Richard Friedman v. Hans Zimmer et al

MEMORANDUM OF POINTS AND AUTHORITIES IN Opposition re: MOTION to Dismiss First, Third, Fourth, and Fifth Claims for Relief in First Amended Complaint 23

C.D. Cal.May 18, 2015

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BLECHER COLLINS PEPPERMAN & JOYE, P.C. Maxwell M. Blecher (State Bar No. 26202) mblecher@blechercollins.com Donald R. Pepperman (State Bar No. 109809) dpepperman@blechercollins.com Jennifer S. Elkayam (State Bar No. 238619) jelkayam@blechercollins.com 515 South Figueroa Street, Suite 1750 Los Angeles, California 90071-3334 Telephone: (213) 622-4222 Facsimile: (213) 622-1656 LAW OFFICES OF JEFFREY L. GRAUBART, P.C. Jeffrey L. Graubart (State Bar No. 42250) info@jlgraubart.com 800 East Colorado Boulevard, Suite 840 Pasadena, California 91101-2173 Telephone: (626) 304-2800 Facsimile: (626) 381-9601 Attorneys for Plaintiff RICHARD FRIEDMAN UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION RICHARD FRIEDMAN, an individual, Plaintiff, vs. HANS ZIMMER, individually, and dba REMOTE CONTROL SONGS; TWENTIETH CENTURY FOX FILM CORPORATION; FOX SEARCHLIGHT PICTURES, INC.; FOX ENTERTAINMENT GROUP, INC.; NEW REGENCY PRODUCTIONS, INC.; MONARCHY ENTERPRISES, S.A.R.L., individually, and doing business as REGENCY ENTERPRISES; RIVER ROAD ENTERTAINMENT, LLC; PLAN B ENTERTAINMENT, INC.; REMOTE CONTROL PRODUCTIONS, INC.; SONY MUSIC ENTERTAINMENT; IMAGEM PRODUCTION MUSIC LLC, individually, and dba 5 ALARM MUSIC and also doing business as CYPRESS CREEK MUSIC; DOES ONE through TEN, inclusive, Defendants. Case No. 2:15-CV-00502 GHK (E) PLAINTIFF RICHARD FRIEDMAN’S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS FIRST AMENDED COMPLAINT [FED. R. CIV. P. 12(b)(6)] Honorable George H. King Date: June 8, 2015 Time: 9:30 a.m. Place: Courtroom 650 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 1 of 29 Page ID #:137 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -i- TABLE OF CONTENTS Page I. PRELIMINARY STATEMENT ....................................................................... 1 II. THE STANDARD GOVERNING DEFENDANTS’ MOTION TO DISMISS ........................................................................................................... 3 III. THE ALLEGATIONS IN THE FAC ................................................................ 5 IV. THE FAC ADEQUATELY AND SUFFICIENTLY ALLEGES A CLAIM FOR COPYRIGHT INFRINGEMENT .............................................. 7 A. The Federal Rules Do Not Impose a Heightened Pleading Standard on Copyright Infringement Claims .......................................... 8 V. PLAINTIFF’S LANHAM ACT CLAIM IS NOT PRECLUDED BY THE DASTAR DECISION .............................................................................. 12 A. The Dastar Decision Only Dealt with the “Reverse Passing Off Prong” of the Lanham Act, i.e. Section 43(a)(1)(a), and Not the Prong that Forms the Basis for Plaintiff’s Claim, Section 43(a)(1)(B) ............................................................................................ 12 B. The Cases Relied on by Defendants Are Not Binding on this Court and Conflict with Other Authority Addressing the Dastar Decision ................................................................................................. 15 VI. PLAINTIFF ADEQUATELY STATES CLAIMS FOR VIOLATIONS OF MORAL RIGHTS UNDER THE COPYRIGHT LAWS OF GERMANY AND FRANCE .......................................................................... 20 A. Plaintiff Is Not Required to Identify Any Further Activities Occurring within Germany or France ................................................... 21 VII. IF ANY PORTION OF THE FIRST AMENDED COMPLAINT IS DEEMED DEFICIENT, LEAVE TO AMEND THE PLEADING SHOULD BE FREELY GRANTED .............................................................. 22 VIII. CONCLUSION ............................................................................................... 23 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 2 of 29 Page ID #:138 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -ii- TABLE OF AUTHORITIES Case Page A & M Records v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) .................................................................................. 9 Agence France Presse v. Morel, 769 F. Supp. 2d 295 (S.D.N.Y. 2011) ........................................................ 23, 24, 25 Antidote Int'l Films, Inc. v. Bloomsbury Publ'g PLC, 467 F. Supp. 2d 394 (S.D.N.Y. 2006) .................................................................... 20 Armstrong v. Virgin Records, 91 F. Supp. 2d. 628 (S.D.N.Y. 2000) ................................................................. 4, 27 Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937 (2009) .......................................................... 6, 11, 12 Baden Sports, Inc. v. Molten USA, Inc., 556 F. 3d 1300 (Fed. Cir. 2009) ................................................................. 21, 22, 25 Baxter v. MCA, Inc., 812 F.2d 421(9th Cir.), ............................................................................................. 9 Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955 (2007) ...................................................... 5, 6, 11, 12 Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998) ............................................................................... 3, 27 Boram v. Bogan, 320 F.3d 1023 (9th Cir. 2003) .................................................................................. 5 Brownmark Films, LLC v. Comedy Partners, 800 F. Supp. 2d 991 (E.D. Wis. 2011) ................................................................... 23 Catch Curve, Inc. v. Venali, Inc., 519 F. Supp. 2d 1028 (C.D. Cal. 2007) ................................................................... 4 Clauson v. Eslinger, 455 F. Supp. 2d 256 (S.D.N.Y. 2006) .................................................... 3, 20, 21, 24 CoStar Realty Info., Inc. v. Field, 612 F. Supp. 2d 660 (D. Md. 2009) ................................................................. 6, 8, 9 Dastar Corp v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S. Ct. 2041 (2003) ............................................................... passim DCD Programs, Ltd. v. Leighton, 833 F.2d 183(9th Cir. 1987) ............................................................................. 29, 30 Eberhard Architects, LLC v. Bogart Architecture, Inc., Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 3 of 29 Page ID #:139 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -iii- 2014 WL 4354516, (N.D. Ohio Aug. 29, 2014) .................................................. 10, 14 Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004) .......................................................................... 10, 15 Encore Music Productions, Inc. v. London Film Productions, Inc., 89 U.S.P.Q. 501 (SDNY 1951) .............................................................................. 16 Erickson v. Pardus, 551 U.S. 89, 127 S. Ct. 2197 (2007) ........................................................................ 5 Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) ................................................................................ 10 Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S. Ct. 1282 (1991) .................................................................... 10 Flores v. EMC Mortgage Co., 997 F. Supp. 2d 1088 (E.D. Cal. 2014) ............................................................ 13, 14 Fonovisa, Inc. v. Cherry Auctions, Inc., 76 F. 3d 259 (9th Cir. 1996) ................................................................................... 15 Frink America, Inc. v. Champion Mach., Ltd, 961 F. Supp. 398 (N.D.N.Y. 1997) ........................................................................ 27 Gilligan v. Jamco Dev. Corp., 108 F.3d 246 (9th Cir. 1997) .................................................................................... 4 Hospital Bldg. Co. v. Trustees of Rex Hosp., 425 U.S. 738, 96 S. Ct. 1848 (1976) ........................................................................ 4 In re Providian Fin. Corp. ERISA Litig., 2002 WL 31785044 (N.D. Cal. Nov. 14, 2002) .............................................. 14, 15 Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F. 3d 82 (2d Cir. 1998) .................................................................................... 26 Kelly v. Chicago Park District, 635 F. 3d 290 (7th Cir. 2011) ................................................................................. 27 Leatherman v. Tarrant Cty. Narcotics Intell. & Coord. Unit, 507 U.S. 163, 113 S. Ct. 1160 (1993) .................................................................... 12 Metcalf v. Bochco, 294 F.3d 1069 (9th. Cir. 2002) ............................................................................... 10 Moore v. Kayport Package Express, Inc., 885 F.2d 531 (9th Cir. 1989) .................................................................................. 29 Moss v. United States Secret Serv., 572 F.3d 962 (9th Cir. 2009) ................................................................................ 5, 6 Nagler v. Admiral Corp., 248 F.2d 319 (2d Cir. 1957) ............................................................................. 28, 29 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 4 of 29 Page ID #:140 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -iv- Photomedex, Inc. v. Irwin, 601 F.3d 919 (9th Cir. 2010) ............................................................................ 25, 26 Reddy v. Litton Indus., Inc., 912 F.2d 291 (9th Cir. 1990) .................................................................................. 29 Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003) ................................................................................ 10 Rosenberg Bros. & Co. v. Arnold, 283 F.2d 406 (9th Cir. 1960) ( ............................................................................... 30 Skaff v. Meridien N. Am. Beverly Hills, LLC, 506 F.3d 832 (9th Cir. 2007) ................................................................................ 5, 6 Swierkiewicz v. Sorema, N.A., 534 U.S. 506, 122 S. Ct. 992 (2002) ................................................................ 12, 13 Sybersound Records, Inc. v. UAV Corp., 517 F. 3d 1137 (9th Cir. 2008) ......................................................................... 22, 23 United States v. Webb, 655 F.2d 977 (9th Cir. 1981) .................................................................................. 30 William O. Gilley Enters., Inc. v. Atlantic Richfield Co., 588 F.3d 659 (9th Cir. 2009) .................................................................................... 5 Zyla v. Wadsworth, Div. of Thompson Corp., 360 F. 3d 243 (1st Cir. 2004) ................................................................................. 18 Statutes 15 U.S.C. § 1125 .............................................................................................. 1, 12, 16 17 U.S.C. § 501(a) ....................................................................................................... 8 17 U.S.C. § 504(c) ....................................................................................................... 8 17 U.S.C. §§ 106(1)-(3), (5) ........................................................................................ 8 Rules Fed. R. Civ. P. 8 .................................................................................................. passim Fed. R. Civ. P. 12(b)(6) ............................................................................................... 3 Fed. R. Civ. P. 15 ....................................................................................................... 23 Fed. R. Civ. P. 15(a) .................................................................................................. 22 Fed. R. Civ. P. 41(a)(1) ................................................................................................ 1 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 5 of 29 Page ID #:141 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -v- Other Authorities 2 ANNE GILSON LALONDE & JEROME GILSON, GILSON ON TRADEMARKS (2014) ............................................................................................................... 14, 17 PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT (3d ed. Supp. 2012) .................................................................................... 14, 17, 18 5 J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION (4th ed. 2015) ..................................................................................................... 3, 14 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT (2008) ................................................................................................... 5, 8, 9, 11, 12 Jane C. Ginsburg, The Right to Claim Authorship in U.S. Copyright and Trademark Law, 4 Houston L. Rev. 263 (2004) ........................................................... 13, 16, 18 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 6 of 29 Page ID #:142 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -1- Plaintiff Richard Friedman (“plaintiff” or “Friedman”) respectfully submits this memorandum of points and authorities in opposition to defendants’ 1 Motion to Dismiss First, Third, Fourth and Fifth Claims for Relief in the First Amended Complaint (“FAC”). 2 I. PRELIMINARY STATEMENT Lacking substantive merit, defendants’ motion to dismiss is nothing short of a knee jerk respond and propitious attempt to eradicate this action in its early stages. Defendants’ argument that the allegations fail to meet the notice pleading standard set forth in Rule 8 of Federal Rules of Civil Procedure is meritless. Plaintiff Friedman sufficiently and adequately alleges facts that satisfies each and every essential element to support claims for copyright infringement (first claim) 3 , violation of § 43(a)(1)(B) of the Lanham Act (15 U.S.C. § 1125(a)(1)(B)) (third claim) and violation of moral rights under the copyright laws of Germany and France (fourth and fifth claims). This is particularly true given that the factual 1 The Motion at issue was brought by defendants Hans Zimmer, individually and dba Remote Control Songs, Twentieth Century Fox Film Corporation, Fox Searchlight Pictures, Inc., Fox Entertainment Group, Inc., New Regency Productions, Inc., River Road Entertainment, LLC, Plan B Entertainment, Inc., Remote Control Productions, Inc., and Sony Music Entertainment (collectively “defendants”). On April 24, 2015, Plaintiff filed a Notice of Dismissal pursuant to Fed. R. Civ. P. 41(a)(1) without prejudice as to defendant Monarchy Enterprises, S.A.R.L., individually and dba Regency Enterprises (ECF # 28). 2 Pursuant to the Court’s May 5, 2015 Order, defendant Imagem Production Music, LLC dba 5 Alarm Music and dba Cypress Creek Music (“Imagem”) has until June 1, 2015 to respond to the FAC (ECF # 30). 3 The first claim for relief for copyright infringement is asserted against all defendants except Sony Music Entertainment (“SME”) and Imagem Production Music, LLC (“Imagem”). Because defendants’ motion does not dispute the sufficiency of the second claim for copyright infringement alleged only against defendant SME, plaintiff does not address this claim in this opposition. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 7 of 29 Page ID #:143 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -2- allegations of the FAC must be liberally construed and all reasonable inferences drawn in favor of plaintiff Friedman. Contrary to the well-established principles governing motions to dismiss, defendants, in seeking dismissal, ignore many of the express factual allegations in the FAC and instead draw every factual inference in their favor, not plaintiff’s. Each of the three arguments advanced by defendants in support of their motion to dismiss the first, third, fourth and fifth claims fails. Defendants’ first assert that plaintiff’s claim for copyright infringement should be dismissed because it fails to satisfy Rule 8’s pleading requirements in that it lumps all defendants together without alleging the specific infringing activity by each of them. Citing no authority whatsoever, defendants seek dismissal of this claim based on plaintiff’s alleged failure to meet a heightened pleading standard that does not exist. All plaintiff Friedman is required to allege is a “short a short and plain statement of the claim” showing [he] is entitled to relief.” Fed. R. Civ. P. 8(a). The authority makes clear that any increase in pleading standards for copyright infringement suits will have a chilling effect on the likelihood of rights-holders to file an action. Second, defendants contention that plaintiff’s third claim for relief, alleging a violation of section 43(a)(1)(B) of the Lanham Act, is foreclosed by the holding in Dastar Corp v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S. Ct. 2041 (2003) is similarly misplaced. The third claim alleges that defendants, in advertisements and promotional material, falsely credited Hans Zimmer (“Zimmer”), rather than plaintiff Friedman, as the composer of a musical score for the film 12 Years as a Slave (“12YAS”). (FAC ¶ 36.) The Dastar case, however, addresses a “reverse passing off” claim asserted under § 41(a)(1)(A) of the Lanham Act, whereas plaintiff’s claim is based on the “misleading advertising” prong of § 43(a)(1)(B). Defendants’ argument relies entirely on a narrow and selective reading of the Dastar opinion and simply ignores applicable case law addressing Dastar’s application to § 41(a)(1)(B) claims. See Clauson v. Eslinger, 455 F. Supp. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 8 of 29 Page ID #:144 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -3- 2d 256, 261 (S.D.N.Y. 2006); 5 J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 27.85 (4th ed. 2015) (hereinafter “MCCARTHY”). Lastly, defendants assert that the Court should also dismiss the fourth and fifth claims, alleging violation of moral rights under German and French copyright laws, because plaintiff has failed to plead facts establishing a basis for litigating such claims in this Court. This argument is similarly flawed as it is predicated on the misleading premise that “[t]he law of the country of origin determines the nature of the rights held by the author of a copyrighted work.” (See Defendants’ Motion at 7.) While this is a technically correct statement of law, it is inapplicable in this context. Rather, the applicable legal issue here is that violations of foreign copyright laws are, indeed, cognizable in U.S. courts. See Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481, 491-492 (2d Cir. 1998); Armstrong v. Virgin Records, 91 F. Supp. 2d. 628 (S.D.N.Y. 2000). For the reasons set forth below, plaintiff Friedman respectfully requests that the Court deny defendants’ motion to dismiss the first, third, fourth and fifth claims for relief in the FAC. II. THE STANDARD GOVERNING DEFENDANTS’ MOTION TO DISMISS Motions to dismiss under Fed. R. Civ. P. 12(b)(6) are generally disfavored. They are to be rarely granted and then only in extreme circumstances. See, e.g., Hospital Bldg. Co. v. Trustees of Rex Hosp., 425 U.S. 738, 746, 96 S. Ct. 1848, 1853 (1976); Gilligan v. Jamco Dev. Corp., 108 F.3d 246, 249 (9th Cir. 1997); Catch Curve, Inc. v. Venali, Inc., 519 F. Supp. 2d 1028, 1034 (C.D. Cal. 2007). In ruling on a motion to dismiss, pursuant to Fed. R. Civ. P. 12(b)(6), the court must accept as true all factual allegations in the complaint, and must draw all reasonable inferences from those allegations, construing the complaint liberally in the light most favorable to the plaintiff. Moss v. United States Secret Serv., 572 F.3d 962, 967-68 (9th Cir. 2009); William O. Gilley Enters., Inc. v. Atlantic Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 9 of 29 Page ID #:145 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4- Richfield Co., 588 F.3d 659, 662 (9th Cir. 2009) (per curiam); Boram v. Bogan, 320 F.3d 1023, 1028 (9th Cir. 2003). Nothing more than notice pleading is required. Erickson v. Pardus, 551 U.S. 89, 93, 127 S. Ct. 2197, 2200 (2007) (per curiam). Fed. R. Civ. P. 8 requires, not a specific quantity of facts, but simply “a short and plain statement of the claim showing that the pleader is entitled to relief.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 1964 (2007). “[A] well-pleaded complaint may proceed even if . . . actual proof of those facts is improbable, and a recovery is very remote and unlikely.” Twombly, 550 U.S. at 556 (quotations omitted). “Specific facts are not necessary,” and a complaint need only give the defendant fair notice of the claims and grounds upon which they rest. Erickson, 551 U.S. 89, 93, 127 S. Ct. 2197, 2200 (2007) (per curiam); Skaff v. Meridien N. Am. Beverly Hills, LLC, 506 F.3d 832, 841 (9th Cir. 2007); Twombly, 550 U.S. at 555, 127 S. Ct. at 1965 (detailed factual allegations are not required); see also Ashcroft v. Iqbal, 556 U.S. 662, 677-78, 129 S. Ct. 1937, 1949 (2009). The factual allegations of the FAC need only “be enough to raise a right to relief above the speculative level, . . . on the assumption that all the allegations in the complaint are true (even if doubtful in fact).” Twombly, 550 U.S. at 555, 127 S. Ct. at 1965; Skaff, 506 F.3d at 842 (Twombly did not impose heightened pleading standards.) Allegations are not to be discounted because they are “unrealistic or nonsensical,” but rather because they state a legal conclusion. Moss, 572 F.3d at 969. There must simply be “enough facts to state a claim to relief that is plausible on its face.” Twombly, 127 S. Ct. at 1974. Facial plausibility exists “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 677-78, 129 S. Ct. at 1949. Fed. R. Civ. P. 8(a) definitely does not require a heightened standard of pleading in copyright infringement cases. See CoStar Realty Info., Inc. v. Field, 612 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 10 of 29 Page ID #:146 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5- F. Supp. 2d 660, 674 (D. Md. 2009) (finding, after Twombly, that “[t]here is no heightened pleading standard for copyright infringement”). Rather, the "short and plain statement" and notice pleading standard under Rule 8 has been specifically applied to copyright actions. Plaintiff’s copyright claims are sufficient ‘[s]o long as the allegations of the complaint as a whole raise a reasonable expectation that discovery will reveal evidence of the necessary elements for copyright infringement[.]” 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 12.09[A][3] (2008) (hereinafter “NIMMER”). Defendants ask the Court to ignore this standard and instead impose a heightened pleading requirement, relying entirely on unpublished or wholly inapplicable decisions. Plaintiff has pled the requisite elements of the claims alleged in the FAC with sufficient detail to apprise defendants of the challenged conduct and in full compliance with Fed. R. Civ. P. 8(a). Accordingly, plaintiff’s copyright infringement, Lanham Act and moral rights claims sufficiently meet this liberal pleading standard and should not be dismissed. III. THE ALLEGATIONS IN THE FAC Each of the claims at issue emanate from plaintiff’s copyright interest in a musical composition he wrote and composed in 2004 entitled To Our Fallen (hereinafter referred to as “the Composition”). (FAC ¶ 18.) The FAC first alleges that except for defendant Sony Music Entertainment (“SME”) and Imagem Production Music LLC (“Imagem), all of the other above-referenced defendants directly infringed on plaintiff’s copyrights by reproducing and publishing his protected musical composition in the motion picture 12 Years as a Slave (“12YAS”) in the United States and throughout the world. (Id. ¶ 23.) The FAC alleges that in or around March 4, 2004, plaintiff and ABACO, a commercial music library, entered into a written agreement in which plaintiff assigned the legal ownership of the Composition to ABACO, but retained a beneficial interest in the copyright. (Id. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 11 of 29 Page ID #:147 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -6- ¶ 19.) In May 2004, ABACO recorded a derivative work of the Composition in a music sampler entitled American Heart, which contained the Composition and additional compositions by plaintiff and a second composer. (FAC ¶ 20.) The (i) Composition and the (ii) sound recording of To Our Fallen, contained therein, (hereinafter referred to as the “Sound Recording”) was widely distributed in 2004 and, thus, published at that time. (Id. ¶ 20.) In 2006, ABACO applied for and was issued a Certificate of Registration of a Claim to Copyright in and to the Composition and Sound Recording by the Register of Copyrights (No. SR 392-592). (Id. ¶ 21.) Accordingly, plaintiff is the beneficial owner of the Composition and the Sound Recording. (Id.) The FAC further alleges that the Composition and Sound Recording were embodied in an episode of the television show Desperate Housewives entitled “The Juiciest Bites-In Memoriam.” (Id. ¶ 22.) The show aired on the ABC Television Network in April 2008 and October 2009. (Id.) Plaintiff asserts that the string overdub portions for the music for “The Juiciest Bites-In Memoriam” was recorded at a facility owned in whole or in part by defendant Hans Zimmer (“Zimmer”) called Remote Control Productions. (Id.) In or around 2013, defendants produced and distributed the motion picture 12YAS in the United States and throughout the world. (Id. ¶ 23.) 12YAS embodied and reproduced musical compositions and cues, including, inter alia, the main musical theme entitled Solomon Northup, ostensibly composed by defendant Zimmer. (Id.) Notably, (a) the main theme for 12YAS, Solomon Northup, (b) the music for the closing credits, and (c) eleven (11) other musical cues embodied in 12YAS are based upon, and substantially similar to, the Composition that is the subject of this dispute. (Id. ¶ 24.) All or most of the musical score for 12YAS was recorded at defendant Zimmer’s Remote Control Productions facility, the same location where portions of the music “The Juiciest Bites-In Memoriam” (which embodied plaintiff’s protected Composition and Sound Recording) was recorded in Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 12 of 29 Page ID #:148 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -7- or around 2008. (Id. ¶ 22.) Plaintiff alleges that this presents compelling evidence that defendants had access to plaintiff’s copyrighted Composition and Sound Recording. (FAC ¶ 22.) Although 12YAS received widespread critical acclaim, generated substantial worldwide profits, and resulted in defendant Zimmer receiving a Golden Globe nomination for best musical score, none of the defendants ever asked plaintiff, or any other person or entity in privity with plaintiff, to use or license the protected Composition or Sound Recording in any capacity. (Id. ¶ 23- 24.) The FAC alleges defendant “Zimmer claims that he owns and/or controls all of the musical score and cues embodied in 12YAS.” (Id. ¶ 25.) The FAC further alleges that based on these false claims, defendants, in violation of plaintiff’s moral rights under the copyright laws of numerous foreign nations where 12YAS has been distributed and exhibited, have improperly and incorrectly credited defendant Zimmer, rather than plaintiff, as the composer of the Composition. (Id.) IV. THE FAC ADEQUATELY AND SUFFICIENTLY ALLEGES A CLAIM FOR COPYRIGHT INFRINGEMENT To establish a claim for direct copyright infringement, a plaintiff must demonstrate (1) ownership of a valid copyright and (2) “copying” of protectable expression by the defendant. Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir.), cert. denied, 484 U.S. 954, 108 S. Ct. 346, (1987); 4 A & M Records v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001); Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004); Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282 (1991); Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000); See Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir. 2003). The latter element may be established by showing that the works in question “are substantially similar in their protected elements” and that the infringing party “had access” to the copyrighted work. Metcalf v. Bochco, 294 F.3d 1069, 1072 (9th. Cir. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 13 of 29 Page ID #:149 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -8- 2002) (citation omitted). Infringement consists of the unauthorized exercise of one of the exclusive rights of the copyright holder delineated in section 106. 17 U.S.C. § 501(a). These rights include the right to reproduce the copyrighted work, the right to prepare derivative works, the right to distribute copies to the public, and the right to publicly display the work. 17 U.S.C. §§ 106(1)-(3), (5). Direct infringement does not require intent or any particular state of mind, although willfulness is relevant to the award of statutory damages. 17 U.S.C. § 504(c). A. The Federal Rules Do Not Impose a Heightened Pleading Standard on Copyright Infringement Claims There is no universal standard of heightened fact pleading. A pleader is only required to amplify a claim with more specific factual allegations in contexts where such amplification is necessary to render the claim plausible. See Iqbal, 556 U.S. at 669, 129 S. Ct. at 1944. Copyright infringement claims typically exhibit characteristics that require only the most minimal factual specificity. Infringement liability only requires proof of two elements: ownership and copying. 4 See 4 NIMMER § 13.01 (explaining that copying is often established by indirect evidence). Plaintiff does not dispute that under Federal Rule of Civil Procedure 8(a)(2), a complaint must contain a “short and plain statement of the claim showing that the pleader is entitled to relief.” “[D]etailed factual allegations” are not required. Twombly, 550 U.S. at 555, 127 S. Ct. at 1955. Here, the FAC sufficiently provides defendants with notice of the claims asserted against them. What plaintiff disputes is defendants’ unsupported argument a copyright action requires a plaintiff to identify the specific conduct by each defendant that constituted the alleged 4 As a matter of public policy, courts have refrained from increasing the pleading standards for copyright actions because this could create substantial roadblocks for plaintiffs wanting to protect their copyright interests. Any impediment to bringing an infringement suit erodes the protections copyright holders retain and could reduce the incentive for individuals to engage in the types of creative works protected under copyrights. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 14 of 29 Page ID #:150 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -9- infringement. Failing to cite a single relevant case, defendants’ seek to impose a heightened pleading standard that is incompatible with Fed. R. Civ. 8. There is no universal standard of heightened fact pleading. The determination of whether a claim requires amplification or is “plausible” is context-specific and requires the reviewing court to draw on its experience and common sense. Iqbal, 556 U.S. at 663-64, 129 S. Ct. at 1940. Copyright infringement claims including the one at issue here, exhibit characteristics that require only the most minimal factual specificity, and must be evaluated in light of their unique substantive requirements. In particular, infringement liability only requires proof of two elements: ownership and copying. 4 NIMMER § 13.01 (explaining that copying is often established by indirect evidence which must show access and substantial similarity) (emphasis added). The standard Rule 8 announces does not require “detailed factual allegations,” but enough to show that the pleader is entitled to relief. Iqbal, 556 U.S. at 678, 129 S. Ct. at 1949 (citing Twombly, 550 U.S. at 544, 127 S. Ct. at 1955); See Leatherman v. Tarrant County Narcotics Intelligence & Coordination Unit, 507 U.S. 163, 168, 113 S. Ct. 1160, 1163 (1993); Swierkiewicz v. Sorema, N.A., 534 U.S. 506, 514, 122 S. Ct. 992, 998-99 (2002). Indeed, the FAC alleges more than unadorned assertions that defendants unlawfully harmed the plaintiff. Specifically, plaintiff alleges facts to satisfy both of these essential elements and support a claim for direct copyright infringement against defendants. The FAC alleges that plaintiff Friedman has a protected copyright interest in the musical composition and sound recording entitled To Our Fallen, thus satisfying the first essential element. (FAC ¶¶ 18, 20-21.) To satisfy the second element, the FAC alleges that defendants had access to plaintiff’s copyrighted work and “produced and distributed the film 12YAS in the United States and throughout the world,” which “reproduced and embodied musical scores and cues ostensibly composed by defendant Zimmer” rather than plaintiff. (Id. ¶ 23.) “The main theme…, the music for the closing credits and eleven other musical cues embodied in 12YAS are based Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 15 of 29 Page ID #:151 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -10- on and substantially similar to the Composition” in which plaintiff has a protected copyright interest. (FAC ¶ 24.) “Neither Plaintiff, nor any other person in privity with Plaintiff, has been asked by Defendants…for permission to use or license Plaintiff’s Composition in 12YAS.” (Id.) These allegations adequately describe defendants’ infringing conduct and provide notice of the lawsuit and cause of action asserted against them. Accordingly, the FAC more than sufficiently satisfies Rule 8’s notice pleading standard and requires that the Court accept the allegations as true. Moreover, none of the cases relied on by defendants even remotely supports the notion that there is a heightened pleading requirement for copyright cases or that a plaintiff must identify the specific conduct by each defendant that constituted the alleged infringement. For example, defendants cite Flores v. EMC Mortgage Co., 997 F. Supp. 2d 1088, 1103 (E.D. Cal. 2014) for the proposition that plaintiff is required to allege facts specifically identifying each infringing action undertaken by each defendant. Although Flores briefly discusses notice pleading generally, it does not involve any claim for copyright infringement. Rather, it concerns a complaint that lumps defendants together such that it failed to distinguish the claims and alleged wrongs among defendants. Flores, 997 F. Sup. 2d 1088. Here, the FAC makes clear which claim is asserted against each defendant. Defendants also cite and rely on the wholly inapplicable case of Eberhard Architects, LLC v. Bogart Architecture, Inc., 2014 WL 4354516, at *3 (N.D. Ohio Aug. 29, 2014) in which the court concluded that plaintiff’s generic allegations that “all defendants engaged in copyright infringement” did not shed light on how the defendants engaged in copyright infringement. Unlike Eberhard Architects, LLC, plaintiff alleges substantially more facts than just stating that defendants engaged in copyright infringement. (FAC ¶¶ 22-27.) Indeed, the FAC specifically describes how and why defendants’ conduct constitutes infringement of plaintiff’s copyrighted compositions. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 16 of 29 Page ID #:152 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -11- In further support of their argument that the first claim for copyright infringement does not meet Rule 8’s pleading standard, defendants also cite In re Providian Fin. Corp. ERISA Litig., 2002 WL 31785044, at *4 (N.D. Cal. Nov. 14, 2002), which does not remotely concern any copyright claim. Indeed, this case involved a class action complaint charging defendants with breach of fiduciary duty requirements imposed by ERISA. Id. In the single paragraph decision, the court held that the complaint was insufficient to put defendants on notice of the claims against them because the plaintiffs lumped the various classes of defendants into undifferentiated groups and alleged generally that they had all violated all of the asserted fiduciary duties. Id. Acknowledging that Rule 8(a) requires only a “short and plain statement of the claim,” the court ordered plaintiffs to amend the complaint so that each category of defendants had notice of their alleged duty and breach. Id. Here, there is no claim for breach of fiduciary duty, which imposes a different standard of care depending on the relationship of the parties. Despite the fact that some of the defendants are distributors and some are producers, a copyright infringement claim does not impose different standards of care on defendants operating at various levels of the supply chain. The contention that a defendant cannot be liable for copyright infringement for its involvement in production of a motion picture is simply wrong. To the extent a defendant possesses the “right and ability to supervise the infringing conduct” and has “an obvious and direct financial interest in the exploitation of the copyrighted materials,” the defendant can be vicariously liable for the alleged copyright infringement. NIMMER § 12.04[C][1]; Fonovisa, Inc. v. Cherry Auctions, Inc., 76 F. 3d 259 (9th Cir. 1996) (a flea market owner could be held liable for contributory and vicarious infringement). The Ninth Circuit has interpreted the knowledge requirement for contributory copyright infringement to include “both those with actual knowledge and those who have reason to know of direct infringement. Ellison v. Robertson, 357 F. 3d 1072, 1076 (9th Cir. 2004) (emphasis in original). Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 17 of 29 Page ID #:153 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -12- The acts of related defendants, such as here, may be joined a single count. See, e.g. 3 NIMMER § 12.04[A] (discussing contributory infringement) and § 12.04[C][1] (citing Encore Music Productions, Inc. v. London Film Productions, Inc., 89 U.S.P.Q. 501 (SDNY 1951) “the producer would be responsible for its own acts of infringement, and also might be liable for contributing to the alleged infringing acts of five exhibitors in violation of plaintiff's public performing rights”)). V. PLAINTIFF’S LANHAM ACT CLAIM IS NOT PRECLUDED BY THE DASTAR DECISION A. The Dastar Decision Only Dealt with the “Reverse Passing Off Prong” of the Lanham Act, i.e. Section 43(a)(1)(a), and Not the Prong that Forms the Basis for Plaintiff’s Claim, Section 43(a)(1)(B) The FAC alleges that defendants violated section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) for unfair competition and misrepresentation in connection with plaintiff’s copyrighted Composition. Defendants assert that plaintiff’s third claim for relief, for alleged violation of the Lanham Act, is precluded by Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) because it would conflict with the copyright laws, which protect the author/owner of any idea, concept or communication. Defendants, however, rely on a narrow and self-serving reading of Dastar and fail to address any of the later authorities interpreting the opinion to the contrary. Notably, the Dastar case dealt only with the “reverse passing off” prong of § 43(a): § 43(a)(1)(A) of the Lanham Act (15 U.S.C. § 1125(a)(1)(A)) , whereas plaintiff’s claim deals instead with § 43(a)(1)(B), the “misleading advertising” prong of the Lanham Act (15 U.S.C. § 1125(a)(1)(B)). § 43(a)(1)(B) prohibits using false descriptions and designations of origin when advertising or promoting goods or services in commerce. (FAC ¶ 34.) The FAC alleges that, “[p]ursuant to §43(a)(1)(B) of the Lanham Act, Defendants have misrepresented the nature, Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 18 of 29 Page ID #:154 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -13- characteristics and qualities of Defendant Zimmer’s services. The acts and activities of Defendants and those acting in concert with them as set forth above, constitute unfair competition with Plaintiff.” (FAC ¶ 35.) The Dastar decision only addresses “reverse passing off” under § 43(a)(1)(A), but preserves an alternative basis for an aggrieved author to assert a Lanham Act claim: the misrepresentation in advertising prong of § 43(a)(1)(B). As Justice Scalia stated: 5 [O]ne or more of the respondents might have a cause of action -- not for reverse palming off under the “confusion…as to the origin” provision of §43(a)(1)(A), but for misrepresentation under the “misrepresents the nature, characteristics [or] qualities” provision of §43(a)(1)(B). Dastar Corp., 539 U.S. at 38, 123 S. Ct. at 2050. In Zyla v. Wadsworth, Div. of Thompson Corp., 360 F. 3d 243, 252 n. 8 (1st Cir. 2004), the Court commented on the statement made by Justice Scalia in the Dastar opinion, noting: The Court in Dastar left open the possibility that some false advertising claims could be vindicated under the auspices of §43(a)(1)(B)’s prohibition on false advertising. See 539 U.S. at 38, 123 S. Ct. at 2050. Moreover, several prominent commentators have also indicated that the Supreme Court has preserved authors’ claims under § 43(a)(1)(B): If the false advertising or promotion of a book or a film misleads the public as to who wrote, acted in or directed the work, the artists may find relief under the false advertising 5 See Jane C. Ginsburg, The Right to Claim Authorship in U.S. Copyright and Trademark Law, 4 Houston L. Rev. 263, 272 (2004) (“It [the Dastar Court] preserved claims under a related section of the trademark act [§ 43(a)(1)(B)]. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 19 of 29 Page ID #:155 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -14- provisions of the Lanham Act. 2 ANNE GILSON LALONDE & JEROME GILSON, GILSON ON TRADEMARKS § 7.07[6][d][ii][A] (2014) (hereinafter “GILSON”). Similarly, another notable treatise opines: Because the [Dastar] Court’s opinion addressed only section 43(a)(1)(A), it left open the possibility of relief under section 43(a)(1)(B)’s imposition of liability for misrepresenting “the nature, characteristics, qualities of defendant’s goods; unlike section 43(a)(1)(A), section 43(a)(1)(B) requires that the offending use be in “commercial advertising or promotions.” 3 PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT § 17.14.3 (3d ed. Supp. 2012) (hereinafter “GOLDSTEIN”). Consonant with the case law and treatises interpreting the Dastar opinion mentioned above, MCCARTHY also agrees that the Court left open the possibility for authors of artistic works under § 43(a)(1)(B) of the Lanham Act, stating: Because the Court’s opinion addressed only section 43(a)(1)(A), it left open the possibility for relief…of literary and artistic works under section 43(a)(1)(B), which bars misrepresentations of the “nature,” “characteristics” and “qualities” of a defendant’s goods. However…section 43(a)(1)(B) requires the offending use to be in “commercial advertising or promotion.” (emphasis added) MCCARTHY, supra. Plaintiff and defendant Zimmer are both music composers for film. Plaintiff, in the FAC, alleges that “[t]he applicable misrepresentation in Defendants’ advertising and promotional materials reads: ‘MUSIC BY HANS ZIMMER’ rather than ‘MUSIC BY RICHARD FRIEDMAN.’” (FAC ¶ 36.) Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 20 of 29 Page ID #:156 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -15- The FAC further alleges that “Defendants knew, or had reason to believe, that these representations in commercial advertising and promotions throughout the United States and numerous foreign nations crediting Defendant Zimmer with ownership of the works in 12YAS were false and misleading, and were likely to, and did cause a substantial segment of viewers of the film to be deceived, confused, and/or mistaken about the nature, source, characteristics, qualities, and/or the origin of the music embodied in 12YAS.” (FAC ¶ 38.) B. The Cases Relied on by Defendants Are Not Binding on this Court and Conflict with Other Authority Addressing the Dastar Decision In support of their argument that decision of Dastar Corp. v. Twentieth Century Fox Film Corp., precludes plaintiff from bringing its Lanham Act claim, defendants rely only on cases that provide a limited and incomplete view of the applicable law. Defendants fail to discuss, distinguish or even address any of the case authority or treatises, some of which are mentioned above, that take a position contrary to the one expressed in their Motion. For example, defendants cite Antidote Int’l Films, Inc. v. Bloomsbury Publ’g PLC, 467 F. Supp. 2d 394, 400 (S.D.N.Y. 2006) for the proposition that § 43(a)(1)(B) cannot be read to refer to authorship. However, the same court in the same year, in Clausen v. Eslinger, 455 F.Supp. 2d 256 (S.D.N.Y. 2006), held that § 43(a)(1)(B) could provide relief for literary or artistic works that were misrepresented in advertising or promotional materials. The Clausen court, cited to Justice Scalia’s statement in Dastar cited by plaintiff (539 U.S. at 38, supra), in holding: The Dastar Court explicitly left open the possibility that some false authorship claims could be vindicated under the auspices of this section’s [§ 43(a)(1)(B)’s] prohibition on false advertising.” Clausen , 455 F.2d at 261-62. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 21 of 29 Page ID #:157 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -16- The Clausen court also held that: The [Dastar] Court grounded its holding in what it ruled was the “natural understanding” of section 43(a)(1)(A)’s phrase “origin of goods” [citation]. It concluded, in short, that although this phrase does not extend to the originator of the idea that the goods embody, it does reach beyond geographic origin to origin of production of physical goods at issue. [Citation.] In contrast, Congress did not incorporate any such reference into §43 (a)(1)(B), the false advertising prong of the Lanham Act. 15 U.S.C. §1125(a)(1)(B). [Emphasis added.] Instead, in section 43(a)(1)(B), it mandated liability for misrepresentation of “the nature, characteristics, [or] qualities” of goods in commercial advertising or promotion. 15 U.S.C. §1125(A)(1)(B). Id. Furthermore, defendants’ reliance on Baden Sports, Inc. v. Molten USA, Inc., 556 F. 3d 1300, 1307 (Fed. Cir. 2009) is also misplaced. In Baden, a case that deals with the quality of basketballs and not mis-attribution of authorship, the court, erroneously relied on what it understood to be applicable Ninth Circuit case law finding that “authorship…is not a nature, characteristic, or quality, as these terms are used in Section 43(a)(1)(B) of the Lanham Act. 6 Baden Sports, Inc., 556 F. 3d 6 Jane C. Ginsburg, supra, (“Arguably, removing my or the actor’s name and replacing it with another’s constitutes a false or misleading representation of fact (who is the author of this book; who performed in this film) that misrepresents the nature, characteristics, or qualities (authorship, performance) of the goods (the work). Note that, for purposes of section 43(a)(1)(A), ‘goods’ would mean only the physical copies….In any event, the potential availability of a section 43(A)(1)(B) Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 22 of 29 Page ID #:158 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -17- at 1307. Although the Baden Sports, Inc. case was before the Federal Circuit to address patent claims relating to the basketballs, the court pointed out that it applies the law of the regional circuit on non-patent issues. Id. at 1304. Thus, the court relied on Sybersound Records, Inc. v. UAV Corp., 517 F. 3d 1137 (9th Cir. 2008), a Ninth Circuit case, in deciding the Lanham Act issue. Like Baden Sports, Inc., Sybersound was not a case dealing with attribution or misattribution of authorship, but rather the licensing status of karaoke records. In articulating that point, Sybersound, with Baden Sports, Inc. following its lead, actually held that the underlying communicative work is protectable under the advertising prong of § 43(a)(1)(B) of the Lanham Act: “[T]he nature, characteristics, and qualities of karaoke recordings under the Lanham Act are more properly construed to mean characteristics of the good itself, such as the original song and artist of the karaoke recording, and the quality of its audio and visual effects.” 517 F. 3d at 1144. 7 Defendants also rely on Agence France Presse v. Morel, 769 F. Supp. 2d 295, 307-08 (S.D.N.Y. 2011) and in so doing, conflates the § 43(a)(1)(A) and § 43(a)(1)(B) claims raised in that case to assert--without specific citation to any part of the decision--that the “Dastar forecloses plaintiff’s § 43(a)(1)(B) false advertising claim based on alleged misrepresentation of authorship.” (Motion at 6.) A close reading of the Morel, however, shows that the court was not discussing “authorship” regarding plaintiff’s § 43(a)(1)(B) claim, but rather defendants’ false statements that they were authorized to distribute the images of photographs, and claim becomes particularly significant if, after Dastar, the origin of copyrighted works is falsely designated only where the entire work is misattributed.” 7 See GILSON § 7.02[6][d] (2014) (commenting on the Sybersound decision: “The Ninth Circuit was more ambiguous in holding that false statements about the licensing status of karaoke songs are not covered, but that statements about the original songs or artists may be”); GOLDSTEIN § 17.14.3 n. 180.1 (calling Sybersound “a more questionable decision”); Brownmark Films, LLC v. Comedy Partners, 800 F. Supp. 2d 991, 997 (E.D. Wis. 2011) (“the Sybersound Records court’s holding has been widely lampooned in several respected treatises). Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 23 of 29 Page ID #:159 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -18- plaintiff’s claim that a unrelated third party was the author. Morel, 769 F. Supp. 2d at 308. The Morel court notes that “[y]et neither of these misrepresentations concern the nature, characteristics, qualities, or geographic origin of the photographs.” Id. To the contrary, in Jane C. Ginsburg’s seminal law review article about the unintended effects of Dastar, she argues that “authorship and performance are the nature, characteristics, or qualities…of the goods (the work).” 8 Jane C. Ginsburg, supra at 275. She asserts “removing my or the actor's name and replacing it with another's constitutes a false or misleading representation of fact (who is the author of this book; who performed in this film) that misrepresents the nature, characteristics, or qualities (authorship; performance) of the goods (the work). Note that, for purposes of section 43(a)(1)(B), the [Dastar] Court appears to have acknowledged that “goods” can mean a “communicative work,” while, for purposes of section 43(a)(1)(A), “goods” would mean only the physical copies. Id. Other notable treatises take a similar position: “Although Dastar significantly undermined section 43(a)(1)(A)’s efficacy for requiring attribution of authorship, it did leave open the possibility of relief under section 43(a)(1)(B), dealing with misrepresentation of the quality or characteristics of goods and services, so long as the plaintiff can meet the provisions’ threshold requirement of commercial advertising or promotion.” (emphasis added) 3 GOLDSTEIN, supra, § 17.24.2.1 Plaintiff is not making a § 43(a)(1)(A) Lanham Act claim for reverse passing off like in Dastar. Rather, plaintiff’s claim implicates the false advertising prong of 8 See also Jane Ginsburg, supra, n.6. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 24 of 29 Page ID #:160 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -19- § 43(a)(1)(B) arising from consumer confusion between plaintiff’s musical composition and that of defendant Zimmer’s as a result of false advertising and promotion of allegedly infringing musical work. (FAC ¶¶ 26-28). Unlike plaintiff Friedman and defendant Zimmer who are both musical composers in direct competition with each other, the parties in the Antidote and Morel cases relied on by defendants, were creators on one hand and distributors of communicative products on the other. The claims in those cases both concerned “false representation of ‘affiliation’ between the author and a distributor of communicative products.” Morel, 769 F. Supp. 2d at 307. Moreover, even in Sybersound, the sole basis for the court’s decision, the Ninth Circuit acknowledged the nature, characteristics, and qualities of karaoke recordings under the Lanham Act are more properly construed to mean “characteristics of the good itself, such as the original song and artist of the karaoke recording….” (emphasis added) 556 F.3d at 1305-07. Except for Sybersound as discussed by the Baden Sports, Inc. case, defendants fail to cite a single Ninth Circuit case supporting their argument. In fact, defendants neglect to cite the pertinent Ninth Circuit case Photomedex, Inc. v. Irwin, 601 F.3d 919, 932 -933 (9th Cir. 2010). In Photomedex, the Ninth Circuit, vacated a ruling granting summary judgment based on claims relating to defendant Irwin’s status as inventor of a particular device, and without any discussion of Dastar, held; Photomedex asserts the defendants deceptively proclaimed Irwin was “inventor” of the XTRAC, i.e., that Irwin was the only, or at least the primary, inventor of the entire XTRAC laser system. Id. The court found that calling Irwin the “inventor of the XTRAC” might have been misleading and vacated the summary judgment ruling and remanded to the lower court for further proceedings on the claims relating to defendants’ representations that Irwin was the inventor of the XTRAC. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 25 of 29 Page ID #:161 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -20- Id. Thus, the two Ninth Circuit decisions, Sybersound and Photomadex, as well as the other authorities discussed herein, require that defendants’ motion be denied with respect to plaintiff’s third claim for relief alleging a violation of § 43(a)(1)(B) for false advertising under the Lanham Act. VI. PLAINTIFF ADEQUATELY STATES CLAIMS FOR VIOLATIONS OF MORAL RIGHTS UNDER THE COPYRIGHT LAWS OF GERMANY AND FRANCE Defendants argue that the fourth and fifth claims for violation of moral rights under the copyright laws of Germany and France should be dismissed on the grounds plaintiff fails to allege facts sufficient to show a basis for litigating such claims in this Court. Defendants’ assertion, however, is predicated on the accurate, but misleading assertion that it is “the law of the country of origin determines the nature of the rights held by the author of a copyrighted work.” (Motion at 7.) Plaintiff does not dispute that this an accurate expression of the law in light of the circumstances presented in the two cases relied on by defendants in making this point: Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F. 3d 82, 90-92 (2d Cir. 1998) and Fahmy v. Jay-Z, 788 F. Supp. 2d 10772, 1977-1083 (C.D. Cal. 2011). In those cases, the respective courts properly applied foreign law in order to determine the rights held by the author, but neither court held that violations of foreign copyright laws are not cognizable by U.S. District Courts. 9 Additionally, 9 See Boosey & Hawkes Music Publishing LLC v. Walt Disney Co., 145 F.3d 481, 491-92 (2d Cir, 1998)(copyright laws of 18 nations implicated and claims thereunder were permitted to proceed), Frink America, Inc. v. Champion Mach., Ltd, 961 F. Supp. 398, 404-05 (N.D.N.Y. 1997) (affirming that violations of foreign Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 26 of 29 Page ID #:162 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -21- defendants also cite Kelly v. Chicago Park District, 635 F. 3d 290, 298 (7th Cir. 2011) for the false proposition that because the U.S. Copyright Act does not recognize any moral rights in connection with musical compositions, that plaintiff, thus, has no moral rights to enforce. (Motion at 7.) Case law starkly rejects defendants empty assertion that plaintiff is precluded from bringing claims for violation of moral rights in musical compositions under the laws of foreign nations. For example, in one such case, Boosey & Hawkes Music Publishing LLC v. Walt Disney Co., 145 F.3d 481, 491-492 (2d Cir, 1998), the court found that the copyright laws of more than 18 nations were implicated and that claims under the laws of those countries were permitted to proceed in U.S. courts. Accordingly, plaintiff has properly pled the fourth and fifth claims, which can and should proceed in this Court. A. Plaintiff Is Not Required to Identify Any Further Activities Occurring within Germany or France Defendants also argue, albeit incorrectly, that the fourth and fifth claims should be dismissed because the FAC has not identified any activities capable of infringing on plaintiff’s rights that occurred in either Germany or France. Defendants argue that because the FAC alleges generally that 12YAS and its soundtrack were distributed “numerous foreign nations” and “many countries of the world” rather than identifying Germany and France specifically, plaintiff fails to properly state claims for violation of moral rights. (FAC ¶ 25, 29.) Despite defendants protestations, there is not requirement that plaintiff identify that the infringing activities took place specifically within Germany or France in order to properly state a claim for violation of moral rights or to satisfy Rule 8’s liberal notice pleading standard. copyright laws are cognizable in U.S. courts); Armstrong v. Virgin Records, 91 F. Supp. 2d 628 (S.D.N.Y. 2000) (same). Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 27 of 29 Page ID #:163 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -22- Indeed, the plaintiff incorporates by reference all previous paragraphs of the FAC including ¶¶ 25 and 29, which states that plaintiff’s moral rights have been violated under the copyright laws of the numerous foreign nations where 12YAS was distributed and exhibited. The FAC then sets forth, in the fourth and fifth claims for relief, the applicable provisions of the German and French copyright laws, which, inter alia, embody the moral rights allegedly infringed by defendants. Moreover, the argument advanced by defendants for dismissing these claims flies in the face of the underlying policy concerning notice pleading under Rule 8. “The interest and effect of the rules is to permit the claim to be stated in general terms.” Nagler v. Admiral Corp., 248 F.2d 319, 324 (2d Cir. 1957). Moreover, the rules are designed to “discourage battles over mere form of statement.” Id. Defendants’ form over substance argument exemplifies precisely what Rule 8 is intended to discourage. Accordingly, this Court should deny defendants’ motion to dismiss the fourth and fifth claims for relief. VII. IF ANY PORTION OF THE FIRST AMENDED COMPLAINT IS DEEMED DEFICIENT, LEAVE TO AMEND THE PLEADING SHOULD BE FREELY GRANTED As shown above, plaintiff’s FAC should not be dismissed. If the Court finds otherwise, however, plaintiff requests leave to amend its pleading. Fed. R. Civ. P. 15(a) provides that “leave shall be freely given when justice so requires.” If a complaint is dismissed for failure to state a claim, leave to amend should be granted unless no possible amendment would cure the complaint’s deficiencies. See Reddy v. Litton Indus., Inc., 912 F.2d 291, 296 (9th Cir. 1990). A denial of leave to amend is reviewed for abuse of discretion, “‘but such denial is “strictly” reviewed in light of the strong policy permitting amendment.’” Moore v. Kayport Package Express, Inc., 885 F.2d 531, 537 (9th Cir. 1989) (citation omitted); DCD Programs, Ltd. v. Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 28 of 29 Page ID #:164 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -23- Leighton, 833 F.2d 183, 190 (9th Cir. 1987) (reversing district court’s denial of plaintiff’s motion for leave to file a fourth amended complaint). In exercising that discretion, a district court must be guided by the underlying purpose of Fed. R. Civ. P. 15, which is “to facilitate decision on the merits, rather than on the pleadings or technicalities.” United States v. Webb, 655 F.2d 977, 979 (9th Cir. 1981). Indeed, “Rule 15’s policy of favoring amendments to pleadings should be applied with ‘extreme liberality.’” Id.; see also DCD, 833 F.2d at 186; Rosenberg Bros. & Co. v. Arnold, 283 F.2d 406 (9th Cir. 1960) (per curiam). Consequently, should the Court find any legal infirmity in the present FAC, plaintiff should be given leave to cure it. VIII. CONCLUSION For the reasons set forth above, plaintiff Friedman respectfully submits that defendants’ motion to dismiss the first, third, fourth and fifth claims for relief in the First Amended Complaint should be denied in its entirety. In the alternative, if the Court is inclined to grant the motion, plaintiff Friedman respectfully requests leave to amend. Dated: May 18, 2015 BLECHER COLLINS PEPPERMAN & JOYE, P.C. By: /s/ Maxwell M. Blecher Maxwell M. Blecher Attorneys for Plaintiff RICHARD FRIEDMAN 75607.1 Case 2:15-cv-00502-GHK-E Document 31 Filed 05/18/15 Page 29 of 29 Page ID #:165