TC Reiner v. Canale
301 F. Supp. 3d 727
E.D. Mich.2018Background
- Plaintiff TC Reiner, a professional photographer, owns a registered 2004 copyright in a photograph titled "Nikki." Defendant Thomas Canale was an SVSU art professor alleged to have copied/distributed the Work to students without permission for class use.
- Plaintiff first sued SVSU and its board in May 2016, later adding a student and a "Jane Doe" professor; SVSU and the board were dismissed and the student later dismissed, leaving Canale as the sole defendant.
- Plaintiff filed a Second Amended Complaint on July 7, 2017 naming Canale; claims: (Count I) copyright infringement (17 U.S.C. §§106, 501) and (Count II) wrongful removal of copyright management information under the DMCA (17 U.S.C. §1202).
- Defendant moved for judgment on the pleadings arguing (1) the claims are time-barred because Canale was added after the three-year copyright limitations period and the amendment does not relate back under Fed. R. Civ. P. 15(c); and (2) immunity: qualified immunity (individual capacity) and Eleventh Amendment sovereign immunity (official capacity).
- The Court held the amended complaint did not relate back under Rule 15(c) as naming a Doe is not a "mistake concerning the proper party's identity" under binding Sixth Circuit precedent; thus both claims are time-barred.
- Alternatively, the Court found Canale entitled to qualified immunity on both claims (fair-use uncertainty) and Eleventh Amendment immunity in his official capacity because Congress's attempt to abrogate state immunity for copyright claims (CRCA) is invalid.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Timeliness/Relation back under Rule 15(c) | Reiner: naming a Doe preserves the claim until identity learned; amendment should relate back | Canale: addition occurred after 3-year limitations; naming Doe is not a "mistake" under Sixth Circuit law so no relation back | Amendment did not relate back; claims time-barred |
| Whether lack of initial knowledge is a "mistake" under Rule 15(c)(1)(C)(ii) | Reiner: identifying Doe was a placeholder; mistake excused until identity discovered | Canale: Sixth Circuit precedent (Cox, Moore) treats absence of knowledge as not a "mistake"; Berndt is not controlling | Court follows weight of Sixth Circuit authority: lack of identity ≠ "mistake"; no relation back |
| Qualified immunity (individual capacity) for copyright/DMCA claims | Reiner: Canale should know copyright law and university policy; no fair-use defense shown | Canale: fair-use in educational context not clearly established; reasonable official could believe use lawful; DMCA derivative of copyright | Court: qualified immunity applies — fair-use unsettled so rights not "clearly established"; qualified immunity on both counts |
| Eleventh Amendment sovereign immunity (official capacity) | Reiner: Congress abrogated immunity via CRCA; university/employees not immune | Canale: CRCA invalid abrogation; public universities are arms of the state and immune | Court: SVSU is an arm of the state; CRCA held invalid as abrogation of state immunity; Eleventh Amendment bars official-capacity claims |
Key Cases Cited
- Sensations, Inc. v. City of Grand Rapids, 526 F.3d 291 (6th Cir. 2008) (Rule 12(c) standard parallels Rule 12(b)(6))
- Asher v. Unarco Material Handling, Inc., 596 F.3d 313 (6th Cir. 2010) (Rule 15(c)(1)(B) cannot be used to add new parties by relation back)
- Cox v. Treadway, 75 F.3d 230 (6th Cir. 1996) (naming John Doe then later substituting named defendants does not satisfy Rule 15(c) "mistaken identity")
- Krupski v. Costa Crociere S.p.A., 560 U.S. 538 (U.S. 2010) (relation back depends on what the added party knew or should have known)
- Pearson v. Callahan, 555 U.S. 223 (U.S. 2009) (qualified immunity two-step: constitutional violation and clearly established right)
- Harlow v. Fitzgerald, 457 U.S. 800 (U.S. 1982) (government officials shielded from liability for discretionary acts absent violation of clearly established law)
- Princeton Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996) (fair-use issues in educational copying; declined to decide whether professors/students making copies would be fair use)
- Seminole Tribe of Florida v. Florida, 517 U.S. 44 (U.S. 1996) (Congress may not abrogate state sovereign immunity under Article I)
- Florida Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527 U.S. 627 (U.S. 1999) (limits on congressional abrogation of state sovereign immunity for patent claims; Fourteenth Amendment analysis required)
- City of Boerne v. Flores, 521 U.S. 507 (U.S. 1997) (congruence and proportionality required for valid §5 Fourteenth Amendment legislation)