Miller v. Facebook, Inc. et al

Filing 114

MOTION for Summary Judgment RE CONTRIBUTORY COPYRIGHT INFRINGEMENT filed by Facebook, Inc. Motion Hearing set for 4/7/2011 08:00 AM in Courtroom 9, 19th Floor, San Francisco before Hon. William Alsup. (Attachments: # 1 Proposed Order)(Avalos, Julio) (Filed on 3/3/2011) Modified on 3/4/2011 (wsn, COURT STAFF).

Miller v. Facebook, Inc. et al

Doc. 114

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I. NEEL CHATTERJEE (STATE BAR NO. 173985) [e-mail] JULIO C. AVALOS (STATE BAR NO. 255350) [e-mail] ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: [phone] Facsimile: 650-614-7401 Attorneys for Defendant FACEBOOK, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

DANIEL M. MILLER, Plaintiff, v. FACEBOOK, INC. and YAO WEI YEO, Defendants.

Case No. 3:10-CV-00264 (WHA) FACEBOOK'S NOTICE OF AND MOTION FOR SUMMARY JUDGMENT RE CONTRIBUTORY COPYRIGHT INFRINGEMENT Date: Time: Court: Judge: April 7, 2011 8:00 A.M. Courtroom 9, 19th Floor Honorable William Alsup

FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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NOTICE OF MOTION AND MOTION TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that on April 7, 2011 at 8:00 a.m. or as soon thereafter as the matter may be heard, in the courtroom of the Honorable William Alsup, United States District Court, 450 Golden Gate Avenue, San Francisco, CA 94102, Facebook, Inc. ("Facebook") will

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FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

move the court for summary judgment on Facebook's Motion re Contributory Copyright Infringement. This motion is based on the Notice of Motion and Motion, the supporting Memorandum of Points and Authorities, all pleadings on file in this action, deposition testimony from Counterdefendant Miller, supporting declarations and exhibits, oral argument of counsel, and any other matter that may be submitted at the hearing. Dated: March 3, 2011 ORRICK, HERRINGTON & SUTCLIFFE LLP /s/ Julio C. Avalos Julio C. Avalos Attorneys for Defendant FACEBOOK, INC.

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 V. III. IV. I. II.

TABLE OF CONTENTS Page INTRODUCTION .............................................................................................................. 1 FACTS ................................................................................................................................ 1 A. Facebook Generally ................................................................................................ 1 1. Users Release Facebook of Liability for Third Party Content as a Condition of Access .................................................................................... 2 2. Facebook's Policies to Address Infringement Issues .................................. 4 B. The Boomshine Game ............................................................................................. 4 C. ChainRxn ................................................................................................................ 5 D. Plaintiff's Claims Of Copyright Infringement ........................................................ 5 SUMMARY JUDGMENT STANDARD ........................................................................... 8 ARGUMENT ...................................................................................................................... 9 A. Miller Released Facebook of Liability for Third Party Content ............................. 9 B. Plaintiff Cannot Establish Direct Infringement .................................................... 11 1. Plaintiff Cannot Establish Access to The Copyrighted Work................... 11 2. ChainRxn Does Not Use Boomshine's Protectable Elements. ................. 13 C. Miller Cannot Establish Indirect Infringement Liability ...................................... 17 1. Miller's Letters Are Too Vague to Establish That Facebook Materially Contributed to or Induced Infringement ................. 18 a. The May 7, 2009 Letter Was Fatally Flawed................................ 19 b. The June 15, 2009 Letter Was Fatally Flawed.............................. 21 2. Miller Cannot Establish Knowledge Under the Facts ............................... 21 CONCLUSION ................................................................................................................. 22

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TABLE OF AUTHORITIES FEDERAL CASES Page(s) Allen v. Academic Games League of America, Inc., 89 F.3d 614 (9th Cir. 1996)..................................................................................................... 14 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986) .......................................................... 8 Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994)............................................................................................. 13, 14 Art Attacks Ink, LLC v. MGA Entm't, 581 F.3d 1138 (9th Cir. 2009)....................................................................................... 1, 11, 12 Atari, Inc. v. Amusement World, Inc., 547 F. Supp. 222 (D. Md. 1981) ........................................................................... 14, 15, 16, 17 Brown Bag Software v. Symantec Corp., 960 F.2d 1465 (9th Cir. 1992)................................................................................................. 14 Capcom U.SA., Inc. v. Data East Corp., No. C 93-3259 WHO, 1994 U.S. Dist. LEXIS 5306, (N.D. Cal. March 18, 1994) .................................................................................................... 13 Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir. 2002)................................................................................................... 13 Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986) .......................................................... 1 Contessa Food Prods., v. Lockpur Fish Processing Co., 123 Fed. Appx. 747, 751 (9th Cir. 2005) ................................................................................ 11 Data East USA, Inc. v. EPYX, 862 F.2d 204 (9th Cir. 1988)....................................................................................... 14, 15, 17 DiSiomone v. Browner, 121 F.3d 1262 (9th Cir. 1997)................................................................................................. 10 Ellis v. Diffie, 177 F.3d 503 (6th Cir. 1999)................................................................................................... 11 In re Facebook PPC Adver. Litig., No. 5:09-CV-03043, 2010 U.S. Dist. LEXIS 39776 (N.D. Cal. April 22, 2010) ................... 10 Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) ................................................................................................................ 11 Frybarger v. IBM Corp., 812 F.2d 525 (9th Cir. 1987)................................................................................................... 13 -iFACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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TABLE OF AUTHORITIES (Cont.) FEDERAL CASES

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Funky Films, Inc. v. Time Warner Ent't Co., 462 F.3d 1072 (9th Cir. 2006)................................................................................................. 13 Greenwich Ins. Co. v. Media Breakaway, LLC, No. CV08-937 CAS, 2009 U.S. Dist. LEXIS 63454 (C.D. Cal. Jul. 22, 2009 ) ......................................................... 8 Hendrickson v. eBay, 165 F. Supp. 2d 1082 (C. D. Cal. Sept. 6, 2001) .................................................................... 20 Incredible Technologies, Inc. v. Virtual Technologies, Inc., 400 F.3d 1007 (7th Cir. 2005)................................................................................................. 14 Maxit Designs, Inc. v. Coville, Inc., No. CIV. S-0501040 WBS DAD, 2006 U.S. Dist. LEXIS 68838 (E.D. Cal. Sept. 25, 2006) ...................................................... 10 Milligan v. Worldwide Tupperware, Inc., 972 F. Supp. 158 (W.D.N.Y. 1997) .......................................................................................... 8 Pasillas v. McDonald's Corp., 927 F.2d 440 (9th Cir. 1991)................................................................................................... 14 Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)............................................................................................. 1, 18 Perfect 10, Inc. v. Amazon.com, Inc., No. CV 05-4753 AHM (SHx), 2009 U.S. Dist. LEXIS 42341 (C.D. Cal. May 12, 2009) ...................................................... 20 Perfect 10, Inc., v. CC Bill LLC, 488 F. 3d 1102 at 1114...................................................................................................... 20, 21 Perfect 10, Inc. v. Google, No. CV 04-9484 AHM (SHx), 2010 U.S. Dist. LEXIS 75071 (C.D. Cal. July 26, 2010) ....................................................... 18 Perfect 10, Inc. v. Visa Int'l Serv., Ass'n, 494 F.3d 788 (9th Cir. 2007)................................................................................................... 18 Register.com, Inc., v. Verio, Inc., 356 F.3d 393 (2d Cir. 2004) ...................................................................................................... 9 Religious Tech. Ctr. V. Netcom On-Line Commun. Servs., 907 F. Supp. 1361 (N.D. Cal. Nov. 21, 1995) ........................................................................ 11 Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003)................................................................................................. 12 Rosen v. Hosting Servs., Inc., No. CV10-2186-CAS, 2010 WL. 5630637 (C.D. Cal. Aug. 16, 2010) ....................................................................... 18

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3 Page(s) 4 5 6 7 8 9 10 FEDERAL STATUTES 11 17 U.S.C. § 512(c)(3) .................................................................................................................... 19 12 17 U.S.C. 512(c)(3)(iii) ................................................................................................................. 20 13 17 U.S.C. §§ 512(c)(3)(v) & (vi) .................................................................................................. 21 14 17 U.S.C. § 512(d) ....................................................................................................................... 19 15 17 U.S.C. § 512(d)(3) ....................................................................................................... 19, 20, 21 16 35 U.S.C. § 102(b) .............................................................................................................. 1, 14, 16 17 Fed. R. Civ. P. 56(c).................................................................................................................... 8, 9 18 MISCELLANEOUS 19 20 21 22 23 24 25 26 27 28 - iii FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

Shum v. Intel Corp., No. C-02-03262-DLJ, 2008 U.S. Dist. LEXIS 83005 (N.D. Cal. Sept. 26, 2008) ................. 10 Sid & Marty Krofft Television Products, Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977)................................................................................................. 11 ViCHIP Corp. v. Lee, 438 F. Supp. 2d 1087 (N.D. Cal. 2006) .................................................................................... 8 Young v. Facebook, Inc., No. 5:10-cv-03579-JF/PVT, 2010 U.S. LEXIS 116530 (N.D. Cal. Oct. 25, 2010) ............... 10

Cal. Bus. Law Deskbook § 26:14 (2010 ed.) ................................................................................ 13

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MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION This is a case seeking to hold Facebook, Inc. ("Facebook") liable for a third party video game simply because the video game's creator used the Facebook website as one means to make the game available on the Internet. Miller's claim of indirect copyright infringement fails for the following reasons: 1. Release. Miller expressly released Facebook from liability associated with third party content, such as the third party video game at issue. No copying. Miller cannot prove access, an essential element of his infringement claim. His only evidence is that his game was available as one of trillions of web pages on the Internet. His claim is nothing more than speculation. Art Attacks Ink, LLC v. MGA Entm't, 581 F.3d 1138 (9th Cir. 2009). No protectable elements. Miller cannot show any protectable elements were copied. Miller's game does not have characters or a story. It is an extremely elemental game. The similarity between the two games arises from the similar game mechanics, which copyright does not protect. 35 USC § 102(b); Data East USA, Inc. v. EPYX, 862 F.2d 204 (9th Cir. 1988) ("Data East"). No indirect infringement. Due to the inaccuracy and incompleteness of Miller's communications, Facebook's actions were reasonable and did not materially contribute to the alleged infringement. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007).

Facebook had no control over the conduct at issue. It did not create the content. It did not host the content. Indeed, the game may be played and is available today through its presumed creator's own website, and Plaintiff has done nothing to take it down or to block its availability to the world. In short, Miller's case is bankrupt when it comes to facts to support his claim. On that basis, summary judgment in favor of Facebook is warranted. II. FACTS A. Facebook Generally.

Facebook is one of the most popular websites in the world with over 500 million active users. See Dkt. 71, Facebook's Answer to Plaintiff's Second Amended Complaint and Counterclaims ("Counterclaims"), ¶ 5. Facebook provides an interactive social networking

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service that allows its users to connect with friends, family, and coworkers. Id. The Facebook service is available at www.facebook.com. One of Facebook's services is Facebook Platform. Facebook Platform allows third party developers to offer their own independent applications to Facebook users through the Facebook website. Declaration of Julie Tung ("Tung Decl."), ¶ 3. These applications are not created by or hosted on Facebook's servers. Plaintiff's Second Amended Complaint ("SAC"), ¶ 19; see also Avalos Decl., Ex. A at 266:17-23, Ex. F at 100:12-18. Instead, third party applications reside on external third party servers and are connected to users through a set of Application Programming Interfaces ("API") and tools, such as "iFrame."1 Id., Ex. A at 269:7-18. There are currently tens of thousands of third-party applications available on the Facebook website. Tung Decl., ¶ 6. 1. Users Release Facebook of Liability for Third Party Content as a Condition of Access.

As a condition of using Facebook's website, all potential users are required to register and agree to Facebook's Terms of Use (now referred to as "Statement of Rights and Responsibilities" or "SRR"). Registrants agree that Facebook reserves the right to amend its SRR. Since its launch, Facebook has updated its governing provisions to account for the new innovations and services provided to its users. Declaration of Ali Grabler ("Grabler Decl.") Decl., ¶ 6. Miller registered for a Facebook account on February 12, 2006. See Decl. of Tina Doshi In Support of Facebook Inc.'s Motion to Transfer Venue, Dkt. 13-3, ¶ 3. Miller is an active user of Facebook. Declaration of Julio C. Avalos ("Avalos Decl."), Ex. A at 266:5-10. Since the first time Miller joined Facebook, he has consistently agreed through the SRR that Facebook would not be liable for content made available on the Facebook website by third-parties. Miller uses the Facebook website to interact with friends, promote his `K2xL' company and its website, and to provide a game for Facebook users. See Court Order Granting Facebook Inc.'s Motion to Transfer Venue, Dkt. 17 at 4.

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A Facebook "iFrame" is a frame within a Facebook canvas page that allows a third-party developer to transmit his or her application to Facebook users from a third-party website. -2FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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It is undisputed that when he registered his Facebook account, Miller agreed to Facebook's SRR. Id. at 2; see Dkt. 13-3, ¶¶ 4-5. He checked a box representing that: "I have read and agree to the Terms of Use." The registration process could not be completed without checking this box. Id., ¶ 5. At the time, the SRR stated: Facebook is not responsible for the conduct, whether online or offline, of any user of the Web site or Member of the Service ... Under no circumstances will the Company be responsible for any loss or damage, including personal injury or death, resulting from anyone's use of the Web site or the Service, any Content posted on or through the Web site or the Service or transmitted to Members, or any interactions between users of the Web site or Members, whether online or offline. Id., Ex. A, at 3 & 4 (emphasis added). In addition, Facebook expressly reserved the right to amend the SRR. Id. at 1 ("We reserve the right, at our sole discretion, to change, modify, add, or

11 delete these Terms of Use at any time without further notice." ). Plaintiff assented to these SRR 12 by completing the registration process and continuing to use Facebook's services. Id., ¶¶ 3-4. 13 On or around October 23, 2006, Facebook updated its SRR. Facebook required the same 14 agreement in the revised terms of service which stated that Facebook would not be liable for third 15 party content made available through Facebook. In relevant part, the SRR stated: 16 17 18 19 20 21 22 23 24 25 26 27 28
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You agree not to hold Facebook responsible or liable for the user Content or actions of third parties (including your interactions with users) on or relating to the Facebook Service . . . If you have a dispute with a third party relating to the Facebook Service, you release Facebook and its directors, officers, employees and agents (collectively "Facebook Entities") from any claims, causes of action and damages (actual or consequential) of every kind and nature, known and unknown, arising out of or in any way connected with such dispute.2 Grabler Decl., Ex. B (emphasis added).

This provision remained virtually unchanged through at least August 2009 when it was updated to state: "FACEBOOK IS NOT RESPONSIBLE FOR THE ACTIONS, CONTENT, INFORMATION, OR DATA OF THIRD PARTIES, AND YOU RELEASE US, OUR DIRECTORS, OFFICERS, EMPLOYEES, AND AGENTS FROM ANY CLAIMS AND DAMAGES, KNOWN AND UNKNOWN, ARISING OUT OF OR IN ANY WAY CONNECTED WITH ANY CLAIM YOU HAVE AGAINST ANY SUCH THIRD PARTIES." Grabler Decl., Ex. C. This provision remains in place today. -3FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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2.

Facebook's Policies to Address Infringement Issues.

Facebook engages in substantial efforts to combat infringement. Facebook's SRR expressly requires users to not use others' content. Specifically, the SRR requires that users represent and warrant that they own or have the necessary rights in the content that they post on the service. Id., Ex. A at ¶ 2.1. The SRR also states that Facebook reserves the right to remove content without prior notice if it violates the terms of use, and to terminate access for any user determined to be a repeat infringer. Id. at ¶¶ 5.2 & 5.5. Facebook also has a system in place for receiving notices of intellectual property infringement on the website. Facebook users may notify Facebook of infringement claims by accessing the "How to Report Claims of Intellectual Property Infringement," included in the SRR under the section titled, "Protecting Other People's Rights." Id. at ¶ 5. This link directs users to a web page which provides access to a form compliant with Digital Millennium Copyright Act ("DMCA"), as well as contact information for Facebook's DMCA designated agent. See Grabler Decl., Ex. E. In May of 2009, Facebook's designated agent contact information was as follows: Agent: Address: Theodore W. Ullyot 151 University Avenue, Palo Alto, Ca, 94301 Email: Fax: [e-mail] [phone]

The Boomshine Game.

Miller claims that on May 5, 2009, a copyright was registered for the Boomshine "computer file." SAC, ¶ 12. He further claims that this registration covers a video game called Boomshine that he made available on his website, www.k2xl.com. SAC, ¶ 12. This game has been described as a "chain reaction type game." Id. ¶ 10; see also Avalos Decl., Ex. B. Boomshine has no story line. It has no characters. The game is of the most minimal in design. The design is extremely closely linked to the procedures of the game. Roughly speaking, Boomshine includes the following components: (a) a game title screen, (b) a level introduction -4FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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screen, (c) background music, (d) game sound effects, (e) a game background or playing field, (f) moving balls, dots or objects beginning with random position and trajectory, and when their motion takes them to the edge of the game screen, they bounce back into the game playfield, (g) a scoring system, (h) level success indicator, (i) an end screen, and (j) a game completion screen. Screenshots reflecting these parts are attached hereto. Avalos Decl., Ex. C. Plaintiff has never made Boomshine available on Facebook. Id. Ex. A , at 45:13. C. ChainRxn.

ChainRxn is the other video game at issue in this case. The game is hosted on a third party website, http://chainrxn.zwigglers.com.3 SAC, ¶ 18. The game is alleged to have been created by Yeo, not Facebook. SAC, ¶ 19. However, no one involved in this litigation knows for certain who, when, or how ChainRxn was developed. All that is known is that someone who operates under the name Yao Wei Yeo is affiliated with the ChainRxn game in some way. Like Boomshine, ChainRxn is a very simple chain reaction-type game. Avalos Decl., Ex. B, at 4, ¶ 5. It shares many features common to the genre. Screenshots of the ChainRxn game currently available at the Zwigglers website are attached as Exhibit D to the Avalos Declaration. There are also many differences between the ChainRxn and Boomshine games. For example, the two games have different music, different color choices, different scoring mechanisms and graphical depictions, different starting and ending pages, and differences in aspects of page layout. Other than the basic game mechanics (or rules) of the game, the differences are substantial. They are described in detail in the Expert Declaration of David Crane as well Mr. Crane's concurrently-filed declaration. Avalos Decl., Ex. E; Declaration of David Crane ("Crane Decl."), ¶¶ 31-82, Ex. 13 . Miller claims that ChainRxn was made available through Facebook Platform. D. Plaintiff's Claims Of Copyright Infringement.

Miller has no facts that defendant Yeo copied any aspect of the Boomshine game for any purpose. Specifically, when asked whether he was "aware of any facts that Yeo copied
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Boomshine by improperly accessing and decompiling the Boomshine source code with a decompiling program," Miller testified simply: "No." Avalos Decl., Ex. A at 27:13-25. When asked whether he knew "if Defendant Yeo ever viewed the Boomshine application via the K2xL.com website," Miller again answered simply, "No." Id. at 28:18-20. The sole facts related to access that Miller has identified is that his game was available among the trillions of web pages on the Internet. Avalos Decl., Ex. G at 16. The battle between Miller and Zwigglers Apps began on April 30, 2009. On that day, Miller apparently contacted "Zwigglers Apps" through the Facebook website and asked Zwigglers Apps to remove ChainRxn from Facebook, alleging that the game was a "direct duplication" of Boomshine. Avalos Decl., Ex. I. Shortly thereafter, Zwigglers Apps responded and said ChainRxn was not a direct duplication of the Boomshine game. Notwithstanding the absence of any knowledge or evidence of any copying by the designers of the ChainRxn game and an express denial of copying by Zwigglers Apps, an attorney named Robert Madayag sent a letter to Facebook at its general address. Avalos Decl., Ex. H at 62:11-17; see also Declaration of Randolph Moon ("Moon Decl.") Ex. B. The letter was sent on May 7, 2007. The letter complained of the ChainRxn game. The letter was inaccurate in nearly every way. The following significant errors existed: 1. Failure to identify the proper owner. The letter purported to be sent on behalf of an entity named "K2xL," not Miller. In fact, Madayag never mentioned Miller nor identified him as the owner of the rights in Boomshine. Instead, Miller was merely cc'd at the end of the letter without explanation. Failure to identify the proper location of the challenged content. The letter errantly demanded that Facebook disable "only the portion of the ChainRxn Facebook Website containing material infringing K2xL's rights," (emphasis added). The Facebook website did not then, and has not ever hosted any content related to ChainRxn. The letter also incorrectly indicated that the infringing material was located at the ChainRxn's Facebook profile page URL. Moon Decl., Ex. B; see also Avalos Decl., Ex. H at 41: 21-25. No game was ever located on ChainRxn's profile page, which merely includes data and commentary about the game. Notably, the letter did not reference Facebook's Application Directory listing for ChainRxn. Failure to identify specific copyrighted material at issue. The letter merely stated that Zwigglers "copied content" from K2XL's website at -6FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

2.

3.

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http:k2xl.com/games/boomshine. The letter adds that the identified game copies "proprietary and copyrighted materials." A number of other deficiencies existed in the letter. The letter was not delivered to the proper individuals. Specifically, the letter was not originally sent to Facebook's designated agent for intellectual property notices, as specified in the SRR or designation on file with the U.S. Copyright Office. Compare Grabler Decl, Ex. E with Moon Decl. Ex. B . The letter was not signed under penalty of perjury. The letter did not include a statement that Mr. Madayag was authorized to act on behalf of the copyright owner or a good faith belief that the alleged infringement was unauthorized. See Avalos Decl., Ex. H at 60:17-20; see also Moon Decl., Ex. B. About two weeks later, Mr. Madayag e-mailed a copy of the May 7th Letter to [e-mail], Facebook's identified agent for alleged infringement notices. Moon Decl., Ex. A; Avalos Decl., Ex. H at 69:3-11. Within two days, Facebook responded to Mr. Madayag's e-mail. Facebook informed Plaintiff his assertion that the Facebook website contained infringing content was wrong because ChainRxn "was created and is operated by a third party developer." Facebook followed that it "does not have the ability to control the content made available through the application." See Moon Decl., Ex. A. Facebook also informed Mr. Madayag that a copy of his allegations would be forwarded to the application developer to resolve Plaintiff's concerns. Id. On the same day, Facebook emailed Yeo and provided him with a copy of Plaintiff's infringement allegations. Id., Ex. C. Facebook also demanded that Yeo remove or disable ChainRxn immediately if it was in fact infringing. Id. Yeo responded that he has received a similar letter and was seeking legal advice. Id. On that basis, Facebook took no further action. Id., ¶ 14. Nearly a month later, Facebook received a second letter from Mr. Madayag ("June 15th Letter").4 Id., Exs. A & B. This letter once again errantly indicated that the allegedly infringing
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material was located at ChainRxn's Facebook profile page. Id., Ex. B. Again, no reference was made to the ChainRxn listing in Facebook's Application Directory. Without a factual basis, the letter stated ChainRxn "copied" Boomshine. The letter also once again failed to identify Miller as the owner of the allegedly infringed work. Id. Days later, Facebook once again responded and inquired as to whether Plaintiff had been in contact with Defendant Yeo regarding the alleged infringement. Id., Ex. A. Facebook informed Plaintiff that it had emailed Yeo with a copy of Miller's latest complaint and requested that Plaintiff "let [Facebook] know if they do not contact you in 48 hours." Id. Madayag never responded to this e-mail. Avalos Decl., Ex. H at 79:15-80:11. That same day, Facebook emailed Defendant Yeo and requested he "address this matter with all due urgency." Moon Decl., Ex. C. Yeo responded to Facebook indicating that he had already responded to them, but would do so again in case they failed to register Yeo's response. Id. Facebook did not receive any further communications from Plaintiff or Yeo and believed the issue had been resolved. Id., ¶11. Because Facebook felt the issue was addressed, it took no further action. Id. Miller sued Facebook several months later. III. SUMMARY JUDGMENT STANDARD Summary judgment is appropriate where "there is no genuine issue as to any material fact" and "the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). "Material facts are those which may affect the outcome of the case." ViCHIP Corp. v. Lee, 438 F.Supp.2d 1087, 1092-93 (N.D. Cal. 2006) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986)). "In copyright cases, summary judgment is routinely granted when no reasonable person could find the works substantially similar or when the alleged similarity concerns only non-copyrightable elements of the subject work." Milligan v. Worldwide Tupperware, Inc., 972 F.Supp. 158, 161 (W.D.N.Y. 1997) (internal citations omitted). "The moving party has the initial burden of identifying relevant portions of the record that demonstrate the absence of a fact or facts necessary for one or more essential elements of each cause of action upon which the moving party seeks judgment." Greenwich Ins. Co. v. Media Breakaway, LLC, No. CV08-937 CAS, 2009 U.S. Dist. LEXIS 63454, *13 (C.D. Cal. Jul. 22, -8FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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2009 ) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986)). "If the moving party has sustained its burden, the nonmoving party must then identify specific facts, drawn from materials on file, that demonstrate that there is a dispute as to material facts on the elements that the moving party has contested." Id. at *13-14, citing, Fed. R. Civ. P. 56(c). There are no material facts in dispute. IV. ARGUMENT A. Miller Released Facebook of Liability for Third Party Content.

As a matter of law, Miller has released Facebook of liability for all third party content, such as the ChainRxn game. Miller concedes he has been a registered and continuous Facebook user since February 12, 2006. Dkt. 111, ¶ 2. In order to be a registered user, Miller agreed to Facebook's SRR. Dkt. 13, ¶ 3. And by agreeing to the SRR, Miller expressly released Facebook from liability for third-party content available on its website. At all relevant times, Facebook's SRR have included a release of liability for third-party content made available through the Facebook website. See Grabler Exs., A-C. The law of the case dictates that Facebook's SRR are a valid contract, are binding on Plaintiff in this action, and that Facebook is released from liability for third party content. On January 15, 2010, the Northern District of Georgia enforced a term of the SRR against Miller and found he was bound by Facebook's SRR. See Dkt. 17. The court noted that "[i]t is standard contract doctrine that when a benefit is offered subject to stated conditions, and the offeree makes a decision to take the benefit with the knowledge of the terms of the offer, the taking constitutes an acceptance of the terms, which accordingly become binding on the offeree." Id. at 3 (quoting Register.com, Inc., v. Verio, Inc., 356 F.3d 393, 403 (2d Cir. 2004) (finding defendant's online terms of service binding on plaintiff where "benefit [was] offered subject to stated conditions, and the offeree [made] a decision to take the benefit with knowledge of the terms of the offer") (other citations omitted). The same conclusion necessarily applies here. Under the law of the case, this Court should recognize and adopt issues previously decided in this litigation, including those relating to -9FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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contract enforcement. See DiSiomone v. Browner, 121 F.3d 1262, 1266-67 (9th Cir. 1997) ("no litigant deserves an opportunity to go over the same ground twice, hoping that the passage of time or changes in the composition of the court will provide a more favorable result the second time"); Shum v. Intel Corp., No. C-02-03262-DLJ, 2008 U.S. Dist. LEXIS 83005 , *33(N.D. Cal. Sept. 26, 2008) (court found that where it had already made several pre-trial rulings on the meaning of contract terms, they remained "law of the case"); see also Maxit Designs, Inc. v. Coville, Inc., No. CIV. S-0501040 WBS DAD, 2006 U.S. Dist. LEXIS 68838 (E.D. Cal. Sept. 25, 2006) ("law of the case" doctrine applied to enforce arbitration clause found in numerous contracts between the parties where the court had previously enforced an identical arbitration clause in a different contract between the parties). Because the Northern District of Georgia has found that Miller is bound to the SRR, this Court must do the same. Moreover, courts have routinely applied the liability disclaimer in Facebook's SRR to dismiss claims against Facebook. In Young v. Facebook, the court found that plaintiff's allegation that Facebook breached the implied covenant of good faith and fair dealing by failing to provide safety services "is without merit because . . . Facebook expressly disclaimed any duty to protect users' online safety." Young v. Facebook, Inc., No. 5:10-cv-03579-JF/PVT, 2010 U.S. LEXIS 116530, *14, (N.D. Cal. Oct. 25, 2010). In dismissing plaintiff's Breach of Contract and Negligence claims, the court again cited to Facebook's liability disclaimer for the alleged conduct. Id. at *11, *16; see also In re Facebook PPC Adver. Litig., No. 5:09-CV-03043, 2010 U.S. Dist. LEXIS 39776, *13 (N.D. Cal. April 22, 2010) (enforcing disclaimer of liability in Facebook's SRR to block claims relating to third-party behavior). This Court should reach the same conclusion as other courts faced with similar issues. Facebook's SRR make clear that users releaser Facebook from all liability for third party content as a condition of access to the service. Miller's entire direct infringement complaint rests on third party content, which has been released as to Facebook. Accordingly, summary judgment is warranted. /// /// - 10 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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B.

Plaintiff Cannot Establish Direct Infringement.

Facebook is also entitled to summary judgment because Miller cannot prove direct infringement by Yeo or anyone else. "[T]here can be no contributory infringement by a defendant without direct infringement by another." Religious Tech. Ctr. V. Netcom On-Line Commun. Servs., 907 F.Supp. 1361, 1371 (N.D. Cal. Nov. 21, 1995). See also Contessa Food Prods., v. Lockpur Fish Processing Co., 123 Fed. Appx. 747, 751 (9th Cir. 2005) ("[D]irect infringement by a primary infringer" is required to establish contributory infringement.). To establish direct copyright infringement, a plaintiff must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Miller cannot prove that Yeo illegally copied the expressive constituent elements of his game. Because Miller has no direct evidence of copying, Plaintiff must prove "(1) the defendant's access to the copyrighted work prior to defendant's creation of its work, and (2) the substantial similarity of both the general ideas and expression between the copyrighted work and defendant's work." Data East USA, Inc., v. EPYX, 862 F.2d 204, 206 (9th Cir. 1988); Sid & Marty Krofft Television Products, Inc. v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir. 1977). Miller cannot satisfy either prong. 1. Plaintiff Cannot Establish Access to The Copyrighted Work.

Miller's sole claim of access by the so-called direct infringer is that "Boomshine has been available to anyone with Internet access since it was first published in March, 2007." Avalos Decl., Ex. G at 16. This is not enough to withstand summary judgment. "To prove access, a plaintiff must show a reasonable possibility, not merely a bare possibility, that an alleged infringer had the chance to view the protected work." Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1143 (9th Cir. 2009) (cf. Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999) ("access may not be inferred through mere speculation or conjecture") (citing 4 NIMMER § 13.02[A]). It is no more than speculation that Miller believes his website was stumbled upon by an unspecified web application developer at an unspecified time and took action to literally copy the expressive elements of his game. - 11 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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The Ninth Circuit's opinion in Art Attacks is instructive. Art Attacks sold "Spoiled Brats" themed T-shirts in 1996. Id. at 1141. Art Attacks sold their airbrushed designs from an online website as well as at booths at several county fairs throughout southern California. Id. It was undisputed that "[m]illions of fair attendees ha[d] walked past the booth over the years." Id. at 1142. Art Attacks sued MGA Entertainment, Inc. ("MGA") for copyright infringement claiming that MGA's `Bratz' dolls were substantially similar. Id. To prove access, Art Attacks presented evidence that "an MGA decision-maker may have attended a county fair at which Art Attacks displayed the Spoiled Brats designs" and that the designs were available on the Internet. Id. at 1143. The Ninth Circuit found this evidence insufficient to establish access. The Court found that there was no "direct evidence that [the decision-maker] ever saw an Art Attacks booth." Id. at 1144. "Furthermore, Art Attacks has failed to show that [the decision-maker] visited the Los Angeles County Fair during the relevant period. Though there may be some slight chance that [the decision-maker] did visit the fair sometime during the relevant period, that chance does not create more than a `bare possibility' of a chain of events linking Art Attacks designs to MGA." Id. Turning to the availability of the content on the Internet, the court found that plaintiff had not established the requisite wide dissemination despite the fact that the copyrighted works had been available on the Internet for a full five years before defendant created the allegedly infringing work. Id. at 1145 ("Although we recognize the power of the internet to reach a wide and diverse audience, the evidence here is not sufficient to demonstrate wide dissemination."); see also Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003) (finding sale of 17,000 copies of the copyrighted work insufficient to establish wide dissemination.). The undisputed facts before this Court present an even more compelling argument against a finding of access than those in the Art Attacks opinion. Art Attacks introduced some evidence of ability to access through large scale trade shows in addition to mere availability on the Internet. All Miller has shown is the availability on the Internet among the trillions of other websites in existence.5 This is not enough, and Miller's accusation of access to support copying rests solely
5

Miller also cannot establish access because he has no idea when ChainRxn was created. He readily admits that availability on a website is different from the date of creation of code. Avalos Decl., Ex. A at 177:10-16. - 12 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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on speculation.6 On that basis alone, summary judgment in favor of Facebook is warranted. 2. ChainRxn Does Not Use Boomshine's Protectable Elements.7

Video games such as Boomshine are entitled to a very thin layer of copyright protection. See, e.g., Capcom U.SA., Inc. v. Data East Corp., No. C 93-3259 WHO, 1994 U.S. Dist. LEXIS 5306, *26 (N.D. Cal. March 18, 1994) (finding that because video games "consist of abstract rules and play ideas," "[i]t follows, therefore, that audiovisual works like the two presently before the Court are largely unprotectable games"). In a videogame or graphical user interface case, the Ninth Circuit requires "analytical dissection of" the similarities between the works in order to determine whether those similarities result from unprotectable or protectable expression. Data East, 862 F.2d at 208-09; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994); Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) ("A court must take care to inquire only whether `the protectable elements, standing alone, are substantially similar'") (citations omitted); Frybarger v. IBM Corp., 812 F.2d 525, 529-30 (9th Cir. 1987) (district court correctly concluded that similar features in videogames were unprotectable ideas and that no reasonable jury could find expressive elements substantially similar) (remaining citations omitted). This "[e]xtrinsic analysis is objective in nature [and] `depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed.'" Cal. Bus. Law Deskbook § 26:14 (2010 ed.) (citing Funky Films, Inc. v. Time Warner Ent't Co., 462 F.3d 1072, 1077, 1011 (9th Cir. 2006)). Analytical dissection of video games to determine noninfringement is particularly well suited for summary judgment. The Ninth Circuit has required that "[b]ecause only those elements of a work that are protectable and used without the author's permission can be compared when it comes to the ultimate question of illicit copying we use analytic dissection to determine the scope Indeed, another developer of a similar chain reaction game has testified that when he developed his similar chain reaction game in May 2009, he had never heard of or accessed Boomshine. See Avalos Decl., Ex. J at 45:17-24. 7 Notably, Miller has dropped any claim of copying of computer code. Notwithstanding his allegation that Boomshine was decompiled by defendant Yeo, he has now (a) conceded that he is not aware of any facts to support such an allegation and (b) claimed that he put in place "obfuscation" code to hide the actual code he wrote. A comparison of the Boomshine and ChainRxn code also reveals that there is absolutely no commonality in the code. See Crane Report ¶¶ 109-127; Crane Decl., ¶¶ 83-100. - 13 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA) 6

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of copyright protection before works are considered as a whole." Apple Computer, 35 F.3d at 1443 (emphasis added) (citing Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475-76 (9th Cir. 1992) (explaining that purpose of analytic dissection is to define scope of copyright protection); Pasillas v. McDonald's Corp., 927 F.2d 440, 443 (9th Cir. 1991) (copyright holder cannot rely on standard elements to show substantial similarity of expression)). Further, "no substantial similarity of expression will be found when `the idea and its expression are ... inseparable,' given that `protecting the expression in such circumstances would confer a monopoly of the idea upon the copyright.'" Data East, 862 F.2d at 208 (quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (emphasis in original)). Similarity of game play is irrelevant, as game procedures are not protectable expression. See Incredible Technologies, Inc. v. Virtual Technologies, Inc., 400 F.3d 1007 (7th Cir. 2005) (finding no infringement after filtering protectable from non-protectable elements despite the fact "it is pretty clear that [defendant] set out to copy [plaintiff's golf simulator] game"); Atari, Inc. v. Amusement World, Inc., 547 F. Supp 222, 229 (D. Md. 1981). This is because game mechanics, which are no more than procedures and methods of operations, are not protected under the Copyright Act. See Section 102(b) (precluding copyright protection for "processes," "procedures," "systems," or "methods of operations"). See, e.g., Allen v. Academic Games League of America, Inc., 89 F.3d 614, 617 (9th Cir. 1996). The analysis of Data East is useful here. The warring parties in Data East both made Karate games. "The district court found that except for ... minor particulars ... Data East's and Epyx's games are qualitatively identical." Id. at 206 (emphasis added). After analytic dissection, the district court found that the two games shared numerous elements associated with the game experience. Id. at 209. Based on these similarities, the district court determined that substantial similarity existed between the two games. The Ninth Circuit reversed, finding that the district court had committed "clear error" in finding infringement. The Ninth Circuit found that the fifteen features overlapping elements encompassed the "idea of karate" and as such, "they necessarily follow from the idea of a martial arts karate combat game, or are inseparable from, indispensable to, or even standard treatment of the idea of - 14 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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the karate sport." Id. at 209. The court found that the similarities between the two works were unprotectable and that once these unprotectable elements were removed, defendant's game did not infringe. Similarly, in Atari , plaintiff claimed that defendant's "Meteor" videogame infringed its copyright in its "Asteroids" videogame. 547 F. Supp. 222. These games were reminiscent of the chain reaction type games at issue in this case, but featured more elaborate graphics such as spaceships. The underlying theme of both games involved a spaceship in outer space combating space rocks with the use of projectile weapons. The court found that the two video games had extensive identical or similar design features related to the design of the game. Despite the extraordinary similarities, the court found that defendant did not infringe because most of the "similarities are inevitable, given the requirements of the idea of a game involving a spaceship combating space rocks and given the technical demands of the medium of a video game." Id. at 229. The court noted that "it is not enough to observe that there are a great number of similarities in expression between the two games. It is necessary to determine whether the forms of expression are forms of expression that simply cannot be avoided in any version of the basic idea of a videogame involving space rocks." Id. The court found, inter alia, that the progressive difficulty of the game, the fact that all spaceships must be able to fire weapons to destroy space rocks, the award of points for destroying objects, the sounds, the ability to rotate, and the increasing pace of the game, were forms of expression that would necessarily appear in any expression of the underlying idea of the game. Id. The matter before this Court presents a more compelling noninfringement case than those in Data East and Atari. In both those cases the works at issue were virtually indistinguishable in appearance and game mechanics; they had more expressive events such as uniform color, design of spaceships, and character depictions. Nevertheless, the court found no infringement. In the case before this Court, the level of expression is decidedly less than the expression in Data East or Atari. /// /// - 15 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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The nine elements that Miller claims Yeo has copied from Boomshine appear to be virtually all ideas or expressions inseparable from ideas. For instance, the first game element that Miller claims Yeo illegally copied is: "(1) the object [of both games] is to explode a certain number of circles, or balls, each level by starting a chain reaction so that if one ball collides with an explosion from another ball, that ball will explode and this will continue in a chain reaction until a ball doesn't collide with an explosion." Avalos Decl, Ex. G at 9-10. This so-called "element" is not protected by copyright. Indeed, it is not an element at all; it is a recitation of the idea behind Boomshine and perhaps all other chain reaction type games which have existed for decades. This is precisely the type of procedure that cannot be protected under section 102(b) and was found unprotectable in Atari. The same is true for Miller's other allegedly protectable, allegedly infringed game elements fare no better as described below: "(2) the playing screen background is black and rectangular and once a level is completed by exploding a certain number of balls, the playing screen turns bright." A rectangular screen is necessary for game mechanics. Nevertheless, the colors used and game field differ between the two games. "(3) there are multiple multi-colored balls moving in a linear fashion, at varying speeds, and bouncing off the edges of the play screen to create a seemingly random overall ball movement." This description is classic game mechanics and the ball color choices differ between games. "(4) the number of balls on the playing screen as well as the number of balls you must explode to advance to the next level increases with each level." The numbers are different between games but this description is nothing more than procedure because it is the way to advance. "(5) on the first level, the player has to explode one out of five balls to advance to the next level, on the second level, two out of ten balls, and with each additional level, the total number of balls present on the playing screen increase in increments of five." The necessary number of balls to explode differs between the two games. "(6) the player begins a chain reaction by selecting a spot on the playing screen with the cursor (which has an illuminated appearance against the black background) and clicking the mouse, which the player can only do once in an attempt to pass a level, and this causes an explosion which is an increase in circular diameter which if any balls touches will likewise explode by increasing in diameter while maintaining its color and circular shape." The explosions of the balls causing other explosions is the procedure of the game. The ball colors, sizes, and speeds differ between the two games. "(7) the explosions last for a set period of time, after which the diameter of the ball decreases until it is gone and explosions continue until no balls come into contact with any explosions." - 16 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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 Id.

The length of the explosion affects whether other balls are touched and are therefore procedures. The length of time for explosions differs. "(8) if the player fails to explode the required number of balls, the player has to restart the level but does not go back to the first level or any past level the player has already beaten." The requirement of repeating failed levels is not expressive. It's a procedure. "(9) between each level, there are intermediate screens that state whether or not you passed the current level and, if so, how many balls you have to explode during the next level." None of the expression of the intermediate screens are the same.

The Expert Declaration of David Crane discusses each of these elements in detail and explains how the accused features are either necessary features of the game or are expressed differently. Just as in Data East and Atari, these "similarities are inevitable, given the requirements of the idea of a [`video game or gaming application wherein a user or player clicks on a floating circle that causes the clicked circle to expand and causes other contacted floating circles to likewise expand in a chain reaction"]8 and given the technical demands of the medium of a video game." Data East, 862 F. 2d 204 at 229.9 Under established law, the vast majority of identified elements are procedures. To the extent the elements are expressive in any way, Boomshine and ChainRxn have different expression. For example, music, start screens, transition screens and color choice all differ. Boomshine has gentle piano music. ChainRxn has no music. Boomshine's balls some times are virtually invisible. ChainRxn's balls are designed to be visible. Boomshine has a greenish background. ChainRxn has a black background. C. Miller Cannot Establish Indirect Infringement Liability.

Finally, summary judgment is warranted because Miller cannot show indirect infringement. Miller has limited his indirect infringement claim to the type of claim described in

This is Miller's own definition of a chain reaction game. See Avalos Decl., Ex. B. Boomshine does contain some expressive elements. Its background music, sound effects, as well as the choice of color, font, and layout on its title and intermediate screens may be protected by copyright. But ChainRxn does not copy these elements. Avalos Decl., Ex. A at 227:3-229:3; Crane Report at ¶¶ 47-97; Crane Decl., ¶¶ 31-82.
9

8

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Perfect 10, Inc. v. Visa Int'l Serv., Ass'n, 494 F.3d 788, 795 (9th Cir. 2007).10 To prove a claim for indirect infringement under the Visa case, Miller must prove that Facebook "(1) has knowledge of another's infringement and (2) either (a) materially contributes to or (b) induces that infringement." In the context of Internet services, the Ninth Circuit further refined the test and held that "a computer system operator can be held contributorily liable if it `has actual knowledge that specific infringing material is available using its system,' and can `take simple measures to prevent further damage' to copyrighted works, yet continues to provide access to infringing works.'" Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007) (citations omitted) (emphasis in original). Miller cannot establish the requisite elements of knowledge for specific infringing material for two reasons. First, the letters to Facebook were insufficient to establish knowledge of what content he wanted removed, where that content was located, or how Facebook was to remove it. Second, Facebook's actions demonstrated careful efforts to resolve a dispute in a "he said, she said" battle. 1. Miller's Letters Are Too Vague to Establish That Facebook Materially Contributed to or Induced Infringement.

Miller did not provide an effective notice to support a claim of indirect infringement. Courts have suggested that infringement cannot be found if a copyright infringement notice fails to comply with the Digital Millennium Copyright Act ("DMCA") notice requirements.11 Rosen v. Hosting Servs., Inc., No. CV10-2186-CAS 2010 WL 5630637 at *3 (C.D. Cal. Aug. 16, 2010). See also Perfect 10, Inc. v. Google, No. CV 04-9484 AHM (SHx) 2010 U.S. Dist. LEXIS 75071, *23 (C.D. Cal. July 26, 2010). Under the DMCA, a written notification must be provided to the designated agent of a service provider and include substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the Facebook also is not liable under the "inducement" strand of caselaw because it has never promoted the use of its services specifically to infringe copyrights. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1170 n.11 (9th Cir. 2007) ("Google's activities do not meet the `inducement' test explained in Grokster because Google has not promoted the use of its search engine specifically to infringe copyrights."). In fact, Facebook's terms of use explicitly forbid such activity. See Grabler Decl., Ex. A at 5. 11 Facebook is not currently seeking a summary judgment ruling relating to the DMCA safe harbors under §§ 512(a) and (d), but reserves all rights with respect to trial and future pleadings. - 18 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA) 10

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owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. 17 U.S.C. § 512(c)(3). In addition to the conditions listed under subsection (c), Section 512(d) provides a stricter requirement: "identification of the reference or link, to material or activity claimed to be infringing, that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate that reference or link." 17 U.S.C. § 512(d)(3) (emphasis added). Both letters sent by Plaintiff's counsel in 2009 fail to substantially comply with these requirements and should not be found to establish knowledge as a matter of law. a. The May 7, 2009 Letter Was Fatally Flawed.

Madayag's first letter to Facebook sent on behalf of "K2XL" was flawed from beginning to end in every material respect. The letter identifies K2xL as the owner of the copyright in www.K2xL.com, and the "content thereon." Plaintiff now contends, however, that the owner of the Boomshine copyright is Danny Miller, not K2xL. SAC, ¶ 12. In addition to misidentifying the copyright owner, the first Letter is improperly vague as to what the copyrighted work is. The letter referred Facebook to the general website for K2xL (www.K2xL.com), merely mentioning that Boomshine is included in its broad definition of rights. Moon Decl, Ex. B; see Google, 2010 U.S. Dist. LEXIS 75071, *27 (finding notification insufficient where plaintiff merely provided - 19 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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the "top-level URL for the entire website" and failed to identify the specific infringing URL); see also Hendrickson v. eBay, 165 F.Supp.2d 1082, 1084 (C. D. Cal. Sept. 6, 2001) (in finding plaintiff's notification letter deficient, the court noted that letter "did [not] fully describe Plaintiff's copyright interest."). Mr. Madayag also did not provide notice of infringement to the proper agent of Facebook, as specified by Facebook. Compare Moon Decl., Ex. A with Grabler Decl., Ex. E; see also Avalos Decl., Ex. H at 30:25-33:7; see Perfect 10, Inc. v. Amazon.com, Inc., No. CV 05-4753 AHM (SHx), 2009 U.S. Dist. LEXIS 42341, *13-15 (C.D. Cal. May 12, 2009) (finding that plaintiff's take-down notification letter did not confer actual knowledge when plaintiff sent letter to incorrect designated DMCA agent); see also Google, 2010 U.S. Dist. LEXIS 75071 (internal citations omitted) (granting summary judgment for service provider when Plaintiff's notification letters were emailed to incorrect address for designated DMCA agent.). The first letter provided an equally unsatisfactory description of the allegedly infringing work. The letter requested that Facebook only `disable that portion of the Chain Rxn Facebook Website containing material infringing K2xL's rights," but failed to identify that "portion".12 See 17 U.S.C. § 512(c)(3)(iii). Facebook should not be obligated to comb through the two works to determine what is and is not infringing. "This would impermissibly `shift a substantial burden from the copyright owner to the provider.'" Google, 2010 U.S. Dist. LEXIS 75071, *30, fn.7 (internal citations omitted). Even if Facebook could somehow identify the infringing work, it would be impossible for it "disable that portion ... containing material infringing K2xL's rights." Facebook had no access to the ChainRxn game file nor any ability to alter "portions" of that game. Indeed, the game exists today and is available on a third party website. Most importantly, this "notification" letter fails to even mention the ChainRxn's Application Directory listing or request that it be removed. The absence of such critical information fails to even come close to identifying "the reference or link, to material or activity claimed to be infringing." See 17 U.S.C. § 512(d)(3). The law does not "impose such investigative duties on service providers." See Perfect 10, Inc., v. CC Bill LLC, 488 F. 3d 1102 at
12

28

Plaintiff's letters both cite URLs reflecting the ChainRxn "Profile" page. This profile page does not display the actual ChainRxn application. Moon Decl., ¶ 4. - 20 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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1114. Rather, "the burden of policing copyright infringement--identifying the potentially infringing material and adequately documenting infringement--squarely on the owners of the copyright." Id. Zwigglers Apps had also disputed copying prior to any letter being sent to Facebook. The May 7 letter offered no evidence to contradict this representation, simply asserting that Zwigglers Apps had "copied" Miller's game. This fact is particularly important because the May 7th Letter also failed to include statements that (1) Plaintiff had a good faith belief that the use of Boomshine was not authorized, (2) the information in the letter was accurate under penalty of perjury, and (3) Mr. Madayag was authorized to act on behalf of the copyright owner. See 17 U.S.C. §§ 512(c)(3)(v) & (vi). See CC Bill LLC, 488 F.3d at 1112; see also Hendrickson, 165 F.Supp.2d at 1989-1090. b. The June 15, 2009 Letter Was Fatally Flawed.

The June 15, 2009 Letter ("June 15th Letter") suffers from many of the same deficiencies as the May 7th Letter and adds little to the necessary notice. The conclusory June 15, 2009 Letter added no detail whatsoever. Like with the May 7th Letter, to the June 15 Letter did not identify the reference or link to ChainRxn's Application Directory listing. Avalos Decl., Ex. H at 45:2-12; see Moon Decl., Ex. A; see also 17 U.S.C. § 512(d)(3). The Letter also did not request ChainRxn's removal for the Application Directory. Id. In addition, the June 15th Letter did not identify the owner of the copyrighted material whose rights had allegedly been infringed. Id. The June 15 Letter also only gave the most general description of the rights at issue by referring to "our client's valid intellectual property rights." In fact, other than reference to the DMCA statute, the word copyright is used nowhere in the letter. 2. Miller Cannot Establish Knowledge Under the Facts.

Facebook acted in a way to resolve the complex "he said, she said" nature of the dispute and did not act with knowledge. Behaving responsibly to resolve copyright disputes between parties is considered a proper way to immunize a website service from liability for indirect copyright infringement. See Amazon.com, 508 F.3d at 1172. Facebook took simple, affirmative steps to assist Miller with his infringement claim. As noted above, on May 20, 2009 - 21 FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)

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Mr. Madayag complained of "copied content" from K2xL's website, and sought "only to disable that portion of the ChainRxn Facebook Website" that infringed. See Moon Decl., Ex. B. Two days later, Facebook contacted the developer of the application to request that he resolve the complaint, and separately asked Mr. Madayag to contact Facebook again if the issue with the developer went unresolved. Id., Exs. A&C. The application developer said he was seeking legal counsel. On June 15, 2009, Facebook received a responsive letter and email from Mr. Madayag which again complained of "copied content," and demanded that Facebook "take down" the ChainRxn application. Id., Ex. A. Facebook contacted the developer on June 22, 2009 to exhort him to address the issue with "all due urgency," and asked Mr. Madayag to inform Facebook if the developer did not contact him in 48 hours. See Moon Decl., Exs. A, C. The developer claimed he was working out the dispute with Miller. Id. Mr. Madayag never responded to Facebook's message, and this suit followed in October of 2009. Avalos Decl., Ex. H at 79:1580:11. Notably, at no time has Miller ever attempted to get the company hosting the ChainRxn application to remove the infringing content. Id., Ex. A at 112:12-18. On these undisputed facts, no reasonable jury could find that Facebook materially contributed to the alleged infringement. V. CONCLUSION For these reasons, summary judgment in favor of Facebook is warranted. Dated: March 3, 2011 ORRICK, HERRINGTON & SUTCLIFFE LLP /s/ Julio C. Avalos Julio C. Avalos Attorneys for Defendant FACEBOOK, INC.

OHS WEST:261097881.10

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FACEBOOK'S MSJ RE CONTRIBUTORY COPYRIGHT INFRINGEMENT CASE NO.: 3:10-CV-00264 (WHA)