United States District Court, C.D. California
ROBERT J. MARDEROSIAN ET AL.
WARNER BROS. ENTERTAINMENT, INC. ET AL.
Present: The Honorable CHRISTINA A. SNYDER
CIVIL MINUTES - GENERAL
DEFENDANTS' MOTION TO DISMISS PLAINTIFFS' CLAIMS FOR
STATUTORY DAMAGES AND ATTORNEYS' FEES (Dkt. 21, filed
April 3, 2017)
case involves a dispute over the copyright to “Being
Evil Has a Price” (also referred to as “Pay the
Price”) the musical composition excerpted in the main
title theme of Lucifer, a television show produced
by Defendants Warner Bros. Entertainment and NS Pictures,
Inc. (collectively, “Warner Bros.”). Dkt. 1
(“Compl.”) ¶ 1. Plaintiffs allege that they
wrote, recorded, and produced the song; that Warner Bros. has
used an excerpt of plaintiffs' recording at the beginning
of nearly every episode of Lucifer; and that
plaintiffs have not received any credit or compensation for
this use. Id. Plaintiffs contend that Warner. Bros
is liable for copyright infringement. Id.
¶¶ 31-42. They seek actual damages, or, in the
alternative, statutory damages and attorney's fees.
Id. ¶¶ 39- 42.
Bros. has filed a “Motion to Dismiss Plaintiffs'
Claims for Statutory Damages and Attorneys' Fees.”
Dkt. 21. Warner Bros. argues that plaintiffs are not entitled
to these remedies because they failed to register their
copyrights before the alleged infringement commenced.
Id. at 9 (citing 17 U.S.C. § 412). The motion
has been fully briefed (Dkts. 23, 27) and the Court held oral
argument on May 1, 2017. The Court GRANTS the motion with
leave to amend.
initial matter, the Court must decide whether a motion to
dismiss is the appropriate vehicle to attack a demand for
relief, or whether, as plaintiffs argue, such an attack must
be made through a motion to strike. This question has long
bedeviled litigants in this circuit because the Federal Rules
of Civil Procedure do not provide clear guidance and courts
have reached inconsistent conclusions. A long line of cases,
both in this circuit and elsewhere, have held that
“‘[a] request for relief cannot be dismissed for
failure to state a claim.'” Saidian v. Krispy
Kreme Doughnut Corp., 2017 WL 945083, at *4 (C.D. Cal.
Feb. 27, 2017) (quoting Doe v. State of Ariz., 2016
WL 1089743, at *5 (D. Ariz. Mar. 21, 2016)). However, the
Ninth Circuit has held that because “Rule 12(f) does
not authorize district courts to strike claims for damages on
the ground that such claims are precluded as a matter of law,
” an attack on the demand must occur under Rule
12(b)(6) or Rule 56. Whittlestone, Inc. v. Handi-Craft
Co., 618 F.3d 970, 974-75 (9th Cir. 2010). Under
Whittlestone, Warner Bros.'s motion is
the Court will test the sufficiency of the demand under Rule
12(b)(6), there is no requirement that the demand be
supported by factual allegations that render it
“plausible on its face.” Cf. Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). Careful readers will
remember that the plausibility requirement recognized in
Twombly and Iqbal was based on the
Court's construction of Rule 8(a)(2)'s requirement
for a “short and plain statement of the claim, ”
not on a construction of Rule 12(b)(6). See Iqbal,
556 U.S. at 677-78; Twombly, 550 U.S. at 554-56. But
unlike Rule 8(a)(2) (and Rule 8(a)(1), which requires
“a short and plain statement” of the basis for
the court's jurisdiction), Rule 8(a)(3) requires only a
“demand for the relief sought.” The fact that
Rule 8(a)(3) conspicuously omits the requirement for “a
short and plain statement” indicates that a conclusory
pleading of the demand will suffice. Accord Martinez,
2017 WL 1040743, at *10.
owner of copyright or of any exclusive right in the work may
obtain registration of the copyright claim by delivering to
the Copyright Office” a copy of the work, an
application for copyright registration, and the requisite
fee. 17 U.S.C. § 408(a). Although a copyright owner need
not submit a registration in order to enjoy the protections
of the Copyright Act, registration expands the remedies
available to the owner in the event of infringement. A
copyright owner is always “entitled to recover the
actual damages suffered by him or her as a result of the
infringement, and any profits of the infringer that are
attributable to the infringement” which are not taken
included in the damages calculation. Id. §
504(b). Registration generally makes the copyright owner
eligible to recover statutory damages (in lieu of actual
damages and restitution) and attorney's fees.
Id. §§ 504(c)(1), 505. But “no award
of statutory damages or of attorney's fees . . . shall be
made for . . . (1) any infringement of copyright in an
unpublished work commenced before the effective date of its
registration; or (2) any infringement of copyright commenced
after first publication of the work and before the effective
date of its registration, unless such registration is made
within three months after the first publication of the
work.” Id. § 412.
allege: (1) “Being Evil Has a Price” was
unpublished before it was used on Lucifer; (2)
Lucifer premiered on January 25, 2016 and continued
to run through April 2016; (3) Warner Bros. used an excerpt
of plaintiffs' recording at the beginning of nearly every
episode; (4) plaintiffs applied to register their copyright
in the recording on August 11, 2016; and (5) plaintiffs
applied to register the copyright in the underlying
composition on January 29, 2017. Compl. ¶¶ 20-21,
27, 32. These allegations establish that plaintiffs are not
eligible to recover statutory damages or attorney's fees.
At the time Lucifer premiered, “Being Evil Has
a Price” was an unpublished work. The infringement
commenced on the date of the premier, over seven months
before plaintiffs registered the copyright to the sound
recording. Because plaintiffs' allegations describe the
“infringement of copyright in an unpublished
work” that “commenced before the effective date
of its registration, ” plaintiffs may not recover
statutory damages or attorney's fees. 17 U.S.C. §
412(1); accord Martin v. Walt Disney Internet Grp.,
2010 WL 2634695, at *4 (S.D. Cal. June 30, 2010)
(“Section 412 bars recovery of attorney's fees and
[statutory] damages . . . because the photograph was
unpublished and unregistered . . . when Defendants infringed
on her copyright.”); Zito v. Steeplechase Films,
Inc., 267 F.Supp.2d 1022, 1026 (N.D. Cal. 2003)
(“if a work is unpublished and unregistered at the time
of infringement, no statutory damages or attorney's fees
are available despite the fact that the infringement itself
may involve the unauthorized distribution of a copyrighted
argue that dismissal of their demands for statutory damages
and attorney's fees is inappropriate because Warner Bros.
continued to use the excerpt as the theme music for
Lucifer after plaintiffs' registered their
copyright in this work. But the Ninth Circuit has held that
“infringement ‘commences' for the purposes of
§ 412 when the first act in a series of acts
constituting continuing infringement occurs.” Derek
Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 700-01
(9th Cir. 2008); see also Mason v. Montgomery Data,
Inc., 967 F.2d 135, 143 (5th Cir. 1992) (section 412
requires that “statutory damages be denied not only for
the particular infringement that a defendant commenced before
registration, but for all of that defendant's
infringements of a work if one of those infringements
commenced prior to registration”). Because Warner Bros.
first used the excerpt before plaintiffs registered that
copyright, it matters not whether Warner Bros. continued to
use it after plaintiffs obtained their registration.
April 27, 2017, plaintiffs filed a supplemental brief,
supported by a declaration, providing evidence that Warner
Bros. has exploited “a new and different edit” of
“Being Evil has a Price” to promote Germany's
edition of “Next Top Model.” Dkt. 30 at 3.
Plaintiffs argue that this infringement is “separate
and distinct” from the infringement in
Lucifer. Id. at 5. They contend that they
may be able to recover statutory damages and attorney's
fees in connection with this exploitation even if they cannot
obtain these remedies in connection with the use of their
recording in Lucifer. Id. They seek leave
to amend their complaint to include these new allegations.
April 28, 2017, defendants filed a response to
plaintiffs' supplement. Dkt. 31. Defendants argue that
plaintiffs cannot recover statutory damages or attorney's
fees based on the alleged infringement in Germany because
this infringement is either related to the Lucifer
infringement-in which case statutory damages and
attorney's fees are barred under Derek Andrew-or
distinct from the Lucifer infringement-in which case it would
not be actionable under U.S. copyright law. See Subafilms
Ltd. v. MGM-Pathe Comms. Co., 24 F.3d 1088, 1091 (9th
Cir. 1994); cf. L.A. News Service v. Reuters Television
Intern., Ltd., 149 F.3d 987, 992 ...