Shepard v. Miller et al

Filing 43

ORDER signed by Judge William B. Shubb on 12/14/2010 GRANTING defendants' 8 Special Motion to Strike plaintiff's UCL claim and DENYING defendants' 20 Motion for Judgment on the Pleadings with respect to plaintiff's claim for copyright infringement. (Marciel, M)

-JFM Shepard v. Miller et al

Doc. 43

1 2 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 Jane Miller is sued erroneously as "Jane Miler." at 1:22 (Docket No. 6).)
2 1

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA ----oo0oo----

PAULA SHEPARD, Plaintiff, v. JANE MILER, an individual, CAREER PRESS, INC., NEW PAGE BOOKS, and DOES 1-100. Defendants. ___________________________/

NO. CIV. 2:10-1863 WBS JFM MEMORANDUM AND ORDER RE: MOTION FOR JUDGMENT ON THE PLEADINGS AND SPECIAL MOTION TO STRIKE

----oo0oo---Plaintiff Paula Shepard brought this action against defendants Jane Miller,1 Career Press, Inc., and New Page Books,2 alleging copyright infringement and related state law claims. Presently before the court are defendants' motion for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c)

(Ans.

New Page Books is an "imprint" of Career Press, Inc. (Ans. ¶ 4.) 1

Dockets.Justia.com

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and special motion to strike plaintiff's state law claims pursuant to California's anti-Strategic Lawsuits Against Public Participation ("anti-SLAPP") statute, California Civil Procedure Code § 425.16. I. Factual and Procedural Background Defendant Miller is a licensed psychotherapist. (Compl. ¶ 13.) In 2009, she began writing a book about the use (Id.) Miller

of dogs to treat psychiatric disabilities.

contacted plaintiff, who has experience using and training psychiatric service dogs ("PSDs"), hoping to feature plaintiff in the book. (Id. ¶¶ 12-13.) Plaintiff agreed, and provided (Id. ¶

information about her personal experiences using a PSD. 14.)

Because of plaintiff's practical experience in training

PSDs, Miller allegedly asked plaintiff for her help in drafting those portions of the book relating to PSD training and interaction. (Id. ¶ 15.) Plaintiff alleges that she "explicitly

told Miller that she . . . expected to be compensated for these additional efforts," and Miller assured plaintiff that she would be compensated by: "(a) receiving attribution in the book for her work, (b) receiving some financial compensation from sales of the book, and (c) being included in speaking engagements in connection with the book . . . ." (Id. ¶ 16.) The two then

communicated by e-mail and telephone regarding the book throughout early 2009. (Id. ¶ 17.)

As the book neared completion, plaintiff allegedly sought to formalize their agreement, which defendants refused to do. (Id.) Instead, defendants advised plaintiff that: "All

references to you, your experiences and any writing you did will 2

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be removed from the book."

(Id. ¶ 18.)

The book, entitled (Id. ¶ 19.)

"Healing Companions," was published in 2010.

Plaintiff alleges that she owns the copyright registration for her "Work" and that portions of the Work were published in "Healing Companions." (Id. ¶¶ 29, 32.)

Plaintiff filed this suit on July 16, 2010 (Docket No. 1), alleging claims for (1) fraud; (2) copyright infringement; (3) common law misappropriation; and (4) violations of California's Unfair Competition Law ("UCL"), Cal. Bus. & Prof. Code §§ 17200-17210. Defendants now move for judgment on the

pleadings pursuant to Federal Rule of Civil Procedure 12(c) and to strike the state law claims under California Civil Procedure Code section 425.16. II. Discussion A. Motion for Judgment on the Pleadings "After the pleadings are closed--but early enough not to delay trial--a party may move for judgment on the pleadings." Fed. R. Civ. P. 12(c). A Rule 12(c) motion may ask for judgment

on the basis of plaintiff's "[f]ailure to state a claim upon which relief can be granted." Id. 12(h)(2)(B). Such a motion is

essentially equivalent to a Rule 12(b)(6) motion to dismiss, so a district court may "dispos[e] of the motion by dismissal rather than judgment."3 Sprint Telephony PCS, L.P. v. Cnty. of San

3

The motions differ in only two respects:

(1) the timing (a motion for judgment on the pleadings is usually brought after an answer has been filed, whereas a motion to dismiss is typically brought before an answer is filed) . . . and (2) the party bringing the motion (a motion to dismiss may be brought only by the party 3

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Diego, 311 F. Supp. 2d 898, 902-03 (S.D. Cal. 2004). Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain "a short and plain statement of the claim showing that the pleader is entitled to relief." "To survive a

motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to `state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, --- U.S. ----, 129

S. Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). The Supreme Court has explained that the First, "the tenet

pleading standard rests on two principles.

that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions." Id. While

showing an entitlement to relief "does not require `detailed factual allegations,' . . . it demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation." Twombly, 550 U.S. at 555). Id. (quoting

Second, "only a complaint that states Id.

a plausible claim for relief survives a motion to dismiss." at 1950.

If the pleadings "do not permit the court to infer more

than the mere possibility of misconduct, the complaint has alleged--but it has not `show[n]'--`that the pleader is entitled to relief.'" Id. (quoting Fed. R. Civ. P. 8(a)(2)).4

against whom the claim for relief is made, usually the defendant, whereas a motion for judgment on the pleadings may be brought by any party). Sprint Telephony PCS, L.P. v. Cnty. of San Diego, 311 F. Supp. 2d 898, 902-03 (S.D. Cal. 2004). The parties have requested that the court take judicial notice of a large number of documents, most of which are not judicially noticeable. In considering a motion for judgment on the pleadings, a court may consider "documents attached to the 4
4

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Copyright Infringement Claim against All Defendants To establish copyright infringement, a plaintiff must show (1) ownership of a valid copyright in the allegedly infringed material and (2) copying of protected expression by defendants. Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330,

1335 (9th Cir. 1995), overruled on other grounds by Cunningham v. Hamilton Cnty., Ohio, 527 U.S. 198 (1999). A copyright registration certificate is prima facie evidence of copyright ownership. See 17 U.S.C. § 410(c) ("In any

judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate."). While

plaintiff has failed to attach a registration certificate, she alleges that she owns a copyright registration. 18, 29.) (See Compl. ¶¶

This may or may not be sufficient to allege copyright See Vargas v. Pfizer, Inc., 418 F. Supp. 2d 369, 373

ownership.

(S.D.N.Y. 2005) (dismissing with leave to amend for failure to attach certificate of registration). However, defendants have

complaint, documents incorporated by reference in the complaint, or matters of judicial notice--without converting the motion . . . into a motion for summary judgment." United States v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003); see Heliotrope Gen., Inc. v. Ford Motor Co., 189 F.3d 971, 981 n.18 (9th Cir. 1999). The court may also consider documents on which the Complaint necessarily relies if their authenticity is not disputed. See Lee v. City of L.A., 250 F.3d 668, 688 (9th Cir. 2001). On that ground and because the parties have so agreed, the court will consider Miller's book (Notice of Lodging Document in Paper Format (Docket No. 23)) and plaintiff's copyright registration certificate (Defs.' Req. for Judicial Notice Ex. A (Docket No. 10)) and deposit (Defs.' Supplemental Req. for Judicial Notice Ex. A (Docket No. 22)). The court will not consider any other documents in deciding the motion for judgment on the pleadings. 5

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not contested the issue, so for purposes of this motion, the court assumes that plaintiff has sufficiently alleged ownership. As to the second element, copying of a protected expression, defendants contend that most of plaintiff's Work that appears in "Healing Companions" actually originated in early drafts that Miller e-mailed to plaintiff, and is thus not eligible for protection. (See Defs.' Mem. of P. & A. in Supp. of However, the court

Mot. for J. on the Pleadings at 9:1-16:27.)

cannot look to the e-mails, which are not subject to judicial notice, on a motion for judgment on the pleadings, and thus the court must consider only the similarity of the Work and the book. "Copying may be shown by circumstantial evidence of access and substantial similarity of both the general ideas and expression between the copyrighted work and the allegedly infringing work."5 Apple Computer, Inc. v. Microsoft Corp., 35 Substantial similarity refers

F.3d 1435, 1442 (9th Cir. 1994).

to similarity of expression, not merely similarity of ideas or concepts. See 17 U.S.C. § 102(b). The degree of word-for-word similarity between the works here places the infringement claim in the class of cases referred to by Nimmer as "fragmented literal similarity." Nimmer on Copyright § 13.03[A][2] at 13-53. 4

"Fragmented literal

similarity exists where the defendant copies a portion of the plaintiff's work exactly or nearly exactly, without appropriating the work's overall essence or structure." Newton v. Diamond, 388

Defendants do not raise the issue of whether they had access to plaintiff's work in this motion. (See Defs.' Mem. of P. & A. in Supp. of Mot. for J. on the Pleadings at 5 n.5.) 6

5

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F.3d 1189, 1195 (9th Cir. 2004).

"Because the degree of

similarity is high in such cases," the court should consider "whether the copying goes to trivial or substantial elements," which is measured by "considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff's work as a whole."6 Id.

In considering the qualitative and quantitative significance of the copied portion of plaintiff's Work, the court cannot conclude on the pleadings alone that there is not substantial similarity between the works. Large portions from

three out of just over nine pages constituting the Work are copied in the book with only slight modifications. (See Defs.'

Supplemental Req. for Judicial Notice Ex. A ("Healing Companions") (Docket No. 22).) Plaintiff's Work contains two

main sections: her personal story of interactions with her PSD and her advice on training PSDs. A majority of the latter is (Defs.' Req. for

found in Chapter Four of "Healing Companions." Judicial Notice Ex. A (Docket No. 10).)

The court is not

equipped to determine the qualitative importance of the section on training to the copyrighted Work as a whole on a motion for judgment on the pleadings.
6

On the face of the Complaint and the

The fact that the majority of the book contains original material is irrelevant. 4 Nimmer on Copyright § 13.03[B][1][a] at 13-68 ("If substantial similarity is found, the defendant will not be immunized from liability by reason of the addition in his work of different characters or additional and varied incidents, nor generally by reason of his work proving more attractive or saleable than the plaintiff's.") (footnotes omitted); see Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n.1 (9th Cir. 1987) ("[T]he relevant inquiry is whether a substantial portion of the protectible material in the plaintiff's work was appropriated--not whether a substantial portion of defendant's work was derived from plaintiff's work."). 7

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documents incorporated by reference therein, plaintiff has stated a claim for copyright infringement. Fair Use Even if plaintiff has alleged a prima facie case of copyright infringement, defendants are entitled to dismissal if their use of the copyrighted material is protected as fair use. See 17 U.S.C. § 107. An assertion of fair use "may be considered

on a motion to dismiss, which requires the court to consider all allegations to be true, in a manner substantially similar to

consideration of the same issue on a motion for summary judgment, when no material facts are in dispute." Leadsinger, Inc. v. BMG

Music Publ'g, 512 F.3d 522, 530 (9th Cir. 2008); see Savage v. Council on American-Islamic Relations, Inc., No. C 07-6076, 2008 WL 2951281, at *9 (N.D. Cal. July 25, 2008) (granting Rule 12(c) motion for judgment on the pleadings based on fair use defense). "The fair use doctrine confers a privilege on people other than the copyright owner `to use the copyrighted material in a reasonable manner without his consent, notwithstanding the monopoly granted to the owner.'" Hustler Magazine Inc. v. Moral

Majority Inc., 796 F.2d 1148, 1151 (9th Cir. 1986) (quoting Marcus v. Rowley, 695 F.2d 1171, 1174 (9th Cir. 1983)). In

determining whether a use is fair, courts engage in a case-bycase analysis and a flexible balancing of the following four nonexclusive factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 8

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Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 799 (9th Cir. 2003). The first factor in a fair use inquiry requires the court to consider "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). Although

not controlling, the fact that the work is used for a commercial or profit-making purpose as opposed to a non-profit purpose weighs against a finding of fair use. Elvis Presley Enters., The

Inc. v. Passport Video, 349 F.3d 622, 627 (9th Cir. 2003). "degree to which the new user exploits the copyright for commercial gain--as opposed to incidental use as part of a

commercial enterprise--affects the weight" afforded to commercial nature as a factor. Id.; see also Harper & Row Publishers, Inc.

v. Nation Enters., 471 U.S. 539, 562 (1985) ("The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price."). The court must also inquire into whether the

new work is transformative and does not simply "supplant" the original work. Mattel, 353 F.3d at 800.

The parties do not dispute that "Healing Companions" is being sold for profit. However, the section on training, in

which plaintiff's Work is found, is a small portion of the book as a whole, and the commercial value of the book is not based entirely on plaintiff's Work. The book covers many aspects of Therefore, while the

PSDs, only one of which involves training.

book is being sold for profit and the use of plaintiff's Work may 9

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have contributed to its value, the manner of commercial use does not weigh strongly against a fair use determination. See Kelly

v. Arriba Soft Corp., 336 F.3d 811, 818 (9th Cir. 2003). The more important inquiry under the first factor is to determine whether and to what extent the new work is "tranformative." Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d "A work is transformative when the new

701, 720 (9th Cir. 2007).

work does not merely supersede the objects of the original creation but rather adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message." omitted). Id. at 720 (internal quotation marks

The more transformative the new work, the less the

significance of other factors that weigh against fair use, such as use of a commercial nature. Inc., 510 U.S. 569, 579 (1994). Defendants' use of plaintiff's Work is significantly transformative. Not only were plaintiff's sentences edited, Campbell v. Acuff-Rose Music,

clarified, and generally polished for publication, but also they form a very small portion of the book. The book, at 256 pages,

includes chapters about a woman named Mindy, finding the right dog, dogs used to serve veterans with Post-Traumatic Stress Disorder, training (the chapter in which plaintiff's Work is found), helping the PSD become part of the family, coping with the dog's stress, and dealing with aging and death of a dog. ("Healing Companions" at 27-152.) The book also contains several

appendices with sample service dog cards, information on laws about service dogs, breeds, tasks that PSDs can perform, and an article about Miller. (Id. at 153-226.) 10 Finally, the book

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contains a list of abbreviations, a glossary, a list of resources, and an index. (Id. at 227-54.) While plaintiff does

not allege the use to which she has put or intends to put her Work, a comprehensive book on the subject of PSDs is transformative of any use to which plaintiff's Work could be put. The first fair use factor thus weighs heavily in favor of a fair use determination. The second factor in a fair use inquiry requires the court to consider the "nature of the copyrighted work." U.S.C. § 107(2). 17

"Works that are creative in nature are closer

to the core of intended copyright protection than are more factbased works," Kelly, 336 F.3d at 820 (quoting A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1016 (9th Cir. 2001)), meaning that plaintiff's fact-based Work is more likely to be covered by fair use. However, the fact that a work is published or

unpublished is also a critical element of its nature because the author's right to control the first public appearance of her work weighs against the use of her work before its release. Id. When

dealing with transformative uses, this factor is not terribly significant in the overall fair use balancing. F.3d at 803. See Mattel, 353

Thus, the fact that the fact-based Work was

unpublished weighs slightly, but not considerably, against a finding of fair use. The third factor in a fair use inquiry requires the court to examine the "amount and substantiality of the portion used in relation to the copyrighted work as a whole." § 107(3). 17 U.S.C.

As explained above, the amount of the copyrighted Work Although "entire verbatim

used in the book was significant. 11

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reproductions are justifiable where the purpose of the work differs from the original," Mattel, 353 F.3d at 803 n.8, defendants put the section on training PSDs to the same purpose for which plaintiff presumably wrote it: to provide information about training dogs. of fair use. The fourth factor in a fair use inquiry focuses on "the effect of the use upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4). This factor is Thus, this factor weighs against a finding

"undoubtedly the single most important element of fair use." Harper & Row, 471 U.S. at 566. This factor requires courts to

consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by defendants would result in a substantially adverse impact on the potential market for the original. Kelly, 336 F.3d at 821. The

more transformative the new work, the less likely the new work's use of copyrighted materials will affect the market for the materials. Id. In determining whether the use has harmed the

work's value or market, courts have focused on whether the infringing use (1) tends to diminish or prejudice the potential sale of the work, (2) tends to interfere with the marketability of the work, or (3) fulfills the demand for the original work. Hustler, 796 F.2d at 1155-56. If a use has no demonstrable

effect upon the potential market for, or the value of, the copyrighted work, then such use need not be prohibited in order to protect the author's incentive to create. Sony Corp. of Am.

v. Universal City Studios, Inc., 464 U.S. 417, 450 (1984). 12

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While Miller's book would likely supplant any market demand for plaintiff's Work whether or not it contained the copyrighted material, the court cannot determine on the pleadings whether the alleged copying has any effect on the market.7 Thus,

although the book is significantly transformative, the amount of alleged copying and the inability of the court to determine market effect preclude the court from finding at this stage that the copying constituted fair use. Accordingly, the court will

deny defendants' motion for judgment on the pleadings. B. Special Motion to Strike The California legislature enacted its anti-SLAPP statute, California Civil Procedure Code § 425.16, to "allow early dismissal of meritless first amendment cases aimed at chilling expression through costly, time-consuming litigation." Metabolife Int'l, Inc. v. Wornick, 264 F.3d 832, 839 (9th Cir. 2001). "California's anti-SLAPP statute allows a defendant to

move to strike a plaintiff's complaint if it `aris[es] from any act of that person in furtherance of the person's right of petition or free speech under the United States or California Constitution in connection with a public issue.'"
7

Vess v.

The court is cognizant of the need to "balance . . . `the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied.'" Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 804-05 (9th Cir. 2003) (quoting Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1403 (9th Cir. 1997)). Defendants' argument that "many authors and reporters conduct interviews by email, and denying fair use here would harm the public interest by allowing sources to use copyright law to extort payment for, or exercise a veto over, publication of books that include information provided via email" (Defs.' Mem. of P. & A. in Supp. of Mot. for J. on the Pleadings at 24:20-23) is compelling; nonetheless, it is insufficient for a finding of fair use at this stage. 13

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Ciba-Geigy Corp. USA, 317 F.3d 1097, 1109 (9th Cir. 2003) (quoting Cal. Civ. Proc. Code § 425.16(b)(1)); see also Briggs v. Eden Council for Hope & Opportunity, 19 Cal. 4th 1106, 1123 (1999) (defendants "need not separately demonstrate that the statement concerned an issue of public significance"). The

special motion to strike under the anti-SLAPP statute is available to litigants proceeding in federal court. Thomas v.

Fry's Elecs., Inc., 400 F.3d 1206, 1206-07 (9th Cir. 2005). "A court considering a motion to strike under the anti-SLAPP statute must engage in a two-part inquiry." F.3d at 1110. Vess, 317

First, "the defendant is required to make a prima

facie showing that the plaintiff's suit arises from an act by the defendant made in connection with a public issue in furtherance of the defendant's right to free speech under the United States or California Constitution." 1024 (9th Cir. 2003). Batzel v. Smith, 333 F.3d 1018,

Second, "[t]he burden then shifts to the

plaintiff to establish a reasonable probability that the plaintiff will prevail on his or her [] claim." Id.

An "act in furtherance of a person's right of petition or free speech" includes "conduct in furtherance of the exercise of the constitutional right of petition or the constitutional right of free speech in connection with a public issue or an issue of public interest." Cal. Civ. Proc. Code § 425.16(e). To

"arise from" the defendant's right of petition or free speech, "the defendant's act underlying the plaintiff's cause of action must itself have been an act in furtherance of the right of petition or free speech." 69, 78 (2002). City of Cotati v. Cashman, 29 Cal. 4th

"In deciding whether the `arising from' 14

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requirement is met, a court considers `the pleadings, and supporting and opposing affidavits stating the facts upon which the liability or defense is based.'" Civ. Proc. Code § 425.16(b)). Id. at 79 (quoting Cal.

To meet its burden, the "defendant

need not show that plaintiff's suit was brought with the intention to chill defendant's speech; the plaintiff's intentions are ultimately beside the point." Bosley Med. Inst., Inc. v.

Kremer, 403 F.3d 672, 682 (9th Cir. 2005) (internal quotation marks and citations omitted). Plaintiff's claims for misappropriation and UCL violations arise from defendants' research and publication of a book about mental health issues and therapy, which is an act in furtherance of defendants' right of free speech in connection with an issue of public interest. See, e.g., Taus v. Loftus, 40

Cal. 4th 683, 713 (2007) (investigating, writing, and publishing articles about mental health issues are acts in furtherance of the exercise of free speech in connection with a public issue); William O'Neil & Co. v. Validea.com Inc., 202 F. Supp. 2d 1113, 1119 (C.D. Cal. 2002) (book is entitled to First Amendment protections). The fact that plaintiff alleges that the protected See, e.g.,

activity was unlawful does not change this analysis.

Navellier v. Sletten, 29 Cal. 4th 82, 94 (2002) ("Plaintiff's argument `confuses the threshold question of whether the SLAPP statute [potentially] applies with the question whether [an opposing plaintiff] has established a probability of success on the merits.'" (quoting Fox Searchlight Pictures, Inc. v. Paladino, 89 Cal. App. 4th 294, 305 (2d Dist. 2001)) (alterations in original)); Lieberman v. KCOP Television, Inc., 110 Cal. App. 15

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4th 156, 165 (2d Dist. 2003) ("To say that lawful newsgathering is an act in furtherance of one's right to free speech, but unlawful newsgathering is not an act in furtherance of one's right to free speech, begs the question. . . . Once the

defendant shows that the cause of action arose from acts done in furtherance of an exercise of free speech, it becomes the plaintiff's burden to establish that the acts are not protected by the First Amendment."). Plaintiff's fraud claim arises not from the book's publication but from conversations between plaintiff and Miller that occurred in the course of Miller's research for the book. These conversations were themselves "in furtherance" of defendants' free speech rights. See Taus, 40 Cal. 4th at 713

(investigation is conduct in furtherance of free speech rights); Lieberman, 110 Cal. App. 4th at 165-66 (newsgathering is conduct in furtherance of free speech rights); cf. Shoen v. Shoen, 5 F.3d 1289, 1293 (9th Cir. 1993) (book author's conversations with sources are protected by journalist's privilege). Thus,

defendants have satisfied the initial burden of demonstrating that plaintiff's state law claims arise from defendants' acts in furtherance of their free speech rights. The court "must then determine whether the plaintiff has demonstrated a probability of prevailing on the claim[s]." Navellier, 29 Cal. 4th at 88. Plaintiff must show that the

claims are "both legally sufficient and supported by a sufficient prima facie showing of facts to sustain a favorable judgment if the evidence submitted by the plaintiff is credited." Flores v.

Emerich & Fike, 416 F. Supp. 2d 885 (E.D. Cal. 2006) (quoting 16

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Jarrow Formulas, Inc. v. LaMarche, 31 Cal. 4th 728, 741 (2003)). In contrast to the motion for judgment on the pleadings, on this prong the court "considers the pleadings and evidentiary submissions of both the plaintiff and the defendant." Cal. 4th at 741 n.10. Jarrow, 31

"[T]hough the court does not weigh the

credibility or comparative probative strength of competing evidence, it should grant the motion if, as a matter of law, the defendant's evidence supporting the motion defeats the plaintiff's attempt to establish evidentiary support for the claim." Id. 1. Fraud Claim against Miller

In California, the elements of a claim for fraud are "(a) a misrepresentation (false representation, concealment, or nondisclosure); (b) knowledge of falsity (or `scienter'); (c) intent to defraud, i.e., to induce reliance; (d) justifiable reliance; and (e) resulting damage." In re Estate of Young, 160

Cal. App. 4th 62, 79 (4th Dist. 2008) (quoting Lazar v. Super. Ct., 12 Cal. 4th 631, 638 (1996) (internal quotation marks omitted)). Under the heightened pleading requirement for claims

of fraud under Federal Rule of Civil Procedure 9(b), "a party must state with particularity the circumstances constituting fraud . . . ." Fed. R. Civ. P. 9(b). A plaintiff must include Vess v.

the "who, what, when, where, and how" of the fraud.

Ciba-Geigy Corp. USA, 317 F.3d 1097, 1106 (9th Cir. 2003) (quoting Cooper v. Pickett, 137 F.3d 616, 627 (9th Cir. 1997)). Plaintiff alleges that the following representations constitute fraud: Miler [sic] assured Shepard 17 that Shepard would be

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compensated for her writing by: (a) receiving attribution in the book for her work, (b) receiving some financial compensation from sales of the book, and (c) being included in speaking engagements in connection with the book (together, the "Representations")[.] Shepard agreed with this arrangement, and proceeded to write her portions of the book. (Compl. ¶ 16.)8 In her declaration, she provides some additional

information. In a telephone conversation on February 10, 2009, plaintiff stated that she "would only provide additional material, especially concerning [her] PSD training techniques, if [she] was paid. Ms. Miller said that she agreed, but she did not (Pl.'s

commit to a specific amount of monetary compensation."

Opp'n to Defs.' Mot. for J. on the Pleadings ("Shepard Decl.") ¶ 8(Docket No. 26); see id. ¶ 16.) In another telephone

conversation on May 29, 2009, plaintiff repeated her request for "tangible acknowledgment and financial compensation," and Miller said that plaintiff would be "taken care of." ¶ 24.) Plaintiff's claim for fraud is neither legally sufficient nor supported by the evidence. Even assuming Miller (Id. ¶ 9; see id.

represented to plaintiff that she would receive monetary compensation, plaintiff admits that the amount was never discussed, and does not describe Miller's knowledge of the

Plaintiff does not dispute defendants' contentions that, prior to the disagreement that caused defendants to attempt to remove plaintiff's work from the book, plaintiff was going to be "credited in the acknowledgment section in addition to having her website listed in the resources section" (Mem. of P. & A. in Supp. of Special Mot. of Defs. to Strike at 4:11-12) or that speaking engagements were dependent on the success of the book. (Id. at 5:11-17.) Plaintiff only alleges injury resulting from "not receiving the compensation that was promised." (Compl. ¶ 25.) Thus, the only issue is whether Miller misrepresented that plaintiff would receive monetary compensation. 18

8

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falsity or intent to defraud plaintiff; nor does plaintiff explain how her reliance was justified or what damages she incurred. Plaintiff's allegations fall far short of the

particularity required for a claim of fraud, and the claim is thus legally insufficient. Furthermore, plaintiff's fraud claim is not supported by the evidence. Defendants have presented evidence, the

authenticity of which plaintiff does not dispute, that clearly show by plaintiff's own admissions that she never received a promise of payment. For example, plaintiff wrote an e-mail to

New Page on August 12, 2009, which is referenced in her Complaint (Compl. ¶ 17), explaining that she started out by merely telling Miller her stories but ultimately wrote portions of the book, and stating that "My contributions got to be so much of the book . . . that I asked about special credit in the book which at the time she assured me I would get strongly. . . . For all that work and

time I think I deserve some kind of compensation and credit." (Defs.' Req. for Judicial Notice Ex. C (Docket No. 10).) In an

e-mail to Miller on August 17, 2009, plaintiff stated that "[i]f I am going to sign [a release] it needs to be a legally binding contract that spells out what I will get both as far as written credit in the book and whatever financial arrangements are made and agreed to if any." (Miller Decl. in Supp. of Defs.' Mot. to Most explicitly,

Strike Ex. S (Docket No. 11) (emphasis added).)

in an e-mail to Miller's attorney on August 25, 2009, plaintiff stated: I did not agree to provide [my training advice and experience as well as my advocacy experience] for free, only my personal stories. . . . I agree there was no 19

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promise of financial compensation for me to relate my personal stories, there was no discussion about what would be done for anything beyond that as I did not expect this to happen. Such discussions are happening now necessarily. (Cullen Decl. in Supp. of Defs.' Mot. to Strike Ex. D (Docket No. 14) (emphasis added).) Plaintiff's only response to her own

clear admissions that Miller never promised plaintiff financial compensation is to point to her declaration, which vaguely states that Miller promised plaintiff some kind of compensation in telephone conversations on February 10 and May 29, 2009. (Shepard Decl. ¶¶ 8-9.) Since "defendant's evidence supporting

the motion defeats the plaintiff's attempt to establish evidentiary support for the claim," Jarrow, 31 Cal. 4th at 741 n.10, plaintiff has failed to meet her burden of showing a prima facie case of fraud. Accordingly, the court will grant

defendants' special motion to strike plaintiff's claim for fraud. 2. Common Law Misappropriation Claim against All Defendants All state law causes of action falling within the scope of the federal Copyright Act are subject to preemption. Laws v.

Sony Music Entm't, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006). Preemption occurs when: (1) the work at issue comes within the subject matter of the Copyright Act; and (2) the rights granted under state law are equivalent to those protected by the Act. See 17 U.S.C. § 301(a); Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir. 1998); Valente-Kritzer Video v. Pinckney, 881 F.2d 772, 776 (9th Cir. 1989); Del Madera Prop. v. Rhodes & Gardner, Inc., 820 F.2d 973, 976 (9th Cir. 1987), overruled on other grounds by Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). 20

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The first prong of the test is satisfied wherever the work at issue comes within the subject matter of copyright as defined by 17 U.S.C. §§ 102 and 103.9 It is clear that the

material upon which plaintiff's claim for misappropriation is based is within the "subject matter" of copyright. Plaintiff's

Work is a "work of authorship" within the broad definition given by the Act. See 17 U.S.C. § 102(a)(1).10

The second prong of the test is satisfied whenever the rights protected by state law are equivalent to those protected by the Copyright Act. In order to avoid preemption, "the state

cause of action must protect rights which are qualitatively different from the copyright rights," Del Madera Properties, 820 F.2d at 977, and the "state claim must have an extra element which changes the nature of the action." marks omitted). Id. (internal quotation

A court "should not rely merely on a laundry

list of the alleged elements of the state law claims at issue, such that the mere possibility of an extra element protects a claim from preemption." Idema v. Dreamworks, Inc., 162 F. Supp.

2d 1129, 1190 (C.D. Cal. 2001) (internal quotation marks omitted).
9

Rather, the court must "engage in a fact-specific

The "subject matter" of copyright includes "original works of authorship fixed in any tangible medium of expression," including "literary works." 17 U.S.C. § 102(a). Also within the "subject matter" of copyright are "compilations and derivative works." 17 U.S.C. § 103(a). It is irrelevant whether the work in question is actually protected by copyright because "the subject matter of copyright is broader than copyright protection . . . ." Firoozye v. Earthlink Network, 153 F. Supp. 2d 1115, 1124 (N.D. Cal. 2001). Rather, "the issue for the purpose of a preemption analysis is whether the work involved is a kind of work that comes within the subject matter of the Copyright Act." Id. at 1125. 21
10

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inquiry into the actual allegations underlying the claims at issue in the case, so as to determine whether the gravamen of the state law claim asserted is the same as the rights protected by the Copyright Act." Id. The court considers whether the state

law claims as asserted are equivalent to a federal copyright claim. Id. Plaintiff has not alleged any extra element in her misappropriation claim that could save it from preemption. Common law misappropriation "is normally invoked in an effort to protect something of value not otherwise covered by patent or copyright law, trade secret law, breach of confidential relationship, or some other form of unfair competition." City

Solutions, Inc. v. Clear Channel Commc'ns, 365 F.3d 835, 842 (9th Cir. 2004) (quoting U.S. Golf Ass'n v. Arroyo Software Corp., 69 Cal. App. 4th 607, 618 (1st Dist. 1999)). The elements of a

claim for misappropriation, which plaintiff has practically pled verbatim, are: (a) the plaintiff invested substantial time, skill or money in developing its property; (b) the defendant appropriated and used plaintiff's property at little or no cost to defendant; (c) the defendant's appropriation and use of the plaintiff's property was without the authorization or consent of the plaintiff; and (d) the plaintiff can establish that it has been injured by the defendant's conduct. Arroyo, 69 Cal. App. 4th at 618. Plaintiff's misappropriation

claim is based solely on rights equivalent to those granted by the Copyright Act, which grants, inter alia, exclusive rights to reproduce the work, prepare derivative works, and distribute copies. 17 U.S.C. § 106. Since a claim for misappropriation of

a work protected by copyright contains no extra element to 22

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distinguish it from a copyright infringement claim, it is preempted. See Xerox Corp. v. Apple Computer, Inc., 734 F. Supp.

1542, 1550 n.15 (N.D. Cal. 1990) ("State law claims of unfair competition based on misappropriation of copyrighted material are preempted by the Copyright Act." (quoting Del Madera, 820 F.2d at 977)).11 Since plaintiff cannot establish a probability of

prevailing, the court must grant defendants' special motion to strike plaintiff's misappropriation claim. 3. UCL Claim against All Defendants

Plaintiff's UCL claim is similarly preempted, and thus she cannot establish a probability of prevailing. The claim is

based on a theory of "reverse passing-off," which is essentially equivalent to misappropriation: a defendant passes off the plaintiff's work as the defendant's own work.12 F. Supp. at 1550. Xerox Corp., 734

A claim of reverse passing-off brought under

the UCL contains no extra element to distinguish it from copyright infringement, and thus it is preempted by the Copyright Act. Id. at 1550 n.15; see Kodadek, 152 F.3d at 1213 ("[I]f B is

selling B's products and representing to the public that they are B's products, a claim by A that B's products replicate A's is a

11 Plaintiff essentially concedes that this claim is preempted, but argues that the court should view it as an implied-in-fact contract claim under Weitzenkorn v. Lesser, 40 Cal. 2d 778 (1953). This argument fails for two reasons. First, plaintiff has not pled an implied-in-fact contract, and second, the existence of such a contract would not affect the preemption analysis. Thus, giving plaintiff leave to amend would be futile.

Reverse passing-off is different from passing-off, "the selling of a good of one's own creation under the name or trademark of another," Xerox Corp. v. Apple Computer, Inc., 734 F. Supp. 1542, 1550 n.15 (N.D. Cal. 1990), which is not preempted by the Copyright Act. Id. 23

12

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disguised copyright infringement claim and is preempted." (citing 1 Nimmer on Copyright § 1.01[B][1][e] at 1-24, n.110)). Accordingly, the court must grant defendants' special motion to strike plaintiff's UCL claim. IT IS THEREFORE ORDERED that defendants' special motion to strike be, and the same hereby is, GRANTED. IT IS FURTHER ORDERED that defendants' motion for judgment on the pleadings be, and the same hereby is, DENIED with respect to plaintiff's claim for copyright infringement. DATED: December 14, 2010

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