Stern v. Does

978 F.Supp.2d 1031

Kenneth M. STERN, Plaintiff,

v.DOES, et al., Defendants.

Case No. CV 09–01986 DMG (PLAx).

United States District Court, C.D. California.

Signed Feb. 10, 2011.

Kenneth Michael Stern, Kenneth M. Stern Law Offices, Woodland Hills, CA, for Plaintiff.

Edmund Gerard Farrell, III, Adrian J. Barrio, Murchison and Cumming LLP, Los Angeles, CA, Steve R. Belilove, Jennifer Misun Lim, Steven R. Yee, Yee & Belilove LLP, Pasadena, CA, for Defendants.

ORDER RE DEFENDANTS' MOTIONS FOR SUMMARY JUDGMENT AND REQUESTS FOR ATTORNEYS' FEES

DOLLY M. GEE, District Judge.

This matter is before the Court on Defendants' Motions for Summary Judgment and Requests for Attorneys' Fees. A hearing was held on January 28, 2011. Having duly considered the respective positions of the parties, as presented in their briefs and at oral argument, the Court now renders its decision. For the reasons set forth below, Defendants' Motions and Requests are GRANTED in part and DENIED in part.

I.PROCEDURAL HISTORY

Plaintiff filed this action on March 24, 2009 and the operative Second Amended Complaint [Doc. # 38] on September 11, 2009. On January 6, 2010, this Court, the Hon. George H. King, presiding, granted Defendants' motions to dismiss all claims except Plaintiff's fifth cause of action for copyright infringement [Doc. # 68]. On April 8, 2010, the Court granted Plaintiff's request to dismiss all defendants except for Robert and Sara Weinstein [Doc. # 90].

Defendant Robert Weinstein filed a Motion for Summary Judgment and Request for Attorneys' Fees [Doc. # 126] on October 8, 2010. Plaintiff filed his Opposition [Doc. # 133] on October 29, 2010 and Defendant Robert Weinstein filed his Reply [Doc. # 139] on November 12, 2010.

On November 11, 2010, Defendant Sara Weinstein filed a Motion for Summary Judgment and Request for Attorneys' Fees [Doc. # 138]. Plaintiff filed his Opposition [Doc. # 144] on December 2, 2010. Defendant Sara Weinstein filed her Reply [Doc. # 147] on December 17, 2010.

The Court requested further briefing on the issue of fair use [Doc. # 171]. On January 19, 2011, supplemental briefs were filed by Plaintiff [Doc. # 178], Defendant Robert Weinstein [Doc. # 175], and Defendant Sara Weinstein [Doc. # 176]. In addition, Defendant Sara Weinstein filed a Request for Judicial Notice [Doc. # 177]. Plaintiff filed an Opposition to Defendant Sara Weinstein's Request for Judicial Notice [Doc. # 179] on January 24, 2011. ¹

II.FACTUAL BACKGROUND

In setting forth the facts underlying this dispute, the Court draws exclusively from Plaintiff's version of events, resolving all disputed facts in Plaintiff's favor and assuming without deciding that Defendants' evidentiary objections are to be overruled.

Plaintiff is an attorney. In September 2006, Plaintiff retained the forensic accounting firm White, Zuckerman, Warsavsky, Luna, Wolf & Hunt L.L.P. (“White Zuckerman”) to perform a mathematical calculation on behalf of one of his clients. (2nd Am. Compl. ¶ 25.) In March 2007, after receiving a bill from White Zuckerman for this work, Plaintiff became concerned that the billed hours were excessive and that White Zuckerman had been churning his client's file. ( Id. ¶¶ 27–28.)

On March 26, 2007, Plaintiff sent an e-mail to the Consumer Attorneys Association of Los Angeles (“CAALA”) listserv, which stated in its entirety as follows: “Has anyone had a problem with White, Zuckerman ... cpas including their economist employee Venita McMorris over billing or trying to churn the file?” ² (SW Opp'n, Stern Decl. ¶ 3 (ellipsis in original).) ³ This statement—the subject of Plaintiff's copyright infringement claim—was posted on the CAALA listserv. ( Id.)

At the time, both Plaintiff and Defendant Robert Weinstein were members of the CAALA listserv. (2nd Am. Compl. ¶¶ 16–17.) Robert Weinstein accessed the CAALA listserv e-mails containing Plaintiff's writing, which he forwarded in an e-mail to his sister, Defendant Sara Weinstein, who was a client of White Zuckerman. Sara Weinstein then forwarded the e-mail containing Plaintiff's writing to White Zuckerman.⁴ ( Id. ¶¶ 41–42; McMorris Depo. at 9:17–10:16.) On September 5, 2009, the United States Copyright Office issued Plaintiff a certificate of registration for his listserv post. (RW Opp'n, Ex. 2.)

Plaintiff asserts that he holds a valid copyright and that Defendants' acts—copying and distributing his listserv post—constituted both copyright infringement and contributory infringement. (2nd Am. Compl. ¶¶ 136, 140; RW Opp'n, Stern Decl. ¶ 17.)

III.LEGAL STANDARD

Summary judgment should be granted “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); accord Munoz v. Mabus, 630 F.3d 856, 859–60 (9th Cir.2010). Material facts are those that may affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). An issue is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id.

The moving party bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party has met its initial burden, Rule 56(c) requires the nonmoving party to “go beyond the pleadings and by her own affidavits, or by the ‘depositions, answers to interrogatories, and admissions on file,’ designate ‘specific facts showing that there is a genuine issue for trial.’ ” Id. at 324, 106 S.Ct. 2548 (quoting Fed.R.Civ.P. 56(c), (e) (1986)); see also Norse v. City of Santa Cruz, 629 F.3d 966, 973 (9th Cir.2010) ( en banc ) (“Rule 56 requires the parties to set out facts they will be able to prove at trial.”). “[T]he inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

When a defendant challenges the quantum of the plaintiff's originality or creativity as a matter of law, “these matters should be resolved solely by the judge.” 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.10 [B][1] (rev. ed.2010) (citing Collezione Europa U.S.A., Inc. v. Hillsdale House, Ltd., 243 F.Supp.2d 444, 452 (M.D.N.C.2003)); see also Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 932 F.Supp. 220, 225 (N.D.Ill.1996) (Easterbrook, J., sitting by designation) (holding that copyrightability is a question of law for a court to decide). Fair use presents a mixed question of law and fact that a district court may resolve when the parties “dispute only the ultimate conclusions to be drawn from the admitted facts.” Fisher v. Dees, 794 F.2d 432, 436 (9th Cir.1986).

IV.DISCUSSION⁵IMAGE

A. Plaintiff Cannot Enforce The CAALA Listserv Confidentiality Agreement

At first blush, Plaintiff's Second Amended Complaint presents a garden variety infringement claim. Plaintiff muddies the waters somewhat by relying in part on provisions of the CAALA listserv agreement:

[I]t is my position the infringement has occurred, because my writing is copyrightable, and posted to the CAALA listserv, which constitutes a license, which defendant Robert Weinstein was required to sign to be a member of the listserv, that my writing may only be copied and distributed within the parameters of the CAALA listserve [sic] agreement, and as my writing, with my consent. That parameter is that any copying and distribution must be solely within a posting to the CAALA listserv. Any copying and distribution, as occurred herein, outside of the CAALA listserv is a breach of the licensing agreement, and my right to determine who may, and under what circumstances, copy and distribute his writing, thus, a copyright violation.

(RW Opp'n, Stern Decl. ¶ 17.)

Plaintiff's copyright claims cannot rely on provisions in the CAALA listserv agreement. As an initial matter, the listserv agreement is not a single agreement. Rather, it is a series of agreements between the CAALA and each individual member of the listserv. Thus, Plaintiff can only enforce provisions of the agreement between the CAALA and Defendant Robert Weinstein if Plaintiff is an intended third-party beneficiary of that agreement. See Doe I v. Wal–Mart Stores, Inc., 572 F.3d 677, 681 (9th Cir.2009). He is not.

Under California contract law, “a purported third-party beneficiary must show that the contract was ‘made expressly for the benefit of a third person’ ”—as opposed to the case where the third person is merely an “incidental” beneficiary. Trs. of Screen Actors Guild—Producers Pension & Health Plans v. NYCA, Inc., 572 F.3d 771, 779 (9th Cir.2009) (quoting Cal. Civ.Code § 1559; citing Spinks v. Equity Residential Briarwood Apartments, 171 Cal.App.4th 1004, 1021–22, 90 Cal.Rptr.3d 453 (2009)). Here, it is clear that Plaintiff is only an incidental beneficiary of the agreement between Defendant Robert Weinstein and the CAALA.

Although the CAALA listserv rules require confidentiality, the purpose of this requirement is concern over CAALA's potential liability when a member's client's confidential information is compromised—not concern over the member's work product or intellectual property rights. This purpose is apparent from CAALA's disclaimer of any liability due to breaches of confidentiality: “You agree, as a condition of membership in the CAALA Listserv, to assume all responsibility for the breach of any confidentiality that may occur as a result of your posting information on the Listserv, and you acknowledge that CAALA cannot and does not act as a guarantor of such confidentiality.” (RW Opp'n, Ex. 1 at 2.) Moreover, the listserv rules provide for their enforcement only by the CAALA Executive Director, Executive Committee members, and/or Board of Governors. ( Id. at 3–4.) Conspicuously absent is any provision...