Case 2:18-cv-10417-RGK-AS Document 49-1 Filed 02/13/19 Page 1 of 29 Page ID #:156

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Dale M. Cendali (admitted pro hac vice)
dale.cendali@kirkland.com
Joshua L. Simmons (admitted pro hac vice)
joshua.simmons@kirkland.com
Shanti Sadtler Conway (admitted pro hac vice)
shanti.conway@kirkland.com
Megan L. McKeown (admitted pro hac vice)
megan.mckeown@kirkland.com
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022
Telephone: (212) 446-4800
Facsimile: (212) 446-4900
Sharre Lotfollahi (S.B.N. 258913)
sharre.lotfollahi@kirkland.com
KIRKLAND & ELLIS LLP
333 South Hope Street
Los Angeles, CA 90071
Telephone: (213) 680-8400
Facsimile: (213) 680-8500
Attorneys for Defendants Take-Two
Interactive Software, Inc.; 2K Sports,
Inc.; 2K Games, Inc.; and Visual
Concepts Entertainment (“Take-Two”)
UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION
ALFONSO RIBEIRO,
Plaintiff,
v.
TAKE-TWO INTERACTIVE
SOFTWARE, INC.; 2K SPORTS,
INC.; 2K GAMES, INC.; VISUAL
CONCEPTS ENTERTAINMENT;
and Does 1 through 50,
Defendants.

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CASE NO. 2:18-cv-10417 RGK (ASx)
The Honorable R. Gary Klausner
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
DEFENDANTS’ MOTION TO
DISMISS FOR FAILURE TO STATE
A CLAIM AND SPECIAL MOTION
TO STRIKE (ANTI-SLAPP)
PLAINTIFF’S COMPLAINT
Complaint Filed: December 17, 2018
Hearing Date: March 18, 2019
Time:
9:00 a.m.
Courtroom:
850, 255 East Temple St.

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DEFENDANT’S MEMORANDUM OF POINTS
AND AUTHORITIES ISO MOTION TO DISMISS

CASE NO. 2:18-cv-10417 RGK (ASx)

 Case 2:18-cv-10417-RGK-AS Document 49-1 Filed 02/13/19 Page 2 of 29 Page ID #:157

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TABLE OF CONTENTS
I.

STATEMENT OF ALLEGED FACTS.................................................. 4

II.

LEGAL STANDARDS............................................................................. 4

III.

ARGUMENT ............................................................................................ 6
A.

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Plaintiff Cannot State Direct or Contributory Copyright
Claims .............................................................................................. 6

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1.

Plaintiff’s Movements Are Not Protected by Copyright ....... 7

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2.

Plaintiff’s Movements Are Mere Ideas................................ 12

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3.

The Works Are Not Substantially Similar ........................... 13

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IV.

B.

Plaintiff’s Remaining Claims Are Preempted by the Copyright
Act ..................................................................................................15

C.

Plaintiff’s Right of Publicity Claims Violate the First
Amendment ...................................................................................16

D.

Rogers v. Grimaldi Principles Bar the Unfair Competition

E.

Plaintiff Is Not Entitled to the Relief Requested in the
Complaint......................................................................................20

Claims ............................................................................................ 18

CONCLUSION .......................................................................................20

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DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
i

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TABLE OF AUTHORITIES

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Page(s)
Cases
Aaron Basha Corp. v. Felix B. Vollman, Inc.,
88 F. Supp. 2d 226 (S.D.N.Y. 2000) ....................................................................... 10
Abbywho, Inc. v. Interscope Records,
No. 06 Civ. 0672, 2008 WL 11406099 (C.D. Cal. Jan. 7, 2008) ............................ 20
Apple Comput., Inc. v. Microsoft Corp.,
35 F.3d 1435 (9th Cir. 1994) ................................................................................... 14
Arenas v. Shed Media U.S. Inc.,
881 F. Supp. 2d 1181 (C.D. Cal. 2011) ......................................................... 6, 17, 18
Ashcroft v. Iqbal,
556 U.S. 662 (2009)................................................................................................... 5
Baez v. Pension Consulting Alliance, Inc.,
No. 2:17 Civ. 01938, 2017 WL 9500979 (C.D. Cal. July 20, 2017) ........................ 6
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007)................................................................................................... 5
Bibbero Sys., Inc. v. Colwell Sys., Inc.,
893 F.2d 1104 (9th Cir. 1990) ................................................................................... 9
Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC,
803 F.3d 1032 (9th Cir. 2015) ........................................................................... 12, 13
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC,
No. 2:11 Civ. 5506, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012) ........................ 12
Blehm v. Jacobs,
702 F.3d 1193 (10th Cir. 2012) ............................................................................... 13
Boost Beauty, LLC v. Woo Signatures, LLC,
No. 2:18 Civ. 02960, 2018 WL 5099258 (C.D. Cal. Oct. 15, 2018) ........................ 7
Brown v. Elec. Arts, Inc.,
724 F.3d 1235 (9th Cir. 2013) ................................................................................. 19
DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
ii

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Brown v. Entm’t Merchants Ass’n,
131 S. Ct. 2729 (2011)......................................................................................... 6, 20
Cabell v. Sony Pictures Entm’t, Inc.,
425 F. App’x 42 (2d Cir. 2011) ............................................................................... 13
Century Tile, Inc. v. Hirsch Glass Co.,
467 F. App’x 651 (9th Cir. 2012) ............................................................................ 15
Chey v. Pure Flix Entm’t LLC,
No. 16 Civ. 164362, 2017 WL 5479640 (C.D. Cal. Feb. 10, 2017) ......................... 9
Choyce v. SF Bay Area Indep. Media Ctr.,
No. 13 Civ. 01842, 2014 WL 2451122 (N.D. Cal. June 2, 2014)............................. 7
Christianson v. West Pub. Co.,
149 F.2d 202 (9th Cir. 1945) ............................................................................... 8, 14
CMM Cable Rep, Inc. v. Ocean Coast Props., Inc.,
97 F.3d 1504 (1st Cir. 1996).............................................................................. 10, 12
Cusano v. Klein,
473 F. App’x 803 (9th Cir. 2012) ........................................................................ 6, 15
Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23 (2003)................................................................................................... 16
DBC of N.Y., Inc. v. Merit Diamond Corp.,
768 F. Supp. 414 (S.D.N.Y. 1991) .......................................................................... 10
de Havilland v. FX Networks, LLC,
21 Cal. App. 5th 845 (Ct. App. 2018) ................................................................. 6, 18
Derek Andrew, Inc. v. Poof Apparel Corp.,
528 F.3d 696 (9th Cir. 2008) ................................................................................... 20
E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc.,
547 F.3d 1095 (9th Cir. 2008) ....................................................................... 6, 18, 19
Entous v. Viacom Int’l, Inc.,
151 F. Supp. 2d 1150 (C.D. Cal. 2001) ................................................................... 16
Express, LLC v. Forever 21, Inc.,
No. 09 Civ. 4514, 2010 WL 3489308 (C.D. Cal. Sept. 2, 2010) .............................. 9
DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
iii

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Feist Pubs., Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991)................................................................................................... 7
Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,
654 F.3d 958 (9th Cir. 2011) ..................................................................................... 7
Folkens v. Wyland Worldwide, LLC,
882 F.3d 768 (9th Cir. 2018) ................................................................................... 13
Garcia v. Google, Inc.,
786 F.3d 733 (9th Cir. 2015) ............................................................................... 7, 12
Greater L.A. Agency on Deafness, Inc. v. Cable News Network, Inc.,
742 F.3d 414 (9th Cir. 2014) ................................................................................. 6, 7
Hall v. Swift,
No. 17 Civ. 6882, 2018 WL 2317548 (C.D. Cal. Feb. 13, 2018) ....................... 6, 14
Horgan v. Macmillan, Inc.,
789 F.2d 157 (2d Cir. 1986) .............................................................................. 10, 11
Inhale, Inc. v. Starbuzz Tobacco, Inc.,
755 F.3d 1038 (9th Cir. 2014) ................................................................................. 12
Int’l Biotical Corp. v. Associated Mills, Inc.,
239 F. Supp. 511 (N.D. Ill. 1964) ............................................................................ 13
Kates v. Crocker Nat. Bank,
776 F.2d 1396 (9th Cir. 1985) ................................................................................. 20
Kirby v. Sega of Am., Inc.,
144 Cal. App. 4th 47 (2006) .............................................................................. 17, 18
Laws v. Sony Music Entm’t, Inc.,
448 F.3d 1134 (9th Cir. 2006) ........................................................................... 15, 16
Lesley v. Spike TV,
241 F. App’x 357 (9th Cir. 2007) .............................................................................. 7
Lewis v. Activision Blizzard, Inc.,
634 F. App’x 182 (9th Cir. 2015) ............................................................................ 16
Lions Gate Entm’t Inc. v. TD Ameritrade Servs. Co.,
170 F. Supp. 3d 1249 (C.D. Cal. 2016) ............................................................. 15, 16
DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
iv

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Lorenzana v. S. Am. Rests. Corp.,
799 F.3d 31 (1st Cir. 2015)...................................................................................... 10
Maloney v. T3Media, Inc.,
853 F.3d 1004 (9th Cir. 2017) ............................................................................. 6, 16
Marcus v. ABC Signature Studios, Inc.,
279 F. Supp. 3d 1056 (C.D. Cal. 2017) ................................................................... 16
Masterson Mktg., Inc. v. KSL Recreation Corp.,
495 F. Supp. 2d 1044 (S.D. Cal. 2007) ................................................................... 15
Mattel, Inc. v. Azrak-Hamway Int’l, Inc.,
724 F.2d 357 (2d Cir. 1983) .................................................................................... 13
Metrano v. Twentieth Century Fox Film Corp.,
No. 08 Civ. 086314, 2009 WL 10672576 (C.D. Cal. July 16, 2009)...................... 20
Naruto v. Slater,
No. 15 Civ. 04324, 2016 WL 362231 (N.D. Cal. Jan. 28, 2016) ............................ 12
Novalogic, Inc. v. Activision Blizzard,
41 F. Supp. 3d 885 (C.D. Cal. 2013) ................................................................. 18, 19
Oskar Sys., LLC v. Club Speed, Inc.,
745 F. Supp. 2d 1155 (C.D. Cal. 2010) ................................................................... 15
Reece v. Island Treasures Art Gallery, Inc.,
468 F. Supp. 2d 1197 (D. Haw. 2006)..................................................................... 13
Rentmeester v. Nike, Inc.,
883 F.3d 1111 (9th Cir. 2018) ............................................................................. 8, 13
Richtek Tech. Corp. v. UPI Semiconductor Corp.,
No. 09 Civ. 05659, 2011 WL 166292 (N.D. Cal. Jan. 19, 2011) .............................. 5
Rogers v. Grimaldi,
875 F.2d 994 (2d Cir. 1989) ................................................................................ 3, 18
Roxbury Entm’t v. Penthouse Media Grp., Inc.,
669 F. Supp. 2d 1170 (C.D. Cal. 2009) ................................................................... 19
Saregama India Ltd. v. Young,
No. 02 Civ. 9856, 2003 WL 25769784 (C.D. Cal. Mar. 11, 2003)......................... 20
DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
v

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See v. Durang, 711 F.2d 141, 144 (9th Cir. 1983) ....................................................... 14
Sivero v. Twentieth Century Fox Film Corp.,
No. B266469, 2018 WL 833696 (Cal. Ct. App. Feb. 13, 2018) ....................... 17, 18
Skinder-Strauss Assocs. v. Mass. Continuing Legal Educ., Inc.,
914 F. Supp. 665 (D. Mass. 1995) ........................................................................... 10
Slep-Tone Entm’t Corp. v. Wired for Sound Karaoke & DJ Servs., LLC,
845 F.3d 1246 (9th Cir. 2017) ................................................................................. 16
Solid Oak Sketches, LLC v. 2K Games, Inc.,
No. 16 Civ. 724, 2016 WL 4126543 (S.D.N.Y. Aug. 2, 2016)............................... 20
Southco, Inc. v. Kanebridge Corp.,
390 F.3d 276 (3d Cir. 2004) .............................................................................. 10, 12
Sybersound Records, Inc. v. UAV Corp.,
517 F.3d 1137 (9th Cir. 2008) ................................................................................. 16
Thomas v. Walt Disney Co.,
337 F. App’x 694 (9th Cir. 2009) .............................................................................. 8
VIRAG, S.R.L. v. Sony Comput. Entm’t Am. LLC,
699 F. App’x 667 (9th Cir. 2017) ...................................................................... 19, 20
White v. Twentieth Century Fox Corp.,
572 F. App’x 475 (9th Cir. 2014) .............................................................................. 8
Wild v. NBC Universal,
513 F. App’x 640 (9th Cir. 2013) .............................................................................. 8
Winter v. DC Comics,
30 Cal. 4th 881 (2003) ............................................................................................. 17
Zekkariyas v. Universal Music-MGB Songs,
No. 11 Civ. 2912, 2011 WL 13220325 (C.D. Cal. June 6, 2011) ........................... 12
Zhang v. Heineken N.V.,
No. 08 Civ. 06506, 2010 WL 11596643 (C.D. Cal. Sept. 29, 2010) .................. 9, 12
Zindel v. Fox Searchlight Pictures, Inc.,
No. 18 Civ. 1435, 2018 WL 3601842 (C.D. Cal. July 23, 2018).............................. 6

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DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
vi

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Statutes
17 U.S.C. § 102 ........................................................................................... 10, 12, 13, 15
17 U.S.C. § 301 ............................................................................................................. 15
17 U.S.C. § 412 ............................................................................................................. 20

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Cal. Civ. Proc. Code § 425.16 ........................................................................................ 6

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Rules

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Fed. R. Civ. P. 12(b)(6) ......................................................................................... passim

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Other Authorities
37 C.F.R. § 202.1 .................................................................................................... 11, 12
H.R. Rep. 94-1476 (1976) ............................................................................................ 10
Letter from U.S. Copyright Office to Puo-I “Bonnie” Lee (dated July 14,
2016) ........................................................................................................................ 12
U.S. Copyright Office, Compendium of U.S. Copyright Office Practices
(3d ed. 2017) .................................................................................................. 9, 10, 11

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DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS
vii

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This lawsuit suffers from a host of issues ranging from a lack of plausible

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ownership, to a lack of substantial similarity, to preemption by the Copyright Act.

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Fundamentally, it conflicts with the First Amendment as it attempts to impose

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liability, and thereby chill creative expression, by claiming rights that Plaintiff does

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not hold. It should be dismissed. First, Plaintiff admits to creating the alleged

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“Dance” for the Fresh Prince of Bel-Air series, but did not try to register that “Dance”

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with the Copyright Office—presumably because he knows that he does not own the

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copyright. The copyright notice for the episode in which it first appeared (as alleged

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in the Complaint) lists solely “National Broadcasting Company, Inc.” Thus,

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Plaintiff’s copyright claims fail as his allegation that the “Dance” was created for an

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episode owned by NBC means that he has not plausibly alleged ownership of a valid

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copyright. Indeed, the Copyright Office knows such performances are not owned by

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the performers. When Plaintiff tried to register Variation A of the alleged dance, the

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Office raised a similar question because it was a performance of Plaintiff on Dancing

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with the Stars, to which it was implausible that Plaintiff owned the copyright.1
Second, the movements that are the sole basis for Plaintiff’s copyright claims

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are not protectable. Indeed: the Copyright Office already has rejected Plaintiff’s two

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copyright applications (Variations B and C) that only show the movements at issue

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(rather than additional content) because each is “a simple dance routine” that “is

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not registrable as a choreographic work.” Cendali Decl. Exs. M, N. This is because

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individual dance steps and simple dance routines made up of multiple steps are

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building blocks of free expression, and they are not copyrightable. Rather, they are

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free for all to use, perform, and enjoy. Yet, contrary to the Copyright Office’s

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decision, Plaintiff seeks to monopolize simple movements by arguing that Take-

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Two’s basketball video game, NBA 2K, infringes his rights because of its So Fresh

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celebratory dance (one of many tiny customizations that the in-game basketball

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Declaration of Dale M. Cendali, dated Feb. 13, 2019, (“Cendali Decl.”) Ex. L. To
Take-Two’s knowledge, the Office has not taken action on the application for
Variation A because it is waiting for a response from Plaintiff as to his ownership.

DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS 1

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players may perform). Plaintiff does not claim that NBA 2K’s players resemble him or

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that any other parts of the game infringe his rights.

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Importantly, none of the “Variations” are substantially similar to NBA 2K.

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When comparing two works, courts filter out unprotectable elements, and then

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compare any protectable ones that remain. As an initial matter, any material that

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Plaintiff does own must be filtered out. Thus, as it is not plausible that he owns the

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“Dance,” which admittedly premiered on Fresh Prince, the “Dance” cannot be

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considered in determining substantial similarity.

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Moreover, regardless of ownership, it is well-established that the building

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blocks of expression—words and short phrases, geometric shapes, colors, and dance

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steps and simple routines—are not copyrightable as protecting them would prevent

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others from creating new works in contravention of the Constitutional mandate from

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which copyright springs. In dance, this is apparent from (a) the legislative history of

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the Copyright Act, which expressly states that “simple [dance] routines” are not

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copyrightable; (b) the Copyright Office’s regulations, which do not permit individual

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dance steps or simple routines to be registered (as occurred here); and (c) Ninth

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Circuit case law holding that such elements are not protectable. The Copyright

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Office’s refusal to register the dance at issue here reflects this principle.

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Further, copyright does not protect mere ideas and concepts, but rather only the

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expression of those ideas. The general concept of Plaintiff’s alleged dance is just such

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an unprotectable idea as Ninth Circuit courts have held in similar situations. As the

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movements are not protectable as a matter of law, there is nothing to compare to NBA

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2K, and the works necessarily are not substantially similar.

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In addition, even without this filtering, comparing the three “Variations” and

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NBA 2K shows that there is no substantial similarity. The Variations are (A) Plaintiff

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performing on Dancing with the Stars, (B) Plaintiff appearing on the Graham Norton

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Show, and (C) Plaintiff playing golf at the American Century Celebrity Golf

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Tournament. Plaintiff only claims infringement for the short movements at issue.
DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS 2

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NBA 2K, by contrast, is a basketball simulation video game with myriad basketball

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players, arenas, and movements, none of which Plaintiff has accused of infringement.

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The works, thus, cannot be substantially similar as a whole. Further, each variation of

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the movements at issue is different from Take-Two’s So Fresh celebratory dance as

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the arm and leg movements differ. The differences are particularly pronounced given

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how short the movements are. The works are not substantially similar.2
Third, Plaintiff’s non-copyright claims are unavailing. Under California’s anti-

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SLAPP statute, when state law claims are asserted against an expressive work like

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NBA 2K, it is plaintiff’s burden to prove a probability of prevailing to avoid chilling

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the valid exercise of free speech rights.3 Plaintiff cannot do so:
 All of the non-copyright claims involve the same steps and seek to address the

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same alleged copying as Plaintiff’s copyright claims and, thus, they are

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preempted by the Copyright Act and should be dismissed for this reason alone.
 Plaintiff’s right of publicity claims also are barred by the First Amendment

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under California’s Transformative Use test as NBA 2K has distinctive and

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expressive content beyond the alleged use of the steps.
 Plaintiff’s unfair competition claims similarly are barred by the First

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Amendment based on Rogers v. Grimaldi principles because So Fresh is

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artistically relevant to NBA 2K, and Plaintiff does not point to any expressly

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misleading conduct by Take-Two beyond its alleged use of the steps.

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Finally, Plaintiff’s overreaching extends to the remedies he seeks: (a) punitive

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damages are not available on his federal claims; (b) California’s unfair competition

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law only provides for the award of restitution, not general damages; and (c) because

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Plaintiff applied to register his copyrights only after the alleged infringement

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commenced, attorney’s fees are not available on his copyright claims.

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2

Similarly deficient, Plaintiff asserts that the game in which So Fresh first appeared
was released in 2015 and Variation C was created in 2016. There can be no
infringement of Variation C as So Fresh predates it.

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The federal unfair competition claim fails for the same reasons as the state claims.

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DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS 3

 Case 2:18-cv-10417-RGK-AS Document 49-1 Filed 02/13/19 Page 12 of 29 Page ID #:167

Take-Two respectfully requests that the Complaint be dismissed with prejudice

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as Plaintiff chose not to amend it after being informed of the bases for this Motion.

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I.

STATEMENT OF ALLEGED FACTS
Plaintiff alleges that he created a dance in 1991 and “performed it on The Fresh

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Prince of Bel-Air during the episode Will’s Christmas Show.” Compl. ¶ 15. He did

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not attempt to register it, likely because he does not own the copyright—the episode

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has a copyright notice that lists solely “National Broadcasting Company, Inc.”

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Cendali Decl. ¶ 8, Ex. I. Instead, he sought to register three subsequent “Variations,”

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id. Exs. L–N, two of which the Copyright Office has refused to register due to a lack

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of copyrightability. Rejected were, Variation B—a clip from the Graham Norton

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Show, in which the “Dance” appears 12 seconds into the video for 21 seconds, id. Ex.

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E—and Variation C—a video taken during the American Century Celebrity Golf

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Tournament, in which the “Dance” is performed for 6 seconds, id. Ex. H. Variation

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A is a one-minute, 20-second routine that Plaintiff performed on Dancing With the

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Stars, which includes dance movements not claimed to be infringed here. Id. Ex. B.

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The “Dance” appears 54 seconds into the video, and is performed for 10 seconds.
Plaintiff alleges that So Fresh in NBA 2K infringes his rights. Compl. ¶ 1. NBA

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2K is a basketball simulation video game series, wherein players can explore the

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game’s narrative and play virtual basketball against a variety of opponents. Cendali

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Decl. Ex. J. Within the game and its narratives, users create and customize their

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fictional player, who competes against real-world players. During the game, users

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may unlock and use celebratory dances like So Fresh. Id.4

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II.

LEGAL STANDARDS
A Complaint “must contain sufficient factual matter, accepted as true, to ‘state a

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claim to relief that is plausible on its face,’” Ashcroft v. Iqbal, 556 U.S. 662, 678

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Plaintiff references a movement called “Ride the Wave,” Compl. ¶ 3, but it is not
part of his claims, id. ¶¶ 38–91, and Take-Two is unsure of the reference. Thus,
Plaintiff has not alleged it infringes. See Richtek Tech. Corp. v. UPI
Semiconductor Corp., No. 09 Civ. 05659, 2011 WL 166292, at *2–3 (N.D. Cal.
Jan. 19, 2011) (complaint dismissed that failed to identify alleged infringement).

DEFENDANT’S MEMORANDUM OF POINTS
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AND AUTHORITIES ISO MOTION TO DISMISS 4

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1

(2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)), and plead

2

“factual content that allows the court to draw the reasonable inference that the

3

defendant is liable for the misconduct alleged.” Id. “The Court must disregard

4

allegations that are legal conclusions, even when disguised as facts.” Hall v. Swift,

5

No. 17 Civ. 6882, 2018 WL 2317548, at *3 (C.D. Cal. Feb. 13, 2018). It, however,

6

may consider works referenced in the Complaint. See Zindel v. Fox Searchlight

7

Pictures, Inc., No. 18 Civ. 1435, 2018 WL 3601842, at *3 (C.D. Cal. July 23, 2018);

8

Req. J. Notice, at 1. Plaintiff cannot plead facts sufficient to support his claims.
Moreover, as to the state law claims, Plaintiff’s pleading failures violate

9
10

California’s anti-SLAPP statute, which subjects to a special motion to strike any

11

“cause of action against a person arising from any act of that person in furtherance of

12

the person’s right of . . . free speech . . . in connection with a public issue.” Cal. Civ.

13

Proc. Code § 425.16(b)(1). Such motions require a two-part analysis, both of which

14

are satisfied here. First, the court determines whether “the challenged cause of action

15

arises from activity protected under the statute.” Baez v. Pension Consulting Alliance,

16

Inc., No. 2:17 Civ. 01938, 2017 WL 9500979, at *2 (C.D. Cal. July 20, 2017).

17

“California courts have interpreted this piece of the defendant’s threshold showing

18

rather loosely . . . and have held that a court must generally presume the validity of the

19

claimed constitutional right in the first step of the anti-SLAPP analysis.” Greater L.A.

20

Agency on Deafness, Inc. v. Cable News Network, Inc., 742 F.3d 414, 422 (9th Cir.

21

2014) (internal quotation marks omitted). Here, the United States Supreme Court has

22

held that “video games qualify for First Amendment protection,” Brown v. Entm’t

23

Merchants Ass’n, 131 S. Ct. 2729, 2733 (2011),5 and all of Plaintiff’s claims hinge on

24
25
26
27
28

5

Creative works, like video games, routinely satisfy step one. See Cusano v. Klein,
473 F. App’x 803, 804 (9th Cir. 2012) (first prong satisfied by television programs
and video games); see also E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547
F.3d 1095, 1099 (9th Cir. 2008) (Grand Theft Auto: San Andreas video game
protected); see also Maloney v. T3Media, Inc., 853 F.3d 1004, 1009 (9th Cir. 2017)
(photographs); Arenas v. Shed Media U.S. Inc., 881 F. Supp. 2d 1181, 1195 (C.D.
Cal. 2011), aff’d, 462 F. App’x 709 (9th Cir. 2011) (television); de Havilland v. FX
Networks, LLC, 21 Cal. App. 5th 845, 856 (Ct. App. 2018) (same).

DEFENDANT’S MEMORANDUM OF POINTS
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1

NBA 2K’s inclusion of the “Dance,” which Plaintiff touts as being of public interest.

2

See Compl. ¶¶ 15–18. Thus, Plaintiff’s claims are based on acts taken in furtherance

3

of Take-Two’s free speech rights. Second, the burden shifts to the plaintiff to

4

“demonstrate[] a probability of prevailing on the merits of its” claims. GLAAD, 742

5

F.3d at 425. Plaintiff cannot do so. See infra 15–20.

6

III.

ARGUMENT

7

A.

8

Plaintiff’s first and second causes of action assert direct and contributory

9

Plaintiff Cannot State Direct or Contributory Copyright Claims

copyright infringement, respectively. To state a claim of copyright infringement,

10

Plaintiff must allege “(1) ownership of a valid copyright, and (2) copying of

11

constituent elements of the work that are original.” Feist Pubs., Inc. v. Rural Tel.

12

Serv. Co., 499 U.S. 340, 361 (1991). Moreover, one of the required elements of a

13

contributory copyright infringement claim is an underlying direct infringement claim.

14

Boost Beauty, LLC v. Woo Signatures, LLC, No. 2:18 Civ. 02960, 2018 WL 5099258,

15

at *5 (C.D. Cal. Oct. 15, 2018). Plaintiff cannot satisfy either element.
As to the first element, the Complaint refers to a single “Dance,” Compl. ¶ 1,

16
17

but Plaintiff cannot plausibly allege ownership of it, which is his “burden.” See

18

Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958, 962 (9th Cir. 2011); Choyce

19

v. SF Bay Area Indep. Media Ctr., No. 13 Civ. 01842, 2014 WL 2451122, *4–5 (N.D.

20

Cal. June 2, 2014) (dismissing with prejudice copyright with no “well-pled factual

21

allegations . . . that Plaintiff himself owns a valid copyright”). He claims to have

22

created the “Dance” in 1991 for Fresh Prince, Compl. ¶¶ 2, 39, but the Ninth Circuit

23

has recognized that a show’s producers own performances of the actors.6 See Garcia

24

v. Google, Inc., 786 F.3d 733, 743 (9th Cir. 2015) (en banc) (“The reality is that

25

contracts and the work-made-for-hire doctrine govern much of the big-budget

26

Hollywood and production world.”); Lesley v. Spike TV, 241 F. App’x 357, 358 (9th

27

6

28

And when Plaintiff tried to register Variation A—which also was performed on a
“nationally televised show”—the Copyright Office questioned Plaintiff’s
ownership as it was likely “a work made for hire.” Cendali Decl. Ex. L.

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1

Cir. 2007) (actor’s performance owned by producer as “work made for hire”).

2

Likewise, here, the episode in which Plaintiff alleges the Dance first appeared has a

3

copyright notice listing solely “National Broadcasting Company, Inc.” Cendali Decl.

4

¶ 8, Ex. I. Thus, the Complaint does not plausibly allege his ownership.
As to the second element, the works are not “substantially similar” under the

5
6

two-part analysis used by courts in this Circuit—consisting of the “extrinsic test” and

7

the “intrinsic test.” The extrinsic test requires courts to “‘filter out’ the unprotectable

8

elements of the plaintiff’s work—primarily ideas and concepts, material in the public

9

domain, and scènes à faire (stock or standard features that are commonly associated

10

with the treatment of a given subject)”—and then compare the “protectable elements

11

that remain” to “corresponding elements of the defendant’s work to assess similarities

12

in the objective details of the works.” Rentmeester v. Nike, Inc., 883 F.3d 1111, 1118

13

(9th Cir. 2018). “The intrinsic test requires a more holistic, subjective comparison of

14

the works to determine whether they are substantially similar in ‘total concept and

15

feel.’” Id. A motion to dismiss should be granted where, after comparing the works,

16

the extrinsic test is not satisfied. Id. (affirming dismissal where photographs were not

17

substantially similar despite similar subject matter and pose).7

18

Here, Plaintiff conclusorily asserts that “players can have their characters

19

perform the dance within the game.” Compl. ¶ 42. Yet, “the works themselves

20

supersede any contrary allegations, conclusions or descriptions of the works contained

21

in the pleadings.” Chey v. Pure Flix Entm’t LLC, No. 16 Civ. 164362, 2017 WL

22

5479640, at *4 (C.D. Cal. Feb. 10, 2017). Once the unprotectable elements are

23

filtered out, the works are not substantially similar as a matter of law.

24

1.

Plaintiff’s Movements Are Not Protected by Copyright

Here, Plaintiff’s “Dance” is not protectable and, thus, there is nothing to

25
26
27
28

7

See also White v. Twentieth Century Fox Corp., 572 F. App’x 475, 477 (9th Cir.
2014); Wild v. NBC Universal, 513 F. App’x 640, 642 (9th Cir. 2013); Thomas v.
Walt Disney Co., 337 F. App’x 694, 694 (9th Cir. 2009); Christianson v. West Pub.
Co., 149 F.2d 202, 203 (9th Cir. 1945).

DEFENDANT’S MEMORANDUM OF POINTS
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1

compare to assess substantial similarity. The Copyright Office already has found

2

that the “Dance” is not copyrightable as reflected by its refusal to register Variations

3

B and C (in which the “Dance” is the only alleged choreography). Cendali Decl. Exs.

4

M, N.8 The basis for Copyright Office’s decision is clear: the “Dance” “is a simple

5

dance routine” and, as such, “it is not registrable as a choreographic work.” Id.

6

The Copyright Office’s determination in this case is consistent with the long-

7

held articulation of copyrightability used by the courts, Congress, and the Copyright

8

Office. Courts recognize that works have elements that are not protectable as they are

9

building blocks of creative expression that, if protected, would inhibit the creation of

10

new works. For example, “words and short phrases” are not protectable. Zhang v.

11

Heineken N.V., No. 08 Civ. 06506, 2010 WL 11596643, at *4 (C.D. Cal. Sept. 29,

12

2010). This is because “even if the word or short phrase is novel or distinctive or

13

lends itself to a play on words,” it contains “a de minimis amount of authorship.” U.S.

14

Copyright Office, Compendium of U.S. Copyright Office Practices § 313.4(C) (3d ed.

15

2017) (“Compendium”). Similarly, “variations of long-established Chinese word

16

characters” were not protectable as doing so would “effectively give [plaintiff] a

17

monopoly on renditions of these five Chinese characters.” Zhang, 2010 WL

18

11596643, at *5 (dismissal on the pleadings). “[B]lank forms which do not convey

19

information are not copyrightable” as they are where information is recorded, and do

20

not convey information themselves. Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d

21

1104, 1106 (9th Cir. 1990). And “mere changes in color are generally not subject to

22

copyright protection.” Express, LLC v. Forever 21, Inc., No. 09 Civ. 4514, 2010 WL

23

3489308, at *6 (C.D. Cal. Sept. 2, 2010).9

24

8

Variation A’s application remains pending as it is part of a longer Dancing with the
Stars routine, for which the Office questioned Plaintiff’s ownership. Id. Ex. L.

9

See also Lorenzana v. S. Am. Rests. Corp., 799 F.3d 31, 34 (1st Cir. 2015)
(affirming dismissal as recipe instructions and name not protectable); Southco, Inc.
v. Kanebridge Corp., 390 F.3d 276, 287 (3d Cir. 2004) (“part numbers” not
protectable); CMM Cable Rep, Inc. v. Ocean Coast Props., Inc., 97 F.3d 1504,
1520 (1st Cir. 1996) (“ordinary employment phraseology” not protectable); Aaron
Basha Corp. v. Felix B. Vollman, Inc., 88 F. Supp. 2d 226, 230 (S.D.N.Y. 2000)

25
26
27
28

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1

This principle applies with equal force to the field of dance. The Copyright Act

2

of 1976’s list of works of authorship includes only “choreographic works.” 17 U.S.C.

3

§ 102(a)(4). As explained in the Compendium of U.S. Copyright Office Practices—

4

the Office’s substantive manual for its staff on the contours of copyright law and

5

Office policies—choreography is the “composition and arrangement of ‘a related

6

series of dance movements and patterns organized into a coherent whole.’”

7

Compendium § 805.1 (quoting Horgan v. Macmillan, Inc., 789 F.2d 157, 161 (2d Cir.

8

1986)). Thus, the Copyright Office would register a “choreographed music video for

9

a song titled ‘Made in the USA’” if the dance “is a complex and intricate work

10

performed by a troupe of professional dancers.” Id. § 805.5(A).

11

In recognition that the constituent parts of a choreographic work must be

12

available for others to use in order to foster continued creativity, Congress was

13

explicit that “simple routines” are neither choreographic works nor copyrightable,

14

H.R. Rep. 94-1476, at 53 (1976), and the Copyright Office’s Compendium explains

15

that “[i]ndividual movements or dance steps by themselves are not copyrightable.”

16

Compendium § 805.5(A). Thus, although the “Made in the USA” dance above might

17

be registered as a whole, if “[d]uring the chorus, the dancers form the letters ‘U, S, A’

18

with their arms . . . the Office would reject a claim limited to the ‘U, S, A’ gesture.”

19

Id. Other examples of unprotectable movements include “the basic waltz step, the

20

hustle step, the grapevine, or the second position in classical ballet.” Id. Further, the

21

Copyright Office has made clear that “short dance routines consisting of only a few

22

movements or steps with minor linear or spatial variations, even if the routine is novel

23

or distinctive,” are not protectable. Id. (citing C.F.R. § 202.1(a) (emphasis added)).

24

This approach makes sense as “[i]ndividual dance steps and short dance

25
26
27
28

(not protectable to use “decorative features . . . commonly used throughout the
jewelry business,” such as “precious metals, gemstones, and enamel”); SkinderStrauss Assocs. v. Mass. Continuing Legal Educ., Inc., 914 F. Supp. 665, 674 (D.
Mass. 1995) (“a standard calendar, a list of important holidays, a map of
Massachusetts, a national map including time zones, and a date calculation chart”
not protectable); DBC of N.Y., Inc. v. Merit Diamond Corp., 768 F. Supp. 414, 416
(S.D.N.Y. 1991) (“Familiar symbols or designs” not protectable).
DEFENDANT’S MEMORANDUM OF POINTS
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1

routines are the building blocks of choreographic expression, and allowing copyright

2

protection for these elements would impede rather than foster creative expression.”

3

Id. (citing Horgan, 789 F.2d at 161). Thus, “individual elements of a dance are not

4

copyrightable for the same reason that individual words, numbers, notes, colors, or

5

shapes are not protected by the copyright law.” Id. As discussed above, courts

6

routinely hold that these types of elements are unprotectable, and will dismiss

7

copyright claims based on them at the pleadings stage. See supra 7.

8
9

In applying this standard, the Copyright Office’s Compendium provides the
following strikingly on point example of an unprotectable dance: “Butler Beauchamp

10

is a wide receiver for a college football team. Whenever he scores a touchdown,

11

Butler performs a celebratory dance in the endzone.” Compendium § 805.5(A). In

12

this example, although the dance is comprised of multiple movements of multiple

13

body parts, it is not protectable because it “merely consists of a few movements of the

14

legs, shoulders, and arms.” Id. (emphasis added). Likewise, the Copyright Office

15

refused registration of a dance routine by world-renowned modern dance company

16

Pilobolus titled “Five-Petal Flower,” which it described as:

17

On the left-hand side is the silhouette of a woman facing the right side of the

18

screen. On the right-hand side several people quickly tumble onto the stage,

19

forming the silhouette of a five-petal flower with their intertwined bodies.

20

Simultaneously, the silhouette of a giant hand moves from the left to the

21

right side of the screen, and appears to pull at the top of the five-petal

22

flower. The hand then points at the flower formation in a common gesture

23

that means “stay put.” The flower formation stays still for the remainder of

24

the video. The hand moves back to the left side of the screen and appears to

25

pluck off the head of the woman, who shrugs her arms and slightly kicks her

26

legs outward as if stunned. Her hands reach for the headless top of her body

27

to feel for the head, and then return to her sides. The giant hand moves over

28

the woman’s body and her head reappears; the hand moves again and most
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1

of her body disappears underneath the hand. The woman remains near-

2

motionless before the video abruptly ends.

3

Letter from U.S. Copyright Office to Puo-I “Bonnie” Lee (dated July 14, 2016),

4

available at https://www.copyright.gov/rulings-filings/review-board/docs/five-petal-

5

flower.pdf. Despite the detailed description of Pilobolus’ dance, the Copyright Office

6

concluded that the routine was “de minimis” because it consisted of “simple

7

movements” that were “insufficient to enable copyright registration.” Id. at 4.
The Copyright Office’s guidance is critical as the Ninth Circuit has held that,

8
9

“[w]hen interpreting the Copyright Act,” courts should “defer to the Copyright

10

Office’s interpretations,” Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038, 1041

11

(9th Cir. 2014), because of its “body of experience and informed judgment.” Garcia,

12

786 F.3d at 742. For example, the Office has determined that “examples of works not

13

subject to copyright” include “[w]ords and short phrases such as names, titles, and

14

slogans.” Material Not Subject to Copyright, 37 C.F.R. § 202.1(a) (2018). Courts

15

routinely dismiss cases on the pleadings relying solely on this regulation. See

16

Zekkariyas v. Universal Music-MGB Songs, No. 11 Civ. 2912, 2011 WL 13220325, at

17

*2 (C.D. Cal. June 6, 2011) (granting Rule 12(b)(6) motion based solely on

18

regulation); Zhang, 2010 WL 11596643, at *5 (quoting regulation for proposition that

19

“‘words and short phrases’ are not copyrightable”); see also Southco, 390 F.3d at 286

20

(same); CMM, 97 F.3d at 1520 (same).10
Consistent with the foregoing, in Bikram’s Yoga College of India, L.P. v.

21
22

Evolation Yoga, LLC, the court held that a “Sequence of 26 yoga poses” was too

23

simple to qualify as a choreographic work. No. 2:11 Civ. 5506, 2012 WL 6548505, at

24

*4 (C.D. Cal. Dec. 14, 2012). On appeal, the Ninth Circuit acknowledged the

25

touchstones of dance copyright discussed above, but focused its analysis on the fact

26

that the yoga poses were uncopyrightable under 17 U.S.C. § 102(b). Bikram’s Yoga

27

10

28

Cf. Naruto v. Slater, No. 15 Civ. 04324, 2016 WL 362231, at *4 (N.D. Cal. Jan.
28, 2016) (relying on Copyright Office analysis of authorship for copyrightability
of photograph taken by a monkey), aff’d, 888 F.3d 418 (9th Cir. 2018).

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1

Coll. of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032, 1043 (9th Cir. 2015).
Plaintiff’s movements are even simpler, shorter, and less protectable than the 26

2
3

poses in Bikram’s, the endzone dance in the Copyright Office’s example, and

4

Pilobolus’ intricate modern dance piece. They merely consist of different variations

5

of an arm swing wherein the arms swing side to side while the legs step back and forth

6

to the side, and an arm extension wherein the arms begin bent inwards to the chest and

7

then extend out to the side of the body while stepping back twice on each side. That is

8

why the Copyright Office refused to register Variations B and C, finding that they

9

consist of “simple routine[s] that [are] not registrable as [] choreographic work[s].”

10

Cendali Decl. Exs. M, N. To hold otherwise would cause every person who performs

11

these short movements on television, at a wedding, or in any other public place to be

12

susceptible to a copyright infringement claim.

13

2.

Plaintiff’s Movements Are Mere Ideas

The movements also are unprotectable ideas. See 17 U.S.C. § 102(b);

14
15

Bikram’s, 803 F.3d at 1040 (sequence of yoga steps unprotectable under § 102(b)). In

16

Rentmeester, the Ninth Circuit affirmed dismissal due to a lack of substantial

17

similarity, holding that the plaintiff did not own the “general ‘idea’ or ‘concept’ . . . of

18

[Michael] Jordan in a leaping, grand jeté-inspired” movement. 883 F.3d at 1121; see

19

also Folkens v. Wyland Worldwide, LLC, 882 F.3d 768, 774 (9th Cir. 2018) (dolphins’

20

pose unprotectable). In Reece v. Island Treasures Art Gallery, Inc., the court held that

21

the “idea of a hula dancer performing an ’ike movement in the hula kahiko style from

22

the noho position is not protected.” 468 F. Supp. 2d 1197, 1206 (D. Haw. 2006). 11

23
24
25
26
27
28

11

See also Blehm v. Jacobs, 702 F.3d 1193, 1201 (10th Cir. 2012) (“a copyright
owner has no monopoly over the idea of a muscular doll in a standard pose”);
Cabell v. Sony Pictures Entm’t, Inc., 425 F. App'x 42 (2d Cir. 2011) (“brandishing
a blow dryer as a weapon” and “fighting poses” were “unprotectable ideas”);
Mattel, Inc. v. Azrak-Hamway Int'l, Inc., 724 F.2d 357, 360 (2d Cir. 1983)
(“Though the dolls’ bodies are very similar, nearly all of the similarity can be
attributed to the fact that both are artist’s renderings of the same unprotectable
idea—a superhuman muscleman crouching in what since Neanderthal times has
been a traditional fighting pose.”); Int’l Biotical Corp. v. Associated Mills, Inc.,
239 F. Supp. 511, 514 (N.D. Ill. 1964) (various poses were unprotectable ideas).

DEFENDANT’S MEMORANDUM OF POINTS
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1
2

3.

The Works Are Not Substantially Similar

Once “the unprotectable elements have [been] identified” and “filtered,” the

3

works are “considered as a whole.” Apple Comput., Inc. v. Microsoft Corp., 35 F.3d

4

1435, 1443 (9th Cir. 1994); See v. Durang, 711 F.2d 141, 144 (9th Cir. 1983)

5

(analyzing works “as a whole” to consider similarities “in context”). Here, there are

6

no protectable elements to consider as the movements are not protectable (as the

7

Copyright Office found) and, even if they were, it is not Plaintiff that owns them. See

8

supra 6. Without similar elements to compare, dismissal is required. See

9

Christianson, 149 F.2d at 204 (affirming dismissal where only similarities between

10

two maps were unoriginal or mere ideas); Hall, 2018 WL 2317548, at *8 (granting

11

Rule 12(b)(6) motion where “only thing that Plaintiffs allege Defendants copied” in

12

Taylor Swift’s song was “too brief, unoriginal, and uncreative to warrant protection”).

13

Moreover, as the only part of NBA 2K that Plaintiff alleges is similar to his

14

movements is So Fresh, he tacitly concedes that the other elements in NBA 2K do not

15

infringe his rights—not NBA 2K’s basketball games, players, settings, themes, or

16

moods. But as noted above, Plaintiff’s case is based solely on the simple movements.

17

Although Plaintiff only refers to the “Dance” in his Complaint, he actually

18

sought to register three specific “Variations” with the Copyright Office, each of which

19

is somewhat different. This only serves to underscore that Plaintiff is seeking to

20

monopolize a broad and chilling swath of movement. But in any case, each of the

21

variations is substantially different from So Fresh:

22

 Variation A’s arm swing features the arms swinging behind the body with a

23

step to the side where the leading leg bends at the knee, and then the feet

24

consistently meet at the heels. In contrast, So Fresh’s arm swing features the

25

arms swinging to the side of the body with a step to the side where the leading

26

leg straightens while the other leg bends as it comes into the body, and the feet

27

do not consistently meet at the heels, but rather begin far apart and only

28

gradually travel closer as the steps continue. Similarly, Variation A’s arm
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1

extension features the arms opening and closing symmetrically, with the wrists

2

crossing in front of the chest, while stepping back twice on each side by

3

bending both legs and having the torso remain centered. In contrast, So Fresh’s

4

arm extension features the arms opening and closing asymmetrically, without

5

the wrists crossing in front of the chest, while stepping back twice on the left

6

side and then only once on the right side by bending only the leading leg and

7

having the torso leaning into the side step. Compare Cendali Decl. Ex. C with

8

Ex. K.

9

 Variation B’s arm swing features the arms swinging in front of the body with a

10

step to the side where the leading leg bends at the knee, and then the feet

11

consistently meet at or close to the heels. In contrast, the arm swing in So

12

Fresh features the arms swinging to the side of the body with a step to the side

13

where the leading leg straightens while the other leg bends as it comes into the

14

body, and the feet do not meet consistently at or close to the heels, but rather

15

begin far apart and only gradually travel closer as the steps continue. Similarly,

16

the arm extension in Variation B features the arms opening and closing

17

symmetrically, with the wrists crossing in front of the chest, while stepping to

18

the side twice on each side by bending both legs and having the torso remain

19

centered. In contrast, the arm extension in So Fresh features the arms opening

20

and closing asymmetrically, without the wrists crossing in front of the chest,

21

while stepping back twice on the left side and then only once on the right side

22

by bending only the leading leg and having the torso leaning into the side step.

23

Compare id. Ex. F with Ex. K.

24

 Variation C’s arm swing features the body rotating to the side with the arm

25

swing, while the feet take small steps to the side, with a tap of the foot. In

26

contrast, So Fresh’s arm swing features the body remaining frontward-facing,

27

while the feet take large steps back, without a tap of the foot. Similarly,

28

Variation C does not include an arm extension. In contrast, So Fresh does.
DEFENDANT’S MEMORANDUM OF POINTS
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1

Compare id. Ex. H with Ex. K.

2

Especially given the short nature of the movements, any copyright would be

3

thin at best, requiring “virtually identical” copying. Century Tile, Inc. v. Hirsch Glass

4

Co., 467 F. App’x 651, 652 (9th Cir. 2012). As a result, “even relatively small

5

differences . . . may exclude copyright infringement.” Masterson Mktg., Inc. v. KSL

6

Recreation Corp., 495 F. Supp. 2d 1044, 1048 (S.D. Cal. 2007). Thus, Counts I and II

7

should be dismissed as the works are not substantially similar.12

8

B.

9

Plaintiff’s non-copyright claims (Counts III through VI) should be dismissed

Plaintiff’s Remaining Claims Are Preempted by the Copyright Act

10

because they are preempted by the Copyright Act. A state law claim is preempted if

11

(1) the work is the type of work protected by copyright and (2) the claim seeks to

12

vindicate rights equivalent to those protected by copyright. 17 U.S.C. § 301(a); Laws

13

v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006).
As to Prong One, Plaintiff’s non-copyright claims are based on the same steps

14
15

as his copyright claim. See Compl. ¶¶ 63, 71, 79, 87. As choreography is the subject

16

matter of copyright, 17 U.S.C. § 102(a)(4), Prong One is satisfied. Cusano, 473 F.

17

App’x at 804 (satisfied by types of works listed in 17 U.S.C. § 102(a)). Indeed, like

18

Plaintiff here, the plaintiff in Lions Gate Entertainment Inc. v. TD Ameritrade

19

Services Co. asserted federal and state unfair competition claims based on the use of

20

the dance lift from Dirty Dancing. 170 F. Supp. 3d 1249, 1254 (C.D. Cal. 2016).

21

The claims were preempted. Id. at 1264 (dance lift subject matter of copyright).13
As to Prong Two, no extra element makes Plaintiff’s claims different from a

22
23
24

12

25
26
27
28

13

Plaintiff’s claims as to Variation C can be dismissed for the additional reason that
Plaintiff asserts that So Fresh was added to NBA 2K with the release of NBA 2K16
on September 29, 2015. Compl. ¶ 31. He also alleges that Variation C was created
in 2016. Id. ¶ 16. As Variation C was created after So Fresh was included in the
game, there can be no copyright infringement. See Oskar Sys., LLC v. Club Speed,
Inc., 745 F. Supp. 2d 1155, 1163 (C.D. Cal. 2010) (dismissing claim as alleged
infringement occurred “before the [registered] version of the work even existed”).
If the steps are unprotectable, they still fall “within the ‘subject matter of
copyright’ for the . . . preemption analysis” as even unprotected subject matter
counts. Entous v. Viacom Int’l, Inc., 151 F. Supp. 2d 1150, 1159 (C.D. Cal. 2001).

DEFENDANT’S MEMORANDUM OF POINTS
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copyright claim as the allegedly infringing act is copying. Compl. ¶¶ 63, 75, 79. Such

2

claims are preempted. See Maloney, 853 F.3d at 1019 (affirming grant of special

3

motion to strike and dismissal of right of publicity and unfair competition claims

4

where use was not “independent of the display, reproduction, and distribution of the

5

copyrighted material”); Lewis v. Activision Blizzard, Inc., 634 F. App’x 182, 184 (9th

6

Cir. 2015) (affirming dismissal as right of publicity claim based on use in video game

7

preempted); Laws, 448 F.3d at 1144 (right of publicity claims preempted).

8
9

Moreover, the “Supreme Court has extended this principle of copyright
preemption to the Lanham Act and federal trademark protection.” Lions Gate Entm’t,

10

170 F. Supp. 3d at 1264 (citing Dastar Corp. v. Twentieth Century Fox Film Corp.,

11

539 U.S. 23, 33–38 (2003)). Plaintiff’s Lanham Act claim is based on “Defendant’s

12

copying and relabeling of Ribeiro’s The Dance . . . creati[ng] the false and misleading

13

impression that Defendants were the creators of The Dance.” Compl. ¶ 87. The

14

Supreme Court, however, has held that the Lanham Act’s phrase “origin of goods”

15

“refers to the producer of the tangible goods that are offered for sale, and not to the

16

author of any idea, concept, or communication embodied in those goods.” Dastar,

17

539 U.S. at 37. Thus, when a “claim is more accurately conceived of as attacking

18

unauthorized copying,” courts dismiss such claims. Slep-Tone Entm't Corp. v. Wired

19

for Sound Karaoke & DJ Servs., LLC, 845 F.3d 1246, 1250 (9th Cir. 2017);

20

Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1144 (9th Cir. 2008); Marcus

21

v. ABC Signature Studios, Inc., 279 F. Supp. 3d 1056, 1072 (C.D. Cal. 2017).

22

C.

23

Plaintiff’s right of publicity claims also are barred by the First Amendment

Plaintiff’s Right of Publicity Claims Violate the First Amendment

24

under California’s Transformative Use test. A right of publicity claim does not lie

25

where a “celebrity likeness is one of the ‘raw materials’ from which an original work

26

is synthesized” or the “product containing a celebrity’s likeness is so transformed that

27

it has become primarily the defendant’s own expression rather than the celebrity’s

28

likeness.” Winter v. DC Comics, 30 Cal. 4th 881, 888 (2003). To apply the test,
DEFENDANT’S MEMORANDUM OF POINTS
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courts “examine and compare the allegedly expressive work with the [use of the

2

plaintiff’s identity] to discern if the defendant’s work contributes significantly

3

distinctive and expressive content.” Kirby v. Sega of Am., Inc., 144 Cal. App. 4th 47,

4

61 (2006). “When the value of the work comes principally from some source other

5

than the fame of the celebrity—from the creativity, skill, and reputation of the artist—

6

it may be presumed that sufficient transformative elements are present to warrant First

7

Amendment protection.” Arenas, 881 F. Supp. 2d at 1191. Thus, the “reach of the

8

transformative use defense is broad.” Id. at 1190.

9

Kirby is particularly instructive. The plaintiff alleged her likeness had been

10

used in a video game to create a character named Ulala. 144 Cal. App. 4th at 51. The

11

court held that Ulala was transformative, relying primarily on differences in physical

12

characteristics. Id. at 59. The court also considered the game’s setting as Ulala was

13

“a space-age reporter in the 25th century,” and the plaintiff was not. Id.

14

Similarly, here, So Fresh can be used with any NBA 2K player, none of which

15

share Plaintiff’s physical characteristics. See supra 2. And Plaintiff is not a

16

basketball player. Compl. ¶ 2. These additional elements make So Fresh

17

transformative. 144 Cal. App. 4th at 59; see also Sivero v. Twentieth Century Fox

18

Film Corp., No. B266469, 2018 WL 833696, at *10 (Cal. Ct. App. Feb. 13, 2018)

19

(“Simpsonized” character with different characteristics from plaintiff transformative).

20

Further, it also supports a transformative finding that So Fresh is a miniscule

21

part of NBA 2K. See supra 4. In Arenas, the use of a likeness that was “incidental to

22

the show’s plot” was transformative. 881 F. Supp. 2d at 1191. In de Havilland, even

23

though the plaintiff’s likeness was depicted realistically, because it constituted only

24

“4.2 percent” of the defendant’s series, the use was transformative. 21 Cal. App. 5th

25

at 864. And in Sivero, the court held that The Simpsons’ use of the plaintiff’s likeness

26

was transformative because the allegedly infringing character was “a minor character

27

in the overall constellation of Simpsons characters.” 2018 WL 833696, at *10.

28

Finally, Plaintiff concedes that NBA 2K’s value comes from Take-Two’s
DEFENDANT’S MEMORANDUM OF POINTS
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1

creativity, skill, and reputation, unassociated with the steps. Compl. ¶ 4 (NBA 2K is

2

the “most popular sports video game franchise in the world”). This too shows its

3

transformative use. See de Havilland, 21 Cal. App. 5th at 864 (transformative use

4

shown by successfulness of series’ “screenwriter, director, and producer”;

5

“[a]ccomplished writers”; and “[h]ighly-regarded and award-winning actors”); Sivero,

6

2018 WL 833696, at *10 (transformative use as “success of The Simpsons” does not

7

derive “primarily from Sivero’s fame”). Thus, the right of publicity claims fail. 14

8

D.

9

Plaintiff’s unfair competition claims (Counts V and VI) also are barred by the

10

First Amendment, which permits expressive works, like NBA 2K, see supra 5, to use

11

trademarks as part of their artistic message. To assess such protection in this context,

12

the Ninth Circuit has “adopted the Second Circuit’s approach from Rogers v.

13

Grimaldi,” E.S.S., 547 F.3d at 1099 (citing 875 F.2d 994, 999 (2d Cir. 1989)), which

14

“is relatively straightforward to apply, and is very protective of speech.” Novalogic,

15

Inc. v. Activision Blizzard, 41 F. Supp. 3d 885, 900 (C.D. Cal. 2013). The approach,

16

which applies to “the use of a trademark in the body of the work,” has two prongs:

Rogers v. Grimaldi Principles Bar the Unfair Competition Claims

17

An artistic work’s use of a trademark that otherwise would violate the Lanham

18

Act is not actionable unless the use of the mark has no artistic relevance to the

19

underlying work whatsoever, or, if it has some artistic relevance, unless it

20

explicitly misleads as to the source or the content of the work.

21
22

E.S.S., 547 F.3d at 1099 (internal quotation marks and alterations omitted). It applies
to both federal and state unfair competition claims. See id. at 1099, 1101.

23

As to Prong One, “only the use of a trademark with no artistic relevance to the

24

underlying work whatsoever does not merit First Amendment protection.” Id. at 1100

25

(internal quotation marks omitted). “[T]he level of relevance merely must be above

26

zero,” and a video game is not required to be “about” the mark. Id. “This black-and-

27
28

14

Satisfaction of the Transformative Use test also requires dismissal of Plaintiff’s
unfair competition claims. Kirby, 144 Cal. App. 4th at 61.

DEFENDANT’S MEMORANDUM OF POINTS
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1

white rule has the benefit of limiting [courts’] need to engage in artistic analysis in

2

this context.” Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1243 (9th Cir. 2013).

3

Here, So Fresh is artistically relevant as it is one of the celebrations that the in-

4

game basketball players can perform, see supra 4, and Plaintiff admits the artistic

5

relevance by acknowledging that the dances in NBA 2K “are incredibly popular.”

6

Compl. ¶ 29. This is more than sufficient to qualify as even a “tenuous” association

7

satisfies Prong One. Roxbury Entm’t v. Penthouse Media Grp., Inc., 669 F. Supp. 2d

8

1170, 1176 (C.D. Cal. 2009); see E.S.S., 547 F.3d at 1100 (video game’s inclusion of

9

strip club with similar name to plaintiff’s trademark relevant to goal of parodying East

10

Los Angeles); Novalogic, 41 F. Supp. 3d at 900–01 (artistic relevance where use

11

added “to the enjoyment users receive from playing the complicated game”).

12

As to Prong Two, a work can be subject to an unfair competition claim only “if

13

the creator uses the mark or material to explicitly mislead consumers as to the source

14

or the content of the work.” Brown, 724 F.3d at 1245 (requiring “explicit indication,”

15

“overt claim,” or “explicit misstatement”; internal quotation marks and alterations

16

omitted). The “mere use of a trademark alone cannot suffice to make such use

17

explicitly misleading.” E.S.S., 547 F.3d at 1100. Yet, Plaintiff identifies no

18

misleading conduct by Take-Two other than use of the steps. Further, So Fresh is

19

only a tiny part of NBA 2K, see supra 4, which further militates against a finding that

20

the game is explicitly misleading as to its source. See VIRAG, S.R.L. v. Sony Comput.

21

Entm’t Am. LLC, 699 F. App’x 667, 668 (9th Cir. 2017) (affirming grant of Rule

22

12(b)(6) motion where trademark was used in video game because the plaintiff did not

23

allege an “explicit indication, overt claim, or explicit misstatement”). As NBA 2K is

24

protected by the First Amendment, dismissal is appropriate. See id.; Brown, 724 F.3d

25

at 1247–48 (affirming grant of motion to dismiss); Metrano v. Twentieth Century Fox

26

Film Corp., No. 08 Civ. 086314, 2009 WL 10672576, at *5 (C.D. Cal. July 16, 2009)

27

(granting Rule 12(b)(6) motion to dismiss).

28
DEFENDANT’S MEMORANDUM OF POINTS
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1

E.

Plaintiff Is Not Entitled to the Relief Requested in the Complaint

2

Plaintiff’s remedy requests are similarly contradicted by established law. First,

3

Plaintiff requests “punitive and/or exemplary damages” for his federal claims, Compl.

4

21:7, 21:14, 22:11, but such relief is not available. See Abbywho, Inc. v. Interscope

5

Records, No. 06 Civ. 0672, 2008 WL 11406099, at *5 (C.D. Cal. Jan. 7, 2008) (no

6

punitive damages for Lanham Act claims); Saregama India Ltd. v. Young, No. 02 Civ.

7

9856, 2003 WL 25769784, at *1 (C.D. Cal. Mar. 11, 2003) (no punitive damages for

8

copyright claims). Second, Plaintiff requests “an award of damages” for his state law

9

unfair competition claim, Compl. 22:5, but “California law does not recognize the

10

recovery of damages by individuals for unfair business practices.” Kates v. Crocker

11

Nat. Bank, 776 F.2d 1396, 1398 (9th Cir. 1985). Third, Plaintiff requests “attorney’s

12

fees” for his copyright claims, Compl. 21:8, 21:15, but “no award of . . . attorney’s

13

fees . . . shall be made for . . . any infringement of copyright commenced after first

14

publication of the work and before the effective date of its registration, unless such

15

registration is made within three months after the first publication of the work.” 17

16

U.S.C. § 412. Plaintiff is not entitled to attorney’s fees as he did not apply to register

17

his works until December 15, 2018, Compl. ¶ 41, and NBA 2K16 was released on

18

September 29, 2015. Id. ¶ 31; see Derek Andrew, Inc. v. Poof Apparel Corp., 528

19

F.3d 696, 702 (9th Cir. 2008) (attorney’s fees not available where “infringement

20

commenced prior to . . . registration date”); see also Solid Oak Sketches, LLC v. 2K

21

Games, Inc., No. 16 Civ. 724, 2016 WL 4126543, at *2 (S.D.N.Y. Aug. 2, 2016).15

22

IV.

As Take-Two informed Plaintiff of the Complaint’s deficiencies before filing

23
24

CONCLUSION

this Motion and Plaintiff did not amend, Take-Two seeks dismissal with prejudice.

25
26
27
28

15

Plaintiff also would not benefit from the three-month publication safe harbor as the
Variations were published in 2014, 2014, and 2012 respectively. Cendali Decl.
Exs. A, D, G, but he did not apply to register them until 2018. Compl. ¶ 41.

DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS 20

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DATED: February 13, 2019
/s/ Dale M. Cendali
Dale M. Cendali (admitted pro hac vice)
dale.cendali@kirkland.com
Joshua L. Simmons (admitted pro hac vice)
joshua.simmons@kirkland.com
Shanti S. Conway (admitted pro hac vice)
shanti.conway@kirkland.com
Megan L. McKeown (admitted pro hac vice)
megan.mckeown@kirkland.com
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022
Telephone: (212) 446-4800
Facsimile: (212) 446-4900
Sharre Lotfollahi (S.B.N. 258913)
sharre.lotfollahi@kirkland.com
KIRKLAND & ELLIS LLP
333 South Hope Street
Los Angeles, CA 90071
Telephone: (213) 680-8400
Facsimile: (213) 680-8500
Attorneys for Defendants Take-Two
Interactive Software, Inc.; 2K Sports,
Inc.; 2K Games, Inc.; and Visual
Concepts Entertainment

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DEFENDANT’S MEMORANDUM OF POINTS
CASE NO. 2:18-cv-10417 RGK (ASx)
AND AUTHORITIES ISO MOTION TO DISMISS 21