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Patricia L. Glaser, State Bar No. 55668 G. Jill Basinger, State Bar No. 195739 David Sergenian, State Bar No. 230174 GLASER WEIL FINK JACOBS HOWARD AVCHEN & SHAPIRO LLP 10250 Constellation Boulevard, 19th Floor Los Angeles, CA 90067 Telephone: (310) 553-3000 Facsimile: (310) 556-2920 Attorneys for Defendants SWEETPEA ENTERTAINMENT, INC. and SWEETPEA B.V.I. LTD. UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION HASBRO, INC., a Rhode Island corporation; and WIZARDS OF THE COAST LLC, a Delaware limited liability company, Plaintiffs, v. SWEETPEA ENTERTAINMENT, INC., a Delaware corporation; and SWEETPEA B.V.I. LTD., a British Virgin Island corporation, Defendants. CASE NO. 13-CV-03406-DMG (JCGx) DEFENDANTS NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT AND/OR PARTIAL SUMMARY JUDGMENT; MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT THEREOF [Separate Statement of Undisputed Material Facts and Conclusions of Law, Declaration of G. Jill Basinger] Date: Time: Ctrm: July 26, 2013 2:00 p.m. 7

Complaint Filed: May 13, 2013

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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that, pursuant to Rule 56 of the Federal Rules of Civil Procedure, on July 26, 2013, at 9:30 a.m. or as soon thereafter as the matter may be heard in Courtroom 7 by the Honorable Dolly M. Gee of the United States District Court for the Central District of California, located at 312 North Spring Street Los Angeles, California 90012, defendants Sweetpea Entertainment, Inc. and Sweetpea, B.V.I., LTD (Defendants) will, and hereby do, move for summary judgment against plaintiffs Hasbro, Inc., and Wizards of the Coast LLC (Plaintiffs) as to all claims in the Complaint, or in the alternative, partial summary judgment on any one of Plaintiffs claims. This Motion is brought on the grounds that there is no genuine issue of material fact, and that Defendants are entitled to judgment as a matter of law as follows: Plaintiffs cannot prove their First Cause of Action for Copyright Infringement. As licensees of the copyrights at issue, Defendants cannot be liable for infringement. Further, Plaintiffs cannot establish that the copyrighted works alleged to be infringed are substantially similar to the allegedly infringing work. Plaintiffs also cannot prove which, if any, of Hasbros copyrights were actually infringed. Plaintiffs cannot prove their Second Cause of Action for Trademark Infringement and Third Cause of Action for False Designation of Origin. As licensees of the trademarks at issue, Defendants cannot be liable for trademark infringement. Plaintiffs cannot establish that the allegedly infringing work actually contained Plaintiffs trademarks. Plaintiffs also cannot establish that Defendants used the trademarks in interstate commerce. Plaintiffs cannot prove their Fourth Cause of Action for Trademark Dilution. As licensees of the trademarks at issue, Defendants cannot be liable for trademark infringement. Further, Defendants cannot prove that Defendants are currently making commercial use of the mark in commerce, or that the alleged use would present a likelihood of dilution of the distinctive value of the mark. 1
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Plaintiffs claim for declaratory relief should be summarily adjudicated in favor of Defendants. Under the license agreement, Plaintiffs were required to provide Sweetpea with written notice that its sequel rights would be reverting to Hasbro. In addition to notice pursuant to the license agreement, Sweetpea was afforded an opportunity to cure any pending reversion of rights and/or breach of the license agreement. Plaintiffs failure to follow the license agreements contractually required notice and opportunity to cure provision mandates summary adjudication of the declaratory relief claim in favor of Defendants. Additionally, as a matter of law, defendants declaratory relief claim is not justiciable because there is no evidence that Defendants have engaged in any actual or imminent violation of Plaintiffs copyrights or trademarks. Pursuant to Local Rule 7-3, Defendants counsel met and conferred telephonically with Plaintiffs counsel on June 10, 2013. The parties were unable to resolve their differences, and Defendants filed this Motion. (Declaration of G. Jill Basinger, 2.) The Motion is based upon this Notice of Motion and Motion; the accompanying Memorandum of Points and Authorities; the Separate Statement of Undisputed Material Facts, and Declaration of G. Jill Basinger, filed concurrently herewith; the pleadings and other papers filed in this action, and upon such other argument and evidence as may be presented to the Court. DATED: June 17, 2013 GLASER WEIL FINK JACOBS HOWARD AVCHEN & SHAPIRO LLP By: /s/ G. Jill Basinger PATRICIA L. GLASER G. JILL BASINGER DAVID SERGENIAN Attorneys for Defendants Sweetpea Entertainment, Inc. and Sweetpea B.V.I. Ltd. 2
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TABLE OF CONTENTS Page I. II. INTRODUCTION ........................................................................................... 1 BACKGROUND ............................................................................................. 3 A. The Dungeons & Dragons Trademarks And Copyrights .......................... 3 B. The License Agreement ............................................................................. 3 C. Hasbros Lawsuit........................................................................................ 5 III. IV. STANDARD OF REVIEW............................................................................. 5 ARGUMENT .................................................................................................. 6 A. Sweetpeas Use of the D&D Property Is Authorized Under a License Agreement Because Hasbro Did Not Send Sweetpea a Notice of Reversion or Opportunity to Cure .............................................................. 6 B. Summary Judgment of Hasbros Copyright Claim Should Be Granted Because Hasbro Cannot Establish an Allegedly Infringing Work ............ 8 C. Summary Judgment of Hasbros Copyright Claim Should Be Granted Because Hasbro Cannot Identify the Particular Elements in the D&D Copyrights that Allegedly Are Infringed ................................................. 11 D. Summary Judgment of Hasbros Trademark Claims Should Be Granted Because Hasbro Cannot Establish an Alleged Use of the Trademarks ............................................................................................... 12 E. Summary Judgment of Hasbros Declaratory Relief Claim Should Be Granted Because There is No Actual Controversy .................................. 13 V. CONCLUSION ............................................................................................. 15

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TABLE OF AUTHORITIES Page FEDERAL CASES Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ................................................................................................... 6 Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir. 2002) ..................................................................................... 9 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ............................................................................................... 5, 6 Cleary v. News Corp., 30 F.3d 1255 (9th Cir. 1994) ................................................................................... 12 Fairbank v. Wunderman Cato Johnson, 212 F .3d 528 (9th Cir. 2000) .............................................................. 5, 8, 11, 13, 14 Feist Publns, Inc. v. Rural Tele. Serv. Co., 499 U.S. 340 (1991) ................................................................................................... 9 Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) ................................................................................... 13 L.A. Printex Industries, Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir. 2012) ............................................................................... 9, 10 Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965 (9th Cir. 1992) ................................................................................... 10 Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984) ................................................................................... 9 Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904 (9th Cir. 2010) ................................................................................... 10 name.space, Inc. v. Internet Corp. for Assigned Names & Numbers, CV 12-8676 PA PLAX, 2013 WL 2151478 (C.D. Cal. Mar. 4, 2013) ................... 14 Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) ................................................................................. 12 New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194 (9th Cir. 1979) ................................................................................. 12 NTN Communications v. Interactive Network, Inc., 1995 WL 569419 (N.D. Cal. Aug. 17, 1995) .......................................................... 13 Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir. 2003) ................................................................................... 9 Seiler v. Lucasfilm, Ltd., 808 F.2d 1316 (9th Cir. 1987) ............................................................................. 9, 11 ii
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Sobini Films v. Tri-Star Pictures, Inc., Case No. CV 01-06615 ABC (RNBx), 2001 U.S. Dist. LEXIS 23509 (C.D. Cal. Nov. 21, 2001) ........................................................................................ 13 Stewart v. Wachowski, 574 F. Supp. 2d 1074 (C.D. Cal. 2005) ............................................................. 10, 11 Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th Cir. 1999) ................................................................................... 7 Surface Tech., Inc. v. Sae-A Trading Am. Corp., Case No. CV 10-6982 CAS (PJWx), 2011 U.S. Dist. LEXIS 10127 (C.D. Cal. Nov. Jan. 26, 2011)................................................................................. 11 Swedlow, Inc. v. Rohm & Haas Co., 455 F.2d 884 (9th Cir. 1972) ................................................................................... 14 Tarin v. County of Los Angeles, 123 F.3d 1259 (9th Cir. 1997) ................................................................................... 5 Thane Intern., Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) ................................................................................... 12 FEDERAL STATUTES

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15 U.S.C. 1125.......................................................................................................... 12 15 U.S.C. 1127.......................................................................................................... 13 28 U.S.C. 2201.......................................................................................................... 14 FEDERAL RULES Fed. R. Civ. P. 56 ..................................................................................... 5, 8, 11, 13, 14

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MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION Plaintiffs have not, and cannot, identify an infringing work or which of its protectable elements were infringed. Additionally, even if Plaintiffs could establish use of their intellectual property (they cannot), such use is permitted. Defendants hold a valid license in the infringed intellectual property at issue. The license cannot revert until Defendants give Plaintiffs notice that the license was to revert and provide Defendants an opportunity to cure. Defendants did not comply with this notice and cure provisions. Summary judgment should be entered against Plaintiffs. The essence of Hasbro, Inc. and Wizards of the Coast LLCs (collectively, Hasbro) complaint is the allegation that Defendants Sweetpea Entertainment Inc. and Sweetpea B.V.I. Ltd. ( Sweetpea) have infringed Hasbros purported copyrights and trademarks relating to the Dungeons & Dragons board game by developing a sequel to its 2000 film Dungeons & Dragons. There is no dispute that Sweetpea was authorized to make the 2000 film. In 1994, Hasbros predecessor granted Sweetpea a worldwide non-exclusive licensein perpetuityto produce a motion picture using Hasbros copyrights and trademarks relating to Dungeons & Dragons. The parties then amended the license agreement to allow Sweetpea to produceagain, in perpetuitysequels, prequels or remakes of the Dungeons & Dragons film. Sweetpeas potential sequel to the Dungeons & Dragons movie is authorized by the license agreement. Hasbro argues that Sweetpeas license reverted because of the fact that the license agreement provides that some of Sweetpeas rights revert to Hasbro if Sweetpea did not release a sequel within a specified period of time following the preceding Dungeons & Dragons film.1 That reversion of rights, however, only occurs
1

As background, the Original Dungeons & Dragons film was released by Sweetpea on December 8, 2000. Two sequels were also released by Sweatpea. Wrath of the Dragon God (Dragon God) was released on October 8, 2008 and The Book of Vile Darkness 1
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if Hasbro provides Sweetpea with written notice of the potential termination of the license. Moreover, termination of Sweetpeas license is only effective if Sweetpea does not commence principal photography of a sequel within 60 days after receiving the written notice. In other words, Hasbro was required to give Sweetpea notice and an opportunity to cure. Hasbro has never provided written notice of its intent to terminate the license, nor has Hasbro provided Sweetpea an opportunity to cure, and therefore Sweetpea is still licensed under the license agreement. Sweetpeas license is fatal to each claim in the Complaint. Summary judgment, therefore, must be granted on each claim in light of the license agreement. In addition to the fatal flaw of Sweetpea possessing an existing license in the intellectual property at issue, summary judgment must also be granted on Hasbros copyright claim because Hasbro has no evidence of specific, protectable elements of a copyrighted work that are present in an allegedly infringing work. To establish a prima facie case of copyright infringement, a plaintiff needs to juxtapose the specific elements of a copyrighted work with an infringing work. Here, Hasbro merely alleges that Sweetpea is in discussions to produce a Dungeons & Dragons sequel based on a script entitled Chainmail. Even though Hasbro admits it received a copy of the Chainmail script, there is no evidence that Chainmailor any other work contains specific elements that are also present in any Hasbro copyrighted work. In fact, there is no evidence of any copyrighted work. Instead, Hasbro merely refers in the complaint to 1500 copyrights without specifying which ones allegedly are infringed.

(Vile Darkness) on November 24, 2012. (Compl., 910, 4449.) Both movies were released on the Syfi Channel. (Compl., 4446.). In the Complaint Hasbro argues that these movies were insufficient for Sweetpea to maintain its license and the reversion was triggered. (Compl. 5053, 93.) The issue of whether or not the movies released by Sweetpea were sufficient to maintain its license is not addressed in this motion for summary judgment.

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For similar reasons, summary judgment on Hasbros trademark claims must be granted: Hasbro has no evidence that Sweetpea has used Hasbros trademarks. Hasbros trademarks are Dungeons & Dragons and D&D. Hasbro cannot establish, or even allege that its trademarks have been used. Without evidence of use, Hasbro cannot establish a prima facie case of trademark infringement. Finally, summary judgment should be granted on Hasbros claim for declaratory relief because Sweetpea has not released or produced a Dungeons & Dragons sequel. Accordingly, because there is no actual or imminent copyright or trademark violation, the declaratory relief claim is not justiciable. II. BACKGROUND2 A. The Dungeons & Dragons Trademarks And Copyrights

Originally published in 1974 by Tactical Studies Rules, Inc. (TSR), Dungeons & Dragons (D&D) is a fantasy role-playing game, in which players portray heroes, solve problems, and collaborate in imaginary adventures using multisided dice and intricate rules. (Compl., 19-20.) TSRs interests in the D&D Property include the trademarks in the title, Dungeons & Dragons and D&D (D&D Trademarks) and more than 1500 registered copyrights (collectively, the D&D Property). (Compl., 20, Exs. D-E.) B. The License Agreement

In May 1991, TSR granted Sweetpea Entertainment Corporation (SEC) an option to license copyrights and trademarks based on the D&D Property (the Option Agreement). (Compl., 24.) The Option Agreement included a form license agreement, which would become effective upon SECs exercise of the Option Agreement. (Compl., 24.) On January 5, 1993, the form license agreement was replaced with a new license agreement (the Agreement). (Compl., 25.) On
Unless included within the Separate Statement, the facts discussed in this section come from the Complaint, are included solely to provide context and background information, and for the purposes of this motion only are taken as true.
2

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December 15, 1993, SEC assigned these rights to Defendant Sweetpea B.V.I. Ltd. (Sweetpea). (Compl., 26.) On or about September 2, 1994, Sweetpea exercised its option, and the Agreement went into effect. (SSMF 1, Compl., 28.) The Agreement granted SEC an irrevocable, universe-wide license to use the D&D Property in perpetuity, to make one motion picture based on the D&D Property. (SSMF 2, Agmt., 2; Compl., 24.) The Agreement provided that SECs license would revert to TSR if the motion picture was not commenced within three years; however, for the reversion to be effective, the Agreement required TSR to provide SEC with formal notice and an opportunity to cure any impending reversion or claim of a default: In the event that a motion picture or television production (i.e., principal photography) based on the Property has not commenced within three (3) years from the date after the Option is exercised by Licensee, then Licensor shall have the right to elect to terminate this Agreement by written notice to Licensee not less than thirty (30) days after such three (3) year period and such notice shall become effective as of the 60th day after Licensees receipt of same, unless Licensee, its successor or assigns commence production (i.e., principal photography) within sixty (60) days after receipt by Licensee of said notice. (SSMF 3, Agmt., 15 (emphasis added).) On or around March 19, 1998, TSR and Sweetpea amended the Agreement (the First Amendment). (SSMF 6, Compl., 30.) The First Amendment specified the timing of the production of the Picture and granted Sweetpea the right to make sequels, prequels, or remakes based on the Picture (the Sequel Rights). (SSMF 7, First Amend., 1, 6.) Unless Sweetpea exercised its Sequel Rights by periodically making sequels, prequels, and remakes of movies based on Dungeons & Dragons, those rights would revert on a rolling basis to TSR on the earlier of (i) five (5) 4
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years of the initial U.S. release or (ii) seven (7) years from final directors cut of the immediately prior picture. (SSMF 7, First Amend., 6.) On or around June 8, 1998, TSR and Sweetpea entered into the Second Amendment, which included an integration clause, stating that the Agreement and both of its amendments constituted a valid, binding, enforceable, and fully integrated agreement between the parties. (SSMF 10, Second Amend., 12.) Neither the First nor the Second Amendment altered the notice and opportunity to cure requirements of Paragraph 15 of the original Agreement. (SSMF 9, 11; see generally First Amendment and Second Amendment.) C. Hasbros Lawsuit

On May 13, 2013, Plaintiffs filed the Complaint in this Court alleging that Sweetpea has infringed Hasbros copyrights and trademarks by working on development of another possible sequel to the Dungeons & Dragons motion picture. The Complaint asserts five causes of action for copyright infringement, trademark infringement, false designation of origin, trademark dilution, and declaratory relief. (Compl., 61-98.) Hasbro cannot establish, and has not even alleged that it provided written notice to Sweetpea electing to terminate the Agreement. (SSMF 13, 14.) III. STANDARD OF REVIEW In federal court, summary judgment is required under Fed. R. Civ. P. 56(c) when the evidence, viewed in the light most favorable to the nonmoving party, shows that there is no genuine issue as to any material fact. See Tarin v. County of Los Angeles, 123 F.3d 1259, 1263 (9th Cir. 1997). The moving party bears the initial burden of establishing the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). That burden may be met by showingthat is, pointing out to the district courtthat there is an absence of evidence to support the nonmoving partys case. Id. at 325; Fairbank v. Wunderman Cato Johnson, 212 F .3d 528, 532 (9th Cir. 2000) (holding that the Celotex showing 5
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can be made by pointing out through argument the absence of evidence to support plaintiffs claim); see also Fed. R. Civ. P. 56(c)(1)(B) (a party asserting that a fact cannot be disputed may support the assertion by showing that an adverse party cannot produce admissible evidence to support the fact.); Committee Notes on Rule 562010 Amendment (Subdivision (c)(1)(B) recognizes that a party need not always point to specific record materials. [A] party who does not have the trial burden of production may rely on a showing that a party who does have the trial burden cannot produce admissible evidence to carry its burden as to the fact.). Once the moving party has met its initial burden, Rule 56(e) requires the nonmoving party to go beyond the pleadings and identify facts which show a genuine issue for trial. See Celotex, 477 U.S. at 323-24; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). IV. ARGUMENT A. Sweetpeas Use of the D&D Property Is Authorized Under a License Agreement Because Hasbro Did Not Send Sweetpea a Notice of Reversion or Provide Sweetpea an Opportunity to Cure

Sweetpea is entitled to summary judgment on Hasbros entire complaint because each of Hasbros claims is defeated by Sweetpeas license to use the D&D Property in perpetuity in connection with a sequel to the Dungeons & Dragon motion picture. Each of Hasbros claims is predicated on the assumption that Sweetpea is not authorized to use the D&D Property. But under the express terms of the license agreement between the parties (the Agreement), Sweetpea is licensed to use every copyright and trademark at issue in this lawsuit in connection with a Dungeons & Dragons sequel film. The Agreement granted Sweetpea an irrevocable, universe-wide license, in perpetuity, to use the D&D Property (which includes all copyrights and trademarks relating to the Dungeons & Dragons game) to make sequels, prequels, or remakes based on the Dungeons & Dragons motion picture. (SSMF 2, Agmt. 2; First 6
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Amend., 6.) Sweetpea therefore has an irrevocable license to the copyrights and trademarks at issue in connection with a Dungeons & Dragons sequel, prequel or remake. Every act of alleged infringement discussed in the Complaint is authorized under the Agreement and Amendments. See Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999) (Generally, a copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement and can sue only for breach of contract.) (quoting Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998)); 4 McCarthy on Trademarks and Unfair Competition 25:30 (4th ed.) (Every license carries with it a waiver of the right of the trademark owner to sue for infringement arising out of acts that fall within the scope of the license.). The Agreement does provide for reversion of Sweetpeas license rights under certain conditions, but Hasbro has not met those conditions (nor has it so alleged). The plain language of the Agreement provides that Sweetpeas license will not revert to Hasbro unless Hasbro has provided written notice to Sweetpea of Hasbros intent to terminate the Agreement. (SSMF 3, Agmt., 15.) Furthermore, the terms of the Agreement clearly provide that mere written notice does not automatically terminate the Agreement. Even if Hasbro were to provide written notice of its intent to terminate the Agreement, Sweetpea would still have an opportunity to avoid reversion of its rights to Hasbro by commencing principal photography on a sequel to the Dungeons and Dragons movie within 60 days of the written notice of termination. (SSMF 3, Agmt., 15.) Moreover, the Agreement contains a general notice-and-cure provision that provides that a partys act or omission cannot be deemed a default or breach unless the party receives proper written notice of the alleged breach or default, which in any event can be cured within 10 business days of the written notice. (SSMF 4, Agmt., 19(b).) The Agreement further provides that Sweetpea must be given an opportunity to cure any unauthorized use of the D&D Property within 20 business 7
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days of receiving written notice of default or breach. (SSMF 5, Agmt., 19(c).) Hasbro has the burden of establishing that it provided written notice to Sweetpea of its intent to terminate the Agreement and provided Sweetpea an opportunity to cure. Unless it can produce evidence that it provided Sweetpea the requisite notice and opportunity to cure, summary judgment should be entered against Hasbro. See Fairbank, 212 F .3d at 532 (the moving party may meet its initial burden on summary judgment by pointing out through argument the absence of evidence to support plaintiffs claim); Fed. R. Civ. P. 56(c)(1)(B) (a party asserting that a fact cannot be disputed may support the assertion by showing that an adverse party cannot produce admissible evidence to support the fact.). Sweetpeas rights to use the D&D Property in connection with a sequel to the Dungeons & Dragons film have not reverted to Hasbro. Any use by Sweetpea of the D&D Property in connection with a Dungeons & Dragons sequel, prequel or remake is authorized under the Agreement. In light of Sweetpeas irrevocable, universe-wide license, in perpetuity, to the D&D copyrights and trademarks, none of the claims in the Complaint can withstand summary judgment. B. Summary Judgment of Hasbros Copyright Claim Should Be Granted Because Hasbro Cannot Establish an Allegedly Infringing Work

Summary judgment must be granted on Hasbros copyright claim because Hasbro has not presented evidence of any work by Sweetpea that allegedly infringes the D&D Property. Identification of the allegedly infringing work or product is fundamental to a copyright claim, and Hasbros complete absence of evidence on that issue is fatal to its copyright claim. See Fairbank, 212 F .3d at 532 (the moving party may meet its initial burden on summary judgment by pointing out through argument the absence of evidence to support plaintiffs claim); Fed. R. Civ. P. 56(c)(1)(B) (a party asserting that a fact cannot be disputed may support the assertion by showing that an adverse party cannot produce admissible evidence to support the fact.). 8
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To prevail on a copyright infringement claim, a plaintiff must prove: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Feist Publns, Inc. v. Rural Tele. Serv. Co., 499 U.S. 340, 361 (1991); Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1173 (9th Cir. 2003). To survive summary judgment on a copyright claim, a non-moving plaintiff must show a genuine issue of material fact as to both access and substantial similarity. L.A. Printex Industries, Inc. v. Aeropostale, Inc., 676 F.3d 841, 846 (9th Cir. 2012). To satisfy the substantial similarity prong, a plaintiff must show that the infringer had access to plaintiffs copyrighted work and that the works at issue are substantially similar in their protected elements. Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002); Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984) (applying substantial similarity test to derivative works). There can be no proof of substantial similarity and thus of copyright infringement unless [the plaintiffs] works are juxtaposed with [the alleged infringers work] and their contents compared. Seiler v. Lucasfilm, Ltd., 808 F.2d 1316, 1319 (9th Cir. 1987). Here, Hasbro has not even alleged, much less come forward with admissible evidence, that any element in any of its copyrighted works is also present in any allegedly infringing work by Sweetpea. (SSMF 16, see generally Compl.) In fact, the pleadings fail to identify any allegedly infringing elements. Instead, Hasbro alleges that Sweetpea and Warner Brothers have entered into discussions concerning a possible Dungeons & Dragons film based on a script entitled Chainmail. (Compl. 5455.) But even though Hasbro admits it has a copy of the Chainmail script (SSMF 12, id. 54, 55), it has not pointed to anything in the Chainmail scriptor any other workthat infringes any of Hasbros copyrights. (SSMF 16, see generally Compl.) It is not sufficient for Hasbro to argue that the mere idea of a sequel to the Dungeons & Dragons movie infringes Hasbros copyrights. To establish a copyright infringement claim, a plaintiff must show that specific, protectable elements in a 9
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protected work are present in an allegedly infringing work. See L.A. Printex, 676 F.3d at 849 (Because copyright law protects expression of ideas, not ideas themselves, we distinguish protectable from unprotectible elements and ask only whether the protectable elements in two works are substantially similar.).3 Hasbros lack of evidence of specific elements of an allegedly infringing work is fatal to its copyright claim. See Stewart v. Wachowski, 574 F. Supp. 2d 1074, 1103 (C.D. Cal. 2005) (Because Stewart bears the burden of proof on striking similarity, her failure to submit the Terminator and Matrix films in opposition to the motions necessitates the entry of summary judgment against her.). More fundamentally, Hasbro cannot prevail on its claim for copyright infringement because the work that it apparently alleges is infringing (i.e., a possible sequel to the Dungeons & Dragons film (see Compl. 63)), by its own admission does not even exist. Plaintiffs own allegations state that Warner Brothers has only expressed an interest in creating a Dungeons & Dragons motion picture based on the Chainmail script. (Compl., 54.) Merely expressing an interest in creating a permanent or concrete work falls far short of the showing required for establishing copyright infringement. See Lewis Galoob Toys, Inc. v. Nintendo of America, Inc., 964 F.2d 965, 96768 (9th Cir. 1992) (finding that device was not derivative, and therefore non-infringing, because it was not in permanent or concrete form); Seiler, 808 F.2d at 1320 (The copyright laws give legal protection to the objective manifestations of an artists ideas, just as the law of contract protects through its multifarious principles the meeting of minds evidence in the contract.) ; see also Surface Tech., Inc. v. Sae-A Trading Am. Corp., Case No. CV 10-6982 CAS (PJWx),
See also Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913 (9th Cir. 2010) (To distinguish between permissible lifting of ideas and impermissible copying of expression, we have developed a two-part extrinsic/intrinsic test. At the initial extrinsic stage, we examine the similarities between the copyrighted and challenged works and then determine whether the similar elements are protectable or unprotectable. When the unprotectable elements are filtered out, whats left is an authors particular expression of an idea, which most definitely is protectable.) (citations omitted).
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2011 U.S. Dist. LEXIS 10127, *18 (C.D. Cal. Nov. Jan. 26, 2011) (dismissing complaint for copyright infringement for failing to allege facts indicating what acts constitute the alleged infringement, and which copyrights have allegedly been infringed). Hasbros failure and inability to point to an actual, existing work is fatal to its copyright claim. C. Summary Judgment of Hasbros Copyright Claim Should Be Granted Because Hasbro Cannot Identify the Particular Elements in the D&D Copyrights that Allegedly Are Infringed

Similarly, Hasbros inability to identify which of its copyrighted works are allegedly infringed is grounds for granting summary judgment on its copyright claim. Rather than specify exactly which of Hasbros copyrights have been infringed, Plaintiffs simply attach a 40-page chart that merely identifies more than 1500 registered copyrights. (Compl., 62, Ex. E.) Identification of copyright registrations will not be sufficient to establish copyright infringement at trial, and Hasbro cannot meet its burden on summary judgment without presenting specific elements in a copyrighted work that it contends are protectable and present in the allegedly infringing work. See Stewart, 574 F. Supp. 2d at 1103 (Because Stewart bears the burden of proof on striking similarity, her failure to submit the Terminator and Matrix films in opposition to the motions necessitates the entry of summary judgment against her.); Seiler, 808 F.2d at 1319 (There can be no proof of substantial similarity and thus of copyright infringement unless [the plaintiffs] works are juxtaposed with [the alleged infringers work] and their contents compared.). Hasbro has not specified which elements of its copyrighted works are protectable and are allegedly infringed by Sweetpea. (SSMF 15, see generally Compl.) See Fairbank, 212 F .3d at 532 (the moving party may meet its initial burden on summary judgment by pointing out through argument the absence of evidence to support plaintiffs claim); Fed. R. Civ. P. 56(c)(1)(B) (a party asserting that a fact cannot be disputed may support the assertion by showing that an adverse party cannot produce admissible evidence to 11
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support the fact.). Therefore, summary judgment must be granted on Hasbros copyright claim. D. Summary Judgment of Hasbros Trademark Claims Should Be Granted Because Hasbro Cannot Establish an Alleged Use of the Trademarks

As with Hasbros copyright claim, its trademark claims are fatally flawed because Hasbro cannot identify an alleged use of its trademarks. To prevail on a claim of trademark infringement under the Lanham Act, the owner of a federally registered mark must show that the defendant used the mark in interstate commerce in connection with the sale, offering for sale, distribution, or advertising of any goods or services, and that such use is likely to cause consumer confusion. 15 U.S.C. 1114(1); see also Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 114445 (9th Cir. 2011). Here, Defendants cannot show either that its marks were used in interstate commerce or that the use of its trademarks is likely to cause customer confusion. Similar elements apply to claims under for false designation of origin. 15 U.S.C. 1125(a); New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir. 1979). The purpose of the Lanham Act is to deter false designation of origin by prevent[ing] individuals from misleading the public by placing their competitors work forward as their own. Cleary v. News Corp., 30 F.3d 1255, 1260 (9th Cir. 1994). Thus, the Lanham Act makes actionable only designation of origin that causes public confusion or mistake over the true proprietor of a work. 15 U.S.C. 1125(a). To prove a trademark dilution claim, a plaintiff must demonstrate that the mark used by the alleged diluter is identical, or nearly identical, to the protected mark. Thane Intern., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 905 (9th Cir. 2002). Additionally, the plaintiff also must prove that (1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendants use 12
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began after the mark became famous; and (4) the defendants use of the mark is likely to cause dilution by blurring or dilution by tarnishment. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008) (emphasis added). The Act defines use in commerce as occurring when the subject mark is placed in any manner on the goods and the goods are sold or transported in commerce. 15 U.S.C. 1127. Here, Hasbros trademark claims fail as a matter of law because Hasbro cannot establish that Sweetpea has used its trademarks. It is Hasbros burden to establish that Sweetpea has used its protected trademark in commerce. Hasbro must establish that Sweetpea has made use of the D&D Trademarks under trademark law. Nor is Sweetpeas mere alleged intent to infringe on the D&D Trademarks sufficient to satisfy the use in commerce requirement under the Lanham Act. See Sobini Films v. Tri-Star Pictures, Inc., Case No. CV 01-06615 ABC (RNBx), 2001 U.S. Dist. LEXIS 23509, *2021 (C.D. Cal. Nov. 21, 2001) (plaintiffs in declaratory relief action had not taken concrete steps to constitute trademark or copyright infringement even though they had acquired rights to the Zorro character, written a detailed treatment for a motion picture featuring the Zorro character, and developed key art displaying the Zorro character to be used in promoting the development and production of the picture); NTN Communications v. Interactive Network, Inc., 1995 WL 569419, at *2 (N.D. Cal. Aug. 17, 1995) (dismissing claim because there was no allegation that defendant had already taken steps to begin marketing its infringing product). Accordingly, summary judgment on Hasbros trademark claims must be granted because Hasbro has no evidence that Sweetpea has used its trademarks. Fairbank, 212 F .3d at 532; Fed. R. Civ. P. 56(c)(1)(B). E. Summary Judgment of Hasbros Declaratory Relief Claim Should Be Granted Because There is No Actual Controversy

Summary judgment of Hasbros declaratory relief claim must be granted because Hasbro has no evidence of an actual controversy. As discussed above, 13
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Sweetpea has not yet produced a sequel to the Dungeons & Dragons film, and Hasbro is unable to present any evidence that Sweetpea has or will engage in any actual or imminent infringement of Hasbros copyrights and trademarks. For a claim for declaratory relief pursuant to 28 U.S.C. 2201 to be justiciable, the Ninth Circuit requires actual or imminent infringement. Swedlow, Inc. v. Rohm & Haas Co., 455 F.2d 884, 886 (9th Cir. 1972) (patent owner was not entitled to maintain action for declaratory judgment that defendants acts threatened infringement on theory that plant being built by defendant would employ inventions claimed in patents and would infringe them when placed in operation). In Swedlow, the threat of infringement was not ripe because the defendants plant had progressed only to stage where floor and shell of building were in place, so that alleged threats of infringement were too remote and unduly speculative and a decision would amount to an impermissible advisory opinion. Id. An existing controversy is manifested by specific acts of alleged infringement or an immediate capability and intent to infringe. Id.; name.space, Inc. v. Internet Corp. for Assigned Names & Numbers, CV 12-8676 PA PLAX, 2013 WL 2151478 (C.D. Cal. Mar. 4, 2013) (same with respect to trademark claims). Here, there is no evidence that Sweetpea has engaged in any actual or imminent violation of Hasbros copyrights or trademarks. There is no evidence that Sweetpea has filmed a new sequel to Dungeons & Dragons or that the new sequel contains protected elements of copyright or trademarked work. Despite having a copy of the Chainmail script, Hasbro has no evidence of (and has not alleged) any copyright or trademark violation based on the Chainmail script. At this stage, Hasbro can only speculate that Sweetpea might violate Hasbros copyrights or trademarks, although they have not specified which copyrights or trademarks. That is not sufficient under 28 U.S.C. 2201. Summary judgment on Hasbros claim for declaratory relief must be granted on the ground that it is not justiciable. Fairbank, 212 F .3d at 532; Fed. R. Civ. P. 56(c)(1)(B). 14
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V.

CONCLUSION For the foregoing reasons, this Court should grant summary judgment in favor

of Defendants on all claims in the Complaint, or, in the alternative, grant partial summary judgment on one or more claims in the Complaint in favor of Defendants. GLASER WEIL FINK JACOBS HOWARD AVCHEN & SHAPIRO LLP By: /s/ G. Jill Basinger PATRICIA L. GLASER G. JILL BASINGER DAVID SERGENIAN Attorneys for Defendants Sweetpea Entertainment, Inc. and Sweetpea B.V.I. Ltd.

DATED: June 17, 2013

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