United States District Court, N.D. California
ORDER GRANTING MOTION TO DISMISS RE: DKT. NO.
C. SPERO CHIEF MAGISTRATE JUDGE
Focal Point Films, LLC (“Focal Point”) and its
sole member Bryan Gibel (referred to collectively herein as
“Gibel”) bring a copyright action seeking a
declaratory judgment that Gibel is the sole author of a
documentary film called Sign My Name to Freedom (the
“Film”) that Defendant Arjot Sandhu also worked
on. Sandhu, in turn, has asserted a counterclaim seeking a
declaratory judgment that she is a co-author of the Film and
owns an undivided interest in the copyright of the Film, as
well as other related counterclaims. Presently before the
Court is Gibel's Motion to Dismiss
Defendant/Counter-Plaintiff's Counterclaims in Part
(“Motion”). A hearing on the Motion was held on
December 6, 2019. For the reasons stated below, the Motion is
alleges in the Complaint that he is a “director,
producer, editor and cinematographer” with a masters
degree from the UC Berkeley Graduate School of Journalism
documentary film program. Complaint ¶ 10. He founded
Focal Point in 2015. Id. According to Gibel, in 2016
he met Betty Reid Soskin, “a 94-year old African
American woman who entered the public spotlight when she
became the oldest National Park Ranger serving in the United
States.” Id. ¶ 11. Gibel alleges he set
out to create a documentary film about Soskin with
Soskin's cooperation. Id. ¶ 12. Gibel
alleges that “in March 2017, “[m]ore than a year
into the project, ” he met Sandhu at a documentary
filmmaker workshop. Id. ¶ 15. When
Gibel told Sandhu about the Film, she asked if she could
assist on set; Gibel agreed and between April 2017 and
October 2017 Sandhu worked “as an extra camera operator
during a handful of shoots, always under Gibel's
supervision and with the understanding that Sandhu would be
compensated on partially deferred basis.” Id.
¶ 17. According to Gibel, beginning in November 2017
Sandhu began to help with fundraising for the Film.
Id. Gibel alleges that he offered Sandhu an
“Associate Producer” credit for this work.
Id. However, Gibel and Sandhu were unable to reach
agreement on a written contract setting forth their
arrangement, with Gibel rejecting draft agreements proposed
by Sandhu in November 2017 and August 2018 and Sandhu
rejecting a draft agreement proposed by Gibel in January
2018. Id. ¶¶ 18-23.
alleges that in November 2018 Sandhu snuck unauthorized
co-director and co-editor credits for herself into a
“pitch deck” for the film and that even after he
told Sandhu he was terminating her services she continued to
hold herself out as an authorized representative of the Film.
Id. ¶¶ 26-31. The Film has not been
completed and Gibel alleges that Sandhu's conduct is
“casting a cloud” over the Film and preventing
him from obtaining the financing needed to complete it.
Id. ¶ 2. In his Complaint, Gibel seeks a
declaratory judgment that “Focal Point is the sole
author of the Film, ” and that “the Film is not a
‘joint work' within the meaning of the Copyright
Act and Sandhu is not a joint author of the Film.”
Id. ¶¶ 42-43. Alternatively, Gibel asks
that the Court rule “ Sandhu's individual
contributions to the Film do not constitute a ‘work of
authorship' within the meaning of the Copyright Act to
which Sandhu holds any copyright interest.”
Id. . at ¶ 44.
First Amended Answer and Countercomplaint
First Amended Answer and Countercomplaint (the
“FACC”), Sandhu disputes Gibel's
characterization of her role in the Film's production and
asserts that she:
personally engaged in various forms of creative authorship,
including (among other things): conception, creative
direction, content selection, directing scenes, overseeing
the Film's production, supervising the work of editors,
filming scenes, editing footage, pitching the Film at film
festivals, and collaborating on all other aspects of the
Film's creation and promotion, including the overall arc
and direction of the Film.
FACC ¶ 12. She alleges that “Gibel publicly
represented that Ms. Sandhu was a coequal partner in the
creation of the Film in correspondence with third parties and
promotional materials for the Film, ” until the fall of
2018, when “Gibel began to dispute Ms. Sandhu's
credits on the Film and acted to exclude Ms. Sandhu from
further involvement with the Film.” Id. at
¶¶ 13-14. She alleges that Gibel wrongfully
“blocked Ms. Sandhu's access to the Film's
promotional material and social media, and removed Ms.
Sandhu's name from those materials, ” id.
at ¶ 38, “removed Ms. Sandhu's access to the
Google Drive location where they stored key documents for the
Film, ” id. at ¶ 39, and “blocked
Ms. Sandhu's access to grant funds jointly raised and
awarded to the project, ” id. at ¶ 40.
According to Sandhu, Gibel brought this action after she
refused to withdraw the Film from consideration at Hot Docs
Dealmaker Forum, a documentary event where Sandhu and Gibel
had been offered the opportunity to pitch the Film.
Id. at ¶¶ 43-47.
FACC, Sandhu asserts the following counterclaims: 1) a claim
for declaratory judgment under the Copyright Act, 28 U.S.C.
§ 2201; 2) unjust enrichment; 3) intentional
interference with prospective economic advantage; 4) false
advertising and unfair competition under the Lanham Act, 15
U.S.C. § 1125(a)(1)(B) (“the Lanham Act
counterclaim”); and 4) false advertising and unfair
competition under California's Unfair Competition Law,
Cal. Bus. & Prof. Code § 17200 (“the UCL
Motion, Gibel asks the Court to dismiss Sandhu's Lanham
Act and UCL counterclaims, as well as her counterclaim for
intentional interference with prospective economic advantage,
arguing that these counterclaims fail to state a claim upon
which relief can be granted pursuant to Rule 12(b)(6). Motion
at 1-2. Gibel argues that Sandhu's Lanham Act
counterclaim is barred by the Supreme Court's ruling in
Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23 (2003). He also contends this claim fails because
Sandhu has not alleged a required element of the claim,
namely, that she engaged in “commercial
advertising.” Id. Nor can Sandhu remedy this
defect by amendment, he contends, because the Film is still
in development and no commercial advertising has yet
occurred. Id. at 1. Gibel further asserts that
because the UCL claim is based on and coextensive with
Sandhu's Lanham Act counterclaim, the UCL counterclaim
must be dismissed for the same reasons. Id. at 2.
Gibel asserts that the counterclaim for intentional
interference with prospective economic advantage should be
dismissed because Sandhu has not alleged any conduct that is
independently wrongful, as is required under California law.
Id. Finally, Gibel contends the request for punitive
damages must be dismissed because Sandhu has not alleged that
Gibel acted with “oppression, fraud, or malice.”
Id. at 11-12.
Legal Standard Under Rule 12(b)(6)
complaint may be dismissed under Rule 12(b)(6) of the Federal
Rules of Civil Procedure for failure to state a claim on
which relief can be granted. “The purpose of a motion
to dismiss under Rule 12(b)(6) is to test the legal
sufficiency of the complaint.” N. Star Int'l v.
Ariz. Corp. Comm'n, 720 F.2d 578, 581 (9th Cir.
1983). Generally, a plaintiff's burden at the pleading
stage is relatively light. Rule 8(a) of the Federal Rules of
Civil Procedure states that a “pleading which sets
forth a claim for relief . . . shall contain . . . a short
and plain statement of the claim showing that the pleader is
entitled to relief.” Fed.R.Civ.P. 8(a).
ruling on a motion to dismiss under Rule 12(b)(6), the court
analyzes the complaint and takes “all allegations of
material fact as true and construe[s] them in the light most
favorable to the non-moving party.” Parks Sch. of
Bus. v. Symington, 51 F.3d 1480, 1484 (9th Cir. 1995).
Dismissal may be based on a lack of a cognizable legal theory
or on the absence of facts that would support a valid theory.
Balistreri v. Pacifica Police Dep't, 901 F.2d
696, 699 (9th Cir. 1990). A complaint must “contain
either direct or inferential allegations respecting all the
material elements necessary to sustain recovery under some
viable legal theory.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 562 (2007) (citing Car
Carriers, Inc. v. Ford Motor Co., 745 F.2d 1101, 1106
(7th Cir. 1984)). “A pleading that offers ‘labels
and conclusions' or ‘a formulaic recitation of the
elements of a cause of action will not do.'”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Twombly, 550 U.S. at 555). “[C]ourts
‘are not bound to accept as true a legal conclusion
couched as a factual allegation.'”
Twombly, 550 U.S. at 555 (quoting Papasan v.
Allain, 478 U.S. 265, 286 (1986)). “Nor does a
complaint suffice if it tenders ‘naked
assertion[s]' devoid of ‘further factual
enhancement.'” Iqbal, 556 U.S. at 678
(quoting Twombly, 550 U.S. at 557) (alteration in
original). Rather, the claim must be “‘plausible
on its face, '” meaning that the plaintiff must
plead sufficient factual allegations to “allow the
court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.” Id.
(quoting Twombly, 550 U.S. at 570).
The Lanham Act, Dastar and
purpose of the trademark protections set forth in the Lanham
Act is to “avoid confusion in the marketplace by
allowing a trademark owner to prevent[ ] others from duping
consumers into buying a product they mistakenly believe is
sponsored by the trademark owner.” Mattel, Inc. v.
Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir.
2003) (internal quotations and citation omitted). The Lanham
Act achieves this objective by prohibiting false designation
of a good's origin under § 43(a)(1)(A) and false or
misleading commercial advertising about a good under §
43(a)(1)(B). Specifically, § 43(a)(1) provides as
1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any
word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading
representation of fact, which--
(A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of
his or her or another person's goods, services, or
shall be liable in a civil action by any person who believes
that he or she is or is likely to ...