United States District Court, N.D. Illinois, Eastern Division
For Personal Keepsakes, Inc., an Illinois corporation, doing business as Poetrygift.com, Plaintiff: Mark H. Barinholtz, LEAD ATTORNEY, Mark H. Barinholtz, P.C., Chicago, IL.
For PersonalizationMall.Com, Inc., an Illinois corporation, Defendant: Joseph V. Norvell, LEAD ATTORNEY, Jay Michael Burgett, Joseph Thomas Kucala, Jr, Sarah E Dale, Norvell IP LLC, Northfield, IL; Katherine Lynn Tabor, La Grange Park, IL.
For Techny Advisors, LLC, an Illinois limited liability company, Defendant: Robert Howard Resis, LEAD ATTORNEY, Banner & Witcoff, Ltd., Chicago, IL.
For Abernook, LLC, an Illinois limited liability company, Defendant: James R. Carroll, Much Shelist, Chicago, IL; James P. Hanrath, Much Shelist Denenberg Ament & Rubenstein, PC, Chicago, IL.
John J. Tharp, Jr., United States District Judge.
Defendant Techny Advisors, LLC moves pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss Counts I and II of the Amended Complaint of Personal Keepsakes, Inc. (" PKI" ) for failure to state a claim under which relief can be granted. Count I claims copyright infringement and Count II alleges violations of the Digital Millennium Copyright Act (" DCMA" ). For the reasons that follow, the Court grants the motion to dismiss. 
PKI designs and produces gift items personalized with poetry verses for special occasions and then sells them on its website, www.poetrygifts.com. Specifically, PKI's owner writes literary and poetic verses, portions of which are then incorporated into gift items. Techny sells the same types of personalized gift items on various websites, including www.giftsforyounow.com. PKI alleges that Techny unlawfully uses PKI's copyrighted material on its merchandise.
The gist of PKI's complaint is that Techny took PKI's copyrighted poems--the " Infringed Works" as defined in the complaint--put them on its competing products. PKI alleges that the pirated poems contain substantial material that is an original work that constitutes copyrightable subject matter under the copyright laws of the United States of America. Specifically, PKI puts four of Techny's gift items at issue, shown in Exhibit A to its Amended Complaint (Dkt # 79-1). They are titled: " Petite Poetry Gift," " To Our Ring Bearer," " To Our Flower Girl," and " On Your Confirmation Day" ; each contains language from the Infringed Works. Techny moves to dismiss Count I only as it applies to the verse used for the " On Your Confirmation Day" gifts, which reads: " May the strength of the Holy Spirit be with you, guiding you every day of your life." PKI attaches to its Amended Complaint examples of items sold by Techny that PKI says infringe its copyrighted material (See Ex. C, Dkt. # 79-1). One is an engraved glass picture frame, with a two-line poem or prayer in the bottom of the frame that reads, " May the strength of the Holy Spirit be with you, guiding you every day of your life."
PKI maintains that the copyright established by means of Certificate of Registration TXu 586-707, effective date of August 6, 1993, covers the " On Your Confirmation Day" poem. PKI alleges that no license was granted to or obtained by Techny for the reproduction or use of the Infringed Work for any purpose. Further, PKI alleges that Techny (1) made unauthorized
digital copies of the Infringed Work; (2) reproduced and sold products containing the Infringed Works; and (3) displayed items containing language from Infringed Work on their websites.
In addition to the copyright infringement claim, PKI asserts Techny violated the DMCA by removing the " copyright management information" (CMI)--like the www.poetrygift.com website name and associated copyright notice--from PKI's copyrighted poems so that Techny could pass the poems off as its own. Techny moves to dismiss the DCMA claim in its entirety.
A motion to dismiss pursuant to Rule 12(b)(6) tests the sufficiency of the complaint, not the merits of the case. See Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990). To survive a motion to dismiss, the complaint first must comply with Rule 8(a) by providing " a short and plain statement of the claim showing that the pleader is entitled to relief," Fed.R.Civ.P. 8(a)(2), such that the defendant is given " fair notice of what the claim is and the grounds upon which it rests." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80(1957)). The complaint must be " plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Twombly, 550 U.S. at 570 (2007)); see Swanson v. Citibank, N.A., 614 F.3d 400, 404 (7th Cir. 2010) (noting " 'plausibility' in this context does not imply that the district court should decide whose version to believe, or which version is more likely than not." ). A claim is facially plausible " when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 556 U.S. at 678. The factual allegations in the complaint must be sufficient to raise the possibility of relief above the " speculative level." E.E.O.C. v. Concentra Health Servs., Inc., 496 F.3d 773, 776 (7th Cir. 2007) (quoting Twombly, 550 U.S. at 555). In ruling on the motion, the Court accepts as true all of the well-pleaded facts alleged by the plaintiff and all reasonable inferences that can be drawn therefrom. See Barnes v. Briley, 420 F.3d 673, 677 (7th Cir. 2005).
A. Count I: Copyright Infringement
In order to state a claim for copyright infringement, a plaintiff must plausibly allege that: (1) the plaintiff owns a valid copyright; and (2) the defendant copied " constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). To receive a copyright, a work must be original. Id. " A certificate of registration from the U.S. Register of Copyrights constitutes prima facie evidence of the validity of a copyright." Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 507 (7th Cir. 1994) (citing 17 U.S.C. § 410(c)).
Techny argues that the claim for copyright infringement, with respect to the verse associated with " On Your Confirmation Day," should be dismissed on the following grounds: (1) the phrase " May the strength of the Holy Spirit be with you, guiding you every day of your life" is not copyrightable as a matter of law; (2) PKI's asserted copyright registration TXu 586-707 does not cover the common phrase; and (3) when the unprotected ...