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

(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.

- 2 - 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),

(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."

And, the complaint alleged,

"[i]n November 2017, she sent a letter to Marvic demanding payment

for lost wages and copyright infringement."

Marvic did not,

according to the complaint, accede to this demand. See

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."

. In the amended complaint, Foss also added five state-law

claims against Marvic alone. See

On September 11, 2018, Marvic filed a motion in Action

1 to dismiss the copyright-infringement claim and the state law

- 3 - breach-of-contract claim.

The district court granted the

motion on October 3, 2018, after Foss did not oppose the motion.

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.

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.

Foss retained counsel, who entered an appearance on her behalf

on February 22, 2019.

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,

(2019), which construed

(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."

.

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),

(D. Mass. 2019). The

- 4 - district court also allowed Foss's breach-of-contract claim to

proceed. See

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,

.1 The district court denied Foss's

motion to reconsider its decision to deem these statements

admitted. See

. Relying in part on those statements,

the district court granted Marvic's motion for summary judgment on

the pendent state-law claims. See

.

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

. We affirmed across the board.

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

. 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.

- 5 - to register before filing suit "could be and later was cured."

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."

. 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.

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.

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."

(1st Cir. 2020); see also Foss II,

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

- 6 - 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

.

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

- 7 - 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,

, 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,

, 215 n.3 (2021) (citations omitted) (quoting Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc.,

, (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.

- 8 - 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."

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,

(1st Cir. 1998) (quoting Gonzalez

v. Banco Cent. Corp.,

(1st Cir. 1994)); see also

Blonder-Tongue Lab'ys, Inc. v. Univ. of Ill. Found.,

,

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

- 9 - 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,

. 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."

(1st Cir. 2023) (cleaned up)

- 10 - (citing Costello v. United States,

, 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,

, at *2 (citing Foss II,

).

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

- 11 - in that action "with prejudice," that dismissal was a "final

judgment on the merits," Mass. Sch. of L. at Andover,

, 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,

(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.,

(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.

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,

.

We, in turn, affirmed the district court's decision in Action 1 to

- 12 - 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,

. 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,

& 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,

. 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

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.

- 13 - 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.),

, 62 n.8 (1st Cir. 2007).

Pisnoy cited approvingly to Stebbins v. Nationwide

Mutual Insurance,

(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,

("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,

- 14 - 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,

. 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.").

- 15 - despite the operation of the alternative-determinations doctrine.

(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,

, 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

- 16 - 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.),

, 1519 (10th Cir. 1990)

(citing Restatement § 20 cmt. n).

- 17 - 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

- 18 - 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

- 19 - 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,

, 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,

. 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,

, at

- 20 - *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.,

(1st Cir. 2023)

(quoting Hochendoner v. Genzyme Corp.,

(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,

(1998), and Coffman v. Breeze Corp.,

(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

- 21 - enforcement action of" the defendant in the declaratory-judgment

action.

(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."

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.

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."

- 22 - granted. See Foss III,

, 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,

, 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

. 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),

(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.

. "An appeal can be weak,

indeed almost hopeless, without being frivolous."

(cleaned

up) (quoting Lallemand v. Univ. of R.I.,

, 217–18 (1st

Cir. 1993)); see also AngioDynamics, Inc. v. Biolitec AG,

(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,

(1st Cir.

2005) (quoting Kowalski v. Gagne,

(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."

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.

- 24 - 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.

- 25 -