Framing and derivative works -
Futuredontics v. Applied Anagramics
UNITED STATES DISTRICT COURT FOR THE
CENTRAL DISTRICT OF CALIFORNIA
1998 U.S. Dist. LEXIS 2265; 45 U.S.P.Q.2D
Decided January 30, 1998
After reviewing the materials submitted by the parties and the case file, it is
hereby ORDERED that the Motion to Dismiss of Defendants APPLIED ANAGRAMICS, INC.
("AAI"), ROBERT GOODMAN, NINE TREES DESIGN, and AM.NET (collectively
"Defendants") is DENIED.
I. Procedural Background
On September 22, 1997, Plaintiff FUTUREDONTICS, INC. ("Futuredontics")
filed a Complaint against Defendants. Plaintiff then moved for a preliminary
injunction on October 21, 1997. On November 24, 1997, the Court denied
Plaintiff's motion for a preliminary injunction. In denying Plaintiff's request
for a preliminary injunction, the Court concluded that Plaintiff had "not
offered sufficient evidence that [AAI's] framed link creates a derivative work."
November 24, 1997, Order, at 2.
Defendants filed their First Amended Complaint ("FAC") on December 2,
1997. Plaintiff's FAC alleged causes of action for: (1) violation of the Lanham
Act, 15 U.S.C. § 1125(a); violation of California Business and Professions Code
§§ 17200 and 17500; and (3) copyright infringement.
On December 18, 1997, Defendants filed the instant Motion to Dismiss, or in the
alternative, for Judgment on the Pleadings against Plaintiff's Third Claim for
Relief. Plaintiff filed its Opposition on January 12, 1998. Defendants filed
their Reply on January 16, 1998.
II. Plaintiff's Allegations
Plaintiff's FAC in general alleges that Plaintiff operates a dental referral
business utilizing the anagramatic phone number "1-800-DENTIST." FAC,
P 8. AAI owns the registered service mark, "1-800-DENTIST." FAC, P 8.
AAI has granted Plaintiff exclusive use of the telephone number and service mark
throughout the United States. FAC, P 8. "The current 1-800-DENTIST dental
referral service has been entirely designed and developed by Futuredontics,
which is solely responsible for its success." FAC, P 9.
In early 1996, Plaintiff decided to establish an Internet site to advertise its
dental referral business. FAC, P 10. Plaintiff's site consists of a number of
web pages containing graphics and text, which are copyrightable subject matter.
FAC, P 10. Plaintiff registered its copyrighted web pages. FAC, P 12.
AAI established its own site sometime after March 25, 1997. FAC, P 13.
The AAI web site includes a "link" through which AAI reproduces web
pages from the Futuredontics Site within a "frame" ("AAI Frame
Page"). The AAI Frame Page includes a frame around a reproduction of the
web page from the Futuredontics Site. The frame includes AAI's logo,
information on AAI, and "links to all of AAI's other web pages. . . .
Futuredontics has never authorized AAI to reproduce the Futuredontics
Site on the AAI Frame Page.
FAC, P 16.
With respect to the Third Claim for relief, Plaintiff specifically, alleges that
Futuredontics is the owner of the copyrighted material comprising the web pages
on the Futuredontics Site. FAC, P 30. Plaintiff also alleges that AAI and the
other defendants "are willfully infringing Futuredontics' copyright in the
material on its web pages by copying that material to the AAI Frame Page and
reproducing it there without the permission of Futuredontics." FAC, P 31.
A. Motion to Dismiss for Failure to State a Claim
A Rule 12(b)(6) motion tests the legal sufficiency of the claims asserted in the
complaint. A Rule 12(b)(6) dismissal is proper only where there is either a
"lack of a cognizable legal theory" or "the absence of sufficient
facts alleged under a cognizable legal theory." Balistreri v. Pacifica
Police Dept., 901 F.2d 696, 699 (9th Cir. 1988).
A court must accept as true all material allegations in the complaint, as well
as reasonable inferences to be drawn from them. NL Indus., Inc. v. Kaplan, 792
F.2d 896, 898 (9th Cir. 1986); see also Russell v. Landrieu, 621 F.2d 1037, 1039
(9th Cir. 1980) (finding that the complaint must be read in the light most
favorable to the plaintiff). However, a court need not accept as true
unreasonable inferences, unwarranted deductions of fact, or conclusory legal
allegations cast in the form of factual allegations. Western Mining Council v.
Watt, 643 F.2d 618, 624 (9th Cir. 1981).
Furthermore, unless a court converts a Rule 12(b)(6) motion into a motion for
summary judgment, a court cannot consider material outside of the complaint (e.g.,
facts presented in briefs, affidavits, or discovery materials). Levine v.
Diamanthuset, Inc., 950 F.2d 1478, 1483 (9th Cir. 1991), overruled on other
grounds by Central Bank of Denver, N.A. v. First Interstate Bank of Denver,
N.A., 511 U.S. 164, 114 S. Ct. 1439, 128 L. Ed. 2d 119 (1994). A court may,
however, consider exhibits submitted with the complaint and matters that may be
judicially noticed pursuant to Federal Rule of Evidence 201. Hal Roach Studios,
Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1555 n.19 (9th Cir. 1989).
B. Motion for Judgment on the Pleadings
"A judgment on the pleadings is properly granted when, taking all
allegations in the pleading as true, the moving party is entitled to judgment as
a matter of law." McGann v. Ernst & Young, 102 F.3d 390, 392 (9th Cir.
1996), cert. denied, 137 L. Ed. 2d 564, 117 S. Ct. 1460 (1997). All allegations
of fact by the party opposing the motion are accepted as true and are construed
in the light most favorable to that party. General Conference Corp. of
Seventh-Day Adventists v. Seventh-Day Adventist Congregational Church, 887 F.2d
228, 230 (9th Cir. 1989); see also Fed. R. Civ. P. 12(c). To dismiss, "it
must appear to a certainty that the Plaintiff would not be entitled to relief
under any set of facts that could be proved." McGlinchy v. Shell Chem. Co.,
845 F.2d 802, 810 (9th Cir. 1988). "The standard applied on a Rule 12(c)
motion is essentially the same as that applied on Rule 12(b)(6) motions."
Schwarzer, Tashima, & Wagstaffe, Federal Civil Procedure Before Trial, P
To establish copyright infringement, Plaintiff must prove (1) that Plaintiff
owned the copyrights, and (2) that Defendants copied Plaintiff's copyrighted
work. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996). A copyright is
infringed when a person other than the owner violates any of the exclusive
rights conferred by copyright. 17 U.S.C. § 501(a). A copyright owner has
several exclusive rights, including the exclusive right to "prepare
derivative works based upon the copyrighted works." 17 U.S.C. § 106(2).
Defendants contend that Plaintiff's copyright infringement claim should be
dismissed because the framed link, does not create a derivative work. Motion at
The Copyright Act defines a "derivative work" as:
a work based upon one or more preexisting works such as . . . art reproduction,
abridgment, condensation, or any other form in which a work may be recast,
transformed, or adapted. A work consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a whole, represent an original
work of authorship, is a "derivative work."
17 U.S.C. § 101.
The parties sharply dispute what function AAI's framed link serves. Defendants
contend that AAI's window or frame provides a "lens" which enables
Internet users to view the information that Plaintiff itself placed on the
Internet. Motion at 11. Plaintiff's complaint, however, alleges that defendants
reproduce its copyrighted web page by combining AAI material and Plaintiff's web
site. Opposition at 11; see FAC, P 16 ("The AAI web site includes a
"link" through which AAI reproduces web pages from the Futuredontics
Site within [the AAI Frame Page]. The AAI Frame Page includes a frame around a
reproduction of the web page from the Futuredontics Site.") (emphasis added).
The parties cite to several cases which purportedly support their interpretation
of the function AAI's framed link serves. None of these cases, however, is
directly on point.
The parties discuss the applicability of Mirage Editions, Inc. v. Albuquerque
A.R.T. Co., 856 F.2d 1341, 1343 (9th Cir. 1988). n1 In Mirage, the Ninth Circuit
held that transferring and affixing art images with glue to ceramic tiles
constituted "the creation of a derivative work in violation of the
copyright laws." Id. at 1343-44. As this Court noted, in its Order denying
Plaintiff's request for a preliminary injunction, Mirage is distinguishable from
the present case. November 24, 1997, Order, at 2. In this case, AAI has not
affixed an image to a ceramic tile, rather AAI appears to have placed an
electronic frame or border around Plaintiff's web page. See, FAC, Exh. C.
Defendants primarily rely on Louis Galoob Toys, Inc. v. Nintendo of America,
Inc., 964 F.2d 965, 968 (9th Cir. 1992). In that case, the Ninth Circuit held
that a Game Genie which merely enhances audiovisual displays which originate in
Nintendo game cartridges does not constitute a derivative work because, in part,
it does "not incorporate a portion of a copyrighted work in some concrete
or permanent form." Id. at 968 (emphasis added). The Court also noted that
the Game Genie could not duplicate or recast a Nintendo game's output. Galoob
did distinguish Mirage and noted that the Mirage decision would have been
different had the plaintiff "distributed lenses that merely enabled users
to view several art works simultaneously." Id.
Nevertheless, Galoob, like Mirage, is distinguishable from the instant case.
Galoob does not foreclose Plaintiff from establishing that AAI's web page,
incorporates Futuredontic's web page in some "concrete or permanent
form" or that AAI's framed link duplicates or recasts Plaintiff's web page.
For these reasons, the Court finds that the cases cited by the parties do not
conclusively determine whether Defendants' frame page constitutes a derivative
work. n2 Therefore, the Court determines that Plaintiff's Third Claim for Relief
sufficiently alleges a claim for copyright infringement. n3
For all these reasons, the Court hereby DENIES Defendants' motion to dismiss
Plaintiff's copyright infringement claim and DENIES Defendant's alternative
motion for judgment on the pleadings with respect to that claim.
n1 Because the district court in Munoz v. Albuquerque A.R.T. Co., 829 F.
Supp. 309 (D. Alaska 1993) aff'd, 38 F.3d 1218 (9th Cir. 1994), reached the same
holding based on the same facts as the Mirage case, the Court need not
separately address it.
n2 The parties should not read too much into the Court's Order denying
Plaintiff's motion for a preliminary injunction. At the preliminary injunction
stage, the Court determined that Plaintiff failed to establish a probability of
success. On a motion to dismiss, however, the Court must accept as true the
allegations contained in Plaintiff's FAC. See NL Indus., 792 F.2d at 898.
Moreover, none of the cases on which the parties rely were resolved on a motion
to dismiss or a motion for judgment on the pleadings. See Mirage, 856 F.2d at
1341 (summary judgment); Louis Galoob, 964 F.2d at 967 (judgment following a
bench trial); Munoz, 829 F. Supp. at 311 (converting motion to dismiss to motion
for summary judgment).
n3 Because the Court finds that Plaintiff's complaint sufficiently alleges a
copyright infringement claim, the Court need not consider Plaintiff's
alternative claim that the complaint alleges copyright infringement based on
unauthorized reproduction. Opposition at 9-10; see also 15 U.S.C. § 101 (defining
"copies" as "material objects . . . in which a work is fixed by
any method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or with the
aid of a machine or device. The term "copies" includes the material
object . . . in which the work is first fixed").
The Ninth Circuit affirmed the denial of preliminary
injunction by an order of July 23, 1998: Futuredontics, Inc. v. Applied
Anagramics, Inc., 152 F.3d 925 (unpublished).