Andersen et al v. Stability AI Ltd. et al

Filing 176

OPPOSITION/RESPONSE (re 160 MOTION to Dismiss Plaintiffs' First Amended Complaint ) filed bySarah Andersen, Gerald Brom, Adam Ellis, Julia Kaye, Gregory Manchess, Kelly McKernan, Karla Ortiz, Grzegorz Rutkowski, H Southworth, Jingna Zhang. (Saveri, Joseph) (Filed on 3/21/2024)

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Joseph R. Saveri (State Bar No. 130064)
Cadio Zirpoli (State Bar No. 179108)
Christopher K.L. Young (State Bar No. 318371)
David W. Lerch (State Bar No. 229411)
Elissa A. Buchanan (State Bar No. 249996)
Kathleen J. McMahon (State Bar No. 340007)
JOSEPH SAVERI LAW FIRM, LLP
601 California Street, Suite 1000
San Francisco, CA 94108
Telephone: [phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Matthew Butterick (State Bar No. 250953)
1920 Hillhurst Avenue, #406
Los Angeles, CA 90027
Telephone: [phone]
Facsimile:
[phone]
Email:
[e-mail]

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Counsel for Individual and Representative
Plaintiffs and the Proposed Class

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[Additional Counsel Listed on Signature Page]

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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SARAH ANDERSEN, et al.,

Case No. 3:23-cv-00201-WHO

Individual and Representative Plaintiffs,
v.
STABILITY AI LTD., et al.,
Defendants.

PLAINTIFFS’ OPPOSITION TO
DEFENDANT MIDJOURNEY, INC.’S
MOTION TO DISMISS PLAINTIFFS’
FIRST AMENDED COMPLAINT
Date:
Time:
Location:
Before:

May 8, 2024
2:00 pm
Videoconference
Hon. William H. Orrick

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Case No. 3:23-cv-00201-WHO
PLAINTIFFS’ OPPOSITION TO DEFENDANT MIDJOURNEY, INC.’S MOTION TO DISMISS
PLAINTIFFS’ FIRST AMENDED COMPLAINT

TABLE OF CONTENTS

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I.

INTRODUCTION .................................................................................................................. 1

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II.

FACTUAL BACKGROUND .................................................................................................. 1

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III. ARGUMENT ..........................................................................................................................2

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A.

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Plaintiffs Have Plausibly Alleged Two Counts of Direct Copyright
Infringement Against Midjourney (Counts 5, 6) ........................................................... 3

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1.

Plaintiffs own valid copyright registrations. ........................................................4

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2.

Plaintiff Andersen’s compilation registrations extend to the
underlying works that are elements of each compilation. ....................................4

3.

Plaintiff Brom’s “text only” registrations for certain books also
cover his artwork included within those works.................................................... 5

4.

Plaintiffs have sufficiently alleged that Midjourney copied their
LAION-400M registered works and LAION-5B registered
works to train certain Midjourney Models. .........................................................6

5.

Plaintiffs have plausibly alleged the Midjourney Models are
either Statutory Copies and/or Statutory Derivative Works ...............................8

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a.

Plaintiffs plausibly allege that the Midjourney Models are Statutory Copies of
the LAION datasets .................................................................................................................8

b.

Plaintiffs have plausibly alleged that the Midjourney Model is a Statutory
Derivative Work ..................................................................................................................... 11

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B.

Plaintiffs Have Adequately Pled Violations of the DMCA. (Count 7) ......................... 12

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1.

Plaintiffs Plead All Elements of a Section 1202(b) Violation............................. 13

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2.

Section 1202 Does Not Require the Copy be “Identical.” ................................ 16

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1.

Plaintiffs Have Sufficiently Alleged Double Scienter. ....................................... 18

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C.

Plaintiffs sufficiently allege that Midjourney violated the Lanham Act
under a theory of false endorsement. (Count 8) .......................................................... 19

D.

Plaintiffs sufficiently allege that Midjourney violated the Lanham Act
under a theory of vicarious trade-dress infringement. (Count 9)................................. 21

E.

Plaintiffs Adequately Allege Their California State Law Claims
(Count 10). ...................................................................................................................24

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1.

Plaintiffs’ State Law Claims are not Preempted. ...............................................24

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Case No. 3:23-cv-00201-WHO
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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

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2.

Plaintiffs State a Claim for Unjust Enrichment. ................................................ 25

IV. CONCLUSION ..................................................................................................................... 25

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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

TABLE OF AUTHORITIES

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2

Federal Cases

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A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001)................................................... 3

4

Adobe Sys. Inc. v. A & S Elecs., Inc., 153 F. Supp. 3d 1136 (N.D. Cal. 2015) ................................... 19

5

ADR Int’l Ltd. v. Inst. For Supply Mgmt., Inc., 667 F. Supp. 3d 411 (S.D. Tex.
2023) ...................................................................................................................................16, 17

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7
8
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11

Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673 (9th Cir.
2014) ..........................................................................................................................................4
Ambrosetti v. Oregon Cath. Press, 458 F. Supp. 3d 1013 (N.D. Ind. 2020) ........................................ 5
Arcsoft, Inc. v. Cyberlink Corp., 153 F. Supp. 3d 1057 (N.D. Cal. 2015).......................................... 21
Astiana v. Hain Celestial Grp., Inc., 783 F.3d 753 (9th Cir. 2016) .................................................. 25

12

Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ...............................................................................2

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Brown v. Stroud, No. C 08-02348 JSW, 2011 WL 2600661 (N.D. Cal. June 30,
2011) ......................................................................................................................................... 12

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Cairns v. Franklin Mint Co.
107 F. Supp. 2d 1212 (C.D. Cal. 2000) ................................................................................... 20
Chihuly, Inc. v. Kaindl, No. C05-1801-JPD, 2006 WL 83462 (W.D. Wash. Jan. 11,
2006) ............................................................................................................................ 21, 22, 23
Church & Dwight Co., Inc. v. Mayer Labs., Inc., No. C-10-4429 EMC, 2011 WL
1225912 (N.D. Cal. Apr. 1, 2011) ............................................................................................. 19
Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001) .......................................... 23
Columbia Pictures Indus., Inc. v. Galindo, No. 20-cv-3129-MEMF, 2022 WL
17094713 (C.D. Cal. Nov. 18, 2022) ........................................................................................ 16

23

CSI Elec. Contractors, Inc. v. Zimmer Am. Corp., No. CV 12-10876-CAS, 2013 WL
1249021 (C.D. Cal. Mar. 25, 2013) .......................................................................................... 25

24

Doe 1 v. GitHub, Inc., 672 F. Supp. 3d 837 (N.D. Cal. 2023) ......................................................... 18

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Dolls Kill, Inc. v. Zoetop Bus. Co., No. 222CV01463RGKMAA, 2022 WL 16961477
(C.D. Cal. Aug. 25, 2022) .................................................................................................. 17, 18
Eksouzian v. Albanese, No. CV 13-728 PSG, 2013 WL 12139828 (C.D. Cal. July 12,
2013)......................................................................................................................................... 25

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Elec. Constr. Main. Co. v. Maeda Pac. Corp., 764 F.2d 619 (9th Cir. 1985) ....................................... 3

2

Falkner v. Gen. Motors LLC, 393 F. Supp. 3d 927 (C.D. Cal. 2018) ............................................... 18

3

Fischer v. Forrest, 286 F. Supp. 3d 590 (S.D.N.Y. 2018) .......................................................... 17, 18

4

Fox Broad. Co. Inc. v. Dish Network, L.C.C., 905 F. Supp. 2d 1088 (C.D. Cal. 2012) ...................... 3

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Friedman v. Live Nation Merch., Inc., 833 F.3d 1180 (9th Cir. 2016) ................................... 12, 17, 18

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Frost-Tsuji Architects v. Highway Inn, Inc., No. CIV. 13-00496 SOM, 2015 WL
263556 (D. Haw. Jan. 21, 2015) ...........................................................................................16, 17

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9
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GC2 v. Int’l Game Tech., IGT, Doubledown Interactive LLC, 391 F. Supp. 3d 828
(N.D. Ill. 2019) .............................................................................................................. 16, 18, 19
Givenchy S.A. v. BCBG Max Azria Grp., Inc., No. CV 10-8394-GHK SHX, 2012
WL 3072327 (C.D. Cal. Apr. 25, 2012).................................................................................... 23

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Gorski v. The Gymboree Corp., No. 14-CV-01314-LHK, 2014 WL 3533324 (N.D.
Cal. July 16, 2014) ................................................................................................................... 20

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Horgan v. Macmillan, Inc., 789 F.2d 157 (2d Cir. 1986) ................................................................. 10

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In re Flash Memory Antitrust Litig., 643 F. Supp. 2d 1133 (N.D. Cal. 2009) ....................................2

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16

In re Juul Labs, Inc., Mktg., Sales Practices, & Prods. Liability Litig., 497 F. Supp. 3d
552 (N.D. Cal. 2020) ............................................................................................................... 25

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Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819 (9th Cir. 1993) ........................................ 23

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Int’l Ord of Job’s Daughters v. Lindeburg Co., 633 F.2d 912 (9th Cir. 1980) .................................. 23

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ITC Textile Ltd. v. Wal-Mart Stores Inc., No. CV-12-2650-JFW, 2015 WL 12712311
(C.D. Cal. Dec. 16, 2015) ........................................................................................................... 3

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Izmo, Inc. v. Roadster, Inc., No. 18-CV-06092-NC, 2019 WL 13210561 (N.D. Cal.
Mar. 26, 2019) .......................................................................................................................... 13
Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116 (C.D. Cal. 1999) .................................................... 17
Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir.
1998)......................................................................................................................................... 21
Kirk Kara Corp. v. W. Stone & Metal Corp., No. CV 20-1931-DMG (EX), 2020 WL
5991503 (C.D. Cal. Aug. 14, 2020) .......................................................................................... 17
Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 999 F. Supp. 2d 1098 (N.D.
Ill. 2014) ................................................................................................................................... 12

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Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 (9th Cir. 1985) ............................................... 24

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Lisa Frank, Inc. v. Impact Int’l, Inc., 799 F. Supp. 980 (D. Ariz. 1992) ......................................... 24

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Logan v. Meta Platforms, Inc., 636 F. Supp. 3d 1052 (N.D. Cal. 2022)..................................... 13, 14

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Lopez v. Smith, 203 F.3d 1122 (9th Cir. 2000) ................................................................................. 3

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Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 591 F. Supp. 2d 1098 (N.D. Cal.
2008) ....................................................................................................................................... 24

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Make Him Smile, Inc. v. Trek Bicycle Corp., No. 2:17-cv-07136-RGK-KS, 2018 WL
5986983 (C.D. Cal. Jan. 18, 2018) ...................................................................................... 19, 20
Mango v. Buzzfeed, Inc., 970 F.3d 167 (2d Cir. 2020)..................................................................... 15
McShannock v. J.P. Morgan Chase Bank NA, 976 F.3d 881 (9th Cir. 2020) .................................2, 9
Media.net Advert. FZ-LLC v. NetSeer, Inc., 156 F. Supp. 3d 1052 (N.D. Cal. 2016) ..................... 24
Merideth v. Chi. Trib. Co., LLC, No. 12 C 7961, 2014 WL 87518 (N.D. Ill. Jan. 9,
2014) ........................................................................................................................................ 12
Meshworks, Inc. v. Toyota Motor Sales, 528 F.3d 1258 (10th Cir. 2008) .......................................... 11
Narell v. Freeman, 872 F.2d 907 (9th Cir. 1989) ..............................................................................6
Navarro v. Block, 250 F.3d 729 (9th Cir. 2001) ................................................................................2

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Nguyen v. Stephens Inst., 529 F. Supp. 3d 1047 (N.D. Cal. 2021) .................................................. 20

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O’Neal v. Sideshow, Inc., 583 F. Supp. 3d 1282 (C.D. Cal. 2022) .................................................. 13

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Oracle Am., Inc. v. Terix Comput. Co. Inc., No. 13-cv-03385............................................................. 5

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Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952) ........................................................... 23

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Perfect 10, Inc. v. Cybernet Ventures, Inc., 167 F. Supp. 2d 1114 (C.D. Cal. 2001) ........................ 3, 7

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23

Perfect 10, Inc. v. Google, Inc., No. CV 04-9484 AHM, 2008 WL 4217837 (C.D.
Cal. July 16, 2008) .................................................................................................................... 25

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Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788 (9th Cir. 2007) .......................................... 24

25

Range Rd. Music, Inc. v. E. Coast Foods, Inc., 668 F.3d 1148 (9th Cir. 2012) ............................ 3, 4, 6

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S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081 (9th Cir. 1989) ............................................................... 3

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Skinner v. Switzer, 562 U.S. 521 (2011) ............................................................................................8

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Software Pricing Partners, LLC v. Geisman, No. 319CV00195RJCDCK, 2022 WL
3971292 (W.D.N.C. Aug. 31, 2022) ......................................................................................... 17
Stevens v. Corelogic, Inc., 899 F.3d 666 (9th Cir. 2018) ............................................................ 12, 14
Stouffer v. National Geographic Partners, LLC, 400 F. Supp (D. Colo. 2019) ............................... 22
Tie Tech, Inc. v. Kinedyne Corp.,
296 F.3d 778 (9th Cir. 2002) .................................................................................................... 23
UAB “Planner 5D” v. Facebook, Inc., No. 19-cv-03132-WHO, 2019 WL 6219223
(N.D. Cal. Nov. 21, 2019) .......................................................................................................... 3
Walker & Zanger, Inc. v. Paragon Industries, Inc., 549 F. Supp. 2d 1168 (N.D. Cal.
2007) ....................................................................................................................................... 22
Widespread Elec. Sales, LLC v. Upstate Breaker Wholesale Supply, Inc., No. 3:20CV-2541-K, 2023 WL 8721435 (N.D. Tex. Dec. 17, 2023) ..................................................... 17

12

Williams v. Cavalli, No. CV 14-06659-AB JEMX, 2015 WL 1247065 (C.D. Cal.
Feb. 12, 2015) ........................................................................................................................... 12

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Worlds of Wonder, Inc. v. Vector Intercont’l Inc., 653 F. Supp. 135 (N.D. Ohio 1986) ..................... 11

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YZ Prods., Inc. v. Redbubble, Inc., 545 F. Supp. 3d 756 (N.D. Cal. 2021) ....................................... 21

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Statutes
15 U.S.C. §1125 .............................................................................................................................. 21
17 U.S.C. § 101 ........................................................................................................................ passim
17 U.S.C. § 106 ................................................................................................................................ 3
17 U.S.C. § 408 ................................................................................................................................6

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17 U.S.C. § 1202 ..................................................................................................................... passim

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Other Authorities

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37 C.F.R. § 202.3(b)(2)(iii) (2022) .............................................................................................. 5, 6

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37 C.F.R. § 202.3(b)(4) (2022) .................................................................................................... 5, 6

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4 McCarthy on Trademarks and Unfair Competition § 28.15 (5th ed. 2024). ........................ 19, 20

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4 McCarthy on Trademarks and Unfair Competition § 8.2 (4th ed. 2016) ................................... 23
Fed. R. Civ. P. 8 ........................................................................................................................... 2, 7

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Fed. R. Civ. P. 9(b) ........................................................................................................................ 13

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Fed. R. Civ. P. 12 .............................................................................................................................2

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Nimmer on Copyright § 2.03[C] ................................................................................................... 10

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Nimmer on Copyright § 2.03[F] ......................................................................................................6

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Nimmer on Copyright § 2.09[D][1] ..........................................................................................10, 11

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Nimmer on Copyright § 3.03[C][4] ............................................................................................... 10

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Nimmer on Copyright § 7.16[B][5][c] ......................................................................................... 4, 5

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Case No. 3:23-cv-00201-WHO
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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

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I.

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INTRODUCTION
Plaintiffs’ First Amended Complaint (ECF No. 129, “FAC”)—filed in response to this

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Court’s order following the previous motions to dismiss (ECF No. 117, “MTD Order”)—

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sufficiently alleges four claims against defendant Midjourney, Inc. (“Midjourney”): direct copyright

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infringement via the LAION-400M dataset (Count 5), direct copyright infringement via the

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LAION-5B dataset (Count 6), DMCA violations (Count 7), and unjust enrichment (Count 8). For

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the reasons below, Midjourney’s motion should be denied.

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II.

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FACTUAL BACKGROUND
Midjourney trains machine learning models (referred to in the FAC as the “Midjourney

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Models”) and incorporates these models into a commercial AI image product (the “Midjourney

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Image Product”). ¶¶ 1, 5, 169.1 Like other image products, the Midjourney Image Product generates

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images in response to user prompts. ¶ 3. User prompts are often text, but can also be images. ¶ 171 &

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Ex. F (Midjourney text prompts); ¶ 189 & Ex. I (Midjourney image prompts).

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To train its models, Midjourney has relied on the LAION datasets, which are enormous

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collections of images paired with descriptive text captions (“training images”). ¶¶ 2, 58. The

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LAION-400M dataset contains records for approximately 400 million training images. ¶¶ 59–60.

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The LAION-5B dataset contains records for approximately 5.85 billion training images. ¶ 65.

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LAION-400M is a subset of LAION-5B, meaning every image in LAION-400M is also in LAION-

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5B. ¶ 65. Sometime before February 2022, Midjourney trained version 1 of the Midjourney Model

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(and possibly others) using the LAION-400M dataset. ¶ 266. Sometime before March 2023,

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Midjourney trained version 5 of the Midjourney Model and subsequent models on LAION-5B.

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¶¶ 274–75.

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Training a model with the LAION-400M or LAION-5B data set requires downloading from

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the internet each of the images referenced in the dataset. ¶¶ 60–62, 66–68. The LAION-400M and

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LAION-5B datasets only contain URLs and metadata for training images, and not the images

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1 “¶ __” and “Ex.

__” citations are to ECF No. 129 (First Amended11 Class Action Complaint)
unless otherwise indicated.

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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

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themselves. ¶¶ 281, 286. Therefore, when it trained the Midjourney Models, Midjourney

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necessarily downloaded copies of billions of copyrighted images without permission—including

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registered works belonging to Plaintiffs. ¶¶ 4, 72. Midjourney knew that the LAION datasets

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contained copyrighted works. ¶¶ 271, 276. Plaintiffs who own these works never authorized

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Midjourney to use them in any way. ¶¶ 72, 80, 347.

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In February 2022, near the release of the initial version of the Midjourney Image Product,

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Midjourney CEO David Holz posted messages publicly promoting the Midjourney Image Product’s

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ability to emulate the styles of particular artists. ¶ 260. Holz posted a link to a document called the

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“Midjourney Style List” that contained over 4,700 artist names whose styles can be emulated by the

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Midjourney Image Product. ¶ 262 and Ex. J. In so doing, Midjourney sought to capitalize on the

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popularity, recognition, and appeal of these artists—all without their consent. ¶¶ 305–06.

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Midjourney actively encourages its users to create images that invoke artist names and their

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protectable trade dress. ¶ 325. Midjourney promotes such images in its online “Showcase” feature

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images made with artist names. ¶ 325(b) & Ex. K. Midjourney also publishes the Midjourney

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Magazine that promotes the use of artist names in image prompts. ¶ 278.

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III.

ARGUMENT

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“[A] complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual

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allegations[.]” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Rule 8(a) requires only a “short

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and plain statement” of facts supporting a claim. Fed. R. Civ. P. 8(a); see Twombly, 550 U.S. at 569

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n.14, 570. The plaintiff’s allegations need only provide “the defendant[s] fair notice of what . . . the

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claim is and the grounds upon which it rests.” In re Flash Memory Antitrust Litig., 643 F. Supp. 2d

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1133, 1141 (N.D. Cal. 2009) (citations omitted).

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In weighing a motion to dismiss under Rule 12, “[a]ll allegations of material fact are taken as

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true and construed in the light most favorable to the nonmoving party.” McShannock v. J.P. Morgan

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Chase Bank NA, 976 F.3d 881, 886–87 (9th Cir. 2020). “Dismissal is proper only where there is no

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cognizable legal theory or an absence of sufficient facts alleged to support a cognizable legal theory.”

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Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001).

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Still, if a court grants a motion to dismiss, it should also grant leave to amend the complaint,

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unless it “determines that the pleading could not possibly be cured by the allegation of other facts.”

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Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). Furthermore, “court[s] should be especially

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reluctant to dismiss on the basis of the pleadings when the asserted theory of liability is novel . . .

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since it is important that new legal theories be explored and assayed in the light of actual facts.” Elec.

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Constr. Main. Co. v. Maeda Pac. Corp., 764 F.2d 619, 623 (9th Cir. 1985).

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A.

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A copyright owner holds the exclusive rights to reproduce, distribute, publicly display,

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Plaintiffs Have Plausibly Alleged Two Counts of Direct Copyright Infringement
Against Midjourney (Counts 5, 6)

perform, and create derivative works of their copyrighted work. 17 U.S.C. § 106. A claim of direct

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copyright infringement must allege: (1) “ownership of the allegedly infringed material” and (2)

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“that the alleged infringers violated at least one exclusive right granted to copyright holders under 17

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U.S.C. § 106.” A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). “[C]opyright

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claims need not be pled with particularity.” Perfect 10, Inc. v. Cybernet Ventures, Inc., 167 F. Supp. 2d

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1114, 1120 (C.D. Cal. 2001) (“Cybernet Ventures”). “Direct infringement does not require intent or

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any particular state of mind.” Fox Broad. Co. Inc. v. Dish Network, L.C.C., 905 F. Supp. 2d 1088, 1098

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(C.D. Cal. 2012); see also ITC Textile Ltd. v. Wal-Mart Stores Inc., No. CV-12-2650-JFW (AJWx),

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2015 WL 12712311, at *5 (C.D. Cal. Dec. 16, 2015) (“Copyright infringement is a strict liability

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tort.”).

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“To establish a prima facie case of copyright infringement,” a plaintiff must show

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“ownership of a valid copyright” and “copying of constituent elements of the work that are

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original.” Range Rd. Music, Inc. v. E. Coast Foods, Inc., 668 F.3d 1148, 1152 (9th Cir. 2012); see also

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UAB “Planner 5D” v. Facebook, Inc., No. 19-cv-03132-WHO, 2019 WL 6219223, at *5 (N.D. Cal.

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Nov. 21, 2019). In this context, the word “copying” means “the infringing of any of the copyright

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owner’s exclusive rights.” S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085, n.3 (9th Cir. 1989).

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Plaintiffs meet both requirements of a direct-infringement claim because they allege

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(1) ownership of valid copyright registrations and (2) that Midjourney violated Plaintiffs’ exclusive

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rights by copying their registered images to train the Midjourney models.

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1. Plaintiffs own valid copyright registrations.
A plaintiff who alleges copyright infringement must show “ownership of a valid copyright.”

3

Range Rd., 668 F.3rd at 1153. Here, Plaintiffs have identified works for which they own valid

4

registrations and were included in the LAION-400M and LAION-5B datasets—works that

5

Midjourney copied in order to make their models. See, e.g., Ex. A (includes Plaintiffs’ registered

6

works within the LAION-5B dataset); Ex. B (Plaintiffs’ registered works contained within the

7

LAION-400M dataset).

8

Midjourney nitpicks certain Plaintiff registrations, arguing that: (1) several of Plaintiff

9

Andersen’s registrations are for compilations and thus the underlying works lack protection; and (2)

10

with respect to Plaintiff Brom, his registrations for two of his works—which are books—cover “text

11

only” and thus, did not protect the artwork incorporated into the work. ECF No. 160 at 6

12

(hereinafter “Midjourney Br.”). Neither of these arguments hold water.

13
14
15

2. Plaintiff Andersen’s compilation registrations extend to the underlying works
that are elements of each compilation.
Midjourney argues that some of Plaintiffs’ copyright registrations are invalid because some

16

of these compilations contain previously published material. Midjourney Br. at 6. But this Court

17

already ruled on allegations of infringement based on registered collections, finding that “the

18

plausible inferences are that all . . . works that were registered as collections and were online were

19

scraped into the training datasets.” MTD Order at 6. Furthermore, as Nimmer explains, when a

20

copyright owner of a derivative or collective work is not merely a licensee, but also the owner of the

21

underlying elements, the registration of the collective work serves as a registration of the underlying

22

elements as well. Nimmer on Copyright § 7.16[B][5][c] (endorsing rule that “[w]hen the same party

23

owns the derivative or collective work plus the underlying elements incorporated therein, its

24

registration of the former is ‘sufficient to permit an infringement action on the underlying parts,

25

whether they be new or preexisting’”). The Ninth Circuit is in accord. See Alaska Stock, LLC v.

26

Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673, 684–85 (9th Cir. 2014).

27
28

Midjourney does not dispute that Plaintiffs own the copyrights in the underlying elements of
the collections, nor the validity of the copyright registrations for each collection. Thus, the inquiry

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ends there—Plaintiffs have a valid registered copyright in a collection of works which extends to

2

each copyrightable element of those collections. Nimmer on Copyright § 7.16[B][5][c].

3

Midjourney cites Ambrosetti v. Oregon Cath. Press, 458 F. Supp. 3d 1013, 1018 (N.D. Ind.

4

2020), but Ambrosetti supports Plaintiffs, not Midjourney. In Ambrosetti, the plaintiff did not own

5

the copyright to the component song of the compilation. 458 F. Supp. 3d at 1013–15. The court in

6

Ambrosetti explained that “unless the copyright owner of a collective work also owns all the rights in

7

a constituent part, a collective work registration will not extend to a constituent part.” Id. at 1018

8

(emphasis added). Here, Plaintiffs own the registrations in the compilation and own the copyrights

9

for all the underlying elements, i.e., the previously published works comprising the compilations. See

10

¶¶ 14–25; Ex. C at 3–4, 11, 14–21, 24–28.2

11

3. Plaintiff Brom’s “text only” registrations for certain books also cover his
artwork included within those works.

12

Midjourney’s second nitpick—as to Plaintiff Brom’s registrations—fares no better. Citing

13
14

zero authority, Midjourney quibbles that the registrations for two of Plaintiff Brom’s works

15

supposedly cover only text, and thus any artwork included in those books is unregistered and cannot

16

be the basis of an infringement claim. Midjourney Br. at 7–8.
This is not so: “[i]n cases where a work contains elements of authorship in which copyright

17
18

is claimed that fall into two or more classes, the application should be submitted in the class most

19

appropriate to the predominant type of authorship in the work as a whole.” 37 C.F.R.

20

§ 202.3(b)(2)(iii) (2022). For published works, a registration encapsulates “all copyrightable

21

elements that are otherwise recognizable as self-contained works, that are included in the same unit

22

of publication[.]” 37 C.F.R. § 202.3(b)(4) (2022).
The works in question here are books. See Ex. C at 3–4. The fact that the registrations

23
24
25
26
27
28

2

Midjourney additionally relies on Oracle Am., Inc. v. Terix Comput. Co. Inc., No. 13-cv-03385 -PSG,
2015 WL 2090191, at *4 (N.D. Cal. May 5, 2015), a computer program case for the proposition that
registration does not cover previously published material. But Oracle is inapposite—as the court
there explains, “the owner of both an underlying work ‘can . . . sue for copying of material that
appears in both the derivative work and the underlying work.’” Id. Plaintiffs are the valid copyright
owners of both the underling work and compilations here and so can bring claims for both.

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indicate only “text” when they are works that fall into multiple classes of authorship—namely, text

2

and artwork—is of little import when the predominant type of authorship is text, as would be

3

expected from a book. 37 C.F.R. § 202.3(b)(2)(iii) (2022). Additionally, the text and artwork of The

4

Child Thief and Krampus each constitute one work in a single unit of publication—when Plaintiff

5

Brom registered the copyright, he did it for the entire work, not just for one component part of the

6

work. See 37 C.F.R. § 202.3(b)(4) (2022). Thus, Plaintiff Brom’s registrations for each of his books

7

extend to all copyrightable elements of that work, i.e., including his artwork.3

8

4. Plaintiffs have sufficiently alleged that Midjourney copied their LAION-400M
registered works and LAION-5B registered works to train certain Midjourney
Models.

9
10

To show “copying of constituent elements of the work that are original,” it suffices for a

11
12

plaintiff to allege “direct copying of copyrighted works.” Range Rd., 668 F.3d at 1153–54.

13

Importantly, the evidentiary doctrine of substantial similarity “is irrelevant in a case . . . that entail[s]

14

direct copying of copyrighted works” because the copying of entire copyrighted works necessarily

15

entails copying protected aspects of the work. Id. at 1154; see also Narell v. Freeman, 872 F.2d 907,

16

910 (9th Cir. 1989).
Furthermore, in its earlier MTD Order, this Court found that Plaintiffs had sufficiently

17
18

pleaded a direct-infringement claim against Stability based on the “use of ‘Training Images’ scraped

19

from the internet into the LAION datasets and then used [them] to train” an AI model. MTD Order

20
21
22
23
24
25
26
27
28

3

Midjourney’s attempt to undermine Plaintiff Brom’s registrations fly in contravention of the
legislative intent behind the Copyright Act. Section 408(c)(1) of the Copyright Act, which
authorizes the Register of Copyrights to regulate the administrative classes into which works are to
be placed for purposes of registration plainly states that the “administrative classification of works
has no significance with respect to the subject matter of copyright or the exclusive rights provided by
this title.” 17 U.S.C. § 408(c)(1). Thus, the omission of the term “artwork” from Plaintiff Brom’s
registration of a book does not mean the artwork contained in the book lacks protection. See Nimmer
on Copyright § 2.03[F] (“The legislative intent expressed in that last sentence means that errors in
the form used to register a work cannot serve as a basis for invalidating the copyright.”) (footnote
call number omitted); see also id., n.132 (“It is important that the statutory provisions setting forth
the subject matter of copyright be kept entirely separate from any classification of copyrightable
works for practical administrative purposes.”) (quoting H. Rep. No. 94-1476, at 153).

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1

at 7. As for which Plaintiff works had been infringed, this Court held that “the plausible inferences

2

are that all of [Plaintiff Andersen’s] works that were registered as collections and were online were

3

scraped into the training datasets.” Id. at 6 (emphasis in original).

4

As a result, in their current motions to dismiss the FAC, Stability has not renewed its

5

challenge to Plaintiffs’ theory of infringement based on training. ECF No. 162 at 2. Defendant

6

Runway AI, Inc. has also accepted the Court’s prior rulings and declined to challenge Plaintiffs’

7

theory of infringement based on training. ECF No. 164 at 4. Yet Midjourney persists—even though

8

in the FAC, Plaintiffs have made parallel allegations of infringement based on training.

9

Here, Plaintiffs have set forth detailed facts showing Midjourney’s use of copied and

10

reproduced images for training the Midjourney Models. Midjourney affiliates admitted that

11

Midjourney used two LAION datasets to train different Midjourney Models. ¶¶ 266–72 (LAION-

12

400M), 273–77 (LAION-5B). Because the LAION datasets only contain URLs of training images,

13

anyone who wants to train their own models on those datasets must download or otherwise acquire

14

copies of the actual training images, and Midjourney did so. ¶¶ 281 (LAION-400M), 286 (LAION-

15

5B). During each training process, Midjourney made further intermediate copies of Plaintiffs’ works.

16

¶¶ 282 (LAION-400M), 287 (LAION-5B). Taken as true, these facts state a claim that Midjourney

17

violated Plaintiffs’ exclusive rights of reproduction.

18

Midjourney parries, claiming Plaintiffs “do not specify which of their works were included”

19

in the datasets Midjourney copied. Midjourney Br. at 9. But Midjourney is merely rehashing an

20

argument that the Court has already discarded. MTD Order at 6–7. Plaintiffs have included exhibits

21

showing dozens of examples of registered works that were included in the LAION datasets. ¶ 24, Ex.

22

A (LAION-5B), Ex B. (LAION-400M).4

23
24
25
26
27
28

4

Midjourney’s preferred rule would contradict Rule 8, particularly in this case, where the
infringement involves the scraping and copying of billions of images. See Cybernet Ventures, 167 F.
Supp. 2d at 1120 (where plaintiffs alleged “the existence of hundreds, even thousands of infringing
photographs” within the defendant’s websites, “[r]equiring a statement of each and every example
[of infringement] would defeat the regime established by Rule 8.”).

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1
2
3

5. Plaintiffs have plausibly alleged the Midjourney Models are either Statutory
Copies and/or Statutory Derivative Works
Midjourney also argues that Plaintiffs’ claim fails because the Midjourney Models

4

themselves are neither infringing Statutory Copies nor infringing Statutory Derivative Works.

5

Midjourney Br. at 11–15. As an initial note, Plaintiffs need only allege one viable theory of direct

6

infringement for their claim to succeed—and as demonstrated above, Plaintiffs have already made

7

out a claim of direct infringement for both Midjourney Models based on the taking and copying of

8

registered works in the LAION-400M and LAION-5B datasets to train the respective models. ¶¶

9

282 (Midjourney 400M Models); 287 (Midjourney 5B Models). It is improper to dismember each

10

claim into each alternative theory on the pleadings. Skinner v. Switzer, 562 U.S. 521, 530 (2011)

11

(explaining that “a complaint need not pin plaintiff’s claim for relief to a precise legal theory.”).

12

This Court has already ruled on this issue as to Stability and determined that the direct-

13

infringement claim was sufficiently alleged. MTD Order at 7. What is more, the Court also

14

determined that it would not parse out theories of direct infringement “that plaintiff may assert

15

within that cause of action against Stability until a later stage of the case.” ECF No. 121. The Court

16

should decline Midjourney’s invitation to selectively dismiss theories of infringement once one

17

viable theory has been alleged. Regardless, Midjourney’s arguments fail on the merits.

18
19
20

a.

Plaintiffs plausibly allege that the Midjourney Models are
Statutory Copies of the LAION datasets

Plaintiffs do allege that the Midjourney Model is itself an infringing Statutory Copy of

21

Plaintiffs’ works. ¶ 288. In its earlier MTD Order, this Court offered additional guidance on how

22

Plaintiffs ought to substantiate their claim that an AI image model qualifies as a copy of Plaintiffs’

23

images: “Plaintiffs will be required . . . to state facts in support of how [the AI model] . . . operates

24

with respect to the Training Images. [I]f plaintiffs’ compressed copies theory is based on a

25

contention that [the AI model] contains mathematical or statistical methods that can be carried out

26

through algorithms or instructions in order to reconstruct the Training Images . . . they need to

27

. . . provide plausible facts in support.” MTD Order at 9–10. In the FAC, Plaintiffs have assembled a

28

spectrum of new allegations that, when “taken as true,” plausibly allege that the Midjourney Model

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qualifies as a Statutory Copy of its training dataset, including Plaintiffs’ works. McShannock, 976

2

F.3d 886–87.

3

Recent AI research suggesting that diffusion models like the Midjourney Model are

4

compressed versions of their training datasets. The Midjourney Model relies on an AI technique

5

called CLIP-guided diffusion. ¶ 83. To elucidate the operation of a diffusion model, Plaintiffs have

6

cited papers and commentary by five separate AI researchers. First, François Chollet said that

7

machine learning models are “analogous to a database.” ¶ 117. Second, Yaodong Yu offered a plainer

8

statement about the capabilities of these models: “Compression is all there is.” ¶ 119. Third,

9

Nicholas Carlini said that “diffusion models are explicitly trained to reconstruct the training set”

10

and diffusion models can “memorize and regenerate” training images. ¶ 131. Fourth, Ryan Webster

11

“tested several diffusion models . . . and found stored copies of training images within all of them.”

12

¶ 138. Fifth, Stephen Casper found that “Stable Diffusion has a broad-ranging ability to imitate the

13

style of individual artists.” ¶ 143. While true style is ordinarily not a basis for an infringement claim,

14

as this Court has observed, “if plaintiffs can plausibly plead that defendants’ AI products allow users

15

to create new works by referencing [Plaintiffs’] works by name, the inferences about how and how

16

much of [Plaintiffs’] protected content remains in Stable Diffusion or is used by the AI end-products

17

might be stronger.” MTD Order at 10. Casper’s research, despite the use of the colloquial term

18

“style,” substantiates this idea that the “protected content” of many artists remains in the Models.

19

Id. Though the terminology used by these five researchers varies, they all point toward an emerging

20

consensus: that “AI image products are only getting better and better at storing copies of training

21

images.” ¶ 144.

22

Sample output from the Midjourney Image Product. Plaintiffs have taken up in earnest

23

the Court’s suggestion that “if plaintiffs can plausibly plead that defendants’ AI products allow

24

users to create new works by expressly referencing [Plaintiffs’] works by name, the inferences about

25

how and how much of [Plaintiffs’] protected content remains in [the product] or is used by the AI

26

end-products might be stronger.” MTD Order at 10. To that end, Plaintiffs provide two sets of

27

examples from the Midjourney Image Product.

28

The first set of examples uses text prompts, and shows what happens when one “expressly

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1

referenc[es]” the names of certain Plaintiffs. ¶¶ 169–75, Ex. F. The addition of each artist name to

2

the otherwise generic prompts “chef” and “teacher” immediately elicits an image that evokes the

3

“protected content” of each named artist. ¶ 174 (“chef”), ¶ 175 (“teacher”).

4

The second set of examples show the results of using Midjourney’s image-prompting feature

5

with work by seven plaintiffs. ¶¶ 188–90, Ex. I. Midjourney calls foul, claiming that Plaintiffs merely

6

“asked [the Midjourney Image Product] to generate lookalike outputs.” Midjourney Br. at 11. But

7

Plaintiffs have relied on Midjourney’s own statements that this feature only extracts “concepts” and

8

“vibes” of input images to “influence” the “style” and “colors” of the output. ¶ 188. Or perhaps

9

Midjourney’s counsel has inadvertently said the quiet part out loud: that Midjourney’s image-

10

prompting feature is merely a copyright-laundering facility, designed to produce low-cost knockoffs

11

of copyrighted images. Ex. I. Yes—Plaintiffs are aware. ¶ 8. Midjourney’s arguments in opposition

12

all fail.

13

First—Midjourney argues that Plaintiffs cannot allege infringement, because “[s]oftware

14

code for a machine learning diffusion model is not similar to a painting or a photograph[.]”

15

Midjourney Br. at 12–13. As Nimmer points out, a work of authorship—say, a “motion picture”—

16

may often be fixed in copies of different forms—“such as celluloid, videotape, Blu Ray discs, and the

17

like. There is but a single work of authorship, no matter how numerous and diverse the copies.”

18

Nimmer on Copyright § 2.03[C]. The fact that the work of authorship itself may not be outwardly

19

“similar,” Midjourney Br. at 13, to the object where it is fixed as a copy is irrelevant to any

20

infringement analysis. See, e.g., Nimmer on Copyright § 2.09[D][1] (“A work is no less a motion

21

picture (or other audiovisual work) whether the images are embodied in a videotape, videodisc, or

22

any other tangible form”). Courts have accordingly upheld infringement claims where movies

23

copied books, cartoon characters copied dolls, and photographs copied dances. See Horgan v.

24

Macmillan, Inc., 789 F.2d 157, 162 (2d Cir. 1986) (collecting cases). Midjourney’s use of a “learning

25

diffusion model,” Midjourney Br. at 12, to infringe Plaintiffs’ works is clever and newfangled, but

26

that does not exempt it from the reach of the Copyright Act, particularly when it directly copied

27

Plaintiffs’ work wholesale. See Nimmer on Copyright § 3.03[C][4] (“All of this is not to say that

28

digital models are incapable of attracting copyright protection; but to do so, they must incorporate

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1

the features that plaintiff’s works lacked”) (discussing Meshworks, Inc. v. Toyota Motor Sales, 528 F.3d

2

1258 (10th Cir. 2008)).

3

Second—Midjourney argues that evidence of its model’s capabilities cannot raise an

4

inference that it contains protected expression. Midjourney Br. at 13. But that is exactly what this

5

Court suggested in its earlier MTD Order—“if plaintiffs can plausibly plead that defendants’ AI

6

products allow users to create new works by expressly referencing [Plaintiffs’] works by name, the

7

inferences about how and how much . . . protected content remains . . . might be stronger.” MTD

8

Order at 10. Midjourney claims that these new allegations contradict those in the initial complaint.

9

Id. at 13. But Plaintiffs’ initial complaint had no output examples based on prompts using Plaintiffs’

10
11

names and works, nor the Midjourney Image Model in particular.
Third—Midjourney argues that Plaintiffs’ theory that “protected expression” is retained in

12

the Midjourney Image Model is merely “conclusory” and no facts are alleged in support. Id. at 14.

13

Not so—Plaintiffs’ copious allegations and exhibits have already been enumerated.

14

Fourth: Midjourney argues that Plaintiffs have not alleged that “copies are viewable or

15

otherwise accessible to Midjourney users.” Id. at 15. On the contrary—Plaintiffs have alleged this

16

and offered many examples. ¶¶ 189–90; Ex. I; see also Nimmer on Copyright § 2.09[D][1]

17

(discussing Worlds of Wonder, Inc. v. Vector Intercont’l Inc., 653 F. Supp. 135 (N.D. Ohio 1986) and

18

commenting “[t]he audiovisual work subject to protection here, if at all, is the information on the

19

cassette tape, which, when played on the requisite machinery, produces sights and sounds”).

20
21
22

b.

Plaintiffs have plausibly alleged that the Midjourney Model is a
Statutory Derivative Work

Plaintiffs also allege that the Midjourney Models are infringing Statutory Derivative Work

23

based on the LAION-5B Registered Works. ¶ 288. Under the Copyright Act, a derivative work is “a

24

work based upon one or more preexisting works, such as . . . an] abridgment, condensation, or any

25

other form in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101 (Plaintiffs call

26

this a “Statutory Derivative Work.” ¶ 210.) As noted above, Plaintiffs allege that the Midjourney

27

Model is “capable of reproducing protected expression from each of the LAION-5B Registered

28

Works that was in each case substantially similar to that registered work.” ¶ 288. Furthermore, all

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1

the allegations above that support Plaintiffs’ theory that the Midjourney Model is a Statutory Copy

2

also support this theory: the commentary from five AI researchers (¶¶ 117, 119, 131, 138. 143); and

3

the examples of output from the Midjourney Image Product (¶¶ 169–75 & Ex. F (text-prompt

4

examples); ¶¶ 189–190 & Ex. I (image-prompt examples)).

5

B.

6

The DMCA provides that “no person shall knowingly and with the intent to induce, enable,

Plaintiffs Have Adequately Pled Violations of the DMCA. (Count 7)

7

facilitate, or conceal infringement, (1) provide copyright management information that is false, or (2)

8

distribute or import for distribution copyright management information that is false.” 17 U.S.C.

9

§ 1202(a). It further prohibits the intentional removal or alteration of copyright management

10

information (“CMI”), and the distribution of CMI or Works with CMI removed or altered, without

11

the authority of the copyright owner. Id. § 1202(b).

12

CMI includes: “[the] title and other information identifying the work, including the

13

information set forth on a notice of copyright;” “[the] name of, and other identifying information

14

about, the author of a work;” and “[the] name of, and other identifying information about, the

15

copyright owner of the work, including the information set forth in a notice of copyright.” 17 U.S.C.

16

§ 1202(c); see also Stevens v. Corelogic, Inc., 899 F.3d 666, 671 (9th Cir. 2018) (CMI includes

17

“information such as the title, the author, the copyright owner, the terms and conditions for use of

18

the work, and other identifying information set forth in a copyright notice or conveyed in connection

19

with the work.”). Section 1202(c) has been interpreted broadly. See Brown v. Stroud, No. C 08-02348

20

JSW, 2011 WL 2600661, at *5 (N.D. Cal. June 30, 2011); Williams v. Cavalli, No. CV 14-06659-AB

21

JEMX, 2015 WL 1247065, at *3 (C.D. Cal. Feb. 12, 2015); Leveyfilm, Inc. v. Fox Sports Interactive

22

Media, LLC, 999 F. Supp. 2d 1098, 1102 (N.D. Ill. 2014).

23

“Knowledge or intent on the part of the defendant is required for liability under

24

. . . § 1202(b).” Merideth v. Chi. Trib. Co., LLC, No. 12 C 7961, 2014 WL 87518, at *2 (N.D. Ill. Jan.

25

9, 2014). As long recognized by the Ninth Circuit, “direct proof of one’s specific wrongful intent is

26

rarely available” and such knowledge or intent can be inferred through circumstantial evidence.

27

Friedman v. Live Nation Merch., Inc., 833 F.3d 1180, 1189 (9th Cir. 2016) (internal quotation marks

28

omitted). “[I]ntent, knowledge, and other conditions of a person’s mind may be alleged generally”

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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

for purposes of pleading Section 1202(b)’s mental state requirements. Logan v. Meta Platforms, Inc.,

2

636 F. Supp. 3d 1052, 1063 (N.D. Cal. 2022) (citations omitted).

3
4

1. Plaintiffs Plead All Elements of a Section 1202(b) Violation.
A claim for a CMI violation under the DMCA requires the plaintiff to plead: “(1) the

5

existence of CMI on the infringed work, (2) removal or alteration of that information, and (3) that

6

the removal or alteration was done intentionally.” O’Neal v. Sideshow, Inc., 583 F. Supp. 3d 1282,

7

1286–87 (C.D. Cal. 2022). The plaintiff must also plead the requisite scienter. Izmo, Inc. v. Roadster,

8

Inc., No. 18-CV-06092-NC, 2019 WL 13210561, at *3–4 (N.D. Cal. Mar. 26, 2019). Scienter,

9

however, need not be alleged with specificity. Id. at *4; accord Fed. R. Civ. P. 9(b) (“intent,

10
11

knowledge, and other conditions of a person’s mind may be alleged generally”).
In its order on the previous complaint, the Court set forth specific guidance to the Plaintiffs

12

on the DMCA claims: “Plaintiffs must, on amendment, identify the particular types of their CMI

13

from their works that they believe were removed or altered. In addition, plaintiffs must clarify and

14

then allege plausible facts regarding which defendants they contend did the stripping or altering in

15

violation of the DMCA and when that occurred.” MTD Order at 18. Plaintiffs have addressed each

16

of the Court’s requests for clarification and have alleged facts sufficient to make out a DMCA claim.

17

Existence of CMI. The FAC includes allegations regarding the types of CMI that named

18

Plaintiffs include in their Works. See ¶¶ 292–93; MTD Order at 19 (directing Plaintiffs to “identify

19

the specific CMI each named plaintiff included in the images that each plaintiff contends was used

20

to train Stable Diffusion.”). Plaintiffs specifically allege that their works contained CMI, including

21

captions, and distinctive marks.5 The FAC includes visual examples of Plaintiffs’ specific CMI in

22

original images, and the reproduction of those images without CMI. Ex. I; ¶¶ 194–200; 292–93.

23

Each is recognized as CMI. See 17 U.S.C. § 1202(c)(2), (3), (7), (8); see also Logan, 636 F. Supp. 3d at

24

1063 (finding that the creator’s name, title of the work, “and a link to a Creative Commons website

25
26
27
28

5Examples

include Plaintiff Brom’s signature and a watermark containing the URL for his personal
website, ¶¶ 53, 195, 198; a watermark containing the URL for Plaintiff Zhang’s personal website, ¶¶
53, 196, 199; Plaintiff Ortiz’s signature, ¶¶ 53, 197; Plaintiff McKernan’s distinctive mark, ¶ 53; and
Plaintiff Andersen’s signature, ¶ 53.

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. . . setting forth the terms and conditions for use’” constituted CMI). Plaintiffs similarly allege that

2

CMI was incorporated directly into their works. ¶¶ 292; 293; see also Logan, 636 F. Supp. 3d at 1063

3

(“[I]dentifying information . . . provided . . . beneath each [work]” “sufficiently close to qualify as

4

CMI.”).

5

Further, Plaintiffs’ names or identifying handles are included in the text captions of their

6

Works. See ¶¶ 15, 17, 18, 19, 21, 292.6 The captions, which are often generated by the artists

7

themselves, function as CMI, describing the images and identifying the artists. ¶¶ 78, 106. Plaintiffs

8

clearly allege that this “identifying information” included on the images themselves and in the

9

images’ metadata is “conveyed in connection with the work.” See Stevens, 899 F.3d at 671.

10

Midjourney’s assertion that Plaintiffs “fail to identify the CMI that was purportedly removed,”

11

Midjourney Br. at 15, is belied by the FAC’s detailed allegations to the contrary.

12

Knowing removal of CMI. Plaintiffs allege that Midjourney knowingly removed or altered

13

CMI from Plaintiffs’ Works. Without the authority of Plaintiffs, Midjourney directly copied the

14

LAION-5B Works and used the Statutory Copies as training data for the Midjourney Image Product.

15

¶ 300. Plaintiffs also allege that Midjourney knew that CMI was being removed or altered, which

16

made attribution particularly difficult in the Midjourney Models. See, e.g., ¶¶ 78–79. Plaintiffs

17

further allege that “[t]he works copied by Midjourney included CMI, including in the form of

18

distinctive marks such as watermarks or signatures, and as the captions in the image-text pairs. The

19

training process is designed to remove or alter CMI from the training images. Therefore,

20

Midjourney intentionally removed or altered CMI from the Plaintiffs’ works in violation of 17 U.S.C.

21

§ 1202(b)(1).” ¶ 300.

22

Distribution of copied works. Plaintiffs allege Midjourney distributed copies of the

23

Works. ¶ 302 (“Midjourney also knew that the distribution of works without CMI would lead to

24

further infringement.”). As Plaintiffs allege, the point of Midjourney is to encourage the use of artist

25

names as prompts, thereby encouraging the Midjourney Image Product’s users and licenses to

26

6

27
28

Midjourney’s assertion that the captions were created by LAION, Midjourney Br. at 15, is untrue;
the FAC clearly alleges that Plaintiffs themselves generally create the captions. See ¶¶ 72–78. At
best, Midjourney merely injects a factual dispute which cannot be decided on the pleadings.

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Case No. 3:23-cv-00201-WHO
14
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1
2

infringe on an artist’ work. ¶ 302.
Knowingly enabling infringement. Plaintiffs allege Midjourney knew or had reasonable

3

grounds to know that its distribution would induce, enable, or conceal an infringement, either by

4

itself or its users. See ¶¶ 78–79, 189–94, 271, 276. “[A] defendant’s awareness that distributing

5

copyrighted material without proper attribution of CMI will conceal his own infringing conduct

6

satisfies the DMCA’s second scienter requirement.” Mango v. Buzzfeed, Inc., 970 F.3d 167, 172 (2d

7

Cir. 2020); see also id. (“Section 1202(b)(3) also encompasses ‘an infringement’ that, upon

8

distribution, ‘will . . . conceal’ the fact of that infringement.”). This so-called scienter element is

9

evidenced by Midjourney’s knowing or having reasonable grounds to know that this removal of CMI

10

would facilitate copyright infringement by concealing the fact that every output from the model is an

11

infringing derivative work, synthesized from copies with CMI. ¶ 302.

12

Plaintiffs detail how the training process is designed to remove or alter CMI from the

13

training images. ¶¶ 292–301. The CLIP models, including the Midjourney Models, train on the

14

training images, including those with CMI, and learn to associate images with the text, including the

15

CMI captions. ¶ 115. The CLIP models specifically detect and identify the presence of CMI, in the

16

form of watermark detection scores. ¶¶ 66, 216, 241. The diffusion models learn how to deconstruct

17

and reconstruct the images, ¶ 115, and store copies of original Work that can be extracted, ¶ 134. The

18

Midjourney Models then create copies based on Plaintiffs’ Works with CMI removed or altered. ¶¶

19

194, 300–02; Ex. I. In addition, the FAC includes visual examples of Plaintiffs’ Works, which

20

include CMI, that were included in the training set, and highly similar or functionally identical

21

images generated in Stable Diffusion XL, in which the CMI is removed. ¶¶ 188–200; Ex. I. As

22

indicated in the FAC, the “copies generated by the AI image product could not have been generated

23

but for copying the original image which included CMI[.]” ¶ 200.

24

The FAC alleges that Midjourney knew that the works contained in its training sets

25

contained CMI. First, the LAION datasets, on which Midjourney Models are built, contain fields

26

for the URLs of the image, the image caption, the similarity of the caption and image, and

27

watermark detection scores for each image, which indicates the likelihood that an image possess an

28

artist’s distinctive mark or CMI. ¶ 66. To train its models, Midjourney had to download exact copies

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15
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

of each of the images in the datasets, including Plaintiffs’ works with the associated CMI. ¶¶ 61–62,

2

67–68. Because the LAION-5B dataset contains detection scores for watermarks and because CMI is

3

ubiquitous in art, Midjourney knew that the LAION-400M and LAION-5B datasets contained

4

copyrighted works with CMI affixed to them. ¶¶ 271–72, 276–77. Further, Midjourney could have

5

trained its models on images free of CMI, but instead chose not to due to the higher quality of

6

images with CMI. ¶ 295. Where, as here, a defendant distributes unlicensed artwork missing CMI,

7

Midjourney “knew or should have known” that this conduct “could lead their customers to infringe

8

[plaintiffs’] copyrights.” GC2 v. Int’l Game Tech., IGT, Doubledown Interactive LLC, 391 F. Supp. 3d

9

828, 842 (N.D. Ill. 2019).

10
11

2.

Section 1202 does not require the copy be “identical.”

Midjourney argues that Plaintiffs’ DMCA claim fails because Plaintiffs have not alleged that

12

Midjourney made an otherwise identical copy of a plaintiff’s work with the CMI removed or altered.

13

Midjourney Br. at 15–16. The plain language of the DMCA makes it a violation to remove or alter

14

CMI; it includes no requirement that the output work be original or identical to obtain relief. 17

15

U.S.C. § 1202(b)(1). Rather, the statute defines CMI as “information conveyed in connection with

16

copies . . . of a work[.]” 17 U.S.C. § 1202(c).

17

The definition of “copy” under the DMCA includes no requirement of identicality. To be

18

considered a copy under the DMCA, the “allegedly infringing work must be fixed in some tangible

19

form from which the work can be perceived, reproduced, or otherwise communicated, either

20

directly or with the aid of a machine or device.” Columbia Pictures Indus., Inc. v. Galindo, No. 20-cv-

21

3129-MEMF (GJSx), 2022 WL 17094713, at *8 (C.D. Cal. Nov. 18, 2022) (citing 17 U.S.C. § 101).

22

Indeed, the requirement that the DMCA requires identical copies was recently squarely rejected.

23

ADR Int’l Ltd. v. Inst. For Supply Mgmt., Inc., 667 F. Supp. 3d 411, 427 (S.D. Tex. 2023) (explaining

24

for claims under the DMCA, “copies include more than just the original work.”).

25

None of the cases upon which Stability relies which adopt an “identicality” standard for

26

DMCA claims explain the origins of this standard—either by drawing on statutory language,

27

legislative history, or potentially analogous interpretations of “copying” under the Copyright Act.

28

See, e.g., Frost-Tsuji Architects v. Highway Inn, Inc., No. CIV. 13-00496 SOM, 2015 WL 263556, at *3

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16
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

(D. Haw. Jan. 21, 2015); Kirk Kara Corp. v. W. Stone & Metal Corp., No. CV 20-1931-DMG (EX),

2

2020 WL 5991503, at *6 (C.D. Cal. Aug. 14, 2020); Dolls Kill, Inc. v. Zoetop Bus. Co., No.

3

222CV01463RGKMAA, 2022 WL 16961477 (C.D. Cal. Aug. 25, 2022). Many of these cases also

4

cite other cases that either never discussed the issue of “identicality” (despite being cited for that

5

proposition.7 See ADR Int’l, 667 F. Supp. 3d at 427–29 (observing that “Defendants’ cases do not

6

require a plaintiff to plead allegedly infringing works are identical copies”).

7

Notably, as explained by the court in ADR Int’l, neither the statute’s plain language nor its

8

legislative history—which the district court actually examined (unlike the cases on which

9

Defendants rely)—supported an “identicality” requirement. Instead, well-established standards of

10

statutory construction compelled the opposite conclusion, namely, that “copying” under the

11

DMCA should align with “copying” under the Copyright Act. ADR Int’l, 667 F. Supp. 3d at 427. In

12

accord with this position, courts routinely analyze whether a copy is “substantially similar” to an

13

original work or portion thereof when evaluating DMCA claims—a standard drawn directly from

14

the Copyright Act.8 And Plaintiffs have amply alleged substantial similarity. See III. A.4, supra.

15
16

In any event, Midjourney misinterprets the FAC and ignores Plaintiffs’ allegation that
Defendants incorporated their Works in their entirety into the Midjourney Models. See, e.g., ¶¶ 1, 2,

17
18
19
20
21
22
23
24
25
26
27
28

7

The extrastatutory identicality requirement likely stems from dicta from district court opinions
with little underlying analysis. See, e.g., Kirk Kara Corp., 2020 WL 5991503, at *6. As ADR Int’l
noted, the Kirk Kara court (cited by Midjourney) cited Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116,
1122 (C.D. Cal. 1999) and Frost-Tsuji Architects, 2015 WL 263556, at *2, “but neither [of these cases]
mentioned nor employed an identical copies requirement. Id. at 427 (S.D. Tex. 2023). The Kirk
Kara court similarly cited Fischer v. Forrest, 286 F. Supp. 3d 590 (S.D.N.Y. 2018), yet, the term
appears nowhere in the decision, and in fact, the court stated that where DMCA claims had been
adequate, “the underlying work has been substantially or entirely reproduced.” Id. at 609 (emphasis
added); see also ADR Int’l Ltd., 667 F. Supp. 3d at 427 (rejecting Kirk Kara’s reliance on Fischer).
8

See, e.g., Friedman, 833 F.3d at 1188 (applying a “substantial similarity” standard to DMCA
analysis); Widespread Elec. Sales, LLC v. Upstate Breaker Wholesale Supply, Inc., No. 3:20-CV-2541-K,
2023 WL 8721435, at *1 (N.D. Tex. Dec. 17, 2023) (denying DMCA claim on summary judgment
because “there is a material fact question on substantial similarity.”); Software Pricing Partners, LLC
v. Geisman, No. 319CV00195RJCDCK, 2022 WL 3971292, at *5 (W.D.N.C. Aug. 31, 2022) (finding
employee liable for violating DMCA where employee “reasonably knew that such information was
copyrighted work and knew he was altering it by changing it enough to look like his own work while
maintaining a substantial similarity to the original work.”).

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Case No. 3:23-cv-00201-WHO
17
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

4, 5, 40, 50, 55, 61–63, 67–69, 72, 85. The models then remove the CMI from these works in the

2

training process, ¶¶ 66, 194, 295–301, and ultimately generate output, which are reconstructed

3

copies and necessarily remove the CMI contained in these works, see Ex. I; see also GC2 Inc., 391 F.

4

Supp. 3d at 844 (upholding jury verdict on DMCA removal claim where the defendants had used

5

the plaintiff’s work “in its entirety”).9 Because Plaintiffs allege that their images were directly

6

copied with CMI, see, e.g., ¶¶ 2, 52–55, 300–01, the Court need not infer whether Midjourney

7

removed CMI in the training process. Fischer, 286 F. Supp. 3d at 609 (“In those cases where claims

8

of removal of CMI have been held viable, the underlying work has been substantially or entirely

9

reproduced.”) (emphasis added).

10

3.

11

Plaintiffs have sufficiently alleged double scienter.

At the motion to dismiss stage, a plaintiff need only “allege sufficient facts to support the

12

reasonable inference that the defendant ‘knew or had a reasonable basis to know that the removal or

13

alteration of CMI . . . w[ould] aid infringement.” Doe 1 v. GitHub, Inc., 672 F. Supp. 3d 837, 858

14

(N.D. Cal. 2023) (quoting Harrington v. Pinterest, Inc., No. 5:20-CV-05290-EJD, 2022 WL 4348460,

15

at *5 (N.D. Cal. Sept. 19, 2022)). Further, the Ninth Circuit has consistently held that scienter for

16

the DMCA can be inferred through circumstantial evidence. Friedman, 833 F.3d at 1189. Plaintiffs’

17

allegations plainly support the reasonable inference that Midjourney knew that their removal of CMI

18

would aid infringement. Midjourney chose to train its models on the LAION-400M and LAION-5B

19

datasets, knowing that these datasets contained CMI, ¶¶ 271–72, 276–77, 295–96, and knowingly

20

removes that CMI, ¶¶ 300–01. Midjourney then released its AI Image Product to third parties, who

21

used Midjourney’s models to generate functionally identical images without CMI. ¶ 302. Thus,

22

Plaintiffs plausibly allege that Midjourney “knew or should have known that their unlicensed

23
24
25
26
27
28

9

The cases on which Stability relies generally involve a scenario in which copying needed to be
inferred to establish that CMI was removed from the original Works. See, e.g., Dolls Kill, 2022 WL
16961477, at *4 (“The differences between the parties’ products undercut any inference that
defendants removed or altered Plaintiffs’ CMI.”). Falkner v. Gen. Motors LLC, 393 F. Supp. 3d 927,
938 (C.D. Cal. 2018), is similarly unavailing. There, the Court found that CMI was not “removed”
when a photographer took a photograph at a strange angle and did not capture the artist’s signature.
Falkner at 938. Here, Midjourney wholesale copied and then removed the CMI from Plaintiffs’
images.

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Case No. 3:23-cv-00201-WHO
18
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

distribution of artwork missing copyright management information to their customers could lead

2

their customers to infringe [plaintiffs’] copyrights.” GC2, 391 F. Supp. 3d at 842.

3
4

C.

Plaintiffs sufficiently allege that Midjourney violated the Lanham Act under a
theory of false endorsement. (Count 8)

5

A claim of false endorsement requires (1) “a protectible ownership interest in the mark” and

6

(2) “that the defendant[s’] use of the mark . . . is likely to cause consumer confusion.” Adobe Sys. Inc.

7

v. A & S Elecs., Inc., 153 F. Supp. 3d 1136, 1141 (N.D. Cal. 2015). A name can constitute a protected

8

mark. Make Him Smile, Inc. v. Trek Bicycle Corp., No. 2:17-cv-07136-RGK-KS, 2018 WL 5986983, at

9

*5 (C.D. Cal. Jan. 18, 2018). Likelihood of confusion relies on the “reasonably prudent consumer.”

10

Adobe Sys. Inc., 153 F. Supp. 3d at 1142 (quoting Rearden LLC v. Rearden Commerce, Inc., 683 F.3d

11

1190, 1202–03 (9th Cir. 2012)). “Neither intent nor actual confusion are necessary to establish a

12

likelihood of confusion.” Church & Dwight Co., Inc. v. Mayer Labs., Inc., No. C-10-4429 EMC, 2011

13

WL 1225912, at *19 (N.D. Cal. Apr. 1, 2011) (quoting Century 21 Real Estate Corp. v. Sandlin, 846

14

F.2d 1175, 1178 (9th Cir. 1988)). “[O]nly a likelihood of deception is needed.” 4 McCarthy on

15

Trademarks and Unfair Competition § 28.15 (5th ed. 2024).

16

Protectible ownership interest in the mark. Midjourney published and promoted a document

17

called the “Midjourney Style List” that included over 4700 artist names. ¶ 262. Five plaintiffs—

18

Greg Rutkowski, Sarah Andersen, Karla Ortiz, Gerald Brom, and Julia Kaye—appear on that list,

19

and together are called the “Midjourney Named Plaintiffs.” ¶ 264. These plaintiffs have a

20

protectible ownership interest in their own names, which have a “high level of recognition,” ¶ 310,

21

and embody their “fame and goodwill as popular artists[.]” ¶ 314.

22

Likelihood of confusion. Midjourney CEO David Holz exhorted his customers to use artist

23

names from the Midjourney Style List in their image prompts. ¶ 262. Midjourney has also published

24

user-created images that incorporate these artist names in its own official “Showcase” site. ¶ 325(b)

25

& Ex. K. Thus, a “reasonably prudent consumer in the marketplace for art products would likely be

26

confused” as to whether the Midjourney Named Plaintiffs had a connection to the Midjourney

27

Image Product. ¶¶ 308–12. Midjourney’s arguments to the contrary all fail.

28

First—Midjourney argues that Plaintiffs failed to “identify anything purportedly false or

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Case No. 3:23-cv-00201-WHO
19
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

misleading about the [Midjourney] Name List” because it “accurately identif[ies] thousands of

2

names that can be used in prompts.” Midjourney Br. at 18. In so arguing, Midjourney seems to

3

concede Plaintiffs’ separate claim for trade-dress infringement. Leaving that aside the relevant falsity

4

does not pertain to the capabilities of the Midjourney Image Product, but whether the artists on the

5

Midjourney Style List consented to have their names commercially exploited as part of the

6

Midjourney Image Product. They did not. ¶¶ 306–308.

7

Midjourney relies on Cairns v. Franklin Mint Co. even though that court was determining a

8

motion for summary judgment—not a motion to dismiss—and therefore considered “ample

9

evidence” to determine whether there was “actual customer confusion” which is not the standard at

10

this stage. 107 F. Supp. 2d 1212, 1216–19, 1223 (C.D. Cal. 2000) (emphasis added). Midjourney

11

customers could reasonably believe (and thereby be misled) into associating Plaintiffs’ endorsement

12

of the Midjourney Image Product because of Midjourney’s inclusion of their names in the

13

Midjourney Name List. See, e.g., Make Him Smile, 2018 WL 5986983, at *4–5 (plaintiff sufficiently

14

alleged that the defendant’s use of “Farley” would likely cause confusion).

15

Second—Midjourney raises nominative fair use and First Amendment defenses. Midjourney

16

Br. at 18–19. But “[a]n affirmative defense may not ordinarily be raised on a motion to dismiss.”

17

Nguyen v. Stephens Inst., 529 F. Supp. 3d 1047, 1056 (N.D. Cal. 2021) (quoting U.S. Commodity

18

Futures Trading Comm’n v. Monex Credit Co., 931 F.3d 966, 972 (9th Cir. 2019)). Midjourney makes

19

no effort to claim that their defenses are “based on undisputed facts” or that “the basis for the[ir]

20

argument appears on the face of the complaint and any materials the court takes judicial notice of.”

21

Id. (citation omitted). Regardless, the Court cannot conclude that, as a matter of law, Midjourney’s

22

use of Plaintiffs’ names “makes no suggestion of . . . endorsement by [the defendant], as the third

23

element of the nominative fair use defense requires.” Gorski v. The Gymboree Corp., No. 14-CV-

24

01314-LHK, 2014 WL 3533324, at *7 (N.D. Cal. July 16, 2014).10

25
26
27
28

10

In any event, Midjourney’s use is plainly commercial and not expressive—as demonstrated by the
Midjourney Showcase attached as Exhibit K, Midjourney promotes images with artist-name
prompts in order to market its products. See 4 McCarthy on Trademarks and Unfair Competition §
28:16 (5th ed. 2024) (explaining free speech defense inapplicable to “commercial” works).

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Case No. 3:23-cv-00201-WHO
20
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1
2
3

D.

Plaintiffs Sufficiently Allege that Midjourney Violated the Lanham Act Under a
Theory of Vicarious Trade-Dress Infringement. (Count 9)

A claim for trade-dress infringement must allege that “(1) the trade dress is nonfunctional,

4

(2) the trade dress has acquired secondary meaning, and (3) there is substantial likelihood of

5

confusion between the plaintiff’s and defendant’s products.” YZ Prods., Inc. v. Redbubble, Inc., 545 F.

6

Supp. 3d 756, 766 (N.D. Cal. 2021). Courts consider the third element, likelihood of confusion, to be

7

the “most important element.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042,

8

1048 (9th Cir. 1998). A plaintiff must, “at the very least,” give adequate notice “by including in their

9

complaint ‘a complete recitation of the concrete elements of [their] alleged trade dress.’” YZ Prods.,

10

Inc., 545 F. Supp. 3d at 767. “The claimed trade dress ‘must be examined as a whole, not by its

11

individual constituent parts.’” Arcsoft, Inc. v. Cyberlink Corp., 153 F. Supp. 3d 1057, 1068 (N.D. Cal.

12

2015) (quoting Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1259 (9th Cir. 2001)). “[T]here

13

is no heightened pleading requirement in trade dress cases.” Chihuly, Inc. v. Kaindl, No. C05-1801-

14

JPD, 2006 WL 83462, at *4 (W.D. Wash. Jan. 11, 2006).

15

Here, Plaintiffs’ trade-dress allegations plainly meet these requirements:

16

No functional value. Plaintiffs’ respective trade dress “has no intrinsic functional value”

17

because “[t]he unique combination of particular artistic elements” are “purely ornamental and

18

aesthetic.” ¶ 327 Plaintiffs’ protected trade dress is not essential to the use or purpose of a product

19

and “there remains an unlimited number of alternative artistic styles available.” ¶ 327.

20

Secondary meaning. Plaintiffs’ trade dress has secondary meaning because consumers of

21

Plaintiffs’ goods associate those goods with their respective trade dress. ¶ 328. For each of the

22

Midjourney Named Plaintiffs, the FAC alleges specific recurring elements of their work that each

23

artist “is known for” which therefore qualify as trade dress. ¶ 319. Midjourney markets the

24

Midjourney Image Product to generate images featuring the trade dress of Plaintiffs. ¶¶ 324-25. The

25

Midjourney Image Product relies on a CLIP model that acts as a trade-dress database. ¶ 320.

26

Likelihood of confusion. Plaintiffs allege that the CLIP model used in the Midjourney Image

27

Product can “appropriate the distinctive look and feel” of Plaintiffs’ trade dress and the Midjourney

28

Image Product “can and frequently does generate images featuring protectable trade dress[.]” ¶¶

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Case No. 3:23-cv-00201-WHO
21
PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

322–23. Worse, Midjourney promotes images with artist-name prompts in its online “Showcase.” ¶

2

324 & Ex. K. These allegations suffice. See Chihuly, Inc., 2006 WL 83462, at *4 (denying motion to

3

dismiss trade dress claim where plaintiff asserted claim over “glass sculptures. . . made in various

4

series reflecting a common theme” which have their own “aesthetic” and which is “inherently

5

distinctive and has achieved secondary meaning in the market”).

6

Midjourney’s arguments to the contrary fail:

7

First—Midjourney incorrectly argues that Plaintiffs fail to adequately identify their trade

8

dress. Midjourney focuses on the shorthand textual summary in the FAC of Plaintiffs’ protectible

9

trade dress. ¶ 319. But tellingly, Midjourney entirely sidesteps its use of a CLIP model, which acts as

10

a trade-dress database.11 ¶¶ 83, 320. The absurd effectiveness of the Midjourney Image Product in

11

recreating Plaintiffs’ trade dress is shown via output examples using text prompts. ¶¶ 171–175, Ex. F.

12

These trade-dress infringements perpetrated by the Midjourney Image Product are so good that

13

Midjourney uses them to promote itself. Ex. K. Thus, Midjourney cannot claim ignorance of

14

capitalizing on Plaintiffs’ trade dress. In any event, this is not a basis to dismiss Plaintiffs’ claims on

15

the pleadings. See Chihuly, Inc., 2006 WL 83462, at *4 (deferring a “more definite identification of

16

trade dress” until discovery).12

17
18

Second—Midjourney falsely claims that imitation of an artistic style cannot be actionable as
a trade-dress violation. Midjourney Br. 22. Plaintiffs’ descriptions of their trade dress clearly fall

19
20
21
22
23
24
25
26
27
28

11

A CLIP model is trained on images and captions, and guides the diffusion process toward a certain
kind of result. ¶¶ 105–11. Within a CLIP model, “artist names are particularly influential” to
generate images in the style of that artist. ¶ 112. This capability of the CLIP model was empirically
substantiated in a research paper by Stephen Casper. ¶¶ 141–143.
12

Walker & Zanger, Inc. v. Paragon Industries, Inc., 549 F. Supp. 2d 1168 (N.D. Cal. 2007) and
Stouffer v. National Geographic Partners, LLC, 400 F. Supp, 3d 1161 (D. Colo. 2019) are
distinguishable. In Stouffer, the alleged trade dress was both functional and based merely on
aesthetic choices without a “source-identifying role.” 400 F. Supp. 3d at 1185. Here, the Midjourney
Image Product’s ability to output images incorporating Plaintiffs’ trade dress proves that their trade
dress was identifiable. ¶¶ 322–328. Further, Plaintiffs explicitly allege that their trade dress is
nonfunctional whereas the plaintiff in Stouffer conceded the opposite. 400 F. Supp. 3d at 1185; ¶ 327.
Walker & Zanger was a summary-judgment opinion where the plaintiffs had the benefit of discovery.
549 F. Supp. 2d at 1177 (N.D. Cal. 2007).

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Case No. 3:23-cv-00201-WHO
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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

1

within what the Ninth Circuit has recognized as “[the] combination of visual elements that, taken

2

together, may create a distinctive visual impression . . . . Trade dress is the composite tapestry of

3

visual effects.” Clicks Billiards, Inc., 251 F.3d at 1259 (internal quotations omitted). 4 McCarthy on

4

Trademarks and Unfair Competition § 8.2 (4th ed. 2016) provides further guidance, explaining that,

5

“[t]rade dress refers to a product’s combination of elements, not individual elements to be judged in

6

a vacuum.” Here, Plaintiffs’ trade dress “consists of a set of recurring visual elements and artistic

7

techniques, the particular combination of which are distinctive to each of the Midjourney Named

8

Plaintiffs, associated with them and their work, and desirable to customers.” ¶ 319. Accordingly, the

9

combination of Plaintiffs’ artistic techniques, styles, and artworks and products, when taken as a

10

whole, create a distinctive visual impression and thus, constitute protectable trade dress. See

11

Chihuly, Inc., 2006 WL 83462, at *4 (denying motion to dismiss trade-dress claim where artist

12

asserted claim over artworks that had their own “aesthetic,” “inherently distinctive and has

13

achieved secondary meaning in the market”).

14

Third—Midjourney is wrong that “Plaintiffs’ works are functional.” Midjourney Br. at 22.

15

Plaintiffs have already alleged pleaded that “each of Midjourney Named Plaintiffs’ respective trade

16

dress has no intrinsic functional value” ¶ 327. Beyond that, functionality is a question of fact that is

17

inappropriate for resolution at this stage. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir.

18

2002) (trade-dress functionality is “an intensely factual issue”); see also Givenchy S.A. v. BCBG Max

19

Azria Grp., Inc., No. CV 10-8394-GHK SHX, 2012 WL 3072327, at *3 (C.D. Cal. Apr. 25, 2012).13

20

Fourth—Midjourney misstates the standard. Under Ninth Circuit precedent, a Plaintiff

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must plead that a mark or trade dress is “either distinctive or has a secondary meaning[.] [I]f a mark

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or dress is inherently distinctive it need not be shown to also have a secondary meaning.” Int’l

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Pagliero v. Wallace China Co., 198 F.2d 339, 343 (9th Cir. 1952) and Int’l Ord of Job’s Daughters v.
Lindeburg Co., 633 F.2d 912, 917 (9th Cir. 1980) are distinguishable. In Pagliero, patterns on
dinnerware were held to be functional and non-protectable. Pagliero, 198 F.2d at 343. In Int’l Ord of
Job’s Daughters, a jewelry design by the defendant was held to be functional. 633 F.2d at 920. But
both of those cases involved aesthetic elements that were intrinsic to the value of an underlying
functional object—dinnerware and jewelry, respectively. Here, there is no such underlying
functional object that Plaintiffs’ aesthetic efforts have been applied to.

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Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 824 (9th Cir. 1993) (quoting Two Pesos, Inc., 505

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U.S. 763, 769 (1993)). “A mark or dress is distinctive when it identifies the particular source of the

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product or distinguishes it from other products.” Id. at 824; cf. Lisa Frank, Inc. v. Impact Int’l, Inc.,

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799 F. Supp. 980, 988 (D. Ariz. 1992) (including arbitrary features that do not describe the product

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or assist in effective packaging makes trade dress distinctive). Correspondingly, a trade dress

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acquires a secondary meaning when the public associates the mark or dress with a single producer or

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source rather than with the product itself. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354

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(9th Cir. 1985). And Plaintiffs allege both. ¶¶ 319, 328..

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Fifth—Midjourney’s last-ditch attack claiming no direct or vicarious liability provides no

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grounds for dismissal. Midjourney Br. at 24. Midjourney’s recitation of this standard conveniently

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leaves out the “control” standard relied upon by Plaintiffs. Louis Vuitton Malletier, S.A. v. Akanoc

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Sols., Inc., 591 F. Supp. 2d 1098, 1113 (N.D. Cal. 2008) (“Vicarious trademark infringement requires

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a finding that the defendant and the infringer have an apparent or actual partnership, have authority

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to bind one another in transactions with third parties or exercise joint ownership or control over

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the infringing product.”) (internal quotation omitted, emphasis added). And Plaintiffs allege both

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the requisite direct infringement by a third party, see, e.g., ¶ 326, and “control over the infringing

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product”, see, e.g., ¶ 326; see also Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 807 (9th Cir.

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2007)).

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E.

Plaintiffs Adequately Allege Their California State Law Claims (Count 10).
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Plaintiffs’ state law claims are not preempted.

Plaintiffs’ unjust enrichment claim, as pleaded, contains “the necessary qualitatively

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different extra element [to] distinguish it” from a copyright claim and, therefore, is not preempted

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by the Copyright Act. Media.net Advert. FZ-LLC v. NetSeer, Inc., 156 F. Supp. 3d 1052, 1074 (N.D.

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Cal. 2016). Specifically, Plaintiffs allege that Midjourney’s use of their names created a likelihood of

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confusion over whether Plaintiffs endorsed Midjourney’s Image Product and the affiliation that

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Plaintiffs may have had with Midjourney. ¶¶ 307, 309. Therefore, it is Midjourney’s use of

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Plaintiffs’ names and reputations as well-known artists that underlies Plaintiffs’ unjust enrichment

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claim. Despite Midjourney’s contention that this claim “is just a repackaged copyright claim,”

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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

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Midjourney’s use Plaintiffs’ names does not sound in copyright at all. ¶¶ 259–64, 278. See, e.g.,

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Eksouzian v. Albanese, No. CV 13-728 PSG (MANx), 2013 WL 12139828, at *3 (C.D. Cal. July 12,

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2013) (finding no preemption where plaintiffs “allege extra elements beyond the basic elements of

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copyright,” like “trade dress[] and confusingly similar domain names”); Perfect 10, Inc. v. Google,

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Inc., No. CV 04-9484 AHM (SHx), 2008 WL 4217837, at *9 (C.D. Cal. July 16, 2008) (“To the

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extent its unjust enrichment theory of relief is based on nonpreempted claims—i.e., right of

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publicity, trademark—the unjust enrichment claim is not preempted by the Copyright Act.”).

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2.

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Plaintiffs state a claim for unjust enrichment.

Pleading unjust enrichment as a standalone claim requires that plaintiff “show that the

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defendant received and unjustly retained a benefit at the plaintiff’s expense.’” In re Juul Labs, Inc.,

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Mktg., Sales Practices, & Prods. Liability Litig., 497 F. Supp. 3d 552, 641 (N.D. Cal. 2020) (quoting

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ESG Capital Partners, LP v. Stratos, 828 F.3d 1023, 1038 (9th Cir. 2016)). A benefit is broadly

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defined as “any type of advantage.” CSI Elec. Contractors, Inc. v. Zimmer Am. Corp., No. CV 12-

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10876-CAS (AJWx), 2013 WL 1249021, at *5 (C.D. Cal. Mar. 25, 2013). A plaintiff may plead unjust

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enrichment even if such a claim is “duplicative of or superfluous” to other claims. Astiana v. Hain

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Celestial Grp., Inc., 783 F.3d 753, 762–63 (9th Cir. 2016).

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Product without Plaintiffs’ consent. ¶¶ 260–64, 312. Specifically, thanks to Plaintiffs’

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renown and notoriety, Midjourney was able to unjustly enrich itself by promoting the Image

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Product’s ability to mimic Plaintiffs’ work. ¶¶ 261–62, 310. To make matters worse, Midjourney’s

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use of Plaintiffs’ names falsely suggested that Plaintiffs have endorsed and/or are affiliated with

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Midjourney’s Image Product—the outputs of which they compete with in the marketplace for art—

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thereby creating confusion amongst reasonably prudent consumers. ¶¶ 308–12, 14.

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IV.

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CONCLUSION
For the foregoing reasons, Midjourney’s motion to dismiss should be denied.

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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC

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Dated: March 21, 2024

By:

/s/ Joseph R. Saveri
Joseph R. Saveri

Joseph R. Saveri (State Bar No. 130064)
Cadio Zirpoli (State Bar No. 179108)
Christopher K.L. Young (State Bar No. 318371)
David W. Lerch (State Bar No. 229411)
Elissa A. Buchanan (State Bar No. 249996)
Kathleen J. McMahon (State Bar No. 340007)
JOSEPH SAVERI LAW FIRM, LLP
601 California Street, Suite 1000
San Francisco, California 94108
Telephone: [phone]
Facsimile:
[phone]
Email:
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Matthew Butterick (State Bar No. 250953)
1920 Hillhurst Avenue, #406
Los Angeles, CA 90027
Telephone: [phone]
Facsimile:
[phone]
Email:
[e-mail]
Brian D. Clark (pro hac vice)
Laura M. Matson (pro hac vice)
Arielle S. Wagner (pro hac vice)
Eura Chang (pro hac vice)
LOCKRIDGE GRINDAL NAUEN PLLP
100 Washington Avenue South, Suite 2200
Minneapolis, MN 55401
Telephone: [phone]
Facsimile:
[phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]
Counsel for Individual and Representative
Plaintiffs and the Proposed Class

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PLAINTIFFS’ OPPOSITION TO MIDJOURNEY’S MOTION TO DISMISS PLAINTIFFS’ FAC