Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 1 of 10 Page ID #:139 f■ ~~ 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 Nintendo of America, Inc., 12 13 14 15 v. Case No.: CV 19-7818-CBM-RAO(x) Plaintiff, ORDER RE: DEFENDANT'S PRETRIAL MOTION TO DISMISS Matthew Storman, Defendant. 16 17 18 19 20 The matter before the Court is Defendant Matthew Storman's "Pretrial Motion to Dismiss." (Dkt. No. 25.) I. BACKGROUND This action arises from Defendant's alleged copying, distribution, 21 reproduction, and offering of copies of Plaintiffls copyrighted video games 22 through a website owned and operated by Defendant. Plaintiff Nintendo of 23 America Inc.'s ("Plaintiff's") Complaint asserts three causes of action: (1) 24 copyright infringement, 17 U.S.C. § 501; (2) federal trademark infringement and 25 unfair competition, 15 U.S.C. §§ 1114, 1125(a); and (3) Unfair Competition, Cal. 26 Bus. &Prof. Code § 17200. Defendant moves to dismiss the Complaint for 27 failure to state a claim, lack of personal and subject matter jurisdiction, improper 28 venue, insufficient service of process, and failure to join a party. 1 Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 2 of 10 Page ID #:140 1 2 II. A. 3 STATEMENT OF THE LAW Failure To State a Claim A court may dismiss a complaint for "failure to state a claim upon which 4 relief can be granted" pursuant to Federal Rule of Civil Procedure 12(b)(6). 5 Dismissal of a complaint pursuant to Rule 12(b)(6) can be based on either a lack 6 of a cognizable legal theory or the absence of sufficient facts alleged under a 7 cognizable legal theory. Balistreri v. Pacifica Police Dept,901 F.2d 696,699 8 (9th Cir. 1990). To survive a Rule 12(b)(6) motion to dismiss, the complaint 9 "must contain sufficient factual matter, accepted as true, to `state a claim to relief 10 that is plausible on its face."' Ashcroft v. Igbal, 556 U.S. 662,663,(2009) 1 1 (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570(2007)). A formulaic 12 recitation ofthe elements of a cause of action will not suffice and factual 13 allegations "must be enough to raise a right to relief above the speculative level." 14 Twombly, 550 U.S. at 555. The court accept as true all well-pleaded allegations of 15 material fact and construes them in a light most favorable to the non-moving 16 party. Manzarek v. St. Paul Fire &Marine Ins. Co., 519 F.3d 1025, 1031-32(9th 17 Cir. 2008). 18 B. 19 Personal Jurisdiction Federal Rule of Civil Procedure 12(b)(2) allows a court to dismiss a 20 complaint for lack of personal jurisdiction. "For a court to exercise personal 21 jurisdiction over a nonresident defendant, that defendant must have at least 22 `minimum contacts' with the relevant forum such that the exercise ofjurisdiction 23 `does not offend traditional notions of fair play and substantial justice."' 24 Schwarzenegger, 374 F.3d at 801 (quoting Intl Shoe Co. v. Washington, 326 U.S. 25 310, 316(1945)(internal quotation marks omitted)); see also Walden v. Fiore, 26 134 S.Ct. 1115, 1121 (2014). "Where a defendant moves to dismiss a complaint 27 for lack of personal jurisdiction, the plaintiff bears the burden of demonstrating 28 that jurisdiction is appropriate." Id. at 800. To show personal jurisdiction, "[t]he 2 Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 3 of 10 Page ID #:141 1 plaintiff need only make a prima facie showing ofjurisdictional facts." Id. The 2 plaintiff cannot "simply rest on the bare allegations of its complaint," but 3 uncontroverted allegations in the complaint will be taken as true. Id. 4 C. Subject Matter Jurisdiction 5 On a Rule 12(b)(1) motion to dismiss for lack of subject matter jurisdiction, 6 the party asserting jurisdiction bears the burden of proofjurisdiction exists. Sopak 7 v. Northern Mountain Helicopter Serv., 52 F.3d 817, 818(9th Cir. 1995). Where 8 the Rule 12(b)(1) motion attacks the complaint on its face, the court considers the 9 complaint's allegations to be true, and draws all reasonable inferences in the 10 plaintiff's favor. Doe v. Holy See, 557 F.3d 1066, 1073 (9th Cir. 2009)(citation 11 omitted). Where the Rule 12(b)(1) motion challenges the substance of 12 jurisdictional allegations, the court does not presume the factual allegations to be 13 true, and may consider evidence such as affidavits and testimony to resolve factual 14 disputes regarding jurisdiction. McCarthy v. United States, 850 F.2d 558,560 15 (9th Cir. 1988). 16 17 D. Improper Venue A defendant may move to dismiss a complaint based on improper venue. 18 Fed. R. Civ. P. 12(b)(3). On a Rule 12(b)(3) motion to dismiss,"the pleadings 19 need not be accepted as true, and the court may consider facts outside ofthe 20 pleadings." Murphy v. Schneider Nat'l, Inc., 362 F.3d 1133, 1137(9th Cir. 2004) 21 (citations omitted). Plaintiff bears the burden of showing that venue is proper. 22 See Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d 491, 496(9th Cir. 23 1979). "Whether venue is `wrong' or `improper' depends exclusively on whether 24 the court in which the case was brought satisfies the requirements of federal venue 25 laws." Atl. Marine Const. Co. v. U.S. Dist. Courtfor W. Dist. ofTexas, 571 U.S. 26 49, 55 (2013). Therefore,"[t]his question—whether venue is `wrong' or 27 `improper'—is generally governed by 28 U.S.C. § 1391." Id.; see also 28 U.S.C. 28 § 1391(a). Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 4 of 10 Page ID #:142 1 I~ E. Insufficient Service of Process 2 A Rule 12(b)(5) motion is the proper vehicle for challenging "insufficient 3 service of process." Fed. R. Civ. Proc. 12(b)(5). Service of process is a 4 prerequisite for personal jurisdiction over a defendant. See .Iackson v. Hayakawa, 5 682 F.2d 1344, 1347(9th Cir. 1982). "Neither actual notice, nor simply naming 6 the person in the caption of the complaint, will subject defendants to personal 7 jurisdiction if service was not made in substantial compliance with Rule 4." Id. at 8 1347(internal citations omitted). "Once service is challenged,[Plaintiff) bears] 9 the burden of establishing that service was valid." Brockmeyer v. May, 383 F.3d 10 798, 801 (9th Cir. 2004). 11 F. Failure To Join an Indispensable Party 12 Federal Rule of Civil Procedure 12(b)(7) permits a party to file a motion to 13 dismiss for failure to join a party as required under Rule 19.' If"a person who is 14 required to be joined if feasible cannot be joined, the court must determine 15 whether, in equity and good conscience, the action should proceed among the 16 existing parties or should be dismissed." Fed. R. Civ. Proc. 19(b). 17 18 19 III. A. DISCUSSION Failure To State a Claim To state a claim for copyright infringement, Plaintiff must plausibly allege 20 21 22 23 24 25 26 27 28 1 Rule 19(a) provides: A person who is subject to service of process and whose joinder will not deprive the court of subject-matter jurisdiction must be joined as a party if: (A)in that person's absence, the court cannot accord complete relief among existing parties; or (B)that person claims an interest relating to the subject ofthe action and is so situated that disposing ofthe action in the person's absence may: (i) as a practical matter impair or impede the person's ability to protect the interest; or (i~i) leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations because of"the interest. Fed. R. Civ. Proc. 19(a)(1). 4 Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 5 of 10 Page ID #:143 1 two elements:(1)that [it] owns a valid copyright in [the Subject Work], and(2) 2 that [Defendant] copied protected aspects of[the Subject Work]'s expression."2 3 Malibu Textiles, Inc. v. Label Lane Intl, Inc., 922 F.3d 946,951 (9th Cir. 2019) 4 (citing Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117(9th Cir. 2018)). Defendant 5 argues Plaintiff has not adequately pled the first element re: ownership because the 6 Complaint does not allege "ownership of copies" and "[flails to identify essential 7 owners of copies." However,the Complaint adequately alleges ownership by 8 alleging Plaintiff holds registered copyrights for the subject works and identifying 9 the copyright registration number and date for those works. (See Compl. ¶¶ 17, 10 41; id. Ex. A.) See Roney v. Miller, 705 F. App'x 670(9th Cir. 2017). Moreover, 11 Plaintiff has sufficiently alleged ownership ofthe copies ofthe copyrighted works 12 by alleging Plaintiff holds registered copyrights for the original works that were 13 copied. See 17 U.S.C. § 106(1)-(2)(the owner of copyright "has the exclusive 14 rights to ...reproduce the copyrighted work in copies [and] to prepare derivative 15 works based upon the copyrighted work"). 16 Defendant also argues the Complaint fails to state a claim for copyright 17 infringement because the Complaint does "not include any required DMCA 18 [Digital Millennium Copyright Act] violation" since Defendant is a service 19 provider and therefore immune from liability pursuant to the DMCA's safe harbor 20 provisions. The DMCA's safe harbors provide protection for service providers 21 from liability for copyright infringement for:(1)transitory digital network 22 communications;(2)system caching;(3)information residing on systems or 23 networks at the direction of users; and(4)information location tools. 17 U.S.C. § 24 512; Ellison v. Robertson, 357 F.3d 1072, 1076-77(9th Cir. 2004). The DMCA's 25 26 27 28 2 Defendant does not contend Plaintiff fails to adequately allege the second element for copyright infringement regarding copying protected aspects ofthe works' expression, and the Court finds the Complaint states sufficient facts as to that element. See Comp1. 28, 42-43.) See Roney, 705 F. App'x at 670• Atari Games Corp. v. Nintendo o~¶Am. Inc., 975 F.2d 832, 840-41 (Fed. Cir. 192). 5 Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 6 of 10 Page ID #:144 1 safe harbors are affirmative defenses3 and not relevant to whether Plaintiff has 2 adequately pled a claim for copyright infringement. Moreover, the DMCA 3 defines a service provider as "an entity offering the transmission, routing, or 4 providing of connections for digital online communications, between or among 5 points specified by a user, of material ofthe user's choosing, without modification 6 to the content ofthe material as sent or received." 17 U.S.C. § 512(k). 7 Furthermore, the DMCA's safe harbors for protection from liability for copyright 8 infringement only apply if the service provider "has adopted and reasonably 9 implemented, and informs subscribers and account holders ofthe service 10 provider's system or network of, a policy that provides for the termination in 11 appropriate circumstances of subscribers and account holders of the service 12 provider's system or network who are repeat infringers;" and "accommodates and 13 does not interfere with standard technical measures." 17 U.S.C. § 512(i). 14 Therefore, the Court would be required to look beyond the pleadings to determine 15 whether Defendant is a service provider who satisfies the statutory requirements 16 for protection pursuant to the DMCA's safe harbors, which is improper on a Rule 17 12(b)(6) motion to dismiss. Tellabs, Inc. v. Makor Issues &Rights, Ltd., 551 U.S. 18 308, 322(2007).4 19 Accordingly, the Court denies Defendant's motion to dismiss for failure to 20 state a claim pursuant to Rule 12(b)(6).5 21 B. 22 Personal Jurisdiction Defendant argues this Court lacks personal jurisdiction over Defendant 23 because:(1)he "not an individual ...but rather an SP [Service Provider]...who 24 is not part of the required forum";(2)"SP is protected under DMCA,and potential 25 26 27 28 3 See Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020, 1039(9th Cir. 2013). 4 See, e.g., Branca v. Mann,2011 WL 13218028, at *2(C.D. Cal. A r. 19, 2011); Williams v. Scribd, Inc., 2010 WL 10090006, at *4(S.D. Cal. June ~3, 2010). 5 Defendant does not argue Plaintiff fails to state a claim for trademark infringement or unfair competition. Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 7 of 10 Page ID #:145 1 involvement of international actors" such as Plaintiff who is a German company; 2 and (3)"Plaintiff may have violated Defendant's privacy rights or by using 3 unlawful means [sic]." 4 Whether the DMCA's safe harbor provisions apply, whether Plaintiff is a 5 German company, and whether Plaintiff may have violated Defendant's privacy 6 rights or used unlawful means is not relevant in determining whether there is 7 personal jurisdiction over Defendant. Moreover, the Court cannot determine 8 whether the DMCA's safe harbor provisions apply to Defendant at this stage 9 because there is no evidence before the Court regarding whether Defendant is a 10 service provider who satisfies the statutory requirements for protection pursuant to 11 the DMCA's safe harbors.6 Even assuming the DMCA's safe harbor provisions 12 apply to Defendant, those safe harbors would not protect Defendant from liability 13 as to Plaintiff's trademark infringement and unfair competition claims. See 17 14 U.S.C. § 512(providing four safe harbors for liability for "copyright 15 infringement"); Williams v. Life's Rad, 2010 WL 5481762, at *3(N.D. Cal. May 16 12, 2010). 17 Here, the Complaint alleges "[t]his Court has personal jurisdiction over 18 defendant Storman, who resides in the Central District of California" and "a 19 substantial part ofthe infringing acts occurred in this District." (Compl. ¶¶ 9, 10.) 20 In his Motion to Dismiss, Defendant provided an address in Covina, California, 21 which is the address ofrecord listed for Defendant in this action. Therefore, there 22 is no evidence demonstrating this Court lacks personal jurisdiction over 23 Defendant. Accordingly, the Court denies Defendant's motion to dismiss for lack 24 of personal jurisdiction pursuant to Rule 12(b)(2). 25 C. 26 Subject Matter Jurisdiction Defendant argues the Court lacks subject matter jurisdiction over this matter 27 28 6 See Branca,2011 WL 13218028, at *2. 7 Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 8 of 10 Page ID #:146 1 "because of liability immunity" pursuant to the DMCA's safe harbors,"proof 2 ownership of copies has not been claimed," and Plaintiff is a Japanese or German 3 company. The DMCA's safe harbors, proof of ownership of copies, and whether 4 Plaintiff is a foreign company are irrelevant to whether the Court has subject 5 matter jurisdiction over this action. Moreover, as discussed supra, the Court 6 cannot determine at this stage whether the DMCA's safe harbor provisions apply 7 and Plaintiff sufficiently alleges ownership. Accordingly, the Court denies 8 Defendant's motion to dismiss for lack of subject matter jurisdiction pursuant to 9 Rule 12(b)(1). 10 11 D. Improper Venue Defendant contends venue is improper because "[o]wners of copies may be 12 international" and "the Plaintiff is a German or Japanese company." However, 13 whether "owners of copies may be international" and whether Plaintiff is an 14 international company is irrelevant in determining whether venue is proper. See 15 28 U.S.C. § 1391. 16 Here, the Complaint alleges venue is proper in this district because 17 Defendant "resides in the federal judicial district ofthe Central District of 18 California and a substantial part of the infringing acts occurred in this District." 19 (Compl. ¶ 10.) Defendant does not argue nor provide any evidence demonstrating 20 he does not reside in this district or that the alleged infringing acts did not occur in 21 this district. As discussed supra, Defendant provided an address within this 22 district in his Motion to Dismiss, which is the address ofrecord for Defendant in 23 this action. Therefore, there is no indication venue is improper here. 24 Accordingly, the Court denies Defendant's motion to dismiss based on improper 25 venue pursuant to Rule 12(b)(3). 26 27 28 The Complaint alleges Plaintiff is a Washington corporation with its headquarters and principal place of business in Redmond, Washington. (Compl. ¶ 2.) 8 Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 9 of 10 Page ID #:147 1 ~ E. Insufficient Service of Process 2 Defendant argues service was "insufficient because it does not timely serve, 3 essential actors, such as owners of copies, supplies [sic], distributors, and 4 copyright owners." As discussed supra, Plaintiff sufficiently alleges ownership, 5 and "the owner of copyright ...has the exclusive rights to ...reproduce the 6 copyrighted work in copies [and] to prepare derivative works based upon the 7 copyrighted work." 17 U.S.C. § 106(1)-(2). Moreover, Defendant fails to identify 8 ~ any authority requiring Plaintiff to serve suppliers and distributors. Defendant 9 also contends there was "insufficient process""because [process] is not based on 10 DMCA violations." The DMCA is irrelevant to service of process, and in any 11 event the Court cannot make a determination at this stage as to whether the 12 DMCA safe harbors apply. 13 Here, Plaintiff filed a proof of service of the summons and complaint on 14 Defendant on September 12, 2019(Dkt. No. 13). Accordingly, the Court denies 15 Defendant's motion to dismiss based on insufficient service of process pursuant to 16 Rule 12(b)(5). 17 F. 18 Failure To Join an Indispensable Party Defendant argues Plaintiff has "failed to join the true and essential owners 19 of copies known only to Plaintiff, or unknown." As discussed supra, Plaintiff 20 sufficiently alleges ownership and "the owner of copyright ...has the exclusive 21 rights to ...reproduce the copyrighted work in copies [and] to prepare derivative 22 works based upon the copyrighted work." 17 U.S.C. § 106(1)-(2). Therefore, 23 Defendant fails to demonstrate there are persons subject to service of process 24 which, in their absence, would prevent the Court from providing complete relief 25 among the existing parties or persons claiming an interest in the subject ofthis 26 action. See Fed. R. Civ. Proc. 19. Accordingly, the Court denies Defendant's 27 motion to dismiss based on failure to join an indispensable party pursuant to Rule 28 ~12)~b)~~)• Case 2:19-cv-07818-CBM-RAO Document 30 Filed 01/15/20 Page 10 of 10 Page ID #:148 1 ~~ IV. CONCLUSION Therefore, the Court DENIES Defendant's Pretrial Motion to Dismiss. 3 Defendant shall serve a responsive pleading no later than January 29,2020. See 4 Fed. R. Civ. P. 12(a)(4)("[I]f the court denies the motion [to dismiss pursuant to 5 Fed. R. Civ. P. 12(b)]..., the responsive pleading must be served within 14 days 6 after notice ofthe court's action."). 7 8 IT IS SO ORDERED. 9 10 11 DATED: January 15, 2020. ~ ~~ o ~_~ CONSUELO B. MARSHALL UNITED STATES DISTRICT JUDGE 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10