United States District Court, N.D. California
ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO
DISMISS RE: DKT. NOS. 56, 60
HAYWOOD S. GILLIAM, JR., United States District Judge.
6, 2018, Plaintiff Kevin Barry Fine Art Associates
(“KBFAA”) brought this suit against Defendant Ken
Gangbar Studio Inc. (“KGSI”) for a declaratory
judgment of non-infringement. Dkt. No. 1
(“Compl.”). On August 7, 2018, KGSI submitted an
answer and counterclaims against not only KBFAA but also its
owner Kevin A. Barry, as well as John Johnson, Richard
McCormack, and Richard McCormack Design d/b/a Studio
McCormack (“Studio McCormack”), asserting
copyright infringement, as well as conspiracy to commit and
substantive violations of the Racketeer Influenced and
Corrupt Organizations Act (“RICO”), 18 U.S.C.
§§ 1961-1968. Dkt. No. 18 (“Answer &
before the Court are two motions to dismiss KGSI's
counterclaims. Counterclaim-Defendants Studio McCormack and
Mr. McCormack (collectively, “the McCormack
Counter-Defendants”) filed one motion, Dkt. No. 56
(“McCormack Mot.”); Counterclaim-Defendants
KBFAA, Mr. Barry, and Mr. Johnson (collectively, “the
KBFAA Counter-Defendants”) filed the other, Dkt. No. 60
(“KBFAA Mot.”). Briefing on these motions is
complete. See Dkt. Nos. 65 (“McCormack
Opp.”), 66 (“McCormack Reply”), 67
(“KBFAA Opp.”), 69 (“KBFAA Reply”).
Rule of Civil Procedure (“Rule”) 8(a) requires
that a complaint contain “a short and plain statement
of the claim showing that the pleader is entitled to
relief.” A defendant may move to dismiss a
complaint for failing to state a claim upon which relief can
be granted under Rule 12(b)(6). “Dismissal under Rule
12(b)(6) is appropriate only where the complaint lacks a
cognizable legal theory or sufficient facts to support a
cognizable legal theory.” Mendiondo v. Centinela
Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir. 2008). To
survive a Rule 12(b)(6) motion, a plaintiff must plead
“enough facts to state a claim to relief that is
plausible on its face.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). A claim is facially
plausible when a plaintiff pleads “factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
reviewing the plausibility of a complaint, courts
“accept factual allegations in the complaint as true
and construe the pleadings in the light most favorable to the
nonmoving party.” Manzarek, 519 F.3d at 1031.
Nonetheless, Courts do not “accept as true allegations
that are merely conclusory, unwarranted deductions of fact,
or unreasonable inferences.” In re Gilead Scis.
Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008). And
even where facts are accepted as true, “a plaintiff may
plead herself out of court” if she “plead[s]
facts which establish that [s]he cannot prevail on [her] . .
. claim.” Weisbuch v. Cnty. of L.A., 119 F.3d
778, 783 n.1 (9th Cir. 1997) (quotation marks and citation
the counter-defendants move to dismiss both KGSI's
copyright infringement claim and its civil RICO claims. The
Court addresses these claims separately.
argues that all counter-defendants “contributorily
and/or vicariously infringed KGSI's copyrights.”
Counterclaims ¶ 43. KGSI accuses the KBFAA
Counter-Defendants of physically crafting infringing works
and selling them without KGSI's authorization.
Id. ¶¶ 17-27. KGSI also accuses Mr. Barry
and KBFAA-but not Mr. Johnson-of creating digital renderings
that depict infringing copies of KGSI's copyrighted
works, which were used to support sales of infringing
sculptures. Id. at 28. And in at least one
instance, a KBFAA customer allegedly displayed such a
rendering on its website, to attract customers. Id.
The KBFAA Counter-Defendants move to dismiss KGSI's
infringement counterclaim for failure to state a claim of
infringement. See KBFAA Mot. at 4-12.
separately accuses the McCormack Counter-Defendants of
vicarious infringement for soliciting bids to commission an
infringing work, which Mr. Barry and his company KBFAA
secured. Counterclaims ¶ 23. These counter-defendants
move to dismiss KGSI's infringement counterclaim for
failure to plead facts demonstrating vicarious liability.
McCormack Mot. at 7-8. In other words, the McCormack
Counter-Defendants do not dispute at this stage that the
underlying commissioned work infringes KGSI's copyright;
rather, they dispute whether vicarious liability for the
infringement should extend to them.
KGSI Has Adequately Stated a Claim for Infringement Against
the KBFAA Counter-Defendants
state a claim for copyright infringement, KGSI must plausibly
allege that (1) KGSI owns valid copyrights in the relevant
works; and (2) the KBFAA Counter-Defendants copied protected
aspects of KGSI's valid copyrights. See Feist
Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361 (1991); Malibu Textiles, Inc. v. Label Lane
Int'l, Inc., 922 F.3d 946, 951 (9th Cir. 2019).
KGSI has plausibly alleged it owns valid copyrights in the
relevant sculptures: Star, Swish,
Palomar, and Fin Wave (collectively,
“KGSI Works”). KGSI alleges that Mr. Gangbar
created the KGSI Works and assigned all copyrights to Ken
Gangbar Studio Inc. Counterclaims ¶¶ 14-16. The
KGSI Works are undoubtedly subject to copyright protection,
as they are “fixed in [a] tangible medium of
expression.” 17 U.S.C. § 102(a); see also
Id. § 102(a)(5) (including “sculptural
works” as a category of copyright protectable work).
The KGSI Works are also “original work[s] of
authorship, ” given the several specific
“creative decisions” Mr. Gangbar made in crafting
them. See Rentmeester v. Nike, Inc., 883 F.3d 1111,
1117-18 (9th Cir. 2018); see also Satava v. Lowry,
323 F.3d 805, 810 (9th Cir. 2003) (explaining that “the
amount of creative input by the author required to meet the
originality standard is low”). Finally, KGSI alleges it
registered the KGSI Works with the Copyright Office, which is
generally a prerequisite for a civil copyright infringement
action. See Counterclaims ¶ 41 (noting
copyright registration numbers); 17 U.S.C. § 411(a)
(noting that, generally, “no civil action for
infringement of the copyright in any United States work shall
be instituted until preregistration or registration of the
copyright claim has been made in accordance with this
Copying Protected Aspects
Ninth Circuit recently explained, the second element itself
has two components: (1) copying, and (2) unlawful
appropriation. See Rentmeester, 883 F.3d at 1117.
The Court first finds that KGSI has pled facts sufficient to
create a presumption that the accused works (collectively,
“KBFAA Works”) were the result of copying. KGSI
alleges that before outright copying the KGSI Works, a KBFAA
associate emailed KGSI-attaching photographs of Mr.
Gangbar's sculptures, including Star-and asked
about commissioning a similar piece. Counterclaims
¶¶ 17-18. These alleged facts demonstrate “a
reasonable opportunity to view [the KGSI Works].”
Rentmeester, 883 F.3d at 1118 (quoting L.A.
Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841,
846 (9th Cir. 2012)). Such access, “combined with the
obvious conceptual similarities between” KGSI's and
KBFAA's Works, is enough to “create a presumption .
. . of copying rather than independent creation.”
next to unlawful appropriation, a copyright infringement
claim does not lie against a person who copies only
“ideas” or “concepts” of
another's original work. 17 U.S.C. § 102(b). An
infringing party must instead “copy enough of the
[other's] expression of those ideas or concepts to render
the two works ‘substantially similar.'”
Rentmeester, 833 F.3d at 1117 (citing Mattel,
Inc. v. MGA Entm't, Inc., 616 F.3d 904, 913-14 (9th
Ninth Circuit employs a two-part test to determine
substantial similarity: the “extrinsic test” and
the “intrinsic test.” Id. at 1118.
“At the pleading stage, this Court considers only the
extrinsic test.” See Malibu Textiles, Inc.,
922 F.3d at 952. The extrinsic test is an objective,
analytical inquiry between only the protectable elements of a
copyrighted work and the accused work. Id. This is
unlike the intrinsic test, which is “a more holistic,
subjective comparison of the works” that considers the
“total concept and feel.” Rentmeester,
833 F.3d at 1118 (quoting Cavalier v. Random House,
Inc., 297 F.3d 815, 822 (9th Cir. 2002)). Although a
party alleging infringement must ultimately prove substantial
similarity under both tests, only the extrinsic test involves
a matter of law subject to inquiry on a motion to dismiss.
See Christianson v. West Publ'g Co., 149 F.2d
202, 203 (9th Cir. 1945) (holding that a court may assess
substantial similarity on a motion to dismiss where
“the copyrighted work and the alleged infringement are
both before the court, capable of examination and
comparison”); Williams v. Gaye, 895 F.3d 1106,
1119 (9th Cir. 2018) (“[T]he intrinsic test is reserved
exclusively for the trier of fact.”). The extrinsic
test itself includes a two-step analysis. See Malibu
Textiles, Inc., 922 F.3d at 952.
Step One: Protectable Elements
“extrinsic test” first requires courts to
“filter out” unprotectable elements of the
copyrighted work and to determine the “breadth”
of copyright protection available for the protectable
elements. Id. The filtering-out process ensures
copyright protection does not extend to general
ideas-e.g. the idea of an animated mouse or an
animated animal wearing clothes-but covers the unique
expression of those ideas-e.g. Mickey Mouse. And
even if a work is solely comprised of unprotected elements,
copyright protection may extend to a sufficiently original
compilation or integration of those elements.
Rentmeester, 833 F.3d at 1119-20. For example,
although an author cannot claim copyright protection over
facts, a sufficiently original compilation of those facts is
within the subject matter of copyright. See Feist,
499 U.S. at 344-45. ...