The opinion of the court was delivered by: Dean D. Pregerson United States District Judge
ORDER DENYING DEFENDANTS' MOTION TO DISMISS
Motion filed on 11/8/2010
Presently before the court is Defendants Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively, "Skechers")'s Motion to Dismiss. After reviewing the parties' moving papers and hearing oral argument, the court denies the motion and adopts the following order.
Skechers is a shoe company. (Declaration of Fred Machuca in support of Motion to Dismiss ("Machuca Dec.") ¶ 5. In 2006, Skechers engaged Plaintiff Richard Reinsdorf ("Reinsdorf"), a photographer, to conduct a photo shoot in connection with Skechers's marketing efforts. (Complaint ¶ 4.) Skechers engaged Reinsdorf for four additional photo shoots between 2007 and 2009. (Compl. ¶¶ 19, 23, 26, 30.)
Prior to each photo shoot, Skechers explained to Reinsdorf the type of images Skechers hoped to capture. (Machuca Dec. ¶ 12.) These explanations included storyboards and photographic examples, as well as drawings depicting particular poses for Skechers' selected models. (Id. ¶¶ 12, 14.) During the shoots, Reinsdorf posed models, arranged lighting and props, and otherwise directed the photography sessions. (Compl. ¶ 23.)
Skechers did not obtain Reinsdorf's services as "work for hire." (Compl. ¶¶ 5, 18.) Instead, Skechers obtained limited licenses to use Reinsdorf's work within North America for a six month period. (Id.) Reinsdorf delivered raw photographs ("the photographs") to Skechers at the conclusion of each photo shoot. (Machuca Dec. ¶ 15.)
Upon receiving the photographs from Reinsdorf, Skechers proceeded to modify the images for use in Skechers advertisements. (Id. ¶¶ 16, 17.) The alterations varied with each image, and ranged from slight modifications in models' skin tone to the substitution of models' body parts and the addition of substantial graphic effects. (Id. ¶¶ 17, 21.) These enhanced images were then used in Skechers advertisements (the advertisements). (Id. ¶ 16.) No raw, unaltered photograph was ever incorporated into a finished advertisement. (Id.)
Reinsdorf brought suit in this court alleging copyright infringement, as well as state law causes of action for breach of contract and unfair competition. Reinsdorf alleges that Skechers utilized Reinsdorf's copyrighted images as part of Skechers's marketing efforts in violation of the temporal and geographic limits of the use licenses. (Compl. ¶ 6.) Skechers now moves to dismiss for lack of jurisdiction on the ground that the advertisements are joint works, and, therefore, that Skechers cannot have infringed its own copyright.
Skechers asks this court to dismiss Reinsdorf's complaint for lack of jurisdiction under Federal Rule of Procedure 12(b)(1). Skechers is correct that this court may look to extrinsic, disputed facts when conducting a jurisdictional analysis. Roberts v. Corrothers, 812 F.2d 1173, 1177 (9th Cir. 1987). The 12(b)(1) standard is not appropriate, however, where issues of jurisdiction and substance are intertwined. Id. "In ruling on a jurisdictional motion involving factual issues which also go to the merits, the trial court should employ the standard applicable to a motion for summary judgment, as a resolution of the jurisdictional facts is akin to a decision on the merits." Augustine v. United States, 704 F.2d 1074, 1077 (9th Cir. 1983). As discussed further below, the intent of the parties with respect to the photographs is essential to a determination whether the advertisements are joint works. Because this disputed issue goes both to jurisdiction and the merits of Reinsdorf's claim, the court treats Skechers motion as a Rule 56 motion for summary judgment.*fn1
A motion for summary judgment must be granted when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). A party seeking summary judgment bears the initial burden of informing the court of the basis for its motion and of identifying those portions of the pleadings and discovery responses that demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
Where the moving party will have the burden of proof on an issue at trial, the movant must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party. On an issue as to which the nonmoving party will have the burden of proof, however, the movant can prevail merely by pointing out that there is an absence of evidence to support the nonmoving party's case. See id. If the moving party meets its initial burden, the non-moving party must set forth, by affidavit or as otherwise provided in Rule 56, "specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
It is not the Court's task "to scour the record in search of a genuine issue of triable fact." Keenan v. Allan, 91 F.3d 1275, 1278 (9th Cir. 1996). Counsel have an obligation to lay out their support clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031 (9th Cir. 2001). The Court "need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is not ...