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Forlenza v. AT&T


April 12, 2004


The opinion of the court was delivered by: Audrey B. Collins, United States District Judge.


On February 20, 2004, Defendants filed a motion to dismiss Plaintiff's Complaint. The Court received Plaintiff's opposition on March 8, 2004, and Defendants' reply on March 15, 2004. The motion came on regularly for hearing on April 12, 2004. Upon consideration of the parties' submissions, oral argument, and the case file, the Court GRANTS Defendants' motion.


On November 12, 2003, Plaintiff Francis Forlenza ("Forlenza") commenced this copyright and false endorsement action against AT&T, Young & Rubicam, Inc., and Wunderman *fn1 (collectively "Defendants"). In 1990, Forlenza created a mural entitled "My Fifteen Minutes - Tumbling Waves." (Compl. P 9.) The mural is contained within a swimming pool at the Phoenix Hotel in San Francisco, California. (Id.) Since its creation, the mural has become famous, with articles about it appearing in New York magazine, the Los Angeles Times, áand other widely circulated publications. (Id.) Forlenza has obtained a copyright registration for the mural. (Compl. P 23.)

Forlenza alleges that the mural has become distinctly associated with him, "so that when people think of plaintiff and his art, they think of the mural, and among those who know plaintiff, those that see the mural, think of plaintiff." (Compl. P 35.)

In 2002, Defendant AT&T hired an advertising agency, Defendant Young & Rubicam, Inc., to create televisionácommercials. (Compl. PP 11, 12.) The commercials display Forlenza's mural. Despite Forlenza's requests, AT&T has refused to stop airing the commercials. (Compl. PP 19, 20.) Forlenza alleges that Defendants have deceived others into mistakenly believing that he is affiliated with, or has otherwise sponsored, Defendants' commercials. (Compl. P 36.)


A Rule 12(b)(6) motion tests the legal sufficiency of the claims asserted in the complaint. See Fed. R. Civ. P. 12(b)(6). Rule 12(b)(6) must be read in conjunction with Rule 8(a) which requires a "short and plain statement of the claim showing that the pleader is entitled to relief." 5A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1356 (1990). "The Rule 8 standard contains 'a powerful presumption against rejecting pleadings for failure to state a claim.'" Gilligan v. Jamco Dev. Corp., 108 F.3d 246, 249 (9th Cir. 1997). A Rule 12(b)(6) dismissal is proper only where there is either a "lack of a cognizable legal theory" or "the absence of sufficient facts alleged under a cognizable legal theory." Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir. 1988);áaccord Gilligan, 108 F.3d at 249 ("A complaint should not be dismissed 'unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief").

The Court must accept as true all material allegations in the complaint, as well as reasonable inferences to be drawn from them. See Pareto v. F.D.I.C., 139 F.3d 696, 699 (9th Cir. 1998). Moreover, the complaint must be read in the light most favorable to plaintiff. See id. However, the Court need not accept as true any unreasonable inferences, unwarranted deductions of fact, and/or conclusory legal allegations cast in the form of factual allegations. See, e.g., Western Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981).

Moreover, in ruling on a 12(b)(6) motion, a court generally cannot consider material outside of the complaint (e.g., those facts presented in briefs, affidavits, or discovery materials). See Branch v. Tunnell, 14 F.3d 449, 453 (9th Cir. 1994). A court may, however, consider exhibits submitted with the complaint. See id. at 453-54. Also, a court may consider documentsáwhich are not physically attached to the complaint but "whose contents are alleged in [the] complaint and whose authenticity no party questions. Id. at 454. Further, it is proper for the court to consider matters subject to judicial notice pursuant to Federal Rule of Evidence 201. Mir, M.D. v. Little Co. of Mary Hospital, 844 F.2d 646, 649 (9th Cir. 1988).


A. Copyright Infringement Claim

Defendants argue that Forlenza's copyright claim should be dismissed because their display of the mural was de minimis. *fn2 The Court agrees. "For an unauthorized use of a copyrighted work to be actionable, there must be substantial similarity between the plaintiff's and the defendants' works." Newton v. Diamond, 349 F.3d 591, 594 (9th Cir. 2003) (citations omitted). A use is de minimis if the average audience would not recognize the appropriation due to the lack of substantial similarity between the works. Id. at 595 ("To say that a use is de minimis because no audience would recognize the appropriation is thus to say that the works are not substantially similar."). In this case, Defendants' allegedáinfringement was de minimis because Forlenza's mural and Defendants' commercials are not substantially similar as a matter of law.

Courts generally consider both quantitative and qualitative factors in determining whether a use is de minimis in cases involving "fragmented literal similarity." Id. at 596 (citing 4 Nimmer on Copyright § 13.03[A][2], at 13-45). "Fragmented literal similarity exists where the defendant copies a portion of the plaintiff's work exactly or nearly exactly, without appropriating the work's overall essence or structure. Because the degree of similarity is high in such cases, the dispositive question is whether the similarity goes to trivial or substantial elements. The substantiality of the similarity is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff's work as a whole." Id.

In assessing qualitative importance, a court asks whether the defendant's copied portion is particularly significant to the plaintiff's work as a whole. Id. at 597; Apple Computer, Inc. v. Microsoft, Corp., 821 F. Supp. 616, 624 (N.D. Cal.1993), aff'd, 35 F.3d 1435 (9th Cir. 1994) ("Quantitatively insignificant infringement may be substantial if the material is qualitatively important to plaintiff's work."). In making this assessment, it is not relevant whether the copied portion of the mural was qualitatively important to Defendants' commercials. Rather, a proper inquiry focuses on the significance of the copied portion to Forlenza's work. See Newton, 349 F.3d at 596-97 (explaining that a substantial similarity analysis focuses on the relationship of the sampled portion to the plaintiff's work, not the defendant's). Forlenza misunderstands this principleáwhen he argues that the sampling was qualitatively important because of its advertising value and because "there is only one public swimming pool that does not have a white bottom . . . [and] the effect the director wanted to capture would not be present in a plain vanilla white-bottomed pool." (Opp'n at 9:22-28, 10.)

Instead, the Court assesses whether the portion of the mural appearing in Defendants' commercials had a particular significance in the mural as a whole. As Forlenza concedes, his "mural is a pattern of 6s and 9s that repeats over and over. One does not need to see the whole mural to know what one is looking at. Once the eye detects a pattern, the eye does not need to see every inch of the pattern, [sic] to understand that there is indeed a pattern that repeats endlessly." (Opp'n at 10:2-5.) In describing the mural, Forlenza implicitly acknowledges that the section of the mural appearing in Defendants' commercials is no more significant than any other section because the pattern simply "repeats endlessly." Therefore, the portion of the mural appearing in Defendants' commercials lacks qualitative significance. See Newton, 349 F.3d at 597 ("Althougháthe sampled section may be representative of the scored portions of the composition, Newton has failed to offer any evidence as to this section's particular significance in [his] composition as a whole.")

The quantitative analysis also focuses on whether the segment in question constituted a substantial portion of the plaintiff's work, not whether it constituted a substantial portion of the defendant's work. Id. at 596-97. "In determining whether the allegedly infringing work falls below the quantitative threshold of substantial similarity to the copyrighted work, courts often look to the amount of the copyrighted work that was copied, as well as the observability of the copyrighted work in the allegedly infringing work." Gordon v. Nextel Communications & Mullen Adver., Inc., 345 F.3d 922, 924 (6th Cir. 2003). Accordingly, it is not relevant that Defendants' commercials "ran at least 1000 times in the Los Angeles market alone," (Opp'n at 11:21-22.), as the focus is on whether the sample in the commercials comprises a substantial portion of Forlenza's mural and whether the sample is observable in the commercials.

The Court viewed the relevant commercials, including the commercials submitted by Forlenza. *fn3 As Plaintiff's counsel concedes, the mural appears for at most three seconds in a 60-second commercial. (See Michael Machat Decl. P 2.) The appearance is fleeting and because the mural emerges in a series of other choppy and fleeting images, its appearance is not particularly observable. Except for the 60-second "California Freedom" commercial, the commercials show only a small fragment of the upper-portion of the mural. While the "California Freedom" commercial does display an underwater view of the hotel and a larger fragment of the mural, the fragment emerges for a momentary one-second appearance. Therefore, the Court concludes that Forlenza has failed to show any quantitative or qualitative significance of the portions of the mural appearing in Defendants' commercials to his mural as a whole. Because Defendants' commercials and Forlenza's mural are not substantially similar, Defendants' use of the mural was de minimis. As such, Forlenza cannot maintain an actionable copyright claim.

B. False Endorsement Claim

Defendants next argue that Forlenza's false endorsement claim under Section 43(a) of the Lanham Act should be dismissed because Forlenza is not using the mural as a "trademark," and thus may not maintain a Section 43(a) claim based upon its display. In response, Forlenza contends that Defendants misapprehend his argument and fail to address "the false endorsement aspect" of his claim because they rely "solely on the argument that [he] cannot claim a trademark right in the mural." (Opp'n at 21:22-24.) However, in making this argument, Forlenza fails to appreciate that "[a] false endorsement claim based on the unauthorized use of a celebrity's identity is a type of false association claim, for it alleges the misuse of a trademark." Waits v. Frito-Lay, 978 F.2d 1093, 1110 (9th Cir. 1992) (as amended) (emphasis added). Thus, to assert a false endorsement claim, Forlenza must establish that the portion of the mural displayed in Defendants' commercials is actually a cognizable trademark which is likely to confuse consumers. See id.; Comedy III Productions, Inc. v. New Line Cinema, 200 F.3d 593, 594-95 (9th Cir. 2000).áIn this case, Forlenza has failed to sufficiently allege a cognizable trademark interest in the mural.

In addition, inherent in the Court's conclusion that Defendants' use of Forlenza's mural was de minimis is the corollary that the average consumer would not recognize the appropriation. See Fisher v. Dees, 794 F.2d 432, 434 n.2 (9th Cir. 1986) ("[A] taking is considered de minimis only if it is so meager and fragmentary that the average audience would not recognize the appropriation."). Thus, Forlenza cannot possibly show the likelihood of consumer confusion as to the source or sponsorship of Defendants' commercials as a matter of law. See Pirone v. Macmillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990) (claims may be dismissed as a matter of law where the court is satisfied that the products are so dissimilar that no question of fact is presented) (citations omitted). The Court therefore grants Defendants' motion to dismiss Forlenza's false endorsement claim.


For all the reasons set forth above, Defendants' motion is GRANTED. Accordingly, Plaintiff's complaint is DISMISSED WITH PREJUDICE as to the copyright infringement claimáand the false endorsement claim.


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