Robert J. Marderosian et al v. Warner Bros. Entertainment Inc., et al

NOTICE OF MOTION AND MOTION to Dismiss Plaintiffs' Claims for Statutory Damages and Attorneys' Fees

C.D. Cal.June 20, 2017

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 B O I E S S C H I L L E R F L E X N E R L L P MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES BOIES SCHILLER FLEXNER LLP LINDA M. BURROW, State Bar No. 194668 lburrow@bsfllp.com JULIA J. BREDRUP, State Bar No. 275526 jbredrup@bsfllp.com 725 South Figueroa Street, 31st Floor Los Angeles, California 90017-5524 Telephone: (213) 629-9040 Facsimile: (213) 629-9022 Attorneys for Defendants WARNER BROS. ENTERTAINMENT INC. and NS PICTURES, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION ROBERT J. MARDEROSIAN, an individual; ARON M. MARDEROSIAN, an individual; TWELVE SIXTY, LLC, a California limited liability company, Plaintiffs, v. WARNER BROS. ENTERTAINMENT INC., a Delaware corporation; NS PICTURES, INC., a California corporation; MARCO E. BELTRAMI, an individual; PIANELLA MUSIC INC., a California corporation; DOES 1-10, inclusive, Defendants. Case No. 2:17-cv-01062 CAS (GJSx) NOTICE OF MOTION AND MOTION OF WARNER BROS. ENTERTAINMENT INC. AND NS PICTURES, INC. TO DISMISS PLAINTIFFS’ CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES; MEMORANDUM OF POINTS AND AUTHORITIES [Declaration of Julia J. Bredrup and [Proposed] Order filed concurrently herewith] The Honorable Christina A. Snyder Date: July 24, 2017 Time: 10:00 a.m. Ctrm.: 8D Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 1 of 17 Page ID #:268 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 B O I E S S C H I L L E R F L E X N E R L L P -1- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES TO ALL PARTIES AND TO THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on July 24, 2017, at 10:00 a.m., or as soon thereafter as this matter may be heard, in the courtroom of the Honorable Christina A. Snyder, located in the United States Courthouse, 350 West 1st Street, Courtroom 8D, 8th Floor, Los Angeles, CA 90012, Defendants Warner Bros. Entertainment Inc. and NS Pictures, Inc. (collectively, “Warner Bros.”) will and hereby do move this Court pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss with prejudice Plaintiffs’ claim for statutory damages and attorneys’ fees from their First Amended Complaint. This Motion is made on grounds that Plaintiffs are not entitled to statutory damages or attorneys’ fees because Plaintiffs failed to register timely the works at issue with the Copyright Office, see 17 U.S.C. § 412, and their request for statutory damages and attorneys’ fees is therefore barred as a matter of law. As no amendment could cure these defects as a matter of law, and as Plaintiffs already have been given one chance to amend, Warner Bros. requests that the dismissal be with prejudice. This Motion is based on this Notice of Motion, the accompanying Memorandum of Points and Authorities, the Declaration of Julia J. Bredrup filed concurrently herewith, all of the pleadings and other documents on file in this case, all other matters of which the Court may take judicial notice, and any further argument or evidence that may be received by the Court at the hearing. /// /// /// Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 2 of 17 Page ID #:269 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 B O I E S S C H I L L E R F L E X N E R L L P -2- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES Pursuant to Local Rule 7-3, counsel for Warner Bros. met and conferred with counsel for Plaintiffs by email on June 7, 2017 and June 12, 2017, and by phone on June 13, 2017. See Declaration of Julia J. Bredrup, ¶ 2. The parties were unable to resolve the issues presented in this Motion. Id. DATED: June 20, 2017 BOIES SCHILLER FLEXNER LLP LINDA M. BURROW JULIA J. BREDRUP By /s/ Linda M. Burrow LINDA M. BURROW Attorneys for Defendants WARNER BROS. ENTERTAINMENT INC. and NS PICTURES, INC. Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 3 of 17 Page ID #:270 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 B O I E S S C H I L L E R F L E X N E R L L P -i- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES TABLE OF CONTENTS Page MEMORANDUM OF POINTS AND AUTHORITIES ............................................. 1 I. INTRODUCTION ............................................................................................. 1 II. FACTUAL BACKGROUND ........................................................................... 2 A. The Unchanged Allegations of the FAC ................................................. 2 B. The Court’s Prior Dismissal Order Holds That Plaintiffs Are Barred from Recovering Statutory Damages or Attorneys’ Fees Because Plaintiffs Failed Timely to Register Their Works .................... 4 C. The FAC’s New Allegations ................................................................... 5 III. THIS COURT SHOULD DISMISS PLAINTIFFS’ CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES ................................ 6 A. The Court Already Has Held That Statutory Damages and Attorneys’ Fees Are Not Available Due to Plaintiffs’ Untimely Registration ............................................................................................. 7 B. The Alleged European Use of the Works Does Not Give Rise to a Claim for Attorneys’ Fees or Statutory Damages ................................ 8 IV. LEAVE TO AMEND SHOULD BE DENIED .............................................. 10 V. CONCLUSION ............................................................................................... 11 Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 4 of 17 Page ID #:271 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 B O I E S S C H I L L E R F L E X N E R L L P -ii- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES TABLE OF AUTHORITIES Page(s) Cases Derek Andrews, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) ................................................................ 4, 5, 7, 9, 10 Dos Santos v. Telemundo Commc’ns Grp., LLC, No. 12-1373 JVS, 2012 WL 9503003 (C.D. Cal. Dec. 19, 2012) ...................... 6-7 Grant v. Aurora Loan Servs., Inc., 736 F.Supp.2d 1257 (C.D. Cal. 2010) .................................................................... 6 Jordan-Benel v. Universal City Studios, Inc., No. CV-14-5577-MWF, 2015 WL 3888149 (C.D. Cal. June 24, 2015) ............................................................................. 2, 6, 10 L.A. News Serv. v. Reuters Television Int’l, Ltd., 149 F.3d 987 (9th Cir. 1998) ........................................................................... 1, 5-6 Martin v. Walt Disney Internet Grp., No. 09-1601-MMA (POR), 2010 WL 2634695 (S.D. Cal. June 30, 2010) ....................................................................................... 6 Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992) .................................................................................. 8 Por Los Rios, Inc. v. Lions Gate Entm’t, Inc., No. 2:13-cv-7640-CBM-PLA, 2014 WL 12605374 (C.D. Cal. May 21, 2014) ............................................................................... 6, 8, 9 Steckman v. Hart Brewing, Inc., 143 F.3d 1293 (9th Cir. 1998) .......................................................................... 2, 10 Subafilms Ltd. v. MGM-Pathe Commc’ns. Co., 24 F.3d 1088 (9th Cir. 1994) ................................................................. 1, 5, 8, 9-10 Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970 (9th Cir. 2010) .................................................................................. 6 Statutes 17 U.S.C. § 412 ............................................................................................................ 7 Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 5 of 17 Page ID #:272 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 B O I E S S C H I L L E R F L E X N E R L L P -iii- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES Fed. R. Civ. Proc. 12(b)(6) .......................................................................................... 6 Other Authorities 3 David Nimmer & Melville B. Nimmer, Nimmer on Copyright § 12.04[A][3][b] at 12-86 (Matthew Bender, Rev. Ed.) ........................................ 9 Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 6 of 17 Page ID #:273 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 B O I E S S C H I L L E R F L E X N E R L L P -1- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION Plaintiffs Robert J. Marderosian, Aron M. Marderosian, and Twelve Sixty, LLC (collectively, “Plaintiffs”) failed timely to register their musical composition (the “Composition”) and sound recording (the “Sound Recording”) (collectively, the “Works”), which Plaintiffs claim to have written for use in the main title theme for the television series Lucifer. As this Court already has recognized, the absence of a timely registration bars Plaintiffs’ claim for statutory damages and attorneys’ fees. See Order Granting Motion to Dismiss at 4-5, ECF No. 32 (May 1, 2017). This Court granted Plaintiffs’ request for leave to amend, however, to allow Plaintiffs to attempt to allege facts showing that they are entitled to additional relief, specifically arising from Defendants Warner Bros. Entertainment Inc. and NS Pictures, Inc.’s (collectively “Warner Bros.”) alleged use of the Works in Europe. See id. Plaintiff’s First Amended Complaint (“FAC”) makes clear that Plaintiffs are not entitled to any relief from any alleged European use of the Works whatsoever. While, as this Court has recognized, a copyright plaintiff can recover damages stemming from “‘extraterritorial exploitation of an infringing act that occurred in the United States,’” see id. (quoting L.A. News Serv. v. Reuters Television Int’l, Ltd., 149 F.3d 987, 992 (9th Cir. 1998), Plaintiffs claim-in an obvious effort to claim statutory damages and attorneys’ fees despite their untimely registration-that the purported European infringement is “completely separate and distinct from the Lucifer program infringements.” FAC, ¶ 33. Because, however, the Copyright Act does not have extraterritorial effect, alleged infringements occurring abroad do not state a claim for copyright infringement at all. E.g., Subafilms Ltd. v. MGM-Pathe Commc’ns. Co., 24 F.3d 1088, 1091 (9th Cir. 1994). If the alleged European use is not related to the alleged “Lucifer program infringements,” FAC, ¶ 33, that form the basis for Plaintiffs’ infringement claims, then the claim is not cognizable under U.S. copyright law, thereby barring Plaintiffs from recovering any damages in this Court, Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 7 of 17 Page ID #:274 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 B O I E S S C H I L L E R F L E X N E R L L P -2- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES let alone statutory damages and attorneys’ fees. In attempting to avoid the consequence of their late registration in order to seek statutory damages and attorneys’ fees, Plaintiffs have pled themselves out of a claim for the alleged European use altogether. Warner Bros. therefore respectfully requests that its Motion be granted and Plaintiffs’ claim for statutory damages and attorneys’ fees be dismissed. Moreover, because no amendment could change the fact that Plaintiffs failed to register any copyrights before Warner Bros. first allegedly used the Works, further leave to amend would be futile and should be denied. See, e.g., Steckman v. Hart Brewing, Inc., 143 F.3d 1293, 1298 (9th Cir. 1998) (the “general rule that parties are allowed to amend their pleadings . . . does not extend to cases in which any amendment would be an exercise in futility”); Jordan-Benel v. Universal City Studios, Inc., No. CV-14-5577-MWF (MRWx), 2015 WL 3888149, at **14-15 (C.D. Cal. June 24, 2015) (dismissing request for statutory damages and attorney’s fees without leave to amend). II. FACTUAL BACKGROUND A. The Unchanged Allegations of the FAC The FAC largely rehashes the allegations of the original Complaint. Plaintiffs Robert and Aron Marderosian allege they are “brothers who have worked together for almost 30 years” to “provide[ ] original musical compositions and productions for use in television, motion pictures, film trailers, film soundtracks, product commercials and video games.” FAC, ¶ 16. Plaintiff Twelve Sixty, LLC is the Marderosian brothers’ loan-out corporation. Id., ¶ 6. Plaintiffs claim that, in October 2015, Defendants Marco E. Beltrami and his company Pianella Music Inc. (collectively, “Beltrami”) approached them for help in composing music Beltrami was planning to submit to Warner Bros. for use as an opening theme for a television series titled Lucifer (the “Lucifer Theme”). See id., ¶¶ 18-20. After purportedly Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 8 of 17 Page ID #:275 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 B O I E S S C H I L L E R F L E X N E R L L P -3- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES coming to agreement with Beltrami on how Plaintiffs would be compensated and credited, Plaintiffs allegedly agreed to help compose the track. Id., ¶ 20. Plaintiffs allege that, over the next several days, they wrote an original musical composition entitled “Pay The Price” a/k/a “Being Evil Has A Price” (the “Composition”). Id. ¶ 21. Plaintiffs claim that they recorded the Composition and provided Beltrami with “an approximately three-and-a-half minute [master recording]” (the “Master”), id., “for potential use as the main title theme” for Lucifer. Id. Plaintiffs allege that they thereafter gave Beltrami the “electronic ‘.wav file’” for the Master. Id., ¶ 23. Plaintiffs allege that the submission of their Works to Warner Bros. and their agreement that it be used in the Lucifer Theme was contingent on Plaintiffs’ “recei[ving] compensation and credit for the creation” of their Works and on Plaintiffs retaining all of the publishing rights in the Composition and maintaining sole ownership of the Master. Id., ¶ 22. Plaintiffs allege that Beltrami failed to inform Warner Bros. of these terms. Id., ¶ 25. After learning that Warner Bros. selected “Pay The Price” a/k/a “Being Evil Has A Price,” for use as the Lucifer Theme, Plaintiffs claim they engaged in additional negotiations with Beltrami wherein they agreed that the “writers’ portion of music publishing in the six-second Lucifer Theme only-[but] not the [Composition as a whole]-could be split five ways for cue sheet purposes only” and that Plaintiffs allegedly would receive an “on-screen title card credit.” Id., ¶ 27. Plaintiffs allege, however, that the parties never executed “documentation memorializing” the terms of this purported agreement. Id., ¶ 28. Lucifer premiered on January 25, 2016. Id., ¶ 29. Its first season ran through April 2016. Id. Plaintiffs allege that the Lucifer Theme “was” and “continues to be used in most, if not all, episodes of the series save and except for its pilot.” Id. Plaintiffs first applied for registration of the Composition with the United States Copyright Office on August 11, 2016, more than six months after the Series debuted. Id., ¶ 38. Plaintiffs did not apply for registration of the Master until Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 9 of 17 Page ID #:276 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 B O I E S S C H I L L E R F L E X N E R L L P -4- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES January 29, 2017. Id. Plaintiffs do not allege that either the Composition or Master has actually been registered. Nor do they provide copies of the applications for registration they claim to have filed, which would disclose on their faces the first date of publication. B. The Court’s Prior Dismissal Order Holds That Plaintiffs Are Barred from Recovering Statutory Damages or Attorneys’ Fees Because Plaintiffs Failed Timely to Register Their Works Plaintiffs filed their Complaint on February 9, 2017, alleging that Warner Bros. infringed their copyrights in the Composition and Master by using an excerpt of each Work as the Lucifer Theme.1 On May 1, 2017, this Court granted Warner Bros.’ motion to dismiss Plaintiffs’ claims for statutory damages and attorneys’ fees from the original Complaint on the grounds that Plaintiffs had not registered their copyright before the first act of alleged infringement occurred. ECF No. 32 at 4 (holding that “[b]ecause plaintiffs’ allegations describe the ‘infringement of a copyright in an unpublished work’ that ‘commenced before the effective date of the registration,’ plaintiffs may not recovery statutory damages or attorney’s fees.”). The Court further rejected Plaintiffs’ argument that they should be able to recover statutory damages and attorneys’ fees for alleged uses that occurred after Plaintiffs applied for registration, noting that “the Ninth Circuit has held that ‘infringement “commences” for purposes of [determining eligibility for statutory damages and attorneys’ fees] when the first act in a series of acts constituting infringement occurs.’” Id. at 4 (quoting Derek Andrews, Inc. v. Poof Apparel Corp., 528 F.3d 696, 700-01 (9th Cir. 2008)). This Court held that “[b]ecause Warner Bros. first used the excerpt before plaintiffs registered that copyright, it matters not whether Warner Bros. continued to use it after plaintiffs obtained their registration.” Id. 1 Plaintiffs also asserted fraud and breach of contract claims against Beltrami, see ECF No. 1, which are not the subject of this Motion. Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 10 of 17 Page ID #:277 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 B O I E S S C H I L L E R F L E X N E R L L P -5- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES This Court also rejected Plaintiffs’ belatedly asserted argument that Warner Bros. had committed a “separate and distinct” infringement of Plaintiffs’ Works by allegedly allowing the Works to be used “to promote Germany’s edition of ‘Next Top Model.’” Id. This Court agreed with Warner Bros. that this alleged use would not entitle Plaintiffs to either statutory damages or attorneys’ fees because the alleged infringement was “either related to the Lucifer infringement-in which case statutory damages and attorney’s fees are barred under Derek Andrew-or distinct from the Lucifer infringement-in which case it would not be actionable under U.S. copyright law” at all. Id. at 5 (citing Subafilms, 24 F.3d at 1091). The Court noted, however, that “leave to amend is freely given when justice so requires” and that amendment might not be futile because “even if plaintiffs cannot recover statutory damages and attorneys’ fees in connection with the exploitation of their work in Germany, they might be able to recover actual damages from such exploitation if they show this exploitation is an extension of an infringing act that occurred in the United States.” Id. The Court therefore granted leave to amend on this basis. C. The FAC’s New Allegations Plaintiffs’ FAC does not cure any of the defects in its prior complaint. Plaintiffs do not identify any actionable infringement that commenced after the Works were registered, nor do they plead a claim for “actual damages from [the alleged European] exploitation” by “show[ing] that this exploitation is an extension of the infringing act that occurred in the United States,” ECF No. 32 at 5 (emphasis added), as the Court directed they do. Rather, although Plaintiffs add allegations relating to this alleged European infringement, they allege that the European use is “completely separate and distinct from the Lucifer program infringements,” FAC, ¶ 33, thereby taking this use out of the realm of United States copyright law altogether. See ECF No. 32 at 5 (observing that plaintiffs only may recover damages from alleged foreign infringement if the foreign use is “an extension of an infringing act that occurred in the United States”) (citing L.A. News Serv., 149 F.3d Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 11 of 17 Page ID #:278 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 B O I E S S C H I L L E R F L E X N E R L L P -6- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES at 992). Plaintiffs also persist in their improper claims for statutory damages and attorneys’ fees, notwithstanding their admission that they did not apply for registration until months after the first alleged infringement. FAC, ¶¶ 29, 38. Plaintiffs’ only other substantive addition to the FAC is a vague allegation that “[t]hrough the use of electronic ‘footprint’ data, Plaintiffs have been able to track infringements of the Master that are separate and distinctly different from the Lucifer program infringements.” Id., ¶ 35. Plaintiffs do not, however, explain what infringements they are referring to (or even if Warner Bros. was involved), let alone how these alleged uses are both actionable and separate from the use that commenced on or about Lucifer’s January 2016 premiere. Id., ¶ 29. III. THIS COURT SHOULD DISMISS PLAINTIFFS’ CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES “A Rule 12(b)(6) motion tests the legal sufficiency of the claims asserted in the complaint.” Grant v. Aurora Loan Servs., Inc., 736 F.Supp.2d 1257, 1265 (C.D. Cal. 2010). Under Ninth Circuit law, Defendants properly may seek to dismiss claims for statutory damages and attorneys’ fees at the pleading stage. ECF No. 32 at 2 (holding that Defendants’ Prior Motion was “procedurally proper”) (citing Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 974-75 (9th Cir. 2010)). See also Martin v. Walt Disney Internet Grp., No. 09-1601-MMA (POR), 2010 WL 2634695, at *3 (S.D. Cal. June 30, 2010) (“If a plaintiff requests attorney’s fees and statutory damages in the complaint, courts routinely decide whether such remedies are available under the Copyright Act on a 12(b)(6) motion.”); Por Los Rios, Inc. v. Lions Gate Entm’t, Inc., No. 2:13-cv-7640-CBM-PLA, 2014 WL 12605374, at *3 (C.D. Cal. May 21, 2014) (granting Rule 12(b)(6) motion to dismiss plaintiff’s claims for attorneys’ fees and statutory damages on its copyright claim); cf. also Jordan-Benel, 2015 WL 3888149, at *15 (construing defendants’ motion to strike requests for statutory damages and attorneys’ fees as a Rule 12(b)(6) motion to dismiss and granting motion); accord Dos Santos v. Telemundo Commc’ns Grp., Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 12 of 17 Page ID #:279 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 B O I E S S C H I L L E R F L E X N E R L L P -7- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES LLC, No. 12-1373 JVS (MLGx), 2012 WL 9503003, at *7 (C.D. Cal. Dec. 19, 2012) (striking request for attorneys’ fees and costs and statutory damages “because the works were not registered when the infringement began”). A. The Court Already Has Held That Statutory Damages and Attorneys’ Fees Are Not Available Due to Plaintiffs’ Untimely Registration As this Court explained in its prior order, “‘no award of statutory damages or of attorney’s fees . . . shall be made for . . . (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration was made within three months after the first publication of the work.’” ECF No. 32 at 3 (quoting 17 U.S.C. § 412). See also Derek Andrew, 528 F.3d at 701-02 (reversing award of statutory damages and attorneys’ fees where plaintiff registered copyright more than three months after the first publication of the alleged infringing work). Applying this established law, the Court correctly held that Plaintiffs “are not eligible to recover statutory damages or attorney’s fees” because they did not seek to register either the Composition or the Master until seven months after Lucifer premiered and the Works allegedly were used. ECF No. 32 at 3-4. The Court also correctly held that Plaintiffs’ statutory damage and attorneys’ fee claims were barred even if Warner Bros. continued to infringe the Composition and Master after Plaintiffs applied for registration. Id. at 4. Following the lead of “[e]very court to consider the issue,” the Court held that “‘infringement “commences” for the purposes of § 412 when the first act in a series of acts constituting continuing infringement occurre[d].’” Id. (quoting Derek Andrew, 528 F.3d at 700- 01 (collecting cases) (internal quotation marks and citation omitted). Regardless of the form of the later use, Section 412 requires that statutory damages and attorneys’ fees be “denied not only for the particular infringement that a defendant commenced before registration, but for all of that defendant’s Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 13 of 17 Page ID #:280 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 B O I E S S C H I L L E R F L E X N E R L L P -8- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES infringements of a work if one of those infringements commenced prior to registration.” Mason v. Montgomery Data, Inc., 967 F.2d 135, 143 (5th Cir. 1992) (emphasis added). This is true “even if the [post-registration] infringement is not identical in product or legal form.” Por Los Rios, 2014 WL 12605374, at *5 (explaining that what matters is whether the alleged post-registration infringement is “of the same copyrighted material[s] and by the same defendants”). B. The Alleged European Use of the Works Does Not Give Rise to a Claim for Attorneys’ Fees or Statutory Damages In its prior ruling, the Court also addressed Plaintiffs’ attempt to revive their statutory damage and attorneys’ fee claim by alleging that Warner Bros. had committed a “separate and distinct” use of the Works in Europe. ECF No. 32 at 4; see also FAC, ¶ 33. As the Court recognized, see ECF No. 32 at 5, if, in fact, the alleged use of the Works in Europe is “completely separate and distinct” from its alleged use in the Lucifer Theme, id., then there can be no liability under the Copyright Act at all-let alone liability for statutory damages and attorneys’ fees- because “United States copyright laws do not have extraterritorial effect” and thus infringing actions that take place entirely outside the United States are not actionable. See Subafilms, 24 F.3d at 109 (internal quotation marks an citations omitted). Plaintiffs’ claim that the alleged European use is nonetheless actionable because Warner Bros. took domestic steps to license the overseas use, and is receiving fees as a result,2 see FAC, ¶ 33, is likewise barred by Subafilms, which holds that mere authorization of alleged overseas infringement by a domestic defendant does not give rise to liability. Subafilms, 24 F.3d at 1093 (explaining that “‘[g]iven the undisputed axiom that United States copyright law has no 2 While outside the scope of this motion, publicly available facts regarding Germany’s compulsory licensing system establish that Plaintiffs’ allegations of affirmative action by Warner Bros. are not accurate and not made in good faith. Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 14 of 17 Page ID #:281 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 B O I E S S C H I L L E R F L E X N E R L L P -9- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES extraterritorial application, . . . a primary activity outside the boundaries of the United States . . . cannot serve as the basis for holding liable under the Copyright Act one who is merely related to that activity within the United States.’”) (quoting 3 David Nimmer & Melville B. Nimmer, Nimmer on Copyright § 12.04[A][3][b] at 12-86 (Matthew Bender, Rev. Ed.)). This is true regardless of whether the alleged overseas infringement violates the copyright laws of the country where the alleged infringement occurs. Id. at 1094 (“Even assuming arguendo that the acts authorized in this case would have been illegal abroad, . . . [b]ecause the copyright laws do not apply extraterritorially, . . . there can be no liability for ‘authorizing’ such conduct [under United States copyright law].”). Finally, even if Plaintiffs were to reverse course and claim that the European use, rather than being “completely separate and distinct from the Lucifer program infringements,” FAC, ¶ 33, flowed from Warner Bros.’ initial, pre-registration infringement, they could not salvage their statutory damage and attorneys’ fee claims. In the case of such “continuing infringement,” the infringement commences “when the first act in a series of acts constituting [the] continuing infringement occurre[d],” Derek Andrew, 528 F.3d at 700-01; see also Por Los Rios, 2014 WL 12605374, at *5 (explaining that what matters is whether the alleged post- registration infringement is “of the same copyrighted material[s] and by the same defendants”), which Plaintiffs concede occurred before they sought registration for either the Composition or the Master. See FAC, ¶ 29 (Lucifer premiered in January 2016 and ran through April 2016); id., ¶ 38 (Plaintiffs did not seek registration of the Composition until August 2016 and did not seek registration of the Master until January 2017). No matter which theory Plaintiffs’ choose, the result is the same: their claim for statutory damages and attorneys’ fees fails because the alleged German infringement is “completely separate and distinct” from the alleged domestic infringement, id., ¶ 33, and thus not actionable under the Copyright Act, Subafilms, Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 15 of 17 Page ID #:282 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 B O I E S S C H I L L E R F L E X N E R L L P -10- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES 24 F.3d at 1091-94, or because the alleged German use is a further exploitation of the alleged domestic infringement, which commenced prior to registration, Derek Andrew, 528 F.3d at 700-01. Warner Bros.’ Motion to Dismiss should be granted. IV. LEAVE TO AMEND SHOULD BE DENIED Plaintiffs already have been given a chance to amend to state a claim for statutory damages and attorneys’ fees, and failed to do so. Any continued amendment would be futile. Indeed, liability for statutory damages and attorneys’ fees turns on the simple question of whether Plaintiffs registered their alleged copyright before Warner Bros. began allegedly using the Works. They did not, and no amount of amendment can change this fact. Warner Bros. therefore respectfully requests that Plaintiffs’ claims for statutory damages and attorneys’ fees be dismissed with prejudice. See, e.g., Steckman, 143 F.3d at 1298 (holding that the “general rule” permitting amendment “does not extend to cases in which any amendment would be an exercise in futility or where the amended complaint would also be subject to dismissal”) (citations omitted); Jordan-Benel, 2015 WL 3888149, at **14-15 (dismissing plaintiff’s request for statutory damages and attorneys’ fees without leave to amend where plaintiff failed timely to register his works). /// /// /// Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 16 of 17 Page ID #:283 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 B O I E S S C H I L L E R F L E X N E R L L P -11- MOTION TO DISMISS CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES V. CONCLUSION In light of the foregoing, this Court should grant Warner Bros.’ Motion to Dismiss and dismiss Plaintiffs’ claims for statutory damages and attorneys’ fees with prejudice and without leave to amend. DATED: June 20, 2017 BOIES SCHILLER FLEXNER LLP LINDA M. BURROW JULIA J. BREDRUP By /s/ Linda M. Burrow LINDA M. BURROW Attorneys for Defendants WARNER BROS. ENTERTAINMENT INC. and NS PICTURES, INC. Case 2:17-cv-01062-CAS-GJS Document 47 Filed 06/20/17 Page 17 of 17 Page ID #:284 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 B O I E S S C H I L L E R F L E X N E R L L P [PROPOSED] ORDER BOIES SCHILLER FLEXNER LLP LINDA M. BURROW, State Bar No. 194668 lburrow@bsfllp.com JULIA J. BREDRUP, State Bar No. 275526 jbredrup@bsfllp.com 725 South Figueroa Street, 31st Floor Los Angeles, California 90017-5524 Telephone: (213) 629-9040 Facsimile: (213) 629-9022 Attorneys for Defendants WARNER BROS. ENTERTAINMENT INC. and NS PICTURES, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION ROBERT J. MARDEROSIAN, an individual; ARON M. MARDEROSIAN, an individual; TWELVE SIXTY, LLC, a California limited liability company, Plaintiffs, v. WARNER BROS. ENTERTAINMENT INC., a Delaware corporation; NS PICTURES, INC., a California corporation; MARCO E. BELTRAMI, an individual; PIANELLA MUSIC INC., a California corporation; DOES 1-10, inclusive, Defendants. Case No. 2:17-cv-01062 CAS (GJSx) [PROPOSED] ORDER GRANTING DEFENDANTS WARNER BROS. ENTERTAINMENT INC. AND NS PICTURES, INC.’S MOTION TO DISMISS PLAINTIFFS’ CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’ FEES [Notice of Motion and Motion to Dismiss and Declaration of Julia J. Bredrup filed concurrently herewith] The Honorable Christina A. Snyder Date: July 24, 2017 Time: 10:00 a.m. Ctrm.: 8D Case 2:17-cv-01062-CAS-GJS Document 47-1 Filed 06/20/17 Page 1 of 2 Page ID #:285 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 B O I E S S C H I L L E R F L E X N E R L L P -1- [PROPOSED] ORDER The Motion of Defendants Warner Bros. Entertainment Inc. and NS Pictures, Inc. (collectively, “Warner Bros.”) to Dismiss Plaintiffs’ Requests for Statutory Damages and Attorneys’ Fees from the First Amended Complaint (the “Motion”) came on for hearing before this Court on July 24, 2017, at 10:00 a.m. After full consideration of the matter, the Court finds that Plaintiffs Robert J. Marderosian, Aron M. Marderosian, and Twelve-Sixty, LLC (collectively, “Plaintiffs”) have failed to state a claim for statutory damages or attorneys’ fees. The Court further finds that the deficiencies in Plaintiffs’ claims for statutory damages and attorneys’ fees cannot be cured by amendment. Accordingly, the Court GRANTS the Motion and DISMISSES Plaintiffs’ claims for statutory damages and attorneys’ fees WITH PREJUDICE AND WITHOUT LEAVE TO AMEND. IT IS SO ORDERED. Dated: The Honorable Christina A. Snyder Judge, United States District Court Case 2:17-cv-01062-CAS-GJS Document 47-1 Filed 06/20/17 Page 2 of 2 Page ID #:286