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Douglas J. Del Tondo, Esq. (SBN 100563)
doug@deltondothomas.com
DEL TONDO & THOMAS
Attorneys at Law
2201 Dupont Drive, Suite 820
Irvine, California 92612
Tel. (949) 851-0558 g Fax: (949) 266-9621
Attorneys for Defendants, CALIFORNIA RENT-A-CAR, INC.,
and STEVE VAHIDI
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA,
WESTERN DIVISION
EVOX PRODUCTIONS, LLC, a
California limited liability company,
Plaintiff,
v.
CALIFORNIA RENT-A-CAR, INC., a
California corporation, and STEVE
VAHIDI, an individual,
Defendants.
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CASE NO. 2:15-cv-08046 MWF (RAOx)
DEFENDANTS’ OPPOSITION TO
PLAINTIFF’S MOTION FOR
SUMMARY ADJUDICATION
]
Judge: Hon. Michael W. Fitzgerald
Date: June 27, 2016
Time: 10:00 a.m.
Courtroom: 1600
Trial Date: January 10, 2017
Defendants, CALIFORNIA RENT-A-CAR, INC., and STEVE VAHIDI,
respectfully submit the following Opposition to Plaintiff EVOX PRODUCTIONS,
LLC (“EVOX”)’s Motion for Summary Adjudication, entitled in full
PLAINTIFF EVOX PRODUCTIONS, LLC’S NOTICE OF MOTION AND MOTION
FOR PARTIAL SUMMARY JUDGMENT ON LIABILITY AGAINST
DEFENDANTS CALIFORNIA RENT-A-CAR, INC. AND STEVE VAHIDI;
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT
THEREOF; DECLARATIONS OF JONATHAN GOTTFRIED, BARRY
THOMPSON & JEFFREY SEDLIK, Doc. Control No. 34.
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION
Case 2:15-cv-08046-MWF-RAO Document 45 Filed 06/06/16 Page 1 of 32 Page ID #:1312
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TABLE OF CONTENTS
PAGE
INTRODUCTION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
I. STATEMENT OF FACTS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
A. Evox Lacks Any Licenses, Let Alone A Crucial Exclusive License. . . . . 1
B. Evox's Suppression of Mandatory Disclosures to Copyright Office.. . . . 1
C. Section 113(c) Protected Use of California Rent A Car. . . . . . . . . . . . . 2
D. The Automobile Designs and Logos Are Original Works . . . . . . . . . . . . 2
E. Lack of Originality of Evox's Photographs.. . . . . . . . . . . . . . . . . . . . . . . 3
F. No Intent to Conceal Copyright Infringement under DCMA. . . . . . . . . . 3
II. DEFENDANTS HAD A RIGHT OF USE UNDER SECTION 113(c).. . . . . . 3
A. A Brief Synopsis of Cross-Motion on Section 113(c). . . . . . . . . . . . . . . . 3
B. Section 113(c) Is A ‘Specified Exemption' From Copyright Rights.. . . . 4
III. EVOX LACKS A NECESSARY EXCLUSIVE LICENSE TO SUE.. . . . . . . 5
A. The Newly Discovered Hyperquest Decision . . . . . . . . . . . . . . . . . 5
B. The Holding in Hyperquest.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
C. Section 501(b) Requirement of An Exclusive Right. . . . . . . . . . . . . . . . . 6
D. Evox's Use of Preexisting Copyright
Works In Their Photographs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
E. Exclusive Rights of Copyright Owners
of Images in Evox Photographs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
F. No Standing To Sue Upon
Non-Exclusive License of Such Rights.. . . . . . . . . . . . . . . . . . . . . . . . . . . 9
IV. EVOX CANNOT SUE ON INFRINGING REGISTRATIONS.. . . . . . . . . 11
A. Evox Has No Licenses,
Oral or Written, Non-Exclusive or Exclusive . . . . . . . . . . . . . . . . . . . . 11
B. The Auto & Logo Designers' Exclusive Rights Under Section 106. . . . 12
C. Evox Does Not Own The Rights Under Section 106 It Usurps. . . . . . . 13
D. The Court Should Give
No Evidentiary Value to Evox's Registrations. . . . . . . . . . . . . . . . . . . . 14
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MEMORANDUM OF POINTS & AUTHORITIES
IN SUPPORT OF PARTIAL SUMMARY ADJUDICATION
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PAGE
E. Evox's Use of Preexisting Copyright
Works In Their Photographs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
1. THE INFRINGING PHOTOGRAPHS ON SCULPTURE ART IN ALFRED
BELL. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
2. PHOTOGRAPHER INFRINGES UPON ANOTHER'S DERIVATIVE USE
RIGHT.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
V. EVOX'S REGISTRATIONS ARE ENTIRELY INVALID. . . . . . . . . . . . . 19
VI. EVOX'S DMCA CLAIM FAILS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
VIII. EVOX'S PHOTOS LACK ORIGINALITY. . . . . . . . . . . . . . . . . . . . . . . . . 23
A. The Wiki Evox Submitted
Supports Slavish Copying Took Place. . . . . . . . . . . . . . . . . . . . . . . . . . 23
E. The Plaintiff's Expert is Mistaken
On What He is Supposed to Look At. . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
IX. CONCLUSION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MEMORANDUM OF POINTS & AUTHORITIES
IN SUPPORT OF PARTIAL SUMMARY ADJUDICATION
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TABLE OF AUTHORITIES
CASES PAGE
Alfred Bell & Co. v. Catalda Fine Arts,
74 F.Supp. 973 (S.D.N.Y. 1947) .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11-12, 17
Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951) . .. . . . 17-18
Anderson v. Stallone, No. 87-0592,
1989 U.S. Dist. LEXIS 11109 (C.D. Cal. 1989). . . . . . . . . . . . . . . . . 11, 13, 15-16
ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc.,
402 F.3d 700 (6th Cir. 2005).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
Bridgeman Art Library v. Corel Corp Corp., 36 F.Supp.2d 191
(S.D.N.Y. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
Bryant v. Gordon, 483 F.Supp.2d 605, 611 (N.D.Ill. 2007).. . . . . . . . . . . . . . . . . . . 3,4
Columbia Pictures Indus. v. Krypton Broad. of Birmingham, Inc.,
259 F.3d 1186 (9th Cir. Cal. 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19-20
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990).. . . . . . . . . . . . . . . . . . . . 6, 8, 9
Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) . . . . . . . . . . . . . 7, 11, 15
Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003) .. . . . . . . . . . . . . . . . . . 25
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) . . . . . . . . . 5,13, 23-24
Felix the Cat Prods, Inc. v. New Line Cinema Corp.,
CV 99-9339, 2000 U.S. Dist. LEXIS 21763 (C.D. Cal. 2007) ... . . . . . . . . . . . . 8
Gaylord v. United States, 777 F.3d 1363 (Fed.Cir. 2015).. . . . . . . . . . . . . . . . . . 11, 18
Gener-Villar v. Adcom Group, Inc., 560 F.Supp.2d 112 (D.P.R. 2008). . . . . . . . . . . 17
Gordon v. Nextel Communs, 345 F.3d 922 (6th Cir. 2003) .. . . . . . . . . . . . . . . . . . . . 23
Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985). . . . . . . . . . . . . . . . 4, 7
Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377 (7th Cir. 2011).. . . 5-6, 8, 9, 10, 15
Imageline, Inc. v. CafePress.com. Inc., No. CV 10-9794,
2011 U.S. Dist. LEXIS 39828 (C.D. Cal. Apr. 6, 2011) ... . . . . . . . . . . . . . . . . . 22
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MEMORANDUM OF POINTS & AUTHORITIES
IN SUPPORT OF PARTIAL SUMMARY ADJUDICATION
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John Wiley & Sons, Inc. v. DRK Photo,
998 F.Supp.2d 262 (S.D.N.Y. 2014). .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
J. Thomas Distribs., Inc. v. Greenline Distribs., Inc., No. 95-2100,
1996 U.S. App. LEXIS 29035 (6th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . 23
Kolody v. Simon Mktg., 97 CV 0190,
1998 U.S. Dist. LEXIS 14229 (N.D.Ill. 1998). . . . . . . . . . . . . . . . . . . . . . . . . . . 23
Lamps Plus, Inc. v. Seattle Lighting Fixture Co. 345 F.3d 1140 (9th Cir. 2003). . . . 20
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976). . . . . . . . . . . . . . . . . . . . 6
Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, CV 10-9794,
2014 U.S. Dist. LEXIS 92809 (N.D.Ill. 2014). . . . . . . . . . . . . . . . . . . . . . . . . . . 22
Maljack Productions, Inc. v. GoodTimes Home Video Corp.,
81 F.3d 881(9th Cir. 1996) .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6-7
Meshwerks, Inc. v. Toyota Motor Sales U.S.A.,
528 F.3d 1258 (10th Cir. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24-25
Minden Pictures, Inc. v. John Wiley & Sons, Inc.,
795 F.3d 997 (9th Cir. 2015) ... . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8, 15
Morris v. Business Concept Inc., 99 Civ. 59,
2000 U.S. Dist. LEXIS 3835 (S.D.N.Y. 2000) .. . . . . . . . . . . . . . . . . . . . . . . . . . . 7
Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000) .. . . . . . . . . . . . . . . . . 11, 13-14, 16-17
Russ Berrie & Co. v. Jerry Elsner Co., 482 F.Supp. 980 (S.D.N.Y. 1980) .. . . . . . . . 21
Sobhani v. @Radical Media, Inc.,
257 F. Supp. 2d 1234 (CD. Cal. 2003) .. . . . . . . . . . . . . . . . . . . . . 8, 11,13, 14, 25
S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989).. . . . . . . . . . . . . . . . . . . . . 7
Thron v Harpercollins Publrs., Inc.,
01 Civ. 5437, 2002 U.S. Dist. LEXIS 13670 (S..N.Y. 2002). . . . . . . . . . . . . . . 21
Twentieth Century Fox Film Corp. v. Marvel Ents.,
155 F. Supp. 2d 1 (S.D.N.Y. 2001) .. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
United States v. Taxe, 540 F.2d 961 (9th Cir. 1976) .. . . . . . . . . . . . . . . . . . . . . . . . . 13
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MEMORANDUM OF POINTS & AUTHORITIES
IN SUPPORT OF PARTIAL SUMMARY ADJUDICATION
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Whimsicality, Inc. v. Rubie's Costume Co.. 891 F.2d 452 (2d Cir. 1989) . . . . . . . 19, 21
STATUTES
17 U.S.C. § 101. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
17 U.S.C. § 102(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
17 U.S.C. § 102(a)(5). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
17 U.S.C. § 103. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
17 U.S.C. § 105. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
17 U.S.C. § 106. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
17 U.S.C. § 106(2).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11, 15, 17, 18
17 U.S.C. § 107. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
17 U.S.C. § 113(c). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 3-4
17 U.S.C. § 115. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
17 U.S.C. § 204(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9,11
17 U.S.C. § 408(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
17 U.S.C. § 409 (9). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12, 19, 21
17 U.S.C. § 410(c). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
17 U.S.C. § 501(b).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 6, 14-15, 18, 20-21
17 U.S.C. § 1202(b)(1). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21-23
CIRCULARS FROM THE COPYRIGHT OFFICE
Circular 14, Copyright in Derivative Works and Compilations .. . . . . . . . . . . . . . . . . . 5
LEGISLATIVE AUTHORITIES
House Report No. 94-1476 under 17 U.S.C. §113 . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
TREATISE AUTHORITIES
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 3.06 (2015). 12-13, 20
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MEMORANDUM OF POINTS & AUTHORITIES
IN SUPPORT OF PARTIAL SUMMARY ADJUDICATION
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MEMORANDUM OF POINTS & AUTHORITIES
INTRODUCTION
Defendants, CALIFORNIA RENT-A-CAR, INC., and STEVE VAHIDI, its
President (hereinafter collectively referred to as “Defendant CALRAC”), oppose
Plaintiff EVOX PRODUCTIONS, LLC’s (“EVOX”)’s motion for summary
adjudication of liability for copyright infringement and violation of the Digital
Millennium Copyright Act (“DMCA”) in relation to the use of the 149
PHOTOGRAPHS at issue here. By prior agreement with EVOX, Defendant1
CALRAC filed concurrently with EVOX’s motion its own cross-motion for summary
judgment and / or summary adjudication. It is hereafter referred to as CROSS-MSJ
MOTION.
I. STATEMENT OF FACTS.
A. Evox Lacks Any Licenses, Let Alone A Crucial Exclusive License.
In the 149 PHOTOGRAPHS, EVOX uses the designs of automobiles and
trademark logos without license from the copyright owners of these automobile and
logo designs. (DEFENDANTS’ STATEMENT OF UNCONVERTED FACTS IN OPPOSITION2
## 16-21, hereafter “D.SUF.OPP.”)
Plaintiff EVOX makes its customers obtain the licenses necessary from the
automobile manufacturers to use the images of the automobiles and trademarks in the
photographs. D.SUF.OPP. ##17-20. EVOX did not have a license from the automobile
manufacturers to photograph their vehicles, nor did it have a exclusive license to do
so. D.SUF.OPP. #16. In addition, because EVOX did not have any license, it de
facto could not have a license in writing. Had EVOX an exclusive license of a
derivative use right from an automobile manufacturer, it would have to be in writing
The 149 PHOTOGRAPHS are attached as Exhibit 1 to the Declaration of1
Douglas Del Tondo in support of the CROSS-MSJ MOTION.
It is part two of DEFENDANTS' STATEMENT OF [1] GENUINE DISPUTES OF2
MATERIAL FACT; AND [2] UNDISPUTED FACTS IN OPPOSITION TO PLAINTIFF'S MOTION
FOR SUMMARY ADJUDICATION, CONCURRENTLY FILED, at pages 10-25.
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION
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under section 204(a). Without a written exclusive license of such a right, EVOX has
no standing to sue a third-party under section 501(b) for what is clearly an exercise by
EVOX of a derivative use right belonging to the automobile manufacturers to make
photographs and license their use to the public. (Hereafter, all statutory references are
to Title 17 unless otherwise indicated.) Se Part II below.
B. Evox’s Suppression of Mandatory Disclosures to Copyright Office.
Plaintiff EVOX deliberately decided to not disclose to the Copyright Office its
photographs were based upon preexisting works of the designs and logos of major
manufacturers. D.SUF.OPP. ## 66-76. (Such a disclosure is required under section
409(9).) Plaintiff EVOX’s 30(b)(6) witness refused to explain why, claiming EVOX
relied upon advice of counsel in not making these disclosures. EVOX then refused in
deposition to waive the privilege to provide an explanation. D.SUF.OPP. ##69-76.
C. Section 113(c) Protected Use By California Rent A Car.
Defendant CALRAC has a privilege under section 113(c) to use even copyright
registered photographs belonging to another to advertise vehicles or other useful
articles for rent. Defendant CALRAC only used the 149 PHOTOGRAPHS for
purposes of renting automobiles in public advertising. D.SUF.OPP. ##5-15. Hence,
Defendant CALRAC engaged in exempted right to use even copyrighted
“photographs” as permitted under section 113(c).
D. The Automobile Designs and Logos Are Original Works.
EVOX was making an unauthroized use of copyright-protected automotive designs
and trademark logos belonging to the automobile manufactuers in each of he 149
PHOTOGRAPHS. Each of these automobile designs are original and hence copyright
protected automatically upon fixation in a tangible form. This first happened when the
automobiles were each produced in what is known as the final PRODUCTION
MODEL D.SUF.OPP. ## 28-40.
As to the well-recognizable manufacturers’ logos which appears in 95 of the 149
PHOTOGRAPHS, the Court is requested here to grant a Request for Judicial Notice of
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION
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these trademarks and their graphical quality. This Request was submitted in support of
the CROSS-MSJ MOTION. The Court is requested to recognize the originality of
each of these famous logos, and hence their automatic protection in copyright.
E. Lack of Originality of Evox’s Photographs.
EVOX’s product photographs fit squarely within the classic unprotectible category
of photographs known as ‘slavish copies.’ In CALRAC’s CROSS-MSJ MOTION at
pages 4-5, Defendant CALRAC summarized the Declaration of its photography expert
Mr. Takata, as well as the admissions of EVOX’s 30(b)(6) that support these
photographs are slavish copies. The supporting facts here are also in D.SUF.OPP.
##77-99. In addition, EVOX’s own motion provides more proof — EVOX’s Wiki
instructions. EVOX summarizes the WIKI in EVOX’s SUF ## 4,5 & 7. These facts as
admitted by EVOX further proves slavish copying. EVOX states that the
photographers must use the “same criteria” in each photograph based upon identical
preset posing, camera settings and lighting. The photographs are thus entirely the
mechanical output of an equivalent to a xerox machine where instead of pressing a
copy button, someone snaps a photograph. This process is the antithesis of a creative
spark necessary to show originality.
F. No Intent to Conceal Copyright Infringement under DCMA.
Defendant CALRAC believed that it had a right to use photographs it could find
on the internet for advertising rentals.. Defendant’s belief was reasonable because it is
consistent with use rights granted by Congress in Section 113(c), as explained in Part
II infra. In addition, Defendant CALRAC did not know at the time it removed the
name EVOX IMAGES from the photographs that there was a copyright symbol
affixed to the E of EVOX which was removed at the same time. In the size of the
photograph downloaded by Defendant, it was illegible. D.SUF.OPP. #102.
II. DEFENDANTS HAD A RIGHT OF USE UNDER SECTION 113(C).
A. A Brief Synopsis of Cross-Motion on Section 113(c).
As more fully set forth in Defendants’ CROSS-MSJ MOTION at pp. 7-10,
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION
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CALRAC had a right under section 113(c) to offer for sale or other distribution (e.g.,3
rentals) photographs that Defendant either made itself, or could find – even
copyrighted photographs – as long as the use was limited to advertising a useful article
for sale or rental. Automobiles qualify as such articles due to their utilitarian function.
(§101). This is supported directly by the interpretation of section 113(c) in Bryant v.
Gordon, 483 F.Supp.2d 605, 611 (N.D.Ill. 2007). This decision recognized that
section 113(c) grants a right to a seller of useful articles to use copyrighted photos
depicting such articles taken by a professional photographer when defendants used
them in advertising for sale of those useful articles through the Internet. As Bryant
held, permission is granted by law – section 113(c). The Bryant Court explained:
“The rights of a copyright owner like [product photographer] Bryant
“do[] not include any right to prevent the making, distribution, or
display of pictures or photographs of [useful] articles in connection
with advertisements . . . related to the distribution or display of such
articles . . . .” 17 U.S.C.§ 113(c). A “useful article” is one that has an
intrinsic utilitarian function. Id. § 101. Id., 484 F.Supp. 2d at
613.(Emphasis added).
B. Section 113(c) Is A ‘Specif Exemption’ From Others’ Copyright Rights.
The Court in Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 557, fn. 6
(1985) recognized that Congress made comparable “specific exemptions” akin to fair
use for “public interest” reasons, e.g., §105 (no copyright in Government work).
Section 113(c) thus represents another such example where Congress recognized a
public interest justified conferring a ‘specific exemption’ from copyright owners’
rights. Thus Defendant CALRAC had a right to do what it did.
III. EVOX LACKS A NECESSARY EXCLUSIVE LICENSE TO SUE.
A. The Newly Discovered Hyperquest Decision.
The CROSS-MSJ MOTION at 9:27-10:2 and 14:13-17 asserted that EVOX must
have an exclusive license in writing in order to sue Defendant CALRAC. This means
(c) In the case of a work lawfully reproduced in useful articles that have been3
offered for sale or other distribution to the public, copyright does not include any
right to prevent the making, distribution, or display of pictures or photographs of
such articles in connection with advertisements.... (Emphasis added.) (17 U.S.C. §
113(c)).
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the automobile manufacturers must grant EVOX one of the exclusive rights under
section 106, (e.g., the right to make a derivative use by means of photographs) and the
manufactuers must promise that only EVOX will have that derivative use. In support,
Defendant CALRAC previously relied upon statutory construction. However,
subsequently, Defendant CALRAC has discovered a Seventh Circuit decision in
Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 383 (7th Cir. 2011) that directly
supports this same conclusion. The Seventh Circuit held that the Copyright Act
requires such an exclusive license from the copyright owner in order for a Plaintiff to
sue a third party upon a claim that turns on the Plaintiff’s right to make a copy or a
derivative use of a copyright owner’s work.
Below Defendant CALRAC reviews the analysis in Hyperquest, as this single
decision can determine the outcome of all the pending motions.
B. The Holding in Hyperquest.
The Seventh Circuit in Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 383 (7th
Cir. 2011) held that a Plaintiff cannot sue a third-party on a non-exclusive license to
either copy or to make a derivative use (which the Copyright Office calls “the
adaptation right”) of preexisting material. To be able to sue a third party, the Plaintiff4
must have obtained first an exclusive license to make a derivative use or make copies.
The Court reasoned that section 501(b) limits copyright infringement suits to only
actions upon which Plaintiff has one of the exclusive rights under section 106(1)-(3)
for the rights the Plaintiff is pursuing, e.g., on a derivative use of someone else’s
copyright.
Without such an exclusive license, the Court in Hyperquest said there is no
standing under section 501(b) to sue a third-party for infringement.
Because the Plaintiff Hyperquest had a non-exclusive license to make copies or a
derivative work (modifications it made to software), the Plaintiff Hyperquest lacked
Circular 14 of the Copyright Office says: “The derivative work right is often4
referred to as the adaptation right.” See Circular 14, Copyright in Derivative Works
and Compilations, page 1, at http://www.copyright.gov/circs/circ14.pdf
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the necessary exclusive right to sue a third-party for infringing copies of the software
or modifications (derivative uses) made by Plaintiff.
EVOX admits having no licenses at all for making these photographs from the
owners of the automotive designs and logos including no exclusive license.
D.SUF.OPP. ##16-21.
An exclusive license is crucial to EVOX’s standing here. It has engaged in either a
copy or derivative use of another’s copyright protect work. EVOX’s failure to have
any license from the automobile manufacturers means de facto it has no such license
in writing. A written license is necessary to transfer an exclusive license to make
copies or a derivative use, due to section 204(a). Effects Assocs. v. Cohen, 908 F.2d
555, 556, 558 (9th Cir. 1990).
Then without a written exclusive license, EVOX cannot have an “exclusive right”
required under section 501(b) to sue on what is in fact a derivative use right to make
photographs belonging to the automobile manufacturers.
Next follows a detailed discussion of the reasoning in Hyperquest, Inc. v. N'Site
Sols., Inc., 632 F.3d 377, 383 (7th Cir. 2011). It begins with looking at section 501(b).
C. Section 501(b) Requirement of An Exclusive Right.
Section 501(b) of the Copyright Act defines under what circumstances a copyright
owner has standing to bring a suit against infringing parties. For a plaintiff to assert a
claim for copyright infringement, a Plaintiff must be (1) the “legal or beneficial owner
of an exclusive right under a copyright” and (2) entitled “to institute an action for any
infringement of that particular right committed while he or she is the owner of it.”
When the Plaintiff lacks section 501(b) rights, this is the same as saying Plaintiff
lacks the necessary exclusive ownership rights in copyright to institute suit. See,
Maljack Productions, Inc. v. GoodTimes Home Video Corp., 81 F.3d 881,886 (9th Cir.
1996)(lack of valid ownership in copyright is lack of standing under section 501(b)).
The “ownership of a valid copyright” is the second element other than “originality”
that is necessary to pursue copyright infringement. Feist Publ'ns, Inc. v. Rural Tel.
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Serv. Co. (1991) 499 U.S. 340, 361.
D. Evox’s Use of Preexisting Copyright Works In Their Photographs
EVOX shamelessly admits its photographs are based upon images of designs of
automobiles (and necessarily their trademark logos) that belong to others. EVOX
SUF #2. There is no dispute possible this is happening. D.SUF.OPP. ## 21, 32-33. In
fact, the copying or derivative use is self-evident by simply looking at each of the 149
PHOTOGRAPHS (Ex. 1 to Del Tondo Decl.)(Doc. Control No. 43-7.)
At the same time, EVOX admits it had no license from the owners of the
automobile designs and logos to make photographs of them, and license their use to
others. D.SUF.OPP. ## 16-21. EVOX admits it did not have a license from these
owners to exclusively license such photographs to the public. D.SUF.OPP. #16.
Such designs and logos satisfy the minimal originality necessary to be copyright
protected. D.SUF.OPP. ##28-61. See, L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486,
490-491 (2d Cir. 1976) (“it has been established that mass-produced commercial
objects with a minimal element of artistic craftsmanship may satisfy the statutory
requirement of such a work.”)
This copyright protection of these preexisting works arises “automatically” under
the 1976 Act from the moment of the “time of their creation.” Harper & Row,5
Publrs. v. Nation Enters., 471 U.S. 539, 552 (1985)(“Among [the 1976 Act’s] other
innovations, it...extended statutory protection to all works from the time of their
creation.”)
As a result, EVOX is suing upon either a copy or a derivative use of the copyright
protected automobile designs owned by another.
In addition, EVOX also admits it had no license to use the trademark logos in the
Upon fixation in tangible form, the Court in S.O.S., Inc. v. Payday, Inc., 8865
F.2d 1081, 1085 (9th Cir. 1989) said that protection begins upon fixation: “Copyright
protection subsists from the moment the work is ‘fixed in any tangible medium of
expression.’ 17 U.S.C. § 102(a). Registration is not a prerequisite to a valid copyright,
although it is a prerequisite to suit. 17 U.S.C. § 408(a), § 411.” Likewise, the Court in
Morris v. Business Concept Inc., 99 Civ. 59, 2000 U.S. Dist. LEXIS 3835 (S.D.N.Y.
2000) at *13-14 said: “[C]opyright in a work now vests automatically in the author
once the work is ‘fixed in a tangible medium of expression.’”
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95 times they appear in the 149 PHOTOGRAPHS. D.SUF.OPP. ##19-21. These logos
are graphical illustrations protected under section 102. The Court can judicially notice
their trademark logo status, and their originality due to their variableness and
distinctiveness from other marks. See Defendant’s REQUEST FOR JUDICIAL
NOTICE. 6
As a result, in 95 instances, EVOX is suing upon photographs that EVOX either is
copying the logo designs or making a derivative use of the logo designs. D.SUF.OPP.
##55-61.
E. Exclusive Rights of Copyright Owners of Images in Evox Photographs.
In order to sue for copyright infringement on such uses, EVOX must prove that it
exclusively has one of the exclusive rights granted under section 106 to the copyright
owners of these automotive designs and logos which EVOX’s photographs were based
upon. Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 383 (7 Cir. 2011). th
The Ninth Circuit recently explained in Minden Pictures, Inc. v. John Wiley &
Sons, Inc., 795 F.3d 997, 1002 (9th Cir. 2015) that only an exclusive licensee of an
exclusive §106 right can sue in infringement upon such rights. It also explained that
the term “exclusive” licensee means that the licensee was promised by the copyright
owner “that the same permission will not be given to others.” 7
An exclusive license to be valid must also be in writing. Effects Assocs. v. Cohen,
908 F.2d 555, 556, 558 (9th Cir. 1990).
On the Cross-Motion, Defendant CALRAC filed a Request for Judicial Notice6
of each mark in the photographs and that their graphics are subject to automatic
copyright protection. Judicial notice of well-known copyright protected material is
well-established in copyright cases. Sobhani v. @Radical Media, Inc., 257 F. Supp. 2d
1234, 1235-36 n.1 (CD. Cal. 2003) (judicially noticing the film Castaway and
commercials for the fast food chain Jack-in-the-Box); Felix the Cat Prods, Inc. v. New
Line Cinema Corp., CV 99-9339, 2000 U.S. Dist. LEXIS 21763 at 4 (C.D. Cal. 2007)
(judicially noticing the film Pleasantville); Twentieth Century Fox Film Corp. v.
Marvel Ents., 155 F. Supp. 2d 1, 41 n.71 (S.D.N.Y. 2001) (judicially noticing the film
Star Wars).
The Court in Minden, 795 F.3d at 1005 (9th Cir. 2015) explained that an7
“exclusive” license “permits the licensee to use the protected material for a specific
use and further promises that the same permission will not be given to others.”
I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996). (Minden, 795 F.3d at 1005
(emphasis added.)
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Here, section 106 identifies three exclusive rights that one or the other is
necessarily being exercised by EVOX in preparing photographs of another party’s
copyright protected works – the right
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies ...to the public by sale or other transfer of
ownership, or by rental, lease, or lending;8
F. No Standing To Sue Upon Non-Exclusive License of Such Rights.
In Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 383 (7th Cir. 2011),
Plaintiff Hyperquest was given a license by the copyright owner to use source code of
a computer program that processed insurance claims, and to modify the same.
However, it was a non-exclusive license. Hyperquest sued defendants for infringing
on the alleged rights to copy, distribute copies, or on Hyperquest’s derivative use of
the software. The District Court dismissed because Plaintiff lacked the statutory
standing to sue on any of such rights under section 501(b)(infringement must be based
upon an “exclusive” right owned by the claimant). Hyperquest did not have any
exclusive right transferring any right to copy or distribute copies, or to make a
derivative use of the software upon which Hypertext was suing.
The Seventh Circuit affirmed. Its opinion first reviewed the three exclusive rights
under section 106 listed above. The Court found that Plaintiff was suing on several
such section 106 rights — to copy, modify (prepare a derivative use), or distribute
copies of the copyrighted software at issue. However, at the same time, the Court
affirmed the lower court determination that Hyperquest did not have an exclusive
license from the copyright owner to do any of these things.
The Court in Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 382 (7th Cir.
2011) explained that as a result, Hyperquest had no ownership interest to support its
suing a third-party for infringement. However, Hyperquest alleged rights to make
derivative uses, copies or to distributed copies. The Seven Circuit explained the
limitations on Hyperquest’s standing to sue a third party on such rights if not properly
Three other exclusive rights under section 106(4),(5) & (6) are not at issue8
here – rights involving phonorecords, sound recordings, literary, and dramatic works.
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transferred exclusively to it by the copyright owner of the software:
The three rights [under section 106] that are at issue in this case are the
right to reproduce the copyrighted work (#1), the right to prepare
derivative works based upon the copyrighted work (#2), and the right
to distribute copies of the work to the public (#3). These rights are
divisible, meaning that the owner may convey each one of them to a
different person. See 17 U.S.C. § 201(d)(2) ("Any of the exclusive
rights comprised in a copyright, including any subdivision of any of
the rights specified in section 106, may be transferred . . . and owned
separately."). Thus, if the exclusive right to reproduce (meaning
exclusive of the grantor as well as all third parties) were transferred to
A, the exclusive right to prepare derivative works were given to B,
and the exclusive right to distribute copies to the public were granted
to C, each transferee would be entitled to sue for infringement of its
particular right. The corollary to this rule is that a person holding a
non-exclusive license is not entitled to complain about any alleged
infringement of the copyright. See I.A.E., Inc. v. Shaver, 74 F.3d 768,
775 (7th Cir. 1996); 17 U.S.C. § 101 (defining a "transfer of copyright
ownership"); id. § 501(b) (providing that only the legal or beneficial
owner of an exclusive right may institute an action).
Because none of these rights were properly transferred to Hyperquest by an
exclusive license, Plaintiff Hyperquest could not sue a third party on what remained
the exclusive rights belonging solely to the copyright owner of the software.Here,
EVOX has registered a copyright on photographs that EVOX has used as if it can
freely copy or make derivative uses (e.g., photographs) without any license or even
permission from the automobile manufacturers. (D.SUF.OPP. ##16-21).
The consequence to EVOX is that because “a person holding a non-exclusive
license is not entitled to complain about any alleged infringement of the copyright”
(Hypertext, supra), then EVOX who holds no license at all has no standing to sue
anyone for infringing what is truly EVOX’s exercise of a derivative use right of the
automobile manufacturers. EVOX’s suit must be dismissed for lack of an ownership
of the exlusive right necessary to sue under section 501(b).
IV. EVOX CANNOT SUE ON INFRINGING REGISTRATIONS.
A. Evox’s Registrations Are Infringements.
Another hurdle for EVOX is that any claimed creation of even an original work
which uses a preexisting work belonging in copyright to another is an infringement.
An infringing creation, even if registered with the Copyright Office, confers no
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ownership rights to the claimant who snaps a picture of someone else’s copyright
protected work. See discussion below of Pickett v. Prince, 207 F.3d 402, 407 (7th Cir.
2000) and Anderson v. Stallone, Case No. 87-0592, 1989 U.S. Dist. LEXIS 11109,
(C.D. Cal. April 25, 1989)(summary judgment granted defendant) as well as Sobhani
v. @radical.media, Inc., 257 F. Supp. 2d 1234, 1240 (C.D. Cal. 2003)(summary
judgment granted defendant). See also, Alfred Bell & Co. v. Catalda Fine Arts, 74
F.Supp. 973, 977 (S.D.N.Y. 1947) (registered photographs of Plaintiff’s engravings
were infringing, and conferred no rights on photographer).
EVOX’s actions here are no different than the photographer who registered a
copyright in Alfred Bell & Co. v. Catalda Fine Arts, 74 F.Supp. 973, 977 (S.D.N.Y.
1947). The photographer Defendant took pictures of a sculptural work of original and
creative engravings made by the Plaintiff of old masters’ artwork. The Defendant
photographer registered his photographs of the engravings. The District Court
acknowledged the photographing process by Defendant was elaborate and scientific,
but the District Court felt it was obvious that this was “the pirating of the work of the
engraver....” The lesson since at least 1947 is that one cannot validly copyright a work
that infringes upon another’s copyright.
As next explained, EVOX acquires no exclusive copyright-right by registering a
work that in fact is either a copy or a derivative work which infringes upon the
underlying owner’s rights to make a copy or a derivative work. (This is aggravated by
the fact EVOX deliberately did not disclose to the Copyright Office that the
photographs were “based” upon preexisting works, and instead submitted them as if
no preexisting works were involved.)9
B. The Auto & Logo Designers’ Exclusive Rights Under Section 106.
Section 106 of Title 17 states in material part:
Subject to sections 107 through 122 [17 USCS §§ 107 through 122], the
owner of copyright under this title has the exclusive rights to do and to
Such deliberate action in violation of section 409(9) is the basis for9
invalidating all 64 purported registrations that support the 149 PHOTOGRAPHS, as
discussed in the CROSS-MSJ MOTION as well as below in Part V.
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authorize any of the following:
****
(1) to reproduce the copyrighted work in copies....;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies ...to the public by sale or other transfer of
ownership, or by rental, lease, or lending;
****
Thus, section 106 creates for the owner of the automobile designs and trademark
logos appearing in EVOX’s pictures three pertinent exclusive rights – the right to
reproduce copies, the right to prepare derivative works, and the right to distribute
copies.
Because EVOX had no proper authorization from the copyright owner, Nimmer
explains EVOX’s registrations are at least an infringement. As Nimmer explains:
If the pre-existing work that serves as the bases for a derivative or
collective is itself protected by copyright, then its unauthorized
incorporation into a derivative or collective work constitutes copyright
infringement. Nimmer on Copyright §3.06 at pg. 3-34.32 (2015)
(Emphasis added).
Likewise, the Ninth Circuit in United States v. Taxe, 540 F.2d 961, 965, fn. 2 (9th
Cir. 1976) quoted Nimmer to the same effect on a derivative use of a preexisting work
— that it necessarily means it is infringing if there was no consent:
[A] work will be considered a derivative work only if it would be
considered an infringing work if the material which it has derived
from a prior work had been taken without the consent of a copyright
proprietor of such prior work. It is saved from being an infringing
work only because the borrowed or copied material was taken with the
consent of the copyright owner of the prior work, or because the prior
work has entered the public domain." 1 M. Nimmer, The Law of
Copyright § 39, at 167. (Emphasis added.)
Thus, a derivative use is necessarily always an infringement unless there is proper
consent. An infringement confers no copyright rights; it only violates them.
Here EVOX had no consent from the copyright owners, as EVOX denies any
licenses whatsoever were obtained. D.SUF.OPP. ##16-21.
C. Evox Does Not Own The Rights Under Section 106 It Usurps.
In Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. (1991) 499 U.S. 340, 361, the Court
stated the two elements of ownership and originality in copyright infringement suits:
Not all copying, however, is copyright infringement. To establish
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infringement, two elements must be proven: (1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are
original. (Emphasis added.)
However, when one has registered a copyright in a work that infringes on an
exclusive right (e.g., a derivative use right) belonging to a copyright owner, the
registrant had “no right to obtain” such a copyright registration. Pickett v. Prince, 207
F.3d 402, 406 (7th Cir. 2000). See also, Anderson v. Stallone, Case No. 87-0592, 1989
U.S. Dist. LEXIS 11109 (C.D. Cal. Apr. 25, 1989) at *30-31 (summary judgment
granted defendant)(hereafter Stallone and Sobhani v. @radical.media, Inc., 257 F.
Supp. 2d 1234, 1240 (C.D. Cal. 2003). Thus, such a registration is not the “ownership
of a valid copyright” – the first element necessary to prove infringement in Feist.
In Pickett, the Plaintiff registered a copyright in a guitar in the shape of Prince’s
copyright-protected symbol of his name. Prince himself made a similar guitar. The
Plaintiff sued Prince for copyright infringement. The Court in Pickett explained why
Mr. Pickett had no rights in his copyright registration as follows:
“[Pickett] is unafraid to acknowledge that he is an infringer and to
content himself with arguing that his copyright extends only to the
original elements of the infringing work....But the only copyright that
Pickett claims Prince infringed is a copyright that Pickett had no right
to obtain, namely a copyright on a derivative work based on Prince's
copyrighted symbol. Id., 207 F.3d at 406, 407 (emphasis added).
Both Stallone and Pickett were followed in Sobhani v. @radical.media, Inc., 257
F. Supp. 2d 1234, 1240 (C.D. Cal. 2003)(summary judgment granted defendant). The
Court in Sobhani denied “copyright protection” to a parody artist (an aspiring video
commercial director) who without authorization made a parody of a Jack-in-the-Box
commercial. The parody artist sued in copyright another parody artist (a producer who
produced a parody commercial) for doing a substantially similar parody. The Central
District granted summary judgment to Defendant. The Court explained that the
Plaintiff’s copyright-registered parody was based upon the preexisting copyright-
protected commercial belonging to Jack-in-the-Box, and as a result, the parody
enjoyed “no copyright protection” ... “because Plaintiff used the previous work
without authorization...” Id.
Thus, in Sobhani, section 106 barred a copyright registrant from suing a third-party
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(i.e., just like Defendant CALRAC represents here) because the Plaintiff was suing
him upon an unauthorized derivative work of a preexisting copyrighted work owned
by Jack-in-the-Box. If one changes “Jack-in-the-Box” to Toyota, etc., Sobhani
signifies that EVOX has “no copyright protection” to sue Defendant CALRAC for
Plaintiff’s use of the previous works of Toyota, etc., without proper authorization.
D. The Court Should Give No Evidentiary Value to Evox’s Registrations.
The decisions in Stallone, Pickett, and Sobhani each represent the proper exercise
of discretion under section 17 U.S.C. §410(c) to disregard the three Plaintiffs’
copyright registrations. These courts denied copyright protection to sue upon a work
that infringed upon the derivative use rights of a copyright owner when when the
copyright owner was not involved, as here.
In such situations, 17 U.S.C. §410(c) states that even though a registration
provides a presumption of the validity of the copyright, the Court alone has the
“discretion” on what “evidentiary weight” to give the certificate of registration.10
Here, Your Honor is requested to give EVOX’s registration no weight at all as a
matter of law. Each of EVOX’s photographs infringe upon the copyright-protected
rights belonging to others, namely the owners of the auto designs and trademark logos
that appear in the 149 PHOTOGRAPHS.
When no weight is given the registrations, EVOX’s suit fails. EVOX does not have
the necessary ownership of an “exclusive right” to sue on a derivative use right
belonging to the automobile manufacturers, EVOX cannot sue Defendant CALRAC
under section 501(b).
E. Evox’s “Originality’ In Infringing Works Establishes No Ownership.
It appears that EVOX has a wrong idea that if it made an infringing but
original variant to a copyrighted work that EVOX’s work is somehow protected in
Section 410(c) provides: “In any judicial proceedings the certificate of a10
registration made before or within five years after first publication of the work shall
constitute prima facie evidence of the validity of the copyright and of the facts stated
in the certificate. The evidentiary weight to be accorded the certificate of a registration
made thereafter shall be within the discretion of the court.”
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copyright. However: “The case law... supports the conclusion that generally no part of
an infringing derivative work should be granted copyright protection.” Anderson v.
Stallone Case No. 87-0592, 1989 U.S. Dist. LEXIS 11109 (C.D. Cal. Apr. 25, 1989),
*29-30 (emphasis added.) This is hereafter referred to as Stallone.
In Stallone, the Central District Court of California granted summary judgment in
favor of the Defendant. The Court denied copyright standing to Plaintiff based upon
section 106(2) because the copyrighted work of Plaintiff infringed upon Defendant’s
exclusive right to make a derivative work under that same section 106(2). Plaintiff
could not protect original additions made without authorization of Mr. Stallone. The
Plaintiff registered a copyright in his treatment but the Court found it was an
infringing work even though it had been granted copyright registration. Such an11
infringing work confers no ownership even in an original adaptive derivative use.
The Central District Court in Stallone explained that an infringer cannot sue a
third-party or the original owner of the preexisting work based upon even a truly
original adaptation when the adaptation is itself an infringing derivative use: “He has
not and cannot provide this Court with a single case that has held that an infringer of
a copyright is entitled to sue a third party for infringing the original portions of his
work.” Id.12
The Court in Anderson v. Stallone, Case No. 87-0592, 1989 U.S. Dist. LEXIS11
11109 (C.D. Cal. Apr. 25, 1989) at *30-31concluded: “ Since Anderson's Work Is
An Unauthorized Derivative Work, No Part Of The Treatment Can Be Granted
Copyright Protection. Stallone owns the copyrights for the first three Rocky movies.
Under 17 U.S.C. section 106(2), he has the exclusive right to prepare derivative works
based on these copyrighted works. This Court has determined that Anderson's
treatment is an unauthorized derivative work. Thus, Anderson has infringed upon
Stallone's copyright. See 17 U.S.C. section 501(a).” (Emphasis in original).
The Court in Stallone also discussed section 103 which Plaintiff quoted out of12
context from section 106. The Plaintiff relied upon section 103'slanguage to claim an
original addition that creates a derivative work can create an independent copyright to
use the preexisting work without the owner’s consent. The Stallone court pointed out
that this would be in conflict with the exclusive rights in section 106. It cited that
Nimmer concurs: “As the House Report and Professor Nimmer’s treatise explain,
103(a) was not intended to apply to derivative works and most certainly was not an
attempt to modify section 106(2).” (Anderson v. Stallone, supra, Case No. 87-0592,
1989 U.S. Dist. LEXIS 11109, at *30-31.)
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The same holding as in Anderson was followed in Pickett v. Prince, 207 F.3d 402,
406 (7 Cir. 2000). As mentioned earlier, Mr. Pickett took the trademark logo of theth
singer-songwriter Prince, and made it into a guitar. Mr. Pickett copyrighted its use as a
guitar. Prince used his own logo symbol to likewise make a guitar. Mr. Pickett sued
Prince for infringement. The Seventh Circuit said that Prince had the copyright rights
in the trademark logo as a preexisting work before Mr. Pickett made his guitar. As a
result, Prince alone had the exclusive right of a derivative use under section 106(2) to
make a guitar from his symbol. The Court in dismissing Plaintiff’s copyright
infringement claim held: “So Pickett could not make a derivative work based on the
Prince symbol without Prince’s authorization even if Pickett's guitar had a smidgeon
of originality.” Id. (Emphasis added.) The Court rejected any notion that one who is
an “infringer” has a right to claim an original addition to a copyrighted work gives the
infringer a copyright in the derivative work. Instead, this violates the “exclusive” right
of the copyright owner under §106(2), it said, and affirmed dismissal of the suit.13
1. Infringing Photographs on Sculpture Art in Alfred Bell.
Thus, even an original copyrighted photograph of a prior original sculptural art
engraving – similar to what EVOX contends it can do here – made without proper
license from the owner of the sculptural art is itself infringing. See, Alfred Bell & Co.
v. Catalda Fine Arts, 74 F.Supp. 973, 977 (S.D.N.Y. 1947). In Alfred Bell, the District
Court found the photograph infringing even though the photographer’s effort involved
“a tedious process requiring skill and patience and is, therefore, rather expensive
compared with modern color photographic processes.” Id., at 974-75 On appeal, the
Second Circuit in Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 104-105
(2d Cir. 1951) agreed, rejecting the photographer’s argument he could acquire a right
to copy a three-dimensional engraving (a sculptural work) by means of a sophisticated
Pickett v. Prince, 207 F.3d 402, 406 (7th Cir. 2000) also addressed section13
103 stating Mr. Pickett “is unafraid to acknowledge that he is an infringer and to
content himself with arguing that his copyright extends only to the original elements
of the infringing work. But we do not read section 103(a) as qualifying the exclusive
right of the owner of the copyright of the original work to make derivative works
based on that work, the right conferred by section 106(2).”
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photographic process. The conclusion was that the photographer had no right to
enforce his copyrighted photographs against the owner of the copyrighted sculptural
works which he photographed. The District Court said to allow this would sanction
the “pirating of the work of the engraver”:
[W]e see no possible doubt that defendants, who did deliberately copy
the mezzotints, are infringers. For a copyright confers the exclusive
right to copy the copyrighted work- a right not to have others copy it.
EVOX is in no better position.
2. A Photographer Infringes Upon Another’s Derivative Use Right.
Another pertinent case to the facts here is Gaylord v. United States, 777 F.3d 1363,
1366 (Fed. Cir. 2015)(photograph of sculpture without consent violates section
106(2)). A photographer without proper authorization from the copyright owner took
a photograph of an original sculptural work. The sculptural work represented
numerous life-size Korean War soldiers walking through a field. It was called The
Column. The photographer waited for hours, and captured an eery early-morning
photograph of the Column looking like the soldiers were trudging through the snow.
The originality of the photographer’s work was unquestionable.
However, the photographer erroneously thought he had obtained a license from the
copyright owner of the sculptural work, but he did not. The photographer licensed the
use of the photograph to the Post Office. The Post Office put it on a popular stamp
that sold millions of copies. It turned out that the photographer had made an unwitting
unauthorized derivative use of the true copyright owner’s rights by means of his
photograph of the sculpture art. The Post Office was found as an infringer, and had to
pay damages on the sales of millions of stamps. 14
This is a useful precedent on two levels. It proves:
Gaylord v. United States, 777 F.3d 1363, 1366 (Fed. Cir. 2015) recognized14
the photograph at issue was an unauthorized derivative work: “It selected Mr. Alli's
photograph of The Column [i.e., a sculptural work] for the stamp face, and it paid Mr.
Alli a one-time fee of $1,500 for the right to use his photo. The Postal Service did not
seek Mr. Gaylord’s consent to use The Column—the photograph was a ‘derivative
work’ of The Column under 17 U.S.C. § 106(2)—before issuing the stamp in 2003,
and Mr. Gaylord never gave his consent.”
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1. A photograph of a sculptural work created by another is a derivative use that
belongs exclusively to the owner of the sculptural work under section 106(2);
2. Without authorization from the copyright owner of the sculptural work to make
the photograph, the photographer is an infringer, and so is anyone else who exploits
such derivative-use photograph.
In EVOX’s case, EVOX is an infringer even if it was like the photographer in
Gaylord, and made the most original and creative photograph imaginable. In Gaylord,
the photographer at least thought he obtained the right license for a derivative use. He
and the Post Office were wrong, and it resulted in a large liability for the Post Office
on millions of stamps. But EVOX admits it has no licenses and yet persists in this
claim. Consequently, as EVOX is an infringer due to its unauthorized derivative-use
photographs, it acquires no lawful ownership rights in the photograph, even the
original elements. Without an exclusive right upon which EVOX can sue, EVOX
lacks standing under 17 U.S.C. §501(b).
V. EVOX’S REGISTRATIONS ARE ENTIRELY INVALID.
In violation of the disclosure duty in section 409(9), EVOX deliberately chose not
to reveal to the Copyright Office material information about their photographs being
based upon preexisting works. EVOX then refused to provide any good faith basis for
not disclosing to the Copyright Office these preexisting works when asked in a
30(b)(6) deposition. This fits all the elements necessary to apply section 409(9) as a
ground to invalidate all of the registrations to which the 149 PHOTOGRAPHS
pertain. Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 456 (2d Cir.
1989)(summary judgment granted because applications deliberately failed to disclose
preexisting works in violation of section 409(9).)
Plaintiff EVOX said it did not disclose the preexisting works — automobile
designs, logos, etc. – for each of the 149 PHOTOGRAPHS in reliance upon advice of
counsel. Then when asked whether EVOX was willing to waive the privilege or
provide any justification, the EVOX’s 30(b)(6) witness, Mr. Thompson, refused in
deposition to give any justification for the failure to disclose to the Copyright Office.
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EVOX did so in reliance upon advice of current counsel to not respond if it were
necessary waive the attorney client privilege. Because EVOX’s Mr. Thompson said he
could not offer any justification without waiving the privilege, he would not respond.
Thus, EVOX’s deliberate decision not to disclose material facts to the Copyright
Office was based upon reliance upon advice of counsel. Yet EVOX refused to waive
the privilege to offer any explanation. D.SUF.OPP. ## 67-76.
Plaintiff EVOX’s registrations were thus deliberately procured by materially
misleading applications to the Copyright Office, without any good faith justification.
The reliance upon advice of counsel is no defense unless the communication is
disclosed to the adverse party in discovery. If such a party refuses to waive, the Court
has the right to prevent a later effort to waive. This leaves the trier-of-fact with only
one possible inference – bad faith. Under the case of Columbia Pictures Indus. v.
Krypton Broad. of Birmingham, Inc., 259 F.3d 1186, 1196 (9 Cir. Cal. 2001), theth
Ninth Circuit in a copyright infringement suit upheld the bar on a good faith defense
because defendant in discovery refused to waive the attorney-client privilege. The
District Court refused to allow the defendant later to waive the defense due to his prior
refusal in discovery to waive the privilege. The District Court’s ruling meant the fact
finder would have to conclude defendant was guilty of bad faith The Ninth Circuit
affirmed:
Here, Feltner sought to argue that he continued his infringing activities
based on the advice of his attorney, while at the same time refusing to
answer questions regarding relevant communications with counsel
until the “eleventh hour.” Under these circumstances, the district court
was within its discretion in precluding Feltner from invoking the
advice of counsel defense. (Emphasis added.)
The same principle applies here. EVOX admitted it deliberately did not disclose to
the Copyright Office any preexisting works. Had EVOX disclosed to the Copyright
Office that any of the 149 PHOTOGRAPHS were based upon preexisting works of the
automobiles, logos, and the public-domain backgrounds, the Copyright Office would
necessarily have scrutinized the photographs. The Copyright Office would then
examine to see what contribution was added that would render the photograph
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original. Under the slavish copy doctrine (see Part VII at page 23-25 infra), EVOX
would ordinarily be rejected for registration for an “accurate-as-possible” product
photograph. Hence, EVOX’s deliberate non-disclosure was material. EVOX’s refusal
to offer any good faith explanation in discovery means EVOX must now abide by the
legal consequences. Only one inference is left: EVOX’s decision of non-disclosure
was in bad-faith.
A copyright application requires in question six that the applicant disclose pre-
existing works that are reflected in the applicant’s derivative work, e.g., a sculpture or
graphic work or public domain items. See, Nimmer on Copyright §3.06 at 3-34.32
(2015)(Copyright Office requires disclosure in application of even public domain
works that are adapted so it can measure the degree of original contribution by
applicant.) This derives from 17 U.S.C. §409 (9) which states:
The application for copyright registration shall be made on a form
prescribed by the Register of Copyrights and shall include –
(9) in the case of a compilation or derivative work, an identification of
any preexisting work or works that it is based on or incorporates, and
a brief, general statement of the additional material covered by the
copyright claim being registered;.... (Emphasis added.)
In the Second and Ninth Circuits, only an “accidental” failure to disclose does not
require invalidation of the registrations. See, Lamps Plus, Inc. v. Seattle Lighting
Fixture Co., 345 F.3d 1140, 1145 (9 Cir. 2003). The Second Circuit earlier stated theth
same principle in affirming summary judgment. Iit held that the registrations were
invalid due to plaintff’s violating the duty to disclose preexisting works under section
409 (9) on its copyright applications. The Second Circuit in Whimsicality, Inc. v.
Rubie's Costume Co., 891 F.2d 452, 456 (2d Cir. 1989) explained:
It is the law of this Circuit that the “knowing failure to advise the
Copyright Office of facts which might have occasioned a rejection of
the application constitutes reason for holding the registration invalid
and thus incapable of supporting an infringement action.” Eckes,
supra, 736 F.2d at 861-62 (quoting Russ Berrie & Co. v. Jerry Elsner
Co., 482 F. Supp. 980, 988 (S.D.N.Y. 1980)). Faced as we are with that
exact situation in the instant case, we hold that Whimsicality, because
of its misrepresentations, does not have valid copyrights capable of
enforcement. (Emphasis added.)
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Here, EVOX admitted its deliberate non-disclosure. This means it was a “knowing
failure” to advise the Copyright Office of “facts which might have occasioned
rejection of the application.” It was not an accident. Here, because the Copyright
Office’s job is to pass upon the “originality of the works submitted” (Gener-Villar v.
Adcom Group, Inc., 560 F.Supp.2d 112, 126 (D.P.R. 2008)), EVOX’s refusal to
disclose the preexisting works clearly amounts to a material misrepresentation to the
Copyright Office.
Thus, summary judgment in the Cross-Motion against EVOX is proper. The denial
of EVOX’s Motion for Summary Adjudication here is likewise proper. Each copyright
registration was obtained on a fraudulent application.
VI. EVOX’S DMCA CLAIM FAILS.
Section 1202(b)(1) relates to violations involving removal of copyright
information. It does not apply when the copyright registrations are invalid. Thron v
Harpercollins Publrs., In c., 01 Civ. 5437, 2002 U.S. Dist. LEXIS 13670, *4-5
(S.D.N.Y. 2002). Here, the registrations are invalid because either (a) the §409(9) bar
applies; or (b) because EVOX lacks the necessary exclusive license in writing to
render valid EVOX’s registrations of a work to makes use of a derivative use right of
another; or (c) because EVOX registered works which themselves were infringing
under section 106, and hence invalid.
Furthermore, the elements of a violation of §1202(b)(1) on removal of copyright
information cannot be made out here. Plaintiff EVOX’s motion at 9:19-25 correctly
quotes Imageline, Inc. v. CafePress.com. Inc., No. CV 10-9794, 2011 U.S. Dist.
LEXIS 39828, at *17 (C.D. Cal. Apr. 6, 2011) the elements as follows:
To state a claim for removal of CMI [i.e., copyright management
information] under 17 U.S.C. § 1202(b)(1), a plaintiff must allege that
a defendant: (1) without authority of the copyright owner or the law;
(2) intentionally removed or altered CMI; (3) knowing or having
reasonable grounds to know that the removal will induce, enable,
facilitate, or conceal an infringement of the federal copyright laws.
17 U.S.C. § 1202(b)(1).
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Here, the Declaration of Steve Vahidi entitles him to summary judgment because it
proves that none of these elements is present, let +alone any one of them.
The first element does not apply. Mr. Vahidi was correct that he had the authority
of the law to remove copyright information in order to use a photograph in product
advertising under section 113(c). See Part II, supra. See, Leveyfilm, Inc. v. Fox Sports
Interactive Media, LLC, CV 10-9794, 2014 U.S. Dist. LEXIS 92809, at *48-49
(N.D.Ill. 2014)(“Since Fox’s purpose in using the photo is protected by the fair use
defense, it is illogical to also conclude that Fox intended to contribute to or conceal an
infringement.”)
The second and third elements also do not apply but for multiple reasons.
First, Mr. Vahidi’s believed at the time that he had a legal right to use any
photograph for product advertising, and that copyright laws did not apply to such a
use. D.SUF.OPP. ## 101, 103. He cannot “reasonable know” he was in the wrong
when his belief is confirmed by the existence of section 113(c) to the same effect.
Leveyfilm, supra.
Moreover, Mr. Vahidi explained he had no idea that when he instructed the
removal of EVOX IMAGES that he was removing a copyright symbol. The version of
the 149 PHOTOGRAPHS downloaded and used on the CALRAC website were much
smaller than the registered versions shown by EVOX to Mr. Vahidi at his deposition.
Defendant CALRAC and Mr. Vahidi did not recognize any copyright symbol on the
resolution of the photographs that had been downloaded. D.SUF.OPP. #102. Thus,
when Defendants instructed the removal of EVOX IMAGES (with the symbol
connected to the E in EVOX), Defendants did not intentionally remove the copyright
symbol with the intent to conceal or contribute to copyright infringement.
D.SUF.OPP. #102.
Thus, contrary to EVOX’s inferences sought for at page 7 of its Motion for
Summary Adjudication, the admissions EVOX sought from Defendants did not ask
whether the removal of the copyright symbol was intentionally removed, or knowingly
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removed to conceal, etc., copyright infringement. The admissions only asked whether
the removals in fact happened. Hence, for similar reasons that summary judgment was
granted defendants in Gordon v. Nextel Communs, 345 F.3d 922, 926-27 (6 Cir.th
2003) – the defendants did not knowingly distribute copyrighted works without
copyright information under §1202 (b)(3), Defendant CALRAC and Mr. Vahidi are
entitled to summary judgment under §1202(b)(1) as well.
VII. EVOX’S WORKS LACK ORIGINALITY.
A. The Wiki Evox Submitted Supports Slavish Copying Took Place.
Defendant’s CROSS-MSJ MOTION at pp. 18-23 demonstrates EVOX’s
photographs are slavish copies, and lack the requisite originality to support copyright
infringement. Defendant CALRAC relied upon numerous summary judgment rulings
in the product-photography field that support this slavish copy doctrine applies here.
When the output is obviously as “accurate as possible” to depict a product, it is not
subject to copyright protection. Defendant CALRAC refers the Court to the extensive
discussion of the following cases at pp. 18-23 of CROSS-MSJ MOTION: Bridgeman
Art Library v. Corel Corp., 36 F.Supp.2d 191, 197 (S.D.N.Y. 1999); ATC Distribution
Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700, 712 (6th
Cir. 2005) and J. Thomas Distribs., Inc. v. Greenline Distribs., Inc., No. 95-2100,
1996 U.S. App. LEXIS 29035, at *5-6 (6 Cir. 1996); Kolody v. Simon Mktg., 97 CVth
0190, 1998 U.S. Dist. LEXIS 14229, at *23-24 (N.D.Ill. 1998).
There is one additional piece of evidence. EVOX provided this evidence in its own
moving papers. This is a sealed document that EVOX titles WIKI. See EVOX’s SUF
##4,5, 7. The WIKI falls right within Feist’s description of works of “merely trivial”
originality because its production is “so mechanical or routine as to require no
creativity whatsoever.” (Feist, supra, 499 U.S. at 345)(emphasis added).
The WIKI is laid out like a Wikipedia article with precise instructions on exactly
every setting of angle, lighting, poses, etc. Clearly, slavish copying is going on. The
instructions are aimed at the most precise and clear and as accurate as possible copy of
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the image of a car. It is a good ‘xerox’ job that makes every photograph – no matter
which employee does the work for hire – look identical to all other EVOX
photographs. EVOX’s WIKI is no different than a WIKI online manual on the best
settings on how to use a copier at the office to set contrast, lighting, darkness, dpi, etc.
Are we going to give copyright protection to photocopies of books with better
mechanical and routine copy-settings of pages without a derivative use license
regardless of the fact this would rip off the contents of the book within the xerox? Of
course not. This is exactly what the Supreme Court meant in Feist by “mechanical and
routine” copying with “trivial” variations. EVOX cannot be allowed to copyright
slavish copies, no matter how much “sweat of the brow” it insists applies. The
Supreme Court in Feist expressly rejected the “sweat of the brow” theory of copyright
which would protect subject matter that was expensive and time-consuming to
prepare. 499 U.S. at 352-56. Instead, it said: “Copyright rewards originality, not
effort.” Id. at 364. (Emphasis added.)
B. Plaintiff’s Expert is Mistaken On What He is Supposed to Look At.
Plaintiff EVOX supposedly provides proof of originality through Plaintiff’s expert,
Mr. Sedlik. In ¶ 17 of Mr. Sedlik’s declaration, he opines on the appearance of speed,
sleekness, etc., that EVOX photographs in general supposedly evince due to ‘creative’
decisions. But he is mistaken as a matter of law on what to look at. He is looking at15
what the car in the photograph exhibits, not what the photograph without the
automobile would exhibit. This error pervades his entire Declaration.
D.SUF.OPP.#105.
A commercial product in a photograph is to be subtracted out to analyze whether
what remains in the photograph is original. Meshwerks, Inc. v. Toyota Motor Sales
U.S.A., 528 F.3d 1258, 1265-1266 (10th Cir. 2008)(“an accurate portrayal of the
This expert never says he is precisely speaking about the 14915
PHOTOGRAPHS. He is talking in general. Hence, his opinions are not relevant.
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unadorned bottle could not be copyrighted,” and must be “filtered out,” citing16
Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 765, 766 (9th Cir. 2003) (analysis of
originality is after “subtracting the unoriginal elements” namely the “photographing of
the Skyy bottle”). The same rule applies outside product photography to measure
originality. In Sobhani v. @radical.media, Inc., 257 F. Supp. 2d 1234, 1240 (C.D. Cal.
2003), the Court granted summary judgment to defendant who was sued upon a
parody of a Jack-in-the-Box Commercial. The Court filtered out what was not original
with the Plaintiff, and found what remained had insufficient originality, and granted
summary judgment for defendant: “If the proprietary Jack-in-the-Box elements are
ignored, all that remains is a largely unoriginal and elementary spoof of the
(copyrighted) Cast Away movie.” Id., 257 F.Supp. at 1241 (emphasis added).
Rather, it is Defendant CALRAC’s expert, Mr. Takata, who made the right
analysis. He subtracting out the the unoriginal elements that EVOX did not create in
the photograph. From what remained, he concluded it involved unoriginal stock poses,
backgrounds, and lighting. D.SUF.OPP. ## 77-93.
VII. CONCLUSION.
Defendants CALIFORNIA RENT-A-CAR and STEVE VAHIDI respectfully
request this Court eny EVOX’s request for summary adjudication, and grant
Defendants’ motion for summary judgment, or partial summary adjudication.
DEL TONDO & THOMAS
Dated: June 6, 2016 _________________________________
Douglas J. Del Tondo, Esq.
Attorneys for Defendants,
CALIFORNIA RENT-A-CAR, INC. and
STEVE VAHIDI
“The teaching of Skyy I and II [in Ninth Circuit], then, is that the vodka bottle,16
because it did not owe its origins to the photographers, had to be filtered out to
determine what copyrightable expression remained.” Meshwerks, Inc. v. Toyota Motor
Sales U.S.A., 528 F.3d 1258, 1266 (10th Cir. 2008)(emphasis added).
DEFENDANTS' OPPOSITION TO PLAINTIFF’S MOTION FOR SUMMARY ADJUDICATION
25
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PROOF OF SERVICE
STATE OF CALIFORNIA, COUNTY OF ORANGE
I am employed in the County of Orange, State of California. I am over the age of 18 and not a
party to the within action; my business address is 2201 Dupont Drive, Suite 820, Irvine, California
92612. I am an attorney admitted to practice before the bar of this court at whose direction the
service was made.
On the Date of Service indicated below, I served the foregoing document(s) described on the
person(s) listed below in the action of Evox Productions LLC v. California Rent-A-Car by sending a
PDF version to:
Jonathan Gottfried, Esq.
BROWNE GEORGE ROSS LLP
2121 Avenue of the Stars, Suite 2400
Los Angeles, California 90067
Fax: (310) 275-5697
jgottfried@bgrfirm.com
Counsel for Plaintiff
BY CM/ECF NOTICE OF ELECTRONIC FILING: I electronically filed the document(s) with
the Clerk of the Court by using the CM/ECF system. Participants in the case who are registered
CM/ECF users will be served by the CM/ECF system. Participants in the case who are not registered
CM/ECF users will be served by mail or by other means permitted by the court rules.
Date of Service: June 6, 2016
Executed on June 6, 2016, at Irvine, California.
I declare under penalty of perjury under the laws of the State of California and the United States
of America that the foregoing is true and correct.
Douglas J. Del Tondo
Case 2:15-cv-08046-MWF-RAO Document 45 Filed 06/06/16 Page 32 of 32 Page ID #:1343
