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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`PROMEDEV, LLC,
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`CASE NO. C22-1063JLR
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`Plaintiff,
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`v.
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`ROBY WILSON, et al.,
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`ORDER
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`Defendants.
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`I.
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`INTRODUCTION
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`On April 1, 2024, the court ordered Defendants / Counterclaimants Roby Wilson,
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`MaXXiMedia Advertising Co., and Imagipix Corporation (collectively, “Defendants”)
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`and their attorneys to show cause why the court should not issue Rule 11 sanctions based
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`on Defendants’ pursuit of an excessively broad copyright infringement claim. (4/1/24
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`Order (Dkt. # 93) at 27-28.) Defendants timely filed a response to the court’s show cause
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`order. (4/8/24 OSC Resp. (Dkt. # 97).) With the court’s permission, Promedev also filed
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`a brief on the issue. (See 4/8/24 Order (Dkt. # 104); Promedev Br. (Dkt. # 108).) The
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`ORDER - 1
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 2 of 9
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`court has considered the parties’ submissions, the relevant portions of the record, and the
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`governing law. Being fully advised,1 the court issues Rule 11 sanctions against
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`Defendants’ attorneys.
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`II. BACKGROUND
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`Defendants produced and placed commercials for Plaintiff / Counter-Defendant
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`Promedev, LLC (“Promedev”). (4/1/24 Order at 2.) Promedev initiated this lawsuit after
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`the parties’ relationship soured (see generally Compl. (Dkt. # 1)), and Defendants filed
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`several counterclaims, including a claim for copyright infringement (see Counterclaims
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`(Dkt. # 25) at 11-14). Defendants alleged that they owned eight registered copyrights and
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`that Promedev had infringed Defendants’ copyrighted commercials from 2018 through
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`the present. (See Counterclaims ¶¶ 42, 52, 59.)
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`On January 6, 2023, Promedev filed a motion to strike certain paragraphs in
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`Defendants’ counterclaims because it suspected that Defendants’ copyright infringement
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`claim extended beyond infringement of the eight registered works. (See Mot. to Strike
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`(Dkt. # 26) at 3 (discussing “MaXXiMedia’s improper attempt at circumventing the
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`explicit statutory requirements of the Copyright Act that creative works be properly
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`registered with the U.S. Copyright Office prior to initiating an enforcement action”).)
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`Defendants countered that Supreme Court precedent “expressly allow[ed]” them to
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`pursue claims for unregistered works under 17 U.S.C. § 106A. (MTS Resp. (Dkt. # 34)
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`at 4 (citing Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 165 (2010)).) The court,
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`1 The court concludes that oral argument would not assist with its disposition of this
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`issue.
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`ORDER - 2
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 3 of 9
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`“declin[ing] to adjudicate the merits of MaXXiMedia’s amended counterclaim for
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`copyright infringement on a motion to strike,” allowed the parties to “raise their
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`arguments regarding the availability of copyright infringement actions for unregistered
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`works at a later time.” (3/2/23 Order (Dkt. # 40) at 20 & n.6.)
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`Defendants’ continued pursuit of their broad copyright infringement claim soon
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`led to a discovery dispute. (See generally 7/10/23 Min. Entry (Dkt. # 50).) On July 10,
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`2023, the court ordered Defendants to identify the works they claimed were subject to
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`copyright protection. (Id.) In response, Defendants provided a list of 132 different
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`commercials that “MaXXiMedia believes have been infringed.” (2/8/24 Rainwater Decl.
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`(Dkt. # 73) ¶ 2, Ex. A at 22-27.) Defendants continued arguing that Promedev infringed
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`all of these commercials through summary judgment. (See, e.g., MSJ Resp. (Dkt. # 81) at
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`8 (“Promedev attempts to refute MaXXiMedia’s infringement claim . . . while ignoring
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`well over a hundred advertisements created in total.”).)
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`On March 26, 2024, the court ordered Defendants to show cause why their
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`copyright infringement claim should not be dismissed for failure to demonstrate that they
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`had registered their copyrights before filing suit. See 17 U.S.C. § 411(a) (“Except for an
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`action brought for a violation of the rights of the author under section 106A(a), . . . no
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`civil action for infringement of the copyright in any United States work shall be instituted
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`until preregistration or registration of the copyright claim has been made in accordance
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`with this title.”); Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ---,
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`139 S. Ct. 881, 886 (2019) (stating that copyright registration “is akin to an
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`//
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`ORDER - 3
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 4 of 9
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`administrative exhaustion requirement that the owner must satisfy before suing to enforce
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`ownership rights”).
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`Despite having pursued a claim for infringement of 132 copyrighted commercials
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`throughout this litigation, Defendants finally acknowledged in their response that they
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`lacked registrations for all but the eight commercials identified in their counterclaims.
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`(See 3/27/24 OSC Resp. (Dkt. # 91) at 1-2.) Moreover, Defendants appeared to narrow
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`their infringement allegations, focusing solely on Promedev’s alleged infringement from
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`July 1, 2022 to August 28, 2022. (See generally id.) Defendants’ response came as a
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`“surprise[]” to Promedev, which “[i]n reliance on Maxximedia’s response, whereby
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`Maxximedia identified 132 ads Promedev allegedly infringed upon, . . . spent countless
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`hours over many months in discovery trying to pin down and address such alleged
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`infringement for those ads.” (3/28/24 Rainwater Email (Dkt. # 100-1).)
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`The court found that Defendants’ “continued assertion” of 124 unregistered
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`copyrights amounted to “bad faith litigation” and ordered Defendants and their attorneys
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`to show cause why the court should not issue Rule 11 sanctions. (4/1/24 Order at 26-28);
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`see Fed. R. Civ. P. 11(c)(3). The court now finds that such sanctions should be imposed
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`against Defendants’ attorneys.
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`III. ANALYSIS
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`A.
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`Legal Standard
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`Courts may issue sanctions for violations of Federal Rule of Civil Procedure
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`11(b). Rule 11(b) provides that
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`//
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`ORDER - 4
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 5 of 9
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`[b]y presenting to the court a pleading, written motion, or other paper—
`whether by signing, filing, submitting, or later advocating it—an attorney or
`unrepresented party certifies that to the best of the person’s knowledge,
`information, and belief, formed after an inquiry reasonable under the
`circumstances:
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`(1) it is not being presented for any improper purpose, such as to harass, cause
`unnecessary delay, or needlessly increase the cost of litigation;
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`(2) the claims, defenses, and other legal contentions are warranted by existing
`law or by a nonfrivolous argument for extending, modifying, or reversing
`existing law or for establishing new law;
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`(3) the factual contentions have evidentiary support or, if specifically so
`identified, will likely have evidentiary support after a reasonable opportunity
`for further investigation or discovery; and
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`(4) the denials of factual contentions are warranted on the evidence or, if
`specifically so identified, are reasonably based on belief or a lack of
`information.
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`Fed. R. Civ. P. 11(b); see also Amwest Mortg. Corp. v. Grady, 925 F.2d 1162, 1164 (9th
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`Cir. 1991) (“Rule 11 sanctions should be applied if a competent attorney, after reasonable
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`inquiry, would not have a good faith belief in the merit of a legal argument.”).
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`Before imposing sanctions, the court must adhere to the requirements set forth in
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`Rule 11(c). An attorney, law firm, or party must be given “notice and a reasonable
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`opportunity to respond” before the court issues Rule 11 sanctions. Fed. R. Civ. P.
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`11(c)(1). This requirement may be satisfied by an order “to show cause why conduct
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`specifically described in the order has not violated Rule 11(b).” Fed. R. Civ. P. 11(c)(3).
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`If the court chooses to issue sanctions, such sanctions “must be limited to what suffices to
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`deter repetition of the conduct or comparable conduct by others similarly situated.” Fed.
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`R. Civ. P. 11(c)(4). Moreover, the court “must not impose a monetary sanction” “against
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 6 of 9
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`a represented party for violating Rule 11(b)(2)” or “on its own, unless it issued the
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`show-cause order under Rule 11(c)(3) before voluntary dismissal or settlement of the
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`claims.” Fed. R. Civ. P. 11(c)(5). “An order imposing a sanction must describe the
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`sanctioned conduct and explain the basis for the sanction.” Fed. R. Civ. P. 11(c)(6).
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`“Absent exceptional circumstances, a law firm must be held jointly responsible for a
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`violation committed by its partner, associate, or employee.” Fed. R. Civ. P. 11(c)(1).
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`B.
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`Rule 11(b) Sanctions
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`On April 1, 2024, the court, “[p]ursuant to Federal Rule of Civil Procedure
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`11(c)(3),” “order[ed] Defendants and their attorneys to show cause why sanctions should
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`not issue for violations of Rule 11(b).” (4/1/24 Order at 27.) The court instructed
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`Defendants and their attorneys to “explain (1) the proper purpose behind their sweeping
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`copyright infringement claim, (2) why that claim was warranted by existing law or by a
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`nonfrivolous argument for extending, modifying, or reversing existing law, and (3) the
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`evidentiary support behind their factual contentions surrounding the breadth of their
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`copyright portfolio.” (Id. at 27-28 (citing Fed. R. Civ. P. 11(b)).)
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`Rather than explain the legitimate bases for their claim, Defendants chose to
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`blame Promedev for their error. (See 4/8/24 OSC Resp at 17 (“Because MaXXiMedia
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`was stonewalled throughout the discovery process, it was unable to establish which ads
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`were placed without its knowledge or consent; only that a large number of ads were
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`indeed placed as such.”).) It is now clear that Defendants, in an effort to save money on
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`registration fees, intended to turn the discovery process into a fishing expedition. (See id.
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`at 16 (“Had MaXXiMedia discovered that any additional specific creative works [were]
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`ORDER - 6
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 7 of 9
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`placed without its knowledge or approval, upon identifying the creative works
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`MaXXiMedia would have registered the same in order to further pursue its claims.”); id.
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`at 6 (stating that “MaXXiMedia faced the choice” of spending thousands on copyright
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`registrations “or conducting discovery and tailoring its claims accordingly”).)
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`Defendants’ tactics did not comply with the law. A party asserting copyright
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`infringement may not sue now and register later. See Fourth Estate, 139 S. Ct. at 892
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`(“[T]he average processing time for registration applications is currently seven months,
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`leaving ample time to sue after the Register’s decision, even for infringement that began
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`before submission of an application.”). The Supreme Court could not have been clearer
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`in holding that copyright claimants “must comply” with Section 411(a) “[b]efore
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`pursuing an infringement claim in court.” Id. at 887.
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`In their response to Promedev’s motion to strike, Defendants cited 17 U.S.C.
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`§ 106A for the principle that they need not register their copyrights before filing suit.
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`(See MTS Resp. at 4.) That statute, however, does not apply to Defendants’ commercial
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`advertisements. Although Section 106A provides a limited exception to the registration
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`requirement for “work[s] of visual art,” 17 U.S.C. § 106A(a), the Copyright Act
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`explicitly excludes “motion picture[s] or other audiovisual work[s]” from the definition
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`of a “work of visual art,” 17 U.S.C. § 101. As another court considering this issue
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`already determined, “[t]he [claimant’s] videos are thus subject to the general rule
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`requiring registration of copyrighted works as a prerequisite to filing suit for
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`infringement.” Scott v. Carlson, No. 2:17CV10011, 2017 WL 3599249, at *2 (W.D. Va.
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`Aug. 21, 2017).
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`ORDER - 7
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 8 of 9
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`There is no excuse for Defendants’ prolonged assertion of 124 unregistered
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`copyrights. The court finds that Defendants’ attorneys have violated Rule 11(b)(2).2
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`Assertion of the unregistered works was not warranted by existing law or by a
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`nonfrivolous argument for extending, modifying, or reversing existing law or for
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`establishing new law.3 Defendants’ attorneys should have realized this over a year ago
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`when Promedev raised the issue in its motion to strike. (See Mot. to Strike at 3.) Instead,
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`they marched onward, arguing that Promedev’s “attempts to refute MaXXiMedia’s
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`infringement claim . . . ignore[ed] well over a hundred advertisements created in total.”
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`(MSJ Resp. at 8.) This court does not issue sanctions lightly, but this is an extraordinary
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`case involving conduct so egregious as to necessitate sanctions.
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`The court finds that a monetary sanction equal to the cost of registering the 124
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`unregistered copyrights is no greater than necessary to deter repetition of this conduct or
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`comparable conduct by others similarly situated. See Fed. R. Civ. P. 11(c)(4).
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`Defendants have “request[ed] that the Court take judicial notice of the U.S. Copyright
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`Office’s application fees (Texas forms noted at $125 per registration).” (4/8/24 OSC
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`Resp. at 6 n. 26.) The court does so and issues a fee of $125 for each of the 124 works,
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`resulting in a monetary sanction of $15,500.
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`//
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`2 To be clear, the court does not issue sanctions against Defendants, but rather their
`attorneys.
` Although the precise issue in Fourth Estate concerned whether “registration . . . has
`been made” under Section 411(a) when the copyright owner submits the application materials or
`only after the Copyright Office grants registration, 139 S. Ct. at 888, Defendants did not even
`take the initial step of submitting applications for the 124 advertisements.
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`ORDER - 8
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`Case 2:22-cv-01063-JLR Document 110 Filed 04/11/24 Page 9 of 9
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`IV. CONCLUSION
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`For the foregoing reasons, the court issues Rule 11 sanctions against Defendants’
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`attorneys. Defendants’ attorneys are ORDERED to pay a fine of $15,500 by no later than
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`April 26, 2024. The check shall be made payable to the “Clerk, U.S. District Court.”
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`Defendants’ attorneys shall file a certificate of compliance with this order by no later than
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`May 3, 2024.
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`Dated this 11th day of April, 2024.
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`A
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`JAMES L. ROBART
`United States District Judge
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`ORDER - 9
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