United States District Court, District of Columbia
ROSEMARY M. COLLYER, UNITED STATES DISTRICT JUDGE
for Growth Action is a political organization that broadcast
a 30-second political advertisement on Wisconsin television
and the Internet in September 2015. The advertisement
challenged the record of former-Senator Russ Feingold, who
was then running for re-election against Ron Johnson. Roger
Nichols, an individual, and Three Eagles Music, a division of
Roger Nichols, Inc., sue Club for Growth Action, alleging
that the advertisement violated copyrights held by Three
Eagles Music and Mr. Nichols' rights under trademark law.
Club for Growth Action moves to dismiss, arguing that
Plaintiffs' allegations have plead them out of court by
demonstrating that its use of the copyrighted work was fair
use. The Court finds that Plaintiffs have adequately alleged
a copyright violation and will not decide the issue of fair
use without discovery. However, Plaintiff has failed to
allege adequately a Lanham Act claim. The motion to dismiss
will be granted in part and denied in part.
Nichols composed both the lyrics and music of the song
Times of Your Life. Times of Your Life was
first recorded in 1975 by Paul Anka. Three Eagles Music
(Three Eagles) is a division of Roger Nichols Music, Inc. and
the owner of the copyrights to both the musical composition
and lyrics of Times of Your Life. The registration
numbers of the two copyrights are EU529514 and EU599114.
Three Eagles Music and Mr. Nichols have authorized use of
Times of Your Life in commercials for Kodak and the
television show Mad Men.
for Growth Action (Club for Growth) is a conservative
political action organization that raises funds and creates
advertisements to promote conservative candidates for public
office. In 2015, Club for Growth created two 30-second
commercials focused on challenging former Senator Russ
Feingold's attempt to regain his Senate seat. One
commercial featured Times of Your Life (the Ad). The
Ad altered a majority of the lyrics, but did not alter any of
the musical composition for the portion of the song used in
the commercial. The commercial was available on the Internet
and aired on television in Wisconsin. “At no time has
the Club obtained, or attempted to obtain, a license,
authorization, or other permission from Three Eagles Music to
use or exploit Times of Your Life . . . . Nor did
[Mr.] Nichols consent to allow it to capitalize on his
reputation as a songwriter for the purpose of promoting its
political agenda.” Am. Compl. [Dkt. 9] ¶ 22.
first filed suit in federal court in California. Because
Plaintiffs are Oregon residents, Club for Growth resides in
Washington, D.C., and the Ad was aimed at a Wisconsin
political campaign, Club for Growth moved to dismiss for lack
of personal jurisdiction and other pleading failures.
Plaintiffs took a voluntary dismissal of their California
complaint and filed a similar Complaint in the District Court
for the District of Columbia. Compl. [Dkt. 1]. Club for
Growth moved to dismiss and Plaintiffs filed an Amended
Complaint on April 29, 2016. Am. Compl. [Dkt. 9].
for Growth again moved to dismiss for failure to state a
claim and because Plaintiffs' Complaint alleged facts
demonstrating the Ad was fair use. Mot. [Dkt. 10]. Plaintiffs
opposed, Opp'n [Dkt. 12], and Defendant replied. Reply
[Dkt. 14]. The motion is ripe for
Motion to Dismiss - Fed.R.Civ.P. 12(b)(6)
for Growth moves to dismiss pursuant to Federal Rule of Civil
Procedure 12(b)(6) for failure to state a claim. A complaint
must be sufficient “to give a defendant fair notice of
what the . . . claim is and the grounds upon which it
rests.” Bell Atl. Corp. v. Twombly, 550 U.S.
544, 555 (2007) (internal citations omitted). Although a
complaint does not need detailed factual allegations, a
plaintiff's obligation to provide the grounds of his
entitlement to relief “requires more than labels and
conclusions, and a formulaic recitation of the elements of a
cause of action will not do.” Id. The facts
alleged “must be enough to raise a right to relief
above the speculative level.” Id. “[A]
complaint needs some information about the
circumstances giving rise to the claims.”
Aktieselskabet Af 21. Nov. 2001 v. Fame Jeans, Inc.,
525 F.3d 8, 16 n.4 (D.C. Cir. 2008). A complaint must contain
sufficient factual matter to state a claim for relief that is
“plausible on its face.” Twombly, 550
U.S. at 570. When a plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged, then the
claim has facial plausibility. Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009). “The plausibility standard is
not akin to a ‘probability requirement, ' but it
asks for more than a sheer possibility that a defendant has
acted unlawfully.” Id. A court must treat the
complaint's factual allegations as true, “even if
doubtful in fact.” Twombly, 550 U.S. at 555.
But a court need not accept as true legal conclusions set
forth in a complaint. Iqbal, 556 U.S. at 678.
deciding a motion under Rule 12(b)(6), a court may consider
the facts alleged in the complaint, documents attached to the
complaint as exhibits or incorporated by reference, and
matters about which the court may take judicial notice.
Abhe & Svoboda, Inc. v. Chao, 508 F.3d 1052,
1059 (D.C. Cir. 2007). Generally, when a court relies upon
matters outside the pleadings, a motion to dismiss must be
treated as one for summary judgment and disposed of pursuant
to Rule 56. See Fed. R. Civ. P. 12(d).
“However, where a document is referred to in the
complaint and is central to the plaintiff's claim, such a
document attached to the motion papers may be considered
without converting the motion to one for summary
judgment.” Nat'l Shopmen Pension Fund v.
Disa, 583 F.Supp.2d 95, 99 (D.D.C. 2008) (citation
Court requested copies of the Ad and Times of Your
Life, as they were incorporated by reference in the
Amended Complaint. See Nov. 14, 2016 Minute Order.
Both Plaintiffs and Defendant provided disks to the Court and
objected to the notice and disk of the opposing party.
See Notices and Objections [Dkts. 18-22]. As the
Court will deny Defendant's motion to dismiss the
copyright claim, the Court will also not decide which version
of the Ad and song are appropriate to decide the issue of
state a claim for copyright infringement, a plaintiff must
allege facts showing that it owns a registered copyright and
that the defendant has taken enough original elements
protected by that copyright to create a substantially similar
copy. Feist Publ'ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 361 (1991) (ruling that plaintiff
must prove “(1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are
original”). The second part of this standard gets
complicated. Copying alone does not prove infringement;
rather, “a plaintiff must establish actionable copying
to prevail.” Prunte v. Universal Music Group,
Inc., 699 F.Supp.2d 15, 22 (D.D.C. 2010) (Prunte
II). Both “actual copying and substantial
similarity . . . are clearly required, and the latter inquiry
concerns whether actual copying is legally actionable.”
Sturdza v. United Arab Emirates, 281 F.3d 1287, 1295
(D.C. Cir. 2002).
arguing that a copy has substantial similarity to the
original work, a plaintiff must first identify which aspects
of the work are protectable by copyright. “‘[N]o
author may copyright facts or ideas. The copyright is limited
to those aspects of the work- termed
“expression”-that display the stamp of the
author's originality.'” Id. (quoting
Feist Publ'ns, 499 U.S. at 350). Once
the protectable elements of a work are identified, the
comparison between those protectable elements and the
challenged work can be done. See Id. at 1296.
“‘Substantial similarity' exists where
‘the accused work is so similar to the plaintiff's
work that an ordinary reasonable person would conclude that
the defendant unlawfully appropriated the plaintiff's
protectable expression by taking material of substance and
value.'” Id. (citing Country Kids
‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288
(10th Cir. 1996)).
The plaintiff's legally protected interest is . . . his
interest in the potential financial returns from his [work]
which derive from the lay public's approbation of his
efforts. The question, therefore, is whether defendant took
from plaintiff's works so much of what is pleasing to the
. . . lay . . . audience . . . ...