ITN Flix et al v. Univision Holdings et al

Filing 72

MEMORANDUM DECISION AND ORDER denying 53 Motion to Dismiss for Failure to State a Claim. Signed by Judge David Nuffer on 5/5/17 (alt)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
ITN FLIX, LLC, a Utah limited liability
company,
Plaintiff,
v.
UNIVISION TELEVISION GROUP, INC., a
Delaware corporation; UNIVISION
HOLDINGS, INC., a New York corporation;
UNIVISION SALT LAKE CITY, LLC;
UNIVISION COMMUNICATIONS, INC., a
Delaware corporation; and EL REY
NETWORK, LLC,

MEMORANDUM DECISION AND
ORDER DENYING MOTION TO
DISMISS PLAINTIFF’S SECOND
AMENDED COMPLAINT

Case No. 2:15-cv-00736-DN-DBP
District Judge David Nuffer
Magistrate Judge Dustin B. Pead

Defendants.

This memorandum decision and order addresses whether a copyright infringement claim
should be dismissed against media broadcasters who broadcasted a motion picture over their
networks. The allegations show that the broadcasters did not create the allegedly infringing work
which was broadcasted and did not broadcast the copyrighted work. The copyright infringement
claim need not be dismissed. Broadcasters who distribute an infringing work may be held liable
for infringing the distribution right of the copyrighted work even if they did not participate in the
creation of the infringing work.
Defendants Univision Television Group, Inc.; Univision Salt Lake City, LLC; Univision
Communications, Inc.; and El Rey Network, LLC (collectively “Broadcaster Defendants”) move

to dismiss the Second Amended Complaint 1 under Rule 12(b)(6) (“Motion”). 2 Plaintiff ITN Flix,
LLC (“ITN”) opposes the Motion (“Opposition”). 3 The Broadcaster Defendants filed a reply in
support of the Motion (“Reply”). 4 For the reasons below, the Motion is DENIED.
BACKGROUND
In October 2015, ITN and Mr. Gil Medina filed a complaint for copyright infringement
against Univision Holdings, Inc.; Univision Salt Lake City, LLC; Univision Communications,
Inc.; and El Rey Network, LLC (“Original Defendants” which are comprised of all the
Broadcaster Defendants 5 except Univision Television Group, Inc.). 6
Four months later, in February 2016, ITN and Mr. Medina filed an amended complaint
under Rule 15(a) which also asserted a single cause of action against the Original Defendants for
copyright infringement. 7 The amended complaint alleged, among other things, that ITN held a
valid copyright to a motion picture originally titled Jack’s Law, later titled Vengeance. The
amended complaint alleged that Mr. Robert Rodriguez, the founder and chairman of Defendant
El Rey Network, obtained access to Vengeance in 2005, and that he later made a film entitled
Machete that infringed ITN’s copyright for Vengeance. But the amended complaint alleged only

1

Second Amended Complaint, docket no. 46, filed Nov. 8, 2016.

2

Defendants’ Motion to Dismiss Plaintiff’s Second Amended Complaint Pursuant to Fed. R. Civ. P. 12(b)(6)
(“Motion”), docket no. 53, filed Dec. 6, 2016.
3

Plaintiff’s Memorandum in Opposition to Defendants’ Motion to Dismiss Plaintiff’s Second Amended Complaint
Pursuant to Fed. R. Civ. P. 12(b)(6) (“Opposition”), docket no. 62, filed Jan. 17, 2017.

4

Reply in Support of Defendants’ Motion to Dismiss Pursuant to Fed. R. Civ. P. 12(b)(6) (“Reply”), docket no. 67,
filed Jan. 31, 2017.
5

Defendant Univision Holdings, Inc. is not a moving party because, according to the Broadcaster Defendants,
Univision Holdings, Inc. has not been served with a copy of the Second Amended Complaint. Motion at i, n. 1.

6

Complaint, docket no. 2, filed Oct. 13, 2015.

7

Amended Complaint, docket no. 12, filed Feb. 16, 2016.

2

three similarities between Vengeance and Machete, and failed to allege sufficient facts
establishing that the Original Defendants infringed ITN’s copyright. 8
The order dismissing the first amended complaint held that the copyright infringement
claim could not stand because there were insufficient allegations of access and insufficient
allegations of similarity between Vengeance and Machete. 9 But the order also explained that
“there is a significant question whether Rodriguez’s alleged access in 2005 provides an adequate
link . . . to El Rey Network or any of the other Broadcasters” for purposes of copyright
infringement. 10
The order further explained that the amended complaint alleged that Vengeance was reshot and re-edited after it was provided to Mr. Rodriguez in 2005. Thus, third party access could
not be inferred because Vengeance evolved into a non-identical work from the version provided
to Rodriguez. 11 There was no allegation in the first amended complaint that the copy of
Vengeance provided to Mr. Rodriguez in 2005 was the same as the final version.
The first amended complaint was dismissed and leave was granted to file a second
amended complaint by November 21, 2016. 12
On November 8, 2016, ITN filed the Second Amended Complaint currently under
review. The Second Amended Complaint removes Gil Medina as a plaintiff; adds Univision

8

Id.

9

Memorandum Decision and Order Granting Motion to Dismiss (“45 Order”) at 6-10, docket no. 45, filed Nov. 2,
2016.
10

Id. at 5-6.

11

Id. at 6-7.

12

Id. at 12.

3

Television Group, Inc. as a defendant; and, like the original complaint and the first amended
complaint, asserts a single cause of action for copyright infringement. 13
The Second Amended Complaint adds significant allegations that make it meaningfully
different from the amended complaint that was dismissed. Among other things, the Second
Amended Complaint includes over fifty alleged similarities between Vengeance—the
copyrighted work—and Machete—the allegedly infringing work. 14 The Second Amended
Complaint also alleges that:
•

“Rodriguez acknowledged . . . that he copied and used material from Vengeance and
offered to pay . . . for his use of Vengeance” 15 and

•

even though “minor edits” were made to Vengeance when it was re-shot and reedited, “the material given to Rodriguez was identical to the finalized Vengeance in
all material aspects.” 16

The Broadcaster Defendants move to dismiss the Second Amended Complaint, arguing
that the Second Amended Complaint “fails to rectify the pleading deficiencies addressed in the
Court’s November 2, 2016 Order . . . .” 17 The Broadcaster Defendants are incorrect.
MOTION TO DISMISS STANDARD
Dismissal under Rule 12(b)(6) is appropriate when the complaint, standing alone, is
legally insufficient to state a claim for which relief may be granted. 18 When considering a motion
to dismiss for failure to state a claim, the thrust of all well-pleaded facts is presumed, but

13

Second Amended Complaint ¶¶ 54-76.

14

Id. ¶¶ 37-53.

15

Id. ¶ 31.

16

Id. ¶ 20.

17

Motion at i.

18

See Sutton v. Utah State Sch. for the Deaf & Blind, 173 F.3d 1226, 1236 (10th Cir. 1999).

4

conclusory allegations need not be considered. 19 A court is not bound to accept the complaint’s
legal conclusions and opinions, whether or not they are couched as facts. 20 “A 12(b)(6) motion
should not be granted unless it appears beyond doubt that the plaintiff can prove no set of facts in
support of his claim which would entitle him to relief.” 21
FACTUAL ALLEGATIONS 22
The Second Amended Complaint makes the following factual allegations:
In or about 2004, Mr. Gil Medina met actor Danny Trejo. 23 Mr. Trejo had never been cast
as a lead actor in a scripted feature film or film franchise. 24 In 2005, Mr. Medina approached Mr.
Trejo about serving as “the lead actor and anchor of a vigilante action feature film franchise
centered on his distinctive look, style, inherent and authentic toughness, charisma, and other
special traits.” 25 ITN, an independent production company of which Mr. Medina is a principal
and managing member, would provide creative talent, financing, entertainment business acumen,
and other resources. 26 Mr. Trejo agreed to participate. 27
Vengeance
“By the fall of 2005, [ITN] and Trejo had produced a rough cut of a vigilante action
feature film with Trejo in the starring role. The film had the working title Jack’s Law, later

19

See Cory v. Allstate Ins., 583 F.3d 1240, 1244 (10th Cir. 2009).

20

See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). See also Brown v. Zavaras, 63 F.3d 967, 972 (10th Cir.
1995).
21

Sutton, 173 F.3d at 1236.

22

The allegations provided in this section derive from the Second Amended Complaint. For purposes of this
memorandum decision and order, the plaintiff’s factual allegations are assumed to be true.
23

Second Amended Complaint ¶ 15.

24

Id. ¶ 15.

25

Id. ¶¶ 15, 16.

26

Id. ¶ 17.

27

Id. ¶ 18.

5

changed to Vengeance . . . .” 28 “On or about November 4, 2005,” ITN and Mr. Trejo delivered “a
copy of the script and a DVD of . . . Vengeance to Rodriguez.” Mr. Rodriguez is the founder and
chairman of Defendant El Rey Network. 29
“Although minor edits were later made to the script and rough-cut DVD given to
Rodriguez, the material given to Rodriguez was identical to the finalized Vengeance in all
material aspects, including the same plot, characters, pace, mood, dialogue, setting, and sequence
of events.” 30 ITN suggested that Mr. Rodriguez or his companies put their name on the project to
improve the reputation of the movie, and suggested that Mr. Rodriguez collaborate with ITN to
build a vigilante action feature film franchise centered on Mr. Trejo. 31 Mr. Rodriguez examined
the script and the DVD, but declined ITN’s offers. 32
A theater-ready version of Vengeance was completed in early 2006. 33 ITN registered the
film “with the applicable copyright offices,” first as Jack’s Law in 2005 and then as Vengeance
in 2010, receiving registration numbers 3 Pau 3-559-647 and Pau 3-527-726. 34
Machete
In or about 2007, Mr. Rodriguez directed and produced a trailer of a film called Machete,
a vigilante action hero movie featuring Mr. Trejo as the lead actor. 35 In 2009, Mr. Rodriguez,

28

Id.

29

Id. ¶ 9.

30

Id. ¶ 20.

31

Id. ¶ 21.

32

Id.

33

Id. ¶ 24.

34

Id. ¶¶ 25-27.

35

Id. ¶ 28.

6

Mr. Trejo, and others commenced filming Machete. 36 Mr. Rodriguez “subsequently provided
Machete to the Broadcaster Defendants for distribution and public display.” 37
Machete was released in theaters in 2010, earning approximately $26 million in the
United States and $19 million internationally. Machete also made approximately $22 million in
“home market earnings.” 38 The Broadcaster Defendants “actively promoted, displayed,
broadcasted, and distributed Machete to the public” and “showed Machete publicly on their
respective networks, all to the detriment of [ITN], thereby infringing on [ITN]’s copyrights.” 39
In 2011, Mr. Trejo “confronted Rodriguez about Rodriguez’s copying of Vengeance in
making Machete. Rodriguez acknowledged to Trejo and Medina that he copied and used material
from Vengeance and offered to pay Medina for his use of Vengeance. However, Rodriguez later
refused to pay.” 40
Alleged Similarities Between Vengeance and Machete
The back of Machete’s DVD case describes the plot of Machete. It states:
Set up, double-crossed and left for dead, Machete (Trejo) is an ass-kicking exFederale who lays waste to anything that gets in his path. As he takes on hitmen,
vigilantes and a ruthless drug cartel, bullets fly, blades clash and the body count
rises. Any way you slice it, vengeance has a new name – Machete. 41
Both films involve Mr. Trejo acting as an ex-law-enforcement officer whose wife and
daughter are murdered. 42 He is left for dead but survives and ultimately obtains revenge on the

36

Id. ¶ 30.

37

Id.

38

Id. ¶ 32.

39

Id. ¶¶ 35, 36.

40

Id. ¶ 31.

41

Id. ¶ 38 (emphasis added by ITN).

42

Id. ¶¶ 39, 40.

7

men who killed his family and injured him. 43 While seeking revenge, the Mr. Trejo’s character
defends vulnerable people who are threatened by villains. 44
“Each movie contains a scene, similar in the time-stop and sequence of events of the
movies, where the protagonist [Mr. Trejo’s character] is sitting alone, reminiscing of his
murdered family, having flashbacks of his family’s murder, and vowing revenge.” 45 Each of
“these scenes express the same moods of loss, darkness, pain, depression and revenge.” 46
“In each movie, the main villain inflicts severe injuries on the protagonist and believes
the protagonist to be dead only later to discover the protagonist is alive and seeking revenge.” 47
“In each movie, the protagonist is offered a large sum of money by a villain but the
protagonist refuses to personally keep the money.” 48 This expresses the idea that the protagonist
is motivated by a sense of justice and revenge and is unconcerned with monetary rewards. 49
“In each movie, the protagonist has an opportunity to engage in sexual conduct with a
vulnerable female but he refuses to do so.” 50 This expresses the idea that the protagonist is
motivated by a sense of justice and revenge and will not take advantage of the weak or
vulnerable. 51

43

Id.

44

Id.

45

Id. ¶ 43.

46

Id.

47

Id. ¶ 44.

48

Id. ¶ 45.

49

Id.

50

Id. ¶ 46.

51

Id.

8

Each movie portrays the protagonist struggling between what is legal and what is moral
or just from the protagonist’s perspective. The result is that the protagonist breaks the law to
bring justice. 52
Both films involve a well-developed law enforcement character who investigates the
protagonist, and then ultimately joins forces with the protagonist in violently opposing the
villains. 53 In Vengeance, the character is named Ron Banks played by Robert Burke. In Machete,
the character is Sartana Rivera played by Jessica Alba. 54
Both films portray the protagonist as religious. Both films show the protagonist visiting a
priest in a church to talk about his situation and to seek help. Both films show the protagonist
wearing a crucifix. 55
Both films portray the protagonist as generous. In Vengeance, the protagonist pays a lady
for a car and gives her more money than she is asking in an effort to assist her. In Machete, the
protagonist gives a large amount of cash to a character to assist poor immigrants. 56
Both films have a similar pace and sequence of events. 57 Several other similarities are
alleged, including, among other things, that the subtitles in both films are yellow and in thick
font; the story line in both films is communicated vocally by a character; a villain appears on
scene wearing a cowboy hat and leather jacket; a Caucasian villain speaks to Hispanic characters

52

Id. ¶ 47.

53

Id. ¶ 48.

54

Id.

55

Id. ¶ 50.

56

Id. ¶ 51.

57

Id. ¶ 53.

9

in heavily accented Spanish; villains drive a Mercedes S550; and the protagonist’s costuming is a
black leather jacket, a black t-shirt, hair down. 58 There are many other alleged similarities. 59
DISCUSSION
The foundational test for copyright infringement is whether the plaintiff can establish
(1) ownership of a valid copyright and (2) copying of constituent elements of the work that are
original. 60 To withstand a motion to dismiss, the complaint, viewed in the light most favorable to
ITN, must contain adequate factual allegations supporting each of these elements. 61
ITN Adequately Alleges Ownership
Ownership of a valid copyright is not challenged and has been adequately alleged. ITN
alleges that it owns a valid copyright on its film Vengeance, having registered it “with the
applicable copyright offices” in 2005 and 2010 and receiving registration numbers 3 Pau 3-559647 and Pau 3-527-726. 62 “A Certificate of Registration, if timely obtained, constitutes prima
facie evidence of the validity of the copyright.” 63 Thus, the first element is adequately alleged.
ITN Adequately Alleges Copying
“Copying is . . . a shorthand reference to any infringement of the copyright holder’s
exclusive rights that are set forth at 17 U.S.C. § 106.” 64 Those exclusive rights are:
(1) to reproduce the copyrighted work in copies or phonorecords;

58

Id.

59

Id. ¶¶ 38-53.

60

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); La Resolana Architects, PA v. Reno, Inc.,
555 F.3d 1171, 1177 (10th Cir. 2009); Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193, 1196 (10th Cir.
2005); Jacobsen v. Deseret Book Co., 287 F.3d 936, 942 (10th Cir. 2002); Gates Rubber Co. v. Bando Chem. Indus.,
Ltd., 9 F.3d 823, 831 (10th Cir. 1993).
61

Jacobsen, 287 F.3d at 941-42.

62

Second Amended Complaint ¶¶ 25-27, 55, 56.

63

Gates Rubber, 9 F.3d at 832.

64

Id. at 832 n. 6 (emphasis added).

10

(2) to prepare derivative works based upon the copyrighted work;
(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;
(4) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and motion pictures and other audiovisual works, to perform the
copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and pictorial, graphic, or sculptural works, including the individual
images of a motion picture or other audiovisual work, to display the copyrighted
work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission. 65
“Copying” may be established “either through the presentation of direct evidence, or
through indirect evidence that shows (1) that the defendant had access to the copyrighted [work],
and (2) that there are probative similarities between the copyrighted material and the allegedly
copied material.” 66 “Direct proof of copying is rare, and plaintiffs will typically rely on the
indirect method of proof.” 67
The prior order dismissing the first amended complaint noted that the first amended
complaint had not alleged “direct copying” and that to establish the element of copying, the first
amended complaint would have to contain sufficient allegations” of “indirect copying.” The
elements required to establish “indirect copying” are “[a] that the defendant had access to the
copyrighted [work], and [b] that there are probative similarities between the copyrighted material and
the allegedly copied material.” 68 The order went on to conclude that access had not been

65

17 U.S.C. § 106.

66

Gates Rubber, 9 F.3d at 832.

67

Id. at 833.

68

45 Order at 4 (quoting Gates Rubber, 9 F.3d at 833).

11

adequately alleged, and there were not sufficient allegations of “striking similarity” to infer
access. 69
ITN now argues that it “does not need to provide evidence that Defendants had access to
Vengeance.” 70 “Rather,” ITN argues, it simply needs to show “that Rodriguez had access and
impermissibly copied Vengeance by making Machete, and that Defendants then distributed and
displayed Machete to the public in direct violation of [ITN]’s copyrights.” 71 ITN argues that
“[c]lear statute and precedent dictate that any member in the chain of distribution is strictly liable
for copyright infringement based on one party’s access and copying of protected material.” 72
The Broadcaster Defendants argue that there are no grounds to hold them liable for
copyright infringement because they did not have access to Vengeance and did not participate in
the creation of Machete. 73
After thorough review, ITN is correct that the Second Amended Complaint sufficiently
alleges a copyright infringement claim based on the “chain of distribution” theory. A distributor,
publisher, or broadcasters may be liable for copyright infringement if they have disseminated a
work that has copied protected elements of a plaintiff’s copyright—even if the distributor,
publisher, or broadcaster did not know that the work they were disseminating was an infringing
work. Several cases explained below support this conclusion. 74

69

45 Order at 6, 7.

70

Opposition at 4 n. 3.

71

Id. (emphasis added).

72

Id. at 6.

73

Motion at 3-6; Reply at 4-6.

74

See also Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine Distributors Pty. Ltd., 647 F.2d 200, 207 (D.C. Cir.
1981) (stating that in “copyright infringement cases, any member of the distribution chain can be sued as an alleged
joint tortfeasor”); Toksvig v. Bruce Pub. Co., 181 F.2d 664 (7th Cir. 1950) (affirming judgment against publisher);
and MCA, Inc. v. Wilson, 425 F. Supp. 443, 456 (S.D.N.Y. 1976) (holding defendant distributor liable even though it
had “no personal knowledge” of the infringement).

12

In Metal Morphosis, Inc. v. Acorn Media Publishing, Inc., 75 Metal Morphosis, a company
that created a unique piece of jewelry, sued Acorn for infringing Metal Morphosis’s copyright on
that piece of jewelry. 76 Acorn argued that it could not be liable for copyright infringement
because it was an “innocent purchaser” of the allegedly infringing item, and it merely distributed
and sold the allegedly infringing item on its website. 77 The court disagreed, noting that
“[w]rongful distribution of copyrighted works constitutes direct infringement and not
contributory or vicarious infringement.” 78 “The Copyright Act does not require that the infringer
know that he is infringing but it nonetheless requires conduct by a person who causes in some
meaningful way an infringement.” 79 Because the defendant had “engaged in conduct which
contributed to infringement (even if innocently),” the plaintiff was allowed to “proceed against
anyone in the chain of distribution for infringement.” 80 “[I]f the manufacture of a copy . . .
constitutes an infringement of the reproduction or adaptation right, its distribution will infringe
the distribution right . . . even if the distributor in acquiring ownership of the copy . . . had no
notice of plaintiff’s copyright.” 81 Metal Morphosis further explained that “[t]his approach may
seem unfair to ‘innocent resellers.’ Nonetheless, the Copyright Act prioritizes recovery . . . to
protect against insolvent or unavailable reproducers over fairness to downstream distributors.
The Defendant is subject to liability as a distributor.” 82 The Broadcaster Defendants’ focus on

75

Metal Morphosis, Inc. v. Acorn Media Publishing, Inc., 639 F. Supp. 2d 1367 (N.D. Ga. 2009).

76

Id. at 1370.

77

Id. at 1372.

78

Id.

79

Id. (alterations omitted).

80

Id.

81

Id.

82

Id. at 1373.

13

the “exact copy” language in Metal Morphosis 83 ignores that the defendant in Metal Morphosis
did not take part in the creation of the alleged infringing work. 84
Likewise, in Hamil America, Inc. v. GFI, 85 J.C. Penney, a defendant who distributed
garments containing infringing fabric patterns, was held liable for “willfully infring[ing] Hamil
America’s copyright” even though J.C. Penney apparently had no knowledge that the fabric
design had been infringed and apparently did not take part in the creation of the allegedly
infringing fabric. 86
In Jacobsen v. Deseret Book Co., the Tenth Circuit reversed dismissal of a copyright
infringement suit against an allegedly infringing author and the author’s publisher. 87 The Tenth
Circuit explained that the test for whether the author and the author’s publisher could be held
liable for copying the copyrighted work was whether the allegedly infringing author copied the
copyrighted work. 88 The Tenth Circuit wrote:
Whether Dr. Hughes [the allegedly infringing author] and Deseret Book [the
allegedly infringing author’s publisher] copied Who Refused to Die [the
copyrighted work] “involves two distinct inquiries: first, whether [Dr. Hughes], as
a factual matter, copied [Dr. Jacobsen’s] work, and second, whether, as a mixed
issue of fact and law, those elements that were copied were protected. 89
Thus, in Jacobsen, the Tenth Circuit held that a suit should not be dismissed against a publisher
if it can be shown that the author—a person other than the publisher—copied the copyrighted
work. That is, the Tenth Circuit did not require that the publisher created the allegedly infringing

83

Reply at 7 (quoting Metal Morphosis, 639 F. Supp. 2d at 1374).

84

Metal Morphosis, 639 F. Supp. 2d at 1370 (explaining that defendant obtained the allegedly infringing item “from
Brown County Silver”).

85

Hamil Am. v. GFI, 193 F.3d 92 (2d Cir. 1999).

86

Id. at 97.

87

Jacobsen, 287 F.3d at 955.

88

Id. at 942.

89

Id.

14

work. The allegation that the publisher participated in the distribution of the allegedly infringing
work was enough to avoid dismissal.
The Broadcaster Defendants “do not dispute that a copyright owner may proceed against
anyone in the chain of distribution for infringement[,]” but argue that the element of access
cannot be ignored. 90 The Broadcaster Defendants argue that because there is no allegation that
the Broadcaster Defendants had access to Vengeance, ITN has failed to state a claim for
copyright infringement. The Broadcaster Defendants draw a distinction between copyright
infringement cases where there is “direct duplication of the copyrighted work” and this case,
where the Broadcaster Defendants have not directly duplicated the copyrighted work, but have
simply distributed a work that is alleged to have infringed on the copyrighted work. 91
The Broadcaster Defendants are correct that this case is different than cases where a
distributor sells an exact duplicate of the copyrighted work without authorization. 92 It is not
alleged that the Broadcaster Defendants aired Vengeance without authorization. But that does not
mean that ITN has failed to state a claim against the Broadcaster Defendants. As the cases above
illustrate, a copyright infringement claim can stand against a distributor even if the distributor
had no knowledge of the alleged infringement.
The Tenth Circuit’s instruction in Jacobsen, quoted above, is helpful. To determine
whether the alleged infringer and the alleged infringer’s publisher were liable for “copying,” the
focus was placed on the party who created the allegedly infringing work—in Jacobsen, the
author. The first inquiry was “whether [the alleged infringer], as a factual matter, copied [the

90

Reply at 4.

91

Id. at 7.

92

See Leonard v. Stemtech Int’l, Inc., 834 F.3d 376 (3d Cir. 2016); Columbia Pictures Television, Inc. v. Krypton
Broadcasting of Birmingham, Inc., 259 F.3d 1186, 1189-90 (9th Cir. 2001); Playboy Enters., Inc. v. Starware Pub.
Corp., 900 F. Supp. 433, 438 (S.D. Fla. 1995).

15

copyright owner’s] work, and second, whether, as a mixed issue of fact and law, those elements
that were copied were protected. 93 Under this analysis, ITN is correct that it has adequately
alleged the element of direct copying under these inquiries, and access does not need to be
shown because access is a method of proving indirect copying. “Wrongful distribution of
copyrighted works constitutes direct infringement and not contributory or vicarious
infringement.” 94 ITN has alleged that Mr. Rodriguez “copied and used material from Vengeance
and offered to pay Medina for his use of Vengeance.” 95 Thus, the first inquiry under Jacobsen
has been alleged.
The second inquiry under Jacobsen has also been adequately alleged. The Second
Amended Complaint identifies several ways in which Machete is alleged to have copied
protected elements of Vengeance. 96 Unlike the first amended complaint that alleged only three
similarities, the Second Amended Complaint alleges dozens of similarities with regard to
costumes, scenery, theme, mood, pace, sequence, specific lines of script, and characters. 97 These
new allegations describe more than general plot similarities. They sufficiently allege that
Machete copied protectable elements of Vengeance, especially considering that Mr. Rodriguez is
alleged to have viewed Vengeance and admitted to copying it.
If any of the alleged similarities were to be viewed in isolation, copyright infringement
may not be established against the Broadcaster Defendants. But “it is ordinarily important to

93

Jacobsen, 287 F.3d at 942.

94

Metal Morphosis, 639 F. Supp. 2d at 1372 (emphasis added).

95

Second Amended Complaint ¶ 31.

96

Id. ¶¶ 38-53.

97

Id.

16

compare the whole works,” 98 not just view individual alleged similarities in isolation. 99 “Where
there is strong proof of access, the necessary showing of factual similarity will be relatively
lower.” 100 Additionally, the threshold for creativity is “very low” and there only needs to be
“some minimal degree of creativity” for a work to have protectable elements. 101
Considering as true the allegations in the Second Amended Complaint and viewing the
factual allegations in the light most favorable to ITN, the Second Amended Complaint
adequately states a claim for copyright infringement against the Broadcaster Defendants. ITN
has not simply compiled a random list of similarities scattered throughout the works, but has
identified specific similarities with regard to costumes, scenery, theme, mood, pace, sequence,
specific lines of script, and characters. 102
The Broadcaster Defendants are correct that the moods of loss, darkness, pain, and
revenge are not copyrightable. 103 But ITN does not attempt to copyright those moods. Rather,
ITN’s allegations seek protection for the manner of expression of those moods—for example, the
use of flashbacks and the similarities in the sequence of events in the overall script.
Thus, even though ITN does not allege that the Broadcaster Defendants were responsible
for creating the allegedly infringing work, ITN has sufficiently alleged its copyright
infringement claim by alleging that someone in the chain of distribution (Mr. Rodriguez) copied

98

The Broadcaster Defendants invite the court to “review Vengeance and Machete” rather than the allegations in the
Second Amended Complaint. Reply at 3, n.2 (quoting Jacobsen, 287 F.3d at 941-42). But Jacobsen does not state
that review of the original work and the allegedly infringing work is mandatory. Instead, Jacobsen stated: “When a
district court considers the original work . . . .” Jacobsen, 287 F.3d at 941. Accordingly, Vengeance and Machete
have not been reviewed in their entirety. Only the Second Amended Complaint, Motion, Opposition, Reply, and
related exhibits have been considered.
99

Madrid v. Chronicle Books, 209 F. Supp. 2d 1227, 1238 (D. Wyo. 2002).

100

Id.

101

Kindergartners Count, Inc. v. Demoulin, 249 F. Supp. 2d 1214, 1227-28 (D. Kan. 2003).

102

Second Amended Complaint ¶¶ 38-53.

103

Reply at 11.

17

the original copyrighted work (Vengeance) and that such copying involved protectable elements
of the work. Because of this, the chain of distribution concept is triggered as to the Broadcaster
Defendants.
“This approach may seem unfair to ‘innocent resellers.’ Nonetheless, the Copyright Act
prioritizes recovery . . . to protect against insolvent or unavailable reproducers over fairness to
downstream distributors.” 104 Additionally, as ITN points out, a distributor may protect itself by
diligent inquiry to avoid infringement, an indemnity agreement, or by insurance. 105 Under the
facts alleged in the Second Amended Complaint, which add key allegations that were lacking in
the first amended complaint, ITN has stated a valid claim for copyright infringement.
The Second Amended Complaint Is Not Time-Barred, But ITN’s Recovery Is
Subject to the Three-Year Statute of Limitations
“Each time an infringing work is reproduced or distributed, the infringer commits a new
wrong. Each wrong gives rise to a discrete ‘claim’ that ‘accrue[s]’ at the time the wrong occurs.
In short, each infringing act starts a new limitations period.” 106 “If infringement occurs within
three years prior to filing, the action will not be barred even if prior infringements by the same
party as to the same work are barred because they occurred more than three years previously.” 107
Accordingly, the Second Amended Complaint is not barred. But ITN’s recovery will be
limited to acts of infringement that occurred within three years of when the lawsuit was first
filed. The lawsuit was first filed on October 13, 2015. Thus, ITN may not recover for acts of
infringement that occurred on or before October 12, 2012. There is no need to re-plead the

104

Metal Morphosis, 639 F. Supp. 2d at 1373.

105

Opposition at 12 (citing Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 308 (2d Cir. 1963)).

106

Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962, 1969 (2014) (alteration in original).

107

Id. at 1970.

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copyright infringement claim as the Broadcaster Defendants have requested. 108 The Broadcaster
Defendants cite to no authority supporting the proposition that the copyright infringement needs
to be re-plead. 109
CONCLUSION
There are sufficient allegations in the Second Amended Complaint to withstand the
Motion under Rule 12(b)(6). ITN has adequately alleged ownership and has adequately alleged
copying. There exists a set of facts that, if proven, would provide entitle ITN to relief.
ORDER
IT IS HEREBY ORDERED that the Motion 110 is DENIED.

Dated May 5, 2017.
BY THE COURT:
____________________________
David Nuffer
United States District Judge

108

Reply at 12.

109

Id.

110
Defendants’ Motion to Dismiss Plaintiff’s Second Amended Complaint Pursuant to Fed. R. Civ. P. 12(b)(6)
(“Motion”), docket no. 53, filed Dec. 6, 2016.

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