Righthaven LLC v. Newman

Filing 25

MOTION to Dismiss for Lack of Jurisdiction Subject Matter and Personal First Amended Complaint by Defendant Garry Newman. Responses due by 8/18/2011. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J)(DiRaimondo, Anthony)

Exhibit F

{00641518.1}

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

2011 WL 2441020
Only the Westlaw citation is currently available.
United States District Court,
D. Nevada.
RIGHTHAVEN, LLC, Plaintiff,
v.
Wayne HOEHN, Defendant.
No. 2:11–CV–00050–PMP–RJJ.June 20, 2011.
Attorneys and Law Firms
Shawn A. Mangano, Shawn A. Mangano, Ltd, Las Vegas,
NV, for Plaintiff.
James M. Devoy, Marc J. Randazza, Randazza Legal
Group, San Diego, CA, for Defendant.
Opinion

ORDER
PHILIP M. PRO, District Judge.
*1 Presently before the Court is Defendant’s Motion to
Dismiss for Lack of Subject Matter Jurisdiction (Doc. #
16), filed on April 17, 2011. Plaintiff filed a Response
(Doc. # 23), on May 9, 2011. Defendant filed a Reply
(Doc. # 26), on May 15, 2011. Also before the Court is
Defendant’s Motion for Summary Judgment (Doc. # 8),
filed on February 11, 2011. Plaintiff filed a Response
(Doc. # 13), on March 7, 2011. Defendant filed a Reply
(Doc. # 14), on March 24, 2011. This Court held a
hearing on the Motion for Summary Judgment on May 3,
2011. (Mins. of Proceedings (Doc. # 19).)
I. BACKGROUND
This is a copyright infringement action brought by
Plaintiff Righthaven LLC (“Righthaven”) against
Defendant Wayne Hoehn (“Hoehn”), who is and was at
all relevant times a registered user and content contributor
to the website < madjacksports.com> (the “Website”).
(Pl.’s Resp. To Mot. For Summ. J. [“Resp.”] (Doc. # 13).)
Hoehn has never been employed by the Website’s owner
and operator. (Id.) On or about November 29, 2010,
Hoehn displayed an unauthorized reproduction of a
copyrighted literary work entitled “Public Employee
Pensions. We Can’t Afford Them” (the “Work”) as part
{00640653.1}

of the content contributed by him to the Website. (Id.) In
his reproduction, Hoehn attributed the source of the Work
to the Las Vegas Review Journal (“LVRJ”).
(Compl.(Doc.# 1).) Hoehn avers that he did not post the
Work for profit and that there was no mechanism for him
to profit by posting the Work on the website. (Def.’s Mot.
For Summ. J. [“MSJ”] (Doc. # 8), Hoehn Decl., Ex. A.)
Hoehn states he removed the Work from the Website on
January 6, 2011 .(Id.)
At the time of the posting, Righthaven was not the owner
of the Work, rather the Work was owned by Stephens
Media. (Gibson Decl. (Doc. # 24), Ex 1.) In January 2010,
Righthaven and Stephens Media entered into the Strategic
Alliance Agreement (the “SAA”), governing the ongoing
relationship between Righthaven and Stephens Media
regarding assignment of copyrights originally owned by
Stephens Media. (Gibson Decl.) Section 3.3 of the SAA
governs the rights and responsibilities of Righthaven and
Stephens Media with respect to pursuing alleged
infringers and states in part:
If Righthaven chooses in the Remediation Option
Notice to not pursue an Infringement Action (the
“Remediation Declination”), then Righthaven shall
reassign the Assigned Copyright to Stephens Media
that is the subject of the Remediation Declination....
Notwithstanding any other provision of this
Agreement, Stephens Media shall have the right to
Notify Righthaven, within five (5) Business Days after
receipt of a respective Remediation Option Notice, that
Righthaven should not take any Infringement Action
with respect to a particular putative infringer as
indicated in any Remediation Option Notice (the
“Declination Notice”) and upon receipt of a
Declination Notice, Righthaven shall not take any
Infringement Action with respect to the particular
putative infringer set forth in any Declination Notice;
provided, however, that Stephens Media shall only
send any Declination Notice on a reasonable basis with
the grounds of reasonability being that a particular
infringer is a charitable organization, is likely without
financial resources, is affiliated with Stephens Media
directly or indirectly, is a present or likely future valued
business relationship of Stephens Media or otherwise
would be a Person that, if the subject of an
Infringement Action, would result in an adverse result
to Stephens Media.
*2 (Gibson Decl., Ex. 2.)
Section 7.2 of the SAA states in part:
Despite any such Copyright Assignment, Stephens
Media Shall retain (and is hereby granted by
Righthaven) an exclusive license to Exploit the

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

1

Exhibit F

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

Stephens Media Assigned Copyrights for any lawful
purpose whatsoever and Righthaven shall have no right
or license to Exploit or participate in the receipt of
royalties from the Exploitation of the Stephens Media
Assigned Copyrights other than the right to proceeds in
association with a Recovery. To the extent that
Righthaven’s maintenance of rights to pursue infringers
of the Stephens Media Assigned Copyrights in any
manner would be deemed to diminish Stephens
Media’s right to Exploit the Stephens Media Assigned
Copyrights, Righthaven hereby grants an exclusive
license to Stephens Media to the greatest extent
permitted by law so that Stephens Media shall have
unfettered and exclusive ability to Exploit the Stephens
Media Assigned Copyrights.
(Id.)
Section 8 of the SAA is titled “Stephens Media’s Right of
Reversion.” Section 8 states in part:
Stephens Media shall have the right at any time to
terminate, in good faith, any Copyright Assignment
(the “Assignment Termination”) and enjoy a right of
complete reversion to the ownership of any copyright
that is subject of a Copyright Assignment.... In order to
effect termination of the [sic] any Copyright
Assignment, Stephens Media shall be required to
provided Righthaven with thirty (30) days prior written
notice. Within thirty (30) days after receipt of
termination of the [sic] any Copyright Assignment,
Righthaven shall commence documentation to effect
reassignment of the Stephens Media Assigned
Copyrights to Stephens Media.
(Id.)
On December 6, 2010, Stephens Media, the original
owner of the Work, assigned all rights, title, and interest
in and to the Work, including the right to seek redress for
all past, present, and future infringements, to Plaintiff
Righthaven (the “Assignment”). (Gibson Decl.) The
Assignment states in part:
Assignor hereby transfers, vests and assigns the work
described in Exhibit A, attached hereto and
incorporated herein by this reference (the “Work”), to
Righthaven, subject to the Assignor’s rights of
reversion, all copyrights requisite to have Righthaven
recognized as the copyright owner of the Work for
purposes of Righthaven being able to claim ownership
as well as the right to seek redress for past, present and
future infringements of the copyright, both accrued and
unaccrued, in and to the Work.
(Gibson Decl., Ex. 1.)
{00640653.1}

Plaintiff Righthaven brought the present suit against
Hoehn on January 11, 2011, based on Hoehn’s posting of
the Work on the Website. (Compl.(Doc.# 1).) The suit
seeks a permanent injunction prohibiting Hoehn from
posting the Work and an award of statutory damages.
On April 17, 2011, Hoehn filed a Motion to Dismiss for
lack of subject matter jurisdiction, arguing that
Righthaven did not have the requisite standing to bring a
copyright infringement suit because it was not the owner
of an exclusive right. On May 9, 2011, Stephens Media
and Righthaven entered into the Clarification and
Amendment to Strategic Alliance Agreement (the
“Clarification”). (Gibson Decl., Ex. 3.) The Clarification
states that the intent of the parties when they entered into
the SAA was “to grant Stephens Media a license to
Exploit the Stephens Media Assigned Copyrights for any
lawful purpose whatsoever without in any way hindering
the right of Righthaven to seek redress for any past,
present or future infringements of such copyright.” (Id.)
The Clarification amends section 7.2 of the SAA and
replaces it with the following:
*3 Automatically upon execution of a Copyright
Assignment, Stephens Media is granted a nonexclusive license to Exploit the Stephens Media
Assigned Copyright to the greatest extent permitted by
law in consideration for payment in the amount of One
Dollar and Zero Cents ($1.00) per year to Righthaven
as a license or royalty for each Stephens Media
Assigned Copyright as Consideration for the license
granted herein (the “License Fee”). Any License Fee
required under this amended and revised Section 7.2
shall be retroactive to the Effective Date. In the event
that Righthaven decides to Exploit or participate in
receipt of royalties from Exploitation of a Stephens
Media Assigned Copyright other than in association
with a Recovery, Righthaven shall give Stephens
Media 30 days prior written notice. The parties
acknowledge that failure to provide such notice would
be a material breach of this Agreement and would
cause Stephens Media irreparable harm, remediable
through injunctive relief, which Righthaven and those
asserting rights obtained from it shall have no right to
oppose.
(Id.)
Additionally, the Clarification amends section 8 of the
SAA and replaces it with sections 8.1 and 8.2, including
the following:
At any time, within its sole discretion, Stephens Media
shall have the option, within 14 days of providing
notice of the exercise of such option, to purchase all
right and title to the Stephens Media Assigned
Copyright in consideration for payment in the amount
of Ten Dollars and Zero Cents ($10.00) (“Exercised

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

2

Exhibit F

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

Option”).
(Id.) The Clarification states it is to be retroactively
effective to the original date of the SAA. (Id.)
Also on May 9, 2011, Righthaven filed the Declarations
of Steven A. Gibson (“Gibson”), CEO of Righthaven, and
Mark Hinueber (“Hinueber”), General Counsel of
Stephens Media. (Gibson Decl.; Hinueber Decl. (Doc. #
25).) Both Gibson and Hinueber state that it was the
parties’ intent to grant all ownership rights in the Work to
Righthaven together with the right to sue for all past,
present, and future copyright infringement. (Id.) Hinueber
also states that it was not the intent of Stephens Media “to
divest or otherwise impair Righthaven’s ability to file or
otherwise maintain copyrighted infringement actions
based on content ... specifically assigned to Righthaven
through the license-back rights described in the SAA.
Rather it was [the parties’] intent in this regard to
acknowledge Stephens Media’s ability to continue to use
the assigned content as a licensee.” (Hinueber Decl.)
Hoehn now moves to dismiss, arguing this Court does not
have subject matter jurisdiction over this matter because
Righthaven does not own any exclusive rights in the
copyright necessary to bring suit. Hoehn further contends
that the May 9, 2011 Clarification to the SAA does not
correct these deficiencies and ultimately deprives
Righthaven of any exclusive rights in the assigned
copyright. Righthaven responds that it has standing to
bring this suit, and in any event, the May 9, 2011
Clarification cures any alleged defect in standing. Further,
Righthaven argues the SAA reflects promises made
between Righthaven and Stephens Media with regard to
future transactions, but itself does not cause an
assignment of rights. Rather, Righthaven argues, the
assignment of rights is governed by the Assignment
entered into on December 6, 2010.
*4 Additionally, Hoehn moves for summary judgment,
arguing that his use of the Work is protected as fair use.
Righthaven responds that summary judgment on fair use
is premature as Plaintiff has not been permitted to engage
in discovery and, in any case, Defendant fails to establish
that his conduct is protected as fair use. Defendant replies
that Plaintiff was given the opportunity to engage in
discovery and did not do so. Additionally, Defendant
states that because both parties agree as to the facts of the
case, there is no genuine issue of material fact and
summary judgment is appropriate.
II. MOTION TO DISMISS FOR LACK OF
JURISDICTION
To hear a case, a federal court must have subject matter
{00640653.1}

jurisdiction over the matter at hand. Lujan v. Defenders of
Wildlife, 504 U.S. 555, 560–61 (1992). Central to the
issue of subject matter jurisdiction is the issue of standing,
requiring the party invoking jurisdiction to establish
actual or imminent harm. Id. at 560. The invoking party
bears the burden of establishing standing with the same
burden of proof “required at the successive stages of the
litigation.” Id. at 561. If a court does not set a hearing on a
motion to dismiss, “a plaintiff must make only a prima
facie showing of jurisdictional facts through the submitted
materials in order to avoid a defendant’s motion to
dismiss.” Data Disc, Inc. v. Sys. Tech. Assocs., Inc., 557
F.2d 1280, 1285 (9th Cir.1977).
“[O]nly copyright owners and exclusive licensees of
copyright may enforce a copyright.” Sybersound Records
v. UAV Corp., 517 F.3d 1137, 1144 (9th Cir.2008).
Exclusive rights in a copyright are enumerated in 17
U.S.C. § 106 and include the exclusive rights:
(1) to reproduce the copyrighted work in copies or
phonorecords;
(2) to prepare derivative works based upon the
copyrighted work; [and]
(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other transfer
of ownership, or by rental, lease, or lending.
Id. “The right to sue for an accrued claim for infringement
is not an exclusive right under § 106.” Silvers v. Sony
Pictures Entm’t, Inc., 402 F.3d 881, 884 (2005).
“Exclusive rights in a copyright may be transferred and
owned separately, but ... [there are] no exclusive rights
other than those listed in § 106.” Id. at 885. While the
right to sue is not an exclusive right, it may be transferred
to another party if accompanied with an exclusive right.
Id. at 890 n. 1. Additionally, the right to sue for past
infringement can be transferred to another party so long
as it is expressly included in the assignment along with an
exclusive right. Id. at 889–90.
Plaintiff Righthaven alleges it has presented evidence in
the form of the Assignment that Stephens Media
transferred to Righthaven exclusive rights in the Work
coupled with the right to sue based on infringement of the
copyrighted Work. Additionally, Righthaven argues that
to the extent the Court finds the Assignment ambiguous,
the Court should look to the parties’ intent, evidenced by
the Gibson and Hinueber declarations, that the parties
intended to transfer the exclusive rights in the Work along
with the right to sue based on past, present, and future
infringement of the copyrighted Work.
*5 Ownership of the exclusive right to reproduce the
copyrighted work is necessary to bring a suit for
infringement based on reproduction of the copyrighted

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

3

Exhibit F

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

work. Sybersound, 517 F.3d at 1144. The language of the
Assignment transfers “all copyrights requisite to have
Righthaven recognized as the copyright owner of the
Work for purposes of Righthaven being able to claim
ownership as well as the right to seek redress for past,
present and future infringements of the copyright.”
Additionally, Hinueber states that “Stephens Media
assigned all rights, title and interest in and to the Work,
including the right to seek redress for all past, present and
future infringements of the Work to Righthaven on
December 6, 2010.” (Hinueber Decl.)
However, the Assignment cannot be read in isolation. The
SAA governs the parties’ relationship with respect to
Copyright Assignments. (Gibson Decl., Ex. 2 at 7. 1.)
Additionally, the blank form Assignment is incorporated
as an attachment to the SAA, indicating that the two
documents together govern the transfer of Copyright
Assignments rather than the Assignment alone. (Id., Ex.
1.) The Assignment together with the SAA are
unambiguous.
The Court finds the SAA in its original form qualifies the
Assignment with restrictions or rights of reversion, such
that in the end, Righthaven is not left with ownership of
any exclusive rights. Under Section 3.3 of the SAA,
Righthaven is obligated to reassign the rights to the Work
if it does not pursue an infringement action within 60 days
of the Assignment. Additionally, this section gives
Stephens Media the right to direct Righthaven not to
pursue an action against an alleged infringer. Further,
under Section 7.2, Righthaven has “no right of license to
Exploit or participate in the receipt of royalties from the
Exploitation of the Stephens Media Assigned
Copyrights....” Stephens Media has the unilateral right, at
any time, to terminate the Copyright Assignment and
enjoy a complete right of reversion. These carveouts
deprive Righthaven of any of the rights normally
associated with ownership of an exclusive right necessary
to bring suit for copyright infringement and leave
Righthaven no rights except to pursue infringement
actions, a right which itself is subject to Stephens Media’s
veto.
In Nafal v. Carter, the court faced a similar disconnect
between the parties’ label of a transfer of exclusive rights
in a copyright assignment and the reality of their transfer.
540 F.Supp.2d 1128 (C.D.Cal.2007). The Nafal court
found that despite an assignment purporting to give the
plaintiff “an undivided one-half (50%) of [assignor’s]
rights, title and interest [in the work],” this label could not
subvert summary judgment where the reality of the
assignment left the plaintiff with little to no rights in the
copyrighted work. Id. at 1141–42. The court found that
the assignment did not make the plaintiff a “co-exclusive
licensee” with the right to sue for infringement because
the assignment gave the plaintiff no discretion in deciding
{00640653.1}

when to sue an alleged infringer; the plaintiff’s interest in
the copyrighted work would be terminable if the plaintiff
did not bring an infringement lawsuit within a certain
time period; nearly every effort by the plaintiff to exploit
the copyrighted work had to be approved in advance; and
the plaintiff did not offer facts that would permit the
inference that he had rights to do anything beyond
negotiating “compulsory mechanical licenses, which does
not confer Plaintiff with the power to exploit any
exclusive rights.”1 Id. at 1143.
1

A mechanical license “grants third parties the nonexclusive right to reproduce a musical composition on
phonorecords, provided that the copyright owner has
already authorized the use of such work,” during the
manufacture and sale of phonorecords. Nafal, 540
F.Supp.2d at 1143.

*6 Although the Court is evaluating Righthaven’s
standing at the dismissal stage, rather than summary
judgment as in Nafal, similar factors lead the Court to the
same conclusion. Stephens Media retains discretion over
when to bring suit for infringement and Righthaven’s
rights will be terminated if it does not bring suit within a
specified time period. Righthaven has no right to exploit
or profit from the work in any way other than that
associated with recovery from an infringement action.
The Copyright Assignment is fully terminable by
Stephens Media at any time. Righthaven has no
meaningful rights other than the bare right to sue,
something that is not transferable under Silvers. 402 F.3d
at 884.
Similarly, in Lahiri v. Universal Music & Video Distrib.
Corp., the Court found that an assignment that used
ownership language but was too restrictive to convey such
a right could not transfer an exclusive right. 606 F.3d
1216, 1222 (9th Cir.2010). The assignment the plaintiff
relied on to establish a right in the copyrighted work
transferred only an interest in the recovery based on
copyright infringement and no interest in the work itself.
Here, the rights in the copyrighted Work retained by
Stephens Media deprive Righthaven of everything except
the right to pursue alleged infringers, a right that is still
subject to Stephens Media’s oversight. Accordingly,
Righthaven does not possess an exclusive right in the
Work and therefore does not have standing to bring a suit
for infringement.
Even assuming that the May 9, 2011 Clarification can
change the jurisdictional facts as they existed at the time
of the filing of the suit, it still does not correct the
deficiencies with respect to lack of standing. The May 9,
2011 Clarification offers recitals stating the parties’ intent
“to convey all ownership rights in and to any identified
Work to Righthaven ... so that Righthaven would be the
rightful owner of any identified Work and entitled to seek

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

4

Exhibit F

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

copyright registration.” However, it does not provide
Righthaven with any exclusive rights necessary to bring
suit.
The May 9, 2011 Clarification provides Righthaven with
only an illusory right to exploit or profit from the Work,
requiring 30 days advance notice to Stephens Media
before being able to exploit the Work for any purpose
other than bringing an infringement action. Stephens
Media has, in its sole discretion, the option to repurchase
the Copyright Assignment for a nominal amount within
14 days, thereby retaining the ability to prevent
Righthaven from ever exploiting or reproducing the
Work. Stephens Media’s power to prevent Righthaven
from exploiting the Work for any purpose other than
pursuing infringement actions is further bolstered by the
Clarification’s provision that every exploitation of the
Work by Righthaven other than pursuing an infringement
action without first giving Stephens Media notice
constitutes irreparable harm to Stephens Media. Stephens
Media may obtain injunctive relief against Righthaven to
prevent such “irreparable harm” and, pursuant to the
Clarification, Righthaven has no right to oppose Stephens
Media’s request for injunctive relief. Accordingly,
Righthaven does not have any exclusive rights in the
Work and thus does not have standing to bring an
infringement action. The Court therefore will grant
Defendant’s Motion to Dismiss for lack of standing.
III. SUMMARY JUDGMENT
*7 Assuming Righthaven was found to have standing to
bring this action, the Court nonetheless finds Hoehn is
entitled to summary judgment on the ground of fair use of
the Work. Summary judgment is appropriate if the
pleadings, depositions, answers to interrogatories and
admissions, and affidavits demonstrate “there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a). A fact is “material” if it “might affect the outcome
of the suit under the governing law.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is
genuine if “the evidence is such that a reasonable jury
could return a verdict for the nonmoving party.” Id.
Where a party fails to offer evidence sufficient to
establish an element essential to its case, no genuine issue
of material fact can exist, because “a complete failure of
proof concerning an essential element of the nonmoving
party’s case necessarily renders all other facts
immaterial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322–
23 (1986).
The party “seeking summary judgment bears the initial
responsibility of informing the district court of the basis
for its motion, and identifying those portions of ‘the
{00640653.1}

pleadings ...’ which it believes demonstrate the absence of
a genuine issue of material fact.” Id. at 323. The burden
then shifts to the non-moving party to go beyond the
pleadings and set forth specific facts demonstrating there
is a genuine issue of material fact for trial. Fairbank v.
Wunderman Cato Johnson, 212 F.3d 528, 531 (9th
Cir.2000). The Court views all evidence in the light most
favorable to the non-moving party. County of Tuolumne v.
Sonora Cmty. Hosp., 236 F.3d 1148, 1154 (9th Cir.2001).
Under Federal Rule of Civil Procedure 56(b) “a party may
file a motion for summary judgment at any time until 30
days after the close of all discovery.” “If a nonmovant
shows by affidavit or declaration that, for specified
reasons, it cannot present facts essential to justify its
opposition, the court may” defer consideration of a
motion or deny it, allow the parties time to complete
additional discovery, or grant other appropriate relief.
Fed.R.Civ.P. 56(d). The party requesting additional time
to conduct discovery to oppose summary judgment must
present an affidavit stating the specific facts it hopes to
elicit from further discovery, that the facts exist, and that
the facts are essential to oppose summary judgment.
Family Home & Fin. Ctr, Inc. v. Fed. Home Loan Mortg.
Corp., 525 F.3d 822, 827 (9th Cir.2008). If the
nonmovant does not satisfy these requirements, the court
may proceed to rule on summary judgment without
granting additional discovery. Id.
Fair use is a defense to use of a copyrighted work which
otherwise would be copyright infringement if the work is
used “for purposes such as criticism, comment, news
reporting, teaching ..., scholarship, or research.” 17
U.S.C. § 107. Factors to be considered when determining
fair use include—
*8 (1) the purpose and character of the use, including
whether such use is of commercial nature or is for
nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or
value of the copyrighted work.
Id.
Fair use is evaluated on a case-by-case basis. Campbell v.
Acuff–Rose Music, Inc., 510 U.S. 569, 577 (1994). “Fair
use is a mixed question of law and fact. If there are no
genuine issues of material fact, ... and a reasonable trier
can reach only one conclusion, a court may conclude as a
matter of law whether the challenged use qualifies as a
fair use of the copyrighted work.” Los Angeles News Serv.
v. KCAL–TV Channel 9, 108 F.3d 1119, 1120 (9th

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

5

Exhibit F

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

Cir.1997) (quotation omitted). “Where material facts are
not in dispute, fair use is appropriately decided on
summary judgment.” Mattel, Inc. v. Walking Mountain
Prods., 353 F.3d 792, 800 (9th Cir.2003).
As an initial matter, Righthaven argues that summary
judgment is premature because Righthaven has not
conducted discovery. Hoehn responds that Righthaven
has had the opportunity to conduct discovery and has
failed to do so. Additionally, Hoehn argues that all facts
necessary to decide summary judgment are undisputed
and before the Court.
Hoehn’s motion complies with the time strictures set by
Rule 56(b). Righthaven has not presented an affidavit
showing the specified reasons it needs to conduct
discovery to oppose summary judgment, or, the types of
facts it hopes to elicit, that these facts exist, and that these
facts are necessary to oppose summary judgment.
Accordingly, the Court will deny additional discovery on
this matter and decide Hoehn’s motion on the facts before
the Court.
1) The Purpose and Character of the Use
The first factor of fair use is the purpose and character of
the use. 17 U.S.C. § 107. Noncommercial, nonprofit use
is presumptively fair. Sony Corp. of Am. v. Universal City
Studios, Inc., 464 U.S. 417, 449 (1984). “The crux of the
profit/nonprofit distinction is not whether the sole motive
of the use is monetary gain but whether the user stands to
profit from exploitation of the copyrighted material
without paying the customary price.” Harper & Row
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562
(1985). “This factor focuses on whether the new work
merely replaces the object of the original creation or
instead adds a further purpose or different character. In
other words, this factor asks whether and to what extent
the new work is transformative.” A & M Records, Inc. v.
Napster, Inc., 239 F.3d 1004, 1015 (9th Cir.2001)
(quotation omitted). If the character of the use differs
from the original usage, the use may be considered fair.
Worldwide Church of God v. Phila. Church of God, Inc.,
227 F.3d 1110, 1117 (9th Cir.2000) (duplicating a
church’s religious book for use by a different church was
not transformative and was not protected by fair use).
However, mere transmission of a copyrighted work in a
different medium is likely not fair use. Napster, 239 F.3d
at 1015.
*9 It is undisputed that Hoehn did not and could not profit
from
posting
the
Work.
Under
Sony,
noncommercial/nonprofit use is presumptively fair.
Additionally, this factor focuses on the purpose or
character of the new work. Here, Hoehn posted the Work
{00640653.1}

as part of an online discussion. Hoehn avers he posted the
Work to foster discussion in a specific interactive website
forum regarding the recent budget shortfalls facing state
governments. This purpose is consistent with comment,
for which 17 U.S.C. § 107 provides fair use protection.
There is no genuine issue of material fact that Hoehn’s
noncommercial use of the Work for comment favors a
finding that the use was fair.
2) The Nature of the Copyrighted Work
The second factor is the nature of the copyrighted work.
17 U.S.C. § 107. Generally, “creative works are closer to
the core of intended copyright protection than
informational and functional works.” Dr. Seuss Enters.,
L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1402
(9th Cir.1997) (quotation omitted). “The scope of fair use
is greater when informational as opposed to creative
works are involved.” Hustler Magazine Inc. v. Moral
Majority Inc ., 796 F.2d 1148, 1153–54 (9th Cir.1986).
The types of works deemed to be creative to tilt this factor
against a finding of fair use have been complete works of
fiction, song lyrics, and Barbie Dolls. Dr. Seuss, 109 F.3d
at 1402; Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d
522, 531 (9th Cir.2008); and Mattel, 353 F.3d at 803.
However, “this factor [is] not terribly significant in the
overall fair use balancing.” Dr. Seuss, 109 F.3d at 1402.
The Work is an editorial originally published in the
LVRJ. The Work is a combination of an informational
piece with some creative elements. Roughly eight of the
nineteen paragraphs of the Work provide purely factual
data, about five are purely creative opinions of the author,
and the rest are a mix of factual and creative elements.
While the Work does have some creative or editorial
elements, these elements are not enough to consider the
Work a purely “creative work” in the realm of fictional
stories, song lyrics, or Barbie dolls. Accordingly, the
Work is not within “the core of intended copyright
protection.” Dr. Seuss, 109 F.3d at 1402. Rather, because
the Work contains a significant informational element, the
scope of fair use is greater than it would be for a creative
work, but likely less than it would for a purely
informational work. However, this factor is not terribly
relevant in the overall fair use balancing, and the lesser
creative element of the Work lessens the impact further.
Accordingly, this factor must be balanced with the other
fair use factors to determine if Hoehn’s use of the Work
was fair.
3) The Amount Used
The third factor of fair use is the amount of the use of the
copyrighted work. 17 U.S.C. § 107. “[T]he extent of

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

6

Exhibit F

Righthaven, LLC v. Hoehn, --- F.Supp.2d ---- (2011)
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

permissible copying varies with the purpose and character
of the use.” Campbell, 510 U.S. at 586–87. “While
wholesale copying does not preclude fair use per se,
copying an entire work militates against finding a fair
use.” Napster, 239 F.3d at 1016 (quotation omitted).
However, copying of an entire copyrighted work has been
deemed justified where the purpose of the new work
differs from the original. Kelly v. Arriba Soft Corp., 336
F.3d 811, 821 (9th Cir.2003); see also Sony, 464 U.S. at
449–50 (videotaping whole broadcast television programs
for later private viewing constituted fair use).
*10 It is undisputed that Hoehn posted the entire work in
his comment on the Website. Posting an entire work
generally “militates against finding a fair use.” Napster,
239 F.3d at 1016. However, while wholesale copying of
the Work shifts this factor against finding fair use,
wholesale copying does not preclude a finding of fair use.
Id. The three other factors need to be balanced to
determine if fair use is appropriate.
4) The Effect Upon the Potential Market for the Work
The final factor to be weighed is the effect on the
potential market for or value of the copyrighted work. 17
U.S.C. § 107. “Fair use, when properly applied, is limited
to copying by others which does not materially impair the
marketability of the work which is copied.” Harper, 471
U.S. 566–67 (quotation omitted). Additionally, “[a]
challenge to noncommercial use of a copyrighted work
requires proof either that the particular use is harmful, or
that if it should become widespread, it would adversely
affect the potential market for the copyrighted work.”
Napster, 239 F.3d at 1016 (quotation omitted).
It is undisputed that Hoehn’s use of the Work is
noncommercial. Challenges to noncommercial use require
a showing that the particular use is harmful or negatively
impacts the potential market for the copyrighted work. Id.
Righthaven has not presented evidence raising a genuine
issue of material fact that Hoehn’s use is harmful. Rather,
Righthaven contends that because Hoehn replicated the
entirety of the Work “[s]uch circumstances warrant the
conclusion that [Hoehn’s] infringement has likely caused
a substantial impairment on the potential market for the
End of Document

{00640653.1}

Work and that [Hoehn’s] infringing copy of the Work
fulfilled the demand for the original.” (Resp.(Doc.# 13) at
12–13.) Additionally, Righthaven argues that the market
for the Work was impacted negatively because potential
readers are able to read the Work on the Website and
would have no reason to view the Work at its original
source of publication. However, Righthaven has not
presented any evidence of harm or negative impact from
Hoehn’s use of the Work on the Website between
November 29, 2010 and January 6, 2011. Merely arguing
that because Hoehn replicated the entirety of the Work the
market for the Work was diminished is not sufficient to
show harm. Therefore, Righthaven has not presented
evidence raising a genuine issue of material fact that the
fourth factor favors a finding of fair use.
There is no genuine issue of material fact that the above
factors favor a finding of fair use. Of the four factors,
only the fact that Hoehn replicated the entire Work
weighs against a finding of fair use. Hoehn used the Work
for a noncommercial and nonprofit use that was different
from the original use. The copyrighted Work was an
informational work with only some creative aspects, and
the Work was used for an informational purpose.
Righthaven did not present any evidence that the market
for the Work was harmed by Hoehn’s noncommercial use
for the 40 days it appeared on the Website. Accordingly,
there is no genuine issue of material fact that Hoehn’s use
of the Work was fair and summary judgment is
appropriate.
IV. CONCLUSION
*11 IT IS THEREFORE ORDERED that Defendant’s
Motion to Dismiss for Lack of Jurisdiction (Doc. # 16)
and Defendant’s Motion for Summary Judgment (Doc. #
8) are hereby GRANTED, and Plaintiff’s Complaint is
hereby DISMISSED.
Parallel Citations
99 U.S.P.Q.2d 1104, 39 Media L. Rep. 1956

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

© 2011 Thomson Reuters. No claim to original U.S. Government Works.

7

Exhibit F