You are on page 1of 14

Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 1 of 14 Page ID #:727

UNITED STATES DISTRICT COURT


CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES -- GENERAL

Case No. CV 18-9543-JFW(SSx) Date: March 13, 2019

Title: Stephen Perry -v- Phil Brown, et al.

PRESENT:
HONORABLE JOHN F. WALTER, UNITED STATES DISTRICT JUDGE

Shannon Reilly None Present


Courtroom Deputy Court Reporter

ATTORNEYS PRESENT FOR PLAINTIFFS: ATTORNEYS PRESENT FOR DEFENDANTS:


None None

PROCEEDINGS (IN CHAMBERS): ORDER DENYING DEFENDANT PHIL BROWN’S


SPECIAL MOTION: (1) TO STRIKE PERRY’S
CALIFORNIA RIGHT OF PUBLICITY CLAIMS (CAL.
CODE CIV. PROC. § 425.16); AND (2) DISMISS
PERRY’S TRADEMARK CLAIMS PURSUANT TO FRCP
12(b)(6) [filed 2/8/19; Docket No. 45]; and

ORDER DENYING DEFENDANT PHIL BROWN’S RULE


12(b)(2) MOTION TO DISMISS ALL CLAIMS AGAINST
HIM DUE TO LACK OF PERSONAL JURISDICTION
[filed 2/8/19; Docket No. 47]

On February 8, 2019, Defendant Phil Brown (“Defendant”) filed a Special Motion: (1) to
Strike Perry’s California Right of Publicity Claims (Cal. Code Civ. Proc. § 425.16); and (2) Dismiss
Perry’s Trademark Claims Pursuant to FRCP 12(b)(6) (“Motion to Strike”) and a Rule 12(b)(2)
Motion to Dismiss All Claims Against Him Due to Lack of Personal Jurisdiction (“Motion to
Dismiss”). On February 15, 2019, Plaintiff Stephen Perry (“Plaintiff”) filed his Oppositions. On
February 25, Plaintiff filed a Reply. Pursuant to Rule 78 of the Federal Rules of Civil Procedure
and Local Rule 7-15, the Court finds that these matters are appropriate for decision without oral
argument. The hearing calendared for March 25, 2019 is hereby vacated and the matters taken off
calendar. After considering the moving, opposing, and reply papers, and the arguments therein,
the Court rules as follows:

I. Factual and Procedural Background1

1
To the extent that the Court has relied on evidence to which the parties have objected, the
Court has considered and overruled those objections. As to the remaining objections, the Court

Page 1 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 2 of 14 Page ID #:728

A. Plaintiff’s Background

Plaintiff, who is professionally known as “Steve Perry,” is a California resident and a


well-known musician, songwriter, and former lead singer of the band “Journey.” Plaintiff co-wrote a
number of Journey’s biggest hits, including “Don’t Stop Believin’,” “Who’s Crying Now,” “Open
Arms,” “Separate Ways,” and “Any Way You Want It.” Plaintiff recorded seven albums with
Journey, which has sold approximately 54 million albums and singles in the United States and an
estimated 75 million worldwide. On April 7, 2017, Plaintiff was inducted into the Rock and Roll Hall
of Fame as a member of Journey.

Plaintiff also has had a successful solo career. In 1984, Plaintiff released his first solo
album, “Street Talk,” which was certified “Platinum” by the Recording Industry Association of
America (“RIAA”) and features the hit singles “Oh Sherrie” and “Foolish Heart.” In 1994, Perry
released a second solo album, “For the Love of Strange Medicine,” which featured the hit “You
Better Wait” and which was certified “Gold” by the RIAA. On October 5, 2018, after an extended
hiatus, Plaintiff released a third solo album, “Traces,” which reached Number 4 on the “Billboard
200” chart. There was substantial publicity surrounding Plaintiff and his “Traces” album before and
subsequent to its release.

As a result of his professional efforts and success, Plaintiff, and his name, likeness, and
identity have become well known to the public. The U.S. Patent and Trademark Office has granted
Plaintiff a trademark registration for “Steve Perry” in connection with pre-recorded music and other
related services. To illustrate the extent of his fame, a Google search of Plaintiff’s name reveals
284 million entries and his unique singing voice and vocal style have become instantly
recognizable to the public, garnering him acclaim from prominent musical peers and publications.
For example, Plaintiff was ranked No. 76 on “Rolling Stone” magazine's "100 Greatest Singers of
All Time” chart.

Due to the instant recognizability of his vocal performances, a public release of a subpar
recording or subpar vocal performance would adversely impact the public’s perception of Plaintiff
as a vocalist, musician and performer. Thus, Plaintiff has always been extremely selective
regarding the release of his vocal performances. As a result, Plaintiff does not release recordings
unless he is satisfied that the music, his vocal performances, and the quality of the recording of his
vocal performances, meet his very high standards.

B. Defendant’s Involvement With Plaintiff

In 1991, Plaintiff was introduced to Defendant, who is also a musician, by Plaintiff’s


manager Bob Cavallo, who encouraged Plaintiff to work with Defendant to write songs that would
meet Perry’s standards. Perry met Brown at Brown’s home in Sylmar, California and they wrote
two songs together, “Somebody Somewhere” and “Don’t Push the River,” and Brown showed
Perry two other songs that Brown had previously written. To evaluate these four songs, Plaintiff
recorded a vocal performance of each song on an eight track tape recorder Defendant kept in his

finds that it is unnecessary to rule on those objections because the disputed evidence was not
relied on by the Court.

Page 2 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 3 of 14 Page ID #:729

garage. Plaintiff loaned Defendant $1,500 for the use of Defendant’s garage and eight track tape
recorder used to record his performances, as described in the administration agreement Plaintiff
and Defendant signed in August 1991.

Plaintiff’s recordings were made exclusively for “demo” purposes, so that Plaintiff could
determine if the songs were creatively acceptable to him. Plaintiff never intended or expected to
publically release these recordings and certainly never authorized their public release. Plaintiff
also never intended those vocal performances to form a part of a larger sound recording in which
anyone else would have a copyright interest, and he at all times intended to have sole copyright
ownership of the vocal performances he recorded at Defendant’s home. Plaintiff’s home
recordings did not have the same quality as a studio recording, and although Plaintiff’s vocal
performances allowed him to evaluate whether he wanted to pursue development of the songs, his
performances lacked the studio quality necessary for any type of public release. As a result,
neither those recordings nor those vocal performances met or meet Plaintiff’s standards for public
release. Plaintiff ultimately decided that the vocal performances were not appropriate for public
release and none of the songs created in 1991 appeared on his 1994 “For the Love of Strange
Medicine” album. Plaintiff left the tapes of his four recorded songs in the possession of Defendant.
Plaintiff never worked with Defendant after 1991 and he never asked Defendant to return the tapes
of his four recorded songs.

In 2002 Defendant, through his attorney, claimed for the first time that he had an interest in
Plaintiff’s 1991 recorded vocal performances and Defendant threatened to release them. Plaintiff,
through his counsel, expressly rejected Defendant’s claim to any form of copyright interest in
Plaintiff’s recorded vocal performances in a letter dated February 7, 2002, which asserted Plaintiff’s
sole ownership of those recorded vocal performances. After receiving Plaintiff’s letter, Defendant
apparently decided not to release Plaintiff’s recorded vocal performances. In addition, Defendant
failed to take any legal action challenging Plaintiff’s copyright ownership of his recorded vocal
performances.

In September 2018, Defendant learned that Plaintiff was about to release another solo
album, “Traces,” on October 5, 2018. Four days after the release of “Traces,” Defendant, through
his representatives, raised his long dormant claim of ownership in Plaintiff’s vocal performances
recorded in 1991 and again threatened to release those performances to the public against
Plaintiff’s wishes. Melody Bann (“Bann”), Defendant’s girlfriend and alleged co-manager, began
sending promotional Twitter messages that not only promised the upcoming release of Plaintiff’s
four recorded vocal performances, but also associated Defendant with Plaintiff and falsely implied
that Plaintiff was a member of Defendant’s band “Apaches from Paris.” For example, on October
23, 2018, Bann tweeted that “BROWN’S NEW CD’s almost completed! The NEW band APACHES
FROM PARIS is coming together with OUTSTANDING musicians who are well known in the music
world! There is an extra little treat in the works for those of you who like Steve Perry!” On October
31, 2018, Bann tweeted an image of Plaintiff next to an image of Defendant, with the text “PHIL
BROWN OF LITTLE FEAT! STEVE PERRY OF JOURNEY! FIRST SONG RELEASE COMING
SOON!!”

On or about November 1, 2018, Defendant released a 35-second clip of one of the four
songs on his Facebook page promoting Defendant and his band. Plaintiff sent a takedown notice
after the Facebook posting was discovered and Facebook deleted the posting on approximately
November 9, 2018.

Page 3 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 4 of 14 Page ID #:730

According to Jessica DiConti (“DiConti”), who worked as Defendant’s co-manager along


with Bann from August 2018 to November 2018, Defendant’s use of Plaintiff’s name, likeness, and
image on Twitter and Facebook and his stated intention to release Plaintiff’s vocal performances
was not based upon a good faith disagreement or misunderstanding about his ownership of the
four songs. Instead, it was part of a plan devised by Defendant to obtain money from Plaintiff by
convincing Plaintiff to buy out Defendant’s copyright interests in the four sound recordings
performed by Plaintiff.2 After discovering Plaintiff’s anticipated release of “Traces,” Defendant
began discussing with Bann and DiConti how it would benefit him financially to release the four
sound recordings at the same time that Plaintiff released his "Traces" album.3 However,
Defendant later concluded that it would be more profitable to simply threaten the public release of
the four sound recordings in order to convince Plaintiff to buy him out. Defendant told DiConti that
he knew Plaintiff was not litigious and Defendant believed that Plaintiff would conclude it would be
less expensive to pay Defendant for his rights in the songs and sound recordings rather than
become involved in a protracted court battle. As part of his plan, Defendant directed Bann to begin
posting Twitter messages that announced the imminent release of at least some of Plaintiff’s vocal
recordings. Defendant subsequently posted a short clip from one of Plaintiff’s sound recordings on
his Facebook page as part of his plan.

C. Procedural History

After Bann’s tweets and Defendant’s posting of the 35-second clip of one of Plaintiff’s songs
to Facebook, Plaintiff realized he needed to take immediate action. On November 9, 2018, in
order to prevent the threatened unauthorized release of his vocal performances and Defendant’s
false association of Plaintiff with Defendant’s band and music, Plaintiff filed a Complaint against
Defendant. On November 13, 201, Plaintiff filed a First Amended Complaint, alleging claims for
relief for: (1) trademark infringement; (2) false designation of origin under the Lanham Act, 15
U.S.C. § 1125, et seq.; (3) declaratory relief regarding copyright ownership; (4) violation of the
common law right of publicity; and (5) violation of statutory right of publicity, California Civil Code §
3344.

On November 13, 2018, Plaintiff filed an ex parte application for a temporary restraining
order and order to show cause re preliminary injunction to prevent Defendant from releasing the
four recorded vocal performances and his continued misleading promotional messages. On
November 15, 2018, the Court entered a Temporary Restraining Order (“TRO”) and issued an

2
DiConti believed Defendant’s plan would likely be successful because Defendant
represented to DiConti that he and Plaintiff had a close personal relationship. Specifically, in her
declaration, DiConti states that “[d]uring the time I worked for Mr. Brown, he frequently mentioned
that he knew many well-known musicians, including Steve Perry in California. It seems like a week
did not go by when he did not mention and talk about Steve Perry. Among other things, he stated
that he had written songs with Mr. Perry when Mr. Brown had lived in California, where Mr. Perry
lived and still lives, and that he and Steve Perry had recorded songs together.” DiConti Decl., ¶ 3.
3
DiConti warned Defendant not to release the songs without discussing the release with
Plaintiff to avoid conflicts with publishing rights or a lawsuit. Although Defendant, through Bann,
did reach out to Plaintiff’s manager and attorneys to obtain Plaintiff’s permission, those attempts
were unsuccessful.

Page 4 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 5 of 14 Page ID #:731

Order to Show Cause Re Preliminary Injunction (“OSC”). After avoiding service for several days,
Defendant, through counsel, appeared and stipulated to an extension of the TRO and the Court
continued the hearing on the OSC, which is currently scheduled for March 25, 2019.

II. Motion to Dismiss

A. Legal Standard

The party mounting a Rule 12(b)(1) challenge to the Court’s jurisdiction may do so either on
the face of the pleadings or by presenting extrinsic evidence for the Court’s consideration. See
White v. Lee, 227 F.3d 1214, 1242 (9th Cir. 2000) (“Rule 12(b)(1) jurisdictional attacks can be
either facial or factual”). “In a facial attack, the challenger asserts that the allegations contained in
a complaint are insufficient on their face to invoke federal jurisdiction.” Safe Air for Everyone v.
Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). In ruling on a Rule 12(b)(1) motion attacking the
complaint on its face, the Court accepts the allegations of the complaint as true. See, e.g., Wolfe
v. Strankman, 392 F.3d 358, 362 (9th Cir. 2004). “By contrast, in a factual attack, the challenger
disputes the truth of the allegations that, by themselves, would otherwise invoke federal
jurisdiction.” Safe Air, 373 F.3d at 1039. “With a factual Rule 12(b)(1) attack . . . a court may look
beyond the complaint to matters of public record without having to convert the motion into one for
summary judgment. It also need not presume the truthfulness of the plaintiff[‘s] allegations.”
White, 227 F.3d at 1242 (internal citation omitted); see also Thornhill Pub. Co., Inc. v. General Tel
& Electronics Corp., 594 F.2d 730, 733 (9th Cir. 1979) (“Where the jurisdictional issue is separable
from the merits of the case, the judge may consider the evidence presented with respect to the
jurisdictional issue and rule on that issue, resolving factual disputes if necessary. . . ‘[N]o
presumptive truthfulness attaches to plaintiff’s allegations, and the existence of disputed material
facts will not preclude the trial court from evaluating for itself the merits of jurisdictional claims.’”)
(quoting Mortensen v. First Fed. Sav. & Loan Ass’n, 549 F.2d 884, 891 (9th Cir. 1977)). “However,
where the jurisdictional issue and substantive issues are so intertwined that the question of
jurisdiction is dependent on the resolution of factual issues going to the merits, the jurisdictional
determination should await a determination of the relevant facts on either a motion going to the
merits or at trial.” Augustine v. U.S., 704 F.2d 1074, 1077 (9th Cir. 1983). It is the plaintiff who
bears the burden of demonstrating that the Court has subject matter jurisdiction to hear the action.
See Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 377 (1994); Stock West, Inc. v.
Confederated Tribes, 873 F.2d 1221, 1225 (9th Cir. 1989).

B. Discussion

Whether a federal court can exercise personal jurisdiction over a non-resident defendant
turns on two independent considerations: whether an applicable state rule or statute permits
service of process on the defendant, and whether the assertion of personal jurisdiction comports
with constitutional due process principles. See Pac. Atl. Trading Co. v. M/V Main Express, 758
F.2d 1325, 1327 (9th Cir. 1985). California’s long-arm statute extends jurisdiction to the limits of
constitutional due process. See Gordy v. Daily News, L.P., 95 F.3d 829, 831 (9th Cir. 1996); Cal.
Code. Civ. Proc. § 410.10 (“A court of this state may exercise jurisdiction on any basis not
inconsistent with the Constitution of this state or of the United States”). Consequently, when
service of process has been effected under California law, the two prongs of the jurisdictional
analysis collapse into one—whether the exercise of jurisdiction over the defendant comports with
due process. See Fireman’s Fund Ins. Co. v. Nat’l Bank of Cooperative, 103 F.3d 888, 893 (9th

Page 5 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 6 of 14 Page ID #:732

Cir. 1996); Aanestad v. Beech Aircraft Corp., 521 F.2d 1298, 1300 (9th Cir. 1974).

The Fourteenth Amendment’s Due Process Clause permits courts to exercise personal
jurisdiction over a defendant who has sufficient “minimum contacts” with the forum state such that
“maintenance of the suit does not offend traditional notions of fair play and substantial justice.” Int’l
Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). There are two recognized bases for personal
jurisdiction over nonresident defendants: (1) “general jurisdiction,” which arises where the
defendant’s activities in the forum state are sufficiently “substantial” or “continuous and systematic”
to justify the exercise of jurisdiction over him in all matters; and (2) “specific jurisdiction,” which
arises when a defendant’s specific contacts with the forum have given rise to the claim in question.
See Helicopteros Nacionales de Columbia S.A. v. Hall, 466 U.S. 408, 414–16 (1984); Doe v. Am.
Nat'l Red Cross, 112 F.3d 1048, 1050–51 (9th Cir. 1997).

1. General Jurisdiction

General jurisdiction allows a court to hear any and all claims against a defendant regardless
of whether the claims relate to the defendant’s contacts with the forum state. See
Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 801 (9th Cir. 2004) (“[A] finding of
general jurisdiction permits a defendant to be haled into court in the forum state to answer for any
of its activities in the world.”). For general jurisdiction to exist, a defendant’s affiliations with the
forum state must be “so ‘continuous and systematic’ as to render [it] essentially at home in the
forum[.]” Daimler AG v. Bauman, 571 U.S. 117, 138–39 (2014) (quoting Goodyear Dunlop Tires
Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)). In the case of a corporation, “[t]he
paradigmatic locations where general jurisdiction is appropriate . . . are its place of incorporation
and its principal place of business.” Ranza v. Nike, Inc., 793 F.3d 1059, 1069 (9th Cir. 2015)
(internal citation omitted). “Only in an ‘exceptional case’ will general jurisdiction be available
anywhere else.” Martinez v. Aero Caribbean, 764 F.3d 1062, 1070 (9th Cir. 2014).

Plaintiff does not contend that Defendant is subject to general jurisdiction in California.
Indeed, in the First Amended Complaint, Plaintiff alleges that Defendant is a resident of
Tennessee. FAC, ¶ 5. Moreover, the First Amended Complaint is devoid of any allegations that
suggest that Defendant’s contacts with California “are so continuous and systematic as to render
[him] essentially at home” in the state. Daimler, 571 U.S. at 138–39 (internal quotation marks and
citation omitted). In addition, there is nothing about this case that would suggest it is an
exceptional case that would justify finding general jurisdiction outside of Defendant’s state of
residency. See Lindora, LLC v. Isagenix Int’l, LLC, 198 F. Supp. 3d 1127, 1137–38 (S.D. Cal.
2016). Accordingly, the Court concludes that Defendant is not subject to general jurisdiction in
California.

2. Specific Jurisdiction

For a court to exercise specific jurisdiction, the plaintiff’s suit must arise out of or relate to
the defendant’s contacts with the forum. Bristol-Meyers Squibb Co. v. Superior Ct., 137 S. Ct.
1773, 1778 (2017). The Ninth Circuit applies a three-part test to determine whether a court has
specific jurisdiction over a defendant:

(1) The non-resident defendant must purposefully direct his activities or consummate some
transaction with the forum or resident thereof; or perform some act by which he purposefully

Page 6 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 7 of 14 Page ID #:733

avails himself of the privilege of conducting activities in the forum, thereby invoking the
benefits and protections of its laws;

(2) the plaintiff's claim must be one which arises out of or relates to the defendant's
forum-related activities; and

(3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e., it must
be reasonable.

Axiom Foods, Inc. v. Acerchem Int’l, Inc., 874 F.3d 1064, 1068 (9th Cir. 2017). A plaintiff bears the
burden of establishing the first two prongs. Schwarzenegger, 374 F.3d at 802. If the plaintiff fails
to satisfy either of the first two prongs, then personal jurisdiction over the defendant does not lie in
the forum state. Id. If the plaintiff succeeds on the first two prongs, then the defendant must
present a compelling case as to why exercising jurisdiction would be unreasonable. Id.

a. Purposeful Direction

The first prong of the specific jurisdiction test, although commonly referred to as the
purposeful availment requirement, actually consists of two distinct concepts. Id. A plaintiff may
satisfy this element by demonstrating that the defendant “has either (1) ‘purposefully availed’ [it]self
of the privilege of conducting activities in the forum [state], or (2) ‘purposefully directed’ [its]
activities toward the forum.” Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155 (9th Cir. 2006).
The purposeful availment concept generally applies in contract cases, whereas the purposeful
direction concept applies in tort cases. Axiom, 874 F.3d at 1069; see also Fiore v. Walden, 688
F.3d 558, 576 (9th Cir. 2012), rev’d on other grounds by Walden v. Fiore, 571 U.S. 277 (2014).
Because Plaintiff alleges that Defendant engaged in tortious conduct, the Court will apply the
purposeful direction test. See Axiom, 874 F. 3d at 1069.

To determine whether a defendant purposefully directed his tortious activity toward the
forum state, a court must apply the “effects test” from Calder v. Jones, 465 U.S. 783 (1984). Id.
This test examines whether: (1) the defendant committed an intentional act; (2) the act was
expressly aimed at the forum state; and (3) the act caused harm the defendant knew would likely
be suffered in the forum state. Id.

(1) Whether Defendant Committed an Intentional Act.

In the context of the Calder test, an intentional act is “an external manifestation of the
actor’s intent to perform an actual, physical act in the real world, not including any of its actual or
intended results.” Washington Shoe Co. v. A-Z Sporting Goods, Inc., 704 F.3d 668, 675 (9th Cir.
2012) (an intentional act “refers to an intent to perform an actual, physical act in the real world”). In
this case, Plaintiff’s trademark claim arises out of Defendant’s use of Plaintiff’s trademark “Steve
Perry” and his likeness on Twitter and Facebook to promote Defendant’s band and to market his
music. Plaintiff also alleges that Defendant’s use of Plaintiff’s trademark on Twitter and Facebook
caused harm to Plaintiff in California, where Plaintiff resides. These allegations are more than
sufficient to allege an intentional act. See, e.g., Mavrix Photo, Inc. v. Brand Technoligies, Inc., 647
F.3d 1218, 1228 (9th Cir. 2011) (concluding that the defendant had committed an intentional act
where the plaintiff’s claim of copyright infringement arose out of the defendant’s publication of
plaintiff’s photos on a website accessible to users in the forum state).

Page 7 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 8 of 14 Page ID #:734

Accordingly, the Court concludes that Plaintiff has sufficiently alleged that Defendant
committed an intentional act.

(2) Whether the Express Aiming Requirement is Satisfied.

When considering the express aiming requirement, the Supreme Court has held that courts
must focus on a defendant’s “own contacts” with the forum and not on the plaintiff’s connections to
the forum. See Axiom, 874 F.3d at 1070. The “express aiming” analysis “depends, to a significant
degree, on the specific type of tort or other wrongful conduct at issue.” Picot v. Weston, 780 F.3d
1206, 1214 (9th Cir. 2015) (quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 807
(9th Cir. 2004)). To be satisfied, the “express aiming” inquiry requires “something more” than “a
foreign act with foreseeable effects in the forum state.” Washington Shoe Co. v. A-Z Sporting
Goods Inc., 704 F.3d 668, 675 (9th Cir. 2012) (citing Bancroft & Masters, Inc. v. Augusta Nat'l Inc.,
223 F.3d 1082, 1087 (9th Cir. 2000)). For instance, the delivery or consumption of products in the
forum state that are “random,” “fortuitous,” or “attenuated” does not satisfy the express aiming
analysis. Mavrix Photo, 647 F.3d at 1230 (quoting Burger King Corporation v. Rudzewicz, 471
U.S. 462, 486 (1985)). On the other hand, “where a defendant knows – as opposed to being able
to foresee – that an intentional act will impact another state,” then “the ‘expressly aimed’
requirement is satisfied.” A–Z Sporting, 704 F.3d at 677 (emphasis in original).

“[T]he Ninth Circuit has held that specific jurisdiction exists where a plaintiff files suit in his
home state against an out-of-state defendant and alleges that defendant intentionally infringed his
intellectual property rights knowing [the plaintiff] was located in the forum state.” Amini Innovation
Corp. v. JS Imps., Inc., 497 F.Supp. 2d 1093, 1105 (C.D. Cal. 2007) (citing and collecting cases);
see also A–Z Sporting, 704 F.3d at 675–76 (holding that plaintiff who alleged that defendant
“willfully infringed copyrights owned by [plaintiff], which, as [defendant] knew, had its principal place
of business in the Central District [of California],” established that defendant's intentional act was
“expressly aimed at the Central District of California because [defendant] knew the impact of his
willful violation would be felt there”) (emphasis in original); Adobe SYS. Inc. v. Childers, 2011 WL
566812, at *3 (N.D. Cal. Feb. 14, 2011) (“In intellectual property cases, the Ninth Circuit has found
specific jurisdiction where a plaintiff bringing suit in its home forum against an out-of-state
defendant alleges that the defendant engaged in infringing activities knowing that plaintiff was
located in the forum”).

In this case, Plaintiff alleges that Defendant intentionally infringed his trademark “Steve
Perry” on Facebook and Twitter in order to promote Defendant’s band and to market Defendant’s
music. With respect to Defendant’s knowledge that Plaintiff “was located in the forum state,”
Amini, 497 F.Supp.2d at 1105, Plaintiff alleges in the First Amended Complaint that Plaintiff is a
resident of California. Moreover, Plaintiff presented evidence in a declaration from DiConti, who
worked as Defendant’s co-manager from August 2018 to November 2018, that Defendant
frequently discussed Plaintiff and the fact that Plaintiff lives in California. Thus, Plaintiff has met his
burden of demonstrating that Defendant knew Plaintiff was a resident of the forum state. See
Warner Bros. Home Entm't Inc. v. Jimenez, 2013 WL 3397672, at *2 (C.D. Cal. July 8, 2013)
(finding in action for copyright infringement that plaintiff made prima facie showing that defendant
knew plaintiff was a resident of the forum state where plaintiff filed supplemental papers
“present[ing] evidence that the TV Programs' packaging – which defendant must copy in order to
create and sell the infringing products – contains . . . plaintiff's address in Burbank, California”). As

Page 8 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 9 of 14 Page ID #:735

a result, Plaintiff has made a prima facie showing that Defendant willfully infringed Plaintiff’s
trademark knowing that Plaintiff was a resident of California. Under Ninth Circuit case law, this is
sufficient to satisfy the “expressly aimed” inquiry. See A–Z Sporting, 704 F.3d at 675–76; Amini,
497 F.Supp.2d at 1105.

Accordingly, the Court concludes that Plaintiff has adequately alleged that Defendant
expressly aimed his conduct at the forum state.

(3) Whether Defendant Caused Foreseeable Harm in the Forum.

The final prong of the Calder test considers whether a defendant’s actions “caused harm
that it knew was likely to be suffered in the forum.” Yahoo! Inc. v. La Ligue Contre Le Racisme et
L’Antisemitisme, 433 F.3d 1199, 1206 (9th Cir. 2006) (internal citation omitted). “The touchstone
of this requirement is not the magnitude of the harm, but rather its foreseeability.” Id. at 1207.
There is foreseeable harm when a jurisdictionally sufficient amount of harm is suffered in the forum
state. Id.

The Court concludes that Plaintiff has established the final prong of the Calder test. Plaintiff
alleged that Defendant intentionally infringed Plaintiff’s trademark and that Plaintiff has suffered
damages, including loss of goodwill and harm to his reputation. It is entirely foreseeable that
Plaintiff would suffer this harm in California, where he resides.

Accordingly the Court concludes that Plaintiff has adequately alleged that Defendant was
aware or should have been aware that Defendant’s infringement was likely to harm Plaintiff in
California.

Because the Court concludes that Plaintiff has satisfied the first, second and third prongs of
the Calder purposeful direction test, Plaintiff has met the first part of the Ninth Circuit’s three-part
test for specific jurisdiction.

b. Claim Arises Out of or Relates to Forum-Related Activities

To satisfy the second part of the specific jurisdiction test, a plaintiff's claims must “arise[ ]
out of or relate[ ] to the defendant's forum-related activities.” Schwarzenegger, 374 F.3d at 802.
The Ninth Circuit applies a “but for” test to determine forum-related conduct. Fiore, 688 F.3d at
582. Therefore, a plaintiff must demonstrate that he would not have suffered the alleged injuries in
the forum state but for the defendant's actions. Id. The Ninth Circuit has recognized that, in
trademark or copyright infringement actions, if the defendant's infringing conduct harms the plaintiff
in the forum, this element is satisfied. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1322 (9th
Cir. 1998); see also CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 1079 (9th Cir. 2011)
(trademark infringement claim “arises out of the actions of [defendant]” where defendant allegedly
infringed plaintiff's trademark, knowing that plaintiff was located in California).

In this case, Plaintiff alleges that he is a singer and songwriter known throughout the world,
including in California. In addition, as previously discussed, Plaintiff has made a sufficient showing
that Defendant’s alleged infringement harmed Defendant in California by diminishing his goodwill
and diluting Plaintiff’s trademark.

Page 9 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 10 of 14 Page ID #:736

Therefore, the Court concludes that Plaintiff has alleged that he suffered a harm in
California and that the but-for cause of this harm was Defendant’s alleged infringement, which is
sufficient to demonstrate that Plaintiff’s claims arise out of Defendant’s forum-related activities.
See CollegeSource, 653 F.3d at 1079 (holding that trademark infringement claim “arises out of the
actions of [defendant]” where defendant allegedly infringed plaintiff's trademark, knowing that
plaintiff was located in California).

Accordingly, the Court concludes that Plaintiff has satisfied the second prong.

c. Reasonableness of Exercising Jurisdiction

Because Plaintiff has established a prima facie case for jurisdiction over Defendant, the
burden shifts to Defendant to present a compelling case as to why exercising jurisdiction would be
unreasonable. Schwarzenegger, 374 F.3d at 802. In determining whether jurisdiction is
reasonable, courts consider seven factors: (1) the extent of a defendant’s purposeful interjection
into the forum; (2) the burden on the defendant in defending in the forum; (3) the extent of conflict
with the sovereignty of the defendant’s state; (4) the forum state’s interest in adjudicating the
dispute; (5) the most efficient judicial resolution of the dispute; (6) the importance of the forum to
the plaintiff’s interest in convenient and effective relief; and (7) the existence of an alternative
forum. See CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 1079 (9th Cir. 2011)
(internal citation omitted). “No one factor is dispositive; a court must balance all seven.”
Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1323 (9th Cir.1998).

In this case, although Defendant claims that defending this action in California would be a
burden on Defendant because of his lack of resources, Defendant has failed to produce any
persuasive evidence supporting that claim or any other reason why requiring Defendant to defend
this action in California would be unreasonable. Defendant argues that Tennessee represents a
viable alternative forum. Although Tennessee may be an alternative forum, this action involves
harm to the federal and California rights of a California resident and, thus, California has an
obvious and paramount interest in vindicating those rights. In addition, Defendant has failed to
demonstrate how or why the prosecution of this action in this Court conflicts with the sovereignty of
Tennessee. Moreover, it was Defendant who chose to purposefully inject himself into this forum
by intentionally infringing Plaintiff’s trademark rights. Finally, this Court has already devoted
considerable resources to this action and both parties have retained California counsel and, thus,
resolution of this action in this forum would be the most efficient use of judicial resources. After
balancing all of the reasonableness factors, the Court finds that those factors weigh heavily in favor
of Plaintiff.

Therefore, the Court concludes that it would not be unreasonable to exercise personal
jurisdiction over Defendant. Accordingly, the Court is satisfied that it has personal jurisdiction over
Defendant and Defendant’s Motion to Dismiss is DENIED.

3. Defendant Failed to File a Proposed Statement of Decision

The Court’s Standing Order, filed on November 14, 2018 [Docket No. 14] provides in
relevant part: “Within two days of the deadline for filing the Reply, each party shall lodge a
Proposed Statement of Decision, which shall contain a statement of the relevant facts and
applicable law with citations to case law and the record.” Standing Order, § 5(f). The deadline for

Page 10 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 11 of 14 Page ID #:737

filing the Reply was February 25, 2019, and, thus, the deadline for filing the Proposed Statement of
Decision was February 27, 2019. See L.R. 7-10. Defendant failed to timely file and still has not
filed the required Proposed Statement of Decision.

Pursuant to Local Rule 7-12, “[t]he failure to file any required document, or the failure to file
it within the deadline, may be deemed consent to the granting or denial of the motion . . . .” In
addition, the Standing Order expressly provides that the “[f]ailure to lodge the Proposed Statement
will result in the denial or granting of the motion.” Standing Order, § 5(f). Accordingly, pursuant to
Local Rule 7-12 and the Standing Order, Defendant’s Motion to Dismiss is also DENIED for
Defendant’s failure to file the Proposed Statement of Decision.

III. Motion to Strike

A. Legal Standards

1. California’s Anti-SLAPP Act of 2010

“California law provides for the pre-trial dismissal of certain actions, known as Strategic
Lawsuits Against Public Participation, or SLAPPs, that ‘masquerade as ordinary lawsuits' but are
intended to deter ordinary people ‘from exercising their political or legal rights or to punish them for
doing so.’” Makaeff v. Trump Univ., LLC, 715 F.3d 254, 261 (9th Cir. 2013) (quoting Batzel v.
Smith, 333 F.3d 1018, 1024 (9th Cir. 2003)) (internal quotation marks omitted). Specifically,
California’s anti-SLAPP statute provides:

A cause of action against a person arising from any act of that person in furtherance
of the person's right of petition or free speech under the United States Constitution or
the California Constitution in connection with a public issue shall be subject to a
special motion to strike, unless the court determines that the plaintiff has established
that there is a probability that the plaintiff will prevail on the claim.

Cal. Civ. Proc. Code § 425.16(b)(1).

The Court must evaluate an anti-SLAPP motion in two steps. First, the defendant moving to
strike must make “a threshold showing . . . that the act or acts of which the plaintiff complains were
taken ‘in furtherance of the [defendant's] right of petition or free speech under the United States or
California Constitution in connection with a public issue,’ as defined in [subsection (e) of] the
statute.” Hilton v. Hallmark Cards, 599 F.3d 894, 903 (9th Cir. 2010) (quoting Cal. Civ. Proc. Code
§ 425.16(b)(1)). Second, “[i]f the court finds that such a showing has been made, it must then
determine whether the plaintiff has demonstrated a probability of prevailing on the claim.” Navellier
v. Sletten, 29 Cal. 4th 82 (2002); see also U.S. ex rel. Newsham v. Lockheed Missiles & Space
Co., Inc., 190 F.3d 963, 971 (9th Cir. 1999). “Put another way, the plaintiff must demonstrate that
the complaint is both legally sufficient and supported by a sufficient prima facie showing of facts to
sustain a favorable judgment if the evidence submitted by the plaintiff is credited.” Wilson v.
Parker, Covert & Chidester, 28 Cal. 4th 811, 821 (2002) (internal quotation marks omitted); Batzel
v. Smith, 333 F.3d 1018, 1024 (9th Cir. 2003). “[T]hough the court does not weigh the credibility or
comparative probative strength of competing evidence, it should grant the motion if, as a matter of
law, the defendant's evidence supporting the motion defeats the plaintiff's attempt to establish
evidentiary support for the claim.” Wilson, 28 Cal. 4th at 821; Cal. Civ. Proc. Code § 425.16(b)(2).

Page 11 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 12 of 14 Page ID #:738

Thus, “[t]he statute ‘subjects to potential dismissal only those actions in which the plaintiff cannot
state and substantiate a legally sufficient claim.’” Navellier, 29 Cal. 4th at 92. “Only a cause of
action that satisfies both prongs of the anti-SLAPP statute – i.e., that arises from protected speech
or petitioning and lacks even minimal merit – is a SLAPP, subject to being stricken under the
statute.” Id. at 89.

The anti-SLAPP motion is available in federal court. Thomas v. Fry's Elec., Inc., 400 F.3d
1206 (9th Cir. 2005) (per curiam). Generally, defendants sued in federal court are entitled to bring
anti-SLAPP motions to strike state law claims. Verizon Del. Inc. v. Covad Communications Co.,
377 F.3d 1081, 1091 (9th Cir. 2004).

2. Rule 12(b)(6)

A motion to dismiss brought pursuant to Federal Rule of Civil Procedure 12(b)(6) tests the
legal sufficiency of the claims asserted in the complaint. “A Rule 12(b)(6) dismissal is proper only
where there is either a ‘lack of a cognizable legal theory’ or ‘the absence of sufficient facts alleged
under a cognizable legal theory.’” Summit Technology, Inc. v. High-Line Medical Instruments Co.,
Inc., 922 F. Supp. 299, 304 (C.D. Cal. 1996) (quoting Balistreri v. Pacifica Police Dept., 901 F.2d
696, 699 (9th Cir. 1988)). However, “[w]hile a complaint attacked by a Rule 12(b)(6) motion to
dismiss does not need detailed factual allegations, a plaintiff’s obligation to provide the ‘grounds’ of
his ‘entitlement to relief’ requires more than labels and conclusions, and a formulaic recitation of
the elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555
(2007) (internal citations and alterations omitted). “[F]actual allegations must be enough to raise a
right to relief above the speculative level.” Id.

In deciding a motion to dismiss, a court must accept as true the allegations of the complaint
and must construe those allegations in the light most favorable to the nonmoving party. See, e.g.,
Wyler Summit Partnership v. Turner Broadcasting System, Inc., 135 F.3d 658, 661 (9th Cir. 1998).
“However, a court need not accept as true unreasonable inferences, unwarranted deductions of
fact, or conclusory legal allegations cast in the form of factual allegations.” Summit Technology,
922 F. Supp. at 304 (citing Western Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981) cert.
denied, 454 U.S. 1031 (1981)).

“Generally, a district court may not consider any material beyond the pleadings in ruling on a
Rule 12(b)(6) motion.” Hal Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555 n. 19
(9th Cir. 1990) (citations omitted). However, a court may consider material which is properly
submitted as part of the complaint and matters which may be judicially noticed pursuant to Federal
Rule of Evidence 201 without converting the motion to dismiss into a motion for summary
judgment. See, e.g., id.; Branch v. Tunnel, 14 F.3d 449, 454 (9th Cir. 1994).

Where a motion to dismiss is granted, a district court must decide whether to grant leave to
amend. Generally, the Ninth Circuit has a liberal policy favoring amendments and, thus, leave to
amend should be freely granted. See, e.g., DeSoto v. Yellow Freight System, Inc., 957 F.2d 655,
658 (9th Cir. 1992). However, a Court does not need to grant leave to amend in cases where the
Court determines that permitting a plaintiff to amend would be an exercise in futility. See, e.g.,
Rutman Wine Co. v. E. & J. Gallo Winery, 829 F.2d 729, 738 (9th Cir. 1987) (“Denial of leave to
amend is not an abuse of discretion where the pleadings before the court demonstrate that further
amendment would be futile.”).

Page 12 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 13 of 14 Page ID #:739

B. Discussion

1. Defendant’s Anti-SLAPP Motion

Defendant seeks to strike Plaintiff’s right of publicity claims alleged in Plaintiff’s fourth claim
for relief for violation of the common law right of publicity and fifth claim for relief for violation of
statutory right of publicity under California Civil Code § 3344.

California recognizes a common law right of publicity that protects individuals from the
unauthorized commercial exploitation of their identities by others. A defendant violates an
individual’s common law right of publicity when that defendant: (1) use the plaintiff’s identity; (2) to
the defendant’s commercial or other advantage; (3) without consent; and (4) cause injury. White v.
Samsung Electronics America, Inc., 971 F.2d 1395, 1397 (9th Cir. 1992) (citing Eastwood v.
Superior Court, 149 Cal. App. 3d 409, 417 (1983)). The Ninth Circuit has recognized that virtually
any use of an individual’s identity for commercial purposes can violate one’s right of publicity. See
Wendt v. Host Intern., Inc., 197 F.3d 1284 (9th Cir. 1999) (holding that use of animatronic robots at
an airport bar improperly invoked the identities of two actors from the television series “Cheers”);
Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (holding that use of “sound-alike” singer in
commercial violated Tom Waits’ California common law right of publicity); White v. Samsung
Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) (use of a robot on a game show set,
turning letters, violated Vanna White’s common law right of publicity); Motschenbacher v. R.J.
Reynolds Tobacco Co., 498 F. 2d 821 (9th Cir. 1974) (use of race car driver’s car in ad violated his
right of publicity even though driver’s face not visible because the public could identify him from his
car). California’s statutory right of publicity is similar to but narrower than the common law right of
publicity because it requires that the defendant “knowingly” use the plaintiff’s “name, voice,
signature, photograph or likeness,” while the use of any other recognizable indications of the
plaintiff’s identity are not covered by the statute. Wendt v. Host Intern., Inc., 125 F.3d 806, 811 (9th
Cir. 1997).

In the First Amended Complaint, Plaintiff alleges that Defendant violated his common law
and statutory right of publicity by knowingly using his name and likeness to promote Defendant’s
band and Defendant’s upcoming album, which will include sound recordings that do not involve
Plaintiff. Plaintiff also alleges that this use of his name and likeness without his consent was for
commercial purposes, namely to promote music that directly competes with Plaintiff. In addition,
Plaintiff alleges that he has been injured by losing control over how his name is being used, by his
name being used to promote a musician who has no business relationship or association with
Plaintiff, and by his name being used to promote an album in which he has no interest and which is
in competition with his own album, which harms Plaintiff’s reputation and the goodwill that he has
carefully developed over a 40-year music career.

The Court concludes that Defendant’s motion to strike should be denied because Plaintiff
has demonstrated that there is at least a “reasonable probability” that he will prevail on his right of
publicity claims. For example, Plaintiff has demonstrated Defendant’s unauthorized use of
Plaintiff’s name and likeness on Twitter and Facebook to promote Defendant, Defendant’s band,
and Defendant’s upcoming album. This unauthorized commercial use of Plaintiff’s name and
likeness in an effort to mislead and confuse the public by capitalizing on Plaintiff’s name and
reputation demonstrates that Plaintiff will likely prevail on his right of publicity claims. Although
Defendant argues that he was a joint author of the four recorded vocal performances (which

Page 13 of 14 Initials of Deputy Clerk sr


Case 2:18-cv-09543-JFW-SS Document 64 Filed 03/13/19 Page 14 of 14 Page ID #:740

Plaintiff disputes), even if he is able to prevail on this argument, it would not bar Plaintiff’s right of
publicity claims.

Accordingly, Defendant’s motion to strike Plaintiff’s right of publicity claims pursuant to


California’s Anti-SLAPP statute is DENIED.

2. Defendant’s Motion to Dismiss Pursuant to Rule 12(b)(6)

Defendant argues that Plaintiff’s Lanham Act claims must be dismissed pursuant to Rule
12(b)(6) because Defendant made either a “classic” or “nominative” fair use of Plaintiff’s registered
and common law marks and likeness. The Court finds that these issues are more appropriately
resolved on a motion for summary judgment. Accordingly, Defendant’s motion to dismiss Plaintiff’s
Lanham Act claims pursuant to Rule 12(b)(6) is DENIED.

3. Defendant Failed to File a Proposed Statement of Decision

The Court’s Standing Order, filed on November 14, 2018 [Docket No. 14] provides in
relevant part: “Within two days of the deadline for filing the Reply, each party shall lodge a
Proposed Statement of Decision, which shall contain a statement of the relevant facts and
applicable law with citations to case law and the record.” Standing Order, § 5(f). The deadline for
filing the Reply was February 25, 2019, and, thus, the deadline for filing the Proposed Statement of
Decision was February 27, 2019. See L.R. 7-10. Defendant failed to timely file and still has not
filed the required Proposed Statement of Decision.

Pursuant to Local Rule 7-12, “[t]he failure to file any required document, or the failure to file
it within the deadline, may be deemed consent to the granting or denial of the motion . . . .” In
addition, the Standing Order expressly provides that the “[f]ailure to lodge the Proposed Statement
will result in the denial or granting of the motion.” Standing Order, § 5(f). Accordingly, pursuant to
Local Rule 7-12 and the Standing Order, Defendant’s Motion to Strike is also DENIED for
Defendant’s failure to file the Proposed Statement of Decision.

IV. Conclusion

For all the foregoing reasons, Defendant’s Motion to Dismiss and Motion to Strike are
DENIED.

IT IS SO ORDERED.

Page 14 of 14 Initials of Deputy Clerk sr