Sachiko Muromura v. Rubin Postaer and Associates et al

Filing 41

ORDER GRANTING DEFENDANTS MOTION TO DISMISS 31 by Judge Dean D. Pregerson: Defendants Motion to Dismiss is GRANTED, with leave to amend. Any amended complaint shall be filed within fourteen days of the date of this order. (lc). Modified on 9/16/2014. (lc).

1
2

O

3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

CENTRAL DISTRICT OF CALIFORNIA

10
11

SACHIKO MUROMURA,

12

Plaintiff,

13
14
15
16
17

v.
RUBIN POSTAER AND
ASSOCIATES, a California
corporation; AMERICAN HONDA
MOTOR CO., INC., a Delaware
corporation,
Defendants.
___________________________

)
)
)
)
)
)
)
)
)
)
)
)
)
)

Case No. CV 12-09263 DDP (AGRx)

ORDER GRANTING DEFENDANTS’ MOTION
TO DISMISS

[Dkt. No. 31]

18
19

Presently before the court is Defendants’ Motion to Dismiss

20

Plaintiff’s First Amended Complaint.

21

submissions of the parties, the court grants the motion and adopts

22

the following order.

23

I.

24

Having considered the

Background
Plaintiff Sachiko Muromura creates artistic works using a

25

magnetic fluid (“ferrofluid”).

26

8.)

27

videos of the sculptures, and often projects images of the

28

sculptures onto a screen.

(First Amended Complaint (“FAC”) ¶

Muromura makes ferrofluid sculptures, takes photographs and

(Id.)

Among Muromura’s artistic

creations is an audiovisual work entitled “Protrude Flow, 2001,”

1

which she created in collaboration with Plaintiff Minako Takeno and

2

registered with the United States Copyright Office.

3

The work does not readily lend itself to written description, but

4

generally depicts ferrofluid forming a series of patterns in

5

response to magnets.

6

photographic slides from “Protrude, Flow” with the Copyright

7

Office.1

8

from the movie, were displayed at a computer graphics exhibition in

9

Los Angeles in 2001.

(Id. ¶¶ 1, 9.)

Plaintiffs also registered certain still

(Id. ¶ 30.)

The “Protrude Flow, 2001" video, and stills

(Id. ¶ 10.)

10

Defendant Rubin Postaer and Associates (“RPA”) is an

11

advertising agency that does work for Defendant American Honda

12

Motor Company (“Honda”).

13

asked Muromura (“Plaintiff”) if any of her ferrofluid artworks were

14

available for a multi-city tour highlighting Honda’s use of

15

ferrofluids in its vehicles.

16

with a link to her website, which included images and video of

17

“Protrude Flow, 2001.”

18

Plaintiff’s two available works, and paid Plaintiff a $10,000

19

rental fee.

20

(FAC ¶¶ 2, 5.)

(Id.)

In 2009, an RPA employee

(Id. ¶ 12.)

Plaintiff provided RPA

RPA ultimately rented one of

(Id. ¶ 13.)

In March 2010, people familiar with Plaintiff’s work informed

21

her that a division of Honda was using images of her ferrofluid art

22

in its advertisements.

23

works were not featured in the ads, but offered Plaintiff a $10,000

24

“creative consultant fee.”

25

copyright infringement action against RPA and Honda.

26

now move to dismiss the First Amended Complaint.

(FAC ¶ 14.)

RPA assured Plaintiff that her

(Id. ¶ 17.)

Plaintiff then filed this
Defendants

27
1

28

The complaint identifies only a single photograph included
in this registration. (FAC ¶ 30, Ex. 5.)
2

1
2

II.

Legal Standard
A complaint will survive a motion to dismiss when it contains

3

“sufficient factual matter, accepted as true, to state a claim to

4

relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S.

5

662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,

6

570 (2007)).

7

“accept as true all allegations of material fact and must construe

8

those facts in the light most favorable to the plaintiff.” Resnick

9

v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000).

When considering a Rule 12(b)(6) motion, a court must

Although a complaint

10

need not include “detailed factual allegations,” it must offer

11

“more than an unadorned, the-defendant-unlawfully-harmed-me

12

accusation.”

13

allegations that are no more than a statement of a legal conclusion

14

“are not entitled to the assumption of truth.” Id. at 679.

15

other words, a pleading that merely offers “labels and

16

conclusions,” a “formulaic recitation of the elements,” or “naked

17

assertions” will not be sufficient to state a claim upon which

18

relief can be granted.

19

quotation marks omitted).

20

Iqbal, 556 U.S. at 678.

Conclusory allegations or

In

Id. at 678 (citations and internal

“When there are well-pleaded factual allegations, a court should

21

assume their veracity and then determine whether they plausibly

22

give rise to an entitlement of relief.” Id. at 679.

23

must allege “plausible grounds to infer” that their claims rise

24

“above the speculative level.” Twombly, 550 U.S. at 555.

25

“Determining whether a complaint states a plausible claim for

26

relief” is a “context-specific task that requires the reviewing

27

court to draw on its judicial experience and common sense.”

28

556 U.S. at 679.
3

Plaintiffs

Iqbal,

1
2

III. Discussion
To state a claim for copyright infringement, a Plaintiff must

3

allege “(1) ownership of a valid copyright, and (2) copying of

4

constituent elements of the work that are original.”

5

Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991).

6

satisfy the copying prong, a copyright plaintiff must also allege

7

that the works are substantially similar in their protected

8

elements.

9

(C.D. Cal. 2011).

Feist Pubs.,
To

Wild v. NBC Universal, Inc., 788 F.Supp.2d 1083, 1098
Courts in this circuit regularly apply these

10

requirements at the pleading stage.

11

at 1098; Lafarga v. Lowrider Arte Magazine, No. SACV 11-1501 DOC,

12

2012 WL 3667441 at *3 (C.D. Cal. Aug. 24, 2012); Minden Pictures,

13

Inc. v. Pearson Education, Inc., No. C 11-05385 WHA, 2012 WL

14

1595081 at *2 (N.D. Cal. May 4, 2012); Fractional Villas, Inc. v.

15

Tahoe Clubhouse, No. 08cv1396-IEG, 2009 WL 160932 at *2 (S.D. Cal.

16

Jan. 22, 2009).

17

See, e.g., Wild 788 F.Supp.2d

To determine whether works are substantially similar, courts

18

in this circuit apply a two-part analysis, including an “extrinsic

19

test,” or objective comparison of specific expressive elements.

20

Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).

21

Copyright protection does not “extend to any idea, procedure,

22

process, system, method of operation, concept, principle, or

23

discovery.”

24

expression that necessarily follow from an idea, or expressions

25

that are as a practical matter, indispensable or at least standard

26

in the treatment of an idea are [also] not protected.”

27

of Arizona, Inc. v. PV Onsite, 561 F.3d 983, 988 (9th Cir. 2009)

28

(internal quotation and alteration omitted); see also Satava v.

17 U.S.C. § 102(b).

Therefore, “elements of

4

Dream Games

1

Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (“Similarly, expressions

2

that are standard, stock, or common to a particular subject matter

3

or medium are not protectable under copyright law.”) (emphasis

4

added).

5

similarity, courts must “filter out and disregard the non-

6

protectable elements” and look only at those elements that are

7

protected.

8
9

When applying the extrinsic test of substantial

Cavalier, 297 F.3d at 822-23.

Defendants argue that the FAC fails to identify any original,
protectable elements in “Protrude, Flow 2001,” and that the

10

combination of unprotectable elements in Plaintiffs’ work and

11

Defendants’ advertisements are not similar.

The court agrees.

12

Plaintiffs’ opposition refers to several elements of Protrude,

13

Flow, but does not attempt to distinguish between elements that are

14

protectable and those that are not.

15

asserts that Defendants copied certain elements, such as “mood,

16

scale, lighting, story line, pace, and so on.”2

17

Plaintiffs also refer to alleged copying of “mountain shapes” and

18

“the speed that the fluid moves, the shape of the spikes, the

19

density of the spikes, and the way the spikes flow into each

20

other,” as if to suggest that those elements are protectable.

21

FAC itself identifies a “pattern of spikes growing upwards . . .

22

[and] combining together,” a “flat pool of ferrofluid,” angled

23

spikes, rapidly-flowing ferrofluid, “bright and silvery colored”

24

ferrofluid, a thin column of ferrofluid rising to meet and

Instead, Plaintiff repeatedly

(Opp. at 13.)

The

25
26
27
28

2

At least some of these assertions directly contradict the
FAC. (See FAC ¶ 57 (“[T]he color lighting was not copied by
RPA/Honda . . . .”.)
5

1

spreading across a magnet, and the “reflective property of

2

ferrofluid.”

3

(FAC ¶¶ 35-41.)

In Satava v. Lowry, a plaintiff copyrighted several glass

4

sculptures of jellyfish within a glass dome.

5

807.

6

apply to the idea of a jellyfish sculpture and, therefore, also

7

could not apply to natural characteristics of jellyfish such as

8

bright colors, tendril-like tentacles, and rounded bells.

9

810-11.

Satava, 323 F.3d at

The Ninth Circuit held that copyright protection did not

Id. at

The Satava court recognized that a particular, original

10

combination of unprotected elements might be protectable, as might

11

the plaintiff’s artistic decisions “not governed by jellyfish

12

physiology,” but that contributions of that sort, such as the

13

arrangement of hues and distinctive curl of a tendril, were

14

entitled only to “thin” copyright protection against only

15

“virtually identical” copying.

16

Frazier Design, Inc. v. Zimmerman Agency LLC, No. C 10-1094 SBA,

17

2010 WL 3790656 at *5-6 (N.D. Cal. Sept. 27, 2010) (finding

18

particular style and shading of a drawing of a duck’s bill did not

19

necessarily flow from duck physiology).

20

Id.

323 F.3d 805; See also, Craig

Here, Plaintiff appears to lay claim to a natural property of

21

ferrofluid more fundamental than even the shape of the jellyfish at

22

issue in Satava.

23

and its shape will vary in accordance with the magnetic field to

24

which it is exposed.

25

there are factual issues regarding the properties of ferrofluid,

26

that argument contradicts the plain allegations of the FAC, which

Ferrofluid naturally responds to magnetic fields,

While Plaintiff argues in opposition that

27
28
6

1

states that “[f]errofluid responds to magnetic fields, and artists

2

can control ferrofluid by using magnetic fields.”3

3

The spikes, pools, columns, and flows of ferrofluid Plaintiff

4

identifies as protectable expressive elements are but artifacts of

5

the medium’s magnetism.

6

magnet is no more copyrightable than an icicle’s response to heat

7

or a pond’s reaction to a skipped pebble.

(FAC ¶ 20.)

Ferrofluid’s behavior in the presence of a

8

Stripping out, then, the non-protectable natural qualities of

9

ferrofluid, the only elements that remain are Plaintiff’s artistic

10

choices with respect to mood, setting, pace, sequence of events,

11

colors, and materials.

12

that an “Acura Oil Commercial” infringes upon these elements.4

13

an initial matter, the FAC itself acknowledges that Defendants did

14

not copy some of these elements.

15

was not copied by RPA/Honda . . . .”).

16

the most part, zoomed in very close to the ferrofluid, which is

17

contained in a featureless, white container and bathed first in

18

purple light, then shown in black and white.

19

either cuts the magnet out of the frame entirely or shows a tiny

20

sliver of a magnet from a fluid-level perspective before cutting to

21

images of people manipulating ferrofluid.

(FAC ¶ 55; Opp. at 13.)

Plaintiff asserts
As

FAC ¶ 57 (“[T]he color lighting
“Protrude, Flow” is, for

“Protrude, Flow”

The Acura Oil commercial

22
23
24
25
26
27
28

3

Though Plaintiff attempts to avoid dismissal by alleging
that “[n]ot all ferrofluid produces spikes when exposed to magnetic
fields,” that allegation ignores not only the FAC’s other
allegations, but also the reality that the location and strength of
a magnetic field will affect ferrofluid’s shape, and implicitly
acknowledges that some ferrofluid naturally does produce spikes.
4

The FAC does not allege that other allegedly infringing
works duplicate these particular elements. The only elements
identified with respect to those works are unprotectable.
7

1

takes place in an empty residential room with a large skylight,

2

prominently features a large magnet moving across the room on a

3

heavy frame, and depicts ferrofluid from a variety of perspectives

4

and distances with quick cuts.

5

is not substantially similar, let alone virtually identical, to

6

Protrude, Flow.

Defendants’ alleged infringing work

7

IV.

8

For the reasons stated above, Defendants’ Motion to Dismiss is

9
10

Conclusion

GRANTED, with leave to amend.

Any amended complaint shall be filed

within fourteen days of the date of this order.

11
12
13
14
15
16
17

IT IS SO ORDERED.

18
19
20

Dated: September 16, 2014
DEAN D. PREGERSON
United States District Judge

21
22
23
24
25
26
27
28
8