Moonbug Entertainment Limited v. Babybus (Fujian) Network Technology Co., Ltd
3:21-cv-06536
N.D. Cal.Jul 20, 2023Background
- Moonbug (plaintiff) asserts copyright infringement of 42 "CoComelon" works against Babybus (defendants); the document is the court's proposed final jury instructions before the charging conference.
- The Court has already determined plaintiffs own valid copyrights in the 42 works and that the character "JJ" is protectable.
- Defendants conceded willful infringement as to seven CoComelon works (identified in a stipulation); the rest are for the jury to decide.
- The Court framed infringement as a two-part inquiry: (1) factual copying (direct or circumstantial via access + similarity) and (2) unlawful appropriation (requiring extrinsic and intrinsic substantial-similarity tests after filtering unprotected elements).
- The Court also instructed on a separate 17 U.S.C. § 512(f) DMCA misrepresentation claim (elements: knowing, material misrepresentation in a counter-notification and resulting harm), including how "knowledge" may be proven.
- Damages instructions cover actual damages (lost profits), defendant profits, statutory damages (ranges for innocent, ordinary, and willful infringement), mitigation defense, and damages for any proved DMCA misrepresentation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of copyrights | Plaintiffs: own valid registrations for 42 works | Defendants: contested some registrations earlier | Court: plaintiffs are owners of valid copyrights in the 42 works (judicially determined) |
| Factual copying (proof) | Plaintiffs: can prove by direct evidence or circumstantial (access + substantial similarity) | Defendants: disputed copying for many works (but conceded access) | Court: jury may find factual copying via direct or circumstantial evidence; access is undisputed here |
| Protectable expression vs unprotected matter | Plaintiffs: many expressive elements are protectable, including character JJ | Defendants: urge filtering out unprotectable elements, scènes à faire, public-domain material | Court: instructed jury to filter unprotected elements and recognize that combinations of unprotectable elements can be protectable if selection/arrangement is original |
| Substantial-similarity test (unlawful appropriation) | Plaintiffs: works are substantially similar in protected expression and overall "total concept and feel" | Defendants: similarity fails either extrinsically (after filtering) or intrinsically (reasonable observer) | Court: requires both extrinsic (objective; three-step identify/filter/compare) and intrinsic (subjective "total concept and feel") tests for each disputed work |
| DMCA §512(f) misrepresentation | Plaintiffs: Babybus knowingly and materially misrepresented non-infringement in counter-notices, causing harm | Defendants: dispute knowledge/materiality and contend good-faith belief may defeat claim | Court: instructed elements: knowing & material misrepresentation; knowledge may be proved by actual knowledge, negligence (should have known), or absence of substantial doubt when acting in good faith |
| Damages & remedies (actual, profits, statutory, willfulness) | Plaintiffs: seek actual damages, disgorgement of defendants' profits, statutory damages (or both) and DMCA damages | Defendants: limit or rebut damages; some willfulness conceded for seven works; assert mitigation defense | Court: detailed instructions—actual damages for infringed works only; defendants' profits recoverable if causally connected; statutory damages range provided; jury to determine willfulness for non-conceded works; mitigation affirmative defense included |
Key Cases Cited
- Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020) (articulates copying vs unlawful appropriation framework and scope-of-protection analysis)
- DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015) (character-protection test and criteria for delineated characters)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality requires independent creation and minimal creativity)
- Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003) (protectability of particular expressive elements and combination analysis)
- Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) (requires filtering out unprotectable elements before similarity comparison)
- Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987) (establishes circumstantial proof of copying via access plus substantial similarity)
- Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994) (discusses extrinsic/intrinsic similarity framework and jury roles)
- Automattic Inc. v. Steiner, 82 F. Supp. 3d 1011 (N.D. Cal. 2015) (permits recovery for costs/time from false DMCA misrepresentations under §512(f))