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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’ REPLY TO
PLAINTIFF’S OPPOSITION TO
DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT AND / OR
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 Reply to the Opposition of Plaintiff EVOX
PRODUCTIONS, LLC (“EVOX”)’s to Defendant’s Motion for Summary Judgment,
or Partial Summary Adjudication, Dkct. Control Number 44.
THEREOF; DECLARATIONS OF JONATHAN GOTTFRIED, BARRY
THOMPSON & JEFFREY SEDLIK, Doc. Control No. 34.
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
Case 2:15-cv-08046-MWF-RAO Document 47 Filed 06/13/16 Page 1 of 32 Page ID #:1399
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TABLE OF CONTENTS
PAGE
OVERVIEW OF ARGUMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
I. DEFENDANT COMES WITHIN SECTION 113(c)... . . . . . . . . . . . . . . . . . 1
A. Evox' Stretches Section 113(c) to Awkwardly
Distinguish Two Decisions... . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
B. The True Basis of the Holding in Bryant... . . . . . . . . . . . . . . . . . . . . . . . 2
C. The Legislative History and Background Agrees.. . . . . . . . . . . . . . . . . . 4
D. Evox' Improper Rules of Construction in ‘Fair Use' Do Not Apply.. . . . 5
E. Section 113(c) Does Not Overrule Skyy I.. . . . . . . . . . . . . . . . . . . . . . . . 5
F. ‘Fair Return for Labor' Argument Rejected by Supreme Court.. . . . . . . 5
G. ‘Can Section 113(c) Apply to Artist's Product Paintings?. . . . . . . . . . . . 6
II. EVOX TURNS AROUND AND EMBRACES SECTION 113(c)... . . . . . . . . 7
III. EVOX MADE DERIVATIVE USES OF OTHERS' WORKS... . . . . . . . . . . . 8
A. Evox Has Unwittingly Admitted A Derivative Work. .. . . . . . . . . . . 8
1. WHY DOES DERIVATIVE USE MATTER?. . . . . . . . . . . . . . . . . . . . . . 9
B. Evox Is Wrong that Skyy I Is A Hard and Fast Rule About Useful
Articles.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
C. Evox Misleads that A Useful Article
Never Has Copyright Protection.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
D. Ornamental Designs (Steering Wheels, Grilles) Are Protected. . . . . . . 14
E. Protection for Decorative Flourishes & Swirls
Within A Shape of A Car. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
F. Evox's Errs that A Pre-Production Model Is Tested Like A Useful Article
Just Because Identically Used Later in A Useful Article... . . . . . . . . . . 15
1. THE MAZER RULE ON PRE-PRODUCTION MODELS. . . . . . . . . . . . . 15
2. EVOX'S DISTORTED READING OF OMEGA. . . . . . . . . . . . . . . . . . . . 18
IV. COPYRIGHT PROTECTION OF TRADEMARKS... . . . . . . . . . . . . . . . . 18
V. EVOX'S ‘CONSENT' ARGUMENT FOR DERIVATIVE USE... . . . . . . . 20
VI. EVOX'S PHOTOS LACK ‘ORIGINALITY.'. . . . . . . . . . . . . . . . . . . . . . . . 21
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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PAGE
VII. EVOX'S FAILURE TO DISCLOSE TO THE COPYRIGHT OFFICE. . . . 22
VIII. EVOX'S DCMA CLAIMS FAIL.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
IX. EVOX'S HAS NO RIGHT TO DIRECT OR INDIRECT PROFITS... . . . . 24
X. CONCLUSION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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TABLE OF AUTHORITIES
CASES PAGE
Chestang v. Yahoo Inc., No. 2:11-CV-00989-MCE,
2012 WL 3915957, at *5 (E.D. Cal. Sept. 7, 2012) . . . . . . . . . . . . . . . . . . . . . . . 19
Bryant v. Gordon, 483 F.Supp.2d 605, 611 (N.D.Ill. 2007).. . . . . . . . . . . . . . . . . . . 1-4
CDN Inc. v. Kapes, 197 F.3d 1256 (9th Cir. 1999). . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
DC Comics v. Towle, 989 F.Supp.2d 948 (C.D.Cal. 2013) . . . . . . . . . . . . . . . . . 14
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990).. . . . . . . . . . . . . . . . . . . 10
Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) . . . . 5,8,10-11,18-19, 21
Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003) .. . . . . . . . . . . . . . . . . . 22
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) . . . . . . . . . . . . . . . . . 5
Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890, 893 (9th Cir. 1983) .. . . . . . . . . 14, 15
Gaylord v. United States, 777 F.3d 1363 (Fed.Cir. 2015).. . . . . . . . . . . . . . . . . . 12
Gener-Villar v. Adcom Group, Inc., 560 F.Supp.2d 112 (D.P.R. 2008) . . . . . . 22-23
Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539 (1985). . . . . . . . . . . . . . . 12
Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377 (7th Cir. 2011).. . . . . . . . . . 9, 21
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976). . . . . . . . . . . . . . . . . . . 12
Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . . . 4-5
Lenz v. Universal Music Corp., 815 F.3d 1145(9 Cir. 2016).. . . . . . . . . . . . . . . . . . 21th
Mackie v. Rieser, 296 F.3d 909 (9 Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24th
Major v. Sony Music Entertainment, Inc. 1992 U.S. Dist. LEXIS 12316
(S.D.N.Y. Aug. 17, 1992, 92 Civ. 2826).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Mazer v. Stein , 347 U.S. 201 (1954) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15-17
Meshwerks, Inc. v. Toyota Motor Sales U.S.A.,
528 F.3d 1258 (10th Cir. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21-23, 24
Minden Pictures, Inc. v. John Wiley & Sons, Inc.,
795 F.3d 997 (9th Cir. 2015) ... . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Omega S.A. v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015) .. . . . . . . . 17-18
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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Rosenthal v. Stein, 205 F.2d 633, 635 (9th Cir. 1953) .. . . . . . . . . . . . . . . . . . . . . . . . 15
Schrock v. Learning Curve Int’l, Inc., 586 F.3d 513 (7 Cir. 2009) .. . . . . . . . . . . . . 21th
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) .. . . . . . . . 5, 19
S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989).. . . . . . . . . . . . . . . . . . . . 13
Smith & Hawken, Ltd. v. Gardendance, Inc., No. C 04-1664 SBA,
2005 WL 1806369, at *2 (N.D. Cal. July 28, 2005). . . . . . . . . . . . . . . . . . . . . . . 14
Whimsicality, Inc. v. Rubie's Costume Co.. 891 F.2d 452 (2d Cir. 1989) . . 13,23-24
CONSTITUTIONAL PROVISIONS
U.S.Constitution, Art. 1, §8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
STATUTES
17 U.S.C. § 101 (“Useful Article”). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3, 16, 17
17 U.S.C. § 101 (“Pictorial, graphical, and sculptural works”). . . . . . . 9, 11-12, 14, 16
17 U.S.C. § 101 (“Derivative work”). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
17 U.S.C. § 102(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
17 U.S.C. § 106(1).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
17 U.S.C. § 106(2).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 13, 20-21, 23
17 U.S.C. § 107. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4-5, 21
17 U.S.C. § 113(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
17 U.S.C. § 113(c). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1-8, 20-21
17 U.S.C. § 120. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
17 U.S.C. § 204(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11, 13
17 U.S.C. § 409 (9). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9, 23-24
17 U.S.C. § 410(c)). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
17 U.S.C. § 501(b).. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 21
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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REGULATIONS & MANUALS FROM THE COPYRIGHT OFFICE
37 C.F.R. § 202.10 (a) (2016)). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16-18, 20
37 C.F.R. § 202.10 (b) (2016)). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Compendium of U.S. Copyright Offices Practice (2014) §313.4(A)... . . . . . . . . . . . . 24
Compendium of U.S. Copyright Offices Practice (2014) §313.4(A)... . . . . . . . . . . . . 23
Compendium of U.S. Copyright Offices Practice (2014) §313.4(J).. . . . . . . . . . . . . . 19
Compendium of U.S. Copyright Offices Practice (2014) §606.. . . . . . . . . . . . . . . . . . 19
Compendium of U.S. Copyright Offices Practice (2014) §906.4.. . . . . . . . . . . . . . . . 15
Compendium of U.S. Copyright Offices Practice (2014) §907.1.. . . . . . . . . . . . . . . . 23
Compendium of U.S. Copyright Offices Practice (2014) §907.2.. . . . . . . . . . . . . . 9-10
Compendium of U.S. Copyright Offices Practice (2014) §913.. . . . . . . . . . . . . . . . . . 19
Compendium of U.S. Copyright Offices Practice (2014) §919.. . . . . . . . . . . . . . . 16-17
Compendium of U.S. Copyright Offices Practice (2014) §919.1.. . . . . . . . . . . . . . . . 24
Compendium of U.S. Copyright Offices Practice (2014) §924.2(A)... . . . . . . . . . . . . 14
Compendium of U.S. Copyright Offices Practice (2014) §924.2(B)... . . . . . . . . . . . . 24
LEGISLATIVE AUTHORITIES
House Report No. 94-1476 under 17 U.S.C. §113 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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OVERVIEW OF ARGUMENT
First, EVOX will argue that Defendant CALRAC cannot invoke 17 U.S.C. §
113(c) – the exemption to use copyrighted photographs to advertise useful articles one
offers for sale or rent. (Hereafter all statutory references are to Title 17.) EVOX makes
an elaborate argument which includes that it would be unconstitutional, deprive
EVOX of its labor, etc. Then later, when EVOX realizes it has no licenses for a
derivative use, and should lose on an unlawful derivative use, EVOX embraces
section 113(c). It claims that this section gives EVOX a legality to make derivative
works that exclusively belong to the car makers. It does not, as discussed below.
Second, EVOX claim to ‘originality’ for its photographs has also dissolved away.
Our motion proved EVOX’s photographs fit the long-line of product photography
cases finding them slavish copies, and not protectible. EVOX cites in response
Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000). However, there was no
issue of slavish copying raised there. EVOX otherwise retreats into assertions that its
experts say a ‘creative process’ is going on. But in Meshwerks, Inc. v. Toyota Motor
Sales U.S.A. (10th Cir. 2008) 528 F.3d 1258, it found slavish copying, and held:
“creative decision-making in the process is insufficient to render the product
original.” Id., 528 F.3d at 1268 n.10.
Third, EVOX still offers no explanation at all for its non-disclosure of preexisting
works. It will not waive its attorney client privilege. As the Copyright Office also
applies the slavish copy rule, it is clear why EVOX did not disclose the cars & logos.
Finally, EVOX does not respond on the direct or indirect infringer profits, claiming
that it is related to future discovery on the amount of profits. Instead, Defendants’
motion is based upon the lack of a causal connection, not on the amount of profits.
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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I. DEFENDANT COMES WITHIN SECTION 113(C).
A. Evox’ Stretches Section 113(c) to Awkwardly Distinguish Two Decisions.
EVOX absurdly claims section 113(c) exempts from copyright protection only a
photograph that is imprinted on a useful article. EVOX is making this absurd
argument so as to distinguish Bryant and Major. In each case, the useful articles1 2
depicted in the advertisement happened to also involve a photograph imprinted on the
useful article(s). But this had nothing to do with the outcome.
In Bryant, the first photograph in the advertisement – the material one for
applying section 113(c) — itself was of a notecard, calendars, etc. It was a photograph
of the useful article for sale. However, a second photograph just so happened to be
within the notecard, calendars, etc. This latter fact had nothing to do with the outcome.
In Major, the advertisement had a picture of a video box cover along with text. It
just so happened that the photographic representation of the video box cover in the
advertisement also contained a photograph within the box cover itself.
In both cases, the exemption was the advertising of a useful article – notecards,
calendars, and a video – by means of an advertising picture or photograph. EVOX has
pointed at a distinction without a difference.
When the statute is correctly applied, EVOX has admitted the facts necessary for
Defendant CALRAC to prevail. EVOX admits that its photographs are “photographs
of useful articles.” (EVOX OPPOSITION at 5:15) (hereafter “OPP”).
EVOX’s concession is determinative of section 113(c). As explained below,
section 113(c) clearly applies to restrict the copyright protection of photographs of
useful articles. It has nothing to do with restricting protection of a useful article only if
a photograph appears in or on the useful article itself.
Bryant v. Gordon, 483 F. Supp. 2d 605, 613 (N.D. Ill. 2007).1
Major v. Sony Music Entertainment, Inc. 1992 U.S. Dist. LEXIS 12316, at *72
((S.D.N.Y. Aug. 17, 1992, 92 Civ. 2826).
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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B. The True Basis of the Holding in Bryant.
Given EVOX’s distorted reading of Bryant, it is important to review its holding
and facts. The issue in Bryant was the exemption from copyright protection if one
used a copyrighted photograph of a useful article to sell or distribute that useful
article. The Court in Bryant clearly held that section 113(c) provides an exemption for
the use of a copyrighted photograph in an advertisement of a useful article.
In Bryant v. Gordon, 483 F. Supp. 2d 605, 613 (N.D. Ill. 2007), the Court
addressed section 113(c) in a case where the Defendants used photographs by a
professional photographer found on the webserver purchased from the photographer
by the defendants. The defendants used the product photographs which the Court said
were owned in copyright by the professional photographer. The Court determined
under section 113(c) that Plaintiffs’ copyrighted photographs of useful articles used
for purpose of selling the articles were not infringed upon. The Court said:
[The Defendants’] website depicted, among other things,
t-shirts, desk clocks, computer mousepads, calendars, and
notecards. These items likely qualify as ‘useful articles.’ To
the extent Gordon and Mach 1, LLC acquired such merchandise
via the asset sale approved by the bankruptcy court, they were,
in all likelihood, entitled to depict it in order to advertise it for
sale, including over the Internet. Id., 483 F.Supp. 2d at 613.
The District Court explained first the scope of section 113:
[Defendants] nonetheless may have been entitled, under another
provision of the copyright laws, to display at least some of the items
they acquired to advertise them for sale. The rights of a copyright
owner like 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).
Then the District Court explained the rights of the defendants to use the copyright
protected photographs of the useful articles under section 113(c) to sell such articles:
Though it is unclear to the Court exactly what was displayed on the
website, Bryant's second amended complaint alleges that the website
depicted, among other things, t-shirts, desk clocks, computer
mousepads, calendars, and notecards. These items likely qualify as
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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“useful articles.” To the extent [Defendants] acquired such
merchandise via the asset sale approved by the bankruptcy court, they
were, in all likelihood, entitled to depict it in order to advertise it for
sale, including over the Internet. (Emphasis added.)
Likewise here, Defendant CALRAC is alleged to have done the same thing as the
defendants in Bryant v. Gordon, supra. As the Court can see, this decision’s holdings
have nothing to with the pictures on the calendars, notecards, etc. Each determination
in Bryant involved the photo of the useful article found on the Plaintiff’s webserver.
C. The Legislative History and Background Agrees.
Section 113(c) clearly exempts from any infringement to anyone the use of a
photograph of a useful article to sell or distribute it, including a copyright protected
photograph, such as in Bryant. Section 113(c) reads in full:
(c) In the case of a work lawfully reproduced in useful articles that
have been 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 or commentaries related to the distribution or display of
such articles, or in connection with news reports.
A useful article is defined in section 101:
A ‘useful article; is an article having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey
information. An article that is normally a part of a useful article is
considered a ‘useful article.’
The Court in Bryant aptly summarized both statutes when read together:
The rights of a copyright owner like 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. (Bryant v. Gordon, 483 F. Supp. 2d 605, 613 (N.D.
Ill. 2007).
Congress’ comments in H.R. 94-1476 support the same. It is not about exempting
from copyright protection a photograph of only useful articles with photographs also
on them, e.g., a coffee mug. Instead, Congress introduces section 113(c) by saying
section 113 must address the “image of a useful article.” It does not speak of “an
image on a useful article,” as EVOX contends is its aim. Congress says:
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The broad language of section 106(1) and of subsection (a) of section
113 raises questions as to the extent of copyright protection for a
pictorial, graphic, or sculptural work that portrays, depicts, or
represents an image of a useful article in such a way that the
utilitarian nature of the article can be seen. (Emphasis added.)
Then the House Report explained the intended scope of section 113(c):
“Section 113(c) provides that it would not be an infringement of
copyright, ... to make, distribute or display pictures of the articles in
advertising....” (Emphasis added.)
Thus, under the House Report’s categorization of section 113(c), a picture that
“portrays, depicts, or represents an image of a useful article” – referred to also as
making, distributing or displaying “pictures of the articles in advertising,” then
“would not be an infringement of copyright” to do so “in advertising.”
Congress’ sole focus is on the picture or a photograph of the useful article, not a
picture or photograph on the useful article, as EVOX contends.
D. Evox’ Improper Rules of Construction in ‘Fair Use’ Do Not Apply.
EVOX further contends that Your Honor should overlay fair use factors, and thus
construe narrowly section 113(c). In fair use under section 107, EVOX contends that
one of the factors that does not favor fair use is if the use is a commercial purpose.
But Congress in section 113(c) was addressing a specific situation that it
determined the use was “fair.” This is unlike section 107 where fair use involves the
balancing of many factors by a trier-of-fact to determine whether a use was ‘fair.’
On a similar specific exemption in section 120, the Ninth Circuit said in Leicester
v. Warner Bros., 232 F.3d 1212, 1219-20 (9th Cir. 2000) that when Congress tailors a
specific exemption from copyright rights, Congress’ intention is different than a
balancing test under fair use. Congress instead specifically intends to “shift from the
prior regime of relying on ‘ad hoc determinations’ of fair use” to simply focus upon
the specifics of the exemption. Id. The Ninth Circuit then said that Congress “[h]aving
done this, it would be counterintuitive to suppose that Congress meant to restrict” the
exemption any further by resort to any ad hoc fair use factors. Id.
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E. Section 113(c) Does Not Overrule Skyy I.
Next, EVOX contends that if Your Honor applies the language of section 113(c) to
permit Defendant CALRAC’s use, the Court would “effectively be overruling
Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000).” (EVOX OPPOSITION
at 2:3-4.) This is absurd. Section 113(c) was neither considered nor discussed in Skyy
I. Nor did the facts in Skyy I involve a public advertising by a person for sale or rent of
a useful article. Two photographers of the same vodka bottle sued each other for
infringement.
F. ‘Fair Return for Labor’ Argument Rejected by Supreme Court.
Next, EVOX contends Your Honor should disregard the plain meaning of section
113(c) because the effect would be to deny a fair return on EVOX’s “creative labor.”
EVOX cites a case supporting the sweat-of-the-brow theory of copyright — Sega
Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1527 (9 Cir. 1992). However, thisth
‘sweat-of-the-brow’ principle was soundly rejected in Feist Publ'ns, Inc. v. Rural Tel.
Serv. Co. (1991) 499 U.S. 340, 361. By 1999, the Ninth Circuit corrected itself, and
followed Feist on this point. In CDN Inc. v. Kapes, 197 F.3d 1256, 1260 (9th Cir.
1999) the Ninth Circuit said:
That this process takes much time and effort is wholly irrelevant to
whether the end product of this work is copyrightable. See Feist, 499
U.S. at 349. 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 gather. See id. at 352-56.
Copyright rewards originality, not effort." Id. at 364. (Emphasis added.)
G. Can Section 113(c) Apply to Artist’s Product Paintings?
Finally, EVOX questions whether Congress could legitimately restrict rights in
photographs. It cites the U.S. Constitution, Art. 1, §8’s purpose to protect the original
creation of artists. (OPP., at 6:12-13.) EVOX suggests ‘hard’ examples involving
paintings of products to raise doubts about the legitimacy of section 113.
EVOX’s two examples involve paintings. Paintings qualify as “pictures” under
section 113(c). However, both examples do not call into question the Constitutionality
of section 113(c) as to a product photograph. Product photographs generally fall under
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slavish copying or the de minimis rule, and there is no serious Constitutional concern.
EVOX’s first example to raise concern about the fairness of section 113(c) is
about an artist who “paints a yacht.” He later finds out a yacht company has used the
painting as the “centerpiece of a yacht company’s ad campaign....” (Motion at 6:17-
23.)
However, these facts do not come within section 113(c). This example is about a
painting of a yacht, which is not described as being offered for sale. Rather, EVOX
described the picture used as a “centerpiece” for selling all kinds of yachts, and not
that particular yacht. Hence, this example would not fall under section 113(c).
EVOX raises a second example of Andy Warhol’s famous painting of 30 Campbell
Soup Cans. These cans were exactly identical to the actual cans in coloring, shape and
titles — except the 30 were assembled in several rows. If one used this “picture,” and3
cropped a single can out to sell the product in public advertising, and assuming a can
of food is a useful article, then section 113(c) would apply. EVOX appears to imply
this is a problem because Mr. Warhol is an artist. However, this work has all the
appearance of beginning as an exact stencil sketch. This work is as slavish a work as
one can find. Congress has made a correct determination in the scope of copyright in
the specific circumstances set forth in section 113(c).
II. EVOX TURNS AROUND AND EMBRACES SECTION 113(C).
EVOX extraordinarily reverses itself on the issue of section 113(c) much later in
its brief. It does so when it confronts its impossible hurdle to defend its derivative use
of the car designs without any appropriate license to do so. At pages 19-20 of EVOX’s
Opposition, EVOX embraces section 113(c). It applies it to itself. EVOX is no longer
inventing strange distinctions about it only applying to exempting photos on coffee
mugs. To create the consent it thinks it needs to sue on a derivative use (it needs an
exclusive license, not mere consent), EVOX resorts to arguing at 19:20-20:5:
https://www.moma.org/learn/moma_learning/andy-warhol-campbells-soup-cans-19623
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
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Section 113(c) gives EVOX the right to make and distribute photos of
useful articles of cars, without permission of the owners of
copyrightable elements incorporated into those useful articles.
The immediate puzzle is how can EVOX satisfy section 113(c)’s requirement that
it is “offering for sale or other distribution” useful articles in advertisements? This is a
specific circumstance that limits who can exploit this exemption.
EVOX believes that is easy. Because Defendant CALRAC alleged it was “offering
the cars for sale or other distribution,” this supposedly necessarily should apply
equally to EVOX. (EVOX OPP., at 20:6-7). However, EVOX is not doing the same
thing as the Defendant. Plaintiff EVOX instead is licensing photographs of cars. It is
not selling or renting the cars. EVOX may be selling or licensing photographs to
people who enjoy section 113(c)’s exemption, and thus EVOX is not a contributory
infringer. However, EVOX certainly does not have a right to sell, rent or license
photographs of cars to third-parties without proper license from the car
manufacturers. This in fact is what EVOX tells its customers – the customer may have
a “fair use,” but EVOX does not transfer any rights to use the car images or trademark
logos within their photographs. (CALRAC MSJ SUF ## 16-21.)
As a result, EVOX by page 20, has destroyed its entire earlier effort to rebut
Defendant’s application of section 113(c).
The next puzzle is how can EVOX exploit section 113(c), but this section would
not apply to Defendant CALRAC? EVOX never explains how it can use section
113(c) but Defendant CALRAC cannot. It appears EVOX has jettisoned its earlier
arguments in order to embrace section 113(c) somehow solely for its own benefit.
Regardless, section 113(c) simply on its face does not apply to a party who sells or
licenses photographs of automobiles. Section 113(c) applies only to someone who
“offers for sale” or “other distribution” a useful article.
III. EVOX MADE DERIVATIVE USES OF OTHERS’ WORKS.
A. Evox Has Unwittingly Admitted A Derivative Work.
EVOX has admitted that its works are derivative uses. EVOX says at page 9:12-
13, “As Defendants admit, EVOX’s photos are based upon useful articles: cars.”
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Yes, indeed, EVOX is correct these automobiles are useful articles. However, they
are useful articles which fit the rule in section 101 used in Ets-Hokin v. Skyy Spirits,
Inc., 225 F.3d 1068, 1080 (9th Cir. 2000) — Skyy I. The Ninth Circuit recognized that
a photograph is a derivative use of a copyright-protected object it displays (§ 106(2))
— but only when a useful article is copyrightable. This occurs when it has a
“distinctive shape,” or “special design features,” etc., and thus qualifies as a
copyright-protected pictorial, graphic or sculptural work under section 101.
In section 101, a derivative use is a work that has “adapted” a preexisting
copyrighted work – here the cars into a photograph. Section 101 defines a “derivative
work” in material part as follows:
A ‘derivative work" is a work based upon one or more
preexisting works, such as a ...art reproduction, abridgment,
condensation, or any other form in which a work may be recast,
transformed, or adapted. A work consisting of editorial
revisions, annotations, elaborations, or other modifications
which, as a whole, represent an original work of authorship, is a
‘derivative work.’
1. Why Does Derivative Use Matter?
Why is derivative use so important here? The first reason is that the Copyright
Office will not register an unlawful derivative work. This affects EVOX’s standing, as
well as the issue about non-disclosure of a preexisting work under section 409(9)
discussed in Part IV infra. The latest Copyright Office’s Compendium of U.S.
Copyright Offices Practice (2014) — “Compendium” — makes clear the problem.4
Without a lawful use from the copyright owner of preexisting material, the Copyright
Office will reject the registration. In section 907.2, the Copyright Office’s
Compendium explains its concern for infringement upon another’s copyright:
Permission to Use Preexisting Material. Authors often incorporate
material created by third parties into their visual art works, such as a
third party photograph that is used in a collage or third party clip art
that is used in a logo. Generally, if the third party material is protected
by copyright, the applicant must exclude that material from the claim
using the procedure described in Chapter 600, Section 621.8....The
U.S. Copyright Office generally does not investigate the copyright
status of preexisting material or investigate whether it has been used
http://www.copyright.gov/comp3/docs/compendium.pdf4
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lawfully. However, the registration specialist may communicate with
the applicant to determine whether permission was obtained where a
recognizable preexisting work has been incorporated into a visual art
work. The applicant may clarify the lawful use of preexisting material
by including a statement to that effect in [in the application or by
letter]. If it becomes clear that preexisting material was used
unlawfully, the registration specialist will refuse to register the claim.
However, if a derivative use is merely authorized, it serves only as a defense for
the one so authorized, e.g., the copyright owner sues the permittee. Yet, for EVOX to
have a lawful right in a derivative use sufficient to sue others, EVOX needs more than
permission; it needs a transfer of the exclusive right to make a derivative work in the
photographic medium. Otherwise, such exclusive right belongs to the manufacturers5
who designed the subject cars. See, section 106(2). Without an exclusive license,6
EVOX lacks standing to sue a third party upon a derivative work. Hyperquest, supra.
Here, when these principles apply, EVOX’s suit necessarily must be dismissed. For
an exclusive license means that these manufacturers gave EVOX, and only EVOX, the
right to make such photographs. And all exclusive licenses must be in writing;7
otherwise, they are invalid under section 204(a). Because EVOX admits it has no8
licenses from the car manufacturers whatsoever for taking photographs of their cars
or trademarks (CALRAC MSJ SUF ## 16-21), EVOX cannot sue upon works that are
derivative uses belonging to another. This action must be dismissed.
Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 382 (7th Cir. 2011) (suit5
against a third-party on derivative work made by plaintiff to copyrighted software
belonging to another lacks the exclusive property right for standing under section
501(b) without an exclusive license from the copyright owner of the software).
Section 106(2) reads: “Subject to sections 107 through 122, the owner of6
copyright under this title has the exclusive rights to do and to authorize any of the
following:...(2) to prepare derivative works based upon the copyrighted work;....”
The Court in Minden v. John Wilely & Sons, 795 F.3d 997, 1005 (9th Cir.7
2015) explained that an “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).”
A written license is necessary to transfer an exclusive license to make copies or8
a derivative use, due to section 204(a). Effects Assocs. v. Cohen, 908 F.2d 555, 556,
558 (9th Cir. 1990).
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B. Evox Is Wrong that Skyy I Is A Hard and Fast Rule About Useful Articles.
EVOX contends that there is a hard and fast rule that any useful article, ipso facto
never has copyright protection. EVOX cites Skyy I as supposedly “applying this9
principle.” (EVOX OPP., at page 8:17.)
This is not true.
As a result of this erroneous “belief,” EVOX claims complete victory by the mere
fact alone that Defendant CALRAC’s “own admission [is that] EVOX’s photos
are...based upon useful articles” which EVOX contends are categorically “not subject
to copyright.” (EVOX OPP., at 8:14-16.)
But it is entirely false that useful articles under no circumstances can be copyright
protected. The Ninth Circuit in Skyy I explained when a useful article can
sometimes be copyright protected under section 101's definition of pictorial, graphic
or sculptural works. The Skyy I analysis began with section 101's definition of those
three categories. The Court skipped over this first sentence which importantly reads:
“Pictorial, graphic, and sculptural works” include two-dimensional and
three-dimensional works of fine, graphic, and applied art, photographs,
prints and art reproductions, maps, globes, charts, diagrams, models,
and technical drawings, including architectural plans.
Then Skyy I continued, and quoted how section 101 mandates copyright-protection
analysis of ‘useful articles’ to determine when they can be protected. The Court in
Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1080 (9th Cir. 2000) said:
Under the Copyright Act, the design of a useful article, such as a
bottle, is not protected unless the design includes features that exist
separately from utilitarian ones:
Such works shall include works of artistic craftsmanship insofar
as their form but not their mechanical or utilitarian aspects are
concerned; the design of a useful article, as defined in this
section, shall be considered a pictorial, graphic or sculptural
work only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can
be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article. 17
U.S.C. §101. (Emphasis added.)
Hence, EVOX intends that no derivative use rights exist in favor of any major9
auto manufacturer over sculptural designs within their vehicles.
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The “unless” in that sentence destroys EVOX’s entire assertion that Skyy I had a
hard-and-fast rule about useful articles. The Ninth Circuit explained in the same
context that if a useful article qualified as having a copyrightable design under this
standard of section 101, that a photograph of a useful work would be a derivative
work of the designer of the useful article. Id., 225 F.3d at 1078.
In Skyy I, however, the Court found that neither competing product photographer
would infringe upon a derivative use of the designer of the bottle because the “Skyy
vodka bottle [i.e., the useful article in the photograph], although attractive, has no
special design or other features that could exist independently as a work of art. It is
essentially a functional bottle without a distinctive shape....,” and thus did not qualify
as a copyrightable work, and de facto was not a derivative work. Id., 225 F.3d at 1080.
“In this case, the district court did not identify any artistic features of the bottle that
are separable from its utilitarian ones. We also find none.” Id., at 1080.
Here, this is a very different case. Defendant CALRAC’s auto-design expert
provided undisputed facts that each automobile in the 149 PHOTOGRAPHS had
separable distinct design elements that can exist separately as a “sculptural work.”10
This included grilles, graphical logos and slope lines on the car’s exterior
(distinguishable shapes that were not present with the vodka bottle). As such, they are
automatically protected under section 102(a) “upon their creation” in a fixed tangible
form. No reasonable juror could disagree.11
As the Second Circuit said in L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486,
490-491 (2d Cir. 1976), “useful articles” often satisfy the minimal standards of
Giovanni Bonello, a world-class auto design expert, provided a declaration10
that each subject automobile had distinct and separable design elements that stand as
separable art either in their entirety with prominent trademark logos, appreciated as
such at car shows or in toy models; or in physically separable parts as grilles on walls
or steering wheels in young children’s rooms. CALRAC MSJ SUF ##22-60.
Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 552 (1985)(“Among11
[the 1976 Act’s] other innovations, it...extended statutory protection to all works from
the time of their creation.”) See also, S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081,
1085 (9th Cir. 1989)(“Copyright protection subsists from the moment the work is
‘fixed in any tangible medium of expression.’ 17 U.S.C. § 102(a).”)
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originality, for “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.”
Now EVOX’s admission on page 9 takes on importance. It admitted that “EVOX’
photos are based upon useful articles: cars.” (EVOX OPP., at 9:12-13)
As the cars have indisputable sculptural design elements, the rule in Skyy I dictates
that each photograph is based upon a “copyright protected” work, and is thus a
derivative work under section 106(2). Cf., Gaylord v. United States, 777 F.3d 1363,
1366 (Fed. Cir. 2015) (held that a photograph of a sculptural work is a derivative work
of the owner of the sculptural work under section 106(2).)
Hence, EVOX needs a written exclusive license from the car makers to do what it
is doing. EVOX certainly has no standing to sue under 501(b). Hyperquest, supra.
C. Evox Misleads that A Useful Article Never Has Copyright Protection.
EVOX makes several snippet quotes to supposedly prove a hard-and-fast rule
against useful articles ever enjoying copyright protection. Instead, each of these cases
are in accord with Skyy I, as we just discussed, that sometimes useful articles have
copyright protection depending on separable design elements.
One of these cases is worth discussing for it states the Copyright Office’s
procedures with useful articles that are submitted.
This is the case of Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452, 455
(2d Cir. 1989). EVOX quotes the following quote out-of-context to suggest a hard-
and-fast rule: “In any event, the useful articles standing alone may never be
registered.” (EVOX OPP., at 8:11.) What about in context? The next sentence says:
“The registration [of a useful article] must describe the separable elements.” Id., citing
the Copyright Office’s Compendium instructions. Hence, Whimsicality explained a
useful article can be submitted for registration, and its separable design elements can
be accepted for registration when properly identified. The Court also affirms the same
principles as in Skyy I of when a useful article is copyright protected: “[T]he pictorial,
graphic and sculptural aspects of useful articles may be copyrightable if they are
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separable from the article, physically or conceptually....” Id.
This underscores that a useful article, like any other registration which has some
elements that are copyright protectible, and others that are not, can be accepted for
registration. The Copyright Office will delineate the scope of copyright in the
registration of a useful article. It is only true that standing alone with no ability to
identify separate design elements that it cannot be registered.
D. Ornamental Designs (Steering Wheels, Grilles) Are Protected.
Next, EVOX clearly implies at 13:16 that the Copyright Office spoke about an
“ornamental wheel cover on a vehicle” as if it lacked any copyright protection merely
because it was a useful article. This was a highly misleading quote from a webpage of
the Copyright Office. In context, it clearly says the opposite. The Office says it is
covered. The full sentence merely said: “An article that is normally part of a useful
article may itself be a useful article, for example, an ornamental wheel cover on a
vehicle.” http://www.copyright.gov/register/va-useful.html Then based upon what
follows, the Copyright Office clearly would protect the ornamental steering wheel.
The same page says:
[A] useful article may have both copyrightable and uncopyrightable
features. For example, a carving on the back of a chair or a floral
relief design on silver flatware could be protected by copyright, but the
design of the chair or flatware itself could not.
Similarly, the Compendium from 2014 actually uses a similar example of what it
would copyright in a useful article on a car: “Physical separability means that the
useful article contains pictorial, graphic, or sculptural features that can be separated
physically from the article by ordinary means while leaving the utilitarian aspects of
the article completely intact. Example. A sufficiently creative decorative hood
ornament on an automobile.” (§924.2(A).)
Defendant CALRAC has demonstrated at least physical or conceptual separability
of the grille, steering wheels, and styling lines in the 149 PHOTOGRAPHS.
CALRAC MSJ SUF ## 22-27.
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E. Protection for Decorative Flourishes & Swirls Within A Shape of A Car.
A car as an overall shape may not be copyrightable, just like a chair or a typeface
cannot be copyrighted as such. However, due to decorative flourishes and swirls of
styling lines, there are distinguishable portions of car designs that are memorable and
identifiable. This satisfies the conceptual separability test in section 101. See also,
Copyright Office’s Compendium (2014) §924.2(B)(“Conceptual separability” test.)
The Compendium says the “artistic feature” must be “capable of being visualized ...as
a work of authorship that is independent of the overall shape of the useful article.”
This was addressed in DC Comics v. Towle, 989 F.Supp.2d 948, 970 (C.D.Cal.
2013) when a maker of a toy version of the Batmobile claimed it was a useful article,
and had no copyright protection. The Court found numerous styling lines that
rendered the Batmobile’s design elements protectible in copyright:
Nonetheless, the design elements of the two Batmobiles at issue
here are conceptually separable from their underlying car. In
particular, the 1989 Batmobile's entire frame, consisting of the rear
exaggerated, sculpted bat-fin and the mandibular front, is an artistic
feature that can stand on its own without the underlying vehicle. The
underlying vehicle would still be a car without the exaggerated bat
features. Further, the Batmobile's wheels each contain a hubcap
containing a bat sculpted from metal, which can literally stand on its
own without the underlying wheel. Similarly, the 1966 Batmobile
contains features that are conceptually separable from the underlying
vehicle. For example, the doors have imprinted upon them red bat
logos...,.The wheels have hubcaps containing a bat sculpted from
metal. The rear of the vehicle is scalloped and intended to look like bat
wings. These elements are conceptually separable from the car itself.
Analogously, the latest Compendium explains how to measure when typefaces can
be copyrighted. A typeface, section 906.4 says, can have pictorial or graphical
elements “used to decorate uncopyrightable characters [which] may be separable from
the utilitarian form of the characters.” This can include “original pictorial art that
forms the entire body or shape of the typeface, such as the representation of an oak
tree,” etc. Also, “ornamentation that is separable from the typeface characters” such
as “flourishes, swirls, vector ornaments, scrollworks, borders, frames and wreaths,
and the like represent works of pictorial authorship.” Id.
The same is true for an automobile. CALRAC’s expert established the styling
lines, grilles, and steering wheels were separable, memorable, and were ‘ornamental’
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shapes.
F. Evox’s Errs that A Pre-Production Model Is Tested Like A Useful
Article Just Because Identically Used Later in A Useful Article.
1. The Mazer Rule on Pre-Production Models
EVOX contends the Supreme Court decision in Mazer v. Stein , 347 U.S. 201
(1954) has had no impact on the 1976 Act in protecting non-functional models
differently than the useful article which they later become. EVOX argues, albeit
misstating Defendants’ point: “Mazer did not hold that any useful article could be
copyrighted if based on a prototype that could be spun as artistic.” (EVOX OPP., at
17:10-12.)
EVOX is wrong. The Mazer rule is that a model is protected as a model regardless
of the later intention to make it into a useful article. (The Supreme Court in Mazer was
adopting the Ninth Circuit’s view, rejecting that design patents were the only
protection.) The Mazer rule is reflected in numerous places in the 1976 Act, and in12
the Copyright Office’s 37 C.F.R. § 202.10 (a) (2016)), as well as in that Office’s13
latest Compendium from 2014 in §919.
First, in section 101 enacted in 1976, a “sculptural work” subject to copyright
protection includes “models.”
Second, the definition of a “useful article” in section 101 excludes as a “useful
In Mazer, the Supreme Court approved Rosenthal v. Stein, 205 F.2d 633, 63512
(9th Cir. 1953), specifically as to this holding: “The theory that the use of a
copyrighted work of art loses its status as a work of art if and when it is put to a
functional use has no basis in the wording of the copyright laws.’”
“In order to be acceptable as a pictorial, graphic, or sculptural work, the work13
must embody some creative authorship in its delineation or form. The registrability
of such a work is not affected by the intention of the author as to the use of the work
....” 37 C.F.R. § 202.10 (a) (2016).
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article” anything that serves to “portray the appearance of [a useful] article.” This14
clearly exempts a preproduction car model from being a useful article because it
serves only to portray what is intended later to become a useful article.
Third, the latest Copyright Office Compendium §919 (2014) states that “model
cars” in their “design” are “typically protected” as “sculptural works”— hence they
are not treated as useful articles even though such may be intended. It states in full:
For purpose of copyright registration, a model is a three-dimensional
replica or depiction of an object or design, such as a model car or an
architectural design. Models are typically protected under U.S.
Copyright law as sculptural works, although they may also include
pictorial or graphical elements.
As Defendant CALRAC’s moving papers demonstrated, all manufacturers in the
149 PHOTOGRAPHS first make a full-scale “PRODUCTION MODEL” in wood or
cast resin that in its form is identical to the vehicle later which is manufactured. The
model differs only in that it subtracts from use only the space necessary to fit an
engine and chassis in the manufactured version. CALRAC MSJ SUF ## 28-35.
What is the consequence? The Mazer test of originality applies to preproduction
models that are nonfunctional. The Supreme Court held that a statue – even though it
was later reproduced as a useful article as a part of a lamp – was protected as “art” in
its “form,” distinct from its later “mechanical or utilitarian” functions. As such, a15
pre-production model’s originality is measured by the “beauty” of its “form” along a
liberal scale, and does not “permit a narrow or rigid concept of art.” (Mazer v. Stein,
347 U.S. 201, 213-14 (1954). The current Copyright Office’s regulations agree. It is
protected as long as it has “some creative authorship in its delineation or form”
regardless of what is the intent on how to use it later (e.g., making its design into a
“A ‘useful article’ is an article having an intrinsic utilitarian function that is14
not merely to portray the appearance of the article or to convey information.”
The statute embodied in the lamp was protected as to its “form but not their15
mechanical or utilitarian aspects....” Mazer, supra, 347 U.S. at 212-213.
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useful article). See fn. 13 supra.
As a result, there is no need to engage in the “separability” test in section 101
which applies to useful articles with “utilitarian” features. The principle simply does
not apply to a nonfunctional model. Nor is there any issue about the beauty of the
form. Rather, both Mazer and Regulation 202.1(a) speak of protection of the beauty of
its “form” and “delineation.” Hence, aesthetics of the entire design of a precedent
production model has copyright protection of its entire form based upon that
preproduction model. The benefits accrue to automobile manufacturers that the
manufactured version is a copy of this prior preproduction version, with it expanded
scope of measuring originality.
2. Evox’s Distorted Reading of Omega
EVOX contends at page 17 of its OPPOSITION that a concurrence by Judge
Wardlaw in the Ninth Circuit opinion Omega S.A. v. Costco Wholesale Corp., 776
F.3d 692, 702 (9th Cir. 2015) supposedly disagrees about the meaning of Mazer.
However, in context, she fully agrees with CALRAC that it was a preproduction
version of a lamp’s base that was at issue. Id.
Then EVOX quotes from her finding of copyright misuse by Omega where she
reaffirmed “the general rule against granting copyright protection over useful
articles.” Contrary to how EVOX reads this, Judge Wardlaw carefully chose her words
– she referred to the “general rule against granting copyright protection over useful
articles.” This matches section 101's definition that has a general rule against
copyright protection unless separability exists. The point is that Judge Wardlaw did
not speak of hard-and-fast rule, but a general rule.
IV. COPYRIGHT PROTECTION OF TRADEMARKS.
EVOX at pages 17-19 contends that there is categorically no copyright in
trademarks. It failed to discuss Skyy I to the contrary relied upon in our motion.
Instead of discussing Skyy I, EVOX retreats into an out-of-context quote of
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Copyright Office Regulation 202.1(a). EVOX ignores Regulation 202.10(b). the
Ninth Circuit in Skyy I relied upon its language to recognize copyright protection over
trademarks that have copyrightable graphics and related text. This regulation reads in
part that the Copyright Office “will register a properly filed copyright claim in a print
or label that contains the requisite qualifications for copyright even though there is a
trademark on it.” 37 C.F.R. § 202.10 (b) (2016).
Moreover, EVOX has conceded the operative rule on copyrightability of
trademarks in Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1080-1081 (9th Cir.
2000) – Skyy I because its opposition did not challenge this quote in our motion. The
Court in Skyy I held:
Although a label’s “graphical illustrations” are normally
copyrightable, "textual matter" is not – at least not unless the text
“aids or augments” an accompanying graphical illustration. 1 Nimmer
§ 2.08[G][2], at 2-136. The label on Skyy’s vodka bottle consists only
of text and does not include any pictorial illustrations.
In response, EVOX cites inapposite decisions or Copyright Office Compendium
sections which EVOX then incorrectly describes. First, EVOX cites a case that
supposedly found text alone in very short length is “probably” lacking copyright
protection. No such quote can be found in the opinion. Regardless, a short piece of16
text according to Skyy I can be copyrighted if it “aids” or “augments” an
“accompanying graphical illustration,” such as “Ford” and “Jeep” do here.
Another decision EVOX cites said the name “Luminous Lyrics” by itself as a
matter of law cannot be the basis of a copyright action. It had no graphics in17
conjunction. Under Skyy I, such text is only copyrightable if it aids or augments a
graphical element in a trademark symbol. EVOX cited an unnecessary case.
Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 n. 7 (9th Cir. 1992).16
The words “de minimis” etc. are not present, apparently removed by the Ninth Circuit.
Chestang v. Yahoo Inc., No. 2:11-CV-00989-MCE,2012 WL 3915957, at *517
(E.D. Cal. Sept. 7, 2012)(in pro per obtained registration on simply his trade name).
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EVOX lastly claims that the current Copyright Compendium from the Copyright
Office in section 606 supposedly says “logo designs” (EVOX’ words) “with ‘familiar
symbols like a stop sign, or a happy face, or five-pointed star” (Compendium’s words)
are not copyrightable. (EVOX OPP., at 19:4-5.) But the Compendium in section 606
says nothing about “logo designs.” Rather, the Compendium (available online) in18
section 606 only says if a “stop sign, a five pointed star, or a happy face” is used, the
Copyright Office may send a warning that “that some of the designs within the
portfolio are not copyrightable.” Elsewhere, section 313.4(J) says only that “familiar
symbols and designs are not copyrightable.” Nothing about logos in either section.
In fact, the Compendium never mentions a logo except to say it can be copyright
protected. Section 913, entitled “Trademarks, Logos and Labels,” addresses the
Copyright Office’s view as of 2014 on copyrightability of trademarks and logos. In
fact, it cites Regulation 202.1(b) which Skyy I also relied upon to extend protection:
A visual art work that is used as a trademark, logo, or label may be
registered if it satisfies “the requisite qualifications for copyright.” 37
C.F.R. § 202.10(b). The authorship in the work may be pictorial,
graphic, or in rare cases sculptural, or the work may contain a
combination of these elements. When reviewing an application to
register a trademark, logo, or label the U.S. Copyright Office will
examine the work to determine if it embodies “some creative
authorship in its delineation or form.” Id. § 202.10(a). (Id., §913.1.)
The truth is simple: these trademark logos here are each graphical works, and in
two cases (“Ford” and “Jeep”) the name is connected closely with a graphic and grille
design that matches. Trademark logos affect 95 photographs of the 149 Photographs,
including twenty-seven that were close-ups of the trademark logos on the steering
wheel. CALRAC MSJ SUF ## 49, 52.
Clearly, EVOX made a derivative use without proper license from the owners’ of
18 http://www.copyright.gov/comp3/docs/compendium.pdf. This 2014 version
replaced the last Compendium that was more than “two decades” earlier. See
http://www.copyright.gov/comp3/
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these trademark logos in 95 uses.
V. EVOX’S ‘CONSENT’ ARGUMENT FOR DERIVATIVE USE.
EVOX apparently gives up completely on its earlier arguments about section
113(c). It no longer argues that section 113(c) only applies to exempt use of
photographs on a useful article. Now EVOX itself supposedly has the right to use a
photograph of a “useful article” in advertising without violating the rights of the
copyright rights of anyone, including the car makers. EVOX is embracing section
113(c) now to not lose the issue of derivative use.
How EVOX can claim this right under section 113(c) only benefits itself, and not
Defendant CALRAC over EVOX’s photographs for itself, is never explained.
Regardless, section 113(c) does not apply to EVOX. As explained at length in Part
II supra, section 113(c) only gives an exemption to those who “offer for sale” or other
distribution a useful article in connection with an “advertisement.” EVOX does
neither. EVOX instead is advertising a license to use its photographs. It is not selling
or renting the cars depicted in its photographs.
Furthermore, section 113(c) can only be construed as a non-exclusive right to
infringe on what otherwise is a section 106(2) derivative use right. Congress did not19
grant section 113(c) permittees an exclusive license to make derivative uses of the
copyrightable designs belonging to makers of useful articles.
The Ninth Circuit stated recently that a similar use-exemption statute merely
provides a defense to infringement, i.e., fair use in section 107. A non-exclusive20
license has that effect. Hence, if EVOX could invoke section 113(c), it has no more
than a non-exclusive license. Thus, EVOX still would not be able to sue a third-party
like Defendant upon a derivative use that is only a non-exclusive authorization.
Section 113(c) reads in part that “copyright does not include any right to19
prevent the making, distribution, or display of pictures or photographs of such
[useful] articles in connection with advertisements.”
Lenz v. Universal Music Corp., 815 F.3d 1145, 1152 (9 Cir. 2016)(a20 th
protected fair use under section 107 is a “right” that renders one using copyrighted
materials as “not an infringer of the copyright with respect to such use.”)
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Hyperquest, Inc. v. N'Site Sols., Inc., 632 F.3d 377, 382 (7th Cir. 2011).
VI. EVOX’S PHOTOS LACK ‘ORIGINALITY.’
EVOX claims Skyy I proves their photographs are not slavish copies. However,
later in Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003) – Skyy II, the
Court found the competing photographs by two photographers of the same bottle
lacked sufficient originality to enforce any copyrights. So Skyy I is hardly relevant.
EVOX also claims that because the Court in Schrock v. Learning Curve Int’l, Inc.,
586 F.3d 513 (7 Cir. 2009) found a ‘creative process’ behind photographs ofth
‘Thomas & Friends’ toys justified copyright protection. However, the better view is a
decision following Sky I and Sky II in the Tenth Circuit involving a Toyota automobile
and a digital-model representation of a Toyota vehicle for use in product advertising.
The Court in Meshwerks, Inc. v. Toyota Motor Sales U.S.A. (10th Cir. 2008) 528 F.3d
1258, 1265 held it was a slavish copy:
But Skyy I tells only half the story. The case soon returned to the court
of appeals, and the court held that the defendant’s photos, which
differed in terms of angle, lighting, shadow, reflection, and
background, did not infringe on the plaintiff's copyrights. Ets-Hokin v.
Skyy Spirits, Inc., 323 F.3d 763, 765 (9th Cir. 2003) (Skyy II). Why?
The only constant between the plaintiff's photographs and the
defendant's photographs was the bottle itself, id. at 766, and an
accurate portrayal of the unadorned bottle could not be copyrighted.
(Meshwerks, Inc. v. Toyota Motor Sales U.S.A. (10th Cir. 2008) 528
F.3d 1258, 1265.)(Emphasis added.)
The Court found that Meshworks slavishly copied the Toyota vehicles — even
though Meshworks’s described its “creative” process as involving 90 to 100 hours per
vehicle of manual ‘modeling’ and ‘sculpting.’ The Court said all this effort and labor –
described by Meshworks as ‘creative’ – was simply to ensure the final photo-ready-
wire model would “resemble each [Toyota] vehicle as closely as possible.” Id., 528
F.3d at 1260. Citing Feist, the Tenth Circuit held “creative decision-making in the
process is insufficient to render the product original.” Id., 528 F.3d at 1268 n.10.
(Emphasis added.) Hence, the slavish copying rule applied.
VII. EVOX’S FAILURE TO DISCLOSE TO THE COPYRIGHT OFFICE
EVOX contends it did not have to disclose to the Copyright Office the presence of
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the automobiles and logos in their photographs because there are “no preexisting
works in EVOX’s photos.” (EVOX OPP., at 22:14.) It says this is for “reasons
above,” and offers no hint at why. Moreover, EVOX still refuses to waive its attorney-
client privilege to offer counsel’s detailed explanation why his client relied upon his
advice in not making the disclosure necessary under section 409(9).21
EVOX’s indefensible claim is still not defended. It is also clearly preposterous that
the cars and trademark logos are not preexisting works.
Section 409(9) requires disclosure in the answers to the application form an
identification of all “preexisting works” in the submission that are not original with
the applicant upon which the work is based; then the statute mandates on the
application an explanation why the additions justify a copyright. The application
allows the Copyright Office 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).
Hence, any work not original with the applicant must be disclosed on the
application under question 6(a).
By EVOX’s deliberate non-disclosure gave a false impression. As Nimmer
explains, a photographer misrepresents when he leaves it to be assumed he is claiming
originality over preexisting works in his photographs that he did not create:
As Professor Nimmer has commented in connection with the
predecessor technology of photography, “[a]s applied to a photograph
of a pre-existing product, that bedrock principle [of originality] means
that the photographer manifestly cannot claim to have originated the
matter depicted therein . . . .” Nimmer on Copyright § 3.03[C][3].
(Meshwerks, Inc. v. Toyota Motor Sales U.S.A., 528 F.3d 1258, 1265
(10th Cir. 2008).)(Emphasis added.)
EVOX knew its obligations was to disclose any matter it did not originate in the
photograph because it knew the Copyright Office would have applied the slavish
doctrine had it told the truth.
“An application for copyright registration shall be made on a form prescribed21
by the Register of Copyrights and shall include (9)...an identification of any
preexisting work or works that it is based upon or incorporates, and a brief general
statement of the additional material covered by the copyright claim being registered.”
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As to photographs, the Copyright Office has warned already it applies the slavish
copy doctrine – obviously a review EVOX avoided by its silence:
A work that is a mere copy of another work of authorship is not
copyrightable. The Office cannot register a work that has merely
copied from another work of authorship without any additional
authorship.... “one who has slavishly or mechanically copied from
others may not claim to be an author”... “exact photographic copies of
public domain works of art would not be copyrightable under United
States law because they are not original.”) (Compendium, §313.4(A).)
Examples of works that cannot be registered as derivative works,
because they contain no new authorship or only a de minimis amount
of authorship include the following types:
• Photocopies and digital scans of works.
• Mere reproductions of preexisting works. (Compendium, §907.1)
Also, the Compendium explains “[m]erely ... producing the source work in a new
medium is not sufficient to warrant copyright protection.” (Id., §919.1.)
Just as summary judgment was found in Whimsicality, EVOX is no less guilty of a
“knowing failure” to advise the Copyright Office of “facts which might have
occasioned rejection of the application.” Whimsicality, Inc. v. Rubie's Costume Co.,
891 F.2d 452, 456 (2d Cir. 1989)(summary judgment).
EVOX knew disclosure on the application that these were product photographs
would have put it under the scrutiny of the slavish copy doctrine. It materially failed to
disclose facts that would, as Whimsicality states, “which might have occasioned
rejection of the application.” For the same reasons here, EVOX’s registrations must all
be found lacking in evidentiary value under 17 U.S.C. §410(c), and be rendered
invalid in this proceeding.
EVOX lastly responds to a finding of fraud on the Copyright Office that in fact it
did disclose – not on the application, but on the titles and photo names submitted in
conjunction. However, question 6 is specific. Section 409(9) is about the form, and
requires under section 409(9) the answer to two question on each submission. See fn.
22. It does not ask for disclosure in the title or in the name of a computer file.
In sum, EVOX deliberately evaded the Copyright Office’s slavish copy review by
its blatant non-disclosure. It offers no explanation. It does not prove any accident. It
was designed to evade a rejection. Your Honor is requested to find EVOX’s
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registrations as having no evidentiary value under section 410(c). As a consequence,
this case must be dismissed.
VIII. EVOX’S DCMA CLAIMS FAIL.
EVOX does not address any of Defendant CALRAC’s arguments except to
incorporate Dkt No. 34 9:17-11:1 – its own motion. In reply, Defendant CALRAC
incorporates its Opposition to EVOX’s motion, Dkt No. 45 at 21:11-23:6.
IX. EVOX’S HAS NO RIGHT TO DIRECT OR INDIRECT PROFITS.
EVOX contends that the amount of profits from renting cars in connection with the
rentals is the issue raised on the motion. EVOX is correct the parties have deferred
that issue until liability may be resolved on these cross-motions. However, the
amount of profits is not the issue on this motion. Instead, it is the causal nexus
between such profits and the use of a photograph. The Ninth Circuit said these two
issues are completely different. When a painting is used in conjunction with selling
tickets to a concert, the Ninth Circuit in Mackie v. Rieser, 296 F.3d 909, 911 (9 Cir.th
2002) granted summary judgment because it is completely speculative to what extent
the painting influenced individual purchasers. EVOX has offered no rebuttal to that
evidence and argument other than to attempt to claim this motion involves the issue of
the amount of profits of Defendant. It seeks to postpone the issue. The Court is
requested instead to grant this summary adjudication as essentially unopposed.
X. CONCLUSION.
Defendants CALIFORNIA RENT-A-CAR and STEVE VAHIDI respectfully
request this Court to grant Defendants’ motion for summary judgment, or partial
summary adjudication.
DEL TONDO & THOMAS
Dated: June 13, 2016 _________________________________
Douglas J. Del Tondo, Esq.
Attorneys for Defendants,
CALIFORNIA RENT-A-CAR, INC. and
STEVE VAHIDI
DEFENDANTS' REPLY TO PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
SUMMARY JUDGMENT AND / OR ADJUDICATION
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Case 2:15-cv-08046-MWF-RAO Document 47 Filed 06/13/16 Page 31 of 32 Page ID #:1429
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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 13, 2016
Executed on June 13, 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 47 Filed 06/13/16 Page 32 of 32 Page ID #:1430
