Petition for Writ of Certiorari — H&M Hennes & Mauritz, LP, Petitioner v. Malibu Textiles, Inc.

Supreme Court briefAug 29, 2019

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APPENDIX

TABLE OF CONTENTS

Appendix A Opinion in the United States Court of

Appeals for the Ninth Circuit

(April 24, 2019) . . . . . . . . . . . . . . . App. 1

Appendix B Order Granting Defendant H&M

Hennes & Mauritz L.P.’s Motion to

Dismiss in the United States District

Court Central District of California

(June 3, 2014) . . . . . . . . . . . . . . . App. 18

Appendix C Order Granting Defendant’s Motion to

Dismiss Plaintiff’s First Amended

Complaint in the United States

District Court Central District of

California

(June 29, 2017) . . . . . . . . . . . . . . App. 22

Appendix D Order Denying Defendant H&M

Hennes & Mauritz L.P.’s Motion for

Attorney’s Fees and Denying Plaintiff

Malibu Textiles, Inc.’s Motion for

Reconsideration in the United States

District Court Central District of

California

(July 22, 2014). . . . . . . . . . . . . . . App. 28

Appendix E Memorandum in the United States

Court of Appeals for the Ninth Circuit

(September 13, 2016) . . . . . . . . . App. 33

Appendix F Order Denying Petition for Rehearing

En Banc in the United States Court of

Appeals for the Ninth Circuit

(May 31, 2019). . . . . . . . . . . . . . . App. 37

Appendix G Statutory Provisions Involved . . App. 39

App. 1

APPENDIX A

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 17-55983

D.C. No. 2:14-cv-04054-R-MAN

[Filed April 24, 2019]

______________________________________

)

MALIBU TEXTILES, INC., a New York

corporation,

)

Plaintiff-Appellant,

)

LABEL LANE INTERNATIONAL, INC.,

)

a California Corporation; ENTRY, INC.,

)

DBA ALT B., a California Corporation, )

Defendants-Appellees.

)

______________________________________ )

No. 17-55984

D.C. No. 2:14-cv-01018-R-E

______________________________________

MALIBU TEXTILES, INC., a New York

)

corporation,

)

Plaintiff-Appellant,

)

H&M HENNES & MAURITZ, L.P.,

)

App. 2

a New York limited partnership,

Defendant-Appellee.

__________________________________

)

No. 17-56531

D.C. No. 2:14-cv-01018-R-E

___________________________________

MALIBU TEXTILES, INC.,

)

a New York corporation,

)

Plaintiff-Appellee,

)

H&M HENNES & MAURITZ, L.P.,

)

a New York limited partnership,

)

Defendant-Appellant.

)

___________________________________ )

OPINION

Appeals from the United States District Court

for the Central District of California

Manuel L. Real, District Judge, Presiding

Argued and Submitted January 7, 2019

Pasadena, California

Filed April 24, 2019

Before: A. Wallace Tashima and Paul J. Watford,

Circuit Judges, and Jack Zouhary,* District Judge.

Opinion by Judge Zouhary

The Honorable Jack Zouhary, United States District Judge for

the Northern District of Ohio, sitting by designation.

App. 3

SUMMARY**

The panel reversed the district court’s dismissal of

two copyright infringement actions, dismissed a crossappeal regarding attorney fees as moot, and remanded.

Malibu Textiles claimed that defendants infringed

its copyrights for two floral lace designs. The panel held

that, on remand following prior appeal, Malibu

sufficiently alleged ownership of valid, registered

copyrights. Malibu also successfully pled striking

similarity between its designs and defendants’ designs.

The panel further held that the district court abused its

discretion in denying Malibu leave to amend its

allegations of access for a theory of substantial

similarity.

The panel dismissed as moot one defendant’s crossappeal from the district court’s denial of its motion for

attorney fees.

COUNSEL

Stephen Doniger (argued), Frank Gregory Casella, and

Scott A. Burroughs, Doniger/Burroughs APC, Venice,

California, for Plaintiff-Appellant.

Neal J. Gauger (argued) and Staci Jennifer Riordan,

Nixon Peabody LLP, Los Angeles, California, for

Defendants-Appellees.

This summary constitutes no part of the opinion of the court. It

has been prepared by court staff for the convenience of the reader.

App. 4

OPINION

ZOUHARY, District Judge:

INTRODUCTION

Five years ago, Plaintiff-Appellant Malibu Textiles

filed these copyright infringement lawsuits against

Defendants-Appellees Label Lane International, Entry,

and H&M Hennes & Mauritz (collectively,

“Defendants”), accusing them of illegally copying

Malibu’s lace designs. And for five years, these cases

have languished at the pleading stage. The cases are

now before this Court for a second time, after the

district court again denied leave to amend and

dismissed with prejudice. We again reverse and

remand.

BACKGROUND

In 2014, Malibu sued Defendants for copyright

infringement. Malibu alleges it owns copyrights for two

lace designs, consisting of flowers, vines, leaves, and

other elements arranged in a pattern. Malibu refers to

these two designs collectively as the Subject Work and

alleges Defendants infringed on both.

The first appeal came after the district court

dismissed the cases with prejudice for failure to state

a claim. This Court reversed, stating that “[d]ismissal

with prejudice is appropriate only if the complaint

‘could not be saved by any amendment.’” Malibu

Textiles, Inc. v. Label Lane Int’l, Inc., 668 F. App’x 803,

803 (9th Cir. 2016) (quoting Leadsinger, Inc. v. BMG

Music Publ’g, 512 F.3d 522, 532 (9th Cir. 2008));

Malibu Textiles, Inc. v. H&M Hennes & Mauritz, L.P.,

App. 5

668 F. App’x 800, 801 (9th Cir. 2016) (same). This

Court concluded that Malibu could fix its Complaints

by adding more allegations of similarity between the

Subject Work and Defendants’ works and how

Defendants had access to the Subject Work. Label

Lane, 668 F. App’x at 803–04; H&M, 668 F. App’x at

801.

On remand, Malibu filed new Complaints1 with

additional similarity allegations, including side-by-side

photos of the Subject Work and Defendants’ works. But

the Malibu attorneys mistakenly omitted new access

allegations. When they realized their error, the parties

filed a joint stipulation seeking leave to file amended

versions of the post-remand Complaints. Malibu

included a declaration explaining the mistake and

provided the district court with redlined copies of the

new Complaints with the missing access allegations. In

a one-sentence, handwritten order, the district court

denied leave to amend: “Denied[,] no good cause is

shown.”

Defendants again moved to dismiss, and the district

court again dismissed with prejudice. The district court

determined that most of the similarities between

Malibu’s designs and Defendants’ designs consisted of

non-protectable elements, such as “the natural

appearance of a Bengal Clockvine flower.” The district

court identified differences in the side-by-side images,

concluding that the designs were not strikingly similar.

In the Label Lane case, Malibu filed its Second Amended

Complaint. In the H&M case, Malibu filed its First Amended

Complaint.

App. 6

The district court further held that Malibu failed to

plausibly allege access, without mentioning whether

the proposed amendments would have cured this

deficiency. H&M moved for attorney fees, which the

district court denied. These appeals followed.

DISCUSSION

This Court reviews dismissals under Federal Civil

Rule 12(b)(6) de novo, accepting the plaintiff’s

allegations as true and construing them in the light

most favorable to the plaintiff. Zucco Partners, LLC v.

Digimarc Corp., 552 F.3d 981, 989 (9th Cir. 2009). At

this stage, a complaint’s factual allegations need not be

detailed. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555

(2007). They “must be enough to raise a right to relief

above the speculative level” and to “state a claim to

relief that is plausible on its face.” Id. at 555, 570.

To state a claim for copyright infringement, Malibu

“must plausibly allege two things: (1) that [it] owns a

valid copyright in [the Subject Work], and (2) that

[Defendants] copied protected aspects of [the Subject

Work]’s expression.” Rentmeester v. Nike, Inc., 883 F.3d

1111, 1116–17 (9th Cir. 2018).

Ownership

Although the district court based its decision on the

copying element, Defendants argue this Court should

affirm because Malibu failed to allege ownership of a

registered copyright in the Subject Work. See Livid

Holdings Ltd. v. Salomon Smith Barney, Inc., 416 F.3d

940, 950 (9th Cir. 2005) (“This court can affirm the

district court’s dismissal on any ground supported by

the record, even if the district court did not rely on the

App. 7

ground.”). To plead ownership, Malibu must plausibly

allege it owns a valid copyright registration for its

work. See Unicolors, Inc. v. Urban Outfitters, Inc., 853

F.3d 980, 988 (9th Cir. 2017) (“[Plaintiff] was required

to show registration as an element of an infringement

claim.”); see also Fourth Estate Pub. Benefit Corp. v.

Wall-Street.com, LLC, 139 S. Ct. 881, 887 (2019)

(“[A]lthough an owner’s rights exist apart from

registration, registration is akin to an administrative

exhaustion requirement that the owner must satisfy

before suing to enforce ownership rights.”) (citations

omitted).

Malibu alleges it owns “two original twodimensional artworks”—Designs 1967 and 1717—

which are registered with the United States Copyright

Office under numbers VA 1-159-155 and VA9230008.

But Defendants argue that Malibu’s case is not based

upon either of these copyrights, but rather upon some

third work called the “Subject Work.”

Defendants mischaracterize Malibu’s allegations.

According to Malibu, Design 1967 derives from Design

1717. The designs are “essentially the same artwork”

with only “slight variations” due to differences in the

machinery used in production. The post-remand

Complaints allege that Malibu owns valid, registered

copyrights in both Design 1967 and Design 1717, and

that the infringement action is based on the original

artistic expression owned by Malibu and reflected in

both designs. Malibu is entitled to protect all

components of that artistic expression—both derivative

and original. See DC Comics v. Towle, 802 F.3d 1012,

1023–25 (9th Cir. 2015). Malibu plausibly alleges it

App. 8

owns registered copyrights for the artwork in Designs

1967 and 1717; its use of a shorthand label for that

artwork does not change that fact.

And contrary to Defendants’ assertions, Malibu was

not required to include images of Design 1717, a

complete deposit of Design 1967, or registration

materials for either Design in the Complaints to

plausibly allege ownership. See Rentmeester, 883 F.3d

at 1117–18. As for Defendants’ arguments about their

foreign copyright registrations, those defenses are

better suited for summary judgment. At the pleading

stage, Malibu successfully alleged ownership of valid,

registered copyrights.

Copying

To allege actionable copying, Malibu was required

to plead facts plausibly showing either (1) “that the two

works in question are strikingly similar,” or (2) “that

[the works] are substantially similar and that

[Defendants] had access to the [Subject Work].” Label

Lane, 668 F. App’x at 803 (citing Three Boys Music

Corp. v. Bolton, 212 F.3d 477, 481, 485 (9th Cir. 2000));

H&M, 668 F. App’x at 801 (same). Where two works

are strikingly similar, access may be inferred.

Unicolors, 853 F.3d at 987–88; see also Rentmeester,

883 F.3d at 1124 (“[I]f the similarities are ‘striking’

enough . . . such similarities can be sufficient on their

own to establish that the defendant must have had

access to the plaintiff’s work.”). Thus, a plaintiff must

separately plead access only when alleging substantial

similarity, not when alleging striking similarity. See,

e.g., Three Boys Music, 212 F.3d at 485; Baxter v. MCA,

Inc., 812 F.2d 421, 423–24 & n.2 (9th Cir. 1987); see

App. 9

also Astor-White v. Strong, 733 F. App’x 407, 407 (9th

Cir. 2018).

“In assessing whether particular works are

substantially similar, or strikingly similar, this Circuit

applies a two-part analysis: the extrinsic test and the

intrinsic test.” Unicolors, 853 F.3d at 985. At the

pleading stage, this Court considers only the extrinsic

test. See Williams v. Gaye, 895 F.3d 1106, 1119 (9th

Cir. 2018). The extrinsic test “is an objective

comparison of specific expressive elements; it focuses

on the articulable similarities between the two works.”

L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d

841, 848 (9th Cir. 2012) (internal quotation marks and

citation omitted). The extrinsic test consists of two

steps.

Step 1: Protectable Elements

First, the reviewing court “must ‘filter out’ the

unprotectable elements of the plaintiff’s work,”

Rentmeester, 883 F.3d at 1118 (citation omitted), and

determine the breadth of copyright protection for the

protectable elements, id. at 1120. Although certain

elements—like elements found in nature—may not be

protectable individually, “[o]riginal selection,

coordination, and arrangement” of unprotectable

elements may be protectable expression. L.A. Printex,

676 F.3d at 849. A combination of unprotectable

elements is eligible for copyright protection “if those

elements are numerous enough and their selection and

arrangement original enough that their combination

constitutes an original work of authorship.” Satava v.

Lowry, 323 F.3d 805, 811 (9th Cir. 2003).

App. 10

For protectable elements, this Court “distinguishe[s]

between ‘broad’ and ‘thin’ copyright protection based on

the ‘range of expression’ involved.” Williams, 895 F.3d

at 1120 (quoting Mattel, Inc. v. MGA Entm’t, Inc., 616

F.3d 904, 913–14 (9th Cir. 2010)). “[T]he greater the

range of creative choices that may be made, the

broader the level of protection that will be afforded to

the resulting [work].” Rentmeester, 883 F.3d at 1120.

“We review de novo the district court’s determination

as to the scope of copyright protection.” Mattel, 616

F.3d at 914 (citation omitted).

Here, although copyright law does not protect the

natural appearance of a Bengal Clockvine flower, see

Satava, 323 F.3d at 813, it does protect the original

“selection, coordination, and arrangement” of floral

elements in a lace pattern, Label Lane, 668 F. App’x at

803 (citing L.A. Printex, 676 F.3d at 850); H&M, 668 F.

App’x at 801 (same). The Subject Work’s copyright

protection is broad—not thin—because there is “‘a wide

range of expression’ for selecting, coordinating, and

arranging floral elements in stylized fabric designs.”

L.A. Printex, 676 F.3d at 850 (citation omitted). After

all, “there are gazillions of ways to combine petals,

buds, stems, leaves, and colors in floral designs on

fabric.” Id. at 850–51 (internal quotation marks and

citation omitted).

Step 2: Similarity Comparison

Second, the “protectable elements that remain are

then compared to corresponding elements of the

defendant’s work to assess similarities in the objective

details of the works.” Rentmeester, 883 F.3d at 1118.

“We do not have a well-defined standard for assessing

App. 11

when similarity in selection and arrangement becomes

‘substantial’” or striking, “and in truth no hard-andfast rule could be devised to guide determinations that

will necessarily turn on the unique facts of each case.”

Id. at 1121. “In comparing fabric designs, we examine

the similarities in their objective details in appearance,

including, but not limited to, the subject matter,

shapes, colors, materials, and arrangement of the

representations.” L.A. Printex, 676 F.3d at 849

(internal quotation marks and citation omitted).

Striking Similarity. The first question is whether

Malibu pled striking similarity, which would obviate

the need to plead access. Two works are strikingly

similar when the similarities between them are so

great that they are “highly unlikely to have been the

product of independent creation.” Rentmeester, 883

F.3d at 1124.

Here, the similarities between the lace patterns go

well beyond their mutual inclusion of the Bengal

Clockvine flower. The works contain nearly identical

floral, leaf, boteh, and dot elements, and those

elements are arranged in virtually the same way. The

post-remand Complaints state that the patterns are

“identically arranged” and that the elements “are

arranged exactly the same in relation to each other.”

They describe, in detail, some of the similarities

between the patterns. And most importantly, they

provide side-by-side pictures that make the similarities

apparent. See Appendix, infra.

To be sure, the pictures do show some minor

differences between the Subject Work and Defendants’

works, such as in color, netting, and shape curvature.

App. 12

“But a rational jury could find that these differences

result from the fabric-printing process generally and

are ‘inconsequential,’ or could credit [Malibu]’s

assertion that these differences result in part from

‘print[ing] using cruder, lower-quality techniques and

machinery.’” L.A. Printex, 676 F.3d at 851 (second

alteration in original) (citations omitted). Alternatively,

a jury could find these to be knowing modifications,

which could be evidence of willful copying. See Concord

Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d

1315, 1316 (2d Cir. 1969) (per curiam) (“While the trial

court placed great emphasis on the minor differences

between the two patterns, we feel that the very nature

of these differences only tends to emphasize the extent

to which the defendant has deliberately copied from the

plaintiff.”).

As for the differences pointed out by the district

court in its dismissal order, those appear to result from

the cropping and angle of the images rather than any

real differences in the designs. And to the extent

Defendants contend the similarities are “required by

the medium of lace” and are merely “functional

choices . . . dictated by the lace medium,” those

arguments are better suited for summary judgment,

after discovery and perhaps with the aid of expert

testimony. For this stage, Malibu successfully pled

striking similarity in the post-remand Complaints, and

the district court erred in dismissal on this ground.

Substantial Similarity. But striking similarity was

not the only theory Malibu sought to plead. The next

question is whether the district court erred in denying

Malibu leave to amend its access allegations for a

App. 13

theory of substantial similarity. This Court reviews

denial of leave to amend for abuse of discretion.

Gompper v. VISX, Inc., 298 F.3d 893, 898 (9th Cir.

2002). “Dismissal without leave to amend is improper

unless it is clear, upon de novo review, that the

complaint could not be saved by any amendment.” Id.

(citation omitted). “An outright refusal to grant leave to

amend without a justifying reason is . . . an abuse of

discretion.” Manzarek v. St. Paul Fire & Marine Ins.

Co., 519 F.3d 1025, 1034 (9th Cir. 2008) (citation

omitted).

When pleading substantial similarity, a copyright

infringement plaintiff “must allege facts ‘from which a

reasonable finder of fact could infer that the defendant

had a reasonable opportunity to copy his or her work.’”

Shame on You Prods., Inc. v. Banks, 120 F. Supp. 3d

1123, 1149 (C.D. Cal. 2015) (citation omitted), aff’d,

690 F. App’x 519 (9th Cir. 2017); see also L.A. Printex,

676 F.3d at 846 (“Proof of access requires ‘an

opportunity to view or to copy plaintiff’s work.’”)

(citation omitted). As the prior Panel instructed,

Malibu could meet this pleading requirement by

alleging “a chain of events that linked the protected

pattern with the allegedly infringing patterns, or

provid[ing] sales figures accompanied by dates and

geographic distribution information plausibly showing

access via widespread dissemination.” Label Lane, 668

F. App’x at 804; see also H&M, 668 F. App’x at 801.

Here, the proposed amended Complaints allege

several ways Defendants had access to the Subject

Work. Malibu first alleges that Defendants do business

in California and that they had access to the Subject

App. 14

Work through Malibu’s California showrooms. Malibu

next states that, since 1998, it has produced

“approximately 1 million yards of lace bearing the

Subject Work,” which have been manufactured in “over

twenty mills, including numerous mills in China.”

Those mills’ libraries of patterns, containing the

Subject Work, have since been acquired by other mills,

who in turn “have offered those patterns to customers

without regard to whether those patterns were

protected by copyright law.” Malibu further alleges that

its customers have “sold garments and other products

featuring the Subject Work . . . in the same markets

(domestically and internationally) as Defendants.”

Finally, Malibu specifies several clothing retailers

“operating in the same market as Defendants” that

collectively “have sold hundreds of thousands of

garments featuring reproductions of the Subject Work.”

These allegations, taken as true, plausibly allege

Defendants had reasonable opportunities to view the

Subject Work. See L.A. Printex, 676 F.3d at 848. The

proposed amendments would have sufficiently alleged

access. The district court thus abused its discretion by

denying leave to amend.

Attorney Fees

In its cross-appeal, H&M argues the district court

erred in denying its motion for attorney fees. Because

of the district court errors, H&M is no longer a

prevailing party eligible for attorney fees under 17

U.S.C. § 505, making its cross-appeal moot. See Electro

Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458

F.3d 931, 941 (9th Cir. 2006).

App. 15

CONCLUSION

It is the responsibility of “the court and the parties

to secure the just, speedy, and inexpensive

determination of every action and proceeding.” Federal

Civil Rule 1. This aspirational goal was not achieved in

these cases. This latest round of appeals added nearly

two years to cases that were already three years old.

And these cases have not advanced beyond the initial

pleading stage. Direction from the earlier appeals was

disregarded, as were the parties’ stipulations to allow

amendments to the Complaints. This Court reverses

the dismissal of the Complaints and remands to allow

the cases to proceed consistent with this Opinion.

The district court judgments in Case Nos. 17-55983

and 17-55984 are REVERSED and REMANDED.

The cross-appeal in Case No. 17-56531 is DISMISSED

as moot.

App. 16

APPENDIX

SUBJECT WORK

LABEL LANE

PATTERN

App. 17

SUBJECT WORK

H&M PATTERN

App. 18

APPENDIX B

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CASE NO. CV 14-01018-R

[Filed June 3, 2014]

______________________________________

MALIBU TEXTILES, INC., a New York )

Corporation,

)

Plaintiff,

)

H&M HENNES & MAURITZ L.P.,

)

a New York Limited Partnership;

)

and DOES 1–10,

)

Defendants.

)

______________________________________ )

ORDER GRANTING DEFENDANT

H&M HENNES & MAURITZ L.P.’s

MOTION TO DISMISS

Plaintiff Malibu Textiles, Inc. (“Malibu”), on

February 10, 2014, filed a copyright and contributory

Hennes & Mauritz L.P. (“H&M”). H&M filed a motion

to dismiss Malibu’s Complaint on March 25, 2014.

Having been thoroughly briefed by both parties, this

App. 19

Court took the matter under submission on May 6,

2014.

On a motion to dismiss, the trial court takes all

well-pleaded facts in the complaint to be true and

determines whether, based upon those facts, the

complaint states a claim upon which relief may be

granted. Fed. R. Civ. P. 12(b)(6). See Alperin v. Vatican

Bank, 410 F.3d 532, 541 (9th Cir. 2005). To state a

claim, the complaint must contain factual assertions

that make the claimed relief not merely possible, but

“plausible.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009);

Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570

(2007). Although factual assertions are taken as true,

the court does not accept legal conclusions as true. Id.

A motion to dismiss tests the legal sufficiency of the

claims alleged in the complaint. See Cairns v. Franklin

Mint Co., 24 F. Supp. 2d 1013, 1023 (C.D. Cal. 1998). A

claim is properly dismissed for “lack of a cognizable

legal theory,” “absence of sufficient facts alleged under

a cognizable legal theory,” or seeking remedies to which

plaintiff is not entitled as a matter of law. Balistreri v.

Pacifica Police Dept., 901 F.2d 696, 699 (9th Cir. 1988);

King v. California, 784 F.2d 910, 913 (9th Cir. 1986).

To sustain an action for copyright infringement the

plaintiff must plead either a copyright registration

number or allege it submitted an application to the

U.S. 154, 166 (2010). Malibu has failed to plead

ownership with a copyright registration and had failed

this basic requirement to sustain an action.

App. 20

A plaintiff must allege that the infringer either had

access to the plaintiff’s work or that it was widely

disseminated. Nimmer & Nimmer, NIMMER ON

have direct access to its work, nor has Malibu pled

facts sufficient to show the work was widely

disseminated.

In a copyright case based on substantial similarity,

a plaintiff must plead the “sources of alleged

similarity.” Apple Computer, Inc. v. Microsoft Corp., 35

F.3d 1435, 1443 (9th Cir. 2002). To state a claim for

substantial-similarity both an extrinsic and intrinsic

test must be met. Funky Films, Inc. v. Time Warner

Entertainment Co., L.P., 462 F.3d 1072, 1077 (9th Cir.

2006). The extrinsic test focuses on “articulable

similarities” between the works. Id. If a plaintiff cannot

satisfy the extrinsic test, the complaint will be

dismissed. Campbell v. The Walt Disney Co., 718

F. Supp. 2d 1108, 1116 (N. D. Cal 2010). Malibu has

failed to allege any protectable elements that are

substantially similar between Malibu’s work and

H&M’s allegedly infringing shirt. The allegation that

the works are substantially similar is a mere legal

conclusion.

Further, Malibu has not proved any factual basis for

its claim that H&M is liable for contributory infringed

its copyright. Malibu conceded that there is no other

defendant that H&M could have helped to infringe

Malibu’s work.

Dismissal with prejudice is appropriate when

further amendment would be futile. Leadsinger, Inc. v.

BMG Music Publ’g, 512 F.3d 522, 532 (9th Cir. 2008).

App. 21

Here, because Malibu has not provided any factual

basis for its bare legal conclusions, further amendment

would be futile. Thus dismissal with prejudice is

appropriate.

IT IS HEREBY ORDERED that defendant H&M’s

motion to dismiss is GRANTED with prejudice.

Dated: June 3, 2014.

s/__________________________________

MANUEL L. REAL

UNITED STATES DISTRICT JUDGE

App. 22

APPENDIX C

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CASE NO. CV 14-1018-R

[Filed June 29, 2017]

______________________________________

MALIBU TEXTILES, INC., a New York )

Corporation,

)

Plaintiff,

)

H&M HENNES & MAURITZ L.P.,

)

a New York Limited Partnership;

)

and DOES 1 through 10,

)

Defendants.

)

______________________________________ )

ORDER GRANTING DEFENDANT’S MOTION TO

DISMISS PLAINTIFF’S FIRST AMENDED

COMPLAINT

Before the Court is Defendant H&M Hennes &

Mauritz’s (“H&M”) Motion to Dismiss (Dkt. No. 51)

which was filed on March 15, 2017. Having been fully

briefed, this Court took the matter under submission

on April 26, 2017.

App. 23

Dismissal under Federal Rule of Civil Procedure

12(b)(6) is proper when a complaint exhibits either “the

lack of a cognizable legal theory or the absence of

sufficient facts alleged under a cognizable legal theory.”

Balistreri v. Pacifica Police Dept., 901 F.2d 696, 699

(9th Cir. 1988). Under the heightened pleading

standards of Bell Atlantic Corp. v. Twombly, 550 U.S.

544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009),

a plaintiff must allege “enough facts to state a claim to

relief that is plausible on its face,” so that the

defendant receives “fair notice of what the…claim is

and the grounds upon which it rests.” Twombly, 550

U.S. at 570. The plaintiff must plead factual content

that allows the court to draw the reasonable inference

that the defendant is liable for the misconduct alleged.

Iqbal, 556 U.S. at 678. Courts will not accept

“threadbare recitals of the elements of a cause of

action, supported by mere conclusory statements. . . .”

Id. “All allegations of material fact are taken as true

and construed in the light most favorable to the

nonmoving party.” Sprewell v. Golden State Warriors,

266 F.3d 979, 988 (9th Cir. 2001) (citation omitted).

This matter is before the Court after being

remanded from the Ninth Circuit with instructions to

allow Plaintiff to amend its complaint. Previously, this

Court granted a motion to dismiss the Complaint. (Dkt.

No. 17). The Ninth Circuit held that the Complaint

failed to state a claim for copyright infringement, but

that the Plaintiff should be given the opportunity to

amend. Plaintiff was given the opportunity to amend

and now H&M comes before the Court to dismiss First

Amended Complaint (“FAC”). The FAC states one

cause of action, copyright infringement.

App. 24

To state a claim for copyright infringement, a

Plaintiff must plead “(1) ownership of a valid copyright,

and (2) copying of constituent elements of the work

that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv.

Co., Inc., 499 U.S. 340, 361 (1991). A plaintiff may

establish copying by direct evidence or circumstantial

evidence “(1) that the defendant had access to the

plaintiff’s work and (2) that the two works are

substantially similar.” L.A. Printex Indus., Inc. v.

Aeropostale, Inc., 676 F.3d 841, 846 (9th Cir. 2012). If

a complaint fails to allege access, its copyright claim

may be saved if it alleges a striking similarity between

the two works. See Three Boys Music Corp. v. Bolton,

212 F.3d 477, 485 (9th Cir. 2000). Here, Plaintiff failed

to plead access and striking similarity. For the reasons

discussed below, the Motion is granted.

“Proof of access requires an opportunity to view or

to copy [the] plaintiff’s work.” Id. at 482 (internal

quotation and citation omitted). A plaintiff must

demonstrate “a reasonable possibility, not merely a

bare possibility, that an alleged infringer had the

chance to view the protected work.” Art Attacks Ink,

LLC v. MGA Entm’t Inc., 581 F.3d 1138, 1143 (9th Cir.

2009). There are two ways to allege access:

“(1) establishing a chain of events linking the plaintiff’s

work and the defendant’s access or (2) showing that the

plaintiff’s work has been widely disseminated.” Id.

The FAC and complaint contain virtually identical

allegations regarding access. The FAC alleges that

Defendants had access to the Subject Work via

Plaintiff’s showroom, illegally distributed copies of the

Subject Work by third parties, access to Plaintiff’s

App. 25

samples, and access to garments legally in the

marketplace containing the Subject Work. (FAC ¶ 21).

These allegations are not materially different than

those previously dismissed by this Court and upheld by

the Ninth Circuit. Such conclusory allegations are

nothing more than a speculative list of guesses as to

how Defendants may have accessed the Subject Work.

In fact, these are the same allegations rejected by the

court in Star Fabrics, Inc. v. Wet Seal, Inc., due to their

lack of “any concrete facts specifically linking the

[Defendant] to the protected design.” 2014 WL

12591271, at *4 (C.D. Cal. Dec. 2, 2014). Similarly,

Plaintiff fails to allege widespread dissemination in the

FAC. There are no allegations relating to distribution

in the FAC. Accordingly, Plaintiff’s FAC fails to allege

a plausible claim of access.

The test for substantial similarity entails an

extrinsic and intrinsic test. On a motion to dismiss,

however, courts only consider the extrinsic test. See

Funky Films, Inc. v. Time Warner Entm’t Co., L.P., 462

F.3d 1072, 1077 (9th Cir. 2006). “The extrinsic test is

an objective comparison of specific expressive elements;

it focuses on the articulable similarities between the

two works.” L.A. Printex Indus., Inc., 676 F.3d at 848

(internal quotations and citation omitted). When

applying the extrinsic test, courts must distinguish

between protectable and non-protectable elements of

the protected work and consider only whether the

protectable elements are substantially or strikingly

similar. Id.

Here, the protectable elements of the Subject Work

include the arrangement, selection, coordination of the

App. 26

Bengal Clockvine flower featured in the lace design.

However, the “floral pattern depicting bouquets and

branches is not protectible [sic]” nor is the

“combination of open flowers and closed buds in a

single bouquet or the green color of stems and leaves.”

Id. at 850. The Subject Work contains both protectable

and non-protectable elements. The majority of the

similarity between the Subject Work and the allegedly

infringing work come from non-protectable elements.

For example, Plaintiff alleges that the five-petaled

flower in both works contain the same leaf elements

with the same patterns and indentations in the petals.

The flower and its petals are non-protectable because

they are merely the natural appearance of a Bengal

Clockvine flower. The Bengal Clockvine flower contains

five-petal leaf elements with indentations at the tips of

each petal in its natural form. The non-protectable fivepetal flowers make up the majority of the similarities

between the two works. Plaintiff does point to

additional similarities, but like the Bengal Clockvine,

most are non-protectable. Furthermore, there are

objective differences between the two works. For

example, the two pictures examined in Paragraph 12 of

the FAC reveal marked differences. The Subject Work

contains thicker, more sloped boteh shapes to the left

of the image whereas the Defendant’s design contain

thin, more vertical boteh shapes. Additionally, the lace

netting is much tighter in the Subject Work than in the

Defendant’s design. Accordingly, the Court finds that

the two works do not contain strikingly similar

protectable elements. As such, the FAC has failed to

allege copying.

App. 27

Because the FAC fails to plead access and striking

similarity, it has not stated a legally cognizable claim

for copyright infringement. Accordingly, dismissal is

appropriate under Rule 12(b)(6).

IT IS HEREBY ORDERED that Defendant’s

Motion to Dismiss (Dkt. No. 37) is GRANTED.

Dated: June 29, 2017.

s/__________________________________

MANUEL L. REAL

UNITED STATES DISTRICT JUDGE

App. 28

APPENDIX D

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CASE NO. CV 14-01018-R

[Filed July 22, 2014]

______________________________________

MALIBU TEXTILES, INC., a New York )

Corporation,

)

Plaintiff,

)

H&M HENNES & MAURITZ L.P.,

)

a New York Limited Partnership;

)

and DOES 1–10,

)

Defendants.

)

______________________________________ )

ORDER DENYING DEFENDANT H&M HENNES &

MAURITZ L.P.’s MOTION FOR ATTORNEY’S FEES

AND DENYING PLAINTIFF MALIBU TEXTILES,

INC.’S MOTION FOR RECONSIDERATION

Plaintiff Malibu Textiles, Inc. (“Malibu”), on

February 10, 2014, filed a copyright and contributory

Hennes & Mauritz L.P. (“H&M”). H&M filed a motion

to dismiss Malibu’s Complaint on March 25, 2014. On

App. 29

June 3, 2014, this Court dismissed Malibu’s complaint

with prejudice. Subsequently, on June 16, 2014, Malibu

filed a motion for reconsideration. On June 17, 2014,

H&M filed a motion for attorney’s fees. Having been

thoroughly briefed by both parties, this Court took the

matters under submission on July 11, 2014.

I. Motion for Reconsideration

Reconsideration of an order is appropriate when the

court has committed clear error. Kona Enters., Inc. v.

Estate of Bishop, 229 F.3d 877, 890 (9th Cir. 2000).

Malibu argues that it can cure all the defects in its

complaint, and should have been granted leave to

amend. Malibu does not move for reconsideration

under any of the rules of procedure, but under the

court’s inherent authority to amend its orders.

Malibu failed to plead the most basics elements of

any copyright infringement suit. Malibu failed to plead

a valid copyright ownership, Malibu admitted H&M

had no direct access to its work, Malibu failed to allege

how the works were substantially similar, and Malibu

failed to allege any other defendant in connection with

its contributory and vicarious liability copyright

infringement claim.

The standard for a complaint to survive a motion to

dismiss is well settled: the trial court takes all

well-pleaded facts in the complaint to be true and

determines whether, based upon those facts, the

complaint states a claim upon which relief may be

granted. Fed. R. Civ. P. 12(b)(6). See Alperin v. Vatican

Bank, 410 F.3d 532, 541 (9th Cir. 2005). To state a

claim, the complaint must contain factual assertions

App. 30

that make the claimed relief not merely possible, but

“plausible.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009);

Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570

(2007). Although factual assertions are taken as true,

the court does not accept legal conclusions as true. Id.

Dismissal with prejudice is appropriate when further

amendment would be futile. Leadsinger, Inc. v. BMG

Music Publ’g, 512 F.3d 522, 532 (9th Cir. 2008).

A plaintiff must allege that the infringer either had

access to the plaintiff’s work or that it was widely

disseminated. Nimmer & Nimmer, NIMMER ON

have direct access to its work. Further, Malibu pled no

facts that the work was widely disseminated, merely

that they had sent out copies of the pattern in a pattern

book to people other than H&M. It is well settled that

this does not make a work widely disseminated, if

Malibu had any facts to support this, they would have

been included in the complaint.

Instead, Malibu relied on how similar the works

allegedly are. This is inapposite, when the work is a

pattern of the naturally occurring clockvine flower.

Naturally occurring depictions and features are not

copyrightable, thus Malibu’s copyright is “thin” and

does not extend to the natural features of the clockvine

flower. See Satava v. Lowry, 323 F. 3d 805, 811–12 (9th

Cir. 2003). Given this along with predating (to Malibu’s

failure to plead direct access is fatal.

Moreover, given the thin copyright given to

depictions of nature, even ignoring the extensive public

domain clockvine patterns, the failure to plead

App. 31

substantial similarity is even more egregious. The

patterns are not actually the same despite Malibu’s

claim that H&M’s is an exact replica. Malibu’s pattern

is two-tone, H&M’s pattern has one tone. The stigmas

of the clockvine flower are shaped differently. The

vines themselves are shaped differently, and the

spacing between the various elements are of different

proportions. Malibu’s pattern has vine segments that

are not in H&M’s pattern. They are clearly not exact or

identical as Malibu bare legal assertion claims. Malibu

failed to plead substantial similarity, because once the

uncopyrightable depictions of nature and public domain

elements of its work are removed, there is little left.

Taking the facts in Malibu’s complaint as true,

Malibu cannot cure its complaint so granting leave to

amend would be futile. Unless Malibu is now claiming

that it will assert facts inconsistent with its initial

complaint, Malibu will not be able to show access, nor

be allowed to draw an inference as such because of thin

nature of its copyright.

II. Motion for Attorney’s Fees

The Copyright Act, 17 U.S.C. § 505, provides that

the court may award a reasonable attorney’s fee to the

prevailing party. This provision has two steps:

(1) deciding whether an award of attorney’s fees is

appropriate; and (2) calculating the amount of fees to

be awarded. Traditional Cat Ass’n v. Gilbreath, 340

F. 3d 829, 832–33 (9th Cir. 2003). Factors to be

considered in determining whether attorney’s fees are

appropriate are: (1) the degree of success;

(2) frivolousness of the claim; (3) motivation of the

claim; (4) objective reasonableness; and (5) the need to

App. 32

advance the considerations of compensation and

deterrence. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534

(1994).

There is no evidence that Malibu’s motivation was

improper in this case. Malibu’s refusal to settle the

case early on, is not itself evidence of bad faith.

Further, defendant H&M has benefitted from Malibu’s

poor complaint in that H&M was able to achieve

dismissal of the suit early in the case. This Court finds

that because H&M was able to resolve this case before

summary judgment and a lack of demonstrated bad

faith or egregious conduct on behalf of Malibu,

attorney’s fees are not appropriate in this case.

IT IS HEREBY ORDERED that plaintiff Malibu’s

motion for reconsideration is DENIED.

IT IS HEREBY FURTHER ORDERED that

defendant H&M’s motion to for attorney’s fees is

DENIED.

Dated: July 22, 2014.

s/__________________________________

MANUEL L. REAL

UNITED STATES DISTRICT JUDGE

App. 33

APPENDIX E

NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 14-56203

D.C. No. 2:14-cv-01018-R-E

[Filed September 13, 2016]

______________________________________

MALIBU TEXTILES, INC., a New York )

corporation,

)

Plaintiff-Appellant,

)

H&M HENNES & MAURITZ, L.P.,

)

a New York limited partnership,

)

Defendant-Appellee.

)

______________________________________ )

App. 34

No. 14-56253

D.C. No. 2:14-cv-01018-R-E

___________________________________

MALIBU TEXTILES, INC.,

)

a New York corporation,

)

Plaintiff-Appellee,

)

H&M HENNES & MAURITZ, L.P.,

)

a New York limited partnership,

)

Defendant-Appellant.

)

___________________________________ )

MEMORANDUM*

Appeal from the United States District Court

for the Central District of California

Manuel L. Real, District Judge, Presiding

Argued and Submitted September 1, 2016

Pasadena, California

Before:

SILVERMAN, IKUTA, and WATFORD,

Circuit Judges.

1. The district court erred by granting H&M’s

motion to dismiss with prejudice. Although Malibu did

not plead sufficient facts to state a claim for copyright

infringement, the district court abused its discretion by

denying Malibu the opportunity to amend its

complaint. Dismissal with prejudice is appropriate

This disposition is not appropriate for publication and is not

precedent except as provided by Ninth Circuit Rule 36-3.

App. 35

only if the complaint “could not be saved by any

amendment.” Leadsinger, Inc. v. BMG Music Publ’g,

512 F.3d 522, 532 (9th Cir. 2008). Here, that is not the

case.

To state a claim for copyright infringement, Malibu

first had to allege facts plausibly showing ownership of

a valid copyright. See Sid & Marty Krofft Television v.

McDonald’s Corp., 562 F.2d 1157, 1162 (9th Cir. 1977).

The district court held that Malibu failed to plausibly

allege ownership because it did not include a copyright

registration number in its complaint. Assuming for the

sake of argument that the registration number must be

pleaded in the complaint, Malibu’s failure to do so

cannot be deemed fatal. Malibu could of course have

amended the complaint to include the copyright

registration number.

Malibu next had to allege facts plausibly showing

that H&M copied the protected elements in Malibu’s

work. Three Boys Music Corp. v. Bolton, 212 F.3d 477,

481 (9th Cir. 2000). A plaintiff may satisfy this

element by showing either that the two works in

question are strikingly similar, or by showing that they

are substantially similar and that the defendant had

access to the plaintiff’s work. Id. at 481, 485. In the

absence of direct evidence of access, a plaintiff can

show that a chain of events linked the protected work

to the defendant, or that the work had been widely

disseminated. Id. at 482. Malibu’s complaint did not

adequately allege copying of a protected work under

any of these theories.

However, Malibu potentially could have amended

its complaint to cure this deficiency in several ways.

App. 36

To allege striking or substantial similarity, Malibu

could have described the pattern’s protectible

elements—such as the selection, coordination, and

arrangement of flowers, leaves, and branches—and

identified those same elements in H&M’s garment,

perhaps with reference to photos showing a

side-by-side comparison of the works. See L.A. Printex

Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 850 (9th

Cir. 2012). To allege access, Malibu could have pleaded

facts showing a chain of events that linked the pattern

with H&M, or provided sales figures accompanied by

dates and geographic distribution information

plausibly showing access via widespread dissemination.

Because these allegations could cure the complaint’s

deficiencies, the district court’s conclusion that

amendment would be futile was incorrect.

2. We affirm the district court’s denial of H&M’s

motion for attorney’s fees. Because H&M is no longer

a prevailing party at this stage of the litigation, it is

not eligible for attorney’s fees under 17 U.S.C. § 505.

See Electro Source, LLC v. Brandess-Kalt-Aetna Group,

Inc., 458 F.3d 931, 941 (9th Cir. 2006).

AFFIRMED in part, REVERSED in part, and

REMANDED.

The parties shall bear their own costs on appeal.

App. 37

APPENDIX F

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 17-55984

D.C. No. 2:14-cv-01018-R-E

Central District of California, Los Angeles

[Filed May 31, 2019]

______________________________________

MALIBU TEXTILES, INC., a New York )

corporation,

)

Plaintiff-Appellant,

)

H&M HENNES & MAURITZ, L.P.,

)

a New York limited partnership,

)

Defendant-Appellee.

)

______________________________________ )

ORDER

Before: TASHIMA and WATFORD, Circuit Judges, and

ZOUHARY,* District Judge.

The Honorable Jack Zouhary, United States District Judge for

the Northern District of Ohio, sitting by designation.

App. 38

Judge Watford votes to deny the petition for

rehearing en banc, and Judges Tashima and Zouhary

so recommend. The full court has been advised of the

petition for rehearing en banc, and no judge requested

a vote on whether to rehear the matter en banc. Fed. R.

App. P. 35. The petition for rehearing en banc, filed

May 8, 2019, is DENIED.

App. 39

APPENDIX G

STATUTORY PROVISIONS INVOLVED

17 U.S.C. § 102. Subject matter of copyright: In

general

(a) Copyright protection subsists, in accordance with

this title, in original works of authorship fixed in any

tangible medium of expression, now known or later

developed, from which they can be perceived,

reproduced, or otherwise communicated, either directly

or with the aid of a machine or device. Works of

authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

(b) In no case does copyright protection for an original

work of authorship extend to any idea, procedure,

process, system, method of operation, concept,

principle, or discovery, regardless of the form in which

App. 40

it is described, explained, illustrated, or embodied in

such work.

17 U.S.C. § 103. Subject matter of copyright:

Compilations and derivative works

(a) The subject matter of copyright as specified by

section 102 includes compilations and derivative works,

but protection for a work employing preexisting

material in which copyright subsists does not extend to

any part of the work in which such material has been

used unlawfully.

(b) The copyright in a compilation or derivative work

extends only to the material contributed by the author

of such work, as distinguished from the preexisting

material employed in the work, and does not imply any

exclusive right in the preexisting material. The

affect or enlarge the scope, duration, ownership, or

subsistence of, any copyright protection in the

preexisting material.

17 U.S.C. § 104. Subject matter of copyright:

National origin

(a) Unpublished Works.—The works specified by

sections 102 and 103, while unpublished, are subject to

protection under this title without regard to the

nationality or domicile of the author.

(b) Published Works.—The works specified by sections

102 and 103, when published, are subject to protection

under this title if—

App. 41

(1) on the date of first publication, one or more of the

authors is a national or domiciliary of the United

States, or is a national, domiciliary, or sovereign

authority of a treaty party, or is a stateless person,

wherever that person may be domiciled; or

(2) the work is first published in the United States or

in a foreign nation that, on the date of first publication,

is a treaty party; or

(3) the work is a sound recording that was first fixed in

a treaty party; or

(4) the work is a pictorial, graphic, or sculptural work

that is incorporated in a building or other structure, or

an architectural work that is embodied in a building

and the building or structure is located in the United

States or a treaty party; or

(5) the work is first published by the United Nations or

any of its specialized agencies, or by the Organization

of American States; or

(6) the work comes within the scope of a Presidential

proclamation. Whenever the President finds that a

particular foreign nation extends, to works by authors

who are nationals or domiciliaries of the United States

or to works that are first published in the United

States, copyright protection on substantially the same

basis as that on which the foreign nation extends

protection to works of its own nationals and

domiciliaries and works first published in that nation,

the President may by proclamation extend protection

under this title to works of which one or more of the

authors is, on the date of first publication, a national,

domiciliary, or sovereign authority of that nation, or

App. 42

which was first published in that nation. The President

may revise, suspend, or revoke any such proclamation

or impose any conditions or limitations on protection

under a proclamation.

For purposes of paragraph (2), a work that is published

in the United States or a treaty party within 30 days

after publication in a foreign nation that is not a treaty

party shall be considered to be first published in the

United States or such treaty party, as the case may be.

a work eligible for protection under this title may be

claimed by virtue of, or in reliance upon, the provisions

of the Berne Convention, or the adherence of the

United States thereto. Any rights in a work eligible for

protection under this title that derive from this title,

other Federal or State statutes, or the common law,

shall not be expanded or reduced by virtue of, or in

reliance upon, the provisions of the Berne Convention,

or the adherence of the United States thereto.

(d) Effect of Phonograms Treaties.—Notwithstanding

the provisions of subsection (b), no works other than

sound recordings shall be eligible for protection under

this title solely by virtue of the adherence of the United

States to the Geneva Phonograms Convention or the

WIPO Performances and Phonograms Treaty.

App. 43

17 U.S.C. § 501. Infringement of copyright

(a) Anyone who violates any of the exclusive rights of

the copyright owner as provided by sections 106

through 122 or of the author as provided in section

106A(a), or who imports copies or phonorecords into the

United States in violation of section 602, is an infringer

of the copyright or right of the author, as the case may

be. For purposes of this chapter (other than section

506), any reference to copyright shall be deemed to

include the rights conferred by section 106A(a). As used

in this subsection, the term “anyone” includes any

State, any instrumentality of a State, and any officer or

employee of a State or instrumentality of a State acting

in his or her official capacity. Any State, and any such

instrumentality, officer, or employee, shall be subject

to the provisions of this title in the same manner and

to the same extent as any nongovernmental entity.

(b) The legal or beneficial owner of an exclusive right

under a copyright is entitled, subject to the

requirements of section 411, to institute an action for

any infringement of that particular right committed

while he or she is the owner of it. The court may

require such owner to serve written notice of the action

with a copy of the complaint upon any person shown,

by the records of the Copyright Office or otherwise, to

have or claim an interest in the copyright, and shall

require that such notice be served upon any person

whose interest is likely to be affected by a decision in

the case. The court may require the joinder, and shall

permit the intervention, of any person having or

claiming an interest in the copyright.

App. 44

that embodies a performance or a display of a work

which is actionable as an act of infringement under

subsection (c) of section 111, a television broadcast

station holding a copyright or other license to transmit

or perform the same version of that work shall, for

purposes of subsection (b) of this section, be treated as

a legal or beneficial owner if such secondary

transmission occurs within the local service area of

that television station.

(d) For any secondary transmission by a cable system

that is actionable as an act of infringement pursuant to

section 111(c)(3), the following shall also have standing

to sue: (i) the primary transmitter whose transmission

has been altered by the cable system; and (ii) any

broadcast station within whose local service area the

secondary transmission occurs.

(e) With respect to any secondary transmission that is

made by a satellite carrier of a performance or display

of a work embodied in a primary transmission and is

actionable as an act of infringement under section

119(a)(5),[1] a network station holding a copyright or

other license to transmit or perform the same version

of that work shall, for purposes of subsection (b) of this

section, be treated as a legal or beneficial owner if such

secondary transmission occurs within the local service

area of that station.

(f)

(1) With respect to any secondary transmission that is

made by a satellite carrier of a performance or display

of a work embodied in a primary transmission and is

App. 45

actionable as an act of infringement under section 122,

a television broadcast station holding a copyright or

other license to transmit or perform the same version

of that work shall, for purposes of subsection (b) of this

section, be treated as a legal or beneficial owner if such

secondary transmission occurs within the local market

of that station.

(2) A television broadcast station may file a civil action

against any satellite carrier that has refused to carry

television broadcast signals, as required under section

122(a)(2), to enforce that television broadcast station’s

rights under section 338(a) of the Communications Act

of 1934.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.