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Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 1 of 18 Page ID #:789

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
Present: The Honorable MICHAEL W. FITZGERALD, U.S. District Judge

Deputy Clerk: Court Reporter:
Rita Sanchez Not Reported

Attorneys Present for Plaintiff: Attorneys Present for Defendant:
None Present None Present

Proceedings (In Chambers): ORDER RE: MOTION FOR SUMMARY
JUDGMENT [57]

Before the Court is Gerald A. Longarzo, Jr., and Jeff Civillico’s (together,
“Defendants”) Motion for Summary Judgment (the “Motion”), filed on November 12,
2018. (Docket No. 57). On November 19, 2018, Plaintiff ISE Entertainment
Corporation (“ISE”) filed an Opposition. (Docket No. 63). Defendants filed their
Reply on November 26, 2018. (Docket No. 64). Pursuant to a Court’s Order, ISE filed
a Supplemental Opposition on December 6, 2018. (Docket No. 66). The Court has
read and considered the papers filed in connection with the Motion and held a hearing
on December 10, 2018.

For the reasons discussed below, the Motion is GRANTED. ISE’s remaining
claim under the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512, fails
where Defendants’ communication with a third party was not a DMCA Notice and ISE
has failed to show that Defendants made a knowingly materially misrepresentation.

I. BACKGROUND

A. Factual Background

ISE, a Nevada corporation with its principal place of business in Las Vegas, is
“the owner, creator and copyright holder of the television series, ‘The Weekend in
Vegas,’ (the ‘Series’) which airs on the KNTV ABC Affiliate station in Las Vegas,
Nevada, and was, until the actions of [Mr. Civillico and Mr. Longarzo] herein,

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
available for download on Amazon.com [‘Amazon’].” (ISE’s Statement of
Uncontroverted Facts (“ISUF”) No. 1 (Docket No. 68); Second Amended Complaint
(“SAC”) ¶¶ 1, 7 (Docket No. 40)).

Mr. Civillico, a Nevada resident, is the co-producer of the Series and appears on
camera as its host. (ISUF No. 3; SAC ¶¶ 3, 9). On February 7, 2017, ISE and Mr.
Civillico entered into a written “Deal Memo,” a one-page document that ISE attached
to its SAC. (ISUF No. 2). The Deal Memo provides, inter alia:

Company [ISE] and Co-Producer [Mr. Civillico] have established a
business relationship through the production of the television series
known as The Weekend in Vegas…

Co-Producer agrees that any work created during the course of business
with Company is the original work and property of Company. Co-
Producer further agrees that all rights, including copyrights, performance
rights and publicity rights, belong to Company.

(Id.).

On August 8, 2017, Mr. Civillico submitted an online complaint to Amazon
concerning ISE’s infringement of his rights of publicity and privacy with respect to the
Series. (Defendants’ Statement of Uncontroverted Facts (“DSUF”) No. 1 (Docket
No. 59)). The online complaint to Amazon, in its entirety, stated: “Use of my name
and/or image/likeness is an infringement of my right of privacy and right of publicity,
as these rights have not been granted by me.” (Id. Nos. 2–3).

On the same day, Mr. Civillico’s complaint was rejected by Amazon in an email
with the subject line, “Your Report of Rights Infringement on [Amazon].” (Id. Nos. 4–
5). The email came from “notice@amazon.com.” (Id. No. 6). The rejection email
provided as follows:

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
You have not provided sufficient evidence to support your request for the
removal of the reported content. We cannot take action on or complete
any requests in your report for the reasons listed below.

You have not provided evidence that these products were illegally
manufactured, recopied, or unlawfully obtained.

Please resubmit your report with Identification of the intellectual property
right asserted, by registration number, or URL if applicable.

All notices of intellectual property infringement must include: –The name
and email address of the person submitting the notice, plus any additional
contact details.
–The name of the rights owner, if the notice is submitted by an agent of
the rights owner.
–Identification of the intellectual property right asserted, by registration
number, if applicable.
–Identification of the specific content on Amazon believed to be
infringing, by ASIN or URL. If your report is about specific seller listings,
please provide a list of sellers.
–Statement that the information in the notice is accurate. -- Statement that
the submitter is authorized to act on behalf of the rights owner and has a
good-faith belief that the use of the content is not authorized by the rights
owner, its agent, or the law.

ASIN: B074FGM69R, The Weekend in Vegas
Complaint ID: 1049180461

(Id. No. 7).

Other than the online complaint on August 8, 2017, Mr. Civillico states that he
had no other written communications with Amazon or its representatives in connection
with the Series or ever claimed that any copyright had been infringed. (Id. Nos. 8–9).
Mr. Civillico also states that he had the good faith belief, and continues to do so, that
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
ISE’s conduct was violating his rights of publicity and privacy and that he had the right
to make the online complaint. (Id. No. 11).

On August 18, 2017, Mr. Longarzo, a California resident and Mr. Civillico’s
attorney, sent an email to Amazon, requesting assistance on getting episodes of the
Series pulled down since Mr. Civillico’s online complaint “did not work.” (Id. Nos.
12, 15). Mr. Longarzo informed Mia Morgan, an employee of Amazon, the following:

[Mr. Civillico’s] image, likeness and performance are being improperly
used by a producer, Gary Harmon, who has no assets but intentionally
breached an agreement, failed to pay contractually owed amounts, even
took money from [Mr. Civillico] to pay for certain expenses with a
promised quick reimbursement . . . and is brazenly using these episodes to
try to profit on my client’s work.

(Id. Nos. 16–17). Ms. Morgan informed Mr. Longarzo that she would “touch bases
with [Amazon’s] takedown team who reviews these requests.” (Id. No. 20).

On the same day, ISE “was informed by Amazon[] that Longarzo had filed an
infringement claim notice [and ] that the distribution of the Series submitted for sale
through [Amazon] may not be properly authorized by the appropriate rights holder.”
(ISUF No. 4). ISE claimed that the “infringement claim notice” was a DMCA Notice
and “was false at the time it was filed,” because Mr. Longarzo falsely “represented in
the DMCA Notice, under penalty of perjury, that the Series infringed upon the
copyright of Civillico.” (See id. No. 6; SAC ¶ 12).

Mr. Longarzo’s declaration states that he “did not certify these messages under
penalty of perjury or make any claim that [ISE] had infringed a copyright belonging to
Civillico.” (DSUF Nos. 19, 23). His declaration also states that Amazon’s designated
DMCA agent is not Ms. Morgan and when Mr. Civillico’s initial rejection of his online
complaint came from notice@amazon.com as opposed to copyright@amazon.com, the
email address registered with the Copyright Office. (Id. No. 30). The email exchange
between Mr. Longarzo and Ms. Morgan does not contain the word “copyright.” (See
Declaration of Gerald A. Longarzo, Jr., (“Longarzo Decl.”), Ex. A (Docket No. 57-4)).
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
On August 21, 2017, Ms. Morgan confirmed that the material had been taken
down from Amazon’s website. (DSUF No. 21).

On August 24, 2017, an attorney for ISE wrote a letter to Mr. Longarzo,
contending that, pursuant to the Deal Memo, Mr. Civillico “holds no rights to any
intellectual property of ISE regarding [the Series],” and demanding that Mr. Longarzo
“immediately notify Amazon that your client’s [Mr. Civillico’s] claim is withdrawn.”
(ISUF No. 7). On August 29, 2017, Mr. Longarzo responded by email, contending that
ISE was in breach of a verbal agreement to pay Mr. Civillico $1,000 per week and that
the Deal Memo does not permit ISE to use Mr. Civillico’s “name, image or likeness in
connection with [his] on-camera services” absent authorization, and refusing to
withdraw the Amazon’s claim. (Id. No. 8).

On November 13, 2017, ISE’s current counsel sent a letter to Mr. Longarzo
informing him that in the DMCA Notice, “[Mr.] Longarzo knowingly misrepresented
to [Amazon] that the Series was infringing, and demanded retraction or withdrawal of
the DMCA Notice.” (Id. No. 11). Mr. Longarzo responded by email the next day,
writing, among other things, that “[t]he information in your letter is not accurate, but
we thank you and Gary [principal of ISE] for your continued interest in Jeff
[Civillico].” (Id. No. 12).

B. Procedural Background

On November 22, 2017, ISE commenced this action in the Los Angeles County
Superior Court. (See generally Complaint (Docket No. 1-1)). In its Complaint, ISE
asserted four claims for relief: (1) a claim for declaratory relief seeking “a judicial
declaration of the rights and duties of the parties hereto with regard to who is the
rightful owner of the copyright of the Series,” against both Defendants; (2) “damages
for false DMCA Notice” pursuant to the DMCA, 17 U.S.C. § 512, against both
Defendants; (3) breach of contract, against Mr. Civillico; and (4) fraud, against both
Defendants. (See id. ¶¶ 1–33).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
On December 20, 2017, Defendants removed this action, invoking the Court’s
federal jurisdiction with respect to ISE’s claim for damages under the DMCA. (See
Notice of Removal (Docket No. 1)).

On December 27, 2017, Defendants filed a motion to dismiss ISE’s Complaint
pursuant to Federal Rule of Civil Procedure 12(b)(1) and (b)(6). (Docket No. 8). In an
Order dated February 2, 2018 (the “February 2 Order”), the Court denied Defendants’
motion to dismiss with respect to ISE’s DMCA claim, and granted the motion with
leave to amend as to ISE’s breach of contract, fraud, and declaratory relief claims.
(Docket No. 17).

On February 26, 2018, ISE amended its Complaint, now asserting three claims
for relief: (1) “damages for false DMCA Notice” pursuant to § 512(f), against both
Defendants; (2) breach of contract, against Mr. Civillico; and (3) “rescission and
restitution,” against Mr. Civillico. (First Amended Complaint (“FAC”) ¶¶ 1–30
(Docket No. 20)). The allegations relating to ISE’s DMCA claim (which constituted
the majority of the factual allegations) in the FAC are identical to those in the
Complaint. (Compare FAC ¶¶ 1–19 with Complaint ¶¶ 1–15, 19–23).

On March 12, 2018, Defendants again moved to dismiss the FAC, which the
Court again denied as to the DMCA claim and granted as to the breach of contract and
rescission and restitution claims (the “April 16 Order”). (See Docket Nos. 25, 38).

On May 7, 2018, ISE filed its SAC, in which it asserted four claims for relief:
(1) “damages for false DMCA Notice” pursuant to § 512(f), against both Defendants;
(2) “breach of oral and implied in-fact contract,” against Mr. Civillico; (3) “rescission
and restitution,” against Mr. Civillico; and (4) “declaratory relief,” against both
Defendants. (SAC ¶¶ 1–38). The allegations relating to ISE’s DMCA claim (which
again constitute the majority of the factual allegations underpinning this action) in the
SAC are virtually identical to those in FAC and the Complaint. (Compare SAC ¶¶ 1–
19 with FAC ¶¶ 1–19 and Complaint ¶¶ 1–15, 19–23).

On May 21, 2018, Defendants again moved to dismiss the claims against them,
which the Court granted without leave to amend as to the breach of contract and
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
rescission and restitution claims. (See Docket Nos. 45, 52). Defendants now move for
summary judgment on the remaining DMCA claim.

II. REQUEST FOR JUDICIAL NOTICE

Along with their Motion, Defendants ask the Court to take judicial notice of
(1) the final judgment in ISE Entertainment Corporation, et al. v. J.C. Mike DiRubio
(No. 1-15-CV-282893), a case in the Santa Clara County Superior Court; and
(2) Amazon’s public filing with the Copyright Office identifying its agent to received
notices of infringement pursuant to the DMCA. (Docket No. 58). ISE does not oppose
the Request for Judicial Notice (“RJN”).

These two documents are matters of public record. Accordingly, the RJN is
GRANTED.

III. OBJECTIONS

A. Evidentiary Objections

Defendants object to some of the evidence on which ISE relies in opposing the
Motion. (Docket No. 70). The Court finds that none of the objections is convincing.
Defendants’ arguments are garden variety evidentiary objections based on, for
example, relevance, lack of foundation, and hearsay. (Id.). While these objections may
be cognizable at trial, on a motion for summary judgment, the Court is concerned only
with the admissibility of the relevant facts at trial, and not the form of these facts as
presented in the Motion. See Burch v. Regents of Univ. of California, 433 F. Supp. 2d
1110, 1119–20 (E.D. Cal. 2006) (making this distinction between facts and evidence,
Fed. R. Civ. P. 56(e), and overruling objections that evidence was irrelevant,
speculative and/or argumentative). Moreover, to the extent a fact is not relevant, the
Court will not consider it in reaching its decision.

In ruling on the Motion, the Court relies only upon admissible evidence. To the
extent the Court relies upon evidence to which Defendants object, the objections are

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
OVERRULED. To the extent the Court does not, the objections are DENIED as
moot.

B. Other Objections

Defendants also object to the Supplemental Opposition, arguing that it violates
the Court’s Order. (Docket No. 69). The Court concludes that the Supplemental
Opposition does not, and thus the objection is also OVERRULED.

IV. LEGAL STANDARD

In deciding a motion for summary judgment under Federal Rule of Civil
Procedure 56, the Court applies Anderson, Celotex, and their Ninth Circuit progeny.
Anderson, 477 U.S. at 242; Celotex Corp. v. Catrett, 477 U.S. 317 (1986). “The court
shall grant summary judgment if the movant shows that there is no genuine dispute as
to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a).

The Ninth Circuit has defined the shifting burden of proof governing motions for
summary judgment where the non-moving party bears the burden of proof at trial:

The moving party initially bears the burden of proving the absence of a
genuine issue of material fact. Where the non-moving party bears the
burden of proof at trial, the moving party need only prove that there is an
absence of evidence to support the non-moving party’s case. Where the
moving party meets that burden, the burden then shifts to the non-moving
party to designate specific facts demonstrating the existence of genuine
issues for trial. This burden is not a light one. The non-moving party
must show more than the mere existence of a scintilla of evidence. The
non-moving party must do more than show there is some “metaphysical
doubt” as to the material facts at issue. In fact, the non-moving party must
come forth with evidence from which a jury could reasonably render a
verdict in the non-moving party’s favor.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
Coomes v. Edmonds Sch. Dist. No. 15, 816 F.3d 1255, 1259 n.2 (9th Cir. 2016)
(quoting In re Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir. 2010)).

“A motion for summary judgment may not be defeated, however, by evidence
that is ‘merely colorable’ or ‘is not significantly probative.’” Anderson, 477 U.S. at
249–50.

V. DISCUSSION

Through their Motion, Defendants argue that (1) since Mr. Longarzo’s email
communications with Amazon were not DMCA Notices, § 512(f) does not apply; and
(2) neither Mr. Longarzo nor Mr. Civillico “knowingly materially misrepresent[ed]”
any copyright infringement by ISE. (Mot. at 9–18).

A. Request for More Time to Conduct Discovery

In its initial Opposition, ISE asked the Court to deny or defer consideration of
the Motion in order to give Plaintiff more time to conduct discovery – specifically,
more time to “gather essential declarations.” (Opp. at 7; Declaration of Kenneth G.
Eade on November 19, 2018 (“Eade Decl. I”) ¶ 2).

Under Rule 56(d), a court may deny or defer considering a summary judgment
motion, and may allow a nonmoving party more time to conduct discovery, “[i]f a
nonmovant shows by affidavit or declaration that, for specified reasons, it cannot
present facts essential to justify its opposition . . . .” Fed. R. Civ. P. 56(d)(1)–(2). A
party requesting more time to conduct discovery pursuant to Rule 56(d) “must show:
(1) it has set forth in affidavit form the specific facts it hopes to elicit from further
discovery; (2) the facts sought exist; and (3) the sought-after facts are essential to
oppose summary judgment.” Family Home & Fin. Ctr., Inc. v. Fed. Home Loan
Mortg. Corp., 525 F.3d 822, 827 (9th Cir. 2008) (emphasis added; internal citations
omitted). “Failure to comply with these requirements is a proper ground for denying
discovery and proceeding to summary judgment.” Id. (internal quotation marks and
citations omitted).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
In requesting that the Court defer ruling on the Motion, ISE stated nothing
beyond the fact that it needs more time to gather “essential declarations.” This bare
contention, of course, falls far short of the “specific facts” required to justify ISE’s
request. To provide ISE another opportunity to justify its request, on November 30,
2018, the Court ordered ISE to file a Supplemental Opposition explaining whose
declarations it is seeking and why they could not have been obtained earlier. (Order
Re: Supplemental Opposition at 1 (Docket No. 65)). On December 6, 2018, ISE filed a
Supplemental Opposition and another declaration by its counsel. (See generally Supp.
Opp.; Declaration of Kenneth G. Eade On December 5, 2018 (“Eade Decl. II”)).

Mr. Eade’s new declaration states that ISE “was unable to present all the facts
essential to justify its opposition in this case, because of a lack of contact between
[ISE’s] counsel and [ISE’s] representative Gary Harmon before the initial due date of
the opposition.” (Id. ¶ 2). Mr. Eade then names 42 witnesses and states that he “had
been unable to gather statements from any of them before the opposition date to
determine whether they possessed material facts which could be useful in opposing the
[M]otion.” (Id. ¶ 3). It is unclear whether any of these purported witnesses were
properly disclosed under Rule 26.

Obviously, these witnesses are either willing to cooperate with ISE or they are
not. (It appears that most if not all of the witnesses are affiliated with ISE.) If they are,
then ISE had plenty of time to obtain declarations from them voluntarily. If that did
not happen, it is simply due to a lack of diligence.

To the extent that some of the the witnesses are affiliated with Defendants or
otherwise unwilling to cooperate, then necessarily ISE would have needed discovery to
obtain any information or testimony from them. The discovery cut-off was November
16, 2018. ISE cannot conduct further discovery.

Nor can ISE plausibly assert that it lacked the opportunity to conduct discovery.
ISE commenced this action in Superior Court over a year ago. The Scheduling Order
that established the discovery cut-off was issued on April 16, 2018. (Docket No. 36).
Defendants are not moving for summary judgment immediately after the Scheduling

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
Order was issued. Of course, ISE would never have been granted leave to depose 42
witnesses, but ISE has had ample opportunity to conduct discovery in support of its
claims.

Finally, ISE has not moved to extend the deadline pursuant to Rule 15 and
suggests no reason that such a motion would have been granted. While ISE is
implicitly requesting a modification of the Scheduling Order, it has not made the
requisite showing of diligence or good cause to justify such a request. See Johnson v.
Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992) (party seeking to
modify scheduling order must establish “good cause” for doing so, the primary focus of
which is “the diligence of the party seeking the amendment”; if the party “was not
diligent, the inquiry should end.”).

Therefore, the Court will proceed to rule on Defendants’ Motion on the merits.

B. Overview of the DMCA

“In 1998, Congress adopted the DMCA, 17 U.S.C. § 512, in part to address
copyright concerns with user-driven media, such as the YouTube internet website” or
other internet service providers (“ISPs”) like Amazon. Shropshire v. Canning, No. 10-
CV-01941-LHK, 2011 WL 90136, at *4 (N.D. Cal. Jan. 11, 2011). Section 512(c) sets
forth a process by which an aggrieved owner of a copyrighted work can provide notice
to an ISP that one of the ISP’s users has exploited that work, via the ISP’s website,
without authorization. See § 512(c)(3). Among other things, the copyright owner must
provide written notification, sworn under penalty of perjury, that identifies both the
infringed and infringing work, and that contains a “statement that the complaining
party has a good faith belief that the use of the material in the manner complained of is
not authorized by the copyright owner, its agent, or the law.” See id. Once the ISP
receives a “takedown notice” under § 512(c)(3), it can avoid liability for infringement
if it – under what is commonly referred to as the DMCA’s “safe harbor” mechanism –
“responds expeditiously to remove, or disable access to, the material that is claimed to
be infringing or to be the subject of infringing activity.” 17 U.S.C. § 512(c)(1)(C).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
Section 512(g) sets forth the criteria that an ISP must satisfy to avoid liability to
the ISP subscriber (i.e., the allegedly-infringing party) whose content has been
removed at the request of the copyright owner (i.e., the allegedly-infringed party) under
the “safe harbor” provision. Upon removing or disabling access to the subscriber’s
content, the ISP must: (1) “take[ ] reasonable steps to promptly notify the subscriber
that it has removed or disabled access to the [allegedly-infringing] material”; (2)
furnish to the copyright owner any “counter notification” (i.e., a statement from the
subscriber that its content is not actually infringing) it has received from the subscriber
within ten days of receipt; and (3) “replace[ ] the removed material and cease[ ]
disabling access to it not less than 10, nor more than 14, business days following
receipt of the counter notice” unless the copyright owner informs the ISP that it has
filed a lawsuit “to restrain the subscriber from engaging in infringing activity relating
to the material on the [ISP’s] system or network.” § 512(g).

The DMCA also provides protection for ISP subscribers whose content is
removed as the result of fraudulent takedown notices. Pursuant to § 512(f), “[a]ny
person who knowingly materially misrepresents . . . that material or activity is
infringing . . . shall be liable for any damages, including costs and attorneys’ fees,
incurred by the alleged infringer, by any copyright owner or copyright owner’s
authorized licensee, or by a service provider, who is injured by such misrepresentation,
[or] as the result of the service provider relying upon such misrepresentation in
removing or disabling access to the material or activity claimed to be infringing . . . .”
§ 512(f).

C. DMCA Notice

Defendants makes several arguments as to why Mr. Longarzo’s email
communications with Amazon were not DMCA Notices and, as a result, § 512(f) does
not apply. (Mot. at 9–13).

First, Defendants argue that because ISE’s communications with Amazon “did
not assert copyright infringement or even mention copyright rights,” ISE has no basis
to conclude that Mr. Longarzo sent Amazon a takedown notice under the DMCA as

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
opposed to a request to remove the Series for some other reasons. (Mot. at 9–10). ISE,
in response, argues that Mr. Longarzo’s notice “could not have been anything else”
other than a DMCA Notice and points the Court to the email ISE received from
Amazon informing it that the Series had been taken down. (Supp. Opp. at 13–14). The
email, in relevant parts, stated the following:

We’ve [Amazon] received a notice from a third party claiming that the
distribution of the following title and/or its audio/video contents you
submitted for sale through Amazon may not be properly authorized by the
appropriate rights holder:

Title Names: The Weekend in Vegas

...

Below is the contact information of the third party who claims you
infringed its rights. We expect that you’ll compensate this party
appropriately for any infringing copies sold:

Claimant Name: Jerry Longarzo

...

If you believe this action has been taken in error, please notify us:
https://www.amazon.com/gp/help/reports/infringement.

(Declaration of Mark Masoni (“Masoni Decl.”), Ex. 2 (Docket No. 67-2)) (emphasis
added).

ISE, while ironically arguing that Mr. Longarzo’s notice could not have been
anything other than a DMCA Notice, notes that it is possible to “claim that content on
Amazon violates a trademark (not a DMCA [N]otice), a patent (not a DMCA [N]otice)
or a copyright (a DMCA [N]otice).” (Supp. Opp. at 14). But even this is an
incomplete description of the bases for which a claimant may submit a complaint to
Amazon.
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Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 14 of 18 Page ID #:802

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
Plaintiff acknowledges, and a review of the link Plaintiff points to shows, that
Amazon permits requests to remove content for the following reasons:

 Copyright concerns – unauthorized use of copyrighted material such as text,
photos, product designs, videos, music, software;

 Trademark concerns – unauthorize use of a word, phrase, symbol, and/or design
that identifies and distinguishes the source of the goods;

 Patent concerns; and

 Other concerns.

(See id. at 14; Amazon’s Report Infringement, available at
https://www.amazon.com/gp/help/reports/infringement) (emphasis added).

Both Mr. Civillico’s initial (and ultimately rejected) complaint to Amazon and
Mr. Longarzo’s subsequent complaint were not based on copyright concerns and fall
under the category of “Other concerns.” Mr. Civillico’s initial complaint noted that he
was the “Rights Owner” as opposed to the copyrights owner and described to Amazon
the infringing activities as: “Use of my name and/or image/likeness is an infringement
of my right of privacy and right of publicity, as these rights have not been granted by
me.” (Declaration of Jeff Civillico (“Civillico Decl.”), Ex. A (Docket No. 57-2))
(emphasis added). Following the initial denial of Mr. Civillico’s complaint, Mr.
Longarzo’s communications with Ms. Morgan, an employee of Amazon, stated that
“his [Mr. Civillico’s] image, likeness and performance are being improperly used.”
(Id., Ex. B) (emphasis added).

By its express terms, the DMCA applies only to copyrights, not patents,
trademarks, or other rights like the right of publicity. See, e.g., Williams v. Life’s Rad,
No. 10-cv-86-SBA, 2010 WL 5481762, at *3 (N.D. Cal. May 12, 2010) (“Had
Congress intended to include trademark [or patent and other] infringement within the
purview of the DCMA, it easily could have done so.”). By requesting that Amazon

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Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 15 of 18 Page ID #:803

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
removes the Series based upon infringement of Mr. Civillico’s rights of publicity and
privacy, Mr. Longarzo has not sent a DMCA takedown notice.

ISE also argues that, assuming Mr. Civillico’s right of publicity was the subject
of the online complaint, he “lost all intellectual property rights to his likeness contained
in the show itself as [Mr. Civillico’s likeness] became a part of the copyrighted work
[the Series] owned by ISE” when he signed the Deal Memo. (Supp. Opp. at 15–16).
At the hearing, ISE reiterated that the primary issue to be resolved is the contractual
nature of the Deal Memo between the parties.

ISE’s argument, however, is unavailing and simply an attempt to relitigate the
breach of contract claim that the Court has already dismissed without leave to amend.
The Court, in its final substantive analysis of ISE’s breach of contract claim, notes the
following:

Simply put, if ISE intended to bind [Mr.] Civillico to do any of the things
it now alleges he was bound to do, it should have entered a contract with
him that actually said these things. The Deal Memo essentially does not
require [Mr.] Civillico to do anything apart from keeping ISE’s
information confidential.

(April 16 Order at 12).

Second, Defendants cite to the requirements with which a DMCA Notice must
comply under § 512(c)(3)—in writing, contains a physical or electronic signature,
identifies both the infringed and infringing works, contact information for the
complaining party, made under the penalty of perjury, etc.—and argue that ISE’s
§ 512(f) claim fails because Mr. Longarzo’s communications with Amazon do not
comply with any of these requirements. (Mot. at 11–12). In a confusing response, ISE
has lifted verbatim the Court’s reasoning in the February 2 Order, including citations,
to argue the following:

Defendants cite no authority to support such a stringent pleading
requirement and the Court has not located any. It would make little sense
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Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 16 of 18 Page ID #:804

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
to require a plaintiff suing under [§] 512(f) to plead – consistent with Rule
11 – what the defendant did or did not include in their communications
with an ISP where the plaintiff has only received notification that the ISP
has removed content at the defendant’s request but not the defendant’s
request itself.

(Supp. Opp. at 14) (emphasis added).

ISE’s argument, of course, is unconvincing because the Court’s previous
reasoning pertains to a motion to dismiss rather than the current motion for summary
judgment. The issue now is whether Defendants have adequately pointed to evidence
to show that the requirements with which a DMCA Notice must comply under
§ 512(c)(3) were met. The Court concludes that there is no indication, nor has ISE
pointed to evidence to the contrary, that the requirements were indeed met.

Mr. Longarzo’s communications with Amazon did not identify any copyrighted
work by Mr. Civillico. (Longarzo Decl., Ex. A). Neither was any representation made
under the penalty of perjury. (See id.). Since Defendants have pointed to evidence that
not all of the requirements of § 512(c)(3) were met and since ISE has not pointed to
any evidence to the contrary, the Court concludes that ISE’s § 512(f) claim must fail.
See Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1112 (9th Cir. 2007) (“[DMCA]
thus signals that substantial compliance means substantial compliance with all of §
512(c)(3)’s clauses, not just some of them.”) (emphasis added).

Finally, Defendants argues, to which ISE does not respond, that Mr. Longarzo’s
communications with Amazon “did not follow the procedures required by the DMCA.”
(Mot. at 12–13).

The DMCA requires an ISP to submit to the Copyright Office the name, address,
telephone number, and email address of a “designated agent to receive” DMCA
Notices. § 512(c)(2). And to be effective, a DMCA Notice must be “provided to the
[ISP’s] designated agent.” § 512(c)(3)(A). “An otherwise perfect [DMCA Notice], but
which is not served on the service provider’s designated agent, is equally a nullity.”

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Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 17 of 18 Page ID #:805

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 12B.04[B][4][a]
(updated 2018) (emphasis added).

According to the Copyright Office’s database, Amazon’s registered DMCA
agent is Adrian Garver when Mr. Longarzo emailed his purported DMCA Notice. (See
RJN, Ex. 2.). The email address to which a DMCA Notice must be sent is
copyright@amazon.com. (See id.). There is no evidence that Mr. Longarzo’s DMCA
Notice was ever sent to Mr. Garver or even to copyright@amazon.com. (See Civillico
Decl. Exs. A–B). The Court concludes that, since it was never served on Amazon’s
registered agent, the alleged DMCA Notice fails to comply with the procedures set
forth in the DMCA.

In sum, the Court concludes that Mr. Longarzo’s email communications with
Amazon were not DMCA Notices and § 512(f) does not apply.

D. “Knowingly Materially Misrepresented”

Defendants next argue that ISE has failed to show that Defendants acted with the
requisite mental state to be liable under § 512(f). (Mot. at 14–18).

As noted above, pursuant to § 512(f), “[a]ny person who knowingly materially
misrepresents . . . that material or activity is infringing . . . shall be liable for any
damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . .”
§ 512(f) (emphasis added). Both Mr. Civillico and Mr. Longarzo have submitted
sworn testimony indicating that they had subjective, good faith beliefs that they were
not knowingly or intentionally misrepresenting any rights to Amazon. (Civillico Decl.
¶ 5; Longarzo Decl. ¶ 4). ISE has failed to point to any evidence to the contrary.

In an attempt to prove actual knowledge of misrepresentation, ISE first points to
the Deal Memo, pursuant to which Mr. Civillico “agree[d] that any work created during
the course of business with [ISE] is the original work and property of [ISE],” and that
“all rights, including copyrights, performance rights and publicity rights, belong to
[ISE].” (Supp. Opp. at 19). Relying solely on the Deal Memo, ISE argues that it “has
produced sufficient evidence in the form of the [D]eal [M]emo . . . that the Defendants
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CIVIL MINUTES—GENERAL 17
Case 2:17-cv-09132-MWF-JC Document 72 Filed 12/11/18 Page 18 of 18 Page ID #:806

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 17-9132-MWF (JCx) Date: December 11, 2018
Title: ISE Entertainment Corporation v. Gerald Longarzo, Jr., et al.
knew their representations . . . were false.” (Id. at 18). The Court, previously warning
ISE that it “may struggle to produce evidence of subjective bad faith as the case
progresses,” is now persuaded that ISE has failed to produce sufficient evidence to
demonstrate some actual knowledge of misrepresentation on the part of either Mr.
Civillico or Mr. Longarzo. (See February 2 Order at 12).

Because of its failure to produce sufficient, indeed any, evidence to establish a
knowingly materially misrepresentation on the part of either Mr. Civillico or Mr.
Longarzo, ISE has not raised a genuine dispute of material facts and Defendants are
entitled to summary judgment. See, e.g., Rossi v. Motion Picture Ass’n of America,
Inc., 391 F.3d 1000, 1005 (9th Cir. 2004) (affirming summary judgment in favor of the
defendant and noting that “[a] copyright owner cannot be liable simply because an
unknowing mistake is made, even if the copyright owner acted unreasonably in
making the mistake”).

In sum, the Court concludes that ISE has failed to show that Defendants acted
with the requisite mental state to be liable under § 512(f).

VI. CONCLUSION

For the reasons discussed above, the Motion is GRANTED. A separate
judgement shall issue.

IT IS SO ORDERED.

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CIVIL MINUTES—GENERAL 18