2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF SOUTH CAROLINA
`CHARLESTON DIVISION
`
`Case No. 2:10-cv-3075-RMG-JDA
`
`))
`
`)
`
`))
`
`Righthaven LLC,
`
`Plaintiff and Counter-Defendant,
`
`v.
`
`Dana Eiser,
`
`
`
`
`
`Defendant and Counter-Plaintiff,
`
`) REPORT AND RECOMMENDATION
`) OF MAGISTRATE JUDGE
`)
`
`))
`
`))
`
`___________________________________)
`
`This matter is before the Court on a motion to dismiss, or alternatively strike,
`
`Defendant’s counterclaims filed by Plaintiff [Doc. 23]; a motion to dismiss for failure to state
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`a claim filed by Defendant [Doc. 37]; a motion to dismiss for lack of jurisdiction filed by
`
`Defendant [Doc. 60]; and a motion to dismiss the second amended answer and
`
`counterclaims filed by Plaintiff [Doc. 78]. Pursuant to the provisions of Title 28, United
`
`States Code, Section 636(b)(1), this magistrate judge is authorized to review pretrial
`
`motions and submit findings and recommendations to the District Court in cases referred
`
`for pretrial management.
`
`This is an action for copyright infringement pursuant to 17 U.S.C. § 501. The Court
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`has reviewed the complete record in this matter, including the pleadings, briefs, and
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`exhibits submitted by the parties, as well as the applicable law. For the reasons given
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`below, the Court recommends Plaintiff’s first motion to dismiss [Doc. 23] be found as moot;
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`Defendant’s motion to dismiss for failure to state a claim [Doc. 37] be found as moot;
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 2 of 17
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`Defendant’s motion to dismiss for lack of jurisdiction [Doc. 60] be granted; and Plaintiff’s
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`second motion to dismiss [Doc. 78] be found as moot.
`
`PROCEDURAL HISTORY
`
`On December 2, 2010, Plaintiff filed its complaint against Defendant, alleging
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`copyright infringement. [Doc. 1.] Defendant filed a pro se answer on January 18, 2011
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`[Doc. 7] and subsequently retained counsel and filed an amended answer and
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`counterclaims on February 25, 2011 [Doc. 22]. On March 11, 2011, Plaintiff filed a motion
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`to dismiss, or alternatively strike, Defendant’s counterclaims. [Doc. 23.] The Honorable
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`Richard M. Gergel referred this action to the undersigned for pretrial management on
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`March 25, 2011. [Doc. 24.]
`
`On April 7, 2011, Plaintiff filed an amended complaint [Doc. 36], and Defendant filed
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`a motion to dismiss for failure to state a claim on April 19, 2011 [Doc. 37]. Defendant filed
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`a second amended answer and counterclaims on June 23, 2011 [Doc. 53] and a motion
`1
`
`to dismiss for lack of jurisdiction on July 7, 2011 [Doc. 60]. On August 25, 2011, Plaintiff
`
`Because the second amended answer and counterclaims superseded the
`1
`amended answer and counterclaims to which Plaintiff filed its initial motion to dismiss, the
`Court recommends finding as moot Plaintiff’s initial motion to dismiss [Doc. 23]. See
`Young v. City of Mount Ranier, 238 F.3d 567, 573 (4th Cir. 2001) (stating that “an
`amended pleading ordinarily supersedes the original and renders it of no legal effect”
`(citation omitted)); Hall v. Int’l Union, United Auto., Aerospace & Agric. Implement Workers
`of Am., UAW, 2011 WL 4014315, at *1 (W.D.N.C. June 21, 2011) (citing Colin v. Marconi
`Commerce Sys. Emps.’ Ret. Plan, 335 F. Supp. 2d 590, 614 (M.D.N.C. 2004); Turner v.
`Kight, 192 F. Supp. 2d 391, 397 (D. Md. 2002)) (denying as moot the defendants’ motions
`to dismiss because the second amended complaint rendered moot the defendants’
`pending motions to dismiss, which were related to the superseded complaint); McCoy v.
`City of Columbia, 2010 WL 3447476, at *1–2 (D.S.C. Aug. 31, 2010) (adopting the
`magistrate judge’s report and recommendation to the extent it recommended that the
`motion to dismiss be found as moot because the amended complaint superseded the
`original complaint and rendered any attack upon it moot).
`
`2
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 3 of 17
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`filed a motion to dismiss the second amended answer and counterclaims. [Doc. 78.] On
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`October 20, 2011, the Court entered an Order to Show Cause why the case should not be
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`dismissed for Plaintiff’s lack of ownership of any exclusive rights in the copyright and,
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`therefore, lack of standing to sue. [Doc. 81.] Plaintiff filed its response to the Order to
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`Show Cause on October 31, 2011. [Doc. 84.] Additionally, responses in opposition,
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`replies, and supplements have been filed on all pending motions [Docs. 28, 34, 41, 61, 62,
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`64, 68, 72, 79, 86, 88], and the motions are ripe for review.
`
`BACKGROUND
`
`Defendant is, and was at all relevant times, the owner of the Internet domain found
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`at <lowcountry912.wordpress.com> (the “Domain”) [Doc. 36 ¶ 5]. On September 23, 2010,
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`Defendant displayed an allegedly unauthorized reproduction of a copyrighted literary work
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`entitled “A Letter to the Tea Partyers” (the “Work”) as part of the content accessible
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`through the Domain (the Domain and content accessible through the Domain, collectively
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`known as the “Website”). [Id. ¶ 12; Doc. 36-1 at 5–6.]
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`Plaintiff asserts it is the owner of the copyright in and to the Work, which was
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`originally published on September 23, 2010 in The Denver Post. [Doc. 36 ¶¶ 9–10, 17–18;
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`Doc. 36-1 at 2–3.] MediaNews Group Inc. (“MediaNews”), owner of The Denver Post, was
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`the original owner of the Work. [Doc. 60 at 7; see also Doc. 36-1 at 19 (indicating
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`MediaNews is the author of the Work).] Plaintiff contends it obtained all rights, title, and
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`ownership in and to the Work, along with the right to sue for past, present, and future
`
`infringements, through a valid and enforceable assignment from the original owner of the
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`rights in and to the Work. [Doc. 36 ¶ 10.] Plaintiff applied for the copyright in and to the
`
`3
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 4 of 17
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`Work with the United States Copyright Office (“USCO”) on November 19, 2010. [Id. ¶ 19;
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`Doc. 36-1 at 19–21.]
`
`The ongoing relationship between Plaintiff and MediaNews with respect to
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`assignments of copyrights is governed by a Copyright Alliance Agreement (“CAA”) Plaintiff
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`and MediaNews entered into on September 22, 2010. [Doc. 61-1.] Section 6 of the
`2
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`CAA’s Schedule 1 – Terms and Conditions (“CAA Schedule 1") states in part:
`
`Despite any Copyright Assignment, [MediaNews] shall retain
`(and is hereby granted by [Plaintiff]) an exclusive license to
`Exploit the [MediaNews] Assigned Copyrights for any lawful
`purpose whatsoever and [Plaintiff] shall have no right or
`license to Exploit or participate in the receipt of royalties from
`the Exploitation of the [MediaNews] Assigned Copyrights other
`than the right to proceeds in association with a Recovery. To
`the extent that [Plaintiff]’s maintenance of rights to pursue
`infringers of the [MediaNews] Assigned Copyrights in any
`manner would be deemed to diminish [MediaNews]’s right to
`Exploit the [MediaNews] Assigned Copyrights, [Plaintiff] hereby
`grants an exclusive license to [MediaNews] to the greatest
`extent permitted by law so that [MediaNews] shall have
`unfettered and exclusive ability to Exploit the [MediaNews]
`Assigned Copyrights. [Plaintiff] shall have no obligation to
`protect or enforce any Work of [MediaNews] that is not
`[MediaNews] Assigned Copyrights.
`
`[Id. at 9–10.] Section 10 of the CAA is titled “Reassignment” and states in part:
`
`Subject to Section 9, upon [MediaNews]’s signed, written
`request (“Reassignment Request”), [Plaintiff] shall, within
`twenty (20) Business Days of any Reassignment Request,
`submit reassignment documentation to the United States
`
`Defendant filed a copy of the CAA as a supplemental exhibit to her motion to
`2
`dismiss for lack of jurisdiction. [Doc. 61-1.] Although the assignment accompanying the
`copy of the CAA filed with the Court assigns to Plaintiff the copyright in and to another
`literary work originally owned by MediaNews, Defendant alleges and Plaintiff has not
`contested either in its response in opposition to Defendant’s motion to dismiss or in its
`response to the Court’s Order to Show Cause, the copyright assignment at issue in this
`case is governed by the CAA.
`
`4
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 5 of 17
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`Copyright Office in order to effect reassignment of any
`copyright requested by [MediaNews] so long as such request
`does not interfere with any pending litigation. Nothing in this
`Section 10 shall, in any way, diminish [Plaintiff]’s rights to
`funds pursuant to, or arising out of this, Agreement.
`
`[Id. at 7.]
`
`Plaintiff filed the instant action on December 2, 2010 based on Defendant’s
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`allegedly unauthorized reproduction of the Work. [Doc. 1.] Plaintiff seeks (1) preliminary
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`and permanent injunctions prohibiting Defendant from reproducing the Work, preparing
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`derivative works based on the Work, distributing the Work to the public, and/or displaying
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`the Work, or ordering, directing, participating in, or assisting in any such activity; (2) an
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`order directing Defendant to produce evidence related to her use of the Work; (3) an order
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`directing Defendant to surrender all copies of the Work; (4) statutory damages; (5) fees
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`and costs; (6) pre- and post-judgment interest; and (7) any other such relief the Court
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`deems appropriate. [Doc. 36 at 5–6.]
`
`APPLICABLE LAW
`
`Motion to Dismiss Standards
`
`Rule 12(b)(1)
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`A motion to dismiss under Rule 12(b)(1) examines whether the complaint fails to
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`state facts upon which jurisdiction can be founded. Fed. R. Civ. P. 12(b)(1). The court
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`may dismiss a case for lack of subject matter jurisdiction on any of the following bases:
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`“‘(1) the complaint alone; (2) the complaint supplemented by undisputed facts evidenced
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`in the record; or (3) the complaint supplemented by undisputed facts plus the court’s
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`resolution of disputed facts.’” Johnson v. United States, 534 F.3d 958, 962 (8th Cir. 2008)
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`5
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 6 of 17
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`(quoting Williamson v. Tucker, 645 F.2d 404, 413 (5th Cir. 1981)). Generally, challenges
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`to jurisdiction under Rule 12(b)(1) may be raised in one of two ways: as a facial attack or
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`as a factual attack. See Thigpen v. United States, 800 F.2d 393, 401 n.15 (4th Cir. 1986),
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`overruled on other grounds by Sheridan v. United States, 487 U.S. 392 (1988). A facial
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`attack questions whether the allegations in the complaint are sufficient to sustain the
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`court’s jurisdiction; the court analyzes a facial attack as it would a motion to dismiss under
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`Rule 12(b)(6) such that “[t]he allegations in the complaint are taken as true, and materials
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`outside the pleadings are not considered.” Id.
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`A factual attack challenges the truthfulness of the jurisdictional allegations in the
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`complaint, id., and the court is to “regard the pleadings’ allegations as mere evidence on
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`the issue, and may consider evidence outside the pleadings without converting the
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`proceeding to one for summary judgment,” Richmond, Fredericksburg & Potomac R.R. Co.
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`v. United States, 945 F.2d 765, 768 (4th Cir. 1991) (citing Adams v. Bain, 697 F.2d
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`1213,1219 (4th Cir. 1982); Trentacosta v. Frontier Pac. Aircraft Indus., 813 F.2d 1553,
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`1558 (9th Cir. 1987)). However, the court should apply the standard applicable to a motion
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`for summary judgment. Id. Accordingly, to prevent dismissal, “the nonmoving party must
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`set forth specific facts beyond the pleadings to show that a genuine issue of material fact
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`exists.” Id. (citing Trentacosta, 813 F.2d at 1559); see also Dira v. Deutch, 149 F.3d 1167,
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`1998 WL 276236, at *1 (4th Cir. 1998) (unpublished table decision) (“When such ‘factual’
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`challenges are asserted, a trial court may go beyond the allegations of the complaint,
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`weigh the evidence, and satisfy itself as to its jurisdiction to hear the case.”). A dismissal
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`should only be granted in those instances in which “the material jurisdictional facts are not
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`6
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 7 of 17
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`in dispute and the moving party is entitled to prevail as a matter of law.” Richmond,
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`Fredericksburg, 945 F.2d at 768 (citing Trentacosta, 813 F.2d at 1558).
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`Rule 12(b)(6)
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`A motion to dismiss for failure to state a claim should not be granted unless it
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`appears certain that the plaintiff can prove no set of facts that would support his claim and
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`would entitle her to relief. Fed. R. Civ. P. 12(b)(6). When considering a motion to dismiss,
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`the court should “accept as true all well-pleaded allegations and should view the complaint
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`in a light most favorable to the plaintiff.” Mylan Labs., Inc. v. Matkari, 7 F.3d 1130, 1134
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`(4th Cir. 1993). Further, on a motion pursuant to Rule 12(b)(6), if matters outside the
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`pleadings are presented to and not excluded by the court, the motion is treated as one for
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`summary judgment under Rule 56 of the Federal Rules of Civil Procedure. Fed. R. Civ.
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`P. 12(d).
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`With respect to well-pleaded allegations, the Supreme Court explained the interplay
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`between Rule 8(a) and Rule 12(b)(6) in Bell Atlantic Corp. v. Twombly:
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`Federal Rule of Civil Procedure 8(a)(2) requires only “a short
`and plain statement of the claim showing that the pleader is
`entitled to relief,” in order to “give the defendant fair notice of
`what the . . . claim is and the grounds upon which it rests.”
`While a complaint attacked by a Rule 12(b)(6) motion to
`dismiss does not need detailed factual allegations, a plaintiff’s
`obligation to provide the “grounds” of his “entitle[ment] to relief”
`requires more than labels and conclusions, and a formulaic
`recitation of the elements of a cause of action will not do.
`Factual allegations must be enough to raise a right to relief
`above the speculative level . . . .
`
`550 U.S. 544, 555 (2007) (internal citations omitted); see also Ashcroft v. Iqbal, 129 S. Ct.
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`1937, 1949 (2009) (“A claim has facial plausibility when the plaintiff pleads factual content
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`7
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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 8 of 17
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`that allows the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged.” (citing Twombly, 550 U.S. at 556)); E. Shore Mkts., Inc. v. J.D.
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`Assocs., Ltd. P’ship, 213 F.3d 175, 180 (4th Cir. 2000) (noting that court “need not accept
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`as true unwarranted inferences, unreasonable conclusions, or arguments”); 5 Charles Alan
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`Wright & Arthur R. Miller, Federal Practice and Procedure § 1216, at 235–36 (3d ed. 2004)
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`(“[T]he pleading must contain something more . . . than a bare averment that the pleader
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`wants compensation and is entitled to it or a statement of facts that merely creates a
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`suspicion that the pleader might have a legally cognizable right of action.”).
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`DISCUSSION
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`As stated above, before the Court are multiple motions to dismiss. However, the
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`Court must first address Defendant’s motion to dismiss for lack of subject matter
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`jurisdiction because that motion goes to Plaintiff’s standing to bring a copyright
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`infringement claim at all.3
`
`Federal courts are courts of limited jurisdiction, “constrained to exercise only the
`3
`authority conferred by Article III of the Constitution and affirmatively granted by federal
`statute.” Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 552 (2005); In re
`Bulldog Trucking, Inc., 147 F.3d 347, 352 (4th Cir. 1998) (quoting Owen Equip. & Erection
`Co. v. Kroger, 437 U.S. 365, 374 (1978)). They possess only the jurisdiction authorized
`them by the United States Constitution and by federal statute. Bowles v. Russell, 551 U.S.
`205, 212 (2007) (“Within constitutional bounds, Congress decides what cases the federal
`courts have jurisdiction to consider.”); Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S.
`375, 377 (1994). Because federal courts have limited subject matter jurisdiction, there is
`no presumption that federal courts have jurisdiction. Pinkley, Inc. v. City of Frederick, 191
`F.3d 394, 399 (4th Cir. 1999). Thus, when a district court lacks subject matter jurisdiction
`over an action, the action must be dismissed. Arbaugh v. Y & H Corp., 546 U.S. 500,
`506–07 (2006). Accordingly, the Court must first consider Defendant’s motion to dismiss
`for lack of jurisdiction to determine whether the Court has jurisdiction over the action.
`
`8
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 9 of 17
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`Defendant’s Motion to Dismiss for Lack of Subject Matter Jurisdiction4
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`Defendant argues the case should be dismissed because Plaintiff lacks standing
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`to bring a copyright infringement suit. The Court agrees.
`5
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`A party invoking federal jurisdiction must establish that it has standing to bring the
`
`suit. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61 (1992). Standing in copyright
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`actions is governed by § 501(b) of the 1976 Copyright Act, 17 U.S.C. § 101, et seq. (“the
`
`Act”), which provides “[t]he legal or beneficial owner of an exclusive right under a copyright
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`is entitled . . . to institute an action for any infringement of that particular right committed
`
`while he or she is the owner of it.” Each of the exclusive rights “‘may be transferred . . .
`6
`
`The Court notes Defendant filed a supplement to her motion to dismiss for lack of
`4
`subject matter jurisdiction on December 15, 2011, informing the Court Plaintiff had
`consented to receivership and to the assignment and auctioning off of all of its assets,
`including intellectual property, to satisfy a judgment in a Nevada case. [Doc. 88.]
`Defendant argues the receivership simplifies the subject matter jurisdiction analysis but
`fails to direct the Court to any case law outlining the impact of a consent to receivership on
`Plaintiff’s ownership rights in and to the Work for purposes of an already-filed lawsuit. [Id.]
`Accordingly, because, as discussed below, the Court concludes it lacks subject matter
`jurisdiction based on Plaintiff’s lack of standing when the case was filed, the Court declines
`to address Defendant’s supplemental argument that because Plaintiff has consented to
`receivership and the assignment of its assets, it has no ownership rights in the copyright
`at issue in this case.
`
`As previously stated, challenges to jurisdiction under Rule 12(b)(1) may be raised
`5
`as a facial attack or as a factual attack. Here, the Court construes the challenge as a
`factual attack, alleging Plaintiff does not really own any exclusive right in the copyright at
`issue despite an assignment purporting to convey ownership of the copyright to Plaintiff.
`
`Exclusive rights in copyrighted works are enumerated in § 106 of the Act and
`6
`include the exclusive rights:
`
`to reproduce
`(1)
`phonorecords;
`
`the copyrighted work
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`in copies or
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`(2) to prepare derivative works based upon the copyrighted
`work;
`
`9
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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 10 of 17
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`and owned separately.’” N.Y. Times Co. v. Tasini, 533 U.S. 483, 495–96 (2001) (quoting
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`17 U.S.C. § 201(d)(2)) (omissions in original); see 17 U.S.C. § 201(d)(1) (“The ownership
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`of a copyright may be transferred in whole or in part . . . .”).
`
`The Fourth Circuit Court of Appeals has yet to address the requirements for
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`standing under the Act with respect to the assignment of infringement claims. However,
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`the Ninth Circuit, following decisions in the Second Circuit, has held that because the right
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`to sue is not one of the exclusive rights, transfer of only the right to sue does not confer
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`standing to bring a suit for copyright infringement. See Silvers v. Sony Pictures Entm’t Inc.,
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`402 F.3d 881, 890 (9th Cir. 2005) (en banc). Yet the right to sue, even for past
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`(3) to distribute copies or phonorecords of the copyrighted
`work to the public by sale or other transfer of ownership, or by
`rental, lease, or lending;
`
`(4) in the case of literary, musical, dramatic, and choreographic
`works, pantomimes, and motion pictures and other audiovisual
`works, to perform the copyrighted work publicly;
`
`(5) in the case of literary, musical, dramatic, and choreographic
`works, pantomimes, and pictorial, graphic, or sculptural works,
`including the individual images of a motion picture or other
`audiovisual work, to display the copyrighted work publicly; and
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`(6) in the case of sound recordings, to perform the copyrighted
`work publicly by means of a digital audio transmission.
`
`17 U.S.C. § 106.
`
`10
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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 11 of 17
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`infringement, may be transferred to another party if the right to sue is included in the
`7
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`assignment and one of the exclusive rights is also transferred. See id. at 890 n.1.
`8
`
`As previously noted, Plaintiff alleges MediaNews assigned to Plaintiff all right, title,
`
`and ownership in and to the Work, along with the right to sue for past, present, and future
`
`infringements, both accrued and unaccrued. [Doc. 36 ¶ 10.] Defendant argues Plaintiff
`
`does not have standing because Plaintiff owns no exclusive rights in the copyright. [Doc.
`
`60.] Defendant concedes Plaintiff’s assignment purports to convey all right, title, and
`
`interest in the copyright, but Defendant argues the CAA operates to take back the rights
`
`the assignment purports to grant. [Id. at 11.] Plaintiff argues it has standing to bring this
`9
`
`Before the Court is no evidence as to when the assignment of the Work occurred.
`7
`[See Doc. 36 ¶ 19 (stating Plaintiff applied for the copyright in and to the Work on
`November 19, 2010); Doc. 61-1 at 5 (indicating Plaintiff and MediaNews entered into the
`CAA on September 22, 2010).] The Court notes, however, Plaintiff referred to past
`infringement claims in its response to the Order to Show Cause, implying the assignment
`occurred after September 23, 2010, when the Work was published in The Denver Post.
`In any event, evidence of when the assignment occurred is immaterial to the Court’s
`determination. If the assignment occurred on or before September 23, 2010, then the
`alleged infringement would have been a present or future, unaccrued infringement at the
`time of the assignment; if the assignment occurred on or after September 23, 2010, then
`the alleged infringement would have been a past, accrued infringement at the time of the
`assignment.
`
`Neither party objects to this Court’s application of the holding in Silvers. However,
`8
`Plaintiff argues the instant case is different from the Silvers case because in Silvers,
`ownership of an exclusive right was never conveyed—only the assignment of the accrued
`cause of action—and in the instant action, both accrued and unaccrued causes of action
`and exclusive rights were conveyed. [Doc. 84 at 4–5.] As discussed below, the Court
`finds the restrictions and right to reassignment in the CAA leave Plaintiff owning no
`exclusive rights in and to the Work and owning only a bare right to sue, and therefore, the
`Court finds Silvers is directly applicable to the instant case.
`
`Although Defendant’s memorandum refers to a Strategic Alliance Agreement
`9
`(“SAA”) [Doc. 60] that governed Plaintiff’s relationships with other clients, Defendant
`subsequently filed a copy of the CAA governing the relationship between Plaintiff and
`MediaNews [Doc. 61-1]. The Court reviewed and compared the SAA and the CAA and
`
`11
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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 12 of 17
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`case because (1) MediaNews expressly assigned ownership of the Work to Plaintiff along
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`with the right to sue for infringements and (2) licensing back rights to the assignor or
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`limiting rights from the assignor does not invalidate the assignment. [Doc. 68 at 7; Doc.
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`84 at 6–12.]
`
`The following facts are undisputed in this case:
`
`1.
`
`The CAA was executed September 22, 2010 and is an agreement between
`
`Plaintiff and MediaNews, governing their relationship with respect to
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`assignments of copyrights. [Doc. 61-1 at 5–25.]
`
`2.
`
`Under the CAA, MediaNews is required to assign the copyrights for certain
`
`identified publications to Plaintiff. [Id. at 6 ¶ 5.]
`
`3.
`
`Despite any assignment, MediaNews retains an exclusive license to exploit
`
`the assigned copyright and Plaintiff has no right or license to exploit the
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`copyright or to receive royalties from the exploitation of the work. [Id. at 9–10
`
`¶ 6.]
`
`4.
`
`The CAA requires Plaintiff to submit reassignment documentation to the
`
`USCO to effect reassignment of any copyright requested by MediaNews so
`
`found the provisions to be very similar and found the CAA appeared to support
`Defendant’s claim that Plaintiff does not have standing to sue for infringement; therefore,
`the Court issued its Order to Show Cause why the case should not be dismissed for lack
`of standing based on the provisions of the CAA. [Doc. 81.] Because many of the
`substantive provisions in the SAA and CAA are very similar and because Plaintiff has had
`a chance to respond to the Order to Show Cause and direct the Court to any distinctions
`between the two documents, the Court construes Defendant’s initial arguments with
`respect to the SAA to apply to the CAA to the extent the arguments can apply to both, e.g.,
`to the extent the same provisions appear in both agreements.
`
`12
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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 13 of 17
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`long as the request does not interfere with any pending litigation. [Id. at 7 ¶
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`10.]
`
`5.
`
`6.
`
`Defendant displayed the Work on the Website on September 23, 2010.
`
`[Doc. 36-1 at 5–6.]
`
`On November 19, 2010, Plaintiff applied for the copyright in and to the Work
`
`with the USCO. [Id. at 19–21.]
`
`Although neither party has produced the assignment for the Work, for purposes of the
`
`motion to dismiss for lack of subject matter jurisdiction, the Court will assume Plaintiff
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`obtained all rights, title, and ownership in and to the Work through a valid and enforceable
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`assignment from the original owner, along with the right to sue for past, present, and future
`
`infringements, both accrued and unaccrued. [Doc. 36 ¶ 10.]
`
`In light of the above-described assignment, governed by the CAA and its license
`
`back and reassignment provisions, the Court concludes Plaintiff was left with no exclusive
`
`rights in the copyright at the time of suit. That, under the terms of the CAA, Plaintiff may
`
`have retained a bare right to sue is of no consequence. This Court agrees with the
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`Honorable Roger L. Hunt, Chief United States District Judge for the District of Nevada, that
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`the entirety of the CAA “was designed to prevent [Plaintiff] from becoming ‘an owner of any
`
`exclusive right in the copyright.’” Righthaven LLC v. Democratic Underground, LLC, 791
`10
`
`Plaintiff’s ownership of its assigned copyrights has been contested in Nevada and
`10
`Colorado. Judges in Nevada have dismissed complaints for lack of standing, see
`Righthaven v. Democratic Underground, No. 2:10-cv-01356-RLH-GWF (D. Nev.);
`Righthaven v. Hoehn, No. 2:11-cv-00050-PMP-RJJ (D. Nev.); Righthaven v. Barham,
`2:10-cv-02150-RLH-PAL (D. Nev.); Righthaven v. DiBiase, 2:10-cv-01343-RLH-PAL (D.
`Nev.), and issued orders to show cause why these cases should not be dismissed for lack
`of standing. The copyright assignments in the Nevada cases are governed by a SAA
`between Plaintiff and Stephens Media LLC which, as mentioned above, is very similar to
`
`13
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`

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`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 14 of 17
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`F. Supp. 2d 968, 973 (D. Nev. 2011) (quoting Silvers, 402 F.3d at 886) (emphasis in
`
`original).
`
`MediaNews originally owned all of the exclusive rights to the Work and,
`
`concomitantly, the sole right to sue for infringement. Because the CAA qualifies any
`
`assignment with restrictions and rights to reassignment, the assignment changed nothing
`
`except for Plaintiff’s claim to have the right to sue. According to the CAA, MediaNews,
`
`despite any copyright assignment, retained an exclusive license to exploit the Work for any
`
`lawful purpose whatsoever, and Plaintiff had no right or license to exploit or otherwise
`
`participate in the receipt of royalties from the Work. The CAA defines the term “Exploit”
`
`as “to use, make, sell, or otherwise exploit in any manner whatsoever (through any means
`
`now known or hereafter Developed).” [Doc. 61-1 at 14.] Accordingly, pursuant to the plain
`
`language of the CAA, MediaNews owned all of the exclusive rights set forth in section 106
`
`of the Act.
`11
`
` Moreover, the CAA provides that MediaNews, at any time, may unilaterally
`
`the CAA, including its CAA Schedule 1, between Plaintiff and MediaNews, which governs
`the copyright assignment at issue in this case.
`
`11
`
`The CAA also provides,
`
`To the extent that [Plaintiff]’s maintenance of rights to pursue
`infringers of the [MediaNews] Assigned Copyrights in any
`manner would be deemed to diminish [MediaNews]’s right to
`Exploit the [MediaNews] Assigned Copyrights, [Plaintiff] hereby
`grants an exclusive license to [MediaNews] to the greatest
`extent permitted by Law so that [MediaNews] shall have
`unfettered and exclusive ability to Exploit the [MediaNews]
`Assigned Copyrights.
`
`[Doc. 61-1 at 9–10 ¶ 6.] Accordingly, at the very least, Plaintiff granted MediaNews an
`exclusive license to exploit the Work, and Plaintiff had no rights normally associated with
`ownership of an exclusive right.
`
`14
`
`

`
`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 15 of 17
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`terminate the assignment, and Plaintiff must submit reassignment documentation to the
`
`USCO as long as the request for reassignment does not interfere with any pending
`
`litigation. These carveouts in the CAA, which governs any copyright assignment between
`
`the parties to the CAA, deprive Plaintiff of any of the rights normally associated with
`
`ownership of an exclusive right necessary to have standing to bring suit for copyright
`
`infringement.
`12
`
` Accordingly, Defendant’s motion to dismiss for lack of subject matter
`
`jurisdiction should be granted and the complaint dismissed.
`
`Attorney’s Fees
`
`In her motion to dismiss for lack of jurisdiction, Defendant asks the Court to award
`
`costs and reasonable attorney’s fees pursuant to § 505 of the Act. [Doc. 60 at 44–45.]
`
`The Court agrees Defendant should be awarded costs and reasonable attorney’s fees.
`
`A court may exercise its discretion to award costs, including reasonable attorney’s
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`fees, to the prevailing party in a copyright infringement action. 17 U.S.C. § 505; see
`
`Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) (holding that such awards are a matter
`
`of the court’s discretion, not a matter of course). The Fourth Circuit Court of Appeals has
`
`This holding is also consistent with the purpose behind revising the Act in 1976—to
`12
`enhance predictability and certainty of copyright ownership, Cmty. for Creative Non-
`Violence v. Reid, 490 U.S. 730, 749 (1989). In the instant case, that predictability is
`violated. While the records of the USCO may indicate Plaintiff is the owner of rights in and
`to the Work, Plaintiff and MediaNews have engaged in transfers, unbeknownst to the
`public, that undermine this representation of ownership and call into question the validity
`of the transfer. The CAA was entered into between Plaintiff and MediaNews in September
`2010. Righthaven registered the Work on November 19, 2010. At the time of registration,
`however, Plaintiff had licensed back all the exclusive rights in the Work to MediaNews. It
`is unclear from the record what rights, if any, Plaintiff owned when it registered with the
`USCO and whether Plaintiff advised the USCO of its license back to MediaNews. The
`public is being told that the owner of the Work is Plaintiff when, pursuant to the terms of
`the CAA, Plaintiff is not the owner of any exclusive rights. Consequently, holding Plaintiff
`lacks standing to bring suit for copyright infringement promotes the purpose of the Act.
`
`15
`
`

`
`2:10-cv-03075-RMG Date Filed 01/13/12 Entry Number 93 Page 16 of 17
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`instructed district courts to consider the following factors when determining whether to
`
`award costs and fees to a prevailing party under § 505:
`
`(1) the motivation of the parties;
`
`(2) the objective reasonableness of the legal and factual
`positions advanced;
`
`to advance
`in particular circumstances
`the need
`(3)
`considerations of compensation and deterrence; and
`
`(4) any other relevant factor presented.
`
`Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488, 498
`
`(4th Cir. 1996) (citing Rosciszewski v. Arete Assoc., Inc., 1 F.3d 225, 234 (4th Cir.1993)).
`
`After weighing these factors, the Court concludes each factor weighs heavily toward
`
`imposition of attorney’s fees and costs against Plaintiff. Therefore, the Court recommends
`
`Defendant be