Case 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 1 of 8 Page ID #:187

O 1

2 3 4 5 6 7

8 United States District Court 9 Central District of California

10

11 CARLOS VILA, Case № 2:21-cv-05837-ODW (MRWx)

12 Plaintiff,

ORDER DENYING PLAINTIFF’S

13 v.

MOTION FOR JUDGMENT ON

14 DEADLY DOLL, INC., THE PLEADINGS AS TO 15 Defendant, DEFENDANT’S COUNTERCLAIMS [30] 16

17 DEADLY DOLL, INC.,

18 Counterclaimant,

19 v.

20 CARLOS VILA,

21 Counter Defendant.

22 23 I. INTRODUCTION 24 On July 20, 2021, Plaintiff Carlos Vila brought this copyright infringement action 25 against Defendant Deadly Doll, Inc. (See Compl., ECF No. 1.) On September 3, 2021, 26 Deadly Doll filed Counterclaims against Vila. (See Countercl., ECF No. 15.) Vila now 27 moves, pursuant to Federal Rule of Civil Procedure (“Rule”) 12(c), for judgment on the 28 Case 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 2 of 8 Page ID #:188

1 pleadings against Deadly Doll’s Counterclaims. (Mot. J. Pleadings (“Mot.” or 2 “Motion”), ECF No. 30.) For the reasons that follow, the Court DENIES the Motion.1 3 II. FACTUAL AND PROCEDURAL BACKGROUND 4 For purposes of this Rule 12(c) Motion, the Court accepts Deadly Doll’s well- 5 pleaded allegations as true. Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir. 6 2001) (on Rule 12(b)(6) motion). Deadly Doll is a clothing company that incorporates 7 “original artwork, song lyrics, and other graphics” in its clothing. (Countercl. ¶ 6.) In 8 August 2018, a piece of artwork was created for Deadly Doll, which comprised “a 9 cartoon-style image of a ‘Pin-up’ girl holding a skull in her left hand” (the “Artwork”). 10 (Id. ¶ 7.) In August 2019, Deadly Doll first published the Artwork, and in late 2019, 11 Deadly Doll first used the Artwork on its clothing. (Id.) Deadly Doll registered the 12 Artwork with the U.S. Copyright Office, which assigned to the Artwork copyright 13 registration number VA0002263282. (Id.) Deadly Doll is the author and owner of that 14 copyright on a “work made for hire” basis. (Id.) 15 On February 7, 2020, Vila, a professional photographer, took a photograph of 16 celebrity Irina Shayk wearing Deadly Doll pants displaying a large depiction of the 17 Artwork on the length of the right pant leg (the “Photograph”). (Id. ¶¶ 9, 11.) Without 18 Deadly Doll’s knowledge or consent, Vila then applied for and received a copyright 19 registration in the Photograph. (Id. ¶ 10.) When registering the Photograph, Vila did 20 not indicate to the U.S. Copyright Office that the Photograph was derivative of the 21 Artwork. (Id.) Vila also included the Photograph in his portfolio of images that he 22 offers to online and print publications, and has licensed or has attempted to license the 23 Photograph to online and print publications. (Id. ¶ 11.) 24 25 26 27

28 1 Having carefully considered the papers filed in connection with the Motion, the Court deemed the matter appropriate for decision without oral argument. Fed. R. Civ. P. 78; C.D. Cal. L.R. 7-15.

2 Cas@ 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 3of8 Page ID #:189

1 The Artwork: The Photograph: 2 wr ; Fin ae)

° WG a 4 3 iS q a i. | es . 4) = —— 9 py. 10 : wo fe : 1 Sy te a = 12 roe AE a -

13 14 According to Vila, Deadly Doll displayed the Photograph on an Instagram page 15 || without Vila’s permission. (Compl. 4] 21-26.) Accordingly, Vila initiated this action 16 || against Deadly Doll, alleging a single claim for infringement of Vila’s copyright in the 17 || Photograph. (qd.) In turn, Deadly Doll filed its Counterclaims, alleging that Vila 18 || infringed Deadly Doll’s copyright in the Artwork, and seeking a judicial declaration 19 | clarifying the validity of the copyrights in the Artwork and in the Photograph, and 20 || whether either party infringed the other’s copyright. (See Countercl.) By way of a fully 21) briefed Motion, Vila now seeks judgment on the pleadings as to Deadly Doll’s 22 || Counterclaims. (See Mot.; Opp’n, ECF No. 32; Reply, ECF No. 33.) 23 Hl. LEGAL STANDARD 24 After the pleadings are closed, but within such time as to not delay the trial, any 25 || party may move for judgment on the pleadings. Fed. R. Civ. P. 12(c). The standard 26 || applied to a Rule 12(c) motion is the same as that applied to Rule 12(b)(6) motions; a 27 || judgment on the pleadings is appropriate when, even if all the allegations in the 28 || complaint are true, the moving party is entitled to judgment as a matter of law. Bell All.

Case 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 4 of 8 Page ID #:190

1 Corp. v. Twombly, 550 U.S. 544, 555–56 (2007) (“Factual allegations must be enough 2 to raise a right to relief above the speculative level on the assumption that all the 3 allegations in the complaint are true (even if doubtful in fact).” (citations omitted)); 4 Milne ex rel. Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036, 1042 (9th Cir. 2005). 5 When ruling on a motion for judgment on the pleadings, a court should construe 6 the facts in the complaint in the light most favorable to the nonmoving party, and the 7 movant must clearly establish that no material issue of fact remains to be resolved. 8 McGlinchy v. Shell Chem. Co., 845 F.2d 802, 810 (9th Cir. 1988). However, 9 “conclusory allegations without more are insufficient to defeat a motion [for judgment 10 on the pleadings].” Id. 11 If judgment on the pleadings is appropriate, a court has discretion to grant the 12 non-moving party leave to amend, grant dismissal, or enter a judgment. See Lonberg 13 v. City of Riverside, 300 F. Supp. 2d 942, 945 (C.D. Cal. 2004). Leave to amend may 14 be denied when “the court determines that the allegation of other facts consistent with 15 the challenged pleading could not possibly cure the deficiency.” Schreiber Distrib. Co. 16 v. Serv-Well Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986). Thus, leave to amend 17 “is properly denied . . . if amendment would be futile.” Carrico v. City & County of 18 San Francisco, 656 F.3d 1002, 1008 (9th Cir. 2011). 19 IV. DISCUSSION 20 Vila argues that he is entitled to judgment as a matter of law because the 21 Photograph is not a derivative of the Artwork, Deadly Doll is not entitled to declaratory 22 judgment, Deadly Doll’s copyright in the Artwork is invalid, and Vila’s Photograph 23 constitutes fair use of the Artwork. (See Mot.) The Court addresses each argument in 24 turn. 25 A. Whether the Allegations Preclude Infringement as a Matter of Law 26 Vila first argues that his Photograph is not a derivative of the Artwork and Vila 27 therefore could not have possibly infringed the Artwork’s copyright. (Mot. 6–8.) As 28 explained below, the Court finds this argument is not appropriate for judgment on the

4 Case 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 5 of 8 Page ID #:191

1 pleadings because it requires the Court to make a factual determination contrary to the 2 allegations in the Counterclaims. 3 The Copyright Act provides a copyright owner with “a number of exclusive 4 rights, including the right ‘to prepare derivative works’ based on its original work of 5 authorship.” DC Comics v. Towle, 802 F.3d 1012, 1023 (9th Cir. 2015) (quoting 6 17 U.S.C. § 106). “A derivative work is a work based upon one or more preexisting 7 works that recasts, transforms, or adapts the preexisting work.” Id. (internal citations 8 and quotation marks omitted). The standard for determining whether a work is 9 derivative of another is the same as that for determining whether that work is infringing 10 the other. Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984). 11 Here, Vila argues that his Photograph is highly unlikely to be considered a 12 derivative work under Ninth Circuit precedent, which protects photographers from their 13 inherent vulnerabilities to copyright infringement suits based on the individual 14 copyrighted elements necessarily captured in their photographs. (See Mot. 6.) Vila 15 contends that to allow a photograph to be considered derivative, and therefore 16 infringing, would impose a “chilling effect on the art of photography.” (Id.) However, 17 Vila does not—and cannot—cite to any precedent stating that photographs can never 18 be derivative works of any artwork displayed therein. That is, Vila fails to show that 19 his Photograph is not a derivative work as a matter of law. Accordingly, the question 20 of whether the Photograph is a derivative work still requires the Court to determine 21 whether the Photograph recasts, transforms, or adapts the Artwork. This is a question 22 of fact to be established on summary judgment or determined at trial, and not a question 23 of law to be decided in a motion for judgment on the pleadings. See Tiffany Design, 24 Inc. v. Reno-Tahoe Specialty, Inc., 55 F. Supp. 2d 1113, 1122 (D. Nev. 1999). 25 Accordingly, the Court denies Vila’s Motion for judgment on this basis. 26 B. Whether the Allegations Preclude Declaratory Relief 27 Vila next argues that Deadly Doll cannot possibly prevail on its claim for 28 declaratory relief because Vila’s Photograph is sufficiently original to warrant its own

5 Case 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 6 of 8 Page ID #:192

1 copyright protection. (Mot. 8–12.) Specifically, Vila cites to the Ninth Circuit’s 2 “extremely low” threshold for originality. (Mot. at 8.) But this argument fails in the 3 same way as Vila’s previous argument. By citing precedent that merely suggests 4 Deadly Doll is unlikely to prevail on its claim, instead of citing precedent holding that 5 Deadly Doll’s claim is untenable as a matter of law, Vila does not meet his burden to 6 show he is entitled to judgment. 7 C. Whether Deadly Doll’s Copyright in the Artwork is Valid 8 Next, Vila argues that he is entitled to judgment as a matter of law because 9 Deadly Doll’s copyright in the Artwork is invalid as the dates of creation, first 10 publication, and registration alleged in the Counterclaims do not match those dates as 11 displayed on the U.S. Copyright Office’s webpage. (Mot. 12–14.) This peculiar 12 argument fails in four different ways. First, and most significantly, Vila does not 13 provide any precedent to support a finding that inconsistencies between copyright dates 14 alleged in a complaint and those dates depicted on the copyright registration, render the 15 copyright registration void or cancellable so as to entitle a movant to judgment on the 16 pleadings. 17 Next, for purposes of this Motion, the Court must accept as true all the allegations 18 in the Counterclaims, Twombly, 550 U.S. at 555–56, and Deadly Doll’s copyright 19 registration is entitled to a presumption of validity, United Fabrics Int'l, Inc. v. C&J 20 Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). Third, Deadly Doll contends that, in 21 any case, the inconsistent dates are the product of a mere typographical error and such 22 erroneous information, without proof that it was filed knowingly, cannot be the basis 23 for invalidating a copyright. (Opp’n 8–9 (citing 17 U.S.C. § 411(b)(1)).) Deadly Doll 24 is correct that erroneous information, alone, is not a basis for copyright invalidation. 25 Fourth and finally, Deadly Doll has submitted a supplemental copyright 26 registration for its Artwork, (Req. Judicial Notice (“Request”), Ex. 1 (“Supplemental 27 28

6 Case 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 7 of 8 Page ID #:193

1 Registration”), ECF No. 35), which the Court judicially notices.2 The Supplemental 2 Registration displays dates of creation, first publication, and registration that are 3 consistent with the relevant allegations in the Counterclaims, thus mooting Vila’s 4 argument. (Compare id. with Countercl. ¶ 7.) Accordingly, the Court again finds that 5 Vila fails to show he is entitled to judgment as a matter of law. 6 D. Whether Vila’s Photograph was Fair Use as a Matter of Law 7 Vila finally argues that he is entitled to judgment on the pleadings because in any 8 case, Vila’s incorporation of the Artwork into the Photograph constitutes fair use and 9 therefore is not copyright infringement. (Mot. 14–17.) The determination of whether 10 a work constitutes fair use requires “a case-by-case analysis and a flexible balancing of 11 relevant factors.” Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 800 (9th Cir. 12 2003). The factors include “(1) the purpose and character of the use . . . ; (2) the nature 13 of the copyrighted work; (3) the amount and substantiality of the portion used in relation 14 to the copyrighted work as a whole; and (4) the effect of the use upon the potential 15 market for or value of the copyrighted work.” Id. Resolving these factors would require 16 the Court to weigh evidence outside of the Counterclaims, which it cannot do on a 17 motion for judgment on the pleadings. As Deadly Doll correctly stated, “Vila’s fair use 18 arguments are not properly raised on this motion because fair use is a mixed question 19 of law and fact that is not generally resolvable by motions to dismiss or for judgment 20 on the pleadings.” (Opp’n 11 (citing SOFA Entm’t, Inc. v. Dodget Prods., Inc., 21 709 F.3d 1273, 1277 (9th Cir. 2013)).) Accordingly, like Vila’s other arguments 22 discussed above, Vila’s contention that his use was “fair” raises a factual inquiry, not a 23 24

25 2 “Judicial notice of a copyright registration may be appropriate pursuant to Fed. R. Evid. 201(b).” Allen v. Ghoulish Gallery, No. 06cv371 NLS, 2007 WL 4207923, at *1 (S.D. Cal. Nov. 20, 2007). 26 Accordingly, the Court GRANTS Deadly Doll’s Request to judicially notice its Supplemental Registration. The Court also notes that Deadly Doll seeks judicial notice of numerous other district 27 court actions brought by Vila. (Opp’n 1 n.1.) As the Court does not rely on these filings in its analysis, 28 the Court DENIES Deadly Doll’s request.

7 Casq@ 2:21-cv-05837-ODW-MRW Document 39 Filed 08/23/22 Page 8of8 Page ID #:194

1 || legal one. Vila cannot show that, looking only to the Counterclaims, Vila’s Photograph 2 || was fair use as a matter of law. 3 V. CONCLUSION 4 The Court finds that Deadly Doll states sufficient claims for copyright 5 || infringement and declaratory relief, and accordingly, Vila is not entitled to judgment on 6 || the pleadings. The Court therefore DENIES Vila’s Motion. (ECF No. 30.) 8 IT IS SO ORDERED. 10 August 23, 2022 \

B OTIS D. HT, I

4 UNITED STATES DISTRICT JUDGE

15 16 17 18 19 20 21 22 23 24 25 26 27 28