Case 3:19-cv-01586-MO Document 57 Filed 01/13/20 Page 1 of 36
`
`Peter R. Ginsberg (admitted pro hac vice)
`Mitchell C. Stein (admitted pro hac vice)
`Sullivan & Worcester LLP
`1633 Broadway, 32nd Floor
`New York, NY 10019
`Phone: 212-660-3000
`Fax: 212-660-3001
`Email: prginsberg@sullivanlaw.com
`Email: mstein@sullivanlaw.com
`
`Nathaniel R. B. Koslof (admitted pro hac vice)
`Sullivan & Worcester LLP
`One Post Office Square
`Boston, MA 02109
`Phone: 617-338-2439
`Fax: 617-338-2880
`Email: nkoslof@sullivanlaw.com
`
`Renee E. Rothauge, OSB #903712
`Markowitz Herbold PC
`1455 SW Broadway, Suite 1900
`Portland, OR 97201
`Phone: 503-295-3085
`Fax: 503-323-9105
`Email: ReneeRothauge@markowitzherbold.com
`
`Attorneys for Plaintiff Counterclaim Defendant Kawhi Leonard
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF OREGON
`PORTLAND DIVISION
`
`Plaintiff/Counterclaim Defendant,
`
`
`
`KAWHI LEONARD,
`
`
`
`v.
`
`NIKE, INC.,
`
`
`
`
`
`Defendant/Counterclaimant.
`
`
`
`
`
`
`Case No. 3:19-cv-01586-MO
`
`PLAINTIFF KAWHI LEONARD’S
`RESPONSE IN OPPOSITION TO
`DEFENDANT AND
`COUNTERCLAIMANT NIKE, INC.’S
`MOTION FOR JUDGMENT ON THE
`PLEADINGS
`
`ORAL ARGUMENT REQUESTED
`
`
`PLAINTIFF’S RESPONSE TO MOTION FOR JUDGMENT ON THE PLEADINGS
`
`
`

`

`Case 3:19-cv-01586-MO Document 57 Filed 01/13/20 Page 2 of 36
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`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ......................................................................................................... iv
`
`INTRODUCTION .......................................................................................................................... 1
`
`BACKGROUND ............................................................................................................................ 3
`
`I.
`
`II.
`
`III.
`
`IV.
`
`Mr. Leonard Conceived of and Created the Leonard Logo Before He Entered into the
`Nike Agreement. ................................................................................................................. 3
`
`Mr. Leonard Subsequently Permitted Nike to Use the Leonard Logo under His Control
`and Supervision. .................................................................................................................. 5
`
`Nike Recognized that Mr. Leonard is the Owner of the Leonard Logo. ............................ 5
`
`Nike Files a Copyright Application for the Leonard Logo without Mr. Leonard’s
`Knowledge. ......................................................................................................................... 6
`
`PROCEDURAL BACKGROUND ................................................................................................. 7
`
`ARGUMENT .................................................................................................................................. 8
`
`I.
`
`II.
`
`Legal Standard: A Motion for Judgment on the Pleadings is Limited to the Sufficiency
`of Pleadings ......................................................................................................................... 8
`
`Nike’s Motion Does Not Challenge the Sufficiency of Mr. Leonard’s Pleadings But,
`Rather, Disputes Facts. ..................................................................................................... 10
`
`III. Mr. Leonard Adequately Pled that He Owns the Leonard Logo. ..................................... 11
`
`A.
`
`B.
`
`The Complaint Alleges that Mr. Leonard Created the Leonard Logo .................. 12
`
`Mr. Leonard Has Pled that He Continues to Own the Leonard Logo................... 18
`
`IV.
`
`Nike Is Not Entitled to Judgment as a Matter of Law on Nike’s Counterclaims. ............ 23
`
`A.
`
`B.
`
`The Parties Dispute Whether Nike Owns a Valid Copyright in the Leonard
`Logo. ................................................................................................................... 24
`
`Alternatively, Mr. Leonard’s Allegations and Affirmative Defenses Preclude
`an Award of Judgment in Nike’s Favor Regarding Nike’s Copyright and
`Breach of Contract Counterclaims. ....................................................................... 26
`
`C.
`
`Mr. Leonard Did Not Fraudulently Register His Copyright. ................................ 27
`
`
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`Case 3:19-cv-01586-MO Document 57 Filed 01/13/20 Page 3 of 36
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`V.
`
`In the Event that the Court Finds Mr. Leonard’s Allegations Deficient, Leave to
`Amend is Properly Granted .............................................................................................. 27
`
`CONCLUSION ............................................................................................................................. 28
`
`
`
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`
`TABLE OF AUTHORITIES
`
`Cases Page
`
`ABS Entm’t v. CBS Corp.,
`908 F.3d 405, 413 (9th Cir. 2018). ………………………………………………
`
`11, 22
`
`
`Baxter v. MCA, Inc.,
`812 F.2d 421, 425 (9th Cir. 1987) .................................................................................. 16
`
`
`Bell v. Davis,
`2019 U.S. Dist. LEXIS 223031 (D. Or. Dec. 31, 2019) .................................................. 24
`
`
`Brighton Collectibles, Inc. v. RK Tex. Leather Mfg.,
`2012 U.S. Dist. LEXIS 177718 (S.D. Cal. Dec. 13, 2012) ............................................. 23
`
`
`Cafferty v. Scotti Bros. Records,
`969 F. Supp. 193 (S.D.N.Y. 1997) .................................................................................. 27
`
`
`Cent. Or. Indep. Health Servs. v. State,
`211 Or. App. 520, 156 P.3d 97 (Or. Ct. App. 2007) ...........................................................19
`
`
`Clark v. Chase Home Fin. LLC,
`2008 U.S. Dist. LEXIS 47295 (S.D. Cal. June 3, 2008) ................................................... 9
`
`
`DC Comics v. Towle,
`802 F.3d 1012, 1023 (9th Cir. 2015) ......................................................................... 11, 22
`
`
`Desire, LLC v. Manna Textiles, Inc.,
`2017 U.S. Dist. LEXIS 217691 (C.D. Cal. Aug. 18, 2017) ................................................17
`
`
`Diamond Foods, Inc. v. Hottrix, LLC,
`2016 U.S. Dist. LEXIS 93247 (N.D. Cal. July 18, 2016) ...................................................17
`
`
`Digimarc Corp. v. Verance Corp.,
`2011 U.S. Dist. LEXIS 152031 (D. Or. Sept. 19, 2011 .........................................................7
`
`
`Entm’t Research Grp., Inc. v. Genesis Creative Grp., Inc.,
`122 F.3d 1211 (9th Cir. 1997) ............................................................................................23
`
`
`Feist Publ’ns v. Rural Tel. Serv. Co.,
`499 U.S. 340 (1991) ............................................................................................................11
`
`
`Gen. Conference Corp. of Seventh-Day Adventists v. Seventh-Day Adventist Congregational
`Church,
`887 F.2d 228 (9th Cir. 1989) ..............................................................................................23
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`
`
`Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC,
`925 F.3d 1140 (9th Cir. 2019) ...............................................................................................25
`
`
`Hal Roach Studios, Inc. v. Richard Feiner & Co.,
`896 F.2d 1542 (9th Cir. 1989) ..............................................................................................8, 9
`
`
`In re Palmer,
`207 F.3d 566 (9th Cir. 2000) ..................................................................................................21
`
`
`Int’l Longshore & Warehouse Union, Local 40 v. Columbia Grain,
`2014 U.S. Dist. LEXIS 136326 (D. Or. July 21, 2014) .........................................................10
`
`
`James W. Fowler Co. v. QBE Ins. Corp.,
`2019 U.S. Dist. LEXIS 106007 (D. Or. Jun. 25, 2019) ..........................................................24
`
`
`Khoja v. Orexigen Therapeutics, Inc.,
`899 F.3d 988 (9th Cir. 2018) .................................................................................................12
`
`
`L.A. Printex Industries v. Aeropostale, Inc.,
`676 F.3d 841 (9th Cir. 2012) .......................................................................................... 12, 15
`
`
`Lambert Corp. v. LBJC Inc.,
`2014 U.S. Dist. LEXIS 83108 (C.D. Cal. Jun. 16, 2014) ................................................24, 25
`
`
`Malibu Textiles, Inc. v. Label Lane Int'l, Inc.,
`922 F.3d 946 (9th Cir. 2019) .......................................................................................... passim
`
`
`Marchel Design, Inc. v. Best Master Enter., Inc.,
`2008 U.S. Dist. LEXIS 110495 (C.D. Cal. Oct. 23, 2008) ..................................................... 13
`
`
`Mattel, Inc. v. MGA Entm’t, Inc.,
`616 F.3d 904 (9th Cir. 2010) .....................................................................................17, 18, 20
`
`
`McNair v. Oregon,
`2017 U.S. Dist. LEXIS 136125 (D. Or. Aug. 16, 2017) .........................................................26
`
`
`Micro Star v. Formgen Inc.,
`154 F.3d 1107 (9th Cir. 1998) ................................................................................................27
`
`
`Mountain v. Mehron, Inc.,
`2018 U.S. Dist. LEXIS 226318 (C.D. Cal. Aug. 15, 2018) ...................................................15
`
`
`N. Pac. Ins. Co. v. Hamilton,
`332 Or. 20, 22 P.3d 739 (Or. 2001) .......................................................................................19
`
`
`
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`
`
`Nirvana LLC v. Mark Jacobs Int’l, LLC,
`No. CV 18-10743(JAK)(SK) (C.D. Cal. Nov. 8, 2019) ..................................................14, 16
`
`
`Nova Design Build Inc. v. Grace Hotels LLC¸
`2009 U.S. Dist. LEXIS 23563 (N.D. Ill. Mar. 25, 2009) .......................................................10
`
`
`Olson v. Sperry,
`2015 U.S. Dist. LEXIS 23709 (C.D. Cal. Feb. 26, 2015) ......................................................11
`
`
`Optima Tax Relief v. Channel Clarity, Inc.,
`2015 U.S. Dist. LEXIS 186829 (C.D. Cal. Aug. 26, 2015) .............................................10, 11
`
`
`Page v. Roundpoint Mortg. Servicing Corp.,
`2019 U.S. Dist. LEXIS 23466 (D. Or. Feb. 12, 2019) ........................................................8, 9
`
`
`PGF Care Center, Inc. v. Wolfe,
`208 Or. App. 145, 144 P.3d 983 (Or. Ct. App. 2006) ...........................................................19
`
`
`Rentmeester v. Nike, Inc.,
`883 F.3d 1111 (9th Cir. 2018) ...................................................................................12, 16, 17
`
`
`Romex Textiles, Inc. HK Worldwide, LLC,
`2019 U.S. Dist. LEXIS 141410 (C.D. Cal. Aug. 20, 2019) ...................................................13
`
`
`S.O.S., Inc. v. Payday, Inc.,
`886 F.2d 1081 (9th Cir. 1989) ...............................................................................................18
`
`
`Shame on You Prods. v. Banks,
`120 F. Supp. 3d 1123 (C.D. Cal. Aug. 14, 2015) ..................................................................18
`
`
`Sleash, LLC v. One Pet Planet, LLC,
`2014 U.S. Dist. LEXIS 109253 (D. Or. Aug. 6, 2014 ............................................................19
`
`
`Sollars v. City of Milwaukie,
`222 Or. App. 384, 388, 193 P.3d 75 (Or. Ct. App. 2008) .....................................................19
`
`
`Sorenson v. Wolfson,
`96 F. Supp. 3d 347 (S.D.N.Y. 2015) .....................................................................................26
`
`
`Springboards to Educ., Inc. v. Families in Sch.,
`2018 U.S. Dist. LEXIS 225759 (C.D. Cal. Apr. 26, 2018) .....................................................9
`
`
`Swirsky v. Carey,
`376 F.3d 841 (9th Cir. 2004) .................................................................................................14
`
`
`
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`
`
`Three Boys Music Corp. v. Bolton,
`212 F.3d 477 (9th Cir. 2000) .................................................................................................12
`
`
`U.S. Auto Parts Network, Inc. v. Parts Geek LLC,
`692 F.3d 1009 (9th Cir. 2012) ...............................................................................................22
`
`
`Umpqua Bank v. Progressive Cas. Ins. Co.,
`2011 U.S. Dist. LEXIS 132127 (D. Or. Nov. 14, 2011) ..........................................................8
`
`
`Von Saher v. Norton Simon Museum of Art at Pasadena,
`592 F.3d 954 (9th Cir. 2010) ..................................................................................................13
`
`
`Williams v. Gaye,
`895 F.3d 1106 (9th Cir. 2018) .....................................................................................12, 13,16
`
`
`Williams v. Invenergy, LLC,
`2014 U.S. Dist. LEXIS 173160 (D. Or. Dec. 16, 2014) ..........................................................8
`
`Statutes and Rules
`
`17 U.S.C. § 101 .............................................................................................................................22
`
`17 U.S.C. §411(b) ...................................................................................................................26, 27
`
`Fed. R. Civ. P.8(a)(2) .......................................................................................................................8
`
`Fed. R. Civ. P. 12(c) ....................................................................................................................8, 9
`
`Fed. R. Civ. P. 12(b)(6)....................................................................................................................8
`
`Fed. R. Civ. P. 15(a)(2) ..................................................................................................................27
`
`Other Authorities
`
` 1
`
`
`
`
`
` Nimmer on Copyright §5.01…………………………………………………………………...11
`
`
`
`
`
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`Plaintiff Kawhi Leonard (“Mr. Leonard”) respectfully submits this response to the
`
`Motion for Judgment on the Pleadings (the “Motion”) (Dkt. No. 54) filed by Defendant Nike,
`
`Inc. (“Nike”). For the reasons set forth herein, the Motion should be denied in its entirety.
`
`INTRODUCTION
`
`This civil action arises out of a dispute between Mr. Leonard, a professional basketball
`
`star who has twice been named Most Valuable Player at the NBA Finals, and Nike, with whom
`
`Mr. Leonard had a prior endorsement arrangement, over who created and who owns the
`
`copyright in the “Leonard Logo.” The Leonard Logo is a design based on the size and shape of
`
`Mr. Leonard’s famously large hands that incorporates his initials “KL” and his jersey number
`
`“2.” As shown below, Mr. Leonard’s complaint clearly sets forth the factual bases for his claim
`
`in support of declaratory judgment that he is the owner of the Leonard Logo and its copyrights
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`and has not infringed any of Nike’s purported copyrights. Likewise, Mr. Leonard has
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`unequivocally denied the elements of Nike’s counterclaims, including that he has assigned rights
`
`in the Leonard Logo to Nike under the terms of the “Men’s Pro Basketball Contract” between the
`
`parties dated October 26, 2011 (the “Nike Agreement”).
`
`Nike’s Motion does not challenge the sufficiency of Mr. Leonard’s pleadings.1 Instead,
`
`in an effort to short-circuit discovery and the fact finding required to resolve this dispute, Nike
`
`has concocted its Motion based on meritless arguments that the pleadings, as well as a ruling by
`
`the United States District Court for the Southern District of California in San Diego where this
`
`action was originally filed, create undisputed “facts” which entitle it to judgment. Indeed, Nike’s
`
`
`1 Nike had an opportunity to move to dismiss Mr. Leonard’s pleadings under Rule 12(b)(6) when
`Mr. Leonard originally filed his complaint in San Diego, but did not, instead filing its answer and
`counterclaims.
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`Motion is based on the unsupportable and false premise that its allegations are true, while Mr.
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`Leonard’s are not. This is, of course, not permitted for motions under Rule 12(c), where the
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`well-pled allegations of the non-moving party must be credited as true, while conflicting
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`allegations of the moving party must be disregarded.
`
`Moreover, the purported “admissions” and “undisputed facts” upon which Nike purports
`
`to rely in support of its Motion are neither admissions nor undisputed. To the contrary, the
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`pleadings demonstrate a plethora of disputed facts, including: (1) whether the Leonard Logo
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`should be considered to be a single logo or two separate logos; (2) the date when the Leonard
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`Logo was created; (3) whether Mr. Leonard assigned rights in the Leonard Logo to Nike under
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`the terms of the Nike Agreement, or merely licensed rights to Nike; and (4) whether Nike
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`representatives acknowledged Mr. Leonard’s ownership rights in the Leonard Logo. The
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`existence of these factual issues was expressly recognized by the court in San Diego in the very
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`same order on which Nike relies falsely to claim that the Leonard Logo was created under the
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`Nike Agreement.2
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`Nike’s Motion is inappropriate, the arguments on which it is based are meritless, and the
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`Motion should be denied. In the alternative, if the Court finds that Mr. Leonard’s pleadings are
`
`legally deficient in any manner, Mr. Leonard asks for leave to amend his pleadings in accordance
`
`with the Court’s ruling.
`
`
`
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`
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`2 See (Dkt. No. 30-1 at 5 (“The parties’ respective naming of the … images throughout their
`briefs epitomizes their dispute”).) The district court in San Diego further recognized that the
`parties’ disagreement over the genesis and ownership of the Leonard Logo “may or may not fall
`under the Nike Agreement” and will be “the bulk of the dispute” needing resolution. (Id. at 7.)
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`BACKGROUND
`
`I.
`
`Mr. Leonard Conceived of and Created the Leonard Logo Before He Entered into
`the Nike Agreement.
`
`As alleged in his Complaint (the “Complaint,” Dkt. No. 1), Mr. Leonard is a professional
`
`basketball player currently playing for the Los Angeles Clippers of the National Basketball
`
`Association. Mr. Leonard played for the San Antonio Spurs from the time he was drafted in
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`June 2011 until 2018, when he was traded to the Toronto Raptors. (Id. ¶ 14.) Mr. Leonard has
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`helped his team win two NBA championships (in 2014 with the Spurs and in 2019 with the
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`Raptors), and each time was named the Most Valuable Player of the Finals. (Id.)
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`Throughout his career, Mr. Leonard has been “known for his extremely large hands,”
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`which, as alleged in the Complaint, “spectators have noticed” and they are “often described as
`
`contributing to his success as a player.” (Id. ¶ 15.) The Complaint alleges that in recognition of
`
`the unique nature of his hands, “since at least his college years [Mr.] Leonard contemplated and
`
`conceived of ideas for a personal logo which would be unique to him and reflect something
`
`meaningful relating to his own image.” (Id. ¶ 17; see also id. ¶ 1.) The Complaint alleges that
`
`Mr. Leonard created the logo at issue, which encompassed his hand, his initials and his jersey
`
`number (number two), when he was in college. (Id. ¶¶ 1, 17-18.) Throughout the period in
`
`which he created the Leonard Logo (i.e., in the years preceding December 2011), Mr. Leonard
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`shared his original work with family and friends, solicited the advice of others and made
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`modifications to his design. (Id. ¶ 19.)
`
`Nike concedes that Mr. Leonard created “his own sketch that incorporated a hand, the
`
`initials ‘KL’ and the number ‘2’” and subsequently shared that design with Nike. (Motion at 4.)
`
`Nike also concedes that Nike has no right to that logo. (Dkt. No. 17-1 at 2) (“NIKE does not
`
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`assert ownership of [Mr.] Leonard’s design [forwarded to Nike]. As far as Nike is concerned,
`[Mr.] Leonard is free to use it.”)
`On October 26, 2011, Nike and Mr. Leonard signed the Nike Agreement, the purpose of
`
`which was for Mr. Leonard to provide “personal services and expertise in the sport of
`
`professional basketball and [Mr. Leonard’s] endorsement of the Nike Brand and use of Nike
`
`products.” (Compl. ¶¶ 20, 22.) The Nike Agreement’s initial duration was from October 1, 2011
`
`to September 30, 2014, and thereafter extended in a series of agreements finally expiring on
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`September 30, 2018. (Compl. ¶ 21.)
`
`The Nike Agreement included an annexed “Nike Standard Terms & Conditions,” which
`
`Nike prepared. Those terms state, inter alia, that “Nike exclusively owns all rights, title and
`
`interest in and to the Nike Marks and that Nike shall exclusively own all rights, title and interest
`
`in and to any logos, trademarks, service marks, characters, personas, copyrights, shoe or other
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`product designs, patents, trade secrets or other forms of intellectual property created by Nike
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`(and/or its agents), CONSULTANT or ATHLETE in connection with this Contract.”3 (Nike
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`Agreement, Nike Standard Terms & Conditions, ¶ 8 (emphasis added).) The Nike Agreement,
`
`however, did not address ownership of intellectual property created by Mr. Leonard prior to his
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`execution of the Nike Agreement that was later modified by Nike. The contractual ambiguity
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`surrounding whether the Leonard Logo was “created . . . in connection with this Contract” and
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`the facts surrounding it lie at the heart of the dispute between the parties.
`
`
`
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`3 “Nike Marks” is a defined term “meaning trademarks or brands owned and/or controlled by
`Nike,” including the Nike Swoosh Design and the Nike Air Design. Mr. Leonard denies that the
`Leonard Logo constitutes a Nike Mark. (Countercl. ¶ 85; Countercl. Answer ¶ 85.)
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`II. Mr. Leonard Subsequently Permitted Nike to Use the Leonard Logo under His
`Control and Supervision.
`
`Mr. Leonard’s pleadings allege that, subsequent to both his creation of the Leonard Logo
`
`and his signing of the Nike Agreement, Nike discussed with him the creation of a unique logo to
`
`affix to merchandise to be sold under the Nike Agreement. (Compl. ¶ 23.) Nike proposed
`
`concepts to Mr. Leonard, all of which Leonard rejected. (Id. ¶¶ 24-25.) Mr. Leonard instead
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`forwarded the Leonard Logo to Nike, and specifically “said he would permit Nike to use [the
`
`logo] during the term of the Nike Agreement (under his supervision and control).” (Id. ¶ 25.)
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`After rejecting efforts by Nike to modify his logo (Id. ¶ 26-27), Mr. Leonard alleges that he
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`ultimately accepted an additional proposal from Nike in June 2014 that modestly modified the
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`Leonard Logo, granting Nike permission to affix that logo on merchandise during the term of the
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`Nike Agreement, while conditioning that permission upon his retaining ownership of the
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`Leonard Logo. (Id. ¶ 29.) Mr. Leonard alleges that his representatives “confirmed that [Mr.]
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`Leonard continued to own the Leonard Logo” after he gave permission to Nike use it (Id. ¶ 31),
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`and that Mr. Leonard never transferred the rights to the Leonard Logo to Nike (Id. ¶ 32).4
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`III. Nike Recognized that Mr. Leonard is the Owner of the Leonard Logo.
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`The parties dispute whether the other party acted in a manner consistent with ownership
`
`of the Leonard Logo during the term of the Nike Agreement. Mr. Leonard has pled that
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`discoverable communications, including text messages and emails between and among Mr.
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`Leonard and Nike personnel, show that Mr. Leonard retained ownership of the Leonard Logo
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`and that Nike representatives contemporaneously recognized Mr. Leonard’s status and rights as
`
`
`4 Mr. Leonard expects to demonstrate during discovery that he would not have continued to work
`on the Leonard Logo, or allowed Nike to modify it, had Nike not clearly indicated to him that he
`would retain ownership and control over the Leonard Logo.
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`the owner of the logo. (Id. ¶¶ 32-33.) Moreover, Mr. Leonard alleges that he freely used the
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`Leonard Logo on non-Nike goods during the term of the Nike Agreement (including on
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`merchandise used for basketball camps and charity events), and that Nike knew of and did not
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`challenge such uses. (Id. ¶ 34.) The allegation that Nike on multiple occasions refused to act
`
`when Mr. Leonard’s representatives, upon learning that third-parties were using the Leonard
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`Logo without authorization, reached out to Nike for advice and assistance in halting the
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`unauthorized use is consistent with Nike’s lack of ownership in the Leonard Logo. (Id. at ¶ 35.)
`
`Nike, meanwhile, denies the allegations that it consented to such uses or failed to assist Mr.
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`Leonard in seeking to halt unauthorized uses. (Nike Answer ¶ 34-35.)
`
`IV. Nike Files a Copyright Application for the Leonard Logo without Mr. Leonard’s
`Knowledge.
`
`
`
`Nike, without notice to Mr. Leonard, later filed an application with the United States
`
`Copyright Office to register a copyright in the Leonard Logo. The Copyright Office granted
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`Nike’s application on May 11, 2017. (Id. ¶¶ 36-37.) Mr. Leonard was unaware that Nike had
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`filed this application, and Nike did not notify Mr. Leonard when the registration was awarded.
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`(Id. ¶¶ 36, 41.) Nike’s claim to ownership of the Leonard Logo is premised on the false
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`representations Nike made in its copyright application, including that it authored the logo. (Id. ¶
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`40.)
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`Mr. Leonard, meanwhile, registered two trademarks in three different categories of
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`registration consisting of, and inspired by, Mr. Leonard’s creation of the Leonard Logo,
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`including an image of his hand, his initials and jersey number. (Id. at ¶ 42.) On June 3, 2019,
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`the same day that the Complaint was filed, Mr. Leonard applied to register his copyright in the
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`Leonard Logo with the US Copyright Office. On his application, Mr. Leonard disclosed the
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`prior Nike copyright registration of the same logo. The US Copyright Office registered Mr.
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`Case 3:19-cv-01586-MO Document 57 Filed 01/13/20 Page 14 of 36
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`Leonard’s copyright under registration number VA 2-153-704. (Countercl. ¶ 40; Countercl.
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`Answer ¶ 40.) Through this Motion, Nike now seeks a judgment declaring that Nike owns all
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`rights to the Leonard Logo and invalidating Mr. Leonard’s copyright.
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`PROCEDURAL BACKGROUND
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`
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`Mr. Leonard initiated this action in the United States District Court for the Southern
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`District of California on June 3, 2019. The Complaint states a claim for relief seeking
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`declaratory judgment pursuant to, inter alia, 17 U.S.C. §§ 101 and 201(a) that Mr. Leonard is the
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`sole author of the Leonard Logo, that his use of the Leonard Logo does not infringe on Nike’s
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`rights, and that Nike committed fraud on the Copyright Office.
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`
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`Nike filed its Answer and Counterclaims to the Complaint on July 17, 2019 (the “Nike
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`Answer” and the “Counterclaim”, respectively, each at Dkt. No. 16). Nike asserts six
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`counterclaims against Mr. Leonard: (1) declaratory judgment of copyright ownership; (2)
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`copyright infringement; (3) cancellation of Leonard’s registration of copyright number VA 2-
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`153-704 for “fraud on the Copyright Office”; (4) breach of paragraph 8 of the Nike Agreement;
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`(5) breach of paragraph 13(b) of the Standard Terms and Conditions in the Nike Agreement; and
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`(6) breach of paragraph 21 of the Standard Terms and Conditions in the Nike Agreement.5 On
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`that same day, Nike filed a motion to transfer venue to the District of Oregon. (Dkt. No. 17.)
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`5 Nike does not address its Sixth Counterclaim in its Memorandum of Points and Authorities and
`cites no authority to suggest that, as a matter of law, Mr. Leonard breached the Nike Agreement
`by filing this action in California. See Digimarc Corp. v. Verance Corp., 2011 U.S. Dist. LEXIS
`152031, at *34 (D. Or. Sept. 19, 2011) (denying motion for summary judgment as to issue of
`whether filing action in Delaware breached contract and noting “the absence of Oregon authority
`supporting the conclusion that such a [breach of contract] claim is viable”). In any case, Mr.
`Leonard disputes Nike’s characterization of the order to transfer venue entered by the
`transferring court, and no finding was made that Mr. Leonard breached the Nike Agreement by
`filing his Complaint in the Southern District of California.
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`Mr. Leonard filed his Answer to Defendant’s Counterclaim on August 28, 2019 (Dkt. No. 26,
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`cited herein as “Countercl. Answer”).
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`
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` The District Court in San Diego granted Nike’s motion to transfer on October 3, 2019.
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`(Dkt. No. 30-1.) Without examining the sufficiency of the parties’ allegations or the merits of
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`the parties’ claims, the transferring court noted that that “[n]o matter the details of the design
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`process, this dispute is clearly over the use and ownership of the finalized copyrighted logo.”
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`(Dkt. No. 30-1 at 6.) Finding that Mr. Leonard’s claim “involves an issue that may or may not
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`fall under the Nike Agreement (in fact this will likely be the bulk of this dispute),” the
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`transferring court thus held that this lawsuit arises under the Nike Agreement for venue purposes,
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`while making no finding regarding the Leonard Logo itself. (Id. at 7) (emphasis added.)
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`ARGUMENT
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`I.
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`
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`Legal Standard: A Motion for Judgment on the Pleadings is Limited to the
`Sufficiency of Pleadings
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`To state a claim, a complaint need make only a “short and plain statement of the claim
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`showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). The purpose of a Rule
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`12(c) motion is to challenge the sufficiency of the opposing party’s pleadings. Williams v.
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`Invenergy, LLC, 2014 U.S. Dist. LEXIS 173160, at *8 (D. Or. Dec. 16, 2014). The standard for
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`granting a motion brought pursuant to Fed. R. Civ. P. 12(c) is “substantially identical” to the
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`analysis for a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) because “under both rules, a
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`court must determine whether the facts alleged in the complaint, taken as true, entitle the plaintiff
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`to a legal remedy.” Page v. Roundpoint Mortg. Servicing Corp., 2019 U.S. Dist. LEXIS 23466
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`(D. Or. Feb. 12, 2019) (citing Pit River Tribe v. BLM, 793 F.3d 1147, 1155 (9th Cir. 2015)).
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`Accordingly, a defendant’s Rule 12(c) motion must be denied where the non-conclusory factual
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`content of the complaint and reasonable inferences from that content are “plausibly suggestive of
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`Case 3:19-cv-01586-MO Document 57 Filed 01/13/20 Page 16 of 36
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`a claim entitling the plaintiff to relief.” Id. (citation omitted). For purposes of a Rule 12(c)
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`motion, the allegations of the non-moving party must be accepted as true. Hal Roach Studios,
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`Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1550 (9th