Motion to Dismiss Copyright Claims Under Jenkins-Laporte Doctrine

Case 3:09-cv-01557-SC Document 59 Filed 05/11/2009 Page 1 of 12

KYLE MCEACHERN, Defendant

Kyle McEachern, Pro per

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA ZYNGA GAME NETWORK, INC. Plaintiff, Case Number: 3-09 CV1557-5C
vs.
DEFENDANT’S MOTION FOR DISMISSAL [FRCP RULE 12(b)(6)]; MEMORANDUM OF POINTS AND AUTHORITIES, CERTIFICATE OF SERVICE
Before: Hon. Samuel Conti Hearing Date: N/A


MOTION FOR DISMISSAL

TO THE HONORABLE SAM CONTI and the plaintiff:

I, Kyle McEachern hereby move the court for dismissal with prejudice of all Zynga claims in this case. This motion is based on docket item 26 [the declarations of Pierre Chambon and Kyle McEachern], the transcript of the hearings held by this court on April 22 and 23, 2009, the declarations on file in this case and the memorandum of points and authorities below. Here is a summary of this motion.

1. All contracts alleged by Zynga in this case had illegal purposes, namely, the criminal copyright infringement [17 USC §506(a)(1)] of Psycho Monkey’s “Mob Wars” game. The contracts are therefore void.

2. Zynga does not possess a valid copyright to its "Mafia Wars" game. Rather, Zynga pirated Mob Wars, infringed Psycho Monkey's copyright and filed a false copyright application. A pirated work cannot be copyrighted.

3. On April 22, 2009, Zynga recanted allegations that I violated the Computer Fraud and Abuse Act [CFAA].

4. Zynga failed to establish that it was first to use its trademark with respect to the Lanham Act claims. California authority indicates that the plaintiff's case ended on April 29, 2009. On that day, the plaintiff filed response to the Chambon declaration. The plaintiff failed to controvert Chambon's allegations that Zynga comitted criminal infringement. Once it became apparent to this court that Zynga committed a crime in connection with this case, this court was required to dismiss Zynga's entire case with prejudice sua sponte. Date:

MEMORANDUM OF POINTS AND AUTHORITIES

I. Statement of the Law

Copyright Infringement

A claim for copyright infringement has two elements:
(1) ownership of the copyright; and
(2) infringement — that the defendant copied protected elements of the plaintiff's work. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (citing Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996)); see also Mai Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 517 (9th Cir. 1993) (stating that "plaintiff must prove ownership of a copyright and a ‘ "copying" of protectable expression' beyond the scope of a license") (citation omitted).

Criminal Copyright Infringement

The elements for criminal copyright infringement are found in 17 USC §506(a)(1):
“Any person who willfully infringes a copyright shall be punished as provided under section 2319 of title 18,

if the infringement was committed-
(A) for purposes of commercial advantage or private financial gain;
(B) by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000;....” See United States v. Teh, 535 F.3d 511 (6th Cir. 07/31/2008)

Dismissal Under FRCP 12(b)(6)

The Ninth Circuit announced the requirements for the plaintiff to survive a dismissal motion in Lazy Y Ranch Ltd v. Behrens, 546 F.3d 580 (9th Cir. 09/26/2008): “To survive a motion to dismiss for failure to state a claim, the plaintiff must allege "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 127 S.Ct. 1955, 1974 (2007); see Fed. R. Civ. P. 12(b)(6). In general, the inquiry is limited to the allegations in the complaint, which are accepted as true and construed in the light most favorable to the plaintiff. Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001). However, we need not accept as true allegations contradicting documents that are referenced in the complaint or that are properly subject to judicial notice. See id.; Outdoor Media Group, Inc. v. City of Beaumont, 506 F.3d 895, 899-900 (9th Cir. 2007).” Emphasis added.

Documents Subject to Judicial Notice

Relevant documents subject to judicial notice for dismissal purposes in this case were stated succinctly by Shaw v. Hahn, 56 F.3d 1128, 1129 n.1 (9th Cir. 1995): "In deciding whether to dismiss a claim under Fed.R.Civ.P. 12(b)(6), a court may look beyond the plaintiff's complaint to matters of public record." Judicial notice of “public records” includes previous sworn testimony, exhibits, affidavits and other documents already on file in the instant case. United States v. Charnay, 537 F.2d 341 (9th Cir. 05/07/1976).

Contract and Illegal Purpose

In California, a contract to accomplish an illegal purpose is void. Homami v. Iranzadi, 211 Cal. App. 3d 1104, 260 Cal. Rptr. 6 (Cal.App.Dist.6 1989). The Civil Code provides a starting place. A contract must have a lawful object. (Civ. Code, § 1550.) Any contract which has as its object the violation of an express provision of law is unlawful. (Civ. Code, §1667, subd. 1.) The object of a contract is the thing which it is agreed, on the part of the party receiving the consideration, to do or not to do. (Civ.Code, §1595.) The object must be lawful when the contract is made. (Civ.Code, §1596.) And that part of the contract which is unlawful is void. (Civ.Code, §1599.)

Courts have interpreted these statutes liberally. The general principle is well established that a contract founded on an illegal consideration, or which is made for the purpose of furthering any matter or thing prohibited by statute, or to aid or assist any party therein, is void. This rule applies to every contract which is founded on a transaction malum in se, or which is prohibited by a statute on the ground of public policy. C.I.T. Corp. v. Breckenridge, 63 Cal. App. 2d 198, 200, 146 P.2d 271 (1944) . It makes no difference whether the contract has been partially or wholly performed. Rather, the test is whether the plaintiff requires the aid of the illegal transaction to establish his case. If the plaintiff cannot open his case without showing that he has broken the law, the court will not assist him, whatever his claim in justice may be upon the defendant. C.I.T., supra.

Nor does it matter that the illegality has not been pleaded. If the question of illegality develops during the course of a trial, a court must consider it whether pleaded or not. Whenever the evidence discloses the relations of the parties to the transaction to be illegal and against public policy, it becomes the duty of the court to refuse to entertain the action. Russell v. Soldinger 59 Cal.App.3d 633, 642, 131 Cal.Rptr. 145

(1976). Emphasis added.

Even though a written contract is legal on its face, evidence may be introduced to establish its illegal
character. May v. Herron, 127 Cal.App.2d 707, 710-711, 274 P.2d 484 (1954). And if the substance of the transaction is illegal, it matters not when or how the illegality is raised in the course of the lawsuit.

Whether the evidence comes from one side or the other, the disclosure is fatal to the case. Russell v. Soldinger, supra, 59 Cal. App. 3d 633, 642; Loving & Evans v. Blick, 33 Cal.2d 603, 607, 204 P.2d 23 (1949).

Copyright and Illegal Purpose

Illegal purpose is also fatal to a copyright claim in the following, very specific situation: when the illegal purpose is to misrepresent the plaintiff’s copyright to the court and defendant: The defense of illegality or unclean hands is "recognized only rarely, when the plaintiff's transgression is of serious proportions and relates directly to the subject matter of the infringement action. For instance, the defense has been recognized when plaintiff misused the process of the courts by falsifying a court order or evidence, or by misrepresenting the scope of his copyright to the court and opposing party.” 4 Nimmer on Copyright § 13.09[B] (citing L.A. News Serv. v. Tullo, 973 F.2d 791, 799 (9th Cir. 1992)) Emphasis added.

Failure to Controvert

A failure to controvert facts is to be construed as an admission for purposes of a dispositive motion. Mora v. Hollywood Bed & Spring, 79 Cal.Rptr.3d 640, 164 Cal.App.4th 1061 (Cal.App. Dist.2 07/14/2008); Murphy v. Check 'N Go of California, Inc., 156 Cal.App.4th 138, 67 Cal.Rptr.3d 120 (Cal.App. Dist.1 10/17/2007); Slovensky v. Friedman, 49 Cal.Rptr.3d 60, 142 Cal.App.4th 1518 (Cal.App. Dist.3 09/19/2006); Wilson v. County of San Diego, 91 Cal.App.4th 974, 111 Cal.Rptr.2d 173 (Cal.App. Dist.4 07/24/2001); Story Road Flea Market, Inc. v. Wells Fargo Bank, 42 Cal.App.4th 1733, 50 Cal.Rptr.2d 524 (Cal.App. Dist.6 02/06/1996); Davis v. Consolidated Freightways, 29 Cal.App.4th 354, 34 Cal.Rptr.2d 438 (Cal.App. Dist.4 10/07/1994).

Lanham Act and First Use

It is not enough to have invented a mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services." Sengoku Works

Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) .

Jenkins-LaPorte Doctrine

The basic principles of Jenkins-Laporte doctrine can be summarized: “If an accused infringer did not see or agree to a copy restriction, there was no infringement.” Netbula, LLC v. Symantec Corp., 516 F. Supp.2d 1137 (N.D.Cal. 2007); Netbula, LLC v. Storage Technology Corporation et al., 2008 U.S. Dist LEXIS 4119 (N.D.Cal., January 18, 2008).

II. Argument

Zynga’s Criminal Copyright Infringement

Sometime after the publication of Psycho Monkey LLCs game “Mob Wars” in February 2008, the CEO of Psycho Monkey entered into negotiations with Zynga for the sale of Psycho Monkey’s game, “Mob Wars”. [See dkt. #36 , deft. exbt. F, “FAC in Psycho Monkey LLC v. Zynga”, ¶16; infra as exbt. 1] Eventually, the negotiations “fell through”. Id. On May 27, 2008, a Zynga manager, Roger Dickey, gave project specifications to two Zynga programmers, Pierre Chambon and Neil Souza. [See dkt. #26, exbt. A, decl. Chambon, M5-6; currently sealed]. Mr. Dickey directed Mr. Chambon and Mr. Souza to create a game ‘almost exactly like a game called “mob wars"....’. Id. The copy of Mob Wars that Mr. Chambon was to build would then be used to create “several” derivative games. Id., exbt.

A attached to decl. Chambon.

On or about June 10, 2008 Zynga published an “almost exact” copy of “Mob Wars” on the MySpace social network under the name of “Mafia Wars”. [See dkt. #26, exbt. A, decl. Chambon, ¶18; currently sealed]. This “almost exact” copy was based on the specification provided by Mr. Dickey [See Exhibit B attached to dkt. #26, exbt.

A, decl. Chambon; currently sealed], which included a listing of all known elements of “Mob Wars", references to “Jason Gilbert”, the nom de plume of David Maestri, CEO of Psycho Monkey LLC and creator of “Mob Wars”. The first draft of the “Mafia Wars” home page even had references to “Mob Wars” in its text! [See Exhibit F attached to dkt. #26, exbt. A, decl. Chambon; currently sealed].

By December 2008, “Mafia Wars” monthly revenue was estimated at $1 million per month. See Michael Arrington, “The Mob Wars War is Over”, TechCrunch, December 30, 2008 available at:

The Mob Wars War Is Over

The facts above establish the elements that Zynga criminally infringed Psycho Monkey’s copyright of the “Mob Wars” game. United States v. Teh, 535 F.3d 511 (6th Cir. 07/31/2008). Zynga failed to controvert any of the elements of its criminal infringement of “Mob Wars” [See Declaration of Roger Dickey in support of Zynga Game Network, Inc.’s Motion to Shorten Time, ¶7]. Mora v. Hollywood Bed & Spring, supra. Accordingly, Zynga does not and cannot own a copyright on “Mafia Wars” and is guilty of committing a crime under 17 USC §506(a)(1).
All contracts pleaded by Zynga were executed by the parties to assist with Zynga’ s piracy of “Mob Wars”. See the Complaint, ¶¶8, 9, 13; c/f decl. Chambon, exbt. B. These contracts are void. Russell v. Soldinger, supra. So also are all derivative claims.

The CFAA Claims

After cross-examination of Zynga’s witness Steve Schoettler on April 22, 2009, it was clear that Zynga failed to establish any element of a claim under the Computer Fraud and Abuse Act. Accordingly, given the conflict between the complaint, the affidavit of Schoettler attached to the complaint and the testimony of Steve Scheottler where Mr. Schoettler recanted the pleaded facts necessary to establish any CFAA claim, I request dismissal of the CFAA and all derivative claims.

The Lanham Act and Who Was First

With a straight face, as far as we can tell, Zynga claims that I violated the Lanham Act by publishing my game under the trademark “Mob Underworld” on April 2, 2009 against Zynga’s trademark “Mafia Wars” published on June 10, 2008. Assuming arguendo that a mark named “Mob Underworld” could infringe a mark named “Mafia Wars”, then a fortiori, Psycho Monkey would have a superior claim to trademark protection than either Zynga or me. “Mob Wars” was published in February 2008. See Sengoku Works, supra.

Whatever Psycho Monkey’s actual trademark rights may be under the Lanham Act, Zynga has no cognizable claim for trademark infringement under the facts pleaded. “Mob Wars” was first and “Mafia Wars” and “Mob Underground” are more similar to "Mob Wars" than each other. Matter of fact, the only thing Zynga has accomplished with this claim is the creation of a judicial estoppel issue if Zynga attempts to deny a Psycho Monkey Lanham Act claim.

The Complaint Runs Afoul of Jenkins-Laporte Doctrine

The plaintiff has neither pleaded nor shown any term in any contract that comports with Jenkins-Laporte Doctrine. There are no restrictions stated in any document thus submitted that bars the defendant from copying any of the plaintiff's software.


III. Conclusion

Here is the short list of issues with this case: The contracts pleaded had an illegal purpose: the criminal infringement of Mob Wars by Zynga. Zynga has no copyright in Mafia Wars. Zynga falsified its copyright application for Mafia Wars. Zynga recanted its claims that I violated the CFAA. Zynga admitted that I never stole code, data, customers or customer information. Zynga is on the public record offering "small developers" gratis assistance and access to its customers. Zynga's counsel in this case has engaged in intentional witness intimidation. At hearing on April 23, 2009 Zynga's counsel intentionally falsified exhibit 9 attached to the Schoettler declaration to create an illusion of similarity between 50 lines of Javascript code in my application.




Certificate of Service

Under penalty of perjury, I, Kyle McEachern certify that a true and correct copy of the foregoing document was mailed to:

Claude M. Stern, Esq. Quinn et al. LLP 555 Twin Dolphin Drive #560 Redwood City, CA 94065-2139
le McEachern



Defendant's Motion for Dismissal 5/10/2009

12

Zynga v. McEachern Case* 3-09 CV1557-SC