EVOX PRODUCTIONS, LLC, a Delaware limited liability company v. VERIZON MEDIA, INC., a Delaware corporation;

NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
EVOX PRODUCTIONS, LLC, a Delaware
limited liability company,
Plaintiff-Appellant,
v.
VERIZON MEDIA, INC., a Delaware
corporation; et al.,
Defendants-Appellees.
No. 21-56046
D.C. No.
2:20-cv-02852-CBM-JEM
MEMORANDUM*
Appeal from the United States District Court
for the Central District of California
Consuelo B. Marshall, District Judge, Presiding
Argued and Submitted October 19, 2022
Pasadena, California
Before: WATFORD and HURWITZ, Circuit Judges, and VITALIANO,** District
Judge.
* This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
** The Honorable Eric N. Vitaliano, United States District Judge for the
Eastern District of New York, sitting by designation.
FILED
DEC 6 2022
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS

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Evox Productions, LLC, a creator and distributor of digital automobile
images, appeals from the dismissal of its federal trademark and copyright
infringement claims against Verizon Media Inc., Yahoo! Inc., and Oath Inc.,
collectively, “Verizon.” The district court dismissed all claims pursuant to Rule 12
of the Federal Rules of Civil Procedure. Our appellate jurisdiction rests on 28
U.S.C. § 1291. We review the dismissal of these claims de novo. See Cervantes v.
Countrywide Home Loans, 656 F.3d 1034, 1040 (9th Cir. 2011).
Evox’s operative complaint plausibly alleged that, through its Yahoo Autos
and Tumblr platforms, Verizon continued to reproduce, display, and distribute
Evox’s photos from Verizon’s servers to website visitors more than 90 days after
the termination of a licensing agreement between Evox and Verizon. So long as
the images were saved to Verizon’s servers and linked to Verizon’s websites,
visitors to these websites could directly view and download Evox’s images from
the site, link the images to other websites, or download and copy them. Evox
alleged that it sent a cease-and-desist demand to Verizon, and that, in reply,
Verizon falsely asserted that it no longer displayed the images. It was only after
receiving a second cease-and-desist letter in June 2019, Evox contended, that
Verizon disengaged public access to the Evox images it had stored on its servers.
For the copyright claim, the pleaded digital context provides the imperative
for decision. Perfect 10 controls the case before us. In Perfect 10, we held that an

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entity “displays a photographic image” within the meaning of the copyright law
when it “us[es] a computer to fill a computer screen with a copy of the
photographic image fixed in the computer’s memory” or “communicate[s] the
stored image electronically to another person’s computer.” Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007). The server test requires
an image to be both stored on the infringer’s servers and delivered by the infringer
to website viewers’ screens. Simply linking to an image stored on a different
server, or storing (without serving) the image on one’s own server does not qualify
as public display under copyright laws. Id. at 1160–62.
In this light, whether or not it meets its ultimate evidentiary burden, Evox
has plausibly pleaded its copyright claim within the bounds of Perfect 10. The
facts alleged by Evox support its contention that Verizon actually displayed Evox’s
images on Yahoo’s Tumblr blog and Yahoo Autos—both of which were accessible
to anyone with an Internet connection—even though Verizon was no longer its
licensee. Appellant pleaded in the complaint that visitors to various Verizon
platforms could actually fill their computer screens with images of its copyrighted
material publicly displayed on the Verizon platform, and that the images were
publicly distributed to Verizon viewers from Verizon websites. The well-pleaded
allegations of Evox’s complaint are sufficient to make out the claim that while
unlicensed, Verizon not only saved Evox’s images on its servers but also displayed

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and distributed them directly to visitors to its websites. Consequently, the district
court’s Rule 12 threshold dismissal of the copyright claim was error.1
The trademark claim is specifically grounded on Evox’s allegations that
Verizon continued to display photographs bearing Evox’s registered mark on
Yahoo websites after the termination of the license, creating associational
confusion forbidden by the Lanham Act. 15 U.S.C. § 1114. Congruence with its
copyright claim, however, sounds the death knell for Evox’s trademark
infringement claim. When an alleged Lanham Act claim over a trademark
embedded in a product is more appropriately the subject of a copyright claim, we
have held that the copyright infringement claim is superseding and exhaustive.
Slep-Tone Ent. Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, 845 F.3d
1246, 1248 (9th Cir. 2017) (per curiam); see also Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S. 23, 34 (2003). The trademark infringement
claim, therefore, was properly dismissed by the district court.
1 Evox advances Bell v. Wilmott Storage Services, LLC, 12 F.4th 1065 (9th Cir.
2021) as additional support for reversal. Bell held, essentially, that an entity
violates the public display prohibition and infringes a copyright simply by making
an image available online without “serving” the image. In its counterattack,
Verizon argues that Bell’s “making available” standard is at odds with the Supreme
Court’s decision in Am. Broad. Cos. v. Aereo, Inc., 573 U.S. 431, 448 (2014) and
various precedents of this court. Since we hold that Evox has plausibly pleaded
that Verizon’s website users actually viewed Evox’s images on Verizon’s
platforms, we need not, and do not, consider whether the holding in Bell affords an
additional basis for reversal.

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Upon de novo review, that portion of the district court’s judgment
dismissing appellant’s trademark infringement claim is affirmed while that portion
of the judgment dismissing appellant’s copyright claim is reversed.
AFFIRMED IN PART, REVERSED IN PART, AND REMANDED. Each
party shall bear its own costs on appeal.

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