UAB "Planner5D" v. Facebook, Inc.

          ORDER GRANTING MOTIONS TO DISMISS WITH LEAVE TO AMEND RE: DKT. NOS. 31, 33

          William H. Orrick United States District Judge

         INTRODUCTION

         UAB Planner 5D (“Planner 5D”) brings copyright infringement and trade secret misappropriations claims against Facebook, Inc., Facebook Technologies, LLC (collectively “Facebook”), and The Trustees of Princeton University (“Princeton”). Complaint (“Compl.”) [Dkt. No. 1]. Planner 5D operates a home design website that allows users to create virtual interior design scenes using a library of virtual objects (such as tables, chairs, and sofas) to populate the scenes. It claims that it owns copyrights in these three-dimensional objects and scenes, and in the compilation of objects and scenes, as well as trade secrets in the underlying data files of these objects and scenes.

         Princeton and Facebook move to dismiss for failure to state a claim, and I will GRANT their motions. Planner 5D does not sufficiently allege a copyright infringement claim because it does not allege: (i) that it has met the threshold registration requirement of 17 U.S.C. § 411(a) or that it is exempt from that requirement as a non-United States work; (ii) the originality or creativity of the objects, scenes, and compilations of objects and scenes; and (iii) that copyrightable elements were copied. Planner 5D also fails to sufficiently allege a trade secret misappropriation claim because it does not explain: (i) how the structure of its website and the Terms of Services maintained secrecy of the underlying data files of the objects and scenes; and (ii) what improper means Princeton and Facebook took to obtain these files. Planner 5D may have leave to amend to address these deficiencies.

         BACKGROUND

         I. FACTUAL BACKGROUND

         A. Planner 5D's Home Design Website

         In 2011, Planner 5D created a website that it describes as a “user-friendly home design tool that allowed anyone to quickly and easily create their own home, office or landscape designs.” Compl. ¶ 27. Planner 5D offers its users access to a digital library of thousands of household objects, including “structural features, ” “furniture, ” “bathroom appurtenances, ” “electrical appliances, ” and “exterior features.” Id. Users can create unique designs by “simply dragging any of these objects onto or around a chosen floor plan.” Id. Once added to a design, these objects can be “easily moved, rotated, tilted, re-sized, or otherwise manipulated to create the desired design.” Id. Users can also “easily toggle between two- and three-dimensional renderings of the design, ” and can rotate and tilt three-dimensional renderings “to any desired perspective.” Id. Planner 5D claims that it currently has over 40 million users worldwide and that it owns “a collection of over a million hand-crafted, digitized, and realistic three-dimensional objects and scenes, depicting a wide variety of household and office designs.” Id. ¶¶ 5, 28.

         1. Alleged Copyright in Objects and Compilation of Objects

         Planner 5D alleges that it created the “library of realistic, digitized objects over a span of more than seven years, at the cost of millions of dollars.” Compl. ¶ 29. The library consists of over 4, 500 objects. Id. Planner 5D contends that it holds copyright in “[e]ach object individually, and the compilation of objects together, ” as well as in “the data files underlying each object, and in the compilation of individual data files.” Id. All of these works were allegedly “authored in Europe or Russia, ” and “neither Planner 5D nor any individual object modelers are nationals, domiciliaries, or habitual residents of the U.S., or legal entities with headquarters in the U.S.” Id.

         2. Alleged Copyright in Scenes and Compilation of Scenes

         Planner 5D also alleges that it owns copyright in the “compilation of design scenes made from arrangements of these individual objects.” Compl. ¶ 30. These “scenes” consist of “floor plans created within the Planner 5D application using Planner 5D's objects.” Id. Planner 5D contends that each scene in its collection “was individually created by a human designer, ” and the compilation of scenes now includes over 1, 000, 000 scenes. Id. All of these works were allegedly “authored in Europe by Planner 5D, ” which is a “Lithuanian corporation not headquartered in the U.S.” Id.

         3. Alleged Trade Secret in Underlying Data Files

         In addition to the copyrights Planner 5D claims it owns in the objects and scenes, it also claims that the vast collection of underlying data files of these objects and scenes are confidential and proprietary trade secrets of the company. Compl. ¶ 33. These trade secrets and Planner 5D's copyrights “are the company's core assets.” Id.

         4. Access to Planner 5D's Objects and Scenes

         Planner 5D claims that third parties can only access its objects and scenes “using Planner 5D's proprietary software” by navigating to the company's website, found at https://planner5d.com/. Compl. ¶ 31.^[1] It contends in Paragraph 32 of the Complaint that its “terms of services and the structures of [its] website prohibit users from directly accessing, downloading, or otherwise using the data files defining Planner 5D's objects and scenes.” Id. ¶ 32. It further asserts that users “may never . . . access, use, or download the underlying data files, ” and may never “make their own copies of the three-dimensional renderings of these files, [and] not use the renderings other than while on Planner 5D's website designing floor plans.” Id. Paragraph 32 is the only paragraph in the Complaint that mentions the “structure” of Planner 5D's website. The Complaint does not allege how the “structure” of its website prevents users from accessing its objects and scenes and/or its underlying data files.

         Planner 5D's Terms of Service prohibit use of any “‘page-scrape,' ‘robot,' ‘spider[, ]' or other automatic device, program, algorithm or methodology which perform[s] similar functions[, ] to access, acquire, copy, or monitor any portion of the Planner 5D project.” Compl. ¶ 45. The Terms also prohibit “download[ing] (other than page caching) any portion of the Planner 5D project, the Materials or any information contained therein or use [of] the Planner 5D project or the Materials other than for their intended purposes.” Id.^[2]

         5. Planner 5D Evolves Into Artificial Intelligence and Scene Recognition

         Planner 5D alleges that since its founding in 2011, the company's core business objective evolved from providing home design tools “to becoming the leader and innovator in computer scene recognition.” Compl. ¶ 34. Scene-recognition technology is the ability of machines to recognize three-dimensional scenes. Id. ¶ 1. It has been estimated that the computer vision market will reach $48 billion by 2023, and $60 billion by 2025. Id.

         There is a major roadblock in developing this technology - finding enough data. Id. ¶¶ 2, 37. Teaching machines to recognize three-dimensional settings requires “feeding them large volumes of realistic, digitized renderings of such places-digitalized doors, walls, furniture, and the like, arranged into plausible interiors and rendered in three dimensions.” Id. Planner 5D claims that creating lifelike digital scenes is “extremely time- and labor-intensive, ” and that to create truly “realistic” scenes, “human designers must arrange the objects in real-life configurations.” Id. “Large collections of these kinds of three-dimensional settings are thus exceedingly rare.” Id.

         Planner 5D cites a presentation by a senior Princeton computer scientist who stated that “data” is the main roadblock for 3D scene understanding and research. Id. ¶ 4. Accordingly, Planner 5D argues that its vast collection of objects and scenes, estimated at over a million, have become more valuable over time as “no other collection in the world numbers even in the tens of thousands.” Id. ¶ 5. It maintains that over the past several years it has “invested significantly in developing algorithms that capitalize on [its] catalog of three-dimensional files to achieve market-leading 3D recognition.” Id. ¶ 35.

         B. Princeton Downloads Planner 5D's Data to Create the SUNCG Dataset

         Planner 5D alleges that computer scientists at Princeton “were eager to use this uniquely large, uniquely realistic collection of data, ” and “decided to download the entirety of Planner 5D's data collection.” Compl. ¶ 6. It claims that its data is especially desirable given that its objects and scenes are designed by humans, making it more likely to be “realistic, ” a feature vital for accurate scene-recognition technology. Id. ¶ 39.

         The method by which Princeton allegedly downloaded Planner 5D's data is contested. Planner 5D claims that Princeton “created computer code that crawled through thousands or tens of thousands of pages within Planner 5D's servers, progressively cataloging the locations of all available objects and scenes.” Id. ¶¶ 6, 43. Through this method, which Planner 5D characterizes as “scrap[ing]” for data, ” Princeton was able to download over five gigabytes of data, including 2, 644 of Planner 5D's objects and 45, 622 of its scenes. Id. ¶¶ 6, 7, 43. Together, Planner 5D alleges that Princeton scraped each of the over 48, 000 desired files from Planner 5D's servers. Id. ¶ 43.

         Planner 5D claims that Princeton then used this scraped data to bolster its scene-recognition activities. Compl. ¶ 7. Princeton researchers “did not disguise” that the data they used in research was derived from Planner 5D's website. Id. (citing to a research article by Princeton that states “We use a collection of 3D scene models downloaded from the Planner 5D website”). Not only did Princeton use this data for their own research purposes, but Planner 5D also claims that Princeton posted the data to a publicly-accessible Princeton URL and labeled it the “SUNCG dataset.” Id. ¶ 8. It states that more than 99.9% of the files in the SUNCG dataset are identical copies of files from Planner 5D's collection, with only a few that have been slightly altered. Id. ¶ 44. Some of the SUNCG dataset's files “even continue to bear Planner 5D's registered trademark.” Id. Planner 5D claims that these actions by Princeton both violate its Terms of Service and the “structure” of its website. Id. ¶¶ 32, 45.

         C. Facebook Uses the SUNCG Dataset for its SUMO Challenge and Other Object-Recognition Projects

         Planner 5D claims that Facebook was also interested in its objects and scenes collection that would help it tap into the commercial potential of scene recognition technology. Compl. ¶¶ 9, 46. Facebook launched an international scene-recognition competition, called the Scene Understanding and Modelling Challenge (“SUMO Challenge”), which encouraged entrants to submit scene-recognition papers and algorithms for the chance of winning cash prizes and speaking at a “SUMO Challenge conference.” Id. ¶¶ 10, 11, 47. Planner 5D alleges that Facebook facilitated contestants' work by providing them with a copy of the SUNCG dataset, which it published on a URL belonging to Stanford University. Id. ¶¶ 11, 51. It claims that Facebook, aided by others including Stanford and Princeton, made its own copy of the Princeton SUNCG dataset. Id. ¶ 51. Planner 5D believes that “dozens of copies or more of this copy of the SUNCG dataset have been downloaded and used, by an unknown number of users.” Id. Current and former Stanford and Princeton researches have also served as SUMO Challenge organizers, advisors, or program committee members.” Id. ¶ 48. Planner 5D further alleges that both defendants are connected because ...