United States District Court, W.D. Washington, Seattle
ORDER DENYING MOTION TO DISMISS COUNTERCLAIM
Robert S. Lasnik United States District Judge
matter comes before the Court on “Plaintiff's
12(b)(1) Motion to Dismiss Counterclaim of Judy
Rushing.” Dkt. # 108. On July 8, 2016, plaintiff
asserted a copyright infringement action against Judy Rushing
alleging that she “copied and distributed
Plaintiff's copyrighted motion picture Queen of the
Desert.” Dkt. # 16 at ¶ 10. This allegation
was based on the fact that the internet connection Rushing
paid for was used to connect to a swarm and to share/download
plaintiff's film. Under plaintiff's theory of the
case, Rushing was liable because she either (a) personally
downloaded the film or (b) failed to prevent another person
from using her internet connection to do so.
promptly notified plaintiff that she did not copy Queen
of the Desert, but that another adult residing in her
house did. She refused to identify the non-party. Plaintiff,
for its part, refused to dismiss the claims against her
unless and until she provided identifying information. On
August 8, 2016, Rushing filed an answer and counterclaim
seeking a declaration of non-infringement and an award of
attorney's fees and costs for having to defend the case.
Dkt. # 27. Rushing eventually capitulated and identified her
son, Brian Wilson, as the person who participated in the
Queen of the Desert swarm. Shortly thereafter,
plaintiff filed a motion to amend and was granted leave to
dismiss its claims against Rushing and add claims against
extent plaintiff thought the amendment resolved Rushing's
counterclaims, it was mistaken. When a plaintiff voluntarily
dismisses its claims, the Court may, but is not required to,
dismiss compulsory counterclaims that are then pending.
See Smith v. Lenches, 263 F.3d 972, 977 (9th Cir.
2001) (noting that the appellate court's “standard
of review leads [it] to consider whether the district court
abused its discretion by dismissing [defendant's]
counterclaim.”). The order granting leave to amend did
not address the issue (Dkt. # 71), and Rushing made clear in
January 2017, if not earlier, that she believes her
counterclaim remains outstanding. Although the caption of the
case has not been formally amended, the docket in this matter
accurately reflects that Rushing's counterclaim is still
now seeks dismissal of Rushing's counterclaim for lack of
jurisdiction under Fed.R.Civ.P. 12(b)(1). The Declaratory
Judgment Act provides that, “[i]n a case of actual
controversy within its jurisdiction, . . . any court of the
United States . . . may declare the rights and other legal
relations of any interested party seeking such declaration,
whether or not further relief is or could be sought.”
28 U.S.C. § 2201(a). Plaintiff's dismissal of its
claims against Rushing in favor of suing the person who
actually downloaded Queen of the Desert would not be
enough to end its controversy with Rushing. The dismissal was
without prejudice, and plaintiff could at any moment reallege
that Rushing is liable under the Copyright Act because she
failed to take precautions to prevent third-parties from
using her internet connection to download the
film. Plaintiff's voluntary and unilateral
cessation of the lawsuit did not deprive Rushing of her right
to seek a declaration that she has not infringed.
that more is needed, plaintiff states in its motion that it
“unconditionally asserts that it will not enforce
asserted Copyright Registration No. PAu 3-766-976, as set
forth in the complaint, against Ms. Rushing for any act
occurring to the present date.” Dkt. # 108 at 5. The
Court accepts this carefully worded “unconditional
assertion” as an enforceable promise that plaintiff
will not pursue a copyright infringement claim against
Rushing under any theory that is related to Queen of the
Desert and arose prior to the date of this order. The de
facto dismissal that occurred when Rushing was dropped from
the complaint is therefore converted into a dismissal with
prejudice. Because this enforceable covenant not to sue
and/or dismissal with prejudice makes any possibility of a
future infringement action speculative, there is no actual
case or controversy to form the basis for the Court's
jurisdiction over Rushing's request for a declaratory
judgment. See Nat'l Prods., Inc. v. Gamber-Johnson
LLC, C07-1985RAJ, 2008 WL 11343465, at *2-4 (W.D. Wash.
Apr. 23, 2008).
Rushing has preserved her right to seek attorney's fees,
and the Court retains jurisdiction to consider that request.
Id., at *5. Section 505 of the Copyright Act
In any civil action under this title, the court in its
discretion may allow the recovery of full costs by or against
any party other than the United States of an officer thereof.
Except as otherwise provided by this title, the court may
also award a reasonable attorney's fee to the prevailing
party as part of the costs.
17 U.S.C. § 505. It appears likely that, having obtained
a dismissal of the claims against her with prejudice, Rushing
will be able to show that she has materially altered the
legal relationship of the parties, triggering the Court's
discretion to award fees under § 505. See Buckhannon
Bd. & Care Home, Inc. v. W.Va. Dep't of Health &
Human Res., 532 U.S. 598, 604 (2001); Cadkin v.
Loose, 569 F.3d 1142, 1148-49 (9th Cir. 2009).
Plaintiff's efforts to resolve the copyright dispute
between the parties does not erase the counterclaim Rushing
was forced to assert or her entitlement to the relief
afforded to prevailing parties under the Copyright Act and/or
the Rules of Federal Procedure.
of the foregoing reasons, plaintiff's motion to dismiss
Rushing's counterclaim is DENIED.
 The Court is not espousing or
otherwise promoting this theory of copyright infringement. In
fact, for the reasons stated in Elf-Man, LLC v.
Cariveau, C13, 0507RSL (Dkt. # 78), the “failure
to secure” theory cannot support claims of direct,
contributory, or indirect infringement in the circumstances
presented here. Plaintiff admits as much in reply when it
acknowledges that there would be no basis for asserting an
infringement action against Rushing ...