Beyond Blond Prods., LLC v. Heldman

• Citation: 479 F.Supp.3d 874
• Decision Date: 14 August 2020
• Docket Number: CV 20-5581 DSF (GSJx)
• Court: U.S. District Court — Central District of California
• Parties: BEYOND BLOND PRODUCTIONS, LLC, Plaintiff, v. Edward HELDMAN III, et al., Defendants.

479 F.Supp.3d 874

BEYOND BLOND PRODUCTIONS, LLC, Plaintiff,

v.Edward HELDMAN III, et al., Defendants.

CV 20-5581 DSF (GSJx)

United States District Court, C.D. California.

Signed August 14, 2020

Milord A. Keshishian, Stephanie V. Trice, Milord and Associates PC, Los Angeles, CA, for Plaintiff.

Ben T. Lila, Joseph A. Mandour, III, Mandour and Associates APC, Los Angeles, CA, for Defendants.

Order GRANTING Plaintiff's Motion for a Preliminary Injunction (Dkt. 14)

Dale S. Fischer, United States District Judge

Plaintiff Beyond Blond Productions, LLC requests a preliminary injunction ordering Defendants Edward Heldman III, ComedyMX, Inc., and ComedyMX, LLC to withdraw six Digital Millennium Copyright Act (DMCA) takedown notices issued to non-party Amazon for Plaintiff's "cartoon classics" videos and refrain from issuing any further DMCA takedown notices. Dkt. 14 (Mot.).¹ Defendants oppose. Dkt. 19 (Opp'n). The Court deems this matter appropriate for decision without oral argument. See Fed. R. Civ. P. 78 ; Local Rule 7-15. For the reasons stated below, the motion is GRANTED.

I. BACKGROUND

Plaintiff is a small business that "helps content owners leverage their music and video catalogs into new and different product offerings for digital distribution." Dkt. 14-1 (Justice Decl.) ¶ 2. Plaintiff also "acquires and purchases public domain videos and cartoon classics, makes compilations of same, and lists the works on video streaming platforms." Id. ¶ 4. In late 2016 or early 2017, Plaintiff acquired, digitized, and edited cartoon classics from BetaSP tapes and the public domain, including Bugs Bunny, Popeye, and Mighty Mouse. Id. ¶ 5. Heldman is a member of ComedyMX, LLC and the Chief Operating Officer of ComedyMX, Inc. Dkt. 19-2 (Heldman Decl.) ¶ 1. Defendants "creat[e] copyrightable derivative works from public domain content ... and licens[e] the derivative works through various means." Id. ¶ 2.

Between February 2017 and May 2019, Plaintiff uploaded six cartoon classic compilations to Amazon's Prime Video Direct (Amazon Video). Justice Decl. ¶ 7. In March 2020, Heldman viewed these videos and submitted DMCA takedown notices to Amazon "on behalf of" ComedyMX, LLC, the owner of U.S. Copyright No. PAu00378644 (the ‘644 Registration) and U.S. Copyright No. PAu003801793 (the ‘793 Registration). Heldman Decl. ¶¶ 2-3; see also Justice Decl. Ex. 1. Plaintiff's president, Michelle Justice, declares that she was not aware of Defendants' videos until March 20, 2020 when she received notice from Amazon that Defendants had issued six DMCA takedown notices for Plaintiff's six videos. Justice Decl. ¶ 10. On March 31, 2020, Plaintiff filed counternotifications with Amazon, but Amazon responded that it would not restore Plaintiff's videos unless Defendants withdrew their takedown notices. Id. ¶¶ 13-14 & Exs. 3, 4. After Amazon rejected Plaintiff's appeal, id. ¶ 15, Plaintiff brought this action asserting claims against Defendants for Misrepresentation of Copyright Claims, 17 U.S.C. § 512(f), Declaration of Copyright and Trademark Invalidity, Unenforceability, and Non-Infringement, Tortious Interference with Existing and Prospective Economic Advantage, Trade Libel/Product Disparagement, and California's Unfair Competition Law (UCL), Cal. Bus. & Prof. Code § 17200, Dkt. 1 (Compl.). While this motion was pending, Defendants filed another takedown notice. Dkt. 21-1 (Suppl. Justice Decl.) ¶ 13 & Ex. 19. The next day, Plaintiff noticed that Amazon had independently taken down two additional videos. Id. ¶ 14.

II. LEGAL STANDARD

"A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest." Winter v. Natural Res. Def. Council, 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008). Although a plaintiff seeking a preliminary injunction must make a showing on each factor, the Ninth Circuit employs a "version of the sliding scale" approach where "a stronger showing of one element may offset a weaker showing of another." Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131-35 (9th Cir. 2011). Under this approach, a court may issue a preliminary injunction where there are "serious questions going to the merits and a balance of hardships that tips sharply towards the plaintiff ..., so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest." Id. at 1135 (internal quotation marks omitted). However, if a party seeks a mandatory injunction, "she must establish that the law and facts clearly favor her position, not simply that she is likely to succeed." Garcia v. Google, Inc., 786 F.3d 733, 740 (9th Cir. 2015) (en banc). "[M]andatory injunctions should not issue in ‘doubtful cases.’ " Id. (quoting Park Vill. Apartment Tenants Ass'n v. Mortimer Howard Tr., 636 F.3d 1150, 1160 (9th Cir. 2011) ).

III. DISCUSSION

A. Whether the Law and Facts Clearly Favor Plaintiff's Position

Plaintiff contends it is likely to succeed on its first three causes of action for Declaration of Copyright Invalidity, Unenforceability, and Non-Infringement, Declaration of Trademark Invalidity, Unenforceability, and Non-Infringement, and Misrepresentation of Copyright Claims under 17 U.S.C. § 512(f). The Court finds Plaintiff is likely to succeed on the declaratory relief claims and that the law and facts clearly favor Plaintiff's position on those claims.²

1. Declaration of Copyright Invalidity, Unenforceability, and Non-Infringement

Plaintiff seeks a declaration that the ‘644 Registration is invalid and unenforceable, Compl. ¶ 39, and that Plaintiff's six videos have "not infringed, do[ ] not infringe, and would not infringe, either directly or indirectly, any valid, enforceable and/or protectable expression in the ‘644 Registration," id. ¶ 40.³ In a declaratory judgment action, the burden of proving infringement remains with the rightsholder. See Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191, 199, 134 S.Ct. 843, 187 L.Ed.2d 703 (2014) ("the burden of proving infringement should remain with the patentee"); Marya v. Warner/Chappell Music, Inc., 131 F. Supp. 3d 975, 984 (C.D. Cal. 2015) ("just as in Medtronic, there is no reason to relieve the alleged owners of the intellectual property of the usual burden of proof just because they are nominally the defendants in this declaratory judgment action"); Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK, 2014 WL 7877773, at *5 (C.D. Cal. Oct. 30, 2014) ("In an action seeking a declaration of non-infringement, the party who owns the work as to which infringement is claimed bears the burden"). Therefore, the burden is on Defendants to show copyright infringement.

"A plaintiff bringing a claim for copyright infringement must demonstrate ‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’ " Funky Films, Inc. v. Time Warner Entm't, 462 F.3d 1072, 1076 (9th Cir. 2006) (quoting Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ). As to the first element, "[a] copyright registration is ‘prima facie evidence of the validity of the copyright and the facts stated in the certificate.’ " United Fabrics Int'l, Inc. v. C & J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011) (quoting 17 U.S.C. § 410(c) ). "An accused infringer can rebut this presumption of validity" by "offer[ing] some evidence or proof to dispute or deny the plaintiff's prima facie case of infringement." Entm't Research Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217 (9th Cir. 1997). "[T]he second element has two distinct components: ‘copying’ and ‘unlawful appropriation.’ " Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018), cert. denied, ––– U.S. ––––, 139 S. Ct. 1375, 203 L.Ed.2d 609 (2019). "By establishing reasonable access and substantial similarity, a copyright plaintiff creates a presumption of copying. The burden shifts to the defendant to rebut that presumption through proof of independent creation." Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000).

Plaintiff contends that the ‘644 Registration is invalid and unenforceable, and that Plaintiff's videos are non-infringing for three primary reasons: 1) the ‘644 Registration cannot, and does not, protect Defendants' cartoons classic logo, 2) Plaintiff did not access Defendants' works, and 3) the works are not substantially similar. Compl. ¶¶ 39-40.⁴

Plaintiff does not contend that the ‘644 Registration is invalid on its face, but rather that it "cannot extend to [Defendants'] purported trademark in the ‘cartoon classics’ term and copied eye design." Mot. at 8. First, the ‘644 Registration is a Performing Arts (PA) copyright registration that covers a "Motion Picture" consisting of an "unpublished collection." Heldman Decl. Ex. 4 at 1. Plaintiff contends that PA copyright registration cannot and does not extend to Defendant's "cartoon classics" design because PA registrations cover "[w]orks of the performing arts" such as "Musical works ...; dramatic works ...; pantomimes and choreographic works; and motion pictures and other audiovisual works," not logos, and "the ‘644 Registration does not even list the purported trademark design as protected material under the ‘Contents’ heading." Mot. at 8 (citing 37 CFR § 202.3(b)(1)(ii) ). The ‘644 Registration clearly does not cover the "cartoon classics" design logo.

That Defendants obtained a copyright in their motion pictures does not equate to protection of design logos contained in those videos. See Secret of the Islands, Inc. v. Hymans Seafood Co. Inc., No. 2-17-CV-00342, 2018 WL 1566706, at *4 (D.S.C. Mar. 30, 2018) ("A copyright in an image does not equal trademark protection in the products in that image"...