Yellowcake, Inc. v. Morena Music, Inc.

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 FOR THE EASTERN DISTRICT OF CALIFORNIA 10 11 YELLOWCAKE, INC., a California Case No. 1:20 -CV-00787-JLT-BAM corporation, 12 Plaintiff, 13 ORDER DENYING PLAINTIFF COUNTER- v. DEFENDANTS’ MOTION FOR SUMMARY 14 JUDGMENT MORENA MUSIC, INC., a California 15 corporation; EDUARDO LEON, d/b/a (Doc. 86) LONG PLAY MUSIC; and DOES 1-50, 16 inclusive, 17 Defendants. 18 Case No. 1:20 -CV-00787-JLT-BAM MORENA MUSIC, INC., 19 Counterclaimant, OREDER DENYING DEFENDANT 20 COUNTERCLAIMANT’S MOTION FOR v. SUMMARY JUDGMENT 21 YELLOWCAKE, INC., a California (Doc. 87) 22 Corporation; COLONIZE MEDIA, INC.; and JOSE DAVID HERNANDEZ, 23 Counter-Defendants. 24 25 /// 26 /// 27 /// 28 1 This is a copyright dispute involving three musical albums by the artist Los Originales De 2 San Juan. Before the Court are the plaintiff counter-defendants and defendant counterclaimant’s 3 motions for summary judgment (Docs. 87, 87.) For reasons thoroughly discussed below, the 4 Court finds summary judgment unwarranted and precluded. Accordingly, Plaintiff Counter- 5 defendants Yellowcake’s motion for summary is denied and Defendant Counterclaimant 6 Morena’s motion for summary judgment is denied. 7 BACKGROUND 8 A. Procedural Posture 9 Yellowcake, Inc. initiated suit against Morena Music, Inc. and Eduardo Leon, d/b/a Long 10 Play Music by filing a complaint alleging copyright infringement, contributory infringement, and 11 requesting injunctive relief. (Doc. 1.) The defendants filed an Answer (Doc. 12) and initial 12 countercomplaint against Yellowcake Music, Inc., Colonize Media, Inc., and Jose David 13 Hernandez (collectively “counter-defendants”) on September 1, 2020 (Doc. 13). In response, 14 counter-defendants filed a motion to dismiss Morena’s countercomplaint. (See Doc. 19.) This 15 Court issued an order granting counter-defendants’ motion, in part, and permitting 16 counterclaimant Morena time to file an amended countercomplaint (see Doc. 31). In addition to 17 allowing leave to amend, the Court ordered Morena to file supplemental briefing “that addresses 18 and responds to the arguments made in Counter-defendants reply brief concerning the validity of 19 Morena’s copyright registrations in the three albums.” (See Doc. 31 at 35.) Though untimely, the 20 Court considered Morena’s supplemental briefing (Doc. 34), and the responsive briefing 21 submitted by counter-defendants (Doc. 37). The Court addressed the supplemental briefing (Doc. 22 43) on May 5, 2021, by determining that “The Register of Copyrights will be contacted to 23 determine whether Morena Music’s three copyrights would have been registered if the 24 inaccuracies had been known to the Register at the time of registration.” (Doc. 43 at 4.) (See 25 also Docs. 49, 50.) 26 On March 23, 2021, Defendant-counterclaimant Morena (“Counterclaimant”) filed a first 27 amended countercomplaint (Doc. 36) alleging direct infringement as to the Los Originales 28 Albums and direct infringement as to the Los Originales Cover Art against Yellowcake and 1 Colonize with the following claims for relief: temporary, permanent, and injunctive relief, 2 intentional interference with prospective business advantage and contractual relations, unfair 3 competition under California business and professions code, and conversion (see generally Doc. 4 36), and counter-defendants filed its second motion to dismiss (Doc. 41) on April 23, 2021. 5 Counterclaimant timely replied (Doc. 42) and counter-defendants’ reply (Doc. 46) followed. On 6 August 2, 2021, the Court issued an Order granting counter-defendants’ second motion to dismiss 7 (Doc. 54) as follows: “the first and third counterclaims are dismissed without leave to amend; 8 [Morena] may filed a second amended counterclaim that adds a claim for an accounting; . . . 9 Counter-defendants’ motion for Rule 11 sanctions is Denied.” 10 On August 16, 2021, Counterclaimant filed its second amended countercomplaint (Doc. 11 55) against counter-defendants alleging copyright infringement as to the Los Originales Cover 12 Art and accounting. (See Doc. 55.) Counter-defendants timely filed its Answer (Doc. 56).1 13 B. Counter-defendants Offer of Judgment 14 Pursuant to Federal Civil Procedure Rule 68, Counter-defendants “offered to allow 15 judgment to be taken against them” on Defendant-Counterclaimant Morena’s “First Claim for 16 Copyright Infringement under 17 U.S.C. 805, et seq. as to the Los Originales Cover Artwork . . . 17 for the sum, including costs now accrued and attorneys’ fees, of Five Thousand Dollars 18 ($5,000.00) [;]” under the terms that “[t]his offer of judgment is made for the purposes specified 19 in Rule 68, and is not to be construed either as an admission that any of the Counter-defendants 20 are liable in this action, or that the Counterclaimant has suffered any damage.” (Doc. 80 at 6.) 21 Rule 68 states, “at least 14 days before the date set for trial, a party defending against a claim may 22 serve on an opposing party an offer to allow judgment on specified terms, with the costs then 23 accrued. If, within 14 days after being served, the opposing party serves written notice accepting 24 the offer, either party may then file the offer and notice of acceptance, plus proof of service.” 25 Fed. Civ. P. 68. On March 10, 2023, Defendant-Counterclaimant Morena Music, Inc. accepted 26 Counter-defendants offer to allow Judgment (see Doc. 80 at 1) and Satisfaction of Judgment 27 (Doc. 80) was entered on March 31, 2023. 28 1 On October 6, 2023, the pending matter was ordered to be RELATED and reassigned. (Doc. 97.) 1 C. The Parties’ Cross-Motions for Summary Judgment 2 On May 19, 2023, both parties filed motions for summary judgment. Plaintiff Counter- 3 defendants (collectively “Yellowcake”) moved for summary judgment on its claims for copyright 4 infringement and contributory infringement and Defendant Counterclaimant Morena’s 5 (collectively “Morena”) accounting claim. (Doc. 86.) Morena filed a cross-motion for summary 6 judgment on Yellowcake’s infringement claims (Doc. 87.) The parties timely filed oppositions 7 (Docs. 92, 91) and replies (Docs. 93, 95, 94). The Court considers both parties motions below. 8 STANDARD OF DECISION 9 Federal Civil Procedure Rule 56(a) requires the Court to grant summary judgment as to 10 any claim or defense when the movant, by citing to specific materials in the summary judgment 11 record, shows there “is no genuine dispute as to any material fact and the movant is entitled to 12 judgment as a matter of law.” Fed. R. Civ. P. 56(a), (c); see Anderson v. Liberty Lobby, Inc., 477 13 U.S. 242, 247- 48 (1986). A general dispute exists if a rational factfinder considering the 14 evidence in the record, could find in favor of the non-moving party. Id. at 248-9. A fact is 15 material if, under the substantive law governing the claim or defense at issue, the fact might affect 16 the outcome of the case. Id. at 248. 17 In evaluating a party’s motion for summary judgment, the Court’s role is narrowly limited 18 to assessing the threshold issue of whether a genuine dispute exists as to material facts requiring 19 trial. The court never weighs evidence or finds facts. See Anderson, 477 U.S. at 255. The Court 20 “view[s] the facts and draw reasonable inferences in the light most favorable” to the nonmoving 21 party, without making credibility determinations or weighing conflicting evidence. See Walls v. 22 Cent. Contra Costa Cnty. Transit Auth., 653 F.3d 963, 966 (9th Cir. 2011); see also Scott v. 23 Harris, 550 U.S. 372, 378 (2007) (internal quotation marks omitted). A party is entitled to 24 summary judgment “only if, taking the evidence and all reasonable inferences in the light most 25 favorable to the non-moving party, there are no genuine issues of material fact, and the movant is 26 entitled to judgment as a matter of law.” Karasek v. Regents of Univ. of Cal., 956 F.3d 1093, 27 1104 (9th Cir. 2020) (quoting Tauscher v. Phx. Bd. of Realtors, Inc., 931 F.3d 959, 962 (9th Cir. 28 2019)). 1 The party moving for summary judgment bears the initial burden of identifying the 2 materials in the summary judgment record, including portions of the pleadings, discovery and 3 disclosures on file, and affidavits, that demonstrate the absence of a genuine issue of material 4 fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the non-moving party has the 5 burden of proof at trial, the movant may carry its burden by merely pointing out that there is “an 6 absence of evidence” in support of the non-moving party’s claims or defenses. Id. at 325. If the 7 movant carries its initial burden, the burden of going forward shifts to the non-moving party to 8 show a genuine dispute of material fact remains for the factfinder to resolve. Id. at 324. The non- 9 moving party must go beyond the pleadings and show adequately probative evidence-by its own 10 affidavits or discovery- set forth specific facts creating a genuine issue for trial. Id.; Matsushita 11 Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). “[T]here is no issue for trial 12 unless there is sufficient evidence [supporting] the non-moving party” to the extent that a jury 13 could return a verdict in its favor. Anderson, 477 U.S. at 249. “In determining whether the non- 14 moving party has presented sufficient evidence to proceed to trial, the Court is bound by the 15 traditional allocation of function between judge and jury.” Id. at 255. Credibility determinations 16 and the weighing of the evidence are functions of a jury, not a judge. Id. If the non-moving party 17 does not produce evidence to show a genuine dispute as to a material fact, the moving party is 18 entitled to summary judgment. See Celotex, 477 U.S. at 323. 19 In ruling on a motion for summary judgment, inferences drawn from the underlying facts 20 are viewed in the light most favorable to the non-moving party. See Matsushita, 475 U.S. at 587. 21 Thus, when parties file cross-motions for summary judgment, the Court “evaluate[s] each motion 22 separately, giving the nonmoving party in each instance the benefit of all reasonable inferences.” 23 A.C.L.U. of Nev. v. City of Las Vegas, 466 F.3d 784, 790-91 (9th Cir. 2006). The Court considers 24 each party’s cited evidence, “regardless under which motion the evidence is offered.” Las Vegas 25 Sands, LLC v. Nehme, 632 F.3d 526, 532 (9th Cir. 2011). 26 A. Judicial Notice 27 The court may take judicial notice of facts not subject to reasonable dispute because they 28 are either: (1) generally known within the trial court's territorial jurisdiction, or (2) capable of 1 accurate and ready determination from sources whose accuracy cannot reasonably be questioned. 2 Fed. R. Evid. 201(b). If the content of the document is subject to varying interpretations, then 3 there is no fact “not subject to reasonable dispute,” and the fact does not qualify for judicial 4 notice. Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 1000 (9th Cir. 2018). 5 I. PLAINTIFF COUNTER-DEFENDANT YELLOWCAKE’S MOTION FOR SUMMARY JUDGMENT 6 7 Yellowcake moves for summary judgment on its copyright infringement claims arguing 8 Morena’s “three varying claims for co-ownership all fail.” (Doc. 86 at 24.) Specifically, 9 Yellowcake requests the Court grant summary judgment on its first and third cause of actions for 10 copyright infringement against Defendants and contributory infringement against Leon; “issue 11 judgment holding Morena and Leon are joint and severally liable to [Plaintiff] for damages in the 12 amount of $247,000;” “issue a[] permanent injunction pursuant to 17 U.S.C. § 502 prohibiting 13 Morena, Leon or any of their employees or agents from exercising any of the rights provided by 14 17 U.S.C. § 106 with regards to the Albums;” and grant its motion for summary judgment on 15 Morena's second counterclaim for common law accounting. (Id. at 34.) 16 Morena opposes summary judgment arguing “Yellowcake has not met its burden of proof 17 as to ownership” because “both Flores and Vargas were co-owners of all rights in the Albums 18 from the outset, and they never transferred their rights to Chavez [;]” and “Morena, via its 19 involvement in each Albums’ production, also has a co-ownership claim.” (Doc. 92 at 10.) In 20 response to Yellowcake’s accounting arguments, Morena contends it is entitled to an accounting 21 because it is a co-owner of the Albums. (Id. at 28 (Morena states, both parties “appear[] to 22 concede via the Motion that an accounting is a proper remedy-arguing only that Defendants are 23 not entitled to such a remedy because Morena is not a co-owner of the Albums.”).) Morena also 24 contends “Colonize and Hernandez are obligated to account to Morena” because they “were alter 25 egos of Yellowcake at all relevant times” and “were in a position to have unjustly profited from 26 the exploitation of the Albums [;]” thus, “have a duty to account.” (Id. at 29.) 27 /// 28 1 FACTUAL BACKGROUND 2 A. Undisputed Facts 3 In their separate statements of undisputed facts and in their responses (See generally Docs. 4 86, 92), the parties agreed that the following facts are undisputed: 5 1. Between 2013 and 2015, the Los Originales de San Juan (the “Band”) recorded three 6 albums titled: (i) Los Originales de San Juan 50 Mentadas; (ii) Los Originales De San 7 Juan 15 Corridos Inmortales; and (iii) Los Originales de San Juan Celebrando 39 (the 8 “Albums”); and the three Albums were recorded digitally. 9 2. Hector Rosales (“Rosales”) acted as the audio engineer for the Albums. 10 3. Defendant Eduardo Leon (“Leon”) is the chief executive officer and owner of Morena 11 Music, Inc. 12 4. Plaintiff Counter-defendant Yellowcake, Inc. (“Yellowcake”) is primarily engaged in the 13 business of exploiting various intellectual property rights. 14 5. Counter-defendant Jose David Hernandez (“Hernandez”) is a principal of Colonize Media, 15 Inc. 16 6. In the Assets Purchase and Assignment Agreement, Chavez represented that he owned all 17 rights transferred to Yellowcake therein. 18 7. Shortly thereafter, in or about November 2019, Yellowcake filed “Takedown Notices” 19 pursuant to 17 U.S.C. § 512 et seq. through YouTube claiming ownership of the songs 20 and notified Morena’s distributor, The Orchard, that Morena was infringing Yellowcake’s 21 copyrighted Albums. 22 8. This Court already took judicial notice of Yellowcake’s copyright registrations in the 23 Albums in its previous Order dated March 1, 2021. (See Doc. 31 at 5, n. 1.) 24 9. Morena admitted to receiving the following gross amounts for the exploitation of each 25 Album: (i) “50 Mentadas – approximately $182,000”; (ii) “15 Corridos Inmortales– 26 approximately $27,000”, and (iii) “Celebrando 39 –approximately $38,000.” As such, 27 Yellowcake is entitled to $182,000 in profits for the Album 50 Mentadas; $27,000 for 15 28 Corridos Inmortales and $38,000 for Celebrando 39 for a total of $247,000 in damages 1 from Morena. 2 Based on this Court’s prior Orders (Doc. 31, 54), the Court finds and strictly adopts the 3 following fact as undisputed: Yellowcake and bandmember Jesus Chavez (“Chavez”) entered into 4 an Assets Purchase and Assignment Agreement (“APA”) wherein Yellowcake purchased 5 Chavez’s ownership interest and rights in the Band’s sound recordings, which included the three 6 Albums. The Court’s finding is limited and only serves to establish the following as undisputed: 7 (1) Yellowcake and Chavez entered into an APA agreement; (2) Chavez intended to transfer his 8 ownership interest and rights in the Band; (3) Yellowcake purchased Chavez’s ownership interest 9 and rights; and (4) Chavez transferred its ownership interest and rights to Yellowcake. (See Doc. 10 31 at 12 stating, “There is no dispute that Chavez entered into a written transfer agreement with 11 YCH. See Complaint at Ex. A; Counterclaim ¶¶ 21, 22.”) The Court’s finding does not extend, 12 include, or apply to the specific terms within the APA, as there is clear dispute surrounding the 13 APA language. (See Doc. 92 at 11, Defendant’s Disputed Facts 16, see also at 6-7.) Nor does the 14 Court’s finding address or infer validity of the APA. 15 B. Judicially Noticed Documents 16 This Court previously issued Orders (Docs. 31, 54) resolving Yellowcake’s motions to 17 dismiss (Docs. 19, 41) and within granted judicial notice of the three Albums’ “registration 18 information from the U.S. Copyright Office’s Online Catalog.” (See Doc. 31 at 4, n. 1 “Exhibits 19 A, B, and C of the Berman Reply Declaration are copies of registration information from the U.S. 20 Copyright Office’s Online Catalog regarding the three albums. The Court takes judicial notice of 21 these governmental records.”) Likewise, the Court takes judicial notice of the previous orders 22 (Docs. 31, 54) and the government records judicially noted within. See Fed. R. Evid. 201; Basile 23 v. Twneitieth Century Fox Film Corp., 678 F. App’x 576, 577 (9th Cir. 2017); Sybersound 24 Records, Inc. v. UAV Corp., 517 F.3d 1137, 1146 (9th Cir. 2008); Kaseberg v. Conaco, LLC, 360 25 F.Supp.3d 1026, 1029 n.2 (S.D. Cal. 2018); Obodai v. YouTube LLC, 840 F.Supp.2d 714, 715 n.1 26 (S.D. N.Y. 2011). 27 C. Evidentiary Objections 28 Pursuant to L.R. 260(a)-(b), both parties filed evidentiary objections and responses in 1 support of, and in opposition to, Yellowcake’s motion for summary judgment (Doc. 86). (See 2 also Docs. 94, 96.) 3 A party may object that the material used to “dispute a fact cannot be presented in a form 4 that would be admissible in evidence.” Fed. R. Civ. P. 56(c)(2). In evaluating the merits of a 5 motion for summary judgment, a court may only consider admissible evidence. Fed. R. Civ. P. 6 56. “A court must rule on material evidentiary objections.” Norse v. City of Santa Cruz, 629 7 F.3d 966, 973 (9th Cir. 2010). At the summary judgment stage, district courts consider evidence 8 with content that would be admissible at trial, even if the form of the evidence would not be 9 admissible at trial. See Burch v. Regents of the Univ. of Cal., 433 F. Supp. 2d 1110, 1119-20 10 (E.D. Cal. 2006) (even if evidence is presented in form that is currently inadmissible, it may be 11 considered on motion for summary judgment so long as admissibility defects could be cured at 12 trial); Sali Corona Reg’l Med. Ctr., 909 F.3d 996, 1005 (9th Cir. 2018) (“the court must review 13 the evidence in light of what would be admissible before either the court or jury” [citation 14 omitted]). 15 a. Yellowcake’s Objections 16 In Yellowcake’s response (Doc. 94) to Morena’s Separate Statement of Undisputed Facts 17 (Doc. 92-1), Yellowcake acknowledges “no response is required to the Additional Undisputed 18 Material Facts (AUMF) [but] hereby (i) dispute the purported statements of facts set forth in the 19 AUMF; (ii) object to the statements of fact because they mischaracterize, misrepresent or are 20 unsupported by the purported evidence they are based upon; (iii) object to the purported evidence 21 underlying such statements because such evidence constitutes inadmissible conclusions of law, 22 conclusory statements and/or hearsay, or is otherwise inadmissible; and (iv) respectfully refer the 23 Court to their Statement of Undisputed Facts (Doc. 86-24)” and the opposition (Doc. 91-1)2 filed 24 in opposing Counterclaimant’s motion for summary judgment (Doc. 87). (see Doc. 94 at 2.) 25 Yellowcake’s objections are to Morena’s statement of undisputed facts (Doc. 92-1) and 26 premised on questions of relevancy and materiality. The Court does not rely on irrelevant 27 2 Yellowcake refers to the document as “Response to Defendants’ Separate Statement of Undisputed Facts (Doc. 91- 28 1) in opposition to Defendants’ motion for summary judgment. 1 evidence when evaluating motions for summary judgment, and objections premised on relevancy 2 are redundant and “duplicative of the summary judgment standard itself.” Burch, 433 F.Supp.2d 3 at 1119. “A court can award summary judgment only when there is no genuine dispute of 4 material fact. It cannot rely on irrelevant facts, . . . thus relevance objections are redundant” to 5 the practice of summary judgment and unnecessary to consider in the context summary judgment. 6 Anderson, 477 U.S. at 248 (“Factual disputes that are irrelevant or unnecessary will not be 7 counted.”); see also US E.E.O.C. v. Placer ARC, 114 F. Supp. 3d 1048, 1052 (E.D. Cal. 2015). 8 Accordingly, Yellowcake’s objections to evidence on the grounds that it constitutes an improper 9 legal conclusion are duplicative and improper for summary judgment and cannot be sustained on 10 these grounds. Burch, 433 F.Supp.2d at 1119. These objections are OVERRULED. 11 The Court also declines to consider Yellowcake’s objections to the “mischaracterization” 12 or “misrepresentation” of the evidence represented because the “objections should be directed at 13 the evidence supporting [the] statements.” Hanger Prosthetics & Orthotics, Inc. v. Capstone 14 Orthopedic, Inc., 556 F.Supp.2d 1122, 1126 n.1 (E.D. Cal. 2008). To the extent Yellowcake 15 argues any declarant’s statements misstate the evidence, those objections also are OVERRULED 16 as “go[ing] to the weight of the evidence, not the admissibility of the testimony.” Galvan v. City 17 of La Habra, No. SACV 12–2103, 2014 WL 1370747, at *4 (C.D. Cal. 2014); Stonefire Grill, 18 Inc. v. FGF Brands, Inc., 987 F.Supp.2d 1023, 1034 (C.D. Cal. 2013). 19 As for Yellowcake’s general objection on the grounds of hearsay, the Court finds 20 Yellowcake fails to identify which evidence constitutes hearsay or articulate reasons to support 21 the objection. Nevertheless, the Court “may not grant a summary judgment motion on the basis 22 of hearsay evidence, but it may deny a summary judgment motion on the basis of hearsay 23 evidence as long as it finds that the hearsay evidence would be admissible at trial.” See Fed. R. 24 Civ. P. 56(e); see also Fraser v. Goodale, 342 F.3d 1032, 1036–37 (9th Cir. 2003). Thus, any 25 hearsay objections are OVERRULED. 26 b. Morena’s Objections 27 Morena objects to the “brand new, third-party witness declarations and exhibits attached” 28 in support of Yellowcake’s Reply (Doc. 93) to Morena’s Opposition (Doc. 92). (See generally 1 Doc. 96 at 2.) Morena contend Yellowcake’s Reply and supporting documents contain “new 2 evidence and new arguments never raised in their moving papers.” (Id.) For example, “Counter- 3 defendants appear to attach, as an Exhibit to a newly introduced Declaration from Jesus Chavez 4 Sr., an un-bates-stamped document that was never produced in discovery.” (Id. at 3.) Ultimately 5 Morena argues “such improperly added, previously undisclosed, new evidence” violates Rule 26 6 Initial Disclosure obligations. (Id.) Accordingly, “any new arguments in their Reply brief based 7 upon improperly introduced, new declarations must be stricken, as those arguments have been 8 waived.” (Id.) Morena cites Ninth Circuit cases Graves v. Arpaio, 623 F.3d 1043, 1048 (9th Cir. 9 2010) and Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996). 10 Federal Civil Procedure Rule 26(a) requires a party, “without awaiting a discovery 11 request, provide . . . the name of each individual likely to have discoverable information that the 12 disclosing party may use to support” a pretrial motion. San Francisco Baykeeper v. W. Bay 13 Sanitary Dist., 791 F. Supp. 2d 719, 733 (N.D. Cal. 2011); Fed. R. Civ. P. 26(a)(1)(A)(i); see also 14 Adv. Comm. Notes to 2000 Amendment to Fed. R. Civ. P. 26(a)(1). Despite the requirement, 15 mandatory early disclosure is limited to information reasonably available to the party which 16 includes information known to a party and information obtainable through reasonable 17 investigation. Fed. R. Civ. P. 26(a)(1)(E); see Adv. Comm. Notes to 1993 Amendment to Fed. R. 18 Civ. P. 26(a). Moreover, a party need not produce documents at the time of making their Rule 26 19 disclosure. Id. Rather, “a description by category” suffices. Id. 20 Yellowcake does not directly respond to the alleged nondisclosure or proffer any 21 explanation for the new arguments raised in its Reply (Doc. 93.) Accordingly, the Court does not 22 consider the new arguments raised in Yellowcake’s Reply (Doc. 93). Morena identifies the “un- 23 bates-stamped” “newly introduced Declaration from Jesus Chavez Sr.,” as never being produced 24 during discovery and Yellowcake does not respond. Despite this dispute, the Court does not rely 25 on the objected evidence in reaching its ruling and, so, declines to rule on Morena’s objection. 26 DISCUSSION 27 Yellowcake claims it is entitled to summary judgment on its claims for copyright 28 infringement and contributory infringement because the evidence clearly shows Yellowcake is the 1 exclusive owner of the copyrighted Albums, and Morena infringed upon its copyrighted Albums 2 by exploiting the exclusive rights granted to Yellowcake under 17 U.S.C. § 106. (See generally 3 Doc. 86 at 19-12.) Yellowcake contends Jesus Chavez was the sole author of the Albums, and 4 the APA Agreement shows Yellowcake “purchased Chavez’s entire ownership of the rights, title, 5 and interest in the Albums.” (Doc. 86 at 18.) Yellowcake asserts the United States Copyright 6 Office’s (USCO) issued Certificates of Registrations for the Albums further establish Yellowcake 7 “is the undisputed owner of the Albums” and Morena exploited the Albums by “distributing 8 videos . . . of the sound recordings on YouTube [and] selling the Albums on multiple digital 9 distribution platforms.” (Id. at 19.) Yellowcake explains, after the lawsuit commenced, “Morena 10 admitted in its initial interrogatory responses and supplemental interrogatory responses that it 11 exploited the Albums in direct violation of Yellowcake’s exclusive rights. . . by selling the 12 Albums on multiple digital service providers through its secondary distributor, The Orchard [;]” 13 and documents produced and subpoenaed show “Morena continued to sell copies of the Albums 14 after receiving the Takedown Notices from YouTube.” (Id. at 20.) Moreover, Morena admitted 15 “it also created and uploaded videos which were unauthorized derivative works of Yellowcake’s 16 copyrighted sound recordings to www.YouTube.com,” and “[t]he upload of the Infringing videos 17 to YouTube itself constitutes an act of direct infringement of the Copyrighted Works.” (Id.) As a 18 result of the alleged infringement, Yellowcake contends it is entitled to the following in damages: 19 “$182,000 in profits for the Album 50 Mentadas; $27,000 for the Album 15 Corridos Inmortales, 20 and $38,000 for the Album Celebrando 39” totaling $247,000.00. (Id. at 21.) 21 In response to Yellowcake’s alleged ownership, Morena contends “Chavez was not, and 22 could not be, anything more than a co-author of the Albums” because Chavez’s bandmates 23 Domingo Torres Flores (Flores) and Alfonso Vargas (Vargas) made “creative, copyrightable 24 contributions to the Albums” and assisted in the creation of the Albums. (Doc. 92 at 10.) Morena 25 asserts Flores and Vargas’s musical contributions surpassed Chavez’s because they performed the 26 accordion and drums, “musical elements that are critical to the particular genre of music at issue,” 27 while Chavez only sang. (Id. at 10-11.) Moreover, “Chavez, Flores and Vargas’s ‘collaboration’ 28 is well established, by virtue of their equal ownership and control of the Group, their equal 1 crediting as members of ‘Los Orignales de San Juan,’ and their creative contributions to the 2 Albums.” (Id. at 11.) As a result, the Albums constitute “joint work” under the Copyright Act 3 rendering Chavez, Flores, and Vargas co-authors and co-owners of the Albums. 4 The parties do not dispute “Yellowcake filed Takedown Notices pursuant to 5 17 U.S.C. § 512 through YouTube claiming ownership of the songs and notified Morena’s 6 distributor, The Orchard, that Morena was infringing Yellowcake’s copyrighted Albums [;]” and 7 “Morena admitted to receiving the following gross amounts for the exploitation of each Album: 8 (i) 50 Mentadas – approximately $182,000, (ii) 15 Corridos Inmortales– approximately $27,000, 9 and (iii) “Celebrando 39 –approximately $38,000. As such, Yellowcake is entitled to $182,000 10 in profits for the Album 50 Mentadas; $27,000 for 15 Corridos Inmortales and $38,000 for 11 Celebrando 39 for a total of $247,000 in damages from Morena.” (See Doc. 86-24 at 6-7, Doc. 12 92-1 at 13-14.) 13 For reasons discussed below, the Court finds genuine disputes remain for the jury to 14 resolve and DENIES Yellowcake’s motion for summary judgment on its claims for copyright 15 infringement and contributory infringement. 16 A. The Court’s Prior Orders 17 Before addressing the merits and individual arguments raised by the parties, the Court 18 finds it noteworthy to discuss two prior Orders (Docs. 31, 54) issued in the ongoing litigation as 19 both orders are relevant to the pending issues now before the Court. The Court’s rationale in 20 granting in part, Yellowcake’s first motion to dismiss clearly acknowledges and anticipates 21 genuine disputes as to copyright ownership exists. (See Doc. 31 at 12 “Therefore, the agreement 22 between Chavez and YCH3 could have transferred Chavez’s interests in the album to YCH. The 23 ultimate result would be that Morena is now a joint owner of the copyrights in the albums with 24 YCH.” Since “[o]ne joint owner of a copyright cannot sue another joint owner of a copyright for 25 copyright infringement . . . Morena’s theory of co-authorship/joint ownership defeats its claim of 26 copyright infringement because the other joint owner is Yellowcake.”) Unless all co-owners/co- 27 3 The Court’s prior Orders (Docs. 31, 54) referred to Counter-Defendants Yellowcake, Inc., Colonize Media, Inc., and 28 Jose Hernandez collectively as “YCH.” 1 authors of a “joint work” join in granting an exclusive license, a single co-author (acting on its 2 own behalf) can grant only a non-exclusive license in the copyright work because one co-author 3 cannot limit the other co-authors’ independent right to exploit the copyright. Sybersound, 517 4 F.3d at 1146. Similarly, the Court’s second order (Doc. 54) granting Yellowcake’s motion to 5 dismiss Morena’s counterclaim for copyright infringement are premised upon disputed 6 ownership. The Court briefly explained its prior dismissal order (Doc. 31), stating, 7 the Court recognized that there was no dispute that Chavez entered into a written transfer agreement with Yellowcake and that, while 8 Chavez as a co-owner could not transfer exclusive interests, he could transfer his own ownership interest. The Court recognized that if 9 Morena is a joint owner, the effect of the transfer agreement between Morena and Chavez was to make Morena and Yellowcake joint 10 owners of the copyrights. Therefore, the fact that Chavez could not transfer an exclusive license if he was merely a co-owner does not 11 mean that Yellowcake is not at least a co-owner of the copyright with Morena. 12 13 (Id. at 5.) (See also id. at 11 “The end result is that Chavez has no more exclusive rights in the 14 copyrights, is no longer an owner of the copyrights, and that (crediting Morena’s allegations in 15 this Rule 12(b)(6) motion) Morena and Yellowcake are co- owners of the copyrights. Since co- 16 owners cannot be liable to each other for copyright infringement, . . . dismissal of the first cause 17 of action is appropriate.”) Hence the Court’s reasoning in allowing Morena to file a second 18 amended countercomplaint alleging accounting. “This is the second time that the Court has 19 dismissed the co-owner theory of copyright infringement because the allegations and judicially 20 noticeable documents indicated that Morena and Yellowcake were co-owners. Therefore, 21 dismissal will be without leave to amend at this time.” (Id.) However, “because co-owners are 22 required to account to each other for their use of a co-owned copyrights, the Court will permit 23 Morena to file an amended counterclaim that includes a claim for an accounting against 24 Yellowcake.” (Id.) Though the standards differ, a motion to dismiss challenges the legal 25 sufficiency of a case whereas a motion for summary judgement challenges the factual basis of a 26 case after discovery, the prior orders highlight pleading deficiencies and opine relevant analysis 27 and reasoning. The Court would be remiss to disregard relative guidance. 28 1 LEGAL STANDARD 2 “The Copyright Act affords copyright owners the ‘exclusive rights’ to display, perform, 3 reproduce, or distribute copies of a copyrighted work, to authorize others to do those things, and 4 to prepare derivative works based upon the copyrighted work.” Maloney v. T3Media, Inc., 853 5 F.3d 1004, 1010 (9th Cir. 2017); see 17 U.S.C. § 106. Only the “legal or beneficial owner of an 6 exclusive right under a copyright” has standing to sue for infringement of that right. Righthaven 7 LLC v. Hoehn, 716 F.3d 1166, 1169 (9th Cir. 2013). Though one can own a copyright and have 8 property rights in a work without a registration, the owner needs to register the copyright before 9 he can sue for infringement. See 17 U.S.C. §§ 408(a), 411(a); Gold Value Int'l Textile, Inc. v. 10 Sanctuary Clothing, Ltd. Liab. Co., 925 F.3d 1140, 1144 (9th Cir. 2019); Alaska Stock, LLC v. 11 Houghton Mifflin Harcourt Publ'g Co., 747 F.3d 673, 678 (9th Cir. 2014). 12 To prevail on a copyright infringement claim, a plaintiff must show “(1) ownership of the 13 allegedly infringed work and (2) copying of the protected elements of the work by the defendant. 14 Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991); Feist Publ’ns, Inc. v. Rural Tel. 15 Serv. Co., 499 U.S. 340, 351 (1991); Great Minds v. Office Depot, Inc., 945 F.3d 1106, 1110 (9th 16 Cir. 2019). “To plead ownership, [a plaintiff] must plausibly allege it owns a valid copyright 17 registration for its works.” Malibu Textiles, Inc. v. Label Lane Int’l, Inc., 922 F.3d 946, 951 (9th 18 Cir. 2019). There is a presumption of copyright validity and ownership if there is a certificate of 19 registration from the United States Copyright Office (“USCO”). Pasillas, 927 F.2d at 442 20 (quoting Unicolors, Inc. v. Urb. Outfitters, Inc., 853 F.3d 980, 988 (9th Cir. 2017)). A certificate 21 from the U.S. Register of Copyrights “constitute[s] prima facie evidence of the validity of the 22 copyright.” 17 U.S.C. § 410(c). A plaintiff may meet the second element of copying by 23 demonstrating that “(a) the defendant had access to the allegedly infringed work and (b) the two 24 works are substantially similar in both idea and expression of that idea.” Pasillas, 927 F.2d at 25 442 26 A. Copyright Infringement: Ownership 27 Yellowcake contends it is the exclusive owner of the copyrighted Albums pursuant the 28 APA Agreement with Chavez “whereby Yellowcake . . . purchased Chavez’s entire ownership of 1 the rights, title and interest in the Albums.” (Doc. 86 at 18.) Yellowcake also contends its 2 “ownership of the copyrighted works is further evidence” by the fact Yellowcake registered the 3 alleged acquired copyrights for the Albums and obtained USCO Certificates of Registration. (Id. 4 at 19.) 5 a. Genuine Dispute as to Material Fact 6 The parties do not dispute the Court’s judicial notice of Yellowcake’s registration in its 7 prior order (Doc. 31). Nor do the parties dispute the Albums are sound recordings and original 8 works of authorship constituting copyrightable subject matter. 17 U.S.C. § 102(a)(7). However, 9 just as the prior dismissal orders (Docs. 31, 54) anticipate, the summary judgment record presents 10 disputes of material facts. Specifically, disputes of copyright ownership. In opposing summary 11 judgment, Morena argues “Yellowcake has not met its burden of proof as to ownership” and 12 proffers three co-author/co-owner arguments premised on the Albums being a joint work. (See 13 generally Doc. 92.) The Court considers the parties’ counterarguments and responses below to 14 assess whether the disputes are genuine. 15 As to its motion, Yellowcake has the burden to prove its copyright ownership in the three 16 Albums. Flesicher Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958, 962 (9th Cir. 2011). A 17 certificate from the U.S. Register of Copyrights “constitute[s] prima facie evidence of the validity 18 of the copyright.” 17 U.S.C. § 410(c). Yellowcake has met its burden of showing prima facie 19 evidence of ownership by presenting USCO issued Certificates of Registration for the Albums. 20 Therefore, the burden shifts to Morena to “rebut[ ] the facts set forth in the copyright certificate.” 21 United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011). “‘To rebut the 22 presumption [of validity], an infringement defendant must simply offer some evidence or proof to 23 dispute or deny the plaintiff's prima facie case of infringement.’” Id. 24 Morena contends Yellowcake “has not met its burden of proof as to ownership” because 25 Chavez did not “own all intellectual property” “prior to Yellowcake’s purported acquisition of the 26 Albums.” (Doc. 92 at 10.) Morena rebuts Yellowcake’s presumed exclusive ownership arguing 27 the Albums constitute a “joint work.” (See generally id. at 10-15.) A “joint work” is a work 28 prepared by two or more authors with the intention that their contributions be merged into 1 inseparable or interdependent parts of a unitary whole. 17 U.S.C.A. § 101. As a result, 2 Bandmates “Flores and Vargas were co-owners of all rights in the Albums from the outset, and 3 they never transferred their rights to Chavez.” (Doc. 92 at 10.) Morena also asserts its 4 “involvement in each Albums production” makes Morena a co-owner as well. (Id.) 5 i. Co-author/Co-owner: Bandmates Flores and Vargas 6 Morena contends Yellowcake has not met its burden of proof in showing Chavez was the 7 sole owner of the Albums. (Doc. 92 at 10.) Morena contends bandmates Domingo Torres Flores 8 (“Torres”) and Alfonso Vargas (“Vargas”) were co-authors of the Albums and “Chavez, Flores 9 and Vargas’s “collaboration” is well established, by virtue of their equal ownership and control of 10 the Group, their equal crediting as members of “Los Orignales de San Juan,” and their creative 11 contributions to the Albums.” (Id. at 11.) Moreover, “[t]here is also no evidence before this 12 Court (because none exists) to indicate that Flores or Vargas ever transferred any interest in and 13 to their creative contributions to the Albums to Chavez at any time for any reason.” (Id. at 12.) 14 “[I]n the absence of any written agreements among the Group members setting forth differing 15 ownership interests (as is the case here), it is legally meritless for only one member of a band to 16 claim sole authorship of the sound recordings in dispute.” (Id. citing Copyright Circular 56A, 17 Copyright Registration of Musical Compositions and Sound Recordings.) 18 Yellowcake asserts that the “ownership through assignment theory is refuted by the 19 record.” (Id. at 29.) Yellowcake explains, “[t]he terms, circumstances and timing of the 20 disclosure of the alleged assignments prove . . . they have absolutely no credibility whatsoever. . 21 .” (Id.) For instance, (1) “both Alleged Assignments were allegedly signed on March 8, 2022, 22 but they were not disclosed . . . until October 10, 2022, well after the June 28, 2022 [,] cutoff for 23 fact discovery under the Court’s initial scheduling order and only fourteen days before the 24 October 24, 2022 cutoff for filing summary judgment motions.” (Id.) (2) “Leon was deposed on 25 April 19, 2022,” and “the Alleged Assignments were executed on March 8, 2022 [yet] he made 26 no mention of these Alleged Assignments.” (Id.) 27 Yellowcake asserts the terms of the assignments are “so suspect that the only logical 28 inference that can be drawn . . . is that they were created after the fact for the purpose of trying to 1 create a new theory of ownership.” (Id. at 31.) Specifically, “both Vargas and Torres allegedly 2 assigned their alleged interests in the Albums to Morena for only one dollar ($1.00) each;” 3 Vargas and Torres “testified that they never even read the Alleged Assignment before they 4 executed them and did not know what they were for” and “the Alleged Assignments do not state 5 what percentage of the Albums Vargas and Torres allegedly owned.” (Id. at 31.) Yellowcake 6 also asserts that Chavez's cease and desist letter to Vargas and Torres is motive for Vargas “to 7 help Morena with this farce.” (Id.) Plaintiff explains that Vargas and Torres “attempted to tour 8 and release new music as Los Originales De San Juan through Hyphy Music, Inc. without 9 Chavez” which resulted in Chavez sending a cease-and-desist letter. (Id. at 32.) Plaintiff 10 contends Vargas and Torres’ compliance constitutes acknowledgment of Chavez’s ownership of 11 the Los Originales De San Juan trademark. Furthermore, “Morena never produced any written co- 12 author agreement or partnership agreement amongst Chavez, Torres and Vargas, and never 13 produced any objective evidence that there was an understanding that Vargas and Torres were 14 coauthors with Chavez;” Vargas and Torres never filed copyright registrations or demanded 15 royalties from Chavez from the sale of the Albums; and “Vargas nor Torres ever filed an action 16 for declaratory judgment or otherwise against Chavez or Yellowcake claiming to be a co-owner 17 of the Albums.” (Id. at 32.) Yellowcake concludes, “Simply put, there is not a shred of credible 18 objective evidence to prove that either Vargas or Torres were ever co-authors of the Albums and 19 timing, circumstances and terms of the Alleged Assignments show that they lack any credibility.” 20 (Id.) 21 Yellowcake’s arguments rely upon the Court making credibility determinations, which the 22 Court lacks the authority to do. “In determining whether the non-moving party has presented 23 sufficient evidence to proceed to trial, the Court is bound by the traditional allocation of function 24 between judge and jury.” Anderson, 477 U.S. at 255. Credibility determinations and the 25 weighing of the evidence are functions of a jury, not a judge. Id. On the other hand, a certificate 26 from the U.S. Register of Copyrights “constitute[s] prima facie evidence of the validity of the 27 copyright.” 17 U.S.C. § 410(c). When the plaintiff presents such evidence, as Yellowcake has 28 done, the burden shifts to Defendants to “rebut[ ] the facts set forth in the copyright certificate.” 1 United Fabrics Int’l, Inc., 630 F.3d at 1257. “To rebut the presumption [of validity], an 2 infringement defendant [Morena] must simply offer some evidence or proof to dispute or deny 3 [Yellowcake’s] prima facie case of infringement.” Id. (internal quotations omitted.) Morena has 4 met its burden. Yellowcake’s claim of sole ownership by way of Chavez’s prior exclusive 5 ownership is material disputed fact and the declarations of Flores and Vargas “establish[ing] that 6 at all relevant times, Chavez, Flores and Vargas intended that Flores and Vargas would be co- 7 authors in the Albums” create a genuine issue for the jury to resolve. (See Doc. 92. at 11.) For 8 this reason, summary judgment is precluded. The Court DENIES Yellowcake’s motion for 9 summary judgment on copyright infringement. 10 ii. Co-author/Co-owner: Morena 11 Morena contends it is “a co-author of the Albums, given the nature of the services Morena 12 rendered as a producer on the Albums.” (Doc. 92 at 14.) Morena asserts “two indisputable 13 reasons” for its contention: (1) “Morena contributed more than a modicum of creativity to the 14 creation of the Albums [;]” and (2) “even if [Defendant] did not contribute enough creatively to 15 the creation of one or more of the Albums, Morena became a co-owner when it acquired all of 16 Flores and Vargas’ respective interests in their creative contributions . . . [b]ecause Flores and 17 Vargas never conveyed any rights in their contributions to Chavez or Yellowcake.” (Id. 14-15.) 18 The Court finds Morena has carried its burden in establishing a genuine dispute of 19 material fact regarding ownership of the copyrighted Albums exists and remains for the jury to 20 resolve. Therefore, the Court need not consider Morena’s alternative argument. 21 B. Contributory Infringement 22 Yellowcake also moves for summary judgment on its claim for contributory infringement 23 arguing Leon, the owner and principal of Morena, “is personally and contributorily liable” for 24 Defendant’s infringement and seeks damages accordingly. (Doc. 86 at 22.) Yellowcake explains, 25 “Leon is both personally and contributorily liable to Yellowcake for damages as the principle of 26 Morena and his personal involvement and facilitation of Morena’s acts of infringement.” (Id.) 27 /// 28 /// 1 LEGAL STANDARD 2 The three elements required to prove a defendant liable under the theory of contributory 3 copyright infringement are: (1) direct infringement by a primary infringer, (2) knowledge of the 4 infringement, and (3) material contribution to the infringement. See 17 U.S.C. §§ 501-513. See 5 also Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004); Metro-Goldwyn-Mayer Studios, Inc. v. 6 Grokster Ltd., 545 U.S. 913, 125 (2005). 7 The Court observes that the element of direct infringement is disputed. Accordingly, the 8 Court declines to grant summary judgment on Yellowcake’s contributory infringement claim. 9 The Court also declines to consider Yellowcake’s arguments regarding Morena’s owner, principal 10 Leon and the alleged individual liability. 11 CONCLUSION 12 The Court previously found genuine dispute of material fact regarding copyright 13 ownership exist; therefore, summary judgment is inappropriate. The Court DENIES 14 Yellowcake’s motion for summary judgment for copyright infringement and contributory 15 infringement. 16 C. Accounting 17 Yellowcake also moves for summary judgment on Morena’s counterclaim for accounting 18 arguing “the evidence in the record shows that Morena is not a co-owner of the Albums” because 19 “Morena’s three varying claims for co-ownership all fail.” (Doc. 86 at 22-25.) In response to 20 Yellowcake’s accounting arguments, Morena contends it is entitled to an accounting because it is 21 a co-owner of the Albums. (See Doc. 92 at 28 (Morena states, both parties “appear[] to concede 22 via the Motion that an accounting is a proper remedy-arguing only that Defendants are not 23 entitled to such a remedy because Morena is not a co-owner of the Albums.”).) Morena also 24 asserts, “Colonize and Hernandez are obligated to account to Morena” because they “were alter 25 egos of Yellowcake at all relevant times” and “were in a position to have unjustly profited from 26 the exploitation of the Albums [;]” therefore, “have a duty to account.” (Id. at 29.) 27 The Court previously addressed the legal arguments relating to co-ownership. For the 28 reasons previously outlined, and those previously discussed above, Yellowcake’s motion for 1 summary judgment on Morena’s accounting claim is DENIED. 2 LEGAL STANDARD 3 A co-owner of a copyright cannot be liable to another co-owner for infringement.” Kling 4 v. Hallmark Cards, Inc., 225 F.3d 1030, 1034 (9th Cir. 2000) (quoting Oddo v. Ries, 743 F.2d 5 630, 632–33 (9th Cir. 1984)). “The authors of a joint work are co-owners of copyright of the 6 work.” 17 U.S.C. § 201. Accordingly, co-owners are required to account to each other for their 7 use of a co-owned copyrights, See Corbello v. Devito, 777 F.3d 1058, 1062 (9th Cir. 2015); 8 Ashton-Tate Corp. v. Ross, 916 F.2d 516, 522 (9th Cir. 1990) 9 DISCUSSION 10 A. Ownership: Work for Hire 11 First, Yellowcake argues Morena is not a co-owner “via a work-for-hire with Chavez.” 12 (Doc. 86 at 24.) Morena concedes explaining, “the Court has already ruled on Morena’s claims to 13 the Albums on the basis of oral work-for-hire agreement(s), and this issue is no longer in dispute 14 in this case.” (Doc. 92 at 16.) The Court takes judicial notice of its previously issued order (Doc. 15 31). Accordingly, the Court concludes the fact “Morena is not a Co-owner via a work for hire 16 with Chavez” (Doc. 86 at 24) has been established as an undisputed fact and issue. Therefore, the 17 Court need not address the parties’ arguments and finds the argument MOOT. 18 B. Ownership: Co-Author and Co-owner 19 Yellowcake contends Morena is not a co-author with Chavez for the following reasons: 20 (1) “Rosales, the audio engineer, declared [] Chavez had complete control over the production 21 and recording of the Albums [;]” Morena’s “initial counterclaims . . . admitted [] Chavez alone 22 was the original author of the albums [;]” “Morena only offered nominal artistic direction typical 23 of a record label or distributor and did not claim ownership of the Albums as a co-author.” (Id. at 24 27.) Yellowcake directs the Court to the alleged inconsistencies surrounding Morena’s first 25 amended complaint (Doc. 36) and prior filings. (See generally Doc. 86 at 27-28.) 26 Ultimately, Yellowcake’s argument hinges on the Court finding a genuine dispute of 27 ownership still exists for the jury to resolve. The Court already addressed ownership and 28 determined a genuine issue still exists regarding whether Morena’s contributions rise to the level 1 of authorship and whether the Albums constitute “joint work” making Chavez, Vargas, and 2 Torres co-authors and co-owners. Because a genuine dispute of ownership exists, the Court need 3 not address Yellowcake’s arguments concerning Morena’s standing or Yellowcake’s contention 4 that “Hernandez and Colonize are entitled to summary judgment in their favor on Morena’s 5 counterclaim.” (See Doc. 86 at 33-34.)4 Ownership of a copyright vests initially in the author of 6 the work, see 17 U.S.C. § 201(a), and the Court previously addressed the legal arguments relating 7 to co-ownership and found genuine disputes as to copyright ownership remain for the jury to 8 resolve. Summary judgment is precluded, and the Court DENIES Yellowcake’s motion for 9 summary judgment on Morena’s claim for accounting. 10 C. Injunctive Relief 11 Yellowcake also request the Court grant injunctive relief. A court may grant injunctive 12 relief in a copyright infringement action to prevent or restrain further infringement of a copyright. 13 17 U.S.C. § 502(a); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.2d 1146, 1158 (9th Cir. 2007). 14 Having found a genuine dispute of material fact regarding copyright ownership, Yellowcake is 15 not entitled to such relief at this time. Yellowcake’s request for injunctive relief is denied. 16 CONCLUSION 17 The Court finds Morena has carried its burden in showing a genuine material dispute of 18 fact, regarding ownership of the copyrighted Albums, still exists for the fact finder to resolve. 19 Therefore, summary judgment is precluded, and Plaintiff Counter-defendants’ motion for 20 summary judgment is DENIED. 21 /// 22 /// 23 /// 24 /// 25 /// 26 4 Even still, the Court notes the circular reasoning proffered to oppose Hernandez and Colonize’s liability. For example, in arguing contributory infringement Yellowcake contends Leon is liable for infringement damages as the 27 principal and owner of Defendant Morena. Yet, here, the same reasoning yields the inverse. (See Doc. 86 at 34.) Nevertheless, such reasoning does not affect the Court’s assessment as it has already concluded in sections prior that 28 a genuine dispute as to copyright ownership remains for the jury to resolve. 1 II. DEFENDANT COUNTERCLAIMANT MORENA’S MOTION FOR 2 SUMMARY JUDGMENT5 3 Morena moves for summary judgment or partial adjudication of Yellowcake’s copyright 4 infringement, contributory infringement, and injunctive relief claims. (See Doc. 87.) Morena 5 argues that Yellowcake cannot maintain a claim for copyright infringement against defendants 6 because: (1) Yellowcake lacks standing; (2) Morena’s “original contributions and its acquisition 7 of rights from Flores and Vargas” make Morena a joint owner in the Albums; and (3) 8 “Yellowcake has no provable damages.” (Id at 12-16.) Specifically, Morena contends Yellowcake 9 lacks standing to bring a claim against Morena because the “Assignment from Chavez” “does not 10 and cannot result in a transfer of exclusive rights in the copyright.” (Id. at 12.) In arguing joint 11 ownership, Morena repurposes its prior legal arguments and asserts the same grounds for denying 12 Yellowcake’s request for summary judgment (id. at 19). 13 Yellowcake opposes summary judgment asserting Morena’s grounds for judgment are 14 “fatally flawed as a matter of fact and law.” (Doc. 91 at 14, “Defendants reason: (i) because 15 Chavez, Flores and Vargas allegedly co-owned the Albums when Yellowcake purchased the 16 rights in the Albums from Chavez, (ii) and because Flores and Vargas retained their rights in the 17 Albums, (iii) then the Asset Purchase Agreement between Chavez and Yellowcake could not 18 legally transfer any exclusive rights in the Albums to Yellowcake, and (iv) as Yellowcake lacks 19 any exclusive rights in the Albums Yellowcake has no standing to sue for infringement.”.) In 20 essence, Yellowcake argues Morena fails to demonstrate as a matter of law that they co-own the 21 albums via the alleged assignments (id. at 20). 22 A. Genuine Dispute as to Material Fact Exists 23 The Court has reviewed the summary judgment record and notes both parties have 24 repurposed and incorporated prior legal arguments. In ruling on Plaintiff Counter-defendants 25 Yellowcake’s motion for summary judgment, the Court found Morena satisfied its burden of 26 5 In resolving Counter-defendants’ motion for summary judgment (Doc.86), the Court did not consider the additional arguments and facts asserted in any briefing relating to Morena’s motion for summary judgment (Docs. 87, 91, 95). 27 The Court considered only arguments and material filed in support of and opposition of Counter-defendants’ motion (Docs. 86, 92, 93, 94, 96). The Court approaches Morena’s motion for summary judgment in the same manner and 28 considers only the briefing filed in support and opposition of its motion. 1 | showing a genuine dispute regarding whether the Albums constitute a joint work and whether 2 | Bandmates Flores and Vargas and Defendant Morena are co-owners. The dispute still exists; 3 | thus, summary judgment is DENIED. 4 CONCLUSION 5 For reasons discussed, the Court finds a genuine dispute exists and precludes summary 6 | judgment. Defendant Counterclaimant Morena’s motion for summary judgment is DENIED. 7 ORDER 8 For the reasons set forth above, the Court ORDERS: 9 1. Plaintiff Counter-defendants’ Motion for Summary Judgment (Doc. 86) is DENIED. 10 2. Defendant Counterclaimant’s Motion for Summary Judgment (Doc. 86) is DENIED.° 11 b IT IS SO ORDERED. 13 | Dated: _June 26, 2025 Cerin | Tower TED STATES DISTRICT JUDGE 14 15 16 17 18 19 20 21 22 23 24 25 26 ——_ ° The Court anticipates issuing rulings on the remaining dispositive motions within the next few 28 | weeks. At that time, the Court will address the schedule for the remainder of the action. 24