Association For Information Mediat and Equipment et al v. The Regents of The University of California et al

Filing 27

NOTICE OF MOTION AND MOTION to Dismiss Case for Failure to State a Claim ( Motion set for hearing on 5/2/2011 at 11:00 AM before Judge Consuelo B. Marshall.), MOTION to Dismiss for Lack of Jurisdiction filed by defendants Gene Block(an individual), Sharon Farb, Larry Loeher, Patricia O'Donnell, The Regents of The University of California, Mark G Yudof. (Attachments: # 1 Proposed Order)(Slaughter, R)

1 KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
2 [e-mail]
R. JAMES SLAUGHTER - #192813
3 [e-mail]
MICHAEL S. KWUN - #198945
4 [e-mail]
ANDREW F. DAWSON - #264421
5 [e-mail]
710 Sansome Street
6 San Francisco, CA 94111-1704
T: 415-391-5400/F: 415-397-7188
7
JONATHAN BAND - #122369
8 [e-mail]
21 Dupont Circle NW, 8th Floor
9 Washington, DC 20036
T: 202-296-5675/F: 202-872-0884
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13 Attorneys for Defendants

CHARLES F. ROBINSON - #113197
[e-mail]
KAREN J. PETRULAKIS - #168732
[e-mail]
ERIC K. BEHRENS - #79440
[e-mail]
University of California
Office of the General Counsel
1111 Franklin Street, 8th Floor
Oakland, CA 94607-5200
T: 510-987-9800/F: 510-987-9757

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

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ASSOCIATION FOR INFORMATION
MEDIA AND EQUIPMENT, an
Illinois nonprofit membership
organization; and AMBROSE VIDEO
PUBLISHING, INC., a New York
corporation,
Plaintiffs,
v.
THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a
California corporation; MARK G.
YUDOF, an individual; DR. GENE
BLOCK, CHANCELLOR OF THE
UNIVERSITY OF CALIFORNIA,
LOS ANGELES, an individual; DR.
SHARON FARB, an individual;
LARRY LOEHER, an individual;
PATRICIA O’DONNELL, an
individual; and John Does 1-50,
Defendants.

Case No. 10-cv-09378 CBM (MANx)
NOTICE OF MOTION AND
MOTION TO DISMISS AMENDED
COMPLAINT FOR LACK OF
SUBJECT MATTER
JURISDICTION AND FAILURE TO
STATE A CLAIM;
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT
THEREOF
Date:
Time:
Dept:
Judge:

May 2, 2011
11:00 a.m.
Courtroom 2
Hon. Consuelo B. Marshall

Date Comp. Filed: December 7, 2010

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545651.03

MOTION TO DISMISS AMENDED COMPLAINT
CASE NO. 10-cv-09378 CBM (MANx)

1

NOTICE OF MOTION AND MOTION TO DISMISS

2

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

3

Please take notice that on May 2, 2011, at 11:00 a.m., or as soon thereafter

4 as the matter may be heard in Courtroom 2 of the United States District Court, 312
5 North Spring St., Los Angeles, California 90012, Defendants will and hereby do
6 move this Court to dismiss Plaintiffs’ Amended Complaint because of a lack of
7 subject matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1) and for
8 failure to state a claim upon which relief may be granted under Federal Rule of
9 Civil Procedure 12(b)(6). This Motion is based on the Notice of Motion, the
10 Memorandum of Points and Authorities in Support Thereof, the Proposed Order,
11 all pleadings and papers filed herein, the oral argument of counsel, and any other
12 matter that may be submitted at the hearing.
13

This motion is made following the conference of counsel pursuant to Local

14 Rule 7-3, which took place on March 9, 2011.
15
16 Dated: March 14, 2011

KEKER & VAN NEST LLP

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By: /s/ R. James Slaughter
R. JAMES SLAUGHTER
Attorneys for Defendants
THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a
California corporation; MARK G.
YUDOF, an individual; DR. GENE
BLOCK, CHANCELLOR OF THE
UNIVERSITY OF CALIFORNIA,
LOS ANGELES, an individual; DR.
SHARON FARB, an individual;
LARRY LOEHER, an individual;
PATRICIA O’DONNELL, an
individual.

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545651.03

MOTION TO DISMISS AMENDED COMPLAINT
CASE NO. 10-cv-09378 CBM (MANx)

TABLE OF CONTENTS

1
2
3 I.

INTRODUCTION........................................................................................... 1

4 II.

FACTUAL ALLEGATIONS.......................................................................... 4

5 III.

ARGUMENT .................................................................................................. 5

6

A.

Defendants Are Immune From Suit...................................................... 5
1.

8

Claims for damages against The Regents and the
individual defendants in their official capacities
must be dismissed. ...................................................................... 5

9

a.

A state’s waiver of sovereign immunity
must be express and unambiguous, and
cannot be implied. ............................................................ 5

b.

Congress’s attempt to abrogate state
sovereign immunity for claims of copyright
infringement is invalid. .................................................... 7

7

10
11
12
2.

13
14
15
16
17
18

Claims for injunctive relief as to President Yudof
and Dr. Block must be dismissed because the
Complaint fails to allege any facts as to their
involvement in the events alleged. ............................................. 9

B.

Defendants Are Entitled to Qualified Immunity as to
Copyright Claims Asserted Against Them in Their
Individual Capacities. ......................................................................... 11

C.

AIME Has No Standing to Sue Under the Declaratory
Judgment Act. ..................................................................................... 15

19

1.

AIME cannot establish associational standing. ........................ 15

20

2.

AIME has not suffered an injury in fact................................... 17

21
22
23
24
25
26

D.

Ambrose Cannot State a Claim for Copyright
Infringement........................................................................................ 18

E.

Ambrose Fails to State a Cause of Action Under the
DMCA................................................................................................. 20

F.

Ambrose’s Claims Under California State Law are
Preempted by the Copyright Act or are Otherwise Barred................. 21
1.

Ambrose’s unjust enrichment and tortious
interference claims are preempted............................................ 22

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MOTION TO DISMISS AMENDED COMPLAINT

2.

1
2
3
4

IV.

Ambrose’s breach of contract claims are
preempted because they seek recovery based on
the exclusive rights protected by the Copyright
Act............................................................................................. 23

CONCLUSION ............................................................................................. 24

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6
7
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MOTION TO DISMISS AMENDED COMPLAINT

1

TABLE OF AUTHORITIES

2

Federal Cases

v. Paramount Comm’n
3 Agee F.3d 317 (2d Cir. 1995)................................................................................... 19
59
4 Altera Corp. v. Clear Logic, Inc.
424 F.3d 1079 (9th Cir. 2005)........................................................................ 22, 24
5 Armstrong v. Meyers
964 F.2d 948 (9th Cir. 1991).................................................................................. 2
6
Ashcrof v. Iqbal
129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) .......................................................... 16
7
State Hosp. v.
8 Atascadero 234, 105 S. Ct.Scanlon L. Ed. 2d 171 (1985)................................... 6, 7
473 U.S.
3142, 87
9 B. Braun Medical, Inc. v. Abbott Labs.
124 F. 3d 1419 (Fed. Cir. 1997)........................................................................... 17
10 Bell Atl. Corp. v. Twombly
550 U.S. 544 (2007) ............................................................................................. 21
11
Brosseau v. Hagan
543 U.S. 194, 125 S. Ct. 596, 160 L. Ed. 2d 583 (2004)..................................... 12
12
13 Cahill v. Liberty Mut. Ins. Co.
80 F.3d 336 (9th Cir. 1996).................................................................................... 4
14 Chavez v. Arte Publico Press
204 F.3d 601 (5th Cir. 2000).............................................................................. 8, 9
15 Chavez v. Arte Publico Press
59 F.3d 539 (5th Cir. 1995).................................................................................. 15
16
City of Boerne v. Flores
521 U.S. 507, 117 S. Ct. 2157, 138 L. Ed. 2d 624 (1997)..................................... 8
17
18 College Sav. Bank v. Fla. Prepaid Postsecondary Educ.
Expense Bd.
527 U.S. 666, 119 S. Ct. 2219, 144 L. Ed. 2d 605 (1999)................................. 6, 8
19
Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc.
109 F.3d 1394 (9th Cir. 1997).............................................................................. 14
20
Jordan
21 Edelman v. 651, 94 S. Ct. 1347, 39 L. Ed. 2d 662 (1974)......................................... 9
415 U.S.
22 Employees of Dep’t of Pub. Health & Welfare v. Mo. Pub.
Health Dep’t
411 U.S. 279, 93 S. Ct. 1614, 36 L. Ed. 2d 251 (1973)......................................... 5
23
parte Young
24 Ex209 U.S. 123, 28 S. Ct. 441, 52 L. Ed. 714 (1908).................................... 9, 10, 11
25 Falcon Enters., Inc. v. Nobel Developments, Inc.
CV06-1404, 2007 WL 737347 (W.D. Wash. Mar. 5, 2007) ............................... 22
26 Fla. Dept. of Health & Rehab. Servs. v. Fla. Nursing Home
Ass’n
27
450 U.S. 147, 101 S. Ct. 1032, 67 L. Ed. 2d 132 (1981)................................... 6, 7
28
iii
MOTION TO DISMISS AMENDED COMPLAINT

1 Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Sav.
Bank
527 U.S. 627, 119 S. Ct. 2199, 144 L. Ed. 2d 575 (1999)................................. 8, 9
2
v. Mansour
3 Green U.S. 64, 106 S. Ct. 423, 88 L. Ed. 2d 371 (1985)........................................... 5
474
4 Harlow v. Fitzgerald
457 U.S. 800, 102 S. Ct. 2727, 73 L. Ed. 2d 396 (1982)............................... 12, 15
5 Harper & Row v. Nation Enters.
471 U.S. 539, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985)..................................... 13
6
Hunt v. Washington State Apple Advertising Commission
432 U.S. 333, 343, 97 S. Ct. 2434, 53 L. Ed. 2d 383 (1977)............................... 15
7
8 Hunter v. Bryant112 S. Ct. 534, 116 L. Ed. 2d 589 (1991)..................................... 12
502 U.S. 224,
9 Jackson v. Hayakawa
682 F.2d 1344 (9th Cir. 1982)................................................................................ 5
10 Jacobsen v. Katzer
609 F. Supp. 2d 925 (N.D. Cal. 2009) ................................................................. 24
11
Kennecott Copper Corp. v. State Tax Comm’n
327 U.S. 573, 66 S. Ct. 745, 90 L. Ed. 2d 862 (1946)....................................... 6, 7
12
v. Parsons Corp.
13 Kerby C06-687, 2007 WL 2570248 (W.D. Wash. Aug. 31,
No.
2007)..................................................................................................................... 17
14
Los Angeles Cnty. Bar Ass’n v. Eu
979 F.2d 697 (9th Cir. 1992)................................................................................ 11
15
16 Marketing Info. Masters, Inc. v. Bd. of Trustees of the Cal. State
Univ. Sys.
552 F. Supp. 2d 1088 (S.D. Cal. 2008).......................................................... 5, 8, 9
17
Montz v. Pilgrim Films & Tel., Inc.
606 F.3d 1153 (9th Cir. 2010).............................................................................. 24
18
19 Nat’l Assoc. of Bds. of Pharmacy v. Bd. of Regents of the Univ.
Sys. of Ga.
No. 08-13417, 2011 WL 649951 (11th Cir. Feb. 24, 2011) .............................. 8, 9
20
Nat’l Car Rental v. Computer Ass’n
991 F.2d 426 (8th Cir. 1993)................................................................................ 24
21
22 Oldcastle Precast, Inc. v. Granite Precasting & Concrete, Inc.
No. C10-322, 2010 WL 2217910 (W.D. Wash. June 1, 2010)...................... 22, 23
23 Pearson v. Callahan
129 S. Ct. 808, 172 L. Ed. 2d 565 (2009) ............................................................ 12
24 Pennhurst State Sch. & Hosp. v. Halderman
465 U.S. 89, 104 S. Ct. 900, 79 L. Ed. 2d 67 (1984)......................................... 5, 9
25
Pennington Seed, Inc. v. Produce Exchange No. 299
457 F.3d 1334 (Fed. Cir. 2006)...................................................................... 10, 11
26
Amazon.com, Inc.
27 Perfect 10, Inc. v.(9th Cir. 2007).............................................................................. 19
508 F.3d 1146
28
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MOTION TO DISMISS AMENDED COMPLAINT

1 Principal Life Ins. Co. v. Robinson
394 F.3d 665 (9th Cir. 2005)................................................................................ 17
2 Saucier v. Katz
533 U.S. 194, 121 S. Ct. 2151, 150 L. Ed. 2d 272 (2001)................................... 12
3
Sega Enters. v. Accolade, Inc.
977 F.2d 1510 (9th Cir. 1993).............................................................................. 20
4
v. New
Cinema Corp.
5 SelbyF. Supp.Line1053 (S.D. Cal. 2000).................................................................. 23
96
2d
6 Seminole Tribe of Florida v. Florida
517 U.S. 44, 116 S. Ct. 1114, 134 L. Ed. 2d 252 (1996)....................................... 8
7 Sony Corp. of Am. v. Universal City Studios, Inc.
464 U.S. 417, 104 S. Ct. 774, 78 L. Ed. 2d 574 (1984)....................................... 14
8
Spann v. Colonial Village, Inc.
899 F.2d 24 (D.C. Cir. 1990) ............................................................................... 18
9
Records,
10 Sybersound1137 (9th Inc. v. UAC Corp.
517 F.3d
Cir. 2008).............................................................................. 16
11 Thompson v. Ill. Dept. of Prof. Regulation
300 F.3d 750 (7th Cir. 2002).................................................................................. 4
12 Univ. of Houston v. Chavez
517 U.S. 1184, 116 S. Ct. 1667, 134 L. Ed. 2d 772 (1996)................................. 15
13
Walker v. City of Lakewood
272 F.3d 1114 (9th Cir. 2001).............................................................................. 18
14
God v. Philadelphia Church of God, Inc.
15 Worldwide Church of Cir. 2000).............................................................................. 19
227 F.3d 1110 (9th
16 Zito v. Steeplechase Films, Inc.
267 F. Supp. 2d 1022 (N.D. Cal. 2003) ............................................................... 22
17
State Cases
Sec. Pac. Bus. Credit, Inc.
19 Careau & Co. v. 3d 1371 (1990).............................................................................. 24
222 Cal. App.
20 Minor v. Minor
184 Cal. App. 2d 118 (1960)................................................................................ 23
21
18

22
23
24
25
26
27

Federal Statutes
17 U.S.C. § 101........................................................................................................ 19
17 U.S.C. § 106(3)................................................................................................... 19
17 U.S.C. § 107.................................................................................................. 13, 15
17 U.S.C. § 501(b)................................................................................................... 17
17 U.S.C. § 511...................................................................................................... 8, 9
17 U.S.C. § 1201................................................................................................ 20, 21

28
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MOTION TO DISMISS AMENDED COMPLAINT

State Statutes
2 California Government Code § 820.2 ........................................................... 4, 21, 25
1

3

Constitutional Provisions
4 Eleventh Amendment ........................................................................................ passim
5 Fourteenth Amendment ............................................................................................. 8
6

Other Authorities
7 H.R. Rep. No. 94-1476 (1976) ................................................................................ 13
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
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MOTION TO DISMISS AMENDED COMPLAINT

1
2
3

MEMORANDUM OF POINTS AND AUTHORITIES
I.

INTRODUCTION

Plaintiffs filed their initial complaint on December 7, 2010, and alleged six

4 causes of action. See Doc. 1. Plaintiffs seek to impose liability for the streaming
5 of lawfully purchased video content in The University of California, Los Angeles’s
6 (“UCLA”) instructional development media lab and in its physical and virtual
7 classrooms. Plaintiffs brought this suit even though such use is directly related to
8 the pedagogical purposes of specific classes, is at the direction of the instructor of
9 record, is restricted to only those students enrolled in the specific class for which
10 the video was assigned, and is accessible only during the term of the class.
11

Plaintiffs’ initial complaint was fatally flawed for a number of independent

12 reasons. Among other problems, the original complaint asserted claims barred by
13 the Eleventh Amendment to the U.S. Constitution, failed to specify which plaintiff
14 brought which claims, alleged claims for which neither plaintiff had standing, sued
15 individual defendants who did not participate in any way in the events alleged, and
16 sought to assert rights under state law that are preempted by the Copyright Act.
17 Defendants therefore moved to dismiss the action. See Doc. 16.
18

Plaintiffs did not oppose Defendants’ motion, and instead filed an amended

19 complaint on February 14, 2011. See Doc. 19. But rather than cure the
20 deficiencies pointed out by Defendants’ motion, Plaintiffs have doubled down.
21 They now allege more claims, sue more individual defendants unconnected to the
22 underlying facts, and assert more preempted state-law causes of action. Rather
23 than drop the claims barred by the Eleventh Amendment, Plaintiffs instead attach
24 hundreds of pages of irrelevant exhibits that Plaintiffs claim reflect Defendants’
25 implied waiver of sovereign immunity, despite the fact that the Supreme Court has
26 rejected similar claims of implied waiver. Further, while Plaintiffs now recognize
27 that there is no such thing as associational standing in copyright infringement suits,
28 rather than drop the claim, Plaintiffs attempt to repackage the same infringement
545651.03

1
MOTION TO DISMISS AMENDED COMPLAINT

1 claim as a claim under the Declaratory Judgment Act. These amendments not only
2 fail to save Plaintiffs’ claims, they create new problems that require dismissal.
3

Plaintiffs’ Amended Complaint alleges nine causes of action against The

4 Regents of the University of California (“The Regents”)1; Mark G. Yudof
5 (“President Yudof”), Dr. Gene Block (“Dr. Block”), Dr. Sharon Farb, Larry
6 Loeher, and Patricia O’Donnell. Yudof is the President of the University of
7 California, and the other individual defendants are all current or former officials at
8 UCLA. The causes of action alleged are breach of contract, anticipatory breach of
9 contract, copyright infringement, declaratory relief, violation of the Digital
10 Millennium Copyright Act’s (“DMCA”) anti-circumvention provisions, breach of
11 the implied covenant of good faith and fair dealing, unjust enrichment, and tortious
12 interference with contract and prospective business relations.2
13

All claims must be dismissed. First, both The Regents and the individual

14 defendants in their official capacities are protected by the Eleventh Amendment.
15 Moreover, because the Complaint fails to allege a violation of clearly established
16 law, the individual defendants are protected by qualified immunity and cannot be
17 held personally liable for violations of federal law. Similarly, California exempts
18 public employees from personal liability under state law where the conduct
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545651.03

1

As the Amended Complaint’s caption reflects, The Regents of the University of
California is a California corporation. See also Armstrong v. Meyers, 964 F.2d
948, 949-50 (9th Cir. 1991) (noting that the Board of Regents is “a corporation
created by the California constitution”). Nevertheless, the Complaint elsewhere
purports to sue The Regents “in their individual capacities as members of the
Board of Regents.” Am. Compl. ¶ 1. These individuals have not been served, and
the Complaint does not allege that any particular member was involved in any of
the events alleged in the Complaint, nor does it name these individuals in the
caption. Indeed, it is hard to imagine how some board members—such as newly
elected Governor Jerry Brown—could plausibly have been involved. Accordingly,
the Complaint fails to allege any facts stating a plausible claim for relief as to any
particular member of the Board. This Motion therefore treats The Regents solely
as an official arm of the state. This Motion is filed only on behalf of those
defendants who have been served.
2
The Association for Information Media and Equipment (“AIME”) is the sole
plaintiff for the declaratory relief claim, and Ambrose Video Publishing, Inc.
(“Ambrose”), is the sole plaintiff for the remaining claims.
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MOTION TO DISMISS AMENDED COMPLAINT

1 challenged was a matter of discretion. Therefore, every claim against the
2 individual defendants in their individual capacities must also be dismissed.
3

Even if Defendants were not immune from suit, the Association for

4 Information Media and Equipment (“AIME”) lacks standing under Article III to
5 bring its claim for declaratory relief. And even if it had such constitutional
6 standing, its suit for declaratory relief is merely a suit for copyright infringement
7 repackaged in different terms. As Defendants pointed out in their first motion to
8 dismiss, AIME has no statutory standing to sue for infringement.
9

And while Ambrose may have standing to sue for copyright infringement, it

10 does not state a claim for copyright infringement. The attachments to its complaint
11 reflect that Defendants have the right to publicly perform the works in question.
12 Ambrose fails to adequately allege infringement of any other protected right, and
13 regardless, any such incidental infringement would be a non-infringing fair use.
14 Thus, Ambrose’s copyright claims fail for this independent reason.
15

The Complaint also fails to allege a plausible claim for violation of the

16 DMCA’s anti-circumvention provisions. Ambrose does not allege any facts
17 demonstrating that Defendants bypassed its access controls. To the contrary, the
18 Complaint alleges that UCLA had a license to access the content. Whether or not
19 that content was subsequently copied is irrelevant to a claim that an access control
20 was circumvented. Moreover, while Plaintiffs allege in a conclusory manner that
21 UCLA “trafficked” in forbidden anti-circumvention devices, the facts alleged do
22 not support such a conclusion. The DMCA claims must therefore be dismissed.
23

Additionally, Plaintiffs’ state-law causes of action are preempted by the

24 Copyright Act. These claims seek damages for conduct that is regulated
25 exclusively by the Copyright Act, and state law can neither expand nor diminish
26 those rights. Moreover, Ambrose’s factual allegations are insufficient to support
27 liability under state law. First, under California law, a party cannot be sued for
28 anticipatory breach of contract when the contract in question is unilateral. Second,
545651.03

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MOTION TO DISMISS AMENDED COMPLAINT

1 the individual defendants are all immune from liability pursuant to California
2 Government Code § 820.2. Claims against the individual defendants under state
3 law must be dismissed.
4

For all these reasons, the Amended Complaint must be dismissed. Because

5 Plaintiffs have already had the opportunity to cure the deficiencies of their
6 complaint and have failed to do so, dismissal should be with prejudice.
II.

7
8

FACTUAL ALLEGATIONS

While Plaintiffs’ complaint is lengthy, their theory of liability is simple:

9 Plaintiffs allege that UCLA has purchased a number of DVDs, and has been
10 improperly “streaming”3 the contents of these DVDs to faculty and students at
11 UCLA without Plaintiffs’ permission. See Amended Complaint (“Am. Compl.”)
12 ¶¶ 3-6, 41-45.4
13

Plaintiffs attached to the Amended Complaint a copy of the Ambrose video

14 catalogue, which they contend applies to UCLA’s purchases. Id., ex. 8. The
15 catalogue contains the following notice in bold print: “All purchases by schools
16 and libraries include public performance rights.” Id. (at p. 71 of Doc. 19-2).
17 Similarly, Exhibit 7 indicates that the listed purchase prices for Ambrose DVDs
18 “include public performance rights.” Id., ex. 7 at 4. Despite this unambiguous
19 license, the instant complaint alleges that UCLA’s streaming infringes Ambrose’s
20 exclusive public performance right. See id. ¶ 93.
21
22
23
24
25
26
27
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545651.03

3

“Streaming” is defined in the Amended Complaint as a process whereby video
content is “distributed in compressed form over the Internet.” Am. Compl. ¶ 42.
With streaming video, “the user does not have to wait to download an entire
program to begin viewing; rather, the compressed data is decompressed and
transmitted from a temporary file to a video display as a continuous ‘stream’ of
video files.” Id.
4
As they must for purposes of this motion, Defendants assume the truth of all
properly pleaded factual allegations in the Amended Complaint. See Cahill v.
Liberty Mut. Ins. Co., 80 F.3d 336, 337-38 (9th Cir. 1996). However, where an
exhibit attached to a complaint contradicts the assertions in the complaint, “the
exhibit trumps the allegations.” Thompson v. Ill. Dept. of Prof. Regulation, 300
F.3d 750, 754 (7th Cir. 2002) (quotation marks and citation omitted).
4
MOTION TO DISMISS AMENDED COMPLAINT

III.

1

ARGUMENT

2 A.

Defendants Are Immune From Suit.

3

1.

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20

Claims for damages against The Regents and the individual
defendants in their official capacities must be dismissed.

“[A]n unconsenting State is immune from suits brought in federal courts.”
Employees of Dep’t of Pub. Health & Welfare v. Mo. Pub. Health Dep’t, 411 U.S.
279, 280, 93 S. Ct. 1614, 36 L. Ed. 2d 251 (1973). “The Eleventh Amendment
bars a suit against state officials when the state is the real, substantial party in
interest.” Pennhurst State Sch. & Hosp. v. Halderman, 465 U.S. 89, 101, 104 S.
Ct. 900, 79 L. Ed. 2d 67 (1984) (quotation marks omitted). “Thus, the general rule
is that relief sought nominally against an officer is in fact against the sovereign if
the decree would operate against the latter.” Id. For this reason, “[s]tate sovereign
immunity extends to government officials that are sued for damages in their
official capacity.” Marketing Info. Masters, Inc. v. Bd. of Trustees of the Cal. State
Univ. Sys., 552 F. Supp. 2d 1088, 1095 (S.D. Cal. 2008).
Eleventh Amendment immunity applies unless the state consents to be sued
or Congress validly overrides the state’s immunity.5 See Green v. Mansour, 474
U.S. 64, 68, 106 S. Ct. 423, 88 L. Ed. 2d 371 (1985). Neither California nor The
Regents has consented to be sued, nor has Congress validly overridden California’s
immunity. Therefore, immunity applies.
a.

21
22

A state’s waiver of sovereign immunity must be express and
unambiguous, and cannot be implied.

Plaintiffs’ Amended Complaint includes new allegations and voluminous

23 exhibits purporting to reflect The Regents’ waiver of sovereign immunity. See
24 Am. Compl. ¶¶ 19-23, exs. 3-7. The “test for determining whether a State has
25

5

The Regents is an “arm of the state,” and therefore entitled to the protections of
26 the Eleventh Amendment. See Jackson v. Hayakawa, 682 F.2d 1344, 1350 (9th
Cir. 1982) (“[T]he University of California and the Board of Regents are
27 considered to be instrumentalities of the state for purposes of the Eleventh
Amendment.”).
28
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MOTION TO DISMISS AMENDED COMPLAINT

1 waived its immunity from federal-court jurisdiction is a stringent one.”
2 Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 241, 105 S. Ct. 3142, 87 L. Ed.
3 2d 171 (1985) (superseded by statute on other grounds). “Generally, we will find a
4 waiver either if the State voluntarily invokes our jurisdiction, or else if the State
5 makes a clear declaration that it intends to submit itself to our jurisdiction.”
6 College Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S.
7 666, 675-76, 119 S. Ct. 2219, 144 L. Ed. 2d 605 (1999) (quotation marks omitted;
8 emphasis added).
9

The Supreme Court has repeatedly declined to find such a “clear

10 declaration” absent unambiguous, unqualified, and explicit language. For
11 example, the Supreme Court has rejected a finding of waiver even where a state
12 has specifically authorized suits against it “in any court of competent jurisdiction.”
13 See Kennecott Copper Corp. v. State Tax Comm’n, 327 U.S. 573, 577-79, 66 S. Ct.
14 745, 90 L. Ed. 2d 862 (1946). Because the waiver did not specifically waive
15 immunity in federal court, it was ineffective. Id. at 580. Similarly, a state does not
16 consent to suit in federal court merely by stating its intention to “sue and be sued.”
17 Fla. Dept. of Health & Rehab. Servs. v. Fla. Nursing Home Ass’n, 450 U.S. 147,
18 149, 101 S. Ct. 1032, 67 L. Ed. 2d 132 (1981) (per curiam). This is so even where
19 the state entity “agreed explicitly to obey federal law . . . .” Id. at 150. More
20 recently, the Supreme Court clarified that state sovereign immunity cannot be
21 impliedly waived. See College Sav. Bank, 527 U.S. at 682 (noting that a waiver of
22 federal sovereign immunity must in all circumstances be express, and holding that
23 there is “no reason why the rule should be different with respect to state sovereign
24 immunity”).
25

Plaintiffs allege that the exhibits attached to the complaint reflect “an

26 express waiver of any claim to sovereign immunity with respect to Plaintiffs’
27 claims herein.” Id. ¶ 22. This is absurd. Neither the allegations in the complaint
28 nor the documents attached thereto mention federal court, let alone waive
545651.03

6
MOTION TO DISMISS AMENDED COMPLAINT

1 sovereign immunity. Plaintiffs point to the University of California’s commitment
2 to “uphold[ing] copyright law,” Am. Compl. ¶ 19, and various provisions of the
3 University’s Electronic Communications Policy that detail that commitment. But
4 the Supreme Court has already found that a promise to obey federal law does not
5 constitute a waiver of Eleventh Amendment immunity. See Fla. Dept. of Health,
6 450 U.S. at 150. Indeed, the Supreme Court found that such a promise, even when
7 coupled with the express consent to “sue and be sued,” did not waive immunity.
8 Id. at 149. Therefore, it cannot be that a bare commitment to uphold federal law,
9 without any reference to consent to be sued, amounts to such a waiver.
10

Plaintiffs also point to terms of the alleged license agreements and suggest

11 that these licenses “expressly waived any claim to sovereign immunity or qualified
12 immunity.” Am. Compl. ¶ 23. Nothing in the licenses suggests any waiver,
13 implicit or explicit. Both licenses, as alleged in the Amended Complaint, provide
14 that “[n]othing herein shall derogate from any rights of Ambrose . . . under the
15 United States Copyright Law.” That is not an express waiver of anything. The
16 Amended Complaint fails to explain how this could constitute an express waiver of
17 sovereign immunity. The language merely suggests that no other contractual term
18 in the agreement undermines Ambrose’s rights under Copyright Law. This has
19 nothing at all to do with a state’s consent to be sued in federal court.
20

Under College Savings Bank, Florida Department of Health, Atascadero,

21 and Kennecott, the Amended Complaint fails to allege facts indicating that
22 California has waived its sovereign immunity.
23
24
25
26
27
28
545651.03

b.

Congress’s attempt to abrogate state sovereign immunity
for claims of copyright infringement is invalid.

If a state has not waived its immunity, it is subject to suit only if Congress
has validly abrogated its immunity. In order to determine whether Congress has
done so, a court must look to two factors: “(1) whether Congress expressed a clear
intent to override the state’s immunity and (2) whether Congress acted pursuant to

7
MOTION TO DISMISS AMENDED COMPLAINT

1 a constitutional grant of authority.” Marketing Info., 552 F. Supp. 2d at 1092.
2

Congress has not attempted to abrogate California’s immunity as to the state

3 law claims. Moreover, as several courts have found, Congress’s attempt to
4 abrogate immunity as to claims brought under the Copyright Act, see 17 U.S.C.
5 § 511, is invalid. See Chavez v. Arte Publico Press, 204 F.3d 601, 604 (5th Cir.
6 2000); Nat’l Assoc. of Bds. of Pharmacy v. Bd. of Regents of the Univ. Sys. of Ga.,
7 No. 08-13417, 2011 WL 649951, at *12-19 (11th Cir. Feb. 24, 2011); Marketing
8 Info., 552 F. Supp. 2d at 1095.
9

Congress has no authority to abrogate sovereign immunity pursuant to its

10 Article I powers. Seminole Tribe of Florida v. Florida, 517 U.S. 44, 72-73, 116 S.
11 Ct. 1114, 134 L. Ed. 2d 252 (1996). Section 511, then, is constitutional only if
12 enacted pursuant to Congress’s enforcement powers under section 5 of the
13 Fourteenth Amendment. See id. at 59. Congress’s enforcement powers under the
14 Fourteenth Amendment, however, are limited to remedial measures. City of
15 Boerne v. Flores, 521 U.S. 507, 515-17, 117 S. Ct. 2157, 138 L. Ed. 2d 624
16 (1997). The Supreme Court has held that two analogous attempts to abrogate the
17 states’ immunity—for claims of patent and trademark infringement—were void as
18 outside the scope of Congress’s enforcement powers. See Fla. Prepaid
19 Postsecondary Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 119 S. Ct.
20 2199, 144 L. Ed. 2d 575 (1999) (holding invalid Congress’s attempt to abrogate
21 Eleventh Amendment immunity for patent infringement); College Sav. Bank, 527
22 U.S. 666 (same as to trademark infringement). For example, Congress’s attempt to
23 abrogate the Eleventh Amendment for patent claims was invalid because it did not
24 “respond to a history of ‘widespread and persisting deprivation of constitutional
25 rights’ of the sort Congress has faced in enacting proper prophylactic § 5
26 legislation.” Fla. Prepaid, 527 U.S. at 645 (quoting City of Boerne, 521 U.S. at
27 526).
28
545651.03

In contrast to the legislative history for the Patent Remedy Act, which
8
MOTION TO DISMISS AMENDED COMPLAINT

1 demonstrated Congress’s intent to rely on its Enforcement Clause powers,
2 Congress did not even attempt to invoke its Enforcement Clause powers in
3 enacting § 511. See Chavez v. Arte Publico Press, 204 F.3d 601, 604 (5th Cir.
4 2000). Moreover, far from suggesting a widespread practice of copyright
5 infringement by the states, the legislative history for § 511 suggests that copyright
6 infringement by the states is a relatively infrequent problem. See id. at 605-06.
7 Not surprisingly, then, every court to confront the issue has concluded that § 511
8 did not validly abrogate the Eleventh Amendment. See id. at 607; Nat’l Assoc. of
9 Bds. of Pharmacy v. Bd. of Regents of the Univ. Sys. of Ga., No. 08-13417, 2011
10 WL 649951, at *12-19 (11th Cir. Feb. 24, 2011); Marketing Info., 552 F. Supp. 2d
11 at 1095.
12

Therefore, the claims against The Regents and against the individual

13 defendants in their official capacities are impermissible suits against the State of
14 California.
2.

16

Claims for injunctive relief as to President Yudof and Dr. Block
must be dismissed because the Complaint fails to allege any facts
as to their involvement in the events alleged.

17

The only exception to Eleventh Amendment immunity was first recognized

15

18 by Ex parte Young, 209 U.S. 123, 28 S. Ct. 441, 52 L. Ed. 714 (1908). Under Ex
19 parte Young and its progeny, the Eleventh Amendment does not bar a suit against a
20 state official that seeks only prospective injunctive relief for that official’s
21 violation of federal law.6 See Edelman v. Jordan, 415 U.S. 651, 94 S. Ct. 1347, 39
22 L. Ed. 2d 662 (1974). However, a plaintiff cannot maintain a suit under Ex parte
23 Young simply by naming any official tangentially involved in an alleged violation
24 of federal law. The named official must be more than simply a supervisory
25

6

The Supreme Court has held that Ex parte Young applies only to violations of
26 federal law, not state law. See Pennhurst, 465 U.S. at 106 (“We conclude that
Young . . . [is] inapplicable in a suit against state officials on the basis of state
27 law.”). Therefore, Plaintiffs cannot seek prospective relief under Ex parte Young
for the state law claims.
28
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9
MOTION TO DISMISS AMENDED COMPLAINT

1 official. See Pennington Seed, Inc. v. Produce Exchange No. 299, 457 F.3d 1334,
2 1342 (Fed. Cir. 2006).
3

Plaintiffs’ requests for injunctive relief under the Copyright Act against

4 President Yudof and Dr. Block cannot be justified under Ex parte Young:7 “In
5 making an officer of the state a party defendant in a suit to enjoin the enforcement
6 of an act alleged to be unconstitutional, it is plain that such officer must have some
7 connection with the enforcement of the act, or else it is merely making him a party
8 as a representative of the state, and thereby attempting to make the state a party.”
9 Ex parte Young, 209 U.S. at 157. “When a violation of federal law is alleged . . .
10 the state official whose actions violate that law is the rightful party to the suit and
11 prospective injunctive relief can only be had against him.” Pennington Seed, 457
12 F.3d at 1342.
13

In the educational context, this forbids a suit against a university official

14 who has a general duty to supervise activities at the university. In Pennington
15 Seed, the Federal Circuit held that such a supervisor is not a proper defendant
16 under Ex parte Young:
17

Allegations that a state official directs a University’s patent policy are

18

insufficient to causally connect that state official to a violation of

19

federal patent law—i.e., patent infringement. A nexus between the

20

violation of federal law and the individual accused of violating that

21

law requires more than simply a broad general obligation to prevent a

22

violation; it requires an actual violation of federal law by that

23

individual. The fact that a University Official has a general, state-law

24

obligation to oversee a University’s patent policy does not give rise to

25

a violation of federal patent law.

26

7

To the extent the Amended Complaint properly names other officials subject to
27 an Ex parte Young claim, the claims fail for the substantive reasons discussed
below. See infra Parts III.C-III.E.
28
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10
MOTION TO DISMISS AMENDED COMPLAINT

1 Id. at 1342-43 (citations omitted).
2

Here, the Complaint does not allege that President Yudof or Dr. Block had

3 anything to do with the challenged streaming. They did not select which videos to
4 stream, determine the process by which they would be streamed, stream the videos,
5 or do anything to set up that streaming. Merely alleging that they are in some way
6 “in charge” is not sufficient to invoke Ex parte Young.8 See Los Angeles Cnty. Bar
7 Ass’n v. Eu, 979 F.2d 697, 704 (9th Cir. 1992) (“This connection [between
8 defendant and act] must be fairly direct; a generalized duty to enforce state law or
9 general supervisory power over the persons responsible for enforcing the
10 challenged provision will not subject an official to suit.”).
11

Because President Yudof and Dr. Block merely are alleged to have “general

12 supervisory power over the persons responsible for enforcing the challenged
13 provision,” Plaintiffs have failed to allege that they are proper parties under Ex
14 parte Young.
15 B.
16
17
18
19
20
21
22
23
24
25

Defendants Are Entitled to Qualified Immunity as to Copyright Claims
Asserted Against Them in Their Individual Capacities.
Sovereign immunity does not extend to suits against officials acting in their

individual capacities. However, “government officials performing discretionary
functions generally are shielded from liability for civil damages insofar as their
conduct does not violate clearly established statutory or constitutional rights of
which a reasonable person would have known.” Harlow v. Fitzgerald, 457 U.S.
800, 818, 102 S. Ct. 2727, 73 L. Ed. 2d 396 (1982). The Supreme Court has
repeatedly “stressed the importance of resolving immunity questions at the earliest
possible stage in litigation.” Pearson v. Callahan, 129 S. Ct. 808, 815, 172 L. Ed.
2d 565 (2009) (internal quotation marks and citation omitted). Because the
8

For the same reason, the claims asserted against President Yudof and Dr. Block
in their individual capacities must be dismissed. Because the Amended Complaint
27 fails to allege any facts as to their participation, it fails to allege any cause of
action.
28
26

545651.03

11
MOTION TO DISMISS AMENDED COMPLAINT

1 individual defendants are all entitled to qualified immunity, the claims against
2 them in their individual capacities must also be dismissed.
3

Qualified immunity can only be overcome if a reasonable official would

4 have known that the alleged conduct violated a clearly established right. See
5 Saucier v. Katz, 533 U.S. 194, 202, 121 S. Ct. 2151, 150 L. Ed. 2d 272 (2001),
6 receded from on other grounds by Pearson, 129 S. Ct. 808. To meet this burden,
7 “clearly established” law must give a public official “fair notice that her conduct
8 was unlawful.” Brosseau v. Hagan, 543 U.S. 194, 198, 125 S. Ct. 596, 160 L. Ed.
9 2d 583 (2004). This standard “gives ample room for mistaken judgments by
10 protecting all but the plainly incompetent or those who knowingly violate the law.”
11 Hunter v. Bryant, 502 U.S. 224, 229, 112 S. Ct. 534, 116 L. Ed. 2d 589 (1991)
12 (quotation marks omitted).
13

On the facts alleged, a “reasonable official” would not have believed the

14 alleged conduct to be actionable infringement. Indeed, as the exhibits to Plaintiffs’
15 complaint make plain, a reasonable official had good cause to believe the alleged
16 conduct to be authorized. Plaintiffs attach as Exhibit 8 to the Amended Complaint
17 Ambrose’s DVD Catalogue, which contains the following language in bold-faced
18 type: “All purchases by schools and libraries include public performance
19 rights.” Am. Compl., ex. 8 (at p. 71 of Doc. 19-2). Another exhibit indicates that
20 the prices of the Ambrose DVDs “include public performance rights.” Id., ex. 7, at
21 4. These are the very same rights at the heart of Ambrose’s claim for infringement.
22 See Am. Compl. ¶¶ 90-98. Given Ambrose’s own marketing material, a
23 reasonable official had good cause to believe public performances of the Ambrose
24 DVDs were explicitly authorized.
25

Even without this explicit right to publicly perform, Defendants’ conduct

26 qualifies as a fair use. Therefore, Defendants did not violate any right at all, let
27 alone a “clearly established” one. Section 107 of the Copyright Act provides that a
28 “fair use” of copyrighted materials is not infringement. It dictates that fair use,
545651.03

12
MOTION TO DISMISS AMENDED COMPLAINT

1 “including such use by reproduction in copies . . . for purposes such as . . .
2 teaching (including multiple copies for classroom use) . . . is not an infringement
3 of copyright.” 17 U.S.C. § 107 (emphasis added).
4

While § 107 codifies a special solicitude for uses in the educational context,

5 it does not list with precision which uses are, and which are not, “fair.” Instead,
6 § 107 requires the balancing of four factors:
7

(1) the purpose and character of the use, including whether such use is

8

of a commercial nature or is for nonprofit educational purposes;

9

(2) the nature of the copyrighted work;

10

(3) the amount and substantiality of the portion used in relation to the

11

copyrighted work as a whole; and

12

(4) the effect of the use upon the potential market for or value of the

13

copyrighted work.

14 17 U.S.C. § 107 (emphasis added).
15

Courts are required to balance these factors and apply an equitable rule of

16 reason to determine fair use. “[S]ince the doctrine is an equitable rule of reason,
17 no generally applicable definition is possible, and each case raising the question
18 must be decided on its own facts.” H.R. Rep. No. 94-1476, at 65-66 (1976); see
19 also Harper & Row v. Nation Enters., 471 U.S. 539, 560, 105 S. Ct. 2218, 85 L.
20 Ed. 2d 588 (1985) (noting that fair use is “an equitable rule of reason”).
21

Application of the fair use factors and consideration of the equities supports

22 a finding of fair use. As to the first factor, it is undeniable that UCLA’s use had a
23 nonprofit educational purpose. As the Complaint itself alleges, the streams were
24 “linked to course web pages and remotely accessed by students and faculty.” Am.
25 Compl. ¶ 6. The Ninth Circuit has held that the second factor, the nature of the
26 copyrighted work, “typically has not been terribly significant in the overall fair use
27 balancing.” Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d
28 1394, 1402 (9th Cir. 1997).
545651.03

13
MOTION TO DISMISS AMENDED COMPLAINT

1

While the third factor typically weighs against a party that copies an entire

2 work, the Supreme Court has concluded in the context of television broadcasts that
3 the recording of a motion picture so that it might be performed again at a different
4 time—so-called “time shifting”—constitutes fair use. See Sony Corp. of Am. v.
5 Universal City Studios, Inc., 464 U.S. 417, 448, 104 S. Ct. 774, 78 L. Ed. 2d 574
6 (1984) (in the television context, “timeshifting merely enables a viewer to see such
7 a work which he had been invited to witness in its entirety free of charge, [so] the
8 fact that the entire work is reproduced does not have its ordinary effect of
9 militating against a finding of fair use.” (citation omitted)). Similarly here,
10 UCLA’s streaming simply allows students who are authorized to view the DVDs
11 in class to “time shift” when and how they view the videos.
12

Finally, as to the last factor, the alleged use also had no effect on “the

13 potential market for or value of” the Ambrose DVDs. UCLA lawfully acquired the
14 DVDs in question, which gave instructors the right to perform the contents of those
15 DVDs in the classroom. Had streaming never been offered by UCLA, there is no
16 reason to conclude that Plaintiffs ever would have sold any more DVDs to UCLA,
17 or that UCLA would have purchased Ambrose’s own streaming service.
18 Additionally, the Complaint does not—and indeed cannot—allege that Plaintiffs
19 offered video streaming of the relevant content when UCLA acquired the Ambrose
20 DVDs.
21

Plaintiffs’ Complaint contains a legal argument that UCLA’s streaming is

22 not a fair use. Am. Compl. ¶¶ 72-76. No published opinion, however, adopts their
23 interpretation of § 107 as applied to video streaming in the educational context.
24 More importantly, even if Plaintiffs were correct on the law, the question of
25 qualified immunity turns on a different and more forgiving analysis. The
26 individual defendants are protected so long as a reasonable official would not have
27 known, at the time of the events alleged, that such streaming was clearly
28 established infringement.
545651.03

14
MOTION TO DISMISS AMENDED COMPLAINT

1

Since there is “no generally applicable definition” of fair use, and in light of

2 the fair use analysis above, the individual defendants at a minimum—and all that
3 need be shown for purposes of qualified immunity—did not have “fair notice” that
4 the use in question constituted copyright infringement. Hence, they are entitled to
5 qualified immunity as a matter of law. Harlow, 457 U.S. at 818; cf. Chavez v. Arte
6 Publico Press, 59 F.3d 539, 547-48 (5th Cir. 1995) (dismissing individual capacity
7 copyright claim on a motion to dismiss), remanded in part by Univ. of Houston v.
8 Chavez, 517 U.S. 1184, 116 S. Ct. 1667, 134 L. Ed. 2d 772 (1996).
9

Therefore, the infringement claims brought against the individual defendants

10 in their individual capacities must be dismissed.
11 C.

AIME Has No Standing to Sue Under the Declaratory Judgment Act.

12

Article III of the U.S. Constitution imposes minimum requirements for a

13 party to have standing to bring a lawsuit. AIME erroneously asserts that it has
14 standing both because it has “associational” standing on behalf of its members and
15 because it has standing in its own right. Am. Comp. ¶¶ 15-16. Both theories fail.
16

1.

AIME cannot establish associational standing.

17

In Hunt v. Washington State Apple Advertising Commission, the Supreme

18 Court identified three requirements for an association to bring suit on behalf of its
19 members:
20

(a) its members would otherwise have standing to sue in their own

21

right; (b) the interests it seeks to protect are germane to the

22

organization’s purpose; and (c) neither the claim asserted nor the

23

relief requested requires the participation of individual members in the

24

lawsuit.

25 432 U.S. 333, 343, 97 S. Ct. 2434, 53 L. Ed. 2d 383 (1977).
26

AIME fails the first and third requirements. Although the Complaint alleges

27 that AIME’s “members . . . have standing to sue on their own for infringement of
28 copyrights,” Am. Compl. ¶ 15, there are no factual allegations to support this legal
545651.03

15
MOTION TO DISMISS AMENDED COMPLAINT

1 conclusion. See Ashcrof v. Iqbal, 129 S. Ct. 1937, 1951, 173 L. Ed. 2d 868 (2009)
2 (conclusory allegations are “not entitled to be assumed true”). Indeed, only three
3 paragraphs of the Amended Complaint are devoted to AIME’s declaratory relief
4 claim, and those paragraphs consist of nothing more than conclusory assertions.
5 See Am. Compl. ¶¶ 99-101.
6

To establish that its members have standing to sue for infringement requires

7 allegations that AIME’s individual members own the necessary copyrights to the
8 works used by UCLA, and proof that those copyrights have been registered. This
9 necessarily requires participation of the individual AIME members, which means
10 that AIME cannot satisfy the third requirement for associational standing. The
11 declaratory judgment count requires an individualized inquiry into what copyrights
12 each AIME member owns that UCLA allegedly infringed, whether those
13 copyrights are valid, and the nature of any rights conveyed by those members to
14 UCLA when UCLA acquired copies of their works.
15

This analysis is not altered by the fact that AIME proceeds under the

16 Declaratory Judgment Act rather than the Copyright Act itself. Associational
17 standing is prohibited under the Copyright Act because “only copyright owners
18 and exclusive licensees of copyright may enforce a copyright or a license.”
19 Sybersound Records, Inc. v. UAC Corp., 517 F.3d 1137, 1144 (9th Cir. 2008); see
20 also 6 Patry on Copyright § 21:28 (2010) (“[A]ssociational standing is not
21 permitted under the Copyright Act, which expressly limits standing to legal or
22 beneficial owners of exclusive rights.”). AIME seeks to plead its way around
23 Congress’s explicit limitation of standing by suing instead for declaratory relief.
24 Such artful pleading, however, should not be permitted to override Congress’s
25 express limitation of standing.
26

Moreover, AIME seeks not just a declaration of rights, but a permanent

27 injunction. The Declaratory Judgment Act does not provide independent
28 substantive authority for injunctive relief, and a plaintiff seeking injunctive relief
545651.03

16
MOTION TO DISMISS AMENDED COMPLAINT

1 must satisfy the standing requirements of the Copyright Act. See B. Braun
2 Medical, Inc. v. Abbott Labs., 124 F. 3d 1419, 1428 (Fed. Cir. 1997) (Declaratory
3 Judgment Act “was not designed . . . to allow a declaratory judgment plaintiff to
4 avoid the requirements imposed by the substantive law as a predicate to obtaining
5 . . . relief”). Because AIME lacks standing to sue under the Copyright Act, its
6 claim for injunctive relief under the Declaratory Judgment Act must be dismissed.
7

Finally, a district court has “discretion in deciding whether to entertain an

8 action under [the] Declaratory Judgment Act.” Kerby v. Parsons Corp., No. C069 687, 2007 WL 2570248, at *3 (W.D. Wash. Aug. 31, 2007). The Ninth Circuit has
10 found a number of factors to be relevant to the exercise of this discretion, including
11 concerns of judicial administration, fairness and convenience to the litigants, and
12 the “availability and relative convenience of other remedies.” Principal Life Ins.
13 Co. v. Robinson, 394 F.3d 665, 672 (9th Cir. 2005). All these factors counsel in
14 favor of rejecting AIME’s claim.
15

First, the claim is nothing more than an attempted end run around

16 Congress’s limitation of standing under the Copyright Act, and would permit any
17 injured party to bring a de facto infringement action under the guise of declaratory
18 relief. This would undermine Congress’s intention for the regulation of copyrights.
19 See 17 U.S.C. § 501(b) (granting standing only to “[t]he legal or beneficial owner
20 of an exclusive right under a copyright”). Second, allowing such a camouflaged
21 infringement claim to proceed would impose needless procedural entanglements on
22 the Court and on Defendants, as any such suit would require extensive
23 participation of the non-party copyright owners themselves. Finally, an
24 independent and adequate remedy is available: if the copyright owners wish to file
25 suit, they can do so themselves. These factors all militate against this Court
26 exercising discretion to permit a declaratory judgment claim.
27
28
545651.03

2.

AIME has not suffered an injury in fact.

AIME also alleges that it “has a personal stake in the outcome of this
17
MOTION TO DISMISS AMENDED COMPLAINT

1 litigation, suffering injury in fact.” Am. Compl. ¶ 16. The Amended Complaint
2 identifies only one injury in fact: AIME claims to have “suffered from the
3 diversion of its resources to deal with the Defendants’ infringements of
4 [Ambrose’s] copyrighted works,” and “has been forced to spend much of its
5 limited resources directly addressing the problem created by the Defendants for the
6 educational video publishers.” Id. In other words, AIME claims that the costs of
7 this litigation constitute an injury in fact that grants it standing to sue.
8

It is well established, however, that expenses of litigation are not injuries in

9 fact for standing purposes. See Spann v. Colonial Village, Inc., 899 F.2d 24, 27
10 (D.C. Cir. 1990) (“An organization cannot, of course, manufacture the injury
11 necessary to maintain a suit from its expenditure of resources on that very suit.
12 Were the rule otherwise, any litigant could create injury in fact by bringing a case,
13 and Article III would present no real limitation.”); see also Walker v. City of
14 Lakewood, 272 F.3d 1114, 1124 n.3 (9th Cir. 2001) (agreeing with Spann). AIME
15 simply has no standing to sue on its own behalf and its suit must be dismissed.
16 D.

Ambrose Cannot State a Claim for Copyright Infringement.

17

Ambrose contends that UCLA’s practice of streaming the Ambrose DVDs

18 constitutes copyright infringement because Ambrose owns the exclusive right to
19 publicly perform these DVDs. Am. Compl. ¶¶ 57, 94. But Ambrose granted to
20 Defendants the explicit right to publicly perform the DVDs. See Am. Compl., ex.
21 8 (“All purchases by schools and libraries include public performance rights.”).
22 “The existence of a license creates an affirmative defense to a claim of copyright
23 infringement.” Worldwide Church of God v. Philadelphia Church of God, Inc.,
24 227 F.3d 1110, 1114 (9th Cir. 2000). Therefore, Defendants cannot infringe the
25 public performance right.
26

Ambrose’s claims of infringement of other exclusive rights are similarly

27 unavailing. First, Ambrose alleges that UCLA’s streaming infringes its public
28 display right under § 106. But the Copyright Act defines “display” of a motion
545651.03

18
MOTION TO DISMISS AMENDED COMPLAINT

1 picture narrowly, as the “show[ing] of individual images nonsequentially.” 17
2 U.S.C. § 101 (emphasis added). The Amended Complaint does not allege any
3 nonsequential display. Therefore, no claim for infringement of display rights can
4 stand. Next, Ambrose alleges that UCLA has infringed the right to distribute
5 copies of the work. The distribution right for a motion picture concerns only the
6 distribution of “copies” of the work. 17 U.S.C. § 106(3). The Copyright Act’s
7 definition of “copies” is limited to “material objects” in which a copy is “fixed.”
8 17 U.S.C. § 101. Section 101 further clarifies that for a copy to be “fixed,” it must
9 be “sufficiently permanent or stable to permit it to be perceived, reproduced, or
10 otherwise communicated for a period of more than a transitory duration.” Id.
11 (emphasis added). Nowhere in the Complaint is there any allegation that UCLA
12 has distributed infringing “material objects” to its students. While the videos may
13 be streamed using material objects, the only thing that is distributed is a secured
14 link that provides access to digital bits that can only be viewed for a transitory
15 period, and thus cannot infringe the distribution right. Cf. Agee v. Paramount
16 Comm’n, 59 F.3d 317, 325 (2d Cir. 1995) (“[D]istribution is generally thought to
17 require transmission of a ‘material object’ in which the sound recording is fixed
18 . . . .”). No claim for infringement of distribution rights can survive.
19

Finally, as to the allegation that unauthorized copies were made in the

20 streaming process, any such copy was a fair use. Because UCLA had the right to
21 publicly perform the Ambrose DVDs, Ninth Circuit law indicates that incidental
22 exercises of other exclusive rights are non-infringing fair uses. See Perfect 10, Inc.
23 v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (finding the creation of short24 term copy to be a fair use); Sega Enters. v. Accolade, Inc., 977 F.2d 1510 (9th Cir.
25 1993) (finding copying to be fair use because it furthered protected conduct).
26 Similarly here, given Defendants’ right to perform the Ambrose DVDs, incidental
27 copies made to permit more efficient use of such performance rights is not
28 infringement.
545651.03

19
MOTION TO DISMISS AMENDED COMPLAINT

1

In sum, because UCLA had authority to publicly perform the Ambrose

2 DVDs, it and its employees cannot be liable for infringement. Therefore, even if
3 Defendants were not immune to suit as discussed above, Ambrose has failed to
4 allege a cognizable claim for infringement.
5 E.

Ambrose Fails to State a Cause of Action Under the DMCA.

6

The fifth cause of action alleges a violation of the anti-circumvention

7 provisions of 17 U.S.C. § 1201. Again, Plaintiffs have failed to cure the fatal
8 deficiencies identified in Defendants’ first motion to dismiss.
9

First, Ambrose contends that Defendants have violated § 1201(a)(1)(A) by

10 “circumvent[ing] . . . technological measures that effectively control access to” its
11 DVDs. Am. Compl. ¶ 103. But the Amended Complaint is devoid of factual
12 allegations that such a measure was in fact circumvented. Indeed, according to the
13 Complaint itself, UCLA had a right to access the DVDs. Ambrose’s real
14 contention is that UCLA, after accessing the DVDs, unlawfully copied and
15 streamed their contents. But regardless of whether there was something wrongful
16 about what was done after the DVDs were lawfully accessed, such conduct does
17 not concern the unauthorized circumvention of a measure controlling “access.”
18 See Nimmer on Copyright § 12A.03[D][3] (“[A] person who engages in prohibited
19 usage of a copyrighted work to which he has lawful access does not fall afoul of
20 any provision of Section 1201.”).
21

Second, the Complaint similarly fails to allege facts supporting the inference

22 that Defendants have trafficked in devices that circumvent access controls in
23 violation of § 1201(a)(2), or devices that circumvent copy controls in violation of
24 § 1201(b). Am. Compl. ¶¶ 104-05. The only factual basis for Ambrose’s
25 trafficking claim is that UCLA allegedly “worked in close coordination” with the
26 company that makes Video Furnace, the product UCLA uses to prepare digital
27 copies of DVDs that can then be streamed digitally. Id. ¶ 60. According to
28 Ambrose, this “coordination” and UCLA’s “willingness to lend [its] name and
545651.03

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MOTION TO DISMISS AMENDED COMPLAINT

1 reputation to the marketing effort of” Video Furnace amounts to “trafficking” in
2 violation of § 1201(a)(2) and § 1201(b).9
3

Ambrose alleges no facts regarding the substance of UCLA’s supposed

4 assistance with the development of Video Furnace, and its leap from the alleged
5 fact of involvement in development to the legal conclusion of trafficking in the
6 finished device is unsupported. See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
7 (2007) (“a formulaic recitation of the elements of a cause of action will not do”).
8 The statutory language provides that, in order to be liable for trafficking, a person
9 must “manufacture, import, offer to the public, provide, or otherwise traffic in any
10 technology.” 17 U.S.C. § 1201(a)(2). The statute does not impose liability for the
11 use of a name in marketing, and no reasonable definition of “otherwise traffic” can
12 be stretched to encompass Defendants’ conduct.
13

Therefore, even if Defendants were not immune as discussed above,

14 Ambrose’s DMCA claim fails to state a claim and must therefore be dismissed.
15 F.
16
17
18
19
20
21
22
23
24

Ambrose’s Claims Under California State Law are Preempted by the
Copyright Act or are Otherwise Barred.10
“The Copyright Act specifically preempts ‘all legal or equitable rights that

are equivalent to any of the exclusive rights within the general scope of
copyright.’” Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1089 (9th Cir.
2005) (quoting 17 U.S.C. § 301(a)). A state-law claim is preempted “if: (1) the
work involved falls within the general subject matter of the Copyright Act as
specified by sections 102 and 103; and (2) the rights that the plaintiff asserts under
state law are equivalent to those protected by the Act in section 106.” Zito v.
Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1027 (N.D. Cal. 2003). In
9

Plaintiffs have been informed that UCLA did not, in fact, participate in any way
in the development of Video Furnace.
26 10 Even if the claims were not preempted, there can be no individual liability under
state law
the conduct
27 employeefor not liable foralleged. See Cal. Gov’t Code § 820.2 (“[A] public. . . was
is
an injury resulting from his act . . . where the act
the result of the exercise of the discretion vested in him, whether or not such
28 discretion be abused.”).
25

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MOTION TO DISMISS AMENDED COMPLAINT

1 addition to the various grounds for dismissal discussed above, Ambrose’s state-law
2 claims must be dismissed because they are preempted by the Copyright Act.
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
545651.03

1.

Ambrose’s unjust enrichment and tortious interference claims are
preempted.

“[C]laims for unjust enrichment are . . . generally preempted” by the
Copyright Act. Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1027 (N.D.
Cal. 2003). In Zito, the court explained that “where the unjust enrichment arises
from defendants’ unauthorized use of a copyrighted work,” there is no “extra
element” to bring the claim out from beneath the preemptive scope of the
Copyright Act. Id. Ambrose’s claim for unjust enrichment relies solely on
Defendants’ allegedly unauthorized use of the Ambrose DVDs. See Am. Compl.
¶¶ 113-15. Therefore, it is preempted.
Similarly, claims for tortious interference are preempted where they
“involve[] the essential elements of [a] Plaintiff’s Copyright Act claim.” Oldcastle
Precast, Inc. v. Granite Precasting & Concrete, Inc., No. C10-322, 2010 WL
2217910, at *3 (W.D. Wash. June 1, 2010). Even though tortious interference
claims require proof of elements not necessary to a claim for copyright
infringement, such extra elements “do[] not make the rights qualitatively
different,” as required to avoid preemption. Id.; see also Falcon Enters., Inc. v.
Nobel Developments, Inc., CV06-1404, 2007 WL 737347, at *3 (W.D. Wash. Mar.
5, 2007) (holding that where “the act of unauthorized publication . . . causes the
violation[,] . . . tortious interference claims are preempted.” (internal quotation
marks and citation omitted)).
Ambrose alleges that Defendants’ streaming of the works in question
constitutes both tortious interference with contract and tortious interference with
prospective business advantage. Both claims, however, “involve[] the essential
elements of [Ambrose’s] Copyright Act claim.” Oldcastle, 2010 WL 2217910, at
*3. For example, at paragraph 124, Ambrose alleges that by “streaming [Ambrose]

22
MOTION TO DISMISS AMENDED COMPLAINT

1 Shakespeare DVDs to faculty and students, . . . UCLA is depriving Plaintiffs of”
2 potential customers. Am. Compl. ¶ 124. The same conduct underlies Ambrose’s
3 claim for copyright infringement. See id. ¶ 94 (“Defendants’ copying and
4 streaming . . . constitute violations of Plaintiff [Ambrose’s] exclusive rights” under
5 the Copyright Act). Ambrose’s tortious interference claims are therefore
6 preempted.
2.

7
8
9

Ambrose’s breach of contract claims are preempted because they
seek recovery based on the exclusive rights protected by the
Copyright Act.11

The Copyright Act preempts claims for breach of contract where the contract

10 rights at issue are equivalent to rights regulated by the Copyright Act.12 The
11 preemption analysis depends on whether “the right in question is ‘infringed by the
12 mere act of reproduction, performance, distribution or display.’” Selby v. New
13 Line Cinema Corp., 96 F. Supp. 2d 1053, 1061 (S.D. Cal. 2000) (quoting Nat’l Car
14 Rental v. Computer Ass’n, 991 F.2d 426, 432-33 (8th Cir. 1993)). Prof. Nimmer
15 supports this approach:
16

[A]t times a breach of contract cause of action can serve as a

17

subterfuge to control nothing other than the reproduction, adaptation,

18

public distribution, etc. of works within the subject matter of

19

copyright. . . . To the extent such a contract is determined to be

20

binding under state law, then that law may be attempting to vindicate

21

rights indistinguishable from those accorded by the Copyright Act.

22

Under that scenario, the subject contract cause of action should be

23

deemed pre-empted.

24

11

Ambrose alleges that a contract limits UCLA’s rights, but discovery will show
25 that UCLA purchased the DVDs without restriction. And as explained below,
even if such a contract did exist, its enforcement is preempted.
26 12 Ambrose’s claim for anticipatory breach is barred for an independent reason.
under the contract, the contract is now
27 Because Ambrose has discharged itsaduties may not bring an anticipatory breach
“unilateral.” Under California law, party
28 claim where the contract at issue has become unilateral. See Minor v. Minor, 184
Cal. App. 2d 118, 123 (1960).
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MOTION TO DISMISS AMENDED COMPLAINT

1 Nimmer on Copyright § 1.01[B][1][a][iii].
2

Although the Ninth Circuit has not squarely considered the issue, it has

3 endorsed the distinction between contracts that control “use” of a copyrighted
4 work, which are not preempted, and contracts that control rights equivalent to the
5 exclusive rights under copyright law, which are preempted. See Altera Corp., 424
6 F.3d at 1089 (distinguishing between a contract that controls the use of a work and
7 a contract that controls reproduction); cf. Montz v. Pilgrim Films & Tel., Inc., 606
8 F.3d 1153, 1158 (9th Cir. 2010) (finding a claim for breach of implied contract to
9 be “part and parcel of a copyright claim,” and therefore preempted by the
10 Copyright Act). Other circuits have endorsed the same distinction. See, e.g., Nat’l
11 Car Rental, 991 F.2d at 432 (8th Circuit).
12

Ambrose’s contract claim seeks to control rights equivalent to those under

13 copyright law.13 Its entire claim is premised on allegations that UCLA copied,
14 performed, and distributed the Ambrose DVDs. The rights to copy, perform, and
15 distribute copyrighted works are core rights under the Copyright Act, and therefore
16 cannot be remedied via contract law. See, e.g., Jacobsen v. Katzer, 609 F. Supp.
17 2d 925, 933 (N.D. Cal. 2009). Plaintiffs’ claims for breach of contract and
18 anticipatory breach of contract must therefore be dismissed.
IV.

19
20

CONCLUSION

Plaintiffs have failed to allege any viable cause of action. Plaintiffs

21 improperly ask this Court to issue a judgment against an agency of a sovereign
22 state in contravention of the Eleventh Amendment. The Amended Complaint also
23 improperly seeks civil damages from government officials despite their entitlement
24 to qualified immunity and protection under California Government Code § 820.2.
25

13

Because Plaintiffs’ claim for breach of the implied covenant of good faith and
26 fair dealing challenges the identical conduct, it too is preempted. In any event,
where a claim for breach of the implied covenant of good faith relies on the same
27 allegations as a claim for breach of contract, the good faith claim must fail.
Careau & Co. v. Sec. Pac. Bus. Credit, Inc., 222 Cal. App. 3d 1371, 1394-95
28 (1990).
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MOTION TO DISMISS AMENDED COMPLAINT

1

Not only are Defendants immune, but AIME has no standing to bring its

2 claim. In addition, Ambrose purports to bring a claim for infringement even
3 though its own complaint reflects that UCLA has a license to publicly perform the
4 works in question. Perhaps recognizing the futility of this claim, Ambrose also
5 seeks to enforce those same rights by means of state law. Such an effort must fail,
6 as those state law claims are preempted by the Copyright Act. Finally, the
7 Complaint fails to allege facts supporting any cause of action under the DMCA.
8

As all claims are barred, Defendants’ motion to dismiss should be granted.

9 And because Plaintiffs have already had the opportunity to amend their complaint,
10 dismissal should be with prejudice.
11 Dated: March 14, 2011

KEKER & VAN NEST LLP

12
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By: /s/ R. James Slaughter
R. JAMES SLAUGHTER
Attorneys for Defendants
THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a
California corporation; MARK G.
YUDOF, an individual; DR. GENE
BLOCK, CHANCELLOR OF THE
UNIVERSITY OF CALIFORNIA,
LOS ANGELES, an individual; DR.
SHARON FARB, an individual;
LARRY LOEHER, an individual;
PATRICIA O’DONNELL, an
individual.

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MOTION TO DISMISS AMENDED COMPLAINT