UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA JMH International, LLC Civil File No. Plaintiff, v. Adlife Marketing & Communications, Co., Inc., Defendant. COMPLAINT AND JURY DEMAND For its Complaint against Defendant Adlife Marketing & Communications, Co., Inc. ( Adlife ), Plaintiff JMH International, LLC ( JMH ) states and alleges as follows: THE PARTIES 1. JMH International, LLC is a Delaware limited liability company with offices in Minneapolis, Minnesota. 2. On information and belief, Defendant Adlife is a Rhode Island company with a principal place of business at 38 Church St., Pawtucket, Rhode Island. JURISDICTION 3. This is a declaratory judgment action for non-infringement of United States copyright and, in the alternative, declaration of appropriate copyright remedies under the U.S. Copyright Act. The Court has jurisdiction under the Federal Declaratory Judgments Act, 28 U.S.C. 2201 and 2202 and under the laws of the United States concerning actions relating to copyright, 28 U.S.C. 1338(a).
4. Venue is appropriate in this District under 28 U.S.C. 1391(b). 5. Personal jurisdiction over Adlife is appropriate because Adlife committed the acts related to copyright infringement and purposely availed itself of the forum district. Adlife also solicited a copyright license agreement with JMH in Minnesota. BACKGROUND FACTS 6. JMH develops food flavoring systems and provides custom formulations and culinary solutions to meet consumer demands. 7. JMH uses photographs of prepared food on its website at www.jmhpremium.com. 8. JMH follows a process to license the use of such photographs from the copyright owner in exchange for a licensing fee. 9. The average licensing fee JMH pays for such images is generally less than $200 ( Market Value ). 10. One such image used on JMH s website was a prepared plate of broccoli with cheese sauce (the Broccoli Photograph ). 11. On or about October 17, 2016, JMH received a Copyright Infringement Notice ( Notice ) regarding the Broccoli Photograph, demanding payment of $8,000 for its use. A copy of this Notice is attached as Exhibit A. 12. Upon receiving the Notice, JMH realized it could not locate documentation of a license for the Broccoli Photograph and removed it from its website. 2
13. Through counsel, JMH promptly responded on or about October 25, 2016, offering $200 for its inadvertent use of the Broccoli Photograph if JMH provide proof of its copyright ownership. A copy of this letter is attached as Exhibit B. 14. During the course of correspondence, Adlife reduced its demand to $5,000 and claimed ownership of Copyright Registration No. VA0002019921 without proof that said registration actually covered the Broccoli Photograph in question ( Adlife Copyright ). Adlife s reduced demand is still 25 times more than Market Value for similar photographs. 15. Although further correspondence was exchanged, the negotiations reached an impasse. At one point, Adlife threatened that [s]hould this go to legal Adlife looses [sic] all power of negotiation. The email correspondence exchange is attached as Exhibit C. 16. Upon information and belief, Adlife purports to own various photographs of prepared food. 17. Upon information and belief, Adlife purports to own copyright registrations covering its photographs. 18. Upon information and belief, Adlife tracks the use of its photographs by others. 19. Upon information and belief, Adlife sends a copyright infringement notice to any third party it discovers using its photographs in the same form as the Notice attached hereto as Exhibit A. 3
20. Upon information and belief, Adlife initially demands approximately $8000 to license the use of its photographs. 21. Upon information and belief, if Adlife does not receive the fee it demands, Adlife files a copyright infringement lawsuit in the District of Massachusetts, demanding $25,000 for the infringement of a single photograph. 22. Upon information and belief, Adlife filed seven such lawsuits during the months of August and September, 2016. infringement. 23. The above allegations are incorporated in the claims below. COUNT ONE (Declaratory Judgment of No Copyright Infringement) 24. JMH has a reasonable apprehension of suit by Adlife alleging copyright 25. There is a substantial and continuing justiciable controversy between JMH and Adlife as to Adlife s right to threaten or maintain suit for infringement of the Adlife Copyright, as to the validity, enforceability and scope of the Adlife Copyright, and as to whether the Broccoli Photograph JMH used infringes any valid and enforceable Adlife Copyright. 26. Upon information and belief, the Broccoli Photograph JMH used does not infringe any valid and enforceable Adlife Copyright. 27. In the alternative, if JMH s use of the Broccoli Photograph does infringe the Adlife Copyright, JMH s use was not willful and remedies for such use should not exceed Market Value. 4
28. The Court should issue a declaratory judgment stating that Adlife is without right or authority to threaten or to maintain suit against JMH for alleged infringement of the Adlife Copyright, that no valid and enforceable copyright is infringed by JMH because of its use of the Broccoli Photograph, or if infringement is found, it was not willful and any remedy should not exceed Market Value. JURY DEMAND 29. JMH demands a jury trial. WHEREFORE, JMH respectfully requests the following relief: (a) Entry of judgment that Adlife is without right or authority to threaten or to maintain suit against JMH for alleged infringement of the Adlife Copyright and that no valid and enforceable copyright is infringed by JMH because of the use of the Broccoli Photograph or if it is infringed, any remedy should not exceed Market Value. (b) Entry of a preliminary injunction enjoining Adlife, its officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with Adlife from threatening JMH or any of its agents, servants, or employees with infringement litigation or charging any of them either verbally or in writing with infringement of the Adlife Copyright. (c) Entry of judgment for its costs and reasonable attorney fees incurred by JMH. (d) Such other and further relief as the Court may deem appropriate. 5
Dated: November 4, 2016 /s/ Lora M. Friedemann Lora M. Friedemann (#259815) FREDRIKSON & BYRON, P.A. Suite 4000 200 South Sixth Street Minneapolis, Minnesota 55402 Telephone: (612) 492-7000 Facsimile: (612) 492-7077 ATTORNEYS FOR PLAINTIFF 59996201_1.doc 6
EXHIBIT A
EXHIBIT B
Fredrlcson fit : & BYRON, P_A_ October 24, 2016 VIA EMAIL: LICENSING@ADLIFE.COM Attention: Licensing Adlife Marketing & Communications 38 Church St. Pawtucket, RI 02860 Re: JMH Premium image Dear Sirs: We represent JMH International, LLC ("JMH"), which received the attached letter from Adlife demanding $8000 for the alleged infringement of a copyrighted image. JMH respects the intellectual property rights of others. To that end, JMH follows a consistent process to dutifully license all of the images it uses on its web site at www.jmhpremium.com prior to posting such images. Although JMH can locate the invoices for the other images on its web site, it has to date not been able to locate the invoice for the image at issue. The rate of $8000 you quote for the image is grossly out of proportion to other licensing fees sought for similar images for similar usages, which is generally less than $200. Also, you quote statutory damages for willful infringement. Given JMH's licensing process, any infringement would clearly be inadvertent and thus reduced to $200. Accordingly, JMH is willing to pay you $200 if you provide me with proof of your copyright ownership in the form of a copy of the certificate of registration for the image in question. I look forward to receiving the certificate in due course. Ann Dunn Wessberg Direct Dial: 612.492_7006 Email: awessbergrgfredlaw.com Attachments Attorneys & Advisors Fredrikson & Byron, P.A. main 612.492.7000 200 South Sixth Street, Suite 4000 fax 612.492.7077 Minneapolis, Minnesota www.fredlaw.com 55402-1425 MEMBER OF THE WORLD SERVICES GROUP A Worldwide Network of Professional Service Providers OFFICES Minneapolis / Bismarck / Des Moines / Fargo / Monterrey, Mexico / Shanghai, China
EXHIBIT C
From: Sent: To: Cc: Subject: Adlife Licensing <licensing@adlife.com> Tuesday, November 01, 2016 11:03 AM Wessberg, Ann Adlife Licensing Re: FW: Response to Alleged Copyright Infringement Notice Good Morning Ann, Adlife will negotiate in good faith with you on behalf of your client. However Adlife does not find $200 reasonable. We do not base prices on what others might see as the value. Adlife bases pricing based on what our customer base pay week in and week out. Adlife will not negotiate against ourselves and so the ball is in your court but needless to say your offer is refused. Adlife On Tue, Nov 1, 2016 at 11:49 AM, Wessberg, Ann <AWessberg@fredlaw.com> wrote: Dear Joel, Thank you for the information regarding your copyright registration. We would still appreciate seeing proof that the registration is in connection with the image in question. We believe that given my client s limited use, $200 is a reasonable offer. This is comparable to what JMH has paid other copyright owners for similar usages. We will forward a check to your address unless we hear from you to the contrary. Best regards, Ann Dunn Wessberg Ann Dunn Wessberg Fredrikson & Byron, P.A. 200 South Sixth Street, Suite 4000 1
Minneapolis, MN 55402 1425 awessberg@fredlaw.com Background 612 492 7006 From: Adlife Licensing [mailto:licensing@adlife.com] Sent: Friday, October 28, 2016 1:18 PM To: Wessberg, Ann Cc: Sharon Ferretti Subject: Re: FW: Response to Alleged Copyright Infringement Notice Good Afternoon Ann, With this information now in hand please send to us a reasonable offer of settlement. Adlife has suggested the $5,000 and you have suggested the $200. the offer must be in the thousands to be seriously considered. Should this go to legal Adlife looses all power of negotiation. Thank you for your help with this. Joel On Fri, Oct 28, 2016 at 2:10 PM, Jeremy Howard <jeremy.howard@adlife.com> wrote: Hello Ann, The registration number we have on file with The United States Copyright Office for the image in question is: VA0002019921 Please just let me know if there is other way I can be of assistance! 2
Thanks, Jeremy Howard Adlife Marketing and Communications (401) 723-4782 www.adlife.com On Fri, Oct 28, 2016 at 1:45 PM, Adlife Licensing <licensing@adlife.com> wrote: Jeremy, Please provide Ann with the copyright registration information necessary. Thanks to both of you for your help with this, Joel On Fri, Oct 28, 2016 at 10:16 AM, Wessberg, Ann <AWessberg@fredlaw.com> wrote: Dear Joel, Thank you for your prompt response. We are clear about your position. JMH is not willing to pay, however, without proof of Adlife s ownership of the copyright. Kindly forward to me a copy of your certificate of registration. Assuming you provide the proof, the payment demand still exceeds my client s usage. The image was removed from my client s web site immediately upon your notice, so in no event could my client s usage be characterized as willful and it certainly does not require an ongoing subscription. I reiterate that my client is willing to pay Adlife $200 for its use if you can provide proof that Adlife owns the copyright in the image. 3
Best regards, Ann Ann Dunn Wessberg Fredrikson & Byron, P.A. 200 South Sixth Street, Suite 4000 Minneapolis, MN 55402 1425 awessberg@fredlaw.com Background 612 492 7006 From: Adlife Licensing [mailto:licensing@adlife.com] Sent: Tuesday, October 25, 2016 5:58 PM To: Wessberg, Ann Subject: Re: Response to Alleged Copyright Infringement Notice Good Afternoon Ann, I hope this better helps you to understand Adlife's position. Adlife is here to help you if you feel this image was properly licensed. We will answer any questions that will be helpful to you in finding the correct license. If a license exists please send to us a screenshot of the download page clearly showing the date and time stamp. If in fact this image was not properly licensed some reasonable resolution must be reached. Every image in Adlife's library is either registered or in for registration. Adlife charges $999/month for a subscription to the preparedfoodphotos.com site for licensed photography. This is a license only and when the license expires the user must end all uses of the image on any advertising channel. If a licensee or user wishes to purchase an image the price is $8,000 from Adlife. these are private clients and there is no negotiation. Adlife basis the charges for willful infringement on this pricing which is available on site under the user agreement/terms of use language. In the spirit of negotiation Adlife will accept a one time payment of $5,000 as settlement. Based on this we hope you better understand our pricing system. Thank-you for your help to resolve this, Joel 4
On Tue, Oct 25, 2016 at 5:40 PM, Wessberg, Ann <AWessberg@fredlaw.com> wrote: Dear Sirs: Attached please find a letter on behalf of our client JMH International, LLC. Sincerely, Ann Dunn Wessberg Ann Dunn Wessberg Fredrikson & Byron, P.A. 200 South Sixth Street, Suite 4000 5
Minneapolis, MN 55402-1425 awessberg@fredlaw.com Background 612-492-7006 6
JS 44 (Rev. 08/16) CIVIL COVER SHEET The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.) I. (a) PLAINTIFFS DEFENDANTS JMH INTERNATIONAL, LLC ADLIFE MARKETING & COMMUNICATIONS, CO., INC., (b) County of Residence of First Listed Plaintiff (EXCEPT IN U.S. PLAINTIFF CASES) (c) Attorneys (Firm Name, Address, and Telephone Number) Fredrikson & Byron, P.A. 200 South Sixth Street, Suite 4000 Minneapolis, MN 55402 612-492-7000 County of Residence of First Listed Defendant (IN U.S. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED. Attorneys (If Known) II. BASIS OF JURISDICTION (Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff (For Diversity Cases Only) and One Box for Defendant) 1 U.S. Government 3 Federal Question PTF DEF PTF DEF Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4 of Business In This State 2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5 Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State IV. NATURE OF SUIT (Place an X in One Box Only) Citizen or Subject of a 3 3 Foreign Nation 6 6 Foreign Country Click here for: Nature of Suit Code Descriptions. CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES 110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act 120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 376 Qui Tam (31 USC 130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 3729(a)) 140 Negotiable Instrument Liability 367 Health Care/ 400 State Reapportionment 150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 410 Antitrust & Enforcement of Judgment Slander Personal Injury 820 Copyrights 430 Banks and Banking 151 Medicare Act 330 Federal Employers Product Liability 830 Patent 450 Commerce 152 Recovery of Defaulted Liability 368 Asbestos Personal 840 Trademark 460 Deportation Student Loans 340 Marine Injury Product 470 Racketeer Influenced and (Excludes Veterans) 345 Marine Product Liability LABOR SOCIAL SECURITY Corrupt Organizations 153 Recovery of Overpayment Liability PERSONAL PROPERTY 710 Fair Labor Standards 861 HIA (1395ff) 480 Consumer Credit of Veteran s Benefits 350 Motor Vehicle 370 Other Fraud Act 862 Black Lung (923) 490 Cable/Sat TV 160 Stockholders Suits 355 Motor Vehicle 371 Truth in Lending 720 Labor/Management 863 DIWC/DIWW (405(g)) 850 Securities/Commodities/ 190 Other Contract Product Liability 380 Other Personal Relations 864 SSID Title XVI Exchange 195 Contract Product Liability 360 Other Personal Property Damage 740 Railway Labor Act 865 RSI (405(g)) 890 Other Statutory Actions 196 Franchise Injury 385 Property Damage 751 Family and Medical 891 Agricultural Acts 362 Personal Injury - Product Liability Leave Act 893 Environmental Matters Medical Malpractice 790 Other Labor Litigation 895 Freedom of Information REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 791 Employee Retirement FEDERAL TAX SUITS Act 210 Land Condemnation 440 Other Civil Rights Habeas Corpus: Income Security Act 870 Taxes (U.S. Plaintiff 896 Arbitration 220 Foreclosure 441 Voting 463 Alien Detainee or Defendant) 899 Administrative Procedure 230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 871 IRS Third Party Act/Review or Appeal of 240 Torts to Land 443 Housing/ Sentence 26 USC 7609 Agency Decision 245 Tort Product Liability Accommodations 530 General 950 Constitutionality of 290 All Other Real Property 445 Amer. w/disabilities - 535 Death Penalty IMMIGRATION State Statutes Employment Other: 462 Naturalization Application 446 Amer. w/disabilities - 540 Mandamus & Other 465 Other Immigration Other 550 Civil Rights Actions 448 Education 555 Prison Condition 560 Civil Detainee - Conditions of Confinement V. ORIGIN (Place an X in One Box Only) 1 Original 2 Removed from Proceeding State Court VI. CAUSE OF ACTION VII. REQUESTED IN COMPLAINT: VIII. RELATED CASE(S) IF ANY DATE 3 Remanded from Appellate Court 4 Reinstated or Reopened 5 Transferred from Another District (specify) Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity): 28 U.S.C. 2201 and 2202 Brief description of cause: Declaratory Judgment regarding alleged copyright infringement. CHECK IF THIS IS A CLASS ACTION UNDER RULE 23, F.R.Cv.P. (See instructions): JUDGE SIGNATURE OF ATTORNEY OF RECORD 11/04/2016 /s/ Lora M. Friedemann FOR OFFICE USE ONLY DEMAND $ Equitable Relief 6 Multidistrict Litigation - Transfer 8 Multidistrict Litigation - Direct File CHECK YES only if demanded in complaint: JURY DEMAND: Yes No DOCKET NUMBER RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE
JS 44 Reverse (Rev. 08/16) INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44 Authority For Civil Cover Sheet The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil complaint filed. The attorney filing a case should complete the form as follows: I.(a) (b) (c) II. III. IV. Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting in this section "(see attachment)". Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X" United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here. United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box. Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity cases.) Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section for each principal party. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code that is most applicable. Click here for: Nature of Suit Code Descriptions. V. Origin. Place an "X" in one of the seven boxes. Original Proceedings. (1) Cases which originate in the United States district courts. Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date. Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict litigation transfers. Multidistrict Litigation Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Multidistrict Litigation Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket. PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to changes in statue. VI. VII. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P. Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction. Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded. VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket numbers and the corresponding judge names for such cases. Date and Attorney Signature. Date and sign the civil cover sheet.