United States District Court, N.D. California
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANTS' MOTIONS TO DISMISS RE: ECF NO. 36
TIGAR UNITED STATES DISTRICT JUDGE
before the Court are the consolidated motions to dismiss by
all the defendants in these three consolidated cases. The
Court will grant the motions in part and deny them in part.
action centers on the MOVA Contour Reality Capture Program
(“MOVA Contour” or “MOVA”), which -
as the name suggests - is a program for capturing the motion
of the human face to create images used in motion pictures.
Unlike previous motion capture technologies, the MOVA Contour
Program “precisely captures and tracks the 3D shape and
motion of a human face to sub-millimeter precision.”
No. 17-cv-04006 JST ECF No. 1 (“Disney Compl.”)
¶ 22; No. 17-cv-04191 JST ECF No. 1 (“Fox
Compl.”) ¶ 22; No. 17-cv-04192 JST ECF No. 1
(“Paramount Compl.”) ¶ 20. The MOVA Contour
system captures “an actor's performance
frame-by-frame, and then creates original Contour Program
output files based on the performance, frame-by-frame.”
Disney Compl. ¶ 27; Fox Compl. ¶ 27; Paramount
Compl. ¶ 25. The output files can be used for many
different applications, such as “retargeting” the
actor's face onto another real or fictional face. Disney
Compl. ¶ 33; Fox Compl. ¶ 36; Paramount Compl.
ways, this case is the successor to an earlier litigation
between Rearden ETC. Beginning in February
2015, Rearden LLC engaged in a dispute with Shenzhenshi
Haitiecheng Science and Technology Company
(“SHST”) over the ownership of the physical
equipment and intellectual property associated with the MOVA
technology. See Shenzhenshi, et al. v. Rearden, et
al., No. 15-CV-00797 JST, ECF No. 1 (N.D. Cal. Feb. 20,
2015). SHST is a Chinese entity associated with Digital
Domain 3.0 Inc. (“DD3”). See Shenzhenshi, et
al. v. Rearden, et al., No. 15-CV-00797 JST, ECF No. 427
(N.D. Cal. Aug. 11, 2017). On August 11, 2017, this Court
found that “VGH does not own the Mova Assets because
Rearden owns them.” See id. at 18.
Plaintiffs Rearden LLC and Rearden Mova LLC (collectively,
“Rearden”) bring suit against movie studios who
allegedly contracted with DD3 “to provide facial
performance capture services and output files made with the
patented MOVA Contour system and methods.” Disney
Compl. ¶ 93; Fox Compl. ¶ 95; Paramount Compl.
¶ 92. Rearden alleges that this technology was used in
major motion picture films including Beauty and the
Beast, Deadpool, and Terminator:
Genisys. Disney Compl. ¶ 105; Fox. Compl. ¶
111; Paramount Compl. ¶ 92.
REQUEST FOR JUDICIAL NOTICE
to Federal Rule of Evidence 201(b), “[t]he court may
judicially notice a fact that is not subject to reasonable
dispute because it: (1) is generally known within the trial
court's territorial jurisdiction; or (2) can be
accurately and readily determined from sources whose accuracy
cannot reasonably be questioned.” On a motion to
dismiss, the court may also “consider materials
incorporated into the complaint” when “the
complaint necessarily relies upon a document or the contents
of the document are alleged in a complaint, the
document's authenticity is not in question and there are
no disputed issues as to the document's relevance.”
Coto Settlement v. Eisenberg, 593 F.3d 1031, 1038
(9th Cir. 2010). This is true even if “the plaintiff
does not explicitly allege the contents of that document in
the complaint.” Knievel v. ESPN, 393 F.3d
1068, 1076 (9th Cir. 2005). The court “must take
judicial notice if a party requests it and the court is
supplied with the necessary information.” Fed.R.Evid.
201(c)(2). However, courts “cannot take judicial notice
of the contents of documents for the truth of the matters
asserted therein when the facts are disputed.” Cal.
Sportfishing Prot. All. v. Shiloh Grp., LLC, No.
16-CV-06499-DMR, 2017 WL 3136443, at *5 (N.D. Cal. July 24,
2017); see also Lee v. City of Los Angeles, 250 F.3d
668, 689-90 (9th Cir. 2001) (courts may not take judicial
notice of disputed facts stated in public records).
request the Court judicially notice ten exhibits that the
complaint incorporates by reference: (1) the March 27, 2013
letter; (2) the Beauty and the Beast motion picture
DVD/Blu-ray disc set containing a featurette titled
“Beauty of a Tale;” (3) an article with an
embedded video entitled “Watch the crazy way
‘Beauty and the Beast' turned Dan Stevens
into a monster”; (4) the Deadpool motion
picture DVD/Blu-ray disc set containing a featurette titled
“From Comics to Screen . . . to Screen: MAGIC!”;
(5) the Fantastic Four motion picture Blue-ray disc
containing a featurette titled “Powering up:
Superpowers of the Fantastic Four;” (6) an
article titled “Fantastic Five”; (7) the
Terminator: Genisys DVD/Blu-ray disc set containing
a featurette titled “Upgrades: VFX of Terminator
Genisys”; (8) an article titled
“Terminator Genisys: Sheldon Stopsack-VFX
Supervisor-MPC”; (9) a video titled
“Terminator Genisys: Creating a Fully Digital
Schwarzenegger”; and (10) a video titled “How
Benjamin Button Got His Face.” ECF No.
Rearden does not oppose these requests. The court will take
judicial notice of the materials included and referenced in
Exhibits 1 to 10.
complaint need not contain detailed factual allegations,
facts pleaded by a plaintiff must be “enough to raise a
right to relief above the speculative level.” Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). To
survive a Rule 12(b)(6) motion to dismiss, a complaint must
contain sufficient factual matter that, when accepted as
true, states a claim that is plausible on its face.
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
“A claim has facial plausibility when the plaintiff
pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the
misconduct alleged.” Id. While this standard
is not a probability requirement, “[w]here a complaint
pleads facts that are merely consistent with a
defendant's liability, it stops short of the line between
possibility and plausibility of entitlement to relief.”
Id. (internal quotation marks and citation omitted).
In determining whether a plaintiff has met this plausibility
standard, the Court must “accept all factual
allegations in the complaint as true and construe the
pleadings in the light most favorable” to the
plaintiff. Knievel, 393 F.3d at 1072. If the motion
to dismiss is granted, the court should grant leave to amend
“even if no request to amend the pleading was made,
unless it determines that the pleading could not possibly be
cured by the allegation of other facts.” Doe v.
United States, 58 F.3d 494, 497 (9th Cir. 1995)
(internal quotation marks and citation omitted).
establish copyright infringement Plaintiff must prove (1)
ownership of a copyright, and (2) copying of protectable
expression by Defendants. See Design Data Corp. v.
Unigate Enter., Inc., 847 F.3d 1169, 1173 (9th Cir.
2017). Defendants generally argue that Rearden's
copyright claims fail because Rearden “cannot show that
the copyright in the software program extends to the output
files; and even if it could, Rearden cannot show that the CG
characters or the movies are derivative works of the
film.” ECF No. 36 at 14. Rearden responds that it
plausibly alleges that the MOVA Contour program performs
substantially all the operations in creating the output and
that this is enough to plead a plausible claim that Rearden
is the author of the output. ECF No. 47 at 12-13. Rearden
also argues that the “complaint includes detailed
allegations explaining how the CG characters in
defendants' films, incorporate, and are therefore derived
from, the MOVA Contour program's outputs.”
Id. at 20.
Ninth Circuit recently acknowledged that some authorities
“suggest that the copyright protection afforded a
computer program may extend to the program's output if
the program ‘does the lion's share of the work'
in creating the output and the user's role is so
‘marginal' that the output reflects the
program's contents.” Design Data Corp. v.
Unigate Enter., Inc., 847 F.3d 1169, 1173 (9th Cir.
2017) (quoting Torah Soft Ltd. v. Drosnin, 136
F.Supp.2d 276, 283 (S.D.N.Y. 2001). The program at issue in
Design Data produced two and three dimensional
drawings and models of structural steel components and
generated files that contained information related to a
project. Design Data Corp. v. Unigate Enter., Inc.,
63 F.Supp.3d 1062, 1063-64 (N.D. Cal. 2014), aff'd in
part, rev'd in part, 847 F.3d 1169 (9th Cir. 2017).
The plaintiff argued that the program's copyright
extended to its outputs, including the files and images
generated by the program. Id. at 1067. The district
court held that the files and other documents produced by the
program are not covered by the copyright and that the
drawings might be copyrightable “but they are not
automatically entitled to protection as the output” of
the program. Id. at 1169.
appeal the Ninth Circuit left open the question of whether
copyright extends to a program's output. See id.
at 1173. (“Assuming, without deciding, that copyright
protection does so extend. . . .”). However, the Ninth
Circuit concluded that even if copyright protection could
extend to a program's output, the plaintiff did not
present evidence establishing that the program
“‘does the lion's share of the
work'…or that the user's input is
‘marginal.'” Id. (quoting Torah
Soft, 136 F.Supp.2d at 283).
Torah Soft, the software at issue created a matrix
in response to an end user's input of a particular term.
Torah Soft, 136 F.Supp.2d at 283. The Southern
District of New York found that the defendant-the
program's user-was not the author of the copyright.
Id. In its analysis, the court emphasized the
end-user's role in creating the matrix:
In addition, an end-user's role in creating a matrix is
marginal. Creating a matrix is unlike the creative process
used in many computer art programs, which permit an end-user
to create an original work of art in an electronic medium. It
is fair to say that users of such programs often supply the
lion's share of the creativity to create the screen
display. By contrast, an end-user of the Software merely
inputs a word or phrase which the Software searches for in
the Database. Thus, the Software does the lion's share of
the work. In short Drosin [the defendant] is not the author
of the matrixes.
argues that under Torah Soft, it has adequately
alleged that it owns the copyright in the MOVA Contour
program output. ECF No. 47 at 15. Assuming that a copyright
in a computer program may extend to its output, Rearden must
adequately plead that the MOVA Contour program does the
“lion's share” of the creating and that the
end-user's role in creating the final product is
“marginal.” See Torah Soft, 136
F.Supp.2d at 283. Defendants argue that “a person is
directing the performance of another person (the actor) to
make the various facial motions that determine the output.
ECF No. 36 at 17. They contend that “[t]he human
contribution to the expressive components of the output file
is substantial and performs the ‘lion's share of
the creativity' in the facial motion capture” and
that “[t]he human contribution cannot be deemed
‘marginal' in any sense.” Id.
Rearden argues that the allegations focus “on the MOVA
Contour program's generation of output . . ., which are
(1) distinct from the two-dimensional images of the
actors' performances captured by the MOVA Contour
cameras, (2) generated by the Contour program by synthesizing
the two dimensional camera captures into three-dimensional
Captured Surface and Tracking Mesh outputs after the
actors' performance and directors work-if any-is done,
and thus (3) created entirely by the MOVA Contour program
without any contribution from the actors or directors.”
ECF No. 47 at 17.
Court does not find it plausible that the MOVA Contour output
is created by the program without any substantial
contribution from the actors or directors. Unquestionably,
the MOVA program does a significant amount of work to
transform the two dimensional information captured on camera
into three dimensional Captured Surface and Tracking Mesh
outputs. But this cannot be enough, since all computer
programs take inputs and turn them into outputs. See
17 U.S.C. § 101 (“A ‘computer program'
is a set of statements or instructions to be used directly or
indirectly in a computer in order to bring about a certain
result.”). Here, Rearden must allege that the MOVA
program has done the “lion's share of the work,
” and in particular “the lion's share of the
creativity” in creating the outputs. See Torah
Soft, 136 F.Supp.2d at 283.
has not met this burden. Here, unlike in Torah Soft,
where the user merely inputs a word into the program, MOVA
Contour's user inputs a two dimensional camera capture
that may range from Dan Stevens' “facial
expressions of all the scenes we had done on previous
days” to the “subtle and dynamic motions
performed by the actor [Josh Brolin playing Thanos in
Guardians of the Galazy)” to “Brad Pitt's
44-year-old face.” Disney Compl. ¶¶ 2, 4, 36.
Defendants' role in creating the end-product is not so
‘marginal' that the output reflects the
program's contents.” See Design Data Corp,
847 F.3d at 1173 (internal citations omitted).
argues that the allegations “mention” an actor
but focus on the MOVA Contour's program's generation
of output that is distinct from any actor's performance
or directors' work. ECF No. 47 at 17. However, Plaintiffs
repeatedly acknowledge the actors' contributions
throughout the complaints. See, e.g.,
Disney Compl. ¶ 2 (“film's romantic hero, the
Beast, was a CG (computer graphics) character played by actor
Dan Stevens, with every human subtlety of his facial
performance carried through to the animal-like CG face of the
Beast by a unique Oscar-winning visual effects
(“VFX”) technology); Disney Compl. ¶ 35, Fox
Compl. ¶ 35, Paramount Compl. ¶ 33 (“For
example, if the performer's expression causes the cheeks
to bulge out from a smile, the 3D points on the mesh tracking
the cheek will bulge out in exactly the same 3D shape. If the
forehead furrows into wrinkles, then the 3D points on the
mesh tracking the forehead will furrow into wrinkles in
exactly the same 3D shape.); Disney Compl. ¶ 44, Fox
Compl. ¶ 45, Paramount Compl. ¶ 43
(“effectively, we ended up with a [Contour Program
output file] 3D database of everything Brad Pitt's face
is capable of doing); Fox Compl. ¶ 57 (“The four
photographs below are still frames of Contour Program output
or derivative thereof. The subtleties of the facial
expressions of the performer were precisely captured with the
Contour systems and methods and then retargeted to a CG face,
retaining the subtleties of the human
performance…”); Paramount Compl. ¶ 31, Fox
Compl. ¶ 33, Disney Compl. ¶ 33 (“The
performer provides her or his facial performance”);
Paramount Compl. ¶ 35, Fox Compl. ¶ 37, Disney
Compl. ¶ 37 (“The result is a 3D model of the face
of the second performer that is controlled by the motion of
the first performer's face).
Rearden has not alleged that the program “‘does
the lion's share of the work'. . . or that the
user's input is ‘marginal.'” See
Design Data Corp, 847 F.3d at 1173. Rearden has not
alleged ownership of the output. The Court dismisses the
copyright claims without prejudice.