Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 1of11 Page ID #:357

1 "0! 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 12 | FASHION NOVA, LLC, CV 22-6127-RSWL-RAOX 13 Plaintiff, DISMISS (1)) TO 14 Vv. he BLUSH MARK, INC., ET AL., re Defendants. 17 8. $a 19 Plaintiff Fashion Nova, LLC, (“Plaintiff”) brought 20 | the instant Action against Defendants Blush Mark, Inc. 21 (“Defendant Blush Mark”) and Blush Mark Outfitters, Inc. 22 | (collectively, “Defendants”) alleging that Defendants 23 | infringed on Fashion Nova’s copyrights and violated 24] 17 U.S.C. §§ 1202(a) and (b) of the Digital Millennium 25 | Copyright Act by intentionally removing copyright 26 | management information (“CMI”) from Plaintiff’s works. 27 | Currently before the Court is Defendants’ Motion to 28

Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 2 of 11 Page ID #:358

1 Dismiss [17].

2 Having reviewed all papers submitted pertaining to

3 this Motion, the Court NOW FINDS AND RULES AS FOLLOWS: 4 the Court GRANTS Defendant’s Motion to Dismiss with 5 leave to amend. 6 I. BACKGROUND 7 A. Factual Background 8 Plaintiff and Defendants are fashion brands that 9 compete with one another. First Am. Compl. (“FAC”) 10 at ¶ 25, ECF No. 9. Both parties market themselves and 11 sell their products through their respective e-commerce 12 websites. Id. at ¶ 27. 13 Plaintiff alleges that Defendants willfully 14 infringed on Plaintiff’s copyrights in various product 15 images displayed on Plaintiff’s website and 16 removed/altered the CMI identifying those images in 17 violation of 17 U.S.C. §§ 1202(a) & (b). Id. at ¶¶ 30, 18 35-37; see generally FAC, Ex. A, ECF No. 9-1. 19 Specifically, Plaintiff alleges that Defendants 20 intentionally and wrongfully stole Plaintiff’s product 21 images from Plaintiff’s website and then used those 22 images on Defendants’ website to market and sell their 23 competing products. FAC ¶ 3. Plaintiff asserts that 24 its product images are accompanied by Plaintiff’s name 25 and logo that identify Plaintiff as the owner of the 26 copyrights in those images. Id. at ¶ 18. Moreover, 27 Plaintiff states that it assigns identifying file names 28 to these product images. Id. at ¶ 20. 2 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 3 of 11 Page ID #:359

1 Plaintiff contends that after Defendants downloaded

2 digital copies of the product images, they removed the

3 file names assigned to the images and proceeded to 4 distribute the product images with Defendants’ company 5 name and/or logo so as to falsely identify themselves as 6 the copyright owner. Id. ¶¶ 43-45. Plaintiff sent a 7 cease-and-desist letter to Defendant Blush Mark 8 demanding it stop the unauthorized use of Plaintiff’s 9 product images. Id. ¶ 48. Defendants, however, 10 allegedly continued to infringe on Plaintiff’s product 11 images. Id. ¶¶ 36-38. 12 Plaintiff thus seeks (1) injunctive relief; (2) a 13 damages award to compensate Plaintiff for the diversion 14 of sales and damage to its business by Defendants’ 15 illicit activities; and (3) an award of Defendants’ ill- 16 gotten profits and benefits. Id. ¶ 3. 17 B. Procedural Background 18 Plaintiff filed its Complaint [1] on August 29, 2022, 19 and later filed an FAC [9] on September 7, 2022. 20 Defendants filed the instant Motion to Dismiss [17] on 21 December 12, 2022. Plaintiff opposed [24] the Motion on 22 January 5, 2023, and Defendants replied [25] on 23 January 17, 2023. 24 II. DISCUSSION 25 A. Legal Standard 26 Federal Rule of Civil Procedure (“Rule”) 12(b)(6) 27 allows a party to move for dismissal of one or more 28 claims if the pleading fails to state a claim upon which 3 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 4 of 11 Page ID #:360

1 relief can be granted. A complaint must “contain

2 sufficient factual matter, accepted as true, to state a

3 claim to relief that is plausible on its face.” 4 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quotation 5 omitted). Dismissal is warranted for a “lack of a 6 cognizable legal theory or the absence of sufficient 7 facts alleged under a cognizable legal theory.” 8 Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 9 (9th Cir. 1988) (citation omitted). 10 In ruling on a 12(b)(6) motion, a court may 11 generally consider only allegations contained in the 12 pleadings, exhibits attached to the complaint, and 13 matters properly subject to judicial notice. Swartz v. 14 KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007); see also 15 White v. Mayflower Transit, LLC, 481 F. Supp. 2d 1105, 16 1107 (C.D. Cal 2007), aff’d sub nom. White v. Mayflower 17 Transit, L.L.C., 543 F.3d 581 (9th Cir. 2008). (“unless 18 a court converts a Rule 12(b)(6) motion into a motion 19 for summary judgment, a court cannot consider material 20 outside of the complaint (e.g., facts presented in 21 briefs, affidavits, or discovery materials”)). A court 22 must presume all factual allegations of the complaint to 23 be true and draw all reasonable inferences in favor of 24 the non-moving party. Klarfeld v. United States, 944 25 F.2d 583, 585 (9th Cir. 1991). “[T]he issue is not 26 whether a plaintiff will ultimately prevail but whether 27 the claimant is entitled to offer evidence to support 28 the claims.” Jackson v. Birmingham Bd. of Educ., 4 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 5 of 11 Page ID #:361

1 544 U.S. 167, 184 (2005) (quoting Scheuer v. Rhodes,

2 416 U.S. 232, 236 (1974)). While a complaint need not

3 contain detailed factual allegations, a plaintiff must 4 provide more than “labels and conclusions” or “a 5 formulaic recitation of the elements of a cause of 6 action.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 7 (2007). However, “a well-pleaded complaint may proceed 8 even if it strikes a savvy judge that actual proof of 9 those facts is improbable, and ‘that a recovery is very 10 remote and unlikely.’” Id. at 556 (quoting Scheuer v. 11 Rhodes, 416 U.S. 232, 236 (1974)). 12 B. Discussion 13 1. Motion to Dismiss1 14 Section 1202(a) of the DMCA provides that “no 15 person shall knowingly and with the intent to induce, 16 enable, facilitate, or conceal infringement (1) to 17 provide [CMI] that is false; or (2) distribute or import

18 1 Plaintiff requests the Court take judicial notice of four 19 documents: (1) the complaint filed in Kirk Kara Corp. v. Western Stone & Metal Corp., 2:20-cv-01931-DMG-E(C.D. Cal.); (2) the 20 first amended complaint filed in O’Neal v. Sideshows, Inc., 2:21- cv-07735-DSF-PLA (C.D. Cal.); (3) the second amended complaint 21 filed in Crowley v. Jones, 1:21-cv-05483-PKC (S.D.N.Y.); and (4) Plaintiff’s copyright registrations in the images at issue in 22 this Action. Opp’n at 4:19-24, see also Opp’n, Exs. 1-4, ECF Nos. 24-2, 24-3, 24-4, 24-5. Since the Court does not rely on 23 the proffered case filings to resolve the instant Motion, the 24 Court deems Plaintiff’s request for judicial notice of those court filings moot and thus DENIED. Since copyright 25 registrations are properly subject to judicial notice, the Court GRANTS Plaintiff’s request and judicially notices the proffered 26 registrations. See Idema v. Dreamworks, Inc., 90 F. App’x 496, 498 (9th Cir. 2003), as amended on denial of reh’g (Mar. 9, 2004) 27 (holding that copyright registrations are the sort of document as 28 to which judicial notice is appropriate). 5 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 6 of 11 Page ID #:362

1 for distribution [CMI] that is false.” 17 U.S.C.

2 § 1202(a). Next, Section 1202(b) of the DMCA states

3 that no person shall knowingly and intentionally remove, 4 alter, and distribute [CMI] in a way that will induce, 5 enable, facilitate, or conceal an infringement without 6 the authority of the copyright owner or the law. 7 17 U.S.C. § 1202(b). 8 Defendants contend that Plaintiff has not 9 adequately pled that its images had CMI, and therefore 10 does not state a claim for violation of 17 U.S.C. 11 §§ 1202(a) or (b). See generally Mot. Plaintiff 12 counters that the images’ file names and Plaintiff’s 13 company name, logos, and product names on its website 14 constitute CMI. Opp’n. at 6:4-10, 7:18-24. Defendant, 15 however, argues that the file names and website 16 information are not CMI because: (1) the FAC does not 17 include what the file names for these photographs were, 18 and so cannot demonstrate that the file names contain 19 any of the information listed under 17 U.S.C. 20 §§ 1202(c)(1)-(8); and (2) Plaintiff’s company name and 21 logo on its web page is not “on or near” the images, and 22 nothing on Plaintiff’s website indicates that Plaintiff 23 owns the copyright on the images. Mot. 1:6-23. The 24 Court addresses each assertion in turn. 25 Section 1202(c) defines CMI to include the 26 following: “[the] title and other information 27 identifying the work, including the information set 28 forth on a notice of copyright;” “[the] name of, and 6 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 7 of 11 Page ID #:363

1 other identifying information about, the author of a

2 work;” and “[the] name of, and other identifying

3 information about, the copyright owner of the work, 4 including the information set forth in a notice of 5 copyright.” 17 U.S.C. § 1202(c). 6 District courts have found information to 7 constitute CMI in a wide variety of formats. See, e.g., 8 McGucken v. Chive Media Grp., LLC, No. 18-cv-01612-RSWL, 9 2018 WL 3410095, at *4 (C.D. Cal. July 11, 2018) 10 (watermarks identifying author and owner constitute 11 CMI); Iconics, Inc. v. Massaro, 192 F. Supp. 3d 254, 272 12 (D. Mass. 2016) (“[C]opyright headers are paradigmatic 13 CMI.”); Agence Fr. Presse v. Morel, 769 F. Supp. 2d 295, 14 306 (S.D.N.Y. 2011) (notations containing author and 15 copyright owner’s name constitutes CMI). But district 16 courts have declined to find CMI when information at 17 issue differed from information in the copyright 18 registration. See, e.g., Pers. Keepsakes, Inc. v. 19 Personalizationmall.com, Inc., 975 F. Supp. 2d 920, 928 20 (N.D. Ill. 2013) (poem titles were not CMI because they 21 did not match the titles of the works on the copyright 22 registrations). 23 In short, “the point of CMI is to inform the public 24 that something is copyrighted and to prevent 25 infringement.” Id. (citation omitted); cf. MDY Indus., 26 LLC v. Blizzard Ent., Inc., 629 F.3d 928, 942 (9th Cir. 27 2010) (“In enacting the DMCA, Congress sought to 28 mitigate the problems presented by copyright enforcement 7 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 8 of 11 Page ID #:364

1 in the digital age.”). Thus, although files names do

2 not automatically fall within the scope of the DMCA,

3 they are protected by § 1202 when they include relevant 4 identifying information. For example, in Izmo, Inc. v. 5 Roadster, Inc., the court found that the plaintiff 6 adequately showed that file names constituted CMI 7 because it alleged that the file names of the images at 8 issue were “the file name[s] of [the] original Izmo 9 Image[s] filed and/or registered with the U.S. Copyright 10 Office.” No. 18-CV-06092-NC, 2019 WL 13210561, at *3 11 (N.D. Cal. Mar. 26, 2019). There, the file names were 12 CMI because they identified works in question and 13 directly linked the photographs to the copyright 14 registrations. Id. 15 Similarly, courts find that information on a 16 website cannot serve as CMI where it is not conveyed 17 with the work so as to provide the viewer with proper 18 notice that the work is copyrighted. See 19 SellPoolSuppliesOnline.com LLC v. Ugly Pools Arizona, 20 Inc., 344 F. Supp. 3d 1075, 1082 (D. Ariz. 2018), aff’d, 21 804 F. App’x 668 (9th Cir. 2020). For instance, in 22 SellPoolSuppliesOnline.com, the court held that a 23 copyright notice located on the bottom of a webpage was 24 not CMI because it was “not in the body of, or around, 25 the work at issue, the photographs, and so it was not 26 ‘conveyed in connection with’ the work in a way that 27 makes the information CMI.” Id. Indeed, courts in this 28 district tend to find that information is conveyed in 8 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 9 of 11 Page ID #:365

1 connection with a work, and therefore constitutes CMI,

2 when the information is actually on or directly abutting

3 the work. See, e.g., Williams v. Cavalli, No. CV 14- 4 06659-AB JEMX, 2015 WL 1247065, at *2 (C.D. 5 Cal. Feb. 12, 2015) (stating that signatures that 6 appeared within a mural “necessarily were conveyed in 7 connection the display of the mural” and constituted 8 CMI); Pac. Studios Inc. v. W. Coast Backing Inc., 9 No. 2:12-cv-00692-JHN-JCG, 2012 WL 12887637, at *2-3 10 (C.D. Cal. Apr. 18, 2012) (concluding that an 11 alphanumeric designation on the border of an online 12 image for purposes of identification was CMI). 13 Here, Plaintiff alleged in its FAC that the file 14 names identified each of its product images. FAC ¶ 35. 15 In contrast to Izmo, however, Plaintiff failed to allege 16 that the file names link the images to their copyright 17 registrations or provide notice that the images are 18 copyrighted. The point of CMI is to provide the public 19 with notice that a work is copyrighted. See Pers. 20 Keepsakes, Inc., 975 F. Supp. 2d at 928. Consequently, 21 merely pleading that the file names identify the images 22 does not show that such file names would put a viewer on 23 notice that the works are copyrighted. Thus, Plaintiff 24 has not adequately shown that the files names are CMI. 25 Plaintiff’s company name and logo appear to be 26 located at the top of Plaintiff’s website. Accordingly, 27 just as in SellPoolSuppliesOnline.com, the company name 28 and logo are not conveyed in connection with the 9 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 10 of 11 Page ID #:366

1 relevant images and therefore are not CMI. And product

2 names alone are not CMI, as they do not reveal to the

3 viewer that the images are copyrighted. See Fischer v. 4 Forrest, 968 F.3d 216, 219 (2d Cir. 2020) (holding that 5 removal of a product name did not constitute removal of 6 CMI). 7 In sum, Plaintiff has not shown that the images’ 8 file names or the company name, logo, or product names 9 on Plaintiff’s website are CMI. Therefore, Plaintiff 10 has not stated a claim for violation of section 1202 and 11 the Court should GRANT Defendant’s Motion to Dismiss. 12 2. Leave to Amend 13 “Where a motion to dismiss is granted, a district 14 court must decide whether to grant leave to amend.” 15 Winebarger v. Pennsylvania Higher Educ. Assistance 16 Agency, 411 F. Supp. 3d 1070, 1082 (C.D. Cal. 2019). 17 “The court should give leave [to amend] freely when 18 justice so requires.” Fed. R. Civ. P. 15(a)(2). In the 19 Ninth Circuit, “Rule 15’s policy of favoring amendments 20 to pleadings should be applied with ‘extreme 21 liberality.’” United States v. Webb, 655 F.2d 977, 979 22 (9th Cir. 1981). Against this extremely liberal 23 standard, the Court may consider “the presence of any of 24 four factors: bad faith, undue delay, prejudice to the 25 opposing party, and/or futility.” Owens v. Kaiser 26 Found. Health Plan, Inc., 244 F.3d 708, 712 (9th Cir. 27 2001). 28 Here, leave to amend Plaintiff’s claims should be 10 Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 11 of 11 Page ID #:367

1 granted because Plaintiff can cure its Complaint by

2 pleading additional facts that support its claims.

3 There is no evidence of bad faith or undue delay by 4 Plaintiff, or potential prejudice to Defendant by 5 allowing amendment. The Court therefore GRANTS 6 Defendants’ Motion to Dismiss with leave to amend. 7 III. CONCLUSION 8 Based on the foregoing, the Court GRANTS 9 Defendant’s Motion to Dismiss with leave to amend. 10 11 12 IT IS SO ORDERED. 13 14 DATED: March 15, 2023 ______/S_/_ R_O_N_A_L_D_ _S_.W_._ L_E_W_________

HONORABLE RONALD S.W. LEW

15 Senior U.S. District Judge 16 17 18 19 20 21 22 23 24 25 26 27 28 11