemption, federal substantive law supplants state law but absent other provisions, state and federal
courts have concurrent jurisdiction while under exclusive federal jurisdiction, only specified federal
courts have jurisdiction regardless of law to be applied); see also Mills, 157 S.W.3d at 427 (noting
6
confusion of terminology and explaining that when courts refer to “preemption of jurisdiction,” they
refer not to applicability of federal law but to requirement that claim be resolved in federal forum).
Whether this Court and the trial court have subject matter jurisdiction depends on whether section
301(a) preempts LCR’s state law claim for tortious interference. See GlobeRanger, 691 F.3d at 706
(stating that “real jurisdictional dispute” was whether Copyright Act preempted state claims);Bolier
& Co. v. Decca Furniture (USA), Inc., 58 F. Supp. 3d 491, 494 (W.D.N.C. 2014) (stating that
because state law actions preempted by section 301(a) of Copyright Act “arise under” federal law,
question of jurisdiction would be resolved by determination of whether Copyright Act preempted
state law claim).
Application of Law to Facts
It appears to be undisputed that LCR’s claim that Mometrix wrongfully asserted
copyright infringement concerning written test preparation materials falls within the subject matter
of copyright. See 17 U.S.C. § 102(a) (providing that copyright protection covers original works of
authorship fixed in any tangible medium of expression and capable of being perceived, reproduced,
or otherwise communicated, including literary works). We turn, then, to the second prong of the test
for preemption.
Under the second prong of the test for preemption, we must determine whether LCR’s
claim for tortious interference with contract is equivalent to a claim brought to enforce exclusive
rights under the Copyright Act. See Spear Mktg., 791 F.3d at 594. Mometrix contends that LCR’s
claim for tortious interference based on Mometrix’s complaints to CreateSpace is equivalent to a
claim based on a wrongful “takedown notice” under section 512 of the Copyright Act so that the
7
provisions of section 512 preempt LCR’s state law claim. See 17 U.S.C. § 512(f); Spear Mktg.,
791 F.3d at 594; Alcatel, 166 F.3d at 787. Section 512, added to the Copyright Act as part of the
1998 Digital Millennium Copyright Act (DMCA), limits liability for “incidental acts of copyright
infringement” by providing safe harbors for internet service providers that follow certain
procedures.6 Online Policy Grp. v. Diebold, Inc., 337 F. Supp. 2d 1195, 1201 (N.D. Cal. 2004); see
17 U.S.C. § 512(a)–(d). Section 512(c) provides one such safe harbor for providers who store
information on systems or networks at the direction of users without actual knowledge of
infringement. See 17 U.S.C. § 512(c). Because an internet provider must store information at the
direction of the user in order to qualify for a safe harbor under this provision, Section 512(c) has
been referred to as “the ‘storage’ safe harbor.” See Online Policy Grp., 337 F. Supp. 2d at 1201.
Section 512(c) “augments the rights of copyright owners by establishing a
notice-and-takedown regime” for internet providers who qualify under section 512(c).7 Capitol
Records, LLC v. Vimeo, LLC, 826 F.3d 78, 83 (2d Cir. 2016). Through this procedure, those who
believe an internet service provider is hosting material that infringes on their copyrights can submit
a formal takedown notice. See 17 U.S.C. § 512(c)(1)(C), (3); Stevens v. Vodka & Milk, LLC,
No. 17-cv-8603 (JSR), 2018 U.S. Dist. LEXIS 43666, at *3 (S.D.N.Y. Mar. 15, 2018). Section
512(c)(3) sets out the content requirements for a proper notification of infringement, which include
6
“The DMCA was enacted in 1998 to implement the World Intellectual Property
Organization Copyright Treaty and to update domestic copyright for the digital age.” Capitol
Records, LLC v. Vimeo, LLC, 826 F.3d 78, 82 (2d Cir. 2016). “To that end, the DMCA established
four safe harbors, codified at 17 U.S. C. § 512, which protect qualifying Internet service providers
from liability for certain claims of copyright infringement.” Id.
7
Section 512(d) also contains a notice-and-takedown procedure, but Mometrix does not
contend that section 512(d) applies to this case. See 17 U.S.C. § 512(d).
8
(1) identification of the copyrighted work, (2) identification of the allegedly infringing material, and
(3) a statement that the complaining party believes in good faith that use of the allegedly infringing
material is not authorized by the copyright owner, its agent, or the law. See 17 U.S.C.
§ 512(c)(3)(A)(i), (ii), (v). A service provider is not liable for monetary relief if, upon notification
of claimed infringement, it responds expeditiously to remove the infringing material. See
id. § 512(c)(1)(C). On the other hand, if, after receiving a takedown notice, the provider continues
to host the allegedly infringing material, it loses the benefit of the safe harbor. See id.; Stevens,
2018 U.S. Dist. LEXIS 43666, at *3; Online Policy Grp., 337 F. Supp. 2d at 1201 (“Once the
[service provider] has actual knowledge of the infringing material, it loses the safe harbor protections
unless it complies with the DMCA.”). As further protection for the service provider and copyright
owner, section 512(f) provides a remedy for injury resulting from a wrongful takedown notice. See
17 U.S.C. § 512(f). Under section 512(f), any person who knowingly misrepresents that material
is infringing is liable for any damages incurred by the alleged infringer, by any copyright owner or
its licensee, or by a service provider that is injured by the misrepresentation as the result of the
service provider’s reliance on it in removing material. See id.
Here, Mometrix contends that its complaints constitute takedown notices under
section 512(c)(3)(A) and that LCR’s state law claim for tortious interference with contract is
equivalent to a claim under section 512(f) and is therefore preempted. In support of its argument,
Mometrix relies on Stevens. See 2018 U.S. Dist. LEXIS 43666. In that case, Stevens contacted
online retailers and asked that they stop selling Vodka & Milk’s book because it infringed on his
copyright. Id. at *2. Stevens then sued Vodka & Milk alleging various claims. Id. at *1. Vodka
9
& Milk filed a counterclaim asserting a state law claim for intentional interference with contract
based on Stevens’ communications to the online retailers. Id. at *2. Stevens sought dismissal of the
state law claim for interference with contract arguing that it was preempted by section 512 of the
DMCA. Id. at *3. The court noted that it was undisputed that the notices Stevens sent to online
retailers were takedown notices under section 512, that takedown notices are “creations entirely of
federal law,” and that the DMCA included an express remedy for the very wrong that Vodka & Milk
alleged in its counterclaim. Id. at *3, *6–7. Thus, the court held that Vodka and Milk’s state law
counterclaim for intentional interference with contract was preempted by the DMCA and dismissed
the counterclaim. Id. at *7. Mometrix urges that as in Stevens, LCR’s state law claim for tortious
interference arising from Mometrix’s communications to Amazon is preempted by the DMCA and
should be dismissed.
In response, LCR initially argues that Mometrix’s complaints were not formal
takedown notices under section 512 because the complaints did not specifically refer to the DMCA
or to section 512. However, section 512(c)(3)(A) requires only that a notice of infringement include
“substantially” six types of information, and the specified information does not mandate an express
reference to the DMCA. See 17 U.S.C. § 512(c)(3)(A). Based on the record before us, it appears
that Mometrix’s complaints were takedown notices because they substantially complied with
section 512(c)(3)(A).8
8
We note that LCR maintains that the complaints are also deficient in that Mometrix is not
the owner of the copyrights to the publications at issue, which it contends is one of the elements of
a proper takedown notice. See 17 U.S.C. 512(c)(3)(A). As noted in footnote 10 herein, and in light
of our remand to the trial court, we express no opinion on this issue.
10
LCR further argues that section 512 does not apply to this case because CreateSpace
is not the type of internet service provider to which section 512(c) applies. LCR contends that
because CreateSpace is an online publisher that selects the publications it provides for resale to the
public, and it does not store information “at the direction of users,” section 512(c) does not apply to
it, and Mometrix’s complaints do not constitute takedown notices. LCR relies on the declaration of
its Vice President Douglas Richter, in which he stated that “LCR sells its publications to
CreateSpace, which, in turn, sells our publications online through Amazon.com” and “provides LCR
royalties based on a percentage of the retail list price.”
By its own terms, section 512(c) applies to “Information residing on systems or
networks at direction of users.” See 17 U.S.C. § 512(c); Rock River Communic’ns., Inc. v. Universal
Music Grp., Inc., No. CV08-635-CAS (AJWx), 2011 U.S. Dist. LEXIS 46023, at *49 (C.D. Cal.
Apr. 27, 2011) (observing that section 512(c) was “intended to apply to alleged infringement as a
result of materials stored at the direction of users, rather than through the intentional activity of the
internet service provider itself”). Determining whether an internet service provider stores
information at the direction of the user is a complex analysis, involving questions not answered by
the Richter declaration or otherwise in the record before us, including whether users upload their
own content, what discretion the service provider exercises, what automated or manual processing
is done by the provider, and whether and to what extent another party acts as agent for the provider.9
9
Falling within the definition of internet service provider is one of several threshold
conditions that a service provider must meet to be eligible for any of the safe harbors under section
512. Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1099 (W.D. Wa. 2004). Only if a
service provider meets the threshold requirements does it qualify under section 512, and then it must
establish that it meets a particular safe harbor provision, such as that in section 512(c). See id. The
11
See Mavrix Photographs, LLC v. LiveJournal, Inc., 873 F.3d 1045, 1049, 1056–57 (9th Cir. 2017)
(stating that “[i]nfringing material is stored at the direction of the user if the service provider played
no role in making that infringing material accessible on its site or if the service provider carried out
activities that were ‘narrowly directed’ towards enhancing the accessibility of the posts” and
remanding for determination of fact issue as to whether “moderators” who reviewed user-submitted
photographs before posting on social media platlform LiveJournal were acting as agents for
LiveJournal so that moderators’ acts could be attributed to LiveJournal for purposes of determining
whether photographs were stored at direction of users”) (citation omitted); ; Viacom Int’l, Inc.
v. YouTube, Inc., 676 F.3d 19, 39–40 (2d Cir. 2012) (concluding that YouTube’s “related videos”
software function qualified for safe harbor protection under section 512(c) where algorithm for
indexing and display of related videos was fully automated; involved no input from YouTube
employees; was “closely related to, and follow[ed] from, the storage itself;” and was “narrowly
directed toward providing access to material stored at the direction of users”); Distribuidora de
Discos Karen, C por A. v. Seijas, No. 13 Civ. 5200 (NRB), 2015 U.S. Dist. LEXIS 42636, at *20
(S.D.N.Y. Mar. 26, 2015) (concluding that complaint regarding postings to iTunes did not state
enough facts for court to determine whether iTunes stored music at direction of users, denying
Rock River court concluded that meeting the threshold definition of service provider was not
sufficient “in light of the subject matter of the correspondence.” Rock River Communications., Inc.
v. Universal Music Grp., Inc., No. CV08-635-CAS (AJWx), 2011 U.S. Dist. LEXIS 46023,
at *49 n.10 (C.D. Cal. Apr. 27, 2011). Further, the court expressly held that the reason the complaint
at issue was not a takedown notice under section 512(c) was “because it [did] not address claimed
infringement ‘by reason of the storage [of material] at the direction of a user.’” See id. at *50
(emphasis added.).
12
defendants’ motion to dismiss, and instructing parties to proceed with discovery on limited question
of whether federal claim was viable under section 512(f)).
Because Mometrix raised the issue of preemption under section 512(f) for the first
time in its reply brief in this Court, the record is insufficiently developed for us to make this
determination because it lacks evidence relevant to whether CreateSpace or Amazon stores
information at the direction of users. See Distribuidora (observing that complaint did not state
enough facts for court to determine whether iTunes stored music at direction of users); Rusk State
Hosp., 392 S.W.3d at 96 (noting that plaintiff may not have had opportunity to amend pleadings or
develop record when jurisdiction is not raised in trial court). There is no evidence conclusively
establishing the relationship between CreateSpace and Amazon or whether CreateSpace is Amazon’s
agent for purposes of making material available on Amazon’s website, see Mavrix Photographs,
873 F.3d at 1057; no evidence of whether or to what extent either CreateSpace or Amazon plays a
role in making material accessible on Amazon’s site, see id. at 1056; and no evidence concerning
whether and to what extent CreateSpace or Amazon processes the content or otherwise exercises
discretion in organizing, making available for purchase, or promoting LCR’s publications, see
Viacom, 676 F.3d at 40; Distribuidora de Discos Karen, 2015 U.S. Dist. LEXIS 42636, at *20;
cf. Rock River, 2011 U.S. Dist. LEXIS 46023, at **50 (noting that it was “undisputed that Apple,
and not its users, decides what is available for purchase on iTunes” and concluding that complaint
at issue was “not a take-down letter as described in section 512(c) because it [did] not address
claimed infringement ‘by reason of the storage at the direction of a user’”(quoting 17 U.S.C.
512(c)(1))). Consequently, the record does not contain enough evidence for this Court to determine
13
whether section 512(c) applies to this case. It follows that the record is insufficiently developed for
this Court to determine whether LCR’s claim for tortious interference is equivalent to a claim under
section 512(f) and whether exclusive federal jurisdiction precludes jurisdiction in the trial
court and in this Court. See Spear Mktg., 791 F.3d at 594; Distribuidora de Discos Karen,
2015 U.S. Dist. 42636, at *22; Rusk State Hosp., 392 S.W.3d at 96 (noting that plaintiff may not
have had opportunity to amend pleadings or develop record when jurisdiction is not raised in
trial court).
“Appellate courts have broad discretion to remand for a new trial in the interest of
justice.” In re Estate of McNutt, 405 S.W.3d 194, 197 (Tex. App.—San Antonio 2013, no pet.);
Knapp v. Wilson N. Jones Mem’l Hosp., 281 S.W.3d 163, 176 (Tex. App.—Dallas 2009, no pet.).
“Remand is appropriate when, for any reason, a case has not been fully developed . . . .” Innovate
Tech. Solutions, L.P. v. Youngsoft, Inc., 418 S.W.3d 148, 153 (Tex. App.—Dallas 2013, no pet.);
Knapp, 281 S.W.3d at 176; see, e.g., Ahmed v. Ahmed, 261 S.W.3d 190, 196 (Tex. App.—Houston
[4th Dist.] 2008, no pet.) (“As long as there is a probability that a case has, for any reason, not been
fully developed, an appellate court has discretion to remand for a new trial rather than render a
decision.”); Scott Bader, Inc. v. Sandstone Prods., Inc., 248 S.W.3d 802, 822 (Tex. App.—Houston
[1st Dist.] 2008, no pet.). “‘Moreover, remand is appropriate if a case needs further development
. . . to establish and present evidence regarding an alternate legal theory.” Ahmed, 261 S.W.3d at 196
(where trial court evaluated agreement as premarital agreement, remanding for consideration under
other theories of enforcement); accord Wells Fargo Bank, N.A. v. Riojas, No. 13-15-00279-CV,
2016 Tex. App. LEXIS 2189, at *7 (Tex. App.—Corpus Christi Mar. 3, 2016, no pet.) (mem. op.)
14
(remanding for development of record concerning whether jurisdiction in forcible detainer action
was proper in justice court that heard case based on location of property where prior to appeal case
had been pursued solely on theory of res judicata). Because the record is not sufficiently developed
for this Court to determine whether the federal courts have exclusive jurisdiction in this
case, we remand to the trial court to provide the parties an opportunity to offer additional
pleadings, evidence, and argument on this jurisdictional issue.10 See Distribuidora de Discos Karen,
2015 U.S. Dist. 42636, at *22; Rusk State Hosp., 392 S.W.3d at 96; Miranda, 133 S.W.3d at 226
(observing that court has right to hear necessary evidence to enable it to decide whether it has power
to try case whether want of jurisdiction is raised by plaintiff’s pleadings or by defendant’s challenge
to jurisdiction); Innovate Tech. Solutions, 418 S.W.3d at 152; Estate of McNutt, 405 S.W.3d at 197;
Riojas, 2016 Tex. App. LEXIS 2189, at *7.
10
LCR argues that Mometrix cannot invoke the DMCA because Mometrix is not the owner
of the copyrights to the publications at issue. However, section 512(c)(3) does not expressly require
that the party giving a takedown notice be the copyright holder. Rather, it requires a statement under
penalty of perjury that the person giving the notice is the owner or is authorized to act on behalf of
the owner of the copyright—a statement Mometrix’s complaints contained. Mometrix produced
evidence that Mometrix purchased the copyrights to two of the publications at issue and was
designated the DMCA agent for the other two. LCR offered contradicting evidence that it had
commissioned an author to write one of the passages in dispute and that it had a license to use
another so that Mometrix’s purported authorization to act concerning those publications was not
valid. LCR also offered evidence that the party who purported to authorize Mometrix to act as its
DMCA agent did not understand the role of such an agent and had since revoked Mometrix’s
authority to act as agent. In his declaration, LCR Vice President Richter also referred to a webpage
from the U.S. Copyright Office website, but the referenced exhibit is not contained in the appellate
record, and the implication of the reference is not clear. On remand, the trial court, in determining
its jurisdiction, will have the opportunity to consider the parties’ arguments and evidence on this fact
question of ownership and authority to give a formal takedown notice.
15
CONCLUSION
For these reasons, we remand this case to the trial court for a determination of
its jurisdiction.
__________________________________________
Melissa Goodwin, Justice
Before Chief Justice Rose, Justices Goodwin and Field
Remanded
Filed: July 31, 2018
16