Robert J. Marderosian et al v. Warner Bros. Entertainment Inc., et al

Filing 32

MINUTES OF DEFENDANTS MOTION TO DISMISS PLAINTIFFS' CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS' FEES (Dkt. 21, filed April 3, 2017) held before Judge Christina A. Snyder: (See minute order for further details) Warner Bros.'s Motion (Dkt. 21) is GRANTED. Plaintiffs may file an amended complaint within 14 days of this order. IT IS SO ORDERED. Court Reporter: Laura Elias. (yl)

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. 
Title 

‘O’

2:17-cv-01062-CAS(GJSx)
Date May 1, 2017
ROBERT J. MARDEROSIAN ET AL. v. WARNER BROS.
ENTERTAINMENT, INC. ET AL.

Present: The Honorable 
Catherine Jeang 
Deputy Clerk 

CHRISTINA A. SNYDER 

Attorneys Present for Plaintiffs: 
Michael Marderosian 

Proceedings:  

I.

N/A 

Tape No.

Attorneys Present for Defendants: 
Linda Burrow
Jeremiah Reynolds

Laura Elias 
Court Reporter / Recorder

DEFENDANTS’ MOTION TO DISMISS PLAINTIFFS’
CLAIMS FOR STATUTORY DAMAGES AND ATTORNEYS’
FEES (Dkt. 21, filed April 3, 2017)

INTRODUCTION

This case involves a dispute over the copyright to “Being Evil Has a Price” (also
referred to as “Pay the Price”) the musical composition excerpted in the main title theme
of Lucifer, a television show produced by Defendants Warner Bros. Entertainment and
NS Pictures, Inc. (collectively, “Warner Bros.”). Dkt. 1 (“Compl.”) ¶ 1.1 Plaintiffs allege
that they wrote, recorded, and produced the song; that Warner Bros. has used an excerpt
of plaintiffs’ recording at the beginning of nearly every episode of Lucifer; and that
plaintiffs have not received any credit or compensation for this use. Id. Plaintiffs
contend that Warner. Bros is liable for copyright infringement. Id. ¶¶ 31–42. They seek
actual damages, or, in the alternative, statutory damages and attorney’s fees. Id. ¶¶ 39–
42.
Warner Bros. has filed a “Motion to Dismiss Plaintiffs’ Claims for Statutory
Damages and Attorneys’ Fees.” Dkt. 21. Warner Bros. argues that plaintiffs are not
entitled to these remedies because they failed to register their copyrights before the
alleged infringement commenced. Id. at 9 (citing 17 U.S.C. § 412). The motion has been
fully briefed (Dkts. 23, 27) and the Court held oral argument on May 1, 2017. The Court
GRANTS the motion with leave to amend.

1

The interested reader can listen to the song on YouTube:
https://www.youtube.com/watch?v=aclYG9glVTM.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. 
Title 

‘O’

2:17-cv-01062-CAS(GJSx)
Date May 1, 2017
ROBERT J. MARDEROSIAN ET AL. v. WARNER BROS.
ENTERTAINMENT, INC. ET AL.

II.

LEGAL STANDARD

As an initial matter, the Court must decide whether a motion to dismiss is the
appropriate vehicle to attack a demand for relief, or whether, as plaintiffs argue, such an
attack must be made through a motion to strike. This question has long bedeviled
litigants in this circuit because the Federal Rules of Civil Procedure do not provide clear
guidance and courts have reached inconsistent conclusions. A long line of cases, both in
this circuit and elsewhere, have held that “‘[a] request for relief cannot be dismissed for
failure to state a claim.’” Saidian v. Krispy Kreme Doughnut Corp., 2017 WL 945083, at
*4 (C.D. Cal. Feb. 27, 2017) (quoting Doe v. State of Ariz., 2016 WL 1089743, at *5 (D.
Ariz. Mar. 21, 2016)).2 However, the Ninth Circuit has held that because “Rule 12(f)
does not authorize district courts to strike claims for damages on the ground that such
claims are precluded as a matter of law,” an attack on the demand must occur under Rule
12(b)(6) or Rule 56. Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 974–75 (9th
Cir. 2010). Under Whittlestone, Warner Bros.’s motion is procedurally proper.
Although the Court will test the sufficiency of the demand under Rule 12(b)(6),
there is no requirement that the demand be supported by factual allegations that render it
“plausible on its face.” Cf. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 570 (2007). Careful readers will remember that the
plausibility requirement recognized in Twombly and Iqbal was based on the Court’s
construction of Rule 8(a)(2)’s requirement for a “short and plain statement of the claim,”
not on a construction of Rule 12(b)(6). See Iqbal, 556 U.S. at 677–78; Twombly, 550
U.S. at 554–56. But unlike Rule 8(a)(2) (and Rule 8(a)(1), which requires “a short and

2

See, e.g., Martinez v. Optimus Properties, LLC, 2017 WL 1040743, at *10 (C.D.
Cal. Mar. 14, 2017) (“Because punitive damages are a remedy, not a claim, a request for
punitive damages cannot be dismissed for failure to state a claim.”) (citation and
quotation marks omitted); Benhur v. Madavaram, 2015 WL 6739109, at *6 (D.N.J. Nov.
2, 2015) (“‘[T]he test of the complaint upon a motion to dismiss lies in the claim not in
the demand.’” (quoting Falk v. Levine, 60 F. Supp. 660, 663 (D. Mass. 1945)); Celebrity
Chefs Tour, LLC v. Macy’s, Inc., 16 F. Supp. 3d 1159, 1164 (S.D. Cal. 2014) (“The
Court declines to rule on the propriety of Plaintiffs’ requests for punitive damages
because a Rule 12(b)(6) motion is the improper vehicle for raising this argument.”);
Bontkowski v. Smith, 305 F.3d 757, 762 (7th Cir. 2002) (“the demand is not itself a part
of the plaintiff’s claim, and so failure to specify relief to which the plaintiff was entitled
would not warrant dismissal under Rule 12(b)(6)”).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. 
Title 

‘O’

2:17-cv-01062-CAS(GJSx)
Date May 1, 2017
ROBERT J. MARDEROSIAN ET AL. v. WARNER BROS.
ENTERTAINMENT, INC. ET AL.

plain statement” of the basis for the court’s jurisdiction), Rule 8(a)(3) requires only a
“demand for the relief sought.” The fact that Rule 8(a)(3) conspicuously omits the
requirement for “a short and plain statement” indicates that a conclusory pleading of the
demand will suffice.3 Accord Martinez, 2017 WL 1040743, at *10.
III.

DISCUSSION

“[T]he owner of copyright or of any exclusive right in the work may obtain
registration of the copyright claim by delivering to the Copyright Office” a copy of the
work, an application for copyright registration, and the requisite fee. 17 U.S.C. § 408(a).
Although a copyright owner need not submit a registration in order to enjoy the
protections of the Copyright Act, registration expands the remedies available to the
owner in the event of infringement. A copyright owner is always “entitled to recover the
actual damages suffered by him or her as a result of the infringement, and any profits of
the infringer that are attributable to the infringement” which are not taken included in the
damages calculation. Id. § 504(b). Registration generally makes the copyright owner
eligible to recover statutory damages (in lieu of actual damages and restitution) and
attorney’s fees. Id. §§ 504(c)(1), 505. But “no award of statutory damages or of
attorney’s fees . . . shall be made for . . . (1) any infringement of copyright in an
unpublished work commenced before the effective date of its registration; or (2) any
infringement of copyright commenced after first publication of the work and before the
effective date of its registration, unless such registration is made within three months
after the first publication of the work.” Id. § 412.
Plaintiffs allege: (1) “Being Evil Has a Price” was unpublished before it was used
on Lucifer; (2) Lucifer premiered on January 25, 2016 and continued to run through April
2016; (3) Warner Bros. used an excerpt of plaintiffs’ recording at the beginning of nearly
every episode; (4) plaintiffs applied to register their copyright in the recording on August
11, 2016; and (5) plaintiffs applied to register the copyright in the underlying
composition on January 29, 2017. Compl. ¶¶ 20–21, 27, 32. These allegations establish
that plaintiffs are not eligible to recover statutory damages or attorney’s fees. At the time

3

That conclusion is reinforced by Rule 54(c), which provides that the courts
should “grant the relief to which each party is entitled, even if the party has not
demanded that relief in its pleadings.” Fed. R. Civ. P. 54(c). It makes scant sense to
invest judicial resources in testing the demand for plausibility when the pleadings do not
limit the type of relief the Court can award.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. 
Title 

‘O’

2:17-cv-01062-CAS(GJSx)
Date May 1, 2017
ROBERT J. MARDEROSIAN ET AL. v. WARNER BROS.
ENTERTAINMENT, INC. ET AL.

Lucifer premiered, “Being Evil Has a Price” was an unpublished work. The infringement
commenced on the date of the premier, over seven months before plaintiffs registered the
copyright to the sound recording. Because plaintiffs’ allegations describe the
“infringement of copyright in an unpublished work” that “commenced before the
effective date of its registration,” plaintiffs may not recover statutory damages or
attorney’s fees. 17 U.S.C. § 412(1); accord Martin v. Walt Disney Internet Grp., 2010
WL 2634695, at *4 (S.D. Cal. June 30, 2010) (“Section 412 bars recovery of attorney’s
fees and [statutory] damages . . . because the photograph was unpublished and
unregistered . . . when Defendants infringed on her copyright.”); Zito v. Steeplechase
Films, Inc., 267 F. Supp. 2d 1022, 1026 (N.D. Cal. 2003) (“if a work is unpublished and
unregistered at the time of infringement, no statutory damages or attorney’s fees are
available despite the fact that the infringement itself may involve the unauthorized
distribution of a copyrighted work”).
Plaintiffs argue that dismissal of their demands for statutory damages and
attorney’s fees is inappropriate because Warner Bros. continued to use the excerpt as the
theme music for Lucifer after plaintiffs’ registered their copyright in this work. But the
Ninth Circuit has held that “infringement ‘commences’ for the purposes of § 412 when
the first act in a series of acts constituting continuing infringement occurs.” Derek
Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 700–01 (9th Cir. 2008); see also
Mason v. Montgomery Data, Inc., 967 F.2d 135, 143 (5th Cir. 1992) (section 412
requires that “statutory damages be denied not only for the particular infringement that a
defendant commenced before registration, but for all of that defendant’s infringements of
a work if one of those infringements commenced prior to registration”). Because Warner
Bros. first used the excerpt before plaintiffs registered that copyright, it matters not
whether Warner Bros. continued to use it after plaintiffs obtained their registration.
On April 27, 2017, plaintiffs filed a supplemental brief, supported by a declaration,
providing evidence that Warner Bros. has exploited “a new and different edit” of “Being
Evil has a Price” to promote Germany’s edition of “Next Top Model.” Dkt. 30 at 3.
Plaintiffs argue that this infringement is “separate and distinct” from the infringement in
Lucifer. Id. at 5. They contend that they may be able to recover statutory damages and
attorney’s fees in connection with this exploitation even if they cannot obtain these
remedies in connection with the use of their recording in Lucifer. Id. They seek leave to
amend their complaint to include these new allegations. Id.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. 
Title 

‘O’

2:17-cv-01062-CAS(GJSx)
Date May 1, 2017
ROBERT J. MARDEROSIAN ET AL. v. WARNER BROS.
ENTERTAINMENT, INC. ET AL.

On April 28, 2017, defendants filed a response to plaintiffs’ supplement. Dkt. 31.
Defendants argue that plaintiffs cannot recover statutory damages or attorney’s fees
based on the alleged infringement in Germany because this infringement is either related
to the Lucifer infringement—in which case statutory damages and attorney’s fees are
barred under Derek Andrew—or distinct from the Lucifer infringement—in which case it
would not be actionable under U.S. copyright law. See Subafilms Ltd. v. MGM-Pathe
Comms. Co., 24 F.3d 1088, 1091 (9th Cir. 1994); cf. L.A. News Service v. Reuters
Television Intern., Ltd., 149 F.3d 987, 992 (9th Cir. 1998) (copyright plaintiff can
recover damages stemming from “extraterritorial exploitation of an infringing act that
occurred in the United States”).
While defendants’ argument appears to be correct, leave to amend is freely given
when justice so requires. Fed. R. Civ. P. 15(a)(2). Moreover, the amendment is not
necessarily futile; even if plaintiffs cannot recover statutory damages and attorney’s fees
in connection with the exploitation of their work in Germany, they might be able to
recover actual damages from such exploitation if they show that this exploitation is an
extension of an infringing act that occurred in the United States. See L.A. News, 149
F.3d at 992. Accordingly, plaintiffs will be given leave to amend. 
IV.

CONCLUSION

Warner Bros.’s Motion (Dkt. 21) is GRANTED. Plaintiffs may file an amended
complaint within 14 days of this order.
IT IS SO ORDERED.
Initials of Preparer

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