Brownmark Films, LLC v. Paramount Pictures Corporation et al

Filing 16

RESPONSE to Motion filed by Brownmark Films LLC re 8 MOTION to Dismiss Defendants' Motion to Dismiss Plaintiff Brownmark Films, LLC's Amended Complaint.

IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
Brownmark Films, LLC
Plaintiff,
v.

Case No. 10-CV-1013

Comedy Partners,
MTV Networks,
Paramount Home Entertainment, Inc.,
South Park Digital Studios LLC, and
Viacom International, Inc.,
Defendants.
PLAINTIFF’S RESPONSE TO DEFENDANT’S MOTION TO DISMISS

Caz McChrystal (State Bar No. 1069668)
6649 W. Mount Vernon Ave.
Milwaukee, Wisconsin 53213
T: 715.346.4660
F: 715.346.3310
E: [e-mail]

Joseph A. Kromholz (State Bar No. 1002464)
Garet K. Galster (State Bar No. 1056772)
RYAN KROMHOLZ & MANION, S.C.
P. O. Box 26618
Milwaukee, Wisconsin 53226-0618
T: 262.783.1300
F: 262.783.1211
E: [e-mail]
Attorneys for Plaintiff,
Brownmark Films, LLC

TABLE OF CONTENTS
Page
INTRODUCTION

1

I. This Court Should Deny Defendants’ Motion to Dismiss Because
Plaintiff Has Standing to Sue

1

II. This Court Should Deny Defendants’ Motion to Dismiss Because
it is Improperly Based on the Affirmative Defense of Fair Use

3

CONCLUSION

5

ii

TABLE OF AUTHORITIES
Supreme Court of the United States

Page

Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009)
Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2006)
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)
Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991)
Gomez v. Toledo, 446 U.S. 635 (1980)
Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985)
Scheurer v. Rhodes, 416 U.S. 232 (1974)

1, 4
1
4
3
3
4
1

United States Courts of Appeals
Davis v. Blige, 505 F.3d 90 (2d Cir. 2007)
Deckard v. General Motors Corp., 307 F.3d 556 (7th Cir. 2002)
Edward Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 268 (2d Cir. 1944)
Janky v. Lake County Convention & Visitors Bureau, 576 F.3d 356 (7th Cir. 2009)
Leadsinger, Inc. v. BMG Music Publishing, 512 F.3d 522 (9th Cir. 2008)
Reger Development, LLC v. National City Bank, 592 F.3d 759 (7th Cir. 2010)
Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008)
Xechem, Inc. v. Bristol-Myers Squibb Co., 372 F.3d 899 (7th Cir. 2004)

2
3
2
3
4
1
2
3

United States District Courts
Copyright.net Music Publishing LLC v. MP3.com, 256 F. Supp. 2d 214 (S.D.N.Y. 2003)
Edgenet, Inc. v. GS1 AIBSL, 2010 U.S. Dist. LEXIS 482 (E.D. Wis. 2010)

2
2

Statutes
17 U.S.C. § 201(d)(1)

1, 2

Rules
Federal Rule of Civil Procedure 8(c)
Federal Rule of Civil Procedure 12(b)(6)

3
1, 3

Other Authorities
1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 6.11 (2009)

iii

1

INTRODUCTION
Now comes Plaintiff, through its attorneys Caz McChrystal and Ryan Kromholz & Manion,
S.C., to respond to Defendants’ Motion to Dismiss (Dkt. No. 8, Memo at Dkt. No. 9), purportedly
based on Federal Rule of Civil Procedure 12(b)(6). For the following reasons, this Court should
deny Defendants’ motion.
To survive a motion to dismiss, a complaint need only contain sufficient factual matter,
accepted as true, to state a claim to relief that is plausible on its face. Ashcroft v. Iqbal, 129 S. Ct.
1937, 1949 (2009) (internal quotations omitted). “A claim has facial plausibility when the plaintiff
pleads factual content that allows the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.” Id. When evaluating the sufficiency of a complaint, a court must
construe it in the light most favorable to the nonmoving party, must accept well-pleaded facts as
true, and must draw all inferences in the nonmoving party’s favor. Reger Dev., LLC v. Nat’l City
Bank, 592 F.3d 759, 763 (7th Cir. 2010). In addressing a motion to dismiss under Rule 12(b)(6), it is
not the role of a court to determine if a plaintiff will ultimately be successful with its claim. Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 556 (2006) (citing Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)).
I.

This Court Should Deny Defendants’ Motion to Dismiss Because Plaintiff Has
Standing to Sue
Plaintiff has standing to prosecute its copyright infringement claims against the Defendants.

Robert T. Ciraldo and Andrew T. Swant, original co-claimants in the copyright in the WWITB
music video, assigned their entire ownership interests in the copyright to Plaintiff on July 30, 2008
pursuant to section 201(d)(1) of the U.S. Copyright Act. (Amended Compl., Dkt. No. 6, ¶¶ 12-13.)
Such a transfer by one or more co-owners is entirely permissible. See 17 U.S.C. § 201(d)(1) (2009);
see also 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 6.11 (2004). Therefore,
Plaintiff is a co-owner of the copyright in the WWITB music video, and, as this very Court noted
1

just over a year ago, “[c]o-owners may sue for copyright infringement independently.” Edgenet, Inc. v.
GS1 AIBSL, 2010 U.S. Dist. LEXIS 482 *14 (E.D. Wis., Jan. 5, 2010) (Stadtmueller, J.) (citation
omitted).

In reaching its decision, this Court followed the long-held precedent of the Second

Circuit. Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007) (stating “The right to prosecute an accrued
cause of action for [copyright] infringement . . . is a right that may be exercised independently of coowners; a joint owner is not required to join his other co-owners in an action for infringement.”)
(internal citations omitted); see also Edward Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 268,
269 (2d Cir. 1944) and Copyright.net Music Publ'g LLC v. MP3.com, 256 F. Supp. 2d 214, 218 (S.D.N.Y.
2003).
Defendants’ contention that Plaintiff is a mere nonexclusive licensee, and thus lacks standing
to sue, has no basis in fact or law. To advance their argument, Defendants cite only a single case,
Sybersound Records, Inc. v. UAV Corporation, 517 F.3d 1137 (9th Cir. 2008). (Dkt. No. 9 at 9.)
Sybersound was primarily a case regarding trademark law. See 517 F.3d 1137. Any purported holding
in that case regarding copyright, however, has not been adopted in the Seventh Circuit, or any other
circuit outside of the Ninth, and is inapplicable to the facts of this case. The plaintiff in Sybersound
Records was not a copyright co-owner, but merely a licensee of a divisible interest. 1 517 F.3d at 1145.
The present case is entirely different. Ciraldo and Swant transferred their entire, undivided
ownership interests in the copyright in WWITB to Plaintiff. (Amended Compl., Dkt. No. 6, ¶¶ 1213.) Such transfer rendered Plaintiff a co-owner in the copyright. See 17 U.S.C. 201(d)(1). Were this
Court to extend the application of Sybersound Records to the present case, it would require a holding–
contrary to statutory authority provided by section 201(d)(1)–that co-ownership in a copyright

The divisible interest in that case was a further subdivision of the exclusive right to prepare derivative works. See 517
F.3d at 1142. The subdivided right at issue was the right to prepare derivative works for the purposes of producing
karaoke recordings only. Id.

1

2

cannot be transferred in any way, shape, or form. Such a view finds no support in the law, and, in
fact, clearly departs from it.
For the foregoing reasons, this Court should deny Defendants’ Motion to Dismiss.
II.

This Court Should Deny Defendants’ Motion to Dismiss Because it is Improperly
Based on the Affirmative Defense of Fair Use
This Court should deny Defendants’ Motion to Dismiss because it is merely an attempt to

avoid answering the allegations of Plaintiff’s Complaint. A valid copyright infringement claim
includes “two elements: ‘(1) ownership of a valid copyright, and (2) copying of constituent elements
of the work that are original.’” Janky v. Lake County Convention & Visitors Bureau, 576 F.3d 356, 361
(7th Cir. 2009) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Plaintiff’s
Complaint includes valid copyright infringement claims. (Dkt. No. 6 at 3-10.) Indeed, Defendants
have not challenged the sufficiency of the allegations pleaded in Plaintiff’s Complaint. (See Dkt. No.
9.)
In the Seventh Circuit, a motion to dismiss is improper to the extent that it is based on an
affirmative defense. Deckard v. Gen. Motors Corp., 307 F.3d 556, 560 (7th Cir. 2002) (citing Gomez v.
Toledo, 446 U.S. 635, 639-41 (1980)). Instead, an affirmative defense must be pleaded, Fed. R. Civ. P.
8(c), because “the existence of a defense does not undercut the adequacy of the claim,” Deckard at
560. In fact, “[o]rders under Rule 12(b)(6) are not appropriate responses to the invocation of
defenses, for plaintiffs need not anticipate and attempt to plead around all potential defenses.
Complaints need not contain any information about defenses and may not be dismissed for that
omission.” Xechem, Inc. v. Bristol-Myers Squibb Co., 372 F.3d 899, 901 (7th Cir. 2004) (emphasis in
original) (citing Gomez v. Toledo, 446 U.S. 635 (1980).)
In this case, Defendants state, without pleading and in a motion filed under Rule 12(b)(6), an
affirmative defense of parody as a fair use of Plaintiff’s copyrighted material. (Id. at 16-21.) Fair use
3

is an affirmative defense to a claim of copyright infringement, Harper & Row, Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 561 (1985) (cited in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590, n.20
(1994)). Because an affirmative defense does not undercut the adequacy of the claim pleaded by
Plaintiff, Defendant’s Motion to Dismiss is improper and should be denied.
Defendants fail to provide any legal basis related to the propriety of stating an unpleaded
affirmative defense in a motion to dismiss. Defendants mistakenly rely upon Leadsinger for support.
(See Dkt. No. 9 at 8, citing Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 530 (9th Cir. 2008).)
Indeed, Defendants go so far as to misrepresent Leadsinger. Compare Dkt. No. 9 at 8 with Leadsinger,
Inc., 512 F.3d at 525. Partially quoting from Leadsinger in their motion, Defendants purport that “a
defendant’s ‘assertion of fair use may be considered on a motion to dismiss….’” (Dkt. No. 9 at 8
(emphasis added).) However, Leadsinger did not involve a defendant’s assertion of fair use. Leadsinger
at 525. Rather, Leadsinger involved a declaratory judgment plaintiff’s assertion of fair use, which was
pleaded in its complaint. Id. Indeed, the court in Leadsinger even characterized as “unusual” the
resolution of the fair use question on a motion to dismiss. Id. at 530. But such resolution was
proper in that case because the declaratory judgment plaintiff pleaded fair use through allegations in
its complaint, id.; thus, because fair use was pleaded, the district court in Leadsinger was required to
consider it in addressing the motion to dismiss, see id.; accord Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949
(analyzing complaint for sufficiency).
Thus, there are clear and significant procedural differences between Leadsinger and the case at
bar. In this case, contrary to the requirements of Rule 8(c), and unlike the declaratory judgment
plaintiff in Leadsinger, Defendants have not pleaded an affirmative defense of fair use upon which they
attempt to rely in their Motion to Dismiss. (See Dkt. No. 9.)

4

Because a motion to dismiss under Rule 12(b)(6) may not be based on an affirmative
defense, and because Defendants’ motion is based on fair use, which is an affirmative defense to
Plaintiff’s properly pleaded copyright claim, this Court should deny Defendants’ Motion to Dismiss.
CONCLUSION
In sum, Defendants have attempted to evade answering for their conduct, and instead have
relied upon a hollow assertion related to standing and a premature, unpleaded assertion of an
affirmative defense. This Court should deny Defendants’ Motion to Dismiss by holding, as it has
previously, that copyright co-owners have standing individually to pursue copyright infringement
claims. Further, this Court should deny Defendants’ Motion to Dismiss by upholding and enforcing
the Federal Rules of Civil Procedure, namely rule 8(c), by requiring Defendants to answer for their
conduct and affirmatively plead any affirmative defense, as is required in this Circuit.
Respectfully submitted,
Date: 15 March 2011

By:

s/Caz McChrystal/
Caz McChrystal (State Bar No. 1069668)
6649 W. Mount Vernon Ave.
Milwaukee, Wisconsin 53213
T: 715.346.4660
F: 715.346.3310
E: [e-mail]
Ryan Kromholz & Manion, S.C.

By:

s/Garet K. Galster/
Joseph A. Kromholz (State Bar No. 1002464)
[e-mail]
Garet K. Galster (State Bar No. 1056772)
[e-mail]
RYAN KROMHOLZ & MANION, S.C.
P. O. Box 26618
Milwaukee, Wisconsin 53226-0618
T: 262.783.1300
F: 262.783.1211
E: [e-mail]

Attorneys for Plaintiff
5

CERTIFICATE OF SERVICE
I hereby certify that I have this day caused copies of the forgoing document to be served on the
parties and counsel of record noted below by Court email:
James D. Peterson
GODFREY & KAHN
One East Main St., Suite 500
P.O. Box 2719
Madison, Wisconsin 53701-2719
Alonzo Vickers IV
Jeff Glasser
DAVIS WRIGHT TREMAINE LLP
865 S. Figueroa St., Suite 2400
Los Angeles, California 90017-2566

Date: 15 March 2011

s/Peggy Pechulis/
Peggy Pechulis

6