Oregon Catholic Press v. Ambrosetti et al

Filing 34

Opinion and Order : Defendants motion to dismiss 29 is hereby granted in part. The motion is: denied with respect to the Hymnal Claims; granted with respect to the Songbook Claim regarding Glorious God; denied with respect to the Songbook Claim reg arding Bright As the Sun. The motion is denied with respect to OCPs claims against Lamb and Ambrosetti.Plaintiffs request for leave to amend its complaint to include allegations that it has submitted an application for registration of Glorious God is granted. Signed on 11/1/2016 by Judge Marco A. Hernandez. (ecp)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON

OREGON CATHOLIC PRESS, an Oregon
nonprofit corporation,
No. 3:16-cv-00651-HZ
Plaintiff,
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v.
VINCE AMBROSETTI, TRUSTEE OF
VINCE AMBROSETTI MINISTRIES aka
INTERNATIONAL LITURGY PUBLICATIONS,
a 501(c)(3) trust; LAMB PUBLICATIONS, LLC,
a Tennessee limited liability company; VINCE
AMBROSETTI, an individual; and DOES 1–10,
inclusive,
Defendants.

Leonard D. DuBoff
The DuBoff Law Group, PC
6665 SW Hampton Street, Suite 200
Portland, OR 97223-8357

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Attorney for Plaintiff
Parna A. Mehrabani
Lane Powell PC
601 SW Second Avenue, Suite 2100
Portland, Oregon 97204-3158
Barry I. Slotnick
Loeb & Loeb LLP
345 Park Avenue
New York, New York 10154
Brittany A. Schaffer
Loeb & Loeb LLP
1906 Acklen Avenue
Nashville, Tennessee 37212
Attorneys for Defendants

HERNÁNDEZ, District Judge:

Plaintiff, Oregon Catholic Press (“OCP”), brings its claims for copyright infringement
under 17 U.S.C. § 501–13. Defendants are: International Liturgy Publications (“ILP”); Lamb
Publications, LLC (“Lamb”); the president of ILP Vince Ambrosetti as an individual; and
unnamed individuals Does 1–10. OCP and ILP had multiple agreements whereby OCP granted
licenses to ILP to reprint certain songs. OCP’s claims fall into two categories. First are OCP’s
claims that relate to ILP’s publication of OCP material in an allegedly unauthorized second
edition of the Saint Augustine Hymnal (hereinafter “Hymnal Claims”). The second category is
OCP’s claims that ILP published two songs—“Glorious God” and “Bright As the Sun”—without
licenses in the book “You Are Holy” (hereinafter “Songbook Claims”). OCP is also suing Lamb
and Ambrosetti for their roles in the alleged copyright infringement under theories of

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contributory and vicarious liability. Defendants now move to dismiss Plaintiff’s claims on
several grounds discussed below.
Defendants’ motion to dismiss is granted in part. The motion is denied regarding the
Hymnal Claims. The motion is denied with respect to the song “Bright As the Sun.” The motion
is denied with respect to OCP’s claims against Lamb and Ambrosetti. The motion is granted with
respect to the song “Glorious God” and the Court also grants OCP’s request for leave to amend
its complaint on this claim.
BACKGROUND
The following facts come from the Amended Complaint and documents referred to or
relied upon in the Amended Complaint. OCP and ILP publish and sell hymnals and song books
to Catholic parishes. Am. Compl. ¶¶ 4–6, 11–14, 28, ECF No. 23. On May 14, 2009, OCP and
ILP entered into an agreement (“2009 Agreement”) whereby OCP licensed certain songs to ILP
to be published in the Saint Augustine Hymnal (“Hymnal”). Am. Compl. ¶ 11, Ex. C, at 6. The
2009 Agreement enumerated 75 OCP songs. Am. Compl. Ex. C, at 9–13. ILP published a “first
edition” of the Hymnal in 2010. Am. Compl. ¶ 13.
Subsequently, the parties amended the 2009 Agreement on November 27, 2011 to permit
ILP to publish “new editions” of the Hymnal (“2009/2011 Agreement”). Am. Compl. Ex. C, at
14–15. The 2009/2011 Agreement also extended the term of the license for a period of five years
from September 27, 2011 to November 26, 2016. Id. Plaintiff contends that the 2009 Agreement
was amended for the purpose of including a revised “Order of the Mass” at the beginning of the
Hymnal pursuant to decision by the Bishops Committee on Divine Worship of the U.S.
Conference of Catholic Bishops. Am. Compl. ¶ 13.

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On February 3, 2014, the parties entered into another agreement (“2014 Agreement”)
whereby OCP licensed up to 10 songs to be chosen by ILP to be published in any ILP
publication. Am. Compl. ¶ 14, Ex. C, at 1. In July of 2014, Ambrosetti sent a letter on behalf of
ILP stating that it intended to publish certain OCP songs in a new edition of the Hymnal. Am.
Compl. ¶ 15. OCP wrote back stating that the 2009/2011 Agreement did not permit ILP to
reprint OCP materials in a second edition of the Hymnal. Id. ¶ 16. ILP replied that if OCP did
not agree to the proposed song list then ILP would proceed with publication and only publish
songs licensed to it under the 2009/2011 Agreement. Id. ¶ 17. OCP reiterated that it did not
authorize the publication of the second edition of the Hymnal. Id. ¶ 18. ILP proceeded with
publication of the second edition of the Hymnal which included 74 OCP songs covered by the
parties’ Agreements. Id. ¶ 20.
With respect to the Songbook Claims, OCP alleges that around June 15, 2010, it granted
licenses to ILP to reprint certain songs including “Bright As the Sun” in certain publications
including “Living World, Living Song, Living Faith” (“Living World”). Am. Compl. ¶ 12, Ex.
C, at 23–25. In 2014, ILP published the songbook “You Are Holy” which included 12 OCP
songs. Am. Compl. ¶ 19. OCP alleges that ILP did not have a license to publish the songs
“Bright As the Sun” and “Glorious God” in “You Are Holy.” Id. Defendants contends that OCP
agreed to overlook the error regarding “Glorious God” and that its use of “Bright As the Sun”
was proper because “You Are Holy” is merely “Living World” retitled. Mot. Dismiss 6, 10–14,
ECF No. 29.
STANDARDS
To survive a motion to dismiss, a complaint “must contain sufficient factual matter,
accepted as true, to state a claim to relief that is plausible on its face[,]” meaning “when the
plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
(internal quotation marks omitted). Additionally, “only a complaint that states a plausible claim
for relief survives a motion to dismiss.” Id. at 679. A complaint must contain “well-pleaded
facts” which “permit the court to infer more than the mere possibility of misconduct.” Id. at 679.
In evaluating the sufficiency of a complaint’s factual allegations, the court must accept all
material facts alleged in the complaint as true and construe them in the light most favorable to
the non-moving party. Wilson v. Hewlett–Packard Co., 668 F.3d 1136, 1140 (9th Cir. 2012).
“Factual allegations must be enough to raise a right to relief above the speculative level on the
assumption that all the allegations in the complaint are true (even if doubtful in fact)[.]” Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 555 (2007). (citations and footnote omitted). However, the
court need not accept unsupported conclusory allegations as truthful. Holden v. Hagopian, 978
F.2d 1115, 1121 (9th Cir. 1992). A motion to dismiss under Rule 12(b)(6) will be granted if a
plaintiff alleges the “grounds” of his “entitlement to relief” with nothing “more than labels and
conclusions, and a formulaic recitation of the elements of a cause of action.” Twombly, 550 U.S.
at 555.
DISCUSSION
OCP alleges two claims of direct copyright infringement against ILP. First, the Hymnal
Claims include OCP’s allegations that ILP exceeded the scope of its licenses under the
2009/2011 Agreement by publishing an unauthorized second edition of the Hymnal. OCP’s
position is that the 2009/2011 Agreement permitted ILP to republish the original version of the
Hymnal with the addition of the “Order of Mass.” ILP disagrees with that restriction and
contends that the second edition was permitted by the plain language of the 2009/2011
Agreement. Second, the Songbook Claims include OCP’s allegations that ILP published the

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songs “Glorious God” and “Bright As the Sun” in the songbook “You Are Holy” without a
license. ILP argues that: “Glorious God” was not registered; OCP granted ILP an implied license
to use “Glorious God”; OCP waived its right to bring copyright infringement claims against ILP;
and ILP had a valid license to publish “Bright As the Sun” in “You Are Holy.”
“Plaintiffs must satisfy two requirements to present a prima facie case of direct
[copyright] infringement: (1) they must show ownership of the allegedly infringed material and
(2) they must demonstrate that the alleged infringers violate at least one exclusive right granted
to copyright holders under 17 U.S.C. § 106.” A&M Records, Inc. v. Napster, Inc., 239 F.3d
1004, 1013 (9th Cir. 2001). A “copyright owner who grants a nonexclusive license to use his
copyrighted material waives his right to sue the licensee for copyright infringement and can sue
only for breach of contract. If, however, a license is limited in scope and the licensee acts outside
the scope, the licensor can bring an action for copyright infringement.” Sun Microsystems, Inc.
v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999) (quotations and citations omitted).
I.

HYMNAL CLAIMS
The Court denies Defendants’ motion to dismiss OCP’s Hymnal Claims. Every OCP

song that was published in the second edition of the Hymnal appears to be covered by the
licenses in the parties’ Agreements.1 Schaffer Decl. Ex. E; Am. Compl. Ex. C, at 9–13.
Notwithstanding the valid licenses, OCP contends that ILP exceeded the scope of the 2009/2011
1

The Court declines the invitation to consider documents outside of the pleadings which would require converting
this motion to dismiss into a motion for summary judgment. Fed. R. Civ. P. 12(d). The Court did consider
Defendants’ Exhibit E (the table of contents to the second edition of the Hymnal) but it excluded Exhibit F (Nudo
email). Schaffer Decl. Exs. E, F. The district court “may consider a document the authenticity of which is not
contested, and upon which the plaintiff's complaint necessarily relies.” Parrino v. FHP, Inc., 146 F.3d 699, 706 (9th
Cir. 1998), as amended (July 28, 1998). First, the Court finds that Plaintiff’s Amended Complaint, specifically the
Hymnal Claims, necessarily rely upon the contents of the second edition of the Hymnal. Am. Compl. ¶¶ 13, 15–18,
20–21. Further, even if OCP questions the authenticity of the table of contents in Exhibit E, Defendants submitted
hard copies of the first and second editions of the Hymnal. Def. Reply Exs. 1, 2, ECF No. 33. Second, the Court
agrees with OCP that the Nudo Email should not be considered for purposes of this motion. The authenticity of the
email is disputed and OCP did not rely on the email in the Amended Complaint. For these reasons, Defendants’
arguments regarding implied license and express waiver, which rely on the Nudo email, fail.

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Agreement by publishing the copyrighted work in an unauthorized second edition of the Hymnal.
Am. Compl. ¶ 16. The parties dispute the meaning and interchangeability of the terms “versions”
and “editions” used in the 2009/2011 Agreement. OCP contends that this interchangeable use of
“versions and “editions” renders the agreement “ambiguous regarding whether the license
permits a second edition of the hymnal.” Pl. Opp’n to Mot. Dismiss 3, ECF No. 31. Defendants
argue that the 2011 Addendum did not restrict subsequent editions only to material from the first
edition with the addition of “Order of Mass.” Def. Reply 5.
The 2009 Agreement states: “These OCP songs may be reprinted only in the hard-cover
and soft-cover versions of the Hymnal. This license does not extend to accompaniment
editions.” Am. Compl. Ex. C, at 6 (emphasis added). The 2011 Addendum states: “New editions
of the St. Augustine Hymnal that will include an Order of Mass at the front of the edition shall be
covered by this Agreement and royalties shall be paid as specified in this Agreement for these
editions.” Id. at 14 (emphasis added).
Defendants ask the Court to construe the meaning of “versions” and “editions” in their
favor. In other words, the Court is being asked to reach the merits of the case well beyond what
the scope of what a 12(b)(6) motion allows. Such a determination would be inappropriate at this
juncture. Rather, when taking all of the material allegations from the complaint as true, the Court
construes them in the light most favorable to the nonmoving party. “A complaint should not be
dismissed unless it appears beyond doubt that the plaintiff can prove no set of facts in support of
the claim that would entitle the plaintiff to relief.” Am. Family Ass'n, Inc. v. City & Cty. of San
Francisco, 277 F.3d 1114, 1120 (9th Cir. 2002).
In this case, Plaintiff alleges that ILP exceeded the scope its licenses under the 2009/2011
Agreement by publishing OCP songs in an unauthorized second edition of the Hymnal. When

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construing the language of the 2009/2011 Agreement in the light most favorable to OCP, the
Court finds that Plaintiff has pled sufficient facts to support the inference that ILP exceeded the
scope of its licenses and engaged in copyright infringement.
II.

SONGBOOK CLAIMS
OCP alleges that ILP published “Glorious God” and “Bright As the Sun” in the songbook

“You Are Holy” without valid licenses. ILP moves to dismiss the Songbook Claim regarding
“Glorious God” on several grounds. ILP also claims that it had a valid license to publish “Bright
As the Sun” under the 2010 Agreement which permitted publication in the book “Living World”
allegedly retitled “You Are Holy.”
A. “Glorious God”
Defendants’ motion to dismiss OCP’s Songbook Claim regarding the song “Glorious
God” is granted. The Court also grants Plaintiff’s request to amend its complaint to include
allegations that the copyrighted work is “registered.” Copyright registration is a precondition of
filing a copyright infringement action. 17 U.S.C. § 411(a); Reed Elsevier, Inc. v. Muchnick, 559
U.S. 154, 166–67 (2010). The Ninth Circuit follow the “application approach” to determining
registration which holds that “receipt by the Copyright Office of a complete application satisfies
the registration requirement of § 411(a).” Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d
612, 621 (9th Cir. 2010).
Here, OCP failed to allege that “Glorious God” was registered in its Amended
Complaint. Defendants pointed out this deficiency in the Amended Complaint; in response, OCP
claims that it has submitted an application of registration. The Court grants OCP leave to amend
its complaint to include allegations that it has submitted an application for registration of
“Glorious God.”

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B. “Bright As the Sun”
Defendants’ motion to dismiss OCP’s Songbook Claim regarding the song “Bright As the
Sun” is denied. When taking the allegations on the face of the Complaint as true and in the light
most favorable to the nonmoving party, OCP has alleged a plausible claim of copyright
infringement against ILP for its publication of “Bright As the Sun” in “You Are Holy.”
Defendants’ request for additional discovery on the issue is inappropriate at this juncture and
well beyond the scope of a motion to dismiss. “Judgment on the pleadings is limited to material
included in the pleadings.” Yakima Valley Mem'l Hosp. v. Washington State Dep't of Health,
654 F.3d 919, 925 n.6 (9th Cir. 2011).
In the June 15, 2010 Agreement, OCP granted ILP the license to reprint “Bright As the
Sun” in certain publications including “Living World.” Am. Compl. Exs. B, C, at 23–25. ILP
subsequently published the song in a songbook titled “You Are Holy,” claiming that only the
title of the publication changed and “[i]n all other respects, ILP comported with the terms of the
June 15, 2010 License.” Def. Mot. Dismiss. 13. OCP contends that “You Are Holy” is not the
same work as “Living World” and the Court must construe the facts in the light most favorable
to the nonmoving party. OCP licensed “Bright As the Sun” to ILP to be printed in a publication
titled “Living World” and instead, ILP printed the work in a publication titled “You Are Holy.”
OCP has alleged a cognizable copyright infringement claim and alleged sufficient facts allowing
the Court to draw the reasonable inference that ILP is liable to OCP. Therefore, Defendants’
motion to dismiss this claim is denied.
III.

CLAIMS AGAINST LAMB AND AMBROSETTI
OCP claims that Lamb, who publishes for and is owned by ILP, is liable for its role in

ILP’s alleged direct copyright infringement. OCP also claims that Ambrosetti, the President and

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publisher of ILP, is personally liable for playing a controlling role in the alleged direct
infringement and deriving a direct financial benefit from it.
A party may be vicariously or contributorily liable for the direct copyright infringement
of a third party. First, vicarious liability requires that the party: “(1) has the right and ability to
control [ILP’s] putatively infringing activity and (2) derives a direct financial benefit from [its]
activity.” MDY Indus., LLC v. Blizzard Entm't, Inc., 629 F.3d 928, 938 (9th Cir. 2010).
Second, a party may be contributorily liable for another party’s alleged copyright
infringement for intentionally inducing or encouraging the direct infringement. Id. at 937–38.
“[O]ne who, with knowledge of the infringing activity, induces, causes or materially contributes
to the infringing misconduct of another, may be held liable as a ‘contributory’ infringer[.]”
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1171 (9th Cir. 2007) (quoting Gershwin
Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir.1971)).
A. Lamb Publications, LLC.
The Court denies Defendants’ request to dismiss OCP’s claims that Lamb is liable for
ILP’s alleged copyright infringement.
OCP alleges that Lamb “[w]ith knowledge of the infringement . . . materially contributed
to the infringing of others.” Am. Compl. ¶ 29. Plaintiff further alleges that Lamb published and
distributed the second edition of the Hymnal and the songbook “You Are Holy;” both of which
contain OCP songs that ILP allegedly did not have licenses to reprint. Id. ¶ 27–30. The Amended
Complaint contains sufficient factual allegations to support the reasonable inference that Lamb
knowingly included unlicensed songs in books that it published and distributed. Therefore, the
Court denies Defendants’ motion to dismiss OCP’s claims against Lamb.
B. Vince Ambrosetti

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The Court denies Defendants’ motion to dismiss OCP’s claims against Ambrosetti. The
Court finds that OCP has alleged sufficient factual content in its complaint to support a plausible
claim for relief: vicarious liability for direct copyright infringement.
As discussed above, to be held vicariously liable for copyright infringement the
defending party must: (1) have the right and ability to control the infringing activity; and (2)
derive a direct financial benefit from said activity. In other words one “infringes vicariously by
profiting from direct infringement while declining to exercise a right to stop or limit it.” MetroGoldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005) (citation omitted). To
prevail under this theory, OCP must “establish that the defendant exercises the requisite control
over the direct infringer and that the defendant derives a direct financial benefit from the direct
infringement.” Perfect 10, Inc., 508 F.3d at 1173. For purposes of the “control” element, “a
defendant exercises control over a direct infringer when he has both a legal right to stop or limit
the directly infringing conduct, as well as the practical ability to do so.” Id.
Here, OCP has alleged that Ambrosetti, as president and publisher of ILP, had access to
the contracts between the parties and that he derived a direct financial benefit from the Hymnal
and “You Are Holy.” Am. Compl. ¶¶ 38–39. Further, OCP alleges that Ambrosetti wrote the
letter identifying the OCP songs that ILP planned to reprint in the Hymnal. Id. OCP has alleged
sufficient facts to support the conclusion that Ambrosetti had both the right and ability to control
the infringing activity. Indeed, as the president of ILP, the Court can infer that he derived direct
financial benefits from the sale of the Hymnal and You Are Holy. Therefore, the Court finds that
when construing the facts in the light most favorable to the non-moving party, Plaintiff has
alleged sufficient facts to demonstrate that Ambrosetti may be vicariously liable for ILP’s
alleged copyright infringement.

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Moreover, while there may be other grounds for dismissing claims against Ambrosetti
and Lamb, Defendants only argued that ILP is not directly liable therefore Ambrosetti and Lamb
cannot be secondarily liable. As discussed above, the Court has denied Defendants’ motion to
dismiss at least some of OCP’s claims against ILP. Because claims of direct copyright
infringement against ILP survive Defendants’ motion to dismiss, Defendants’ argument on this
ground is unavailing.
ORDER
Defendants’ motion to dismiss is hereby granted in part for the reasons discussed above.
The motion is: denied with respect to the Hymnal Claims; granted with respect to the Songbook
Claim regarding “Glorious God”; denied with respect to the Songbook Claim regarding “Bright
As the Sun.” The motion is denied with respect to OCP’s claims against Lamb and Ambrosetti.
Plaintiff’s request for leave to amend its complaint to include allegations that it has submitted an
application for registration of “Glorious God” is granted.
Dated this

day of ______________________, 2014.

MARCO A. HERNÁNDEZ
United States District Judge

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