Reiner v. Canale, 2018 U.S. Dist. LEXIS 42301 (E.D. Mich. Mar. 15, 2018):

Plaintiff TC Reiner first brought this copyright suit, alleging both infringement and wrongful removal of copyright information, against Saginaw Valley State University ("SVSU"), the Saginaw Valley State University Board of Control ("SVSU Board"), a former SVSU student, and an initially unnamed SVSU professor. The first three of those defendants have since been dismissed, and the professor has since been identified as Defendant Thomas Canale ("Defendant").

Now before the Court is Defendant Canale's Motion for Judgment on the Pleadings. Defendant advances two potential grounds for dismissal of this action: (1) untimeliness, because he was not named as a defendant until after the limitations period had expired, and the amended pleading adding him as a party does not relate back to the date of the earlier complaint; and (2) immunity, on [*2]  the assertion that Defendant has qualified immunity in his individual capacity, and Eleventh Amendment immunity in his official capacity. Both arguments have merit, and the Court will therefore grant Defendant's Motion for Judgment on the Pleadings.

I. Background

A. Factual Allegations

Plaintiff is a professional fashion and fine-art photographer. (ECF No. 32, 2d Am. Compl. ¶ 3.) He is the creator of the work at issue in this lawsuit (the "Work"): a photograph of a seated woman entitled Nikki. (2d Am. Compl. ¶ 11; Ex. 1, Photograph entitled "Nikki".) He also owns a copyright in the Work, which was registered in 2004. (2d Am. Compl. ¶ 12-13; Ex. 2, Copyright Catalog Entry.)

Defendant is a Professor of Art at SVSU, and held that position during all times relevant to this lawsuit. (2d Am. Compl. ¶ 4; ECF No. 39, Answer ¶ 4.)

On or around April 28, 2014, Plaintiff learned that the Work had been included in materials distributed by SVSU to its students. (Am. Compl. ¶ 15.) Plaintiff alleges that Defendant copied and distributed the Work to his students, and alleges on information and belief that at least one student used the Work in designing an advertisement for a domestic violence shelter as part of a class [*3]  assignment.¹ (2d Am. Compl. ¶¶ 5, 16; Ex. 3, Advertisement.) Plaintiff further alleges that Defendant encourages students to use works created in class or for class assignments as a way of promoting themselves to potential employers, and that at least the one student (but possibly others) included the work along among materials provided to potential employers. (2d Am. Compl. ¶¶ 6, 18.)

Defendant did not have or obtain a license or permission to use the Work. (2d Am. Compl. ¶ 20.) At no point were students advised to seek permission from Plaintiff to use the Work, and the Work as provided to students did not contain copyright information. (2d Am. Compl. ¶¶ 19, 26.) While SVSU maintains policies regarding the use of copyrighted material, Plaintiff alleges, those policies do not require strict adherence, nor do they require instructors to educate their students on either the copyright policies themselves or on applicable copyright laws and regulations. (2d Am. Compl. ¶ 21; Ex. 4, Copyright Policy.)

In a letter dated August 18, 2015, Plaintiff (through an attorney) notified SVSU that its use of the Work violated federal copyright law, and demanded that SVSU cease and desist from further [*4]  use of the Work. SVSU denied violating any copyright law. (Am. Compl. ¶¶ 22-23.)

Plaintiff alleges that "[b]y failing to obtain a license for the Work or other works² by [Plaintiff] and allowing students access to and use of [such works], both inside and outside of the school setting, Defendant has profited from the name, reputation and signature image of [Plaintiff]." (2d Am. Compl. ¶ 27.) Plaintiff alleges that he "has sustained and will continue to sustain substantial injury, loss and damage to his ownership rights in The Work." (2d Am. Compl. ¶ 28.)

B. Relevant Procedural History

Plaintiff first filed suit on May 16, 2016 against SVSU and the SVSU Board of Control ("SVSU Board") only. (ECF No. 1, Compl.) The original Complaint asserted two claims for copyright infringement under the Copyright Act, 17 U.S.C. §§ 106 and 501. (Id. ¶¶ 27-42.)

The following November, Magistrate Judge Patricia T. Morris granted Plaintiff leave to amend his complaint, and Plaintiff added two defendants to the action: the student whom Plaintiff alleges used the Work in a class assignment, and the professor who taught the class. (ECF No. 16, Am. Compl.) In the Amended Complaint, the professor—now identified as Defendant Canale—was [*5]  referred to as "Jane Doe." (Am. Compl. at 2, Pg ID 193.)

A few days after Plaintiff filed his Amended Complaint, SVSU and SVSU Board moved to dismiss the Amended Complaint (to the extent that it asserted claims against SVSU and the SVSU Board) on Eleventh Amendment grounds. The parties fully briefed that motion.³ (ECF Nos. 17, 19, 20.) At the May 19, 2017 hearing on the Motion, however, the parties agreed on the record that SVSU and SVSU Board should be dismissed as Defendants, and the Court entered an Order dismissing SVSU and SVSU Board from the action the same day. (ECF No. 29.)

On July 7, 2017, Plaintiff filed his Second Amended Complaint, which is pled against Defendant Canale only, and which is now the operative complaint in this case. (ECF No. 32, 2d Am. Compl.) The Second Amended Complaint asserts two claims: one claim of copyright infringement under the Copyright Act, 17 U.S.C. §§ 106 and 501 (Count I); and one claim of wrongful removal of copyright information under the Digital Millennium Copyright Act, 17 U.S.C. § 1202 (Count II). (2d Am. Compl. ¶¶ 29-44.) Four days later, Plaintiff stipulated to dismiss the student defendant, leaving Canale as the sole defendant in the action. (ECF No. 34.)

On September 15, 2017, Defendant [*6]  filed the instant Motion for Judgment on the Pleadings. (ECF No. 40, Pl.'s Mot.) Plaintiff did not file a timely response, and sought the Court's leave on October 27 to file a late response. (ECF No. 43.) The Court granted Plaintiff leave to file a late response (ECF No. 47), which Plaintiff did on November 7 (ECF No. 48, Pl.'s Resp.). Defendant filed a Reply the following day. (ECF No. 49, Def.'s Reply.)

The Court conducted a hearing on Defendant's Motion for Judgment on the Pleadings on Wednesday, November 22, 2017, and now issues the following ruling.

II. Standard of Review

"Motions for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c) are analyzed under the same de novo standard as motions to dismiss pursuant to Rule 12(b)(6)." Sensations, Inc. v. City of Grand Rapids, 526 F.3d 291, 295 (6th Cir. 2008) (citing Penny/Ohlmann/Nieman, Inc. v. Miami Valley Pension Corp., 399 F.3d 692, 697 (6th Cir. 2005)). "[T]he legal standards for adjudicating Rule 12(b)(6) and Rule 12(c) motions are the same . . . ." Lindsay v. Yates, 498 F.3d 434, 437 n.5 (6th Cir. 2007).

Thus, Rule 12(c), like Rule 12(b)(6), allows for the dismissal of a case where the complaint fails to state a claim upon which relief can be granted. When reviewing a motion to dismiss under Rule 12(b)(6), a court must "construe the complaint in the light most favorable to the plaintiff, accept its allegations as true, and draw all reasonable inferences in favor of the plaintiff." Handy-Clay v. City of Memphis, 695 F.3d 531, 538 (6th Cir. 2012).

To state a claim, a complaint must provide a "short [*7]  and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a)(2). "[T]he complaint 'does not need detailed factual allegations' but should identify 'more than labels and conclusions.'" Casias v. Wal—Mart Stores, Inc., 695 F.3d 428, 435 (6th Cir. 2012) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)). The court "need not accept as true a legal conclusion couched as a factual allegation, or an unwarranted factual inference." Handy-Clay, 695 F.3d at 539 (internal citations and quotation marks omitted).

In other words, a plaintiff must provide more than "formulaic recitation of the elements of a cause of action" and his or her "[f]actual allegations must be enough to raise a right to relief above the speculative level." Twombly, 550 U.S. at 555-56. To survive a Rule 12(c) motion for judgment on the pleadings or a Rule 12(b)(6) motion to dismiss for failure to state a claim, "a litigant must allege enough facts to make it plausible that the defendant bears legal liability. The facts cannot make it merely possible that the defendant is liable; they must make it plausible." Agema v. City of Allegan, 826 F.3d 326, 331 (6th Cir. 2016) (citing Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).

"If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56." Fed. R. Civ. P. 12(d); see also Rondigo, L.L.C. v. Twp. of Richmond, 641 F.3d 673, 680 (6th Cir. 2011) ("Assessment of the facial sufficiency of the complaint must ordinarily be [*8]  undertaken without resort to matters outside the pleadings."). Courts have carved out a narrow exception to this rule, however: a district court ruling on a Rule 12(b)(6) motion "may consider the Complaint and any exhibits attached thereto, public records, items appearing in the record of the case and exhibits attached to defendant's motion to dismiss so long as they are referred to in the Complaint and are central to the claims contained therein." Bassett v. Nat'l Collegiate Athletic Ass'n, 528 F.3d 426, 430 (6th Cir. 2008) (quoting Amini v. Oberlin Coll., 259 F.3d 493, 502 (6th Cir. 2001)).

III. Discussion

Defendant advances two lines of argument in his Motion for Judgment on the Pleadings. First, he argues that Plaintiff's claims are time-barred, since amended pleadings naming previously unnamed defendants (commonly known as "Doe defendants") do not relate back to the date of the original pleading under Federal Rule of Civil Procedure 15(c), and Defendant Canale was not named as a party to this action until after the applicable three-year limitations period expired. Second, Defendant argues in the alternative that he is entitled to qualified immunity insofar as he is being sued in his individual capacity, and Eleventh Amendment immunity insofar as he is being sued as a state employee.⁴

As discussed in detail below, Plaintiff's claims are indeed time-barred under the governing statute [*9]  of limitations. Even if they were not, Defendant would be entitled to both forms of immunity that he invokes. Accordingly, the Court will grant Defendant's Motion for Judgment on the Pleadings.

A. Plaintiff's claims are time-barred.

As a threshold matter, Defendant argues that this action is barred by the three-year limitations period that applies to both of Plaintiff's claims.

Both claims arise under Title 17 of the United States Code: his copyright infringement claim is asserted under 17 U.S.C. §§ 106 and 501, and his wrongful removal of copyright information claim is asserted under 17 U.S.C. § 1202. Civil actions that arise under Title 17, which governs copyrights generally, are subject to a three-year statute of limitations. See 17 U.S.C. § 507(b) (providing that "[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued"). "A copyright-infringement claim accrues when a plaintiff knows of the potential violation or is chargeable with such knowledge." Gomba Music Inc. v. Avant, 225 F. Supp. 3d 627, 640 (E.D. Mich. 2016) (internal quotation marks omitted) (quoting Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir. 2007)).

It was in the Second Amended Complaint that Plaintiff named Canale as the defendant who had been previously identified as "Jane Doe" in the initial pleadings. The [*10]  Second Amended Complaint was filed on July 7, 2017—more than three years after Plaintiff alleges he became aware of the alleged copyright violations on April 28, 2014. (See 2d Am. Compl. ¶ 15.) There is no apparent dispute that for this reason, the Second Amended Complaint must relate back to the date of an earlier pleading that was filed within 17 U.S.C. § 507(b)'s limitations period for the claims against Defendant Canale to be timely. And although there is some conflicting case law in the Sixth Circuit on this issue, the clear weight of authority compels the conclusion that the Second Amended Complaint does not relate back in this way.

Amendment of pleadings in federal civil actions is governed by Federal Rule of Civil Procedure 15. Rule 15(c)(1) provides for three ways in which an amended pleading may relate back:

An amendment to a pleading relates back to the date of the original pleading when:

(A) the law that provides the applicable statute of limitations allows relation back;

(B) the amendment asserts a claim or defense that arose out of the conduct, transaction, or occurrence set out--or attempted to be set out--in the original pleading; or

(C) the amendment changes the party or the naming of the party against whom a claim is asserted, if Rule 15(c)(1)(B) is [*11]  satisfied and if, within the period provided by Rule 4(m) for serving the summons and complaint,⁵ the party to be brought in by amendment:

(i) received such notice of the action that it will not be prejudiced in defending on the merits; and

(ii) knew or should have known that the action would have been brought against it, but for a mistake concerning the proper party's identity.

Fed. R. Civ. P. 15(c)(1).

The statute of limitations in this case, see 17 U.S.C. § 507(b), has no relation-back provision, so Rule 15(c)(1)(A) is of no help to Plaintiff. Additionally, Sixth Circuit precedent is clear that "Rule 15(c)(1)(B) allows relation back of an amendment asserting a 'claim or defense,' but it does not authorize the relation back of an amendment adding a new party." Asher v. Unarco Material Handling, Inc., 596 F.3d 313, 318 (6th Cir. 2010) (emphasis in original) (internal quotation marks omitted) (quoting In re Kent Holland Die Casting & Plating, Inc., 928 F.2d 1448, 1449 (6th Cir. 1991)). The Court finds (and the parties agree) that the only relevant subprovision here is Rule 15(c)(1)(C), which governs amendments that "change[] the party or the naming of the party against whom a claim is asserted."

Rule 15(c)(1)(C) has one prerequisite: it only applies if "Rule 15(c)(1)(B) is satisfied." Thus, an amendment changing a party or a party's name will only relate back under Rule 15(c)(1)(C) if the allegations in the amended pleading arise from the same "conduct, transaction, or occurrence set out--or [*12]  attempted to be set out--in the original pleading." Fed. R. Civ. P. 15(c)(1)(B). This requirement is met here because the claims in the Second Amended Complaint are based on the same factual allegations as were set forth in the earlier versions of the complaint. See Norfolk Cty. Ret. Sys. v. Cmty. Health Sys., Inc., 877 F.3d 687, 694 (6th Cir. 2017) ("As interpreted by our court, [Rule 15(c)(1)(B)'s] standard is met if the original and amended complaints allege the same 'general conduct' and 'general wrong.'") (quoting Durand v. Hanover Ins. Grp., Inc., 806 F.3d 367, 374 (6th Cir. 2015)).

To survive judgment on the pleadings on the basis of Rule 15(c)(1)(C), then, Plaintiff must overcome two obstacles imposed by that Rule. He must satisfy the "notice" prong of Rule 15(c)(1)(C)(i) by showing that Defendant received notice within 90 days of the filing of the original complaint, such that Defendant will not be prejudiced in defending the action. He must also satisfy the "mistaken identity" prong in Rule 15(c)(1)(C)(ii) by showing that Defendant "knew or should have known that the action would have been brought against [him], but for a mistake concerning the proper party's identity." As described below, there is a split within the Sixth Circuit regarding the mistaken identity prong, but the weight of authority strongly favors the proposition that the naming of Doe defendants in a complaint is not a "mistake concerning the proper party's [*13]  identity" under Rule 15(c)(1)(C)(ii).

The split is based on two Sixth Circuit cases decided a decade apart. Berndt v. State of Tennessee, 796 F.2d 879 (6th Cir. 1986), involved a pro se civil rights action seeking damages for injuries incurred by the plaintiff while in the custody of a state mental health institution. In Berndt, the Sixth Circuit upheld the district court's determination that the two named defendants in the action—the institution and the state of Tennessee itself—were immune from suit on Eleventh Amendment grounds. See id. at 881-82. At the same time, the court found that the complaint also alleged illegal conduct by the institution's employees without identifying them by name. Noting that the Eleventh Amendment did not bar the action against those employees in their individual capacities, and highlighting the plaintiff's pro se status as well as the gravity of the allegations, the court remanded the case to the district court to allow the plaintiff to amend his complaint by naming the staff members as defendants. See id. at 882-83. The Sixth Circuit acknowledged that any such amendments would likely be outside of the statute of limitations, and set forth guidance for the district court's determination on whether an amendment would relate back under Rule 15(c).⁶See id. at 883-84. The court explained that constructive rather than [*14]  actual notice to the new defendants would be sufficient to satisfy the notice prong of Rule 15(c), and that the new defendants' status as officials of the original defendants could itself be enough to impute notice to them; as to the mistaken identity prong, the court merely stated that it was "a patently factual inquiry . . . left to the district court." Id. The court then closed by cautioning that while these principles "are appropriate considerations for the district court, they are only guides." Id. at 884. In short, the Berndt court did not analyze the mistaken identity prong of Rule 15(c)(1)(C)(ii), but it did make clear that naming Doe defendants after the expiration of the applicable limitations period could satisfy it.

Ten years later, in Cox v. Treadway, 75 F.3d 230 (6th Cir. 1996), the Sixth Circuit ruled on an excessive-force action brought under 42 U.S.C. § 1983, in which the plaintiff had included four "unnamed police officers" among the defendants in his original complaint, and subsequently named them after the statute of limitations had run. See id. at 239-40. The court concluded that the amended complaint did not relate back, explaining that

[t]he naming of "unknown police officers" in the original complaint does not save the pleading. Substituting a named defendant for [*15]  a "John Doe" defendant is considered a change in parties, not a mere substitution of parties. Therefore, the requirements of Fed.R.Civ.P. 15(c) must be met in order for the amendment adding the named defendant to relate back to the filing of the original complaint.

Cox, 75 F.3d at 240. The requirements of Rule 15(c) were not met in the case at bar, the court then reasoned, because "Sixth Circuit precedent clearly holds that new parties may not be added after the statute of limitations has run, and that such amendments do not satisfy the 'mistaken identity' requirement of [Rule 15(c)]." Id. (citing In re Kent Holland Die Casting & Plating, Inc., 928 F.2d 1448, 1449-50 (6th Cir. 1991) and Marlowe v. Fisher Body, 489 F.2d 1057, 1064 (6th Cir. 1973)). Finally, the Cox court held that the plaintiffs "cannot benefit from the 'imputed knowledge' doctrine of [Berndt] because the City of Louisville was never named as a defendant in this case. In Berndt, knowledge was imputed to the newly added defendants because they were officials of the originally named defendant, the State of Tennessee." Cox, 75 F.3d at 240.

Thus in Berndt, on the one hand, the Sixth Circuit allowed for the possibility that an amendment naming Doe defendants after the limitations period expires can relate back under Rule 15(c). Then, on the other hand, the Sixth Circuit later held in Cox "that amendments outside the limitations period must meet the requirements [*16]  of [Rule] 15(c), [and] also held that the 'mistaken identity' requirement of the Rule cannot be met where a named party is substituted for an unknown, as opposed to a mistaken, party." Daily v. Monte, 26 F. Supp. 2d 984, 986 (E.D. Mich. 1998). Several district courts over the years have characterized Berndt and Cox as creating a "split in authority regarding the proper interpretation of the Rule." Daily, 26 F. Supp. 2d at 986; see also Clark v. Oakland Cty., No. 08-14824, 2010 WL 2891712, at *8 (E.D. Mich. July 22, 2010) ("This arguable split within the Sixth Circuit is representative of the varying outcomes other circuits have arrived at on the issue of 'John Doe' defendants and Rule 15(c)."); Marksbury v. Elder, No. 5:09-CV-24-REW, 2011 WL 1832883, at *7 n.10 (E.D. Ky. May 12, 2011) (noting that "[s]everal courts have suggested a possible Sixth Circuit split regarding Cox and Rule 15(c)" while characterizing the relevant language in Berndt as dicta).

Daily, one of the district court decisions that recognized the split, concluded two years after Cox was decided that Cox "represent[ed] a departure from previous interpretations of Rule 15(c)," and declined to follow it, allowing an amendment naming Doe defendants to relate back. See Daily, 26 F. Supp. 2d at 985-88. But importantly, the Sixth Circuit has consistently cited Cox in unpublished cases since the very year Cox was decided to hold that naming previously unnamed defendants does not satisfy the mistaken identity [*17]  prong of Rule 15(c)(1)(C)(ii) because a lack of knowledge as to the identity of a defendant does not constitute a "mistake" within the meaning of the Rule. See, e.g., Wiggins v. Kimberly-Clark Corp., 641 F. App'x 545, 549 (6th Cir. 2016) (holding that even if the plaintiff had established that the Doe defendants "'knew or should have known' that he would bring the claims against them, he failed to establish that his lack of knowledge of their identities was due to a 'mistake' as the Rule requires"); Brown v. Cuyahoga Cty., Ohio, 517 F. App'x 431, 433-34 (6th Cir. 2013) (explaining that the Sixth Circuit "previously held [in Cox] that an absence of knowledge is not a mistake, as required by Rule 15(c)(1)(C)(ii)," and further noting that "[t]he Supreme Court recently elucidated the meaning of the word 'mistake' as used in Rule 15, giving the term its plain meaning: '[a]n error, misconception, or misunderstanding; an erroneous belief'") (alteration in original) (quoting Krupski v. Costa Crociere S.p.A., 560 U.S. 538, 548 (2010)); Smith v. City of Akron, 476 F. App'x 67, 69 (6th Cir. 2012) ("The Rule allows relation back for the mistaken identification of defendants, not for defendants to be named later through 'John Doe,' 'Unknown Defendants' or other missing appellations. Our approach is consistent with the holdings of every other circuit on this issue.") (collecting cases); Moore v. Tennessee, 267 F. App'x 450, 455 (6th Cir. 2008) ("[A] plaintiff's lack of knowledge pertaining to an intended defendant's identity does not constitute a 'mistake [*18]  concerning the party's identity' within the meaning of Rule 15(c). Nor are we alone in so holding—our court's precedent comports with no fewer than seven of our sister circuits.") (citation omitted) (collecting cases); Force v. City of Memphis, 101 F.3d 702, at *3 (6th Cir. 1996) (table) ("We have recently held that [the mistaken identity prong] is not satisfied where the caption of an original complaint refers to 'unknown police officers' and, after the expiration of the applicable limitations period, an amended complaint specifically names those officers.") (citing Cox, 75 F.3d at 240).

Courts in this District have relied on these unpublished Sixth Circuit decisions to reach the same outcome. See, e.g., Finnerty v. Wireless Retail, Inc., 624 F. Supp. 2d 642, 654-55 (E.D. Mich. 2009) ("In this court, a plaintiff's lack of knowledge pertaining to an intended defendant's identity does not constitute a "mistake concerning the party's identity" within the meaning of Rule 15(c).") (internal quotation marks omitted) (quoting Moore, 267 F. App'x at 455); Robinson v. Genesee Cty. Sheriff's Dep't, No. 16-CV-13805, 2017 WL 1105060, at *5 (E.D. Mich. Mar. 24, 2017) (citing Cox and Moore for the proposition that "amendments identifying previously unknown police officers do not satisfy the 'mistaken identity' requirement of [Rule 15(c)]"). Both of these district court decisions relied in part on the unpublished Sixth Circuit case Moore v. Tennessee, 267 F. App'x 450 (6th Cir. 2008). Moore was discussed in detail in a 2010 opinion, issued by a coordinate court in [*19]  this District, which articulated a line of reasoning that this Court considers to be especially relevant to this case. See generally Clark v. Oakland Cty., No. 08-14824, 2010 WL 2891712 (E.D. Mich. July 22, 2010). In Clark, the court acknowledged the Berndt/Cox conflict, but ultimately determined that Moore strongly supported the conclusion that naming Doe defendants does not satisfy Rule 15(c)'s mistaken identity prong. In this regard, the court recognized that

Moore, as an unpublished opinion of the Sixth Circuit, is not necessarily binding on this Court. Moore is, however, highly persuasive authority for how the Sixth Circuit would so rule if the issue of "John Doe" defendants and Rule 15(c) relation back were to be reconsidered. At the very least, the Moore panel deemed Cox still deserving of precedential credence. Given Moore's reaffirmation of the continuing viability of Cox's central holding, this Court defers to the sound judgment of the Sixth Circuit in deciding Moore.

Clark, 2010 WL 2891712, at *9.

The court's reasoning in Clark is even more pertinent today, since the Sixth Circuit has rendered three more unpublished decisions in the years since Clark that support the same proposition: Wiggins, Brown, and Smith (all cited supra). Berndt, by contrast, has not had the same viability as Cox, and the Sixth [*20]  Circuit has not cited it in a case that squarely addresses this issue since Moore was decided in 2008.⁷ In the final analysis, the weight of authority clearly favors the proposition, embodied in Cox, Moore, and Clark, that asserting claims against Doe defendants in an initial complaint will not later be found to be a "mistake concerning the proper party's identity" under Rule 15(c)(1)(C)(ii).

In arguing that his addition of Defendant Canale should in fact relate back under Rule 15(c), Plaintiff relies chiefly on Berndt, but for the reasons set forth above, Berndt's precedential value is undermined by Cox and the various cases that have followed it. Plaintiff also cites two other Sixth Circuit cases for the general proposition that "a plaintiff may sue an unnamed 'John Doe' defendant as a placeholder until the plaintiff learns the identity of the 'John Doe' Defendant" (Pl.'s Resp. at 3, Pg ID 707), but both cases are unavailing to him. In Brown v. Owens Corning Inv. Review Comm., 622 F.3d 564 (6th Cir. 2010), the court only mentioned a plaintiff's ability to file suit against "John Doe defendants" in order to establish that a plaintiff need not have actual knowledge of the specific identity of all defendants in an action for the statute of limitations [*21]  to start running. See id. at 572-73. In Hall v. City of Detroit, 2016 U.S. App. LEXIS 21175 (CA 6, 2016), the Sixth Circuit upheld the district court's dismissal of a pro se civil rights action to the extent that it was asserted against a municipal defendant, but reversed the district court's dismissal as to three unnamed police officer defendants. The court in Hall noted that the plaintiff's claims may have been time-barred—and also pointed out that while the plaintiff was entitled to bring suit against Doe defendants, he could not do so in order to circumvent a statute of limitations—but ultimately declined to rule on whether the lawsuit was timely in first instance because the district court had not itself addressed the issue. (Pl.'s Resp. Ex. 3, Hall v. City of Detroit at 2-3, Pg ID 729-30.) Neither of these two cases touches the issue of whether a plaintiff's use of a Doe defendant in a complaint is a "mistake concerning the proper party's identity" under Rule 15(c), so neither is relevant here.

Lastly, the parties argue fairly extensively in their briefs over when exactly Plaintiff became aware that Defendant Canale was the proper defendant in this action. Plaintiff maintains that it was not until "June or July of this year." (Pl.'s Resp. at 3, Pg ID 698.) Defendant counters that Plaintiff had [*22]  notice of the fact as early as June 2014, and attaches as an exhibit to his Reply an email exchange between a representative of Plaintiff's and the former student defendant, in which the former student defendant identified "Tom Canel" as the instructor of the design class in which she allegedly made use of the Work. (See Def.'s Reply at 2-3, Pg ID 743-44; Ex. A, June 2014 Emails.)

This issue is outside the scope of the instant Motion for three distinct reasons. First and most importantly, the email exchange attached as an exhibit to Defendant's Reply is extrinsic to the pleadings, and for that reason this Court cannot consider it without converting the instant Motion for Judgment on the Pleadings to a summary judgment motion. See Fed. R. Civ. P. 12(d) ("If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56. All parties must be given a reasonable opportunity to present all the material that is pertinent to the motion."). Conversion of the instant Motion under Rule 12(d) is unnecessary because, for the reasons that follow, the precise time at which Plaintiff learned of Defendant's identity is not ultimately [*23]  a relevant issue. The Court excludes this evidence accordingly.

Second, the binding precedent and ample persuasive authority discussed supra establishes that regardless of when Plaintiff learned of Defendant Canale's existence, his claims are barred because Defendant Canale was added as a defendant after the statute of limitations had run, and Plaintiff's earlier use of a Doe defendant does not constitute "a mistake concerning the proper party's identity" as required for the amendment to relate back under Rule 15(c).

Finally, the Supreme Court has held that as a general rule, "relation back under Rule 15(c)(1)(C) depends on what the party to be added knew or should have known, not on the amending party's knowledge or its timeliness in seeking to amend the pleading." Krupski v. Costa Crociere S.p.A., 560 U.S. 538, 541 (2010) (emphasis added). Even if Sixth Circuit case law did not foreclose any argument that this matter involves "a mistake concerning the proper party's identity" under Rule 15(c)(1)(C)(ii), the time at which Plaintiff learned of Defendant's identity would be irrelevant for this independent reason.

Although there is arguably conflicting Sixth Circuit case law on the issue of whether an initial lack of knowledge as to the identity of a defendant constitutes a "mistake" under [*24]  Rule 15(c)(1)(c)(ii), the weight of authority clearly favors a finding that it does not. Therefore, Plaintiff's addition of Defendant Canale as a defendant in this action does not relate back to the original pleadings under Rule 15(c), and both of Plaintiff's claims in this action are time-barred.

 

---

¹ That student was originally named as a defendant, as were SVSU and the SVSU Board. (ECF No. 16, Am. Compl.) Plaintiff subsequently agreed to dismiss these three defendants (see ECF Nos. 29, 34), leaving only Defendant Canale in the action.

² The Second Amended Complaint does not specifically allege infringement of any copyrights besides that of the Work, nor does it identify any other work by Plaintiff that Defendant allegedly made unauthorized use of.

³ After the parties had briefed the motion but before a hearing was held, the Court certified to the United States Attorney General that the constitutionality of a federal statute—the Copyright Remedy Clarification Act ("CRCA"), 17 U.S.C. § 511(a)—had been drawn into question, as required by 28 U.S.C. § 2403(a) and Federal Rule of Civil Procedure 5.1(b). (ECF No. 24.) The United States declined to intervene in this matter. (ECF No. 27.)

⁴ Defendant also contends that Plaintiff has not pled a continuing violation of law as is required to justify injunctive relief, but Plaintiff clarifies in his Response that he is "no longer pursuing his claim for injunctive relief." (Pl.'s Resp. at Pg ID 703.)

^{5 Federal Rule of Civil Procedure 4(m)} relevantly provides that "[i]f a defendant is not served within 90 days after the complaint is filed, the court--on motion or on its own after notice to the plaintiff--must dismiss the action without prejudice against that defendant or order that service be made within a specified time."

⁶ The earlier version of Rule 15(c) analyzed by the Berndt court was essentially identical to the version that is in effect today. The only substantial difference is that under the old Rule 15(c), the new party must have had notice of the action within the limitations period that governed the action, rather than within the 90-day period set forth in Federal Rule of Civil Procedure 4(m), as Rule 15(c) now requires. See Berndt, 796 F.2d at 883.

⁷ In fact, this Court is aware of only one (unpublished) Sixth Circuit decision in the last 20 years that seems to directly adopt Berndt's interpretation of Rule 15(c) by reversing a district court's denial of a plaintiff's attempt to amend a complaint outside the statute of limitations, based on the possibility that the plaintiff's naming a Doe defendant in the original complaint may have constituted a "mistake concerning the proper party's identity." See Friedmann v. Campbell, 202 F.3d 268 (6th Cir. 1999) (unpublished) (reversing the district court's denial of a pro se plaintiff's request to amend his complaint to specifically name a Doe defendant because the limitations period had run, and directing the district court to consider on remand whether the new defendant had constructive notice under Berndt without analyzing the issue of mistaken identity). Insofar as Friedmann falls on the Berndt side of the intra-circuit conflict, it is strongly outweighed by the numerous and more recent Sixth Circuit and district court decisions discussed above, all of which have cited Cox for the proposition that the naming of Doe defendants is not a "mistake concerning the proper party's identity" under Fed. R. Civ. P. 15(c)(1)(C)(ii).

***