Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page1 of 7
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`Case No.: C 06-04812 PVT
`ORDER GRANTING DEFENDANT
`EDITIONS LIMITED WEST, INC.’S
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT
`[Docket No. 127]
`
`))))))))))
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`VICTORIA RYAN,
`
`
`Plaintiff,
`
`v.
`EDITIONS LIMITED WEST, INC., et al.,
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`Defendants.
`___________________________________
`INTRODUCTION
`Defendant Editions Limited West, Inc. moves for partial summary judgment on the following
`two claims and issues: (1) whether plaintiff can obtain injunctive relief on a copyright infringement
`claim; and (2) whether plaintiff can obtain injunctive relief or any other type of relief on her claim
`alleging unfair competition. Plaintiff Victoria Ryan opposes the motion. Pursuant to Civ. L.R. 7-
`1(b), the motion is submitted without oral argument. Having reviewed the papers and considered the
`arguments of counsel, defendant’s motion for partial summary judgment is granted.1
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`The holding of this court is limited to the facts and the particular circumstances
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`underlying the present motion.
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`ORDER, page 1
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`Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page2 of 7
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`I.
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`FACTUAL AND PROCEDURAL BACKGROUND2
`Pursuant to a case management order dated January 23, 2008, plaintiff Victoria Ryan moved
`for partial summary judgment. The court granted partial summary judgment in favor of the
`defendant on the following claims: (1) breach of contract; and (2) slander of title. In addition, the
`court found only one instance of copyright infringement and the damages for copyright
`infringement, if proven, limited to $1.72.
`On July 22, 2008, defendant moved for partial summary judgment on the remaining claims
`and issues in the case. Remaining claims and issues in the case include the following: (1) whether
`plaintiff can obtain injunctive relief on the claim alleging copyright infringement; and (2) whether
`plaintiff can obtain injunctive or any other type of relief on the claim alleging unfair competition.
`DISCUSSION
`Good Cause Shown to Amend the Scheduling Order
`“A schedul[ing] order may be modified only for good cause and with the judge’s consent.”
`Fed. R. Civ. P. 16(b)(3)(4).
`At a further case management conference held on January 22, 2008, the parties agreed that
`plaintiff would move for summary judgment because no facts were in dispute and the claims could
`be resolved as a matter of law. See Case Management Conference Order dated January 23, 2008.
`(“January 23, 2008 Order”). In her motion for partial summary judgment, plaintiff addressed most,
`but not all, of the claims alleged in the complaint. The court granted the motion for partial summary
`judgment in defendant’s favor with respect to the breach of contract and slander in title claims. Now
`defendant moves for partial summary judgment on the remaining claims in an effort to fully resolve
`the case. Defendant claims that it had believed that all of the claims would have been addressed in
`plaintiff’s prior motion for summary judgment. Instead, plaintiff moved for summary judgment on
`the sole issue of whether plaintiff is the prevailing party in the action.3
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`The background facts are undisputed and have been set forth at length in the order dated
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`December 27, 2007. (“December 27, 2007 Order”).
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`Plaintiff’s motion for summary judgment on the above-specified issue has been taken
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`under submission.
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`ORDER, page 2
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`Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page3 of 7
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`Plaintiff objects to the instant motion on the grounds that defendant did not seek relief prior
`to filing the motion and argues that the motion contradicts the plan made by the parties at the prior
`case management conference.
`Having reviewed the January 23, 2008 Order and considered the arguments of counsel, good
`cause has been shown and the case management conference order is modified to allow consideration
`of defendant’s instant motion.
`II.
`Remaining Claims and Issues in Plaintiff’s Complaint
`Defendant identifies two remaining claims and issues in the complaint. As the parties agree
`the facts are not in dispute, defendant claims these issues may be resolved by the court as a matter of
`law. The two issues relate to whether plaintiff may obtain injunctive relief on the claim alleging
`copyright infringement and whether plaintiff is entitled to injunctive or any other type of relief on
`the claim alleging unfair competition.
`A.
`Legal Standards
`“Rule 56(c) provides that the trial judge shall [] grant summary judgment if there is no
`genuine issue as to any material fact and if the moving party is entitled to judgment as a matter of
`law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The
`advisory committee notes simply state that “[s]ummary judgment procedure is a method for
`promptly disposing of actions in which there is no genuine issue as to any material fact.” Fed. R.
`Civ. P. 56 (Advisory Committee Notes, 1937 Adoption).
`“The movant has the burden of showing that there is no genuine issue of fact, but the plaintiff
`is not thereby relieved of his own burden of producing in turn evidence that would support a jury
`verdict.” Anderson v. Liberty Lobby, Inc.,supra, 477 U.S. at 256. “Rule 56(e) itself provides that a
`party opposing a properly supported motion for summary judgment may not rest upon mere
`allegation or denials of his pleading, but must set forth specific facts showing there is a genuine
`issue for trial.” Id. The court must draw all reasonable inferences in favor of the non-moving party.
`Masson v. New Yorker Magazine, Inc., 501 U.S. 496, 520 (1991); Matsushita Elec. Indus. Co. v.
`Zenith Radio, 475 U.S. 574, 588 (1986). However, the opposing party “must do more than simply
`show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 588.
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`ORDER, page 3
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`

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`Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page4 of 7
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`B.
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`Plaintiff May Not Obtain Injunctive Relief on the Claim Alleging Copyright
`Infringement
`“Upon prevailing in a statutory copyright infringement action, the plaintiff may obtain, in
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`addition to a monetary recovery, a permanent injunction restraining further infringement, pursuant to
`Sec. 101(a) of the Copyright Act. Such injunctive relief ordinarily will not be granted when there is
`no probability or threat of continuing or additional infringements.” Shapiro, Bernstein & Co. v.
`4636 S. Vermont Ave., Inc., 367 F.2d 236, 242 (9th Cir. 1966).
`Here, there is no probability or threat of continuing or additional infringements. Defendant
`ELW stopped offering plaintiff Ryan’s posters for sale on June 7, 2007. Prior to June 7, 2007,
`defendant ArtSelect had sold only one canvas transfer of Ryan’s work. On June 9, 2007 defendant
`ELW notified defendant ArtSelect by email that plaintiff was no longer on the list of artists approved
`for canvas transfers. Moreover, Michael Jakota, CEO of defendant ELW, represents that it no longer
`offers plaintiff Ryan’s posters for sale and will not do so again in the future. Declaration of Michael
`Jakota In Support of Defendant Editions Limited West, Inc.’s Motion for Partial Summary
`Judgment, ¶ 2. (“Jakota Decl.”). Finally, the license agreement with defendant ArtSelect was
`canceled in June 2005 and the license agreement with defendant Environmental Graphics was
`canceled in December 2005.
`Plaintiff complains that “a finding of infringement presumptively entitles the plaintiff to an
`injunction” and that defendant ELW’s assurances that it will no longer infringe are inadequate.
`In light of the one prior sale of the canvas transfer, the canceled license agreements between
`defendant ELW and defendants ArtSelect and Environmental Graphics and the representations by
`defendant ELW that plaintiff’s works will no longer be offered for sale, the court finds that
`injunctive relief is not warranted here. See e.g., Phillips v. The Constitution Publishing Co., 72
`U.S.P.Q. 69, 70 (injunction is unnecessary where defendant avers it has no intention of violating
`plaintiff’s copyright in the future.). Accordingly, defendant’s motion for summary judgment as to
`this claim is granted.
`C.
`Alleged Claim of Unfair Competition is Preempted by the Copyright Act
`Plaintiff Ryan also alleges a claim for unfair competition presumably in violation of
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`ORDER, page 4
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`Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page5 of 7
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`California Business & Professions Code § 17200.4 Specifically, plaintiff alleges in her complaint
`that “[d]efendant Editions Limited maintained a policy in favor of permitting canvas transfers of
`posters it publishes without regard to whether the copyright owner authorized canvas transfers and
`promoted that policy by deceptive practices, and thus engaged in unfair competition.” Complaint, ¶
`72. Plaintiff further alleges that “[d]efendant Editions Limited encouraged the remaining defendants
`to produce, distribute and display copies and derivative works of Ms. Ryan’s original pastels or
`posters, and thus engaged in unfair competition.” Id. at ¶ 73.
`California Business & Professions Code § 17200 states in pertinent part that “unfair
`competition shall mean and include any unlawful, unfair or fraudulent business act or practice and
`unfair, deceptive, untrue or misleading advertising.” West’s Ann. Cal. Bus. & Prof. Code § 17200.
`“Any person who engages, has engaged, or proposes to engage in unfair competition may be
`enjoined in any court of competent jurisdiction.” West’s Ann. Cal. Bus. & Prof. Code § 17203.
`However, “[t]he Copyright Act expressly preempts ‘all legal and equitable rights that are equivalent
`to any of the exclusive rights within the general scope of copyright.” Goldberg v. Cameron, 482
`F.Supp.2d 1136, 1151 (N.D. Cal. 2007).
`The Ninth Circuit requires two elements to make a finding of preemption. Kodadek v. MTV
`Networks, Inc., 152 F.3d 1209, 1212 (9th Cir. 1998). First, the rights that a plaintiff asserts under
`state law must be ‘rights that are equivalent’ to those protected by the Copyright Act. Second, the
`work involved must fall within the ‘subject matter’ of the Copyright Act as specified in 17 U.S.C. §§
`102 and 103. Id.
`In considering the first element, the court must determine whether a claim for unfair
`competition involves rights that are equivalent to those protected by the Copyright Act. “‘In order
`not to be equivalent, the right under state law must have an ‘extra element’ that ‘changes the nature
`of the action so that it is qualitatively different from a copyright infringement claim.’” Goldberg v.
`Cameron, 482 F.Supp.2d at 1151. (internal citation omitted). Here, plaintiff bases her unfair
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`The complaint does not expressly state whether the claim of unfair competition arises
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`under Cal. Bus. & Prof. Code § 17200 or the common law. Nor does plaintiff make any clarification
`in her opposition. Indeed, in the opposition, plaintiff merely refers to “claims for unfair competition.”
`As such, the court presumes that plaintiff alleges unfair competition under Cal. Bus. & Prof. Code §
`17200.
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`ORDER, page 5
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`Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page6 of 7
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`competition claim on rights granted by the Copyright Act. In the averments of the copyright
`infringement claim, plaintiff alleges that “[d]efendants produced, distributed, and displayed copies
`of derivative works of the posters and original pastels without plaintiff’s prior authorization.”
`Complaint, ¶60. In addition, plaintiff alleges in her copyright infringement claim that “[d]efendant
`Editions Limited materially induced, caused, and contributed to said infringing production,
`distribution, and display” by the other defendants.” Id. at ¶ 62. The claim of unfair competition
`against defendant Editions Limited is based on copyright infringement and the encouragement or
`inducement of copyright infringement by the other defendants. Indeed, the language in the
`copyright infringement claim alleging defendant ELW’s “encouragement or inducement of
`copyright infringement” parallels language in the unfair competition claim alleging false
`representations and the “use of deceptive practices to promote a policy in favor of permitting canvas
`transfers.” Therefore, no ‘extra element’ between the two claims exists which changes the nature of
`the action so that it is qualitatively different from a copyright infringement action and the first
`element for finding preemption has been met.
`As for the second element, the court must determine whether plaintiff’s artwork falls within
`the subject matter of the copyright. In the December 27, 2007 Order, the court found only one
`instance of copyright infringement that related to plaintiff’s work entitled “Primavera I.” Defendant
`ArtSelect sold one canvas transfer and defendant Environmental Graphics never sold any wall
`murals. Therefore, the second element has also been met.
`Because both prongs have been met, the court finds that the claim for unfair competition is
`preempted by the Copyright Act. Accordingly, defendant’s motion for summary judgment is
`granted in its favor.
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`ORDER, page 6
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`Case5:06-cv-04812-PSG Document131 Filed09/15/08 Page7 of 7
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`CONCLUSION
`For the foregoing reasons, defendant’s motion for summary judgment is granted. The
`hearing scheduled on September 16, 2008 is vacated.
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`IT IS SO ORDERED.
`Dated: September 15, 2008
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`PATRICIA V. TRUMBULL
`United States Magistrate Judge
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`ORDER, page 7