1 18

- 2955

- cv, 18

- 2959

- cv James H. Fischer v. Sandra F. Forrest , et al. 

## In the 1 

# United States Court of Appeals 2 

## For the Second Circuit 3 4 5 August Term 20 19 6 7 No s . 18

- 2955

- cv, 18

- 2959

- cv 8 9 JAMES H. FISCHER 10 11 Plaintiff

- Appellant, 12 13

v. 14 15 SANDRA F. FORREST, SHANE R. GEBAUER, BRUSHY MOUNTAIN BEE 16 FARM, INC., STEPHEN T. FORREST, JR., 17 18 Defendants

- Appellees

. 19
20 21 Appeal from the United States District Court 22 for the Southern District of New York 23 No. 14 Civ. 01304 (PAE

- AJP) , Paul A. Engelmayer, District Judge, Presiding. 24 (Argued : December 12, 2019; Decided : August 4, 2020 ) 25 26 27 Before: PARKER AND CHIN , Circuit Judges , AND COTE , District 28 Judge

. 1 29

1 Judge Denise Cote, of the United States District Court for the Southern District of New York, sitting b y designation.2 1 Appeal from a judgment of the United States District Court for the 2 Southern District of New York (Engelmayer, J. ) dismissing claims under the 3 Copyright Act, 17 U.S.C. § 101 et seq

. and the Digital Millennium Copyright Act, 4 17 U.S.C. § 1201 et seq

. AFFIRMED

. 5 6 7 G REGORY K EENAN (Andrew Grimm, 8 on the brief ), Digital Justice Foundation, 9 Floral Park, NY, for Plaintiff

- Appellant

. 10 11 D ANIEL K. C AHN (Seth L. Hudson, 12 Clements Bernard Walker, Charlotte, NC, 13 on the brief ), Law Offices of Cahn & Cahn, 14 Melville, N Y , for Defendant s

- Appellees

. 15 16 17 18

BARRINGTON D. PARKER , Circuit Judge : 19
James H. Fischer appeals from a judgment of the United States District 20
Court for the Southern District of New York (Engelm a yer, J .)

. The district court 21

grant ed summary judgment in favor of the Defendant s
- Appellees, Sandra 22

Forrest, Shane Gebauer, Stephen Forrest, Jr., and Brushy Mountain Bee Farm 23
(“Brushy Mountain”) on Fischer’s claims of copyright infringement and 24
copyright management information (“CMI”) removal . The controversy 25
underlying this litigation arose from the promotion by the Forrests o f their own 26
version of a honey harvesting product . The new product replaced one Fischer 273 had invented and that th e Forrests had sold for many years through the website 1
and catalogue of Brushy Mountain , a company the Forrests owned. Judge 2
Eng el mayer concluded that Fischer was not entitled to s tatutory damages or 3
attorneys’ fees , the relief he sought on his copyright infringement claim, because 4

the first allegedly infringing act occurred before the work was registered. See 17 5
U.S.C. § 412

. The di strict court also concluded that Fischer failed to establish a 6

CMI removal claim under the Digital Millennium Copyright Ac t (“DMCA”) , 17 7
U.S.C. § 1201 et seq

. We agree and accordingly, we affirm the judgment of the 8

district court. 9

BACKGROUND 10 11 Fischer is an apiarist who developed a product known as Fischer’s Bee

12
Quick in 1999. Fischer’s Bee

- Quick is a “honey harvesting aid” tha t is used to 13
clear bees from the superstructures placed on beehives where bees store honey. 14

Bee

- Quick is sprayed on a fume board , which is placed on the superstructures

. 15

The scent causes the bees to exit the structure , at which point the honey can be 16

harvested. Bee

- Quick was distinguished from the products of Fischer's 17

co mpetitors because it was non

- toxic and did not have the offensive odor 18

associated with other honey harvesting aids. 194 Brushy Mountain was a mail

- order business specializing in bee

- keeping 1
supplies . It was owned and operated during the relevant period by Sandra and 2
Stephen Forrest and Shane Gebau e r, its President

. Brushy Mountain circulate d a 3
catalogue of products well

- known in bee

- keeping circles, featuring pictures and 4
product descriptions

. 5
Brushy Mountain began featuring Fischer’s Bee

- Quick in its catalogue in 6

2002 and described it as follows : 7

This 100% Natural, non

- toxic blend of oils and her b extracts works just like 8 Bee Go and it smells good! Fischer’s Bee Q uick is a safe, gentle, and 9 ple asant way to harvest your honey. Are you tired of your spouse making 10 you sleep in the garage after using Bee Go? Are you tired of using a 11 hazardous product on the bees you love? Then this is the product for you! 12 J. App’x at 1 JA

- 267

. 13 14 Fischer sold Bee

- Quick on his own website , Bee

- Quick.com, starting 15

around 2000 and he continued to do so during the years it also was available 16
from Brushy Mountain

. The description of Bee

- Quick in Fischer ’s brochure , 17

which was featured on the Bee

- Quick.co m website, include d the following 18
phrases: 19

1. Are you tired of your spouse making you sleep in the garage after 20 using Butyric Anhydride? 21 2. Are you tired of using hazardous products on the bees you love? 22 3. Fischer’s Bee

- Quick is a safe, gentle, and pleasant way to harvest your 23 honey. 245 4. A Natural, Non

- Toxic Blend of Oils and Herbal Extracts. J. App’x at 1 1 JA

- 169

. 2 3 Around 2010 , Brushy Mountain claimed that Fischer’s supply of Bee

- Quick 4
was unreliable and decided to stop offering it in its catalogue. In its place, Brushy 5
Mountain started selling its own honey harvesting ai d called Natural Honey 6

Harvester. Brushy Mountain ’s January 2011 catalogu e described its new product 7

as follows: 8
For years we have promoted the use of a natural product to harvest honey 9 but an unreliable supply of such a product has forced us to come out with 10 our own. This 100% Natural, non

- toxic blend of oils and herb extracts 11 works just like Bee Go and it smells good! Natural Honey Harvester is a 12 safe, gentle, and pleasant way to harvest your honey. Are you tired of your 13 spouse making you sleep in the garage after using Bee Go? Are you tired 14 of using hazardous products on the bees you love? Then this is the product 15 for you! J. App’x at 1JA

- 160

. 16 17 Th is text remained in the catalogue largely unchanged through 2014 and was 18
featured on the Brushy Mountain website through 2011

. 19

The similarities between the two descriptions are the basis fo r Fis c her ’ s 20

claims. He contends that Brushy Mountain simply replaced “Fischer’s Bee

21
Quick” with “Natural Honey Harvester” in their advertisements, and that this 22

substitution constitutes copyright infringement and the unlawful r emoval of 23

CMI

. See 17 U.S.C. § § 504 , 1202

. 246 After Fischer initiated this action , initially as a pro se litigant , the parties 1
engaged in extensive motion practice

. 2 The claims that were not dismissed 2
proceeded through discovery, and eventually the Defendants

- Appellees moved 3

for summary judgment on the remaining claims. Magistrate Judge Andrew J. 4

Peck, who was managing the pretrial activity, re commended granting the motion 5

in its entirety in a July 2017 Report & Recommendation

. The d istrict c ourt 6
adopted th at Report & Recommendation in full in a February 2018 order and 7
opinion. The district court held that § 412 of the Copyright Act barred the 8
recovery of statutory damages for copyright infringement because the alleged 9
infringement predated the copyright registration. See 17 U.S.C. § 412 . The district 10

c o urt also held that Fischer failed to establish a violation of the DMCA because 11
the changes that B rush y Mountain had made to its catalogue did not constitute 12

removal of CMI. This appeal followed. 13

2 The Forrests moved to dismiss Fischer’s initial and amended complaints in July 2014, and those motions were denied in January 2015. Fischer then obtained counsel and filed a Third Amended Complaint in December 2015, adding Shane Gebauer and Brushy Mountai n as defendants. Pretrial management was referred to Magistrate Judge Andrew J. Peck. Magistrate Judge Peck, in a thorough and thoughtful January 2017 Report & Recommendation , recommended that the district court dismiss Fischer’s trademark counterfeiting a nd New York right of publicity claims, but deny the Forrests’ motion to dismiss all other claims. Judge Engelmayer adopted the Report & Recommendation in a March 21, 2017 order and opinion.7 STANDARD OF REVIEW 1
We review a grant of summary judgment de novo, “resolving all 2
ambiguities and drawing all permissible factual inferences in favor of the party 3
against whom summary judgment is sought.” FTC v. Moses , 913 F.3d 297, 305 (2d 4
Cir. 2019). 3 A “ court shall grant summary judgment if the movant shows that 5
there is no genuine dispute as to any material fact and the movant is entitled to 6
judgment as a matter of law.” Fed. R. Civ. P. 56(a); see also Alabama v. North 7

Carolina , 560 U.S. 330, 344 (2010) (quoting Celotex Corp. v. Catrett , 477 U.S. 317, 322 8
(1986) )

. 9

DISCUSSION 10

I. 11
The Copyright Office registered Fis c her ’s copyright for the Bee

- Quick.com 12

website , which includes the Bee

- Quick brochure , on February 7, 2011. 4 We 13

3 Unless otherwise indicated, in quoting cases, all internal quota tion marks, alterations, emphases, footnotes, and citations are omitted.

4 In February 2011, Fischer filed a copyright registration application for the text and image files of the Bee

- Quick.com website. Fischer mistakenly included thousands of irrelevant d ocuments in his application, and after the Copyright Office detected this error, he submitted a second and then third set of files on September 23 and September 24, 2011 respectively. The Defendants

- Appellees dispute d below that Fischer’s Bee

- Quick brochur e was included in the initial February submission, but Fischer maintains that the second and third submissions were subsets of the files submitted in February. The Copyright8 assume F ischer’s website and the text contained in it are copyrightable creative 1

work s and the registration for the website is valid. 2

As noted, Fis c her has elected to pursue statutory damages. A copyright 3
infringer can be held liable for either actual damages and profits obtained or for 4
statutory damages. 17 U.S.C. § 504(a). However, § 412 pr ecludes statutory 5
damages or attorneys ’ fees for “any infringement of copyright in an unpublished 6
work commenced before the effective date of its registration” or “any 7
infringement of copyright commenced after first publication of the work and 8
before the effective date of its registration.” 17 U.S.C. § 412. The Defendants

9
Appellees argue that § 412 bars statutory damages because the first allegedly 10
infringing act occurred prior to February 7, 2011 , the registration date of the 11
copyright

. 12

Fischer , on the other hand, argues that § 412 do es not apply because there 13

were no pre

- registration infringements by the Defendants

- Appellees

. There are a 14
host of problems with this contention. First , Fischer ’s pleadings repeatedly 15

Office issued Fischer a copyright registration dated September 24, 2011, the date of his third, corrected submission. The date of the registration was changed to February 7, 2011, the date of his first submission, after he contacted the Copyright Office to clarify that everything that was in the later submissions was in the first submis sion.9 referred to the pre

- registration use of the advertising text in the Brushy Mountain 1
catalogue as infringements

. For example, in the Third Amended Complaint ( the 2
operative complaint ) Fischer alleged that “permission to use Plaintiff’s 3
intellectual property in any way had been revoked, as no permission was 4
granted to use Plaintiff’s copyrighted works in any way except specifically in the 5
sales of [Bee

- Quick].” Third Am. Compl. ¶ 26; 14 Civ. 1307, Dkt. No. 111. Fischer 6
also allege d that the Defendants

- Appellees “no longer had any of Plaintiff’s 7
product to sell” as of March 2010 and , consequently, at that point the ir use of the 8
advertising text constituted infringement. Id

. Fischer repeated this allegation of 9
infringement with respect to a Dec ember 10, 2010 email from Brushy Mountain 10
informing him that it would be discontinuing Bee

- Quick . Fischer alleged that 11

“ [a] t that point, Defendants immediately lost any right, license, or permission to 12
use any of Plaintiff’s intellectual property.” Id. at ¶ ¶ 46

- 47. Moreover , th e 13
allegedly infringing advertisement for Natural Honey Harvester was in the 14
Brushy Mountain catalogue mailed on January 21, 2011 and the allegedly 15
infringing use of the Bee

- Quick advertising text was on the Brushy Mountain 16

website as early as December 26, 2010

. 1710 Faced with t hese obstacle s to statutory damages , Fis c her’s position shift ed

. 1

He now argues that the Defendants

- Appellees ’ actions prior to his registration of 2
the copyright are not infringements because they had a license to use his 3
advertising material

. Although Fisch er posits the existence of a license , h e has 4

fail ed to adduce admissible evidence of its existence, much less evidence as to its 5

scope , terms , or the dates of its creation or revocation. 6
In addition to being inconsistent with Fischer’s pleadings , this argument 7

was raised for the first time in his objections to the Magistrate Judge’s July 2017 8

R eport. Judge Engelmayer correctly declined to allow Fischer to make an about

9

face in those objections to advance a theory of liability that contradicted his 10
pleadings and had not been raised during summary judgement proceedings 11
before the Magistrate Judge

. See Pan Am

. World Airways, Inc. v. Int ’ l B hd

. o f 12

Teamsters, 894 F.2d 36, 40 n. 3 (2d Cir. 1990 )

. We see no abuse of discretion

. 13

Even were we to consider Fischer’s new theory of liability at this late date, 14

it would not save his claim for statutory damages . Fischer first contends that the 15

Defendants

- Appellees had a license to use Fischer’s material and that the date on 16

which that license was rescinded prese nts a n unresolved factual issue

. As noted, 1711 he has not adduced evidence sufficient to create a genuine issue of material fact 1

as to the existence of a ny such license. 2

Fischer’s other contention is that a factual issue exists as to when the first 3
allegedly infringing act occurred

. In support of this contention, Fischer claims 4
that the date the first customers received Brushy Mountain’s January 2011 5
catalogue

— the first catalogue to offer Natural Honey Harvester with the 6
allegedly infringing text

— must be assumed to post

- date his February 7, 2011 7
copyright registration. He fails to offer anything but speculation in support of 8
this argument. For example, he points this Court to an order form that specified a 9
January 21 , 2011 shipping date, the authenticity of which Fischer does not 10

contes t. That date is consistent with unrefuted testimony below that established 11
the catalogues containing the allegedly infringing material were mailed on 12
January 21, 2011, well before the decisiv e registration date

. Confronted with 13

th ese facts, Fischer was obligated to come forth with admissible evidence 14
creating a genuine issue of material fact as to the date of mailing. Fischer failed to 15

do so . H e points to a reference on the order form that indicated that the 16
catalogues were initially marked for shipment on January 24, 2011 and argues 17

that a fourteen

- day shipment window would result in customers’ receipt of the 1812 catalogue after the February 7 registration . This reference does nothing to help 1

F ischer. The document simply says that the catalogues were planned to be 2
shipped on January 24 but were, in fact, shipped on January 21. 5 Speculations 3
such as these are not an appropriate substitute for admissible evidence. As we 4

have noted, “mere concluso ry allegations, speculation or conjecture will not avail 5
a party resisting summary judgment.” Cifarelli v. Village of Babylon , 93 F.3d 47, 51 6
(2d Cir. 1996). For these reasons, we must conclude that the first allegedly 7
infringing act occurred before t he da te of the copyright registration and no 8
genuine issue of material fact exists concerning this issue. Consequently, § 412 9

bars Fischer ’s recovery of statutory damages. 6 10

5 In fact, Fischer cites no authority for the proposition that the relevant date for the first alleged act of infringement is the date of receipt of the catalogue by the customers. The relevant statute state s that “[t]he offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication.” 17 U.S.C. § 1 01. Even on Fischer’s account, the catalogues were printed and shipped prior to his registration of the copyright.

6 Fischer argues that, even if this Court finds that statutory damages are precluded pursuant to § 412, this Court should afford him declaratory relief. Fischer bases this claim on the Defendants

- Appellees’ stipulation at oral argument on the summary judgment motion that they would (1) remove any links and photos containing Fischer's name or product on Brushy Mountain's website, and (2) not use the four advertising p hrases again in the future

. At the time, F ischer agreed that this mooted his request for injunctive relief. However, on appeal, Fischer claims that the Defendants

- Appellees’ stipulation is

“ functionally a consent decree ” and that this Court should grant declaratory13 III. 1

Fischer next argues that the Defendants

- Appellees violated the DMCA 2

when they removed “Fischer’s Bee

- Quick” from the advertising copy on the 3
Brushy Mountain website

. See 17 U.S.C. § 1202

. The DMCA was passed in 1998 to 4
implement two international treaties resulting from the 1996 World Intellectual 5
Property Organization (“WIPO”) Conv ention. S. Rep. 105

- 190 at 1

- 2 (1998); s ee 6

also 144 Cong. Rec. S205

- 02 (1998) (statement of Sen. Leahy). Congress’ s intent in 7
enacting the DMCA was to update the copyright laws of the United States for the 8

“ digital age

. ” Viacom Int’l, Inc. v. YouTube, Inc. , 676 F.3d 19, 26 (2d Cir. 2012). 9
Generally speaking, the two major aims of the DMCA are (1) anti

- circumvention 10

of access controls, codified a t 17 U.S.C. § 1201 et seq

. , and (2) creating a safe 11
harbor for service providers when their users or other third parties engage in 12
infringing activities, codified a t 17 U.S.C. § 512. “ At its passage, the Digital 13
Millennium Copyri ght Act contemplated a new world, untested in prior court 14

decisions. ” 4 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 15
12A.06[C] (Matthew Bender, Rev. Ed.) (2020)

. 16

judgment on the basis of the sti pulation. He offers no support for that contention. Moreover, Fischer did not seek declaratory relief below. The stipulation did not concede that the text at issue was Fischer’s copyrighted work nor did it concede that the Defendants

- Appellees’ use of the text was an infringement.14 This appeal focuses on the anti

- circumvention component of the DMCA, 1

an d specifically on the definition of CMI in § 1202(c). Section 1202 was “ required 2
by both WIPO Treaties to ensure the integrity of the electronic marketplace by 3
preventing fraud and misinformation .” H.R. Rep. 105

- 551(I) at 10 (1998 ) ; see also 4
S. Rep. 105

- 190 (1998). Section 1202 realizes this aim by “ prohibit [ing] 5
intentionally providing false copyright management information . . . with the 6

intent to induce, enable, facilitate or conceal infringement. It also prohibits the 7

deliberat e deleting or altering [of] copyright management information. ” H

. R. 8
Rep. 105

- 551 (I) at 10. Th e section is intended “ to protect consumers from 9
misinformation as well as authors and copyright owners from interference with 10
the private licensing process .” Id. at 10

- 11; see also Nimmer § 12A.08[A]

. While 11

the DMCA establish es certain protections for copyright holders in a digital 12

medium , it also establishes limitations on copyright liability in the interest of 13
promoting growth, development, and innovation in the digital universe. H

. R. 14
Rep. 105

- 551(I) at 11

- 12. 15

In broad strokes, § 1202(c) protects the “[i]ntegrity of copyright 16
management information” and prohibits the removal of CMI from copyrighted 17

works. See 17 U.S.C. § 1202(a)

- (c). The statute describes CMI a s information such 1815 as the author, title, and other identifying data about the copyright holder of the 1

work. In relevant part, t he term “copyright management information” is defined 2

as: 3
any of the following information conveyed in connectio n with 4 copies . . . of a work

. . . or displays of a work, including in digital form, 5 except that such term does not include any personally identifying 6 information about a user of a work or of a copy

. . . or display of a work: 7 (1) The title and other inf ormation identifying the work, including 8 the information set forth on a notice of copyright. 9 (2) The name of, and other identifying information about, the author 10 of a work. 11 (3) The name of, and other identifying information about, the 12 copyright owner of the work, including the information set forth in a 13 notice of copyright. 14

. . . 15 (6) Terms and conditions for use of the work. 16 (7) Identifying numbers or symbols referring to such information or 17 links to such information. 18 (8) Such other information as the Register of Copyrights may 19 prescribe by regulation, except that the Register of Copyrights may 20 not require the provision of any information concerning the user of a 21 copyrighted work. 22 23 17 U.S.C. § 1202(c). To establish a violation of this subsection, a lit igant must 24

show (1) the existence of CMI on the allegedly infringed work , (2) the removal or 25

alteration of that information and (3) that the removal was intentional. 17 U.S.C. 26
§ 1202(b). 2716 Fischer alleges that his name is CMI and that by deleting the phrase 1

“Fischer’s Bee

- Quick” and replacing it with “Natural Honey Harvester , ” the 2

Defendants

- Appellees violat ed § 1202 (c) by removing his name from 3
copyrighted material

. This assertion misunderstands what constitutes CMI

. 4

While an author’s name can constitute CMI, not every mention of the 5

name does . Here, “Fischer’s” is part of a product name ; it is not a reference to 6
“James H. Fischer” as the owner of a copyrighted text

. N or is the name “[t]he 7

title and other information identifying the work ” or the “[t]he name of, and other 8
identifying information about, the author of the work” as required by the statute. 9

See 17 U.S.C. § 1202(c)( 1 )

- (3)

. We grant that Natural Honey Harvester was 10
designed as a closely resembling alternative to Fischer’s Bee

- Quick, and that the 11
advertising copy used on Brushy Mountain’s website and catalogue for Natural 12
Honey Harvester mirrors the advertising copy that had been used for Fischer’s 13

Bee

- Quick. However, what was removed was not Fischer’s name as the 14
copyright holder of the advertising text , but “ Fischer’s ” insofar as it was a part of 15

the actual product ’s name. 16
Judge Engelmayer provided an example to illustrate the problem with 17

Fischer ’s approach : 1817 Imagine that the back cover of the Ian Fleming novel Dr. No. contained the 1 following encomium: “ In Ian Fleming’s Dr. No , Fleming shows his mastery 2 of Cold War spycraft. ” Imagine then that a person lifted language from 3 that review to promote a different thriller, writing: “ In John Le Carré’s 4 Tinker, Tailor, Soldier, Spy , Le Carré shows his mastery of Cold War 5 spycraft. ” Whatever the other legal implications of such conduct might be, 6 it is inconceivable that a DMCA claim would lie from the elimination of 7 Fleming’s name. The expression at issue does not connote Fleming’s 8 copyright ownership of anything. 9 10 Fischer v. Forrest , 286 F.Supp.3d 590, 611 (S.D.N.Y. 2018)

. Similarly , “Fischer’s 11

Bee

- Quick” used in material published by a third party like Brushy Mountain, 12
which contains advertisements for dozens of other products from many different 13
suppliers, cannot be reasonably construed as an identifier of the copyright holder 14

of the advertising text. In other words, “Fischer’s” in “Fischer’s Bee

- Quick” is not 15

used for ‘managing’ copyright information with respect to the text at issue. 16
The name of an author can, of course, constitute CMI when conveyed in 17

connection with the relevant copyrighted work. 17 U.S.C. § 1202(c). But 18
“Fischer’s” cannot be construed as CMI with respect to the advertising text at 19

issue because i t is simply the name of the product being described. In short: 20

context matters. 21

22

2318 CONCLUSION 1

We have considered Fischer’s remaining arguments and conclude they are 2

without merit. T he judgment of the district court is AFFIRMED

. 3