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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES – GENERAL
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`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`
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` Date: July 9, 2015
`
`Present: Honorable JOSEPHINE L. STATON, UNITED STATES DISTRICT JUDGE
`
` Terry Guerrero
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`Deputy Clerk
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`ATTORNEYS PRESENT FOR PLAINTIFF: ATTORNEYS PRESENT FOR DEFENDANT:
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`Court Reporter
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`Not Present
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`PROCEEDINGS:
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`(IN CHAMBERS) ORDER GRANTING DEFENDANT’S MOTION
`TO DISMISS PLAINTIFF’S FIRST AMENDED COMPLAINT (Doc.
`19)
`
`
`Before the Court is Defendant Thomas D. Han, DMD’s Motion to Dismiss
`
`Plaintiff’s First Amended Complaint. (Mot., Doc. 19.) Plaintiff Ryoo Dental, Inc.
`opposed, and Han replied. (Opp., Doc. 22; Reply, Doc. 24.) Having read and considered
`the papers and taken the matter under submission, the Court GRANTS the Motion.
`
`I.
`
`INTRODUCTION
`
`The First Amended Complaint alleges the following facts:
`Plaintiff Ryoo Dental, Inc. comprises the dental practice of Victor Ryoo. (FAC,
`Doc. 17, ¶¶ 5, 10.) Ryoo’s services include “general dentistry, dental implant therapy,
`teeth whitening, veneer application, and Invisalign treatment.” (Id. ¶10.)
`Ryoo created a website to market, promote, advertise, exploit, and solicit its dental
`services and products to consumers. (Id. ¶¶ 12-13.) To promote the website, Ryoo spent
`considerable sums on “search engine optimization fees, photographing, editing, and
`updating content and maintaining its webpage.” (Id. ¶ 14.)
`Around May 2012, Ryoo learned its website had lost its first page search ranking
`on Google. (FAC ¶ 20.) Ryoo hired a search engine optimization firm to remedy this.
`(Id. ¶ 22.) The firm informed Ryoo that Defendant Thomas D. Han, DMD, an Anaheim
`dentist, had copied content from Ryoo’s website and placed it on his own website. (Id. ¶¶
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`CIVIL MINUTES – GENERAL
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 2 of 8 Page ID #:186
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
` Date: July 9, 2015
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`7, 23.) The firm further informed Ryoo that Google’s algorithm was designed to
`“penalize” plagiarized websites and had lowered Ryoo’s search ranking because of Han’s
`copying. (Id. ¶ 23.) In addition, Ryoo alleges Han received “direct and indirect profits
`that [he] would not have realized but for” copying Ryoo’s website. (Id. ¶ 36.)
`On February 24, 2015, Ryoo filed a Complaint against Han in this Court.
`(Compl., Doc. 1.)
`On May 8, 2015, Ryoo filed the operative First Amended Complaint, asserting
`claims against Han for (1) copyright infringement in violation of 17 U.S.C. § 101 et seq.,
`(2) conversion, (3) negligent interference with prospective economic advantage, (4) false
`advertising in violation of Cal. Bus. & Prof. Code § 17500 et seq., (5) unfair competition
`in violation of Cal. Bus. & Prof. Code § 17200 et seq., (6) unjust enrichment, and (7)
`accounting. (FAC ¶¶ 41-84.)
`Han now moves to dismiss Ryoo’s state-law claims on the grounds that they are
`preempted by the federal Copyright Act. (Mot.) Han also moves to dismiss Ryoo’s
`request for attorneys’ fees and punitive damages. (Id.)
`
`LEGAL STANDARD
`
`II.
`
`
`When evaluating a motion to dismiss under Federal Rule of Civil Procedure
`12(b)(6), the Court must accept as true all allegations of material facts that are in the
`complaint and must construe all inferences in the light most favorable to the non-moving
`party. Moyo v. Gomez, 40 F.3d 982, 984 (9th Cir. 1994). Dismissal of a complaint for
`failure to state a claim is not proper where a plaintiff has alleged “enough facts to state a
`claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544,
`570 (2007). A complaint must (1) “contain sufficient allegations of underlying facts to
`give fair notice and to enable the opposing party to defend itself effectively,” and (2)
`“plausibly suggest an entitlement to relief, such that it is not unfair to require the
`opposing party to be subjected to the expense of discovery and continued litigation.”
`Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). “Although for the purposes of a
`motion to dismiss [the Court] must take all of the factual allegations in the complaint as
`true, [it] ‘[is] not bound to accept as true a legal conclusion couched as a factual
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 3 of 8 Page ID #:187
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`allegation.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at
`555).
`
` Date: July 9, 2015
`
`In considering a motion to dismiss, the Court is limited to the allegations on the
`face of the complaint (including documents attached thereto), matters which are properly
`judicially noticeable, and “documents whose contents are alleged in a complaint and
`whose authenticity no party questions, but which are not physically attached to the
`pleading.” Branch v. Tunnell, 14 F.3d 449, 453-54 (9th Cir. 1994), overruled on other
`grounds in Galbraith v. Cnty. of Santa Clara, 307 F.3d 1119 (9th Cir. 2002).
`
`III. DISCUSSION
`
`
`A.
`
`Copyright Preemption of State-law Claims
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`
`
`Han argues Ryoo’s state-law claims must be dismissed because they are
`preempted by the Copyright Act. The Ninth Circuit uses a two-part test to determine
`whether a state-law claim is preempted by the Copyright Act. Laws v. Sony Music
`Entm't, Inc., 448 F.3d 1134, 1137-38 (9th Cir. 2006). The court “must first determine
`whether the ‘subject matter’ of the state law claim falls within the subject matter of
`copyright . . . .” Id. at 1137. Second, the court “must determine whether the rights
`asserted under state law are equivalent to the rights” granted by the Copyright Act. Id. at
`1138. Both prongs must be met for preemption to occur.
`Here, the subject matter of the state-law claims clearly falls within the subject
`matter of copyright. The Copyright Act protects “original works of authorship fixed in
`any tangible medium of expression . . . .” Laws, 448 F.3d at 1139; 17 U.S.C. § 102(a).
`“A website may constitute a work of authorship fixed in a tangible medium of expression
`. . . . Copyright protection for a website may extend to both the screen displays and the
`computer code for the website.” Ticketmaster L.L.C. v. RMG Technologies, Inc., 507 F.
`Supp. 2d 1096, 1104 (C.D. Cal. 2007) (citing Integrative Nutrition, Inc. v. Academy of
`Healing Nutrition, 476 F. Supp. 2d 291, 296 (S.D.N.Y. 2007)). Han allegedly copied
`elements from Ryoo’s website including “text, photograph[s] . . . and artwork.” (FAC ¶
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 4 of 8 Page ID #:188
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
` Date: July 9, 2015
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`17.) Thus, the subject matter of Ryoo’s state-law claims clearly falls within the subject
`matter of copyright.1
`The Court must next determine whether Ryoo’s state-law claims assert rights
`equivalent to those protected by the Copyright Act. Laws, 448 F.3d at 113. To avoid
`preemption, a state-law claim must include an “extra element that changes the nature of
`the action so that it is qualitatively different from a copyright infringement claim.” Xerox
`Corp. v. Apple Computer, Inc., 734 F. Supp. 1542, 1550 (N.D. Cal. 1990) (quotation
`marks and citation omitted; emphasis in original). The Court addresses each claim as to
`this prong of the preemption test.
`
`
`1.
`
`Conversion
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`
`
`The Court first considers Ryoo’s conversion claim.
`Conversion requires (1) the plaintiff’s ownership or right to possession of a certain
`piece of property, (2) the defendant’s conversion of the property by a wrongful act, and
`(3) damages. Firoozye v. Earthlink Network, 153 F. Supp. 2d 1115, 1129 (N.D. Cal.
`2001). In determining whether conversion claims are preempted by the Copyright Act,
`courts distinguish conversion of intangible property from conversion of tangible property.
`“Conversion of tangible property involves actions different from those proscribed by the
`copyright laws, and thus is not preempted.” Oddo v. Ries, 743 F.2d 630, 635 (9th Cir.
`1984). By contrast, “where a plaintiff is only seeking damages from a defendant’s
`reproduction of a work – and not the actual return of a physical piece of property – the
`claim is preempted.” Firoozye, 153 F. Supp. 2d at 1130.
`Here, Ryoo alleges that Han copied various website content including text and
`photographs. (FAC ¶ 17.) These are indisputably intangible property. Because Ryoo
`seeks damages arising from this intangible property’s reproduction, this claim is
`preempted. See Firoozye, 153 F. Supp. 2d at 1130. Accordingly, the Court GRANTS the
`Motion as to Ryoo’s claim for conversion.
`
`
`
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`1 For this reason, the Court is not persuaded by Ryoo’s argument that this prong “cannot
`and should not be assumed at the pleading stage.” (Opp. at 14.)
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 5 of 8 Page ID #:189
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`2.
`Negligent Interference with Prospective Economic Advantage
`
` Date: July 9, 2015
`
`
`
`The Court next considers Ryoo’s claim for negligent interference with prospective
`economic advantage.
`The elements of this tort are: (1) an economic relationship between the plaintiff
`and a third party, (2) the defendant’s knowledge of the relationship, (3) the defendant’s
`negligence, and (4) that negligence interfering with or disrupting the relationship between
`the plaintiff and the third party. N. Am. Chem. Co. v. Super. Ct., 59 Cal. App. 4th 764,
`786 (1997).
`Han argues this claim is preempted because the alleged disruption consists of his
`alleged copying of Ryoo’s website. (Mot. at 6-7.) The Court agrees. Economic
`interference claims are preempted by the Copyright Act where the alleged “interference
`[is] based on the misappropriation or improper use of one’s exclusive right to exploit a
`protected work” because “such a claim essentially restates [an] infringement claim.”
`Wild v. NBC Universal, 788 F. Supp. 2d 1083, 1110 (C.D. Cal. 2011). Here, Ryoo’s
`interference claim is based on Han’s alleged copying of Ryoo’s website. (FAC ¶¶ 60-
`63.) Thus, it is preempted.2
`Accordingly, the Court GRANTS the Motion as to Ryoo’s claim for negligent
`interference with prospective economic advantage.
`
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`3.
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`False Advertising and Unfair Competition
`
`
`The Court next considers Ryoo’s false advertising and unfair competition claims.
`As with the previous claims, Han argues preemption attains here because these
`claims essentially turn on Han’s alleged copying of Ryoo’s website. (Mot. at 7.)
`In opposition, Ryoo argues these claims are qualitatively different from its
`copyright infringement claim because they are “based on [the] conversion and
`
`
`2 Ryoo additionally argues an “extra element” test is met here because Han had a
`“special relationship” with Ryoo that was disrupted by Han’s copying. (Opp. at 9.) Ryoo,
`however, provides no factual or legal support for this contention. Accordingly, the Court does
`not find that the claim is saved from preemption on this basis.
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 6 of 8 Page ID #:190
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
` Date: July 9, 2015
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`interference claims[,] which implicate rights beyond those protected by the Copyright
`Act.” (Opp. at 12.) For the reasons already noted, however, this argument is not
`persuasive.
`Ryoo alternatively argues that dismissal of these claims is not warranted because
`they are in essence claims for “passing off,” which are ordinarily not preempted. (Opp. at
`8.) “Passing off” occurs when a producer misrepresents his own goods or services as
`someone else’s. “Reverse passing off” occurs when a producer misrepresents someone
`else’s goods or services as his own. See Dastar Corp. v. Twentieth Century Fox Film
`Corp., 539 U.S. 23, 27-28 (2003); 15 U.S.C. § 1125(a). Here, Han allegedly took Ryoo’s
`website content and used it for his own website as if it were his own; this is a “reverse
`passing off” claim rather than a “passing off” claim. “Reverse passing off” claims are
`preempted unless the plaintiff alleges bodily appropriation and seeks more than mere
`monetary damages. Aagard v. Palomar Builders, Inc., 344 F. Supp. 2d 1211, 1217 (E.D.
`Cal. 2004). Ryoo alleges neither, and could not seek anything more than monetary
`damages, as he admits Han has ceased the alleged infringement. (FAC ¶ 33.) Thus, these
`claims cannot escape preemption on this basis.
`Accordingly, the Court GRANTS the Motion as to Ryoo’s state-law claims for
`false advertising and unfair competition.
`
`
`4.
`
`Unjust Enrichment and Accounting
`
`
`
`The Court finally considers Ryoo’s claims for unjust enrichment and accounting.
`Under California law, “[t]here is no cause of action for unjust enrichment. Rather,
`unjust enrichment is a basis for obtaining restitution based on quasi-contract or
`imposition of a constructive trust.” McKell v. Washington. Mut., Inc., 142 Cal. App. 4th
`1457, 1490 (2006). Thus, dismissal is proper on this basis. Moreover, where an unjust
`enrichment claim rests on the same facts and asserts the same rights as a copyright claim,
`it is preempted. See Firoozye, 153 F. Supp. 2d at 1128 (dismissing unjust enrichment
`claim that “at its core alleges that defendants unfairly benefitted from their unauthorized
`use of WebStash,” which is “equivalent to the rights protected in . . . the Copyright Act”);
`Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1027 (N.D. Cal. 2003) (“While a
`claim for unjust enrichment may require proof that a benefit was conferred on the
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`CIVIL MINUTES – GENERAL
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 7 of 8 Page ID #:191
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
` Date: July 9, 2015
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`defendant, where the unjust enrichment arises from defendants’ unauthorized use of a
`copyrighted work, such an extra element does not qualitatively change the rights at issue,
`the rights the plaintiff holds in the copyrighted work, and does not avoid preemption.”).
`Accordingly, dismissal of this claim is proper.
`
`The Court finally considers Ryoo’s claim for accounting. Ryoo argues an
`accounting is necessary to determine the precise amount of damages arising from Han’s
`copying. (Opp. at 12.) To the extent the accounting relates to the copyright claim,
`however, it is preempted. See Young Money Entm’t, LLC v. Digerati Holdings, LLC, No.
`2:12-CV-07663-ODW, 2012 WL 5571209, at *9 (C.D. Cal. Nov. 15, 2012) (rejecting
`plaintiff’s argument that an accounting was necessary where damages were unknown
`because “the Copyright Act already affords [plaintiff] an adequate means by which to
`calculate damages”). Moreover, because Ryoo’s state-law claims have been dismissed,
`there can be no accounting arising from them. Accordingly, dismissal of this claim is
`proper.
`
`Thus, the Court GRANTS the Motion as to Ryoo’s unjust enrichment and
`accounting claims.
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`B.
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`Request for Attorneys’ Fees and Punitive Damages
`
`
`
`
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`Han finally moves to dismiss Ryoo’s requests for attorneys’ fees and punitive
`damages.
`In opposition, Ryoo agrees dismissal of these requests is proper as to its copyright
`infringement claim, “subject to their reintroduction if [Ryoo] discover[s] that Defendant’s
`infringing conduct extends past Plaintiff’s copyright registration date.” (Opp. at 13.)
`While Ryoo argues that the attorneys’ fees request remains viable based on its Unfair
`Competition Law claim, that claim has been dismissed. Thus, there is presently no basis
`for Ryoo to recover attorneys’ fees.
`
`Accordingly, the Court GRANTS the Motion as to Ryoo’s request for attorneys’
`fees and punitive damages.
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`Case 8:15-cv-00308-JLS-RNB Document 29 Filed 07/09/15 Page 8 of 8 Page ID #:192
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`____________________________________________________________________________
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES – GENERAL
`
` Date: July 9, 2015
`
`
`Case No. SACV 15-308-JLS (RNBx)
`Title: Ryoo Dental, Inc. v. Thomas D. Han DMD et al.
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, the Court GRANTS the Motion. Ryoo’s state-law
`claims are preempted by the Copyright Act and are DISMISSED WITH PREJUDICE.
`See Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003) (holding
`that dismissal with prejudice is appropriate where a claim cannot be saved by
`amendment). Ryoo’s requests for attorneys’ fees and punitive damages are DISMISSED
`WITHOUT PREJUDICE.
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`Initials of Preparer: tg
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`CIVIL MINUTES – GENERAL
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