Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 1 of 11 Page ID #:259
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
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`Present: Honorable JOSEPHINE L. STATON, UNITED STATES DISTRICT JUDGE
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` Terry Guerrero
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`Deputy Clerk
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`ATTORNEYS PRESENT FOR PLAINTIFF: ATTORNEYS PRESENT FOR DEFENDANT:
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`Not Present
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`Not Present
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`Court Reporter
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`PROCEEDINGS: (IN CHAMBERS) ORDER GRANTING DEFENDANT’S
`MOTION TO DISMISS PLAINTIFFS’ COMPLAINT (Doc. 12)
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`Before the Court is Defendant Institute of Latent Energy’s Motion to Dismiss
`Plaintiffs’ Complaint. (Mot., Doc. 12.) Plaintiffs Divine Dharma Meditation
`International Inc., Beverly Ngoc Hai Nguyen, and Thuan Duc Nguyen opposed, and
`Defendant replied. (Opp., Doc. 16; Reply, Doc. 17.) The Court finds this matter
`appropriate for decision without oral argument. Fed. R. Civ. P. 78; C.D. Cal. R. 7-15.
`Accordingly, the hearing set for May 27, 2016, at 2:30 p.m., is VACATED. Having read
`and considered the parties’ briefs, the Court GRANTS the Motion to Dismiss.
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` I. BACKGROUND
`
`The Complaint alleges the following facts:
`Plaintiff Divine Dharma Meditation International Inc. provides training courses to
`cultivate and practice meditation according to the teachings of the Founder Grandmaster
`Dasira Narada of the Divine Dharma. (Compl. ¶ 11, Doc. 1.) Plaintiff Thuan Duc
`Nguyen has established more than eighty such meditation centers worldwide. (Id. ¶ 11.)
`The Complaint identifies six copyrighted works that include text with artwork, two-
`dimensional graphic works, a hand-embroidered picture, and paintings of the
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`CIVIL MINUTES – GENERAL 1
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 2 of 11 Page ID #:260
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`Grandmaster Dasira Narada. (Id. ¶ 8.) These copyrights are individually owned by
`Thuan Duc Nguyen or are jointly owned by Thuan Duc Nguyen and Plaintiff Beverly
`Ngoc Hai Nguyen. (Id.) The Complaint attaches copies of the registration certifications
`for the copyrighted works, (Compl. Exs. 1-6, Doc. 1), and all six copyrights are
`nonexclusively licensed to Divine Dharma, (Compl. ¶¶ 9, 10).
`Defendant Institute of Latent Energy Studies similarly provides training courses to
`cultivate and practice meditation according to the teachings of Grandmaster Dasira
`Narada. (Id. ¶ 12.) Plaintiffs are informed and believe that in providing its training
`courses, ILES has copied substantial portions or made derivative reproductions of a two-
`dimensional graphic work, identified in Exhibit 1 to the Complaint, without license or
`permission. (Id. ¶ 13.) The Complaint attaches a copy of the U.S. Copyright Office’s
`Public Catalog entry for the allegedly infringing work, “Tien Si Dasira Narada,” as
`Exhibit 7. (Id. ¶ 14; Compl. Ex. 7, Doc. 1.) The Complaint also alleges that the
`infringing work incorporates protected elements of Plaintiffs’ other copyrighted
`materials. (Compl. ¶¶ 17, 24.) ILES has publicly displayed “Tien Si Dasira Narada” in
`various YouTube videos and at its place of business, (id. ¶ 15), and Divine Dharma’s
`attempts to have these videos taken offline have been prevented by ILES. (Id. ¶ 16.)
`Divine Dharma believes that ILES has received a direct financial benefit and has
`damaged Plaintiffs by marketing and selling the infringing work. (Id. ¶¶ 17, 18.)
`On February 9, 2016, Plaintiffs filed a Complaint that alleges the following claims
`against ILES: (1) copyright infringement, 17 U.S.C. § 101 et seq., and (2) unfair business
`practices, Cal. Bus. & Prof. Code § 17200 et seq. (Compl. ¶¶ 21-36.) ILES now moves
`to dismiss the Complaint in its entirety pursuant to Federal Rule of Civil Procedure
`12(b)(6).
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` II. LEGAL STANDARD
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`
`In deciding a motion to dismiss under Rule 12(b)(6), courts must accept as true all
`“well-pleaded factual allegations” in a complaint. Ashcroft v. Iqbal, 556 U.S. 662, 679
`(2009). Furthermore, courts must draw all reasonable inferences in the light most
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 3 of 11 Page ID #:261
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`favorable to the non-moving party. See Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d 992,
`998 (9th Cir. 2010). However, “courts ‘are not bound to accept as true a legal conclusion
`couched as a factual allegation.’” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)
`(quoting Papasan v. Allain, 478 U.S. 265, 286 (1986)). And while judicial review is
`generally limited to the face of a complaint, courts may properly consider “documents
`incorporated into the complaint by reference, and matters of which a court may take
`judicial notice.” Harris v. Amgen, Inc., 738 F.3d 1026, 1035 (9th Cir. 2013) (quoting
`Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007)).
` “To survive a motion to dismiss, a complaint must contain sufficient factual
`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal,
`556 U.S. at 678 (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.” Id. (citing Twombly, 550 U.S. at
`556). Although a complaint “does not need detailed factual allegations,” the “[f]actual
`allegations must be enough to raise a right to relief above the speculative level . . . .”
`Twombly, 550 U.S. at 555. Thus, 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).
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` III. DISCUSSION
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`A.
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`Local Rule 7-9
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`As a threshold issue, we first address Plaintiffs’ untimely opposition. In its reply
`brief, ILES observes that Plaintiffs filed an untimely opposition to its Motion. (Reply at
`5.) Because the hearing on this Motion was set for May 27, 2016, Plaintiffs’ opposition
`was due no later than May 6, 2016. See C.D. Cal. R. 7-9. However, Plaintiffs filed their
`opposition on May 9, 2016. (Opp.) Pursuant to Local Rule 7-12, the Court “may decline
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 4 of 11 Page ID #:262
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`to consider any . . . document not filed within the deadline set by order or local rule,” and
`“[t]he failure to file any required document . . . within the deadline[] may be deemed
`consent to the granting or denial of the motion.” C.D. Cal. R. 7-12 (emphasis added).
`ILES argues that due to the untimely filing, this Court should decline to consider
`Plaintiffs’ opposition. (Reply at 5.) We note that despite this untimely filing, ILES had
`adequate time to prepare and file a reply brief addressing Plaintiffs’ arguments.
`Accordingly, the Court shall consider the opposition brief.
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`B.
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`Copyright Infringement
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`
`The Court first addresses Plaintiffs’ sole federal-law claim. The Copyright Act
`bestows certain exclusive rights on the owner of a copyright, including the rights to
`reproduce, distribute, and display the work. 17 U.S.C. § 106 (2012). To state a claim for
`copyright infringement, a plaintiff must plausibly allege two elements: “‘(1) ownership of
`a valid copyright, and (2) copying of constituent elements of the work that are original.’”
`L.A. Printex Indus. v. Aeropostale, Inc., 676 F.3d 841, 846 (9th Cir. 2012), as am. on
`denial of reh'g and reh'g en banc (June 13, 2012) (quoting Feist Publ’ns, Inc. v. Rural
`Tel. Serv. Co., 499 U.S. 340, 362 (1991)).
`
`1.
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`Ownership of a Valid Copyright
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`ILES argues that Plaintiffs fail to adequately allege ownership of a valid copyright
`because (1) Plaintiffs failed to register their work within five years after the publication
`date, (2) ILES’ first date of publication is prior to Plaintiffs’ registration date, (3) ILES
`owns a valid copyright registration of the allegedly infringing work, and (4) Grandmaster
`Dasira Narada is not protectable by copyright. (Mem. at 6-10.) For the following
`reasons, we find these arguments unavailing.
`Plaintiffs allege that they own the copyrights or are nonexclusive licensees of the
`copyrights, and they attach copies of the certificates of registration. (Compl. ¶¶ 8-10,
`Exs. 1-6.) Such allegations are sufficient to satisfy the pleading requirement of
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 5 of 11 Page ID #:263
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`ownership of a valid copyright. See Mintel Learning Tech., Inc. v. Beijing Kaidi Educ.,
`No. C 06-7541 PJH, 2007 WL 2288329, at *9 (N.D. Cal. Aug. 9, 2007) (finding that a
`Plaintiff’s allegations that “it owns the copyright for [the product], and has obtained or
`has applied for copyright registration certificates for the [product]” are sufficient to
`“satisf[y] the pleading requirements” of copyright infringement). Some of the attached
`certificates of registration identify a publication date more than five years earlier than the
`registration date, (see Compl. Exs. 2, 5, 6), and others do not identify a publication date,
`(id. Exs. 1, 3, 4).1 The Copyright Act provides that the “evidentiary weight to be
`accorded to [a] certificate of a registration made [five years or more after the publication
`of a work] shall be within the discretion of the court,” whereas certificates of registration
`made before or within five years “shall constitute prima facie evidence of the validity of
`the copyright.” 17 U.S.C. § 410(c). However, this provision speaks to the certificate’s
`evidentiary weight, which is not considered at the pleading stage. Thus, at this stage in
`the litigation, Plaintiffs’ failure to register certain works within five years after the work’s
`initial publication date does not warrant dismissal of this claim.
`ILES also argues that dismissal is proper because the first date of publication of its
`allegedly infringing work, October 4, 2013,2 is earlier than the registration dates of
`Plaintiffs’ copyrighted works. (Mem. at 8-9.) Section 412 of the Copyright Act bars an
`award of statutory damages or of attorneys’ fees for (1) “any infringement of copyright in
`an unpublished work commenced before the effective date of its registration,” or (2) “any
`
`1 We observe that the Fan Declaration incorrectly suggests that Exhibit 1 to the
`Complaint identifies a publication date, (Fan Decl. ¶ 2, Doc. 12-2), and ILES’ response to
`Plaintiffs’ evidentiary objections incorrectly asserts that Exhibit 1 identifies a first publication
`date of 1978, (Def. Evidentiary Response, Doc. 17-1). Rather, the Fan Declaration and ILES’s
`evidentiary response refer to the year of completion identified in this document. (Compl. Ex. 1.)
`2 The parties challenge the admissibility of Exhibit B to the Fan Declaration: a copy of
`ILES’ certificate of registration as to the allegedly infringing work. (See Pls. Evidentiary
`Objection ¶ 1b, Doc. 16-1; Def. Evidentiary Response.) ILES does not request judicial notice of
`this document. However, we need not address or consider Exhibit B because Exhibit 7 to the
`Complaint identifies a first publication date of October 4, 2013. (Compl. Ex. 7.)
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`CIVIL MINUTES – GENERAL 5
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 6 of 11 Page ID #:264
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`infringement of copyright commenced after first publication of the work and before the
`effective date of its registration, unless such registration is made within three months
`after the first publication of the work.” 17 U.S.C. § 412.3 First, section 412 applies only
`to awards of statutory damages or of attorneys’ fees, and Plaintiffs also seek lost profits
`and injunctive relief. (See Compl. Prayer for Relief ¶¶ 37, 40.) Second, Plaintiffs allege
`that ILES infringes on all six of their copyrighted works, (Compl. ¶¶ 17, 24), two of
`which were registered before October 4, 2013, (Compl. Exs. 3-4). Accordingly,
`dismissal of the copyright infringement claim is unwarranted on this basis.
`Third, ILES argues that because it owns a valid copyright registration over the
`allegedly infringing work, Plaintiffs’ infringement claim must fail. (Mem. at 6-7.) First,
`we observe that ILES’ work was registered after all six of Plaintiffs’ copyrighted works
`were registered. (Compare Compl. Exs. 1-6 with Ex. 7.) Thus, Plaintiffs’ allegations
`continue to raise the plausible inference that ILES unlawfully infringed on Plaintiffs’
`registered and copyrighted materials before it registered its work. Second, to the extent
`ILES raises the issue of its own copyright registration to “offer . . . some evidence or
`proof to dispute or deny [Plaintiffs’] prima facie case of infringement,” ILES raises a
`factual issue that is inappropriate to resolve on a motion to dismiss. See Lamps Plus, Inc.
`v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1145 (9th Cir. 2003) (emphasis added)
`(quoting Entm’t Research Grp. v. Genesis Creative Grp., 122 F.3d 1211, 1217 (9th Cir.
`1997)).
`Finally, ILES argues that Grandmaster Dasira Narada is not protectable subject
`matter under copyright law. (Mem. at 9-10.) ILES asserts that facts or matters within the
`public domain, such as meditation and Dasira Narada, are not copyrightable. (Id. at 9.)
`
`
`3 ILES asserts that the 1976 Copyright Act governs “works published between January 1,
`1978 to March 1, 1989.” (Mem. at 8.) However, we observe that Plaintiffs’ copyright
`infringement claim relies on six copyrights, five of which are for works allegedly published after
`March 1989. (See Compl. Exs. 2-6.) Accordingly, at this stage in the litigation, we need not
`determine to what extent subsequent amendments to the 1976 Copyright Act apply to any pre-
`1989 works.
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 7 of 11 Page ID #:265
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`ILES further asserts that because “the ‘image of Grandmaster Dasira Narada’ and its
`‘expression’ are inseparable, duplicating the ‘expression of Grandmaster Dasira Narada’
`is not barred under the Copyright Act.”4 (Id. at 10.) It is true that the Copyright Act
`protects only the expression of ideas, not the ideas themselves. See Aeropostale, 676
`F.3d at 849 (citing Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002)).
`However, ILES’ reliance on this principle is misplaced. Based on the allegations in the
`Complaint, Plaintiffs do not seek to copyright the idea of meditation or the idea of
`portraying an image of Dasira Narada. “Rather, they seek to prevent the alleged
`usurpation of [their] artistic rendition” of Dasira Narada, which constitutes copyrightable
`subject matter. See Tiffany Design, Inc. v. Reno-Tahoe Specialty, Inc., 55 F. Supp. 2d
`1113, 1120 (D. Nev. 1999). Accordingly, at this stage in the litigation, dismissal is
`unwarranted on this basis.
`
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`2.
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`Copying
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`
`
`ILES also argues that Plaintiffs fail to adequately allege the second prong of a
`copyright infringement claim: copying of consistent elements of a work that is original.
`To adequately plead copying, a plaintiff must allege that (1) the defendant had access to
`the plaintiff’s work, and (2) the two works are substantially similar. Aeropostale, 676
`F.3d at 846. In determining substantial similarity, the Ninth Circuit requires a two-part
`
`
`4 ILES provides an exhibit that allegedly provides a “true and correct copy of printout[s]
`of Dasira Narada images which [are] publicly available” on certain websites. (See Fan Decl. ¶ 8,
`Doc. 12-2; Fan Decl. Ex. C, Doc. 12-3.) Unless a court converts a Rule 12(b)(6) motion into a
`motion for summary judgment, it generally cannot consider material outside of the complaint.
`Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir. 2001). This exhibit and the images
`contained therein are not attached to or incorporated by reference in the Complaint, and ILES
`does not seek judicial notice of this exhibit. Accordingly, the Court declines to consider this
`exhibit when resolving the Motion to Dismiss and, as such, need not address the parties’
`arguments concerning this exhibit.
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`CIVIL MINUTES – GENERAL 7
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 8 of 11 Page ID #:266
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`inquiry, namely whether (1) “‘an objective comparison of specific expressive elements’”
`demonstrates “‘articulable similarities’ between the two works,” and (2) “‘the ordinary,
`reasonable audience would find the works substantially similar in the total concept and
`feel of the works.’” Aeropostale, 676 F.3d at 848 (citations omitted).
`First, to the extent ILES raises its certificate of registration to contest whether
`Plaintiffs’ copyrighted material is sufficiently original, (Mem. at 6), we find this
`argument unavailing. It is true that “[o]riginality is the indispensable prerequisite for
`copyrightability.” Lamps Plus, 345 F.3d at 1146 (quoting N. Coast Indus. v. Jason
`Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992)). However, the question of
`originality in copyright law “‘is one of fact, not of law; one that may not be disposed of
`upon a motion to dismiss, but which must be established by proof.’”5 Olson v. Sperry,
`No. 2:14-CV-07901-ODW-ASx, 2015 WL 846547, at *2 (C.D. Cal. Feb. 26, 2015)
`(quoting Dezendorf v. Twentieth Century-Fox Film Corp., 99 F.2d 850, 851 (9th Cir.
`1938). Dismissal is therefore unwarranted on this basis.
`Second, we find that Plaintiffs adequately allege access. In the Complaint,
`Plaintiffs allege that Thuan Duc Nguyen has established more than eighty meditation
`centers worldwide “in which the copyright works serve as the backbone for the utilized
`manuals and lectures and in which the image of Desira Narada authored by Thuan Duc
`Nguyen is usually publicly displayed.” (Compl. ¶ 11.) Moreover, “[t]he textual
`copyright works, available in multiple languages, have been divided into books to
`provide members with specific knowledge and guidance[.]” (Id.) At the pleading stage,
`these allegations are sufficient to plead that the “[defendant] had an opportunity to view
`or to copy the [plaintiff’s work].” See Meta-Film Assoc., Inc. v. MCA, Inc., 586 F. Supp.
`1346, 1352 (C.D. Cal. 1984).
`
`
`5 Plaintiffs attached a list of allegedly “twenty-five distinguishing and creative elements”
`of the copyrighted work identified in Exhibit 2 to the Complaint. (Stroud Decl. ¶ 1, Doc. 16-2;
`Stroud Decl. Ex. 1, Doc. 16-2.) For the reasons stated above, we need not address or consider
`this list to resolve ILES’ Motion to Dismiss.
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 9 of 11 Page ID #:267
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`However, we find that Plaintiffs fail to adequately allege substantial similarity.
`Plaintiffs identify their six copyrighted works, and they provide a broad and generic
`description of each work. (Compl. ¶ 8.) Plaintiffs also provide certificates of registration
`for each copyrighted work, (Compl. Exs. 1-6), as well as a copy of a public catalog entry
`of ILES’ allegedly infringing work, (id. Ex. 7). Plaintiffs allege that ILES’ work
`infringes on their copyrighted works, (see id. ¶¶ 13, 14, 17, 24), but they provide no
`factual allegations of any articulable similarities between the allegedly infringing work
`and their own copyrighted material. An element of a claim that is “supported by mere
`conclusory statements[] do[es] not suffice.” Iqbal, 556 U.S. at 678 (citing Twombly, 550
`U.S. at 555).
`Accordingly, the Court GRANTS ILES’ Motion to Dismiss as to Plaintiffs’
`copyright infringement claim, which is DISMISSED WITHOUT PREJUDICE.6
`
`C.
`
`Plaintiffs’ State-Law Claim
`
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`
`
`
`Finally, ILES argues that Plaintiff’s unfair competition claim is preempted by the
`Copyright Act. (Mem. at 10-11.) 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. To avoid preemption, a state-law claim must include an “extra element that
`
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`6 In the conclusion of their opposition brief, Plaintiffs request an award of attorneys’ fees
`and costs in the amount of $5,635.00 for opposing a motion “based upon the erroneous
`interpretations of procedural law governing motions to dismiss under [Rule] 12(b)(6) and the
`lack of merit which Plaintiffs contend is patently obvious.” (Opp. at 21.) Plaintiffs provide no
`legal authority to support their request, and we find their arguments unavailing. Accordingly, we
`decline to award attorneys’ fees and costs to Plaintiffs.
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 10 of 11 Page ID #:268
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`changes the nature of the action so that it is qualitatively different from a copyright
`infringement claim.” Xerox Corp. v. Apple Comput., Inc., 734 F. Supp. 1542, 1550 (N.D.
`Cal. 1990) (quotation marks and citation omitted). Both prongs must be met for
`preemption to occur.
`Here, the unfair competition claim incorporates by reference paragraphs from the
`copyright infringement claim, (Compl. ¶ 30), and the paragraphs of consequence allege
`that ILES’ actions in manufacturing, marketing, publishing, and/or displaying the
`infringing works have caused irreparable injury, lost income, and dilution to the
`copyrighted works’ goodwill. (Id. ¶¶ 31-35.) In their opposition brief, Plaintiffs argue
`that preemption is improper because the UCL claim “seeks protection from the
`Defendant’s dilution of Plaintiff’s built-up good will and . . . from Defendant’s continued
`acts causing the Plaintiffs[] to lose control of their identity and business reputation.”
`(Opp. at 16.) Plaintiffs posit “[t]here is no remedy in the Copyright Act which covers this
`type of activity.” (Id.) However, this argument incorrectly frames the relevant issue.
`“The Copyright Act grants rights ‘to reproduce the copyrighted work in copies,’ ‘to
`prepare derivative works based upon the copyrighted work,’ ‘to distribute copies . . . to
`the public,’ and ‘to display the copyrighted work publicly.’” Kodadek v. MTV Networks,
`Inc., 152 F.3d 1209, 1213 (9th Cir. 1998) (alteration in original) (quoting 17 U.S.C.
`§ 106). Thus, by relying on allegations that ILES unfairly or unlawfully manufactured,
`marketed, published, and/or displayed counterfeit works, “it is clear that [Plaintiffs’] state
`law unfair competition claim is based solely on rights equivalent to those protected by the
`federal copyright laws.” Id.
`Moreover, the subject matter of the UCL claim 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 (citing 17 U.S.C. § 102(a)),
`such as “pictorial works,” see Kodadek, 152 F.3d at 1213. Thus, the works that Plaintiffs
`seek to protect are “clearly . . . work[s] that fall[] within the ‘subject matter’ of the
`Copyright Act.” Kodadek, 152 F.3d at 1213.
`
`Accordingly, we find that Plaintiffs’ UCL claim is preempted by the Copyright
`Act. The Court therefore GRANTS the Motion as to this claim. However, we grant this
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`CIVIL MINUTES – GENERAL 10
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`Case 8:16-cv-00226-JLS-JCG Document 21 Filed 05/25/16 Page 11 of 11 Page ID #:269
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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 16-226-JLS (JCGx) Date: May 25, 2016
`Title: Divine Dharma Meditation Int’l Inc. et al. v. Institute of Latent Energy Studies
`dismissal without prejudice in the event Plaintiffs can allege a UCL claim that is
`“qualitatively different from a copyright infringement claim.” Xerox Corp., 734 F. Supp.
`at 1550.
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` IV. CONCLUSION
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`For the foregoing reasons, the Court GRANTS the Motion to Dismiss. Plaintiffs’
`copyright infringement claim and UCL claims are DISMISSED WITHOUT
`PREJUDICE. To the extent Plaintiffs seek to amend their Complaint in accordance with
`this Order, they must do so within 21 days.
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`Initials of Preparer: tg
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`CIVIL MINUTES – GENERAL 11