Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 1 of 8 Page ID #:769
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`EVOX PRODUCTIONS, LLC,
`
`
`Plaintiff,
`v.
`
`VERIZON MEDIA INC. et al.,
`
`
`Defendants.
`
`
`
`
`
`Case No.: CV 20-2852-CBM-(JEMx)
`
`ORDER RE: DEFENDANTS’
`MOTION TO DISMISS THE FIRST
`AMENDED COMPLAINT [57]
`
`
`The matter before the Court is Defendants Verizon Media, Inc. (“Verizon”),
`Yahoo! Inc. (“Yahoo”), and Oath Inc.’s (“Oath”) (collectively, “Defendants’”)
`Motion to Dismiss the First Amended Complaint (the “Motion”) pursuant to
`Federal Rules of Civil Procedure 12(b)(6). (Dkt. No. 57.)
`I. BACKGROUND
`This action arises from Defendants’ alleged unauthorized use of Plaintiff
`Evox Productions, LLC’s (“Plaintiff’s” or “Evox’s”) copyrighted digital images
`and photographs and Plaintiff’s trademarks included on the digital images after
`Defendant Yahoo! Inc. cancelled the licensing agreement with Plaintiff in 2016.
`Plaintiff filed a complaint on March 27, 2020 asserting two causes of action
`against Defendants: (1) copyright infringement; and (2) federal trademark
`
`
`
`
`
`1
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 2 of 8 Page ID #:770
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`infringement. On August 19, 2020, the Court granted Defendants’ Motion to
`Dismiss Plaintiff’s trademark infringement claim without leave to amend. (Dkt.
`No. 35.) On May 5, 2021, the Court granted Defendants’ Motion for Judgment on
`the Pleadings on Plaintiff’s copyright infringement claim and dismissed the
`copyright claim with leave to amend. (Dkt. No. 51 (the “Order”).) The Court
`found Plaintiff’s copyright infringement claim was premised on a “making
`available” theory which failed as a matter of law based on the Ninth Circuit’s
`decision in VHT, Inc. v. Zillow Group, Inc., 918 F.3d 723 (9th Cir. 2019). (Id.)
`The Court granted Plaintiff leave to amend to allege additional facts regarding
`Defendants’ actual display and distribution of the copyrighted photographs and
`stated “[a]ny amended complaint filed by Plaintiff cannot assert a claim for
`copyright infringement based on the “making available’ theory foreclosed by
`VHT, Inc. v. Zillow Group, Inc., 918 F.3d 723 (9th Cir. 2019).” (Id.) On May 21,
`2021, Plaintiff filed the First Amended Complaint (“FAC”) which asserts a single
`cause of action for copyright infringement under 17 U.S.C. §§ 501 et seq.
`Defendants move to dismiss the FAC on the ground Plaintiff’s copyright
`infringement claim fails as a matter of law because it is still based on a “making
`available” theory.
`
`II. LEGAL STANDARD
`A court may dismiss a complaint for “failure to state a claim upon which
`relief can be granted” pursuant to Federal Rule of Civil Procedure 12(b)(6). To
`survive a motion to dismiss pursuant to Rule 12(b)(6), the Complaint “must
`contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is
`plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (quoting Bell
`Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is facially
`plausible when the plaintiff pleads factual content that allows the court to draw the
`reasonable inference that the defendant is liable for the misconduct alleged.
`Salameh v. Tarsadia Hotel, 726 F.3d 1124, 1129 (9th Cir. 2013). The plausibility
`
`
`
`
`2
`
`
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 3 of 8 Page ID #:771
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`standard requires more than the sheer possibility or conceivability that a defendant
`has acted unlawfully. Id. A formulaic recitation of the elements of a cause of
`action will not suffice. Twombly, 550 U.S. at 555.
`III. DISCUSSION
`The Copyright Act grants the owner of a copyright the exclusive right “to
`display the copyrighted work publicly.” 17 U.S.C. § 106(5) (emphasis added).1
`The Copyright Act also provides that the owner of a copyright has the exclusive
`right “to distribute copies or phonorecords of the copyrighted work to the public
`by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. §
`106(3) (emphasis added). “[I]n the electronic context, copies may be distributed
`electronically.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162 (9th
`Cir. 2007) (citing N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001)).
`Here, the FAC alleges:
`1.
`After Defendants’ right to reproduce, distribute and display the
`copyrighted photographs pursuant to the parties’ licensing
`agreement terminated on May 4, 2016, “Yahoo! recklessly or
`intentionally failed to remove the Copyrighted Photographs
`from public display or take any steps to prevent the possibility
`of further reproduction, distribution or display of the
`Copyrighted Photographs. Instead, Yahoo! continued to
`reproduce, distribute and display the Copyrighted Photographs
`after August 2, 2016 without permission or authorization,
`including, but not limited to, on Yahoo!’s Auto website and
`Yahoo!’s Tumblr website.” (FAC ¶ 24);
`“Any internet user could visit Yahoo!’s blog and access,
`reproduce, and display all of the Copyrighted Photographs
`(sometimes through a free registered account). Internet users
`could also interact with the Copyrighted Photographs on
`Tumblr or other social media. . . . users could download and
`copy the Copyrighted Photographs to their own computers;
`users could create their own Tumblr blog and “re-blog” the
`Copyrighted Photographs (that would be reproduced, displayed
`and distributed by Yahoo!); users could link the Copyrighted
`Photographs to other social media websites via shortcuts that
`Yahoo! supplied; users could “like” or “unlike” the
`Copyrighted Photographs on either Yahoo!’s Tumblr blog or
`
`1 Under the Copyright Act, “[t]o ‘display’ a work means to show a copy of [a
`work], either directly or by means of a film, slide, television image, or any other
`device or process.” 17 U.S.C. § 101.
`
`
`
`
`2.
`
`3
`
`
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 4 of 8 Page ID #:772
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`3.
`
`4.
`
`5.
`
`on any blog where the Copyrighted Photographs had been
`“reblogged.” (Id. ¶ 29);
`“After August 2, 2016, Yahoo! continued to reproduce, display
`and distribute the Copyrighted Photographs from Yahoo!’s
`servers via Yahoo!’s Tumblr blog. The Copyrighted
`Photographs were reproduced, distributed and displayed on
`Yahoo!’s Tumblr blog to any member of the public who visited
`Yahoo!’s ‘evox on Yahoo’ Tumblr blog or any other Tumblr
`blog that had reblogged the Copyrighted Photograph(s). The
`Copyrighted Photographs were actually reproduced, distributed
`and displayed by Yahoo! after August 2, 2016, including, by
`way of example, in October 2016.” (Id. ¶ 30);
`After Plaintiff first discovered Yahoo’s continued
`reproduction, distribution and display of Plaintiff’s copyrighted
`photographs on Yahoo’s Tumblr page in October 2016,
`Plaintiff conducted an investigation through a third-party
`investigator who “created a browsable copy of all of Yahoo!’s
`Tumblr posts and a complete log of its transactions with
`Yahoo!’s servers, which show that the Copyrighted
`Photographs were reproduced, distributed and displayed by
`Yahoo! to the third party investigator in or around October
`2016.” (Id. ¶ 32); and
`“Yahoo! also maintained a separate Yahoo! Autos website.
`The main landing page of the website reproduced, distributed
`and displayed [Plaintiff’s] Copyrighted Photographs.
`Additional Copyrighted Photographs were reproduced,
`distributed and displayed on subpages of the website. The
`Yahoo! Autos webpages that reproduced, distributed and
`displayed [Plaintiff’s] Copyrighted Photographs were available
`and accessible to any internet user through at least October
`2016. After August 2, 2016, certain of the Copyrighted
`Photographs were reproduced, distributed and displayed from
`Yahoo!’s servers via the Yahoo! Autos webpages. At a
`minimum, the Copyrighted Photographs were reproduced,
`distributed and displayed in October 2016 as part of EVOX’s
`investigation.” (Id. ¶¶ 37-38).
`
`Defendants argue the FAC’s allegations demonstrate Plaintiff’s copyright
`infringement claim is still based on Defendants allegedly making Plaintiff’s
`photographs available on Tumblr and Yahoo’s Autos website, which is foreclosed
`by this Court’s Order and Ninth Circuit authority.
`Plaintiff argues the FAC has sufficiently alleged facts satisfying the
`“publicly” and “to the public” requirement by alleging that Yahoo’s Tumblr page
`and Yahoo’s Autos website were “open to the public” (citing FAC ¶¶ 25, 27, 29)
`and Yahoo did not restrict access to Tumblr and anyone could browse Tumblr
`
`
`
`
`4
`
`
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 5 of 8 Page ID #:773
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`(FAC ¶¶ 27, 29) and therefore it has satisfied the “publicly” and “to the public”
`requirements to state a claim for violation of its display and distribution rights
`under the Copyright Act. Plaintiff thus contends the fact that Yahoo displayed the
`copyrighted photographs on its Tumblr page and Auto website “by their very
`nature” shows that they were “open to the public.” Plaintiff relies on the
`Copyright Act’s definition “[t]o perform or display a work ‘publicly’” as “to
`perform or display it at a place open to the public or at any place where a
`substantial number of persons outside of a normal circle of a family and its social
`acquaintances is gathered.” 17 U.S.C. § 101.
`While Plaintiff attempts to reframe its theory of liability as “open to the
`public,” Plaintiff’s theory for copyright infringement is still premised on
`Defendants allegedly making the copyrighted photographs available to the public
`on Tumblr and the Auto website which has been expressly rejected by the Ninth
`Circuit. See VHT, 918 F.3d at 736 (rejecting the plaintiff’s contention that the
`defendant violated the Copyright Act based on a making available theory,
`reasoning “[t]his theory presumes that the Copyright Act’s display right
`encompasses an exclusive right to ‘make available for display,” a position neither
`supported by the statute nor embraced by this court”); Perfect 10, Inc. v.
`Amazon.com, Inc., 508 F.3d 1146, 1162 (9th Cir. 2007) (reviewing the plain
`language of the Copyright Act and rejecting the contention that “merely making
`images ‘available’ violates the copyright owner’s distribution right); see also SA
`Music, LLC v. Amazon.com, Inc., 2020 WL 3128534, at *2-*3 (W.D. Wash. June
`12, 2020); Zuffa, LLC v. Latham, 2020 WL 4458920, at *2 (N.D. Cal. Feb. 26,
`2020)).2
`
`2. The majority of the cases relied on by Plaintiff are out of circuit decisions, were
`decided prior to the Ninth Circuit’s VHT decision, and/or do not concern a work
`that was stored electronically, and are therefore inapposite or not binding on this
`Court. See Columbia Pictures Indus., Inc. v. Redd Horne, Inc., 749 F.2d 154 (3d
`Cir. 1984); Columbia Pictures Indus., Inc. v. Aveco, Inc., 800 F.2d 59 (3d Cir.
`1996); Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199 (4th
`Cir. 1997); Elohim EPF USA, Inc. v. Total Music Connection, Inc., 2015 WL
`
`
`5
`
`
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 6 of 8 Page ID #:774
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Defendants also argue the FAC’s remaining allegations pertain to display or
`distribution to Plaintiff itself or its investigator (see FAC ¶¶ 31, 32), who are not
`members of the public. Defendants thus contend because there are no allegations
`in the FAC that Defendants actually displayed or actually distributed the
`copyrighted photographs to members of the public, Plaintiff fails to state a claim
`for copyright infringement. As the Supreme Court has recognized, “public” for
`purposes of the Copyright Act means a “large group of people outside of a family
`and friends.” Am. Broad. Companies, Inc. v. Aereo, Inc., 573 U.S. 431, 448
`(2014). Thus, Plaintiff fails to allege Defendants displayed or distributed the
`photographs to members of the public as required for Plaintiff’s copyright claim.
`Plaintiff contends it has sufficiently alleged facts which give rise to a
`reasonable inference that Defendants displayed and distributed the copyrighted
`photographs to a large group of persons other than Plaintiff and its investigator by
`alleging the photographs were liked, unliked and/or reblogged from Yahoo’s
`Tumblr page after the parties’ licensing agreement expired (FAC ¶ 34), Tumblr
`was open and available to the public (id. ¶¶ 25, 29), all of Plaintiff’s Copyrighted
`Photographs remained readily displayed on Tumblr for years (id. ¶¶ 30, 33),
`Tumblr had over 500 million monthly visitors in 2016 and over 472 million
`registered accounts in 2019 (id. ¶ 27), Yahoo’s CEO attested to Tumblr’s core
`purpose as a “distribution network” and the average Tumblr post is re-blogged 14
`times (id. ¶¶ 26, 30, 33), Yahoo encouraged webcrawlers to visit its blog and
`display it in Google search results (id. ¶ 41), and billions of users searched for
`automotive-related content during the year Yahoo’s license expired (id. ¶ 40).
`However, these allegations pertain to conduct by third parties—not volitional
`conduct by Defendants. In VHT, the Ninth Circuit found “to demonstrate
`
`
`12655556 (C.D. Cal. Oct. 1, 2015); Playboy Enterprises, Inc. v. Frena, 838 F.
`Supp. 1552 (M.D. Fl. 1993); Beom Su Lee v. Karaoke City, 2019 WL 2451430
`(S.D.N.Y. Apr. 22, 2019).
`
`
`
`
`6
`
`
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 7 of 8 Page ID #:775
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`volitional conduct” as required for a copyright infringement claim, the plaintiff
`“must provide some ‘evidence showing [the alleged infringer] exercised control
`(other than by general operation of [its website]); selected any material for upload,
`download, transmission, or storage; or instigated any copying, storage, or
`distribution’ of its photos,” and therefore held Zillow was not liable for violating
`the plaintiff’s reproduction right where photos in Zillow’s “Listing Platform” were
`copied to another section of its website “based on user actions, not the conduct of
`Zillow or its moderators.” 918 F.3d at 732, 737. Moreover, in Fox Broadcasting
`Co., Inc. v. Dish Network LLC, the Ninth Circuit held “[i]nfringement of the
`reproduction right requires copying by the defendant”; thus, that Dish Network
`“operat[ed] a system used to make copies at the user’s command” was not enough
`for the plaintiff to establish likelihood of success on its infringement claim. 747
`F.3d 1060, 1067 (9th Cir. 2014) (noting “Dish’s program create[d] the copy only
`in response to the user’s command” and “[t]he user, then, and not Dish [wa]s the
`most significant and important cause of the copy.”). Therefore, Plaintiff fails to
`allege facts regarding volitional conduct by Defendant (as opposed to conduct by
`third parties) as required for Plaintiff’s copyright infringement claim.
`Plaintiff also contends Defendant’s Motion to Dismiss must be denied
`because it has alleged Defendants’ spoliation of evidence of infringement (see
`FAC ¶ 36 (alleging Defendants failed to keep or maintain records including server
`logs of the exact number of times Plaintiff’s copyrighted photographs were
`reproduced, displayed or distributed via Tumblr or its website)) which entitles
`Plaintiff to a presumption of infringement. Plaintiff, however, cites to no
`authority wherein a court has relied on the presumption of infringement arising
`from alleged spoliation in determining whether the plaintiff stated a claim for
`copyright infringement in ruling on a motion to dismiss.3 Therefore, Plaintiff fails
`
`3 Dallas Buyers, LLC v. Integrity Computer Servs., 2016 WL 3085907 (D. Or.
`Apr. 29, 2016), report and recommendation adopted, 2016 WL 3085899 (D. Or.
`May 31, 2016), relied on by Plaintiff, is not binding on this Court and is inapposite
`
`
`7
`
`
`
`
`
`

`

`Case 2:20-cv-02852-CBM-JEM Document 65 Filed 08/23/21 Page 8 of 8 Page ID #:776
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`to plead sufficient facts to state a claim for copyright infringement.
`IV. CONCLUSION
`Accordingly, the Court GRANTS Defendants’ Motion to Dismiss the First
`Amended Complaint and dismisses the First Amended Complaint with
`prejudice.4
`
`
`IT IS SO ORDERED.
`
`DATED: August 23, 2021.
`
`
`
`
`
`
`
`
`
`
`
`
`CONSUELO B. MARSHALL
`
` UNITED STATES DISTRICT JUDGE
`
`
`because it concerned whether granting leave to amend would be futile where the
`plaintiff alleged spoliation.
`4 The Court previously gave Plaintiff leave to amend to state a claim for copyright
`infringement that was not based on a “making available theory” and to allege
`additional facts regarding Defendants’ actual display and distribution of Plaintiff’s
`copyrighted photographs.
`
`
`
`
`8
`
`
`
`
`
`