Nichols v. Club for Growth Action

• Citation: 235 F.Supp.3d 289
• Decision Date: 31 January 2017
• Docket Number: Civil Action No. 16–220 (RMC)
• Parties: Roger NICHOLS, et al., Plaintiffs, v. CLUB FOR GROWTH ACTION, Defendant.
• Court: U.S. District Court — District of Columbia

235 F.Supp.3d 289

Roger NICHOLS, et al., Plaintiffs,

v.CLUB FOR GROWTH ACTION, Defendant.

Civil Action No. 16–220 (RMC)

United States District Court, District of Columbia.

Signed January 31, 2017

Jeff Edward Schwartz, Kenneth E. Raleigh, Fox Rothschild LLP, Washington, DC, Lincoln Dee Bandlow, Rom Bar–Nissim, Fox Rothschild LLP, Los Angeles, CA, for Plaintiff.

Thomas Wesley Kirby, Wiley Rein LLP, Washington, DC, for Defendant.

OPINION

ROSEMARY M. COLLYER, United States District Judge

Club for Growth Action is a political organization that broadcast a 30–second political advertisement on Wisconsin television and the Internet in September 2015. The advertisement challenged the record of former-Senator Russ Feingold, who was then running for re-election against Ron Johnson. Roger Nichols, an individual, and Three Eagles Music, a division of Roger Nichols, Inc., sue Club for Growth Action, alleging that the advertisement violated copyrights held by Three Eagles Music and Mr. Nichols' rights under trademark law. Club for Growth Action moves to dismiss, arguing that Plaintiffs' allegations have plead them out of court by demonstrating that its use of the copyrighted work was fair use. The Court finds that Plaintiffs have adequately alleged a copyright violation and will not decide the issue of fair use without discovery. However, Plaintiff has failed to allege adequately a Lanham Act claim. The motion to dismiss will be granted in part and denied in part.

I. FACTS

Mr. Nichols composed both the lyrics and music of the song Times of Your Life . Times of Your Life was first recorded in 1975 by Paul Anka. Three Eagles Music (Three Eagles) is a division of Roger Nichols Music, Inc. and the owner of the copyrights to both the musical composition and lyrics of Times of Your Life . The registration numbers of the two copyrights are EU529514 and EU599114. Three Eagles Music and Mr. Nichols have authorized use of Times of Your Life in commercials for Kodak and the television show Mad Men .

Club for Growth Action (Club for Growth) is a conservative political action organization that raises funds and creates advertisements to promote conservative candidates for public office. In 2015, Club for Growth created two 30–second commercials focused on challenging former Senator Russ Feingold's attempt to regain his Senate seat. One commercial featured Times of Your Life (the Ad). The Ad altered a majority of the lyrics, but did not alter any of the musical composition for the portion of the song used in the commercial. The commercial was available on the Internet and aired on television in Wisconsin. "At no time has the Club obtained, or attempted to obtain, a license, authorization, or other permission from Three Eagles Music to use or exploit Times of Your Life .... Nor did [Mr.] Nichols consent to allow it to capitalize on his reputation as a songwriter for the purpose of promoting its political agenda." Am. Compl. [Dkt. 9] ¶ 22.

Plaintiffs first filed suit in federal court in California. Because Plaintiffs are Oregon residents, Club for Growth resides in Washington, D.C., and the Ad was aimed at a Wisconsin political campaign, Club for Growth moved to dismiss for lack of personal jurisdiction and other pleading failures. Plaintiffs took a voluntary dismissal of their California complaint and filed a similar Complaint in the District Court for the District of Columbia. Compl. [Dkt. 1]. Club for Growth moved to dismiss and Plaintiffs filed an Amended Complaint on April 29, 2016. Am. Compl. [Dkt. 9].

Club for Growth again moved to dismiss for failure to state a claim and because Plaintiffs' Complaint alleged facts demonstrating the Ad was fair use. Mot. [Dkt. 10]. Plaintiffs opposed, Opp'n [Dkt. 12], and Defendant replied. Reply [Dkt. 14].¹ The motion is ripe for review.²

II. LEGAL STANDARD

A. Motion to Dismiss—Fed. R. Civ. P. 12(b)(6)

Club for Growth moves to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. A complaint must be sufficient "to give a defendant fair notice of what the ... claim is and the grounds upon which it rests." Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal citations omitted). Although a complaint does not need detailed factual allegations, a plaintiff's obligation to provide the grounds of his entitlement to relief "requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Id. The facts alleged "must be enough to raise a right to relief above the speculative level." Id. "[A] complaint needs some information about the circumstances giving rise to the claims." Aktieselskabet A F 21. Nov. 2001 v. Fame Jeans, Inc. , 525 F.3d 8, 16 n.4 (D.C. Cir. 2008). A complaint must contain sufficient factual matter to state a claim for relief that is "plausible on its face." Twombly , 550 U.S. at 570, 127 S.Ct. 1955. When a plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged, then the claim has facial plausibility. Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). "The plausibility standard is not akin to a ‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted unlawfully." Id. A court must treat the complaint's factual allegations as true, "even if doubtful in fact." Twombly , 550 U.S. at 555, 127 S.Ct. 1955. But a court need not accept as true legal conclusions set forth in a complaint. Iqbal , 556 U.S. at 678, 129 S.Ct. 1937.

In deciding a motion under Rule 12(b)(6), a court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits or incorporated by reference, and matters about which the court may take judicial notice. Abhe & Svoboda, Inc. v. Chao , 508 F.3d 1052, 1059 (D.C. Cir. 2007). Generally, when a court relies upon matters outside the pleadings, a motion to dismiss must be treated as one for summary judgment and disposed of pursuant to Rule 56. See Fed. R. Civ. P. 12(d). "However, where a document is referred to in the complaint and is central to the plaintiff's claim, such a document attached to the motion papers may be considered without converting the motion to one for summary judgment." Nat'l Shopmen Pension Fund v. Disa , 583 F.Supp.2d 95, 99 (D.D.C. 2008) (citation omitted).

The Court requested copies of the Ad and Times of Your Life , as they were incorporated by reference in the Amended Complaint. See Nov. 14, 2016 Minute Order. Both Plaintiffs and Defendant provided disks to the Court and objected to the notice and disk of the opposing party. See Notices and Objections [Dkts. 18–22]. As the Court will deny Defendant's motion to dismiss the copyright claim, the Court will also not decide which version of the Ad and song are appropriate to decide the issue of substantial similarity.

B. Copyright Infringement

To state a claim for copyright infringement, a plaintiff must allege facts showing that it owns a registered copyright and that the defendant has taken enough original elements protected by that copyright to create a substantially similar copy. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (ruling that plaintiff must prove "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original"). The second part of this standard gets complicated. Copying alone does not prove infringement; rather, "a plaintiff must establish actionable copying to prevail." Prunte v. Universal Music Group, Inc. , 699 F.Supp.2d 15, 22 (D.D.C. 2010) (Prunte II ). Both "actual copying and substantial similarity ... are clearly required, and the latter inquiry concerns whether actual copying is legally actionable." Sturdza v. United Arab Emirates , 281 F.3d 1287, 1295 (D.C. Cir. 2002).

When arguing that a copy has substantial similarity to the original work, a plaintiff must first identify which aspects of the work are protectable by copyright. " ‘[N]o author may copyright facts or ideas. The copyright is limited to those aspects of the work—termed "expression"—that display the stamp of the author's originality.’ " Id. (quoting Feist Publ'ns , 499 U.S. at 350, 111 S.Ct. 1282 ). Once the protectable elements of a work are identified, the comparison between those protectable elements and the challenged work can be done. See id. at 1296. " ‘Substantial similarity’ exists where ‘the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectable expression by taking material of substance and value.’ " Id. (citing Country Kids 'N City Slicks, Inc. v. Sheen , 77 F.3d 1280, 1288 (10th Cir. 1996) ).

The plaintiff's legally protected interest is ... his interest in the potential financial returns from his [work] which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ... lay ... audience ... that defendant wrongfully appropriated something which belongs to the plaintiff.

Id. (quoting Arnstein v. Porter , 154 F.2d 464, 473 (2d Cir. 1946) ). In determining substantial similarity, a jury compares "not only [ ] the two works' individual elements in isolation, but also [ ] their overall look and feel." Id. Works are substantially similar if the "ordinary observer" would overlook the differences between the two and "regard their aesthetic appeal as the same." Id. Because this test often involves "an extremely close question of fact, summary judgment has traditionally been frowned upon in copyright litigation." Id. (quoting A.A. Hoehling v. Universal City Studios, Inc. , 618 F.2d 972, 977 (2nd Cir. 1980) ); see also Prunte v. Universal Music Group , 484 F.Supp.2d 32, 41 (D.D.C. 2007) (Prunte...