Gottesman v. Santana
3:16-cv-02902
S.D. Cal.Jul 6, 2017Background
- Plaintiff Eric Gottesman (GMAN) is a professional artist who created original designs for Carlos Santana and others and licensed limited uses of those works to Santana-related entities.
- GMAN filed a 103-page First Amended Complaint asserting federal copyright claims (direct, contributory, vicarious, and inducing infringement) and multiple state-law claims (breach of contract, intentional and negligent misrepresentation, breach of implied covenant, unfair business practices, constructive trust) against numerous Santana-related defendants and third parties.
- Defendants filed multiple Rule 12(b)(6) motions to dismiss and motions to strike challenging sufficiency of pleading, preemption by the Copyright Act, and improper damage requests; GMAN conceded some claims/relief in opposition briefs.
- The court applied Twombly/Iqbal plausibility standards and dismissed or limited claims where the FAC lacked factual detail on contract terms, causation/volitional conduct for infringement, or failed to pursue claims against moving defendants.
- Court dismissed GMAN’s breach of contract claim for Service First and Hall for failure to plead material terms, dates, and specifics; granted dismissal (often with leave to amend) for various copyright and state-law claims against multiple defendants; left some direct-infringement claims intact (e.g., Dorfman-Pacific).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Breach of contract against Service First & Hall | GMAN alleges an oral license/contract, performed, and was not paid | Pleading lacks material terms, formation date, and specific breach facts | Dismissed with leave to amend: complaint fails to plausibly allege contract elements |
| Inducing copyright infringement | GMAN alleges secondary liability theories generally | Defendants: no device/service was distributed to induce infringement; pleading lacks required elements | Claim dismissed with prejudice as GMAN conceded not pursuing inducement against moving defendants |
| Damages under Copyright Act (punitive; business-reputation; attorneys’ fees; statutory vs. profits) | GMAN sought various damages but conceded some in opposition | Defendants argued many of GMAN’s requested remedies are unavailable under the Copyright Act | Court dismissed requests GMAN conceded (punitive, certain state-law fee claims) and allowed election between profits or statutory damages; not improper to plead alternatives |
| Preemption of state-law claims (fraud, misrepresentation, unfair business practices) | GMAN initially asserted these claims | Defendants argued Copyright Act preempts these state claims to extent they rest on rights equivalent to copyright | GMAN conceded he would not pursue state claims against moving defendants; court dismissed those state-law claims with prejudice as conceded |
| Direct infringement against domain registrants / Casa Noble Spirits & many DPC defendants | GMAN pointed to domain registrations and charts showing works appearing on defendants’ sites | Defendants argued mere domain registration or chart entries don’t show volitional/causation conduct required for direct infringement | Court dismissed direct-infringement claims without prejudice for most domain/retailer defendants (insufficient causation pleading); but allowed direct claim to proceed against Dorfman-Pacific based on specific allegations of copying/distribution via eCatalogs and product packaging |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (legal conclusions need not be accepted; plausibility standard for pleadings)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (plausibility pleading standard; disavowed Conley no-set-of-facts language)
- Oasis W. Realty, LLC v. Goldman, 51 Cal. 4th 811 (elements of breach of contract under California law)
- Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788 (contributory/inducement framework in Ninth Circuit)
- Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (inducement elements; causation/volitional conduct discussion)
- Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (inducement liability for distribution with intent to promote infringement)
- A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (direct-infringement prima facie requirements)
- Fox Broadcasting Co. v. Dish Network L.L.C., 747 F.3d 1060 (volitional conduct/causation for direct infringement)
- Schneider v. California Dept. of Corrections, 151 F.3d 1194 (courts generally cannot consider materials outside the complaint on 12(b)(6))
- DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655 (leave to amend normally granted unless amendment would be futile)