Marketing Info v. Board of Trustees, et al

Filing 7

RESPONSE in Opposition re 5 MOTION to Dismiss filed by Marketing Information Masters, Inc.. (Attachments: # 1 Exhibit 1 in support of Plaintiff's opposition to motion to dismiss)(Goonan, Gregory)

Marketing Info v. Board of Trustees, et al

D

Doc.

1 Gregory P. Goonan (Cal. Bar #119821) 2 600 West Broadway, Suite 400 3 Tel: [phone] 10 11 12 Marketing Information Masters, Inc., a 13 14 15
California corporation, Plaintiff, vs. The Board of Trustees of the California State Case No. 06 CV 1682 JAH (JMA) UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA San Diego, CA 92101 Fax: [phone] The Affinity Law Group APC

Attorneys for Plaintiff 5 Marketing Information Masters, Inc.

16 University System, a public entity acting
through its subdivision San Diego State 17 University; and Rob ert A. Rauch, an individual,

PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO MOTION TO DISMISS BY DEFENDANT BOARD OF TRUSTEES AND JOINDER IN MOTION TO DISMISS BY DEFENDANT RAUCH Date: November 16, 2006 Time: 3:00 p.m. Court: 11 (Hon. John A. Houston)

18 19 20 21 22 23 24 25 26 27 28

Defendant s.

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ockets.Justia.com

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B.

TABLE OF CONTENTS Table of Authorities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

I. II.

PRELIMINARY STATEMENT AND SUMMARY OF ARGUMENT . . . . . . . . . . . . . . 6 ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 A. SDSU's FRCP 12(b)(1) Motion Should Be Denied Because MIMI Has Complied With The Copyright Act Jurisdiction Requirement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 SDSU Is Not Immune From Being Sued For Copyright Infringement In This Court . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 1. Congress Expressed in "Unmistakably Clear" Language that the CRCA Abrogated State Immunity Under the Eleventh Amendment for Copyright Infringement Lawsuits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 2. The CRCA is a Constitutional Exercise of Congress' Authority Pursuant to the Enforcement Clause of the Fourteenth Amendment . . . . . . . . . . . . . . .. . . . . . . . . . . . . 16 a. The CRCA was enacted in response to substantial evidence of copyright infringement by the States and their instrumentalities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .17 b. Co ngress determined there were no available state remedies for copyright infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18 c. Congress tailored the remedy to be provided by the CRCA to the magnitude of the harm to be prevented . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 3. The Supreme Court Decision in Florida Prepaid Does Not Support a Finding that the CRCA is Unconstitutional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

C.

Rauch Is Not Entitled To Any Relief Pursuant To His Supposed "Joinder" . . . . . 20 1. Rauch Does Not Enjoy Any Immunity Here . . . . . . . . . . . . . . . . . . . . . . . . . 21

2. MIMI's State Law Claims Against Rauch Are Not Preempted . . . . . . . . . . . . 22

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1 2 3 Cases:

TABLE OF AUTHORITIES

4 American Tobacco Co. v. Werckmeister , 207 U.S. 284 (1907) . . . . . . . . . . . . . . . . . . . . . . . . . . 16 5 Apple Barrel Products, Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984) . . . . .. . . . . . . . . . . . . . . . . . 10 6 7 8
Atascadero State Hospital v. Scanlon, 473 U.S. 234 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 Brush Creek Media, Inc. v. Boujakian, 2002 WL 1906620 (N.D. Cal. 2002) . . . . . . . . . . . . . . 11

th 9 Chavez v. Arte Publico Press, 204 F.3d 601 (5 Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

10 City of Boerne v. Flores, 521 U.S. 507 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13,16 11 Dielsi v. Falk, 916 F. Supp. 985 (C.D. Cal. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 12 Fitzpatrick v. Bitzer, 427 U.S. 445 (1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. . 13, 20 13
Florida Prepaid Postsecondary Educational Expense Bd. v. College Savings Bank, 14 527 U.S. 627 (1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

15 Foraste v. Brown University, 248 F. Supp. 2d 71 (D. R.I. 2003) . . . . . . . . . . . . . . . . . . . . . 10, 11 16 Frankel v. Stein & Day, Inc., 470 F. Supp. 209 (S.D.N.Y. 1979) . . . . . . . . . . . . . . . . . . . . . . . . 11 17
Haan Crafts Corp. v. Craft Masters, Inc., 683 F. Supp. 1234 (N.D. Ind. 1988) . . . . . . . . . . . . . 1 1

18 19 20 22 23 24

Havens v. Time Warner, Inc., 896 F. Supp 141 (S.D.N.Y. 1995) . . . . . . . . . . . . . . . . . . . . . . . . . 11 Iconbazaar, LLC v. America Online, Inc., 308 F. Supp. 2d 630 (M.D. N. Car. 2004) . . . . . . . . . 10 81 F. Supp. 2d 70 (D.D.C. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 ISC-Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308 (N.D. Ill. 1990) . . . . . . . . . . . . . . . 11 Katzenbach v. Morgan, 384 U.S. 641 (1966) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 6, 20

21 International Kitchen Exhaust Cleaning Ass'n v. Power Washers of North America,

25 Kimel v. Florida Board of Regents, 528 U.S. 62 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 7 26 M.G.B. Homes, Inc. v. Ameron Homes, Inc. , 903 F.2d 1486 (11th Cir. 1990) . . . . . . . . . . . . . . . 11 27 New Kids on the Block v. News America Publishing, Inc., 28
971 F.2d 302 (9th Cir. 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
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1

2 63 F. Supp. 2d 1240 (E.D. Cal. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 3 Pareto v. FDIC , 139 F.3d 696 (9th Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 4 th
Parks School of Business, Inc. v. Symington, 51 F.3d 1480 (9 Cir. 1995) . . . . . . . . . . . . . . . . . 21 Positive Black Talk, Inc. v. Cash Money Records, Inc. , 394 F.3d 357 (5th Cir. 2004) . . . . . . . . . 11 Richard Anderson Photography v. Brown, 852 F.2d 114 (4th Cir. 1988) . . . . . . . . . . . . . . . . . . . .21

New Star Lasers, Inc. v. Regents of the University of California,

5 6 7

8 Roth v. Pritikin, 710 F.2d 934 (2d Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16 9 Ryan v. Carl Corp., 1998 WL 320817 (N.D. Cal. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 10 Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1995) . . . . . . . . . . . . . . . . . . . . . . .. . . . passim 11 Well-Made Toy Manufacturing Corp. v. Goffa International Corp., 12 210 F. Supp. 2d 147 (E.D.N.Y. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 13 Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022 (N.D. Cal 2003) . . . . . . . . . . . . . . . . . . 12 14 15 16 17 18 19
Constitution, Statutes and Rules : U.S. CONST. amend. XIV . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim U.S. CONST. amend. XIV, § 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 17 U.S.C. § 301(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22

20 17 U.S.C. § 408 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 21 17 U.S.C. § 409 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 22 17 U.S.C. § 410(d) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8, 10 23 17 U.S.C. § 411(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 10 24 25 26 27

17 U.S.C. § 501(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 17 U.S.C. § 511(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 28 U.S.C. § 1338(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

28 Fed.R.Civ.P. 12(b)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 10 ____________________________________________________________________________________________
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1 Fed.R.Civ.P. 12(b)(6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 2 3 Other Authorities : 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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2 Nimmer on Copyright , § 7.16[B][1][a] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

1

Defendant Board of Trustees of the California State University System, acting through and

2 representing its subdivision San Diego State University (hereinafter "SDSU") has filed a motion to 3 dismiss the complaint of plaintiff Marketing Information Masters, Inc. ("MIMI") pursuant to 4 5 6 7 9 10 I. 11
PRELIMINARY STATEMENT AND SUMMARY OF ARGUMENT This is an action for copyright infringement, conversion, misappropriation and unfair

Rules 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure. The individual defendant Robert A Rauch ("Rauch") has joined SDSU's motion. MIMI hereby respectfully submits this memorandum of points and authorities in combined opposition to SDSU's motion and Rauch's

8 joinder in such motion.

12 business practices under federal and California law. As alleged in MIMI's complaint in this 13 matter, for a number of years MIMI and its owner Michael Casinelli performed economic impact 14 studies for the San Diego Holiday Bowl committee and provided the Holiday Bowl with a written 15 report setting forth and discussing MIMI's analysis and conclusions about the Holiday Bowl's 16 economic impact on the San Diego region. The written report at issue in this case is MIMI's 2003 17 economic impact report (the "2003 Report") , which is a work registered under and protected by 18 the copyright laws of the United States. 19 As alleged in MIMI's complaint, as least for the 2004 Holiday Bowl (and possibly for 20 subsequent games), the Holiday Bowl committee retained the Center for Hospitality and Tourism 21 Research at SDSU (the "SDSU Center for Hospitality and Tourism Research") to conduct the 22 study of the economic impact of the 2004 game. Defendant Rauch was the individual with 23 primary responsibility for the project. 24
Unfortunately, Rauch and SDSU did not develop their own methodology, practices or

25 analysis framework to conduct the 2004 study, analyze the data obtained therefrom, or reach 26 conclusions from such data as they were required to do under the applicable laws. Instead, as 27 explained in MIMI's complaint, Rauch and SDSU obtained a copy of the 2003 Report and then 28 ____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS -7 -

1 simply (and illegally) misappropriated MIMI's ideas, methodologies, practices and analytical 2 framework to conduct the 2004 study. To further compound their wrongdoing, Rauch and SDSU 3 blatantly and intentionally copied and plagiarized the copyrighted 2003 Report to generate a 4 written report for the Holiday Bowl regarding the 2004 study. 5
The actions of Rauch and SDSU were intentional copyright infringement in the extreme,

6 and also constituted the conversion and misappropriation of MIMI's property not covered by the
1 7 copyright on the 2003 Report. Indeed, as alleged in MIMI's complaint, MIMI is informed and

8 believes that SDSU conducted an internal investigation about this matter and itself concluded that 9 Rauch was guilty of plagiarism and copyright infringement. 10
Notwithstanding the overwhelming evidence of its guilt ­ including the results of its own

11 internal investigation ­ SDSU now asks the Court to dismiss MIMI's complaint against it in its 12 entirety. As will be discussed herein, however, none of the arguments that SDSU makes has any 13 merit: 14
1. SDSU first seeks dismissal under FRCP 12(b)(1) on the ground that the Court

15 supposedly does not have subject matter jurisdiction under 17 U.S.C. § 411(a) because MIMI 16 allegedly commenced this action before obtaining a certificate of copyright registration. Such 17 argument is without merit. As alleged in MIMI's complaint, MIMI complied with the 18 requirements of Section 411(a) as that statute has been interpreted by the overwhelming majority 19 of federal courts because MIMI complied with all requirements for registration prior to filing suit 20 and has in fact obtained a copyright registration for the 2003 Report whose effective date predates 21 the filing of this action. Consequently, this Court has subject matter jurisdiction in this action and 22 23 24 25 26 27 28
1

To make the wrongdoing of Rauch and SDSU even worse, the data and statistics presented by Rauch and the SDSU Center for Hospitality and Tourism Research to the Holiday Bowl were false, distorted and over-inflated, and did not accurately reflect the true economic impact of the 2004 Holiday Bowl on the San Diego community. Such falsification and distortion of the economic data was caused in large part by the fact that Rauch and the SDSU Center for Hospitality and Tourism Research simply copied MIMI's 2003 Economic Impact Report rather than independently performing a legitimate economic impact study and then independently writing a report about such study. [Complaint ¶ 11.]
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1 SDSU's motion to dismiss pursuant to FRCP 12(b)(1) should be denied. 2
2. SDSU also seeks dismissal pursuant to FRCP 12(b)(6) because SDSU claims it is
2 3 entitled to sovereign immunity from suits for copyright infringement in federal court. The

4 problem for SDSU in making such argument, however, is that Section 501(a) of the Copyright 5 Act, 17 U.S.C. § 501(a), expressly provides that states and their instrumentalities (like SDSU) can 6 be sued for copyright infringement just like any other person or entity. To make things even more 7 clear, Section 511(a) of the Copyright Act, 17 U.S.C. § 501(a), expressly provides that the States 8 and their instrumentalities (like SDSU) do not enjoy sovereign immunity from copyright 9 infringement lawsuits. 10
So, in seeking a dismissal pursuant to FRCP 12(b)(6) on grounds of alleged sovereign

11 immunity, SDSU in effect asks this Court to override the express and clearly stated intent of 12 Congress and find unconstitutional the two express statutes passed by Congress to make crystal 13 clear that bodies like SDSU could in fact be sued for copyright infringement. As SDSU readily 14 admits, the Ninth Circuit has never found that States enjoy sovereign immunity from copyright 15 infringement lawsuits. Consequently, in making such argument, SDSU must rely on a Fifth 16 Circuit case which, as we will explain below, was wrongly decided and should not be followed by 17 this Court. 18
Instead, as we will discuss below, Congress validly exercised its powers under the

19 Enforcement Clause of the Fourteenth Amendment in enacting Sections 501(a) and 511 of the
3 20 Copyright Act. Accordingly, given the express language of Sections 501(a) and 511 of the

21

2

22 infringement suits so any and all such suits must be brought in federal court. So, in raising its

As this Court undoubtedly knows, the federal courts have exclusive jurisdiction over copyright

claim of supposed sovereign immunity, SDSU essentially takes the position that it can engage in 23 copyright infringement with impunity, yet never be sued for such infringement because it allegedly enjoys sovereign immunity. Fortunately for MIMI and other copyright owners, 24 Congress has found to the contrary and passed legislation which expressly allows copyright infringement lawsuits against states and their instrumentalities like SDSU.

25

In its moving papers, SDSU cites the Supreme Court decision in Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1995) and argues that Congress may not abrogate the States' sovereign 26 immunity pursuant to Congress' Article I powers. While that may be correct, such argument completely misses the point. The Court does not even need to engage in the Article I analysis here 27 since, as will be shown, Sections 501(a) and 511 are valid under Congress' authority pursuant to the Fourteenth Amendment (which SDSU does not even address in its moving papers).

3

28

____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS -9 -

1 Copyright Act, SDSU does not enjoy any sovereign immunity which precludes this lawsuit, and 2 its request for dismissal under FRCP 12(b)(6) based on such non-existent immunity should be 3 denied. 4
3. SDSU also seeks dismissal of MIMI's state law claims against it on the ground that the

5 Court cannot exercise supplemental jurisdiction pursuant to 28 U.S.C. § 1367 over such claims. 6 Prior to the hearing on the present motion, MIMI will file an amended complaint withdrawing 7 such claims against SDSU, and will refile such claims in state court. 8
4. Rauch "joins" in SDSU's motion in its entirety on the ground that he was an employee

9 of SDSU and thus allegedly enjoys the same defenses as SDSU. That is not correct. In the first 10 place, MIMI's complaint indicates that MIMI does not know if Rauch was an employee or 11 independent contractor. [Complaint ¶ 20.] Moreover, MIMI has sued Rauch both in his 12 individual capacity (making this lawsuit a so-called "personal capacity suit") as well as in his 13 potential role as a SDSU employee. Because this is a 12(b) motion, MIMI's allegations must be 14 accepted as true and Rauch cannot introduce extrinsic evidence n support of the motion. Because 15 the Complaint does not establish the essential premise of Rauch's joinder, that he was an 16 employee of SDSU, Rauch cannot obtain any relief by his joinder. 17
In any event, as will be shown below, even if SDSU enjoys sovereign immunity which

18 precludes this suit, such immunity does not shield Rauch from liability for committing copyright 19 infringement himself or for inducing and aiding and abetting SDSU to commit copyright
4 20 infringement. Consequently, Rauch is not entitled to any relief for this additional reason.

21 22 23 24 25 26 28
4

27 MIMI's copyright. All it means is that SDSU cannot be sued in federal court for such
infringement.

Of course, even if SDSU is immune (which it is not), that does not mean SDSU did not infringe

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1 II. 2 3 4

ARGUMENT A. SDSU's FRCP 12(b)(1) Motion Should Be Denied Because MIMI Has Complied With The Copyright Act Jurisdiction Requirement SDSU first argues that MIMI's copyright infringement claim should be dismissed because

5 the Court supposedly lacks subject matter jurisdiction over such claim. In making such argument, 6 SDSU relies on Section 411(a) of the Copyright Act, 17 U.S.C. § 411(a), which provides that a 7 copyright infringement action shall not be instituted until "registration of the copyright claim has 8 been made." Citing two decisions from the Northern District of California that, with all respect, 9 have been roundly criticized, are not consistent with the weight of federal authority and do not 10 even reflect the current state of the law in the Northern District, SDSU seeks dismissal under 11 FRCP 12(b)(1). SDSU is not entitled to the relief it seeks. 12
There is no dispute that Section 411(a) requires federal copyright registration as a

13 prerequisite to an infringement action. The issue, however, is what does a copyright plaintiff need 14 to do before filing suit in order to comply with Section 411(a). 15
Under the Copyright Act, a party registers a copyright by submitting an application, copies

16 of the work to be registered and the required fee to the Copyright Office. [17 U.S.C. §§ 408-410.] 17 The effective date of a copyright registration is the date when the required materials are received 18 by the Copyright Office, even though the formal registration certificate may not issue until a later 19 date. [17 U.S.C. § 410(d).] 20
Contrary to the argument made by SDSU, the overwhelming weight of federal authority

21 provides that a copyright plaintiff only needs to submit the required materials to the Copyright 22 Office prior to filing suit, even though the actual formal registration certificate is not received until
th 23 after suit is filed. [See , e.g., Apple Barrel Products, Inc. v. Beard, 730 F.2d 384, 387 (5 Cir.

24 1984); Iconbazaar, LLC v. America Online, Inc., 308 F. Supp. 2d 630 (M.D. N. Car. 2004); 25 Foraste v. Brown University, 248 F. Supp. 2d 71, 76-78 (D. R.I. 2003); Well -Made Toy 26 Manufacturing Corp. v. Goffa International Corp., 210 F. Supp. 2d 147, 157 (E.D.N.Y. 2002); 27 International Kitchen Exhaust Cleaning Ass'n v. Power Washers of North America, 81 F. Supp. 28 2d 70 (D.D.C. 2000); Dielsi v. Falk , 916 F. Supp. 985, 994 n.6 (C.D. Cal. 1996); Havens v. Time ____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 11 -

1 Warner, Inc., 896 F. Supp 141, 142-43 (S.D.N.Y. 1995).] The rationale for such cases is that 2 copyright registration occurs on the day the Copyright Office receives all of the necessary 3 application materials, so a copyright plaintiff satisfies Section 411 by submitting such materials to 4 the Copyright Office. [See Foraste v. Brown University, 248 F. Supp. 2d at 77.] 5
Indeed, Professor Nimmer, the leading copyright expert in the United States, endorses this

6 approach describing it as the "better point of view." [See 2 Nimmer on Copyright, § 7 7.16[B][1][a].] 8
Some courts are more strict in interpreting Section 411 to require an issued registration

9 certificate before an infringement suit is allowed to go forward. But even the majority of those 10 courts consider the lack of an issued registration certificate to be a technical defect. So, such 11 courts allow the copyright plaintiff to obtain the registration certificate during the pendency of the 12 infringement lawsuit, and then amend its complaint to allege issuance of the registration
th 13 certificate. [See, e.g., Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5 th 14 Cir. 2004); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11 Cir. 1990);

15 ISC-Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308, 1309 (N.D. Ill. 1990); Haan Crafts 16 Corp. v. Craft Masters, Inc., 683 F. Supp. 1234, 1242 (N.D. Ind. 1988); Frankel v. Stein & Day, 17 Inc., 470 F. Supp. 209, 212 (S.D.N.Y. 1979).] As the Fifth Circuit recently explained in the 18 Positive Black Talk case, "the notion that the [amended complaint] cures the technical defect , 19 notwithstanding the clear language of § 411, is consistent with the principle that technicalities 20 should not prevent litigants having their cases heard on the merits." [Positive Black Talk, 394 21 F.3d at 357.] 22
Obviously, as can be seen, the two Northern District cases cited by SDSU in support of its

23 motion are contrary to the overwhelming weight of federal authority that has considered the 24 requirements of Section 411. It also is critical to note that the Brush Creek case on which SDSU 25 places principal reliance only "reluctantly" granted dismissal and even itself seemed to agree that a 26 copyright plaintiff could amend its complaint to allege registration once a registration certificate is 27 issued. [See Brush Creek, 2002 WL 1906620 at *2-*4.] In any event, both of SDSU's cases -rush Creek and Ryan have been criticized as being against the "wealth of authority" (see Forast 28 B____________________________________________________________________________________________e
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 12 -

1 v. Brown University, supra , 248 F. Supp. 2d at 77) and even are contrary to more recent 2 pronouncements on this issue from the Northern District. [See Zito v. Steeplechase Films, Inc., 3 267 F. Supp. 2d 1022, 1025 (N.D. Cal 2003) (allowing copyright action to proceed where 4 registration certificate obtained during pendency of lawsuit and amended complaint filed).] 5
Here, MIMI's Complaint alleges that MIMI has complied with the requirements of Section

6 410 and Section 411 of the Copyright Act. [Complaint ¶ 16.] Such allegation is based on the fact 7 that MIMI submitted an application, filing fee and deposit copy with the Copyright Office on 8 August 10, 2006, over a week before filing this action (this action was filed on August 18, 2006).
5 9 [See MIMI Copyright Registration, Exhibit 1 hereto.] As the Court will see when it reviews

10 Exhibit 1, the Copyright Office issued a registration certificate for the 2003 Report which was 11 effective August 10, 2006, before this action was filed. MIMI will file an amended complaint 12 before the scheduled hearing on this motion to allege the existence of federal registration and the 13 issuance of the registration certificate submitted as Exhibit 1. 14
In summary, MIMI filed its registration application, filing fee and deposit materials for the

15 2003 Report before commencing this action. The Copyright Office has issued a copyright 16 registration for the 2003 Report which is effective August 10, 2006, before this lawsuit is filed. 17 MIMI will file an amended complaint to reflect registration. Consequently, in accordance with the 18 overwhelming weight of authority as discussed herein, MIMI submits that it has complied with 19 Section 411 of the Copyright Act. The Court consequently has subject matter jurisdiction in this 20 matter and SDSU's motion pursuant to FRCP 12(b)(1) should be denied. 21 22
B. SDSU Is Not Immune From Being Sued For Copyright Infringement In This Court SDSU also seeks dismissal pursuant to FRCP 12(b)(6) on the grounds that it is immune

23 pursuant to the Eleventh Amendment from being sued for copyright infringement in federal courts 24 like this one. Although SDSU barely devotes two pages in its moving brief to this topic, in reality 25 the question of state sovereign immunity against copyright infringement claims is a complicated 26 27 28
5

Exhibit 1 to this opposition memorandum is a true and correct copy of the federal copyright registration issued for the 2003 Report.
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 13 -

1 issue to which MIMI easily could devote 50 pages to brief. Given the page limitations under the 2 Court's local rules, MIMI will explain to the Court as concisely as possible why SDSU in fact 3 does not enjoy the immunity it asserts. If the Court believes that it requires more detailed briefing, 4 MIMI stands ready upon notice from the Court to submit briefing that more extensively deals with 5 the issue of state immunity from copyright infringement lawsuits. 6
There can be no dispute that, as a general proposition of law, States and their

7 instrumentalities are immune from suit in federal courts unless there has been consent to suit. But 8 such immunity is not absolute. On the contrary, the law is well-settled that Congress has the 9 authority to abrogate state sovereign immunity by passing appropriate legislation so long as 10 Congress satisfies two requirements. First, Congress must express in "unmistakably clear" 11 language in the language of the legislation itself its intention to abrogate the state's immunity . In 12 addition, Congress must act pursuant to a constitutional grant of power authorizing it to enact the 13 abrogating statute. [See, e.g. Fitzpatrick v. Bitzer , 427 U.S. 445 (1976); City of Boerne v. Flores, 14 521 U.S. 507, 519-20 (1997); Semin ole Tribe of Florida v. Florida, 517 U.S. 44, 55 (1995).] 15
In 1985, the Supreme Court issued its decision in Atascadero State Hospital v. Scanlon,

16 473 U.S. 234 (1985), by which the Supreme Court appeared to expand the situations where States 17 could be found immune from suit in federal court. In the 100 years before the Atascadero 18 decision, there were only four published federal decisions in copyright infringement cases 19 involving Eleventh Amendment immunity. However, in the three years following Atascadero , six 20 such suits arose and were all dismissed by the district courts on Eleventh Amendment grounds. In 21 all such cases, the defendant states asserted complete immunity from damages under the federal 22 copyright law, leaving the copyright holders without any remedy for the states' infringement given 23 exclusive federal jurisdiction for copyright infringement cases. [See Copyright Remedy 24 Clarification Act and Copyright Office Report on Copyright Liability of States: Hearings on H.R. 25 1131 Before the Subcommittee on Courts, Intellectual Property and the Administration of Justice
st 26 of the Committee on the Judiciary (the "House Hearings"), 101 Congress 51 (1989).]

27

Given this untenable situation, Congress decided that remedial legislation was needed to
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 14 -

ake crystal clear that the States were in fact subject to copyright infringement lawsuits in federa 28 m____________________________________________________________________________________________l

1 courts and were not immune from such suits under the Eleventh Amendment. [See The Copyright 2 Clarification Act: Hearing on S. 497 Before the Subcommittee on Patents, Copyrights and
st 3 Trademarks of the Committee on the Judiciary (the "Senate Hearing"), 101 Congress 1, 10, 52,

4 54, 61.] The result was the passage in 1990 of the Copyright Remedy Clarification Act 5 (sometimes referred to as the "CRCA"), P.L. 101-553, 104 Stat.2749. 6
Critically for purposes of the present motion, the CRCA modified and amended the

7 language of Section 501(a) of the Copyright Act (17 U.S.C. § 501(a)), the statute that creates a 8 federal cause of action for copyright infringement, to make express and absolutely clear that the 9 States and their instrumentalities were subject to federal court copyright infringement lawsuits just 10 like all other persons and entities in the United States. Likewise, the CRCA added Section 511 to 11 the Copyright Act, which plainly and unambiguously provides that the States and their 12 instrumentalities are not immune from suit for copyright infringement under the Eleventh 13 Amendment. 14
The language of Sections 501(a) and 511 of the Copyright Act subjecting the States and

15 their instrumentalities like SDSU to copyright infringement lawsuits in federal court remains a 16 part of the statutory language of the Copyright Act as of the filing of this opposition. So, in order 17 to prevail on its FRCP 12(b)(6) motion, SDSU must convince this Court to override the will and 18 legislative authority of the United States Congress and declare unconstitutional the relevant
6 19 portions of Sections 501(a) and 511 of the Copyright Act.

20 22

As discussed herein, there is no basis for this Court to override the conside red judgment of

7 21 the legislative branch and declare the CRCA unconstitutional. On the contrary, in enacting the

23 addressing the constitutionality of the CRCA. SDSU cites the decision in New Star Lasers, Inc. v. Regents of the University of California, 63 F. Supp. 2d 1240 (E.D. Cal. 1999) for the proposition 24 that the States' sovereign immunity may not be abrogated under Article I. In the first place, the 25 event, it cannot be disputed after the Supreme Court decision in Seminole Tribe that Article I does not empower Congress to abrogate state sovereign immunity. 26 7 th 27 CRCA was not a valid exercise of Congressional power. For the reasons discussed herein, MIMI 28
submits that Chavez was wrongly decided and should not be followed by this Court.
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6

As SDSU correctly notes in its moving papers, the Ninth Circuit has not yet issued any opinion

New Star Lasers decision is a district court decision, not a decision by the Ninth Circuit. In any

In Chavez v. Arte Publico Press , 204 F.3d 601 (5 Cir. 2000), the F ifth Circuit found that the

1 CRCA, Congress complied in full with the requirements for the abrogation of the States' 2 immunity under the Eleventh Amendment as explained in the well-settled Supreme Court 3 precedents preceding the CRCA. Congress clearly and expressly abrogated whatever immunity 4 may have existed in favor of the States for copyright infringement lawsuits in federal court. 5 Congress also validly acted pursuant to its power under the Enforcement Clause of the Fourteenth 6 Amendment in enacting the CRCA. 7
Because passage of the CRCA was a valid and lawful exercise of Congress' legislative

8 authority, SDSU does not have any sovereign immunity from the present suit since such 9 immunity, to the extent it ever existed at all, has been plainly and expressly abrogated by Sections 10 501(a) and 511 of the Copyright Act. SDSU's request for dismissal pursuant to FRCP 12(b)(6) on 11 the grounds of sovereign immunity consequently must be denied 12 13 14 15
1. Congress Expressed in "Unmistakably Clear" Language that the CRCA Abrogated State Immunity Under the Eleventh Amendment for Copyright Infringement Lawsuits . As discussed above, the first step in the inquiry whether legislation passed by Congress

16 abrogating state immunity is a constitutional exercise of Congressional power is Congress 17 expressed in "unmistakably clear" language in the legislation itself its intention to abrogate the 18 state's immunity. Here, there cannot be any question or legitimate dispute that the CRCA satisfies 19 this prong of the constitutional inquiry. Section 501(a) of the Copyright Act has long provided 20 that "[a]nyone who violates any of the exclusive rights of the copyright owner . . . is an infringer 21 of the copyright . . ." Section 501(b) provides the aggrieved copyright owner may commence a 22 copyright infringement lawsuit against such copyright infringer. 23
In enacting the CRCA, Congress amended Section 501(a) of the Copyright Act to

24 expressly provide that the term "anyone" in Section 501(a) includes any State and any 25 instrumentality of the State, to the same extent as any nongovernmental entity. Likewise, in 26 enacting the CRCA, Congress added Section 511 to the Copyright Act. To the extent that there 27 may have been any doubt whether Congress' amendment of Section 501(a) abrogated state 28 immunity, Section 511(a) expressly provides that the States and the instrumentalities of the State ____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 16 -

1 "shall not be immune, under the Eleventh Amendment of the Constitution of the United States or 2 under any other doctrine of sovereign immunity" from a copyright infringement lawsuit in federal 3 court. 4
Given the foregoing, the key inquiry in the analysis of the constitutionality of the CRCA is

5 whether Congress acted pursuant to a constitutional grant of power authorizing it to enact the 6 CRCA. As discussed below, Congress most certainly did so. 7 8 9
2. The CRCA is a Constitutional Exercise of Congress ' Authority Pursuant to the Enforcement Clause of the Fourteenth Amendment As SDSU correctly explains in its moving papers, the Supreme Court held in Seminole

10 Tribe of Florida v. Florida, 517 U.S. 44 (1995) that Congress did not have the power pursuant to 11 Article I of the Constitution. But such argument completely misses the point, because the CRCA 12 was passed and survives constitutional scrutiny as a valid exercise of Congress' power under the 13 Enforcement Clause of the Fourteenth Amendment, U.S. CONST. amend. XIV, § 5. 14
It has long been settled that Congress has the power under the Enforcement Clause to

15 abrogate state immunity. [See, e.g. City of Boerne v. Flores, 521 U.S. 507, 519-20 (1997) 16 (Congress has "wide latitude" under Enforcement Clause to enact appropriate legislation to protect 17 Fourteenth Amendment rights); Katzenbach v. Morgan , 384 U.S. 641, 651 (1966) (Enforcement 18 Clause authorizes Congress to "exercise its discretion in determining whether and what legislation 19 is needed to secure the guarantees of the Fourteenth Amendment").] 20
Among the guarantees of the Fourteenth Amendment are that no State shall deprive any of

21 its citizens of life, liberty or property without due process of law. The exclusive rights created by 22 and protected under the Copyright Act are "property" rights. [See American Tobacco Co. v. 23 Werckmeister, 207 U.S. 284, 291 (1907); Roth v. Pritikin , 710 F.2d 934, 939 (2d Cir. 1983); New
th 24 Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9 Cir. 1992).

25 Consequently, Congress was empowered under the Enforcement Clause to enact the CRCA to 26 protect copyright owners against the taking of their property, i.e., copyright infringement, by the 27 States. 28
The Supreme Court decision in City of Boerne v. Flores, 521 U.S. 507 (1997) is the critica ____________________________________________________________________________________________ l PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 17 -

1 case to the Court's analysis of whether the CRCA was a valid exercise of Congressional power 2 under the Enforcement Clause. As the court explained in Boerne, Congress' power under the 3 Enforcement Clause is "remedial" in nature, and Congress does not have the power under the 4 Enforcement Clause to create new rights. [521 U.S. at 519.] But the court also recognized that 5 "the line between measures that remedy . . . and measures that make a substantive change in the 6 governing law is not easy to discern [so] Congress must be given wide latitude [under the 7 Enforcement Clause]." [Id. at 519-20 (emphasis added).] 8
The Boerne decision sets forth the analytical framework that federal courts must employ to

9 determine if a statute is sustainable under the Enforcement Clause. As the Supreme Court 10 explained in Boerne, "there must be a congruence and proportionality between the injury to be 11 prevented or remedied and the means adopted to that end." [Id.] To apply this somewhat 12 amorphous principle, the Supreme Court explained that for Congress to invoke the Enforcement 13 Clause, it must identify conduct transgressing the Fourteenth Amendment's protections, and must 14 tailor its legislative scheme to remedying or preventing such conduct. [Id.] 15
The Enforcement Clause analysis required under Boerne focuses on three particular issues:

16 (1) the nature of the injury to be remedied; (2) whether there are adequate state remedies to 17 address the injury; and (3) the coverage of the legislation. [See Kimel v. Florida Board of 18 Regents, 528 U.S. 62 (2000). As discussed below, the CRCA passes muster under all three of 19 these factors so the CRCA was a valid exercise of Congress' power under the Enforcement 20 Clause. 21 22 23
a. The CRCA was enacted in response to substantial evidence of copyright infringement by the States and their instrumentalities As the Court might expect, Congress held substantial hearings regarding the need for and

24 scope of the CRCA before its passage. The evidence presented to Congress during such hearings 25 unfortunately showed widespread and growing trend of copyright infringement by the States and 26 their instrumentalities (like colleges and universities). For example, one witness testified that 27 problems "are clearly widespread and they are clearly increasing." [Senate Hearings at pp. 106, 28 109.] A number of witnesses testified about the problems they had enforcing their copyrights ____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 18 -

1 against state universities. [Senate Hearings at pp. 82, 90-91 (addressing illegal copying of 2 copyrighted materials by universities and losses caused thereby); p. 109 (discussing devices 3 created by universities to override copy protections on computer products); House Hearings at p. 4 146 (discussing curious situation where universities typically do not buy multiple copies of 5 computer software as required by copyright law); Senate Hearing at p. 82; House Hearings at pp. 6 104, 106, 148 (discussin g illegal university photocopying of copyrighted course books); Senate 7 Hearing at pp. 95, 102.).] 8
Witnesses also testified that copyright infringement problems by the states only increased

9 as the well-publicized budget problems of various states became more severe. [See House 10 Hearings at p. 92.] Congress also heard how state agencies increasingly were refusing to license 11 copyrighted works like software and performance works because of the States' perceived Eleventh 12 Amendment immunity. [See Senate Hearing at pp. 69-70, 77; p. 152; pp. 95, 102.] Even state 13 university representatives themselves admitted that the widespread evidence of state copyright 14 infringement and invalid assertions of Eleventh Amendment immunity as such circumstances 15 existed at the time of the hearings about the CRCA could justify abrogation. [See Senate Hearing 16 at p. 131; House Hearings at p 179.] 17
Simply put, Congress had more than ample evidence of widespread and increasing

18 copyright infringement and improper assertions of Eleventh Amendment immunity by the States 19 that Congress believed needed to be remedied by the enactment of the CRCA. Congress more 20 than amply satisfied the first Boerne factor in enacting the CRCA. 21 22 23
b. Congress determined there were no available state remedies for copyright infringement Congress carefully considered the availability of state remedies for copyright infringement

24 as part of its deliberations about the CRCA. Congress concluded that there was not a single state 25 that had any remedy for copyright infringement. This is no surprising giving the fact that the 26 federal courts have exclusive jurisdiction over copyright infringement lawsuits pursuant to 28 27 U.S.C. 1338(a). [See Senate Hearing at pp. 7, 66; House Hearings at p. 79.] Moreover, as
eviously discussed, following the Supreme Court's decision in Atascadero Hospital , there was 28 pr____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 19 -

1 an explosion of copyright litigation whereby states had infringed copyrights but attempted to avoid 2 liability on the basis of alleged Eleventh Amendment immunity. 3
As can be seen, at the time it enacted the CRCA, Congress was faced with a situation

4 where there was no remedy available whatsoever to copyright owners whose copyrights had been 5 infringed by states or their instrumentalities. Congress consequently reasonably exercised its 6 power under the Enforcement Clause to abrogate state immunity in order to create a remedy 7 against states who deprive their citizens of their property without due process by engaging in 8 copyright infringement. 9 10 11
c. Congress tailored the remedy to be provide d by the CRCA to the magnitude of the harm to be prevented In enacting the CRCA, Congress did nothing more than extend the remedies already

12 available under the Copyright Act against private and non-governmental parties to the States and 13 their instrumentalities. In enacting the CRCA, Congress did not create any type of new or 14 enhanced right against the States or rights against the States that were different or greater than the 15 rights against private parties. Moreover, because of the nature of copyright infringement, i.e., the 16 unlawful use of copyrighted materials, Congress did not create any remedy that was esoteric or 17 difficult to understand. 18
In summary, Congress, in the exercise of the discretion and wide latitude granted to it to

19 enforce the protections of the Fourteenth Amendment, found that making damages remedies 20 available against the States was necessary to remedy state copyright infringement. [See H. Rep. 21 No. 101-282(I) at pp. 8-9.] Such exercise of its discretion was amply and fully supported by fact 22 and the evidence adduced by Congress during its hearings on the CRCA, and is eminently 23 constitutional. 24 25 26
3. The Supreme Court Decision in Florida Prepaid Does Not Support a Finding that the CRCA is Unconstitutional In Florida Prepaid Postsecondary Educational Expense Bd. v. College Savings Bank, 527

27 U.S. 627 (1999), the Supreme Court found that an amendment to the Patent and Plant Variety Act 28 called the "Patent Remedy Act" that was enacted by Congress to abrogate state immunity under ____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 20 -

1 such statute was not a valid exercise of Congress' authority under the Fourteenth Amendment. 2 Such decision does not mandate that the Court likewise invalidate the CRCA and grant SDSU's 3 motion to dismiss. 4
This is so because, as discussed in detail above, in passing the CRCA Congress did

5 everything that the Florida Prepaid court found lacking when it invalidated the Patent Remedy 6 Act. As discussed herein, unlike the situation with the Patent Remedy Act, Congress identified a 7 widespread and increasing pattern of state copyright infringement. Congress considered the 8 availability of recourse under state law (which, as discussed was totally non-existent), and it 9 tailored the CRCA to remedy the specific problem of state copyright infringement it identified. 10
Simply put, in enacting the CRCA, Congress acted at least as prudently and carefully ­ if

11 not more prudently and carefully ­ as it has in the past in enacting legislation ultimately found by 12 the Supreme Court to be valid exercises of Congress' power under the Enforcement Clause. [See, 13 e.g., Fitzpatrick v. Bitzer, 427 U.S. 445 (1976); Katzenbach v. Morgan, 384 U.S. 641 (1966).] 14 Thus, the decision in Florida Prepaid does not provide any basis or reason for this Court to
8 15 invalidate the CRCA.

16 17

C.

Rauch Is Not Entitled To Any Relief Pursuant To His Supposed "Joinder"

As made clear by his filing, the sole basis for Rauch's "joinder" is that he supposedly was

18 an employee of SDSU who was working in his capacity as such at all times relevant to the
9 19 underlying action. As the Court k nows, to the extent Rauch's purported joinder is made pursuant

20 to FRCP 12(b)(6), the Court must accept as true all material allegations in MIMI's Complaint, as
th 21 well as all reasonable inferences therefrom. [Pareto v. FDIC, 139 F.3d 696, 699 (9 Cir. 1998).

22 The Complaint must be construed in the light most favorable to MIMI, and dismissal may not be 23 24 25 26 27 28
8

Indeed, in his dissent in Florida Prepaid, Justice Stevens specifically commented that the CRCA was different that the Patent Remedy Act at issue in Florida Prepaid because of the evidence adduced by Congress during its deliberations about the CRCA, and consequently concluded that the CRCA was appropriate legislation under the Enforcement Clause. [See Florida Prepaid, 527 U.S at 659 n.9 (Stevens, J., dissenting).] 9 To the extent Rauch also is claiming by his joinder that the copyright infringement claim against him should be dismissed pursuant to FRCP 12(b)(1) based on the registration certificate issue, such arguments fails for the same reasons discussed in connection with SDSU's motion on the same grounds.
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 21 -

1 granted unless it appears "beyond doubt" that MIMI can prove no set of facts in support of its
th 2 claims. [See Parks School of Business, Inc. v. Symington, 51 F.3d 1480, 1484 (9 Cir. 1995).]

3 5 6

Applying these standards, it is clear that Rauch is not entitled to any relief pursuant to his

4 joinder:
1. Rauch Does Not Enjoy Any Immunity Here MIMI's Complaint alleges that MIMI does not know if Rauch was an employee or

7 independent contractor of SDSU. [Complaint ¶ 20.] Moreover, MIMI has sued Rauch both in his 8 individual capacity (making this lawsuit a so-called "personal capacity suit") as well as in his 9 potential role as a SDSU employee. [Complaint ¶ 21.] Because this is a 12(b)(6) motion, MIMI's 10 allegations must be accepted as true and Rauch cannot introduce extrinsic evidence n support of
10 11 the motion. Because the Complaint does not establish the essential premise of Rauch's joinder,

12 that he was an employee of SDSU, Rauch cannot obtain any relief by his joinder. 13
In any event, even if SDSU enjoys sovereign immunity which precludes this suit, such

14 immunity does not shield Rauch from personal liability for committing copyright infringement
11 15 himself or for inducing and aiding and abetting SDSU to commit copyright infringement. The th 16 decision in Richard Anderson Photography v. Brown , 852 F.2d 114 (4 Cir. 1988) is squarely on

17 point in such regard. 18
In Richard Anderson Photography , the plaintiff sued Radford University, an educational

19 instrumentality of the Commonwealth of Virginia, and Deborah Brown, Radford's director of 20 public information and relations, for copyright infringement for making unauthorized use of the 21 plaintiff's copyrighted photographs. Given that the lawsuit was filed before passage of the CRCA, 22 the court found that Radford was entitled to immunity from such suit. 23 25 26 a FRCP 12(b)(6) motion. 11 For the reasons discussed herein, SDSU is not immune from this suit. Rauch consequently 27 28
10

The claims against Brown were against her in her official capacity as well as in her

24 individual capacity. The court found that Brown was not entitled to any immunity for acts of
Rauch's work status with SDSU will be a matter of proof in this case that cannot be decid ed on

likewise enjoys no immunity for acts taken in his official capacity (if any) for the same reasons.
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 22 -

1 copyright infringement taken in her individual capacity, even if such copyright infringement was 2 done in the course and scope of Brown's employment. [See 852 F.2d at 122.] In so holding, the 3 Fourth Circuit explained, in language squarely on point here, that "the mere fact that [Brown's] 4 conduct was undertaken in the course of her state employment does not of course relieve her of 5 individual liability, even if her employer could not be sued for it [because of immunity]. A state 6 may no more than an individual principal give its agent authority to commit torts without civil 7 recourse . . . Brown is therefore amenable to suit in her individual capacity for the claimed 8 copyright violation." [Id. (emphasis added).] 9
Just as was true in Richard Anderson Photography, Rauch cannot claim and is not entitled

10 to any immunity for acts of copyright infringement taken in his individual capacity, even if such 11 acts of copyright infringement were done in the course of Rauch's employment by SDSU. 12 MIMI's Complaint specifically and expressly alleges claims against Rauch against Rauch in his 13 individual capacity. [Complaint ¶ 21.] Consequently, just as was done in Richard Anderson 14 Photography, this Court should reject any claim of immunity by Rauch. 15 16
2. MIMI's State Law Claims Against Rauch Are Not Preempted. It is not clear from Rauch's joinder whether he also claims that MIMI's state law claims

17 against him are preempted. To the extent Rauch is in fact making such a claim, it must fail in the 18 context of this motion. 19
The preemption argument made in SDSU's motion and potentially bootstrapped by Rauch

20 is based on a fundamental misinterpretation of the nature and basis of MIMI's state law claims. 21 As SDSU correctly explains in its motion, preemption exists only as state law claims based upon 22 rights that are the equivalent to the exclusive copyright rights protected under the Copyright Act. 23 [17 U.S.C. § 301(a).] 24
Here, MIMI's state law claims against Rauch are based on the misappropriation and

25 conversion by Rauch of things such as MIMI's methodologies for evaluating the economic impact 26 of sporting events, questionnaires developed by MIMI to evaluate the impact of the Holiday Bowl, 27 work papers generated by MIMI when it did economic impact studies for the Holiday Bowl, and
her intangible property and ideas. [Complaint ¶¶ 58-59, 64 -68, 74 -78.] 28 ot____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 23 -

1

So, reduced to their essence, MIMI's allegations are that Rauch stole two separate and

2 distinct types of property from MIMI. First, Rauch pirated and misappropriated MIMI's 3 copyrighted 2003 Report to create the infringing 2004 economic impact study. Such wrongful 4 conduct clearly falls within the exclusive jurisdiction of the Copyright Act and Is not addressed by 5 MIMI's state law claims. 6
But as alleged in MIMI's Complaint, Rauch also stole and misappropriated MIMI's

7 methodologies for evaluating the economic impact of sporting events, questionnaires developed 8 by MIMI to evaluate the impact of the Holiday Bowl, work papers generated by MIMI when it did 9 economic impact studies for the Holiday Bowl, and other intangible property and ideas. None of 10 this property is the subject of copyright protection. Indeed, unlike the situation in the Berge case 11 cited in SDSU's motion, the property stolen and misappropriated by Rauch that is not covered by 12 copyright is not simply the "ideas" embodied in the copyrighted work, but actually property that is 13 separate and distinct from the copyrighted content in the 2003 Report. 14
Simply put, because the property that is the subject of MIMI's state law claims against

15 Rauch is not property that is the "equivalent" of rights protected under the Copyright Act, there is 16 no preemption. 17
It also must be remembered that Rauch is raising his preemption defense in the context

18 of a FRCP 12(b)(6) motion. Obviously, the identity and nature of the property that is the subject 19 of MIMI's state law claims will be the subject of substantial discovery and proof by evidence. At 20 this stage of this case, the Court must accept as true MIMI's characterization of the property that is 21 addressed by MIMI's ate law claims. If, after discovery, Rauch still believes preemption exists, he 22 can bring a summary judgment motion. But for now, accepting the allegations of MIMI's 23 Complaint as true and drawing all favorable inferences from such allegations in favor of MIMI as 24 the Court must in the context of a FRCP 12(b)(6) motion, Rauch's preemption argument must be 25 rejected. 26
In the event the Court believes that MIMI's Compliant does not show clearly enough why

27 the state law claims are not preempted, MIMI requests leave to file an amended complaint to
ovide more detailed allegations about the nature of the property addressed by the state law 28 pr____________________________________________________________________________________________
PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 24 -

1 claims, and more detailed allegations showing why there is no preemption. 2 3 4 5 DATED: November 2, 2006 6 7 8 9 10 11 12 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
____________________________________________________________________________________________ PLAINTIFF'S MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION TO DEFENDANTS' MOTION TO DISMISS - 25 -

THE AFFINITY LAW GROUP APC

By:

/s/ Gregory P. Goonan Gregory P. Goonan Attorneys for Plaintiff Marketing Information Masters, Inc.

Certificate of Service

The undersigned hereby certifies that on this 2nd day of November 2006, a true and accurate copy of the attached document was electronically filed with the Court, to be served by 13 operation of the Court's electronic filing system, upon the following: Jonathan S. Pink, Esq. Lewis Brisbois Bisgaard & Smith LLP 650 Town Center Drive, Suite 1400 Costa Mesa, CA 92626 Attorneys for Defendants

__/s/ Gregory P. Goonan _