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IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF ARIZONA

 

 Plaintiff Merola Sales Company, Inc. (“Merola”) filed suit against Tabarka Studio, 

Inc. (“Tabarka”) seeking a declaratory judgment against any copyright infringement claims 

and other relief. (Doc. 1) Tabarka filed counterclaims against Merola for copyright 

infringement and injunctive relief. (Doc. 29) Before the Court is Merola’s motion to 

dismiss (the “Motion”) seeking dismissal of Tabarka’s infringement counterclaims against 

it. The Court’s ruling is as follows. 

I. Background 

Meir Zenati (“Zenati”) is a designer that creates hand-painted tiles, pottery, 

furniture, and other housewares. (Doc. 29 at 14) Zenati has created many collections of 

hand-painted tiles, which he manufactures and sells to several of the largest tile distributors 

throughout the United States. (Doc. 29 at 15) At issue in this case are four of Zenati’s 

designs, Paris Metro 1 (“PM 1”) created in 2008, Casablanca 2 (“C2”) created in 2007, 

Paris Metro 11 (“PM 11”) created in 2008, and Touareg 6 created in 2011. 

Merola Sales Company, Inc., 

 

Plaintiff, 

vs. 

Tabarka Studio, Inc., 

Defendant. 

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No. CV-18-00248-PHX-SPL 

ORDER 

 
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In 2009, Zenati formed Tabarka, of which he remains president and CEO. Upon the 

formation of Tabarka, Zenati transferred the ownership rights to PM 1, PM 11, and C2 to 

the corporation through an oral agreement. (Doc. 29 at 15) Zenati and Tabarka 

memorialized this oral agreement in a writing on May 1, 2018. (Doc. 29 at 15) In 2017, 

Tabarka began the process of obtaining registered copyrights for PM 1, PM 11, C2, and 

Touareg 6 with the U.S. Copyright Office. (Doc. 29 at 16) In each of the copyright 

applications, Darna, Inc. (“Darna”), an inactive California corporation owned by Zenati, 

was listed as the author of the works. (Doc. 36 at 7) On August 15, 2017, PM 1, PM 11 

and Touareg 6 were issued copyright registrations for the artwork on the tiles. (Doc. 29 at 

16) However, the registration application for C2 was denied on March 22, 2018. 1 (Doc. 

29 at 17) 

 In 2015, prior to the filing of the copyright registration applications, Tabarka 

became aware that several of its designs, including PM 1, PM 11, and C2, were being 

copied and sold in nearly-identical tiles throughout the United Kingdom. (Doc. 29 at 17) 

In 2017, Tabarka became aware that Merola, along with third-party defendants Home 

Depot Product Authority, LLC and Home Depot U.S.A., Inc. (together, “Home Depot”), 

was selling unlicensed tiles that were identical copies of Tabarka’s tiles. (Doc. 29 at 22, 

25) 

 On January 23, 2018, Merola initiated this lawsuit seeking a declaratory judgment 

that it did not infringe on Tabarka’s copyright interests. (Doc. 1 at 12–13) On May 1, 2018, 

Tabarka filed its answer and asserted counterclaims against Merola and Home Depot for 

copyright infringement and injunctive relief. (Doc. 29 at 12–34) Merola filed the Motion 

on May 15, 2018, seeking dismissal of Tabarka’s infringement counterclaims pertaining to 

PM 1, PM 11, and C2. (Doc. 36 at 13) 

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 The application for C2 was denied, but Tabarka filed a request for reconsideration 

listing Zenati as the creator of C2. (Doc. 29 at 17; Doc. 45 at 11) 
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II. Dismissal for Lack of Subject Matter Jurisdiction Pursuant to Rule 12(b)(1) 

A. Legal Standard 

A motion to dismiss for lack of subject matter jurisdiction brought pursuant to Rule 

12(b)(1) may facially attack the existence of subject matter jurisdiction or may challenge 

the truth of the alleged facts that would confer subject matter jurisdiction on the court. 

Renteria v. United States, 452 F. Supp. 2d 910, 919 (D. Ariz. 2006) (citing Thornhill Publ’g 

Co. v. Gen. Tel. & Elecs. Corp., 594 F.2d 730, 733 (9th Cir. 1979)). Courts are permitted 

to consider evidence to decide a factual attack on subject matter jurisdiction. Thornhill, 

594 F.2d at 733. The party asserting jurisdiction has the burden of proof to show that the 

court has subject matter jurisdiction. Indus. Tectonics, Inc. v. Aero Alloy, 912 F.2d 1090, 

1092 (9th Cir. 1990). Where a claimant lacks standing, the court must dismiss the action 

for lack of subject matter jurisdiction pursuant to Rule 12(b)(1). Ervine v. Desert View Reg. 

Med. Ctr. Holdings, LLC, 753 F.3d 862, 868 (9th Cir. 2014). 

B. Analysis 

In federal courts, federal question jurisdiction exists for any claim that sounds in 

copyright law, because copyright is a right granted exclusively by federal law. Humphreys 

& Partners Architects LP v. Atl. Dev. & Investments Inc., 2016 WL 1535175, at 4 (D. Ariz. 

Apr. 15, 2016) (citing Bean v. McDougal Littell, 538 F. Supp. 2d 1196, 1199 (D. Ariz. 

2008). A claimant must still have the core component of standing under Article III of the 

Constitution for a federal court to have jurisdiction. Humphreys, 2016 WL 1535175 at 4 

(citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992)). To satisfy Article III’s 

standing requirement, a claimant must show that he suffered a “concrete and 

particularized” injury that is “fairly traceable to the challenged action of the defendant,” 

and that a favorable decision would likely redress the injury. Humphreys, 2016 WL 

1535175 at 4 (citing Friends of the Earth, Inc. v. Laidlaw Env. Servs. (TOC), Inc., 528 U.S. 

167, 180–81 (2000)). The complaint must allege sufficient specific facts to establish 

standing for that claimant, and a court must dismiss a complaint if the claimant fails to 

provide facts sufficient to establish standing. Humphreys, 2016 WL 1535175 at 4 (citing 
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Schmier v. U.S. Court of Appeals for Ninth Circuit, 279 F.3d 817, 821 (9th Cir. 2002); 

Chandler v. State Farm Mut. Auto. Ins. Co., 598 F.3d 1115, 1123 (9th Cir. 2010)). 

Section 501(b) of the Copyright Act of 1976 establishes who has standing to sue for 

infringement: “The legal or beneficial owner of an exclusive right under a copyright is 

entitled, subject to the [registration] requirements of section 411, to institute an action for 

any infringement of that particular right committed while he or she is the owner of it.” 17 

U.S.C. § 501(b). “Any of the exclusive rights comprised in a copyright, including any 

subdivision of any of the rights specified by section 106, may be transferred ... and owned 

separately.” 17 U.S.C. § 201(d)(2). “[E]ither an assignment (which transfers legal title to 

the transferee) or an exclusive license (which transfers an exclusive permission to use to 

the transferee) qualifies as a ‘transfer’ of a right in a copyright for the purposes of the Act.” 

Minden Pictures, Inc. v. John Wiley & Sons, Inc., 795 F.3d 997, 1003 (9th Cir. 2015) 

(stating that under the 1976 Copyright Act, any party to whom such a right has been 

transferred—whether via an assignment or an exclusive license—has standing to bring an 

infringement action based on that right); 17 U.S.C. § 101; DRK Photo v. McGraw-Hill 

Glob. Educ. Holdings, LLC, 870 F.3d 978, 983 (9th Cir. 2017). 

Merola argues that Tabarka lacks standing to bring copyright infringement claims 

for PM 1 and PM 11 because Tabarka has not demonstrated that it is the owner of valid 

copyright interests for these works. (Doc. 36 at 6) Specifically, Merola argues that the 

registered copyright applications for PM 1 and PM 11 state that the works are owned by 

Darna, a non-existent corporate entity for at least one year prior to the creation of the 

works.2

 (Doc. 36 at 7) Furthermore, Merola argues that because Darna was not a viable 

corporation at the time the works were created Darna could not have obtained valid 

copyrights for the works, and Darna could not have validly transferred its copyright 

interests in PM 1 or PM 11 to Tabarka. (Doc. 36 at 7–8) Merola argues that this 

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 While not mentioned in its pleading, Tabarka clarifies that Darna is a company previously owned by Zenati. (Doc. 45 at 4) It is undisputed that Darna has been an inactive 

California corporation since December 2006. (Doc. 36 at 6; Doc. 45 at 7) 
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discrepancy prevents Tabarka from having standing to bring its counterclaims for PM 1 or 

PM 11. 

In response, Tabarka argues that it owns valid copyrights for PM 1, PM 11 and C2 

because the author of the works, Zenati, transferred his ownership rights in the works, as 

the initial author, to Tabarka via an oral agreement and, later, by written memorandum. 

(Doc. 45 at 9) Tabarka acknowledges that Darna was listed as the owner of PM 1 and PM 

11 on their respective copyright applications, but asserts that this was a mistake. (Doc. 45 

at 9) Tabarka argues that it has filed supplementary registrations for PM 1 and PM 11 to 

identify Zenati as the proper author of the works and to correct the mistake of the works 

being classified as “work made for hire.” (Doc. 45 at 9–10) Tabarka further argues that 

the mistake of adding Darna to the copyright applications does not invalidate the transfer 

from Zenati to Tabarka or Tabarka’s ownership of these rights. (Doc. 45 at 9–10) 

First, the Court must focus its analysis on whether Tabarka has simply alleged 

“sufficient specific facts to establish standing” to bring its counterclaim. Humphreys, 2016 

WL 1535175 at 4 (citing Schmier, 279 F.3d at 821; Chandler, 598 F.3d at 1123). Merola 

argues that Darna could not have owned the copyrights at issue, and Tabarka retorts that 

listing Darna on the copyright applications was a mistake. Tabarka also identifies the 

proper author of the work, Zenati, and alleges that measures are being taken to correct the 

mistake through submitting supplementary registrations for the works at issue. 

The Court finds that Tabarka alleged facts sufficient to show that it owns valid 

copyright interests in PM 1 and PM 11. First, it is undisputed that Zenati is the creator of 

the works at issue. (Doc. 45 at 7; Doc. 36 at 7) It is well settled that ownership rights to a 

piece of artwork vest in the creator of such work. 17 U.S.C. § 201. Therefore, the Court 

finds that the ownership rights to PM 1 and PM 11 were vested in Zenati as the creator of 

those works. See 17 U.S.C. § 201(a). 

The Court also finds that Tabarka pleaded facts sufficient to demonstrate that it 

possessed the copyright interests in PM 1 and PM 11 at the time of the alleged 

infringement. A claim for copyright infringement may only be brought by a party while 
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he or she is the owner of valid copyright interests. 17 U.S.C. § 501(b); Parfums Givenchy, 

Inc. v. Drug Emporium, Inc., 38 F.3d 477, 479 (9th Cir. 1994). Here, Tabarka asserts that

Zenati transferred his ownership rights to Tabarka through an oral agreement made 

between Zenati and Tabarka “upon the formation” of Tabarka in 2009. (Doc. 29 at 15) 

Tabarka also states that the oral agreement was memorialized in writing on May 1, 2018. 

(Doc. 29 at 15) It is well settled that a copyright interest may be assigned via oral 

agreement so long as it is later memorialized in writing. 17 U.S.C. § 204; See Jules Jordan 

Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146, 1157 (9th Cir. 2010). 

The Court notes that the applications for registered copyrights in this case were 

submitted nearly 10 years after the works were created. (Doc. 29 at 16) And, while Merola 

argues that Tabarka’s failure to justify the mistake of listing Darna on the applications for 

registered copyrights should weigh heavily against a finding of standing, Merola does not 

argue or imply that Tabarka’s mistake rises to the level of fraud. For the purposes of this 

Motion, it is clear to the Court that Tabarka has alleged facts to show that Zenati, who is 

the undisputed creator of the works, initially retained an ownership interest in the work that 

he later transferred to Tabarka. Therefore, the Court must find that Tabarka has met its 

burden of alleging facts sufficient to show that it has standing to bring its counterclaims. 

Accordingly, Merola’s Motion to dismiss Tabarka’s counterclaims for lack of subject 

matter jurisdiction must be denied. 

III. Dismissal for Failure to State a Claim pursuant to Rule 12(b)(6) 

A. Legal Standard 

To survive a motion to dismiss, a complaint must contain “a short and plain 

statement of the claim showing that the pleader is entitled to relief” such that the defendant 

is given “fair notice of what the . . . claim is and the grounds upon which it rests.” Bell Atl. 

Corp. v. Twombly, 550 U.S. 554, 555 (2007) (quoting Fed. R. Civ. P. 8(a)(2); Conley v. 

Gibson, 355 U.S. 41, 47 (1957)). The Court may dismiss a complaint for failure to state a 

claim under Federal Rule 12(b)(6) for two reasons: (1) lack of a cognizable legal theory, 

and (2) insufficient facts alleged under a cognizable legal theory. Balistreri v. Pacificia 
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Police Dep’t, 901 F.2d 696, 699 (9th Cir. 1990). In deciding a motion to dismiss, the Court 

must “accept as true all well-pleaded allegations of material fact, and construe them in the 

light most favorable to the non-moving party.” Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d 

992, 998 (9th Cir. 2010). In comparison, “allegations that are merely conclusory, 

unwarranted deductions of fact, or unreasonable inferences” are not entitled to the 

assumption of truth, and “are insufficient to defeat a motion to dismiss for failure to state 

a claim.” Id.; In re Cutera Sec. Litig., 610 F.3d 1103, 1108 (9th Cir. 2010). A plaintiff 

need not prove the case on the pleadings to survive a motion to dismiss. OSU Student All. 

v. Ray, 699 F.3d 1053, 1078 (9th Cir. 2012). 

In ruling upon a motion to dismiss under Rule 12(b)(6), a court may consider only 

the complaint, any exhibits properly included in the complaint, and matters that may be 

judicially noticed pursuant to Federal Rule of Evidence 201. See Mir v. Little Co. of Mary 

Hosp., 844 F.2d 646, 649 (9th Cir. 1988); Isuzu Motors Ltd. v. Consumers Union of U.S., 

Inc., 12 F. Supp. 2d 1035, 1042 (C.D. Cal. 1998). A court may take judicial notice of facts 

“not subject to reasonable dispute” because they are either: “(1) generally known within 

the territorial jurisdiction of the trial court or (2) capable of accurate and ready 

determination by resort to sources whose accuracy cannot reasonably be questioned.” Fed. 

R. Evid. 201; see also Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 2001) (noting 

that the court may take judicial notice of undisputed “matters of public record”). A court 

may disregard allegations in a complaint that are contradicted by matters properly subject 

to judicial notice. Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d 992, 998 (9th Cir. 2010). 

B. Analysis 

Merola moves to dismiss Tabarka’s counterclaims under Federal Rule of Civil 

Procedure 12(b)(6) for failure to state a claim. Merola’s arguments on this basis largely 

mirror its arguments made in favor of its motion to dismiss pursuant to Rule 12(b)(1). A 

claimant must satisfy two requirements to present a prima facie case of direct infringement: 

(1) they must show ownership of the allegedly infringed material and (2) they must 

demonstrate that the alleged infringers violate at least one exclusive right granted to 
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copyright holders under 17 U.S.C. § 106. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 

1146, 1159 (9th Cir. 2007). 

Taking the facts in Tabarka’s pleading in the light most favorable to Tabarka, the 

Court finds that Tabarka has pleaded facts sufficient to establish a claim for copyright 

infringement. First, for the aforementioned reasons, the Court finds that Tabarka asserts 

facts sufficient to show that the creator of PM 1 and PM 11 transferred his copyright 

interests to Tabarka; therefore, Tabarka has valid copyright interests in the works at issue. 

Specifically, Tabarka states that Zenati, the creator vested with original ownership rights 

in the works, transferred his ownership interests to Tabarka upon the formation of the 

corporation in 2009. The Court also finds that Tabarka has pleaded sufficient facts to 

demonstrate that its rights were infringed upon during the time it possessed those 

ownership interests. Specifically, Tabarka pleaded facts sufficient to demonstrate that 

Merola was selling unlicensed identical tiles by alleging that Merola was offering the 

identical tiles for sale on its website. (Doc. 29 at 22, 25) The Court finds that Tabarka has 

clearly pleaded facts sufficient to demonstrate that it owns valid copyright interests in the 

works at issue and that those rights have been violated through Merola’s distribution of 

tiles reflecting nearly identical artwork. Accordingly, the Court finds that the Rule 12(b)(6) 

basis of the Motion must be denied as to works PM 1 and PM 11. 

Tabarka also seeks to bring an infringement claim against Merola for C2. It is 

undisputed that Zenati created C2 and orally transferred his ownership rights over the piece 

to Tabarka. It is also undisputed that the Copyright Office denied the registered copyright 

application for C2. (Doc. 29 at 17) Registration is generally a jurisdictional prerequisite to 

a suit for copyright infringement, but Section 411 does not limit the remedies a court can 

grant and gives courts broad authority to issue injunctive relief. 17 U.S.C. § 411; 17 U.S.C. 

§ 502(a); Perfect 10, 508 F.3d at 1154. Once a court has jurisdiction over an action for 

copyright infringement under section 411, the court may grant injunctive relief to restrain 

infringement of any copyright, whether registered or unregistered. Perfect 10, 508 F.3d at 

1154. It is the Court’s understanding that the Motion is limited to dismissing Tabarka’s 
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counterclaims for infringement related to C2 and not any of Tabarka’s counterclaims for 

injunctive relief. Therefore, without a registered copyright, the Motion will be granted 

with respect to Tabarka’s counterclaim for infringement as it relates to C2. 

Accordingly, 

IT IS ORDERED that Counter-defendant’s Motion to Dismiss (Doc. 36) is denied 

in part as it relates to Tabarka’s counterclaims for infringement for the artworks identified 

as Paris Metro 1 and Paris Metro 11; and 

IT IS FURTHER ORDERED that Counter-defendant’s Motion to Dismiss (Doc. 

36) is granted in part as it relates to Tabarka’s counterclaim for infringement for the artwork 

identified as Casablanca 2. 

Dated this 10th day of January, 2019. 

Honorable Steven P. Logan 

United States District Judge