Case 1:20-cv-00988-AWI-BAM Document 42 Filed 07/20/21 Page 1 of 36
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`UNITED STATES DISTRICT COURT
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`EASTERN DISTRICT OF CALIFORNIA
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`CASE NO. 1:20-CV-0988 AWI BAM
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`ORDER ON COUNTER-DEFENDANTS’
`MOTION TO DISMISS
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`(Doc. No. 23)
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`YELLOWCAKE, INC.,
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`Plaintiff
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`v.
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`HYPHY MUSIC, INC.,
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`Defendant
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`_____________________________________
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`HYPHY MUSIC, INC.,
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` Count-Plaintiff
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`YELLOWCAKE, INC., COLONIZE
`MEDIA, INC., JOSE DAVID
`HERNANDEZ, and JESUS CHAVEZ, SR.
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` Counter-Defendants
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`This is a copyright dispute involving seven musical albums by the artist Los Originales De
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`San Juan. Counter-Plaintiff Hyphy Music, Inc. (“Hyphy”) brings claims against Counter-
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`Defendants Yellowcake, Inc. (“Yellowcake”), Colonize Media, Inc. (“Colonize”), Jose Hernandez
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`(“Hernandez”) (collectively “YCH”) and Jesus Chavez, Sr. (“Chavez”) for two copyright
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`violations under the Copyright Act (17 U.S.C. § 100 et seq.) involving four of the albums and
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`associated cover art of three of the albums, and state law claims for intentional interference with
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`prospective economic advantage, intentional interference with contractual relations, unfair
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`competition, conversion, and breach of contract. Currently before the Court is YCH’s Rule
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`12(b)(6) motion to dismiss six of the seven counterclaims alleged against them. For the reasons
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`that follow, Defendants’ motion will generally be granted.
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` RULE 12(b)(6) FRAMEWORK
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`Under Federal Rule of Civil Procedure 12(b)(6), a claim may be dismissed because of the
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`plaintiff’s “failure to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6).
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`Counterclaims are subject to Rule 12(b)(6) challenges. See Seismic Reservoir 2020, Inc. v.
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`Paulsson, 785 F.3d 330, 335 (9th Cir. 2015). A dismissal under Rule 12(b)(6) may be based on
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`the lack of a cognizable legal theory or on the absence of sufficient facts alleged under a
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`cognizable legal theory. Mollett v. Netflix, Inc., 795 F.3d 1062, 1065 (9th Cir. 2015). In
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`reviewing a complaint under Rule 12(b)(6), all well-pleaded allegations of material fact are taken
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`as true and construed in the light most favorable to the non-moving party. Kwan v. SanMedica,
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`Int’l, 854 F.3d 1088, 1096 (9th Cir. 2017). However, complaints that offer no more than “labels
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`and conclusions” or “a formulaic recitation of the elements of a cause of action will not do.”
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Johnson v. Federal Home Loan Mortg. Corp., 793
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`F.3d 1005, 1008 (9th Cir. 2015). The Court is “not required to accept as true allegations that
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`contradict exhibits attached to the Complaint or matters properly subject to judicial notice, or
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`allegations that are merely conclusory, unwarranted deductions of fact, or unreasonable
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`inferences.” Seven Arts Filmed Entm’t, Ltd. v. Content Media Corp. PLC, 733 F.3d 1251, 1254
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`(9th Cir. 2013). To avoid a Rule 12(b)(6) dismissal, “a complaint must contain sufficient factual
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`matter, accepted as true, to state a claim to relief that is plausible on its face.” Iqbal, 556 U.S. at
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`678; Mollett, 795 F.3d at 1065. “A claim has facial plausibility when the plaintiff pleads factual
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`content that allows the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged.” Iqbal, 556 U.S. at 678; Somers v. Apple, Inc., 729 F.3d 953, 959 (9th Cir.
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`2013). “Plausibility” means “more than a sheer possibility,” but less than a probability, and facts
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`that are “merely consistent” with liability fall short of “plausibility.” Iqbal, 556 U.S. at 678;
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`Somers, 729 F.3d at 960. The Ninth Circuit has distilled the following principles for Rule
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`12(b)(6) motions: (1) to be entitled to the presumption of truth, allegations in a complaint or
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`counterclaim may not simply recite the elements of a cause of action, but must contain sufficient
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`allegations of underlying facts to give fair notice and to enable the opposing party to defend itself
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`effectively; (2) the factual allegations that are taken as true must plausibly suggest entitlement to
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`Case 1:20-cv-00988-AWI-BAM Document 42 Filed 07/20/21 Page 3 of 36
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`relief, such that it is not unfair to require the opposing party to be subjected to the expense of
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`discovery and continued litigation. Levitt v. Yelp! Inc., 765 F.3d 1123, 1135 (9th Cir. 2014). If a
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`motion to dismiss is granted, “[the] district court should grant leave to amend even if no request to
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`amend the pleading was made . . . .” Ebner v. Fresh, Inc., 838 F.3d 958, 962 (9th Cir. 2016).
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`However, leave to amend need not be granted if amendment would be futile or the plaintiff has
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`failed to cure deficiencies despite repeated opportunities. Garmon v. County of L.A., 828 F.3d
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`837, 842 (9th Cir. 2016).
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` BACKGROUND
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`Hyphy is a record label that is in the business of producing, manufacturing, distributing,
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`exploiting, selling, and licensing sound and audiovisual recordings and associated artwork.
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`Chavez is the founder and principal of the musical group Los Originales De San Juan, a popular
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`Mexican musical group.
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`In February 2013, Hyphy entered into an oral exclusive recording agreement with Chavez
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`whereby Hyphy commissioned Chavez, for a period of five (5) years, to exclusively provide
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`services as a recording artist in the making of sound and audio-visual recordings embodied in
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`albums. Pursuant to the agreement, Hyphy agreed to: (1) select the musical compositions to be
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`recorded on the albums; (2) produce the musical performances on the albums; (3) direct the
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`recording and filming of musical and audiovisual performances to be embodied on the albums;
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`and (4) pay Chavez a fixed amount per album. Chavez agreed to follow Hyphy’s artistic direction,
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`perform the recordings, and grant Hyphy the non-exclusive right to utilize Chavez’s likeness and
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`his group’s name. Chavez also agreed that Hyphy would be the owner of all title, right, and
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`interest in and to the tangible masters of the albums and all property rights in the musical
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`performances embodied in the tangible masters (including the copyrights and any extensions and
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`renewals of the copyrights) from the inception of the creation of each album. Hyphy performed
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`the above services and contributed sufficient originality to the albums such that Hyphy at a
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`minimum is a co-author, co-owner, or joint owner of the copyrights in the albums for purposes of
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`the Copyright Act. Hyphy also produced, created, and designed the album cover art for the
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`albums. Apparently, Hyphy and Chavez created four albums (Corridos de Poca M, Desde La
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`Cantina de Mi Barrio, El Campesino, and Nuestra Historia). See FAC Ex. B. Hyphy also
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`registered copyrights in the content of the four albums and in the cover art of three albums
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`(Corridos de Poca M, Desde la Cantina de Mi Barrio, and El Campesino). Hyphy alleges that it is
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`the exclusive copyright owner of the four albums and the albums’ cover art. See id.
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`In April 2019, Hernandez had a meeting with Chavez wherein Hernandez expressed his
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`interest in exploiting the four Los Originales’ albums. Chavez advised Hernandez that he had
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`entered into a contract with Hyphy and that Hyphy was the owner of the four albums. Hernandez
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`intentionally misled Chavez and wrongfully told Chavez that Hyphy had no rights in the four
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`albums and that Chavez was free to sell to Hernandez’s companies, Colonize and Yellowcake.
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`Hernandez offered Chavez a significant sum of money purportedly to purchase the rights to the
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`four albums and also promised to indemnify Chavez if Hyphy sought legal redress from Chavez.
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`Hernandez engaged in this conduct individually and on behalf of Colonize and Yellowcake to
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`disrupt the contractual relations between Hyphy and Chavez. Chavez purportedly entered into an
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`agreement with Yellowcake. In exchange for money, Chavez wrongfully transferred his
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`ownership rights in the four albums and cover art to Yellowcake, even though Chavez had no such
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`In May or June 2019, Hyphy discovered that Yellowcake and Colonize created or caused
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`the creation of copies of the four Los Originales albums and cover art and was distributing, selling
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`and exploiting these works through online platforms such as ITunes, Amazon Music, and
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`YouTube. The only difference between the cover art created by Hyphy and the cover art being
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`utilized by Yellowcake and Colonize was that Yellowcake and Colonize removed the Hyphy logos
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`and replaced them with Yellowcake and Colonize’s respective logos. This was done without
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`Hyphy’s authorization. Yellowcake sent correspondences to Hyphy in which Yellowcake was
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`claiming ownership of the masters and sound recordings of the seven albums. However,
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`Yellowcake and Colonize have no direct license from Hyphy to use or exploit the seven albums
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`and cover art.
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`Yellowcake and Colonize sent fraudulent takedown notices to YouTube that falsely
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`claimed that Hyphy had no right to post or upload the three albums and cover art. Prior to the
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`takedown notices, Hyphy had received significant revenue from YouTube, and the YouTube
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`uploads provided an important and lucrative marketing channel for the four albums and cover art.
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`Now, YCH’s uploads of the albums and cover art have generated substantial views and revenue on
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`their YouTube channels. YCH’s exploitation of the four albums is unlawful and a blatant
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`violation of California law and federal copyright law.
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`On June 4, 2020, Yellowcake filed a copyright infringement claim against Hyphy. Hyphy
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`procured registered copyrights for the four albums on the following dates: March 17, 2017 (El
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`Campesino), May 9, 2018 (Desde La Cantina de Mi Barrio), April 13, 2020 (Corridos De Poca
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`M), and August 2, 2020 (Nuestra Historia). See Defendants’ Request for Judicial Notice (“RJN”)
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`(Doc. No. 29) Exs. 1, 2, 3, 4.1 On August 19, 2020, Hyphy filed its counterclaim, and on August
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`28, 2020, filed the active First Amended Counterclaim (“FAC”).
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` COUNTER-DEFENDANTS’ MOTION TO DISMISS
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`I.
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`First Cause of Action – Copyright Infringement of Sound Recordings
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`Counter-Defendants’ Arguments
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`Yellowcake explains that in March 2019, it entered into an asset purchase agreement with
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`Chavez whereby Yellowcake purchased the entirety of Chavez’s ownership in the rights, title, and
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`interest in the sound recordings that comprise the albums of Los Originales De San Juan.
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`Yellowcake then complied in all respects with the provisions of the Copyright Act by registering
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`copyrights for each of the sound recordings. Yellowcake was issued a Certificate of Registration
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`for each copyrighted sound recording.
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`Yellowcake argues that Hyphy’s first copyright claim fails because Hyphy cannot establish
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`1 The RJN requests that the Court to take judicial notice of copies of registration information from the U.S. Copyright
`Office’s Online Catalog regarding the seven albums. See Doc. No. 29. The Court takes judicial notice of these
`governmental records. See Fed. R. Evid. 201; Basile v. Twneitieth Century Fox Film Corp., 678 F. App’x 576, 577
`(9th Cir. 2017); Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1146 (9th Cir. 2008); Yellowcake, Inc. v.
`Morena Music, Inc., 2021 U.S. Dist. LEXIS 39127, *8 n.1 (E.D. Cal. Mar. 1, 2021); Kaseberg v. Conaco, LLC, 360
`F.Supp.3d 1026, 1029 n.2 (S.D. Cal. 2018); Obodai v. YouTube LLC, 840 F.Supp.2d 714, 715 n.1 (S.D. N.Y. 2011).
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`Case 1:20-cv-00988-AWI-BAM Document 42 Filed 07/20/21 Page 6 of 36
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`that it has valid ownership of a copyright in the albums. Hyphy purports to make its ownership
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`claim by alleging an oral agreement with Chavez. However, ownership of copyrights cannot be
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`transferred by oral agreement. At best, all that could arise from the oral agreement was a non-
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`exclusive license to use the albums/sound recordings. In the absence of a writing between Hyphy
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`and Chavez, Chavez had the ability to transfer his ownership of the sound recordings to
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`Yellowcake. Because Hyphy cannot rely on the oral agreement to establish exclusive rights in the
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`four albums, the first cause of action for infringement and the third cause of action for associated
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`injunctive relief should be dismissed.
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`Counter-Plaintiff’s Opposition
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`Hyphy argues that, pursuant to Paragraph 17, the FAC alleges that Hyphy is a co-author of
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`the four albums with Chavez. As a co-author, Hyphy has an equal undivided interest in the whole
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`of the works with Chavez. This is the case regardless of whether the FAC in the alternative pleads
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`that Hyphy was granted an oral license from Chavez. Therefore, YCH’s arguments that Hyphy
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`does not possess a valid copyright in the sound recordings and masters, or that any claim thereto is
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`made only by way of an oral argument with Chavez, is misplaced. As a co-author, Hyphy may
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`sue YCH for copyright infringement because Chavez never had the ability to grant the exclusive
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`rights that YCH believed it had obtained.
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`Legal Standard
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`“The Copyright Act affords copyright owners the ‘exclusive rights’ to display, perform,
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`reproduce, or distribute copies of a copyrighted work, to authorize others to do those things, and to
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`prepare derivative works based upon the copyrighted work.” Maloney v. T3Media, Inc., 853 F.3d
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`1004, 1010 (9th Cir. 2017); see 17 U.S.C. § 106. Only the “legal or beneficial owner of an
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`exclusive right under a copyright” has standing to sue for infringement of that right. Righthaven
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`LLC v. Hoehn, 716 F.3d 1166, 1169 (9th Cir. 2013). Further, while one can own a copyright and
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`have property rights in a work without a registration, the owner needs to register the copyright
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`before he can sue for infringement. See 17 U.S.C. §§ 408(a), 411(a); Gold Value Int'l Textile, Inc.
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`v. Sanctuary Clothing, Ltd. Liab. Co., 925 F.3d 1140, 1144 (9th Cir. 2019); Alaska Stock, LLC v.
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`Houghton Mifflin Harcourt Publ'g Co., 747 F.3d 673, 678 (9th Cir. 2014). A claim for copyright
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`infringement has two basic elements: (1) ownership of a valid copyright, and (2) copying of
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`constituent elements of the work that are original. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
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`U.S. 340, 351 (1991); Great Minds v. Office Depot, Inc., 945 F.3d 1106, 1110 (9th Cir. 2019);
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`Seven Arts, 733 F.3d at 1254. “To plead ownership, [a plaintiff] must plausibly allege it owns a
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`valid copyright registration for its works.” Malibu Textiles, Inc. v. Label Lane Int’l, Inc., 922
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`F.3d 946, 951 (9th Cir. 2019).
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`Discussion
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`Hyphy’s opposition focuses on allegations in Paragraph 17 to contend that it is a co-author
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`and therefore a joint owner of the three albums. This is a reasonable reading of Paragraph 17.
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`However, the FAC also alleges an agreement between Hyphy and Chavez for the intellectual
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`property rights in the four albums. Further, documents from the Copyright Office indicate that
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`Hyphy named itself as the author of the albums as an “employer” in a work for hire arrangement.
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`Finally, although not mentioned in the opposition, Copyright Office documents for the El
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`Campesino album identify Hyphy as the copyright claimant through a written transfer agreement.
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`See RJN Ex. 4. Therefore, the opposition, the Counterclaim, and the judicially noticed documents
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`indicate four potential theories of ownership by Hyphy. The Court will examine each theory
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`1.
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`Oral Transfer from Chavez to Hyphy
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`“Copyright owners may transfer ‘[a]ny exclusive rights comprised in a copyright,
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`including any subdivision of any of the rights specified in [17 U.S.C. § 106],’ . . . so long as the
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`transfer is evidenced by a signed writing.” Corbello v. Devito, 777 F.3d 1058, 1062 (9t h Cir.
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`2015) (citing 17 U.S.C. §§ 201(d)(2) and 204(a)); see also Jules Jordan Video, Inv. v. 144942
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`Canada, Inc., 617 F.3d 1146, 1156 (9th Cir. 2010). Specifically, the Copyright Act provides that a
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`“transfer of copyright ownership, other than by operation of law, is not valid unless an instrument
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`of conveyance, or a note or memorandum of transfer, is in writing and signed by the owner of the
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`rights conveyed or such owner’s duly authorized agent.” 17 U.S.C. § 204(a). “[S]ection 204 of
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`the Copyright Act invalidates a purported transfer of ownership unless it is in writing.” Effects
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`Assocs. v. Cohen, 908 F.2d 555, 556 (9th Cir. 1990); see Radio TV Espanola S.A. v. New World
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`Entm’t Ltd., 183 F.3d 922, 926-27 (9th Cir. 1999); Konigsberg Int’l, Inc. v. Rice, 16 F.3d 355,
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`356-57 (9th Cir. 1994).
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`a.
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`Ability to Raise Compliance with § 204(a)
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`The general rule in the Ninth Circuit is that a third party may not raise noncompliance with
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`17 U.S.C. § 204(a)'s writing requirement as a defense to a copyright transfer. DRK Photo, 870
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`F.3d at 986. Section 204(a) is “designed to resolve disputes between owners and transferees and
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`to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses or
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`copyright ownership.” Jules Jordan Video, 617 F.3d at 1157; see Billy-Bob Teeth, Inc. v.
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`Novelty, Inc., 329 F.3d 586, 592 (7th Cir. 2003). In the absence of a dispute between the
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`copyright owner and transferee, “it would be unusual and unwarranted to permit a third-party
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`infringer to invoke § 204(a) to avoid suit for copyright infringement.” Jules Jordan Video, 617
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`F.3d at 1157 (quoting Billy-Bob Teeth, 329 F.3d at 592). “Although a third party may not raise
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`noncompliance with [§ 204(a)]’s writing requirement as a defense to a copyright transfer where
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`the parties to the transfer do not dispute it existence, a third party is not foreclosed from
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`challenging a plaintiff’s ownership for purposes of standing.” DRK Photo v. McGraw-Hill Global
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`Educ. Holdings, LLC, 870 F.3d 978, 986 (9th Cir. 2017) (citing Jules Jordan Video, 617 F.3d at
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`1157 and Righthaven, 716 F.3d at 1169). The copyright plaintiff bears the burden of establishing
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`a qualifying ownership interest in the copyright both as a substantive element of the infringement
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`claim and also as a necessary predicate for standing to bring the claim. DRK Photo, 870 F.3d at
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`986. The absence of standing to bring a copyright infringement claim is a jurisdictional failure.
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`Righthaven, 716 F.3d at 1172-73.
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`Here, no party has raised YCH’s ability to raise § 204(a) with respect to the oral agreement
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`between Chavez and Hyphy. Despite this failure, the Court finds that YCH’s invocation of
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`§ 204(a) is appropriate. First, as DRK Photo expressly makes clear, YCH may invoke § 204(a) as
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`a challenge to standing. Second, the express allegations in the FAC identify the only agreement
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`between Hyphy and Chavez as an oral one. Thus, the express allegations by Hyphy plainly and
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`clearly demonstrate a failure to meet § 204(a)’s requirements. Third, the Court does not find that
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`the general rule against third parties raising § 204(a) applies in this situation. This is not a case in
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`which there is no dispute between the copyright holder and the transferee. Chavez is a named
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`counter-defendant. The single claim alleged against Chavez by Hyphy is for breach of oral
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`agreement based on Chavez’s transfer of his rights in the four albums to Yellowcake. Further, the
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`fact that Chavez entered into a written agreement with YCH for the interest in the four albums
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`indicates that Chavez believed that he had not transferred his ownership interests to Hyphy. This
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`is contrary to Hyphy’s alleged position that it held all exclusive rights by virtue of its oral
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`agreement with Chavez. Thus, the counterclaim against Chavez and the nature of Chavez’s
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`actions towards the four albums clearly demonstrate a dispute between Chavez and Hyphy.
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`Ultimately, the Court is faced with competing claims from two entities who claim ownership in
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`copyrights through a common transferee and counter-defendant who transferred the copyrights
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`twice. Under these circumstances, the Court finds that it is appropriate for YCH to raise the issue
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`of compliance with § 204(a).
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`b.
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`Effect of § 204(a)
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`The Counterclaim affirmatively states that Hyphy and Chavez entered into oral recording
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`agreements that included the transfer to Hyphy of all intellectual property rights that Chavez had
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`in the four albums. See FAC ¶ 16. There are no allegations in the FAC that Hyphy and Chavez
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`entered into any kind of written agreement whatsoever.
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`The absence of a written agreement is a key argument made in YCH’s motion, yet
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`Hyphy’s opposition does not address the argument in terms of answering the writing requirement.
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`That is, Hyphy does not argue that it has a written agreement with Chavez or that a written
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`agreement is somehow unnecessary to effect a transfer of Chavez’s copyright interests. Instead,
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`the opposition regarding the first cause of action mentions the oral agreement with Chavez one
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`time, and only then in an attempt to recharacterize the agreement or the agreement’s effect.
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`Specifically, after stating the legal proposition that a co-author shares an equal undivided interest
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`in a copyrighted work, Hyphy states: “This is the case regardless of whether Hyphy also pleads in
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`the alternative that it was granted an oral license to such rights.” Doc. No. 27 at 4:20-21.
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`It is noteworthy that the FAC never uses the term “license” or expressly alleges any claim
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`or theory “in the alternative.” Nevertheless, accepting that the FAC is alleging that a license
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`exists, that does not aid Hyphy. A non-exclusive license may be granted orally or implied from
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`conduct. Effects Assocs., 908 F.2d at 558. The granting of a non-exclusive license waives the
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`right of the copyright owner to sue the licensee for copyright infringement. Graham v. Jones, 144
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`F.3d 229, 236 (2d Cir. 1998). Critically, a “mere ‘non-exclusive license’ does not constitute a
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`‘transfer of copyright ownership’ and therefore cannot confer standing to assert [a copyright]
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`infringement claim.” DRK Photo, 870 F.3d at 983; see Sybersound Records, Inc. v. UAV Corp.,
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`517 F.3d 1137, 1146 (9th Cir. 2008). Therefore, even if the Court accepts Hyphy’s
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`characterization of its agreement with Chavez, the license that would be created is non-exclusive
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`only, the license could only serve as a defense to a claim by Chavez, and it would not form an
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`ownership interest sufficient to confer standing under the first cause of action. The first cause of
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`action is in no way furthered by the contention that the oral agreement created a license in the
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`albums as between Chavez and Hyphy. Yellowcake, Inc. v. Morena Music, Inc., 2021 U.S. Dist.
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`LEXIS 39127, *16 (E.D. Cal. Mar. 1, 2021).
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`The absence of a written transfer agreement defeats both Hyphy’s standing to pursue, and
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`substantive claim of, copyright infringement based on an oral transfer of ownership between
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`Chavez and Hyphy. See 17 U.S.C. § 204(a); DRK Photo, 870 F.3d at 986; Righthaven, 716 F.3d
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`at 1172; Radio TV Espanola, 183 F.3d at 926-27; Konigsberg, 16 F.3d at 356-57; Effects Assocs.,
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`908 F.2d at 556-57. To the extent a non-exclusive license may be involved or pled in the FAC,
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`that non-exclusive license does not give Hyphy standing to pursue a copyright infringement claim.
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`DRK Photo, 870 F.3d at 983; Morena Music, 2021 U.S. Dist. LEXIS 39127 at *17. Therefore, the
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`first cause of action does not allege a valid or plausible ownership interest in the copyrights of the
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`three albums based on an oral contractual transfer between Hyphy and Chavez. Morena Music,
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`2021 U.S. Dist. LEXIS 39127 at *17.
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`2.
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`Joint Owner/Co-Author
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`A “joint work” is “a work prepared by two or more authors with the intention that their
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`contributions be merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. §
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`101; Aalmuhammed v. Lee, 202 F.3d 1227, 1231 (9th Cir. 2000); Ashton-Tate Corp. v. Ross, 916
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`F.2d 516, 520 (9th Cir. 1990). “The authors of a joint work are co-owners of the copyright in that
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`work.” 17 U.S.C. § 201(a); Richlin v. MGM Pictures, Inc., 531 F.3d 962, 968 (9th Cir. 2008);
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`Ashton-Tate, 916 F.2d at 521. Each author must make an “independently copyrightable
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`contribution,” which is a contribution that “represents original expression that could stand on its
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`own as the subject matter of copyright.” Ashton-Tate, 916 F.2d at 521 (quoting P. Goldstein,
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`Copyright: Principles, Law and Practice, § 4.2.1 p.379 (1989)); see also Richlin, 531 F.3d at 968.
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`That is, “to be an author, one must supply more than mere direction or ideas; one must ‘translate
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`an idea into a fixed tangible expression entitled to copyright protection.” S.O.S., Inc. v. Payday,
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`Inc., 886 F.2d 1081, 1087 (9th Cir. 1989); Ashton-Tate, 916 F.2d at 521. Therefore, in the Ninth
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`Circuit, a “joint work” has four elements: (1) a copyrightable work, (2) two or more authors, (3)
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`the authors intend for their contributions to be merged into inseparable or interdependent parts of a
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`unitary whole, and (4) each author made an independently copyrightable contribution to the work.
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`Aalmuhammed, 202 F.3d at 1231. In determining whether individuals are co-authors of a joint
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`work, a contract that defines relationship as one of co-authors is dispositive. See Richlin, 531
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`F.3d at 968; Aalmuhammed, 202 F.3d at 1234. In the absence of a contract, courts consider
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`whether: (1) a purported author “superintends” the work by exercising control; (2) the putative
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`co-authors make objective manifestations of a shared intent to be co-authors; and (3) the audience
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`appeal of the work turns on both contributions and the share of each in its success cannot be
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`appraised. Aalmuhammed, 202 F.3d at 1234; see also Richlin, 531 F.3d at 968. The first factor,
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`control, will often be the most important consideration. Richlin, 531 F.3d at 968; Aalmuhammed,
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`202 F.3d at 1234. Additionally, because each co-author of a “joint work” has an independent right
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`to use or license the copyright, a co-author cannot be liable to another co-author for infringement
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`of copyright, but co-authors must account to other co-authors for any profits earned from licensing
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`or using the copyright. See Ashton-Tate, 916 F.2d at 522; Oddo v. Ries, 743 F.3d 630, 632-33
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`(9th Cir. 1984). Further, unless all co-authors of a “joint work” join in granting an exclusive
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`license, a single co-author (acting on its own behalf) can grant only a non-exclusive license in the
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`copyright work because one co-author cannot limit the other co-authors’ independent right to
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`exploit the copyright. Sybersound, 517 F.3d at 1146. However, a co-owner of a copyright is free
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`to transfer his ownership interest to another, as long as the transfer is only of the exclusive
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`copyright interests that the transferring co-owner himself possesses. Tresona Multimedia, LLC v.
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`Burbank High Sch. Vocal Music Ass’n, 953 F.3d 638, 645 n.2 (9th Cir. 2020).
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`Here, YCH does not argue that the relevant allegations in the FAC (Paragraphs 16 and 17)
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`do not plausibly allege that the albums are joint works and that Chavez and Hyphy are co-authors.
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`Additionally, recent Ninth Circuit authority indicates some of the requirements for a joint
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`ownership as co-authors can at least be plausibly inferred from the Counterclaim. In Abs
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`Entertainment, the Ninth Circuit addressed the copyright claims of remastering engineers in
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`remastered sound recordings. See Abs Entm’t v. CBS Corp., 908 F.3d 405, 410-11 (9th Cir.
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`2018). As relevant here, the Ninth Circuit made a distinction between remastering engineers and
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`Nothing in this opinion should be construed to question or limit the creative
`contributions of the recording engineers and/or record producers responsible for the
`recording session that led to the initial fixation of the sound recording. The initial
`producer/engineer's role is often to work in collaboration with the performing
`artists to make many of the creative decisions that define the overall sound of the
`recording as fixed, including such things as microphone choice, microphone
`placement, setting sound levels, equipment used, processing filters employed, tapes
`selected, session structure, and other similar decisions analogous to the creative
`choices of photographers that courts have consistently held to be original. See
`United States Copyright Office and Sound Recordings as Works Made for Hire:
`Hearing Before the Subcomm. on Courts and Intellectual Property of the H. Comm.
`on the Judiciary, 106th Cong. 2nd Sess. (2000) (statement of Marybeth Peters,
`Register of Copyrights) (“The copyrightable elements in a sound recording will
`usually, though not always, involve 'authorship' both on the part of the performers
`whose performance is captured and on the part of the record producer responsible
`for setting up the recording session, capturing and electronically processing the
`sounds, and compiling and editing them to make the final sound recording.”); cf.
`Burrow-Giles, 111 U.S. at 60 (holding that photographs are copyrightable to the
`extent of the photographer's decisions with respect to costume, accessories, pose of
`subjects, light and shade and evoking the desired expression).
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`Id. at 423. Given Abs Entm’t’s observations regarding the contributions of record producers, and
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`the absence of any substantive arguments against the relevant allegations of the FAC, for purposes
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`of this motion, dismissal based on the absence of an ownership interest is inappropriate.
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`However, accepting the allegation of co-authorship, and thus joint ownership, of the four
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`albums would appear to defeat Hyphy’s claim of copyright infringement. Morena Music, 2021
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`U.S. Dist. LEXIS 39127 at *21. Hyphy’s theory means that it was a co-owner of the copyrights in
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`the albums with Chavez. See id. There is no dispute that Chavez entered int