Andrew Strauss et al v. David Wills et al

NOTICE OF MOTION AND MOTION to Dismiss Case

C.D. Cal.September 23, 2016

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES Bradley H. Ellis (SBN 110467) bellis@sidley.com Rollin A. Ransom (SBN 196126) rransom@sidley.com Rachael A. Rezabek (SBN 298711) rrezabek@sidley.com SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, California 90013 Telephone: +1 213 896-6000 Facsimile: +1 213 896-6600 Attorneys for David Wills and HarperCollins Publishers L.L.C. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA (WESTERN DIVISION) ANDREW STRAUSS, an individual; STARTHEAR! LLC, a California limited liability corporation, Plaintiffs, vs. DAVID WILLS, an individual; HARPER COLLINS PUBLISHING, an entity of unknown form; and DOES 1-25, inclusive, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 2:16-cv-05103 Complaint Filed: July 12, 2016 DEFENDANTS DAVID WILLS AND HARPERCOLLINS PUBLISHERS L.L.C’S NOTICE OF MOTION AND MOTION TO DISMISS PLAINTIFFS’ COMPLAINT, OR, IN THE ALTERNATIVE, FOR A MORE DEFINITE STATEMENT; MEMORANDUM OF POINTS AND AUTHORITIES [Request for Judicial Notice; Declaration of Rachael A. Rezabek; Notice of Manual Filing or Lodging; and [Proposed] Order filed concurrently] Judge: Hon. Michael W. Fitzgerald Date: November 7, 2016 Time: 10:00 A.M. Location: Courtroom 1600 Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 1 of 19 Page ID #:73 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on November 7, 2016, at 10:00 a.m., or as soon thereafter as this matter may be heard, before the Honorable Michael W. Fitzgerald, in Courtroom 1600 of the United States District Court for the Central District of California, located at 312 N. Spring Street, Los Angeles, California 90012, Defendants David Wills (“Wills”) and HarperCollins Publishers L.L.C, sued erroneously as Harper Collins Publishing, (“HarperCollins,” and together, “Defendants”) will and hereby do move to dismiss the Complaint in this action pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, on the basis that Plaintiffs have inadequately pled their copyright infringement cause of action, and have therefore failed to state a claim upon which relief can granted. In the alternative, Defendants seek a more definite statement pursuant to Rule 12(e), on the grounds that the complaint is so vague that Defendants cannot reasonably prepare a response. This Motion is based on this Notice of Motion and Motion, the Memorandum of Points and Authorities attached hereto, the Request for Judicial Notice, and Declaration of Rachael A. Rezabek submitted concurrently herewith, all pleadings and records on file in this case, and upon such evidence and argument as may be presented at or before the hearing on this Motion. This Motion is made following conference of counsel pursuant to L.R. 7-3 which took place on September 16, 2016. Dated: September 23, 2016 SIDLEY AUSTIN LLP By: /s/ Bradley H. Ellis________________ Bradley H. Ellis Attorneys for Defendants DAVID WILLS and HARPERCOLLINS PUBLISHERS L.L.C. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 2 of 19 Page ID #:74 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i i NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES TABLE OF CONTENTS Page I. INTRODUCTION ........................................................................................... 1 II. DISCUSSION .................................................................................................. 3 A. Plaintiffs Must Plead Sufficient Facts to Show Valid Copyright Ownership ............................................................................................. 3 B. Plaintiffs Have Failed to Plead Facts Sufficient to Show Ownership of a Valid Copyright ..................................................................................... 4 1. Plaintiffs Fail to Allege When the Photo Was First Published or Compliance with Applicable Statutory Formalities ................... 5 2. Plaintiffs Fail to Allege Valid Transfer of Copyright and Chain of Title ............................................................................................. 8 3. Strauss Fails to Even Allege Ownership of the Photo at the Time of Registration ............................................................................... 10 4. There Is Particular Reason to Question the Plausibility of Plaintiffs’ Claim ........................................................................ 10 C. In the Alternative, Defendants Request a More Definite Statement Providing the Missing Details Identified Above ................................ 13 III. CONCLUSION ............................................................................................. 13 Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 3 of 19 Page ID #:75 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES TABLE OF AUTHORITIES Page(s) Cases Allen v. Strikes Unlimited, No. 2:13-cv-0684, 2013 WL 3872948 (E.D. Cal. July 25, 2013) ........................ 3, 4 Ashcroft v. Iqbal, 556 U.S. 662 (2009)........................................................................................... 1, 3, 9 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007)............................................................................................... 3, 9 Crispin v. Christian Audigier, Inc., 839 F. Supp. 2d 1086 (C.D. Cal. 2011) ..................................................................... 8 Golan v. Holder, 132 S. Ct. 873 (2012) ................................................................................................. 6 McHenry v. Renne, 84 F.3d 1172 (9th Cir. 1996) ................................................................................... 13 Navarro v. Block, 250 F.3d 729 (9th Cir. 2001) ..................................................................................... 3 Righthaven LLC v. Democratic Underground, LLC, 791 F. Supp. 2d 968 ................................................................................................... 8 In Re “Santa Barbara Like It Is Today” Copyright Infringement Litigation, 94 F.R.D. 105, 107-08 (D. Nev. 1982) ...................................................................... 4 Statutes and Regulations 17 U.S.C. 304(a) ............................................................................................................. 7 17 U.S.C. § 204(a) .......................................................................................................... 8 37 C.F.R. 202.17(a)(2) (2013) ........................................................................................ 7 37 C.F.R. § 202.2(a)(1) (2016) ....................................................................................... 5 37 C.F.R. § 202.2(b)(1-11) (2012) ................................................................................. 6 Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 4 of 19 Page ID #:76 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ii NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES 1909 Copyright Act .................................................................................................... 5, 6 Fed. R. Civ. Proc. 8(a(2) ................................................................................................. 1 Fed. R. Civ. Proc. 12(e) ............................................................................................ 1, 13 Fed. R. Civ. Proc. 12(b)(6) ............................................................................................. 3 Pub. L. No. 102-307 ........................................................................................................ 7 Other Authorities 3 Nimmer on Copyright § 9.05[A][1] at 9-41-42 .......................................................... 7 3 Nimmer on Copyright § 10.03[A][1][a] at 10:-43 ....................................................... 8 U.S. Copyright Office, Circular 3, Copyright Notice (2013) ......................................... 6 U.S. Copyright Office, Circular 15, Renewal of Copyright (2006) ............................... 6 Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 5 of 19 Page ID #:77 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION Plaintiffs Andrew Strauss (“Strauss”) and StartHear! LLC (“StartHear!” and together, “Plaintiffs”) claim to possess the copyright and exclusive license, respectively, of a photograph of Marilyn Monroe taken by non-party Mischa Pelz in 1953 (the “Photo”). On the basis of these claimed rights, Plaintiffs have brought this action challenging Wills and HarperCollins’ use of the Photo in the photo book entitled “Marilyn Monroe: Metamorphosis” (“Metamorphosis”), asserting a single claim of copyright infringement against Defendants.1 However, the facts and circumstances surrounding the Photo seriously call into question the plausibility of Strauss’ claim that he owns a valid copyright in the Photo. For instance, while Plaintiffs’ Complaint alleges that Strauss registered the copyright of the Photo in 1992 under his own name, Plaintiffs inconsistently allege that a Miller Photos (and not Strauss) owned the copyright to the Photo until 2000. Plaintiffs’ inadequately pled, internally inconsistent and facially deficient Complaint fails to address (much less assuage) these concerns, and should be dismissed. See Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009) (“[W]here the [] facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged-but it has not ‘show[n]’-’that the pleader is entitled to relief.’”) (quoting Fed. R. Civ. Proc. 8(a)(2)) (emphasis added). In the alternative, Defendants seek a more definite statement pursuant to Fed. R. Civ. Proc. 12(e). See Fed. R. Civ. Proc. 12(e) (a motion for a more definite statement is appropriate where a pleading is “so vague or ambiguous that the party cannot reasonably prepare a response”). 1 Defendants reserve all rights to dispute the factual allegations of the Complaint, including without limitation whether the photo attached as Exhibit A to the Complaint is the same photo published in “Metamorphosis.” However, for purposes of motions to dismiss, factual allegations are taken as true. Iqbal, 556 U.S. at 678. Defendants therefore do not concede (and may in fact dispute) the Complaint’s factual allegations, and recite them only for purposes of the Court’s consideration of the Defendants’ Motion to Dismiss. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 6 of 19 Page ID #:78 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES Plaintiffs’ bare bones Complaint fails to plead facts sufficient to establish ownership of a valid copyright in the Photo for several reasons. Specifically, Plaintiffs fail to allege numerous critical facts including: (1) when (and if) the Photo was first published, and whether it was published with notice; (2) whether Strauss complied with applicable statutory renewal requirements; and (3) when (and how) the alleged copyright in the Photo was ultimately transferred to Strauss, and whether it was pursuant to a written instrument-all facts which are necessary to establish Plaintiffs’ unlikely claim that Strauss owns a valid copyright in a sixty-three year old photograph of an iconic public figure taken by someone other than Plaintiffs. Indeed, any number of the omitted facts could well show that the Photo has been irretrievably released into the public domain at some point within the past six decades, or that the copyright has expired, or that there was never a valid transfer of copyright ownership to Strauss-any one of which would be fatal to Plaintiffs’ entire copyright infringement action. Adding to the lack of plausibility based on the inconsistent and conclusory allegations of the Complaint, there is a wealth of publicly available information regarding the Photo which plainly contradicts Plaintiffs’ claim of copyright. This includes without limitation attribution to and/or publication by numerous archives and/or photo collections such as Camerique, Getty, Everett Collection, Rex, and Owens Archive. The Photo is also readily available on the Internet and has been published in several magazines (with and without credit to a purported copyright owner). Moreover, there is ample evidence which may suggest that the Photo is one of a series commissioned by an aluminum lawn furniture company, with rights vested in 20th Century Fox, including a 1953 advertising release and a 1954 advertisement that is similar to the Photo. Considering the age of the Photo, the inconsistent claims of ownership, the fact the Photo was available for license (as a public domain image) through major photo agencies, and the subject (the iconic Marilyn Monroe), Wills Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 7 of 19 Page ID #:79 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES and HarperCollins had zero reason to believe Strauss (or anyone else) owned the copyright thereto.2 These facts raise serious questions about Plaintiffs’ claim. Plaintiffs’ failure to plead sufficient facts has denied Wills and HarperCollins the opportunity to prepare an adequate defense, to which they are entitled as a matter of law. Moreover, the existence of substantial contradictory evidence is even more reason to require Plaintiffs to comply with federal pleading standards; otherwise, Plaintiffs may be permitted to proceed in this litigation with an implausible (if not impossible) claim. Wills and HarperCollins therefore request that Plaintiffs’ complaint be dismissed with prejudice, or alternatively, that Plaintiffs be required to provide a more definite statement of their claims, providing the necessary details described below. II. DISCUSSION A. Plaintiffs Must Plead Sufficient Facts to Show Valid Copyright Ownership To survive a motion to dismiss, a complaint must allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). “The plausibility standard . . . asks for more than a sheer possibility that a defendant has acted unlawfully.” Iqbal, 556 U.S. at 678; see also Twombly, 550 U.S. at 555 (“Factual allegations must be enough to raise a right to relief above the speculative level.”). Under Rule 12(b)(6), dismissal is proper when a complaint suffers from “an absence of sufficient facts alleged to support a cognizable legal theory.” Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001). To plead sufficient facts to support a cognizable copyright infringement claim, a complaint must contain allegations identifying, among other things, Plaintiffs’ ownership of a valid copyright. Allen v. 2 Had Wills or HarperCollins uncovered any evidence suggesting valid copyright ownership of the Photo, they would have immediately reached out to the owner and paid the (undoubtedly nominal) licensing fee as they have done innumerable times before. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 8 of 19 Page ID #:80 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES Strikes Unlimited, No. 2:13-cv-0684, 2013 WL 3872948, at *2 (E.D. Cal. July 25, 2013). “A pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of cause of action will not do.’ Nor does a complaint suffice if it tenders ‘naked assertions’ devoid of ‘further factual enhancements.’” Id. at *2 (quoting Iqbal, 556 U.S. at 678). Such pleading requirements are necessary “to permit the adverse party the opportunity to file a responsive answer and prepare an adequate defense. Beyond this, the rule serves to sharpen the issues to be litigated and to confine discovery within reasonable grounds.” In re “Santa Barbara Like It Is Today” Copyright Infringement Litigation, 94 F.R.D. 105, 107-08 (D. Nev. 1982) (internal citations omitted). B. Plaintiffs Have Failed to Plead Facts Sufficient to Show Ownership of a Valid Copyright Plaintiffs devote only a few conclusory sentences on the issue of ownership of copyright in the sixty-three year old Photo. The sum total of Plaintiffs’ allegations in this respect is as follows: • Mischa Pelz (“Pelz”) took the Photo in 1953. Compl. ¶ 7. • Pelz owned Miller Photos, Inc. (“Miller Photos”). Id. ¶13. • Strauss acquired Miller Photos in 1980, twenty-seven years after the Photo had been taken. See id. • The acquisition of Miller Photos “included, inter alia, the copyrights to certain photographs of Marilyn Monroe from the then copyright owner Mischa Pelz.” Id. (emphasis added). • Following his 1980 acquisition of Miller Photos, Strauss then waited twelve years (until 1992) to register the Photo with the United States Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 9 of 19 Page ID #:81 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES Copyright Office.3 Strauss registered the Photo under his own name-and not under Miller Photos. See id. ¶ 14. • In 2000, Strauss dissolved Miller Photos, “transferring all rights contained thereunder, including the copyright of the [Photo], to Strauss.” Id. ¶ 15. • There are no allegations regarding the transfer of copyright in the Photo from Pelz (the alleged copyright owner as of 1980, see id. ¶ 13) to Miller Photos. These allegations are not only unintelligible and internally inconsistent, but leave decades-long factual holes that are crucially important to establishing the validity of Strauss’ claim of ownership of a valid copyright. The unusual-and contradictory- factual allegations surrounding the Photo create only more confusion and uncertainty, and leave Wills and HarperCollins incapable of preparing an adequate response to Plaintiffs’ claim. 1. Plaintiffs Fail to Allege When the Photo Was First Published or Compliance with Applicable Statutory Formalities The question of when and how the Photo was first published is of critical importance to the plausibility of Plaintiffs’ copyright claim. If the Photo was first published before January 1, 1978 (i.e., within the twenty-five years after it was taken), its protection was subject to compliance with the Draconian strictures of the Copyright Act of 1909 (the “1909 Act”) and the notice requirements therein. See 37 C.F.R. § 202.2(a)(1) (2016) (“With respect to a work published before January 1, 1978, copyright was secured, or the right to secure it was lost . . . at the date of publication, i.e., the date on which copies are first placed on sale, sold, or publicly distributed, depending upon the adequacy of the notice of copyright on the work at 3 Notably, despite Plaintiffs’ contention, Exhibit B to the Complaint is not a copy of a copyright registration certificate, but rather a summary printout from the Copyright Office website. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 10 of 19 Page ID #:82 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES that time.”); see also U.S. Copyright Office, Circular 3, Copyright Notice (2013) (“Works published before January 1, 1978, are governed by the 1909 Copyright Act. Under that law, if a work was published under the copyright owner’s authority without a proper notice of copyright, all copyright protection for that work was permanently lost in the United States.”). Notice defects resulting in the loss of copyright protection included, among other things: • Failure to include one of many necessary elements, such as the word “Copyright” or an abbreviation thereof, the name of the copyright owner, or the year of publication; • Improper placement of the notice; • Incorrect publication date; • Illegibility or small type; and • Use of foreign words or phrases. See 37 C.F.R. § 202.2(b)(1-11) (2012). Described as “traps for the unwary,” the inadvertent failure to comply with any one of these formalities would have irrevocably placed the Photo in the public domain, and would be fatal to Plaintiffs’ copyright claim. See Golan v. Holder, 132 S. Ct. 873, 882 n.11 (2012). Plaintiffs’ failure to allege the date of first publication of the Photo, and if applicable, consistent compliance with the notice requirements described above, renders their claim fatally uncertain. Even if the Photo was published in compliance with all applicable statutory formalities, a publication date certain is necessary to determine compliance with any and all renewal laws applicable to the Photo, or to show the copyright expiration thereof. See U.S. Copyright Office, Circular 15, Renewal of Copyright (2006) (discussing significant differences in the renewal requirements for works published before and after January 1, 1964). Importantly, if the Photo was published at any time from creation (1953) to December 31, 1963 (i.e., ten years after creation), copyright claimants were required to comply with strict renewal requirements or Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 11 of 19 Page ID #:83 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES forfeit copyright protection forever. Id. (“If a copyright originally secured before January 1, 1964, was not renewed at the proper time, copyright protection expired at the end of the 28th calendar year of the copyright and could not be restored.”); see also 17 U.S.C. § 304(a); 37 C.F.R. 202.17(a)(2) (2013) (“Works for which copyright was secured before 1964 are governed by the provisions of 17 U.S.C. 304(a) in effect prior to the 1992 date of enactment of Pub. L. No. 102-307. The copyrights in such works could have been renewed by registration only within the last calendar year of the original 28-year term of copyright protection. If renewal registration was not made during that period of time, copyright protection was lost when the original term of copyright expired and cannot be regained.”); 3 Nimmer on Copyright § 9.05[A][1] at 9-41-42 (under the 1976 Act, “the third proviso of Section 304(a) provided at enactment that failure to comply with the formality of renewal registration doomed the copyright in the work after expiration of the initial term of 28 years.”). Notably, at least one publicly available copy of the Photo includes a copyright notice dated 1953 with attribution to “Strauss/Campbell” (and not to Pelz, Miller Photos or Strauss alone), suggesting that the copyright may have expired in 1981. See Request for Judicial Notice (“RJN”) Ex. A.4 In sum, Plaintiffs’ failure to plead any facts respecting first publication of the photograph, compliance with statutory requirements when published, or timely renewal of any extant copyright calls into question the validity of Plaintiffs’ claim to ownership of a valid copyright - indeed, given the critical significance of the publication date to validity and renewal, Plaintiffs’ failure to allege these facts deprives Wills and HarperCollins of their ability to meaningfully respond to the complaint and adequately prepare a defense. And given the myriad ways in which the copyright interest in the Photo may have been consigned to the public domain in 4 Notably, while Plaintiffs’ Complaint is conveniently silent regarding non-party Tom Campbell, both RJN Ex. A and the copyright deposit of the Photo, which is affixed with a stamp of “Tom Campbell & Associates Incorporated,” suggest there is yet another individual with a potential ownership interest in the Photo. See RJN Ex. L. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 12 of 19 Page ID #:84 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES the sixty three years since it was taken, the failure to allege these facts renders Plaintiffs’ claim implausible at best. The Court should therefore dismiss the Complaint. 2. Plaintiffs Fail to Allege Valid Transfer of Copyright and Chain of Title A transfer of copyright “is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” 17 U.S.C. § 204(a) (emphasis added); 3 Nimmer on Copyright § 10.03[A][1][a] at 10:-43 (“The statute sets forth separate requirements regarding the instrument of conveyance: it must be ‘[1] in writing and [2] signed by [3] the owner of the rights conveyed.’ As those aspects are cumulative, the presence of only two is insufficient.”). While Plaintiffs have baldly alleged that Strauss acquired Miller Photos in 1980, and that such acquisition “included, inter alia, the copyrights to certain photographs of Marilyn Monroe from the then copyright owner,” Plaintiffs have failed to allege any facts that such transfer was in writing and enforceable as a matter of law. Indeed, if transfer of the Photo was made by oral agreement or by an unsigned written agreement, Plaintiffs would have no copyright claim against Wills or HarperCollins. See Crispin v. Christian Audigier, Inc., 839 F. Supp. 2d 1086, 1091 (C.D. Cal. 2011) (“The Ninth Circuit has consistently found putative copyright transfer agreements that have not complied with § 204(a) to be ineffective. . . . By strictly enforcing section 204(a)’s minimal requirements, courts can best effect the purposes of the Copyright Act: to ensure certainty of ownership and protect a copyright owner’s rights.”); Righthaven LLC v. Democratic Underground, LLC, 791 F. Supp. 2d 968, 972-73 (“Pursuant to Section 501(b) of the 1976 Copyright Act, 17 U.S.C. § 101 et seq., (the ‘Act’) only the legal or beneficial owner of an exclusive right under copyright law is entitled, or has standing, to sue for infringement.”) (citing Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 884 (9th Cir. 2005)). Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 13 of 19 Page ID #:85 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES Here, Plaintiffs have failed to sufficiently allege a valid transfer of ownership for at least two reasons. First, Plaintiffs have failed to allege any written agreement effecting a valid transfer of copyright to Strauss. See Compl. ¶¶ 13-15. Second, Plaintiffs have failed to intelligibly allege a valid chain of title between and among the various individuals and entities referenced in the Complaint, including Strauss, Pelz, and Miller Photos. In particular, Plaintiffs allege that Strauss’ acquisition of Miller Photos “included, inter alia, the copyrights to certain photographs of Marilyn Monroe from the then copyright owner Mischa Pelz,” id. at 13 (emphasis added). However, Plaintiffs later allege that Miller Photos, rather than Pelz, was the copyright owner. See id. at 15 (“Plaintiff Strauss dissolved Miller Photos transferring all rights contained thereunder, including the copyright to the [Photo], to Strauss.”) (emphasis added). Thus, Plaintiffs’ Complaint suggests, but does not allege, that there may have been a number of copyright transfers, e.g., from Pelz to Miller Photos to Strauss, or from Pelz to Strauss to Miller Photos to Strauss, or from Miller Photos to Strauss, or from Pelz to Strauss. These facially inconsistent and incomplete allegations render Plaintiffs’ claim to ownership of a valid copyright implausible, thus failing to meet the pleading requirements mandated by Iqbal and Twombly. Clearly setting forth the actual chain of title is critical to asserting a plausible claim: it is vital to understanding who owned the copyright in the first instance, to whom it was transferred and when (for each purported transfer), and whether all statutory formalities were observed every step of the way. Such facts are furthermore necessary for Plaintiffs to plausibly allege that Strauss is the legal owner of a valid copyright who has capacity to bring a copyright infringement claim. Because Plaintiffs have failed to sufficiently (much less coherently) plead these facts, they cannot set forth a plausible claim for relief. Accordingly, the Court should dismiss the Complaint on this basis as well. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 14 of 19 Page ID #:86 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES 3. Strauss Fails to Even Allege Ownership of the Photo at the Time of Registration Further calling into question the plausibility of Plaintiffs’ copyright claim is that Strauss, by Plaintiffs’ own admission, did not even own the copyright in the Photo at the time of registration in 1992. Rather, Plaintiffs allege that Miller Photos -and not Strauss - owned the copyright in the Photo until 2000. See Compl. ¶ 15. (“On or about 2000, Plaintiff Strauss dissolved Miller Photos transferring … the copyright to the [Photo], to Strauss”).5 However, according to the Complaint, Strauss registered the copyright in the Photo in 1992 under his own name - eight years before Strauss even owned the copyright according to the allegations in the Complaint. See id. ¶ 14 (“On or about June, 1992, Strauss registered the Photograph with the United States Copyright Office . . . under the name of Andrew R. Strauss); see also id. Ex. B. It therefore would have been impossible for Strauss to have validly registered copyright in the Photo in his name in 1992, when Miller Photos (or, perhaps, Pelz, or Campbell, or another non-party) was the copyright owner, or the Photo was already in the public domain and therefore no longer subject to copyright protection. These allegations, assuming their truth as we must on this Motion, serve to further invalidate Strauss’ purported copyright ownership in the Photo, along with StartHear!’s alleged interest as exclusive licensee, and independently warrant dismissal. 4. There Is Particular Reason to Question the Plausibility of Plaintiffs’ Claim The failings articulated above are not mere trivialities. While Plaintiffs’ omissions and inconsistencies alone render their copyright claim implausible and therefore warrant dismissal of the Complaint, there are particularly compelling 5 As shown above, Plaintiffs’ allege in paragraph 13 that Mischa Pelz owned the copyrights in the Photo, but contradict that allegation at paragraph 15, stating that it was Miller Photos that owned them. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 15 of 19 Page ID #:87 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES reasons in this case to insist upon compliance with the pleading standards of the Federal Rules of Civil Procedure. The Photo (and other nearly identical photographs) has been published everywhere and has been attributed to nearly everyone (and, just as often, to no one).6 For instance, the following are just a handful of examples of publication of the Photo7 which contradict both Plaintiffs’ claim of copyright ownership in the Photo and their claim that StartHear! is an exclusive licensee thereof: • Laird Borrelli-Persson, The Best Legs by Decade: From Mistinguett’s Million Dollar Stems to Karlie Kloss’s Knockout Limbs, Vogue (Feb. 6, 2015, 2:26 PM), www.vogue.com/9926423/best-legs-throughout-history (“Photo: Courtesy of Everett Collection”). RJN Ex. B; • Ultimate Style Icons: Marilyn Monroe, Marie Claire, www.marieclaire.co.uk/fashion/ideas/34645/15/ultimate-style-icons- marilyn-monroe.html (last visited September 12, 2016) (attributed to Rex Features). RJN Ex. C; • Marilyn Monroe Wearing Swimsuit, Owens Archive, http://www.owensarchive.com/marilyn-monroe-wearing-swimsuit-3892 (last visited September 12, 2016) (attributed to Owens Archive) RJN D; • Allison Rowley, Showbiz: Marilyn Monroe: Career in Pictures, DigitalSpy (August 5, 2012), www.digitalspy.com/showbiz/news/g9387/showbiz- marilyn-monroe-career-in-pictures/?slide=14 (attributed to Rex Features/Everett Collection). RJN Ex. E; 6 Importantly, the publication of the Photo by numerous other archives (without attribution to Strauss and/or StartHear!) seriously calls into question not just Strauss’ copyright ownership of the Photo, but also Plaintiffs’ allegation in paragraph 7 of the Complaint that StartHear! holds an exclusive license in the Photo. 7 While there are numerous additional publications of similar photos from the same photo shoot as the Photo, the photos in RJN Exhibits A-I referenced herein are believed to be publications of the exact Photo at issue in this Complaint (or a cropped version thereof). These publications are provided to the Court for the sole and limited purpose of showing that a number of third parties are claiming ownership of the Photo, and a number of photo houses are offering to license the Photo, and not to show the truth or validity of any such claims. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 16 of 19 Page ID #:88 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 12 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES • Vineeta Kumar, Remembering the Genius Marilyn Monroe Beyond her “Blowing Dress” Moment, Catch News (August 15, 2015), http://archive.catchnews.com/hollywood-news/marilyn-monroe-beyond- blowing-dress-moment-1438772115.html (attributed to Camerique/Getty Images). RJN F; • Marilyn Monroe - circa 1950s, Rex by ShutterStock, http://www.rexfeatures.com/search/?kw=558391oy (last visited September 12, 2016) (listing photographer as “Everett Collection/REX/Shutterstock”). RJN Ex. G; • Dr Macro’s High Quality Movie Scans, http://www.doctormacro.com/Images/Monroe,%20Marilyn/Annex/Annex% 20-%20Monroe,%20Marilyn_028.jpg (last visited September 12, 2016) (published without attribution). RJN Ex. H; • FamousFacesPhotos, Marilyn Monroe White 2 Piece Swimsuit 8x10 Photograph, Etsy, https://www.etsy.com/listing/245124698/marilyn- monroe-white-2-piece-swimsuit?ref=shop_home_active_63 (last visited September 12, 2016) (available for sale without attribution). RJN Ex. I; • Twentieth Century-Fox Film Corporation (“Fox”) Advertising Release among Fox, Marilyn Monroe, and Deeco Inc. (“Deeco”), dated May 19, 1953 (granting Deeco license to Marilyn Monroe’s name and likeness for its aluminum lawn furniture advertisements from 1953-54). RJN Ex. J. See also RJN K (April 26, 1954 LIFE Magazine advertisement for Deeco in which Marilyn Monroe is lounging on lawn furniture and wearing a swimsuit identical to the one in the Photo). For all of the reasons set forth above, Plaintiffs have failed to plead facts sufficient to show a plausible copyright claim - indeed the “facts” pled demonstrate the opposite. While such deficiencies alone constitute a sufficient basis to dismiss the Complaint, the existence of significant contradictory claims to ownership of the Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 17 of 19 Page ID #:89 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES copyrights in the Photo further undermines the plausibility of Plaintiffs’ claim. The Court should therefore dismiss the Complaint. C. In the Alternative, Defendants Request a More Definite Statement Providing the Missing Details Identified Above In the alternative, Wills and HarperCollins request that the Court order Plaintiffs to provide a more definite statement of their copyright claim, pursuant to Rule 12(e). Rule 12(e) permits a Court to require a party to provide a more definite statement of its claim where the party’s pleading is “so vague or ambiguous that the party cannot reasonably prepare a response;” all that is required is that the moving party “point out the defects complained of and the details desired.” Fed. R. Civ. Proc. 12(e). For the reasons described above, Plaintiffs’ ownership claim is so conclusory, contradictory, and devoid of crucial facts that it does not permit Defendants to meaningfully respond. If the Court does not dismiss the Complaint outright, then it should at a minimum order Plaintiffs to provide a more definite statement of the basis for their claims. See, e.g., McHenry v. Renne, 84 F.3d 1172, 1176 (9th Cir. 1996) (ordering more definite statement under Rule 12(e) where plaintiffs failed “to explain clearly how each defendant [was] implicated by plaintiffs’ allegations”). III. CONCLUSION This case involves a widely disseminated, sixty-three year old photograph of one of the most famous and most photographed women in U.S. history. Numerous third parties have claimed (or have been attributed rights) to the Photo. Plaintiffs’ bare and inconsistent allegations fail to provide even a “sheer possibility”, much less the required plausibility, that Strauss is the rightful copyright owner. For the reasons set forth above, Wills and HarperCollins respectfully request that the Court dismiss Plaintiffs’ complaint with prejudice, or in the alternative, order a more definite statement of their claim, including the details identified above. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 18 of 19 Page ID #:90 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 14 NOTICE OF MOTION AND MOTION TO DISMISS OR FOR MORE DEFINITE STATEMENT; MEMO OF POINTS AND AUTHORITIES Dated: September 23, 2016 SIDLEY AUSTIN LLP By: /s/ Bradley H. Ellis________________ Bradley H. Ellis Attorneys for Defendants DAVID WILLS and HARPERCOLLINS PUBLISHERS L.L.C. Case 2:16-cv-05103-MWF-SS Document 18 Filed 09/23/16 Page 19 of 19 Page ID #:91 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DECLARATION OF RACHAEL A. REZABEK Bradley H. Ellis (SBN 110467) bellis@sidley.com Rollin A. Ransom (SBN 196126) rransom@sidley.com Rachael A. Rezabek (SBN 298711) rrezabek@sidley.com SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, California 90013 Telephone: +1 213 896-6000 Facsimile: +1 213 896-6600 Attorneys for David Wills and HarperCollins Publishers L.L.C. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA (WESTERN DIVISION) ANDREW STRAUSS, an individual; STARTHEAR! LLC, a California limited liability corporation; Plaintiffs, vs. DAVID WILLS, an individual; HARPER COLLINS PUBLISHING, an entity of unknown form; and DOES 1-25, inclusive, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 2:16-cv-05103-MWF-SS Complaint Filed: July 12, 2016 Assigned to: Hon. Michael Fitzgerald DECLARATION OF RACHAEL A. REZABEK IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS PLAINTIFFS’ COMPLAINT , OR, IN THE ALTERNATIVE, FOR A MORE DEFINITE STATEMENT [Notice of Motion and Motion to Dismiss Plaintiffs’ Complaint, or, in the Alternative, for a More Definite Statement; Memorandum of Points and Authorities; Request for Judicial Notice; Notice of Manual Filing or Lodging; and [Proposed] Order filed concurrently] Judge: Hon. Michael W. Fitzgerald Date: November 7, 2016 Time: 10:00 A.M. Location: Courtroom 1600 Case 2:16-cv-05103-MWF-SS Document 18-1 Filed 09/23/16 Page 1 of 4 Page ID #:92 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 DECLARATION OF RACHAEL A. REZABEK DECLARATION OF RACHAEL A. REZABEK I, Rachael A. Rezabek, hereby declare as follows: 1. I am an attorney at law, duly licensed and admitted to practice in California and admitted in the Central District of California, and am an associate in the law firm of Sidley Austin LLP, counsel of record for Defendants David Wills and Harper Collins Publishers L.L.C. (together, “Defendants”). I make this declaration in support of Defendants’ Motion to Dismiss Plaintiff’s Complaint pursuant to Federal Rule of Civil Procedure 12(b)(6), or, in the alternative, for a More Definite Statement. Except with respect to any fact stated upon information and belief, and as to that fact I believe it to be true, I have personal knowledge of the facts stated below and, if called and sworn as a witness, could and would testify competently thereto. Using the URLs shown below, I personally visited each of the websites where Exhibits A through K may be found and observed that each such exhibit was available on that website. 2. Exhibit A in Defendants’ Request for Judicial Notice (“RJN”) is a true and correct copy of a screenshot of a 1953 photo of Marilyn Monroe (the “Photo”), which is available on the internet at the following website: https://www.pinterest.com/pin/354025220690247651/, which website I last visited on September 22, 2016. 3. Exhibit B is a true and correct copy of an article about the Photo by Laird Borrelli-Persson entitled, “The Best Legs by Decade: From Mistinguett’s Million Dollar Stems to Karlie Kloss’s Knockout Limbs,” which is available on the internet at the following website: www.vogue.com/9926423/best-legs-throughout-history, which website I last visited on September 22, 2016. 4. Exhibit C is a true and correct copy of an article about the Photo entitled, “Ultimate Style Icons: Marilyn Monroe,” which is available on the internet at the following website: http://www.marieclaire.co.uk/fashion/shopping/ultimate-style- icons-marilyn-monroe-149679, which website I last visited on September 22, 2016. Case 2:16-cv-05103-MWF-SS Document 18-1 Filed 09/23/16 Page 2 of 4 Page ID #:93 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 DECLARATION OF RACHAEL A. REZABEK 5. Exhibit D is a true and correct copy of a screenshot of the Photo entitled “Marilyn Monroe Wearing Swimsuit, which is available on the internet at the following website: http://www.owensarchive.com/marilyn-monroe-wearing- swimsuit-3892, which website I last visited on September 22, 2016. 6. Exhibit E is a true and correct copy of an article about the Photo by Allison Rowley entitled, “Showbiz, Marilyn Monroe: Career in Pictures,” which is available on the internet at the following website: www.digitalspy.com/showbiz/news/g9387/showbiz-marilyn-monroe-career-in- pictures/?slide=14, which website I last visited on September 22, 2016. 7. Exhibit F is a true and correct copy of an article about the Photo by Vineeta Kumar entitled, “Remembering the Genius Marilyn Monroe Beyond her ‘Blowing Dress’ Moment,” in which ownership of the Photo is attributed to Camerique/Getty Images, which is available on the internet at the following website: http://archive.catchnews.com/hollywood-news/marilyn-monroe-beyond-blowing- dress-moment-1438772115.html, which website I last visited on September 22, 2016. 8. Exhibit G is a true and correct copy of a screenshot of the Photo entitled, “Marilyn Monroe - circa 1950s,” which is available on the internet at the following website: http://www.rexfeatures.com/search/?kw=558391oy, which website I last visited on September 22, 2016. 9. Exhibit H is a true and correct copy of a screenshot the Photo, which is available on the internet at the following website: http://www.doctormacro.com/Images/Monroe,%20Marilyn/Annex/Annex%20- %20Monroe,%20Marilyn_028.jpg, which website I last visited on September 22, 2016. 10. Exhibit I is a true and correct copy of the Photo for sale entitled, “Marilyn Monroe White 2 Piece Swimsuit 8x10 Photograph,” which is available on the internet at the following website: https://www.etsy.com/listing/245124698/marilyn-monroe-white-2-piece- Case 2:16-cv-05103-MWF-SS Document 18-1 Filed 09/23/16 Page 3 of 4 Page ID #:94 Case 2:16-cv-05103-MWF-SS Document 18-1 Filed 09/23/16 Page 4 of 4 Page ID #:95 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 [PROPOSED] ORDER Bradley H. Ellis (SBN 110467) bellis@sidley.com Rollin A. Ransom (SBN 196126) rransom@sidley.com Rachael A. Rezabek (SBN 298711) rrezabek@sidley.com SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, California 90013 Telephone: +1 213 896-6000 Facsimile: +1 213 896-6600 Attorneys for David Wills and HarperCollins Publishers L.L.C. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA (WESTERN DIVISION) ANDREW STRAUSS, an individual; STARTHEAR! LLC, a California limited liability corporation; Plaintiffs, vs. DAVID WILLS, an individual; HARPER COLLINS PUBLISHING, an entity of unknown form; and DOES 1-25, inclusive, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. 2:16-cv-05103 Complaint Filed: July 12, 2016 [PROPOSED] ORDER GRANTING MOTION TO DISMISS PLAINTIFFS’ COMPLAINT, OR, IN THE ALTERNATIVE, FOR A MORE DEFINITE STATEMENT Case 2:16-cv-05103-MWF-SS Document 18-2 Filed 09/23/16 Page 1 of 2 Page ID #:96 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 [PROPOSED] ORDER The Court has considered Defendants David Wills and HarperCollins Publishers L.L.C.’s Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(6) and Motion for a More Definite Statement under Rule 12(e), which came on for hearing before the Court on November 7, 2016. After full consideration of the Motions, opposition, and reply papers, arguments of counsel, and all other matters presented to the Court, IT IS HEREBY ORDERED that: 1. Plaintiffs’ Complaint is hereby DISMISSED with prejudice pursuant to Federal Rule of Civil Procedure 12(b)(6). 2. In the alternative, Plaintiffs shall file a more definite statement of their claims pursuant to Federal Rule of Civil Procedure 12(e), on the grounds that the Complaint is so vague that Defendants cannot reasonably prepare a response. IT IS SO ORDERED. Dated: , 2016 _______________________ The Honorable Michael W. Fitzgerald United States District Court Judge Case 2:16-cv-05103-MWF-SS Document 18-2 Filed 09/23/16 Page 2 of 2 Page ID #:97