In Garner v. Higgins, No. 7:14CV461 (W.D.Va. Feb. 11, 2015), found here, Judge Glen Conrad denied a defendant's motion to dismiss or for summary judgment of a copyright claim based on the defense of fair use.

Valerie Garner, the editor and publisher of the Roanoke Free Press, brought a copyright action against Justin Higgins for his posting of her 2008 photo of a Virginia politician, Salam "Sam" Rasoul, on his for-profit political website. Higgins used both a cropped version of the photo with the words "Dirty Money" written across the top as a hyperlink as well as a full-sized copy of the photo to accompany his article on Rasoul.

Higgins moved to dismiss or for summary judgment, claiming that his use of the photo was permissible under the fair use doctrine. Judge Conrad, however, refused to rule on the defense at this early stage of the case. Higgins, he ruled, alleged all the elements of a copyright infringement claim and she need not plead facts to disprove the affirmative defense of fair use. Moreover, fair use is by its nature fact specific and so not suited for a motion to dismiss or for consideration on summary judgment at an early stage of the case.

In particular, the effect of the infringing use on the market or potential market for the photo is "undoubtedly the single most important element of fair use." Higgins and Garner disagreed on this issue, and the Court held that it would be inappropriate to consider summary judgment on fair use until both parties had an opportunity to conduct reasonable discovery.

illustrates the limitations of threshold dispositive motions in IP cases. If the plaintiff alleges ownership of the IP and states the elements of infringement of that IP, it is very difficult for a defendant to obtain dismissal before discovery. Where there is a valid affirmative defense, such as fair use, a defendant may be better served to pursue targeted discovery that can lead to an early dispositive motion rather than to expend resources on a motion to dismiss.

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