revok reyes steel opposition to cavalli defendants' motion to dismiss (49)

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PLAINTIFFS OPPOSITION TO DEFENDANTS MOTION TO DISMISS

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ERIKSON LAW GROUP David Alden Erikson (SBN 189838) [email protected] S. Ryan Patterson (SBN 279474) [email protected] 200 North Larchmont Boulevard Los Angeles, California 90004 Telephone: 323.465.3100 Facsimile: 323.465.317 b7 Attorneys for Plaintiffs

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

JASON WILLIAMS, an individual; VICTOR CHAPA, an individual; and JEFFREY RUBIN, an individual, Plaintiffs, v. ROBERTO CAVALLI S.P.A., an Italian corporation; STAFF INTERNATIONAL S.P.A., an Italian corporation; STAFF USA, INC., a Delaware corporation; NORDSTROM, INC., a Washington corporation; AMAZON.COM, INC., a Delaware corporation; ZAPPOS, a Delaware corporation; and DOES 1-50, inclusive, Defendants.

Case No. 2:14-cv-06659 AB (JEM) Hon. Andr Birotte Jr. PLAINTIFFS OPPOSITION TO DEFENDANTS 12(B)(6) MOTION TO DISMISS Date: January 5, 2015 Time: 10:00 a.m. Courtroom: 790

Plaintiffs Jason Williams, Victor Chapa, and Jeffrey Rubin (Artists or

Plaintiffs) respectfully submit this Memorandum of Points and Authorities in

Opposition to the Motion to Dismiss pursuant to Federal Rule of Civil Procedure

12(b)(6) of Defendants Staff USA, Inc.; Nordstrom, Inc.; Amazon.com, Inc.; and

Zappos.com, Inc. (Defendants).

Case 2:14-cv-06659-AB-JEM Document 49 Filed 12/15/14 Page 1 of 30 Page ID #:351

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TABLE OF CONTENTS

I. INTRODUCTION ...................................................................................................................... 1

II. ALLEGATIONS ......................................................................................................................... 2

A. Plaintiffs copyright claims. .......................................................................................... 2

B. Plaintiff Reyess trademark claims. ............................................................................... 3

III. PLAINTIFFS REVOK AND STEELS 1202 CLAIM IS PROPER ....................................... 4

A. The FAC contains more than enough information to allow Cavalli to

understand the Section 1202 claim against it. ........................................................... 4

B. Section 1202 is not limited to digital removal. .............................................................. 5

IV. REYESS TRADEMARK INFRINGEMENT CLAIM IS ENTIRELY CONSISTENT

WITH DASTAR ..................................................................................................................... 9

A. The Dastar Case .......................................................................................................... 10

B. Dastar does not apply because its reasoning does not apply. ..................................... 12

1. The first rationaleconcern about mutant copyrightis not invoked

here. ............................................................................................................. 12

2. The second rationaleconcerns over a catch-22is not invoked here. ......... 13

3. The third rationaleconcerns regarding secondary meaningis not

invoked here. ............................................................................................... 14

C. Concurrent liability for trademark and copyright infringement is

uncontroversially proper. ........................................................................................ 15

1. The recent Craigslist case ................................................................................ 16

2. The recent Bach case ........................................................................................ 17

D. Defendants cases are inapposite. ................................................................................ 18

V. PLAINTIFFS FOURTH CAUSE OF ACTION FOR CALIFORNIA STATUTORY

UNFAIR COMPETITION SURVIVES ............................................................................. 20

A. Reyes properly alleges an unlawful business practice under 17200. ....................... 21

B. Reyes properly pleads fraudulent business practices under 17200. ......................... 22


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VI. Plaintiffs fifth Cause Of Action For common law unfair competition Survives ..................... 23

VII. CONCLUSION ................................................................................................................... 24


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TABLE OF AUTHORITIES

Cases

Agence France Presse v. Morel, 769 F. Supp. 2d 295, 30506 (S.D.N.Y. 2011) ........................ 6, 8

Associated Press v. All Headline News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009) ................. 6, 8

Bach v. Forever Living Prods. U.S., Inc., 473 F. Supp. 2d 1110, 1116-18 (W.D. Wash. 2007) ... 16, 17

BanxCorp v. Costco Wholesale Corp., 723 F. Supp. 2d 596, 60911 (S.D.N.Y. 2010) ................... 7

Cable v. Agence France Presse, 728 F. Supp. 2d 977, 981 (N.D. Ill. 2010) ................................ 6, 8

Cel-Tech Commc'ns, Inc. v. Los Angeles Cellular Tel. Co., 20 Cal. 4th 163, 180 (1999). ............. 20

Craigslist Inc. v. 3Taps Inc. 942 F. Supp. 2d 962, 979 (N.D. Cal. 2013) ........................... 15, 16, 17

Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc. ................................................................ 16

Engineering, Inc. v. Spirit Const. Services, Inc., 720 F. Supp. 2d 904 (S.D. Ohio 2010) ................ 7

Faulkner Press, LLC v. Class Notes, LLC, 756 F. Supp. 2d 1352, 1359 (N.D. Fla. 2010) .............. 6

Fox v. Hildebrand, 2009 U.S. Dist. LEXIS 60886, 2009 WL 1977996 ................................... 6, 7, 8

Interplan Architect, Inc. v. C.L. Thomas, Inc., Civil Action No. 4:08-cv-03181, 2009 WL 6443117 (S.D. Tex. 2009) ................................................................................................................ 7, 8

IQ Group, Ltd. v. Wiesner Publishing, LLC, 409 F. Supp. 2d 587 (D.N.J.2006) ............................. 7

McClatchey v. The Associated Press, 82 U.S.P.Q.2d 1190, 2007 WL 776103 ................................ 6

Microsoft Corp. v. Nop, 549 F. Supp. 2d 1233, 1238 (E.D. Cal. 2008) .......................................... 16

Murphy v. Millennium Radio Group LLC, 650 F. 3d 295 (3rd Cir. 2011) ................................ 6, 8, 9

New York, Thomas Publishing Co., LLC v. Technology Evaluation Centers, Inc., 2007 U.S. Dist. LEXIS 55086 (S.D.N.Y. July 27, 2007) ............................................................................. 19

Nintendo of Am. v. Dragon Pacific Intl, 40 F. 3d 1007, 1011 (9th Cir. 1994). ......................... 1, 15

Ratzlaf v. United States, 510 U.S. 135 (1994) ................................................................................... 7

State Farm Fire & Casualty Co. v. Superior Court, 45 Cal. App. 4th 1093, 1103 (1996) ............. 21

Stockart.com v. Engel, Civil Action No. 10cv00588MSKMEH, 2011 WL 10894610, at *910 (D. Colo., 2011) ..................................................................................................................... 7

Summit Technology, Inc. v. High-Line Medical Instruments, Co. 933 F. Supp. 918, 943 (C.D. Cal. 1996) .................................................................................................................................... 21

Textile Secrets Intl, Ltd. v. Ya-Ya Brand Inc., 524 F. Supp. 2d 1184 (C.D.Cal.2007) .................... 7


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TMTV Corp. v. Pegasus Broadcasting of San Juan, 490 F. Supp.2d 228 (D.P.R. 2007) ............... 20

WalMart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, (2000) ......................................... 14

William Wade Waller Co. v. Nexstar Broadcasting, Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584 (E.D. Ark. 2011) ..................................................................................................... 6

Zyla v. Wadsworth, a Division of Thomson Corp., 360 F.3d 243 (1st Cir.2004) ............................ 19

Statutes

15 U.S.C. 1125(a) ........................................................................................................................... 9

17 U.S.C. 1202 ....................................................................................................................... 5, 6, 8

Cal. Code Bus. Proc. 17200 ......................................................................................................... 20

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) .................... 10, 11, 12, 13

Treatises

5 McCarthy on Trademarks and Unfair Competition 27:78 (4th ed.) ........................................... 14


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I. INTRODUCTION Plaintiffs Williams (a/k/a Revok) and Rubin (a/k/a Steel) bring claims for

removal of their names from the mural artwork, which is specifically prohibited by

17 U.S.C. Section 1202. Defendants only serious challenge1 to this claim is that the

statute does not apply to the manual removal of analog informationpresumably

because it was enacted as part of the Digital Millennium Copyright Act. As

explained below, this is incorrectas a matter of simple statutory interpretation as

well as pursuant to uncontroversial case law. The two outlier cases Defendants rely

upon in this regard have been thoroughly discredited by a line of subsequent cases

including a case in this district and the only circuit court case to address the issue

as simple shepardizing reveals.

Cavalli also moves to dismiss Plaintiff Chapas (a/k/a Reyes) trademark

claims on the ground that they are merely repackaged copyright claims.2 Again, this

argument relies on a stark misunderstanding of law. That a single misappropriation

can simultaneously constitute trademark and copyright infringement is clear as a

matter of common sense, and as a matter of case law. The Ninth Circuit has

remarked in exactly this context that, it may have been one act, but it was two

wrongs. Nintendo of Am. v. Dragon Pacific Intl, 40 F. 3d 1007, 1011 (9th Cir.

1994).

A drawing of the NBC Peacockto take a hypothetical exampleis clearly

copyrightable. But placing it on a line of shoes would obviously constitute

1 Defendants motion was untimely. The FAC was filed on November 10, 2014. The motion was filed 22 days later on December 2, 2014. 2 Artists refer to their third claim for trademark infringement under the Lanham Act, fourth claim for statutory unfair competition under Cal. Bus. & Prof. Code 17200, and fifth claim for common law unfair competition as trademark claims because they all address the same wrong: Defendants use of Reyess logo on Cavalli clothing, causing a likelihood of confusion. The Ninth Circuit has consistently held that state common law claims of unfair competition and actions pursuant to California Business and Professions Code 17200 are substantially congruent to claims under the Lanham Act. Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994).


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trademark infringement as wellbecause it would likely cause consumers to believe

that NBC made or endorsed the shoes.

To try to avoid the possibility of concurrent trademark and copyright liability,

Defendants inexplicably characterize Reyess trademark allegations as being that

Defendants passed off his artwork as their own, without giving him credit (so-called

reverse passing off). As Defendants point out, the Supreme Courts 2003 Dastar

decision would bar such a claim because plagiarism is a matter of copyright law,

and is not actionable under the Lanham Act.

But Reyes does not bring a reverse passing off claim. Rather, his trademark

claims are for garden-variety passing off. He alleges that:

The mural contained certain recognizable signature or source-

identifying elements: a particular style of black-and-white swirls (or

revolutions that effectively function as a logo. [FAC 56-60.]

That placing these signature elements on Defendants apparel likely

confuses consumers into thinking that Reyes produced them. [Id.,

61-72.]

As explained below, nothing about Dastar or related cases forecloses such a

claim. Indeed, there is no question that a claim for passing off based on source-

identifying elements may be based on copyrightable matter. While courts and

commentators have struggled to find the limit of Dastar, no one would seriously

suggest that it did away with the possibility of concurrent trademark and copyright

liability, or that it forecloses all Lanham Act claims based on communicative or

copyrightable matter.

II. ALLEGATIONS A. Plaintiffs copyright claims.

Artists allege that Defendants Staff International, Staff USA and Roberto

Cavalli S.p.A. (the Cavalli Defendants) applied mechanically produced copies of


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their mural to a collection of Just Cavalli labeled apparel (the Graffiti

Collection), and that the Cavalli Defendants and the retailer Defendants sold the

offending products to consumers. [FAC 2-5, 33.]

To hear Defendants tell it, Artists vaguely allege that the scribbles and

geometric patterns of Defendants Graffiti Collection resemble their mural.

[Defendants Motion to Dismiss the Second, Third, Fourth and Fifth Claims for

Relief in the First Amended Complaint (the Motion) 3:4-6.] But the words and

pictures of the FAC tell a more remarkable story: that Defendants mechanically

copied Plaintiffs mural and used it to cover every square inch of the Graffiti

Collections pieces. [FAC 2, 3.]

Based on these facts, Artists assert a straightforward claim for copyright

infringement. [Id., 8, 40-46.] Defendants do not challenge this claim.

Plaintiffs Revok and Steel also bring claims under 17 U.S.C. 1202. [FAC

48-54.] Section 1202 prohibits removal or alteration of copyright management

information (CMI), including artists names, from copyrighted works. Id. Revok

and Steel allege that in removing/altering their extremely prominent signatures from

the appropriated artwork, Defendants have committed a paradigmatic violation of

this statute. [FAC 48-54.]

B. Plaintiff Reyess trademark claims. As mentioned above, Plaintiff Reyes also alleges that the mural contained

images of his signature revolutions, which the public recognizes as indicating him

as the source of goods or servicesnot unlike a logo such as the NBC Peacock.3 [Id

3 In other words, Artists have alleged that elements of the mural have secondary meaning. Secondary meaning refers to consumer acceptance and recognition of marks as denoting source. 2 McCarthy on Trademarks and Unfair Competition 11:25 (4th ed.). Secondary meaning (or acquired distinctiveness) makes an element a signature one. A mark has secondary meaning when, in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, (1982); Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211, (footnote continued)


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57.] He also alleges that Defendants inclusion of such logo-like elements on the

Graffiti Collection created a likelihood of confusion in that consumers are likely to

believe that Reyes was the physical source of the Graffiti Collection clothing. [Id

62-66.]

In addition to a simple Lanham Act trademark infringement claim based on

such passing off, Reyes brings California statutory and common law unfair

competition claims based on this same wrong.

III. PLAINTIFFS REVOK AND STEELS 1202 CLAIM IS PROPER Cavalli challenges Artists Section 1202 claim on several grounds:

That Section 1202 does not apply where the copyright management

information was not placed or removed using technological/digital

means. [Motion IV(A).]

That Plaintiffs failed to identify the copyright management information

at issue, or even whom it belonged to. [Motion IV(B).]

That Revok and Steels names, and Reyess signature revolutions, do

not constitute copyright management information [Motion IV(C).]

That according to Plaintiffs allegations, Cavalli did not alter or remove

Revok and Steels signatures but instead kept and used them in what

was appropriated. [Motion IV(D).]

A. The FAC contains more than enough information to allow Cavalli to understand the Section 1202 claim against it.

The last three of these bullet pointed argumentswhich collectively amount

to an assertion that Cavalli cannot understand the precise allegations against itare

not brought seriously. Indeed, Cavalli demonstrates that it understands the claim

against it by asserting the first bullet-point argument abovea substantive argument

(2000).


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that addresses an accurate reading of the allegations. Indeed, the Section 1202

allegations are clearly laid out, and easily suffice under notice pleading standards4:

Cavalli can and does detect that it is Revok and Steels CMI that is at

issue from the simple fact that they are the ones (and not Plaintiff

Reyes) bringing the claim. [FAC 12:3.] Similarly, Plaintiffs do not

claim that Reyess revolutions constitute CMI. [Id.]

The precise nature of the CMI at issue is clearly laid out in the FAC:

the signatures of Revok, and Steelstylized renditions of their art

pseudonyms, which prominently appear in the mural, but cannot be

recognized on Cavallis apparel. [FAC 28-30.] There is no question

that an authors name constitutes copyright management information.

Indeed the statute specifically defines the CMI as including the name of

the author. 17 U.S.C. 1202(c).

Its certainly possible to misappropriate/use the signatures and still in

effect alter or remove them for purposes of Section 1202. Again,

Plaintiffs clearly allege that Cavalli mechanically copied the mural,

including Revok and Steels signatures, and placed only pieces of the

mural artwork on any specific item in the Graffiti Collectionpieces in

which the signatures cannot be discerned. [FAC 4:21 (Defendants

removed or obscured the names of the other two plaintiffs), 8:23-24

(the signatures of Revok and Steel are chopped and rearranged to such

an extent that they are not recognizable.).]

B. Section 1202 is not limited to digital removal. 17 U.S.C. 1202 prohibits the alteration or removal of copyright management

4 Williams and Rubin do not rely on the images contained in the FAC and its Exhibits, but it is worth mentioning that they clearly answer all the questions posed by Cavalli about the CMI at issue (i.e. Revok and Steels signatures).


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information from a work. The term copyright management information is

defined as information, such as the title, author, or copyright owner of a work that is

conveyed in connection with copies . . . of a work . . . including in digital form[.]

See 17 U.S.C. 1202(c) (emphasis added).

Plaintiffs Revok and Steel brought a Section 1202 claim based on their

allegations that Defendants removed/altered their signatures, which appeared

prominently in the mural, making them indiscernible on Cavallis clothing [FAC

30]which certainly appears to be exactly what the statute prohibits.

Defendants argue that Section 1202 does not apply however, because it was

meant to only apply to digital works or the digital removal of CMIbecause it is

part of Digital Millennium Copyright Act. To put it in Defendants needlessly

complex terms, Section 1202 was not intended to apply to circumstances that have

no relation to the internet [sic], automated copyright protections or management

systems, public registers or other technological means contemplated by the DMCA

as a whole. [Motion 6:9-12.]

That is simply wrong. The plain language of the statute (including in digital

form) indicates that its scope is not limited to CMI that is digitally placed and/or

digitally removed. Murphy v. Millennium Radio Group LLC, 650 F. 3d 295 (3rd Cir.

2011); Fox v. Hildebrand, 2009 U.S. Dist. LEXIS 60886, 2009 WL 1977996, at *3

(C.D. Cal. 2009); McClatchey v. The Associated Press, 82 U.S.P.Q.2d 1190, 2007

WL 776103 (W.D. Pa. 2007); Associated Press v. All Headline News Corp., 608 F.

Supp. 2d 454 (S.D.N.Y. 2009); William Wade Waller Co. v. Nexstar Broadcasting,

Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584 (E.D. Ark. 2011); Agence

France Presse v. Morel, 769 F. Supp. 2d 295, 30506 (S.D.N.Y. 2011); Faulkner

Press, LLC v. Class Notes, LLC, 756 F. Supp. 2d 1352, 1359 (N.D. Fla. 2010);

Cable v. Agence France Presse, 728 F. Supp. 2d 977, 981 (N.D. Ill. 2010);

BanxCorp v. Costco Wholesale Corp., 723 F. Supp. 2d 596, 60911 (S.D.N.Y.


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2010); Jedson Engineering, Inc. v. Spirit Const. Services, Inc., 720 F. Supp. 2d 904

(S.D. Ohio 2010); Interplan Architect, Inc. v. C.L. Thomas, Inc., Civil Action No.

4:08-cv-03181, 2009 WL 6443117 (S.D. Tex. 2009); Stockart.com v. Engel, Civil

Action No. 10cv00588MSKMEH, 2011 WL 10894610, at *910 (D. Colo.,

2011). The phrase including in digital form in Section 1202 removes any doubt

that notices in digital form are covered, but in no way limits the definition to notices

made in digital form. Fox v. Hildebrand, supra, 2009 WL 1977996 at *3.

Defendants cite two cases that analyze the legislative history of the DMCA to

come to the opposite conclusion: Textile Secrets Intl, Ltd. v. Ya-Ya Brand Inc., 524

F. Supp. 2d 1184 (C.D.Cal.2007); IQ Group, Ltd. v. Wiesner Publishing, LLC, 409

F. Supp. 2d 587 (D.N.J.2006). But these two cases have been roundly rejected by

subsequent court decisions, including the Third Circuit in Murphy, and this district

in Fox v. Hildebrand.

In Fox, after finding that the plain language of Section 1202 compels the

conclusion that it applies to digital and non-digital works alike, Judge Fischer says

of Textile Secrets and IQ Group:

Defendants cite two cases that analyze the legislative history of the

DMCA to come to the opposite conclusion, but even given contrary

indications in the statutes legislative history, a court should not

resort to legislative history to cloud a statutory text that is clear. (citing

Ratzlaf v. United States, 510 U.S. 135 (1994).)

Fox v. Hildebrand, supra, 2009 WL 1977996 at *3.

This is not a simple matter of cases coming to contradictory results. In a good

number of cases from the years just after Textile Secrets and IQ Group were

decided, defendants tried to invoke the two cases to avoid liability for removal or

alteration of CMI in non-internet contexts. In each case, the defendant invoked the

legislative history surrounding the DMCA in generalwhich obviously dealt with


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digital communications and worksto argue as Cavalli does here that Section 1202

does not apply beyond the digital realm. Textile Secrets and IQ Group became the

go-to cases for such defendantsat least until they were explicitly disapproved of

by a critical mass of subsequent cases. In these later cases, the courts made the point

that the plain language Section 1202 was not limited to digital works, and there was

no logical or compelling reason why Congress could not choose to expand copyright

protections in general within the DMCA.

All of the following cases make this point and explicitly reject the holdings of

Textile Secrets and/or IQ Group: Agence France Press v. Morel, supra, 769 F. Supp.

2d at 305, 306; Cable v. Agence France Presse, supra, 728 F. Supp. 2d at 980-81;

Interplan Architect, Inc., supra, 2009 WL 6443117, at *3-5 (Because this Court

does not find that the terms of Section 1202 are sufficiently ambiguous such that

resort to legislative history is necessary, this Court does not adopt the findings in

Textile Secrets. Because there is no textual support for [defendants] contention that

Section 1202 should be limited to technological processes, this Court declines to

import such a limitation.); Associated Press, supra, 608 F. Supp. 2d at 461-62

(denying motion to dismiss and finding that there is no textual support for limiting

the DMCA's application to the technological processes of automated systems.);

Faulkner Press, supra, 756 F. Supp. 2d at 1359 (plain language did not limit

definition of CMI to notices that are placed on works through technological

processes, but finding no violation of DMCA); Fox v. Hildebrand, supra, 2009 WL

1977996 at *3 (2009); Murphy, supra, 650 F.3d at 302.

The Third Circuit, in the Murphy case put it as follows:

There is nothing particularly difficult about the text of 1202. Read

in isolation, 1202 simply establishes a cause of action for the removal

of (among other things) the name of the author of a work when it has

been conveyed in connection with copies of the work. The statute


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imposes no explicit requirement that such information be part of an

automated copyright protection or management system.

Murphy, 650 F.3d at 302.

The Murphy opinion next devotes several pages to discussing (and rejecting

the reasoning of) Textile Secrets and IQ Group. Just as in Fox, the Murphy court

decides that there is no justification for resorting to legislative history when the

statutory language is clear. Id. For good measure, the Murphy court considered the

survey of legislative history undertaken by the IQ and Textile Secrets courts, and

concluded that the history did not contradict a broad, inclusive interpretation of

CMI. Id., at 304. This conclusion casts doubt on the proposition that the legislative

history even suggests a limitation to the digital realm.

Accordingly, the fact that plaintiff work was created in the physical world

takes nothing away from their Section 1202 claim.

IV. REYESS TRADEMARK INFRINGEMENT CLAIM IS ENTIRELY CONSISTENT WITH DASTAR

Plaintiff Reyess trademark infringement claims are based on the allegation

that Cavalli placed Reyess signature revolutions imagery on its clothinglikely

causing the public to think the clothing was made by Reyes. [FAC 62.] The claim

is brought under Section 43(a) of the Lanham Act, which is the procedure for

challenging infringement of unregistered marks. The Section makes actionable the

use of any word, term, name, symbol, or device, or any combination thereof ...

which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of

his or her goods.... 15 U.S.C. 1125(a).

Defendants assert Dastar and its progeny bar as a matter of law a Lanham

Act claim for reverse passing off that allegedly arises from unauthorized use of a

copyrighted work. The Supreme Court has held that the Copyright Act, and not an

action for reverse passing off under the Lanham Act, provides the sole remedy for


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alleged copying of Plaintiffs mural. [Motion, 2:9-13.]

The most straightforward way to defeat this argument is to simply point out

that Reyess claim is a simple passing-off claim, not one for reverse passing off as

Defendants inexplicably assert. The claim is based on the clearly stated allegation

that consumers would likely confuse Reyes as the physical source of Cavallis

clothing. [FAC 62.] Certainly anyone familiar with his signature revolutions

would so believe. The claim is not based on the allegation that Defendants

misappropriation would likely give the false impression that Cavalli was the author

of the mural artwork (even though thats probably true as well with respect to

consumers who are not familiar with Reyes or his work).

But because its not entirely clear that Dastar cannot apply to passing off

cases, Plaintiffs will go further and demonstrate that the case has no application

here. In other words, in addition to the straightforward argument mentioned above

(that this is not a reverse passing off claim), Reyes will go further and show that his

claim necessarily survives even if Dastar is interpreted to apply to certain passing

off claims.

A. The Dastar case In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003),

the defendant (Dastar Corp.) copied and slightly modified a videotaped

documentary produced by the plaintiff (Twentieth Century Fox Film Corp.), and

distributed it as its own. Fox brought a Lanham Act claim, alleging reverse passing

off: that Dastar was falsely passing off Foxs content as its ownwhich was

misleading because no credit was given to Fox.

The gravamen of the complaint against Dastar was that, in marketing and

selling [the videotapes] as its own product without acknowledging its nearly

wholesale reliance on [Foxs work], Dastar ha[d] made a false designation of

origin, false or misleading description of fact, or false or misleading representation


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of fact, which ... is likely to cause confusion ... as to the origin ... of his or her

goods. Dastar, 539 U.S. at 31.

It is worth noting what Fox did not allege. It did not allege misappropriation

of signature, source-identifying elements, imbued with secondary meaning, which

might cause confusion as to source. In other words, it did not allege that the public

would recognize certain Fox-ish aspects of the work (for example, a certain

familiar sepia tone, camera work or a style of narration) and thus likely believe that

the videotape came from Fox. Such allegations, of course, would have made the

case a typical passing off one. Rather, Fox was complaining about appropriation

of the work itselfi.e. the entire work and did not allege secondary meaning. Put

another way, the confusion Fox complained of was that the public would mistakenly

believe that Dastar rather than Fox made the documentary. And indeed Dastar is

sometimes thought of primarily as a case in which the plaintiff tried to use the

Lanham Act to address plagiarism. See Steven T. Lowe, Abhay Khosla, Where

Credit Is Due, LOS ANGELES LAWYER, Dec. 2014, at 40.

The Supreme Court rejected Foxs Lanham Act claim against Dastar,

generally noting that it was simply a repackaged copyright claim. Dastar, supra, at

36, 37. The purpose of copyright law, after all, is to combat appropriation of creative

works and plagiarism. Id., at 37, 38. And because copyright law reflects a careful

balancing of authors rights and the publics freedom to use others expression, it

would be odd and inappropriate to allow trademark law (which is concerned with

protecting consumer welfare by avoiding marketplace confusion as to the source

of goods) to trump copyright law in its own domain. Id., at 33, 34.

To support this conclusion, the Supreme Court made a number of oft-cited

clarifications of the Lanham Act:

That the phrase origin of goods in the Lanham Act refers to the

producer of the tangible goods that are offered for sale, and not to the


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originator of any idea, concept, or communication embodied in those

goods. Id., at 37. Thus there was no false designation of origin in the

case because Dastar was in fact the origin of the physical videotapes

Id., at 27, 37-38.

That reverse passing off cannot be based on such communicative

content, (defined as one that is valued not primarily for its physical

qualities, such as a hammer, but for the intellectual content that it

conveys, such as a book or, as here, a video), which is the subject of

copyright law. Id., at 33.

That the Lanham Act does not contain a cause of action for plagiarism.

Id., at 3637.

These clarifications of the Lanham Act have no application to Reyes trademark

claim.

B. Dastar does not apply because its reasoning does not apply. Courts and commentators have famously had difficulty determining where

Dastar applies and where it doesnt. But this much is uncontroversial: Dastar does

not foreclose the kind of garden variety trademark claims (passing off via

appropriation of signature, source-identifying elements), even where the trademark

is copyrightable or constitutes communicative content. Put another way, Dastar

does not preclude concurrent claims for copyright infringement and passing off

under the Lanham Act, where a plaintiff alleges that the misappropriated material

has acquired secondary meaning.

To see why, and specifically to see why Dastar does not apply here, one need

only examine the three rationales Justice Scalia offers for the decision, which are

clearly not invoked here or in any garden-variety trademark case.

1. The first rationaleconcern about mutant copyrightis not invoked here.


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First, the Court noted that allowing a Section 43(a) claim for originating a

creative work would create a species of mutant copyright law that would

essentially treat and expand copyright-style protections. Dastar, supra, at 34. The

point was perfectly illustrated by the facts of Dastar itself, where the work in

question happened to have fallen into the public domain. Id., at 26. Lanham Act

liability for appropriation of a copyrightable work would essentially create a

perpetual copyright that Congress did not intend. Id., at 37. Put another way, and

reading broadly, Lanham Act relief was found inappropriate where copyright law

addresses the same wrong.

To hold otherwise would be akin to finding that 43(a) [of the Lanham Act]

created a species of perpetual patent and copyright, which Congress may not do. Id.

Thus, reverse passing off claims brought under Lanham Act 43(a)(1)(A) cannot

focus on allegedly false claims of authorship, invention or creation. In addition, the

Supreme Court made clear that the Lanham Act does not require the attribution of

authorship of creative materials. Id., at 36. Again, if it did, trademark law would

impermissibly expand copyright law.

Here, as in any garden-variety trademark claim, there is no concern that

Reyess Lanham Act claims would provide a copyright-like protection distinct from

copyright law. In his claim, Reyes is not complaining about misappropriation of the

mural artwork, but rather signature elements within it that the public recognizes as

his, in part because these signature elements (by definition) appear in nearly every

single other piece of his artwork, spanning the past decade. [See, e.g. FAC, Exhibit

A.] Put another way, the claim would have existed whether or not this particular

mural had ever been created, because the signature elements (again by definition)

exist independently.

2. The second rationaleconcerns over a catch-22is not invoked here.


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The Supreme Courts second rationale was as follows: If the Lanham Act

were read to require attribution to the source of the creative content of

communicative works out of copyright, then the copier would be between a rock and

a hard place. Dastar, at 35; see also 5 McCarthy on Trademarks and Unfair

Competition 27:78 (4th ed.). If the copier avoided the plagiarism by attributing

some or all of those who had creative input, the copier could be sued under Lanham

Act for falsely implying the creators sponsorship or approval of the defendants

version. Id.

Reyess claim does not invoke the same concern. Theres no catch-22 when a

manufacturer is deciding whether or not to misappropriate source-identifying

symbols that have acquired secondary meaningthere is no course of action

relating to crediting or not crediting the creator that could render such

misappropriation more or less properbecause the misappropriation is improper per

se.

3. The third rationaleconcerns regarding secondary meaningis not invoked here.

The Supreme Courts third rationale was as follows: Liability for Dastars

appropriation would be inconsistent with cases such as in WalMart Stores, Inc. v.

Samara Brothers, Inc., 529 U.S. 205, (2000), in which the court found secondary

meaning to be a requirement under Section 43a liability with respect to trade dress

designs (the entirely of a work). Dastar, at 36. The secondary meaning requirement

ensures that designs cannot be protected under 43(a) without a showing that they

have acquired secondary meaning, so that they identify the source of the product

rather than the product itself, Dastar, at 36, citing Wal-Mart, supra, 529 U.S. at

211, 214 (internal citations omitted).

In Wal-Mart, the defendant copied childrens clothes designed by Samara

an instance of actionable passing off if the designs had acquired secondary meaning.


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If a reverse passing off claim (not requiring secondary meaning) were to require

attribution to the creator of the designs, then Samara could have sued Wal-Mart for

falsely labeling the clothes with its mark and not attributing creation of the designs

Samara. As the Dastar court notes, the carefully considered secondary meaning

requirement would be entirely pointless if the original producer could turn around

and pursue a reverse-passing-off claim under exactly the same provision of the

Lanham Act. 2049.

Allowing a claim like Foxs in Dastar claim would open room for end runs

around Wal-Mart, in that a trade dress design case is more or less conceptually

indistinguishable from a claim for appropriation of a work itself without

allegations of secondary meaning. That Court thus decided that in both contexts,

secondary meaning was a prerequisite to liability.

Reyess claim does not invoke any such concern in that he alleges secondary

meaning.

C. Concurrent liability for trademark and copyright infringement is uncontroversially proper.

Dastar did not undercut the Ninth Circuits holding that Congress created

two separate statutory schemes to govern copyrights and trademarks; in order to

effectuate the purposes of both statutes, damages may be awarded under both.

Craigslist Inc. v. 3Taps Inc. 942 F. Supp. 2d 962, 979 (N.D. Cal. 2013), quoting

Nintendo of Am. v. Dragon Pac. Intl, 40 F.3d 1007, 1011 (9th Cir. 1994). In

Nintendo, the Ninth Circuit affirmed an award of damages for both copyright and

trademark infringement where the defendant sold video game cartridges including

copyrighted Nintendo content and falsely represented that it was selling authorized

Nintendo products. See Nintendo, 40 F.3d at 1010-1011. Put together, selling the

cartridges may have been one act, but it was two wrongs. Id., at 1011. The Ninth

Circuit similarly upheld a preliminary injunction based on simultaneous and


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interrelated copyright, trademark, and unfair competition claims in Dr. Seuss

Enterprises, L.P. v. Penguin Books USA, Inc., a case involving a book about the O.J.

Simpson trial written in the style of Dr. Seusss The Cat in the Hat. See generally,

109 F.3d 1394 (9th Cir. 1997).

Even after Dastar, a plaintiff may be awarded statutory damages under both

the Copyright Act and the Lanham Act where the defendants act simultaneously

infringed the plaintiffs copyright and its trademark. Craigslist, 942 F. Supp. 2d at

979 (citing Microsoft Corp. v. Nop, 549 F. Supp. 2d 1233, 1238 (E.D. Cal. 2008)

(entering default judgment on simultaneous copyright and trademark claims, citing

Nintendo, 40 F.3d at 1010-11). See also Bach v. Forever Living Prods. U.S., Inc.,

473 F. Supp. 2d 1110, 1116-18 (W.D. Wash. 2007) (examining Dastar, Nintendo,

and Dr. Seuss Enters., and holding that the author of Jonathan Livingston Seagull

could bring both copyright and trademark claims against a company that used

elements of the book without permission). Reyess allegations of copyright

infringement and passing off are essentially identical to these cases, and thus his

claim merits the same analysis.

1. The recent Craigslist case In Craigslist, the defendant culled for-rent postings from the plaintiffs

craigslist.org website, and republished them to the public in its own format.

Craigslist, supra, 942 F. Supp. 2d. at 966, 967. The plaintiff claimed the defendants

misappropriation of each posting constituted both trademark and copyright

infringementin that the plaintiff held the copyright in each posting, and because

the defendant also included the Craigslist logo in the republished postings. Id., at

978. The defendant moved to dismiss the trademark claims under Dastar. Id. The

court denied the motion, emphasizing that the single act of misappropriation was

properly alleged to be at once (1) a misappropriation of the simple copyrighted ad

content (which the plaintiff acquired from its users via its terms of use) and (2) a


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misuse of the plaintiffs trademark, which was featured in the postings. Id., at 980.

In other words, the claim included a garden variety passing off claim on top of the

simple copyright claim.

The court found that this not a case like Dastar . . . where the plaintiffs were

attempting to use trademark law to prosecute plagiarism of their creative work. Id.

(citing Bach, supra, 473 F. Supp. at 1118). Craigslist alleges separate and distinct

harms: that defendants infringed Craigslists copyright by using its content without

permission and that defendants use of the craigslist mark confused customers

about Craigslists relationship to defendants and their products and diminished the

value of the mark. Id.

Reyes claim is exactly the same. He alleges infringement of his mural

artwork, but also separate trademark infringement in that Defendants included his

logo in their clothing.

2. The recent Bach case In Bach, the defendants liberally used both various elements of the popular

Jonathan Livingston Seagull bookincluding text and imagesto market their

health and beauty products. The plaintiff author brought a simple copyright claim,

but also alleged that Defendants have falsely represented in commerce that their

companies, products, and services are endorsed by or otherwise affiliated or

associated with the name, title, and images associated with Jonathan Livingston

Seagull and/or Plaintiffs. Bach, 473 F. Supp. 2d 1110, 1114.

The Bach defendants brought a motion to dismiss based on Dastar, arguing

that the author could not piggyback trademark claims in a copyright case. Id., at

1116. The court found that because the author alleged two separate wrongs,

concurrent liability was no problem. The court backed up and explained from the

beginning:

Trademark and copyright law have fundamentally different purposes. Trademark law is concerned with the protection of symbols, elements or


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devices used to identify a product in the marketplace and to prevent confusion as to its source. RDF Media Ltd. v. Fox Broad. Co., 372 F.Supp.2d 556, 563 (C.D.Cal.2005) (quoting EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 63 (2d Cir.2000)). In contrast, copyright law protects the artists right in an abstract design or other creative work. Id. Therefore, trademark law protects the distinctive source-distinguishing mark, while copyright law protects the work as a whole. See Whitehead v. CBS/Viacom, Inc., 315 F.Supp.2d 1, 13 (D.D.C.2004).

The fact that the two areas of law protect against different wrongs is reflected in the many cases in which courts have analyzed the same set of facts under both trademark and copyright law without concluding that the trademark claims were piggybacking on the copyright claims. See Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir.2003) (holding that artist who developed series of photographs which depicted Barbie in various absurd positions did not violate Mattels copyright or trademark rights in Barbie doll); Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir.1997) (affirming grant of preliminary injunction prohibiting the publication of The Cat NOT in the Hat! A Parody by Dr. Juice, a rhyming summary of highlights from the O.J. Simpson trial, as violating Dr. Seusss copyright and trademark rights); Nintendo of Am., Inc. v. Dragon Pacific Intl, 40 F.3d 1007 (9th Cir.1994) (affirming district courts award of damages under both copyright and trademark law where defendant copied Nintendo games (copyright infringement) and then sold the games as a package, but advertised that they were Nintendo products (trademark violation)); Toho Co., Ltd. v. William Morrow & Co., 33 F.Supp.2d 1206 (C.D.Cal.1998) (issuing preliminary injunction based on plaintiffs likelihood of success on both trademark and copyright claims where publisher was about to release book entitled Godzilla (trademark violation) that included images and photographs from original Godzilla film as well as descriptions of the character of Godzilla (copyright violations)).

Bach, 473 F. Supp. at 1117.

This case is like Craigslist, Bach, Nintendo, Microsoft, and Dr. Seuss:

Defendants copied Plaintiff Reyess signature revolutions design (trademark

violation) by copying a piece of artwork in which this source-identifying design was

embodiedi.e. the mural (copyright violation).

D. Defendants cases are inapposite. In support of their Dastar argument, Defendants have several cited three far-

flung casesan unpublished New York district court decision, one First Circuit

decision, and a Puerto Rico district court decisionthat are clones of Dastar and

share what turns out to be the key facts: reverse passing off of copyrightable matter

that has no secondary meaning, i.e. claims for plagiarism. Defendants conspicuously


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ignored the two recent district court decisions in our Circuit (Craigslist, and Bach)

that explicitly hold that passing off claims such as Reyess are not barred by Dastar.

Defendants first cite an unpublished decision from the Southern District of

New York, Thomas Publishing Co., LLC v. Technology Evaluation Centers, Inc.,

2007 U.S. Dist. LEXIS 55086 (S.D.N.Y. July 27, 2007), as standing for the

proposition that reverse passing off' claims brought under the Lanham Act

43(a)(1)(A) cannot focus on allegedly false claims of authorship, invention or

creation. [Motion 11:5-9.] Whatever the accuracy of that statement, it does not

apply to Reyess claim, which is for passing off. Further, Thomas was more or less

identical to Dastar, save for the plaintiffs efforts to characterize its offering (a

technological directory that the defendants had duplicated with only superficial

changes) as a service rather than a product. The court barely addressed the

service/product distinction and ruled on the basis of the close parallel to Dastar:

Because Plaintiffs False Designation Claim centers around its contention that it

originated certain ideas and concepts contained at Defendants website, Plaintiffs

claim is dismissed. Thomas Publishing, supra (citing Dastar, supra, 539 U.S. at

37).

Defendants next cite Zyla v. Wadsworth, a Division of Thomson Corp., 360

F.3d 243 (1st Cir.2004). Like Thomas, the Zyla case is essentially identical to

Dastara contributor to a textbook brought a claim against the books publisher

based on a lack of attribution of credit for her contributions. Zyla, 360 F.3d at 251.

The court made clear that this claim was one of reverse passing off, explicitly

stating that the plaintiff was not claiming that that [her] own name constituted a

service mark. Id., fn. 7. On this basis, the Zyla court concluded that Dastar

controlled, and barred the plaintiffs Lanham Act claim for reverse passing off.

Id., at 252.

Lastly, Defendants cite TMTV Corp. v. Pegasus Broadcasting of San Juan,


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490 F. Supp.2d 228 (D.P.R. 2007)another case of reverse passing off based on

defendant allegedly taking a whole of a copyrighted work. There, the plaintiff

alleged that the defendants television show El Condominio was a knock-off (i.e.

unauthorized derivative work under copyright law) of a show produced by the

plaintiff called 20 Pisos de Historia. TMTV, 490 F. Supp. 2d at 230. Besides a

copyright claim, the plaintiff brought a claim for reverse passing off under the

Lanham Act, alleging that the defendants had falsely designated themselves as the

creators of the show.

As explained above, Plaintiff Reyes brings a simple and garden variety

passing off claimthat Defendants used his signature, source-identifying

revolutions on their goods, thereby creating a likelihood that consumers will be

confused about the origin of Defendants goods, believing them to have been

manufactured by Reyes. Dastar does not bar this type of claim, and Defendants fail

to cite any authority in support of a conclusion to the contrary.

V. PLAINTIFFS FOURTH CAUSE OF ACTION FOR CALIFORNIA STATUTORY UNFAIR COMPETITION SURVIVES

California Business and Professions Code Section 17200 defines unfair

competition to include any unlawful, unfair or fraudulent business act or

practice. Cal. Code Bus. Proc. 17200; Cel-Tech Commc'ns, Inc. v. Los Angeles

Cellular Tel. Co., 20 Cal. 4th 163, 180 (1999). Because the statute is written in the

disjunctive, there are three manners in which a practice can run afoul of the statute:

by being unlawful, unfair, or fraudulent. Cel-Tech, 20 Cal. 4th at 180.

As mentioned above, Reyes 17200 claim is really just a restated version of his

Lanham Act claim. Indeed, under the statutes unlawful prong, a practice is

unlawful if it violates a law other than Section 17200. Defendants are essentially

arguing that because they have definitely shown Reyess Lanham Act claim to be

barred by Dastar, they have effectively disposed of both unfair competition claims


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as wellbecause it is well settled that unfair completion claims cannot borrow a

copyright infringement claim under the preemption doctrine. [Motion 11:26-12:12.]

But as explained above, Reyess properly pleaded claim for garden variety

passing off in violation of the Lanham Act is not barred by Dastar, because the

claim alleges a wrong that is separate and distinct from Plaintiffs copyright

infringement claim. Since Reyess 17200 claim is based on Defendants violation of

the Lanham Act, the issue of copyright preemption does not arise, and the claim

survives because a violation of the Lanham Act constitutes an unlawful and

fraudulent business practice.

A. Reyes properly alleges an unlawful business practice under 17200. Because Reyes properly alleges trademark infringement under the Lanham

Act, his statutory unfair competition claim necessarily survivesbecause violation

of the Lanham Act is unlawful. Summit Technology, Inc. v. High-Line Medical

Instruments, Co. 933 F. Supp. 918, 943 (C.D. Cal. 1996) (under 17200, Plaintiff

may redress violations of the Lanham Act.).

By proscribing any unlawful business practice, Section 17200 borrows

violations of other laws and treats them as unlawful practices that the unfair

competition law makes independently actionable. Id., citing State Farm Fire &

Casualty Co. v. Superior Court, 45 Cal. App. 4th 1093, 1103 (1996). In effect, the

unlawful prong of 17200 makes a violation of the underlying law a per se

violation of 17200. Id.; see also Kasky v. Nike, Inc., 27 CA 4th 939, 950 (2002).

Virtually any law or regulationfederal or state, statutory or common law

can serve as predicate for a 17200 unlawful violation. Thus, if a business

practice violates any law, it also violates 17200 and may be redressed under that

section. People v. E.W.A.P., Inc. 106 CA3d 315, 319 (1980). While the Copyright

Act is one of the few exceptions based on exclusive federal jurisdiction [see 17

U.S.C. 301; Melchior v. New Line Prods., Inc., 106 Cal. App. 4th 779, 791 (2003)],


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the Lanham Act is indisputably among the statutes that may be borrowed.

Denbicare U.S.A., Inc. v. Toys R Us, Inc. 84 F3d 1143 (9th Cir. 1996). Thus,

because Plaintiff Reyes adequately alleges violation of the Lanham Act, as

explained above, he also properly pleads a cause of action for violation of Section

17200.

B. Reyes properly pleads fraudulent business practices under 17200. Trademark infringement also constitutes statutory unfair competition under

the fraudulent prong. The courts have recognized that [a]n action for unfair

competition under 17200 is substantially congruent to a trademark infringement

claim under the Lanham Act. Academy of Motion Picture Arts & Sciences v.

Creative House Promotions, Inc. 944 F2d 1446, 1457 (9th Cir. 1991). Indeed, in

Kelley Blue Book v. CarSmarts, Inc. 802 F. Supp. 278 (CD CA 1992), this federal

district court held that where a Lanham Act violation is establishedi.e., likelihood

of confusiona 17200 violation would also be established. Kelley Blue Book, 802

F. Supp. 278 at 288, 289. In that case, the court found that the defendant's toll-free

number (1800BLUE BOOK) would likely confuse the public into thinking it

had an affiliation with Kelley's Blue Book, which is published by plaintiff. This

same misleading nature of the communication necessarily constitutes statutory

unfair completion under the fraudulent prong. Id.

Like in Kelley Blue Book, Plaintiff Reyes claims that Defendants use of his

signature, source-identifying elements, is designed to create and does create the

false and deceptive commercial impression that the Just Cavalli garments and

accessories are associated with and/or manufactured by Reyes.5 [FAC 62.] As

5 Bizarrely, Defendants cite this very paragraph of the FAC in attributing to Reyes the allegation that that Moving Defendants have misrepresented Plaintiffs [sic] work as their own i.e., that Defendants have engaged in reverse passing off. [Motion 9:21, 22.] But this paragraph of the FAC is one of the clearest examples that this is a passing off case.


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explained above, this same misleading nature of the communication necessarily

constitutes statutory unfair competition under the fraudulent prong.

VI. PLAINTIFFS FIFTH CAUSE OF ACTION FOR COMMON LAW UNFAIR COMPETITION SURVIVES

The same key argument advanced above with respect to statutory unfair

competition applies equally to the common law variety. Defendants argument that

the claim is barred depends on this Court agreeing that Reyes Lanham Act claim is

barred. But because the Lanham Act claim survives, as explained above, so too does

its common law unfair competition analog.

In other words, in challenging Plaintiff Reyess Fifth claim for Unfair

Competition under California common law, Defendants again ignore Reyess

Lanham Act claims, and argue only that the Copyright Act preempts Reyess

common law claim. [Motion 12:26-13:3.] As with his Section 17200 claim, Reyess

garden variety passing off claim under the Lanham Act is an entirely proper basis

for his unfair competition claim under California common law.

Unfair competition originated as a common law tort. At common law, before

the enactment of any statutory prohibition against unfair competition, unfair

competition had a stable and relatively narrow meaning that focused on business

practices that harmed competitors by deceiving customers. Dunston v. Los Angeles

Van etc. Co., 165 Cal. 89, 94 (1913). Originally, it was the deceptive passing off

of ones goods or services as those of another. The fundamental principle

underlying this entire branch of the law is, that no man has the right to sell his goods

as the goods of a rival trader. Weinstock, Lubin & Co. v. Marks, 109 Cal. 529, 539

(1895); see also Lutz v. Western Iron & Metal Co., 190 Cal. 554, 561 (1923);

Banzhaf v. Chase 150 Cal. 180, 183 (1907); Pierce v. Guittard 68 Cal. 68, 71-72

(1885).

California unfair competition law is substantially congruent to the Lanham


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Act, and a plaintiff complaining of trademark infringement in federal court may

invoke either federal or state protections, or both. Intl Order of Jobs Daughters v.

Lindeburg & Co., 663 F.2d 912, 916 (9th Cir. 1980). The primary consideration

in trademark-related unfair competition cases in California, as elsewhere, is the

likelihood of confusion. Academy of Motion Picture Arts and Sciences v. Creative

House Promotions, Inc., 728 F. Supp. 1442, 1452 (C.D. Cal. 1989) aff'd in part,

rev'd in part, (9th Cir. 1991) 944 F.2d 1446.

As explained above, Plaintiff Reyes has properly pled a cause of action for

passing off under the Lanham Act. [FAC 55-72.] Specifically, Reyes alleges

that Defendants have wrongfully appropriated his business and goodwill value for

themselves, deceiving consumers, causing harm to his business, and diluting the

value of his rights and reputation. [FAC 67, 68.] These allegations are clearly

sufficient to state a cause of action for unfair competition under California common

law.

VII. CONCLUSION Its hard to accept that Defendants embrace their own analysis, which is

overly simplistic at every turn. Their arguments relating to copyright management

information rely on two long-discredited cases to support a questionable reading of

the statutewhen the cases that do the discrediting are not hard to find. And their

arguments relating to trademark rely on a remarkable misreading of Reyess claims

as being for reverse passing off, and a failure to offer anything but the most facile

analysis of the Dastar holding.


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DATED: December 15, 2014 ERIKSON LAW GROUP By: /s/ David Alden Erikson Attorneys for Plaintiffs JASON WILLIAMS,

VICTOR CHAPA, and JEFFREY RUBIN


revok reyes steel opposition to cavalli defendants' motion to dismiss (49)

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