United States District Court, C.D. California
Jeffery R. Werner
Barcroft Media, Ltd.
PRESENT: HONORABLE JOHN F. WALTER, UNITED STATES DISTRICT
CIVIL MINUTES -- GENERAL
(IN CHAMBERS): ORDER DENYING BARCROFT MEDIA, LTD.'S
MOTION TO DISMISS PLAINTIFF'S FIRST AMENDED COMPLAINT
[Docket No. 46; filed 10/5/17]
October 5, 2017 Defendant Barcroft Media, Ltd.
(“Barcroft”) filed a Motion to Dismiss Plaintiff
Jeffery R. Werner's (“Plaintiff”) First
Amended Complaint (“FAC”). Plaintiff filed an
Opposition on October 16, 2017. On October 23, 2017,
Defendant filed a Reply. Pursuant to Rule 78 of the Federal
Rules of Civil Procedure and Local Rule 7-15, the Court found
the matter appropriate for submission on the papers without
oral argument. The matter was, therefore, removed from the
Court's November 6, 2017 hearing calendar and the parties
were given advance notice. After considering the moving,
opposing, and reply papers, and the arguments therein, the
Court rules as follows:
is a photographer who has built a successful career
investigating and researching unique subjects to photograph.
Because of the uniqueness of his portfolio, Plaintiff has
been able to successfully license his images. Plaintiff
relies on income generated from licensing his photographs to
make a living.
provides copyrighted images and videos to media clients
around the world. Barcroft is headquartered in the United
Kingdom (“UK”) and has offices in the United
States. In 2004, Plaintiff and Barcroft entered into an
agreement which granted Barcroft the right to license and
distribute Plaintiff's photographs only in the UK. In
late 2013, Plaintiff informed Barcroft that he would be
responsible for protecting his intellectual property and that
he would directly handle any issues involving infringement of
his copyrights without Barcroft's assistance.
March 10, 2009 and May 16, 2014, Plaintiff obtained valid
copyright registrations for the eight sets of photographs
that are at issue in this action. In 2015, Barcroft
discovered that Defendant Valnet, Inc.
(“Valnet”)-a Canadian company that distributes
images and video content through websites, YouTube, and
social media to millions of users-was using several of
Plaintiff's copyrighted photographs without
Plaintiff's permission. Valnet owns and operates
“theRICHEST” and “theTALKO” websites,
which exploit photographic and video content gathered from
the Internet by the company's employees and users. Both
“theRICHEST” and “theTALKO” have
associated YouTube channels, which also feature photographic
and video content.
to Plaintiff, Valnet initially infringed each of
Plaintiff's eight copyrights beginning sometime in 2015
by featuring his copyrighted photographs on its websites and
YouTube channels. Plaintiff also alleges that after Barcroft
discovered Valnet was using Plaintiff's photographs
without permission, Barcroft entered into a retroactive
license without informing Plaintiff of the license. In
addition, sometime thereafter, Barcroft and Valnet entered
into another agreement allowing Valnet to access
Barcroft's images and video content, which also included
April 6, 2017 Plaintiff filed this lawsuit against Barcroft
and Valnet asserting a direct copyright infringement claim
against Valnet and claims against Barcroft for contributory
copyright infringement and vicarious copyright infringement.
On August 15, 2017, Barcroft moved to dismiss Plaintiff's
claims pursuant to Federal Rule of Civil Procedure 12(b)(6).
On September 14, 2017, the Court granted Barcroft's
motion, but gave Plaintiff leave to amend. On September 25,
2017, Plaintiff filed a First Amended Complaint alleging a
direct copyright infringement claim against Valnet and claims
against Barcroft for contributory copyright infringement,
vicarious copyright infringement, breach of fiduciary duty,
and common count. Barcroft moves to dismiss Plaintiff's
FAC pursuant to Federal Rule of Civil Procedure 12(b)(6) and
for lack of subject matter jurisdiction.
motion to dismiss brought pursuant to Federal Rule of Civil
Procedure 12(b)(6) tests the legal sufficiency of the claims
asserted in the complaint. “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.'” Summit Tech., Inc. v. High-Line Med.
Instruments Co., Inc., 922 F.Supp. 299, 304 (C.D. Cal.
1996) (quoting Balistreri v. Pacifica Police Dept.,
901 F.2d 696, 699 (9th Cir. 1988)). However, “[w]hile a
complaint attacked by a Rule 12(b)(6) motion to dismiss does
not need detailed factual allegations, a plaintiff's
obligation to provide the ‘grounds' of his
‘entitlement to relief' requires more than labels
and conclusions, and a formulaic recitation of the elements
of a cause of action will not do.” Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 555 (2007) (internal citations
and alterations omitted). “[F]actual allegations must
be enough to raise a right to relief above the speculative
deciding a motion to dismiss, a court must accept as true the
allegations of the complaint and must construe those
allegations in the light most favorable to the nonmoving
party. See, e.g., Wyler Summit P'ship v. Turner
Broad. Sys., Inc., 135 F.3d 658, 661 (9th Cir. 1998).
“However, a court need not accept as true unreasonable
inferences, unwarranted deductions of fact, or conclusory
legal allegations cast in the form of factual
allegations.” Summit Tech., 922 F.Supp. at 304
(citing W. Mining Council v. Watt, 643 F.2d 618, 624
(9th Cir. 1981) cert. denied, 454 U.S. 1031 (1981)).
a district court may not consider any material beyond the
pleadings in ruling on a Rule 12(b)(6) motion.” Hal
Roach Studios, Inc. v. Richard Feiner & Co., 896
F.2d 1542, 1555 n. 19 (9th Cir. 1990) (citations omitted).
However, a court may consider material which is properly
submitted as part of the complaint and matters which may be
judicially noticed pursuant to Federal Rule of Evidence 201
without converting the motion to dismiss into a motion for
summary judgment. See, e.g., id.; Branch v.
Tunnel, 14 F.3d 449, 454 (9th Cir. 1994).