ISE v. Longarzo - MSJ Order

Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 1 of 18 Page ID #:789

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CIVIL MINUTES—GENERAL Case No. CV 17-9132-MWF 17-9132-MWF (JCx) Date: December 11, 2018 Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.

Present: The Honorable MICHAEL W. FITZGERALD, U.S. District Judge Deputy Clerk: Rita Sanchez

Court Reporter: Not Reported

Attorneys Present for Plaintiff: None Present

Attorneys Present for Defendant: None Present

Proceedings (In Chambers):

ORDER RE: MOTION FOR SUMMARY JUDGMENT [57]

Before the Court is Gerald A. Longarzo, Jr., and Jeff J eff Civillico’s (together, “Defendants”) Motion for Summary Judgment (the “Motion”), filed on November 12, 2018. (Docket No. 57). On November November 19, 2018, Plaintiff Plaintiff ISE ISE Entertainment Entertainment Corporation (“ISE”) filed filed an Opposition. (Docket No. No. 63). Defendants filed their Reply on November November 26, 2018. (Docket No. 64). 64). Pursuant to a Court’s Order, Order, ISE filed a Supplemental Supplemental Opposition on December December 6, 2018. (Docket No. No. 66). The Court has read and considered the papers filed in connection with the Motion and held a hearing on December 10, 2018. For the reasons discussed below, the Motion is GRANTED. ISE’s remaining claim under the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512, fails where Defendants’ communication with a third party was not a DMCA Notice and ISE has failed to show that Defendants made a knowingly materially misrepresentation. I.

BACKGROUND A.

Factual Background

ISE, a Nevada corporation with its principal place of business in Las Vegas, is “the owner, creator and copyright holder of the television series, ‘The Weekend in Vegas,’ (the ‘Series’) which airs on the KNTV ABC Affiliate station in Las Vegas, Nevada, and was, until until the actions of [Mr. [Mr. Civillico and Mr. Longarzo] herein, herein, _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 1



available for download download on Amazon.com Amazon.com [‘Amazon’].” [‘Amazon’].” (ISE’s Statement of of Uncontroverted Facts (“ISUF”) No. 1 (Docket No. 68); Second Amended Complaint (“SAC”) ¶¶ 1, 7 (Docket No. 40)). Mr. Civillico, a Nevada resident, is the co-producer of the Series and appears on camera as its host. (ISUF No. No. 3; SAC SAC ¶¶ ¶¶ 3, 9). On February 7, 2017, 2017, ISE and Mr. Civillico entered into a written “Deal Memo,” a one-page document that ISE attached to its SAC. (ISUF No. 2). The Deal Memo provides, provides, inter alia : Company [ISE] and Co-Producer [Mr. Civillico] have established a business relationship through through the production production of the television television series known as The Weekend in Vegas … … Co-Producer agrees that any work created during the course of business with Company is the the original work and and property of Company. CoProducer further agrees that all rights, including copyrights, performance rights and publicity rights, belong to Company. Id.). ( Id.

On August 8, 2017, Mr. Civillico submitted an online complaint to Amazon concerning ISE’s infringement of his rights of publicity and privacy with respect to the Series. (Defendants’ Statement Statement of Uncontroverted Uncontroverted Facts (“DSUF”) No. 1 (Docket No. 59)). The online complaint complaint to Amazon, in its its entirety, stated: “Use “Use of my name and/or image/likeness is an infringement of my right of privacy and right of publicity, as these rights have not been been granted by me.” ( Id. Nos. 2–3). On the same day, Mr. Civillico’s complaint was rejected by Amazon in an email with the subject line, line, “Your Report of Rights Infringement Infringement on [Amazon].” [Amazon].” ( Id. Nos. 4– 5). The email came from “[email protected].” “[email protected].” ( Id. No. 6). The rejection rejection email provided as follows: follows: _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 2



You have not provided sufficient evidence to support your request for the removal of the reported content. We cannot take action on or complete complete any requests in your report for the reasons listed below. You have not provided evidence that these products were illegally manufactured, recopied, or unlawfully obtained. Please resubmit your report with Identification of the intellectual property right asserted, by registration number, or URL if applicable. All notices of intellectual property infringement must include: –The name and email address of the person submitting the notice, plus any additional contact details. –The name of the rights rights owner, if the the notice is submitted by an agent of the rights owner. –Identification of of the intellectual property property right right asserted, by registration registration number, if applicable. –Identification of of the specific content content on Amazon believed believed to be infringing, by ASIN or URL. If your report is about specific seller listings, please provide a list of sellers. –Statement that the information in in the notice is accurate. accurate. -- Statement that the submitter is authorized to act on behalf of the rights owner and has a good-faith belief that the use of the content is not authorized by the rights owner, its agent, or the law. ASIN: B074FGM69R, The Weekend in Vegas Complaint ID: 1049180461 Id. No. 7). ( Id.

Other than the online complaint on August 8, 2017, Mr. Civillico states that he had no other written communications with Amazon or its representatives in connection with the Series or ever claimed that that any copyright had had been infringed. infringed. ( Id. Nos. 8–9). Mr. Civillico also states that he had the good faith belief, and continues to do so, that _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 3



ISE’s conduct was violating his rights of publicity and privacy and that he had the right to make the online complaint. ( Id. No. 11). On August 18, 2017, Mr. Longarzo, a California resident and Mr. Civillico’s attorney, sent an email to Amazon, requesting assistance on getting episodes of the Series pulled down down since Mr. Civillico’s Civillico’s online complaint complaint “did not work.” work.” ( Id. Nos. 12, 15). Mr. Longarzo informed informed Mia Morgan, an employee of Amazon, Amazon, the following: [Mr. Civillico’s] image, likeness and performance are being improperly used by a producer, Gary Harmon, who has no assets but intentionally breached an agreement, agreement, failed to pay contractually owed amounts, even took money from [Mr. Civillico] to pay for certain expenses with a promised quick reimbursement reimbursement . . . and is brazenly using using these episodes to try to profit on my client’s work. Id. Nos. 16–17). Ms. Morgan informed ( Id. informed Mr. Longarzo that she would “touch bases bases with [Amazon’s] [Amazon’s] takedown team who reviews these requests.” requests.” ( Id. No. 20).

On the same day, ISE “was informed by Amazon[] that Longarzo had filed an infringement claim notice [and ] that the distribution of the Series submitted for sale through [Amazon] may not be properly authorized by the appropriate rights holder.” (ISUF No. 4). ISE claimed that the “infringement “infringement claim notice” was a DMCA Notice and “was false at the time it was filed,” because Mr. Longarzo falsely “represented in the DMCA Notice, under penalty of perjury, that the Series infringed upon the copyright of Civillico.” ( See id. No. 6; SAC ¶ 12). Mr. Longarzo’s declaration states that he “did not certify these messages under penalty of perjury perjury or make any claim claim that [ISE] had infringed a copyright copyright belonging to Civillico.” (DSUF Nos. Nos. 19, 23). His declaration also states that Amazon’s Amazon’s designated DMCA agent is not Ms. Morgan and when Mr. Civillico’s initial rejection of his online complaint came from [email protected] as opposed to [email protected], the email address registered with with the Copyright Copyright Office. ( Id. No. 30). The email email exchange exchange between Mr. Longarzo Longarzo and Ms. Morgan does does not contain the word word “copyright.” ( See Declaration of Gerald A. Longarzo, Jr., (“Longarzo Decl.”), Ex. A (Docket No. 57-4)). _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 4



On August 21, 2017, Ms. Morgan confirmed that the material had been taken down from Amazon’s website. (DSUF No. No. 21). On August 24, 2017, an attorney for ISE wrote a letter to Mr. Longarzo, contending that, pursuant to the Deal Memo, Mr. Civillico “holds no rights to any intellectual property of ISE regarding [the Series],” and demanding that Mr. Longarzo “immediately notify Amazon that your client’s [Mr. Civillico’s] claim is withdrawn.” (ISUF No. 7). On August 29, 2017, Mr. Longarzo responded responded by email, contending contending that ISE was in breach of a verbal agreement to pay Mr. Civillico $1,000 per week and that the Deal Memo does not permit ISE to use Mr. Civillico’s “name, image or likeness in connection with [his] on-camera services” absent authorization, and refusing to withdraw the Amazon’s Amazon’s claim. claim. ( Id. No. 8). On November 13, 2017, ISE’s current counsel sent a letter to Mr. Longarzo informing him that in the DMCA Notice, “[Mr.] Longarzo knowingly misrepresented to [Amazon] that the Series was infringing, and demanded retraction or withdrawal of Id. No. 11). Mr. Longarzo responded the DMCA Notice.” ( Id. responded by email the the next day, writing, among other things, that “[t]he information in your letter is not accurate, but we thank you and Gary [principal of ISE] for your continued interest in Jeff [Civillico].” ( Id. No. 12). B.

Procedural Background

On November 22, 2017, ISE commenced this action in the Los Angeles County Superior Court. (See generally Complaint (Docket (Docket No. 1-1)). 1-1)). In its Complaint, Complaint, ISE asserted four claims for relief: (1) a claim for declaratory relief seeking “a judicial declaration of the rights and duties of the parties hereto with regard to who is the rightful owner of the copyright of the Series,” against both Defendants; (2) “damages for false DMCA Notice” pursuant to the DMCA, 17 U.S.C. § 512, against both Defendants; (3) breach of contract, against Mr. Civillico; and (4) fraud, against both Defendants. (See id. ¶¶ 1–33).

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On December 20, 2017, Defendants removed this action, invoking the Court’s federal jurisdiction with respect to ISE’s claim for damages damages under the DMCA. ( See Notice of Removal (Docket No. 1)). 1)). On December 27, 2017, Defendants filed a motion to dismiss ISE’s Complaint pursuant to Federal Federal Rule of Civil Procedure Procedure 12(b)(1) 12(b)(1) and (b)(6). (b)(6). (Docket No. 8). 8). In an Order dated February 2, 2018 (the “February 2 Order”), the Court denied Defendants’ motion to dismiss with respect to ISE’s DMCA claim, and granted the motion with leave to amend as to ISE’s breach of contract, fraud, and declaratory relief claims. (Docket No. 17). On February 26, 2018, ISE amended its Complaint, now asserting three claims for relief: (1) “damages for false DMCA Notice” pursuant to § 512(f), against both Defendants; (2) breach of contract, against Mr. Civillico; and (3) “rescission and restitution,” against Mr. Civillico. (First Amended Amended Complaint (“FAC”) (“FAC”) ¶¶ 1–30 (Docket No. 20)). The allegations relating to ISE’s ISE’s DMCA claim (which constituted the majority of the factual allegations) in the FAC are identical to those in the Complaint. (Compare FAC ¶¶ 1–19 with Complaint ¶¶ 1–15, 19–23). On March 12, 2018, Defendants again moved to dismiss the FAC, which the Court again denied as to the DMCA claim and granted as to the breach of contract and rescission and restitution restitution claims (the “April “April 16 Order”). Order”). ( See Docket Nos. 25, 38). On May 7, 2018, ISE filed its SAC, in which it asserted four claims for relief: (1) “damages for false DMCA Notice” pursuant to § 512(f), against both Defendants; (2) “breach of oral and implied in-fact contract,” against Mr. Civillico; (3) “rescission and restitution,” against Mr. Civillico; and (4) “declaratory relief,” against both Defendants. (SAC ¶¶ 1–38). The allegations allegations relating to ISE’s DMCA claim (which again constitute the majority of the factual allegations underpinning this action) in the SAC are virtually virtually identical to those those in FAC and the Complaint. Complaint. ( Compare SAC ¶¶ 1– 19 with FAC ¶¶ 1–19 and Complaint ¶¶ 1–15, 19–23). On May 21, 2018, Defendants again moved to dismiss the claims against them, which the Court granted without leave to amend as to the breach of contract and _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 6



rescission and restitution restitution claims. (See Docket Nos. 45, 45, 52). Defendants now move for summary judgment on the remaining DMCA claim. II.

REQUEST FOR JUDICIAL NOTICE

Along with their Motion, Defendants ask the Court to take judicial notice of Corporation, et al. v. J.C. Mike DiRubio (1) the final judgment in ISE Entertainment Corporation, (No. 1-15-CV-282893), 1-15-CV-282893), a case in the Santa Clara County Superior Court; and (2) Amazon’s public filing with the Copyright Office identifying its agent to received notices of infringement infringement pursuant pursuant to the the DMCA. (Docket No. 58). ISE does not oppose the Request for Judicial Notice (“RJN”). These two documents are are matters of public public record. Accordingly, the RJN is GRANTED. III.

OBJECTIONS A.

Evidentiary Objections

Defendants object to some of the evidence on which ISE relies in opposing the Motion. (Docket No. 70). The Court finds finds that none none of the objections is convincing. Defendants’ arguments are garden variety evidentiary objections based on, for example, relevance, relevance, lack of foundation, and hearsay. ( Id.). While these these objections objections may be cognizable at trial, trial, on a motion for summary judgment, judgment, the Court is is concerned only with the admissibility of the relevant facts at trial, and not the form of these facts as presented in the Motion. Motion. See Burch v. Regents of Univ. of California , 433 F. Supp. 2d 1110, 1119–20 (E.D. Cal. 2006) (making this distinction between facts and evidence, Fed. R. Civ. P. 56(e), and overruling objections that evidence was irrelevant, speculative and/or argumentative). argumentative). Moreover, to the extent a fact is not relevant, relevant, the Court will not consider it in reaching its decision. In ruling on the the Motion, the Court Court relies only upon admissible admissible evidence. To the extent the Court relies upon evidence to which Defendants object, the objections are _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 7


UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CIVIL MINUTES—GENERAL Case No. CV 17-9132-MWF 17-9132-MWF (JCx) Date: December 11, 2018 Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al. OVERRULED. To the extent the Court does not, the objections are DENIED as moot. B.

Other Objections

Defendants also object to the Supplemental Opposition, arguing that it violates the Court’s Court’s Order. (Docket No. No. 69). The Court concludes that that the Supplemental Opposition does not, and thus the objection is also OVERRULED. IV.

LEGAL STANDARD

In deciding a motion for summary judgment under Federal Rule of Civil Procedure 56, the Court applies Anderson, Celotex, and their Ninth Circuit progeny. Anderson, 477 U.S. at 242; Celotex Corp. v. Catrett , 477 U.S. 317 (1986). “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The Ninth Circuit has defined the shifting burden of proof governing motions for summary judgment where the non-moving party bears the burden of proof at trial: The moving party initially bears the burden of proving the absence of a genuine issue of material material fact. Where the non-moving non-moving party bears bears the burden of proof proof at trial, the moving moving party need only only prove that there there is an absence of evidence to support support the non-moving non-moving party’s party’s case. Where the moving party meets that burden, the burden then shifts to the non-moving party to designate specific facts demonstrating demonstrating the existence of of genuine issues for trial. This burden is not a light one. The non-moving non-moving party must show more than the mere existence existence of a scintilla of evidence. evidence. The non-moving party must do more than show there is some “metaphysical doubt” as to the material material facts at issue. In fact, the non-moving non-moving party must must come forth with evidence from which a jury could reasonably render a verdict in the non-moving party’s favor. _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 8


UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA CIVIL MINUTES—GENERAL Case No. CV 17-9132-MWF 17-9132-MWF (JCx) Date: December 11, 2018 Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al. Coomes v. Edmonds Sch. Dist. No. 15 , 816 F.3d 1255, 1259 n.2 (9th Cir. 2016) Litig. , 627 F.3d 376, 387 (9th Cir. 2010)). (quoting In re Oracle Corp. Sec. Litig.

“A motion for summary judgment may not be defeated, however, by evidence that is ‘merely colorable’ or ‘is not significantly probative.’” Anderson, 477 U.S. at 249–50. V.

DISCUSSION

Through their Motion, Defendants argue that (1) since Mr. Longarzo’s email communications with Amazon were not DMCA Notices, § 512(f) does not apply; and (2) neither Mr. Longarzo nor Mr. Civillico “knowingly materially misrepresent[ed]” any copyright infringement by ISE. (Mot. at 9–18). 9–18). A.

Request for More Time to Conduct Discovery

In its initial Opposition, ISE asked the Court to deny or defer consideration of the Motion in order to give Plaintiff more time to conduct discovery – specifically, more time to “gather essential declarations.” declarations.” (Opp. at 7; Declaration of Kenneth Kenneth G. Eade on November 19, 2018 (“Eade Decl. I”) ¶ 2). Under Rule 56(d), a court may deny or defer considering a summary judgment motion, and may allow a nonmoving party more time to conduct discovery, “[i]f a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot present facts essential to justify its opposition opposition . . . .” Fed. R. Civ. P. 56(d)(1)–(2). 56(d)(1)–(2). A party requesting more time to conduct conduct discovery pursuant pursuant to Rule 56(d) “must show: (1) it has set forth in affidavit form the specific facts it hopes to elicit from further discovery; (2) the facts sought exist; and (3) the sought-after facts are essential to oppose summary judgment.” Family Home & Fin. Ctr., Inc. v. Fed. Home Loan Mortg. Corp., 525 F.3d 822, 827 (9th Cir. 2008) (emphasis added; internal citations omitted). “Failure to comply with these requirements requirements is a proper ground for for denying discovery and proceeding to summary judgment.” Id. (internal quotation marks and citations omitted). _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 9



In requesting that the Court defer ruling on the Motion, ISE stated nothing beyond the fact that that it needs more time time to gather “essential “essential declarations.” This bare contention, of course, falls far short of the “specific facts” required to justify ISE’s request. To provide ISE another opportunity opportunity to justify its request, on November November 30, 2018, the Court ordered ISE to file a Supplemental Opposition explaining whose declarations it is seeking and why they could not not have been obtained earlier. (Order Re: Supplemental Opposition Opposition at 1 (Docket No. 65)). On December 6, 2018, ISE filed filed a Supplemental Opposition Opposition and another another declaration by its counsel. ( See generally Supp. Opp.; Declaration of Kenneth G. Eade On December 5, 2018 (“Eade Decl. II”)). Mr. Eade’s new declaration states that ISE “was unable to present all the facts essential to justify its opposition in this case, because of a lack of contact between [ISE’s] counsel and [ISE’s] representative Gary Harmon before the initial due date of Id. ¶ 2). Mr. Eade then names the opposition.” ( Id. names 42 witnesses and states that that he “had been unable to gather gather statements from any of them before before the opposition date date to determine whether they possessed material facts which could be useful in opposing the [M]otion.” ( Id. ¶ 3). It is unclear whether whether any of these purported purported witnesses were were properly disclosed disclosed under Rule 26. Obviously, these witnesses are either willing to cooperate with ISE or they are not. (It appears that that most if not all of the witnesses are affiliated with with ISE.) If they are, are, then ISE had plenty of time to obtain declarations declarations from them voluntarily. voluntarily. If that did not happen, it is simply due to a lack of diligence. To the extent that some of the the witnesses are affiliated with Defendants or otherwise unwilling to cooperate, then necessarily ISE would have needed discovery to obtain any information or testimony from them. The discovery cut-off was November 16, 2018. ISE cannot conduct further discovery. Nor can ISE plausibly plausibly assert that it lacked the opportunity to to conduct discovery. discovery. ISE commenced this action in Superior Superior Court over a year ago. The Scheduling Order that established the discovery cut-off cut-off was issued on April 16, 2018. (Docket No. 36). Defendants are not moving for summary judgment immediately after the Scheduling _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 10



Order was issued. Of course, ISE would would never have been granted leave to depose depose 42 witnesses, but ISE has had ample opportunity to conduct discovery in support of its claims. Finally, ISE has not moved to extend the deadline pursuant to Rule 15 and suggests no reason that that such a motion would would have been granted. granted. While ISE is implicitly requesting a modification of the Scheduling Order, it has not made the requisite showing of diligence or good cause to justify such a request. See Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992) (party seeking to modify scheduling order must establish “good cause” for doing so, the primary focus of which is “the diligence of the party seeking the amendment”; if the party “was not diligent, the inquiry should end.”). Therefore, the Court will proceed to rule on Defendants’ Motion on the merits. B.

Overview of the DMCA

“In 1998, Congress adopted the DMCA, 17 U.S.C. § 512, in part to address copyright concerns with user-driven media, such as the YouTube internet website” or other internet service providers (“ISPs”) like Amazon. Shropshire v. Canning , No. 10CV-01941-LHK, 2011 2011 WL 90136, at *4 (N.D. Cal. Jan. 11, 2011). Section 512(c) sets forth a process by which an aggrieved owner of a copyrighted work can provide notice to an ISP that one of the ISP’s users has exploited that work, via the ISP’s website, without authorization. See § 512(c)(3). Among other things, things, the copyright owner must provide written notification, sworn sworn under penalty of of perjury, that identifies identifies both the infringed and infringing work, and that contains a “statement that the complaining party has a good faith faith belief that the the use of the material material in the manner complained of is not authorized by the copyright owner, its agent, or the law.” See id. Once the ISP receives a “takedown notice” under § 512(c)(3), it can avoid liability for infringement if it – under what is commonly referred to as the DMCA’s “safe harbor” mechanism – “responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or or to be the subject of infringing activity.” 17 U.S.C. § 512(c)(1)(C). 512(c)(1)(C).




Section 512(g) sets forth the criteria that an ISP must satisfy to avoid liability to the ISP subscriber ( i.e., the allegedly-infringing party) whose content has been removed at the request of the copyright owner ( i.e., the allegedly-infringed allegedly-infringed party) under the “safe harbor” provision. provision. Upon removing removing or disabling access to the subscriber’s content, the ISP must: (1) “take[ ] reasonable steps to promptly notify the subscriber that it has removed or disabled access to the [allegedly-infringing] [allegedly-infringing] material”; (2) furnish to the copyright owner any “counter notification” ( i.e., a statement from the subscriber that its content is not actually infringing) it has received from the subscriber within ten days of receipt; and (3) “replace[ ] the removed material and cease[ ] disabling access to it not less than 10, nor more than 14, business days following receipt of the counter notice” unless the copyright owner informs the ISP that it has filed a lawsuit “to restrain the subscriber from engaging in infringing activity relating to the material on the [ISP’s] system system or network.” network.” § 512(g). The DMCA also provides protection for ISP subscribers whose content is removed as the result of fraudulent fraudulent takedown notices. Pursuant to § 512(f), “[a]ny “[a]ny person who knowingly knowingly materially misrepresents misrepresents . . . that material material or activity is is infringing . . . shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, misrepresentation, [or] as the result of the service provider relying upon such s uch misrepresentation in removing or disabling access to the material or activity claimed to be infringing . . . .” § 512(f). C.

DMCA Notice

Defendants makes several arguments as to why Mr. Longarzo’s email communications with Amazon were not DMCA Notices and, as a result, § 512(f) does not apply. apply. (Mot. at 9–13). 9–13). First, Defendants argue that because ISE’s communications with Amazon “did not assert copyright infringement or even mention copyright rights,” ISE has no basis to conclude that Mr. Longarzo sent Amazon a takedown notice under the DMCA as _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 12



opposed to a request to remove remove the Series Series for some some other reasons. reasons. (Mot. at 9–10). 9–10). ISE, in response, argues that Mr. Longarzo’s notice “could not have been anything else” other than a DMCA Notice and points the Court to the email ISE received from Amazon informing informing it that that the Series had been taken taken down. (Supp. Opp. at 13–14). The email, in relevant parts, stated the following: We’ve [Amazon] received a notice from a third party claiming that the distribution of the following title and/or its audio/video contents you submitted for sale through Amazon may not be properly authorized by the appropriate rights holder: Title Names: The Weekend in Vegas ... Below is the contact information of the third party who claims you infringed its rights . We expect that that you’ll compensate this party party appropriately for any infringing copies sold: Claimant Name: Jerry Longarzo ... If you believe this action has been taken in error, please notify us: https://www.amazon.com/gp/help/rep https://www.amazon.com/gp/help/reports/infringem orts/infringement. ent. (Declaration of Mark Masoni (“Masoni Decl.”), Ex. 2 (Docket No. 67-2)) (emphasis added). ISE, while ironically arguing that Mr. Longarzo’s notice could not have been anything other than a DMCA Notice, notes that it is possible to “claim that content on Amazon violates a trademark (not a DMCA [N]otice), a patent (not a DMCA [N]otice) or a copyright copyright (a DMCA [N]otice).” (Supp. Opp. Opp. at 14). But even this this is an incomplete description description of the bases for which a claimant may submit a complaint to Amazon. _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 13



Plaintiff acknowledges, and a review of the link Plaintiff points to shows, that Amazon permits requests to remove content for the following reasons: 



Copyright concerns – unauthorized use of copyrighted material such as text, photos, product designs, designs, videos, music, software; software; Trademark concerns – unauthorize use of a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods;



Patent concerns; and



Other concerns .

(See id. at 14; Amazon’s Report Infringement, available at https://www.amazon.com/gp/help/r https://www.amaz on.com/gp/help/reports/infringem eports/infringement ent)) (emphasis added). Both Mr. Civillico’s initial (and ultimately rejected) complaint to Amazon and Mr. Longarzo’s subsequent complaint were not based on copyright concerns and fall under the category of “Other concerns.” concerns.” Mr. Civillico’s initial complaint complaint noted that he was the “Rights Owner” as opposed to the copyrights owner and described to Amazon the infringing activities as: “Use of my name and/or image/likeness is an infringement and right of publicity publicity , as these rights have not been granted by of my right of privacy and me.” (Declaration of Jeff Civillico Civillico (“Civillico Decl.”), Decl.”), Ex. A (Docket No. 57-2)) (emphasis added). Following the initial denial of Mr. Civillico’s Civillico’s complaint, Mr. Mr. Longarzo’s communications communications with Ms. Morgan, an employee of Amazon, stated that “his [Mr. Civillico’s] image, likeness and performance are being improperly used.” Id., Ex. B) (emphasis added). ( Id. By its express terms, the DMCA applies only to copyrights, not patents, trademarks, or other rights like the right of publicity. See, e.g., Williams v. Life’s Rad , No. 10-cv-86-SBA, 10-cv-86-SBA, 2010 WL 5481762, 5481762, at *3 (N.D. Cal. May 12, 2010) (“Had (“Had Congress intended to include trademark [or patent and other] infringement infringement within the purview of the DCMA, it easily could could have done so.”). By requesting that that Amazon _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 14



removes the Series based upon infringement of Mr. Civillico’s rights of publicity and privacy, Mr. Longarzo Longarzo has not sent a DMCA DMCA takedown notice. ISE also argues that, assuming Mr. Civillico’s right of publicity was the subject of the online complaint, he “lost all intellectual property rights to his likeness contained in the show itself as [Mr. Civillico’s likeness] became a part of the copyrighted work [the Series] owned by ISE” ISE” when he signed the Deal Memo. (Supp. Opp. at 15–16). At the hearing, ISE reiterated that the primary issue to be resolved is the contractual nature of the Deal Memo between the parties. ISE’s argument, however, is unavailing and simply an attempt to relitigate the breach of contract contract claim that the Court Court has already dismissed dismissed without leave to amend. The Court, in its final substantive analysis of ISE’s breach of contract claim, notes the following: Simply put, if ISE intended to bind [Mr.] Civillico to do any of the things it now alleges he was bound to do, it should have entered a contract with him that actually said these things. The Deal Memo essentially essentially does not require [Mr.] Civillico to do anything apart from keeping ISE’s information confidential. (April 16 Order at 12). Second , Defendants cite to the requirements with which a DMCA Notice must comply under § 512(c)(3)—in writing, contains a physical or electronic signature, identifies both the infringed and infringing works, contact information for the complaining party, made under the penalty of perjury, etc.—and argue that ISE’s § 512(f) claim fails because Mr. Longarzo’s communications with Amazon do not comply with any of these these requirements. requirements. (Mot. at 11–12). 11–12). In a confusing confusing response, ISE has lifted verbatim the Court’s reasoning in the February 2 Order, including citations, to argue the following:

Defendants cite no authority to support such a stringent pleading requirement and the Court has has not located any. It would make little little sense _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 15



to require a plaintiff suing under [§] 512(f) to plead – – consistent with Rule 11 – what the defendant did or did not include in their communications with an ISP where the plaintiff has only received notification that the ISP has removed content at the defendant’s request but not the defendant’s request itself. (Supp. Opp. at 14) (emphasis added). ISE’s argument, of course, is unconvincing because the Court’s previous reasoning pertains to a motion to dismiss rather than the current motion for summary judgment. The issue now is whether whether Defendants have adequately adequately pointed to evidence to show that the requirements with which a DMCA Notice must comply under § 512(c)(3) were met. The Court concludes that there there is no indication, nor has ISE pointed to evidence evidence to the contrary, contrary, that the requirements requirements were indeed met. Mr. Longarzo’s communications with Amazon did not identify any copyrighted work by Mr. Civillico. Civillico. (Longarzo Decl., Ex. A). Neither was was any representation made under the the penalty of perjury. perjury. (See id.). Since Defendants Defendants have pointed pointed to evidence evidence that not all of the requirements of § 512(c)(3) were met and since ISE has not pointed to any evidence to the contrary, the Court concludes that ISE’s § 512(f) claim must fail. See Perfect 10, Inc. v. CCBill LLC , 488 F.3d 1102, 1112 (9th Cir. 2007) (“[DMCA] thus signals that substantial compliance means substantial s ubstantial compliance with all of § 512(c)(3)’s clauses, not just some of them.”) (emphasis added). Finally, Defendants argues, to which ISE does not respond, that Mr. Longarzo’s communications with Amazon “did not follow the procedures required by the DMCA.” (Mot. at 12–13).

The DMCA requires an ISP to submit to the Copyright Office the name, address, telephone number, and email address of a “designated agent to receive” DMCA Notices. § 512(c)(2). 512(c)(2). And to be effective, effective, a DMCA Notice must must be “provided to to the [ISP’s] designated agent.” agent.” § 512(c)(3)(A). 512(c)(3)(A). “An otherwise otherwise perfect [DMCA Notice], Notice], but service provider’s designated agent, is equally a nullity.” which is not served on the service _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 16



4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright , § 12B.04[B][4][a] 12B.04[B][4][a] (updated 2018) (emphasis added). According to the Copyright Office’s database, Amazon’s registered DMCA agent is Adrian Garver Garver when Mr. Longarzo Longarzo emailed his purported purported DMCA Notice. Notice. ( See RJN, Ex. 2.). The email address to which a DMCA Notice Notice must be sent is [email protected]. (See id.). There is no evidence that Mr. Longarzo’s Longarzo’s DMCA Notice was ever sent to to Mr. Garver or even to [email protected]. [email protected]. ( See Civillico Decl. Exs. A–B). The Court concludes concludes that, since it was never served on Amazon’s Amazon’s registered agent, the alleged DMCA Notice fails to comply with the procedures set forth in the DMCA. In sum, the Court concludes that Mr. Longarzo’s email communications with Amazon were not DMCA Notices and § 512(f) does not apply. D.

“Knowingly Materially Misrepresented”

Defendants next argue that ISE has failed to show that Defendants acted with the requisite mental state to be liable under under § 512(f). (Mot. at 14–18). materially As noted above, pursuant to § 512(f), “[a]ny person who knowingly materially misrepresents . . . that material or activity is infringing . . . shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . .” § 512(f) (emphasis (emphasis added). Both Mr. Civillico and Mr. Longarzo have have submitted sworn testimony indicating that they had subjective, good faith beliefs that they were not knowingly or intentionally intentionally misrepresenting misrepresenting any rights to Amazon. (Civillico Decl. ¶ 5; Longarzo Decl. Decl. ¶ 4). ISE has failed to point point to any evidence to the contrary.

In an attempt to prove actual knowledge of misrepresentation, ISE first points to the Deal Memo, pursuant to which Mr. Civillico “agree[d] that any work created during the course of business with [ISE] is the original work and property of [ISE],” and that “all rights, including copyrights, performance rights and publicity rights, belong to [ISE].” (Supp. Opp. Opp. at 19). Relying solely on the Deal Memo, ISE argues that it “has produced sufficient sufficient evidence in the the form of the [D]eal [D]eal [M]emo . . . that the Defendants Defendants _______________ _______________________ ________________ _______________ _______________ ________________ _______________ _______________ _______________ _________ __ CIVIL MINUTES—GENERAL 17



knew their representations . . . were were false.” ( Id. at 18). 18). The Court, previously warning warning ISE that it “may struggle to produce evidence of subjective bad faith as the case progresses,” is now persuaded that ISE has has failed to produce produce sufficient evidence evidence to demonstrate some actual knowledge of misrepresentation on the part of either Mr. Civillico or Mr. Mr. Longarzo. Longarzo. (See February 2 Order at 12). Because of its failure to produce sufficient, indeed any, evidence to establish a knowingly materially misrepresentation misrepresentation on the part of either Mr. Civillico or Mr. Longarzo, ISE has not raised a genuine dispute of material facts and Defendants are entitled to summary judgment. See, e.g., Rossi v. Motion Picture Ass’n of America, Inc., 391 F.3d 1000, 1005 (9th Cir. 2004) (affirming summary judgment in favor of the defendant and noting that “[a] copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake”). In sum, the Court concludes that ISE has failed to show that Defendants acted with the requisite mental state to be liable under § 512(f). VI.

CONCLUSION

For the reasons discussed above, the Motion is GRANTED. A separate judgement shall issue. issue. IT IS SO ORDERED.


ISE v. Longarzo - MSJ Order

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