1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ADVANTA-STAR AUTOMOTIVE Case No.: 22-CV-1186 TWR (BLM)

RESEARCH CORPORATION OF

12

AMERICA, ORDER GRANTING IN PART AND

13 DENYING IN PART DEFENDANTS’ Plaintiff,

MOTION TO DISMISS THE FIRST

14 v. AMENDED COMPLAINT 15

SEARCH OPTICS, LLC; SEARCH

(ECF No. 26) 16 OPTICS, USA, LLC; and SOUTH BAY

FORD, INC.,

17 Defendants. 18 19 Presently before the Court is a Motion to Dismiss the First Amended Complaint 20 Pursuant to Federal Rule of Civil Procedure 12(b)(6) filed by Defendants Search Optics, 21 LLC; Search Optics, USA, LLC; and South Bay Ford, Inc. (ECF No. 26, “Mot.”). The 22 Court has also received and reviewed Plaintiff’s Opposition to (ECF No. 28, “Opp’n”) and 23 Defendants’ Reply in Support of (ECF No. 29, “Reply”) the Motion. On April 13, 2023, 24 the Court held a Motion Hearing and took the matter under submission. (ECF No. 32.) 25 After carefully considering the Parties’ arguments, the relevant law, and the allegations in 26 the First Amended Complaint (ECF No. 18, “FAC”), the Court GRANTS IN PART AND 27 DENIES IN PART Defendants’ Motion to Dismiss. 28 / / / 1 BACKGROUND 2 I. Factual Allegations 3 According to the First Amended Complaint,1 Plaintiff Advanta-STAR Automotive 4 Research Corporation of America (“Advanta-STAR”) “creates, publishes, and sells 5 detailed reviews, comparisons, and other information related to automobiles and their 6 features.” (FAC ¶ 10.) Plaintiff owns U.S. Copyright Registrations for its “automated 7 database titled Advanta-STAR Consumer Research . . . which is generally revised and 8 updated at least monthly” with “new text, material, and images.” (FAC at 40–42 (“Ex. 9 4”).)2 Plaintiff obtained these Copyright Registrations in 2018 (TX 8-76-1015) and 2019 10 (TX 8-760-971). (See Ex. 4; FAC ¶ 13.) 11 This dispute arises over three sets of automobile comparisons purportedly protected 12 by Plaintiff’s Copyright Registrations: (1) a comparison of the 2019 Ford Transit Connect 13 and 2019 Nissan NV200, (FAC at 15–23 (“Ex. 1”)); (2) a comparison of the 2019 GMC 14 Terrain and the 2019 Jeep Compass, (FAC at 24–32 (“Ex. 2”)); and (3) a comparison of 15 the 2019 Jeep Compass and 2019 GMC Terrain, (FAC at 33–39 (“Ex. 3”)), (collectively, 16 the “Content”).3 (See FAC ¶¶ 10, 13.) “Advanta-STAR provides the Content exclusively 17 to licensees under paid, written license agreements.” (Id. ¶ 11.) Typically, Plaintiff’s 18 automobile comparisons are licensed by dealerships which use the information to help 19 salespeople explain the differences between vehicles and to enhance website engagement 20 through search engine optimization. (Id. at 12.) When displayed on Plaintiff’s and 21 licensees’ websites, the Content bears Advanta-STAR’s notices of copyright. (See, e.g., 22 id. ¶ 14.) 23 / / / 24

25 1 Facts in a plaintiff’s complaint are accepted as true for the purpose of a motion to dismiss. See 26 Cousins v. Lockyer, 568 F.3d 1063, 1067 (9th Cir. 2009). 2 To avoid ambiguity, citations to the Parties’ briefing refer to the CM/ECF pagination electronically 27 stamped at the top of each page. 28 3 Exhibit 2 and Exhibit 3 are distinct in that the former emphasizes the strengths of the 2019 GMC 1 Before the events giving rise to this action, Plaintiff had a pre-existing relationship 2 with two of the three Defendants—Search Optics, LLC and Search Optics, USA, LLC 3 (collectively, “Search Optics”). (See generally id. ¶¶ 15–20.) According to their Chief 4 Administrative Officer and General Counsel, Search Optics is “a digital marketing 5 company.” (See id. at 60–61 (“Ex. 10”).) In late 2011 or early 2012, Plaintiff “learned 6 that Search Optics had reproduced and distributed to its customers some of Advanta- 7 STAR’s copyrighted content” without authorization. (Id. ¶ 15.) According to Plaintiff, 8 Search Optics admitted to these actions and then entered into licensing agreements with 9 Plaintiff to utilize the copyrighted material legally. (See id. ¶¶ 16–18.) But in late 2013, 10 after Search Optics’ license had expired for non-payment, Plaintiff again learned that 11 Search Optics was reproducing and distributing Plaintiff’s copyrighted material without 12 authorization. (See id. ¶ 19.) In response, Search Optics once more admitted to the 13 unauthorized use of Plaintiff’s material and paid Plaintiff for such use but did not enter into 14 a new license agreement. (See id. ¶ 20.) 15 Then, in late 2019, Plaintiff again discovered the unauthorized use of its automobile 16 comparisons. (See id. at 21.) Specifically, Plaintiff learned that its Content had been 17 published on websites belonging South Bay Ford, Inc. and Essig Motors.4 (See id. ¶¶ 21, 18 26.) The Essig Motors website allegedly contained Plaintiff’s copyrighted comparisons of 19 the 2019 GMC Terrain and 2019 Jeep Compass, (see id. ¶ 26), while the South Bay Ford 20 website contained the copyrighted comparison of the 2019 Ford Transit Connect and 2019 21 Nissan NV200, (see id. ¶ 21). Neither company obtained a license or authorization to use 22 the Content, (see id. ¶¶ 23, 26), and neither website included Advanta-STAR’s notices of 23 copyright, (see generally id. at 43–45 (“Ex. 5”), 52–55 (“Ex. 8”)). Upon learning of this 24 unauthorized use, Plaintiff sent each company a demand letter in November 2019. (See id. 25 ¶¶ 24, 27.) 26 / / / 27

28 1 In response, Plaintiff received two emails from Vince Byrd, who identified himself 2 as “the General Counsel at Search Optics.”5 (See id. ¶¶ 25, 28; see also Ex. 10.) In those 3 emails, sent in December 2019, Byrd explained that Essig Motors and South Bay Ford had 4 reached out to Search Optics about Plaintiff’s demand letters because some of the allegedly 5 infringing content “may have been related to Search Optics services.” (Ex. 10.) Byrd 6 explained that Search Optics was “investigating both allegations” and that he would “be 7 taking the point on both fronts.” (Id.) In January 2020, Search Optics, Advanta-STAR, 8 and their counsel participated in a conference call regarding the alleged infringement. (See 9 FAC ¶ 29.) Later that same month, Byrd purportedly “represented to Advanta-STAR that 10 Search Optics had located the individual who prepared the infringing material.” (See id.) 11 Byrd declined to provide further information but stated that he would investigate the matter 12 further. (See id. ¶ 30.) Despite Plaintiff’s attempts to follow up, Search Optics provided 13 no further information. (See id. ¶ 31.) And by July 2020, Search Optics stopped 14 responding to Plaintiff altogether. (See id.) 15 II. Procedural History 16 Plaintiff Advanta-STAR initiated this action against Search Optics (Search Optics, 17 LLC and Search Optics, USA, LLC) and South Bay Ford on August 12, 2022. (See ECF 18 No. 1.) Defendants then filed a Motion to Dismiss, or Alternatively, a Motion for a More 19 Definite Statement. (See ECF No. 13.) In response, Plaintiff timely filed its First Amended 20 Complaint pursuant to Federal Rule of Civil Procedure 15(a)(1). (See ECF No. 18.) 21 Because the First Amended Complaint superseded the initial complaint, the Court denied 22 Defendants’ Motion as moot. (See ECF No. 21.) 23 / / / 24 / / / 25 / / / 26 27 28 5 Byrd is also the registered agent for service of process for Search Optics USA, LLC. (See FAC ¶ 1 The operative First Amended Complaint alleges: (1) copyright infringement under 2 17 U.S.C. §§ 502–5056 and (2) violation of copyright and management systems law under 3 17 U.S.C. §§ 1202, 1203 (the Digital Millenium Copyright Act). (See generally FAC.) On 4 February 27, 2023, Defendants responded by filing a Motion to Dismiss the First Amended 5 Complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). 6 (See Mot.) Plaintiff opposed the Motion, (see Opp’n), and Defendants filed a reply in 7 support of it, (see Reply). The Court set the Motion for a hearing, (see ECF No. 27), which 8 was held on April 13, 2022, (see ECF No. 32). This Order now follows. 9 LEGAL STANDARD 10 “A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to 11 state a claim upon which relief can be granted ‘tests the legal sufficiency of a claim.’” 12 Conservation Force v. Salazar, 646 F.3d 1240, 1241–42 (9th Cir. 2011) (quoting Navarro 13 v. Block, 250 F.3d 729, 732 (9th Cir. 2001)). “A district court’s dismissal for failure to 14 state a claim under Federal Rule of Civil Procedure 12(b)(6) is proper if there is a ‘lack of 15 a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal 16 theory.’” Id. at 1242 (quoting Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th 17 Cir. 1988)). 18 “Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain a ‘short and 19 plain statement of the claim showing that the pleader is entitled to relief.’” Ashcroft v. 20 Iqbal, 556 U.S. 662, 677–78 (2009) (quoting Fed. R. Civ. P. 8(a)(2)). “[T]he pleading 21 standard Rule 8 announces does not require ‘detailed factual allegations,’ but it demands 22 more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Id. at 678 23 (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). In other words, “[a] 24 / / / 25 26 6 Plaintiff’s First Amended Complaint separates the copyright infringement claim into “Count I” and “Count II.” (See FAC at 7–8.) Substantively, the claims are identical, but the former seeks damages, 27 costs, and attorney’s fees under §§ 504 and 505 while the latter seeks injunctive relief and the 28 impoundment and destruction of the infringing materials under §§ 502 and 503. (Compare id. at 7, with 1 pleading that offers ‘labels and conclusions’ or ‘a formulaic recitation of the elements of a 2 cause of action will not do.’” Id. (quoting Twombly, 550 U.S. at 555). 3 “To survive a motion to dismiss, a complaint must contain sufficient factual matter, 4 accepted as true, to ‘state a claim to relief that is plausible on its face.’” Id. (quoting 5 Twombly, 550 U.S. at 570). “A claim has facial plausibility when the plaintiff pleads 6 factual content that allows the court to draw the reasonable inference that the defendant is 7 liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). “[W]here the 8 well-pleaded facts do not permit the court to infer more than the mere possibility of 9 misconduct, the complaint has alleged—but it has not ‘show[n]’—‘that the pleader is 10 entitled to relief.’” Id. at 679 (second alteration in original) (quoting Fed. R. Civ. P. 11 8(a)(2)). 12 “If a complaint is dismissed for failure to state a claim, leave to amend should be 13 granted ‘unless the court determines that the allegation of other facts consistent with the 14 challenged pleading could not possibly cure the deficiency.’” DeSoto v. Yellow Freight 15 Sys., Inc., 957 F.2d 655, 658 (9th Cir. 1992) (quoting Schreiber Distrib. Co. v. Serv-Well 16 Furniture Co., 806 F.2d 1393, 1401 (9th Cir. 1986)). Still, “[a] district court does not err 17 in denying leave to amend where the amendment would be futile.” Id. (citing Reddy v. 18 Litton Indus., 912 F.2d 291, 296 (9th Cir. 1990)). 19 ANALYSIS 20 Through the instant Motion, Defendants seek dismissal of Plaintiff’s copyright 21 infringement claim and Digital Millenium Copyright Act (“DMCA”) claim pursuant to 22 Rule 12(b)(6). (See generally Mot.) 23 I. Copyright Infringement 24 Plaintiff’s claim for copyright infringement alleges “Defendants had access to 25 [Plaintiff’s copyrighted] Content and, without authorization from Advanta-STAR, made or 26 used infringing copies, or made unauthorized derivative use of the Content for their own 27 financial gain.” (FAC ¶ 36.) To state a claim for copyright infringement, Advanta-STAR 28 “must plausibly allege two things: (1) that [it] owns a valid copyright in [the Subject Work], 1 and (2) that [Defendants] copied protected aspects of [the Subject Work]’s expression.” 2 Malibu Textiles, Inc. v. Label Lane Int’l, Inc., 922 F.3d 946, 951 (9th Cir. 2019) (alterations 3 in original) (citing Rentmeester v. Nike, Inc., 883 F.3d 1111, 1116–17 (9th Cir. 2018), 4 overruled on other grounds by Skidmore ex rel. Randy Craig Wolfe Tr. v. Led Zeppelin, 5 952 F.3d 1051 (9th Cir. 2020) (en banc)). “Because direct copying is difficult to prove, a 6 plaintiff can satisfy the second element by demonstrating that (a) the defendant had access 7 to the allegedly infringed work and (b) the two works are substantially similar in both idea 8 and expression of that idea.” Pasillas v. McDonald’s Corp, 927 F.2d 440, 440 (citing 9 Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989)). 10 As Plaintiff correctly notes, Defendants’ Motion to Dismiss does not dispute the 11 validity of Plaintiff’s Copyright Registrations. (See Mot. at 10; Opp’n at 10; see also FAC 12 ¶ 35 (claiming the Content is protected by Copyright Registrations).) Nor does it dispute 13 that Defendants had access to Plaintiff’s Content. (See generally Mot.) Instead, 14 Defendants challenge only the second prong of the copyright infringement test—the claim 15 that Defendants copied protected aspects of Plaintiff’s Content. (See generally id. at 10– 16 14.) Specifically, Defendants allege: (1) Plaintiff fails to specify which of the Search 17 Optics entities committed the purported copying, (see Mot. at 10), and (2) after filtering 18 out the unprotectable elements, the remaining elements of Plaintiff’s Content are not 19 substantially similar to Defendants’ work as a matter of law, (see id. at 11). 20 A. Plaintiff’s Allegations Against “Search Optics” 21 First, Defendants contend that Plaintiff’s copyright infringement claim must fail 22 because “Plaintiff pleads no factual information but merely innuendo and insinuations that 23 one of the Search Optics entities are responsible for the infringement.” (Id.) According to 24 Defendants, dismissal is appropriate because (1) the First Amended Complaint collectively 25 refers to Search Optics, LLC and Search Optics, USA, LLC as “Search Optics” without 26 specifying whether one or both committed the copying, (see id.; see also Reply at 5), and 27 (2) several of Plaintiff’s copyright infringement allegations against Search Optics are based 28 / / / 1 on “information and belief,” (see Mot. at 10–11; see also Reply at 5). These features of 2 Plaintiff’s pleadings are not fatal to its copyright infringement claim. 3 The First Amended Complaint indeed refers to Search Optics, LLC and Search 4 Optics, USA, LLC collectively as “Search Optics” and plausibly alleges that both entities 5 engaged in the purported infringement. (See generally FAC.) Based on the First Amended 6 Complaint, joint liability is plausible because the two Search Optics Defendants presented 7 themselves to Plaintiff as a single entity. For example, in his communications with 8 Plaintiff, Mr. Byrd identified himself as the “General Counsel at Search Optics,” without 9 distinguishing between Search Optics, USA, LLC or Search Optics, LLC. (See Ex. 10 10 (Byrd, including “Search Optics” and “searchoptics.com” in his signature); see also FAC 11 ¶ 29 (indicating that “Search Optics” and its counsel had a conference call with Plaintiff).) 12 The interrelatedness of Search Optics’ corporate identities is underscored by the fact that 13 both Defendants are incorporated in the same state and maintain their headquarters in the 14 same location. (See id. ¶¶ 2, 3.) Ultimately, Defendants’ decision to obscure their distinct 15 corporate identities in their communications with Plaintiff cannot now shield them from 16 suit. If Defendants genuinely believe only one of the Search Optics entities engaged in the 17 alleged wrongdoing, that is an issue which counsel may “assiduously explore through 18 discovery devices.” See Lincoln Prop. Co. v. Roche, 546 U.S. 81, 94 (2005). 19 Moreover, Plaintiff’s copyright infringement claim is not precluded by its reliance 20 on two allegations based on “information and belief.” (See FAC ¶¶ 37–38.) When filing 21 a complaint, a “pleader is not required to allege facts that are ‘peculiarly within [that] 22 party’s knowledge,’ and allegations ‘based on information and belief may suffice,’ ‘so long 23 as the allegations are accompanied by a statement of facts upon which the belief is 24 founded.’” See Nayab v. Cap. One Bank (USA), N.A., 942 F.3d 480, 493–94 (9th Cir. 25 2019) (citing Wool v. Tandem Computers Inc., 818 F.2d 1433, 1439 (9th Cir. 1987), 26 overruled on other grounds by Flood v. Miller, 35 Fed. Appx. 701, 703 n.3 (9th Cir. 2002)); 27 see also Tellabs, Inc. v. Makor Issues & Rts., Ltd., 551 U.S. 308, 322 (2007) (“[C]ourts 28 / / / 1 must consider the complaint in its entirety, as well as other sources courts ordinarily 2 examine when ruling on Rule 12(b)(6) motions to dismiss.”). 3 Here, the “Factual Allegations” Section of the First Amended Complaint contains 4 robust support for Plaintiff’s subsequent assertion that, “[u]pon information and belief, in 5 2019, Search Optics made or used infringing copies or made or used unauthorized 6 derivative use of [Plaintiff’s Content].” (FAC ¶ 37; see also id. ¶ 38 (alleging the same)). 7 The Factual Allegations Section asserts, for example, Search Optics had access to 8 Plaintiff’s copyrighted car comparisons, (see id. ¶¶ 15–20), which Plaintiff later discovered 9 on South Bay Ford and Essig Motors’ websites, (see id. ¶¶ 21–24; 26–27). And after 10 contacting South Bay Ford and Essig Motors about their use of the Content, Plaintiff did 11 not receive a response from them but rather from Search Optics’ counsel. (See id. ¶¶ 24– 12 25; 27–28.) In his response, Search Optics’ counsel conceded that some of the content at 13 issue “may have been related to Search Optics’ services” and asserted that Search Optics 14 was “investigating both allegations and [he would] be taking the point on both fronts.” 15 (See Ex. 10.) These factual allegations provide a firm basis for Plaintiff’s later assertion 16 that, based on information and belief, Search Optics made or used copies or derivatives of 17 Plaintiff’s Content. 18 Furthermore, Plaintiff has independently alleged that “Defendants have, without 19 authorization from Advanta-STAR, caused infringing copies of the Content to be published 20 online for viewing by the public, in total disregard for Advanta-STAR’s rights in the 21 copyrighted work.” (See FAC ¶ 39.) This allegation is not based on information and belief 22 and serves as an independent basis for Plaintiff’s copyright infringement claim. (Compare 23 id. ¶¶ 37–38, with id. ¶ 39.) In light of the foregoing, the Court declines to dismiss 24 Plaintiff’s copyright infringement claim on the basis that the First Amended Complaint 25 regards Search Optics, LLC and Search Optics, USA, LLC as a single entity and is based 26 in part on information and belief. 27 / / / 28 / / / 1 B. Copying of Protectable Elements 2 Defendants also contend that Plaintiff’s copyright infringement claim must fail 3 because “whatever alleged copying occurred involved exclusively unprotectible facts, 4 ideas, short phrases, titles, and scenes-a-faire,” (see Mot. at 13), and “similarities between 5 th[e]se unprotectible elements—even verbatim—cannot support a claim for copyright 6 infringement,” (see id. at 14). Defendants allege that after filtering out these unprotectable 7 elements, “the remaining portions of the work[s] are not substantially similar as a matter 8 of law.” (See id.) Plaintiff, in response, asserts that “an analysis of substantial similarity 9 is inherently factual and premature at the Rule 12(b)(6) stage” but that if the Court conducts 10 such an analysis, it should find that “the Amended Complaint provides a sufficient basis to 11 conclude the similarities between Advanta-STAR’s vehicle comparisons and Defendants’ 12 webpages exceed the de minimis threshold required to defeat a Rule 12(b)(6) challenge.” 13 (Opp’n at 10–11.) 14 Absent evidence of direct copying, a plaintiff must establish substantial similarity 15 between the protected aspects of their work and the defendant’s work to succeed on a 16 copyright infringement claim. See, e.g., Pasillas, 927 F.2d at 440. To analyze substantial 17 similarity, courts conduct an extrinsic test and an intrinsic test; the extrinsic test is an 18 objective comparison between the elements of each work and the intrinsic test is a 19 subjective comparison between the impression that each work creates. See, e.g., Unicolors, 20 Inc. v. H&M Hennes & Mauritz, L.P., 52 F. 4th 1054, 1084 (9th Cir. 2022); Malibu Textiles, 21 922 F.3d at 952. “There is ample authority for holding that when the copyrighted work 22 and the alleged infringement are both before the court, capable of examination and 23 comparison, non-infringement can be determined on a motion to dismiss.” Christianson 24 v. W. Pub. Co., 149 F.2d 202, 203 (9th Cir. 1945); see also Campbell v. Walt Disney Co., 25 718 F. Supp. 2d 1108, 1111–12 (N.D. Cal. 2010). 26 Still, on a motion to dismiss, a court may only dismiss a copyright infringement 27 claim if it fails the extrinsic test; courts may not apply the intrinsic test at the motion-to- 28 dismiss phase. See Malibu Textiles, 922 F.3d at 952. Although courts may dismiss a claim 1 that fails the extrinsic test, “[t]he extrinsic test often requires [the] analytical dissection of 2 a work and expert testimony.” Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th 3 Cir. 2000), overruled on other grounds by Skidmore, 952 F.3d 1051; see also Swirsky v. 4 Carey, 376 F.3d 841, 845 (9th Cir. 2004). Accordingly, in some instances, courts have 5 found themselves unequipped to perform the extrinsic test before the parties are afforded 6 discovery. See, e.g., Lois v. Levin, No. 2:22-cv-00926-SVW-ADS, 2022 WL 4351968, at 7 *6 (C.D. Cal. Sept. 16, 2022); Segal v. Segal, No. 20-cv-1382-BAS-JLB, 2022 WL 198699, 8 at *13 (S.D. Cal. Jan. 21, 2022). 9 Here, both Plaintiff’s copyrighted works, (see Exs. 1, 2, & 3), and Defendants’ 10 allegedly infringing works, (see Exs. 8 & 10), are before the Court and capable of 11 examination and comparison. Moreover, Plaintiff has submitted a declaration from one of 12 its research and development professionals which identifies the similarities and differences 13 between the two sets of works by highlighting lines in Defendants’ webpages which were 14 “copied or paraphrased” from Plaintiff’s Content. (See Opp’n at 75–112 (“Opp’n Ex. 15 11”).)7 Plaintiff also identifies several similarities in a chart within its Opposition briefing. 16 (See Opp’n at 17–18.) Based on the evidence submitted by Plaintiff and the factual nature 17 of the works involved, the Court concludes that it can conduct the extrinsic test without 18 expert testimony or further discovery. 19 “As a constitutional matter, copyright protects only those constituent elements of a 20 work that possess more than a de minimis quantum of creativity.” Feist Publications, Inc. 21 v. Rural Tel. Serv. Co., 499 U.S. 340, 363 (1991); see also Jada Toys, Inc. v. Mattel, Inc., 22 518 F.3d 628, 636 (9th Cir. 2008). Accordingly, the “court must filter out and disregard 23

24 7 This declaration was not filed with the First Amended Complaint but rather with Plaintiff’s 25 Opposition to the Motion to Dismiss. Still, Plaintiff argues the Court can consider the declaration because the information it compares—Defendants’ webpages and Plaintiff’s Content—were 26 identified in and submitted with the First Amended Complaint. (See Opp’n at 16 n.3 (citing cases).) Defendants do not object to the Court’s consideration of the declaration. (See generally 27 Reply; Docket.) And insofar as the declaration highlights portions of documents submitted with 28 the First Amended Complaint, the Court finds that consideration of the documents would not 1 the non-protectible [constituent] elements [of a work] in making its substantial similarity 2 determination.” Cavalier v. Random House, Inc., 297 F.3d 815, 822-23 (9th Cir. 2002); 3 see also Gray v. Hudson, 28 F.4th 87, 96 (9th Cir. 2022); Swirsky, 376 F.3d at 845 (“[I]t is 4 essential to distinguish between the protected and unprotected material in a plaintiff’s 5 work.”). 6 As a matter of law, certain elements of any given work are inherently non- 7 protectable. For example, facts are not protectable because they cannot be “created” by a 8 copyright author; instead, they are objective truths which exist in the public domain and 9 can be discovered and used by anyone. See, e.g., Feist, 499 U.S. at 360–61 (finding names, 10 phone numbers, and addresses unprotectable facts); Landsberg v. Scrabble Crossword 11 Game Players, Inc., 736 F.2d 485, 488 (9th Cir. 1984). Similarly, abstract ideas may not 12 be protected, only specific expressions of those ideas.8 See, e.g., Satava v. Lowry, 323 F.3d 13 805, 810 (9th Cir. 2003) (finding the “idea of producing a glass-in-glass jellyfish sculpture” 14 unprotectable); Mazer v. Stein, 347 U.S. 201, 218 (1954). Finally, scenes-a-faire—also 15 understood as “expressions that are standard, stock, or common to a particular subject 16 matter”—are not protectable. Satava, 323 F.3d at 810 & n.3 (citing See v. Durang, 711 17 F.2d 141, 143 (9th Cir. 1983)); see also Swirsky, 376 F.3d at 850 (“Under the scenes a faire 18 doctrine, when certain commonplace expressions are indispensable and naturally 19 associated with the treatment of a given idea, those expressions are treated like ideas and 20 therefore not protected by copyright.”) 21 Here, Defendants argue that “[s]tatements as to engine size, wheelbase 22 measurements, fuel capacity and efficiency, types of brakes, warranty terms, cargo and 23 towing capacity, or basic descriptions of ergonomic or safety features are not protectible 24 and must be filtered out of the analysis.” (Mot. at 14.) The Court agrees that certain 25 information within Plaintiff’s Content constitutes facts which may not be individually 26 27 28 8 In this case, for example, Plaintiff would not be able to claim copyright protection in the idea of 1 protected. For example, Plaintiff’s and South Bay Ford’s comparisons of the 2019 Ford 2 Transit Connect and 2019 Nissan NV200 both state, “The NV200 has no towing capacity.” 3 (See Exs. 1 & 10.) This is an objective truth which Plaintiff discovered but did not create. 4 See Feist, 499 U.S. at 345 (“To qualify for copyright protection work must be . . . 5 independently created by the author.”). 6 Although many individual elements of Plaintiff’s content may not be protectable, 7 “[i]t is true, of course, that a combination of unprotectable elements may qualify for 8 copyright protection.” See Satava, 323 F.3d at 811 (citations omitted); see also Feist, 499 9 U.S. at 345 (“[F]acts are not copyrightable; . . . . compilations of facts generally are.”). 10 Plaintiff’s compilation must, however, be “original,” meaning “it possesses at least some 11 minimal degree of creativity.” Feist, 499 U.S. at 345 (“To be sure, the requisite level of 12 creativity is extremely low; even a slight amount will suffice.”). Plaintiff’s comparisons 13 possess the requisite degree of creativity to qualify for protection, as evidenced by the fact 14 that two comparisons contain largely the same facts about the same vehicles—the 2019 15 GMC Terrain and 2019 Jeep Compass—but those facts are presented in very different 16 ways. (Compare Ex. 2, with Ex. 3.) One comparison selects and presents the facts in a 17 way that emphasizes the superiority of the GMC Terrain, (see Ex. 2), while the other 18 emphasizes the superiority of the Jeep Compass, (see Ex. 3). These creative choices 19 demonstrate that Plaintiff’s Content satisfies the originality requirement and is therefore a 20 protectable factual compilation. 21 Still, “the copyright [protection] in a compilation is thin.” Feist, 499 U.S. at 349– 22 50; see also Idema v. Dreamworks, Inc., 162 F.Supp.2d 1129, 1178 (C.D. Cal. 2001), aff’d 23 in relevant part, dismissed in part, 90 Fed. Appx. 496 (9th Cir. 2003), as amended on 24 denial of reh’g (Mar. 9, 2004) (“[w]here a copyrighted work is composed largely of 25 ‘unprotectable’ elements . . . it receives a ‘thin’ rather than a ‘broad’ scope of protection.”). 26 When a work as a whole is entitled to thin protection but the facts within it are unprotected, 27 competitors may copy those facts, “so long as the competing work does not feature the 28 same selection and arrangement” of those facts. Feist, 499 U.S. at 349–50; id. at 348 1 (“Others may copy the underlying facts . . . but not the precise words used to present 2 them.”); see also Alfred v. Walt Disney Co., 821 F. App’x 727, 729 (9th Cir. 2020) (finding 3 the “original selection, coordination, and arrangement” of otherwise unprotectable 4 information protectible). 5 Additionally, when a work is entitled to “thin” protection, courts typically require 6 “virtual identity” rather than “substantial similarity” to find copyright infringement. See, 7 e.g., Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 766 (9th Cir. 2003); Kaseberg v. Conaco, 8 LLC, 260 F. Supp. 3d 1229, 1244 (S.D. Cal. 2017); Rassamni v. Fresno Auto Spa, Inc., 365 9 F. Supp. 3d 1039, 1047 (E.D. Cal. 2019). The “virtual identity” standard requires 10 “verbatim reproduction or very close paraphrasing before a factual work will be deemed 11 infringed.” Landsberg, 736 F.2d at 488. Thus, when a thinly protected work and an 12 allegedly infringing work are both before the court on a motion to dismiss, the court may 13 determine non-infringement based on a lack of virtual identity. See Rassamni, 365 F. Supp. 14 3d at 1048–49 (finding “it is not an unreasonable extension of existing law” to address the 15 issue of virtual identity on a motion to dismiss); Christianson, 149 F.2d at 203 (allowing 16 non-infringement to be determined on a motion to dismiss when both works are before the 17 court). 18 Here, whether Defendants’ automobile comparisons and Plaintiff’s Content are 19 virtually identical in their selection, coordination, and arrangement of facts is a close issue. 20 And the Court’s analysis differs for each allegedly infringing automobile comparison. 21 Accordingly, the Court first addresses the similarities between Plaintiff’s comparison, 22 titled “2019 Ford Transit Connect Van compared with the 2019 Nissan NV200” (Ex. 1), 23 and Defendants’ webpage, titled “2019 Ford Transit Connect vs 2019 Nissan NV200” (Ex. 24 5). Both Parties’ comparisons are broken down into several sections which discuss the 25 different features of the two cars in a manner that highlights the Ford Transit’s superiority 26 to the Nissan NV200. Although Plaintiff’s comparison contains several sections which are 27 not present in Defendants’ comparison—warranty, reliability, tires and wheels, and 28 recommendations—the remaining sections are substantively identical and arranged in 1 nearly the same order. (Compare Ex. 1, with Ex. 5.) The arrangement of information 2 appearing in both Parties’ automobile comparisons is depicted below: 3 Arrangement of Information9 4 Plaintiff’s Comparison Defendants’ Comparison 5 Safety Engine 6 Engine Fuel Economy/Range 7 Fuel Economy and Range Brake System 8 Brakes and Stopping Suspension/Handling 9 Suspension and Handling Steering Stability10 10 Chasis Chasis Configuration 11 Passenger Space Passenger Space 12 Cargo Capacity Cargo Capacity 13 Payload and Towing Payload and Towing 14 Ergonomics Driver Convenience11 15 Safety and Security 16 17 (Compare Ex. 1, with Ex. 5.) 18 Substantively, each piece of factual information in Defendants’ comparison also 19 appears in Plaintiff’s comparison and is presented in a markedly similar way. When 20 comparing the two works at issue, it is clear that numerous sentences and paragraphs are 21 copied verbatim from Plaintiff’s work, though there are a small number of sentences that 22 demonstrate stylistic differences. Examples of each are presented below: 23 24 25 9 This table does not include those sections which appear in Plaintiff’s comparison but not in Defendants’ comparison. 26 10 This Section of Defendants’ webpage contains the same factual information as Plaintiff’s “Suspension and Handling” Section. Defendants’ webpage, however, breaks this information into two 27 Sections: “Suspension/Handling” and “Steering Stability.” (Compare Ex. 1, with Ex. 5.) 28 11 This Section of Defendants’ webpage contains the same factual information as Plaintiff’s 1 Similarities in Presentation 2 Plaintiff’s Comparison Defendants’ Comparison 3 The Transit Connect Van has standard The Transit Connect Van has standard 4 Automatic Emergency Braking, which Automatic Emergency Braking, which use forward mounted sensors to warn use forward mounted sensors to warn 5 the driver of a possible collision ahead. the driver of a possible collision ahead. 6 If the driver doesn’t react and the system If the driver doesn’t react and the system determines that a collision is imminent, determines that a collision is imminent, 7 it automatically applies the brakes at it automatically applies the brakes at 8 full-force in order to reduce the force of full-force in order to reduce the force of the crash or avoid it altogether. the crash or avoid it altogether. 9 The Transit Connect Van’s drift The Transit Connect Van features a drift 10 compensation steering can compensation steering can 11 automatically compensate for road automatically compensate for road conditions which would cause the conditions which would cause the 12 vehicle to drift from side to side, helping vehicle to drift from side to side, helping 13 the driver to keep the vehicle straight the driver to keep the vehicle centered more easily. on the road. 14 To keep a safe, consistent following To maintain a safe, consistent following 15 distance, the transit Connect Van XLT distance, the transit Connect Van XLT 16 offers and optional Adaptive Cruise offers and optional Adaptive Cruise Control, which alters the speed of the Control, which alters the speed of the 17 vehicle without driver intervention. . . . vehicle without driver intervention. The 18 The NV200 doesn’t offer an adaptive NV200 doesn’t offer an adaptive cruise cruise control. control. 19 The Transit Connect Van’s standard The Transit Connect Van’s standard 20 tilting steering column adjusts to tilting steering column adjusts to 21 different sized drivers and makes different sized drivers and makes entering and exiting easier. Nissan entering and exiting easier. Nissan 22 doesn’t offer tilt steering on the NV200 doesn’t offer tilt steering on the NV200. 23 For superior ride and handling, the Ford For superior ride and handling, the Ford 24 Transit Connect Van has fully Transit Connect Van has fully independent front and semi- independent front and semi- 25 independent rear suspensions. An independent rear suspensions. An 26 independent suspension allows the independent suspension allows the wheels to follow the road at the best wheels to follow the road at the best 27 angle for gripping the pavement, angle for gripping the pavement, 28 without compromising ride comfort. without compromising ride comfort. 1 Differences in Presentation 2 Plaintiff’s Comparison Defendants’ Comparison 3 To help each driver find a more In addition the Transit Connect Van has 4 comfortable driving position, the a telescoping steering wheel. The Transit Connect Van has a telescoping combination allows shorter drivers to sit 5 steering wheel. Much better than just a further from the steering while 6 tilt steering wheel or adjustable seat, this maintaining contact with the pedals. allows a short driver to sit further from The NV200 doesn’t offer a telescoping 7 the steering wheel while maintaining steering wheel. 8 contact with the pedals. The NV200 doesn’t offer a telescoping steering 9 wheel. 10 The Ford Transit Connect Van has The NV200 is fitted with only front disk 11 standard four-wheel disc brakes for brakes, with old-fashion drum brakes. better stopping power and improved Drum brakes easily heat up and make 12 directional control in poor weather. stops longer, particularly with antilock 13 Only rear drums come on the NV200. brakes which work the brakes even Drums can heat up and make stops harder. 14 longer, especially with antilock brakes 15 that work much harder than conventional brakes. 16 The Nissan NV200 has a solid rear axle, The Nissan NV200 has a solid rear axle, 17 with a non-independent rear suspension. which is a non-independent rear 18 . . . The front and rear suspension of the suspension typically found in the least Transit Connect Van uses coil springs expensive cars on the market. The front 19 for a better ride, handling and control and rear suspension of the transit 20 than the NV200, which uses lead Connect Van uses coil springs for a springs in the rear. better ride, handling and control than the 21 NV200, which uses lead springs in the 22 rear (which date back to covered wagons). 23 [No equivalent sentence.] Businesses large and small now have 24 the option of several small commercial 25 vans that can be outfitted for a variety of applications. Two of the most popular 26 are the 2019 Ford Transit Connect [] and 27 the Nissan NV200. While outwardly similar in size and appearance, the Ford 28 1 Transit Connect offers a considerable 2 number of advantages that make it the clear choice for your business. 3 4 (Compare Ex. 1, with Ex. 5.) 5 Although Defendants’ comparison presents a few facts in a slightly different manner 6 and adds a small number of new sentences, these instances of originality are 7 overwhelmingly outnumbered by those instances in which Defendants’ word choices, 8 phrasing, and arrangement of information are nearly identical to Plaintiff’s. Here, “[e]ven 9 a cursory glance at both parties’ materials demonstrates that defendants substantially 10 duplicate[d] [plaintiff’s] selection and arrangement.” See Proven Methods Seminars, LLC 11 v. Am. Grants & Affordable Hous. Inst., LLC, 519 F. Supp. 2d 1057, 1067 (E.D. Cal. 2007); 12 see also id. (defining virtual identity as “wholesale or verbatim instances of copying in 13 regards to plaintiffs’ explicit selection and arrangement”). Ultimately, the automobile 14 comparisons submitted by Plaintiff plausibly support the assertion that Defendants’ and 15 Plaintiff’s works are virtually identical. Accordingly, the Court concludes that non- 16 infringement cannot be determined on a motion to dismiss and DENIES Defendants’ 17 Motion insofar as it seeks dismissal of Plaintiff’s copyright infringement claim regarding 18 the comparison of the 2019 Ford Transit Connect and 2019 Nissan NV200. 19 Next the Court addresses the similarities between Plaintiff’s comparisons, titled 20 “2019 GMC Terrain compared with the 2019 Jeep Compass” (the “pro-GMC comparison”) 21 (Ex. 2) and “2019 Jeep Compass compared with the 2019 GMC Terrain” (the “pro-Jeep 22 comparison”) (Ex. 3), and Defendants’ comparison, titled “See the Difference: 2019 GMC 23 Terrain vs. 2019 Jeep Compass” (Ex. 8). This analysis is a bit more complicated because 24 it requires the Court to determine whether Defendants’ single comparison can 25 simultaneously be virtually identical to two of Plaintiff’s comparisons. 26 The Court begins by analyzing the overall tone in which the facts are presented in 27 each automobile comparison. While Plaintiff’s comparisons each pitch one automobile as 28 superior to the other, Defendants’ comparison takes a more neutral tone. For example, 1 Defendants’ comparison begins by stating, “Both the 2019 GMC Terrain and the 2019 Jeep 2 Compass are excellent choices among a broad field of compact SUVs. While they are both 3 similar in overall size, they have their own distinct personalities. Here is a rundown to help 4 you select which of these two great SUVs best fit your lifestyle . . . .” (Ex. 8.) Defendants’ 5 comparison alternates between the advantages of each automobile, whereas Plaintiff’s pro- 6 GMC comparison only discusses the advantages of the GMC Terrain, (see Ex. 2), and its 7 pro-Jeep comparison only discusses the advantages of the Jeep Compass, (see Ex. 3). Thus, 8 there is a difference in the overall tone in which the facts are presented: Defendants’ 9 comparison is objective while Plaintiff’s comparisons are persuasive. 10 Next, the Court turns to the arrangement of information within each automobile 11 comparison. All three comparisons are broken down into various sections discussing the 12 different features of the GMC Terrain and Jeep Compass. (See Exs. 2, 3, & 8.) Plaintiff’s 13 Pro GMC comparison contains several sections which are not found in Defendants’ 14 comparison: reliability, fuel economy and range, transmission, brakes and stopping, tires 15 and wheels, chasis, passenger space, cargo capacity, ergonomics, and recommendations. 16 (Compare Ex. 2, with Ex. 8.) Plaintiff’s Pro Jeep comparison also contains several sections 17 which are not found in Defendants’ comparison, many of them overlapping with the 18 categories from the Pro GMC comparison: reliability, fuel economy and range, 19 transmission, brakes and stopping, tires and wheels, chasis, ergonomics, and economic 20 advantage. (Compare Ex. 3, with Ex. 8.) 21 Although Defendants’ comparison and each of Plaintiff’s comparisons still share 22 many of the same sections, Defendants’ comparison presents these sections in a different 23 order. The arrangement of information appearing in both Parties’ automobile comparisons 24 is depicted below: 25 / / / 26 / / / 27 / / / 28 / / / 1 Arrangement of Information12 2 Plaintiff’s Pro GMC Plaintiff’s Pro Jeep Defendants’ 3 Comparison Comparison Comparison 4 Safety Safety Engine 5 Warranty Warranty Transmission 6 Engine Engine All-Wheel Drive 7 Suspension and Handling Suspension and Handling Suspension and Handling 8 Towing Towing 9 Warranty 10 Safety 11 (Compare Exs. 2 & 3, with Ex. 8.) 12 Of the seven sections in Defendants’ comparison, two do not appear in Plaintiff’s 13 comparisons: Transmission and All-Wheel Drive. (Compare Exs. 2 & 3, with Ex. 8.) 14 These sections, which contain entirely new factual information, are excerpted below: 15 Transmission

16 Both the 2019 Jeep Compass and the 2019 GMC Terrain both offer automatic 17 transmissions. However, only the Compass also offers a manual transmission, which can be an advantage to drivers who want to take their vehicles off-road. 18

19 All-Wheel Drive

20 Front-wheel drive is standard on the GMC Terrain, and all-wheel drive is 21 available with a knob to engage the part-time system. Being a Jeep means you have true AWD capabilities, it offers the available Jeep Active Drive, 22 Selec-Terrain Traction Management System with settings for Auto, Snow, 23 Sand, Mud or Rock, as well as a 4WD Low setting for slow crawling on rocks or in mud. 24

25 / / / 26 27 28 12 This table does not include those sections which appear in Plaintiff’s comparisons but not in 1 (Ex. 8.) The new information in Defendants’ comparison comprises approximately one 2 quarter of the total information in its work. (See id.) The significant amount of new 3 information in Defendants’ comparison inhibits a finding that Plaintiff’s comparisons and 4 Defendants’ comparison are virtually identical. 5 Moreover, although certain sentences in Defendants’ comparison are identical to or 6 paraphrased from various sentences in each of Plaintiff’s comparisons, the presentation of 7 information in Defendants’ comparison is, as a whole, very different. When a work is 8 entitled to “thin” protection, courts generally look at each work in its entirety to determine 9 whether the overall selection, arrangement, and coordination of facts is virtually identical. 10 See Satava, 323 F.3d at 812; see also United States v. Hamilton, 583 F.2d 448, 451 (9th 11 Cir. 1978) (“Trivial elements of compilation and arrangement, of course, are not 12 copyrightable since they fall below the threshold of originality.”). Here, a side-by-side 13 comparison of Defendants’ and Plaintiff’s works indicates that Defendants have selected 14 more facts to include and have arranged those facts differently. See Feist, 499 U.S. at 349– 15 50 (allowing copying of facts if the arrangement and selection is not identical); Landsberg, 16 736 F.2d at 489 (allowing similarity between compilations absent duplicative selection, 17 coordination, and arrangement). 18 Take the Warranty Information section, for example. (Compare Exs. 2 & 3, with 19 Ex. 8.) The Warranty Information sections of each automobile comparison are depicted 20 below: 21 / / / 22 / / / 23 / / / 24 / / / 25 / / / 26 / / / 27 / / / 28 / / / 1 Warranty Information 2 Plaintiff’s Pro-GMC Plaintiff’s Pro-Jeep Defendants’ 3 Comparison Comparison Comparison 4 The Terrain’s corrosion The Compass’ corrosion The Terrain’s corrosion warranty is 1 year longer warranty is unlimited warranty is 1 year longer 5 than the Compass’ (6 vs. miles longer than the than the Compass’ (6 6 5 years). Terrain’s (unlimited vs. years vs. 5 years). In 100,000 miles). addition, GMC pays for 7 GMC pays for the first scheduled maintenance 8 on the Terrain for two scheduled maintenance There are over 37 percent years or 24,000 miles. 9 on the Terrain. GMC will more jeep dealers than GMC will pay for oil pay for the first oil there are GMC dealers, 10 changes, lubrication and change, lubrication and which makes it easier any other required 11 any other required should you ever need maintenance (up to two maintenance for the first service under the 12 oil changes). Jeep year. Jeep doesn’t pay Compass’ warranty. doesn’t pay for scheduled 13 scheduled maintenance maintenance for the for the Compass. 14 Compass. The Compass’ corrosion warranty is 15 longer than the Terrain’s 16 (unlimited vs. 100,000 miles). 17 18 (Compare Exs. 2 & 3, with Ex. 8.) Defendants’ section duplicates or paraphrases a few 19 sentences from Plaintiff’s pro-GMC comparison and a few sentences from Plaintiff’s pro- 20 Jeep comparison. Still, Defendants chose to include more facts in their comparison than 21 Plaintiff chose to include in either of its own. And while Plaintiff only included facts 22 highlighting one automobile, Defendants included facts advantageous to both. Moreover, 23 Defendants arranged those facts differently and supplemented their section with new 24 information. Ultimately, the overall selection, coordination, and arrangement of facts in 25 Defendants’ Warranty Information section cannot be considered virtually identical to the 26 Warranty Information section in either the pro-Jeep comparison or the pro-GMC 27 comparison. These differences in selection, coordination, and arrangement extend to the 28 automobile comparisons as a whole, as evidenced by the new sections in Defendants’ 1 comparison, Defendants’ inclusion of more information in those sections that overlap with 2 Plaintiff’s sections, and Defendants’ neutral, rather than persuasive, tone. In light of the 3 foregoing, the Court concludes that non-infringement can be determined on a motion to 4 dismiss and GRANTS Defendants’ Motion insofar as it seeks dismissal of the copyright 5 infringement claim regarding the 2019 GMC Terrain and 2019 Jeep Compass. 6 II. Digital Millenium Copyright Act §§ 1202, 1203 7 Plaintiff claims Defendants violated Sections 1202 and 120313 of the DMCA 8 because they “removed or altered all copyright management information from the Content 9 before distributing infringing copies of the Content. This copyright management 10 information included copyright notices and attribution[s] identifying Advanta-STAR as the 11 owner of the comparisons.” (FAC ¶ 47.) At the motion hearing, all Parties agreed that 12 only Section 1202(b) is at issue in this case. (See ECF No. 32; cf. FAC ¶¶ 47–50; Mot. at 13 14.) The Parties also agreed that Plaintiff’s 1202(b) claim does not apply to South Bay 14 Ford. (See ECF No. 32.) Accordingly, the Court GRANTS Defendants’ Motion insofar 15 as it seeks dismissal of the DMCA claim against Defendant South Bay Ford. 16 The remaining issue is whether Plaintiff has stated a DMCA claim against the Search 17 Optics Defendants. To state a claim for a violation of Section 1202(b), Advanta-STAR 18 must plausibly allege that Search Optics (1) removed or altered copyright management 19 information or distributed or imported for distribution a work from which the copyright 20 management information had been removed or altered, and (2) acted with the requisite 21 mental state (intent for 1202(b)(1) and knowledge for 1202(b)(2) and (b)(3)). See 17 22 U.S.C. § 1202; see also Stevens v. Corelogic, Inc., 899 F.3d 666, 674 (9th Cir. 2018) 23 (requiring a plaintiff to demonstrate a “past pattern of conduct or modus operandi” to 24 establish the requisite mental state); Falkner v. Gen. Motors LLC, 393 F. Supp. 3d 927, 25 938 (C.D. Cal. 2018). 26 27 28 13 Section 1203 provides for civil remedies for any violation of Section 1202. Thus, this Order will 1 Search Optics challenges Plaintiff’s DMCA claim on multiple grounds, arguing: (1) 2 Plaintiff cannot bring a DMCA claim if it fails to state a claim for copyright infringement, 3 (Mot. at 17); (2) Plaintiff fails to allege that Defendants “made identical copies of the 4 plaintiff’s work and then removed the copyright management information from that work,” 5 (id. at 15); and (3) “Plaintiff does not plead any facts that would plausibly establish that 6 Defendants acted with the intent” required, (id.). 7 First, Search Optics asserts that “because Plaintiff has failed to state a claim for 8 copyright infringement, it cannot maintain a claim under Section 1202 based on that same 9 alleged infringement.” (See Mot. at 17.) For support, Defendants cite Storage Technology 10 Corporation v. Custom Hardware Engineering & Consulting, Inc., 421 F.3d 1307 (Fed. 11 Cir. 2005), a Federal Circuit Court case which held that “courts generally have found a 12 violation of the DMCA only when the alleged access was intertwined with a right protected 13 by the Copyright Act.” See id. at 1318. Indeed, Section 1202(b) only prohibits the removal 14 or alteration of copyright management information when the defendant knows or should 15 know that its actions will “induce, enable, facilitate, or conceal an infringement of any right 16 under [Title 17].” See 17 U.S.C. § 1202(b). 17 According to Plaintiff, Search Optics engaged in prohibited conduct by distributing 18 its automobile comparisons to South Bay Ford and Essig Motors “with the knowledge that 19 such distribution would facilitate the dealerships’ infringement.” (See Opp’n at 21.) But 20 the Court has already found that one of the automobile comparisons distributed by Search 21 Optics—the comparison of the 2019 GMC Terrain and 2019 Jeep Compass, which was 22 found on Essig Motors’ website—did not infringe on either of Plaintiff’s comparisons of 23 the same vehicles. See supra Section I.B. Thus, “[t]o the extent that [Search Optics’] 24 activities do not constitute copyright infringement or facilitate copyright infringement, 25 [Advanta-STAR] is foreclosed from maintaining an action under the DMCA.” See Storage 26 Tech. Corp., 421 F.3d at 1318. Accordingly, Plaintiff’s DMCA claim may only be 27 premised upon Search Optics’ distribution of the 2019 Ford Transit Connect and 2019 28 Nissan NV200 comparison to South Bay Ford. 1 With this in mind, the Court turns to Defendants’ remaining arguments for dismissal. 2 Defendants assert that Plaintiff has not and cannot allege that Search Optics made 3 “identical” copies of its work as required for a DMCA claim. (See Mot. at 15.) In response, 4 Plaintiff asserts that “Defendants have not cited any controlling case law on this point.” 5 (Opp’n at 21.) Plaintiff is correct. The one reported case cited by Defendants does not 6 stand for the proposition that exact identity is required. See Kelly v. Arriba Soft Corp., 77 7 F. Supp. 2d 1116, 1122 (C.D. Cal. 1999), aff’d and rev’d in part on other grounds, 336 8 F.3d 811 (9th Cir. 2003). However, other courts have applied the identical work standard 9 urged upon the Court by Defendants: “Courts have held that ‘no DMCA violation exists 10 where the works are not identical.’” O’Neal v. Sideshow, Inc., 583 F. Supp. 3d 1282, 1287 11 (C.D. Cal. 2022) (citing Kirk Kara Corp. v. W. Stone & Metal Corp., No. CV 20-1931- 12 DMG, 2020 WL 5991503, at *6 (C.D. Cal. Aug. 14, 2020) (collecting cases)). The Court 13 finds the reasoning of those cases to be persuasive. Although Plaintiff has plausibly alleged 14 that Defendants may be liable for “copy[ing] protected aspects of [Plaintiff]’s expression,” 15 see Malibu Textiles, Inc., 922 F.3d at 951, Plaintiff has not plausibly alleged that 16 Defendants distributed identical copies of Plaintiff’s comparison, see 17 U.S.C. § 17 1202(b)(3). Accordingly, Plaintiff fails to state a claim for a violation of Section 1202 of 18 the DMCA. 19 Although Plaintiff’s DMCA claim fails for this reason alone, the Court addresses 20 Defendants’ final argument in the interest of thorough adjudication. Defendants argue 21 Plaintiff has failed to plead that Search Optics “knew or had a reasonable basis to know 22 that the removal or alteration of [copyright management information] or the distribution of 23 [w]orks with [copyright management information] removed w[ould] aid infringement.” 24 (See Mot. at 16–17 (citing Harrington v. Pinterest, Inc., No. 5:20-cv-05290-EJD, 2022 25 U.S. Dist. LEXIS 168788, at *14–15 (N.D. Cal. Sept. 19, 2022); Stevens v. Corelogic, Inc., 26 899 F.3d 666, 674 (9th Cir. 2018)).) Furthermore, Defendants argue, Plaintiff has failed 27 to “make an affirmative showing, such as by demonstrating a past pattern of conduct or 28 modus operandi, that the defendant was aware or had reasonable grounds to be aware of 1 the probable future impact of its actions.” (Id. at 17 (internal quotations omitted) (quoting 2 Stevens, 899 F.3d at 674).) 3 As for the Search Optics Defendants, the knowledge requirement has clearly been 4 satisfied. Plaintiff’s First Amended Complaint alleges that “Defendants intentionally 5 removed copyright management information and distributed . . . copies of the Content 6 knowing that copyright management information had been removed or altered.” (FAC ¶ 7 50.) Moreover, Plaintiff claims “Defendants committed the above acts while knowing, or 8 having reasonable grounds to know, that their effects would induce, enable, facilitate, or 9 conceal an infringement of Advanta-STAR’s rights in the work.” (Id. ¶ 52.) Plaintiff’s 10 conclusions are supported by factual allegations in the First Amended Complaint. 11 Specifically, Plaintiff identifies two prior instances in which Search Optics admitted that it 12 “reproduced and distributed to its customers some of Advanta-STAR’s copyrighted 13 content” without authorization. (Id. ¶¶ 15–20.) Therefore, Plaintiff has sufficiently alleged 14 that Search Optics demonstrated “a pattern of conduct by infringing Advanta-STAR’s 15 copyright-protected work over the last ten years.” (Id. ¶ 51.) 16 For the foregoing reasons, the Court GRANTS Defendants’ Motion to Dismiss 17 Plaintiff’s claim for violation of Sections 1202 and 1203 of the DMCA. 18 / / / 19 / / / 20 / / / 21 / / / 22 / / / 23 / / / 24 / / / 25 / / / 26 / / / 27 / / / 28 / / / 1 CONCLUSION 2 In sum, the Court GRANTS IN PART AND DENIES IN PART Defendants’ 3 ||Motion to Dismiss Plaintiffs copyright infringement claim. Specifically, the Court 4 ||GRANTS the Motion insofar as it seeks dismissal of the infringement claim based on the 5 ||comparison of the 2019 Jeep Compass and 2019 GMC Terrain but DENIES the Motion 6 || insofar as it seeks dismissal of the claim based on the comparison of the 2019 Ford Transit 7 || Connect and 2019 Nissan NV200. Additionally, the Court GRANTS Defendants’ Motion 8 ||to Dismiss Plaintiff's DMCA claims. Because Plaintiff cannot cure the deficiencies in the 9 || dismissed claims through amended pleading, the Court finds that leave to amend would be 10 || futile. Thus, the Court DISMISSES WITH PREJUDICE the aforementioned copyright 11 |/infringement claim and the DMCA claims. 12 IT IS SO ORDERED. 13 Dated: May 9, 2023 —_—— \ [59 1S bre 15 Honorable Todd W. Robinson 6 United States District Judge 17 18 19 20 21 22 23 24 25 26 27 28