Opinion
No. C 03-05515 SI.
August 13, 2004
Currently pending before the Court are defendants'/counterclaimants' motion for partial summary judgment and counterdefendants' motion for judgment on the pleadings with respect to defendants' counterclaims. Having carefully considered the arguments of the parties and the papers submitted, the Court DENIES defendants' motion for partial summary judgment and DENIES counterdefendants' motion for judgment on the pleadings with respect to defendants' counterclaims. Reasons for the Court's decisions are set forth below.
BACKGROUND
This case concerns copyrights in miniature working motorcycles. Plaintiffs Kikker 5150 and Kelly Kikkert filed their complaint on December 8, 2003 against Kikker 5150 USA, Mark Gholson, and others (defendants or counterclaimants). On January 9, 2004, defendants filed an answer and counterclaims; on January 16, 2004, defendants amended their counterclaims.
Kelly Kikkert "is a product designer for Plaintiff Kikker 5150," a business which designs, manufactures, advertises, markets, sells and distributes "stylized, miniature motorcycles with the look of miniature motorcycles," also called "Pocket Bikes." Compl. ¶¶ 2, 16. Plaintiff Kikker 5150 manufactures and distributes two models of Pocket Bikes, a "sport-style Pocket Bike named the `haVoc' and a cruiser-style Pocket Bike named the `Phatty.'" Compl. ¶ 17. Plaintiff Kikker 5150 has registered both the haVoc and the Phatty with the United States Copyright Office and has attached copies of the Certificates of Copyright Registration to the complaint. Id., Exs. A and B. The certificates describe the "Nature of th[ese] Work[s]" as "[t]hree-dimensional, sculptural features and design elements of [a] miniature motorcycle." Id. The Certificates list Kelly Kikkert and Efren Munoz as authors.Id.
According to the complaint, "[t]he basic design of the haVoc Pocket Bike was completed on June 30, 2002, while "[t]he basic design and appearance of the Phatty Pocket Bike was completed on January 23, 2002." Compl. ¶¶ 26-27. Plaintiff Kikker 5150 started shipping both the haVoc and Phatty Pocket Bikes to customers on October 30, 2003. Compl. ¶ 26, 27. Plaintiffs allege that defendants' allegedly "unlawful reproductions have been created by reverse designing prototypes of the Phatty and haVoc." Compl. ¶ 30.
The complaint alleges the following claims for relief: Copyright Infringement, under 17 U.S.C. § 501; Infringing Importation, under 17 U.S.C. § 501; Trademark and Trade Dress Infringement, under 15 U.S.C. § 1125 (a); Unfair Competition and False Designation of Origin, under 15 U.S.C. § 1125 (A); Trade Disparagement and Libel, under 15 U.S.C. § 1125; Trademark and Trade Dress Infringement under Cal. Bus. Prof. Code § 14320 et seq. and California common law; Trade Disparagement under California Law and Libel; Tortious Interference with Prospective Economic Advantage; Unfair Competition under Cal. Bus. Prof. Code § 17200 and California common law; False or Misleading Statements under Cal. Bus. Prof. Code § 17500; False Patent Marking, under 35 U.S.C. § 292 (A); and Defamation.
In his Amended Counterclaim (Countercl.), Defendant Mark Gholson alleges that "[i]n July of 2002, [he] and Kelly Kikkert formed a partnership to manufacture, import, market, and sell miniature motorcycles, commonly known as `Pocket Bikes.'" Countercl. ¶ 10. Gholson alleges that he and Kikkert "began designing the Pocket Bikes to be manufactured and marketed by the partnership. The partners collaborated to create miniature gas tanks, fenders, and other parts based on Mark Gholson's Harley-Davidson Heritage Softail motorcycle." Countercl. ¶ 12. "Also in July of 2002, the partners purchased a bicycle helmet at an Ace Hardware store in Anguin, California, with the intention of having it copied in China." Countercl. ¶ 16. "[I]n August of 2002, the partners together visited Reed's Custom Cycle, a Harley-Davidson dealer, where they purchased Harley Davidson parts for copying in the design and production of the partners' `Phatty' Pocket Bikes. These parts included headlights, chubby handlebars, and a saddle seat. The partners also purchased Harley-Davidson style emblems and stickers to be used in creating KIKKER 51050 logos." Countercl. ¶ 21. "On September 1, 2002, the partners purchased a Blata brand Pocket Bike to use as a model for additional refinement of the partners' `Café Racer' Pocket Bike already under design, just as they had been working on a derivative copy of Mark Gholson's Harley-Davidson Heritage Softail to be the partners' `Phatty' Pocket Bike." Countercl. ¶ 25. Plaintiffs "rigorously dispute" that they "copied from certain existing motorcycles and pocket bikes." Oppo. at 17.
Gholson alleges that he and Kikkert "drafted and signed a simple written partnership agreement on January 29, 2003." Countercl. ¶ 47. "Kelly Kikkert retained the only copy of the written partnership agreement, and has refused to provide a copy to Gholson." Countercl. ¶ 48. Gholson alleges that he asked Kikkert for a copy of the alleged partnership agreement on March 11, 2003. Kikkert "did not comply" and the men have "not spoken since." Countercl. ¶¶ 61, 63. "Having invested over $90,000 in the business, Mark Gholson decided to continue on with the business to mitigate his losses and recoup his investment." Countercl. ¶ 69.
The Amended Counterclaim alleges the following claims for relief: Breach of Written Contract; Breach of Oral Contract; Breach of Fiduciary Duty, under Cal. Corp. Code § 16405; Declaratory Relief: Trademark, under 28 U.S.C. § 2201; Trademark Infringement, under 15 U.S.C. § 1125; Unfair Competition, under 15 U.S.C. § 1125; Declaratory Relief: No Copyright on the Pocket Bikes, under 28 U.S.C. § 2201 and 17 U.S.C. §§ 101, 103; Declaratory Relief and Injunctive Relief: Copyright, Joint Work (Pocket Bikes), under 28 U.S.C. § 2201 and 17 U.S.C. § 101, 201(a); Declaratory and Injunctive relief: Copyright, Joint Work (logos), under 28 U.S.C. § 2201; 17 U.S.C. §§ 101, 201(a); Unfair Competition, under Cal. Bus. Prof. Code § 17200 et seq.; Fraud: Misrepresentation and Concealment; Tortious Interference with Prospective Economic Advantage;Libel; Trade Libel; Slander; Conversion; Wrongful Dissociation, under Cal. Corp. Code § 16602; Accounting; and Money Had and Received.
On April 16, 2004, defendants filed a motion for partial summary judgment. Four days later, defendants requested an expedited briefing and hearing schedule, which this Court granted in large part on April 22, 2004. Defendants subsequently filed an ex parte application for a temporary restraining order (TRO), alleging that new facts, namely the seizure of allegedly infringing "Chopper" model motorcycles by customs agents in San Francisco due to the Chopper's allegedly infringing chain guard, demonstrated irreparable harm to defendants' business. On April 29, 2004, this Court denied defendants' application for a TRO and preliminary injunction.
Now before the Court are defendants' motion for summary judgment and counterdefendants' motion for judgment on the pleadings with respect to defendants' counterclaims.
LEGAL STANDARD
A. Summary judgment
Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323; 106 S.Ct. 2548, 2553 (1986). The moving party, however, has no burden to negate or disprove matters on which the non-moving party will have the burden of proof at trial. The moving party need only point out to the Court that there is an absence of evidence to support the non-moving party's case. Seeid. at 325.
The burden then shifts to the non-moving party to "designate `specific facts showing that there is a genuine issue for trial.'" See Celotex Corp., 477 U.S. at 324 (quoting Fed.R.Civ.P. 56(e)). To carry this burden, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586; 106 S.Ct. 1348, 1356 (1986). "The mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252; 106 S.Ct. 2505, 2512 (1986). In a motion for summary judgment, the evidence is viewed in the light most favorable to the non-moving party, and all justifiable inferences are to be drawn in its favor. See id. at 255. "Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge . . . ruling on a motion for summary judgment." Id. Conclusory, speculative testimony in affidavits and moving papers is insufficient to raise genuine issues of fact and defeat summary judgment. Thornhill Pub. Co., Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 1979). Hearsay statements found in affidavits are inadmissible. See, e.g., Fong v. American Airlines, Inc., 626 F.2d 759, 762-63 (9th Cir. 1980).
In a motion for partial summary judgment, where the moving party has shown that there is no genuine issue of material fact as to the defense or claim, and the non-moving party cannot demonstrate that such an issue does exist, a court can grant summary judgment for the moving party "upon all or any part thereof." Wang Lab., Inc. v. Mitsubishi Elec., Am., Inc., 860 F.Supp. 1448, 1450 (C.D. Cal. 1993). The granting of any part of the summary judgment is commonly known as the granting of a "partial summary judgment." American Nurses' Ass'n v. Illinois, 783 F.2d 716, 729 (7th Cir. 1986). For partial summary judgments, no actual judgment is entered. Instead, "[a] partial summary judgment is merely an order deciding one or more issues in advance of trial. . . ." Minority Police Officers Ass'n v. South Bend, 721 F.2d 197, 200 (7th Cir. 1983). The judge reserves the power to alter the matters adjudicated any time prior to entry of final judgment. See St. Paul Fire Marine Ins. Co. v. F.H., 55 F.3d 1420, 1425 (9th Cir. 1995).
B. Judgment on the pleadings
"After the pleadings are closed but within such time as not to delay the trial, any party may move for judgment on the pleadings." Fed.R.Civ.P. 12(c). "Judgment on the pleadings is proper when the moving party clearly establishes on the face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law."Hal Roach Studios, Inc. v. Richard Feiner Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1989) (citation omitted). "For purposes of the motion, the allegations of the non-moving party must be accepted as true, while the allegations of the moving party which have been denied are assumed to be false." Id. (citation omitted).
Although Rule 12(c) neither specifically authorizes nor prohibits motions for judgment on the pleadings "directed to less than the entire complaint or answer . . . [i]t is the practice of many judges to permit `partial' judgment on the pleadings (e.g. on the first claim for relief, or the third affirmative defense)." See William W. Schwarzer, A. Wallace Tashima James M. Wagstaffe, Federal Civil Procedure Before Trial 9:340 (2001). "[C]ourts have discretion to grant a Rule 12(c) motion with leave to amend." Id. at 9:341.
DISCUSSION
A. Summary judgment
This case concerns copyrights issued on two pocket bikes. The Copyright Office issued a Certificate of Copyright for the Kikker 5150 haVoc on November 19, 2003 with registration number VA 1-213-363. Compl. Ex. A. The same day, the Copyright Office issued a Certificate of Copyright for the Kikker 5150 Phatty with registration number VA 1-213-362. Compl. Ex. B. Defendants allege that "Kikkert and Gholson designed the `Phatty' to resemble a miniature Harley-Davidson," motion at 3, and that they designed the haVoc "to resemble the Blata and Polini brand pocket bikes." Gholson Decl. ¶¶ 10-11. Plaintiffs recorded the Copyright Registrations at issue with the Customs and Border Protection Service (CBP) Intellectual Property Rights (IPR) database, pursuant to 19 C.F.R. 133.31, et seq. The registrations for the haVoc and Phatty received CPB numbers COP 04-00024 and COP 04-00025, respectively. Sugerman Decl. Ex. L. As a result, the customs service has detained some of defendants' allegedly infringing Phatty model motorcycles. Gholson Decl. ¶¶ 13-14. For purposes of this motion, defendants "will assume . . . that the two models are identical in all material respects." Motion at 6.
Defendants seek partial summary judgment on one issue, namely the copyrightability of plaintiffs' motorcycles. Defendants argue that plaintiffs' copyright applications failed to disclose that the miniature motorcycles at issue "are not mere expressions of the idea of a motorcycle, but that they are, in fact, working motorcycles." Motion at 1 (emphasis in the original). According to defendants, when the Copyright Office approved the applications, plaintiffs' motorcycles became "the only two registered copyrights of a working motorcycle in the United States." Id. (emphasis in the original). Thus defendants argue that the "registrations were, at best, mistakes, and need to be invalidated." Id. 17 U.S.C. § 410(c) provides that:
In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.
"It is clear, however, that a certificate of registration creates no irrebuttable presumption of copyright validity. Where other evidence in the record casts doubt on the question, validity will not be assumed." Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980). The certificates of registration create a rebuttable presumption of validity, after which the burden shifts to defendants to disprove validity. Past Pluto Productions Corp. v. Dana, 627 F.Supp. 1435, 1440 (S.D.N.Y. 1986) (brackets added; citation omitted). In Durham Industries, which concerned copyrights on Disney figures, the Court considered dispositive "the mute testimony of Mickey, Donald and Pluto themselves." Durham Industries, 639 F.2d at 908. The Court concluded that "[o]ne look at [defendants'] figures reveals that, in each, the element of originality that is necessary to support a valid copyright is totally lacking." Id. at 908-09 (brackets added). Courts also consider a copyright applicant's knowing failure to inform the Copyright Office of facts which might have caused rejection of an application. Past Pluto, 627 F.Supp. at 1440.
Defendants argue that plaintiffs' motorcycles are not copyrightable for two reasons. First, defendants argue that "the motorcycles are `useful articles' under the Copyright Act, and therefore do not qualify for copyright protection as `sculptural works.'" Motion at 2. "Second, the motorcycles are copies of other motorcycles, and lack the necessary element of originality." Id.
1. Useful articles
The Copyright Act protects "sculptural works," but these do not generally include "useful articles." Under the Copyright Act, 17 U.S.C. § 101,
"Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
The Act also defines "useful article" as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a `useful article.'" Id. Toys are not useful articles; therefore, toys may be copyrighted. See, e.g., Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 974 (6th Cir. 1983) (citing cases concluding that toys are copyrightable and explaining that "toys do not even have an intrinsic function other than the portrayal of the real item.").
Thus plaintiffs argue that the motorcycles at issue are toys and cite Professor Goldstein's Copyright treatise explaining that "courts have characterized as useful only those articles that have utility as their primary purpose. Further, courts have required that the work's utility lie in its capacity to achieve material ends." Oppo. at 3-4, citing Goldstein on Copyright, § 2.5.3 (2003) (citation omitted). Plaintiffs argue:
While Plaintiffs' pocket bikes are functional in the sense that they feature a very small gas-powered motor and may be ridden, it is obvious given their very small size that the real purpose of Plaintiffs' pocket bikes lies in the amusement of adults and older children under the supervision of adults. Plaintiffs believe it is beyond reasonable dispute that pocket bikes, such as Plaintiffs' pocket bikes, are much too small and otherwise unsuitable for transportation or any other real-life utilitarian purpose to constitute anything other than a toy for the purposes of the copyright laws.
Oppo. at 4. Plaintiffs also emphasize that "each of Plaintiffs' pocket bikes is shipped with a warning label which states: `This vehicle does not conform to Federal Motor Vehicle Safety Standards and is not intended for operation on public streets, roads, sidewalks or highways.'" Oppo. at 11, Kikkert Decl. ¶ 21, Ex. N. However, the warning also states that "[t]his product is designed for closed course competition use only" and that "[i]mproper use can result in serious injury or death." Kikkert Decl. Ex. N. Plaintiffs include a photograph of a man riding one of their motorcycles and argue that it demonstrates that "pocket bikes of Plaintiffs' size are far too small and otherwise unfit for transportation or any other real-life, utilitarian function." The Court finds that the picture demonstrates that the motorcycle serves a utilitarian function because it can transport a person from one place to another. Even plaintiffs concede in their opposition that their motorcycles are only "toy-like." Oppo. at 12.
Defendants argue that the motorcycles at issue are not toys because they "have an intrinsic function far beyond the mere `portrayal' of a motorcycle" — in fact, "they are motorcycles, designed to be ridden and raced." Reply at 2. Defendants argue that other objects of industrial design, for example, NASCAR race cars and three-wheeled All Terrain Vehicles, which are designed primarily for amusement and not for transportation, would be eligible for copyright protection if the motorcycles in the case at hand were deemed to be eligible for copyright protection.Id. Thus defendants argue that "a Formula One race car is no more copyrightable than a Ford Escort and plaintiffs' miniature motorcycles are no more copyrightable than a Harley-Davidson Heritage Softailora Kawasaki Ninja." Reply at 3. As useful articles, defendants argue, plaintiffs' miniature motorcycles are precluded from copyright protection. Id.
The Certificates of Registration at issue described the "Nature of the[se] Work[s]" as "[t]hree-dimensional, sculptural features and design elements of[a] miniature motorcycle." Compl. Exs. A and B. After oral argument, the Court ordered that both parties submit additional information about any certificates of copyright registration issued by the Copyright Office on seventeen items arguably similar to miniature motorcycles (e.g., mopeds, bicycles, and miniature automobiles). May 18, 2004 Order. Due perhaps partly to inherent limitations in searching the Copyright Office's online database, the information submitted to the Court was helpful, but not dispositive. With regard to the pocket bikes themselves, plaintiff, the copyright holder in the instant action, could not with certainty locate a copyright on any similar item. Won June 1, 2004 Decl.
The Court finds that the miniature motorcycles are useful articles and therefore not eligible for copyright protection as such. The Court also finds, however, for the reasons discussed below, that there are genuine issues of fact concerning whether various "design elements" of the motorcycles "can be identified separately and are capable of existing independently as a work of art." Fabrica Inc. v. El Dorado Corp., 697 F2d 890, 893 (9th Cir. 1983). For this reason, defendant's motion for summary judgment must be denied.
2. Copyrightability of "sculptural features and design elements" of the motorcycles
a. Separability
Plaintiff argues that if the copyright registration does not protect the entire motorcycle, it should protect the design elements of its parts. The statutory language gives rise to a test of separability when determining the copyrightability of a useful article. If a work has " an intrinsic utilitarian function, even though it may have other functions which are not utilitarian," a work is deemed to be a useful article and is denied copyright protection for its shape. 1 Nimmer on Copyright, sec. 2.08[B][3] at 2-95. Thus "if an article has any intrinsic utilitarian function, it can be denied copyright protection except to the extent that its artistic features can be identified separately and are capable of existing independently as a work of art." Fabrica Inc. v. El Dorado Corp., 697 F2d 890, 893 (9th Cir. 1983) (emphasis in the original).
Defendants argue that the component parts of the motorcycle are useful articles, normally part of a motorcycle, and therefore cannot be copyrighted as "independent works of art." See, for example, Norris Industries, Inc. v. Int. Tel. Tel. Corp., 696 F.2d 918, 919 (11th Cir. 1983), which concerned the copyrightability of wire-spoked wheel covers for automobiles. The Court of Appeals affirmed the district court's finding on summary judgment that "wheel covers are not entitled to copyright protection because they are useful articles without separable features." The Copyright Office had issued Certificates of Registration on some of the wheel covers at issue; the district court "declared both the registered and unregistered copyrights invalid as a matter of law." Id. at 920. See also Custom Chrome, Inc. v. Ringer, 35 U.S.P.Q.2d 1714 (D.D.C. 1995), where the court declined to order the Copyright Office to register a copyright on motorcycle parts that the Copyright Office had deemed to be uncopyrightable, explaining that the court owed the Copyright Office deference in its area of expertise. Id. at 1717-18.
Plaintiffs, on the other hand, argue that the various elements of its motorcycles provide the requisite non-functional, separately-identifiable independent protectable features. For example, Exhibit A to Kikkert Declaration depicts "a decorative design of a stylized gas tank that covers up the actual functioning plastic gas tank that is situated underneath." Oppo. at 4. Exhibit A also shows "a chrome-covered decorative design element and not a functioning speedometer . . . it serves only to cover up, for purely aesthetic purposes, the unsightly black plastic fuel cap of the actual plastic fuel tank underneath." Oppo. at 6. Exhibit B is a photograph of the actual, functioning gas tank, while Exhibit C contains a photograph of the "bottom-side view of the decorative design element enclosing and covering the actual plastic fuel tank." Plaintiffs emphasize that the "decorative design element is actually open at the bottom . . . and, thus, cannot hold fuel or any other liquid . . . In short, it has no utilitarian function." Oppo. at 6. Similarly, plaintiffs argue that Exhibit D contains a photograph of a "chrome-covered faux `primary cover' featuring decorative wings serves only a decorative design purpose." Id. Plaintiffs further argue that
the oval portion of this design element evokes the primary cover of a real motorcycle and the attached wings are yet another distinctive decorative feature which together help to conceal the unsightly mechanical drive system and metal chain guard assembly that would otherwise be visible and impair the aesthetic appearance and appeal of Plaintiff's Phatty pocket bike. This design element is made of chrome-covered plastic and has no utilitarian function.
Oppo. at 6. Exhibit F is a photograph of plaintiffs' cover next to defendants' allegedly "identical knock-off of this design element." Id. Plaintiffs conclude that "[w]hile the artistic aspects of these design elements cannot be physically separated from the utilitarian aspects, they are conceptually separable for purposes of the copyright laws." Id.
In Exhibits G through K, plaintiffs show pictures of the motorcycles at issue, both with and without their decorative parts. Plaintiffs argue that the haVoc and Phatty models are mechanically identical and only the addition of the decorative designs differentiates them. Oppo. at 8-10. Exhibit K is a photograph of the haVoc's design elements pictured detached from the motorcycle. From this photo, plaintiffs conclude, albeit in conclusory fashion, that the design elements "are also capable of existing independently of the utilitarian aspects of the haVoc pocket bike." Oppo. at 10.
Thus plaintiffs argue that because of the motorcycles' "self-evident toy-like character and the[ir] lack of utilitarian function, this Court should find that the design elements of Plaintiffs' pocket bikes are copyrightable." At a minimum, plaintiffs argue that they are "`entitled to have the validity of[their] copyright[s] determined by a trier-of-fact.'" Oppo. at 20, citing North Coast Industries v. Jason Maxwell, Inc., 23 U.S.P.Q. 2d 1788, 1791 (9th Cir. 1992) (brackets added).
The Court agrees with plaintiffs, that this question, while close, cannot be determined as a matter of law. Rather, the facts presented are sufficiently disputed that they must be determined by a trier of fact in an evidentiary setting.
b. Originality
"Copyright protection subsists . . . in original works of authorship." 17 U.S.C. § 102. Originality requires that a work result from "independent creation" and that the creation must entail a "modicum of creativity." Matthew Bender Co. v. West Pub. Co., 158 F.3d 674, 681 (2d Cir. 1998). "`Simply stated, original means not copied, and exhibiting a minimal amount of creativity.'" Id.
Defendants argue that plaintiffs' motorcycles are not sufficiently original to warrant copyright protection. However, the law requires only a very slight degree of originality — "a modest quantum or originality" — to call in the protections of the copyright rules. See 1 Nimmer on Copyright, sec. 2.08[B]. Here the Court cannot say, as a matter of law — although a jury may well say, as a matter of fact — that the originality required by the copyright rules is lacking.
3. Conclusion
Defendants argue that the motorcycles at issue are not copyrightable and ask the Court to issue a preliminary injunction or an order to show cause why a preliminary injunction should not issue. The Court finds that the motorcycles themselves are not copyrightable, since the motorcycles are useful articles and are not subject to copyright protection. However, since the Certificates of Copyright described the nature of the works as "[t]hree-dimensional, sculptural features and design elements of miniature motorcycle[s]," and since the Court cannot say as a matter of law that the design elements of the motorcycles are not severable and original, the Court declines to grant the motion to summarily adjudicate the copyrights' invalidity.
Plaintiff has objected to the supplemental declaration of Jeremy Sugerman filed in support of motion for summary judgment on the grounds that the declaration violates Local Rule 7.3(d). The Court did not rely on any evidence submitted with the declaration, consisting of email messages, allegedly belonging to Kikkert, but nevertheless strikes it from the record without prejudice to its introduction, if supported by the evidence, at trial.
B. Judgment on the pleadings
Counterdefendants (plaintiffs) have moved for judgment on the pleadings, arguing that defendants' counterclaims "in their entirety fail to state legally recognizable claims for relief because the claims are wholly-based on Defendants' allegations of a partnership that was purportedly created for illegal purposes." Motion at 2. Plaintiffs argue that "the Amended Counterclaim filed by the Defendants . . . is rooted upon a central and oft-repeated allegation throughout the Amended Counterclaim that a partnership agreement was created by Defendant Mark Gholson . . . and Plaintiff Kelly Kikkert . . . for the purpose of making illicit, miniature-size copies of Harley-Davidson and Blahta-brand motorcycles." Id. Plaintiffs "dispute that partnership agreement arose between Gholson and Kikkert or that there was any illegal purpose at least on the part of Plaintiffs." Motion at 2, n. 1. Thus plaintiffs argue that the claimed illegal purpose of the alleged partnership, namely the copying of others' intellectual property rights, should cause this Court to dismiss all the counterclaims which depend on an enforceable partnership. Motion at 5. Defendants, on the other hand, argue that partnership was not formed for an illegal purpose.
At this stage, the Court must accept as true the allegations of the non-moving party. Furthermore, "[j]udgment on the pleadings is proper when the moving party clearly establishes on the face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law."Hal Roach Studios, Inc. v. Richard Feiner Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1990) (brackets added; citation omitted). Perhaps the partnership, if any, was formed to copy elements in the public domain for their use in industrial design. At this stage, the Court does not find that no issue of material fact exists with regard to whether the alleged partnership was formed for illegal purposes and on that basis, DENIES plaintiff's motion for judgment on the pleadings with respect to defendants' counterclaims.
C. Request for issuance of a restraining order
In a June 3, 2004 letter to the Court, plaintiff requests a restraining order requiring defendants to "cease and desist from further publicly displaying [the picture of plaintiff depicted as a weasel on Defendants'] website and from making any further personal attacks upon our clients outside of the courtroom." The Court DENIES plaintiff's request for such a restraining order.
CONCLUSION
For the foregoing reasons, the Court DENIES defendants' motion for partial summary judgment [docket # 15] and DENIES counterdefendants' motion for judgment on the pleadings [docket # 18]. The Court DENIES plaintiff's motion to strike [Docket #41] and DENIES plaintiff's request for a restraining order [docket #55]