Mahon v. Mainsail LLC
| Decision Date | 07 August 2020 |
| Docket Number | Case No. 20-cv-01525-YGR,Case No. 20-cv-01523-YGR,Case No. 20-cv-01527-YGR,Case No. 20-cv-01534-YGR,Case No. 20-cv-01530-YGR |
| Court | U.S. District Court — Northern District of California |
| Parties | MARK MAHON, Plaintiff, v. MAINSAIL LLC, ET AL., Defendants. YOUTUBE LLC, ET AL., Defendants. ENTERTAINMENT ONE US LP, ET AL., Defendants. ALPHABET INC., ET AL. Defendants. APPLE INC., ET AL., Defendants. |
Plaintiff Mark Mahon brings five copyright infringement actions, alleging that each defendant infringes Mahon's copyrights in the motion picture and screenplay titled "Strength and Honor" and further infringes Mahon's Right of the Author in those works. For Mainsail1 andEntertainment One,2 plaintiff alleges additional claims, including willful copyright infringement, trafficking in illicit labels, and conversion. Mahon alleges fraud against Mainsail only. Each defendant now moves to dismiss plaintiff's claims for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Entertainment One and Apple further move to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2).
Having considered the papers and pleadings in this action, the Court finds the motion appropriate for resolution without oral argument and the matter is deemed submitted. Fed. R. Civ. P. 78(b); Civ. L. R. 7-1(b). The Court GRANTS IN PART and DENIES IN PART Mainsail's and Entertainment One's motions, and GRANTS YouTube's, Alphabet's, and Apple's motions, with leave to amend as stated herein.
Plaintiff alleges the same background facts for each defendant.3
Mahon is an independent filmmaker based in Cork, Ireland. (Mainsail Compl. ¶ 7.) In 2005, Mahon wrote, directed, and produced the film "Strength and Honor" (the "Film"), which follows a single father who rediscovers boxing to save his young son's life. (Id. ¶ 24.) The Film has won multiple awards and received attention on the awards circuit and in the media. (Id.) To develop the film commercially, Mahon created a fully-owned production company, Maron Pictures Ltd. ("Maron Pictures"), and assigned it all literary and authorship rights in return for € 300,000 and 40% of royalties. (Id. ¶ 26, Exs. 7, 8.)
In 2006, Mahon obtained U.S. copyright registrations for both the Film and the screenplay. (Id. ¶ 25.) Mahon listed himself as the author and owner of the screenplay copyright but MaronPictures as the copyright owner of the motion picture copyright. (See id. Exs. 2, 6.) In 2009, Maron Pictures entered into a distribution agreement with Mainsail, granting it the rights to distribute the Film worldwide except North America and Ireland. (Id. ¶ 28.) Mahon sent Mainsail the authorized poster and cover for distribution and sent the master elements of the Film to Visual Data Media Services, Inc. ("Visual Data")—a California company apparently devoted to digital media supply chains. (Id.) Mainsail then sub-licensed distribution rights to Entertainment One and other distributors. (Id. ¶¶ 32, 36.)
However, in January 2010, the Film was released in Europe and Ireland under unauthorized covers and trailers. (Id. ¶ 29.) Ten years of litigation ensued. Mahon sent cease-and-desist emails to Mainsail and Entertainment One, ordering them to stop distribution. (Id. ¶¶ 30-32.) Following multiple attempts at mediation and arbitration, Maron Pictures filed suit against Mainsail in the Los Angeles Superior Court. (Id. ¶¶ 35-41.) In 2016, the Superior Court found that Mainsail had stopped all licensing activities after receiving Mahon's cease-and-desist letter and denied all claims.4 (Id. ¶¶ 45, 47.) The Superior Court further found that Maron Pictures never delivered the Film to Mainsail.5 (Id.) Maron Pictures unsuccessfully appealed and then sought review by the Supreme Court, which was denied in 2019. (Id. ¶¶ 49-53.)
Consistent with the Superior Court's findings, Mainsail never paid Maron Pictures for use of the Film, which it alleges it never used after Mahon's letter. (Id. ¶ 42.) Accordingly, Maron Pictures could not pay Mahon, and, following the contractual day of payment, Mahon revoked his rights from Maron Pictures in October 2015. In 2017, Mahon also filed a supplemental registration with the U.S. Copyright Office correcting authorship and ownership information in the original registration from "Maron Pictures" to himself. (See id. Ex. 2.)
Despite Mainsail's representations, Mahon claims that Mainsail continued to license the Film worldwide after Mahon revoked the agreement. (Id. ¶ 42.) First, the Film continued to beshown around the world in 2016, as evidenced by Mahon's purchase of the Film from YouTube the same year. (Id. ¶ 48, Ex. 35.) Because copies of the Film could only be obtained from Visual Data, Mahon claims that the illicit distribution came from Mainsail. (See id. ¶ 45.) Second, Maron Pictures received a royalty report from Entertainment One in February 2018 showing significant Film revenues in 2017. (Ent. One Compl. ¶ 36.) Finally, in December 2019, Visual Data disclosed to Mahon—allegedly for the first time—that it had sent copies of the Film to Mainsail in California as late as May 2017. (Id. ¶ 54, Exs. 37, 38.)
Following the Visual Data revelation, Mahon sent cease-and-desist letters to YouTube Inc., Apple Inc., and Google LLC, who had the Film available for purchase in 2019. (YouTube Compl. ¶ 34; Apple Compl. ¶ 35; Alphabet Compl. ¶ 35.) YouTube responded by giving Mahon a non-functioning link and advising him to file a copyright infringement complaint. (YouTube Compl. ¶¶ 25-39.) Apple responded by providing a non-functional link and eventually informing Mahon that the content had been taken down, but that Entertainment One US LP had previously provided it. (Apple Compl. ¶¶ 36-40.) Google responded by informing Mahon that the Film was no longer available through Google Play, but that it had previously obtained it from Entertainment One under license. (Alphabet Compl. ¶ 38.)
Entertainment One contacted Mahon directly in January 2020, informing Mahon that, as he "might recall," it possessed all linear distribution rights in the Film (which include "download and streaming") under an agreement with Mainsail. (Id. ¶ 36.) Entertainment One confirmed that it had provided copies of the Film to "Google and other digital platforms" and requested that "no further action be taken against these platforms." (Id.)
Mahon filed the instant complaints in March 2020. The cases were reassigned in April, but have not yet been consolidated. The Court shall address additional allegations as necessary in the Order.
Dismissal under Rule 12(b)(1) is warranted where plaintiff fails to establish federal subject matter jurisdiction. A Rule 12(b)(1) motion may challenge jurisdiction in one of two ways. Leitev. Crane Co., 749 F.3d 1117, 1121 (9th Cir. 2014). First, a "facial" attack "accepts the truth of the plaintiff's allegations but asserts that they are 'insufficient on their face to invoke federal jurisdiction.'" Id. (quoting Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004)). Second, a "factual" attack "contests the truth of the plaintiff's factual allegations, usually by introducing evidence outside the pleadings." Id. The court treats facial attacks similar to Rule 12(b)(6) motions—assuming the truth of plaintiff's allegations and drawing all inferences in favor of plaintiff—but it treats factual attacks consistent with the evidentiary standard that governs summary judgment. Id. "Dismissal for lack of subject matter jurisdiction because of the inadequacy of the federal claim is proper only when the claim is 'so insubstantial, implausible, foreclosed by prior decisions of this Court, or otherwise completely devoid of merit as to not involve a federal controversy." Steel Co. v. Citizens for a Better Env., 523 U.S. 83, 89 (1998) ).
Rule 12(b)(2) places the burden on the plaintiff to demonstrate that the court has personal jurisdiction over the defendants. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004). Similar to Rule 12(b)(1) motions, a Rule 12(b)(2) motion to dismiss may test either plaintiff's allegations of jurisdiction or the facts supporting those allegations. Where defendants' motion rests on the written materials, rather than an evidentiary hearing, "the plaintiff need only make a prima facie showing of jurisdictional facts. Id. (citing Sher v. Johnson, 911 F.2d 1357, 1361 (9th Cir. 1990)). Although plaintiff cannot rest on conclusions, "uncontroverted allegations in the complaint must be taken as true." Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1223 (9th Cir 2011). The court does not assume the truth of allegations contradicted by affidavit, but conflicts among parties' affidavits are resolved in plaintiff's favor. Id.; AT&T Co. v. Compagnie Bruxelles Lambert, 94 F.3d 586, 588-89 (9th Cir. 1996) (citation omitted).
Substantively, "[t]here are two limitations on a court's power to exercise personal jurisdiction over a nonresident defendant: the applicable state personal jurisdiction rule and constitutional principles of due process." Sher, 911 F.2d at 1360. California's long arm statute allows courts to exercise personal jurisdiction over defendants to the extent permitted by the dueprocess clause of the United States Constitution. Cal. Civ. P. Code § 410.10. In addition, the federal long-arm statute—codified as Federal Rule of Civil Procedure 4(k)—allows a court to exercise jurisdiction over "any defendant who is not subject to the jurisdiction of the courts of general jurisdiction of any state" through service of process, as long as doing so complies with due process. See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155 (9th Cir. 2006).
Under ...
To continue reading
Request your trial