Reply to Anti-SLAPP Motion to Strike Defendant’s Counterclaims
United States District Court, [district]
[Name of Plaintiff], Plaintiff,
v.
[names of Defendants], Defendants.
[case number].
[date].
Reply in Support of Anti-SLAPP Motion to Strike Defendant’s Counterclaims or in the Alternative Motion to Dismiss Pursuant to 12(b)(6)
[names and contact information of Counsel for Plaintiff], for plaintiff [name of Plaintiff].
Judge: [name of Judge].
TABLE OF CONTENTS
I. Introduction
A. Counsel Properly Satisfied Local Rule 7-3
II. The Opposition Concedes That the First and Second Counterclaims Arise out of Plaintiff’s Lawsuit
A. The First and Second Counterclaims Arise out of Three of the Four Categories Enumerated in the Anti-SLAPP Statute
B. Plaintiff Has Not Waived His Right to Claim Infringement
C. Granting This Motion Would Not Deprive Defendant of Remedies Because Anti-SLAPP Relief Only Applies Unmeritorious Claims
III. Defendant’s Own Statements Definitively Establish That Defendant Has No Probability of Prevailing on the Merits of Its First and Second Counterclaims
A. Defendant Cannot Prevail on Its First Counterclaim Because Defendant Admits That It Does Not Own the Copyright at Issue
B. Defendant Cannot Prevail on Its Second Counterclaim Because It Has Not Sufficiently Alleged a Breach of the Implied License
C. Even if Plaintiff’s Anti-SLAPP Motion Is Denied, Defendant Is Not Entitled to Attorneys’ Fees
IV. Plaintiff’s Motion to Dismiss Should Be Granted as to the Third and Fourth Counterclaims
A. The First and Second Counterclaims Fail to State a Claim upon Which Relief Can Be Granted
B. Defendant Has Failed to Allege Copyright Misuse Because Plaintiff Is Not Attempting to Assert Any Rights Outside the Scope of the Copyright Act
C. Regardless of Whether Defendant Can Ultimately Be Awarded Attorneys’ Fees, It Is Not a Cause of Action
V. Conclusion
TABLE OF AUTHORITIES
CASES
A&MRecords v. Napster, Inc., 239 F.3d 1004, 1027 (9th Cir. 2001)
Am. Dental Ass’n v. Khorrami, 2004 WL 3486524, at *3 (C.D. Cal. 2004)
Asset Mktg. Sys. v. Gagnon, 542 F.3d 748, 757 (9th Cir. 2008)
Brandon v. Sherwood (In re Sann), 546 B.R. 850, 852-53 (Bankr. D. Mont. 2016)
Briggs v. Eden Council for Hope & Opportunity, 19 Cal. 4th 1106, 1115(1999)
Carroll Co. v. Sherwin-Williams Co., 848 F. Supp. 2d 557, 570 (D. Md. 2012)
Davis v. Passman, 442 U.S. 228, 238 (1979)
Decker v. U.D. Registry, Inc., 105 Cal. App. 4th 1382, 1392, (2003)
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)
Heller v. NBC Universal, Inc., 2016 U.S. Dist. LEXIS 195031, at *21-22 (C.D. Cal. Mar. 30, 2016)
In re Marriage of Reese & Guy, 73 Cal. App. 4th 1214, 1220 (1999)
Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 977-79 (4th Cir. 1990)
Makaeff v. Trump Univ., Ltd. Liab. Co., 736 F.3d 1180, 1187 (9th Cir. 2013)
MDY Indus., LLC v. Blizzard Entm’t, Inc., 629 F.3d 928, 940 (9th Cir. 2010)
Navellier v. Sletten, 29 Cal. 4th 82, 89-90 (2002)
Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984)
Practice Mgmt. Info. Corp. v. American Med. Ass’n, 121 F.3d 516, 520 (9th Cir. 1997)
Valente-Kritzer Video v. Pinckney, 881 F.2d 772, 774 (9th Cir. 1989)
STATUTES
17 U.S.C. § 106
17 U.S.C. § 204
Cal. Civ. Proc. Code § 425.16(c)(1)
Cal. Civ. Proc. Code § 425.16(e)
OTHER AUTHORITIES
Restatement (Second) Contracts § 235(2)
RULES
Local Rule 7-3
I. INTRODUCTION
Defendant’s Opposition focuses heavily on arguing the underlying facts of this lawsuit rather than focusing on the actual allegations in its Counterclaims which are at issue in this Motion. Regardless of the nature of the underlying facts, Defendant’s counterclaims, as alleged in its pleadings, fail to state cognizable claims for relief. Furthermore, Defendant affirmatively concedes that its First and Second Counterclaims arise out of [name of Plaintiff]’s (“Plaintiff”) filing of this lawsuit, which the California Supreme Court has explained on multiple occasions is protected speech and petitioning activity. Defendant also concedes, contrary to the language contained in its pleading, that it does not in fact own the copyright to the [description of Image] Image. This admission is fatal to its First and Second Counterclaims such that Defendant has not shown it has a probability of prevailing on the merits.
Furthermore, Defendant has not explained how it can maintain its claims for copyright misuse given that Plaintiff’s infringement claim arises solely out of the exclusive rights granted to copyright holders in the Copyright Act. Nor has Defendant explained how it is procedurally proper for Defendant to maintain Fourth Counterclaim since, as multiple courts have recognized, attorneys’ fees is a remedy and not an independent cause of action.
Therefore, Plaintiff’s Motion must be granted in its entirety.
A. Counsel Properly Satisfied Local Rule 7-3
On [date], Plaintiff’s counsel sent an email to Defendant’s counsel requesting to meet and confer regarding a Motion to Dismiss the Counterclaims and a Motion to Strike Defendant’s Affirmative Defenses since Local Rule 7-3 requires that counsel meet and confer at least seven days before the filing of any contemplated motions. A call was set for [date], well in advance of Plaintiff’s [date] deadline to respond to the Counterclaims.
Prior to the call, Plaintiff’s counsel began to research the issues more thoroughly to prepare for the meet and confer. After researching the issues, Plaintiff’s counsel determined that not only were the First and Second Counterclaims potentially subject and the Anti-SLAPP statute, but that all four Counterclaims likely violated Rule 11 of the Federal Rules of Civil Procedure. Plaintiff’s counsel then decided to draft a letter to ensure that Defendant had a written record to review and pass along as needed in light of Plaintiff’s position that Defendant’s Counterclaims violated Rule 11 of the Federal Rules of Civil Procedure.
Prior to the [date] meet and confer call, Plaintiff’s counsel sent a copy of the Rule 11 letter via email to Defendant’s counsel. Defendant’s counsel stated that she would not have time to review the Rule 11 letter before the call and proposed to reschedule the meet and confer for [date], which would be [number] days before Plaintiff’s response deadline and would not afford Plaintiff enough time to meet and confer in compliance with Local Rule 7-3. Since the substance of the telephonic meet and confer was not dependent on the contents of the Rule 11 letter, Plaintiff’s counsel stated in an email that he would like to proceed with the call as scheduled. Had Plaintiff’s counsel not sent the Rule 11 letter, the telephonic meet and confer would have been substantively identical to the one that in fact took place.
On [date], Plaintiff’s counsel conferred with Defendant’s counsel by telephone regarding the substance of Plaintiff’s proposed Motions. During the meet and confer call, Plaintiff’s counsel stated that in addition to bringing a 12(b)(6) motion on all four Counterclaims, Plaintiff was considering bringing an Anti-SLAPP motion as to the First and Second Counterclaims. Plaintiff’s counsel stated that the legal basis for the Anti-SLAPP motion would be the same for his 12(b)(6) motion to dismiss, i.e., that Defendant has failed to state a claim upon which relief can be granted for the First and Second Counterclaims. Furthermore, Plaintiff’s counsel also stated on the call that the reason Plaintiff was contemplating bringing an Anti-SLAPP motion for the First and Second Counterclaims was because it appeared the alleged “breach” claim arose out of Plaintiff’s First Amendment right to petition. Defendant’s counsel merely listened and did not respond as Plaintiff’s counsel walked through the legal basis for why Defendant had failed to state a claim. Plaintiff’s counsel also stated to Defendant’s counsel that the purpose of the accompanying Rule 11 letter was to make sure that Defendant had a written record to review and pass along as needed in light of Plaintiff’s position that Defendant’s Counterclaims violated Rule 11 of the Federal Rules of Civil Procedure.
When Plaintiff’s counsel was done speaking, Defendant’s counsel asked how long Defendant had to correct the Rule 11 deficiencies and stated that she would “pass along” the Rule 11 letter to her firm’s principal attorney to review and get back to Plaintiff’s counsel. [Number] days after the meet and confer call with Defendant’s counsel, Plaintiff filed his Motion.
In its Opposition to Plaintiff’s Motion, Defendant complains that Plaintiff’s counsel stated on the meet and confer call that Plaintiff was only “considering” bringing an Anti-SLAPP Motion but that he did not state that he actually planned to bring one. This argument falls flat however since Local Rule 7-3 specifically states that counsel are to meet and confer regarding any “contemplated motion.” It is thus not relevant at the time of the meet and confer whether Plaintiff had definitively decided to bring and Anti-SLAPP or was merely considering it.
Regardless, Plaintiff’s counsel clearly explained on the meet and confer call that the legal grounds for the Anti-SLAPP Motion would be substantively identical to its 12(b)(6) Motion for failure to state a claim, and Defendant’s counsel acknowledges that Plaintiff’s counsel spoke about the potential Anti-SLAPP on the meet and confer call.
Therefore, counsel for the parties properly met and conferred as required by Local Rule 7-3.
II. THE OPPOSITION CONCEDES THAT THE FIRST AND SECOND COUNTERCLAIMS ARISE OUT OF PLAINTIFF’S LAWSUIT
Defendant’s First and Second Counterclaims arise out of three categories of protected speech and petitioning enumerated in the Anti-SLAPP statute because, as the California Supreme Court has repeatedly recognized, claims for relief filed in federal court are protected by the Anti-SLAPP statute. Furthermore, Plaintiff has not waived his right to seek an infringement claim, nor would Defendant be denied a remedy if the Anti-SLAPP motion is granted. Therefore, Plaintiff’s Motion should be granted.
 A. The First and Second Counterclaims Arises out of Three of the Four Categories Enumerated in the Anti-SLAPP Statute
As Defendant accurately states in its Opposition, the Anti-SLAPP statute encompasses four broad categories of protected speech and petitioning, three of which are implicated here: “any written or oral statement or writing made before a … judicial proceeding.” Cal. Civ. Proc. Code § 425.16(e)(1); “any written or oral statement or writing made in connection with an issue under consideration … [by a] judicial body,” Id. § 425.16(e)(2), and “any other conduct in furtherance of the exercise of the constitutional right of petition or the constitutional right of free speech in connection with a public issue or an issue of public interest,” Id. § 425.16(e)(4).
In its Opposition, Defendant admits that Plaintiff’s “copyright infringement claim was itself a breach of the license he granted to Defendant.” Opposition, p. [number]. In other words, Defendant admits that its First and Second Counterclaims for breach do in fact arise out of Plaintiff’s filing of this lawsuit and the statements contained therein. As the California Supreme Court has recognized, “[a] claim for relief filed in federal district court indisputably is a ‘statement or writing made before a … judicial proceeding.’” Navellier v. Sletten, 29 Cal. 4th 82, 89-90 (2002) (“Plaintiffs’ cause of action for breach of contract is grounded in allegations that Sletten filed counterclaims in the federal action.”) (quotation and citation omitted); see also Briggs v. Eden Council for Hope & Opportunity, 19 Cal. 4th 1106, 1115 (1999) (“As pertinent here, the constitutional right to petition … includes the basic act of filing litigation.” (citation and quotation omitted, ellipsis in original)).
The claims in Plaintiff’s lawsuit constitute written statements before a judicial proceeding (§ 425.16(e)(1)), are connected with an issue under consideration by a judicial body, (§ 425.16(e)(2)), and constitute conduct in furtherance of Plaintiff’s constitutional right to petition. Defendant’s unequivocal admission that Plaintiff’s copyright claim was the breach alleged in the First and Second Counterclaims, coupled with the actual wording of Defendant’s counterclaims as described in Plaintiff’s original Motion, establish that the First and Second Counterclaims “arise” out of Plaintiff’s protected speech and petitioning activity.
Therefore, Plaintiff has satisfied the first prong of the Anti-SLAPP analysis with respect to Defendant’s First and Second Counterclaims.
 B. Plaintiff Has Not Waived His Right to Claim Infringement
Defendant further argues that Plaintiff has not satisfied the first prong because he has allegedly “waived” his right to bring a copyright infringement lawsuit. As an initial matter, this argument has nothing to do with the first prong of the Anti-SLAPP analysis because it is geared towards the underlying merits of the lawsuit rather than whether Defendant’s claims arise out of protected speech. Additionally, this argument must fail because Plaintiff’s Anti-SLAPP Motion does not concern whether Plaintiff can state a claim for copyright infringement, rather it concerns whether Defendant can maintain its First and Second Counterclaims. Defendant has not moved to dismiss Plaintiff’s infringement claim at this stage, therefore any argument that Plaintiff’s claim is waived or otherwise defective is irrelevant to the sufficiency of Defendant’s pleadings.
Regardless, Plaintiff has not waived his ability to claim copyright infringement. The Ninth Circuit has recognized that, even where a contractual relationship exists, a copyright holder may sue for infringement if the use exceeds the scope of the license. MDY Indus., LLC v. Blizzard Entm’t, Inc., 629 F.3d 928, 940 (9th Cir. 2010). Plaintiff does not dispute that he created educational materials and advertisements for Defendant that included the [description of Image] Image (“the Image”), and that he allowed the Defendant to use those materials. Instead, the crux of Plaintiff’s infringement claim is that Defendant used the Image outside the scope of those materials in various ways that Plaintiff never authorized.
C. Granting This Motion Would Not Deprive Defendant of Remedies Because Anti-SLAPP Relief Only Applies Unmeritorious Claims
Finally, Defendant makes the specious argument that “if Plaintiff were to prevail on his anti-SLAPP motion, then there would be no remedy for Defendant with respect to” the alleged breach of contract. Opposition, p. [number]. This argument ignores the realities of the two-pronged approach to the Anti-SLAPP analysis. Plaintiff must show both that the claim arises out of protected activity and that Defendant has no probability of prevailing on the merits of its counterclaims. Therefore, even if Defendant’s counterclaims arise out of protected activity, so long as they are meritorious, or at least seemingly so, they will survive the Anti-SLAPP analysis and those claims will be adjudicated with Defendant being entitled to any available remedies. However, if, as here, Defendant’s claims fail to state a cognizable claim for relief or are otherwise deemed to be unmeritorious, Defendant would not be deprived of any }remedy because no remedy can be had for an insufficient or unmeritorious claim in the first place.
Therefore, Anti-SLAPP relief would not deprive Defendant of any remedy.
In conclusion, Plaintiff has sufficiently satisfied the first prong of the Anti-SLAPP analysis by establishing that Defendant’s First and Second Counterclaims arise out of protected speech and petitioning activity. Plaintiff’s Motion should therefore be granted.
III. DEFENDANT’S OWN STATEMENTS DEFINITIVELY ESTABLISH THAT DEFENDANT HAS NO PROBABILITY OF PREVAILING ON THE MERITS OF ITS FIRST AND SECOND COUNTERCLAIMS
Defendant has not carried its burden to show that it has a probability of prevailing on the merits of its First and Second Counterclaims. Defendant cannot prevail on its First Counterclaim because it admits in its Opposition that it does not own the copyright to the Image, a concession at odds with its claim for relief as plead. Defendant likewise has not shown a probability of prevailing on its Second Counterclaim because it has not and cannot allege a breach of the supposed implied license. Finally, even if the Anti-SLAPP motion is denied, Defendant is not entitled to its attorneys’ fees because it has not shown that this Motion was frivolous or brought with intent to create an unnecessary delay.
A. Defendant Cannot Prevail on Its First Counterclaim Because Defendant Admits That It Does Not Own the Copyright at Issue
In its First Counterclaim for Breach of Contract, Defendant alleges the following relevant terms of the alleged contract:
14. By oral agreement, Defendant purchased all rights, title and interest to the pictures it commissioned from Plaintiff …The parties expressly intended that by this transaction Plaintiff would thereby transfer ownership to Defendant of all ownership interests of the Image and the other photographs which Plaintiff took at that time as a part of the Defendant assignment.
  15. Plaintiff and Defendant did not discuss any restrictions or scope of the transfer of ownership rights in the photographs—and Defendant did not agree to any such restrictions—because Defendant purchased the photographs …
16.…At no time from the original transfer of the photographs from Plaintiff to Defendant until [year] did Plaintiff suggest that he or anyone other than Defendant retained an ownership interest in the Image …
17. Because Defendant had full ownership of the Image in or about [date], Defendant applied for trademark registration for the Image.
 …
22. On or about [date], Defendant negotiated and paid Plaintiff’s company, [ name of company], for the unrestricted rights, title, and interest in the Image and other photographs taken by Plaintiff for that assignment …
 …
24. During the course of the parties’ negotiations, Plaintiff never attempted to reserve for himself or his company any rights in the Image or any of the other photographs that Defendant commissioned Plaintiff to take on Defendant’s behalf. Through the purchase of the photographs, Plaintiff intended to and did transfer to Defendant all right, title and ownership interest in the Image.
Counterclaim [page numbers], (emphasis added).
As shown by the quoted passages above, Defendant’s pleadings clearly state claims that the alleged contract was for a complete transfer of all rights to the Image, including the copyright, from Plaintiff to Defendant. In other words, the First Counterclaim alleges that Defendant, and not Plaintiff, owns the copyright to the Image by virtue of an oral contract transferring all rights to Defendant. Based on its alleged ownership of the Image, Defendant further claims in its pleadings that Plaintiff allegedly “breached” the contract by claiming to be the true copyright owner of the Image and by trying to assert ownership rights against Defendant. Thus, the theory behind Defendant’s First Counterclaim for Breach of Contract is entirely dependent on Defendant allegedly being the true rights holder to the Image.
Despite these unequivocal allegations of complete ownership contained in Defendant’s pleadings, in its Opposition and concurrently submitted declarations, Defendant admits that it does not in fact own the copyright to the Image. Furthermore, in the events leading up to Plaintiff’s lawsuit, Defendant repeatedly acted in a manner consistent with an understanding that it did not own the copyright to the Image. For example, Defendant’s Marketing Specialist [name of marketing specialist] emailed Plaintiff on [date] stating that Defendant was attempting to “copyright the photo” and asking Plaintiff if he was “willing to sign a release.” Additionally, on [date], Attorney [name of attorney] sent an email to Plaintiff on behalf of Defendant stating that Defendant “would like to have full ownership of copyrights of the image” and “recommending” that Plaintiff “assign those rights to Defendant” and providing Plaintiff with a document assigning ownership to Defendant.
Additionally, as articulated more fully in Plaintiff’s original Motion, even if Defendant and Plaintiff orally agreed that Plaintiff would transfer all rights to Defendant as alleged, any transfer of any exclusive right must be in writing. 17 U.S.C. § 204(a). The requirement that every transfer be effectuated through a written instrument “not only bars copyright infringement actions but also breach of contract claims based on oral agreements.” Valente-Kritzer Video v. Pinckney, 881 F.2d 772, 774 (9th Cir. 1989); see also Heller v. NBCUniversal, Inc., 2016 U.S. Dist. LEXIS 195031, at *21-22 (C.D. Cal. Mar. 30, 2016).
Defendant attempts to save its First Counterclaim by arguing that the parties simply agreed to an oral non-exclusive license rather than a complete transfer of rights despite the clear language of Defendant’s pleadings stating otherwise. (“The parties expressly intended that by this transaction Plaintiff would thereby transfer ownership to Defendant of all ownership interests of the Image.”). Defendant submits various declarations in support of this argument. While the declarations submitted by Defendant are helpful in understanding Defendant’s views of the facts and merits of the case, they are irrelevant to whether Defendant’s First and Second Counterclaims, as alleged in Defendant’s pleading, have stated legally sufficient theories for relief. As noted above, Defendant’s First Counterclaim very clearly alleges that the contract at issue was for a complete transfer of rights, not simply a non-exclusive license. That Defendant now backs off those statements is a tacit acknowledgement by Defendant that it has no probability of prevailing on the merits of its First Counterclaim.
Defendant cites to a number of “implied license” cases, such as Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990) and Asset Mktg. Sys. v. Gagnon, 542 F.3d 748, 757 (9th Cir. 2008), for the proposition that Plaintiff’s delivery of materials incorporating the Image to Defendant somehow gave Defendant an implied license to use the Image outside the scope of the materials actually created and delivered by Plaintiff. Again, Defendant’s First Counterclaim has nothing to do with an implied license, but rather alleges a complete transfer of rights, not a license. Regardless, the Effects Assocs. court recognized that even when an implied license is granted, the copyright holder may still maintain an infringement action if the infringer exceeded the scope of the implied license. Effects Assocs., 908 F.2d at 558 n.5, citing Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984) (“By publishing the other writer’s book, Ries exceeded the scope of his implied license to use Oddo’s articles and was liable for copyright infringement.”).
Even if Defendant succeeds in proving an implied license, that does not help Defendant here because merely proving an implied license/contract exists between the parties does not show that Plaintiff breached the alleged contract. Neither defendant in Effects Assocs. or Asset Mktg. Sys. counterclaimed for breach of contract, nor did either court address whether the respective plaintiffs’ failure to maintain an infringement action due to the existence of an implied license necessarily meant that they breached the implied licenses that were granted.
The unjustified or unexcused, failure to perform a contract is a breach. See Rest. 2d, Contracts § 235(2). Defendant affirmatively alleges that the parties allegedly contracted “for the unrestricted rights, title, and interest in the Image.” The First Counterclaim only contains two conclusory allegations regarding the alleged breach. Defendant alleges that “[a]s a direct result of Plaintiff’s actions, Defendant has suffered monetary, competitive and irreparable harm,” and that “Plaintiff’s breach of the oral contract was a substantial factor in causing Counterclaimant’s harm.” Defendant does not allege that Plaintiff failed to perform the services requested at the time he was engaged by Defendant, nor does Defendant allege that Plaintiff failed to deliver the materials requested by Defendant. Rather, Defendant apparently alleges that the “breach” occurred when Plaintiff filed this lawsuit and that he “failed to perform” because he allegedly agreed to transfer all rights to the Image, but filed a lawsuit asserting ownership. Since Defendant admittedly does not own the copyright to the Image, Defendant cannot show a breach and therefore has no probability of prevailing on the merits of its First Counterclaim.
Furthermore, Defendant’s concession that it is not the copyright owner of the Image despite alleging the contrary in its pleadings is further proof that Defendant’s Counterclaims are meant to be retaliatory in nature rather than made in good faith. This is the exact scenario the Anti-SLAPP statute was meant to protect against. See Makaeff v. Trump Univ., Ltd. Liab. Co., 736 F.3d 1180, 1187 (9th Cir. 2013) (“Without anti-SLAPP protections in federal courts, SLAPP plaintiffs would have an incentive to file or remove to federal courts strategic, retaliatory lawsuits that are more likely to have the desired effect of suppressing a SLAPP defendant’s speech-related activities.”).
Therefore, Plaintiff’s Anti-SLAPP Motion should be granted as to Defendant’s First Counterclaim for Breach of Contract.
B. Defendant Cannot Prevail on Its Second Counterclaim Because It Has Not Sufficiently Alleged a Breach of the Implied License
Regarding the Second Counterclaim for Breach of Implied License, Defendant once again resorts to arguing the underlying facts of the case rather than focusing on the allegations in its pleading. Defendant argues that it has a probability of prevailing on the merits because “Defendant’s facts establish that the non-exclusive license is unlimited in scope.” While Defendant’s alleged “facts” do not actually establish what Defendant claims they do, nonetheless, as this Court previously recognized, Plaintiff’s “anti-SLAPP motion to strike isn’t based on a failure of proof, rather, it is based on the legal sufficiency of Defendant’s counterclaims.” The alleged facts proffered by Defendant merely attempt to establish that an implied license exists, and do not show that Defendant sufficiently alleged in its pleadings that Plaintiff engaged in any conduct that could plausibly be construed as a breach. Similarly, as to the Second Counterclaim, the arguments in Defendant’s Opposition are focused on demonstrating that an implied license existed as a factual matter and do not argue any breach by Plaintiff, let alone why the alleged breach would be legally sufficient to state a claim for relief.
 The allegations in the Second Counterclaim generally allege that Defendant “purchased” the Image, that Plaintiff never attached any conditions or limitations to Defendant’s use of the Image, that Defendant has continued to use the Image, that Plaintiff never revoked the license, and that Plaintiff allegedly breached the license by “attempting to retroactively restrict the terms of the non-exclusive license.”
The unjustified or unexcused failure to perform a contract is a breach. See Rest. 2d, Contracts § 235(2). While there is obviously a factual disagreement amongst the parties as to whether Defendant had permission to use the Image outside the scope of the materials Plaintiff created for Defendant, the fact that Plaintiff believes Defendant has operated outside the scope of its permission to use the Image and has petitioned the court to clarify his rights is not, in and of itself, a failure to perform under the license.
Even if, as Defendant alleges, Plaintiff granted an unlimited non-exclusive license to use the Image, and even assuming that a restriction of the license terms would constitute a breach, at best, the Second Counterclaim alleges an attempted breach, not an actual breach of the license agreement. The Second Counterclaim only alleges that, by filing this lawsuit, Plaintiffs is “attempting to retroactively restrict” the license terms. Defendant does not allege any action by Plaintiff that actually resulted in a restriction of Defendant’s use of the Image. Rather, Defendant alleges that Plaintiff only attempted to do so.
Defendant has no probability of prevailing on the merits of its Second Counterclaim because it has not sufficiently alleged a breach. Therefore, Plaintiff’s Anti-SLAPP Motion should be granted as to Defendant’s Second Counterclaim for Breach of Non-Exclusive License.
C. Even if Plaintiff’s Anti-SLAPP Motion Is Denied, Defendant Is Not Entitled to Attorneys’ Fees
Defendant’s final argument as to the Anti-SLAPP portion of Plaintiff’s Motion is that Defendant should be awarded attorneys’ fees. As Defendant correctly points out, a party opposing an Anti-SLAPP Special Motion to Strike is not automatically entitled to be awarded attorneys’ fees. See Cal. Civ. Proc. Code § 425.16(c)(1.) Fees are only awarded in these rare circumstances “[i]f the court finds that a special motion to strike is frivolous or is solely intended to cause unnecessary delay.” Ibid. Under the anti-SLAPP statute, a court must examine the requirements of California Code of Civil Procedure § 128.5 before awarding fees to the opposing party. Ibid.
Accordingly, a court will only award fees under the anti-SLAPP statute if “(1) the action or tactic is objectively ‘frivolous,’ and (2) the action was brought for an improper purpose, i.e., subjective bad faith.” Am. Dental Ass’n v. Khorrami, No. 02-3853, 2004 WL 3486524, at *3 (C.D. Cal. 2004) (quoting Decker v. U.D. Registry, Inc., 105 Cal. App. 4th 1382, 1392, (2003)). Furthermore, fees will only be awarded to an opposing party in extraordinary circumstances and where the evidence of improper purpose is clear. See Ibid. (“In applying [§ 128.5] the [California] Supreme Court has established several policy guidelines: (a) an action that is simply without merit is not by itself sufficient to incur sanctions; (b) an action involving issues that are arguably correct, but extremely unlikely to prevail should not incur sanctions; and (c) sanctions should be used sparingly in the clearest of cases to deter the most egregious conduct.” (quoting In re Marriage of Reese & Guy, 73 Cal. App. 4th 1214, 1220 (1999)).
As explained above, Plaintiff’s Motion is meritorious. Furthermore, Plaintiff’s Motion is not frivolous or intended to cause delay. Plaintiff has shown definitively through multiple California Supreme Court cases that Defendant’s First and Second Counterclaims arise out of protected speech or petitioning activity because they are premised on Plaintiff’s filing a federal lawsuit. See Navellier, 29 Cal. 4th at 89-90; see also Briggs, 19 Cal. 4th at 1115. Additionally, Plaintiff alternatively moves for relief as to the First and Second Counterclaims under Fed. R. Civ. Proc. 12(b)(6) for failure to state a claim. Therefore, it cannot be said that Plaintiff’s Motion was intended to cause unnecessary delay because even if Plaintiff had opted not to bring the Anti-SLAPP, he still would have sought relief under Rule 12(b)(6).
Defendant has not carried its high burden to show that it would be entitled to attorneys’ fees.
IV. PLAINTIFF’S MOTION TO DISMISS SHOULD BE GRANTED AS TO THE THIRD AND FOURTH COUNTERCLAIMS
Defendant’s Third and Fourth Counterclaims should be dismissed for failure to state a claim because Defendant has not sufficiently alleged a copyright misuse, and because as multiple courts have recognized “attorneys’ fees” is a remedy and not an independent cause of action.
A. The First and Second Counterclaims Fail to State a Claim upon Which Relief Can Be Granted
For the reasons set forth above in Plaintiff’s Anti-SLAPP Motion, Defendant has failed to sufficiently state a claim for its First and Second Counterclaims. Therefore, if the Court is not inclined to grant the Anti-SLAPP, the First and Second Counterclaims should be dismissed for failure to state a claim for the reasons set forth above.
B. Defendant Has Failed to Allege Copyright Misuse Because Plaintiff Is Not Attempting to Assert Any Rights Outside the Scope of the Copyright Act
Defendant argues that its Third Counterclaim for Copyright Misuse is properly alleged as a claim for relief rather than an affirmative defense. Whether the copyright misuse doctrine is properly raised as a claim for relief or as an affirmative defense is irrelevant, as Defendant has failed to sufficiently plead any misuse at all.
The defense of copyright misuse forbids a copyright holder from “securing an exclusive right or limited monopoly not granted by the Copyright Office.” Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 977-79 (4th Cir. 1990), quoted in Practice Mgmt. Info. Corp. v. American Med. Ass’n, 121 F.3d 516, 520 (9th Cir.), amended by 133 F.3d 1140 (9th Cir. 1997).
Defendant admits in its Opposition that Plaintiff is the owner of the copyright to the Image. The Copyright Act provides that a copyright holder (in this case Plaintiff) retains the exclusive right to reproduce and to distribute copies of an original work of authorship. See 17 U.S.C. § 106.
Defendant claims that Plaintiff engaged in misuse because Plaintiff allegedly licensed the Image to Defendant and is violating the license by trying to “extort” further payments from Defendant. Opposition, p. [number]. Plaintiff is not attempting to “extort” Defendant by asserting his legitimate rights. In fact, it was Defendant who voluntarily offered to pay Plaintiff for the exclusive right to the Image after Defendant determined that it did not own the rights in the first place. Regardless, even if an implied license exists under the terms claimed by Defendant, it is irrelevant because the scope of Plaintiff’s infringement claim—to prevent Defendant from further reproduction, distribution, and display of the Image—does not fall outside the scope of the exclusive rights enumerated under the Copyright Act. See 17 U.S.C. § 106. Thus, even if Plaintiff licensed any of his exclusive rights under 17 U.S.C. § 106 rights to Defendant, that does not mean that Plaintiff’s infringement claim requests relief outside the scope the rights granted in 17 U.S.C. § 106 to begin with. See A&M Records v. Napster, Inc., 239 F.3d 1004, 1027 (9th Cir. 2001) (“There is no evidence here that plaintiffs seek to control areas outside of their grant of monopoly. Rather, plaintiffs seek to control reproduction and distribution of their copyrighted works, exclusive rights of copyright holders.”) (citations omitted). Rather, it means that Plaintiff will be unsuccessful on his infringement claim, not that he engaged in misuse.
Because Plaintiff is not attempting to assert any rights outside those enumerated in 17 U.S.C. § 106, Defendant cannot state a claim for copyright misuse, and its Third Counterclaim must be dismissed.
C. Regardless of Whether Defendant Can Ultimately Be Awarded Attorneys’ Fees, It Is Not a Cause of Action
Defendant argues that the Fourth Counterclaim should survive because Defendant has sufficiently alleged that Defendant “is the prevailing party in this matter,” and that Plaintiff “is responsible for fees, given the baselessness of his claims.” Opposition, p. [number].
As a practical matter it is impossible for Defendant to plausibly allege that it is the “prevailing party” or that Plaintiff’s claims are baseless since Plaintiff’s claim has yet to be adjudicated on the merits. Regardless of whether Defendant may ultimately qualify for an award of attorneys’ fees, such relief is a remedy and not an independent cause of action. The Supreme Court has recognized that “the question of whether a litigant has a ‘cause of action’ is analytically distinct and prior to the question of what relief, if any, a litigant may be entitled to receive.” Davis v. Passman, 442 U.S. 228, 238 (1979). Because an award of attorneys’ fees is a form of relief, it is not a standalone cause of action. See Carroll Co. v. Sherwin-Williams Co., 848 F. Supp. 2d 557, 570 (D. Md. 2012) (granting motion to dismiss “attorneys fees” cause of action); Brandon v. Sherwood (In re Sann), 546 B.R. 850, 852-53 (Bankr. D. Mont. 2016) (“the counterclaim for attorney fees is premature and is a potential remedy only, not a cause of action, which cannot be awarded unless Defendants are prevailing parties”).
Therefore, Defendant’s Fourth Counterclaim must be dismissed.
  V. CONCLUSION
For all of the reasons set forth above, Plaintiff respectfully requests that the Court GRANT his special Motion to Strike the First and Second Counterclaims and his Motion to Dismiss as to the Third and Fourth Counterclaims.
Dated: [date]
Respectfully submitted,
[names and contact information of Counsel for Plaintiff],
Counsel for Plaintiff