Professional Documents
Culture Documents
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OKSANA GRIGORIEVA, an
Individual,
Plaintiff,
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v.
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SAMMY ORITI, an individual;
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and DOES 1 through 10,
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inclusive,
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Defendants.
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________________________________ )
DEFENDANTS MEMORANDUM
IN SUPPORT OF MOTION TO DISMISS
PLAINTIFFS THIRD AND FOURTH
CLAIMS FOR RELIEF FOR LACK OF
SUBJECT MATTER JURISDICTION
PURSUANT TO
FED. R. CIV. P. 12(b)(1)
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Table of Contents
I. INTRODUCTION...1
II. STANDARD OF REVIEW FOR MOTION TO DISMISS
PURSUANT TO FED. R.CIV. P. 12(b)(1)....3
III.ARGUMENT..4
A. Plaintiffs Copyright Infringement Claim is Precluded by 17 U.S.C. 411(a)
Because Plaintiff Has Not Obtained Valid Certificates of Registration
For Any of the Allegedly Infringed Works..............................................4
B. Plaintiffs Claim For a Declaration of Sole Ownership In Each of the
Musical Compositions Does Not Arise Under The Federal Copyright Act
and Therefore Does Not Vest The Court With Subject Matter Jurisdiction.8
1. Plaintiff Has Not Stated a Valid Claim For Infringement
Because the Works Are Unregistered and Do Not Meet the
Jurisdictional Prerequisite Under 17 U.S.C. 411(a)....9
2. Plaintiff Has Not Stated a Claim That Requires Construction
of the Copyright Act......10
C. If the Court Dismisses Plaintiffs Third and Fourth Claims
On Jurisdictional Grounds,The Court Has No Discretion to Hear
The State Law Claims and Must Dismiss Them......12
IV. CONCLUSION..12
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Table of Authorities
Cases
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III
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White v. Lee,
227 F.3d 1214, 1242 (9th Cir. 2000) ......................................................................... 3, 4
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Statutes
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Rules
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IV
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I. INTRODUCTION
In her complaint, Plaintiff alleges ten claims for relief against Defendant, most
of which are state law claims. Plaintiff alleges two causes of action, copyright
infringement and declaratory relief, which purportedly arise out of a single federal
statute, the Federal Copyright Act, 17 U.S.C. 101, et seq. Plaintiff contends that this
Court has subject matter jurisdiction pursuant to 28 U.S.C. 1331 and 28 U.S.C.
1338(a). Complaint 5. Thus, the Courts subject matter jurisdiction rests solely on
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citizenship. Complaint 1, 2.
Plaintiff had at the time of the commencement of her action in June and has at
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the time of filing the instant motion pending applications for copyright registrations in
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the United States Copyright Office for the four Musical Compositions Plaintiff alleges
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that Defendant has infringed. Doc. 3. Plaintiff did not proffer with her complaint
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Certificates of Registration for each of the four works, but merely averred that she had
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filed applications in the United States Copyright Office prior to filing her complaint.
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Complaint 8, 27.
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The primary issue before the Court is whether pending applications for
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registration at the time of filing of the action are sufficient to confer subject matter
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jurisdiction to hear Plaintiffs infringement claim. If the Court finds that pending
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applications for registration are insufficient, then the Court should then determine
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whether Plaintiffs request for a declaration of sole ownership in and to the Musical
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Compositions independently vests the Court with subject matter jurisdiction under the
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Federal Copyright Act. If the Court answers both questions in the negative and finds
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that it does not have original jurisdiction to hear Plaintiffs federal claims, then the
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Court should also dismiss Plaintiffs state law claims because, absent original
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jurisdiction, the Court would not have supplemental jurisdiction to hear the state law
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claims under 28 U.S.C. 1367. Herman Revocable Trust v. Teddy Bear, 254 F.3d
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802, 806 (9th Cir. 2001)(if the court dismisses for lack of subject matter jurisdiction, it
hear Plaintiffs federal claims for two reasons. First, Plaintiff has not made a prima
the United States Copyright Office in the four Musical Compositions. Thus, the
jurisdictional bar of 17 U.S.C. 411(a), which has been interpreted in the Central
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unregistered works. Loree Rodkin v. Ross-Simons, Inc., 315 F. Supp. 2d 1053 (C.D.
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2004).
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relief does not independently vest the Court with subject matter jurisdiction because
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the relief sought does not arise under the Federal Copyright Act (the Act).
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Through her claim for declaratory relief, Plaintiff seeks solely a determination of
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ownership in the Musical Compositions which will not require a construction of the
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Act. Complaint 37(a). Under the well-pleaded complaint rule, jurisdiction must be
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determined from what necessarily appears in the Plaintiffs statement of his own claim
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defenses which it is thought defendant may interpose. Lippitt v. Raymond James Fin.
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Servs., 340 F. 3d 1033, 1040 (9th Cir. 2003)(quoting Taylor v. Anderson, 234 U.S. 74,
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75-76 (1914)). Thus, Plaintiffs declaratory relief claim cannot vest the court with
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interest in the Musical Compositions is based upon contract and equitable principles,
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such as estoppel, which arise under state, not federal law. Oriti Decl. 3-10. As
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such, the Court also lacks subject matter jurisdiction as to Plaintiffs claim for
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unless the contrary affirmatively appears. Stock West, Inc. v. Confederated Tribes of
Subject matter jurisdiction may be considered by the Court at any time. See
that the court lacks jurisdiction of the subject matter, the court shall dismiss the
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action.); Paramount Pictures Corp. v. REPLAYTV, 298 F. Supp. 2d 921, 924 (C.D.
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Cal. 2004)(citing Ruhrgas Ag v. Marathon Oil Co., 526 U.S. 574, 583
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initiative even at the highest level.). Federal courts have the duty to establish subject
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matter jurisdiction whether or not the parties raise the issue. See United Investors Life
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Ins. Co. v. Waddell & Reed, Inc., 360 F.3d 960, 966 (9th Cir. 2004) (a district court's
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duty to establish subject matter jurisdiction is not contingent upon the parties
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arguments, citing Mitchell v. Maurer, 293 U.S. 237, 244, 55 S. Ct. 162, 79 L. Ed. 338
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(1934)). The plaintiff in the case bears the burden of establishing that the court has
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jurisdiction. Rio Props., Inc. v. Rio Intl Interlink, 284 F.3d 1007, 1019 (9th Cir. 2002).
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either a facial attack or a factual attack. White v. Lee, 227 F.3d 1214, 1242 (9th Cir.
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2000). In a facial attack, the challenger asserts that the allegations contained in a
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complaint are insufficient on their face to invoke federal jurisdiction. Safe Air For
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Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). In evaluating a facial attack
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to jurisdiction, the Court must accept the factual allegations in the plaintiffs complaint
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as true. Warren v. Fox Family Worldwide, Inc., 171 F. Supp. 2d 1057, 1061 (C.D. Cal.
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2001). In contrast when a movant raises a factual attack, the court may consider
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F.2d 1173, 1177 (9th Cir. 1987). Further, in evaluating a factual attack the court need
not assume the truthfulness of the allegations and may resolve factual disputes, if
Finally, federal subject matter jurisdiction must exist as of the time the action is
commenced. Morongo Band of Mission Indians v. Cal. State Bd. of Equalization, 858
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III.
ARGUMENT
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Defendant of four songs that Plaintiff claims she composed in June 2003 and in
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January 2005 entitled: (1) Remember Me; (2) Walking; (3) Doesnt Matter and
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8. Plaintiff further alleges that prior to filing this complaint, Grigorieva submitted
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each of the Musical Compositions, including the recordings thereof to the United
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States Copyright Office for registration in her name. Complaint 8, 27. In the
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filed with the Court on June 3, 2009, Plaintiff describes the status of the four
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To state a claim for copyright infringement requires proof of two elements: (1)
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copyright. Triad Systems Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th
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Cir. 1995). Plaintiff does not state in the Complaint whether Plaintiff sought full
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Plaintiffs name for any of the allegedly infringed Musical Compositions. Rice Decl.
Preregistration. Further, Defendant has never sought to register the works in his name.
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Oriti Decl. 6. Thus, the allegedly infringed works at the time of filing of the
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infringement action, such as this one, may be brought. One such prerequisite is
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no action for infringement of the copyright in any United States work shall be
instituted until preregistration1 or registration of the copyright claim has been
made in accordance with this title. 17 U.S.C. 411(a)(emphasis supplied).
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The Artists Rights and Theft Prevention Act of 2005 created a preregistration option by
which certain classes of works that are susceptible to infringement prior to publication can be
preregistered in anticipation of publication. The process of preregistration has its own procedure
separate from the full registration process in the Copyright Office. 37 C.F.R. 202.16. The
preregistration is done online only and without deposit material. Preregistration is available for only a
very limited class of unpublished works. 17 U.S.C. 408(f); 37 C.F.R. 202.16. Plaintiff has not
averred that she has sought preregistration for the Musical Compositions under 17 U.S.C. 408(f).
Complaint 8, 27. The Copyright Office conducts a limited examination of applications for
preregistration. 37 C.F.R. 202.16(7). Upon completion of the preregistration process, the Copyright
Office provides the claimant official notification by email of the preregistration. 37 C.F.R.
202.16(10). The email contains information from the application and a preregistration number and
date. See UNITED STATES COPYRIGHT OFFICE - PREREGISTRATION, available at
http://www.copyright.gov/help/faq/faq-prereg.hmtl <last visited on July, 18, 2009>. In addition,
once the preregistration process is completed, the preregistration record will also be available to the
public on the Copyright Office website, http://www.copyright.gov. 37 C.F.R. 202.16(12).
Preregistration does not constitute prima facie evidence of the validity of the copyright or the facts
stated in the application. 37 C.F.R. 202.16(13). A search of the Copyright Offices public catalog
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The Acts standing provision at 17 U.S.C. 501(b) also provides: the legal or
supplied).
Simons, Inc., 315 F. Supp. 2d 1053, 1056 (C.D. 2004)(finding that a federal district
court lacks subject matter jurisdiction over a copyright claim if the certificate of
registration is yet to be issued.); See also Joyce v. Renaissance Design, Inc., 2000
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plaintiffs claim of copyright infringement under 17 U.S.C. 411 (a) because plaintiffs
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Other California District Courts have also held that the jurisdictional
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an infringement action. See, e.g., Just Water Heaters, Inc. v. Affordable Water Heaters
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and Plumbing, Inc., 2006 WL 449136 * 3, 2006 U.S. Dist. LEXIS 15321 *10 (N.D.
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Cal. 2006)(granting defendants 12(b)(1) motion and finding that the Act supports the
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position that registration occurs when the Copyright Office issues a certificate of
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registrationthe Court cannot accept the idea that an applicant can confer a copyright
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on his work and thereby invoke the weighty protections of federal law merely by
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depositing materials and a fee with the Copyright Office.); Goodwin v. Best Plan
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Intl, 2004 WL 1924147 *1 , 2004 U.S. Dist. LEXIS 17823 *3-4 (N.D. Cal.
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because plaintiff did not allege registration of copyrights claimed.); Brush Creek
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Media, Inc. v. Boujaklian, 2002 U.S. Dist LEXIS 15321 * 12, 2002 WL 1906620 * 4
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(N.D. Cal. 2002)(remanding case to state court for lack of subject matter jurisdiction
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revealed no completed preregistrations in any of the Musical Compositions in Plaintiffs name. Rice
Decl. 2-3.
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and finding that the plain language of the statute forecloses copyright suits while a
denied.)); Jefferson Airplane v. Berkeley Systems, Inc., 886 F. Supp. 713, 715 (N.D.
infringement.).
As the Loree Rodkin court observed, the Ninth Circuit has yet to issue a clear
1057. In a case decided in 1998, Kodadek v. MTV Networks, Inc., the Ninth Circuit
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prerequisite to a suit based on a copyright. Kodadek v. MTV Networks, Inc., 152 F.3d
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1209, 1211 (9th Cir. 1998). In Perfect 10 v. Amazon.com, Inc., decided in 2007, the
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court in response to Googles argument that the court lacked jurisdiction over a
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The implication of the Perfect 10 footnote is that a court must first consider whether it
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has jurisdiction under 411 for any of the allegedly infringed works by determining
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whether at least one of the allegedly infringed works is registered. Here, unlike the
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situation presented in Perfect 10, none of the works allegedly infringed are registered
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works.
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jurisdiction vested over any infringement claim so long as there was at least one
registered work at issue. Muchnick v. Thompson Corp., 509 F.3d 116, 123 (2nd Cir.
2007)(vacating class certification and settlement after holding that the district court
cert. granted in part by Reed Elsevier, Inc. v. Muchnick, 129 S. Ct. 1523, 77 U.S.L.W.
3059 (U.S. Mar. 02, 2009)(NO. 08-103)(limiting petition granted to the following
question: Does 17 U.S.C. 411(a) restrict the subject matter jurisdiction of the federal
Because none of the four Musical Compositions at issue in this case are
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registered works, the Court should find that subject matter jurisdiction is lacking and
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dismiss Plaintiffs Third Claim for Relief for copyright infringement pursuant to Rule
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Copyright Act, 17 U.S.C. 101 et seq. Specifically, Plaintiff seeks a declaration that
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she is a sole owner of all right, title, and interest in and to each of the Musical
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Compositions. Complaint 37 (a). Plaintiff contends that this Court has subject
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matter jurisdiction under 28 U.S.C. 1331 and 1338(a), which give a federal court
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original jurisdiction over any civil action arising under federal copyright law.
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Complaint 5. The Ninth Circuit has held that it is well established that just because
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a case involves a copyright does not mean that federal subject matter jurisdiction
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exists. Scholastic Entertainment v. Fox Entertainment Group, Inc., 336 F. 3d 982, 986
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(9th Cir. 2003)(citing to Vestron v. Home Box Office Inc.,839 F.2d 1380, 1381 (9th Cir.
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1988)).
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declaratory relief claim arises under the federal Copyright Act. To determine if a
claim arises under the federal Copyright Act, the Ninth Circuit has adopted the
majority rule set out in T.B. Harms Co. v. Eliscu, 339 F. 3d 823 (2nd Cir. 1964).
The Harms test states that an action arises under the copyright laws
(1) If and only if the complaint is for a remedy expressly granted by the Act, e.g., a
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(3) at the very least and perhaps more doubtfully, presents a case where a distinctive
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policy of the Act requires that federal principles should control the disposition of
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the claim.
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If any of these three grounds is satisfied, the federal courts have jurisdiction. Vestron,
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that federal jurisdiction exists only when a federal question is presented on the face of
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1. Plaintiff Has Not Stated a Valid Claim For Infringement Because the Works Are
Unregistered and Do Not Meet the Jurisdictional Prerequisite Under 17 U.S.C.
411(a)
At the time of the commencement of Plaintiffs complaint, Plaintiff did not
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possess Certificates of Registration for each of the allegedly infringed works and filed
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Plaintiff cannot meet the first part of the Harms test because the works were
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unregistered at the commencement of the action and therefore the court lacks subject
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matter jurisdiction to hear her infringement claim under 17 U.S.C. 411(a). Loree
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Rodkin, 315 F. Supp. 2d at 1056; Morongo, 858 F.2d at 1380 (jurisdiction must exist
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Where there is a fatal flaw on the face of a complaint that purports to assert an
infringement action, the suit should be dismissed for lack of subject matter
jurisdiction....If an action survives this scrutiny and affidavits or other materials
reveal the infringement claim to be spurious, then the proper avenue is dismissal for
failure to state a claim under federal copyright law. Vestron, 839 F.2d at 1382
(emphasis supplied).
Thus, the lack of Certificates of Registration is a fatal flaw on the face of
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Plaintiffs complaint and Plaintiffs Third Claim for Relief should be dismissed for
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2. Plaintiff Has Not Stated a Claim That Requires Construction of the Act
In her Fourth Claim for Relief, Plaintiff seeks a declaration that Grigorieva is
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the sole owner of all right, title, and interest in and to [the, sic] Musical Compositions,
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including the copyrights and all ancillary rights thereto. Complaint 37(a). Further,
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Plaintiff also seeks a declaration that there was no written transfer of ownership of
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copyrights in and to the Musical Compositions and that any contribution made by
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Plaintiff cannot establish jurisdiction under the second prong of the Harms test
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without jurisdiction. Vestron, 839 F.2d at 1382 (citing Topolos v. Caldewey, 698 F.2d
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991, 994 (9th Cir. 1983) ); See also Franklin v. Cannon Films, Inc., 654 F. Supp. 133,
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134-135 (C.D. Cal. 1987)(dismissing the copyright claim for lack of jurisdiction as not
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arising under the copyright laws and finding that where the claim is essentially for a
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claim after finding lack of subject matter jurisdiction because questions regarding the
In his Declaration, Defendant proffers evidence that demonstrates that there was
Defendant wrote Plaintiff to advise that she could not unilaterally exploit the Musical
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Compositions without his permission, Plaintiff did not repudiate his claim of rights in
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the Musical Compositions. Oriti Decl. 10, Exh. 2. To the contrary, Plaintiff
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asserting her reciprocal right to request that he seek her permission for any exploitation
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of the Musical Compositions. Id. In November 2006, Plaintiff agreed and approved of
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the Musical Compositions. Oriti Decl. 6; Studer Decl. 4. This label was used on
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demo CDs subsequently distributed by both Plaintiff and Defendant. Oriti Decl. 6.
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The CD label lists the four Musical Compositions and plainly states: All songs written
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by Oksana and Sammy Oriti and Produced by Sammy Oriti. Oriti Decl., Exh. 1;
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respectfully submits that resolution of the ownership issue will not require construction
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of the Act, but rather application of state law principles of contract and equitable
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Because the Plaintiffs claim for declaratory relief does not arise under the
Act, the Court should dismiss Plaintiffs claim for lack of subject matter jurisdiction.
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C.
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only claims remaining are Plaintiffs state law claims for breach of contract,
relief.
The Ninth Circuit has held that if a court dismisses for lack of subject matter
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jurisdiction, it has no discretion to hear and must dismiss all claims. Herman Family
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Revocable Trust v. Teddy Bear, 254 F.3d 802, 805-6 (9th Cir. 2001)(declaring that
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jurisdictional grounds means that the court was without original jurisdiction and had
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no authority other than to determine its jurisdiction. Id. See also Hancock Park
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Homeowners Assn Est. 1948 v. Hancock Park Home Owners Assn, 2006 WL
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4532986 (C.D. Cal. 2006)(dismissing plaintiffs state law claims upon determining that
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court lacked subject matter jurisdiction to hear Plaintiffs federal claim under the
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Lanham Act.).
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IV. CONCLUSION
For the foregoing reasons, Defendant prays that the Court dismiss Plaintiffs
action for lack of subject matter jurisdiction.
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Respectfully submitted,
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MICHELLE L. RICE
ROBERT B. KORY
LAW OFFICES OF ROBERT B. KORY
Attorneys for Defendant
SAMMY ORITI
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