Murakami-Wolf-Swenson, Inc. v. Cole et al
Filing
38
Opinion and Order: The Court GRANTS Plaintiffs Motion 23 for Partial Summary Judgment on the Issue of Liability and DENIES Defendants Cross-Motion 29 for Summary Judgment. The Court notes the case-management schedule 20 it set on Dec ember 12, 2013, remains in effect. If the parties anticipate any need to adjust the schedule, they should file no later than August 29, 2014, a joint status report addressing any scheduling issues. Signed on 08/13/2014 by Judge Anna J. Brown. See attached 14 page Opinion and Order for full text. (bb)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
MURAKAMI-WOLF-SWENSON, INC.,
Plaintiff,
v.
LAWRENCE A. COLE,
individually and d/b/a
ACME-TV; MAGNUM PRODUCTIONS
LLC, an Oregon Domestic
Limited Liability Company;
and DOE 1 through DOE 100,
inclusive,
Defendants.
MICHAEL M. RATOZA
Bullivant Houser Bailey, PC
300 Pioneer Tower
888 S.W. Fifth Avenue
Portland, OR 97204
(503) 499-4695
BRIDGET B. HIRSCH
7435 Figueroa St.
No. 412422
Los Angeles, CA 90041
(323) 387-3413
1 - OPINION AND ORDER
3:13-CV-01844-BR
OPINION AND ORDER
EVAN S. COHEN
1180 South Beverly Drive
Suite 510
Los Angeles, CA 90035-1157
310-556-9800
Attorneys for Plaintiff
SCOTT N. BARBUR
JUSTIN R. STEFFEN
Barbur Law Office, LLC
2027 S.E. Jefferson Street, Suite 205
Milwaukie, OR 97222
503-654-1773
Attorneys for Defendants
BROWN, Judge.
This matter comes before the Court on Plaintiff’s Motion
(#23) for Partial Summary Judgment on the Issue of Liability and
Defendants’ Cross-Motion (#29) for Summary Judgment.
The Court
concludes the record is sufficiently developed such that oral
argument would not be helpful.
For the reasons that follow, the Court GRANTS Plaintiff’s
Motion and DENIES Defendants’ Cross-Motion.
BACKGROUND
In 1970 Murikami Wolf Productions, Inc., predecessor in
interest to Plaintiff Murikami-Wolf-Swenson, Inc., created an
audiovisual animated film produced for television entitled The
Point.
The Point was broadcast on television by the American
Broadcasting Company (ABC) in 1971.
2 - OPINION AND ORDER
In 1985 Plaintiff’s licensee Vestron Video1 released a
videocassette recording of The Point.
The outside packaging of
The Point videocassette and the label on The Point videocassette
contained a copyright notice stating “© 1985 Murikami-WolfSwenson, Inc.”
Suppl. Decl. of Evan Cohen, Ex. A at 2-3.
On January 22, 1987, Murikami Wolf Productions registered a
copyright for The Point with the Register of Copyrights.
Murikami Wolf Productions noted in its Copyright Registration
that The Point was created in 1970 and listed the date “of first
publication of this particular work” as February 11, 1970.2
Compl., Ex. A at 1.
“At least as early as 2012" Defendant ACME-TV3 offered for
sale and sold copies of The Point on ACME-TV.com and through
online retailers such as Amazon.com and eBay.
Defendants did not
have a license or other authorization from Plaintiff to
manufacture or to sell copies of The Point.
On October 16, 2013, Plaintiff filed an action in this Court
against ACME-TV, Magnum Productions, and Lawrence Cole in which
1
Vestron Video is not a party to this action.
2
On May 28, 2014, Plaintiff filed a Supplemental
Registration to the Copyright Office changing the date of first
publication to 1985.
3
ACME-TV was a division of Defendant Magnum Productions,
LLC, before Magnum Productions dissolved in March 2013.
Defendant Lawrence Cole operates, maintains, and controls ACMETV.
3 - OPINION AND ORDER
Plaintiff asserts a claim against Defendants for willful
copyright infringement in violation of 17 U.S.C. § 501.
Plaintiff seeks damages and injunctive relief.
On April 24, 2014, Plaintiff filed a Motion for Partial
Summary Judgment on the Issue of Liability.
On May 14, 2014,
Defendants filed a Cross-Motion for Summary Judgment.
The Court
took the Motions under advisement on June 21, 2014.
STANDARDS
Summary judgment is appropriate when “there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.”
Washington Mut. Ins. v. United
States, 636 F.3d 1207, 1216 (9th Cir. 2011).
Civ. P. 56(a).
See also Fed. R.
The moving party must show the absence of a
dispute as to a material fact.
Rivera v. Philip Morris, Inc.,
395 F.3d 1142, 1146 (9th Cir. 2005).
In response to a properly
supported motion for summary judgment, the nonmoving party must
go beyond the pleadings and show there is a genuine dispute as to
a material fact for trial.
. . .
Id.
"This burden is not a light one.
The non-moving party must do more than show there is some
'metaphysical doubt' as to the material facts at issue."
In re
Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir. 2010)
(citation omitted).
A dispute as to a material fact is genuine "if the evidence
4 - OPINION AND ORDER
is such that a reasonable jury could return a verdict for the
nonmoving party."
Villiarimo v. Aloha Island Air, Inc., 281 F.3d
1054, 1061 (9th Cir. 2002)(quoting Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986)).
The court must draw all
reasonable inferences in favor of the nonmoving party.
v. Verity, Inc., 606 F.3d 584, 587 (9th Cir. 2010).
Sluimer
"Summary
judgment cannot be granted where contrary inferences may be drawn
from the evidence as to material issues."
Easter v. Am. W. Fin.,
381 F.3d 948, 957 (9th Cir. 2004)(citation omitted).
A “mere
disagreement or bald assertion” that a genuine dispute as to a
material fact exists “will not preclude the grant of summary
judgment.”
Deering v. Lassen Cmty. Coll. Dist., No. 2:07-CV-
1521-JAM-DAD, 2011 WL 202797, at *2 (E.D. Cal., Jan. 20, 2011)
(citing Harper v. Wallingford, 877 F.2d 728, 731 (9th Cir.
1989)).
When the nonmoving party's claims are factually
implausible, that party must "come forward with more persuasive
evidence than otherwise would be necessary."
LVRC Holdings LLC
v. Brekka, 581 F.3d 1127, 1137 (9th Cir. 2009)(citation omitted).
The substantive law governing a claim or a defense
determines whether a fact is material.
Miller v. Glenn Miller
Prod., Inc., 454 F.3d 975, 987 (9th Cir. 2006).
If the
resolution of a factual dispute would not affect the outcome of
the claim, the court may grant summary judgment.
5 - OPINION AND ORDER
Id.
DISCUSSION
Plaintiff seeks summary judgment on the issue of liability
and asserts Defendants manufactured and/or sold copies of The
Point in violation of Plaintiff’s copyright.
Defendants assert
in their Response to Plaintiff’s Motion and in their Cross-Motion
for Summary Judgment that Plaintiff does not have a valid and
enforceable copyright for The Point.
Specifically, Defendants
assert the first published copy of The Point did not contain a
proper copyright notice, and, therefore, Plaintiff does not have
an enforceable copyright.
I.
Copyright law
The Copyright Act gives the owner of a copyright the
exclusive right to reproduce and to distribute publicly the
copyrighted work.
17 U.S.C. § 106(1) and (3).
A person who
violates those exclusive rights is an infringer.
§ 501(a).
17 U.S.C.
To establish a prima facie case of copyright
infringement, a plaintiff “must demonstrate ‘(1) ownership of a
valid copyright, and (2) copying of constituent elements of the
work that are original.’”
Range Road Music, Inc. v. East Coast
Foods, Inc., 668 F.3d 1148, 1153 (9th Cir. 2012)(quoting Funky
Films, Inc. v. Time Warner Entm't Co., 462 F.3d 1072, 1076 (9th
Cir. 2006)).
II.
Copyright Notice
Before the March 1, 1989, effective date of the Berne
6 - OPINION AND ORDER
Convention Implementation Act, omission of the form of copyright
notice set out in the Copyright Act invalidated a copyright
except in certain circumstances.
Copyright Act had to contain:
The notice required by the
(1) the symbol ©, (2) the year of
first publication of the work, and (3) the name of the owner of
the copyright in the work.
17 U.S.C. §§ 401(b), 405.
Although
the parties disagree whether The Point was first published in
1970/1971 or in 1985, the parties do not dispute that the form of
notice set out in § 401(b) was required for Plaintiff to obtain a
valid copyright registration under the Copyright Act in place at
the time of any of those publication dates (1970, 1971, or 1985).
The parties also do not appear to dispute that the copyright
notice that appeared at the end of the 1971 broadcast of The
Point on ABC did not meet the requirements of § 401(b).
Nevertheless, Plaintiff contends 17 U.S.C. § 405(a)(2)4
operates to avoid invalidation of Plaintiff’s copyright on The
Point because the 1985 release of The Point on videocassette was
the first publication of The Point and Plaintiff filed its
copyright registration in 1987, which was within five years of
the first publication of The Point.
Defendants, however, contend the 1971 television broadcast
4
This Section provides in pertinent part: “[T]he omission
of the copyright notice . . . from copies . . . publicly
distributed by authority of the copyright owner does not
invalidate the copyright in a work if . . . registration for the
work . . . is made within five years after the publication.”
7 - OPINION AND ORDER
was the first publication of The Point;5 Plaintiff’s 1987
copyright registration was not made within five years of the
first publication of The Point; and Plaintiff’s copyright
registration, therefore, was invalid.
In addition, Defendant
also contends the copyright notice provided on the 1985
videocassette was insufficient, and, therefore, Plaintiff does
not have a valid copyright on The Point.
A.
First Publication
The 1909 Copyright Act governed publication of a work
in 1971 rather than the 1976 Copyright Act.
The 1909 Copyright
Act did not contain a definition of “first publication.”
Instead
“publication” was a term of art defined through various court
decisions.
Nimmer on Copyright sums up the relevant court
decisions and concludes in pertinent part:
“The relevant
decisions under [the 1909 Copyright Act] indicated that
publication occurred when, by consent of the copyright owner, the
original or tangible copies of a work are sold, leased, loaned,
given away, or otherwise made available to the general public.”
Nimmer on Copyright § 4.03[A](citations omitted).
There is not
any indication on the record that Plaintiff sold, leased, loaned,
gave away, or otherwise made available to the general public the
5
Defendants also assert 1970 was the date of first
publication because that date is noted on Plaintiff’s 1987
Copyright Registration, but there is not any evidence in the
record of any publication or public distribution of The Point
before 1971.
8 - OPINION AND ORDER
original or copies of The Point before its release on
videocassette in 1985.
In addition, the 1976 Copyright Act provides “a public
performance or display of a work does not itself constitute
publication.”
The 1976 Act defines “to perform or display a work
publicly” to mean “to transmit or otherwise communicate a
performance or display of the work to . . . the public, by means
of any device or process, whether the members of the public
capable of receiving the performance or display receive it in the
same place or in separate places and at the same time or at
different times.”
17 U.S.C. § 101.
The definition in the 1976
Copyright Act “codifies the rule adopted by the courts under the
1909 Act.”
Nimmer on Copyright § 4.08[A](citations omitted).
Thus, the definition of “publication” under the 1909 Copyright
Act (as codified in the 1976 Copyright Act) does not encompass
the 1971 broadcast of The Point on television by ABC.
In
addition,
[s]ince the display of a copy does not constitute
a publication of the work embodied therein, unless
a copy is “publicly distributed,” and not merely
displayed, no notice need be placed upon it.
Thus, . . . an ephemeral image, whether projected
upon a theater screen, a television tube, or
otherwise, does not constitute a copy, and hence a
copyright notice is not required to appear upon
such image.
Nimmer on Copyright § 7.06[A](citations omitted).
On this record the Court concludes the first
9 - OPINION AND ORDER
publication of The Point occurred in 1985 when it was first
offered for sale on videocassette.
Because Plaintiff registered
a copyright on The Point within five years of the first
publication, it follows that, pursuant to 17 U.S.C. § 405(a)(2),
Plaintiff’s copyright registration is not invalid for failure to
file a registration timely.
B.
Sufficiency of the Copyright Notice on the 1985
Videocassette
The record reflects Vestron Video affixed a copyright
notice on the label of the 1985 videocassette and on the box that
housed the videocassette:
“COPYRIGHT ©1985 MURAKAMI WOLF
SWENSON, INC. ALL RIGHTS RESERVED.”
Decl. of Evan Cohen, Ex. A.
Defendants, however, assert the copyright notice on the
1985 videocassette of The Point is insufficient because a
copyright notice did not appear within the body of the film
itself as required.
With respect to the placement of the copyright notice,
the 1976 Copyright Act provides:
“The notice shall be affixed to
the copies in such manner and location as to give reasonable
notice of the claim of copyright.”
17 U.S.C. § 401(c).
In
addition 37 C.F.R. § 201.20(h) provides:
Motion pictures and other audiovisual works.
(1) The following constitute examples of
acceptable methods of affixation and
positions of the copyright notice on motion
pictures and other audiovisual works: A
notice that is embodied in the copies by a
10 - OPINION AND ORDER
photomechanical or electronic process, in
such a position that it ordinarily would
appear whenever the work is performed in its
entirety, and that is located:
(i) With or near the title;
(ii) With the cast, credits, and similar
information;
(iii) At or immediately following the
beginning of the work; or
(iv) At or immediately preceding the end
of the work.
* * *
(3) In the case of a motion picture or other
audiovisual work that is distributed to the
public for private use, the notice may be
affixed, in addition to the locations
specified in paragraph (h) (1) of this
section, on the housing or container, if it
is a permanent receptacle for the work.
As noted, Defendants assert this Regulation requires copyright
holders to “embody” a copyright notice into the film itself.
Defendants contend the language in Section (3) “in addition to
the locations specified in paragraph (1)(h)” means a copyright
holder may also place a registration notice on the housing or
container of the work, but merely placing a notice on the housing
or container is insufficient.
Plaintiff asserts the “in addition
to” language means a copyright holder may either embody the
copyright notice in the film itself or place a notice on the
housing or container in order to satisfy the notice requirement.
Neither party cites any case law to support their assertions.
11 - OPINION AND ORDER
Columbia Pictures, Inc. v. Tucker, is the only case the Court
could find that evaluates the placement of copyright notices on
videocassettes, and it supports Plaintiff’s interpretation.
In
Columbia Pictures the court held:
In the instant case . . . notice of copyright for
all of the seized videocassettes is positioned in
accordance with subsection (h) of 37 C.F.R.
§ 201.20, and therefore in conformity with the
requirements of § 401(c). With respect to the six
videocassettes which . . . contains [sic]
copyright notice during the credits of each movie,
the notice of copyright in these videocassettes
. . . is in accordance with paragraph (h)(1)
. . . . As for the other videocassettes . . .
these copies contain a notice of copyright
positioned in accordance with paragraph (h)(3)
which states that notice may be affixed “on the
housing or container, if it is a permanent
receptacle for the work.” 37 C.F.R.
§ 201.20(h)(3). . . . [Specifically,] the
other videocassettes contain a notice of
copyright “printed on a label located out of
the videocassette itself.” As a result, these
videocassettes contain a notice of copyright
positioned in accordance with paragraph (h)(3) of
§ 201.20.
No. 94 CV 5542, 1997 WL 779093, at *9 (N.D. Ill. Dec. 11, 1997).
The Court agrees with the analysis and conclusion of the Columbia
Pictures court.
The Court notes the Copyright Act specifically provides
the “Register of Copyrights shall prescribe by regulation, as
examples, specific methods of affixation and positions of the
notice of various types of works that will satisfy this
requirement, but these specifications shall not be considered
exhaustive.”
17 U.S.C. § 401(c)(emphasis added).
12 - OPINION AND ORDER
Similarly, the
regulations provide:
This section specifies examples of methods of
affixation and positions of the copyright notice
on various types of works that will satisfy the
notice requirement of section 401(c) of title 17
of the United States Code, as amended by Pub.L.
94–553. A notice considered “acceptable” under
this regulation shall be considered to satisfy the
requirement of that section that it be “affixed to
the copies in such manner and location as to give
reasonable notice of the claim of copyright.” As
provided by that section, the examples specified
in this regulation shall not be considered
exhaustive of methods of affixation and positions
giving reasonable notice of the claim of
copyright.
37 C.F.R. § 201.20(g)(1)(emphasis added).
Accordingly, the
provisions of § 201.20(h) regarding placement of notices on
videocassettes are not mandates and do not encompass the only
ways in which a copyright holder can give reasonable notice of
its claim of copyright.
In fact, § 201.20(h) only provides
examples of possible methods of notice that comply with the
general requirement of § 401(c) that the copyright notice be
placed in such a manner as to give “reasonable notice of the
claim of copyright.”
Thus, the Court concludes placement of the
proper copyright notice on both the videocassette itself and on
the box housing the videocassette was sufficient to give
reasonable notice of Plaintiff’s claim of copyright in The Point.
The Court, therefore, concludes Plaintiff had an effective and
valid copyright on The Point at the time of its first publication
in 1985.
13 - OPINION AND ORDER
Accordingly, the Court grants Plaintiff’s Motion for
Partial Summary Judgment on the Issue of Liability and denies
Defendants’ Cross-Motion for Summary Judgment.
CONCLUSION
For these reasons, the Court GRANTS Plaintiff’s Motion (#23)
for Partial Summary Judgment on the Issue of Liability and DENIES
Defendants’ Cross-Motion (#29) for Summary Judgment.
The Court notes the case-management schedule (#20) it set on
December 12, 2013, remains in effect.
If the parties anticipate
any need to adjust the schedule, they should file no later than
August 29, 2014, a joint status report addressing any scheduling
issues.
IT IS SO ORDERED.
DATED this 13th day of August, 2014.
/s/ Anna J. Brown
ANNA J. BROWN
United States District Judge
14 - OPINION AND ORDER
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?