Schroeder V Volvo Opposition To MTD

Case 2:20-cv-05127-VAP-PVC Document 21 Filed 08/24/20 Page 1 of 32 Page ID #:386
1 GLUCK LAW FIRM P.C.

Jeffrey S. Gluck (SBN 304555)
2 2125 S. Beverly Drive
Los Angeles, California 90034
3 Telephone: 310.776.7413
4 ERIKSON LAW GROUP

David Alden Erikson (SBN 189838)
5 Antoinette Waller (SBN 152895)
S. Ryan Patterson (SBN 279474)
6 200 North Larchmont Boulevard
Los Angeles, California 90004
7 Telephone: 323.465.3100
Facsimile: 323.465.3177
8
Attorneys for Plaintiffs
9
10 UNITED STATES DISTRICT COURT

11 CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
12
13 JACK SCHROEDER, an individual; Case No. 2:20−cv−05127 VAP (PVCx)

and BRITNI SUMIDA, an individual;
14 Hon. Virginia A. Phillips
Plaintiffs,
15
v. PLAINTIFFS’ OPPOSITION TO
16 DEFENDANT VOLVO CAR USA,
VOLVO GROUP NORTH AMERICA, LLC’S MOTION TO DISMISS
17 LLC, a Delaware limited liability
company; and VOLVO CAR USA
18 LLC, a Delaware limited liability DATE: SEPTEMBER 14, 2020
company. TIME: 2:00 P.M.
19 PLACE: COURTROOM 8A_
Defendants.
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Plaintiffs respectfully submit this Opposition to Defendant Volvo Car USA,
23
LLC’s (“Volvo”) Motion to Dismiss (the “MTD”) their Second Amended Complaint
24
(the “SAC”). Plaintiffs are concurrently filing Objections (the “Objections” or “Obj.”)
25
to Volvo’s Request for Judicial Notice (“RJN”).
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i OPPOSITION TO MOTION TO DISMISS

1 TABLE OF CONTENTS
2
I. INTRODUCTION.......................................................................................... 1
3
II. PLAINTIFFS’ ALLEGATIONS .................................................................... 2
4
A. The operative allegations are very simple. ............................................ 2
5
B. Plaintiffs bring straightforward legal claims. ........................................ 3
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C. Volvo improperly relies on facts outside the complaint. ....................... 3
7
III. LEGAL STANDARD .................................................................................... 5
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A. A complaint need only provide fair notice of a claim. .......................... 5
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B. Affirmative defenses are disfavored at the pleading stage. ................... 5
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IV. SCHROEDER DID NOT GRANT VOLVO A LICENSE. ............................ 6
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A. Volvo’s implausible “sublicense” argument is unsupported—and is
12 indeed refuted by the explicit language of Instagram’s terms as
well as case law. ................................................................................... 6
13
1. The cited contractual language does not effect a license to
14 Volvo. ........................................................................................ 6
15 2. Instagram’s terms explicitly provide that posting does not
grant permission to re-use, much less to use in advertising. ........ 7
16
3. Recent case authority specifically rejects Volvo’s
17 arguments. .................................................................................. 8
18 B. That Schroeder’s posts were “public” does not alter this
conclusion. ........................................................................................... 9
19
C. Tagging did not create a license. ........................................................ 11
20
D. Nor can Volvo rely on the Behance terms to manufacture a license. .. 11
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1. Volvo’s entire licensing argument hinges on an affirmative. .... 12
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V. SUMIDA’S CLAIMS ARE NOT PREEMPTED. ........................................ 13
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A. Sumida’s right of publicity claims are not preempted. ........................ 13
24
B. Sumida’s Lanham Act claims are not preempted because “Dastar
25 preemption” applies only to reverse passing off cases. ....................... 16
26 1. The facts and legal analysis of Dastar show that Sumida’s
Lanham Act claim is not preempted. ........................................ 17
27
2. Passing off violates the Lanham Act even if it
28 simultaneously constitutes copyright infringement. .................. 18
ii OPPOSITION TO MOTION TO DISMISS
VI. SUMIDA PROPERLY PLEADS HER LANHAM ACT CLAIM. ............... 20

1
A. Likelihood of confusion is not properly resolved at the pleading
2 stage. .................................................................................................. 20
3 B. Depicting a plaintiff posing with a product can be enough to create
confusion as to endorsement. .............................................................. 21
4
C. Even models can bring false endorsement claims. .............................. 22
5
D. The confusion was not self-inflicted. .................................................. 22
6
VII. SUMIDA’S PUBLICITY CLAIM SURVIVES VOLVO’S DEFENSES. .... 22
7
A. Posing with a Volvo does not constitute consent to use-in-
8 advertising. ......................................................................................... 22
9 B. Sumida’s image is readily identifiable, and not incidental. ................. 24
10 VIII. SUMIDA IS ENTITLED TO FEES AND PUNITIVE DAMAGES. ........... 25
11 IX. CONCLUSION. ........................................................................................... 25

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1 TABLE OF AUTHORITIES
2 Cases
3
Aagard v. Palomar Builders, Inc.,
4 344 F.Supp.2d 1211 (E.D.Cal. 2004)............................................................ 18
5
Ali v. Playgirl, Inc.,
6 447 F. Supp. 723 (S.D.N.Y. 1978) ............................................................... 23
7
Altera Corp. v. Clear Logic, Inc.,
8 424 F.3d 1079 (9th Cir. 2005) ...................................................................... 13
9
Antidote Int’l Films, Inc. v. Bloomsbury Pub., PLC,
10 467 F. Supp. 2d 394 (S.D.N.Y. 2006)........................................................... 17
11
ASARCO, LLC v. Union Pacific R. Co.,
12 765 F.3d 999 (9th Cir. 2014) .......................................................................... 5
13
Bach v. Forever Living Prods. U.S., Inc.,
14 473 F. Supp. 2d 1110 (W.D. Wash. 2007) .................................................... 18
15
Bell Atlantic Corp. v. Twombly,
16 550 U.S. 544 (2007) ....................................................................................... 5
17
Bi-Rite Enterprises, Inc. v. Bruce Miner Co.,
18 757 F.2d 440 (1st Cir. 1985)......................................................................... 23
19
Bondar v. LASplash Cosmetics,
20 2012 U.S. Dist. LEXIS 175873, 2012 WL 6150859 (S.D.N.Y. 2012) .......... 22
21
Cairns v. Franklin Mint Co.,
22 107 F. Supp. 2d 1212 (C.D. Cal. 2000) ........................................................ 21
23
Church & Dwight Co., Inc. v. Mayer Laboratories, Inc.,
24 2011 U.S. Dist. LEXIS 35969, 2011 WL 1225912 (N.D. Cal., 2011) ........... 21
25
Craigslist Inc. v. 3Taps Inc.,
26 942 F. Supp. 2d 962 (N.D. Cal. 2013) .......................................................... 18
27
Dastar Corp. v. Twentieth Century Fox Film Corp.,
28 539 U.S. 23 (2003) ................................................................................. 16, 17
iv OPPOSITION TO MOTION TO DISMISS
1
de Csepel v. Republic of Hungary,
2 714 F.3d 591 (D.C. Cir. 2013) ........................................................................ 5
3
Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc.,
4 109 F.3d 1394 (9th Cir. 1997) ...................................................................... 18
5
Eick v. Perk Dog Food Co.,
6 347 Ill. App. 293, 106 N.E.2d 742 (1952) .................................................... 23
7
Ettore v. Philco Television Broadcasting Corp.,
8 229 F.2d 481 (3d Cir. 1956) ......................................................................... 23
9
Facenda v. N.F.L. Films, Inc.,
10 542 F.3d 1007 (3d Cir. 2008) ....................................................................... 21
11
Field v. Google Inc.,
12 412 F. Supp. 2d 1106 (D. Nev. 2006) ........................................................... 10
13
Fleet v. CBS Inc.,
14 50 Cal. App. 4th 1911 (1996) ....................................................................... 14
15
Gray v. Evercore Restructuring L.L.C.,
16 544 F3d 320 (1st Cir. 2008)............................................................................ 5
17
Henley v. Devore,
18 2009 U.S. Dist. LEXIS 141037, 2009 WL 10697982 (C.D. Cal. 2009) ........ 19
19
JL Bev. Co., LLC v. Jim Beam Brands Co.,
20 828 F.3d 1098 (9th Cir. 2016) ...................................................................... 20
21
Jones v. Corbis Corp.,
22 815 F.Supp.2d 1108 (C.D. Cal. 2011) .......................................................... 23
23
Jules Jordan Video, Inc. v. 144942 Canada Inc.,
24 617 F.3d 1146 (9th Cir. 2010) ...................................................................... 14
25
Maloney v. T3Media, Inc.,
26 853 F.3d 1004 (9th Cir. 2017) ........................................................................ 2
27
McGucken v. Newsweek LLC,
28 2020 U.S. Dist. LEXIS 96126, 2020 WL 2836427 (S.D.N.Y. 2020) .... 8, 9, 13
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1
Midler v. Ford Motor Co.,
2 849 F.2d 460 (9th Cir. 1988) ........................................................................ 21
3
Newcombe v. Adolf Coors Co.,
4 157 F.3d 686 (9th Cir. 1998) ........................................................................ 25
5
Nintendo of Am. v. Dragon Pac. Int’l,
6 40 F.3d 1007 (9th Cir. 1994) ........................................................................ 18
7
OTR Wheel Eng'g, Inc. v. West Worldwide Servs.,
8 897 F.3d 1008 (9th Cir. 2018) ...................................................................... 16
9
Pellegrino v. Epic Games, Inc.,
10 2020 U.S.Dist.LEXIS 55623, 2020 WL 1531867 (E.D.Pa. 2020)................. 19
11
Rearden LLC v. Rearden Commerce, Inc.,
12 683 F.3d 1190 (9th Cir. 2012) ...................................................................... 20
13
Sinclair v. Ziff Davis, LLC,
14 2020 U.S. Dist. LEXIS 110627, 2020 WL 3450136 (S.D.N.Y. 2020) ...... 9, 13
15
Stanislaus Custodial Deputy Sheriffs’ Ass’n v. Deputy Sheriff’s Ass’n of
16 Stanislaus County, 2010 WL 2218813 (E.D. Cal. 2010) ............................... 20
17
Thane Int’l, Inc. v. Trek Bicycle Corp.,
18 305 F.3d 894 (9th Cir.2002) ......................................................................... 20
19
Upper Deck Co. v. Panini Am., Inc.,
20 2020 U.S. Dist. LEXIS 114075, 2020 WL 3498175 (S.D. Cal. 2020) .......... 25
21
Visual Changes Skin Care Int’l, Inc. v. Neways, Inc.,
22 2008 WL 4723603 (E.D. Cal. 2008) ............................................................. 20
23
Waits v. Frito-Lay, Inc.,
24 978 F.2d 1093 (9th Cir. 1992) ...................................................................... 21
25
Wendt v. Host Int'l, Inc.,
26 125 F.3d 806 (9th Cir. 1997) ........................................................................ 21
27
White v. Samsung Elecs. Am., Inc.
28 971 F.2d 1395 (9th Cir. 1992) ...................................................................... 21
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1
Worldwide Church of God v. Philadelphia Church of God, Inc.,
2 227 F.3d 1110 (9th Cir. 2000) ...................................................................... 12
3 Statutes
4
California Code Section § 3344 .............................................................................. 25
5
Other Authorities
6
7 McCarthy Thomas, The Rights of Publicity and Privacy (“McCarthy”) §§ 10:24,

10:27 (2d ed. 1017) ...................................................................................... 23
8
Rules
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10 Fed. R. Civ. P. 8(a)(2) .............................................................................................. 5
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1 I. INTRODUCTION
2 Volvo’s argument that any public Instagram post can be freely appropriated,
3 even for use in advertising, is absurd. While it’s just one of many asserted defenses, it
4 shows that Volvo does not feel constrained by facts or law. Indeed, each of Volvo’s
5 convoluted challenges is as specious as its position on Instagram posts.
6 Accordingly, Volvo’s only conceivable goal in filing its scattershot motion is to

7 create work and legal fees—and to demonstrate what Plaintiffs are in for if they
8 continue to make a “mountain out of a molehill.” In digging deep to find grounds to
9 challenge each of Plaintiff’s claims, Volvo must rely on (a) “facts” far outside the
10 pleadings (and often contradictory to the pleadings), (b) absolutely tortured legal
11 reasoning and textual analysis, and (c) outright mischaracterizations. Indeed, Volvo’s
12 motion would fail even on summary judgment because many of Volvo’s “facts” are
13 disputed, and because even those facts do not establish the asserted defenses.
14 While Volvo may have succeeded in making Plaintiffs (and the Court) toil to
15 address its intricately fallacious and fact-specific arguments, each defense fails:
16 • Volvo’s argument that all public Instagram posts may be freely appropriated is
17 contradicted by the plain language of the site’s terms, as confirmed by recent
18 cases. Volvo gives the contrary impression by cherry-picking snippets of text,
19 and even deliberately using ellipses to omit key language that proves it wrong.
20 • Volvo claims to believe that the Copyright Act preempts any claim in which the
21 alleged wrong could also constitute copyright infringement. This facile view of
22 preemption could not be more incorrect, as fully explained in recent cases.
23 • Volvo’s argument that Sumida has not adequately pled false endorsement
24 ignores that the “likelihood of confusion” analysis is fact specific and
25 inappropriate for resolution at the pleading stage—and there is no categorical
26 rule, as Volvo suggests, that mere “posing” can never suggest endorsement.
27 • Volvo’s argument that Sumida’s right of publicity claims fail because she
28 consented to Volvo’s use depends on a number of “facts” asserted by Volvo
1 OPPOSITION TO MOTION TO DISMISS

1 without justification, regarding Sumida’s supposed nefarious schemes,

2 authorizations, and affiliations, including (a) that she was in cahoots with a
3 company called Porch House Pictures, which Volvo asserts committed serious
4 misconduct, (b) that Volvo’s use of the Photos was accomplished merely by
5 using social media sharing tools, and (c) that by tagging Volvo, Schroeder
6 displayed his posts to all Volvo followers, including other carmakers.
7 Further, Volvo ignores there is anything special about use of another’s
8 intellectual property in advertising. Volvo never acknowledges such use—and
9 inexplicably even denies that that its campaign constitutes advertising. Volvo never
10 even concedes that the distinction between advertising and non-advertising use is
11 critical, which of course it is. For example, while copyright preemption of publicity
12 claims is generally an extraordinarily complex issue, the rule becomes quite simple
13 when the challenged use appears in advertising: In such cases, the Copyright Act does
14 not preempt. Maloney v. T3Media, Inc., 853 F.3d 1004, 1007 (9th Cir.
15 2017)(“Maloney”). Similarly, Sumida cannot possibly be said to have impliedly
16 consented or acquiesced to the commercial exploitation of her likeness because her
17 conduct only involved non-advertising uses.
18 Below, Plaintiffs tick through and debunk each of Volvo’s defenses. Because
19 most are as technical as they are misguided, the exercise is by design more difficult
20 than it should be.
21 II. PLAINTIFFS’ ALLEGATIONS

22
23 Schroeder is a photographer, and Sumida a model. [SAC ¶ 15.] To practice

24 their crafts and build their portfolios, the two friends created a number of stunning
25 photos of Sumida posing with a Volvo. [Id. ¶¶ 16, 17.] Schroeder posted some of the
26 best photos to social media and his personal web site. [Id. ¶ 18.] Soon after, Volvo
27 expressed its admiration for the photos, via an Instagram comment, and asked to
28 license them. [Id.] Because the offer did not include any payment, Schroeder
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1 declined—but steered Volvo to his personal web page in the hopes they would
2 purchase rights to the photographs. [Id. ¶ 19] Instead, Volvo simply used certain of
3 the images without permission (the “Photos”) in a global Instagram “Story”
4 advertisement and a board on its verified Pinterest page—both of which encouraged
5 viewers to buy a car by clicking directly through to a dedicated website selling the
6 vehicle. [Id. ¶¶ 20, 21.]
8 Schroeder brings the first cause of action: a straightforward copyright claim.

9 [SAC ¶¶ 41-47.] Sumida brings the remaining five causes of action—each for using
10 her likeness/persona without permission: straightforward common law and statutory
11 “right of publicity” claims under California law, an analogous Lanham Act false
12 endorsement claim, as well as statutory and common law unfair competition claims
13 which piggy-back on the other claims. [SAC ¶¶ 48-80.]
14
15 Rather than address facts that were actually alleged in Plaintiffs’ complaint,
16 Volvo treats its Motion as an opportunity to tell its side of the story. Volvo goes well
17 beyond Plaintiff’s simple allegations. While some of its extrinsic facts are the subject
18 of (often questionable) requests for judicial notice, many are not. Some are included
19 without even an offered justification or citation to any record. Worse, some are
20 offered as paraphrases of Plaintiffs’ allegations, but are in fact mischaracterizations.
21 For example, Volvo devotes much of its “Summary of Relevant Facts” to airing
22 grievances about Plaintiffs’ “true, commercial agenda” in taking and posting the
23 Photos in the first place. [MTD 2:13.] While Plaintiffs allege only that they shot and
24 posted the Photos to enhance their portfolios, Volvo asserts (without basis) that
25 Plaintiffs orchestrated a grand and nefarious scheme:
26 First, they wanted to get Volvo’s attention; second, they wanted to reach
Volvo’s vast global social media base (which includes other major
27 automotive brands); third, they wanted to create the impression among
Volvo’s (a) social media followers, (b) current and prospective customers,
28 and (c) competitors that they had been hired by Volvo…; and fourth, they
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hoped their stunt would persuade Volvo and/or its competitors to hire them
1 on future ad campaigns. [MTD 2:10-19.]
2 Despite Volvo’s claim that these “facts” are revealed by “his other allegations” [MTD
3 2:10-13] none of these facts are found in the SAC.
4 Volvo even supplies a co-conspirator. In the SAC, Plaintiffs mention a “small

5 mom and pop production company” called Porch House Pictures, which Schroeder
6 had worked with in the past. [SAC ¶ 27.] The only point of the allegation was to
7 describe a rather ruthless intimidation campaign that Volvo had visited upon the
8 company. [Id. ¶ 27-28.] From there, Volvo offers internet pages that it asserts show
9 bad conduct by Porch House, and somehow imputes such bad conduct to Sumida.
10 [MTD 13:21-22.] Such conjecture obviously has no place in a motion to dismiss.
11 Volvo is not above mischaracterizing the SAC. For example, Volvo makes
12 multiple references to Plaintiffs’ creation and publication of a “social campaign for
13 Volvo Cars,” using quotation marks to deceptively imply that Plaintiff’s used this
14 phrase or acknowledge such an endeavor. [Id. 2:8-10.] They do not: the quoted
15 phrase does not appear in the SAC. Rather, Volvo has taken this phrase from a third
16 party website not referenced in the SAC. [See, MTD 1:24-16; 2:19, fn. 3; 3:20-23, fn.
17 4; 14:2-11, fns. 21, 22; 20:1-6.]
18 Further, Volvo’s “license” defense relies on asserted facts not mentioned in, or
19 inferable from, the SAC. For example, Volvo’s arguments depend on factual
20 assertions that (1) it obtained Schroeder’s images from a web site called “Behance,”
21 which is not mentioned in the SAC [MTD 7:4-8]; (2) that the alleged infringement
22 was actually just “re-sharing” the images to an Instagram Story and Volvo’s Pinterest
23 page [Id.]; (3) the allegedly infringing use was accomplished “simply [by using] basic
24 social media sharing/publishing platform features” [MTD 1:11-15]; and (4) that
25 “Schroeder and others had already published (and tagged Volvo in) the subject
26 photographs on their own public social media accounts.” [Id.]
27 But Plaintiff alleges none of these things. [See, SAC ¶¶ 20-22.] Should these
28 factual issues come up again at the summary judgement stage, Plaintiffs will shoot
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1 them down. And below, Plaintiff establishes that even if these asserted facts were true,
2 they would provide no defense. But for the moment, it is enough to point out that
3 these “facts” are outside the complaint.
4 Volvo also smuggles in the following “facts,” without justification:

5 • That Volvo removed the photos from Pinterest. [MTD p. 8, fn. 15.]
6 • That Schroeder has not filed a DMCA takedown notice with Pinterest. [Id.]
7 • That Volvo “merely copied images from Schroeder’s public Instagram account
8 and/or Schroeder’s public Behance account.” [MTD p. 12, fn. 19.]
9 • That a Porch House “video crew” was at the shoot. [See MTD 2:3-6.]
10 III. LEGAL STANDARD
11
12 A complaint must contain “a short and plain statement of the claim showing
13 that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). The complaint need only
14 give the defendant fair notice of what the claim is, and the grounds upon which it
15 rests. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 554-55 (2007).
16
17 To grant a Rule 12(b)(6) motion on the basis of an affirmative defense, the facts
18 establishing that defense must (i) be definitively ascertainable from the complaint and
19 other allowable sources of information, and (ii) “suffice to establish the affirmative
20 defense with certitude.” Gray v. Evercore Restructuring L.L.C., 544 F3d 320, 324 (1st
21 Cir. 2008). The Ninth Circuit explains that
22 Dismissal under Rule 12(b)(6) on the basis of an affirmative defense is

proper only if the defendant shows some obvious bar to securing relief on the
23 face of the complaint. If, from the allegations of the complaint as well as any
judicially noticeable materials, an asserted defense raises disputed issues of
24 fact, dismissal under Rule 12(b)(6) is improper. [ASARCO, LLC v. Union
Pacific R. Co., 765 F.3d 999, 1004 (9th Cir. 2014) (citations omitted).]
25
Dismissal is improper “as long as a plaintiff’s potential rejoinder to the affirmative
26
defense [is not] foreclosed by the allegations in the complaint.” de Csepel v. Republic
27
of Hungary, 714 F.3d 591, 608 (D.C. Cir. 2013).
28
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1 IV. SCHROEDER DID NOT GRANT VOLVO A LICENSE.

2 As its sole challenge to Schroeder’s copyright claim, Volvo asserts the
3 affirmative defense that it enjoyed a license to use Schroeder’s Photos in advertising.
4 Volvo does not deny that it used the Photos after Schroeder expressly declined its
5 request for a license—but it nevertheless finds permission deep in Instagram’s (and
6 another site’s) terms and conditions. [MTD at 10-11.] More specifically, Volvo offers
7 a series of convoluted arguments, based on snippets of web site terms and help pages,
8 for the bold conclusion that by posting publicly on Instagram, a user consents to any
9 corporation using his content in any way, including in advertising. [MTD at 11:18-22;
10 12:5-10.] The argument fails because it finds no textual support—and is indeed
11 contradicted by plain contractual terms Volvo fails to mention; and because similar
12 though less ambitious arguments have been rejected by every court to consider them.
13 This is unsurprising given that Volvo’s theory, if it were the law, would make
14 Instagram’s billions of users’ posts fair game for advertisers.
15
16
17 Volvo’s marquee argument is that pursuant to Instagram’s terms, the act of

18 posting an image automatically grants a broad license to Instagram, which license
19 Instagram then automatically sublicenses to the world at large (allowing anyone to
20 appropriate and use the post in any manner). [MTD at 9:17-23, 10:8-13 , citing RJN,
21 Exh. 13; 11:18-22; 12:5-10.]
22
23 Volvo makes no attempt to judicially notice the entirety of Instagram’s

24 contractual terms.1 Indeed, reviewing the contractual bits that Volvo does seek notice
25
1
Volvo submits a confusing amalgam of what Volvo contends are excerpts from various versions of
26
Instagram’s terms and conditions. [Volvo RJN, Exhibits 5-15.] Volvo has not established that any
27 certain version of the terms and conditions it cites existed at the time Schroeder signed up for
Instagram, or at the time Schroeder posted the Photos to Instagram, or even that Schroeder agreed to
28 any particular version of such terms and conditions.
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1 of reveals that quite a bit is missing.2 Volvo’s strategy is to cherry-pick out-of-context
2 language to build an argument for its unlikely conclusion that any company can freely
3 use anything publicly posted on Instagram. [MTD at 9:17-23; 11:18-22; 12:5-10.]
4 But even the cherry-picked language provides Volvo with no support. The
5 sentence cited by Volvo as grounding its license theory, grants Instagram a license to
6 a posted photo. [MTD 10:8-12.] Obviously, Instagram needs such a license to operate
7 its business. The granting language is broad and includes “sublicensable” among a
8 long list of the license’s generous attributes. [Id.] But that is as a far as the language
9 goes. Volvo offers nothing further—because there is nothing further—to suggest
10 that Instagram DID in fact sublicense any rights to it or anyone, much less rights
11 to use posts in advertising. Volvo tellingly fails to quote the opening sentence of the
12 paragraph which states, in bold, “we do not claim ownership of your content, but you
13 grant us a license to use it.” And in the section immediately preceding the language
14 providing Instagram with a license to host the photos, Instagram warns its users, “you
15 can’t do anything that violates someone else’s rights, including intellectual property.”
16 [RJN, Exh. 13 at ECF 46.]
17
18
19 The clear language of other parts of Instagram’s terms show that Volvo’s
20 argument is wrong. Whatever limited rights Instagram may retain with respect to user
21 content, Instagram’s Terms of Use state that “[t]his agreement does not give rights to
22 any third parties.” (Terms, Our Agreement and What Happens if We Disagree, Who
23 Has Rights Under this Agreement.)(emphasis added). [RJN, Exh. 13 at ECF 47.] In
24 addition, Instagram users retain “the right to grant permission to use your copyrighted
25 Clicking through Volvo’s links reveals that at least four sets of policies govern Instagram’s service:
2
the “Platform Policy,” “Privacy Policy,” “Terms of Use”, and “Community Guidelines.” See
26
Instagram Platform Policy, https://help.instagram.com/325135857663734. Instagram Terms of Use,
27 https://help.instagram.com/478745558852511. Instagram Community Use,
https://help.instagram.com/477434105621119/. Volvo does not seek judicial notice of all, or even
28 most, of these materials.
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1 work, as well as the right to prevent other people from using your copyrighted work
2 without permission.”3 These provisions alone foreclose Volvo’s argument.
3 Also, the site forbids using content in a way that “violates any rights of any
4 person,” including “intellectual property rights, rights of privacy, or rights of
5 personality.” 4 These terms further foreclose Volvo’s claims that Instagram intends to
6 and does grant Volvo an unfettered right to use any Instagram user’s photographs
7 publicly posted to the website.
9 Two recent cases make clear that Instagram does not provide any third-party
10 sublicensing rights authorizing Volvo to use images posted to Instagram. In both
11 cases, the defendants advanced arguments like Volvo’s, claiming that Instagram’s
12 terms created a sublicense to use Instagram content. 5 But unlike Volvo, those
13 defendants did not use the content for commercial purposes and did not directly copy
14 the plaintiffs’ work.
15 In McGucken v. Newsweek LLC, 2020 U.S. Dist. LEXIS 96126, 2020 WL

16 2836427 (S.D.N.Y. 2020), Newsweek embedded plaintiff’s Instagram post into an
17 article about a lake in Death Valley. The plaintiff sued for infringement and
18 Newsweek moved to dismiss arguing that the Instagram terms granted it a sublicense
19
3
See https://help.instagram.com/126382350847838?helpref=page_content, to which one may
20 navigate from Volvo’s links.
4
21 Platform Policy, General Terms, https://help.instagram.com/325135857663734, to which one may
navigate from Volvo’s links.
22 5
Defendants’ arguments in these cases were a good deal less surprising than Volvo’s. Unlike Volvo,
23 those defendants did not directly copy and use the plaintiff’s photographs. Instead they used a
technical process called “embedding” to incorporate the plaintiff’s work into their websites. As
24 explained by the Sinclair Court, “[e]mbedding allows a website coder to incorporate content, such as
an image, that is located on a third-party's server, into the coder's website. When an individual visits
25 a website that includes an “embed code,” the user's internet browser is directed to retrieve the
embedded content from the third-party server and display it on the website. As a result of this
26
process, the user sees the embedded content on the website, even though the content is actually
27 hosted on a third-party's server, rather than on the server that hosts the website.” McGucken v.
Newsweek LLC, 2020 U.S. Dist. LEXIS 96126, *3 (S.D.N.Y. 2020) quoting Sinclair v Ziff Davis,
28 2020 U.S. Dist. LEXIS 64319, at *3, 2020 WL 1847841 at *1 (S.D.N.Y. 2020).
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1 to embed the photo and that the use was fair use. Id. The Court denied the motion to
2 dismiss determining that although Instagram’s terms of service may “foresee the
3 possibility” of news agencies using web embeds to share content, the terms do not
4 “expressly grant[] a sublicense to those who embed publicly posted content”; that
5 there was no evidence of a sublicense between Instagram and Newsweek; and that
6 there was no evidence of a possible implied license. McGucken v. Newsweek LLC,
7 2020 U.S. Dist. LEXIS 96126, at *11-12, 2020 WL 2836427 (S.D.N.Y. 2020)
8 (“McGucken”).
9 In Sinclair v. Ziff Davis, LLC, entertainment platform Mashable posted a story

10 about female photographers that embedded a photo from the plaintiff’s Instagram
11 post. The plaintiff, a professional photographer, claimed Mashable violated her
12 copyright. Mashable argued that Instagram’s terms granted Mashable a sublicense to
13 embed the photo in its online article. Although the Court initially granted Mashable’s
14 motion to dismiss, on reconsideration the Court ruled that “the pleadings contain
15 insufficient evidence to find that Instagram granted Mashable a sublicense to embed
16 Plaintiff's Photograph on its website.” Sinclair v. Ziff Davis, LLC, 2020 U.S. Dist.
17 LEXIS 110627, at *1, 2020 WL 3450136 (S.D.N.Y. 2020).6
18
19 Next, Volvo argues that because Schroeder made his Instagram account public
20 (as do the vast majority of users), he automatically “granted Volvo and other
21 Instagram users a license to re-share [the Photos] and all the other content Schroeder
22 posts on his Instagram page.” [MTD, ECF 20:20-22].
23 But as noted above, this argument conflicts with Instagram’s terms which hold
24 that no user grants rights to a third party by posting on Instagram. Volvo’s argument
25 In response to the defendants’ arguments in these two cases, Instagram itself disavowed the theory
6
Volvo puts forth here. Directly contradicting Volvo’s position, in June 2020, Instagram confirmed
26
that it does not allow third parties to appropriate user content: “Our platform policies require third
27 parties to have the necessary rights from applicable rights holders. This includes ensuring they have
a license to share this content, if a license is required by law.” See https://arstechnica.com/tech-
28 policy/2020/06/instagram-just-threw-users-of-its-embedding-api-under-the-bus/.
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1 also conflicts with the requirement that a license may not be granted in secret and
2 without the explicit consent of the grantor. Gardner, 279 F.3d at 781.
3 Most noteworthy perhaps is that Volvo misrepresents Instagram’s policies.

4 Claiming to quote from what Volvo states are screenshots of excerpts from
5 Instagram’s “Privacy Policy” from 2018 and 2019 (RJN Exh. 14), Volvo states
6 Instagram’s terms provide:
7 (“. . . other Users may search for, see, use, or share any of your User Content
that you make publicly available through the Service” . . . “Once you have
8 shared User Content or made it public, that User Content may be re-shared
by others.”) [MTD, ECF 20:10-12.]
9
Volvo’s ellipses delete key information. Review of Volvo’s exhibit reveals that
10
the full sentence Volvo is quoting reads:
11
By using our Service you understand and agree that we are providing a
12 platform for you to post content, including photos, comments and other
materials (“User Content”), to the Service and to share User Content
13 publicly. This means other Users may search for, see, use, or share any of
your User Content that you make publicly available through the Service,
14 consistent with the terms and conditions of the Privacy Policy and our
Terms of Use (which can be found at: http://Instagram.com/legal/terms).
15 [RJN Exh. 14 at 55 (emphasis added).]
16 The very language Volvo purports to quote, explicitly limits any use of
17 Instagram User Content to non-infringing uses as set out in the remainder of
18 Instagram’s terms. That Volvo hides this limitation is sufficient reason to discard
19 Volvo’s argument.
20 To support its argument that Instagram’s terms relating to public posts confers a
21 license, Volvo cites a single case, Field v. Google Inc., 412 F. Supp. 2d 1106, 1109,
22 1116 (D. Nev. 2006). But Field was a summary judgment case. Id. In determining
23 whether a disputed license existed, the court analyzed the parties’ deposition
24 testimony and expert opinions and probed the parties’ intentions and interactions. Id.
25 In determining that an implied license was granted in that instance, the Field court
26 credited expert testimony that the ability to disable the copying at issue was “a highly
27 publicized and well-known industry standard.” Id. at 1116. Hence, the court
28 concluded that the plaintiff “made a conscious decision to permit” the use. Id.
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2 Volvo also argues that by tagging Volvo in his Instagram pictures, Schroeder
3 effectively distributed the Photos to Volvo and every Instagram user who follows
4 Volvo and therefore gave Volvo “an implied non-exclusive license” to share the
5 Photos. [MTD at 13-14.]7 First, Volvo misstates the consequences of tagging another
6 Instagram user. On fist reading, it may appear that Volvo is asserting that tagging a
7 user distributes the post to that user’s followers (i.e. that the post ends up in the
8 follower’s feeds). [MTD 2:16-18.] But Volvo does not and cannot represent as much.
9 Indeed, if tagging worked this way, many would tag the Dalai Lama or Donald Trump
10 in posts of their cat, in order to easily reach a wide audience.
11 Second, Volvo’s argument depends on imputing the actions of a third party,

12 Porch House, to Schroeder under an agency theory. [MTD 13:21-22.] Again, such a
13 relationship was not alleged. Volvo also asserts that Porch House engaged in various
14 illegal conduct, and that Schroeder authorized it—which of course also was not
15 alleged. [Id.]
16 Most important, like Volvo’s other arguments, this argument fails as it conflicts
17 with Instagram’s stated terms—Instagram users retain their intellectual property
18 rights, including the right to prevent other people from using their copyrighted work
19 without permission. Volvo’s argument also fails because it lacked the explicit consent
20 necessary for an implied license. Gardner, 279 F.3d at 781. And finally, the argument
21 fails because, as Volvo points out twice, the issue of an implied license requires
22 consideration of the “totality of circumstances,” which renders the issue inappropriate
23 for a 12(b)(6) motion.
24
25 Volvo also argues that the terms of the website “Behance” create a license
26 7
Volvo also contends that Schroeder gave permission to third party Porch House to post the Photos
27 and tag Volvo. [MTD ECF 22:23-24.] No such allegation is made in the Complaint and no evidence
supports Volvo’s supposition. Nor would a license granted to one party somehow create a license in
28 favor of a different party.
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1 allowing it to use Schroeder’s photos in advertising. Specifically, Volvo argues that
2 Behance’s terms provide that by posting on the site, a user consents to other users
3 sharing such post on Pinterest. [MTD 12:13-17.] One problem with this argument is
4 that Schroder never mentions Behance in the SAC. Another problem is that Volvo
5 states that some but not all of the subject photos were posted on Behance, so this
6 argument could not defeat the entire cause of action.
7 But even ignoring these fatal issues, and even if the terms could create a license
8 to use the images in advertising, Volvo’s argument fails because its Request for
9 Judicial Notice reflects that Schroeder opted to make his Behance posts unavailable
10 for commercial use. The same page that Volvo cites for the proposition that Schroeder
11 granted all other Behance users an unlimited license to share his work also states that
12 users can “limit the scope of use and access and other user’s access and use of your
13 content.” As explained at https://help.behance.net/hc/en-us/articles/204485044-Guide-
14 Copyright-And-Posting-Content-On-Behance, Behance allows its users to condition
15 the use of their work on attribution, prohibit users from creating derivative works, and
16 even prohibit the use of their work for a commercial purpose. If the Court were to
17 somehow accept Exhibit 4 to Volvo’s RJN as true, it will note that Schroeder in fact
18 applied these restrictions to his photographs. This is shown by the crossed-out dollar
19 sign on page 11 of the exhibit. The symbol means that Schroeder opted to prohibit use
20 of his photos in advertising.
21
22 Citing Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d
23 1110, 1114 (9th Cir. 2000), Volvo argues, “the existence of a license creates an
24 affirmative defense to a claim of copyright infringement.” [MTD, at ECF 18.] While
25 that may be a true statement in general terms, the proposition does not help Volvo
26 here. Whether a license exists is a question to be decided by the trier of fact based on
27 pleading and proof which Volvo, as the party asserting the defense, bears the burden
28 of establishing. Id. at 1114-1115.

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1 The conflicting terms of use proffered by Volvo are uncertain at best. As noted,
2 Instagram denies that its terms of use allow third-party appropriation of users’
3 material. When, as here, the alleged governing contracts contain any ambiguity or are
4 susceptible to more than one interpretation, the existence of a license may not be
5 determined on a motion to dismiss. See McGucken, 2020 WL 2836427, at *4–5
6 (holding Instagram’s web embeds sharing policies “insufficiently clear” to warrant
7 dismissal on motion to dismiss); Sinclair, 2020 U.S. Dist. LEXIS 110627 (same).
8 V. SUMIDA’S CLAIMS ARE NOT PREEMPTED.

9 Section 301 of the Copyright Act provides that other legal claims, however
10 labelled, are preempted if they seek to vindicate rights equivalent to copyright. See
11 Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1089 (9th Cir. 2005). After
12 accurately laying out black letter law [MTD 14:13-15:7], Volvo applies a facile and
13 misguided version of copyright preemption in which a single act cannot
14 simultaneously constitute copyright infringement and some other wrong. Common
15 sense and unambiguous case law show that Volvo’s conception is flat wrong.
16
17 Volvo appears to begin with the bold assertion that preemption applies to all
18 “misappropriation” 8 claims that are like Sumida’s. [MTD, 15:8-24 (“the same state
19 law claims asserted here by Sumida are preempted under the Copyright Act”).] The
20 problem is that Volvo does not go on to explain what it is about Sumida’s claims that
21 results in preemption. The closest Volvo gets to such as explanation is its assertion
22 that Sumida’s publicity claims are like those at issue in the Fleet and Jules Jordan
23 cases, where preemption was found. In discussing these cases, Volvo settles on its
24 version of a rule: a claim is preempted if its “gravamen” is a wrong that also
25
Volvo confusingly refers to all Sumida’s state law claims as “misappropriation.” But because her
8
26
unfair competition claims piggyback on her Lanham Act claim, it makes more sense to treat these
27 claims separately. For this reason, Sumida treats in this section her fifth claim for violation of her
statutory right of publicity and her sixth claim for violation of her common law right of publicity—
28 and refers to these claims as her “publicity” claims.
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1 constitutes copyright infringement. [MTD 16:28-17:4 (asserting preemption because
2 “the gravamen of Ms. Sumida’s ‘right of publicity’ claims is that Volvo redistributed
3 copyrighted photographs depicting her image without her permission.”).]
4 But Fleet and Jules Jordan state no such rule, and do not use the word
5 “gravamen” or anything like it. See Fleet v. CBS Inc., 50 Cal. App. 4th 1911 (1996)
6 and Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010).
7 Worse, Volvo ignores the most recent and controlling Ninth Circuit case addressing
8 copyright preemption of publicity claims—which not only provides a simple rule, but
9 also explains and harmonizes all prior cases including Fleet and Jules Jordan. That
10 dispositive case is Maloney v. T3Media, Inc., 853 F.3d 1004, 1007 (9th Cir.
11 2017)(“Maloney”).
12 Maloney announces a simple rule for determining whether a right of publicity

13 claim, involving distribution of copyrightable material, is preempted by the Copyright
14 Act. Such claims are generally preempted EXCEPT when they involve
15 merchandising or advertising. Maloney, 853 F.3d at 1011 (“we conclude that a
16 publicity-right claim is not preempted when it targets non-consensual use of one's
17 name or likeness on merchandise or in advertising”). Not only does Volvo ignore this
18 governing rule, it nowhere mentions that the commercial nature of a defendant’s use is
19 even a material consideration—even though the Ninth Circuit has clearly explained
20 that this was the critical distinction in all cases including Fleet and Jules Jordan. Id. at
21 1016 (distinguishing claims based on the use of a plaintiff’s image on merchandising
22 or advertising from the preempted claims in Fleet and Jules Jordan that were based on
23 the distribution of a copyrighted work for personal use).
24 Maloney also offers a simple rationale for the rule. A publicity claim that does
25 not involve advertising or merchandising necessarily addresses the offering of a
26 copyrightable work (that allegedly contains the plaintiff’s name or likeness) directly
27 to consumers. Such a “personal use” claim is preempted because copyright law
28 exclusively governs the questions of the propriety of the distribution of copyrightable

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1 works. [Maloney at 1011 (“when a likeness has been captured in a copyrighted artistic
2 visual work and the work itself is being distributed for personal use, a publicity-right
3 claim interferes with the exclusive rights of the copyright holder, and is preempted by
4 section 301 of the Copyright Act.”).]
5 But in advertising cases like this one, the plaintiff’s complaint is not simply that
6 copies of the work depicting him or her were distributed—but rather that his likeness
7 (an intangible and non-copyrightable thing) was used commercially. “The crux of the
8 issue is thus deciding when a publicity-right claim seeks to vindicate misuse of an
9 individual's likeness, as opposed to merely interfering with the distribution, display, or
10 performance of a copyrighted work.” Maloney at 1012-1013. Maloney answered that
11 question by distinguishing between advertising and non-advertising uses.
12 More specifically, Maloney explains that the publicity claims in Fleet and Jules
13 Jordan were preempted precisely because they did not involve advertising. In Fleet,
14 actors sued to enjoin distribution of a film in which they appeared. “Given that the
15 publicity-right claims sought ‘only to prevent CBS from reproducing and distributing
16 [plaintiffs'] performances in the film,’ the court concluded that ‘the[] claims must be
17 preempted by federal copyright law.’” Id. at 1014. The Maloney court used the same
18 critical distinction to explain Jules Jordan, finding that an actor’s claim for violation
19 of his publicity rights was preempted because the actor was objecting to the
20 unauthorized distribution and republication of a copyrighted work, not the
21 exploitation of his likeness in advertising. Id. at 1016 After similar discussion of all
22 prior cases, the Maloney court reiterated its conclusion that:
23
In sum, our cases clarify that a publicity-right claim may proceed when a
likeness is used non-consensually on merchandise or in advertising. But
24 where a likeness has been captured in a copyrighted artistic visual work and
25 the work itself is being distributed for personal use, a publicity-right claim is
little more than a thinly disguised copyright claim because it seeks to hold a
26 copyright holder liable for exercising his exclusive rights under the
27 Copyright Act. [Maloney, 853 F.3d at 1016.]
28
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1 Maloney’s simple rule obviously entails that Sumida’s claim—for use of her
2 likeness in advertising—is not preempted.9
5 Volvo’s second preemption argument is even lazier. Again, Volvo appears to

6 believe that any act constituting copyright infringement cannot simultaneously violate
7 the Lanham Act. Vaguely citing to Dastar Corp. v. Twentieth Century Fox Film
8 Corp., 539 U.S. 23 (2003), Volvo (wrongly) asserts that “Lanham Act claims based
9 on the alleged unauthorized use of a person’s likeness in a copyrighted work are
10 preempted under the Copyright Act.” [MTD 17:10-12.]
11 In support, Volvo offers only a long string cite, including parentheticals that
12 seem to suggest at least that some Lanham Act claims have been found to be
13 preempted. [MTD, 17:5-18:8.] By skipping any analysis of the cases (beyond
14 plucking sentence fragments), Volvo again manages to avoid the critical question:
15 under what circumstances is a Lanham Act claim merely a repacked copyright claim?
16 That’s a surprising omission because Dastar provides an easy answer (just as Maloney
17 provides a straightforward way to answer the same question with regard to publicity
18 claims). Dastar holds that only certain Lanham Act claims are preempted: those
19 alleging “reverse passing off” of “communicative products.” Dastar, 539 U.S. at
20 37-38. All other Lanham Act claims are not preempted. Id.; see also OTR Wheel
21 Eng'g, Inc. v. West Worldwide Servs., 897 F.3d 1008, 1012 (9th Cir. 2018) (“Pursuant
22 to the Supreme Court's opinion in [Dastar], a claim for reverse passing off cannot be
23 brought to prevent the copying of intellectual property.”)
24
It’s concerning that Volvo never mentions Maloney or lets on that whether a use
9
25
appears in advertising might be an important question. A lawyer’s duty of candor
26 requires that adverse authority be disclosed—and Maloney is a hard case to miss.
Presumably, Volvo’s lawyers found it while Shepardizing Fleet and Jules Jordan. It is
27
obviously a much discussed case, including in the Nimmer treatise to which Volvo
28 cites elsewhere in its brief.
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3 In Dastar, the defendant (Dastar) copied and slightly modified a videotaped

4 documentary produced by the plaintiff (Fox), and distributed it as its own. Fox
5 brought a Lanham Act claim alleging that Dastar was falsely presenting Fox’s content
6 as its own. Dastar, 539 U.S. at 31. This is of course paradigmatic reverse passing
7 off.10 The Supreme Court found Fox’s Lanham Act claim was preempted because it
8 was simply a repackaged copyright claim. Id. at 36, 37. The purpose of copyright law,
9 after all, is to combat misappropriation of creative works and plagiarism. Id. at 37, 38.
10 And because copyright law reflects a careful balancing of authors’ rights and the
11 public’s freedom to use others’ expression, it would be inappropriate to allow the
12 Lanham Act (which is concerned with protecting consumer welfare by avoiding
13 marketplace confusion as to the “source” of goods) to trump copyright law in its own
14 domain. Id., at 33, 34.
15 Accordingly, the Court held that a reverse passing off claim cannot be based on
16 “communicative products,” (defined as “one that is valued not primarily for its
17 physical qualities, such as a hammer, but for the intellectual content that it conveys,
18 such as a book or, as here, a video”), which are the subject of copyright law. Id. at 33.
19 Put another way, Dastar holds that a claim for false designation origin is preempted
20 where the “origin” in question is the authorship of a communicative work. Antidote
21 Int’l Films, Inc. v. Bloomsbury Pub., PLC, 467 F. Supp. 2d 394, 398 (S.D.N.Y. 2006).
22
23
10
Because the “passing off”/“reverse passing off” distinction is dispositive, and because Volvo did
24 not see fit to mention it, an explanatory digression is in order. Typical Lanham Act cases involve a
defendant “passing off” his goods as affiliated with the plaintiff. But it is also a violation of the
25 Lanham Act to do the opposite: i.e. to present another’s goods or services as one’s own. See
Aquarius Broad. Corp. v. Vubiquity Entm't Corp., 2016 WL 7165728, at *2 (C.D. Cal. June 30,
26
2016). Such “reverse passing off” amounts to “taking credit” for another’s work. When the goods or
27 services in question happen to be copyrightable (i.e. when they are “communicative products”),
reverse passing off thus reduces to a sort of plagiarism that begins to look indistinguishable from
28 copyright infringement, and is thus preempted. Dastar at 33.
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1 That Dastar does not foreclose passing off claims, even where the trademark is
2 copyrightable or is used on communicative products, is crystal clear from its
3 reasoning. The Court noted that allowing a Lanham Act claim for plagiarism “would
4 create a species of mutant copyright law” that would effectively expand copyright-
5 style protections. Id., at 34. The point was perfectly illustrated by the facts of Dastar
6 itself. A copyright infringement action—the most obvious claim under the
7 circumstances—was not available because Fox’s original documentary had fallen into
8 the public domain. Id., at 26. Undeterred, Fox essentially stated a copyright claim
9 under the rubric of the Lanham Act. Id. at 37. The Supreme Court found preemption
10 because Lanham Act liability for appropriation of a copyrightable work would
11 essentially create a “perpetual” copyright that Congress did not intend. Id., at 37.
12
13
14 Dastar’s reasoning clearly has no application to passing off cases, which

15 present no specter of mutant copyright law. And indeed, there are plenty of cases
16 finding that a single act can simultaneously constitute and copyright infringement and
17 passing-off trademark infringement. See Nintendo of Am. v. Dragon Pac. Int’l, 40
18 F.3d 1007, 1011 (9th Cir. 1994)(the offending conduct “may have been one act, but it
19 was two wrongs.”); Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d
20 1394 (9th Cir. 1997). There are also a number of cases specifically rejecting Dastar
21 preemption in approving of simultaneous trademark and copyright infringement.
22 Craigslist Inc. v. 3Taps Inc., 942 F. Supp. 2d 962, 979 (N.D. Cal. 2013); Bach v.
23 Forever Living Prods. U.S., Inc., 473 F. Supp. 2d 1110, 1116-18 (W.D. Wash. 2007).
24 Further, a number of cases have specifically found that Lanham Act false
25 endorsement claims, even when based on communicative products, are not preempted
26 under Dastar—precisely because false endorsement is by its very nature passing off
27 as opposed to reverse passing off. See Aagard v. Palomar Builders, Inc., 344
28 F.Supp.2d 1211, 1216 (E.D.Cal. 2004) (“traditional palming off is not preempted by
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1 the Copyright Act.”). In Henley v. Devore, 2009 U.S. Dist. LEXIS 141037, at *7,
2 2009 WL 10697982 (C.D. Cal. 2009), members of the Eagles sued for use of their
3 songs in political parodies (e.g. All She Wants To Do Is Tax), coupling a
4 straightforward copyright claim with a false endorsement claim. The court first made
5 the point that false endorsement claims necessary allege “passing off.” Id. at *18.
6 (Plaintiffs “are contending that DeVore and Hart are “palming off” their video on
7 Henley by suggesting his endorsement.”). Next, the court rejected Dastar preemption
8 precisely because plaintiff’s Lanham Act claim, unlike the one in Dastar, alleged
9 passing off:
10 Dastar involved a "reverse passing off" theory in which a producer or

manufacturer contends that they should have received credit as the source of
11 the goods but did not. 539 U.S. at 27, 31. Here, in contrast, Henley and
Campbell allege a false association or endorsement claim, in which they
12 contend that they received credit, at least implicitly, where they should not
have.” [Henley v. Devore, 2009 U.S. Dist. LEXIS 141037, *15 (C.D. Cal.
13 2009).]
14 See also Pellegrino v. Epic Games, Inc., 2020 LEXIS 55623, at *21-22, 2020 WL
15 1531867 (E.D.Pa. 2020) (“nothing in the Supreme Court's opinion in Dastar bars
16 prospective plaintiffs from bringing a false endorsement… claim under the Lanham
17 Act” (quoting Henley, supra, 2009 U.S. Dist. LEXIS 141037, at *7)).
18 Sumida’s Lanham Act claim is not preempted because it alleges garden variety
19 passing off—and thus liability would not represent an expansion of copyright law.
20 Specifically, Sumida alleges that consumers would mistakenly associate Volvo’s
21 products with her. [SAC, ¶ 60 (“Defendants seek to deceive consumers regarding
22 Defendants’ association with Plaintiff.”).] 11 Accordingly, Plaintiff’s Lanham Act
23 claims are not preempted by copyright law. 12
24
Volvo does not use the words “passing off” and “reverse passing off” in the preemption section of
11
25 its MTD, despite the fact that this distinction is critical to the Dastar preemption analysis, and
despite mentioning the distinction in another context. The reason is apparent: using the words would
26 make it very easy to show the fatal flaw in Volvo’s reasoning.
27 Because Sumida’s Lanham Act claim is not preempted, neither are her two state law unfair
12
competition claims. While Volvo inexplicably analyzes these claims together with Sumida’s right of
28 publicity claims, they are in fact derivative of her Lanham Act passing off claim.
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1 VI. SUMIDA PROPERLY PLEADS HER LANHAM ACT CLAIM.

2 Volvo argues that Sumida’s Lanham Act claim, besides being preempted, fails
3 because “Volvo did not suggest that Sumida endorsed Volvo cars.” [MTD 18:9-10.]
4 Reading on, it becomes clear that Volvo’s argument is that Sumida fails to adequately
5 allege likelihood of confusion. [Id. 18:11-22.]
7 Courts undertake a fact-intensive analysis to evaluate likelihood of confusion,

8 based on eight non-exhaustive factors. JL Bev. Co., LLC v. Jim Beam Brands Co., 828
9 F.3d 1098, 1105-06 (9th Cir. 2016). Analysis of these factors is so fact-intensive that
10 the Ninth Circuit cautions against using it even on summary judgment, much less the
11 pleading stage. Id. at 1105; Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190,
12 1210 (9th Cir. 2012); Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901-902
13 (9th Cir.2002) (“We have cautioned that district courts should grant summary
14 judgment motions regarding the likelihood of confusion sparingly, as careful
15 assessment of the pertinent factors that go into determining likelihood of confusion
16 usually requires a full record”).
17 Needless to say, a finding of lack of likelihood of confusion is even more

18 disfavored at the pleading stage, where the court would have no information relating
19 to many of the factors. See, e.g., Stanislaus Custodial Deputy Sheriffs’ Ass’n v.
20 Deputy Sheriff’s Ass’n of Stanislaus County, 2010 WL 2218813, at *11 (E.D. Cal.
21 2010) (denying motion to dismiss because the court could not “make the factual
22 conclusion at this stage of the proceedings that there was not a likelihood of
23 confusion”); Visual Changes Skin Care Int’l, Inc. v. Neways, Inc., 2008 WL 4723603,
24 at *6 (E.D. Cal. 2008) (rejecting defendant’s argument that there was no likelihood of
25 confusion, explaining that the defendants’ “attack is based on a factual determination
26 not at issue at this pleading stage.”); Church & Dwight Co., Inc. v. Mayer
27 Laboratories, Inc., 2011 U.S. Dist. LEXIS 35969, 2011 WL 1225912, at *20 (N.D.
28
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1 Cal., 2011) (“Consumer confusion is generally a factual determination turning on an
2 array of factors that cannot be made at this stage.”).
5 Volvo argues that Sumida’s failure to allege an explicit assertion of

6 endorsement, or use of her name, is fatal to her Lanham Act claim. [MTD 19:6-10.]
7 According to Volvo, merely creating an impression of endorsement cannot constitute
8 false endorsement. [Id.] This could not be more wrong. Volvo’s own marquee case
9 holds generally that “uses which suggest sponsorship or approval are prohibited.”
10 Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212, 1214 (C.D. Cal. 2000).
11 Further, there are many examples of successful false endorsement claims based
12 on such very indirect insinuations of affiliation. See e.g. Wendt v. Host Int'l, Inc., 125
13 F.3d 806, 809 (9th Cir. 1997) (use of actors’ likenesses on animatronic figures in
14 marketing Cheers-themed bars); Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.
15 1988) (imitation of voice enough to suggest endorsement); Waits v. Frito-Lay, Inc.,
16 978 F.2d 1093, 1097 (9th Cir. 1992) (same); White v. Samsung Elecs. Am., Inc. 971
17 F.2d 1395, 1396 (9th Cir. 1992) (use of Vanna White's likeness as a robot in
18 television commercials for VCRs); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d
19 Cir. 2008) (use of an announcer's voice to promote a video game).
20 Volvo specifically argues that merely showing a plaintiff posing with a product
21 is insufficient as a matter of law to suggest endorsement or cause confusion. [Id. 19:6-
22 16.] In support, Volvo cites to a case in which Princess Diana’s estate’s false
23 endorsement claim, based on her image used on plates, failed because there was no
24 suggestion of an endorsement. [MTD 19:13-16 (discussing Cairns, supra, 107 F.
25 Supp. 2d at 1214).] The case has no application here because it was a summary
26 judgment case. Id. In other words, the court did not find that posing cannot constitute
27 a false endorsement—but rather, that under the facts of that case, it simply did not as a
28 matter of fact. Id. at 1215. In so finding, the Court relied on very specific factual
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1 analysis far beyond the pleadings: including that the defendant and many others had
2 for years been using Diana’s image (with her knowledge) so pervasively that “her
3 image has truly lost any significance as a mark identifying the source of a product.”
4 Id. at 1217. In addition, the court got deep into the weeds analyzing the likelihood of
5 confusion factors for likelihood of confusion—including survey and other evidence
6 regarding whether customers were actually confused. Id. at 1218-1220.
8 Volvo’s argument that models cannot state false endorsement claims—because

9 they are by definition anonymous—is ludicrous. Sumida alleges, with specific factual
10 detail, that she is a well-known model—and one that Volvo might want to suggest an
11 association with . [SAC ¶¶ 2, 15.] Volvo is welcome to try to prove this allegation
12 false, but not at the pleading stage. Volvo’s reliance on the Bondar case—where a
13 model was unable to show a likelihood of confusion—is misguided. While the court
14 did remark that a “completely anonymous” face could not form the basis for a false
15 endorsement claim, the court found a valid false endorsement claim was alleged
16 because nothing close to “celebrity” status was required. Bondar v. LASplash
17 Cosmetics, 2012 U.S. Dist. LEXIS 175873, 2012 WL 6150859, at *25-29 (S.D.N.Y.
18 2012).
19
20 Volvo’s final argument is that Sumida is the cause of any confusion. The
21 argument fails because, as already discussed, there are no facts before the court
22 suggesting that Sumida authorized anyone to use her image; and because posing with
23 a Volvo does not constitute consent to the photo’s use in advertising.
24 VII. SUMIDA’S PUBLICITY CLAIM SURVIVES VOLVO’S DEFENSES.

25
26 Next, Volvo offers the Lanham Act equivalent of a “she was asking for it”
27 defense—arguing that Sumida’s being voluntarily photographed with a Volvo
28 amounts to her consent to Volvo’s use of her likeness in advertising. The argument
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1 fails because for purposes of the right of publicity, consent is ineffective unless it is
2 specifc consent to use in advertising. See, McCarthy Thomas, The Rights of Publicity
3 and Privacy (“McCarthy”) §§ 10:24, 10:27 (2d ed. 1017).
4 “A license or consent to use of identity for a particular use cannot be stretched

5 to include a consent for other and different uses.” McCarthy at § 10:27. When consent
6 is implied, it should be construed narrowly. Id. at § 10:24. “Consent to an invasion by
7 particular conduct is not consent to the same invasion by entirely different conduct.”
8 Id. McCarthy offers an example that closely parallels this case: “Thus, a consent to
9 having one's photograph taken for the purpose of illustrating a news story is not a
10 consent to having the same photograph used to illustrate a commercial
11 advertisement.” Id. Offering another on-point example, McCarthy emphasizes that
12 context matters:
13 In finding that a consent of plaintiff while he was in the Army to having his
photograph used to bolster home front morale was not a consent to
14 defendant's use of the photograph in advertising, a court observed that "a
waiver of the right justifies an invasion of privacy only to the extent
15 warranted by the circumstances which brought about the waiver." [Id. citing
Continental Optical Co. v. Reed, 119 Ind. App. 643, 86 N.E.2d 306, 309, 14
16 A.L.R.2d 743 (1949).]
17 Similarly, the First Circuit held that “by authorizing photographs, a performer
18 does not, without more, license their commercial exploitation.” Bi-Rite Enterprises,
19 Inc. v. Bruce Miner Co., 757 F.2d 440, 446 (1st Cir. 1985). See also, Ali v. Playgirl,
20 Inc., 447 F. Supp. 723, 727 (S.D.N.Y. 1978); Eick v. Perk Dog Food Co., 347 Ill.
21 App. 293, 106 N.E.2d 742 (1952); Ettore v. Philco Television Broadcasting Corp.,
22 229 F.2d 481 (3d Cir. 1956).
23 In support of its consent argument, Volvo offers one case: Jones v. Corbis
24 Corp. The problem for Volvo is that Jones stands for exactly the opposite of the
25 proposition Volvo cites it for. The key lesson of Jones is that while Plaintiff’s consent
26 to photographed may constitute consent that such photographs be displayed and even
27 sold, it does not constitute consent to use those photos in advertising. Jones v. Corbis
28 Corp., 815 F.Supp.2d 1108, 1116 (C.D. Cal. 2011).

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1 Jones sued a photo distributor that used thumbnail images to sell photos of her
2 on the red carpet. The court found that Jones had consented to exactly this use by
3 posing for the photographs, knowing that photographers would then sell the images to
4 the media. The court found that Jones knew this through longstanding Hollywood
5 custom and practice. Id. at 1111. The court emphasized however that when the
6 photographs were sold to the media, those third parties were not acquiring rights to
7 use the photographs in advertising Id. at 1110. Later in the opinion, the Court
8 explained that Jones’s consent did not extend to advertising:
9 It is important to note that the Court's reasoning does not broadly restrict
Plaintiff's right of publicity. Here, Defendant sells only the copyright license
10 to the images taken by the photographers - Plaintiff's likeness is not used to
advertise any other product but the copyright license to the image itself. …
11 [Id. at 1116.]
12 Volvo also argues that Sumida’s posing, and Schroeder’s offer to license the
13 images, negates the scienter element of a publicity claim. [MTD 22:1-8.] The
14 argument is nonsensical. Even if Schroeder’s willingness to license could be imputed
15 to Sumida, consent to license for a price obviously does not somehow evidence
16 unconditional consent. If it did, every photograph of a person that is for sale, would
17 also by definition be free for the taking.
18
19 Volvo next argues that Sumida’s publicity claim fails because she is not readily
20 identifiable, and because her image is incidental. But a quick look at the photos
21 included in the SAC (at pages six and seven) shows these assertions are manifestly
22 wrong. Ms. Sumida can be easily recognized in most of the photographs. In fact,
23 Volvo admits that it is arguing only that she cannot be recognized in “many” of the
24 photographs.13 But even if that were true, it obviously would not warrant dismissal of
25 Even qualified with this comparative adjective, Volvo’s statement is patently false. As shown on
13
page six of the SAC, Sumida is depicted in 9 of the 10 images that Volvo posted to its Instagram
26
account. [SAC 6.] Volvo’s claim that “In several of the photographs, Sumida’s image [is] blurred or
27 obscured,” and that “her back is to the camera or only her silhouette is visible in others” is belied by
the fact that Volvo arranged those arguably unidentifiable images of Sumida in collages alongside
28 images in which Sumida appears clearly, and facing the camera. [Id.]
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1 the entire claim—and thus it is an inappropriate argument on a 12(b)(6) motion.
2 Further, as Volvo’s primary case makes clear, ready identifiability requires only that
3 the trier be convinced the person in the photo is really the plaintiff—not that she could
4 be identified by a man on the street. Newcombe v. Adolf Coors Co., 157 F.3d 686, 692
5 (9th Cir. 1998). Further, the Newcombe court found that the issue of identifiability
6 could not be resolved even on summary judgment, much less the pleading stage. Id.
7 Volvo’s argument that Ms. Sumida’s presence in the photos is merely

8 incidental is equally misguided. Again, a cursory review of the photographs reveals
9 that Sumida is quite prominent. At very least, the question is not appropriate for
10 resolution at pleading stage. Upper Deck Co. v. Panini Am., Inc., 2020 LEXIS
11 114075, at *43-44, 2020 WL 3498175 (S.D. Cal. 2020).
12 VIII. SUMIDA IS ENTITLED TO FEES AND PUNITIVE DAMAGES.

13 Ms. Sumida’s claims for Volvo’s violation of her right of publicity under
14 California Code Section § 3344 and common law entitle her to seek punitive damages
15 and attorneys’ fees. The statute entitles a victorious plaintiff to “attorney’s fees and
16 costs.” § 3344(a). “
17 IX. CONCLUSION.
18 For the reasons stated, Volvo’s motion should be denied.
19
DATED: August 24, 2020 ERIKSON LAW GROUP
20
21
By: ______/s/_____________________
22 DAVID A. ERIKSON
Attorneys for Plaintiffs Jack Schroeder and Britni
23
Sumida
24
25
26
27
28
ERIKSON
ATTORNEYS
LOS ANGELES CA

Schroeder V Volvo Opposition To MTD

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Case 2:20-cv-05127-VAP-PVC Document 21 Filed 08/24/20 Page 1 of 32 Page ID #:386

1 GLUCK LAW FIRM P.C.

4 ERIKSON LAW GROUP

10 UNITED STATES DISTRICT COURT

13 JACK SCHROEDER, an individual; Case No. 2:20−cv−05127 VAP (PVCx)

i OPPOSITION TO MOTION TO DISMISS

VI. SUMIDA PROPERLY PLEADS HER LANHAM ACT CLAIM. ............... 20

11 IX. CONCLUSION. ........................................................................................... 25

7 McCarthy Thomas, The Rights of Publicity and Privacy (“McCarthy”) §§ 10:24,

10 Fed. R. Civ. P. 8(a)(2) .............................................................................................. 5

5 convoluted challenges is as specious as its position on Instagram posts.

6 Accordingly, Volvo’s only conceivable goal in filing its scattershot motion is to

8 continue to make a “mountain out of a molehill.” In digging deep to find grounds to

1 OPPOSITION TO MOTION TO DISMISS

1 without justification, regarding Sumida’s supposed nefarious schemes,

15 2017)(“Maloney”). Similarly, Sumida cannot possibly be said to have impliedly

16 consented or acquiesced to the commercial exploitation of her likeness because her

17 conduct only involved non-advertising uses.

20 than it should be.

21 II. PLAINTIFFS’ ALLEGATIONS

23 Schroeder is a photographer, and Sumida a model. [SAC ¶ 15.] To practice

3 the images without permission (the “Photos”) in a global Instagram “Story”

4 advertisement and a board on its verified Pinterest page—both of which encouraged

6 vehicle. [Id. ¶¶ 20, 21.]

8 Schroeder brings the first cause of action: a straightforward copyright claim.

10 her likeness/persona without permission: straightforward common law and statutory

13 which piggy-back on the other claims. [SAC ¶¶ 48-80.]

20 offered as paraphrases of Plaintiffs’ allegations, but are in fact mischaracterizations.

25 Plaintiffs orchestrated a grand and nefarious scheme:

3 2:10-13] none of these facts are found in the SAC.

4 Volvo even supplies a co-conspirator. In the SAC, Plaintiffs mention a “small

10 [MTD 13:21-22.] Such conjecture obviously has no place in a motion to dismiss.

17 4; 14:2-11, fns. 21, 22; 20:1-6.]

26 photographs on their own public social media accounts.” [Id.]

3 these “facts” are outside the complaint.

4 Volvo also smuggles in the following “facts,” without justification:

21 Cir. 2008). The Ninth Circuit explains that

22 Dismissal under Rule 12(b)(6) on the basis of an affirmative defense is

1 IV. SCHROEDER DID NOT GRANT VOLVO A LICENSE.

5 request for a license—but it nevertheless finds permission deep in Instagram’s (and

10 12:5-10.] The argument fails because it finds no textual support—and is indeed

14 Instagram’s billions of users’ posts fair game for advertisers.

17 Volvo’s marquee argument is that pursuant to Instagram’s terms, the act of

19 Instagram then automatically sublicenses to the world at large (allowing anyone to

21 Exh. 13; 11:18-22; 12:5-10.]

23 Volvo makes no attempt to judicially notice the entirety of Instagram’s

1 of reveals that quite a bit is missing.2 Volvo’s strategy is to cherry-pick out-of-context

3 use anything publicly posted on Instagram. [MTD at 9:17-23; 11:18-22; 12:5-10.]

9 goes. Volvo offers nothing further—because there is nothing further—to suggest

16 [RJN, Exh. 13 at ECF 46.]

2 without permission.”3 These provisions alone foreclose Volvo’s argument.

7 publicly posted to the website.

14 the plaintiffs’ work.

15 In McGucken v. Newsweek LLC, 2020 U.S. Dist. LEXIS 96126, 2020 WL

6 there was no evidence of a possible implied license. McGucken v. Newsweek LLC,

9 In Sinclair v. Ziff Davis, LLC, entertainment platform Mashable posted a story

11 post. The plaintiff, a professional photographer, claimed Mashable violated her

12 copyright. Mashable argued that Instagram’s terms granted Mashable a sublicense to

15 insufficient evidence to find that Instagram granted Mashable a sublicense to embed

17 LEXIS 110627, at *1, 2020 WL 3450136 (S.D.N.Y. 2020).6

22 posts on his Instagram page.” [MTD, ECF 20:20-22].

3 Most noteworthy perhaps is that Volvo misrepresents Instagram’s policies.

6 Instagram’s terms provide: