explaining that “a fact-based inquiry requiring an examination of the products and markets at issue . . . cannot properly be dismissed on 12(b)(6) grounds”
How later courts described this case
- explaining that “a fact-based inquiry requiring an examination of the products and markets at issue . . . cannot properly be dismissed on 12(b)(6) grounds”
- finding that if the text clearly and unambiguously prohibits the alleged practices, “then the inquiry is complete, and the court should look no further”
- noting that the first-sale doctrine does not apply “when the notice that the item has been repackaged is inadequate” (citing Enesco Corp. v. Price/Costco Inc., 146 F.3d 1083, 1085-86 (9th Cir. 1998))
- concluding that phrase was ambiguous because the parties identified two “plausible readings”
Written by the judges who cited it.
The opinion
KENNEDY, Circuit Judge,
concurring in part and dissenting in part.
I agree with the majority that the activities alleged would constitute trademark infringement, and thus we should deny the 12(b)(6) motion as it pertains to the trademark claims. However, my reading of the statute corresponding to the copyright claim differs and leads me to conclude that the activities alleged would also give rise to an actionable copyright violation, and *375 thus this claim should also survive the motion to dismiss.
As § 109(a) provides for the legal sale of particular copies of phonorecords, § 109(b) appears only to prohibit the unauthorized rental, lease, or lending of such materials. I interpret the clause “in the case of a sound recording in the musical works embodied therein” to mean that, if a sound recording containing musical works is the object of the rental, lease, or lending, then the person engaging in such activities can only lawfully do so with the authorization of the owner of the copyright for the sound recording and the owner of the copyright for the musical works contained in the sound recording. Because there is no musical recording contained in the sound recording at issue here, this clause does not apply to this case. Since I do not read this provision pertaining to musical works to qualify the application of § 109(b) as a whole, I would find that the plaintiffs in this case have raised a claim of copyright violation, as the activities alleged, if true, would constitute rental, lease, or lending of a sound recording for commercial advantage without the authorization of the owner.
The majority’s analysis leads me to emphasize that, because I find that the language of the statute is not “inescapably ambiguous,” I do not feel it is necessary to examine the legislative history of § 109(b). See Garcia, 469 U.S. at 76 n. 3, 105 S.Ct. 479 . In 2005, the Supreme Court reflected upon its statutory interpretation jurisprudence, declaring, “[a]s we have repeatedly held, the authoritative statement is the statutory text, not the legislative history or any other extrinsic material.” Exxon Mobil Corp. v. Allapattah Servs. 545 U.S. 546 , 125 S.Ct. 2611, 2626 , 162 L.Ed.2d 502 (2005). The Court went on to cite “two serious criticisms” to which “legislative history in particular is vulnerable”:
First, legislative history is itself often murky, ambiguous, and contradictory. Judicial investigation of legislative history has a tendency to become, to borrow Judge Leventhal’s memorable phrase, an exercise in “ ‘looking over a crowd and picking out your friends.’ ” Second, judicial reliance on legislative materials ... may give unrepresentative committee members — or, worse yet, unelected staffers and lobbyists — both the power and the incentive to attempt strategic manipulations of legislative history to secure results they were unable to achieve through the statutory text.
Id. (citations omitted). Such dangers counsel against imputing the sentiments expressed in extrinsic materials as well as the original impetus for the passage of the statute to the meaning of its enacted form. Because I feel § 109(b) does not necessitate resort to legislative history to determine the section’s effect on petitioner’s copyright claim, and public policy generally counsels against this interpretive method, I would have this court deny the 12(b)(6) motion as it pertains to the copyright violation based upon a plain-language reading of § 109(b).