PAGE 1 – OPINION AND ORDER 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

SPREAD, LLC, an Oregon limited liability 

company, 

 Plaintiff, 

 v. 

J.C. PENNEY COMPANY, INC., a 

Delaware corporation; THE WEINSTEIN 

COMPANY, LLC, a Delaware limited 

liability company; ANCHOR BAY 

ENTERTAINMENT, LLC, a Delaware 

limited liability company; and MARCHESA 

HOLDINGS, LLC, a Delaware limited 

liability company,

 Defendants. 

Case No. 3:15-cv-1714-SI 

OPINION AND ORDER

Robert Swider and Andrea A. Selkregg, SWIDER HAVER, 621 SW Morrison, Suite 1420, 

Portland, OR 97205. Of Attorneys for Plaintiff. 

Duane A. Bosworth and Timothy Cunningham, DAVIS WRIGHT TREMAINE, LLP, 1300 SW 

Fifth Avenue, Suite 2400, Portland, OR 97201. Of Attorneys for Defendants. 

Michael H. Simon, District Judge.

Plaintiff brings this action against Defendants for (1) copyright infringement in violation 

of 17 U.S.C. § 101, et.seq. and (2) unjust enrichment.1 Alleging that Defendants, without 

 1

 In its Complaint, Plaintiff also alleged breach of contract. In its Response to 

Defendants’ Motion to Dismiss, Plaintiff voluntarily dismissed its breach of contract claim. 

Dkt. 16 at 5. 

Case 3:15-cv-01714-SI Document 19 Filed 01/07/16 Page 1 of 6
PAGE 2 – OPINION AND ORDER 

authorization, caused Plaintiff’s sound recording and musical composition of “I’ll Be the Light” 

(“Works”) to be used in an advertisement on the DVD of the film Silver Linings Playbook, 

Plaintiff seeks injunctive relief and monetary damages. Defendants move to dismiss Plaintiff’s 

claim for unjust enrichment. For the reasons below, Defendants’ motion is granted. 

STANDARDS 

A motion to dismiss for failure to state a claim may be granted only when there is no 

cognizable legal theory to support the claim or when the complaint lacks sufficient factual 

allegations to state a facially plausible claim for relief. Shroyer v. New Cingular Wireless Servs., 

Inc., 622 F.3d 1035, 1041 (9th Cir. 2010). In evaluating the sufficiency of a complaint’s factual 

allegations, the court must accept as true all well-pleaded material facts alleged in the complaint 

and construe them in the light most favorable to the non-moving party. Wilson v. HewlettPackard Co., 668 F.3d 1136, 1140 (9th Cir. 2012); Daniels-Hall v. Nat’l Educ. Ass’n, 629 

F.3d 992, 998 (9th Cir. 2010). To be entitled to a presumption of truth, allegations in a complaint 

“may not simply recite the elements of a cause of action, but must contain sufficient allegations 

of underlying facts to give fair notice and to enable the opposing party to defend itself 

effectively.” Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). All reasonable inferences from 

the factual allegations must be drawn in favor of the plaintiff. Newcal Indus. v. Ikon Office 

Solution, 513 F.3d 1038, 1043 n.2 (9th Cir. 2008). The court need not, however, credit the 

plaintiff’s legal conclusions that are couched as factual allegations. Ashcroft v. Iqbal, 556 

U.S. 662, 678-79 (2009). 

A complaint must contain sufficient factual allegations to “plausibly suggest an 

entitlement to relief, such that it is not unfair to require the opposing party to be subjected to the 

expense of discovery and continued litigation.” Starr, 652 F.3d at 1216. “A claim has facial 

plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable 

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PAGE 3 – OPINION AND ORDER 

inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678 (citing 

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)). 

BACKGROUND 

For the purposes of this motion, the Court accepts the following well-pleaded material 

facts as true. Plaintiff is the exclusive owner of the copyrights in the Works. On or about 

February 7, 2013, Plaintiff’s agent entered into a licensing agreement (“License”) with an 

advertising agency to license the Works to Defendant J.C. Penney Company (“J.C. Penney”). 

The License authorized J.C. Penney to use the Works in advertisements that showcased a new 

fashion-line designed by Georgina Chapman, one of the founders of Defendant Marchesa 

Holdings, LLC. The License specifically excluded use of the Works on DVDs. 

Sometime around May 2013, Plaintiff discovered that the beginning of the Silver Linings 

Playbook DVD featured a J.C. Penney advertisement that included the Works. Defendants The 

Weinstein Company (“Weinstein”) and Anchor Bay Entertainment (“Anchor Bay”) released and 

distributed the DVD. Plaintiff alleges that Ms. Chapman and J.C. Penney “directed” Weinstein 

and Anchor Bay to include the advertisement containing the Works on the DVD. Dkt. 1 ¶ 28. 

DISCUSSION 

The Copyright Act, 17 U.S.C. § 101, et. seq., preempts all rights created by state common 

law or statute “that are equivalent to any of the exclusive rights within the general scope of 

copyright.” 17 U.S.C. § 301(a). The Ninth Circuit employs a two-part test to determine whether a 

state law claim is preempted by the Copyright Act. Laws v. Sony Music Entm’t, Inc., 448 

F.3d 1134, 1137 (9th Cir. 2006). “Claims under state law are preempted where: (1) the work at 

issue comes within the subject matter of copyright, and (2) the state law rights are equivalent to 

any of the exclusive rights within the general scope of copyright.” Grosso v. Miramax Film 

Corp., 383 F.3d 965, 968 (9th Cir. 2004) (citation and quotation marks omitted), amended on 

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PAGE 4 – OPINION AND ORDER 

other grounds on denial of reh’g, 400 F.3d 658 (9th Cir. 2005). To avoid preemption under the 

second prong of the Ninth Circuit’s test, a state law claim concerning rights within the general 

scope of copyright must “include[] an ‘extra element’ that makes the right asserted qualitatively 

different from those protected under the Copyright Act.” Altera Corp. v. Clear Logic, Inc., 

424 F.3d 1079, 1089 (9th Cir. 2005) (quoting Summit Mach. Tool Mfg. v. Victor CNC Sys., 

7 F.3d 1434, 1439–40 (9th Cir. 1993)). 

Plaintiff concedes that the Works come within the subject matter of copyright. Plaintiff 

argues, however, that under Oregon law, an unjust enrichment claim is qualitatively different 

from a federal copyright infringement claim. According to Plaintiff, the unjust enrichment does 

not require proof of intent and is thus not preempted. Plaintiff cites the case Tupper v. Roan, 349 

Or. 211 (2010), for the proposition that in Oregon, “even a ‘mistake’ might result in unjust 

enrichment.” Id. at 220. According to Plaintiff, this is a qualitative difference from a claim of 

copyright infringement, which, argues Plaintiff, requires some intentional, wrongful act.2

 

The parties did not provide and the Court could not locate any binding precedent within 

the Ninth Circuit on the issue whether an intent requirement changes the qualitative nature of a 

 2

 Because the Court decides the case on other grounds, the Court does not expressly reach 

the question whether copyright infringement requires intent. Ninth Circuit case law suggests, 

however, that a party may prove liability for vicarious copyright infringement without 

establishing an intentional, wrongful act. See, e.g., Ellison v. Robertson, 357 F.3d 1072, 1078 

(9th Cir. 2004) (stating that to prove vicarious infringement, a plaintiff must show that a 

defendant “derived a direct financial benefit from the infringement and had the right and ability 

to supervise the infringing activity”). 

The Court also does not expressly reach the question whether unjust enrichment lacks 

some form of an intent requirement under Oregon law. Oregon case law suggests that unjust 

enrichment may at least require notice that a benefit is being obtained. See Wilson v. Gutierrez, 

261 Or. App. 410, 414 (2014) (“The elements of the quasi-contractual claim of unjust 

enrichment are (1) a benefit conferred, (2) awareness by the recipient that she has received the 

benefit, and (3) it would be unjust to allow the recipient to retain the benefit without requiring 

her to pay for it.”) (quoting Cron v. Zimmer, 255 Or. App. 114, 130 (2013)). 

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claim. Other courts that have addressed the issue, however, have found that an intent or 

knowledge element does not qualitatively change a cause of action. See, e.g., Briarpatch Ltd., 

L.P v. Phoenix Pictures, Inc., 373 F.3d 296, 306 (2d Cir. 2004) (“Awareness or intent, for 

instance, are not extra elements that make a state law claim qualitatively different.”); Zito v. 

Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1027 (N.D. Cal. 2003) (“[C]onversion claims 

generally are preempted even though there is an additional element of intent. . . . The extra 

element in a conversion claim does not necessarily change the nature of the underlying rights at 

issue.”) (citation omitted). Notably, although Plaintiff argues that Oregon law is unique, the 

Ninth Circuit has recognized that the Copyright Act preempts an unjust enrichment claim under 

California law. Montz v. Pilgrim Films & Television, Inc., 649 F.3d 975, 976 (9th Cir. 2011). 

Additionally, at its heart, Plaintiff’s argument is not that unjust enrichment requires an 

extra element; Plaintiff is arguing that unjust enrichment requires proof of fewer elements than 

copyright infringement. That a “state cause of action is composed of fewer elements of proof 

than a copyright infringement claim is not in itself dispositive” of whether the state claim is or is 

not equivalent to copyright infringement. Harper & Row, Publishers, Inc. v. Nation Enterprises, 

501 F. Supp. 848, 852 (S.D.N.Y. 1980), aff’d, 723 F.2d 195 (2d Cir. 1983), rev’d on other 

grounds, 471 U.S. 539 (1985); see Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973, 

976-77 (9th Cir. 1987), overruled on other grounds by Fogerty v. Fantasy, Inc., 510 U.S. 517 

(1994) (citing Harper & Row with approval). A plaintiff must show that the state cause of action 

“protect[s] rights under the facts of a particular case which are qualitatively different from the 

rights of reproduction, performance, distribution, or display.” Harper & Row, 501 F. Supp. 

at 852. 

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PAGE 6 – OPINION AND ORDER 

Plaintiff’s claim for unjust enrichment “re-alleges and incorporates by reference” the 

allegations in the copyright infringement claim. Dkt. 1 ¶ 48. The foundation of Plaintiff’s unjust 

enrichment claim is Plaintiff’s contention that Defendants wrongfully used the Works, to 

Plaintiff’s detriment. Plaintiff’s ownership of the Works and Defendants’ wrongful use of the 

Works “are part and parcel of the copyright claim.” Del Madera, 820 F.2d at 977. The rights 

Plaintiff seeks to protect in its unjust enrichment claim—the rights to exclusively reproduce, 

perform, distribute, and display the Works—are equivalent to those protected by the Copyright 

Act. The mere absence of an intent requirement does not make Plaintiff’s unjust enrichment 

claim qualitatively different from the copyright infringement claim. Therefore, Plaintiff’s unjust 

enrichment claim is preempted.3

 

 CONCLUSION 

Defendants’ Motion to Dismiss (Dkt. 10) is GRANTED. 

IT IS SO ORDERED. 

DATED this 7th day of January, 2016. 

 /s/ Michael H. Simon 

Michael H. Simon 

 United States District Judge 

 3

 As discussed on the record during oral argument, the Court anticipates that this case will 

progress only on Plaintiff’s First Claim, alleging copyright infringement. If, at some later time in 

this litigation, Plaintiff believes that developments in the case warrant the Court’s consideration 

of a motion to amend to add a revised claim of unjust enrichment, Plaintiff has leave to file such 

a motion. To the extent that Defendants then object to any such motion on preemption grounds, 

the Court would consider the arguments of all parties on these issues at that time. 

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