QOTD Film Investment Ltd. v. Doe 1 et al

Filing 113

ORDER denying plaintiff's 108 Motion to Dismiss Counterclaim of Judy Rushing, signed by Judge Robert S. Lasnik. (SWT) (cc: Brian Wilson via USPS)

1
2
3
4
5
6

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

7
8

QOTD FILM INVESTMENT, LTD,

9

Plaintiff,

10
11
12

Case No. C16-0371RSL
v.
MARY STARR, et al.,

ORDER DENYING MOTION TO
DISMISS COUNTERCLAIM

Defendants.

13
14

This matter comes before the Court on “Plaintiff’s 12(b)(1) Motion to Dismiss

15

Counterclaim of Judy Rushing.” Dkt. # 108. On July 8, 2016, plaintiff asserted a

16

copyright infringement action against Judy Rushing alleging that she “copied and

17

distributed Plaintiff’s copyrighted motion picture Queen of the Desert.” Dkt. # 16 at ¶ 10.

18

This allegation was based on the fact that the internet connection Rushing paid for was

19

used to connect to a swarm and to share/download plaintiff’s film. Under plaintiff’s

20

theory of the case, Rushing was liable because she either (a) personally downloaded the

21

film or (b) failed to prevent another person from using her internet connection to do so.

22

Rushing promptly notified plaintiff that she did not copy Queen of the Desert, but

23

that another adult residing in her house did. She refused to identify the non-party.

24

Plaintiff, for its part, refused to dismiss the claims against her unless and until she

25

provided identifying information. On August 8, 2016, Rushing filed an answer and

26
ORDER DENYING MOTION TO
DISMISS COUNTERCLAIM - 1

1

counterclaim seeking a declaration of non-infringement and an award of attorney’s fees

2

and costs for having to defend the case. Dkt. # 27. Rushing eventually capitulated and

3

identified her son, Brian Wilson, as the person who participated in the Queen of the

4

Desert swarm. Shortly thereafter, plaintiff filed a motion to amend and was granted leave

5

to dismiss its claims against Rushing and add claims against Wilson.

6

To the extent plaintiff thought the amendment resolved Rushing’s counterclaims, it

7

was mistaken. When a plaintiff voluntarily dismisses its claims, the Court may, but is not

8

required to, dismiss compulsory counterclaims that are then pending. See Smith v.

9

Lenches, 263 F.3d 972, 977 (9th Cir. 2001) (noting that the appellate court’s “standard of

10

review leads [it] to consider whether the district court abused its discretion by dismissing

11

[defendant’s] counterclaim.”). The order granting leave to amend did not address the

12

issue (Dkt. # 71), and Rushing made clear in January 2017, if not earlier, that she believes

13

her counterclaim remains outstanding. Although the caption of the case has not been

14

formally amended, the docket in this matter accurately reflects that Rushing’s

15

counterclaim is still pending.

16

Plaintiff now seeks dismissal of Rushing’s counterclaim for lack of jurisdiction

17

under Fed. R. Civ. P. 12(b)(1). The Declaratory Judgment Act provides that, “[i]n a case

18

of actual controversy within its jurisdiction, . . . any court of the United States . . . may

19

declare the rights and other legal relations of any interested party seeking such

20

declaration, whether or not further relief is or could be sought.” 28 U.S.C. § 2201(a).

21

Plaintiff’s dismissal of its claims against Rushing in favor of suing the person who

22

actually downloaded Queen of the Desert would not be enough to end its controversy

23

with Rushing. The dismissal was without prejudice, and plaintiff could at any moment

24

reallege that Rushing is liable under the Copyright Act because she failed to take

25

precautions to prevent third-parties from using her internet connection to download the

26
ORDER DENYING MOTION TO
DISMISS COUNTERCLAIM - 2

1

film.1 Plaintiff’s voluntary and unilateral cessation of the lawsuit did not deprive Rushing

2

of her right to seek a declaration that she has not infringed.

3

Recognizing that more is needed, plaintiff states in its motion that it

4

“unconditionally asserts that it will not enforce asserted Copyright Registration No. PAu

5

3-766-976, as set forth in the complaint, against Ms. Rushing for any act occurring to the

6

present date.” Dkt. # 108 at 5. The Court accepts this carefully worded “unconditional

7

assertion” as an enforceable promise that plaintiff will not pursue a copyright

8

infringement claim against Rushing under any theory that is related to Queen of the

9

Desert and arose prior to the date of this order. The de facto dismissal that occurred when

10

Rushing was dropped from the complaint is therefore converted into a dismissal with

11

prejudice. Because this enforceable covenant not to sue and/or dismissal with prejudice

12

makes any possibility of a future infringement action speculative, there is no actual case

13

or controversy to form the basis for the Court’s jurisdiction over Rushing’s request for a

14

declaratory judgment. See Nat’l Prods., Inc. v. Gamber-Johnson LLC, C07-1985RAJ,

15

2008 WL 11343465, at *2-4 (W.D. Wash. Apr. 23, 2008).

16

Nevertheless, Rushing has preserved her right to seek attorney’s fees, and the

17

Court retains jurisdiction to consider that request. Id., at *5. Section 505 of the Copyright

18

Act provides:

19
20
21

In any civil action under this title, the court in its discretion may allow the
recovery of full costs by or against any party other than the United States of
an officer thereof. Except as otherwise provided by this title, the court may
also award a reasonable attorney’s fee to the prevailing party as part of the

22
1

23
24
25
26

The Court is not espousing or otherwise promoting this theory of copyright
infringement. In fact, for the reasons stated in Elf-Man, LLC v. Cariveau, C13, 0507RSL (Dkt.
# 78), the “failure to secure” theory cannot support claims of direct, contributory, or indirect
infringement in the circumstances presented here. Plaintiff admits as much in reply when it
acknowledges that there would be no basis for asserting an infringement action against Rushing
given that her son has admitted to actually performing the download of copyrighted material.
Dkt. # 111 at 1.
ORDER DENYING MOTION TO
DISMISS COUNTERCLAIM - 3

1
2
3
4
5
6
7
8
9

costs.
17 U.S.C. § 505. It appears likely that, having obtained a dismissal of the claims against
her with prejudice, Rushing will be able to show that she has materially altered the legal
relationship of the parties, triggering the Court’s discretion to award fees under § 505. See
Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S.
598, 604 (2001); Cadkin v. Loose, 569 F.3d 1142, 1148-49 (9th Cir. 2009). Plaintiff’s
efforts to resolve the copyright dispute between the parties does not erase the
counterclaim Rushing was forced to assert or her entitlement to the relief afforded to
prevailing parties under the Copyright Act and/or the Rules of Federal Procedure.

10
11
12

For all of the foregoing reasons, plaintiff’s motion to dismiss Rushing’s
counterclaim is DENIED.

13
14

Dated this 28th day of November, 2017.

15

A

16

Robert S. Lasnik
United States District Judge

17
18
19
20
21
22
23
24
25
26
ORDER DENYING MOTION TO
DISMISS COUNTERCLAIM - 4