Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 1 of 8 Page ID #:1136
`
`“O”
`
`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`CASE NO. SACV 09-0418 AG (RNBx)
`
`ORDER DENYING MOTION TO
`DISMISS CLAIMS 2 AND 5-6
`
`)))))))))))))))))
`
`BIRD BARRIER AMERICA, INC.,
`Plaintiff,
`
`v.
`BIRD-B-GONE, INC.,
`
`Defendant.
`
`_________________________________
`
`This case concerns alleged patent infringement of a bird deterrent device and related
`claims. Defendant Bird-B-Gone, Inc. (“Defendant”) filed a motion to dismiss claims two, five,
`and six (“Motion”) of the Second Amended Complaint (“SAC”). After considering all papers
`and arguments submitted, the Court DENIES the Motion.
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 2 of 8 Page ID #:1137
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`BACKGROUND
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`The following factual allegations are taken from Plaintiff’s Second Amended Complaint
`(“SAC”), and as it must for this Motion, the Court assumes them to be true.
`Plaintiff Bird Barrier America, Inc. (“Plaintiff”) is the assignee of U.S. Patent No.
`7,481,021 (“the ‘021 Patent”). (SAC ¶ 7.) This patent “relates to a device that delivers an
`electric shock to an animal that comes into contact with it.” (SAC ¶ 8.) The patented device is
`primarily used “as a bird deterrent.” (SAC ¶ 8.)
`Defendant makes and sells a device called the “Bird Jolt Flat Track.” (SAC ¶ 10.)
`According to Plaintiff, this device “incorporates and infringes the inventions protected by one or
`more claims of the ‘021 Patent.” (SAC ¶ 10.) Further, Defendant “has without authorization
`used photographs of Plaintiff’s products on [its] website and/or in catalogs and advertisements,
`falsely representing that the product depicted was its own product when in fact it was
`Plaintiff’s.” (SAC ¶ 37.) It also “substantially copied other aspects of Plaintiff’s catalog and
`product offerings . . . .” (SAC ¶ 39.) And Defendant has made false and misleading
`representations concerning its product and its business success. (SAC ¶¶ 34-39.) According to
`Plaintiff, Defendant was on actual notice of the published patent application during the ‘021
`Patent’s prosecution and infringed the claims of the application. (SAC ¶ 27.)
`Plaintiff sued Defendant based on these allegations. Plaintiff’s SAC asserts claims for (1)
`patent infringement, (2) pre-issuance damages, (3) false designation of origin, (4) trade dress
`infringement, (5) copyright infringement, and (6) unfair competition. The Court now considers
`whether Plaintiffs second, fifth, and sixth claims as alleged in the SAC should be dismissed.
`
`LEGAL STANDARD
`
`A court should dismiss a complaint when its allegations fail to state a claim upon which
`relief can be granted. Fed. R. Civ. P. 12(b)(6). A complaint need only include “a short and plain
`statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2).
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 3 of 8 Page ID #:1138
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`“‘[D]etailed factual allegations’ are not required.” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (May
`18, 2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 554, 555 (2007)). The Court must
`accept as true all factual allegations in the complaint and must draw all reasonable inferences
`from those allegations, construing the complaint in the light most favorable to the plaintiff.
`Westlands Water Dist. v. Firebaugh Canal, 10 F.3d 667, 670 (9th Cir. 1993).
`But the complaint must allege “sufficient factual matter, accepted as true, to ‘state a claim
`that is plausible on its face.’” Iqbal, 129 S. Ct. at 1949 (quoting Twombly, 550 U.S. at 570). “A
`claim has facial plausibility when the pleaded factual content allows the court to draw the
`reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 129 S. Ct. at
`1940 (citing Twombly, 550 U.S. at 556). A court should not accept “threadbare recitals of a
`cause of action’s elements, supported by mere conclusory statements,” Iqbal, 129 S. Ct. at 1940,
`or “allegations that are merely conclusory, unwarranted deductions of fact, or unreasonable
`inferences.” Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001).
`
`ANALYSIS
`
`1.
`
`PLAINTIFF’S CLAIM FOR PRE-ISSUANCE DAMAGES
`
`Defendant argues that Plaintiff's claim for pre-issuance damages should be dismissed.
`But Defendant fails to persuade the Court that this claim should be dismissed at the pleading
`stage.
`
`35 U.S.C. § 154(d) provides that
`
`a patent shall include the right to obtain a reasonable royalty from
`any person who, during the period beginning on the date of
`publication of the application for such patent . . . and ending on the
`date the patent is issued –
`(A) (i) makes, uses, offers for sale, or sells in the United
`States the invention as claimed in the published patent application or
`imports such an invention into the United States; or
` (ii) if the invention as claimed in the published patent
`application is a process, uses, offers for sale, or sells in the United
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 4 of 8 Page ID #:1139
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`States or imports into the United States products made by that
`process as claimed in the published patent application; and
`(B) had actual notice of the published patent application and,
`in a case in which the right arising under this paragraph is based
`upon an international application designating the United States that
`is published in a language other than English, had a translation of the
`international application into the English language.
`
`Section 154(d)(2) states that “a reasonable royalty shall not be available under this
`subsection unless the invention as claimed in the patent is substantially identical to the invention
`as claimed in the published patent application.”
`In an earlier motion to dismiss filed in this case, the parties disputed the meaning of the
`phrase “invention as claimed” in Section 154(d)(2). Plaintiff argued that its claim should
`survive because “invention as claimed” means “the whole of the invention itself (‘as claimed’),”
`so the availability of pre-issuance damages under Section 154(d)(2) requires only that the
`invention disclosed in the application be substantially identical to the invention disclosed in the
`patent. (Doc. 13.) Defendant disagreed and argued that Section 154(d)(2) requires substantial
`identity between the actual claims in the application and the patent. (Doc. 14.) The Court
`agreed with Defendant's construction. Because Plaintiff did not attempt to establish that the
`actual claims were substantially identical, the Court dismissed Plaintiff's claim, but gave Plaintiff
`leave to amend. (Doc. 28.)
`Plaintiff then filed the SAC, which added allegations that, “[a]lthough the language used
`in the claims was amended after the application was published, the amendments did not
`constitute a substantive change to ‘the invention as claimed.’” (SAC ¶ 28.) Further, Plaintiff
`now alleges, “[a]mendments to the claims during prosecution of the application . . . did not
`constitute a substantive change to the ‘invention as claimed.’” (SAC ¶ 29.)
`Plaintiff argues that the SAC sufficiently alleges that the claims in the application are
`substantially identical to the claims in the patent. Defendant disagrees and argues that the claims
`are not substantially identical because Plaintiff added additional structural limitations that
`broaden or narrow the scope of the claims. For comparison, Defendant asks the court to
`construe the claims of the patent application and the issued patent.
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 5 of 8 Page ID #:1140
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`Although claim construction is a matter of law for the Court to decide, Markman v.
`Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff ‘d, 517 U.S. 370
`(1996), claim construction is inappropriate at this stage in the litigation. “[T]he proper time for
`this Court to address claim construction is not in a motion to dismiss.” Schreiber v. Eli Lilly &
`Co., No. Civ. A. 05CV2616, 2006 WL 782441, at *4 n. 10 (E.D. Pa. Mar. 27, 2006) (citing
`Markman, 517 U.S. 370); see also Yangaroo Inc. v. Destiny Media Technologies Inc., No.
`09-C-462, 2009 WL 2836643, at *3 (E.D. Wis. Aug. 31, 2009); Technology Patents, LLC v.
`Deutsche Telekom AG, 573 F. Supp. 2d 903, 920 (D. Md. 2008); Cima Labs, Inc. v. Actavis
`Group HF, Civ. Nos. 07-893, 06-1970, 06-1999, 2007 WL 1672229, at *3 (D.N.J. June 7, 2007).
` When a Court performs claim construction, it may use both intrinsic evidence such as the patent
`claims, specification, and prosecution history and, if it is helpful to understand the patent or
`resolve an ambiguity, extrinsic evidence such as expert and inventor testimony, dictionaries, and
`learned treatises. Phillips v. AWH Corp., 415 F.3d 1303, 1317-18 (Fed. Cir. 2005). “Although
`the parties have not presented extrinsic evidence in their briefs, the Court sees no need for the
`parties to hamstring their arguments solely to resolve the claim construction issues at such an
`early phase of the litigation.” Technology Patents, 573 F. Supp. 2d at 920.
`Additionally, Defendant relies on prosecution history outside of the pleadings. (Mot.
`13:15-25.) In a 12(b)(6) motion, the inquiry is limited to the complaint, documents attached or
`incorporated by reference, and matters of which the Court has taken judicial notice. Van Buskirk
`v. Cable News Network, Inc., 284 F.3d 977, 980 (9th Cir. 2002). Since the prosecution history
`referred to by Defendant does not fit any of these categories, it is not an appropriate basis for a
`motion to dismiss. Although Defendant requests in its Reply that the Court convert this Motion
`to a summary judgment motion, (Reply 2:14-19), the Court does not consider a reply brief to be
`adequate notice to Plaintiff that it must defend against a motion for summary judgment. See
`Townsend v. Columbia Operations, 667 F.2d 844, 849 (9th Cir. 1982). Plaintiff has had no
`opportunity to submit evidence outside of the Complaint to supplement its claim constructions.
`Thus, the Court declines to convert this Motion to a motion for summary judgment.
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 6 of 8 Page ID #:1141
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`In conclusion, Plaintiff’s Complaint sufficiently states a claim for pre-issuance damages.
`The parties will have the opportunity to present evidence, both intrinsic and extrinsic, of their
`preferred claim constructions at summary judgment. The Motion to Dismiss Plaintiff’s pre-
`issuance damages claim is DENIED.
`
`2.
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`PLAINTIFF’S COPYRIGHT INFRINGEMENT CLAIM
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`Defendant argues that Plaintiff’s claim for copyright infringement should be dismissed.
`The Court disagrees.
`The elements of copyright infringement are (1) ownership of a valid copyright, and (2)
`copying of constituent elements of the work that are original. Feist Publ’ns, Inc. v. Rural Tel.
`Serv. Co., Inc., 499 U.S. 340, 361 (1991). Providing a copyright registration certificate in the
`complaint creates a presumption of ownership. 17 U.S.C. § 410(c); Triad Sys. Corp. v. Se. Exp.
`Co. 64 F.3d 1330, 1335 (9th Cir. 1995). Further, “no civil action for infringement of the
`copyright . . . shall be instituted until . . . registration of the copyright claim has been made.” 17
`U.S.C. § 411(a).
`Here, Plaintiff alleges that Defendant infringed the copyright of photographs in its
`catalog. Plaintiff alleges it is the “true owner of the copyright” and attaches the copyright
`registration for the entire catalog to the Complaint. (SAC ¶ 47). Before filing the SAC, the
`registration was amended to be in Plaintiff’s name, Bird Barrier America, Inc., instead of the
`name of Plaintiff’s employee, Cameron Riddell. (SAC Exh. C, Supplemental Registration.) But
`the amendment did not change the original registration’s assertion that it was not a work-for-
`hire. (SAC Exh. C, Original Registration, 2A.)
`Based on this defect, Defendant argues that Plaintiff’s registration is “defective on its face
`. . . .” (Reply 14:19-20.) According to Defendant, a commercial entity like Plaintiff cannot own
`the copyright in a photograph unless it was a work-for-hire or was assigned the copyright by the
`original author. See Billy-Bob Teeth v. Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003).
`Defendant argues that Plaintiff “shot itself in the wing” by not asserting a work-for-hire or
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 7 of 8 Page ID #:1142
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`assignment in its Complaint or registration, and thus has not alleged ownership. (Mot. 17:18-
`20.)
`
`Defendant’s argument does not fly, and Plaintiff’s “wing” survives unscathed. Defendant
`ignores other sections of the Copyright Statutes and Ninth Circuit case law.
`
`A certificate of registration satisfies the requirements of
`[registration], regardless of whether the certificate contains any
`inaccurate information, unless–
`(A) the inaccurate information was included on the
`application for copyright registration with knowledge that it was
`inaccurate; and
`(B) the inaccuracy of the information, if known, would have
`caused the Register of Copyrights to refuse registration.
`
`
`17 U.S.C. § 411(b)(1). Accordingly, “inadvertent mistakes on registration certificates do
`not invalidate a copyright and thus do not bar infringement actions, unless . . . the claimant
`intended to defraud the Copyright Office by making the misstatement.” Lamps Plus, Inc. v.
`Seattle Lighting Fixture Co., 345 F.3d 1140, 1145 (9th Cir. 2003) (quoting Urantia Found. v.
`Maaherra, 114 F.3d 955, 963 (9th Cir. 1997)). If mislabeling a work-for-hire “was inadvertent,
`little turns on the error; the copyright is not thereby invalidated, nor is the certificate of
`registration rendered incapable of supporting the action.” Urantia Found., 114 F.3d at 963
`(citing Craft v. Kobler, 667 F. Supp. 120, 125 (S.D.N.Y.1987)).
`Here, the Complaint does not reveal that Plaintiff’s error was anything but inadvertent.
`Because Defendant has not established fraud, Plaintiff’s mistake does not invalidate its
`registration or fail to allege ownership for the purposes of this Motion.
`The Motion to Dismiss Plaintiff’s copyright infringement claim is DENIED.
`
`3.
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`PLAINTIFF’S CLAIM FOR UNFAIR COMPETITION
`
`Defendant now concedes in its reply that Plaintiff’s unfair competition claim is
`sufficiently pled.
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`Case 8:09-cv-00418-AG-MLG Document 47 Filed 03/01/10 Page 8 of 8 Page ID #:1143
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`DISPOSITION
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`The Motion is DENIED.
`
`IT IS SO ORDERED.
`DATED: March 1, 2009
`
`_______________________________
`Andrew J. Guilford
`United States District Judge
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