Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 1 of 17
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`UAB “PLANNER5D”,
`
`Plaintiff,
`
`v.
`
`FACEBOOK, INC., et al.,
`
`Case No. 19-cv-03132-WHO
`
`ORDER GRANTING MOTIONS TO
`DISMISS COPYRIGHT CLAIMS;
`DENYING MOTIONS TO DISMISS
`TRADE SECRET CLAIMS;
`GRANTING MOTIONS TO SEAL
`
`Defendants.
`
`Re: Dkt. Nos. 68, 69, 70, 75
`
`
`
`
`
`UAB Planner 5D (“Planner 5D”) operates a home design website that allows users to
`
`create virtual interior design scenes using a library of virtual objects (such as tables, chairs, and
`
`sofas) to populate the scenes. It claims that it owns copyrights in these three-dimensional objects
`
`and scenes, and in the compilation of objects and scenes, as well as trade secrets in the underlying
`
`data files. It filed this suit against defendants Facebook, Inc., Facebook Technologies, LLC
`
`(collectively “Facebook”), and The Trustees of Princeton University (“Princeton”) for copyright
`
`infringement and trade secret misappropriation.
`
`I granted Princeton’s and Facebook’s motions to dismiss the original Complaint and gave
`
`Planner 5D leave to address the deficiencies laid out in my order. See UAB “Planner 5D” v.
`
`Facebook, Inc., No. 19-CV-03132-WHO, 2019 WL 6219223 (N.D. Cal. Nov. 21, 2019).
`
`Princeton and Facebook now move to dismiss Planner 5D’s amended claims, as alleged in the
`
`First Amended Complaint filed in this case and the Copyright Complaint filed in Case No. 3:20-
`
`cv-2198-WHO, which has been consolidated with this case. For the reasons set forth below, the
`
`motions to dismiss the copyright infringement claims are GRANTED but the motions to dismiss
`
`the trade secret misappropriation claims are DENIED. Planner 5D has leave to amend its
`
`copyright infringement claims except for its claim in the alleged compilation of objects, which is
`
`dismissed with prejudice.
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 2 of 17
`
`
`
`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
`
`BACKGROUND
`
`I detailed Planner 5D’s allegations in my previous order. See Planner 5D, 2019 WL
`
`6219223, at *2–4 (N.D. Cal. Nov. 21, 2019). I incorporate that discussion by reference here.
`
`I dismissed Planner 5D’s copyright infringement claims because it failed to allege that it
`
`met the threshold registration requirement of 17 U.S.C. § 411(a). I gave it the choice to either
`
`sufficiently allege that its works are non-United States works that are exempt from registration or
`
`dismiss this suit and bring another suit after registering with the Copyright Office. Id. at *7. I
`
`also granted leave to explain “the originality or creativity of the objects, scenes, and compilations
`
`of objects and scenes” and “that copyrightable elements were copied.” Id. at *1.
`
`The trade secret misappropriation claims were dismissed as well. I gave leave to explain
`
`“how the structure of its website and the Terms of Service maintained secrecy of the underlying
`
`data files of the objects and scenes” and “what improper means Princeton and Facebook took to
`
`obtain these files.” Id.
`
`Planner 5D amended its trade secret misappropriation claims in the First Amended
`
`Complaint, realleging its claim concerning the individual object and scene data files, and adding
`
`claims for the compilation of object and scene data files. See First Amended Complaint (“FAC”)
`
`[Dkt. No. 53]. It then submitted two registration applications to the Copyright Office on
`
`December 19, 2019. One application related to its objects and the other related to an alleged
`
`compilation of scenes. In response, the Copyright Office issued two certificates of registration.
`
`See Copyright Complaint (“Copyright Compl.”) [Dkt. No. 1] in Case No. 3:20-cv-2198-WHO, Ex.
`
`A (Registration No. TX-8-818-101 for work titled “Planner 5D objects” and Registration No. 8-
`
`818-102 for work titled “Planner 5D scenes”). Both certificates state that Planner 5D completed
`
`and published its works in 2019. Id. Planner 5D subsequently filed a new lawsuit with a single
`
`count for infringement of those two copyrights. Copyright Compl. ¶¶ 95–105. I designated that
`
`lawsuit as related to the first lawsuit and consolidated the two actions. See Related Case Order
`
`[Dkt. No. 63]; Order Consolidating Cases [Dkt. No. 64].1
`
`
`1 Planner 5D had to file a separate suit to reassert its copyright claims after satisfying the
`registration requirement because “permitting amendment to cure a claimant’s failure to register its
`2
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 3 of 17
`
`
`
`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
`
`Princeton and Facebook now move to dismiss the copyright and trade secret claims for
`
`failure to state a claim. See Notice of Motion and Motion to Dismiss by The Trustees of Princeton
`
`University to Dismiss the Complaints (“Princeton MTD”) [Dkt. No. 68]; Facebook Inc. and
`
`Facebook Technologies, LLC’s Notice of Motion and Memorandum of Points and Authorities in
`
`Support of Their Motion to Dismiss Planner 5D’s Amended Complaint (“Facebook MTD”) [Dkt.
`
`No. 69].
`
`LEGAL STANDARD
`
`Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint
`
`if it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to
`
`dismiss, the plaintiff must allege “enough facts to state a claim to relief that is plausible on its
`
`face.” See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible
`
`when the plaintiff pleads facts that “allow the court to draw the reasonable inference that the
`
`defendant is liable for the misconduct alleged.” See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
`
`(citation omitted). There must be “more than a sheer possibility that a defendant has acted
`
`unlawfully.” Id. While courts do not require “heightened fact pleading of specifics,” a
`
`plaintiff must allege facts sufficient to “raise a right to relief above the speculative level.” See
`
`Twombly, 550 U.S. at 555, 570.
`
`In deciding whether the plaintiff has stated a claim upon which relief can be granted, the
`
`court accepts the plaintiff’s allegations as true and draws all reasonable inferences in favor of the
`
`plaintiff. See Usher v. City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the court
`
`is not required to accept as true “allegations that are merely conclusory, unwarranted deductions of
`
`fact, or unreasonable inferences.” See In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir.
`
`2008).
`
`
`copyright before suing would undermine the objectives animating the Supreme Court’s decision in
`Fourth Estate.” See Izmo, Inc. v. Roadster, Inc., No. 18-cv-06092-NC, 2019 WL 2359228, at *2
`(N.D. Cal. Jun. 4, 2019) (citing Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S.
`Ct. 881, 887 (2019)); see Order on Joint Motion for Clarification [Dkt. No. 59] 3 (“Once Planner
`5D has satisfied Section 411(a)’s registration requirement, it can re-assert its copyright claims in a
`new lawsuit, which would then be related to, and consolidated with, the trade secret claims still
`pending in this lawsuit.”).
`
`3
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 4 of 17
`
`
`
`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
`
`If the court dismisses the complaint, it “should grant leave to amend even if no request to
`
`amend the pleading was made, unless it determines that the pleading could not possibly be cured
`
`by the allegation of other facts.” See Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). In
`
`making this determination, the court should consider factors such as “the presence or absence of
`
`undue delay, bad faith, dilatory motive, repeated failure to cure deficiencies by previous
`
`amendments, undue prejudice to the opposing party and futility of the proposed amendment.” See
`
`Moore v. Kayport Package Express, 885 F.2d 531, 538 (9th Cir. 1989).
`
`I.
`
`COPYRIGHT CLAIMS
`
`DISCUSSION
`
`A.
`
`Registration Requirement under Section 411(a)
`
`Section 411(a) of the Copyright Act provides that “no civil action for infringement of the
`
`copyright in any United States work shall be instituted until preregistration or registration of the
`
`copyright claim has been made” with the Copyright Office. 17 U.S.C. § 411(a). For an
`
`infringement action to proceed, it is necessary for the plaintiff to “plausibly plead[] on its face”
`
`copyright registrations covering the works that the defendant allegedly infringed. Sara Designs,
`
`Inc. v. A Classic Time Watch Co. Inc., 234 F. Supp. 3d 548, 555 (S.D.N.Y. 2017).
`
`Princeton and Facebook argue that Planner 5D did not register the works it alleged were
`
`infringed in this action. Princeton MTD 9; Facebook MTD 8. The Copyright Complaint alleges
`
`that Princeton’s researchers downloaded Planner 5D’s works sometime around 2016, which
`
`Facebook later copied as well. Copyright Compl. ¶¶ 59–61, 77. Yet Planner 5D’s two copyright
`
`registration certificates plainly state that the deposited works were “completed” and “first
`
`published” in 2019. Id., Ex. A at 2, 4 (registration for “Planner 5D objects” states that the work
`
`was created in 2019 and published on December 17, 2019, and registration for “Planner 5D
`
`scenes” states that the collection of scenes was created in 2019 and published on December 19,
`
`2019).
`
`Accordingly, defendants argue that Planner 5D cannot sue for alleged infringement that
`
`occurred before it created the works registered with the Copyright Office. Because it failed to
`
`register a copyright in the works on its website as they existed at the time defendants allegedly
`
`4
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 5 of 17
`
`
`
`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
`
`copied them around 2016, they contend that the registration requirement has not been met and
`
`warrants dismissal of the copyright infringement claim. See I.M.S. Inquiry Mgmt. Sys., Ltd. v.
`
`Berkshire Info. Sys., Inc., 307 F. Supp. 2d 521, 527 (S.D.N.Y. 2004) (dismissing claim where
`
`plaintiff sought to satisfy the registration requirement with a registration for a work created and
`
`published the year after the alleged infringement, because “the registered work is not the same as
`
`the work which was supposedly infringed”).
`
`In response, Planner 5D submits its underlying application to the Copyright Office along
`
`with subsequent email communication that it argues make clear that the registration encompasses
`
`the entire body of material created during the periods in question. The original application for its
`
`objects stated that the work was completed in 2011 and first published on February 1, 2012. See
`
`Declaration of Naomi Jane Gray (“Gray Decl.”) [Dkt. No. 76-1], Ex. A at 1 (copy of application to
`
`register Planner 5D’s objects). Similarly, the original application for its compilation of scenes
`
`stated that the work was completed in 2012 and first published on May 18, 2012. Id., Ex. B at 1
`
`(copy of application to register Planner 5D’s scenes). Each application also included a “note” to
`
`the Copyright Office stating that Planner 5D completed those programs on December 17, 2019.
`
`Id., Ex. A at 3, Ex. B at 3.
`
`The Copyright Office responded to these applications, seeking clarification of the
`
`completion date. For the “Planner 5D objects” application, it wrote:
`Your note to our Office states the work was completed “...December
`17, 2019; Planner 5D claims the entire work as it existed on December
`17, 2019.” However, the application gives a “year of completion” of
`“2011” and a publication date of “2/11/2012.” However, a work
`cannot be completed in 2019 and published in 2012. Please let us
`know the year of completion and complete publication date (month,
`day, year) for this particular version of the work.
`
`Id., Ex. C. Similarly, for the “Planner 5D scenes” application, the Copyright Office wrote:
`Your note to our Office states the work was completed “...December
`17, 2019; Planner 5D claims the entire work as it existed on December
`17, 2019.” However, the application gives a “year of completion” of
`“2012” and a publication date of “5/18/2012.” However, a work
`cannot be completed in 2019 and published in 2012. Please let us
`know the year of completion and complete publication date (month,
`day, year) for this particular version of the work.
`
`Id., Ex. D. In both cases, Planner 5D responded that the year of completion was 2019 and the
`
`publication date was December 17, 2019. Id., Exs. C, D.
`
`5
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 6 of 17
`
`
`
`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
`
`The Copyright Office policy specifies that when registering a computer program, the scope
`
`of a registration of a specific version of the program is limited to “the new material” in that
`
`version and not any “[p]reviously published material.” Copyright Office Compendium § 721.8.
`
`Defendants argue that these email communications show that Planner 5D amended and limited its
`
`applications to the versions of its works that were completed and published in 2019, so the
`
`registrations issued covered only the new material (i.e., the new objects and scenes) that was
`
`completed in 2019.
`
`Planner 5D asserts that this record shows that the registration covers the objects created
`
`from 2011 through 2019 and the scenes created from 2012 to 2019, and accordingly covers all of
`
`the objects and scene compilations Princeton scraped from its website in 2016, and which
`
`Facebook subsequently copied as well. I suspect that is what Planner 5D intended to do with its
`
`application but I cannot conclude that is what the Copyright Office granted when it issued the
`
`registration certificates, which clearly state that the year of completion is 2019.
`
`Planner 5D’s attempt to distinguish the case law cited by defendants is unconvincing.
`
`Defendants cite to Oskar Sys., LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155 (C.D. Cal. 2010),
`
`where the court held that plaintiff could not “register and sue on a version of a software program
`
`that was created after the version that [the d]efendants allegedly copied.” Id. at 1163 (emphasis in
`
`original). Planner 5D distinguishes Oskar by relying on the statements it made in its registration
`
`application. Planner 5D’s Opposition to the Dismissal Motion of the Trustees of Princeton
`
`University (“Oppo. Princeton MTD”) [Dkt. No. 76] 9. But it has not cited to any authority that
`
`allows me to look at the underlying application to determine the scope of the registration
`
`certificate issued by the Copyright Office.
`
`Next, Planner 5D admits that it did not register its works as derivative works of previous
`
`versions of objects or an earlier compilation of scenes. It nonetheless argues that the principle of
`
`derivative works should apply here because its registrations encompass each individual object and
`
`each compilation of scenes created between 2011 and 2019. Oppo. Princeton MTD 7; see
`
`Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 746–47 (2d Cir. 1998) (registration of a
`
`derivative work can satisfy the requirements of Section 411(a) with respect to an unregistered
`
`6
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 7 of 17
`
`
`
`underlying work on which the registered derivative work is based when the same person or entity
`
`owns both works).2
`
`Planner 5D cannot rely on the principle of derivative works to save the fact that its
`
`registration certificates do not identify any prior versions of the works on which the registered
`
`versions were based. Nor does it plead any facts that attempt to connect the 2019 registrations to
`
`the 2016 objects and scenes.3 See Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218,
`
`1229–30 (11th Cir. 2008) (declining to apply Streetwise Maps to unregistered works when
`
`registration certificate did “not identify any unregistered preexisting works”); I.M.S., 307 F. Supp.
`
`2d at 529 (distinguishing Streetwise Maps when registration certificate did “not identify the
`
`preexisting work that is the foundation of this action”).
`
`As a last resort, Planner 5D contends that the scope of its registrations is arguably a fact
`
`question that cannot be resolved at this stage. But even accepting all well-pleaded factual
`
`allegations as true and construing all inferences in its favor, I am unable to conclude that it has
`
`provided a plausible factual basis from which I can infer that there is a valid copyright registration
`
`covering the specific works alleged in this action.
`
`This cannot be brushed off as a mere technical error. Whether Planner 5D’s registration
`
`encompasses all of its works created between 2011 and 2019, or just works it created in 2019,
`
`makes a difference here. The Copyright Complaint, supporting material, and case law do not lead
`
`me to make the inference that Planner 5D would like me to make. Because I cannot conclude that
`
`the copyright registrations cover the alleged works at issue, Planner 5D has failed to sufficiently
`
`plead compliance with the Section 411(a) requirement.
`
`
`2 While the Ninth Circuit has not addressed this issue, multiple opinions from district courts within
`the Ninth Circuit have found the analysis in Streetwise Maps to be persuasive. See, e.g., Brocade
`Comm’ns Sys., Inc. v. A10 Networks, Inc., No. 10-cv-3428-PSG, 2013 WL 831528, at *4 (N.D.
`Cal. Jan. 10, 2013); BESPAQ Corp. v. Haoshen Trading Co., No. 04-cv-3698-PJH, 2005 WL
`14841, at *2 (N.D. Cal. Jan. 3, 2005).
`
` 3
`
` At the time of the alleged infringement, Planner 5D claims that its website included 2,600
`objects and had a public gallery of over 45,000 scenes. Copyright Compl. ¶ 32 (objects); id. ¶ 46
`(scenes). Today, however, its website allegedly includes over 4,500 objects and “many millions
`of scenes.” Id. ¶ 32 (objects); id. ¶ 5 (scenes). While these allegations might show that Planner
`5D’s alleged collections have grown over time, they do not establish that any specific object or
`scene of Planner 5D’s website in 2016 was also on Planner 5D’s website in 2019.
`7
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 8 of 17
`
`
`
`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
`
`After much argument at the hearing, I asked Planner 5D’s counsel if there is a way he can
`
`fix this situation. He offered that he could file an application for all works up to 2015 or 2016, so
`
`that it could include the alleged works at issue in this lawsuit. I will give him the opportunity to
`
`do so. See Sara Designs, 234 F. Supp. 3d at 555 (giving plaintiff the opportunity to amend
`
`because “[p]laintiff’s counsel claimed at oral argument that there is additional documentation that
`
`would establish the coverage of the certificates of registration and also suggested that [p]laintiff
`
`may claim protection of certain watches as derivative works”).
`
`Facebook’s and Princeton’s motions to dismiss the copyright claims are GRANTED with
`
`leave to amend.
`
`B.
`
`Copyrightability of Planner 5D’s Alleged Object Compilation
`
`In addition to the lack of registration, Facebook argues that Planner 5D’s copyright claim
`
`in the alleged compilation of objects (“Object Compilation”) should be dismissed for the
`
`independent reason that it fails to allege any original selection or arrangement. Facebook MTD
`
`10.
`
`In order to allege copyright protection in a compilation, a plaintiff must allege that it made
`
`creative “choices as to selection and arrangement” of the compilation’s elements such that they
`
`“are made independently by the compiler and entail a minimal degree of creativity.” Feist
`
`Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348 (1991). I previously dismissed
`
`Planner 5D’s copyright infringement claim on the Object Compilation because it “[did] not allege
`
`that it ha[d] rendered any objects which were omitted from the compilation, and it [did] not allege
`
`any creative choices in selecting certain objects among many that it had rendered to include in the
`
`compilation.” Planner 5D, 2019 WL 6219223, at *8.
`
`Planner 5D now alleges that “[i]ts choices in assembling this [object] collection, from
`
`among the virtually infinite variety of possible ones, reflected both originality and creativity.”
`
`Copyright Compl. ¶ 41. This allegation is clarified in its opposition brief. Instead of claiming that
`
`it selected certain objects, from among those it created, to include in a compilation, it now claims
`
`that it selected certain objects, from among those it could have created, to bring into existence and
`
`include in a compilation of all objects it created. In other words, because it exercised authorial
`
`8
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 9 of 17
`
`
`
`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
`
`creativity in commissioning the objects that its employees created, it selected, from among the
`
`effectively infinite variety of possible digital objects it could have created, certain types of objects
`
`to bring into existence. Planner 5D’s Opposition to the Dismissal Motion of Facebook, Inc. and
`
`Facebook Technologies, LLC (“Oppo. Facebook MTD”) [Dkt. No. 74] 11.
`
`This is not enough to allege a creative selection. A selection of “all” of its own works that
`
`it created (or commissioned as works for hire) in a compilation does not automatically make the
`
`compilation original because it could have created fewer or different works. Planner 5D cites no
`
`cases that support this argument. Instead, it relies on a number of cases holding that a registration
`
`for a compilation extends protection to its constituent elements. But Facebook is not arguing a
`
`failure to allege originality of the Objects themselves. Instead, the originality of the selection and
`
`arrangement in the Object Compilation are at issue here.
`
`For example, in Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 85 (2d Cir. 2004), the
`
`Second Circuit found a compilation of “all” Dorothy Parker poems was uncreative as “‘all’ is not a
`
`selection.” Planner 5D attempts to distinguish Silverstein on grounds that the creator of the
`
`putative compilation had not commissioned the underlying works and did not hold any copyright
`
`interest in them. Had Dorothy Parker herself compiled a book of all of poems she ever wrote, it
`
`argues that she would have had a protectable copyright in the compilation, in addition to the
`
`individual poems, because she exercised creativity and selection in deciding which poems to
`
`create. Again, it fails to cite to any case law that supports such an outcome.
`
`Facebook’s motion to dismiss the copyright claims as to the alleged Object Compilation is
`
`GRANTED with prejudice.
`
`II.
`
`TRADE SECRET CLAIMS
`
`Planner 5D claims misappropriation of trade secrets under the federal Defend Trade
`
`Secrets Act (“DTSA”) and California’s Uniform Trade Secrets Act (“CUTSA”), which both
`
`“require a plaintiff to show [1] that it possessed a trade secret, [2] that the defendant
`
`misappropriated the trade secret, and [3] that the defendant’s conduct damaged the plaintiff.”
`
`WeRide Corp. v. Kun Huang, 379 F. Supp. 3d 834, 845 (N.D. Cal. 2019). I dismissed those
`
`claims because Planner 5D failed to allege the first two elements by not explaining “(i) how the
`
`9
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 10 of 17
`
`
`
`structure of its website and the Terms of Services maintained secrecy of the underlying data files
`
`of the objects and scenes; and (ii) what improper means Princeton and Facebook took to obtain
`
`these files.” Planner 5D, 2019 WL 6219223, at *1. Princeton and Facebook argue that the FAC
`
`does not and cannot cure these deficiencies.4
`
`A.
`
`Alleged Works as Trade Secrets
`
`Princeton contends that Planner 5D designed its website to transmit object or scene data
`
`files to its users’ browsers, where they were automatically stored in the browser’s “cache,” or
`
`temporary memory. Princeton MTD 12. Doing so enabled any user who knows how to access the
`
`cache on her computer to locate the files, and thus access and reproduce them. While the Terms of
`
`Service generally prohibited downloading material from the website, it expressly excluded “page
`
`caching” from its list of prohibitions. Declaration of Steven R. Englund in Support of Request for
`
`Judicial Notice by the Trustees of Princeton University (“Englund Decl.”) [Dkt. No. 68-2], Ex. 1
`
`at 2 (copy of Terms of Service, version 01 on April 18, 2012). Thus, it concludes, the structure of
`
`Planner 5D’s website and the website’s Terms of Service operate in tandem to provide free access
`
`to its object and scene data files to users, which means the files are not trade secrets. To present
`
`these arguments, Princeton submits multiple exhibits and a declaration that attests that any user
`
`can retrace the specified steps in finding and accessing Planner 5D’s data files.
`
`Princeton effectively mounts a factual challenge to rebut Planner 5D’s allegation that it
`
`used reasonable measure to protect its trade secrets. Use of extrinsic evidence is improper at this
`
`stage; Princeton can bring its factual challenge at the appropriate time. DVD Copy Control Ass’n
`
`v. Bunner, 116 Cal. App. 4th 241, 251 (2004) (secrecy is “a relative concept and requires a fact-
`
`intensive analysis”).5
`
`
`4 Planner 5D previously brought two trade secret misappropriation claims for its object and scene
`files. The FAC adds two additional claims separately alleging misappropriation of the
`compilations of its object and scene files. FAC ¶¶ 92-99, 107–113. Defendants bring the same
`arguments regarding both the individual data files and data file collections.
`
` 5
`
` Princeton’s request for judicial notice is GRANTED as to Exhibit 1 (copy of Planner 5D’s Terms
`of Service), Exhibit 2 (copy of cease and desist letter sent on March 14, 2019), and Exhibits 3 and
`4 (deposit copies that Planner 5D submitted to Copyright Office). See Request for Judicial Notice
`in Support of Princeton’s Motion to Dismiss the Complaints (“RJN”) [Dkt. No. 68-1]; Salinas
`Valley Mem’l Healthcare Sys. v. Monterey Peninsula Horticulture, Inc., No. 17-cv-7076-LHK,
`10
`
`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
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 11 of 17
`
`
`
`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
`
`Taking the factual allegations in the FAC as true, Planner 5D has sufficiently elaborated on
`
`both the structural and legal measures it used to protect its data files. Structurally, it alleges that
`
`each object and scene file is “located at a unique, and secret, Internet address on Planner 5D’s
`
`servers,” and that these addresses “are never shown to Planner 5D’s users.” FAC ¶ 33 (objects);
`
`id. ¶ 37 (scenes). When users wish to select, or move a desired object or scene on their screen,
`
`they simply select or manipulate images on the screen, never the underlying data files. Id. ¶ 33.
`
`Working in the background, Planner 5D’s proprietary software renders the images, invisibly
`
`retrieving the required data or scene files from their secret Internet address. Id. Identification of
`
`the secret locations or data files content is “impossible without circumventing Planner 5D’s
`
`software,” such as by “using software developer tools to monitor and intercept communications
`
`activity between Planner 5D’s software and its European severs.” Id. These methods were
`
`prohibited by its Terms of Service. Id. ¶ 40.
`
`The Terms of Service prohibited the “use [of] any ‘deep-link,’ ‘page-scrape,’ ‘robot,’
`
`‘spider’ or other automatic device, program, algorithm or methodology which perform similar
`
`functions to access, acquire, copy, or monitor any portion of the Planner5D project.” FAC ¶ 57.
`
`They also prohibited “’access[ing]” or “acquir[ing]” the underlying data files, which Planner 5D
`
`asserts protected the secrecy of its data files more securely than a standard non-disclosure
`
`agreement, which normally binds “parties who have been shown confidential information not to
`
`disclose it to others.” Id. ¶ 41.
`
`Both defendants cite to Arkeyo, LLC v. Cummins Allison Corp., 342 F. Supp. 3d 622, 632
`
`(E.D. Pa. 2017), to argue that these allegations are insufficient to show that reasonable steps were
`
`taken. Princeton MTD 15; Facebook MTD 13. There, plaintiff sought to enjoin defendant from
`
`
`2019 WL 2569545, at *4 (N.D. Cal. Jun. 21, 2019) (judicial notice of contract referenced in
`complaint); Kao v. Abbott Laboratories Inc., No. 17-cv-2790-JST, 2017 WL 5257041, at *3 (N.D.
`Cal. Nov. 13, 2017) (judicial notice of party’s letter that was “explicitly referenced in the
`complaint”); Newt v. Twentieth Century Fox Film Corp., No. 15-cv-2778-CBM-JPRx, 2016 WL
`4059691, at *2–3 (C.D. Cal. Jul. 27, 2016) (judicial notice of deposit copies of works at issue).
`
`However, as addressed above, the remainder of Princeton’s request as to Exhibits 5 through 14 is
`improper and is therefore DENIED.
`
`
`11
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 3:19-cv-03132-WHO Document 90 Filed 07/24/20 Page 12 of 17
`
`
`
`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
`
`selling coin counting machines that included its purported trade secret software. Arkeyo, 342 F.
`
`Supp. 3d at 625. After holding an evidentiary hearing to address plaintiff’s motion for preliminary
`
`injunction, the court decided that plaintiff had not done enough because it published a full set of
`
`its software on the internet without employing any of the industry standard protections for its
`
`source code, such as “encryption, password protection, code obfuscation, confidentiality
`
`provisions, or require users to abide by any terms of use for its software.” Id. at 631. Instead,
`
`plaintiff “committed the cyber equivalent of leaving its software on a park bench” because it
`
`posted its software on the internet and “made it publicly available to anyone who simply typed the
`
`‘new_software’ URL into a web browser, without taking any affirmative measure to prevent
`
`others from using its proprietary information.” Id. (citation omitted).
`
`The same cannot be said here, at least at the pleadings stage. Unlike Arkeyo, where the
`
`“[t]he URL was guessable to anyone who wanted to access the zip file because [plaintiff] did not
`
`take the basic precaution of giving the URL a random name,” Planner 5D alleges that it used a
`
`hard-to-guess URL and imposed restrictive terms of service. Arkeyo, 342 F. Supp. 3d at 630;
`
`Oppo. Facebook MTD 14; see FAC ¶¶ 33 (object files were located at “a unique, and secret
`
`Internet address on Planner 5D’s servers); id. ¶ 37 (same allegation as to scene files); id. ¶ 45
`
`(Planner 5D’s combined effect of structural and legal barri