Scott v. WorldStarHipHop, Inc. [1]

On December 16, 2010, Robert Scott filed a pro se complaint [2] in the Southern District of New York against Berkeley College and WorldStarHipHop, Inc. (hereafter "WorldStar"). Berkeley College is private college in New York; WorldStar, a Nevada corporation, operates and maintains a video website.

According to Scott's complaint, a fight broke out in a Berkeley College class between Scott's current and former girlfriend in November 2010. During the classroom altercation, Scott got involved and repeatedly hit one of the girls. A classmate (Mr. Seymour) recorded the fight on his cell phone and sent it to WorldStar's website where it was posted as "Disgraceful: College Fight In NYC Breaks Out Between A Guy, His Girl & Another Girl In Class! (Man Strong Arm's(sic) The Student. Hitting Her With Body Shots)."

Shortly thereafter in December 2010, the classmate assigned his copyright in the video recording to Scott. Scott then sent take-down notices under 17 U.S.C. § 512(c)(3) to WorldStar, claiming the website was displaying the video without his [now copyright-owner's] written consent. WorldStar did not take down the video; this suit followed.

In his complaint, Scott alleged copyright infringement under the Copyright Act of 1976 and the Digital Millennium Copyright Act. He sought a temporary and permanent injunction, and $28,000 in statutory damages.

On April 18, 2011, Berkeley filed a Motion to Dismiss [3] pursuant to Rule 12(b)(6) for failure to state a claim. In the motion, Berkeley alleged that Scott did not own a valid copyright, and furthermore that Berkeley was unrelated to co-defendant WorldStar and that Scott failed to show how Berkeley College was responsible for uploading the video. Berkeley argued that it was not accountable for copyright infringement because a "member" of its college posted the video. Berkeley also asked the court to take judicial notice that Scott was involved in two related proceedings with them at the time, both involving a gender discrimination claim filed by Scott with the New York State Human Rights Division against Berkeley due to the disparate discipline that Scott and the two girls involved received as a result of the fight (Scott was expelled, but the girls were allowed to return to school).

Scott filed [4] a much longer amended complaint on May 24, 2011, with five claims. In it, he included claims against Berkeley College for sex discrimination and retaliation for filing a sex discrimination complaint, both in violation of 20 U.S.C. § 1681. He also included a claim of negligent infliction of emotional distress against Berkeley College. The copyright infringement claim returned, along with allegations of right to privacy violations pursuant to New York's Civil Rights Law.

Scott alleged that Seymour assigned him the exclusive rights of the copyrighted video for $1 on December 3, 2010. The next day Scott registered the work with the United States Copyright Office (Registration No. PA 1-727-922). He then claimed he contacted WorldStar and Berkeley College and demanded that they both "cease and desist further infringement" of the video. He further alleged that WorldStar "disregarded the statutory requirement of the Digital Millennium Copyright Act" and continued to publish the work. With respect to Berkeley College, he claims that the school infringed his copyright when it submitted the video as evidence in defense of the gender discrimination claim, and  downloaded a copy of the video from WorldStar and distributed it through the school's blackboard network and to its law firm. Scott sought a temporary and permanent injunction, $30,000 in statutory damages and $400,000 damages against Berkeley College for the gender discrimination claims.

On June 29, 2011, Berkeley filed a Motion to Dismiss [5] Scott's Amended Complaint claiming that Scott's new claims were "patently meritless under well establish[ed] law." Berkeley argued that Scott could not use his alleged copyright to suppress evidence of his own wrongdoing, and that itssubmission of the video into evidence was fair use. Berkeley also discussed the public policy issues of copyright laws being used to "shield primary evidence of wrongful conduct in a judicial or administrative proceeding," and alleged that Scott had bad motives in purchasing the copyright of the video.

Scott filed [6] an Opposition to the Motion to Dismiss on July 29, 2011. Berkeley replied [7] on August 12, 2011.

On October 25, 2011, a judge issued an order [8] on Berkeley's Motion to Dismiss, dismissing the case against Berkeley in its entirety with prejudice. The court dismissed the federal claims of copyright infringement, gender discrimination, and retaliation for filing a complaint. In particular, the court held that Berkeley's use of the video in its legal defense was a fair use. The court then declined to exercise jurisdiction over the state claims of invasion of privacy and negligent infliction of emotional distress, in the absence of pending federal claims. Scott has appealed the decision.

In the midst of the above proceedings, WorldStar had not filed an answer or responded to the lawsuit. A default [9] was entered against WorldStar on October 6, 2011. 

On November 19, 2011, WorldStar filed a Motion to Set Aside Default [10] claiming that it did not willfully default and that it was not properly served by Scott. In the motion, WorldStar also argued affirmative defenses against Scott's claims. They argued that there was a nonexclusive license from Seymour when he first posted the video and that "any assignment was subject to the exisiting license."  (Note: This language is from the court's order on May 3, 2012, quoting WorldStar's arguments from this motion. The copy of WorldStar's memorandum of law available through PACER is incomplete.)

The court granted [11] WorldStar's Motion to Set Aside Default on December 12, 2011.

WorldStar then filed [12] a Motion to Dismiss Scott's Amended Complaint on January 13, 2012. WorldStar argued that they are protected from Scott's copyright infringement claim under the "Safe Harbor" provisions of the Digital Millennium Copyright Act (DMCA), and had no actual knowledge that the video was infringing. WorldStar argued that Scott's letter sent on December 4, 2010, could not be used as evidence of actual knowledge of infringement because it did not comply with the requirements of 17 U.S.C. § 512(3)(b)(i). WorldStar also argued that "plaintiff had non-copyright reasons for wanting to suppress the video, specifically the Berkeley College disciplinary actions." WorldStar also claimed that § 230 of the Communications Decency Act (CDA) protected it from Scott's state right of privacy claims.

On February 6, 2012, Scott filed [13] an opposition to WorldStar's Motion to Dismiss. In it, Scott alleged that WorldStar was outside of the scope of the DMCA's safe harbor provisions and the scope of § 230 immunity because it was not "doing business as a internet service provider" at the time the video was posted, because it was then in default as a corporation in Nevada. In addition, Scott asserted that WorldStar did not have a designated agent to receive take down notifications or a place on its website with information on where to send take-down notices, and that it did not provide that information to the U.S. Copyright Office, as required by the DMCA.

WorldStar replied [14] on February 23, 2012, claiming that its corporate parent company's default status is not relevant to the "internet service provider" definition of either the DMCA or the CDA. WorldStar further argued that the DMCA safe habor provisions only allow the copyright owner injunctive relief, and that this is moot because the video has "long since been removed." WorldStar also argued that Scott's amended complaint contained no allegations of a lack of a designated agent.

Scott filed a Motion for Summary Judgment [15] pursuant to Rule 56(a) on March 1, 2012.

The district court judge issued an order [16] on WorldStar's Motion to Dismiss on May 3, 2012. The court dismissed the right of privacy claim, but allowed the copyright infringement claim to proceed. The court held that Scott stated a plausible claim for copyright infringement because he alleged that he became a copyright owner on December 3, 2010, and that WorldStar kept a copy of his video on their website without his authorization after that time. The court further held that WorldStar's two affirmative defenses were insufficient. First, the court found there was no evidence that WorldStar's nonexclusive license was in writing, as required by 17 U.S.C. § 205 for  the alleged license to prevail over a later transfer of rights to Scott. Second, in regards to the DMCA "Safe Harbor" provisions, the court held that even though Scott did not comply with statutory requirements of sending take-down notices according to § 512(c), WorldStar waived any objection by failing to request that Scott resubmit the notice or otherwise to take reasonable steps to obtain proper notification.

The right of publicity claim was dismissed because plaintiff did not allege that WorldStar used the video for advertising purposes, and furthermore it was within the "newsworthiness" exception because it was a recording of actual events that took place in public and was a "matter of valid public interest."

The court denied plaintiff's motion for summary judgment without prejudice because his motion did not comply with court rules. 

On June 11, 2012, World Star filed an answer [17] to Scott's Amended Complaint. The complaint raises several affirmative defenses, including lack of personal jurisdiction and Scott's lack of standing due to failure to register the work in question with the Copyright Office pursuant to 17 U.S.C. § 411 [18].

Update: 

On June 12, 2012, Scott filed a motion to strike [19] the affirmative defenses raised in World Star's answer, claiming that the affirmative defenses were either waived for failure to raise at the motion to dismiss stage and for World Star's failure to timely file the answer under Fed. R. Civ. P. 12(a)(4)(A) [20]. On October 28, 2012, World Star filed an opposition [21] to the motion to strike, acknowledging the untimeliness of the answer but arguing that the delay was not prejudicial to Scott. On November 14, the court denied Scott's motion [22] to strike as to all affirmative defenses except lack of personal jurisdiction, finding that defense precluded by Fed. R. Civ. P. 12(h) [20].