Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 1 of 12 Page ID #:91 'O' 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 CV 22-03142-RSWL-JPRx 12 KLAUBER BROTHERS, INC, ORDER re: 13 Plaintiff,

DEFENDANT’S MOTION TO

14 v. DISMISS [13] 15

ANA ACCESSORIES

16 CORPORATION, 17 Defendant. 18 Plaintiff Klauber Brothers, Inc. (“Plaintiff”) 19 brings this Action against Defendant Ana Accessories 20 Corporation (“Defendant”) alleging copyright 21 infringement and vicarious and/or contributory copyright 22 infringement. Currently before the Court is Defendant’s 23 Motion to Dismiss Plaintiff’s Complaint (“Motion”) [13]. 24 Having reviewed all papers submitted pertaining to 25 the Motion, the Court NOW FINDS AND RULES AS FOLLOWS: 26 the Court GRANTS in part and DENIES in part Defendant’s 27 Motion WITH LEAVE TO AMEND. 28 1 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 2 of 12 Page ID #:92

1 I. BACKGROUND

2 A. Factual Background

3 Plaintiff is a New York corporation that allegedly 4 owns an original artwork design (“Subject Design”) that 5 it fashions into lace. Compl. ¶¶ 4, 9, ECF No. 1. To 6 protect the Subject Design, Plaintiff owns a United 7 States Copyright Registration, Registration No. VA 180- 8 563. Id. ¶ 10. Plaintiff alleges it samples and sells 9 the Subject Design lace to members in the fashion and 10 apparel industries. Id. ¶ 11. 11 Defendant is a California corporation. Id. ¶ 5. 12 Defendant allegedly sold infringing garments 13 (collectively, “Garment Designs”) that bear either 14 substantially similar or identical artwork to the 15 Subject Design.1 Id. ¶ 13. 16 Plaintiff alleges these Garment Designs infringe on 17 Plaintiff’s Subject Design. Id. ¶ 18. Plaintiff 18 alleges Defendant discovered the Subject Design by 19 accessing a) Plaintiff’s showroom and/or design library, 20 b) stolen Subject Design copies sold by third-party 21 vendors, c) Plaintiff’s strike-offs and samples, and d) 22 garments manufactured and sold to the public that 23 lawfully bear the Subject Design. Id. ¶ 17. 24 Plaintiff alleges that Defendant participated and 25 directly controlled the Garment Designs’ manufacturing. 26 1 Plaintiff attached in its Complaint side-by-side 27 photographs to show similarities between the Subject Design and 28 the Garment Designs. Compl. ¶ 14. 2 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 3 of 12 Page ID #:93

1 Id. ¶ 26.

2 B. Procedural Background

3 On May 9, 2022, Plaintiff filed its Complaint [1]. 4 On July 1, 2022, Defendant filed the instant Motion2 5 [13]. On July 27, 2022, Plaintiff opposed [17]. 6 Defendant did not file any reply. 7 II. DISCUSSION 8 A. Legal Standard 9 Federal Rule of Civil Procedure 12(b)(6) allows a 10 party to move for dismissal of one or more claims if the 11 pleading fails to state a claim upon which relief can be 12 granted. A complaint must contain sufficient facts, 13 accepted as true, to state a plausible claim for relief. 14 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quotation 15 omitted). Dismissal is warranted for a “lack of a 16 cognizable legal theory or the absence of sufficient 17 facts alleged under a cognizable legal theory.” 18 Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 19 (9th Cir. 1988) (citation omitted). 20 “In ruling on a 12(b)(6) motion, a court may 21 generally consider only allegations contained in the 22 pleadings, exhibits attached to the complaint, and 23 matters properly subject to judicial notice.” Swartz v. 24 KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007) (citation 25 omitted). A court must presume all factual allegations 26 2 Defendant mistakenly filed the instant Motion [13] as an 27 answer instead of a motion to dismiss. The Court corrected the 28 mistake and treated the filing as a motion to dismiss. 3 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 4 of 12 Page ID #:94

1 to be true and draw all reasonable inferences in favor

2 of the non-moving party. Klarfeld v. United States, 944

3 F.2d 583, 585 (9th Cir. 1991). The question is not 4 whether the plaintiff will ultimately prevail, but 5 whether the plaintiff is entitled to present evidence to 6 support the claims. Jackson v. Birmingham Bd. of Educ., 7 544 U.S. 167, 184 (2005) (quoting Scheuer v. Rhodes, 416 8 U.S. 232, 236 (1974)). While a complaint need not 9 contain detailed factual allegations, a plaintiff must 10 provide more than “labels and conclusions” or “a 11 formulaic recitation of the elements of a cause of 12 action.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 13 (2007). 14 B. Discussion 15 Defendant seeks to dismiss Plaintiff’s two claims: 16 1) copyright infringement and 2) vicarious and/or 17 contributory copyright infringement. See generally 18 Def.’s Mot. to Dismiss (“Mot.”), ECF No. 13. 19 1. Copyright Infringement Claim3 20 To proceed with a copyright infringement claim, 21 Plaintiff must allege (1) “ownership of a valid 22 copyright” and (2) “copying of constituent elements of 23 the work that are original.” Twentieth Century Fox Film 24 3 Plaintiff broadly alleged infringement by pleading 25 Defendant had offered garments for sale under the name Style No. KL4610 (Pampered Life Sheer Socks) that are “identical to or 26 substantially similar to the Subject Design.” Compl. ¶ 13. Given that this language does not contain sufficient facts to 27 state a plausible claim for relief, this paragraph alone is an 28 insufficient pleading for infringement. 4 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 5 of 12 Page ID #:95

1 Corp. v. Ent. Distrib., 429 F.3d 869, 876 (9th Cir.

2 2005).

3 a. Ownership 4 A complaint is acceptable if it simply alleges 5 “present ownership by plaintiff, registration in 6 compliance with the applicable statute and infringement 7 by defendant.” Perfect 10, Inc. v. Cybernet Ventures, 8 Inc., 167 F. Supp. 2d 1114, 1120 (C.D. Cal. 2001). 9 Here, Plaintiff has alleged ownership and registration 10 in compliance with the applicable statute by pleading it 11 owns the United States Copyright Registration for the 12 Subject Design, Registration No. VA 180-563. Compl. ¶ 13 10. Therefore, Plaintiff has properly pled ownership. 14 b. Copying 15 When no direct evidence of copying is available, 16 copying may be established by demonstrating that “the 17 [defendant] had access to plaintiff’s copyrighted work” 18 and “the works at issue are substantially similar in 19 their protected elements.” Cavalier v. Random House, 20 Inc., 297 F.3d 815, 822 (9th Cir. 2002) (citation 21 omitted). In some cases, “absent evidence of access, a 22 ‘striking similarity’ between the works may give rise to 23 a permissible inference of copying.” Baxter v. MCA, 24 Inc., 812 F.2d 421, 423 (9th Cir. 1987). 25 i. Plaintiff Insufficiently Pled 26 Access 27 Proof of access requires a plaintiff to show “that 28 the defendant had an opportunity to view or to copy 5 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 6 of 12 Page ID #:96

1 plaintiff’s work.” Sid & Marty Krofft TV Prods. v.

2 McDonald’s Corp., 562 F.2d 1157, 1172 (9th Cir. 1977).

3 “Access must be more than a bare possibility and may not 4 be inferred through speculation or conjecture.” Gaste 5 v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988). The 6 plaintiff “must show a reasonable possibility” that 7 defendant had access to plaintiff’s work. Art Attacks 8 Ink, Ltd. Liab. Co. v. MGA Enter. Inc., 581 F.3d 1138, 9 1143 (9th Cir. 2009). Thus, access may be proved by 10 either 1) “establishing a chain of events linking 11 plaintiff’s work and defendant’s access,” or 2) “showing 12 that plaintiff’s work has been widely disseminated.” 13 Id. 14 Plaintiff alleges that Defendant had an opportunity 15 to view or copy the Subject Design by having access to 16 Plaintiff’s showroom, third-party vendor’s copies of the 17 Subject Design, Plaintiff’s samples, and garments 18 manufactured and sold bearing the Subject Design’s 19 print. 4 Compl. ¶ 17. These general opportunities 20 neither allege that the Subject Design was widely 21 disseminated, nor do they allege specific events linking 22 Defendant’s access to the Subject Design. Such 23 allegations show no more than a bare possibility that 24

25 4 Defendant argues that Plaintiff has not sufficiently pled that Defendant had access to Plaintiff’s Subject Design because 26 the Complaint does not specifically name Defendant as having access. Mot. at 12:5-9. However, in its Complaint, Plaintiff 27 “alleges that Defendants . . . had access to Subject Design” and 28 then lists the opportunities for access. Compl. ¶ 17. 6 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 7 of 12 Page ID #:97

1 Defendant had access to Plaintiff’s Subject Design and

2 therefore are insufficient to plead access. See Shame

3 on You Prods. v. Banks, 120 F. Supp. 3d 1123, 1149 (C.D. 4 Cal. 2015) (“To satisfy its burden of pleading access, 5 plaintiff must allege facts ‘from which a reasonable 6 finder of fact could infer that the defendant had a 7 reasonable opportunity to copy his or her work.’” 8 (quoting Grubb v. KMS Patriots, L.P., 88 F.3d 1, 3 (1st 9 Cir. 1996))). 10 ii. Plaintiff Sufficiently Pled 11 Striking Similarity 12 Works are strikingly similar when the similarities 13 between them are so great that they are highly unlikely 14 to have been independently created. Rentmeester v. 15 Nike, Inc., 883 F.3d 1111, 1124 (9th Cir. 2018). In 16 assessing whether a particular work is strikingly 17 similar, or substantially similar, the Court performs a 18 two-part test, an extrinsic and intrinsic test. 19 Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 20 985 (9th Cir. 2017). The extrinsic test objectively 21 compares similarities in the works’ specific expressive 22 elements. Id. The intrinsic test looks to see whether 23 an ordinary audience would find the works’ total concept 24 and feel to be substantially similar. Id. 25 Courts typically only analyze the extrinsic test 26 because the intrinsic test is usually “exclusively the 27 province of the jury.” Funky Films, Inc. v. Time Warner 28 Ent. Co., Ltd. P'ship, 462 F.3d 1072, 1077 (9th Cir. 7 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 8 of 12 Page ID #:98

1 2006). A plaintiff who cannot satisfy the extrinsic

2 test loses because there must be “evidence on both the

3 extrinsic and intrinsic tests.” Id. (quoting Kouf v. 4 Walt Disney Pictures & Tele., 16 F.3d 1042, 1045 (9th 5 Cir. 1994)). 6 Defendant argues that Plaintiff failed to establish 7 striking similarity in the Complaint. See Mot. 12:23- 8 13:6. Defendant does not argue that the intrinsic test 9 cannot be met. See id. at 13:21-24. Instead, it argues 10 that the extrinsic test is not met because Plaintiff did 11 not examine the similarities and compare the designs. 12 See id. at 13:25-14:4. However, Plaintiff compared side 13 by side in its Complaint images of the Subject Design 14 and the Garment Designs and argued that the designs 15 share identical or substantially similar elements, 16 composition, arrangement, layout, and appearance. 17 Compl. ¶¶ 13-15. These allegations satisfy the 18 extrinsic test because Plaintiff compared the designs’ 19 specific expressive elements, and based off the provided 20 images, the Court cannot at this time conclude that the 21 garments are not strikingly similar. See L.A. Printex 22 Indus. v. Macy's Retail Holdings, Inc., 2011 U.S. Dist. 23 LEXIS 88733, at *16 (C.D. Cal. Aug. 9, 2011) (explaining 24 that a jury could find striking similarity when a 25 copyrighted work and an allegedly infringing garment 26 compared side by side show strong similarities). 27 Therefore, given that the extrinsic test can be 28 met, and the intrinsic test is exclusively the province 8 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 9 of 12 Page ID #:99

1 of the jury, Plaintiff has properly alleged striking

2 similarity. With the facts alleged, Plaintiff

3 sufficiently pled striking similarity and “access may be 4 inferred.” Malibu Textiles, Inc. v. Label Lane Int'l, 5 Inc., 922 F.3d 946, 952 (9th Cir. 2019). Therefore, 6 ownership and copying have been sufficiently pled. 7 Accordingly, the Court DENIES Defendant’s Motion on 8 Plaintiff’s copyright infringement claim. 9 2. Plaintiff’s Claim for Vicarious and/or 10 Contributory Copyright Infringement 11 Defendant seeks to dismiss Plaintiff’s 12 contributory/vicarious copyright infringement claim on 13 the basis that Plaintiff failed to identify third-party 14 direct infringement. See Mot. at 15:7-14. “Secondary 15 liability for copyright infringement does not exist in 16 the absence of direct infringement by a third party.” 17 A&M Records v. Napster, Inc., 239 F.3d 1004, 1013 n.2 18 (9th Cir. 2000). Plaintiff therefore must identify some 19 third party before alleging Defendant’s liability for 20 vicarious and/or contributory infringement. 21 Plaintiff attempted to identify a third party, 22 www.dollskills.com, in its Opposition to Defendant’s 23 Motion. See Pl.’s Opp’n to Def.’s Mot. to Dismiss 24 (“Opp’n”) 9:18-20, ECF No. 17. This third party was not 25 mentioned in the Complaint. See generally Compl. In 26 determining whether to dismiss under Rule 12(b)(6), a 27 “court may not look beyond the complaint to a 28 plaintiff’s moving papers, such as a memorandum in 9 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 10 of 12 Page ID #:100

1 opposition to a defendant’s motion to dismiss.” Broam

2 v. Bogan, 320 F.3d 1023, 1026 n.2 (9th Cir. 2003)

3 (citation omitted). While this new third party alleged 4 in the Opposition may not be considered in whether to 5 grant or deny the Motion, it may be considered when 6 granting leave to amend or dismissing with prejudice. 7 Orion Tire Corp. v. Goodyear Tire & Rubber Co., 268 F.3d 8 1133, 1137-38 (9th Cir. 2001). 9 Here, Plaintiff does not plead sufficient facts to 10 indicate direct infringement by a third party. There is 11 not a single third party identified in the Complaint. 12 See generally Compl. Without establishing this 13 preliminary requirement for a claim of 14 contributory/vicarious copyright infringement, 15 Plaintiff’s claim fails. See Viesti Assocs. v. Pearson 16 Educ., Inc., Civil Action No. 12-cv-02240-PAB-DW, 2013 17 U.S. Dist. LEXIS 113323, at *23-24 (D. Colo. Aug. 12, 18 2013) (“Given that no third parties are identified in 19 the complaint, [the plaintiff]’s claim that [the 20 defendant] had the right to control these unidentified 21 third parties is speculative and conclusory.”). 22 Accordingly, the Court GRANTS Defendant’s Motion on 23 Plaintiff’s contributory/vicarious copyright 24 infringement claim. 25 3. Leave to Amend 26 Federal Rule of Civil Procedure 15(a)(2) provides 27 that a party may amend its complaint once “as a matter 28 of course” before a responsive pleading is served. 10 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 11 of 12 Page ID #:101

1 After that, the “party may amend its pleading only with

2 the opposing party's written consent or the court's

3 leave. The court should freely give leave when justice 4 so requires.” Id. Leave to amend lies “within the 5 sound discretion of the trial court.” United States v. 6 Webb, 655 F.2d 977, 979 (9th Cir. 1981). The Ninth 7 Circuit has noted “on several occasions . . . that the 8 ‘Supreme Court has instructed the lower federal courts 9 to heed carefully the command of Rule 15(a), Fed. R. 10 Civ. P., by freely granting leave to amend when justice 11 so requires.’” Gabrielson v. Montgomery Ward & Co., 785 12 F.2d 762, 765 (9th Cir. 1986) (quoting Howey v. United 13 States, 481 F.2d 1187, 1190 (9th Cir. 1973)). 14 Here, Plaintiff has not previously amended its 15 Complaint. Plaintiff may be able to plead a 16 specifically named third party for which Defendant could 17 be liable for contributory/vicarious copyright 18 infringement. Therefore, leave to amend would not be 19 futile. 20 Accordingly, the Court GRANTS LEAVE TO AMEND 21 regarding Plaintiff’s contributory/vicarious copyright 22 infringement claim. 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 11 Case 2:22-cv-03142-RSWL-JPR Document 25 Filed 09/30/22 Page 12 of 12 Page ID #:102

1 III. CONCLUSION

2 Based on the foregoing, the Court DENIES in part

3 Defendant’s Motion as to Plaintiff’s copyright 4 infringement claim and GRANTS in part as to Plaintiff’s 5 contributory/vicarious copyright infringement claim WITH 6 LEAVE TO AMEND. Plaintiff may file an amended complaint 7 by no later than October 31, 2022. 8 9 IT IS SO ORDERED. 10 11 DATED: September 30, 2022 /s/Ronald S.W. Lew

HONORABLE RONALD S.W. LEW

12 Senior U.S. District Judge 13

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