nike motion to dismiss 'jumpman' lawsuit

Jon P. Stride, OSB #903887Direct Dial: 503.802.2034Direct Fax: 503.972.3734Email: [email protected]

Eric Beach, OSB #105783Direct Dial: 503.802.2182Direct Fax: 503.972.3882Email: [email protected]

TONKON TORP LLP1600 Pioneer Tower888 SW Fifth AvenuePortland, OR 97204-2099

Dale Cendali (pro hac vice)Direct Dial: 212.446.4846Fax: 212.446.4900Email: [email protected]

KIRKLAND & ELLIS LLP601 Lexington AvenueNew York, NY 10022-4611P. Daniel Bond (pro hac vice)Direct Dial: 312.862.7026Direct Fax: 312.862.2200Email: [email protected]

KIRKLAND & ELLIS LLP300 N. LaSalle StreetChicago, IL 60654

Attorneys for Defendant Nike, Inc.

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

(PORTLAND DIVISION)

JACOBUS RENTMEESTER, Civil No. 3:15-cv-00113-MO

v.

NIKE, INC.,

Plaintiff,

Defendant.

NIKE'S MOTION TO DISMISSAND SUPPORTINGMEMORANDUM

Oral Argument Requested

NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM

Case 3:15-cv-00113-MO Document 25 Filed 03/16/15 of 50

TABLE OF CONTENTS

Page

LOCAL RULE 7-1(a) CERTIFICATION 1

MOTION 1

PRELIMINARY STATEMENT 1

BACKGROUND 3

ARGUMENT 6

I. THE STANDARD FOR A MOTION TO DISMISS. 7

II. SUBSTANTIAL SIMILARITY IS REQUIRED TO ESTABLISHCOPYRIGHT INFRINGEMENT 8

III. SUBSTANTIAL SIMILARITY IN CASES INVOLVINGPHOTOGRAPHS OF THE SAME SUBJECT IS A HEIGHTENEDSTANDARD 10

A. Photographs of the Same Subject Cannot Be Substantially Similar UnlessThey Are Virtually Identical. 11

B. There Is No Copyright Infringement If the Only Similarities Between TwoPhotographs Relate to Unprotectable Elements 14

C. Poses of Subjects Are Generally Not Protected by Copyright. 17

D. If No Substantial Similarity Exists, a Photograph Is Not Infringing Even Ifthe Defendant Intentionally Tried to Recreate It. 21

IV. RENTMEESTER CANNOT STATE A CLAIM FOR COPYRIGHTINFRINGEMENT BECAUSE THE NIKE PHOTO AND JUMPMANLOGO ARE NOT SUBSTANTIALLY SIMILAR TO THERENTMEESTER PHOTO 23

A. Numerous Components of the Rentmeester Photo Are Unprotectable. 23

B. The Nike Photo Is Not Objectively Similar to the Rentmeester Photo 25

C. The Jumpman Logo Is Not Objectively Similar to the Rentmeester Photo 30

V. RENTMEESTER CANNOT STATE A CLAIM FOR INDIRECTCOPYRIGHT INFRINGEMENT 32

PAGE i - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


Page

VI. RENTMEESTER CANNOT STATE A CLAIM UNDER THE DMCA. 32

VII. RENTMEESTER CANNOT STATE A CLAIM FOR CERTAINDAMAGES 36

A. Rentmeester Is Not Entitled to Statutory Damages or Attorneys' Fees forCopyright Infringement. 36

B. Rentmeester's Claim for Actual Damages and Profits Prior to January 22,2012 Is Time Barred. 38

C. Rentmeester Is Not Entitled to Punitive Damages 39

CONCLUSION 39

PAGE ii - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


TABLE OF AUTHORITIES

Cases

Agence France Presse v. Morel,769 F. Supp. 2d 295 (S.D.N.Y. Jan. 14, 2011)

Alexander v. Murdoch,2011 WL 2802923 (S.D.N.Y. July 14, 2011)

Page(s)

35

8

Allen v. Scholastic, Inc.,739 F. Supp. 2d 642 (S.D.N.Y. 2011) 8

Apple Computer, Inc. v. Microsoft Corp.,35 F.3d 1435 (9th Cir. 1994) 9,10

Ashcroft v. Iqbal,556 U.S. 662 (2009) 7,33,34

Bell Atlantic Corp. v. Twombly,550 U.S. 544 (2007) 7,33,34

Bill Diodato Photography, LLC v. Kate Spade, LLC,388 F. Supp. 2d 382 (S.D.N.Y. 2005) 19,20,24,25

Brown v. Stroud,C-08-02348, 2011 WL 2600661 (N.D. Cal. June 30, 2011) 35

Cable v. Agence France Presse,728 F. Supp. 2d 977 (N.D. Ill. 2010) 35

Campbell v. Walt Disney Co.,718 F. Supp. 2d 1108 (N.D. Cal. 2010) 8

Carranza v. Universal Music Grp., Inc.,536 F. App'x 734 (9th Cir. 2013) 37

Christenson v. FLTI,2013 WL 5781276 (D. Or. Oct. 23, 2013) 7

Christianson v. West Pub. Co.,149 F.2d 202 (9th Cir. 1945) 3, 9

Cory Van Rijn, Inc. v. Cal. Raisin Advisory Bd.,697 F. Supp. 1136 (E.D. Cal. 1987) 8

PAGE iii - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


Page(s)

Data E. USA, Inc. v. Epyx, Inc.,862 F.2d 204 (9th Cir. 1988) 10

Derek Andrew, Inc. v. Poof Apparel Corp.,528 F.3d 696 (9th Cir. 2008) 37

Design Art v. Nat'l Football League Properties, Inc.,2000 WL 1919787 (S.D. Cal. Nov. 27, 2000) 39

DuckHole, Inc. v. NBC Universal Media LLC,2013 WL 5797279 (C.D. Cal. Sept. 6, 2013) 8

Erickson v. Blake,839 F. Supp. 2d 1132 (D. Or. 2012) passim

Ets-Hokin v. Skyy Spirits, Inc.,323 F.3d 763 (9th Cir. 2003) 4, 11, 12, 13

Fahmy v. Jay-Z,835 F. Supp. 2d 783 (C.D. Cal. 2011) 38

Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc.,499 U.S. 340 (1991) 8, 9

Fleming v. Miles,181 F. Supp. 2d 1143 (D. Or. 2001) 37

Fox v. Hildebrand,2009 WL 1977996 (C.D. Cal. July 1, 2009) 35

Funky Films, Inc. v. Time Warner Entm't Co., L.P.,462 F.3d 1072 (9th Cir. 2006) 10

Gadh v. Spiegel,2014 WL 1778950 (C.D. Cal. April 2, 2014) 8

Golan v. Holder,132 S. Ct. 873 (2012) 21, 23

Goldman v. Healthcare Mgmt. Sys., Inc.,559 F. Supp. 2d 853 (W.D. Mich. 2008) 33

Gordon v. McGinley,2011 WL 3648606 (S.D.N.Y. Aug. 18, 2011) passim

Harney v. Sony Pictures Television, Inc.,704 F.3d 173 (1st Cir. 2013) 21, 22, 23, 29

PAGE iv - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


Page(s)

Horgan v. Macmillan, Inc.,789 F.2d 157 (2d Cir. 1986) 24

Hughes Aircraft Co. v. U.S. ex rel. Schumer,520 U.S. 939 (1997) 33

Hunt v. Everitt,91 F. App'x 584 (9th Cir. 2004) 37

Kaplan v. Stock Market Photo Agency, Inc.,133 F. Supp. 2d 317 (S.D.N.Y 2001) 20, 21, 27, 29

Krisel v. Contempo Homes, Inc.,2006 WL 5668181 (C.D. Cal. Sept. 27, 2006) 39

Landgraf v. USI Film Prods.,511 U.S. 244 (1994) 33

Lee v. City of L.A.,250 F.3d 668 (9th Cir. 2001) 3, 7

Litchfield v. Spielberg,736 F.2d 1352 (9th Cir. 1984) 9

Mannion v. Coors Brewing Co.,377 F. Supp. 2d 444 (S.D.N.Y. 2005) 20

Masterson Mktg., Inc. v. KSL Recreation Corp.,495 F. Supp. 2d 1044 passim

MDY Indus., LLC v. Blizzard Entm't, Inc.,629 F.3d 928 (9th Cir. 2010) 35

Mercado Latino, Inc. v. Indio Products, Inc.,2013 WL 2898224 (C.D. Cal. June 12, 2013) 8

Mestre v. Vivendi Universal U.S. Holding Co.,2005 WL 1959295 (D. Or. Aug. 15, 2005) 10, 24, 25

Muromura v. Rubin Postaer & Assoc.,2014 WL 4627099 (C.D. Cal. Sept. 16, 2014) passim

Murphy v. Millennium Radio Grp. LLC,650 F.3d 295 (3d Cir. 2011) 35

Oboler v. Goldin,714 F.2d 211 (2d Cir. 1983) 39

PAGE v - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


Oddo v. Ries,743 F.2d 630 (9th Cir. 1984)

Olson v. Tenney,466 F. Supp. 2d 1230 (D. Or. 2006)

Perfect 10 v. Visa Intl Serv. Assoc.,494 F.2d 788 (9th Cir. 2007)

Page(s)

36

9

32

Peter F. Gaito Architecture LLC v. Simone Dev. Corp.,602 F.3d 57 (2d Cir. 2010) 30

Petrella v. Metro-Goldwyn-Mayer, Inc.,134 S. Ct. 1962 (2014) 38

Precision Automation, Inc. v. Tech. Servs., Inc.,628 F. Supp. 2d 1244 (D. Or. 2008) 37

Reece v. Island Treasures Art Gallery, Inc.,468 F. Supp. 2d 1197 (D. Haw. 2006) 17, 18,25,29

Reinicke v. Creative Empire, LLC,2013 WL 275900 (S.D. Cal. Jan. 24, 2013) 39

Rivas v. Rail Delivery Serv., Inc.,423 F.3d 1079 (9th Cir. 2005) 33

Roley v. New World Pictures, Ltd.,19 F.3d 479 (9th Cir. 1994) 38

Saregama India Ltd. v. Young,2003 WL 25769784 (C.D. Cal. Mar. 11, 2003) 39

Satava v. Lowry,323 F.3d 805 (9th Cir. 2003) 10

SHL Imaging, Inc. v. Artisan House, Inc.,117 F. Supp. 2d 301 (S.D.N.Y. 2000) 11

Sid & Marty Kroft Tel. Prods., Inc. v. McDonald's Corp.,562 F.2d 1157 (9th Cir. 1977). 9

Smith & Hawken, Ltd. v. Gardendance, Inc.,2004 WL 2496163 (N.D. Cal. Nov. 5, 2004) 39

Textile Secrets Intern., Inc. v. Ya-Ya Brand, Inc.,524 F. Supp. 2d 1184 (C.D. Cal. 2007) 35

PAGE vi - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


Thomas v. Walt Disney Co.,337 Fed. App'x 694 (9th Cir. 2009)

United States ex rel. Anderson v. Northern Telecom, Inc.,52 F.3d 810 (9th Cir. 1995)

Page(s)

7

33

United States v. Elcom, Ltd.,203 F. Supp. 2d 1111 (N.D. Cal. 2002) 34

Watermark Publishers v. High Tech. Systems Inc.,44 U.S.P.Q.2d 1578 (S.D. Cal. 1997) 38

Zella v. E. W. Scripps Co.,529 F. Supp. 2d 1124 (C.D. Cal. 2007) 8

Statutes

17 U.S.C. § 102 10

17 U.S.C. § 1202 32

17 U.S.C. § 1203 38

17 U.S.C. § 412 36

17 U.S.C. § 504 9,38

17 U.S.C. § 507(b) 38

Other Authorities

U.S. Copyright Office,Compendium of U.S. Copyright Office Practices § 805.5 (3d ed. 2014) 24

Rules

Fed. R. Civ. P. 12 1, 2

PAGE vii - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


LOCAL RULE 7-1(a) CERTIFICATION

Counsel for Defendant and Plaintiff have conferred by telephone and Plaintiff opposes

Defendant's Motion to Dismiss.

MOTION

Nike moves to dismiss the Complaint filed by Rentmeester for failure to state a claim

upon which relief can be granted. See Fed. R. Civ. P. 12(b)(6).

PRELIMINARY STATEMENT

Plaintiff Jacobus Rentmeester's ("Rentmeester") Complaint, alleging copyright

infringement by Nike, Inc. ("Nike), presents exactly the sort of meritless case that motions to

dismiss are intended to address. This Court need look no further than the photographs and logo

themselves to find that they are not substantially similar as a matter of copyright law.

Rentmeester alleges that a photograph of the legendary Michael Jordan dunking a

basketball, which Nike created over thirty years ago, and the iconic "Jumpman" logo, which

Nike has used as the face of its Brand Jordan for the last twenty-five years, infringe

Mr. Rentmeester's copyright in a photograph taken in 1984, which also features Michael Jordan

dunking a basketball.

Rentmeester's claims are baseless. Ninth Circuit law is clear that copyright protection for

photographs is thin and that infringement can only occur where two photographs of the same

subject are virtually identical. Rentmeester falls far short of that standard here given the

significant—and self-evident differences in the mood, lighting, setting, expression, color, style,

and overall look and feel of his photograph, on the one hand, and Nike's photograph and logo, on

the other. Indeed, Rentmeester's decades-long delay in filing suit speaks volumes regarding his

own assessment of the merits. Simply put, Rentmeester does not have a monopoly on

PAGE 1 - NIKE'S MOTION TO DISMISS AND SUPPORTING MEMORANDUM


Mr. Jordan, his appearance, his athletic prowess, or images of him dunking a basketball—his

copyright begins and ends with his specific original expression of that subject and theme. As

explained below, Rentmeester cannot show that Nike copied any protected expression as a matter

of law and this Court should dismiss his infringement claims.

Rentmeester also alleges that Nike violated the Digital Millennium Copyright Act

("DMCA") by removing unidentified copyright management information ("CMI") from his

photo. But Rentmeester's inability to state a claim for copyright infringement is fatal to his

DMCA claim—Nike is free to claim copyright protection over its own original works, and is not

required to credit Rentmeester for works he did not create. Moreover, Rentmeester's DMCA

claim is premised on actions that Nike allegedly took long before that statute came into effect.

Regardless, Rentmeester's DMCA claim is insufficiently plead—he does not allege what CMI

was included on (much less removed from) his photo or the required nexus between Nike's

alleged conduct and the underlying purposes of the DMCA.

In addition, Rentmeester asserts a variety of overreaching damages demands, which also

must be dismissed. First, he improperly seeks statutory damages and attorney's fees for

copyright infringement, which are unavailable to him as a matter of law because he did not

obtain a registration within the prescribed time. Second, Rentmeester seeks actual damages and

profits dating back to the 1980's—but the statute of limitations for actions under the Copyright

Act is clear that a plaintiff is only entitled to damages for the three years preceding the filing of a

complaint. Finally, Rentmeester improperly seeks punitive damages, which are not available for

his claims.

Accordingly, Nike respectfully seeks a dismissal of all of Rentmeester's claims under

Rule 12(b)(6).



BACKGROUND

Rentmeester alleges that in 1984, he created a photograph of Michael Jordan dunking a

basketball (the "Rentmeester Photo"), which was published in LIFE magazine. [Dkt. 1 TT 2, 26.]Nike has provided a copy of the issue of LIFE containing the Rentmeester Photo for the Court's

reference. (Declaration of Dale Cendali ("Cendali Decl.") at Exhibit A.) For the convenience

of the Court, a smaller version of the Rentmeester Photo is provided below:

Rentmeester did not register his copyright in the Rentmeester Photo until December 18, 2014,

more than thirty years after it was taken and shortly before he filed the Complaint. [Id. ¶ 29.]

On a motion to dismiss, courts can consider materials that are incorporated by reference inthe complaint. See Lee v. City of L.A., 250 F.3d 668, 688 (9th Cir. 2001); see alsoChristianson v. West Pub. Co., 149 F.2d 202, 203 (9th Cir. 1945) ("[W]hen the copyrightedwork and the alleged infringement are both before the court, capable of examination andcomparison, non-infringement can be determined on a motion to dismiss").



Rentmeester alleges that Nike had access to the Rentmeester Photo, and at some point

"[b]etween August 1984 and February 1985" Nike "produce[d] a nearly identical photograph" of

Mr. Jordan dunking a basketball. [Id. ¶¶ 5, 31, 34.]. Rentmeester also alleges that the Nike

Photo "reproduces several original elements of the [Rentmeester] Photo" and was used in

"billboards, posters, and other promotional materials." [Dkt. 1 Ifirf 5, 35, 3912 Nike has provided

a copy of the poster-size version of the Nike Photo as it appeared in the poster for the Court's

consideration. (Cendali Decl. at Ex. B.) For the convenience of the Court, a smaller version is

depicted below:

2 Rentmeester also alleges that he entered into a series of license agreements with Nikesomehow related to the Rentmeester Photo. [Id. at TR 32, 38.] While Nike disputesRentmeester's characterizations of those documents, the existence or substance of thoseagreements is immaterial to the issue of substantial similarity. These agreements only relateto purported licenses to Nike to use the Rentmeester Photo (described as the "image 'MichaelJordan') [Dkt. 1. at Ex. A, B.] Any purported license by Nike of the Rentmeester Photo hasno bearing on substantial similarity. See, e.g., Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763,765 (9th Cir. 2003) (granting summary judgment that two photographs were not substantiallysimilar despite allegation that plaintiff "took a series of photographs . . . for use in a [Skyy]marketing campaign" and Skyy "later hired two other photographers" to take similarphotographs); Muromura v. Rubin Postaer & Assoc., 2014 WL 4627099, *1 (C.D. Cal. Sept.16, 2014) (granting motion to dismiss due to lack of substantial similarity between plaintiff'sphotograph and defendant's television advertisement even though defendant allegedly"rented one of plaintiff s two available works" and subsequently created allegedly similarworks and later offered to pay her a "creative consultant fee); Masterson Mktg., Inc. v. KSLRecreation Corp., 495 F. Supp. 2d 1044, 1047 (granting summary judgment that twophotographs were not substantially similar even though defendant allegedly "terminated [a]licensing agreement with plaintiff . . . [and] hired another photographer . . . to duplicateplaintiffs original photo"). Rentmeester does not allege a breach of these agreements byNike, further demonstrating their irrelevance to the instant motion.



Rentmeester further alleges that in 1987, Nike began using a logo based on Mr. Jordan's

silhouette in the Nike Photo (the "Jumpman Logo") for its Air Jordan athletic shoes. [Id. ¶ 40,

44, 47.] The Jumpman Logo is depicted below:



[Dkt. 1 1140.] Rentmeester claims that the Jumpman Logo infringes because it is "nearly

identical" to the "silhouette of Mr. Jordan" in the Rentmeester Photo. [Id. ¶ 40-41.] Notably,

however, Rentmeester never created a silhouette of his 1984 photo—his "similarly stylized"

silhouette was created solely for purposes of this Complaint. [Id. ¶ 9, 41.]

Rentmeester admits that he was aware of the Nike Photo in 1985 and that the Jumpman

Logo was used "extensively to market [Nike's] Jordan products" and was an "integral part of

Nike's marketing strategy" [Dkt. 1 ¶¶ 9, 11]—yet he waited decades to bring this lawsuit for

direct, contributOry, and vicarious infringement and violation of the DMCA.

Rentmeester also alleges that Nike violated the DMCA when it created the Nike Photo

and Jumpman Logo by "intentionally remov[ing] and/or alter[ing]" unspecified CMI associated

with the Rentmeester Photo. [Id. 1177.]

ARGUMENT

As discussed in further detail below, Rentmeester cannot state a claim for copyright

infringement because the Nike Photo and the Jumpman Logo are not substantially similar to the

Rentmeester Photo as a matter of law. Because Rentmeester cannot state a claim for direct

infringement, his claims for indirect infringement also fail. Moreover, Rentmeester's DMCA

claim must be dismissed because it is both legally unsupportable and inadequately plead. Nike's

alleged removal of CMI occurred long before the DMCA took effect, and in any case,

Rentmeester fails to allege that CMI was present on the copies of the Rentmeester Photo that he

claims Nike used, or that Nike removed or altered such information. Nor does Rentmeester

claim that Nike's alleged conduct has any nexus with the Internet or e-commerce, which courts

have held is required for such a claim. Finally, many of Rentmeester's damages claims fail for

independent reasons as he is not entitled to statutory damages, punitive damages, or attorneys'



fees for his copyright claims, and the statute of limitations bars any effort by Rentmeester to

collect actual damages or profits attributable to infringement or purported DMCA violations

prior to January 22, 2012 (i.e., three years before filing his Complaint).

I. THE STANDARD FOR A MOTION TO DISMISS.

To survive a motion to dismiss pursuant to Rule 12(b)(6), the Complaint "must include

sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'"

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S.

544, 570 (2007)). While the Court must accept as true all well-pleaded factual allegations, the

Court need not accept the plaintiff's legal conclusions. Erickson v. Blake, 839 F. Supp. 2d 1132,

1134 (D. Or. 2012). When considering a Rule 12(b)(6) motion, the Court may consider matters

and materials contained within the parties' pleadings, as well as materials that are attached to the

complaint and materials on which the plaintiff's case necessarily relies, where the authenticity of

those materials is not disputed. Lee v. City of L.A., 250 F.3d 668, 688 (9th Cir. 2001).

Courts, including those in the Ninth Circuit, routinely grant motions to dismiss copyright

infringement claims where no substantial similarity exists. See Thomas v. Walt Disney Co., 337

Fed. App'x 694 (9th Cir. 2009) (affirming grant of motion to dismiss because "the district court

properly entered judgment for defendants because, as a matter of law, [plaintiff s] literary work

was not substantially similar to defendants' animated movie). This is true whether the works

compared are photographs, novels, screenplays, musical compositions or other copyrighted

works.3

3 See also Erickson, 839 F. Supp. 2d at 1138 (granting motion to dismiss copyrightinfringement claim because "what is original about that expression [of plaintiff's musicalwork]—the cadence, flourishes, harmonies, structure, and so on—is not virtually identical, oreven particularly similar, to [defendant's musical work]"); Christenson v. FLTI, 2013 WL5781276, at *8 (D. Or. Oct. 23, 2013) (granting motion to dismiss copyright infringement



II. SUBSTANTIAL SIMILARITY IS REQUIRED TO ESTABLISH COPYRIGHTINFRINGEMENT.

To state a claim for infringement, a plaintiff must allege (1) ownership of a valid

copyright; and (2) unauthorized copying of protectable material. See Feist Publ'ns, Inc. v. Rural

Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). For unauthorized copying, a plaintiff must allege

claim related to competing manuscripts where "plaintiff s copyright is thin . . . [and] there isno argument or evidence indicating that any remaining similarities are virtually identical");Muromura, 2014 WL 4627099, at *3-*4 (granting motion to dismiss complaint alleging thatdefendant's television commercial infringed plaintiffs photographs because "Defendants'alleged infringing work is not substantially similar, let alone virtually identical, to [Plaintiff swork]"); Gadh v. Spiegel, 2014 WL 1778950, at * 4 at n. 6 (C.D. Cal. April 2, 2014)(granting motion to dismiss claim that the movie infringed plaintiffs screenplay wherealleged similarities related to "nothing more than an unprotected idea"); DuckHole, Inc. v.NBC Universal Media LLC, 2013 WL 5797279, at *5-*9 (C.D. Cal. Sept. 6, 2013) ("TheNinth Circuit has long held that non-infringement can be determined on a motion to dismiss"and "each factor of the extrinsic test militates so strongly in defendants' favor that noreasonable jury could conclude that [the works at issue] are substantially similar"); MercadoLatino, Inc. v. Indio Products, Inc., 2013 WL 2898224, at *2-*3 (C.D. Cal. June 12, 2013)(granting motion to dismiss where plaintiff "seeks protection for artwork with the`appearance of cathedral window-shaped stained glass" and such design was "a widespreadand longstanding staple of devotional iconography, to which [plaintiff] can lay no copyrightclaim"); Allen v. Scholastic Inc., 739 F. Supp. 2d 642, 664-65 (S.D.N.Y. 2011) (grantingmotion to dismiss claim that defendant's Harry Potter novel infringed plaintiffs "Willie theWizard" novel because, inter alia, "wizard versions of real-life institutions . . . are scenes afaire relating to the unprotectable theme of a wizard society" and thus "there can be nosubstantial similarity"); Alexander v. Murdoch, 2011 WL 2802923 (S.D.N.Y. July 14, 2011)(granting motion to dismiss claim that defendant's show "Modern Family" infringedplaintiff s screenplay where similarities related only to "uncopyrightable stock characters"and "the choice of Los Angeles as a setting"); Campbell v. Walt Disney Co., 718 F. Supp. 2d1108, 1115 (N.D. Cal. 2010) (granting motion to dismiss claim that defendant's animatedfilm infringed plaintiffs screenplay where "the two works are not substantially similar as amatter of law" and "this defect cannot be cured by amendment"); Zella v. E. W. Scripps Co.,529 F. Supp. 2d 1124, 1138-39 (C.D. Cal. 2007) (granting motion to dismiss claim thatdefendant's cooking/talk show infringed plaintiff s treatment for a cooking/talk showbecause allowing suit to proceed "would give Plaintiffs a monopoly over . . . genericelements expressed as a television talk show featuring celebrity guests and cooking"); CoryVan Rijn, Inc. v. Cal. Raisin Advisory Bd., 697 F. Supp. 1136, 1144 (E.D. Cal. 1987)(granting motion to dismiss because defendant's use of "Claymatic Raisin" characters wasnot substantially similar to plaintiffs "Raisin People" because "there are no extrinsicsimilarities between the two works other than the common idea of an anthropomorphicraisin").



facts that demonstrate that the defendant had access to the plaintiff's work and that the works at

issue are "substantially similar."4 Olson v. Tenney, 466 F. Supp. 2d 1230, 1235 (D. Or. 2006)

(citing Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984)).

In order to establish "substantial similarity" in the Ninth Circuit, a plaintiff must

demonstrate that the allegedly infringing work is both objectively similar (the "extrinsic test")

and subjectively similar (the "intrinsic test") to the copyrighted work. Sid & Marty Kroft Tel.

Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977) superseded in part on

other grounds by 17 U.S.C. § 504(b). As noted above, whether there is sufficient objective

similarity under the extrinsic test may be decided by the court as a matter of law on a motion to

dismiss by viewing the works. See, e.g., Christianson, 149 F.2d at 203. When applying the

extrinsic test, courts must "analytically dissect the works to evaluate any similarities on an

element-by-element basis." Erickson, 839 F. Supp. 2d at 1136 (citing Apple Computer, Inc. v.

Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994)).5

Not every constituent element of a copyrighted work is protected by copyright. Feist,

499 U.S. at 348. As such, in applying the extrinsic test and assessing whether the works are

objectively similar, courts must consider whether each alleged similarity between the works

relates to a protected or to an unprotected element. See Apple Computer, 35 F.3d at 1443.

4

5

Solely for the purposes of this motion, Nike does not dispute Rentmeester's purportedownership of a valid copyright in the Rentmeester Photo or his claim that Nike had access tothe same. As discussed below, Nike moves to dismiss the copyright claim on the groundsthat the works are not substantially similar.

Because the question of objective similarity under the extrinsic test is a threshold questionthat this Court can resolve on a motion to dismiss, it need not address the intrinsic test. See,e.g., Erickson, 829 F. Supp. 2d at 1135-36 ("Whether there is sufficient objective similarityunder the extrinsic test . . . may be decided by the court as a matter of law on a motiondismiss" so there is no need to analyze "Mlle intrinsic test, which is based on the ordinaryperson's subjective impressions" on a motion to dismiss).



Unprotected elements of a copyrighted work can include ideas, as opposed to expression, and

expressions that are indistinguishable from (or have merged with) the underlying ideas.

Erickson, 839 F. Supp. 2d at 1136 (citing 17 U.S.C. § 102(b) ("In no case does copyright

protection for an original work of authorship extend to any idea . . . [or] concept.")); see also

Data E. USA, Inc. v. Epyx, Inc., 862 F.2d 204, 208 (9th Cir. 1988) ("To the extent the similarities

between plaintiffs and defendant's works are confined to ideas and general concepts, these

similarities are noninfringing."). As this Court itself has observed, "it is the expression of ideas

that receive protection and not the ideas themselves . . [and] [s]imilarities derived from the use

of common ideas cannot be protected; otherwise, the first to come up with an idea will corner

the market." Mestre v. Vivendi Universal U.S. Holding Co., 2005 WL 1959295, at *6 (D. Or.

Aug. 15, 2005) (citing Apple Computer, 35 F.3d at 1443) (emphasis added). Likewise, copyright

protection also does not extend to "expressions that are standard, stock, or common to a

particular subject matter or medium" referred to as "scenes a faire." Erickson, 839 F. Supp. 2d

at 1136 (citing Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003)).

Once any unprotected ideas, stock elements, or scenes a faire have been "filter[ed] out

and disregard[ed]," the Court considers the scope of the copyrighted work. Funky Films, Inc. v.

Time Warner Entrn't Co., L.P., 462 F.3d 1072, 1077 (9th Cir. 2006). "If few similarities remain

after unprotected elements are set aside . . . , the scope of the copyright is 'thin,' which means

that it only protects the copyrighted work from virtually identical copying." Erickson, 839 F.

Supp. 2d at 1138.

III. SUBSTANTIAL SIMILARITY IN CASES INVOLVING PHOTOGRAPHS OFTHE SAME SUBJECT IS A HEIGHTENED STANDARD.

In the context of photographs, additional principles factor in. Most significantly, the

standard is more exacting and a plaintiff must show that two photographs of the same subject are



"virtually identical" and that the similarities are not limited to unprotectable elements. Ets-

Hokin, 323 F.3d at 766. In addition, poses of subjects are generally not protected by copyright;

rather, only the particular expression of the poses is protectable. Lastly, a plaintiff's claim that a

defendant intended to recreate or mimic another photograph has no bearing on substantial

similarity—the test is not what a plaintiff believes a defendant did or did not do, it is simply

whether two photographs of the same subject are virtually identical.

A. Photographs of the Same Subject Cannot Be Substantially Similar UnlessThey Are Virtually Identical.

In the context of photographic works, the Ninth Circuit has made clear that photographs

of the same subject are entitled to thin protection and must be "virtually identical" to find

infringement. Id. (emphasis added). "[A] photograph does not, and cannot create a copyright in

the underlying subject matter . . . and even relatively small differences in two photographs may

exclude copyright infringement." Masterson Mktg., 495 F. Supp. 2d at 1049 (emphasis added);6

see also SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301, 311 (S.D.N.Y. 2000)

(photographic works "are only protected from verbatim copying") (emphasis added).

For example, in Ets-Hokin, a photographer who photographed Skyy Vodka's "iconic blue

vodka • bottle for a marketing campaign alleged that Skyy subsequently commissioned

photographs that infringed his work. Ets-Hokin, 323 F.3d at 765. The photographs at issue in

this case are depicted below (Cendali Decl. at Ex. C at 15, 17, 52, 78):

6 While these cases involved motions for summary judgment rather than motions to dismiss,the standards are the same in either case—whether the photographs at issue are objectivelysimilar under the extrinsic test. Compare Ets-Hokin, 323 F.3d at 766 (affirming grant ofsummary judgment based solely on a review of the photographs at issue) with Erickson 839F. Supp. 2d at 1135 ("Whether there is sufficient objective similarity under the extrinsictest . . . may be decided by the court as a matter of law on a motion to dismiss").



Plaintiff Defendant

The district court granted summary judgment for Skyy, based solely on a review of the

photographs at issue, and found "the allegedly infringing photographs [were] not 'virtually

identical'" in light of the doctrines of merger and scenes a faire. Id. at 764-65. The Ninth

Circuit affirmed, finding that after "subtracting the unoriginal elements [of plaintiff s

photograph], Ets-Hokin is left with only a 'thin' copyright, which protects against only virtually

identical copying" since "the range of protectable expression is constrained both by the subject



matter idea of the photograph and the conventions of the commercial product photo shoot." Id.

at 766. Infringement could not lie since "Skyy's photographs are not virtually identical to those

of Ets-Hokin" and "differ[ed] in as many ways as possible' given the nature of the photographs:

"[t]he lighting differs; the angles differ; the shadows and highlighting differ, as do the reflections

and background." Id. Because "[t]he only constant is the [subject] itself . . . [t]he photographs

[were] not infringing." Id.

Cases involving copyright infringement claims related to photographs in this Circuit and

others apply a similarly exacting standard. For example, a district court in this Circuit applied a

similar approach in granting summary judgment of non-infringement, based largely on a review

of the photographs at issue, in Masterson Mktg., Inc. v. KSL Recreation Corp., 495 F. Supp. 2d

1044 (S.D. Cal. 2007). In Masterson, the plaintiff alleged that defendants committed copyright

infringement by "re-creat[ing] [his] photographs of Squaw Peak" after previously licensing them.

Id. at 1046. These photographs are shown below:

Plaintiff Defendant

(Cendali Decl., Ex. D at 12, 14.) In granting summary judgment for defendants, the district court

noted that "a photograph does not and cannot create a copyright in the underlying subject matter"

and that "[f]or photos of existing objects, even relatively small differences in two photos may



exclude copyright infringement." Masterson, 495 F. Supp. 2d at 1048 (emphasis added). Since

"[t]he subject matter of a photograph of a . . . scene . . . is not copyrightable," the court held that

defendant did not infringe even though the "photos were taken from the same vantage point and

are in a [similar] format." Id. at 1048-49.

B. There Is No Copyright Infringement If the Only Similarities Between TwoPhotographs Relate to Unprotectable Elements.

Further, if the only similarities between the photographs are unprotectable elements, a

plaintiff cannot establish a claim for copyright infringement. In Muromura, a court granted a

motion to dismiss a claim that Honda infringed copyrighted photographs of plaintiff's sculptures

of magnetic ferrofluids "forming a series of patterns in response to magnets" by including similar

images in its television commercials. 2014 WL 4627099, at *1. Like Rentmeester, plaintiff

alleged that Honda had rented a copy of her sculptures for a fee, and subsequently included

substantially similar images in an advertising campaign without permission. Id. These images

are reproduced below:

Plaintiffs Photographs Stills from Defendant Honda's Ad11111.1114b. 111111111111111111111.-

,



Id. at *3.7 Applying the extrinsic test, the court found that after "stripping out . .. the non-

protectable natural qualities of ferrofluid, the only elements that remain are plaintiff s artistic

choices with respect to mood, setting, pace, sequence of events, colors, and materials." Id.

(emphasis added). The court also noted important distinctions in the protected expression of

these works, including the different settings and perspectives they employed—plaintiff s photo

was "zoomed in very close" on "a featureless white container" while defendant's commercial

was set "in an empty residential room with a large skylight" and showed the ferrofluid from

various perspectives and distances. Id. at *3. As such, the district court dismissed plaintiffs

claims on the pleadings. Id. at *4.

The Southern District of New York similarly disposed of claims made by an art

photographer that another photographer committed copyright infringement by creating

photographs that were "'blatantly and subtly derivative' of Plaintiffs work" in Gordon v.

McGinley, 2011 WL 3648606 (S.D.N.Y. Aug. 18, 2011), vacated in part on other grounds by

Gordon v. McGinley, 502 Fed. Appx. 89 (2d Cir. 2012). Exemplary photos are shown below:

7 Plaintiffs photos are available on her website. Seehttp://sachikokodama.com/text/works/pf01/pf2.html (last visited March 13, 2015). Thescreenshots above are drawn from Honda's commercial, which is available online.http://www.streetfire.net/video/acura-zdx-oil-commercial_749300.htm (last visited March13, 2015).



Plaintiff

Gordon Image (Ex. A-1)

Gordon Image (Exs. A-13, A-66, A-67)

Defendant

McGinley Image (Ex. A-1)

McGinley Image (Ex. A-67)

Based on a review of the photographs attached to the complaint, the Gordon court found that the

plaintiff "failed to meet even the most basic threshold for pleading copyright infringement." Id.

at *1. As to the first pair of photographs, the court noted that while both photographs depicted

"young men suspended before a cloudy sky, each with his right arm extended and bent at an

approximate right angle . . . there the similarity ends." Id. at *3-*4. The court observed self-

evident differences in the clothing worn, the models' haircuts and expressions, and the "overall

feel" of the photos, and found that "[n]o dissection of the images is required to discern the 'utter

lack of similarity' between [them]." Id. at *4. As to the second pair of photographs, the court

found they "best illustrated" the "flaw in Plaintiffs case." Id. The court noted that aside from

the use of "outstretched arms," the photos differed significantly—plaintiffs photo depicted the

subject in front of "a crowded street scene' (creating a feel of "responsive contact" and "urban

grit"), while defendant depicted the subject behind a studio backdrop and thus appears "solitary"



by comparison. Id. at *5. The court was not moved by claims by the plaintiff that defendant

committed copyright infringement by creating photographs that may have been derivative:

The fact that McGinley's works may be ultimately derivative and unoriginal inan artistic sense—something which the Court has neither the expertise norinclination to pronounce upon—is beside the point. Most commercial advertisingis derivative in that sense, and as the Second Circuit has observed, not allcopying results in copyright infringement.' Plaintiff's apparent theory ofinfringement would assert copyright interests in virtually any figure withoutstretched arms . . Such a conception of copyright law has no basis instatute, case law, or common sense, and its application would serve toundermine rather than promote the most basic forms of artistic expression.

Id. at *7 (emphasis added). As such, the court granted a motion to dismiss plaintiff's claims.

C. Poses of Subjects Are Generally Not Protected by Copyright.

General poses, such as those used in dance, are also not copyright protected. See Reece v.

Island Treasures Art Gallery, Inc., 468 F. Supp. 2d 1197, 1206 n.14 (D. Haw. 2006) ("[I]n cases

involving photographs, 'a plaintiff's copyrights cannot monopolize the various poses used,' and

`can protect only [p]laintiff s particular photographic expression of these poses and not the

underlying ideas therefor.'").

In Reece, a district court in this Circuit found that plaintiff was unlikely to succeed on the

merits of his claim that an artist's stained glass piece infringed upon a photograph he had taken

of a hula dancer. These pictures are shown below:



Plaintiff Defendant

(Cendali Decl., Ex. E at 113.) Despite some seeming similarities, the court found that plaintiff

was unlikely to prevail on the merits because the copyright was "thin" and the works were not

"virtually identical":

In the context of 'thin' protection, [the works] are not virtually identical.Although the position of the dancer in the `ike motion is common to bothartworks and both are set on Kailua beach, they cannot be described assubstantially or virtually identical. The appearance of the dancers isdifferent . . . . The mountains and ocean dominate the upper half of the stainedglass, but not the photograph. The dancers' hairstyles are notably differentlengths and shapes. Finally, the sepia tone of the photograph is markedlycontrasted by the vibrant colors of the stained glass. . . . Undoubtably [sic], thecentral figure in each work—the dancer—is remarkably similar in both herposition toward the viewer and in her bodily proportions. These similaritiesalone, however, do not mean that 'an ordinary reasonable person' wouldperceive a substantial taking of protected expression.

Id. at 1208-09 (emphasis added). The court found that plaintiff could not show objective

similarity because "[t]he protectable elements of a photograph generally include lighting,

selection of film and camera, angle of the photograph, and determination of the precise time

when a photograph is to be taken." Id. at 1206. Because defendant did not appropriate that

expression, plaintiff was not likely to prevail on the merits of his infringement claim. Id. at

1209.



Other courts have similarly held that general poses cannot be copyrighted. In Bill

Diodato Photography, LLC v. Kate Spade, LLC, the court stated that "a pose cannot be

copyrighted . . . [and] in cases involving photographs a 'plaintiff s copyrights cannot monopolize

the various poses used,' and can protect only plaintiffs particular photographic expression of

those poses, and not the underlying ideas therefor." 388 F. Supp. 2d 382, 393 (S.D.N.Y. 2005).

In that case, the court granted summary judgment of non-infringement where a plaintiff alleged

that Kate Spade re-created his copyrighted photograph after he submitted it for their

consideration. Bill Diodato, 388 F. Supp. 2d at 394. These photographs are shown below:

Plaintiff Defendant

(Cendali Decl., Ex. F at 9, 11.) The court reasoned that much of the photographs' respective

composition was necessarily derived from the idea of "the depiction of a woman's feet as she sits

on the toilet, used as a striking device to highlight fashion accessories," including "the dominant

shapes of the woman's legs and the toilet base, . . . the inclusion of fashionable shoes and

underwear, . . . the bathroom walls in the background, . . . [and] [t]he bathroom as a setting," and

thus were "not protectable." Id. at 392. Many of the other compositional details necessarily

flowed from the idea of the idea and thus constituted scenes a faire. For example, all suchphotos would necessarily be "framed by the floor and bathroom walls," would likely be shot

"from or near the floor," and likely with "a head-on view of the toilet." Id. Setting such



unprotectable elements to one side, the court found that plaintiff could not demonstrate

infringement given the numerous differences in the photographs. While plaintiff "use[d] an

abundance of negative grey space," the defendant's photo was "brightly lit." Id. at 393. And

while plaintiff's photo selected accessories designed to "give the photograph an airy and

provocative feel . . . highlighted by their color and . . . almost planted into the backdrop of a

toilet stall," the "mood, colors, light, and depth of objects [in defendant's photograph] are

distinct and the view is tightly cropped." Id.

Similarly, in Kaplan v. Stock Market Photo Agency, Inc., a district court found that two

photographs of "a businessperson contemplating a leap from a tall building to the street below"

were not substantially similar "as a matter of law." Kaplan, 133 F. Supp. 2d 317, 328 (S.D.N.Y

2001). These photographs are reproduced below:

Plaintiff

O

DefendantThe defendants' photograph in Kaplan

See Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, 467-68 (S.D.N.Y. 2005) (containing

Kaplan photos). The court noted that since "the subject matter of both photographs is a

businessperson contemplating a leap from a tall building" the borrowing of plaintiff's

"photographs central idea, rather than [plaintiff s] expression of that idea . . . is unprotectable in

and of itself." Kaplan, 133 F. Supp. 2d at 323. Looking to the similarities, the court found that



"almost all of the similarities in expression between the two photographs are unprotectable

elements or themes that predictably flow from the underlying subject matter. Id. at 324. And

there were clearly ample differences. While the subjects were dressed "in similar attire . . . the

suits and shoes in the respective photographs are different in color." Id. at 325. Though both

photographs were "taken from a similar angle or viewpoint," that seeming similarity was

irrelevant since there were differences in the amount of the leg shown and the location of the

photos. Id. at 326. Mere similarity in perspective was immaterial since "the angle and viewpoint

used in both photographs are essential to, commonly associated with, and naturally flow from the

photograph's unprotectable subject matter." Id. Moreover, significant differences in the

background and perspective of the photos, the "lighting, shading, and color" of the photos, and

the general "mood" precluded infringement. Id. at 327.

D. If No Substantial Similarity Exists, a Photograph Is Not Infringing Even Ifthe Defendant Intentionally Tried to Recreate It.

As discussed above, substantial similarity (or virtual identity) is a necessary element of

copyright infringement. As such, courts will not find copyright infringement where there is no

substantial similarity. This is true, even if the defendant fully intended to recreate another's

photograph. As the First Circuit has stated, "it is permissible to mimic the non-copyrightable

elements of a copyrighted work." Harney v. Sony Pictures Television, Inc., 704 F.3d 173, 178

(1st Cir. 2013); see also Golan v. Holder, 132 S. Ct. 873, 890 (2012) ("[E]very idea . . . in a

copyrighted work becomes instantly available for public exploitation at the moment of

publication.").

In Harney, plaintiff took a photograph of a father and daughter leaving a Palm Sunday

service with the daughter riding piggyback on her father's shoulders, which became iconic after

the father subsequently abducted his daughter. Harney, 704 F.3d at 176-77. A few years later,



Sony made a made-for-television movie about the incident, and "recreated [plaintiff s photo]

using the actors." Id. These photographs are shown below:

Jamey Photo

Id. at 189. The First Circuit affirmed a grant of summary judgment, based solely on an analysis

of the pictures at issue, and found that while "Sony's Image and Harney's Photo are similar, as

Sony intended . . . ; the question of infringement is governed not merely by whether the copy

mimics the plaintiffs works, but also, more importantly, by whether the similarity arises from

protected elements of the original." Id. at 188 (emphasis added). The court reasoned that any

seeming similarity between the photographs was largely a result of "the piggyback pose that was

not [plaintiffs] creation and is arguably so common that it would not be protected even if

[plaintiff] had placed [them] in that position." Id. at 187 (emphasis added). There could be no

infringement given that "the two photographs are notably different in lighting and coloring,

giving them aesthetically dissimilar impacts." Id. The court further noted significant differences

in the outfits worn by the respective subjects, the background used in the respective pictures, and



the positioning of the subjects' arms. Id. at 177-78. "[G]iven the differences in background,

lighting and . . . detail . . . Sony copied little of [plaintiffs] original work." Id. at 188.

Numerous courts have endorsed this holding. See, e.g., Golan, 132 S. Ct. at 890 ("[E]very

idea . . . in a copyrighted work becomes instantly available for public exploitation at the moment

of publication."); see also Muromura, 2014 WL 4627099 at *1 (no infringement even though

plaintiff alleged that defendant rented a copy of her works and subsequently included

substantially similar images in an ad campaign without permission); Masterson, 495 F. Supp. 2d

at 1046 (no infringement though plaintiff alleged that defendant "re-created [his] photographs of

Squaw Peak" after previously licensing them).

IV. RENTMEESTER CANNOT STATE A CLAIM FOR COPYRIGHTINFRINGEMENT BECAUSE THE NIKE PHOTO AND JUMPMAN LOGO ARENOT SUBSTANTIALLY SIMILAR TO THE RENTMEESTER PHOTO.

A simple visual comparison of the works at issue here confirms that Rentmeester cannot

state a claim for copyright infringement because the works are not substantially similar. As

discussed below, after filtering out the unprotectable elements in the Rentmeester Photo, the

remaining elements are strikingly different from those in the Nike Photo and Jumpman Logo. In

other words, the works are not objectively similar and thus the claim must be dismissed.

A. Numerous Components of the Rentmeester Photo Are Unprotectable.

Before comparing the works at issue here, this Court must first "filter out and disregard

the nonprotectable elements" of the Rentmeester Photo, including all "elements of expression

that necessarily follow from an idea, or expressions that are as a practical matter, indispensable

or at least standard in the treatment of an idea." See, e.g., Muromura, 2014 WL 4627099, at *2.

Rentmeester cannot claim copyright over the "idea" of Michael Jordan dunking a

basketball. See Erickson, 839 F. Supp. 2d at 1136 ("[I]t is axiomatic that a copyright only



protects expression, not the idea behind the expression."); Mestre, 2005 WL 1959295 at *6 ("[I]t

is the expression of ideas that receive protection and not the ideas themselves.") (J. Mosman).

Nor can Rentmeester claim copyright protection in other aspects of his photo that

necessarily flow from the very idea of Michael Jordan (or any other person) dunking a

basketball. These scenes a faire include a basketball, a basketball hoop, a player wearing athletic

clothing and footwear, and a player holding the ball and jumping. Rentmeester cannot claim

protection of these elements because the idea cannot be expressed without them. Muromura,

2014 WL 4627099 at *3 ("Stripping out, then, the non-protectable natural qualities of ferrofluid,

the only elements that remain are Plaintiffs artistic choices"); see also Bill Diodato, 388 F.

Supp. 2d at 392 (plaintiff cannot claim protection over the "inclusion of fashionable shoes and

underwear" since his idea was "the depiction of a woman's feet as she sits on the toilet, used as a

striking device to highlight fashion accessories").

And, as discussed above, Rentmeester cannot claim ownership of Mr. Jordan's pose.

Indeed, Rentmeester admits that this alleged "grand-jete" pose is a well-known, long-standing

part of the canon of ballet (not his own invention). [See, e.g., Dkt. 1 at ¶ 20 (Pose in the

Rentmeester Photo was "a ballet technique known as a grand-jete,'").] Such dance poses are

not copyrightable. See Horgan v. Macmillan, Inc., 789 F.2d 157, 161 (2d Cir. 1986) ("Social

dance steps and simple routines are not copyrightable . [including] the second position of

classical ballet."); U.S. Copyright Office, Compendium of U.S. Copyright Office Practices

§ 805.5(A) (3d ed. 2014) ("Individual movements or dance steps by themselves are not

copyrightable . . . for the same reason that individual words, numbers, notes, colors, or shapes

are not protected by the copyright law.").



Rentmeester cannot claim copyright in the idea of using this pose with Mr. Jordan or any

other person. Reece, 468 F. Supp. 2d at 1206, n.14 ("pin cases involving photographs, a

`plaintiff s copyrights cannot monopolize the various poses used,' and can only protect

[p]laintiff s particular photographic expression of these poses.'"); see also Bill Diodato, 388 F.

Supp. 2d at 393 (same). At most, Rentmeester may only claim protection of his particular

expression of this well-known pose, which in this instance, resides exclusively in the four

corners of his 1984 photograph. Mestre, 2005 WL 1959295, at *6 ("[I]t is the expression of

ideas that receives protection and not the ideas themselves . . . . Similarities derived from the use

of common ideas cannot be protected.").

B. The Nike Photo Is Not Objectively Similar to the Rentmeester Photo.

After filtering out the unprotectable components discussed above and bearing in mind the

"thin" protection entitled to photographs of the same subject, a side-by-side review of these two

photographs demonstrates the numerous objective differences. These differences are even more

striking when reviewing the full-size copies of the photographs, which have been provided to

this Court as Exhibits A and B to the Cendali Declaration.

The differences between the photographs include at least the following:



Differences in the Mood: The moods expressed in the photographs are very different.

On the one hand, the Rentmeester Photo, taken in 1984 when Mr. Jordan was still a college

player preparing for the Olympics [id. ¶ 19], creates the mood of a young athlete striving (but not

guaranteed) to achieve a goal—i.e. winning an Olympic medal. This mood is expressed by

depicting Mr. Jordan as very small in relation to the photo, isolated in a deserted field with the

basketball hoop towering almost impossibly high above him and far in the distance. In the

Rentmeester Photo, Mr. Jordan looks like he is moving forward in space, trying with all his

might to reach the basket. Even the bend in Mr. Jordan's right arm gives the feeling of struggle,

as if he is using every muscle in his body to propel himself. The viewer is left to wonder if the

subject will ever reach the basket.

The Nike Photo presents an entirely different story. Taken after Mr. Jordan signed with

the Chicago Bulls, the Michael Jordan figure in this photo has attained a goal—he has arrived in

Chicago to begin his promising professional career. In this picture, Michael Jordan soars

triumphantly, almost effortlessly, over the skyline of Chicago. He appears to be jumping up

vertically from the ground. Graceful, his left arm extends above the nearby basket and his right

arm extends to his side in sharp, straight lines, with his legs forming a perfect "V" shape that

accentuates his flight over Chicago. The Michael Jordan in this photograph has arrived, and the

viewer knows that he will dunk that ball.

Differences in the Appearance of Mr. Jordan: There are also significant differences in

the physical appearance of Mr. Jordan in the Rentmeester Photo and Nike Photo, including:

Different Clothing: The Nike Photo depicts Mr. Jordan in a manner that

accentuates the Nike shoes and apparel he is wearing in the distinctive red and black of

the Chicago Bulls—in keeping with the overall theme of Mr. Jordan's arrival in Chicago.



On the other hand, the Rentmeester Photo depicts Mr. Jordan in dark clothing with only

vague hints of color and featuring the words "USA" and "United States." See Kaplan,

133 F. Supp. 2d at 325 (finding no infringement no infringement as a matter of law

where, inter alia, the respective photographs depicted subjects wearing "similar attire"

that was "different in color"). Mr. Jordan's clothing in the Nike Photo is also much more

tightly fitted, accentuating his form in a way the more baggy clothing in the Rentmeester

Photo does not. On balance, the Nike Photo utilizes clothing to emphasize fashion, while

the Rentmeester Photo's employs clothing (namely Mr. Jordan's loose-fitting sweat suit)

solely in a utilitarian manner.

Different Placement and Scale: The Rentmeester Photo places Mr. Jordan in the

left side of the frame and shows him as very small in relation to the overall photograph

and the basketball hoop. In contrast, the Nike Photo places Mr. Jordan dead center,

completely dominating the shot. In addition, the Nike Photo zooms in on Mr. Jordan and

he looks much bigger in relation to the basketball hoop.

Differences in Mr. Jordan's Stance: While poses, like the one in the Rentmeester

Photo, are generally not copyrightable as discussed above, there are significant differences

between the expression of Mr. Jordan's stance in the photographs, as illustrated by the side-by-

side close ups shown below:



Position of Arms/Hands: In the Rentmeester Photo, Mr. Jordan's right arm is

bent at the elbow, with his hand at shoulder height aiming upward towards the basket. In

the Nike Photo, Mr. Jordan's right arm is extending straight down and away from the

basket, and his hand points toward the ground. Further, in the Rentmeester Photo,

Mr. Jordan's left arm is bent slightly backwards while in the Nike Photo it is fully

extended and is depicted above the basket.

Position of Legs/Feet: The positioning of Mr. Jordan's legs and feet also appear

very differently in these respective photographs. In the Rentmeester Photo, Mr. Jordan's

legs are positioned in the stance of someone jumping while running forward. His legs are

apart like a "scissor" split, and his back foot is visible from the side. In contrast, in the

Nike Photo, Mr. Jordan's legs are positioned in the stance of someone who has jumped

up vertically and spread his legs wide in a straddle position while doing so. The top of

his right foot is visible.

Differences in the Setting and Background: The Rentmeester Photo depicts "a

relatively isolated knoll" [Dkt. 1 at ¶ 21], a rural setting, which includes an image of a skeletal,



leafless tree on the left side of the frame, a grassy surface, and additional foliage in the

background. In contrast, the Nike Photo depicts an urban background, namely the Chicago

skyline, with no trees, grass or foliage. Harney, 704 F.3d at 188 (differences in backgrounds of

respective photos precluded a finding of infringement).

Differences in the Color of the Sky: In the Rentmeester Photo, the sky is depicted in

cool colors of blue, grey white, and black, while the Nike Photo depicts the sky in wai n colors

of deep purple and red. Kaplan, 113 F. Supp. 2d at 327 ("[D]ifferences in lighting, shading, and

color cause the photographs to convey contrasting 'feels' or ̀ moods.'"); Reece, 468 F. Supp. 2d

at 1208 (no likelihood of success on copyright infringement where "the sepia tone of the

photograph is markedly contrasted by the vibrant colors [in] the [infringing work]").

Differences in the Lighting, Shadows, and Depiction of the Sun: In the Rentmeester

Photo, the sun shines brightly (almost blindingly) and appears as one of the central features of

the photograph, emphasizing the shadows over Mr. Jordan's face and figure. In contrast, the

Nike Photo is set at dusk with the sun completely absent from the frame.

Differences in the Appearance of the Basketball Hoops: In the Rentmeester Photo, the

basketball, hoop appears in its entirety. It has one post and appears perfectly vertical and with

seemingly exaggerated height. In the Nike Photo, only part of the basketball hoop appears. It

has two posts and appears to be slanted and of regular height.

For at least these reasons, the Rentmeester Photo and Nike Photo are not objectively

similar and Rentmeester cannot state a claim for infringement based on the Nike Photo.

Rentmeester's self-serving descriptions of the Rentmeester Photo and Nike Photo cannot alter

this result. See, e.g., Erickson, 839 F. Supp. 2d at 1140 (plaintiff cannot escape a motion to

dismiss by "asserting similarities at a high level of generality"); see also Gordon, 2011 WL 2011



WL 3648606 at *4 ("[S]imply assigning creative adjectives to features of a photograph cannot

manufacture substantial similarity where none exists'); see also Peter F. Gaito Architecture LLC

v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010) ("In copyright infringement actions, the

works themselves supersede and control [over] contrary descriptions of them") (internal citations

and quotations omitted). Rentmeester's claim for infringement as to the Nike Photo must be

dismissed. See Gordon, 2011 WL 3648606 at *3 (finding that "the dictates of good eyes and

common sense lead inexorably to the conclusion that there is no substantial similarity between

Plaintiff's works and the allegedly infringing compositions" and thus granting motion to

dismiss).

C. The Jumpman Logo Is Not Objectively Similar to the Rentmeester Photo.

The question of substantial similarity between the Jumpman Logo and the Rentmeester

Photo is easily resolved, because the Jumpman Logo looks even more different from the

Rentmeester Photo than the Nike Photo. Accordingly, Rentmeester cannot state a claim for

copyright infringement with respect to the Jumpman Logo either.8

As an initial matter, while Rentmeester misleadingly includes a black silhouette based on

his Rentmeester Photo in the complaint [Dkt. 1 ¶ 41], he does not allege that he ever created a

comparable "silhouette logo" to Jumpman Logo that was accessed or copied by Nike.

Rentmeester's after-the-fact image, created apparently just for purposes of this lawsuit, is

irrelevant. See, e.g., Gordon, 2011 WL 3648606 at *4 (plaintiffs cannot "manipulate the

8 Rentmeester pleads correctly that Nike has incontestable trademark registrations coveringvariations on the Jumpman Logo [Dkt. 1 at ¶ 50], and that he has been well aware of theselogos (and the tremendous goodwill Nike has built around the Jumpman Logo) since it wasfirst used in commerce in 1987. [Id. at ¶ 40.] Nowhere, however, does Rentmeester allegethat he ever objected to these trademark registrations or otherwise provided any indication toNike that these trademarks allegedly infringed his purported copyrights.



comparison" between two works by "alter[ing] the images at issue in order to bolster [their]

infringement claims"). The correct comparison here is between the Rentmeester Photo and the

Jumpman Logo:

[Dkt. 1 TT 26, 41.]

The objective differences between these works are striking. The Rentmeester Photo has

numerous elements that are simply not present in the Jumpman Logo. For example, in the

Jumpman Logo—unlike in the Rentmeester Photo—there is no background, no setting, no color,

no basketball hoop, no ground, no foliage, and no sun. The Jumpman Logo is a black silhouette

of a basketball player—nothing else.

Rentmeester alleges that the person depicted and pose of the Jumpman Logo is the same

as the figure in the Rentmeester Photo. [Dkt. 1 ¶42.] But as discussed above, Rentmeester

cannot copyright Michael Jordan or his alleged "grand-jete" pose. Moreover, the expression of

the figures in the Jumpman Logo and Rentmeester Photo are not similar:

• The Jumpman Logo consists of a stylized, solid black figure. In contrast, in theRentmeester Photo, Mr. Jordan appears realistic and the colors and contours of hisclothes and features are shown.



• Mr. Jordan's legs in the Jumpman Logo are straight and unbent, forming a distinctive"V" shape that creates the distinct impression of flight; while the Rentmeester Photopose depicts the legs in a largely straight line with the right leg bent slightly at theknee creating a feeling of horizontal rather than vertical motion.

• In the Jumpman Logo, Mr. Jordan's arms are depicted in a straight line, the right armpointed down and slightly out with an open palm and the left arm aimed upward withthe ball resting flat on Jordan's left hand. In the Rentmeester Photo, Mr. Jordan'sright arm is bent at a hard angle with his hand pointed upwards and his left arm isbent slightly back with the ball appearing to be in the process of leaving his hand.

For at least these reasons, the Jumpman Logo and the Rentmeester Photo are nowhere close to

being substantially similar and a claim for copyright infringement cannot stand.

V. RENTMEESTER CANNOT STATE A CLAIM FOR INDIRECT COPYRIGHTINFRINGEMENT.

Rentmeester's claims for indirect copyright infringement are easily disposed of because

each of those claims requires an underlying act of direct infringement, which Rentmeester cannot

show. See, e.g., Perfect 10 v. Visa Intl Serv. Assoc., 494 F.2d 788, 795, 802 (9th Cir. 2007). As

discussed above, Rentmeester cannot state a claim for copyright infringement and thus his

indirect infringement claims should also be dismissed.

VI. RENTMEESTER CANNOT STATE A CLAIM UNDER THE DMCA.

Rentmeester's claim under the CMI provision of the DMCA is both legally unsupportable

and inadequately plead. 17 U.S.C. § 1202.

As an initial matter, Rentmeester cannot state a claim under the DMCA without an

underlying act of infringement which, as explained above, he cannot show. Section 1202(a) only

prohibits the provision of CMI that is "false"—since the Nike Photo and Jumpman Logo are

original, protectable, non-infringing works, Nike cannot be faulted for claiming copyright

protection over those works. Id. Regardless, Rentmeester's DMCA claim fails for three

additional reasons.



First, Rentmeester cannot seek relief based on alleged removal of CMI that occurred

fifteen years before the DMCA made such removal unlawful. A statute has no retroactive effect

absent clear congressional intent, see, e.g., Landgraf v. USI Film Prods., 511 U.S. 244, 280

(1994), and when the DMCA became effective in 1998 it did not expressly command retroactive

application. Rentmeester alleges that Nike created the Nike Photo in 1984, and the Jumpman

Logo in 1987—more than a decade before the DMCA took effect. [Dkt. 1 IN 4-5, 40.] Because

any purported removal or alteration of CMI by Nike as to the Nike Photo, Jumpman Logo, or

Rentmeester Photo predated the DMCA by many years, Rentmeester cannot state a claim under

the DMCA. See Hughes Aircraft Co. v. U.S. ex rel. Schumer, 520 U.S. 939, 948-49 (1997)

(denying retroactive effect of a statute that created a new cause of action for private citizens);

Rivas v. Rail Delivery Serv., Inc., 423 F.3d 1079, 1084 (9th Cir. 2005) (holding that

"retroactively expanding the universe of potential plaintiffs would have an impermissible

retroactive effect" because this "would increase Defendants' potential liability"); United States

ex rel. Anderson v. Northern Telecom, Inc., 52 F.3d 810, 814 (9th Cir. 1995) ("[If] the law

changes the legal consequences of conduct that takes place after the law goes into effect, the law

operates on that conduct prospectively."); see also Goldman v. Healthcare Mgmt. Sys., Inc., 559

F. Supp. 2d 853, 867 (W.D. Mich. 2008) ("The parties agreed at the pretrial conference that the.

DMCA does not authorize recovery for any claims prior to its enactment.").

Second, Rentmeester fails to meet the stringent pleading requirements of Twombly and

Iqbal because he does not specifically allege facts that make plausible his allegation that CMI

was present on the copies of the Rentmeester Photo that he claims Nike used, or that Nike

removed or altered such information. While the Court must accept as true all well-pleaded

factual allegations, it is black letter law that Rentmeester's Complaint "must include sufficient



factual natter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Iqbal,

556 U.S. at 678 (quoting Twombly, 550 U.S. at 570) (emphasis added). Pleadings that offer mere

"labels and conclusions" or "formulaic recitation" of the elements of an action "will not do." Id.

(quoting Twombly, 550 U.S. at 555).

Here, the Complaint makes only a conclusory allegations that "several forms of

`copyright management information' . . . were conveyed in connection with . . . the

[Rentmeester] Photo," and a bare recitation of the types of CMI enumerated in Section 1202(c)

and the kinds of conduct actionable under 1202(b). [Dkt. 1 in 77-78.] That is not enough.

Rentmeester fails to allege with specificity what CMI Nike removed or altered, or the works

from which the CMI was removed or altered. The only allegation about identifying information

is the descriptive text in the LIFE magazine photo essay describing Rentmeester's endeavor and

giving him credit, or Rentmeester's invoices from 1984 and 1987. [Dkt. 1 TR 3, 27.]

Rentmeester does not allege that Nike removed any of this information in order to create the

Nike Photo or the Jumpman Logo or included altered CMI on the same.

Third, Rentmeester's fails to allege a nexus to the Internet or digital piracy, which is

required for DMCA claims. See, e.g., United States v. Elcom, Ltd., 203 F. Supp. 2d 1111, 1129

(N.D. Cal. 2002) (DMCA reflected Congress's belief "that a primary threat to electronic

commerce and to the rights of copyright holders was the plague of digital piracy"). Courts in this

Circuit and elsewhere hold that a plaintiff alleging a violation of the DMCA must show some

nexus between the claimed misconduct and the underlying purposes of the DMCA. If a plaintiff

does "not allege any facts linking [Defendant's] conduct to the Internet, electronic commerce, or

any other purpose for which the DMCA was enacted," the plaintiff "has not alleged facts

sufficient to state a claim for a violation of either Section 1202(a) or 1202(b) [of the DMCA]."



Brown v. Stroud, C-08-02348, 2011 WL 2600661, at *6 (N.D. Cal. June 30, 2011).9 In Brown,

the court noted that even those decisions declining to adopt this strict application of the DMCA

nevertheless involved cases with "underlying facts [that] have some connection to the Internet or

electronic commerce." Id. at *5 n.6.1°

Here, as to the Nike Photo, Rentmeester only alleges that Nike published it on billboards

and in print. [Dkt. 1 TT 39.] There is no discernible nexus between that alleged conduct and the

Internet or e-commerce. As to the Jumpman Logo, Rentmeester solely alleges, in passing, that

9

10

See also id. at *5 ("[I]n order to state a claim [under the DMCA], a plaintiff must allege factsshowing that the alleged falsification or removal of CMI has some relation to the Internet,electronic commerce, or the purposes for which the DMCA was enacted."); Textile SecretsIntern., Inc. v. Ya-Ya Brand, Inc., 524 F. Supp. 2d 1184, 1201 (C.D. Cal. 2007) (DMCA doesnot apply "to circumstances that have no relation to the Internet, electronic commerce,automated copyright protections or management systems, public registers, or othertechnological measures or processes as contemplated by the DMCA"); MDY Indus., LLC v.Blizzard Entm't, Inc., 629 F.3d 928, 942 (9th Cir. 2010) ("In enacting the DMCA, Congresssought to mitigate the problems presented by copyright enforcement in the digital age.").

Moreover, many such cases deal expressly with the question of whether CMI claims arelimited to instances where the claimed CMI is placed pursuant to an automated ortechnological process, as opposed to a manual application, such as typing a copyright symbolon a webpage. Such cases all still arise in the context of Internet or electronic uses. SeeAgence France Presse v. Morel, 769 F. Supp. 2d 295, 305-06 (S.D.N.Y. Jan. 14, 2011)(declining to limit definition of CMI to notices placed on works through technologicalprocesses, when photographer attached identifying information to photos on his webpage anddefendants allegedly downloaded and distributed photographs without attribution); Cable v.Agence France Presse, 728 F. Supp. 2d 977, 978-79 (N.D. Ill. 2010) (rejecting"technological processes" limitation, holding that plaintiff's manually coded copyright noticeand hyperlink on webpage constituted CMI); Fox v. Hildebrand, 2009 WL 1977996, at *1,*3 n.3 (C.D. Cal. July 1, 2009) (permitting DMCA claim to proceed where plaintiff allegedthat defendant removed handwritten CMI related to architectural plans, replaced it with afalsified electronic copyright notice, and published it on their website); but see Murphy v.Millennium Radio Grp. LLC, 650 F.3d 295, 305 (3d Cir. 2011) (holding that "gutter credit"in print magazine constitutes CMI). Murphy, however, still involved a significant nexus withthe Internet because the defendant posted plaintiff s image on two websites without the guttercredit. Id. at 305.



some Nike products sold via "internet websites" bear the Jumpman Logo. [Id. ¶ 53.] This is

simply not enough to sustain a claim under the DMCA.

Thus, Rentmeester's DMCA claim must be dismissed.

VII. RENTMEESTER CANNOT STATE A CLAIM FOR CERTAIN DAMAGES.

Rentmeester cannot state a claim for copyright infringement or a violation of the DMCA,

and consequently is not entitled to any damages. In addition, as discussed below, this Court

must dismiss Rentmeester's claims for (1) statutory damages and attorneys' fees for copyright

infringement, (2) actual damages and profits prior to January 22, 2012, and (3) punitive damages.

A. Rentmeester Is Not Entitled to Statutory Damages or Attorneys' Fees forCopyright Infringement.

In his Complaint, Rentmeester seeks an award of statutory damages and attorney's fees

under sections 504 and 505 of the Copyright Act. [Dkt. 1 at § IX(3), (5).] As a matter of law,

however, Rentmeester is entitled to neither statutory damages nor a fee award because he did not

obtain a copyright registration for the Rentmeester Photo until after it was first published and

Nike commenced its alleged infringement. The Copyright Act bars plaintiffs from recovering

statutory damages and attorney's fees for infringement of unpublished and published works if

they have not been registered within a prescribed time. Specifically, section 412 provides:

. . . no award of statutory damages or of attorney's fees, asprovided by sections 504 and 505, shall be made for—

. . . (2) any infringement of copyright commenced after firstpublication of the work and before the effective date of itsregistration, unless such registration is made within three monthsafter the first publication of the work.

17 U.S.C. § 412; see also Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984) (reversing statutory

damages and fee award and holding that Section 412 bars plaintiff from recovering such for



infringement of copyrights in magazine articles, because plaintiff failed to show that the

copyrights "have ever been registered, much less within three months of their publication.").

Here, Rentmeester alleges that the Rentmeester Photo was first published in LIFE in the

summer of 1984. [Dkt. 1 ¶ 2.] Rentmeester admits that he did not obtain a copyright registration

for the Rentmeester Photo until December 18, 2014—over 30 years after its first publication.

[Id. ¶ 29.] Rentmeester also alleges that, in August 1984, "[a]fter LIFE Magazine published the

[Rentmeester] Photo, Nike sought a copy" [id. ¶ 4] and then infringed it by (1) copying the

Rentmeester Photo and making the Nike Photo sometime between August 1984 and February

1985 [id. ¶ 34]; (2) reproducing the Nike Photo in advertisements after 1985 [id. ¶ 36, 39]; and

(3) using the Jumpman Logo beginning in 1987 [id. ¶ 40].

Accordingly, because Rentmeester did not obtain a registration for the Rentmeester Photo

within three months of first publication, and Nike's alleged infringement commenced

after publication and before registration, Rentmeester's claims for statutory damages and

attorney's fees under sections 504 and 505 of the Copyright Act should be dismissed. See Hunt

v. Everitt, 91 F. App'x 584, 585 (9th Cir. 2004) ("Because any infringement commenced before

Hunt registered his copyright, § 412 precludes [attorneys'] fees from being awarded to Hunt.").11

11 See also Carranza v. Universal Music Grp., Inc., 536 F. App'x 734 (9th Cir. 2013)(affirming district court's limitation of recovery to actual damages and the defendants' profitsbecause plaintiff's work was not registered before infringement commenced or within threemonths of first publication); Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 702(9th Cir. 2008) (precluding recovery of attorneys' fees and statutory damages under theCopyright Act because infringement commenced prior to the registration date of the work atissue); Precision Automation, Inc. v. Tech. Servs., Inc., 628 F. Supp. 2d 1244, 1248-49 (D.Or. 2008) ("Because statutory damages are available only when registration is made withinthree months of publication, Plaintiffs are not entitled to them."); Fleming v. Miles, 181 F.Supp. 2d 1143, 1153 (D. Or. 2001) (holding that plaintiff "may not recover statutorydamages or attorney fees even if he prevails on his infringement claims" because all of theallegedly infringing acts fell "within the scope of [§ 412's] prohibition").



B. Rentmeester's Claim for Actual Damages and Profits Prior to January 22,2012 Is Time Barred.

Rentmeester's Complaint seeks "actual damages and any profits attributable to

infringement of Mr. Rentmeester's copyright, pursuant to 17 U.S.C. § 504(b) and 17 U.S.C.

§ 1203(c)(2)." [Dkt. 1 § IX(2).] According to the Complaint, and as discussed supra,

Rentmeester alleges that Nike's infringement dates back to the 1980s, and such alleged

infringement "has generated substantial revenues for Nike from 1987 to the present." [Dkt. 1

¶ 49.] Rentmeester is not entitled to damages from infringement or removal of CMI that

occurred prior to three years before the filing of his Complaint on January 22, 2015.

The statute of limitations on civil actions under the Copyright Act is three years. 17

U.S.C. § 507(b). Even in instances of alleged continuing infringement, it is well-settled that a

copyright plaintiff is limited to damages that resulted from infringement that occurred in the

three years prior to the date his suit was filed. See Roley v. New World Pictures, Ltd., 19 F.3d

479, 480-81 (9th Cir. 1994) (reasoning that in a case of continuing copyright infringements, a

copyright plaintiff cannot reach back beyond the three-year limit and sue for damages or other

relief for infringing acts that he knew about at the time but did not pursue); Fahmy v. Jay-Z, 835

F. Supp. 2d 783 (C.D. Cal. 2011) (holding that plaintiff was entitled to damages from any

infringement only within three years prior to the filing of his lawsuit); Watermark Publishers v.

High Tech. Systems Inc., 44 U.S.P.Q.2d 1578 (S.D. Cal. 1997) (same); see also Petrella v.

Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1970 (2014) ("Congress provided . . . § 507(b)'s

limitations period, which allows plaintiffs during that lengthy term to gain retrospective relief

running only three years back from the date the complaint was filed.").



Accordingly, Rentmeester's claim for damages and profits for alleged infringement or

removal of CMI that occurred before January 22, 2012 (i.e., three years prior to the date the

Complaint was filed) are time-barred and should be dismissed.

C. Rentmeester Is Not Entitled to Punitive Damages.

Rentmeester also seeks an award of punitive damages. [Dkt. 1 at § IX(9).] Punitive

damages, however, are not available for claims under the Copyright Act. See Saregama India

Ltd. v. Young, 2003 WL 25769784, at *1 (C.D. Cal. Mar. 11, 2003) (granting motion to strike

punitive damages claim because "[p]unitive damages are not available under the Copyright

Act."). See also Oboler v. Goldin, 714 F.2d 211, 213 (2d Cir. 1983); Krisel v. Contempo Homes,

Inc., 2006 WL 5668181, at *3 (C.D. Cal. Sept. 27, 2006); Smith & Hawken, Ltd. v.

Gardendance, Inc., 2004 WL 2496163, at *10 (N.D. Cal. Nov. 5, 2004); Reinicke v. Creative

Empire, LLC, 2013 WL 275900, at *5 (S.D. Cal. Jan. 24, 2013); Design Art v. Nat'l Football

League Properties, Inc., 2000 WL 1919787, at *5 (S.D. Cal. Nov. 27, 2000).

Rentmeester's claim for punitive damages should also be dismissed.

CONCLUSION

For these reasons, Nike respectfully requests that this Court grant its motion to dismiss

Rentmeester's Complaint in its entirety and with prejudice.



DATED: March 16, 2015.

TONKON TORP LLP

By /s/ Jon P. Stride Jon P. Stride, OSB #903887Direct Dial: 503.802.2034Direct Fax: 503.972.3734Email: [email protected]

Eric Beach, OSB #105783Direct Dial: 503.802.2182Direct Fax: 503.972.3882Email: [email protected]

KIRKLAND & ELLIS LLP

By /s/ Dale Cendali Dale Cendali (pro hac vice)Direct Dial: 212.446.4846Fax: 212.446.4900Email: [email protected]

P. Daniel Bond (pro hac vice)Direct Dial: 312.862.7026Direct Fax: 312.862.2200Email: [email protected]




CERTIFICATE OF COMPLIANCE

This brief complies with the applicable word-count limitation under LR 7-2(b), 26-3(b),54-1(c), or 54-3(e) because it contains 10,966 words, including headings, footnotes, andquotations, but excluding the caption, table of contents, table of cases and authorities, signatureblock, exhibits, and any certificates of counsel.

DATED: March 16, 2015.

TONKON TORP LLP

By /s/ Jon P. StrideJon P. Stride, OSB #903887Eric Beach, OSB #105783


PAGE 1 - CERTIFICATE OF COMPLIANCE


CERTIFICATE OF SERVICE

I hereby certify that I served the foregoing NIKE'S BRIEF IN SUPPORT OF ITSMOTION TO DISMISS on:

Eric B. Fastiff ([email protected])Dean M. Harvey ([email protected])Katherine C. Lubin ([email protected])Lieff Cabraser Heimann & Bernstein, LLP275 Battery Street, 19th FloorSan Francisco, CA 94111-3339

Cody Hoesly ([email protected])Larkins Vacura LLP121 SW Morrison Street, Suite 700Portland, OR 97204

Attorneys for Plaintiff Jacobus Rentmeester

E by electronic means through the Court's Case Management/Electronic CaseFile system on the date set forth below;

~~ by mailing a copy thereof in a sealed, first-class postage prepaid envelope,addressed to each attorney's last-known address and depositing in the U.S.mail at Portland, Oregon on the date set forth below;

❑ by concurrently electronically mailing this document in Word format toeach attorney's last-known email address on the date set forth below.

DATED: March 16, 2015.TONKON TORP LLP

By /s/ Jon P. Stride Jon P. Stride, OSB #903887Eric Beach, OSB #105783Attorneys for Defendant Nike, Inc.

PAGE 1 - CERTIFICATE OF SERVICE


nike motion to dismiss 'jumpman' lawsuit

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