Stanley Donen v. Paramount Pictures Corporation et al, No. 2:2008cv03383 - Document 34 (C.D. Cal. 2008)
Court Description: ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS MOTION TO DISMISS 17 by Judge Dean D. Pregerson (lc)
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Stanley Donen v. Paramount Pictures Corporation et al Doc. 34 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 STANLEY DONEN, 12 Plaintiff, 13 14 15 v. PARAMOUNT PICTURES CORPORATION; VIACOM CONSUMER PRODUCTS, INC.; THE GAP, INC., 16 17 Defendants. __________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 08-03383 DDP (VBKx) ORDER GRANTING IN PART AND DENYING IN PART MOTION TO DISMISS [Motion filed on September 5, 2008] 18 I. BACKGROUND 19 Plaintiff Stanley Donen was the director of the motion picture 20 “Funny Face” (the “Motion Picture”), which was distributed by 21 Defendant Paramount Pictures. Plaintiff alleges that he was the 22 creator and author of the most significant parts of the film, 23 including creation and control of the “design, filming and editing 24 of a famous scene in the film in which Audrey Hepburn does an 25 original and highly unique dance” (the “Dance Scene”). (Compl. ¶ 26 4.) 27 Paramount first registered the copyright of the Motion Picture 28 in 1957, renewed the copyright in 1984, and is the current owner of Dockets.Justia.com 1 the Motion Picture’s copyright. 2 However, Plaintiff alleges that he never had a written employment 3 contract with Paramount regarding the Motion Picture, whereby he 4 conveyed his interest to Paramount. 5 either the rightful sole owner or co-owner of the copyright in the 6 Motion Picture, or owner of the Dance Scene as a separate 7 component; the rights to which Paramount holds for him “in trust.” 8 (Compl. ¶ 5.) 9 “acquiesced” in Paramount’s licensing the Motion Picture as an (D’s RJN ¶ 1-2.; Compl. ¶ 5.) Plaintiff alleges that he is For the last 50 years, Plaintiff alleges that he 10 “entire” work to others for exhibition in theaters, television, and 11 “subsequently developed media.” 12 (Compl. ¶ 5.) In 2006, through its sister company Defendant Viacom Consumer 13 Products, Paramount licensed the use of the Dance Scene to 14 Defendant The Gap. 15 television commercials advertising its clothing stores and 16 merchandise and, in particular, “ladies pants.” 17 Gap used the scene in 30 and 60 second (Compl. ¶ 5-6.) Plaintiff alleges that Gap’s use infringed his copyright, 18 because he never intended or “acquiesced” to the Motion Picture’s 19 use in a third party’s commercial advertisement. 20 thus brought suit alleging alternatively copyright infringement or 21 an accounting, and breach of implied contract. 22 23 Plaintiff (Id.) Defendant now moves to dismiss under Rules 12(b)(1) and (6). II. LEGAL STANDARDS 24 A. Federal Rule of Civil Procedure 12(b)(1) 25 Under Rule 12(b)(1), a complaint may be dismissed for lack of 26 subject matter jurisdiction. 27 considering a Rule 12(b)(1) motion challenging the substance of 28 jurisdictional allegations, the Court may look beyond the Fed. R. Civ. P. 12(b)(1). 2 When 1 complaint. White v. Lee, 227 F.3d 1214, 1242 (9th Cir. 2000) 2 (district court may consider extrinsic evidence when deciding a 3 Rule 12(b)(1) motion to dismiss for lack of subject matter 4 jurisdiction). 5 disputed facts where the question of jurisdiction is dependent on 6 the resolution of factual issues going to the merits.” 7 Corrothers, 812 F.2d 1173, 1177 (9th Cir. 1987)(internal citation 8 omitted). 9 court must “assume the truth of the allegations in the complaint . However, the court may not resolve “genuinely Roberts v. Where jurisdiction is “intertwined with the merits,” the 10 . . unless controverted by undisputed facts in the record.” 11 v. Lee, 227 F.3d at 1242. 12 B. 13 Under Rule 12(b)(6), a complaint is dismissed when a White Federal Rule of Civil Procedure 12(b)(6) 14 plaintiff's allegations fail to state a claim upon which relief can 15 be granted. 16 motion, “all allegations of material fact are accepted as true and 17 should be construed in the light most favorable to the plaintiff.” 18 Resnick v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000). 19 properly dismisses a complaint under Rule 12(b)(6), based upon the 20 “lack of a cognizable legal theory” or “the absence of sufficient 21 facts alleged under the cognizable legal theory.” 22 Pacifica Police Dept., 901 F.2d 696, 699 (9th Cir. 1990). 23 plaintiff’s obligation requires more than “labels and conclusions” 24 or a “formulaic recitation of the elements of a cause of action.” 25 Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1964-65 (2007) 26 (internal quotation omitted). 27 “only enough facts to state a claim to relief that is plausible on 28 its face.” Fed. R. Civ. P. 12(b)(6). Id. at 1974. When considering a 12(b)(6) A court Baliesteri v. The However, the complaint must state A well-pleaded complaint may proceed even 3 1 if it appears “that a recovery is very remote and unlikely.” 2 at 1964 (quoting Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)). Id. 3 C. 4 A court may consider judicially noticed facts in ruling on a Evidentiary Issues 5 motion to dismiss for failure to state a claim. 6 Beer Distrib., Inc., 798 F.2d 1279, 1282 (9th Cir. 1986) (“on a 7 motion to dismiss a court may properly look beyond the complaint to 8 matters of public record and doing so does not convert a Rule 9 12(b)(6) motion to one for summary judgment”), rev’d on other Mack v. South Bay 10 grounds, 501 U.S. 104 (1991); MGIC Indem. Corp. v. Weisman, 803 11 F.2d 500, 504 (9th Cir. 1986). 12 one not subject to reasonable dispute in that it is either 13 (1) generally known within the territorial jurisdiction of the 14 trial court or (2) capable of accurate and ready determination by 15 resort to sources whose accuracy cannot reasonably be questioned.” 16 Fed. R. Evid. 201(b). 17 requested by a party and supplied with the necessary information.” 18 Fed. R. Evid. 201(d). 19 “A judicially noticed fact must be “A court shall take judicial notice if Accordingly, the Court takes judicial notice of Defendant 20 Paramount’s 1957 copyright registration and 1984 renewal of 21 registration. 22 III. DISCUSSION 23 24 25 A. (See D’s RJN ¶ 1-2.) Rule 12(b)(1) - Plaintiff’s Standing under the Employment Agreements Defendants argue that Plaintiff does not have standing to 26 assert copyright infringement, because he assigned any rights in 27 the Motion Picture under his employment agreements (the “Loews 28 Agreement”) with either Loews Corporation or Paramount (the 4 1 “Paramount Agreement”). 2 Defendants’ argument is based on contracts provided to the Court by 3 Paramount. 4 Court may consider extrinsic evidence to determine standing. 5 e.g., Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1142-43 6 (9th Cir. 2003)(on a motion under Rule 12(b)(1), finding that 7 contracts signed by the plaintiff evidenced a “work made for hire” 8 relationship, and that plaintiff lacked standing to sue for 9 copyright infringement). 10 (Mot. 7; Shihabi Decl., Ex. A.) As noted above, on a motion under Rule 12(b)(1), the See, Loews owned all rights and proceeds from any of Plaintiff’s 11 work for it under his agreement. 12 agreement also required Plaintiff to render services exclusively 13 for Loews, unless he received its prior written consent. 14 Decl., Ex. A ¶ 1, 3.) 15 to whether Plaintiff assigned any rights to work performed with 16 Loews’ permission for third parties. 17 that Plaintiff’s new employer or contractor “shall be entitled” to 18 any of his rights or proceeds, but does not explicitly assign, 19 transfer, or otherwise encumber any of Plaintiff’s rights or 20 proceeds. 21 assignment to Loews of any residual rights to work created under 22 the Loews Agreement similarly does not address the rights to work 23 produced by Donen in third-party relationships. 24 (Shihabi Decl., Ex. A ¶ 4.) The (Shihabi However, the Loews Agreement is ambiguous as The Loews Agreement states (Shihabi Decl., Ex. A ¶ 5.) Plaintiff’s further (Id. ¶ 4.) When Loews (at this point, as MGM) agreed to permit Paramount 25 to contract with Plaintiff for his work on the Motion Picture, 26 there was no express assignment of rights to his work. 27 Decl., Ex. C.) 28 presumptively deemed a “work made for hire” (services performed (Shihabi Defendants argue that Plaintiff’s employment was 5 1 without the possibility of acquiring rights) or, alternatively, 2 that his services were merely “loaned” without granting him the 3 capacity to acquire rights to his work. 4 arguments are unsupported by the plain meaning of the text of the 5 Loews and Paramount Agreements. 6 addresses this issue, the Loews Agreement states that Plaintiff’s 7 services may be loaned “in any capacity” (Shihabi Decl., Ex. B ¶ 8 5), which includes relationships beyond the traditional employer- 9 employee or work for hire settings. 10 11 12 Again, these In the only section which squarely As such, the employment agreements do not negate Plaintiff’s assertion of standing. B. Rule 12(b)(6) 13 14 (Mot. 8-9.) 1. Separate Ownership of the Dance Scene The Complaint includes allegations of three ownership 15 interests: 16 and ownership of the Dance Scene. 17 copyrighted by Paramount exclusively and in its own name in 1957. 18 Defendants cite Richlin for the proposition that no separate ownership or co-ownership of the entire Motion Picture, The Motion Picture was 19 copyright can exist in the Dance Scene, because the Motion Picture 20 is a unified work. 21 creation of a separate copyright for a screenplay “treatment” (or 22 synopsis) created prior to the 1976 Act. 23 that a component’s contribution and any corresponding ownership 24 interest in a film is extinguished by the whole. 25 at 975-76 (“A motion picture is a work to which many contribute; 26 however, those contributions ultimately merge to create a unitary 27 whole.”) In that case, the Ninth Circuit examined the The court in Richlin held Richlin, 531 F.3d However, the court in Richlin also noted that the 28 6 1 component parts of a motion picture “may or may not be 2 copyrightable.” 3 Id. Here, the “component” is an actual scene in the film, which 4 Plaintiff alleges contains a distinguishable copyright that is held 5 by Paramount in “trust.” 6 directly contradicts the theory of a motion picture as a “unitary 7 whole.” 8 his claim is not supported by the Complaint. 9 and renewed a copyright in the “entirety” of the Motion Picture. (Compl. ¶ 5.) See id. at 975-76. To begin, this argument Even assuming Plaintiff’s argument, Paramount registered 10 (Id.; D’s RJN ¶ 1.) 11 copyrightable component, no separate copyright currently exists. 12 Therefore, Defendant Paramount does not hold an ownership interest 13 in this scene in “trust” for Plaintiff. 14 976 (“Assuming the Treatment is a copyrightable work [apart from 15 the motion picture], [plaintiffs] simply failed to secure federal 16 copyright for it.”). 17 As such, even assuming the Dance Scene is a See Richlin, 531 F.3d at The Court grants Defendant’s motion as to any claims which are 18 based on the Dance Scene as a separate, copyrightable work or 19 component. 20 2. Copyright Ownership - Creation of an Implied Trust 21 Determinations of authorship and ownership of copyrights 22 acquired before 1976 are governed by the Copyright Act of 1909 (the 23 “1909 Act”). 24 (the “1976 Act”), 17 U.S.C. § 101 et seq.; see also Richlin v. 25 Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 967 (9th Cir. 26 2008)(analyzing the plaintiff’s claim of co-authorship under the 27 1909 Act). See 17 U.S.C. § 24, repealed by Copyright Act of 1976 28 7 1 Defendants argue that a constructive trust cannot exist here, 2 because courts “only impose such a constructive trust where one co- 3 owner registers the renewal copyright in a joint work and another, 4 undisputed, co-owner does not.” 5 cite mandatory authority here, and the Ninth Circuit does not 6 provide any such bright line rule. 7 degree of dispute of copyright ownership does not per se indicate 8 whether a constructive trust may apply as a matter of law; and 9 instead Defendants’ argument merely acknowledges that a court must (Reply 9-10.) Defendants fail to This is likely because the 10 determine ownership in order to find grounds for a trust. 11 e.g., Zuill v. Shanahan, 80 F.3d 1366 (9th Cir. 1996). 12 makes a plain allegation of sole or co-ownership of the Motion 13 Picture in his Complaint, based upon authorship. 14 Under the 1909 Act, when a copyright was registered by a co-owner 15 or non-owner of the right, the copyright registrant held an 16 ownership interest “in trust” on behalf of the non-registering 17 additional or “true” owner. 18 Cir. 1921); see also Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984)(a 19 co-owner’s duty to account to another co-owner comes from 20 “equitable doctrines relating to unjust enrichment and general 21 principles of law governing the rights of co-owners” (internal 22 quotations omitted)). 23 the 1976 Act takes legal title to the renewal copyright as 24 constructive trustee on behalf of the non-renewing co-owner. 25 v. Mitchell, 574 F.2d 476, 480 (9th Cir. 1978). 26 27 See, Plaintiff (Compl. ¶ 5.) Maurel v. Smith, 271 F. 211, 215 (2nd Similarly, a co-owner who renews alone under Pye As such, Plaintiff has pled sufficient allegations of a trust for the purposes of this motion, and any decision by the Court is 28 8 1 more appropriately deferred to a motion for summary judgment or 2 trial. 3 3. 4 Statute of Limitations and Laches1 The 1976 Act’s statute of limitations provides that “[n]o 5 civil action shall be maintained under the [Act] unless it is 6 commenced within three years after the claim accrued.” 7 507(b). 8 “knowledge of a violation or is chargeable with such.” 9 New World Pictures, 19 F.3d 479, 480 (9th Cir. 1994). 17 U.S.C. § A cause of action for infringement accrues when one has Roley v. On the other 10 hand, an “authorship” claim or subsidiary claim for accounting is 11 barred three years from “plain and express repudiation” of 12 authorship. 13 2000). 14 authorship statute of limitations, they obviously require a 15 threshold determination of ownership to permit standing. 16 Zuill, 80 F.3d at 1369 (“Because [plaintiffs] have no infringement 17 claim, we cannot identify an asserted right of plaintiffs which can 18 withstand the statute of limitations . . . [versus claims of co- 19 ownership and] subsidiary remedies [such as for an accounting] . . 20 .”). 21 be applied from the date of the infringing action in 2006 or the 22 date of the creation of Plaintiff’s copyright interest in (at Aalmuhammed v. Lee, 202 F.3d 1227, 1230-31 (9th Cir. However, while infringement claims are not limited by the See The parties dispute whether the statute of limitations should 23 24 1 25 26 27 28 Curiously, Plaintiff states that he “acquiesced” in Paramount’s licensing of the Motion Picture for 50 years. (Compl. ¶ 5.) This appears to state an affirmative defense for Defendants against infringement until the present action, and may also imply abandonment by Plaintiff of his ownership interest. 4-13 Nimmer on Copyright § 13.07. However, for the purposes of this Motion, the word also plausibly implies some form of understanding or license between the parties. 9 1 latest) 1957. 2 frauds does not preclude Plaintiff’s claims on this Motion. 3 However, under either standard, the statute of Plaintiff asserts that Defendant Gap’s advertisement was 4 released in 2006. 5 the statute of frauds, as Plaintiff’s Complaint was filed in 2008. 6 See, e.g., Polar Bear Prods v. Timex Corp., 384 F.3d 700, 706 (9th 7 Cir. 2004). 8 9 For an infringement claim, this would satisfy Defendants next argue that there was a plain and express repudiation of Plaintiff’s ownership interest, based on evidence 10 purporting to show that the Motion Picture was theatrically 11 released with a copyright notice in the opening credits, which 12 solely referenced Paramount. 13 dismiss, the Court may not consider evidence outside the pleadings. 14 Multi Denominational Ministry of Cannibis & Rastafari, Inc. v. 15 Gonzales, 474 F. Supp. 2d 1133, 1140 (9th Cir. 2007). 16 the registration of a federal copyright by itself does not provide 17 plain and express repudiation, and instead the inquiry is fact- 18 intensive. 19 factors, including a compensation agreement and notice of copyright 20 placed on the work itself). 21 (Mot. 16:13-16.) On a motion to Furthermore, See, e.g., Zuill, 80 F.3d at 1369 (discussing multiple Similarly, laches requires an analysis of evidence which is 22 not appropriate at this point in the proceedings. 23 the party to demonstrate: 1) delay; 2) that the delay was 24 unreasonable; and 3) resulting prejudice. 25 Corp., 263, F.3d 942, 947 (9th Cir. 2001). 26 present from the Complaint, the other elements would require 27 analysis based on extrinsic evidence. 28 10 Laches requires Danjaq LLC v. Sony While delay appears 1 2 The Court therefore finds that the statute of frauds and laches do not preclude Plaintiff’s claim for infringement. 3 3. Implied Contract Claim 4 Defendant argues that there can be no claim for implied 5 contract because there was a express contract between the parties 6 covering the same subject matter. 7 Aetna U.S. Healthcare of Cal., Inc., 94 Cal. App. 4th 151, 172-73 8 (Cal. Ct. App. 2001). 9 See Cal. Med. Ass’n, Inc. v. As noted above, there was no contract with Paramount which 10 expressly or plainly covered the rights and proceeds of Plaintiff’s 11 work, for the purposes of this Motion. 12 IV. 13 14 CONCLUSION The Court GRANTS in part and DENIES in part the motion to dismiss. 15 16 17 18 IT IS SO ORDERED. 19 20 21 Dated: November 20, 2008 _________________________ DEAN D. PREGERSON United States District Judge 22 23 24 25 26 27 28 11
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