RICHARD F. BOULWARE, II, District Judge.
WHEREAS, on January 22, 2016, SOCIAL BUTTERFLY WORLD, LLC. filed a Complaint against MENDEZ MEDIA MARKETING, INC. (the "Complaint"). (ECF 1.)
WHEREAS, on February 22, 2016, MENDEZ MEDIA MARKETING, INC. answered the Complaint (the "Answer"). (ECF 8.)
WHEREAS, on July 1, 2016, the parties entered a Stipulation to Extend Discovery. (ECF 17.)
WHEREAS, on July 5, 2016, the Court granted the parties' Stipulation to Extend Discovery. ECF 19.
WHEREAS, pursuant to the Extended Discovery schedule, the deadline to Amend the Pleadings is September 23, 2016. See ECF 19 at 3.
WHEREAS, the parties are engaged in discovery and Defendant MENDEZ MEDIA MARKETING, INC. discovered additional facts that allegedly add additional support to existing affirmative defenses and/or additional affirmative defenses as pleaded in its proposed Amended Answer to Complaint. SOCIAL BUTTERFLY WORLD, by entering into this Stipulation, is not agreeing in any way as to the truth or veracity of the allegations, but simply permitting leave to be freely granted in accordance with the spirit of the rules.
IT IS HEREBY STIPULATED by and between Plaintiff SOCIAL BUTTERFLY WORLD, LLC., and Defendant MENDEZ MEDIA MARKETING, INC., by and through their undersigned counsel, that Defendant MENDEZ MEDIA MARKETING, INC. be granted leave to amend its Answer to assert additional affirmative defenses and/or further plead facts and authority in support of same against SOCIAL BUTTERFLY WORLD, LLC. A copy of the proposed Amended Answer to Complaint is attached hereto as Exhibit A; a redline version comparing the proposed Amended Answer to the Complaint against the original Answer to Complaint is attached hereto as Exhibit B.
IT IS SO ORDERED that pursuant to stipulation of the parties, and pursuant to Federal Rule of Civil Procedure 15(a)(2), that Defendant MENDEZ MEDIA MARKETING, INC. be allowed to file its Amended Answer to Complaint in this case to assert additional affirmative defenses against Plaintiff SOCIAL BUTTERFLY WORLD, LLC.
Defendant Mendez Media Marketing, Inc. a California corporation ("MMMI") hereby answers the complaint in this matter and alleges as follows:
1. Answering paragraph 1, the paragraph alleges no factual matter and therefore requires no response. In any case, MMMI denies each and every allegation thereof.
2. Answering paragraph 2, the paragraph raises no factual matter but only a legal contention, and therefore requires no response. In any case, MMMI denies each and every allegation of paragraph 2.
3. Answering paragraph 3, MMMI denies each and every allegation thereof.
4. Answering paragraph 4, MMMI denies each and every allegation thereof.
5. Answering paragraph 5, MMMI admits, upon its information and belief, that plaintiff Social Butterfly World, LLC ("SBW") purports to be a Nevada limited liability company operated for some period of time unknown to MMMI, and that Andrea Collier at certain times held herself out to be affiliated with SBW in some way. Except as expressly so admitted, MMMI denies each and every allegation of paragraph 5.
6. Answering paragraph 6, MMMI admits the same.
7. Answering paragraph 7, MMMI denies each and every allegation thereof.
8. Answering paragraph 8, MMMI admits that at some unknown point SBW, upon MMMI's information and belief, began performing some type of services for Grand Canyon Resort Corporation ("GCRC"), which, according to MMMI's further information and belief, is a tribally chartered corporation owned by the Hualapai Indian Tribe. MMMI further admits, upon its information and belief, that some of SBW's services related to GC RC's recreational business. Except as expressly so admitted, MMMI denies each and other allegation of paragraph 8.
9. Answering paragraph 9, MMMI denies the same in their entirety.
10. Answering paragraph 10, MMMI denies the same in their entirety.
11. Answering paragraph 11, MMMI admits, upon its information and belief, that SBW at various times stated it was performing photographic work for projects related to GCRC. Except as expressly so admitted, MMMI denies each and every other allegation of paragraph 11.
12. Answering paragraph 12, MMMI has insufficient information or belief with respect to the accuracy of the allegations thereof, and therefore denies each and every allegation of paragraph 12.
13. Answering paragraph 13, MMMI has insufficient information or belief upon which to admit or deny the allegations of this paragraph, and therefore denies each and every allegation of paragraph 13.
14. Answering paragraph 14, MMMI admits that GCRC retained MMMI to handle certain aspects of advertising, marketing, and other business needs of GCRC, and that some or all of those activities were beyond the scope of SBW's responsibilities as understood by MMMI based upon information received. Except as expressly so admitted, MMMI denies each and every other allegation of paragraph 14.
15. Answering paragraph 15, MMMI denies each and every allegation of the same.
16. AnswerinL, paragraph 16, MMMI denies each and every allegation of the same.
17. Answering paragraph 17, MMMI denies each and every allegation of the same.
18. Answering paragraph 18, MMMI denies each and every allegation of the same.
19. Answering paragraph 19, MMMI denies each and every al legation of the same.
20. Answering paragraph 20, MMMI denies each and every allegation of the same.
21. Answering paragraph 21, MMMI admits that at some point plaintiff claimed to MMMI that MMMI was infringing upon alleged rights in certain images plaintiff claimed to have created. Except as expressly so admitted, MMMI denies each and every allegation of paragraph 21.
22. Answering paragraph 22, MMMI admits that at some point plaintiff informed MMM I that plaintiff purportedly saw advertisements published that contained versions of SBW's claimed images. Except as expressly so admitted, MMMI denies each and every allegation of paragraph 22.
23. Answering paragraph 23, MMMI denies each and every allegation of the same.
24. Answering paragraph 24, MMMI denies each and every allegation of the same.
25. Answering paragraph 25, MMMI incorporates and restates paragraphs I through 24 above as though fully set forth herein.
26. Answering paragraph 26, MMMI denies each and every allegation of the same.
27. Answering, paragraph 27, MMMI admits that it has and for some time has had a professional relationship with GCRC. Except as expressly so admitted, MMMI denies each and every other allegation of paragraph 27.
28. Answering paragraph 28, MMMI denies each and every allegation of the same.
29. Answering paragraph 29, MMMI denies each and every allegation of the same.
30. Answering paragraph 30. MMMI denies each and every allegation of the same.
31. Answering paragraph 31. MMMI has insufficient information or belief upon which to admit or deny the allegations of this paragraph, and upon that basis denies each and every allegation of paragraph 31.
32. Answering paragraph 32, MMMI admits that in a letter dated January 4, 2016, plaintiff, through its stated counsel, claimed that MMMI was violating certain alleged copyrights held by SBW and requested that MMMI cease and desist their use, further making other statements about remedies available to plaintiff for the alleged actions. The referenced letter speaks for itself, and MMMI denies any attempt in paragraph 32 to characterize or paraphrase the document. Except as expressly so admitted, MMMI denies each and every allegation of paragraph 32.
33. Answering paragraph 33, MMMI has no basis upon which to admit or deny plaintiff's information or belief about any subject. MMMI therefore denies each and every other allegation of paragraph 33.
34. Answering paragraph 34, MMMI denies each and every allegation of the same.
35. Answering paragraph 35, MMMI denies each and every allegation of the same.
36. Answering paragraph 36, MMMI denies each and every allegation of the same.
37. Answering paragraph 37, MMMI denies each and every allegation of the same.
38. Answering paragraph 38, MMMI denies each and every allegation of the same.
39. Answering paragraph 39, MMMI incorporates paragraphs 1 through 38 above as though fully set forth herein.
40. Answering paragraph 40, MMMI denies each and every allegation of the same.
41. Answering paragraph 41, MMMI denies each and every allegation of the same.
42. Answering paragraph 42, MMMI denies each and every allegation of the same.
43. Answering paragraph 43, MMMI denies each and every allegation of the same.
44. Answering paragraph 44, MMMI has no basis upon which to admit or deny plaintiff's information or belief about any subject. MMMI therefore denies each and every other allegation of paragraph 44.
45. Answering paragraph 45, MMMI denies each and every allegation of the same.
46. Answering paragraph 46, MMMI denies each and every allegation of the same.
47. Answering paragraph 47, MM MI denies each and every al legation of the same.
48. Answering paragraph 48, MMMI denies each and every allegation of the same.
49. Answering paragraph 49, MMMI denies each and every allegation of the same.
50. Answering the prayer, MMMI denies that plaintiff is entitled to any relief, monetary or otherwise, against MMMI for any conduct at any time.
51. The complaint fails to set forth facts sufficient to state a proper claim for relief against MMMI under any legal theory.
52. Plaintiff consented, expressly or impliedly, to the uses complained of in the claims for relief, and each of them, and therefore is barred form recovering any relief of any nature from MMMI.
53. Plaintiff failed to take reasonable, usual steps to protect its purported "rights" in the subject images by providing notice to other parties of plaintiffs claimed rights, including without limitation the failure to register the images as copyrights until long after most if not all of the alleged "infringements" (if any) occurred.
54. Plaintiffs complaint, and each purported claim for relief set forth in it, is defective and barred for failure to join and indispensable party, specifically GCRC.
55. Plaintiff failed to register the purported protected images with the United States Copyright Office as required by law, or did so belatedly. Plaintiff is therefore barred from prosecuting the instant action and is barred from recovering any relief, or certain types of relief, as specified in the Copyright Act.
56. Upon MMMI's information and belief, Plaintiff defectively registered the subject images as copyrights with the U.S. Copyright Office, or through the omission of certain information, or misinformation, or in some other respect. Upon MMMI's information and belief, each Certificate of Registration asserted by Plaintiff in this case was fraudulently applied for and/or obtained by Plaintiff' because Plaintiff never acquired ownership rights in the subject images by the time of registration, yet falsely represented to the Copyright Office in writing that it did own the rights to the subject images at that time. For example, Plaintiff's Certificate of Registration VA 1997545 effective November 20, 2015 lists "Social Butterfly World LLC" as both Author and Copyright Claimant. By way of further example, Plaintiff's Certificate of Registration PA 1984636 effective November 20, 2015 names "Social Butterfly World LLC" as Author, and "Andrea M. Collier" as Copyright Claimant with a transfer statement of "[b]y written agreement." By way of further example, Plaintiff's Certificate of Registration VA 2009584 effective April 28, 2016 lists "Social Butterfly World, LLC, employer for hire of Dennis Watts" as Author of the subject images, and includes a transfer statement of "[b]y written agreement." Upon information and belief, in each case the true author or creator or the subject images listed in VA 1997545, PA 1984636, and VA 2009584 did not transfer ownership to Plaintiff (whether identified as Social Butterfly World LLC, Andrea M. Collier, or otherwise) on or prior to the effective date of those registrations. Upon information and belief, as of the respective effective dates of VA 1997545, PA 1984636, and VA 2009584, Plaintiff had not obtained by contract or any other means the right to claim legal title to the copyrights in the subject images in an application for copyright registration. Further, upon information and belief, Plaintiff did not enter into a valid assignment agreement for the subject images with the true owner of the subject images at any time, and in any case never attempted to enter into a purported assignment agreement covering the subject images until after Plaintiff had obtained its VA 1997545 and PA 1984636 registrations from the U.S. Copyright Office. Therefore, upon information and belief, Plaintiff knowingly made one or more material false statements to and/or fraudulent deposits with the U.S. Copyright Office in order to obtain registrations in the subject images and, in fact, did receive those registrations. To the extent a registration was defective and/or fraudulently obtained, it is ineffectual and bars the instant suit, and each purported claim for relief set forth in it.
57. The subject of the allegedly protected images is unprotectable as copyrighted matter, due to all or some combination of factors bearing on the issues, including without limitation lack of originality, replicating other images, replicating images of government or quasi-government property, replicating images of protected architectural creations of others (e.g., the Grand Canyon Skywalk and related or similar structures). Further, independently, and in the alternative, upon MMMI's information and belief the subject materials are works made for hire and thus are not properly owned by Plaintiff.
58. To the extent plaintiff seeks remedies of any type for conduct that precedes three years before filing of the complaint, the claims are barred by the applicable statute of limitations, 17 U.S.C. § 507(b), and/or the equitable doctrine of laches. MMMI has been prejudiced by plaintiff's lack of diligence in asserting its purported exclusive rights to the subject images, and by acquiescing without objection to the uses complained of.
59. By its conduct, plaintiff has waived, and is estopped from asserting, any purported rights to the subject images by inaction, failure diligently to provide notice of the alleged rights, failure diligently to pursue those rights in the face of known uses, failure to protect its interests against those of GCRC and others, the defective registrations and fraud alleged in paragraph 56 above, without limitation, and other conduct not presently known but which will be asserted by amendment.
60. Plaintiff is barred from relief by its own negligent or other wrongful conduct, or lack of due care, in failing to perfect and preserve its alleged rights in the subject images, failure to assert those rights diligently against other parties, failure to protect its interests against those of GCRC, failure to provide reasonable notice ofits alleged claims to rights, failure to exercise due care to detect and take action against allegedly unauthorized uses, failure to register the alleged copyrights in a timely and diligent fashion, and the defective registrations and fraud alleged in paragraph 56 above, without limitation, among other possible acts or omissions not presently known.
61. Plaintiff's harm, if any, for the conduct alleged in the complaint is due to the acts of third parties not presently named in this action, and for which MMMI has no control or legal responsibility.
62. Plaintiff's actions in asserting, and failing to assert, its alleged rights in the subject images constitute bad faith as the claims and assertions are improperly motivated, for reasons having nothing to do with legitimate assertion of legal or property rights.
63. Statutory damages and/or attorneys' fees under the Copyright Act, as alleged in the complaint under the Copyright Act, are unavailable because of the lack of registration with the Copyright Office of the subject images in a timely fashion, as required by provisions of the Act, including without limitation 17 U.S.C.§ 412 and 17 U.S.C. § 504(c).
64. Plaintiff lacks standing to sue under the Copyright Act as it was not the owner of the subject images at the time of the alleged infringement, nor did Plaintiff obtain a valid and enforceable copyright in the subject images prior to filing this lawsuit.
65. MMMI demands trial by jury on all issues triable by jury as provided by law. WHEREFORE, MMMI respectfully requests the following relief:
1. That plaintiff take nothing by way of the complaint, and that the complaint be dismissed with prejudice;
That MMMI be awarded all remedies available to it by law, under the Copyright Act or otherwise, as a result of the Filing of this action against MM MI;
3. That plaintiff be denied all relief, and any relief, under the complaint, and under each purported claim for relief set forth in it;
4. For costs of suit, including reasonable attorneys' fees as allowed by law; and
5. For any further relief as may be appropriate in the circumstances.
Defendant Mendez Media Marketing, Inc. a California corporation ("MMMI") hereby answers the complaint in this matter and alleges as follows:
1, Answering paragraph 1, the paragraph alleges no factual matter and therefore requires no response. In any case, MMMI denies each and every allegation thereof
2. Answering paragraph 2, the paragraph raises no factual matter but only a legal contention, and therefore requires no response. In any case, MMMI denies each and every allegation of paragraph 2.
3. Answering paragraph 3, MMMI denies each and every allegation thereof.
4. Answering paragraph 4, MMMI denies each and every allegation thereof.
5. Answering paragraph 5, MMMI admits, upon its information and belief, that plaintiff Social Butterfly World, LLC ("SBW") purports to be a Nevada limited liability company operated for some period of time unknown to MMMI, and that Andrea Collier at certain times held herself out to be affiliated with SBW in some way. Except as expressly so admitted, MM MI denies each and every allegation of paragraph 5.
6. Answering paragraph 6, MMMI admits the same.
7. Answering paragraph 7, MMMI denies each and every allegation thereof.
8. Answering paragraph 8, MMM1 admits that at some unknown point SBW, upon MMMI's information and belief, began performing some type of services for Grand Canyon Resort Corporation ("GCRC"), which, according to MMMI's further information and belief, is a tribally chartered corporation owned by the nualapai Indian Tribe. MMMI further admits, upon its information and belief, that some of SBW's services related to GCRC's recreational business. Except as expressly so admitted, MMMI denies each and other allegation of paragraph 8.
9. Answering paragraph 9, MMMI denies the same in their entirety.
10. Answering paragraph 10, MMMI denies the same in their entirety.
11. Answering paragraph 11, MMMI admits, upon its information and belief, that SBW at various times stated it was performing photographic work for projects related to GCRC. Except as expressly so admitted, MMMI denies each and every other allegation of paragraph 11.
12. Answering paragraph 12, MMMI has insufficient information or belief with respect to the accuracy of' the allegations thereof, and therefore denies each and every allegation of paragraph 12.
13. Answering paragraph 13, MMMI has insufficient information or belief upon which to admit or deny the allegations of this paragraph, and therefore denies each and every allegation of paragraph 13.
14. Answering paragraph 14, MMMI admits that GCRC retained MMMI to handle certain aspects of advertising, marketing, and other business needs of GCRC, and that some or all of those activities were beyond the scope of SBW's responsibilities as understood by MMMI based upon information received. Except as expressly so admitted, MMMI denies each and every other allegation of paragraph 14.
15. Answering paragraph 15, MMMI denies each and every allegation of the same.
16. Answering paragraph 16, MMMI denies each and every allegation of the same.
17. Answering paragraph 17, MMMI denies each and every allegation of the same.
18. Answering paragraph 18, MMMI denies each and every allegation of the same.
19. Answering paragraph 19, MMMI denies each and every allegation of the same.
20. Answering paragraph 20, MMMI denies each and every allegation of the same.
21. Answering paragraph 21, MMMI admits that at some point plainti ff claimed to MMMI that MMMI was infringing upon alleged rights in certain images plaintiff claimed to have created. Except as expressly so admitted, MMMI denies each and every allegation of paragraph 21.
22. Answering paragraph 22, MMMI admits that at some point plaintiff informed MMMI that plaintiff purportedly saw advertisements published that contained versions of SBW's claimed images. Except as expressly so admitted, MMM1 denies each and every allegation of paragraph 22.
23. Answering paragraph 23, MMMI denies each and every allegation of the same.
24. Answering paragraph 24, MMMI denies each and every allegation of the same.
25. Answering paragraph 25, MMMI incorporates and restates paragraphs 1 through 24 above as though fully set forth herein.
26. Answering paragraph 26, MMMI denies each and every allegation of the same.
27. Answering paragraph 27, MMMI admits that it has and for some time has had a professional relationship with GCRC. Except as expressly so admitted, MMMI denies each and every other allegation of paragraph 27.
28. Answering paragraph 28, MMM1 denies each and every allegation of the same.
29. Answering paragraph 29, MMMI denies each and every allegation of the same.
30. Answering paragraph 30, MMMI denies each and every allegation of the same.
31. Answering paragraph 31, MMMI has insufficient information or belief upon which to admit or deny the allegations of this paragraph, and upon that basis denies each and every allegation of paragraph 31.
32. Answering paragraph 32, MMMI admits that in a letter dated January 4, 2016, plaintiff, through its stated counsel, claimed that MMMI was violating certain alleged copyrights held by SBW and requested that MMMI cease and desist their use, further making other statements about remedies available to plaintiff for the alleged actions. The referenced letter speaks for itself, and MMMI denies any attempt in paragraph 32 to characterize or paraphrase the document. Except as expressly so admitted, MMMI denies each and every allegation of paragraph 32.
33. Answering paragraph 33, MMMI has no basis upon which to admit or deny plaintiffs information or belief about any subject. MMMI therefore denies each and every other allegation of paragraph 33.
34. Answering paragraph 34, MMMI denies each and every allegation of the same.
35. Answering paragraph 35, MMMI denies each and every allegation of the same.
36. Answering paragraph 36, MMMI denies each and every allegation of the same.
37. Answering paragraph 37, MMMI denies each and every allegation of the same,
38. Answering paragraph 38, MMMI denies each and every allegation of the same.
39. Answering paragraph 39, MMMI incorporates paragraphs 1 through 38 above as though fully set forth herein.
40. Answering paragraph 40, MMMI denies each and every allegation of the same.
41. Answering paragraph 41, MMMI denies each and every allegation of the same.
42. Answering paragraph 42, MMMI denies each and every al legation of the same.
43. Answering paragraph 43, MMMI denies each and every allegation of the same.
44. Answering paragraph 44, MMMI has no basis upon which to admit or deny plaintiff's information or belief about any subject. MMMI therefore denies each and every other allegation of paragraph 44.
45. Answering paragraph 45, MMMI denies each and every allegation of the same.
46. Answering paragraph 46, MMM1 denies each and every allegation of the same.
47. Answering paragraph 47, MMM1 denies each and every allegation of the same.
48. Answering paragraph 48, MMM1 denies each and every allegation of the same.
49. Answering paragraph 49, MMMI denies each and every allegation of the same.
50. Answering the prayer, MMMI denies that plaintiff is entitled to any relief, monetary or otherwise, against MMMI for any conduct at any time.
51. The complaint fails to set forth facts sufficient to state a proper claim for relief against MMMI under any legal theory.
52. Plaintiff consented, expressly or impliedly, to the uses complained of in the claims for relief, and each of them, and therefore is barred form recovering any relief of any nature from MMMI.
53. Plaintiff failed to take reasonable, usual steps to protect its purported "rights" in the subject images by providing notice to other parties of plaintiff's claimed rights. including without limitation the failure to register the images as copyrights until long after most if not all of the alleged "infringements" (if any) occurred.
54. Plaintiffs complaint, and each purported claim for relief set forth in it, is defective and barred for failure to join and indispensable party, specifically GCRC.
55. Plaintiff failed to register the purported protected images with the United States Copyright Office as required by law, or did so belatedly. Plaintiff is therefore barred from prosecuting the instant action and is barred from recovering any relief, or certain types of relief, as specified in the Copyright Act.
Upon MMMI's information and belief. Plaintilf defectively registered the subject images as copyrights with the U.S. Copyright Office, or through the omission ofcertain information. or misinformation, or in some other respect. To the extent the registration was defective, it is ineffectual and bars tthe instent suit, and each purported claim for relief set forth in it.
57. The subject of the allegedly protected images is unprotectable as copyrighted matter, due to all or some combination of factors bearing on the issues, including without limitation lack of originality, replicating other images, replicating images of government or quasi-government property, replicating images of protected architectural creations of others (e.g., the Grand Canyon Skywalk and related or similar structures). Further,
58. To the extent plaintiff seeks remedies of any type for conduct that precedes three years before filing of the complaint, the claims are barred by the applicable statute of limitations, 17 U.S.C. § 507(b), and/or the equitable doctrine of laches. MMMI has been prejudiced by plaintiff's lack of diligence in asserting its purported exclusive rights to the subject images, and by acquiescing without objection to the uses complained of.
59. By its conduct, plaintiff has waived, and is estopped from asserting, any purported rights to the subject images by inaction, failure diligently to provide notice of the alleged rights, Failure diligently to pursue those rights in the face of known uses, failure to protect its interests against those of GCRC and others,
60. Plaintiff is barred from relief by its own negligent or other wrongful conduct, or lack of due care, in failing to perfect and preserve its alleged rights in the subject images, failure to assert those rights diligently against other parties, failure to protect its interests against those of GCRC, failure to provide reasonable notice of its alleged claims to rights, failure to exercise due care to detect and take action against allegedly unauthorized uses, and-failure to register the alleged copyrights in a timely and diligent fashion, and the defective registrations and fraud alleged in paragraph 56 above. without limitation. among other possible acts or omissions not presently known.
61. Plaintiff's harm, if any, for the conduct alleged in the complaint is clue to the acts of third parties not presently named in this action, and for which MMMI has no control or legal responsibility.
62. Plaintiff's actions in asserting, and failing to assert, its alleged rights in the subject images constitute bad faith as the claims and assertions are improperly motivated, for reasons having nothing to do with legitimate assertion of legal or property rights.
63. Statutory damages errand/or attorneys' fees under the Copyright Act, as alleged in the complaint under the Copyright Act, are unavailable because of the lack of registration with the Copyright Office of the subject images in a timely fashion, as required by provisions of the Act, including without limitation 17 U.S.C. 412 and 17 U.S.C. § 504(c).
64.
WHEREFORE, MMMI respectfully requests the following relief:
1. That plaintiff take nothing by way of the complaint, and that the complaint be dismissed with prejudice;
2. That MMMI be awarded all remedies available to it by law, under the Copyright Act or otherwise, as a result of the filing of this action against MMMI;
3. That plaintiff be denied all relief, and any relief, under the complaint, and under each purported claim for relief set forth in it;
4. For costs of suit, including reasonable attorneys' fees as allowed by law; and
5. For any further relief as may be appropriate in the circumstances.
I hereby certify that on this ___ day of February, 2016, a true and correct copy of ANSWER TO COMPLAINT;was served via the United States District Court CM/ECF system on all parties or persons requiring notice.
