Pearl Records, Inc. v. Conner

• Decision Date: 20 January 2023
• Docket Number: 3:22-cv-00096
• Parties: PEARL RECORDS, INC., HORSE OF TROY PRODUCTIONS INC., AND MELCHER MEDIA, INC. Plaintiffs, v. CRAIG CONNER, Defendant.
• Court: U.S. District Court — Middle District of Tennessee

PEARL RECORDS, INC., HORSE OF TROY PRODUCTIONS INC., AND MELCHER MEDIA, INC. Plaintiffs, v. CRAIG CONNER, Defendant.

No. 3:22-cv-00096

United States District Court, M.D. Tennessee, Nashville Division

January 20, 2023

MEMORANDUM OPINION

WAVERLY D. CRENSHAW, JR. CHIEF UNITED STATES DISTRICT JUDGE.

This matter is before the Court on Craig Conner's Motion to Dismiss under Rules 12(b)(1) & (2) of the Federal Rules of Civil Procedure, or in the alternative, Motion to Transfer Venue. (Doc. No. 19). For the reasons set forth below Conner's Motion to Dismiss will be is granted.

I. BACKGROUND

This action for declaratory judgment concerns a photograph featuring country music artist Garth Brooks. (Doc. No. 1, ¶1). The photograph at-issue is depicted in Garth Brooks The Anthology Part I, The First Five Years (“The Anthology”), a 240-page memoir of Brooks' personal stories and photographs from the first five years of his career, (Doc. No. 1, ¶1),^[1] and is also depicted in an Anthology promotional video or DVD prepared by Horse of Troy Productions. (Doc. Nos. 1, ¶16; 19, at 2). Pearl Records claims that it owns the photograph of Brooks and that it provided the photograph to Melcher Media, along with other images, artwork, sheet music, lyrics, and the like, for Melcher Media to design and produce The Anthology. (Doc. No. 1, ¶¶9, 24). Pearl keeps the physical 4x6 photograph of Brooks in its archive vault in Nashville, Tennessee, and asserts that a deceased family member of Brooks took the photograph. (Doc. No. 1, ¶¶1, 19).

Conversely, Conner claims that he is the author and sole owner of all copyright interest in the photograph. (Doc. No. 19, at 1). He states that he captured the photograph in San Antonio, Texas in 1991, and that it is his protected work by and through his copyright registration, entitled “G.B. San Antonio 1991.” (Doc. No. 19-1).^[2] Consequently, on November 30, 2021, Conner's counsel sent a letter to Melcher Media, Horse of Troy, and Pearl, (together “the Companies”) insisting that if they could not produce a license from Conner to use his photograph, then their “direct, substantial, and continuing unauthorized use of [Conner's] copyright-protected work” must cease immediately. (Doc. No. 19-4).

The letter specifically demanded (1) the termination of all further dissemination of Conner's work, (2) an audited accounting of revenue from sales of The Anthology, (3) the lockdown and protection of all electronically stored information per an attached “Notice Concerning Retention of Potentially Relevant Documents”, (4) the destruction of every tangible advertisement bearing the image, (5) the buy-back or withdrawal of any item containing the photograph, i.e. all copies of The Anthology, (6) the return of all remaining copies of the photograph in their possession, (7) a sworn itemization of all uses of the work, and (8) for the Companies to immediately inform their commercial general liability insurance carriers of Conner's claim. (Doc. No. 19-4). The letter also contained a spoliation of evidence notice demanding that the Companies not destroy any print or digital evidence. (Doc. No. 19-4).

On January 18, 2022, Conner's counsel sent a follow-up email to the Companies with the salutation “Dear Infringers”, stating that he had not received a response to his November letter. (Doc. No. 19-2). The email declared that if the Companies' representative, attorney, or insurance adjuster failed to get in contact within two weeks, the Companies may expect a suit to be filed without further notice. (Doc. No. 19-2). In response, the Companies filed this case for declaratory judgment, seeking a declaration that Pearl is the rightful owner of the photograph, and that the Companies have not infringed on Conner's copyright because he is not the author. (Doc. Nos. 1, ¶24; 19-3). See 28 U.S.C. § 2201.

In Conner's motion to dismiss, he alleges that no justiciable controversy exists and therefore this Court cannot issue a declaratory judgment. (Doc. No. 19, at 4). Conner also alleges that he does not have sufficient contacts with Tennessee, because he has not directed any actions towards the State. Consequently, he asserts that the Court does not possess personal jurisdiction over him. (Doc. No. 19, at 10). Alternatively, he prays that the action be transferred to the Eastern District of Texas. (Doc. No. 19). The Companies contest each point. (Doc. No. 20). The Court agrees with Conner's second point that it does not have personal jurisdiction over him. To paraphrase one famed country musician, the Court finds that all the nexus is in Texas, that's why the Companies can't hang their hat in Tennessee. See All My Ex's Live in Texas - George Strait (1987).

II. DISCUSSION

Subject-Matter Jurisdiction

This case arises under the Declaratory Judgment Act, which grants the Court discretionary authority to declare the rights, obligations and other legal relations of an interested party in cases of actual controversy within its “jurisdiction.” 28 U.S.C. § 2201(a). See Cardinal Health, Inc. v. Nat'l Union Fire Ins. Co. of Pittsburgh, PA, 29 F.4th 792, 796 (6th Cir. 2022) (“The Supreme Court has ‘repeatedly characterized the Declaratory Judgment Act as an enabling Act, which confers a discretion on the courts rather than an absolute right upon the litigant.'”) (quoting Wilton v. Seven Falls Co., 515 U.S. 277, 287, 115 S.Ct. 2137, 132 L.Ed.2d 214 (1995) (internal quotation marks omitted)). Conner's motion to dismiss pursuant to Rule 12(b)(1) challenges this Court's subject matter jurisdiction to consider this declaratory action.

Rule 12(b)(1) motions generally come in one of two forms: a facial attack or a factual attack. Howard v. City of Detroit, Michigan, 40 F.4th 417, 422 (6th Cir. 2022) (quoting Gentek Bldg. Prods., Inc. v. Sherwin-Williams Co., 491 F.3d 320, 330 (6th Cir. 2007)). “A motion to dismiss in a declaratory judgment action is considered a factual attack on subject matter jurisdiction.” Beach Sales & Eng'g, LLC v. Telebrands, Corp., 2015 WL 1930337, at *1 (N.D. Ohio 2015) (quoting Google, Inc. v. EMSAT Advanced Geo-Location Tech., LLC, 2010 WL 55685, at *2 (N.D. Ohio 2010) (citing 3D Sys. v. Envisiontec, Inc., 575 F.Supp.2d 799, 804 (E.D. Mich. 2008)); see Foundations Worldwide, Inc. v. Oliver & Tate Enterprises, Inc., 2013 WL 4054636, at *2 (N.D. Ohio 2013). With a factual attack, no presumptive truthfulness applies to the allegations in the complaint and the district court has wide discretion to review evidence outside of the complaint to satisfy itself that it possesses jurisdiction. Howard, 40 F.4th at 422.

The Declaratory Judgment Act does not confer federal subject-matter jurisdiction on the Court itself. Heydon v. MediaOne of Se. Michigan, Inc., 327 F.3d 466, 470 (6th Cir. 2003). Rather, the complaint must state an independent basis for subject-matter jurisdiction. Id. See Toledo v. Jackson, 485 F.3d 836, 839 (6th Cir. 2007) (“Before invoking the Act... a federal court must have jurisdiction already under some other federal statute.”) (internal quotations omitted). “Federal question jurisdiction ‘exists in a declaratory judgment action if the plaintiff has alleged facts in a well-pleaded complaint which demonstrate that the defendant could file a coercive action arising under federal law.'” Severe Recs., LLC v. Rich, 658 F.3d 571, 581 (6th Cir. 2011) (emphasis kept) (quoting Stuart Weitzman, LLC v. Microcomputer Res., Inc., 542 F.3d 859, 862 (11th Cir. 2008), abrogation on other grounds recognized by Fastcase, Inc. v. Lawriter, LLC, 907 F.3d 1335, 1341 (11th Cir. 2018)). This Court has federal question jurisdiction over “all civil actions arising under the Constitution, law, or treaties of the United States.” 28 U.S.C. § 1331. Because the Companies allege sufficient facts in their Complaint that Conner could file an action under the Copyright Act, the Court has subject matter jurisdiction. (Doc. No. 1, ¶24); see 28 U.S.C. § 1338(a) (“The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to... copyrights....”); Severe Recs., LLC, 658 F.3d at 581 (“[A] question of authorship... arise[s] under the Copyright Act[.]”); Jones v. Glad Music Publ'g & Recording LP, 535 F.Supp.3d 723, 732 (M.D. Tenn. 2021) (“[C]laims premised upon authorship of a copyrighted work arise under the Act. . In addition, ownership claims grounded in disputes about authorship are considered to arise under the Act.”) (emphasis omitted).

Once subject-matter jurisdiction is satisfied, the Court then determines whether the declaratory judgment claim is justiciable, meaning there must be a case of actual controversy. Google, Inc., 2010 WL 55685, at *2 (internal quotations omitted). However, the Court need not make this determination, nor “deci[de] whether to exercise or decline jurisdiction,” under the Declaratory Judgment Act, if the Court does not have personal jurisdiction over Conner. J.M. Smucker Co. v. Promotion in Motion, Inc., 420 F.Supp.3d 646, 662 (N.D. Ohio 2019) (the court considered the “threshold issue of personal jurisdiction” before analyzing the “five. Grand Trunk factors[] to determine whether the exercise of Declaratory Judgment Act jurisdiction [would be] appropriate”) (internal quotations omitted). See also Bird v. Parsons, 289 F.3d 865, 872 (6th Cir. 2002) (“‘[N]o unyielding jurisdictional hierarchy' exists between subject matter and personal jurisdiction.”) (quoting Ruhrgas AG, 526 U.S. at 578). Cardinal Health, Inc., 29 F.4th at 796.

Personal Jurisdiction

Personal jurisdiction restrains judicial power to protect individual liberty. Ruhrgas AG v. Marathon Oil Co., 526 U.S 574, 584, 119 S.Ct. 1563, 1570, 143 L.Ed.2d 760 (1999). It is “‘an essential element of the jurisdiction...