We 3 Kings, Inc. v. Deep Dish Productions of Chicago, Llc, et al

NOTICE OF MOTION AND MOTION to Dismiss Case

C.D. Cal.April 26, 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 13308138.3 222309-10004 NOTICE OF MOTION AND MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations DAVID GROSSMAN (SBN 211326) dgrossman@loeb.com BARRY I. SLOTNICK (Pro Hac Vice) bslotnick@loeb.com EDWARD K. LEE (SBN 294954) elee@loeb.com LOEB & LOEB LLP 10100 Santa Monica Blvd., Suite 2200 Los Angeles, CA 90067-4120 Telephone: 310.282.2000 Facsimile: 310.282.2200 Attorneys for Defendants Deep Dish Productions of Chicago, LLC; Endemol USA Holdings, Inc.; Beautiful Day Productions, LLC; and NBCUniversal, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION WE 3 KINGS, INC., a New Jersey Corporation, Plaintiff, v. DEEP DISH PRODUCTIONS OF CHICAGO, LLC, an Illinois Limited Liability Company, ENDEMOL USA HOLDING, INC., a Delaware Corporation, BEAUTIFUL DAY PRODUCTIONS, LLC, a Delaware Limited Liability Company, NBCUNIVERSAL DOMESTIC TELEVISION, a Division of NBCUNIVERSAL, LLC, a Delaware Limited Liability Company, and DOES 1 through 10, Inclusive, Defendants. Case No.: CV 17-01532-DSF (ASx) Assigned to Hon. Dale S. Fischer DEFENDANTS’ NOTICE OF MOTION AND MOTION TO DISMISS THE COMPLAINT [Concurrently filed: Memorandum of Points and Authorities; Request for Judicial Notice; Declaration of Edward K. Lee; Declaration of Jonna Walsh;[Proposed] Order Granting Motion; and [Proposed] Order re Request for Judicial Notice.] Date: June 5, 2017 Time: 1:30 p.m. Place: Courtroom 7D First Street Courthouse 350 West 1st Street Los Angeles, CA 90012 Complaint Filed: February 24, 2017 Case 2:17-cv-01532-DSF-AS Document 19 Filed 04/26/17 Page 1 of 3 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 13308138.3 222309-10004 1 NOTICE OF MOTION AND MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that, on June 5, 2017, at 1:30pm, or as soon thereafter as counsel may be heard in the Courtroom of the Honorable Dale S. Fischer, United States District Judge, Central District of California, located at 350 W. First Street, Los Angeles, California 90012, Defendants Deep Dish Productions of Chicago, LLC; Endemol USA Holdings, Inc.; Beautiful Day Productions, LLC; and NBCUniversal, LLC, through their attorneys of record, will and hereby do move, pursuant to Fed. R. Civ. P. 12(b)(6), to dismiss the claims in Plaintiff We 3 Kings, Inc.’s Complaint, dated February 24, 2017 (the “Complaint”). This Motion is made on the grounds that 1. Plaintiff granted an express license to Defendants; 2. Plaintiff’s attempted rescission of the express license is ineffective; 3. Plaintiff granted an implied license to Defendants; 4. Plaintiff’s claims are barred by the statute of limitations; 5. Plaintiff’s claims for statutory damages or attorneys’ fees are barred by the United States Copyright Act. 6. Plaintiff’s claims are inadequately pleaded. This Motion is based on this Notice of Motion and Motion, Memorandum of Points and Authorities in support thereof filed herewith, the Declarations of Jonna Walsh and Edward K. Lee and exhibits thereto filed herewith, the Request for Judicial Notice filed herewith, the [Proposed] Orders lodged herewith, the Court file, any reply Defendants may make, and any further evidence and argument as may be presented to the Court prior to or at the hearing on this Motion, or subsequent hereto as permitted by the Court. This motion is made following the conference of counsel pursuant to L.R. 7-3 which took place on April 7, 2017. /// Case 2:17-cv-01532-DSF-AS Document 19 Filed 04/26/17 Page 2 of 3 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 13308138.3 222309-10004 2 NOTICE OF MOTION AND MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Dated: April 26, 2017 LOEB & LOEB LLP DAVID GROSSMAN BARRY I. SLOTNICK EDWARD K. LEE By: /s/ David Grossman David Grossman Attorneys for Defendants Deep Dish Productions of Chicago, LLC; Endemol USA Holdings, Inc.; Beautiful Day Productions, LLC; and NBCUniversal, LLC Case 2:17-cv-01532-DSF-AS Document 19 Filed 04/26/17 Page 3 of 3 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 13308646 222309-10004 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations DAVID GROSSMAN (SBN 211326) dgrossman@loeb.com BARRY I. SLOTNICK (Pro Hac Vice) bslotnick@loeb.com EDWARD K. LEE (SBN 294954) elee@loeb.com LOEB & LOEB LLP 10100 Santa Monica Blvd., Suite 2200 Los Angeles, CA 90067-4120 Telephone: 310.282.2000 Facsimile: 310.282.2200 Attorneys for Defendants Deep Dish Productions of Chicago, LLC; Endemol USA Holdings, Inc.; Beautiful Day Productions, LLC; and NBCUniversal, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION WE 3 KINGS, INC., a New Jersey Corporation, Plaintiff, v. DEEP DISH PRODUCTIONS OF CHICAGO, LLC, an Illinois Limited Liability Company, ENDEMOL USA HOLDING, INC., a Delaware Corporation, BEAUTIFUL DAY PRODUCTIONS, LLC, a Delaware Limited Liability Company, NBCUNIVERSAL DOMESTIC TELEVISION, a Division of NBCUNIVERSAL, LLC, a Delaware Limited Liability Company, and DOES 1 through 10, Inclusive, Defendants. Case No.: CV 17-01532-DSF (ASx) Assigned to Hon. Dale S. Fischer MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS THE COMPLAINT [Concurrently filed: Notice of Motion and Motion; Request for Judicial Notice; Declaration of Edward K. Lee; Declaration of Jonna Walsh;[Proposed] Order Granting Motion; and [Proposed] Order re Request for Judicial Notice.] Date: June 5, 2017 Time: 1:30 p.m. Place: Courtroom 7D First Street Courthouse 350 West 1st Street Los Angeles, CA 90012 Complaint Filed: February 24, 2017 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 1 of 30 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 13308646 222309-10004 i MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TABLE OF CONTENTS Page I. INTRODUCTION ........................................................................................... 1 II. STATEMENT OF FACTS .............................................................................. 3 A. Deep Dish Used W3K’s Music in Steve Harvey Pursuant to a License, While W3K Received Notifications and Payments. .............. 3 III. ARGUMENT .................................................................................................. 5 A. Standard for Motions to Dismiss Pursuant to Rule 12(b)(6). ............... 5 B. W3K’s Complaint for Copyright Infringement Should Be Dismissed Because W3K Granted a License to Deep Dish. ................ 7 1. The Express License Grants Deep Dish the Right to Synchronize W3K’s Music in the Program. ............................... 7 2. The License Was Signed by Plaintiff’s President. ................... 10 3. Plaintiff’s Purported Rescission of the License Cannot Retroactively Turn Licensed Uses Into “Infringements.” ........ 13 a. W3K Waived Any Right to Rescind the License........... 13 b. A Rescinded Copyright License Could Only Result in Infringement Claims for Post- Rescission Uses, and the Complaint Does Not Allege Any...................................................................... 14 c. W3K Has Not Complied with California’s Requirements for Rescission. ......................................... 15 4. Even if the Express License is Not Deemed To Bar Plaintiff’s Claims, the Complaint is Barred by the Doctrine of Implied License. .................................................... 17 C. Plaintiff’s Claims are Based on Improper and Invalid “Bulk” Registrations, Precluding a Claim for Copyright Infringement.......... 18 D. W3K’s Claims Based on Any Allegedly Infringing Conduct Prior to February 24, 2014 Are Untimely. .......................................... 20 E. The Complaint Should Be Dismissed for Literally Failing to State a Claim Upon which Relief May Be Granted. ........................... 21 F. W3K Is Not Entitled to Statutory Damages or Attorneys’ Fees for Any Acts Before October 29, 2014 (the Vast Majority of the Conduct Alleged in the Complaint). ............................................. 22 IV. CONCLUSION ............................................................................................. 23 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 2 of 30 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 13308646 222309-10004 ii MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TABLE OF AUTHORITIES Page(s) Cases Actuate Corp. v. Fid. Nat’l Info. Servs., No. C 14-02274 RS, 2014 U.S. Dist. LEXIS 117513 (N.D. Cal. Aug. 21, 2014) ...................................................................................... 9 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ....................................................................................... 5, 6, 7 Bank of Am., N.A. v. CD-04, Inc. (In re Owner Mgmt. Serv., L.L.C.), 530 B.R. 711 (C.D. Cal. Bankr. 2015) ................................................................... 6 Broad. Music, Inc. v. Columbia Broad. Sys., Inc., 441 U.S. 1 (1979) ................................................................................................... 4 BroadVision, Inc. v. Med. Protective Co., No. 08 Civ. 1478 (WHP), 2010 U.S. Dist. LEXIS 131106 (S.D.N.Y. Nov. 23, 2010) ....................................................................................... 9 Coto Settlement v. Eisenberg, 593 F.3d 1031 (9th Cir. 2010) ................................................................................ 6 County of Alameda v. S. Pac. Co., 55 Cal. 2d 479 (1961) ............................................................................................. 8 Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d 992 (9th Cir. 2010) .................................................................................. 6 Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) ................................................................................ 22 Determined Productions, Inc. v. Koster, No. C 92-1697 BAC, 1993 U.S. Dist. LEXIS 4586 (N.D. Cal. Apr. 12, 1993) ............................................................................................................... 19 Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990) ................................................................................ 17 Englert v. IVAC Corp., 92 Cal. App. 3d 178 (1979) .................................................................................. 12 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 3 of 30 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 13308646 222309-10004 iii MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TABLE OF AUTHORITIES (CONT’D) Page(s) Falcon Enters. v. Publrs. Serv., 438 F. App’x 579 (9th Cir. 2011) ................................................................... 17, 18 Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F. Supp. 2d 223 (S.D.N.Y. 2012) .................................................................. 19 Fernandes v. TW Telecom Holdings, Inc., No. 2:15-cv-01976-TLN-CKD, 2016 U.S. Dist. LEXIS 22033 (E.D. Cal. Feb. 22, 2016) ........................................................................................ 6 Field v. Google Inc., 412 F. Supp. 2d 1106 (D. Nev. 2006) .................................................................. 18 Fioranelli v. CBS Broad. Inc., No. 15-CV-952 (VSB), 2017 U.S. Dist. LEXIS 38575 (S.D.N.Y. Jan. 19, 2017) ...................................................................................... 10 Fosson v. Palace, Ltd., 78 F.3d 1448 (9th Cir. 1996) ................................................................................ 14 Friends & Lovers, Inc. v. Lions Gate Films, Inc., 56 F. App’x 760 (9th Cir. 2001) ..................................................................... 14, 15 Garrison v. Oracle Corp., 159 F. Supp. 3d 1044 (N.D. Cal. 2016) .................................................................. 6 Gerritsen v. Warner Bros. Entm’t Inc., 112 F. Supp. 3d 1011 (C.D. Cal. 2015) .................................................................. 6 Graham v. James, 144 F.3d 229 (2d Cir. 1998) ................................................................................. 10 Hailey v. Cal. Physicians’ Serv., 158 Cal. App. 4th 452 (2007) ............................................................................... 13 Hervey v. Mercury Cas. Co., 185 Cal. App. 4th 954 (2010) ................................................................................. 8 I.A.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996) .................................................................................. 17 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 4 of 30 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 13308646 222309-10004 iv MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TABLE OF AUTHORITIES (CONT’D) Page(s) J.L. v. Children’s Institute, Inc., 177 Cal. App. 4th 388 (2009) ......................................................................... 11, 12 McMunigal v. Bloch, No. C 10-02765 SI, 2010 U.S. Dist. LEXIS 136086 (N.D. Cal. Dec. 23, 2010) ....................................................................................... 6 MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) ............................................................................................. 10 Moore v. Phillips, 176 Cal. App. 2d 702 (1959) ................................................................................ 12 Morales v. TWA, 504 U.S. 374 (1992) ............................................................................................. 14 Nat’l Cable TV Ass’n v. Broad. Music, Inc., 772 F. Supp. 614 (D.C. Cir. 1991) ......................................................................... 4 Nat’l Farm Fin. Corp. v. PSM Holding Corp. (In re Nat’l Farm Fin. Corp.), No. 07-31580 TEC, Chapter 11, Adv. Proc. No. 07-3134 TC, 2008 Bankr. LEXIS 177 (Bankr. N.D. Cal. Jan. 18, 2008) .................................. 11 Papasan v. Allain, 478 U.S. 265 (1986) ........................................................................................... 6, 7 Principal Mut. Life Ins. Co. v. Vars, 65 Cal. App. 4th 1469 (1998) ................................................................................. 9 Quest Software, Inc. v. DirecTV Operations, L.L.C., No. SACV 09-1232 AG (ANx), 2011 U.S. Dist. LEXIS 110888 (C.D. Cal. Sept. 26, 2011) ................................................................................ 9, 10 Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993) ................................................................................ 14 Reinsdorf v. Skechers U.S.A., 922 F. Supp. 2d 866 (C.D. Cal. 2013) .................................................................. 10 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 5 of 30 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 13308646 222309-10004 v MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TABLE OF AUTHORITIES (CONT’D) Page(s) Righthaven LLC v. Dr. Shezad Malik Law Firm P.C., Case No. 2:10-cv-0636-RLH-RJJ, 2010 U.S. Dist. LEXIS 91643 (D. Nev. Sept. 2, 2010) ......................................................................................... 21 SEC v. Mozilo, No. CV 09-3994-JFW, 2009 U.S. Dist. LEXIS 104689 (C.D. Cal. Nov. 3, 2009) ........................................................................................ 6 Sound/City Recording Corp. v. Solberg, 443 F. Supp. 1374 (W.D. La. 1978) ..................................................................... 16 Stevens v. Corelogic, Inc., 194 F. Supp. 3d 1046 (S.D. Cal. 2016) ................................................................ 17 Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th Cir. 1999) ............................................................................ 7, 8 Yount v. Acuff Rose-Opryland, 103 F.3d 830 (9th Cir. 1996) ................................................................................ 15 Statutes 17 U.S.C. § 101 .......................................................................................................... 17 17 U.S.C. § 106(1) ....................................................................................................... 4 17 U.S.C. § 204 .......................................................................................................... 17 17 U.S.C. § 408(c) ................................................................................................. 2, 18 17 U.S.C. § 412 .......................................................................................................... 22 17 U.S.C. § 507 .......................................................................................................... 20 Cal. Civ. Code § 1638 .................................................................................................. 8 Cal. Civ. Code § 1639 .................................................................................................. 8 Cal. Civ. Code § 1689(b)(2) ...................................................................................... 16 Cal. Civ. Code § 1691 ................................................................................................ 16 Cal. Civ. Code § 2317 ................................................................................................ 12 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 6 of 30 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 13308646 222309-10004 vi MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations TABLE OF AUTHORITIES (CONT’D) Page(s) Cal. Corp. Code § 208 ............................................................................................... 11 Other Authorities 37 C.F.R. § 202.3 ............................................................................................. 2, 18, 19 Fed. R. Civ. P. 11 ................................................................................................. 12, 21 Fed. R. Civ. P. 12(b)(6) ............................................................................................... 5 Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 7 of 30 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 13308646 222309-10004 1 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION In this, their fourth bite at the apple, 1 Plaintiff alleges a massive infringement of more than 3,000 music cues by some of the most prominent and respected companies and people in the entertainment industry. And yet Plaintiff’s Complaint, by its words and documentation, provides the seeds of its dismissal. First, despite alleging copyright infringement, i.e., unauthorized exploitation of copyrighted works, Plaintiff acknowledges the existence of a license agreement with Defendant Deep Dish. Plaintiff, without explanation, calls the license “bogus” and alleges in carefully couched phrasing that the license was not authorized. But Plaintiff’s own allegations confirm that there was, in fact, a contract between the parties, permitting Deep Dish to access and use Plaintiff’s music. Indeed, Plaintiff admits that: (i) the parties engaged in “negotiations [which] spanned several months in 2012”; (ii) Plaintiff provided its entire music library to Deep Dish (with Plaintiff’s authority); (iii) Plaintiff knew for years that its music was being used in Steve Harvey; 2 and (iv) Plaintiff collected royalty payments for those uses. Clearly insecure in its bombastic dismissal of the license as “bogus,” Plaintiff then alleges it gave notice of rescission of the license on October 5, 2015. This is not a copyright infringement case; it is, at best, a claim for breach of contract that belongs in state, not federal, court. As a matter of law, Defendants cannot be held liable for 1 Plaintiff’s original complaint, naming over 200 defendants, was filed in November 2014. A first amended complaint against approximately 25 defendants was filed in October 2015. A motion to file another amended complaint was denied in February of 2017, and the present suit was filed a week after the Court’s Order denying that motion to amend. 2 Notably, although Plaintiff claims Defendants engaged in unauthorized infringement of their works, this supposed copyright infringement is based on cue sheets (records of each use of Plaintiff’s music) that were admittedly “prepared by or under the auspices of Defendants and submitted to one or more performing rights’ organizations.” Compl. at 12:14-16. These cue sheets are prepared and submitted in the ordinary course of business in circumstances, such as this one, where the Defendants were operating pursuant to a license with Plaintiff. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 8 of 30 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 13308646 222309-10004 2 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations “copyright infringement” for actions performed pursuant to a license. An after-the- fact purported “rescission” of a contract does not permit the Plaintiff to convert a breach of contract claim into a federal claim for copyright infringement. Second, assuming that the Court permits Plaintiff to allege claims for infringement, and to disregard the signed license agreement, Plaintiff’s copyright infringement claims fail for the independent reason that those purported claims are barred by the statute of limitations. Plaintiff alleges that Deep Dish downloaded more than 3,000 works to an employee’s computer during a two and a half year period, of which only a “part [was] includ[ed] within the applicable period of any statute of limitation.” Indeed, Plaintiff annexes as Exhibit E to the Complaint a 48 page schedule identifying the works and the dates of the alleged downloads, virtually all of which are barred by the three year statute of limitations for copyright infringement claims, and all of which occurred prior to the notice of rescission. Similarly, Plaintiff alleges that only a fraction of the allegedly downloaded works were used on Steve Harvey and admits that, even with respect to these claimed uses, an unidentified number of these uses are time-barred as well. Plaintiff cannot assert infringement claims for uses that occurred prior to three years before the filing of this suit, and all such claims should be dismissed. Third, Plaintiff has improperly registered the vast majority of its works as part of “collections,” even though 17 U.S.C. § 408(c) and 37 C.F.R. § 202.3(b)(4)(B)(4) preclude such bulk registration because the works do not have the same author. In essence, Plaintiff has alleged massive infringements without: (1) identifying the works alleged to have been infringed; (2) connecting that song title to a specific registration certificate; (3) connecting the registered work to an act of infringement not barred by the statute of limitations; or (4) identifying the act of infringement to a specific Steve Harvey episode. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 9 of 30 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 13308646 222309-10004 3 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Finally, plaintiff contends that it is entitled to statutory damages and attorneys’ fees even though Plaintiff alleges and admits that all of the purported acts of infringement occurred prior to registration, thereby precluding such relief. Plaintiff’s complaint should be dismissed with prejudice, as its copyright infringement claims fail as a matter of law, and cannot be remedied by amendment since Defendants acted pursuant to a license. Should any infringement claims survive, Plaintiff should be limited to alleged infringements that took place in the three years prior to the filing of the complaint and, accordingly, Plaintiff should be ordered to adequately describe which songs, in which registrations, were used in which episodes of Steve Harvey, in the past three years. II. STATEMENT OF FACTS A. Deep Dish Used W3K’s Music in Steve Harvey Pursuant to a License, While W3K Received Notifications and Payments. The complaint in this case (the “Complaint”), filed on February 24, 2017, alleges that Defendant Deep Dish Productions of Chicago, LLC (“Deep Dish”) downloaded songs from the music library 3 of Plaintiff We 3 Kings, Inc. (“W3K”), and then used some of those songs in episodes of Steve Harvey, a daytime-television talk show (the “Program”). The Program was then allegedly distributed, to unnamed entities, by Defendant NBCUniversal, LLC (“NBCUniversal”) 4 for performance on television and the Internet. The Complaint alleges that, in 2012: “Plaintiff undertook negotiations” with Deep Dish for the use 5 of W3K’s music library in Steve Harvey. Compl. ¶ 20. 3 A “music library” is a collection of musical works, typically short clips of instrumental background music, used in connection with television programming. 4 The remaining two defendants, Endemol USA Holdings, Inc. (“Endemol”) and Beautiful Day Productions, LLC (“Beautiful Day”) are alleged to be co- producers of the Program. 5 When a producer seeks to use music owned by a third-party in its television programming, the producer and broadcaster ultimately need two separate rights to first produce, and then broadcast, the music on television. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 10 of 30 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 13308646 222309-10004 4 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Those negotiations culminated in the August 14, 2012 Music License and Library Agreement between Plaintiff and Deep Dish. Compl. ¶ 23, Ex. C (the “License”). Steve Harvey began airing in September 2012, about a month later. Compl. ¶ 26. The Complaint alleges that the License was not “executed by any officer, agent or other representative of the Plaintiff corporation with the power or authority to bind the corporation to such agreement.” Compl. at 10:1-5. However, the License, which Plaintiff appends to the Complaint, shows that the President of W3K, Keith Volpone a/k/a Seven Williams, was the party that executed that contract. Declaration of Edward K. Lee (“Lee Decl.”), ¶ 2, Ex. 1 at 1 (listing Keith Volpone as President of We 3 Kings, Inc.); Declaration of Jonna Walsh (“Walsh Decl.”), ¶ 2, Ex. A. Attached to the concurrently-filed Request for Judicial Notice (“RJN”) is a copy of the California Secretary of State record showing Keith The first right, under the United States Copyright Act, is an exclusive right of reproduction. The producer must obtain the right to record the music into the audio- visual work. This is generally known as the “synchronization” right, because the music is being recorded in timed synchronization with the visual work. 17 U.S.C. § 106(1); see generally Nat’l Cable TV Ass’n v. Broad. Music, Inc., 772 F. Supp. 614, 619-20 (D.C. Cir. 1991) (“synchronization rights [are] the right to record or synchronize music with the visual image”) (describing licensing process). The second right, under the United States Copyright Act, is an exclusive right to publicly perform the musical work. For synchronization rights, the producer will typically enter into an agreement directly with the music owner in the form of a license. Under a “gratis” license, the music owner agrees to authorize the use of its works without the payment of any up- front fee, because the user of the works report each use to the Performing Rights Organizations (“PROs”) (such as ASCAP and BMI) and the PROs, in turn, pay the composer of the work, royalty payments for each public performance. Because it would be impracticable for a music owner to negotiate public performance licenses with every entity that publicly performs its music (e.g., every TV station, radio station, nightclub, etc.), most music owners enter into agreements with PROs to act as their licensing agents. The PROs then collect fees from broadcasters (who pay “blanket” fees to use the entirety of the PRO’s repertoire), and then distribute royalties to music owners based on usage of their music. See generally Broad. Music, Inc. v. Columbia Broad. Sys., Inc., 441 U.S. 1, 5 (1979) (“[B]lanket licenses … give the licensees the right to perform any and all of the compositions owned by the members or affiliates as often as the licensees desire for a stated term. Fees for blanket licenses are ordinarily a percentage of total revenues or a flat dollar amount, and do not directly depend on the amount or type of music used.”). Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 11 of 30 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 13308646 222309-10004 5 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Volpone as President of W3K. It was Mr. Volpone that executed the License with Deep Dish, and then delivered to Deep Dish the executed contract. The Complaint acknowledges the existence of the License, and provides no basis for the claim that it was not validly executed. The Complaint further acknowledges that, following the parties’ negotiations, and the execution of the License, Plaintiff provided its music to Deep Dish, for the purpose of accessing that music for determining what would be used on Steve Harvey. Indeed, shortly after granting the License, Plaintiff was aware that its music was being used in the Program since, at that time, it began receiving cue sheets (records of use of Plaintiff’s music that are provided to PROs) that were filled out by Defendants. Compl. at 12:4-16. 6 Plaintiff did not register any of the alleged works in its music library until October 29, 2014 (years after the License), and it did not register the vast majority of the works purportedly at issue for yet another year. Compl. at 7:26-8:11, Ex. A. Moreover, despite not filing the Complaint until early 2017, Plaintiff alleges purported “infringements” of W3K’s copyrights for downloads of music as early as August 8, 2012, and relating to programs that aired in September 2012. Compl., Ex. E. Similarly, despite not registering any of the works at issue until October 29, 2014, the Complaint seeks statutory damages and attorneys’ fees for “infringe[ments] after its effective date[s] of copyright registration.” Compl. ¶ 34. III. ARGUMENT A. Standard for Motions to Dismiss Pursuant to Rule 12(b)(6). To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a complaint must “contain[] enough facts to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 697 (2009) (citations omitted). A claim has facial 6 These cue sheets, referenced in the Complaint (at 12:14-16), are also attached to the RJN. Walsh Decl., ¶ 3, Ex. B. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 12 of 30 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 13308646 222309-10004 6 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations plausibility if a plaintiff pleads factual content that allows the Court to reasonably infer that the defendant is liable for the misconduct alleged. Id. at 556. In ruling on a motion to dismiss, the Court need only accept well-pleaded allegations as true, and is “not bound to accept as true a legal conclusion couched as a factual allegation.” Papasan v. Allain, 478 U.S. 265, 286 (1986); see Ashcroft, 556 U.S. at 678. Moreover, the Court is not required to accept as true allegations that are contradicted by exhibits to the complaint, or contradicted by matters subject to judicial notice. Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d 992, 998 (9th Cir. 2010). Thus, the Court may look beyond the complaint to consider evidence, including documents, “on which the complaint necessarily relies if: (1) the complaint refers to the document; (2) the document is central to the plaintiff’s claim; and (3) no party questions the authenticity of the copy attached to the 12(b)(6) motion.” 7 And the document need not be explicitly referred to in the complaint— the Court can take judicial notice of a document if the complaint contains allegations regarding its contents. Coto Settlement v. Eisenberg, 593 F.3d 1031, 1038 (9th Cir. 2010). The Court “can [also] take judicial notice of ‘[p]ublic records and government documents available from reliable sources …’” including documents from the California Secretary of State. Gerritsen v. Warner Bros. Entm’t Inc., 112 F. Supp. 3d 1011, 1033-34 (C.D. Cal. 2015); Bank of Am., N.A. v. CD-04, Inc. (In re Owner 7 Daniels-Hall, 629 F.3d at 998 (citations omitted); see also Fernandes v. TW Telecom Holdings, Inc., No. 2:15-cv-01976-TLN-CKD, 2016 U.S. Dist. LEXIS 22033, at *8 (E.D. Cal. Feb. 22, 2016) (taking judicial notice of email); Garrison v. Oracle Corp., 159 F. Supp. 3d 1044, 1061 (N.D. Cal. 2016) (same); SEC v. Mozilo, No. CV 09-3994-JFW (MANx), 2009 U.S. Dist. LEXIS 104689, at *20 n.2 (C.D. Cal. Nov. 3, 2009) (same); McMunigal v. Bloch, No. C 10-02765 SI, 2010 U.S. Dist. LEXIS 136086, at *22 (N.D. Cal. Dec. 23, 2010) (same). Plaintiff seemingly disputes that Mr. Volpone had the authority to enter into an agreement with Deep Dish via email, but Plaintiff cannot legitimately dispute the email’s authenticity. See also Section III.B, infra, and RJN. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 13 of 30 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 13308646 222309-10004 7 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Mgmt. Serv., L.L.C.), 530 B.R. 711, 717-18 (C.D. Cal. Bankr. 2015). Thus, the Court should take judicial notice of the documents attached to the concurrently filed declarations of Edward K. Lee and Jonna Walsh, consisting of public records, the Steve Harvey cue sheets referenced in the complaint, and the email between Plaintiff and Deep Dish that is central to Plaintiff’s claims. B. W3K’s Complaint for Copyright Infringement Should Be Dismissed Because W3K Granted a License to Deep Dish. It is axiomatic that “a ‘copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement’ and can sue only for breach of contract.” Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999). Here, because W3K granted Deep Dish a license to use W3K’s music in the Program, the Complaint fails to state a claim for copyright infringement. 1. The Express License Grants Deep Dish the Right to Synchronize W3K’s Music in the Program. As a preliminary matter, the Complaint is doomed by the existence of the executed License, which is attached to the Complaint. The bald assertion that W3K’s President was not authorized to sign the License is a legal conclusion that the Court should reject as being unsupported by any facts. See Papasan, 478 U.S. at 286; Ashcroft, 556 U.S. at 678; Section III.B.2, infra. The Complaint alleges that Defendants infringed W3K’s copyrights by failing to pay for use of W3K’s music in episodes of the Program after the 202nd episode. Compl. ¶¶ 23, 24. However, the claim is refuted by the plain language of the License, which does not restrict when W3K’s music could be used: 1. Grant of Rights. In consideration of Licensee’s payment in full to Licensor in accordance with Subparagraph 1.1. below, Licensor hereby grants the Licensee the perpetual, non-revocable, non-exclusive right and license to broadcast, synchronize, telecast, and Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 14 of 30 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 13308646 222309-10004 8 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations otherwise use the Library solely and in connection with all of the two hundred and two (202) episodes of the First season TSHS and in connection with any advertising, publicity and promotion of TSHS. … In the event Licensee wishes to use any of the Recordings and/or Cues from the Library in any episodes of TSHS beyond the two hundred and two (202) episodes of the Season One (1) Production contemplated herein, the parties agree to a license fee of two hundred and fifty dollars ($250.00) per episode any additional episodes above 202. Compl. Ex. C at ¶ 1 (emphasis added). The Court may interpret the license as a matter of law, and dismiss the complaint because the language is unambiguous. Hervey v. Mercury Cas. Co., 185 Cal. App. 4th 954, 962 (2010). Here, the License is governed by California state law. Compl. Ex. C at ¶ 5.4 (“this Agreement shall be governed by the laws of the State of California applicable to contracts”); see also Sun Microsystems, Inc., 188 F.3d at 1122 (“we agreed that we should ‘rely on state law to provide the canons of contractual construction’ provided that ‘such rules do not interfere with federal copyright law or policy.’”). “The law is clear that “[t]he language of a contract is to govern its interpretation, if the language is clear and explicit.” Cal. Civ. Code § 1638; see also Cal. Civ. Code § 1639 (“When a contract is reduced to writing, the intention of the parties is to be ascertained from the writing alone, if possible…”); Hervey, 185 Cal. App. 4th at 961. Moreover, “[w]here the parties have entered into written engagements which industriously express the obligations which each is to assume, the court should be reluctant to enlarge them by implication as to important matters.” County of Alameda v. S. Pac. Co., 55 Cal. 2d 479, 488 (1961). The Court may not “insert what has been omitted [and does] not have the power to create for the parties a contract which they did not make and cannot insert language which one party now wishes were there.” Principal Mut. Life Ins. Co. v. Vars, 65 Cal. App. 4th 1469, Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 15 of 30 Page ID #:286 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 13308646 222309-10004 9 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 1478 (1998). In other words, the Court may not insert into the License a limitation that it only applies to Season 1 of Steve Harvey. This is particularly true in this case because the parties’ License expressly sets forth the compensation to be paid for uses that occur beyond the first 202 episodes that were contemplated to be part of the Program’s first season. Specifically, the License states that the nominal consideration recited in § 1.1 provides for licensing of W3K’s music for the first 202 episodes of the Program, and that Deep Dish will pay $250 for uses in episodes beyond episode 202. As such, W3K’s claim against Deep Dish, if any, constitutes a state law breach of contract claim for payment of $250 per episode (beyond the first 202). Plaintiff may argue—incorrectly—that it is entitled to seek relief for copyright infringement because Defendants’ uses were breaches of a condition of the License, rather than a covenant of the License. However, it is well-settled that a failure to remit payment for uses permitted by a license are breaches of covenants, while uses beyond the limits of a license may be deemed to be copyright infringement. See Actuate Corp. v. Fid. Nat’l Info. Servs., No. C 14-02274 RS, 2014 U.S. Dist. LEXIS 117513, at *6-7 (N.D. Cal. Aug. 21, 2014) (“courts in this circuit have recognized claims for copyright infringement where the licensee created or distributed copies in excess of explicit numeric conditions within the licensing agreement while rejecting such claims where the gravamen of the complaint was a failure to remit sufficient royalties”) (granting motion to dismiss); Quest Software, Inc. v. DirecTV Operations, L.L.C., No. SACV 09-1232 AG (ANx), 2011 U.S. Dist. LEXIS 110888, at *10-11 (C.D. Cal. Sept. 26, 2011) (where a license permitted use of copyright software on a certain number of computers and permitted additional uses for an additional fee, such provisions are covenants, and not conditions, and failure to pay “provides Plaintiff no grounds to claim that Defendant infringed its copyright”); BroadVision, Inc. v. Med. Protective Co., No. 08 Civ. 1478 (WHP), 2010 U.S. Dist. LEXIS 131106 (S.D.N.Y. Nov. 23, 2010) (dismissing copyright Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 16 of 30 Page ID #:287 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 13308646 222309-10004 10 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations claim because a license provision that provided for additional fees for additional uses was a covenant); Graham v. James, 144 F.3d 229, 237 (2d Cir. 1998) (concluding that where the copyright owner ‘turned over the [copyrighted software] for [the licensee’s] use before any royalties were paid,’ the requirement of royalty payments was a contractual covenant, not a condition precedent); cf. Fioranelli v. CBS Broad. Inc., No. 15-CV-952 (VSB), 2017 U.S. Dist. LEXIS 38575, at *11 (S.D.N.Y. Jan. 19, 2017) (sublicensing of Plaintiff’s footage to other news agencies exceeded scope of license where license only covered using Plaintiff’s footage in CBS’s news pieces); Reinsdorf v. Skechers U.S.A., 922 F. Supp. 2d 866, 876 (C.D. Cal. 2013) (“Skechers was licensed to use Reinsdorf’s photographs for only six months. Reinsdorf alleges that Skechers copied his photographs beyond the temporal, geographical, and media limitations of the licenses. Such unauthorized use would … therefore violate a condition of the license rather than a covenant.”). Here, the License specifically contemplates and permits uses of W3K’s library beyond episode 202, and therefore, a failure to pay W3K for these explicitly permitted uses constitutes a breach of the covenant to pay, rather than a breach of any condition of the License. As a result, W3K is limited to a breach of contract claim (at best), and may not maintain a claim for copyright infringement. Quest Software, Inc., 2011 U.S. Dist. LEXIS 110888, at *10-11 (where license fee permitted additional uses for an additional fee, “its breach provides Plaintiff no grounds to claim that Defendant infringed its copyright”). The Complaint, therefore, should be dismissed in its entirety, including the claims for contributory and vicarious infringement (as there is no direct infringement). See MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). 2. The License Was Signed by Plaintiff’s President. The Complaint alleges that the License was unauthorized, and is therefore not binding on Plaintiff. Compl. ¶ 20. But the Complaint does not provide any factual Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 17 of 30 Page ID #:288 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 13308646 222309-10004 11 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations basis for this conclusory allegation, and the License was, in fact, signed by Plaintiff’s President, Keith Volpone. Lee Decl., ¶ 2, Ex. 1; Compl. Ex. C. Under California law, Mr. Volpone’s signature is binding on W3K and creates a contract enforceable against W3K by Deep Dish. California does not consider the common law doctrine of “ultra vires” acts in determining the enforceability of contracts executed by corporate officers. Instead, Cal. Corp. Code § 208(b) provides that: “[a]ny contract or conveyance made in the name of a corporation which is authorized or ratified by the board, or is done within the scope of the authority, actual or apparent, conferred by the board or within the agency power of the officer executing it … binds the corporation.” Section 208(a) states that no limitation, “contained in or implied by the articles [of incorporation] … or by any shareholders’ agreement shall be asserted as between the corporation or any shareholder and any third person.” California law dictates that a corporate officer (like Mr. Volpone) acting within the scope of his or her “actual or apparent” authority, “binds the corporation.” Cal. Corp. Code § 208; Nat’l Farm Fin. Corp. v. PSM Holding Corp. (In re Nat’l Farm Fin. Corp.), No. 07-31580 TEC, Chapter 11, Adv. Proc. No. 07- 3134 TC, 2008 Bankr. LEXIS 177 at *7 (Bankr. N.D. Cal. Jan. 18, 2008) (“Section 208(b) of the Corporations Code suggests that lack of required shareholder approval does not relieve the corporation from monetary liability under a contract.”). Actual authority (or actual agency) resides in employees of the principal, while apparent authority (or ostensible agency) arises when a principal causes a third person to believe another to be his agent. J.L. v. Children’s Institute, Inc., 177 Cal. App. 4th 388, 403 (2009) (citing Cal. Civ. Code §§ 2298, 2299). Ostensible authority has three elements: (i) The person dealing with an agent must do so with a reasonable belief in the agent’s authority, (ii) such belief must be generated by some act or neglect by the principal sought to be charged and (iii) the person relying on the Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 18 of 30 Page ID #:289 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 13308646 222309-10004 12 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations agent’s apparent authority must not be negligent in holding that belief. Id.; see also Cal. Civ. Code § 2317. Here, Mr. Volpone, as the President of W3K, and having signed the License as W3K’s “Co-Founder,” (Compl., Ex. C at 3) had actual authority to enter into the License and to bind W3K. There is no dispute that Mr. Volpone was Plaintiff’s President during negotiations with Deep Dish for licensing Plaintiff’s music for use in the Program, (Lee Decl., ¶ 2, Ex. 1), and the Complaint admits that W3K and Deep Dish were in negotiations for the License. Compl. ¶ 20. Those negotiations culminated in the License, which is attached to the Complaint, and is signed by Plaintiff’s then-President, Mr. Volpone. 8 Compl. Ex. C. Even if W3K argues that Mr. Volpone, despite being W3K’s President, somehow lacked actual authority to enter into the License, there is no support for that assertion in the Complaint and, in any case, Mr. Volpone had ostensible authority to bind W3K to its terms. In examining the actions of a corporate president, California courts have long held that, “where … the president of a company also conducts the business he has ostensible authority to do any act appropriate in the ordinary course of business.” Englert v. IVAC Corp., 92 Cal. App. 3d 178, 190 (1979). Moreover, “in its ordinary course of business its president, as corporate representative, may execute contracts to bind the corporation.” Moore v. Phillips, 176 Cal. App. 2d 702, 709 (1959) (citing to Grummet v. Fresno Glazed Cement Pipe Co., 181 Cal. 509 (1919) and Herring v. Fisher, 110 Cal. App. 2d 322, 330 (1952)). In this case, W3K cannot refute the ostensible authority of its President, as: (i) the Complaint does not allege that Deep Dish did not have a reasonable belief that W3K’s President had authority to enter into the License; (ii) the Complaint 8 Plaintiff cannot deny any of these facts without violating Fed. R. Civ. P. 11. At best, Plaintiff can claim these facts are not in the Complaint, but they are borne out in the documents subject to judicial notice submitted with Defendants’ motion. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 19 of 30 Page ID #:290 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 13308646 222309-10004 13 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations admits that Plaintiff was negotiating a License; (iii) W3K did not object to Deep Dish’s use of W3K’s music when W3K received cue sheets (and royalty payments) reflecting such use; and (iv) the Complaint does not allege that Deep Dish was negligent in relying on Mr. Volpone’s authority. 3. Plaintiff’s Purported Rescission of the License Cannot Retroactively Turn Licensed Uses Into “Infringements.” The Complaint alleges that, on October 5, 2015, Plaintiff sent a “notice of rescission” to Deep Dish, purporting to rescind the License “ab initio.” Compl. ¶ 24, Ex. D. By using the phrase “ab initio,” Plaintiff asserts that, even if there was a valid license to use its music in the Program, those previously licensed uses were somehow retroactively converted into copyright infringements. 9 This argument is wrong for several reasons. a. W3K Waived Any Right to Rescind the License. As a threshold matter, Plaintiff’s claim for rescission is barred by the License, which provides that: No breach by Licensee [Defendants] of any provision hereof shall give Licensor [Plaintiff] the right to injunctive or other equitable relief … Licensor’s sole remedy for any such breach shall be limited to an action at law to seek money damages, if any. Compl. Ex. C at ¶ 5.1. Rescission is an equitable remedy. See, e.g., Hailey v. Cal. Physicians’ Serv., 158 Cal. App. 4th 452, 468 (2007) (“Rescission, however, is an equitable remedy…”). The License specifically states that W3K waived any injunctive or equitable relief, which includes its claim for rescission. Thus, the parties’ contractual provision renders any rescission claim a legal nullity since 9 As grounds for the purported rescission, Plaintiff claims that the License “is void for total failure of consideration.” Compl. Ex. D. This is incorrect, because consideration is “acknowledged as paid” in the License. Compl. Ex. C at ¶ 1.1. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 20 of 30 Page ID #:291 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 13308646 222309-10004 14 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Plaintiff “had no right to rescind as a matter of law by virtue of [its] waiver.” Fosson v. Palace, Ltd., 78 F.3d 1448, 1455 (9th Cir. 1996). Further, the License provides a clear remedy for breach of its terms, and per the Supreme Court, “[i]t is a ‘basic doctrine of equity jurisprudence that courts of equity should not act. . . . when the moving party has an adequate remedy at law.’” Morales v. TWA, 504 U.S. 374, 381 (1992); see also Friends & Lovers, Inc. v. Lions Gate Films, Inc., 56 F. Appx 760, 760-61 (9th Cir. 2001) (affirming dismissal of copyright claims where rescission was impossible). b. A Rescinded Copyright License Could Only Result in Infringement Claims for Post-Rescission Uses, and the Complaint Does Not Allege Any. Notwithstanding the fact that the written License waived Plaintiff’s right to rescind, Plaintiff’s after-the-fact attempt to rescind was ineffectual because, as a matter of Ninth Circuit law, “rescission … allows the nonbreaching party to terminate the agreement. After the agreement is terminated, any further distribution would constitute copyright infringement.” Rano v. Sipa Press, Inc., 987 F.2d 580, 586 (9th Cir. 1993) (emphasis added) (citing Costello Pub. Co. v. Rotelle, 670 F.2d 1035, 1045 (D.C. Cir. 1993) (“an action for copyright infringement would lie if the breach is so material that it allows the grantor power to recapture the rights granted so that any further use of the work was without authority”) (emphasis added); see also Fosson, 78 F.3d at 1455 (“once a non- breaching party to an express copyright license obtains and exercises a right of rescission by virtue of a material breach of the agreement, any further distribution of the copyrighted material would constitute infringement”) (citing Rano). This is the only sensible result, as rescission seeks to restore the parties to their positions prior to the contract. Friends & Lovers, 56 F. App’x at 760. It would be impossible to return the parties to their pre-contract states because the episodes of the Program that allegedly used W3K’s music have already been produced and Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 21 of 30 Page ID #:292 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 13308646 222309-10004 15 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations aired. This is analogous to the distribution rights in Friends & Lovers, in which the Ninth Circuit held that rescission of the license was impossible because the motion picture at issue had already been released. Id. at 760-61. Thus, a rescission operates identically to a termination. Applying this principle to the Complaint, Plaintiff alleges no downloads of W3K’s music, and no synchronizations of Plaintiff’s works, that took place after the date of the purported rescission, October 5, 2015. Per the spreadsheet attached to the Complaint as Exhibit E, the last alleged download was in October 2014, a year before the rescission letter. Likewise, the Complaint refers to the cue sheets that Defendants prepared for episodes of Steve Harvey that used W3K’s music, and the latest of these cue sheets (which the Court may take judicial notice of, because they are referenced in the Complaint) is dated November 18, 2014, also nearly a year before the rescission letter. Walsh Decl., ¶ 3, Ex. B at ENDEMOL0006082. Accordingly, even if the rescission were effective—as a termination—for uses after October 5, 2015, the Complaint should be dismissed because it does not allege any uses of W3K’s music after that date. 10 c. W3K Has Not Complied with California’s Requirements for Rescission. Even if the Court were to look past W3K’s waiver of the remedy of rescission, and were to disregard the fact that the Complaint does not allege any post-rescission infringements, Plaintiff’s rescission claim still fails as a matter of law. The California Civil Code 11 states that: “[a] party to a contract may rescind the 10 If Plaintiff alleges that episodes of the Program including its music were broadcast after October 5, 2015, the Complaint does not allege that the named Defendants broadcast any episodes, and so the Complaint should still be dismissed. 11 In deciding an action for rescission, federal courts apply the relevant state standard. Yount v. Acuff Rose-Opryland, 103 F.3d 830, 834 (9th Cir. 1996) (“an egregious breach of the contract transferring a copyright may well give a royalty holder a right of rescission. But rescission itself is a creature of state law.”) (internal citation omitted). Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 22 of 30 Page ID #:293 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 13308646 222309-10004 16 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations contract … [i]f the consideration for the obligation of the rescinding party fails.” Cal. Civ. Code § 1689(b)(2). However, in order to exercise this right, the rescinding party must, “promptly upon discovering the facts which entitle him to rescind … [g]ive notice of rescission [and r]estore the other party everything of value which he has received from him under the contract.” Cal. Civ. Code § 1691 (emphasis added). Here, the Complaint admits that Plaintiff did not give prompt notice or restore the value received. The notice of rescission is dated October 5, 2015, more than three years after the Program started airing (with W3K’s music) in September 2012. This delay in providing notice dooms the purported rescission because the delay caused immense prejudice to Defendants, who acted pursuant to the License for years before being notified of any dispute. Sound/City Recording Corp. v. Solberg, 443 F. Supp. 1374, 1378-79 (W.D. La. 1978) (citing Cal. Civ. Code § 1693) (“When relief based upon rescission is claimed in an action or proceeding, such relief shall not be denied because of delay in giving notice of rescission unless such delay has been substantially prejudicial to the other party.”). Moreover, the Complaint does not allege that W3K returned the consideration for the License recited in section 1.1, or any of the payments W3K received from the PROs that resulted from performance of its works on the Program pursuant to the License. Ultimately, Plaintiff presumes that it can retain the benefits (financial, promotional, and otherwise) of having its works included in a nationally syndicated television show, while at the same time claiming millions of dollars in damages for their use. Such a result is contrary to the equitable standards outlined by the California legislature, and should be rejected. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 23 of 30 Page ID #:294 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 13308646 222309-10004 17 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 4. Even if the Express License is Not Deemed To Bar Plaintiff’s Claims, the Complaint is Barred by the Doctrine of Implied License. If the Court does not find at this stage of the case (i.e., based on the Complaint and judicially noticed documents) that W3K granted an express license to Deep Dish, the Court should dismiss the Complaint because the Complaint itself establishes that Deep Dish was granted an implied license to use W3K’s works. The transfer of nonexclusive rights to copyrighted works does not require a signed writing, (Effects Assocs. v. Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990) (discussing 17 U.S.C. §§ 101, 204)), and courts “universally have recognized that a nonexclusive license may be implied from conduct.” I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996). The Ninth Circuit has held that: “[a] copyright holder may give an implied license to another ‘where the copyright owner engages in conduct from which [another party] may properly infer that the owner consents to his use.’” Stevens v. Corelogic, Inc., 194 F. Supp. 3d 1046, 1053 (S.D. Cal. 2016) (citing Field v. Google Inc., 412 F. Supp. 2d 1106, 1116 (D. Nev. 2006) (“Consent to use the copyrighted work need not be manifested verbally and may be inferred based on silence where the copyright holder knows of the use and encourages it.”)). Furthermore, “[s]ilence or lack of objection may also be the equivalent of [implied consent] especially where the plaintiff knows of the defendant’s use.” Stevens, 194 F. Supp. 3d at 1053-54. The Ninth Circuit’s decision in Falcon Enters. v. Publrs. Serv., 438 F. App’x 579 (9th Cir. 2011) is illustrative. In Falcon, the plaintiff photographer (“Falcon”) regularly provided photographs to the defendant publishing company (“Publishers”) for possible use in a magazine, despite no written agreement. Falcon never declined to grant Publishers a license, and Publishers regularly published Falcon’s photographs. Accordingly, the Court of Appeals held that: “[t]he parties’ conduct demonstrates that Falcon granted Publishers an ongoing nonexclusive implied Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 24 of 30 Page ID #:295 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 13308646 222309-10004 18 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations license to use its content for a fee” (and affirmed that Publishers was not liable for copyright infringement). Id. at 581; see also Field v. Google Inc., 412 F. Supp. 2d 1106, 1116 (D. Nev. 2006) (dismissing copyright infringement due to implied license) (“Thus, with knowledge of how Google would use the copyrighted works he placed on those pages, and with knowledge that he could prevent such use, Field instead made a conscious decision to permit it. His conduct is reasonably interpreted as the grant of a license to Google for that use.”). In this case, the Complaint admits that W3K provided its music library to Deep Dish in August 2012 for use in the Program. Compl. ¶ 20; Lee Decl., ¶ 2, Ex. 1. After it negotiated with Deep Dish and executed a License, W3K then saw that its music library was accessed and downloaded by Deep Dish thousands of times for more than two years. Compl. ¶ 25. W3K also received cue sheets prepared by Defendants notifying W3K that its music was being used in the Program, from as early as September 2012, and continuing for multiple seasons. Compl. ¶ 26. These cue sheets were provided to W3K from the relevant performing rights organizations, meaning that W3K was collecting royalty payments for uses of its music on the Program. Id. Yet W3K said nothing to Deep Dish. Just as in Falcon, the Court should find that (assuming the express License does not bar these claims) the parties’ conduct demonstrates that W3K granted Deep Dish an ongoing nonexclusive implied license to use its content, and dismiss the Complaint. C. Plaintiff’s Claims are Based on Improper and Invalid “Bulk” Registrations, Precluding a Claim for Copyright Infringement. The Complaint also fails to state a claim for relief because Plaintiff has improperly registered the vast majority of its works as part of “collections.” However, 17 U.S.C. § 408(c) and 37 C.F.R. § 202.3 preclude registration of Plaintiff’s works as collections because the works do not have the same author. Specifically, 37 C.F.R. § 202.3(b)(4)(B)(4) requires that “[a]ll of the elements [of Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 25 of 30 Page ID #:296 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 13308646 222309-10004 19 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations the collection] are by the same author, or, if they are by different authors, at least one of the authors has contributed copyrightable authorship to each element.” Because Plaintiff’s collection registrations are invalid, Plaintiff cannot proceed with its copyright infringement claims. See Determined Productions, Inc. v. Koster, No. C 92-1697 BAC, 1993 U.S. Dist. LEXIS 4586, at *2 (N.D. Cal. Apr. 12, 1993) (violation of 37 C.F.R. § 202.3 “is a fundamental registration error, which deprives this court of jurisdiction over the copyright claim”); Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F. Supp. 2d 223, 229-30 (S.D.N.Y. 2012) (copyright registration of a “collection” that violates 37 C.F.R. § 202.3 is invalid). A review of even a single cue sheet demonstrates why the Complaint must be dismissed for invalid registrations. In the first episode of Steve Harvey to allegedly use W3K’s music library, the second song listed is titled “Urban Mellow” and was composed by none other than Keith Volpone. Walsh Decl., ¶ 3, Ex. B at ENDEMOL0004093-94. Per the Complaint’s Exhibit B, which lists the titles allegedly included in the registrations attached as Exhibit A, Urban Mellow is part of the registration numbered SRu 1-234-248. See Compl. Ex. B at Column H, Row 401, on W3K15655. SRu 1-234-248 is a collection registration. Compl. Ex. A at W3K15638. However, SRu 1-234-248 also includes the 17th song used in the same episode, (Walsh Decl., ¶ 3, Ex. B at ENDEMOL0004095-96), which is titled “Bungalo,” and is written by a different author, Craig Sharmat. See Compl. Ex. B at Column H, Row 466, at W3K15656. These same two songs—by different authors—are also both included in SRu 1-229-288. SRu 1-229-288 is also a collection registration. Compl. Ex. A at W3K15634. Mr. Volpone’s song is listed on W3K15658, (Compl. Ex. B at Column D, Row 558), while Mr. Sharmat’s song is listed on W3K15660. Compl. Ex. B at Column D, Row 644. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 26 of 30 Page ID #:297 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 13308646 222309-10004 20 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Because the Complaint admits that Plaintiff’s bulk registrations contain works authored by different individuals, the Complaint concedes that these registrations are invalid, and the Complaint should be dismissed as a matter of law. D. W3K’s Claims Based on Any Allegedly Infringing Conduct Prior to February 24, 2014 Are Untimely. The statute of limitations for copyright infringement actions is three years after the claim accrues. 17 U.S.C. § 507. Here, since the Complaint was filed on February 24, 2017, any allegedly infringing acts that took place prior to February 24, 2014 are untimely, and cannot be pursued in this matter. The vast majority of the infringing acts alleged in the Complaint are time-barred. First, the Complaint alleges that files were accessed or downloaded from W3K’s website “[b]etween August 8, 2012 and October 23, 2014,” and admits that much of this “time range” of alleged infringements is outside of the limitations period. Compl. at 11:13-15 (“Between August 8, 2012 and October 23, 2014, and therefore in part including within the applicable period of any statute of limitations applicable to this action…”) (emphasis added). Exhibit E to the Complaint purports to be a list of downloads, but the first 44 pages of that 48 page document consist of alleged downloads that occurred prior to February 24, 2014. Thus, these 44 pages of alleged infringements are legally time-barred and should be dismissed from the case. Second, the Complaint alleges that, in addition to purportedly infringing Plaintiff’s music by downloading and listening to the songs in W3K’s library, Defendants infringed Plaintiff’s music by using certain clips from the library in episodes of the Program “commencing in or around September 2012.” Compl. at 12:4-14 (“many of those uses occurred within the period of any statute of limitations applicable to this action”). Any claims relating to episodes of the Program that were synchronized prior to February 24, 2014 should be dismissed from the case. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 27 of 30 Page ID #:298 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 13308646 222309-10004 21 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Accordingly, assuming the claims in the Complaint are not independently barred for the reasons described above, the Court should order that any allegedly infringing activities that occurred prior to February 24, 2014, are not actionable and must be dismissed from this action. E. The Complaint Should Be Dismissed for Literally Failing to State a Claim Upon which Relief May Be Granted. A properly pleaded complaint for copyright infringement must identify: “(1) which specific original works form the subject of the copyright claim; (2) that the plaintiff owns the copyrights in those works; (3) that the copyrights have been registered in accordance with the statute; and (4) by what acts and during what time the defendant infringed the copyright.” Righthaven LLC v. Dr. Shezad Malik Law Firm P.C., Case No. 2:10-cv-0636-RLH-RJJ, 2010 U.S. Dist. LEXIS 91643, at *4-5 (D. Nev. Sept. 2, 2010) (citing Home & Nature Inc. v. Sherman Specialty Company, Inc. 322 F. Supp. 2d 260, 265 (E.D.N.Y. 2004)). Plaintiff’s Complaint fails to meet this very basic standard. Instead, it bombastically alleges thousands of infringe- ments in one breath while reluctantly conceding that there was a license agreement (albeit “bogus” in Plaintiff’s self-serving and unexplained characterization) while at the same time admitting that many of its claims are time barred (and therefore should not have been included in this action under the precepts of Fed. R. Civ. P. 11). The result of Plaintiff’s scattershot Complaint is that Defendants cannot identify a single work by title, registered with the United States Copyright Office, which has been reproduced on an episode of Steve Harvey within the three year statute of limitations for copyright infringement actions. While this may be a petty annoyance if Plaintiff’s claims related to one or two works, or where Plaintiff’s claims establish no doubt as to timely registration and assertion of claims, in a case allegedly involving thousands of infringements, Plaintiff’s Complaint constitutes a total failure to meet even the liberal standards of notice pleading. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 28 of 30 Page ID #:299 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 13308646 222309-10004 22 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Indeed, this is not merely a technical pleading problem subject to cure by a more definite statement, it is a substantive failure where Plaintiff knows and admits within its own pleading that many, if not all, of its claims are time-barred. Plaintiff presents a picture of a vast forest of infringements, but intentionally fails and refuses to identify the trees properly before the Court. F. W3K Is Not Entitled to Statutory Damages or Attorneys’ Fees for Any Acts Before October 29, 2014 (the Vast Majority of the Conduct Alleged in the Complaint). The Copyright Act precludes W3K from seeking statutory damages or attorneys’ fees for infringement of any works that were not registered prior to the commencement of the alleged infringement. 17 U.S.C. § 412 (“[N]o award of statutory damages or of attorney’s fees . . . shall be made for . . . any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”); see also, e.g., Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 699 (9th Cir. 2008) (Section 412(2) “mandates that, in order to recover statutory damages, the copyrighted work must have been registered prior to commencement of the infringement” and “the first act of infringement in a series of ongoing infringements of the same kind marks the commencement of one continuing infringement under § 412[.]”); id at 701. The Complaint establishes that statutory damages or attorneys’ fees are not available for the vast majority, if not all, of the alleged infringements, since the earliest registration became effective on October 29, 2014. Compl. at 7:26-27, Ex. A. First, the Complaint alleges that files were accessed or downloaded from W3K’s website: “[b]etween August 8, 2012 and October 23, 2014.” Compl. at 11:13-15. Because none of these acts occurred after the earliest registration date of October 29, 2014, none of these acts are eligible for statutory damages or attorneys’ fees. Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 29 of 30 Page ID #:300 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 13308646 222309-10004 23 MEMORANDUM IN SUPPORT OF MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Second, the Complaint alleges that W3K’s music was used in episodes of the Program “commencing in or around September 2012.” Compl. at 12:4-14 (“many of those uses occurred within the period of any statute of limitations applicable to this action”). Any episodes of the Program that were synchronized prior to October 29, 2014 are not eligible for statutory damages or attorneys’ fees. IV. CONCLUSION W3K granted Deep Dish an express license to use W3K’s music library in Steve Harvey, evidenced by the writing attached to the Complaint signed by W3K’s President. Having failed to allege any facts to establish the invalidity of that License, which does not limit the episodes in which Deep Dish could use W3K’s music in Steve Harvey, the Complaint fails to state a claim for relief. Alternatively, W3K granted Deep Dish an implied license by providing its music to W3K to use in Steve Harvey, and then, for years, observing the download of its music, receiving cue sheets for use of that music, and collecting royalties without complaint. As such, W3K’s claims for copyright infringement (of any variety) fail as a matter of law, and the Complaint should be dismissed with prejudice. Should the Court find against dismissing the Complaint in its entirety, Defendants respectfully request an order dismissing: (i) any infringement claims for conduct prior to February 24, 2014, as untimely; and (ii) any claims for statutory damages or attorneys’ fees for conduct before October 29, 2014, as barred by the Copyright Act. Dated: April 26, 2017 LOEB & LOEB LLP DAVID GROSSMAN BARRY I. SLOTNICK EDWARD K. LEE By: /s/ David Grossman David Grossman Attorneys for Defendants Deep Dish Productions of Chicago, LLC; Endemol USA Holdings, Inc.; Beautiful Day Productions, LLC; and NBCUniversal, LLC Case 2:17-cv-01532-DSF-AS Document 19-1 Filed 04/26/17 Page 30 of 30 Page ID #:301 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 13308521.2 222309-10004 [PROPOSED] ORDER GRANTING MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION WE 3 KINGS, INC., a New Jersey Corporation, Plaintiff, v. DEEP DISH PRODUCTIONS OF CHICAGO, LLC, an Illinois Limited Liability Company, ENDEMOL USA HOLDING, INC., a Delaware Corporation, BEAUTIFUL DAY PRODUCTIONS, LLC, a Delaware Limited Liability Company, NBCUNIVERSAL DOMESTIC TELEVISION, a Division of NBCUNIVERSAL, LLC, a Delaware Limited Liability Company, and DOES 1 through 10, Inclusive, Defendants. Case No.: CV 17-01532-DSF (ASx) Assigned to Hon. Dale S. Fischer [PROPOSED] ORDER GRANTING DEFENDANTS’ MOTION TO DISMISS THE COMPLAINT Date: June 5, 2017 Time: 1:30 p.m. Place: Courtroom 7D First Street Courthouse 350 West 1st Street Los Angeles, CA 90012 Complaint Filed: February 24, 2017 Case 2:17-cv-01532-DSF-AS Document 19-2 Filed 04/26/17 Page 1 of 3 Page ID #:302 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 13308521.2 222309-10004 1 [PROPOSED] ORDER GRANTING MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations [PROPOSED] ORDER The motion to dismiss filed by Defendants Deep Dish Productions of Chicago, LLC; Endemol USA Holdings, Inc.; Beautiful Day Productions, LLC; and NBCUniversal, LLC (the “Motion”) came on for hearing on June 5, 2017, at 1:30 p.m., in Courtroom 7D of the above Court, the Honorable Dale S. Fischer presiding. Loeb & Loeb LLP appeared on behalf of Defendants, and Alan Dowling, P.C., appeared on behalf of Plaintiff. After full consideration of the Motion, as well as the evidence and points and authorities submitted therewith, and good cause having been shown, the Court finds that Defendants have satisfied their burden of establishing that the Complaint fails to state a claim upon which relief can be granted. Based on those findings, the Court GRANTS the Motion, pursuant to Fed. R. Civ. P. 12(b)(6), and the Complaint is dismissed, with prejudice. [Alternatively After full consideration of the Motion, as well as the evidence and points and authorities submitted therewith, and good cause having been shown, the Court finds that Defendants have satisfied their burden of establishing that, in part, the Complaint fails to state a claim upon which relief can be granted. Based on those findings, the Court GRANTS the Motion, pursuant to Fed. R. Civ. P. 12(b)(6), as follows: 1. Any infringement claims for conduct prior to February 24, 2014, are dismissed with prejudice; and 2. Any claims for statutory damages or attorneys’ fees for conduct before October 29, 2014 are dismissed with prejudice. Case 2:17-cv-01532-DSF-AS Document 19-2 Filed 04/26/17 Page 2 of 3 Page ID #:303 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 13308521.2 222309-10004 2 [PROPOSED] ORDER GRANTING MOTION TO DISMISS Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 3. Plaintiff, within 20 days, must file and serve an amended complaint describing which songs, in which registrations, were used in which episodes of Steve Harvey, in the past three years.] IT IS SO ORDERED Dated: _______________________ _________________________________ Hon. Dale S. Fischer United States District Court for the Central District of California Case 2:17-cv-01532-DSF-AS Document 19-2 Filed 04/26/17 Page 3 of 3 Page ID #:304