Print-on-Demand Service Defeats Fish Illustrator’s Copyright Claim–Tomelleri v. Sunfrog

Tomelleri (who has appeared on this blog before) illustrates fishes (see court exhibit on the right). He sued a print-on-demand service (Sunfrog) over alleged IP violations of his illustrations. If that rings a bell, it’s because just yesterday I blogged on a DIFFERENT fish painter, DeYoung, who also brought an IP lawsuit against a print-on-demand service (Pixels). New practice area alert for law students: the specialty niche of fish artists asserting IP claims against print-on-demand services.

Note: this case is functionally moot because the defendant, Sunfrog, is already defunct. RIP. As I’ve mentioned before, the legal environment for print-on-demand services remains dicey, and I wonder how many services will survive the legal shakeout. Any surviving services may need to be structured as marketing agencies that push all of the legal risk to the users and third-party vendors. That only works if the users and vendors can tolerate that legal risk. If not, the print-on-demand industry may not be commercially viable under prevailing law.

A magistrate judge recommended dismissing Tomelleri’s copyright claims. The supervising judge agrees.

Volitional Conduct. This judge is vexed by the definition of volitional conduct. He ultimately summarizes: “District court decisions within the Sixth Circuit have held that plaintiffs must show the defendant ‘intentionally and knowingly’ copied the copyrighted work.”

These concepts of scienter imputed into direct infringement are perilous because they seemingly conflate mens rea with an actus reus. The question on the table is supposed to be: did the defendant take a legally significant action that resulted in the infringement? Framing the question this way, it becomes clearer why most courts have adopted a proximate causation standard.

This judge doesn’t like that formulation:

But [the causation term] is technically imprecise. Causation, as used in the traditional sense, refers to the connection between the tort and the plaintiff’s harm. But, as used by Judge Morris and other federal courts in the copyright context, “causation” or the “volitional conduct” requirement more accurately refers to the connection between the tort and the defendant’s actions

Note: I’m not a torts expert, but I’m not sure about the distinction the court is making. The volitional conduct requirement still requires the plaintiff to show that the defense “caused” the harm, i.e., the copyright infringement.

Even if causation were the right framing, assigning causation is cloudy with print-on-demand services. The user may upload the image and request the manufacturing and delivery, but there are many additional “actions” between the user upload and someone shipping a custom-manufactured physical good from the warehouse, and it may be hard to assign responsibility to the user for all of those intermediate steps.

In any case, the court explains why there’s no volition here:

First, Plaintiff alleged that Defendants displayed his copyrighted illustrations without authorization. But Judge Morris correctly concluded that, as a matter of common sense, merely displaying a copyrighted work does not plausibly suggest that the displayer knew the work was copyrighted. Indeed, Judge Morris noted that Plaintiff’s Complaint does not indicate whether Defendants selected the works that appeared on their website. And although Plaintiff also alleged Defendants marketed, advertised, and sold merchandise bearing his copyrighted illustrations. Judge Morris correctly concluded that “Rule 8 requires more”—Plaintiff did not, for example, allege that Defendants “design[ed], manufacture[d] or even select[ed] the products on their website.”

Note 1: Again, direct copyright infringement is strict liability, so it doesn’t matter if “the displayer knew the work was copyrighted” or was completely in the dark about its copyrighted status.

Note 2: these sound like easily avoided pleading problems. This make me check if Tomelleri was proceeding pro se, but in fact he had two law firms on the caption.

DMCA Online Safe Harbors. Tomelleri argued that the DMCA safe harbors aren’t amenable to resolution on a motion to dismiss. Sadly, that’s usually true. Nevertheless, the copyright plaintiff still must establish the prima facie elements of contributory or vicarious copyright infringement, which Tomelleri didn’t sufficiently do. The magistrate judge dismissed the claims on prima facie grounds, not because of the safe harbors.


The court summarizes:

In sum, Plaintiff’s Complaint was all bait and no hook. [Eric’s note: get the pun?] Although Plaintiff sufficiently alleged that someone, somewhere, somehow infringed on his four copyrighted fish illustrations, he insufficiently alleged that Defendants directly infringed. Nor did he sufficiently allege that Defendants are secondarily liable under either vicarious or contributory theories.

While Sunfrog won this battle, it lost the war because it’s exited the market. I wonder if this opinion would look different if Sunfrog was still an ongoing operation? In other words, dismissing the complaint almost certainly saves everyone time and money if, for other reasons, there will be no meaningful relief at the end of the lawsuit. That might have helped the judges be more inclined towards the defense.

I’m also left wondering about possibly divergent applications of copyright and trademark law to print-on-demand services. In yesterday’s ruling, the plaintiff got virtually all of the inferences stacked in their favor, but that plaintiff emphasized trademark law. This plaintiff emphasized copyright law but got little traction. (Both rulings were on motions to dismiss, so procedurally they were identical). Could it be that, in the print-on-demand context, trademark law is more powerful to rightsowners than copyright? For example, trademark law doesn’t have a concept of “volition”–the closest analogue is the trademark use doctrine, which has produced doctrinal anarchy. Also, trademark law doesn’t have a direct analogue to the DMCA online safe harbors, though the DMCA was irrelevant in both decisions.

Case Citation: Tomelleri v. Sunfrog LLC, 2024 WL 940238 (E.D. Mich. March 5, 2024)

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