Revok Reyes Steel Opposition To Cavalli Defendants' Motion To Dismiss

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

David Alden Erikson (SBN 189838)
2 david@daviderikson.com
S. Ryan Patterson (SBN 279474)
3 ryan@daviderikson.com
200 North Larchmont Boulevard
4 Los Angeles, California 90004
Telephone: 323.465.3100
5 Facsimile: 323.465.317 b7
6 Attorneys for Plaintiffs
8
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
Fax: (323) 465-3177
10
Tel: (323) 465-3100
20 0 N. Larch mon t B lvd. Los Angel es CA 90 004
ERIKSON LAW GROUP
JASON WILLIAMS, an individual;

11 VICTOR CHAPA, an individual; and
JEFFREY RUBIN, an individual,
12
Plaintiffs,
13
v.
14
ROBERTO CAVALLI S.P.A., an
15 Italian corporation; STAFF
INTERNATIONAL S.P.A., an Italian
16 corporation; STAFF USA, INC., a
Delaware corporation; NORDSTROM,
17 INC., a Washington corporation;
AMAZON.COM, INC., a Delaware
18 corporation; ZAPPOS, a Delaware
corporation; and DOES 1-50, inclusive,
19
Defendants.
20
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
21
22
Plaintiffs Jason Williams, Victor Chapa, and Jeffrey Rubin (Artists or
23 Plaintiffs) respectfully submit this Memorandum of Points and Authorities in

24 Opposition to the Motion to Dismiss pursuant to Federal Rule of Civil Procedure
25 12(b)(6) of Defendants Staff USA, Inc.; Nordstrom, Inc.; Amazon.com, Inc.; and
26 Zappos.com, Inc. (Defendants).
27
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DEFENDANTS MOTION TO DISMISS
TABLE OF CONTENTS
2 I. INTRODUCTION ...................................................................................................................... 1
3 II. ALLEGATIONS ......................................................................................................................... 2
4
A. Plaintiffs copyright claims. .......................................................................................... 2
B. Plaintiff Reyess trademark claims. ............................................................................... 3
6 III. PLAINTIFFS REVOK AND STEELS 1202 CLAIM IS PROPER ....................................... 4
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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
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IV. REYESS TRADEMARK INFRINGEMENT CLAIM IS ENTIRELY CONSISTENT
11
WITH DASTAR ..................................................................................................................... 9
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A. The Dastar Case .......................................................................................................... 10
13
B. Dastar does not apply because its reasoning does not apply. ..................................... 12
14
1. The first rationaleconcern about mutant copyrightis not invoked
15
here. ............................................................................................................. 12
16
2. The second rationaleconcerns over a catch-22is not invoked here. ......... 13
17
3. The third rationaleconcerns regarding secondary meaningis not
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invoked here. ............................................................................................... 14

C. Concurrent liability for trademark and copyright infringement is
20
uncontroversially proper. ........................................................................................ 15
21
1. The recent Craigslist case ................................................................................ 16
22
2. The recent Bach case ........................................................................................ 17
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D. Defendants cases are inapposite. ................................................................................ 18
24
V. PLAINTIFFS FOURTH CAUSE OF ACTION FOR CALIFORNIA STATUTORY
25
UNFAIR COMPETITION SURVIVES ............................................................................. 20
26
A. Reyes properly alleges an unlawful business practice under 17200. ....................... 21
27
B. Reyes properly pleads fraudulent business practices under 17200. ......................... 22
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1 VI. Plaintiffs fifth Cause Of Action For common law unfair competition Survives ..................... 23
2 VII. CONCLUSION ................................................................................................................... 24
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TABLE OF AUTHORITIES
Cases
3 Agence France Presse v. Morel, 769 F. Supp. 2d 295, 30506 (S.D.N.Y. 2011) ........................ 6, 8
4 Associated Press v. All Headline News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009) ................. 6, 8
5 Bach v. Forever Living Prods. U.S., Inc., 473 F. Supp. 2d 1110, 1116-18 (W.D. Wash. 2007) ... 16,
6
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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
16 IQ Group, Ltd. v. Wiesner Publishing, LLC, 409 F. Supp. 2d 587 (D.N.J.2006) ............................. 7
17 McClatchey v. The Associated Press, 82 U.S.P.Q.2d 1190, 2007 WL 776103 ................................ 6
18 Microsoft Corp. v. Nop, 549 F. Supp. 2d 1233, 1238 (E.D. Cal. 2008) .......................................... 16
19 Murphy v. Millennium Radio Group LLC, 650 F. 3d 295 (3rd Cir. 2011)................................ 6, 8, 9
20 New York, Thomas Publishing Co., LLC v. Technology Evaluation Centers, Inc., 2007 U.S. Dist.
21
22
23
24
25
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
26 Summit Technology, Inc. v. High-Line Medical Instruments, Co. 933 F. Supp. 918, 943 (C.D. Cal.
27
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1996).................................................................................................................................... 21
Textile Secrets Intl, Ltd. v. Ya-Ya Brand Inc., 524 F. Supp. 2d 1184 (C.D.Cal.2007) .................... 7
iii
1
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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
4 Zyla v. Wadsworth, a Division of Thomson Corp., 360 F.3d 243 (1st Cir.2004)............................ 19
5
Statutes
6 15 U.S.C. 1125(a) ........................................................................................................................... 9

7 17 U.S.C. 1202 ....................................................................................................................... 5, 6, 8
8 Cal. Code Bus. Proc. 17200 ......................................................................................................... 20
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9 Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) .................... 10, 11, 12, 13
Treatises
11 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
3 removal of their names from the mural artwork, which is specifically prohibited by
4 17 U.S.C. Section 1202. Defendants only serious challenge1 to this claim is that the
5 statute does not apply to the manual removal of analog informationpresumably
6 because it was enacted as part of the Digital Millennium Copyright Act. As
7 explained below, this is incorrectas a matter of simple statutory interpretation as
8 well as pursuant to uncontroversial case law. The two outlier cases Defendants rely
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10 including a case in this district and the only circuit court case to address the issue
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9 upon in this regard have been thoroughly discredited by a line of subsequent cases
11 as simple shepardizing reveals.
12
Cavalli also moves to dismiss Plaintiff Chapas (a/k/a Reyes) trademark
13 claims on the ground that they are merely repackaged copyright claims.2 Again, this
14 argument relies on a stark misunderstanding of law. That a single misappropriation
15 can simultaneously constitute trademark and copyright infringement is clear as a
16 matter of common sense, and as a matter of case law. The Ninth Circuit has
17 remarked in exactly this context that, it may have been one act, but it was two
18 wrongs. Nintendo of Am. v. Dragon Pacific Intl, 40 F. 3d 1007, 1011 (9th Cir.
19 1994).
20
A drawing of the NBC Peacockto take a hypothetical exampleis clearly
21 copyrightable. But placing it on a line of shoes would obviously constitute

22
1
Defendants motion was untimely. The FAC was filed on November 10, 2014. The motion was
23 filed 22 days later on December 2, 2014.

2
24 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
25 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
26 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
27 claims under the Lanham Act. Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994).
28
1
1 trademark infringement as wellbecause it would likely cause consumers to believe

2 that NBC made or endorsed the shoes.
3
To try to avoid the possibility of concurrent trademark and copyright liability,
4 Defendants inexplicably characterize Reyess trademark allegations as being that

5 Defendants passed off his artwork as their own, without giving him credit (so-called
6 reverse passing off). As Defendants point out, the Supreme Courts 2003 Dastar
7 decision would bar such a claim because plagiarism is a matter of copyright law,
8 and is not actionable under the Lanham Act.
But Reyes does not bring a reverse passing off claim. Rather, his trademark
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10 claims are for garden-variety passing off. He alleges that:
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9
11
The mural contained certain recognizable signature or source-
12
identifying elements: a particular style of black-and-white swirls (or
13
revolutions that effectively function as a logo. [FAC 56-60.]
14
That placing these signature elements on Defendants apparel likely
15
confuses consumers into thinking that Reyes produced them. [Id.,
16
61-72.]
17
As explained below, nothing about Dastar or related cases forecloses such a
18 claim. Indeed, there is no question that a claim for passing off based on source19 identifying elements may be based on copyrightable matter. While courts and
20 commentators have struggled to find the limit of Dastar, no one would seriously
21 suggest that it did away with the possibility of concurrent trademark and copyright
22 liability, or that it forecloses all Lanham Act claims based on communicative or
23 copyrightable matter.
24
II.
ALLEGATIONS
25 A.
Plaintiffs copyright claims.
26
Artists allege that Defendants Staff International, Staff USA and Roberto
27 Cavalli S.p.A. (the Cavalli Defendants) applied mechanically produced copies of

28
1 their mural to a collection of Just Cavalli labeled apparel (the Graffiti

2 Collection), and that the Cavalli Defendants and the retailer Defendants sold the
3 offending products to consumers. [FAC 2-5, 33.]
4
To hear Defendants tell it, Artists vaguely allege that the scribbles and
5 geometric patterns of Defendants Graffiti Collection resemble their mural.

6 [Defendants Motion to Dismiss the Second, Third, Fourth and Fifth Claims for
7 Relief in the First Amended Complaint (the Motion) 3:4-6.] But the words and
8 pictures of the FAC tell a more remarkable story: that Defendants mechanically
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10 Collections pieces. [FAC 2, 3.]
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9 copied Plaintiffs mural and used it to cover every square inch of the Graffiti
11
Based on these facts, Artists assert a straightforward claim for copyright
12 infringement. [Id., 8, 40-46.] Defendants do not challenge this claim.

13
Plaintiffs Revok and Steel also bring claims under 17 U.S.C. 1202. [FAC
14 48-54.] Section 1202 prohibits removal or alteration of copyright management

15 information (CMI), including artists names, from copyrighted works. Id. Revok
16 and Steel allege that in removing/altering their extremely prominent signatures from
17 the appropriated artwork, Defendants have committed a paradigmatic violation of
18 this statute. [FAC 48-54.]
19 B.
Plaintiff Reyess trademark claims.
20
As mentioned above, Plaintiff Reyes also alleges that the mural contained
21 images of his signature revolutions, which the public recognizes as indicating him
22 as the source of goods or servicesnot unlike a logo such as the NBC Peacock.3 [Id
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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)
3
1 57.] He also alleges that Defendants inclusion of such logo-like elements on the
2 Graffiti Collection created a likelihood of confusion in that consumers are likely to
3 believe that Reyes was the physical source of the Graffiti Collection clothing. [Id
4 62-66.]
5
In addition to a simple Lanham Act trademark infringement claim based on
6 such passing off, Reyes brings California statutory and common law unfair
7 competition claims based on this same wrong.
8
III.
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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
11
information was not placed or removed using technological/digital
12
means. [Motion IV(A).]
13
14
That Plaintiffs failed to identify the copyright management information

at issue, or even whom it belonged to. [Motion IV(B).]
15
That Revok and Steels names, and Reyess signature revolutions, do
16
not constitute copyright management information [Motion IV(C).]
17
That according to Plaintiffs allegations, Cavalli did not alter or remove
18
Revok and Steels signatures but instead kept and used them in what
19
was appropriated. [Motion IV(D).]
20 A.
The FAC contains more than enough information to allow Cavalli to
21
understand the Section 1202 claim against it.
22
The last three of these bullet pointed argumentswhich collectively amount
23 to an assertion that Cavalli cannot understand the precise allegations against itare
24 not brought seriously. Indeed, Cavalli demonstrates that it understands the claim
25 against it by asserting the first bullet-point argument abovea substantive argument
26
27 (2000).
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1 that addresses an accurate reading of the allegations. Indeed, the Section 1202
2 allegations are clearly laid out, and easily suffice under notice pleading standards4:
3
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.]
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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
10
recognized on Cavallis apparel. [FAC 28-30.] There is no question
11
that an authors name constitutes copyright management information.
12
Indeed the statute specifically defines the CMI as including the name of
13
the author. 17 U.S.C. 1202(c).
14
Its certainly possible to misappropriate/use the signatures and still in
15
effect alter or remove them for purposes of Section 1202. Again,
16
Plaintiffs clearly allege that Cavalli mechanically copied the mural,
17
including Revok and Steels signatures, and placed only pieces of the
18
mural artwork on any specific item in the Graffiti Collectionpieces in
19
which the signatures cannot be discerned. [FAC 4:21 (Defendants
20
removed or obscured the names of the other two plaintiffs), 8:23-24
21
(the signatures of Revok and Steel are chopped and rearranged to such
22
an extent that they are not recognizable.).]
23 B.
Section 1202 is not limited to digital removal.
24
17 U.S.C. 1202 prohibits the alteration or removal of copyright management
25
26
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
27 issue (i.e. Revok and Steels signatures).
28
1 information from a work. The term copyright management information is

2 defined as information, such as the title, author, or copyright owner of a work that is
3 conveyed in connection with copies . . . of a work . . . including in digital form[.]
4 See 17 U.S.C. 1202(c) (emphasis added).
5
Plaintiffs Revok and Steel brought a Section 1202 claim based on their
6 allegations that Defendants removed/altered their signatures, which appeared

7 prominently in the mural, making them indiscernible on Cavallis clothing [FAC
8 30]which certainly appears to be exactly what the statute prohibits.
Defendants argue that Section 1202 does not apply however, because it was
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10 meant to only apply to digital works or the digital removal of CMIbecause it is
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11 part of Digital Millennium Copyright Act. To put it in Defendants needlessly

12 complex terms, Section 1202 was not intended to apply to circumstances that have
13 no relation to the internet [sic], automated copyright protections or management
14 systems, public registers or other technological means contemplated by the DMCA
15 as a whole. [Motion 6:9-12.]
16
That is simply wrong. The plain language of the statute (including in digital
17 form) indicates that its scope is not limited to CMI that is digitally placed and/or
18 digitally removed. Murphy v. Millennium Radio Group LLC, 650 F. 3d 295 (3rd Cir.
19 2011); Fox v. Hildebrand, 2009 U.S. Dist. LEXIS 60886, 2009 WL 1977996, at *3
20 (C.D. Cal. 2009); McClatchey v. The Associated Press, 82 U.S.P.Q.2d 1190, 2007
21 WL 776103 (W.D. Pa. 2007); Associated Press v. All Headline News Corp., 608 F.
22 Supp. 2d 454 (S.D.N.Y. 2009); William Wade Waller Co. v. Nexstar Broadcasting,
23 Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584 (E.D. Ark. 2011); Agence
24 France Presse v. Morel, 769 F. Supp. 2d 295, 30506 (S.D.N.Y. 2011); Faulkner
25 Press, LLC v. Class Notes, LLC, 756 F. Supp. 2d 1352, 1359 (N.D. Fla. 2010);
26 Cable v. Agence France Presse, 728 F. Supp. 2d 977, 981 (N.D. Ill. 2010);
27 BanxCorp v. Costco Wholesale Corp., 723 F. Supp. 2d 596, 60911 (S.D.N.Y.
28
1 2010); Jedson Engineering, Inc. v. Spirit Const. Services, Inc., 720 F. Supp. 2d 904
2 (S.D. Ohio 2010); Interplan Architect, Inc. v. C.L. Thomas, Inc., Civil Action No.
3 4:08-cv-03181, 2009 WL 6443117 (S.D. Tex. 2009); Stockart.com v. Engel, Civil
4 Action No. 10cv00588MSKMEH, 2011 WL 10894610, at *910 (D. Colo.,
5 2011). The phrase including in digital form in Section 1202 removes any doubt
6 that notices in digital form are covered, but in no way limits the definition to notices
7 made in digital form. Fox v. Hildebrand, supra, 2009 WL 1977996 at *3.
8
Defendants cite two cases that analyze the legislative history of the DMCA to
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10 F. Supp. 2d 1184 (C.D.Cal.2007); IQ Group, Ltd. v. Wiesner Publishing, LLC, 409
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9 come to the opposite conclusion: Textile Secrets Intl, Ltd. v. Ya-Ya Brand Inc., 524
11 F. Supp. 2d 587 (D.N.J.2006). But these two cases have been roundly rejected by
12 subsequent court decisions, including the Third Circuit in Murphy, and this district
13 in Fox v. Hildebrand.
14
In Fox, after finding that the plain language of Section 1202 compels the
15 conclusion that it applies to digital and non-digital works alike, Judge Fischer says
16 of Textile Secrets and IQ Group:
17
Defendants cite two cases that analyze the legislative history of the
18
DMCA to come to the opposite conclusion, but even given contrary
19
indications in the statutes legislative history, a court should not
20
resort to legislative history to cloud a statutory text that is clear. (citing
21
Ratzlaf v. United States, 510 U.S. 135 (1994).)
22 Fox v. Hildebrand, supra, 2009 WL 1977996 at *3.

23
This is not a simple matter of cases coming to contradictory results. In a good
24 number of cases from the years just after Textile Secrets and IQ Group were
25 decided, defendants tried to invoke the two cases to avoid liability for removal or
26 alteration of CMI in non-internet contexts. In each case, the defendant invoked the
27 legislative history surrounding the DMCA in generalwhich obviously dealt with
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1 digital communications and worksto argue as Cavalli does here that Section 1202
2 does not apply beyond the digital realm. Textile Secrets and IQ Group became the
3 go-to cases for such defendantsat least until they were explicitly disapproved of
4 by a critical mass of subsequent cases. In these later cases, the courts made the point
5 that the plain language Section 1202 was not limited to digital works, and there was
6 no logical or compelling reason why Congress could not choose to expand copyright
7 protections in general within the DMCA.
8
All of the following cases make this point and explicitly reject the holdings of
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10 2d at 305, 306; Cable v. Agence France Presse, supra, 728 F. Supp. 2d at 980-81;
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9 Textile Secrets and/or IQ Group: Agence France Press v. Morel, supra, 769 F. Supp.
11 Interplan Architect, Inc., supra, 2009 WL 6443117, at *3-5 (Because this Court
12 does not find that the terms of Section 1202 are sufficiently ambiguous such that
13 resort to legislative history is necessary, this Court does not adopt the findings in
14 Textile Secrets. Because there is no textual support for [defendants] contention that
15 Section 1202 should be limited to technological processes, this Court declines to
16 import such a limitation.); Associated Press, supra, 608 F. Supp. 2d at 461-62
17 (denying motion to dismiss and finding that there is no textual support for limiting
18 the DMCA's application to the technological processes of automated systems.);
19 Faulkner Press, supra, 756 F. Supp. 2d at 1359 (plain language did not limit
20 definition of CMI to notices that are placed on works through technological
21 processes, but finding no violation of DMCA); Fox v. Hildebrand, supra, 2009 WL
22 1977996 at *3 (2009); Murphy, supra, 650 F.3d at 302.
23
The Third Circuit, in the Murphy case put it as follows:
24
There is nothing particularly difficult about the text of 1202. Read
25
in isolation, 1202 simply establishes a cause of action for the removal
26
of (among other things) the name of the author of a work when it has
27
been conveyed in connection with copies of the work. The statute
28
imposes no explicit requirement that such information be part of an
automated copyright protection or management system.
3 Murphy, 650 F.3d at 302.

4
The Murphy opinion next devotes several pages to discussing (and rejecting
5 the reasoning of) Textile Secrets and IQ Group. Just as in Fox, the Murphy court
6 decides that there is no justification for resorting to legislative history when the
7 statutory language is clear. Id. For good measure, the Murphy court considered the
8 survey of legislative history undertaken by the IQ and Textile Secrets courts, and
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10 CMI. Id., at 304. This conclusion casts doubt on the proposition that the legislative
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9 concluded that the history did not contradict a broad, inclusive interpretation of
11 history even suggests a limitation to the digital realm.
12
Accordingly, the fact that plaintiff work was created in the physical world
13 takes nothing away from their Section 1202 claim.

14 IV.
REYESS TRADEMARK INFRINGEMENT CLAIM IS ENTIRELY
15
CONSISTENT WITH DASTAR
16
Plaintiff Reyess trademark infringement claims are based on the allegation
17 that Cavalli placed Reyess signature revolutions imagery on its clothinglikely

18 causing the public to think the clothing was made by Reyes. [FAC 62.] The claim
19 is brought under Section 43(a) of the Lanham Act, which is the procedure for
20 challenging infringement of unregistered marks. The Section makes actionable the
21 use of any word, term, name, symbol, or device, or any combination thereof ...
22 which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of
23 his or her goods.... 15 U.S.C. 1125(a).
24
Defendants assert Dastar and its progeny bar as a matter of law a Lanham
25 Act claim for reverse passing off that allegedly arises from unauthorized use of a
26 copyrighted work. The Supreme Court has held that the Copyright Act, and not an
27 action for reverse passing off under the Lanham Act, provides the sole remedy for
28
1 alleged copying of Plaintiffs mural. [Motion, 2:9-13.]

2
The most straightforward way to defeat this argument is to simply point out
3 that Reyess claim is a simple passing-off claim, not one for reverse passing off as
4 Defendants inexplicably assert. The claim is based on the clearly stated allegation
5 that consumers would likely confuse Reyes as the physical source of Cavallis
6 clothing. [FAC 62.] Certainly anyone familiar with his signature revolutions
7 would so believe. The claim is not based on the allegation that Defendants
8 misappropriation would likely give the false impression that Cavalli was the author
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10 consumers who are not familiar with Reyes or his work).
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9 of the mural artwork (even though thats probably true as well with respect to
11
But because its not entirely clear that Dastar cannot apply to passing off
12 cases, Plaintiffs will go further and demonstrate that the case has no application
13 here. In other words, in addition to the straightforward argument mentioned above
14 (that this is not a reverse passing off claim), Reyes will go further and show that his
15 claim necessarily survives even if Dastar is interpreted to apply to certain passing
16 off claims.
17 A.
The Dastar case
18
In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003),
19 the defendant (Dastar Corp.) copied and slightly modified a videotaped

20 documentary produced by the plaintiff (Twentieth Century Fox Film Corp.), and
21 distributed it as its own. Fox brought a Lanham Act claim, alleging reverse passing
22 off: that Dastar was falsely passing off Foxs content as its ownwhich was
23 misleading because no credit was given to Fox.
24
The gravamen of the complaint against Dastar was that, in marketing and
25 selling [the videotapes] as its own product without acknowledging its nearly
26 wholesale reliance on [Foxs work], Dastar ha[d] made a false designation of
27 origin, false or misleading description of fact, or false or misleading representation
28
10
1 of fact, which ... is likely to cause confusion ... as to the origin ... of his or her
2 goods. Dastar, 539 U.S. at 31.
3
It is worth noting what Fox did not allege. It did not allege misappropriation
4 of signature, source-identifying elements, imbued with secondary meaning, which

5 might cause confusion as to source. In other words, it did not allege that the public
6 would recognize certain Fox-ish aspects of the work (for example, a certain
7 familiar sepia tone, camera work or a style of narration) and thus likely believe that
8 the videotape came from Fox. Such allegations, of course, would have made the
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10 of the work itselfi.e. the entire work and did not allege secondary meaning. Put
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9 case a typical passing off one. Rather, Fox was complaining about appropriation
11 another way, the confusion Fox complained of was that the public would mistakenly
12 believe that Dastar rather than Fox made the documentary. And indeed Dastar is
13 sometimes thought of primarily as a case in which the plaintiff tried to use the
14 Lanham Act to address plagiarism. See Steven T. Lowe, Abhay Khosla, Where
15 Credit Is Due, LOS ANGELES LAWYER, Dec. 2014, at 40.
16
The Supreme Court rejected Foxs Lanham Act claim against Dastar,
17 generally noting that it was simply a repackaged copyright claim. Dastar, supra, at
18 36, 37. The purpose of copyright law, after all, is to combat appropriation of creative
19 works and plagiarism. Id., at 37, 38. And because copyright law reflects a careful
20 balancing of authors rights and the publics freedom to use others expression, it
21 would be odd and inappropriate to allow trademark law (which is concerned with
22 protecting consumer welfare by avoiding marketplace confusion as to the source
23 of goods) to trump copyright law in its own domain. Id., at 33, 34.
24
To support this conclusion, the Supreme Court made a number of oft-cited
25 clarifications of the Lanham Act:

26
27
28
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
11
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.
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That the Lanham Act does not contain a cause of action for plagiarism.
11
Id., at 3637.
12 These clarifications of the Lanham Act have no application to Reyes trademark

13 claim.
14 B.
Dastar does not apply because its reasoning does not apply.
15
Courts and commentators have famously had difficulty determining where
16 Dastar applies and where it doesnt. But this much is uncontroversial: Dastar does
17 not foreclose the kind of garden variety trademark claims (passing off via
18 appropriation of signature, source-identifying elements), even where the trademark
19 is copyrightable or constitutes communicative content. Put another way, Dastar
20 does not preclude concurrent claims for copyright infringement and passing off
21 under the Lanham Act, where a plaintiff alleges that the misappropriated material
22 has acquired secondary meaning.
23
To see why, and specifically to see why Dastar does not apply here, one need
24 only examine the three rationales Justice Scalia offers for the decision, which are
25 clearly not invoked here or in any garden-variety trademark case.
26
27
28
1.
The first rationaleconcern about mutant copyrightis not

invoked here.
12
First, the Court noted that allowing a Section 43(a) claim for originating a
2 creative work would create a species of mutant copyright law that would
3 essentially treat and expand copyright-style protections. Dastar, supra, at 34. The
4 point was perfectly illustrated by the facts of Dastar itself, where the work in
5 question happened to have fallen into the public domain. Id., at 26. Lanham Act
6 liability for appropriation of a copyrightable work would essentially create a
7 perpetual copyright that Congress did not intend. Id., at 37. Put another way, and
8 reading broadly, Lanham Act relief was found inappropriate where copyright law
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10
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9 addresses the same wrong.

To hold otherwise would be akin to finding that 43(a) [of the Lanham Act]
11 created a species of perpetual patent and copyright, which Congress may not do. Id.
12 Thus, reverse passing off claims brought under Lanham Act 43(a)(1)(A) cannot
13 focus on allegedly false claims of authorship, invention or creation. In addition, the
14 Supreme Court made clear that the Lanham Act does not require the attribution of
15 authorship of creative materials. Id., at 36. Again, if it did, trademark law would
16 impermissibly expand copyright law.
17
Here, as in any garden-variety trademark claim, there is no concern that
18 Reyess Lanham Act claims would provide a copyright-like protection distinct from
19 copyright law. In his claim, Reyes is not complaining about misappropriation of the
20 mural artwork, but rather signature elements within it that the public recognizes as
21 his, in part because these signature elements (by definition) appear in nearly every
22 single other piece of his artwork, spanning the past decade. [See, e.g. FAC, Exhibit
23 A.] Put another way, the claim would have existed whether or not this particular
24 mural had ever been created, because the signature elements (again by definition)
25 exist independently.
26
27
28
2.
The second rationaleconcerns over a catch-22is not invoked

here.
13
The Supreme Courts second rationale was as follows: If the Lanham Act
2 were read to require attribution to the source of the creative content of

3 communicative works out of copyright, then the copier would be between a rock and
4 a hard place. Dastar, at 35; see also 5 McCarthy on Trademarks and Unfair
5 Competition 27:78 (4th ed.). If the copier avoided the plagiarism by attributing
6 some or all of those who had creative input, the copier could be sued under Lanham
7 Act for falsely implying the creators sponsorship or approval of the defendants
8 version. Id.
Reyess claim does not invoke the same concern. Theres no catch-22 when a
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10 manufacturer is deciding whether or not to misappropriate source-identifying
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11 symbols that have acquired secondary meaningthere is no course of action

12 relating to crediting or not crediting the creator that could render such
13 misappropriation more or less properbecause the misappropriation is improper per
14 se.
15
16
17
3.
The third rationaleconcerns regarding secondary meaningis

not invoked here.
The Supreme Courts third rationale was as follows: Liability for Dastars
18 appropriation would be inconsistent with cases such as in WalMart Stores, Inc. v.

19 Samara Brothers, Inc., 529 U.S. 205, (2000), in which the court found secondary
20 meaning to be a requirement under Section 43a liability with respect to trade dress
21 designs (the entirely of a work). Dastar, at 36. The secondary meaning requirement
22 ensures that designs cannot be protected under 43(a) without a showing that they
23 have acquired secondary meaning, so that they identify the source of the product
24 rather than the product itself, Dastar, at 36, citing Wal-Mart, supra, 529 U.S. at
25 211, 214 (internal citations omitted).
26
In Wal-Mart, the defendant copied childrens clothes designed by Samara
27 an instance of actionable passing off if the designs had acquired secondary meaning.
28
14
1 If a reverse passing off claim (not requiring secondary meaning) were to require
2 attribution to the creator of the designs, then Samara could have sued Wal-Mart for
3 falsely labeling the clothes with its mark and not attributing creation of the designs
4 Samara. As the Dastar court notes, the carefully considered secondary meaning
5 requirement would be entirely pointless if the original producer could turn around
6 and pursue a reverse-passing-off claim under exactly the same provision of the
7 Lanham Act. 2049.
8
Allowing a claim like Foxs in Dastar claim would open room for end runs
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10 indistinguishable from a claim for appropriation of a work itself without
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9 around Wal-Mart, in that a trade dress design case is more or less conceptually
11 allegations of secondary meaning. That Court thus decided that in both contexts,
12 secondary meaning was a prerequisite to liability.
13
Reyess claim does not invoke any such concern in that he alleges secondary
14 meaning.
15 C.
Concurrent liability for trademark and copyright infringement is
16
uncontroversially proper.
17
Dastar did not undercut the Ninth Circuits holding that Congress created
18 two separate statutory schemes to govern copyrights and trademarks; in order to

19 effectuate the purposes of both statutes, damages may be awarded under both.
20 Craigslist Inc. v. 3Taps Inc. 942 F. Supp. 2d 962, 979 (N.D. Cal. 2013), quoting
21 Nintendo of Am. v. Dragon Pac. Intl, 40 F.3d 1007, 1011 (9th Cir. 1994). In
22 Nintendo, the Ninth Circuit affirmed an award of damages for both copyright and
23 trademark infringement where the defendant sold video game cartridges including
24 copyrighted Nintendo content and falsely represented that it was selling authorized
25 Nintendo products. See Nintendo, 40 F.3d at 1010-1011. Put together, selling the
26 cartridges may have been one act, but it was two wrongs. Id., at 1011. The Ninth
27 Circuit similarly upheld a preliminary injunction based on simultaneous and
28
15
1 interrelated copyright, trademark, and unfair competition claims in Dr. Seuss

2 Enterprises, L.P. v. Penguin Books USA, Inc., a case involving a book about the O.J.
3 Simpson trial written in the style of Dr. Seusss The Cat in the Hat. See generally,
4 109 F.3d 1394 (9th Cir. 1997).
5
Even after Dastar, a plaintiff may be awarded statutory damages under both
6 the Copyright Act and the Lanham Act where the defendants act simultaneously
7 infringed the plaintiffs copyright and its trademark. Craigslist, 942 F. Supp. 2d at
8 979 (citing Microsoft Corp. v. Nop, 549 F. Supp. 2d 1233, 1238 (E.D. Cal. 2008)
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10 Nintendo, 40 F.3d at 1010-11). See also Bach v. Forever Living Prods. U.S., Inc.,
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9 (entering default judgment on simultaneous copyright and trademark claims, citing

11 473 F. Supp. 2d 1110, 1116-18 (W.D. Wash. 2007) (examining Dastar, Nintendo,
12 and Dr. Seuss Enters., and holding that the author of Jonathan Livingston Seagull
13 could bring both copyright and trademark claims against a company that used
14 elements of the book without permission). Reyess allegations of copyright
15 infringement and passing off are essentially identical to these cases, and thus his
16 claim merits the same analysis.
17
1.
The recent Craigslist case
18
In Craigslist, the defendant culled for-rent postings from the plaintiffs
19 craigslist.org website, and republished them to the public in its own format.
20 Craigslist, supra, 942 F. Supp. 2d. at 966, 967. The plaintiff claimed the defendants
21 misappropriation of each posting constituted both trademark and copyright
22 infringementin that the plaintiff held the copyright in each posting, and because
23 the defendant also included the Craigslist logo in the republished postings. Id., at
24 978. The defendant moved to dismiss the trademark claims under Dastar. Id. The
25 court denied the motion, emphasizing that the single act of misappropriation was
26 properly alleged to be at once (1) a misappropriation of the simple copyrighted ad
27 content (which the plaintiff acquired from its users via its terms of use) and (2) a
28
16
1 misuse of the plaintiffs trademark, which was featured in the postings. Id., at 980.
2 In other words, the claim included a garden variety passing off claim on top of the
3 simple copyright claim.
4
The court found that this not a case like Dastar . . . where the plaintiffs were
5 attempting to use trademark law to prosecute plagiarism of their creative work. Id.
6 (citing Bach, supra, 473 F. Supp. at 1118). Craigslist alleges separate and distinct
7 harms: that defendants infringed Craigslists copyright by using its content without
8 permission and that defendants use of the craigslist mark confused customers
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10 value of the mark. Id.
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9 about Craigslists relationship to defendants and their products and diminished the
11
Reyes claim is exactly the same. He alleges infringement of his mural
12 artwork, but also separate trademark infringement in that Defendants included his
13 logo in their clothing.
14
2.
The recent Bach case
15
In Bach, the defendants liberally used both various elements of the popular
16 Jonathan Livingston Seagull bookincluding text and imagesto market their

17 health and beauty products. The plaintiff author brought a simple copyright claim,
18 but also alleged that Defendants have falsely represented in commerce that their
19 companies, products, and services are endorsed by or otherwise affiliated or
20 associated with the name, title, and images associated with Jonathan Livingston
21 Seagull and/or Plaintiffs. Bach, 473 F. Supp. 2d 1110, 1114.
22
The Bach defendants brought a motion to dismiss based on Dastar, arguing
23 that the author could not piggyback trademark claims in a copyright case. Id., at
24 1116. The court found that because the author alleged two separate wrongs,
25 concurrent liability was no problem. The court backed up and explained from the
26 beginning:
27
28
Trademark and copyright law have fundamentally different purposes.

Trademark law is concerned with the protection of symbols, elements or
17
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).
1
2
3
4
5
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)).
6
7
8
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9
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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
18
1 ignored the two recent district court decisions in our Circuit (Craigslist, and Bach)
2 that explicitly hold that passing off claims such as Reyess are not barred by Dastar.
3
Defendants first cite an unpublished decision from the Southern District of
4 New York, Thomas Publishing Co., LLC v. Technology Evaluation Centers, Inc.,
5 2007 U.S. Dist. LEXIS 55086 (S.D.N.Y. July 27, 2007), as standing for the
6 proposition that reverse passing off' claims brought under the Lanham Act
7 43(a)(1)(A) cannot focus on allegedly false claims of authorship, invention or
8 creation. [Motion 11:5-9.] Whatever the accuracy of that statement, it does not
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10 identical to Dastar, save for the plaintiffs efforts to characterize its offering (a
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9 apply to Reyess claim, which is for passing off. Further, Thomas was more or less
11 technological directory that the defendants had duplicated with only superficial
12 changes) as a service rather than a product. The court barely addressed the
13 service/product distinction and ruled on the basis of the close parallel to Dastar:
14 Because Plaintiffs False Designation Claim centers around its contention that it
15 originated certain ideas and concepts contained at Defendants website, Plaintiffs
16 claim is dismissed. Thomas Publishing, supra (citing Dastar, supra, 539 U.S. at
17 37).
18
Defendants next cite Zyla v. Wadsworth, a Division of Thomson Corp., 360
19 F.3d 243 (1st Cir.2004). Like Thomas, the Zyla case is essentially identical to
20 Dastara contributor to a textbook brought a claim against the books publisher
21 based on a lack of attribution of credit for her contributions. Zyla, 360 F.3d at 251.
22 The court made clear that this claim was one of reverse passing off, explicitly
23 stating that the plaintiff was not claiming that that [her] own name constituted a
24 service mark. Id., fn. 7. On this basis, the Zyla court concluded that Dastar
25 controlled, and barred the plaintiffs Lanham Act claim for reverse passing off.
26 Id., at 252.
27
28
Lastly, Defendants cite TMTV Corp. v. Pegasus Broadcasting of San Juan,

19
1 490 F. Supp.2d 228 (D.P.R. 2007)another case of reverse passing off based on
2 defendant allegedly taking a whole of a copyrighted work. There, the plaintiff
3 alleged that the defendants television show El Condominio was a knock-off (i.e.
4 unauthorized derivative work under copyright law) of a show produced by the
5 plaintiff called 20 Pisos de Historia. TMTV, 490 F. Supp. 2d at 230. Besides a
6 copyright claim, the plaintiff brought a claim for reverse passing off under the
7 Lanham Act, alleging that the defendants had falsely designated themselves as the
8 creators of the show.
As explained above, Plaintiff Reyes brings a simple and garden variety
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10 passing off claimthat Defendants used his signature, source-identifying
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11 revolutions on their goods, thereby creating a likelihood that consumers will be

12 confused about the origin of Defendants goods, believing them to have been
13 manufactured by Reyes. Dastar does not bar this type of claim, and Defendants fail
14 to cite any authority in support of a conclusion to the contrary.
15
16
17
V.
PLAINTIFFS FOURTH CAUSE OF ACTION FOR CALIFORNIA

STATUTORY UNFAIR COMPETITION SURVIVES
California Business and Professions Code Section 17200 defines unfair
18 competition to include any unlawful, unfair or fraudulent business act or

19 practice. Cal. Code Bus. Proc. 17200; Cel-Tech Commc'ns, Inc. v. Los Angeles
20 Cellular Tel. Co., 20 Cal. 4th 163, 180 (1999). Because the statute is written in the
21 disjunctive, there are three manners in which a practice can run afoul of the statute:
22 by being unlawful, unfair, or fraudulent. Cel-Tech, 20 Cal. 4th at 180.
23
As mentioned above, Reyes 17200 claim is really just a restated version of his
24 Lanham Act claim. Indeed, under the statutes unlawful prong, a practice is
25 unlawful if it violates a law other than Section 17200. Defendants are essentially
26 arguing that because they have definitely shown Reyess Lanham Act claim to be
27 barred by Dastar, they have effectively disposed of both unfair competition claims
28
20
1 as wellbecause it is well settled that unfair completion claims cannot borrow a

2 copyright infringement claim under the preemption doctrine. [Motion 11:26-12:12.]
3
But as explained above, Reyess properly pleaded claim for garden variety
4 passing off in violation of the Lanham Act is not barred by Dastar, because the
5 claim alleges a wrong that is separate and distinct from Plaintiffs copyright
6 infringement claim. Since Reyess 17200 claim is based on Defendants violation of
7 the Lanham Act, the issue of copyright preemption does not arise, and the claim
8 survives because a violation of the Lanham Act constitutes an unlawful and
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9 fraudulent business practice.

10 A.
Reyes properly alleges an unlawful business practice under 17200.
11
Because Reyes properly alleges trademark infringement under the Lanham
12 Act, his statutory unfair competition claim necessarily survivesbecause violation

13 of the Lanham Act is unlawful. Summit Technology, Inc. v. High-Line Medical
14 Instruments, Co. 933 F. Supp. 918, 943 (C.D. Cal. 1996) (under 17200, Plaintiff
15 may redress violations of the Lanham Act.).
16
By proscribing any unlawful business practice, Section 17200 borrows
17 violations of other laws and treats them as unlawful practices that the unfair
18 competition law makes independently actionable. Id., citing State Farm Fire &
19 Casualty Co. v. Superior Court, 45 Cal. App. 4th 1093, 1103 (1996). In effect, the
20 unlawful prong of 17200 makes a violation of the underlying law a per se
21 violation of 17200. Id.; see also Kasky v. Nike, Inc., 27 CA 4th 939, 950 (2002).
22
Virtually any law or regulationfederal or state, statutory or common law
23 can serve as predicate for a 17200 unlawful violation. Thus, if a business

24 practice violates any law, it also violates 17200 and may be redressed under that
25 section. People v. E.W.A.P., Inc. 106 CA3d 315, 319 (1980). While the Copyright
26 Act is one of the few exceptions based on exclusive federal jurisdiction [see 17
27 U.S.C. 301; Melchior v. New Line Prods., Inc., 106 Cal. App. 4th 779, 791 (2003)],
28
21
1 the Lanham Act is indisputably among the statutes that may be borrowed.
2 Denbicare U.S.A., Inc. v. Toys R Us, Inc. 84 F3d 1143 (9th Cir. 1996). Thus,
3 because Plaintiff Reyes adequately alleges violation of the Lanham Act, as
4 explained above, he also properly pleads a cause of action for violation of Section
5 17200.
6 B.
Reyes properly pleads fraudulent business practices under 17200.
Trademark infringement also constitutes statutory unfair competition under
8 the fraudulent prong. The courts have recognized that [a]n action for unfair
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10 claim under the Lanham Act. Academy of Motion Picture Arts & Sciences v.
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9 competition under 17200 is substantially congruent to a trademark infringement

11 Creative House Promotions, Inc. 944 F2d 1446, 1457 (9th Cir. 1991). Indeed, in
12 Kelley Blue Book v. CarSmarts, Inc. 802 F. Supp. 278 (CD CA 1992), this federal
13 district court held that where a Lanham Act violation is establishedi.e., likelihood
14 of confusiona 17200 violation would also be established. Kelley Blue Book, 802
15 F. Supp. 278 at 288, 289. In that case, the court found that the defendant's toll-free
16 number (1800BLUE BOOK) would likely confuse the public into thinking it
17 had an affiliation with Kelley's Blue Book, which is published by plaintiff. This
18 same misleading nature of the communication necessarily constitutes statutory
19 unfair completion under the fraudulent prong. Id.
20
Like in Kelley Blue Book, Plaintiff Reyes claims that Defendants use of his
21 signature, source-identifying elements, is designed to create and does create the

22 false and deceptive commercial impression that the Just Cavalli garments and
23 accessories are associated with and/or manufactured by Reyes.5 [FAC 62.] As
24
25
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
26
Defendants have engaged in reverse passing off. [Motion 9:21, 22.] But this paragraph of the
27 FAC is one of the clearest examples that this is a passing off case.
28
22
1 explained above, this same misleading nature of the communication necessarily

2 constitutes statutory unfair competition under the fraudulent prong.
3
VI.
PLAINTIFFS FIFTH CAUSE OF ACTION FOR COMMON LAW
4
5
UNFAIR COMPETITION SURVIVES

The same key argument advanced above with respect to statutory unfair
6 competition applies equally to the common law variety. Defendants argument that
7 the claim is barred depends on this Court agreeing that Reyes Lanham Act claim is
8 barred. But because the Lanham Act claim survives, as explained above, so too does
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10
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9 its common law unfair competition analog.

In other words, in challenging Plaintiff Reyess Fifth claim for Unfair
11 Competition under California common law, Defendants again ignore Reyess

12 Lanham Act claims, and argue only that the Copyright Act preempts Reyess
13 common law claim. [Motion 12:26-13:3.] As with his Section 17200 claim, Reyess
14 garden variety passing off claim under the Lanham Act is an entirely proper basis
15 for his unfair competition claim under California common law.
16
Unfair competition originated as a common law tort. At common law, before
17 the enactment of any statutory prohibition against unfair competition, unfair

18 competition had a stable and relatively narrow meaning that focused on business
19 practices that harmed competitors by deceiving customers. Dunston v. Los Angeles
20 Van etc. Co., 165 Cal. 89, 94 (1913). Originally, it was the deceptive passing off
21 of ones goods or services as those of another. The fundamental principle
22 underlying this entire branch of the law is, that no man has the right to sell his goods
23 as the goods of a rival trader. Weinstock, Lubin & Co. v. Marks, 109 Cal. 529, 539
24 (1895); see also Lutz v. Western Iron & Metal Co., 190 Cal. 554, 561 (1923);
25 Banzhaf v. Chase 150 Cal. 180, 183 (1907); Pierce v. Guittard 68 Cal. 68, 71-72
26 (1885).
27
28
California unfair competition law is substantially congruent to the Lanham

23
1 Act, and a plaintiff complaining of trademark infringement in federal court may

2 invoke either federal or state protections, or both. Intl Order of Jobs Daughters v.
3 Lindeburg & Co., 663 F.2d 912, 916 (9th Cir. 1980). The primary consideration
4 in trademark-related unfair competition cases in California, as elsewhere, is the
5 likelihood of confusion. Academy of Motion Picture Arts and Sciences v. Creative
6 House Promotions, Inc., 728 F. Supp. 1442, 1452 (C.D. Cal. 1989) aff'd in part,
7 rev'd in part, (9th Cir. 1991) 944 F.2d 1446.
8
As explained above, Plaintiff Reyes has properly pled a cause of action for
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10 that Defendants have wrongfully appropriated his business and goodwill value for
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ERIKSON LAW GROUP
9 passing off under the Lanham Act. [FAC 55-72.] Specifically, Reyes alleges
11 themselves, deceiving consumers, causing harm to his business, and diluting the
12 value of his rights and reputation. [FAC 67, 68.] These allegations are clearly
13 sufficient to state a cause of action for unfair competition under California common
14 law.
15
16
VII.
CONCLUSION
Its hard to accept that Defendants embrace their own analysis, which is
17 overly simplistic at every turn. Their arguments relating to copyright management

18 information rely on two long-discredited cases to support a questionable reading of
19 the statutewhen the cases that do the discrediting are not hard to find. And their
20 arguments relating to trademark rely on a remarkable misreading of Reyess claims
21 as being for reverse passing off, and a failure to offer anything but the most facile
22 analysis of the Dastar holding.
23
24
25
26
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1 DATED: December 15, 2014
ERIKSON LAW GROUP
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By:
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David Alden Erikson
Attorneys for Plaintiffs JASON WILLIAMS,
VICTOR CHAPA, and JEFFREY RUBIN
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Fax: (323) 465-3177
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Tel: (323) 465-3100
ERIKSON LAW GROUP
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Revok Reyes Steel Opposition To Cavalli Defendants' Motion To Dismiss

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Revok Reyes Steel Opposition To Cavalli Defendants' Motion To Dismiss

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

1 ERIKSON LAW GROUP

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

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20 0 N. Larch mon t B lvd. Los Angel es CA 90 004

ERIKSON LAW GROUP

JASON WILLIAMS, an individual;

Case No. 2:14-cv-06659 AB (JEM)

Date: January 5, 2015

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

23 Plaintiffs) respectfully submit this Memorandum of Points and Authorities in

Case 2:14-cv-06659-AB-JEM Document 49 Filed 12/15/14 Page 2 of 30 Page ID #:352

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

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

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

Fax: (323) 465-3177

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

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ERIKSON LAW GROUP

IV. REYESS TRADEMARK INFRINGEMENT CLAIM IS ENTIRELY CONSISTENT

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

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

1. The first rationaleconcern about mutant copyrightis not invoked

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

3. The third rationaleconcerns regarding secondary meaningis not

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

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

Case 2:14-cv-06659-AB-JEM Document 49 Filed 12/15/14 Page 3 of 30 Page ID #:353

Fax: (323) 465-3177

Tel: (323) 465-3100

20 0 N. Larch mon t B lvd. Los Angel es CA 90 004

ERIKSON LAW GROUP

Case 2:14-cv-06659-AB-JEM Document 49 Filed 12/15/14 Page 4 of 30 Page ID #:354

Fax: (323) 465-3177

Tel: (323) 465-3100

20 0 N. Larch mon t B lvd. Los Angel es CA 90 004

ERIKSON LAW GROUP

LEXIS 55086 (S.D.N.Y. July 27, 2007) ............................................................................. 19

Case 2:14-cv-06659-AB-JEM Document 49 Filed 12/15/14 Page 5 of 30 Page ID #:355

6 15 U.S.C. 1125(a) ........................................................................................................................... 9

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ERIKSON LAW GROUP

11 5 McCarthy on Trademarks and Unfair Competition 27:78 (4th ed.) ........................................... 14

Case 2:14-cv-06659-AB-JEM Document 49 Filed 12/15/14 Page 6 of 30 Page ID #:356

Fax: (323) 465-3177

Tel: (323) 465-3100

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ERIKSON LAW GROUP

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