United States Court of Appeals
For the First Circuit
No. 23-1214
CYNTHIA FOSS, Hunter Foss Design & Interest,
Plaintiff, Appellant,
v.
MARVIC, INC., d/b/a Brady-Built Sunrooms; BRADYBUILT, INC.; JOHN
DOES; CHARTER COMMUNICATIONS, INC.; CHARTER COMMUNICATIONS, LLC,
Defendants, Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Timothy S. Hillman, U.S. District Judge]
Before
Barron, Chief Judge,
Lipez and Kayatta, Circuit Judges.
Gregory Keenan, with whom Andrew Grimm and Digital Justice
Foundation were on brief, for appellant.
Sarah B. Christie, with whom David F. Hassett and Hassett &
Donnelly, P.C. were on brief for appellees Marvic, Inc. and Brady-Built, Inc.
Zachary C. Howenstine, with whom Richard L. Brophy, Abigail
L. Twenter and Armstrong Teasdale, LLP, were on brief for appellees
Charter Communications, Inc. and Charter Communications, LLC.
June 10, 2024
BARRON, Chief Judge. In this appeal, Cynthia Foss, a
graphic designer, challenges the dismissal on preclusion grounds
of her claim alleging copyright infringement against Marvic, Inc.,
d/b/a Brady-Built Sunrooms ("Marvic"), and Brady-Built, Inc.,
based on Marvic's allegedly unauthorized use of a marketing
brochure that Foss had created. She also challenges both the
dismissal on jurisdictional grounds of her claim for a declaratory
judgment that Charter Communications, Inc. and Charter
Communications, LLC (Marvic's internet service provider), are not
eligible for the Digital Millennium Copyright Act ("DMCA")
safe-harbor defense, see 17 U.S.C. § 512(a), and the dismissal of
that same claim on the merits under Federal Rule of Civil Procedure
12(b)(6). We vacate the dismissal of the copyright-infringement
claim. As to the declaratory-judgment claim, we affirm the
dismissal for lack of jurisdiction and therefore vacate that
claim's dismissal under Rule 12(b)(6).
I.
This appeal has a lengthy procedural history, which
bears directly on Foss's challenge to the dismissal on
claim-preclusion grounds of her copyright-infringement claim.
Accordingly, we begin by describing the dismissal of an earlier
copyright-infringement claim that Foss had brought against Marvic
alone, as that is the dismissal that was deemed preclusive of the
copyright-infringement claim at issue in this appeal.
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A.
Foss brought the earlier copyright-infringement claim
against Marvic alone in the complaint that she filed in January
2018 in the United States District Court for the District of
Massachusetts. We will refer to this earlier suit as "Action 1."
Foss's complaint in Action 1 alleged that she had
"applied for official U.S. Copyright Registrations" for a
twenty-page marketing brochure she had created for Marvic in 2006.
Foss v. Marvic Inc. (Foss II), 994 F.3d 57, 59 (1st Cir. 2021)
(quoting Foss's original complaint). Foss's complaint, as
described by this Court, further alleged that, "in 2016, she
discovered that Marvic had begun using a modified version of the
brochure she had designed in print and online without asking for
or receiving her permission."
Id. And, the complaint alleged,
"[i]n November 2017, she sent a letter to Marvic demanding payment
for lost wages and copyright infringement."
Id. Marvic did not,
according to the complaint, accede to this demand. See
id.
In August 2018, Foss amended her complaint in Action 1
to allege "that she had registered the brochure with the U.S.
Copyright Office on February 13, 2018 and February 28, 2018." Id.
at 60. In the amended complaint, Foss also added five state-law
claims against Marvic alone. See
id.
On September 11, 2018, Marvic filed a motion in Action
1 to dismiss the copyright-infringement claim and the state law
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breach-of-contract claim. Id. The district court granted the
motion on October 3, 2018, after Foss did not oppose the motion.
Id.
On October 19, 2018, Foss filed a motion in Action 1 to
reopen the case and a motion for a preliminary injunction. Marvic
opposed both motions. Id. Then, on January 9, 2019, the district
court in Action 1 granted the motion to reopen the case, and Foss
filed an opposition to Marvic's motion to dismiss that same day.
Id. Foss retained counsel, who entered an appearance on her behalf
on February 22, 2019.
Id.
The district court in Action 1 stayed the case on
February 26, 2019, pending the United States Supreme Court's
decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com,
LLC, 586 U.S. 296 (2019), which construed
17 U.S.C. § 411(a)'s bar
against copyright owners suing for infringement "until . . .
registration of the copyright claim has been made." The Supreme
Court's decision in Fourth Estate construed this provision to
"require[] action by the [Copyright Office] before a copyright
claimant may sue for infringement."
586 U.S. at 303.
After Fourth Estate was issued, the district court
lifted the stay of Action 1 and dismissed Foss's
copyright-infringement claim "[b]ecause the Copyright Office has
not acted upon Plaintiff's application for a copyright." Foss v.
Marvic (Foss I), 365 F. Supp. 3d 164, 167 (D. Mass. 2019). The
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district court also allowed Foss's breach-of-contract claim to
proceed. See id.
Following that decision, the district court -- on
Marvic's unopposed motion -- deemed Foss to have admitted certain
statements after she failed to respond to Marvic's request for
admissions pursuant to Federal Rule of Civil Procedure 36. See
Foss II, 994 F.3d at 60-61.1 The district court denied Foss's
motion to reconsider its decision to deem these statements
admitted. See
id. at 61. Relying in part on those statements,
the district court granted Marvic's motion for summary judgment on
the pendent state-law claims. See
id. at 61-62.
Foss appealed the dismissal of her
copyright-infringement claim, the district court's refusal to
allow Foss to withdraw her deemed-admitted statements, and the
grant of summary judgment in favor of Marvic on the state-law
claims. See id. at 59. We affirmed across the board.
Id.
We rejected, based on waiver, Foss's argument that the
district court should have stayed, rather than dismissed, her
copyright-infringement claim pending the Copyright Office's
decision on her application. See id. at 62. We also rejected
Foss's argument that the dismissal was improper because her failure
1 In the middle of discovery, Foss's attorney was suspended
from the practice of law in Massachusetts and withdrew from the
case. Foss's counsel in this appeal appeared on her behalf in the
appeal in Action 1.
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to register before filing suit "could be and later was cured."
Id. We did so on the ground that "there was no evidence in the
record that Foss had registered her copyright when the court issued
its order of dismissal on March 19, 2019," and therefore "there
was no error in its ruling."
Id. at 63. In so concluding, we
also noted that Foss "learned that the Copyright Office had
registered her copyright on December 13, 2019, almost nine months
after the district court had dismissed [the claim], and did not
move for any relief from the district court's judgment," but
instead filed her appeal on that day.
Id.
Finally, in a footnote, we observed that because the
district court's order dismissing the copyright-infringement claim
was "silent on the issue of prejudice," it would generally be
presumed to be a dismissal with prejudice. Id. at 62 n.6. However,
we also cited our decision in Cortés-Ramos v. Martin-Morales, in
which we held that where a copyright-infringement "complaint is
insufficient as to only the registration ground, the district court
should not . . . dismiss[] the copyright claim with prejudice."
956 F.3d 36, 43 (1st Cir. 2020); see also Foss II,
994 F.3d at 62
n.6. We declined to address whether the district court erred in
not dismissing Foss's copyright-infringement claim without
prejudice, because Foss had failed to argue that the district court
did so err. See
id.
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B.
Foss initiated a separate action, the one from which
this appeal arises, on May 22, 2020, by filing a new complaint
against Marvic alleging copyright infringement based on the same
facts alleged in Action 1. We will refer to this suit as "Action
2."
On September 9, 2020, Marvic moved in Action 2 to dismiss
Foss's complaint based on claim preclusion and inadequate service
of process. Then, on September 21, 2020, Foss filed an amended
complaint naming Brady-Built as an additional defendant in her
copyright-infringement claim. Foss also named Charter Inc. and
Charter LLC ("the Charter Defendants") in the amended complaint
and sought a declaratory judgment that the Charter Defendants are
not entitled to the safe-harbor defense to copyright infringement
provided under the DMCA to certain intermediaries of online
content. See 17 U.S.C. § 512.
In response to Foss's amended complaint, Marvic filed in
Action 2 a renewed motion to dismiss on October 20, 2020. On
December 8, 2020, Brady-Built filed a motion to dismiss Foss's
copyright-infringement claim based on claim preclusion and based
on Foss's failure adequately to allege that Brady-Built was a
successor-in-interest to Marvic. The Charter Defendants moved to
dismiss on December 28, 2020, asserting that Foss's claim against
them should be dismissed for lack of Article III jurisdiction and
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that the claim failed on the merits. Foss opposed each of these
motions.
The District Court in Action 2 stayed the case pending
our decision in the Action 1 appeal. Then, on February 6, 2023,
the District Court in Action 2 granted the Charter Defendants'
motion to dismiss as well as Marvic's and Brady-Built's ("the
Marvic Defendants'") motions to dismiss.
The District Court stated that, "[b]ecause Foss's prior
copyright infringement claim against Marvic [in Action 1] was
dismissed with prejudice, [it] agree[d], for substantially the
reasons stated in their supporting memorand[a], that her copyright
claims against all Marvic Defendants in the Amended Complaint are
barred by res judicata."2 Foss v. Marvi[c], Inc.3 (Foss III), No.
20-CV-40057, 2023 WL 2505115, at *2 (D. Mass. Feb. 6, 2023). The
District Court also dismissed Foss's claim against the Charter
2 "The terms res judicata and claim preclusion often are used
interchangeably. But res judicata 'comprises two distinct
doctrines[:]'" first, issue preclusion, also known as collateral
estoppel, which prevents a party from relitigating an issue
actually decided in a prior case and necessary to the judgment;
and second, claim preclusion, which is "sometimes itself called
res judicata." Brownback v. King, 592 U.S. 209, 215 n.3 (2021)
(citations omitted) (quoting Lucky Brand Dungarees, Inc. v. Marcel
Fashions Grp., Inc.,
590 U.S. 405, 411, (2020)). The District
Court appears to have been referring to claim preclusion, which is
the only res judicata doctrine the parties have briefed in this
appeal.
3Due to a clerical error, "Marvic, Inc." was spelled "Marvin,
Inc." in the caption of the District Court's dismissal order.
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Defendants "[f]or the reasons stated in the Charter Defendants'
supporting memorandum, i.e., Foss has failed to sufficiently
allege a case and controversy and she fails to state a plausible
claim." Id. Foss timely appealed.
II.
Foss first challenges the District Court's dismissal on
claim-preclusion grounds of her copyright-infringement claim
against the Marvic Defendants in this action -- Action 2 -- based
on the dismissal of her copyright-infringement claim against
Marvic in Action 1. To establish that claim preclusion applies
here, the Marvic Defendants must establish that there is "(1) a
final judgment on the merits in an earlier suit, (2) sufficient
identicality between the causes of action asserted in the earlier
and later suits, and (3) sufficient identicality between the
parties in the two suits." Mass. Sch. of L. at Andover, Inc. v.
Am. Bar Ass'n, 142 F.3d 26, 37 (1st Cir. 1998) (quoting Gonzalez
v. Banco Cent. Corp.,
27 F.3d 751, 755 (1st Cir. 1994)); see also
Blonder-Tongue Lab'ys, Inc. v. Univ. of Ill. Found.,
402 U.S. 313,
324 n.12 (1971) (explaining that the federal law of claim
preclusion applies in federal-question cases).
Foss does not dispute that the copyright-infringement
claim against Marvic that was dismissed in Action 1 is identical
to the copyright-infringement claim against the Marvic Defendants
that is at issue here. Foss also concedes that there is sufficient
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identicality between the parties in Action 1 and Action 2. Foss's
challenge to the District Court's decision to dismiss the
copyright-infringement claim, therefore, is based on the
contention that the dismissal in Action 1 was not a "final judgment
on the merits." For the reasons we will explain, we conclude that
Foss is right and that the Marvic Defendants have failed to provide
any argument on appeal that would permit us to affirm the District
Court's dismissal of the claim.
In urging us to conclude that the dismissal of the
copyright-infringement claim in Action 1 was not a final judgment
on the merits for purposes of claim preclusion, Foss relies on a
prior precedent of ours that holds that a dismissal based
exclusively on a failure to allege satisfaction of the
registration-related precondition to copyright-infringement suits
under § 411(a) is not a final judgment on the merits for purposes
of claim preclusion. See Cortés-Ramos, 956 F.3d at 43. Indeed,
in Foss v. Eastern States Exposition, another case also involving
a copyright-infringement claim brought by Foss, we recently
explained that a dismissal of copyright-infringement claims on
this registration-precondition basis "turns on an issue too
disconnected from the merits of the underlying claim to constitute
an adjudication of the claimed rights of the parties sufficient to
terminate a controversy and preclude future litigation of that
controversy."
67 F.4th 462, 468 (1st Cir. 2023) (cleaned up)
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(citing Costello v. United States, 365 U.S. 265, 284–88 (1961)
(holding that dismissal for failure to satisfy a precondition to
suit should not bar a subsequent suit in which the defect has been
cured)).
The Marvic Defendants are aware of this precedent. They
contend, however, that we still must affirm the District Court's
dismissal of the copyright-infringement claim in Action 2 in
consequence of Foss's failure to have complied with the
registration requirement with respect to her
copyright-infringement claim in Action 1. As we will explain,
their arguments are not persuasive.
A.
First, the Marvic Defendants point out that, in
dismissing Foss's copyright-infringement claim against them in
Action 2, the District Court stated that this Court in Action 1
"found that despite Foss having registered the copyright while
[Action 1] was still pending . . . , she did not seek to vacate
the dismissal and amend her complaint to assert that she had a
registered copyright. Therefore, in [Action 1], the First Circuit
affirmed the dismissal of Foss's copyright claim with prejudice."
Foss III, 2023 WL 2505115, at *2 (citing Foss II,
994 F.3d at 57).
The Marvic Defendants contend that, in consequence of this
explanation for the basis of our decision in Action 1 to affirm
the dismissal of the copyright-infringement claim against Marvic
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in that action "with prejudice," that dismissal was a "final
judgment on the merits," Mass. Sch. of L. at Andover, 142 F.3d at
37, and so precludes the copyright-infringement claim against the
Marvic Defendants in this suit, which is Action 2.
That the dismissal in Action 1 was labeled "with
prejudice" is not itself dispositive, however, of the dismissal's
constituting a "final judgment on the merits" for claim-preclusion
purposes. Indeed, we held exactly that in Eastern States
Exposition, which was decided after the District Court's ruling
here, in Action 2. See E. States Exposition, 67 F.4th at 468
(explaining that "[t]he 'with prejudice' label does not itself
determine a dismissal's preclusive effect" (citing Semtek Int'l
Inc. v. Lockheed Martin Corp.,
531 U.S. 497, 505 (2001))).
Furthermore, there is no support in the record for
treating the dismissal of the copyright-infringement claim in
Action 1 "as a sanction explicitly based on [Foss's] repeatedly
ignoring court directives requiring amendment or refiling to
allege compliance with a precondition to suit" and thus, for that
reason, a final judgment on the merits for claim-preclusion
purposes. Id. at 468 n.9. In dismissing the claim, the district
court in Action 1 stated, simply, that the claim was dismissed
"[b]ecause the Copyright Office has not acted upon Plaintiff's
application for a copyright." Foss I,
365 F. Supp. 3d at 167.
We, in turn, affirmed the district court's decision in Action 1 to
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dismiss the copyright claim there "[b]ecause there was no evidence
in the record that Foss had registered her copyright when the court
issued its order of dismissal on March 19, 2019." Foss II, 994
F.3d at 63. In addition, neither the district court's dismissal
in Action 1 nor our decision affirming the district court's
dismissal there indicates that such a ground for deeming the
dismissal claim preclusive was applicable. See E. States
Exposition,
67 F.4th at 468 & n.9 (making similar point).
The Marvic Defendants dispute this characterization of
what happened in Action 1. They do so based on this Court's
statement in Foss II that, "[g]iven this case's long history marked
by repeated delays by Foss and the erratic nature in which she
chose to prosecute it, Marvic would have been prejudiced if Foss
were allowed to further delay the case by withdrawing her"
deemed-admitted statements. Foss II, 994 F.3d at 64. However, we
made that comment in the section of the opinion that addressed
whether the district court in Action 1 abused its discretion in
not reconsidering its decision there to "deem" admitted by Foss
certain statements before granting summary judgment in favor of
Marvic on Foss's state-law claims. See
id. We did not suggest
that either the long history of the case or Foss's "erratic"
approach to litigating it -- as opposed to her failure to satisfy
the precondition to suit -- was the basis for the dismissal of
Foss's copyright-infringement claim in Action 1.
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B.
The Marvic Defendants separately contend that, even if
the dismissal of Foss's copyright-infringement claim in Action 1
was based solely on her failure to register her copyright before
filing suit, we still must affirm the District Court's
claim-preclusion-based dismissal of the copyright-infringement
claim in Action 2. In so arguing, the Marvic Defendants invoke
our prior acknowledgment of the possibility that, under
Massachusetts law, a "plaintiff's failure to satisfy a
precondition before bringing the first suit" may nevertheless
"prejudice[] the defendants, making claim preclusion appropriate."
Pisnoy v. Ahmed (In re Sonus Networks, Inc., S'holder Derivative
Litig.), 499 F.3d 47, 62 n.8 (1st Cir. 2007).
Pisnoy cited approvingly to Stebbins v. Nationwide
Mutual Insurance, 528 F.2d 934, 937 (4th Cir. 1975) (per curiam),4
4Stebbins appears to have relied for its holding on proposed
language in a draft of the Second Restatement of Judgments that
was not ultimately adopted in the final version. Compare Stebbins,
528 F.2d at 937 ("Tentative Draft No. 1 of the Restatement, Second,
Judgments § 48.1(2) provides that 'a valid and final personal
judgment for the defendant which rests on . . . the plaintiff's
failure to satisfy a precondition to suit, does not bar another
action by the plaintiff instituted after . . . the precondition
has been satisfied, unless . . . the circumstances are such that
it would be manifestly unfair to subject the defendant to such an
action.'" (alterations in original)), with Restatement (Second) of
Judgments § 20(2) (Am. L. Inst. 1982) ("A valid and final personal
judgment for the defendant, which rests on the prematurity of the
action or on the plaintiff's failure to satisfy a precondition to
suit, does not bar another action by the plaintiff instituted after
the claim has matured, or the precondition has been satisfied,
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and to Comment n of Section 20 of the Second Restatement of
Judgments ("Restatement"), which addresses when a dismissal based
on a failure to satisfy a precondition to suit is capable of being
claim preclusive and provides that generally such a dismissal is
not claim preclusive. Comment n provides: "The rule of this
Subsection is not an inflexible one. In some instances, the
doctrines of estoppel or laches could require the conclusion that
it would be plainly unfair to subject the defendant to a second
action." Restatement § 20 cmt. n.
We most recently acknowledged the possibility described
in Comment n in Eastern States Exposition. There, the case
implicated the alternative-determinations doctrine. In cases
implicating that doctrine, there is at least one ground present in
the original dismissal judgment that, on its own, could be
preclusive under the test for determining when claim preclusion
applies. See E. States Exposition, 67 F.4th at 463-64. In
concluding in Eastern States Exposition that the
alternative-determinations doctrine required that one
non-preclusive basis for a prior dismissal rendered the dismissal
non-preclusive, we stated that "[i]n some instances, the doctrines
of estoppel or laches could require the conclusion that it would
be plainly unfair to subject the defendant to a second action"
unless a second action is precluded by operation of the substantive
law.").
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despite the operation of the alternative-determinations doctrine.
67 F.4th at 473 (alteration in original) (quoting Restatement § 20
cmt. n).
The Marvic Defendants argue that, although this case
does not implicate the alternative-determinations doctrine, the
District Court in Action 2 still correctly barred the
copyright-infringement claim at issue from going forward. That is
so, they contend, because the District Court dismissed that claim
"for substantially the reasons stated in" the Marvic Defendants'
memorandum in support of dismissal. Foss III, 2023 WL 2505115, at
*2.
Here, the Marvic Defendants argue that, by giving those
reasons for dismissing the claim, the District Court in Action 2
thereby made clear that the grounds on which it was relying for
the dismissal were the arguments that the Marvic Defendants had
made for dismissal that were based on "Foss's intentional disregard
of and repeated failure to satisfy a precondition to suit." In
other words, the Marvic Defendants argue, the basis for the
District Court's dismissal of the copyright-infringement claim in
Action 2 "included prejudice-based arguments regarding Foss's
failure to diligently pursue the copyright registration issue
resulting in the 'cost and vexation' of multiple lawsuits, and
. . . regarding the Marvic Defendants' preparation to litigate on
the merits[,] . . . [and] participation in motion practice and
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hearings on the merits of Foss's claims." Accordingly, the Marvic
Defendants contend, we should affirm the District Court's
dismissal of the copyright-infringement claim on this basis, given
our decisions in Pisnoy and Eastern States Exposition.
Foss argues, however, that Comment n applies only in
cases implicating the alternative-determinations doctrine. And,
she contends, her case does not implicate the
alternative-determinations doctrine because the dismissal of her
copyright-infringement claim against Marvic in Action 1 was based
only on a non-preclusive ground: Foss's failure to have satisfied
a precondition to suit. But the Restatement does not appear to be
addressing only cases implicating the alternative-determinations
doctrine. Rather, it broadly observes in Comment n that even when
a prior dismissal was for failure to satisfy a precondition to
suit "the doctrines of estoppel or laches could require the
conclusion that it would be plainly unfair to subject the defendant
to a second action." Restatement § 20 cmt. n. And, outside of
the alternative-determinations context, at least one circuit has
invoked Comment n of the Restatement in relying on laches to bar
a claim from going forward following an earlier dismissal. See
Trs. of the Centennial State Carpenters Pension Tr. Fund v. Centric
Corp. (In re Centric Corp.), 901 F.2d 1514, 1519 (10th Cir. 1990)
(citing Restatement § 20 cmt. n).
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We need not determine, however, the precise scope of the
limitation that Comment n of the Restatement contemplates to
resolve this case. And that is because the Marvic Defendants have
failed to show a basis in the record for concluding that any such
limitation is applicable here.
The Marvic Defendants do not explain, for example, how
the facts of this case match up to the elements of "the doctrines
of estoppel or laches" and how those doctrines here "require the
conclusion that it would be plainly unfair to subject [them] to a
second action." Restatement § 20 cmt. n. Indeed, neither estoppel
nor laches is mentioned in the Marvic Defendants' brief, and the
record does not support the application of either doctrine to the
circumstances of this case. Nor do the Marvic Defendants explain
why, the specific requirement of those doctrines aside, it would
be "plainly unfair" to burden the Marvic Defendants with a second
action. Id.
The Marvic Defendants do argue that Foss is a "uniquely
sophisticated litigant" who has "flagrantly disregarded a
precondition to filing suit" and "engaged in a series of other
misrepresentations before the court." The Marvic Defendants then
contend that Foss's misrepresentations to the district court in
Action 1 and delay in satisfying the registration requirement in
that action "forced the Marvic Defendants to expend significant
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costs in defending what is essentially a baseless and frivolous
lawsuit."
At oral argument, however, the Marvic Defendants
conceded that the prejudice relevant to their claim-preclusion
argument did not derive from any potential misrepresentations that
Foss may have made in her original complaint regarding when she
applied for copyright registration. Thus, the unfairness that the
Marvic Defendants rely on appears to inhere in their having to
defend Foss's copyright-infringement claim on the merits now in
Action 2 -- and not previously in Action 1 -- due to Foss's decision
to refile her copyright-infringement claim rather than move for
reconsideration of the dismissal of her claim against Marvic in
the prior action. The Marvic Defendants argue they are prejudiced
by Foss's decision to refile because "Marvic prepared to litigate
the merits of the first suit, participated in motion practice and
hearings on the merits of inextricably intertwined state law
claims, and the extensive litigation in the first action has
already made it clear that Foss's claim is frivolous and baseless."
The Marvic Defendants do not dispute, however, that Foss
was entitled to amend her complaint and proceed on her
copyright-infringement claim after she registered her copyright.
Nor do the Marvic Defendants explain why the dismissal of Foss's
state-law claims made it clear that her federal
copyright-infringement claim is "frivolous and baseless." After
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all, when Foss first filed her copyright-infringement claim, there
was a circuit split as to whether a plaintiff in her position
needed to wait for the Copyright Office to act before filing suit,
see Alicea v. Machete Music, 744 F.3d 773, 779 & n.7 (1st Cir.
2014) (noting the split without taking a side in it), and the
Supreme Court did not resolve this split until over a year after
Foss filed her suit, see Fourth Estate,
586 U.S. at 299. Nor was
it plainly unreasonable for Foss to file a second action rather
than seek reconsideration of the dismissal in her original action
given the implications that seeking reconsideration might have had
on the timeliness of the rest of her appeal in Action 1.
Thus, we must conclude that the District Court erred in
dismissing Foss's copyright-infringement claim based on claim
preclusion. And, as the District Court did not rule on the Marvic
Defendants' other asserted basis for dismissal -- which concerned
an alleged inadequate service of process -- the parties agree that
we should not address that issue in the first instance. We
therefore vacate the dismissal in Action 2 of Foss's
copyright-infringement claim against the Marvic Defendants.
III.
We turn next to the District Court's dismissal of Foss's
claim for a declaratory judgment that the Charter Defendants are
not eligible for the DMCA safe-harbor defense to
copyright-infringement claims. See Foss III, 2023 WL 2505115, at
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*2. We review this decision de novo, taking "well-pleaded facts
as true and indulg[ing] all reasonable inferences in [Foss]'s
favor." Wiener v. MIB Grp., Inc., 86 F.4th 76, 83 (1st Cir. 2023)
(quoting Hochendoner v. Genzyme Corp.,
823 F.3d 724, 730 (1st Cir.
2016)).
We begin with the dismissal insofar as the District Court
based it on Foss's failure to establish Article III jurisdiction
over the claim. The Charter Defendants moved to dismiss the claim
on this basis pursuant to Calderon v. Ashmus, 523 U.S. 740, 747
(1998), and Coffman v. Breeze Corp.,
323 U.S. 316, 324 (1945),
which had determined Article III jurisdiction to be lacking over
claims seeking declaratory judgments as to the validity of
potential defenses to claims, where neither the underlying claim
nor the putative defense had been asserted. Foss contends that
those cases are distinguishable because she is seeking a
declaratory judgment about the validity of a defense to a
copyright-infringement claim that she contends she did bring in
her complaint against the Charter Defendants. Foss then contends
that there is Article III jurisdiction here as to her
declaratory-judgment claim under MedImmune, Inc. v. Genentech,
Inc., in which the Supreme Court of the United States held that
Article III permitted entertaining a declaratory judgment action
regarding an affirmative defense to a claim where "the plaintiff's
self-avoidance of imminent injury is coerced by threatened
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enforcement action of" the defendant in the declaratory-judgment
action. 549 U.S. 118, 130 (2007).
But, even accepting Foss's argument that she has
adequately pleaded a claim of copyright infringement against the
Charter Defendants,5 it remains the case that, as MedImmune makes
clear, "a litigant may not use a declaratory-judgment action to
obtain piecemeal adjudication of defenses that would not finally
and conclusively resolve the underlying controversy." Id. at 127
n.7. And Foss is using the claim for declaratory relief in just
that impermissible fashion, as the relief she seeks, even if
granted, would at most preclude the Charter Defendants from
asserting one possible defense against her claim; it "would not
finally and conclusively resolve the underlying controversy"
between Foss and the Charter Defendants.
Id. We therefore affirm
the District Court's dismissal of this claim for lack of Article
III jurisdiction.
The District Court appeared also to dismiss Foss's claim
against the Charter Defendants on the independent merits-based
ground that Foss failed to state a claim on which relief may be
While Charter did contest on the merits whether Foss should
5
get her requested declaratory judgment regarding Charter's
entitlement to the DMCA safe-harbor defense, Charter has never
purported to actually raise the defense as a defense to copyright
infringement in this litigation. In fact, Charter states that "if
Foss had sued Charter for copyright infringement . . . Charter
would not have raised a DMCA safe harbor defense."
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granted. See Foss III, 2023 WL 2505115, at *2. But, in light of
our ruling that "Article III precludes this [claim] from going
forward . . . [w]e thus must vacate the District Court's
merits-based" alternative basis for dismissing Foss's declaratory
judgment claim because the District Court did not have jurisdiction
to reach the merits. Project Veritas Action Fund v. Rollins,
982
F.3d 813, 842–43 (1st Cir. 2020).
IV.
There is one loose end: The Charter Defendants moved for
a sanctions award against Foss's attorneys Andrew Grimm and Gregory
Keenan6 pursuant to Federal Rule of Appellate Procedure 38, First
Circuit Rule 38.0, and 28 U.S.C. § 1927. The Charter Defendants
argue that sanctions are appropriate because Foss's appeal from
the District Court's dismissal of her claim against them is
frivolous. See Efron v. UBS Fin. Servs. Inc. of P.R. (In re
Efron),
746 F.3d 30, 37 (1st Cir. 2014) ("An appeal is frivolous
if the arguments in support of it are wholly insubstantial and the
outcome is obvious from the start."). Foss's attorneys argue that,
in light of MedImmune, their position regarding jurisdiction,
which we have just rejected, is not frivolous.
6 Charter withdrew its request for sanctions against another
of Foss's attorneys, Stephen Gordon, after accepting Foss's
attorneys' representation that Gordon played no role in this
appeal.
- 23 -
We have repeatedly emphasized that sanctions should not
be lightly awarded on the ground that an incorrect argument was
frivolous. "Frivolous[ness]," we have explained "is not
synonymous with" weakness. Id. at 38. "An appeal can be weak,
indeed almost hopeless, without being frivolous."
Id. (cleaned
up) (quoting Lallemand v. Univ. of R.I.,
9 F.3d 214, 217–18 (1st
Cir. 1993)); see also AngioDynamics, Inc. v. Biolitec AG,
880 F.3d
600, 601 (1st Cir. 2018). Instead, we have imposed sanctions
"where, in short, there simply was no legitimate basis for pursuing
[the] appeal." Ramírez v. Debs-Elías,
407 F.3d 444, 450 (1st Cir.
2005) (quoting Kowalski v. Gagne,
914 F.2d 299, 309 (1st Cir.
1990)).
Here, as Foss's counsel pointed out at oral argument,
Foss did not appeal only from the District Court's
jurisdiction-based dismissal. Foss also appealed to challenge or
vacate the District Court's alternative merits ruling dismissing
the declaratory judgment claim. Because we agree that this aspect
of the District Court's ruling on the declaratory judgment claim
must be vacated, there was at least one "legitimate basis for
[Foss's] pursuing an appeal." Id. And the Charter Defendants
make no argument that, even if that were so, sanctions are
appropriate nonetheless. We therefore deny Charter's motion for
sanctions.
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V.
Accordingly, we affirm the District Court's dismissal of
Foss's claim against Charter for lack of Article III jurisdiction,
and we otherwise vacate the appealed-from rulings of the District
Court and remand for further proceedings consistent with this
opinion.
The parties shall bear their own costs.
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