Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 1 of 21 Page ID #:74 1 2 3 4 5 DURIE TANGRI LLP MARK A. LEMLEY (SBN 155830) mlemley@durietangri.com JOSEPH C. GRATZ (SBN 240676) jgratz@durietangri.com 217 Leidesdorff Street San Francisco, CA 94111 Telephone: 415-362-6666 Facsimile: 415-236-6300 ELECTRONIC FRONTIER FOUNDATION CORYNNE MCSHERRY (SBN 221504) 7 corynne@eff.org DANIEL NAZER (SBN 257380) 8 daniel@eff.org 815 Eddy Street 9 San Francisco, CA 94109 Telephone: 415-436-9333 6 10 11 Attorneys for Defendant HAPPY MUTANTS, LLC 12 13 IN THE UNITED STATES DISTRICT COURT 14 FOR THE CENTRAL DISTRICT OF CALIFORNIA 15 WESTERN DIVISION – LOS ANGELES 16 PLAYBOY ENTERTAINMENT GROUP 17 INC., a Delaware Corporation, Plaintiff, 18 19 v. HAPPY MUTANTS, LLC, a Delaware limited liability company, and DOES 1 21 through 10, 20 22 Defendants. Case No. 2:17-cv-08140 FMO (PLA) DEFENDANT HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS PLAINTIFF PLAYBOY ENTERTAINMENT GROUP INC.’S FIRST AMENDED COMPLAINT Date: February 15, 2018 Time: 10:00 a.m. Ctrm: 6D, W. 1st Street Courthouse Judge: Honorable Fernando M. Olguin 23 24 25 26 27 28 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 2 of 21 Page ID #:75 TABLE OF CONTENTS 1 Page 2 3 I.  INTRODUCTION ..................................................................................................... 1  4 II.  FACTUAL BACKGROUND.................................................................................... 2  5 III.  LEGAL STANDARD ............................................................................................... 2  6 IV.  ARGUMENT ............................................................................................................. 3  7 8 A.  The FAC does not allege facts that could support a claim for direct copyright infringement against Boing Boing. ................................................. 3  B.  The FAC fails to state a claim for contributory copyright infringement. ....... 5  9 10 1.  The FAC does not allege that Boing Boing aided or induced third parties to upload the photos to Imgur and YouTube. ................... 5  11 a.  Material Contribution ................................................................. 6  12 b.  Inducement ................................................................................. 6  13 14 2.  Imgur and YouTube are not alleged to have engaged in any volitional act and are therefore not direct infringers. ........................... 7  3.  Individual BoingBoing readers who clicked on the link to view the Imgur gallery or the YouTube video did not engage in any acts of infringement, and the FAC does not allege that any of them downloaded the images. ............................................................... 8  15 16 C.  17 18 19 20 21 22 V.  Even if there was an act falling within Playboy’s exclusive rights, Boing Boing’s reporting was a noninfringing fair use. ................................. 11  1.  The Purpose and Character of the Use................................................ 12  2.  The Nature of the Copyrighted Work ................................................. 13  3.  The Amount and Substantiality of the Portion Used .......................... 13  4.  Effect on the Value of or Market for the Copyrighted Work ............. 14  CONCLUSION........................................................................................................ 15  23 24 25 26 27 28 i HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 3 of 21 Page ID #:76 1 TABLE OF AUTHORITIES 2 3 Page(s) Cases 4 5 6 7 A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) ......................................................................................... 5 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ......................................................................................................... 3 8 Bell Atl. Corp. v. Twombly, 9 550 U.S. 544 (2007) ..................................................................................................... 2, 3 10 Bernstein v. JC Penney, Inc., No. 98-2958 R EX, 1998 WL 906644 (C.D. Cal. Sept. 29, 1998) .................................. 9 11 12 13 14 Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) .......................................................................................... 14 Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) .......................................................................................... 13 15 16 Borkman v. BMW of N. Am., LLC, No. CV 16-2225 FMO, 2017 WL 4082420 (C.D. Cal. Aug. 28, 2017) .......................... 3 17 18 Borsotti v. Bray, No. CV 16-7603 FMO, 2017 WL 2375705 (C.D. Cal. May 31, 2017) .......................... 3 19 Brownmark Films, LLC v. Comedy Partners, 20 682 F.3d 687 (7th Cir. 2012) ......................................................................................... 12 21 Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962 (C.D. Cal. 2007) ........................................................................... 12 22 23 BWP Media USA, Inc. v. T & S Software Assocs., Inc., 852 F.3d 436 (5th Cir.), cert. denied, 138 S. Ct. 236 (2017) ...................................... 7, 9 24 25 26 27 Calkins v. Playboy Enterprises International, Inc., 561 F. Supp. 2d 1136 (E.D. Cal. 2008) ................................................................... 12, 13 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) ....................................................................................................... 12 28 ii HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 4 of 21 Page ID #:77 1 Cholla Ready Mix, Inc. v. Civish, 382 F.3d 969 (9th Cir. 2004) ........................................................................................... 3 2 3 4 5 City of Inglewood v. Teixeira, No. CV-15-01815-MWF, 2015 WL 5025839 (C.D. Cal. Aug. 20, 2015) .................... 12 Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020 (9th Cir. 2013) ......................................................................................... 6 6 7 8 9 CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004) ........................................................................................... 8 Eldred v. Ashcroft, 537 U.S. 186 (2003) ....................................................................................................... 15 10 Flava Works, Inc. v. Clavio, 11 No. 11 C 05100, 2012 WL 2459146 (N.D. Ill. June 27, 2012) ....................................... 9 12 Flava Works, Inc. v. Gunter, 689 F.3d 754 (7th Cir. 2012) ....................................................................................... 8, 9 13 14 15 16 17 18 Gonzalez v. Planned Parenthood of Los Angeles, 759 F.3d 1112 (9th Cir. 2014) ......................................................................................... 3 Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) ......................................................................................... 13 Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522 (9th Cir. 2008) ......................................................................................... 11 19 20 Los Angeles News Serv. v. CBS Broad., Inc., 305 F.3d 924, as amended, 313 F.3d 1093 (9th Cir. 2002) ........................................... 12 21 Metro–Goldwyn–Mayer Studios Inc. v. Grokster, Ltd., 22 545 U.S. 913 (2005) ................................................................................................... 6, 11 23 Núñez v. Caribbean Int’l News Corp., 235 F.3d 18 (1st Cir. 2000) ............................................................................................ 14 24 25 Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) ............................................................................. 4, 5, 8, 9 26 27 28 Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir.), cert. denied, 138 S. Ct. 504 (2017) .................................. 4, 7, 8 iii HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 5 of 21 Page ID #:78 1 Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788 (9th Cir. 2007) ......................................................................................... 10 2 3 4 Perfect 10, Inc. v. Yandex N.V., 962 F. Supp. 2d 1146 (N.D. Cal. 2013) ......................................................................... 10 Shepard v. Miler, No. CIV. 2:10-1863 WBS JFM, 2010 WL 5205108 (E.D. Cal. Dec. 15, 6 2010) .............................................................................................................................. 12 5 7 Sony Corp. of Am. v. Universal City Studios, Inc., 8 464 U.S. 417 (1984) ....................................................................................................... 11 9 Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014) ............................................................................................ 13 10 11 12 Tarantino v. Gawker Media, LLC, No. CV 14-603-JFW, 2014 WL 2434647 (C.D. Cal. Apr. 22, 2014) ....................... 9, 10 13 Statutes 14 17 U.S.C. § 106 ..................................................................................................................... 4 15 17 U.S.C. § 107 ....................................................................................................... 11, 12, 13 16 17 U.S.C. § 512(c)(3) .......................................................................................................... 14 17 18 19 20 Rules Fed. R. Civ. P. 12(b)(6)....................................................................................................... 12 L.R. 7-3 ................................................................................................................................. 4 21 22 23 24 25 26 27 28 iv HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 6 of 21 Page ID #:79 1 2 I. INTRODUCTION This lawsuit is frankly mystifying. Playboy’s theory of liability seems to be that it 3 is illegal to link to material posted by others on the web—an act performed daily by 4 hundreds of millions of users of Facebook and Twitter, and by journalists like the ones in 5 Playboy’s crosshairs here. 6 Defendant Happy Mutants, LLC (“Happy Mutants”) is the corporation behind 7 Boing Boing, a blog created and written by five people to share “mostly wonderful 8 things.” For three decades, Boing Boing has reported on social, educational, political, 9 scientific, and artistic developments in popular culture, becoming one of the Internet’s 10 leading sources of news and commentary. Plaintiff Playboy Entertainment Group Inc. 11 (“Playboy”), an entertainment behemoth with a notable history of defending freedom of 12 the press, is suing this much smaller but important news site for reporting on the existence 13 of a collection of Playboy centerfolds and linking to that collection. In other words, rather 14 than pursuing the individual who created the allegedly infringing archive, Playboy is 15 pursuing a news site for pointing out the archive’s value as a historical document. 16 The facts pleaded in Playboy’s First Amended Complaint (“FAC”) do not state a 17 claim for either direct or contributory copyright infringement. With respect to direct 18 infringement, Playboy alleges that third parties—not Boing Boing—posted the collection 19 at issue, and that Boing Boing made reference to that collection with a hyperlink. As for 20 secondary liability, Playboy does not allege facts that could show that Boing Boing 21 induced or materially contributed to direct infringement by any third party. Playboy’s 22 claim fails for these reasons alone. 23 What is more, Playboy’s own allegations show that further amendment would be 24 futile. Boing Boing’s post is a noninfringing fair use, made for the favored and 25 transformative purposes of news reporting, criticism, and commentary so that the reader 26 can, in the words of the post in question, “see how our standards of hotness, and the art of 27 commercial erotic photography, have changed over time.” FAC ¶ 14. 28 The Court should dismiss Playboy’s First Amended Complaint with prejudice. 1 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 7 of 21 Page ID #:80 1 II. FACTUAL BACKGROUND Boing Boing is an Internet-based news site owned by Happy Mutants. Playboy 2 3 alleges that a “third party,” not Boing Boing, “made unauthorized copies of [Playboy’s] 4 Centerfolds and then, without PLAYBOY’s consent, uploaded scans of each of the 5 Centerfolds to the website imgur.com.” FAC ¶ 9. The FAC makes no allegation that 6 Boing Boing played any role in that act. Rather, the FAC arises entirely out of a 7 subsequent post published on the Boing Boing blog. Id. ¶ 14. The FAC alleges that nearly two years ago, on February 29, 2016, Boing Boing 8 9 published a post “featuring and promoting said unauthorized reproductions and touting the 10 availability of ‘Every Playboy Playmate Centerfold Ever’ for viewing or download.” Id. 11 The text of the blog post, as reproduced in the FAC, is as follows: 12 Some wonderful person uploaded scans of every Playboy 13 Playmate centerfold to imgur. It’s an amazing collection, 14 whether your interests are prurient or lofty. Kind of amazing to 15 see how our standards of hotness, and the art of commercial 16 erotic photography, have changed over time. 17 FAC ¶ 14. The blog post then contains two links. One, which has the text “Every 18 Playboy Playmate Centerfold,” is a link to an album on the Imgur photo posting site, 19 located at http://imgur.com/a/Uxug4. The second is a link to “a video that contains all 20 746 of these incredible shots, created by YouTuber Ryan Powers,” located at 21 https://www.youtube.com/channel/UCpLZHtj-diLM5uLWuq4tLQg. The FAC does not 22 allege that Boing Boing posted the images in question on Imgur or on YouTube (and 23 indeed there would be no basis for such an allegation). Nor does the FAC allege that 24 those images are currently available on those sites (they are not, and have not been for 25 some time). 26 III. 27 28 LEGAL STANDARD A motion to dismiss for failure to state a claim should be granted if plaintiff fails to proffer “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. 2 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 8 of 21 Page ID #:81 1 Corp. v. Twombly, 550 U.S. 544, 570 (2007); see Ashcroft v. Iqbal, 556 U.S. 662, 678 2 (2009). “A claim has facial plausibility when the plaintiff pleads factual content that 3 allows the court to draw the reasonable inference that the defendant is liable for the 4 misconduct alleged.” Iqbal, 556 U.S. at 678. The plaintiff must provide “more than 5 labels and conclusions, and a formulaic recitation of the elements of a cause of action will 6 not do.” Twombly, 550 U.S. at 555. “[T]he court is not required to accept legal 7 conclusions cast in the form of factual allegations if those conclusions cannot reasonably 8 be drawn from the facts alleged.” Borkman v. BMW of N. Am., LLC, No. CV 16-2225 9 FMO (MRWx), 2017 WL 4082420, at *3 (C.D. Cal. Aug. 28, 2017) (quoting Clegg v. 10 Cult Awareness Network, 18 F.3d 752, 754-55 (9th Cir. 1994)). 11 Nor is the court required to accept as true allegations that are “merely conclusory, 12 unwarranted deductions of fact, or unreasonable inferences.” Cholla Ready Mix, Inc. v. 13 Civish, 382 F.3d 969, 973 (9th Cir. 2004) (internal quotation marks omitted) (citations 14 omitted); see also Borsotti v. Bray, No. CV 16-7603 FMO (JCx), 2017 WL 2375705, at 15 *1 (C.D. Cal. May 31, 2017). And courts are “not required to accept as true conclusory 16 allegations which are contradicted by documents referred to in the complaint.” Gonzalez 17 v. Planned Parenthood of Los Angeles, 759 F.3d 1112, 1115 (9th Cir. 2014) (citation 18 omitted). This is especially relevant here, where the content of the blog post at issue is 19 included in the FAC and is not subject to any dispute. The court can therefore evaluate 20 this motion based on the actual text of the post, rather than paraphrases and descriptions. 21 IV. 22 23 24 ARGUMENT A. The FAC does not allege facts that could support a claim for direct copyright infringement against Boing Boing. Playboy’s FAC includes a single claim for copyright infringement. This claim 25 appears to be intended primarily to allege contributory, rather than direct, infringement. 26 See FAC ¶¶ 18-19. But the FAC does not limit its claim to secondary liability. See id. ¶ 27 20 (alleging that Playboy suffered damages caused by Defendants’ “acts of infringement, 28 3 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 9 of 21 Page ID #:82 1 including contributory infringement”) (emphasis added).1 2 Playboy fails to state a claim for direct copyright infringement because it does not 3 allege that Boing Boing itself copied or displayed any of the works listed in Exhibit A to 4 the FAC. See ECF No. 15-1. “To establish a prima facie case of direct infringement, a 5 plaintiff must show ownership of the allegedly infringed material and demonstrate that the 6 alleged infringers violated at least one exclusive right granted to copyright holders under 7 17 U.S.C. § 106.” Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657, 666 (9th Cir.), cert. 8 denied, 138 S. Ct. 504 (2017) (internal quotation marks omitted). “In addition, direct 9 infringement requires the plaintiff to show causation (also referred to as ‘volitional 10 conduct’) by the defendant.” Id. Playboy alleges only that Boing Boing commented upon and linked to a third-party 11 12 website containing Playboy’s images. The Ninth Circuit resolved this question a decade 13 ago, squarely holding that linking cannot constitute direct copyright infringement. Perfect 14 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1161 (9th Cir. 2007). In that case, an image- 15 search service linked to full-size photographs located on third-party servers not operated 16 by the defendant. The defendant’s “computers [did] not store the photographic images” in 17 question, but instead provided links “that direct[ed] a user’s browser to a website 18 publisher’s computer that store[d] the full-size photographic image.” Id. at 1160-61. 19 Because the defendant’s computer never transmitted a full-size photographic image it had 20 stored, the Ninth Circuit held that the defendant could not be a direct infringer. Id. at 21 1161. The facts alleged in the FAC are the same: Playboy alleges that Boing Boing 22 23 24 25 26 27 1 When counsel conferred regarding this Motion pursuant to L.R. 7-3, Playboy’s counsel acknowledged that the FAC does not plead facts supporting a claim for direct infringement against Boing Boing, because the FAC alleges that third parties, not Boing Boing, posted the material in question. The FAC, however, implies that Playboy is proceeding on the same theory as to all “defendants,” FAC ¶ 20, and Playboy has declined to amend the FAC to identify the theory of liability on which it is pursuing Boing Boing. Accordingly, Boing Boing is forced to address direct liability in this Motion. 28 4 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 10 of 21 Page ID #:83 1 linked to the images on the third-party Imgur and YouTube websites. It does not allege 2 that Boing Boing stored the images in question. See FAC ¶¶ 9, 14.2 As a matter of law, 3 such linking is not direct copyright infringement, and allegations that relate to linking do 4 not state a claim for direct copyright infringement. Accordingly, the FAC does not support a claim of copyright infringement against 5 6 Boing Boing on a theory of direct infringement. 7 B. 8 Since “[s]econdary liability for copyright infringement does not exist in the absence 9 The FAC fails to state a claim for contributory copyright infringement. of direct infringement by a third party,” A&M Records, Inc. v. Napster, Inc., 239 F.3d 10 1004, 1013 n.2 (9th Cir. 2001), Playboy must allege at least one underlying act of direct 11 infringement and an act by Boing Boing that materially contributed to or induced that 12 infringement. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d at 1171. The FAC does 13 neither. The FAC does not say who the alleged direct infringer is, or on what theory 14 Boing Boing is alleged to have aided that infringer in engaging in the infringing activity. 15 This problem cannot be fixed: as a matter of law, there is no theory on which Boing 16 Boing could be liable as a contributory infringer. 17 1. 18 One possible theory on which Plaintiff may be proceeding is that the direct 19 20 The FAC does not allege that Boing Boing aided or induced third parties to upload the photos to Imgur and YouTube. infringers in question are the individual or individuals3 who uploaded the photos in 21 2 The Boing Boing blog post itself includes, as a header image, a partial reproduction of the centerfold of Miss February 1954. FAC ¶ 14. The FAC does not make any 23 allegations with respect to that image, and Playboy does not include Miss February 1954 in the list of images to which it claims ownership. ECF No. 15-1. And rightly so: the 24 February 1954 issue of Playboy entered the public domain in 1981, when Playboy did not 25 renew its copyright registration. 22 3 The FAC does not specify whether one individual uploaded the images to Imgur and the video containing the images to YouTube, referring only to the uploader as “a third party.” 27 FAC ¶¶ 9-10. For simplicity, we refer to the uploader in the singular. 26 28 5 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 11 of 21 Page ID #:84 1 question to Imgur and YouTube. Even assuming arguendo that those uploads constituted 2 direct infringement, that would not support a claim for contributory infringement against 3 Boing Boing, because—as the FAC alleges—Boing Boing posted only after that third 4 party completed the uploading, and therefore completed the alleged infringement. As 5 discussed below, that allegation precludes contributory liability on either a material- 6 contribution theory or an inducement theory. 7 8 9 a. Material Contribution Playboy alleges that “[b]y undertaking substantial promotional efforts to encourage visits to the infringing material, MUTANT materially contributed to the infringing 10 conduct.” FAC ¶ 16. Even taking this allegation as true, it does not suggest that Boing 11 Boing made any contribution to anything the uploader did. By the time any alleged 12 promotional efforts commenced, the uploader’s activities had concluded. Indeed, there is 13 no allegation that Boing Boing had any involvement whatsoever until after the materials 14 had already been posted. Thus, based on the FAC itself, it is clear that Boing Boing did 15 not materially contribute to the uploader’s allegedly infringing acts. 16 17 b. Inducement Playboy also mentions “copyright infringement under the ‘inducement’ theory of 18 liability.” FAC ¶ 19. On this theory, “‘one who distributes a device with the object of 19 promoting its use to infringe copyright, as shown by clear expression or other affirmative 20 steps taken to foster infringement, is liable for the resulting acts of infringement by third 21 parties.’” Metro–Goldwyn–Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936-37 22 (2005) (emphasis added). This theory of liability “has four elements: (1) the distribution 23 of a device or product, (2) acts of infringement, (3) an object of promoting its use to 24 infringe copyright, and (4) causation.” Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 25 1020, 1032 (9th Cir. 2013) (emphasis added). 26 Playboy does not and cannot show the fourth element: causation with respect to 27 acts of direct infringement by the uploader. Playboy simply alleges that “Defendants 28 clearly expressed their intention to promote the infringement of PLAYBOY’s copyrights, 6 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 12 of 21 Page ID #:85 1 as evidenced by their affirmative communication of praise for the ‘wonderful person’ who 2 made the Centerfolds freely available on Imgur, and the public acknowledgement of the 3 YouTuber who created the infringing video.” FAC ¶ 19. But even taking these 4 allegations as true, praise that comes after the fact cannot cause an earlier act of direct 5 infringement. Thus, even if the third parties who uploaded the allegedly infringing 6 materials to Imgur and YouTube engaged in direct infringement by doing so, those acts 7 cannot be “resulting acts of infringement” based on anything Boing Boing did. 8 9 10 2. Imgur and YouTube are not alleged to have engaged in any volitional act and are therefore not direct infringers. Another theory on which Playboy may be proceeding is that the direct infringers in 11 question are Imgur and YouTube themselves—the intermediaries to whom third parties 12 uploaded the images and the video. The FAC alleges that there were “infringing materials 13 on imgur and YouTube” that were “available for download and/or viewing,” FAC ¶ 19, 14 but does not allege that Imgur or YouTube undertook any volitional acts with respect to 15 those materials, as opposed to merely operating automated systems to which an unknown 16 third party uploaded allegedly infringing materials. 17 In order to plausibly allege that a hosting intermediary like Imgur or YouTube has 18 engaged in an act of direct copyright infringement that could serve as the basis for a claim 19 of contributory copyright infringement, the law “requires the plaintiff to show causation 20 (also referred to as ‘volitional conduct’) by” the accused direct infringer. Perfect 10, Inc. 21 v. Giganews, Inc., 847 F.3d at 666. In other words, “direct liability must be premised on 22 conduct that can reasonably be described as the direct cause of the infringement.” Id. 23 (quoting opinion below with approval). In Giganews, for example, the Ninth Circuit ruled 24 that “passively storing material at the direction of users in order to make that material 25 available to other users upon request, or automatically copying, storing, and transmitting 26 materials upon instigation by others,” did not involve any act by the service provider that 27 could support a claim for direct infringement. 847 F.3d at 668 (internal quotation marks 28 omitted) (citation omitted). Similarly, in BWP Media USA, Inc. v. T & S Software 7 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 13 of 21 Page ID #:86 1 Assocs., Inc., 852 F.3d 436, 442 (5th Cir.), cert. denied, 138 S. Ct. 236 (2017), the Fifth 2 Circuit held that where a party accused of direct infringement “hosts the forum on which 3 infringing content was posted, but its connection to the infringement ends there,” that 4 party has not engaged in direct infringement because that claim of direct infringement 5 does not meet the volitional-conduct requirement. See also, e.g., CoStar Grp., Inc. v. 6 LoopNet, Inc., 373 F.3d 544, 551 (4th Cir. 2004) (holding that web host had not engaged 7 in direct copyright infringement by operating an automated hosting system to which third 8 parties uploaded infringing materials). 9 None of the allegations of the FAC suggest that the hosting providers’ role in this 10 case differs in any way from the role of the hosting providers in Giganews, T&S, or 11 CoStar. For that reason, the FAC does not plausibly allege that Imgur or YouTube 12 engaged in direct copyright infringement, and the FAC cannot state a claim for 13 contributory infringement premised upon any direct infringement by Imgur or YouTube. 14 Without volition, Imgur and YouTube cannot be direct infringers, and engaged in no act 15 of direct infringement for Boing Boing to contribute to. 16 17 18 19 3. Individual BoingBoing readers who clicked on the link to view the Imgur gallery or the YouTube video did not engage in any acts of infringement, and the FAC does not allege that any of them downloaded the images. The final possible theory on which Playboy may be proceeding is that the direct 20 infringers in question are Boing Boing readers who clicked on the links to the Imgur 21 album or the YouTube video. But that final theory does not work either. Clicking on a 22 link to view material on the Internet is not direct infringement, and there is no allegation 23 that any Boing Boing reader downloaded, rather than simply viewing, the allegedly 24 infringing materials. 25 It is well-established that controlling the viewing of copyrighted material is not 26 within the exclusive rights of the copyright holder. Perfect 10, Inc. v. Amazon.com, Inc., 27 508 F.3d at 1169; see also Flava Works, Inc. v. Gunter, 689 F.3d 754, 757-58 (7th Cir. 28 2012). Indeed, courts have been rejecting secondary liability claims founded on the 8 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 14 of 21 Page ID #:87 1 alleged viewing of linked-to material for almost twenty years. See Bernstein v. JC 2 Penney, Inc., No. 98-2958 R EX, 1998 WL 906644, at *1 (C.D. Cal. Sept. 29, 1998). To 3 the extent users’ computers created temporary copies while browsing, the creation of 4 cached or local copies during Internet browsing is a non-infringing fair use, as a matter of 5 law. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d at 1169-70. Internet users could only 6 commit an act of direct copyright infringement if, once they have visited or viewed the 7 linked-to content, they take the further step of downloading a copy of the material. See 8 Flava Works, Inc., 689 F.3d at 757-58 (“unless those visitors copy the videos they are 9 viewing on the infringers’ websites, [the defendant] isn’t increasing the amount of 10 11 infringement.”). The FAC does not allege that any reader did so. Playboy’s copyright claim is strikingly similar to a claim recently rejected in 12 Tarantino v. Gawker Media, LLC, No. CV 14-603-JFW (FFMx), 2014 WL 2434647, at 13 *4 (C.D. Cal. Apr. 22, 2014). In that case, director Quentin Tarantino sued the blog 14 Gawker after it published an article that linked to a copy of the script to the then- 15 unproduced movie The Hateful Eight. See id. at *2. Tarantino alleged that Gawker 16 “contributorily infringed Plaintiff’s screenplay by including links to where the screenplay 17 was posted online in its reporting on the leak of the screenplay.” Id. Noting that simply 18 viewing material is not copyright infringement, the court dismissed the secondary liability 19 claim for lack of an underlying act of direct infringement. See id. at **4-5. 20 Like the Plaintiff in Tarantino, Playboy alleges that Boing Boing reported on the 21 availability of, and linked to, allegedly infringing content but does not allege that any 22 Boing Boing user in fact downloaded—rather than simply viewing—the material in 23 question. See FAC ¶ 10. Absent any identifiable underlying act of direct infringement, 24 Playboy’s secondary infringement claim must be dismissed. Perfect 10, Inc. v. 25 Amazon.com, Inc., 508 F.3d at 1169; see also BWP Media USA, Inc., 2014 WL 12596429, 26 at *3 (dismissing contributory infringement claim where plaintiff failed to allege specific 27 instance of third-party infringement); Flava Works, Inc. v. Clavio, No. 11 C 05100, 2012 28 WL 2459146, at *3 (N.D. Ill. June 27, 2012) (same). 9 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 15 of 21 Page ID #:88 1 Playboy may argue that Playboy can amend the Complaint to allege that some 2 readers must have taken the further step of actually downloading copies of infringing 3 material. That would not save the Complaint from dismissal, for two reasons. 4 First, it would be pure speculation. See Tarantino, 2014 WL 2434647, at *4 5 (Tarantino “speculates that some direct infringement must have taken place [but] fails to 6 allege the identity of a single third-party infringer, the date, the time, or the details of a 7 single instance of third-party infringement”); Perfect 10, Inc. v. Yandex N.V., 962 F. Supp. 8 2d 1146, 1159 (N.D. Cal. 2013) (dismissing plaintiff’s speculation that, given volume of 9 traffic, at least some U.S. users must have used Russian search index to download 10 11 infringing images). Second, even a non-speculative allegation that some Boing Boing visitor read the 12 Boing Boing article in question, clicked on the link in the article, visited the Imgur album 13 web page, and then took steps to download images contained on that web page would not 14 support a claim for contributory infringement against Boing Boing. The act of 15 downloading is one step removed from anything Boing Boing did: at most, Boing Boing 16 made it easier for its readers to view the images in the Imgur album, which in turn gave 17 those readers the opportunity to decide to take further steps to download an image, which 18 decision may in turn have resulted in those readers engaging in an act of alleged direct 19 infringement. Where “there is an additional step in the causal chain” between the activity 20 being facilitated by the defendant and an act of direct infringement, the Ninth Circuit has 21 held that there is no material contribution to infringement and therefore no contributory 22 liability. Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 797 (9th Cir. 2007) (no 23 contributory liability where “Defendants make it easier for infringement to be profitable, 24 which tends to increase financial incentives to infringe, which in turn tends to increase 25 infringement.”). And there is no allegation that anything in the Boing Boing blog post 26 was directed to intentionally inducing any reader to click on the link to view the images 27 and then take further steps to download those images. 28 Finally, even if some Boing Boing reader downloaded the images in question, and 10 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 16 of 21 Page ID #:89 1 if that downloading constituted direct infringement, and if Boing Boing’s article was 2 regarded as making a material contribution to that direct infringement, the contributory- 3 infringement claim would still fail because the link would then have both infringing uses 4 and substantial non-infringing uses. Even if a party knows a device—here, the hyperlink 5 to the Imgur album—could be used for infringing purposes, they cannot be held 6 contributorily liable if the device is also “capable of substantial noninfringing uses.” Sony 7 Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984). This doctrine 8 “limits liability to instances of more acute fault than the mere understanding that some of 9 one’s products will be misused,” Metro–Goldwyn–Mayer Studios Inc., 545 U.S. at 932- 10 33. Here, while it is possible that some visitors used the “device” in question for an 11 infringing rather than a noninfringing purpose, the text of the blog post makes clear that 12 the intended purpose of the link was a noninfringing one: to view the album in order to 13 analyze “how our standards of hotness, and the art of commercial erotic photography, 14 have changed over time.” FAC ¶ 14. 15 Accordingly, the FAC does not state a claim for contributory copyright 16 infringement, and amendment would be futile because the facts pleaded in the FAC rule 17 out such infringement. Nor could Playboy allege inducement of unknown third parties. 18 There is simply no indication that Boing Boing intended to encourage its readers to 19 download these files rather than view them. 20 21 22 C. Even if there was an act falling within Playboy’s exclusive rights, Boing Boing’s reporting was a noninfringing fair use. Even if Playboy could state a claim for direct or secondary infringement against 23 Boing Boing, the Court should still dismiss that claim because Boing Boing’s reporting 24 and commentary falls squarely within the protections of copyright’s fair use doctrine. See 25 17 U.S.C. § 107 (“the fair use of a copyrighted work, . . . for purposes such as criticism, 26 comment, [or] news reporting, . . . is not an infringement of copyright.”). 27 28 Although fair use generally is a mixed question of fact and law, an “assertion of fair use may be considered on a motion to dismiss.” Leadsinger, Inc. v. BMG Music Publ’g, 11 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 17 of 21 Page ID #:90 1 512 F.3d 522, 530 (9th Cir. 2008); see also Brownmark Films, LLC v. Comedy Partners, 2 682 F.3d 687, 690 (7th Cir. 2012); City of Inglewood v. Teixeira, No. CV-15-01815-MWF 3 (MRWx), 2015 WL 5025839, at **6-12 (C.D. Cal. Aug. 20, 2015) (finding fair use on a 4 Rule 12(b)(6) motion); Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 5 962, 972 (C.D. Cal. 2007) (same); Shepard v. Miler, No. CIV. 2:10-1863 WBS JFM, 2010 6 WL 5205108, at *3 (E.D. Cal. Dec. 15, 2010) (same). The four statutory factors support a 7 finding of fair use here. See 17 U.S.C. § 107(1)-(4). 8 The Copyright Act sets forth four nonexclusive factors to guide the fair-use 9 determination: “(1) the purpose and character of the use, including whether such use is of 10 a commercial nature or is for nonprofit educational purposes; (2) the nature of the 11 copyrighted work; (3) the amount and substantiality of the portion used in relation to the 12 copyrighted work as a whole; and (4) the effect of the use upon the potential market for or 13 value of the copyrighted work.” 17 U.S.C. § 107. We discuss each factor in turn. 14 1. The Purpose and Character of the Use 15 Factor One supports a finding of fair use because Boing Boing’s use was for the 16 classic fair use purposes of commentary and reporting. See Los Angeles News Serv. v. 17 CBS Broad., Inc., 305 F.3d 924, 940, as amended, 313 F.3d 1093 (9th Cir. 2002). In 18 Calkins v. Playboy Enterprises International, Inc., 561 F. Supp. 2d 1136, 1141 (E.D. Cal. 19 2008), the court found Playboy’s publication of a high school photo to be transformative 20 because its use “served an entirely different function than the original image.” In this 21 case, Boing Boing’s use was also entirely different from the original images. The Boing 22 Boing post included links to support its cultural commentary—specifically, that the 23 images showed “how our standards of hotness, and the art of commercial erotic 24 photography, have changed over time.” FAC ¶ 14. 25 Boing Boing’s reliance on advertising does not change the analysis; many fair uses 26 are commercial. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584 (1994) 27 (rejecting the proposition that all commercial uses are presumptively unfair because it 28 would “swallow nearly all of the illustrative uses listed in the preamble paragraph of 12 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 18 of 21 Page ID #:91 1 § 107”). The fact that a defendant’s purpose was transformative—such as Boing Boing’s 2 purpose of commentary and reporting—reduces “the significance of other factors that 3 weigh against fair use, such as use of a commercial nature,” in the analysis. Calkins, 561 4 F. Supp. 2d at 1141 (citing Campbell, 510 U.S. at 579); see also Swatch Grp. Mgmt. 5 Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 82 (2d Cir. 2014) (noting that any commercial 6 use is “attenuated” when the transformative purpose is reporting). 7 In Calkins, for example, the court noted that the photograph at issue “was used for a 8 commercial purpose inasmuch as PEI is a for-profit enterprise and the Photograph 9 appeared in Playboy.” 561 F. Supp. 2d at 1141. The court reasoned that the 10 “commercial” aspect of the use “was incidental and less exploitative in nature than more 11 traditional types of commercial use insofar as PEI was neither using the Photograph to 12 directly promote sales of Playboy, nor trying to profit by selling the Photograph.” Id. 13 Likewise, Boing Boing was not trying to profit by selling the copyrighted works but 14 simply linked to them in its reporting. Indeed, any commercial use by Boing Boing was 15 more attenuated and incidental than Playboy’s use in Calkins: in that case, Playboy sold 16 magazines that included the relevant photograph while Boing Boing never even hosted the 17 copyrighted works on its servers, much less charged money to access the works. 18 19 2. The Nature of the Copyrighted Work Factor Two weighs slightly in favor of fair use or is neutral. Although the works at 20 issue are creative, “the second factor may be of limited usefulness where the creative 21 work of art is being used for a transformative purpose.” Blanch v. Koons, 467 F.3d 244, 22 257 (2d Cir. 2006) (citation omitted). Moreover, the photographs at issue were previously 23 published, and use of published works is “more likely to qualify as fair use because the 24 first appearance of the artist’s expression has already occurred.” Kelly v. Arriba Soft 25 Corp., 336 F.3d 811, 820 (9th Cir. 2003). 26 27 28 3. The Amount and Substantiality of the Portion Used Factor Three weighs in favor of fair use. Although the entirety of Playboy works appeared on external sites, Boing Boing itself made no use at all of any portion of the 13 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 19 of 21 Page ID #:92 1 works because it simply linked to those sites as part of its commentary and reporting. To 2 the extent the amount displayed on a third-party website to a user who clicked the link is 3 relevant, the entirety of each of the photographs in question could be viewed. But the use 4 of the entirety of a work does not weigh against fair use where the use of the entirety 5 serves a transformative purpose, such as criticism, commentary, or news reporting. See, 6 e.g., Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 613 (2d Cir. 2006) 7 (“copying the entirety of a work is sometimes necessary to make a fair use of the 8 image.”); Núñez v. Caribbean Int’l News Corp., 235 F.3d 18, 24 (1st Cir. 2000) (finding 9 fair use where the defendant “admittedly copied the entire picture; however, to copy any 10 less than that would have made the picture useless to the story.”). Seeing the photos in 11 their entirety and in their full chronological sequence serves the transformative purpose of 12 observing and analyzing “how our standards of hotness, and the art of commercial erotic 13 photography, have changed over time.” FAC ¶ 14. 14 4. Effect on the Value of or Market for the Copyrighted Work Factor Four also weighs in Boing Boing’s favor. Boing Boing’s use did not harm 15 16 the underlying market. Boing Boing provided commentary and links but is not alleged to 17 have uploaded or hosted the content, but merely linked to externally-hosted websites. In 18 the context of a news website reporting on the existence of that content on those websites, 19 this use is highly transformative and does not supplant the market for the original works. 20 Importantly, Playboy has not, and could not, allege that Boing Boing did anything to 21 make it more difficult for Playboy to act against the actual uploaders and hosts of the 22 infringing content. If Playboy wished to send Digital Millennium Copyright Act 23 (“DMCA”) takedown notices to YouTube or Imgur, it was free to do so.4 Similarly, 24 4 Indeed, it appears that Playboy did so. The DMCA allows copyright holders to send 25 notices requesting that service providers remove infringing content. See 17 U.S.C. § 512(c)(3). The allegedly infringing materials no longer appear to be available on 26 YouTube or Imgur. See https://www.youtube.com/watch?v=rrzltZUGlOc and 27 https://imgur.com/a/Uxug. In any event, Playboy has not alleged that Boing Boing frustrated or slowed the removal of the content in question once Playboy decided to 28 14 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 20 of 21 Page ID #:93 1 Playboy has not, and could not, allege that Boing Boing committed any act to discourage 2 YouTube or Imgur from honoring such takedown requests. Taken together, the statutory factors compel a finding of fair use, providing 3 4 alternative ground for dismissal. To conclude otherwise would mean that no journalist 5 could report on a pending copyright case by linking to the material at issue in the case for 6 fear that link would itself be infringing. That would defeat the purpose of fair use, which 7 is a bulwark that protects copyright from encroaching on the First Amendment. Eldred v. 8 Ashcroft, 537 U.S. 186, 219 (2003). 9 V. 10 CONCLUSION When a journalist links to a page on the web and comments on the way that page 11 sheds light on artistic and cultural issues, the journalist should not fear copyright 12 infringement liability—and should not fear the costs of protracted copyright litigation. 13 That is why, as a matter of law as described above, the linking at issue in this case does 14 not give rise to copyright liability for the journalist engaged in that linking. All of the 15 facts that the Court needs to dismiss the claim are pleaded in the FAC—most 16 significantly, the text of the article in question. Boing Boing did nothing different than 17 any other journalistic organization on the web, and, as a matter of law, what Boing Boing 18 did in linking to publicly available material of cultural note is not copyright infringement. 19 The FAC should be dismissed with prejudice. 20 21 Dated: January 18, 2018 DURIE TANGRI LLP 22 23 24 25 By: /s/ Joseph C. Gratz JOSEPH C. GRATZ Attorneys for Defendant HAPPY MUTANTS, LLC 26 27 request its removal—nor, indeed, that Playboy ever sent any notice, let alone a DMCA takedown notice, to Boing Boing prior to filing suit. 28 15 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA Case 2:17-cv-08140-FMO-PLA Document 19-1 Filed 01/18/18 Page 21 of 21 Page ID #:94 1 2 CERTIFICATE OF SERVICE I hereby certify that on January 18, 2018 the within document was filed with the 3 Clerk of the Court using CM/ECF which will send notification of such filing to the 4 attorneys of record in this case. 5 6 /s/ Joseph C. Gratz JOSEPH C. GRATZ 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 16 HAPPY MUTANTS LLC’S MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF ITS MOTION TO DISMISS / CASE NO. 2:17-CV-08140-FMO-PLA