Eckelmann v. HIgbee & Associates

Filing 9

MOTION to Dismiss for failure to state a claim filed by HIgbee & Associates. Motion Hearing set for 4/2/2019 10:00 AM in San Jose, Courtroom 2, 5th Floor before Magistrate Judge Virginia K. DeMarchi. Responses due by 3/6/2019. Replies due by 3/13/2019. (Attachments: #1 Declaration of Ryan E. Carreon, #2 Proposed Order)(Carreon, Ryan) (Filed on 2/20/2019)

1 Mathew K. Higbee, Esq., SBN 241380
Ryan E. Carreon, Esq., SBN 311668
2 HIGBEE & ASSOCIATES
1504 Brookhollow Dr., Suite 112
Santa Ana, CA
3 [phone] 92705
4 [phone] facsimile
Email: [e-mail]
5 Email: [e-mail]
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

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Case No. 5:19-cv-00585-VKD

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CLAUDIA ECKELMANN,

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Plaintiff,

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v.

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HIGBEE & ASSOCIATES,

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NOTICE OF MOTION AND
MOTION TO DISMISS FOR
FAILURE TO STATE A CLAIM
Filed and Served Concurrently:
1. Declaration of Ryan E. Carreon

Defendant.

2. [Proposed] Order
Judge:
Courtroom:
Hearing Date:
Time:

Virginia K. DeMarchi
2, 5th Floor
April 2, 2019
10:00 a.m.

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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
PLEASE TAKE NOTICE that on April 2nd, 2019 at 10:00 a.m. or as soon thereafter
as the matter may be heard in the courtroom of the Honorable Virginia K.

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DeMarchi of the above-titled court, located at Courtroom 2, 5th Floor of the San

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Jose Courthouse, 280 South 1st Street, San Jose, CA 95113, Defendant Higbee &

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Associates will move for an Order for dismissing the complaint filed by Plaintiff

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Claudia Eckelmann in its entirety with prejudice, pursuant to Federal Rules of Civil

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Procedure 12(b)(6) for failure to state a claim. If the Court in inclined to grant the

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motion without leave to amend, Higbee & Associates would also request leave to

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file a motion for attorneys fees pursuant to 17 U.S.C. § 505 as the prevailing party.

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This Motion is brought on the grounds that the complaint filed Plaintiff

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NOTICE OF MOTION
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Eckelmann fails to state any cognizable claim because no case or controversy exists

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between Eckelmann and Higbee & Associates.

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Notice of this Motion was served on Defendants by mail. See Attached Proof
of Service.

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This Motion is based on this Notice of Motion and Motion to dismiss, the

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attached memorandum of points and authorities, the declaration of Ryan E. Carreon

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in support, and the pleadings, files and other materials that are on file with the

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Court or may be presented at the hearing.

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DATED: February 20, 2019

Respectfully submitted,
/s/ Ryan E. Carreon
Ryan E. Carreon, Esq.
Cal. Bar No. 311668
HIGBEE & ASSOCIATES
1504 Brookhollow Dr., Ste 112
Santa Ana, CA 92705
[phone]
[phone] facsimile
Counsel for Plaintiff

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NOTICE OF MOTION
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MEMORANDUM OF POINTS AND AUTHORITIES
I.

INTRODUCTION
Non-party CartoonStock Ltd. (“CartoonStock”) owns a searchable database

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of over 500,000 humorous and political cartoons, cartoon pictures and illustrations

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by more than 1000 of the world's top cartoonists, all available for licensing and

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download. Utilizing an intellectual property management company, PicRights Ltd.

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(“PicRights”), CartoonStock discovered that one of its protected works (the

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“Work”) was being used by Plaintiff Claudia Eckelmann without permission or

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record of a license.

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In November of 2018, CartoonStock and PicRights retained Defendant

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Higbee & Associates, an intellectual property law firm, to send a cease and desist

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letter to Eckelmann and to request payment of a retroactive license for unauthorized

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use of the Work. On November 14, 2018 Higbee & Associates sent a letter stating,

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in part, that if Eckelmann did not have a valid license, “we believe the use of the

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[W]ork is a violation of The Copyright Act, Title 17 of the United States Code.”

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After many attempts to resolve the matter, the parties could not come to a

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resolution and, on January 11, 2019, Higbee & Associates considered the matter

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closed. On January 18, 2019 Eckelmann filed a small claims action in the Superior

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Court for the County of Martinez, Case no. MSC19-0072 (the “Superior Court

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Action”). The Superior Court Action named Higbee & Associates as the sole

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defendant.

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On the Pleading form under the section labeled “[w]hy does the defendant
owe the plaintiff money,” Eckelmann stated:
“The defendant [Higbee & Associates] is claiming that [plaintiff Eckelmann]
owes $500. This action is deemed to adjudicate that claim.”
On the Pleading form under the section labeled “[w]hen did this happen,”
Eckelmann listed November 14, 2018, which is the date that Higbee & Associates
sent the letter to Eckelmann alleging copyright infringement.
On January 29, 2019, the Clerk of the Court mailed notice of the Superior
MOTION TO DISMISS
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Court Action to Higbee & Associates. The notice was received on January 31,

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2019.

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On February 1, 2019 Higbee & Associates timely removed the action to

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federal court on the basis that the claims in the Superior Court Action arose out of

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the allegations of copyright infringement set forth in the November 14, 2018 letter.

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See Dkt. #1.

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II.

Rule 81 of the Federal Rules of Civil Procedure, which governs removed

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cases, states as follows:
“(c) Removed Actions.
…
(2) Further Pleading. After removal, repleading is unnecessary unless
the court orders it. A defendant who did not answer before removal
must answer or present other defenses or objections under these rules
within the longest of these periods:

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(A) 21 days after receiving—through service or otherwise—a
copy of the initial pleading stating the claim for relief.”

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THIS MOTION IS TIMELY PURSUANT TO RULE 81(c)(A).

In this case, Eckelman filed her original complaint in Superior Court on
January 18, 2019. On January 29, 2019, the Clerk of the Court mailed notice of the

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Superior Court action to Higbee & Associates. The Clerk’s notice included a

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summons and a copy of Eckelmann’s initial pleading. Higbee & Associates

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received the Clerk’s notice on January 31, 2019. Because February 20, 2019 is

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exactly 21 days after Higbee & Associates received the Clerk’s notice of

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Eckelmann’s initial pleading, the instant Motion is timely.

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ECKELMANN’S COMPLAINT FAILS TO STATE A CLAIM FOR
RELIEF AGAINST HIGBEE & ASSOCIATES.

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A court may issue a declaratory judgment "in a case of actual controversy

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within its jurisdiction." 28 U.S.C. § 2201(a). A potential defendant may sue

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preemptively for declaratory relief. See Franchise Tax Board v. Laborers Vacation

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Trust, 463 U.S. 1 (1983). The "actual controversy" requirement under 28 U.S.C. §

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III.

2201(a) is the same as the "case or controversy" requirement under Article III of the
MOTION TO DISMISS
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Constitution. Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, (1937). In general,

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there must be a "substantial controversy, between parties having adverse legal

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interests, of sufficient immediacy and reality," Maryland Casualty Co. v. Pacific

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Coal & Oil Co., 312 U.S. 270, 273 (1941), which has "crystallized to the point that

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there is a specific need" for a declaratory judgment. J.N.S., Inc. v. Indiana, 712 F.2d

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303, 305 (7th Cir 1983).

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Rule 8 of the Federal Rules of Civil Procedure requires only “a short and
plain statement of the claim showing that the pleader is entitled to relief.” A motion
to dismiss for failure to state a claim under Rule 12(b)(6) tests the legal sufficiency
of a complaint. Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001). In considering
whether the complaint is sufficient to state a claim, the court must accept as true all
of the factual allegations contained in the complaint. Ashcroft v. Iqbal, 556 U.S.
662 (2009). While a complaint need not allege detailed factual allegations, it "must
contain sufficient factual matter, accepted as true, to 'state a claim to relief that is
plausible on its face.'" Iqbal, 129 S.Ct. at 1949 (quoting Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 570). A claim is facially plausible when it "allows the
court to draw the reasonable inference that the defendant is liable for the
misconduct alleged." Iqbal, 129 S.Ct. at 1949.
In this case, the allegations in the allegations in Eckelmann’s complaint
certainly stretch the bounds of “short and plain” and fail to adequately state a claim
for relief against Higbee & Associates. Eckelmann’s allegations arise directly out of
the November 14, 2018 letter alleging copyright infringement of CartoonStock’s
Work. In the letter to Eckelmann, Higbee & Associates stated in part that “we

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believe the use of the [W]ork is a violation of The Copyright Act, Title 17 of the

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United States Code” and requested that Eckelmann pay a retroactive license fee. In

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the Superior Court Complaint, Eckelmann stated that event giving rise to her claim

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occurred on November 14, 2018, the date of the letter asserting copyright

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infringement. Eckelmann also stated that Higbee & Associates alleged that

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MOTION TO DISMISS
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Eckelmann owed $500, and stated that the Superior Court Complaint “is deemed to

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adjudicate that claim.” In other words, Eckelmann’s suit seeks declaratory relief as

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to whether she engaged in copyright infringement as alleged in Higbee &

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Associates’ November 14, 2018 letter and therefore whether she owes the

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retroactive licensing fee to CartoonStock.
Higbee & Associates is not the party asserting copyright infringement, nor is

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it the party and requesting the retroactive license fee. Rather, Higbee & Associates
is simply hired counsel seeking payment of a retroactive licensing fee on behalf of
its client, CartoonStock. While Eckelmann certainly may have “adverse legal
interests” against CartoonStock, the copyright holder to the Work, no justiciable
“case or controversy” exists between Eckelmann and Higbee & Associates, the sole
defendant to Eckelmann’s complaint.
Even if the allegations in Eckelmann’s complaint are broadly construed to
state a claim for relief arising out of something other than copyright infringement, it
still must fail. California courts are clear that claims against attorneys arising out of
demand letters are protected by the litigation privilege. See e.g. Malin v.
Singer (2013) 217 Cal.App.4th 1283, 1298-1299 (where extortion claim based on
an attorney demand letter did not constitute criminal conduct as a matter of law, it
was protected by the litigation privilege and subject to dismissal under the antiSLAPP statute.) Because attorney demand letters are absolutely protected by the
litigation privilege, any amendment to the claims against Higbee & Associates
would be futile.

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Because no justiciable case or controversy exists between Eckelmann and

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Higbee & Associates, Eckelmann’s complaint fails to state a claim for relief and

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must be dismissed. Eckelmann cannot cure her deficient pleading by way of

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amendment, and thus her complaint must be dismissed with prejudice.

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IV.

HIGBEE & ASSOCIATES WOULD REQUEST LEAVE TO FILE A
MOTION FOR ATTORNEYS’ FEE
Under the Copyright Act, the court, in its discretion, may “award a
MOTION TO DISMISS
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reasonable attorney's fee to the prevailing party as part of the costs.” 17 U.S.C. §

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505. This rule also applies to claims for declaratory relief based on the Copyright

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Act. See Shloss v. Sweeney, 515 F.Supp.2d 1083, 1085 (N.D. Cal. 2007)(awarding

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fees to author who brought action for declaratory judgment pursuant to Copyright

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Act). As stated above, Eckelmann’s complaint essentially seeks a declaration of

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non-infringement because it arises out of a demand letter sent to Eckelmann

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requesting payment of a retroactive license based on an alleged copyright
infringement. Therefore, if Higbee & Associates, the sole defendant in this action,
prevails on the instant Motion and is dismissed from the case, it would rightly be
considered the “prevailing party” and could properly seek an award of attorneys’
fees.
Thus, if the Court were inclined to grant Higbee & Associates’ Motion, it
would request leave to file a Motion for Attorneys fees against Eckelmann as the
prevailing party.
V.

CONCLUSION
Defendant Higbee & Associates respectfully requests that Plaintiff Claudia

Eckelmann’s complaint be dismissed with prejudice and that it be granted leave to
file a motion for attorneys’ fees.
Dated: February 20, 2019

Respectfully submitted,

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/s/ Ryan E. Carreon
Ryan E. Carreon, Esq.,
Cal. Bar. No. 311668
HIGBEE & ASSOCIATES
1504 Brookhollow Dr., Ste 112
Santa Ana, CA 92705-5418
[phone]
[phone] facsimile
Counsel for Plaintiff

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MOTION TO DISMISS
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PROOF OF SERVICE
I, the undersigned, say:

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I am a citizen of the United States and I am a member of the Bar of this Court. I am

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over the age of 18 and not a party to the within action My business address is 1504

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Brookhollow Dr., Ste 112, Santa Ana, California, 92705.

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On February 20, 2019, I caused to be served the foregoing documents:

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Notice of Motion and Motion to Dismiss; Declaration of Ryan E. Carreon;

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[Proposed] Order

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On the date of execution of this declaration, I caused to be served the

documents described above on all parties in this action by placing a true copy
thereof enclosed in a sealed envelope and mailing it to the following address:
Claudia Eckelmann
82 Diablo View Drive
Orinda, California 94563
I certify under penalty of perjury under the laws of the United States that the
foregoing is true and correct. Executed on February 20, 2019, at Santa Ana,
California.

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/s/ Leeah J. Banks
Leeah J. Banks

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MOTION TO DISMISS
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