ROBERT C. JONES, District Judge.
This case arises out of alleged copyright infringement. Plaintiff Donna Corbello is the widow and heir of Rex Woodard, who assisted Defendant Thomas Gaetano "Tommy" DeVito in writing his unpublished autobiography (the "Work"). Plaintiff alleges that DeVito and others wrongfully appropriated the Work to develop the screenplay for Jersey Boys, a hit musical based on the band The Four Seasons that has played in the United States, Canada, England, and Australia. Corbello has sued several companies and individuals, including several members of The Four Seasons, for copyright infringement, and has sued DeVito on several state law causes of action. The Court has ruled that DeVito and Plaintiff were 50% joint owners of the Work, that DeVito had granted Defendants Frankie Valli and Robert "Bob" Gaudio a selectively exclusive license to exploit the Work, i.e., a license that was exclusive as against DeVito but nonexclusive as against Plaintiff, and that Valli and Gaudio had in turn granted a nonexclusive sublicense to Defendant DSHT, Inc. The Court made no rulings as to any further licenses. The Court also ruled that only DeVito was potentially liable for a direct accounting. Pending before the Court are eight motions for summary judgment.
Rex Woodard was an attorney, author, and avid Four Seasons fan who finally met Defendant and founding Four Seasons member Tommy DeVito for an interview on December 9, 1981 as a result of the publicity generated from an article Woodard had written about the band in Goldmine magazine earlier that year (the "1981 Article") that focused on the years between the band's breakup in 1970 and reconstitution in 1975. (See Third Am. Compl. ¶¶ 26-29, Mar. 18, 2011, ECF No. 457). On December 23, 1981, Woodard interviewed Tommy's brother Nick DeVito, and on January 8, 1982 he interviewed Nick Massi, another founding member of The Four Seasons. (Id. ¶ 29). The result of these three interviews was a second article published in Goldmine in June of 1982 (the "1982 Article"), which focused on the band's earliest incarnation, The Four Lovers. (Id.).
Woodard kept in touch with DeVito and founding Four Seasons member Frankie Valli throughout the 1980s, and in November of 1988 Woodard flew to Las Vegas,
Woodard returned to Beaumont, Texas to begin writing DeVito's authorized biography (the "Work"), which has never been published. (See id.). On December 1, 1988, Woodard sent DeVito a letter (the "Letter Agreement") memorializing their previous verbal understandings concerning creation of the Work. (Id. ¶ 33). DeVito signed the Letter Agreement beneath the word "APPROVED" and mailed it back to Woodard. (See id.; Letter Agreement, Dec. 1, 1988, ECF No. 457-11). The Letter Agreement reads in full:
(Letter Agreement). Over the next two years, Woodard used the 1988 Interviews and all of his other knowledge about the band to create the Work, including his past interviews with band members, newspaper articles, magazine articles, album linings, Freedom of Information Act requests he filed with law enforcement agencies, and questionnaires he sent to DeVito. (Third Am. Compl. ¶ 34). Woodard compiled all of this information into the Work, resulting in a first-person, narrative-style biography told from DeVito's perspective. (See id.). Woodard remained in close contact with
As the Work neared completion in late 1990, Woodard and DeVito attempted to find a publisher and even provided an outline of the Work to actor Joe Pesci to explore adaptation to a screenplay. (See id. ¶ 36). Plaintiff provides a copy of what she claims is a cover sheet to a January 1991 version of the Work, which reads in full:
(See January 1991 Work Cover Page, ECF No. 457-15).
Though he never smoked, Woodard had been diagnosed with lung cancer in 1989, and his condition had begun seriously to worsen by late 1990. (Id. ¶ 39). By February or March of 1991, he was bedridden, and he died on May 25, 1991 at age forty-one. (Id. ¶ 40). Woodard had hoped that income generated from the Work would support his wife and children. (Id. ¶ 41).
In accordance with Woodard's wishes, Plaintiff and Woodard's sister Cindy Ceen continued to seek publication after Woodard's death independently of DeVito; however, public interest in The Four Seasons had waned, making it difficult to find a publisher. (Id. ¶ 42). Ceen determined in September 2005 to contact DeVito for his assistance in getting the Work published. (See id.). Ceen first contacted a prominent member of an Internet Four Seasons fan group named Charles Alexander to facilitate contact with DeVito. (See id. ¶ 43). Alexander responded to Ceen on September 22, 2005 that he had met with DeVito the previous day, had told DeVito of Ceen's desire to publish the Work, and that DeVito had agreed to help. (See id.). Ceen called DeVito the same day (using a telephone number provided by Alexander), and DeVito indicated that he wanted to update the Work with post-1990 events and restore some "obscene" language Woodard had omitted. (Id.). DeVito also claimed he had lost his copy of the Work and asked Ceen for a replacement, which she mailed to DeVito the next day, along with a letter memorializing their telephone conversation and informing DeVito that Plaintiff was considering self-publishing the Work if a traditional publisher could not be found. (Id.). Neither Plaintiff nor Ceen heard from DeVito again. (Id. ¶ 44). DeVito's attorney Jay Julien left Ceen a voice mail message on November 2, 2005, and Ceen returned his call the next day, during which conversation Julien told Ceen that he had spoken with DeVito regarding the Work and concluded that it was "not saleable." (Id.). Ceen was surprised by this conclusion, because the play Jersey Boys was scheduled to open on Broadway a few days later. (Id.). Mien did not disclose that the Work had been used or exploited in any way or that rights in the Work had been licensed or assigned. (Id.).
By late 2006, Jersey Boys had become a Broadway hit, earning four Tony Awards. (Id. ¶ 45). Plaintiff had not seen the show, but she and Ceen estimated that the show's success would revive interest in the band and make publication of the Work viable. (Id.). Plaintiff and Ceen engaged
(Id. ¶ 49; see DeVito Work Cover Page, ECF No. 457-23). Second, the first page of Chapter 41 (page 264 of the Work) was missing. (See Third Am. Compl. ¶ 49). Plaintiff concluded in light of the Letter Agreement and her dealings with DeVito and his counsel after Woodard's death that DeVito had registered the Work without credit to Woodard or disclosure to Woodard or his heirs. (Id. ¶ 50).
Plaintiff also soon discovered that the writers of and several actors in Jersey Boys had access to the Work and that DeVito had received royalties or other profits from Jersey Boys, and she concluded that the Work had "inspired the form, structure, and content of the musical...." (See id. ¶ 51). As support for this conclusion, Plaintiff notes that Defendant Des McAnuff, the director of Jersey Boys, was quoted in a July 8, 2006 report in Backstage magazine as stating that Defendants Marshall Brickman and Eric Elice had relied in part on "an unpublished autobiography by DeVito" in creating the libretto. (See id. ¶ 52). The source apparently does not indicate whether the libretto served as the script, a program for audiences, or something else. (See id.). Plaintiff notes that Christian Hoff, the first actor to play DeVito in Jersey Boys, stated in what appears to be an online interview that he was provided with a synopsis of the Work for his audition and a full copy for background research. (See id.). Plaintiff also cites to a Wikipedia entry for support that the Work served as a basis for the musical. (See id.). Plaintiff also notes an exchange on a Jersey Boys podcast website indicating that one fan had reported to another that the musical was based on DeVito's unpublished biography. (See id.). Plaintiff also saw public reports of DeVito's financial profits from the musical. (See id.).
On June 13, 2007, Plaintiff's counsel wrote Julien by email and overnight courier demanding that DeVito execute an application for supplementary registration with the U.S. Copyright Office to add Woodard as a coauthor and co-claimant of the Work and demanding an accounting of profits in accordance with the Letter Agreement. (Id. ¶ 53). Counsel conferred with one another by email and telephone between June and October 2007, and Julien
On July 2, 2007, Plaintiff filed her own supplementary application with the U.S. Copyright Office to add Woodard as a coauthor and co-claimant of the Work, but the office rejected the application because DeVito, the original claimant, had not signed it. (Id. ¶ 55). The office could not under 17 U.S.C. § 201(a) permit a non-author, non-claimant as to an original registration, i.e., a "basic registration," to supplement the basic application, but such a person could apply to register her own work, in which case the office would consider the new claim to be adverse to the existing claim if the claims purported to register the same work exclusively to different claimants. (See Copyright Office Letter, June 16, 2008, ECF No. 457-27, at 7). However, the Copyright Office Review Board granted Plaintiff's appeal based on a closer examination of regulations and practices, determining that her supplemental registration could be accepted, and that a certificate of registration would be issued after processing. (See Copyright Office Letter, Mar. 27, 2009, ECF No. 457-28). The amended certificate, Reg. No. Txu1 372-636, lists Woodard and DeVito as coauthors of the entire text of the Work and co-claimants thereto. (See Certificate of Registration TXu1 372-636, July 3, 2007, ECF No. 457-29).
DeVito and Julien then took steps to conceal the fact that DeVito had exploited the Work to create and profit from Jersey Boys. (See id. ¶ 58). First, DeVito withdrew his quotes from Charles Alexander's forward to the upcoming Jersey Boys book, because the use of those quotations would have linked the book, and hence the musical, to the Work. (See id.). Second, DeVito reported in an interview that he had never shown the Work to anyone except Brickman, Elice, and McAnuff, the writers and director of Jersey Boys. (Id.). Third, DeVito "dismantled" his website <www.tommydevito.com> to remove reference to "his SMASH HIT Jersey Boys" (Id.). Fourth, he stated in an interview that he had dictated the Work to a lawyer and that the book was not to be published yet. (Id.). At this point, Plaintiff instituted the present lawsuit.
Certain documents made public during Valli's divorce proceedings in July 2008 revealed that DeVito had granted Valli and Gaudio an exclusive, irrevocable, perpetual, worldwide, assignable license (the "Valli/Gaudio License") freely to use and adapt certain "Materials," including his "biographies," for the purpose of creating a musical based on the "life and music" of The Four Seasons. (Id. ¶ 59). The Valli/Gaudio License included the right to "ancillary and subsidiary exploitations thereof including, without limitation, cast albums, motion picture and televised versions, merchandise, and/or other works ... in all media now existing or later devised." (Id.). The Valli/Gaudio License waived any claim of copyright infringement by DeVito, provided that DeVito would be entitled to 20% of any royalties Valli and Gaudio obtained through exploitation of the Materials, and provided that Massi would be entitled to 5% of any such royalties. (See id.). Plaintiff suspects that Valli and Gaudio further licensed the Materials, which included the Work, to one or more unknown authors in 1999 for adaptation into an early version of Jersey Boys called Walk Like a Man. (See id.). When the original producer rejected Walk Like a Man, Valli and Gaudio fired its authors, permitted their agreement with the original producer to lapse, and further licensed the Materials to Brickman and Elice, who used them to write Jersey Boys. (See id.). Plaintiff implies that Valli's and Gaudio's informal joint ventures related to their exploitation of the Materials constitutes a general partnership as a matter of law that Plaintiff refers to as "The Four Seasons Partnership." (See id. ¶ 4-5).
The Jersey Boys foundational production agreement (the "Jersey Boys Agreement") is dated May 1, 2004. (See id. ¶ 61; Jersey
Plaintiff believes that DSHT further assigned or licensed its rights under the Jersey Boys Agreement to Defendant Dodger Theatricals, Ltd., which is the primary producer of Jersey Boys on Broadway, tours throughout the United States, and in London, U.K. (See Third Am. Compl. ¶ 62). Plaintiff believes that DSHT and/or Dodger Theatricals further licensed their rights to others and eventually assigned them to Defendant Jersey Boys Broadway, which in turn licensed them to several parties, including Defendants JB Viva Vegas and Jersey Boys Records. (See id.). Plaintiff alleges that Jersey Boys has earned gross revenues of approximately $300 million per year and believes she is entitled to at least $6.5 million. (See id. ¶ 70).
In December 2007, Plaintiff sued DeVito in the U.S. District Court for the Eastern District of Texas on three causes of action: (1) declaratory judgment; (2) equitable accounting; and (3) breach of contract. That court transferred the case to this District in 2008 pursuant to 28 U.S.C. § 1404(a), without deciding whether it had personal jurisdiction over DeVito, and it denied Plaintiff's motion to reconsider. The TAC, filed in March 2011, lists fourteen Defendants and twenty causes of action: (1) declaratory judgment (DeVito); (2) equitable accounting (DeVito); (3) breach of contract (DeVito); (4) unjust enrichment (DeVito); (5) breach of the covenant of good faith and fair dealing (DeVito); (6) constructive fraud (DeVito); (7) fraud (DeVito); (8) conversion (DeVito); (9) copyright infringement under § 16(2) of the Copyright, Designs, and Patents Act of 1988 (U.K.) (DeVito); (10) copyright infringement under § 27(1) of the Copyright Act, R.S.C.1985 (Can.) (DeVito); (11) copyright infringement under §§ 115(1), 36, and 39 of the Copyright Act of 1968 (Cth) (Austl.) (DeVito); (12)-(13) declaratory judgment (Valli, Gaudio, DSHT, Dodger Theatricals, and Jersey Boys Broadway); (14) equitable accounting (Valli, Gaudio, DSHT, Dodger Theatricals, and Jersey Boys Broadway, in the alternative) (15) copyright infringement under 17 U.S.C. § 501(a) (Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals, Jersey Boys Broadway, JB Viva Vegas, and Jersey Boys Records); (16) vicarious copyright infringement under 17 U.S.C. § 502 (Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals,
A court must grant summary judgment when "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). Material facts are those which may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. See id. A principal purpose of summary judgment is "to isolate and dispose of factually unsupported claims." Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In determining summary judgment, a court uses a burden-shifting scheme:
C.A.R. Transp. Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474, 480 (9th Cir. 2000) (citations and internal quotation marks omitted). In contrast, when the nonmoving party bears the burden of proving the claim or defense, the moving party can meet its burden in two ways: (1) by presenting evidence to negate an essential element of the nonmoving party's case; or (2) by demonstrating that the nonmoving party failed to make a showing sufficient to establish an element essential to that party's case on which that party will bear the burden of proof at trial. See Celotex Corp., 477 U.S. at 323-24, 106 S.Ct. 2548. If the moving party fails to meet its initial burden, summary judgment must be denied and the court need not consider the nonmoving party's evidence. See Adickes v. S.H. Kress & Co., 398 U.S. 144, 159-60, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970).
If the moving party meets its initial burden, the burden then shifts to the opposing party to establish a genuine issue of material fact. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). To establish the existence of a factual dispute, the opposing party need not establish a material issue of fact conclusively in its favor. It is sufficient that "the claimed factual dispute be shown to require a jury or judge to resolve the parties' differing versions of the truth at trial." T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 631 (9th Cir. 1987). In other words, the nonmoving party cannot avoid summary judgment by relying solely on conclusory allegations
At the summary judgment stage, a court's function is not to weigh the evidence and determine the truth, but to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249, 106 S.Ct. 2505. The evidence of the nonmovant is "to be believed, and all justifiable inferences are to be drawn in his favor." Id. at 255, 106 S.Ct. 2505. But if the evidence of the nonmoving party is merely colorable or is not significantly probative, summary judgment may be granted. See id. at 249-50, 106 S.Ct. 2505.
A defendant may move to dismiss for lack of personal jurisdiction. See Fed.R.Civ.P. 12(b)(2). Jurisdiction exists if: (1) provided for by law; and (2) the exercise of jurisdiction comports with due process. See Greenspun v. Del E. Webb Corp., 634 F.2d 1204, 1207 (9th Cir.1980). When no federal statute governs personal jurisdiction, a federal court applies the law of the forum state. See Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir. 2008). Where a forum state has a "long-arm" statute or rule providing its courts jurisdiction to the full extent of the Due Process Clause of the Fourteenth Amendment, such as Nevada does, see Arbella Mut. Ins. Co. v. Eighth Judicial Dist. Court, 122 Nev. 509, 134 P.3d 710, 712 (2006) (citing Nev.Rev.Stat. § 14.065), a court need only apply federal due process standards to determine personal jurisdiction, see Boschetto, 539 F.3d at 1015.
Nevada's long-arm rule restricts extra-territorial jurisdiction to the limits of both the U.S. and Nevada Constitutions. See Nev.Rev.Stat. § 14.065(1). However, Nevada's due process clause is textually identical to the federal clause in relevant respects, see Nev. Const. art. 1, § 8(5), and the Nevada Supreme Court reads the state clause coextensively with the federal clause, see, e.g., Wyman v. State, 217 P.3d 572, 578 (Nev.2009). Until 1868, when the Fourteenth Amendment was adopted, the Due Process Clause of the Fifth Amendment did not apply to the states. See Barron v. City of Baltimore, 32 U.S. 243, 250-51, 7 Pet. 243, 8 L.Ed. 672 (1833) (Marshall, C.J.). The Declaration of Rights that comprises Article I of the Nevada Constitution, which was adopted in 1864, was included only to impose the same restrictions upon the State of Nevada that were already imposed against the federal government under the Bill of Rights, and the Nevada Supreme Court has therefore not interpreted the protections of the Declaration of Rights to exceed the scope of their federal counterparts. Michael W. Bowers, The Sagebrush State 43-44 (3rd ed., Univ. Nev. Press 2006); Michael W. Bowers, The Nevada State Constitution 24 (1993). During the Nevada Constitutional Convention in 1864, the Due Process Clause of Article I was not debated, although several other provisions of Article I, and even Section 8, were heavily debated. See generally Andrew J. Marsh, Official Report of the Debates and Proceedings of the Constitutional Convention of the State of Nevada (Frank Eastman pr., 1866), available at http://books.google.com.
There are two categories of personal jurisdiction: general jurisdiction and specific jurisdiction. General jurisdiction exists over a defendant who has "substantial" or "continuous and systematic" contacts
Even where there is no general jurisdiction over a defendant, specific jurisdiction exists when there are sufficient minimal contacts with the forum such that the assertion of personal jurisdiction "does not offend `traditional notions of fair play and substantial justice.'" Int'l Shoe Co. v. State of Wash., Office of Unemployment Comp. & Placement, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken, 311 U.S. at 463, 61 S.Ct. 339). The standard has been restated using different language. See Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 2 L.Ed.2d 1283 (1958) ("[I]t is essential in each case that there be some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." (citing Int'l Shoe Co., 326 U.S. at 319, 66 S.Ct. 154) (emphasis added)); World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980) ("[T]he foreseeability that is critical to due process analysis is not the mere likelihood that a product will find its way into the forum State. Rather, it is that the defendant's conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there." (citing Kulko v. Superior Court of Cal., 436 U.S. 84, 97-98, 98 S.Ct. 1690, 56 L.Ed.2d 132 (1978)) (emphasis added)). From these cases and others, the Ninth Circuit has developed a three-part test for specific jurisdiction:
Boschetto, 539 F.3d at 1016 (quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir.2004)).
Id. (citations omitted). The third prong is itself a seven-factor balancing test, under which a court considers:
Menken v. Emm, 503 F.3d 1050, 1060 (9th Cir.2007) (quoting CE Distrib., LLC v. New Sensor Corp., 380 F.3d 1107, 1112 (9th Cir.2004)).
Jersey Boys Records Limited Partnership ("JB Records") argues that there is no personal jurisdiction over JB Records in Nevada and that Plaintiff has failed to state a claim of copyright infringement against JB Records. Plaintiff implicates JB Records in the fifteenth through seventeenth causes of action for infringement, vicarious infringement, and contributory infringement, respectively.
"In order to succeed in a copyright infringement claim, a plaintiff must show that he or she owns the copyright and that defendant copied protected elements of the work." Jada Toys, Inc. v. Mattel, 518 F.3d 628, 636 (9th Cir.2008) (internal quotation marks omitted). The infringement statute defines an infringer as "[a]nyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 or of the author as provided in section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602...." 17 U.S.C. § 501(a). Exclusive rights under § 106 include reproduction of sound recordings, preparation of derivative works, distribution of copies of the work, and public performances, displays, or digital audio transmission of the work. See id. § 106(1)-(6). Use of a copyright "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright," but "fair use." Id. § 107. The infringement alleged in this case does not fall into any of these protected categories of use. Sections 108 through 122 include additional limitations on exclusive rights, none of which appear to apply in the present case, except perhaps § 114, which limits exclusive rights in sound recordings. See id. §§ 108-22.
The terms "contributory infringement" and "vicarious infringement" do not appear in the infringement statute, but the courts have permitted plaintiffs to proceed on these theories of relief. The seminal case for both theories was Gershwin Publishing Corp. v. Columbia Artists Management, 443 F.2d 1159 (2d Cir.1971). First,
Id. at 1161-62 (footnote omitted). "[T]o succeed in imposing vicarious liability, a plaintiff must establish that the defendant exercises the requisite control over the direct infringer and that the defendant derives a direct financial benefit from the direct infringement." Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 729 (9th Cir.2007). "[O]ne `infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.'" Id. (quoting Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930, 125 S.Ct. 2764, 162 L.Ed.2d 781 (2005)). Second, "one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a `contributory' infringer."
As to personal jurisdiction, JB Records notes that it is a New York limited partnership with its principal place of business in New York and that it does not have any real property, offices, or employees in Nevada. Assuming this is true, there is no general jurisdiction over JB Records in Nevada, but it appears that Plaintiff's claims arise out of JB Records's conduct in this state. The Cast Album is sold at the performances of Jersey Boys in Las Vegas, and Plaintiff alleges JB Records receives royalties from these sales. The allegation that the Cast Album infringes the Work therefore is sufficient to provide specific jurisdiction over JB Records in Nevada. JB Records also notes that it produced the Cast Album but that Rhino Entertainment Co. manufactured, distributed, and sold the CDs. Plaintiff alleges not only direct infringement, but also contributory infringement, apparently based upon the theory that JB Records's production of the CDs contributed to the infringement of the Work by others because the production of the Cast Album was a part of the promotion for the musical. By producing the record, the theory goes, JB Records infringed the copyright directly or at least contributed to its infringement by those who manufactured, distributed, and sold it. The Court finds that the allegations in the TAC are sufficient to satisfy the first two prongs of the personal jurisdiction test over JB Records, and that requiring JB Records to defend in Nevada would not be unreasonable.
However, the Court will grant summary judgment to JB Records on the merits. First, Plaintiff makes no sufficient allegation that JB Records had the legal right or ability to prevent other parties from infringing, either through an employment relationship or otherwise, so there is no vicarious infringement by JB Records. Plaintiffs's allegation that "[all Defendants] each had the right and ability to control the acts of other infringers herein," (see Third Am. Compl. ¶ 233), is precisely the kind of bare-bones recitation of a cause of action that does not withstand scrutiny under the Twombly-Iqbal plausibility standard, much less under a motion for summary judgment.
Second, Plaintiff does not sufficiently allege that JB records was aware of any infringement of the Work, so it cannot be liable for contributory infringement, which requires knowledge. Plaintiff alleges that all Defendants had "access to" the Work but simply lumps all Defendants in together with this allegation. There is no plausible allegation that JB Records knew of any infringement of the Work. Plaintiff alleges in conclusory fashion that Michael S. David, a principal of Dodger Theatricals, which is in turn a general partner of JB Records, "was aware, or should reasonably have been aware, that Defendant DeVito was not the sole author of the Work...." (See id. ¶ 239). This is too attenuated to impute knowledge of infringement to JB Records.
Third, Defendant is entitled to summary judgment on the clams of direct infringement, because the Cast Album is simply not substantially similar to the Work. For this reason, also, there cannot be contributory or vicarious infringement
Id. at 624-25 (citations and internal quotation marks omitted; alterations in original).
Plaintiff alleges that the Cast Album infringes the Work directly because it "captures the presentational style and straightforward street tone/mood that is found in Jersey Boys and the Work." (Third Am. Compl. ¶¶ 14, 16, 70, 96, 204, 218, 224, 240). The magistrate judge correctly noted that this was insufficient to state a claim of infringement and compelled Plaintiff to comply with Brickman's interrogatory requesting Plaintiff to identify any points of substantial similarity between the Cast Album and the Work. Plaintiff responded only by claiming that "The line adapted from the Work's, `A little surprise' for Frankie, at page 46, is present in `The Early Years: A Scrapbook' cut on the Jersey Boys Cast Album." In the present motion, JB Records notes again that Plaintiff's only allegations of infringement as to the Cast Album is that the word "surprise" is used in both the Work and the Cast Album in connection with Tommy DeVito's "set[ting] up a little surprise" by having Frankie Valli sing with DeVito's band in a small club, and that the few minutes of spoken dialogue at the beginning of the Cast Album — which consists mainly of Four Seasons songs to which Plaintiff does not claim any copyright ownership — infringed the "presentational style" and "mood/tone" of the Work.
JB Records is correct that the Cast Album is not substantially similar to the Work under the extrinsic test. The Cast Album consists mainly of Four Seasons songs, plus a few minutes of dialogue. The Work is a 274-page autobiography. The similarity between the two, even assuming for the sake of argument that the "surprise" comment standing alone is protectable material, is negligible. The "surprise" sequence is a brief comment on a historical event. The presentational style of the Cast Album is that of the biography of a popular music group, but apart from the "surprise" line, Plaintiff does not allege that the Cast Album presents anything other than historical facts and Four Seasons works. In response, Plaintiff argues that JB Records has not complied with
Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals, Ltd., JB Viva Vegas L.P., and Getting Home, Inc. (collectively, "Movants") argue that the statute of limitations bars Plaintiff's copyright infringement claim against them as to "drafts or other non-final script materials" and that Movants need not account to Plaintiff for profits generated from such materials. Movants note that the TAC is the first version of the Complaint to allege that drafts, treatments, and outlines of Jersey Boys, which Movants refer to as "non-final script materials," infringed the Work.
First, Plaintiff may have an accounting as a remedy under 17 U.S.C. § 504 to the extent any Movant is ultimately found liable for infringement, though there is no separate action for an accounting except against a joint owner. Second, Plaintiff does not appear to (and could not) allege that the pre-production drafts in-and-of-themselves constituted independently actionable infringements. She properly alleges that the performance of Jersey Boys and distribution of other finished materials for sale to the public constituted infringement, but she would not be aggrieved if all she alleged was that certain Defendants crafted a play out of the Work and privately performed it for their own entertainment. Plaintiff's identification of the pre-production materials in the TAC is not in support of any new and separate cause of action. The pre-production materials would presumably be part of her proof of the existing infringement claim. That is, they are relevant to proving infringement via the final production, because draft scripts and treatments may prove a connection between the Work and Jersey Boys. But the inclusion of allegations concerning the pre-production materials do not constitute a new and separate cause of action. The fifteenth claim for copyright infringement in the TAC is the same as that in the Second Amended Complaint, and it is brought against the same eight Defendants. The only difference is that the TAC includes some additional language further explaining why and how Plaintiff believes Jersey Boys infringes the Work, i.e., because it is based on the Work and also "the various drafts, treatments, and outlines for Jersey Boys which preceded the finalized versions of the script...." (Third Am. Compl. ¶ 210).
Movants' argument is of the form: (1) the plaintiff's complaint alleged a tort by the defendant against the plaintiff; (2) after the statute of limitations ran, the plaintiff amended the complaint to further allege the instrumentality of the tort; (3) therefore, the court should grant the defendant summary judgment as against any claim involving the use of the newly alleged instrumentality. It is as if a party were to ask a court to grant summary judgment as against any injuries arising out of an alleged battery with a baseball bat because the plaintiff had, after the statute of limitations for battery had run, amended the complaint to add the allegation that the defendant used a baseball bat to the existing allegations that the defendant had struck the plaintiff. Plaintiff has simply added no theory of relief but has merely added language indicating the particular instrumentality by which the Plaintiff believes the infringement came about, which details were not before and are not
Insofar as Movants fear Plaintiff will seek damages from the jury based purely on the private, non-commercial creation of the pre-production materials themselves, apart from the claim that Jersey Boys itself infringed the Work, the Court assures Movants that such a theory will not go to the jury. Such private, noncommercial activity in-and-of-itself is fair use. See 17 U.S.C. § 107; Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 448-50, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) (holding that private, noncommercial copying of protected works is fair use). But Plaintiff does not allege that, and the pre-production materials could be important evidence for showing that the final product infringes the Work. In any case, Movants are protected from infringement claims by their license. See infra.
David argues that there is no personal jurisdiction over him in Nevada. Plaintiff alleges that David is a New York citizen who is a principal, officer, and shareholder of Dodger Theatricals, Ltd., and that he was an officer and/or shareholder of DSHT in 2004 when DSHT agreed to produce Jersey Boys in La Jolla, California. (See Third Am. Compl. ¶ 9). Plaintiff alleges that David is a signatory to various licensing agreements concerning Jersey Boys. She also alleges that David "organiz[ed]" Jersey Boys Broadway LP, JB Records, Dodger Theatricals, Ltd., DSHT, and JB Viva Vegas, LP. (See id. ¶ 240).
David argues that because the alleged organization did not occur in Nevada, and because he has no personal contacts with Nevada, but only happens to be an officer and/or limited partner of several organizations that have done business in Nevada, there is no personal jurisdiction over him personally in Nevada.
Plaintiff has sufficiently shown that David purposely availed himself of the right to do business in Nevada and purposely directed his allegedly infringing activities toward Nevada. David admitted at his deposition that he owned 50% of Dodger Theatricals, that Dodger Theatricals's primary activity was the supervision of Jersey Boys productions, that Dodger Theatricals receives income from those productions in the form of fees and royalties, and that David receives a small salary from Dodger Theatricals. (See David Dep. 14, 18-19, June 30, 2011, ECF No. 672-6). He also admitted to being "in charge" of Dodger Theatricals, though he delegated control. (See id. 22:11-18). He later clarified, "I'm the president of a company that produced Jersey Boys and as president, I oversee those 24 people." (Id. 26:19-21). Nor is it unreasonable to expect David to defend in Nevada where his half-owned production company does regular business. The Court denies the motion.
Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals, Ltd., JB Viva Vegas L.P., Getting Home, Inc., Jersey Boys Broadway LP, and Skunk, Inc. (collectively, "Movants") argue that Jersey Boys simply does not infringe the Work, because the Work is a historical work with only "thin" protection under U.S. copyright law. The Court denies this motion as moot, because it grants these Movants' separate motion for summary judgment
Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals, Ltd., JB Viva Vegas L.P., Getting Home, Inc., Jersey Boys Broadway LP, and Skunk, Inc. (collectively, "Movants") argue that the claims for copyright infringement under foreign law should be summarily adjudicated in favor of Movants for the same reasons noted in Part IV.D, supra, because regardless of whether the Court uses the law of the United States, the United Kingdom, Canada, or Australia, the choice-of-law analysis will result in the application of the substantive copyright law of the United States.
In diversity cases, choice-of-law issues are considered substantive for the purposes of Erie, and a federal court therefore applies the choice-of-law rules used by the courts of the state in which it is located. See Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 85 L.Ed. 1477 (1941) (citing Erie R.R. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188 (1938)). The same is true in federal question cases when the choice-of-law issue concerns a state law claim brought pursuant to a federal court's supplemental jurisdiction. See Paracor Fin., Inc. v. Gen. Elec. Capital Corp., 96 F.3d 1151, 1164 (9th Cir.1996). But when the underlying cause of action at issue is federal, a federal court applies federal common law choice-of-law rules. Schoenberg v. Exportadora de Sal, S.A. de C.V., 930 F.2d 777, 782 (9th Cir.1991).
Plaintiff filed the present case in the U.S. District Court for the Eastern District of Texas, invoking jurisdiction under both 28 U.S.C. §§ 1331 and 1332(a). (See Compl. ¶ 4, Dec. 26, 2007, ECF No. 36-5). The present issue is copyright infringement under federal law, so federal common law choice-of-law rules apply.
"Federal common law follows the approach of the Restatement (Second) of Conflict of Laws (1969)." Schoenberg, 930 F.2d at 782 (citing Harris v. Polskie Linie Lotnicze, 820 F.2d 1000, 1003-04 (9th Cir. 1987)). The Second Restatement states a "general principal" for tort claims:
Restatement (Second) of Conflict of Laws § 145 (1971). The principles stated in § 6 are:
Id. § 6(2)(a)-(g). Finally, the Second Restatement adopts the rule of dépeçage, under which each issue arising under a single claim may receive its own choice-of-law analysis. See id. § 145(1) (applying the analysis to "issue[s]"). This may be the only practical difference between the state and federal choice-of-law rules in the present case, because the Nevada Supreme Court also employs §§ 145 and 6 in tort actions but appears not to have enforced the dépeçage concept. See Gen. Motors Corp. v. Eighth Judicial Dist. Court of State of Nev. ex rel. Cnty. of Clark, 122 Nev. 466, 134 P.3d 111, 116-19 (2006) (deciding the choice-of-law question by cause of action, not by issue, though the question does not appear to have been directly litigated); see also Lucarelli ex rel. Taylor Estate v. DVA Renal Healthcare Inc., No. 08-0406, 2008 WL 5586615, at *3 (W.D.La. Oct. 24, 2008) (noting that the Nevada Supreme Court in General Motors had applied the analysis to the "cause of action" as a whole and no other authority from Nevada indicated an issue-by-issue approach).
In Itar-Tass Russian News Agency v. Russian Kurier, the Second Circuit rejected Prof. Nimmer's interpretation of the Berne Convention that the substantive law for an infringement claim should necessarily be the law of the nation where the infringement occurred as opposed to the law of the nation of which the author is a citizen or where the work was first published, i.e., the "national treatment principle." See 153 F.3d 82, 89 (2d Cir.1998). The Second Circuit interpreted the Berne Convention differently, to require only "that if the law of the country of infringement applies to the scope of substantive copyright protection, that law will be applied uniformly to foreign and domestic authors." Id. (citing Berne Convention Art. 5(1) (Paris text 1971), reprinted in 3 William F. Patry, Copyright Law and Practice 2013 (1994)). In other words, in the Second Circuit's view, the national treatment principle as expressed in the Berne Convention is an anti-discrimination principle, not a choice-of-law principle. See id. at 89 n. 8. The court noted that the federal statute provided no choice-of-law rule, so it would have to apply federal common law choice-of-law rules. See id. at 90. The Court then found that because a copyright constituted property, the contacts of that property itself was most important as to issues of ownership, and the substantive law of Russia would therefore apply, because the works at issue had been created by Russian nationals and first published in Russia. See id. The court then noted that the principle of lex loci delicti — under which the substantive law of the place of occurrence of a tort controls — applies in the copyright infringement context. See id. at 91 (citing Lauritzen v. Larsen, 345 U.S. 571, 583, 73 S.Ct. 921, 97 L.Ed. 1254 (1953)). The court therefore ruled that U.S. law governed infringement issues because that was where the infringement allegedly occurred. See id.
Movants urge the Court to adopt the Itar-Tass approach, and the Court will do so. The application of Itar-Tass in this case results in the application of U.S. law as to copyright ownership issues, because it is not disputed that the Work was created in the United States. The present motion
The Itar-Tass court did not face the precise issue presented here, but a similar one. It found that under Russian law only the journalists who wrote the newspaper articles, not the newspaper company, owned the copyright in the text — although the newspaper company owned any copyright in the arrangement of those articles on its pages to the extent such a thing could be copyrighted — and therefore the newspapers had no standing to sue for infringement via reprinting of the text under U.S. law. See id. at 84. The precise question presented here is whether the validity of a copyright license is more akin to ownership or infringement for the purposes of an infringement action. The answer to this question is critical, because in the U.S. a license obtained from fewer than all joint owners protects a licensee from an infringement action, i.e., such a license is valid, but in the Commonwealth countries, such a license appears to be a nullity, though the Court has only referred to Nimmer thus far and has not yet performed any significant research on the Commonwealth law. Does the fact that a license granted by fewer than all joint owners is valid under U.S. law necessarily obviate a clearly applicable foreign action for infringement where the foreign jurisdiction would not recognize the license? The Court believes the better answer is "yes." It is true that under this rule a licensee will be able to perform works in a jurisdiction where he would not be able to perform them had he obtained his license there. But this is the same result reached under Itar-Tass with respect to the ownership issue. Under the reasoning of that case, a person who is an owner of copyright under the law where he becomes a joint owner may perform the disputed act with impunity even in jurisdictions where his ownership would not be recognized had he purported to obtain it in that jurisdiction. In short, for the purposes of an infringement action, licensing is more akin to ownership than infringement. Just as a tenancies and profits a prendre are property interests, though they are only possessory and usufructory interests, respectively, a license in copyright is an analogous usufructory interest in intellectual property. The determination of such a property interest is properly determined under the law of the place where the interest arose. Here, that place is the United States. And once one has been declared to be a licensee under the law of the appropriate jurisdiction, the issue is settled, and the person is a licensee for the purposes of an infringement action under the law of any other jurisdiction. Because Movants had valid licenses or sublicenses to exploit the Work under U.S. law, see infra, the foreign infringement claims fail. The Court therefore grants the motion for summary judgment.
Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals, Ltd., JB Viva Vegas L.P., and Getting Home, Inc. (collectively, "Movants") move for summary judgment against counts fifteen through seventeen for copyright infringement, vicarious copyright infringement, and contributory
Valli and Gaudio are entitled to summary judgment against the infringement claims. The Court has already ruled that the Valli/Gaudio License permitted Valli and Gaudio to exploit the Materials identified therein, including the Work, and permitted Valli and Gaudio to further sublicense the Materials. The Court also ruled that the Jersey Boys Agreement was such a sublicense to DSHT (including Brickman and Elice) from Valli and Gaudio. These three Defendants therefore also cannot be held liable for infringement. The remaining Defendants are McAnuff, Dodger Theatricals, JB Viva Vegas L.P., and Getting Home.
Plaintiff alleges that McAnuff's infringement arose out of his direction of Jersey Boys, "along with Defendants Brickman and Elice, by authorization of Defendants Gaudio and Valli, under the [Jersey Boys Agreement] issued by Defendant DeVito...." (Third Am. Compl. ¶ 8). In other words, according to Plaintiff's own allegations, McAnuff's direction of Jersey Boys was pursuant to DSHT's sublicense from Valli and Gaudio (the Jersey Boys Agreement), pursuant in turn to Valli's and Gaudio's license from DeVito (the Valli/Gaduio License), both of which the Court has ruled were valid. McAnuff therefore cannot have infringed the Work in his capacity as the director of Jersey Boys. Plaintiff does not allege that McAnuff engaged in any "rogue" exploitation of the Work unconnected to his efforts with Jersey Boys and uncovered by DSHT's sublicense.
Plaintiff alleges that Dodger Theatricals is a signatory to the Jersey Boys Agreement under which it produced Jersey Boys along with DSHT. (See id. ¶ 11). Like McAnuff, Dodger Theatricals also cannot have infringed the Work via its efforts with Jersey Boys, and Plaintiff does not allege any "rogue" activity outside the scope of the Jersey Boys Agreement by Dodger Theatricals either. The same reasoning applies to JB Viva Vegas L.P., which Plaintiff alleges is implicated as a general partner of Dodger Theatricals and which serves "as a clearinghouse for revenues generated by the musical in Las Vegas, Nevada." (Id. ¶ 13). Again, if this Defendant's only actions were in cooperation with licensees or sublicensees of the Work, and it is not accused of any activity outside the scope of that license, it cannot have infringed the Work. Finally, Plaintiff alleges that Getting Home is a "loan-out" company through which Elice provided some of his services as a writer of Jersey Boys and which is also a signatory to an agreement concerning the Cast Album. (See id. ¶ 16). This Defendant is not accused of any activity outside the scope of the Jersey Boys Agreement. Elice was permitted under that sublicense to write the screenplay and other items for Jersey Boys. And the Court has held on the merits, supra, that the Cast Album does not infringe the Work. Movants are therefore correct that their alleged infringing activity falls within the scope of valid licenses and sublicenses, and they are entitled to summary judgment on the fifteenth through seventeenth causes of action.
Plaintiff responds that the Valli/Gaudio License terminated under its terms before Movants exploited the Work via Jersey Boys. The relevant portion of the Valli/Gaudio License reads:
(Valli/Gaudio License 2-4, ECF No. 457-34, at 38 (emphasis added)). Plaintiff argues that Valli and Gaudio entered into a production agreement with the initial producer, Metropolitan, in September 1999, but that the agreement lapsed without a merger on December 10, 2002, and that Valli and Gaudio did not enter into the Jersey Boys Agreement until October 27, 2005, over two years later.
As an initial matter, it is not clear what the parties meant here by "merger." The case law uses the term "merger" in the copyright context to describe the principle that when the expression of an idea is inseparable from the idea itself, the expression of the idea cannot be protected by copyright because one cannot copyright an idea under 17 U.S.C. § 102(b). See CDN Inc. v. Kapes, 197 F.3d 1256, 1261 (9th Cir.1999). This is the definition of "merger" given in the copyright law "nutshell." See Mary LaFrance, Copyright Law in a Nutshell § 2.5 (Thomson/West 2008), at 32-36 ("Courts invoke merger when there are so few ways to express a particular idea that protecting one such expression would make it difficult for others to express the same idea.... The more utilitarian the expression, the more likely it is that merger will apply. Merger often applies to recipes, simple instructions, contest rules, and simple legal or business forms."). It is extremely unlikely this is what the parties meant by "merger," because it is practically impossible that anything fairly characterized as a dramatic musical play could ever fall on the "idea" side of the "idea/expression" line. See id. at 1262 (noting that even something as mundane and uninteresting as a wholesale price guide can in some cases fall on the protectable "expression" side of that line). Also, it would make no sense to provide that the sublicense would become perpetual as soon as there was no need for any license at all due to the production having been crafted into a set of expressions consisting of purely uncopyrightable ideas.
The term "merger" has also been used to describe the phenomenon whereby intangible intellectual property rights "merge" with tangible property, thereby making it possible to convert intellectual property under state law where only an infringement action would have lied before such a merger. See, e.g., WesternGeco v.
The courts have also used the term "merger" to describe a doctrine that Congress overruled via its new definition of a joint work under the Copyright Act of 1976. See Batiste v. Island Records Inc., 179 F.3d 217, 222 & n. 7 (5th Cir.1999) (citing 17 U.S.C. § 101). Under that nowoverruled "Twelfth Street Rag" doctrine, a transferee of a partial interest in a joint work could add elements to the existing joint work, thereby creating a new joint work and extinguishing the previous joint ownership interests. Id. at 222 n. 7 (citing Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, modified on reh'g, 223 F.2d 252 (2d Cir.1955)). If this is what the parties meant by "merger" — and it may have been — the clause could be interpreted to apply the former Twelfth Street Rag doctrine as a trigger for automatic extension of the license.
But even assuming for the sake of argument that merger meant something distinct that never occurred, the Valli/Gaudio License did not terminate. Under the "merger" clause, even if merger did not occur with the initial producer, Valli's and Gaudio's rights were to continue for the duration of the subsequent producer's rights under a sublicense if Valli and Gaudio granted such a sublicense within two years of the lapse of the initial producer's rights, and in perpetuity if merger first occurred pursuant to the sublicense to the subsequent producer. (See id.). Therefore, so long as Valli and Gaudio gave DSHT the sublicense, i.e., entered into the Jersey Boys Agreement, within two years of the lapse of Metropolitan's rights, the Valli/Gaudio License would continue for the duration of DSHT's rights under the Jersey Boys Agreement even if merger never occurred. Valli and Gaudio entered into the Jersey Boys Agreement with the subsequent producer, DSHT, on an unknown date. (See Jersey Boys Agreement, May 1, 2004, ECF No. 457-34). The signatures on that document are not dated, though the document is dated May 1, 2004, (see id.), which is within two years after Metropolitan's rights expired on December 10, 2002 according to Plaintiff's conclusion of the date Metropolitan's rights lapsed. (See Pl.'s Separate Statement of Facts ¶ 13, Nov. 28, 2011, ECF No. 720).
However, even if the Court assumes that the Jersey Boys Agreement was not executed until more than two years after the initial production agreement with Metropolitan lapsed,
First, DeVito clearly acquiesced in the continued validity of the Valli/Gaudio License by continually accepting royalties thereunder. Second, the "merger" clause provides for the automatic extension of rights to Valli and Gaudio upon certain conditions. But this contractual provision extending the term of the license under certain conditions inures to the benefit of Valli and Gaudio. It did not and could not
Plaintiff also argues that Valli and Gaudio could not sublicense their rights because their license was not exclusive. But the Court has already ruled that the Valli/Gaudio License was exclusive, and that DeVito gave them the explicit ability to sublicense their rights thereunder, though Valli and Gaudio stand in the shoes of nonexclusive licensees for the purposes of their standing to sue for infringement. See Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1146 (9th Cir.2008). The Court therefore grants the motion.
Valli, Gaudio, Brickman, Elice, McAnuff, DSHT, Dodger Theatricals, Ltd., JB Viva Vegas L.P., Jersey Boys Broadway LP, JB Records, Skunk, Inc., and Getting Home, Inc. (collectively, "Movants") argue that any copyright infringement claim arising out of the 2004-2005 La Jolla, California production (the "La Jolla Production") of Jersey Boys is barred by the statute of limitations. Movants note that the La Jolla Production closed on January 16, 2005, that Plaintiff did not sue Movants via the First Amended Complaint until August 12, 2008, and that the statute of limitations for copyright infringement is three years. See 17 U.S.C. § 507.
The question is whether Plaintiff discovered, or with due diligence should have discovered, the La Jolla Production's infringement on or before August 13, 2005. See Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 706 (9th Cir.2004) ("§ 507(b) permits damages occurring outside of the three-year window, so long as the copyright owner did not discover — and reasonably could not have discovered — the infringement before the commencement of the three-year limitation period.").
Movants argue that Plaintiff "most certainly knew of the La Jolla production's existence, and its end, long before she commenced this action." But Plaintiff alleges that she first contacted DeVito in an attempt to publish the Work in September 2005 and that Jersey Boys first opened in November 2005. (See Third Am. Compl. ¶¶ 41-44). She also alleges she first learned of the infringement in January 2007. (See id. ¶¶ 45-51). Movants point only to Plaintiff's admission at her deposition that she knew of the La Jolla Production's existence, not that she knew of the alleged infringement therein, and Plaintiff stated that she did not recall when she learned of the La Jolla Production. (See Corbello Dep. 212-13, June 14, 2011, ECF No. 648-1). It cannot be said that Plaintiff need have traveled from Texas to California to view the La Jolla Production to have acted reasonably under the discovery rule. Movants have not satisfied
Plaintiff asks the Court to grant her offensive summary judgment on the first cause of action for declaratory judgment against DeVito concerning joint authorship of the Work. Plaintiff requests three declarations: (1) that the Work is a joint work under 17 U.S.C. § 101; (2) that Woodard was a co-author and hence a co-owner; and (3) that U.S. Copyright Reg. No. TXu 454 118, i.e., the DeVito Work, obtained by DeVito in his name only, was secured and has been held in part in constructive trust for Woodard, and subsequently for his heir, Plaintiff. The Court grants the motion.
The Court has already essentially made the first two declarations via its last summary judgment order, wherein it ruled that the Work was in fact a joint work between DeVito and Woodard, the only question being whether DeVito was himself a co-author. In short, the Letter Agreement is the "best objective manifestation of a shared intent." See Aalmuhammed v. Lee, 202 F.3d 1227, 1235 (9th Cir.2000). In order to grant the third request, the Court must be convinced that there is no genuine issue of material fact that the DeVito Work is the same as the Work.
A constructive trust in intellectual property is permitted as a remedy governed by state law. See Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 909 (9th Cir.2010). In Mattel, the constructive trust potentially arose because of a provision in an employment agreement assigning certain ideas of the employee to the employer, and California law governed the creation of the constructive trust. See id. Here, the constructive trust potentially arises because of the law of the joint ownership of copyright, and Nevada law governs the creation of the constructive trust.
Schmidt v. Merriweather, 82 Nev. 372, 418 P.2d 991, 993 (1966).
The relationship between Woodard and DeVito was sufficiently confidential, as evidenced by the Letter Agreement, to invoke this remedy. The remaining question is whether the DeVito Work is the same as the Work. Plaintiff provides a copy of the Work. (See Work, Jan. 1991, ECF No. 636, at 2). She has alleged that the Work and the DeVito Work are the same except that the title page of the DeVito Work is different and that the DeVito Work is missing page 264. (See Third Am. Compl. ¶¶ 48-49). Plaintiff provides no copy of the DeVito Work, so the Court cannot directly compare the two. However,
The Court reaffirms its finding that the Work was a joint work between Woodard and DeVito. The intent of the parties, as expressed through the Letter Agreement was clearly that Woodard would "do all of the actual writing," and that DeVito would have veto power over the final draft. All of the evidence supports this interpretation. DeVito admits as much in his deposition, confirming Plaintiff's characterization of the situation, i.e., that Woodard made all creative efforts in compiling and writing the Work and that DeVito mainly looked at what Woodard had created and asked him to make minor edits. Although DeVito attempts to characterize Woodard's contribution as that of a scribe and not an author, it is clear from a comparison of the Work to the 1988 Interview transcripts Plaintiff adduces that Woodard was more than a scribe. The 1988 Interviews are in question-and-answer format, not prose, as is the Work. DeVito admitted at his deposition that the reason he needed Woodard (or someone) was because he was not skilled enough to author the Work himself. He does not argue that his only impairment was poor penmanship, arthritis in his hands, or the inability to work a typewriter. He argues that his impairment was his lack of education. It is precisely the creative writing skill that DeVito admits he did not have that Woodard provided. It is not only works of fiction that are protectable by copyright. Non-fiction works are also protected — not the historical facts themselves, but the creative presentation of those facts. As the Court noted in the previous order, it is a close question whether DeVito would even be a joint author under the facts of this case in the absence of the Letter Agreement. And Plaintiff adduces additional research materials not provided by DeVito during the 1988 Interviews but used by Woodard to assist in writing the Work, showing that he was more than just a scribe.
The Court therefore grants Plaintiff's motion and rules that: (1) the Work is a joint work under 17 U.S.C. § 101; (2) Woodard and DeVito were coauthors, and hence, Plaintiff is a co-owner as Woodard's heir; and (3) U.S. Copyright Reg. No. TXu 454 118, i.e., the DeVito Work, registered by DeVito in his name only, was secured and has been held in part in constructive trust for Woodard, and subsequently for his heir, Plaintiff.
Claim Short Title Defendant(s) Disposition 1 Declarations DeVito Adjudicated via this Order 2 Accounting DeVit Remains for Trial 3 Breach of Contract DeVito Remains for Trial
4 Unjust Enrichment DeVito Remains for Trial 5 Bad Faith DeVito Remains for Trial 6 Constructive Fraud DeVito Remains for Trial 7 Fraud/Concealment DeVito Remains for Trial 8 Conversion DeVito Remains for Trial 9 Infringement (UK) DeVito Remains for Trial 10 Infringement (Can.) DeVito Remains for Trial 11 Infringement (Austl.) DeVito Remains for Trial 12 Declarations (Multiple) Adjudicated via Order 661 13 Declarations (Multiple) Adjudicated via Order 661 14 Accounting (Multiple) Adjudicated via Order 661 15 Infringement (Multiple) Adjudicated via this Order 16 Vicarious Inf. (Multiple) Adjudicated via this Order 17 Contributory Inf. (Multiple) Adjudicated via this Order 18 Infringement (UK) (Multiple) Adjudicated via this Order 19 Infringement (Can.) (Multiple) Adjudicated via this Order 20 Infringement (Austl.) (Multiple) Adjudicated via this Order
The second through eleventh claims remain for trial, with DeVito and David as the remaining Defendants.
IT IS HEREBY ORDERED that Jersey Boys Records Limited Partnership's Motion for Summary Judgment (ECF No. 605) is GRANTED in part and DENIED it in part. There is personal jurisdiction over JB Records in Nevada, but it is entitled to summary judgment on the merits.
IT IS FURTHER ORDERED that Valli's, Gaudio's, Brickman's, Elice's, McAnuff's, DSHT's, Dodger Theatricals, Ltd.'s, JB Viva Vegas L.P.'s, and Getting Home, Inc.'s Motion for Partial Summary Judgment (ECF No. 613) is DENIED.
IT IS FURTHER ORDERED that David's Motion for Summary Judgment (ECF No. 622) is DENIED.
IT IS FURTHER ORDERED that Valli's, Gaudio's, Brickman's, Elice's, McAnuff's, DSHT's, Dodger Theatricals, Ltd.'s, JB Viva Vegas L.P.'s, Getting Home, Inc.'s, Jersey Boys Broadway LP's, and Skunk, Inc.'s Motion for Summary Judgment (ECF No. 626) is DENIED as moot.
IT IS FURTHER ORDERED that Valli's, Gaudio's, Brickman's, Elice's, McAnuff's, DSHT's, Dodger Theatricals, Ltd.'s, JB Viva Vegas L.P.'s, Getting Home, Inc.'s, Jersey Boys Broadway LP's, and Skunk, Inc.'s Motion for Summary Judgment (ECF No. 632) is GRANTED.
IT IS FURTHER ORDERED that Valli's, Gaudio's, Brickman's, Elice's, McAnuff's, DSHT's, Dodger Theatricals, Ltd.'s, JB Viva Vegas L.P.'s, and Getting Home, Inc.'s Motion for Partial Summary Judgment (ECF No. 635) is GRANTED.
IT IS FURTHER ORDERED that Valli's, Gaudio's, Brickman's, Elice's, McAnuff's, DSHT's, Dodger Theatricals, Ltd.'s, JB Viva Vegas L.P.'s, Jersey Boys Broadway LP's, JB Records's, Skunk, Inc.'s, and
IT IS FURTHER ORDERED that Plaintiff's Motion for Partial Summary Judgment (ECF No. 641) is GRANTED.
IT IS FURTHER ORDERED that the Motion to Continue Hearing (ECF No. 743) is DENIED.
IT IS FURTHER ORDERED that the Motion to Reconsider (ECF No. 744) is GRANTED.
IT IS FURTHER ORDERED that the Motion to Continue Trial (ECF No. 670) is GRANTED.
IT IS FURTHER ORDERED that the current trial date is VACATED.
IT IS FURTHER ORDERED that the Clerk shall enter judgment as to all Defendants except DeVito and David.
IT IS SO ORDERED.
The applicable regulation, which Plaintiff cites, clarifies her complaint. Although her supplemental registration identifies DeVito's basic registration, because no basic registrant (DeVito) signed the supplemental registration, the office could not annotate DeVito's basic registration with the fact of Plaintiff's supplemental registration, see 37 C.F.R. § 201.5(b)(1) n. 1, so a person finding only DeVito's basic registration would not be aware of Plaintiff's supplemental registration. Even though the supplemental registration of Woodard's and his heirs' rights in the Work is sufficient to give constructive notice under the statute, it is only sufficient if a "reasonable search" would reveal Woodard's rights in the Work, and it is theoretically possible that a search might reveal only DeVito's registration, so that the failure to annotate DeVito's basic registration with the fact of Plaintiff's supplemental registration is problematic. See 17 U.S.C. § 205(c)(1). Plaintiff's fear is practically unfounded, however, because the supplemental registration includes the title of the DeVito Work as it appears on the basic registration itself, as well as the basic registration number, (see Certificate of Registration TXu1 372-636), so a reasonable search could not fail to reveal the supplemental registration, and the world is therefore on constructive notice of the supplemental registration as a matter of law regardless of the "one-way" cross-reference, see § 205(c). Plaintiff may not challenge DeVito's basic registration directly with the office, because the cancellation procedures do not appear to contemplate adjudication of a non-claimant's complaints over improper registration, see 37 C.F.R. § 201.7, but a federal court may refer such a dispute to the Registrar of Copyrights for administrative adjudication under the primary jurisdiction doctrine while retaining jurisdiction, if necessary, see Syntek Semiconductor Co., Ltd. v. Microchip Tech. Inc., 307 F.3d 775, 781-82 (9th Cir.2002).
