OAKLAND, Calif. (CN) — It is now up to a federal judge to determine if Disney must face a jury trial over claims that its contractor illegitimately used copyrighted facial motion capture technology patented by a San Francisco company.
The case in question, filed in California by Rearden LLC, alleges that Disney got access to its facial performance motion capture tech by contracting a company, DD3, which employed a former Rearden employee.
That employee Greg LaSalle, formerly of subsidiary Rearden MOVA, is accused of having illegally sold the MOVA Countour “facial performance motion capture” technology to a Chinese company in 2012.
Rearden claims LaSalle stole equipment and copies of a copyrighted software program from a secure facility before he left to work for DD3 in 2013. Disney contracted with DD3 to create lifelike animated characters for hit films including “Avengers: Age of Ultron” in 2015 and “Guardians of the Galaxy” in 2014. MOVA Contour technology uses phosphorescent makeup on actors’ faces and synchronized cameras and software to transform the curves, expressions and movements of human faces into lifelike animations.
In 2018, U.S. District Judge Jon Tigar denied Rearden’s bid to claim ownership of the movies and games, but he refused to dismiss claims of vicarious and contributory copyright infringement. The Ninth Circuit Court of Appeals affirmed Tigar’s decision in 2019.
Tigar granted Disney’s motion for summary judgment in 2020 after the studios argued there was no causal link between the use of that technology and profits earned from movies. Tigar found Rearden presented no evidence to show a connection between the infringement of its technology and profits earned from four movies. He rejected the studios’ argument that the law does not entitle Rearden to obtain indirect profits from those films because paying moviegoers never saw the copyrighted software itself.
But he said Rearden may be entitled to a portion of profits from two Disney films — “Beauty and the Beast” and “Guardians of the Galaxy” (2014) — and one Fox film, 2016's “Deadpool.”
Rearden argues that Disney knew about and could have stopped DD3’s purported infringement, because Disney allegedly had the right to terminate DD3’s services under contracts for the two films.
But Disney’s 33-page motion to dismiss Rearden’s second amended complaint, filed last October, claims that the plaintiffs’ claims are “far-fetched” and in part pertain to ineligible patents.
Rearden asserts secondary infringement of two “Avengers” movies, “Infinity War” and ‘Endgame,” which began filming after Tigar preliminarily enjoined DD3 from using MOVA, and claims Disney is secondarily liable for copyright infringement because DD3 allegedly smuggled MOVA software files into its post-capture animation work. But Disney says Rearden did not directly allege that the studios “directed” DD3’s on-set use of MOVA.
“Because this system was not MOVA, and did not produce MOVA output files, there cannot be any allegations that Disney ‘reviewed’ copyright notices on MOVA output files,” Disney says — adding that its DD3 contracts expressly forbade the vendor from using MOVA technology or staff.
Disney says the copyright claims fail because Rearden failed to plead that DD3 directly infringed on their rights by making unauthorized copies of MOVA software, relying on folder and file-path names extracted from multi-thousand-entry spreadsheets DD3 turned over to Rearden.
“In other words, Rearden spent the past five years prosecuting continuation patents focused on Disney’s independently developed facial capture systems, which use versatile advanced computer power … in lieu of MOVA’s cumbersome phosphorescent paint application and requisite strobing light rigs,” Disney says. “Rearden now impermissibly attempts to claim the result of any facial motion capture process without ever specifying in its claims how facial motion capture is performed.”
The company also claims Rearden’s allegations of indirect infringement, willfulness and enhanced damages all should be dismissed because Rearden fails to plead knowledge of the patents “or any egregious conduct at all.” Disney claims that it did not previously know about DD3’s alleged infringement.
In federal court before Tigar on Thursday, Rearden’s attorney Brian Beck asked to move forward to discovery to gather more evidence.
“We know that it (the technology) was used and that’s enough to state the claims for infringement,” he said.
“Ultimately Your Honor, we don’t have the burden to absolutely prove our case. We have the burden to make plausible actuality conclusions — we’ve done that. There are additional files coming out, and we’re fighting with Disney to get those files.”
One of Disney’s lawyers, Sonal Mehta, said Rearden gutted the claims from the original complaint and changed them substantially. Beck disagreed, saying Tigar should note how the face capture technology in the cited films has changed dramatically due to technological advancements that do not happen organically.
“There’s a dispute here as to what these patents actually cover … and where there’s factual dispute, Your Honor should deny the motion to dismiss,” Beck said. “There's not enough here to construe the claims of these patents so broadly as to remove any technological innovation from them.”
Mehta told Tigar that “With our motion in hand … They (Rearden) elected to amend their complaint. They can’t change the claims.”
Tigar disagreed, saying it is not his role to determine if Rearden did something wrong by amending their complaint.
“So many people have tried the argument you’re making,” he told Mehta.
“If I am in litigation and my opponent comes to me, my assumption is that they are trying to hurt me and damage my interests. The court, I see it as having a different role. We’re just the truth. We don’t have any interests in mind.”
Tigar told both parties “You’ve all given me a lot to think about.” He did not indicate when or how he will issue a written order.
If the judge denies the motion to dismiss, the case will continue moving toward a jury trial.
Read the Top 8
Sign up for the Top 8, a roundup of the day's top stories delivered directly to your inbox Monday through Friday.