Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 1 of 11 Page ID #:357
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`(cid:10)(cid:50)(cid:10)
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`(cid:91)
`CV 22-6127-RSWL-RAO
` ORDER re: MOTION TO
`DISMISS [17]
`
`FASHION NOVA, LLC,
`Plaintiff,
`
`v.
`BLUSH MARK, INC., ET AL.,
`Defendants.
`
`Plaintiff Fashion Nova, LLC, (“Plaintiff”) brought
`the instant Action against Defendants Blush Mark, Inc.
`(“Defendant Blush Mark”) and Blush Mark Outfitters, Inc.
`(collectively, “Defendants”) alleging that Defendants
`infringed on Fashion Nova’s copyrights and violated
`17 U.S.C. §§ 1202(a) and (b) of the Digital Millennium
`Copyright Act by intentionally removing copyright
`management information (“CMI”) from Plaintiff’s works.
`Currently before the Court is Defendants’ Motion to
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`Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 2 of 11 Page ID #:358
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`I. BACKGROUND
`A. Factual Background
`Plaintiff and Defendants are fashion brands that
`compete with one another. First Am. Compl. (“FAC”)
`at ¶ 25, ECF No. 9. Both parties market themselves and
`sell their products through their respective e-commerce
`websites. Id. at ¶ 27.
`Plaintiff alleges that Defendants willfully
`infringed on Plaintiff’s copyrights in various product
`images displayed on Plaintiff’s website and
`removed/altered the CMI identifying those images in
`violation of 17 U.S.C. §§ 1202(a) & (b). Id. at ¶¶ 30,
`35-37; see generally FAC, Ex. A, ECF No. 9-1.
`Specifically, Plaintiff alleges that Defendants
`intentionally and wrongfully stole Plaintiff’s product
`images from Plaintiff’s website and then used those
`images on Defendants’ website to market and sell their
`competing products. FAC ¶ 3. Plaintiff asserts that
`its product images are accompanied by Plaintiff’s name
`and logo that identify Plaintiff as the owner of the
`copyrights in those images. Id. at ¶ 18. Moreover,
`Plaintiff states that it assigns identifying file names
`to these product images. Id. at ¶ 20.
`2
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`
`
`
`Dismiss [17].
`Having reviewed all papers submitted pertaining to
`
`this Motion, the Court NOW FINDS AND RULES AS FOLLOWS:
`the Court GRANTS Defendant’s Motion to Dismiss with
`leave to amend.
`
`
`
`

`

`Plaintiff contends that after Defendants downloaded
`digital copies of the product images, they removed the
`
`file names assigned to the images and proceeded to
`distribute the product images with Defendants’ company
`name and/or logo so as to falsely identify themselves as
`the copyright owner. Id. ¶¶ 43-45. Plaintiff sent a
`cease-and-desist letter to Defendant Blush Mark
`demanding it stop the unauthorized use of Plaintiff’s
`product images. Id. ¶ 48. Defendants, however,
`allegedly continued to infringe on Plaintiff’s product
`images. Id. ¶¶ 36-38.
`Plaintiff thus seeks (1) injunctive relief; (2) a
`damages award to compensate Plaintiff for the diversion
`of sales and damage to its business by Defendants’
`illicit activities; and (3) an award of Defendants’ ill-
`gotten profits and benefits. Id. ¶ 3.
`B. Procedural Background
`Plaintiff filed its Complaint [1] on August 29, 2022,
`and later filed an FAC [9] on September 7, 2022.
`Defendants filed the instant Motion to Dismiss [17] on
`December 12, 2022. Plaintiff opposed [24] the Motion on
`January 5, 2023, and Defendants replied [25] on
`January 17, 2023.
`
`Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 3 of 11 Page ID #:359
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`II. DISCUSSION
`
`A. Legal Standard
`
`Federal Rule of Civil Procedure (“Rule”) 12(b)(6)
`allows a party to move for dismissal of one or more
`claims if the pleading fails to state a claim upon which
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`Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 4 of 11 Page ID #:360
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`relief can be granted. A complaint must “contain
`sufficient factual matter, accepted as true, to state a
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`claim to relief that is plausible on its face.”
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quotation
`omitted). Dismissal is warranted for a “lack of a
`cognizable legal theory or the absence of sufficient
`facts alleged under a cognizable legal theory.”
`Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699
`(9th Cir. 1988) (citation omitted).
`
`In ruling on a 12(b)(6) motion, a court may
`generally consider only allegations contained in the
`pleadings, exhibits attached to the complaint, and
`matters properly subject to judicial notice. Swartz v.
`KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007); see also
`White v. Mayflower Transit, LLC, 481 F. Supp. 2d 1105,
`1107 (C.D. Cal 2007), aff’d sub nom. White v. Mayflower
`Transit, L.L.C., 543 F.3d 581 (9th Cir. 2008). (“unless
`a court converts a Rule 12(b)(6) motion into a motion
`for summary judgment, a court cannot consider material
`outside of the complaint (e.g., facts presented in
`briefs, affidavits, or discovery materials”)). A court
`must presume all factual allegations of the complaint to
`be true and draw all reasonable inferences in favor of
`the non-moving party. Klarfeld v. United States, 944
`F.2d 583, 585 (9th Cir. 1991). “[T]he issue is not
`whether a plaintiff will ultimately prevail but whether
`the claimant is entitled to offer evidence to support
`the claims.” Jackson v. Birmingham Bd. of Educ.,
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`Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 5 of 11 Page ID #:361
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`544 U.S. 167, 184 (2005) (quoting Scheuer v. Rhodes,
`416 U.S. 232, 236 (1974)). While a complaint need not
`
`contain detailed factual allegations, a plaintiff must
`provide more than “labels and conclusions” or “a
`formulaic recitation of the elements of a cause of
`action.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
`(2007). However, “a well-pleaded complaint may proceed
`even if it strikes a savvy judge that actual proof of
`those facts is improbable, and ‘that a recovery is very
`remote and unlikely.’” Id. at 556 (quoting Scheuer v.
`Rhodes, 416 U.S. 232, 236 (1974)).
`B. Discussion
`1. Motion to Dismiss1
`Section 1202(a) of the DMCA provides that “no
`
`person shall knowingly and with the intent to induce,
`enable, facilitate, or conceal infringement (1) to
`provide [CMI] that is false; or (2) distribute or import
`
`1 Plaintiff requests the Court take judicial notice of four
`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
`first amended complaint filed in O’Neal v. Sideshows, Inc., 2:21-
`cv-07735-DSF-PLA (C.D. Cal.); (3) the second amended complaint
`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
`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
`the proffered case filings to resolve the instant Motion, the
`Court deems Plaintiff’s request for judicial notice of those
`court filings moot and thus DENIED. Since copyright
`registrations are properly subject to judicial notice, the Court
`GRANTS Plaintiff’s request and judicially notices the proffered
`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)
`(holding that copyright registrations are the sort of document as
`to which judicial notice is appropriate).
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`Case 2:22-cv-06127-RSWL-RAO Document 28 Filed 03/15/23 Page 6 of 11 Page ID #:362
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`for distribution [CMI] that is false.” 17 U.S.C.
`§ 1202(a). Next, Section 1202(b) of the DMCA states
`
`that no person shall knowingly and intentionally remove,
`alter, and distribute [CMI] in a way that will induce,
`enable, facilitate, or conceal an infringement without
`the authority of the copyright owner or the law.
`17 U.S.C. § 1202(b).
`
`Defendants contend that Plaintiff has not
`adequately pled that its images had CMI, and therefore
`does not state a claim for violation of 17 U.S.C.
`§§ 1202(a) or (b). See generally Mot. Plaintiff
`counters that the images’ file names and Plaintiff’s
`company name, logos, and product names on its website
`constitute CMI. Opp’n. at 6:4-10, 7:18-24. Defendant,
`however, argues that the file names and website
`information are not CMI because: (1) the FAC does not
`include what the file names for these photographs were,
`and so cannot demonstrate that the file names contain
`any of the information listed under 17 U.S.C.
`§§ 1202(c)(1)-(8); and (2) Plaintiff’s company name and
`logo on its web page is not “on or near” the images, and
`nothing on Plaintiff’s website indicates that Plaintiff
`owns the copyright on the images. Mot. 1:6-23. The
`Court addresses each assertion in turn.
`
`Section 1202(c) defines CMI to include the
`following: “[the] title and other information
`identifying the work, including the information set
`forth on a notice of copyright;” “[the] name of, and
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`other identifying information about, the author of a
`work;” and “[the] name of, and other identifying
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`information about, the copyright owner of the work,
`including the information set forth in a notice of
`copyright.” 17 U.S.C. § 1202(c).
`
`District courts have found information to
`constitute CMI in a wide variety of formats. See, e.g.,
`McGucken v. Chive Media Grp., LLC, No. 18-cv-01612-RSWL,
`2018 WL 3410095, at *4 (C.D. Cal. July 11, 2018)
`(watermarks identifying author and owner constitute
`CMI); Iconics, Inc. v. Massaro, 192 F. Supp. 3d 254, 272
`(D. Mass. 2016) (“[C]opyright headers are paradigmatic
`CMI.”); Agence Fr. Presse v. Morel, 769 F. Supp. 2d 295,
`306 (S.D.N.Y. 2011) (notations containing author and
`copyright owner’s name constitutes CMI). But district
`courts have declined to find CMI when information at
`issue differed from information in the copyright
`registration. See, e.g., Pers. Keepsakes, Inc. v.
`Personalizationmall.com, Inc., 975 F. Supp. 2d 920, 928
`(N.D. Ill. 2013) (poem titles were not CMI because they
`did not match the titles of the works on the copyright
`registrations).
`
`In short, “the point of CMI is to inform the public
`that something is copyrighted and to prevent
`infringement.” Id. (citation omitted); cf. MDY Indus.,
`LLC v. Blizzard Ent., Inc., 629 F.3d 928, 942 (9th Cir.
`2010) (“In enacting the DMCA, Congress sought to
`mitigate the problems presented by copyright enforcement
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`in the digital age.”). Thus, although files names do
`not automatically fall within the scope of the DMCA,
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`they are protected by § 1202 when they include relevant
`identifying information. For example, in Izmo, Inc. v.
`Roadster, Inc., the court found that the plaintiff
`adequately showed that file names constituted CMI
`because it alleged that the file names of the images at
`issue were “the file name[s] of [the] original Izmo
`Image[s] filed and/or registered with the U.S. Copyright
`Office.” No. 18-CV-06092-NC, 2019 WL 13210561, at *3
`(N.D. Cal. Mar. 26, 2019). There, the file names were
`CMI because they identified works in question and
`directly linked the photographs to the copyright
`registrations. Id.
`
`Similarly, courts find that information on a
`website cannot serve as CMI where it is not conveyed
`with the work so as to provide the viewer with proper
`notice that the work is copyrighted. See
`SellPoolSuppliesOnline.com LLC v. Ugly Pools Arizona,
`Inc., 344 F. Supp. 3d 1075, 1082 (D. Ariz. 2018), aff’d,
`804 F. App’x 668 (9th Cir. 2020). For instance, in
`SellPoolSuppliesOnline.com, the court held that a
`copyright notice located on the bottom of a webpage was
`not CMI because it was “not in the body of, or around,
`the work at issue, the photographs, and so it was not
`‘conveyed in connection with’ the work in a way that
`makes the information CMI.” Id. Indeed, courts in this
`district tend to find that information is conveyed in
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`connection with a work, and therefore constitutes CMI,
`when the information is actually on or directly abutting
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`the work. See, e.g., Williams v. Cavalli, No. CV 14-
`06659-AB JEMX, 2015 WL 1247065, at *2 (C.D.
`Cal. Feb. 12, 2015) (stating that signatures that
`appeared within a mural “necessarily were conveyed in
`connection the display of the mural” and constituted
`CMI); Pac. Studios Inc. v. W. Coast Backing Inc.,
`No. 2:12-cv-00692-JHN-JCG, 2012 WL 12887637, at *2-3
`(C.D. Cal. Apr. 18, 2012) (concluding that an
`alphanumeric designation on the border of an online
`image for purposes of identification was CMI).
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`Here, Plaintiff alleged in its FAC that the file
`names identified each of its product images. FAC ¶ 35.
`In contrast to Izmo, however, Plaintiff failed to allege
`that the file names link the images to their copyright
`registrations or provide notice that the images are
`copyrighted. The point of CMI is to provide the public
`with notice that a work is copyrighted. See Pers.
`Keepsakes, Inc., 975 F. Supp. 2d at 928. Consequently,
`merely pleading that the file names identify the images
`does not show that such file names would put a viewer on
`notice that the works are copyrighted. Thus, Plaintiff
`has not adequately shown that the files names are CMI.
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`Plaintiff’s company name and logo appear to be
`located at the top of Plaintiff’s website. Accordingly,
`just as in SellPoolSuppliesOnline.com, the company name
`and logo are not conveyed in connection with the
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`relevant images and therefore are not CMI. And product
`names alone are not CMI, as they do not reveal to the
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`viewer that the images are copyrighted. See Fischer v.
`Forrest, 968 F.3d 216, 219 (2d Cir. 2020) (holding that
`removal of a product name did not constitute removal of
`CMI).
`
`In sum, Plaintiff has not shown that the images’
`file names or the company name, logo, or product names
`on Plaintiff’s website are CMI. Therefore, Plaintiff
`has not stated a claim for violation of section 1202 and
`the Court should GRANT Defendant’s Motion to Dismiss.
`2. Leave to Amend
`“Where a motion to dismiss is granted, a district
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`court must decide whether to grant leave to amend.”
`Winebarger v. Pennsylvania Higher Educ. Assistance
`Agency, 411 F. Supp. 3d 1070, 1082 (C.D. Cal. 2019).
`“The court should give leave [to amend] freely when
`justice so requires.” Fed. R. Civ. P. 15(a)(2). In the
`Ninth Circuit, “Rule 15’s policy of favoring amendments
`to pleadings should be applied with ‘extreme
`liberality.’” United States v. Webb, 655 F.2d 977, 979
`(9th Cir. 1981). Against this extremely liberal
`standard, the Court may consider “the presence of any of
`four factors: bad faith, undue delay, prejudice to the
`opposing party, and/or futility.” Owens v. Kaiser
`Found. Health Plan, Inc., 244 F.3d 708, 712 (9th Cir.
`2001).
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`Here, leave to amend Plaintiff’s claims should be
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`granted because Plaintiff can cure its Complaint by
`pleading additional facts that support its claims.
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`There is no evidence of bad faith or undue delay by
`Plaintiff, or potential prejudice to Defendant by
`allowing amendment. The Court therefore GRANTS
`Defendants’ Motion to Dismiss with leave to amend.
`III.
`CONCLUSION
`Based on the foregoing, the Court GRANTS
`
`Defendant’s Motion to Dismiss with leave to amend.
`
`IT IS SO ORDERED.
`
`DATED: March 15, 2023 _____________________________
`/S/ RONALD S.W. LEW
` HONORABLE RONALD S.W. LEW
` Senior U.S. District Judge
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