Sachiko Muromura v. Rubin Postaer and Associates et al

Filing 53

ORDER GRANTING DEFENDANTS MOTION TO DISMISS 46 . The Second Amended Complaint is DISMISSED, with prejudice by Judge Dean D. Pregerson. ( MD JS-6. Case Terminated ) . (lc) Modified on 4/15/2015 (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

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

17
18

Defendants.
___________________________

19

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

Case No. CV 12-09263 DDP (AGRx)
ORDER GRANTING DEFENDANTS’ MOTION
TO DISMISS

[Dkt. No. 46]

Presently before the court is Defendants’ Motion to Dismiss

20

Plaintiff’s Second Amended Complaint.

21

submissions of the parties and heard oral argument, the court

22

grants the motion and adopts the following order.

23

I.

24

Having considered the

Background
As discussed in this court’s prior orders, Plaintiff Sachiko

25

Muromura creates artistic works using a magnetic fluid

26

(“ferrofluid”).

27

makes ferrofluid sculptures, takes photographs and videos of the

28

sculptures, and often projects images of the sculptures onto a

(Second Amended Complaint (“SAC”) ¶ 15.)

Muromura

1

screen.

2

audiovisual work entitled “Protrude Flow” which she created in

3

collaboration with Plaintiff Minako Takeno.1

4

subsequently created and copyrighted an audiovisual work entitled

5

“Protrude Flow, 2001.”

6

lend itself to written description, but generally depicts

7

ferrofluid forming a series of shapes and patterns in response to

8

magnets.

9

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

10

(Id.)

Among Muromura’s artistic creations is an

Muromura

The work does not readily

The “Protrude Flow, 2001” video, and still images from

Angeles in 2001.

11

(Id. ¶¶ 17-18.)

(Id. ¶ 16.)

(Id. ¶ 17.)

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

12

advertising agency that did work for Defendant American Honda Motor

13

Company (“Honda”).

14

Muromura (hereinafter, “Plaintiff”) if any of her ferrofluid

15

artworks were available for a multi-city tour highlighting Honda’s

16

use of ferrofluids in its vehicles.

17

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

18

“Protrude Flow, 2001.”

19

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

20

fee.

21

(SAC ¶ 19.)

(Id.)

In 2009, an RPA employee asked

(Id.)

Plaintiff provided RPA

RPA ultimately rented one of

(Id. ¶ 20.)
In March 2010, people familiar with Plaintiff’s work informed

22

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

23

in its advertisements.

24

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

25

“creative consultant fee.”

(SAC ¶ 21.)

RPA assured Plaintiff that her

(Id. ¶ 24.)

Plaintiff then filed this

26
27
28

1

Muromura alleges that nine photographs of the original
“Protrude Flow” works were copyrighted, though the Copyright Office
cannot locate deposit copies. (SAC ¶ 8; Ex. 2.)
2

1

copyright infringement action against RPA and Honda.

2

granted Defendants’ motions to dismiss both the original and First

3

Amended Complaint, both times with leave to amend.

4

move to dismiss the Second Amended Complaint.

5

II.

6

This court

Defendants now

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

7

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

8

relief that is plausible on its face.”

9

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

Ashcroft v. Iqbal, 556 U.S.

10

570 (2007)).

11

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

12

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

13

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

14

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

15

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

16

accusation.”

17

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

18

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

19

other words, a pleading that merely offers “labels and

20

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

21

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

22

relief can be granted.

23

quotation marks omitted).

24

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

Iqbal, 556 U.S. at 678.

Although a complaint

Conclusory allegations or

In

Id. at 678 (citations and internal

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

25

assume their veracity and then determine whether they plausibly

26

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

27

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

28

“above the speculative level.” Twombly, 550 U.S. at 555.
3

Plaintiffs

1

“Determining whether a complaint states a plausible claim for

2

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

3

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

4

556 U.S. at 679.

5

III. Discussion

6

Iqbal,

A Plaintiff bringing a copyright infringement claim must

7

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

8

copying of constituent elements of the work that are original.”

9

Feist Pubs., Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361

10

(1991).

11

also allege that the works are substantially similar in their

12

protected elements.

13

1083, 1098 (C.D. Cal. 2011).

14

stage, is whether the elements Defendants allegedly copied are

15

protectable in the first instance.

16

To satisfy the copying prong, a copyright plaintiff must

Wild v. NBC Universal, Inc., 788 F.Supp.2d
The key issue in this case, at this

To determine whether works are substantially similar, courts

17

in this circuit apply a two-part analysis comprised of an objective

18

“extrinsic test” and a subjective “intrinsic” test.

19

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

20

intrinsic test is left to the jury.

21

extrinsic test, courts must make an objective comparison of

22

specific expressive elements.

23

comparison may require an “analytical dissection” of a particular

24

work.

25

Cir. 2000).

26

test provides an awkward framework to apply to copyrighted work

27

like music or art objects . . . .”

Id. at 484.

Cavalier v.

In conducting the

Cavalier, 297 F.3d at 822.

Such a

Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th
As the Ninth Circuit has acknowledged, “the extrinsic

28
4

Swirsky v. Carey, 376 F.3d 841,

1

848 (9th Cir. 2004).

2

works.

3

Nevertheless, the test is applicable to such

Id.

It is the plaintiff’s burden to initially identify specific,

4

objective elements.

5

analytical dissection must, however, distinguish between protected

6

and unprotected elements in the work.

7

“[W]hen applying the extrinsic test, a court must filter out and

8

disregard the non-protectible elements in making its substantial

9

similarity determination.”

Three Boys, 212 F.3d at 485.

The court’s

Swirsky, 376 F.3d at 845.

Cavalier, 297 F.3d at 815.

As

10

explained in this court’s prior orders, copyright protection does

11

not “extend to any idea, procedure, process, system, method of

12

operation, concept, principle, or discovery.”

13

Therefore, “elements of expression that necessarily follow from an

14

idea, or expressions that are as a practical matter, indispensable

15

or at least standard in the treatment of an idea are [also] not

16

protected.”

17

983, 988 (9th Cir. 2009) (internal quotation and alteration

18

omitted); see also Satava v. Lowry, 323 F.3d 805, 810 (9th Cir.

19

2003) (“Similarly, expressions that are standard, stock, or common

20

to a particular subject matter or medium are not protectable under

21

copyright law.”) (emphasis added); see also Swirsky, 376 F.3d at

22

850 (“[W]hen certain commonplace expressions are indispensable and

23

naturally associated with the treatment of a given idea, those

24

expressions are . . . not protected by copyright.”).

25

17 U.S.C. § 102(b).

Dream Games of Arizona, Inc. v. PV Onsite, 561 F.3d

In this vein, as the Satava court explained, objective facts
Satava, 323 F.3d at 810.

The court

26

are not copyrightable.

27

therefore held that a sculptor of jellyfish artworks could not

28

copyright such naturally-dictated elements as bright colors,
5

1

tentacles, vertical swimming orientation, clear glass

2

representative of water, or other elements typical of jellyfish in

3

nature.

4

artistic choices derived from nature, such as the particular curl

5

of a jellyfish’s tendril, might be entitled to some copyright

6

protection, it explained that, given the limited range of possible

7

expressions of curled tendrils, such an element would be entitled

8

to only “thin” protection from only “virtually identical copying.”

9

Id.

Id. at 811-12.

While the court recognized that some

Even unprotectable elements, however, may gain some protection

10

in combination with each other.

11

unprotectable elements may be copyrightable, provided that the

12

elements combined “are numerous enough and their selection and

13

arrangement original enough that their combination constitutes an

14

original work of authorship.”

15

Specific combinations of

Id. at 810.

In this case, the court concluded that previous iterations of

16

Plaintiffs’ complaint impermissibly attempted to lay claim to

17

fundamental properties of ferrofluid, such as its tendency to pool,

18

flow, or react to the presence of a magnet.

19

found such elements to be either unprotectable or, at best, worthy

20

of only thin protection.2

21

Complaint, Plaintiffs include additional visual exhibits and

22

additional, more detailed descriptions of the works and elements at

23

issue.

The court therefore

Now, with their lengthier Second Amended

24
25
26
27
28

2

Plaintiffs’ First Amended Complaint suffered from a degree
of imprecision regarding the works, let alone elements, at issue,
as evinced by Plaintiffs’ identification of only a single still
photograph, in addition to the Protrude, Flow 2001 audiovisual
work.
6

1

Plaintiffs’ Second Amended Complaint, however, continues to

2

suffer from a lack of clarity regarding the protectable elements

3

reflected in Plaintiffs’ works.

4

provide extensive lists of descriptors and elements characterizing

5

their works, but at the same time allege that “[t]hese

6

articulations of the objective manifestations of Plaintffs’

7

expression are provided, without limitation, as examples to

8

demonstrate sufficient objective similarities . . . .”

9

With respect to specific photographs, Plaintiffs allege that

At a general level, Plaintiffs

(SAC ¶ 34).

10

“[s]ome of the objective manifestations of the creative expression

11

that were copied by Defendants include the slope of the mountain

12

[shape], the density of spikes on the mountain, the way the spikes

13

protrude vertically . . ., the shape of the spikes, the horizon

14

line . . ., the mood of the pieces . . . and the open air

15

environment.”

16

(SAC ¶ 45.)

Such allegations, however, put the cart before the horse.

17

Plaintiffs cannot merely allege that Defendants’ works share

18

certain elements with Plaintiffs’ works.3

19

is whether any elements, or combinations of elements, are

20

protectable in the first instance.

21

description of “some” of the elements present in both works without

22

first identifying any elements or particular combination of

23

elements worthy of protection.

24

identified, such as “mood,” with no further elaboration, are not

25

the type of objective elements that the extrinsic test requires.

The threshold question

Plaintiffs skip ahead to a

Many of the individual expressions

26
27
28

3

Plaintiffs acknowledge that their claims do not depend on
the actual use of ferrofluid, and apply regardless of medium to any
depiction of the elements described in the SAC, such as they are.
7

1

Plaintiffs may not avoid their burden to identify protectable

2

elements by alleging, as they do, that discovery will do so. (E.g.,

3

“Plaintiffs contend that discovery will support their claim that

4

[a] hexagonal image of small vertical protrusions is copyrightable

5

expression . . . .”

6

sufficient to adequately identify a protectable combination of

7

elements, the SAC muddies the waters by alleging that the exhibits

8

described are intended only “as a few examples that serve to

9

demonstrate that Defendants (sic) works are extrinsically similar

(SAC ¶ 62.))

Even if such descriptions were

10

to Plaintiffs’ work . . . .”

11

qualified allegations, it is difficult for this court determine the

12

set of elements, whether individually or as a combination, to which

13

Plaintiffs stake a claim.

14

their burden to identify specific, objective, protectable elements,

15

the SAC must be dismissed.

16

IV.

17

(SAC ¶ 56.)

With such vague and

Because Plaintiffs have failed to meet

Conclusion
For the reasons stated above, Defendants’ Motions to Dismiss

18

are GRANTED.

19

The Second Amended Complaint is DISMISSED, with

prejudice.

20
21
22

IT IS SO ORDERED.

23
24
25

Dated: April 15, 2015
DEAN D. PREGERSON
United States District Judge

26
27
28
8