-SS Richard Reinsdorf v. Skechers U.S.A., Inc. et al, No. 2:2010cv07181 - Document 28 (C.D. Cal. 2011)
Court Description: ORDER DENYING Defendants' Motion to Dismiss 14 by Judge Dean D. Pregerson. There is a triable issue of fact as to Reinsdorfs intent and the existence of a joint work. Accordingly, the Motion to Dismiss, which the court treats as a motion for summary judgment, is DENIED. (See Order for Details). (sch)
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-SS Richard Reinsdorf v. Skechers U.S.A., Inc. et al Doc. 28 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 RICHARD REINSDORF, an individual, 12 Plaintiff, 13 v. 14 15 16 17 SKECHERS U.S.A, a Delaware corporation; SKECHERS U.S.A.., INC., II, a Delaware corporation, Defendants. ___________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 10-07181 DDP (SSx) ORDER DENYING DEFENDANTS’ MOTION TO DISMISS [Motion filed on 11/8/2010] 18 19 Presently before the court is Defendants Skechers U.S.A., Inc. 20 and Skechers U.S.A., Inc. II (collectively, “Skechers”)’s Motion to 21 Dismiss. 22 oral argument, the court denies the motion and adopts the following 23 order. 24 I. 25 After reviewing the parties’ moving papers and hearing Background Skechers is a shoe company. (Declaration of Fred Machuca in 26 support of Motion to Dismiss (“Machuca Dec.”) ¶ 5. 27 Skechers engaged Plaintiff Richard Reinsdorf (“Reinsdorf”), a 28 photographer, to conduct a photo shoot in connection with In 2006, Dockets.Justia.com 1 Skechers’s marketing efforts. 2 Reinsdorf for four additional photo shoots between 2007 and 2009. 3 (Compl. ¶¶ 19, 23, 26, 30.) 4 (Complaint ¶ 4.) Skechers engaged Prior to each photo shoot, Skechers explained to Reinsdorf the 5 type of images Skechers hoped to capture. 6 These explanations included storyboards and photographic examples, 7 as well as drawings depicting particular poses for Skechers’ 8 selected models. 9 posed models, arranged lighting and props, and otherwise directed 10 11 (Id. ¶¶ 12, 14.) the photography sessions. (Machuca Dec. ¶ 12.) During the shoots, Reinsdorf (Compl. ¶ 23.) Skechers did not obtain Reinsdorf’s services as “work for 12 hire.” (Compl. ¶¶ 5, 18.) 13 licenses to use Reinsdorf’s work within North America for a six 14 month period. 15 photographs”) to Skechers at the conclusion of each photo shoot. 16 (Machuca Dec. ¶ 15.) (Id.) Instead, Skechers obtained limited Reinsdorf delivered raw photographs (“the 17 Upon receiving the photographs from Reinsdorf, Skechers 18 proceeded to modify the images for use in Skechers advertisements. 19 (Id. ¶¶ 16, 17.) 20 ranged from slight modifications in models’ skin tone to the 21 substitution of models’ body parts and the addition of substantial 22 graphic effects. (Id. ¶¶ 17, 21.) 23 used in Skechers advertisements (the advertisements). 24 No raw, unaltered photograph was ever incorporated into a finished 25 advertisement. The alterations varied with each image, and These enhanced images were then (Id. ¶ 16.) (Id.) 26 Reinsdorf brought suit in this court alleging copyright 27 infringement, as well as state law causes of action for breach of 28 contract and unfair competition. Reinsdorf alleges that Skechers 2 1 utilized Reinsdorf’s copyrighted images as part of Skechers’s 2 marketing efforts in violation of the temporal and geographic 3 limits of the use licenses. 4 dismiss for lack of jurisdiction on the ground that the 5 advertisements are joint works, and, therefore, that Skechers 6 cannot have infringed its own copyright. 7 II. 8 9 (Compl. ¶ 6.) Skechers now moves to Legal Standard Skechers asks this court to dismiss Reinsdorf’s complaint for lack of jurisdiction under Federal Rule of Procedure 12(b)(1). 10 Skechers is correct that this court may look to extrinsic, disputed 11 facts when conducting a jurisdictional analysis. Roberts v. 12 Corrothers, 812 F.2d 1173, 1177 (9th Cir. 1987). The 12(b)(1) 13 standard is not appropriate, however, where issues of jurisdiction 14 and substance are intertwined. 15 motion involving factual issues which also go to the merits, the 16 trial court should employ the standard applicable to a motion for 17 summary judgment, as a resolution of the jurisdictional facts is 18 akin to a decision on the merits.” 19 F.2d 1074, 1077 (9th Cir. 1983). 20 intent of the parties with respect to the photographs is essential 21 to a determination whether the advertisements are joint works. 22 Because this disputed issue goes both to jurisdiction and the 23 merits of Reinsdorf’s claim, the court treats Skechers motion as a 24 Rule 56 motion for summary judgment.1 Id. “In ruling on a jurisdictional Augustine v. United States, 704 As discussed further below, the 25 1 26 27 28 The court notes that if Reinsdorf did intend to contribute to a joint work, and thus the advertisements did constitute joint works, this court would lack jurisdiction over Reinsdorf’s claim. “[A] suit to bring the co-owner of a copyright to account [for any profits earned from the copyright] does not fall within the (continued...) 3 1 A motion for summary judgment must be granted when “the 2 pleadings, depositions, answers to interrogatories, and admissions 3 on file, together with the affidavits, if any, show that there is 4 no genuine issue as to any material fact and that the moving party 5 is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 6 56(c). 7 of informing the court of the basis for its motion and of 8 identifying those portions of the pleadings and discovery responses 9 that demonstrate the absence of a genuine issue of material fact. 10 11 A party seeking summary judgment bears the initial burden See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of proof on an 12 issue at trial, the movant must affirmatively demonstrate that no 13 reasonable trier of fact could find other than for the moving 14 party. 15 burden of proof, however, the movant can prevail merely by pointing 16 out that there is an absence of evidence to support the nonmoving 17 party’s case. 18 burden, the non-moving party must set forth, by affidavit or as 19 otherwise provided in Rule 56, “specific facts showing that 20 there is a genuine issue for trial.” Anderson v. Liberty Lobby, 21 Inc., 477 U.S. 242, 250 (1986). 22 On an issue as to which the nonmoving party will have the See id. If the moving party meets its initial It is not the Court’s task “to scour the record in search of a 23 genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 24 1278 (9th Cir. 1996). Counsel have an obligation to lay out their 25 support clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 26 27 28 1 (...continued) district court’s jurisdiction over actions arising under copyright law.” Oddo v. Ries, 743 F.2d 630, 633 n.2 (9th Cir. 1984). 4 1 1031 (9th Cir. 2001). The Court "need not examine the entire file 2 for evidence establishing a genuine issue of fact, where the 3 evidence is not set forth in the opposition papers with adequate 4 references so that it could conveniently be found." 5 III. Discussion 6 Id. Skechers argues that it cannot be held liable for infringement 7 because the Reinsdorf’s raw photographs were merely 8 to a joint work: the finished advertisements. 9 Skechers argues that, because it is a co-author of those joint 10 (Motion at 2.) works, it cannot have infringed upon its own work. 11 contributions (Id.) Skechers is correct that a co-author in a joint work cannot be 12 liable to another co-owner for infringement of the copyright. 13 v. Ries, 743 F.2d 630, 632-33 (9th Cir. 1984); Thomson v. Larson, 14 147 F.3d 195, 199 (2d Cir. 1998).2 15 work prepared by (1) two or more authors who (2) make independently 16 copyrightable contributions and (3) intend that those contributions 17 be “merged into inseparable or interdependent parts of a unitary 18 whole.” 19 962, 969 (9th Cir. 2008). 20 here. 21 of the raw photographs, while Reinsdorf acknowledges that he played 22 no role in the subsequent modifications to the raw photographs.3 Oddo A joint work is a copyrightable Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d The first two factors are not at issue Skechers acknowledges that Reinsdorf is at least a co-author 23 2 24 25 26 Though a joint author may use a work in any way he sees fit, he must nevertheless “account to other co-owners for any profits he earns from licensing or use of the copyright.” Oddo v. Ries, 743 F.2d 630, 632-33 (9th Cir. 1984); Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998). 3 27 28 Though Reinsdorf contends that he is sole author of the photographs, the court need not resolve that authorship issue. Regardless whether Reinsdorf is sole or joint author of the (continued...) 5 1 Skechers does not dispute that the photographs are copyrightable, 2 nor can Reinsdorf seriously contend that Skechers’ elaborate 3 graphic designs and modifications possess the minimal degree of 4 creativity necessary to constitute copyrightable work. 5 Thus, the only factor in dispute is the intent of the parties 6 to merge their contributions into an inseparable whole. 7 to Skechers’ assertions, the evidence in the record does not 8 indisputably establish that Reinsdorf intended that his photographs 9 be incorporated into a joint work. Such intent is not evident from 10 the face of Reinsdorf’s complaint. The complaint alleges that 11 Reinsdorf “entered into a series of written license agreements with 12 Skechers for its exclusive use of his photos and images . . . .” 13 (Compl. ¶ 55.) 14 intended that Skechers use his photographs, it does not establish 15 how Reinsdorf intended Skechers to use his photos, let alone 16 demonstrate intent to produce a joint work. 17 Contrary Though the complaint suggests that Reinsdorf Reinsdorf also stated that Skechers could not have provided 18 artistic direction for the photographs because Skechers did not 19 know how the photographs would be “laid out until [Skechers] got 20 [Reinsdorf’s] final images and started building their 21 advertisements around [the] photographs.” (Declaration of Richard 22 Reinsdorf in Opposition to Motion ¶ 40.) 23 indicates that Skechers incorporated the photographs into the 24 advertisements, but does not establish that, prior to seeing the Reinsdorf’s statement 25 26 27 28 3 (...continued) photographs, the finished advertisements were the product of contributions from two authors (Reinsdorf/Skechers (photographs) and Skechers (modifications), or Reinsdorf (photographs) and Skechers (modifications)). 6 1 finished advertisements, Reinsdorf knew or intended that Skechers 2 would incorporate the photographs into some other work. 3 Lastly, the alleged limited use licensing agreement between 4 Skechers and Reinsdorf could indicate a lack of intent to form a 5 joint work. 6 Skechers’s use of the photographs was limited to the terms of that 7 license, and was not the type of “buy out” agreement that would 8 entitle Skechers to use Reinsdorf’s photographs as Skechers saw 9 fit. Reinsdorf’s agent, Robert Heller, believed that (Declaration of Robert Heller in Opposition to Motion at 6.) 10 Considering the evidence in the light most favorable to Reinsdorf, 11 the court cannot conclude that he intended his photographs to 12 constitute part of a joint work.4 13 IV. 14 Conclusion There is a triable issue of fact as to Reinsdorf’s intent and 15 the existence of a joint work. 16 which the court treats as a motion for summary judgment, is DENIED. Accordingly, the Motion to Dismiss, 17 18 IT IS SO ORDERED. 19 20 21 Dated: March 9, 2011 DEAN D. PREGERSON United States District Judge 22 23 24 25 26 27 28 4 The court notes that the record at this stage is largely undeveloped, perhaps because Skechers brought this motion under Rule 12(b)(1). The actual limited license agreement, for example, is not part of the current record. Further discovery will likely yield further pertinent information. 7
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