Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 1 of 12
`
`Plaintiff,
`
`v.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`STEVEN M. GARDNER, an
`CASE NO. 3:13-cv-1108-GPC-JLB
`individual,
`ORDER:
`(1) GRANTING IN PART AND
`DENYING IN PART CAFEPRESS’S
`MOTION FOR SUMMARY
`JUDGMENT ON LIABILITY OR,
`ALTERNATIVELY, FOR PARTIAL
`SUMMARY JUDGMENT ON
`DAMAGES;
`[ECF No. 96]
`(2) GRANTING CAFEPRESS’S
`MOTION TO STRIKE;
`[ECF No. 128]
`(3) VACATING HEARING DATE
`
`CAFEPRESS INC., a Delaware
`Corporation, et al.,
`
`Defendants.
`
`I. INTRODUCTION
`Before the Court is Defendant CafePress Inc.’s (“CafePress”) Motion for
`Summary Judgment on Liability, or, Alternatively, for Partial Summary Judgment on
`Damages. (ECF No. 96.) Plaintiff Steven M. Gardner (“Gardner”) opposes. (ECF No.
`117.) CafePress replied to Gardner’s opposition. (ECF No. 127.)
`The parties have fully briefed the motion. (ECF Nos. 96, 117, 127.) The Court
`finds the motion suitable for disposition without oral argument pursuant to Civil Local
`
`- 1 -
`
`3:13-cv-1108-GPC-JLB
`
`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
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 2 of 12
`
`Rule 7.1(d)(1). For the reasons discussed below, the Court GRANTS IN PART AND
`DENIES IN PART CafePress’s motion for summary judgment or partial summary
`judgment.
`
`II. PROCEDURAL HISTORY
`On May 8, 2013, Gardner filed a complaint against CafePress alleging copyright
`infringement. (ECF No. 1.) On May 13, 2013, Gardner filed a first amended complaint.
`(ECF No. 3.) On October 14, 2014, Gardner filed a second amended complaint (the
`“SAC”). (ECF No. 112.)
`On August 28, 2014, CafePress filed a motion for summary judgment, or
`alternatively partial summary judgment on damages. (ECF No. 96.) On October 24,
`2014, Gardner filed an opposition to CafePress’s motion. (ECF No. 117.) On
`November 7, 2014, CafePress filed a response to Gardner’s opposition. (ECF No. 127.)
`On November 7, 2014, Gardner filed objections to the Declaration of Lindsay
`Moore, (ECF No. 96-2). (ECF No. 129.) On November 8, 2014, CafePress filed a
`motion to strike three documents: (1) the declaration of Darren J. Quinn, (ECF No.
`119); (2) Gardner’s response to CafePress’s statement of undisputed facts, (ECF No.
`124); and (3) Gardner’s objections to the declaration of Lindsay Moore, (ECF No.
`125). (ECF No. 128.)
`
`III. FACTUAL BACKGROUND
`CafePress is an e-commerce vendor that operates http://www.cafepress.com.
`(ECF No. 96-2 ¶ 3.) CafePress allows users to upload images of artwork, slogans, and
`designs for printing on items such as shirts, bags, and mugs. (Id. ¶ 5.) These images are
`uploaded at the direction of CafePress users and are stored on CafePress’s servers
`through its website. (Id. ¶¶ 3, 8.) CafePress provides its users services including
`“online service, printing, shipping and related services.” (Id. ¶ 38.) CafePress users
`can also offer the uploaded images for sale to third parties who then select one of
`CafePress’s unbranded items on which to print the image. (Id. ¶ 5.) These items or
`images are sold through either: (1) a user’s “virtual shop” on CafePress’s website, (2)
`
`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
`
`- 2 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 3 of 12
`
`the CafePress Marketplace on CafePress’s website, or (3) a CafePress “feed” on a third
`party website such as http://www.amazon.com or http://www.ebay.com . (Id. ¶ 16.)
`Once a customer purchases an item bearing a CafePress user’s uploaded image,
`CafePress’s employees then “hand print[]” the item. (ECF No. 119 ¶ 14; ECF No. 119-
`14.)
`
`Gardner is the holder of U.S. copyright registrations in four works at issue in this
`case: (1) “Alaska Wildlife”; (2) “Polar Bears 10 Hidden Bears”; (3) “Find 12 Tigers”;
`and (4) “Harmony of Wolves.” (ECF Nos. 118-1, 118-2, 118-3, 118-4, Exs. A–D.)
`Several CafePress users, including Beverly Teall, Lakin Southall, and PrideAndMore,
`uploaded copies of Gardner’s works to CafePress’s service. (ECF No. 119 ¶ 2.) These
`CafePress users then sold items bearing copies of Gardner’s works through CafePress’s
`service on http://www.cafepress.com and other websites. (ECF No. 119 ¶ 3.) CafePress
`generated approximately $6,000 in revenue from these allegedly infringing sales. (ECF
`1
`No. 96-2 ¶¶ 38, 42, 43.)
`CafePress also purchased advertisements which display copies of Gardner’s
`works. (See, e.g., ECF Nos. 118-7, 118-8, 118-9, 118-10, 118-11, 118-12, Exs. G–L)
`CafePress generated revenue from users who clicked on these advertisements. (ECF
`No. 121, Ex. 4.)
`
`IV. LEGAL STANDARD
`Federal Rule of Civil Procedure 56 empowers the Court to enter summary
`judgment on factually unsupported claims or defenses, and thereby “secure the just,
`speedy and inexpensive determination of every action.” Celotex Corp. v. Catrett, 477
`U.S. 317, 325, 327 (1986); FED. R. CIV. P. 56. Summary judgment is appropriate if the
`“pleadings, depositions, answers to interrogatories, and admissions on file, together
`with the affidavits, if any, show that there is no genuine issue as to any material fact
`
` ECF No. 96-2 ¶ 43 appears to contain two typos referring to this number as
`1
`$6,320 rather than $6,230 which would be the number obtained from adding the two
`revenue figures in ECF No. 96-2 ¶¶ 38, 42. In any event, whether the amount is $6,320
`or $6,230 is immaterial for the purposes of this order.
`
`- 3 -
`
`3:13-cv-1108-GPC-JLB
`
`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
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 4 of 12
`
`and that the moving party is entitled to judgment as a matter of law.” FED. R. CIV. P.
`56(c). A fact is material when it affects the outcome of the case. Anderson v. Liberty
`Lobby, Inc., 477 U.S. 242, 248 (1986).
`The moving party bears the initial burden of demonstrating the absence of any
`genuine issues of material fact. Celotex, 477 U.S. at 323. The moving party can satisfy
`this burden by demonstrating that the nonmoving party failed to make a showing
`sufficient to establish an element of his or her claim on which that party will bear the
`burden of proof at trial. Id. at 322–23. If the moving party fails to bear the initial
`burden, summary judgment must be denied and the Court need not consider the
`nonmoving party’s evidence. Adickes v. S.H. Kress & Co., 398 U.S. 144, 159–60
`(1970).
`Once the moving party has satisfied this burden, the nonmoving party cannot rest
`on the mere allegations or denials of his pleading, but must “go beyond the pleadings
`and by her own affidavits, or by the ‘depositions, answers to interrogatories, and
`admissions on file’ designate ‘specific facts showing that there is a genuine issue for
`trial.’” Celotex, 477 U.S. at 324 (citing FED. R. CIV. P. 56 (1963)). If the non-moving
`party fails to make a sufficient showing of an element of its case, the moving party is
`entitled to judgment as a matter of law. Id. at 325. “Where the record taken as a whole
`could not lead a rational trier of fact to find for the nonmoving party, there is no
`‘genuine issue for trial.’” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
`574, 587 (1986) (citing FED. R. CIV. P. 56 (1963)). In making this determination, the
`Court must “view [] the evidence in the light most favorable to the nonmoving party.”
`Fontana v. Haskin, 262 F.3d 871, 876 (9th Cir. 2001). The Court does not engage in
`credibility determinations, weighing of evidence, or drawing of legitimate inferences
`from the facts; these functions are for the trier of fact. Anderson, 477 U.S. at 255.
`V. EVIDENTIARY OBJECTIONS
`CafePress objects to paragraphs 2, 4, 5, 6, and 9, and exhibits 1, 2, 8, 12, and 13
`of the declaration of Darren J. Quinn, (ECF No. 119), for lack of personal knowledge,
`
`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
`
`- 4 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 5 of 12
`
`speculation, relevance, and lack of authentication. (ECF No. 128-1, at 1–5.) As the
`objected to paragraphs and exhibits are immaterial to the Court’s ruling on this motion,
`the Court has not considered the challenged evidence. To the extent that any
`objected-to-evidence is relevant and relied on by the court herein, the court overrules
`any asserted objections to that evidence.
`CafePress argues that Gardner’s response to CafePress’s statement of undisputed
`facts, (ECF No. 124), and Gardner’s objections to the declaration of Lindsay Moore,
`(ECF No. 125), should be stricken because they were filed after the deadline. (ECF No.
`128-1, at 5.) Generally, good cause must be shown to extend a deadline. See FED. R.
`CIV. P. 6(b)(1). This Court entered a briefing schedule setting the deadline to oppose
`CafePress’s motion as October 24, 2014. (ECF No. 98.) Gardner did not file his
`response to CafePress’s statement of facts and his objections to the declaration of
`Lindsay Moore until November 7, 2014, approximately two weeks after the deadline
`to oppose and (See ECF Nos. 98, 124, 125.) To date, Gardner has not responded to
`CafePress’s motion to strike and thus has not shown good cause. Accordingly, the
`Court GRANTS CafePress’s motion to strike and strikes ECF Nos. 124 and 125.
`VI. DISCUSSION
`
`A. Contributory Infringement
`CafePress argues that the undisputed facts show that it is not liable for
`contributory infringement. (ECF No. 96-1, at 14–17.) Indeed, Gardner states that he
`“does not contend[] that CafePress is liable for contributory infringement.” (ECF No.
`117, at 21.) Accordingly, the Court GRANTS CafePress’s motion for summary
`judgment on Gardner’s contributory infringement cause of action.
`B. Direct Infringement
`1. Direct Liability
`There are three elements to a prima facie case of direct infringement: (1)
`ownership of the allegedly infringed material, (2) violation of at least one exclusive
`right granted to copyright holders under 17 U.S.C. § 106, and (3) volitional conduct by
`
`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
`
`- 5 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 6 of 12
`
`the defendant. Fox Broad. Co. v. Dish Network L.L.C., 747 F.3d 1060, 1067 (9th Cir.
`2014) (holding that a direct infringement claim requires that “the defendant cause the
`copying”) (citing Cartoon Network LP v. CSC Holdings, Inc. (“Cablevision”), 536 F.3d
`121, 130 (2d Cir. 2008)); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159
`(9th Cir. 2007). 17 U.S.C. § 106 grants four rights to the holders of graphical
`copyrights: (1) reproduction, (2) derivative creation, (3) distribution, and (4) public
`display. 17 U.S.C. § 106. Gardner argues that CafePress violated all four rights granted
`to him as a holder of a graphical copyright. (ECF No. 117, at 6–13.)
`As an initial matter, the parties dispute whether the Ninth Circuit has ruled on
`whether direct infringement requires volitional conduct. (Compare ECF No. 117, at 14
`with ECF No. 127, at 2–3.) Citing Oppenheimer v. Allvoices, Inc., No. 14-cv-0499-LB,
`2014 WL 2604033, at *6 (N.D. Cal. June 10, 2014), Gardner argues that the Ninth
`Circuit has not yet addressed this issue. (ECF No. 117, at 14.) Gardner further argues
`that the Supreme Court’s recent decision in American Broadcasting Cos. v. Aereo, Inc.,
`134 S. Ct. 2498 (2014), further militates against the volitional conduct requirement. (Id.
`at 15–16.) However, Gardner’s argument ignores the Ninth Circuit’s decision in Fox.
`See 747 F.3d 1060. The fact that the magistrate judge in Oppenheimer overlooked Fox
`does not affect the controlling force of Fox. See 2014 WL 2604033, at *6. Moreover,
`the Supreme Court expressly decided not to address the volitional conduct issue which
`leaves Fox undisturbed. See Aereo, 134 S. Ct. 2498, 2507 (“In other cases involving
`different kinds of service or technology providers, a user’s involvement in the
`operation of the provider’s equipment and selection of the content transmitted may well
`bear on whether the provider performs within the meaning of the Act.”). As this Court
`is bound by Ninth Circuit precedent and Fox is still good law, the Court finds that
`volitional conduct is a required element of direct infringement. See 747 F.3d at 1067.
`The parties do not dispute the first two elements of direct infringement: (1) that
`Gardner is the owner of the copyrights, and (2) that at least one of Gardner’s rights in
`those copyrights was violated. (See ECF No. 117, at 1, 6–13; see also ECF No. 127,
`
`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
`
`- 6 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 7 of 12
`
`at 5 (“[CafePress] assumes for the purposes of this motion that there was some
`underlying act of infringement as a result of the alleged misconduct of Lakin Southall
`and Beverly Teall.”) However, the parties do dispute whether CafePress engaged in
`volitional conduct. (Compare ECF No. 117, at 16 with ECF No. 127, at 5.)
`CafePress argues that it is similar to the satellite and cable television providers
`whose users were the cause of the infringement in Fox and Cablevision. (ECF No. 96-
`1, at 10–11.) Gardner argues that CafePress is similar to the copy shop operator who
`physically made copies at a customer’s request in Princeton Univ. Press v. Mich.
`Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996) (en banc). (ECF No. 117, at
`15–16.)
`In Cablevision, a cable television provider developed a digital video recorder
`(“DVR”) that allowed its customers to record copies of cable television programs on
`hard drives owned by the provider and housed at the provider’s premises. 536 F.3d at
`124. The provider’s DVR software was entirely automated, i.e. customer commands
`to copy the television programs were issued directly to the provider’s software system
`tha automatically obeyed the command with no human involvement. Id. at 131–32.
`Similarly, in Fox, a satellite television provider developed a feature for its DVR that
`allowed its customers “to record any and all primetime programming on the four major
`broadcast networks . . . every night of the week.” 747 F.3d at 1064. While the provider
`did exercise some discretion, such as determining the start and end times for the
`primetime block, the customer still had to enable the feature which then automatically
`recorded the primetime programming to the customer’s DVR. Id. at 1065. In both
`cases, the courts found that because the customer was the one who chose whether or
`not to record the programming, the provider had not engaged in volitional conduct.
`Cablevision, 536 F.3d at 131–33; Fox, 747 F.3d at 1067–68.
`In Princeton, a college professor gave copyrighted material to a human employee
`at a copy shop. 99 F.3d at 1384. The copy shop’s employee then performed the physical
`acts such as printing copies and selling the copies to students. Id. The Sixth Circuit
`
`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
`
`- 7 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 8 of 12
`
`found that this constituted a prima facie case of copyright infringement. See id. at 1383.
`Thus the issue in this case is whether CafePress is more similar to a copy shop that
`“makes photocopiers available to the public on its premises” or to a copy shop where
`customers request a copy from the copy shop’s human employees “who then
`volitionally operate[] the copying system to make the copy.” See Cablevision, 536 F.3d
`at 131–32.
`While some of the CafePress process is similar to the DVR cases—specifically
`where users upload images to the site and customers request items—a significant
`portion of the process is done by CafePress itself, namely the production and sale of
`the allegedly infringing items. In making the allegedly infringing items, CafePress’s
`employees respond to a customer request to purchase the item. CafePress does not
`contend that its production facility and shipping process are completely automated and
`thus devoid of human employees engaging in volitional conduct. CafePress’s
`employees, not its customers, are the ones operating the machinery used by CafePress
`to create the allegedly infringing items.
`As the evidence appears to show that CafePress does engage in at least some
`volitional conduct, the Court DENIES CafePress’s motion for summary judgment on
`Gardner’s direct liability cause of action.
`2. Vicarious Liability
`There are two elements to a prima facie case of vicarious infringement: (1)
`“direct financial benefit” from third party’s direct infringement, and (2) “the right
`ability to supervise” a third party’s infringing activity. Ellison v. Robertson, 357 F.3d
`1072, 1078 (9th Cir. 2004). A service provider receives a “direct financial benefit”
`when “the infringing activity constitutes a draw for [customers], not just an added
`benefit.” Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1117 (9th Cir. 2007) (citation
`and quotation marks omitted).
`a. Direct Financial Benefit
`Gardner argues that the “direct financial benefit” is CafePress paying image
`
`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
`
`- 8 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 9 of 12
`
`uploaders a 10% royalty and that advertising bearing images of Gardner’s copyright
`works increased CafePress’s sales. (ECF No. 117, at 21.) Citing A&M Records, Inc. v.
`Napster, Inc., 239 F.3d 1004, 1119–22 (9th Cir. 2001), CafePress argues that CafePress
`is distinguishable from Napster “where 90% or more of [Napster’s] files . . . were found
`to be infringing.” (ECF No. 127, at 2 n.4.) However, CafePress’s attempt to distinguish
`Napster and citation to the 90% figure implies that the draw must be “substantial,” a
`requirement that the Ninth Circuit has rejected, holding that “[t]here is no requirement
`that the draw be ‘substantial.’” See Ellison, 357 F.3d at 1079 (“The essential aspect of
`the ‘direct financial benefit’ inquiry is whether there is a causal relationship between
`the infringing activity and any financial benefit a defendant reaps, regardless of how
`substantial the benefit is in proportion to a defendant’s overall profits.”). It is
`undisputed that a certain number of CafePress customers saw ads bearing images of
`Gardner’s copyrighted works, clicked through those ads, and generated revenue for
`CafePress and that some CafePress customers bought items bearing images of
`Gardner’s copyright works. (See ECF No. 121, Ex. 4; ECF No. 98-2 ¶ 38.) Though it
`is unclear whether those customers clicked the ads or bought the items because of the
`images of Gardner’s copyrighted works or because of some other reason, that
`determination is for the trier of fact. At the summary judgment stage, the fact that at
`least some of CafePress’s customers bought the items and clicked those ads, thus
`generating revenue for CafePress, creates a dispute of material fact as to whether the
`infringing activity drew customers and thus whether there was a “direct financial
`benefit.” See Ellison, 357 F.3d at 1079.
`b. Control
`A service provider has “the right and ability to control” where it “exert[s]
`substantial influence on the activities of users.” UMG Recordings, Inc. v. Shelter
`Capital Partners LLC, 718 F.3d 1006, 1030 (9th Cir. 2013) (quoting Viacom Int’l, Inc.
`v. YouTube, Inc., 676 F.3d 19, 38 (2d Cir. 2012)). “‘Substantial influence’ may include
`. . . high levels of control over activities of users. . . . [o]r it may include purposeful
`
`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
`
`- 9 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 10 of 12
`
`conduct.” Id. at 1030.
`Gardner argues that “CafePress has complete control over what products are
`displayed and sold on its CafePress Marketplace (www.cafepress.com) and related
`feeds to Amazon, eBay and other major retailers such as Wal-Mart and Kmart.” (ECF
`No. 117, at 20.) CafePress argues that its infringement prevention is an “after-the-fact
`ability to remove or black access to infringing activities” that “does not constitute an
`ability to control or supervise.” (ECF No. 96-1, at 18 (quoting Ellison v. Robertson,
`189 F. Supp. 2d 1051, 1060 (C.D. Cal. 2002).) Essentially, CafePress is arguing that
`its activities are similar to those of Amazon or eBay where the service provider was not
`“actively involved” in the sale of allegedly infringing material. See, e.g., Corbis Corp.
`v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1110 (W.D. Wash. 2004); Hendrickson v.
`Amazon.com, Inc., 298 F. Supp. 2d 914, 918 (C.D. Cal. 2003); Hendrickson v. eBay,
`Inc., 165 F. Supp. 2d 1082, 1094 (C.D. Cal. 2001).
`CafePress’s business is distinguishable from both companies. For instance, eBay
`is “not actively involved in the listing, bidding, sale and delivery of any item offered
`for sale on its website” and “does not have any control over the allegedly infringing
`items.” Hendrickson v. eBay, Inc., 165 F. Supp. 2d at 1094. Similarly, Amazon “merely
`provide[s] the forum for an independent third party seller to list and sell his
`merchandise” and is “not actively involved in the listing.” Hendrickson v. Amazon.com,
`Inc., 298 F. Supp. 2d at 918. In contrast, the evidence appears to show that CafePress
`does have active control over at least some of the allegedly infringing items during the
`process in which CafePress produces and then ships those items to customers. While
`CafePress’s actions in response to allegedly infringing uploads may be similar to
`Amazon and eBay where it is not actively involved and can only engage in after-the-
`fact removal and access blocking, CafePress’s production of allegedly infringing items
`at its production facility does appear to be “purposeful conduct” such that CafePress
`has the “right and ability to control.” (See ECF No. 119-14, Ex. 14); see also UMG
`Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d at 1030.
`
`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
`
`- 10 -
`
`3:13-cv-1108-GPC-JLB
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 11 of 12
`
`As the evidence surrounding both elements are disputed, the Court DENIES
`CafePress’s motion for summary judgment on Gardner’s vicarious liability cause of
`action.
`C. Damages
`In the alternative, CafePress seeks partial summary judgment establishing the
`maximum potential damages as $405. (ECF No. 96-1, at 19.) 17 U.S.C. § 504 allows
`a copyright plaintiff ro recover “actual damages and any additional profits of the
`infringer.” 17 U.S.C. § 504(a)(1). While expenses may be deducted from gross
`2
`revenue, the burden of proof for deductible expenses is on the infringer. 17 U.S.C. §
`504(b). Gardner argues that CafePress’s profits from alleged infringement are disputed
`because: (1) the revenue amount argued by CafePress does not include any revenue
`from the allegedly infringing advertising, and (2) CafePress has not satisfied its burden
`of proof for expenses. (ECF No. 117, at 21–22.) CafePress argues that Gardner has
`failed to bear his burden of proving that the alleged infringement in the advertisements
`was the cause of the approximately $436 in revenue generated from that advertising.
`(ECF No. 127, at 9–10.)
`CafePress’s only support for its claimed expenses is the declaration of its
`“Intellectual Property Manager.” (See ECF No. 96-2 ¶ 43.) CafePress has neither
`broken down what types of expenses are being claimed nor shown whether such
`expenses are directly related to the allegedly infringing and which are overhead. See
`Kamar Intern., Inc. v. Russ Berrie and Co., 752 F.2d 1326, 1332 (9th Cir. 1984)
`(Overhead expenses are deductible “only when the infringer can demonstrate it was of
`actual assistance in the production, distribution or sale of the infringing product” which
`is a “factual determination.”). Accordingly, the Court finds that CafePress has failed
`to carry its burden regarding expenses and thus DENIES CafePress’s alternative
`
` While copyright plaintiffs can potentially recover statutory damages and
`2
`attorneys’ fees, the Court has previously ruled that Gardner cannot recover these. (See
`ECF No. 48, at 16.) Copyright plaintiffs can also potentially recover actual damages,
`however Plaintiff appears not to be pursuing such damages. (See ECF No. 96-15, Ex.
`C, at 3 (“Plaintiff is not seeking any damages under 17 U.S.C. § 504(b).”).)
`
`- 11 -
`
`3:13-cv-1108-GPC-JLB
`
`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
`
`

`
`Case 3:13-cv-01108-GPC-JLB Document 132 Filed 12/04/14 Page 12 of 12
`
`motion for partial summary judgment on damages.
`VII. CONCLUSION AND ORDER
`For the reasons stated above, IT IS HEREBY ORDERED that:
`1.
`CafePress’s Motion for Summary Judgment on Liability or, Alternatively,
`Partial Summary Judgment on Damages, (ECF No. 96), is GRANTED as
`to Gardner’s contributory infringement cause of action, DENIED as to
`Gardner’s direct liability cause of action, DENIED as to Gardner’s
`vicarious liability cause of action, and DENIED as to damages;
`CafePress’s Motion to Strike, (ECF No. 128), is GRANTED and ECF
`Nos. 124 and 125 are STRICKEN; and
`The hearing set for December 5, 2014, is VACATED.
`3.
`DATED: December 4, 2014
`
`2.
`
`HON. GONZALO P. CURIEL
`United States District Judge
`
`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
`
`- 12 -
`
`3:13-cv-1108-GPC-JLB